NORTHALL v. Bernardin.

Decided May 25, 1896.

75 O. G., 1853.

REOPENING CASE BY COMMISSIONER AFTER DECISION OF COURT OF APPEALS— NEW EVIDENCE.

Notwithstanding the presentation of evidence tending to establish a fact not before in the record, the Commissioner, in view of doubt as to his authority in the matter and also in view of the petitioner's remedy by bill in equity, will not reopen a case after it has been considered and decided by the Circuit Court of Appeals of the District of Columbia.

MOTION to reopen.

BOTTLE-SEALING DEVICE.

Application of William H. Northall filed March 31, 1893, No. 468,524. Application of Alfred L. Bernardin filed July 21, 1892, No. 440,790.

Mr. William H. Gudgell for Northall.

Messrs. Butterworth & Dowell for Bernardin.

SEYMOUR, Commissioner:

After a decision in his favor by the Office and a reversal of that decision by the Court of Appeals of the District of Columbia, Bernardin moves to reopen this case for the purpose of introducing newlydiscovered evidence, which he claims will probably change the result. The most significant part of the alleged newly discovered evidence is that of a partly-erased writing, over which the date "December 19, 1891," was written upon Northall's drawing, Exhibit No. 1. Upon this point the affidavit of Mr. Joseph B. Church is presented to the effect that he deciphers the partly erased writing to be "February, 1893." A photograph taken about the time the exhibit was put in evidence shows that there had been an erasure, and enlarged photographs taken later show parts of letters which cannot be deciphered from the drawing itself.

In answer to the affidavits of Bernardin upon this motion Northall makes an affidavit upon this point as follows:

The paper upon which my original drawing was made was some that remained of what I was using for making sketches during the last two years I lived in Bridgeport, Conn. It had been used, and I erased what was on it before making this drawing.

When I testified last fall in the machine interference about the "loop" shown in the photograph of my drawing, I thought it must be the upper part of a "b,” as I knew I wrote December twice the night I made the drawings. I could not account for any kind of a loop in any other way. I am sure that I never wrote any word on that paper having a letter with a lower loop after I made the drawing, unless I accidentally made a lower loop when I intended an upper one. I write but little and sometimes get letters wrong and have to change them, but I have no distinct recollection of having done so when dating this drawing, though it might have happened. I sometimes wrote dates and other words on the sketches which I made in Bridgeport.

The question is whether this evidence was discovered since the former trial. The general principles regarding new trials for newlydiscovered evidence are that an application therefor is looked upon by the courts with disfavor; that the evidence must have been discovered since the former trial; that the party must have used due diligence in procuring it on the former trial; that it must be material to the issue; that it must go to the merits of the cause and not merely to impeach the character of a witness; that it must not be merely cumulative; that it must be such as ought to produce on another trial an opposite result on the merits.

The bearing of this evidence of something imperfectly erased is important. A working drawing of a bottle-capping device in the hands of either of these parties as early as December 19, 1891, is extremely significant. A working drawing in the hands of Northall as late as February, 1893, would be of no special significance.

It was claimed by Northall that the evidence was cumulative. It is true that there was evidence tending to show that Northall did not make a working drawing of this invention as early as December 19, 1891, in the record, strictly so called. That evidence is circumstantial. In the trial upon appeal before the Circuit Court of Appeals of this District it appears that enlarged photographs were exhibited to the court for the purpose of showing that there had been an erasure, and the argument appears to have been made that December 19, 1891, was not the true date of the paper. It does not appear that any testimony was presented to that court or that there is any in the record to the point of what the erased word or figures are, unless the exhibit itself may be considered such testimony. There is presented before me an account of this matter by Northall himself, which is in the nature of an admission that what was erased was a date, and that he erased it, and that he wrote the word and figures above it, "December 19, 1891."

It has been held that the admission of a party is not evidence of the same kind as the testimony of other witnesses, and therefore is not cumulative, although relating to the same controverted fact. (Wayt v. Burlington, etc., R. Co., 45 Iowa, 217; Humphreys v. Klick, 49 Ind., 189; Rains v. Ballow, 54 Ind., 82; Fletcher v. People, 117 Ill., 190.)

