JOHN BYRNE & CO. LAW BOOKS 1333 F Street N.W. WASNINQTON, D. C. LIBRARY THE UNIVERSITY OF CALIFORNIA SANTA BARBARA PRESENTED BY MR. & MRS. HOWARD A. WILCOX "'T^^^M^-'^'"^' DIGEST OF DECISIONS OF LAW AND PRACTICE IN THE PATENT OFFICE AND THE UNITED STATES and STATE COURTS IN PATENTS, TRADEMARKS. COPYRIGHTS AND LABELS 1897-1912 A SUPPLEMENT TO HART'S DIGEST, 1886-1897 BY W. L. POLLARD Of the District of Columbia Bar Examiner in the United States Patent Office WASHINGTON, D. C. JOHN BYRNE & CO. 1912 Copyright, 1912 BY W. L. POLLARD. PREFACE. In preparing this Supplement, the original plan of Hart's Patent Digest, i886- 1897, has been followed. Substantially the same sources have been drawn on as in the previous volume, the citations including Decisions of the Commissioners, the Secretary of the Interior, the Supreme Court of the District of Columbia, the United States District and Cir- cuit Courts, the Court of Appeals of the District of Columbia, and the Supreme Court of the United States. In many instances it was found necessary to extend the classification. \\". L. Pollard. Washington, D. C, May 18, 1912. TABLE OF CASES. A. A. Rosenbush & Company v. The Rose Shoe Manufacturing Company, 581. A. B. Andrews Co., Ex parte, 549. A. Bauer & Co. v. La Societe Anonyme de la Distillerie de la Liqueur Benedictine De 1' Abbaye Fecamp, 564, 608, 629. A. Bauer & Co. v. Order of Carthusian Monks, Convent La Grande Chartreuse, 564, 608. A. Bauer & Co. v. Siegert et al., 553, 564. A. B. Barnum Co., Ltd., Ex parte, 545. A. Burdsall Co., Ex parte, 551. A. F. Beckmann & Co. v. B. Fischer & Co., 542, 554. A. Engelhard & Sons Company,- Ex parte, 598, 621. A. Featherstone & Co., Ex parte, 597. A. G. Spalding & Bros., Ex parte, 560, 616. A. G. Spalding and Bros., In re, 531, 617. A. Leschen & Sons Rope Company v. Broder- ick & Bascom Rope Company, 592, 613. A. Leschen & Sons Rope Company v. Amer- ican Steel & Wire Co. of New Jersey, 613. A. R. Greoire and Co., 551, 608. A. Stein & Co., 557, 605, 616. Abendroth Brothers, Ex parte, 555. Aberli, Ex parte, 31, 48. Abingdon Wagon Company, Ex parte, 545, 555. Abraham, Ex parte, 458. Ach, Ex parte, 77, 80. Acker, Merrall &. Condit Company, Ex parte, 554. Actien-Gesellschaft fur Anilin-Fabrikation, Ex parte, 563. Actiengesellschaft Paulanerbrau Salvator- brauerei v. Conrad Seipp Brewing Com- pany, 263, 264, 437. Adam, Ex parte, 107. Adams, Ex parte, 63, 96, 98, 100, 105, 110, 116, 125, 137, 185, 460, 478. Adams, In re, 65, 487, 623. Adams— Randall. Ex parte, 282. Adams v. Murphy, 44. 376, 390, 423. Adkins and Lewis v. Seeberger, 184, 213, 221. Agee, Ex parte, 64, 71, 509. Alabama Tube and Iron Company, Ex parte, 555. Aladdin Gas Light Company. Ex parte, 568. Alart and McGuire, Ex parte, 565. Albers Bros. Milling Company v. Forrest, 432. Albert Dickinson Company, The, v. Conklin, 588. Albert, Ex parte, 113. Ale, in re, 73. Alexander, Ex parte, 93. Alexander v. Blackman. 292. 445. Allen, Commissioner of Patents v. United States ex rel., Regina Music Box Com- pany. 462. Allen, Commissioner of Patents v. United States of America ex rel. Lowry and Planters Compress Company, 177, 211, 214, 360, 462. 519. Allen B. Wrisley Company v. Buck, 607. Allen, Ex parte, 415, 459. Allington & Curtis Manufacturing Company et al V. Glor et al.. 61. Allis-Chalmers Co. v. Westinghouse Electric & Mfg. Co.. 472. Alman. Ex parte, 134. Alminana, Ex parte, 114, 115, 130, 131. Almy, Ex parte. 140, 512. Alton, Ex parte, 13, 498. Alt V. Carpenter, 360. Amberg, Ex parte, 98. Ambrosia Chocolate Company, Ex parte, 458. Ament, Ex parte, 122. American Car & Foundry Co. v. Morton Trust Co., 489. American Cricular Loom Company, E.x parte, 603. American Circular Loom Company, In re, 546. American Coffee Co. of New Orleans, Ltd., 531. American Glue Company, Ex parte, 540. American Glue Company, In re, 541. American Lithographic Company, The, v. Werckmeister. 443. American Optical Company, Ex parte, 547. TABLE OF CASES. American Separator Company, Ex parte, 530. American Steam Packing Company v. H. W. Johns-Manville Company, 591. American Stove Company v. Detroit Stove Works and Barstow Stove Company, 392, 429, 527, 568, 582. American Sugar Refining Company, The, Ex parte, 525, 557. American Tobacco Company v. Streat, 476, 478. American Tobacco Company v. Werckmeister, 43, 89, 91, 92, 260, 519. American Wire Weavers' Protective Associa- tion, Ex parte, 457. American Wringer Company, The, Ex parte, 600. Ames v. Lindstrom, 374, 390. Ams, Ex parte, 503. Ams, In re, 504. Amulet Chemical Company, The, Ex parte, 599. Ancora v. Kciper, 305. Anderson and Dyer v. Lowry, 213, 270, 45], 452. Anderson, Ex parte, 132. Andrews v. Nilson, 315, 343. Anderson v. Peck, 318. Anderson v. Vrooman, 274. Anderson v. Wells, 292, 335. Andrew Jergens Co., The, v. Woodbury, 598. Andrew McLean Company v. Adams Manu- facturing Company, 590. Andrews, Ex parte, 147. Andrews v. Nilson, 82, 189, 377, 371, 368, 435. Anheuser-Busch Brewing Association v. D. G. Youengling & Son v. Koehler v. Hablich & Company v. Peter Stumpf Brewing Company v. Ruppert, 367, 567, 601. Annand v. Spalckhaver, 171, 205, 232. Anti-Adulteration League, Ex parte, 593. Anti-Cori-Zine Chemical Co., In re, 542, 549. Appel, Ex parte, 497. Appert v. Schmertz, 389. Arakelion, Ex parte, 27, 148. Arbetter v. Lewis, 231, 275. Arguto Oilless Bearing Co., 459. Arms, Ex parte, 148. Armstrong, Ex parte, 476. Arndt, Ex parte, 53. Arnold v. Vaughen and Cabot v. Arnold and Fisher, 277. Artesian Manufacturing Company, In re, 596. Ascencio v. Russell, 290, 401. Ashtabula Telephone Company, In re, 22. Ashley v. Samuel C. Tatum Co., 42. Aspegren & Co., Ex parte, 553, 602. Aston, Ex parte, 408. Atherton and Happ v. Cheney, 223, 240. Atkins V. Paul v. Johnson, 307, 426. Atsatt Bros., Ex parte, 559. Atterbury, Ex parte, 623. Atwood, Ex parte, 39. Auerbach and Cubing v. Wiswell, 222, 240, 268. Auerbach & Sons v. Hall & Hayward Com- pany, 262, 424, 535, 571. Auer, Ex parte, 14, 39. Ault, Ex parte, 141. Austin, Nichols & Co., Ex parte, 559, 569, 614. Austin V. Johnson et al., 186, 257, 333, 399. Autenrieth and Kane v. Sorensen, 183, 396. Auto Grand Piano Co., 612. Austin V. Winslow, 398. 440. Automatic Weighing Machine Company v. Pneumatic Scale Corporation, Limited, 259, 345, 374, 447. Auxer v. Pierce, Jr., 232. Avery, Ex parte, 150. B. A. Corbin & Son Company v. Miller, Kohl- hepp, Giese & Co., 567, 576, 582. B. Fischer & Co. v. A. F. Beckmann & Co., 96, 567. Babcock v. Pickard v. Ashton and Curtis, 168. Bach, Ex parte, 9. Bacon, In re. 314. Bader v. Vajen, 186, 315, 366. Badger, Ex parte, 130. Badger v. Morgan and Hoheisel, 417, 436. Badgley, Ex parte, 64. Baer, Ex parte, 127. Baetz V. Kukkuck, 239. Baglin. Pere Alfredo Luis, Superior General Order Carthusian Monks v. Cusenier Com- pany, 539, 554, 563. Bagot and Dishart, In re, 60. Bailey, Ex parte, 133, 160. Bailey v. Davis, 317. Baker, In re, 471. Baldwin, Ex parte, 74, 151, 454. Ball, Ex parte, 458, 517. Ball v. Flora, 178, 325, 396, 424, 451. Ball V. Rego, 216. Baltzley v. Seeberger, 247. Balzer, Ex parte, 128. Bancroft and Thorne, Ex parte, 117. Banner Cigar Manufacturing Company, The, Ex parte, 599. Baptist, Ex parte, 134. Barber, Ex parte, 144. TABLE OF CASES. VII Barber v. Wood, 229, 252, 286. Barclay and Barclay, Ex parte, 523, 561, 600, 601. Barnes, Ex parte, 34. Barnes v. Swartwout, 295, 317. Barney v. He.';s, 191, 431. Barnhart Bros. & Spindler, Ex parte, 455. Barnhart, Ex parte, 102. Barr v. Bugg, 312. Barratt v. Duell, Commissioner of Patents, 46, 514. Barratt v. Swinglehurst, 230, 232. Barrett and Alter, Ex parte, 57. Barrett & Barrett, Ex parte, 550. Barrett Mfg. Co.. Ex parte, 613. Barrett Manufacturing Company, In re. 613. Barrett v. Harter, 260, 353. Barr Car Co. v. Chicago and Northwestern Railway Company, 135, 288, 296. Barri, Ex parte, 509. Barr v. Bugg, 228. Barry, Ex parte, 93, 255. Bartholomew, Ex parte, 500. Basch V. Hammond, 316, 342, 370, 433. Bassett, Ex parte, 7, 11. Bass, RatcliflF & Gretton. Lim. v. Hartmann Brewing Company, 587. Bastian v. Champ, 170, 208, 232, 345. Battle Creek Sanitarium Company, Limited, In re, 589. Battle Creek Sanitarium Company, Limited v. Fuller, 548, 567, 590. Bauercamper, Ex parte, 18. Bauer v. Crone, 186, 189, 310, 352, 386. Bayle, Jr., In re, 56. Bay State Belting Company v. Kelton-Bruce Manufacturing Company, 263, 443, 527, 581. V^each V. Hobbs et al., 80, 86, 507. Beall, Jr. v. Lyon, 312, 420. Beall V. Shuman, 293, 429. Beals V. Finkenbiner, 265, 375, 423. Beath, Ex parte, 101. Beaumont Mfg. Co., Ex parte, 613. Bcchman v. Southgate, 82, 195, 206, 208. 222, 476. Eechman v. Wood, 160. 192, 267, 401. Bechstein, Ex parte, 533. Beck, Ex parte. 39, 152. Becker and Patitz v. Edwards, 212, 227, 254. Becker, Ex parte, 60, 136. Becker v. Otis, 286. Beckert v. Currier, 309, 393. Beck, Ex parte, 39, 152. Beckett, Ex parte, 562. Beck V. Long. 210. Bcckwith, Ex parte, 511. Bedford et al. v. Duell, Commissioner of Pat- ents, 41, 42, 86. Beechcr, Ex parte, 3, 23. Beech Hill Distilling Company v. Brown-For- man Company, 532. Bchrend v. Lamme, 197. Behrcnd v. Lamme v. Tingley, 166, 200, 416. Belair, Ex parte, 127. Belle City Malleable Iron Company, In re, 128_ Bellows V. King, 319. Bender v. Hoffman, 412, 414, 481. Benedict and Morsell, In re, 88. Benecke, Ex parte, 467. Benet and Mercie v. McClean, 413. Benger v. Burson, 281, 363. Benjamin, Ex parte, 51. Benke, Ex parte, 111, 117, 119. Bennett, Ex parte, 110. Berg, Ex parte, 26, 512. Berger, In re, 490. Bernard v. Huebel. 303, 307. Bero'e, Kane, and Stengard v. Hildreth, 236. Berry v. Fitzimmons, 173. Besant, Ex parte, 45. Beswick v. Duell. Commissioner of Patents, 470, 623. *^ettendorf. Ex parte. 103. Bencher, Ex parte, 496. r.igbie Brothers & Company v. Bluthenthal & Bickart v. The J. & H. Butler Company, 523, 527, 579. Billings, Acting Commissioner of Patents v. Field, 74, 454. Bindley Hardware Company, Ex parte, 568, 611. r.irkhead. Ex parte, 550. Bischoff, Ex parte, 147. Bishop, Ex parte, 562, 595. Bissell Carpet Sweeper Company. Ex parte, 545. Bitner, Ex parte. 77, 138. v^Blackford v. Wilder. 84, 265, 275, 372, 403, 404, 515. Blackledge v. Weir & Craig Manufacturing Company, 494. Blackman v. Alexander. 156, 182, 183, 261, 262, 264, 266, 290. 302. 393. 395, 434, 435, 438, 444, 445. Blackmore. Ex parte, 507. Blackmore, In re, 50, 486, 517. Blackmore v. Hall, 207, 212, 214, 219, 236, 244, 422. Blakeman, Ex parte, 138, 517. Blaubach, Ex parte, 61. Blanchard. Ex parte, 138. TABLE OF CASES. nieistein ct al. v. Donaldson Lithographing Company, 90. Bhsh Milling Company, The, Ex parte, 505. BHss V. Crevehng, ;U0. Bliss V. McEIroy, ;t21, 328, 383. Bloch. In re, 71. Block Brothers Clothing Company, Ex parte, 546. Block, Ex parte, 5. Blood V. Brown, 350. Blood V. Ross, 225, 320. Bloomington Canning Co., Ex parte, 537. Blue V. Power v. Owens, 267. Bluthenthal and Bickert v. Bigbie Brothers & Company, 591, 594. Boch V. Locke, 254, 261. Bohlecke, Ex parte, 7. Bohn, Ex parte, 6. Bolly, Ex parte, 151. Bombard v. The United States Graphite Com- pany. 150, 157. Bong V. The Alfred S. Campbell Art Co., 90, 91. Booth, Booth and Flynt v. Hanan and Gates v. Marshall, 228, 242, 245, 247. Booth, Booth and Flynt v. Hanan and Gates, 358. Booth Brothers, In re, 500. Booth, Ex parte, 143, 457. Borg V. Strauss, 312. Borton, Ex parte, 39, 510, 512. Bossart v. Pohl, 294. Boss Mfg. Co. V. Thomas, 85, 472, 489. Bossert Electric Const. Co. v. Pratt Chuck Co., Bossert Electric Const. Co. v. Sprague Electric Co., 85. Boston Fountain Pen Co., Ex parte, 516. Boucher, Ex parte, 122. Botzky, Ex parte, 5. Bourn v. Hill, Jr., 338, 273, 258. Bourne, Ex parte, 512. Boving, Ex parte, 569. Bowditch V. Todd, 161, 253, 242, 374, 495. Bowles, Ex parte, 13, 90, 457. Bowles V. Wilcox, 297. Bowman, Ex parte, 132. Boyden Power Brake Company et al v. West- inghouse et al., 77, 80, 157, 483, 484, 494. Boyer v. Breitenstein, 398. Bradford & Chatfield, Ex parte, 517. Bradford & Hood, In re, 70. Bradley v. Miggett, 315. Brakey, Ex parte, 201. Brand, Ex parte, 52, 98. Brandsville Fruit Farm Company, Ex parte, 545, 552, 599. Branna, Ex parte, 467. Brantingham v. Draver and Draver, 235. Brasier, Ex parte, 45. Bratt, Ex parte, 114. Braunstein v. Holmes, 300. Breitenbach and F. H. Strong Co. v. Rosen- berg. 613, 622. Bremaker & Eggers. Ex parte, 50. Brenizer v. Robinson, 409. Brennan, Fitzgerald & Sinks, 543. Bresnahan et al. v. Tripp Giant Leveller Com- pany, 83, 159, 160. Breul V. Smith, 177, 213, 218. Brewer, Tily, Rehfuss, and Rehfuss v. Dement, 214, 222. "^Briede, Ex parte, 505, 506. VBriede, In re. 468, 503, 504, 506, 507, 508. Briggs V. Conley, 512. Briggs V. Butterworth, Commissioner of Pat- ents, 481, 521. Briggs V. Duell, Commissioner of Patents, 473, 482. Briggs V. Lillie v. Cooke v. Jones and Taylor, 246, 273, 261, 320, 353. Brill and Adams, Ex parte, 149. Brill and Adams v. Ubelacker, 270, 427, 435. Brill and Brill v. Hunter, 28, 79, 255. Brill et al. v. Peckham Motor Truck and Wheel Company et al., 162. Brill et al. v. The Washington Railway and Electric Company, 87. Brill, Ex parte, 126. Brisbane, Ex parte, 139, 161, 374. Brissenden v. Rocsch, 183. "•'feritt, Ex parte, 94. Brittain Tobacco Works, In re, 591. Broadwell v. Long, 287, 515. Brock V. National Electrical Supply Company, 90. Broderick & Bascom Rope Company v. Les- chen & Sons Rope Company, 572, 580, 582, 603. Broderick, Ex parte, 136, 490. Bronson Company, Ex parte, 544, 593, 62S. Brooker v. Smith, 219. Brooks, Ex parte, 15, 623. Brooks V. Foote v. Wenk, 402. Brooks V. Hillard, 204, 334, 372. Brooks V. Smith, 370, 379. Brough, Ex parte, 53. B rough V. Snyder, 362, 426. Brown and Sprink, Ex parte, 38. Brown, Ex parte, 51, 115, 116, 120, 512. Brown, In re, 55. Brown-Forman Company v. Beech Hill, 533. Brown v. Blood, 350. TABLE OF CASES. Brown v. Cutler v. Keeney, 309, 315. Brown v. Fessenden, 294. Brown v. Gammeter, 178. Brown v. Hodgkinson, 399, 452. Brown v. Inwood and Lavenberg, 220, 238, 282, 412. Brown v. Keeney, 309, 316. Brown v. Undmark, 222, 282, 323. Browne v. Stroud, 220, 248, 431. Brownell, Ex parte, 109, 119. Brunker v. Schweigerer, 183. Bryant, Ex parte, 156, 623. Bryant Electric Co., The, Ex parte, 525. Bryant, Wolcott and Davidson, Ex parte, 199. Bryon v. Henry, 427. Bryon v. Maxwell, 222. Buchanan-Andcrson-Nelson Co., The, v. Breen and Kennedy, 614, 615. Buck, Ex parte, 23, 39. Buck, In re, 22. Buddington, Ex parte, 465, 496. Buffalo Pitts Company, Ex parte, 562, 597. Buffalo Pitts Company, United States ex rel. V. Duell, Commissioner of Patents. Bullier, Ex parte, 255. Bullier v. Willson, 83, 267. Bullock Electric Manufacturing Company, The, In re, 23. Bullock, Ex parte, 35, 78. Bundy v. Rumbarger, 166, 355, 465. Burdick, Ex parte, 106, 107. Burge, Ex parte, 144. x/Burmeister, Ex parte, 110, 120. Burnham, Ex parte, 476. Burns, Ex parte, 61. Burrowes, E.x parte, 40, 118. Burschik, Ex parte, 134. Burson, Ex parte. 93. Burson v. Vogel, 196, 262, 317, 350, 371. 378, 409, 425, 446. Burton v. Bentley, 47. Busch V. Jones et al.. 94, 483. Buscnbenz, Ex parte, 14. Busky, Ex parte, 149. Bustin, Ex parte, 126. Butcher, Ex parte. 111, 120, 135. Butler, Ex parte, 543. Butterfield, Ex parte, 485. 487. Butterfield, In re, 471. Butterworth v. Boral and Kymer v. Ecob, 439, 442, 447. Byram v. Friedberger, 101, 105. Byrnes, Ex parte, 139. Byron Weston Company, Ex parte. 553. C. C. A. Gambrill Mfg. Co. v. H. Becker, 554. C. and A. Potts & Co. v. Creager et al , 492. C. H. Alden Company, Ex parte, 596. C. M. Taylor & Co., Ex parte, 546. C. P. Goldsmith & Company, Ex parte, 548. C. Shenkberg Co., Ex parte, 547. C. S. Sisson Company, Ex parte, 548. Cahn, Belt & Company, Ex parte, 530, 532. Cahn, Belt & Company, In re, 540, 593. Cain V. Park, 136, 260, 262, 354. Caldwell and Barr, Ex parte, 79. California Fruit Canners Association v. Fos- ter, Caldarera & Company, 531, 575, 583. California Canneries Company v. Kothe, Wells and Bauer Company, 591. California Fruit Canners Association v. Rat- cliff-Sanders Grocer Company, 573, 591. Caliga V. Inter-Ocean Newspaper Co., 89. Calm, Ex parte, 198, 205. Calm V. Dolley v. Finzelberg & Schmidt, 245. Calm V. Schweinitz v. Dolley v. Geisler, 197, 239, 250. Calvert & Bro., 534, 606. Camel Company, Ex parte, 557, 558. Cammett v. Hallett, 166, 210, 218, 222, 225, 259. Campbell, Ex parte, 134. Canepa v. Boehm, 578. Cannon, Ex parte, 148. Capital City Dairy Co., The, Ex parte, 543. Capital Paper Company, E.x parte, 594. Carborundum Company, The. Ex parte, 557. Card and Card, Ex parte, 200. Carey v. New Home Sewing Machine Com- pany, 498, 567, 578, 582, 599. Carmichael v. Fox, 390. Carnegie Steel Company, Limited v. Cambria Iron Company, 83, 203, 416, 475, 477, 516. Carnell v. Glasgow v. Cook, 208. Carney v. Latimer, 235. Carpenter, Ex parte, 29, 62, 271. v^Carpenter, In re, 76. Carpenter v. Mallorj', 203. Carroll, Ex parte, 416. Carroll v. Hallwood. 179, 404. Carroll v. Stalhberg, 306. Carter, Ex parte, 542. Carter Medicine Company v. Barclay & Bar- clay, 592, 600. Carver v. McCanna, 235. Cary Mfg. Co. v. Acme Flexible Clasp Co., 453. Cary Manufacturing Company v. Neal, et al., 101, 492. TABLE OF CASES. Casalonga, Ex parte, 4, 154. Case Brothers v. E. W. Murphey & Company, 527, 579. Case V. Quirk, 538. Casein Co. of America v. A. M. Collins Mfg. Co., 505. Casey, In re, 495. Casey-Swasey Company, The, v. Rosenfield Brothers & Company, 571, 576. Easier, Ex parte, 85, 115, 139, 143. easier v. Armat, 252, 254. Casselman, Ex parte, 140, 513. Castle Brook Carbon Black Company, Ex parte, 550. Castner et al. v. Coffman, etc., 555. Cavanagh et al., Ex parte, 110. Cazin, Ex parte, 87. Cazin V. Von Welshach, 157, 167, 200, 254. Central Brass Mfg. Co., Ex parte, 549. Central Consumers Company, In re, 541, 548. Certain Cure Company, Ex parte, 449, 548. Chaffee, Ex parte, 30, 129. Chamberlain, Ex parte, 9, 32. Champ, Ex parte, 518. Champion Safety Lock Company, The, Ex parte, 599. Chapman, Ex parte, 70, 81, 110. Chapot-Shirlaw Company, The, Ex parte, 530. Charles A. Masters & Company, Ex parte, 555. Charles Dennehy & Co. v. Robertson, Sander- son & Co., Limited, 548. Charles E. Brown & Company, Ex parte, 611. Charles, Prince de Loewenstein, In re, 510. Charlton, In re, 70. Charlton v. Sheldon, 315. Chas. H. Phillips Chemical Co., The, Ex parte, 566. Chase and McKenzie, In re, 486. Chase, In re, 486. Cheney v. Venn, 148, 179, 331. Cheney Bros. v. Weinreb and Weinreb, 106, 519. Cherney v. Clauss, 189. 291, 353, 424. Chicago Fire Proof Covering Company, Ex parte, 551. Chicago Hook and Eye Company, In re, G6. China and Japan Trading Company, Limited, 565. Chipman, Ex parte, 17. Christensen Engineering Company, The, In re, 87, 462. Christensen, Ex parte, 32, 48, 124. Christensen v. Ellis, 331. Christensen v. McKenzie, 428. Christensen v. Noyes, 156, 187, 321, 329, 360, 400, 450. Church et al., Ex parte, 69. Church & Dwight Company v. Russ et al., 567, 617. 619. Churchill v. Goodwin, 302, 318. Churchward v. Douglas v. Cutler, 174, 410. Cimiotti Unhairing Company et al. v. Ameri- can Fur Refining Company et al., 83, 158, 494. Ciolfi, Ex parte, 2. Circle Manufacturing Company, Ex parte, 560, 617. Cirkel and Killing v. Killing, 436. Claassen v. Steffen, 167. Clark-Horrocks Company, Ex parte, 549. Clark Cast Steel Cement Company, Ex parte, 457. Clark, Ex parte, 131, 449. Clark, In re, 70. Clark-Jewell-Wclls Co., Ex parte, 616. Classic Corset Company, Ex parte, 552. Clausen, Ex parte, 5, 31, 70. Clausen v. Dunbar v. Schelliner, 393. Clay, Ex parte, 23, 121, 133. Clement v. Browne v. Stroud, 161, 254, 431. Clement v. Richards v. Meissner, 184, 353, 391, 393. Cleveland v. Wilkin, 292. Clinton E. Worden & Company v. California Fig Syrup Company, 550, 564. Cluett, Peabody & Company, Ex parte, 587. Clunies, Ex parte, 488. Clunies, In re, 258, 480. Cobb, Ex parte, 597. Cobb Manufacturing Company, The, Ex parte, 547. Cobb V. Goebel, 195. Coddington, Ex parte, 30, 139. Colburn and Washburn v. Hitchcock, 230. Colchester. Ex parte, 149. Cole, Ex parte, 466. Cole V. Zarbock v. Greene, 177, 182, 390. Coleman, Ex parte, 267. Coleman v. Bullard v. Struble, 223. Coleman v. Struble, 219. Collamore and Kerst, Ex parte, 130. Colley V. Copenhaver, 171. Collins and Company v. Meyer, 593, 610. Collins, Ex parte, 3, 64, 71, 563, 601. Collom V. Thurman, 274. Colton, Ex parte, 52. Columbia Cotton Oil and Provision Corpora- tion, Ex parte, 617. Columbia Drug Co. v. The Lester H. Green TABLE OF CASES. XI Co. V. Jehu R. Smith v. Scott and Bowne, 575. Cohimbia Incandescent Lamp Company, Ex parte, 555. Columbia River Packers Association v. Nave- McCord Mercantile Company, 534. Colton, Ex parte, 485. Colton, In re, 489. Commercial Mica Company, In re, 22, 33. Commercial Vehicle Co., The, Ex parte, 535. Computing Scale Company of America v. Au- tomatic Scale Company, The, 84, 85, 481, 488, 491. Condict, In re, 93. Conklin, Ex parte, 73. Conklin and Son v. The Albert Dickinson Company, 568, 578. Conlcy, Ex parte, 81. Connell, Ex parte, 53. Council V. Tobey, 174. Conner v. Dean, 294, 388, 442. Continental Car and Equipment Company, Ex parte, 556. Continental Paper Bag Company v. Eastern Paper Bag Company, 74, 79, 83, 135, 162. Converse et al. v. Kerst, 314, 320. Cooper, Ex parte, 130. Copeland, Ex parte, 16. Corey v. Eiseman and Misar, 228, 247, 403, 420. Corrington v. Turner, 360. Corner v. Kyle, 329. Corry and Barker v. Trout v. McDermott, 402. Corry and Barker v. Trout, 185. Corry et al. v. McDermott, 299. Corson V. Houser, 442. Cortelyou & Cortelyou, administrators et al. v. Chas. Eneu Johnson & Co., 158. Cory, Gebhart, and Martin, Jr. v. Blakey, 227, 251. Cosper V. Gold & Gold, 216, 454. Cosper V. Gold and Gold, Cosper v. Gold, 182, 196, 242, 362. Cottrell, Ex parte, 42. Cottrell, In re, 42. Couch V. Barnett, 388. Coulson V. Callender and Callender, 17. Couper and Somers v. Bannister, 359. Courville, Ex parte, 139. Cousens, Ex parte, 27. Cowper-Coles, Ex parte, 125. Cox, Ex parte, 141. Craftsman's Guild, The, Ex parte, 586, 602. Crain, Ex parte, 113. Cramer and Haak, Ex parte, 118, 402. Crane, In re, 61, 165, 515. Graver's Sons v. Conklin & Son, 613. Creamer and Knowlton, Ex parte, 113. Crecelius, Ex parte, 107, 140. Crescent Manufacturing Company, Ex parte, 544. Crescent Oil Company, The, Ex parte, 608. Crescent Oil Company v. W. C. Robinson & Son Company, 284, 398, 527. Crescent Typewriter Supply Company, Ex parte, 556. Creveling, Ex parte, 132, 484. Creveling, In re, 62, 130, 485. Crocker v. Allderdice, 281. Croft & Allen Company, Ex parte, 549. Cross, Ex parte, 555, 557, 598, 610. Cross v. Phillips, 180, 301, 304, 315, 339. Crouse-Hinds Company v. Appleton Electric Company, 615, 621. Crowell, Ex parte, 127. Crowley, Ex parte, 524, 602. yCrown Cork & Seal Co. of Baltimore City v. Aluminum Stopper Co. of Baltimore City et al., 7, 21, 159, 160, 162, 472, 473, 502, 504, 508, 623. Crown Distilleries Company, Ex parte, 567. Crucible Steel Company of America, Ex parte, 539. Cummings v. McKenzie, 195, 342, 373, 369. Cummins, Ex parte, 499. Cunningham, Ex parte, 483. Cunningham, In re, 483. Curtice Bros. Co., 543. Curtis, Ex parte, 3, 16, 93, 171. Curtis V. Hedlund, 313. Curtis V. de Ferranti v. Lindmark, 275, 324. Curtis V. Kleinert, 150, 209. Curtis v. Lindmark, 359. Curtis v. Marsh, 170. Gushing. Ex parte, 118. Cushman Paper Box Machine Company v. Goddard et al., 450, 460. Cushman v. Edwards, 245. Cutler, Ex parte, 82, 85, 268, 269, 447. Cutler V. Carichoflf, 235, 283. Cutler V. Hall, 398. Cutler V. Leonard, 189, 277, 509. Cutler V. Riddell, 211. Cutten and Eraser, Ex parte, 12. D. D. Kelly Company, The, v. The Theobald & Son Co. V. Joseph Stricbich, 583. Daggett. Jr. v. Kaufmann, 387, 425. Daggett v. Kaufmann, 221, 223, 245. Dahlgren v. Crocker, 308. TABLE OF CASES. Dallas, Ex parte, 119, 125. Dalsimer & Sons, Ex parte, 597. Dalton V. Hopkins v. Newman, 396, 411. Danford, Ex parte, 137. Danquard v. Courville, 229, 241. Darnell v. Grant, 340, 366, 375. Dashiell v. Tasker, 188, 336, 380, 386. Davenport, Ex parte, 478. Davenport, In re, 471, 478. Davidson, Ex parte, 62, 161. Davies, Ex parte, 118, 125. Davin, Ex parte, 81, 130. Davis, Ex parte, 6, 110, 111. Davis & Roesch Temperance Controlling Co., Ex parte, 55. Davis Sewing Machine Co., Ex parte, 555. Davis v. Garrett, 46, 58, 167, 332, 374. Davis v. Horton, 333. Davis V. Kennard, 307. Davis V. Ocumpaugh v. Garrett, 168, 169, 302, 306, 390. Davis V. ZoUers, 177. Davis V. Cody, 427. Davis V. Swift, 211, 225, 248, 252. Davison, Ex parte, 126. Dawson, Halliwell & Company, Ex parte, 562. Day V. Adt v. Hardy, 307. Dayton Fan and Motor Co., 54. Dayton Spice Mills Co., The, Ex parte, 611. De Ferranti v. Lindmark, 154, 320, 324, 417, 419, 450. DeForest and Horton, Ex parte, 16, 23, 57. De Kando v. Armstrong, 389. De Long Hook & Eye Company, The, Ex parte, 547. De Wallace v. Scott et al., 325, 331. Deane, Ex parte, 34. Decker, In re, 42. Deere & Company v. Rock Island Plow Com- pany, 476. Deeter, Ex parte, 448. Degen v. Pfadt, 223. Deitsch, In re, 55. Deitsch Brothers v. Loonen, 581, 591. Delavoye, Ex parte, 45, 467. Delbey, Ex parte, 134. Dempsey, et al. v. Wood, 172. Dempsey, Ex parte, 151. Dempsey, In re, 151. Densten v. Burnham, 430. Denton and Denton v. Riker, 213. Denton v. Commissioner of Patents, 505. Diamond Ink Company, Ex parte, 560, 604. Diamond Rubber Co. of New York v. Con- solidated Rubber Tire Co. and Rubber Tire Wheel Co., 162. Dickerson v. Tinling, 160, 493. Dickey v. Fleming, 318. Dickinson v. Hildreth, 228, 238. Dickinson v. Norris, 157, 283. Dickinson v. Thibodeau v. Hildreth, 253. Dieckmann v. Brune, 349. Diescher, E.x parte, 132. Dieterich, Ex parte, 50. Dietetic, Ex parte, 9. Dietz, In re, 500, 599. Dilg and Fowler, Jr., Ex parte, 5. Dilg and Fowler v. Shaver, 170, 256. Dilg, Ex parte, 29, 320. Dilg, In re, 30, 518. Dilg V. Moore (substituted for Allen), Com- missioner of Patents of the United States, 521. Dinkel v. D'Olier, 190, 239. Dittgen v. Parmenter, 166, 190, 214, 816, 356, 407. Dixon and Marsh v. Graves and Whitteraore, 203, 286, 429, 519. Dixon, Ex parte, 81, 490. Dixon V. McElroy, 313. Doble V. Eckart v. Henry, Jr., 315. Doble V. Henry, 291, 352, 407. Dodge, Ex parte, 80. Dodge Manufacturing Company, Ex parte, 602. Dodge V. Fowler, 179, 320, 339. Doebler, Ex parte, 199. Dolan, Ex parte, 49. Doman, In re, 88. Donk, Ex parte, 78. Donnell v. Herring-Hall-Marvin Safe Com- pany and Hall Safe and Lock Company, 621. Donnelly v. Wyman, 340, 381. Donning v. Anderson, 428. Donning v. Fisher, 254. Donning v. Stackpole and Laganke, 419, 435, 438. Doolittle V. Herdman, 221. Dorman, In re, 623. Door V. Ames and Rearson, 240. Dosselman and Neymann, In re, 31. Double V. Mills, 329, 382, 444. Dow V. Benson, 412. Dow V. Converse, 29, 248. Dow v. Des Jardins. 432. Downie and Messner, Ex parte, 126. Downing, Ex parte, 27, 42, 139. Dr. Parker Medicine Company, Ex parte, 608. Dr. Pepper Company, The, Ex parte, 596. Dr. Peter Fahrney & Sons Co., The, Ex parte, 557, 558. TABLE OF CASES. XIU Dravo and Miller, Ex parte, 35. Drevet Manufacturing Company, The v. The Liquozone Company, 587, 589. Driggs V. Schneider, 385, 422, 442. Droop, In re, 42. Dry Milk Company, The, Ex parte, 605, 614. Dudley v. Blikensderfer and Barnes v. Sedg- wick, 394. Duff V. Latshaw, 294, 379. Dukes, Ex parte, 320. Dukesmith v. Corrington v. Turner, 54, 191, 223, 282, 390, 467. Duluth-Superior Milling Company v. Koper, 533. Dunbar v. Schellenger, 267, 330, 332, 365, 392, 396, 411, 422, 428, 441, 521. Duncan, Prichard, and Macauley, Ex parte, 82. Duncan, Prichard, and Macauley, In re, 30. Duncan & Duncan, In re, 55. Dunker v. Reist, 227, 237. Dunkley Celery and Preserving Company, Ex parte, 47, 602. Dunkley v. Beekhuis, 432. Dunlap V. Creveling v. Rector, 391. Dunlevy & Brother v. Nelson Morris & Co., 571. Dunn V. Halliday, 224, 311. Durafort, Ex parte, 37. Durkee, Jr. v. Winquist and Turnstrom, 441. Duryea and White v. Rice, 44, 191, 212, 223, 416. Duryea and White v. Rice, Jr., 256, 364, 390. Duryea, Ex parte, 5. Dutcher v. Matthew v. Dutcher and Peter v. Jackson, 280, 302. Dwyer, Ex parte, 119. Dyer, In re, 54. Dyson V. Land v. Dunbar v. Browne, 283, 313, 437, 439. E. Bement & Sons v. National Harrow Com- pany, 89, 493. E. B. Pickenbrock & Sons, Ex parte, 549, 613. E. C. Atkins & Company, Ex parte, 558, 559. E. C. Atkins & Company, In re, 558. E. C. Atkins & Company v. Moore, Commis- sioner of Patents, 534. E. Mcllhenny's Son v. New Iberia Extract of Tobasco Pepper Company, Limited, 538, 539, 557. E. T. Fraim Lock Company, The v. Reading Hardware Company, 538. E. Wertheimer & Cie, Ex parte, 528. E. & A. H. Batcheller Co., Ex parte, 539. Earll V. Love, 201, 241, 242. East, Ex parte, 512. Eastman v. Houston, 204, 270, 347, 369, 423, 440. Eastwood, In re, 473, 477. Ebersole v. Durkin, 263. 385, 388. Eclipse Bicycle Company v. Farrow, 95. Edgecombe v. Eastman v. Houston, 267, 270, 272. Edgerton, Ex parte, 131. Edison. In re. 63. Edna Smelting & Refining Company, The t. Nathan Manufacturing Co., 586. Edwards. Ex parte, 1, 3, 518. Edwards and Gregory. In re, 71. Edwin C. Burt Company, Ex parte, 594. Egly V. Schuiz, 224, 227, 284. Egyptian Tobacco Company, Ex parte, 569, 606. Eggan, Ex parte, 44, 71. Ehrendriech, Ex parte, 53. Ehret v. Star Brewery Company, 583, 610. Eichelberger and Hibner v. Dillon, 225, 229. Eichelberg, Ex parte, 45. Eickemeyer, Ex parte, 66. Eilerman et al. v. McElroy, 226, 245. Einstein. Ex parte, 15. Elberson. In re, 61. Eldon, E.X parte, 517. Elgin National Watch Company v. Illinois Watch Case Company, et al., 619, 622. Eli Lily Company, The, Ex parte, 558. Elliott & Co. V. Youngston Car Mfg. Co., 483. Ellis, Ex parte, 39. Ellis, In re, 79. Ellis V. Schroeder v. Allen, 236. Ellison-Harvey Co., The v. Monarch, 583. Elmira Cotton Mills Company, Ex parte, 556. Elspass V. Taylor. 165, 244, 268. Eluere, Ex parte, 2. Ely & Walker Dry Goods Co., E.x parte. 557. Emerson, Ex parte, 113. 132. Emmet v. FuUagar. 225, 264. 311, 361, 384, 387. Empire Cycle Company v. Monarch Cycle Manufacturing Company v. Meacham Arms Company, 5S0. Empire Grain & Elevator Co., Ex parte, 347. Empire Knife Company, The, Ex parte, 917. Engel, Ex parte, 114. Engel V. Sinclair, 136, 273. Enterprise Bed Co., Ex parte, 543. Erdman, E.x parte, 124. Ervin .\. Rice Co.. Ex parte, 543. Eschinger v. Drummond and Lieberknecht, 212, 214, 273. Essex v. Woods, 239. TABLE OF CASES. Esterbrook Steel Pen Manufacturing Com- pany, Ex parte, 593. Estes V. Cause, 393. Esty V. Newton, 185, 389. Eupetol Medicine Company, Ex parte, 458. Evans & Shepard, Ex parte. 544. Excelsior Wooden Pipe Company v. Pacific Bridge Company et al.. 453. ^Expanded Metal Company, The, et al. v. Brad- ford et al. and The General Fireproofing Company v. The Expanded Metal Com- pany, 475, 476, 477, 517. Eynon, Ex parte, 518. Eyton, Ex parte, 68. F. B. Q. Clothing Company, The, Ex parte. F. Bagot & Co., Ex parte. 561. F. Blumenthal & Co., Ex parte, 547. F. H. Gilson Co., Ex parte, 585, 597. F. M. Hoyt Shoe Company, Ex parte, 608. F. P. May & Company, Ex parte, 546. F. Mayer Boot & Shoe Co., Ex parte, 596. Faber, In re, 479. Fadem and Berman. Ex parte, 31. Fagan v. Graybill, 169. Fairbanks and Sauer v. Karr, 71, 3fi3, 428. Fairfax v. Hutin and Leblanc v. Patten v. Steinmetz v. Scott, 192. Falk Tobacco Company v. Kinney Tobacco Company, 575. Falkenberg, Ex parte, 556. Faller v. Lorimer et al., 435. Familton v. The Alonzo O. Bliss Medical Com- pany, 538. Farmers Manufacturing Company v. W. R. Harrison & Co., 594. Famham, Ex parte, 58. Farquhar Company v. National Harrow Com- pany, 156. Farquhar et al.. Ex parte, 109, 515. Fast, Ex parte, 35. Fay V. Duell, Commissioner of Patents, 492, 514, 623. Faulkner, Ex parte. 61, 449. Faxon, Ex parte, 558, 566, 620. Felbel v. Aquilar, 503, 505. Feder y. Poyet, 96, 99, 105, 107. Fefel V. Stocker, 326, 371, 375. Feinberg v. Cowan, 343, 450. Felbel V. Fox, 280, 283. Felbel V. Oliver, 250, 325, 349, 435. Feld, Ex parte, 34. Felsing V. Nelson, 184. 208, 506. Felten & Guilleaume-Lahmeyerwerke Actien- Gesellschaft, Ex parte, 573. Fennell v. Brown v. Borsch, Jr., 190. Fenner v. Blake, 294. Fenwick v. Dixon and Dixon, 289. Fenwick v. Dormandy, 169. Fernandez, Ex parte, 507. Ferris, Ex parte, 199. Fessendcn, In re, 493. Fessenden v. Potter, 233. Feucht, Ex parte, 114. Fickinger and Blake v. Hulett, 218, 319. Fiebeger, Ex parte. 542. Field. Ex parte, 411. Field v. Colman, 240, 246, 280. Finch V. Singleton, 284. Fish, Ex parte, 66, 123. Fisher v. Daugherty, 191. Fitzgerald v. Guillemet, 272. Fitzhugh, Ex parte, 65. Flanigan et al., In re, 69. Flather v. Weber, 297. Fleming, Ex parte, 40. Fletcher, Ex parte, 145. Flint & Waling, Ex parte, 604, 606. Flomerfelt v. Newitter et al., 42, 107, 483. Flora v. Powrie, 137, 191, 258, 260, 265. Floyd, Ex parte, 145, 500. Floyd v. Rohlfing, 304, 313. Floyd v. Rohlfing. 345. Foley & Company, Ex parte, 606. Foote v. Wenk, 370. Ford, Ex parte, 125. Fordyce v. Stoetzel, 344. Fordyce v. Taisey, 306, 391. Forest City Foundry & Mfg. Co. v. Barnard, 63. Forsyth v. Emery, 218. Forsyth v. Richards, 242, 302. Fortuna and Magro, Ex parte, 569, 613. Fortuny. E.x parte, 50. Foster, Ex parte, 25. Foster v. Antisdel, 351. Foster v. Bell, 252. Foulis, Ex parte, 26, 124. Fowler, Ex parte, 10, 147, 149. Fowler, In re, 22. Fowler, Jr. Ex parte, 144. Fowler v. Boyce. 316, 325, 343, 363. Fowler v. Boyce v. Dyson v. McBerty. 309. Fowler v. Boyce v. Temple and Goodrum, 310. Fowler v. Boyce v. Temple and Goodrum r. Dyson v. McBerty, 315, 317. Fowler V. Dodge, 160, 284, 249, 253. Fowler v. Dyson, 343. Fowler v. McBerty, 316, 325, 332. Fox and Barrett, Ex parte, 126. TABLE OF CASES. XT Fox, Ex parte, 133. Fox Solid Pressed Steel Company v. Schoen Manufacturing Company, 89. Frank et al. v. Hess et al., 104. Frank & Gutraann v. MacWilliam, 65, 525, 570, 571. Franklin v. Morton v. Cooley, 307. Frankman, Ex parte, 129. ■>/ Frasch, Ex parte, 109, 110, 111, 112, 121, 123, , 462. ^Frasch, In re. 111, 112, 122. Frasch t. Moore, 47. Frazee v. Merchants' Coffee Co., 525. Fred G. Dieterich & Company, In re, 465. Fred Wilcox & Co., In re, 535. Frederick R. Stearns & Company v. Russell, 42, 80, 478, 481. Frederick R. West's Nephews, Ex parte, 615. Frederick v. Frederick and Frederick, 232, 277. Freeman, Ex parte, 104, 100. Freeman, In re, 101, 106, Freeman v. Bernstein et al., 264. Freeman v. Garrels and Kimball, 285, 440. Freeman t. Parks, 174. French v. Halcomb, 189, 262, 292, 298, 391, 392, 395. Freund Bros, and Company, In re, 549 Freund, Ex parte, 133. Fried, Krupp Aktiengesellschaft v, Crozier, 520. Friestedt v. Harold, 311. Fritsch, Ex parte, 52. Fritts, Ex parte, 11. Frost V. Chase, 221, 400, 432. Fullagar, In re, 220. Fullagar v. Junggren, 304, 311. Fuller V. Huff et al., 544, 619. Fuller V. Jones, 343. Funk and Mickle v. Whitely, 320, 325. Funk et al. y. Whitely, 320, 370, 379. Funk V. Matteson v. Haines, 186, 191, 288, 301, 316, 331, 340, 367. Funke t. Baldwin, 537. Furman v. Dean, 189, 194, 259, 325, 327, 433 Furness, Ex parte, 29, 134. 1^ G. 0. F. Heublcin Bro,. Ex parte, 543. G. W. Cole Co. V. Marshall Oil Co., 615. Gabrielson v. Felbel, 204. Gaines & Co, ▼. Knecht & Son, 528, 615. Gaisman v. Gillette, 388. Gale Manufacturing Company, Ex parte, 528, 597. Gale, Sr.. Ex parte, 18. Galena Oil Co. v. W. P. Fuller & Co., 607. Gales V. Berrigan, 306. Gallagher v. Despradels, 363. Gallagher v. Hastings, 188, 288. Gallagher v. Hien, 382. Gallagher, Jr. v. Hien, 343, 368, 370, 382, 386. Gaily, Ex parte, 1, 8, 13. Gaily V. Brand, 194, 222. Gaily V. Burton, 241. Gammons, Ex parte, 143. Garcia v. Pons, 237. Gardner, In re, 77, 78. Garland, Ex parte, 79. Garms, Ex parte, 14*. Garrells et al. v. Freeman, 353, 441. Gassmann, E.x parte, 120. Garrett, Ex parte, 25, 137, 480. Garrett, In re, 472, 480. Garton-Daniels Company, Ex parte, 93. Gaylord, Ex parte, 9. Gedge v. Cromwell, 188, 296. Geltz and Hosack v. Crozier, 275. Gem Cutlery Co., The v. Leach, 573, 577. General Electric Co. v. Winona Interurban Ry. Co., 472. Gentry, Ex parte, 142. Geo. B. Sprague Cigar Co., The, and The Wing Cigar Co. v. T. M. Kildow Cigar Company, 451, 551, 557. George A. Newman Company, In re, 515. George Wostenholm & Son, Limited v. Crow- ley, 590. Gerdom v. Ehrhardt, 183. Geron, Ex parte, 546. Gerst V. Strehlow, 569. Gibboney, Ex parte, 319. Gibbons v. Peller, 293, 338. Gibon, Ex parte, 161. Gibson V. Kitsee, 176, 252. Gilbert v. Gilbert and Lindley, 278. Gilbert-Stringer v. Johnson, 356. Giles Remedy Company v. Giles, 528, 578, 594. Gilkeson v. Valentine, 225. Gill Brothers Company, Ex parte, 571. Gillespie, In re. 166. Gillie, Ex parte, 155. Gilman, E.x parte, 10. Gilman and Brown v. Hinson, 335, 378, 383, 383, 407. Gilmer, Ex parte, 507, 511. Girardot, Ex parte, 466. Gironcoli, E.x parte, 2. Giroud V, .\bbott, Giroud, and McGirr, 277. Glafke, Ex parte, 60. Glenn et al. v. Adams, 622. Gold, Ex parte, 508. TABLE OF CASES. Gold, In re, 506. Gold V. Gold, 242, 259, 284, 362, 394, 404, 439. Goldberg v. Crumpton v. Carlin, 313. Goldberg v. Halle, 365. Golden & Co., Ex parte, 610. Golden & Company v. Heitz & Company, 581. Goldman. Ex parte, 114. Goldsmith, Ex parte, 106, 107. Goldsmith v. United Shirt Vest Company, 535, 573, 580. Good, Ex parte, 132. Goodfellow V. Jolly, 157, 233, 428, 430. Goodman, Leavitt-Yatter Company, Ex parte, 545, 551. Goodwin V. Smith, 241, 242, 248. Gordon. Ex parte, 57. Gordon v. Wentworth, 269, 349, 378. 379, 385, 387. Goss V. Scott, 210, 221, 222, 267. Gould V. Barnard, 300, 433. Gourd V. Charles Jacqin et Cie., Inc., 560, 615, 621. Graham, Ex parte. 66. Graham v. Langhaar, 209, 230. Graham Paper Co. v. National Blank Book Co., 575. Graham Bros. & Co. v. Norddeutsche WoU- kammerci and Kammgarnspinnerei, 529. Grand Rapids School Furniture Company, Ex parte, 542, 550. Granger & Company, Ex parte, 610. Granger, Ex parte. 596. Granger v. Richardson, 297. Grant, Ex parte, 5, 11. Graves, Ex parte, 149. Graves v. Gunder, 533, 538, 567. Gray. Ex parte, 104. Gray v. McKenzie v. McElroy, 402. Green, Ex parte, 16, 141. Green v. Benners, 330. Green v. Farley, 317. Greenawalt v. Mark, 251, 321, 357, 414. Greene, Tweed & Co. v. Manufacturers' Belt Hook Co., 524, 576, 591, 611. Greenwald Bros.. Inc. v. Enochs et al. 477. Greenwood v. Dover, 46, 265, 290, 321, 373, 377, 424. Greer v. Christy, 211, 268, 273. Greth, Ex parte, 143. Greuter, Ex parte, 286. Greuter v. Matthieu, 182, 183, 391, 395, 411. GrifBn, Ex parte, 132, 501. Griffin v. Swenson, 214, 327. Griffith, Ex parte. 75, 479. Griffith V. Braine, 362. Griffith V. Dodgson, 247. Grimm v. Dolan, 203. Grinnell v. Buell, 192, 275. Griserin-Werke Paul Camphausen G. M. B. H., Ex parte. 530, 614. Grocers Specialty Mfg. Co., Limited, 561. Groebli, Ex parte, 78. Grosselin, Ex parte, 25, 41. 136, 1.12, 447, 519. Grossmith, Ex parte, 607. Groves, Ex parte, 96. GuenifFet, Benoit, and Xicault, Ex parte, 416. Gueniflfet, Benoit, and Nicault v. Wictorsohn, 154, 196, 219, 223, 365, 405. Gueniffet, Benoit, and Nicault v. Wictorsohn 321, 322. 324. Guenther Milling Company. Ex parte, 597. Guett V. Tregoning, 302, 311. Gugler, Ex parte, 31. Guilbert, Ex parte, 284. Guilbert v. Killinger. 187, 264, 375. Gwinn Bros. & Co. Ex parte, 609. H. H. C. Cook Company v. Beecher et al., 453. H. W. Johns-Manville Company v. American Steam Packing Company, 612, 617. Haeseler and Taylor, Ex parte, 495. Hageman v. Young, 412. Hagey, Ex parte, 7, 88. Hahn, Ex parte, 496. Haines, In re, 69. Hale, Ex parte, 100. Hall, Ex parte, 468, 560. Hall V. Alcord, 435. Hall and Eraser, Ex parte, 117. Hall and Ruckel v. Ingram, 583, 615. The Hall's Safe Company v. Herring-Hall- Marvin Safe Company. 465, 590. Hall V. Weber. 247, 419. Ex parte Hallberg. 52, 148. Hallot. Ex parte, 5. Hallowell, Ex parte, 139. Hallwood V. Carroll, 404. Hallwood V. Lalor, 340. Hallwood V. Lalor v. BockhoflF, 340, 369. Halsey, Ex parte, 466. Hamilton. Ex parte, 77. Hamilton and Hamilton. Jr., Ex parte, 558. Hamilton v. Carroll v. Goldberg v. Stahlberg, 310. Hamm v. Black, 344, 352. Hammond and Donahue v. Colley v. Norris, 176. Hammond v. Basch. 302, 303, 316, 327, 380. Hammond v. Hart, 201. 202, 203. Hanan and Gates v. Marshall, 179. TABLE OF CASES. Hance Bros. & White, Ex parte, 543. Handel, Ex parte, 142. Handly v. Bradley, 448. Hani fen v. E. H. Godslialk Company et al., 152. Hannis Distilling Company, The v. George W. Torrey Company, 536, 591. Hansen, Ex parte, 178, 505. Hansen v. Dean, 300. Hansen v. Inland Type Foundry, 533, 548, 590. Hansen v. Wardwell. 417. Hanson. Ex parte. 61, 106, 365, 511, 516. Hardie, Ex parte, 511. Hardinge, E.\ parte, 510. Hardy, Ex parte, 17. Harley v. United States, The, 520. Harnisch v. Gueniffet, Benoit, and Nicault, 172, 206, 212, 229. Harris, Ex parte, 67, 147, 150, 151, 486, 558, 566. Harris, In re, 486. Harris v. Kennedy, 170. Harrison, Ex parte. 511. Harris v. Stem and Lotz, 195, 321, 334, 340, 395, 423, 441. Harrison v. Shoemaker, 219, 231, 260. Harter v. Barrett, 291, 445. Hartje, Ex parte, 63. Hartley, Ex parte, 130, 500. Hartley v. Mills, 317. Hartman, Ex parte. 99, 468. Hartshorn v. Philbrick, 527, 578. Hartshorn, Ex parte, 101, 103. Harvey, Ex parte, 285. Harvey v. Lubbers v. Raspillaire, 282. Hackell v. Miner v. Ball. 277. Hastings v. Gallagher, 195, 296. Haudcnschild v. Huyck, 176. Haug, Ex parte, 51. 170. Haultain and Stovel, Ex parte, 57. Havana-American Company, Ex parte, 528. Hawkins v. Coleman v. Thullen, 215. Hawley and Hoops v. D. Auerbach & Sons, 588. Hawley, Ex parte, 480. Hawley, In re. 480. Hay, Ex parte, 147. Hay & Todd Manufacturing Company v. Querns Brothers, 526. Hayes, Ex parte, 488. Hayes, In re, 48S. H. C. Cole & Company v. The William Lea & Sons Company, 263, 429. Healey, Ex parte, 116. Heany, In re, 59. Heard, Ex parte, 55. Hcaton Manufacturing Company, Ex parte, 549. Hedlund v. Curtis, 206, 234, 363. Hcinitsh and Moriarty v. Congdon v. Kelsea, 309. Heintzelman and Camp v. Vraalsted and Doyle, 212, 216, 269. Heinz, Ex parte, 492. Heinz, In re, 38, 492. Hellmund. Ex parte, 199. Henderson, Ex parte, 117, 414, 497, 543. Hendler v. Graf, 422. Henke, Ex parte, 4. Hennessy et al. v. Richardson Drug Company, 453. Henry, Ex parte. 28, 130. Henry, Jr., In re, 500. Henry v. Doble, 292. Henze, Ex parte, 57. 60. Herbst, Ex parte, 144, 580. Herbst, In re, 571, 572. Herbst v. Records and Goldsborough v. The Rothenberg Company, 581. Herbst v. The Rothenberg Co., 525. Herman v. Pullman, 195, 265, 316, 324, 363, 369, 381. Hermsdorf v. Driggs v. Schneider, 266. Heroult, Ex parte, 502. Heroult, In re, 505, 507. Herr v. Herr, Groves, and Foreman v. Dodds, 167. Herring Hall-Marvin Safe Co. v. Hall's Safe Co., 621. Herreshoflf, Ex parte, 121. HerreshofT v. Knietsch, 410, 439. Hertford, Ex parte, 64. Herzog and Wheeler, Ex parte. 19. Hess, Ex parte, 5. Hess v. Joerissen v. Felbel, 364. Hess-Bright Mfg. Co. et al. v. Standard Roller Bearing Company, 154. Heusch, Ex parte, 466. Hewitson, Ex parte. 105. Hewitt and Waterman v. Greenfield, 241, 286. Hewitt V. Steinmetz. 212, 411. Hewitt V. Thomas v. Kruh v. Weintraub, 191. 391. Hewitt v. Weintraub, 420. Hewitt V. Weintraub v. Hewitt and Rogers, 418. Hewlett, Ex parte. 286. Heylman. Ex parte, 518. Heyne, Hayward and McCarthy v. De Vilbiss, Jr., 238, 283. Hezel Milling Company v. Weidler, 533, 565. Hick, In re, 168. TABLE OF CASES. Hicks, Ex parte, 128, 468. Hicks V. Costello, 52, 452. Hien v. Shepard, 365. Hiett, Ex parte, 503. Hildreth, Ex parte, 281. Hill and Renner, Ex parte, 98. Hill, Ex parte, 490. Hillard v. Brooks, 181, 273, 332, 377. Hillard v. Eckert, 173, 206. Hillard v. Fisher, 173. Hinkle and Ashmore, Ex parte, 516. Hinklcy v. Barker, 210. Hinkson, Hey, and McConahy, Ex parte, 278. Hipp, Ex parte, 465. Hill V. Hodge, 300. Hirth, Ex parte, 23. Hobbs et al. v. Beach, 80, 155, 472, 473, 508. Hoch V. McCaskey v. Hopkins, 176. Hodge, Ex parte, 7, 38. Hodges, Ex parte, 129, 131. Hodges, In re, 488. Hoefer, Hoefer, and Hoefer v. Barnes, 240. Hoegh, Ex parte, 28, 76. Hoegh V. Gordon, 183, 410. Hoey, Ex parte, 471. Hoey, In re, 471, 506. Hofmann, E.x parte, 150. Hoffstetter v. Kahn, 198. Hogan, In re, 67. Hoge, Ex parte, 77. Hohorst V. Hamburg-American Packet Co. et al., 95. Holbert, Ex parte, 608. Holder, Ex parte, 78, 79. Holland, Ex parte, 200. Hollifield V. Ciimmings, 176. Hollis, Ex parte, 27, 501, 516. Holmes v. Hurst, 89, 92. Holophane Glass Company, Ex parte, 544, 585. Holt V. Ingersoll, 254, 398. Holz, Ex parte, 40. Holz V. Hewitt, 413. Holzapfel's Compositions Company, Limited V. Raht Jen's American Composition Com- pany, 534, 564, 585. Holzer, Ex parte, 495. Homan, Ex parte, 26. Hooker, Corser and Mitchell Company, Ex parte, 546. Hope, Jr. V. Voight, 196, 325, 370. Hopfelt V. Read, 211, 256, 268. Hopkins, Ex parte, 556. Hopkins, In re, 556. Hopkins v. Newman, 30, 214, 243, 404. Hopkins v. Peters v. Dement, 303. Hopkins v. Scott, 58, 227. Horine v. VVende, 43, 404. Horlick's Food Company, Ex parte, 543. Home V. Somers & Company, 561, 583, 601. Horton v. Leonard, 248. Horton v. Summer, 194. Horton v. Zimmer, 5, 38, 261. Horstick, Ex parte, 38, 136, 510. Hoschke, Ex parte, 468. Hosking. In re, 60. Hostetter Company v. Sommcrs et al., 618. Houghton, Ex parte, 457. Howard v. Bowes, 263, 349, 371. Howard v. Hey, 204, 237, 405. Howe Scale Company of 1886 and Fay — Sholes Company v. WyckofF, Seamans & Bene- dict, 595. Howell, Jr. v. Hess, 217, 368. Howell V. Hess, 161, 183, 269, 335, 367. Hewlett, Ex parte. 28. Hoyt Brothers & Company, Ex parte, 559. Hoyt, Ex parte, 116. Hoyt V. Sanders v. Hawthorne, 311. Hubbell V. United States, 84, 513. Huber v. Aiken, 301, 420, 433. Hubert, In re, 67. Huebel v. Bernard, 295. Huenefeld. Ex parte, 542, 553. Hulett V. Long, 27, 180, 366. Hull V. Hallberg, 225, 319. Hull V. McGill, 393. Hummel. Ex parte, 28, 81, 157. Hummel & Tingley, Ex parte, 152. Humphrey v. Fickert, 359. Hunter, Ex parte, 19, 137, 495, 496. Hunter, In re, 526. Hunter v. Stikeman, 185, 327, 366, 380. Hutchinson, Pierce & Co. v. Loewy, 535, 538. Hutchins, Ex parte, 607. Hutin and Leblanc v. Steinmetz v. Scott v. Fairfax, 182, 410. I. lagan, Ex parte, 81 Iglehart Brothers v. Land et al., 442: Iglehart Brothers v. Houston et al., 425, 442. Ilgner, Ex parte, 45. Illinois Hydraulic Cement Manufacturing Company v. Utica Hydraulic Cement Com- pany, 537. Illinois Match Company v. Broomall, 579. Illinois Watch Case Company et al. v. Elgin National Watch Company, 528, 554, 555, 584. 618, 622. Independent Baking Powder Co. v. Fidelity Mfg. Co., 434. TABLE OF CASES. IngersoU v. Holt, 426. Ingoldsby v. Bellows, 206, 234. . Inman, E.x parte, 14.5, 498. Ino Medicine Company, Ex parte, 568, 571, 593, 607. Independent Breweries Company, E.x parte, 569, 614. International Corset Company, Ex parte, GIO, 617. International Food Company v. Price Baking Powder Company, ."i42, 573, 617. International Postal Supply Company of New York V. Bruce, 520. International Silver Company v. William A. Rogers, Limited, 531. 609. Inter-State Milling Company, Ex parte, 150. Iowa Soap Company, E.x parte, 532. Iroquois Brewing Co. v. American Brewing Co., 613. Isaacs & Speed, Ex parte, 446. Isenhart, Ex parte, 160, 464. Ives, In re, 67. Iwan, In re, 470, 490, 492. J. A. Scriven Company v. W. H. Towles Man- ufacturing Company et al., 87, 586. J. C. Hirschman Company, The, Ex parte, 609. J. C. Somers & Co. v. Neuman, executor of J. F. Horn, 568, 582. J. Fred Wilcox & Company, Ex parte, 612. J. G. B. Siegert & Hijos, In re, 600. J. R. Newberry Company v. Joseph J. O'Don- ohue's Sons. 261, 424, 525, 535, 593. J. W. Howe & Sons, Ex parte, 458. Jackson et al. v. Getz et al., 336. Jackson et al. v. Knapp, 335. Jackson, Ex parte, 144. Jackson v. Cuntz, 234. Jackson v. Patten, 198, 257. Jackson v. Summerfield. 298. Jacobs V. Beecham, 621. Jacobson, Ex parte, 76. James Buchanan & Co., Ltd. v. Frederii:k R. West's Nephews, 605. James Chadwick & Brother, Limited v. Fab- rique de Soie Artificielle d'Obourg. 592 James Graham Manufacturing Company. Ex- parte, 595. Janowitz, Ex parte, 468. Jansson, Ex parte, 518. Jansson v. Larsson, 443. Jarvis v. Quincy v. Jarvis and Blakeslee v. Barron v. Briggs and Shepard, 206, 224, 278. Jean and Goode v. Hitchcock, 183. Jenks, E.x parte, 98. Jennens, Ex parte. 111. Jenner v. Dickinson v. Thibodeau, 243, 321. 343, 378. Jenner v. Dickinson, 325, 326. Jewell Belting Company, Ex parte, 553. Jewell & Vinson, E.x parte, 545. Jobes v. Roberts v. Hauss, 260, 442. Johann Hoff, In re. 602. John C. Dowd & Company. In re, 56. John Dewar & Sons, Limited, Ex parte, 459, 460. John T. Lewis & Bros. Company v. Phoenix Paint & Varnish Company. 568, 601. John Wagner & Sons v. Thi.xton, Millett & Co., 587. John R. Williams Co. et al. v. Miller, Du Brul & Peters Mfg. Co., 81, 159, 257, 473, 475, 482. Johns, Ex parte, 133. Johnson, Ex parte, 25, 104, 115, 128, 477. Johnson v. Brandau, 541, 548, 590. Johnson v. Mueser. 47, 181, 196. Johnson & Johnson v. Whelan, 576. Johnston, Ex parte, 116. 125. Johnston v. Erekson and Carlson v. Barnard, 312. Johnston v. Woodbury, 41, 43, 130. Jones and Taylor v. Cooke, 262, 329. Jones, Ex parte, 43, 449. Jones v. Larter, 62, 95, 405. Jones V. Linn, 310. Jones V. Starr, 178, 281, 433, 434, 436. Joseph Banigan Rubber Company v. Bloora- ingdale, 573. Joseph B. Funke Company, Ex parte, 531. Joseph v. Kennedy v. McLain, 239. Josleyn v. Hulse, 176, 235, 286. Judd v. Campbell, 182, 360, 414. Julius Wile Sons & Co., Ex parte, 562. Judge V. Harrington. 274. Justin Seubert, Incorporated v. A. Santaella & Company. 539, 572, 613. K. K. Landspriv. Milly-Kurzen-Seifen und Gly- cerin-Fabrik Von F. .\. Sarg's Sohn & Co. v. Hall and Ruckel, 616. Kaezander v. Hodges and Hodges, 207, 219. Kadow, Ex parte, 76. Kahn, Ex parte, 105. Kane v. Brill and .\dams, 170, 270, 278. 467. TABLE OF CASES, Kapp. Ex parte, 98. Karpenstein v. Hertzberg, 313. Kasson v. Hetherington, 325, 335, 339, 389. Kauermann, Ex parte. 54. Kaufmann & Blachc, Ex parte, 605. Keech v. Birmingham, 314. Keen and Williams, Ex parte, 93. Keet & Rountree Drygoods Company, Ex parte, 556. Kehrhahn, Ex parte, 18. Keil, Ex parte, 133. Keith, Erickson, and Erickson v. Lundquist, 439. Keith, Erickson, and Erickson v. Lundquist v. Lorimer and Lorimer, 282, 420, 430, 433, 438, 443. Keith, Ex parte, 28. Kellogg, Ex parte, 94. Kellogg Swithboard & Supply Company, The, In re, 56. Kelly et al. v. Springfield Railway Company, et al., 521. Kelly V. Dempster, 230. Kelly V. Fynn, 188, 333, 336, 375, 376, 440. Kempshall v. Royce, 263, 293, 437. Kempshall v. Sieberling, 214, 286, 360. Kendall, Ex parte, 139. Kennedy v. McLain, 230. Kenny and Thordarson v. O'Connell v. Baird V. Schmidt, 419. Kenney, Ex parte, 37, 63, 514, 518. Kent V. Wilson v. JefFery and JeflFery, 313. Kentucky Distilleries & Warehouse Company V. Old Lexington Club Distilling Company, 533, 552, 599. Kentucky Distilleries and Warehouse Company V. P. Dempsey & Company, 589, 615. Kenyon, Ex parte, 534, 544, 546. Kephart, Ex parte, 417. Kern, Ex parte, 101. 104. Kessler v. Eldred. 86, 136. Keyser, Ex parte, 127. Keystone Chamois Company, Ex parte, 570, 604. Kidd, Ex parte, 132. Kidde, Ex parte, 127. Kieffer, Ex parte, 28, 82. Kiffe and Disch, Ex parte, 546. Kilbourn v. Hirner, 243, 258. 344, 364. King and Babendreier v. Libby, 236. King, Ex parte, 114. King V. Hansen, 308. Kingan and Company, Limited, Ex parte, 560. Kingan Packing Association, The, Ex parte, 559, 566, 616. Kinney and Schultz, Ex parte, 37, 141. Kinney, Ex parte, 29. Kinney v. Goodhue, 243, 245. Kinsman v. Kintner, 251, 338. Kinsman v. Strohm, 1. 365, 418, 433. Kintner, Ex parte, 117, 126. Kirkegaard and Jebsen v. Ries, 264, 293, 344. Kitsee v. Robertson, 213, 514. Klein v. Groebli, 196. Klemm, Ex parte, 487. Klepetko, Ex parte, 177. Klepetko v. Becker, 227, 236, 245. Kletzker and Goesel v. Dodson, 182, 185, 831. Klemm, In re, 471, 487, 490. Klingelfuss, Ex parte, 154. Klussmann, Ex parte, 5. Knapp and Cade, Ex parte, 37. Kneedler v. Shephard, 285. Knight V. Cutler, 226. Knight V. Morgan, 434. Knothe, Ex parte, 96, 98, 101, 103. Kohler, Ex parte, 107, 129. Kokomo Fence Machine Company v. Kitsel- man, 84, 160, 494. Kolb V. Hemingway v. Curtis, 208, 269. Konigliches Hofbrauarant Munchen, Ex parte, 529, 563. Konold, Ex parte, 45. Kops Brothers, Ex parte, 546. Kops Brothers v. Royal Worcester Corset Company, 574, 609. Koritski and Wipf, Ex parte, 18. Kornitzer, Ex parte, 458. Kotler, Ex parte, 77. Kozminski, Ex parte, 131. Krakau v. Harding, 203, 256. Kreag v. Geen, 189, 299. Krejci, Ex parte, 15. Kroeninger, Ex parte, 146. Kruse, Ex parte, 88, 128, 137. Krusius Brothers, Ex parte, 550. Kugele V. Blair, 169, 170, 175. Kugler, Ex parte, 32. Kuhlman and Carpenter, Ex parte, 133. Kuhlewind, Ex parte, 18. Kuper, Ex parte, 7. Kupper, Ex parte, 63. Kurz, Ex parte, 20, 100, 105. Kurz V. Jackson and Pierce, 205. Kuttroflf V. Cassella Color Company, 523, 532, 610. Kyle V. Corner, 189, 291, 389. TABLE OF CASES. L, L. & A. Scharff, Ex parte, 531, 610. L. W. Levy & Co. v. Uri, 526, 553, 564, 565, 617. La France, Ex parte, 12. La Republique Francaise et al. v. Saratoga Vichy Spring Company, 460, 545, 553, 562. Laas and Sponenburg v. Scott, 334, 343, 446. Lacroix, In re, 505, 506. Lacroix v. Tyberg, 79, 365, 409, 499. Ladofif V. Dempster, 301. Lahue, Ex parte, 75. Lake Chemical Company, Ex parte, 459. Lake V. Cahill, 253. Lambert, Ex parte, 102, 510. Lambert, In re, 510. Landa v. Kavle, 351, 388. Landau v. Spitzenberg, 432. Landenberger, Ex parte, 148. Landes, Ex parte, 132. Landis, Ex parte, 12. Landsing, Ex parte, 36. Lane v. Levi, 83, 158, 159, 481, 494. Lang, Ex parte, 142. Lang V. Green River Distilling Company, 591, 612. Langan v. Warren Axe & Tool Company, 480. Lange, Ex parte, 38. Langen, Ex parte, 33. Langerfeld, Ex parte, 495. Langhaar, Ex parte, 40, Langslowr v. Malocsay, 213, 223. Lanning, In re, 22. Lantzke, Ex parte, 112, 113. Larkin Company v. Pacific Coast Borax Com- pany, 575, 583. Larkin v. Richardson, 292, 299. Larson, Ex parte, 29. Lasance, Ex parte, 141. Lasher v. Barratt, 230. Latham v. Armat, 368, 372. Latham v. Force and Parenteau, 232, 249, 318. Latour v. Lundell, 237, 238. Latour V. Winter and Eichberg, 324, 451. Latshaw v. Duff v. Kaplan, 397. Lattig and Goodrum v. Dean, 165, 399, 508. Laughlin and Reuleaux, Ex parte, 17. Laundry Blue Company, In re, 525. Lauritzen Malt Co., Ex parte, 612. Lavery v. Heene, 325. Law, Ex parte. 40. Lawley, Ex parte, 34, 113. Lawrence, Ex parte, 118. Lawrence v. Voight, 349, 379. Lawson, Ex parte, 57, 148, 511. Lawton, Ex parte, 143. Laxakola Company, Ex parte, 614. Lea V. New Home Sewing Machine Company, 578. Leblanc, Ex parte, 49. Lee, Ex parte, 75, 126. Leeds & Catlin Company v. Victor Talking Machine Company and United States Gramophone Company, 79, 155, 159. Lefebvre, Ex parte, 130, 607. Lefever, Ex parte, 13. Leich, Ex parte, 2. 15. Leigh V. Saart, 108. Leilich, Ex parte, 140. Lemire, Ex parte, 118. Lemp v. Ball, 174. Lcmp v. Mudge, 377, 378, 424. Lemp V. Randall and Bates. 274, 278. Lemp V. Randall and Bates v. Thomson, 286. Lendl, Ex parte, 52. Leon, Ex parte, 45, 79. Leonard v. Chase, 409. Leonard v. Pardee, 177, 287. Leonius, Ex parte, 75, 132. Leprince v. Her and Morris, 577. Lesler, Ex parte, 510. Leslie v. Tracy et al., 521. Lester H. Greene Company, The v. Scott & Bowne, 579. Levenstein and Naef, Ex parte, 466. Levering Coffee Company v. The Union Pa- cific Tea Company, 432. Levy, Ex parte, 137, 143. Lewis and Bros. Company v. Phoenix Paint and Varnish Company, 567, 576. Lewis and Unger, Ex parte, 88, 496. Lewis and Williams v. Cronemeyer, 344, 385. Lewis, Ex parte, 44. Ill, 112, 448. Lewis & Brothers' Company v. Phoenix Paint & Varnish Company v. National Lead Co., 534. Liberman v. Williams. 341. Lillie, Ex parte, 14. Lincoln, Ex parte, 146. Linde, Ex parte, 497. Lindemeyr v. Hoffman, et al., 372, 387, 418. Lindmark v. De Ferranti, 286, 418. Lindmark v. Hodgkinson, 83, 361. Lindsey, Ex parte, 50. Lindstram v. Ames, 58. Lindstrom v. Lipschultz, 167, 260, 436. Lion Fig and Date Company. Ex parte, 458. Lipe v. Miller, 197. 203. 231, 282. Lipschutz V. Floyd, 221. Lipscomb V. Pfeiffer, 391. Listman Mill Company, Ex parte, 559, 604. Litchfield, Ex parte, 513. TABLE OF CASES. Litle, Jr., Ex parte, 100, 270. Little & Co., Ex parte, 554. Lizotte V. Neuberth, 228. Ljungstrom, Ex parte, 81, 120, 138, 518. Lloyd, Ex parte, 97, 106, 129. Lloyd V. Antisdel, 186, 288, 296, 326, 376. Locke V. Boch, 187, 336. Locke V. Crebbin, 221, 241, 274. Locke, In re, 452, 486. Lockwood V. Schmidt, 308. Loeben v. Hamrick, 305. Loewenbach, Ex parte, 34. Loft, Ex parte, 550. Long, Ex parte, 70. Loomis V. Hauser, 387, 388. Loonen, Ex parte, 552. Loppentien, Ex parte, 38, 141. Lorenz, Ex parte, 17, 614. Lotterhand v. Cornwall, 176, 220, 230, 237, 303. Lotterhand v. Hanson, 195, 341, 357, 363, 401. Lottridge v. Eustice, 65, 302. Lotz V. Kenny, 195, 256. Loughlin and Reuleaux. Ex parte, 501. Lovejoy, Ex parte, 9. Lovejoy V. Cady, 353. Loveridge, Ex parte, 489. Lowden v. Allen Brothers Company, 579. Lowrie v. Taylor and Taylor, 317, 358, 371, 387, 441, 446. Lowry and Cowley v. Spoon, 418, 431. Lowry, In re, 73. Lowry V. Duell, Commissioner of Patents, 482. Lowry V. Ruping, 439. Lowry V. Spoon, 128, 188, 222, 319, 357, 431. Luby V. Taylor, 343. Ludington, Ex parte, 53. Luger V. Browning, 165, 194, 240, 268, 271. Lukaszewske v. Cole, 318. Luten, Ex parte, 51. Luten, In re, 46, 486. Luthy & Company v. Peoria Drill & Seeder Company, 523, 564. Lutz, Ex parte, 459. Lutz V. Lewis, 199, 401. Lux, Ex parte, 147. Lynch and Hough, Ex parte, 510. Lyon, Ex parte, 10, 286. Lyon, In re, 483, 489. Lyons, Ex parte, 126. M. M. Zimmerman Company, Ex parte, 559. McArthur v. Gilbert, 108, 233, 356. McArthur v. Mygatt, 338, 339, 450. McBerty v. Cook, 135, 193, 349, 366. McBride v. Kemp, 410. McBride v. Kroder, 240. McCallum v. Bremer, 394. McCanna v. Morris, 237. McCaskey, Ex parte, 19. McChesley v. Kruger, 222. McClain, Ex parte, 78, 550. McCombs, Ex parte, 507. McConnell v. Lindsay and Tonner, 304. McCormick, Ex parte, 401. McCormick Harvesting Machine Company v. C. Aultman & Company et al., 501. McCormick, In re, 64. McCormick v. Cleal, 325, 328, 389, 446. McCormick v. Hallwood, 379. McCormick v. Robinson, 353, 476. McCreery v. Commissioner of Patents, 477. McCullough, Ex parte. 197. McDermott v. Hildreth, 303, 305. McDonald, Ex parte, 125, 132, 515. McDowell V. Ideal Concrete Mach. Co., 505, 520. McEIroy, Ex parte, 3, 26, 57, 493. McElroy, In re, 4, 493. McFarland v. Watson and Watson, 181. McGenniss, Ex parte, 23. McGill V. Adams, 190. McGuire v. Hill, 166, 278. McHale, Ex parte, 120. McHarg v. Schmidt and Mayland, 47, 279, 309, 390. Mclnnerney, Ex parte, 533, 594, 606. Mclntyre v. Perry, 287, 325. McKaye, Ex parte, 114, 115. McKean v. Morse, 410. McKee, Ex parte, 5. McKee v. Baker, 235. McKeen, Jr. v. Jerdone, Jr., 301. McKeen v. Jerdone, 184. McKenzie v. McTammany v. Garrett, 184, 185. McKenzie v. Cummings, 373. McKillop V. Fetzer, 300. McKenzie v. Gillespie v. Ellis v. McEIroy v. Ocumpaugh v. Norton, 250. McKnight, Ex parte, 496. McKnight v. Pohle, 276. McKnight v. Pohle and Croasdale, 194, 321, 424. McLoughlin Brothers, Ex parte, 455. McLoughlin Brothers v. Flinch Card Co., 588. McLoughlin v. Raphael Tuck & Sons Co., Limited, 91. McManus v. Hammer, 432. McMulIen, 76. kfcNeal V. Macey, 348. McNeil and Sturtevant, Ex parte, 75, 82, 483. TABLE OF CASES. McNeil and Sturtevant, In re, 491. McNeil, E.X parte, 479. McNeil, In re, 480. McPhail, Ex parte, 142. McPherson, Ex parte, 66, 67. McQuarrie v. Mansion, 2:iO. McQueen, Ex parte, 43, 497. McTammany and Wright, Ex parte, 137, 464. McTammany, Ex parte, 68. Macdonald, Ex parte, 535. Macdonald v. Edison, 188, 268, 376, 381, 385. Macey v. Laning v. Casler, 218. Macey v. Tobey v. Laning. 410. MacMalkin v. Bollee. 259, 276. Maconochie Solderless Tinning Company, Lim- ited, In re, 46. Macphail, In re, 70. Macwilliam. In re, 54. Madison Medicine Co.. Ex parte, 597. Magazine and Book Company of New York, The. Ex parte, 548, 602. Magic Curler Company v. Porter, 537. Magnus Metal Company, Ex parte, 553. Mahn. Ex parte, 455. Maitland v. B. Goetz Manufacturing Co., 502. Maloney and Caldwell, Ex parte, 595. Manogue-Pidgeon Iron Company. E.x parte, 552. Manly v. Williams, 287. Mansfield and Hayes, Ex parte, 115, 117. Marburg, Ex parte, 5. Marconi, Ex parte. 2, 4. Marconi v. Shoemaker. 54, 349. 367, 379, 385. Marconi v. Shoemaker v. Fessenden, 437, 438, 443. Marder v. Dcy and Dey, 447. Marie, Princess of Ysenburg, In re, 60, 516. Mark Cross Company, Ex parte, 529, 595. Mark Cross Company, In re, 530. Mark, Ex parte. 206. Mark v. Greenawalt, 279, 411, 425. Marks. Ex parte, 38, 140, 512. Marr, Ex parte, 13. Marsden v. Duell, Commissioner of Patents, 476. Marsh Brothers Company, Ex parte, 558. Marshall, Ex parte, 142. Marshutz v. Commissioner of Patents, 48, 136. 490. Marsteller, Ex parte, 25. Martin, Ex parte, 541, 550. Martin v. Goodrum v. Dyson v. Lattig and Goodrum, 225, 322. Martin v. Martin and Bowne Company, 586. 587. Martin v. Mullin, 228, 360 Martin v. Rowley, 301. Marvel v. Decker, et al., 339. Marvin Estate Company. In re, 23. Massie, Ex parte, 76. Mason, In re, 479. Mason v. Hepburn, 346, 375, 387, 389. Mast, Foos & Company, v. Dempster Mill Manufacturing Company, 20, 42, 158. Mast, Foss & Company v. Stover Manufactur- ing Company, 86, 162, 470, 477. Mastaglio, Ex parte, 17. Mathy v. The Republic Metalware Company, 539, 572. Matthes, Ex parte, 467. Matthes v. Burt, 348. Matthews, Ex parte, 2, 115. Mattice v. Langworthy, 176, 437, 450. May v. Merker, 304. Mayer Fertilizer & Junk Company v. Virginia- Carolina Chemical Company, 526, 539. Maynard, Ex parte, 35, 44, 51. Maxwell v. Bryon v. Henry, 171, 341, 253. Meacham, Ex parte, 37. Mead v. Davis and Varney, 326, 332. Mealus, Ex parte, 129. Mechlin v. Horn, Colclazer and Mungen, 220, 282. Meden v. Curtis, 9. 20, 217, 241. Meier, Ex parte, 54. Meigs, Hughes, and Stout v. Gerdom, 206. Mcinhardt. Ex parte, 491. Mcll v. Midgley. 181, 365, 515. Mellin and Reid, Ex parte, 129. Mergenthaler, Ex parte, 138. Meriwether & Company, Ex parte, 605. Merrill, Ex parte, 512. Merritt. Black, and Morris, Ex parte, 493. Merritt, Black, and Morris. In re, 479. Merritt, Ex parte, 471. Messinger v. Commissioner of Patents, 47, 500, 502. Meta Mattulah, In re, 46. Metzger, Ex parte, 32, 121. Metropolitan West Side Elevated Railroad Company et al, v. Siemens, 21. Meyer, Ex parte. 623. Meyer Brothers Coflfee and Spice Company, Ex parte, 550, 552, 602. Meyer Brothers Coflfee and Spice Company, In re, 552. Meyer, et al. v. Rothe. 421. Meyer, Ex parte, 38. Meyer v. Sarfert, 188. 189, 222, 240, 350. Meyers v. Tyden. 174. Miami Clothing Manufacturing Company. Ex parte, 544, 602. XXIV TABLE OF CASES. Miami Cycle & Mfg. Company, In re, 56. Michaels, Ex parte, 61. Michigan Condensed Milk Company v. The Kenneweg Company, 590. Midgley, Ex parte, 5, 16. Miehle v. Read, 188, 194, 307, 315, 328, 333. Miel V. Young, 223, 243, 274, 364. Mifflin et al. v. Dutton et al., 91, 92. Mifflin et al. v. R. H. White Company, 92. Milans, Ex parte, 513. Milans, In re, 491. Miles V. Todd, 316. Miller, Ex parte, 23, 68, K12, 141, 142, 146, 208, 457, 463, 468, 544. Miller v. Blackburn, 264, 295, 301. Miller v. Kelley, 203. Miller v. Mann, 238. Miller v. Miller v. Bacon v. Mann v. Torrance, 143. Miller v. Perham, 243, 359. Miller V. Speller, 345. Miller v. Wallace, 312. Millett and Reed, Ex parte, 62, 512. Millett and Reed v. Duell, Commissioner of Patents, 41, 43. Millett et al. v. Allen, Commissioner of Pat- ents, 468, 470, 482, 488. Millett, Reed, and tlie Crosby Steam Gage & Valve Company v. Allen, Commissioner of Patents, 487. Mills, In re, 499. Mills V. Torrance, 166, 308, 407. Millsaps, Ex parte, 478. Minehan, Ex parte, 516. Minich, Ex parte, 13, 140. Mitchell, Ex parte, 551. Mitchell V. Dinsmore, 290, 444. Mitchell V. Fitts, 173. Moehn, Ex parte, 64, 449. Modoc Soap Company, E.x parte, 593. Moeser, Ex parte, 490, 401. Moeser, In re, 491. MoflFatt V. Weiss, 365. Moller, In re, 66, 6S. Monarch Tobacco Works, Ex parte, 609. Mond V. Duell, Commissioner of Patents, 484. 492. Moneyweight Scale Co. v. Toledo Computing Scale Co., 504, .'07. Moore, Ex parte, 117. More, Commissioner of Patents v. Heany, & The Heany Company, 58, 452. 463. Moore, Commissioner of Patents v. The Unit- ed States of America ex rel Boyer, 66. Moore v. Curtis, 175, 235, 281, 390, 411. Moore v. Hewitt, 378, 379. Moore v. Hewitt v. Potter, 171, 201. Moore v. United States ex rel. Lindmark, 46, 463. Moorhead, Ex parte, 35, 114. Moriarty, Ex parte, 116. Morgan Engineering Company v. Alliance Ma- chine Company, 477. Morgan, Ex parte, 77. Morgan Envelope Company v. Walton et al., 278, 614. Morley, Ex parte, 464. Morris v. J. M. Robinson, Norton and Com- pany, 582. Morrison, Ex parte, 12, 44. Morse, Ex parte, 27, 130. Morss v. Henkle, 224, 240. Mosher v. Tully and Clark, 394. Moss v. Blaisdell, 407, 436. Mothes, Ex parte, 135. Motsinger, Ex parte, 50, 131. Mount Carbon Company, Limited, The, Ex parte, 612. Mower v. Crisp and Copeland, 335. Mower v. Duell, Commissioner of Patents, 20, 135, 345. Moyers. E.x parte, 142. Mueller and Braunsdorf, Ex parte, 77, 522. Mraz, In re, 31. Muir, Ex parte. 524. Muller V. Lauber, 323, 439. Muller v. The Schuster Company, 445. Mulligan V. Tempest Salve Company, 363. Munro v. Alexander. 350. Munro v. Walker, 416. Munson, Ex parte, 4. 139. Munster v. Ashworth, 443. Mural Company, The v. National Lead Com- pany, 570. Murmann, Ex parte, 31. Murphy, Ex parte, 84. Murphy v. Borland, 229, 238. Murphy v. Meissner, 258, 290, 291. Murray, Ex parte. 137, 138. Myers, Ex parte, 5. 40, 41, 509. Myers v. Brown, 199, 200, 222. Myers v. Hammel, 200. Mygatt, Ex parte, 97, 106, 107, 467. Mygatt, In re, 56. 