essary to start the arc between the working anode and the cathode,,
could be obtained by means of the inductance-coil through the in-
creased resistance caused by withdrawing the supplemental anode
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DEGISIOKS OF UNITED STATES COURTS IN PATENT CASES. 471
from contact with the cathode, but still maintaining the arc. If
this starting-arc was not intended to be maintained for the purpose
of aiding in overccwning the resistance or reluctance of the cathode
so as to permit the flow of current between it and the working anode,
it is difficult to perceive for what practical purpose the supple-
mental anode was introduced. If, as contended by the appellant,
the circuit was broken between the supplemental anode and the
cathode before the arc could be started between the latter and the
main anode, the supplemental anode instead of becoming an aux-
iliary would be practically useless. The high potential then neces-
sary to starting the arc between the main or working anode and
the cathode would apparently have to be obtained by the old
method; and the new lamp would be no substantial improvement
upon the old one.
The application of the appellees has been so fully and carefully
examined in the decisions of the several tribunals, set out in the
record, that it would serve no useful purpose to consume time with
an additional review.
One other question remains to be considered. Weintraub filed in
evidence a deposition of one Lunt and copies of depositions of Hewitt
and Rogers taken in another interference. The avowed purpose of
this evidence was to show that Hewitt and Rogers were not joint
inventors. On motion of appellees, the evidence was stricken out.
A motion to set this order aside was subsequently made and over-
ruled. On the final hearing the testimony was again offered and
excluded, on the ground that the evidence in the case was limited by
the motion of Weintraub to take evidence on the single question of
the right of the appellees to make the claims in question under the
disclosures of their agplication.
There was no error, we think, in the exclusion of the evidence. A
prima facie case of joint invention was made by the allowed appli-
cation. Weintraub's statement of his conception of the invention
giving a date later than the filing date of his opponents, they were
not required to take any testimony in support of their claim, but were
entitled to a judgment on the record, unless it could be shown, as
contended by Weintraub, that they were not entitled to make the
claims, because there was nothing in their application furnishing a
basis therefor. This being the sole issue presented, Weintraub ap-
plied for and obtained leave to take evidence thereon. The additional
evidence sought to be introduced was not pertinent to this the sole
issue in the case. The case of Lemp v. Randall^ (C. D., 1909, 455;
146 O. G., 255; 33 App. D. C, 430,) relied on by the appellant,
is not in point. All that was decided in that case, was that on an
issue requiring proof of conception of the invention, evidence was
admissible to show that one only of the joint applicants was the actual
54282'— 18 83
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472 DECISIONS OF UNITED STATES COURTS IN PATENT CASES,
inventor. Having made an application alleging that they were joint
inventors, they tendered that as one of the issues of the case. The
case was distinguished from those where it had been held that evi-
dence could not be offered to show that a third person, not a party to
the proceeding, was the first to invent. The Court said :
Appellant did not se^ to show that the right to the award of priority was in
a third party, an alien to the proceeding, but that the senior parties to the
proceeding were without standing, l>ecause it appeared that they were not joint
inventors, and hence not entitled to make the application in interference.
We find no error in the decision appealed from, and it is a^rmed,
with direction to certify this decision to the Commissioner of Patents.
Affirmed.
[Court of Appeals of the District of Columbia.]
In RE MoORE.
Decided February 5, 1912.
178 O. G., 891 ; 38 App. D. C, 27e.
PATEWTABttITT — PaD FOR ABTIFICIAL TeETH.
Claims for a pad of particular form to be worn l>etween the gums and a
plate for artificial teeth Held patentable over the prior art in view of
affidavits of dentists of skill and long experience that this pad provides
an effective remedy for the trouble arising from false teeth and tender gums
and that they had constantly exercised their ingenuity and skill to find a
remedy therefor, but without success.
(Far Commissioner's decision see ante, lift; ITt O. G., 77f.)
Mr E. IF. Bradford for the appellant.
Mr. W, S. Ruckman for the Commissioner of Patents.
Shepakd, C. J,:
This is an appeal from a decision rejecting an application for a
patent having five claims, as follows :
1. A soft elastic pad or cushion of cotton to be worn between the gums and
plates of artificial teeth.
