ATTACHMENT TO HYDRAULIC MOTORS.

Patent granted Louis Duncan January 5, 1892, No. 466,661. App cation of George Westinghouse, Jr., filed July 16, 1890, No. 358,971.

Messrs. Whitman & Wilkinson for Duncan.

Messrs. Terry & Mackaye for Westinghouse.

FISHER, Assistant Commissioner :

This is an appeal from the action of the Primary Examiner refusing to dissolve the above-entitled interference on the three following counts:

First. Because no interference in fact exists, the patent and the application involved in the interference being for different inventions and the interference being in words rather than in fact.

Second. Because the prior applicant had no right to make the claim involved in the above interference, it being unsupported by any matter contained in the specification as originally filed or inserted by amendment prior to the issuance of the patent alleged to interfere.

Third. Because the subject matter covered by the applicant's claim was not patentable at the date of filing his application, it being anticipated by certain inventions shown in the British patents to Todd, No. 8,552, dated June 3, 1884, and to Rigg, No. 6,047, dated May 16, 1885, and also by certain United States patents-to wit, the patent to Thayer, No. 183,081, dated October 10, 1876; to Simmons, No. 191,258, dated May 29, 1877; to Lapyre, No. 262,794, dated August 15, 1882; to See, No. 280,247, dated June 26, 1883; to Huson, No. 398,512, dated February 26, 1889, and to Pickles, No. 433,184, dated July 29, 1890; and also by certain printed publications-to wit, Engineering, January 20, 1888, pages 59-61, which will, if it be possible to do so, be produced at the hearing.

The issue is in the words of Westinghouse's seventh claim and includes Duncan's eighth claim. Duncan's attorney insists that while the issue would dominate his claim such claim covers a device specifically different from anything disclosed by Westinghouse, and therefore, in accordance with the decision in Reed v. Landman, (C. D., 1891, 73; 55 O. G., 1275,) no interference in fact exists.

Analyzing Duncan's claim 8, I find it consists of (1) a plurality of extensory paddles, (2) an exterior ring limiting the extension of said paddles, (3) an interior ring attached to and driving said paddles, (4) means for altering the eccentricity of either one of said rings.

Undoubtedly the full equivalent of the first three elements of this claim are found in the Westinghouse device. The last element is set forth in an alternative form. Duncan shows two species of his device. In Figure 1 the variation in the eccentricity is effected by moving the outside ring limiting the extensions of the paddles; in Fig. 2, by moving the inside ring carrying the extensory paddles. Westinghouse shows a device in which, like Duncan's species first above referred to, he varies the eccentricity by moving the outside ring. He discloses substantially the same specific device as is shown in Duncan's Fig. 1.

Under these circumstances this case is distinguished from that of Reed v. Landman, supra, and brings these two cases within the rule stated in that decision as follows:

Of course generic and specific claims, based upon the same structure of invention, conflict because the invention is one and the same, whether generically or specifically stated.

(See also Edison v. Stanley, C. D., 1891, 173; 57 O. G., 273, and Zeitinger v. Reynolds v. McIntire, C. D., 1891, 212; 57 O. G., 1279.)

The fact that Duncan's claim covers either the device shown in Fig. 1 or the device shown in Fig. 2 presents no valid reason for dissolving the interference when Westinghouse discloses and claims a device which is the full equivalent of what is shown in Duncan's Fig. 2.

Westinghouse in his original application and up to the time of the issue of the patent to Duncan had confined his claims to a pump (or motor) of such construction that the eccentricity of the axis of the piston-carrier to the casing might be varied, thus varying the amount of the surface of the paddles exposed to the water. After Duncan's patent had issued Westinghouse introduced his seventh claim, which is as follows:

7. A variable-speed gear consisting of a means for supplying fluid pressure, a rotary eccentric hydraulic motor supplied therefrom, and a device or devices for varying the eccentricity of said motor, substantially as described.

