On the 19th of September, 1840, John Arnold made application for a patent for his invention of a “ new and useful manner for forming the web of felt-cloth and web for other purposes,” and in October following complied with the other requisites of the act of the 4th of July, 1836. A caveat, however, had been entered by George G. Bishop and John Aiken, who claimed to be joint inventors with the said John Arnold of the same machine ; and on the 20th of March, 1841, the said Bishop and Aiken made application by petition for a patent for the same invention in the name of the said Bishop, Aiken, and John Arnold, averring it to be
On the 16th of June, 1841, the Commissioner decided that it was to be considered a joint invention, and that neither of the parties can claim the whole, and rejected the application of all the applicants. From this decision Mr. Arnold has appealed; and the reasons stated are, in effect, that the Commissioner has considered and acted upon evidence not competent according to the general rules of law, and upon testimony not taken according to the regulations prescribed and promulgated by himself; and that, independent of the evidence thus objected to, there is not sufficient evidence to establish the fact of joint invention. And Mr. Arnold’s attorney asks leave to be further heard if his objections to the evidence should be overruled.
The evidence objected to consists of—
1. John Aiken’s ex-parte affidavit in support of the same joint claim.
2. Letters from Mr. Rowley to the Commissioner of Patents, dated, respectively, March 15th, May 2d, and June 9th, 1841.
3. Ge'orge G. Bishop’s letters to the Commissioner of 7th of May and 12th of June, 1841.
4. Mr. Rowley’s deposition.
One of the objections to the deposition of Mr. Rowley is that the commissioner of deeds before whom the deposition was taken has not certified upon the deposition, according to the tljird rule, that it was sealed up by him. •
By the act of March 3d, 1839, section 12, it is enacted “that the Commissioner of Patents shall have power to make all such regulations in respect to the taking of evidence to be used in contested cases before him as may be just and reasonable.”
Under this authority, the Commissioner made out and promulgated the following rules : [See statement of the case.]
The first of these rules is evidently intended to apply to the initiatory proceedings in applications for patents and to uncontestecl cases where the Commissioner may consider all the circumstances which may come to his knowledge. The other rules,
If the witness is interested, he is excluded, however small the •amount of interest may be.
Objection was made .to the taking of the deposition of Mr. Rowley at the time of taking it because of his interest, and because the notice was too short, because the magistrate was not named before whom the deposition was taken, and because the time was so late that Mr. Arnold would not have time to take countervailing testimony.
The interest of Mr. Rowley in the patent right is the same,
The objection to the shortness of the notice is answered by the fact that Mr. Arnold did appear at the time and place, and cross-examined the witness. The lateness of the time is no cause for rejecting the deposition, but it might, perhaps, have been good ground for an application to the Commissioner of Patents to allow further time for taking other testimony which he might deem important in the cause.
But the objection that the magistrate before whom' the deposition was taken did not certify thereon that it was sealed up by him is sufficient ground for excluding that deposition from the consideration of the Commissioner of Patents.
This evidence, then, being excluded, there remains only, on the part of Messrs. Bishop and Aiken, the deposition of Mr. Lownsberry. This deposition is admitted to have been taken and transmitted according to the rules; but it. is said that it shows Mr. Lownsberry to be so interested as to be an incompetent witness. In that respect, however, he stands on the same ground with Mr. Rowley, and the same answer is applicable to him.
It appears by his deposition that the idea of crossing the wool diagonally was suggested by Mr. Bishop and Mr. McLean, or one of them, before Arnold was applied to or had any connection with the company in which Lownsberry, Bishop, and McLean were concerned; that upon the recommendation of Mr. Moulton, Bishop, as agent of the company, applied to Arnold to make the necessary machinery, who undertook the work, and was to have one-fifth of the profits; that he made a machine for crossing wool at right angles, and obtained a patent for it1 in 1829 or 1830, which was afterwards improved by him and Bishop, who obtained a patent for the improvement in their name; that Bishop frequently, from 1828 to 1837, urged the building of a machine to cross the wool diagonally, to which Mr. Lownsberry was opposed; the machine, however, was built in 1837, by Arnold and Aiken for
It seems to me that there is enough in this deposition to show that Mr. Arnold was not the sole inventor of'the principle of crossing the wool diagonally, or the machine for reducing that principle to practice; and if not the sole inventor, he is not entitled to a patent.
There is no claim before me upon this appeal but that of Mr. Arnold. Bishop and Aiken have not appealed from the decision of the Commissioner rejecting their joint claim.
It appears by Lownsberry’s deposition that the principle or mode of crossing the wool diagonally was suggested and contemplated by Bishop and McLean before Arnold was employed by them to reduce their ideas to practice. The machine did not constitute the whole invention. The next material part of the invention was the principle, i. e., the diagonal motion, which was to distinguish this machine from all other felting machines ; and it is the vibratory and rotatory motions which produce the diagonal crossing of the wool which Mr. Ar.nold claims as his invention, and for which he asks a patent. • The man who reduces to
I see nothing in the deposition of Alonzo C. Arnold inconsistent with the facts stated by Mr. Lownsberry in his deposition; but if there were, Alonzo C. Arnold seems by his own showing to be interested by the promise of his father to give him a share in the patent if it should be obtained; for, although afterwards, in answer to the leading question, he said the agreement was abandoned, yet it is in evidence in the preceding part of his deposition that he thought it depended upon his generosity whether he should Have an interest in the patent when obtained. If this interest, however, was not sufficiently certain to exclude his testimony, it cannot fail to have some effect upon his credibility. But he states that the machine was put in operation in 1837, and his father never spoke with him about getting the patent now applied for until the summer of 1840, and after his father had ceased to be a member of the Union Manufactory, which claims the benefit of the patent under the agreement before mentioned if it should be obtained by either or all of the claimants. It may be inferred from this that, so long as he remained a member of the company, he did not claim a sole right, or any right, to the invention. Another strong argument that he did not claim to be the inventor during those three years results from his suffering the 'machine to be set up and used during that period without taking any steps to procure a patent, when, by the terms of the acts of 1836 and 1839, the use of the machine, with his consent, for two years prior to his application is a bar to his claim.
The fact, indeed, seems to be a bar to all other claims, and to
It is suggested in the reasons of appeal that if the decision of the Commissioner is sustained, there does not seem to be any possible mode of determining this question, and that it is only by granting the patent to Arnold that the rights of the individuals interested and of the public can be determined according to the intention of the acts of Congress for the promotion of the useful arts.
But upon comparing the sixteenth section of the act of 1836 with the eleventh section of the act of 1839 it will appear that “in all cases where patents are refused for any reason whatever, either by the Commissioner of Patents or by the Chief Justice of the District of Columbia, upon appeals from the decision of said Commissioner, the ‘ applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties, and other due proceedings had,’ may adjudge that such applicant is entitled, according to the principles and provisions of the act of 1836, to have and receive a patent for his invention, as specified in his claim; and such adjudication, if it be in favor of the right of such applicant, shall authorize the Commissioner to issue such patent on his filing a copy of the adjudication and . otherwise complying with the requisitions of that act. ’ ’
The reservation of a right to a further hearing on the part of Mr. Arnold’s attorney was confined to the case of my admitting the evidence which he objected to; and as I have rejected that evidence, any further hearing is unnecessary.
Upon the whole, then, after rejecting the evidence, I am of opinion that Mr. Arnold has not supported his claim as sole inventor, and that if he had he has lost his right to a patent, for suffering the machine to be in use for more than two years before his application for a patent; and that, therefore, and upon both