end of the retort, and was there Cl more slowly volatilized" and mixed with the natural gas. The product of this operation was mingled with ordinary coal gas, and the admixture supplied to consumers. This pro· was practiced at the Beaver Falls Gas-Works, constantly, for the pe· riop ofa year or more, and was then discontinued because the result was · Unsatisfactory; the compound gas, when any great quantity of oil was used, burning with a smoky flame, and the diminution of the quantity of oil producing gas of low candle power. Such being the facts, I do not see how it can be' denied that the process so practiced at Beaver Falls 'fas the same as that described in Smith's patent, and was an anticipation.. What Inore does the patent disclose than was there known and ,,ptirs.ued"l. As to the proper proportiotl.sin the admixture of the natural 'gas and'the fluid hydrocarbon, the patent is silent. It gives no instruc· tion 'whereby the excessive employment of the enriching agent may be avoided. Nor can the transaction at Beaver l!'alls be deemed an unsuccessful and abandoned experiment, within the meaning of the patent law. Ani illuminating compound gas was thete actually produced, and for a longtime was extensively used. The cessation of the use was not because the, process was' impracticable, but by reason of the unsatisfactory natu'te of the product, in that the compound gas burned with a sttlokyflame. And here it must be observed that there is testimony in the case tending very strongly to show that smokiness is a defect inherent in gas produced by combining natural gas and petroleum gas, for the reason tbatnaturalga!! is ueficient in hydrogen. I will not, however, discuss that subject. It is enough here to say that in my opinion the defenseo£anticipation is made out. The defendant sets up other defenses, which have not been alluded to andwUl not be consider,ed here, inasmuch as, for the reasons already ,given,ithe. bill of complaintmllst be dismissed. Let a decree be drawn dismissing the bill, with costs.
MoCmUuCK HARVESTING MACH.· Co. 'V. MINNEAPOLIS HARVESTER
(ci.rcui.t Court, D. Minnesota. April 7, 1890.)
'PATBNTIl ·FOB Il!iVBNTIONS-I'BIOBITY -LACHBS.
, .An in grain-binders was conceived, l;Ind orally explained by the in'ventor,iiiJunel..1879, to persons skilled in tbe operation of harvesters, and their conatru1)tion. ,J:1is devices. were construoted and in operation on a maohine in the of 1tlSO, and a patent was applied for in June. 181:>1. Complainant's l;ISsignor'applied for a patent in Aprll,1880. Held, that the first inventor did not lose his claim topi'iority by delay.
, In Equity.
Bill to determine priorityofinvention.
Pamnson & Parkinson, for complainants. J. R.BenneU, for defendant.
.'CORMICK HARVES'rING MACH. CO. V. MINNEApOLIS HA1wESTER WORKS.
NELSON, J. This is a suit in equity, brought, under section 4915 of the Revised Statutes of the United States, by the complainant, to whom a patent on application was refused by the commissioner of patents, praying a decree that he is entitled, according to law, to receive a patent for his invention relating to improvements in grain-binders, as specified in the following claim: "In combination with the knotter, a cord-holder, mounted on a frame, pivoted as described, to oppose its weight to the stress of the cord, a projecting arm from said frame, and a cam upon a revolving shaft, adapted to force said holder down, after the knotting operation terminates." The complainant brings the suit as assignee of Charles Jewell, and against the defendant, who is the assignee of JohuF. Appleby. The answer denies that Jewell was the first inventor, and entitled to Ii patent therefor. The cause is put at issue by replication, and the only proofs submitted were those taken in the patent-office, during the pendency of an interference between the invention of Jewell, as heretofore set forth and claimed, and the second claim of Appleby, which is in the following words: . "In combination with the tyer and cord-holder, mounted on the swinging frame, Z2, pivoted as described, to oppose its weight against the cord; the arm, f2, on said frame, and the cam, f3. on the shaft, f, adapted to control the action of the cord-holder, substantially as and for the purpose hereinbefore described." The examiner of interferences, the board of appeals, and the commissioner 01' patents adjudged priority of invention in favor of Appleby, and refused a patent to Jewell's assignee. Subsequent to the commencement of this suit, a bill in equity was tiled by the defendant against the complainant in this cause, a patent having been issued to it, as assignee of Appleby, embracing the claim above set forth; and all the copies of the patent-office records in