MANUFACTURE OF HOLLOW GLASSWARE. Application of John N. Croskey filed December 28, 1893, No. 494,940. Application of Thomas B. Atterbury filed October 1, 1892, No. 447,488. Messrs. Connolly Bros. for Croskey. Mr. J. Snowden Bell for Atterbury. FISHER, Acting Commissioner: This is an appeal by Croskey from the decision of the Examiners-inChief affirming the decision of the Examiner of Interferences adjudicating priority in favor of Atterbury. The issue in controversy is as follows: 1. The process of forming hollow articles of glassware consisting in pressing into a mold from a mass of glass in a font and over and around a plug sustained in the mold sufficient glass to fill the mold and finishing a definite portion of the article by such pressure, separating the partially-finished blauk from the mass of glass in the font and finally blowing the unfinished portion to the desired shape. 2. The process of forming several articles of glassware simultaneously which consists in forcing a mass of molten glass from a font around a series of two or more cores each arranged in a suitable mold-cavity, separating the blanks thus formed from the glass in the font and then simultaneously blowing the bodies of the several blanks to the desired shape. It was held by the Examiner of Interferences and the Examiners-inChief that Croskey disclosed the invention in December, 1890, and reduced it to practice October 3, 1892, and that Atterbury conceived the invention in July, 1892, and constructively reduced it to practice by filing an allowable application on October 1, 1892. An attempt was made by counsel for Croskey to lead the witness Schmunk to assert or admit that he himself was the inventor of the process covered by the issue; but, while it is true that this witness refused to answer some questions and that he exhibited on cross-examination some hesitation and uncertainty, such negative defects in his testimony cannot outweigh the positive testimony in favor of Atterbury. Croskey in his answers to questions 114 et seq. suggests an earlier date for his reduction to practice; but this part of his testimony is uncertain, is uncorroborated, and cannot stand against the clear testimony which fixes the date of his reduction to practice as October 3, 1892. It is strenuously urged by Croskey that inasmuch as his mold was finished by October 1, 1892, he should have that date for his reduction to prac tice. He reaches that date by reasoning that as the mold was actually tried on October 3, 1892, which was Monday, this mold must have been finished on Saturday, or probably before, because Saturday was a halfholiday. The invention in this case, however, is not a mold, but a process or series of acts, and I think that as a general rule it may be said that to reduce a method or process to practice the series of acts must be actually performed. It is true that in many cases the inventor is obliged to produce a new machine or apparatus to successfully work his process. It is possible that a case might arise in which the new method would be so clearly shown by an inspection of the new machine or apparatus that it would seem like straining a point to insist that the machine or apparatus must actually be used to effect a reduction to practice of the process. That is not the usual case, and clearly it is not the case now in question. This interference covers a process which is not apparent from an inspection of the mold, and which is not, in fact, carried out by the mold acting automatically, but which requires other apparatus in connection with this mold for its successful operation. I have concluded, therefore, after a careful consideration of the record, that the dates accepted by the lower tribunals are correct. Croskey was the first to conceive and the second to reduce to practice. If, therefore, he can connect these acts by a showing of, reasonable diligence, he must prevail in this interference. Such a showing of diligence must be a reasonable showing under all the circumstances of the case. The record seems to leave no doubt that this is an average case and that an interval of nearly two years between disclosure and reduction to practice negatives the proposition that Croskey was duly diligent. I think it is clear that Croskey's admissions show that he could have filed an application or could have carried out the process at almost any time after his disclosure of the invention. It must be held, therefore, that he did not exercise reasonable diligence in adapting and perfecting the process. It was strenuously contended by counsel for Croskey at the hearing that the constructive reduction to practice by Atterbury could not properly defeat the actual reduction to practice by Croskey, he being the earlier to conceive the invention. If this contention should prevail, it must be upon the broad ground that the mere filing of an allow able application cannot avail against an actual but later reduction to practice. Reduction to practice is not a requirement of the statute which must be shown to entitle an inventor to a patent, and I know of no case in which a patent has been held invalid because the invention covered thereby had not been actually reduced to practice. In Lorraine v. Thurmond (C. D., 1890, 86; 51 O. G., 1781) it was said: If, as held in Seymour v. Osborne, supra, an invention is not patentable under the patent laws until it be perfected and adapted to use, and if, as held in the Telephone Cases, supra, and other cases cited, reduction to practice is not essential in order to obtain a patent, it follows that actual reduction to practice is not the only competent evidence of perfection and adaptation to use, but that the inventor's act in filing an allowable application is to be regarded in law as such an efficient and crowning step as to give it the standing of an invention so perfected and adapted. See, also, Hunter v. Jenkin, (C. D., 1891, 157; 56 O. G., 1705.) This doctrine was followed by the Court of Appeals of the District of Columbia in Porter v. Louden et al., C. D., 1895, 707; 73 O. G., 1551.) It must therefore be held that Atterbury's application is a constructive reduction to practice and that the actual though later reduction to practice by Croskey will not avail him, since he is unable to connect this reduction to practice with the date of his disclosure by a showing of reasonable diligence. The decision of the Examiners-in-Chief adjudicating priority in favor of Atterbury is affirmed. DEWEY v. COLBY. Decided March 11, 1895. 75 O. G., 1360. 1. NEW MATTER—ILLUSTRATION-SUBSEQUENT CLAIM. An illustration which amounts to no more than a suggestion is not sufficient warrant for a claim filed nearly two years after the application and nine days after an interfering patent. 