author: GIBSON, District Judge.

text:
    BANKERS’ LIFE CO. v. EBBERT et al.
    No. 2200.
    District Court, W. D. Pennsylvania.

      Sept. 7, 1928.

    Smith, Buchanan, Scott & Gordon and Paul G. Rodewald, all of Pittsburgh, Pa., and R. B. Alberson and J. P. Lorentzen, both of Des Moines, Iowa, for plaintiff.
    Dalzell, Fisher & Dalzell, of Pittsburgh, Pa., for defendant Lilly B. Ebbert.
    Weil, Christy & Weil, of Pittsburgh, Pa., for defendant Gertrude Ebbert.
   GIBSON, District Judge.

One of the defendants above named, Gertrude Ebbert, has moved to dismiss the bill of interpleader for want of jurisdiction.

The facts disclosed by the bill are substantially as follows:

In 1919, the plaintiff issued to one Raymond Ebbert, now deceased, a policy of life insurance wherein the right to change the beneficiary was reserved to the insured. In the policy it was provided that the right of revocation of beneficiary should be exercised .“by filing written notice thereof at the Home Office of the Company accompanied by the poliey for suitable indorsement thereon.” It was further provided that “such change shall take effeet when indorsed on the Poliey by the Company and not before.” The beneficiary named in the poliey at its issuance was the defendant Gertrude Ebbert, the wife of the insured.

On March 23,1928, the insured, Raymond Ebbert, upon a form supplied by the company, changed the beneficiary in said poliey to Lilly B. Ebbert, his mother. This change was not noted upon the poliey by the plaintiff company, as the poliey was not submitted to it with the order for the change. Subsequently Raymond Ebbert made an affidavit to the effeet that the poliey was in the possession of his wife, Gertrude Ebbert, who, he alleged, had theretofore deserted him. On May 17, 1928, Raymond Ebbert died within the Western district of Pennsylvania, and on June 13,1928, the plaintiff filed its bill of in-. terpleader in this district, wherein the defendant Lilly B. Ebbert resides, under authority claimed by the Act of May 8, 1926, 44 Stat. 416 (28 USCA § 41 (26), and note. Thereafter the defendant Gertrude Ebbert, who is a resident of Ohio, moved to dismiss said bill of interpleader on account of the alleged lack of jurisdiction of this' court.

Counsel for Gertrude Ebbert rely upon the following portion of the Act of May 8, 1926, to sustain their motion to dismiss: “In ease the policy or certificate is drawn payable to a beneficiary or beneficiaries and there has been no such assignment as aforesaid the jurisdiction shall he in the district court of the district in whieh the beneficiary or beneficiaries or their personal representatives reside. In ease there are claimants of sueh money or property, or in ease there are beneficiaries under any such bond or policy resident in more districts than one, then jurisdiction shall be in the district court in any district in which a beneficiary or the personal representative of a claimant or a deceased claimant or beneficiary resides.” (28 USCA § 41 (26).

They assert that Gertrude Ebbert is the beneficiary named in the poliey, and that the quoted portion of the act definitely determines the place of her residence as the district within whieh the interpleader may be filed. On the other hand, the plaintiff contends, first, that Lilly B. Ebbert is the beneficiary contemplated by the quoted portion of the act; and, second, that the Act of May 8, 1926, properly interpreted, confers jurisdiction of an interpleader filed in the District Court of the judicial district wherein resides any claimant under the poliey.

It is true, as claimed by counsel for Gertrude Ebbert, that jurisdiction of the inter-pleader contemplated by the statute exists only by virtue of the statute. Conceding this, we differ with counsel in their interpretation of the grant of jurisdiction, although admitting that the language used, considered by itself, furnishes foundation for their claim. The quoted sentence, it seems to us, when viewed in the light of the history of the legislation and the intentions of Congress, as shown by an examination of the entire act, does not eonfine the jurisdiction to the district of the named beneficiary in the poliey as opposed to any bona fide claimant. The intention was, we think, to place all claimants of the insurance fund upon an equal footing. It was so held by Judge Atwell in Kansas City Life Ins. Co. v. Adamson et al. (D. C.) 24 F.(2d) 107.

Being of the opinion that the second of the plaintiff’s contentions is correct, and that the act in question permits an insurance company to file its bill of interpleader in either the district of the named beneficiary or that of any bona fide claimant, wé are not called upon, in this preliminary stage of the action, to pass upon plaintiff’s contention that Lilly B. Ebbert is the actual beneficiary under the poliey.

The motion to dismiss must be denied.


source: Caselaw Access Project

author: WOODWARD, District Judge.

license: Public Domain

text:
    PORCELAIN TILE CO. v. CHAMBERLIN et al. (two cases).
    Nos. 9676, 10064.
    District Court, N. D. Illinois, E. D.
    Feb. 26, 1931.
    Chindahl, Parker & Carlson, of Chicago, Ill., for plaintiff.
    Wilkinson, Huxley, Byron & Knight, of Chicago, Ill. (James P. Hume and Henry Huxley, both of Chicago, Ill., of counsel), for defendants.
   WOODWARD, District Judge.

The sole question presented by defendant’s motion to strike out certain portions of plaintiff’s bill is that of the jurisdiction of this court.

In each ease both plaintiffs and defendants are residents of Illinois. Jurisdiction is invoked on the ground that the suits arise under the patent laws.

The suits charge patent infringement. In each suit the plaintiff charges (1) as a separate and distinct cause of action, and (2) in aggravation of damages of the alleged infringement, that the defendants are guilty of acts of unfair competition.

In No. 9676 the allegation is made that the defendant Chamberlin either individually, or through a corporation controlled by him, by contract with the plaintiff, was the exclusive sales agent or distributor for Cook county, Ill., for the patented article. Under the contract, large quantities of the patented article were delivered to the defendant for which the defendant did not account for in the usual and regular manner, but, for deceptive purposes, caused their value to be charged to the operating expenses of defendants’ corporation.

In No. 10064 the allegation is made that the defendant was guilty of fraud and deceit, in that he trespassed on plaintiff’s salesrooms and exhibited samples of plaintiff’s patented articles to his prospective customers, and represented that they were the samples of the articles of the defendants.

In the absence of diversity of citizenship, the federal court is without jurisdiction of an action for unfair competition. Kasch v. Cliett (C. C. A. 297 F. 169; W. F. Bums Co. v. Automatic Recording Safe Co. (C. C. A.) 241 P. 472.

But, in a suit in which the jurisdiction is involved under the patent or other laws of the United States, acts of unfair competition may be considered, even where there is no diversity of citizenship, if such acts inhere in, and are an indivisible part of, the cause of action. In such case acts of unfair competition “are aggravations of the infringement.” Ludwigs v. Payson Mfg. Co. (C. C. A.) 206 P. 60, 65; W. P. Burns v. Automatic Recording Safe Co. (C. C. A.) 241 F. 472.

The plaintiff contends that the decisions in this circuit (Payson Mfg. Co. v. Ludwigs [C. C. A.] 206 P. 60; Farmers Handy Wagon Co. v. Beaver Silo & Box Mfg. Co. [C. C. A.] 236 P. 731; W. P. Burns v. Automatic Recording Safe Co. [C. C. A.] 241 P. 472) support the proposition that the court, having properly acquired jurisdiction in a patent suit, where no diversity of citizenship is involved, may retain jurisdiction and grant relief for acts of unfair competition, if the court finds the patent to be valid and infringed, even though such acts are separate and disconnected from the acts of infringement and of themselves constitute an independent cause of action. The decisions in" this circuit do not go to the extent contended for by plaintiff. As far as the decisions in this circuit above cited have gone is to hold that, no diversity of citizenship being involved, where the unfair acts complained of were the unnecessary and deceptive copying of plaintiff’s product, then the court, as a part of the subject-matter of the litigation, has jurisdiction, if the patent is valid and has been infringed, to award damages for such unfair competition. No ease has been cited where the Court.of Appeals has held that, no diversity of citizenship being involved, the court has jurisdiction of an independent cause of action based upon unfair •competition. The court cannot extend its own. jurisdiction. So to hold would be to assume jurisdiction of matters wholly outside the patent laws. Where no diversity of citizenship is involved, the jurisdiction of this court in a patent case is restricted to such questions as arise under the patent laws.

The acts of unfair competition alleged in the respective bills, and challenged by the motions to strike, are separate and distinct causes of action, not arising under the patent laws, and, there being no diversity of citizenship, wholly without the jurisdiction of this court.

The orders will be:

In No. 9676: Motion of defendant to strike out paragraphs 7, 8, 12, 13, and 14, and a part of paragraph 9 of plaintiff’s bill allowed. Exception by plaintiff.

In No. 10064: Motion of defendant to strike out paragraph 10 of plaintiff’s bill allowed. Exception by plaintiff.


author: AVIS, District Judge.

text:
    PEPSODENT CO. v. FERGUSSON.
    No. 4142.
    District Court, D. New Jersey.
    Dec. 31, 1930.
    Backes & Backes, of Trenton, N. J., and Edward S. Rogers and Allen M. Reed, both of Chicago, Ill., for complainant.
    Felix & Felix, of Philadelphia, Pa., for defendant.
   AVIS, District Judge.

