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.

21895-H. Doc. 124, 61-2-31

Martin filed his application May 16, 1906. Rowley filed five months later.

The invention is narrow in scope and resides in a changed location of the connection between the suspender and leg-section of an artificial limb. The counts are as follows:

1. The combination with a thigh-section and a leg-section pivotally connected together, of a lever fulcrumed in the thigh-section and having upper and lower arms, the lower arm being connected with the leg-section, a suspender connected with the upper arm of the lever, and means coöperating with the lever for limiting the forward movement of the leg-section, substantially as set forth.

2. The combination with a thigh-section, a leg-section and a pivot connecting the same, the thigh-section being provided in its sides above said pivot with openings and in its rear side with a slot, a lever mounted on said pivot and having an upper arm arranged wholly within the thigh-section and a lower arm extending downwardly through the slot of the thigh-section into the leg-section and secured to the latter, and a suspender having members which pass through the side openings of the thigh-section and are secured to the upper arm of said lever, substantially as set forth.

The only question in the case being that of originality, we proceed immediately to a consideration of that question. Rowley is a manufacturer of artificial limbs and a prolific inventor in that art. Martin entered his employ in 1897 "as general officeman and bookkeeper " and with a slight interruption remained until January 11, 1906, when he entered the employ of a competing firm, the Queen City Artificial Limb Company, of Buffalo, N. Y. While Martin claims to have conceived the invention in December, 1904, there is no evidence, outside of his own testimony, that he disclosed it to any one prior to January 15, 1906, when he entered the employ of the Queen City Company. Within a month after that time, however, his diligence had been so marked that the invention had been embodied in a fullsized device. So far as the record discloses, he was not a mechanic nor skilled in the art when he entered Rowley's employ. He was, however, a wearer of two artificial limbs.

Rowley claims to have conceived the invention early in 1900 and to have then fully disclosed it to Martin. The Board of Examinersin-Chief were unanimously of the opinion that Rowley in fact conceived the invention as claimed, but a majority of the Board were

not

convinced that this invention was adequately disclosed to Martin at that time or that Martin acquired any information concerning it.

66

The third member of the Board was of the opinion that on the whole the weight of evidence favors the view that Martin did derive his idea from Rowley," and that opinion was sustained by the Commissioner.

We have examined the evidence and concur in the finding of the Board and Commissioner that Rowley has established conception of

the invention as early as 1900. Did he disclose that conception to Martin? As to the relation then existing between the parties, Rowley in his testimony says:

After I became thoroughly acquainted, as I supposed, with Mr. Martin, I don't think there was anything connected with the business with which he did not become acquainted-in fact, if anything was invented, it was talked over with him. If anything was to be tested or tried, it was either tried on him or tried in his presence. He tested out several devices, sometimes suggesting improvements. He tested out a ball-bearing ankle-joint. He tested out two forms of suspender, one of which was a modification of the suspender shown in Patent No. 644,464.

Martin was asked by his counsel whether Rowley was in the habit of showing him the improvements and inventions he made, and replied:

Yes, as stated in answer to question 10 of J. F. Rowley's direct examination, I became acquainted with practically everything connected with the business, and tested and tried out various devices, and as stated by Mr. Rowley sometimes suggested improvements.

There was, therefore, both opportunity and reason for a disclosure from Rowley to Martin. In corroboration of his own positive testimony on this point Rowley produced the manager of his branch office at St. Louis, Mr. Elmer C. Moore, who was connected with the Chicago office from 1899 to 1904. The testimony of this witness bears the impress of sincerity. He says the device of the issue was experimentally inserted in an artificial limb and that the limb was shown and fully explained to Martin by Rowley. The witness relates the circumstances under which the disclosure was made, and his testimony is consistent throughout. Martin in his testimony is equally positive that no disclosure was made to him. Opposed to this denial is the testimony of Rowley and Moore and the inherent probabilities of the case. Rowley, we think has satisfactorily explained why he did not apply for a patent on his discovery until after Martin claimed it. He says he concluded the device was not as good as a similar device in his patent of 1900 for the reason that it was not as durable, did not provide a means for changing the leverage of the suspender over the leg-action, and lacked the clinging release of the suspender-strap over the enameled knee. Martin, on the contrary, does not satisfactorily explain why he concealed his alleged discovery from Rowley, nor does he explain why he did nothing whatever about it until he entered the employ of another firm.

We hold that Rowley has sustained the burden of proof resting upon him, and that the decision of the Commissioner was right, and is, therefore, affirmed.

The clerk will certify this opinion and the proceedings in this court to the Commissioner, as required by law.