OHRISTIE

v.

SEYBOLD.

69

CHRISTIE v. SEYBOLD. (Circuit Court of Appeals, Sixth Circuit. March 22, 1893.) No. 53.

1.

PATENTS FOR INVENTIONS-INTERFERENCE-BILL IN EQUITY TO SECURE LETTERS PATENT-EsTOPPEL.

The failure of a party in an interference proceeding in the patent office to raise the question whether his opponent's invention includes the issue declared in the interference does not estop such party to raise that question in an equity suit, under Rev. St. § 4915, to determine his right to a patent.

2.

SAME-BoOKBINDER'S PRESS.

Letters patent No. 450,882 were issued April 21, 1891, to W. H. Christie, for a bookbinder's press in which the platen could be quickly run up by hand without moving the power-driving mechanism. The patent was granted after a decision in Christie's favor upon an interference with an application by Charles Seybold. In the Seybold invention the pressuro was obtained by a vertical screw, and transmitted to the platen by means of removable pipes of different lengths to suit the size of the bundle. In the Christie invention the power was obtained by a lever and pawl operating in connection with a ratchet Wheel, pinion, and rack bar. In both inventions the platen was -balanced by weights. The interference was declared on a claim for a "platen detachably connected with the power-driving mechanism and provided with a counterbalancing weight," which language was taken from the Christie claim. In the Christie invention, however, the point of disconnection was between the rntchet wheel and the lever pawl. Held, that. this construction was fairly within the language of the claim and interference, notwithstanding that the point of disconnection was not immediately at the platen proper; and that there was an interference between the two inventions. The man who first reduces an invention to practice is prima facie the first inventor under Act July 4, 1836, (5 St. p. 117,) but the man who first conceives the invention may date it back to such conception if he uses due diligence in reducing it to practice, and he must use such diligence before, as well as after, the second conception of the invention. Reed v. Cutter, 1 Story, 590, followed. The person who first conceived a comparatively simple improvement in power presses for bookbinding made a rough sketch of it within a few months. Three years after his first conception he had working draWings made, and six months thereafter a machine was mnnufactured. He excused the delay by asserting that he could neither afford to buy the necessary tools sooner nor URC them in his small shop. His renson for uot having the machine made at another shop was that he would have made no profit on machines made by others according to his invention. Held, that he did not use due diligence so as to entitle him to a patent as against one who conceived the invention later, but reduced it to practice sooner, than himself. A rough sketch of an invention is' not such a reduction to practice as to make its author the original inventor, within the meaning of the patent laws. Under Rev. fit. § 4!.l15, the only question the court can consider is whether the complainant is the first inventor of a. patentable device. 'Whether respondent or a third party was the inventor of the device for which respondent lms received a patent should not be inqUired into either by the court or by the commissioner in interference proceedings between the same parties.
TIITRD PARTY WAS INVENTOR.

8.

SAME-PRIORITY OF INVENTION-REDUCING TO PRACTICE.

4.

SAME-DUE DILIGENCE-WHAT COXRTITUTES.

5.

S.UIE-SXETCH OF MACIlINE.

6.

