MORSELL, Circuit Judge
(after stating the facts as above). The appellant, to show the grounds of his appeal from said decision, filed his reasons, twenty in number. Upon examination they appear to be very full, and. sufflciently special to show and cover all objections, that said decision may be susceptible of. It will not be necessary particularly to state them, as they will be duly regarded in the consideration which I shall give the case in forming my opinion, and so with respect to the report of the acting commissioner in reply to the reasons of appeal, it is in substance but little more than a reiteration of the principles contained in the reasons as the grounds of the decision. In this state of the case, according to notice-[300]*300•duly given of the time and place of tlie trial of this appeal, the original papers and ■documents with all the evidence were laid before me, and the parties, by their counsel, having appeared, filed their arguments in writing and submitted the case.
The issue between these parties is priority ■of invention, in an interference declared in two applications for patents on the part of -Johnson, and one on the part of Gibbs, because, .as stated, their inventions are substantially Identical. As before stated, Johnson’s claim is for the stitch described in his specification, ■consisting of a chain stitch, having a binding thread passed through its loops for the purpose ■described, and the rotary hook ■ constructed .as described or in any manner equivalent thereto, in combination with a needle and a bobbin for the purpose of forming a seam by the interlacing of two threads as set forth. The claims of Gibbs are, 1st, for “the sewing by machinery of cloth or other fabric by interlacing a binding thread with the loops of a tambour or chain stitch. 2nd. In combination with an eye pointed needle and suitable feeding mechanism, a discoidal shuttle or thread case provided with two hooks, both taking •separate and successive loops from the needle when the said parts are arranged in relation to ■each other so as to operate substantially as ■described, whereby either of the three stitches herein set forth may be made by simply changing the direction of the feed or omitting the insertion of the secondary thread at pleasure.
The office supposes that the thing claimed by the parties is substantially identical, and if the parties were agreed in this there would be much less difficulty in deciding the question of priority between them, but in this it Is supposed there is a material difference. The claim of the one is supposed to be for three elements only, the combination of a needle, rotary hook and bobbin producing a new stitch, the double thread lock chain stitch; the other producing a like stitch mechanically by a peculiar, specific combination ■of mechanical devices, consisting of four elements, a peculiar mechanical feeding arrangement essentially constituting one of them. That each of the parties had in view an improved change in the sewing machine, so as to produce a better thread, and that they succeeded in attaining that object after various ■experiments, clearly appears by the results of those now exhibited before the patent office. Johnson dates his discovery in 1853~’54; Gibbs •at a later period. The question is, who first conceived the thought? This must depend upon the evidence. Owing to several different stitches then in use, and in some respects resembling the one in controversy, the difficulty in applying the evidence is very much increased. It is suggested by one of the counsel in bis argument, that the rule is, “that the mechanical production of the stitch at length brought to perfection by each of the parties as now exhibited to the office cannot be estab-lir bed either by hearsay, opinion or presumption, but only by the testimony of those who saw it so produced by the alleged mechanical agent and proof on mechanical principles of the ability of said machine to produce the stitch in question.” This rule is somewhat different from what I think is right. The general rule as applicable to all cases is, that the best evidence which the nature of the case will admit of, must be produced. In questions of priority of invention such as this, where the precise time is to be ascertained, the invention itself being an intellectual operation, and the nature of the case differing very much from ordinary cases, the declarations and conversations of the party himself, where forming a part of the res gestae, are admissible. This point was very fully considered and settled by mein the case of Dietz v. Wade, appeal from the patent office April 12, 1859 [Case No. 3,903], to which I refer, and to the principles as there settled I still adhere.
Preliminary to considering the effect of the testimony on the part of Johnson, it will be proper to notice objections which have been made by the counsel of Gibbs to the reception of: First, that taken at Boston. I do not discover enough in the grounds of the objection to justify my shutting the evidence out of the case. Next, as to the admissibility of the testimony of the witnesses Johnson and his wife. The assignment in this case appears to be bona fide, but Johnson appears at the time of it the sole and real party to the record of the case in the patent office. I am not satisfied that their testimony was admissible, and therefore exclude it from the case. The objection to Stephens’ testimony is certainly strong, and if it stood alone, I should feel much difficulty in giving credit to it, but it is corroborated, and must therefore receive such weight as, under such circumstances, may be thought due to it. So also as to the testimony of Cushman and Miss Bennettick, to prove the admission of Gibbs to Johnson of his (Johnson’s) right to the thing claimed. The objection is as to the weight which attaches to' it, for the purpose of showing the proper rule to be applied. A number of authorities containing adjudged cases are referred to. It will be seen that the decisions in all those cases depend upon the circumstances of each case, and as exceptions to the general rule, which not only makes the admissions or confessions of the party, fairly and seriously made, and relevant, admissible, but of the strongest kind. If the admissions are by way of compromise and without the admission of any particular independent facts, this would be considered as inadmissible, but if the offer be so made voluntarily without any pending negotiation, and without stating it to be made without prejudice the rule does not apply. This latter appears to me to be the predicament under which the admissions were made in this case. The objection is of course overruled.
