WESTINGHOUSE v. THOMSON.

1. PRACTICE UNDER RULE 128.

Decided June 26, 1891.

56 O. G., 142.

When an interference is suspended under Rule 128, the claims anticipated should be rejected by the Primary Examiner, and the files and papers should not be returned to the Examiner of Interferences until it has been determined whether the appellate tribunals will sustain the Examiner in rejecting the claims, or until the laches and delay of the applicant in taking an appeal are such as to authorize the Office to dissolve the interference or to issue a patent to the opposing party.

2. SAME.

The consideration of references under Rule 128 should be ex parte.

ON REFERENCE.

ELECTRIC METERS.

Patent No. 427,489 granted to George Westinghouse, jr., May 6, 1890. Application No. 321,986 filed by Elihu Thomson August 26, 1889.

Mr. C. A. Terry for Westinghouse.

Mr. H. C. Townsend for Thomson.

MITCHELL, Commissioner:

On March 14, 1891, this interference was suspended and the files and papers transmitted to the Primary Examiner, upon his request, for action under Rule 128, which prescribes the course to be taken upon the discovery of new or additional references during the pendency of the interference proceedings. On April 25, thereafter, the Examiner directed the parties to show cause why the interference should not be dissolved, in view of the new references, adding that in default thereof dissolution would be ordered. Subsequently, upon request of Thomson, the Examiner's action was delayed until May 28. No response was made by either party to the requirement of the Examiner to show cause. On June 5 the Primary Examiner made an order declaring the interference dissolved. Thereupon the files and papers were returned to the Examiner of Interferences with the statement that upon their return to the Primary Examiner ex parte proceedings would be resumed in the case of Thomson.

Upon the foregoing facts the Examiner of Interferences asks instructions.

In my opinion the Primary Examiner erred in returning the papers to the Examiner of Interferences without first rejecting the application of Thomson, if in his judgment the new references met the invention claimed by him. The files and papers should not be returned to the Examiner of Interferences until it has been determined whether the appellate tribunals will sustain the Examiner in rejecting the claim, or

until the laches and delay of the applicant in taking an appeal are such as to authorize the Office to dissolve the interference and to issue a patent to the opposing party, in accordance with the principles laid down in ex parte Lombard (C.D., 1888, 56,) and Abel and Dewar v. Maxim v. Nobel, decided July 20, 1891, ante 102. Manifestly the party to whose claims the references are held to be pertinent cannot be guilty of laches or delay until rejection has given him the right of appeal.

As no rejection has been made in this case the Examiner of Interferences is advised that the files and papers should be returned to the Primary Examiner for further action in accordance with the views herein expressed.

I note also that the Examiner directed the parties to show cause why the interference should not be dissolved. The only ground for dissolution that could be discussed as the result of such requirement was whether Thomson's claims were rendered unpatentable by the new references, but the rule expressly provides that the consideration of the new references shall be ex parte. There would seem to be nothing inequitable in allowing both parties to be heard upon such a question, in analogy to proceedings under Rule 122, when, as in this case, the preliminary statements have been approved and each party has full knowledge, or the right under the rules to full knowledge, of his opponent's case. Nevertheless the rule is clear and explicit, and, as has already been stated, the consideration of the references should be ex parte.

Further proceedings should be had in accordance herewith.

ROGERS v. WINSSINGER.

Decided March 7, 1891.

56 O. G., 804.

1. INTERFERENCE-LANGUAGE-Subject-MatTER.

The question whether any interference in facts exists depends not merely upon the language employed in the respective claims, but upon the question whether in addition to similarity in phraseology there is an interference between the subjects-matter of the respective claims.

2. COPYING OF CLAIMS.

The practice of appropriating literally the claim of a later inventor, which is drawn with reference to the employment of terms found in the preceding specification, and then applying the claim so appropriated to a specification of an older date which does not contain words and expressions suitable to lead up to the language of the appropriated claim, condemned.

3. DUTY OF OFFICIALS.

Officials of the Patent Office should be upon their guard against amendments, made late in the history of proceedings upon an application, which are apparently inspired by the purpose of dominating inventions subsequently made by other inventors and not embraced within the scope of the application as originally tiled.

4. VACATION OF JUDGMENT.

Vacation of judgment of priority ordered on the granting of a motion to dis solve an interference on the ground that there was no interference in fact.

APPEAL on motion.

DIES FOR ROLLING SCREW-THREADS.

Patent granted Charles D. Rogers September 20, 1887, No. 370,354. Application of Camille Winssinger filed April 30, 1886, No. 200,714.

Messrs. Remington & Henthorn and Mr. W. W. Swan for Rogers.
Messrs. Knight Brothers for Winssinger.

MITCHELL, Commissioner:

On the 7th day of December, 1889, judgment was rendered in this case upon the record in favor of Winssinger, with limit of appeal to expire December 28, 1889. The day before the limit of appeal expiredto wit, December 27, 1889-a motion to extend the time was made on behalf of Rogers, which motion was subsequently granted. Although the time thereby extended would expire January 17, 1890, by inadvert ence the time expressed in the order was January 7, 1890. The error, however, was corrected, the time of appeal being fixed at January 17, 1890, as originally intended.

January 13, 1890, Rogers filed a dual motion (1) to vacate said judg ment upon the record, and (2) to dissolve the interference. The motion to vacate was heard by the Examiner of Interferences and by the Commissioner on appeal and was denied. Subsequently the Examiner of Interferences transmitted the motion to dissolve to the Primary Examiner, and thereafter, on the 24th day of November, 1890, the Primary Examiner dissolved the interference. From the decision of the Primary Examiner Winssinger now appeals. The only question brought up for consideration by the appeal is the question of interference in fact. The interference issue, which is in the language of the claim of Rogers's patent, is as follows:

A die for rolling the threads on screws, having transversely the form to be given to that part of the body of the screw, in the direction of its length, on which the thread is formed, and having oblique V-shaped grooves presenting between them a series of bars or projections, narrow at the end where they commence to form the thread, so that they may be forced at the commencement of their action into the metal to the depth required to form the body of the screw, and gradually increasing in width, act laterally upon the metal between them and force it into the grooves which gives it the form required for the thread.

