Me work at this machine four years, one time comes the man to the factory, me working at macaroni. This man make this piece on the machine, make the potatoes work five minutes. This man (indicating Mr. E. B. McKay) work the potatoes five minutes, then take piece off and then go home. (A. to Q. 11.)

It appears from the testimony of Brenizer and of McKay that this diverter after having been removed from the machine was lost. Nothing further appears to have been done in respect to the invention by Brenizer until 1908.

The Examiner of Interferences and the Examiners-in-Chief found that the testimony concerning the alleged tests was insufficient to establish the reduction to practice of the invention in 1906, and with this conclusion I agree. The most that can be said of this demonstration is that it was of an experimental character, and the brevity of the test and the fact that the diverter was destroyed and nothing done with the invention thereafter for about two years would seem to indicate that it amounted to nothing more than an abandoned experiment, notwithstanding the statements of the witnesses to which reference has been made.

It is testified that in February, 1908, the form of the machines manufactured by the American Fruit Machinery Company was changed to a cylindrical container and that in February, 1908, Brenizer caused one Charles Callahan, a tinsmith, to construct a galvanized-sheet-iron body and a black-sheet-iron diverter, which latter was clamped on the side of the cylinder in the same manner as the diverter used in the experiment of 1906. The date of construction of this device is fixed by Callahan's bill for his services, which is dated February 26, 1908, and contains the following items:

66

Feb. 11. To making one (1) galvanized sheet iron body, as per sketch____ 3.00 26. To making one (1) black sheet iron lip or diverter, as per sketch_ .75 It is testified by Brenizer and McKay that this machine was assembled with the diverter secured thereto in the manner above stated and was used to pare several loads of potatoes in February, 1908. The diverter was then removed and was eventually scrapped. It appears from Brenizer's testimony that this machine was really intended as an experimental machine for the purpose of testing out the possibility of a cylinder with a diverter placed therein. The first commercial machine placed upon the market having a diverter of the character indicated was one sold to Casey's restaurant, which, it is testified by McKay, was ordered on June 6, 1909, and was delivered a few days thereafter.

I agree with the decision of the lower tribunals that the test of the 1908 machine fell short of establishing a reduction to practice of the invention. The machine itself was admittedly experimental in character, and the testimony is insufficient to show that the action of the

device contained in that machine was of a satisfactory character, especially when considered in the light of the fact that nothing was done with the device for more than a year, notwithstanding the alleged advantages attained by its use. It is claimed that this delay in placing a potato-paring machine, including a diverter, upon the market was due to the fact that Brenizer and McKay could not come to an agreement as to the amount of royalty or payment which Brenizer was to receive from the American Fruit Machinery Company for the use of this alleged improvement. This excuse is not plausible. The price for which the earlier machines were sold was listed at $250. The cost of making a diverter of the character shown, as appears from Callahan's bill, was seventy-five cents, and, as testified to by Brenizer, (X-Q. 146,) the attachment if applied to commercial machines would amount to about $1.50 additional to each machine. Brenizer had no patent upon the device, and there appears to be no basis for the assumption that the failure to reach an agreement as to the amount to be paid for this additional improvement was such as to defer its introduction into the machine if it produced the advantages claimed therefor.

I am therefore of the opinion that Brenizer has failed to establish a reduction to practice of the invention either in 1906 or February, 1908, and, further, that the lack of diligence in either reducing the alleged invention to practice following the 1908 experiment or constructively reducing the same to practice by the filing of his application before April, 1910, subordinates his rights to those of Robinson, who constructively reduced his invention to practice on November 12, 1909, by filing his application for patent.

It is charged that Brenizer disclosed the invention to Robinson in each of two tests of the device had upon the U. S. S. Hancock at the Brooklyn Navy Yard, that during the first test he placed his hand on the inside of the cylinder and held it so that it diverted the potatoes from their circular motion toward the center of the disk, and that Robinson came over to the machine, saw what he was doing, and protested to the commandant or the officer in charge of the test against such action. Brenizer's testimony is corroborated as to these facts by McKay, but is denied in toto by Robinson. I agree with the conclusion of the Examiners-in-Chief that the testimony of Brenizer and McKay is insufficient to establish disclosure of the invention to Robinson.

It appears from the testimony that in the operation of paringmachines of this type the centrifugal force is such as to throw the vegetables out against the rim of the machine, leaving a clear space of three or four inches at the center of the rotating disk. The placing of the hand in the cylinder of the hopper of the machine might readily have been for the purpose of crowding the potatoes upon the

abrading-disk and into the unoccupied space at the center of the disk to increase the speed of operation of the machine.

In fact, it is admitted by McKay that this act on the part of Bernizer in each case was in the nature of a trick, because it effected a more rapid paring of the potatoes in the machine, which was then in competition with others. Concerning this McKay testifies as follows:

X-Q. 115. But you have testified that you noticed that Brenizer put his hand into the machine, and that you knew it would increase the speed of the machine. Why did not you tell him to take his hand out when you saw what he was doing?

A. We were there to make the best showing of our machine we could, and I certainly would not call the attention of the commanding officer to anything that Brenizer was doing, as this would have been worse than foolish.

X-Q. 116. Why would it have been foolish for you to call the attention of the commanding officer to what Brenizer was doing?

A. Because it would have been 'nost unbusinesslike.

In this case Brenizer as applicant has imposed upon him the burden of proving priority of invention beyond a reasonable doubt, for the reason that his application was not filed until after Robinson's patent was granted.

