2. PRIORITY-DECISION OF THE PATENT OFFICE PRIMA FACIE CONTROLLING IN SUIT, UNDER REVISED STATUTES 4915.

A decision of the Patent Office as to priority of invention must be accepted as controlling upon that question of fact in any subsequent suit between the parties, unless the contrary is established by testimony which carries thorough conviction. (Citing Morgan v. Daniels, C. D., 1894, 285; 67 O. G., 811; 153 U. S., 124, 125.)

3. EVIDENCE-Quantum NeCESSARY IN A SUIT UNDER REVISED STATUTES 4915. It is not enough to justify a court in saying that the Patent Office was in error in a decision upon a question of priority that the declarations and admissions of the successful contestant cast discredit upon him as a witness. The evidence in the nature of admissions must make it clear that the evidence supporting the action of the Office cannot be true.

4. SUIT UNDer Revised Statutes 4915-Burden of PROOF SHIFTED UPON SENIOR APPLICANT WHEN JUNIOR HAS OBTAINED A PATENT.

When the decision of the Office is in favor of a junior applicant and a patent issues to him, in a subsequent suit under Revised Statutes 4915 the burden of proof is shifted, and it then devolves upon the senior applicant to show either that his invention antedates that of the patentee or that the latter never made the invention.

5. SAME

EVIDENCE THEN FIRST INTRoduced-EFFECT WEAKENED.

Evidential weight of alleged declarations of one contestant in favor of his opponent, in a suit under Revised Statutes 4915, is much impaired by the fact that, though accessible, they were not introduced during the interference proceedings.

6. EVIDENCE-SIGNATURE TO DRAWING OF INVENTION.

The fact that one contestant witnessed the signature of a second contestant, as inventor, to a drawing made by the latter and disclosing the invention in controversy may be overcome by testimony in behalf of the first contestant that said drawing was intended to disclose as the invention of the second contestant an improvement merely, and by additional facts tending to show conception by the first contestant and then disclosure by him to the second.

7. CONCEPTION-REDUCTION TO PRACTICE-PRIORITY.

If ineffectual efforts were made to give an idea form, but were abandoned before reaching such a stage of completion as to require only ordinary mechanical skill to carry the conception to success, the claim of priority of conception cannot be sustained against a later independent conception carried into practical form at an earlier date.

8. SAME-IMPERFECTION OF SKETCHES NOT A VITAL DEFECT.

The fact that sketches relied upon to establish conception are rude and imperfect and do not show a working machine is not a vital defect if skilled operators could from such sketches construct a machine embodying the improvement in dispute.

9. SKETCHES-Date of CONCEPTION.

The doctrine announced in Webster Loom Co. v. Higgins, (C. D., 1882, 285; 21 O. G., 231; 105 U. S. 586,) to the effect that that which is common and well known in the art may be understood as if written out in the specification of a patent, applies with even greater force to the adequacy of sketch drawings when the question is one of carrying back the date of an invention to the time of a first conception.

APPEAL from the Circuit Court of the United States for the Western Division of the Southern District of Ohio.

Mr. E. M. Marble and Mr. R. H. Parkinson for the appellants.
Mr. Frank T. Brown for the appellee.

STATEMENT OF THE CASE.

This is a bill in equity filed under section 4915, Revised Statutes of the United States. It involves a question of priority of invention. between Charles S. Hisey, who has assigned his invention to the complainant, the Standard Cartridge Company, and George Ligowsky, who has assigned the same invention to the Peters Cartridge Company.

Hisey first constructed an organized machine embodying the inven tion now in controversy and first filed an application for a patent thereon. Before the Patent Office had acted upon the matter Ligowsky filed his application for a patent upon the same novel improvements claimed by Hisey. An interference was declared upon certain claims embraced in each application. The issues upon this interference were as follows:

1. In a cartridge-loading machine, the combination, with shell-loading devices, of an endless belt, band, or carrier suitably actuated, said belt, band, or carrier being provided with shell-cases secured thereto and projecting therefrom.

2. In a cartridge-loading machine, the combination, with an endless belt, band, or carrier provided with shell-cases secured thereto and projecting therefrom, of loading and ejecting devices arranged and located over, above, and in line with said endless belt, band, or carrier, and mechanism for giving the carrier intermittent motion and for operating the loading and ejecting devices.

3. In a cartridge-loading machine, the combination, with an endless belt, band, or carrier provided with shell-cases secured thereto and projecting therefrom, of a shell-delivery device located in the path of the carrier.

Much evidence was taken upon the questions of priority thus put in issue. The Examiner of Interferences decided the issues in favor of Ligowsky. Upon an appeal to the Examiners in-Chief the decision of the Examiner of Interferences was reversed and priority awarded to Hisey. From this an appeal was taken to the Commissioner, who again awarded priority of invention to Ligowsky and reversed the decision of the Examiners-in-Chief. (Ligowsky v. Peters v. Hisey, C. D., 1891, 220; 57 O. G., 1593.) In accordance with this judgment a patent was issued to Ligowsky's assignee, the Peters Cartridge Company. That patent is dated December 8, 1891, and is numbered 464,883.

To reverse this action of the Department and to have Charles S. Hisey declared the only and first inventor of the improvements patented to the assignee of Ligowsky is the object of this suit. The entire record upon the interference issue in the Patent Office, together with the opinions filed upon the several and independent hearings accorded upon the interference issues, was by stipulation filed in the Circuit Court and made a part of the record. Both parties took additional evidence, and upon a record thus made up of more than thirty-three hundred printed pages the cause was heard in the court below by the Hon. George R. Sage, district judge, who again awarded priority of invention to Ligowsky. In an opinion found in the transcript sent to this court that able and experienced patent judge said:

The opinion of this court, after having heard the arguments of counsel, examined their briefs and the record, and considered the whole case, is that, independently of

the rule as to the burden of proof, the decision of the Commissioner of Patents is right; that Ligowsky was the inventor, and that the attempt of Hisey to appropriate the invention was fraudulent. (Standard Cartridge Co. et al. v. Peters Cartridge Co., C. D., 1895, 499; 72 O. G., 742; 69 Fed. Rep., 408.)

