EX PARTE MCDOUGALL. Decided April 24, 1882. 21 O. G., 1783. 1. AMENDMENT OF APPLICATION-NEW MATTER-SUPPLEMENTAL OATH. Under Rule 47 an applicant may introduce into his application by amendment a part of the invention originally made which was not incorporated into the application either as a part of the specification or claim, if he swears that the matter which he desires to introduce into his application and make a part thereof was a part of his original invention. 2. SAME-SAME-DATE OF COMPLETION OF APPLICATION CHANGED, Under this practice, however, the Examiner will enter the date of the new oath on the face of the file-wrapper and change the date of the completion of the filing of the application to agree therewith. APPEAL from the Primary Examiner. TOW-BOAT. APPLICATION filed December 24, 1881. Messrs. Dyer & Wilber for the applicant. MARBLE, Commissioner: Appeal is taken from the action of the Examiner refusing to consider an amendment to the application as originally filed because the same contains new matter. Applicant swears that "whatever invention or claim is therein embraced (in the amendment) which was not in the invention or claim as originally presented the same was part of his invention, and was invented by him before he filed his original application." The affidavit thus made is in compliance, or supposed compliance, with Rule 47 of the Rules of Practice, which reads as follows: In case the applicant seeks by amendment to introduce any claim not substantially embraced in the statement of invention or claim originally presented and therefore not covered by the original oath, he will be required to file a supplemental oath to the effect that the subject-matter of the proposed amendment was part of his invention, and was invented before he filed his original application, and such supplemental oath must be upon the same paper which contains the proposed amendment. The Examiner in his answer says: "Rule 47 seems to have no bearing on the case, as that applies solely to new claims." I think the construction which the Examiner places upon Rule 47 is too narrow. The rule reads: "In case the applicant seeks by amendment to introduce any claim not substantially embraced in the statement of invention," &c., he will be required to file a supplemental oath. The word "claim" there, I think, should be constructed to mean not simply one of the claims which applicant may base upon his specification, but a part of the invention originally made but not incorporated into the application either as part of the specification or claims. It will be observed that the rule contemplates a case where not only matter sought to be introduced was not specifically described, but was not even substantially described, in the statement of invention. In other words, not described at all. In such a case if the applicant swears that the matter which he now desires to introduce into his application, and make it a part thereof, was a part of his original invention, then he may do it by ameudment. Rule 69, to which reference is made, seems to apply to a different class of cases. Under that rule, where a party seeks to amend either the drawing, model, or specification, or additions thereto, the amendment must conform to at least one of them-viz., either the model, the drawing, or the specification. If the matter which is sought to be incorporated into the application is not found in either, and the party cannot make oath that it was a part of his original invention, then he must embrace it in a new application. When the rule is so construed I do not think it is in conflict with Rule 47; nor do I think that it bars amendments like the one here presented. It is not alleged, nor do I find such to be the fact, that the amendment is not properly of subject-matter which might have been claimed in the original application. If the matter sought to be introduced into the application by this amendment were a part of the original invention, then I think that the applicant ought to be allowed so to introduce it at this time. In other words, he ought to be allowed to particularly describe the whole of his invention, and to claim it in one application, if it can be done before the case has passed beyond the control of the Office, and within two years from the filing of the first papers in the case. Section 4894, Revised Statutes. The Examiner will, however, enter the date of the new oath on the face of the file-wrapper and change the date of completion of the filing of the case to agree therewith. With this modification, the decision of the Examiner is overruled. HARMET . REESE ET AL. Decided May 24, 1882. 21 O. G., 1875. 1. PRIORITY OF INVENTION-ABANDONment after REDUCTION TO PRACTICE-EX PARTE QUESTION. When it appears that one of the parties to an interference has put the invention into actual operation before the appearance of the other inventors in the field, the question as to whether he has in any manner by his long delay lost his right to a patent therefor goes to the merits of his application, and is strictly ex parte. 2. SAME-LACHES-SUBSEQUENT INVENTOR. An inventor who has perfected his invention cannot by neglect and laches for. feit his right to obtain a patent therefor in favor of a subsequent inventor. 3. SAME-LACHES AS AFFECTING FIRST AND SECOND INVENTOR. No proof of laches on the part of the first and original inventor occurring subsequently to the perfection of the invention can avail a subsequent inventor, and no laches short of abandonment of the invention can defeat the right of the first inventor to the patent. APPEAL from the Board of Examiners-in-Chief. INTERFERENCE.-CASE A. MANUFATURE OF STEEL. APPLICATION of Heuri Harmet filed September 19, 1879. Application of Jacob Reese filed July 28, 1879. Application of Sidney G. Thomas filed May 20, 1879; patented July 27, 1879, No. 219,762. Mr. Ellis Spear for Harmet. Messrs. Bakewell & Kerr for Reese. Mr. W. H. Finckel for Thomas. MARBLE, Commissioner: The invention in this case is defined in the following language, viz: Desiliconizing the molten iron in a converter with a silicious lining and then removing the metal to and further refining it in a converter with a basic (calcareous) lining. Thomas and Harmet appeal from the decision of the Board of Examiners-in-Chief awarding priority of invention to Reese. It appears from the testimony exhibited in behalf of Thomas and Harmet that their inventions were made in England and France, respectively. Thomas offers evidence to show that his invention was conceived in 1877; that it was shortly afterward communicated to others, and particularly to his agent, George H. Maynard, who arrived in this country March 29, 1879, and filed Thomas's application for a patent in this Office May 20, 1879. In behalf of Harmet it is shown that he is the inventor of the subject-matter of French Patent No. 129,111, taken out February 1, 1879, in the name of his father. According to the rule made in this case by Mr. Commissioner Paine (Thomas v. Reese, 17 O. G., 195) Thomas's invention, for the purposes of this interference, must be held to date March 29, 1879, the date of its introduction into this country, and Harmet's invention must be held to date February 1, 1879, the date of his foreign patent. The Examiner of Interferences and the