the latter cause, which are now pending in this court, are stipulated into this <Jause. The application of Jewell was formally filed on the 23d of April, 1880. The application of Appleby was filed June 29, 1881, and a patent was issued, embracing this claim, August 15, 1882. On the testimony before the patent-office, the examiner and the board of appeals promptly decided in favor of Appleby. The commissioner of patents, however, expressed grave doubts about the correctness of the award of the board of examiners, but refused to overrule it. The claim of Appleby to priority rests upon the testimony of Dixon, Carver, and Appleby himself. Dixon, who is an expert in patent matters, testifies that Appleby explained to. him the invention for which Jewell's assignee now :asks a patent about the 15th of June, 1879, and that his explanations were made in the presence of a grain-binder, and that they were perfectly intelligible to him, and that Appleby pointed out on the grainbinder presen\ how he would apply the invention; and in fact that the ex.planations were made so clear that he or any good mechanic could have made the device from the descriptions given. He says in his in answer to the second question-
,.. acquainted with John F. Appleby, now present, and a party tc> tbis interference? .dm7!J/lr·. Yes, sir.Q. 3. How long ha'll! you known him, a,nd when and where have you principally met him? .d. I have known him since the fall of 1878. Met him in Plano, Illinois, in 1879 and 1880. '" '., ' . ' Q. 4. What was he doing, and what were you doing, when you lIlet hilll in Plano, Illinois? .d. He was adapting bis binder to our harvester. I was looking after Mr. Deering's business, as I am now. Q. 5. Had you any CilDvewation with Mr. Deering If< · · · in reference to the device which holds'the cord below the knot-tying If so, state when. .d. I had, about the of June, 1&79. Q. 6. Spate what the convers.ath>n was. .d. Well, we were trying kinds of cord,-'-and there was one kind-' jute cord,' I think they calledit--that we couldn't make work. It would pull in two before it would draw through the disk. Mr. Appleby reto me tbat he had a deVice by which he could float the disk. the notched Wheel forming part of the cord-bolding mechanism, and use that cord. He went on to explain It to me, and. I objected to it on the ground that he could not cam it up in 'correct timewlth the knotter, and would break the cord·....· He explained that· he had that fixed all right, as he would cut away the cam, and let the cord draw the cord·holderup to tbe knotter, .as the knotter required the cord, and only cam it down. l remarked to, him that I thought that was all right, and I had no more conversation on that subject with him until the device." Jewellponceived the invention not earlier than the time when Brown, according to .the testimony, placed' the Qrm in the binder in September, 1879. Cable testifies that he saw Brown put it in at that time. Brown swears he did the work in the summer or fall of 1879, and Van is certain the cord was not .operated by the depending arm and cam in 'July, 1879,and that the arm was not on the cord-holder at that *n.e. ". Appleby conceived the invention as earlyas June, 1879, as the testimony of Dixon and Carver, whieh corroborates Appleoy.Sbufeldt, employed by the Minneapolis Harvester Works at the time Appleby was superintendent, made the patterns of Appleby's device the latter part of July or the 1st of August, 1880. He testifies that Appleby took him to a machine (an Appleby binder) that had no ing frame 'upon it, and orally described the device, and pointed out with his hand What he wanted put upon the binder, and from that description he understood how to make the patterns, to apply the'device to the machine, anp how it was to operate. 'The machine was. made as soon as the patternswel'e finished, and was cothpleted not later than August 15, 1880, and was operated in the field the same month. The real question is, was the decision, giving priority to Appleby, or did the delay of Appleby in putting his device in operation in the field , and in filing his llpplicatioi) for a patent, deprive him of his claim to priority of invention? The trnel'ule is, as between two inde1;>enaent inventors, each claiming priority of invention"That if the flrst person to and disclose an invention, actuallyroollcesit to practice, and connects his conception and completion by his circumstances and the character of his invention admit such of, his rilthtto a patent cannot be defeated by any amount of diligence in com· ing to the patent-office of an inventor whose conception is of later date." Hunter v. Miller. 50 O. G. 1766.
lI'CORMICX HARVESTING MACH. CO.".MINNEAl>OLIS HARVESTER WORKS.
