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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 ques. tion 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 varions complications are liable to result. For instance, a motion to dissolve might be brought on the ground that the issue, couched in the language 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, l' 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 argument 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 redeclaro the interference, refusing, as a matter of course, a renewed motion to dissolve on the part of the other applicant on the ground that sach 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 Exam. iners-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 section 431 of the Revised Statutes-a proceeding which onght to be (lis. 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 121 onglit to be so construed that both parties wuld 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 Rulo 107 by the applicant having the narrow claims. APPEAL on motion.
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. $. C. Fitzgerald for Grimmett.
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 antomatic 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 counections 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 Griinmett'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 determinationéis 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 clain avd one having a subordinate specific claim, the applicant making the specific claim may disclaim the matter in isstie, as hereinbefore provided, withont 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 tho interfering claims stand so related to each other as generic and specific, respectively,) and that the disclaimer filed is suitablo 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 disclaiiner under Rule 107. There would be nothing to prevent him from immediately filing another application containing Griminett's broad claim and securing an interference with his application. He would then have the advantage of Grimmett by knowing liis 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 atfirm the decision of the Primary Examiner refusing to dissolve this interference until Willett shall have entered a proper disclaimer under Rule 107.
LEEMAN 0. SMITI.
Decided December 29, 1893.
66 O. G., 1307. INTERFERENCE-SUPERIOR AND SUBORDINATE EMPLOYÉS-ORIGINATOR OF
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 occurring 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.
10093 PAT- -2
APPEAL from the Examiner-in-Chief.
Application of Julius Leeman filed October 22, 1889, No. 327,813. Application of Walter F. Smith filed August 23, 1889, No. 321,724.
Messrs. Fowler & Fouler for Leeman.
The subject matter involved in this interference issue is: 1. An automatic cut-out for electric circuits einboclying a switch which tonds to establish a short circuit, it pin for restraining said switch from such action, and a fusible substance upou which said piu bears for the purpose described.
2. In an incandescent electric lamp, it smuut circuit, a substance of high electrical resistance readily multing or softening, interposed in snid circuit, a movable pin contacting with said substances, and a lever held in contact with said pin and shortcircuiting the lamp by melting or softening said substances, substantially as and for the purpose described.
The Examiners-in-Chief have awarded priority of invention upon this issue to Smith, and Leeman's appeal is taken from the said decision.
This is a question of originality. The Heisler Electric Light Com. pany, of St. Louis, Mo., prior to May, 1889, bad an incandescent-electric-light system, using series lamps. The tubular fusible key cutout was defective, and they were trying to devise a better one. Charles Heisler was president of this company, and Julius Leeman, one of the parties lierein, was a pattern-maker at the Heisler works. About the 3 of May, 1889, Walter S. Smith, the other interferant, came to the works from Philadelphia to examine them with reference to a proposed purchase of the works by the United Gas Improvement Company, of that city. Smith went away and returned about May 15, 1889, when the United Gas Improvement Company took possession of the Heisler Electric Light Works under an agreement of purchase, and from that time Smith was the general manager of the works. At that time Heisler and Leeman made a trial in Sinitli's presence of the defective Heisler cut-out. In June of the same year the cut-out in controversy had been reduced to practice, and about a dozen of them made and tested. Heisler severed his connection with the company before this time and left St. Louis for Europe on the 27th of June, taking one of the cut-outs with him.
Leeman's Exhibit No. 8 and Smith's Exhibit No. 3 are specimens of this complete cut-out, both made at the Heisler works, and are both from this first lot of a dozen made there.
The question is, did Leeman invent this and disclose it to Smith, or did Smith invent it and cause it to be made at the Heisler works with or without a direct disclosure to Leeman? It is clear that a dozen of these cut-outs were made at the Heisler works openly. They were made withont any attempt on the part of any uuder employé to assert any claim to the invention. Leeman made the wooden patterns as part of his regular work at the shop. His alleged reduction to practice, including his Exhibit No. 8, which is his evidence of it, is the regular output of the shop, and this exhibit was taken surreptitiously froin the shop on his leaving.
Leeman kuew that the workmen in the shop made this dozen cutouts, (questions 61 and 62 and answers,) and it nowhere appears that these workmen made them upon any arrangement entered into by Leeman or upon any suggestion that they were making his invention. They were tested at the St. Louis Illumiuating Company's station by Bryan, the foreman at that time, who told Leeman that they all worked well except two, (questions 54 and 55 and answers,) from which it would appear that Leeman was not present at the test—all going to show that the cut-outs went through the regular course of manufacture in the shop, with no suggestiou from any person-certainly none by Leeman—that it was be who made this valuable addition to the system.
If Smith were not the inventor, but had resolved from the start to take the invention from Leeman, some plan of accomplishing such a piracy would have been formed, and it is hard to believe that it would be any part of such a plan that Smith should give orders that would go to Leeman to make the patterns of his own invention, or that Smith would count on Leeman obeying orders to make such patterns for the very purpose of accomplishing a wrong upon himself; but Leeman did make the patterns, not only without claiin to the invention but without any expressions of regret or any assertion that wrong was thus being dove him, even to his own intimate associates iu the shop or among his neighbors at home, to whom this record shows he freely talked about this device.
Louis Schwengeler, a mechanic working in the Heisler shops at the time, and knowing Leeman, was shown this cut-out by Leeman and how he had changed the contact of the pin in the key with the washer; but Leeman did not tell whose idea it was, and when the witness was pressed on this point he replied merely that Leeman said it uow worked
Herman Tobler, a machinist at the Heisler works, was asked the leading question:
Did Julius Leeman ever show you an invention of his in cut-outs, and if so when was this!
To which he answered: Yes; he did.
But although he talked with Leeman at the shop and when they were going home together, and at Bollin's shop, and although Leeman explained to him the invention, and told him that he wanted to make this and that, and that he thought it would work, and showed himn a key containing a movable pin, he knew merely that Leeman worked on these things; but in noue of the conversatious did Leeman distinctly