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damental test shall be-do the applications, or application and patent, claim substantially the same patentable invention? This subject is touched upon at pages 17 to 20, inclusive, of a paper which I had the honor to read before the Examining Corps on January 11, 1917.

In discussing interferences the terms "issue" and "count" are frequently employed. By "issue" is meant the entire subject matter in contest, whether defined by one count or several; by "count" is meant a single claim of the issue.

The phrase "question of priority of invention” embraces any one of a number of quite different problems which arise for solution in determining which one of two or more contestants for a patent right is entitled thereto. For example, among others, it includes:

(a) The case where two or more parties have independently invented the subject matter in contest and it is simply a question as to which party was the first to invent it. Gallagher, Jr. v. Hien, 1905 C. D., 624; 115 O. G., 1330; 25 App. D. C., 77; or

(b) The case where two or more parties have independently originated the subject-matter in contest, and it is contended that at least one of them after actually reducing his invention to practice has "concealed or suppressed" it. Mason v. Hepburn, 1898 C. D., 510; 84 O. G., 147; 13 App. D. C., 86; Shiner v. Edison, 1909 C. D., 174; 147 O. G., 517; or

(c) The case of originality, where only one of two or more parties has actually made the invention and the problem is to determine which one. Winslow v. Austin, 1899 C. D., 301; 86 O. G., 2171; 14 App. D. C., 137; or

(d) The case where a partnership arrangement exists between the inventor of a generic invention and the inventor of an improvement thereon, and the problem is to determine who is entitled to patent the improvement. Milton v. Kingsley, 1896 C. D., 420; 75 O. G., 2193; 7 App. D. C., 531; or

(e) The case where an employee is hired by an employer to work out a conception of the latter and as a result of such employment the employee develops a further invention. Agawam Company v. Jordan, 74 U. S. (7 Wallace), 583, 602; Llovd v. Antisdel, 1901 C. D., 371; 95 O. G., 1645; 17 App. D. C., 490.

The elements for proof in a straight priority case, i.e., a case where the invention in contest has been

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independently originated by two or more parties, comprise: (a) conception; (b) reduction to practice (actual or constructive); (c) diligence in reducing to practice; and (d) excuse for lack of diligence in reducing to practice.

Representative cases expounding the law under each of these headings may be cited as follows:

(a)

(b)

(c)

(d)

Conception-Mergenthaler v. Scudder, 1897 C. D., 724; 81 O. G., 1417; 11 App. D. C., 264.

Diligence-Christie v. Seybold, 55 Fed., 69, 76; C.
D., 1893, 515; 64 O. G., 1650.

Excuse for Lack of Diligence-Griffin v. Swenson, C. D., 1899, 440; 89 O. G., 919; 15 App. D. C., 135.

The rule of law for straight priority cases was well stated by Judge William H. Taft, in Christie v. Seybold, supra, as follows:

*

* * the man who first reduces an invention to practice is prima facie the first and true inventor, but * * the man who first conceives, and in a mental sense, first invents, a machine, art or compositon of matter, may date his patentable invention back to the time of its conception, if he connects the conception with its reduction to practice by reasonable diligence on his part, so that they are substantially one continuous act."

The parties to an interference can only be original, or reissue applicants, or one or more of these against one or more patentees.

The Office has no authority to declare an interference between two patentees. Wilson et al. v. Yakel et al., 10 O. G., 944; C. D. 1876, 245. See also Haish v. Rosado v. Aishton, 43 MS.D., 227.

The question of priority between two or more patentees who may be parties to an interference need

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not and cannot be determined after judgment therein. has been rendered against the applicants who were also parties to such interference and who acquiesce in such judgment. Marshall v. Fish et al., 16 O. G., 139; C. D., 1879, 121.

