machine, on which it was intended to be attached and operated, shows every feature of the counts of the issue. It has been strenously contended on behalf of Ross that this guide is not a reduction to practice. It is true that it is not a commercial perfected device and that afterward improved guides were made and this one discarded; but as it has every feature of the invention in controversy and was adapted to perform the work for which it was intended, although not as efficient as later devices, and did do the work as early as February, 1891, and at the taking of testimony in this case it was operated successfully to cut soles, which are submitted as exhibits, I am of the opinion that it is a reduction to practice. (Juengst v. Boyer, C. D., 1893, 14; 63 O. G., 152; and Coffee v. Guerrant, C. D., 1894, 384; 68 O. G., 279.)

But, considering this guide as only a conception or a crude model of the invention, Loewer made and successfully operated the folding guide on October 13, 1891, from which this present application was prepared. At the time Ross entered the field Loewer was taking steps to perfect and reduce to practice a sole-rounding machine embodying this folding guide. In February he had, as stated above, given Morse orders to make the Harding machine, which was completed about four months afterward, and from the 1st of May, and during June, July, August, and part of September, he had men working on the Harding machine, and during part of this time they were making a wooden guide embodying the features of the 1890 guide, drawings from this wooden guide, and from these drawings patterns were made for the metal folding guide, which, as seen above, was completed by October 13, 1891.

It seems to me, therefore, that when Ross entered the field in June, as stated in his preliminary statement, or in May, as in his testimony, Loewer was working on the machine and guide, and he used reasonable diligence in making the machine and the guide, which was completed and operated on October 13, 1891.

It is held, therefore, that the guide made by Loewer as "exhibit 1890 blank-guide" is a reduction to practice of the invention in controversy. It is further held that, as Loewer was taking steps to adapt and perfect his machine and folding guide at the time Ross commenced work on his machine and used reasonable diligence thereafter in perfecting it, he is the prior inventor, although Ross was the first to complete the invention. It has been strenuously contended on behalf of Loewer that Ross is not entitled to a reissue patent containing claims for the subject-matter of this controversy, because his original patent did not contain claims for this matter and during the time intervening between the date of this patent and his application for a reissue the rights of other parties had accrued. This question was argued before me before the taking of testimony; but its determination was postponed until final hearing. Before the Examiner of Interferences and the Examiners-in-Chief Loewer argued this question and requested that these tribunals in their decision on priority call the Commissioner's attention to this bar to the

grant of a patent to Ross by Rule 126. Both the lower tribunals, however, failed to do so.

At the final hearing of the case before me this question was again raised and discussed by both sides.

Loe

It is contended on behalf of Ross that in order to determine the question of intervening rights the Office must decide whether any of the claims of his original patent are infringed by the machines built under the Loewer patent. This contention is thought not to be sound. wer's patent is not involved; neither is the question of infringement. The question to be determined is whether the evidence submitted is sufficient to show that other parties had the right to and were using the subject-matter of this interference issue prior to the date of Ross's application for reissue.

When Ross's original application was filed, there were no claims to the matter in issue, and it does not appear that he intended to claim this matter. It was not until after Ross's Patent No. 489,876 was put in interference with Loewer's present application and Ross had access to Loewer's case that Ross took steps to claim this matter, and then he did not file his present application for a reissue with claims embodying this interfering matter until within five days of the two years from the date of his original patent. Previous to the date of this reissue application, March 31, 1894, Loewer had manufactured and sold a number of sole-rounding machines having a blank-guide embodying this invention. Swan, the secretary of the Loewer Sole Rounding Company, produces a circular, "Exhibit Loewer Company's Circular," issued March, 1893, which shows a machine embodying the issue in controversy, and testifies that prior to March 31, 1894, the date of Ross's reissue application, this company had sold a number of such machines, and in answer to question 370 he gives the list of firms to which and the dates when these machines were sold. Tarrant, superintendent of the shoe factory of E. P. Reed & Company, testifies that a machine embodying the invention was put in his shop during the month of August, 1893, and this machine was paid for January, 1894. John Ebberts, shoe manufacturer, of Buffalo, N. Y., bought one of these machines in May, 1893, and has used it continuously since.

If Ross ever had the right to obtain the claims involved in this interference by reissue, he has abandoned this right by his laches in not applying for the reissue before the rights of other parties accrued. He cannot now obtain a reissue patent to cover the guide used on the machine sold by Loewer's company and used by other parties in their business. (See the circuit court decisions in the cases of Meyer et al. v. Maxheimer, C. D., 1881, 409; 20 O. G., 1162; Stutz v. Armstrong, C. D., 1884, 297; 28 O. G., 367; Odell v. Stout, C. D., 1884, 461; 29 O. G., 862, and Arnheim v. Finster, C. D., 1886, 89; 34 O. G., 700, and the Supreme Court decisions in the cases of Coon v. Wilson, C. D., 1885, 171; 30 O. G., 889; 113 U. S., 268; White v. Dunbar, C. D., 1886, 494; 37 O. G., 1002;

119 U. S., 47, and Topliff v. Topliff, C. D., 1892, 402; 59 O. G., 1257; 145 U. S., 156.)

The decision of the Examiners-in-Chief is reversed and priority adjudicated in favor of Loewer. It is also held that if Ross were the prior inventor of the issue he has lost the right to make the claims for the subject-matter of the interfering issue by reason of the rights of other parties accruing prior to the filing date of his reissue application.

SIEVERT T. SHUMAN.

Decided July 6, 1896.

76 O. G., 1714.

1. INTERFERENCES-PRELIMINARY STATEMENT-ESTOPPEL.

The rule that one is bound by the statements in his preliminary statement applies only to the proceedings in which the parties are involved.

