EX PARTE SMITH.

Decided January 26, 1909.

148 O. G., 831.

PATENTABILITY-AGGREGATION.

Where two mechanisms for performing successive operations upon a piece of work are both old in the art, the assemblying of these mechanisms upon a unitary support in such manner that the operator may transmit the work from one to the other without changing his position at the machine Held not to involve invention.

APPEAL from Examiners-in-Chief.

ROCK-DRILL SHARPENING AND SHAPING MACHINE.

Messrs. Fred G. Dieterich & Co. for the applicant.

MOORE, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Examiner rejecting claims 1, 8, 9, 10, and 11 of the above-entitled application. The following claims sufficiently illustrate the subject-matter of the appealed claims:

1. In an apparatus of the class described, a column or support, a relatively fixed die-holding member and a movable die-holding member mounted on said column, dies carried by each of said die-holding members, an impacting-engine coöperating with said movable die and pneumatic means continuously tending to move said impacting-engine and said movable die toward the fixed die and simultaneously operating the impacting-engine.

8. In an apparatus of the class described, a rock-drill-bit-sharpening means, a bit shaping and gaging means, and a unitary support for said means combined with controlling devices for each of said means operative by a single operator while standing in one position, substantially as shown and described.

The references are: Allen, March 13, 1877, No. 188,224; Boyer, May 9, 1899, No. 624,447; Glossop, November 13, 1900, No. 661,798; Word, June 23, 1903, No. 731,728; Spreyer, May 8, 1906, No. 820,023. The invention relates to mechanism for sharpening rock-drills and comprises a bed upon which mechanism is arranged for supporting the drill to be sharpened, a dolly adapted to be pneumatically operated to get shaped to the end of the bit and also to upset the same, and a shaping device supported from the same frame adapted to swage the upset bit in the proper side.

It appears that in the sharpening and resharpening of rock-drills it is necessary to alternately operate the two by the dolly and swaging mechanism until the correct size is given to the sharpened bit. It is the object of the present invention to locate these independent mechanisms upon a single frame in such proximity that there will be no loss of heat by the bit in transferring the same from one mechanism to another. It is also the object of the present invention to

place the operating levers within the easy reach of the operator to enable him to accomplish the functions above referred to.

The mechanism for sharpening the bit and the device for reducing the end of the bit to the proper size are admittedly old in the prior art; but it is insisted that the assemblying of two machines of different types upon a unitary support in such a manner that the operator may transmit the drill from one to the other without changing his position at the machine involves invention. In my opinion this contention is not well founded.

The patent to Spreyer shows that it is old to use a pneumatic means for moving the impacting-engine and also simultaneously operate the impacting-engine, and the conclusion of the Examiners-in-Chief that the patent to Spreyer anticipates claim 1 is clearly well founded. Claims 8, 9, 10, and 11 comprise merely the aggregation of two mechanisms upon a common support, the particular mechanisms in these claims being old in the references cited against them, and it involved merely the exercise of mechanical skill to place the device for controlling the separate mechanisms within easy reach of the operator.

The decision of the Examiners-in-Chief is affirmed.

LACROIX v. TYBERG.

Decided December 28, 1908.

148 O. G., 831.

1. CLAIMS-COMBINATION-USE OF TERM

66

Where the invention claimed is a combination, Held that the term means," followed by a statement of function, is properly readable on a structure in which such means consists of more than one element.

2. INTERFERENCE-APPEAL ON PRIORITY-PATENTABILITY OF THE ISSUE-SUPERVISORY AUTHORITY OF THE COMMISSIONER.

The question of the counts of the issue having different meanings and of their non-patentability will be considered on appeal on priority only under such extraordinary circumstances as will warrant the exercise of the supervisory authority of the Commissioner.

3. PUBLIC USE.

The fact that a license was taken out to make cigars on the premises where a cigar-making machine was being tested and that some of the cigars made were actually sold Held not to establish a public use of the machine where it appeared that the place where such tests were made was a machineshop and not a cigar factory, the license being taken out in order to be able to make actual tests with tobacco, and that the machine was operated primarily for the purpose of developing imperfections in the machine and that many minor changes were made therein.

APPEAL from Examiners-in-Chief.

21895-H. Doc. 124, 61-2-15

CIGAR-MACHINE.

Mr. James L. Norris for Lacroix.

Messrs. Philipp, Sawyer, Rice & Kennedy for Tyberg.

BILLINGS, Assistant Commissioner:

This is an appeal by Lacroix from the decision of the Examinersin-Chief affirming the decision of the Examiner of Interferences awarding priority of invention in favor of Tyberg.

The issue is in six counts, as follows:

1. The combination, with a wrapping mechanism, of means for supporting a plurality of bunches, and means for transferring bunches from the supporting means to the wrapping mechanism.

2. The combination, with a wrapping mechanism, of means for supporting a mold, and means for transferring the bunch from the mold to the wrapping mechanism.

3. The combination, with a wrapping mechanism, of means for supporting a mold containing a plurality of bunches, and means for transferring the bunches from the mold to the wrapping mechanism.

4. The combination with a bunch-support operating to sustain a plurality of bunches, of a lifting device including means for engaging each bunch, and devices for operating the lifting device to remove the bunches from and transport them from the support.

5. The combination, with means for supporting a mold having a plurality of bunch-receptacles, of means for removing the bunches from said receptacles and transporting them from the mold.

