Mr. Justice Shepard
delivered the opinion of the Court:
It would be an unprofitable task to review the evidence upon which this case has been submitted. That has been fully and fairly done in the decisions of the Patent Office tribunals, and a reference to them is all that is necessary.
Having stated the points of agreement and disagreement between them, we shall content ourselves with a brief statement of our own conclusions.
1. We agree with the majority of the examiners-in-chief in the conclusion, which the Commissioner does not deny, that Blackford’s exhibit D was constructed in November, 1896.
2. Assuming the correctness of their view of the scope of the invention, we concur in their conclusion that the evidence of Blackford and his two corroborating witnesses sufficiently shows that construction to have been completed and reduced to practice some time in November, 1896.
8. As Wilder’s exhibit D was not constructed until after Blackford’s aforesaid construction and reduction to practice, his right to judgment of priority necessarily depends upon his exhibit E constructed in April, 1896.
We cannot agree with the Commissioner, that this exhibit, [9]*9in its condition when produced and in the light of the entire evidence relating to it, embodied the special issue of the interference in its construction and operation. The difference of opinion between the tribunals of the Patent Office respecting this exhibit proceeds substantially from their conflicting views as to the breadth of the issue of the declaration of interference.
From one point of view, the exhibit answers the required purpose because it shows the specified oil trough with the contracted lower portion as defined in the issue.
From the opposing point of view, it is wholly insufficient, because of the want of evidence to show that it had in combination the vertically disposed lighting member, seated in the contracted lower portion of the trough and extending upward with a vapor space at its side, which is called for specifically in the three first counts and substantially in the fourth one.
It is agreed all around that the subject-matter of invention is a narrow one. And it is to be noted in this connection, that when the case was before the examiners-in-chief, Wilder moved them to report to the Commissioner, as they had the authority to do by the rules, that there was no patentable novelty in the issue. The proceedings in the Patent Office preliminary to the allowance of each application show considerable difficulty in the formulation of patentable claims.
In Blackford’s answer to some of the objections of the primary examiner, on May 2, 1898, he asked reconsideration on the ground of the combination of the V-shaped burner with his new form of wick; and this it was, he claimed, that-enabled him to accomplish what former patented devices would not do. As late as September 12, 1899, the primary examiner notified him that the broadest allowable subject-matter of certain claims was the combination of combustion chamber, trough with lower contracted portion, and the wick extending upwardly between and distant from its upwardly disposed walls.
In a communication to Wilder under date of May 11, 1898, he made the following statement:
[10]*10“ The following is suggested as the broadest allowable claim to which the applicant is entitled in view of the state of the art:
“ In an oil burner, an oil holder having a lower contracted portion and an upper enlarged portion, a vertical lighting wick seated in the lower contracted portion and extending upwardly between the walls of the holder, the arrangement of parts being such that a constant supply of oil can be maintained in the holder.
“ If the applicant still believes himself to be the first inventor of the above subject-matter, he should file a claim corresponding in scope with that above suggested within fifteen days.”
This view that the vertical lighting member, or wick, is an essential part of the combination, was then carried into the counts of the issue of interference.
Apparently, then, it was the combination of these co-operating elements in the production of a new and useful result that secured the recognition of the proper authority of the Patent Office and led to the declaration of interference. Under these conditions it is not admissible to say that one of these elements is subordinate and immaterial. The evidence of reduction to practice must embrace them all, leaving nothing to inference merely.
This conclusion is supported by numerous decisions in the Patent Office, and accords with the principle governing analogous cases in this and other courts. Wolfender v. Price, 83 O. G. 1801 (C. D. 1898, 87, 89), and cases cited; Hammond v. Hart, C. D. 1898, 52; Streat v. Freckleton, C. D. 1899, 85, 87; Essex v. Woods, C. D. 1899, 189; Breul v. Smith, 10 App. D. C. 180, 185; Tracy v. Leslie, 14 App. D. C. 126, 135.