2. SAME-MOTION TO DISSOLVE-RULE 122.

A motion to dissolve under Rule 122 must be made after the declaration of an interference, at which time both parties have the right to be heard.

APPEAL on motion.

PROCESS OF MANUFACTURING WIRE-GLASS.

Application of Paul Sievert filed December 29, 1893, No. 495,058. Patent granted Frank Shuman December 12, 1893, No. 510,822.

Messrs. Brown & Seward for Sievert.
Messrs. Howson & Howson for Shuman.

FISHER, Acting Commissioner:

This is an appeal by Shuman from the decision of the Primary Examiner refusing to dissolve the above-entitled interference.

It appears that there was a former interference between these parties involving two issues, the second of which was the same as the present issue. Shuman, the senior party to this interference, is a patentee, his patent having been issued prior to Sievert's filing date. Shuman moved to dissolve the former interference on the ground that Sievert had not filed the affidavit required by Rule 94 (2), and therefore had no right to make the claims in interference in view of his (Shuman's) patent. In answer to this Sievert called attention to a British patent, No. 11,039, of 1891, granted to him prior to Shuman's filing date, and contended that this patent covered the invention in controversy. In deciding this motion the Examiner held that the British patent covered the first issue of the interference, but did not cover the second, and therefore held that Sievert did not have the right to make the claim involved in the second issue, and that there was irregularity in the declaration of the interference, since Sievert had not been required to file the affidavit

called for by Rule 94 (2). Limit of appeal from this decision was set to expire February 2, 1895. On February 8, 1895, the interference was resumed as to the first issue, and on February 12, 1895, Sievert filed the affidavit required and requested that the interference be suspended and the second issue be reinstated. The Primary Examiner refused to request a suspension of the interference, and therefore it was allowed to proceed to a decision on the question of priority on the first issue. The Examiner did not by this action hold that Sievert was not entitled to the claim, nor did he hold that he was not entitled to an interference, and therefore I do not think that Sievert is estopped by acquiescence in this decision from now demanding an interference, as is contended by Shuman.

After the decision on priority and after Sievert's affidavit had been decided by the Examiners-in-Chief to be satisfactory the present interference was declared.

The reasons assigned as to why this interference should have been dissolved by the Primary Examiner are as follows:

First. It is res judicata that Sievert's British patent, No. 11,039, of 1891, does not disclose the invention of the present issue, and that Sievert is not, upon the showing of his preliminary statement in interference 16,507, entitled, as against Shuman, to the claim of that issue.

Second. Sievert is estopped to set up, as to the present issue, any case substantially differing from that set up as to the same issue in his preliminary statement in the interference No. 16,507, and as to which case it is res judicata that it does not entitle him, as against Shuman, to the claim of said issue, or to this interference.

Third. Sievert is estopped to claim the present interference, not only by the declarations of his own preliminary statement in the former interference, but by acquiescence and by gross laches.

Fourth. The declaration of the present interference was, we submit, not only irregular, but in utter disregard of Shuman's rights, and the interference should be dissolved.

In regard to the first reason I think Shuman is correct in holding that it is res adjudicata that Sievert's British patent, No. 11,039, of 1891, does not disclose the invention of the present issue, since Sievert allowed the Examiner's judgment on this question to become final without taking an appeal and acquiesced in the decision by filing the affidavit required. I do not think, however, that he is correct in holding that Sievert is absolutely estopped from setting up a state of facts in his preliminary statement differing in any respect from that set up in his former preliminary statement. It would be unreasonable to hold that Sievert is entitled to a new interference in order to contest the question of priority and then hold that he could not set up any state of facts different from his statements and proof in the former interference. The rule stated by Shuman that any one is bound by the statements in his preliminary statement applies only to the proceedings in which it was filed and not to any other proceedings in which the parties may be involved.

The present issue has been decided by the Office to be different from

the issue in the former interference, and I do not think it can be con⚫sidered matter which might have been contested in the former interference upon the exercise of reasonable diligence, as is contended by Shuman. Sievert's delay in filing the affidavit called for was not at all unreasonable when it is considered that he is a foreigner, residing in Germany, since it required some time for his attorneys to communicate with him and receive a reply.

I do not agree with Shuman that the Examiner's decision holding that the British patent did not disclose the invention, and therefore that Sievert did not have the right to make the claim, was a final decision on the question of his rights, since the rules of the Office expressly provide how such a rejection may be overcome. Sievert acquiesced in the Examiner's holding that he should furnish the affidavit required by Rule 94, but he has never acquiesced in the holding that he has no right to make the claim involved.

I cannot agree with Shuman that the declaration of this interference was irregular by reason of the fact that he was not given an opportunity to be heard when the question of the sufficiency of the affidavit and the declaration of the interference was being considered. The order of the Commissioner dated December 10, 1894, and the decision in Duncan v. Westinghouse therein cited have reference to interferences in progress and not to the consideration of ex parte cases. Rule 122 gives a remedy for just such cases as this, since it provides for a motion to dissolve, at which both parties have the right to be heard; but it is noted that this motion must be made after the declaration of the interference. Shuman has therefore been denied no right given him by the rules of the Office.

The decision of the Primary Examiner refusing to dissolve the interference is affirmed.

EX PARTE WEAVER.

Decided July 24, 1896.

76 O. G., 1715.

REISSUE-MISTAKE ON PART OF OFFICE-REEXAMINATION.

Where a reissue application is filed without fee for the purpose of correcting a mistake made by the Office, Held that not only the mistake may be corrected, but that, if the Office chooses, a full reëxamination of the case may be made, as it would be improper for the Office to reissue a patent when it is known that a statutory bar exists.

ON PETITION.

LOOM.

Application of William Weaver for reissue filed June 30, 1896, No. 597, 653.

Messrs. Foster & Freeman for the applicant.

H. Doc. 354-4