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said Edison, nor 18 there any claim at this time that Shiner derived the ideas of his invention patented February 19th, 1907, from what the said Edison might have been doing, both working independently, as inventors, in this feld.
It appears from the stipulation of facts in respect to the case of the appellant Edison that the invention in issue was reduced to practice immediately after the completion of the full-sized kiln in August, 1900. His application was not filed, however, until January 27, 1906. It is contended in behalf of Shiner that the “ development " of the Edison kiln referred to in the stipulation, which it is statedinvolved expenses of over one hundred thousand dollars and was witnessed by harge numbers of employees of the Edison laboratory and by numerous visitors while amounting to reduction to practice of the invention did not constitute a disclosure to the public, and that by Edison's failure to file his application until January, 1906, he had forfeited his rights thereto in favor of Shiner, who, according to the stipulation relating to the latter's case, reduced his invention to practice in August, 1904. It is contended upon behalf of Edison, however, that the invention was disclosed to the public in 1900 “ during its development,” and that this fact negatives any forfeiture of the invention under the doctrine set forth in Mason v. Hepburn, supra, and the cases cited which follow the same principle.
It is pointed out in behalf of Shiner that the word “ development” has at least two meanings, one referring to the working out of the details of a plan, the other relating to its execution, and it is urged that the stipulation merely refers to the disclosure to the public of an incomplete device, but does not show any disclosure to the public of the invention when finally successfully operated, and also that, it is only by deduction from the statement that the invention in issue was contained in the kiln and that the later was successfully operated that a conclusion can be reached that the successful operation of the kiln included the successful operation of the invention in issue.
The stipulation relating to Shiner's disclosure of the alleged invention to the public is open to an equally fatal criticism. In respect to the extent of use of his invention it is stipulated that, since the first day of August, 1904, thirty odd rotary kilns have been modified to embody the structure of the invention, the issue of this interference by said Shiner and others under his superintendence of installation, as set out in his patent of February 19, 1907, No. 844,623, and all of which kilns embodying said shiner's invention are now in successful operation at different points at thfs time.
Shiner's preliminary statement, previously quoted, contains the allegation that the thirty kilns referred to were made “ since the early part of 1905.” In view of this variance in the statement of facts between the preliminary statement sworn to by Shiner and the stipulation submitted in his behalf there is no greater reason to assume that these thirty kilns may not have been constructed subsequent to the date of his patent, February 9, 1907, which is “since the first day of August, 1904,” and “ since the early part of 1905," than there is to assume that the public witnessed Edison's “ development” of the invention prior to its completion. It is therefore obvious that, excluding any “presumptions” arising from the terms of the stipulations, Shiner is in no better position in respect to his alleged disclosure of the actual invention to the public than is Edison.
It is believed that where a stipulation is entered into in respect to the facts in a party's case any doubt as to the meaning of terms used therein should be construed in favor of such party. The fact that Edison's invention was in course of development for over a year, that it cost over $100,000, that the invention was successfully reduced to practice, and that the development was not only witnessed by a large number of employees of the Edison laboratory, but by numerous visitors, is conclusive to my mind that there was no such concealment of the invention as would bring the case within the doctrine of Mason v. Hepburn, supra. Furthermore, the fact that Edison, while the first to reduce the invention to practice was also the first to file his application and that his application was filed without any knowledge of Shiner's entry into the field, negatives any presumption of intentional concealment.
In each of the cases cited by the lower tribunals, which turned upon the doctrine of estoppel by concealment, three factors were present, which are (1) wilful concealment of the invention by the prior inventor, (2) an earlier disclosure to the public by the second inventor, (3) stimulation of the earlier inventor into efforts to secure a patent by knowledge that his invention had been placed in the hands of the public by a rival. In none of the cases relied upon by the lower tribunals or to which my attention has been directed has it been held that the first to reduce the invention to practice had forfeited his invention in favor of a later inventor in the absence of any of these conditions.
