a somewhat public manner, by having the boots worn by men in the employ of the company with which he was connected, but this is not sufficient to constitute a dedication to public use. Some manifest intention must be shown on the part of appellant to abandon his invention. It is not necessary that the intention of an inventor should be expressed in words. It may be inferred from his acts. In Kendall et al. v. Winsor (21 How., 322) the Court said: It is unquestionably the right of every inventor to confer gratuitously the benefits of his ingenuity upon the public, and this he may do either by express declaration or by conduct equally significant with language; such, for instance, as an acquiescence with full knowledge in the use of his invention by others; or he may forfeit his right as an inventor by a willful or negligent postponement of his claims. Applying this rule to the case at bar, we find nothing in the record to justify us in bringing appellant within its limitations. It will be observed that appellant, in his original process application, does not disclaim any right to an invention for the device in which the process was conducted. He very truly says it forms no part of the process invention, but that is far from either a disclaimer or an abandonment of his right to claim a patent for it, should the experiments prove that a valuable device for manufacturing rubber footwear had been discovered. The invention seems to be a valuable one. Caution in sufficiently testing the utility of an invention and establishing the value of a discovery before rushing into the Patent Office is to be commended, rather than condemned. Merely permitting others to use the product of an invention before applying for a patent does not amount to abandonment. No effort was made to sell the invention or its product. Abandonment is never presumed. On the other hand, the presumption is against abandonment, and the burden is on the one charging it to establish it by clear and convincing proof. (Computing Scale Co. v. Automatic Scale Co., C. D., 1905, 704; 119 O. G., 1586; 26 App. D. C., 238; affirmed in C. D., 1907, 687; 127 O. G., 849; 204 U. S., 609.) It is likewise the law that where the evidence raises a presumption of abandonment, it may be rebutted by showing acts assertive of the inventor's right and his intention, by experiment or improvement, to perfect his discovery. It is generally held that where an inventor applies for and receives a patent which discloses another unpatented invention not claimed, that it is presumed not to be novel, or is dedicated to the public by the patentee. (In re Millet, C. D., 1901, 410; 96 O. G., 1241; 18 App. D. C., 186.) This presumption is rebutted if the patentee has another application pending in the Patent Office claiming it (Miller v. Eagle Mfg. Co., C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186.) or if he files such application promptly. (Dederick v. Fox, C. D., 1893, 401; 63 O. G., 1963; 56 Fed., 714.) We think appellant comes within the latter class. Prior knowledge and use in this country negatives novelty, and constitutes an anticipation of the thing patented. Where a patent is thus anticipated, no right to a monopoly in it can be acquired by the patentee. It either belongs to the original inventor or the public. If the original inventor has by his action forfeited his right to a patent, the invention will be deemed to have been dedicated to the public, and no one subsequently claiming to be the inventor can acquire a property right in the invention. The rule is well stated by Walker in his work on patents, sections 71 and 72, as follows: Novelty is negatived by prior knowledge and use in this country, by even a single person, of the thing patented. This rule applies even to cases where that knowledge and use were purposely kept secret; and it applies no matter how limited that use may have been. Novelty is also negatived by evidence that even one specimen of the thing patented, existed and was known in this country prior to its invention by the patentee, even though it was not used prior to that time. This rule results from the statute which provides that things, in order to be patentable, must not have been known or used by others in this country. If, however, the identity of the patented and the prior article can be known only by actual use, and if the prior article never was actually used till after the date of the patented invention, then its prior existence will not negative novelty. In that case though its existence was known prior to the invention of the patented thing, it was not known to be what the patented thing afterward was. Knowledge, in order to negative novelty, must include knowledge of the character, as well as knowledge of the existence, of the prior thing. Applying this rule to the case at bar, it will be observed that the construction and use by appellant of the device in issue, long prior to the earliest date that can be awarded appellee, negatived its novelty, and made it a complete anticipation of the invention claimed by appellee. We find appellant, almost to the date of filing his application, improving the device and testing the product, and with reasonable promptness, after its utility had been demonstrated, filing his application for a patent. The law as to the right of an inventor to conduct experiments, and what constitutes a dedication to public use, is well expressed in the case of Elizabeth v. Pavement Co., (97 U. S., 126,) where Mr. Justice Bradley, speaking for the Court, said: When the subject of invention is a machine, it may be tested and tried in a building, either with or without closed doors. In either case, such use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing its operation. He may see cause to alter it and improve it, or not. His experiments will reveal the fact whether any and what alterations may be necessary. If durability is one of the qualities to be attained, a long period, perhaps years, may be necessary to enable the inventor to discover whether his purpose is accomplished. And though, during all that period, he may not find that any changes are necessary, yet he may be justly said to be using his machine only by way of experiment; and no one would say that such a use, pursued with a bona fide intent of testing the qualities of the machine, would be a public use, within the meaning of the statute. So long as he does not voluntarily allow others to make it and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose his title to a patent. It would not be necessary, in such a case, that the machine should be put up and used only in the inventor's own shop or premises. He may have it put and used in the premises of another, and the use may inure to the benefit of the owner of the establishment. Still, if used under the surveillance of the inventor, and for the purpose of enabling him to test the machine, and ascertain whether it will answer the purpose intended, and make such alterations and improvements as experience demonstrates to be necessary, it will still be a mere experimental use, and not a public use, within the meaning of the statute. This, we think, aptly applies to the case before us. The product of this invention was such as to require time to test its durability. Appellant lost no time in manufacturing a number of boots, putting them into wearing competition with boots then being manufactured. He had the men in the washroom of the factory wear one of each at the same time, thus subjecting them to the best possible test. Such a trial would take considerable time. We think the time consumed in testing the product was not unreasonable. No necessity arose for making an application for a patent for the machine until the experiments had proved a success. We find nothing in the record justifying a charge of abandonment. The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as required by law. [Court of Appeals of the District of Columbia.] MARTIN v. ROWLEY. Decided June 4, 1909. 