He who first conceives and gives expression to the idea of an invention in such clear and intelligible manner that a person skilled in the business could construct the thing, is entitled to a patent, provided he uses reasonable diligence in perfecting it. Such description or expression of the idea may be oral, and need not necessarily be in writing, or accompanied by a drawing, and the right of the first inventor is not lost merely by lapse of time . between the invention .and application for a I>ietz v. Burnham and Gibbs v. JohnstYn, MORRELL, J. See Laws. Patent Dig. 429. Judge STORY states that rule in Reed v. Cutter, 1 Story, 590, as follows:
"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 has in fact first perfected the sawe, and reduced the same to practice in a positive form."
And in Hubel v. Dick, 28 Fed. Rep. 140, Judge SHIPMAN, in the case under consideration by him, where the time during which the inventor being chargable with laches was 19 months, and 10 months elapsed after the completion of the machine, and before he applied for a patent, said: "lcannot say that there were such laches as should deprive him of the reward which ordinarily attends priority of invention." I think the testimony also justifies me in saying that Appleby used proper diligence during the period between his conception and description of the machine to Dixon and Carver and the completion of his invention, when the castings were made irom Shufeldt's patterns, and the machine put in the field. Appleby was entitled toa 'reasonable time, to be judged of according to the circumstances of the base, in which to perfect his invention, and reduce it to practice, without impairing his claim to priority. His invention was an important one, and he had a. machine with it on in the field before the close of the next year's harvest, after his description and explanation of his invention to Dixon and Carver. He might have been more expeditious in having a machine made embodying his invention, but did he delay for an unreasonable period the practical embodiment of his mental conceptions, so as to deprive him of his claim of priority? The answer to this question is not free from doubt; but, considering the nature of the invention, and also the fact that Appleby was engaged in making application for other important improvements then in use connected with harvester machines, I do not think such delay fatal to his claim of priority. A decree will be entered dismissing the bill.
(Circuit Court, W. D. Pennsylvania. May 6, 1890.)
PATENTS FOR INVENTIONS-NOVELTY-INFRINGEMENT-MANTEL FRAMES.
Letters patent No. 389,840; granted September 11,1888, to Schuette & Co., assignees of .Robert B. Thompson, for an improvement in the construction of mantels, whereby oneslZe of mantel frame may be fitted to fire-places of different sizes, do not disclose an invention of any primary character; the same generalresult having already been achieved. The pa,tentees are to be confined to their specific form of construction; and their rights are not infringed by mantels made under letters patent No. 4OIl,596, granted to William Anderson on August 20, 1889.
W. BakweU ac Sons, for complainants. Joseph R. Edson, for defendant.
ACHESON, J. The plaintiffs, to whom, as assignees of Robert B. Thompson, the inventor, letters patent No. 389,340, for an improvement in the construction of mantels, were issued on September 11, 1888, sue the defendant for the alleged infringement of the same. The declared object of the invention is to provide a construction for mantels whereby one size of mantel frame may readily and accurately be fitted to fireplaces of different sizes; and the specification thus states what the invention is: "The improvement consists in combining With the frieze and pilasters of the mantel frame a lintel. extending below the frieze, and jambs extending inward .from the pUasters, the jambs and lintel being connected by a tongue and groove slide joint, substantially in the manner hereinafter described, and . as pointed out hl the claim." . Then, after a reference to the accompanying drawings, follows this particular d eseription: "A designates a mantel, which may be constructed, as usual, of wood or kindred material, with ambre or less ornamental frieze. B, and pilasters, C, inclosure which is to be fitted to the fire-place, in front of which forming the mantel is to be arranged. To this end, in my a wooden or other litltel, D, having a longitudinal groove, D', in its lower edge, is fastened alongtbe back of the frieze, B, with its lower edge extending below the same. so as to make-the opening the desired height. Jambs,. E, having tongues, F, on their upper ends adaptl'd to the groove, D/, in the lintel, are then cut to the desired length, and s\l.itably fastened to the backs of the pilasters. C, with their tongues, F, resting in the groove, D',· and at an eqtlal and such a distance from thtJ center line of the fire opening as to make the width of the same correspond to that of the fire-place." The claim of the patent is in these words: "A mantil constructed of a frieze, pilasters fixed to opposite ends thereof, a lintel secured detachably to the back of the frieze, and projecting below the same, and jambs secured detachably to the backs of tho pilasters. projecting in ward beyond the same, and connected by an adjustable slide joint to the detachable lintel, substantially as described." The "adjustable slide joint" designated in the claim is, of course, the tongue and groove joint to which, as we have seen, such prominence is