97, 106. N. N. K. Fairbank Co. v. Luckel, King & Cake Soap Co., 607. Naef, Ex parte. 4, 7, 9, 13, 19, 23, 110. Nash, Ex parte, 121. Nash Hardware Company, In re, 612. TABLE OF CASES. National Candy Company, The. In re, 542, 600. National Chemical Company, In re, 526. National Enameling and Stamping Company and Lalance & Grosjean, Ex parte, 462, 520. National Harrow Company v. Hench et al., 86. National Metallurgic Company, Assignee of Tom Cobb King v. Whitman et al., 152, 374. National Phonograph Company, Ex parte, 546. National Phonograph Company. In re, 406, 547, 551. National Railway Materials Company, The, In re, 168, 461. National Starch Manufacturing Company v. Duryea et al., 619. National Toilet Company, Ex parte, 608. Natural Food Company, The, v. Williams, 532, 547, 582. Naulty V. Cutler, 283, 390. Nave & McCord Mercantile Company, Ex parte, 554. Neill V. Commissioner of Patents, 180. Nelson, Ex parte, 69. Nelson v. Faucette, 328, 344. Nelson v. Felsing and Felsing v. Nelson, 150, 399, 504, 506. Nenninger, Ex parte, 135. Nestle and Anglo-Swiss Condensed Milk Com- pany, Ex parte, 523. Nestle & Anglo-Swiss Condensed Milk Com- pany V. Walter Baker & Company, Lim- ited, 592, 616. Neth and Tamplin v. Ohmer, 280, 304, 311. Neth and Tamplin v. Ohmer, and Ohmer v. Ohmer, 300. 333. Nettles, Ex parte, 37. Neuberth v. Lizotte, 274, 361. New England Gas and Coke Company, Ex parte, 456. New South Brewery and Ice Company, The, In re, 549. New York Woven Wire Mattress Company, The, In re, 509. Newbold, Ex parte, 10. Newcomb v. Lcmp, 73, 206, 211, 217. Newcomb v. Thomson, 217, 220. Newell v. Clifford v. Rose, 392, 397, 415. Newell V. Hubbard, 219, 410. Newell V. Rose, 197. Newman, Ex parte, 8, 534, 613. Newton, Ex parte, 549. Newton v. Woodward, 267, 329. Nichols and Shepard Company, Ex parte, 552. Nicholson, Ex parte, 60, 466. Nickel and Crane, Ex parte, 104. Nicolaus, Ex parte, 569, 613. Niedenfuhr, Ex parte, 24. Niedermeyer v. Walton, 205, 213, 224, 252. Niedringhaus v. Marquard v. McConnell, 224, 407, 408, 418. Niedich, Ex parte, 197. Nielson v. Bradshaw, 187, 283, 335, 393, 418, 421. Nimmy v. Commissioner of Patents, 482. Noble. Ex parte, 31. Noble V. Sessions, 269. Noel V. Ellis, 541, 542, 606. Nordcn v. Spaulding, 62, 190, 357, 370. Nordstrom, Ex parte, 45. "■ Norling v. Hayes, 333, 362, 400. Normand v. Krimmelbein, 174, 184, 271. North British Rubber Company v. Jandorf et al., 491. Northwestern Consolidated Milling Compar.V; The V. William Callam & Sons, 611. Norris v. Johnson, 213. Novotny, Ex parte, 37. Noyes, Ex parte. 50. Noycs, In re, 489. O. Oakes v. Young, 417. Oakley and Co. v. Babcock, 590. O'Brien v. Gale. Sr. v. Miller v. Zimmer v. Calderwood. 212, 213, 280. O'Brien v. Gale v. Zimmer v. Calderwood, 286. O'Connor, Ex parte, 39. O'Connell v. Schmidt, 258, 326, 330, 383, 386. O'Connor v. Vanderbilt, 173, 271. Ocumpaugh v. McElroy, 390. Ocumpaugh v. Norton. 157, 265, 342, 373, 374, 380. Office Specialty Manufacturing Company v. Fenton Metallic Manufacturing Company, 160. Ohio Garment Company, The, Ex parte, 569, 612. Ohlsen v. Harmer, 294. Ohmer v. Neth and Tamplin, 317. Old Lexington Club Distillery Company, The V. Kentucky Distilleries et al., 95. Oldham and Padbury v. Peck v. Clement v. Richards, 205. O'Leary. In re, 69. Olive Wheel Co., Ex parte, 603. Oliver, v. Felbel, 147, 180, 203, 325, 326, 389. Olsen, Ex parte, 149, 150. Onderdonk v. Parkes, 259. Opalla V. Hughes, 304. TABLE OF CASES. Opinion of the Attorney-General, 465. Orcutt, In re, 489. Orcutt V. McDonald and McDonald, 258, 298, 299. Orewilcr, Ex parte, 27. Orndoff, Ex parte, 40. O'Rourke v. Gillespie, 204, 414. Osborn v. Austin, 253, 328, 351, 396. Osbom V. Hotsapiller. 253, 328, 329, 374, 442, Osborne, Ex parte, 32, 38, 61, 81, 125. Osborne v. Armstrong, 191. Osborne v. Mitchell, 306. Ostergren et al. v. Tripler, 20, 194. 275, 321. Oswego Maize Products Co. v. National Starch Co., 532, 589. Otis V. Ingoldsby and Bowling, 181, 397, 505. Outcault V. The New York Herald Company, 411, 538, 580, 588. Overstrom, Ex parte, 137, 496. Oviatt and Dean, Ex parte, 12. Owens V. Richardson, Jr., 206. Oxnard and Baur, Ex parte, 121. Ozias V. Stimpson, 182. Ozo Remedy Company, The v. Carnrick & Co., Ltd., 572. P. J. Bowlin Liquor Company v. J. and J. Eager Company, 569, 592. P. W. Minor & Son, Ex parte, 545. Pacific Steam Whaling Company et al. v. Alaska Packers' Association, 162, 513. Page, Ex parte, 60. Paget V. Bugg, 359. Paige, Ex parte, 37. Painter v. Hall, 209, 215, 216, 245. Palestine Hebrew Wine Company v. Carmel Wine Company, 87, 571. Palmer and Thompson v. Bailey, 129, 191. Panama Canal Zone, In re, 469. Papendel v. Bunnell v. Reizenstein v. Gaisman V. Gillette, 230, 238. Paragon Malt Extract Company, Ex parte, 546. Parent, Ex parte, 124. Park V. Cain, 354. Park V. Davis, 318, 3.54. Parker, Holmes & Company, Ex parte, 542, 559, 602, 614. Parkes, Ex parte, 13, 18. Parkcs v. Lewis, 258, 310, 312, 344, 364, 433. Parkhurst, Ex parte, 45. Parkin and Parkin v. Riotte, 426. Parrish, Ex parte, 511. Patee v. Cook, 445. Patten v. Wiesenfeld, 355. Patterson. Ex parte. 166, 475. Paul V. Hess, 189, 273, 337, 373, 378, 382, 388, 4:'4, 441. 444. Paul V. Johnson, 327, 334, 336, 341. Pauling. Ex parte, 156. Payne. Ex parte, 161. Peak V. Brush, 432. Pearsall, In re, 446. Pearson Tobacco Company, Ex parte, 603. Peats, Ex parte. 551. Peck Brothers Company, Ex parte, 570. Peck, Ex parte, 130. 542. Peckham v. Price, 261, 298. Peerless Rubber Manufacturing Company v. Gorham Rubber Company, 591. Peirce, Ex parte, 26. Peirce v. Hallctt. 266, 358. Peirce v. Hiss, Jr.. 295. Pelton, Ex parte, 109, 118. Penn Electrical & Mfg. Co. v. Conroy, 507. Penn Tobacco Co., Ex parte, 536, 568, 612. Perfect Safety Paper Company, The, v. George La Monte & Son, 589. Perkins, Ex parte, 44, 132, 146, 478. Perrault v. Pierce, 407, 428. Perrussel v. Wichmann, 173. Perry & Huntoon v. Busse, 286. Perry, E.x parte, 142. Person, Ex parte, 129. Peter Schoenhofen Brewing Company, The V. The Maltine Company, 507, 601, 610. Peters Catridge Company, The v. The Win- chester Repeating Arms Company, 542. Peters v. Hopkins and Dement, 230. Peters v. Pike, Jr., 204. Petrie v. De Schweinitz, 334, 347, 367, 423, 440, 4.50. Pfatischer v. Buck, 438. Pfautz, Ex parte, 133. Pfingst V. Anderson, 206, 212, 235, 268. Pfister & Vogel Leather Company, Ex parte, 566. Phelps V. Wormley v. McCuUough, 177, 207, 403. Philadelphia Watch Case Company v. The Dueber Watch Case Manufacturing Com- pany V. The Keystone Watch Case Com- pany V. Byron L. Strasburger & Company, 571, 583. Philippine Islands, In re, 469. Phillips, Ex parte, 28, 79, 132. Phillips V. Scott, 224, 238. Phillips V. Senscnich, 27, 79, 241, 243, 274, 317, 322, 366. Phoenix Paint & Varnish Company v. John T. TABLE OF CASES. XXV11 Lewis & Bros. Company, 5G.5, 568, 584. Pilgrim Paper Co., In re, 25. Planten, J. R. (H. R. Planten substituted) v. Canton Pharmacy Company, 549, 601. Pickard v. Ashton and Curtis, 225, 278. Pickles, Ex parte. 111, 127. Pickles V. Aglar, 287. Pieper, Ex parte, 151. Pierce, Ex parte, 40, 285. Pietro, Ex parte, 563. Pietzner, Ex parte, 1, 12. Pihl V. Mersman, .'540. Pilgrim Paper Company, In re, 24. Pillsbury-Washburn Flour Mills Company, Limited et al. v. Eagle, 618. Pinder, Ex parte, 508. Pioneer Suspender Company v. Lewis Oppen- heimer's Sons, 537, 601. Piper, Ex parte, 95, 495. Pittsburgh Pump Company, Ex parte, 533, 551. Pittsburgh Valve, Foundry and Construction Company, Ex parte, 558, 573, 596. Planten v. Canton Pharmacy Company, 583. Piatt V. Shipley et al., 333, 339. Pledger, Jr., and Campbell, Ex parte, 144. Plimpton, Ex parte, 32. Plumley, Ex parte, 82, 120. Plumb, Ex parte, 78. Plumb V. New York, New Haven & Hartford Railroad Company et al., 470. Podlesak and Podlesak v. Mclnnerney, 82, 217, 258, 269, 273, 281, 292, 415, 441. Poe V. Scharf, 331. Pohle V. McKnight, 276, 383. Polar Knitting Mills, Ex parte, 599. Pool V. Dunn. 385. Poole V. Avery, 46, 179, 453. Pope and Mims v. McLean, 315. Post, Ex parte, 198. Potter V. Mcintosh, 214, 271, 363, 364, 411. Potter v. Ochs, 430, 439. Potter & Roziene, Ex parte, 549. Potter v. Tone, 389. Potter V. Van Vleck v. Thomson, 172, 232. Powell, Ex parte, 124. Power V. Proeger, 268. Powers, Ex parte, 503, 508. Powrie, Ex parte, 109. Pratt V. de Ferranti and Hamilton, 270, 362. Price V. Blackmore, 236. Price Flavoring Extract Co., Ex parte, 569. Priest. Ex parte, 57, 150. Prindle v. Brown, 352. Proctor, Ex parte, 16, 129. Prosser, Ex parte, 117. Protection of Spanish patents in the Philippine Islands, 469. Proutt V. Johnston and Johnston, 184. Pryor v. Ball v. Brand, 206, 212. Pugh, Ex parte, 27, 133. Pupin V. Rutin and Leblanc v. Stone, 152, 204, 231, 272, 423, 522. Pure Flavoring Extract Co., Ex parte, 613. Pym V. Hadaway, 179, 182, 228, 238, 246, 251, 280, 286, 393, 429. Quick V. McGee, 317. Quist V. Ostrom, 277, 319, 348, 376, 377. R. R. I. Sherman Manufacturing Company, Ex parte, 602. R. M. Rose Company, Ex parte, 565. R. Steinecke Company, Ex parte, 460. R. Thomas & Sons Compr.ny v. Electric Porce- lain and Manufacturing Company et al., 43, 257. 259, 376, 474. Rabsilber, Ex parte, 624. Ragona v. Harris, 226. Rainier Company, The, Ex parte, 596. Rail, Ex parte. 543. Ramsey, Ex parte. 111. Randall and Luck, Ex parte, 31. Randerson v. Hanna & Hanna, 430. Rappleye, Ex parte, 109, 125. Rat Biscuit Company, The, Ex parte, 547. Ratican, In re, 480. Raulct and Nicholson v. Adams, 177, 190, 191, 281, 357. Ravelli, Ex parte, 154. Raymond, Ex parte, 2, 4, 5, 12, 37, 511. Raymond v. Kitselman v. Somer, Somer, Somer, and Somer v. Claudin, 229. Rayburn v. Strain, 233. Read, Ex parte, 14. Read v. Scott, 196. 213, 502. Reagan. Ex parte, 161. Recklinghausen and Potter, Ex parte, 39. Reece v. Fenwick. 169, 172, 173. Reed Manufacturing Company, In re, 54. Rees, Ex parte, 1. Reese, Ex parte, 76. Reeve and Noyes, Ex parte, 58. Regina Music Box Company, Ex parte, 457. Reichenbach v. Kelley, 375. Reichert v. Brown, 239. Reid, Ex parte, 114, 124. Reim, In re, 73. TABLE OF CASES. Reiner v. Macphail. 185. Reis, Ex parte, 18. Reiss, Ex parte, 145. Remington, Ex parte, 105, 106. Reppeto V. Stephens, 427. Reute V. Elwell, 187, 366. Reynolds v. Bean, 314, 390, 427. Rhodes, Ex parte, 74, 466. Rhodes v. Rhodes, 437. Rice & Hochster v. Fishel, Nessler & Co., 527, 568, 578, 588. Richard, In re, 70. Richards. Ex parte, 7, 15, 165, 467, 497. Richards v. Burkholder, 346, 384. Richards v. Kletzker and Gossel, 205, 222, 223, 284. Richards v. Meissner, 303, 392. Richards v. Nickerson, 249. Richards v. Tracy, 172. Richardson, E.x parte, 2, 12. Richardson v. Humhrey, 305. Richmond, Ex parte, 512. Richter, Ex parte, 31, 116. Rickctts V. Ambruster and Beck, 429. Riddle, Ex parte, 320. Rider, Ex parte, 138. 511. Ridgway v. Tilyou, 313. Riegger v. Beierl, 20, 467. Ries, Ex parte. 13, 19. Ries V. Frick, 430. Ries V. Gould v. Pomeroy, 236. Ries V. Kirkegaard and Jebsen, 259, 294. Rietzel v. Harmatta, 242. Riker v. Law, 169. Riley, Ex parte. 75. Rinsche v. Sandherr, 217, 254. Rippen, Ex parte, 459. Ritter v. Krakau, 279. Ritter v. Krakau and Connor, 181, 196, 337, 391, 428, 438. Roadhouse, Ex parte, 132. Robert v. Keasbey Company v. Portland Ce- raentfabrik Hemnioor, 589. Robert Smith Ale Brewing Company, The v. Beadleston & Woerz, 571, 574. Roberts v. Bachelle, 395. Roberts v. Webster, 436. Robertson, Sanderson & Company, Ltd. v. Charles Dennehy & Company, 548, 617. Robin V. Muller and Bonnet, 155, 177, 277, 278, 323, 450. Robins, Jr. v. Titus and Titus, 319. Robinson, Ex parte. 25, 26, 62, 401. Robinson v. Copeland, 171, 182, 183, 195, 214, 860, 302, 334, 342, 356. Robinson v. McCormick, 300, 367. Robinson v. Seelinger, 256, 326, 314, 373, 424, 495. Robinson v. Thresher, 187, 380, 384. Robinson v. Townsend v. Copeland, 263, 289, 391, 395, 410. Robischung v. Handiges, 345. Roby, Ex parte, 125. Rochling, Ex parte, 623. Rockstroh v. Warnock, 224, 226. Rodenbaugh and Laurentz, Ex parte, 120. Roe V. Hanson, 328, 369. Rogers & Havard, Ex parte, 546. Rogers and Winslow, Ex parte, 474. Rogers, Ex parte, 15, 24, 71. Rolfe, In re, 409. Rolfe V. Hoffman, 330, 337, 350, 371, 387. Rolfe V. Kaisling v. Lecper, 351, 388. Rolfe V. Leeper, 397. Rolfe V. Taylor, 418, 426, 436. Romunder, Ex parte, 26. Rosback, Ex parte, 66, 93. Roschach v. Walker, 153, 155. Rose Shoe Manufacturing Company, The v. A. A. Rosenbush & Co., 579. Rose V. Clifford and Newell, 331. Roselius, In re, 486. Rosell V. Allen, 272, 450. Rosenheim and Mombel, Ex parte, 129. Rosenweig v. Forbes, 523, 581. Roth V. Brown and Stillman, 204. Rouse, Ex parte, 119. Rousseau v. Brown, 47, 154, 323, 324, 447. Roussel, Ex parte, 151. Rowand, Ex parte, 66. Rowe V. Blodgett v. Clapp, 98, 100, 103. Rowe V. Brinkmann, 229, 239, 333. Royal Medicine Company, Ex parte, 458. Royce v. Kempshall, 73, 263, 291, 426, 436. Ruckrich and Bode, Ex parte, 457. Ruete V. Elwell, 272. Rumford Chemical Works v. Hygienic Chem- ical Works of New Jersey, 520. Rundle, E.x parte, 94. Ruppert, Ex parte, 458, 459. Russ, Ex parte, 497. Russell, Ex parte, 44, 48, 53, 75, 147, 318, 394, 478, 497. Russell, In re, 489. Russell V. Asencio, 289. Ruthenburg, Ex parte, 7, 20. Ruthven v. Christensen, 439. Ryan, Ex parte, 502. Ryder v. Brown v. Tripp and McMeans v. White, 236. Ryder v. White, 314. TABLE OF CASES. S. S. C. Herbst Importing Company, Ex parte. 609. S. C. Herbst Importing Company, In re, 602, 610. S. Hecht & Son, Ex parte, 524. S. S. Pierce Co. v. Church & Dwight Com- pany, 584. S. Sternau & Company, Ex parte, 546. Sacks, Ex parte, 17, 556. Sachs V. Hundhausen, 265, 270, 426. Sack, Ex parte, 11. Sadtler v. Carmichael v. Smith, 205, 242, 245, 253, 270, 301. Safety Remedy Company, The, Ex parte, 572. Safety Remedy Company, The. In re. 535. Saint Anthony MilHng & Elevator Company. The, Ex parte, 524, 552. Samstag, Ex parte, 145. Samuel Winslow Skate Mfg. Co., The, Ex parte, 459. Samuelson v. Flanders, 221, 223. Sandage v. Dean v. Wright v. McKenzie, 438. Sanders v. Hawthorne v. Hoyt, 172. Sanders v. Melvin. 268. Sandman, Ex parte, 145, 498. Sandstrom, Ex parte, 64. Sanford Mills v. Aveyard, 405. Sanitary Knitting Co., Ex parte, 562. Sarfert, In re, 267, 498. Sarfert v. Meyer, 177, 350, 355, 402, 406. Sarrazin v. W. R. Irby Cigar and Tobacco Company, Limited, 525, 528. Sassin, Ex parte, 53. Satzman & Forman, Ex parte, 611. Sauers Milling Company, Ex parte, 547. Saunders, Jr., Ex parte, 63. Saunders v. Miller, 21, 265. Saxlehner v. Eisner & Mendelson Company, 535, 552, 570, 584, 607. Saxlehner v. Wagner et al., 557. Schartow v. Schleicher, 333. Scheckner. Ex parte, 75. Schellenbach v. Harris, 72. Schmertz v. Appert, 322. Schirmer v. Lindemann and Stock, 233. Schmid, Ex parte, 141. Schmidmer, Ex parte, 60. Schmidt and Tanody, Ex parte, 15. Schmidt, Ex parte, 37, 38, 124, 135, 143. Schmidt v. Clark, 322, 425. Schmohl, Ex parte, 102. Schneider v. Driggs, 577. Schneider v. The Union Distilling Co., 574. Schofield V. McGovern v. Woods, 219. Schoonmaker v. Sintz, 306. Schoshusen, Ex parte, 518. Schrader, Ex parte, 37. Schraubstadter, Ex parte, 99, 102, 113, 473. Schraubstadter, In re, 96, 102, 104. Schroeder v. Wageley and Stocke, 298, 325, 444. Schubert v. Munro, 194, 218, 241. Schuler v. Barnes v. Swartwout, 248. Schultz, Ex parte, 509. Scliulze, Ex parte, 51, 199. Schupphaus, Ex parte, 235, 401. Schupphaus v. Stevens, 362. Schuster Co., The v. Muller, 564, 576. Schutte V. Rice, 362. Schwarzschild and Sulzberger Company, Ex parte, 607. Schweitzer, Ex parte, 78, 80, 145. Scott and Deals, Ex parte, 112. Scott and Scott, Executors of the Estate of Walter Scott, deceased v. Cruse, 333. Scott, Ex parte, 29, 32, 51, 83, 94, 114, 125, 128. 243, 481. Scott, In re, 30, 197, 481. Scott Paper Company, Ex parte, 548, 350. Scott V. Badeau. 218. Scott V. Emmet and Hewlett, 174, 175. Scott V. Hayes and Berger. 227. Scott V. Laas and Sponenburg, 332, 423. Scott V. Scott, 287, 288, 418. 421. Scott V. Southgate, 186, 358. Seabury, Ex parte, 481. Seabury, In re. 478, 481, 490. Seabury v. Johnson, Ex parte, 569, 605. Seager, Ex parte, 544. Seaman v. Brooks, 308. Seamless Rubber Company, The, In re, 549. Seamless Rubber Company, The v. The Star Rubber Co., 242, 575. Sears, Ex parte, 39, 476. Seeberger v. Dodge, 194, 334, 337, 342, 683. Seeberger v. Russel, 310, 330. 370, 382. Seeley v. Baldwin, 77, 273. Segelhorst, Ex parte. 140. Selden, In re, 8. Selden v. Gerts v. Palmer, 216. Seiler v. Goldberg, 464. Seisser, Ex parte, 513. Seitzinger, Ex parte, 130, 131. Selle, Ex parte, 34. Sellers, Ex parte, 3. Sendelbach v. Gillette, 188, 289, 326. Serrell v. Donnelly. 413, 416. Setter, In re, 408. Severy, Ex parte, 36, 139. Shaffer v. Dolan, 188, 261, 316, 388, 395. TABLE OF CASES. Shannon, Ward & Company, Ex parte, 548. Shantz V. Oslxirn, 304. Sharer v. McHcnry, 188, 222, 405, 440. Shaver et a!, v. Heller & Merz Company, 541, 565. 629. Shaver, Ex parte, 63. Shaver v. Dilg and Fowler, 170. Shaw and Welty Shirt Co., The v. The Quaker City Shirt Mfg. Co., 429, 438. Shaw, Ex parte, 50, 511. Shaw v. Gaily, 302. Shearman, Ex parte, 134. Sheffield Car Co. v. Buda Foundry & Mfg. Co., 471. Sheffield Mill & Elevator Company, Ex parte, 612. Sheldon, In re, 474, 489. Shellenberger v. Andrews, 251. Shepler, Ex parte, 76, 80, 81. Sheppard v. Webb, 186, 190, 224. Sherman, Ex parte, 97, 104. Sherman, In re, 104. Sherwood v. Drewsen, 196, 266, 322, 367. Sherwood v. Horton, Cato & Co., 523, 577, 580, 600. Shevill et al., Ex parte, 118. Shiels v. Lawrence et al, 232, 277, 287, 405, 409. Shiner v. Edison, 351, 417. Shone, Ex parte, 51. Shrum v. Baumgarten, 251. Shuman v. Beall, Jr., 292. Sibley Soap Company v. Lambert Pharmacal Company, 572, 574, 580. Sides. Ex parte, 458. Sieber & Trussell Mfg. Co. v. Chicago Binder & File Co., 489, 565. Siebert v. Bloomberg, 408. Siloam Springs Water Company, Ex parte, 556. Silsby, Ex parte, 140. Silver Lake Company v. Samson Cordage Works, 525, 529, 603. Silver V. Eustis, 306. Silverman v. Hendrickson, 195, 210, 327, 355, 368, 372, 416, 423, 467. Simon, Ex parte, 5. Simonds, Ex parte, 320. Simonds Rolling-Machine Company v. Hat- horn Manufacturing Company et al., 41, 158, 473. Sinclair v. Engel, 361. Sindingchristensen, Ex parte, 479. Singer Manufacturing Company v. Cramer, 28, 83, 84, 158, 159, 492, 514. Sinnamahoning Powder Mfg. Co., Ex parte, 549, 597, 603. Sirl, Ex parte, 169. Skinner v. Carpenter. 229. 508. Skinner v. Murray, 359. Slaughter, Ex parte. 143. Slaughter v. Halle, 266, 331, 353, 369. Sleepy Eye Milling Company, Ex parte, 543, 558. Sleepy Eye Milling Company v. C. F. Blanke Tea and Coflfee Company, 528, 534, 561, 564, 577. SlinglufF and Heichert v. Maynard, 362. Small, Ex parte, 39, 604. Smith & Hemenway Company, Ex parte, 528, 610. Smith and Hoyland, Ex parte, 28. Smith and Kimble, Ex parte, 449. Smith and Wickes v. Emerson v. Sanders, 304, 313. Smith, Ex parte. 3, 103, 126, 127, 153, 479, 546. Smith V. Brooks, 379, 429. Smith V. Carmichael, 170, 172, 281, 295. Smith V. Duell, Commissioner of Patents, 472, 478, 482, 623. Smith V. Foley v. Anderson v. Smith, 286, 425. Smith V. Fox, 232. Smith V. Goodyear Dental Vulcanite Co., 88. Smith V. Ingram, 312. Smith V. Irland, 365. Smith V. Locklin, 393. Smith V. Slocum, 247. Smith V. Warner, 249. Smith-Briscoe Shoe Company, Ex parte, 608. Smoot Drug Company, The v. Pittsburgh Pharmacal Company v. Gertzen v. Gris- wold. 583. Smyth, Ex parte, 30. Snider v. Bunnell, 58, 413, 414. Snyder, Ex parte. Ill, 608. Snyder v. Woodward, 409. Sobey V. Holsclaw, 179, 181, 223, 274, 279, 360, 364. Soc.'a Prod.ti Chim.co Farmac.a A. Bertelli H C, Ex parte, 563. Societe pour le Commerce de The K & C Popoflf Freres, Ex parte, 541. Sodafoam Baking Powder Company, Ex parte, 607. Soley V. Peck v. Clement v. Richards v. Meiss- ner, 309. Sonnenburg and Helbig, Ex parte, 135. Sorenson, Ex parte. 511. Sorlle, Ex parte, 26. Sparkes v. Small, 64, 68. Spaulding v. Norden, 190, 265, 370. Spayd, Ex parte, 543. Sperry, Ex parte, 14. TABLE OF CASES. xxxi Spiller, Ex parte, 11. Spindler v. Nathan and Bolze, 438. Spitteler and Krische, In re, 87. Sponsel V. Darling, 314. Spoo, Ex parte, 545. Spoon, Ex parte, 198. Springborn, Ex parte, 136. Springer, Ex parte, 45. Sroufe & Company v. Crown Distilleries Com- pany, 577. St. Amand, Ex parte, 51. St. Louis Candy Company, Ex parte, 545. St. Louis Corset Company v. Williamson Cor- set and Brace Company, et al., 83. Stacey, Ex parte. 119. Stanbon v. Howe, Warren, and Furber, 422. Standard Adding Machine Co., In re, 56. Standard Computing Scale Co., In re. v. Stimp- son, 22. Standard Fashion Company, Ex parte, 540, 559. Standard Import Co., Ltd. v. New Orleans Im- port Co., Ltd., 397. Standard Paint Company v. Trinidad Asphalt Manufacturing Company, 524, 549, 621. Standard Plunger Elevator Company, In re, 22. Standard Underground Cable Company, Ex parte, 559, 560, 601, 604. Standard Underground Cable Company, In re, 604. Standard Varnish Works v. David B. Crockett Company, The, 614. Stanford, Ex parte, 66, 67. Stapleton v. Kinney, 340. Star Brewery Company v. Val Blatz Brewing Company, 592. Star Distillery Company, The, Ex parte, 527, 528, 609. Starkey, Ex parte, 502, 512. Starkey, In re, 71, 502. Starr, Ex parte, 143, 146. Stauft v. Reeder, 195. Stead, Ex parte, 18. Stebbins, Ex parte, 3. Steck, Ex parte, 100, 108. Stephens, Ex parte, 144. Steinmetz, Ex parte, 110, 123. Steinmetz v. Hewitt, 251, 421. Steinmetz v. Thomas, 167, 231, 441. Stephen F. Whitman & Son, 622. Stevenot, Ex parte, 85. Stevens, Ex parte, 516. Stevens v. Patterson, 209. Stevenson, Ex parte. 117, 147. Steward et al. v. American Lava Company, et al., 30. Stier, ex parte, 145. StiflF V. Galbraith, .S23. Stimpson. Ex parte, 80, 129. Stocker, Ex parte, 464. Stocking, Ex parte, 32. Stollwerck Brothers, Inc. v. Lucerna Anglo- Swiss Milk Chocolate Company v. Hoff- man, 575. Stone, Ex parte, 40. Stone V. Hutin and Leblanc, 419, 438. Stone V. Fessenden, 163. Stone V. Pupin, 83, 258. Storer v. Barr, 328. Stork Company v. Kabo Corset Company. 592. Story V. Criswell. 218. Stratton and Claremont, Ex parte, 464. Strauss, Ex parte, 460. Streat v. Freckleton, 272, 295. Streator Metal Stamping Company, Ex parte, 541. Strobel & Wilken Company, Ex parte, 93. Strong and Garfield Company, Ex parte, 617. Stroud V. Miller, 421, 435. Struble, Ex parte, 410. Struble V. Young, 227, 228, 358, 420. 397. Struble v. Young and Townsend v. Sawyer, Stuart, Ex parte, 143, 402. Stuckgold, Ex parte, 4. Stuhmer, Ex parte, 561. StupakoiT v. Johnson, 204, 414. Sturgis v. Hopewell, 233. Stuver, Ex parte, 110. Sturtevant et al.. Ex parte, 129, 131. Sturtevant and Sturtevant, Ex parte, 17, 126. Success Company, The, In re, 599. Sues, Ex parte, 12. Sugden and Pidgin v. Laganke and Smith r. Marshall. 229. Sullivan v. Thomson, 250. Summers. Ex parte. 94. Summers v. Hart, 248, 251. Sumner Iron Works, Ex parte, 549, 617. Sutton, Ex parte, 604, 608. Sutton and Steele, Ex parte, 198. Sutton, Steele, and Steele, Ex parte, 175. Sutter v. McDonnell v. Jolly v. Neff, 394. Swain v. Holyoke Machine Co., 498. Swan and Finch Company, Ex parte, 607. Swantusch, Ex parte, 32. Swartwout v. Barnes, 259. Swift, Ex parte, 198. Swift V. Crawford v. Baltzer, 220. Swihart. In re, 168. TABLE OF CASES. Swihart v. Mauldin, 2S8, 321, 336, 372, 380. Swinburne, In re, 153. Sydeman and Meade v. Thoma, 368. Sylvestersen, Ex parte, 135. T. T. M. Kildow Cigar Company v. The George B. Sprague Cigar Company, 551. Tabor, Ex parte. 597. Tabulating Machine Company, The v. Durand, 159. Talbot V. Monell, 275, 336, 435. TaHaferro. Ex parte, 65, 67. Tallmadge, Ex parte, 566. Tallman, 100. Taupenot, In re, 55. Taussig V. Taussig, 574. Taylor & Lockett, Ex parte, 524. Taylor and Taylor v. Lowrie, 358. Taylor, Ex parte. 87, 516. Taylor, In re, 492. Taylor v. Oilman, 345, 347, 385. Taylor v. Kinsman v. Kintner v. Potter, 283, 302. Taylor v. Westinghouse, 343. Teller, Ex parte, 49, 467. Templin v. Sergeant, 199, 241. Tennessee Brewing Company, Ex parte, 459. Thayer, Ex parte, 15, 141, 582. Theodor and Carl Weil, Ex parte, 510. Thibodeau v. Hildreth, 291, 299. Thicm V. Bowen, 221, 232. Thomas, Ex parte, 10, 202, 509. Thomas v. Trissel, 307, 350, 369. Thomson, Ex parte. 26, 479, 484, 488. Thomson, In re 25, 472, 476, 494. Thompson, Ex parte, 7, 135, 149, 198, 267, 472. Thompson v. Smith, 374. Thomson v. Weston, 348. Thomson Wood Fnishing Company, The v. Rinald Brothers, 536. Thomson Houston Electric Co. v. Union Rail- way Co., 61. Thorpe v. White and White, 354. Thorsten von Zweibergk, Ex parte, 466. ThuUen v. Townsend, 238. Thullen v. Young and Townsend, 184, 207, 211, 223. Thurman, Ex parte, 171. Thurston, Ex parte, 479, 489. Thurston, In re, 472, 482, 488. Tietgens & Robertson, Ex parte, 552. Tiffany, Ex parte, 11, 36. Tillman, Ex parte, 468. Tilly V. Holland Medicine Company, 583. Tizley, Ex parte, 318. Topping V. Price, 230. Tournier, Ex parte, 97, 103, 107, 108, 402, 4S0. Tournier, In re, 103, 108. Townsend. Ex parte, 149. Townsend v. Copeland and Robinson, 175, 176, 219. 224. 235, 283. Townsend v. Copeland v. Robinson, 244. Townsend v. Corey, 417. Townsend v. Ehret. 184, 215. Townsend v. Ehret v. Young v. Struble, 200, 224, 229, 236. Townsend v. Thullen, 361. Townsend v. Thullen and Thullen v. Young, 229. Townsend v. Thullen v. Young, 229. Tracy, Ex parte, 68 Tracy et a1. v. Leslie. 366, 371. Trade Marks. Rights of Residents of Porto- Rico, Cuba and Philippine Islands to Reg- ister. 468. Traudt. Ex parte, 595. Traver v. Brown, 375. Trebon, Ex parte, 5. Trevette, Ex parte, 34, 49, 138, 484. Trevette v. Dexter, 184, 224, 231. Tripler v. Linde, 323, 324, 356. Tripp V. Wolff V. Jones, 276, 430. Trissell v. Thomas, 341, 381. Tropenas, In re. 63. Trufant v. Prindle v. Brown, 288, 290, 333, 351, 357, 421, 426. Tschirner, Ex parte, 32, 114. Tucker, Ex parte, 107. Turnbull v. Curtis. 191, 264, 327, 334, 337, 338, 418, 445. Turner, Ex parte, 68, 130, 131, 509. Turner v. Bensinger. 427. Turner v. Macloskie, 229. Tuttle, Ex parte, 14, 34, 80, 113. Tyler, Ex parte, 110, 116, 118. Tyler v. Arnold, 405. Tyler v. Kelch, 89, 191, 296, 359. Tyler v. St. Amand, 108, 186, 423. Tymeson and Borland, Ex parte, 124, 127. Tyson, Ex parte, 116, 145. U. Udell-Predock Manufacturing Company r. The Udell Works, 523, 586. Uebelacker v. Brill, 282. Uhlig, Ex parte. 111, 118, 127. Ullman & Co. and Gin Phosphate Co. v. Blu- menthal & Bickert. 60. Ullman Einstein Company, The v. C. H. Graves & Sons, 574. TABLE OF CASES. Underwood Tyrewriter Company, Ex parte, 602. Underwood Typewriter Company v. A. B. Dick Company, 581, 592. Union Carbide Company, Ex parte, 599. Union Carbide Co. v. American Carbide Co., 470, 552. 560. Union Distilling Company, The v. Schneider, 208, 454. Union Fibre Company, Ex parte, 548, 561. Union Typewriter Co. v. L. C. Smith & Bros. Typewriter Co. et al., 166. United Dictionary Company v. G. & C. Mer- riam Company. 91. United States Brewing Company, Ex parte, 556. United States ex rel. Bernardin v. Duell, Com- missioner of Patents, 45, 452, 461, 519. United States ex rel. Bronson Company et al. V. Duell. Commissioner of Patents, 451. United States ex rel. Buffalo Pitts Company V. Duell, Commissioner of Patents, 461. United States ex rel. George A. Lowry and Planters Compress Company v. Frederick I. Allen, Commissioner of Patents, 178. United States ex rel. Hodgins v. Simpson, 461. United States ex rel. Lang v. Moore, Commis- sioner of Patents, 463, 464. United States ex rel. New York Condensed Milk Company et al. v. Duell, Commis- sioner of Patents, 461. United States ex rel. Stapleton v. Duell, Com- missioner of Patents, 451, 461. United States ex rel. Wedderburn v. Bliss, Secretary of the Interior, 71. United States, The v. Johnson, 460. United States of America, The ex rel. Boyer V. Moore, 65. United States of America ex rel. National Phonograph Co. v. Allen, Commissioner of Patents, 461, 498, 521. United States of America ex rel. Stapleton v. Duell, Commissioner of Patents, 519. United States ex rel. Steinmetz v. Allen, Com- missioner of Patents, 44, 51, ill, 112, 113, 122, 454, 462, 515. United States of America ex rel. The Bron- son Company et al. v. Duell, Commissioner of Patents, 584, 600, 603. United States of America, The, ex rel. The Newcomb Motor Company v. Moore, Commissioner of Patents, 216, 217, 463, 519. United States of America, The ex rel. Tuttle V. Allen, Commissioner of Patents, 8, 462. United States of America v. Antikamoia Chemical Company, 459. United States of America v. Patterson, 496. United States Graphite Company, The v. Bora- hard, 584. United States Playing Card Company, Ex parte, 454. 555. United States Playing Card Company, The t. C. M. Clark Publishing Company, 576, 622. United States Repair and Guaranty Company V. Assyrian Asphalt Company, 41, 84, 485. United States Sanitary Manufacturing Com- pany, Ex parte, 541. U. S. Standard Voting Machine Company, In re, 168. United States Wood Preserving Company, In re, 409. Utica Drop Forge and Tool Co., Ex parte, 560. Vacuum Specialty Company, In re, 23. Vail. Ex parte, 1. Valiquet, Ex parte, 35. \'aliquet v. Johnson, 246, 278. \'alley v. Wurts. 432. 434. \'an Auken v. Osborne v. Harrison v. Canfield and Van Auken, 207, 225. Van Ausdal, Ex parte, 148. Van Eyck, Ex parte, 561, 595. Van Horn & Sawtell, Ex parte, 598. VanYorx. Ex parte, 287. Vance Shoe Company, Ex parte, 560. Vanden Bergh & Company v. Belmont Distil- lery Company, 527, 570. Vanden Bergh & Company v. Blankenheym & Nolet, 568, 578. Vanderveld v. Smith, 230, 237. Vaughen et al.. Ex parte, 11. Vegiard dit Labonte, Ex parte, 118. Verge, Ex parte, 507. Verley, Ex parte, 486, 487. Verley, In re, 487. Very, Ex parte, 125. Velvril Company, Limited, Ex parte, 585. Victor Talking Machine Co. v. American Graphophone Co., 429. Vidal, Ex parte, 128. \'iele V. Cummings, 270. Vincke. Ex parte. 80. Viniello, Ex parte, 10, 162. Voight V. Hope, 342. 441. Vogel and Son, Ex parte, 604, 607, 608. Volkman and Truax, Ex parte, 471. Volkmann and Truax, In re, 491. TABLE OF CASES. Von Kellar v. Hayden v. Kruh v. Jackson, 275, ■419. Von Recklinghausen v. Dempster, 21. Von Recklinghausen v. Dempster, 257. Voncanon, Ex parte, 105. Vose, Ex parte, 139. Votey, Ex parte, 271, 279. Votey V. Gaily, 207, 254. Votey V. Wuest, Jr. v. Doman, 271. Vreeland v. Fessenden v. Schloemilch, 236. 237. W. W. A. Gaines and Company v. C. A. Knecht and Son, 528, 587, 614. W. A. Gaines and Co. v. Carlcton Importation Company, 523. 529, 614, 615. W. Bingham Company, The v. G. W. Bradley's Sons, 584. W. H. Jones & Co. v. Carlton Importation Company, 609. W. B. Bclnap & Co., Ex parte. 595. Wm. A. Coombs Milling Company v. Barber Milling Company, 575, 580. Wm. A. Coombs Milling Company v. The Dewey Bros. Company, 592. Wm. A. Rogers. Limited v. International Sil- ver Co., 589, 596. 598, 601, 612, 616. Wm. T. Reynolds & Co., 458. Wm. Wrigley, Jr. & Co. v. Norris. 533, 582. Wade, Ex parte, 50. Wadsworth, Ex parte, 517. Wagner, Ex parte, 3, 14, 140, 513. Wagner. In re, 475. Wainwright, Ex parte, 144, 145. Wainwright v. Parker. 88. Wales V. Waterbury Manufacturing Company, 94. Walker and Walker v. Gilchrist, 177. Walker, Ex parte, 33, 138, 144. Walker v. Brunhoff, 219, 244. Wallace, Ex parte, 113. Walrath Ex parte, 168. Walsh V. Hallbauer, 189, 246, 413, .505. Walter Baker & Company, Limited v. Hawley and Hoops, 600. Walter Baker & Company, Limited v. Harri- son, 568, 583. Walters, Ex parte, 41. Walton, Ex parte, 14. Walworth Manufacturing Company, Ex parte, 21. Ward V. Midgley, 430. Wareham, Ex parte, 130. Warman and Winter, Ex parte, 49. Warner, Ex parte, 54, 166. Warner v. Mead, 208, 244. Warner v. Searle and Hereth Company, 561, 570. Warner v. Smith, 345, 366, 493. Warren, Ex parte, 3, 75. Warren. In re, 492. Warren Paint Co., The v. Reeve & Co. v. Davidson & Knowles Co., 569. Warren Webster & Co. v. C. A. Dunham Co., 474. Waterman, Ex parte, 100, 105, 128, 142, 624. Waterman, In re, 603. Waterproofing Company, The, Ex parte, 669, 612. Waters, Ex parte. 44. 137. Wayne County Preserving Company v. The Burt Olney Canning Company, 611. Watson V. Thomas, 188, 191, 341, 374, 392. Walters. Ex parte, 10. Wayne Poultry Tonic Co., Ex parte, 534. Webb V. Levedahl. 304. Webber. Ex parte, 45. Weber and Barry, Jr., Ex parte, 471. Weber and Swaller, Ex parte, 624. Weber, Ex parte, 407. Weber v. Flather, 288, 422, 429. Weber v. Hall, 415. Webster, Ex parte, 61. Weeks v. Dale, 294. Wehner, Ex parte, 118. Weidmann v. Knup, 294. Weihman, Ex parte, 105. Weil, Ex parte, 554, 559. Weil-Haskell Company v. GriflFon Company, 600. Weingarten Brothers, Ex parte, 595. Weintraub v. Hewitt, 220, 362, 429. Weintraub v. Hewitt and Rogers, 419. Weiss, In re, 474, 477. Weissenthanner v. Goltstein, 320. Weissner, Ex parte, 99. Weithaler. Ex parte. 150. Welch, Ex parte. 28, 119, 120, 121, 482, 488, 518. Welch, In re. 483. Wellcome v. Baum, 590. Wellington, Ex parte, 518. Wellman and Wellman, Ex parte, 57. Wellman, Ex parte, 107, 144, 446. Wells v. Packer, 205, 250. Welsbach Light Company v. American Incan- descent Company and Berlinicke, 42, 158, 519. Welsbach Light Company v. Apollo Incandes- cent Gas Light Company et al., 155. TABLE OF CASES. Welsbach Light Company v. The Sunlight In- candescent Gas Lamp Company, 494. Welsbach Light Company v. Union Incandes- cent Light Company, 159. Wende v. Horinc, 403, 404, 420. Wentworth v. Sutton, Steele & Steele, 234. Wentzel, Ex parte, 3, 19. Wenzelmann and Overholt, Ex parte, 409. Wenzelmann and Overholt, In re, 46, 182. Werckmeister v. American Tobacco Company, 91. Werk V. McCarron, McCarron, and McCarron, 427. Werner, Ex parte, 606. Werner, In re, 257. Wert V. Borst and Groscop, 205, 411, 413. West, Ex parte, 544. Western Electric Company, Ex parte, 550. Westinghouse, Ex parte, 18. Westinghouse Air Brake Company v. Great Northern Railway Company et al., 152, 453. Westinghouse Electric & Manufacturing Com- pany V. AUis-Chalmers, 470. Westinghouse Electric & Manufacturing Com- pany V. Ohio Brass Co., 2. Westinghouse Electric & Manufacturing Com- pany V. Triumph Electric Company, 90, 97, 490. Weston, Ex parte, 120. Weston, In re, 4T4, 484. Weston V. Benecke, 350. Weston V. Jewell, 406. Wethey v. Roberts, 177, 204, 249, 414. Wetmore and Jenner, In re, 24. Weyant v. Brown v. Sittmann, 291. Wheeler v. Palmros, 172, 176. Wheeler v. Seeberger. 220, 496. Wheildon v. Tench, 268. Whipple V. Sharp. 95, 227, 284, 314, 377. Whitall V. Gillespie v. Blair, 314. White, Ex parte, 36, 50, 516. White, In re, 486. White and Medford, Ex parte, 481, 489. White V. Hewitt and Nolen, 71, 442. White V. Powell. 255. White V. Thomson. 206, 222. White-Smith Music Publishing Company v. Apollo Company, 91. Whitelaw v. Eckhardt v. Koch, 412. Whiting, Ex parte, 12. Whitlock and Huson v. Scott, 252. Whitman Grocery Company, Ex parte, 544. Whitman v. Hearne et al., 324, 447. Whitman v. King, 389, 442. Whitney, Ex parte, 19, 127, 134, 200. Whitney v. Gibson, 303. Whitney v. Howard, 289. Whitney v. Howard v. Stanley and Stanley. 297, 388. Whitson et al v. Columbia Phonograph Com- pany, 67, 158, 162. Whittemore Bros. & Co. v. C. L. Hauthaway & Sons, Incorporated, 531, 532, 537, 581. Whittingham v. Automatic Switch Company, 586. Wick, Ex parte, 35, 449. Wickers and Furlong, Ex parte, 62, 451. Wickers and Furlong, In re, 402, 485. Wickers and Furlong v. McKee, 243, 361, 367, 387. Wickers and Furlong v. Weinwurm, 175, 219, 241, 429. Wickert, Ex parte, 456. Wiens, Ex parte, 76. Wieser, Ex parte, 143. Wiessner, Ex parte, 236. Wightman v. Rothenstein, 427. Wiland, Ex parte, 61. Wilcomb V. Lasher, 214, 233, 252, 413, 427. Wilcox, Ex parte, 133. Wilcox & Gibbs Sewing Machine Company r. Merrow Machine Company, 83, 470, 477, 516. Wilcox V. Newton, 234. Wilder, In re, 404. Wilderman v. Simm, 184. Wilkerson, Ex parte. 109, 118, 119. Wilkin V. Cleveland, 264, 291, 425. Wilkinson v. Junggren, 218. Willard Chemical Company, Ex parte, 568, 601, 608. Wilier, Ex parte, 36. William Connors Paint Mfg. Company, The, Ex parte, 540, 370. William Connors Paint Mfg. Company, In re, 541. William H. Baker, Syracuse, Inc. v. Walter Baker and Company, 588. William Lea & Sons Company. The v. H. C. Cole & Con-pany. 573, 376. 583. William Schotten & Company, E.x parte, 545. Williams et al. v. Mitchell et al., 540, 542, 620. Williams, Ex parte. 50. 109, 110, 125, 471. Williams, In re, 73, 471. Williams v. Foyer and Kurz, 303. Williams v. Liberman, 306, 307, 341. Williams v. Ogle. 187. Williams v. Peri, 119, 352. Williams v. Webster v. Sprague, 209. Williamson, E.x parte, 70, 116. Willits, Ex parte, 30. XXXVl TABLE OF CASES. Willowcrtft Shops, The, Ex parte. 599. Wimmer, Ex parte, 9. Winand v. The P. J. Drur>- Company, 587. Winchester Repeating Arms Company, The v. The Peters Cartridge Company, 548. Windhorst & Company, Ex parte, 617. Windsor Milling and Elevator Company, The V. Brunner, 574. Winslow V. Austin, 287, 440. Winsor v. Struble, 279. Winter and Eichberg v. Latour, 324, 451. Winter v. Slick v. Vollkommer, 231, 237, 376, 385, 407. Winton v. Jeffrey. 251. 357. Wirt, Ex parte, 37. Wishart and Seidel, Ex parte, 76. Wixford, Ex parte, 56. Wlost, Ex parte, 154. Wolf Brothers and Company, The v. Hamilton Brown Shoe Company, 525, 579, 588, 609. Wolfenden v. Price, 87, 202. Wolski et al.. Ex parte, 465. Wolfersperger and Moran. Ex parte, 129. Woltereck, Ex parte, 486. Woltereck, In re, 486. Wolverine Manufacturing Company, Ex parte, 557. Wood V. Hinchman, 571. Wood V. Pfister, 209. Woodbridge v. Conrad, 209. Woodbridge v. Winship, 259, 433. Woods, Ex parte, 5, 15. Woods V. Poor, 293, 328, 332, 344. Woods V. Waddell, 242, 401, 414, 452. Woodward, Ex parte, 40. Woodward v. Kennedy, 302, 303, 308, 316. Woodward v. Newton. 205. 210, 215, 216, 221. 331. Woolwine, Ex parte, 524. Woodworth Ex parte, 23. 448. Wool worth, Ex parte, 544. Worcester Brewing Corporation v. Rueter & Company, 532, 533, 545, 575. Worden, Ex parte. 119. Wright, Ex parte. 486, 513. Wright, In re, 486. Wright and Stebbins, Ex parte, 9. Wright and Stebbins v. Church, 249. Wright and Stebbins v. Hansen, 411. Wright & Taylor et al.. In re, 569, 605. Wright & Taylor v. Bluthenthal & Bickart v. Mayer, Sons & Company v. Cushman & Company, 574, 582. Wright v. Lorenz, 100, 101, 103, 205, 347. Wurtz, Ex parte, 69, 449. Wurz, Jr., In re, 449. Wyman v. Donnelly, 336, 369, 386. Yale & Towne Manufacturing Company, The, Ex parte, 585. Yankauer, Yankauer, and Yankauer, Ex parte, 24. Yarnall v. Pope, 415. Yonkers Brewery v. Her and Bergweger, 571, 573. York v. Hartman, 583. Young, Ex parte. 609. Young v. Donnelly, 270, 439. Young v. Eick, 78, 253. Young, Smith, Field Company, Ex parte, 605, 611. Young v. Struble, 358. Young V. Townsend v. Thullen, 191. Younger, Ex parte, 150. Z. Zacharias, Ex parte, 515. Zehrbach. Ex parte, 149. Zimmer v. Horton, 261, 350. Zimmerman v. Zamboni, 215. Zinn, Ex parte, 459. Zwiebel, Ex parte, 134. DIGEST OF DECISIONS. [Decisions of the Secretary of the Interior are indicated by a dagger (f) ; Opinions of the Attorney-General are indicated by a double dagger (J) ; of the Supreme Court of the Dis- trict of Columbia by the letter (n) ; of the United States District Court by the letter (b) ; of the United States Circuit Courts by the letter (c) ; of the United States Circuit Court of Appeals by the letter (rf) ; of the Court of Appeals of the District of Columbia by a star (*) ; and of the Supreme Court of the United States by two stars (**).] ABANDONMENT OF APPLICATION. (See Abandoned Applications.) I. In General. II. Delay of Applicant. (a) In General. (b) Excusable. (c) Not E.rcusable. III. Response of Applicant. (a) In General. (b) Sufficient. (c) Insufficient. IV. Statutory Term. (a) In General. (b) Effect of Susf'cnsion. V. Effect of Various Delays. VI. Failure to Complete Application. VII. Formal. I. In General. 1. Where no action whatever is taken by the applicant within the time fixed by law, the primary examiner is empowered to exercise no discretion upon the question of abandon- ment, but acts in a ministerial capacity, and therefore a letter asking him to reconsider his action holding the case abandoned is inef- fective and improper. Ex parte Vail, C. D. 1905, 115 O. G. 1583. 2. Where no action is received in a case within the year allowed by law, the examiner is without discretion and must regard the ease as abandoned unless and until the commis- sioner considers the excuse for the delay and determines whether or not it was unavoid- able. Ex parte Rees, C. D. 1905, 116 O. G. 2007. 3. Where the question of abandonment of an application for failure to act responsively 1 depends upon the correctness of the examin- er's conclusion that claims in a proposed amendment are drawn to independent inven- tions, Held (1) that the question of inde- pendence of invention is not reviewable on petition (Steinmetz v. Allen, C. D. 1904, 703, 109 O. G. 549), and (2) that this question should at no time be reviewed upon either pe- tition or appeal, except after reconsideration by the examiner in connection with the specifi- cation of errors required by Rule 69. Ex parte Gaily, C. D. 1903, 115 O. G. 802. 4. The question of abandonment of an ap- plication decided by a former commissioner will not be reviewed except upon a clear and satisfactory showing that the commissioner was misled by the applicant as to the facts, and mere ex f'arte affidavits cannot be regard- ed as such showing. Kinsman v. Strohm, C. D. 1906, 120 O. G. 2127. . 5. The action of the office holding an appli- cation to be abandoned is, in effect, a rejec- tion. If that action is erroneous, the applicant has his remedy by way of appeal, a The United States of America, ex rel. Tuttle v. Allen, 126 O. G. 760. II. Delay of Applicant. (a) In General. 6. It is the right of an applicant to wait until the last of the time allowed him by law for action ; but when he continually does so he is not in a position to asic for leniency in the application of the rule against delay. E.x parte Pietzner, C. D. 1903, 103 O. G. 2171. ^ 7. The fact that the applicant is barred from filing a new application is not in itself a rea- son for holding that the application is not abandoned. It furnishes a reason why the ABANDONMENT OF APPLICATION, II, (b). application should not be permitted to become abandoned ; but the rule against delay applies to such a case as well as to others. Id. 8. No application is abandoned by mere delay beyond the year allowed by law for ac- tion; but the office is justified in treating it and referring to it as abandoned unless and until it is shown to the satisfaction of the commissioner that the delay was unavoidable. Ex parte Raymond, 2d, C. D. 1903, 104 O. G. 439. ^ 9. After the year allowed by law has ex- pired without action by the applicant the com- missioner has no authority to revive the case to await action by the applicant in the future. He is authorized to determine the question of unavoidable delay only in connection with an action taken. Id. «,■ 10. In connection with a petition to revive should be made in excuse for the delay, and it should state all of the reasons for all of the delay up to the time when the proper action called for by the rules is taken. Id. 11. The word unavoidable in the statute means more than that to act would have been inconvenient, and the mere plea that the in- ventor was busy upon other matters cannot be accepted as showing that the delay was unavoidable. Ex parte Marconi, C. D. 1904, 108 O. G. 796. 12. A delay of four j-ears in acting upon an application is not to be excused except upon the clearest and most satisfactory showing that it was unavoidable. Ex parte Gironcoli, C. D. 1906, 120 O. G. 2753. V 13. The question whether delay in acting upon a case was unavoidable can be deter- mined only after action is taken, and ther»- fore a petition not accompanied by an action must be denied. Ex parte Richardson, C. D. 1906, 120 O. G. 2753. ^ 14. Supposed error in the examiner's action is no excuse for delay in responding beyond the year allowed by law. Id. 15. Where an applicant attempts to excuse the delay in the prosecution of his case on the ground that its subject-matter is domi- nated by certain claims in a copending appli- cation and that he considered it advisable to press the broad application to allowance be- fore letting this application go to issue. Held, that the conduct of applicant in the prosecu- tion of his case has not been such as to en- title him to leniency in the application of the rule that amendments must be such as the condition of the case requires and that in electing to prosecute his application in this manner he must assume all risk as to the suf- ficiency of his actions. Id. Ex parte Leich, C. L. 1907, 126 O. G. 1066. 16. Where it appears that for several years action upon the case has been intentionally delayed until the latter part of the period al- lowed by law within which to take such ac- tion, failure to file an amendment within the statutory period after the last office action can be considered unavoidable only in view of cir- cumstances of a compelling nature which pre- vented such action. Ex parte Ciolfi, C. D. 1908, 137 O. G. 1238. 17. The remedy by bill in equity to obtain a patent which has been refused by the patent office given by Revised Statutes, section 4915 (U. vS. Comp. St., 1901, p. 3392), is a part of the application for the patent and is governed by the rule as to laches declared by Revised Statutes, section 4894 (U. S. Comp. St., 1901, p. 3384), which provides that the failure of an applicant to prosecute his application within one year after any action therein shall be re- garded as an abandonment, unless it be shown that the delay was unavoidable, c Westing- house Electric & Mfg. et al. v. Ohio Brass Co., C. D. 1911, 169 O. G. 205. (b) Excusable. 18. Where all parts of an application save the fee were filed April 9, 1904, but in ac- knowledging the filing this office gave the date as April 12, and the applicant subsequently paid the fee on April 12, 1905, Held, that the case is not abandoned. Ex parte Matthews, C. D. 1905, 117 O. G. 2631. 19- Where it clearly appears that the attor- ney prepared and forwarded a proper amend- ment in ample time, but it was not received by this office, and upon discovering that fact the attorney prepared and filed a second amendment, Held, that the case is not abaa- doned although the second amendment was received after the expiration of the year al- lowed for action. Ex parte Eluere, C. D. 1905, 117 O. G. 2635. 20. Where an inventor prosecuting his own case failed to receive the original office ac- tion and where a copy subsequently mailed at his request reached him when he was ill, from which illness he never recovered, and where the assignees took steps to prosecute the case as soon as they were able after the death of the inventor, but the amendment filed by them ABANDONMENT OF APPLICATION, II, (c). 3 was not received until after the expiration of the time allowed by law, Held, that the delay was unavoidable and that the case is not aban- doned. Ex parte Sellers, C. D. 1905, 118 O. G. 270. 21. Where upon petition from holding that an application is abandoned it is pointed out that the practice under which the application had been held abandoned was an extension of prior practice and a surprise to applicant and it is further shown that the applicant had been diligently engaged upon the case and it appears that responsive action was taken as soon as the applicant was finally convinced of what was required. Held, that the delay in taking such action may be considered unavoidable, and that the application is not abandoned. Ex parte Wagner, C. D. 1005, 119 O. G. 965. 22. Where delay beyond the year allowed for action is slight and the application prior to such delay had been prosecuted vigorous- ly and in good faith and the applicant had reason to suppose that his action was filed in time, the delay may be regarded as unavoid- able. Ex parte Wentzel, 131 O. G. 941. 23. Delay in prosecuting a case occasioned by the fact that the attorney's file of the ap- plication was placed in the file of an interfer- ence involving a divisional application which was kept in a part of the attorney's office other than that where his application files were kept, so that his attention was not called to it by his clerk until after the expiration of the year, Held, unavoidable. Ex parte Cur- tis, 138 O. G. 767. (c) .Vo.' Excusable. 24. Where an applicant's claims were re- jected and a letter was subsequently received requesting a re-examination of one of said claims, but not referring to the others, and where this one claim, as also the other claims, was finally rejected for the reasons and on the references before cited, and where, after waiting nearly two years, applicant filed an amendment canceling all the claims and sub- stituting others without making any showing as to cause of delay, Held, that the applica- tion was abandoned. E.x parte Stebbins, C. D. 1899, 88 O. G. 1335. 25. Where after the final rejection of the claims a party persists in presenting inadmis- sible amendments and makes no attempt to file an appeal, as the condition of the case re- quires, until eleven days before the year ex- pires and through a mistake or clerical error then fails to file a proper appeal until after the time has expired. Held, that the delay was not unavoidable and a revival is not warrant- ed. Ex parte Warren, C. D. 1901, 96 O. G. 2410. 2G. Where a party intentionally postpones proper action until the last of the time al- lowed, he assumes the risk from accidents, mistakes, and other circumstances which may then prevent action. Id. 27. To warrant the revival of an abandoned application, it must be shown that the delay was unavoidable for the entire period. Id. 28. In considering the question whether the delay in the prosecution of a case is unavoid- able the office must look to the conduct of the attorney who is empowered to act, and if there was neglect by him a revival of the case is not warranted, notwithstanding the desire of the applicant that the case be prop- erly prosecuted. Ex parte Collins, C. D. 1901, 97 O. G. 1372. 29. Where action on a case is not taken within the year allowed by law and as an ex- cuse for the delay the attorney says that a clerical error was made in the date of ex- piration of the time entered in his office cal- endar. Held, that the excuse is insufficient and that the case is abandoned. Ex parte Beccher, C. D. 1902, 101 O. G. 1132. 30. Where a party voluntarily postpones ac- tion upon an application in order to experi- ment with the invention before determining whether to proceed and is thereafter unable to give attention to the matter because of other business engagements until after the year has expired. Held, that the delay was not unavoidable and that the application is abandoned. Ex parte Smith, C. D. 1902, 101 O. G. 1369. 31. Where an applicant intentionally post- pones action until the last part of the year allowed by law and is then prevented from acting by reason of sickness, Held, that the delay is not unavoidable and that the appli- cation is abandoned. Ex parte McElroy, C. D. 1902, 101 O. G. 2823. 32. The law says that the delay in acting upon a case must be unavoidable and not merely that the last few weeks of the delay must be unavoidable. Id. 33. Where an applicant voluntarily fails to act upon his application because it is barred by foreign patents and in his opinion no ac- tion which he could take would serve any use- ABANDONMENT OF APPLICATION, II, (c). ful purpose, Held, that the delay cannot be considered unavoidable and the case revived after the bar is removed by an amendment to the law. Ex parte Casalonga, C. D. 11)1)3, 105 O. G. 261. 34. Applications which were barred by for- eign patents and were permitted to become abandoned cannot be revived merely because an amendment to the law has removed the bar. Ex parte Casalonga, C. D. 1003, 105 O. G. 261. Id. 35. Where claims arc finally rejected and the applicant presents an argument, but does not appeal within the year fixed by law. Held, that the contention that the final rejection was premature cannot save the case from abandon- ment whether well founded or not. Ex parte Munson, C. D. 100.1, 105 O. G. 264. 36. An alleged error in the action of the examiner furnishes no reason for ignoring that action and is no excuse for the failure to either take the action called for therein or have it set aside as irregular within the time fixed by law. Id. 37. Where the office requires a new drawing in the case and no response is received from the applicant for four years, Held, that the delay is not to be excused upon the allegation that a drawing was prepared and mailed to the office. Ex parte Stuckgold, C. D. 1903, 106 O. G. 544. 38. It is the duty of applicants not merely to prepare the papers called for by the office actions, but to see that they arc received by the office. If he receives no acknowledgment from the office within a reasonable time after mailing the paper, it is his duty to make in- quiries and correct the mistake which appar- ently exists. Id. 39. There is no reasonable excuse for wait- ing four years to receive an acknowledgment from this office of the receipt of a paper said to have been sent to it. It was evident long before that time that the paper had not been received. Id. 40. The fact that the applicant is barred from filing a new application is no reason for holding that the application is not abandoned where there has been delay beyond the year allowed by law. Id. 41. Where an applicant failed to act upon his case because it was barred by foreign patents, and when the bar was removed by the act of March 3, 1903, he failed to act for eight months because he didn't know the law was amended, Held, that the delay was not un- avoidable and the case is abandoned. Ex parte Hcnke, C. D. 1903, 107 O. G. 2528. 42. Where there was a delay of more than sixteen months in acting upon a case and it is said that for the first seven months the at- torneys were waiting for an opportunity to consult the inventor and during the balance of the time were waiting for instructions from him and no reason appears why he did not give the instructions except that he was busy. Held, that the delay was not unavoidable and the case is abandoned. Ex parte Marconi, C. n. 1004, 108 O. G. 796. 43. Where it is said that intelligent action could not be taken by the attorneys without consulting the inventor, but no attempt was made to consult him for several months, and after being consulted he did not furnish the information required or make a real effort to do so. Held, that the delay was not unavoid- able. Id. 44. Where it appears that through a clerical error the attorneys' records indicated that the year allowed by law for action expired at a later date than the actual date and the error was not discovered until an amendment was filed supposedly within the year, but actually after that time. Held, that the application is abandoned. Ex parte Raymond, C. D. 1004, 100 O. G. 1608. 45. Where the applicant postpones action until what he supposes is the latter part of the time allowed him and he then discovers that there was a mistake in his records and the time has already expired, Held, that al- though the mistake may have been unavoid- able the delay was not unavoidable, and the case is abandoned. Id. 46. The allegation of a clerical error in the last office action furnishes no excuse for delay in responding unless it is made to appear that the error misled the applicant and caused the delay. Ex parte Naef, C. D. 1905, 115 O. G. 1583. 47. Delay in acting upon an application is not to be excused for the purpose of permit- ting the applicant to devise means for making the alleged invention practical and useful. The law does not contemplate the filing of applica- tions upon incomplete or useless inventions. Ex parte Murphy, C. D. 1905, 115 O. G. 1848. 48. Delay in prosecution of an application beyond the time allowed by statute is not to be excused by the allegation that the applicant wished time to improve his invention. The improvements can not be included in the ABANDONMENT OF APPLICATION, II, (c). pending case. Ex parte Raymond, C. D. 1905, 118 O. G. 269. 49. Where the attorney makes a note as to when the time allowed by law for action expires and inadvertently gets the date wrong and delays action until that time, which is after the expiration of the year. Held, that the case is abandoned and that the excuse for the delay is insufficient. Ex parte Hallot, C. D. 190.-), 118 O. G. 592. 50. Where there was delay of four years after the last office action and it was shown that the applicant had become sick within this time and died and that the widow had suffered great trouble and expense, but there was nothing to show why the applica- tion was not amended during the first six months following the office action, in which time the applicant was well, or why the attor- ney in the case did not act within the succeed- ing six months in spite of the applicant's ill- ness. Held, that the case was abandoned. Ex parte Simon, C. D. 1905, 118 O. G. 8:!8. 51. Where the applicant intentionally delays acting until what he supposed was the last day of the year allowed for that purpose and through mistake in the attorney's office such action is not, in fact, filed until one day after said year had expired, Held, that the delay cannot be considered unavoidable and that the case is abandoned. Ex parte Clausen, C. D. 1905, 118 O. G. 838. 52. Unavoidable delay is not made out by the statement that the attorney's copy of the papers in the application was submitted to prospective buyers, and upon its return to the attorney's office it was mislaid and was not again discovered until after the expiration of the time allowed for action. Ex parte Block, C. D. 1905, 119 O. G. 963. 53. Where it appears from an unverified statement that an amendment was mailed in Berlin in time to reach this office before the expiration of the year allowed by law for tak- ing action, but the amendment was not actual- ly received until two days after the expiration of the year, Held, that the showing is insuf- ficient, as the statement is not verified, and it seems probable that action was intentionally delayed. Ex parte Botzky, C. D. 1906, 121 O. G. 338. 54. Where the year for taking action ex- pired September 2, 1905, and it appears that on August 1", 1905, the inventor, who was abroad, mailed a letter of instructions to the attorney, which letter was mislaid and was not again called to the attorney's attention until October 26, at which time it was found that the instructions were incomplete and further communication with the inventor was necessary, and no amendment of the applica- tion was filed until November 18, 1905, Held, that the delay was not unavoidable. Ex parte Marburg, C. D. 1906, 121 O. G. 687. 55. Held, that failure to receive an office action will not excuse failure to respond where the applicant received notice of said action and took no steps to secure a copy thereof. Ex parte Woods, C. D. 1906, 121 O. G. 689. 56. Where action on an application was de- layed for nearly three years, the showing that the delay was unavoidable must be very com- plete and satisfactory. Ex parte Ilgner, C. D. 1906, 122 O. G. 1721. 57. Where prior to the expiration of the time allowed for action the attorney notified the assignee that an amendment was required and neither the assignee nor the inventor took any action whatever until nearly seventeen months thereafter and no satisfactory reason is given for the delay, Held, that the delay was not unavoidable. Id. 58. A delay of more than one year after the discovery that the application was aban- doned, for which no excuse is given, cannot be considered unavoidable. Id. 59. Where the showing of unavoidable delay presented to secure the revival of an applica- tion apparently abandoned through absence of proper action within the period allowed for the same relates to matters outside of the office and is not verified and no proper action is filed and the excuse for delay does not cover the entire period, the delay will not be held unavoidable. Ex parte Myers, C. D. 1906, 123 O. G. 1663. 60. Where action is intentionally delayed until near the close of the period allowed for action and through accident the action is not then taken, but is further delayed until after that period has expired, the failure to act within the proper period is not unavoidable, and the application is abandoned. Ex parte Klussmann, C. D. 1906, 123 O. G. 2311. 61. Confusion upon the attorney's docket by reason of office action suggesting claims for interference is not acceptable as a showing of unavoidable delay in responding to the prior office action. Ex parte Hess, C. D. 1907, 126 O. G. 3041. 6 ABANDONMENT OF APPLICATION, II, (c). 62. The fact tliat tlie examiner in the regu- lar course of business did not reach applicant's case and give him notice of the insufficiency of his action until after the year allowed for action had expired does not relieve applicant of the necessity of taking responsive action within the year required by the rules or shift the responsibility for failure to comply with the rules to the patent office. Ex parte Mid- gely, C. D. 1907, 127 O. G. l.'>77. 63. Where the delay has not been termi- nated by the filing of an action fully respon- sive to the last rejection and where no good reason appears why such an action should not have been filed within the year allowed there- for, Held, that the delay was not unavoidable and that the application is abandoned. Id. 64. Tlie failure of the attorney to act with- in the statutory period is not excused by the allegation that he did not act earlier because not authorized by the applicant to do so, where it does not appear that he could not have been earlier authorized to proceed. Ex parte Trebon, C. D. 1907, 127 O. G. 281. ">. 65. The delay of more than one year is re- sponding to the office action is not unavoid- able in those cases where action might have been taken had reasonable efforts been exer- cised to that end at any time within the period following the office action. Id. 66. .applications are abandoned without re- gard to what the intention of the applicant may have been in case of delay for more than one year in responding to the office action un- less the delay was unavoidable. Id. 67. Where the action taken near the close of the year was not a proper action. Held, that the applicant has a perfect right to delay action until the close of the year allowed by law therefor; but in doing so he assumes the risk of any mistake in the character of the ac- tion. Ex parte Grant, C. D. 1907, 128 O. G. 8.-)5. 68. Since earlier action by applicant would have permitted correction of the mistake with- in the year and since it does not appear that earlier action could not have been taken, the failure to duly prosecute the application can- not be regarded as unavoidable, and it is therefore abandoned under the statute. Id. 69. Where it is alleged that the case was in- advertently crossed off the attorney's docket, and therefore overlooked until after the pe- riod for action had expired, but it does not appear that there was any intention to respond to the last oflice action until near the close of tlie year allowed therefor or that action could not have been taken in the earlier part of this period had it been so desired. Held, that the delay was not unavoidable and the case is abandoned. Ex parte Duryea, C. D. 1907, 128 O. G. 1291. 70. The fact that the oflSce did not suggest claims from a copending application does not render applicant's delay in prosecuting his case unavoidable. E.\ parte McKee, C. D. 1907, 130 O. G. 980. 71. The fact that an applicant who has al- lowed an application to lapse by failure to prosecute becomes involved in an interfer- ence on a subsequently filed application in no way shows that the delay in prosecuting the earlier application was unavoidable. Ex parte Davis, C. D. 1908, 137 O. G. 2222. 72. Where an applicant delays action on an application beyond the statutory period in order to prevent another partly from secur- ing access thereto by reason of its being the parent case of an application involved in in- terference with sucli party, Held, that the fail- ure to act was not unavoidable within the meaning of section 4894 of the Revised Stat- utes and that the application is abandoned. Ex parte Dilg and Fowler, Jr., C. D. 1908, 132 O. G. 1837. 73. The fact that the attorney of record did not receive instructions from the agent of the applicant, who resides abroad, in time to amend the application within one year from the date of the last office action. Held, insuf- ficient to show that the delay was unavoid- able within the meaning of section 4894, Re- vised Statutes, in the absence of any showing that instructions were necessary or that any request for such instructions was made by the attorney of record. Ex parte Bohn, C. D. 1911, 169 O. G. 701. 74. When one who is registered to practice before the patent office accepts the appoint- ment as attorney from a foreign applicant, the entire responsibility for the prosecution of the case rests upon the attorney so ap- pointed, and he cannot shift that responsibil- ity to the foreign correspondent, who so far as shown by the record, is not concerned with the application. Id. 75. Where an application is formerly aban- doned in favor of a second application, the fact that a certain construction was inadver- tently omitted from the latter and that the entry of an amendment disclosing the same was refused admission on the ground that it ABANDONMENT OF APPLICATION, III, (a). involved new matter does not render the delay in the prosecution of the former unavoidable. Ex parte Hagey, C. D. 1911, 173 O. G. 287. 