TREMAIN v. CURTISS.

Decided January 2, 1894.

66 O. G., 1447.

1. INTERFERENCE-APPLICANT VERSUS PATentee-PriorITY TO APPLICANT. Where all the experiments of both parties were conducted in the same shop and were embodied in the same machines, and where the evidence on the part of the applicant is that he disclosed the invention on September 15, 1890, and embodied it in successful operation by October 2 following, and on the part of the patentee that he made sketches of the invention in June or July, 1890, which were not dated and not disclosed until and except by mailing them to his patent agent on October 4, and his assertion that he made them in June or July is without corroboration of a single witness or circumstance and is contrary to his conduct in his efforts through August and early part of September to invent a device like that in the issue, Held that the patentee cannot be given an earlier date than October 4, and consequently judgment of priority must be awarded to the applicant.

2. SAME-COUNTS NOT INVOLVING THE PATENTABLE FEATURE SHOULD NOT BE IN THE ISSUE.

Where the device in the issue consists in certain particular means by which certain valves in the principal machine may be thrown, counts for the combination of the valves and a walking-beam connecting the valves together but omitting a device for operating them, should not have been included in the issue. 3. SAME CLAIMS IN THESE COUNTS DISTINGUISHED IN THIS RESPECT FROM THE CLAIMS IN WEBSTER LOOM COMPANY v. HIGGINS, ETC.

In this respect the claims in these counts are to be distinguished from the claims in the patents discussed in Webster Loom Company v. Higgins, (C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580, 585, and 586,) for the essence of the improvement in this interference is the inode of connection of the valves with the principal machine that is to say, it is the means by which the valves may be thrown. 4. SAME-PATENTABLE COMBINATION-WHAT IS AND WHAT IS NOT.

Where the first advance over an eccentric device for moving the valves in a machine cousisted in connecting the valves by a walking-beam, but such beam was in itself an old device and any one might have incorporated it in the combination, Held that such combination would not, on account of no one having previously used a walking-beam therein, become patentable unless the elements of the combination interacted in the manner set forth in Bates v. Coe, (C. D., 1879, 365; 15 O. G., 337; 98 U. S., 31.)

APPEAL from the Examiners-in-Chief.

STEAM-STAMP.

Application of Charles W. Tremain filed June 19, 1891, No. 396,861. Patent granted Edward W. Curtiss March 31, 1891, No. 449,208.

Mr. T. J. W. Robertson for Tremain.

Mr. Henry A. Seymour for Curtiss.

SEYMOUR, Commissioner:

This is an appeal taken by Tremain from the decision of the Examinersin Chief awarding priority of invention to Curtiss upon the following issue:

1. In a steam-engine, the combination, with two cylinders, of a piston in each cylinder, a valve for each cylinder, a walking-beam or rock-shaft connecting said valves,

and ports for admitting steam between the heads of the valve-chambers and the adjacent ends of the valves for actuating the latter in one direction, substantially as set forth.

2. In a steam-engine, the combination, with two cylinders and pistons therein, of a valve-chest for each cylinder, a piston-valve in each valve-chest, each piston valve having two annular grooves, a rock-shaft connecting said piston-valves, and steamports for admitting steam to the valve-chests near one end of the latter for actuating the valves in one direction, substantially as set forth.

3. In a steam-engine, the combination, with two cylinders and pistons therein, of a valve-chest for each cylinder, two pipes connecting said valve-chests, an inlet pipe communicating with one of said connecting-pipes and an exhaust-pipe communicating with the other connecting-pipe, valves in said valve chests, and a rock-shaft connecting said valves, substantially as set forth.

4. In a steam-engine, the combination, with two cylinders and pistons, of a valvechest for each cylinder, said cylinders being provided with ducts connecting the ends of the cylinders with the valve-chests, and each cylinder being provided with a duet adapted to connect the cylinders and valve-chests in proximity to the upper ends of the latter, and piston-valves in said valve-chests, substantially as set forth. 5. In a steam-engine, the combination, with two cylinders and pistons therein, of valve-chests for said cylinders, piston-valves in said valve-chests, a link connected to each valve, and a rock-shaft pivoted at its center and connected at its ends to said links, substantially as set forth.

