273 F. 757 | D.D.C. | 1921
This appeal is from the decision of the Commissioner of Patents awarding priority of invention to appellee, Roberts, the junior party. The interference is in seven counts, of which count 1 is illustrative:
“1. In an automatic telephone exchange system a plurality of subscribers’ stations and metallic circuit lines extending thence to a central office, automatic switching apparatus for interconnecting the lines at the central office, a source of current connected in the metallic circuit of a subscriber’s line, means at the substation to make and break the said metallic circuit at will, the makes and the breaks being of varying but predetermined duration and means at the central office responsive to such makes and brakes in the metallic circuit to actuate, control and release the automatic switching apparatus and also to ring the wanted subscriber, substantially as described.”
. Roberts is conceded to have been the first to conceive the invention; hence the case turns upon his diligence at or just before Clement came into the field. The dates are not controverted. Roberts is awarded January 24, 1905, for disclosure, based upon his blueprint Exhibit 3 of that date, upon which the counts of the interference may be clearly read. He filed March 10, 1906.
We agree with the Board of Examiners in Chief that Clement constructively reduced the invention to practice in an application for patent filed August 31, 1905. His present application was filed December 9, 1905, but the former application disclosed the. invention here in interference.
The. Clement application relied upon for disclosure required the intervention of an operator at the central station to connect the call with an automatic first selector switch, through which the call could be extended automatically to the number desired.
Roberts, on the other hand, contends that his system required a special form of interrupter, in order that the impulses could be accurately timed. A drawing-disclosing the interrupter was completed September 7, 1905. It is upon this that Roberts claimed the exercise of diligence at and prior to Clement’s entrance into the field; but we find nothing in the claims limiting them to a full automatic system, or requiring a direct automatic connection between the calling party and the first selector switch. On this point the Board of Examiners in Chief said:
“We do not find anything in the issues that limits them to a full automatic system or to a direct connection to the subscriber’s line with the first selector switch. The claims cover only a means for controlling a series of automatic switches for extending a call over a metallic or two-wire circuit from the calling subscriber to the called subscriber, and when the central operator plugs in the operation of the switches is exactly as specified in the issues. We*759 regard the issues as covering specific means of operating the switches and extending the call, whether it is used in a semiautomatic or a full automatic system.”
“The excuse given by him [Lotterhand] or for him is that he desired to invent a new typewriter wherein to introduce his invention, and thereby to avoid the necessity of using any of the existing typewriters. In other words, having made one invention, complete in itself and ready to be patented, if ho did actually make it, or have a conception of it, he deliberately waited for a year or two years, until he should have time to make another invention to combine with it, and wherein to use it to the best advantage for himself. But this excuse cannot be accepted under any of the authorities as explaining the absence of diligence, while another man was actively in the field of invention at the same time. To delay one invention for the sake of another projected invention to be used in connection with it, and which might never be realized, cannot be construed in the patent law as an exercise of duo, diligence.”
The decision is reversed.
Reversed.
Mr. Justice HITZ, of the Supreme Court of the District of Columbia, sat in the place of Mr. Justice ROBB in tire hearing and determination of this appeal.