76. An amendment directing the cancela- tion of finally-rejected claims and the presen- tation of new claims in lieu thereof, unaccom- panied by a showing under Rule 68, Held, not responsive prosecution, and where no other action was taken within the year following the final rejection. Held, that the application is abandoned. Ex parte Hodge, C. D. 1911, 173 O. G. 1079. III. Response of Applicant. (a) III General. 77. The statute authorizes a revival of an abandoned application only where it is shown to the satisfaction of the commissioner that the delay has been unavoidable, and therefore the existence of a bar to the filing of a new application does not alone warrant the revival of any case. Such a bar merely justifies re- solving doubts in the applicant's favor. Ex parte Bohleche, C. D. 1901, 97 O. G. 2743. 78. Abandonment is not established by al- leged delays in the patent ofiice where the ap- plicant in each instance took the necessary action within the two years allowed him by statute within which to act. The law deter- mines the measure of the applicant's rights, and the courts cannot exact any degree of dil- igence other than compliance with the statu- tory provisions, official regulations, and de- partmental regulations. If congress thinks too long a time is allowed, it should change the law. Crown Cork & Seal Co. of Baltimore City v. Aluminum Stopper Co. of Baltimore City et al, C. D. 1901, 96 O. G. 2573. 79. The propriety or sufficiency of the ac- tion required by the rules has reference to its extent as well as to its subject-matter. It must be an action made in good faith, with the purpose and effect of making a substantial ad- vance toward closing the prosecution of th» case. (Citing ex parte Vaughen et al, ante, 161. 97 O. G. 957.) Ex parte Kuper, C. D. 1601, 97 O. G. 2981. V 80. As evidence that the actions in this case were not taken in good faith with the purpose and expectation of advancing the prosecu- tion, judicial notice is taken of the procedure in many other applications filed by the same applicant and the same attorney. Ex parte Bassett, C. D. 1902, 98 O. G. 2174. 81. A case cannot be revived by a change in practice after it becomes abandoned. The question whether a particular action is such as the condition of the case requires must be determined from the rules and practice in force at the time. Ex parte Thompson, C. D. 1904, 113 O. G. 2504. 82. Where action is taken on a case within the statutory period, but the examiner holds that it is insufficient to save the case from abandonment, it is proper to ask for reconsid- eration, but such request should be made with diligence. Ex parte Naef, C. D. 1905, 115 O. G. 1583. 83. The question whether an amendment presented was such proper action as the con- dition of the case required must be deter- mined by the practice of the office in force at the time, and it is not affected by a subse- quent change of practice. Ex parte Naef, C. D. 1905, 115 O. G. 2135. 84. Where applicant's attorneys place the case in condition for final action and final ac- tion is given, the applicant cannot secure an extension of the time allowed by law by revok- ing the power of attorney and filing a request for further explanation, even though such re- quest is filed within the year. Ex parte Cazin, C. D. 1906, 110 O. G. 660. 85. Where claims are placed under rejection, an applicant is not excused from making a proper response to said rejection merely be- cause the claims had at one time been regard- ed by the examiner as allowable. Ex parte Ruthenburg, C. D. 1906, 121 O. G. 337. 86. A strained construction should not be placed upon an amendment in order that it may save the application from abandonment, but it should be construed according to the intent of the applicant as determined from a consideration of the whole instrument. Ex parte Richards, C. D. 1906, 124 O. G. 627. 87. Where affidavits are filed to the effect that an error in an amendment was due to a stenographer's failure to write the amendment as directed, but the affidavits contain no state- ment relative to the precise nature of the mis- take and do not show that the intended action would have been responsive, Held, that the showing is insufficient to warrant favorable action on a petition that the applicant's action We regarded as responsive. Id. V 88. Where the delay over the year permitted for action was slight and there is doubt as to whether the entire delay was unavoidable. ABANDONMENT OF APPLICATION, III, (a), (b). and where the petition was accompanied by an amendment which places the case in condi- tion for allowance, I/cId, that the doubt will be resolved in the applicant's favor. Id. 89. Where after final requirement of di- vision numerous letters and petitions are filed in regard thereto, but no appeal is taken or compliance had within the ensuing year. Held, that it is not clear that the actions taken could prevent the operation of the statute as to abandonment, a The United States of .Amer- ica, ex rel. Tuttle v. Allen, Commissioner of Patents, C. D. 1907, 126 O. G. 760. 90. An amendment which is otherwise re- sponsive to an action by the office is not ren- dered unresponsive by reason of the fact that it includes a claim to an independent inven- tion, claims for which were previously can- celed upon requirement for division. In such cases the examiner should require the can- celation of such claim on the ground that it covers an invention different from that orig- inally elected, and the amendment should otherwise receive action as though such clain^ were not present Ex parte Gaily, C. D. 1908, 133 O. G. 991. 91. Where an applicant cancels claims to an independent invention upon requirement for division and just within the year allowed by law for action responds to a rejection by amending the rejected claims and adding a series of new claims, one of which is drawt^ to the independent invention, the amendment should be entered and a requirement should be made that the reinserted claim be canceled on the ground that applicant was bound by his original election, and at the same time ac- tion should be given on the merits of the claims of the invention elected. Id. 92. Where the claims of an application have been rejected and within the year allowed for action the applicant, in lieu of an oath under Rule 75, files a paper calling attention to cer- tain testimony taken in an interference in- volving the application of which the applica- tion containing the rejected claims was a divi- sion, upon which reliance is placed to show prior invention, and the examiner does not object to the competency of the testimony, but regards it as insufficient, the application is not abandoned through lack of proper prosecu- tion. The sufficiency of the testimony is a question of merits, on which the applicant has a right to the opinions of the various ap- pellate tribunals. Ex parte Newman, C. D. 1908, 13.5 O. G. 1122. 1/93. Where the commissioner decided that an amendment filed within the time fixed by the statute was not responsive and entered an order holding the application abandoned, Held, that such order "is within the purview of the statutes providing for appeals from the commissioner's decisions." *In re Selden, C. D. 1911, 164 O. G. 741. "V 94. Where action was taken by the appli- cant within the time fixed by the statute, but it was decided by the commissioner that such action was not fully responsive to the last office action. Held, that "the facts being ad- mitted, the question of abandonment became one of law and is not governed by the same rule applicable to cases where it is sought to review the exercise of discretion on the part o/ the commissioner. *Id. " 95. On an appeal from a decision of the examiners-in-chief holding claims unpatent- able twenty-one new claims were presented for the consideration of the commissioner, who held that these claims might be admitted if amended in accordance with certain sug- gestions made in his decision affirming the decision of the examiners-in-chief as to all but three of the appealed claims. Subsequent- ly amendments were submitted containing such claims and eleven others, which amend- ments were considered by the primary ex- aminer. After several actions by the office and the applicant the commissioner entered an order holding the application abandoned on the ground that applicant had not com- plied with the decision of the commissioner within the time allowed by section 4894, Re- vised Statutes. Held, that the terms of the decision permitting the reopening of the case having been complied with and the amend- ment having been entered and considered, ap- plicant "cannot be said to have failed to prose- cute the application within the meaning of the statute merely because he added claims not expressly authorized by the commission- er." *Id. ■J (b) Sufficient. 96. On January 19, 1897, the examiner re- jected claims on references and required divi- sion. In response the applicants filed affidavits to overcome the references, but did not di- vide. The examiner refused to consider the affidavits on the ground that applicants' ac- tion was not completely responsive to the last official action in that the requirement of divi- ABANDONMENT OF APPLICATION, III, (b). 9 sion had not been complied with. After some correspondence on the subject the examiner stated in a letter of January 23, 1899, that the application had become abandoned on January 19, 1899. Held, that the filing of the affidavits in order to avoid the references is responsive to the action rejecting claims, and is such action as the condition of the case requires and saves it from abandonment. Ex parte Write and Stebbins, C. D. 1899, 88 O. G. 1161. 97. .A.ction by the applicants made in good faith and which is such action as the condi- tion of the case requires is sufficient to save it from abandonment, although it is not com- pletely responsive to every requirement made. (Ex parte Todd, C. D. 1889, 217, 49 O. G. 732, cited.) Id, 98. Where division is required and the claims are rejected and the applicant amends the claims in the effort to avoid the references and presents an argument upon the question of division within the time required by law, Held, that the application is not abandoned. Ex parte Chamberlain, C. D. 1902, 101 O. G. 447. 99. An applicant may accept the ruling of the office as to some of its requirements and at the same time controvert the ruling as to others, and when he does so, treating all re- quirements, his action cannot be objected to as insufficient. Ex parte Naef, C. D. 1902, 100 O. G. 2601. 100. Where a proper and substantial amend- ment is filed within the time fixed by law, Held, that it cannot be regarded as insufficient to save the case from abandonment because the examiner is of the opinion that it should be supported by a supplemental oath. Ex parte Yerdon, C. D. 1902, 101 O. G. 1830. 101. Where the examiner requires division and within the year fixed by law the applicant presents an argument pointing out wherein he thinks the examiner is wrong, Held, that the application is not abandoned. Ex parte Love- joy, C. D. 1904, 108 O. G. 1053. 102. Where, upon requirement of division, election was made and after rejection of the elected claims amendment was made shifting ground, which amendment was entered and acted upon, the claims being rejected upon references. Held, that as the office had ac- cepted and acted upon an amendment filed within a year from the preceding office ac- tion, and fully responsible thereto the case cannot properly be held to have become aban- doned. Meden v. Curtis, C. D. 1905, 117 O. G. 1795. 103. Where it appears that an amendment was filed in an application within the year al- lowed by law, but that it was informal in that it sought to amend an amendatory clause, which is prohibited by Rule 74, and no supplementary oath, which was considered necessary by the examiner, was filed with the amendment. Held, that the amendment as originally filed, notwithstanding its informalities, was suf- ficiently responsive to the action to prevent abandonment of the application. Ex parte Gaylord, C. D. 1905, 117 O. G. 2366. 104. Where upon the last day of the year fol- lowing final rejection the applicant filed an amendment to the case and an appeal to the examiners-in-chief, Held, that the amendment does not nullify the appeal nor the appeal the amendment and that the case is not aban- doned. The examiner holding the amendment inadmissible should proceed to answer the appeal. Ex parte Bach, C. D. 1905, 118 O. G. 1363. 105. Where the applicant filed an appeal within one year after the final rejection and thereafter filed a paper in which it was "tem- porarily withdrawn" for the purpose of con- sidering a question as to the regularity of the examiner's action, Held, that the case is not abandoned. Ex parte Dieterle, C. D. 1905, 118 O. G. 1685. 106. Where an amendment is filed after an action on the merits and no reasons accom- pany that amendment in support of a request for reconsideration of claims not amended, but an argument is subsequently filed setting forth the reason of the applicant why, in his opinion, the office should recede from its first rejection, and both the amendment and argu- ment are filed within one year from the date of the rejection, Held, that the actions taken by the applicant were sufficient to entitled him to further consideration. Ex parte Wimmer, C. D. 1905, 115 O. G. 1585. \/ 107. Where the examiner in his letter finally rejecting the claims of an application raised for the first time a number of formal objec- tions and the applicant replied by curing the objections in part and traversing the exam- iner's action as to the remainder, whereupon the examiner repeated the objections >iot cured and the applicant subsequently cured the remaining formal objections. Held, that 10 ABANDONMENT OF APPLICATION, III, (b) the application is not abandoned, notwith- standing that the applicant's last action above referred to was made more than a year after the final rejection of the claims. Ex parte Thomas, C. D. 190G, 124 O. G. 623. \/ 108. Where the examiner acts on formal ob- jections after the final rejection of the claims, Held, that the applicant is entitled to a year from the examiner's action in which to cure the objections, and in the absence of any rule or practice to the contrary he should likewise be allowed this year in which to appeal to the exaniiners-in-chief or to cancel the rejected claims. Id. 109. VVhere two days before the expiration of the year following the action of the ex- aminer notifying applicant that his claims stood finally rejected under Rule 133 be filed an amendment, in which he canceled part of the claims involved in the interference, in- serted one new claim, and requested a recon- sideration of the office action on the ground that the subject-matter of the uncanceled claims was not shown in the application of the successful party, Held, that the amend- ment is a proper one, and the case is not abandoned. Ex parte Lyon, C. D. 1906, 124 O. G. 2903. 110. On October 16, 190.--., the examiner final- ly rejected certain claims. The applicant on June 6, 1906, filed an amendment substituting new claims for those rejected, which amend- ment was refused entry by the examiner in view of the final rejection. On September 24, 1906, applicant filed a request for reconsidera- tion of the final rejection and refusal of his amendment, accompanied by a statement of reasons why he considered said actions im- proper. In reply he was notified by the ex- aminer on November 3, 1906, that his appli- cation was abandoned, and on November 6, 190G, he took this petition. Held, that if the final rejection of October 16, 1905, was proper the condition of the case called for either a cancelation of the rejected claims or an ap- peal to the examiners-in-chief, and since such action was not taken within the year the case is abandoned; but in case the final rejection was irregular or premature, then the actions of June 6 and September 24 were such as the condition of the case required, and the appli- cation is not abandoned. Ex parte Fowler, Jr., C. D. 1907, 127 O. G. l.'>78. 111. Where the examiner rejects the claims of an application on the ground that they cover an inoperative device and requires a demonstration of the utility thereof and with- in the year allowed by law for responsive action applicant files an argument attempting to show that the device would operate as set forth in the specification, Held, that the ap- plication is not abandoned for lack of proper prosecution. Ex parte Viniello, C. D. 1909, 144 O. G. 276. 112. Where the examiner rejected certain claims a second time on a single reference and rejected other claims on an additional refer- ence cited for the first time and applicant, within a year, canceled one of the two claims against which the new reference was cited, filed an argument as to the allowance of the other, but made no reference to the rejection of the other claims. Held, that the application was not abandoned, since applicant having once presented his argument as to these claims it was not necessary for him to repeat it. Ex parte Newbold, C. D. 1910, 155 O. G. 553. 113. Where in response to an action reject- ing two claims on a patent to L. and other claims as stating aggregations of features shown in certain prior patents, one of which was the patent to L., the applicant within the year filed a slight amendment and a more or less ex- tended argument discussing the pertinency of the patent to L. and contrasting what was shown therein with what was shown in the application, but not specifically referring to the two claims rejected on the patent to L., Held, that the amendment was responsive. Ex parte Oilman, C. D. 1911, 162 O. G. 783. > 114. "The fact that an argument is not a convincing one should never be urged in sup- port of an objection that the action contain- ing that argument was not responsive, except possibly in some extreme case where the ar- gument on its face is directed to a discussion of subject-matter which is entirely beside the case." Id. 115. The examiner after some prosecution of an application cited for the first time a Swedish patent and rejected certain claims thereon without specifically applying it to the claims. At the end of the year from this action applicant presented an amendment can- celing the rejected claims and substituting five new claims, stating that the Swedish patent had been translated and that the new claims were believed to clearly distinguish there- from. Held, that the application is not aban- doned. (Ex parte Copeland, 149 O. G. 309, distinguished.) Ex parte Watters, C. D. 1911, 163 O. G. 231. ABANDONMENT OF APPLICATION, III, (c). 11 (c) Insufficient. 116. Presentation of an amendment which is refused entry after a decision by the exam- iners-in-chief does not save the same from abandonment. E.x parte Grant, C. D. 1900, 93 O. G. 2532. 117. Where an apphcation was finally reject- ed on December 12, 1898, an applicant pre- sented amendments on January 11, 1899, and on March 2, 1899, which were entered for the purpose of appeal, and in acting on the last amendments on March 10, 1899, the examiner informed applicant that the amendments en- tered since December 12, 1S93, would not save the application from abandonment after De- cember 12, 1899, and applicant took no further action until he filed this petition on February 28, 1900, to require the examiner to permit further amendment. Held, that the case be- came abandoned on December 12, 1899. Ex parte Tiffany, C. D. 1900, 91 O. G. G43. 118. Where the examiner rejects the claims and makes certain formal objections, Held, that a mere correction of one of the formal defects with no action in reference to other matters is not such an action as will save the case from abandonment. Ex parte Vaughen et al., C. D. 1901, 97 O. G. 957. 119. The propriety or sufficiency of the ac- tion required of applicants by the rules has reference to its e.xtent as well as to its sub- ject-matter. It must be an action made in good faith with the purpose and effect of making a substantial advance toward closing the prosecution of the case. Id. 120. There is no warrant in the rules for ac- tions the purpose and effect of which are merely to "keep the case alive" or "avoid abandonment," and such actions cannot be considered such proper actions as the condi- tion of the case requires. Id. 121. Where in an office action certain formal objections are made to the claims and the claims are rejected on references, Held, that the filing of an amendment curing the formal objection and adding a new claim, which amendment is accompanied by a mere request for a reconsideration of the rejected claims, is "not such proper action as the condition of the case may require" and in the absence of any further action within the period of time allowed by law to prosecute the application that the said application has become aban- doned. Id. 122. Where the examiner called attention to a formal defect in the application and the applicant while admitting the defect made no effort for six years to correct it, but merely wrote letters in regard to it. Held, that the application is abandoned. Ex parte Sack, C. D. 1902, 99 O. G. 2101. 123. Where several claims are rejected by the examiner and at the end of the time allowed by law for action the applicant requests recon- sideration of some claims and says he intends to lile an affidavit under Rule 75 as to others, Held, not such action as the condition of the case requires and that it is abandoned. Ex parte Spiller, C. D. 1902, 99 O. G. 2320. ■^ 124. Where division was required between apparatus and process claims under the plain and unmistakable provisions of Rule 41 and the applicant waited nearly one year and then filed a request for reconsideration and thereafter waited one year and filed a petition to the commissioner, but presented no brief or argument in support of any allegation of error. Held, that the action of the applicant is obviously a mere pretext and that the case is abandoned. Ex parte Bassett, C. D. 1902, 93 O. G. 2174. 125. The law and the rules are not so de- fective as to permit a party by action which is obviously a mere pretext to avoid the re- quirement that he shall take action in prose- cution of the application within one year from the last office action. Id. 126. An action which is taken without any intention or expectation of making an ad- vance toward closing the consideration of a case is not an action in prosecution thereof within the meaning of section 4894, Revised Statutes. Id. 127. An action taken with the sole purpose of saving the case from abandonment and keeping it in this office as a pending applica- tion is not such action as the condition of the case requires. Id. 128. An alleged error in the action of the examiner furnishes no good reason for a failure to take proper action in response there- to within the time fixed by law. Ex parte Fritts, C. D. 1902, 101 O. G. 1131. 129. Where the claims are finally rejected the action required within the year allowed by law is an appeal to the examiners-in-chief, and a petition taken to the commissioner which does not change the status of the case as finally rejected will not save it from aban- donment. Id. 12 ABANDONMENT OF APPLICATION, III, (c). 130. Where an applicant takes the full statu- tory period for amendment and upon two oc- casions is warned by the examiner that his actions do not tend to make a substantial ad- vance toward closing the prosecution of the case and thereafter files an amendment upon the last day but one allowed by law which does not meet the examiner's requirements and renders it impossible to close the con- sideration of the case upon its merits, Held, that the application is abandoned. Ex parte Whiting, C. D. 1902, 98 O. G. 1969. 131. The mere presentation of an amend- ment, which is not in order after a decision by the examiners-in-chief, does not change the status of the case as subject to appeal to the next higher tribunal or relieve the applicant from the necessity of taking that appeal with- in the time fixed by law. Ex parte Cutten and Eraser, C. D. 1902, 98 O. G. 2172. 132. Where, instead of appealing from the decision of the examiners-in-chief or cancel- ing the rejected claims within the time allow- ed by law, the applicant filed an amendment which was refused admission, HelJ, that the application is abandoned. Id. 133. An applicant is as much entitled to file an amendment on the last day of the year allowed by law to prosecute the case as he is to file it on any other day during the year ; but the amendment at either time must be such an action as the condition of the case re- quires. Its deficiencies cannot be excused by the fact that it is filed on the last day. Ex parte Morrison, C. D. 1902, 99 O. G. 2969. 134. When an applicant waits until the last day of the year to file an amendment, he as- sumes all risks, and an action which would be insufficient if made earlier cannot be held suf- ficient because it is too late for the applicant to correct his error. Id. 135. Where an amendment is presented which if entered would necessitate a require- ment for division. Held, that it should not be entered notwithstanding the fact that it is presented only one day before the case will become abandoned through a lack of prosecu- tion. Id. 136. After the final rejection of a case an amendment requesting the cancelation of claims and the substitution of others therefor which the examiner refuses to enter is not such action in prosecution of the case as will save it from abandonment. Ex parte Sues, C. D. 1902, 98 O. G. 1972. 137. Where the final rejection was made on Fel)ruary 27, 1900, and no appeal therefrom was taken within the lime limit allowed by the statute, all. the intermediate actions being limited to proceedings relative to the admis- sion of an amendment canceling the rejected claims and substituting others in lieu thereof. Held, that it would be useless to admit claims for the purpose of appeal, as the application is abandoned. Ex parte Raymond, C. D. 1902, 99 O. G. 1386. 138. Where after a final rejection the appli- cant presents another claim by amendment without making the showing required by Rule 68, Held, that a petition that it be entered filed one year thereafter and more than one year after the final rejection will be denied and that the case is abandoned. Ex parte Landis, C. D. 1903, 103 O. G. 1164. 139. Where division is required and the ap- plicant files three successive amendments, each nearly one year after the date of the office let- ter and no one of which complies with the requirement for division. Held, that the case is abandoned. Ex parte Pietzner, C. D. 1903, 103 O. G. 2171. 140. Where a mere request for reconsidera- tion is filed and it is admitted that the pur- pose thereof is merely to gain time and save the case from abandonment. Held, that the case is abandoned. Ex parte La France, C. D. 1903, 105 O. G. 262. 141. An action which does not and was not intended to make a substantially advance to- ward closing the prosecution of the applica- tion is not such proper action as is required by the law and the rule, and it will not save the case from abandonment. Id. 142. A mere request for reconsideration without even an allegation of error furnishes no reason for reconsideration. Id. 143. Where after decision by the examiners- in-chief the applicant cancels the rejected claims and more than one year after the deci- sion wishes to reinstate them for the purpose of further appeal, Held, that he will not be permitted to reinstate them, since an appeal filed more than one year after the decision could not be entertained. Ex parte Oviatt and Dean, C. D. 1903, 107 O. G. 269. 144. Where the only action taken by an ap- plicant within the year following an action by the office finally rejecting his claims was to file an amendment in which he attempted to insert eight additional claims, the first six of which were the same as claims which had ABANDONMENT OF APPLICATION, III. (c). 13 previously been considered and the other two were new claims, and there was no request that the six old claims be admitted for the purpose of "presenting those rejected in bet- ter form for consideration on appeal" and no showing duly verified of good and sufficient reasons why the new claims were not earlier presented. Held, that this was not such an action as the condition of the case required in order to save it from abandonment. Ex parte Bowles, C. D. 1903, 103 O. G. 429. 145. Where the applicant is clearly and un- mistakably informed that the claim is finally rejected and he fails to appeal within the year fixed by law. Held, that the case is abandoned. Ex parte Minich, C. D. 1903, 107 O. G. 1971. 146. Where the applicant is twice informed that the claims arc finally rejected and that an amendment presented involves new matter and at the end of the time allowed by law for action he presents substitute claims and an argument as to new matter. Held, that his ac- tion is not such as the condition of the case required and that it is abandoned. Ex parte Edwards, C. D. 1904, 108 O. G. 1051. 147. Where after final rejection of the claims the applicant presents amendments touching the merits unaccompanied by the showing re- quired by Rule 68. but does not appeal within the year fixed by law. Held, that the conten- tion that the final rejection was premature cannot save the case from abandonment whether well founded or not. Ex parte Le- fever, C. D. 1004, 110 O. G. 1430. 148. \n alleged error in the action by the examiner furnishes no reason for ignoring that action and is no excuse for the failure to either take the action called for therein or have it set aside as irregular within the time fixed by law. Id. 149. Where a requirement for division is made final and the applicant neither complies with the requirement nor appeals within one year, but presents arguments. Held, that the case is abandoned. Ex parte Ries, C. D. 1904, 113 O. G. 1147. 150. Where the applicant keeps a case pend- ing for a long time without action upon the merits and in each instance waits the full statutory period before acting. Held, that he is entitled to no leniency in the application of the rule that the action must be such as the condition of the case requires. Id. 151. Where the examiner required division on the ground that the claims were drawn to cover eight distinct and independent inven- tions and specified which in his opinion be- longed to each group. Held, that an amend- ment canceling one of these sets of claims only, unaccompanied by reasons why the re- quirement for division was not further com- plied with, was not such an action as the condition of the case required and would not save the case from abandonment. Ex parte Naef, C. D. 1904, 110 O. G. 2016. 152. Where the claims of an application are under rejection and the applicant subsequently files an amendment submitting new claims for the purpose of an interference and accom- panies the amendment with a request that the claims under rejection should not be recon- sidered. Held, that such action was not re- sponsive to the rejection. Ex parte Parkes, C. D. 1904, 113 O. G. 2213. 153. Where at the end of the time allowed liim by law for action the applicant presents two additional claims, but takes no action in reference to the rejected claims save to ask for reconsideration. Held, that the case is abandoned. Ex parte .41ton, C. D. 1904, 113 O. G. 1968. 154. An amendment in which the applicant shifts his ground from one species of the invention to another is not such proper action as the case requires and does not save it from abandonment. Ex parte Lillie, C. D. 190,5, 114 O. G. 541. 155. After final rejection it is incumbent upon the applicant to appeal or take action to have the case reopened within the year allowed by law if he wishes to prosecute the claims further. The filing of an amendment is not such action as the condition of the case requires. Ex parte Marr, C. D. 1905, 119 O. G. 2521. 156. Where a proposed amendment was re- fused entry, under practice then existing, as one which would necessitate the requirement of division, and attention was also directed to the fact that portions of said proposed amendment constituted new matter and the only action by the applicant in the ensuing year discusses the question of new matter, but ignores the question, of division. Held, that the case is abandoned. Ex parte Gaily, C. D. 1905, 115 O. G. 802. 157. Where the applicant directs matter to be inserted in his specification from the speci- fication of a patent, but does not quote such matter, and the examiner refuses to insert the matter until presented by amendment. Held, that the statement by the applicant that 14 ABANDONMENT OF APPLICATION, III, (c). the objection will be attended to at some fu- ture time is no proper response to save the case from abandonment. Id. 158. Where the only attempt to prosecute an application within the year following an of- fice action was by a proposed amendment, which was refused admission, under practice then existing, as one which would necessi- tate division. Held, that the case became aban- doned at the expiration of said year, providing that the examiner's position holding claims in the proposed amendment to be drawn to independent inventions was well taken. Id. 159. Where an applicant at the end of the period allowed him by statute files an amend- ment, but as to many of the claims merely asks for reconsideration, without pointing out how they arc supposed to avoid the ref- erences cited. Held, that he has not taken such action as the condition of the case required and that it is abandoned. Ex parte Buscn- benz, C. D. 1905, 117 O. G. 600. 160. Where division was required between certain groups of claims and an argument is made against the requirement and the ex- aminer makes the requirement final and in- cludes a claim overlooked in the original re- quirement in one of the original groups and petition is taken, which is dismissed with the information that relief must be sought in ap- peal to the examiners-in-chief, and thereafter reconsideration is requested as to the claim originally overlooked, but renewed petitions are taken before action upon such request, and when the ease finally came before the examiner for action more than the statutory period for action upon applications had elapsed since the final requirement of division. Held, that the case was abandoned. E.x parte Tuttle, C. D. 1905, 117 O. G. 1796. 161. Where requirement for division had been made final, Held, that the only actions open to the applicant thereafter which could be considered such as the condition of the case required and sufficient to save it from abandonment at the end of the year follow- ing the date of the final requirement were actions complying with the requirement and actions seeking in proper manner to have the requirement set aside by higher authority. Id. 162. Where several petitions were taken os- tensibly to have a requirement for division set aside, but proper action to that end lay in appeal to the examiners-in-chief, and not in petition, and the applicant was repeatedly so informed, but persisted in filing petitions lead- ing to no useful end. Held, that the course adopted lacks both the appearance and the substance of prosecution in good faith. Id. 163. When in the year following final re- jection no appeal to examincrs-in-chief was taken, but petition from the propriety of the final rejection was taken just before the end of such year, which petition was denied. Held, that the application had become abandoned. Ex parte Wagner, C. D. 1905, 118 O. G. 1684. 164. Where during the year following final rejection amendments to claims were pre- sented, but no contention was made that the final rejection was premature, and the exam- iner at end of the year held the case to have become abandoned. Held, that the contention on petition that the final rejection was prema- ture comes too late. Ex parte Read, C. D. 1905, 119 O. G. 337. 165. An applicant cannot ignore an examin- er's action simply because he believes that it is not well founded. Whether well founded or not, it is binding upon the applicant until set aside, and it is incumbent upon him to take steps to have it set aside within the year al- lowed by law for action. Id. 166. Where a case is decided on appeal and the applicant takes no action within a year thereafter, save to present an amendment can- celling the rejected claims and inserting oth- ers. Held, that the case is abandoned. Ex parte Auer, C. D. 1905, 116 O. G. 595. 167. Where certain formal objections are raised and the claims are finally rejected, an amendment curing the formal objections will not save the case from abandonment, even though by curing the formal objections the scope of the claims is changed. A final re- jection must be met by an appeal and not by an amendment changing the scope of the claims. Ex parte Walton, C. D. 1906, 120 O. G. 659. 168. Where an applicant took advantage of a technical error in the citation of one of nu- merous references to delay his reply for two years and then made reply only to a portion of the examiner's action. Held, that the action was not such as the condition of the case re- quired, and the same is abandoned. Ex parte Sperry, C. D. 1906, 121 O. G. 687. 1G9. Where an-applicant presented an amend- ment canceling two of his six rejected claims and substituted others therefor and no action whatever was taken as to the remaining claims. Held, that the action was insufficient to save the case from abandonment. Ex parte ABANDONMENT OK APPLICATION, III, (c). 15 Schmidt and Tanody, C. D. 1906, 121 O. G. 688. 170. Where after a certain action by the ex- aminer the apph'cant's amendment purporting to he in response to a prior action by the ex- aminer and not in fact responsive to the last action of the examiner, and where the ap- plicant was notified that said amendment was not so responsive and failed to take respon- sive action within the year from the exam- iner's action. Held, that the application was aliandoncd. Ex parte Woods, C. D. 1906, 121 (). G. 689. 171. A mere request for reconsideration without giving any reasons therefor, especially where a party has abandoned all hope or ex- pectation of securing a patent, is not sufficient to save an application from abandonment. Ex parte Krejci, C. D. 1906, 121 O. G. 1011. 172. Where claims are rejected, a mere re- quest for reconsideration filed within the year allowed by law, unaccompanied by some statement or argument which controverts the ruling of the examiner or throws light upon the facts of the case, is not sufficient to save the application from abandonment for failure to prosecute. Ex parte Einstein, C. D. 1906, 121 O. G. 1675. 173. Where claims are placed under final re- jection and within the year following no ap- peal is filed nor any amendment or argument upon the merits presented and the communi- cations filed are directed to traversing the propriety of the final rejection. Held, that a petition filed one day before the year expired that the final rejection be withdrawn is not such an action as will save the application from abandonment. Ex parte Thayer, C. D. 1906, 122 O. G. 1724. 174. Where a broadened claim was presented in the twenty-eighth action on the case, taken more than eight years after the case was filled, and the broadening of the claims was not called for by anything in the previous office action and no statement was made by the applicant to point out the supposed patent- able novelty in the case or how the amend- ments avoided the references and objections and no other action was taken within the year following the previous office action, Held, that the case is abandoned. Ex parte Rich- ards, C. D. 1906, 124 O. G. 2r,:i4. 175. Where the only action by the applicant in the year following an office action contains errors which, if the amendment be accepted, would extend the time for prosecution by the applicant another year for no purpose but the correction of the errors, the case should be regarded as abandoned until a proper amendment is presented with a showing of reasons for delay covering the entire period thereof. Id. 176. Where the only amendment filed within the year allowed by law was filed by an attor- ney who had not furnished proper evidence of his power to act in the case. Held, that the application is abandoned. Ex parte Rogers, C D. lOOfi, 125 O. G. 2766. 177. Where the first amendment made by ap- plicant five days before the expiration of the year from the examiner's first action reject- ing all the claims consisted of a few correc- tions to the specification, an argument as to the patentability of the claims, and the addi- tion of a new claim, and the examiner in ad- mitting this amendment and rejecting the claims warned applicant that it was not such an action as the condition of the case required and that the added claim was so broad as to be met in nearly all selective signaling sys- tems, and where, following this, applicant filed an amendment two days before the expiration of a year from the last action of the examiner in which he amended all of the claims except the broad claim added by the previous amend- ment, which claim he neither canceled nor amended nor presented any reasons why he considered it allowable. Held, that the latter amendment was not entirely responsive to the examiner's rejection and was not sufficient to save the application from abandonment. Ex parte Lcich, C. D. 1907, 126 O. G. 1066. 178. Where an application is withdrawn from issue at the request of the applicant to await the allowance of a related application and no action is taken therein until after the expira- tion of the statutory period allowed for tak- ing action, which dates from the notice of al- lowance, the application is abandoned in the absence of special circumstances excusing the delay. Ex parte Brooks, C. D. 1907, 127 O. G. 847. 179. Where 27 claims were rejected on August 9, 1905, and on June 9, 1906, the ap- plicant amended two of the rejected claims and added two new claims, but made no al- lusion to the remaining 25 rejected claims, and the examiner on August 14, 1906, on taking up the case in the regular course of his work, notified applicant that his case was abandoned. Held, that the examiner's action is entirely in accord with sound reason and well-estab- 16 ABANDONMENT OF APPLICATION, III, (c). lishcd practice and is the only proper action which could have been given under the cir- cumstances. Ex parte Midgley, C. D. 1907, 127 O. G. i:.77. 180. Petitioner's contention that his unre- sponsive amendment tiled within the year is entitled to consideration and action upon its merits is clearly unfounded, since the statutes provide for no piecemeal consideration and the rules prohibit the same. Id. 181. Where after fmal rejection the appli- cant presents an amendment curing informal- ities and containing claims which differ sub- stantially from those finally rejected, but does not make a showing of good and sufficient reasons why the amendment was not earlier presented. Held, that the amendment is inad- missible, although it would have been proper to cure the informalities by proper amend- ment, and that such action does not relieve the application from its condition as subject to appeal or save it from abandonment. Ex parte Green, C. D. 1907, 130 O. G. 209. 182. Where claims are finally rejected and the formal requirement that the drawings be corrected to meet the requirement of the rule with respect to artistic merit is also made final, the filing of an appeal within the year following the final rejection constitutes a suf- ficient action to save the case from abandon- ment, although the drawings have not been amended as required, the formal objection being such as may be corrected after the final decision on the merits. Ex parte Proc- tor. C. D. 1900, 1,38 O. G. 2:)8. 183. Where an applicant was notified that certain interferences had been decided in his favor and that the case awaited action in response to previous office actions, the filing of an amendment containing the claims of a patent and requesting an interference there- with is not such action as the condition of the case required and did not operate to stay the running of the year from the date of the previous office action. Ex parte Curtis, C. D. 1900. 138 O. G. 767. 184. Where in response to the rejection of ten claims by the examiner the applicant filed an amendment only two days before the ex- piration of the year allowed for action in which eight of the rejected claims were can- celed, one left unchanged, one amended, and a new claim added, without mentioning the claim which was left intact and without at- tempting to point out how the amended claim or the new claim differed from the references cited. Held, that the amendment was not a proper response and that the application was abandoned, particularly in view of the fact that the record disclosed that after each re- jection of the claims since the filing of the application in 1901 applicant had taken the full period allowed by law for amendment and that he also delayed action on the case for one year after he was notified by the primary examiner that the application was abandoned. Ex parte Copeland, C. D. 1909, 140 O. G. 1207. 185. Where in an application filed by joint applicants the only amendment filed within the year after the examiner's action was an amendment signed by an attorney appointed by only one of such applicants, Held, that the application was abandoned. Ex parte De Forest and Horton, C. D. 1909. 141 O. G. .566. 186. Where an amendment filed within the year allowed by law for action is held to have no standing, on the ground that it was signed by the attorney appointed by only one of two joint applicants, the ratification of such amendment by the other joint applicant after the expiration of the year is not effective to carry the date of the action back to the date of the filing of such amendment. A ratification may not have a retroactive effect to defeat the express provisions of the stat- ute relating to the time within which a party must prosecute an application to save it from abandonment. Id. 187. Where the examiner rejected eight claims and just before the expiration of the year the applicant canceled four of these, amended one, pointed out wherein the other three avoided the references, and added two new claims without pointing out how these two were believed to distinguish over the prior art. Held, that the application is aban- doned. Ex parte Copeland, C. D. 1909, 149 O. G. 309. 188. Where an applicant relies upon his tech- nical right to delay action as long as possible in each instance, he is entitled to no leniency in the application of the rule which provides that prosecution of an application to save it from abandonment must include such proper action as the condition of the case may re- quire. Id. 189. Where on appeal from a decision of the cxaminers-in-chief, the commissioner affirmed that decision, but stated that the claims, if amended as suggested by applicant, might be entered and allowed by the examiner in the ABANDONMENT OF APPLICATION, III, (c), IV, (a). 17 absence of further reference, subject to cer- tain requirements, Held, that where the only amendment presented within one year from the examiner's letter citing new references did not comply with such requirements the application was abandoned. Ex parte Chip- man, C. D. 1910, 153 O. G. 545. 190. Where on the last day of the year al- lowed for action applicant filed an amend- ment and argument, but discussed only three of the eleven patents cited and did not point out specifically, as required by Rule 68, why these patents were, in his opinion, inappli- cable to the claims. Held, that the examiner was justified in holding the application aban- doned. Ex parte Sachs, C. D. 1910, 157 O. G. 755. 191. Where the examiner rejected certain claims and required further illustration, the mere amendment of the drawing was not an action which amounted to the prosecution of the application within the meaning of section 4894, Revised Statutes, citing ex parte Wal- ton, C. D. 1906, 28, 120 O. G. 659; and ex parte Wentzel, C. D. 1907, 352, 131 O. G. 941. E.X parte Sturtevant and Sturtevant, C. D. 1910, 158 O. G. 885. 192. Where the examiner required that the specification be rewritten and new drawings filed. Held, that the filing of a substitute spe- cification accompanied by blue prints in which many of the reference-numerals of the orig- inal drawings were omitted was not such proper prosecution of the case as required by the rules. Ex parte Mastaglio, C. D. 1910, 159 O. G. 489. 193. Where at the end of the year following a final rejection of certain claims applicant filed an amendment to each of such claims accompanied merely by a statement that the amendment is believed to place the case in condition for allowance. Held, that such ac- tion is not responsive and that the applica- tion is abandoned. Ex parte Lorenz, C. D. 1910, 160 O. G. 1039. 194. In response to a rejection accompanied by a statement that, in the opinion of the ex- aminer, there was no patentable novelty in the case the applicant presented one specific claim. The examiner finally rejected this claim and called attention to a certain deci- sion. The applicant filed an argument stating that he did not understand the application of the references or the pertinency of the deci- sion cited. The examiner then called atten- tion to a slight fallacy in the mode of opera- 2 tion described and pointed out the portion of the decision considered pertinent The only action taken by applicant within one year from this latter action of the examiner was to file an amendment containing three claims broader than that finally rejected. Held, that the application is abandoned. Ex parte Hardy, C. D. 1910, 161 O. G. 268. IV. Statutory Term. (a) In General. 195. A reissue, application, like an original application, becomes abandoned, under section 4894 of the Revised Statutes, by a failure to prosecute it within one year from the date of the last office action. Ex parte Laughlin and Rculeaux, C. D. 1900, 92 O. G. 2002. 196. The statute provides that "all applica- tions for patents" become abandoned by failure to prosecute within one year, and reissue appli- cations clearly come within these broad terms. Even if they did not, however, the provision that reissue applications are subject to revi- sion "in the same manner as original appli- cations" would make the limitation as to the time within which action should be taken ap- plicable. Id. 197. The contention that delay in the prose- cution of an application for a reissue is not objectionable, since it does not change the time when the invention will become public property by the expiration of the patent, is not well founded, since it is well settled that delay in filing the application is objectionable on account of the possible intervening rights of the public, and the same reasons apply to make an unreasonable delay in the prosecu- tion of an application after it is filed improp- er and objectionable. Id. 198. Where after acting upon a case the ex- aminer writes a letter under Rule 96 sug- gesting other claims for the purpose of in- terference, Held, that the year allowed for action by the applicant commences to run from the date of the letter suggesting claims. Coulson V. Callender and Callender, C. D. 1909, 101 O. G. 1607. 199. The provision of Rule 77 that the year allowed by law commences to run from the date of the action preceding the requirement to place the case in condition for interference applies only where no new requirement is made. The suggestion of new claims is a new requirement. Id. 18 ABANDONMENT OF APPLICATION. IV, (a). 200. Where llic examiner did not inform the applicant clearly which claims were rejected until July 10, 1901, when in response to an inquiry he mentioned the particular claims re- jected, Held that the applicant must be al- lowed one year from July 10, 1901, within which to take action. Ex parte Kuhlewind, C. D. 1902, 101 O. G. 3107. 201. A request for an extension of time for filing an amendment cannot be granted when the period extends over the statutory limit within which the application must be prose- cuted under the provisions of section 4894 of the Revised Statutes in order to save it from abandonment. Ex parte Bauercamper, C. D. 1902, 99 O. G. 448. 202. Where a rejection of an application is incomplete, in that all the references are not cited with sufficient particularity to enable the applicant to be certain what patent is deemed a reference, and the examiner subsequently writes another letter supplementary to his letter of rejection specifying distinctly the patents intended to be cited, Held, that the rejection was not made complete until the second letter was written, and the year allowed by law in which to amend the application commenced to run from the date of the second letter. E.x parte Stead, C. D. 1903, 107 O. G. 834. 203. Where the last day of the year allowed by law for action comes on Sunday, action must be taken the day before ; otherwise the case is abandoned. Ex parte Koritski and Wipf, C. D. 1904, 113 O. G. 1145. 204. Where an application is rejected April 7, 1903, and an action is subsequently made which brings up matters for consideration which are entirely distinct and separate from those raised by the rejection of April 7, 1903, Held, that the one year begins to run from April 7, 1903, in which action responsive thereto should be made in order to save the case from abandonment. Id. Ex parte Parkes, C. D. 1904, 113 O. G. 2213. 205. Where the last day for action expired March 5, and an amendment was mailed March 3 and failed to reach the office until March 6, because of the closing of the office on March 4, which was unexpected to the ap- plicant, Held that the case is not abandoned. Ex parte Reis, C. D. 1905, 116 O. G. 2007. 206. Where on December 29, 1905, an ex- aminer rejected certain claims and made a formal objection to another claim, to which the applicant made a sufficient response on January 27, 1906, with the exception that he failed to mention the informal claim, and the examiner in his next action, on February 16, 1906, reiterated the formal objection, but did not state that the applicant's action by rea- son of failure to mention the informal claim was unresponsive and did not make such ob- jection final. Held, that an amendment cur- ing the informality filed January 18, 1907, is filed in proper tim.c, the renewal of the ob- jection by the examiner without objection to the insufficiency of the applicant's action of January 27, 1906, constituting a waiver of the question of incompleteness of such action. Ex parte Westinghouse, C. D. 1907, 131 O. G. 1420. 207. Where the examiner finally rejected the claims of an application and also made final certain objections to such claims on July 3, 1906, and a petition upon the formal matters was taken on August 2, 1906, which was de- cided by the commissioner on August 27, 1906, an appeal to the examiners-in-chief Aug- ust 24, 1907, is filed without the period of one year allowed for prosecution, which dates from the final rejection and not from the deci- sion of the commissioner on the petition. Ex parte Wentzel, C. D. 1907, 131 O. G. 941. 208. Where on appeal the commissioner af- firmed the decision of the examiners-in-chicf holding certain claims unpatentable, there is no reason for the examiner to further notify applicant that these claims stand finally re- jected, and, unless applicant appeals to the court of appeals, his year in which to take action runs from the date of the decision of the commissioner. Ex parte Gale, Sr., C. D. 1910, 161 O. G. 530. 209. On August 3, 1909, applicant was re- quired to revise his specification and claims. On May 13, 1910, an amendment was filed canceling the original specification and claims and substituting a new specification. On May 28, 1910, the applicant was informed that the new specification contained no claims and that action on the merits of the case was deferred. Held, that the year in w-hich applicant could take action ran from August 3, 1909, and that an amendment containing new claims not hav- ing been filed till October 21, 1910, the ap- plication was abandoned in the absence of a showing establishing that the delay was un- avoidable within the meaning of section 4894 of the Revised Statutes. Ex parte Kehrhahn, C. D. 1911, 162 O. G. 537. ABANDONMENT OF APPLICATION, IV, (b), V. 19 (b) Effect of Suspension. 210. On June 22, 1895, applicant requested a suspension of action on his application for three months, which was granted. Nothing further was done until January 10, 1806, when the examiner, on his own motion, called the applicant's attention to the fact that the ap- plication was suspended and suggested to him that if he desired a further suspension he should promptly apply for it. On January 22, 1896, the applicant followed the sugges- tion of the examiner and requested a suspen- sion for sixty days. For reasons not dis- closed by the record the examiner granted a suspension for six months instead of for sixty days. Nothing further was done with the application until March 1, 1897, when the examiner, on his own motion, informed the applicant that the case would stand suspended until June 12, 1897, when it would be passed to issue. The case was not passed to issue and no attention was paid to it until August 25, 1898, when the present examiner informed the applicant that his case was abandoned. Held, that were it not for the letter of the examiner of March 1, 1897, the application would have been abandoned, but that said let- ter was such an action as that referred to in the statute and that it saved the application from abandonment. Ex parte McCaskey, C. D. 1898, 85 O. G. 935. 211. Held, further, that if such practice as that indicated in this case exists in the office it cannot be too strongly disapproved and should be stopped. It is such cases as this that bring the office into ill-repute and justly give ground for the criticism that is sometimes in- dulged in by the public. Id. 212. The office has no authority to grant a request for a suspension of action, which amounts to a request to extend the year al- lowed the applicant by law within which to act Ex parte Whitney, C. D. 1901, 109 O. G. 2442. 213. Where after amendment the examiner wrote a letter suspending action upon the amendment until the applicant filed a drawing in accordance with an oral interview and the applicant neither filed the drawing nor took action in the case for three years. Held, that the case is abandoned. Ex parte Hunter, C. D. 1905, 116 O. G. 1731. 214. A letter by the examiner suspending ac- tion until a drawing is furnished must be re- garded as a requirement for a drawing and as an action calling for a response within the time allowed by law for action. Id. 215. Where after amendment of a case the examiner writes suspending action to permit the applicant to file other amendments agreed upon at an oral interview and no further action is taken in the case for more than two years, Held, that the case is abandoned, not- withstanding the fact that the examiner made his suspension for the definite period of thirty days. Ex parte Herzog and Wheeler, C. D. 1905, 116 O. G. 2009. 216. Where the examiner suspends action to permit the filing of an amendment agreed upon at an oral interview. Held, that he has in fact made a requirement, and it is incumbent upon the applicant to comply or take issue within the time fixed by law. Id. 217. Where an applicant files an amendment and then requests suspension of action there- on, he leaves the case as if no such amend- ment had been filed, and therefore the time for action is to be computed from the pre- ceding office action. Id. 218. Where the examiner suspends action upon a case and fixes a definite period, as required in the rule, he should take the case up for action on the expiration of the time. This, however, does not relieve the applicant from the responsibility or effect of his action in requesting suspension. Id. V. Effect of Variol-s Delays. 219. Where it appears that in the past the applicant has availed himself of the full statu- tory period allowed him by law, he is not entitled to leniency in the consideration of excuses offered for delay in the last action. Ex parte Naef, C. D. 190.5, 115 O. G. 1583. 220. Where the record shows that the appli- cant is in the habit of waiting almost the full statutory period before amending, he is not in a position to rely on any matters of equity when a question is raised whether he has acted in time, but only upon his strict techni- cal rights. Ex parte Naef, C. D. 1905, 115 O. G. 2133. 221. Where a record of useless dilatory pros- ecution was presented and a course of sys- tematic opposition had been adopted by the applicant, carried out by him in unnecessarily numerous letters, arguments, and petitions ex- tremely harassing to the office and wasteful of the time that should be devoted to the cases of other applicants. Held, that only the 20 ABANDONMENT OF INVENTION. utmost good faith in an action relied upon to save the case from abandonment will suf- fice for this purpose. Meden v. Curtis, C. D. 1005, 117 O. G. 1795. 222. Where an applicant delayed one year after notice that his case was abandoned in bringing his petition, Held, that he was not in an equitable position to demand any leni- ency in considering the question whether he had complied with the rule requiring diligent and proper prosecution of his case. Ex parte Ruthenburg, C. D. 1906, 121 O. G. 337. \'I. Failure to Complete .Application. 223. .\ fee which is filed more than a year after the filing of the other parts of the ap- plication cannot be applied, inasmuch as the application is abandoned. Ex parte Kurz, C. D. 1905, 119 O. G. 961. 224. Under section 4894, Revised Statutes, an application is abandoned by failure to com- plete it within one year, as well as by failure to prosecute it within one year after com- pletion. Id. 225. Where an applicant failed to file a valid oath within a year from the date of the re- ceipt of the other application papers, though twice notified, the application held, abandoned under Rules 30 and 31. Ricgger v. Bierl, C. D. 1910, 150 O. G. 826. VII. Formal. 226. Where after a case is allowed the appli- cant in order to embody other claims files a new case covering the invention without com- plying with or seeking to obtain the benefit of the statute relating to renewal of applica- tions and files a written abandonment of the first case, specifically stating that the inven- tion covered thereby is not abandoned, Held, that the abandonment of the first case was as complete as provided for in section 4894 and the consequences must be the same. *0s- tergren et al. v. Tripler, C. D. 1001, 95 O. G. 837. ABANDONMENT OF INVENTION. !• The use or sale of an invention by the inventor within two years before application is no just ground to presume its abandonment, unless accompanied by other acts or declara- tions clearly evincing an intention to dedicate the invention to the public. Hence abandon- ment will not be presumed merely from a statement contained in the patent itself that "the invention is in practical operation and on the market in considerable numbers, and the facts here stated with regard to its op- eration are such as have been ascertained from commercial experience." c Mast, Foos & Co. v. Dempcter Mill Mfg. Co., C. D. 1898, 82 O. G. 338. 2. Where after a reduction to practice of an invention an applicant delayed for eleven years in filing an application because of the fixed and determined purpose on the part of the owner of the invention to keep it from the public and to prevent his partners from obtaining any benefit whatever therefrom until the expiration of certain patents and he could find it profitable to dispose of certain machines that he had on hand and in the meantime third parties had applied for and obtained a patent for the same invention. Held, that there was no excuse or justification whatever for the want of diligence in making the applica- tion. *Mower v. Duell, Commissioner of Patents, C. D. 1899, 88 O. G. 191. 3. Under such circumstances, to say the least of the matter, there was not much con- sideration given to the public in this scheme of delay, however much it may have inured to the benefit and advantage of the owner of the invention. *Id. 4. Where an applicant reduced an invention to practice, and delayed for about eleven years in filing an application, and during this delay subsequent and independent inventors of the same device came into the office with their completed invention and applied for and ob- tained a patent at much cost and trouble, and put the invention into operation and gave the public the benefit of it. Held, that to grant a patent to the first to reduce the invention to practice and thereby defeat the patent of three years' standing would neither be equitable nor just, nor would it be promotive of the great object of the patent laws. (Bates v. Coe, C. D. 1879, 365, 15 O. G. 337, 98 U. S. 31, cited.) *Id. 5. Parties must be bound by the conse- quence of their own acts, and this principle is true in the patent law as it is in all other departments of the law. A deliberate inten- tional delay and non-action in a matter of either a public or private concern is proof of a very cogent nature, and the party charge- able with such conduct must bear the conse- quences of It and will not be heard to excuse ABANDONED APPLICATION, I. 21 himself by simply declaring that he did not intend to prejudice the rights of others or to waive rights of his own that would have been available to him if they had been timely exercised. *Id. 6. Abandonment cannot be predicated upon failure to put the patented device upon the market, d Crown Cork & Seal Co. of Balti- more City v. Aluminum Stopper Co. of Balto. City et al., C. D. 1901, 96 O. G. 2573. 