O. G., 279; 3 App. D. C., 497, 499; Norden v. Spaulding, C. D., 1905, 588; 114 O. G., 1828; 24 App. D. C., 286, 290; Smith v. Brooks, C. D., 1904, 672; 112 O. G., 953; 24 App. D. C., 75, 80; Andrews v. Nilson, C. D., 1906, 717; 123 O. G., 1667; 27 App. D. C., 451, 457; Lowrie v. Taylor, C. D., 1906, 713; 123 O. G., 1665; 27 App. D. C., 522, 526; Burson v. Vogel, C. D., 1907, 669; 131 O. G., 942; 29 App. D. C., 388, 394; Howard v. Bowes, 31 App. D. C., 619, 622.) The third class includes those where the machine is of such a character that the particular use for which it is intended must be given special consideration, and requires satisfactory operation in the actual execution of the object. (Macdonald v. Edison, C. D., 1903, 622; 105 O. G., 1263; 21 App. D. C., 527, 529; McKenzie v. Cummings, C. D., 1904, 683; 112 O. G., 1481; 24 App. D. C., 462, 467; Gallagher v. Hein, C. D., 1905, 624; 115 O. G., 1330; 25 App. D. C., 77, 82; Ocum paugh v. Norton, C. D., 1905, 632; 115 O. G., 1850; 25 App. D. C., 90, 93, 94; Sherwood v. Drewsen, C. D., 1907, 642; 130 O. G., 657; 29 App. D. C., 161, 173.)

In cases falling within the second and third classes described, long delay in putting the machine in actual use for the intended purpose, has always been regarded as a potent circumstance in determining whether the test was successful or only an abandoned experiment.

Notwithstanding the failure of Sydeman and Meade to attempt to introduce the machine of 1904 into commercial use, when it was of such great importance to do so, and their negligence in constructing the new and improved machine of 1905, which they regarded as showing such patentable novelty as to entitle the improver, Gallagher, to claim a part of the invention, it is earnestly contended that the evidence in regard to the construction and test of the 1904 machine brings it within the principle of the second class of cases above mentioned. We cannot concur in this view. As before said, it was known that the coated duck could be moistened and heated so that it would adhere effectually to the leather insole of the shoe. The purpose in view was to construct a machine that would operate so as to perform this moistening and heating in a practically useful manner commercially. The purpose of the parties was to produce a machine for rapidly and efficiently " treating the coated fabric so that it would become sufficiently soft and tacky, as it emerged continuously from the machine, to be effectually applied to the leather innersoles. Without this capacity the machine was of no practical utility, and valueless to the manufacturer of shoes on the one hand, and the manufacturers of the fabric on the other. Becoming satisfied that the machine was too slow, that is to say, in our opinion, that it would not efficiently as well as rapidly dry and heat the wet fabric, the parties laid it aside, and did not go actively to work to improve upon it until they had heard of the apparent success of Thoma's machine and process. We

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are constrained to hold that there was not a reduction to practice, as claimed, in 1904. To hold otherwise would establish a dangerous precedent.

It is evident, from what has been said regarding the delay of the parties between May, 1904, and May 19, 1905, that they were not exercising the requisite diligence when Thoma entered the field.

These conclusions render it unnecessary to consider the question raised as to the credibility of the evidence relating to the alleged reduction to practice in 1904.

The decision in favor of Thoma will be affirmed. It is so ordered; and that the clerk certify this decision to the Commissioner of Patents.

[Court of Appeals of the District of Columbia.]

NEUBERTH v. LIZOTTE.

Decided January 5, 1909.

141 O. G., 1162; 32 App. D. C., 329.

1. INTERFERENCE-INTERPRETATION OF THE ISSUE.

The claims in issue which were first made by N. were not in his specification as originally filed, but were made after it had been amended. Held that the meaning of the claims must be determined by the specification as so amended.

2. SAME

PRIORITY-RIGHT TO MAKE THE CLAIMS.

