stood Jones' suggestion could be carried out; that upon receipt of the letter the same day, he requested that a docket entry be made out on the matter by his company, so that patent protection might be obtained. He further states that on May 2, 1921, he instructed a draftsman for the patent department of his company to make drawings of the Jones application as soon as possible, and that within a month thereafter a drawing had been made. He states that he did not proceed immediately with the preparation of an application for patent at that time, because of the fact that Jones advised him he was having calculations made of the most effective design of transformer for the purposes which he had in view, and expected to make further tests before an application would be made. He states, further, that during the summer of 1921 he wrote several letters, requesting that the most effective design of transformer be determined as soon as possible, and that other steps should be taken as rapidly as they could be taken; that on September 27, 1921, he saw a final test of the control system in Building 12 of his company, and that the control system then tested was the same as that described in the application herein. Immediately thereafter he began a preparation of an application for patent, but found it necessary to instruct the Patent Office draftsman to make certain changes in the drawings, which work was begun on October 17, 1921. The claims were thereafter prepared, following the usual practice of the company, and the application was finally finished about a week prior to December 24, 1921, several conferences having been had with Jones immediately prior to that time. Certain minor corrections were made in the application thereafter, at the suggestion of Jones, and the draft was completed on December 28, and filed on January 9, 1922. A witness, Charles H. Chapman, states that he was employed by the appellant's company; that he assisted appellant in his early tests of his new system, but was not present at the final operation. He states, and this fact is given great force by appellee, that "this test was not considered entirely satisfactory, although some promise of better results was found to be possible.' It plainly appears, however, from his testimony, that the device which was tested, involved the matters in issue here, namely, the use of a transformer and relays similar in operation to those described in appellant's application. Peter J. Mulvey testified that about the middle of February, 1921, he was called in to assist the appellant, Jones, and that in the latter part of that month he helped Jones make a test of the Cousins' system in conjunction with "some transformers that were connected behind the panel." At various times during the summer of 1921, according to this witness, tests were made on the Jones' device. A panel was made under Jones' direction, and delivered to this witness on March 17, 1921, and was tested during that month, as he states, about "the middle of March." This is the substance of appellant's testimony, and it is upon this showing that the Board of Appeals held, as follows: On May 25, 1921, he wrote to Douherty, Exhibit 8, telling him that the transformer used in the previous test was ready for his inspection. On May 31, 1921, an order for manufacturing the transformers had been prepared, Jones Exhibit 9, but it was not until the early part of July, 1921, that Mittag was set to work on designing the transformers. (Mittag, Q. 7.) He began his calculations early in July, 1921 (Q. 9), and did not furnish them until the middle of September, 1921 (Q. 10). The test was made on September 27, 1921. Here was a delay from April 16, 1921, to early in July, 1921, in setting Mittag to work, and from that time up to the middle of September seems to be a liberal allowance for the performance of this work. The work on the application ceased on June 1, 1921, and even if it was suspended on account of Mittag's work, he was not set to work until a month later. We are of the opinion that neither the preparation of the application nor the efforts to actually reduce to practice were carried on with proper diligence. [1] We are unable to coincide with the view of the Board of Appeals in this respect. It is true that any lack of diligence on the part of appellant's assignee, the General Electric Company, or its officials and employees, would be chargeable to the appellant and vice versa. However, in deciding this matter, some consideration must be had of the difficulties which ensue when a device of as delicate and intricate a character as this is being perfected. Especially is this true when the various steps by which the perfection of the device is to be brought about, necessarily must go through many different hands. We are of opinion that the facts shown by the record are sufficient from which to conclude that there was sufficient diligence shown on the part of appellant to justify a finding of priority of invention to him as to counts 1 and 2. He had taken the matter up, after his preliminary tests, with the proper officers of his company, and had immediately requested the data and calculations as to the proper type of transformer to be used. These data were being collected from other branches of the company, and we think it would be a manifest