WILSON v. HAINES. Decided October 10, 1891. 57 O. G., 1278. 1. INTERFERENCE-ADMISSIBILITY OF RECORD USED IN A FORMER CASE. Where a party on trial of an interference gives notice that reference will be made to proceedings and testimony of a former interference between the parties, the whole record will be presumed to be meant unless the notice distinctly specifies a part of the record and the purpose for which its admission is sought. 2. SAME-EVIDENCE-PRIORITY OF INVENTION. The question of priority of invention is determined by a fair preponderance of evidence, and doubts raised as to accuracy of witnesses upon certain minor points are not sufficient to overcome it. APPEAL from the Examiners-in-Chief. LOOK FOR SHUT-OFF VALVES. Application of Henry F. Wilson filed October 7, 1889, No. 326,252. Application of George B. Haines filed October 27, 1888, No. 289,300. Messrs. Peirce & Fisher for Wilson. Messrs. L. B. Copeland & Co. and Pennie & Goldsborough for Haines. SIMONDS, Commissioner: This is an appeal from the decision of the Board of Examiners-inChief in an interference case, wherein the Examiner of Interferences and the Board of Examiners-in-Chief have both awarded priority of invention to Haines. The interference is between two applications, wherein Wilson's was filed October 7, 1889, and Haines's October 27, 1888. A preliminary question to be passed upon is whether certain testimony taken in a former interference involving the same subject-matter, wherein Haines was a party on one side and Wilson was a joint party on the other side, can be used here. Wilson took his testimony first in this interference. When he closed his testimony-in chief February 12, 1890, his attorneys gave this notice: Attorneys for Wilson give notice that at the hearing of this cause and on appeal reference will be made to the following Patent Office records: Proceedings and testimony (without admitting the truth thereof) in the interference, Haines v. Williams and Wilson, lock-cocks, declaired March 1-8, 1889. At the close of the taking of Haines's testimony, March 31, 1890, the following notices were given: Attorney for George B. Haines gives notice in the record that reference will be made on the day of hearing in this case to the old testimony taken in the interference between the joint application of John C. Williams and Henry F. Wilson v. George B. Haines. Attorney for Wilson reserves the right to object to the admissibility of such record except so far as it may be used to impeach the evidence of the witnesses in behalf of Haines and who testified or him in such old interference, In my judgment when Wilson's attorneys on February 12, 1890, gave the notice first above referred to, it, by fair intention, included the whole of the record, and the fair meaning of the words "without admitting the truth thereof" was that it was to be subject to consideration, objection, and argument on substantially the same basis as if it were taken in this case. If Wilson's attorneys only intended to admit a part of the earlier record, or only intended to admit it for a particu lar purpose, it was incumbent upon them at the time of giving that notice to have distinctly specified what part they intended to admit and for what specific purpose they intended to admit it. In the absence of such limitation and specification I am of opinion that the whole record came in for ordinary and regular consideration. Wilson's case is easily summarized. Wilson testifies, and Haines practically admits, that he (Wilson) conceived the invention in controversy in October, 1888, and had a full-sized valve made in that month. Haines has produced an Exhibit B, which embodies the invention in controversy. He claims that it was made under his direction in the latter part of April or first part of May, 1888. There are in Haines's case a number of minor contradictions, affording some ground for sus pecting the accuracy of the testimony of himself and his witnesses, and a model-maker, Quaglio, offers some testimony that is in direct contradiction of the testimony of Haines's witnesses. On the other hand, Haines is corroborated in one way and another by four witnesses, who give testimony tending to establish the existence of Exhibit B in a shape embodying the invention in controversy prior to October, 1888. Again, there is a piece of undisputed testimony which tells distinctly in Haines's favor; it is to the effect that Haines, seeing Wilson's valve for apparently the first time at a conference in the office of the Consumers' Gas Company, immediately said that he had a valve embodying the same thing, that he would produce it in a short time, and that he did produce it in a half-hour's time. In the face of this piece of testimony Wilson, in order to prevail, ought to offer some sort of testimony showing that Haines in some way acquired a knowledge of Wilson's invention prior to this conference; but there is no testimony of that kind. Such a supposition rests wholly on inference. Taking this circumstance with Haines's own testimony, corroborated to some fair degree by four other witnesses, it cannot be held that they are overcome by doubts raised as to accuracy upon certain minor points, nor by direct contradiction of the witness Quaglio. The decision of the Board of Examiners-in-Chief is affirmed. ZEITINGER 7. REYNOLDS v. MCINTIRE. 1. INTERFERENCES-APPEALS. Decided November 7, 1891. 57 O. G., 1279. When an interference is dissolved by the Primary Examiner on motion, appeal cannot properly be taken by the party bringing such motion, though granted on a part ouly of the grounds urged therein. 2. SAME-WANT OF INTERFERENCE IN FACT. When an unexpired patent contains claims limited to a single species and an application shows and describes several species, all different from that claimed in the patent, but contains generic claims broad enough to cover the species of both patent and application, there is no interference in fact. 3. SAME-INTERFERENCE IN FACT. An interference in fact exists between an application showing and describing several species and containing generic claims that cover all of such species and an unexpired patent containing claims based upon and limited to one of the species covered by the generic claims of the application. 4. SAME-EX PARTE APPEALS TO EXAMINERS-IN-CHIEF. When in an interference case an appeal is taken to the Examiners-in-Chief on which the appellant only has a right to be heard, his claims are the only ones to be considered. And any comment in their decision relative to the equivalence of the devices of the several parties to the interference, on which would depend the question of interference in fact, can properly have no binding effect upon the judgment of the Primary Examiner which should be independent. 