Wahl v. Wright

ROBB, Associate Justice. This is an appeal from a decision of the Patent Office in an interference proceeding awarding priority to the appellee Wright. The invention relates to mechanism for controlling the computations of a totalizer in a combined typewriting and computing machine. More specifically, as stated by the Examiner of Interferences: “It comprehends two controlling means, one automatic and the other manual, a means whereby one of those is made operative and the other inoperative at will.” The issue originally contained 19 counts. The Examiner of Interferences found that counts 10, 11, 12, 13, 15, 18, 19, and 20 were not readable upon Wahl’s disclosure and awarded them to Wright. As to the other counts, he found that Wright was restricted to his filing date of June 29,1910, for conception and disclosure and that inasmuch as Wahl, on April 1, 1910, had completed and successfully operated a machine embodying the subject-matter of those counts, [456] awarded them to him. The Board of Examiners in Chief found that count 18 was readable upon Wahl’s disclosure, but they also found that Wright had established conception and disclosure of all the claims as early as January of 1910, and that Wahl was entitled to no earlier date than that of the completion of his machine in April, following. This finding resulted, of course, in an award of priority as to all the counts to Wright. The Commissioner affirmed the decision of the Board. Wahl appealed as to counts 1 to 9, inclusive, and 14, 16, 17, and 18; in other words, as to the counts found bv the. Board to read upon the machine that was completed April 1, 1910. Wahl introduced in evidence a drawing (Exhibit No. 14), which bore date of July 18, 1907. This drawing was delivered when made to Mr. Roberts, president and treasurer of the Wahl Adding Machine Company, who testified as follows: “Of a lot of papers, including tracings and blueprints, handed to me at the time, this was the only one on heavy manilla paper. I thought that to fold it up in the small shape necessary to place it in the document files, where I kept such papers, would crease it and spoil the drawing; so I rolled it up and placed it in the cupboard in the vault, where I kept books, original patent papers and other documents which could not be readily placed in the document files.” The drawing- therefore was not discovered until after the original preliminary statement had been made. We attach no importance to this fact. Several years had elapsed, the drawing was not in the place where such drawings usually were kept, and it was not at all strange that Mr. Roberts should have forgotten that it had been placed in the vault cupboard. He identified the drawing and stated that, so far as he could judge, it had not been changed. A Mr. Stevens, formerly president of the Wahl Company, when asked about this drawing said: “I would say that this is the drawing showed me, or one like it, at least, since it shows the mechanism as I understood Mr. Wahl to explain it.” In cross-examination this witness said: “When Mr. Wahl showed me the drawing he explained to me how it operated.”- He further testified in considerable detail as to the disclosure made to him at the time, that is, in 1907. A Mr. Eanphear, at the time in litigation with the Wahl Company, was called as a witness concerning this drawing. He also testified at considerable length for Wright, who characterized him as “one of the best-posted men” he “had come in contact with in connection with machines of this nature.” In 1907 Mr. Eanphear was connected with the Wahl Company in the capacity of salesman. He testified that in February or March of 1907 he discussed with Wahl the advisability of ■ perfecting a machine that would accomplish automatic subtraction, and that Wahl immediately began to design means to that end; that he “was in close, practically daily, consultation with him” and that he felt very positive that “that was not only the original subtraction machine commercially, but original automatic subtraction machine.” Asked whether Wahl had ever shown him a drawing of a [457] machine that would perforin automatic subtraction, he answered in the affirmative and stated that Wahl explained the operation of the machine to him. The witness then was asked to state his understanding of this drawing at the time it was shown him, and replied: “My understanding was that it would, in a position at the right of the detail column, automatically subtract, or be set at subtraction; the actual subtracting operation, of course, being accomplished by striking 'the typewriter keys.” Witness further testified that he understood the mechanism of the machine, how it worked to accomplish the functions it was designed to perform. He fixed the time as between March and September of 1907. He then was shown the 1907 drawing, and thereupon stated that, while he could not identify it in detail, he could say he had seen “such a drawing and it would accomplish these things”; that he could not definitely identify it, but “either saw this one or something like it — ■ 1 don’t know which.” He further testified that Wahl’s disclosure included means for disabling the automatic subtracting feature and for manual control. This witness was not cross-examined, nor was any objection whatever interposed as to the character of the questions propounded to him. It is significant that the activities of Wright in this particular field did not begin until a time subsequent to an interview which Mr. Ranphear had with him after he had seen the Wahl drawing. We do not intimate, however, that there was any breach of confidence on the part of Mr. Ranphear, as no secret of what he had accomplished was made by Mr. Wahl, who testified very fully as to his activities in conceiving and perfecting this invention. [1] The tribunals of the Patent Office rejected this drawing of 1907 as a disclosure of the invention here involved, and the board and the Commissioner accepted as to Wright’s disclosure in January fragmentary drawings which the Examiner of Interferences characterized as utterly insufficient. We do not deem it necessary to pass upon the correctness of the findings of the Board and Commissioner on this point, as we have reached the conclusion that under the evidence the Wahl drawing of 1907 and the explanation then made must be accepted as disclosing the invention of the issue. Some criticism was made of this drawing because there were certain free-hand additions to it; but the important fact was overlooked that it also contained several parts drawn to scale relating to mechanism necessary for the automatic to manual shift, that is, to the invention of the issue. To reject this drawing would require the rejection as well of the testimony of several witnesses whose credibility stands unimpeached. Mr. Ranphear probably was as well qualified to understand the Wahl disclosure concerning it as any witness who testified. That he did understand it is apparent from his testimony, and it is further apparent that in his testimony he was not at all disposed to go beyond the literal truth. [2] When we come to consider that all the tribunals of the Patent Office found that Wahl, as early as April 1st, had completed and successfully operated a machine embodying this invention, it will be apparent, without a discussion of the evidence, that Wahl was active and diligent for many months prior to that date. Being fully con458 vinceü that Wahl was the first to conceive and that his conception during the requisite period was followed by diligence resulting in reduction to practice, we award him priority of invention and reverse the decision as to the counts here involved. Reversed.