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which the rental was eleven dollars per month to a place for which the rental was thirty-five dollars per month, where it appeared that the old place was retained and business carried on at both places for about three months before his opponent entered the field; nor does the fact that he sustained a financial loss by the peculation of an employee affect the question where such loss occurred some months after the beginning of the period to be covered by the showing.

APPEAL from Examiners-in-Chief.

COMBINED LAMP SHADE AND REFLECTOR.

Mr. Thomas Ewing, Jr., and Mr. Vernon M. Dorsey for McArthur. Mr. Wallace A. Bartlett and Mr. Fenelon B. Brock for Mygatt.

MOORE, Commissioner:

This is an appeal by McArthur from a decision of the Examinersin-Chief affirming the decision of the Examiner of Interferences and awarding priority of invention to Mygatt.

The issue relates to prismatic shades or reflectors. McArthur is a patentee, the application on which the patent was granted having been filed September 19, 1904. Mygatt's application was filed March 24, 1904. The lower tribunals have found that McArthur was the first to conceive, but the last to reduce to practice, and that he was lacking in diligence, priority being therefore awarded to Mygatt.

It seems to be clearly established by the record that Mygatt conceived the invention about March 1, 1904, as found by the Examiner of Interferences. The evidence also warrants the conclusion reached by the Examiner of Interferences that McArthur conceived the invention in the summer of 1903, but that he did not reduce it to actual practice prior to the filing of his application. It was thus necessary for McArthur to show that just prior to March 1, 1904, he was diligently engaged in an endeavor to reduce his invention to practice and that his endeavors in this direction did not cease before actual accomplishment or that because of poverty or other compelling circumstances it was impossible for him to so reduce the invention to practice. On this question of diligence the lower tribunals found against McArthur. It has been urged by McArthur that Mygatt's application does not disclose the invention in issue. This question was not decided by the Examiner of Interferences, but the Examiners-in-Chief held, in two decisions rendered after ex parte and inter partes consideration, that Mygatt's application contained a proper foundation for these claims. The only questions which appear to be of any consequence here are, therefore, that of McArthur's diligence and whether Mygatt can properly make the claims in issue.

On the question of diligence McArthur acknowledges that nothing was done toward filing an application until April 21, 1904, when he wrote to his patent attorney giving him instructions to prepare the application. Although the application was prepared and sent to McArthur within a few days after the letter was written, it was not filed until September 19, 1904.

The only testimony tending to show any activity toward actual reduction to practice by McArthur prior to the filing of his application is that of the inventor himself, who states (McA. Rec., p. 70, Q. 37) that he received the first pressing of the new style of goods in August, 1904; but the particular construction referred to is not described, and in any event this testimony of the inventor is not corroborated. McArthur states (MCA. Rec., p. 68, A. 33) that he intended to make molds and file papers about the time he made a wooden model in June, 1903, but owing to the condition of his business from that time to a year or more later he did not see his way clear to spare the money. Since McArthur was doing nothing at all with his invention when Mygatt entered the field on March 1, 1904, and since the record fails to prove any acts toward an actual or constructive reduction to practice from that time on up to the filing of his application except the preparation of the application papers on April 21, it is believed that the lower tribunals were correct in holding that McArthur was lacking in diligence.

McArthur seeks to excuse his lack of diligence on the ground that he was financially unable to reduce the invention to practice. I fail to find in the evidence, however, anything of a compelling nature which prevented McArthur from reducing the invention to practice.

As evidence of McArthur's inability to bear the expense incident to the filing of an application or an actual reduction to practice it is pointed out that it was not until December, 1903, six months after embarking in the business in which he is now engaged, that he could afford to move from a place for which he paid eleven dollars per month rental to a place where he paid thirty-five dollars. It is to be observed, however, that the old place was retained and business was carried on at both places. This tends to indicate that McArthur thought more of enlarging his business than of securing his rights to his new invention. As McArthur states, (Rec., p. 67, Q. 32:)

I had goods then which I knew I could sell and I also knew that the construction was practical and this new compound prism was in a measure an experiment, and I could not afford to take any chances on its being a failure.

The testimony accords with this view of appellant that he preferred to enlarge his old business rather than take any chances on the new construction. An inventor cannot thus make the rights of another

dependent upon his own business convenience. Mygatt having in the meantime entered the field in good faith and taken the necessary steps to place the invention before the public must be considered as having acquired superior rights.

McArthur is shown to have sustained considerable financial loss through the peculation of an employee; but this did not occur until the summer of 1904, (the month is not given,) and hence has no material bearing on the question under consideration. It must be held, therefore, that the evidence is insufficient to excuse McArthur's lack of diligence.