SAME-CLAIM

70

FEDlj:RAL

Appeal from the Circuit Court of the United States for the District of Kentucky. ., . ! In Equity. ,l3ill bS- Charles, against William H. Chdstie to obtain the issue to complaiiuint of letters patent which hall been refused after a decision against him on an interference. A was entered for compla,,inant. Respondent a,ppeals. Reversed. by TAFT, Circuit Juqge:
'l'hiswas all appeal fromadecree of the circuit court of the United States fOr the district of Kentucky, directing the commissioner of patents to issue :J patent to Charles Seybold, the appellee and complainant below, for a deYice in a power used in bookbinding, whereby the plnten is "detachably connected 'with ,'powel'-drivl:iJ.g mechanism and provided with a balancing weighU',,'rrhe'bill' was,!ft.1ed below nUder section 4915 of the Revised Statutes, whiehi pm'videSliS fOl'iaws: "Whenevetl a piatent, on application, is 1'1'fusea,. commissioner of patents, orb'y ·thesupreme court of the District'of'Coltutlbia upon appeal from the 'commissiOner, the applicant may have remedY" by bill in and the court having cognizance thereof, on notice t<J adverse parties and 'other due proceedings had, may adjudge that such applicaht is entitled, according to law, to receive a patent for his invention, as specified in his chUm, or for any 'part thereof, as the facts in the caSel may' appear; and such adjudication, ifit· be in favor of the right of applicant, shall authorize the commissioner to issue such patent, on the applicant filing in ,the patent 'office a C{)py of the adjUdication and otherwise complying with 'the requirements of law. In all cases where there is no opposing party oopy of the bill shall, be served on the commissioner, and all the expenses of the proceedings shall be paid by the applicant, whether the decision is in his favor 01' not." : '1'he appellant, Christie, who was respondent below, secured a patent, one I claim of which covered the device which Seybold avert'ed that he first inYented. Seybold filed his application June 6, and Christie, his, June 7;' lS89. An interference was declnred between them in the patent office, on the following claim: "In a power press a platen detachably connected with . the power-driving mechanism and provided with a .counterbalancing weight." 'rhe commissioner decided the interference proceeding in favor of Christie, and issued a patent to him, rejecting Seybold's application. Christie lives in Kentucky, and Seybold therefore began proceedings against him in that district. 'rhe invention in controversy was an improvement in presses used by binders for ,compressing the sil,,'11l\tul'e hundle iuto a solid form, allout which is applied the coyer to mal<e the compkte book. The platen is the upper plate of the press. As the signature bundles vary much in size, it is of advantage to move the platen up and down in the press 'llllCkly in order to give space for the of thl' bundle under it. The mechanism· used for producing a strong pressure, whether it be it screw or other means, has a slow 1l10ve·m/2nt. If the platen 1.-; rigidly connect.'d with this power-pressure mechanism, it cannot be moved. upward l)r downward to release the blUldle or readjust the space for a different bundle with much greatt;r rapidity than when pressure is hf'ing applied. '1'he improvement was in so detaching tlw platen from the power-pressure mechanism as to allow it to move up and down independent of that mechlmism, and, by means of counterbalancing weights,. to render its movement very easy. device consisted of a top cast portion, A, and a base or bottom, B, l\'hich are by snitl1ble stay rods, C, three on (·ach side, which fonn fl frame for the sUPPl)rt of b;>p plate and screw rod. The top plate, was proYioled with the central screw-thread hole, through which the screw, D, The platen, II, was 8uspended between the stay rods, C, by means,ot suitable chains passing over suitable pulleys secured in brackets attached to the top plate and attached at the other end to the balancing weights, which were adapted to slide up and down on the outside of the stay

a

OHRISTIE V. SEYBOLD.