perversion of justice to say that the original inventor of this system of control should lose the benefit of his invention by the mere fact that a possible interval from April 16th to early in July elapsed, in which it does not affirmatively appear that any steps were being taken toward the filing of a proper application for patent. It may be that the machinery which appellant had set in motion in the General Electric Company was moving slowly, but not to such an extent, in our opinion, that the appellant should be caused to lose the fruits of his invention thereby. [2] The law, while it encourages and requires diligence in reduction to practice and in making application for patent, also admits of such delay in making application for patent as is reasonably required to test the thoroughness and utility of supposed inventions, and to prevent the Patent Office from being overloaded with applications for patents for crude and incomplete devices. Such has been the uniform holding of the Court of Appeals of the District of Columbia, the court having earlier jurisdiction of these matters, a holding in which we concur. Yates v. Huson, 8 App. D. C. 93, 74 O. G. 1732; Griffin v. Swenson, 15 App. D. C. 135, 89 O. G. 919; O'Connell v. Schmidt, 27 App. D. C. 77, 122 O. G. 2065; Woods v. Poor, 29 App. D. C. 397, 403, 130 O. G. 1313. Whether the test of March, 1921, may be considered a reduction to practice, or whether Jones shall have his rights established by a reduction to practice on September 27, 1921, is immaterial, in our view of the matter. We find he was not so lacking in diligence, at any period, as to bar his right to a patent. [3] We should not be understood as here announcing the doctrine that any different rule of diligence is required when a corporation 80349°-32-——12 is the party in interest in an application for patent and that in which an individual is involved. The same rule of diligence applies to both. Each case where diligence is involved rests and must be decided upon its own facts, and all the surrounding circumstances must be viewed and considered in determining whether there was sufficient diligence. In this case, viewing the facts disclosed, as a whole, we think there was. [4] The decision of the Board of Appeals is reversed and priority is awarded to the party Jones on counts 1 and 2 of the interference. Reversed. [U. S. Court of Customs and Patent Appeals] No. 2,544. Decided February 3, 1931 405 O. G. 845; 46 F. (2d) 570 1. INTERFERENCE-PRIORITY-PATENTABILITY OF ISSUE NOT CONSIDERED. "The question of patentability will not be considered by this court in an interference proceeding." 2. SAME-SAME-CONSTRUCTION THEREINTO. OF ISSUE-LIMITATIONS WILL NOT BE READ "The counts of the interference should be given the broadest interpretation which they will reasonably support, and this court is not justified in reading limitations into them for the purpose of changing the plain import of their terms. Had appellant desired to limit his claims to a particular kind or type of kraft paper he might have done so. However, having deliberately elected to claim the invention broadly, he is not in a position to insist that limitations be read into his claims (the counts in issue) for the purpose of avoiding the issue of priority." 3. SAME SAME. Record reviewed and held that H. and S., the senior party, are entitled to make the claims and priority was properly awarded to them, since the testimony on behalf of D. did not establish a date of invention prior to the filing date of the senior party. APPEAL from the Patent Office. Affirmed. Messrs. Hull, Brock & West and Mr. George E. Tew for Deibel. Mr. Charles C. Sheffler, Mr. Charles H. Potter, and Mr. Warren J. Willis for Heise and Schumacher. HATFIELD, J.. This is an appeal in an interference proceeding from the decision of the Board of Appeals affirming the decision of the Examiner of Interferences awarding priority of invention to appellees, Heise and Schumacher, for an alleged invention relating to linings for dry cells. The counts in issue were taken from appellant's application. Count 6 is illustrative. It reads: 6. In a dry cell, the combination of a negative element, a covering of kraft paper applied to the active surface of said negative element, a positive element, and a mass of depolarizing mix compressed between said elements, the aforesaid covering of kraft paper being permeated with electrolytic solution. Counsel for appellant moved to dissolve the interference on the ground that appellees had no right to make the claims in issue. It was argued by counsel for appellant before the tribunals below, and it is argued in this court, that, although the counts in issue broadly cover a battery lining of kraft paper, they should be construed in the light of appellant's specification, wherein it was declared that appellant used a thin, tough, pliable kraft paper; and that appellees disclosed in their specification the use of heavy ribbed or corrugated kraft paper. In his decision denying the motion to dissolve the interference, the Law Examiner held that the counts in issue were not limited to a particular type of kraft paper, but, on the contrary, were sufficiently broad to read on appellees' disclosure. Thereafter, testimony was introduced by each of the parties and the cause submitted to