Reynolds, then owned by the Crane Elevator Company, its rival. They were advised by counsel that sheaves in the bottom of the shaft, having a horizontal motion and connected with the stopping and starting mechanism, would effect the desired result. At an interview between Reynolds, Wells, and the counselor of the company on May 11, 1891, it was thought by all parties that the conception of such a device in sev eral forms was complete. Reynolds made the sketches for it and handed them to A. Columbus Smith, the draftsman of the company, who thereupon made enlarged drawings of them, which were signed by Reynolds as inventor and witnessed by Wells and Smith, and these enlarged drawings were handed to Wells for safe keeping. The next day Reynolds went to Cincinnati and New York, and in looking over old sketch-books found a sketch having features shown in the conception now under consideration. He made a copy of it and a carbon duplicate in a copy sketch-book, and sent the direct copy in a letter to Wells, stating that it was simply another way of accomplishing the same result. Wells gave this copy to the draftsman, Smith, informing Reynolds by letter that he had done so, saying that Smith would begin work the next day upon the new drawing showing that application of the device.

Wells was called on to produce all the sketches that had been made by Reynolds and the enlarged drawings, and he was bound to produce as the best evidence in his own behalf the sketches which he himself claimed to have made before this time of the same device, if he could; but he failed to produce any of them. The record traces all these papers to the hands of Wells or those of the company of which he was the general manager. Some of them were not his. As custodian there was at least some obligation upon him to preserve them. As a witness under a subpœna duces tecum he was bound to produce those called for if he could. As a party in this interference he was bound to account for their loss or on failure to do so it must be held that their contents would tell against him.

In April, 1891, Wells went to Denver respecting an elevator contract of importance, and he testifies to having made sketches of this device prior to this time, and at Denver, and on his return; that he showed sketches to Beidler, the president of his company, and that he explained the devices from such sketches to him. Soon afterward, but after the 11th of May, Wells handed sketches of this device to A. Columbus Smith, who made from them the Patent Office drawings for Wells, made parts of his applications for patents, filed June 13, 1891, and which bear date May 28 and June 11, 1891, respectively, upon which the patents in interference issued August 18, 1891. These steps were not known to Reynolds; nor did he know that Wells claimed the device as his own until a few days after the publication of the claims of Wells's patent in the OFFICIAL GAZETTE of August 18, 1891. He then said to Wells:

Where do I come in in that patent?

He laughingly replied:

That is all right,

to which Reynolds answered in an off-hand way:

I do not know whether it is or not.

Reynolds wrote to a patron of his employer, in the course of negotia tions for business in their behalf, the following letter:

Capt. Fred Pabst, Milwaukee, Wis.

CHICAGO, August 28, 1891.

DEAR SIR: When I was in your office a few days since, the question was raised by your people as to the rights of the Standard Elevator Company to place an operating lever in its elevator-cars.

I take pleasure in inclosing herewith a patent granted to our Mr. Wells for the latest and best lever device yet brought out. This patent has been granted by the United States Government, with the knowledge fresh in mind of all of the recent controversies by the different elevator manufacturers before the Patent Office in relation to lever devices.

I hope this patent will be considered an answer to the question whether or not the Standard Company have the right to use a lever in the cars.

Yours truly,

GEO. R. REYNOLDS,

Chief Engineer.

Reynolds afterward, in November, prepared to have drawings made to obtain patents upon these devices, and consulted the counselor of the company. The counselor and Mr. Wells persuaded him not to do so. He took no further steps until the following February, when he prepared and filed the application now in interference.

In addition to the foregoing facts, about which the proof is clear, the record presents contradictory testimony upon the question whether the conception of the device was Reynolds's or Wells's. Recurring now to the fact that, by whomsoever made, the conception was complete upon the 11th of May, 1891, it is clear that Wells, on the 22d of May, only eleven days later, had before him a sketch made by Reynolds, which he says he clearly understood at the time, embodying what was then apparent to him as a modification of this device. By Wells's statement, (Record, p. 51,) three or four weeks before his applications for patents were completed, (and they bear date May 28 and June 11,) he had ordered work begun upon his drawings and had them ready so soon afterward that he was annoyed at the delay in the preparation of the speci fications. He must, therefore, have been at work in the preparation of these drawings before and at the time when the Reynolds sketch from New York came to his attention by mail, and with equal certainty he must have begun work on his Patent Office drawings very soon after the interview of May 11. I cannot believe that he was at work in the preparation of Patent Office drawings for this device on the very day when he signed enlarged drawings embodying a modification of it as a witness to the recorded fact that Reynolds was its inventor.

In addition to these improbabilities, notice must be taken of the defective recollection of Wells respecting the New York sketch, his want of candor as a witness, and his failure to produce the sketches, drawings, and letter which he received.

The contents of the sketches claimed to have been made by Wells in April, 1891, are described in too general terms to satisfy the mind. There is little more in the evidence respecting them than the statement that they contained the device; but this will not do. But were this secondary evidence definite and precise it should not be considered in the absence of a much more vigorous attempt to trace the sketches themselves from hand to hand, to ascertain who last saw them, from those who had them, and were they produced it must be held that, so far as they contradict the preliminary statement that the first sketches were made in May, they could not be considered. The occasion for preserving these preliminary sketches was apparent almost from the day they were made.

Reynolds was the originator of this device.

Passing now to the question of diligence, it is seen that Reynolds's application was not made until the February following his conception, and more than five months after he knew Wells had obtained patents for the invention. Wells was his superior officer in the company, was adverse to him in interest in this question, had already obtained his patents, and, seeing that half of this delay was due to the persuasions of Wells, it must be considered under these somewhat adverse circumstances that Reynolds has not incurred the penalties of negligence.