The testimony of Brenizer and McKay is, to say the least, extraordinary. On the one hand, they claim that they have had knowledge of this valuable invention since 1906 and have fully appreciated its value. On the other hand, they did not incorporate this alleged advantageous device into other machines, although it might have been done for a very small amount, but after a second experiment two years later failed to build or to supply other machines with such a device. This is inconsistent with their claims of successful use.

The testimony of Brenizer's alleged disclosures to Robinson is wholly incredible. They were admittedly made through unfair "tricks" performed during competitive tests of machines of Brenizer and Robinson and were said to have been made under identical circumstances separated by an interval of two years, during which time and for over a year thereafter nothing was done by Brenizer and the company with which he was associated with the alleged valuable improvement thus disclosed to Robinson. These allegations of disclosure to Robinson instead of establishing Brenizer's originality of the invention serve, in my opinion, to discredit the testimony of Brenizer and McKay, especially when considered in connection with other inconsistencies of their testimony above pointed out.

I am of the opinion that Brenizer has failed to sustain the burden placed upon him, and the decision of the Examiners-in-Chief is accordingly affirmed.

EX PARTE PEASE.

Decided March 12, 1914.

202 O. G., 631.

PATENTABILITY-MACHINE FOR WAX-TREATING PARTS OF BOOTS AND SHOES. The inclusion in a claim for a machine for wax-treating parts of boots and shoes as one of the elements "a working face of combustible fabric" Held not objectionable, since the limitation "combustible" excludes many materials which are inappropriate to applicant's purpose, and by excluding such fabrics applicant has more accurately defined his invention.

APPEAL from Examiners-in-Chief.

MACHINE FOR WAX-TREATING PARTS OF BOOTS AND SHOES.

Mr. Nelson W. Howard and Mr. C. A. Mason for the applicant. NEWTON, Assistant Commissioner:

This is an appeal from the decision of the Board of Examiners-inChief affirming the action of the Primary Examiner in finally rejecting claims 3 and 6, which are as follows:

3. A machine of the class described, comprising a wax applying wheel provided with a working face of combustible fabric, a heating and distributing device adjustably mounted in touch with the periphery of said wheel, and a wax holder carried by said device and adjustable bodily therewith.

6. A machine of the class described comprising a wax applying wheel having a working face of combustible textile material, a heating and wax distributing device having a metallic face adapted for engaging the periphery of said wheel, said heating device being adjustable with respect to said wax applying wheel, and a wax holder also adjustable with respect to said wax applying wheel.

Generally speaking, applicant's device is a shoe-heel waxing and finishing machine in which the waxing-wheel is covered with canvas. Such a waxing-wheel seems to be new in the combination claimed; but the Primary Examiner rejected these claims as aggregations, taking the ground that

in claim 3, the wheel is specified as having a combustible fabric working face and in claim 6 as having such a face made of textile material. It is clear that the action of the other features is the same whether the working face of the wheel is combustible or not. This face might be of asbestos or of woven wire, or of any other refractory materials, non-combustible, without in any manner affecting the melting action of the heater upon the wax, or its function of spreading the wax so melted upon the working face. The combustibility of the fabric covering is wholly irrelevant. So also with respect to the qualification textile," in claim 6.

The Board of Examiners-in-Chief differed somewhat from the Primary Examiner upon this point and said:

It is not clear that the adoption of a fabric as thus understood as the cover of the wheel which is set forth in these claims (3 and 6) has not such special advantages as would render the same uninventive over a surface

composed of wood or metal or other material not resembling fabric. We therefore conclude that the Examiner erred in rejecting these claims on the ground of aggregation because of the limitation of the covering member to a fabric. We find no error, however, in his conclusion that the limitation to the combustible character of the fabric involves merely aggregation. While we must affirm the action of the Primary Examiner rejecting claims 3 and 6 we recommend that these claims be allowed if the word "combustible" be stricken therefrom.

Applicant contends that it is not reasonable to assume that he would use this term (combustible) without good reason, that some kind of textile material as a covering for this wheel has been found highly efficient, and especially a combustible textile; but much difficulty has been experienced in designing a machine having a waxapplying wheel with a combustible covering in combination with means for producing a proper heating effect of uniform character, it being difficult to so control the amount of heat that the same will be neither too great to destroy the cover nor too little to maintain the wax in proper condition of fluidity, and applicant has solved this problem in his machine.

The contention of the applicant seems to be well founded. The limitation "combustible fabric" excludes many materials, usually metallic substances, as wire fabric, glass, or asbestos fabric, which are inappropriate for applicant's purposes, and by excluding such fabrics applicant has more accurately defined his invention than by including them.

Moreover, it has always been the policy of the Office to allow some latitude to applicants in drawing their claims, since applicants and not the Office will be eventually held responsible for what is expressed therein, provided, of course, the claims are clear of the prior art and are clear in their meaning, as are the rejected claims.

The decision of the Board of Examiners-in-Chief is therefore reversed.

SHREEVE V. GRISSINGER.

Decided February 21, 1914.

202 O. G., 951.

1. INTERFERENCE-COPYING CLAIMS FROM A PATENT-DELAY-ESTOPPEL. Where the application of G. was filed prior to the grant of the patents to S. and seven years intervened after the grant of such patents before G. copied the claims thereof for an interference, Held that G. is not estopped to present claims taken from such patents and to contest an interference where the invention covered by the claims was clearly disclosed in the application as originally filed.

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