The claims as interpreted in the light of N.'s amended specification, where they originated, call for twice bending the covering material-first at right angles to the edge of the flange of the eyelet and then over under the flange to secure it thereto. Held that as N.'s machine as constructed and operated and as shown in his application was not capable of operating in this manner N. has no right to make these claims.

3. SAME-SAME-SAME.

Count 7 specifies a machine for covering studs. N.'s machine as shown and illustrated could not be used for covering studs. Held that as he does not point out in his specification any modification of his machine by which it could be made to cover studs and as such modification would not be a mere matter of mechanical skill N. has no right to make a claim in the terms of this count.

Mr. Horace Van Everen, Mr. Benj. Phillips, and Mr. W. G. Ogden for the appellant.

Mr. W. O. Underwood and Mr. C. L. Sturtevant for the appellee. SHEPARD, C. J.:

This is an interference proceeding having the following issue:

1. In a machine for applying covering material to eyelets, means for bending the covering material over the edge of the flange of an eyelet, combined with means for forcing said bent-over material under the edge of the flange.

2. In a machine of the class described, means for bending covering material over the edge of the flange of an eyelet, and other means for thereafter forcing the covering material under the eyelet-flange and into contact with the under surface of the flange.

3. In a machine for covering eyelets with plastic sheet material, means for applying the material to the upper surface of the flange of an eyelet, and means for bending the material over the edge of the flange, combined with means for turning said bent-over material under the edge of the flange and into contact with the under surface of the flange.

4. In a machine of the class described, means for bending covering material over the edge of the flange of an eyelet and holding said covering material from reverse movement, combined with means for acting on the bent-over portion of covering material to force it under the flange.

5. In a machine of the class described, means for bending covering material over the edge of the flange of an eyelet, combined with means for acting on the bent-over portion of covering material to force it under the flange and into contact with the under surface of the flange, said mechanism having provision for holding the covering material from lateral spreading while it is being forced under the flange.

6. In a machine for covering eyelets with plastic sheet material, means for heating the plastic material, means for applying the material to the upper surface of the flange of an eyelet, and means for bending the material over the edge of the flange, combined with means for turning said bent-over material under the edge of the flange and into contact with the under surface of the flange.

7. In a machine for covering studs, the combination with a die for shaping the covering material to conform to the outer surface of the stud, of means for acting on the projecting edge of the material to crimp and turn the same into contact with the inner surface of the stud, and means for producing consecutive operations of the die, and the means for acting on the projecting edge of the material.

8. In a machine for covering eyelets, the combination with means for shaping covering material to conform to the upper surface of the eyelet; of means for acting on the projecting edge of the covering material to crimp and turn the same under the edge of the flange of the eyelet.

Neuberth's application was filed April 28, 1904; Lizotte's December 24, 1904.

Neuberth alleged conception in November, 1901, and reduction to practice in April, 1902. Lizotte claimed to have conceived the invention in 1891, to have made a model in 1892, and to have constructed a machine and reduced it to practice in May, 1901.

The invention of the issue is a machine for covering the heads of eyelets and lacing-hooks with sheet-celluloid. Neuberth's machine is designed particularly for covering eyelets, while that of Lizotte is specially adapted to covering hooks. It was not new to cover hooks and eyelets with celluloid. This had been done by heating a lump of celluloid to a point at which it would flow and molding it upon the flange of the eyelet or the head of the hook. Both of the applicants contemplated the use of sheet-celluloid. A washer or disk is cut therefrom and heated to a temperature at which it will bend. It is

then applied to one side of the hook or flange of the eyelet, over the edge of the same, and operated upon to securely fasten it to the article covered.

Three questions were raised for determination:

1. Whether Neuberth is entitled to make the claims of the issue. 2. Whether Lizotte actually reduced the invention to practice in May, 1901.

3. Whether if having reduced his invention to practice as alleged, Lizotte lost the right to his invention through concealment and suppression of the same thereafter.

