ineffective. If the inter partes hearing upon appeal is to be escaped, the usefulness of motions for dissolution will be slight, except in those cases where parties voluntarily take the inter partes appeal. Why should motions be brought or even permitted if decisions granting them can be set aside upon appeal without opportunity for the moving parties to be heard, and presumably to a large extent without consideration of the arguments upon which the conclusions appealed from are based? It is no sufficient answer to say that if the decision of the Primary Examiner is reversed the motion may be brought again when the interference is reinstated or redeclared. If reinstated, a new motion brought and granted would presumably be followed by another ex parte appeal and another reversal of the decision. There would be no logical conclusion to such proceedings, and to permit them would be absurd. The practice of permitting motions for dissolution to be brought is believed to be good. If appeals upon these motions are to be permitted, the prosecution thereof must be inter partes to save the whole proceedings upon the motion from becoming farcical. The rules at present do provide for appeals, and it is not deemed expedient to change them in this respect at the present time.

We conclude, therefore, that the provisions relating to ex parte applications do not apply to inter partes actions, and that, when the appeal from the decision of the Primary Examiner was abandoned. his decision became final and binding upon the parties.

But, it is insisted, that mandamus is not the proper remedy. When the decision of the Primary Examiner that Thomson and Lemp had no right to make the claims in issue became final and res adjudicata, those parties were eliminated from the case, and appellant was entitled to go hence in the full and uninterrupted enjoyment of the patent. Under the statute the jurisdiction of the Commissioner attaches when he directs the declaration of an interference, and he still retains jurisdiction to award priority to the successful party after his adversary has been eliminated. It would indeed be an anomalous situation, if his determination that one party to an interference has no right to make the claims in issue, and, therefore, is not entitled to a judgment of priority, operates to deprive him of jurisdiction to award priority to the other party who has the right to make the claims in issue and who is entitled to an award of priority. The remedy of the defeated party is by way of appeal. He has no right whatever thereafter to prosecute the claims of the issue in an ex parte case. It follows, therefore, that when Thomson and Lemp abandoned their appeals from the decision of the Primary Examiner denying their right to make the claims in issue, that decision became final and res adjudicata as between the parties to the interference, and that thereafter the Commissioner was without authority to direct the Primary Examiner to readjudicate in Thomson's and Lemp's ex parte applications, the question whether they had the right to make the identical claims of the issue in the interference proceeding. If this remedy is denied it appellant will be again compelled to litigate with Thomson and Lemp in the Patent Office the same question which we have held has already been finally

determined in its favor. All this will involve expense, delay, and loss. The Commissioner, being without authority to direct a readjudication of the question involved in the former interference, has no discretion in the premises, for

whether the former decision was right or wrong, or was induced by the want of the particular evidence that was offered in the present case, is not the question. However that might be, it was final and put an end to the litigation in the first interference. (Blackford v. Wilder, C. D., 1907, 491; 127 O. G.,

1255; 28 App. D. C., 551.)

It is no answer to the petition of appellant that the Commissioner deemed himself possessed of the authority he exercised, if no discretion in the premises was committed to him and he was in fact acting beyond his authority and without warrant of law. (Garfield v. U. S. ex rel. Frost, 35 W. L. R., 771; 30 App. D. C.; U. S. ex rel. Daly, v. Macfarland, 28 App. D. C., 552.)

Seymour v. Brodie, (C. D., 1897, 372; 79 O. G., 509; 10 App. D. C., 567,) confidently relied upon by appellee to defeat appellant's right to the writ, is not in point. That case like this involved an interference between an application and unexpired patent, but in that case the decision dissolving the interference had been acquiesced in by the junior party, leaving the senior party in full possession and enjoyment of his patent. This court very naturally held that the patentee was not entitled to a writ of mandamus to compel the Commissioner of Patents to reinstate the interference proceeding because he had suffered no legal injury whatever and because he remained "in full possession of all his legal rights to the same extent as before he was summoned to defend those rights."

In the instant case a second attack not authorized by law has been instituted against appellant's patent, and necessarily has impaired that patent. There being no other adequate and speedy remedy, we think appellant entitled to the relief sought.

The judgment of the court below must be reversed with costs, and the cause remanded to that court with directions to issue the writ as prayed.

1. INTERFERENCE

[Court of Appeals of the District of Columia.]

BRAUNSTEIN v. HOLMES.

Decided February 4, 1908.

133 O. G., 1937; 30 App. D. C., 328.

EMPLOYER and EMPLOYEE-PRINCIPAL AND ASSISTANT.

It is well settled that in the relation of employer and employee, where the employer conceived the principle or plan of an invention and the employee is directed to perfect the details, though the employee may make valuable improvements thereon, the improved result belongs to the employer. The same rule of law applies to principal and assistant, though they may be fellow employees.

2. SAME-SAME-SAME-PRESUMPTION.

B. was assigned to assist H. in making investigation and actually did the work which resulted in reducing the invention to practice. Held that the presumption is that what he accomplished was done under H.'s direction, and the burden is on him to overcome that presumption.

Mr. C. H. Howson for the appellant.

Mr. G. J. Harding for the appellee.

VAN ORSDEL, J.:

This is an appeal from the decision of the Commissioner of Patents in an interference proceeding. (C. D., 1907, 303; 130 O. G., 2371.) The decision of the Commissioner affirmed a decision of the Board of Examiners-in-Chief, which, in turn, affirmed a decision by the Examiner of Interferences, awarding judgment of priority to the appellee. On July 21, 1904, the appellee, Fletcher B. Holmes, filed his application, No. 217,503, for a patent on an invention relating to the manufacture of commercial explosives from nitro-starch. The particular issue in interference relates to an explosive consisting of a mixture of nitro-starch and ammonium oxalate. In his preliminary statement, Holmes fixed July 1, 1903, as the date of his conception and disclosure of the invention in question, and September 1, 1903, as the date of reduction of the invention to practice. Braunstein filed his application, No. 223,503, for the same invention September 7, 1904. In his preliminary statement, June, 1903, is fixed as the date of his conception of the invention; June or July, 1903, as the date of disclosure; and July, 1903, as the date of reduction of the invention to actual practice.

