majority">Mr. Justice Morris

delivered the opinion of the Court:

We are confronted here by a situation somewhat analogous to that in the case of Oliver v. Felbel, 20 D. C. App. 255, re*24eentlv before us, wherein there was a suggestion by the Commissioner implying doubt of the patentability of the invention there in controversy and apparently reserving that question for future consideration. We there intimated that, until the question of patentability was settled in the Patent Office, there would be no propriety in our adjudication of the question of priority of invention, for the plain reason that, until there was actual patentable invention, there could in law be no question of priority of invention. Here there is difference of opinion between the Commissioner of Patents and the board of examiners in regard to the scope of the issue. The Commissioner in his opinion says in this connection:

“ The examiner of interferences awarded priority to Halle upon the first thirteen counts of the issue, and the reversal of that decision by the examiners-in-chief was due principally to a difference of opinion as to the meaning of the claims in issue. The examiners-in-chief gave these claims a very limited construction, whereas the examiner of interferences considered them broader in scope. It is believed that there is nothing in the terms of the claims or of the state of the art to render necessary the limited construction given by the examiners-in-chief.”

The examiners-in-chief had intimated that, if a broad construction were given to the claims, they would not be patentable in view of the condition of the art at the time. But as they themselves took the narrower view of the scope of the claims, they had no occasion to direct attention to the question of patentability: and the Commissioner only refers to it to dismiss it from further consideration. The appellant, however, seeks to raise it again in the statement of his grounds for appeal to this court, and insists upon it in his-brief. He contends for it, however, conditionally, as did the board of examiners-in-chief: that is, that the claims in controversy must receive a narrow construction, as otherwise they would be unpatentable. The argument, however, is that, if the claims are to receive a broad construction such as the Commissioner of Patents, affirming the examiner of interferences in that regard, gave to them, then they are un*25patentable. This contention, in accordance with onr repeated decisions, we cannot entertain.

Regarding the question of priority of invention as properly before us, we find that the several tribunals of the Patent Office have analyzed and discussed the testimony in the case very carefully; and we do not see that any good purpose would be subserved by any further or other analysis of it. We are disposed to concur in the conclusion reached by the Commissioner, and for the reasons stated by him. We would refer, however, specifically to one item of testimony in the cause, the conduct of the parties on a certain occasion, which speaks louder to us than the words of fallible witnesses.

Slaughter, the junior applicant, had been in the employment of a firm or company in New York, known as the Elliott and Hatch Book Typewriter Company, and he was in their employment in December of 1897, when he claims to have made his invention and disclosed it to some members and employees of that company. He was in this employment from November 15 of 1897 to March 10 of 1898. On April 9, 1898, he entered into the employment of a rival company, the Eisher Typewriter Company, and remained therein until April 8, 1899; after which he returned to the employment of the Elliott and Hatch Company. In May of 1898, while he was in the employment of the Eisher Company and soon after he had entered it, he had a conversation, according to his own testimony, with Halle, who was at the time the president of the Eisher Company, in which he suggested some improvements in the Eisher machine for card-printing. But he swears very positively that neither then nor at any other time did he disclose to Halle the invention which he now claims to have had at the time; and the reason he gives for his silence is that he thought of something better, as he supposed, at the time. It is very clear from the circumstances of this interview, according to Slaughter’s own statement, that it would have been most natural for him to make the disclosure at that time, if he actually had the invention; and that he did not make the disclosure for the reason that he did not have the invention.

*26It is very remarkable that, during this whole year 1898, for the greater part of which he was in the service of the Eisher Company, which to his knowledge was in pursuit of some such.device, Slaughter never disclosed anything of his invention, notwithstanding that apparently it would have been to his interest so to do. He did nothing whatever to give effect to anything which he had in his mind, if anything he did have in mind,* until he went back to the Elliott and Hatch Company and was stimulated to activity by what he had seen done by Halle in the Eisher Company.

We think that the Commissioner of Patents was right in his decision in this case, and that his award of priority to Halle should be affirmed.

The cleric of the court ivill .certify this opinion and the proceedings in this court to the Commissioner, according to law.

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