6. The combination, with a bunch-support, of bunch-removing means, said means including a bunch-impaling device, and means for operating said bunchremoving means to transport the bunch from the support.

The application of Lacroix, the junior party to this interference, was filed October 10, 1902. Tyberg has two applications involved in the interference-viz., applications No. 123,979, containing counts 1, 2, and 3, filed September 19, 1902, and No. 53,211, containing counts 4, 5, and 6, which was filed March 28, 1901. The burden of proof rests upon Lacroix.

The Examiner of Interferences and the Examiners-in-Chief found that Tyberg reduced the invention of the issue to practice by completing and successfully testing a machine involving the construction called for by all the counts of the issue as early as March or April, 1900, but that in view of the allegation in his preliminary statement of reduction to practice in May, 1900, he could not be given a date of reduction to practice prior to May 1, 1900. They also found that since Lacroix does not allege an actual reduction to practice prior to October 10, 1902, the filing date of his application, he can prevail only in case he was the first to conceive and was exercising diligence in reducing to practice from the time Tyberg entered the field until October 10, 1902. They further found that the evidence fails to establish that Lacroix had a conception of the invention prior to that

of Tyberg, but that even if such prior conception was proved Lacroix could not prevail, because there is no evidence corroborating his own testimony as to the exercise of diligence on his part from March, 1900, when Tyberg certainly had a full conception of the invention, to August, 1901, when Lacroix again commenced making drawings.

The voluminous evidence filed in the case was carefully analyzed in the decision of the Examiner of Interferences, and it is unnecessary to repeat it here. The decisions of the Examiner of Interferences and of the Examiners-in-Chief have been carefully reviewed in connection with the evidence filed, and are believed to fully warrant the conclusion reached by them.

On this appeal the main argument of Lacroix is that even if the above findings of the Examiner of Interferences and the Examinersin-Chief are correct as to the dates to which the respective applicants are entitled Tyberg is not entitled to a patent containing claims corresponding to the counts of the issue. Lacroix contends in substance as follows, (brief, p. 39:)

First, that the Tyberg application does not disclose a machine coming within the wording of the first three counts of the issue.

Second, that as to counts 1, 2, and 3 the interference is merely in words, and the counts have a different meaning when read upon the structures of the respective parties.

Third, that if the evidence in behalf of Tyberg is held to establish a reduction to practice as early as March or May, 1900, the same evidence shows that the machine in which the invention was reduced to practice was in public use for more than two years before he filed his application for patent upon it, on September 19, 1902, and a statutory bar exists to the grant of a patent.

Fourth, that counts 4 and 5 are not readable on Lacroix's machine; also, that they are not patentable over patents cited.

Fifth, that count 6 is not patentable over the prior art, but if patentable then Lacroix is entitled to an award of priority.

Sixth, that according to the disclosure in the respective applications and the evidence filed Lacroix and not Tyberg is the inventor of the subject-matter defined in counts 1, 2, and 3 of the issue.

The first of the above contentions raises the question of the right of Tyberg to make the claims forming counts 1, 2, and 3 of the issue. The question of the right of one party to make the claims when material to the other party's right to a patent containing them was held to be a legitimate question to raise at final hearing as ancillary to that of priority by the Court of Appeals of the District of Columbia in the Podlesak and subsequent cases. (C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399.) In the present case if the counts of the issue will not read on Tyberg's structure he never made the invention of the issue and is not entitled to an award of priority.

In Tyberg's device a plurality of bunches are transferred by an arm carrying a series of needles from their support in the mold to a chain carrier. From said chain carrier a swinging gripping device transfers the bunches one by one to the wrapping mechanism. In the device of Lacroix a single bunch is transferred at one operation by means of an oscillating arm from the mold to the wrapping mechanism and without the use of the intermediate chain carrier of Tyberg. Lacroix contends that the portion of claims 1, 2, and 3 calling for

means for transferring the bunches from the mold to the wrapping mechanism—

is not properly readable on Tyberg's structure, since in the latter structure it must cover three elements-viz., the needle-bar, the chain. carrier, and the swinging arm.

This contention is believed to be without force. The claims constituting these counts of the issue originated in the Tyberg application and should be construed in the light of his disclosure. In Tyberg's machine it was found advantageous to remove all the bunches from the mold at one operation. The wrapping mechanism, however, could operate on but one bunch at a time. It was therefore necessary in his device to provide the intermediate chain carrier to receive a plurality of bunches removed from the mold and permit them to be taken one at a time to the wrapping mechanism. The only function of the needle-bar, chain carrier, and swinging arm is to take the bunches from the mold to the wrapping device. Taken together they form the transfer mechanism or the

means for transferring the bunches from the mold to the wrapping mechanismas called for in these counts of the issue. It is true that Lacroix shows a different species of transferring device, and the means in his case covers merely the oscillating arm and its operating mechanism. The term " means," however, is a generic one and equally applicable to either species of transferring device. In reply to the contention that it does not properly define Tyberg's invention it may be said that the invention of the counts under consideration does not reside in any particular construction of transferring means, but in the combination of the transferring means with the other elements of the combination claimed.

The second, fourth, and fifth of the above contentions of Lacroixviz., that counts 1, 2, and 3 have different meanings in the respective applications and that there is consequently no interference in fact, that counts 4 and 5 are not readable on his own device, and that counts 4, 5, and 6 are not patentable over the prior art, and that for these reasons the interference should be dissolved-do not relate to matter that can properly be considered at final hearing on priority, except under such circumstances as would warrant the exercise of the