Plaintiff, the company manufacturing and marketing a tooth paste, known as “Pepsodent,” files its bill of complaint against the defendant, alleging the defendant is manufacturing and selling a tooth paste which it calls “Milk of Magnesia Papsinated Tooth Paste,” which plaintiff alleges is an infringement of its product because of the name used, the wording, coloring, and style of the package in which the- product is marketed, and also the tube which contains the paste. Plaintiff prays for an injunction restraining the defendant, ultimately and during the pendency of this suit, generally from the use of the word “Papsinated,” or any tube or ear-ton, identical with or like the tube or carton in which plaintiff markets its product; or from doing any act or thing calculated to induce the belief that defendant’s product is the product of the plaintiff; and also for an accounting.

The present motion is for a preliminary injunction pending the final disposition of the suit. The affidavits upon which the motion is made, and which are annexed to the bill of complaint, in my opinion, show in a prima facie way that the plaintiff has adopted and trade-marked the word it uses, and the containers in which it dispenses its product, and that the defendant is marketing a product to be used for the same purpose as “Pepsodent,” although the paste itself is of a different color and has a different action. Plaintiff claims that the tube in which the paste is contained is so similar to the tube used by the Pepsodent Company as to deceive the purchasing public, and that the package or carton in which- the tube is sold so closely resembles the package or carton which the plaintiff uses as to work a deception upon the purchasing public and be injurious to plaintiff in the conduct of its business.

The court has had the opportunity of examining the cartons used by both parties, plaintiff and defendant, and, although the word “Papsinated” is considerably different from the word “Pepsodent,” yet the method of placing this word upon the outside of the carton is almost identical with the method used by the plaintiff on its cartons. Particularly is this so with relation to the scoring above .and below the name. The scoring below the word “Papsinated” begins at the tail of the letter “p” which is the third letter of both words, and continues to the end of the word in the same way as used by plaintiff, and the scoring above the name ends at the letter “d” on the carton used by the defendant, as it does on the carton used by the plaintiff.

It is true that, when plaeed side by side, the color of the two packages is considerably unlike, but when seen separately the similarity is so great, in my opinion, that the purchasing publie could be easily deceived.

I am satisfied that the defendant should be restrained during the pendency -of the suit from marketing its product in the carton which it has heretofore used, and such restraint will be issued, although, at the present time and on the preliminary hearing with the facts submitted, I am not convinced that, a pendente lite restraint should be issued with relation to the tube or product.


author: BLAND, Associate Judge.

text:
    In re HORNSEY.
    Patent Appeal No. 2687.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    Edward W. Shepard, of Washington, D. C. (Usina & Rauber, of New York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

The application in this appeal relates to a process of reducing iron oxide materials to metallic iron, and involves the consideration of three claims, 2, 56 and 57, of which claim 2 is illustrative and reads as follows: “2. The process of reducing iron oxide materials to metallic iron without melting, which consists in first heating the ore in a state of division in an internally heated inclined rotating cylinder to approximately the temperature of reaction, in discharging the heated ore into a second, reducing, inclined rotating cylinder, introducing fuel into said second cylinder, and also introducing solid carbonaceous material in a state of division into the second cylinder near the inlet end thereof at a place whereby said material is entrained with the ore and moves therewith and whereby nascent gases are liberated in situ, passing the gases-from the second cylinder into the first and burning them to effect the internal heating referred to, and in cooling the product of reduction, at all stages excluding all air save that actually required for the combustion.” - •

The rejection of the three claims by the Examiner was affirmed by the Board of Appeals of the United States Patent Office, and, from the decision of the latter, appeal was taken to this court.

In the Board’s decision the following references were listed : Jones, 981,280, Januarj 10, 1911; Rendall, 1,053,436, February 18, 1913; Alford, 1,097,156, May 19, 1914; Jones, 1,174,729, March 7, 1916; Stansfield, 1,403,576, January 17, 1922. Rendall, Alford, and Stansfield were relied upon.

In the method disclosed the ore is first heated in a state of division in an internally heated, inclined, rotary cylinder to approximately the temperature of reduction. The heated ore is then discharged into a second reducing, inclined, rotating cylinder into which last-named cylinder is introduced fuel by a pipe, and also into the last-named cylinder is introduced solid carbonaceous material in a state of division, which material is coal or coke finely pulverized. The gases generated in the second cylinder during the reducing process are passed upwardly through a chute into the first cylinder, and these gases are then mixed with additional fuel and are burned to effect the internal heating of the first cylinder. The product of the reduction is cooled in a third cylinder. During the process all air is excluded save that which is necessary for combustion.

The claims were rejected on the patent to Rendall for the reason that no patentable invention would be involved in substituting a solid carbonaceous reducing agent for “that part of the gaseous reducing agent in Rendall, the solid reducing agent being well known and old in the art as shown by Alford and Stansfield. The claims were also rejected on the ground that there was no invention in substituting the reduction of Stansfield in the process of Rendall.

Appellant admits in liis brief that “the separate elements of which this combination is composed may be separately found in diverse patents,” and cleverly and earnestly argues that this fact constitutes no true anticipation of the combination itself. He argues at length that the substitution which would have to be made by taking one element from one patent and putting it into another could not be made in a successfully operating process, since no desirable results would obtain, and discusses, in detail and with obvious familiarity with the subject, the technical phases of the process under consideration.

The process necessarily involves a consideration of highly technical matters. The Board and the Examiner have given these matters careful consideration, and, notwithstanding appellant’s exhaustive treatment of the subject, we are not convinced that the Board’s conclusions are wrong. In matters appealed here from the Patent Office, which involve the findings of the experts of the Office on highly technical questions, such findings are given great weight and are only rejected when it is clear that they are erroneous." In re Beswick, 16 App. D. C. 345; In re Demarest, 38 F. (2d) 895, 17 C. C. P. A. 904; In re Wietzel et al., 39 F.(2d) 669, 17 C. C. P. A. 1079.

Since it is admitted that all of the elements of the process are old, we are not prepared to say, contrary to the decision of the Board, that invention resulted from the combination of these old elements. The Board sustained the Examiner in ■ holding that “there is no invention in substituting the reduction step of Stansfield in the process of Rendall,” and the Board states further that: “We see no reason why the Stansfield patent would not suggest the use of-solid carbonaceous material as a substitute for the hydrocarbon reducing gas of Rendall if it were found to be of any advantage.” And also: “ * * * if Stansfield were willing to sacrifice the advantage of effecting partial reduction of his.ore in the reducing cylinder as described on page 1, lines 106 to 107, there is no reason why he should not use Rendall’s direct preheating system of feeding his carbonaceous material to the reducing cylinder as Rendall does his reducing gas. This mode of feeding is also disclosed in Alford though he uses indirect heating for both cylinders.”

With the above-quoted conclusions we are not-prepared to disagree.

In arguing that, notwithstanding the fact that the separate elements in his process may be'separately found in other patents, this is no true anticipation, appellant relies upon Frederick Co. v. Sanford Riley Co. (C. C. A.) 287 F. 495; In re Champeau, 34 F.(2d) 1012, 1013, 17 C. C. P. A. 568; and Line Material Co. v. Brady Elec. & Mfg. Co. (D. C.) 299 F. 822, 824. Without discussing these authorities at length, we call attention to a quotation from In re Champeau, supra: “But, even though there be nothing novel in the elements combined, if applicant here has, by a combination of known elements, accomplished a new and usefeul result, he is entitled to his patent.” [Italics ours.]

In Re Appelburg et al., 37 F.(2d) 620, 621, 17 C. C. P. A. 820, we said the following: “Where a given number of elements, which produce a known result when functioning separately, is assembled, and the assembly produces only a combination of the results found in the individual units, no invention is shown.” Many other citations of authorities by this court to the same effect might here be enumerated, but the principle is so well settled that we regard this as unnecessary.

Agreeable to the decision of the Board, we conclude that there is nothing inventive in the rejected claims, and its decision is affirmed.

Affirmed.


author: GRAHAM, Presiding Judge.

text:
    In re WHITING.
    Patent Appeal No. 2691.
    Court of Customs and Patent Appeals.
    April 22, 1931.

      Louis E. Giles, of New York City (Fraser, Myers & Manley, of New York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner in denying a patent to appellant upon a design for a dress. The particular dress in question is stated by counsel to be the official uniform of the Girl Scouts of America, and the drawings accompanying the application show a one-piece dress with a box pleat in the back and with a detachable belt. Three patch pockets are shown in front, one on the left breast and two below the belt. There is a rolling collar which has upon the lapels on each side the letters G. S. Over each shoulder are inverted tucks. The sleeves are of the ordinary type, with euffis. There is no yoke in the back, but triangular stitching holds the upper end of the box pleat and also confines it just above the belt line. A row of extra stitching is around the edge of the collar and two rows of extra stitching are across the top of each pocket. The pockets are closed with buttons, and the belt is fastened in front with two buttons. This belt also has extra stitching and there is an extra row of stitching around a large hem at the bottom of the skirt. The cuffs are fastened with buttons.

The Board of Appeals has refused to grant a patent for this design by reference to the following: Reed, 1,008,493, November 14,1911; Anderson (Des.), 51,831, March 5, 1918; Goldstein, 1,538,632, May 19, 1925; Montgomery Ward & Co., Item 36-B-359', page 60, 1925.

