ROBB, J.: Appeal from a decision of an Assistant Commissioner of Patents in an interference proceeding awarding priority to the appellee. The invention will be understood from a reading of the single claim, as follows: A union undergarment having a permanently closed crotch, an opening extending partially across the back of the undergarment and down the outside of one of its legs and terminating short of the lower end of said leg, the latter being permanently closed below the said terminus of said opening, and means for detachably fastening the drop seat flap defined by said opening. The earliest date of conception claimed by Straub was December of 1912. He filed August 11, 1913. Luckett's application was not filed until later. It is clearly established that Luckett conceived and disclosed the invention in February of 1912, many months before Straub's entry into the field. Soon after this Luckett produced and showed to others a garment embodying the issue. Among those to whom he disclosed the invention was a Mr. Ellinghaus, a merchant tailor. Mr. and Mrs. Ellinghaus, on August 18, 1912, called at the Luckett home and were told that Mr. Luckett was lying down. Thereupon Mr. Ellinghaus, who knew Mr. Luckett well, went to Mr. Luckett's room and found that the only clothing he had on was the garment above referred to. Mr. Ellinghaus's attention was directed to it and Mr. Luckett demonstrated its intended functions. Thereupon Mr. Luckett dressed and went downstairs. Mrs. Ellinghaus fixes the date with great certainty. She testifies that a friend of hers was married at St. Francis De Sales Church, Maryland, on the 12th of September; that this friend called at the Ellinghaus home exactly one month prior to the wedding, and the fact was commented upon; that this call from the prospective bride was a subject of discussion the following Sunday between Mrs. Ellinghaus and Mrs. Luckett. In the fore part of September of 1912 Dr. Dick, the family physician of the Lucketts, was shown the garment previously described, the result being that a partnership between the doctor and Mr. Luckett was formed for the purpose of exploiting the invention. The doctor advanced small sums of money and finally garments embodying the invention were made and placed upon the market. We agree with the Examiner of Interferences and the Examinersin-Chief that Luckett reduced the invention to practice as early as August 18, 1912. While the record fails to disclose that any question was raised in the Patent Office as to whether the Luckett construction embodies the issue, the suggestion now is made that it does not because "the opening of the exhibit extends entirely across the back" of the garment. This question really is not before us, but we may observe that Luckett's garment responds to the terms of the issue, for on one side of the back there is no opening; that is to say, in Luckett's garment a line may be drawn diagonally from the waist on one side to to a point below the crotch on the other. The opening on one side, therefore, is from the waist to a point below the crotch, while on the other side there is no opening at all. Obviously, this opening extends only partially across the back, within the meaning of the count. Having reduced his invention to practice, and not having attempted to conceal and suppress it but, on the contrary, having repeatedly disclosed it, there is no reason why Luckettt should not be given the fruits of his discovery. Appellee, citing Adams v. Murphy (C. D., 1901, 401; 96 O. G., 845; 18 App. D. C., 172), contends that Luckett should be required to prove his case beyond a reasonable doubt. We do not think so. The applications were copending and Luckett, in the circumstances of this case, merely has the burden of establishing his case by a preponderance of the evidence. In the case just cited there was a long period of delay "wholly unexplained," the evidence of reduction to practice vague and unsatisfactory, and the court naturally concluded. that what was claimed to be reduction to practice amounted to no more than a mere abandoned experiment. As we said in Schartow v. Schleicher (C. D., 1910, 402; 156 O. G., 800; 35 App. D. C., 347) : This is not a case where an incomplete invention has been put to one side until another has worked out the problem. Neither is it a case of suppression or concealment of invention, as in Dieckmann v. Brune (C. D., 1911, 436; 171 O. G., 1258; 37 App. D. C., 399); Brown v. Campbell (C. D., 1914, 170; 201 O. G., 905; 41 App. D. C., 499). Rather is it a case where the evidence conclusively shows good faith on the part of the one who conceived and reduced to practice before the entry of his rival into the field, and whose conduct thereafter was free from suspicion. The decision is reversed and priority awarded Luckett. [Court of Appeals of the District of Columbia.] MALCOM v. RICHARDS. Decided April 1, 1918. 250 O. G., 1000; 47 App. D. C., 582. 1. INTERFERENCE-PRIORITY-GLARE-SCREEN. Record reviewed and Held that priority was properly awarded to R. 2. SAME-SAME-REDUCTION TO PRACTICE. Merely sticking a glare-screen on an office-window by means of a suctioncup is not a reduction to practice where the device is intended to be stuck on the windshield of an automobile in motion. Mr. T. K. Bryant and Miss Florence King for the appellant. SMYTH, C. J.: The invention covered by this appeal may be shortly described as a light-absorbing member to be attached by means of a suction-cup to an automobile for the purpose of protecting the eyes of a motorist from the glare of the lights of an approaching car. There are four counts of the issue. It appears that Richards conceived the invention about July, 1914, and constructively reduced it to practice in October of the same year by filing his application in the Patent Office. His date of conception is conceded by Malcom, and there is, of course, no dispute about the filing date. He was diligent from the beginning. This, if not admitted, is not seriously denied by his opponent. Malcom offered testimony tending to show that he conceived counts 1 and 3 in the spring of 1914, but he failed to establish actual reduction to practice prior to 1915. Under the law his own testimony on this point must be corroborated. (Sharer v. McHenry, C. D., 1902, 503; 98 O. G., 585; 19 App. D. C., 158; Petrie v. De Schweinitz, C. D., 1902, 534; 99 O. G., 1387; 19 App. D. C., 386; Flora v. Powrie, C. D., 1904, 636; 109 O. G., 2443; 23 App. D. C., 195.) He relies upon one Dietrich to supply the corroboration. All that Dietrich says is that some time about January or February, 1914, Malcom handed to him some shields and asked him "what he thought of them," and that Malcom said "it was a dimmer for a light;" that he