HAMM v. BLACK. PATENT INTERFERENCE. Decided June 19, 1907. 132 O. G., 841. 1. INTERFERENCE—) Evidence held to show that B., while the first to conceive the invention in issue, was the last to reduce to practice and was not exercising diligence at the time H. entered the field and subsequently thereto and priority properly awarded to H. 2. SAME-SAME-SAME-WORK ON OTHER INVENTIONS. Where an inventor has a conception of a device which can be put to practical use upon devices existing in the art, delay in reducing the invention to practice for the purpose of perfecting other inventions to be used in connection therewith cannot be considered as an exercise of due diligence where another has in the meantime entered the field and reduced the invention to practice. 3. SAME-SAME-INVENTION BY THIRD PARTY. The question whether a third party not involved in an interference is the real inventor of the subject-matter in issue is not pertinent to the question of priority of invention. APPEAL from Examiners-in-Chief. SIGNAL LAMP OR LANTERN GLASS HOLDER. Mr. Louis K. Gillson for Hamm. MOORE, Assistant Commissioner: This is an appeal by Black from the decision of the Examiners-inChief affirming the decision of the Examiner of Interferences and awarding priority of invention to Hamm on the following issue: 1. In a signal-lantern, an apertured frame-arm for a color-glass having an angular rim extending around the major portion of the periphery of the glass, a finger overturned from the rim at one side and a pivoted plate at the opposite side with an offset free end to pass over the edge of the glass. 2. In a signal-lantern, an apertured frame-arm for a color-glass having an angular rim extending around the major portion of the periphery of the glass, a finger overturned from the rim at one side, a pivoted plate at the opposite side with an offset free end to pass over the edge of the glass, and means for holding the said pivoted plate in place free from accidental displacement by vibration. 3. In a signal-lantern, an apertured frame-arm for a color-glass having an angular rim extending around the major portion of the periphery of the glass, a finger overturned from the rim at one side, a pivoted plate at the opposite side with an offset free end to pass over the edge of the glass, the frame-arm being provided with a recess and the pivoted plate with an interlocking pro jection for holding said pivoted plate in an initial position of use free from accidental displacement by vibration. 4. In a signal-lantern, an apertured frame-arm, composed of an apertured sheet-metal part and a plate connected thereto by rivets, a rim formed on the sheet-metal part bounding the major portion of the aperture therein and into which rim the color-glass is adapted to be received and fit, a finger overturned from the rim at one side and a pivoted plate with an offset free end to extend over the opposite edge of the color-glass, secured to the plate portion of the frame-arm and adapted to be turned toward the glass to hold the same, or away from the glass to release the same. The invention in issue relates to improvements in means for removably holding a glass in an adjustable frame of a signal-lamp and consists in providing a flanged sheet-metal frame of the desired form with a finger bent over from the flange at one side and a pivoted finger having an offset end at the opposite side to embrace the edge of the glass. The pivoted finger acts as a turn-button and is secured from displacement by a projection which interlocks with a depression in the frame. The Examiners-in-Chief and the Examiner of Interferences concurred in finding that although Black was first to conceive he was lacking in diligence at the time Hamm entered the field and reduced the invention to practice, and accordingly awarded priority of invention to Hamm. Black is a patentee, and in view of the fact that Hamm's application was not filed until after he became aware of the existence of Black's patent (Hamm, X-Q. 52) the burden is heavily upon him to establish priority of invention beyond a reasonable doubt. The testimony in behalf of Black clearly shows, and it is not seriously disputed, that Black conceived the invention in issue as early as January, 1903, and that he reduced the invention to practice by constructing a full-sized lamp-Black's Exhibit No. 2-in June, 1904. Hamm alleges in his preliminary statement that he conceived the invention on or about March 30, 1904, and reduced the same to practice on or about April 14, 1904. He offers in evidence a full-sized lamp, "Hamm's Exhibit Tail Lamp," which he says is one of a pair which was completed April 14, 1904. This lamp clearly embodies the invention and constitutes a reduction to practice thereof. It is contended in behalf of Black that the testimony offered by Hamm is insufficient to establish conception or reduction to practice by him at the date alleged. Hamm, who is in the employ of The Adams & Westlake Company, testifies that the order for the construction of the pair of lamps, one of which is Hamm's Exhibit Tail Lamp in evidence, was entered in the order books of that company on March 23, 1904, that work was begun on these lamps March 28, and the lamps completed April 14, 1904. This shop-order, which is numbered 24,061 and bears the date of March 24, 1904, is offered in evidence. (Hamm's Exhibit Shop Order.) It calls for a— Pair No. 83 Tail Lamps with 1-5" green to engine 1-5'' green to side 1-5′′ white with ruby & green auto slides to rear. Lamps to have No. 1 signalburner and double stationary bracket like on B/P Neg. 596 with handle under bottom of lamp Copper Founts. Peterson, the foreman of The Adams & Westlake Company, identifies the exhibit lamp as one which was made under this order by reason of the fact that this lamp was one of the first pair made by that company which had two green lenses and one white lens, with an automatic device for changing the colors, and having a bracket of that particular form. (Qs. 14, 15; X-Qs. 39-41.) Peterson offered in evidence certain pay-roll time-sheets of a workman, J. G. McGregor, (Exhibits, Time Sheet A and B,) covering a period from March 28 to April 23, 1904, and it is stipulated by opposing counsel that if the time-keeper, Brightspecker, were called as a witness he would testify that these time-sheets were filled by him at the time they purport to be dated and correctly state the numbers of the orders upon which McGregor was employed during the period covered by them. These