7. An inventor may give to the public the benefits of his ingenuity, and such relinquish- ment may be either direct or it may be in- ferred from circumstances, and it may occur before application or thereafter. The law, however, does not favor forfeiture, and it being a question of fact whether there has been an abandonment all reasonable doubts must be resolved in favor of the patent, d Id. 8. Where the inventor clearly manifests his intention to relinquish any rights to the in- vention which he has, the inchoate right to a patent cannot be resumed; but a mere aban- donment of experiments on an incomplete in- vention with the expectation of again taking the matter up is not such relinquishment. did. 9. While in the case of a renewal applica- tion the intention of the applicant in allow- ing the original application to become for- feited may be inquired into for the purpose of determining the question of abandonment, such inquiry must be directed to the abandon- ment of the invention claimed in the original application and not to some other invention which may be described incidentally therein and subsequently brought into interference when claimed in a later application. *Saun- ders V. Miller, C. D. 1909, 146 O. G. 50o. 10. A statement in a process application which disclosed the apparatus used for carry- ing out such process that the apparatus form- ed no part of the invention is not a dis- claimer nor an abandonment of the right to subsequently claim a patent for such appa- ratus. *Id. 11. Abandonment is not to be presumed, and the burden is on the one charging it to es- tablish it by clear and convincing proof. *Id. 12. Where the evidence raises a presump- tion of abandonment, it may be rebutted by showing acts assertive of the inventor's right and his intention by experiment or improve- ment to perfect his discovery. *Id. 13. In an interference between D. and B. & S. involving a species different from that in- volved in the present interference it was held, that D. had forfeited his rights in favor of B. & S. Held, that the testimony in the earlier interference has no bearing on the question of abandonment of the invention in issue in the present interference. Von Recklinghausen V. Dempster, C. D. 1909, 148 O. G. 277. ABANDONED APPLICATION. I. Right to Inspect, Etc. II. Revival of. I. Right to Inspect, Etc. 1- A statement that copies of an alleged abandoned application, identified, are neces- sary for defense in a suit does not constitute sufficient ground for granting the petition. Ex parte Walworth Manufacturing Company, C. D. 1898, 82 O. G. 187. 2. Under no circumstances should a petition for copies of an abandoned application be granted without opportunity for a hearing on the part of the applicant. Id. 3. Where the file wrapper and contents of an application on which a patent was granted make reference to the fact that one of the claims of the patent was a substitute for a claim allowed in an abandoned application. Held, that an interested party may have ac- cess to said abandoned application. (U. S., ex rel. Pollok v. Hall, C. D. 1889, 582, 48 O. G. 126:i, cited.) Metropolitan West Side Ele- vated Railroad Company et al. Siemens, C. D. 1898, 85 O. G. 290. 4. The case of U. S. ex rel. Bulkley v. But- terworth (C. D. 1897, 685, 81 O. G. 505), should not be interpreted as holding that no discretion is vested in the commissioner of patents to grant or withhold copies of aban- doned applications without a certificate or order from a court that they are necessary in a pending suit. Id. 5. As a general rule it may be safer to require an order from a court of competent jurisdiction before furnishing parties with copies of pending or abandoned applications; but when a patentee has referred to a prior application for patent, whether such reference appears upon the face of the specification or only among the application papers, and thereafter brings suit upon his patent, he cannot urge that the papers refer- red to by him are private papers. Id. 38 ABANDONED APPLICATION, I. 6- Where suit is brought against a party for the infringement of a patent and the party makes appHcation for a copy of an abandoned application by the patentee and the judge try- ing the case certifies that the copy would be relevant and material evidence, Held, that the copy will be furnished. In re Ashtabula Tele- phone Company, C. D. 1904, 110 O. G. 860. 7. Where in the record of a patent refer- ence is made to an abandoned application filed by the patentee and a party sued for infringe- ment of the patent makes a motion that he be furnished with copies of the abandoned appli- cation and the patentee does not appear and oppose the motion. Held that the copies will be furnished. In re Standard Plunger Eleva- tor Company, C. D. 1904, 112 O. G. 1480. 8. Where the petitioner for access to al- leged abandoned applications of a patentee who opposes access fails to serve his oppo- nent with arguments presented in support of the petition, Held, that the petition will be denied. In re Fowler, C. D. 1904, 113 O. G. 549. 9- Where a petition is made for copies of applications alleged to have been filed and abandoned by certain patentees which calls attention to decisions and briefs in interfer- ences where these applications are said to be mentioned. Held, that the exact places in the records where references are made by the patentees to the applications should be pointed out, as the duty of investigation to determine the mode of introduction of the applications is not properly upon the opponent nor upon the office, but upon the petitioner. Id. 10. A party who has been sued for the infringement of a patent will not be furnished with copies of abandoned applications filed by the patentee merely because he thinks they may assist him. Some connection between the patent and the application must be shown. In re Buck, C. D. 1904, li;! O. G. 1418. 11. Where a patent purports to be a con- tinuation of an earlier application and con- tains a reference to that effect, it is to be presumed that the right of the public to in- spect the earlier application was affirmatively determined by the issue of the patent with such reference therein ; but where a patent contains no such reference and a petition is filed for access to abandoned applications which the petitioner says are probably on file in this office. Held, that the petition should not be granted, if at all, until the patentee has had an opportunity to present such rea- sons as he may have to the contrary. In re Lanning, C. D. 1906, 124 O. G. 2902. 12. Where request is made to inspect or to be furnished with a copy of an abandoned application referred to in a patent by a stran- ger to the record. Held, that the practice re- quires that the request be supported by a showing of reasons why access to the aban- doned application is desired, together with proof of service upon the applicant of the papers constituting the request and showing. In re Standard Computing Scale Company v. Stimpson, C. D. 1900, 125 O. G. 2047. 13. Where an application has been aban- doned a long time, notice of the petition to inspect should be given to the owner of the invention, whether applicant or assignee. In re Commercial Mica Company, C. D. 1907, 129 O. G. 479. 14. A petition to inspect an abandoned ap- plication will be denied where the reference to the abandoned application in applicant's patent is not of such a nature as to indicate that it was relied upon for any purpose in the proceeding eventuating in the patent or to indicate a waiver by the patentee of the right of secrecy concerning said application. In re The Bullock Electric Manufacturing Company, C. D. 1907, 129 O. G. 1611. 15. Such petitions should be accompanied by a certificate of the court before whom a suit is pending. Id. 16. Where an application has been aban- doned a long time, service of petition to in- spect upon the attorney of record is not suffi- cient, but service should be made upon the owner of the invention, whether applicant or assignee. Id. 17. A reference in a patent to an application is not sufficient to justify allowing copies of the application to be made where the reference is not of such a nature as to indicate that it was relied upon for any purpose in the pro- ceeding eventuating in the patent. In re Commercial Mica Company, C. D. 1907, 129 O. G. 479. 18. Petition to have such copies made de- nied in the absence of a certificate of the court before whom the suit is pending. Id. 19. Where suit is brought on a patent the file-wrapper of which shows that all the claims thereof were the allowed claims of a prior application belonging to the same assignee, which were transferred to the patented appli- cation, the prior application at the same time being formally abandoned, and the only dis- ADMINISTRATORS AND EXECUTORS. 23 cussion of the merits of the claims was in the prior application, Held, that the defendants are entitled to inspect and obtain copies of the prior application if it can be identified by the office, although neither the patent itself nor the file-wrapper identifies it by the name of the applicant, the serial number, or the date of filing. In re Vacuum Specialty Company, C. D. 1909, 142 O. G. 1114. 20. Where suit is brought on a patent the record of which shows that one of the claims thereof was allowed in a prior application belonging to the same assignee and was trans- ferred to the application on which the patent was granted. Held, that the defendants are entitled to inspect and obtain copies of said prior application. In re Marvin Estate Com- pany, C. D. 1909, 148 O. G. 571. II. Revival of. 1. The commissioner has no discretion in reviving an abandoned application unless it appears to him that the abandonment was caused by unavoidable delay, and that means by circumstances beyond the control of the applicant. Ex parte Beecher, C. D. 1902, 101 O. G. 1132. 2. Where an amendment is presented which is refused admission because it would necessi- tate a requirement for division and it appears from the record that the applicant was acting in good faith in the effort to advance the case and that the claims are not plainly for two inventions and the applicant promptly cor- rects the error. Held, that the commissioner is warranted in holding under the authority vested in him by law that the case is not abandoned through a lack of proper prosecu- tion. E.x parte McGenniss, C. D. 1902, 101 O. G. 2075. 3. Where an assignee asks to have an aban- doned application revived as a pending appli- cation on the ground that the delay in taking action was unavoidable, but offers no excuse for the first nine months of the delay. Held, that the petition should be denied. Ex parte Miller, C. D. 1903, 105 O. G. 257. 4. An abandoned application cannot be re- vived in the absence of an amendment or such other action as the condition of the case re- quires. The delay in taking action must have been unavoidable, and this cannot be deter- mined until the action is taken. Id. 5. Where an applicant is notified that his application is prima facie abandoned for fail- ure to act within the statutory period of one year and he delays presenting a petition for revival for one year and a half thereafter without excuse. Held, that the petition will be denied. Ex parte Naef, C. D. 1905, 115 O. G. 1583. 6. The showing to warrant the revival of an abandoned case must include a sufficient excuse for the delay after the expiration of the year allowed by law as well as that before. Id. 7. Section 4894, Revised Statutes, does not authorize the commissioner to set aside a formal abandonment of the application filed by the applicant with the concurrence of his assignee. Ex parte Hirth, C. D. 1908, 137 O. G. 977. 8. In a petition to revive an abandoned ap- plication the bare statement of counsel as to the existence of facts which would excuse the delay is insufficient. A verified showing has been uniformly held by the office as requisite to the revival of an abandoned application, except where the records of the office disclose a reason for the delay. Ex parte De Forest and Horton, C. D. 1909, 141 O. G. 566. ADMINISTEATOES AND EXECUTORS... 1. Legal notice not having been given to representative of a deceased inventor and such representative not having waived notice, he is not bound by interference proceedings or by an adverse decision on the question of priority. Ex parte Woodworth, C. D. 1898, 8t O. G. 811. 2. Where an application was filed by a party as an administrator of the estate of a de- ceased person, unaccompanied by letters of administration duly taken out in the United States, Held, that said application has no standing in the patent office. (Ex parte Ran- some, C. D. 1870, 143, cited.) Ex parte Lan- gen, C. D. 1899, 87 O. G. 697. 3. The fact that such an application had been given a serial number and that oral in- structions had been given to forward it for examination does not make it a legal appli- cation or relieve the applicant or his attor- ney from the responsibility of filing an appli- cation by an administrator duly appointed in this country, so as not to be affected by the statute which prohibits the grant of a patent in this country when a foreign patent had been obtained on an application filed more than 24 ADMINISTRATORS AND EXECUTORS. seven months prior to the filing of the ap- plication in this country. Id. 4. As said appHcation has no standing, an administrator appointed in this country after the application is tiled cannot be substituted for the present applicant or be permitted to sign the application nunc pro tunc, as the ap- plication would then lack the oath of the proper administration and would not be a com- plete application until such oath was filed. Id. 5. Where assignments executed by the ex- ecutor of pending applications are filed for record, together with a request that the pat- ents issue to the assignee, and attached to each assignment is a certificate of the United States consul that the executor was properly appointed, but no certified copy of letters testamentary has been filed, Held, that the as- of the proper fees, but that the patents would not issue to the assignee in the absence of a certified copy of letters testamentary properly authenticated, as provided in section 4896, Re- vised Statutes. In re Pilgrim Paper Company, C. D. 1900, 125 O. G. 993. 6. Where papers were filed signed by two alleged executors of the estate of the de- ceased applicant, together with copies of what purport to be commissions signed by the clerk of the state district court where the applicant resided, empowering them to act as executors within the state, Held, not to be sufficient proof of the genuineness of the executor's commissions and that the proper way to prove the authority of executors and administrators to intervene in the prosecution of applications for patents is by a certified copy of letters testamentary or letters of administration signed by an afficer of the court authenticated by the seal of the court. Ex parte Rogers, C. D. 1906, 125 O. G. 2766. 7. Where the alleged executors have filed, as evidence of their authority, a certified copy of the order approving the will. Held, that said order does not specify the scope of the authority of the persons who seek to inter- vene and that inasmuch as the appointment of an executor may be limited as to the time when the person appointed shall begin or when he shall cease to be executor, or as to where the executor shall act, or as to the sub- ject-matter over which the executorial power is to be exercised it is necessary that the scope of the authority of the executor be proved. Id. 8. Section 4890 of the Revised Statutes is not interpreted to mean that the certificate of a diplomatic or consular officer of the United States is necessarily all the proof re- quired as to the authority of a foreign ex- ecutor or administrator; but, on the contrary, it is construed to mean that such evidence is essential in addition to such other evidence as may be deemed necessary. A certified copy of the letters testamentary are required in the case of a domestic executor or adminis- trator in order that the office can determine the powers conferred upon the executor or ad- ministrator, and it is not to be supposed that the proof should be any less rigid in the case of a foreign executor or administrator. In re Pilgrim Paper Company, C. D. 1906, 125 O. G. 993. 9. Where it appears that the applicant, who was a subject of the Emperor of Germany and resided in Germany, is dead and application is made by Mrs. Neidenfiihr, his alleged ad- ministratrix, to prosecute the application. Held, that in addition to a properly-authen- ticated certificate of inheritance there should be filed either a certificate of a German court of record that Mrs. Neidenfiihr is entitled to administer the estate, such certificate being properly proved by the certificate of a consular or diplomatic officer, or else a formal state- ment to that effect from the German embassy or the German consulate. Ex parte Nieden- fiihr, C. D. 1907, 130 O. G. 981. 10. The administratrix of a deceased appli- cant held, to be entitled to control the prose- cution of the application to the exclusion of the assignee where the assignment does not contain a request that the patent issue to the assignee, notwithstanding the fact that the petition accompanying the application contains such a request. In re Wetmore and Jennner, C. D. 1910, 155 O. G. 799. 11. Where a label is sought to be registered by the executor or administrator of the es- tate of the owner of the label, proof of the authority of such executor or administrator should be filed for record in the office, as re- quired by Order No. 1838, with reference to patents. Ex parte Yankauer, Yankauer & Yankauer, C. D. 1911, 170 O. G. 927. AFFIDAVITS. I. In General. II. To Overcome References. III. To Obtain Interference. AFFIDAVITS, I, II. 25 I. In General. 1. Where the claims in an application have not been rejected, Held, that affidavits upon the patentability of the device are not in order. Ex parte Robinson, C. D. 1905, 115 O. G. 1584. 2. Where affidavits are filed comparing the applicant's device with other devices not re- ferred to by the examiner or otherwise made pertinent to the case. Held, that such affidavits are inconsequential to the patentability of the applicant's device and will be refused admis- sion to the case. Id. 3. Held, that affidavits going to show the practical success of the applicant's device where the truth thereof is substantially con- ceded are entitled to material weight in view of the fact that the grant of a patent confers no absolute right of property and in view of the customary rule of resolving ordinary doubts in favor of applicants. *In re Thom- son, C. D. 1906, 120 O. G. 2756. 4. Where affidavits are filed containing gen- eral expressions of opinion in respect of the patentability of claims, Held, that they are en- titled to no weight. *In re Garrett, C. D. 1906, 123 O. G. 1047. II. To Overcome References. 6. Upon the requirement of an examiner that an applicant present, in addition to his own affidavits, affidavits of third parties, Held, that the question raised is reviewable by peti- tion to the commissioner. Ex parte Johnson, C. D. 1899, 89 O. G. 1341. 6. Held, further, that such requirement is unauthorized, as Rule 75 does not provide in terms for corroborative affidavits. If, how- ever, the examiner believes that an applicant's affidavit is fraudulent and so charges, the ap- plicant should be given leave to tile corrobora- tive affidavits. (Ex parte Hurlbut, C. D. 1890, 135, 52 O. G. 1062, cited.) Id. T- When objections to the sufficiency of an affidavit to overcome a rejection based upon a prior patent are raised by the examiner, the question presented goes to the merits, and an appeal lies in the first instance to the exam- iners-in-chief. (Ex parte Boyer, C. D. 1889, 249, 49 O. G. 1985, cited.) Id. 8. From an e.xaminer's requirement that the original model, structure, or drawing, referred to in an affidavit filed under the provisions of Rule 75, be produced, petition may be taken to the commissioner. Id. 9. An affidavit to overcome a prior printed publication or foreign patent disclosing the invention or a United States patent disclosing, but not claiming, the invention must show in- vention in this country before the date of the reference. Acts performed abroad are not pertinent. Ex parte Grosselin, C. D. 1901, 97 O. G. 2977. 10. Where an applicant is rejected upon a prior German patent disclosing the invention and attempts to overcome it as a reference by affidavits tending to show that he made the invention in France before its date. Held, that the affidavits are incompetent for the purpose, since they do not tend to show that a knowl- edge of the invention was introduced into this country. Id. II- Held, that Rule 75, which requires a showing of invention in this country, is not in conflict with section 4886 of the Revised Statutes and is in accord with section 4923, which provides that knowledge or use abroad is not to be considered. Id. 12. Where the affidavit of the inventor under Rule 75 cannot be procured, the affidavits of the assignees and other parties may be re- ceived as competent evidence. Ex parte Fos- ter, C. D. 1903, 105 O. G. 261. 13. Rule 75 says that the affidavit of the inventor alone is sufficient to overcome a ref- erence cited; but it does not say that the reference cannot be overcome in any other way. Id. 14. Where no affidavit by the inventor is filed, the question what amount of proof will be regarded as sufficient to overcome a refer- ence cited is a matter to be determined by the tribunal passing upon the case. Id. 15. The essential thing to be shown under Rule 75 is priority of invention, and this may be done by any satisfactory evidence of the fact. Id. 16- A petition from the examiner's action holding that applicant's prior patent cannot be overcome as a reference by an affidavit under Rule 75 dismissed. The matter is ap- pealable to the examiners-in-chief. Ex parte Marsteller, C. D. 1905, 118 O. G. 2250. 17. Where testimony in an interference pro- ceeding is relied upon by an applicant in place of affidavits under Rule 75 to overcome the effect of a reference, Held, that such tes- timony should be considered by the primary examiner and that the decisions of the inter- ference tribunals need be followed only when the decisions indicate a finding that the appli- so AFFIDAVITS, III-AMENDMENT, I. cant is not entitled to any earlier date of in- vention than those found. Ex parte Roman, C. D. 1!H).-), 117 O. G. 2088. 18. Held, that in view of the great amount of work before the examiner an appHcant should not expect the examiner to consider the entire interference record to see if there is something therein to establish the date desired, but it is the duty of the applicant signments would be recorded upon payment to specifically point out the portion relied upon in place of an affidavit under Rule 7."). Id. 19. Where claims are rejected on the ground of non-invention, affidavits offered in response to such rejection concerning the merits and efficiency of that for which a patent is sought will be admitted. Ex parte Robinson, C. D. 190.-,, 11.-, O. G. 1384. 20. After a claim has been finally rejected on several references an antedating affidavit under Rule 75 fending to overcome one of the references cannot be admitted. Ex parte Berg, C. D. 1906, 120 O. G. 903. 21. Where affidavits are offered as evidence that the rejection of the claims by the pri- mary examiner was erroneous, they should ordinarily be submitted to the primary ex- aminer before the prosecution of the case before him has been closed by final rejection or appeal ; otherwise they should be accom- panied by a verified showing of reasons for the delay, similar to that required under Rule 68. Ex parte Peirce, C. D. 190G, 121 O. G. 1347. 22. In order to overcome by affidavit, under Rule 75, a patent which shows but does not claim the invention covered by the applicant, the applicant must state, on oath, facts show- ing either that a reduction to practice had been made before the filing of the application on which the patent was granted or that the invention had been conceived before that time and by due diligence connected with a subse- quent reduction to practice. Ex parte Gasser, C. D. 1880, 94, 17 O. G. 507; Ex parte Saun- ders, C. D. 1883, 23, 23 O. G. 1324; Ex parte Donovan, C. D. 1890, 109, 53 O. G. 309; Ex parte Hunter, C. D. 1889, 218, 49 O. G. 733. Ex parte McElroy, C. D. 1909, 140 O. G. 1307. 23. The filing of an incomplete application does not constitute a "completion of the in- vention" within the meaning of Rule 75, as no patent can be granted on an application until it is completed. Id. 24. Where claims have been finally rejected on references, antedating affidavits under Rule 75 cannot be admitted in the absence of a good and sufficient showing, duly verified, why they were not earlier presented. Ex parte Romunder, C. D. 1910, 157 O. G. 209. III. To Obtain Interference. 25. Where some of the claims of an appli- tion interfere with claims in a patent granted on a copending application, Held, that an in- terference should be declared without first requiring the applicant to overcome that patent as a reference for the claims which do not interfere by an affidavit under Rule 75. Ex parte Sorlle, C. D. 1900, 90 O. G. 2133. 26. Where an interference exists between claims in an application and a patent, the question as to the patentability of the appli- cant's non-interfering claims over that patent is not a preliminary question, but is one which may be determined by the interference pro- ceedings, since the evidence may show which was the prior inventor of that matter and take the place of the affidavit under Rule 75. Id. 27. The only reason for accepting in any case an ex parte affidavit as sufficient to over- come a patent cited as a reference is that an interference cannot be declared between the parties by reason of the fact that there are no interfering claims. If the matter can be settled in inter partes proceedings, that is obviously the better way of determining it. Id. AMENDMENT. (See Drawincs; Amendment.) I. In General. II. New Matter. III. Election, Division, Shifting Ground, Etc. IV. After Final Rejection. (a) 7)1 General. (b) Permitted. V. After Appeal. VI. After Allowance. VII. Upon Recommendation of Examiners- in-Chief or Commissioner. I. In General. 1- When the letter accompanying a substi- tute specification specifically requested that i^ AMENDMENT, II. 87 be substituted for one forming part of an in- complete application, Held, that there was no mistake by the office in entering it as an amendment and not as part of a new applica- tion. Ex parte Arakelion, C. D. 1898, 85 O. G. 1077. 2. It is a well-settled and long-established practice of the patent office to allow amend- ments to applications to be made under proper circumstances to supply omissions and defects in the original specifications and claims as filed which have occurred by mistake, over- sight, or inadvertence, or want of the requi- site skill in the preparation and presentation of cases to the office, and the making of such amendments should not be allowed to operate to the prejudice of the claims of applicants, if made in due and reasonable time and in good faith. *llulett v. Long, C. D. 18U9, 89 O. G. 1141. 3. When an amendment is presented con- taining matters which in the opinion of the examiner are both admissible and inadmis- sible, Held, that inasmuch as the entire amend- ment cannot be entered no part of it should be, and the action of the examiner refusing to enter the entire amendment was correct. (Ex parte Stern, 59 MS. Dec, 254.) Ex parte Pugh, C. D. 1901, 96 O. G. 842. 4. Where an amendment is suggested by the examiner to be made to a claim on the ground that the claim would be clearer and it appears that the claim if amended would be clearer in the sense that it would be more specific, Held, that inasmuch as the question whether or not the amendment should be made can only be determined by a consideration of the state of the art it is therefore a question in- volving the merits and should be determined in the first instance by the e.xaminers-in-chief. Ex parte Morse, C. D. 1901, 97 O. G. 2982. 5. An applicant has a right to add claims by amendment to cover matter which is disclosed in his drawings, but not originally claimed, where the original specifications refer to such matter as an essential part of the construc- tion sought to be patented. *Phillips v. Sen- senich, C. D. 190S, i:!4 O. G. 1806. 6. A substitute specification is objectionable and in general should not be filed unless re- quired by the office in view of the number or nature of the amendments to the original specification. Ex parte Orewiler, C. D. 1911, 170 O. G. 481. II. New Matter. 7. Where an amendment was objected to by the examiner on the ground that it con- tained new matter and the claims which de- pended on the disclosure contained in the amendment for their support were rejected and no reconsideration of the examiner's ac- tion was asked for by the applicant, but peti- tion was taken to the commissioner. Held, that the question raised by the petition is one affecting the merits, and applicant's course under the rule is to ask reconsideration of the examiner's action, and if upon reconsid- eration the examiner adheres to the rejection appeal lies to the examiners-in-chief, as the question is one which may not be brought to the commissioner by petition. Ex parte Cou- sens, C. D. 1898, 84 O. G. 1433. 8. When an incomplete application is on file, including petition, specification, and oath, new matter cannot properly be inserted by amend- ment, but must be presented as a new applica- tion supported by a new oath. Ex parte Arakelion, C. D. 1898, 85 O. G. 1077. 9. A misapprehension by the applicant as to the office rules cannot justify a disregard of the rule against the allowance, in a case of matter involving a departure from the orig- inal disclosure. Id. 10. So long as an application is pending be- fore this office the applicant may be permitted to amend in the direction of broadening the statement of his invention, provided he does not change the invention on which that state- ment is based, and if his specification and claims as filed do not adequately express the full breadth of his invention he may amend in such way as to secure full protection. Ex parte Mollis, C. D. 1899, 86 O. G. 489. 11. The question whether or not matter sought to be introduced into a pending appli- cation is to be refused as new matter is quite a different question from the question whether or not such matter may be introduced in a reissue application. Id. 12. The insertion by amendment in an orig- inal application of the term "preferably" in describing the structure of certain features should be permitted, and cannot properly be objected to as involving a departure from the original disclosure. Id. 13. Where the original application showed and described a cylinder as inclined, and stated that the inclination may be changed to increase or diminish the feed, Held, that this furnishes 28 AMENDMENT, II. no basis for an amendment stating that it is important that the base of tlie cylinder should be level. Ex parte Welch, C. D. 1900, 93 O. G. 2105. 14. Where matter held to constitute a depar- ture from the original disclosure is involved in the merits of the claims, Held, that the question will not be reviewed on petition, but is appealable to the examiners-in-chief. Id. 15. Where certain features are merely addi- tional and unnecessary elements which may or may not be used, and where their omission does not change in any way the function and operation of the other parts of the device, Jleld, that their omission from the application does not involve new matter. Ex parte Smith and Hoyland, C. D. 1900, 93 O. G. 939. 16. Where a party cannot be permitted to omit from his case a certain element disclosed, since its omission would change the function and operation of the other parts and thereby produce a new^ invention involving a depar- ture from the original disclosure. Held, that a claim omitting that element cannot be en- tered and allowed after final decision on the merits where a claim including it was held unpatentable. Ex parte Hummel, C. D. 1901, 94 O. G. 583. 17. Where the examiner is of the opinion that a claim presented by amendment involves a departure from the original disclosure, he should enter the amendment and reject the claim. Ex parte Keith, C. D. 1901, 97 O. G. 551. 18. Where a device though clearly shown and described is said by applicant to be in- operative and in order to make the device op- erative a radical change in the construction shown and in the description thereof is re- quired. Held, that under the rules of this of- fice such a change cannot be made by amend- ment. (Citing ex parte Delbey, ante, 103, 9G O. G. 1240.) Ex parte Clay, C. D. 1901, 97 O. G. 2980. 19. Where in his original application for a patent the inventor described one purpose for his invention and subsequently by amend- ment stated an additional purpose, Held, that the amendment was proper and that the patent is not confined to use for the purpose first stated, d Singer Manufacturing Company v. Cramer, C. D. 1901, 97 O. G. 552. 20. An inventor is not circumscribed by the words which he may first use to describe the advantages of his invention, but he may as- sert and maintain all the advantages which his device possesses, d Id. 21. Held, that the vague and general state- ment that a coil-spring could be substituted for the spring shown without specifying the arrangement does not furnish a basis for claiming a particular arrangement which can be made by the use of coil-springs when it ap- pears that other arrangements could be made. Brill and Brill v. Hunter. C. D. 1901, 96 O. G. 641. 22. Where in the answer to a petition brought on another point the examiner calls attention to a certain amendment made to the specification and states that if retained in the case he will be compelled to reject the claim which now stands allowed, as in his opinion the alleged new matter affects the claim. Held, that as this question relates to the merits of the case and is therefore appealable in the first instance to the examiners-in-chief no opinion in regard to it is expressed. Ex parte Henry, C. D. 1902, 99 O. G. 1170. 23. Where an application as filed discloses several specific forms of the same generic invention. Held, that an amendment cannot properly be made disclosing another specific form although it embodies the generic in- vention. Ex parte Hoegh, C. D. 1902, 100 O. G. 453. 24. The requirement of the statute that an applicant disclose the best mode of applying his invention does not warrant an amendment to an application disclosing a different form of the invention from that contained in the application as originally filed. Id. 25. Where the examiner is of the opinion that certain descriptive matter inserted by amendment and included in a claim is not warranted by the original disclosure. Held, that he should reject the claim. Ex parte Howlett, C. D. 1902, 100 O. G. 2775. 26. Where two parts were originally shown and described as made separately and fasten- ed together detachably, but so as to have no relative movement in operation, Held, that an amendment stating that they are "practically integral" is inaccurate and involves new mat- ter. Ex parte Kieflfer, C. D. 1902, 101 O. G. 449. 27. Where an element performs several functions in the machine. Held, that an amendment stating that its sole function is to form a bearing is inaccurate and involves new matter. Id. AMENDMENT, 11. 29 28. Where the parts as described will not operate as stated and it appears from the whole case that through a clerical error the parts were misnamed, Held, that an amend- ment correcting the error does not involve new matter and that an additional view may be added to the drawing showing the con- struction more clearly. E.x parte Larson, C. D. 1902, 101 O. G. 2.")6S. 29. When an amendment is presented con- taining a new description and claims or de- scriptive matter affecting the claims which is regarded as a departure from the invention originally disclosed. Held, that the amend- ment should be entered in the application and the claims rejected on the ground of new matter. (Ex parte Harvey, C. D. 1892, 47, ,58 O. G. 1257.) Ex parte Furness, C. D. 1903, 104 O. G. 16.55. 30. Matter cannot be read into a case or inserted by amendment merely because it was invented before the application was filed and was intended to be included. Dow v. Con- verse, C. D. 1903, 106 O. G. 2291. 31. Where an applicant presents an amend- ment including new matter and the claims are rejected for that reason and he seeks to over- come the rejection by a request that the filing date of the application be changed to the date of the amendment. Held, that his request will be denied. Ex parte Kinney, C. D. 1904, 110 O. G. 223.5. 32. Where the claims differ from the orig- inal disclosure in the application in the same respects that they differ from the disclosure in a prior patent cited as a reference, Held, that the differences either constitute new mat- ter or are necessary inferences from the first disclosure and that the claims are not patent- able. Ex parte Carpenter, C. D. 1904, 110 O. G. 2233. 33. Where the applicant shows a ball-re- tainer having a ring-shaped base provided with vertical standards on both edges and to secure an interference with a patent he copies a claim thereof covering standards "springing from one edge thereof only," Held, that the claim includes new matter and cannot be al- lowed. Ex parte Dilg, C. D. 1904, 112 O. G. 933. 34. Where an application upon a printing press disclosed several sets of printing mechanism, two folders, means for deliv- ering the webs from certain mechanisms to one folder and from other mechanisms to the other folder, and means for delivering all of the webs to one folder when desired, but did not originally disclose means by which all of the webs could be sent to the other folder or state that such an operation was contemplated, Held, that amendments stating that all the webs may be sent to either folder at will and disclosing means to accomplish this result constitute new matter, and that the application cannot be allowed with such matter in it under well-established practice. Ex parte Scott, C. D. 1905, 114 O. G. 260. 35. Where an application upon a printing press when filed failed to disclose means to silence a folder while its corresponding sets of printing mechanism are in operation. Held, that the reference to such means in the amended specification and the illustration thereof constitute new matter. Id. 36. Where the application as filed disclosed one folder and one powershaft for two sets of printing mechanism. Held that amendments disclosing separate folders and power shafts for each printing mechanism constitute new matter. Id. 37. Held, that ex parte Hollis (C. D. 1899, 10, 86 O. G. 489) does not apply to a case where it is sought by amendment to intro- duce additional structure into an application, as the amendment which was found not to be new matter in Ex parte Hollis merely changed the words used in describing the structure originally disclosed. Id. 38. The applicant's contention that he has the right to amend the original disclosure by the addition thereto of specific structure if the additional structure is not novel and falls within the scope of general statements in the original specification is not supported by au- thority, and the fallacy thereof is very ap- parent when it is considered that the patent- ability of combination claims drawn to include the added parts would be independent of the novelty of these parts. Id. 39. Where the amended application presents new matter, the exact meaning of the terms of the claims to be adopted in determining whether the claims involve new matter must be derived from the description and drawings in their amended form. Id. 40. Where claims contained matter not orig- inally disclosed which the applicant contended was not a departure from the original inven- tion, but a mere obvious extension thereof and duplication of parts originally shown. Held, that if this contention were sound it would follow that the claims involved mere aggrega- 30 AMENDMENT, II. tion and that in any event they were not al- lowable in that application. Id. 41. Where the examiner objects to claims presented on amendment on the ground that they include new matter and do not cover proper processes, Held, that he should enter the claims and reject them. Ex parte Smyth, C. D. 190.-., 114 O. G. 762. 42. New matter cannot be inserted in a case by amendment simply because the inven- tion originally shown is inoperative and the amendment will make it operative. (Ex parte Snyder, C. D. 1882, 22, 22 O. G. 1975, con- strued.) Ex parte Willitts, C. D. 1903, 115 O. G. 1064. 43. The patent cannot include new matter, but must be limited to the disclosure in the original application. Other improvements cannot be included, whether they are intended to make the device operative or merely to make it perform its functions better. Id. 44. Mere clerical or draftsman's errors may be corrected where the errors are clear from the application itself ; but changes cannot be made in the application based upon allega- tions of fact not shown by the record. Id. 45. An applicant in his endeavor to protect his invention may amend the specification and claims so long as he keeps within the require- ments of the statutes and the rules of the patent office ; but he cannot be permitted at any time to introduce new matter into his application and obtain therefor a date as of the date of the original application. *In re Dilg, C. D. 190.5, 115 O. G. 1067. 46. Held, that the commissioner was right in rejecting the appellant's claims to a ball- retaining ring, because they do not correctly describe his invention, but include new matter borrowed from a patent granted to another party. *Id. 47. Where the appellant originally disclosed standards springing from both edges of the annular base and according to the original dis- closure both were necessary. Held, that an amendment claiming a base having standards springing from one edge only involves new matter. *Id. 48. Where the original case disclosed the top pieces of the standards with straight sides, Held, that an amendment stating that those top pieces are sector-shaped or flaring involves new matter. *Id. 49. Where a claim inserted by amendment includes matter not originally disclosed. Held, that if the change from the original is an ob- vious one which would occur to anyone it is not patentable, and if it is not obvious it in- volves new matter. In re Scott, C. D. 1905, 117 O. G. 278. 50. Where the original specification of an application relating to combined type-writing and adding machines did not describe the add- ing machine, but stated that the invention was illustrated "in connection with an adding ma- chine of the class known as 'registering ac- countants,' " and only the case and a few minor elements thereof were shown in the drawings. Held that an amendment of the ap- plication reciting a patent disclosing the con- struction referred to by the words "register- ing accountants" did not constitute a depar- ture from the original disclosure in view of evidence showing that such term referred to a construction well known in the market em- bodying the construction of the patent and that such construction was the only one on the market which had the distinctive appear- ance illustrated in the original drawing. Held, further, that such party had a right to make claims to a combination including specific ele- ments of such adding machine. Hopkins v. Newman, C. D. 1907, 131 O. G. 1161. 51. A claim for a latch mounted upon a mold-blade section of a type mold. Held, to cover matter not within the original disclosure, the words "mounted upon" not being properly descriptive of a part which merely rides in or over another in a slot for the purpose. *In re Duncan, Prichard, and Macauley, C. D. 1907, 126 O. G. 2.592. 52. The statement in the original specifica- tion that "I am aware of several modified forms of my invention, but deem it unneces- sary to illustrate and describe the same in detail" does not warrant the insertion by amendment of descriptions and illustrations of species different from that originally dis- closed. Ex parte Chaffee, C. D. 1908, 137 O. G. 1941. 53. Where an application as originally filed did not differentiate from the prior art either in construction .or theory of operation and an amendment thereto was filed, without verifica- tion by the inventor, introducing a new theory of operation and containing process claims covering such theory, such claims are in- valid as covering new matter. **Steward et al. V. American Lava Company et al. ; Kirch- berger et al. v. American Lava Company et al., C. D. 1909, 149 O. G. 602. AMENDMENT, III. 31 54. Where an original claim in an applica- tion is not indefinite, but is objected to by the examiner on the ground that it suggests a variation not disclosed in the original spec- ification and drawings. Held, that either the objection is unfounded or the claim is suffi- cient basis for an amendment to the showing to make it correspond with the modification suggested in the claim. Ex parte Gugler, C. D. 1910, 160 O. G. 775. 55. Where a certain change in the specifica- tion held to constitute new matter is involved in a requirement for division, such question will not be reviewed on petition, but is appeal- able to the examiners-in-chief. Ex parte Fadem and Herman, C. D. 1910, 155 O. G. 553. 56. A claim for a composition comprising gelatin, glycerin, and bone-meal. Held, prop- erly refused on the ground that it was not dis- closed in the application as filed, which de- scribed the composition as consisting of gela- tin, glycerin, and an oxygenated solution. *In re Mraz, C. D. 1911, 164 O. G. 978. 57. Where the claims called for "ketonic finish-softening material," "aromatic finish- softening material," etc., as one element of a composition of matter and acetone was the only substance of this kind specified in the original disclosure. Held, that there was no presumption that ketones generally could be used and that the claims were properly re- jected as broader than the disclosed inven- tion (citing the Incandescent Lamp Patent, 159 U. S. 465). *In re Dosselman and Ney- mann, C. D. 1911, 167 O. G. 983. III. Election, Division, Shifting Ground, Etc. 58. An applicant has no right to have an allowable claim drawn to a species alternative to that of other claim and presented by amend- ment after the rejection of such other claims considered. He is bound by his election of species. Ex parte Noble, C. D. 1898, 84 O. G. 1144. 59. An amendment should not be entered when its entry would necessitate the require- ment of division. E.x parte Richter, C. D. 1898, 85 O. G. 1908. 60. When the primary examiner required a division, holding that the claims covered two independent inventions, and applicant com- plied by erasing the claims as to one inven- tion. Held, that having his election as to which invention he would claim, applicant is estopped from recalling it, the claims remaining in the case now being under rejection. Ex parte Clausen, C. D. 1809, 88 O. G. 2242. 61. Where an amendment is presented which in the opinion of the examiner covers two distinct and independent inventions, he should not admit it until the question of division has been disposed of. (Ex parte Bailey, C. D. 1890, 123, 53 O. G. 608, and Ex parte Richter, C. D., 1898, 276, 85 O. G. 1908.) Ex parte Murmann, C. D. 1900, 93 O. G. 1721. 62. Where an amendment is filed which pro- poses to cancel all the claims and substitute others which the examiner states cover two distinct inventions, neither of which is ex- aminable in his division, he should not admit the amendment and require division, but he should transfer the application so that the examiner to whom it is transferred may com- ply with the practice of the office and give the applicant an intelligent cursory examina- tion to aid him in dividing. Id. 63. The applicant having prosecuted his claims for a process is as much bound by his election as though he had originally presented claims for a process and an implement or ap- paratus and upon requirement for division had elected to prosecute the process claims. Ex parte Aberli, C. D. 1900, 91 O. G. 2371. 64. To permit this applicant now to present claims in this application for a device, as recommended by the examincrs-in-chief, would be an evasion of Rule 41 and not an advisable precedent to establish. Id. 65. Where division is required and the party limits the claims to one of the inventions, he will not after those claims have been rejected be permitted to shift his ground to the other invention. Ex parte Randall and Luck, C. D. 1901, 95 O. G. 2063. 66. It is the duty of examiners in requiring division to cite such references and give such information in regard to the patentability of the claims as they possess without making an extended search ; but such action is not intend- ed as an absolute guide to the applicant, and the fact that other references are found fur- nishes no good reason for permitting him to shift his ground after making his election. Id. 67. A party is not entitled to present and prosecute two independent inventions in one application, and where such inventions are presented by amendment the procedure is sim- plified by a refusal to enter it instead of enter- 33 AMENDMENT, III. ing it and immediately requiring division. Ex parte Tschirner, C. D. 1901, 97 O. G. 187. 68. Where in response to a requirement of division between claims for a knot-forming mechanism and claims for a tension device applicant filed an amendment which would put the claims for the tension device in the form of claims for the tension device in combina- tion with the knot-forming device, Held, that the amendment should be entered. Ex parte Kugler. C. D. 1902, 98 O. G. 2173. 69. The operation of the rule quoted in ex parte Brownell (C. D. 1901, 30, 94 O. G. 98S) does not require that such amendment be re- fused admission. Ex parte Brownell com- mented on and explained. Id. 70. An amendment containing claims for a process should not be entered in an applica- tion containing claims for an apparatus, be- cause division would be necessitated by such entry under the provisions of Rule 41. Ex parte Osborne, C. D. 1902, 98 O. G. 2363. 71. Where the examiner rejects the claims and in reply the applicant requests reconsid- eration and presents an argument responsive to the examiner's action and at the same time presents as an amendment a new claim drawn to a different invention, Held, that the amend- ment should not be entered, but that the ex- aminer should act upon the claims already in the case in view of the argument presented. Ex parte Scott, C. D. 1902, 100 O. G. 681. 72. Where an amendment to the claims is made in response to a rejection. Held, that it cannot be refused admission upon the ground that it would necessitate a requirement for division where it introduces no new question of division and merely leaves open the re- quirement previously made. Ex parte Cham- berlain, C. D. 1902, 101 O. G. 447. 73. Where a party has presented claims to and received an action from the office in re- gard to one invention he will not be permitted to shift his ground and present claims in the same case to a different invention. E.x parte Swantusch, C. D. 1902, 101 O. G. 1129. 74. Where a party has two claims, one drawn to a washing-machine and the other to the same machine in combination with a hinge. Held, that he cannot thereafter present sub- stitute claims drawn to the hinge alone. Id. 75. Where the entry of an amendment would render necessary a requirement of divi- sion. Held, that the amendment should not be entered. Ex parte Metzger, C. D. 1902, 101 O. G. 1612. 76. Where an applicant shows and describes two or more forms of an invention, but limits his claims to cover specifically but one of the forms, thereby excluding the other specific form, he is precluded in the prosecution of the application from shifting his ground to a specific claim covering another form. Ex parte Plimpton, C. D. 1902, 101 O. G. 2567. 77. Where an applicant originally shows and describes two or more forms of an invention, but the claims were broad enough to include both forms. Held, that such claims did not include one form to the exclusion of the other and that the applicant may be permitted in the same application to insert claims drawn to cover specifically one of the forms if the state of the art so warrants. So much of the decision ex parte Heaton (C. D. 1879, 95, 15 O. G. 1054) as is inconsistent with the above is overruled. Id. 78. An amendment should not be entered if the inventions claimed therein are such that if the amendment were entered division would have to be required. E.x parte Stocking, C. D. 1902, 101 O. G. 2823. 79. Where the claims in an amendment cov- ered an alleged method of bookkeeping in- volving a particular way of entering records and also specific account-books for entering such records, the two sets of claims covered independent inventions, and the amendment was properly refused entry. Id. 80. After prosecuting claims to the article the applicant is not entitled to shift his ground and claim the process of making it, although the process was disclosed in the application as filed. Ex parte Christensen, C. D. 1903, 105 O. G. 1261. 81. Where an applicant presents generic claims and claims limited to one species, he cannot after action by the office shift his ground and present claims limited to a differ- ent species. Ex parte Maddux, C. D. 1903, 106 O. G. 764. 82. Where after action by the office the ap- plicant presents an amendment shifting his ground from one species to another, Held. that the amendment should be refused admis- sion. Id. 83. Where an application as filed covered an article and the process of making it and after action by the office an amendment is presented embodying claims to the apparatus used in making the article. Held, that the ex- aminer properly refused to enter the amend- AMENDMENT, III. 33 ment. Ex parte Fcrrcll, C. D. 1003, 106 O. G. 766. 84. A party will not be permitted to shift his ground from one invention to another merely because both were disclosed in the ap- plication. After limiting his claims to one invention he is bound by his election. Id. 85. Where an amendment is presented which necessitates the requirement of division, Held. that the amendment should not be entered. Ex parte Tschirncr, C. D. 1901, 141, 97 O. G. 187 ; ex parte Morrison, C. D. 1902, 226, 99 O. G. 2969. Ex parte Gaily, C. D. 1903, 107 O. G. 1660. 86. Where a claim is drawn to cover a me- chanical movement and that claim is amended by inserting at the beginning of the same a descriptive phrase indicating the nature of the machine in which the invention is to be used, Held, that the status of the claim is not changed by such an amendment. Id. 87. Where specific claims to one form of the invention are originally filed and subse- quently canceled in view of references, an ap- plicant is not entitled to present in the same case specific claims for the other form. Ex parte Cram, C. D. 19U3, 102 O. G. 227. 88. Where it is quite difficult to determine with certainty whether the original claims are specific to one form of the invention or whether they are broad claims covering both forms and there is reasonable doubt as to the breadth of the claims, the practice of the of- fice will not suffer if the applicant is subse- quently permitted to make specific claims to one of the forms. Id. 89. Where an amendment is submitted which would necessitate the requirement of division. Held, that the amendment should not be entered. Ex parte Kidde, C. D. 1903. 105 O. G. 1782. 90. Where claims are canceled upon a re- quirement for division and are presented in a separate application. Held, that they cannot properly be reinstated in the original case and considered on appeal. Ex parte Fritts, C. D. 1903, 10.1 O. G. 2059. 91. Where the claims have been rejected as covering "unpatentable aggregations" and the applicant is informed that the invention lies in either one of the specific features claimed, but not in the aggregation of the two. Held. that an amendment canceling certain elements from the claim, so as to confine the claims to one of the specific features, should be entered and acted upon. By such action the appli- 3 cant is not attempting to shift his ground, but is only attempting to limit the claim, so as to avoid the rejection and objection made by the examiner. Ex parte Day, C. D. 1903, 105 O. G. 17S2. 92. An amendment should not be entered if its entry would necessitate a requirement for division, and this applies before action by the office as well as afterward. Ex parte Dubcrn, C. D. 1904, 108 O. G. 1588. 93. The refusal to enter an amendment in- cluding two inventions instead of entering it and requiring its elimination keeps the office records in better shape and affects no sub- stantial rights on the part of the applicant. Id. 94. The entry or refusal to enter an amend- ment including two inventions does not affect the question whether a later application in- cluding one of those inventions is to be con- sidered a division and continuation of the first case, entitling the applicant to the benefit of the original date. Id. 95. Where an amendment is presented in- cluding claims which would necessitate a re- quirement for division. Held, that the amend- ment should be entered, so that the applicant may appeal the question of division to the examiners-in-chief. Ex parte Krause, C. D. 1904, 111 O. G. 1039. 96. Where an applicant has prosecuted claims for one invention, he cannot subse- quently, after final rejection or after that re- jection has been affirmed by an appellate tribu- nal, shift his ground and present for consid- eration in the same application claims for an- other and distinct invention. Ex parte Walk- er, C. D. 1904, 113 O. G. 284. 97. In ex parte Trevette (C. D. 1901, 170, 97 O. G. 1173), where an amendment changing the form of the claims was permitted to be made after rejection, the records clearly showed that both the examiner and e.xaminers- in-chicf were of the opinion that the inven- tion defined in the claims was new, but that the claims were in the wrong form. Such cases are to be distinguished from those where the tribunals of the office are of the opinion that the invention defined in the claims is old, and no objection is made by them to the form of the claims. Id. 98. Where an election is originally made to prosecute claims covering one species, the applicant is not entitled to prose- cute and have considered in the same ap- plication claims to the alternative species, and this practice is not to be changed by the fact 34 AMENDMENT, III. that because of an oversight claims for the second alternative form had been admitted and considered. The office vi\\\ not knowing- ly continue to violate a well-established prac- tice. Ex parte Loewenbach, C. D. 1904, 110 O. G. 837. 99. Since the question whether or not the examiner was right in requiring division is appealable to the examiners-in-chicf, Held, that amendments necessitating the require- ment should be entered, so that the claims in controversy will be properly before the appel- late tribunal. Ex parte Deane, C. D. 1904, 111 O. G. 1937. 100. Where an applicant presents process claims and no objection is made in the record to these claims on the ground that they do not cover true process, but merely cover the function of the apparatus, and the claims are rejected on the ground of anticipation, Held, that the applicant cannot shift his ground after rejection and present claims for an ap- paratus. Ex parte Feld, C. D. 1904, 112 O. G. 252. 101. Where it appears that on the merits of the case the invention is patentable, but the applicant is believed to be presenting claims in the wrong form. Held, that the ap- plicant may be permitted to subsequently change the form of the claims to cover the invention sought to be patented. Ex parte Trevette, C. D. 1901, 170, 97 O. G. 1173. Id. 102. Where division is required, the appli- cant will be permitted to determine for him- self which invention will be retained, unless he is estopped by a previous election to re- tain a particular one. Ex parte Tuttle, C. D. 1904, ll.'l O. G. 1967. 103. Where the application originally con- tained only apparatus claims and after rejec- tion the applicant presented both apparatus and process claims and the examiner required division. Held, that if the requirement for di- vision was proper the applicant must cancel the process claims and not the apparatus claims. Ex parte Lawley, C. D. 1904, 113 O. G. 1967. 104. A party cannot after an examination of the case shift his ground from one invention to another under the guise of electing between two inventions, one of which was claimed for the first time by amendment. Id. 105. Where an amendment is presented in- cluding claims which necessitate a require- ment for division. Held, that the amendment should be entered and the applicant permitted to appeal from the requirement for division. Ex parte Selle, C. D. 1904, 110 O. G. 1728. 106. The practice heretofore of refusing to enter an amendment which would necessitate division was based upon the supposition that the matter was one to be considered on inter- locutory petition, and it has no application now, since the question of division is appeal- able to the examiners-in-chief. Id. 107. Where an applicant by amendment as- serts claims to an independent invention. Held, that the amendment should be entered, but the applicant should be required to cancel the new set of claims instead of being required to elect which set he will retain. Id. 108. Where after prosecuting claims to each of two distinct features the claims to one of these features were voluntarily canceled, but after action upon the merits of the claims to the remaining feature claims to each feature were again presented and the examiner re- quired the claims to the reinstated feature to be canceled. Held, the examiner's action was based upon well-established practice re- garding shifting ground, and if his conclusion that two features are independent inventions is correct, his action refusing consideration upon the merits and requiring cancelation of the claims to the feature proposed for rein- statement was clearly proper. Ex parte Barnes, C. D. 1905, 115 O. G. 247. 109. Where the examiner refused to act upon the merits of a case as amended and required the cancelation of claims on the ground that they were drawn to an invention independent from that which the applicant had elected to prosecute in that case, Held, the question of independence of invention in this case is the same as that which is raised when division is required and must follow the same course of appeals, wherefore the examiner's conclusion upon this question will not be reviewed upon petition. Id. 110. Where the examiner refused further action upon the merits and required the can- celation of claims on the ground that they were for an invention independent from that which the applicant had elected to prosecute in that case, and the applicant contends that, as no requirement for division had been made, he should be permitted to try that question and elect, if necessary, which invention should be retained, Held, the contention is not sound, since the applicant has already elected and since the fact that this election was not made in response to a requirement for division. AMENDMENT, IV, (a). 35 but was voluntary, or even accidental, is im- material. Id. 111. A party cannot be permitted to rein- state claims canceled in view of a requirement for division, and thus reopen a question which was finally disposed of. Ex parte Wick, C. D. 190.J, 117 O. G. 902. 112. Where claims presented by amendment are held by the examiner to be for an inde- pendent invention from that presented in the other claims, Held, that the question of wheth- er the claims are in fact for an independent invention must be settled before applicant can demand an action upon their merits. If for an independent invention, applicant is estopped from prosecuting said claims on their merits in this application, and they should be can- celed. This question is the same as that or- dinarily presented in a requirement for divi- sion, with the exception that in originally presenting and prosecuting claims to one in- vention only applicant has already made his election and has now no choice as to which set of claims he will cancel. (Ex parte Selle, C. D. 1904, 221, 110 O. G. 1728 ; ex parte Tut- tle, C. D. 1904, .537, 113 O. G. 1967.) Ex parte Bullock, C. D. 1907, 127 O. G. 1.580. 