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in question, or by showing that these appellants, although they were the patentees, were not the inventors.

Nor is there any conclusive proof that Toufflin did not take out a foreign patent before the date of that to which his American patent refers, and before the appellants took out any foreign patents at all. It may be that Toufflin's affidavit, showing a particular foreign patent, estops him from claiming, as against the public, an earlier foreign patent; but it cannot estop the Office from referring to such earlier patent as a ground for refusing an award of priority, or the grant of a patent to another applicant.

The record relied upon by the appellants constitutes prima facie proof in an ex parte case. It would also constitute prima facie proof in an interference. But prima facie proof is that which is sufficient, if uncontroverted; that which excludes the introduction of contradictory proof is not merely prima facie proof; it is conclusive proof. And while in an interference the affidavits of the appellants and of Toufflin relating to their foreign patents would constitute prima facie proof of the facts therein shown, they would not be conclusive, but would each be subject to contradiction by the opposite party. As these affidavits would not be conclusive, of the facts stated, in an interference, so they cannot be conclusive of those facts for the purpose of preventing an interfer. ence. The effect of the presumption raised by the record is not to deprive the person against whom it operates of all opportunity of controverting the prima facie proof on which it rests, but to compel him to show by affidavit his ability to controvert it before an interference will be declared. In no case, under the rules, does a mere prima facie showing of priority on the record in favor of one applicant prevent another applicant from securing an interference by the interposition of the proper affidavit.

On the contrary, in three classes of cases interferences are declared in the face of prima facie showings of priority without counter-affidavits. I refer to the case of two or more pending original applications filed at different dates, the case of an original application and an application for the reissue of a patent granted during the pendency of the original application, and the case of two or more applications for the reissue of patents granted on applications pending at the same time. In each of these three classes of cases the record may furnish presumptive proof in favor of one or the other party, but an interference may, nevertheless, be declared without an affidavit from the opposite party.

In none of the cases in which interferences may be declared, under the rules, will the circumstance that the record affords prima facie proof of priority in favor of one of the parties prevent an interference if the other party shall file an affidavit showing his ability to counteract the effect. of such proof. An original application will be placed in interference with an unexpired patent if the applicant shall, by affidavit, show his ability to controvert the prima facie proof furnished by the date of the

unexpired patent by showing that he made the invention before the patentee filed his application. So an original application may be placed in interference with a reissue application, notwithstanding the prima facie evidence of priority afforded by the date of the patent of which a reissue is sought, if the original application shall be fortified by an affidavit of the applicant showing that he made the invention before the patentee's original application was filed. Again, an interference will be declared between applications for the reissue of patents granted on applications not pending at the same time, if the applicant for reissue of the later patent shall support his application with an affidavit showing that he made the invention before the application on which the earlier patent issued was filed. The same principle obtains in all other cases provided for by the rules.

As was held in Thomas v. Reese (16 O. G., 1234)

The grant of letters patent of the United States to an original inventor who made the invention in the United States, and when he filed his application believed himself to be the first inventor, will be barred, (1) if the device was known to others in this country before he invented it; (2) if it was used by others in this country before he invented it; (3) if it was patented in any country before he invented it; (4) if it was described in a printed publication in any country before he invented it; (5) if it was in public use for more than two years before his application; (6) if it was on sale for more than two years before his application; or (7) if it is proven to have been abandoned. Unless one of these seven statutory bars shall exist the applicant will be entitled to demand and receive his letters patent; for such is the express provision of section 4886 of the Revised Statutes.

If it conclusively appears in this case that no such bar exists to the patent of the applicants, they will be entitled to their patent upon taking the steps prescribed by the law and the rules.

It is provided in section 4904 of the Revised Statutes that

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants or applicant and patentee, as the case may be, and shall direct the Primary Examiner to proceed to determine the question of priority of invention.

This obviously does not mean that the Commissioner is to declare an interference whenever an application is filed in which is claimed an invention which is also claimed in an unexpired patent. On the contrary, as a rule, an application is to be rejected if it contains a claim embraced in an unexpired patent. It is only when the applicant makes oath that he made the invention before the filing of the patentee's application that an interference is declared between an original application and an unexpired patent. If, instead of the prima facie proof furnished by the date of the patentee's application and of his patent, on the one hand, and the contradictory proof furnished by the affidavit of the applicant, the record presented conclusive proof in favor of either party, an interference would be a frivolous proceeding, for which the Commissioner would be able to find no excuse.

If I had jurisdiction of this appeal I should direct the Primary Exam. iner to notify Toufflin that he would be permitted to file an application for reissue definitely claiming the invention in controversy, and also to file an affidavit setting forth his ability to show that the invention was made in or imported into the United States or patented abroad by him before it was made in or imported into the United States or patented abroad by the appellants; and that, unless he should file such an application and affidavit within the time limited by the Examiner, no interference could be declared.

But the appeal, which can only be taken to the Examiners-in-Chief, must be dismissed.

HUNT v. KING.

Decided January 9, 1880.
17 O. G., 200.

Drawings made by an applicant which indicate the invention in controversy, but do not show all its parts nor demonstrate its capability of use, not sufficient to defeat a patentee who was subsequent to conceive the invention, but who first made and successfully operated the same.

APPEAL from the Examiners-in-Chief.

ANTI-FRICTION BEARINGS FOR SHAFTS, &C.

APPLICATION of Charles W. Hunt filed October 18, 1878. Patent of Thomas H. King, No. 202,034, granted April 2, 1878.

Mr. Hunt for himself.

Messrs. A. H. Evans & Co. for King.

