PLUMMER v. PENNISTON. Decided April 23, 1894. 67 O. G., 928. INTERFERENCE-PRINTING TESTIMONY. Rule 162, requiring printed copies of the testimony to be furnished to the Office and opposing parties, Held to be of binding authority. ON PETITION. FOOD-WARMER. Application of Annie M. Plummer filed November 28, 1892, No. 453,317. Application of Clara A. Penniston filed October 25, 1892, No. 419,967. Mr. Charles H. Roberts for Plummer. SEYMOUR, Commissioner: In this case the Examiner of Interferences has rendered his decision on the question of priority in favor of Plummer, who has failed to comply with the rule requiring that her testimony shall be printed. Petition is now taken to the Commissioner that the said Examiner be directed to set aside the decision and that no testimony shall be examined which has not been filed and printed in accordance with the rules. My attention was first called to this case by a letter from counsel for Plummer complaining of the action of the Examiner of Interferences, dated December 7, 1893, wherein he ordered that the testimony be printed or that applicant show cause why judgment should not be rendered against her on the record in favor of Penniston. It was claimed by counsel that this action had no warrant in the rules. The Examiner of Interferences advised the Commissioner that he had inaugurated such practice about four years ago on the oral consent of the Commis sioner. No decision or ruling by the Commissioner on this question is found of record. On December 13, 1893, I directed that the orders to show cause in such cases should be restricted to requiring applicants to satisfactorily show why the printing of testimony should be dispensed with. On December 19, 1893, by letter to Plummer's counsel, I advised him as follows: In justice to the opposing party the interference case as such cannot go on without the printing of this record, to the extent at least of furnishing two type-written copies, one for the use of your opponent, ou motion duly made under Rule 162. It was thus intended that in cases where parties refuse to print their testimony or to otherwise comply with the rule judgment in default should be rendered them. Subsequently, when this case was again informally presented to the Commissioner, it was thought best to direct the Examiner of Interferences to consider Plummer's record, although no attempt at compliance with the rule had been made by her. The case accordingly proceeded, as above indicated. Rule 162, which requires that "six or more printed copies of the testimony must be furnished," must of necessity be enforced, unless good and sufficient reasons be shown why its provision in this respect may be waived. This rule is for the protection of parties as well as to facilitate the conduct of business here. To dispense with the printing of testimony would impose a burden beyond the capacity of the tribunals of this Office to discharge. No attempt has been made on behalf of Plummer to comply with Rule 162, either as regards the Office or in furnishing the opposing contestant in this interference with a copy of her testimony. The examination of the record, printed and unprinted, by the Examiner of Interferences having been made under the ex parte direction of January 3, 1894, cannot now be set aside, and the order having been executed and the decision rendered, no direct relief can be afforded the petitioner; but the direction is revoked and Rule 162 is held to be of binding authority upon parties, and Plummer is held to be in default for failing to print. There is no requirement upon the tribunals of the Office, in the further proceedings in this case, to examine unprinted records, except where compliance with the rule is excused as provided in its terms. GREENFIELD v. PRENTICE. Decided April 28, 1894. 67 O. G., 1189. INTERFERENCE-ORIGINALITY-EMPLOYÉS-INVENTOR. Where A, an electrician and inventor, had been attempting to construct a machine and had failed, and thereafter sought B, an expert machinist and inventor, whom he had been informed had invented such a machine, and A confirmed his information by examining a model of B's invention, at the same time showing B a wooden model made by himself that illustrated the invention, but was impracticable, and where subsequently A agreed to furnish the labor and material if B would build a machine, with the understanding that if it worked well A should pay a royalty on the product, to which B consented, provided he be paid mechanic's wages during its construction, and where A then caused B to be engaged under his direction to make the machine in question, Held that judgment of originality must be awarded to B. APPEAL from the Examiners-in-Chief. APPARATUS FOR MAKING SEAMED METAL TUBES. Application of Edwin T. Greenfield filed September 3, 1891, No. 404,595. Division of application filed July 14, 1891, No. 