FAILURE TO APPLY FOR A PATENT-PRIORITY. Where T. made an instrument and placed it in a private laboratory, to which outsiders were not admitted, and the knowledge of the instrument and its use were confined to T. and his assistant, and it appeared that the public derived no benefit from it and that T. did not attach sufficient importance to it to take steps to obtain a patent until another had patented the same device and put it into use, Held that T. is not entitled to a patent and that priority should not be awarded to him. (Mower v. Crisp and Copeland, C. D., 1898, 41; 83 O. G., 155; Mason v. Hepburn, C. D., 1898, 510; 84 O. G., 147; Davis v. Forsyth and Forsyth, C. D., 1899, 79; 87 O. G., 516, and in re Mower, C. D., 1899, 395; 88 O. G., 191, cited.)

2. SAME-SAME-SAME-PRACTICE RELATING TO AN AWARD OF PRIORITY.

Where an inventor has reduced an invention to practice, applied for and obtained a patent, and given the benefit of the invention to the public, a cloud should not be thrown on that patent by giving a pro forma award of priority to his rival, who comes into the Patent Office after seeing the patent and introduces as evidence of his claim to priority a device made long before the patentee's, but kept secret and not given to the public.

APPEAL from Examiners-in-Chief.

ELECTRIC MEASURING INSTRUMENT.

Application of Elihu Thomson filed June 21, 1898, No. 684,063. Patent granted to Edward Weston March 22, 1898, No. 600,981; application filed December 7, 1897.

Mr. Albert G. Davis for Thomson.

Mr. Charles J. Kintner for Weston.

DUELL, Commissioner:

This case comes before the Commissioner by an appeal on behalf of Weston from the decision of the Examiners-in-Chief awarding priority of invention to Thomson on the third count of the issue of the above-entitled interference. This count reads:

3. Two electric measuring instruments each provided with an index-needle operatively connected with the rotary or movable part of its own instrument, said rotary or movable parts being located in the magnetic fields between the opposite ends of a pair of energizing-magnets.

Weston, the senior party, referring to this count of the issue, alleges in his preliminary statement that he conceived the invention covered hereby on or about the 16th day of July, 1893, at which time he disclosed it; that working drawings embodying the invention were begun under his direction on November 16, 1896, and were completed on November 23 of that year; that one or more complete full-sized

working instruments coming within the terms of the issue were constructed under his direction and completed on or before October 21, 1897, and that a large number of completed operative instruments coming within the terms of the issue had been placed upon the market. Weston introduces as Exhibit G a blue-print of the working drawing, In his testimony he is unable to state when the first instrument embodying the invention under consideration was made, but says that from his books he knows that an order for an instrument was received in September, 1897, and that it was shipped on November 4, 1897.

Weston's assistant, Benecke, testified that this first instrument was designed in November, 1896, by Weston and that the first orders for these instruments were received on April 6 and filled in July, 1897.

Without further reviewing the testimony, it is sufficient to say that Weston has proved a date of conception and disclosure of the invention on November 23, 1896, with a reduction to practice on October 21, 1897, the date set up in his preliminary statement.

Thomson, the junior party, alleges in his preliminary statement that he conceived the invention set forth in the declaration of the interference about the last week of June, 1894, at which time he made sketches, explained the invention to one of his assistants, and instructed him to make an instrument in accordance therewith; that he embodied the invention in a full-sized working device during the months of July and August, 1894; that prior to September, 1894, the instrument was tested and calibrated in the instrument-room of the General Electric Company at Lynn, Mass.; that since that time the instrument has been used for the purpose of testing electrical apparatus, and that no other instrument embodying the invention has been made or used.

As to the count of the issue in controversy there is some contention raised as to its meaning; but that question has been considered somewhat in detail by the Examiners-in-Chief, and from the view I take of the case I do not find it necessary to pass upon that point, and it may be assumed that the issue means the same as interpreted by both specifications.