Board of Examiners in-Chief concur in finding that Reese practiced this invention as early as 1867. An examination of the testimony leaves no doubt that as early as 1866 Reese had a plant, illustrated in sketches offered in testimony, which consisted of the various appliances necessary to the practice of this invention. There was a cupola, beneath which was placed the first converter lined with a brick or silicious lining, and in convenient prox. imity a second converter lined with lime or basic lining (Case A), and also an open-hearth furnace lined with a basic lining (Case B). The workmen who were employed in operating this plant do not seem to have been informed of the rationale of the experiments, but they recall distinctly the actual operations performed, and their testimony fully substantiates the claim of Reese that he successfully practiced the in vention in controversy at that time. At a later date, but before the dates given to the inventions of Thomas and Harmet, Reese recalled these circumstances to the recollection of some of the persons concerned, explained the nature of the invention, and announced his intention of obtaining a patent therefor. Various causes contributed to delay the filing of the application, but upon learning of the existence of rival claims Reese at once took steps to assert his rights. His application was filed July 28, 1879. Ordinarily evidence offered to show an invention at so remote a period as claimed by Reese in this case is accepted with great doubt. Owing, however, to the elaborate and costly appliances required for experiment in this line of invention and the number and character of assistants necessarily concerned in carrying them on, the testimony in this case is unusually satisfactory, and leaves no doubt as to the fact and nature of the invention. It is urged that certain later patents taken out by Reese contain expressions which are inconsistent with the claim that he had them made the invention in controversy. A list of these supposed discrerancies is presented, but I am unable to conclude that the direct and circumstantial testimony as to facts should yield to these remote and insubstantial inferences. The patents referred to dealt, of course, with matters of public knowledge, and it was not incumbent upon Reese to disclose in those patents matters of private information, which were the fruit of his other inventions and discoveries. Reese, then, having put the invention into actual operation before the appearance of the other inventors in the field, the question arises whether he has in any manner by his long delay lost his right to obtain a patent therefor. This question goes to the merits of his application, and is, strictly speaking, ex parte. Counsel, however, have advanced the propo sition that an inventor who has perfected his invention may by his neglect and laches forfeit his right to obtain a patent therefor in favor of a subsequent and independent inventor. This doctrine is, as I believe, foreign to the patent law. When a person has reduced an invention or discovery to a fixed, positive, and practical form, and made a full disclosure of its character to others his right to a patent is complete (Reed v. Cutter, 1 Story, 590); and if he foregoes that right, no subsequent inventor can comply with the conditious upon which alone a patent can be granted. Pickering et al. v. McCullough et al., 13 O. G., 818. If the first and original inventor abandons his invention to the public expressly or tacitly by neglecting seasonably to assert his exclusive right, he cannot recall that right (Mellus v. Silsbee, 4 Mason, 108), and still less can a later inventor appropriate it to himself. American Hide Company v American Tool Company, 4 Fish., 284. Under these circumstances the first invention is not a waif or stray which can be reclaimed at will by its original owner or converted by a subsequent discoverer to his own It has passed into the public domain, and the public is already, therefore, in possession of the knowledge of the invention which would form the consideration of the grant of a patent to the second inventor. Consolidated Fruit Jar Company v. Wright, 4 Otto, 92. I decline, therefore, to rule, as requested, that there is a difference between the questions of laches and abandonment after the reduction of the invention to its final form. No proof of laches on the part of the first and original inventor occurring subsequently to the perfection of the invention can avail a subsequent inventor, and no laches short of abandonment of the invention can defeat the right of the first inventor to the patent. In the case of Rowley v. Mason (2 Am. L. T., U. S. R., 106), Mr. Justice Fisher, extending the application of the doctrine of diligence, said: The same sound policy seems to me to require that, as between two independent inventors, the one who has perfected his invention but chooses to sleep upon it for nine years, or even a less period, and is only aroused from his slumbers by the application of a subsequent inventor for his patent, has no right to complain if that application should meet with success. This judgment was founded on those undoubted authorities that hold the first inventor to the exercise of a reasonable diligence in the development and perfection of his invention. The race of diligence, however, which is referred to in these decisions ends with a reduction of an invention to its final form, and no subsequent inventor can then engage in rivalry with an inventor who has already reached the goal. The same results follow from the express provisions of the statute. . Section 4886 declares that the first and original inventor alone is entitled to the grant of a patent. This rule is subject to the implied exception that an invention made abroad unpatented and unpublished will not bar a second inventor. With this exception and the case of lost arts, where the prior invention has passed into oblivion (Gaylord v. Wilder, 10 How., 477), the rule is, so far as I am aware, universal. Section 4920 leads to the same conclusion. Under this section a patent granted to a second inventor may be invalidated by proof that the invention was known and used by others prior to the invention by the patentee, or, in the language of the fourth special matter, which may be given in evidence under the general issue (section 4920, fourth clause), "that he was not the original and first inventor or discoverer of any material or substantial part of the thing patented," and it is not necessary to show under this defense that such first inventor is still diligently following up his invention or that he intends or is in a position to obtain a patent therefor. In no decided case of which I am aware has such a question been raised under this defense. If, then, the perfected invention of the first inventor will defeat the grant of a patent to the second inventor, although such first invention has not been diligently prosecuted to a patent, it follows that no such patent should be granted to the second inventor as the result of an interference. 5 Opinions of the Attorneys-General, 18; Chambers et al. v. Duncan et al., 10 O. G., 787. The case of Kendall v. Windsor (21 How., 322) has often been referred to in this connection, as showing that a slothful inventor might |