The reference Reed shows a shirtwaist with a box pleat in the back. Anderson is a design patent for a sweater coat, and shows • a roll collar, with a belt and cuffs and bands of different colored material surrounding the bottom of the skirt of the coat and edging the two pockets which appear upon the front. Goldstein is a product patent upon a belted garment, and shows the back of a garment with a box pleat, a detachable belt, a yoke, and a rolling collar. The reference to the catalogue of Montgomery Ward, Items 36-B-359 and 367, shows house dresses, 359 being made to button in front, with one patch pocket and a rolling collar; item 367 showing a similar collar, a belt, and two patch pockets, this garment evidently being of the slip-on type.

It is quite evident that every individual feature of this garment is old and shown by the references. However, the fact that the individual elements of the design are all old does not prove want of invention in assembling them into a design. Zidell v. Dexter (C. C. A.) 262 F. 145. Old and well-known elements may be combined into a design which is patentable. The authorities are wont to state that such a design is patentable if there be invention in it. In this court we have said that to constitute such invention the designer must have invented a new, original, and ornamental design. In re Walter, 39 F.(2d) 724, 17 C. C. P. A. 982.

Speaking of design patents, the Supreme Court said in Gorham Mfg. Co. v. White, 14 Wall. 511, 528, 20 L. Ed. 731:

“We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Again, it was said in Smith v. Whitman Saddle Co., 148 U. S. 674, 679, 13 S. Ct. 768, 770, 37 L. Ed. 606:

“The exercise of the inventive or originative faculty is required, and a person cannot be permitted to select an existing form, and simply put it to a new use, any more than he can be permitted to take a patent for the mere double use of a machine. If, however, the selection and adaptation of an existing form is more than the exercise of the imitative faculty, and the result is in effect a new creation, the design may be patentable.”

To the same effect are Zidell v. Dexter, supra; Faris v. Patsy, etc., Co. (C. C. A.) 273 F. 900; Sagendorph v. Hughes (C. C.) 95 F. 478; Boldt Co. v. Turner Bros. Co. (C. C. A.) 199 F. 139.

We are forced, somewhat reluctantly, to the conclusion that the design disclosed here presents nothing inventive in character, and nothing which would lead the ordinary observer to conclude on seeing it that here was something distinctive and different from anything he had seen before. Every bit of ornamentation or work upon it is old in the art of the seamstress, and its elements can be seen on any street of any city in the costumes of the passers-by.

Allusion is made to the letters G. S. upon the collar lapels as being distinctive. These are simply block letters, of no unusual design. The placing of these letters upon the design cannot be said to be inventive. If so, any letter, or any combination of letters, would constitute a different, patentable design. The substitution of one letter, or emblem, in such a design, for another, is not inventive in any greater sense than was the fraternal emblem in Re Merritt, 35 F.(2d) 783,17 C. C. P. A. 629.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re SPENCE et al.
    Patent Appeal No. 2685.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    James T. Newton, of Washington, D. C., for appellants.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

The appellant has appealed from the decision of the Board of Appeals of the United States Patent Office, affirming the decision of the Examiner in rejecting claims 1 and 2 of appellant’s application for patent on an alleged invention relative to internal combustion engines- of the sleeve valve type.

The claims were rejected on reference to Uriel, 3,156,508, October 12, 1915, and Knight (British), 28,693, December 13,1912. Claim 1 is illustrative, and is as follows:

“1. In an internal combustion- engine, a cylinder with intake and exhaust ports, a sleeve with like ports, the intake being spaced from the exhaust port in the cylinder and not substantially, spaced in the sleeve, both of the sleeve ports being located between the cylinder ports when the engine is under compression and firing stroke, the cylinder having a cylindrical chamber into whidh the sleeve moves to protect the sleeve ports during firing, with the cylinder intake located in both walls of said chamber, a piston, with packing rings between the piston and the sleeve, said sleeve extending down but of the cylinder, and means for operating the sleeve in timed relation to the piston, so that when both sleeve ports are located between the cylinder ports during compression and firing strokes of the piston, the sleeve is without substantial movement.”

Appellant’s device consists of a sleeve valve for internal combustion motors, which sleeve valve is long enough to project below the cylinder and into the crank case, and which is caused to move up and down in correlation with the piston, so that, by means of inlet and outlet ports in the sleeve valve, and though ports in the cylinder, gas used for combustion will be admitted, and the exhaust gases expelled, at the proper times. The engine is of the ordinary four cycle type.

The movement of the sleeve valve to correlate with the movements of the piston is caused-by a combination of two eccentrics, the shaft of one of which rotates at the same rate of speed as the crank shaft, and the shaft of the other of which rotates at one-half the speed of the crank shaft. The two eccentrics are connected by an eccentric arm and a bell crank lever, which has its fulcrum on the shaft of the eccentric which operates at half speed. The other arm óf this bell crank lever is connected with a link which, in turn, is connected with the sleeve valve, and moves it up or down as the eccentrics and the bell crank move. The shafts upon which these eccentrics move are rotated by means of sprockets and a chain from the crank shaft.

In the Knight reference the inventor shows a sleeve valve operating with similar ports and in the same relation to the strokes of the piston as are shown by appellant here. Knight states in his specification that he provides a “sleeve valve working over a fixed head and containing ports for inlet and exhaust adapted to be brought into communication with ports in a surrounding cylinder casing at the desired period by a motion derived from the compounding of two approximately simple harmonic motions of crankshaft and half crankshaft speed respectively.” This statement is repeated in his specification description of the operation of his device.

Counsel for appellant admits in his oral argument that the arrangement of the ports and their operation with respect to the sleeve valve and piston are the same in Knight as in appellant’s application. However, he argues that the Knight device is inoperative because no showing is made as to how the result sought by Knight can be obtained; his sleeve valve not extending below the bottom of the piston. No affidavits have been furnished, and there is no showing made here except the statement of appellant that the Knight device is inoperative. It is quite evident that Knight had in mind the same means of operating it as are set out by appellant, in view of the portion of his specification hereinbefore quoted. At least, he plainly states how it may be done.

The Urt.el reference shows a sleeve valve motor with a different arrangement of ports than that shown in the Knight reference, but shows a sleeve valve which projects below the bottom of the piston for engagement with the device which operates it. Several alternative forms of this latter device are shown by Uriel. In Fig. 4 he discloses two eccentrics, one with a shaft revolving at the same speed as the crank shaft, the other at half speed, and these two connected by a pivoted double arm lever, the arms of which are at right angles to each other. The connection with the sleeve valve is made by an eccentric arm from the half speed eccentric, and a link. The inventor states in his specification: “Figs. 3, 4 and 5 show arrangements in which one of the eccentric rods is used as a lever and is set in oscillating movement about its eccentric by the other eccentric. The lever may be a single-arm, a double-arm or a bell-crank in order to keep the exhaust open long enough,” etc. Further references are made in the specification to variations which may be made in this general plan.

The substance of the matter is that appellant here is seeking a patent upon a combination of two elements; namely, a sleeve valve and a drive for the sleeve valve consisting of two eccentrics, one full speed and one half speed, with proper connections, so that the movements of the sleeve valve will be timed in correlation with the strokes of the piston. There is nothing novel in either of these ideas and nothing which was not well known at the time the application was filed. To combine these elements without any showing of a new and useful result is not invention, and therefore the rejection of the claims was proper.

Counsel for appellant calls attention to the fact that Knight does not show any piston rings and that this feature is novel. However, we assume that the appellant would not claim his device is patentable if this is the only matter in it not shown by the references. Piston rings have been used for many years and are well known in the art, and could hardly be said to render inventive this disclosure.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: LENROOT, Associate Judge.

text:
    In re CAMPBELL.

    Patent Appeal No. 2732.
    Court of Customs and Patent Appeals.
    April 29, 1931.

      Vernon E. Hodges, of Washington, D. C. (J. Preston Sweeker, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

      Rehearing denied May 27, 1931.

   LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner, rejecting all of the claims of appellant’s .application, five in number, for want of patentability in view of the prior art.

Claims 5 and 9 are illustrative of the claims in issue and read as follows:

“5. The combination with a reciprocating pump having power and water cylinders at the opposite ends thereof and • connected together by a cradle, of bosses extending outwardly from the power and water cylinders .and formed thereon, tie rods extending ■through the bosses for rigidly connecting the power and water ends of the pump together--to relieve the cradle of undue strain, and ■means connected with the ends of the tie ■rods for tightening said rods and holding ■them rigidly in the bosses.”
“9. The combination with a reciprocating pump having power and water ends connected together by a cradle, of one or more tie rods secured to the power and water ends, and connecting .the same together for relieving the cradle of undue strain.”

The references are:

Halsey, 295,000, March 11, 1884.

Worthen, 314,161, March 17, 1883.