146 O. G., 722; 33 App. D. C., 487. INTERFERENCE-PRIORITY-ORIGINALITY. R. was a manufacturer of artificial limbs and a prolific inventor in that art. M. at the time he entered R.'s employ was not a mechanic nor skilled in the art, and though he claimed to have conceived the invention while in R.'s employ made no disclosure of it to any one, but within a month from the time he entered the employ of a rival manufacture: made a fullsized device. These facts, together with the fact that M. was admittedly familiar with the improvements gotten up by R., Held sufficient to show, as testified by R., that he disclosed the invention in issue to M. Mr. J. W. Ellis for the appellant. Mr. H. A. Coombs for the appellee. ROBB, J.: This appeal brings into review the decision of the Commissioner of Patents, in an interference proceeding, overruling the decision of a majority of the Board of Examiners-in-Chief sustaining the decision of the Examiner of Interferences. Prior knowledge and use in this country negatives novelty, and constitutes an anticipation of the thing patented. Where a patent is thus anticipated, no right to a monopoly in it can be acquired by the patentee. It either belongs to the original inventor or the public. If the original inventor has by his action forfeited his right to a patent, the invention will be deemed to have been dedicated to the public, and no one subsequently claiming to be the inventor can acquire a property right in the invention. The rule is well stated by Walker in his work on patents, sections 71 and 72, as follows: Novelty is negatived by prior knowledge and use in this country, by even a single person, of the thing patented. This rule applies even to cases where that knowledge and use were purposely kept secret; and it applies no matter how limited that use may have been. *** Novelty is also negatived by evidence that even one specimen of the thing patented, existed and was known in this country prior to its invention by the patentee, even though it was not used prior to that time. This rule results from the statute which provides that things, in order to be patentable, must not have been known or used by others in this country. If, however, the identity of the patented and the prior article can be known only by actual use, and if the prior article never was actually used till after the date of the patented invention, then its prior existence will not negative novelty. In that case though its existence was known prior to the invention of the patented thing, it was not known to be what the patented thing afterward was. Knowledge, in order to negative novelty, must include knowledge of the character, as well as knowledge of the existence, of the prior thing. Applying this rule to the case at bar, it will be observed that the construction and use by appellant of the device in issue, long prior to the earliest date that can be awarded appellee, negatived its novelty, and made it a complete anticipation of the invention claimed by appellee. We find appellant, almost to the date of filing his application, im proving the device and testing the product, and with reasonabl promptness, after its utility had been demonstrated, filing his appli cation for a patent. The law as to the right of an inventor to cor duct experiments, and what constitutes a dedication to public us is well expressed in the case of Elizabeth v. Pavement Co., (97 U. F 126,) where Mr. Justice Bradley, speaking for the Court, said: When the subject of invention is a machine, it may be tested and tried building, either with or without closed doors. In either case, such use is a public use, within the meaning of the statute, so long as the inventor engaged, in good faith, in testing its operation. He may see cause to alte and improve it, or not. His experiments will reveal the fact whether any what al ssary. If durability is one of the qualities t 3 years, may be necessary to enable the Inve e is accomplished. And though, during all ny changes are necessary, yet he may be 1 way of experiment; and no one w na fide intent of testing the qualiti within the meaning of the statute long as he does not voluntarily allow others to make it and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose his title to a patent. It would not be necessary, in such a case, that the machine should be put up and used only in the inventor's own shop or premises. He may have it put and used in the premises of another, and the use may inure to the benefit of the owner of the establishment. Still, if used under the surveillance of the inventor, and for the purpose of enabling him to test the machine, and ascertain whether it will answer the purpose intended, and make such alterations and improvements as experience demonstrates to be necessary, it will still be a mere experimental use, and not a public use, within the meaning of the statute. This, we think, aptly applies to the case before us. The product of this invention was such as to require time to test its durability. Appellant lost no time in manufacturing a number of boots, putting them into wearing competition with boots then being manufactured. He had the men in the washroom of the factory wear one of each at the same time, thus subjecting them to the best possible test. Such a trial would take considerable time. We think the time consumed in testing the product was not unreasonable. No necessity arose for making an application for a patent for the machine until the experiments had proved a success. We find nothing in the record justifying a charge of abandonment. The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as required by law. [Court of Appeals of the District of Columbia.] MARTIN v. ROWLEY. Decided June 4, 1909. 146 0. G., 722; 33 App. D. C., 487. INTERFERENT PROMARTY-ORIGINALITY. Rwas afacturer of artificial limbs and a prolific inventor in that art Keetme he entered R.'s employ was not a mechanic nor skilled in the at and though he claimed to have conceived the invention while In Be employ made to disclosure of it to any one, but within a month from the time he entered the employ of a rival manufacture: made a fullased feris The het together with the fact that M. was admittedly fancier with the myevements gotten up by R., Held sufficient to show, as tested by 3.. tur e closed the invention in issue to M. Mr. J. W. El for the appellant. Mr. H. & Dunia for the appellee. ROBB J This app me the decision of the C of Patents. In an mencoceeding, overruling th a majority of the bort of Examiners-in-Chief sustain sion of the Exam T f the t the The e was in his ɔ him. nd the 3 satis his disthe de 0 for the or changand lacked meled knee. why he conne explain why ed the employ of rden of proof resting Pasioner was right, and oceedings in this |