The remaining question for consideration is whether Mygatt's application discloses the invention in issue. The invention is a combined lamp shade and reflector the outer surface of which is substantially covered with a series of integral prisms adapted to reflect light-rays emanating from a source within the reflector back into the reflector and out at the open mouth thereof. The contention made on behalf of McArthur is that Mygatt does not disclose series of prisms which, within the meaning of the specification of McArthur's patent from which the claims were copied, are raised in step-like formation above those of an adjacent series, as called for by the issue. As understood the specification of the patent defines the meaning of "step-like formation" as being that arrangement whereby the prisms of " one series are disposed along a curved surface raised relatively above (or removed from) the surface of disposition of the adjacent series." The curvature of the surface may be disregarded, as this is a mere matter of form. Disregarding this feature we find in the device of Mygatt a construction responding to the language of the patent, for upon looking at the drawing it is seen that the upper end of each prism is lower than the lower end of the upper adjacent prism, the upper ends of the whole series being thus lower than the lower ends of the adjacent upper series. Again, a plane including the upper edge of one prism is below a plane including the upper edge of the adjacent prism above, so that the series of prisms are arranged in step-like formation whether we regard the expression as applicable only to the adjacent portions of the series of prisms or to the entire surfaces of adjacent series. It is true that the McArthur device is specifically different from the device disclosed by Mygatt; but as I view the issue of this interference it defines only features common to the two constructions and is not confined to the construction shown by McArthur. The decision of the Examiners-in-Chief awarding priority of invention to Mygatt is affirmed.

EX PARTE MOORHEAD.

APPLICATION FOR PATENT.

Decided January 21, 1908.

132 O. G., 1586.

REQUIREMENT OF DIVISION-CURSORY EXAMINATION.

Where a requirement of division is made, the most pertinent references readily available should be cited in order that the applicant may be able to intelligently divide his application.

ON PETITION.

FLOOR-CLEANSING APPARATUS.

Mr. Vernon Hodges for the applicant.

MOORE, Commissioner:

This is a petition that the Examiner cite references in the art pertaining to the claims before insisting upon the requirement of division. The record shows that in his action requiring division in the case certain claims were held to relate to the invention in fountain scrub-brushes, certain other claims to cover inventions in dust-collectors, and the remaining claims to comprise aggregations of the two alleged inventions. No references were cited.

Upon request by the applicant that references be cited the Examiner stated that he "had no knowledge of any references at the time the requirement of division was made." The practice in regard to the examination of applications where division is required is believed to be well settled. An order published in 83 OFFICIAL GAZETTE, page 301, is, in part, as follows:

In requiring division the Examiner will observe the decision of the Commissioner and furnish such references and other information as will enable the applicant to divide intelligently.

This order is still in force and has been repeatedly quoted with approval. (Ex parte Randall and Luck, C. D., 1901, 47; 95 O. G., 2063; ex parte Albert, C. D., 1901, 66; 96 O. G., 426; ex parte MacKaye, C. D., 1903, 112; 103 O. G., 888.) In the latter decision it is stated that

The "cursory examination" which is contemplated by the order consists in the citation of any references of which the Examiner may have knowledge at the time the requirement of division is made.

The order is not based upon any right of an applicant; but it is a courtesy extended to him by the Office. If the Examiner is not aware of any pertinent reference, a statement of that fact would be a compliance with the order. If, however, the Examiner is aware of any references which are pertinent to the case or if he can readily find such references, he should cite them to indicate the state of the art when requiring division.

It appears in the present case that the Examiner was not aware of any references for the claims at the time the requirement for division was made. It does not appear, however, whether he could readily find such references. In order that the applicant may be able to intelligently divide his application, he should be given the benefit of the references in the art corresponding most nearly to the devices disclosed in his application. It is not the duty of the Examiner to make an exhaustive search of the art in such cases; but the nearest references readily available should in each case be cited. If in the present case references of this character can be readily found, they should be cited.

The petition is granted to this extent.

ALT V. CARPENTER.

PATENT INTERFERENCE.

Decided January 22, 1908.

132 O. G., 1587.

INTERFERENCE CONCESSION OF PRIORITY-SIGNATURE OF APPLICANT NECESSARY. A concession of priority should be signed by the applicant, if living, or, if not, by his executor or administrator, even though both the applications involved in the interference are assigned to the same party.

APPEAL ON MOTION.

STORAGE BATTERY,

Messrs. Mason, Fenwick & Lawrence for Alt.

Messrs. Munn & Co. and Messrs. Mason, Fenwick & Lawrence for Carpenter.

MOORE, Commissioner:

This is an appeal by Alt from the decision of the Examiner of Interferences dismissing his motion for judgment of priority and dismissing a concession of priority of invention signed by the assignee of the entire interest in the application of Carpenter.

The application of Carpenter was filed by the administratrix of the estate of the inventor on February 1, 1906. The application of Alt was filed April 1, 1907. Both applications are assigned to the American Battery Company, of Cedarhurst, N. Y. No preliminary statements were filed, and the Examiner of Interferences issued an order requiring Alt to show cause why judgment of priority on this record should not be rendered against him.

A concession of priority was filed in favor of Alt signed by the assignee of the Carpenter application. Subsequently an affidavit

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