113. Where an applicant presents an amend- ment which the examiner holds contains claims for a diflferent invention from that already prosecuted, the amendment should be entered and applicant required to cancel these claims. Ex parte Fast, C. D. 1911, 172 O. G. 552. 114. From the action of the examiner re- quiring the cancelation of claims on the ground that they are for a different invention than that which applicant has elected to prose- cute appeal lies to the examiners-in-chief. Id. 115. Where an application as filed disclosed several inventions, only some of which were claimed, and in response to a requirement for division the claims to all but one of such in- ventions were canceled, Held, that this action constituted an election and that thereafter ap- plicant was entitled to prosecute neither claims to the subject-matter for which claims had been canceled nor claims for the subject- matter not originally claimed. Ex parte Moor- head, C. D. 1911, 173 O. G. 1079. IV. After Final Rejection. (a) In General. 116- .\n additional claim presented after final rejection should not be admitted without the showing of "good and sufficient reasons why it was not earlier presented" required by Rule 68. Ex parte Maynard, C. D. 1898, 84 O. G. 1433. 117. Where the examiner in his first action rejected claim 1 on a British patent and claim '.'• on a United States patent, and in his sec- ond action gave reasons for refusing tlic claims which did not appear in the first ac- tion, viz., that there is no invention in making an ordinary diaphragm with a serrated edge and that the combination recited in claim 3 lacks invention, in view of the British patent, taken in connection with the United States pat- ent, Ih-ld, that new reasons for refusing the claim having been given the application was not under final rejection, under the rules and practice of the office, and the amendment pre- sented after the second action on the case should be admitted. Ex parte Valiquet, C. D. 1899, 89 O. G. 354. 118. Where the examiner's position in the case was fully pointed out before final rejec- tion, and even after such rejection the ex- aminer was willing to admit an amendment for the purpose of petition and appeal, and the attorneys instead of prosecuting the ap- plication by petition or appeal persistently filed amendments and arguments without any pros- pect of inducing the examiner to change his action. Held, that such practice as has been followed by the attorneys in this case is not fair to the office or to applicants who are in good faith prosecuting their applications. The time of an examiner should not be thus wasted where it could be legitimately given to other applicants. E.x parte Dravo and Miller, C. D. 1900, 91 O. G. 4fi0. 119. Held, further, that while an examiner in the treatment of an application will be re- quired to make his actions complete and to respond to all the reasonable requests of at- torneys, yet there is a limit beyond which an examiner should not be asked to go. There should be an end at some time to the prosecu- tion of cases before the examiner — a time when the attorney should petition or appeal if he believes that the examiner was wrong in his action and that the application contains patentable subject-matter. Id. 120. Held, further, that in the present case the applicants have received fair treatment and the examiner has finally rejected the ap- plication. The attorneys when this point was reached wasted their own time and that of the office in their persistence in offering amendments and arguments which they knew 36 AMENDMENT, IV, (a). would not be favorably considered. Such practice on the part of an attorney as appears from the record in this case cannot be too strongly condemned. Id. 121. After fmal rejection amendments were entered for the purpose of appeal and appli- cant was informed that there was nothing patentable disclosed by the application. In- stead, however, of appealing he insisted upon his right to further amend, and upon petition to the commissioner to direct the examiner to further consider amendments, Held, that the application has received all the considera- tion to which it is entitled and that if appli- cant believed the rejected claim to be pat- entable he should have appealed. Ex parte Tiffany, C. D. 1900, 91 O. G. 643. 122. Where an applicant requested that his case be reopened after final rejection for the purpose of further amendment, stating that he believes that upon the grounds upon which he based his request for reconsideration the examiner's position would be overcome, or at least new references would be cited, and that thereby he would not be precluded from fur- ther action in the case, that a final rejection was hardly looked for at such an early stage of the proceedings in the case, and hence when the final rejection was made he took up the case for further careful consideration, where- upon it was found that there was a clear me- chanical difference between applicant's device and the references. Held, that this is not a sufficient excuse for not presenting the pro- posed amendment earlier, and that the appli- cant should have considered the references and made some attempt to amend the claims to overcome them before final rejection. Ex parte Wilier, C. D. 1900, 91 O. G. 1033. 123. }lcld, further, that the reason advanced for reopening the case is one that might be given for reopening many cases in the office under final rejection, and if such request were granted cases could not be properly disposed of, and the work of the office would be thrown behind, to the detriment of those applicants who faithfully comply with the rules of the office. Id. 124. Where applicant urged that as Rule 78 permits amendments affecting the merits of the case to be made even after the allowance of the application, by a parity of reasoning the same rule should hold good in a case which has been finally rejected, if a reasonable show- ing be made. Held, that while it is true that Rule 77 permits amendments to an applica- tion after allowance, yet such amendments are only permitted where it is not necessary to re- open the case for further action on the part of the office. Id. 125. Where an amendment is filed after a final rejection, the same should not be entered unless accompanied by a duly-verified state- ment satisfactorily showing why said amend- ment was not earlier presented. Ex parte Landsing, C. D. 1901, 96 O. G. 2063. 12G. Where an amendment is filed after a final rejection canceling the original claims and inserting in lieu thereof new claims, said new claims differing in scope from the orig- inal claims and not being merely the original claims presented in better form. Held, that the amendment should not be entered for the purpose of appeal. Id. 127. To permit amendments in matters of merits after a final rejection of the claims merely because there are formal objections un- disposed of would defeat the very purpose of the rule, which contemplates that matters of merits will be finally disposed of by the ex- aminer before questions of form will be in- sisted upon. Ex parte Severy, C. D. 1901, 97 O. O. 2743. 128. After a case is under final rejection an amendment inserting or substituting new claims should not be entered unless accom- panied by a duly-verified statement setting forth satisfactory reasons why the amendment was not earlier presented or unless the claims presented differ from those under final re- jection only in the matter of form, and it is requested that they be entered in order that the claims may be in better form for appeal. (Rule 68.) Ex parte Coddington, C. D. 1901, 96 O. G. 1239. 129. When a case is in condition for ap- peal, amendments canceling claims and sub- stituting others therefor can be admitted in two cases — first, when they do not affect the merits, and, second, when they do affect the merits, in which latter case the additional re- quirement is applicable that they must be ac- companied by a showing duly verified of good and sufficient reasons why they were not ear- lier presented. (Rule 68.) Ex parte White, C. D. 1902, 98 O. G. 1969. 130. Where after final rejection new claims differing in substance from those rejected were presented by amendment as substitutes for the purpose of appeal, Held, that the ex- aminer properly refused to enter the amend- ment. Id. AMENDMENT, IV, (a). 37 131. Where after a final rejection, which is regularly and properly given, the applicant wishes to amend and alleges that he did not before properly understand the invention, Held, that he has not shown good and suffi- cient reasons why the amendment was not sooner presented and that it should be refused admission. Ex parte Schmidt, C. D. 1902, 100 O. G. 2602. 132. A party cannot demand the admission of an additional claim after final rejection as placing the case in better form for appeal, since if it differs from other claims it affects the merits. Ex parte Downing, C. D. 1902, 100 O. G. 2176. 133. Where after final rejection the applicant presents by amendment an additional claim which is substantially the same as one of those rejected. Held, that the amendment should not be entered, either with or without the showing referred to in Rule 68, since dupli- cate claims are not permissible. Id. 134. Where the new claims sought to be entered after final rejection are not merely those rejected in better form, but differ as to their merits. Held, that they cannot be ad- mitted under Rule 68 for the purpose of ap- peal. Ex parte Raymond, C. D. 1902, 99 O. G. 1386. 135. Where after a final rejection an amend- ment is presented accompanied by an affi- davit that the proposed claims were not pre- sented sooner because the importance of the features covered thereby had been overlooked, Held, that the showing is insufficient and that the amendment was properly refused admis- sion. Ex parte Nettles, C. D. 1903, 107 O. G. 541. 136. Where after final rejection an allow- able claim is presented by amendment which the examiner enters, Held, that the case re- mains finally rejected and that the entry of the amendment did not reopen it for further prosecution. Ex parte Meacham, C. D. 1904, 113 O. G. 1417. 137. Where an amendment was filed after final dejection containing two new claims and the amendment was not entered by the ex- aminer. Held, that an appeal to the examiners- in-chief on the claims under final rejection should be forwarded to that tribunal. Ex parte Durafort, C. D. 1904, 110 O. G. 2017. 138. Final rejection of the claims is intended to close the consideration of the case upon the merits, and the applicant is not entitled to demand that it be reopened thereafter to con- sider amendments except upon a verified showing of good and sufficient reasons why the amendment was not sooner presented. Ex parte Novotny, C. D. 1904, 108 O. G. 1327. 139. Where certain formal objections are made and the claims are finally rejected. Held, that the applicant may amend to avoid the formal objections, but cannot make amend- ments presenting new claims or affecting the merits. Ex parte Paige, C. D. 1904, 108 O. G. 1:JS7. 140. Where after final rejection additional claims are presented for the alleged purpose of placing the case in better form for appeal, but no rejected claims are canceled. Held, that the new claims must be regarded as dif- fering from the rejected claims in substance and not merely in form, and therefore the ex- aminer's refusal to enter the claims sustained. Ex parte Wirt, C. D. 190.-J, 117 O. G. 599. 141. Claims differing in scope from claims under final rejection will not be admitted under Rule 68 upon the mere allegation that there is another application pending, whose date and number are specified, containing such claims. They can be admitted only upon a duly verified showing. Ex parte Kenney, C. D. 1905, 119 O. G. 2237. 142. The statement of the attorney that the subject-matter of a proposed amendment filed after final rejection was not earlier called to his attention by the inventor is not a suf- ficient showing upon which to admit the amendment. Ex parte Schrader, C. D. 1906, 120 O. G. 2127. 143. Where the applicant understood the ex- aminer's first action in all essential particulars and the next office action merely restated the original ground of rejection. Held, that a re- quest that an amendment filed after final re- jection be admitted should be denied. Ex parte Kinney and Schultz, C. D. 1906, 121 O. G. 2323. 144. Where after a rejection by the primary examiner an applicant requests a reconsidera- tion and files an argument fully presenting the case upon the merits and the examiner in view thereof finally rejects the claims, he can- not submit new claims and have them entered and considered thereafter upon the allegation that the letter asking for reconsideration was in fact a request for an explanation of the examiner's position. Ex parte Knapp and Cade. C. D. 1907, 128 O. G. 1687. 145. An amendment touching the merits of the case will not be admitted under the pro- 38 AMENDMENT, IV, (b), V. visions of Rule 68 unless accompanied by a verified showing of good and sufficient rea- sons why it was not earher presented. Ex parte Brown and Sprink, C. D. 1908, 135 O. G. 1801. 146. Claims admitted after final rejection under that part of Rule 68 requiring a "show- ing duly verified, of good and sufficient rea- sons why they were not earlier presented," are for consideration by the primary examiner and not for the purpose of appeal only. Ex parte Meyer, C. D. 1909, 148 O. G. 1088. 147. When after final rejection new claims were presented which were treated by the tribunals of the patent office without objec- tion by applicant as putting the rejected claims in better form for consideration on appeal applicant having waived his objection to their being so considered if in fact there was any ground for it cannot be heard to urge it on appeal to the court of appeals of the District of Columbia. *In re Heinz, C. D. 1910, 151 O. G. 1014. 148. An amendment presenting new claims filed after final rejection, Held, properly re- fused admission where applicant had had ample opportunity to present such claims and the only excuse given for failure to do so was that it did not appear to be desirable until he was convinced that the broader claims pre- sented were unpatentable in view of the ref- erences cited. Ex parte Lange, C. D. 1911, 163 O. G. 727. 149. After a final rejection an applicant is not entitled to further prosecute the case before the primary examiner in the absence of any showing under Rule 68 why the pro- posed claims were not earlier presented. Ex parte Hodge, C. D. 1911, 173 O. G. 1079. 150. It is the well-settled practice of the of- fice that an amendment cannot be entered in part, since for the examiner to undertake to enter an amendment so far as it is responsive and to refuse to enter the remainder thereof would lead to endless confusion. Id. (b) Permitted. 151. Where an amendment is filed in good faith after second rejection and for the pur- pose of securing what the attorney believes to be the inventor's rights, an examiner may be justified in admitting and considering such amendment. Ex parte Horstick, C D. 1898, 84 O. G. 981. 152. Where, under Rule 68, a claim is in- serted in lieu of finally-rejected claims and which, except as to minor details, brings for- ward nothing new to be considered, as it is merely more specific than those claims. Held, that the claim should be inserted for the pur- pose of appeal under Rule 68, on the ground that "It is in better form for consideration on appeal" than claims under final rejection. Ex parte Marks, C. D. 1904, 111 O. G. 2492. 153. Where amendments to the description which do not touch the merits of the appli- cation, but presents the invention more clear- ly, are presented after final rejection. Held, that they may be entered without reopening the application for further consideration. Ex parte Loppenhen, C. D. 1906, 122 O. G. 1723. 154. Under the provisions of Rule 68 an amendment touching the merits filed after final rejection may be admitted only upon a verified showing of reasons why it was not earlier presented ; but no hard and fast rule can be laid down to define what constitutes a satisfactory showing in such a case. Ex parte Schmidt, C. D. 1911, 171 O. G. 482. 155. When an application has been prose- cuted in good faith and expeditiously, the ap- plicant should not be denied permission to amend after a final rejection when it clearly appears from the affidavit of responsible counsel that matters contained in the amend- ment were not earlier presented because of the fact that the inventor had not earlier pointed out to counsel features covered by the proposed amendment. Id. V. After Appeal. 156. Where after a decision of the examin- ers-in-chief a petition is made to reopen a case for the consideration, by the primary examiner, of additional claims, and the only reason advanced as to why the proposed claims were not presented before final con- sideration of the case by the primary exam- iner is that the attorney then in charge of the case did not appreciate the necessity of pre- senting such claims, Held, that the failure to present them sooner was due merely to a supposed error in judgment, and the petition denied. Ex parte Osborn, C. D. 1898, 82 O. G. 894. 157. The rule against the admission of new claims after a case has been closed before the primary examiner is necessary to the proper conduct of the large amount of business be- AMENDMENT, VI. 39 fore the patent office, and the enforcement of the rule is necessary to its existence. (Ex parte Snow, C. D. 1897, 48, 80 O. G. 1271, and ex parte Hunter, C. D. 1897, IGl, 81 O. G. 504, cited.) Id. 158. Where an examiner in answering an appeal to the examiners-in-chief cited an ad- ditional reference and also wrote a letter to applicant notifying him of the citation and the practice under e.x parte Mevey (C. D. 1891, 113, 5G O. G. 805) and the apphcant elected to continue the prosecution of the appeal. Held, that an amendment presented after the date of the examiner's answer and before the decision of the appellate tribunal should not be entered except under the pro- visions of Rule 142. Ex parte Buck, C. D. 1901, 94 O. G. 222. 159. Held, further, that while Rule 68 pro- vides that an applicant may amend as often as the examiner presents new references or reasons for rejection, yet another part of the rule provides that no amendment can be made in appealed cases between the filing of the examiner's statement and the decision of the appellate tribunal, and, treating the rule as an entirety, as it should be, the amendment should not be entered except under Rule 142. Id. 160. Where in a decision upon appeal the examiners-in-chief call attention to imperfec- tions in the drawing and specification. Held, that the applicant will be permitted to correct those specific errors before further appeal, but will not be permitted to file substitute specification and drawings, which would ne- cessitate a reopening of the case. Ex parte Beck, C. D. 1901, 97 O. G. 2746. 161. Where after certain claims have been allowed by the examiners-in-chief the appli- cant desires to amend them and the examiner reports that the amendment would necessitate a re-examination of the case. Held, that the examiner's report will be accepted as correct and the amendnient will not be permitted. Ex parte Borton, C. D. 1903, 104 O. G. 851. 162. After appeal to the examiners-in-chief relating to one species of the invention the applicant is not entitled to shift his ground and claim another species. Ex parte Reck- linghausen and Potter, C. D. 1904, 113 O. G. 114G. 163. A party cannot shift his ground and present new claims after the merits of the case have been finally disposed of even where the new claims are presented for the purpose of interference. The new claims should be presented in a new application. Id. 164. An applicant has no right to amend after decision on appeal except under unu- sual circumstances and where a proper show- ing is made. Even then petition must be made to the commissioner to reopen the case. Ex parte Auer, C. D. 1905, 116 O. G. 593. 165. A statement in a decision of the ex- aminers-in-chief that certain differences exist between applicant's device and the references which do not appear in the appealed claims does not amount to a recommendation under Rule 139 and furnishes no ground for the entry of an amendment containing new claims. Ex parte Smart, C. D. 1909, 145 O. G. 256. 166. The practice of submitting new claims for the original consideration of the commis- sioner on appeal not approved. Ex parte Sears, C. D. 1909, 148 O. G. 279. 167. A case will not be reopened for amend- ment after a decision by the examiners-in- chief except for the consideration of matter not previously adjudicated, sufficient cause being shown. (Rule 142.) E.x parte Atwood, C. D. 1911, 163 O. G. 1183. 168. Where during the prosecution of an application certain claims were canceled the fact that the examiners-in-chief reversed the action of the primary examiner on narrower claims affords no ground for permitting the entry of claims substantially the same in scope as the claims previously canceled. Ex parte EUis, C. D. 1911, 171 O. G. 217. VI. After Allowance. 169. Where a claim was offered in an al- lowed application which the examiner stated to be patentable over the art, but the admis- sion of which he refused to recommend under Rule 78, Held, that this is clearly a case where the amendment should be permitted, for Rule 78 was amended to meet just such cases. Ex parte O'Connor, C. D. 1899, 89 O. G. 1141. 170. Held, further, that had the examiner recommended that the amendment be admit- ted without withdrawing the case from issue, justice would have been done to the applicant, his attorney would have been saved the labor of preparing a brief, while the examiner and the clerical force of the office would have been spared much unnecessary labor. Id. 171. Where an examiner reported against the admission of proposed claims for the rea- son that claims 1 and 2 are in substance the 40 AMENDMENT, VII. same as other claims which have been rejected and canceled, Held, that this case does not fall within that line of cases where a pro- . posed amendment may be entered without withdrawing the application from issue. Ex parte Woodward, C. D. 1900, 91 O. G. 1801. 172. If after an application has been al- lowed it be permitted to be withdrawn on such a showing as made in this case, it would be impossible for the office to conduct the ex- amination of applications to a finality without great delay to the work of the oflSce as a whole. Id. 173. If applicant desires to further prose- cute his case, his remedy is to permit the ap- plication to forfeit and then renew it or file a new application as a continuation of the one in issue. Id. 174. After a case is allowed an amendment presenting allowable claims may be entered without withdrawing the case from issue ; but amendments which render it necessary to reopen the case for further action by the of- fice cannot be permitted. Ex parte Pierce, C. D. 1901, 97 O. G. 2307. 175. Where claims are sought to be in- serted by amendment under the provision of Rule 73 in an allowed application, Held, that it is not necessary for the examiner to state fully and in detail his reasons for reaching the conclusion that the claims are not patent- able, as is necessary in the ordinary examina- tion of a case. Ex parte Stone, C. D. 1902, 101 O. G. 2080. 176. Rule 78 does not provide for an indi- rect prosecution of an allowed application, as the applicant cannot as a matter of right amend a case after it is allowed. The ex- aminer has no jurisdiction over the case, and his report upon the proposed amendment is not an action in the case, but is merely in the nature of advice to the commissioner upon which he can base his action in approving or disapproving the entry of the amendment. Id. 177. Where an amendment to a case was filed in the office before the case was allowed, but reached the examiner afterward. Held, that the allowance of the case was irregular, that it will be withdrawn and the amendment entered. Ex parte Law, C. D. 1904, 111 O. G. io:i9. 178. A petition for the entry of an amend- ment presented under Rule 78 after the al- lowance of the application will be denied where the amendment includes claims which the examiner in his report upon the petition states are not patentable. Ex parte Fleming, C. D. 1907, 126 O. G. 2590. 179. The entry of claims under Rule 78 is not a matter of right, but a privilege allow- ed applicants where claims are found allow- able by the examiner upon such consideration of the case as he may deem proper. The ex- aminer will not be directed to consider the question of patentability of claims presented after his report upon petition. Id. 180. It is the well-settled practice that where amendments are presented under Rule 78 containing claims which the examiner rec- ommends are patentable such amendments will be entered, but that amendments presenting claims which the primary examiner holds are not patentable will not be entered. It is not necessary for the examiner to give in detail his reasons for holding that the claims are un- patentable, and the rule does not provide for an indirect prosecution of the application. Ex parte Orndoff, C. D. 1909, 140 O. G. 1001. 181. The question of admitting amendments presented under the provisions of Rule 78 rests largely in the discretion of the examiner, and his recommendations as to such amend- ments will not be overruled except under un- usual circumstances. Ex parte Holz, C. D. 1910, i-,4 O. G. 1411. 182. Where the examiner reports that cer- tain claims contained in an amendment pre- sented under Rule 78 are not patentable, such amendment will not be entered. Ex parte Langhaar, C. D. 1910, l.'iO O. G. 747. VII. Upon Recommendation of Ex.\miners- in-Chief or Commissioner. 183. Where the examiners-in-chief annex to their decision a recommendation that cer- tain claims be rejected and the examiner so rejects the claims. Held, that the case is thereby reopened and the applicant has a right to file amendments seeking to overcome that rejection. Ex parte Burrowes, C. D. 1904, 110 O. G. .599. 184. The recommendation of a certain claim by the examiners-in-chief under Rule 139 (a) does not act to reopen the case for the ad- mission of any claim other than the one rec- ommended. Ex parte Myers, C. D. 1905, 119 O. G. 9G2. 185. Where claims which were recommend- ed by the examiners-in-chief are rejected by the primary examiner on new references, the ANTICIPATION. 41 applicant is not entitled to amend the same or substitute new claims therefor. Ex parte Myers, C. D. 1906, 12:^ O. G. l6G:i. ANTICIPATION. (See Patents; Patf.nt.^bility.) 1. In General. II. Patents and Printed Publications. III. Prior Art. IV. Prior Use. V. Desicn P.\tents. VI. Drawings. I. In General. !• Where the patentee claims supports for his belt which are not parallel, but are placed at an angle, without specifying any particular angle. Held, that anticipation is shown by use of supports at any angle, d Johnston v. Wood- bury, C. D. 1901, 97 O. G. 402. 2. The necessity for refusing a patent to an applicant is not limited to cases where a prior inventor makes claim before the office to the invention, but exists whenever that prior in- vention and disclosure in this country are satisfactorily established by any means. -Ex parte Grosselin, C. D. 1901, 97 6. G. 2977. II. Patents and Printed Publications. 3. A claim for a compound bar for making cutting-tools, consisting of an inner bar of harder metal and an inclosed bar of softer metal pressed on the same, etc., contains noth- ing that is patentably new in view of a patent which shows a bar of hard steel surrounded or partly surrounded by a bar of softer steel and another patent which shows a bar for cutting-blade made by partly surrounding the hard steel by iron. *Bedford et al. v. Duell, Commissioner of Patents, C. D. 1899, 87 O. G. 1011, 4. A method for forging metal articles cir- cular in cross-section, such as car-axles, etc., which forges the hot metal and spreads or crowds away the surplus metal and compacts the outer surface of the article forged, Held, not anticipated by a machine for making leaden bullets and shot by rolling or forging a piece of lead between circular dies the edges of which are sharpened to cut away surplus metal, d Simonds Rolling-Machine Company v. Hathorn Manufacturing company et al., C. D. 1899, 88 O. G. 20G6. 5. Where a patent showing in the drawing but not describing or claiming the invention was granted to another three days after the appellants' case was filed on an application filed two years before that time. Held, that the appellants' claims were properly rejected. *Millet and Reed v. Duell, Commissioner of Patents, C. D. 1901, 96 O. G. 1241. 6. A patent granted after the appellants' filing date, but upon an application filed be- fore, is evidence of the state of the art at the time as shown by the drawings and speci- fication of the application, and it is a state of the art and not the existence of a patent which determines a party's right to a patent. *Id. 7. A patent is no less an anticipation be- cause it does not claim the invention, since the failure to claim it simply implies either that he abandoned it to the public or that he regarded it as already well known to the art. *Id. 8. The law is not concerned with the iden- tity of the inventor, but merely with the fact of prior invention, and therefore in the case of a publication mere ignorance of the name of the originator of the matter described is no reason for granting a patent to one subse- quent. Ex parte Grosselin, C. D. 1901, 97 O. G. 2977. 9. A full disclosure in a foreign patent, a printed publication, or a United States patent not claiming the invention is conclusive proof that the invention was known and in the full possession of the public in this country at the date of publication, and there is nothing left for which to reward a person who subse- quently introduces the invention into this country. Id. 10. Claim 1 of Patent No. .501,.'i:!7, granted to .'\mos Perkins on July 18, 1893, for a meth- od of repairing asphalt pavements. Held, in- valid because of anticipation by a French pat- ent to Paul Crochet and certain publications. ♦♦United States Repair and Guaranty Com- pany V. Assyrian Asphalt Company, C. D. 1902, 98 O. G. 582. 11. Where the specification of a patent cited as an anticipation does not state of what material the article is composed, it cannot ordinarily be assumed to be of any particular material. Ex parte Walters, C. D. 1907, 130 O. G. 148.^. 12. Held, that a method of covering playing- balls consisting of knitting separately a wrap- per leaving a slit therein, inserting a deflated rubber ball through said slit, closing the slit 42 ANTICIPATION, III, IV. by meshes of the same material as that forming the cover, and finally inflating the ball is anticipated by certain patents showing the idea of covering inflated rubber balls with a crocheted or knitted cover and another pat- ent which contains the idea of inserting a de- flated ball in a cover, inflating the ball, and then closing the aperture. *In re Droop, C. D. 1908, 13.1 O. G. 517. 13. Claims for a bilged barrel-body formed of a wound sheet of paper-pulp, Held, unpat- entable in view of the prior art. *In re Deck- er, C. D. 911, 1G3 O. G. 999. 14. Where an article is fully described in a patent for a machine designed to make such article. Held, that claims for the article were properly rejected, whether the machine dis- closed in the patent was operative or not. *Id. 15. Where claims are drawn broadly to means for collecting and folding sheets in a certain manner. Held, that these claims were properly rejected in view of a prior patent which discloses diagrammatically means adapt- ed to perform the functions set forth in the claims. E.x parte Cottrell, C. D. 1911, 1G9 O. G. 203. III. Prior Art. 16. The similitude in the invention relied on as matter of anticipation with the inven- tion for which a patent is sought need not be exact in form or structure; but if the in- formation contained therein is full enough and sufficiently precise to enable any person skilled in the art to which it relates to per- form the process or make the thing covered by the claim of invention sought to be pat- ented it will be sufficient to establish the fact of anticipation and want of novelty in the al- leged invention. *Bedford et al. v. Duell, Commissioner of Patents, C. D. 1899, 87 O. G. 1611. 17. Claims for cutting and folding machines for printing-presses. Held, properly rejected in view of the prior art. *In re Cottrell, C. D. 1911, 1C9 O. G. 702. 18. The Ashley patent. No. 829,752, for an inkstand which is made of glass, having a square or angular base and a substantially flat top, with a circular reservoir therein, the glass being turned in to form a dome-shaped cover to the reservoir, leaving an opening in the center. Held, void for lack of invention in view of the prior art. d Ashley v. Samuel C. Tatum Co., C. D. 1911, 172 O. G. 262. IV. Prior Use. 19. The defense of prior use should be sup- ported by evidence beyond a reasonable doubt, and the unsupported statement of a single witness that a machine embodying the inven- tion was constructed and put in operation be- fore the application is insufficient when un- accompanied by any drawings or exhibits thereof, c Mast, Foos & Co. v. Dempster Mill Mfg. Co., C. D. 1898, 82 O. G. 338. 20. In estimating the amount of invention in a patented device the court is bound to assume that the history of prior patents and machines having a bearing on the subject was known to the patentee, though in fact he may have been ignorant thereof and actually exer- cised inventive faculty, d Frederick R. Stearns & Co. V. Russell, C. D. 1898, 84 O. G. 1434. 21. Proof that six pairs of cuflf-button links like those covered by a patent were made by another prior to the date of the alleged in- vention is sufficient to invalidate the patent though they never went into general use. c Flomerfelt v. Newitter, C. D. 1898, 85 O. G. 4.58. 22. An infringer cannot defeat Letters Pat- ent of the United States to an original inven- tor in a foreign country by proof that before the date of a prior foreign patent to the same inventor, but not before the date of the ap- plication for such patent and less than two years before the date of the application for a United tates patent, the invention was used in this country by a person who did not in- vent it. d Welsbach Light Company v. Amer- ican Incandescent Lamp Company and Ber- linicke, C. D. 1900, 90 O. G. 960. 23. .^s against an infringer a patentee in a United States patent for an invention pre- viously made by him and patented in a for- eign country may, to avoid alleged use in this country by an infringer before the date of the foreign patent, show the date of the applica- tion for the foreign patent for the purpose of showing the actual date of his invention in a foreign country, d Id. 24. Where a prior patent shows a construc- tion which could be made to operate as the appellant's invention, although there is nothing to indicate that the patentee contemplated such operation, but it appears from the evidence that parties using the patented invention ad- justed it to secure the result of the appellant's invention, Held, that the appellant cannot be ANTICIPATION V, VI— APPEAL, I, II, (a). 43 regarded as the first inventor, rf Johnston v. Woodbury, C. D. 1901, 97 O. G. 403. 25. While the parties using the prior de- vices may not have placed the supports of their belt-frame at the precise angle used by the appellant, and while they may not have contemplated or specifically desired to obtain an oscillatory movement of the belt by tip- ping it to the right or to the left, they still obtained such tipping, and the result thereof and what they did must be regarded as an anticipation of this invention, d Id. V. Design Patents. 26. A design patent and a mechanical pat- ent are the subjects of two distinct monopo- lies, and the grant of one does not preclude the grant of the other. A design patent is therefore not a statutory bar to the grant of a mechanical patent covering the structure of a device the shape or configuration of which is the subject of the design patent. (Ex parte Palmer, C. D. 1882, 5, 21 O. G. 1111, cited and Miller v. Eagle Mfg. Co., C. D. 1894, 147, 66 O. G. 845, distinguished.) Ex parte Jones, C. D. 1898, 84 O. G. 1281. 27. Ex parte Jones (ante, l.ir,, 84 O. G. 1281) does not broadly decide that under cer- tain conditions a prior patent is not a perti- nent reference against an application for a mechanical structure. Ex parte McQueen, C. D. 1898, 85 O. G. 609. 28. Whether or not the design patent cited against a mechanical application is a pertinent reference is a question that goes to the merit O. G. 17l:i. 31. Claim 2 of Letters Patent No. 300,070, which reads "in a brake mechanism, the com- bination of a main air-pipe, an auxiliary reser- voir, a brake-cylinder, and a triple valve hav- ing a piston, whose preliminary traverse ad- mits air from the auxiliary reservoir to the brake-cylinder, and which by a further trav- erse admits air directly from the main air- pipe to the brake-cylinder, substantially as set forth," is, to a certain extent, for a func- tion — viz., the admission of air directly from the train-pipe to the brake-cylinder — and is only limited to such function when performed by the further traverse of the piston of the triple valve. If it be not susceptible of the interpretation that it is simply for a function, then the performance of that function must be limited to the particular means described in the specification for the admission of air from the train-pipe to the brake-cylinder. **ld. 32. Where a claim is finally rejected by the examiner on a certain patent duly cited on the ground that the claim is distinguished therefrom only by a statement of function. Held, that the question thus raised relates to the merits and an appeal lies in the first instance to the examiners-in-chief. Ex parte Morgan, C. D. 1902, 101 O. G. 2568. 33. It is the duty of the patent office to re- quire applicants to make their claims clear and definite, and therefore it will not read limitations into claims pending before it to avoid references, but will require the appli- cants to include them clearly and definitely. Secley v. Baldtvin. C. D. 190.5, 117 O. G. 2633. 34. The terms of description used in the claims should accurately describe the con- struction disclosed in the application. Ex parte Mueller and Braunsdorf, C. D. 1905, 118 O. G. 270. 35. It is a well-settled law that a patent cannot issue for a result sought to be ac- complished by the inventor of a machine, but only for the mechanical means or instrumen- talities by which that result is to be obtained. One cannot describe a machine which will per- form a certain function and then claim the function itself and all other machines that may be invented by others to perform the same function. *In re Gardner, C. D. 1909, 140 O. G. 256. 36. In all cases where the examiner holds a claim otherwise clear and intelligible to be functional — that is, for a function merely or because it fails to include sufficient mechani- cal elements to effect the function expressed in the claim — the action of the examiner shall be a rejection of the claim upon the ground that the claim does not point out the invention with sufficient particularity and distinctness to meet the requirements of section 4888, Revised Statutes. The rejection shall at the same time include all of the grounds enu- merated in Rule LIS that the examiner thinks applicable. Applicant's remedy is by way of appeal successively to the examiners-in-chief, the commissioner and the court of appeals of the District of Columbia. Ex parte Bitner, C. D. 1909, 140 O. G. 256. 37. It is well settled that where a claim dis- tinctly specifies a certain structure which is adapted to perform a particular function there is no objection to setting that function out in the claim. Ex parte Hoge, C. D. 1911, 173 O. G. 1081. 38. It is also well settled that where a claim does not include sufficient mechanical elements to effect the function stated it should be re- jected on the ground that it does not comply with section 4888 of the Revised Statutes. Id. (h) Held Functional or Indefinite. 39. If this claim be interpreted simply as a claim for the function of admitting air to the brake-cylinder directly from the train- pipe, it is open to the objection that the mere function of a machine cannot be patented. (Citing Corning v. Burden. 15 How. 252; Ris- don Locomotive Works v. Medart, C. D. 1895, 330, 71 O. G. 751, 158 U. S. 68, and other cases.) **Boyden Power Brake Co. v. West- inghouse, C. D. 1898, 83 O. G. 1067. 40. Where expressions used in the claims have not been specifically defined or explained in the specification so that their meaning can be understood. Held, that the claims are ob- jectionable as not being so clear and concise as required in the statutes and rules. Ex parte Kotler, C. D. 1901, 95 O. G. 2684. 41. To merely state in a claim the function or the result without first including therein the structure by means of which the func- tion or result is obtained renders a claim vague and indefinite. Id. 42. A statement of the purpose, result, op- eration, or advantages of a mechanical inven- 78 CLAIMS, IV, (c). tion should not be included in the claims, but should be embodied in the specification. The claims should be limited to statements of structure. Ex parte Schweitzer, C. D. 1901, 97 O. G. 1371. 43. The only apparent purpose of including in the claim a statement of the operation and result of the device is to make it appear that the claim covers all devices accomplishing that result and in which the operation slated takes place, and it is not believed to be proper prac- tice for this office to give its sanction to such a statement in the claim intended merely to define its scope. Id. 44. Where a term used in the claims was such that it could not be determined whether any element of the machine was referred to thereby or whether the term referred to a particular clement. Field, that the claim was vague and indefinite. Ex parte Groebli, C. D. 190.-,, lis O. G. 2.537. 45. A claim covering certain printed matter and including, among other features, "spaces to receive collected data relating to a number of checks" is functional, and therefore ob- jectionable. Ex parte McClain, C. D. 1903, 119 O. G. 1.J85. 46. A claim covering certain printed matter and including, among other features, a "form * * * having lines to receive collected data for a number of deposits" is functional, and therefore objectionable, sufficient structure not being included to carry the function stated. Id. 47. Where the claim is not for a combina- tion of which the "means" for the purpose mentioned is an clement, but is merely for means as an element and covers all possible means for accomplishing a certain function regardless of structure. Held, that the claim is indefinite and functional. Ex parte Bul- lock, C. D. 1907, 127 O. G. 1380. 48. Claims which fail to include sufficient mechanical elements to eflfect the function ex- pressed in the claims are open to objection, and from objection on such ground petition may be taken to the commissioner. Ex parte Plumb, C. D. 1907, 131 O. G. 1165. 49. The claim reading "In combination in a vapor-register, a dial upon which are mark- ed pressures and heat characteristics and a device for automatically indicating on said dial simultaneous pressures and heat char- acteristics" and claims similar thereto were properly rejected as claims for functions or results. If allowed, they would cover means substantially different from those described which might be discovered by another for ac- complishing the same results. ♦In re Gard- ner, C. D. 1909. 1-10 O. G. 258. (c) .\ot Held Funetional or Indefinite. 50. Where a claim distinctly specifies a cer- tain structure which is adapted to perform a particular function, there is no objection to setting out in the claim also the function which the structure is adapted to perform. Ex parte Holder, C. D. 1903, 107 O. G. 833. 51. The use of the word "means" limited by a statement of function has l. 2. Where an application was filed covering the subject-matter shown and claimed in a forfeited application by the same applicant. Held, that there was no error by the examiner in placing notice of the forfeited case in the second case and that letters referring to the first case will not be expunged from the rec- ord. Id. 3. .\n application filed within one year after the grant of a patent disclosing the subject- matter of such application is not a continu- ation of the application on which such patent was granted and is not entitled to the benefit of the date of such prior application. .\1- though the claims of the second application were made in the prior application, on which the patent was granted, and could have been divided out therefrom, and the date of the prior application could have been thus se- cured, when the patent was granted the ap- plication was merged in the patent, the pro- ceeding w'as closed, and there was nothing to be continued. *In re Spitteler and Krische, C. D. 1908, 134 O. G. 1301. 4. The rule which permits a divisional ap- plication to relate back to the filing date of the original, which also discloses its subject- matter, as long as it remains open in the pat- ent office is a very liberal one, that sometimes works hardship upon intermediate inventors, and it ought not to be extended to cases not clearly within it. *Id. 5. .An application disclosing and claiming subject-matter disclosed in a patent granted prior to the filing of such application can not be considered as a continuance of the prior application, since after the application has eventuated into a patent there is nothing left pending before the patent office upon which it could act or to which the later application 88 CONTINUING APPLICATIONS, II— CONTRACTS, I. could attach. (Citing Spitteler and Krische, C. D. 1908, 374, 134 O. G. 1301, 31 App. D. C. 271 ; Smith v. Goodyear Dental Vulcanite Co., C. D. 1877, 171, 11 O. G. 246, 93 U. S. 487, and Cain V. Park, C. D. 1899, 278, 86 O. G. 797, 14 App. D. C. 43, distinguished.) *Wain- wright V. Parker, C. D. 1909, 142 O. G. 1115. 6. Where a substantial part of the disclo- sure in an application is the same as that' of an earlier case. Held, that the application may be termed a continuation of such case as to all subject-matter which is common to the two. Ex parte Kruse, C. D. 1910, 157 O. G. 208. 7. Where an application was abandoned in favor of a later application, Held, that there- after matter not originally shown in the sec- ond application cannot be entered therein by amendment, although shown in the prior ap- plication. Ex parte Hagey, C. D. 1911, 173 O. G. 1081. II. Right to Inspect, Etc. 8. Where an application is filed as a substi- tute for another and the first application is abandoned. Held, that before allowance an in- dorsement should be placed upon the file- wrapper of the second case indicating that it is a continuation of the abandoned case. Ex parte Lewis and Unger, C. D. 1903, 106 O. G. 543. 9. Where an application is filed as a sub- stitute for another, the first application con- stitutes a part of the proceedings leading to the grant of a patent on the second applica- tion and should not be concealed from the public after the patent is granted. Id. 10. When a patent is granted, all proceed- ings leading to its grant should be public property, and the office should not under its rule of secrecy permit the applicant to con- ceal any part of those proceedings. Id. 11- Where the application upon which a patent is granted was a continuation of an earlier application, Held, that the patent should indicate the fact to the public, for otherwise it would contain a false suggestion as to the date. Id. 12. Where a patent is granted on an appli- cation filed as a substitute or a continuation of an application subsequently abandoned. Held, that the proceedings in the abandoned application are, in fact, a part of the proceed- ings which led to the grant of the parent, and upon the grant of this patent the rule of se- crecy no longer applies to these proceedings, and copies of the abandoned application should be furnished upon request. In re Doman, C. D. 1905, 115 O. G. 804. 13. Where a patent is granted on an appli- cation filed as a substitute for an application subsequently abandoned, Held, that the record made in the abandoned application should be as much open to the inspection of the pub- lic as the record in the patented file, and cop- ies of the abandoned application should be furnished upon request. Id. 14. Where a request has been made for copies of an application of a defeated party to an interference which has become aban- doned after the claims involved in the inter- ference were rejected as the result of the de- cision or priority of invention, and the judge trying the cause, resulting from a suit for infringement of the patent, has certified that a copy of the abandoned application would be admitted in evidence, and the request to ob- tain copies of the application for the purpose of defense has been duly served upon the applicant and no objection is offered. Held, that the request will be granted. In re Bene- dict and Morsell, C. D. 1905, 116 O. G. 874. CONTRACTS. I. In General. II. Illegal. I. In General. 1. Where the complainants filed a bill to restrain the respondents from manufacturing truck-frames for moving vehicles, or parts of truck-frames, when made of pressed metal, in violation of an agreement between the par- ties, the clause of the contract upon which the complainants rely being in these words : "It is further agreed that the parties of this sec- ond part will not engage during the life of the agreement in the manufacture of truck- frames for moving vehicles, or any part of such frames, when made of pressed metal," the complainants' contention being that by this clause of the agreement the defendants were prohibited from manufacturing parts of truck- frames when such parts were made of pressed metal. Held, that, reading the controverted clause in the light of its context, with due consideration of the motives leading to and the object to be accomplished by the agree- ment and giving to it that practical construc- tion which both parties have put upon it, it COMBINATION IN RESTRAINT OF TRADE— COMITY. cannot be construed as prohibiting the de- fendants from manufacturing pressed-metal parts for any other truck-frames than the pressed metal truck-frames which the com- plainants are engaged in putting on the mar- ket, d Fox Solid Pressed Steel Company v. The Schoen Manufacturing Company, C. D. 1898, 82 O. G. 1421. 2. An interest in the proceeds of a patent may be transferred by contract ; but the in- terest so acquired is not the right or interest of an inventor upon which a patent can be obtained. *Tyler v. Kelch, C. D. 1902, 98 O. G. 1282. 3. Where T. executed a release to K. of all claim to the invention for the sum of $75 and alleges in his testimony that this release was of his right as the true inventor and not of a mere pecuniary interest in the invention and it appears that the invention is a very valuable one. Held, that to accept T.'s statement would be to indulge a supposition contrary to all rational conduct of men understanding the nature of the business in which they were en- gaged. *Id. 11. IllEcai,. 4- Held, that certain contracts in this case were not in violation of the act of congress prohibiting combination in the form of trust or conspiracy in restraint of trade. **E. Bement & Sons v. National Harrow Company, C. D. 1902, 101 O. G. 887. 5. Assuming that the Attorney-General of the United States is the only person who can bring an action under the act of congress providing that every contract combination in the form of trust or conspiracy in restraint of trade is illegal and punishable by fine and imprisonment, yet any person sued upon such contract may set up its illegality as a com- plete defense to the suit. **Id. 6. A private individual when sued upon a contract may set up as his defense that it is void because in violation of an act of con- gress and when proved it is a valid defense to anv claim made under the contract. ♦*Id. COPYRIGHT. I. In General. II. Assignment and License. III. Copyrightable Subjects. IV. NON-COPYRICHTABLE SUBJECTS. V. InfrincE-ment. VI. International. VII. Notice. VIII. Publication, Exhibition and Sale, Etc. IX. Property Rights. I. In General. 1. It is the settled law of this country and England that the right of an author to a monopoly of his publication is determined by the copyright act, which superseded the com- mon law. •♦Holmes v. Hurst, C. D. 1899, 99 O. G. 189. 2. The right secured by the copyright act is not a right to the use of certain words, be- cause they are the common property of the human race, nor is it the right to ideas alone, since in the absence of means to communicate them they are of value to no one but the author; but the right is to that arrangement of words which the author has selected to ex- press his ideas. **Id. 3. At common law the exclusive right to copy existed in the author until he permitted general publication. The statute created a new property right, giving to the author after publication the exclusive right to multiply copies for a limited period. **Caliga v. Inter Ocean Newspaper Company, C. D. 1910, I.'jO O. G. 828. 4. But a single vahd copyright can be ob- tained for the same subject-matter, and where an artist after depositing in the prescribed office a photograph of a painting, accompanied by a description thereof, deposits another photograph of the painting, accompanied by a different description, the second copyright is void. **Id. II. Assignment and License. 5. The word "assigns" in section 4952, Re- vised Statutes, as amended March 3, 1891 (26 Stat. L. 1106, c. 565, U. S. Comp. St. 1901, p. 3400), is not used as descriptive of the char- acter of the estate which the "author, inven- tor, designor or proprietor" may acquire. The statute was intended to give to the assigns of the original owner of the right to copyright an article the right to take out the copyright secured by the statute independently of the ownership of the article itself. **.-\merican Tobacco Co. v. Werckmeister, C. D. 1908, 133 O. G. 1433. 90 CONTEMPT OF COURT— CONTINUING APPLICATIONS, 1. 6. An instrument providing that "I hereby transfer the copyright in my picture 'Chorus' to the Photographische Gesellschaft, Berlin (The Berhn Photographic Company) for the sum of £200, London, April 2, 1894," signed by the author of the painting, Held, to consti- tute a complete transfer of the property right of copyright existing in the picture, there being no evidence of any intention on the part of the author to retain any further interest in the copyright. **Id. 7. An author may, before publication, as- sign the right or privilege of taking a copy- right independent of the transfer of the copy- rightable thing itself. **Id. 8. Under section 4952 of the Revised Stat- utes as amended by the act of March 3, 1891 (26 Stats. L. 1106, ch. 565, U. S. Comp. Stats. 1091, p. 3406), providing that the "author, in- ventor, designer or proprietor of any book, map, chart, * * * painting * * * and the ex- ecutors, administrators and assigns of any such person shall, upon complying with the provisions of this chapter, have the sole lib- erty of printing, reprinting, publishing, com- pleting, copying, executing, finishing and vend- ing the same," etc., the word "assigns" in- cludes one who receives a transfer, not neces- sarily for the thing which is copyrighted, but of the right to multiply copies of it, and such right does not depend alone upon the statute, but is a right derived from the orig- inator of the copyrightable thing and secured to the assignee of his right. **Bong v. The Alfred S. Campbell Art Company, C. D. 1909, 144 O. G. 277. 9. If the author or proprietor of a copy- rightable thing be a citizen or subject of a country with which this country has no copy- right relations and by reason of which author cannot secure copyright protection in this country, the assignee of such author cannot obtain valid copyright protection, although under no disability as far as his citizenship is concerned. **Id. III. CoPYRir.HTABLE Subjects. 10. By "articles of manufacture," referred to in section 3 of the copyright act, is meant all vendible commodities produced by hand, machinery, or art. The word "vendible" in- dicates that by "commodities" is to be under- stood commodities in a commercial sense. So used this word means "any movable and tangible thing that is produced or used as a subject of barter and sale." Ex parte Bowles, C. D. 1901, 97 O. G. 2308. H- Chromolithographs used to advertise a circus come within the protection of the copy- right law. A picture is none the less a pic- ture and none the less a subject of copyright that it is used for an advertisement. **Bleis- tein et al. v. Donaldson Lithographing Com- pany, C. D. 1903, 102 O. G. 1553. 12. Paintings and engravings may promote the progress of the useful arts, although they are not for a mechanical end. The constitu- tion does not limit the useful to that which satisfies immediate bodily needs. **Id. 13. The copyright act referring to the fine arts does not mean that ordinary posters are not good enough to be considered within its scope. If they command the interest of the public, they have a commercial value, and it cannot be said that they have no esthetic and educational value. **Id. 14. Pictures are none the less the subject of copyright because they represent actual groups or visible things. Such a picture is the personal reaction of an individual upon nature, and personality always contains some- thing unique. **Id. 15. The antithesis of "works connected with the fine arts" is not works of little merit or of humble degree addressed to the less educated classes, but is "prints or labels de- signed to be used for any other articles of manufacture." **Id. IV. NoN-CoPyRICHTABLE SUBJECTS. 16. An optical prism device, pressed to shape in plastic glass, for modifying light-rays in a scientific or technical character. Held, not of the class intended to be covered by section 5, subparagraph (1) of the copyright act of March 4, 1909, providing for the protection of "drawings or plastic works of a scientific or technical character," the word "scientific" re- ferring to the use for which the article is de- signed rather than to the manner of its pro- duction, a Brock v. National Electrical Supply Co., C. D. 1911, 166 O. G. 985. V. Infringement. 17. The copyright of a musical composi- tion which is published in the form of sheet- music is not infringed by a perforated roll of paper designed to be used in connection with an automatic piano-player in reproducing the music recorded in the copyrighted sheets. CONTINUING APPLICATIONS, II. 91 since such perforated roll is not a "copy" within the meaning of the copyright statutes. **White-Smith Music Publishing Company v. Apollo Company, C. D. 1908, 133 O. G. 762. 18. After judgment of forfeiture of in- fringing copies of a copyrighted painting under section 4903 of the Revised Statutes (U. S. Comp. St. 1901, p. 3414) a separate ac- tion cannot be maintained to recover the pen- alty prescribed in said section for every in- fringing copy of the copyrighted painting found in the infringer's possession or sold by him, since such section contemplates but a single action in the nature of replevin, in which may be had both a forfeiture and a re- covery of penalties. **Werckmeister v. Amer- ican Tobacco Company, C. D. 1908, 133 O. G. 2279. 19. The infringing copies of a copyrighted painting need not be found in the infringer's possession in order to render him liable for the penalty of ten dollars imposed by United States Revised Statutes (sec. 496.J). United States Compiled Statutes, 1901 (p. 3414), "for any copy of the same in his possession, or by him sold or exposed for sale." **The Amer- ican Lithographic Co. v. Werckmeister, C. D. 1911, 169 O. G. 1187. VI. Intern.\tional. 20. Under section 13 of the act of March 3, 1891 (26 Stats. L. 1106, ch. 563), which gives the right of copyright to a citizen or subject of a foreign state or nation when such state or nation "is a party to an international agree- ment which provides for reciprocity in the granting of copyright, by the terms of which agreement the United States of America may at its pleasure become a party to such agree- ment," and provides, further, that "the ex- istence of either of the conditions aforesaid shall be determined by the President of the United States by proclamation," a citizen of a foreign state which is a party to an inter- national agreement to which the United States may become a party is not entitled to copy- right protection in this country unless and until the President of the United States, by proclamation, has determined whether the necessary conditions exist. ♦♦Bona v. The Alfred S. Campbell Art Co., C. D. 1909, 144 O. G. 277. VII. Notice. 21. Where after a book had been copy- righted certain parts thereof were pubhshed subsequently without notice of such copy- right, Held, that such publication without no- tice vitiated the copyright. ♦♦Mifflin et al. Dut- ton et al., C. D. 1903, 104 O. G. 1658. 22. Where an article bearing an untruthful notice of copyright was imported into the United States, the notice having been impress- ed on the article in a foreign country prior to the passage of amended section 4903, Re- vised Statutes, Held, that the penal provisions of original section 4963, Revised Statutes, have no extraterritorial operation, and the defendant was not liable. Flash v. Conn, 109 U. S. 376. ♦♦McLoughlin v. Raphael Tuck & Sons Co., Limited, C. D. 1903, 107 O. G. 1063. 23. Section 4963, Revised Statutes, provides for a penalty for importation and sale in the United States of an article bearing an untruth- ful notice of copyright, provided that the "act shall not apply to any importation of or sale of such goods or article brought into the United tates prior to the passage hereof." Held, that no liability attaches to one who imported an article into the United States bearing an untruthful notice of copyright be- fore the passage of the act though the article was sold after its passage. ♦♦Id. 24. The requirement of the act of June 18, 1874, chapter 301, section 1, 18 Statutes 78 (Rev. Stat. sec. 4962), that "no person shall maintain an action for the infringement of his copyright" unless the required notice shall be inserted in the several copies of every edi- tion published does not extend to publications abroad, and the owner of a work copyrighted in this country may restrain the publication thereof by another who has imported for pur- poses of reproduction copies published by such owner abroad without such notice. ♦♦United Dictionary Company v. G. & C. Mer- riam Company, C. D. 1908, 133 O. G. 515. 25. Section 4962 of the Revised Statutes as amended by act of June 18, 1874, chapter 301 (18 Stat. L., 78, U. S. Comp. St. 1901, p. 3411), providing "that no person shall maintain an action for the infringement of his copyright unless he shall give notice there- of by inserting in the several copies of every edition published * ♦ ♦ by inscribing upon some visible portion thereof, or of the sub- stance on which the same shall be mounted, "the notice of copyright, has not for its ob- ject to require the inscription upon the orig- inal painting, map, etc., but only upon those published copies concerning which it is de- signed to convey information to the public 93 CONTRACTS, I, II— COPYRIGHT, I. which shall limit its use and circumscribe the rights of the purchaser. ♦* American Tobacco Co. V. Werchmeister, C. D. 1908, 133 O. G. 1433. VIII. Publication, Exhibition and Sale, Etc. 26. The serial publication of a book in a monthly magazine prior to any steps taken to- ward securing a copyright is such a publica- tion of the same within the meaning of the act of February .3, 1831, as to vitiate a copy- right of the whole book obtained subsequently, but prior to the publication of the book as an entity. **HoImes v. Hurst, C. D. 1899, 89 O. G. 189. 27. If the several parts of a publication had been once dedicated to the public and the monopoly of the author thus abandoned, it cannot be reclaimed by collecting such parts together in the form of a book. **Id. 28. If an author permits his intellectual production to be published, either serially or collectively, his right to a copyright is lost as effectively as the right of an inventor to a patent upon an invention which he deliberate- ly abandons to the public, and this, too, irre- spective of his actual intention to make such abandonment. **Id. 29. The word "book" as used in the statute is not to be understood in its technical sense of a bound volume, but any species of pub- lication which the author selects to embody his literary production. There is no distinc- tion between the publication of a book and the publication of the contents of such book, whether such contents be published piecemeal or en bloc. **Id. 30. There is no fixed time within which an author must apply for copyright, so that it be "before publication," and if the publication of the parts serially be not a publication of the book a copyright might be obtained after the several parts, whether published separately or collectively, had been in general circulation for years. This cannot be within the spirit of the copyright act. **Id. 31. Where it appears that certain chapters of a book had been published in a magazine which had been copyrighted by the publishers thereof and that subsequently the whole book was copyrighted by the author and it does not appear that the magazine publishers had the authority or assent of the author of the book to copyright it, Held, that under the circum- stances the copyright on the magazine did not afford protection to that part of the book which was published therein. ♦*Mifflin et al. v. R. H. White Company, C. D. 1903, 104 O. G. ]G.