The Examiner of Interferences determined all of these questions in favor of Lizotte and awarded priority to him. He was reversed by the two members of the Board of Examiners-in-Chief then acting, who held that Neuberth had the right to make the claims, and further that Lizotte had not reduced to practice in 1901 as claimed.

On appeal to the Commissioner this decision was reversed and priority awarded to Lizotte both on the ground that Neuberth had no right to make the claims, and that Lizotte had completed his invention by reduction to practice in the summer of 1901 and before conception by Neuberth. From that decision Neuberth has appealed. The first question in order is Neuberth's right to make the several claims embodied in the issue.

The difficulty in determining the meaning to be given the claims is complicated by the several amendments of Neuberth's application before they were made. The testimony shows that while both applications were pending and before any interference had been declared, negotiations were had between the United Shoe Machine Company (the substantial owner of Neuberth's invention) and Lizotte looking to the sale of his right to the said company. Lizotte had no knowledge of Neuberth's application or of the construction of his machine. At the request of the company he sent to it a copy of his application for the inspection of its counsel. The negotiations failed and the papers were returned. The amendments thereafter filed by Neuberth made changes in the statement of the operation of his machine in certain particulars, and revised among other things, the drawings of the original. Claims 1, 2, 3, 4, 5, 6, and 8 of the issue were then made for the first time. Those claims specify a machine for covering eyelets. Claim, or count 7 originated with Lizotte and specifies a machine for covering studs which is another name for lacing-hooks. When this claim was suggested to Neuberth by the Examiner, he first filed a claim in which the word "eyelet " was substituted for "stud."

This claim 7 was first considered by the Commissioner. Neuberth's construction as described and illustrated could not be used to cover studs, or lacing-hooks, and he so admitted when testifying as a witness in the case. He claimed, however, that a lacing-hook could be made

by first using his machine to cover the head of a properly-shaped blank, and then forming the blank into a hook. He does not point out in his description any modification of his machine by which it could be made to cover hooks or studs; and as was said by the Commissioner:

As such modification would not be a matter of mere mechanical skill, it must be held that Neuberth is not entitled to make a claim in the terms of count 7 of the issue.

It is sufficient now to say of the remaining counts of the issue, that they involve devices for fastening the washer or disk of sheet-celluloid to the top of an eyelet, bending it, and securing its edges to the other side of the eyelet-flange, and thereby obtaining a complete covering of the same. On behalf of Lizotte, the contention is that the said claims, by their proper construction, specify means whereby the last step in the covering process is accomplished by bending over the part of the washer, which had previously been bent over the edge of the eyelet-flange or other like article, and securing it to the under surface.

Neuberth disputes this limitation of the claims and contends that they merely demand means for forcing the material, which had been bent at right angles to the flange, under the same so as to secure a firm attachment. He argues that the novelty of the invention lies in the first step which consists in bending the sheet-celluloid down, and that it is sufficient that the bent-over portion be forced under the flange thus securing the covering material to the eyelet. In his original application the machine is described as having means

provided for pressing a piece of covering material against the portion of the eyelet which is to constitute the flange, and at the same time spreading or bending said portion whereby the flange is caused to cut into the covering material and embed itself therein. The covering material may and preferably will be molded into the desired form about the flange of the eyelet.

He describes the operation of pressing the covering material against the flange of the eyelet and bending it at right angles to the flange, and says:

Thereafter as the movable die completes its stroke the pressure of the covering material against the partially-outturned flange of the eyelet and the wedging of the covering material between the enlarged portion 204 and the base of the eyelet-flange bends or spreads said flange while at the same time the flange is caused to cut into the washer both by the direct pressure of the flange against the washer and by the spreading of the flange, which causes its edge portion to move radially outward and into the washer.

While the flange of the eyelet is being spread to cut into and embed itself in the washer of covering material the covering material is being pressed between the coöperating surfaces 194 and 202 of the two dies to mold it upon both sides of the flange of the eyelet.