the Examiner of Interferences. In his decision awarding priority of invention to appellees, the Examiner of Interferences, among other things, said: At final hearing counsel for Deibel admitted orally that he did not contend that the proofs submitted on behalf of Deibel were sufficient to entitle him to an award of priority. In view of the fact that the party Deibel is not urging that his proofs be considered as entitling him to an award of priority, it will be unnecessary to discuss the testimony submitted by the parties. Counsel for Deibel however seeks to urge the nonpatentability of the issue. Nonpatentability of the issue does not form a basis for an award of priority but can only be considered by this tribunal as a basis for a recommendation under rule 126. The case here presented is not found to justify such a recommendation and accordingly no action will be taken under the provisions of rule 126. The Board of Appeals, in affirming the decision of the Examiner of Interferences, said: The counts are broad and do not contain the restrictions called for an [in] appellant's assertions in his brief. The assertions appear to be made merely for the purpose of questioning the patentability of the claims in the form stated. This question can not be now raised by the appellant. The broad claims constituting the issues of this interference were suggested by the Examiner and were adopted by Heise and Schumacher. By the cancellation of original claim 4, Heise and Schumacher were not estopped from adopting the suggested claims which are clearly within the disclosure of the specification of Heise and Schumacher and were adopted before final action on the case. The question whether claims may be reinstated must be left largely to the discretion of the Examiner, ex parte Kieffer, 104 O. G. 2443, 1903 C. D. 204. In the present case the Examiner in considering the claims of Deibel apparently reconsidered his rejection of claim 4 of Heise and Schumacher and, considering that rejection unwarranted, allowed the claims of Deibel and suggested them to Heise and Schumacher with the result that Heise and Schumacher adopted them. Counsel for appellant contends that the Board erred in holding that appellees had a right to make the claims constituting the issue; that appellees were estopped from adopting the claims involved in the interference, because they were required by the Primary Examiner to cancel their original claim 4, which read: A dry cell having a lining comprising a sheet of corrugated kraft paper. and that, if the counts in issue are given a construction sufficiently broad to cover appellees' disclosure, instead of being construed in the light of appellees' specification, they are "broader than the real invention of the parties and are unpatentable." Counsel for appellant conceded on the hearings below, and the contrary is not claimed here, that, if appellees are entitled to make the counts in issue, they are entitled to an award of priority. [1] The question of patentability will not be considered by this court in an interference proceeding. Gowen v. Hendry et al., 17 C. C. P. A. (Patents) 789, 393 O. G. 1024, 37 F. (2d) 426; Brodgen v. Slater, 17 C. C. P. A. (Patents) 1240, 40 F. (2d) 988, 399 O. G. 630. [2] The counts in issue do not contain any express limitations as to the kind or type of kraft paper used as a lining for dry cells, nor is there any ambiguity in the language therein contained. The counts of the interference should be given the broadest interpretation which they will reasonably support, and this court is not justified in reading limitations into them for the purpose of changing the plain import of their terms. Had appellant desired to limit his claims to a particular kind or type of kraft paper he might have done so. However, having deliberately elected to claim the invention broadly, he is not in a position to insist that limitations be read into his claims (the counts in issue) for the purpose of avoiding the issue of priority. Miel v. Young, 29 App. D. C. 481, 128 O. G. 2532; Western Electric Company v. Martin, 39 App. D. C. 147, 182 O. G. 723; Leonard v. Pardee, 39 App. D. C. 458, 188 O. G. 516; Scott v. Longtin et al., 52 App. D. C. 102, 304 O. G. 233, 281 F. 606; Lynch v. Headley et al., 52 App. D. C. 269, 307 O. G. 737, 285 F. 1003; Holslag v. Hollup, 52 App. D. C. 272, 334 O. G. 283, 285 F. 1006. We deem it unnecessary to discuss the issue of estoppel raised by counsel for appellant. The question has been fully discussed and, in our opinion, correctly decided by the Board of Appeals. We agree with the conclusion reached by the tribunals of the Patent Office and the decision of the Board of Appeals is affirmed. Affirmed. [U. S. Court of Customs and Patent Appeals] IN RE WILSON No. 2,580. Decided February 3, 1931 406 O. G. 5; 46 F. (2d) 571 PATENTABILITY-VEHICLE WHEEL. Claims for a vehicle wheel adapted to be operable in both vertical and inclined positions Held unpatentable over the prior art. APPEAL from the Patent Office. Affirmed. Mr. Wallace R. Lane, Mr. F. F. Mason, and Mr. Wm. S. Hodges for Wilson. Mr. T. A. Hostetler and Mr. Howard S. Miller for the Commissioner of Patents. BLAND, J.: The subject matter of this ex parte appeal from the decision of the Board of Appeals of the United States Patent Office, affirming |