In the case of Oliver v. Felbel (C. D., 1902, 565; 100 O. G., 2384; 20 App. D. C., 255) it was stated that where reduction to practice by the first inventor is shown his right to a patent is not barred by delay thereafter unless there be some circumstances of concealment, suppression, or abandonment of the invention. In McBerty v. Cook (C. D., 1900, 248; 90 O. G., 2295; 16 App. D. C., 133) it was held that although Cook reduced the invention to practice in 1891 or 1892, but did not put it into commercial use or apply for a patent until 1896, his delay in applying for a patent or making commercial use of his invention was not such as to indicate an intention to conceal or suppress his invention from the public as would subordinate his
right to that of McBerty, who promptly applied for a patent. In the case of Smith v. Brooks (C. D., 1904, 672; 112 O. G., 953; 24 App. D. C., 75) it was held that while a delay of two years and eight months after an alleged reduction to practice warrants a strong presumption that what was done amounted to a mere abandoned experiment such presumption could be overcome by satisfactory proof that the machine was successfully operated. In the case of Howard v. Bowes (C. D., 1908, 547; 137 O. G., 733) it is stated that, Howard was under no obligation to give the pubilc the benefit of his discovery, but by failing to do so he assumed the risk that some other inventor might do so and thus in the eyes of the law become the prior inventor, and as such entitled to a patent. (Mason v. Hepburn, C. D., 1898, 510; 84 0, G., 147; 13 App. D. C., 86; Thomson v. Weston, C. D., 1902, 521 ; 99 O. G., 864; 19 App. D. C., 373; Matthes v, Burt, C. D., 1905, 574; 114 0. G., 764; 24 App. D. C., 265; Bliss v. McElroy, C. D., 1907, 537; 128 0. G., 458; 29 App. D. C., 120; Richards v. Burkholder, C. D., 1907, 563; 128 0. G., 2533; 29 App. D. C., 485.)
The Court of Appeals of the District of Columbia said in Rolfe v. Hoffman, (C. D., 1906, 588; 121 0. G., 1350; 26 App. D. C., 336–)
The doctrine enunciated by this court in Mason v. Hepburn (C. D., 1898, 510; 84 0. G., 147; 13 App. D. C., 510) and Warner v. Smith (C. D., 1898, 517; 84 0. G., 311 ; 13 App. D. C., 111) was based upon the facts disclosed by the records in those cases, and the rule there laid down will not be extended to any case not coming clearly within it, as we said in McBerty v. Cook, (C. D., 1900, 248; 90 0. G., 2295; 16 App. D. C., 133.)
The decision of the same court in Brown v. Blood (C.D., 1903, 617; 105 0. G., 976) is to the same effect. In the light of these authorities it must be held that Edison was not guilty of such concealment of his invention as would subordinate his rights to those of the later inventor, Shiner, even though the latter gave the public the benefit of his invention soon after its successful completion.
The present case is analogous to the case of Kellogg Switchboard & Supply Co. v. International Telephone Mfg. Co., (158 F. R., 104,) which is discussed by the dissenting member of the Board of Examiners-in-Chief as follows:
In Kellogg Company v. International Company (158 Fed. Rep., 104) conditions existed in some respects strikingly like those in the present case. Dean com. pleted his invention, laid it aside and kept it secret for six years before applying for the patent. McCormick claimed to have made the invention prior to the filing of Dean's application, but also laid it aside for some months and only. applied after Dean's application and introduction to commercial use of the invention. The court held Dean to be the true inventor, observing that he was the first to give the invention to the public and, as to his delay in applying for the patent, that the burden of establishing abandonment is on him who asserts it. The court further remarked, evidently referring to McCormick's delay, that the latter could not invoke the doctrine of equitable estoppel for the reason that he himself had been negligent.