DOOLITTLE, Acting Commissioner :

The issue in this case is as follows:

An anti-friction bearing composed of a ring with pins projecting on both sides, and each pin carrying a roller, embraced in applicant's second claim, viz: "In an antifriction bearing, the annular ring with pins on each face to hold the rollers accurately in position," and shown but not claimed in King's patent.

King, the patentee, sets forth in his preliminary statement that he conceived, completed, and put in operation this invention in March, 1877. He attempts, in his testimony, to carry his efforts back of this date; but that is not permissible. That he had accomplished what is thus alleged by March, 1877, is established by his proof.

The applicant alleges that he conceived the idea of this invention in June, 1875, and made a drawing of it at that time. The drawing made is produced in evidence, and may be said to indicate the invention, but does not show all the parts, as, for instance, the annular ring with pins on each face. Other drawings were made, from which castings of other

parts of the device were made for applicant in January, 1877; but be. fore March, 1877, applicant had done nothing to demonstrate the capability of the use of this invention. Even subsequent to that time, and in August, 1877, when he had castings made of the pins and rollers, the invention was not put in such shape as could be used.

The capability of use of such an invention could only be shown by use itself. Conversations and partial drawings may have shown that it was a good thing to be done, but that is not the character of evidence that will defeat a subsequent patentee, who was also the first to make and successfully use the invention. Ackerman v. Archer, 15 O. G., 562. The decision of the Examiners-in-Chief is reversed, and priority awarded to King.

STONE v. GREAVES.

Decided November 6, 1879.

17 O. G., 260.

1. The rules are, if possible, to be so construed as to be operative in subordination to the statute. If incapable of such construction they cannot be executed.

2. Where, after an award of priority by the Examiners-in-Chief on appeal, the interference is suspended at the request of the Primary Examiner for the consideration of newly-discovered references, upon which the claim in controversy is rejected by the Primary Examiner, the interference will not be immediately dissolved on motion of either party, but will be suspended for a reasonable time to enable the respective parties to appeal ex parte from the decision of the Primary Examiner to the Examiners-in-Chief and Commissioner. If the decision of the Primary Examiner shall not be reversed on appeal, the interference will be dissolved. 3. If the Commissioner has power to dissolve an interference immediately under such circumstances, his decision to that effect, being lawfully rendered, will be binding not only on the applicants-as to whom the question of patentability, although springing out of an interference case which involves the question of priority alone, is itself an ex parte question-but also on the Examiners-in-Chief, and even on the Commissioner himself, except under such circumstances as will warrant a rehearing or a new trial. The action of the Examiners-in-Chief will therefore necessarily, and that of the Commissioner will ordinarily, be altogether formal. A practice which involves such results is to be avoided.

MOTION to dissolve interference.

CARDING-MACHINES.

APPLICATION of J. M. Stone filed March 13, 1865. Reissue application of J. Greaves filed September 30, 1872.

Mr. David H. Rice for Stone.

Mr. George E. Buckley for Greaves.

PAINE, Commissioner :

Priority of invention was awarded to Greaves by the Examiner of Interferences, and, on appeal, by the Examiners-in-Chief. Afterward,

at the request of the Primary Examiner, the interference was suspended, and the application of Stone and the reissue application of Greaves were remanded to him for the consideration of an English reference discovered after the judgment of the Examiners-in-Chief had been rendered. Upon consideration thereof, the Primary Examiner rejected the application of Stone and the reissue application of Greaves. Stone now moves that the interference be dissolved on the ground that the invention is not patentable.

On one side of the question stands the rule authorizing the dissolution of an interference for want of patentability of the claim. On the other stands the statute conferring upon the applicant the right of appeal, from an adverse decision of the Primary Examiner on the patentability of his claim, to the Examiners-in-Chief, to the Commissioner, and to the Supreme Court of the District of Columbia. It is necessary to avoid, if possible, both Scylla and Charybdis; but it is necessary, in any event, to avoid a violation of the statute. If possible, that course is to be chosen which will harmonize the statute and the rule and give effect to both. If that is impossible, the rule must be sacrificed to the law.

If the Commissioner has power to dissolve an interference at this stage on the ground that the claim is not patentable, his decision to that effect, being lawfully rendered, will be binding not only on the applicants-as to whom the question of patentability, although springing out of an interference case which involves the question of priority alone, is itself an ex parte question-but also on the Examiners-in-Chief, and even on the Commissioner himself, except under such circumstances as would warrant a rehearing or a new trial. The action of the Examiners-in-Chief will therefore necessarily, and that of the Commissioner will ordinarily, be altogether formal; and yet it must be had in order to secure to the applicant his right of appeal to the Supreme Court of the District of Columbia under the interpretation which that court is supposed to have given to the statute.

If the Primary Examiner had held the claim to be patentable, and the Commissioner, overruling him, had held it to be unpatentable, and thereupon dissolved the interference, such decision of the Commissioner would not have infringed any right of appeal of the applicant from the Primary Examiner to the Examiners-in-Chief; for, from a favorable decision of the Primary Examiner no right of appeal is conferred by the rules. For that case all the rights which even the spirit of the law confers would be secured to the applicant if, upon the dissolution of the interference, he should take his ex parte case to the Primary Examiner for action by him, subject to appeal to the Examiners-in-Chief and Commissioner according to law. This would secure all that remains, namely, the appeal to the Supreme Court of the District of Columbia.

If the interference in this case shall be dissolved, it will become necessary to encounter the difficult question presented as to the relation of testimony heretofore taken to any new interference which may be here

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