(dissenting).
I cannot assent to the conclusion reached by the majority in this ease, because I do not believe that appellant has sustained the burden of proof resting upon him as the junior party.
A careful reading of the record in this ease leads me to the conclusion that appellant should not be held to have been the first to conceive and reduce to practice the invention here involved, but that the acts of appellant which the majority holds constitute a reduction to practice by him should be regarded only as an abandoned experiment.
Nowhere in his application does appellant describe or show the form of shingle which he claims to have conceived and reduced to practice in 1922, but, on the contrary, his application shows only a shingle which he testified he did not invent.
The testimony shows that prior to July, 1922, there was in use a patented shingle known as the Arro-Lock shingle, which had slits extending inwardly from opposite points on the lateral margin of the shingle, adjacent to the lower corners, and that such shingles were being used in July, 1922, by the Tilo Roofing Company, of which appellant was president.
Appellant testified that upon July 3,1922, he observed the difficulty that the workmen had in opening up the slits of the shingles by use of their thumbs, and that he then conceived the idea of lessening the labor cost of laying that type of shingle by changing the slit into a notch. Upon this point he testified as follows:
“Q. How did you propose to bring about this result? A. I thought, instead of having this slot that had to be broken down each time a shingle was laid, if a notch was cut out of the side of the shingle it would save the labor cost of breaking down the slit, which would reduce the cost of laying the shingles materially.”
He then testified that on July 4, 1922, he made a number of shingles embodying his idea, to cover a panel board 3% or 4 feet square, and that such structure was fastened on the outside of the warehouse on about the slant of a roof, where it remained for some considerable length of time, after which it *151was placed in an outbuilding on tbe premises of the warehouse, where it was found in the fall of 1927, more than five years after it was made. It is apparent from the testimony that appellant’s only thought or conception in making the shingle, which the majority holds constituted a reduction, to practice, was to improve upon the Arro-Loek shingle by providing a notch instead of a slit, thus doing away with the necessity of the workmen, in laying the shingles, breaking down the slit with their thumbs.
Appellant’s application here in issue was filed on October 21, 1924, and his specification shows that at that time he condemned the very type of shingle which he now says he invented. In his specification he states:
“ * * * In the prior art the most common method of anchoring the lowermost corners of composition shingles is dependent upon the use of notches or slits extending inwardly from opposite points on the lateral margin of the shingles adjacent the lower comer and the placing of the marginal portions of underlying shingles in such notches or slits to thereby hold the exposed lower comer of the overlying shingle in position. This construction and arrangement has been open to the objection that the notches or slits produced a weakening effect on the shingles and, in addition, the inserted edges of the adjacent shingles produced an abrupt bend in the material of the shingle at the inner edges of the slits and tended to tear or cheek the material of the shingle and destroy its usefulness.
“The present invention consists of the use of anchoring members formed by lateral extensions on the lowermost extremity of the body portion of the shingle itself. In other words, instead of impairing the usefulness of the shingle by placing notches or slits therein, I achieved the desired function by the provision of lateral extensions or by a lateral expansion of a comer portion of the shingle to thereby provide anchoring tab members which do not in any way detract from the strength of the main body portion of the shingle.” (Italics ours.)
It will be observed from this quotation that he was then of the belief that the notch in the shingle represented by the panel board in evidence, regarded by the majority as a reduction to practice, produced a weakening effect on the shingles, and that he had invented the shingle shown in his drawings and in the application of appellee, which did not include the notch in the body of the shingle, stating, to repeat from the above quotation: “ * * • In other words, instead of impairing the usefulness of the shingle by placing notches or slits therein, I achieved the desired function by the provision of lateral extensions or by a lateral expansion of a comer portion of the shingle to thereby provide anchoring tab members which do not in any way detract from the strength of the main body portion of the shingle.”
It therefore appears that it was appellant’s idea in 1924 that the shingle which he says he invented in July, 1922, was open to the objection that the notch produced a weakening effect on the shingle and detracted from the strength of the main body portion of the shingle.