Thomson, testifying in his own behalf, says that he had completed a form of voltmeter called an "astatic voltmeter" in May, 1894; that he undertook to apply this construction to an ammeter in June of that year; that at about this time he conceived the idea of combining the ammeter and the voltmeter in one instrument, and that he spoke to Shand, one of his assistants, about the matter; that this idea was particularly in his mind because he proposed to remodel the lighting plant in his own house early in the fall of 1894; that the instrument was constructed during July according to his instructions, and that when he came back from his vacation on August 6 he found it completed. He also testifies that this was a working instrument, and it was mounted on a switchboard in his model-room and used for actual work

in measurements; that this model-room is not accessible to the public, but is supposed to be private, there being a notice on the door of the room forbidding entrance to those not engaged in the shops without permission. He gives the name of Shand as the only person whom he remembers as using this instrument. To the question whether he took any steps toward patenting the instrument, and if not, why not, he testifies that he was engaged in looking after the patenting of a voltmeter and an ammeter separately and had a great deal of patentwork on hand; that his attention was not called specially to this instrument as a subject for patent, and that because he was doubtful of the patentability of the invention he took no steps toward filing an application; but when he noticed in the list of issued patents that Weston had obtained a patent for a similar device he took such steps and wrote to the patent department of the General Electric Company about the matter. The instrument referred to is introduced in evidence as Thomson's Exhibit 1.

Robert Shand, Thomson's assistant, testifies that his first recollection of this instrument was in the summer of 1894, when Thomson spoke to him of the practicability of making an instrument which would in itself combine the functions of a voltmeter with an ammeter; that Thomson instructed him to make such an instrument; that he then proposed to make sketches in accordance with rough designs furnished by Thomson. These he gave to Charles Silvander, a mechanic, to guide him in making the instrument; that Silvander worked on this instrument during the month of June and subsequently; that when it was in shape to be calibrated he took it down to the instrument-room at the factory in charge of Holden, where it was calibrated; that the instrument was then taken to Thomson's mechanical laboratory, commonly called the "model-room," where it was connected in a direct current and kept under observation for a few days, when certain defects were observed which were corrected; that the instrument was completed and put in its present condition previous to the first of September, 1894, and that it had been in continuous use in Thomson's private model-room since it was completed. When asked what restrictions, if any, were imposed on entering the model-room, where this instrument was in use, he stated that outsiders were not admitted, although certain employees went into the room to use the tools and apparatus contained therein. He identifies Thomson's Exhibit 1 as the instrument about which he has been testifying.

Silvander during the taking of his testimony examined the instrument, Thomson's Exhibit 1, and stated that he worked on it in the summer of 1894, when it was finished, and that the instrument was kept on a switchboard in the model-room, where it has been used continuously since.

Jameson, another witness, testifies that he knew of the instrument

The Examiner of Interferences found from this testimony that Thomson is entitled to a date as early as the middle of June, 1894, for conception and disclosure and September 1, 1894, as the date of completion of a full-sized device, and he awarded priority of invention to Thomson; but in his decision he called the Commissioner's attention to the fact that in his opinion Thomson was not entitled to a patent, saying:

In view of the fact that Thomson concealed his invention from the public after he reduced it to practice on September 1, 1894, and did not come to the Office until June 21, 1898, with his application for patent, it is the opinion of the Examiner that he should be denied a patent for the matter of count 3 of the issue, under the doctrine enunciated in the decision of Mason v. Hepburn, (C. D., 1898, 510; 84 O. G., 147;) Davis v. Forsyth and Forsyth, (C. D., 1899, 79; 87 O. G., 516,) and Mower v. Duell, Commissioner, (C. D., 1899, 395; 88 O. G., 191,) and attention of the Commissioner is accordingly respectfully called thereto under the provisions of Rule 126.

The Examiners-in-Chief affirmed the holding awarding priority to Thomson on this count of the issue, saying:

There is nothing in the record to affect the credibility of Thomson and Shand and the mere fact that Thomson and Shand were the only persons who used the instrument amounts to little when it is shown, as their testimony does show, that the use was an actual every-day use taking readings of currents and pressure on the circuits to which this instrument was connected.