5. SAME-BREADTH OF THE ISSUE. The issue of an interference should be as broad as the broadest claim to be included under it. APPEAL on motion. COFFEE-POT HANDLE. Application of C. J. Zeitinger filed March 12, 1890, No. 343,671. Patent granted to H. S. Reynolds November 4, 1890, No. 440,061. Patent granted to William C. McIntire February 4, 1890, No. 420,917. Messrs. Knight Bros. and Mr. Douglas Dyrenforth for Zeitinger. Mr. E. C. Webb for McIntire. FROTHINGHAM, Assistant Commissioner: This is an appeal taken from the decision of the Primary Examiner denying motions, filed August 4, 1891, on behalf of Reynolds and MeIntire, respectively, for dissolution of the interference as hereinafter set forth. The grounds alleged by the motions on which this appeal is based are, on the part of Reynolds, non-interference in fact, and on the part of McIntire, non-interference in fact and irregularity in declaring the interference. The transmittal of the motion was opposed by counsel for Zeitinger before the Examiner of Interferences on the ground that they were not brought in proper season. The decision of the Examiner of Interferences was not appealed from. It appears, however, from said decision that the attorney for Zeitinger stated to the Examiner of Interferences that he intended to take the question of the propriety of the transmittal of said motions to the Commissioner on appeal from the decision of the Primary Examiner, and in view of such statement the order of transmittal was made final by the Examiner of Interferences. The question of delay in bringing the motions was argued at the same time with the appeals from the decision of the Primary Examiner denying the motions to dissolve. Whether or not it is proper for me under such circumstances to pass upon such question, I think it advisable to state that there was sufficient excuse for the delay. On March 19, 1891, Reynolds duly filed a motion for dissolution of the interference on the grounds of (1) non-patentability of subject-matter, and (2) non-interference in fact. McIntire at the same time filed a similar motion, which embraced the two grounds of Reynolds's motion, and also a third ground, to wit, irregularity in declaring the interference. On May 16, 1891, these motions having been duly transmitted to the Primary Examiner and considered by him, he granted said motions and dissolved the interference, basing his decision upon the ground of non-patentability of the subject-matter of the issue. He further held that there was an interference in fact and that there had been no irregu larity in declaring the same. Thereupon Zeitinger, under the provisions of Rule 124, took an an appeal (ex parte) to the Examiners-in-Chief, and on July 20, 1891, the Examiners-in-Chief reversed said decision of the Primary Examiner. Interference proceedings having been resumed, on August 4, 1891, both Reynolds and McIntire filed their motions to dissolve (said motions being the ones upon which the present appeals are taken) upon the grounds above stated. The decision of the Primary Examiner on the motions filed March 19, 1891, having been in favor of Reynolds and McIntire, the decision is held to be one from which they had no appeal, irrespective of the ground or grounds upon which it was based. The case of Weston v. Brush, (33 MS. Dec., 387,) cited by the Examiner of Interferences in his deci sion transmitting the motions, is in point. As was therein stated in substance, it is the decision from which appeal is taken, not the grounds upon which the decision is based. The appeals being, in view of the above facts, held to be properly before the Commissioner for consideration, it becomes necessary to deter mine first the question of interference in fact between the patent to Reynolds and the application of Zeitinger. It is to be observed that for the purposes of the declaration of the interference and fixing the burden of proof, the patent to Reynolds is considered as an application, since it was issued during the pendency of Zeitinger's application. For the purposes of the present motion, however, it has the status of a patent, since whatever decision may be reached, the specification, claims, and drawings must stand in the condition in which they now are. As between Reynolds and Zeitinger, the former is the senior party and a patentee. His claims are limited in character and are based upon a structure specifically different from any of those shown and described by Zeitinger. Such a state of facts brings the case squarely under the ruling in Reed v. Landman, (ante, 73; 55 O. G., 1275.) The decision of the Examiner denying the motion appears to have been based upon, or at least guided and controlled by, statements in the decision of the Examiners-in-Chief above referred to, relative to the equivalence of the devices disclosed by the three parties now involved in this interference. Since the structure, both as shown and described and as claimed by Reynolds, is specifically different from anything shown, described, and claimed by either Zeitinger or McIntire, and the question of the patentability of Zeitinger's claims was the only one properly before the Examiners-in-Chief, the question of equivalence of the several devices, upon which would depend that of interference in fact, even though commented upon in their decision, could properly have no binding effect upon the judgment of the Examiner which should be independent. (Zeidler et al. v. Leach et al., ante, 9; 54 O. G., 503.) Reynolds does not desire to contest Zeitinger's right to his broad claims, and since he does not and cannot make them himself, there seems to be no good reason why he should be compelled to remain a party to the interference. As regards the alleged interference between the patent to McIntire and the application of Zeitinger; it is to be observed that the single species shown, described, and claimed by the former is the same as one of the several species disclosed by the latter, and that it follows from the decisions in Edison v. Stanley, Jr. (ante, 173; 57 O. G., 273) and Reed v. Landman, (supra,) that there is an interference in fact between such patent and application. It is contended, however, in behalf of McIntire, that should he be proved the prior inventor of the species claimed by him, but not of the invention as broadly claimed by Zeitinger, the present issues are such that a decision of priority would not be such a decision as would declare him in terms to be the prior inventor of the specific subject-matter to which he would be entitled. He therefore contends that one of the issues of the interference should be specific to the device shown, described, and claimed by him, and to the same device illustrated in Fig. 6 of Zeitinger's drawings. There would seem to be no good reason why the interference should not be dissolved with this end in view were it possible to form such a specific issue which would be as broad as the broadest claim to be included under it. It appears, however, that Zeitinger has no claim specific to the said structure, and therefore that while there is an interference in fact between the two cases, it can be declared only under a generic issue. What proof may be sufficient to establish priority of invention |