stuck it on the window and that "it had a little rubber attached to it." When asked how Malcom stuck it on the window, the witness replied: * * * I do not know just exactly I did not look at it very closely but he stuck it on the window and there it was. I suppose it was round. Assume that the device he was speaking about was the one involved in this interference, the sticking of it upon a window by some means unknown to the witness was not a reduction to practice. It might stick to a window but not to the wind-shield of an automobile in motion, where the jar of the machine might seriously affect its adhesiveness. In other words, what would stick to a window at rest might not adhere to a wind-shield in motion. To establish successful reduction to practice generally requires a test under actual working conditions. (Sherwood v. Drewsen, C. D., 1907, 642; 130 O. G., 657; 29 App. D. C., 161; Wickers v. McKee, C. D., 1907, 587; 129 O..G., 869; 29 App. D. C., 4.) Malcom's constructive reduction to practice by filing his application in the Patent Office in October, 1915, avails him nothing, for he failed to show by any one outside of himself that he had been at all diligent between the date on which he claims conception in 1914 and the filing of the application. With respect to counts 2 and 4, Malcom did not prove that they were conceived by him prior to the date upon which he filed his application in October, 1915, about fifteen months after Richards's conception and a year subsequent to his constructive reduction to practice. Therefore the record considered independently of the holdings of the different tribunals below would compel us to award priority to Richards as to all the counts. But, even if this were not so, it would be our duty to affirm the decision of the Commissioner of Patents, since it is the law, often stated by this court, that where all the tribunals of the Patent Office concur upon a question of fact, we will not disturb the finding except for palpable error. (Lindmark v. Hodgkinson, C. D., 1908, 540; 137 O. G., 228; 31 App. D. C., 612; Murphy v. Meissner, C. D., 1905, 592; 114 O. G., 1830; 24 App. D. C., 260; Stone v. Pupin, C. D., 1902, 550; 100 O. G., 1113; 19 App. D. C., 396; Podlesak v. McInnerney, C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399.) Malcom in his very carefully prepared brief invites our attention to many decisions. We have considered them all, but find nothing inconsistent with the conclusions we have reached. The dominant question here is one of fact. The law applicable is well settled. The decision of the Commissioner of Patents must be affirmed. Affirmed. [Court of Appeals of the District of Columbia.] MCAFEE v. GRAY. Decided January 7, 1918. 251 O. G., 675; 47 App. D. C., 237. INTERFERENCE-PRIORITY. Evidence considered and found sufficient to prove priority for M. by reason of certain testimony to the effect that when he reduced the invention to practice he was acting independently and not under the direction of G., the senior party. Mr. A. M. Houghton and Mr. C. W. Fairbanks for the appellant. Mr. J. Edgar Bull for the appellee. SMYTH, C. J.: This is an appeal from an award of priority to Gray of an invention for the refining of high-boiling constituents of petroleum-oils, particularly lubricating oils. The issues are defined in seven counts, of which counts 1, 4, and 6 are typical. They read. 1. The method of purifying high boiling constituents of petroleum which consists in heating the same in the presence of aluminum chlorid to a temperature of from 150° F. to about 212° F. for a period of from two to six hours. 4. In the purification of high boiling mineral lubricating oils, the process which comprises heating such oil with dry aluminum chlorid to a temperature 84150°-19-14 around 150 F., allowing the oil to cool and separating the oil from the chlorid sludge. 6. The process of bleaching, stabilizing, and purifying lubricating oils which comprises producing an internal condensation attended with deposition of carbon and saturation of unsaturated groups by warming such oil with a catalytic chemical, and therefore treating the oil with sulfuric acid. Stated in general terms, the invention embraces a process by which lubricating-oil is purified and the color improved thereby. McAfee and Gray, at the time of the invention, were highly educated chemists, both having received the degree of Ph. D., one in 1910 and the other in 1895. They were employed by The Texas Company, a concern engaged in the refining of petroleum with headquarters at Houston, Tex. It had a laboratory at Bayonne, N. J., and another at Port Arthur, Tex. McAfee was engaged at Bayonne during the summer of 1912, and while there made, as he claims, a special study of petroleum, particularly the lubricating fractions. Later he was transferred to Port Arthur, where, according to his testimony, he made the invention in controversy. Gray asserts that McAfee was his assistant at Port Arthur and that he gave him as such a disclosure of the general plan of the invention, together with instructions from time to time sufficient to enable McAfee to work out the details revealed by the counts. McAfee, on the other hand, denied this and asserts that, so far at least as the invention is concerned, he was not Gray's subordinate. He also urges that he disclosed the invention to Gray long before any of the dates on which the latter claims to have conceived it. The Examiner of Interferences decided in favor of Gray, and was overruled by the Examiners-in-Chief, who, in turn, were reversed by an Assistant Commissioner. Gray, while asserting that he conceived the invention, does not claim to have, himself, reduced it to practice, but contends that what McAfee did in that regard inures to Gray's benefit because McAfee, as he asserts, was his assistant acting in pursuance of his instructions. It will be seen, therefore, that the question is which one originated the invention. McAfee, being the junior party, has the burden of clearly showing that he, acting independently, is the inventor. He testified that on December 4, 1912, he conceived the invention when he observed the saturating action of aluminum chlorid on petroleum-oil; that his conception was largely the result of work which he had done during the preceding summer; that The Texas Company, for which he was working, was particularly interested in the manufacture of lubricating-oils with as little color as possible; that connecting his work of the previous summer with the aluminum-chlorid reaction which he had noticed on December 4, he conceived the idea that it might be possible to lower the iodin values of lubricating oils, and therefore improve their color, by warming with aluminum chlorid. |