The Federal Reporter with Key-Number Annotations, Volume 256: Cases Argued and Determined in the Circuit Courts of Appeals and District Courts of the United States, May-July, 1919. Page: 368

                                
256 FEDERAL REPORTER

"The prepared roofing field was still open for improvement at the date of
the invention in controversy. The adaptation of a layer of asphaltic material
provided with a coating of fine mineral particles, for varying its thickness and
imparting to the roofing a varicolored appearance, was an innovation, re-
sulting in a new and useful product; a preference for such roofing being uni-
mediately manifested by builders of dwelling houses. The design imbedded in
the roofing is made lasting by using the materials in combination-by uniting
the applied layer, the sand or grit, and the asphalt coating underneath, and by
such adaptation a result is attained that the prior structures failed to attain.
There are prior patents (Lee, No. 490.668) which speak of embossing or finish-
ing the surface of the fabric by ordinary painting to produce the effect of
shingles; but the specification does not enlighten the art as to how this was to
be successfully done. It failed utterly to disclose a method of coating and
utilization of granular grit embedded in the coating to produce the desired de-
sign, lines or ornamentation. Such method, in my opinion, amounted to more
than mere substitution or selection of suitable material for accomplishing the
object of the inventor.
"The Rugen & Abraham patent, No. 775,634, relates to waterproof roofing
and accompanying ornamentation; but the substances used for accomplishing
the result were a union of resins, fats, and pigment. The patent does not sug-
gest using asphaltic coating varying in thickness and merging in it granular
grit, and therefore was not anticipatory. The Goldberg patent, No. 1,113,116,
was held not anticipatory in the West Coast s-it, and, as there pointed out, the
waterproof coloring matter did not mix with the asphalt base, as in Bird's
patent, and is not anticipatory.
"As to the date of invention: The evidence in its entirety, supported by the
findings of the Patent Office, proves that the patentee Bird conceived the idea
in the year 1909, and substantially reduced the same to practice and filed his
application for a patent ahead of Becker.  It is not shown that Becker con-
ceived the idea before August 21, 1911, which is the date of Bird's application
for the patent under consideration. True enough, it is claimed by defendants
that his application disclosed nothing patentable until he filed an amendment
thereto, which included Becker's disclosure; but there is no satisfactory evi-
dence to substantiate such claim. Complainant's preference in 1914 for paroid
or proslate roofing, so-called, the first having the design painted on it marked
off with asphalt lines, and the second being 'branded' as described in Bird's
first patent, does not bear heavily upon the asserted appropriation of the
Becker disclosure-a disclosure that eventuated afterwards, and which pre-
maturely ripened into a patent. Priority of invention as an issue was
thoroughly considered by the trained experts of the Patent Office, and nothing
is found in the record before me to warrant overthrowing their decisions. De-
fendants claim generally that, while their invention was conceived as early
as June, 1911, it was not finally reduced to practice until Becker filed an
application for another patent (No. 1,157,665) involving the same subject-
matter, in May, 1913, and that such later patent runs back to the original in-
vention and antedates it. But this contention is without substantial merit.
"The law is that, to set aside a determination of the Commissioner of Pat-
ents as to priority of invention, the evidence before the court in an action for
infringement must be of such clearness and probity as to satisfy the mind
beyond a reasonable doubt that the determination was wrong. Standard Car-
tridge Co. v. Peters Cartridge Co. (C. C.) 69 Fed. 408; Gold v. Gold, 237 Fed.
84, 150 C. C. A. 286. Importance is attached to new evidence in this case re-
lating mainly to diligence in reduction to practice, but such evidence does not
persuade me of error in the final decision that Bird was first; nor has Becker
proven his conception and reduction to practice until after Bird's application
was filed, namely, on August 21, 1911. Morgan v. Daniels, 153 U. S. 120, 14
Sup. Ct. 772, 38 L. Ed. 657.
"Reference is made in the briefs to samples of roofing manufactured by
Becker and there is testimony by several witnesses not sworn in the inter-
ferenee proceeding; but it appears clearly enough that in 1911 there were
painted roofing sheets made by Becker, which had become known to others-
sheets without the grit-but the testimony as to such samples is not of a per-