It further appears from the evidence that after this alleged invention and reduction to practice in 1922 of the notched shingle, which the majority finds constituted a reduction to practice, appellant made an application for patent for an improved type of shingle and received a patent therefor, but in such application and patent no mention is made of his notched shingle of 1922. Appellant attempts to explain this by testifying that he supposed that said notched shingle was included in said last-named patent, which was issued on October 21, 1924, and that after he received the same he asked his attorney if his 1922 shingle here referred to was covered by the patent, and was informed by his attorney that it was not. Appellant further testified that upon receiving such information it was agreed between himself and his attorney that he would file the application here in issue. As before stated, appellant’s application here involved was filed on October 21, 1924, the very date that said patent was issued, which patent, appellant testified, he did not see until “soon after” it was issued, so it is evident that there could have been no omission in the patent of October 21, 1924, the observance of which caused appellant to file his present application.
Appellant’s testimony as to his explanation for not including his notched shingle in his 1922 application is completely refuted by the evidence in the case. The record shows that in the early part of 1924 or in the late fall of 1923, appellant, being informed of the invention claimed by appellee herein, and that he had filed application for patent therefor, entered into negotiations with appellee for a license to manufacture the shingle covered by appellee’s application; that said negotiations did not result in appellant’s securing a license from appellee; and that during the course of such negotiations appellant *152never told appellee' that he had invented a similar shingle. When ashed to give his reason why he did not so tell him, appellant replied : “I didn’t see any way this shingle resembled or was comparable to the shingle I had made application on.” It will be observed that at the time of these negotiations appellant had not filed the application here in issue, and he evidently was referring to the application upon which he secured a patent on October 21, 1924, which further refutes his attempted explanation that he thought his patent of October 21, 1924, covered the shingle which he claims to have invented in 1922.
The testimony also establishes that during the course of the negotiations between appellant and appellee, whereby appellant attempted to secure a license from appellee for the manufacture of the shingle covered by appellee’s application, appellee placed in the hands of appellant’s attorney a copy of appellee’s application here in issue and his entire' file with reference thereto, for the purpose of convincing appellant that he had a valid application pending and was entitled to a patent thereon for the shingle shown in his specification and drawings. It is thus established that at the time that appellant filed his application here in issue he had full knowledge of appellee’s application and the exact invention therein -described. This, coupled with his positive admission in the record (hereinafter adverted to) that he did not invent the specific shingle shown in appellee’s application, which is the same shingle shown in appellant’s application, is convincing to me that appellant had abandoned any idea that his shingle of 1922 constituted any invention whatever, and that he was of the opinion that his construction of 1922 of a notch in the body of the shingle would weak.en the shingle and detract from its usefulness. Thus it appears that not only did appellant’s construction of the shingle and panel board of 1922 not convince him of the utility of such a shingle, but that he was satisfied that it was not of utility for the reasons stated. In view of this fact it is only fair to assume, as did the Board of Appeals, that the mere construction of the panel board did not establish its utility, and that, to constitute a valid reduction to practice, it should have been put to actual use upon a roof exposed to the elements and its utility thus demonstrated. However this may be, the conduct of appellant, clearly established by the evidence, is convincing that he regarded his shingle of 1922 as an abandoned experiment only.
The record shows that on cross-examination appellant testified as follows:
“Q. And you make no claim of being the inventor of any shingle which has tab ends extending beyond the shingle itself? A. I do not.”
Yet the only shingles shown in appellant’s specification and drawings are shingles in which the tab ends extend beyond the shingle itself. This, together with the fact that when appellant made his application here in issue he had had access to appellee’s application, together with the further fact that he sought to secure from appellee a license to manufacture the specific type of shingle shown in his own application subsequently filed, convinces me that appellant derived the invention from appellee, and that it was appellee’s disclosure alone that was the basis of and the reason for appellant’s application for patent here in issue.
In view of all these facts, I am clearly of the opinion that appellant, being the junior party, has not sustained the burden of proof entitling him to an award of priority, and the decision of the Board of Appeals should be affirmed.