2. The combination with a plate for artificial teeth of a pad or cushion of
cotton interposed between said plate and gums.
3. A pad or cushion to be worn between the gums and lower plate of artificial
teeth comprising a roll of cotton reduced in thickness at its middle portion to
facilitate the bending of the roll into U-shape to fit the contour of the plate.
4. As a pad or cushion to be worn between the gums and the lower plate of
artificial teeth, a roll of cotton reduced in thickness at its middle portion to
facilitate the bending of the roll into a U-shai>e to fit the plate, the «ids of said
roll being also reduced in thickness.
5. A pad or cushion for artificial teeth comprising cotton formed into a roll
and bent into a U-shape to fit the plate for the teeth, the ends of said roll
being reduced in diameter.
Claims 1 and 2 were rejected specificially on reference to a prior
patent to Stapleton; the others generally as failing to show invention.
Appellant, admitting doubt as regards claims 1-2 and 5, has aban-
doned them. He, of course, does not deny that cotton rolls and pads
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DECISIONS OF UNITED STATES COURTS IN PATENT CASES. 478
have been used in dentistry as well as in other arts, but contends that
there is utility in his method of preparing the roll and its use, and
that its discovery is an exercise of the inventive faculty, and, there-
fore, patentable. During the proceedings in the Office applicant
filed numerous affidavits in support of his claim of patentable
novelty. Many of these were by dentists of skill and long experience.
These were in substance, that their attention had been repeatedly
called to the troubles with false teeth and tender gums for which
applicant has provided an effective remedy; that they had constantly
exercised their ingenuity and skill to find a remedy but without suc-
cess; that the manner in which applicant's roll is prepared for use
affords an effective remedy that has gone into wide use; that they
regard it, by reason of the facts stated, as more than an exercise of
mechanical skill. Some other affidavits by persons using the article
attest the long search for relief without success, and the effectiveness
of the applicant's prepared roll.
The difficulty is the cbnstant one involved in the ascertainment of
that elusive boundary between invention and mechanical skill. The
" impalpable something " that distinguishes one from the other is not
determinable by the simplicity of the alleged invention alone. It
often occurs that when one has succeeded in (Jevising a means to ac-
complish a long desired end, it may seem plain to any one that he
could have done it as easily and as well had his attention been called
to it. This has been the case with some inventions of great merit.
In this instance the attention of men skilled in the art had long been
called and directed to the end accomplished by the applicant, and
their mechanical skill had been exerted in vain. The article devised
by him has gone into use on its merits and proved its utility. (Con-
fessing some doubt, we have come to the conclusion that the patent
ought to be granted. As said in the case of in re Thomson^ (C. D.,
1906, 566; 120 O. G., 2756; 26 App. D. C, 419:)
In case of ordinary doubt, the policy of the patent system, as customarily
maintained In the Patent Office, has been to give the applicant the benefit
thereof, because no absolute right of property Is conferred by the grant of a
patent
This doubt was resolved in favor of Stapleton whose patent has
been cited as a reference in this case. His device, of a different kind
intended to relieve the pressure of the upper plate, shows no greater
evidence of invention than does the applicant's. The case is quite
different from that of in re Fdber, (C. D., 1908, 481 ; 136 O. G., 229;
31 App. D. C, 531.)
The decision rejecting claims 1^ )S, and 6 will he afjirmed^ hut as to
claims 3 and 4 wUl he reversed. It is so ordered. The clerk will
certify this decision to the Commissioner of Patents.
A-fjirmsd in part. Reversed in part.
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474 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
[Court of Appeals of the District of ColnmbUu]
Brewer v. Whttnex.
Decided Fe})ruairy 5, 1912.
178 O. G., 1154; 88 App. D. O., 1273.
Intebfebenge — Pmobitt.
Priority Held property awarded to W., the senior party.
{For Cotnmi88ion€r*8 decision see ante, 127; 177 O. G., 1296.)
Mr. WallcLce Greene for the appellant.
Mr. G. C. GUI and Mr. TF. G. Henderson for the appellee.
Van Orsdel, /.;
This is an appeal from a decision of the Commissioner of Patents
in an interference proceeding. The invention in issue relates to a
manifold sales-book designed especially for use in restaurants and
hotels.
