of the telephone-box instead of a similar lever attached to some other support, amount to invention? We agree with the tribunals of the Patent Office that it did not. (Millett v. Allen, C. D., 1906, 752; 124 O. G., 1524; 27 App. D. C., 70, 76, and cases there cited; in re Mason, C. D., 1908, 490; 136 O. G., 441; 31 App. D. C., 539.)

The new use claimed for the telephone itself amounts to nothing more than the use conceived by Bannan, namely, as a place for the display of advertisements. The use of the telephone-lever as a means for communicating motion to the movable-band device substituted for Bannan's method of display, was not a new, but an additional use for that lever, readily suggested by the method of Whitney's operation. The ordinary switching-lever is made to operate in the same way to perform a similar function. The combination of applicant amounts only to an aggregation of familiar elements which operate in the combination as they formerly did separately.

There was no joint operation productive of a new result. In view of what was already known, the thought which prompted the combination is no more invention than that which produced the combination of pencil and eraser, through the insertion of a piece of rubber in one end of an ordinary lead-pencil, a patent for which was held void in Reckendorfer v. Faber, (C. D., 1876, 430; 10 O. G., 71; 92 U. S., 347.)

The cases cited by the appellant are distinguishable from this. (Hobbs v. Beach, C. D., 1901, 311; 94 O. G., 2357; 180 U. S., 383; Wold v. Thayer, 148 Fed. Rep., 227; Stillwell-Bierce v. Oil Co., 117 Fed. Rep., 410; in re McCreery, C. D., 1898, 478; 83 O. G., 1210; 12 App. D. C., 517.) In Hobbs v. Beach, which is chiefly relied on, the Dennis and York device, claimed as an anticipation, had been used solely for pasting addresses upon newspapers. Neither it or any other machine, had ever been used for pasting paper strips on the corners of boxes. It had to be changed materially to make it capable of such use. The functions of the two machines were analogous, but not similar and it was said that the Beach machine involved invention, first, to see that the old machine. was adaptable to the work of the Beach device, and second to make the changes necessary to adapt the old device to the new function. In the other cases, changes were made by which new and useful results were achieved.

Nor is there any support for the appellant's contention in the recent case of in re Eastwood, (ante, 418; 144 O. G., 918.) There the combination of a metal or skull cracking weight with a liftingmagnet and a traveling crane, was held to be new. While a liftingmagnet had been used in a combination with a traveling crane Eastwood was the first to combine the three elements, producing a novel and useful result.

In the present case the Whitney hook, as we have seen performs the same functions in his combination that is performed by the telephone-hook in the appellant's. There is such similarity in the mode of operation of the Whitney hook, and the telephone-hook that one readily suggests the other.

We find no error in the decision and it will be affirmed. It is so ordered and that the clerk certify this decision to the Commissioner of Patents as the law requires.

[U. S. Circuit Court of Appeals-First Circuit.]

AUTOMATIC Weighing MACHINE COMPANY v. PNEUmatic Scale CORPORATION, LIMITED.

Decided January 5, 1909.

139 O. G., 991.

1. INTERFERING PATENTS-DATES OF RESPECTIVE INVENTIONS.

When two patents for the same invention have been issued to independent inventors, the dates of their respective inventions are, first, the dates of the patents; second, the dates of the applications, provided the application sufficiently describes the invention; third, the dates of actual reduction to practice; fourth, the dates of conception with this qualification, that if either patentee seeks to carry the date of his invention back to the date of his conception he must show reasonable diligence in adapting and perfecting his invention, and with respect to this rule there is no distinction between simple and complicated inventions.

2. INVENTION-CONSTRUCTIVE REDUCTION TO PRACTICE.

The rule of the Patent Office that the filing of an allowable application is constructive reduction to practice is only the expression in another form of the rule that the application of a patented invention, if it sufficiently describes the invention, is conclusive evidence that the invention was made at least as early as that date.

3. SAME

DISCLOSURE AND DRAWING DOES NOT CONSTITUTE.

The authorities seem to be conclusive upon the point that a conception evidenced by disclosure and drawings does not constitute an invention under the patent laws.

4. SUIT FOR INFRINGEMENT-PRIORITY OF INVENTION-EFFECT OF DECISION IN INTERFERENCE PROCEEDING.

Where in a suit for infringement of a patent which was granted after an interference proceeding in the Patent Office the only defense set up is that the other party to the interference was the prior inventor, the decision of the Patent Office tribunals and the Court of Appeals of the District of Columbia on the question of fact involved is entitled to great weight, if it is not absolutely controlling.

5. PRIORITY OF INVENTION-DILIGENCE.

T. filed an application December 17, 1896. W. conceived the invention January 10, 1896, made working drawings thereof in the fall of 1896, re

duced the invention to practice in April, 1897, and filed his application March 11, 1898. Held that W. was not exercising diligence at the time that T. filed his application and subsequently thereto, and that T. was therefore the first inventor.

APPEAL from the Circuit Court of the United States for the District of Maine.

Mr. Benjamin Phillips and Mr. Elmer P. Howe for the appellant. Mr. William K. Richardson and Mr. J. Lewis Stackpole for the appellee.