Por the reasons given we are of opinion that priority should have been awarded to Blackford.
The decision of the Commissioner will therefore be reversed. It is so ordered, and that this decision and the proceedings in this court be certified to him as required by law. Reversed.
[11]*11On behalf of the appellee, a motion, supported by affidavits, was filed December 19, 1902. The object of the motion which was denied, is fully stated in the following opinion of the court, delivered by Mr. Justice Shepard, and filed February 11, 1903:
Founded on the alleged displacement of an important part of one of his exhibits, the appellee has filed a motion that this court shall “ cause an investigation to be made and reported to this court with reference to the loss and recovery of said missing member of exhibit E, and to restore said member to its place in the exhibit, and to order the case to be heard or reheard, either by the Patent Office or by this Honorable Court, as to your honors may seem proper, upon the full and complete evidence originally taken and submitted to the Patent Office.”
The motion is accompanied by affidavits and presents some features of unusual occurrence. Some of the affidavits have been made by the appellee and others who are examined as witnesses on his behalf. For obvious reasons, these cannot be considered in so far as they undertake to explain or add to the evidence set out in the record.
Other affidavits relate to the displacement of a part belonging to Wilder’s exhibit E, pending the proceedings in the Patent Office.
On the hearing of the appeal, we were asked to consider an affidavit, then presented, relating to that subject. It stated, substantially, that after the decision of the examiners-in-chief, in which they referred to the absence of the lighting member of exhibit E, affiant searched the box in which the exhibits had been kept, and found a kindler which fitted said exhibit and no other, and was by him placed therein; that he was present at the hearing before the Commissioner of Patents when the exhibit was produced, and the circumstances of the loss or displacement were recited and laid stress upon.
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Mr. Justice Shepard
delivered the opinion of the Court:
It would be an unprofitable task to review the evidence upon which this case has been submitted. That has been fully and fairly done in the decisions of the Patent Office tribunals, and a reference to them is all that is necessary.
Having stated the points of agreement and disagreement between them, we shall content ourselves with a brief statement of our own conclusions.
1. We agree with the majority of the examiners-in-chief in the conclusion, which the Commissioner does not deny, that Blackford’s exhibit D was constructed in November, 1896.
2. Assuming the correctness of their view of the scope of the invention, we concur in their conclusion that the evidence of Blackford and his two corroborating witnesses sufficiently shows that construction to have been completed and reduced to practice some time in November, 1896.
8. As Wilder’s exhibit D was not constructed until after Blackford’s aforesaid construction and reduction to practice, his right to judgment of priority necessarily depends upon his exhibit E constructed in April, 1896.
We cannot agree with the Commissioner, that this exhibit, [9]*9in its condition when produced and in the light of the entire evidence relating to it, embodied the special issue of the interference in its construction and operation. The difference of opinion between the tribunals of the Patent Office respecting this exhibit proceeds substantially from their conflicting views as to the breadth of the issue of the declaration of interference.
From one point of view, the exhibit answers the required purpose because it shows the specified oil trough with the contracted lower portion as defined in the issue.
From the opposing point of view, it is wholly insufficient, because of the want of evidence to show that it had in combination the vertically disposed lighting member, seated in the contracted lower portion of the trough and extending upward with a vapor space at its side, which is called for specifically in the three first counts and substantially in the fourth one.
It is agreed all around that the subject-matter of invention is a narrow one. And it is to be noted in this connection, that when the case was before the examiners-in-chief, Wilder moved them to report to the Commissioner, as they had the authority to do by the rules, that there was no patentable novelty in the issue. The proceedings in the Patent Office preliminary to the allowance of each application show considerable difficulty in the formulation of patentable claims.
In Blackford’s answer to some of the objections of the primary examiner, on May 2, 1898, he asked reconsideration on the ground of the combination of the V-shaped burner with his new form of wick; and this it was, he claimed, that-enabled him to accomplish what former patented devices would not do. As late as September 12, 1899, the primary examiner notified him that the broadest allowable subject-matter of certain claims was the combination of combustion chamber, trough with lower contracted portion, and the wick extending upwardly between and distant from its upwardly disposed walls.