Appellant is here with forty-two assignments of error, all relating
to questions of fact pertinent to this case. To discuss these assign-
ments in detail would involve great labor, with no precedent of value
to the profession established.
We have carefully reviewed the evidence^ and have arrived at the
conclusion that the Conussioner is right and should he aiftrmed^ which
is accordingly ordered. The clerk is directed to certify these proceed-
ings as by law required.
Affirmed.
[Court of Appeals of the District of Columbia.]
McManus v. Hammer.
Decided February 5, 1912.
179 O. G., 288; 38 App. D. C. 294.
INTERTERENCE — ^PRIORITY.
Evidence reveiwed and McM. Held to be the " real inventor," and there-
fore entitled to the award of prtortty.
Mr. W. R. Spooner for the appellant.
Mr. H. M. Sterling for the appellee.
RoBB, /.;
This is an appeal from a decision of an Assistant Commissioner of
Patents in an interference proceeding awarding priority of invention
to Hammer, the senior party and patentee. The patent to Hammer
was inadvertently issued as the McManus application was on file at
the time.
The invention is a comparatively simple one, easily understood,
and relates to an improved bottle and jar closing device. Part of
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DECISIONS OP UNITED STATES COURTS IN PATENT CASES; 475
the claims cover a dished disk which is nothing more than a piece of
paper or cardboard cut round to fit snugly into the top of the bottle-
neck, and a so-called rabbeted portion of the bottle, which expres-
sion, reduced to common phrase, means that the inside top portion
of the neck is cut out sufficiently to admit the disk, so that when the
bottle-cap is screwed down the disk will be about even with the top
of the bottle; in other words, a little shoulder is made in the inside
of the neck, upon which this disk rests. Another feature of some of
these counts relates to the form of the top of the bottle-cap which
is required to be depressed so that when the cap is screwed down
the depression will come in contact with the dished disk and, of
course, force it tightly into place. The other set of counts relate
particularly to the cap and the manner of applying it to the bottle.
Under these counts the cap is required to have a plurality of inclined
notches at its lower edge, which in practice simply means that the
lower edge of the cap is bent inward in a plurality of places so that
the projection thereby produced will engage the separated threads
A> hich these counts require to be formed on the exterior of the bottle
and whch threads run slantingly downward to a shoulder. The
counts of the issue are six in number but counts 1, 2, and 4 fully
illustrate the different features of the invention and are here
reproduced :
1. A bottle or jar having a rabbeted portion, a dished disk adapted to fit said
rabbeted portion, and a cap adapted to flatten said dished disk to increase its
diameter.
2. A bottle or Jar having a rabbeted portion, a dished disk adapted to fit
into said rabbeted portion, and a cap having a depression in its end adapted to
flatten the dished disk to Increase its diameter.
4. A bottle or jar provided with an annular shoulder and a plurality of super-
posed separated threads connecting at their lower ends with said shoulder, in
combination with a cap having one or more impunched projections at its lower
edge to engage said threads, said projections being provided with Inclined
upper walls having an angular arrangement with relation to the lower edge
of the cap conforming to the angular arrangement of the threads with re-
lation to the shoulder, whereby stops are provided at the junction of the
threads with the shoulder to limit the turning movement of the cap, the relative
angular arrangement of the parts being such as to adapt the cap to be screwed
down into close contact with the shoulder so that the Inclined upper walls of
the projections and basal edges of the inner walls thereof will respectively bear
against the threads and shoulder and exert resisting pressures to prevent Injury
to the projections when the cap is screwed on.
The real question involved is that of originality. Although we
have carefully examined the entire record, which is needlessly long
and involved, we will content ourselves with a statement of what we
conceive to be the material facts. McManus, prior to the events cul-
minating in this controversy, had for sometime interested himself in
bottle-closing devices. On January 27, 1904, he applied for a patent
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476 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
on a rim with angular grooves and a cap to fit the grooves. This
application was allowed June 14, 1904, as Patent No. 762,745. His
next application was filed May 24, 1904, and was granted as Patent
No. 772^60, on October 11th following. On June 3, 1905, he filed an
application on a device similar to the one in issue, the essential dif-
ferences being that the separated threads ended in a horizontal groove,
instead of a Shoulder, and the inside of the neck was not rabbeted.