399,471. Patent granted Albert D. Prentice July 14, 1891, No. 456,059. Application filed April 8, 1891, No. 388,128. Mr. Charles J. Kintner for Greenfield. SEYMOUR, Commissioner: Greenfield appeals from the decision of the Examiners-in-Chief, awarding priority of invention to Prentice, upon the following issues: 1. A composite die adapted to form tubes of sheet metal and double-fold seam them, consisting of a base piece, a converging-channel-die thereon which commences the bending, a contracting-die that shapes the tube and flanges it, a tongue or guidingfinger in this die, two flange-bending dies, a finishing-die, all arranged to receive the blank consecutively, and a mandrel longitudinally extended through the several dies, substantially as described. 2. In a composite die for tube formation, the combination, with a base-piece, of a converging channel-die thereon having a cylindrical mandrel longitudinally affixed therein, which is concentric within succeeding dies, a contracting-die which forms the tube and produces a high and low flange on meeting-edge portions of a sheetmetal blank that is entered at the outer end of the converging die, a tongue or guiding-finger affixed in the contracting-die above the mandrel, two flange-bending dies succeeding the contracting-die that turns the flanged edges into hooked connection with each other, and a finishing-die which double-folds the flanges and compresses the seam thus produced on the finished tube, substantially as described. This is a question of originality. Its decision depends much upon what took place at the first interview between the parties and upon the date of that interview. Greenfield was the electrician and inventor of an electrical company in New York, which was engaged in the business of wiring buildings for electrical purposes. In the summer of 1889 this company had a contract to wire the Shoreham Hotel in the city of Washington, and had been using elsewhere and there used electrical wires insulated with paper, with which difficulties were experienced for want of a metallic cover. Prentice was an expert machinist and inventor, and lived for several years in Lowville, N. Y., but by successive removes he went to Brooklyn about November, 1888, and took up his residence at No. 1008 Fulton street. At first he had no fixed employment, and occupied himself by going from one sheet-metal establishment to another in New York to get some one to take up his invention of a machine for seaming metal tubes, but without success. Shortly thereafter Greenfield called at his house in Brooklyn. They had never met before. Greenfield told Prentice that he had heard that Prentice had an insulating-tube with a metal cover and a machine for manufacturing it, and that he would like to see it. Prentice showed him samples of waterproof paper tube covered with sheet metal, samples of paper tube without any covering of metal, and samples of metal tube without any interior insulating material. At Greenfield's request Prentice explained the way in which the metal tube was made, and Prentice was asked to show the machine by which it was made. Prentice says that he told Greenfield on that occasion that he did not have a complete working machine, but that he had a wooden model, the Prentice exhibit model, that fully illustrated the construction of the invention, which he showed Greenfield. They exchanged ideas upon the possibilities of putting the product upon the market, and Greenfield, stating that he would probably be able to come to some understanding with Prentice with regard to buying the machine or the right to use it, and that he would see Prentice later, and asking where he was employed, took his leave. Subsequently Mr. Prentice was employed with Everett's Manufacturing Company, at No. 14 Reade street, New York, where Mr. Greenfield called upon him and asked him if he could not raise money to build a machine or have it built in that shop, telling him that if he could do so he would pay a royalty on the product. Prentice did not have money for this purpose and told Greenfield so, whereupon Greenfield said he would endeavor to raise the money himself and to have one of the machines built, and promised to see him soon. Some time afterward they met upon the street, when Prentice asked Greenfield if he was ready to have him build one of the machines, to which Greenfield replied he was not quite ready, but soon would be, and asking his present address promised to send for him when ready. About the last of December, 1889, or the first of January, 1890, a messenger came to the shop where Prentice was employed and asked him to call upon Mr. Greenfield at the office of the Interior Conduit and Insulation Company. Prentice went, found there the messenger who had come for him, who was the superintendent of the mechanical department, and after some waiting Mr. Greenfield