delivered the opinion of the Court:
This is an appeal from the decision of the Commissioner
“An armored insulating conduit consisting of a metallic armor tube, an inclosed insulating tube capable of being bent or curved without fracture, and an interposed layer of water-resisting cementitious substance uniting the two tubes one to the other.”
The application of the appellant, William T. Ruete, was filed November 6, 1896. His first claim is identical with that of Elwell aforesaid, and was apparently framed to obtain a declaration of interference with his patent.
Elwell claims to have conceived the invention in December of 1893, and to have reduced it to practice in February, 1894. He undertakes to account for his delay in applying for a patent by efforts made in the meantime to cheapen the production in order to make it available commercially.
Ruete is connected with the Interior Conduit and Insulation Company of New York, which for some years prior to January, 1895, had manufactured and sold a metal conduit with an inner tube of paper. This tube was covered with some preparation of pitch or asphalt to render it waterproof and then inserted in the metal conduit. The company furnished a large amount of this conduit to the contractors for the erection of an immense office building in the city of New York. The latter made complaint that where the conduit ran near the steam-pipes of the building the paper tubes became “ tacky ” by reason of the excessive heat and caused the electric wires to stick. - To overcome this difficulty, Ruete about January 17, 1895, conceived the idea of a rubber tube as a substitute for the paper. His suggestion was acted upon by the company, and rubber tubing was purchased and inserted in about six thousand feet of metal
Ruete exhibited a short piece of his present complete conduit and a piece of rubber tubing which was said to be similar to that used in the building aforesaid. This piece of tube appears to have been flexible at the time it was exhibited in evidence, but has since become hard and brittle— a condition that has been attributed to oxidation. The foregoing is relied on as proof of reduction to practice.
Two pieces of Elwell’s conduit made in February, 1894, and which are exhibits in the case, are the foundation of his earliest claim of reduction to practice. The first of these pieces was made in this way: A tube of soft rubber compound was formed by hand upon a rod, by means of which it was inserted in a short piece of metal pipe of suitable size. Before insertion it was coated with rubber cement, which caused it to adhere to the metal pipe, and the rod was then withdrawn. The second was made by introducing in another short metal pipe a corresponding length of soft thin rubber tube of a kind commonly used for siphons. Both pieces were straight. No wire was introduced into them, and no attempt was made to test their capacity to bend without fracture or "buckling ” in so doing.
The issue, it will be observed, calls for three distinct elements — an armor tube, an inclosed insulating tube capable of being bent or curved without fracture, and an interposed layer of water-resisting cementitious substance. According
It is contended on behalf of Ruete, however, that the issue in respect of the “ inclosed insulating tube capable of being bent or curved without fracture ” is not susceptible of a broad interpretation in the light of El well’s specifications. After referring to the details of these specifications and avoiding a criticism of his former argument found in the decision of the examiners-in-'chief, counsel for Ruete states his contention in the following words:
“We do not contend that the insulating tube must be ‘ of the composition of hard rubber . . . partially vulcanized/ but we do contend that it must have the characteristics of stiffness, rigidity and flexibility so as to hold its shape in lengths of ten or twenty feet or more, may be inserted in the metallic armor tube without buckling or doubling, will hold its full rounded shape when bent or curved, and will not collapse and prevent the insertion of the electric wires when curved or bent sufficiently for use. It must be the mechanical equivalent of a partially vulcanized hard rubber compound, as well as having its insulating and moisture resisting properties.”
It is further argued that, whilst these essential characteristics are found in the insulating tube of Elwell’s commercial conduit, made since the date of Ruete’s claim of conception and reduction to practice, they are not found in the soft thin .rubber tubes of the first two Elwell exhibits,
The fact that Ruete’s specifications harmonize with his interpretation of the issue adds no weight to his contention. The Elwell patent was issued nearly four months before he filed his application. With that before him he prepared it and adopted Elwell’s first claim for the apparent purpose of an interference. Having done this, he is not entitled to demand a construction of the claim of the patentee that would render it invalid by reason of that which he himself had accomplished, if it can be upheld by any other reasonable interpretation not necessarily inconsistent with the statement of the patentee. Latham v. Force and Parenteau, 82 O. G. 1690; Tracy v. Leslie, 14 App. D. C. 126: 87 O.G. 891.
The law requires the applicant for a patent to make specific claim or claims defining his invention for the information of the public, and when so made and granted it cannot be enlarged in his interest beyond the plain import of its terms. When necessary to its understanding the specifications and drawings, if any, may be resorted to. The claim may also be limited by the specifications when such is the necessary effect of their recitals, and its true meaning ascertained from the context. Tilghman v. Proctor, 102 U. 8. 707, 721, 728; Howe Machine Co. v. National Needle Co., 134 U. S. 388, 394; White v. Dunbar, 119 U. S. 47, 51; McClain v. Ortmayer, 141 U. S. 419, 425; Celluloid Mfg. Co. v. Arlington Mfg. Co., C. D., 1893, 483, 488: 64 O. G., 1263.
These principles were expressly recognized in the decision of the examiners-in-chief that has been affirmed by the Commissioner. In that decision attention was called to the fact that Elwell’s patent contained five claims. The first is that of the issue herein. The second is limited to the combination of the metallic armor tube and an inclosed insulating tube cemented thereto, “both capable of being bent or curved without fracture.” The third omits men
No important purpose would be served by restating the decision on this point, with or without addition thereto; and, referring to it, we think it sufficient to say that we see no reasonable ground for disturbing the conclusion reached.