It is an inexorable requirement, not only of Rule 93 but of many decisions, that applications, or applications and patents, interfere only when they claim in whole or in part the same invention. As far back as Nicholson v. Bennett et al., 16 O. G., 631; C. D., 1879, 218, Commissioner Paine held that: "It is the fact and not the possibility of the claim of an invention by an applicant which legalizes the declaration of an interference between his application and other applications or patents." This is also the rule laid down by the courts in trying suits between interfering patents under Section 4918 R. S. See Gold and Silver Ore Co. v. U. S. Disintegrating Co., 6 Blatch., 307; Stonemetz Printers Machinery Co. v. Brown Folding Machine Co., C. D., 1893, 478; 64 O. G., 1135; and Nathan v. Craig, 1892 C. D., 280; 58 O. G., 1093. In Reed v. Landman, 55 O. G., 1275, C. D. 1891, 73, Commissioner Mitchell held that it may be laid down as indisputable that interferences in the Patent Office (under Section 4904 of the Revised Statutes), like interferences in the courts (under Section 4918 of the Revised Statutes), exist only when the claimed inventions conflict; and Commissioner Duell, in Hammond v. Hart, 83 O. G., 743, C. D. 1898, p. 52, said that the courts have clearly held that the interference proceeding of Section 4918 R. S. is the same as that of Section 4904 R. S. The difference lies only in the forum. The Examiner or Commissioner treating the question of interference should put himself in the place of a judge of a United States court, and should treat the applications, or the patent and application, as though they were both issued patents pending before the court. To the same effect is the decision of Commissioner Marble, in Drawbaugh v. Blake, 23 A. G., 1221; C. D., 1883, p. 17. Commissioner Simonds, in Short v. Sprague et al., 56 O. G., 1708, C. D., 1891, p. 166, said: "It is not proper to put into an inter

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ference two parties who do not and will not claim the same thing."

In case of a patent and an application, the mere fact that the patentee's rights would be abridged or infringed by the grant of a patent to the applicant is not a reason for declaring an interference, when the parties do not claim substantially the same invention. The latter test is the true one. Ex parte Whitney, 83 O. G., 1659; C. D. 1898, p. 82.

The phrase "substantially the same patentable invention," or its equivalent, is found not only in Rule 93 but also in Rule 94, and again in Rule 96. These words compass by far the greatest problem in interference practice. In studying decisions construing these words it is often useful to observe whether a given decision is written about the words as used in one rule or the other. Also it is very desirable to notice the wording of these rules at the dates of decisions interpreting them. It will be noted that Rule 93 defines an interference in esse, as an existing fact or proceeding in progress; Rule 94 definies the inevitable prerequisite condition of applications and patents immediately before an actual declaration of an interference can be made; Rule 96 defines the inevitable condition requisite to the taking of steps. looking to the suggestion of claims, i.e. to the bringing of applications within the definitions of an interference as given in Rules 93 and 94.

I shall discuss what is meant by substantially the same patentable invention mainly in connection with Rule 93, and first what has been held to constitute substantially the same invention.

Manifestly this subject is related to the question of substantial identity. Walker discusses the subject of identity in paragraph 180" of his book. In effect he says identity depends upon coextensiveness of claims. His statement substantially makes the rule applied in double patenting cases the rule to be applied in determining identity of invention.

The following are rulings from certain leading decisions upon the meaning of the phrase "substantially the same invention"; and the first from Commis

sioner Marble, in Drawbaugh v. Blake, 23 O. G., 1221, C. D., 1883, 17, wherein he said:

"It is difficult to specify the cases in which interferences may arise. It may be said, in general terms, that the parties must claim the same substantial invention. The claims need not be framed in the same language, nor refer to the same uses and functions of the interfering devices; but whenever they claim the same substantial invention, whether in one or several claims, an interference exists and should be declared. The claims may use different descriptive terms in referring to the devices; or an applicant may claim in the aggregate a machine which is claimed by another applicant in detail. So the invention which is the essence of the claim may be disguised by the introduction into the claim of superfluous elements or devices not in combination with the devices which form the invention. If the claims, however, cover the same invention it is not necessary that they should cover the same thing. Thus the invention may remain the same although the circumstances under which it is applied may be different. If one applicant claims the invention applied to a machine of a particular class, and another applicant claims the invention as applied to a machine of another class, the two machines being analogous in their operation, and the principle of invention remaining the same in the two cases, the claims would interfere. This is an obvious deduction from the well established doctrine that a mere analogous or double use of an old device does not conIstitute an invention. * * In other words, the question will be whether the two claims present substantially the same invention, disregarding differences which are merely formal and non-essential, such as the mere substitution of different materials or the employment of equivalent devices for performing the same functions."

*

He then goes on with the discussion, holding that generic and specific claims do not cover substantially the same invention and do not interfere, and that it does not conflict with public interest to send a broad or generic claim to issue after a narrow or specific claim has been patented.

Commissioner Duell, in Hammond v. Hart, 83 O. G., 743; C. D., 1898, p. 52, stated that to his mind the Drawbaugh v. Blake case is well reasoned, and founded on the statute (Section 4904) and the Rules of Practice applicable thereto. He therein stated that in order to interfere two claims must have the same tenor and scope.

Other rulings may be now noted:

Where it appears that the invention claimed in a patent is the same as an invention claimed by an ap