Before COLT, LOWELL, and ALDRICH, Judges.

COLT, J.:

This is a bill in equity brought under section 4920 of the Revised Statutes for infringement of the first seven claims of the Thomas patent, No. 766,004, for improvements in automatic weighing-machines. The invention consists, broadly speaking, in the addition of a second hopper with a time-valve to the previous single-hopper weighing-machine of the Doble and Watson patent, No. 556,258.

The only defense is priority of invention by Thomas W. Watson, to whom a patent was issued for the same invention. It is admitted that both Thomas and Watson were independent inventors of this improvement.

Section 4920 provides as follows:

In any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one or more of the following special matters: Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or

Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented

And the like defenses may be pleaded in any suit in equity for relief against an alleged infringement.

Under these provisions, the defendant contends, first, that Watson was the original and first inventor of the thing patented, and, second, that Thomas unjustly obtained his patent for that which was in fact invented by Watson, who was using reasonable diligence in adapting and perfecting the same. The first defense turns upon the respective dates of the Thomas and Watson inventions; and the second defense raises a question of fact as to Watson's diligence in adapting and perfecting his invention.

Thomas filed his application December 17, 1896, and his patent issued July 26, 1904.

Watson conceived his invention, illustrated it by a drawing, and disclosed it to others, as early as January 10, 1896. He reduced his invention to practice by the building of a machine in April, 1897.

He filed his application March 11, 1898, and his patent issued September 26, 1899.

It may be noted, first, that Thomas's application antedates Watson's reduction to practice by four months, and Watson's application by fifteen months; and second, that Watson's conception antedates Thomas's application by eleven months.

The main controversy with respect to the Thomas invention is whether the date of his invention is the date of his application, December 17, 1896, and the main controversy with respect to the Watson invention is whether the date of his invention is the date of his conception, January 10, 1896.

On April 24, 1901, the Patent Office declared an interference between the Thomas application and the Watson patent, under section 4904 of the Revised Statutes:

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the Primary Examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the Primary Examiner, or of the Board of Examiners-in-Chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe.

Under a rule of the Patent Office, the filing of an allowable application is a constructive reduction to practice. In accordance with this rule, the date of the Thomas invention was fixed as of December 17, 1896, the date of his application; and the burden of proof was thrown upon Watson to establish the fact of reasonable diligence from the date of his prior conception, January 10, 1896, to the time Thomas filed his application. Upon this issue of diligence on the part of Watson, the Examiner of Interferences and the Commissioner of Patents, (C. D., 1903, 370; 106 O. G., 1776,) two of the three Patent Office tribunals which passed upon the question, and the Court of Appeals of the District of Columbia, (C. D., 1904, 587; 108 O. G., 1590,) found against Watson, and adjudged Thomas to be the prior inventor; and accordingly a patent was issued to Thomas under section 4904. As a result of the interference proceedings, there are two outstanding patents for the same invention issued to independent inventors.

The decision in interference proceedings is not conclusive on the question of priority of invention. The same question may arise in subsequent suits instituted under sections 4915, 4918, and 4920 of the Revised Statutes.

Section 4915 provides that the unsuccessful applicant may bring a bill in equity, for the purpose of determining his right to receive a

patent for his invention. The remedy under this section is in effect an appeal from the decision of the Patent Office tribunals.

Section 4918 provides that where there are interfering patents any person interested in any one of them may bring a bill in equity against the interfering patentee, and the court may declare either of the patents void in whole or in part.

Section 4920 provides that the defendant in a suit for infringement may prove any of the special matters of defense therein enumerated. In the present suit, as we have seen, the question of priority of invention is raised under paragraphs 2 and 4 of section 4920. In order to determine the question of priority under these paragraphs, we must, as already pointed out, ascertain the respective dates of the Thomas and Watson inventions. If we find the date of the Thomas invention is prior to the date of the Watson invention, then Thomas is the original and first inventor, unless Watson was using reasonable diligence in adapting and perfecting his invention from the time of his conception. On the other hand, if we find that the date of the Watson invention is prior to the date of the Thomas invention, then Watson is the original and first inventor. No question of diligence arises regarding the Thomas invention, because the complainant does not undertake to carry the date of the Thomas invention back of his application, while in the case of Watson, it is sought to carry the date of his invention back to his conception.

In patented inventions there are several distinct stages of the invention. Some patented inventions comprise only three stages, namely, conception (evidenced by drawings, disclosures, or models), application, patent; while other patented inventions comprise four stages, namely, conception, reduction to practice, application, patent.

The date of the first class of patented inventions must be either (1) the date of the patent, or (2) the date of the application, or (3) the date of the conception; while the date of the second class must be either (1) the date of the patent, or (2) the date of the application, or (8) the date of the reduction to practice, or (4) the date of the conception.

When two patents for the same invention have been issued to independent inventors, we understand the rule to be that the dates of their respective inventions are, first, the dates of the patents; second, the dates of the applications, provided the application sufficiently describes the invention; third, the dates of actual reduction to practice; fourth, the dates of conception; with this qualification, that if either patentee seeks to carry the date of his invention back to the date of his conception, he must show reasonable diligence in adapting and perfecting his invention either by actual reduction to practice or by filing his application.