abrading-disk and into the unoccupied space at the center of the disk to increase the speed of operation of the machine.

In fact, it is admitted by McKay that this act on the part of Bernizer in each case was in the nature of a trick, because it effected a more rapid paring of the potatoes in the machine, which was then in competition with others. Concerning this McKay testifies as follows:

X-Q. 115. But you have testified that you noticed that Brenizer put his hand into the machine, and that you knew it would increase the speed of the machine. Why did not you tell him to take his hand out when you saw what he was doing?

A. We were there to make the best showing of our machine we could, and I certainly would not call the attention of the commanding officer to anything that Brenizer was doing, as this would have been worse than foolish.

X-Q. 116. Why would it have been foolish for you to call the attention of the commanding officer to what Brenizer was doing?

A. Because it would have been nost unbusinesslike.

In this case Brenizer as applicant has imposed upon him the burden of proving priority of invention beyond a reasonable doubt, for the reason that his application was not filed until after Robinson's patent was granted.

The testimony of Brenizer and McKay is, to say the least, extraordinary. On the one hand, they claim that they have had knowledge of this valuable invention since 1906 and have fully appreciated its value. On the other hand, they did not incorporate this alleged advantageous device into other machines, although it might have been done for a very small amount, but after a second experiment two years later failed to build or to supply other machines with such a device. This is inconsistent with their claims of successful use.

The testimony of Brenizer's alleged disclosures to Robinson is wholly incredible. They were admittedly made through unfair "tricks" performed during competitive tests of machines of Brenizer and Robinson and were said to have been made under identical circumstances separated by an interval of two years, during which time and for over a year thereafter nothing was done by Brenizer and the company with which he was associated with the alleged valuable improvement thus disclosed to Robinson. These allegations of disclosure to Robinson instead of establishing Brenizer's originality of the invention serve, in my opinion, to discredit the testimony of Brenizer and McKay, especially when considered in connection with other inconsistencies of their testimony above pointed out.

I am of the opinion that Brenizer has failed to sustain the burden placed upon him, and the decision of the Examiners-in-Chief is accordingly affirmed.

EX PARTE PEASE.

Decided March 12, 1914.

202 O. G., 631.

PATENTABILITY-MACHINE FOR WAX-TREATING PARTS OF Boots AND SHOES. The inclusion in a claim for a machine for wax-treating parts of boots and shoes as one of the elements " a working face of combustible fabric " Held not objectionable, since the limitation "combustible" excludes many materials which are inappropriate to applicant's purpose, and by excluding such fabrics applicant has more accurately defined bis invention. APPEAL from Examiners-in-Chief.

MACHINE FOR WAX-TREATING PARTS OF BOOTS AND SHOES.

Mr. Nelson W. Howard and Mr. C. A. Mason for the applicant. NEWTON, Assistant Commissioner:

This is an appeal from the decision of the Board of Examiners-inChief affirming the action of the Primary Examiner in finally rejecting claims 3 and 6, which are as follows:

3. A machine of the class described, comprising a wax applying wheel provided with a working face of combustible fabric, a heating and distributing device adjustably mounted in touch with the periphery of said wheel, and a wax holder carried by said device and adjustable bodily therewith.

6. A machine of the class described comprising a wax applying wheel having a working face of combustible textile material, a heating and wax distributing device having a metallic face adapted for engaging the periphery of said wheel, said heating device being adjustable with respect to said wax applying wheel, and a wax holder also adjustable with respect to said wax applying wheel.

Generally speaking, applicant's device is a shoe-heel waxing and finishing machine in which the waxing-wheel is covered with canvas. Such a waxing-wheel seems to be new in the combination claimed; but the Primary Examiner rejected these claims as aggregations, taking the ground that—

in claim 3, the wheel is specified as having a combustible fabric working face and in claim 6 as having such a face made of textile material. It is clear that the action of the other features is the same whether the working face of the wheel is combustible or not. This face might be of asbestos or of woven wire, or of any other refractory materials, non-combustible, without in any manner affecting the melting action of the heater upon the wax, or its function of spreading the wax so melted upon the working face. The combustibility of the fabric covering is wholly irrelevant. So also with respect to the qualification "textile," in claim 6.

The Board of Examiners-in-Chief differed somewhat from the Primary Examiner upon this point and said:

It is not clear that the adoption of a fabric as thus understood as the cover of the wheel which is set forth in these claims (3 and 6) has not such special advantages as would render the same uninventive over a surface

composed of wood or metal or other material not resembling fabric. We therefore conclude that the Examiner erred in rejecting these claims on the ground of aggregation because of the limitation of the covering member to a fabric. We find no error, however, in his conclusion that the limitation to the combustible character of the fabric involves merely aggregation. While we must affirm the action of the Primary Examiner rejecting claims 3 and 6 we recommend that these claims be allowed if the word "combustible" be stricken therefrom.

Applicant contends that it is not reasonable to assume that he would use this term (combustible) without good reason, that some kind of textile material as a covering for this wheel has been found highly efficient, and especially a combustible textile; but much difficulty has been experienced in designing a machine having a waxapplying wheel with a combustible covering in combination with means for producing a proper heating effect of uniform character, it being difficult to so control the amount of heat that the same will be neither too great to destroy the cover nor too little to maintain the wax in proper condition of fluidity, and applicant has solved this problem in his machine.