It is stated by one of the members of the Board of Examiners-inChief that Shiner was the first to claim the invention in issue, and he makes this a further basis of his award of priority in Shiner's favor. I am unable to find any basis of fact or of law for this conclusion. Edison's original application contained in the statement of invention the following allegations:
The objects of my present invention are, irst, to provide a rotary kiln, which will effect very considerable economies in the fuel burned by materially reducing the temperature of the stack-gases; and second, to provide a rotary cementkiln in which the loss due to the carrying off of unburned material with the stack-gases will be considerably reduced.
In respect to the particular structure he statesand second, combining with such a kiln, a settling-chamber into which the upper end of the kiln leads, and of such a size as to reduce the velocity of the draft to a sufficient extent as to permit any material carried out of the kiln by the draft to be deposited by gravity in said settling-chamber and be returned to the kiln for burning therein by gravity, or by appropriate feeding mechanism.
His original claim 6 reads as follows: 6. The combination with a rotary kiln, of a settling-chamber with which the upper end of the kiln connects, a hopper in said settling-chamber, and a conveyer in said hopper for returning to the kiln material deposited in said hopper, substantially as set forth.
Original claim 4 was in still broader terms. It is clear from this disclosure and from these claims that Edison was endeavoring to cover the invention here in issue in his application as originally filed, although the identical claims of the issue were subsequently copied from Shiner's patent. This clearly brings the case within the ruling of the Court of Appeals of the District of Columbia in the case of Lotz v. Kenny, (C. D., 1908, 467; 135 0. G., 1801; 31 App. D. C., 205,) in which it was held that an applicant is entitled to the date of his original application, although the claims forming the issue of the interference were not made until after said applicant became aware that such claims were included in a patent subsequently granted to his opponent.
To briefly summarize, the facts in this case as above pointed out do not in my opinion fall within the ruling in Mason v. Hepburn, supra, first, for the reason that Edison's invention is not shown to have been either abandoned or concealed from the public, and, second, because he was not stimulated into activity by the knowledge of Shiner's invention. On the contrary, his application was filed prior to Shiner's filing date and the invention was claimed by Edison in his original application, which was filed prior to the application upon which Shiner had taken his patent. Furthermore, there is no more
direct evidence that Shiner placed his invention in the hands of the public prior to the date upon which he filed his application than that Edison disclosed his invention to the public at the time of his alleged reduction to practice.
I am therefore forced to conclude that the decision of the Examiners-in-Chief awarding priority to Shiner is erroneous, and it is accordingly reversed.
EX PARTE SCOTT AND DEATS.
Decided September 9, 1909. .
147 0. G., 520. DIVISION-PRACTICE.
Where in respect to a requirement for division between article and proc. ess claims an applicant canceled the process claims for the express purpose of obtaining action on the merits and with the statement that process claims would later be reasserted, Held that the Examiner was right in requiring that the process claims be resubmitted, if at all, before action on the merits, although under the circumstances he might have considered the cancelation of the process claims final and refused thereafter to consider any further process claims.
ON PETITION. .
CONDUCTING MATERIAL FOB ELECTRIC APPARATUS.
Mr. Levin H. Campbell and Mr. John F. Rule for the applicants.
TENNANT, Acting Commissioner:
This is a petition from the action of the Examiner requiring the applicants, if they intend to prosecute in this case claims for a process as well as claims for an article of manufacture, to introduce them before action is taken upon the merits.
The record shows that as originally presented this case embraced both claims to an article and to the process of making such article. The Examiner in his first action required division between the process and the article, upon the ground that they were separate inventions, and cited the state of the art as disclosed by a cursory examination. Thereupon the applicants canceled the process claims objected to, but filed in lieu thereof a single process claim. The examiner, believing that the insertion of this process claim was due to inadvertence, advised the applicants of that fact, and the applicants responded, canceling the claim and stating:
Claim 11 has been canceled as above for the sole purpose of securing an action on the merits of the case without further unnecessary delay. The presentation of this claim was not an inadvertence on the part of applicants, as