In accordance with this conclusion the bill of the complainant was From this decree an appeal has been perfected and errors

dismissed.

assigned.

Before TAFT, LURTON, and HAMMOND, Judges.

Having made the foregoing statement of facts, the opinion of the court was delivered by LURTON, Circuit Judge.

Though the issue is one of priority of invention between Charles S. Hisey and George Ligowsky, its solution under this proçeeding does not depend upon the mere preponderance of evidence. That department of Government charged with the duty of originally hearing and determining questions of priority arising under conflicting applications of inventors has, upon evidence and full consideration, determined the controversy between those parties against the contention of the present complainant and awarded a patent to the assignee of George Ligowsky. But for the provision made by Congress and found in section 4915 of the Revised Statutes the conclusion of the executive department of Government that Hisey was not entitled to a patent upon improvements which he claims to have invented in cartridge-loading machines would be fatal to his claim. The statute referred to is the sole foundation for the jurisdiction now invoked. In considering the weight to be attached to the action of the Patent Office in a like case where there had been an interference issue between rival claimants of the same invention the Supreme Court said:

It is an application to the Court to set aside the action of one of the executive departments of the Government. The one charged with the administration of the patent system had finished its investigations and made its determination with respect to the question of priority of invention. That determination gave to the defendant the exclusive rights of a patentee. A new proceeding is instituted in the courts-a proceeding to set aside the conclusions reached by the administrative 'department, and to give to the plaintiff the rights there awarded to the defendant. It is something in the nature of a suit to set aside a judgment, and as such is not to be sustained by a mere preponderance of evidence.

Upon principle and authority, therefore, it must be laid down as a rule that where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction. (Morgan v. Daniels, C. D., 1894, 285; 67 O. G., 811; 153 U. S., 124, 125.)

Tested by this rule, has the complainant made such a case as to justify this court in canceling the patent issued to Ligowsky's assignee and requiring one to be issued to Hisey instead?

Machines for automatically loading cartridge-shells with powder wads, and shot had been long known in the art before either Hisey or

Ligowsky claim to have made the improvements now in controversy. Many patents for such cartridge-loading machines have been filed in this record to illustrate the history of the art before the attention of either was attracted to such machines. In most of these patents cartridge-shells were loaded with powder, shot, and wads automatically and then ejected from the machine. In most, if not all, of them to which attention has been particularly called the carrier conveying the empty shell to the different loading-tools traversed a circular path. The location of the loading-tools necessarily conformed to the structure of the shell-carrier, and were therefore arranged in a cluster. The circular arrangement of the loading-tools and the circular character of the table or disk carrying the empty shells to the loading-tools in proper succession characterized all of the machines of the old art, and are therefore known as "round-table machines." The radical point of departure from this old round-table type of machine covered by the conflicting claims put in issue by the interference proceeding lies in the substitution of an endless belt, band, or carrier, suitably actuated and provided with shell-cases secured thereto and projecting therefrom, for the old round-table disk carrier of the old type of machine. The change from a rigid disk carrier traversing a circular path to an endless-belt carrier moving in a straight line` made necessary a readjustment of the location of the loading-tools and their arrangement in a straight line above the belt shell-carrier, as well as the adaptation of a device for delivering the shells properly located in the path of the carrier. This substitution of an endless-belt shell-carrier, properly actuated, for the old round-table carrier and the necessary relocation and proper adaptation of the loading-tools and other devices already known to the art to the new form of carrier constituted the real substance of the improvements on the old machines described in the interference issues.

The case for Hisey as the first and sole inventor of these improvements on the old type of machine is substantially this:

First. That during the summer and fall of 1887 he had been engaged in overhauling and truing up two round-table machines for the Peters Cartridge Company and in constructing two other machines of the round-table type for the same company. He claimed that he made many improvements in the mechanism of these machines, which claim, as we shall hereinafter see, became subsequently the subject of another interference contest between himself and G. M. Peters, of the Peters Cartridge Company, the issues in that contest being finally decided against him. He says that the knowledge thus acquired of the clumsiness and slowness of these old round-table machines led him to thinking, and that in the month of April, 1888, the idea of an endless chain carrier occurred to him, being suggested by

observing a bicycle go by that had an endless chain to transmit the power.

He says he followed the thought up by experiment with a chain "on a prismatic disk to view its motion." He then says:

After determining in my own mind that I could make it work, I made a drawing showing the connections as they occurred to me, having its tools on a table above the chain and in line with the chain, and showing a device for intermittently moving the chain.

Second. The drawing mentioned is produced and filed and bears date May 10, 1888. It is signed by Hisey as inventor and by George Ligowsky and Martha Ligowsky as witnesses. The word "Inventor "

George Le goury
Martha L.....y

COMPLAINANTS' EXHIBIT HISEY'S ORIGINAL DRAWING.

above the signature of Hisey was written by George Ligowsky, and the word "Witness" above the signatures of George Ligowsky and Martha Ligowsky is also in the hand writing of George Ligowsky. As to the authenticity of this original Hisey drawing there is no dispute.

Third. That in August, 1889, complete detailed working drawings were made and an organized machine shortly thereafter constructed.