What then does the legal evidence show the case to be upon the merits? Stephens [301]*301says in the year 1854, he thinks in June, Johnson told him he had invented a stitch by interweaving a binding thread with a chain stitch which would take the place of a shuttle stitch, and he intended sometime to get out a patent for a hook which would do the work. He showed him such a hook, about that time; it was an S-shaped hook, with a hole or opening in the center for a bobbin. He also showed him the bobbin. He. thinks the bobbin was also made of brass. The Exhibits Ab and Be shown to him represent the hook and the bobbin quite correctly. Ab is a view of the flat side of the hook. Be is a sectional view with the bobbin inside. Mr. Johnson said this was to carry the bobbin thread through the loops of a chain stitch.
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MORSELL, Circuit Judge
(after stating the facts as above). The appellant, to show the grounds of his appeal from said decision, filed his reasons, twenty in number. Upon examination they appear to be very full, and. sufflciently special to show and cover all objections, that said decision may be susceptible of. It will not be necessary particularly to state them, as they will be duly regarded in the consideration which I shall give the case in forming my opinion, and so with respect to the report of the acting commissioner in reply to the reasons of appeal, it is in substance but little more than a reiteration of the principles contained in the reasons as the grounds of the decision. In this state of the case, according to notice-[300]*300•duly given of the time and place of tlie trial of this appeal, the original papers and ■documents with all the evidence were laid before me, and the parties, by their counsel, having appeared, filed their arguments in writing and submitted the case.
The issue between these parties is priority ■of invention, in an interference declared in two applications for patents on the part of -Johnson, and one on the part of Gibbs, because, .as stated, their inventions are substantially Identical. As before stated, Johnson’s claim is for the stitch described in his specification, ■consisting of a chain stitch, having a binding thread passed through its loops for the purpose ■described, and the rotary hook ■ constructed .as described or in any manner equivalent thereto, in combination with a needle and a bobbin for the purpose of forming a seam by the interlacing of two threads as set forth. The claims of Gibbs are, 1st, for “the sewing by machinery of cloth or other fabric by interlacing a binding thread with the loops of a tambour or chain stitch. 2nd. In combination with an eye pointed needle and suitable feeding mechanism, a discoidal shuttle or thread case provided with two hooks, both taking •separate and successive loops from the needle when the said parts are arranged in relation to ■each other so as to operate substantially as ■described, whereby either of the three stitches herein set forth may be made by simply changing the direction of the feed or omitting the insertion of the secondary thread at pleasure.
The office supposes that the thing claimed by the parties is substantially identical, and if the parties were agreed in this there would be much less difficulty in deciding the question of priority between them, but in this it Is supposed there is a material difference. The claim of the one is supposed to be for three elements only, the combination of a needle, rotary hook and bobbin producing a new stitch, the double thread lock chain stitch; the other producing a like stitch mechanically by a peculiar, specific combination ■of mechanical devices, consisting of four elements, a peculiar mechanical feeding arrangement essentially constituting one of them. That each of the parties had in view an improved change in the sewing machine, so as to produce a better thread, and that they succeeded in attaining that object after various ■experiments, clearly appears by the results of those now exhibited before the patent office. Johnson dates his discovery in 1853~’54; Gibbs •at a later period. The question is, who first conceived the thought? This must depend upon the evidence. Owing to several different stitches then in use, and in some respects resembling the one in controversy, the difficulty in applying the evidence is very much increased. It is suggested by one of the counsel in bis argument, that the rule is, “that the mechanical production of the stitch at length brought to perfection by each of the parties as now exhibited to the office cannot be estab-lir bed either by hearsay, opinion or presumption, but only by the testimony of those who saw it so produced by the alleged mechanical agent and proof on mechanical principles of the ability of said machine to produce the stitch in question.” This rule is somewhat different from what I think is right. The general rule as applicable to all cases is, that the best evidence which the nature of the case will admit of, must be produced. In questions of priority of invention such as this, where the precise time is to be ascertained, the invention itself being an intellectual operation, and the nature of the case differing very much from ordinary cases, the declarations and conversations of the party himself, where forming a part of the res gestae, are admissible. This point was very fully considered and settled by mein the case of Dietz v. Wade, appeal from the patent office April 12, 1859 [Case No. 3,903], to which I refer, and to the principles as there settled I still adhere.