2. REDUCTION TO PRACTICE-DRAWING. An illustration of a device of doubtful purpose is not a reduction to practice. APPEAL from Examiners-in-Chief. ELECTRICAL ILLUMINATING APPARATUS. Application of Mark W. Dewey filed July 22, 1891, No. 400,278. Patent granted Edward A. Colby June 6, 1893, No. 498,878. Mr. C. H. Duell and Mr. J. R. Nottingham for Dewey. Mr. Park Benjamin for Colby. FISHER, Acting Commissioner : This is an appeal from the decision of the Examiners-in-Chief affirming the decision of the Examiner of Interferences awarding priority to Dewey on the following issue: The combination of an electric glow-lamp containing a filament in ring or closed coil form, a coil, a source of varying electric current connected with said coil and means for altering the relative proximity of coil and filament whereby the inductive effect of said coil upon said filament may be modified. The history of the cases is recited in the decision in a companion case, No. 16,346, Colby v. Dewey, of even date. In that case it was decided that Colby had conceived first, but had not reduced until eight years after the conception; that the two were not a continuous act of invention, and the first reduction of Dewey entitled him to judgment of priority. There was no mention or hint of this issue in Dewey's application as filed, and the claim covered by it was filed nearly two years after the first Office action and nine days after the date of Colby's patent and rests upon an illustration, Fig. 5, that amounts to no more than a suggestion. It is not clear that the screw-thread of the figure was intended for the purpose of adjustment, and it is doubtful if the means shown is practicable. I do not think there is any warrant for claim 12 in Dewey's application nor that the illustration alone is entitled to be found a reduction to practice prior to Colby's application. The decision of the Examiners-in-Chief is reversed and priority of invention adjudicated in favor of Colby. DEWEY . COLBY. Decided June 17, 1895. 75 O. G., 1360. REHEARING-SURPRISE-APPLICATION-INTERPRETATION. An applicant's contention upon a rehearing that he was "surprised" by the interpretation put upon his application in the former hearing is without foundation, since the application itself was his evidence, and was examined like other evidence. ON REHEARING. ELECTRICAL ILLUMINATING. Application of Mark W. Dewey filed July 22, 1891, No. 400,278. Patent granted Edward A. Colby June 6, 1893, No. 498,878. Mr. C. H. Duell and Mr. J. R. Nottingham for Dewey. Mr. Park Benjamin and Messrs. Pennie & Goldsborough for Colby. FISHER, Acting Commissioner: This is a rehearing of the above entitled interference. Dewey states that he was "surprised" by the interpretation put upon his application in the former decision, which resulted in finding that he had not invented the subject-matter of the issue. In this case the evidence of Dewey is his application, and it is of course to be examined as any other evidence would be. No point was presented in the argument that had not been fully considered, and priority is again adjudicated in favor of Colby.* DEWEY v. COLBY. Decided March 11, 1895. 75 O. G., 1360. 1. INTERFERENCE-ISSUE NOT WARRANTED, If no warrant be found in an application as originally filed for one of the counts of an interference issue, the applicant is not the inventor of such count. 2. METHOD CLAIMS-APPLICATION FOR APPARATUS-TRANSFER. Claims to a method, if no such method is warranted by the original disclosure, rest upon an uncertain basis; but such claims, if so bound up with the apparatus of another application of the same inventor as not to warrant different ownership of the two, may accompany the real invention, which is the apparatus, proper oath being filed. APPEAL from Examiners-in-Chief. *This decision was also made on rehearing in the interference between this application of Dewey, and Colby's patent No. 498,879. (See decision below.) ELECTRICAL ILLUMINATING APPARATUS. Application of Mark W. Dewey filed July 22, 1891, No. 400,278. Patents granted Edward A. Colby June 6, 1893, Nos. 498,878 and 498,879. Mr. C. H. Duell and Mr. J. R. Nottingham for Dewey. Mr. Park Benjamin for Colby. FISHER, Acting Commissioner: This is an appeal from the decision of the Examiners-in-Chief affirming the decision of the Examiner of Interferences awarding priority to Dewey on the following issues: 1. The method of causing incandescence in an electric glow-lamp, which consists in subjecting a ring or closed-coil filament inclosed in a substantially-exhausted receiver, to the inductive influence of the field produced by varying currents in an external electric conductor. 2. The method of varying the intensity of the glow of an electric glow-lamp containing a ring or closed-coil filament inclosed in a substantially-exhausted receiver and subjected to the inductive influence of the field produced by varying currents in an external electric conductor, which consists in varying the position of said lamp in said field to bring it into a portion thereof where said inductive influence is greater or less. This is a companion to interferences Nos. 16,346 and 16,348. In the first the history of the cases is recited, and it was found that Colby had conceived the invention in 1885 and had reduced it to practice in 1893; that the two were not one continuous act of invention, and that Dewey's application of 1891 entitled him to priority. In the interference No. 16,348 it was found that there was no warrant for the claim of Dewey embraced by the issue, because it was not described in the original specification nor clearly illustrated in the drawings, and it was therefore found that Colby was the inventor of the issue. The claims covered by the issues of this interference were filed nearly two years after the first Office action and nine days after the date of the Colby patent. For the claims covered by the second count of the issue there is no warrant in Dewey's application as originally filed, and he is therefore not the inventor of the second count. The claims covered by the first count of the issue, if to methods clearly distinct from the apparatus, would rest upon an uncertain basis, since no method as such is disclosed by the application as originally filed; but the method of the first count is so bound up in the apparatus of No. 16,346 as to be in effect the function of that apparatus. The distinction between the method and the apparatus is not sufficient to warrant different ownership, and in this case the method must accompany the real invention, which is the apparatus. The claims for the method are not supported by a supplemental oath; but that may be supplied prior to issue. The decision of the Examiners-in-Chief is affirmed as to the first count of the issue and reversed as to the second. |