-)6. 32. The right of copyright being purely statutory, the public may justly demand that the person claiming a monopoly of publica- tion shall pursue, in substance at least, the statutory method of securing it. ♦♦Id. 33. Where it appeared that a number of chapters of a book had been published before any steps were taken to obtain a copyright. Held, that the parts so published became pub- lic property. ♦♦Mifflin et al. v. Dutton et al., C. D. 1903, 104 O. G. 16.58. 34. The exhibition of a painting at a pub- lic gallery by the author prior to copyrighting the same does not deprive him or his assigns from subsequently securing a valid copyright where the same was expressly entered at the gallery with copyright reserved. ♦♦American Tobacco Co. v. Werckmeister, C. D. 1908, 133 O. G. 1433. IX. Property Rights. 35. Property in copyright is the creature of the federal statute passed in the exercise of the power vested in congress by the Fed- eral Constitution in Article I, section 8, "to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their re- spective writings and discoveries." (See Wheaton v. Peters, 8 Pet. 591, 656; Holmes V. Hurst, 174 U. S. 82 ; Banks v. Manchester, 128 U. S. 244, 252; Thompson v. Hubbard, 131 U. S. 123, 151.) ♦♦American Tobacco Company v. Werckmeister, C. D. 1908, 133 O. G. 143.3. CORRECTION OF PATENTS. (See Reissue.) 1. It is the practice of the office to issue certificates of correction only for the purpose of making the patent as issued correspond to the record of the case and not for the pur- pose of correcting mistakes of an applicant. Ex parte Burson, C. D. 1899, 87 O. G. 698. 2. Where the office in amending a claim literally followed the directions given by an applicant. Held, if there is any mistake or am- biguity in the claim it cannot be said that COPYRIGHT, II, III. 93 such mistake was incurred through the fault of the office, and certificate of correction should be refused. Id. 3. Certificates of correction of patents are issued only for the purpose of making the patent when issued correspond to the records of the office. Ex parte Rosback, C. D. 1899, 89 O. G. 705. 4. Where the office failed to change the title of invention as requested by applicant and the patent was returned to the office for correction. Held, that it was proper to correct the error in the patent by a certificate of cor- rection and that the office should not be put to the expense of reissuing the patent. In re Condict, C. D. 1900, 93 O. G. 551. 5. Rule 170 provides for correcting a pat- ent by a certificate of correction, and it is believed that the rule is valid and that the commissioner has authority to correct such a mistake as was made in the printing of this patent by certificate of correction. Id. 6. Where the word "advance" was by a typographical error printed in the claim of a patent "adverse" and it appears from an ex- amination of the entire case that the mean- ing of the claim is not changed, Held, that a certificate of correction will be indorsed upon the patent, but that the office will refuse to go to the expense of reissuing it. Ex parte Alexander, C. D. 1902, 98 O. G. 2364. 7. This office will correct, by reissue, mis- takes made by it affecting the scope or legal effect of a patent ; but where the mistake is not such as would change the construction given to the patent or deprive the patentee of any of the protection intended to be accord- ed him by the patent the trouble and expense of a reissue are not warranted. Id. 8. An obvious error, or one which although not obvious would not change the meaning or effect of the patent, needs no correction, and a certificate of correction is sufficient to avoid any possibility of mistake. Id. 9. A mistake in printing shown by the rec- ords will be corrected by a certificate indorsed upon the patent, but the office will not hold itself responsible for errors in the printing of signatures that are not clearly and legibly written. Ex parte Keen and Williams, C. D. 1902, 101 O. G. 1372. 10. Where in the grant of a patent the letter C was by mistake substituted for the letter G in the assignee's name. Held, that a certificate of correction indorsed upon the patent is sufficient and that a new patent will not be issued merely to correct that error. Ex parte Garton-Daniels Company, C. D. 1902, 101 O. G. 2569. II- The legal effect of a patent is not aflfect- ed by a mere misnomer of the applicant, since the true name may be proved, and it is well settled that the misspelling of a name is un- important if the resemblance to the true name is sufficient for identification. Id. 12. While it has been said by the courts that the commissioner has no authority to change the legal effect of a patent by a certificate of correction. Held, that the commissioner has authority to correct a mere clerical error plainly shown by the records of the office. Id. 13. The right to correct a clerical mistake clearly disclosed by the record is a necessary power in the administration of every depart- ment, and this right is not taken away from the commissioner by the provision for re- issue in cases where the mistake is of such a character as to render the patent inopera- tive or invalid. Id. 14. Where the applicant asks that an amend- ment be inserted after the word "and" on a certain line and that word appears twice on the line, Held, that a certificate of correction will not be indorsed upon the patent merely because the office did not make the insertion after the particular word "and" intended by the applicant. The mistake was the appli- cant's failure to be definite. Ex parte Curtiss, C. D. 1903, 105 O. G. 500. 15. Where the office does what the appli- cant asks, the mistake, if any, must be regard- ed as the applicant's, and it will not be cor- rected at the expense of the office. Id; 16. The failure of the office to detect and require the correction of errors made by the applicant cannot be considered mistakes by the office calling for correction at its expense. The mistake is primarily that of the appli- cant. Id. 17. Where in printing a trade-mark certifi- cate of registration the applicant's name is made to conform to the signature to the af- fidavit and statement. Held, that no correc- tion will be made upon an allegation of a mistake in the name. E.x parte Strobcl & Wilken Co., C. D. 1903, 105 O. G. 2058. 18. Where by a clerical error a canceled paragraph of the specification is printed in the patent. Held, that a certificate of correc- tion will be indorsed upon the patent and that the patent will not be reissued. Ex parte Barrv, C. D. 1904, 112 O. G. 2095. 94 COPYRIGHT, IV-VII. 19. Where a patent was granted to the in- ventor in accordance with the practice of the office in force at the time, Held, that a certifi- cate of correction will not be indorsed upon the patent showing that it should have been granted to the assignee merely because it is now the practice to issue patents in similar cases to assignees. There was no mistake, but a change of practice. Ex parte Rundle, C. D. 1905, 116 O. G. 593. CROSS REFERENCES. (See Continuing Applications; Divisional Applications.) 1. Where a clear understanding of the mode of operation of the invention claimed cannot be had without a knowledge of an attachment to be used with it, Held, that the attachment should be shown and described and that it is not sufficient to refer to another pending ap- plication for a disclosure of it, said pending application not being a part of the known art and may never become a patent. Ex parte Scott, C. D. 1901, 95 O. G. 2683. 2. Where an application was prosecuted to allowance, but was allowed to become aban- doned, and thereafter a new application was filed for the same invention and containing the allowed claims, Held, that there should be a reference in the new application to the abandoned application. Ex parte Britt, C. D. 1905, 116 O. G. 298. 3. Where the actions leading to the allow- ance of the claims which appear in a pending- case are not in the record of that case, but in the record of a prior abandoned application by the same party, Held, that there should be some reference to the original case, so that when the patent issues the public shall be informed as to the proceedings leading to the allowance of the claims. Id. 4. The actions leading to the allowance of the claims form a part of the proceedings in regard to those claims whether they appear in the application under consideration or in a prior abandoned application. Id. 5. The requirement that a new application shall contain a reference to a prior applica- tion for the same invention filed by the same inventor is not limited to those cases in which the two applications are copending and con- tinuous. (Ex parte Lewis and Unger, C. D. 1903, 303, 106 O. G. 543, construed.) Id. 6. Where two applications filed by different inventors are owned by the same party and the assignee wishes to refer in one case to the other. Held, that there is nothing in the rule that applications are preserved in secrecy which would make the reference improper. Ex parte Kellogg, C. D. 1906, 120 O. G. 2754. 7. Reference should not be made in one ap- plication to another for a disclosure of a fea- ture of the invention, since each application should be complete within itself. Id. 8. A cross reference to a copending appli- cation which does not include the serial num- ber and date of filing of such application. Held, insufficient. Ex parte Summers, C. D. 1910, 160 O. G. 1039. DAMAGES AND PROFITS. I. ACCOVNTING. II. Estimation and Measure of. (a) In General. (b) Fees and Royalties. III. Master's Report. I. Accounting. 1. Where the lower court held all claims of the patent to be valid and infringed, but the accounting was based upon the infringement of claim 5 and that claim is found on appeal to be invalid, Held, that the decision below must be reversed and the case remanded for proceedings in accordance with this opinion. **Busch V. Jones et al., C. D. 1902, 99 O. G. 229. II. Estimation and Measure of. (a) In General. 2. An inventor is liable for the entire profits made by the manufacture and sale of an ar- ticle containing the patented device where it appears that but for the patented feature the article would not have been salable, rf Wales V. Watcrbury Manufacturing Company, C. D. 1900, 01 O. G. 2571. (b) Fees and Royalties. 3. Where a company agreed in considera- tion of the sale of it by F. of all his interest in an invention for which two applications for patent were pending in the patent office to pay him royalty on each device manufactured and to use due diligence in manufacturing and COPYRIGHT, VIII. 95 selling, and the company's attorney took charge of the prosecution of the applications, and the manufacture of the device was begun and it was extensively advertised, but subse- quently M., an officer of the company, ob- tained a patent for a device effecting the same purpose as that of F., whereupon the company ceased to make the latter's device and substi- tuted that of M., and one of F.'s applications after being allowed was placed in interfer- ence with other applications and was aban- doned by the failure of the attorney to prose- cute it and the other application was allowed to become forfeited by failure of the company to pay the final government fee, and mean- while the company became the owners of an- other patent claimed to dominate the de- vices of both F. and M. under which it con- tinued to manufacture the device of M., and on the failure of the company to make any returns or render any account F. instituted proceedings for an accounting. Held, that a decree holding F. entitled to royalty from the company for the devices manufactured under M.'s patent, as well as for those pro- fessedly manufactured under its contract with him, and directing a reference to the auditor for a statement of such account should be af- firmed. *Eclipse Bicycle Company v. Farrow, C. D. 1900, 93 O. G. 1312. III. Master's Report. 4. Where a master's report was made prior to the decision in the case of Tuttlc v. Claflin (C D. 1896, 602, 77 O. G. 973), and it was agreed on all sides that this is "a closely analogous case," Held, that it is only fair to the master and just to all parties to refer the accounting again to the master that he may follow the rule of Tuttle v. Claflin and take such further action as he may deem proper. e Hohorst v. Hamburg- .\merican Packet Company et al., C. D. 1898, 82 O. G. 897. 5. The features which made the case of Tuttle V. Claflin (C. D. 1896, 602, 77 O. G. 973), unique are not present in this case. The case contains no evidence upon which a com- putation of profits can be properly made, and the exceptions to the master's report in this case are overruled, c Id. a patent without a claim to it, and while this presumption may under certain circumstances be overcome by having a copending application claiming it, it is not overcome by an appli- cation which does not and was not intended to claim it, merely because the claims are in- serted therein long after the patent on the other case issues. Jones v. Larter, C. D. 1900, 92 O. G. 383. 2. If the inventor who as against others is entitled to a patent chooses, he may aban- don the invention to the public by a full dis- closure without making claim to it, and when he does so no one else can acquire the right to obtain a patent upon it. Ex parte Grosse- lin, C. D. 1901, 97 O. G. 2977. DELAY. 1. The rule that where a suspension has been granted pending the final determination of a motion and the party receiving an adverse action acts within a reasonable time there- after will be held to have preserved his rights is equitable and a good one for general appli- cation where further action cannot properly be taken until the matter at issue is settled; but it should not be applied to relieve a party from the effects of his own negligence and delay. Whipple v. Sharp, C. D. 1902, 98 O. G. 225. 2. Where an action is required to be taken within a certain time after a decision, the date of the decision and not the date of the receipt of a notice of it is what governs. Id. 3. Where the applicant fails to receive a reply from this office to an action taken by him, it is his duty to make an investigation earlier than eight months after the action. Ex parte Piper, C. D. 1905, 115 O. G. 1063. DEDICATION OF INVENTION TO PUBLIC. !• The presumption of a dedication to the public is raised by a disclosure of matter in DEMURRER. 1. In a suit under section 4915, Revised Statutes, to obtain the registration of the words "Old Lexington Club" as a trade- mark a demurrer was filed alleging that the mark is invalid. Held, that the invalidity of the mark is not obvious and that the demurrer should be overruled, c The Old Lexington Club Distillery Company v. Kentucky Distil- leries and Warehouse Company, C. D. 1909, 148 O. G. 1346. 2. Where the mark shown in the registra- tion whose cancelation is sought consists of 96 CORRECTION OF PATENTS. the words "Crown Aster" for "canned fruits, canned vegetables, pork and beans, jam, pre- serves, and marmalades" and the applicant for cancelation merely alleges that it had adopted the mark "Hotel Astor" for coffee prior to the date of adoption of the mark "Crown Astor" by the registrant and had used it continually ever since, Held, that the show- ing of damage is not sufficient, and a demur- rer to the application for cancelation was properly sustained. B. Fischer & Co. v. A. F. Beckmann & Co., C. D. 1909, 149 O. G. 1120. I. II. III. IV. VI. VII. VIII. IX. X. XI. XII. XIII. XIV. XV. DESIGNS. In Gener.\u. Appeal and Petition. Construction oi' Statutes. Limited to a Single Invention or Modification. P.\tentable Subject Matter. (a) In General. (b) Machines. Patentability and Invention. (a) In General. (b) Function or .Mechanical Utility. (c) Effect on Ordinary Observer. Infringement. Claims. Description in Specification. Drawings. Internal Construction. Design and Mechanical Application on Same Disclosure. Interference. (a) In General. (b) Reduction to Practice. Public Use and Sale. Test of Identity. I. In General. 1. Designs have relation to external ap- pearance merely and are not concerned with internal structure. Feder v. Poyet, C. D. 1899, 89 O. G. 1343. 2. As much inventive genius is required to support a design patent as a mechanical patent. (Smith v. Saddle Co., C. D. 1893, 324, 63 O. G. 912 ; Northrup v. Adams, C. D. 1877, 322, 12 O. G. 430, 2 Ban. & Ard. r,67. and Foster v. Crossin, C. D. 1891, 304, .'■.4 O. G. 111.'), 44 Fed. Rep. 62, cited.) rf Westinghouse Electric and Manufacturing Company v. Triumph Electric Company, C. D. 1900, 90 O. G. 603. 3. A new and ornamental design will be found in an article of manufacture when there can be found in such article a new appear- ance created by inventive process and serving the purpose of embellishment. Ex parte Knolhe, C. D. 1903, 42, 102 O. G. 1294. 4. Where criticism was made that the type were not shown, but only the kind of printed matter produced, Held, that the answer there- to is that the conventional drawing accepted by the patent office for years has been fur- nished and that the absence of description is authorized by the patent office rules. *In re Schraubstadtcr, C. D. 1906, 120 O. G. 1167. 5. Where small differences existed in the applicant's design over the references, which differences would appear greater to an expert than to the average observer, Held, neverthe- less, that the design was not patentable, be- cause the differences did not rise to the dig- nity of invention. *Id. 6. Where it is held that the device disclosed does not constitute proper subject-matter for a design patent, the examiner should reject the claim for that reason, and from such action appeal lies to the examiners-in-chief. Ex parte Adams, C. D. 1898, 84 O. G. 311. II. Appeal and Petition. 7. Where a petition was taken to the com- missioner praying that the examiner be ad- vised that applicant's article can be protect- ed under the design statute and that the said application should be allowed unless the design be found to be fully anticipated, Held, that this is a question which goes to the merits of the case and is appealable to the examiners- in-chief. Ex parte Groves, C. D. 1899, 89 O. G. 1671. 8. Where the commissioner was asked by petition to advise the examiner what is or is not a competent reference, Held, that this is a question not to be settled by petition. The examiner in the first instance is the judge of the pertinency of the reference or ground of rejection. The commissioner may differ with him, and when the case comes to him on appeal he may properly make that difference of opinion known ; but he is not authorized in an irregular way to coerce the independent judgment of the examiner. Id. 9. Where it was prayed that the examiner be instructed that originality and utility are proper grounds to justify the grant of design patent to the applicant. Held, that this is a CROSS REFERENCES. 97 question of merit which is appealable to the examiners-in-chief in the first instance. Id. 10. Where an applicant claimed a design for inner and outer tubes forming the fire-walls between the inner and outer flame of a hy-dro- carbon-burner, and the examiner required him to amend his case to set up a single definite article of manufacture and not two articles, on petition to the commissioner, Held, that the question presented is one involving the merits of the claim rather than its form, and that therefore it is not reviewable on peti- tion. (Ex parte Brower, 4 O. G. 450; ex parte Smith, C. D. 1807, 170, 81 O. G. 969; ex parte Tallman, C. D., 1898, 10, 82 O. G. 337; ex parte Brand, C. D. 1898, 62, 83 O. G. 747, and ex parte Kapp, C. D. 1898, 108, 83 O. G. 1993, modified.) Ex parte Sherman and Harms, C. D. 1899, 89 O. G. 2067. 11. Where an applicant asks for a design patent covering a certain form of device, the office cannot properly refuse to act upon the merits of the case and require him to sub- stitute therefor a claim to some other article, as to do so would deprive him of the statu- tory right of appeal to the examiners-in- chief, to the commissioner, and to the court of appeals. Id. 12. The holding that two or more elements covered by a single claim should be divided is in effect a holding that such claim cannot be allowed, and is such a refusal of the claim as entitles applicant to a review of that action by the several tribunals mentioned in the statutes, since it is based upon the subject- matter covered, and not the mere form of the claim. Id. 13. To require division between the ele- ments covered by a claim of the kind under consideration is analogous to requiring divi- sion between the elements covered by an al- leged combination claim in a mechanical ap- plication. It has been repeatedly held, in such cases that, although the claim covers a mere aggregation and not a true combination, di- vision between the elements covered by it should not be insisted upon, but the claim should be rejected. Id. 14. Held, that an appeal in a design appli- cation should not be forwarded to the ex- aminers-in-chief until all formal objections have been removed. Ex parte Mygatt, C. D. 1904, 111 O. G. 2493. 15. Held, that the requirement for the omission of the reference-letters from the drawing of a design application follows from 7 the requirement for the cancelation of the descriptive matter wherein these reference- letters are used. Ex parte Lloyd, C. D. 1904, 112 O. G. 251. 16. The requirement that unnecessary mat- ter be canceled from the drawing and specifi- cation of a design case is a mere ruling as to the form of the application and is not ap- pealable to the examiners-in-chief. Ex parte Mygatt, C. D. 1903, 118 O. G. 1685. 17. Where an applicant for a design patent presents a claim and the patent office rules that the applicant cannot have the claims pre- sented and can have no claim but a suggested one. Held, that such ruling is, in effect, a re- jection of the claim presented and when twice refused is appealable to the examiners-in- chief under section 4909 of Revised Statutes. *In re Mygatt, C. D. 1906, 121 O. G. 1670. 18. Held, that the question whether the de- scription in a design case is a proper one is not reviewable by the court of appeals except in an extraordinary case. *Id. III. Construction of Statutes. 19. The purpose of congress in authorizing the granting of patents for designs was to give encouragement to the decorative arts. It contemplated not so much utility as appear- ance. *Westinghouse Electric & Mfg. Co. v. Triumph Electric Co., C. D. 1900, 90 O. G. 603. 20. By the act of 1870, which was a revi- sion as well as an amendment of the patent laws, the word "useful" in the design statute was transferred from the office of qualifying patterns and prints to that of qualifying shapes or configurations of matter, d Id. 21. The term "useful" was inserted in the design statute merely out of abundant cau- tion to indicate that things which were vicious and had a tendency to corrupt, and in this sense were not useful, were not to be covered by the statute, d Id. 22. The word "useful" in the design law has reference to appearance rather than to the mechanical function of the device. The design must not be vicious or have a tendency to corrupt, but its usefulness resides in the pleasing and attractive appearance produced by it. (Wcstinghouse Co. v. Triumph Co., C D. 1900, 219, 90 O. G. C03, 97 Fed. Rep. 99.) Ex parte Tournier, C. D. 1900, 90 O. G. 1948. 23. Design patents refer to appearance, not functional utility, and their object is to en- 98 DAMAGES AND PROFITS, I, II, (a), (b). III. courage works of art and decoration which appeal to the eye, to the esthetic emotions, to the beautiful. The term "useful" in relation to designs means adaptation to producing pleasant emotions, d Rowe v. Blodgett & Clapp Co., C. D. 1902, 98 O. G. 1286. 24. The amendment to the design law ap- proved May 9, 1902, in which the word orna- mental was substituted for the word "useful," did not change the meaning of the law, but expressed clearly what was by construction already included in the prior law. Ex parte Knothe, C. D. 1903, 102 O. G. 1294. 25. The design law was intended to afford protection to the inventors of new ornamental effects produced in articles of manufacture, the selection being a choice from considera- tions of appearance determined by the taste of the inventor seeking new and attractive appearances. Id. IV. Limited to a Si.nt.le Invention or Modi- fication. 26. Modifications of designs do not exist and should not be shown and described in one patent. When an inventor has produced a design, he has produced a single shape or con- figuration, not several. Ex parte Hill and Renner, C. D. 1898, 82 O. G. 1988. 27. If an applicant be of the opinion that two or more shapes are one and the same design, he should sliow only one such shape in his application, leaving the courts to de- termine whether the other shapes are the same design as that shown in his patent and whether they infringe such shape or design. (Ex parte Petzold, C. D. 1891, 97, .5.5 O. G. 16.52, and ex parte Hess and Hess, C. D. 1891, 142, 56 O. G. 1334.) Id. 28. The requirement of the examiner that applicant restrict the application to one or the other design for castings for a bedstead rail-joint affirmed. Ex parte Brand, C. D. 1898, 83 O. G. 747. 29. The fact that two articles are used to- gether does not make them, when so used, constitute a unitary design, but the result is merely an aggregation of the two designs. (Ex parte Patitz, C. D. 1883, 101, 25 O. G. 980 ; ex parte Haggard, C. D. 1897, 47, 80 O. G. 1126.) Id. 30. In view of the fact that the parts are specially designed for detachment it cannot be held that the two together constitute a uni- tary design merely because they may be used together. Id. 31. A design must be a single unchangeable article of manufacture and must not be made up of independent detachable parts. Id. 32. Words or phrases referring to or de- scribing preferred forms or modifications of designs should not be permitted in an appli- cation for a design. Modifications of designs do not exist, and applicants should restrict their drawing and description to one design. Ex parte Jenks, C. D. 1898, 83 O. G. 1513. 33. Where applicant shows and describes a pair of tongs consisting of two members of the same shape or configuration pivoted to- gether, Held, that if applicant has invented and produced anything that is novel it is not a pair of tongs, but the shape or configura- tion of a member or jaw of a pair of tongs, and the description and claims should be lim- ited accordingly. Ex parte Kapp, C. D. 1898, 83 O. G. 1993. 34. Modifications of designs do not exist, and there is no such distinction as genus and species as applied to design patents. (Ex parte Eldon, ante, 63, 83 O. G. 748 ; Ex parte Jenks, ante, 81, 83 O. G. 1513.) Ex parte Adams, C. D. 1898, 83 O. G. 1994. 35. On petition from the action of the ex- aminer requiring applicant to limit the title of the application — a "design for banners, badges, buttons, and other decorative devices and display" — to a design for a flag or ban- ner, the thing shown and described. Held, that applicant should confine the application to what he has produced and shown and de- scribed in his application, leaving to the courts the question as to whether he may use the design on any other article than a banner or flag or whether any other party using it on other devices would infringe his design. Ex parte Amberg, C. D. 1898, 84 O. G. 507. 36. On petition from the requirement that applicant remove the words "Steady Prog- ress" and "Milwaukee" from the description and drawing because they form no part of the design. Held, that this is a question that affects the merits of the design and should be passed upon by the examiners-in-chief be- fore it is brought to the commissioner. Id. 37. The examiner required applicant to limit the title of the invention and the descrip- tion and claims to a design for a rug or car- pet instead of to a design for a mat or rug. It was not apparent from the drawing what was intended to be shown. The claims, how- DEDICATION OF INVENTION TO PUBLIC DESIGNS, I. 99 ever, were drawn to cover a design for a mat or carpet. Held, that applicant should hmit his case to the particular thing on which the design has been produced, whether this thing be a mat, a rug, or a carpet, leaving the courts to decide whether these things are equivalents or whether a design applied to one would be infringed by a design applied to either one of the other two. Ex parte Hartman, C. D. 1S98, 84 O. G. 648. 38. Where applicant's design was a pattern or ornamentation applied to an article of manufacture and was not a shape or configu- ration of the article. Held, that the description should be limited to and set up in relation to the design produced. Id. 39. When the application contained three claims covering separately the design for the entire bedstead, the headboard, and the foot- board, Held, that the applicant was properly required to limit the application to one of those claims. Ex parte Wiessner, C. D. 1898, 85 O. G. 937. 40. Separate claims for the entire design and for segregable features of it should not be permitted in one application. Id. 41. If the separate claims for segregable features cover the predominant and control- ling features which are in and of themselves suggestive of the design in its entirety, they cover in effect the same thing as a claim to the entire design and should not be permitted in the same application with the claim for the entire design. Id. 42. The monopoly of a design patent is con- fined to the particular article shown and de- scribed, and the sole test of infringement is the similarity in appearance of the infringing article, therefore to allow separate claims pur- porting to set forth the predominant and con- trolling features which would be suggestive of the design in its entirety would be for this office to forestall the decision of the courts as to what would be regarded as an infringe- ment and is not proper practice. Id. 43. The relation of genus and species does not exist in designs, and the doctrine of com- bination and subcombination does not apply to them. In comparing two designs the ques- tion is always one of indentity. If they are not in appearance the same, they are inde- pendent, since one cannot be subordinate to the other. Id. 44. The question being always one of iden- tity, if the separate claims do not in fact cover the predominant and controlling fea- tures they do not cover the same entity or de- sign, but cover separate and distinct designs which may properly be made the subject-mat- ter of separate design patents. Id. 45. The only apparent reason for allowing claims to separate parts of the design in the same application with a claim to the entire design is to save the applicant the additional expense and trouble of filing separate appli- cations; but if one part is permitted to be claimed separately it follows that others must also be permitted and there would, therefore, be no limit to the number of separate designs which could be covered by one patent. Id. 46. There being no such correlation and dependence between two designs as sometimes exists between mechanical inventions there is not the same reason for permitting two of them to be claimed in one application. Id. 47. The public is not learned in patent law, but judges of the design as a whole without dissecting or analyzing it, and to permit claims for parts that belong to details which possess no distinct and visible resemblance to and create in the mind no impression of the whole design would be to set traps for the unskilled and unwary. This is against public interest and should not be permitted. (Ex parte Gerard, C. D. 1888, 37, 43 O. G. 1235.) Id. 48. Although the courts may not regard the joinder of claims to two designs in one pat- ent as invalidating the patent, but may sus- tain each separately as if covered by a separate patent, it does not follow that it is the duty of the office to allow patents in that form. Id. 49. There is no such distinction of generic and specific in design patents as there is in mechanical patents. If an inventor has a generic designs capable of modification — that is, a design made up of a small number of simple elements to which other elements may be added without modification of the essen- tial elements — he should, in order to secure protection for the generic design, show the design in his application in its simplest form. He must show the genus stripped of additions. Feder v. Poyet, C. D. 1899, 89 O. G. 1343. 50. Section 4929 of the Revised Statutes, relating to patents for designs, requires that the patent shall be limited to a single design for an article of manufacture. Ex parte Schraubstadter, C. D. 1904, 110 O. G. 201.5. 51. The doctrine of genus and species does not apply to design cases, and modifications of a desigii do not exist. Id. 100 DESIGNS, II. 52. There can be no such thing as generic and specific claims in design cases, and in all cases the examination and action relate to the article in its entirety. E.\ parte Kurz, C. D. 1901, 113 O. G. 221.). 53. It is well settled that a design patent can be granted only upon a single shape or configuration, and not upon several, and that there is no such distinction between generic and specific design patents as is recognized in mechanical patents. Ex parte Litic, Jr., C. D. 1910, 160 O. G. 1272. V. Patentable Subject Matter. (a) 1)1 General. 54. The holding of the examiner that the device docs not cover proper subject-matter for a design patent because made up of mov- able parts relates to the merits and is appeal- able to the examincrs-in-chief. (Ex parte Sherman and Harms, C. D. 1899, 240, 89 O. G. 2067.) Ex parte Hale, C. D. 1900, 92 O. G. 1137. 55. Where there is nothing attractive about the appearance of a design and its shape does not appeal in any way to the eye or serve to commend the article to purchasers, except to indicate that it is the product of the patentee. Held, that it is not patentable. Designs can- not be considered as trade-marks, d Rowe v. Blodgett & Clapp Co., C. D. 1902, 98 O. G. 1286. 5G. The subject-matter of a design applica- tion relates to the appearance of the article and not to its mechanical function. It is im- material in what manner the invention is de- scribed in such an application or what the showing is, the subject-matter still relates to a design. Ex parte Waterman, C. D. 1902, 100 O. G. 233. 57. A jar or can of ordinary form having a novel tapering mouth constructed to receive and hold the cap which closes it. Held, not proper subject-matter for a design patent. Wright V. Lorenz, C. D. 1902, 101 O. G. 664. (b) Machines. 58. A can-opener provided with what was described in the application as a "blade-hold- er," which could he moved along an opening in the body, cannot be patented as a design. The design law was never intended to apply to structures having movable parts. (Ex parte Smith, C. D. 1897, 170, 81 O. G. 969.) Ex parte Tallman, C. D. 1898, 82 O. G. 337. 59. The effect of a movable part in a struc- ture which is the subject of a design patent is to change the form or contour of the struc- ture as the part is shifted. Id. 60. The several articles of manufacture of peculiar shape which when combined pro- duce a machine or structure having movable parts may each separately be patented as a de- sign ; but the machine itself cannot be so pat- ented. Ex parte Adams, C. D. 1898, 84 O. G. 311. 61. The word "useful" placed in section 4929 of the Revised Statutes by amendment leaves no room for doubt of the fact that articles intended for mechanical use can prop- erly be made the subjects of design patents. Ex parte Steck, C. D. 1902, 98 O. G. 228. 62. An article of manufacture designed pri- marily for the performance of a mechanical function and not for the purpose of beauty may please the taste better than those that have gone before it, or it may not; but this is not controlling so long as the shape is new and is the result of inventive thought. Id. 63. Functional utility cannot be given the same consideration and effect in design cases as in mechanical, since designs are judged by their appearance, whereas mechanical inven- tions are judged by the functions performed. In a design there must be novelty in appear- ance whether or not new functions are per- formed. Id. 64. Under the express provisions of the statute a design patent is limited to "an arti- cle of manufacture," and there is no warrant in the law for granting such a patent upon a machine whose parts bear certain functional relations to each other. Id. 65. Aside from the express provision of law a machine made up of movable parts whose change in position changes the appear- ance of the device could not be patented as a design, because the subject-matter of the pat- ent would not be definite and certain. Id. 66. In the case of a single article of manu- facture there may be some relative movement of the parts without changing the appearance of the article or taking it outside of the de- sign law ; but nothing which amounts to a machine can come within the law whether or not the motion of the parts materially change.'! the appearance of the device as a whole. Id. 67. A frame of a water-tower for the use of fire departments consisting of the frame DESIGNS, III, IV. 101 proper and a hose-support hinged or pivoted to it and adapted to be raised to a vertical position, Held, to constitute a machine which is not patentable as a design. Id. VI. Patentability and Invkntion. (a) In General. 68. It is not a valid objection to a design patent that some of the constituents of the design claimed had existed in the prior art. Old figures may by rearrangement or by be- ing combined with new parts produce a novel effect, c Byram v. Friedberger, C. D. 1898, 82 O. G. 1420. 69- Originality and the exercise of the in- ventive faculty are as essential to the validity of a design patent as a mechanical patent. (/Gary Manufacturing Company v. Neal et al., C. D. 1900, 90 O. G. 1930. 70. An article of manufacture is not pat- entable as a design merely because there is something new about its shape so that it can be distinguished from other articles. Wright V. Lorenz, C. D. 1902, 101 O. G. 664. 71. The design law is not to encourage mere changes in shape, but is to encourage the art of decoration. There must be something or- namental or beautiful about the design to en- title it to protection. It must appeal to the esthetic emotions. Id. 72. A design for a belt-buckle having the corners of the frame and the tongue made with sharp instead of rounded edges. Held, lacking in invention and not patentable. Ex parte Knothe, C. D. 1903, 102 O. G. 1294. 73. A design is not patentable merely be- cause it can be distinguished in appearance from prior designs, since to be patentable its creation must involve an exercise of the in- ventive faculty. Designs are not protected on the theory that they are trade-marks. Id. 74. The doctrine of double use applies to designs as well as mechanical inventions and has an even wider application and is not lim- ited to the selection of devices in the same or analogous mechanical arts, since relating sole- ly to shape or appearance the mechanic in pro- ducing a design may avail himself of old shapes wherever they are found and for what- ever purpose they were before used. Id. 75. A design for a shade-roller provided with a ferrule upon its end having a groove around the circumference, Held, not patent- ably novel in view of a shade-roller in which the ferrule is secured by two indentations and in view of a ferrule secured to a handle by forcing the lip or edge into a groove in the handle. Ex parte Hartshorn, C. D. 1903, 104 O. G. 139.5. 76. Designs belong to the fine arts, and to be patentable it is as essential that they should be products of inventive genius as it is for inventions possessing mechanical utility. Id. 77. The form of an article even if new does not entitle it to design protection unless it is ornamental and produces admiration in its contemplation. Id. 78. The function of the design to be pro- tected by patent is to appeal to the esthetic taste and to produce pleasure in its contem- plation. Id. 79. Where the machine-bed claimed in a design application differs from prior beds, but consists of old parts assembled from prior de- vices. Held, that the difference in form would suggest itself to any workman and does not involve the exercise of inventive genius. Ex parte Hanson, C. D. 1903, 103 O. G. 2038. 80. It is as necessary that invention should be exercised in producing the subject-matter to be secured by a design patent as it is in the production of the subject-matter of a mechan- ical patent. The creation of the subject-matter must involve an exercise of the constructive imagination beyond that which may be expect- ed to be usually employed by any competent workman. Ex parte Kern, C. D. 1903, 103 O. G. 2061. 81. Held, that the appellant's design for a hose-supporter is lacking in patentable novelty in view of his own prior patent and also in view of patents granted to others upon de- vices differing from the appelant's only in mechanical details. *In re Freeman, C. D. 1904, 109 O. G. 1339. 82. The change or omission or addition of a few minor details would not justify the mul- tiplication of design patents even though the designs may readily be distinguished from each other by one or more features. Substan- tial differences are required to render one de- vice patentable over another as a design. *Id. 83. The novelty of a design must be judged by the test of ornament, and while the final merit of ornamentation may depend upon the harmonious blending of small details me- chanical differences which may make a vast difference in the operativeness of the devices may make no appreciable difference between the devices as designs. ♦Id. 102 DESIGNS, IV. 84. The test of patentable novelty in the case of mechanical inventions and in the case of designs is different, owing to the different nature of the two things. Detail is of little consequence in designs, and it may be all im- portant in mechanical inventions. *Id. 85. Where the applicant's design is for a font of Gothic letters characterized by minute ceriphs and Gothic letters are shown in one reference and minute ceriphs upon letters sim- ilar to the Gothic in another reference. Held, no invention is involved in placing ceriphs upon the letters of the first reference in the same manner in which they have been pre- viously applied to somewhat similar letters in the second reference. Ex parte Barnhart, C. D. 190.'), 115 O. G. 247. 86. In affirming the rejection of a design for Gothic letters provided with minute ceriphs upon two references, one showing the Gothic letters and the other showing minute ceriphs upon letters somewhat similar to Gothic, Held, that the ground of rejection here is not aggregation, but lack of invention, by reason of the mere obviousness of the changes relied upon to distinguish over prior designs. Id. 87. Differences upon which a design patent is granted must involve invention and be di- rected to the ornamentation of the device to which applied, and the officer or tribunal au- thorizing the issue of the patent must be sat- isfied upon both of these points. Ex parte Schmohl, C. D. 190.J, US O. G. 50,'>. 88. There can be no invention in the appli- cation of an irregular outline to letters of one style when this has already been done upon letters of style not widely different un- less some new effect of ornamentation is se- cured. Id. 89. Where the forms of certain letters in the applicant's font differ from those of the reference and these differences are easily ob- servable and might alone enable the fonts to be distinguished, but produce no variation of the ornamental effect, Held, that said differ- ence.s are immaterial to the patentability of the design. Id. 90. Where an old device of ornamentation has been used in an old way and the orna- mental effect of such use is the same as that secured in the prior use of said device, Held, that the design produced is not the result of an inventive act. Ex parte Schraubstadter, C. D. 1905, 116 O. G. 1185. 91. That the exercise of invention is re- ((uircd in the production of patentable designs is well settled. (Cases cited.) Id. 92. Where the essential characteristics of the letters of the font are found in the pro- portions of their parts and in the waved out- line thereof and the proportions of the parts are not substantially novel and the waved out- line has been previously applied to letters not of widely different style and proportions from those of the applicant. Held, that the appli- cant has merely made an adaptation of the waved outline, which does not amount to in- vention. Id. 93. Where a font presents peculiarities in some of the letters, but these peculiarities do not bear such relation to the font as a whole as might distinguish novelty and invention in the font, even though such qualities could be predicated upon these peculiarities for the individual letters in which they appear, and the letters display no common or pervading characteristic which might appeal either to the ordinary observer or to the trained expert as new and ornamental. Held, that the font is not patentable. Id. 94. A design for collapsible tubes differing from a patented tube merely in that the bot- tom is rounded instead of flat and there is a bead near the top contains no patentable nov- elty. While the tubes may be distinguished in appearance, no invention was required to make the changes. Ex parte Lambert, C. D. 1905, 119 O. G. 1425. 95. Where peculiarities in the applicant's design were such as to prevent that design from being regarded in the trade as a substi- tute for the design shown by the references. Held, that the applicants' design was never- theless not patentable, because such peculiari- ties did not rise to the dignity of invention. In re Schraubstadter, C. D. 1900, 120 O. G. 1107. 96. Where the applicant's design was for a font of type in which the letters had a waved outline. Held, that aside from the waved out- line the letters seemed to be of a very ordi- nary style and that to add a waved outline, which was old, to common forms of letters did not involve invention. *Id. 97. A design patent for an article will be granted only when there can be found in such article a new appearance created by inventive process which serves the purpose of embel- lishment. It is not enough that the design should possess features of utilitarian attrac- DESIGNS, VI, (b). 103 tiveness which would commend it to persons familiar with the art because of its functional value; it must possess an inherent beauty. Ex parte Bettendorf, C. D. 1907, 127 O. G. 848. 98. Where, as in the art of printing, the field of inventive design is limited to modifi- cations of detail in predetermined forms of letters, and an inventor has succeeded in pro- ducing a new font having clearly distinguish- ing characteristics running through the whole, and the esthetic value of his production is confirmed by an extensive demand for the same, it is believed that he should be granted the right to a lawful monopoly of the results of his labor for the limited time provided by the design statutes. Ex parte Smith C. D. 1907, 130 O. G. 1688. (b) Function or Mechanical Utility. 99. The utility of a design invention for the performance of a me'chanical function is not of the essence of the invention, since two arti- cles may clearly so different in shape as to properly constitute subject-matter for two separate design patents, although they per- form the same mechanical function in exactly the same way; and two articles may be so nearly alike as to constitute the same design, but may at the same time perform entirely different mechanical functions. Id. Ex parte Tournier, C. D. 1900, 90 O. G. 1948. 100. The only purpose of experimental use of mechanical inventions is to determine whether or not the device is so constructed as to satisfactorily perform the mechanical functions intended ; but since the mechanical function of the device forms no part of a de- sign invention experimental use of a design is not necessary. Id. 101. In addition to the mere esthetical or artistic effect of the design upon the senses of the spectator the element of functional utility may be considered in determining the question of patentability ; but the functional utility is not to be regarded as a controlling or even as an essential element in a patent for a design. *In re Tournier, C. D. 1901, 94 O. G. 2106. 102. A tapering mouth to a jar made in a peculiar way to receive the cover is not an ornament giving to the article an attractive appearance, but is merely a mechanical con- struction to perform a mechanical function. Wright V. Lorenz, C. D. 1902, 191 O. G. 664. 103. Design Patent No. 26,587, granted Feb- ruary 2, 1897, to Allen H. Rowe for a horse- shoe-calk. Held, invalid because the shape of the device was designed merely to enhance its mechanical utility and not for the purpose of display or ornament, d Rowe v. Blodgett & Clapp, C. D. 1902, 98 O. G. 1286. 104. The new appearance which entitles a party to a design patent may be superficially applied or it may rest more or less deeply in the structure of the parts; but it must be a creation of inventive genius accomplishing the purpose of ornament and not used for its functional value. Ex parte Knothe, C. D. 190:i, 102 O. G. 1294. 105. A patentable design will be found weighed and valued by the test of ornament and it will not be found in those articles whose visible forms are only modeled to de- velop function. Id. 106. The design law does not concern itself with the functional value of the elements which may be in sight, and it is not the exhi- bition of elements contributing to function, however new, which was intended to be pro- tected as a design. Id. 107. Forms modeled only to develop func- tion may receive protection under section 4886, Revised Statutes, if they are function- ally distinguishable from other existing forms, and when they cannot stand this test they are not worthy of the protection of the patent law, but are mere changed forms changed for no useful purpose. Id. 108. Changed forms which do not produce ornamental effects and which develop no new functions do not promote the progress of the useful arts and are outside of the constitu- tional power of congress to afford protection to them. Id. 109. A shade-roller provided with a ferrule held in place by a circumferential indentation. Held, to have been created for the accomplish- ment of a mechanical result and not as an or- nament and therefore to be not patentable as a design. Ex parte Hartshorn, C. D. 190:?, 104 O. G. 1395. 110. A design may properly be placed upon a device having mechanical utility, but the de- sign itself is not founded upon that utility. It has its mechanical utility irrespective of the fact that it is embellished with a design. Id. 111. A design for a hose-supporter shown. Held, unpatentable, since the construction is one of mechanical utilitv where the elements 104 DESIGNS, VI, (c), VII. were adopted for their functional value and which has in it no result of the constructive imagination ornamental in its nature. Ex parte Freeman, C. D. 1903, 104 O. G. 1396. 112. Any peculiarity of appearance due to a configuration created and employed for the performance of a mechanical result, such as to make the article tit the place where it is to be used, must be eliminated from considera- tion in determining whether the article con- stitutes an ornamental design patentable under the design law. Ex parte Kern, C. D. 1903, 105 O. G. 2061. 113. Where the external configuration of an article was adopted simply for the per- formance of a mechanical function and the ornamental design placed upon the central portion of it was old in other devices, Held, that no invention was involved in placing the ornamental design upon the particular article. Id. 114. Where a standard old in another art was adopted as a telephone desk-standard and there was added to it an arm for supporting the telephone-receiver and such changes were made as to adapt it to its new use, Held, that the changes were not for the purpose of orna- ment, but to perform the mechanical functions desired, and that therefore they do not make the device patentable as a design. Ex parte Nickel and Crane, C. D. 1904, 109 O. G. 2441. 115. Where the changes in an old device do not and were not intended to increase the beauty of the device, but merely to adapt it to perform new functions when used for a new purpose, Held, that if there is invention present meriting patent protection it is a mechanical invention and not a design inven- tion. Id. 116. A design cannot be made the subject of a second patent merely because it has been put to a new use, since the question of use does not enter into consideration in designs. They relate solely to the matter of appear- ance. Id. 117. Where in designing a lamp the parts performing mechanical functions are changed in form, yet these changes are made not for the purpose of obtaining new or modified func- tions, but solely for the purpose of obtaining a new and ornamental appearance, and it ap- pears that the changes in appearance are not obvious, but were the result of the exercise of ingenuity, rising above that of the ordinary mechanic. Held, that the patent should be granted for a new and useful design. Ex parte Gray, C. D. 190,i, 114 O. G. 543. 118. The possession of features having cer- tain mechanical advantages. Held, to have no bearing upon the question of the patentability of a design. Ex parte Sherman, C. D. 1909, 147 O. G. 237. 119. In considering the question of the pat- entability of a design utility may, in a close case, be given some consideration ; but the real question is whether there is such original- ity shown as to call for the exercise of the inventive faculty. *In re Sherman, C. D. 1010, ]-,4 O. G. 839. 120. A design which is distinguished from the prior art only by features of mechanical utility, Held, not patentable. Ex parte John- son, C. D. 1910, 159 O. G. 992. (c) Effect on Ordinary Observer. 121. Held, that the conclusion of the court in Gorham Co. v. White (2 O. G. 592, 14 Wall. 511), was that the novelty of the design was to be determined and infringement decided by the comparative appearance of the designs in the eyes of average observers and was not to be determined by such appearance to the eyes of experts. In re Schraubstadter, C. D. 1900, 120 O. G. 1167. 122. Where contention was made that it is impracticable for the patent offce to pass on esthetic values and that the proper estimation of the applicant's design required cultivated taste. Held, that the statutes as construed by the courts intend that the patentability of de- signs shall be determined by their appeal to the eye of the ordinary man. *Id. VII. Infringement. 123. Letters Patent No. 26,533, granted Jan- uary 12, 1897, to Jacob Frank, for a design for a cap, consisting of a succession of dia- mond-shaped figures encircling the rim of the cap, together with a single rosette attached to the rim at a point between two of the dia- mond-shaped figures, is not infringed by a cap having a different style of rosette and on the rim rhombus-shaped figures which when held in a sloping position appear to be diamond-shaped, the general effect of the two designs being different, c Frank et al. v. Hess et al., C. D. 1898, 82 O. G. 1566. 124. The monopoly covered by a design pat- ent must be confined to the particular design shown and described. Id. DESIGNS, VIII, IX. 105 125. In considering the question of infringe- ment of a design patent the method of pro- duction is irrelevant. The subject for con- sideration is not the process of creation, but the effect produced upon the eye by the things created. If there be such resemblance be- tween them as to deceive a purchaser, induc- ing him or her to purchase the one supposing it to be the other, the one which is patented is infringed by the later one. It is, however, always to be borne in mind in applying this criterion that the purchaser referred to is one who, in fact, does give some attention to de- sign, and that the character of the design and of the fabrics to which it is related and the extent of discriminative examination likely to be made by the purchasers thereof are to be taken into account, c Byram v. Freidberger, C. D. 1898, 82 O. G. 1420. VIII. Claims. 126. Where a claim was for "a design for ornament for the handle of a tooth-brush," etc., and the examiner required that the inven- tion should be claimed as "a design for the handle of a tooth-brush," etc.. Held, that the examiner's requirement should be sustained, as such an ornament is an intangible thing which should not under the circumstances and decisions be patented as a design, but the de- sign patent should be granted for the instru- ment which applicant has invented and pro- duced. Ex parte Hewitson, C. D. 1899, 87 O. G. 315. 127. Held, further, that although applicant's design is produced by ornamentation instead of by shape there is no more reason why it should be claimed as a design for an orna- ment than that a design consisting of the shape of an article or a design for a pattern for carpet should be claimed as a design for the shape or pattern instead of as a design for the article shaped or a design for the carpet. Id. 128. If through ignorance or mistake an applicant claims in a design application sub- ject-matter for which a design patent cannot under the statutes be granted, the claims must be rejected. (Ex parte Proudfit, C. D. 1876, 202, 10 O. G. 585.) Ex parte Waterman, C. D. 1902, 100 O. G. 233. 129. In design cases the question of patent- able novelty relates to the design in its en- tirety without regard to the form of the claim, and therefore a change in the claim by amendment cannot delay fmal action upon the merits of the case. P^x parte Kurz, C. D. 1904, 113 O. G. 2215. 130. The claim in a design case should be to the single article shown and should not refer to that article in the plural, thus indica- ting that the claim is to other things besides what is shown. Ex parte Remington, C. D. 1905, 114 O. G. 761. 131. Where the claim in a design case is for the "design and form" shown. Held, that the words "and form" should be canceled. Ex parte Kahn, C. D. 1903, 110 O. G. 2008. 132. In design cases the claim covers merely the design which the applicant discloses, and any attempt to vary the scope of the claim by the words used is objectionable, since it is likely to confuse the public. Id. 133. The preamble to the claim in a design case should be restricted to the words "I claim." Superfluous words should be omitted. Ex parte Weihman, C. D. 1903, 118 O. G. 2252. 134. Where the specification of a design ap- plication contains a description of certain fea- tures of the design. Held, that the words "and described" should be included in the claim. Ex parte Voncanon, C. D. 1910, 152 O. G. 487. IX. Description in Specification. 135. Design patents should disclose all and nothing more than the design, which the pat- ent is intended to cover, and the specification should recognize the fact that the entire thing disclosed constitutes the design. Ex parte Adams. C. D. 189S, 83 O. G. 1994. 136. The law requires that the inventor shall have "produced" a design, and this cannot be done without producing some instrument em- bodying the peculiar shape or configuration constituting the design. It is the instrument which has actually been produced and not the bare idea of shape which is patentable. Id. 137. In design patents it is the showing of the design which is of primary importance, the description being merely auxiliary to the showing. The language of the description cannot be used to give to the design a generic meaning which would include designs so far different from the design shown that they would not be mistaken for it. (Ex parte Traitel, C. D. 1883, 92, 25 O. G. 783.) Feder V. Poyet, C. D. 1899, 89 O. G. 1343. 138. Where the description of a certain part shown in the drawing states that it may have 106 DESIGNS, IX, X. any shape and style desired and this part forms a material part of the design, such de- scription should be canceled, as it implies that there may be modifications of the design il- lustrated, and it is well settled that such mod- ifications do not exist. Ex parte Burdick, C. D. 1901, 97 O. G. 1373. 139. A claim to the design shown and de- scribed covers it in its entirety, and when it is decided to be unpatentable there is no rea- son for reopening the case for consideration because of an amended description. Descrip- tive matter may emphasize one feature or an- other, but cannot change the design. Ex parte Hanson, C. D. 1903, 103 O. G. 1417. 140. The descriptive material in a design specification should be reduced to a minimum, or, better still, entirely eliminated, since it tends to confuse rather than make clear the appearance, which is the new thing to be se- cured by the patent. Ex parte Freeman, C. D. 1903, 104 O. G. 139G. 141. The appearance of an object may be perceived immediately upon inspection of a picture thereof, and it is futile to attempt to describe that appearance by words. Id. 142. There can be no place in a design pat- ent specification for such descriptions as are intended to differentiate between material and immaterial elements, the test of which is the effect produced upon the eye of the beholder. Id. 143. In design applications it is merely the appearance of the article which is sought to be patented. The drawing accompanying the application would clearly show every feature of the design contributing to such appearance. When the ornamental appearance must be seen by a glance at the drawing, it is clearly superfluous to attempt to describe this ap- pearance in the specification. Ex parte Lloyd, C. D. 1904, 112 O. G. 251. 144. A picture of the design serves to con- vey a greatly more adequate idea of the de- sign than any verbal description could possibly do, and in the presence of the picture a super- added verbal description is generally useless and oftentimes confusing. *In re Freeman, C. D. 1904, 109 O. G. 1339. 145. The ruling that the descriptive mate- rial in the specification of design cases should be reduced to a minimum or omitted, Held, to de the dictate of reason, common sense, and common experience. *Id. 146. The descriptive material in a design application is, in the presence of the drawing. generally useless and oftentimes confusing. Kx parte Goldsmith, C. D. 1904, 110 O. G. 309. 147. Where the component parts of a figure are described in the specification in detail. Held, that such detailed description should be canceled. Id. 148. The description of the figure of the drawing required by Rule 82 should be con- fined to a statement whether such figure is an elevation, plan, or perspective. Id. 149. There is no appeal to the examiners-in- chief from the action of the examiner of de- signs requiring the cancelation of surplus de- scription ; but the matter is reviewable on pe- tition. Ex parte Mygatt, C. D. 1905, 117 O. G. 598. 150. Designs relate to the ornamental ap- pearance of the article and have nothing to do with the use to which it is put, the func- tions which it performs, or its mechanical construction, and therefore these matters should not be described. Id. 151. In design cases description of matters which are clearly shown in the drawing should be dispensed with, since it is surplusage and is calculated to mislead. Id. 152. The statement in a design case that certain features of the article shown consti- tute no part of the design claimed is objec- tionable and will not be permitted. Ex parte Remington, C. D. 1905, 114 O. G. 701. 153. While many if not a large majority of designs can be sufficiently disclosed by a draw- ing and a claim for the ornamental design as shown is in general the better form of claim, Held, that the design in this case relates to that class where a description is not only proper, but necessary, and that the claim should carry a description of the salient fea- tures of the design. In re Mygatt, C. D. 1906, 121 O. G. 1676. 154. A design patent for a textile fabric, Held, not invalid because of the absence there- from of a description of the design in words. c Cheney Brothers v. Weinreb and Weinreb, C. D. 1910, 157 O. G. 1002. 155. "Of course I do not mean that the de- sign cannot also be described in words, but I think it confusing and useless, provided there be some writing to indicate upon what character of goods the design is to be ap- plied." c Id. X. Drawing. 156. In design patents it is permissible to show the essential features in full lines and DESIGNS, X-XIII, (b). 107 the remaining parts of the design in dotted lines. Ex parte Adams, C. D. 1808, 83 O. G. 1994. 