But the evidence tends to establish a fact that was not before in the case-to wit, that the drawing bore another date, and that the date it first bore was February, 1893. If this testimony is to be believed, and if it turns out to be, on more critical examination, of the tenor indicated, it appears to me to be destructive of Northall's case.

While impressed with this evidence, I deem it my duty, in view of the doubt whether the Commissioner has power to open a case after it has been considered and decided by the Circuit Court of Appeals of this District on appeal, to disregard it and deny the motion. Were the petitioner without other remedy I might take a different view of this case; but under section 4915 of the Revised Statutes he has a remedy

by bill in equity, where, upon a record hereafter to be made, with a fuller knowledge of all the facts, it will be adjudged whether he be entitled to the patent which must now be refused.

Without passing upon the other matters urged by Northall against this motion, the motion must be dismissed, and it is so ordered.

EX PARTE BRIGGS.

Decided May 25, 1896.

75 O. G., 1854.

1. APPEAL-RULE 133-POINTS NOT MUTUALLY EXCLUSIVE.

Rule 133 does not enumerate mutually-exclusive points of appeal in such sense that one must be wholly different from another.

2. APPEAL IS FROM REJECTION.

The subject-matter of each appeal under Rule 133 is the rejection of a claim and not the reasons upon which such rejection was based.

3. INVENTION-ICE-PLANER-USE OF RACK AND PINION.

The use of a rack and pinion for raising and lowering a cutter-head used in an ice-planer does not involve invention in view of the previous use of such rack and pinion for adjusting a wood-planer.

APPEAL from the Examiners-in-Chief.

APPARATUS FOR PLANING CAKES OF ICE.

Reissue application of John H. Briggs filed July 16, 1894, No. 517,750.

Messrs. Pollok & Mauro for the applicant.

SEYMOUR, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief refusing the following claims:

2. The combination of a cutter consisting of a number of points entering the ice in such a manner as not only to cut but to groove it at one operation, with a cutterhead carrying or forming part of said cutter, with means whereby the cutter-head can be moved up and down at the will of the operator, receiving a positive motion in both directions, guides arranged perpendicularly to the plane of the elevator so as to cause the cutter to be held positively against the advancing ice at any operative elevation, and with the cutting knives always presenting the same angle to the ice, and an ice-elevator adapted to positively force the ascending cakes of ice into contact with the cutter and groover, arranged and operated substantially as described.

3. The combination with the cutter-head and the racks directly attached thereto, of the guides for both cutter-head and the racks, arranged perpendicularly to the plane of the elevator, the pinions mounted on said guides and engaging in said racks, and the levers or arms for operating said pinions, a cutter consisting of a number of points entering the ice in such a manner as not only to cut but to groove it at one operation and an ice-elevator adapted to positively force the ascending cakes of ice into contact with the cutter and groover, all constructed substantially as described, so that the depth of the cut may be directly and positively regulated by means of the levers and the ice at the same time properly grooved for storage.

H. Doc. 354———2

The references are: Coss, June 9, 1874, No. 151,685; Chaplin, January 30, 1883, No. 271,220; Smith, December 30, 1884, No. 310,093; Loring and Giles, October 27, 1885, No. 329,400; Briggs, February 18, 1890, No. 11,060, (reissue;) Birch, February 24, 1891, No. 447,000; Bodenstein, March 1, 1892, No. 470,099.

The first reason of appeal is that the Examiners-in-Chief erred in rejecting the claims for lack of invention, a question not before them, and therefore that their decision should be reversed. The appellant contends that under Rule 139a the Examiners-in-Chief in their decision should affirm or reverse the decision of the Primary Examiner only on the points on which appeal has been taken; that Rule 133 enumerates the points on which appeal may be taken to the board, and that among these is aggregation of elements, and that therefore upon the only point involved in the appeal, the only point discussed, and the only point on which the Examiners-in-Chief could lawfully sit as a judicial tribunal, the decision of the Examiner was, after full consideration, reversed.