In a communication to Wilder under date of May 11, 1898, he made the following statement:
[10]*10“ The following is suggested as the broadest allowable claim to which the applicant is entitled in view of the state of the art:
“ In an oil burner, an oil holder having a lower contracted portion and an upper enlarged portion, a vertical lighting wick seated in the lower contracted portion and extending upwardly between the walls of the holder, the arrangement of parts being such that a constant supply of oil can be maintained in the holder.
“ If the applicant still believes himself to be the first inventor of the above subject-matter, he should file a claim corresponding in scope with that above suggested within fifteen days.”
This view that the vertical lighting member, or wick, is an essential part of the combination, was then carried into the counts of the issue of interference.
Apparently, then, it was the combination of these co-operating elements in the production of a new and useful result that secured the recognition of the proper authority of the Patent Office and led to the declaration of interference. Under these conditions it is not admissible to say that one of these elements is subordinate and immaterial. The evidence of reduction to practice must embrace them all, leaving nothing to inference merely.
This conclusion is supported by numerous decisions in the Patent Office, and accords with the principle governing analogous cases in this and other courts. Wolfender v. Price, 83 O. G. 1801 (C. D. 1898, 87, 89), and cases cited; Hammond v. Hart, C. D. 1898, 52; Streat v. Freckleton, C. D. 1899, 85, 87; Essex v. Woods, C. D. 1899, 189; Breul v. Smith, 10 App. D. C. 180, 185; Tracy v. Leslie, 14 App. D. C. 126, 135.
Por the reasons given we are of opinion that priority should have been awarded to Blackford.
The decision of the Commissioner will therefore be reversed. It is so ordered, and that this decision and the proceedings in this court be certified to him as required by law. Reversed.
[11]*11On behalf of the appellee, a motion, supported by affidavits, was filed December 19, 1902. The object of the motion which was denied, is fully stated in the following opinion of the court, delivered by Mr. Justice Shepard, and filed February 11, 1903:
Founded on the alleged displacement of an important part of one of his exhibits, the appellee has filed a motion that this court shall “ cause an investigation to be made and reported to this court with reference to the loss and recovery of said missing member of exhibit E, and to restore said member to its place in the exhibit, and to order the case to be heard or reheard, either by the Patent Office or by this Honorable Court, as to your honors may seem proper, upon the full and complete evidence originally taken and submitted to the Patent Office.”
The motion is accompanied by affidavits and presents some features of unusual occurrence. Some of the affidavits have been made by the appellee and others who are examined as witnesses on his behalf. For obvious reasons, these cannot be considered in so far as they undertake to explain or add to the evidence set out in the record.
Other affidavits relate to the displacement of a part belonging to Wilder’s exhibit E, pending the proceedings in the Patent Office.
On the hearing of the appeal, we were asked to consider an affidavit, then presented, relating to that subject. It stated, substantially, that after the decision of the examiners-in-chief, in which they referred to the absence of the lighting member of exhibit E, affiant searched the box in which the exhibits had been kept, and found a kindler which fitted said exhibit and no other, and was by him placed therein; that he was present at the hearing before the Commissioner of Patents when the exhibit was produced, and the circumstances of the loss or displacement were recited and laid stress upon. At the same time the appellant, Blackford, moved the court to grant the time and opportunity to operate his exhibit A, in order to demonstrate that both the board of ex[12]*12aminers1 and the Commissioner had been in error in holding that said exhibit would not operate as required by the ten of the issue. The appellee conceded that the bowl of said exhibit would contain oil while in operation, and the court declined to consume time with the proposed test.