The question raised by the Pabst letter of an after recognition of Wells as the inventor of the device by Reynolds, if the letter or the conversation with Mr. Leiter will bear that construction, I lay out of this case, except so far as it should receive criticism and consideration as bearing upon the question of originality, and this has been decided in favor of Reynolds with full consideration of that element. So far as that letter and the conversation with Mr. Leiter are claimed to constitute an estoppel, they operate upon the question of the equitable title to the patent when issued to the original inventor-a matter not before me for consideration.

The original conception of the lever device, with movable sheaves at the bottom of the shaft, connected with the valve and enabling it to be operated by the lever in the cab, belongs to Reynolds and is secured to him by an unexpired patent dated May 5, 1885. Whether patentable invention inheres in the device presented by this record as a substitute for the features of the fundamental patent was discussed before me upon my request. That question is now referred to the Primary Examiner, to whom the Reynolds application is remanded for reconsideration. The decision of the Examiner of Interferences and of the Examinersin-Chief is reversed.

THOMSON AND UNBEHEND v. HISLEY.

Decided February 3, 1894.

66 O. G., 1596.

1. INTERFERENCE-MOTION To Dissolve-REFUSAL TO TRANSMIT-PUBLic Use. Where a patentee moved to dissolve upon the ground that public use was shown by the preliminary statement of the applicant. Held that the Examiner of Interferences properly refused to transmit the motion to the Primary Examiner. 2. SAME-SAme-General RULE.

An interference should not be stopped to allow a party "to try to create a bar upon the basis of a disclosure of the interference proceedings. The rule provides only for the use of an already complete bar-a bar indepcudent of the interference proceedings."

3. SAME-SAME.

Decision reversed.

APPEAL on motion.

CLASP.

Application of Judson L. Thomson and Jacob J. Unbelend filed February 13, 1893, No. 462,088. Patent granted Stephen T. Hisley May 5, 1891, No. 451,482.

Messrs. Hey, Wilkinson & Parsons for Thomson and Unbehend.
Mr. C. H. Duell for Hisley.

FISHER, Assistant Commissioner:

This is an appeal taken from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve by the patentee upon the ground that the bar of public use is set up by the preliminary statement of the applicants, Thomson and Unbehend.

The clause of the statement said to show public use is explained by the attorney under oath, who denies two years' public use or sale. An affidavit of the applicants would have been more in point; but the substitute furnished serves to indicate that a mere statement, even in a sworn paper, is not always conclusive.

In view of the fact that this question is frequently brought before the Office and in view of the fact that opposing precedents are found by applicants in the old practice it is deemed expedient to collect the decisions which govern the present practice, which rests upon the general rule that the citing of the bar of public use is not an adequate reason for dissolving an interference.

The cases in point cited by applicant are nearly a quarter of a century old, and since they were decided the Office has dealt with a much larger number of applications than had been presented in all the preceding eighty years, and has been forced to a different conclusion by the tests of practice and experience, as is evidenced by the deci sions hereinafter quoted, which are divided into three classes: first, where the Examiner of Interferences refused to transmit the motion; second, where the motion was transmitted and denied by the Primary

Examiner; third, where a petition or protest brought up the question collaterally. The cases of the first class are, of course directly in point, while those of the second and third would alone establish the propriety of the action of the Examiner of Interferences.

(1.) Instances of refusal of the Examiner of Interferences to transmit motion to dissolve upon the ground of public use.

In Hawkins v. Michle (32 MS. Dec., 184) the motion was brought three months after approval of the preliminary statements. The motion was refused, however, upon the broad grounds of Pohlman v. Bowen and Larned, infra.

In Holton and Malsch v. Merrow (41 MS. Dec., 457) the motion was brought after judgment on record. In that case the Commissioner said that "patentability" in present Rule 122 had never been construed to

cover

that absence of title to a patent which exists when the thing claimed in the application has been in public use or on sale for more than two years, and it is the established practice of the Office not to dissolve an interference in order to investigate the question of public use.

And the motion was denied, the Commissioner stating that the question of public use could be left to the Office in supplemental ex parte proceedings.

In Cook v. Leach (42 MS. Dec., 370) the motion was made after Cook's testimony-in-chief had been taken; but in that case time was not of the essence of the objection. It was therein stated that—

the motions to dissolve contemplated by Rule 122 are not those based upon grounds arising out of the testimony taken upon the question of priority, but upon grounds which appear from the record to have existed before that time. Whatever appears incidentally from the testimony in bar of the right of a party to a patent is, under the well-established practice of the Office, not to be considered in a motion to dissolve, but the interference itself-that is, the various tribunals passing upon the question of priority are required to indicate to the Commissioner the existence of such a bar, so that when the case comes to him in due course he may either remand it to the Primary Examiner before judgment of priority by him, or he may wait until after such judgment and then refer the matter to the Examiner. (Rule 126.)

The general practice of the Commissioner is, however, to defer consideration of the question of patentability until after judgment of priority has been rendered.

In Chinnock v. Edison v. Wheeler, (46 MS. Dec., 398,) the facts upon which the allegation of public use was based were developed during the testimony of one of the appilcants, while the motion was brought by Wheeler, the patentee, agreeing in this circumstance with the present case. The Commissioner refused to dissolve, and gave as one reason that there were two applicants, and that to bar out Chinnock might leave the road clear to Edison, who, perhaps, might not be earlier than the debarred applicant.

(2.) Instances of refusal to dissolve after transmission by the Examiner of Interferences.

In Pohlman v. Bowen and Larned (31 MS. Dec., 219) it was distinctly held that public use cannot be a ground for dissolving an interference.