time-sheets show that work was done upon order No. 24,061, above referred to, during a period from March 28 to April 13, 1904. McGregor, who is called as a witness, testifies that he made Hamm's Exhibit Engine Tail Lamp in the spring of 1904 under Peterson's direction and that but one pair of lamps of this precise character was made, although he continued to make lamps embodying the invention in issue. He states upon cross-examination that his memory as to the time he made these lamps was refreshed by reference to the timesheets brought to his attention by Peterson. This pair of lamps was placed in service on the Pennsylvania lines west of Pittsburg in May, 1904, and other lamps embodying the invention in issue have been made continuously to the present time by The Adams & Westlake Company. The testimony of Peterson, McGregor, and Hamm that the exhibit lamp and its mate were completed April, 1904, and were the only lamps of this precise character which were made, their identification of this exhibit lamp with that called for by the shop-order, and the time-sheet record showing work upon lamps corresponding in order number to the shop-order in March and April, 1904, are believed to conclusively establish the construction of the exhibit lamp in April, 1904, and the testimony of Peterson (Q. 26) and McGregor (Qs. 9-10) that the swinging frames for the glass are the same as when first made shows that it constituted a reduction to practice of the invention at that time. It is contended by Black that the testimony does not show that Hamm was the inventor of the device in issue. The question whether a third party not involved in an interference is the real inventor of the subject-matter in issue is not pertinent to the question of priority of invention. (Foster v. Antisdel, C. D., 1899, 413; 88 O. G., 1527; Garrels et al. v. Freeman, C. D., 1903, 542; 103 O. G., 1683; Prindle v. Brown, C. D., 1904, 680; 112 O. G., 957.) In this case, however, there appears to be no reason to doubt that Hamm was the inventor of the device in issue. Hamm avers that he is the inventor, and Peterson states, (Q. 31:) Well, I believe it (the invention) was Mr. Hamm's, I think. I am sure of that. It having been established that Hamm was first to reduce the invention to practice, it remains to be seen whether Black was active at the time Hamm entered the field and thereafter exercised diligence in reducing the invention to practice. It appears that in January, 1904, Eklund, under Black's instructions, made a model, which is offered in evidence as Black's Exhibit 1. This model does not embody the "finger overturned from the rim at one side," nor the " pivoted plate at the opposite side with an offset free end to pass over the edge of the glass," called for by the issue. A perforated plate having an offset and projecting lug corresponding to the pivoted plate of the issue is attached to the frame and, according to the testimony of Black and Eklund, has been so attached since January, 1904, for the purpose of illustrating the pivoted catch to be embodied in full-sized lanterns. It appears from the testimony of Black and Eklund that this model was made to demonstrate a mechanism for operating the colored glasses from the outside of the lamp, and that when Black became satisfied that the mechanism for shifting the colored glasses would operate properly he "told the experimenter not to bother with this pivoted plate on this identical model until he had the lamp completely made and then put the pivot on the frame-arm." (Black, Q. 29.) Eklund testifies to the same effect. (Q. 20.) It does not appear from the testimony that Black made any further effort to reduce the invention in issue to practice until a lantern which is offered in evidence as Black's Exhibit No. 2 was made. This lantern was begun in May and completed in June, 1904. (Black, Qs. 30—37, X-Q. 54; Eklund, Qs. 21-23.) It is urged that Black's delay in reducing the invention in issue to practice was due to his efforts to perfect a mechanism for operating the frames embodying the invention in issue. In view of Black's testimony that he was satisfied with the mechanism for operating the pivoted frames in January, 1904, this contention is believed to be without foundation. Furthermore, the invention in issue is independent of the mechanism for operating the frames and appears to be applicable to any lantern in which such colored glasses are used. Where an inventor has a conception of a device which could be put to practical use at any time upon devices existing in the art, delay in reducing the invention to practice for the purpose of perfecting other inventions to be used in connection therewith cannot be considered as an exercise of due diligence where another has in the meantime entered the field and reduced the invention to practice. (Lotterhand v. Hanson, C. D., 1904, 647; 110 O. G., 861; Stapleton v. Kinney, C. D., 1901, 414; 96 O. G., 1432.) By having conclusively established reduction to practice of the invention in April, 1904, during the period of Black's inactivity, Hamm has sustained the burden of proof resting upon him. The decision of the Examiners-in-Chief awarding priority of invention to Hamm is affirmed. EBERSOLE V. DURKIN. PATENT INTERFERENCE. Decided August 1, 1907. 1. INTERFERENCE-EVIDENCE-ORAL TESTIMONY. Where witnesses have an independent recollection of events and the dates of their occurrence, the records of which are accessible to opposing counsel, it is unnecessary that documentary evidence be produced as a means of refreshing their recollection. 2. SAME-SAME-SAME-REDUCTION TO PRACTICE. The statement of witnesses who were thoroughly familiar with the construction of a device that it operated successfully Held sufficient to establish a successful test where the operation of the device is easily understood and the device itself is in evidence and found to satisfactorily perform the intended functions. 3. SAME REDUCTION TO PRACTICE-CHARACTER OF TESTS. Where devices of the kind involved were well understood and the only point to be determined by the test was whether upon the operation of the controller-handle the dog which was attached thereto would move in the way stated, Held that it was not necessary that a test be performed under condition of actual service in order to establish a reduction to practice. APPEAL from Examiners-in-Chief. CONTROLLER. Messrs. Jones & Addington and Messrs. Jones, Addington & Ames for Ebersole. Mr. Charles N. Butler for Durkin, |