came in, whereupon Prentice went through an explanation of the invention and the manner in which the work was accomplished by the dies, after which Greenfield asked Prentice if he would build a machine, he paying for the labor and material, with the understanding that he should have a chance to try the machine, and should he be satisfied with the way in which it worked he would adopt it and pay Prentice a royalty upon the product, and in case it should prove a failure and he should decline to adopt it the machine should be Prentice's. An eighth of a cent a foot was spoken of as the royalty. Prentice told Greenfield that he would be willing to build a machine on those terms, provided he could do mechanical work and be paid mechanic's wages during its construction, saying that as he had no patent and had not applied for any during the construction of the machine he would make such application. Greenfield told Prentice that he could commence immediately. The next day Prentice brought his tools to the shop and began work. This is, in substance, the narration of Prentice in such form as in itself to invite belief in its truth. Mr. Greenfield had testified earlier than this that he had had an interview with Prentice at the house of Prentice, but stated that it was in the summer of 1890, and also states that he first met Prentice in the early part of 1890, and came to do so in this wise: A man of the name of Hardie, who was in his employ, (the superintendent of the mechanical department above referred to,) introduced him there and he was engaged as a machinist. Greenfield had been asked upon his cross-examination whether he ever went to Mr. Prentice's home, and, if so, when and for what purpose, and was asked to state the earliest time. He thought it in the latter part of the summer of 1890, and that it was in reference to a tube-rolling machine made up in model form, a distinct invention, for a patent on which Prentice and Greenfield became joint applicants at this Office; but he was not asked at that time what took place at the interview, whenever it occurred. When testimony in rebuttal came to be taken in behalf of Greenfield, and after this explicit recital by Prentice of the conversations and transactions at the interviews between them at Prentice's house and elsewhere, Greenfield was not recalled. When the opportunity was thus presented to Greenfield it must be observed that he did not deny that an interview took place between Prentice and himself at the time stated by Prentice, nor that Prentice's version of the interview was substantially correct, nor did he give his own version of it. Prentice's plain words and Greenfield's unexplained ilence are alike expressive, and seem to establish the fact, under all the circumstances set forth in the record, that the interview took place, that the occurrences were as stated, and that the time of the first interview was as early as December, 1888. Looking further and recalling the difficulties which Greenfield experienced in wiring the Shoreham Hotel in the summer of 1889, and recalling the fact that he had a device made by Kennedy & Diss in Brooklyn thereafter, which is lost, but which bore some resemblance, not fully determinable from the record, to the Prentice device, it would appear that its resemblances might best be accounted for by Greenfield's recollection of Prentice's explanation to him at Prentice's house in Brooklyn, in December, 1888. Prentice says that this Brooklyn die was put on his bench one day when at work at the shop of the Interior Conduit and Insulation Company. Greenfield told Prentice that it was of no use and asked him if he could not make it over so that it would draw a tube and lock the seam like Prentice's model. Prentice examined the die and pronounced it of no use. While it resembled the Prentice exhibit model and the machine described in these issues, it also materially differed from them. It had no mandrel, no guiding finger, no contracting die to flange the edge of the metal in the tubes, no flangebending die, no twisted channel, no finishing-die, and the converging channel was too short. Hardie said of it, in an affidavit made August 7, 1891, that Greenfield had dies made secretly outside of the company's shops, after the plan of Prentice, but that Greenfield had failed properly to understand the description so as to make a successful working machine, and the machine as finished and delivered at the factory was of no use for the purpose of making a seamed metal cover for paper tube, and that it was never used by the company. Hardie examined this affidavit before signing and said of it as first prepared that it had many things in it that he could not testify to, and required Prentice to make several alterations, which he did. He appears to have taken a copy of it as revised and changed under his directions away with him, |