The notches in the lower part of the cap in the earlier device were
straight instead of inclined — a mechanical detail. While Hammer
applied for a patent other than the one in issue on May 22, 1905 —
which, so far as the record discloses, was never granted — ^it is clearly
apparent that McManus possessed far greater knowledge of the art
than he. They were both young men and had been acquainted in
Baltimore, Md., for some time.
At the end of May, 1904, McManus, who had been working in
Philadelphia, went to New York and engaged board and room with
a Mr. and Mrs. Furness. The evidence is clear and convincing that
he was then busily engaged in developing his ideas relative to bottle-
closing devices. McManus testifies that after he had applied for his
second patent he conceived the invention in issue, and that in June of
1904 he made a drawing or sketch of his invention ; that he took this
drawing to the Demuth Glass Factory in Brooklyn and exliibited it
to the foreman, a Mr. Dries, who referred witness to a Mr. Shields,
since deceased, the mold-maker of the factory and to whom McManus
showed his drawing. McManus also left with Mr. Shields a model
which he had filed out of a bottle-neck or piece of wood. Mr. Shields
was unable to make a bottle embodying the invention. This drawing
and model were not preserved by the factory so that McManus was
unable to produce them in evidence. While Mr. Furness subse-
quently became financially interested in stock companies which Mc-
Manus organized to exploit his inventions, his testimony and that of
his wife being consistent and evidently given in perfect good faith
is entitled to consideration. Soon after McManus had taken a room
there, at the end of May, 1904, Mr. Furness interviewed him for the
purpose of ascertaining his business. McManus, according to the
witness, informed him that he was an inventor of bottle-caps and
thereupon submitted " various samples of caps in brass and tin."
Witness becoming interested, McManus exhibited to him a crude
drawing of an invention which he said he had just made. McManus
explained this invention. The witness states —
that the groove or ribs on the outside of the top of the bottle was run down to
the shoulder and the notch In the cap was beveled slightly so that he (Mc-
Manus) stated that the bevel In the notch would fit the groove on the outside of
the l)ottle. And at the top of the botrle he was to have a little groove and was
to have a piece of paper or cardboard cut full so that it would Mly up so that
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DECISIONS OP UNITED STATES COURTS IN PATENT CASES. 477
when the cap was imt on it would force the paper tight against the sides of the
bottle and make a complete seal as he termed it, and the cap was dented so that
it would catch this washer in this ridge at the top of the neck of the bottle.
This description, it will be noted, fairly describes the invention.
It is suggested by one of the tribunals of the Patent OflSoe that this
witness failed to locate the projections at the lower edge of the bottle-
cap. It would be too great a reflection upon the intelligence of
McManus to assume that he would have placed them anywhere else.
The failure of this witness to couch his description in technical terms
adds to rather than detracts from the weight of his testimony. It is
apparent that he fully understood the result sought to be accom-
plished and the manner in which it was to be attained. Mrs. Fur-
ness also testified to having seen the drawing referred to by her
husband and as to her recollection of the description which McManus
gave her of the features of his invention. The testimony of these
witnesses is important as Hammer admitted in his cross-examination,
(XQs. 1371 to 1380,) that he had no conception of any feature of the
invention until sometime in September, 1904, which was after he
had gone to New York and had commenced to room with McManus.
McManus had a wooden model made (McManus Exhibit No. 4), in
the early spring of 1905 by Edward Collins, a pattern and model
maker of Brooklyn. This model shows the separated threads and
is rabbeted on the inside of the neck. Hammer testified that this
model —
showed an annular rib or shoulder with threads going into the shoulder on an
incline ; it was also provided with a rabbeted portion in its top.
The drawings, Hammer further testified, showed —
a cap having a depression in its top with inclined notches at its basal edge, also
a dished disk to fit into the rabbeted portion.
Hammer testifies positively that it was he who had this model
made. Unfortunately for Mr. Hammer, however, Mr. C!ollins — an
entirely disinterested witness — disclaims ever having seen him, and
is positive that the model was made for McManus from a sketch
furnished by him ; that the witness knew no one else in the transac-
tion. Further corroboration is found in the receipted bill which
McManus produced and which was identified by Mr. Collins. Mr.