157. Tlie drawing and description of an ap- plication for a design patent should not show or describe features which form no material part of the design. Ex parte Burdick, C. D. 1901, 97 O. G. 1373. 158. The parts which when put together form the design which is the subject of the application should not be separately shown in the drawing, since such illustration leads to confusion. Ex parte Mygatt, C. D. 1902, 101 O. G. 6C1. 159. A figure of the drawing in a design case showing the interior construction of the device. Held, properly objected to by the ex- aminer. Ex parte Colton, C. D. 1903, 104 O. G. 1119. 160. The drawing accompanying a design application should clearly show every feature of the design. Ex parte Goldsmith, C. D. 1904, 110 O. G. 309. 161. In a design application the drawing sufficiently identifies the design without the aid of any description. Id. 162. The drawing in design cases should show the article as it appears to observers, and therefore cross-sectional views are not permissible. Ex parte Kohler, C. D. 1905, 116 O. G. 596. 163. The drawing in a design case should show the article as it appears to observers and should not include a panoramic view of the ornaments to be placed thereon. Ex parte Wellman, C. D. 1905, 118 O. G. 2252. 164. Where certain figures of the drawing show apparatus for making an article and all claims to such apparatus have been divided from the case and these figures do not aid in obtaining an understanding of the articles, Held, that these figures and the description of the apparatus illustrated therein should be canceled. E.x parte Crecelius, C. D. 190."), 115 O. G. 1849. 165. When in an application for a design patent for a glass shade the edges or prisms which form the upper surface of the shade are not merely surface ornamentation, Held, that the examiner properly required that a view of the article as seen from the side be added to the drawing which contained only a top and a bottom plan view. Ex parte My- gatt, C. D. 1911, 171 O. G. 1257. XI. Internal Construction. 166. Design inventions have reference mere- ly to the external appearance of the article, and therefore a figure of the drawings illus- trating its interior construction is not only unnecessary, but is likely to lead to confu- sion as to what the patent covers. Such fig- ures should be canceled. Ex parte Tucker, C. D. 1901, 97 O. G. 187. XII. Desicn and Mechanical Application ON Same Disclosure. 167. An inventor may take out a patent for a mechanical construction and a separate pat- ent for the design of the same article, and hence the mechanical patent is immaterial on the question of anticipation of the design pat- ent, c Flomerfelt v. Newwitter et al., C. D. 1898, 85 O. G. 458. XIII. Interference. (a) In General. 168. The issue in the present case being the conventional claim for the design shown and described, its meaning is to be ascertained from the drawing and description to which it refers. Feder v. Poyet, C. D. 1899, 89 O. G. 1343. 169. If there is doubt as to the meaning of the issue and one party has a patent granted before the filing of the other party's appli- cation, its meaning is to be ascertained from the patent as well in design as in mechanical cases. Id. 170. Held, that the designs produced by F. prior to P.'s filing date do not embody the invention in issue, and therefore priority awarded to P. Id. (b) Reduction to Practice. 171. Since the subjects of design patents are form or contour and surface ornamenta- tion, it is physically impossible for a design to exist in an incomplete condition; but if it has been produced at all it is complete and entitles the producer to a patent at that time. Ex parte Tournier, C. D. 1900, 90 O. G. 1948. 172. The production of a design is what corresponds to the reduction to practice of a mechanical invention, since its utility within the meaning of that term as applied to designs is apparent upon mere inspection. Id. 108 DIVISION OF APPLICATION. 173. T!ie production of an article embody- ing the design is a completion of the invention and corresponds to the reduction to practice of a mechanical invention, since a design re- lates merely to shape, and if an article em- bodying it has been produced it is immaterial whether or not it has been used practically in a mechanical sense. (Ex parte Tournier, C. D. 1900, 37, 90 O. G. 1948.) *Tyler v. St. Amand, C. D. 1901, 94 O. G. 1969. 174. Held, that a leather hinge exhibiting the shape is a reduction to practice of a de- sign for a hinge. The material of which an article is made and its size are immaterial in design cases, since a design made of glass and used as a paper-weight or an ornament would be the same design as and constitute a refer- ence for an article of the same shape made of metal and used in a machine to perform a mechanical function. *Id. 175. Held, in view of the evidence, that St. Amand completed the invention before Tyler took the matter up, and therefore the decision of the acting commissioner affirmed. *Id. 176. Where the design shown in L.'s appli- cation consists of the back of a brush having an ornamental handle and border with a blank space in the center of the back and the device made by him and introduced in evi- dence embodies the same features and in addi- tion a well-known picture in the blank space. Held, that the device made is a reduction to practice of the design shown in the applica- tion. Leigh V. Saart, C. D. 1902, 101 O. G. 603. 177. A prior mechanical application is not a constructive reduction to practice of the in- vention disclosed in a later design application filed by the same party. McArthur v. Gilbert, C. D. 1904, 110 O. G. 2509. 178. While a prior mechanical application is not a constructive reduction to practice of a design, a copy of such application may be in- troduced in evidence to show prior conception. Id. XIV. Public Use and Sale. 179. The doctrine of experimental use does not apply to design inventions; but any use of a design in public for whatever purpose is public use. Ex parte Tournier, C. D. 1900, 90 O. G. 1948. 180. Where a design for an attaching-plug for electric circuits was invented and produced as a complete article of manufacture and as such was put in use openly in the shops of the company more than two years prior to the tiling of the application without the slightest injunction of secrecy upon any one. Held, that such use was a public use in the fullest sense of the patent law. *In re Tournier, C. D. 1901, 94 O. G. 2166. 181. It is well settled that the statutory bar of public use applies as well to applications for patents for designs as to applications for patents for mechanical inventions; but there is very great doubt whether time for experi- mental use of more than two years prior to the application for the purpose of perfecting the invention should be allowed in design cases, as in the case of mechanical inventions, without affecting the validity of the claim. Id. 182. Even if it is conceded that experi- mental use could be set up to answer the ob- jection of a public use of more than two years prior to the application in design cases. Held, that the proof in this case falls far short of establishing that the use was experimental. *Id. XV. Test of Identity. 183. Notwithstanding the insertion of the word "useful" in the statute, the sole test of infringement and anticipation in design cases is similarity in appearance such as would de- ceive an ordinary observer and induce him to purchase one supposing it to be the other. Ex parte Steck, C. D. 1902, 98 O. G. 228. 184. Where L. has produced a design for the back of a brush having one well-known picture on it, Held, that S. is not entitled to a patent upon a design differing therefrom only in the substitution of another well-known picture. Leigh v. Staart, C. D. 1903, 101 O. G. GG3. 185. It is not sufficient that the designs made by the parties can be distinguished so long as they both include the only patentable subject- matter. Where they are not patentably dif- ferent, only the first is entitled to a patent. Id. 186. The doctrine of double use applies to designs, and the substitution of one well- known and independent feature for another does not patentably distinguish two designs. Id. DIVISION OF APPLICATION. I. In General. II. Constitutionality of Revised Statute 4886. DIVISION OF APPLICATION, I. 109 III. Appeal or Petition. IV. Citation of References. V. Cancellation ok Part oi- Application. VI. Oi'i'icE Practice. VII. Broad and Narrow Claims. VIII. COMIIINATION ANE SUBCOMlilNATlON. (a) III General. (b) Division Necessary. (c) Division not Necessary. Classieication in Patent Office. (a) In General. (b) Division Necessary. (c) Division not Necessary. Different Species. (a) In General. (b) Division Necessary. (c) Division not Necessary. Processes. Process and Apparatus. (a) In General, (h) Division Necessary. (c) Division not Necessary. Process and Product. (a) Division Necessary. (b) Dii'ision not Necessary. Status in Arts; Manufacture and Sale; Office Classification, Etc. (a) Diz'ision Necessary. (b) Division not Necessary. Particular Cases. (a) Division Necessary. (b) Division not Necessary. I. In General. 1. Where two devices are independent of each other and they do not mutually con- tribute to produce a single result and the action of one does not in any manner modify or affect the action of the other, Held, that division should be required. Ex parte Wil- liams, C. D. 1898, 83 O. G. 1346. 2. When the independence of the inventions is clear, division should be made before any action upon the merits. Ex parte Rappleye, C. D. 1898, 85 O. G. 2096. 3. The hydraulic means for raising and lowering the chair is a mere improvement on old devices, and does not in any manner mod- ify the operation of the devices covered by the other claims, and therefore should be made the subject of separate invention. Ex parte Wilkerson, C. D. 1S99, 87 O. G. .513. 4. Where devices are independent of each other and do not mutually contribute to pro- duce a single result, and the action of one IX. X. XI. XII. XIII. XIV. XV. does not in any manner modify or affect the action of the other, they should not be per- mitted to be covered by one application. (Ex parte Williams, C. D. 1898, 76, 83 O. G. 1346, cited.) Id. 5. Amended Rule 41 applies to applications filed prior to the promulgation of the rule as well as to those filed subsequently thereto. Ex parte Farquhar et al., C. D. 1899, 89 O. G. 706. 6. An applicant who has had his claims con- sidered on the merits before the requirement of division has no just ground for complaint that the requirement should have been made earlier, as he has been favored by the office to the extent that he has been given an action on the merits of all of his claims instead of on only one set thereof, as would have been the case had division been made before such action. Id. 7. The statute has always been regarded as authorizing a rule directing when more than one invention may be comprehended in one patent. That a discretion in this particular is vested in the commissioner is recognized and settled in numerous decisions of the courts. Ex parte Frasch, C. D. 1900, 91 O. G. 459. 8. Where after a requirement for division the applicant presented claims which in the examiner's opinion covered mere aggregations of the independent inventions. Held, that the examiner properly refused to enter them until the question of division was settled. Ex parte Brownell, C. D. 1901, 94 O. G. 988. 9. In an application covering improvements in grain-drills. Held, that division was prop- erly required between claims to, first, the force-feed; second, the drill-teeth; third, the adjustable rank-drill; fourth, the hitch or draft devices; fifth, the frame parts, and sixth, the clutch. Ex parte Pelton, C. D. 190], 9.') O. G. 633. 10. Although it may be assumed that each of the devices tends to improve the grain- planting device as a whole. Held, that it does not follow that they are dependent upon each other and mutually contribute to produce a single result within the meaning of Rule 41. Id. 11. A requirement for division is not an action upon the merits of the application, but is a mere matter of form from which the party has no right of appeal to the examiners- in-chicf. An appeal in such case will not be 116 DIVISION OF APPLICATION, I. forwarded. Ex parte Frasch, C. D. 1002, 98 O. G. 1967. 12. A requirement for division and a re- quirement tliat a certain one of the independ- ent inventions be eliminated from the case on the ground that the apphcant has by his actions elected to retain the other invention in that case do not relate to the merits and are not appealable to the examincrs-in-chief, but relate to form and are petitionable to the commissioner. Ex parte Steinmetz, C. D. 1902, 98 O. G. 1967. 13. Held, that the examiner properly re- fused to forward to the examincrs-in-chief an appeal from his action requiring division. Id. 14. Held, that division was properly re- quired between claims for a record-cabinet and claims for a record-block where it ap- pears that the cabinet could be used with other blocks and the blocks could be used in other cabinets. Ex parte Cavanagh et al., C. D. 1902, 98 O. G. 2588. 15. Held, that division was properly re- quired between claims to a sparking igniter, claims to a governor-valve, claims to a rclicf- valvc, and claims to the general structure of a gas-engine. They cover separate and inde- pendent inventions. Ex parte Tyler, C. D. 1902, 100 O. G. 686. 16. Where the examiner requires division between process and apparatus claims and be- tween claims to different species of the appa- ratus without mentioning the particular claims by number, and the applicant amends by can- celing the process claims and asks for recon- sideration and a specific statement as to the apparatus claims, Held, that his action is proper and saves the case from abandonment. Ex parte Naef, C. D. 1902, 100 O. G. 2601. 17. In considering division the question is not whether the devices are capable of use to- gether and in disconnected ways tends to im- prove the machine of which they form a part, but is whether they are dependent upon each other and mutually contribute to produce a single result. Ex parte Burmeister, C. D. 1902, 101 O. G. 662. 18. Held, that division was properly re- quired between claims to antifriction end- thrust bearings and claims to bearings to re- duce lateral friction between the hub and the axle although both may be used in one device. They are independent in structure and opera- tion and have been tnad? independent subjects of invention. Ex parte Stuver, C. D. 1902, 101 O. G. 1130. 19. Where claim 1 is drawn to cover, first, an old construction of motor; second, the process in the performance of which the changed motor is used, and, third, certain changes in construction of the old motor which are necessary for the perfected operation of the new device, and claim 2 covers a fan- motor so arranged as to be adapted for use with currents of different frequency and which when operated performs the process set forth in claim 1, }letd, that division should be required between them, as these two claims bear the relation to each other of a machine and the process in the performance of which the machine is used and are not related to each other as a process and its product. Ex parte Chapman, C. D. 1903, 102 O. G. 820. 20. Held, that division was properly re- quired between a composition of matter and a lightning-arrester including that composi- tion as an element. Ex parte Bennett, C. D. 1903, 105 O. G. 1262. 21. A party may claim a process and the product which necessarily results therefrom in a single application ; but he cannot claim in addition a device in which that product merely forms an element. Id. 22. Where an amendment is filed after a requirement for division which introduces no new question of division, but attempts to place the claims in allowable condition, cither as to form or merits, or attempts by substan- tial changes to avoid the necessity for divi- sion. Held, that the amendments should be entered and acted upon. Ex parte Williams, C. D. 1903, 105 O. G. 1780. 23. Where it appears that because of a dis- agreement between the inventor and his as- signee the assignee believes that he cannot cause the inventor to execute a new applica- tion. Held, not a sufficient reason to warrant waiver of a requirement of division, which is clearly justified by the practice of this office in its rules and decisions interpreting the same. Ex parte Davis, C. D. 1903, 105 O. G. 1783. 24. Where the claims cover inventions which are so independent that each requires an in- dependent search to determine its novelty. Held, that division should be required. Ex parte Adams, C. D. 1903, 100 O. G. 541. 25. Where the inventions though distinct are dependent upon each other, and the field of search for all is the same as that for a sin- DIVISION OF APPLICATION, I. Ill gle one, Held, that ordinarily there is no rea- son for requiring division. Id. 26. Where an application has been allowed and forfeited and the requirement for division was made for the first time when the applica- tion was renewed. Held, that such delayed action indicates that there is some doubt as to the propriety of the requirement and that such doubt should be resolved in favor of the applicant. Ex parte Uhlig, C. D. 1903, 106 O. G. .^)41. 27. A requirement for division will not be overruled merely because it is made for the first time late in the prosecution of the case. Ex parte Lewis, C. D. 1904, 108 O. G. 559. 28. Where division is required between two or more sets of claims covering two inde- pendent inventions, Held, that the applicant should be permitted to elect which invention he desires to prosecute and that he should not be required to eliminate from his application any one set of claims. Ex parte Butcher, C. D. 1904, 108 O. G. 1587. 29. Held, that division is properly required between claims for the method of making a matrix and a claim for an article cast in the matrix, as these claims cover independent in- ventions. Ex parte Jennens, C. D. 1904, 108 O. G. 1587. 30. A requirement for division will not be overruled because made for the first time late in the prosecution of the case. Ex parte Benke, C. D. 1904, 108 O. G. 15S8. 31. Without a hard and fixed rule the ac- tion of the patent office upon the question of dividing applications for patents can be ac- commodated to the character of invention and discretion can be exercised, and when exer- cised the courts will not review it except in cases of clear abuse. *United States c.x rel. Steinmetz v. Allen, Commissioner of Patents, C. D. 1904, 109 O. G. 549. 32. Where an applicant divides his applica- tion upon a requirement of the office and after one division has become a patent some question is raised whether there is a proper line of division and whether the second case should not be rejected upon the patent, Held. that any and all doubts should be resolved in favor of the applicant. The office should not by contradictory rulings deprive the ap- plicant of substantial rights. Ex parte Davis, C. D. 1904, 109 O. G. 1068. 33. In determining whether or not division should be required the question to be decided is not whether the claims would be sustained as valid if granted in one patent, but is wheth- er the inventions claimed are related and de- pendent. Ex parte Frasch, C. D. 1904, 109 O. G. 1338. 34. The courts sustain patents covering two or more independent inventions; but it does not follow that this office must permit inde- pendent inventions to be claimed in one pat- ent. The question of division is a matter left largely to the discretion of the patent office. Id. 35. Where division is required, it must be settled before the office will examine the mer- its of each separate claim to determine the question of patentability. An examination of two or more independent inventions will not be made in one case. Ex parte Pickles, C. D. 1904, 109 O. G. 1888. 36. Where division is required it must be settled before the office will examine the merits of each separate claim to determine the question of patentability. An examination of two or more independent inventions will not be made in one case. Ex parte Snyder, C. D. 1904, 110 O. G. 2230. 37. The application of the rule concerning the requirement of division to a given case involved an exercise of judgment and dis- cretion in every case. The facts of each case must be considered, with the burden upon the applicant who asserts that two statutory in- ventions are one unitary invention. *In re Frasch, C. D. 1906, 122 O. G. 1048. 38. The nature of the claims considered and Held, to warrant the examiner's require- ment for division. Ex parte Ramsey, C. D. 1909, 146 O. G. 721. 39. Where the requirement for division was not made until after several actions on the merits, Held, that this, being a benefit rather than detriment to the applicant, furnishes no grounds why such a requirement, which is permitted by the rules, should not be ad- hered to. Id. 40. Where in respect to a requirement for division between article and process claims an applicant canceled the process claims for the express purpose of obtaining action on the merits and with the statement that pro- cess claims would later be reasserted. Held. that the examiner was right in requiring that the process claims be resubmitted, if at all, before action on the merits, although under the circumstances he might have considered the cancelation of the process claims final and refused therafter to consider any further pro- 112 DIVISION OK APPLICATION, II, III. cess claims. Kx parte Scott and Deals, C. D. 1909, 147 O. G. 520. 41. Where a requirement for division is made there is no objection to the examiner acting on the merits of all the claims. Ex parte Lantzkc, C. D. 1910, 156 O. G. 357. II. Constitutionality of Rkvisf.d Statute 4886. 42. Where the constitutionality of section 4886, Revised Statutes, is attacked because it provides that inventions or discoveries may be either arts, machines, manufactures, or compositions of matter and because presump- tively nn two of these subjects are one inven- tion, it is a sufficient ansu'er to say that in- ventions have been thus distinguished con- tinuously since 1793 and that the court of last resort has been called upon to consider, from one standpoint or another, this division of inventions and has frequently recognized the distinction between them without ever inti- mating that the legislative branch of the gov- ernment had exceeded its power in so classi- fying inventions. *In re Frasch, C. D. 1906, 122 O. G. 1048. III. Appeal or Petition. 43. An appeal from the decision of the commissioner of patents requiring division between process and apparatus dismissed for want of jurisdiction. *In re Frasch, C. D. 1902, ion O. G. 1977. 44. The requirement for division is not a refusal of a patent, but is a mere interlocu- tory order from which there can be no appeal. *Id. 45. The right to appeal to the court of ap- peals of the District of Columbia from a de- cision of the commissioner of patents is lim- ited to two classes of cases: first, where an application for patent has been finally denied, and, second, where in an interference proceed- ing there has been a final determination of the question of priority of invention between adverse claimants. *Id. 4G. The commissioner of patents is em- powered by law to establish rules to regulate the procedure and practice in his office, and the requirement that certain claims be pre- sented in two applications instead of one comes within this authority, a United States ex rel. Steinmetz v. Allen, Commissioner of Patents, C. D. 1903, 102 O. G. 231. 47. The requirement for division or that certain claims be presented in a separate ap- plication is not an adverse ruling upon the ap- plicant's right, but is a mere preliminary re- quirement as to procedure. *Unitcd States, ex rel. Steinmetz v. Allen, Commissioner of Patents, C. D. 1903, 104 O. G. 853. 48. The decision of the commissioner that an application must be divided is final and conclusive, and the applicant is bound to make the division as required. *Id. 49. The question of division being a matter of form and procedure, the power over it is vested in the commissioner as the head of the office, and his determination thereof is final and is not reviewable by any authority. *Id. 50. Where the claims of an application for patent have not been acted upon as to their merits, but the applicant has been required to present them in two applications instead of one. Held, that the claims have not been re- jected within the meaning of the law and the rules and that the applicant is not entitled to appeal to the examiners-in-chief. o United States ex rel. Steinmetz v. Allen, Commis- sioner of Patents, C. D. 1903, 102 O. G. 231. 51. The statute authorizing an appeal when claims have been twice rejected means that the claims must have been considered on their merits and found to be not patentable, a Id. 52. Where the patentability of the claims is not in question, but merely the manner of their presentation to the patent office. Held, that the action of the office is interlocutory and deprives the applicant of no substantial right which would entitle him to appeal, a Id. 53. To constitute a rejection of the claims in the meaning of the statute, the action must amount in legal effect to an adverse decision in respect to the merits of the claim and be of a character to defeat the right to a patent therefor unless reversed on appeal. *United States, ex rel. Steinmetz v. Allen, Commis- sioner of Patents, C. D. 1903, 104 O. G. 853. 54. A requirement by the examiner for the division of an application is not an action from which an appeal may be taken to the c.xaminers-in-chief. *Id. 55. A requirement for division of an ap- plication is to be regarded as a rejection and is appealable to the examiners-in-chief in the first instance. Ex parte Frasch, C. D. 1904, 109 O. G. 1338. 56. Held, that a requirement by the primary examiner for division is appealable to the ex- aminers-in-chief although a distinction can be DIVISION OF APPLICATION, IV. 113 made between his ruling upon that question and one on the merits, if we regard the merits to mean invention, novelty, or the like. **United States ex rel. Steinmctz v. Allen, Commissioner of Patents, C. D. 1904, 100 O. G. 549. 57. The question whether a design applica- tion covers two or more inventions is a ques- tion of division, which is to be determined on appeal in the first instance by the examiners- in-chief. (United States ex rel. Steinmetz v. Allen, ante, 703, 109 O. G. 549.) Ex parte Schraubstadter, C. D. 1904, 110 O. G. 2015. 58. Where the unity of the inventions claimed by the petitioner is not denied, he has the right to join them in one application, and where the primary examiner in such case denies that right. Held, that the examiner's action is a rejection of the application and entitles petitioner to an appeal to the exam- iners-in-chief under section 4909, Revised Statutes. **United States ex rel. Steinmetz v. Allen, Commissioner of Patents, C. D. 1904, 109 O. G. 549. 59. Where the ruling is such that the ap- plicant must yield and give up the right claimed, or if he does not yield he will not be heard at all and may subsequently be regard- ed as having abandoned his application, Held, that such ruling must be considered as final and appealable. ♦*Id. 60. The decision Steinmetz v. Allen, has an- nounced no new principle controlling the de- termination of the question whether inven- tions are independent and should be divided, but has merely announced that the question is appealable to the examiners-in-chief in the first instance. Id. 61. Petition from the examiner's require- ment for division of an application dismissed, since it is appealable in the first instance to the examiners-in-chief. Ex parte Emerson, C. D. 1904, 109 O. G. 1609. 62. A party is not entitled to retain separate claims to two specific forms of the invention in one case ; but the question whether the claims cover different species is reviewable in the first instance by the examiners-in-chief upon appeal. Ex parte Creamer and Knowl- ton, C. D. 1904, 111 O. G. 1040. 63. A requirement for division will not be reviewed on petition, but only on appeal to the examiners-in-chief. Ex parte Richardson, C. D. 1904, 112 O. G. 1751. 64. An examiner's requirement for division will not be reviewed except upon appeal to the examiners-in-chief. Ex parte Tuttlc, C. D. 1904, 113 O. G. 1967. 65. Where the examiner requires division and rules that the case should be limited to one particular invention because of the ap- plicant's election. Held, that an appeal may be taken to the examiners-in-chief to determine whether the requirement for division was right. Ex parte Lawler, C. D. 1904, 113 O. G. 1967. 66. Where the examiner requires division and states therefor with clearness, his action will not be reviewed on petition upon the alle- gation that the reasons given by him are in- sufficient. Ex parte Wallace, C. D. 1905, 118 O. G. 1686. 67. Prosecution of an application after a re- quirement for division should take the form either of an appeal to the examiners-in-chief or compliance with the requirement. Ex parte Wallace, C. D. 1906, 125 O. G. 992. 68. Where the examiner based his require- ment for division upon proper grounds, the question of whether the examiner is right in his requirement is a matter for consideration on appeal by the examiners-in-chief before action is made upon the patentability of the claims. Ex parte Grain, C. D. 1907, 130 O. G. 2372. 69. The fact that as an aid to applicant in electing how he will divide the examiner cited patents showing the prior art and volunteered the opinion that the claims are for aggrega- tions does not change the practice and does not warrant the assumption that the examin- er's action amounts to a refusal to examine the case on the ground that the claims cover aggregations. Id. 70. A requirement by the primary examiner for division is appealable to the examiners- in-chief and will not be reviewed on petition. Ex parte Lantzke, C. D. 1910, 156, O. G. 257. IV. CiT.\TioN OF References. 71. In requiring division the citation of such references and other information as will en- able the applicant to divide intelligently is not intended to involve an extended search into the art, but merely such cursory examination as will enable the examiner to cite such ref- erences as he is aware of at that time. Ex parte Albert, C. D. 1901, 96 O. G. 426. 72. Where in requiring division the exam- iner without citing any references has given his reason for regarding the invention classi- 114 DIVISION OF APPLICATION, V, VI. fiable in his division as lAipatentable and lias not refused to cite references, Held, that it is to be presumed that he knows of no refer- ences. A petition that he be required to cite them should be denied. Id. 73. It is the practice for the examiners in requiring division to cite such references and give such information as to the state of the art as they possess without making any ex- tended examination, so as to aid the applicant in making his election; but it is not the prac- tice to make a regular action upon the merits. Ex parte Reid, C. D. 1901, 96 O. G. 2060. 74. A composition to be used for destroy- ing dental nerves is an independent invention from the process of using it. Ex parte Tschirner, C. D. 1001, 97 O. G. 187. 75. In requiring division the examiner will furnish such references and other information as will enable the applicant to divide intelli- gently. Order published in 83 O. G. 301. Ex parte MacKaye, C. D. 1903, 103 O. G. 888. 76. A cursory examination is not an action on the merits. A cursory examination con- sists in the citation of any re/erences of which the examiner may have knowledge at the time the requirement of division is made or which he can readily find. If the examiner is not aware of any pertinent references, a state- ment of that fact is sufficient. Id. 77. Where a requirement of division is made, the most pertinent references readily available should be cited in order that the applicant may be able to intelligibly divide his application. Ex parte Moorhead, C. D. 1908, 133 O. G. 1586. 78. Where division is required, the nearest references to each of the inventions claimed which can be readily found by the examiner should be cited. Ex parte Bratt, C. D. 1910, 152 O. G. 958. V. Cancrllation of Part of Application. 79. Where an application covering improve- ments in the magazine of a gun is filed as a division of an application upon the cartridge- clip and it appears that the magazine and clip each have features designed to co-operate when the clip is being placed in position, Held, that the applicant should not be required to cancel from the second case all description and illustration of the clip. Ex parte Scott, C. D. 1901, 95 O. G. 2683. 80. Where division is required between a machine and the article made by it and the claims are limited to the article. Held, draw- ings and description of the machine which are unnecessary to a complete disclosure of the article render the disclosure prolix and should be canceled. Ex parte King, C. D. 1902, 99 O. G. 1169. 81. Whether certain figures should remain in the drawing depends upon the question whether the state of the art is such as to ren- der it necessary to limit the claims to the form of the device shown in the other figures. Ex parte Engel, C. D. 1906, 121 O. G. 1011. VI. Office Practice. 82. Where an application is held to cover two distinct inventions, but has claims on al- leged combinations of those inventions which' are held to be mere aggregations, Held, that division should not be insisted upon until the question of aggregation is determined. Ex parte Feucht, C. D. 1899, 88 O. G. 2066. 83. Where the independence of the inven- tions is clear, it is the usual practice not to act on the merits of the case when the re- quirement of division is made in the first ac- tion. The most that is usually done is to cite patents after a cursory examination in order to show that the requirement of division has been correctly made. Ex parte Goldman, C. D. 1902, 100 O. G. 234. 84. If the examiner desires to make a com- plete action on the merits of the case in the same letter in which division has been re- quired, there is no objection to his doing so; but it should be made clear in said action that the whole case has been considered on its merits and that not only those claims which are specifically rejected have been considered, but all of the others as well. Id. 85. Where in requiring division the exam- iner rejects some of the claims upon refer- ences, but does not make it plain that he has given a full action upon the merits. Held, that a final rejection given in the next letter is premature and that the applicant is thereafter entitled to amend. Id. 86. Held, that when the independence of the inventions is clear the requirement for divi- sion will be made before any action upon the merits, and when the independence of the in- ventions is not clear the requirement may be made at any time before the final action. Ex parte Alminana, C. D. 1902, 100 O. G. 1331. 87. In requiring division every effort should be made by the office to have the requirement DIVISION OF APPLICATION, VII-VIII, (b). lis so complete as to avoid, if possible, raising the question at a later date. In case the examiner having charge of the apph'cation entertains any doubt as to what line of division should be dravvfn among claims which, if retained, would go to another division he should refer the ap- plication to the examiner of that division for information on that point, who should ren- der the necessary assistance forthwith. Ex parte Brown, C. D. 1911, 171 O. G. 213. VII. Broad and Narrow Claims. 88. Where certain claims are drawn to an umbilical-truss structure and other claims are not so limited, but nevertheless cover the unitary structure of the invention. Held, that the device covered by all the claims is a sin- gle invention and division between the broad and narrow claims should not be required. Ex parte Alminana, C. D. 1902, 100 O. G. 1331. 89. Where one set of claims is broad enough to include a map showing railroad routes and a time-table showing the same routes and an- other set of claims is specific to the time-table. Held, that all the claims may be presented in one application and division should not be required. Ex parte MacKayc, C. D. 1903, 103 O. G. 888. VIII Combinations and Subcombinations. (a) In General. 00. The words "coin-releasable mechanism" are not sufficient to carry a claim the other element of which relate to a game apparatus into a group of claims each directed to such apparatus. Such words are merely a state- ment of the fact that a coin-releaser may be used with the game apparatus. Ex parte Matthews, C. D. 1898, 82 O. G. 1091. 91- Held, that if a case contain a claim for a combination of a coin-controlled device, broadly or specifically stated, with any ma- chine to which it is applied, a claim for the same combination, differing only in setting forth a specific construction of the machine to which the coin-controlled apparatus is applied, should not be allowed in that application or in any other unless the specific form of such machine is not merely an improvement in the machine, but actually enters into the new com- bination affecting the action of the coin-con- trolled apparatus. Ex parte Casler, C. D. 1900, 90 O. G. 446. 92. Held, further, that when an application contains claims for a coin-controlled appa- ratus, in combination with a machine to which said apparatus is applied, and also claims broadly for means for setting that apparatus in operation, in combination with the appa- ratus, and the only means shown for setting the apparatus in operation is the coin-con- trolled means, all the claims should remain in the same application and the case be classi- fied under coin-controlled apparatus. Id. 93. It is not broadly true that in all cases where a party makes and is entitled to a com- bination claim he is also entitled in the same case to claim as many subcombinations or spe- cific elements in that combination as he de- sires. Ex parte Johnson, C. D. 1900, 93 O. G. 123.-. 94. Where the claims aggregate independ- ent inventions, the proper treatment is a re- jection for that reason and not a requirement for division. Ex parte Mansfield and Hayes, C. D. 1902, 98 O. G. 2303. 95. Where a case includes separate claims to independent inventions and also claims to combinations of the two, Held, that it is not necessary to settle the question as to the legitimacy of the combinations before the question of division can be intelligently de- termined. Id. 96. A combination claimed may constitute an independent invention from the specific ele- ments separately claimed which enter into that combination. Id. 97. The recent practice of rejecting aggre- gation claims preparatory to requiring division between other claims in the case will not be followed hereafter ; but the question of divi- sion will be first settled. (Ex parte Feucht, C. D. 1899, 178, 88 O. G. 2066, and similar de- cisions overruled.) Id. 98. The rejection of aggregation claims pre- paratory to requiring division between other claims without an examination of the prior art amounts to piecemeal action upon the merits of the case, and that is contrary to the well-settled policy of the office. Id. (b") Division Necessary. 99. Where no particular adaptability is found to exist between a game apparatus and a coin-controlled apparatus, claims for both should not be permitted in a single application. Ex parte Mathews, C. D. 1898, 82 O. G. 1691. 116 DIVISION OF APPLICATION, VIII. (b). 100. When an applicant had no claim cov- ering the fundamental organization of the bicycle, but each claim was drawn to an im- provement on some specific part of it — viz., first, the crank-shaft covered by claim 1; sec- ond, the handlc-bar-stcm clamp covered by claim 2; third, the whccl-hub formation cov- ered by claim 3 ; fourth, the axle-whccl and cone formation covered by claim 4; fifth, the seatpost clamp covered by claim .5 ; sixth, the crown-fork formation covered by claims 6 and 7, and, seventh, the handle bar grip covered by claims 8 and 9, Held, that these separate improvements are distinct and independent in- ventions, which should be presented in sep- arate applications. (Ex parte Willcox and Borton, C. D. 188S, 144, 45 O. G. 4,5.'>; ex parte Stearnes, C. D., 1890 49, 50 O. G. 1768, ex parte Cook, C. D. 1890, 81, 51 O. G. 1620; ex parte Speckbauch, C. D. 1891, 36, 54 O. G. 126,-,; ex parte Burgess, C. D. 1897, 64, 80 O. G. 1759; ex parte Rose, 62 MS. Dec. 366, and Session v. Romadka, C. D. 1884, 340, 28 O. G. 721, cited.) Ex parte Healey, C. D. 1898, 84 O. G. 1281. 101. Held, that division was properly re- quired between claims to a fortune-telling ap- paratus and a claim which includes as part of its combination coin-actuated mechanism. Ex parte Richter, C. D. 1898, 85 O. G. 1908. 102. The exigencies of office classification have rendered it expedient to draw a line of distinction between coin-actuated apparatus of all kinds when the construction of such apparatus is independent of or indifferent to the coin-actuating agency and those construc- tions in which the coin-actuating agency or mechanism is made an integral part of the device. Id. 103. Where the specific elements or sub- combinations in a general combination are useful in other relations and are mere improve- ments on independent devices which have ac- quired a distinct status in art and classifica- tion they cannot properly be retained in the same case as the combination claim. Ex parte Johnston, C. D. 1900, 92 O. G. 1235. 104. Division was properly required between the claims which cover a particular structure of "percolator-cartridge" for use in a coffee- filter for making drip-coffee and claims cov- ering combinations between the cartridge and the particular filter, for the reason that each of the inventions is independent of the other in that they possess the capacity for separate use. Ex parte Brown, C. D. 1902, 99 O. G. 2320. 105. Held, that division was properly re- quired between a combination including a buoy as one of the elements and a claim to a specific form of buoy where that buoy is ca- pable of use in other relations. Ex parte Moriarty, C. D. 1002, 99 O. G. 2549. 106. Division was properly required between claims for a lawn-mower mechanism one of the elements of which is a clutch and the claims for the specific clutch construction. A clutch is a distinct and independent invention from the mechanism in which it is used as an element. Ex parte Adams, C. D. 1902, 100 O. G. 453. 107. Held, that division was properly re- quired between claims to a spring-motor and claims to that motor in combination with a fan. Ex parte Hoyt, C. D. 1902, 100 O. G. 2177. 108. Held, that division should be required between claims to the general gas-engine structure and specific claims covering, re- spectively, a self-lubricating journal-box, a lubricator for a crank-pin, a crank-pin, a speed-regulating device, a valve capable of use in any engine structure. Ex parte Tyler, C. D. 1902, 100 O. G. 2177. 109. Held, that division was properly re- quired between claims to specific mechanism for producing coffee and claims to a combina- tion of any means for producing coffee with specific mechanism for measuring the coffee produced and preserving its aroma. Ex parte Schofield, C. D. 1902, 101 O. G. 1S.30. 110. Division was properly required between claims to the general construction of copy- holders and claims including the specific con- struction of a clamp to be used upon copy- holders since clamps are recognized as consti- tuting independent subject-matter of inven- tion and sale. Ex parte Williamson, C. D. 1902, 101 O. G. 2571. 111. A specific form of clamp is a different invention from the general copy-holder con- struction and remains a different invention whether mounted for use upon a copy-holder or not. A claim including it in combination with a copy-holder is no less a claim for the clamp. Id. 112. Division required between claims cov- ering a motor-vehicle and claims covering the steam-power apparatus for use in a motor- vehicle. Ex parte Tyson, C. D. 1902, 101 O. G. 3105. DIVISION OF APPLICATION, VIII, (c). 117 113. Held, that division was properly re- quired between claims to the general construc- tion of a pump and claims to a gear-wheel having a particular construction of bearing and lubricating device. Ex parte Hall and Fraser, C. D, 1903, lOf) O. G. 74.3. 114. Division may be required between claims to the general combination and claims to a subcombination where it is apparent that the subcombination is a separate and inde- pendent invention from the general combina- tion. Id. 115. Held, that division was properly re- quired between claims which cover a combina- tion of parts in a refrigerator and claims to a door-frame which is shown in a refrigerator, but which is adapted for use in other rela- tions. Ex parte Stevenson, C. D. 1903, lO.-j O. G. 744. 116. Held, that the general combination in a voting-machine, key-locking mechanism which may be used in such machine, and mechanism for independent voting constitute three independent inventions and should be claimed in separate applications. Ex parte Benke, C. D. 1904, 108 O. G. 1588. 117. Key-locking mechanism and independ- ent-voting mechanism have been made sub- jects of invention independent of the general improvements in voting-machines and are use- ful in other relations. They therefore con- stitute independent inventions. Id. (c) Division Not Necessary. 118. An applicant cannot in one case have claims limited to two species of his invention, but he may have combination and subcom- bination claims which are embodied in all of those species. Ex parte Moore, C. D. 1898, 8.5 O. G. 152. 119. Division should not be required be- tween a claim to a combination of elements in a grinding-machine and a claim for an at- tachment to be used in that machine for grind- ing curved surfaces when it does not appear that such attachments have acquired a dis- tinct status in art and manufacture, and are separately classified in this ofiice. Ex parte Bancroft and Thome, C. D. 1900, 90 O. G. 1539. 120. Where an attachment when in place forms with the other elements a complete or- ganized machine, all of the parts of which co- operate to grind curved surfaces. Held, that the combination of parts forming that at- tachment constitutes a subcombination in that organized machine and that a claim to it may properly be retained in the same case with claims to other combinations of elements. Id. 121. Where in an organized fruit-gathering machine the raking and elevating devices are so constructed that in addition to the func- tions of gathering the fruit from the ground and elevating the same to the separating and assorting mechanism proper they also cause a preliminary separation of the fruit from the stones and clods gathered therewith. Held, that there is such interdependence between the raking and elevating mechanism and the sep- arating and assorting mechanism as not to warrant division. Ex parte Prosser, C. D. 1901, 97 O. G. 958. 122. Division should not be required be- tween claims covering operating mechanism of a locomotive hand-car and claims for sub- combinations of such mechanism where it does not appear that these subcombinations are use- ful in other relations or that they are such as would be separate articles of manufacture. Ex parte Henderson, C. D. 1901, 97 O. G. 1599. 123. Where an applicant claims the com- bination of certain signals, switching devices, and safety-circuits with a current-feeder and sectional rails to prevent collisions upon the main line and also combinations to be used in connection with it to prevent collisions upon a siding and drawbridge casualties. Held, that the combinations mutually contribute to produce a single result and that division should not be required. Ex parte Kintner, C. D. 1902, 98 O. G. 581. 124. Where all of the claims in a case cover combinations of a burner and a chamber forming a heater adapted to be submerged and differ from each other merely in scope, Held, that division cannot properly be required. Ex parte Mansfield and Hayes, C. D. 1902, 98 O. G. 2363. 125. A party cannot be deprived of com- bination claims by the requirement for divi- sion between the elements entering into it notwithstanding the fact that the examiner regards those elements as constituting inde- pendent inventions. Id, 126. Held, that division should not be re- quired between claims for the combination of a specific form of pump for pumping water and air with a closed receptacle and claims for the same combination with the addition thereto of a specific form of motor-governor 118 DIVISION OF APPLICATION, IX, (a), (b). wliere the combinations have not acquired a distinct status in the art. Ex parte Gushing, C. D. 1902, 100 O. G. 682. 127. Division should not be required be- tween a claim for a stand for a billiard-table and a claim covering the stand in combina- tion with the table-adjusting device. Ex parte Burrowes, C. D. 1902, 100 O. G. 452. 128. Held, that division should not be in- sisted upon between claims to the engine bed or frame and to the valve-gear and claims to the general engine structure where the com- binations are specially adapted for use in the general engine structure. Ex parte Tyler, C. D. 1902, 100 O. G. 680. 129. Held, that claims for a valve mechan- ism which covers a structure which is pecu- liarly adapted for use in the general gas-en- gine structure disclosed and claimed should not be divided from the claims covering the general gas-engine structure. Ex parte Tyler, C. D. 1902, 100 O. G. 217T. 130. Where all the claims include a motor as an element and no one of them includes any element beyond the frame which is to be oscillated by the motor and in each of the claims is included as an element the means attached to the frame for shifting the valve to control the motor. Held, that all the claims are drawn to cover a motor construction and division should not be required. Ex parte Cramer and Haak, C. D. 1902, 101 O. G. 220. 131. Where some of the claims cover the specific form of mechanism for operating the paddles of a churn and others include the same thing and as an additional element the paddle which is operated. Held, that division should not be required. Ex parte Lemire, C. D. 1902, 101 O. G. 1007. 132. Where certain claims are broad to all forms and other claims are specific to one form of the invention, and another set of claims covers a construction which is shown only in connection with one specific form, but can be used as well with both forms, Held, that the several claims bear the relation to each other of combinations and subcombina- tions and are not specific to different forms of the same invention. Division should not be required. Ex parte Shevill et al., C. D. 1902, 101 O. G. 2824. 133. Division should not be required be- tween claims for a harness construction and claims for a particular form of buckle which is not adapted for independent use as a buckle, but is peculiarly designed for use in a harness construction. Ex parte Wehn'er, C. D. 1902, 101 O. G. 3106. 134. A claim covering a particular pivot construction between a handle and a foot- piece of a mop, Held, to be for a subcom- bination of the combination covered by other claims for the general construction of mop- liandles and wringers, and division between the two sets of claims should not be required. Ex parte Davies, C. D. 1903, 105 O. G. 1783. 135. Held, that division should not be re- quired between claims to an apparatus for painting and claims to the same combination including as an additional element a mixer which adapts the device for use as a cleaner. The structure is unitary and the claims are related as combination and subcombination. l';x parte Vegiard dit Labonte, C. D. 1903, 106 O. G. 700. IX. Cl-^ssitication in Patent Office. (a) In General. 136. The requirement of the examiner that the different parts of a dental chair, consist- ing of a hydraulic lifting mechanism, a head- rest, a back-rest, and a foot-rest, should be made the subject of separate applications, sus- tained as to the lifting mechanism and head- rest, but reversed as to the back-rest and foot- rest. Ex parte Wilkerson, C. D. 1899, 87 O. G. 513. 137. A mere difference in office classification might not in all cases justify the requirement for division, since that is not the sole and ab- solute test; but it is one of the tests bearing upon the question of division. Ex parte Pel- ton, C. D. 1901, 95 O. G. 633. 138. As a rule the classification of the of- fice follows the lines established by manu- factures and inventors, and therefore it is often evidence of the fact that the devices have acquired a distinct status in the arts. Ex parte Uhlig, C. D. 1903, 106 O. G. 541. (b) Division Necessary. 139. The action of the examiner in requir- ing division between a set of claims cover- ing subject-matter classified and examinable in Division I under "Fences, gate-openers, cab- doors" and another set of claims relating to a distinct and independent invention which is examinable in Division XX under "Builders' Hardware, hinges, coach" affirmed. Ex parte Lawrence, C. D. 1898, 84 O. G. 1141. DIVISION OF APPLICATION, IX, (c), X, (a). 119 140. The head-rest is a mere improvement and is not especially adapted for the particu- lar chair shown, and other head-rests may be substituted for this one, and as it is separate- ly classified in the office classification from other parts of a dental chair and has been made the subject of separate invention it should be put in an application separate from the other parts of the chair. Ex parte Wil- kerson, C. D. 1899, 8T O. G. 513. 141. Although it has been the practice of the office to allow all parts of a dental chair to be claimed in one application, should appli- cant so elect, the time has come, owing to the increased number of patents in the office and the extension of the field of search, when this practice should be discontinued. Id. 142. When an application shows, describes, and claims a device which in its entirety pre- sents subjects-matter which are classified in different divisions of the office, Held, that di- vision should be required and separate appli- cations presented, each of which should in- clude only claims to devices which are classi- fied in a single division. E.x parte Rouse, C. D. 1899, 88 O. G. 2242. 143. Focusing devices being independent subject of invention from the other parts of a camera, and separately classified. Held, that it is necessary for the proper conduct of the business of the office that they be claimed in separate applications. Ex parte Brownell, C. D. 1901, 94 O. G. 988. 144. Held, that division was properly re- quired between claims to a photographic cam- era, a focusing device, and a finder, since they have been made independent subjects of in- vention and are separately classified in this office. Id. 145. Held, that division was properly re- quired between claims to a mechanism for measuring a boot and shoe last and claims to a slide-rule, since the two devices are inde- pendent in function and operation and are classified in this office in different classes and in different divisions. Ex parte Dwycr, C. D. 1901, 9.') O. G. 1247. 146. The mere fact that the slide-rule in this case is adapted by reason of the informa- tion conveyed thereby for use in the same general art as the shoemaker's measure does not make the two constitute the same or de- pendent inventions. Id. 147. Held, that division was properly re- quired between claims to a mixing and knead- ing machine and claims covering a cleaning- machine, since they constitute independent in- ventions and are examinable in different divi- sions of the office. Ex parte Stacey, C. D. 1904, 108 O. G. 1050. 148. The fact that patents covering sev- eral inventions would be placed in one class is no reason for overruling a requirement for division where the inventions are independent. Ex parte Benke, C. D. 1904, 108 O. G. 1588. (c) Division Not Necessary. 149. Although foot-rests and adjustable backs of a dental chair are separately classi- fied in the office, yet from the showing made by applicant the claims for these two in- ventions may be permitted to remain in the application, as it does not appear that they form the subject of separate invention or that other foot-rests or back-rests may be sub- stituted for those made for the particular chair shown. Ex parte Wilkerson, C. D. 1899, 87 O. G. 513. X. Different Species. (a) In General. 150. The case of Miller v. Eagle Manufac- turing Co. (C. D. 1894, 147, G6 O. G. 845) does not hold that a patent cannot issue to A with a generic claim and to B with a specific claim, both based on the disclosure of the same spe- cies. Williams v. Perl, C. D. 1899, 87 O. G. 1607. 151. Where a party wishes to claim the gen- eral combination of parts and the specific form of some of the elements, he should in- clude the preferred form of the elements in the figure of the drawings illustrating the combination which he wishes to claim, so that all claims will read upon the device shown in a single figure. Ex parte Welch, C. D. 1900, 93 O. G. 2104. 152. When an application contains a gen- eric claim and claims for two distinct species, a requirement that the claims be limited to a single species is equivalent to a requirement for division under Rule 41. This limitation should be made prior to any action on the merits. Ex parte Worden, C. D. 1902, 99 O. G. 1622. 153. A party may include in one case generic claims and claims to one species, but may not include claims limited to different species. Ex parte Dallas, C. D. 1903, 106 O. G. 996. 120 DIVISION OF APPLICATION, X, (b), (c). 154. Where the examiner rejected certain claims on the ground that they cover a differ- ent modilication from other claims, Held, that his action was wrong and should have been a requirement for division. Ex parte Calla- more and Kerst, C. D. 1903, lO.", O. G. 746. 155. Where the claims of an application spe- cifically cover different modifications of the invention. Held, that the examiner should re- quire division and allow the applicant to elect which modification he will prosecute. Id. 156. On a requirement for division on the ground that the claims cover different species the particular claims alleged to be restricted to certain species should be specified, and if applicant is unable to understand the require- ment the examiner should specify the par- ticular elements in the claims which read on one species and not on another. Ex parte Ljungstrom, C. D. 1903, 119 O. G. 2235. 157. Where a requirement for division be- tween process, article, and apparatus claims, made by the primary examiner and affirmed by the examiners-in-chief and commissioner, has been complied with the examiner is not precluded from requiring division between the claims presented in one of the divisional ap- plications relating to the article upon the ground that they cover different "species. The question of division as between different spe- cies of the article is not res adjudicata in the divisional application, as it was not one of the questions passed upon by the examiners-in- chief. Ex parte McHale, C. D. 1908, 135 O. G. 1361. 158. Division between claims to different species of a generic invention, Held, properly required (citing ex parte Eagle, 1870, C. D. 137.) Ex parte Weston, C. D. 1911, 173 O. G. 285. 159. The office cannot undertake to examine into the patentability of more than one inven- tion in a single application, and where division is required on the ground that the case pre- sents a plurality of inventions the exammer rightly deferred an examination on the pat- entability of the claims until the question of division was settled (citing ex parte Snyder, 110 O. G. 223G; ex parte Grain, 126 O. G. 758.) Id. (b) Division Necessary. 160. Where a claim includes features which could not be used with the device set forth specifically in other claims, Held, that the claims are inconsistent and cover different modifications of the invention. Ex parte Welch, C. D. 1900, 93 O. G. 2104. 161. Two or more specific forms of the same invention cannot be specifically claimed in the same application. Ex parte Plumley, C. D. 1902, 101 O. G. 447. 162. Where two forms of joint for fasten- ing together the edges of metal plates are dis- closed and specifically claimed in one appli- cation, Held, that division was properly re- quired, notwithstanding the fact that both joints may be used upon different parts of the same article. Ex parte Burmeister, C. D. 1902, 101 O. G. 662. 163. Joints for metal plates have acquired a distinct status in art and manufacture and one form may be used as a substitute for another. Two forms constitute two species of the invention and cannot be claimed in one case. Id. 164. Held, that two different constructions for fastening calks to horseshoes constitute independent inventions although both might be used on one shoe. Ex parte Rodenbaugh and Laurentz, C. D. 1902, 101 O. G. 1830. 165. Where one set of claims calls for an element which is not applicable to or capable of use in the structure covered by another set of claims, Held, that this shows the inven- tions covered by the sets of claims respectively are for different species, and the requirement of division is sustained. Ex parte Brown, C. D. 1904, 108 O. G. 1052. 166. Held, that the claims cover two species of the invention, and that division was prop- erly required. Ex parte Butcher, C. D. 1904, 108 O. G. 1587. (c) Division Not Necessary. 167. Where a set of claims can be based upon one specific product, there is no reason why they should not be permitted to remain in the same application. Claims so drawn are drawn in accordance with the doctrine of genus and species. Ex parte Gassman, C. D. 1900, 90 O. G. 959. 168. Where an examiner stated that he was willing to allow two claims of an application for a product for dyeing fabrics, but insisted that the other claims for a more specific pro- duct be canceled on the ground that to per- mit them to remain in the application would be contrary to ex parte Eagle (C. D. 1870, 137), the examiner's requirement as to the limitation of the claims being based upon the DIVISION OF APPLICATION, XI, XII, (a). 121 assumption that a "dialkyl rhodamine" is not a species of "rliodaminc," but (hat the two substances are different species of the genus "a phtaleine," Held, that were the examiner's assumption correct the requirement might have been well founded ; but as dialkyl rho- damine is held to be a species of rhodamine his requirement was wrong. Id. 169. Where the claims will not all read upon a single figure of the drawings, but are not inconsistent and will read upon a single device which might be shown in a single figure, Held. that they do not cover different species or modifications. Ex parte Welch, C. D. 1900, 93 O. G. 2104. 170. Where all the elements included in a claim are common to the forms of the in- vention disclosed in all the figures and though the claim does include a specific form of nut which the applicant has chosen to illustrate in one of the figures and to refer to said fig- ure for a description of the same and it is obvious that this specific nut is interchangeable with the common form of nut illustrated in another figure, Held, that the claim is generic. A distinction should be made between the in- vention disclosed and a specific illustration of said invention. E.x parte Metzger, C. D. 1902, 101 O. G. 11512. 179. Where one claim covers a sheet made of an impervious substance and another claim says that there are holes punched in the sheet. Held, that the claims are not inconsistent and do not cover two species of the invention. Ex parte Nash, C. D. 190;i, 104 O. G. 1896. 172. Where in a velocity-regulator for fluids one form shows the governing device connected directly to a valve in the conduit and in another the governing device is con- nected to the throttle-valve in the steam-pipe which regulates the admission of the steam to an engine for operating a pump, which pump forces the fluid through the conduit. Held, that these two devices are specific forms of the same generic invention. Ex parte Herreshoflf, C. D. 1903, lOG O. G. 1779. 173. Where claims are presented which cover a generic invention and other claims are specific to but one of the forms shown. Held, that division should not be required. Id. 174. An applicant is permitted to show sev- eral species of an invention when the state of the art permits a claim to be presented and allowed which is broad enough to cover all the species shown and described. Id. XI. Processes. 175. Where in one claim a step in a process covered by another claim is omitted without changing the order in which the other steps in the process are performed, Held, that the claims do not cover such different processes that it is necessary to put them in separate applications. Ex parte Oxnard and Baur, C. D. 1899, 88 O. G. 1."j2G. 176. An applicant may properly in one case have claims covering the principal or essen- tial steps of a process and other claims includ- ing those steps, together with other specific steps which are not absolutely necessary to the performance of the process, but which add to its efficiency or make its operation more perfect. Id. 177. Where one claim covers a process of making a die and another includes the same specific process and the additional step of casting a record from the die, Held, that divi- sion should not be required. Ex parte Clay, C. D. 19U2, 101 O. G. 2367. XII. Process and Apparatus. (a) In General. 