United States Patent Office.

VOL. 4. - NO. 4.  TUESDAY, JULY 22, 1873. PRICE { $6.00 per year -  single.
{$5.00 per year in clubs.



[Appeal from the decision of the Board of Examiners-in-Chief in the matter of interference between the applications of James M. Brookfield and Robert Hemingray and the patent of Homer Brook, for IMPROVEMENT IN THE MANUFACTURE OF INSULATORS. Decided July 3, 1873]

Where two conflicting applications are pending in the Office at the same time, and a patent is issued upon one of them by mistake without declaring an interference between them, the rights of the parties will be determined on the same ground as if both were applicants; the one who has obtained a patent will derive no advantage from it in the controversy, neither will the other be prejudiced by it.

The party who first conceived an invention, and made drawings of it, and endeavored to induce manufacturers to adopt it and introduce it, without whose aid it could not be done, held to be the prior inventor, although his competitor, being a manufacturer himself, was enabled thereby to anticipate him is introducing it into use.

LEGGETT, Commissioner:

This cause was decided by. the Examiner of Interferences in favor of Brooke, and by a majority of the Board in favor of Hemingray, one member dissenting. Brook19 field has filed an admission that both the other parties precede him in date of invention, which leaves the question of priority to be decided between them only. The invention in controversy is a process of making glass insulators for telegraph-wires. Molten plastic glass placed in a mold of suitable form to make an insulator receives a plunger, which is quickly withdrawn, leaving a hole into which a screw-threaded mandrel is inserted. As soon as the glass becomes slightly cooled and set the mandrel is unscrewed, leaving the cavity screw-threaded. The respective steps in the grocers and the same, except that Brooke proposes to rotate his mandrel while it is descending into the cavity in the glass. Hemingray thrusts his in, and relies alone on unscrewing it to perfect the glass screw-thread.

Brooke's application was filed December 11, 1869, and his patent granted January 25 1870. Hemingray's application was filed January 3, 1870. Both were pending in the Office at the same time, but by some mistake they were assigned to different classes, and Brooke's patent was granted without an interference. This was in violation of the statute, and Hemingray is not to be prejudiced under such circumstances by the fact that Brooke has a patent. See Hamilton vs. Foster, Decisions, 1869, p. 30. This interference was declared before preliminary statements were required by the rules of the Office. Hemingray does not fix the date of his invention definitely in his testimony, but says he made it before the 4th of February, 1869, in warm weather, and be thinks in July or August, 1868. At that time a number of insulators were made by the process in question. This is amply proven. and is conceded by Brooke. At least one of the insulators then made was put into use. In May, 1869, he manufactured and sold a large number. It is not necessary to consider the testimony of Hemingray further. The substance of it all is, he completed and successfully practiced his invention in the summer of 1868, employed it largely to supply the trade in the spring of 1869, and applied for a patent early in January, 1870.

Brooke proves that he conceived the invention in the winter of 1867 and 1868, and made a drawing of a machine necessary to the actuation of the process, and illustrating it so far as it is possible to exhibit a process by a drawing. This drawing. which is put in evidence, was exhibited to others, as they testify in support of Brooke, and the machine and the process were intelligibly explained to them during the spring and summer of 1868. Brooke at the same time expressed his intention to take out a patent. In February 1869, be showed his drawing to a model-maker, explained the invention, and inquired, "What would be the cost of getting up models for the Patent Office?" (Shedlock, 2, 3.) He swears he made efforts at different times to induce different parties engaged in glass manufacture to use his invention. In June, 1869, he practically tested his process in Brookfield's shop, as is fully proven, successfully making a number of insulators. Brookfield was present and gave him an order for a machine, which was completed and delivered July 6, following. Afterward, the same year, he made Brookfield other machines. These are the facts in proof in behalf of the parties, respectively, and they are nowhere disputed. The question is whether Brooke, being first to conceive the invention, used reasonable diligence to adapt and perfect it for practical use. It is to be noted that he is not a glass manufacturer, and Hemingray is. Although he could (as he swears he did in 1869) make the machine, he could not himself readily use it to practically test his process. The best he could do, or all that he could reasonably be required to do, was to explain the process, in connection with the drawing of the machine, to those engaged in glass manufacture who would be likely to be interested by him to take it up and test it. This he did, and in about a year and a half from the date of his first conception of it he succeeded in introducing it into use in Brookfield's shop.

It is not shown by what means he could have had it used or tested any sooner than he did. There is nothing standing against him except the mere lapse of a comparatively short period of time during which another, better situated, perfected and used the invention. He accounts fur his delay, and for no greater delay than that his own oath uncontradicted is sufficient. The reason alleged for not applying for a patent sooner, and thus conferring his invention upon the public, is that "he did not feel in circumstances to make application," and it is nowhere alleged or shown that he was. The screw-threaded insulator itself was patented. He could not use his process without making terms with the patentee, and he swears he saw him and tried to interest him in his invention. Hemingray employed the process as soon as he thought of it, because it was for his interest to do so, and he had nothing to prevent him.

But the question is not who used it first. That is not the only matter of importance in a controversy of this character. Precedence in its inception, the date of its origination, the time when sufficient proof shows it to have been so far developed by the aid of a drawing or model as to be actually communicated to the knowledge of others, who attest both their knowledge and the means of their knowledge, is quite as important. Brooke was unquestionably first as to that much of the act or work of invention, and the test of reasonable diligence afterward must not be applied with unreasonable rigor to cut him off. Although he did not at first perfect and prove his invention by use, or by embodying it in due form in an application for patent in this Office, I think he is shown by the proof to bare been reasonably diligent in doing both. If I am correct in this opinion, his right to a patent should not be denied.

The decision of the Board is reversed and priority awarded to Brooke.