No allusion was made to this concession in our opinion, because, having followed substantially the decision of the examiners-in-chief, we deemed it unimportant to discuss the evidence relating to said exhibit A as a reduction to practice of the invention of the issue, when we agreed with them that Blackford was entitled to priority under his exhibit D, in view of the conclusion reached regarding Wilder’s said exhibit E. Hence without determining that question, their decision as to exhibit A was assumed to be correct, and no consideration was given it save as a mere circumstance in the history of the invention prior to the construction of his exhibit D. No reference was made to the aforesaid affidavit in the opinion, but it was not received for consideration for reasons hereafter stated.
The affidavit of the same affiant, in support of this motion, after reciting that the wick had been replaced on the hearing before the Commissioner — which recital will be quoted later — states, that during the preparation of this appeal, it was discovered that the kindler had again been displaced; that it was again found and replaced and brought into court, and after the hearing was tied in place to prevent further displacement. It does not state specifically that the exhibit, when produced on the argument before us, showed the same wick, or kindler in its proper position; though such is the direct inference. Our own recollection is, that the wick was not then in the exhibit. Had it been in place there would have been no substantial reason for the affidavit then offered, in the absence of a charge by the opposing party that the exhibit had been tampered with. Any error committed by the examiners-in-chief, traceable to the mere displacement of the wick when the exhibit was considered by them, could not only have been corrected by motion before them, but also by the Commissioner upon the exhibition to him, .as has been [13]*13alleged, of the restored exhibit. Then was the time and there was the place for inquiry into the changes in the condition of exhibits, if considered a matter of importance.
Now, whilst affidavits would be permitted to show or explain material changes that may have occurred, by accident or otherwise, in an exhibit after its transmission to this court, when the details of its construction might be of importance in the determination of an issue, they will not be received in contradiction or correction of the record of the proceedings in the tribunals of the Patent Office, which is the practical purpose of those now offered. Talty v. District of Columbia, 20 App. D. C. 489.
As was said in that case — quoting an extract from an opinion of the Supreme Court of Iowa: “ We do not think it will do to admit affidavits on such questions in this court. If we admit one to contradict or explain the record, we may any number, and thus perpetually new issues would be made which are not contemplated in an appellate tribunal.”
There is no hardship in the application of the rule in this case as there was in the case above cited. As we have seen, the discovery of the alleged error of the examiners-in-chief, on account of the displacement of the wick in exhibit E, was discovered in ample time to call their attention to it while the matter was still within their control. No such action was taken but the matter was expressly brought to the attention of the Commissioner, according to the following recital in the affidavit before referred to: “ Deponent further says that he was present at the hearing before the Commissioner and remembers distinctly that the kindler which he had found was in exhibit E and the circumstances of its loss or displacement were recited and laid stress upon, but no evidence was adduced identifying this kindler with that in the exhibit as filed.”
On the other hand, the Commissioner’s decision makes no mention whatever of any of these circumstances, but shows plainly that the exhibit, when under his examination, lacked the wick or ligting member. In this connection we quote the following extract from his decision:
[14]*14“ Exhibit E consists of a V-shaped trough, essentially like that shown in Blackford’s application. If the ordinary lighting member shown in the other exhibits is placed in this trough and the ordinary combustion tubes are used above, every element of the issue is present. There is no question but that the combustion tubes were intended to be, and were in fact, used with it, but a question is raised as to the lighting member. There is no lighting member in the exhibit now, and the testimony upon that point is not very full, but it is obvious upon mere inspection that there must have- been a lighting member when the device was used, for it is well understood by those familiar with this art that a lighting member is necessary to start the operation of a burner of this kind. It was probably because' of this knowledge that more specific testimony on this point was not produced.”
The differences of opinion between the majority of the examiners-in-chief and the Commissioner (stated in our former opinion) are not founded on conflicting views in respect of the evidence relating to the kind of wick contained in exhibit E at the time of its alleged reduction to practice, but on opposing conclusions as to the necessity of showing that it contained the specific wick described in the issue, in order to establish reduction to practice of the invention of the issue. All agreed, as they were bound to do, that a wick or lighter was necessarily used in exhibit E, but disagreed as to the requirement of the issue in respect of its specific character.
