APPEAL from the Examiner-in-Chief.

ELECTRICAL CUT-OUT.

Application of Julius Leeman filed October 22, 1889, No. 327,843. Application of Walter F. Smith filed August 23, 1889, No. 321,724.

Messrs. Fowler & Fowler for Leeman.

Mr. J. R. Bennett for Smith.

SEYMOUR, Commissioner:

The subject-matter involved in this interference issue is:

1. An automatic cut-out for electric circuits embodying a switch which tends to establish a short circuit, a pin for restraining said switch from such action, and a fusible substance upon which said piu bears for the purpose described.

2. In an incandescent electric lamp, a shunt circuit, a substance of high electrical resistance readily melting or softening, interposed in said 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 Company, of St. Louis, Mo., prior to May, 1889, had 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 herein, was a pattern-maker at the Heisler works. About the 3d 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 Smith's presence of the defec tive 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 without any attempt on the part of any under 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 from the shop on his leaving.

Leeman knew 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 auy arrangement entered into by Leeman or upon any suggestion that they were making his invention. They were tested at the St. Louis Illuminating 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 suggestion from any person-certainly none by Leeman-that it was he 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 claim to the invention but without any expressions of regret or any assertion that wrong was thus being done him, even to his own intimate associates in 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 now worked very well.

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 him a key containing a movable pin, he knew merely that Leeman worked on these things; but in none of the conversatious did Leeman distinctly

lay claim to the invention, nor did he say that the company or Smith was taking anything from him, although at the time of these conversations at least a dozen had been made by the company and tested and treated throughout as its own.

Emil Senniger's and Charles T. Bothe's testimony is immaterial.

August Lenge, a mechanic in the shop, who had been there three years, knew Leeman and knew he worked on the wooden patterns. He himself made the handle for the cut-out in question, receiving his directions from Mr. Bremer. He did not know whose invention it was and had heard only that it was invented by the principals.

Charles Kaiser, a mechanic who had been at the shop for five years, understood that the invention was Mr. Heisler's. He helped Mr. Beck work on these cut-outs.

Conrad Beck, a mechanic there, says that Leeman never laid claim to this cut-out until a few days before his evidence was taken.

Louis Eisenhardt, the keeper of a boarding-house and bar, apparently saw this invention at Bollin's shop. This was, as he thinks, two days after the Concordia picnic, which is shown elsewhere to have been on Sunday, May 26, 1889, on which invention Leeman said that he would like to get a patent; that he had made it and would like to get a patent on it. He knows nothing about electricity. It would appear that the time when Leeman showed him this model might have been after he left the Heisler works. (Question 73 and answer.) He saw Leeman many times and talked with him; but at no time does it appear that Leeman claimed to him that he had an invention which was being taken away from him at the Heisler works.

John David Bollin, a machinist, knew Leeman and saw him at Bollin's shop, and saw a key like that of the invention, of which Leeman said he was going to take a patent out on it. Bollin saw him show it to Tobler, and possibly to Leo Werner, and heard him explain the invention. He says this was in May, 1889. The witness is silent as to any claim by Leeman that the invention was his and was being taken from him by the Heisler Company or by anybody connected with it.

Leeman says that he did not claim the invention to Smith for fear of being discharged. He may have been in such fear; but if so it is astonishing that no word fell from his lips to any of these intimates showing that he was being wrongfully deprived of an invention that was his.

Again, Leeman had great confidence in Charles Heisler, for he says that he had it in mind to offer his claimed invention to him. Whether he had any invention to offer is the question to be decided here; but whether he had or not his willingness to trust Heisler is clear. But if Leeman, at the time of the unsuccessful test, when Smith and Heisler were present, in May, 1889, had a full general conception of an electric cut-out in 1886, passing by for the time his preliminary statement of first conception in May, 1889, it is strange that he did not make the suggestion to Heisler that he had the solution of the unfortunate diffi

culty into which the company and Heisler personally were thrown by the bad failure of the test upon which the negotiations were hanging for the sale of the plant and the system.

In Atlantic Works v. Brady (C. D., 1883, 214; 23 O. G., 1330; 107 U. S., 192, 203) the Court, commenting upon the claim of Brady to an improvement which had been disclosed to him by General McAlester some time before, and upon which Brady had taken out a patent, says:

The witnesses who speak of his conversations and sketches in December, 1865, and early in 1866, as communicated to them with the utmost freedom, with no apparent object so far as they were concerned, must either be mistaken as to the time or as to the devices described. Interested as he is in the result of the suit his own testimony cannot be allowed to prevail against a course of conduct so utterly at variance with it. It may be true; but we cannot give it effect against what he himself did and did not do without disregarding the ordinary laws that govern human conduct.