6. In a steam-engine, the combination with two cylinders and pistons therein, of a valve-chest for each cylinder, each valve-chest being provided with annular recesses, pipes connecting said valve-chests and communicating with said recesses, a piston-valve in each valve-chest, a rock-shaft connecting said piston-valves, and steam-ports for admitting steam to the valve-chests near one end of the latter for actuating the valves in one direction, substantially as set forth.

Upon the suggestion of Tremain, Curtiss became connected with the Prospective Mining and Machinery Company about November, 1889. In January, 1890, he was elected one of its directors, and soon after. ward its secretary and treasurer. He was by profession a mechanical engineer, but was not practicing his profession, but was acting as a real-estate agent in Portland, Oreg., for a short time prior to his connection with the company.

Tremain, who was by profession an engineer, was at this time president of the company. The company had before that time made single stamp-mills; but Tremain was engaged in devising a double stampmill, for which all parties were seeking an effective valve motion.

At the time when Curtiss became connected with the company the valves one upon each cylinder-were mechanically connected, and were operated by means of cams or eccentrics upon a shaft which was intended to be driven by a small steam-engine working independently of the pistons of the stamp-mill. In the experimental stages this eccentric-shaft was driven by a belt from the main shaft of the machineshop. All the experiments of both parties were conducted in the same shop and were embodied in the same machines, the first containing the complete device being that set up for the Albany Milling aud Mining Company, in Linn county, Oreg., and this was put into successful operation on the 2d day of October, 1890. The first advance over the eccentric-shaft device for moving the valves was upon the suggestion

of Curtiss, about February 18, 1890, and consisted in connecting the two valves by a walking-beam. This in itself is a very old device. Any one might incorporate it in a combination, and the combination would not on that account become patentable, unless the combination were new and the elements of it interacted in the manner set forth in Bates v. Coe, (C. D., 1879, 365; 15 O. G., 337; 98 U. S., 31.)

Counts 3 and 5 of the issue show the walking-beam connecting the valves in combination with the two cylinders of a double-cylinder stampmill; but it should be noticed that each of those counts lacks a device for operating the valves. If the combination described in either of those counts were constructed, the admission of steam would do nothing more than to raise one of the pistons. Neither of those counts, therefore, should have been incorporated in the issue, for a stamp-mill constructed in accordance with either would not and could not deliver a single blow. It is of no consequence, therefore, who was first to conceive of the combination of counts 3 and 5 or of any element in either.

In this respect issues 3 and 5 are to be distinguished from the claims in the patents discussed in Webster Loom Company v. Higgins, (C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580, 585 and 586,) for the essence of the improvement in this interference is the mode of connection with the principal machine-that is to say, it is the means by which the valves may be thrown.

It was then attempted to work the valves thus connected by a walking-beam by a device operated mechanically by collars upon the pistou. rods of the stamps. Both parties devoted themselves to the solution of the problem by such means during the months of June, July, and August, 1890.

About the middle of September, 1890, a double stamp-mill with this mechanical valve motion was completed and shipped to the Albany Milling and Mining Company's mine in Linn county, Oreg., which Tre. main, on the 22d of September, went thither to set up. Before going he disclosed to D. J. McMaster his proposed means for operating the valves by the duct mentioned in all the counts of the issue but the third and fifth. On the same occasion he borrowed from McMaster a ratchet-drill for the purpose, as he says, of drilling this duct through the walls of the cylinder and the steam-chest at the mine. The duct was drilled at the mine under Tremain's direction, and the machine put into successful operation, as aforesaid, by the 2d of October, 1890, and the mechanical device connected with the pistons for moving the valves was discarded.

Curtiss was not present at the Albany Milling and Mining Company's establishment at any of these times; nor is there any suggestion in the record that the making of this duct, or the suggestion that it should be made, was in any manner connected with him.

At a meeting of the directors of the Prospective Mining and Machinery Company, on December 6, 1890, at which both parties and

others were present, this being the first meeting of the directors since Tremain's return from the Albany Milling and Mining Company's works at which Tremain was present, Tremain exhibited drawings showing the invention in all its parts, which Curtiss recognized as embodying all that he claims in this interference issue. Curtiss laid no claim to the invention at that meeting, although without the knowledge of Tremain his application for a patent upon it had been signed and sworn to and was on its way to the Patent Office.