The application relates to tie rods for pumps. The Board of Appeals in its deei.sion states:

“Ordinarily the power and water ends of a steam power pump are spaced apart by a casting known as a cradle bolted at its ends to the adjacent ends of the power and water ends. Applicant asserts that in practice the jarring of the reciprocating mechanism of the pump causes the cast metal of the cradle to crystallize and fracture, necessitating .disuse of the pump until a new cradle can be obtained to replace the broken part.
“To obviate fracture due to crystallization and tensile strains applicant has initially strengthened the pump by adding longitudinally perforated lugs to the power and water parts and has tied these parts and the intervening cradle together by tie rods or bolts passed through the perforated lugs. The parts are held securely together by nuts on the screw threaded ends of the tie rods bearing against the lugs.”

The reference Worthen does not show a cast cradle, but does show tie rods, bosses and nuts on the tie rods, the whole connecting the power and water ends of a pump. The patentee states in his specification that he employs a number of such rods, usually-three, to produce a cradle of small size. In other words, his device is not a reinforcement of a cradle, but the rods themselves form the cradle.

The patent to Halsey relates to a steam rock drill, and figure 1 of the drawing shows a tie rod with a nut on one end thereof to hold the parts together.

The Board of Appeals in its decision said :

“ * * * The use of tie rods to secure parts against separation due to tensile strains occurs in every day practice as in rock drilling machines where the heads of the cylinder are held together with the body of the cylinder by tie rods or bolts. An example of such practice is shown in the patent to Halsey, No. 295,000, March 11,1884.
“In the patent to Worthen, cited by the examiner, the tie rods D have their ends reduced in diameter and sereAv-threaded to pass through the perforated lugs extending from the adjacent heads of the power and water parts of the pump. The tie rods D serve the same purpose as applicant’s cradle and tie rods.
“We agree with the examiner that to employ the usual cradle with what is shoAvn in Worthen would not be patentable and furthermore the addition of strengthening tie rods to an old construction where needed would not involve invention.”

We agree Avith the conclusion reached by the Board of Appeals. Assuming that the Worthen reference is not a direct anticipation of appellant’s device, we think that appellant’s tie rods are merely a reinforcing device which, in view of the prior art, is an obvious use and does not involve invention.

There are numerous authorities to the effect that ordinarily the application of reinforcing devices to a structure does not involve invention. Crouch v. Roemer, 103 U. S. 797, 26 L. Ed. 426; Parson Mfg. Co. v. Coe (C. C. A.) 185 F. 522; Turner v. Lauter Piano Co. (C. C. A.) 248 F. 930, 933.

There are three affidavits found in the record pertaining to commercial success of appellant’s device. One of such affidavits was filed in the Patent Office after the decision by the Board of Appeals, and after appellant had filed with the Commissioner of Patents a notice of appeal to this court. If otherwise relevant, said last-named affidavit could not be considered by us for the reasons stated in the case of In re Fisher, 37 F.(2d) 628,17 C. C. P. A. 864.

As to the other affidavits, the rule is well established that only where there is doubt as to want of patentability can evidence of commercial success be considered. In re Husted, 39 F.(2d) 713,17 C. C. P. A. 1002.

In the case at bar, we have no doubt of the lack of patentability of appellant’s device, hence evidence of commercial success cannot be considered by us as affecting such ■question of patentability.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    BENNETT v. FITZGERALD.
    Patent Appeal No. 2661.
    Court of Customs and Patent Appeals.
    April 15, 1931.
    Glenn S. Noble, of Chicago, Ill., for appellant.
    Kwis, Hudson & Kent, of Cleveland, Ohio (A. F. Kwis and S. J. Boughton, both of Cleveland, Ohio, of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an interference proceeding; appellant appeals from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the Examiner of Interferences, awarding priority of invention to appellee.

The counts in issue are:

“1. A container comprising a body having a bead at the top, a head having a portion extending over the bead, and a sealing ring for securely fastening and sealing the cover having a flange extending inwardly over said portion of the head and having a continuous downward flange crimped inward at intervals beneath said bead leaving intervening unerimped portions.
“2. A container having a bead at the top, a head fitted to the container and having an outwardly extending marginal flange projecting over said bead, and a sealing ring for securely fastening and sealing the cover head having a flange projecting inwardly over the flange of the head, and having a continuous downwardly projecting flange having portions bent inwardly at intervals at substantially a right angle to said downwardly projecting flange beneath the bead leaving intervening unerimped portions having curved connections with the inwardly bent portions.”

The invention relates to cans or contain-" ers of the general type common in the art, Comprising body portions having covers with sealing rings for fastening the covers to the body portions. The invention involved is the crimping of the sealing ring at intervals, thereby leaving unerimped portions between the crimped portions.

The application of appellant was filed on April 30, 1927, and that of appellee was filed on August 19, 1926. Appellant is therefore the junior party.

Both tribunals of the Patent Office held that appellee conceived the invention in September, 1925, and reduced it to practice in the spring of 1926; that appellant conceived the invention in December, 1923, but did not reduce it to practice prior to the reduction to practice by appellee, and that appellant was not diligent in reducing his invention to practice at the time appellee entered the field, nor for more than one year thereafter; that, even if appellant had reduced his invention to practice in December, 1923, he had concealed and suppressed his invention, thereby forfeiting any right to claim priority of invention.

The questions involved upon this appeal are principally questions of fact. The tribunals of the Patent Office having concurred in their findings of fact, we must accept such findings unless they are manifestly wrong. Pengilly v. Copeland, 40 F. (2d) 995, 17 C. C. P. A. 1143.

We therefore accept without discussion the findings of said tribunals as to conception and reduction to practice by appellee, and as to conception by appellant, because the record elearly supports such findings. The real contest here is whether appellant reduced his invention to practice in December, 1923, and, if he did so, whether he concealed and suppressed the invention, thus forfeiting any right to claim priority of invention.

Appellant claims, and we think the evidence establishes, that, following the making of a sketch of a ring seal container in December, 1923, which sketch is in evidence, he made or caused to be made and tested one dozen of such containers, which correspond to the counts in issue; that the invention as embodied in these containers was fully disclosed to three persons, all of whom were fellow officers of the Wilson & Bennett Manufacturing Company, hereinafter called the Wilson Company, of which appellant was secretary and general manager. It appears that said company was a large manufacturer of steel containers and steel barrels, and had been so engaged since 1907; that in December, 1923, in addition to the container here involved, another form of container had been developed by said company which was known as No. 7.

Appellant testified that all of said twelve containers were lost or destroyed, but that a pail cover and ring, embodying the invention here in question, was preserved. Said cover and ring were produced and offered dn evidence. Appellant testified that the majority of the dozen containers were made by means of their No. 7 closing machine, designed for closing lead containers and especially their No. 7 container; that in making the tests the containers we're filled with water and paint and dropped; that the tests showed that said containers were not any more satisfactory than their No. 7 container; that they were as good but no better, and for that reason they did not consider the extra expense of their manufacture justified at that time; that the closing seal used upon said containers was very weak and ineffective; and that, after said tests, the invention was passed on to the Wilson Company for further development.

Appellant further testified that no application for a patent was made for the No. 7 container, because it was found that the art embodied therein was old; that in August, 1925, appellant invented another form of container and applied for a patent thereon in December, 1925. This container was put upon the market and became known as their No. 8 container. Appellant further testified that on December 1, 1925-, he filed an application for patent on a new closing machine, which was known as the No. 8 closing machine,' and manufactured it and commenced its use in that month; that said No. 8 closing machine, used upon the containers embodying the invention here in question, made a much better closure, and that this fact, in addition to an improvement in the hoop or ring, caused the Wilson Company to enter upon the manufacture of containers of the type here in question and to sell them to the trade; that this was determined upon either in October or December, 1926, and the first orders were received in May, 1927; that in the fall of 1926 appellant learned that the Niles Steel Products Company had put upon the market a pail of the type here in issue, and appellant also knew that the American Can Company had been in the market for a number of years with the same general type of container, but not embodying the invention here in issue.

Appellant’s testimony was corroborated in most respects by the testimony of James H. Wilson, John Chase Bennett, and Augustus P. Heinze, all officers of the Wilson Company. The testimony concerning the result of the tests of said containers amounted to conclusions of the witnesses, except as to the witness Wilson, who testified that some of the sample cans were filled with water and some were filled with paint; that some of them were dropped two feet and others were dropped three feet; that the result of the tests was that “some of them had a slight leak and some were tight”; that “about six” were closed by the No. 7 closing tool and “about four” were closed by hand; that pails closed by the No. 7 closing machine would be more likely to leak'than pails closed by the new No. 8 closing machine; that he would not care to furnish to the trade pails embodying this invention with closing machines such as were used in December, 1923.

It also appears from testimony offered on behalf of appellant that tests were made in 1927 of pails purchased in the open market, embodying appellee’s device, and that the same kind of tests were applied to them as had been applied to appellant’s sample containers in December, 1923; that the result of the tests was that they broke open and their contents were largely lost.

The first question for consideration is whether appellant reduced the invention to practice in December, 1923, as claimed.

Appellant contends that the' making of a dozen containers, exactly as specified in the counts in issue, in itself constitutes a reduction to practice, and that no tests of the containers were necessary, but that, if it should be held that tests were necessary to constitute a reduction to practice, then the. evidence.establishes that such tests were made and that they were successful.

