prove a date of invention anterior to the date of the patent, Mr. Jus. tice Story, in delivering the opinion of the Supreme Court of the United States, said: In many cases of inventions it is hardly possible in any other manner to ascertain the precise time and exact origin of the particular invention. The invention itself is an intellectual process or operation, and, like all other expressions of thought, can in many cases scarcely be made known except by speech. The invention may be consummated and perfect, and may be susceptible of complete description in words a month or even a year before it can be embodied in any visible form, machine, or composition of matter. It might take a year to construct a steamboat after the inventor had completely mastered all the details of his invention, and had fully explained them to all the various artisans whom he might employ to construct the different parts of the machinery, and yet from those very details and explanations another ingenious mechanic might be able to construct the whole apparatus and assume to himself the priority of the invention. The conversations and declarations of a patentee, merely affirming that at some former period he invented that particular machine, might well be objected to; but his conversations and declarations stating that he made an invention, and describing its details and explaining its operations, are properly to be deemed an assertion of his right at that time as an inventor to the extent of the facts and details which he then makes known, although not of their existence at an antecedent time. In short, such conversations and declarations coupled with a description of the nature and objects of the invention, are to be deemed a part of the res gestæ and legitimate evidence that the invention was then known to and claimed by him, and thus its origin may be fixed at least as early as that period. This view of the subject covers all the parts of the testimony of the witnesses objected to in the circuit court, and we are of opinion that the court were right in admitting the evidence. 1 Whitman's Patent Cases, 309. This high authority sustains the proposition clearly stated by Mr. Commissioner Legget in Cameron et al. v. Brick (C. D., 1871, p. 89), that The true date of invention is at the point when the work of the inventor ceases and the work of the mechanic begins, and may be evidenced by description or illustrations which demonstrate completeness. In cases of long delay to prosecute the invention beyond mere description, either by applying for a patent or by a reduction to practical form adapted to use, the question of abandoned experiment or conception will arise and should be considered as a factor in the case. In the present instance there is no presumption or indication of abandonment or forfeiture on the part of Smith, and therefore the fact as to who has first reduced to practice can properly have no controlling effect upon the rights of the parties to this proceeding. The decision of the Examiner is reversed. HOCKHAUSEN v. WESTON. Decided August 16, 1880. 18 O. G., 857. 1. A machine which embraces all the features called for by the issue in an interferencein such a manner as to be capable of successful operation will serve to give date to an invention, although such machine fail to show additional features which give increased efficiency to the perfected machines. 2. Objections to the patentability of a claim constituting the issue in an interference should be urged by a motion for dissolution of the interference, and not by an attempt to restrict the scope given by the Examiner to such claim. 3. In both the courts and the Office abandonment is an ill-favored finding, and cannot be presumed, but must be conclusively proven. 4. The charge that an applicant is not an original inventor must be sustained by proof of a most conclusive character. APPEAL from the board of Examiners-in-Chief. DYNAMO-ELECTRIC MACHINE. APPLICATION of William Hockhausen filed January 28, 1878. Application of Edward Weston filed December 13, 1877. Mr. L. W. Serrell for Hockhausen. Mr. E. C. Quimby and Mr. E. H. Brown for Weston. MARBLE, Commissioner: A practical difficulty encountered by both parties to this interference in the dynamo-electric machines constructed by them has been the overheating of the machines when running for a considerable length of time and at a high rate of speed, and the consequent destruction of the insulating material with which the wires of the magnets were covered. Various attempts, it appears, have been made to overcome this difficulty -such, for example, as by passing water through a hollow armature and through the magnet, or by placing a vessel containing water over the poles of the magnet, in close proximity to the armature. This, also, is the purpose of the invention which is embraced in the first claim of Hockhausen's application, and which is set forth in the preliminary declaration of this interference as follows: The combination of the revolving armature and helix in a magneto-electric machine of a case containing water or other similar material or liquid, with which such revolving armature is in direct contact. The testimony on behalf of Weston shows that the matter here at issue was conceived by him in the early part of the year 1877, and was reduced to practice in the fall of the same year by its embodiment in a full-sized operative machine. I am satisfied from the testimony uncontroverted on behalf of Hockhausen that this invention was conceived by him as early as the fall of the year 1875, at whichtime he applied to a machine a water-tank in such a manner that the armature revolved in direct contact with the water. Whether this was or was not a reduction of the invention to practice is not material to my findings in the case. It is urged by counsel for Weston that this first machine did not contain the invention in controversy, since it was not provided with any means for introducing and withdrawing the water from the tank, and thus keeping up a constant circulation-a feature which, it is contended, is necessary to a perfect machine, and is by implication embodied as an element of the issue. This first machine of Hockhausen, as clearly appears from the testimony, contained all the elements called for by the Examiner's declaration of the interference. Doubtless it was a crude machine, as is clearly shown by the fact that the water was poured into it from a pitcher and was withdrawn by tilting the machine; but this addition of means for keeping up a constant circulation of water is an improvement not essential to the broad claim, and one which I cannot hold to be a necessary element of the combination. The language of Hockhausen's claim is plain enough, and if, as contended by counsel for Weston, this claim is not patentable their proper course should have been a motion for the dissolution of the interference, and not an attempt to restrict the issue. The Examiner has, held this claim to be patentable, and I find no reason sufficient to convince me that his action was an erroneous one. Hockhausen reduced his invention to practice by embodying it in a full-sized machine, which was commenced in the spring of 1877 and was finished as early as July of the same year. This machine was successfully