The contention of the applicant seems to be well founded. The limitation "combustible fabric" excludes many materials, usually metallic substances, as wire fabric, glass, or asbestos fabric, which are inappropriate for applicant's purposes, and by excluding such fabrics applicant has more accurately defined his invention than by including them.

Moreover, it has always been the policy of the Office to allow some latitude to applicants in drawing their claims, since applicants and not the Office will be eventually held responsible for what is expressed therein, provided, of course, the claims are clear of the prior art and are clear in their meaning, as are the rejected claims.

The decision of the Board of Examiners-in-Chief is therefore reversed.

SHREEVE V. GRISSINGER.

Decided February 21, 1914.

202 O. G., 951.

1. INTERFERENCE-COPYING CLAIMS FROM A PATENT-DELAY-ESTOPPEL. Where the application of G. was filed prior to the grant of the patents to S. and seven years intervened after the grant of such patents before G. copied the claims thereof for an interference, Held that G. is not estopped to present claims taken from such patents and to contest an interference where the invention covered by the claims was clearly disclosed in the application as originally filed.

72367°-15-4

2. SAME-SAME-CONSTRUCTION OF ISSUE.

Where a patent was granted while an application was pending in the Office and the applicant copied claims from the patent for an interference issue long after its grant, Held that the application should be closely scrutinized and every doubt as to applicant's right to make the claims should be resolved against him.

ON PETITION.

TELEPHONE-REPEATER.

Mr. Thos. D. Lockwood and Messrs. Mauro, Cameron, Lewis & Massie for Shreeve.

Mr. George C. Dean and Mr. H. G. Kimball for Grissinger. EWING, Commissioner:

This case is before me on a petition by Shreeve asking for a ruling as to the status of the Grissinger application and as to the effective date therein of the claims constituting the issue of the interference. The petition also prays access to certain applications of Grissinger not involved in the interference.

Grissinger's application was filed on February 24, 1902. The applications of Shreeve were filed July 8, 1904, February 28, 1905, and May 4, 1906. Patents were granted on the first two on June 6, 1905, and on the third on August 13, 1907. The claims constituting the issue of the interference were presented in Grissinger's application

in 1912.

The basis of the petition is that by the long delay in presenting these claims after the issuance of the Shreeve patents and after an account of the use of the devices shown in these patents had been published Grissinger has lost his rights to these claims and that the Grissinger application became abandoned by failure at various times to present within a year amendments responsive to the Office action. An examination of the record of the Grissinger application does not show any such failure to present properly-responsive amendments as would justify holding the application abandoned. It is true that in some instances the Examiner held an amendment not sufficiently responsive to the previous Office action; but in each case a further amendment, which the Examiner regarded as satisfactory, was presented within the year.

Nor does an examination of this application show that the other applications of Grissinger have such a relation thereto as to justify giving Shreeve access to them. It does not appear that Grissinger is in any way relying upon the date of the earlier application nor that the grounds urged for the allowance of claims in this application are disclosed in those prior applications. In one instance Grissinger in discussing the rejection of certain claims in this application

referred to an affidavit filed in an earlier application; but it appears that those claims were afterwards canceled.

So far as the question of estoppel is concerned counsel has referred to no case and I have been able to find none in which an applicant has been held estopped to present claims copied from and to contest an interference with a patent during the pendency of the application where the invention covered by those claims was disclosed in the application as originally filed. Cases are cited with reference to delay in presenting applications for reissue and delay in presenting a second application where the original application had been withdrawn; but these relate to procedure under different statutes from that here involved. In the case of Kittle v. Hall (C. D., 1887, 329; 39 O. G., 707; 29 Fed. Rep., 508) a claim which had been presented in Kittle's application was held invalid; but this did not result, as would the action here urged, in subordinating Kittle to the claim of a later-filed application.

In certain cases where claims have been presented late in the prosecution of an application the courts have ruled that the application should be closely scrutinized and the claims given only a limited construction. (See Herzog v. New York Telephone Co., 172 Fed. Rep., 425; 176 Fed. Rep., 349; Hestonville v. McDuffee, 185 Fed. Rep., 798.) In the present case a similar scrutiny of the application should be made and every doubt as to applicant's right to make these claims should be resolved against him. The present petition, however, asks for the exercise of the supervisory authority of the Commissioner, and I am not convinced that I would be justified in holding that Grissinger is estopped to make the claims for the invention in issue if it was clearly disclosed in his application as filed or that he should be restricted to the date when such claims were presented. The petition is denied, without prejudice to petitioner's right to raise the questions here urged in the further prosecution of the interference.

THOMAS V. STEWART.

Decided October 14, 1913.

202 O. G., 1259.

PRIORITY-CONCEPTION BY ONE EMPLOYEE-REDUCTION TO PRACTICE BY A CoEMPLOYEE.

Where an inventor has sold or parted with the property right to an invention which he has conceived and adequately illustrated and has disclosed it to others, but has not reduced to practice, and the owner of the property right has caused the conception to be reduced to practice with reasonable diligence, the right of the owner of the property is secure,