delivered the opinion of the Court:
This is an appeal from the decision of the Commissioner of Patents in an interference case involving priority in the matter of the invention of an improvement in gas, or vapor electric lighting apparatus.
Peter O. Hewitt and Nelson W. Rogers filed their joint application March 23, 1901. Ezechiel Weintraub’s application was filed February 26, 1902.
The issue contains twenty-five counts, of which it is sufficient to set out numbers 1, 23 and 24, as follows:
“1. In a gas or vapor apparatus, the combination of two working electrodes, a starting electrode, and means for connecting the starting electrode with and disconnecting it from, one only of the working electrodes.
“23. The combination of an exhausted envelope electrodes therefor, one at least of which is of vaporizable material, a source of current connected to said electrodes, and means for starting a flow of current from said source between said elec
“24. The combination of an exhausted envelope, electrodes therefor one at least of which is adapted to emit vapor, means for impressing electro-motive forces on said electrodes, and means for starting an arc between one pair of said electrodes including said vapor-emitting electrode, thereby starting an arc between said vapor-emitting electrode and another of said electrodes.”
Some of the twenty-five counts were taken from the claims in the Hewitt & Rogers application; others from the claims of Weintraub’s application.
The preliminary statement of Weintraub failing to overcome the filing date of his opponents, an order was made to him to show cause why decision of priority should not be entered against him. We do not find in the record the response of Weintraub to this order, or his motions to dissolve and to take testimony, but find their substance recited in the several decisions thereon. It appears therefrom that he moved to dissolve on the grounds of no interference in fact, and for nonpatentability of certain of the counts. The Primary Examiner denied the motion to dissolve, but held certain counts to be unpatentable. On appeal to the Commissioner, the decision that there was an interference in fact was affirmed. Weintraub then sought to take testimony to show that the construction and operation of the two devices were not the same. This was denied on the ground that it could be used only as a basis for dissolving the interference (which had been denied), and not on the question of priority. He then moved for leave to take testimony to show that Hewitt & Rogers have no right to make claims corresponding to counts 23 and 24 of the issue. This was granted. The decisions of the Examiner of Interference on these motions were affirmed by the Commissioner on January 11, 1907. Under this leave Weintraub took the deposition of one witness, Professor Steinmetz, who is employed by the General Electric Company, the assignee of Weintraub. His opponents took the'
Hewitt was an earlier inventor of lamps of this general character, as shown by patents issued to him. In such apparatus there is a high initial resistance, which, once overcome, the flow of current can be maintained by the ordinary commercial potentials. These earlier lamps were first started by means of a high potential discharge ordinarily obtained from a static machine. Later, Hewitt employed a self-induction coil to produce the necessary high potential for starting the lamp. One of his patents shows a system in which an induction coil is connected in shunt to the lamp, there being a switch in circuit with the inductance. Before starting the lamp, the switch is closed and current flows through the inductance. The sudden opening of the circuit through the inductance generates an impulse of highly electro-motive force which break down the resistance and initiates the flow of the current of ordinary working voltage. Both parties agree that there is a difficulty in overcoming the initial resistance of the cathode, after which the ordinary working current is sufficient. Hewitt & Rogers refer to this difficulty as negative electrode reluctance, and their theory is that the surface of the mercury presents a barrier which must be pierced or overcome before the flow of current can be established. Weintraub’s theory is that there must be ionized mercury vapor, furnished by the negative electrode under excitement, which creates the vehicle for the transfer of the current. Whichever theory be the correct one, it is substantially that 'wtien thes& is a, evmesA pmmg Mmen the negative electrode and an anode, a current may be secured between it and another anode at ordinary working voltage, without having recourse to the extra high voltage heretofore employed for starting. The operation of the invention of the issue consists in starting the arc between the negative electrode or cathode and the working anode. There is no question but that Weintraub has the right to make the claims of the issue. In his lamp the supplementary anode is of mercury, like the cathode. By mechanical means, or by tilting the lamp, the
As stated by the appellant, the single question presented is whether this operation of the appellees’ apparatus, which is the invention of the issue, is disclosed in their application. His proposition is that a fair reading of that application (especially as it would appear to anyone “who had no knowledge of the AYeintraub invention) does not afford a clear disclosure, or any disclosure at all, of the mode of the operation in controversy. The Primary Examiner held that it does, and his view was affirmed in succession by each of the tribunals of the office before whom it came in due course of procedure. The question was ably argued before them on behalf of the appellant, as it has been on this appeal. Each tribunal delivered an elaborate opinion, in which the description of the application is analyzed and the evidence of the experts reviewed.
Where the three tribunals of the office have concurred in their decision of a question of this kind, it is the settled rule of this court not to disturb their conclusion unless manifest error can be found therein. Podlesak v. McInnerney, 26 App. D. C. 399—405; United States ex rel. Newcomb Motor Co. v. Moore, 30 App. D. C. 464. And especially is this the case where the question is one relating to the operation of complicated apparatus, involving the application of scientific principles about which learned and highly skilled electricians differ. It is true that the language of the Hewitt & Rogers application is vague,
The application of the appellees has been so fully and carefully examined in the decisions of the several tribunals, set out in the record, that it would serve no useful purpose to consume time with an additional review.
One other question remains to be considered. Weintraub filed in evidence a deposition of one Lunt and copies of depo
There was no error, we think, in the exclusion of the evidence. A prima facie case of joint invention was made by the allowed application. Weintraub’s statement of his conception of the invention giving a date later than the filing date of his opponents, they were not required to take any testimony in support of their claim, but were entitled to a judgment on the record, unless it could be shown, as contended by Weintraub, that they were not entitled to make the claims, because there was nothing in their application furnishing a basis therefor. This being the sole issue presented, Weintraub applied for and obtained leave to take evidence thereon. The additional evidence sought to be introduced was not pertinent to this, the sole issue in the case. The case of Lemp v. Randall, 33 App. D. C. 430-432, relied on by the appellant, is not in point. All that was decided in that case was that, on an issue requiring proof of conception of the invention, evidence was admissible to show that one only of the joint applicants was the actual inventor. Having made an application alleging that they were joint inventors, they tendered that as one of the issues of the case. The case was distinguished from those where it had been held that evidence could not be offered to show that a third person, not a party to the proceeding, was the first to invent. The court said: “Appellant did not seek to show that the right to the award of priority was in a third party, an alien to the proceeding, but that the senior parties to the proceeding were without standing, because it appeared that they were not
We find no error in the decision appealed from, and it is affirmed, with direction to‘ certify this decision to the Commissioner of Patents. Affirmed.