Holmes is the senior party, and Braunstein the junior party. The issue before us is to determine which of the parties to this controversy is the inventor. Both were employed during the summer of 1903 as chemists in the Eastern Laboratory, a department of the high-explosive division of the Dupont Powder Company. This laboratory was established in 1902 for original experimental work in the production of explosives. It appears from the evidence that Holmes, shortly after he was employed in the Eastern Laboratory, was assigned to make experiments in the stabilizing of nitro-starch. This assignment was made in June, 1903. Quoting from the evidence of Holmes, which is not denied

It had been known for some time that nitro starch was a powerful explosive, but it was as well known that nitro-starch was exceedingly unstable and liable to spontaneous decomposition. The problem set before me was that of discovering some method by which nitro-starch could be made stable.

This defines the class of work to which Holmes was assigned. Braunstein's employment in the Eastern Laboratory dated from October 1, 1902, and consisted of miscellaneous laboratory work until

about August 15, 1903. It is contended by counsel for Holmes that the evidence establishes, not only the assignment of Holmes to work on the nitro-starch problem, but that prior to September 1, 1903, he had formulated the plan of investigation which led to the invention in question; that about the middle of August the investigation had reached a point where the detail work became so great that it was necessary for Holmes to have an assistant; and that Braunstein was selected from the laboratory force and assigned to assist him.

It is contended by Braunstein that he had been working upon the problem of stabilizing nitro-starch for some months prior to the date of his assignment to assist Holmes, and that, during the time that he was working with Holmes, he revealed to him the results of his investigation, which finally culminated in the discovery here sought to be patented. The evidence, we think, clearly discloses, and, in fact, it was admitted at bar, that the work of reducing the invention to practice was performed by Braunstein. The question at issue, which must be ascertained from an examination of the evidence alone, is whether the means which brought about the results, which are the basis of the claims of the contesting parties for patent, originated in the experiments of Braunstein, or were discovered by Holmes, and only put into operation by Braunstein under Holmes's direction.

That Braunstein was assigned to assist Holmes in making his investigations is established by the evidence of no less than six witnesses. All these witnesses were fellow employees, and the motives that might affect their credibility should be considered, but, considering all the testimony, nothing appears that would justify us in discrediting it. The evidence, we think, therefore clearly establishes the relation of principal and assistant. It is well settled that in the relation of employer and employee, where the employer conceived the principle or plan of an invention, and the employee is directed to perfect the details, though the employee may make valuable improvements therein, the improved results belongs to the employer. The same rule of law, we think, applies to principal and assistant, though they may be fellow employees. This principle of law is one generally recognized by the courts. In Agawam Co. v. Jordan, (7 Wall., 583,) the Court said:

Where a person has discovered an important principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who dis vered the original improved principle, and may be embodied in his patent as a part of his invention. Common justice would forbid that any partial aid rendered under such circumstances, during the progress of experiments in perfecting the improvement, should enable the person rendering the aid to appropriate to himself the entire

result of the ingenuity and toil of the originator, or put it in the power of any subsequent infringer to defeat the patent under the plea that the invention was made by the assistant and not by the originator of the plan.

This Court, in the case of Robinson v. McCormick, (C. D., 1907, 574; 128 O. G., 3289; 29 App. D. C., 98,) in referring to this rule, said:

The reason for this rule is obvious. Inventors are often compelled to have their conceptions embodied in construction by skilled mechanics or manufacturers, whose practical knowledge often enables them to suggest and make valuable improvements in simplifying and perfecting machines or devices. These are things they are employed and paid to do. The inventor is entitled to protection from their efforts to claim his invention.

Braunstein, being the assistant and the junior applicant, the burden is placed upon him of establishing the fact that he possessed a knowledge of this invention independent of any suggestion he may have received from Holmes after he was assigned to assist him. His own testimony is the only positive evidence offered to establish this very important point, upon which the rights of the parties to this action depend. Braunstein called two witnesses, (Heard and Souder,) to establish his disclosure of the invention prior to his assignment to assist Holmes. Quoting from the opinion of the Board of Examiners

Neither witness refers to ammonium oxalate. Heard testifies that about the first of May, 1903, Braunstein spoke to him about a stable nitro-starch powder, and that some time later, at a time which he does not remember, Braunstein spoke to him concerning the nitro-starch problem, and stated that he had tried ammonium carbonate as a stabilizing agent. There is no disclosure of the idea of using ammonium oxalate specifically and the date of the disclosure, such as it was, is uncertain. The disclosure to Souder amounts to nothing more than a statement by Braunstein to Souder that Braunstein was working on a process of making nitro-starch stable. Braunstein also states that in June or July, secretly, without disclosure to any one, he made some experiments which embody this invention.

After a careful examination of the testimony of these witnesses, we have no reason to question the correctness of the conclusions of the Board of Examiners.

Thus it will be observed that on this crucial point, Braunstein stands uncorroborated. Aside from his own evidence, he is not shown to have had any conception of the invention at the time he came to the assistance of Holmes. Braunstein claims that he disclosed the invention to Holmes after he came to his assistance, but four witnesses, whose relations to the work being accomplished in the laboratory placed them in a position to know what Holmes was doing, testify that the plan of testing the ammonium compounds as stabilizing agents had been conceived by Holmes prior to the time of Braunstein's assignment as his assistant.