71

rods. 'The platAIl was guided by the st:lY rods in its up lind down. Screw, D, was moved lW a hand wheel and a lever, and the end of the screw, D, was eonnectecl with the platen by the connecting- pipe, I, which served to communicate the In'es8uI'e from the screw to the platen, and 'vas merely an extension of the SCI'ew. A number of such connecting pipes, of different lengths, were provided to ,mit the of the bundle. The pipe, I, was ('asily l'eIllovalJh', By taking it out, the platen, H, might be moved up or down freely lUHl easily by r('ason of the eounterbalap.cing weights, and its height adjusted to leave the proper' space bctw('cn the platen and the base. Christie's paumt consisted of a pr('ss frame with a platen moving up and down between the sides of the frame as guides, and having rigidly attached to its upper side a rack bar, which, extending up through the top of the press frame, engaged with a pinion or small cogwheel mounted upon a shaft journaled in two upright brackets fixed to the top of the press frame. To the same slmft were ratelwt whePls, Which, by means of pawls and a lever, were rotated, driving the pinion, forcing downward the rack bar, mrd bringing the required pressure on tlw platen. On top of the rack bar was a cross bar, to the ends of which were attaelwd cords passhrg up over pulleys journaled in upright posts supported oa the top of the press frame, and earrying counterbalancing weights equal to the weight of the platen. The pawls which were engaged with a ratch('t wheel to produce a rotary motion, forcing down the platen, might be thrown out of engagement with the ratchet wheel, and then the platen might moved up or down easily by the aid of the eOilllterbalancing weight. In doing so, of course, tlIP pinion and rate11Ct wheels turned with the movement of the rack bar, but offered no obstruction to the upward or downward movement of the platen. The facts with reference to the invention by the two parties wero as follows: Seybold conceived of his invention in adobeI', 1885, and malle a rough sketch of it, which he showed to several persons in .Tanuary, 188n. He wa;; a maehinist and inventor, and eng'lged in manufacturing number'lug rir:ldrines, perforators, cutting machines, index cutters, pasting machim's, glueing machines, wood-staining machines, graining machines, polishing machines, sandpaper machines, and general repair' work. At the time of his conception he that he did not have the proper tools in his shop to make the machine. It would have a planer, a long lathe, and a bOling mill. He did not have the requisite tools until he moved into his new shop, on 'Vebster street, in tlw month of March, 1889. From October, 1885, until October, 18S8, ho did nothing towards redueing his machine to practiee, At the latter' date he had full-sized drawings made, and his first machine was made in April, 1889. He applied for a patent June G, 188U, The only reason which Sl'ybold gave in the proceedings in thl' patent office for the delay in reducing his maehine to practice was that he did not have the necessary tools or room in his shop. On the hearing below, another deposition was takE'n, in which he gave an additional reason. His evidence was as follows: "Question. Please state why you dill not have the proper tools, or why y011 ;lid not secure ,hem in the cnrly part of 1886. Answcl'. Because my financial condition was such that I could not possibly buy those tools. "Q. 4. Is there any otllPr reason yOll can gin"! A. Yes, sir. "Q. 5. Please give it. A. It would been possible for me to order the press built by som') other party; In\[. as it has been my objeet to eonstruet this press to bl' pnt on the market,. :lIld the priees of Dl'CSiolPS built by my competitol's, I fonnd it impos..;ihlp to build the press at the competition . figure if ol'dpred to 'be buHt in outside shops. "Q. G. TIl!' rpason, then. that you did 110t have a peess built you had invented. U'e was there would have heen no profit in it for vou"! Is tllis COI1'Pct or not'? A. Yes, sir." claimed tv have conedved of his invention in the summer of 1886. He had ·working drawings made and patterns ordered for the production of his press in the ;'pring and summer of 18'38, and his press was completed about .July 1:!tl', of that year. The lll:lchine was set up and put in operation in the Book Concern of Cincinnati about that date, and continued in operation until the bill herein was filed. A !'!econd machine was built in

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FEDERAL REPORTER,

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put in in that building. He filed an application for a patent .Tune 7, pelow held that Seybold was the first and tme inventor of the machine, and entered a de-cree directing the commissioner of patents to issue a patent to him. The decree was based on the finding that while Seybold's device disclosed, "in a power press, a platen detachably connected with the power-driving mechanism," Cluistie's device did not.

Wood & Boyd, for appellant. O. :M:. Hill, for appellee. Before JAOKSON and TAFT, Oircuit Judges, and HAMMOND, District Judge. TAFT, Oircuit Judge, (after stating the facts.) The questions arising in this case, covered by the assignments in error, are two: First, does Ohristie's invention or device show, "in a power press, a platen detachably connected with the power-driving mechanism and provided with a counterbalancing weight?" and, second, if it does, which one of the two, Seybold or Christie, was the first or true inventor, within the meaning of the patent laws? It is contended by appellant that it was too late for the complainant to raise the question, in the court below, whether Christie's device includes "a platen detachably connected with the power-driving mechanism," because it was not raised in the interference proceeding in the patent office. It is said he is thereby estopped to make it. We do not concur in this view. The interference issue is drawn up by the patent-office examiners, and the interference is declared, before either party has access to the specifications of the other, and the claims made with respect to the issue are submitted before the specifications are disclosed. Subsequently, perhaps, the question might be raised, but we do not think that a failure to raise it in the patent office prevents its being brought to the attention of the court in a proceeding like this by independent bill. The fact, if it be a fact, that the invention of one of the parties does not include the issue declared in the interference, is apparent on the record. In one of the two cases considered by the supreme court under this section it was held that the court of its own motion must declare that the issuable device in the interference proceeding was not patentable for want of invention, and could therefore dismiss the bill, although the question had not been raised either in the patent office or by the parties in the court below or in the supreme court. Hill v. Wooster, 132 U. S. 693, 10 Sup. Ot. Rep. 228. We do not see why the court has not the same power with reference to the present question. The fact, if it be a fact, that Seybold did not raise it in the patent office, may, of course, affect the weight of his present objection, but it has no force as an estoppel. Ooming now to the question whether the Christie device embodies that which is described by the issue framed in the interference proceedings, we find that the issue was adopted by the patent office from the language of the first claim of Christie's patent,

CHRISTIE V. SEYBOLD.