There was no expression in Westinghouse's application up to that time leading up to the use of the term "variable-speed gear" in this claim. The Primary Examiner therefore rejected the claim as covering new matter; but the Board of Examiners-in-Chief on appeal held that there "was no insufficiency of disclosure" and allowed the claim.

Upon the declaration of the present interference Duncan moved to dissolve on the ground that Westinghouse had no right to make the claim; but the Primary Examiner held that the question presented by this motion was res adjudicata, inasmuch as that question had been passed upon by the Board of Examiners-in-Chief in their decision holding that there was a sufficiency of disclosure in Westinghouse's application to warrant the claim. Duncan contends that this action of the Examiner has practically cut off his privilege under Rule 122 to bring up on proper motion Westinghouse's right to make this claim, and asks that the supervisory powers of the Commissioner under section 481, Revised Statutes, giving him the authority to "perform all duties respecting the granting and issuing of patents directed by law," be exercised to give him relief under the peculiar circumstances of this case. Rule 124 contains the following provision:

Decisions on these motions, when appealable, go to the Examiners-in-Chief, and upon such appeals the party only whose claim is affected shall have the right to appear and be heard, unless the question is inter partes.

Motions to dissolve an interference are argued before the Primary Examiner, both parties having the right to appear and be heard. If, from the decision of the Primary Examiner, an appeal is duly taken to the Commissioner both parties have the right to appear and be heard.

When, however, a decision is made on a motion to dissolve which denies the patentability of an applicant's claim, or a motion to dissolve which denies the right of applicant to make the claim, or on a motion involving the merits of the invention, the appeal to the Examiners-in-Chief is usually an ex parte one. It follows that only one side of the question is presented to the Examiners-in-Chief, whereas it would seem to be proper, since the appeal grew out of a contested proceeding, that the appeal itself should be a contested proceeding. Otherwise various complications are liable to result. For instance, a motion to dissolve might be brought on the ground that the issue, couched in the lauguage of the claims of one of the applicants, was not patentable. This motion would be argued before the Primary Examiner, who would hear both parties. If he should decide the issue to be unpatentable, h would dissolve the interference. The party whose claim was thus adjudged to be unpatentable might appeal to the Examiners-in-Chief, who would then listen merely to the applicant's presentation of his case without the additional light that might be afforded by the argu ment of the opposing party. If the decision were in favor of the applicant, the case would then be sent back to the Primary Examiner, who, considering himself bound by the decision of the Examiners-in-Chief, would redeclare the interference, refusing, as a matter of course, a renewed motion to dissolve on the part of the other applicant on the ground that such matter was res adjudicata. If, then, the interference should be heard and decided by the Examiner of Interferences, and on appeal to the Examiners-in-Chief the party who had brought the motions to dissolve should attempt to renew his motion before the Examiners-in-Chief, or to have them insert in their decision a statement directing the attention of the Commissioner to a matter not relating to priority establishing, in their opinion, the fact that a statutory bar existed to the grant of a patent to either of the parties for the claim or claims in interference, (Rule 126,) the request might be refused on the ground that the patentability of the issue had been decided by the Primary Examiner in declaring the interference. One of the parties would, therefore, be prevented from arguing the question whether or not the issue was patentable, and his only remedy would be to petition to the Commissioner to exercise his supervisory authority under sec tion 431 of the Revised Statutes-a proceeding which ought to be dis conraged, and which should never be had except under extraordinary circumstances.

The case stated above is one that actually occurred.

There seems to be an inconsistency in a practice which allows both parties to be heard by the Primary Examiner and by the Commissioner and only one of such parties by the Examiners-in-Chief. It is thought, therefore, that Rule 124 ought to be so construed that both parties could be heard in such cases.

The present case is therefore remanded to the Primary Examiner, who is directed, if a proper motion be brought within twenty days, to hear both parties to this interference on any question which may result in its dissolution, and if appeal shall be taken from his decision it is directed that it be an inter partes appeal.

GRIMMETT v. WILLETT.

Decided December 21, 1893.