Collins, under cross-examination, was asked how he was able to
remember this particular model, and replied :
He (McManus) had some patent wafer that he put on top, that is why it
impresses itself on my memory.
He was further asked, under cross-examination, whether at the
time this model was made he came in contact with Mr. Hammer, who
waa thereupon pointed out to him. The witness did not remember
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4^8 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
ever having seen Hammer. The Collins model was also exhibited to
Mr. Shields, who, however, was unable to make a bottle like it.
Some time in June of 1905 McManus and Hammer ware in Balti-
more and, at the latter's suggestion, interviewed a Mr. Donahue, a
manufacturer of models for glass. Donahue testifies that they ap-
peared as representatives of the McManus Manufacturing Company.
A tool was procured of Mr. Donahue which McManus took to the
Nivision Glass Factory in Baltimore, where an imperfect bottle was
produced. This tool McManus says he changed, or caused to be
changed, so that a perfect bottle embodying the invention was pro-
duced. Hammer, according to the testimony of McManus, had then
returned to New York. The Patent Office was not satisfied that a
perfect bottle was produced at this time for the reason that Donahue,
testifying concerning the tool which had been in Hammer's posses-
sion, said it would not produce such a bottle. But the man who
produced the bottle and who is a disinterested witness, testified posi-
tively concerning it, and his testimony fully corroborated McManus.
Mr. Jackson, secretary and one of the directors of the Nivision Com-
pany, testified to the making of the first bottle, which is an exhibit
in the case ; that the bulge in the tool was changed so as to ^' put a
small edge in the inside of the rim of the bottle neck ; " that the bottle
then produced was perfect, having outside threads that ran down to
a shoulder; that the mold from which this bottle was made caused
McManus's name to be impressed upon the bottle. The witness
furthsr stated that his work was all done at the direction of McManus
and that he had never seen Hammer until the morning of the day he
testified. Mrs. Furness, in her testimony, given before this witness
was called, mentioned seeing a bottle not long after McManus re-
turned frcHn Baltimore with McManus's name on it; that this feature
particularly attracted her attention. Mr. Donahue, called by Ham-
mer remembers that he made such a name-plate for the mold in ques-
tion. Mrs. Furness testified that this bottle finally disappeared, and
it is the contention of McManus that Hammer was responsible for
its disappearance. The description which Mrs. Furness gives of this
bottle tends to corroborate the testimony of Mr. Jackson and of
McManus relating thereto.
McManus further testifies that it was finally determined to form
a company, composed of McManus, Hammer, Furness, and a Mr.
Specht, to exploit this particular invention ; that it was agreed that
McManus should apply for a patent and assign his invention to
Hammer in trust for the interested parties; that in accordance with
this understanding and agreement McManus, accompanied by Ham-
mer, on or about July 7, 1905, went to the New York office of Evans,
Wilkins & Co., a corporation organized under the laws of Virginia
and having its principal place of business in Washington, D« C.;
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DECISIONS OP UNITED STATES COURTS IN PATENT CASES. 479
that under McManus's direction, Hammer having left the office, the
application and drawings were prepared, and that McManus then
executed the application. That such an agreement was entered into
and that what was done by McManus upon this occasion looking
to the filing of the application was in pursuance of that agreement,
is testified to by Mr. Fumess and by Mr. Spooner, an attorney who
was consulted and who represents McManus in this proceeding.
Without reviewing the testimony of either Mr. Fumess or Mr.
Spooner in reference to this feature of the case, we deem it sufficient
to state that we find the fact to be that such an arrangement was
entered into as testified to by them.
Evans, Wilkins & Co. had previously represented McManus in
patent matters. The application which McManus says he executed
in their New York office on the date mentioned was not filed. Sub-
sequently, on July 28, 1905, the same application was executed by^
Hammer in the Washington office of the Evans Company and filed
m the Patent Office. McManus contends he knew nothing of this.
We will advert to this question later. It appears that some time
in February, 1906, Mr. Spooner came to Washington for the purpose
of investigating the McManus applications and learned for the first