73

and the question presented is really whether Ohristie's specifications entitle him to his first claim. In his specifications Ohristie says:
"My invention refers to an improvement in a press especially adapted for bookbinders. It relates more especially to a press platen which is made detachable from the mechanism and suspended by the counterpoise weight. The object of my invention is to proviUe ready means for raising and lowering a press platen by hand, without ba ving to manipulate the power-driving mechanism, the various features of which will be set forth in the description of the accompanying drawings. * * * I preferably employ a rack bar and pinion driven by ·a ratch<:!t level' to obtain power for compressing the platen, as it is rapidly and easily manipulated. The power is conveyed as follows: 13 represents the teeth of the rack bar, which engage with pinion, l·i, mounted upon shaft, 15, which is journaled in ears of brackets, 16. * * * On the opposite side of the ratchet wheels I provide a duplex holding pawl, 31, which engages with the ratchet wheels. This pawl is nominally held in engagement with the ratchet teeth by mC'llll-> of the spring, 28, which presses them up, and they are held out of engagement hy tlw wedg'e, 29, whieh is opl,rated by the level', 30. 'When lever, 30, is depressed, the wedge, is raised up, and the spring, 28, presses tllP pawl, 31, into engagement with the teeth of the ratchet wheel. When said lever is raised up, it pulls the wedge, 29, down in between the holding pawl. 31, and the rear edge of the rack bar, 6, which prevents the engagement of the holding pawl, 31, with the teeth of the ratchet wheels. When Jpver, 18. stands in its normal position (shown in figures :2 and 4) the pawls are also in disengagement with the ratchet driving wheels. '1'he press platen, 5, is therefore free to move up and down by extraneous means, so as to be adjust..,d to a.ny desired height. * * * The above driving mechanism, with the shipping and unshipping connections, is the preferred form of constl1lctioIl, but I do not liplit myself to said means, except where they are made special features of claims herein; but the importance of sustaining the platen by counterbalance weight, and having it readily detachable from the driving mechanism, so as to be raised independent thereof, is the special feature of invention. * * * '1'he principal object to he accomplished by the above-described invention is the ready arrangement of the press platen by hand, without manipulating the same by the pO\V8r lifting and depressing mechanism,as, for instance, in a boold}inding or other similar use, the rapid operation ot the press is a very important feature, Hnd is accomplished by means to disengage the platen from the power-driving mechanism and suspending it by a counterpoise weight, allowing it to be readily raised or lowered, as the case may be; and the within-described mechanism I believe to be the best, and is claimed herein as of my invention."

Then follow the claims, the first of which is:
"In a. power press, the lll:1ten, 5, detachably connected with the powerdrivin;!: n1l'chanism and connterbnlanccd by the weight, to hold the same in any adjusted position, substantially as specified." .

The court below held that the power-driving mechanism consisted of the lever, the pawls, the ratchet wheels, the pinion, and the rack bar; and that as the ratchet wheel and pinion were fixed in their relation to the rack bar, and the rack bar was fixed to the platen, the power-drhing mechanism was not detachably connected with the platen. We think this construction too narrow. The expert for the complainant below testified that he had never heard the expression "detachably connected with," but that in this view it must mean that all the mechanism used to transmit the pressure to the platen should be capable of being detached from the platen. The patent