Preliminary to considering the effect of the testimony on the part of Johnson, it will be proper to notice objections which have been made by the counsel of Gibbs to the reception of: First, that taken at Boston. I do not discover enough in the grounds of the objection to justify my shutting the evidence out of the case. Next, as to the admissibility of the testimony of the witnesses Johnson and his wife. The assignment in this case appears to be bona fide, but Johnson appears at the time of it the sole and real party to the record of the case in the patent office. I am not satisfied that their testimony was admissible, and therefore exclude it from the case. The objection to Stephens’ testimony is certainly strong, and if it stood alone, I should feel much difficulty in giving credit to it, but it is corroborated, and must therefore receive such weight as, under such circumstances, may be thought due to it. So also as to the testimony of Cushman and Miss Bennettick, to prove the admission of Gibbs to Johnson of his (Johnson’s) right to the thing claimed. The objection is as to the weight which attaches to' it, for the purpose of showing the proper rule to be applied. A number of authorities containing adjudged cases are referred to. It will be seen that the decisions in all those cases depend upon the circumstances of each case, and as exceptions to the general rule, which not only makes the admissions or confessions of the party, fairly and seriously made, and relevant, admissible, but of the strongest kind. If the admissions are by way of compromise and without the admission of any particular independent facts, this would be considered as inadmissible, but if the offer be so made voluntarily without any pending negotiation, and without stating it to be made without prejudice the rule does not apply. This latter appears to me to be the predicament under which the admissions were made in this case. The objection is of course overruled.
What then does the legal evidence show the case to be upon the merits? Stephens [301]*301says in the year 1854, he thinks in June, Johnson told him he had invented a stitch by interweaving a binding thread with a chain stitch which would take the place of a shuttle stitch, and he intended sometime to get out a patent for a hook which would do the work. He showed him such a hook, about that time; it was an S-shaped hook, with a hole or opening in the center for a bobbin. He also showed him the bobbin. He. thinks the bobbin was also made of brass. The Exhibits Ab and Be shown to him represent the hook and the bobbin quite correctly. Ab is a view of the flat side of the hook. Be is a sectional view with the bobbin inside. Mr. Johnson said this was to carry the bobbin thread through the loops of a chain stitch. In October, 1856, Johnson showed him Exhibit O as his invention; he said the machine with this device was to make a double thread fast stitch; that the machine was a shuttle machine; that he saw him sew a few stitches with it; that he thought it was a chain stitch with a shuttle thread ran through the loops; did not do the work well, but Johnson said he intended to perfect it so that it would do the work; thinks the stitch which this machine made was like the one. explained to him by Johnson in 1S54; thinks he saw the sewing done in October; that he made some alterations in the machine; it was sent away as a shuttle machine; some of these alterations were made, he thinks in the latter part of November or early in December, 1856; that the last alterations which he made were in February or March, 1857; that while he was making these alterations Johnson told him that he had got a rotary hook machine, or was making a rotary hook machine that would do the same work and make a double thread fast stitch; he saw the hook of this machine; after he first saw this hook, Mr. Johnson kept changing and altering it; he saw this hook applied to a machine; the end of the hook shaft was put into the end of the goose neck of a bag machine; he saw quite a number of bobbins made for it; he thinks some had cases, but he is not positive; he saw some of the bobbins put into the hooks in the experimenting room; he was told that this was to make a chain stitch with an interlaced shuttle thread; he thinks this was in the early part of December, 1S56; saw the machine sew a few stitches; did not make it run rapidly; saw the machine in 1S57, a perfect operating machine.
If the facts as stated by this witness be true, then the machine Ab, Be, was constructed in the years 1853-54, and the object and intention as declared by Johnson was to invent a machine which would produce a stitch as claimed by him, that is, a chain stitch having a binding thread passed through the loops, and that these declarations were made at the time that the machine was shown to him by Johnson, explaining to him the nature of the same. These declarations and conversations under such circumstances formed a part of the res-gestae, as before stated, and must be received as legal evidence, for the purpose of ascertaining who was the first and original inventor, in an issue like the present of priority. The doubt of the object and intention of this instrument, in its imperfect state at that time, and at other times by said declarations connected therewith, became obviated. The testimony of this witness is corroborated by Samuel W. Hall, and other witnesses in the substance of the facts as stated above. This witness testifies also to-a series of experiments by Johnson for the purpose of perfecting his invention, until finally he accomplished it and made an application for a patent. This will also appear from the testimony of a number of witnesses on behalf of Johnson. Furthermore the admissions of Gibbs to Johnson in the year 1S57, middle of May, amounts to a full confirmation of the right of Johnson as the first and original inventor, as claimed by him and proved by the evidence given on his behalf, and the commissioner’s decision as to the claim of the said Johnson as made by him is hereby ratified and confirmed.
The above decision is not intended to embrace the claim of the appellant so far as relates to the mechanical device; that is, the mechanical feeding arrangement The commissioner supposed that Gibbs’ machihe, with but slight modifications, produced the same result by the same combination of mechanism organized under an equivalent arrangement to that of Johnson, and this combination is distinctly covered by Gibbs’ claim if he means a mere equivalent. 1 think in this there is error, because I consider it more than an equivalent The one is a feeder by hand; the other automatically or a self feeder. The one a mechanical feeder of a peculiar construction; the other not. The one is a new and superior mode of arriving at the same óbject, and a labor saving instrument It accomplishes some other advantages beyond that of Johnson’s, and ought therefore to be considered an improvement of that of Johnson’s, and as to this branch of the commissioner’s decision I am of opinion, and" so decide, that the same be and is hereby reversed, and that the said appellant may, if he thinks proper, reform his claim, so as to be limited according to the aforegoing principles.