It is thought that Rule 133 does not enumerate mutually exclusive points of appeal in such sense that aggregation of elements, for example, must be wholly different from lack of invention or incomplete com bination of elements, or, perhaps, inoperativeness of invention. These may be different aspects of the case. That which one magistrate might consider an aggregation of elements, and so wanting in invention, another might consider lacking in invention as being an assembly of elements which were old, not involving the inventive faculty in their selection and combination.

Such appeared to be the view of the Examiner in his letter of May 22, 1895, wherein he says that claims 2 and 3 are a second time rejected, since they involve mere selection from the prior art.

But apart from this consideration the appellant is before the Examiners-in-Chief upon section 4909 of the Revised Statutes of the United States, and not merely upon the rule, and in that statute it is enacted that every applicant for a patent or for the reissue of a patent any of the claims of which have been twice rejected may appeal from the decision of the Primary Examiner to the Board of Examiners-in-Chief, and I construe this statute to mean that the subject-matter of the appeal is the rejection of the claim; that an appellant before the Examinersin-Chief must be prepared to show that the claim is allowable; that his appeal is not merely from the reasons of the Examiner in rejecting the claim, but from his decision holding it to be not allowable.

But this is not a new contention. It was disposed of adversely to the appellant twenty-five years ago by Mr. Commissioner Fisher in ex parte Rockwell, (C. D., 1870, 111,) in which this language is used:

The appeal in this case is analogous to the ordinary appeals in equity cases. Nothing is more common than for the court above to affirm the judgment of the court below, upon grounds quite different from those taken by the tribunal of original jurisdiction; sometimes, indeed, the appellate tribunal expressly repudiates

the reasons for the decision rendered below, and yet affirms the decision or judgment itself.

If, therefore, an appeal is taken to the board, it is from the decision, action, judgment, or order of the examiner, and not from his reasoning. The board will look into the case to see if upon the record the decision or action be right, although the reason assigned for it be utterly untenable. If, as in the present case, the application be rejected for want of novelty, and the examiners-in-chief find that the alleged invention does not involve a patentable subject-matter, they may properly affirm the decision of the primary examiner, which decision was, that a patent could not be granted.

Upon a similar contention Mr. Commissioner Simonds, in ex parte McGowan, (50 MS., 430,) held in substance the same thing.

It is thought that points of decision upon which appeal is grounded, as provided in Rules 133 and 139, and to which in the consideration of a case the Examiners-in-Chief are confined by the rules, are distinct and mutually exclusive points, and not those which present merely different aspects of the case.

The appellant has a patent, No. 367,267, granted July 26, 1887, for an apparatus for plaining ice, the first claim of which reads as follows:

1. The combination, with the cutter-head and the racks directly attached thereto, of the guides for both cutter-head and the racks, arranged perpendicularly to the plane of the elevator, the pinions mounted on said guides and engaging in said racks, and the levers or arms for operating said pinions, all constructed, substantially as described, so that the depth of the cut may be directly and positively regulated by means of the levers, as herein specified.

This claim was declared invalid by the Circuit Court of Appeals in the case of Briggs v. Central Ice Company, (60 Fed. Rep., 87.) The present application is for a reissue of said patent, and claims 2 and 3, quoted above, are refused by the Examiners-in-Chief on the ground that there is no invention in applying to the device shown by Briggs in his reissued patent, No. 11,060, the adjusting device of Butterfield. The devices specified in the combination claim passed upon by the Circuit Court of Appeals are the cutter-head and racks, the guides arranged perpendicularly to the plane of the elevator, the pinion, levers for operating the pinion, to which the court added, by construction, the ice-elevator, though not specifically mentioned; and the court found that although the other devices, aside from the ice-elevator of the claim before it, were never before assembled together in an ice-elevator, nevertheless the claim was destitute of patentable novelty.

In the second claim the means for moving the rack and cutter-head up and down are not specified, and to that extent claim 2 is broader than claim 3 and broader than the claim passed upon by the Court of Appeals, and for this reason alone this claim could not be allowed. Both of the appealed claims, however, add to the combination passed upon by the court a cutter consisting of

a number of points entering the ice in such a manner as not only to cut but to groove it at one operation.