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olIj:ce' took 'the :expression frorlithe: specifications and claim or ahditisonly fair, therefore, in oonstruing the meaning of the term, if ambiguous, to look into Christie's speciticaHons to see what, in JMt, is meantbyt;he term "detachably connectedwith the power-drhing mechanism." OfCOllI'Se Christie's specifications cannot be used Tor this, pl1rposp, if by so doing we are taken out of the. Seybold bnt if tIl(> issue framed by the patent office, by a fair const,ructlon, will inclnde a featmc present in both inventions, then it.is the duty of the conrt to lean to that construction l'atlwr than to give ita strict and narrow,p:ne which ",ill ,describe something present only in one. We are very de,ar that the two inventions hiwc a common featnre, viz. the :easy elevation, and,}owering of the platen, secured by a counterbalancing weight and a device for the disengagement of theplateu' from the power-pressure Inechanism and consequent independence thereof. 'rheamount of power required to compress the bundle makes necesBary a somewhat cumbersome and slow action in the powerpressure mechanism. The object of both inventions is to temporarily free the platen from connectiqn with the slowly-acting mechanism while the bundle is being put in the press. A device which unships the machinery conveying the great pressure power to the platen, so as to permit a free movement of the unrestrained by its connection with that machinery, makes the connection between the platen and the power-driving mechanism "detachable," within the meaning of Christie's speeifications and the issue framed in this case by the patent office. It may be true that in a certain sense the pinion and the ratchet wheels and the rack bar are part of the power-driving mechanism when in Mtion, though our impression is that, as the power is applied first on the lever, the machinery conveying the power to the platen beyond the lever is power-transmitting mechanism, and that the lever and pawl only may be :properly called the "power-driving mechanism." But, whichevel'. is the view, it is certain that, as soon as the pawls and lever whichcoinmunkate the power to the' ratchet wheels are un,shipped, the wheels and the pinion are free to move without opposing any obstruction whatever to the easy up and down movement of the platen. When thus detached they are certainly no part of the power-driving mechanism. The result is exactly the same as if they removed from their connection with the raek bar, because they make no resistance to the movement of the rMk bar and platen. The specifications do not :limit Christie to this one mode of applying the power, but the le:ver,' pa\vl, and ratchet arc described by him as the preferable mode. There are many well"known equivalents, and were at the time of this invention, of this power-driving mechanism,' notably the screw described in Seybold's invention. For t.hese 'reasons we are unable to agree with the learned judge below in1'espeet to the gronndnpon which he placed his decision. We are therefore brought to consider the question which, in the view he took of the case, he did not find it necessary to pass upon,-

CHRISTIE V. SEYBOI,D.

75

that is, who was the first and true inventor of that feature which we have found to be common to the two devices, and which is here the subject of controversy? The patent statutes have always required such particnlarity of description in the applications for a patent as to leave no doubt that in the eye of the law he is the first and true inventor who first reduces the conception of a new invention or discovery to practical and operative form. In Bedford v. Hunt, 1 Mason, 302-304, Mr. Justice Story said:
"The first inv,mtor who hfls put the invention into practice. and he only, is entitled to a patent."

And again, on page 305, he says:

"'1'he intent of the statute waR to guard against defeating patents by the setting up of a prior invention which had never been reduced to practice. If it wcrc the mere spt'cu'ltiou of a philosopher or a mechanician, which had never been tried by the tpst of expC'rience, and never put into actual operation by him, tile law would not deprive a subscquent inventor, who had employed his la.hors and his. talents in putting it into practice, of the reward due his ingenuity and enterprise."

So in Agawam Co. v. Jordan, 7 ·Wall. 583, Mr. Justice Clifford states the rule as follows:
"'rhe settled 1111e of 'law is that first perfeets a machine Is entitled to a patolt, and is the real inventor, although others may have previously had tllf' Idea, and some pxperlments towards ]Jutting It In practice. He is the Inventor, atld Is entitlpd to the patent, who first hrought the machine to perfection, and made it of useful opemtion."

So in Whitely v. Swayne, 7 'Vall. 685, 687, Mr. Justice Nelson said:
"He is the first inventor and entitled to the patent who, being an orll,,'inal discoverer, has first perfected and adapted the invention to actual use."

This is the general rule, and had no exception under the statutes in force down to the act of July 4, 183li, (5 St. p. 117.) The fifteenth section of that act, in specifying the defenses which a defendant might set up in an action for infringement, permitted him to plead that the patentee "had surreptitiously and unjustly obtained the patent for that which was in flict invented or discovered by another who was using reasonable diligence in adapting and perfecting the same." The effect of the change made by the act of 1836 was considered by Justice Story in the ease of Reed v. Cutter, 1 Story, 590, where, referring to the words "was using reasonable diligence in adapting and perfecting his invention," he said:
"'l'hese latter words were copied from the fifteenth section of the act of 1836, c. :31)7, and constitute a qu.tllification of theprec0ding language of that section; so that an inventor who has first actually perfected his invention wlII not be 'deemed to have surreptitiously or unjustly obtained a patent for th,tt which was in fact first invented by another, unless the latter was at that time llsing reasonable diligence in adapting and perfecting the same. And this ,1 take to be clearly the law; for he is the first inventor in the sense of the act, and entitled to a for his inventioll. who has first adapted and perfected the same to use; and until the invention is so perfected and adapted for use .it is not patentable. An imperfect and incomplete invention, existing in