On the conclusion that Elwell has shown a conception of the invention of the issue as early at least as February, 1894, three questions follow: (1) Did the construction of the two short pieces of conduit by Elwell in February, 1894, amount to reduction of the invention to practice ? (2) If not, was he exercising due diligence in the matter of perfecting his invention at the time of Ruete’s construction? (3) Did Ruete’s construction and use of his conduit in January, 1895| show conception of the invention and its reduction to practice?
The first of these questions is a difficult one, and the tribunals of the Patent Office have ■ not been unanimous in their answers.
A reasonable doubt on this point will be resolved against the inventor, and special circumstances — as, for example, unreasonable delay in making practical or commercial use of the invention, or in applying for a patent, and the like— would have a tendency to raise this doubt in a particular case. Mason v. Hepburn, supra.
When we consider the nature of this invention, and the purpose and uses it seeks to accomplish, together with the long and not very well explained delay of Elwell both in applying for a patent and in manufacture, we are hardly prepared to say that he ought to have the benefit of reduction to practice, from the construction of his two small pieces of conduit in the manner described. They resemble, in some respects closely, constructions that have been held to amount to nothing more than models or incomplete and abandoned experiments. Traver v. Brown, 14 App. D. C. 34 : 86 O. G. 1324 ; Beals v. Finkenbiner, 12 App. D. C. 23 ; Burr v. Ford, 5 App. D. C. 26, 28 ; Guilbert v. Killinger, 13 App. D. C. 107 : 84 O. G. 313.
As, however, the determination of any one of the three questions in the appellee’s favor will require the decision to be affirmed, we prefer to pass the first two and rest our judgment upon the answer to the third.
Some of the objections made to Elwell’s claim of conception and reduction to practice apply with force to the proof of invention and reduction to practice by Ruete. Super-added is the burden imposed upon him by Elwell’s regularly issued patent to establish his claim by clear and convincing
It is clear that Ruete used a rubber insulating tube as a substitute for his prepared papér tube in order to obviate the defect of the latter when exposed to heat. It is also apparent that he had no idea at the time, and did not have until he saw Elwell’s patent, of the additional uses and advantages of a rubber insulating tube capable of being bent or curved without fracture either independent of or in combination with the metal armor tube. His failure, however, to-perceive this additional use and advantage would not bar his right to claim it as a part of his invention if it was a necessary incident; for it is well settled that one who is the first to make an invention is entitled to claim all the uses and advantages that belong to it — that is to say, that follow directly from it as described ormanufactured — whether they were perceived by him or not. Roberts v. Ryer, 91 U. S. 150, 157; Stow v. Chicago, 104 U. S. 547, 550; Potts v. Creager, 155 U. S. 597, 606; Hill v. Hodge, 12 App. D. C. 528, 530.
If, then, the proof shows that' Ruete actually made an armored conduit with an insulating inner tube of rubber capable of being bent or curved without fracture, he ought to be awarded priority. Considering the burden of proof imposed upon him, as heretofore stated, we are not satisfied that he has discharged it. It must be borne in mind' that he was seeking, not a flexible tube, but one which would withstand the heat that- at points of contact with the steam-pipes destroyed the usefulness of his common paper tube. This rigid paper tube had been carried around corners by means of elbows, in which it was inserted through a heating process, and then joined to the longer and straight sections of the conduit. There was no suggestion whatever of a need for a flexible, tube ‘that would bend with the armor tube, or be capable of introduction into the latter as bent or
To overcome the objection to the “tacking” of the paper tube, rubber tube was procured from the ordinary stock kept by a manufacturer of rubber. Bills for this tubing of corresponding date were produced in evidence, but do not disclose its particular quality. When the testimony was taken two years later, a piece of rubber tube was produced. Ruete and two others connected with his company testified that this was substantially like that used in the conduits made in January, 1895. Another said it was like “to all appearances,” but whether made of a different composition he could not say. When exhibited, this tube was flexible and apparently capable of the use claimed for it; but it has since hardened and become brittle. It seems rather improbable that a manufacturer would keep in stock tubing which by exposure to the air would speedily undergo this radical change of quality, though he doubtless would keep some that was soft, some harder and more rigid, as well as some that was hard and brittle. The harder tube would have answered all the purposes of the inventor at the time as a substitute for the prepared paper. Being rigid, it could more easily be thrust into the armor tube without danger of “ buckling ” or “ doubling.” Under these circumstances it would naturally be preferred. There is no evidence that the elbows were prepared in any manner different from those intended for the reception of the regular paper tube. There is no evidence that the conduit was bent or intended to be
As has been said by Mr. Justice Brown: “Oral testimony, unsupported by patents or exhibits, tending to show prior use of a device regularly patented is, in the nature of the case, open to grave suspicion. Granting the witnesses to be of the highest character, and never so conscientious in their desire to tell only the truth, the possibility of their being mistaken as to the exact device used,'which, though bearing a general resemblance to the one patented, may differ from it in the very particular which makes it patentable, are such as to render oral testimony peculiarly untrustworthy; particularly so if the testimony be taken after the lapse of years from the time the alleged anticipating device was used.” Deering v. Winona Harvesting Co., 155 U. S. 286, 300.
This reasoning furnishes one of the main supports of the rule that requires such anticipations to be proved by evidence so cogent as to leave no reasonable doubt. Id.; Wurts v. Harrington, 10 App. D. C. 149, 153.
Again, the doubt arising from the circumstances referred
It follows that the decision awarding priority to Elwell must be affirmed. It is so ordered, and this decision will be certified to the Commissioner of Patents, as required by law. Affirmed,