They were of the opinion, however, that the delay in filing Thomson's application was not a bar to the grant of a patent to him and declined to call the Commissioner's attention to this matter under the provisions of Rule 126. On this subject they state:

We do not regard it as necessary at this time to take any such action, for the reason that we are not prepared to say that Thomson's delay was in this instance of such a character as to estop him from now asserting his right thereto. We know of no decision of the courts refusing a patent to the first inventor under the circumstances of this case, viz: where an inventor has completed an invention by an actual reduction to practice and has kept such invention in his possession and in actual use, and has promptly asserted his rights thereto as soon as he became aware that another inventor was making a claim thereto. The circumstances of the present case seem somewhat analogous to those in the case Esty v. Newton, (C. D., 1899, 284; 86 O. G., 799.) See also Wurts v. Harrington (C. D., 1897, 20; 79 O. G., 335) and McBerty v. Cook, (C. D., 1900, 248; 90 O. G., 2295.)

Weston alleges in his reasons of appeal that the Examiners-in-Chief erred in finding that Thomson ever reduced the invention to practice and in not finding that what he did amounted to no more than an experiment, and also that they erred in awarding priority of invention to him. His contention, as stated in his brief, is that Thomson's proofs fail to show with that certainty which the law requires in cases where the burden of proof rests upon an applicant as heavily.as it does upon Thomson that what he did was a reduction to practice.

From the view I take of the case it is not necessary to decide whether or not Thomson has discharged the burden on him to prove

that what he did in 1894 was a reduction to practice. Assuming that Exhibit 1 was a reduction to practice of the invention, the question arises whether Thomson is entitled to a patent.

After Thomson made his instrument in 1894 he placed it in his model-room or private laboratory, to which outsiders were not admitted, and this instrument was only seen by the employees who might go into that room, and the knowledge of this instrument and its use in the model-room were confined to Thomson and his assistant, Shand. The use to which Thomson put this device, whatever it may have been, was in his private model-room. The public was not made acquainted with the instrument or its use and derived no benefit whatever from it. It seems that he did not attach sufficient importance to it to take steps to obtain a patent and he believed that it was not patentable. He deliberately concealed the invention from the public until another had patented the device and put it into extensive use. Under these circumstances Thomson is not entitled to a patent under the authorities.

In the case of Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147) the facts were very similar to those in this case. Hepburn stood to Mason in the same relation that Weston does to Thomson, except that Hepburn relied upon his patent, while Weston not only has proved his date of reduction to practice, but has shown that he is and has been for a long time engaged in the commercial manufacture of the instruments on a large scale. Mason proved reduction to practice in 1884, but he did not file his application for patent until December 31, 1894, three months after Hepburn's patent issued on September 11, 1894. The device, completed in 1887, was a clip which was placed on a gun ready for use at that time. This gun, with the clip attached, was then stored in the model-room of Mason's company. No clips of the kind were ever manufactured, no exhibit of the gun and clip was made to the public, and no one saw it, except Mason and one or two of the employees of the company. No steps were taken by Mason to obtain a patent until Hepburn's patent had issued.

Under these facts the Court of Appeals of the District of Columbia held that Mason was not entitled to a patent and that Hepburn was the first inventor under the law relating to the grant of patents. In that decision Mr. Justice Shepard, speaking for the Court, said:

Although the construction and adaptation to use of the clip were within the knowledge of several persons, these were all, with Mason himself, employees of the Winchester Repeating Arms Company, for whose benefit the invention was made. They had either been called on to aid in the construction and use or by the nature of their employment were necessarily cognizant of it. The invention was therefore as much secreted from the public as if it had been confined to the knowledge of Mason alone. (Pennock v. Dialogue, 1 Pet., 1, 19; Kendall v. Winsor, 21 How., 322, 330.) The public did not and was not intended to receive any benefit from it during the seven years that intervened between the construction and the application for the patNot having been given or abandoned to public use there was nothing in the

nt.