CIGAR-MACHINE. Mr. James L. Norris for Lacroix. Messrs. Philipp, Sawyer, Rice & Kennedy for Tyberg. BILLINGS, Assistant Commissioner: This is an appeal by Lacroix from the decision of the Examinersin-Chief affirming the decision of the Examiner of Interferences awarding priority of invention in favor of Tyberg. The issue is in six counts, as follows: 1. The combination, with a wrapping mechanism, of means for supporting a plurality of bunches, and means for transferring bunches from the supporting means to the wrapping mechanism. 2. The combination, with a wrapping mechanism, of means for supporting a mold, and means for transferring the bunch from the mold to the wrapping mechanism. 3. The combination, with a wrapping mechanism, of means for supporting a mold containing a plurality of bunches, and means for transferring the bunches from the mold to the wrapping mechanism. 4. The combination with a bunch-support operating to sustain a plurality of bunches, of a lifting device including means for engaging each bunch, and devices for operating the lifting device to remove the bunches from and transport them from the support. 5. The combination, with means for supporting a mold having a plurality of bunch-receptacles, of means for removing the bunches from said receptacles and transporting them from the mold. 6. The combination, with a bunch-support, of bunch-removing means, said means including a bunch-impaling device, and means for operating said bunchremoving means to transport the bunch from the support. The application of Lacroix, the junior party to this interference, was filed October 10, 1902. Tyberg has two applications involved in the interference-viz., applications No. 123,979, containing counts 1, 2, and 3, filed September 19, 1902, and No. 53,211, containing counts 4, 5, and 6, which was filed March 28, 1901. The burden of proof rests upon Lacroix. The Examiner of Interferences and the Examiners-in-Chief found that Tyberg reduced the invention of the issue to practice by completing and successfully testing a machine involving the construction called for by all the counts of the issue as early as March or April, 1900, but that in view of the allegation in his preliminary statement of reduction to practice in May, 1900, he could not be given a date of reduction to practice prior to May 1, 1900. They also found that since Lacroix does not allege an actual reduction to practice prior to October 10, 1902, the filing date of his application, he can prevail only in case he was the first to conceive and was exercising diligence in reducing to practice from the time Tyberg entered the field until October 10, 1902. They further found that the evidence fails to establish that Lacroix had a conception of the invention prior to that of Tyberg, but that even if such prior conception was proved Lacroix could not prevail, because there is no evidence corroborating his own testimony as to the exercise of diligence on his part from March, 1900, when Tyberg certainly had a full conception of the invention, to August, 1901, when Lacroix again commenced making drawings. The voluminous evidence filed in the case was carefully analyzed in the decision of the Examiner of Interferences, and it is unnecessary to repeat it here. The decisions of the Examiner of Interferences and of the Examiners-in-Chief have been carefully reviewed in connection with the evidence filed, and are believed to fully warrant the conclusion reached by them. On this appeal the main argument of Lacroix is that even if the above findings of the Examiner of Interferences and the Examinersin-Chief are correct as to the dates to which the respective applicants are entitled Tyberg is not entitled to a patent containing claims corresponding to the counts of the issue. Lacroix contends in substance as follows, (brief, p. 39:) First, that the Tyberg application does not disclose a machine coming within the wording of the first three counts of the issue. Second, that as to counts 1, 2, and 3 the interference is merely in words, and the counts have a different meaning when read upon the structures of the respective parties. Third, that if the evidence in behalf of Tyberg is held to establish a reduction to practice as early as March or May, 1900, the same evidence shows that the machine in which the invention was reduced to practice was in public use for more than two years before he filed his application for patent upon it, on September 19, 1902, and a statutory bar exists to the grant of a patent. Fourth, that counts 4 and 5 are not readable on Lacroix's machine; also, that they are not patentable over patents cited. Fifth, that count 6 is not patentable over the prior art, but if patentable then Lacroix is entitled to an award of priority. Sixth, that according to the disclosure in the respective applications and the evidence filed Lacroix and not Tyberg is the inventor of the subject-matter defined in counts 1, 2, and 3 of the issue. The first of the above contentions raises the question of the right of Tyberg to make the claims forming counts 1, 2, and 3 of the issue. The question of the right of one party to make the claims when material to the other party's right to a patent containing them was held to be a legitimate question to raise at final hearing as ancillary to that of priority by the Court of Appeals of the District of Columbia in the Podlesak and subsequent cases. (C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399.) In the present case if the counts of the issue will not read on Tyberg's structure he never made the invention of the issue and is not entitled to an award of priority. In Tyberg's device a plurality of bunches are transferred by an arm carrying a series of needles from their support in the mold to a chain carrier. From said chain carrier a swinging gripping device transfers the bunches one by one to the wrapping mechanism. In the device of Lacroix a single bunch is transferred at one operation by means of an oscillating arm from the mold to the wrapping mechanism and without the use of the intermediate chain carrier of Tyberg. Lacroix contends that the portion of claims 1, 2, and 3 calling for means for transferring the bunches from the mold to the wrapping mechanism— is not properly readable on Tyberg's structure, since in the latter structure it must cover three elements-viz., the needle-bar, the chain carrier, and the swinging arm. This contention is believed to be without force. The claims constituting these counts of the issue originated in the Tyberg application and should be construed in the light of his disclosure. In Tyberg's machine it was found advantageous to remove all the bunches from the mold at one operation. The wrapping mechanism, however, could operate on but one bunch at a time. It was therefore