We think the requirements of tests in reduction to practice were correctly stated by the Court of Appeals of the District of Columbia in the case of Sydeman v. Thoma, 32 App. D. C. 362, wherein the court said:

“Decisions involving this often-litigated question of actual reduction to practice may be divided into three general classes. The first class includes devices so simple and of such obvious efficacy that the complete construction of one of a size and form intended for and capable of practical use is held sufficient without test in actual use. [Citing eases]. The second class consists of those where a machine embodying every essential element of the invention, having been tested and its practical utility for the intended purpose demonstrated to reasonable satisfaction, has been held to have been reduced to practice notwithstanding it may not be a mechanically perfect machine. In other words, it is sufficient reduction to practice, although a more desirable commercial result may be obtained by some simple and obvious mechanical improvement, or by substituting another well-known material for the one used in the original construction, as, for example, metal for wood, cast metal for sheet metal, and the like. [Citing cases]. The third class includes those where the machine is of such a character that the particular use for which it is intended must be given special consideration, and requires satisfactory operation in the actual execution of the object.”

We are of the opinion that the invention here in issue belongs to the second class of devices above referred to. It was, we think, essential to determine by actual tests if the cover of the container embodying the invention here involved would resist severe shocks, as .when dropped, with minimum danger of leakage because of loosening of the top. Both of the parties hereto seem to have recognized this, because appellant did subject the 1923 container to tests and also the same type of container brought out by him in 1926, and appellee also tested his container embodying the invention in issue.

The next question is, Did the tests, in December, 1923, of appellant’s device, demonstrate its practicability sufficiently to constitute a reduction to practice of the invention?

As heretofore noted, the testimony of most of appellant’s witnesses upon this point consists of conclusions, rather than statements of fact from which we might draw our own conclusion. The witness Wilson, however, did testify that the results of the tests were such that he would not care to offer to the trade containers embodying this invention, with closing machines such as the company then had, and also that the tests revealed that some of the containers had a slight leak. Also, appellant testified that the closing machine used upon the sample containers was very weak and ineffective. This testimony, standing alone, would not be sufficient to negative a successful reduction to practice. A device need not be mechanically perfect, or in its exact form a commercial success. We think it proper, however, to consider said testimony in connection with other circumstances revealed by the record bearing upon the question of reduction to practice.

Of course, if reduction to practice is established, other circumstances or conduct of a party would not warrant us in making a contrary finding; but, if reduction to practice is not clearly established, the facts and circumstances shown by the record may be resorted to -for the purpose of determining whether there was in fact a reduction to practice, or whether the alleged reduction to practice was only an abandoned experiment.

The circumstances shown by the record, which we deem material on this point, are:

(1) In December, 1923, appellant’s company was manufacturing a container, No. 7, which was not patented, and which it preferred to appellant’s 1923 device.

(2) Appellant’s device was, after the tests in December, 1923, referred to, turned over to the development department of the Wilson Company “for further development.”

(3) In 1925 appellant’s 1923 device was discussed by the officers of the Wilson Company, and it was again determined not to manufacture the same.

(4) In 1925 appellant invented another container for which he made application for patent in December, 1925, and the Wilson Company then entered upon the manufacture of said type of container.

(5) In 1925 appellant invented a closing device and applied for a patent thereon, which closing device was the type used in closing appellant’s device here in issue when the Wilson Company began its manufacture. The testimony on behalf of appellant is to the effect that this dosing device made appellant’s container here involved commercially practicable.

(6) .In the fall of 1926 appellant was aware that appellee’s device was -upon the market, - as was also a ring seal device of the American Can Company, but said last-named device was of a different character than the device here in question.

(7) Appellant did not place his device upon the market until 1927, and did not file his application for a patent upon the device here involved until April 30, 1927.

Considering the foregoing facts in connection with the lack of positive evidence of the success of the tests in 1923, we are compelled to agree with the tribunals of the Patent Office that the claimed reduction to practice in December, 1923, constituted only an abandoned experiment.

The record does not disclose that appellant in 1926 made any use of the drawing or sketch made in 1923, nor in the consultation held by the executive officers of the Wilson Company in the fall of 1926 was the sample cover, made in December, 1923, and preserved and offered in evidence in this proceeding, produced or considered. On the contrary, the testimony is to the effect that new drawings were made in 1926, and the-party who did the drafting, the witness Corn-well, was not advised that the invention had been conceived or reduced to practice in .1923 or at any time prior to his being given instructions to make drawings.

It is a significant circumstance that, if the tests of 1923 by appellant were successful, and the only bar to commercial success of the device was the type of closing machine' used in 1923, appellant waited for more than a year after perfecting a closing machine-which would successfully operate upon the device here in issue before bringing out as-a commercial proposition the device here involved. It is also a significant fact that, although in 1925 appellant applied for a patent for another container, and also for a patent for a closing device, he did not apply for a patent on the device here in issue until long after appellee’s device was upon the-market.

In the ease of Paul v. Hess, 24 App. D. C. 462, the court said:

“Long delay in making use of an invention claimed to have been reduced to practice, or in applying for a patent, have always been regarded as potent circumstances tending to show that the alleged reduction to practice was nothing more than an unsatisfactory or abandoned experiment. Traver v. Brown, 14 App. D. C. 34, 41; Reichenbach v. Kelley, 17 App. D. C. 333, 344; Latham v. Armat, 17 App. D. C. 345. And this is specially the ease where, in the meantime, the inventor has been engaged in the prosecution of similar inventions (Fefel v. Stocker, 17 App. D. C. 317, 321), or others,, without reasonable explanation, have been adopted for manufacture and commercial use.”

Appellant’s counsel relies upon the decision of this court in the ease of Janette v. Persons, 38 F.(2d) 364,17 C. C. P. A. 884, to sustain his contention that appellant reduced his invention to practice. It is sufficient to say that in that case the evidence clearly established a reduction to practice of the invention there involved; and in the case at bar, if the evidence clearly established a reduction to practice in December, 1923, by appellant of his alleged invention, the circumstances above set ont would be immaterial upon that point.

We hold that, while appellant conceived the invention in December, 1928, he did not reduce it to practice until after the application of appellee was filed.

The next question is, Was appellant diligent in reducing the invention to practice at the time that appellee entered the field, and thereafter until appellant’s actual reduction to practice? The testimony shows that in December, 1923, after the tests by appellant above referred to, the invention was passed on to the development department of the Wilson Company for further development. At the time of appellee’s conception in September, 1925, appellant had done nothing further with the invention. The testimony shows that appellant and his associates discussed the invention, but decided to bring out another type of container. The first activity disclosed by the record on the part of appellant in reducing the invention to practice after December, 1923, occurred in the fall of 1926.

Having held that appellant did not reduce the invention to practice in December, 1923, the evidence clearly shows that there was lack of diligence upon his part in reducing it to practice at the time' appellee entered the field and thereafter until appellant reduced the invention to practice.

In view of the conclusion we have reached, it is unnecessary to consider the question of whether appellant concealed and suppressed the invention, as held by the tribunals of the Patent Office.

The decision of the Board of Appeals is affirmed.

Affirmed.

GRAHAM, Presiding Judge, concurs in the conclusion.


author: GARRETT, Associate Judge.

text:
    In re LAUGHLIN.

    Patent Appeal No. 2684.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    Joshua R. H. Potts, of Chicago, Ill. (Eugene Vincent Clarke, Basel H. Brune, and Howard S. Laughlin, all of Chicago, Ill., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

      Rehearing denied June 5, 1931.

   GARRETT, Associate Judge.

Laughlin appealed from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the Examiner denying seven claims, numbered 12 to 18, inclusive, being all the claims of the application, for a “method of hardening the surfaces of steel castings.”

We quote Nos. 12, 13, and 17, as being fairly representative:

“12. The method of treating metallic castings or the like comprising the steps of first heating the casting to a tempering temperature, then substantially, uniformly and simultaneously subjecting the surface thereof to be treated to a quenching fluid for a few seconds, then removing the casting from the quenching fluid to permit the treated surface to reheat to approximately a tempering temperature by conduction from the unaffected portion of said casting, and then again quenching said casting.
“13. The method of treating metallic castings or the like comprising the steps of first heating the easting to a tempering temperature, then substantially, uniformly and simultaneously subjecting the surface thereof to be treated to a quenching fluid' for from three to six seconds, then removing the casting from the quenching fluid to permit the treated surface to reheat by conduction from the unaffected portion of said casting for about ten seconds, and then again quenching said casting.”
“17. The method of treating the surfaces of steel objects of low carbon content comprising the steps of first heating the object to a temperature from 1600° to 2200° F. inversely as to the carbon content, then immersing said object in a quenching fluid until tile surfaces of the same are chilled to the desired depth, but leaving the interior substantially unaffected, then removing the object from quench to permit the surface thereof to reheat by conduction to approximately 200° F. below the temperature at the first quench, and then requenehing the object to cool the same.”

As references there are cited: Pease et al., 1276106, August 20, 1918; Schaffer, 1362147, December 14, 1920'; Laughlin, 1527418, February 24, 1925.

There are nineteen assignments of error; a number of them being merely formal.

It will be observed that one of the references is for a patent to appellant himself. This was for a method and an apparatus limited to hardening the surfaces of car wheels, granted July 28, 1923, and will be later more specifically analyzed.