The Commissioner found that the ordinary lighting members shown in the other exhibits would operate in the trough or bowl of exhibit E and answer, at the same time, what he held to be required by the issue. The examiners-in-chief held that the ordinary lighting member that had been used in other constructions, was not sufficient to answer the call for “ a vertically disposed lighting member seated in the liquid-containing portion and extending upward between the walls of the enlarged vapor-receiving portion to form a vapor space at the side of the lighting member: ” and that proof of the existence of the latter as a specific element of the combination was essential to give it the status of invention.
[15]*15We concurred in this view of the examiners-in-chief as to the narrowness and the essential elements of the invention of the issue, and, hence, reversed the decision opposed thereto. The question of priority depended then, and was made to turn, upon the fact whether exhibit E contained a lighting member of the requisite character at the time of alleged construction and reduction to practice in 1896, and not upon what it may have shown in July, 1900, when it was exhibited in the course of taking the depositions in this proceeding. We found no sufficient evidence in the record of this essential fact, and a careful re-examination has not changed that conclusion.
It is evident from the testimony of Wilder, the inventor, that he regarded his invention as contained in the V-shaped burner, and it may well be that he considered the question of the character of the wick used as immaterial. .It was probably on this account, as stated by the Commissioner, that “more specific testimony on this point was not produced.” When asked by his own counsel to state “ the essential point, or points of the invention in controversy as distinguished from the prior state of the art,” he answered: “Take the oil-gas as representing the prior state of the art, combustion chambers, the bowls, initial lighting devices appear to be old, the essential difference being in the proportions of the bowl; * * * in short the line of demarcation is wh.etb.er there is oil in the bowl or not; a shallow bowl of any shape appears to be old; a deep bowl sufficiently deep to carry a body of oil in normal burning, I should say was a necessary factor to make the thing new or distinguishable from the previous state of the art.” The “ oil-gas ” was illustrated by his exhibit G, made in 1891, which he called “ a vapor distributing burner” with an asbestos kindler “usually round or nearly so in form.”
Nowhere in his testimony did he undertake to describe the particular wick then adapted to and used in the novel trough of exhibit E. No other witness described the form, or particular location of this lighting member when operated in 1896. The testimony of one of them — Brooks, the [16]*16secretary of the company with which Wilder was connected — rather tended to prove that the lighting member then nsed was nothing more than the old flat or round piece of asbestos, theretofore commonly used in the round bottom burners of familiar construction, and which, as we have seen in the foregoing extract from the Commissioner’s decision, could be readily used in the V-shaped bowl of exhibit E. Having described the operation in testing exhibit E, with some minuteness as regards the shape of the bowl and the success of the experiment, this witness was asked how the flame was started. His answer was: “ It was started from a match, with the use of a little piece of asbestos in the bowl for a starter.”
The question of the patentability of the combination of the issue is not one for our consideration. All, however, concede that the margin of invention is a very narrow one — so narrow, indeed, that Wilder himself moved the examiners-in-chief to report want of patenable novelty to the Commissioner. Our opinion, before announced, that this view required proof of the existence of each specific feature of the combination, as described in the issue, in a construction to constitute its operation a reduction to practice, remains unchanged.
If we were to adopt the contrary view, or, failing that, to accept the evidence contained in the record as sufficient to establish the existence of the specific wick of the issue in exhibit E, at the time of its construction, the reasons therefor would bring us back to the reconsideration of Blackford’s exhibit A and the evidence relating to its construction and early operation. And this last, if given the same latitude of construction and inference, especially when taken in connection with the admission that oil would remain in the bowl during its operation, would, for as strong reasons, impel us to hold that it embodied the conception, and was a reduction to practice of the disputed invention.
Eor the reasons given the motion will be denied. It is so ordered.