operated until the following fall, when, by reason of the overheating of the journals, it was replaced by another of like construction. It will thus be seen that Hockhausen was the first to conceive the invention and the first to reduce the same to practice. It is contended on behalf of Weston that even admitting Hockhausen to have conceived of the invention in 1875, still his efforts at that time can be regarded as but mere abandoned experiments. As has been repeatedly held by both the courts and the Office, abandonment is an illfavored finding, and one that cannot be presumed, but must be conclusively proven; and although the 1875 machine, after being used for a short time, was removed from the water-tank, this, of itself, cannot establish the fact that the invention was regarded as a failure. On the contrary, it appears from the testimony of Keith that in 1876 Hockhausen loaned him this first machine, and informed him that the overheating of the machine might be prevented by running the armature in direct contact with the water, as had been already done. It is true that in the interval between his conception of the invention and its reduction to practice he endeavored to accomplish the desired end of cooling the machine by other means; but this was also attempted by Weston after his conception of the invention in issue. The rule of law is well settled that the "first inventor will not be held accountable for exercising the same degree of diligence before the second enters upon the stage as afterward." Carr v. Smith, 5, O. G., 30. Hockhausen was without a rival until the early part of the year 1877, and the delay from that time until he began the construction of his complete machine was but one of a few months, and not sufficient in my judgment to warrant the finding that he had forfeited the inchoate right which an inventor acquires by reason of the fact that he is the first to conceive. An attempt has been made by Weston to show that Hockhausen is not an original inventor. It appears from the testimony of Weston that. in the spring of 1877 he disclosed the invention to one Tatum, and it is claimed that from him Hockhausen derived a knowledge of the invention. I fail to find in the proofs submitted any warrant for such a presumption, and an allegation of this character is one that must be conclusively proven. It might with equal or greater reason be urged that Weston derived his knowledge of the invention from Hockhausen, since it is admitted that before his reduction of the invention to practice he had witnessed the operation of the complete machine furnished to the University Press Company by his opponent. Moreover, Tatum was not an employé of Hockhausen, nor was he associated with him in business, but was merely engaged with him in conducting electrical experiments. I can attach but little weight to the arguments urged against the Hockhausen machines that they were imperfect, for the reason that no provision was made to prevent their "short-circuiting" consequent upon the saturation of the insulating material with the water, since the testimony clearly shows that no practical difficulty was encountered by reason of this. I must therefore hold, as did the Examiner of Interferences, that Hockhausen was the first to conceive of the invention, first to embody the same in tangible form, first to reduce the same to practice and demonstrate its practicability, and first to give it to the world by putting it in use and on sale, and that he exercised reasonable diligence in applying for a patent. I need not review in detail the objections made by both parties to certain portions of the testimony submitted, since this finding may be reached by a consideration of those portions only to which there is no substantial objection. The decision of the Examiners-in-Chief is affirmed. HOPKINS v. LE ROY. Decided September, 28, 1880. 1. When a party files a preliminary statement it is to be presumed that he has fully canvassed all the facts in the case and has correctly stated the same, and unless a request to amend the statement is made before any testimony has been taken all parties have a right to proceed on the issue as made in the respective state ments. 2. A party has no right to wait until his opponent has fully developed all the facts in his case and then for the first time ask leave to correct errors in his statement; but if through carelessness or negligence he has failed to have such correction made he must suffer therefor. JOURNAL-BEARING. APPLICATION of D. A. Hopkins filed November 20, 1879. Application of T. V. Le Roy for reissue of patent No. 221,737, granted November 13, 1879; filed June 5, 1880. Mr. A. v. Briesen for Hopkins. Mr. C. S. Whitman for Le Roy. MARBLE, Commissioner: Motion is made in this case by Le Roy to amend his preliminary statement on the ground that the date fixed in the statement filed is erroneous, and in other particulars it does not conform to the rules of the Office. The Examiner of Interferences decided to postpone the question of the allowance of the amendment until the final consideration of the case upon all the testimony. From that decision an appeal is taken to the Commissioner in person. It appears that the testimony in this case on behalf of Hopkins is complete unless he shall see fit to take testimony in rebuttal of Le Roy's testimony. The testimony of Le Roy has also been taken in part. If anything is to be gained by requiring a party to file a preliminary statement, it can be only upon the hypothesis that such statement is to remain intact, and that the party making the same shall be bound by the matters therein set forth. Whether such statement be considered as a pleading in the case or not it seems to me is not very material. When a party makes and files his preliminary statement it is to be presumed that he has fully canvassed all the facts in his case, and that the statement as filed, as far as necessary, is a correct statement of such facts. Unless the party having made such statement asks to amend the same before any testimony is taken in the case, all parties have a right to proceed on the issue as made in the respective statements. It may be that a statement made contains an erroneous date, as is claimed in this case; if so, the party making the statement should correct the date before his opponent has been put to the expense of taking testimony to sustain his own case. A party has no right to wait until his opponent has fully developed all the facts in his case and then for the first time make known the error that he has committed in his preliminary statement. Proper diligence on his part would have placed him in possession of the facts upon which he could have corrected his statement before such testimony was taken. If through carelessness or negligence he has failed to have such correction made, other parties should not be injured by such negligence. The application in its case to amend comes too late. If amendment can now be made for the reason stated, it should be and could be made at any stage of the proceedings in the case, and if amendments in preliminary statements are allowed in any stage of the proceedings therein, the whole object of requiring preliminary statements would be defeated. The motion to amend is denied. |