The claims here at issue involve only the process; no apparatus being disclosed or claimed.

The tribunals of the Patent Office held that the grant of the instant application would, as the Board expresses it, “give appellant a second patent for his invention and prolong the term of his monopoly”; it being the opinion there was no patentable difference in the subject-matter of the claims of the application and that of the patent claims, in view of the prior art as revealed by Pease et al.

The present application was filed November 9, 1921, and contained seven claims, for which, during the course of the proceedings, the claims at issue were finally substituted by amendment. This substitution was on February S, 1928, and was accompanied by a supplemental oath of appellant.

It is stated in the brief for appellant that, after the application here involved had been on file for about a year and eight months, he “discovered that ear wheels could be effectually tempered and treated by an entirely different process, necessitating the employment of an especially designed apparatus,'” and consequently on July 28, 1923, he filed an application directed to both “method and apparatus for hardening the surfaces of ear wheels.” This application eventuated in the patent, No. 1,527,418, of February 14, 1925, above referred to, and which is cited as a reference against the instant application.

The process claims of this Laughlin patent are Nos. 1 and 2, respectively. It is sufficient to quote No. 1:

“1. The method of hardening the surfaces of ear wheels which consists in first heating the same, then substantially uniformly .and simultaneously quenching the entire tread surfaces of the wheel for a short time; then discontinuing the quenching for a sufficient length of time to permit said surfaces to reheat by conduction from the interior of the wheel; and then finally and completely quenching the same, substantially as ' described.”

It will be observed that the claims of the patent do not provide for the quenching of the entire wheel surface, but are limited to the “entire tread surfaces of the wheels.” (Italics ours.)

It will be observed also that no definite time is fixed for the first quenching operation. Both claims state, “for a short time.” The specifications say:

“This ' supply of water [used in the quenchings] is continued for a short period only usually from 15 to 30 seconds depending upon the depth of hardness desired in the tread portions of the wheel.”

It is the insistence of appellant that in the method of the involved application the initial quenching step relates to the entwe surface of the castings, and we take this to be the correct construction of the language, because of the wording of the explanations of the process, although neither the claims nor the specifications use the word “entire.”

It is also insisted in the brief for appellant that in the application the initial quenching step is “for a short time ‘usually from three to six seconds. * * * ’ ”

We find by examining the claims that only two of them, Nos. 13 and 15, use the expression, “from three to six seconds.” Nos. 12 and 14 say “for a few seconds,” and Nos. 16, 17, and 18 say “until the surfaces of the same are chilled to the desired depth.”

The patent of appellant on the car wheel device seems to have been by him assigned or sold to American 'Steel Foundries. The original application, here involved in its amended form, was still pending in the Patent Office, and, at some period during its pendency there, the exact date not being disclosed by the record, American Steel Foundries brought a proceeding in equity in the District Court of the United States for the Eastern Division of the Northern District of Illinois, in which it sought to compel the assignment'to it of the pending application, claiming its right thereto by virtue of the car wheel device assignment. From the final decree of the United States District Court in that case, we assume-that Laughlin was, for a time, enjoined from prosecuting his application, now at issue here. American Steel Foundries also apparently sought in that proceeding a decree requiring Laughlin to file an application for reissue of his ear wheel patent, and include in the reissue application the subject-matter of his then pending, and now here involved, application.

The United States District Court denied the plaintiff, American Steel Foundries, any part of the relief sought and dismissed the bill. American Steel Foundries v. Laughlin, 30 F.(2d) 137. Its decree was affirmed, December 27,1928, by the Circuit Court of Appeals of the Seventh Circuit, in an opinion by Circuit Judge Evans, reported in 30 F. (2d) 139.

It is unnecessary to consider, in this proceeding, all the issues and adjudications thereon in the American Steel Foundries Case, supra.

Appellant here insists that the decisions of those courts constituted a finding that the claims of the application were not for the same invention as the claims of the patent, and that (we presume under the doctrine of stare decisis) this court should be bound by that holding. There is no claim of res adjudieata, and we think could be none.

This court, as of course, would be bound by an adjudication upon an issue which was inherent in those proceedings and which it was necessary for those courts to decide, if the issue and the parties were the same. But, in the statement by them that the claims were not the same, there was no adjudication of patentability, so far as we can determine from the record. There was no occasion for those courts to determine that question, and we do not understand that they attempted or proposed to pass upon it.

That question is before us in the regular and usual way and must be determined by us.

At one time, that is, July 20, 1926, three of the claims, as then formulated, were definitely stated by the Examiner to be allowable. Those three, as given in appellant’s brief, seem to correspond quite closely in their subject-matter to his present claim 17, quoted supra, and, in part, to present claim 16.

The claims, in which the degrees of temperature to which the objects are to be heated were first specifically stated, seem to have been injected into the application October 15, 1925, together with an amendment of the description. This appears to have been done in response to a suggestion or requirement of the Examiner “that the applicant should set forth in detail, the approximate temperature to which the surface is allowed to reheat. * * * ” (Italics quoted.) The three claims which, for a time, stood allowed, embraced this feature. Subsequently the Examiner, on August 26, 1926, withdrew the allowance and rejected them, along with the others, as constituting double patenting over appellant’s car wheel patent.

In the end their subject-matter, as claims 16 and 17, was rejected, not only upon the ground of double patenting, but because not disclosed in the original or first application as it read at the time of its filing.

The prior art shown in the references, other than the Laughlin reference, is:

Schaffer shows a method and apparatus relating to the hardening of manganese steel articles. It was cited by the Examiner at an early period but is not referred to by the Board of Appeals. We do not regard it as being in point.

The Pease et al. patent was cited as showing that it was old in the art “to harden the tread surface of ear wheels by quenching,” and the Board says:

“Consequently, any novelty in the method claims of appellant’s patent must reside in the steps of the method. * * * ” (Italics ours.)

This, we think, is correct, and, since the steps of the Laughlin patent, and of his application here involved, differ from the steps of Pease et al., the latter is not a reference as to appellant’s step phase.

The issue before us is accordingly narrowed to the question of whether the application should be denied upon the Laughlin patent, because double patenting of the process will result from granting it.

After thorough consideration, it is our conclusion that, upon both reason and authority, the application must be rejected upon this ground.

What is appellant’s invention? What was his concept? It was that of a process to accomplish a desired end by the taking of certain steps; that end being the tempering of the surfaces of certain metal articles to a greater degree of hardness than the interior, so that, in the article, there would be wrought desirable variations in strength, or tensility, or other characteristics. The steps to accomplish this which appellant conceived were: (a) Heating the entire article to a degree of temperature well known in the art; (b) quenching the article for a time so brief as that the lowering of the heat extends to only a limited depth; (e) permitting the quenched surface to reheat from the unquenehed interior to a degree also known in the art; and (d) again quenching, this time, the entire object.

That is the method as applied to the tread surfaces of the ear wheels in the patent; that is the method, in no particular changed (except, perhaps, by the manner of its application called for — that is, the apparatus), to be applied to the entire surfaces of metal castings in the claims at issue, here.

Appellant’s counsel insists with great earnestness that the inventions are different. We are unable to see wherein the methods differ. They are applied to different objects, but the methods remain the same, except, perhaps, as differences of degrees in temperature may be required, according to the nature of the-metals, and variations necessary in the depth of the initial quench, because of the difference in the character of the objects that are to be made. These exceptions are known to those skilled in the art.

It is true that the car wheel or patent claims call for the initial quenching of only the tread portion of the surface, while the claims of the application may be construed as applying the initial quench to the entire surface, but the method or process is, in all respects, the same. The method, we think, must he considered-by itself; that is, it is not to be measured simply by the individual objects to which applied. Had appellant secured the allowance of the application now at issue before the granting of the patent which he did obtain, we are unable to see how the method claims of the latter could have been allowed, or, if allowed, how held valid. The reverse of this seems equally true, since, in both instances, the steps of the method are in all material respects identical.

In re Woodsome et al., 56 App. D. C. 138, 10 F.(2d) 1003, is cited by the Solicitor for the Patent Office, and is in point.

There an original application contained numerous claims. Certain of these were specific in character and others generic. A division was required by the Examiner between the two classes of claims. The applicants did not appeal from this requirement, -but canceled the broad claims, and the ease went to issue on the narrow ones. A patent .was granted, but before its issuance the applicants filed, as a divisional proceeding, an application containing the broad claims theretofore canceled. This application was denied by the Patent Office, and upon appeal to the Court of Appeals of the District of Columbia .the decision of the final Patent Office tribunal was affirmed, the court saying:

“We agree with the lower tribunals that there was but a single inventive idea, and that it was embodied in a single structure, and accordingly that the applicants are not entitled to extend the period of their patent upon the invention on the ground of a mere difference in the scope of the claims contained in the two applications. Fassett v. Ewart Mfg. Co., 62 F. 404, 10 C. C. A. 441; Otis Elevator Co. v. Portland Co., 127 F. 557, 62 C. C. A. 339'; Union Typewriter Co. v. L. C. Smith & Bros. Typewriter Co. (C. C.) 173 F. 288; Morse Chain Co. v. Link Belt Machinery Co., 164 F. 333, 90 C. C. A. 650; Gold v. Gold, 187 F. 273, 109 C. C. A. 615.”