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intellectuaL notion, or in uncerta\n e"lleriments, and not actually practice, and cw.bodied in some 'distinct nl:1chinery, apparatus, rnanufacfure, or compositlon'of matter, IS 'n()t, !Jnd indeed cannot be, patent3.ble under our patent acts, since it is utterly impossihle, under such circumstances, to comply with me fundamental requi$ites of those acts. In a race of diligence ,between two iI).dependent inventors, he. who first reduces his invention to .a fixed, positiv.e,. and practical form would seem to be entitled to a priority of right to a patent therefor. Woodcock v. Parker, 1 Gall. 438. The 'clause now under consideration seems to qualify that right by providing that in such case he who invents first shall have the prior right, if he is using reasonable diligence in adapting and perfecting the same, although the second inventor h:1s, in fact, first llcrfected the same, and reduced the same to practice in a positive form. It thus gives full effect to the well-known maxim that he has the better right who is prior in point of time, namely, in making the discovery or invention."

thElQl.w

Reed v. Cutter is a leading case, and has been followed by }rIr. Justice Clifford in "'llite v. Allen, 2 Cliff. 224, 2 Fish. Pat. Cas. 440, and 1n later cases. , It is obvious from the foregoing that the man who first reduces an 'invention to practice is prima facie the first and true inventor, but that the man who first conceives, and, in a mental sense, first in· vents, a machine, art, or composition of matter, may date his pat· entable invention back to the time of its conception, if he connects the conception with its reduction to practice by reasonable diligence on his part, so that they are substantially one continuous act. 'The burden is on the second reducer to practice to show the prior conception, and to establish the connection between that conception and his reduction to practice by proof of due diligence. It has sometimes been held, in the decisions in the patent office, that the necessity for diligence on the part of the first conceiver does not arise until the date of the second conception; but this, we think, cannot be supported on principle. The diligence of the ,first reducer to practice is necessarily immaterial. It is not a race of diligence between the two inventors in the sense that the right to the patent is to be determined by comparing the diligence of the two, because the first reducer to practice, no matter what his diligence or want of it, is prior jn right unless the first conceiver was using reasonable diligence at the time of the second conception and' the first reduction to practice. The language ,of .the statute, (section 4920,) in the use of the imperfect tense, "was using reasonable diligence," shows the legislative intent to confer· a prior right on a first concei \Ter in a case where, after his mental act of invention, and pending his diligent reduction to practice, another inventor enters the field and perfects the invention before his rival. The reasona,ble diligence of the first conceiver Inust be pending at. the time of the second conception, and must therefore be prior to it. Reasonable diligence by the first con,ceiver, beginning when his rival enters the field, could only carry his 'invention back to the· date of the second conception, and in the 'race from that time the second conceiver must win because of his 'tirst reduction to practice. See Rob. Pat. §§ 384--386; Millward v. Barnes, 11 O. G. 1060. The elaborate opinion of the commis.sioner of patents, Mr. Mitchell, in the interference proceeding be-

CHRISTIE

v.

SEYBOLD.