66 O. G., 1006.

INTERFERENCE-BROAD AND SUBORDINATE INVENTIONS-RULE 107.

Where two applications are pending concurrently and the claims of one dominate those of the other, an interference should be declared, which interference may be dissolved upon the filing of a proper disclaimer under Rule 107 by the applicant having the narrow claims.

APPEAL on motion.

HARVESTER-ELEVATOR.

Application of John B. Grimmett filed March 28, 1893, No. 467,996. Application of Dallas C. Willett filed March 3, 1893, No. 464,511.

Mr. S. C. Fitzgerald for Grimmett.

Messrs. C. A. Snow & Co. for Willett.

FISHER, Assistant Commissioner:

This is an appeal by Willett from the decision of the Primary Examiner refusing to dissolve the above-entitled interference, it being urged that Willett's claims are specific to his device, and that he has made no claim that Grimmett can make.

The issue is as follows:

In a grain elevator, an upper pair of side bars pivotally hung at one end, a lower pair of side bars pivotally hung beneath the free ends of the upper side bars, au endless apron mounted on each pair of side bars, mechanism for driving the aprons and a pressure device attached to the free ends of each pair of side bars.

Willett's broadest claim is as follows:

1. In a harvester elevator, the combination with the inclined frame, of the upper and lower endless carrier aprons pivoted at different ends within said frame leaving their other ends free to move, and connections between the movable ends of the two aprons to secure an automatic simultaneous adjustment thereof, substantially as set forth.

The "connections between the movable ends of the two aprons to secure an automatic simultaneous adjustment" are not included in the issue, nor are they disclosed by Grimmett. In addition to the independent pressure devices at the free ends of each pair of side bars included in the issue and in Grimmett's claims, Willett also includes the connections between the free ends of the bars. In other words,

Willett's claims are to a species different from anything disclosed by Grimmett, but would, if both applications were allowed, be dominated by Grimmett's claims. Under these circumstances, when both parties have their applications pending at the same time, an interference should unquestionably have been declared. The only question that comes up for determination is whether or not this interference should be dissolved when Willett, the party who has the specific claim, by moving to dissolve, has indicated acquiescence in Grimmett's right to the broad claim.

Rule 107 provides that—

if the interference shall have been declared between an application having a generic claim and one having a subordinate specific claim, the applicant making the specific claim may disclaim the matter in issue, as herein before provided, without canceling his claim. The files and records shall then be returned by the Examiner of luterferences to the Primary Examiner. If the Primary Examiner shall find that the interfering claims stand so related to each other (as generic and specific, respectively,) and that the disclaimer filed is suitable to the case, he shall dissolve the interference; otherwise not.

There are reasons why this rule should be strictly applied in cases like the one under consideration. Suppose, for instance, this interference should be dissolved without requiring Willett to file a disclaimer under Rule 107. There would be nothing to prevent him from immediately filing another application containing Grimmett's broad claim and securing an interference with his application. He would then have the advantage of Grimmett by knowing his dates in his preliminary statement. I think it more conducive to the ends of justice to compel Willett, if he is going to contest for this broad invention at all, to do so under the present interference.

I therefore affirm the decision of the Primary Examiner refusing to dissolve this interference until Willett shall have entered a proper disclaimer under Rule 107.

LEEMAN v. SMITH.

Decided December 29, 1893.

66 O. G., 1307.

INTERFERENCE-SUPERIOR AND SUBORDINATE EMPLOYÉS-ORIGINATOR OF THE INVENTION.

Where the testimony of the superior employé that he made the invention is corroborated by the mechanical engineer of the establishment; where the subordinate employé makes the pattern for the invention of his superior, but announces no claim at the time that he was the originator of it, and where the invention was openly manufactured there without a circumstance or fact ocenrring at the time showing the subordinate to be the inventor, and, still more, where the acts of both of them are more conformable to the probability that the former made the invention, and there is no indisputable fact that is not conformable to this theory, Held that the testimony leads to the conclusion that the superior employé was the originator of the invention.

10693 PAT-2