In the ease at bar the claims, in their essence, do not differ from the patent claims. It is only in the objects to which the method is applied that the difference is found.

In the Woodsome Case, supra, the court said: “ * * * The disclosure of the two applications is identical, both as to drawings and descriptions.”

In the instant case, there are no drawings, of course, but, in all features that might constitute invention in the method, the disclosures have exactly the same purport and meaning.

The ease of In re Hutter, 55 App. D. C. 210, 4 F.(2d) 176, is also cited by the Solicitor for the Patent Office. We are inclined to agree with counsel for appellant that the Hutter Case is probably distinguishable from the one at bar. Of course, the facts of the Woodsome Case, supra, differ somewhat from the case before us, but we see no distinction in the principles of the two.

The numerous authorities cited, and in several instances quoted from, by counsel for appellant, have been carefully scrutinized and considered, such as Thomson-Houston Electric Co. v. Ohio Brass Co. (C. C. A.) 86 F. 712, 724; Wirebounds Patents Co. v. Saranac (C. C. A.) 37 F.(2d) 830; Thomson-Houston Electric Co. v. Elmira (C. C. A.) 71 F. 396; Southern Textile Machinery Co. v. United Hosiery Mills (C. C. A.) 33 F. (2d) 862; and many others, with their contained references.

In no one of these do we find anything inconsistent with our position as stated here.

The ease of Thomson-Houston Electric Co. v. Ohio Brass Co., supra, is particularly stressed by appellant’s counsel, as supporting his position in this ease. The opinion there was by the late Chief Justice Taft, who then was a United States Circuit Judge, and sitting with him in the hearing, and concurring with him in the opinion, were United States Circuit Judge Lurton and United States District Judge Clark, both of whom later became Associate Justices of the United States Supreme Court. Certainly an opinion coming from so distinguished a tribunal may be taken as a most positive announcement of law, but it must be taken as a whole, and detached phrases or sentences may not be accepted as fully disclosing the doctrine there announced. Also- we must know the state of facts upon which the doctrine was pronounced. The suit was an infringement proceeding, and one of the defenses was “that the patents relied on are void because the inventions covered by them were patented in prior patents to the same patentee.”

The involved patents were for a mechanism, not for a process.

In the application for the patent which was first issued, the applicants expressly stated that it was for an improvement on certain parts of the application then pending and which later became the second patent. The court said:

“An examination of the drawings and specifications leaves no doubt that this statement is true. * *■ * The claims, all of them, include and refer to one or the other of these improvements. Now, it is not material to this discussion whether these improvements are patentable or not. They are expressly claimed as improvements, and no attempt is made by the patentee to cover anything but them. If inventions at all, then they are' separable from the old switch and trolley combinations, and, if they are not inventions, the patents are void, and cover nothing. * * * ”

After stating that the law had become well settled that “a patent may issue for an improvement on an earlier invention either to the original inventor or to a stranger,” the court continued:

“ * * * But it is said that if, by some chance, the application for the fundamental patent is delayed in its course through the patent office until a patent on the avowed improvement has issued, then the patent on the fundamental invention is void.” (Italics ours.)

The court held that such was not the law, but the facts of the instant case do not square with the facts of that ease.

It was not an improvement over his original application which appellant claimed for the method of his patent. It was the same method applied to a different, or at least to a specific, object. The claims of his application are no more generic than are the claims of his patent. They differ only in the objects of their application.

Therein, it seems to us, lies the great and decisive distinction, which renders what was held in the ease from which we have quoted inapplicable to the case at bar.

Appellant’s method invention lies in the steps described. These steps, in their patentable aspects, are the same whether applied in the tempering of only the tread surfaces of car wheels or in the tempering of the entire surfaces of metallic or steel castings. The one inventive idea was disclosed in the patent as fully, except in details not patentable, as it was, or is, in the application. .

It is not deemed necessary to lengthen this already long opinion by attempting an analysis of the other cases cited by appellant. Each of them, we feel sure, is distinguishable in its facts from the case at bar.

Under the view we hold, there is no necessity of our passing upon the question of whether claims 16 and 17 were properly rejected on the ground of insufficient disclosure. Since they were inserted by an amendment which appears to have been, at least, invited, if not required, by the Examiner, we should certainly feel disposed to go as far as we might, under the law, in- upholding them, so far as that particular ground is concerned.

We do not, however, regard those features of them which differ from the features of the other claims as presenting patentable matter. All the claims are subject to the objection that to grant them would result in double patenting, or a second patent for precisely the same principle of the first in no way claimed to be improved or altered in any patentable regard.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re WELLMAN.
    Patent Appeal No. 2682.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    Roberts, Cushman & Woodberry, of Boston, Mass. (Arlon V. Cushman, of Washington, D. C., and Robert Cushman and Robert C. Child, both of Boston, Mass., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

The appellant filed an application for patent on improvements in lined receptacles, and the art of making the same. Twenty-three claims were filed, claims 1 to 11 being for a process, and claims 12 to 23 being for a product. The Examiner cited certain references as bearing upon the subject-matter of the method claims, and required a division between the process and product claims. Thereupon, under rule 41 of the United States Patent Office, the appellant elected to prosecute his process claims, 1 to 11, inclusive, and to retain the remaining claims in the ease with the privilege of appealing from the requirement of division after final action by the Examiner on the group of claims prosecuted, as was provided by said rule. Thereafter, the Examiner allowed claims 1 to 11, inclusive, and the matter was taken to the Board of Appeals as to the correctness of the order for division.

The Examiner held, in effect, that the product claims described an article which might be made by some other process than that described in the process claims, and that, therefore, different inventions were involved in the process and product claims. In this connection the Examiner suggested that the box could be made by using a separate mandrel for the lining and for the cover.

The inventor Wellman filed an affidavit in the Patent Office, under rule 138 of the Rules of Practice of said office, in which affidavit the affiant states, in effect, that in a commercial way the making of containers, such as is involved in his product claims, is impracticable if the work' is done by hand, and that speed and machine operations are required. He further states: “I do not know how to .proceed to make by hand or machine a receptacle corresponding to claim 14, for instance, without practicing the manipulative steps of the method of one or more of claims 1 to 11.” He further states that, if there is any other way of making his product except by the method described in his application, he is not informed of what it is. He adds: “Nevertheless many different machines might be resorted to to practice my new method or make my new product.”

The Board of Appeals of the United States Patent Office affirmed the action of the Examiner in requiring division. In its decision the Board mentioned the fact that the requirement of division should be affirmed in order to preserve the Office classification, and this holding of the Board is complained of by appellant in this case. However, the Board did not base its decision upon this matter, but held that the product might be made by other processes than those described in claims 1 to 11 of appellant’s claims, and that, therefore, the division was properly required.

Claims 1 and 12 are given as typical of the two classes of claims involved:

“1. Art of making lined receptacles comprising wrapping and fastening together about a mandrel or form a blank for a lining of suitable material to make a bag; making a box to support and protect the bag in use by bending and sealing a blank of suitable stiff material on and about the bag and mandrel; and thereafter removing the bag and box from the mandrel.”
“12. Packaging, storing or shipping receptacle comprising a lining continuous except for a sealed overlapped seam, and a stiff cover having an overlapped seam, the cover seam and lining seam respectively lying in contact with an integrally continuous area of said lining and cover.”

Rule 41 of the Rules of the United States Patent .Office originally provided as follows:

“41. Two or more independent inventions cannot be claimed in one application; but where several distinct inventions are dependent upon each other and mutually contribute to produce a single result, they may be claimed in one application.
.“Claims for a machine and its product must be presented in separate applications.
“Claims for a machine and the process in the performance of which the machine is used must be presented in separate applications.
“Claims for a process and its product may be presented in the same application.”

In Steinmetz v. Allen, 192 U. S. 543, 24 S. Ct. 416, 422, 48 L. Ed. 555, this rule came to the attention of the Supreme Court and was found to be invalid.

The court, in passing upon the particular matter involved in that ease, quoted from Robinson on Patents, vol. II, § 473, to the effect that a process cannot be “joined with the apparatus that performs it, nor either of these with the product in which they result, unless they are to such an extent inseparable that the existence of some one of them is dependent upon that of the others.” The court gave expression to the view that the Patent Office was vested with a discretion in requiring divisions, but that such discretion was not unlimited and was reviewable. The court further quoted, with approval from James v. Campbell, 104 U. S. 356, 26 L. Ed. 786, the following language: “Where a new process produces a new substance, the invention of the process is the same as the invention of the substance, and a patent for the one may be reissued so as to include both, as was done in the case of Goodyear’s vulcanized rubber patent. But a process, and a machine for applying the process are not necessarily one and the same invention.” Other authorities to the same effect as Steinmetz v. Allen, supra, are Mosler Safe & Lock Co., v. Mosler, B. & Co., 127 U. S. 354, 361, 8 S. Ct. 1148, 32 L. Ed. 182; In re Hawkins, 57 App. D. C. 262, 20 F.(2d) 278; Wirebounds Patents Co. v. Saranac, etc. (C. C. A.) 37 F.(2d) 830; In re Isherwood, 46 App. D. C. 507; In re Butler, 37 F.(2d) 623, 17 C. C. P. A. 810.