It is clear that Tremain had a definite conception of the invention by the 22d of September, and that by reason of his disclosure to McMaster he could avail himself of a date of conception as early as September 15.

Curtiss made sketches embodying this complete invention on or before October 4, 1890, which are made part of this record as Exhibits E', E, and E3. On that date copies of these drawings were inclosed in a letter to his attorney in Washington. The sketches and letter sent to his attorney are not made parts of the record; but the manuscript first draft of the letter, unsigned, and sketches, not dated, were annexed to Curtiss's deposition, which was taken without the presence of counsel on either side. The sketches in the record do not appear to have been shown to any one until they were produced in evidence. The letter actually sent to the attorney and the sketches inclosed to him are not introduced and no reference was made to them in the record or in the briefs.

If priority could be awarded to Curtiss on this record it must be solely upon the strength of these sketches and Curtiss's statement that he made them in June or July, 1890. On this point there is no corroboration. Turning to the sketches themselves, it appears that one of them is made upon a piece of paper from which two pieces have been cut, either before or after the making of the sketch upon it. I am inclined to think that the drawing was put upon the paper first and the cuttings made afterward, since the paper conforms somewhat to the shape of the drawing put upon it. Exhibit E3 has also been cut after something was put upon it, for two words which occur in the record as descriptive of this device are cut in two, as well as erased. The construction to be given to mutilated papers in the absence of explanation would bear heavily against the party offering them without explanation; but if Curtiss had these papers in his possession and had recently made the sketches when he exhibited a chalk drawing on a board to George Rae it is singular that Curtiss made no reference to such completed sketches on that occasion. It is equally singular that with this full conception of the improvement and with the drawings complete Curtiss continued, as he certainly did continue, through August and the early part of September his efforts to solve a useless problem and to experiment with the mechanical device for moving the valves without making disclosures to any person of the contents of 10693 PAT- -3

those sketches, for the language used in the Rae and Marlitt conversations cannot be considered in any sense a disclosure of definite means for accomplishing any result. By a rule of practice Curtiss is entitled to December 11, 1890, as the date of constructive reduction to practice. He never actually reduced his invention to practice and is in conflict with an inventor who did. The attempt is made to carry back the date of constructive reduction to practice to the date of the application and to the date of the disclosure of the invention to the attorney in such definite form that the application and drawings were prepared from it; but these transactions are nevertheless mere disclosures; nothing more. None of them anticipates the actual machine in successful operation on the 2d of October under Tremain's personal direction. There is nothing on Curtiss's part but his own allegation to show that sketches were in existence earlier than this, and he is without the corroboration on this point of a single witness or a single circumstance. The conduct of Curtiss is against this hypothesis.

The combination, all the elements being old, must be considered as a whole. There is no such thing as joint invention here by reason of the suggestion to make use of the walking-beam, for the obvious reason that the walking-beam is old.

Under all the circumstances of this case I cannot give Curtiss the benefit of an earlier date of conception than that when the undated sketches were mailed to his attorney, October 4, 1890.

The decision of the Examiners-in-Chief is reversed and judgment of priority is awarded to Tremain.

EX PARTE HUNTER.

Decided January 24, 1894.
66 O. G., 1449.

ABANDONMENT-PROPER ACTION-RULE 171.

Where, after final rejection, the applicant replies that the last action of the Office is not understood, Held, that such response is not such as the condition of the case requires. The Office will not scrutinize the record to find a way of saving an application from abandonment that has already been pending for more than eleven years, especially where the art during that period has rapidly developed and where the grant of a patent upon the claims now in the case might be a menace to meritorious and more diligent inventors. ON PETITION.

APPARATUS FOR TELEGRAPHING INTO MOVING RAILWAY TRAINS.

Application of Rudolph M. Hunter filed October 16, 1882, No. 74,364. Mr. R. M. Hunter, pro se.

SEYMOUR, Commissioner:

This is a petition for relief from the action of the Primary Examiner holding this case to have been abandoned by reason of failure to prosete within the prescribed time.