necessary in his device to provide the intermediate chain carrier to receive a plurality of bunches removed from the mold and permit them to be taken one at a time to the wrapping mechanism. The only function of the needle-bar, chain carrier, and swinging arm is to take the bunches from the mold to the wrapping device. Taken together they form the transfer mechanism or the means for transferring the bunches from the mold to the wrapping mechanism— as called for in these counts of the issue. It is true that Lacroix shows a different species of transferring device, and the means in his case covers merely the oscillating arm and its operating mechanism. The term " means," however, is a generic one and equally applicable to either species of transferring device. In reply to the contention that it does not properly define Tyberg's invention it may be said that the invention of the counts under consideration does not reside in any particular construction of transferring means, but in the combination of the transferring means with the other elements of the combination claimed. The second, fourth, and fifth of the above contentions of Lacroixviz., that counts 1, 2, and 3 have different meanings in the respective applications and that there is consequently no interference in fact, that counts 4 and 5 are not readable on his own device, and that counts 4, 5, and 6 are not patentable over the prior art, and that for these reasons the interference should be dissolved-do not relate to matter that can properly be considered at final hearing on priority, except under such circumstances as would warrant the exercise of the supervisory authority of the Commissioner. (Sobey v. Holsclaw, C. D., 1905, 523; 119 O. G., 1922; Potter v. McIntosh, C. D., 1906, 56; 120 O. G., 1823; Eschinger v. Drummond and Lieberknecht, C. D., 1906, 121; 121 O. G., 1348; Lipschutz v. Floyd, C. D., 1907, 319; 130 O. G., 2718.) The counts of the issue were held patentable by the Primary Examiner at the time the interference was declared. Appellant brought a motion to dissolve the interference, which was denied by the Primary Examiner, and while all of the above grounds do not appear to have been included in said motion appellant should have urged them at that time, if he wished to raise them at all. It is well settled, as set forth in the decisions cited above, that the supervisory authority of the Commissioner will be exercised only under extraordinary circumstances and to correct a manifest error. The circumstances of the present case do not call for the exercise of the supervisory authority of the Commissioner. The third contention of appellant relates to the alleged existence of the statutory bar of public use and not to the question of priority of invention. In the case of Burson v. Vogel (C. D., 1907, 669; 131 O. G., 942; 29 App. D. C., 388) the Court of Appeals of the District of Columbia said: Whether Burson's use of his machine in his factory for more than two years before applying for a patent, amounted to such public use within the meaning of section 4886, Revised Statutes, as to bar his right to a patent, is not a question which can be raised in this case which involves priority of invention as between him and Vogel. The question is one for the consideration of the Commissioner on the final allowance of a patent. In view of the fact, however, that this question was discussed and passed upon by the lower tribunals and that it can best be considered at the present time it may be stated that the testimony upon this point has been reviewed and is believed to show that such use as was made of Tyberg's machine more than two years prior to September 19, 1902, the filing date of his latest application, was an experimental use and not a public use of the invention. It is true that the evidence shows that a license was taken out by the American Tobacco Company, the assignee of the Tyberg applications, in October, 1899, to make cigars on the premises where the Tyberg machine was being tested and perfected, and that the "Tyberg Exhibit Revenue Book" shows that some forty thousand cigars were made during tests of the machine in three months. It appears, however, that it was necessary under the internal revenue laws to take out a license and to account for all tobacco received in order to make actual tests of the machine with tobacco. The evidence shows that the machine was tested in a machine-shop rather than a cigar factory proper; that only employees of the company were admitted to the shop; that the machine was operated primarily for the purpose of developing imperfections in the machine, and that many minor changes were made whereby the percentage of waste was reduced. Under these circumstances the fact that incidentally cigars were produced, some of which were sold at a reduced price to the workmen and others were sufficiently perfect to be placed upon the market, does not change the character of the use from an experimental to a public one. The sixth contention of appellant, relating to priority of invention of the structure of counts 1, 2, and 3, has already been considered and found unwarranted. The decision of the Examiners-in-Chief is affirmed. OHLSEN V. HARMER. Decided July 13, 1909. 148 O. G., 1085. 1. INTERFERENCE-ORIGINALITY-FIDUCIARY RELATION BETWEEN PARTIES. When O. was admittedly the inventor of all the features of the invention save one and H. obtained his knowledge of these features from O. and the testimony was not clear as to whether the other feature was an improvement suggested by H. or by a third party, Held that O. was entitled to an award of priority in either event, inasmuch as a partnership relation was shown to exist between O. and H. at the time the invention in issue was made. 2. SAME-SAME-CIRCUMSTANCES AND CONDUCT. In cases where the question is on the originality rather than priority of invention the surrounding circumstances and conduct of the parties are entitled to great weight. APPEAL from Examiners-in-Chief. VALVE. Mr. Charles A. Brown for Ohlsen. BILLINGS, First Assistant Commissioner: This is an appeal by Harmer from the decision of the Examinersin-Chief reversing the decision of the Examiner of Interferences and awarding priority of adoption in favor of Ohlsen. The issue consists of the two following counts: 1. The combination with a valve-seat provided with ports, of a valve member resting against said seat, said seat being provided with guides to restrain the movement of said valve member, said valve member being provided with guides disposed at an angle with respect to the guides upon said valve-seat, a stem provided with a pin eccentric to the axis thereof, a block adapted to move between the guides on said valve member, said block being provided with an aperture adapted to receive said pin. |