77

tween Christie and Seybold, reported in 54 O. G. 957, cites all the authorities, and is quite convincing on this point. We fully concur therein. As Christie reduced the invention to practice nearly a' year before Seybold's press was made, the burden is on Seybold to show that from the time of his original conception, which antedated that of Christie, he was using reasonable diligence in adapting and ·. perfecting his idea to practical use. Has he sustained that burden? It is quite clear to us that he has not. The question of reasonable diligence in any Case depends, of course, upon all the circumstances. A complicated invention, requiring many experiments and much study to give it practical form, would reasonably delay a reduction to practice after the first conception for a greater length of time than where the idea and the machine embodying it were of a simple character. Bradford v. Corbin, 6 O. G. 223. Then, too, the sickness of the inventor, his poverty, and his engagement in other inventions of a similar kind are all circumstances which may affect the question of reasonable diligence. See Webster v. Carpet Co., 5 O. G. 522; Cox v. Griggs, 1 Biss. 362, 2 Fish. Pat. Cas. 174; Munger v. Connell, 1 O. G. 491; Proctor v. Ackroyd, 6 O. G. 603; Cushman v. Parham, 9 O. G. 1108. In this case, Seybold's first conception was in October, 1885, and he did not reduce his machine to practical form until April, 1889, three years and a half later. He made a rough sketch in January, 1886, which he subsequently lost. In October, 1888, three years after his first conception, he had working drawings made, and six months later a press was manufactured. His excuse for his delay is that until the spring of 1889 he could not afford to buy the necessary tools for the manufacture of the press, and, if he had been able to do so, his shop was not large enough to permit the use of them. He does not say, however, that he had not the means to have the press made at some other shop, where the proper tools were to be had, but, on the contrary, intimates that he might have done so, but for the fact that there would have been no profit for him to sell machines made by others according to his invention. Now, we do not think this a good excuse for failing to make at least one machine, in accordance with his conception. It is as much as to say that in his view his new conception, when reduced to practice, would not have sufficient value and utility to bring him any return commensurate with the outlay required to reduce it to practice, and in consequence he indefinitely postponed putting it into practical form until circumstances should change. This is a temporary abandonment of the idea, (White v. Allen, 2 Cliff. 224,) and is not the due diligence which entitles him to the favor of the public, for whose benefit, primarily, the patent laws were enacted, (Wright v. Postel, 44 Fed. Rep. 352.) It can hardly be claimed that the rough sketch made by Seybold of his proposed press in January, 1886, was a reduction to practice. It has been held in many cases that drawings, much more complete tl).an the one here testified to, are not reductions to practice, as against a subsequent conceiver who first made an actual,

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vol-55.

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operative machine. Reeves v. Bridge Co., 5 Fish. PM. Cas. 456; Lubricator Manuf'gCo. v.Renchard, 9 Fed. Rep. 293, (opinion by Mr. Jqstice Drill Co. v. Simpson, 29 Fed. Rep: 288; Ellithorpe ",.'Robertson, 4 Blatcnf. 307; DraperY. Mills Corp.; 13 O. G. 276; Odell v. Stout, 22 Fed. Rep. 159. Further objection to reversing the decree is made on behalf of appellee,on the ground that Christie was not the true inventor of the machine for he obtained the patent. It is said that Christian Keck, Who was in his employ, was the real inventor. We do not see how this is a subject which can be here investigated. The question here (section 4915, Rev. St.) is only whether Seybold was the first and true inventor. It is certain that some one reduced the Invention to practice before Seybold did, and, if that is so, Seybold Is not the first and true inventor, unless he was using reasonable diligence to adapt and perfect his conception; and we haye found that he was not doing this.. If Christie's patent is vOId because he was not the first and true inventor, and Keck was, that would not entitle Seybold to a patent. The commissioner of patents did not consider the question, and we think he acted rightly in this r e s p e c t . . . On the whole case we find, therefore, that Seybold is not the true and first inventor. The decree of the cotirt, below is reversed, with instru..ctions to dil;,miss the.bill at the costs of the complainant.

v. HUNT et at .(Circuit Court of. AppealS, ]'irst Circuit.
No. 40. 1.

PATENTS FOR INVENTIONS-CONSTRUCTION OF CI,AIM-COMBINATION.

April 13, 1893.)

Letters patent 321,833, issued July 7, 1885, to Cornelius E. Masten, for a firecracker, covers, in cHUm 1, the match, B, the fuse, C, in combination with the solid plug, D, and body, A, substantially as set forth. The specification makes no reference to the prior state of the art, and merely states that the invention produces "a mpre desirable article" "than is now in ordinary use," without particularizing the points constituting the improvement.· Held, that the presumption of novelty applies to the combination as aWhole, arid; in tbe absence of evidence as to the prior state of the art the court has no pOwer to declare that the match, B, or its equivalent was not essential·. and to hold that a like cracker, with a continuous fuse, is an infringement. 51 Fed. :Rep. 216, affirmed. The 'use of the conjunction "and" between the words "match, B,"· and "fuse, C," does· not show that the match and· fUSfl constitute but one eleInent, of .which a continuous fuse would betlw equivalent. 51 Fed. :Rep. 216, affirmed.

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A,ppeal from the Cir(juit Court of the United States for the District of Massachl!setts.: . .:1 IIi Equity. This "Vas' a suit by Cornelius E; Masten ward S. Hunt and others for the infringement of letters patent :No. 321,833, issued July 7, 1885, forA The circuit ('ourt dismissed· the bill; its' opinion, which is adopted by the circuit