In Union Paper-Bag Mach. Co. v. Waterbury et al. (C. C.) 39 F. 389, an applicant filed certain claims for a reissue. In his original application, the applicant filed claims for a paper bag of a certain kind, irrespective of the process of making the same; these were rejected on the prior art by the Office, and the applicant amended his application by inserting process claims whieh went to patent. On his application for reissue, certain claims for the bag were rejected, it being held that he had originally waived the right to such a claim by acquiescing in the decision of the Patent Office. The principle to be deduced from that case is that a broad claim, such as was made in that case, describes a different invention from that set forth in the process claims, and the applicant, if he desires the benefit of product and process claims in the same patent, must so claim his product that it is apparent that it is the production of the process also claimed*.

Claims 12 to 23, inclusive, are for a product, without defining in any way the process by whieh they may be made. It has been well said that such products might be made by hand or by separate mandrels. Not only is this true, but the whole field of mechanical art would be foreclosed, if such a patent were issued, from making such a container, and the applicant would be in exclusive possession of the field. He is entitled to the benefits of his invention, but no more, and that invention consists in making containers of a certain kind, in a certain way.

Whether the appellant will be met, as urged at length in his brief, .in the tribunals of the Patent Office, with the objection of double patenting, in the future, is a matter not now before us. Nor is the matter of a possibility of the bar of the statutory limit of two years being raised against appellant in the future, a matter which we can now consider. However, it may be said that the appellant was put to his election in the Patent Office, and could have filed his divisional application during the statutory period, if he had so desired.

The affidavit of Wellman, filed in the Patent Office, does not help the situation. The fact that he knows of ño other way to make the container in question is not proof that it cannot be so made.

The decision of the Board of Appeals is affirmed.

Affirmed.

HATFIELD, Associate Judge, concurs in the conclusion.


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    SACHS v. WADSWORTH.

    Patent Appeal No. 2701.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Interference proceeding between Joseph Sachs and George B. Wadsworth. Decision for the latter, and the former appeals.
    S. Jay Teller, of Hartford, Conn. (William A. Smith, Jr., of Washington, D. C., of counsel), for appellant.
    Walter P. Murray and Prank L. Zugelter, both of Cincinnati, Ohio, for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

      Rehearing denied May 27, 1931.

   LENROOT, Associate Judge.

This is an interference proceeding, in which appellant appeals from a decision of the Board 'of Appeals of the United States Patent Office awarding priority of invention to appellee, reversing the decision of the examiner of interferences, in which priority of invention was awarded to appellant.

The parent application of appellant, of which the application before us is g division, was filed on August 2, 1922, and the application of appellee was filed on November 17, 1923. A patent was issued to appellee upon his application on January 11, 1927. Appellant thereupon filed a divisional application in which he copied from the patent to appellee the counts here in issue and requested an interference, which was declared. Since appellant’s application was pending at the time of the issuance of said patent to appellee, and disclosed the invention in issue, ■ appellant, having been the first to file, is the senior party and the burden was upon appellee to establish priority of invention by a preponderance of evidence.

The counts in issue are three in number. Count 1 is illustrative and reads as follows: “Count 1. In a switch box having a switch and fuses therein, a lid for the box having a fuse opening therein, a hopper mounted on the lid about the fuse opening and adapted together with the lid, to¡ house the fuses and to isolate them from the interior of the box, and a shutter controlling access to the fuse casing when the lid is closed.”

The issue relates to electric service switch boxes, wherein fuses are also installed in the box. It is stated by the Board of Appeals as follows: “ * * * The essential features of the counts are a hopper-like shielding member attached to the inside of the lid of the box surrounding the fuses and positioned around an opening in the lid through which the fuses are accessible from the outside of the box and a supplemental cover or shutter over the opening in the lid and mouth of the hopper. The hopper prevents access to any portion of the inside of the box except the exposed fuses. This avoids danger of contact or possibility of tampering with other parts of the wiring or switch elements as long as the lid is closed.”

Both parties took testimony.

In his preliminary statement, appellant alleged conception on or about July 1, 1921.

Appellee testified that just prior to June 23, 1919, he had a switch box, embodying the invention, made up by his son. This box, which was provided to take cartridge fuses, was offered in evidence as Exhibit 18, and has been examined by us. A short time thereafter, appellee testified, he made a drawing, which was offered in evidence, from which another switch box, adapted to take plug fuses, was made prior to October 10, 1919. This box was not produced in evidence, and the testimony was that it had been lost.

Appellee’s testimony as- to the construction of Exhibit 18 was corroborated by his son, and appellee’s brother testified that he saw said exhibit some time between the 6th and 15th of August, 1919. He said: “* * * jje [referring to appellee] showed me a sketch, which he was arranging to manufacture, of his 125 screw plug fuse switches, and he showed me a model of a 250 volt N. E. C. fuse, which he had already made, to overcome the criticism that was made on the switches, where by opening the lid of the box, the fuse pan barrier was all attached to the lid and there would be no trouble of removing any parts.”

The examiner of interferences awarded appellee a date of conception of August 15, 1919; and found that said Exhibit 18 "was constructed and in existence at least as early as said date; that the device was of such a character as to require tests of the same to constitute a reduction to practice, and that there was no proof that such tests had been made; that appellee was not diligent in reducing his invention to practice from the time that appellant entered the field, or thereafter until he (appellee) reduced the invention to practice in 1923. ' For these reasons he awarded priority of invention to appellant.

The Board of Appeals concurred in the finding of the examiner as to date of conception by appellee, but held that a mere closing of the cover would demonstrate the practicability of the device, and that it must be assumed that it was tested by closing' the cover and actuating the shutter and switch, and observing that the hopper properly surrounded the fuse pockets. It therefore found that appellee reduced the invention to practice prior to August 15, 1919, and further found that there was no evidence of concealment or abandonment by appellee, or stimulation to activity upon his part by the work of appellant.

The first question before us is: Does the evidence show a reduction to practice by appellee of his invention prior to August 15, 1919, as found by the Board of Appeals? If this question be answered in the affirmative, the next question is whether there was any concealment or suppression by him of the invention which would forfeit his right to an award of priority.

The device in issue, so far as the invention is concerned, is exceedingly simple. Exhibit 18, which is conceded to embody the invention, is of full size and adapted for practical use. A mere inspection of it, and opening and closing of the lid, disclose that it is operative. We agree with the Board of Appeals that it must be assumed that the lid was opened and closed by both appellee and his son. The testimony shows that appellee exhibited the device to his brother, and we think it is fairly to be inferred that in doing so he mechanically manipulated the lid and shutter. The only test necessary to show that it was operative was to ascertain that it was made in accordance with appellee’s conception. If it was, it was bound to be operative. Exhibit '18 before us shows that it is operative now, and we assume that it was operative then.

There are some devices so simple that a mere construction of them is all that is necessary to constitute a reduction to practice. In the ease of Lindemeyer v. Hoffman, 18 App. D. C. 1, it was held that no actual test of the practicability of a device is needed where the device is itself complete and capable of practical use.

In the case of Rolfe v. Hoffman, 26 App. D. C. 336, it was held that there is a class of simple devices as to which it is not essential that actual tests- of the invention be made in order to constitute a reduction to practice. This case was not dissimilar, on the facts, to the ease at bar. It involved an invention in electric circuit protectors, and the court held that the construction of three of the devices was a reduction to practice, and that aetual tests were not necessary.

We agree with the Board of Appeals that appellee reduced his invention to practice prior to August 15, 1919, which is prior to appellant’s entry into the field, and priority of invention must be awarded to appellee unless he concealed and suppressed his invention, thus forfeiting his right to- such award.

It appears from the testimony that in November, 1922, appellee’s company issued a catalogue in which devices embodying the invention in issue were shown, although the evidence also shows that appellee’s company was not in a position at that time to manufacture and sell such devices. It further appears that orders to the printer for the printing of such catalogue were given on August 15, 1922; that in 1923 appellee’s assignee began the manufacture of the device, and has sold more than 250,000t of the same.

The testimony shows that appellee’s company was in financial straits much of the time between 1919 and 1923, and on November 15, 1919, its plant was almost wholly destroyed by fire, practically suspending operations for a period of one year.

Of course, there could Be no charge of suppression or concealment of appellee’s invention after the publication of the catalogue in November, 1922-, orders for which were given in August, 1922-, Therefore, whether there was concealment and suppression of the invention must be determined from appellee’s conduct between August, 1919, and the middle of August, 1922, a period of about three years. One year of such period is fully accounted for by the fire hereinbefore referred to, and as to the other two years of such period, we do not think the evidence warrants a finding of concealment and suppression forfeiting appellee’s right to an award of priority of invention.

Appellee was not spurred to activity by any disclosure of appellant because, so far as the record shows, he knew nothing about appellant’s invention at the time he (appellee) manufactured his device and placed it upon the market.

Since estoppels preclude a party from showing the truth, they are not favored and should not be applied in any case where the facts do not clearly justify their application. Miller v. Hayman, 46 F.(2d) 188, 18 C. C. P. A. —.

We, find no error in the decision of the Board of Appeals, and it is affirmed.

Affirmed.