The interfering claim of Winssinger is also in the same language, said claim having been incorporated by an amendment dated October 7, 1889, more than three years after the filing date of his application, and more than two years after the patent was granted to Rogers. The question whether an interference in fact exists depends not merely upon the language employed in the respective claims, but upon the question whether in addition to similarity in phraseology there is an interference

between the subjects-matter of the respective claims. (Gray v. Robertson, C. D., 1890, 1; 50 O. G., 165; Bissell v. Robert, C. D., 1890, 77; 51 O. G., 1618.).

If Winssinger's claim involved in the interference, when construed in the light of its specification, does not conflict with Rogers's claim, construed in the light of its own specification, then, although the phraseology may be the same, the claims are different in a patentable sense.

In the specification of his patent Rogers says:

My invention relates to dies for forming the threads upon wood-screws by rolling the blanks between them and raising the metal to form the threads radially from the body of the blank without extending the blank lengthwise.

Again he says, referring to the dies of the prior art:

A considerable part of the pressure of the dies is exerted toward the axis of the blank to compel the metal to flow away from that axis.

Speaking of his own dies he says:

With my improved dies the pressure upon the metal toward the axis of the blank is limited to the commencement of the rolling operation and to a comparatively small part of the metal displaced.

Speaking of Figs. 5 and 6 he says:

Though the sections 5 and 6 are taken on different lines across the dies, the diameter of the body of the screw is the same in both figures.

Again he says:

The working parts of a die are the ribs between the grooves and the inclination of their adjacent sides to each other, which is constant from one end of the die to the other. The work of raising the thread is mainly performed by these sides.

One of these ribs a is represented in perspective by Fig. 8, which shows especially the important feature of the varying width of the top or face. This top face, which is substantially level, has the form of a truncated wedge, very narrow at the end h, where the rolling commences, and much wider at the opposite end. A dotted line ed on the side and parallel with the face indicates the depth to which the rib may be assumed to enter the body of the blank.

With reference to the mode of operation Rogers says:

The action of dies of this kind in forming the threads of a screw may be readily understood. Let it be assumed that the die A (represented by Fig. 1) is a stationary die, and that a similar die, with the ends reversed, is to move back and forth in front of it at the proper distance. To roll a screw, the movable die must be carried to the left until its right-hand end is a little past the left-hand end of the opposite or stationary die. A screw-blank is then placed vertically in the space between the opposed ends of the dies, and as the movable die is carried to the right the blank is seized and rolled along between them until the movable die passes the opposite end of the fixed dic, when it drops from them. At the commencement of the operation the narrow ribs h of the dies are forced into the metal to the maximum depth required, and as the rolling progresses the metal between the ribs is more and more compressed and gradually expands into the grooves of the dies, until, at the end of the operation, it fills them, and the thread is completed.

It appears to be of essence in the Rogers invention, as expressed in the interfering claim, that the construction and operation be such that the die ribs penetrate at the commencement of their entrance into the 782 c P-8

metal to the depth required to form the body of the screw. On the other hand, the Winssinger dies are designed to penetrate the metal to a gradually-increasing depth, and the described construction and mode of operation are such as to make the capacity to gradually penetrate material to the construction and mode of operation. Indeed, a claim in the Winssinger application was struck out at the time when the present claim was inserted, which contained the words "so that they may penetrate the metal to a gradually-increasing depth. The claim in full was as follows:

A screw-plate for rolling threads on screws, bolts, etc., having oblique V-shaped grooves, presenting between them a series of ribs narrow at the end where they commence to form the thread, and gradually increasing in width, so that they may penetrate the metal to a gradually-increasing depth and subject the screwthread to a lateral pressure, as explained.

This claim was inserted by amendment as late as August 9, 1889, showing that more than three years elapsed after the filing of Winssinger's application before he reached the conclusion that he had made the invention patented to Rogers nearly two years before.

The Examiner also granted the motion to dissolve upon the ground that Winssinger had no right to make the claim. The appeal from the decision upon that ground would lie under the rules to the Examinersin-Chief. No such appeal appears to have been taken by Winssinger, although the time limited for that purpose by the Primary Examiner has long since expired.

The cases of Chicago and Northwestern Railway Co. v. Sayles (C. D., 1879, 349; 97 U. S., 554) and Consolidated Electric Light Co. v. McKeesport Light Co. (C. D., 1888, 452; 40 Fed. Rep., 21) should certainly place all officials of the Patent Office upon their guard against amendments, made late in the history of proceedings upon an application, which are apparently inspired by the purpose of dominating inventions subsequently made by other inventors and not embraced within the scope of the application as originally filed.

The practice of appropriating literally the claim of a later inventor, which is drawn with reference to the employment of terms found in the preceding specification, and then applying the claim so appropriated to a specification of an older date which does not contain words and expressions suitable to lead up to the language of the appropriated claim, cannot be too strongly condemned. Nothing but confusion can result from such a course, and while I may not at this stage of the proceedings decide that Winssinger has no right to the subject-matter of his claim, as it has been interpreted, yet it is proper that I should say that whatever claim is ultimately allowed to Winssinger should be expressed in such a way as to be homogeneous with the preceding specification.

The decision of the Primary Examiner dissolving the interference is affirmed, and the Examiner of Interferences is directed to vacate the judgment of priority heretofore rendered in favor of Winssinger,