The sketches shown by Leeman and claimed to have been made in 1886, being without date, together with his testimony upon them, must be laid out of the case as contradicting his preliminary statement.

Nothing can be inferred from the fact that Smith sent for Leeman, offered to employ him again, asked him what he wanted, and spoke of compromising and settling their differences, for the law favors compromises and does not permit statements in such conferences to be weighed against the party making them.

I have examined this record, as hereinbefore shown, upon the question whether in the time of these transactions Leeman's acts and words were those of a wronged inventor, and this in order to get light upon the question whether he was the inventor of this issue. Leeman's case, as this record presents it, requires him to prove also his connection with this regular manufacture in the shop. It is not claimed by him that this regular and open manufacture of the invention came about by his disclosures to some subordinate and through him to the managers. As the evidence goes his disclosure must have been directly to Charles Heisler or directly to Smith. There is entire failure to show any disclosure by Leeman to Heisler, from which this manufacture proceeded. Is there any showing of a disclosure by Leeman to Smith? And, further, such disclosure to Smith, if there be any in this record, must be prior to this reduction to practice through the regular manufacture in the shop, or else this reduction to practice and this manufacture did not proceed from such disclosure. That essential to Leeman's success is determined against him by Leeman himself. Leeman says that he got acquainted with Smith after that dozen were completed, (question 76 and answer,) and therefore they were completed before and without any disclosure of invention by Leeman to Smith.

On the other hand, it positively appears that this much-sought device took form coincidently with the coming of Smith to the works. Leeman testifies that he did not tell Smith that it was his own invention. (Page 149.) Smith testifies that about May 16, 1889, he explained it to

Bremer and gave directions to have it made and then went to Kansas City, leaving about the 20th of May; that he returned soon after and saw the completed invention. Bremer, the electrical and mechanical engineer at the Heisler works, testifies that Smith, upon seeing the test of the defective cut-out, explained its defects and pointed out the cause as being too great a quantity of material to be fused, requir ing too much time, with a liability to set the material on fire, and that the action had to be in a smaller part, and that it would be advisable that the air should be excluded to prevent any burning or smoking; that he then explained a device like the invention in controversy and made sketches. Bremer further testifies that he had a model made in accordance with these instructions while Smith was away in Kansas City, and that Conrad Beck made it.

The verbal testimony of the witnesses is conflicting and confusing in an unusual degree; but those facts that are beyond the control of witnesses and those about which there is no dispute constitute the chief strength of Smith's case. Charles Heisler, when talked to by Leeman and shown keys like that in Exhibit No. 8 or Smith's Exhibit No. 3, acted as though the whole thing belonged to the company, as Leeman testifies, (page 129;) but this action of Heisler was after-Smith says and Bremer says-orders had been given by Smith that the cut-outs should be made, and most probably after the cut-outs were made in the regular course of things in the shop. It was also after Heisler had parted with his interests in the company, when his conduct as well as his words would be likely to be little influenced by his interests. It must, therefore, be considered that Heisler's actions, as the events were transpiring, he having been present at the test of the unsucessful cut out, and whatever took place between Smith and Leeman at the time when Leeman now says that he disclosed the invention to Smith are strong evidence in favor of Smith and against Leeman.

Heisler says that he has no knowledge of Leeman's having made any invention or inventions relating to electrical science or appliances or apparatus. At the time that the test of the unsucessful cut-out was made Heisler says that Smith expressed the opinion that the difficul ties which we met with in our experiments or tests could be removed. It is not to be denied that there are also many difficulties in the way of Smith. His unproduced sketch is one. Leeman's rebuttal testimony, that the leaves from the record of tests at the Illuminating Company's station had been removed; that they showed the test to have been made later than Smith claims, and that the invention was therein put down to the credit of Leeman, are such circumstances; but on this matter Smith promptly made a motion before the then Commissioner for the right to take surrebuttal testimony on this point, which was denied upon the ground that it would not be material. The circumstances showing Smith to be the original inventor do not depend upon the date of that test; nor could that record, whether giving credit to