Matthews v. Wade

Cranch, J.

The first question is upon the motion of the appellee to order a certain portion of the reasons of appeal which had been filed in the Office to be stricken out. The filing of the reasons of appeal is a proceeding in the Office over which the judge has no control. The proceedings in the Office are all under the superintendence and control of the Commissioner, who is uncontrolled in the discharge of the duties of his office, except so far as an appeal is expressly given by law. No reason of appeal can be considered as valid which would not justify the Commissioner in refusing the patent. If the Commissioner has received and filed the-reasons of appeal, the judge cannot order him to strike them out. They wait to be heard and decided; and when brought before him upon appeal, if they are not valid, he will overrule them.

The first reason of appeal is, in substance, that the Commissioner, by deciding the question of interference in favor of Wade, and giving notice thereof to the parties, had spent all his power over the subject, and therefore had no power to act in the present case. This reason of appeal is answered by the opinion of the Attorney-General, in which I fully concur. The same answer may be given to the second, third, fourth, fifth, sixth, and seventh reasons of appeal. They were matters within the discretion of the Commissioner, and over which the judge had no control — no jurisdiction- — -these matters not having been made the subject of appeal nor valid grounds of appeal. As to the eighth reason of appeal, I doubt whether the English and French patents obtained by Wade, or for his benefit, even if obtained more than six months before Matthews’ application, would be good cause for reversing the decision of the Commissioner in favor of Matthews if he was the first inventor ; but it appears by the proceedings in the Office that the first application of Matthews was on the 12th of May, 1848 ; the English patent obtained by Wade was in July, 1848 ; and although Matthews’ first application was withdrawn, yet it was instantly renewed in the same words, and must be considered as a continued application ; so that six months had not expired after the English and French patents were issued before Matthews’ application. But it seems that the foreign patents must be issued before the American discovery.

As to so much of the ninth reason of appeal as regards the practicability and usefulness of the invention, and the reducing of it to practice, these were matters for the consideration and within the discretion of the Commissioner until the patent should be finally issued, and are not made the subject of appeal. Nothing preliminary to the issuing of the patent is a valid ground of appeal, unless made so by the law. The said first clause of the ninth reason of appeal and the tenth reason of appeal are proper subjects of appeal, and involve the merits of the case. The said first clause of the ninth reason denies the identity of the inventions, and the tenth avers that the evidence shows that Wade, and not Matthews, is the first inventor of the improvement claimed.

The identity of invention is admitted by all the previous proceedings in the case, and particularly by the agreement of Matthews and Wade of the 12th of April, 1849, to use the testimony already taken. (Exhibit “ C.”)

There is nothing left, therefore, but the question of' priority of invention involved in the tenth reason of appeal, and this plea depends upon the evidence.

The question is not whether Wade made a better printing ink than that made by Matthews, but is, which of them first invented or discovered the application and substitution of rosin oil for linseed and all other oils in the manufacture of printing ink. The evidence is voluminous and intricate, and in some respects contradictory, and the question of priority of invention must of necessity be decided upon consideration of all the evidence “produced before the Commissioner.” The evidence is all in writing, and it cannot be necessary that I should point out any part of it as the particular ground of my decision. Upon a careful consideration of the whole of that evidence, I am of opinion, and so decide, that Thomas M. Matthews is the first inventor and discoverer of the application and substitution of rosin oil for linseed and other oils in the manufacture of printing ink, and therefore “is entitled to have a patent as prayed for.”

R. H. Gillet, for appellant. Edmund Biirke, for appellee.