178. That a machine or apparatus and pro- cess are separate and independent inventions seems to be well settled by the decisions of the courts and of this office. Ex parte Frasch, C. D. 1900, 91 O. G. 4.59. 179. The question whether claims for a process and claims for an apparatus should be permitted in the same application is one of office policy, and it is wise to exercise the discretion vested in the commissioner and re- quire that claims for a machine or apparatus and its process be presented in separate appli- cations. The importance of classification and of a uniform practice in the oflice is sufficient to warrant this. Id. 180. Because a proces- and an apparatus are examinable in the same division or in the same class is no reason why they should be per- mitted to remain in the same application. .\ decision based upon that ground, while it might apply at the time it was made, may not apply to a similar case a short time thereafter. Divisions, classes, and subclasses are continu- ally changing in the office, and what might be in a certain division to-day might not be to- morrow, and were division required on such lines it would be unstable and subject to fre- quent changes. Id. 122 DIVISION OF APPLICATION, XII, (b). 181. If applications for process and appa- ratus are properly prepared and the line of division is properly made, the courts will not, judging from the past, hold one or the other patent invalid for the reason that the claims are contained in separate patents. Id. 182. That the independence of apparatus and process is clear in view of the language of Rule 41, which states that claims for a pro- cess and for an apparatus must be placed in separate applications, is unquestionable, and the requirement of division is properly made under Rule 42 before any action on the merits. Id. 183. Rule 41 of the patent office in so far as it requires a division between claims for a process and claims for an apparatus, if they are related and dependent inventions, is in- valid. **Ex parte Frasch, C. D. 1904, 109 O. G. S-M. 184. The provision in Rule 41 of the Rules of Practice of the patent office which compels the separation of claims for a process and claims for its apparatus is invalid, because it precludes exercise of any judgment, how- ever related or connected they may be. **Unitcd States ex rel. Steinmetz v. Allen, Commissioner of Patents, C. D. 1904, 109 O. G. 549. 185. The statute gives the right to join in- ventions in one application in cases where the inventions are related, and it cannot be de- nied by a hard and fixed rule which prevents such joinder in all cases. **Id. 186. Process and apparatus may be related and may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus. **Id. 187. Process and apparatus claims may in some cases be so related as to make it proper to include them in one application, and there- fore a requirement for division should not be based upon the broad and general proposi- tion that process and apparatus are always in- dependent, but should be based upon the con- clusion that the particular process and par- ticular apparatus are not so related as to war- rant including them in one case. The reasons for the conclusion should be stated. Ex parte Ament, C. D. 1905, 116 O. G. 596. 188. Where it is urged that the commission- er had no valid authority to require division between process and apparatus claims, Held, that the ruling of the supreme court in Stein- metz V. Allen is the guiding authority in de- termining this question. *In re Frasch, C. D. 1906, 122 O. G. 1048. 189. The decision of the supreme court in Steinmetz v. Allen interpreted to mean that a process and an apparatus, while presumptive- ly independent inventions when considered in the light of section 4886, Revised Statutes, they nevertheless may be so connected in their design and operation as to constitute a unitary invention ; that when constituting independent inventions they may not be claimed in one and the same application ; that when so dependent as to constitute a unitary invention they may be claimed in one and the same application. *Id. 190. Held, that the statute being constitu- tional and the supreme court having laid down the rule that not in all cases can claims for process and apparatus be joined in one ap- plication, it follows that the commissioner in requiring division exercises a valid authority and if correctly exercised no error is com- mitted. *Id. (b) Division Necessary. 191. Process and apparatus are separate and independent inventions, and claims covering both should not be joined in the same appli- cation. Ex parte Boucher, C. D. 1899, 88 O. G. 545. 192. The argument that claims for the pro- cess and apparatus should be permitted to be joined in the same application in the interest of inventors to save them from the expense of filing two applications is of little force, in view of the fact that statutory charge for the examination of an application is reasonable, and it would be unjust to the government, to the public at large, and to other inventors to permit one of their number to present several inventions for examination under a single fee and receive more of the time of the examiner than he had paid for. (Ex parte Yale, C. D. 1869, 110, cited.) Id. 193. The argument that claims for process and for apparatus should be permitted to be joined in the same application because the courts have not declared patents invalid as covering more than one invention does not rest on any firm foundation, and the answer to it is that while there are numerous cases in which it has been held that a patent once granted is to be liberally construed, and that it is to be presumed that public officers do their duty, that the court will not inquire into DIVISION OF APPLICATION, XII, (c). 123 slight defects or mere informalities in the grant of letters patent where there is a meri- torious invention, yet it would be a grave error to found upon such decisions a rule of action for the commissioner, for it by no means follows because a patent has been sus- tained notwithstanding certain informalities in the issue that every succeeding patent is to ex- hibit the same informalities. (Ex parte Yale, C. D. 1809, 110, cited.) Id. 194. Process and apparatus should not be joined in the same application because they are examinable in the same division. The classification of inventions is necessarily sub- ject to frequent changes through the advance in the arts, requiring the organization of new divisions and the establishment of new classes and subclasses. It naturally follows that a decision based upon this ground while apply- ing at the time when it was rendered to the case in point might not apply to an identically similar case thereafter. Id. 195. While it may be that a perfect exam- ination as to the novelty of an apparatus re- quires the same labor on the part of the ex- aminer that would be required if process and apparatus were both claimed in the same ap- plication, yet this cannot always be so, and even though one examination will answer for both process and apparatus claims, yet that affords no good reason for permitting two inventions to be claimed in one application. An examination system to be of value must be a perfect one, and perfection will be more readily attained by the requirement that separate applications be filed for a process and an apparatus. Id. 196. The prior decisions on the question of division between process and apparatus re- viewed and Held, that the practice of the of- fice on this question would be less liable to frequent change if a rule clearly setting forth the line of action to be followed were promul- gated and change in Rule 41 indicated. Id. 197. Where upon requirement of division under Rule 41 between claims for method and claims for apparatus applicant contended that his is a case in which the invention covered by each of the method claims is the result of the same inventive act which produced the invention covered by the broader of the cor- responding apparatus claims and that there- fore he should be permitted to present in one application method and apparatus claims, Held. that conceding the facts to be as contended for, yet there are two inventions claimed and the requirement of division was proper and should be complied with. Ex parte Fish, C. D. 1900, 91 O. G. 1615. 198. Product and process are quite distinct matters, even where both are created by the same inventive act. (L. Durand v. Green, C. D. 1894, 29], 67 O. G. 814.) Apparatus and process are certainly quite as distinct matters and there is no reason for departing from the rule. Id. 199. Where the process consists in conden- sing steam upon an incrusted surface and the apparatus consists of chambers with heat- conducting partition and certain inlets and outlets for convenient carrying on of the pro- cess. Held, that there is an utter absence of necessary relation between such process and apparatus, and division was properly required between the respective claims to the same. Ex parte Frasch, C. D. 1905, 117 O. G. IICC. (c) Division Not Necessary. 200. Division should not be required be- tween claims to an apparatus and alleged process claims which cover the mere function or operation of the apparatus. Ex parte Stein- metz, C. D. 1905, 117 O. G. 901. 201. The function or operation of an ap- paratus cannot be regarded as an invention separate and independent of the apparatus. Id. 202. Division should not be required be- tween claims to an apparatus and claims to an alleged process on the ground that the supposed process is a mere function of the apparatus and not a patentable invention of any kind. Division cannot be required be- tween something and nothing. Id. 203. In passing upon the question of divi- sion the things claimed must be assumed to constitute inventions of some kind, since there is no authority for requiring division between something which is an invention and some- thing which is not an invention, but only be- tween independent inventions. Id. 204. In determining the question of divi- sion it is not of consequence whether either the process or the apparatus is patentable, since the sole question is whether the subject- matter stated in the process claims is so sep- arate and independent of the subject-matter stated in the apparatus claims as to warrant the requirement that the claims be presented in separate applications. Id. 124 DIVISION OF APPLICATION, XIII, (a). 205. It must be taken as settled by the su- preme court that it is proper in some cases to join in one application claims to an apparatus and claims in the form of a process. Wheth- er or not the circumstances of a particular case justify the joinder is a matter for the exercise of discretion. Id. 206. Held, that for the purpose of deter- mining the question of division the claims must be taken as they read, and if they con- tain limitations, whether proper or improper, . which make the alleged process claims indi- visible from the apparatus claims division cannot be required. Ex parte Frasch, C. D. 190.5, 117 O. G. 1166. 207. Held, that a mere mode of operating apparatus cannot be regarded as so unrelated to the apparatus itself that division can be required between claims to processes which amount to mere statements of the former and claims to the latter. The distinct and inde- pendent inventions upon which requirements for division must rest are lacking. Id. 208. Held, that in many cases the question of division between process and apparatus claims will be simplified by consideration of the question whether the process claims cover the mere function or operation of the appa- ratus, and if they do cover the mere func- tion or operation of the apparatus disclosed and claimed they should be rejected as not covering proper processes and division should not be required. Id. XIII. Process and Product. (a) Division Necessary. 209. A woven fabric, a process of produc- ing the fabric and winding yarn, an apparatus for winding yarn on the spool, and a yarn- spool or bank-spool are each separate and in- dependent inventions and should form the subject of separate applications. Ex parte Tymeson and Borland, C. D. 1898, 83 O. G. 210. That paragraph of Rule 41 which re- cites that claims for a process and its pro- duct may be presented in the same applica- tion gives the applicant authority to a certain extent to join claims for process and product or file separate applications therefor; but it does not take away the right of the office to supervise and control this authority should occasion for the exercise of the reserve power arise. Ex parte Erdman, C. D. 1900, 93 O. G. 2531. 211. Where it appears on examination of the application that the method of making the projectile and the projectile itself are exam- inable in different divisions and that the pro- jectile may be made by other methods than that claimed. Held, that division should be re- quired. Id. 212. Where it is evident upon mere inspec- tion that the process covered by one claim dues not necessarily produce the article cov- ered by another claim. Held, that the inde- pendence of the invention is clear and that it is not necessary for the examiner to cite references or state reasons in support of his requirement for division. Ex parte Reid, C. D. 1901, 91) O. G. 2060. 213. Claims for a method of making a por- tion of a sole should not be included in the same application with claims for said portion when it is clear that the method is not lim- ited to the mere production of the article, but covers features not necessarily related there- to. Ex parte Parent, C. D. 1902, 98 O. G. 1970. 214. Division properly required between a claim for an axe as an article of manufacture and claims for a method of finishing axes, which method is applicable to other articles and does not necessarily result in the par- ticular product. Ex parte Powell, C. D. 1902, 99 O. G. 1384. 215. Division was properly required between claims covering a golf-ball and claims cover- ing the process of making the same where it appears that the golf-balls are not neces- sarily the product of the method and that they could be made by other methods than that claimed. Ex parte Foulis, C. D. 1902, 100 O. G. 232. 216. Held, that division was properly re- quired between a claim for the process of making a box and a claim for the box where the box is not necessarily made by the pro- cess. Ex parte Schmidt, C. D. 1902, 100 O. G. 2602. 217. Gears and the processes of cutting them have acquired a distinct status in the art, are classified in different divisions of the ofiice, and have been made independent subjects of in- vention. Held, therefore, that they should be presented in separate applications. Ex parte Christensen, C. D. 1903, 10.5 O. G. 1261. 218. Where one set of claims covers an ar- ticle and another set of claims covers the pro- cess of making the article and it is clear that the article claimed is independent of any par- DIVISION OF APPLICATION, XIII, (a), XIV, (a). 123 ticular process of making it. Held, that divi- sion between the two sets of claitns should be required. Ex parte Williams, C. D. 1903, 105 O. G. 1780. 219. Where an allcKcd method does not pro- duce the complete device, but a subcombina- tion thereof, Hdd. that a claim for the meth- od should be divided from the claims for the general combination and subcombination of the same. Ex parte Davies, C. D. 1903, 105 O. G. 1783. 220. Held, that division was properly re- quired between an article of manufacture and a process of making it where it is evident that the article as claimed could be made by other processes. Ex parte \'ery, C. D. 1903, 106 O. G. 766. (b) Division Not Necessary. 221. Held, that division should not be re- quired between claims to a process of deposit- ing zinc on metallic surfaces and claims to the article produced where there is doubt as to the possibility of producing the article by any other process and the process will not produce any other article. Ex parte Cowper- Coles, C. D. 1902, 100 O. G. 681. 222. Where the process set forth in some claims necessarily produces the product set forth in others and there is a close relation- ship between them, although it is possible that the product may be made by other pro- cesses, Held, that the claims may be retained in one application if no wider range of search is required. Ex parte Dallas, C. D. 1903, 106 O. G. 996. 223. Held, that division should not be re- quired between a kalsomine composition and the process of making it where the process necessarily results in the composition and the field of search is the same for both. Ex parte Adams, C. D. 1903, 106 O. G. 541. XIV. Status in Arts ; Manufacture and Sale; Office Classification. Etc. (a) Division Necessary. 224. Since telephone switchboards are rec- ognized by inventors and manufacturers as independent inventions from the general tele- phone systems in which they are used. Held. that division was properly required between claims to a switchboard and claims to the sys- tem. Ex parte Ford, C. D. 1904, 108 O. G. 1327. 225. Division was properly required between claims relating to the art of preserving and other claims relating to the art of refrigera- tion. Ex parte Rappleye, C. D. 1898, 85 O. G. 2096. 226. Division properly required between the apparatus for bending metallic printing forms to appro.ximately the shape of the printing- cylinder and the apparatus for further bend- ing them into exact form and ascertaining the relation the engraved surface should have to the impression-surface, so that by "underlay- ing" at the proper places the lights and shades of the printed picture may be properly brought out. The first belongs to the art of metal- bending and the second to the art of printing. Ex parte Orborne, C. D. 1899, 86 O. G. 492. 227. Held, that division was properly re- quired between claims to, first, the steering and controlling devices; second, the motor and means for mounting it ; third, the frame, and, fourth, the driving-gear of a motor-ve- hicle, since the devices are independent of each other in structure and operation and may be used in other relations. E.x parte Roby, C. D. 1900, 92 O. G. 1035. 228. Held, that division was properly re- quired between claims to a truing device and claims to the grinding mechanism of a ma- chine for grinding knives where the devices are useful in other relations and have ac- quired a distinct status in art and manufac- ture. Ex parte Johnston, C. D. 1900, 92 O. G. 1235. 229. Held, That division was properly re- quired between claims to inking apparatus of a printing-press and claims to a bed-move- ment and cylinder-operating mechanism. E.x parte Scott, C. D. 1901, 95 O. G. 1247. 230. The fact that the bed and ink rollers are driven in unison by connected mechanism does not constitute them indivisible inventions, inasmuch as inking mechanisms have acquired a distinct status in the art from other parts of a printing-press and are separately classified in this office. Id. 231. Held, that division was properly re- quired between claims covering a filtering mechanism and claims covering a sterilizing apparatus, since the two are entirely independ- ent of each other in structure and operation. Each performs its function without modify- ing the functions of the other, and each has been given a distinct place in the arts and in the classification of the office. Ex parte Mc- Donald, C. D. 1901, 96 O. G. 1650. 126 DIVISION OF APPLICATION, XIV, (a). 232. Held, tliat an electrically-operated rail- way gate for a grade crossing is an independ- ent invention from a general block system the object of which is to prevent collisions and that since the devices have acquired a distinct status in art and manufacture division was properly required. Ex parte Kintner, C. D. inns, 08 O. G. .isi. 233. Semaphores have acquired a distinct place in the arts and manufacture and have been made an independent subject of inven- tion, and therefore a semaphore should not be claimed in the same application with a rail- way block system, although it is specially de- signed for use in that system. Id. 234. Claims for a tabulating device for type- writing machines should not be included in the same application with claims for a ribbon mechanism when it appears that the tabulating device is useful in other forms of type-writ- ing machines and that it is a separate subject of manufacture and sale. (Citing ex parte Johnston, C. D. 1901, 12."), 92 O. G. 1235.) Ex parte Smith, C. D. 1902, 98 O. G. 1971. 235. It is the settled practice of the office that the separate parts of a gas-engine should be claimed in separate applications. These are recognized by inventors as distinct sub- jects of invention and are found in the art as distinct subjects of manufacture. Ex parte Sturtevant and Sturtevant, C. D. 1002, 98 O. G. 1971. 236. Division properly required between parts of a type-writer carriage, since it ap- pears that the various devices have acquired a distinct status in the art and are separate subjects of manufacture and sale. Ex parte Fox and Barrett, C. D. 1903, 99 O. G. 862. 237. The mere fact that inventions would be separately classified in this office is not in itself sufficient to warrant a requirement for division; but in the present case the classifica- tion has followed the lines established by in- ventors and manufacturers and is evidence of the fact that the devices have acquired such a distinct status in the art as warrants not only such separate classification, but also sep- arate applications for invention included therein. Id. 238. Hdd, that division was properly re- quired between claims to the railroad car and claims covering the combination between the car, the window-sash, and a lock for the same, since the devices are recognized by inventors and manufacturers as separate and independ- ent articles of manufacture and sale, and from this it results that these devices possess a ca- pacity for independent use. Ex parte Brill, C. D. 1902, 99 O. G. 2319. 239. Division properly required between claims for an insulating compound and pro- cess of making it and claims for an insulated conductor and process of making the same. Ex parte Lee, C. D. 1902, 100 O. G. 22X 240. Division was properly required between claims covering a boiler construction and claims covering a furnace construction, as they are recognized by inventors and manufactur- ers as separate and independent inventions and are capable of separate use irrespective of their particular construction. Ex parte Downie and Messner, C. D. 1902, 100 O. G. 235. 241. Held, that division was properly re- quired between claims to the external con- figuration of the hull of a vessel and claims to the means for mounting the rudder, since they are recognized as independent subjects of invention and are separately classified in this office. Ex parte Bustin, C. D. 1902, 100 O. G. nil. 242. Held, that claims covering the means for propelling the ship should be claimed in a separate application from claims to the shape of the hull and to the means for mount- ing the rudder. Id. 243. Held, that division was properly re- quired between a specific improvement in the switch mechanism in the road-bed and a spe- cific improvement in the operating mechanism carried by the car. Ex parte Davison, C. D. 1002, 101 O. G. 1371. 244. Where two devices are independent in structure and operation they will not be per- mitted to be claimed in one application merely because they belong in the same office class. Office classification is not the test in requiring division, but is merely evidence upon the question whether the inventions have acquired a distinct status in the art. Id. 245. Held, that division was properly re- quired between claims to improvements in cut- ters and clamping devices for the shuttle- thread in sewing-machines, claims to the ten- sion-releasing pull-off devices, and claims to improvements in cutters for the needle-thread, as each group of claims relates to inventions separately classified in this office, which have been made independent subjects of invention and manufacture. Ex parte Lyons, C. D. 1902, 101 O. G. 2078. 246. Where one group of claims covers an apparatus for manufacturing roofing-paper DIVISIONAL APPLICATIONS. 127 and another group covers the specific structure of the cooling and drying apparatus which is used in the complete machine, Held, that since machines for cooling and drying various arti- cles of manufacture are separately invented, sold, and used from complete machine in vk-hich they may be used division between the two groups of claims should be required. Ex parte Kidde, C. D. 1903, 105 O. G. 1782. 247. Held, that division was properly re- quired between claims covering a general type- writing machine construction and claims for a particular form of carriage construction, as the two inventions are separate and independ- ent from each other and are separately manu- factured and sold. Ex parte Uhlig, C. D. 190.-!, inr. O. G. .'>4i. 248. While separate applications for distinct inventions may be warranted by the office classification, separate classification of the in- ventions does not of itself preclude the prose- cution of claims for these distinct inventions in the same application where there is doubt as to the fact that they have assumed an in- dependent place in the arts and are separately manufactured and sold. Id. 249. Division required between claims cov- ering a specific construction of propellor and claims covering a general ship construction, as propellers form distinct subject-matters of invention, manufacture, and sale from the ship construction on which they are used. Ex parte Eclair, C. D. 1903, 107 O. G. 540. (b) Division Not Necessary. 250. Held, that the runner-retainer for um- brellas, joint for unbrclla-sticks, and joint for umbrella-ribs claimed in this case are not such separate articles of manufacture as would necessitate a separate application for each. Ex parte Whitney, C. D. 1901, 97 O. G. 2305. 251. Where the stitch-forming mechanism and the combined awl and feeding mechanism of a shoe-sewing machine have not acquired a distinct status in art and manufacture and are not separately classified in this office. Held, that division should not be required notwith- standing the fact that the mechanisms are capable of separate use. Ex parte Smith, C. D. 1902, 99 O. G. 2547. XV. P.\RTicuLAR Cases. (a) Division Necessary. 252. Held, that division was properly re- quired between claims to the mechanism of a car-seat whereby it can be moved back and forth and a claim to a hand-strap attached to the back of the seat. Ex parte Pickles, C. D. 1904, 109 O. G. 275. 253. Held, that a cutter and gatherer, a bun- dle forming and discharging device, and a conveyer, each of which is used in a bean- harvesting machine, are independent inven- tions, and division was properly required be- tween the claims covering the same. Ex parte Baer, C. D. 1904, 109 O. G. 1609. (b) Division Not Necessary. 254. Where the examiner required division between a set of claims stated to be for the process of producing woven fabric and an- other set for the process of winding yarn and some of the claims of the first set included the step of winding yarn. Held, that if the claims for producing the fabric, including the step of winding yarn, are for a legitimate combination division should not be required. If they are not for such a combination, they should be rejected for ag- gregation, leaving the question of division to be settled after the final determination of the question of aggregation. The practice an- nounced in ex parte Willcox and Borton (C. D. 1888, 144, 45 O. G. 455) ; ex parte Bullard (C. D. 1888, 169, 45 O. G. 1569), and ex parte Carter (C. D. 1889, 100, 46 O. G. 1391), fol- lowed. Ex parte Tymeson and Borland, C. D. 189S, 83 O. G. .593. 255. Upon petition from the action of the examiner requiring division between a set of claims for a desk for educational purposes and another set of claims including a tank, pump, valves, etc., as forming part of the desk. Held. that as there are no claims covering these separate devices and as they are simply placed in combination with the other parts of a desk, division should not be required. Ex parte Crowell, C. D. 1898, 85 O. G. 289. DIVISIONAL APPLICATIONS. 1. In a divisional application a mere en- largement or extension of a certain feature whereby no additional function or capability is given the apparatus may be permitted. Ex parte Kcyser, C. D. 1898, 83 O. G. 915. 2. A divisional application takes the benefit of the filing date of its original. An appli- cation filed on and after January 1, 1898, as 128 DRAWINGS, I. a division of an application filed prior to said date should take the date of the original ap- plication and be governed by the statute under which said original application was filed. Ex parte Vidal, C. D. 1898, 84 O. G. 808. 3. There arc the same reasons for holding that a divisional case fakes the benefit of the original date in so far as the bar of a previous foreign patent under section 4887 of the Re- vised Statutes is concerned as there are for holding that it takes that date in so far as the bar of public use under section 488() of the Re- vised Statutes is concerned. Ex parte Scott, C. D. 1901, 95 O. G. 1347. 4. A mechanical application cannot be con- sidered a division of a design application. Ex parte Waterman. C. D. 1902, 100 O. G. 233. 5. It is fundamental that "a proper division- al application does and can contain only mat- ter carved out of the original case." (Ex parte Henry, C. D. 1893, 88, 64 O. G, 299.) The subject-matter of the divisional applica- tion need not have been claimed or reached by any statement of invention in the original case. It is sufficient if the matter has been fully disclosed in the original application. Id. 6. This disclosure, however, must be in an application in which the applicant would be permitted to present and prosecute a claim for the matter so disclosed. In other words, an applicant will be permitted to claim in a divisional application "^uch segregablc matter as might have, had he so elected, been claimed in the original application. Id. 7. Design patents and mechanical patents cover diflferent monopolies. They are granted under different sections of the statute for dif- ferent terms. Id. 8. There is no warrant for a requirement for division in such a case. Since claims for mechanical functions cannot be made in a de- sign application, it follows that such claims cannot be divided out of such an application. Id. 9. Where an application is filed subsequent- ly to January 1, 1898, and it is held to be a division of an application filed prior to that date. Held, that section 4S94 as it stood prior to January 1, 1898, applies to the later divi- sional application and that the applicant has two years within which to prosecute his divi- sional application. Ex parte Balzer, C. D. 1902, 101 O. G. 2824. 10. Where an application contains matter divided out of a prior application, but also contains other matter. Held, that it is not a technical division of the prior case and that a statement to that effect in the specification should be canceled. Ex parte Hicks, C. D. 1903, 104 O. G. 309. 11. Where claims are inserted in a divi- sional application, the legal effect is the same as if they were inserted in the original, since a divisional application is, in effect, an amend- ment of the original. Lowry v. Spoon, C. D. 1904, 110 O. G. 838. 12. The claims made by a party must be given effect as of the date when the applica- tion was filed rather than the date when the claims were presented by amendment, since to do otherwise would lead to endless confusion. Id. 13. Where a patent contains a statement that it is a division of a pending application and suit is brought on the patent, Held, that the defendant should be permitted to obtain copies of said pending application. In re Belle City Malleable Iron Company, C. D. 1906, 125 O. G. 1.3">1. 14. Where there is any departure from the disclosure of the alleged parent case, the ap- plication cannot be referred to as a division thereof. Ex parte Kruse, C. D. 1910, 157 O. G. 208. DRAWINGS. I. In General. II. Inconsistent. III. Informalities. IV. Made by Patent Oieice. V. Showing Inoperative Device. VI. Substitute. VII. Sufficiency of. VIII. Unnecessary Illustration. IX. Amendment. X. New Matter. I. In General. 1. It is within the examiner's discretion to permit a drawing of a model or structure or a copy of an original drawing to be filed; but whenever required the original model, struc- ture, or drawing should be produced for the inspection of the office, with leave to the ap- plicant to withdraw the same after it has served the purpose for which it was pro- duced. In case of withdrawal a drawing of the original should be filed. Ex parte John- son, C. D. 1899, 89 O. G. 1341. DRAWINGS, II-V. 129 II. Inconsistent. 2. Where two figures of the drawings arc inconsistent if intended to represent the same structure, Held, that they should either be made consistent by amendment or the specifi- cation should state that they represent differ- ent modifications. Ex parte Sturtevant et al., C. U. 1004, 108 O. G. :,6i. III. Informalities. 3. The statutes require that whenever the nature of the case admits of drawings one copy signed by the inventor or his attorney in fact and attested by two witnesses shall be tiled in the patent office. A tintype not signed by the inventor or his attorney and not at- tested by two witnesses cannot be considered a drawing within the statutes. Palmer and Thompson v. Bailey, C. D. 1898, 83 O. G. 1207. 4. Where a drawing is made on such a fine scale that it can be read with difficulty only in connection with the description of the specifi- cation and the reference-letters are too small to be easily discernible. Held, that a new draw- ing of that portion of the structure which is shown on a small scale should be filed. Ex parte Hodges, C. D. 1903, 105 O. G. I.i34. 5. Held, that as the rules require line draw- ings a drawing made up of fine dots instead of continuous lines is objectionable. Ex parte Lloyd, C. D. 1904, 112 O. G. 231. 6. Where the drawing shows the device up- side down, so that when held in normal posi- tion the reference-letters arc inverted. Held. that a new drawing was properly required. Ex parte Wolfersperger and Moran, C. D. 1904, 113 O. G. 1418. 7. The drawings of applications must be presented in such shape as to facilitate an ex- amination of cases and not cause confusion. Id. 8. Drawings for design cases should be pro- duced by lines and not by fine dots or strip- pling. Ex parte Kohler, C. D. 1903, 116 O. G. 340. 9. Where the invention relates to a non- rcrillablc bottle and the specification docs not state of what material the bottle is made. Held, that applicant should not be required to amend the drawings so as to show the bottle as constructed of glass, in accordance with the suggestions found in the "Chart for Drafts- men" in the Rules of Practice. Ex parte Per- son, C. D. 1903, 119 O. G. 1383. 9 10. The conclusion of the chief draftsman as to whether or not drawings forming a part of the application for patent shall be accepted will not be disturbed unless there is such palp- able abuse of discretion on his part as would warrant the exercise of the supervisory au- thority of the commissioner. Ex parte Mealus, C. D. 1908, 136 O. G. 438. 11- Mutilated drawings will not be accept- ed by the office as a part of the permanent records. This rule is founded upon the neces- sity of preserving the records of the office for an indefinite period and must be enforced. Ex parte I-Vankman, C. D. 1908, 136 O. G. 1999. 12. A sheet of drawings containing only one figure, occupying only a small portion of one side thereof, is objectionable. Ex parte Chaffee, C. D. 1908, 137 O. G. 1941. 13. The correction of the drawings which are lacking merely in artistic merit is not one of the formal matters contemplated by Rule 134 which must be settled before the case can be appealed to the examiners-in-chief. Ex parte Proctor, C. D. 1909, 138 O. G. 238. 14. Extended shading, either surface or sec- tional, in solid black should not be permitted, but sections of thin sheet metal may be so represented. Ex parte Mellin and Reid, C. D. 1910, KiO O. G. 1037. 15. Where the same part of an apparatus appears in more than one figure of the draw- ing, it should be represented by the same ref- erence character, notwithstanding that one figure may be a diagram and another a detail view. Ex parte Stimpson, C. D. 1910, 160 O. G. 1271. \\\ Made by P.\tent Office. 16. Where a drawing was made by the of- fice in accordance with instructions given by an applicant and said drawing was accepted, signed, and filed as a part of his application, whereupon the examiner objected to the draw- ing as not conforming to the original disclo- sure. Held, that a new drawing should not be furnished by the office without expense to the applicant. Ex parte Rosenheim and Mombel, C. D. 1906, 122 O. G. 1722. v. Showing Inoperative Device. 17. Where the drawings of the patent show the belt for conveying the ore at such an angle as to render the successful operation of the machine impossible. Held, that this does 130 DRAWINGS, VI, VII. not render the patent void for want of utility, since the patentee should not be limited to the use of the angle which appears in the drawings, d Johnston v. Woodbury, C. D. 1901, 97 O. G. 402. 18. When an application as originally filed described an operation of certain parts which would be impossible without a connection be- tween those parts and no connection was shown, an amendment to the drawing to show some form of connection should be permitted. (Ex parte Snyder, C. D. 1882, 22, 22 O. G. 1975.) Ex parte Wareham, C. D. 1901, 97 O. G. 1600. 19. Such a case is to be distinguished from that of ex parte Delbey, ante, 103, 96 O. G. 1240. In the latter case it was proposed to show matter for which there was no basis in the case as filed, so that claims which might be drawn to cover the same would be for new matter. Id. VI. Substitute. 20. Where the drawing in the case shows the invention clearly and properly. Held, that a substitute drawing should not be admitted. Ex parte Cooper, C. D. 1902, 99 O. G. 669. VII. Sufficiency of. 21. The drawing should show the entire thing described in the specification as consti- tuting the invention and not merely a section thereof. Ex parte Lefebvre, C. D. 1899, 86 O. G. 995. 22. Where the drawing is unsatisfactory be- cause it shows only detached portions of de- tails and does not show the parts together so that their co-operation can be understood. Held, that it is not practicable for the ex- aminer to point out in detail just what changes would make it clearly illustrate the invention, so long as he has not before him some com- plete representation of the invention, such as a model. General objections are sufficient to enable a skilled draftsman to cure the defects. Ex parte Tuttle, C. D. 1900, 90 O. G. 1365. 23. Modifications described in the specifica- tion should be shown in the drawings or the description canceled. Ex parte Peck, C. D. 1901, 96 O. G. 2409. 24. A modification of the invention should not be shown in dotted lines on the same fig- ure which shows the preferred form in full lines, but should be shown, if at all, in sepa- rate figures and in full lines. Ex parte Bad- ger, C. D. 1901, 97 O. G. 1.-.96. 25. When possible, a drawing should be so complete that the purpose and operation of the invention may be readily understood by one skilled in the art by means of a mere in- spection of the drawing. Ex parte Hartley, C. D. 1901, 97 O. G. 2746. 26. Where a conventional device is referred to in the specification and it docs not form part of the invention, it should either be illus- trated in a conventional way, in order that any one skilled in the art can understand from a mere inspection of the drawings what the device is, or if it is illustrated in an uncon- ventional way an amendment should be made to the specification clearly describing the con- struction and operation of said device. Ex parte Morse, C. D. 1901, 97 O. G. 2982. 27. Where an clement is described and claimed, Held, that said element should also be clearly shown in the drawing and that an il- lustration of said element by means of a sec- tional view where it does not completely il- lustrate the structure is not sufficient. Ex parte Alminana, C. D. 1902, 100 O. G. 1331. 28. The requirement for additional illustra- tion is proper when the drawing does not dis- close with certainty what the invention is. Ex parte Seitzinger, C. D. 1902, 100 O. G. 2773. 29. It is not necessary in patent office draw- ings that the exact proportions of the parts should be indicated. All that is required is that such an operative device be shown that one skilled in the art can make and use the same. Ex parte Creveling, C. D. 1902, 98 O. G. 1708. 30. It is not necessary to retain in the draw- ing of an application for a patent on an article a figure to illustrate a process or step in its manufacture when the completed article de- lined in the claim is clearly shown in another figure and the disclosure is amply sufficient to enable any one skilled in the art to make and construct the same. Ex parte Henry, C. D. 1902, 99 O. G. 1170. 31. Where the specification describes the grain of wood as running lengthwise and this feature is included in the claims, the drawing should show the same, since the rules require that the drawing must show every feature of the invention covered by the claims. (Rule 50.) Ex parte Davin, C. D. 1902, 100 O. G. 452. DRAWINGS, VII. 131 32. Where the grain of wood is an essen- tial feature of the invention, the requirement that the drawing should show the same is not inconsistent with the requirement of the fourth section of Rule .ll, which states that imitations of wood in surface-graining should not be attempted. Id. 33. Where an element is described and claimed, Held, that said clement should also be clearly shown in the drawing and that an illustration of said element by means of a sectional view where it does not completely illustrate the structure is not sufficient. Ex parte Alminana, C. D. 1002, 100 O. G. 1331. 34. The requirement for additional illustra- tion is proper when the drawing does not dis- close with certainty what the invention is. Ex parte Seitzingcr, C. D. 1002, 100 O. G. 277:!. 35. Where the drawing discloses a single battery and the specification describes how several such batteries may be superimposed and fastened together, Held, that a require- ment for additional illustrations showing the arrangement is proper and will be insisted upon. Ex -parte Edgerton, C. D. 1902, 101 O. G. 1131. 36. The statute requiring a drawing means one showing what is described, and a part cannot be omitted any more than the whole of it. The question is not whether the construc- tion can be understood without a drawing, but is whether it can be illustrated. Id. 37. Where the drawing is sufficiently clear to enable any person skilled in the art to make and use the invention illustrated therein and where every feature of the invention covered by the claims is shown. Held, that additional illustration should not be required even though the drawing is not made to an exact scale and is not as well executed as it might be. I'.x parte Turner, C. D. 1902, 101 O. G. 2078. 38. Where the claim of an application is for leather having certain characteristics used in a gas-meter and no claim is made to the form of the gas-meter. Held, that the applica- tion will be accepted as complete without a drawing, since it is impossible to illustrate the character of the leather. Ex parte Kosminski, C. D. 1903, 103 O. G. 429. 39. A drawing filed as a part of an applica- tion for a patent should be so clear that the structure which it is intended to illustrate may be easily understood from a mere in- spection of the drawing when the art is known to the person who is called upon to read the drawing. Ex parte Hodges, C. D. 1903, 10.5 O. G. 1334. 40. It is a great desideraluin of patent of- fice drawings that they should tell their story to the eye without making it necessary to go into the specification for explanation ; which should be apparent upon inspection. Ex parte Sturtevant et al., C. D. 1904, 108 O. G. 563. 41. Where it appears that sufficient parts and connections are shown to effect the op- eratitm described and that the specific struc- ture of the parts forms no part of the inven- tion and are stated to be of usual construc- tion. Held, that further illustration should not be required. Ex parte Clark, C. D. 1904, 109 O. G. 2169. 42. Where the invention relates to the ar- rangement of engines, tanks, receivers, and connecting pipes and valves all of known con- struction, diagrammatic illustration is prob- ably clearer than views showing parts in de- tail. Id. 43. Where the examiner required additional illustration and refused action on the merits, stating that the operation could not be under- stood, and it appears that the operation intend- ed by the applicant is clearly described and the apparatus sufficiently illustrated. Held, that action on the merits should not have been suspended. Id. 44. Where an opening referred to in the specification and certain reference-letters should be applied on the drawings. Held, that as these changes are not essential to an un- derstanding of the invention they may be made at any time before final action and do not warrant suspension of action on the mer- its. Id. 45. Where the specification refers to a func- tion that will occur upon a reciprocation of a lever. Held, that it is not necessary to show a means for reciprocating the lever ; but the drawing should clearly show that the lever is capable of being reciprocated. Ex parte Mot- singer, C. n. 1904, 110 O. G. 601. 46. It is not sufficient for the purpose of a patent office drawing that the illustration be such that a person skilled in the art could supply the parts not shown ; but when possi- ble the drawing should be so complete that the purpose and operation of the machine il- lustrated may be readily understood by one skilled in the art by means of a mere inspec- tion of the drawing. Id. 47. Where a certain arrangement of parts is claimed, it must be illustrated in the draw- 132 DRAWINGS, VIII. ings, and one of the elements cannot be omit- ted on the ground that it is well known in the art. Ex parte Bowman, C. D. 1004, UJ O. G. ITO.-i. 48. Where an application fully discloses the construction of the alleged invention which is of general application, the illustration of the invention applied to a particular use should not be required. Ex parte Perkins, C. D. J'Jlin, 142 O. G. 8.-)3. 49. A requirement for a correction of a drawing. Held, proper, since it is very desira- ble that the drawings be so clearly and artis- tically executed as to facilitate a ready un- derstanding of the invention. Ex parte Good, C. D. I'Jll, Hi4 O. G. 739. VIII. Unnecess.\ky Illustration. 50. Upon petition from the requirement of the examiner that sheet 1 of the drawing be canceled, as it is unnecessary, Held, that a superfluous sheet of a drawing should not be permitted to remain in a case. (Ex parte Krause, C. D. 1891, 164, 56 O. G. 1708, cited.) Ex parte Griffin, C. D. 1898, 85 O. G. 454. 51. Upon a petition from the requirement of the examiner that the number of sheets of drawings in an application be reduced, Held. that the examiner and draftsman are experts, and when they agree the well-established rule that the proper illustration is largely within the judgment and discretion of the examiner should be followed. Ex parte Diescher, C. D. l'.)no, 93 O. G. 551. 52. The practice of unnecessarily multiply- ing the number of sheets of drawings filed with applications is open to severe condemna- tion. To file unnecessary sheets of drawings is to increase the cost of photolithographing and to multiply the records, thereby delaying the office in its searches and placing an un- necessary burden upon applicants. Id. 53. It is the rule of the office that the draw- ings should not contain unnecessary matter, and Rule 51 condemns purely advertising mat- ter upon drawings. Ex parte McDonald, C. D. 1902, 101 O. G. 1829. 54. Where a figure of the drawings shows a modification coming within the broad claims in the case. Held, that it should be allowed to remain in the case so long as it does not ex- tend the illustration beyond reasonable limits. Ex parte Leonius, C. D. 1903, 103 O. G. 1164. 55. While an applicant is entitled to all rea- sonable latitude in illustrating his invention. he will not be permitted to unnecessarily cum- ber the records with additional sheets of drawings showing contemplated uses of the invention. Ex parte Landes, C. D. 1903, 103 O. G. losi. 56. Where one figure of the drawing does not show the specific features claimed, but shows in detail the surroundings in which the device which has been improved is to be used. Held, that the figure is unnecessary and tends to confuse the invention and should be canceled. Ex parte Kidd, C. D. 1903, 105 O. G. T45. 57. Where two sheets of drawings are filed with an application and the figures on one of the sheets illustrate clearly all the features of construction covered by the claims, Held, that the illustration on the other sheet is un- necessary and the sheet should be canceled. Ex parte Phillips, C. D. 1903, 105 O. G. 1779. 58. Where the invention claimed is a belt- shifter and the drawing includes a figure cov- ering an entire sheet which is not necessary to a complete disclosure of the invention and which shows in all of its details a traction- engine upon which the invention may be used. Held, that the unnecessary sheet of drawings should be canceled. Ex parte Crislcr, C. D. 1904, 108 O. G. 1869. 59. Where an applicant showed in one fig- ure of his drawings what he considered the prior art, Held, that the figure and the de- scription of it should be canceled. Ex parte Elliott, C. D. 1904, 109 O. G. 1337. 60. The number of sheets of drawing in an application for patent should not be greater than is necessary to clearly illustrate the in- vention. Ex parte Roadhouse, C. D. 1904, 111 O. G. 1368. 61. The drawing of an application for pat- ent should not include matter which is not claimed and which is unnecessary and inef- fective for a clear understanding of the inven- tion claimed. Ex parte Anderson, C. D. 1904, 113 O. G. 2504. 62. When petition was taken from the re- quirement for the cancelation of certain sheets of the drawings as superfluous, but it appeared that the claims in the case were not consid- ered allowable. Held, that the question of superfluous illustration must, in general, be decided in view of the limitations which are included by the claims and should be insisted upon only when the case has been restricted to allowable claims. Ex parte Miller, C. D. 1905, 119 O. G. 1259. DRAWINGS, IX. 133 63. Held, that the requirement by the ex- aminer that unnecessary figures be canceled and that the remaining figures be reduced to a reasonable scale and placed on a single sheet was right. Ex parte Keil, C. D. 1907, 131 O. G. 2144. 64. "There are two principal reasons for the rule requiring drawings to be limited to as few sheets as possible consistent with a clear showing of the invention ; one is that it has now come to be a serious problem to find space for the storage of drawings, whether they form a part of a patent or of an aban- doned application, and the other is that it is a useless expense to photolithograph an un- necessary number of sheets of drawings for the purpose of attaching the same to patents." Ex parte Pfautz, C. D. 1910, i:)9 O. G. 489. IX. Amendment. 65. The question as to whether an amend- ment to correct a drawing should be entered and as to the course of appeal considered. The practice defined by ex parte Zuber (C. D. 1894, 47, 67 O. G. 529) and ex parte Suter (C. D. 1892, 112, 59 O. G. 14:il), distinguish- ed. Ex parte Bailey, C. D. 1898, 82 O. G. 894. 66. When it appears that the original draw- ing clearly shows the invention and that no ob- jection has ever been made to the same by the chief draftsman as to form or by the ex- aminer as to merits, and it further appears that the application has been prosecuted prac- tically to the point of allowance. Held, that an amendment canceling the original drawing and substituting in lieu thereof a new drawing was properly refused entry into the case. To ad- mit the same would necessitate a re-examina- tion of the entire case in all respects, with the exception of making a new search into the art. To thus cause the examiners to perform additional unnecessary work is not fair to them or to other applicants who have pend- ing applications on file awaiting action. Ex parte Pugh, C. D. 1901, 90 O. G. 841. 67. Where it appears that an addition sought to be made to certain figures of a drawing is not to correct what was unintentionally omit- ted from the drawing as originally filed or is not to correct a mere error on the part of the draftsman, but, on the other hand, seeks to add to these figures an unessential feature purposely omitted from them when originally filed, Held, that such an addition to the draw- ing should not be permitted. Ex parte Johns, C. 1). 1900, 06 O. G. 1640. 68. Where an addition sought to be made to certain figures of the drawing would only serve the purpose of allowing in the same ap- plication a certain claim drawn to specifically cover an avowedly different form of inven- tion from another specific form of the same generic invention already covered by a specific claim. Held, that said addition to the figures of the drawing should not be permitted. Id. 69. An applicant cannot be permitted to erase the lines of his drawing and delineate anew the construction and operation of a part fully shown and described or replace a well- described but inferior arrangement by a pref- erable form of his invention. (E.x parte Sny- der, C. D. 1882, 22, 22 O. G. 197.-).) Ex parte Clay, C. D. 1001, 97 O. G. 2980. 70. Where the attorney in the case wishes to amend the drawing which is incorrect and says that the original drawing was made like a sketch furnished by the inventor and the examiner refuses to permit the amendment without specific authority from the inventor. Held, that the original power of attorney is sufficient authority. Ex parte Wilcox, C. D. 1002, 101 O. G. 1829. 71. The attorney in the case is under his original appointment authorized to make all proper amendments to the drawings, and if a particular amendment is to be refused ad- mission it must be because the amendment it- self is not proper and not because of any lack of authority. Id. 72. Where blue-prints of original drawings have been made part of the record, it is per- missible to make slight changes in the orig- inal drawings, but not such changes as prac- tically obliterate the identity of any of the original figures. Ex parte Kuhlman and Car- penter, C. D. 190.3, 102 O. G. 229. 73. Where an applicant wished to change two of the original figures of his drawings in order to bring the construction shown therein within the terms of a claim drawn to another species and the necessary changes would re- quire substantial erasures on these figures and substantial additions thereto, the examiner was right in refusing to allow the changes to be made. Id. 74. The office having selected certain ways of illustrating different materials and publish- ed the same in the Rules of Practice, Held, that inventors should follow the same, as it is essential that a drawing be in so far as 134 DRAWINGS, X. possible made so clear that it can be read without reference to the description thereof in the specification. Ex parte Whitney, C. D. 1904, 1U9 O. G. 2442. 75. Where an applicant makes claims to a certain feature of an invention clearly de- scribed in the specification, but not illustrated in the drawing. Held, that an amendment to the drawing illustrating the feature described and claimed is justified. Ex parte Zwiebel, C. D. 1904, 110 O. G. 1428. 76. Held, that a drawing should not be amended except upon the written permission of the examiner having charge thereof. Id. 77. The practice to be followed in a case where it is desired to amend a drawing is for the applicant to file a blue-print of the orig- inal drawing and illustrate either on this print or by means of a sketch the change in the orig- inal drawing which it is desired to make. The blue-print and sketch should then be filed, ac- companied by a written request for permission to alter the drawing. The examiner's re- sponse to this request should be in writing. Id. 78. A photographic copy of the original drawing should be filed where a change is made in any of the original sheets of draw- ing, whether by amendment of a figure or the addition of a new figure. Ex parte Campbell, C. D. 1905, 116 O. G. 1452. 79. Where all figures were canceled from the drawing except some at one end of sheet, so that the drawing would present peculiar and inartistic appearance in the patent, Held, that new drawing should be furnished. Ex parte Burschik, C. D. 1905, 119 O. G. 1258. X. New Matter. 80. Reference having been made in the orig- inal application to spurs or cleats, they can be shown so long as the illustration of them does not involve a departure from the orig- inal disclosure; but the question as to whether a particular figure of the drawings illustrating them and covered specifically by the claims involves new matters is for the examiners-in- chief to decide. Ex parte Shearman, C. D. 1898, 84 O. G. 1730. 81. Claims should cover specifically only what is illustrated in the drawings; but since it cannot be decided in this case whether the spurs or cleats are properly illustrated with- out passing upon the question of new matter involved in some of the claims this petition is dismissed. Id. 82. Where a petition is taken to the com- missioner upon the refusal of the examiner to allow an amendment to the drawing clearly showing a feature covered by a claim which has been admitted and rejected on the ground that said claim covers new matter, Held, that such a petition does not lie. The question involved relates to the merits of the case and is appealable in the first instance to the ex- aminers-in-chief. Ex parte Baptist, C. D. li)01, 97 O. G. 191. 83. Where it appears that the changes sought to be made to the drawing include matter not originally shown and described and are not merely for the correction of clear and unmistakable errors of the draftsman, Held, that such changes constitute new matter and should not be admitted. Ex parte Delbey, C. D. 1901, 96 O. G. 1240. 84. Where it appears that amendments sought to be made to the drawing and specifi- cation include matter not originally shown and described, though not affecting the claims in the case, the same could be made the basis for new claims, Held, to constitute new mat- ter and should not be admitted. Id. 85. Where the original description and drawing disclose a complete and operative de- vice and the changes proposed are not to cor- rect mere clerical errors of the draftsman nor to supply manifest defects or omissions in the features essential to the operation of the invention, but would form the basis for de- scription and claims not warranted by the original disclosure, Held, that such changes constitute new matter and should not be per- mitted. Ex parte Alman, C. D. 1901, 97 O. G 191. 86. When descriptive matter affecting a claim is presented in an amendment and this descriptive matter is held to be a departure from the original disclosure and a drawing is also filed illustrating this alleged new matter, the drawing should not be entered until it has been determined on appeal that the exam- iner erred in rejecting the claim on the ground of new matter. Ex parte Furness, C. D. 1903, 104 O. G. 455. 87. Where substitute drawings are filed which contain new matter affecting the claims. Held, that the claims should be rejected on the ground of new matter and that the draw- ings should not be entered formally in the case unless and until the examiners-in-chief DURESS— ESTOPPEL. 135 or some appellate tribunal finally holds that the amendments do not involve new matter. Ex parte Furness, ante, 174, 104 O. G. 1655. Ex parte Sonnenburg and Helbig, C. D. 1903, 107 O. G. 2530. 88. A general statement in the original spec- ification as to a modification of the invention does not warrant an amendment to the draw- ing showing a species of the invention not originally disclosed. Ex parte Mothes, C. D. 1904, 113 O. G. 1146. 89. The fact that no claim is made to new matter inserted by amendment furnishes no good reason for permitting it to remain in the case. Id. 90. An applicant will not be permitted to il- lustrate a specific form of the invention not originally disclosed although it illustrates the generic invention disclosed. Ex parte Butcher, C. D. 1904, 108 O. G. 1387. 91. Where a claim is rejected for the reason that it is based upon new matter shown in a figure of the drawing. Held, that the validity of the claim should first be determined be- fore a petition can be taken from the exam- iner's action requiring the cancelation of the figure and the description relating to the same. Ex parte Schmidt, C. D. 1904, 110 O. G. 603. 92. Where the original drawings showed a tool having a tapered shank of the usual auger form and it was described as being formed from twisting a tapered flat strip of metal and it appears that the product as shown would result from the operation of twisting as this term is used in the arts. Held, that a draw- ing showing the tool-shank in any other form was inadmissible, as involving new matter, al- though such form might also result from a twisting operation. Ex parte Freund, C. D. 190.5, 119 O. G. 651. 93. Where a proposed change in the draw- ings is offered and the examiner rejects on the ground of new matter and the feature sought to be illustrated is a part of structure held to be inoperative, on which ground the appli- cation is also rejected. Held, that the question is clearly one of merits and should be review- ed in the first instance by the examiners-in- chief. Ex parte Nenninger, C. D. 1906, 122 O. G. 1397. 94. Where in the original specification one member is said to be secured to a part "by means of a bolt or pivot" and in an original claim the member is referred to as being "con- nected adjustably" with such part, but no means for permitting such adjustment is shown in the drawing. Held, that amendment to the drawing should be permitted to show suitable means for performing the function claimed, if supported by a supplemental oath. Ex parte Sylvestersen, C. D. 1907, 129 O. G. 3160. DURESS. 1. It would be carrying the rule of compul- sion or duress a great way and to a dangerous extent to hold that any one occupying a sub- ordinate position is not to be bound by his acts as between himself and his superior be- cause of a supposed fear on the part of the clerk that should he protest he might lose his employment, d Barr Car Co. v. Chicago & Northwestern Railway Company, C. D. 1901, 97 O. G. 2534. EQUIVALENTS. 1. A device embodying two springs used to disrupt a telephone circuit is substantially equivalent to a device embodying one spring for the same purpose. *McBerty v. Cook, C. D. 1900, 90 O. G. 2293. 2. The decisions that an element included in a claim cannot be regarded as immaterial were not intended to exclude from consideration the doctrine of mechanical equivalents. An ele- ment cannot be held to be immaterial where there is no corresponding element in the other party's claim ; but where there is a correspond- ing element the question whether they are mechanical equivalents must be determined. Ex parte Thompson, C. D. 1902, 98 O. G. 227. 3. The range of equivalents depends upon the extent and nature of the invention. If the invention is broad and primary in its char- acter, the range of equivalents will be corre- spondingly broad under the liberal construc- tion which the courts give to such inventions. **Continental Paper Bag Company v. Eastern Paper Bag Company, C. D. 1908, 136 O. G. 1297. ESTOPPEL. 1. The doctrine of equitable estoppel ap- plies in the administration of the patent law, as it does in other cases, for the prevention of injustice. *Mower v. Duell, Commissioner of Patents, C. D. 1899, 88 O. G. 191. 2. Where a suit upon a patent terminates for the defendant and complainant thereafter 138 EVIDENCE— EXAMINATION OF APPLICATION, 1. sues a customer of the defendant upon the same patent and the aforesaid defendant as- sumes the defense of his customer's suit. Held, that he is not thereby estopped from proceeding against the complaint for wrong- fully interfering with his business. **Kersler V. Eldred, C. D. 1907, 128 O. G. 1(J90. 3. Held, that the aforesaid defendant was entitled to proceed against the complainant in equity. *Id. 4. "A patentee having once presented his claim in one form and the patent office having rejected it with his acquiescence, he is estopped to claim the benefit of his rejected claim or such construction of his amended claim as would be equivalent to the rejected claim, and it makes no difference whether the rejected claim be broader or narrower than the one al- lowed. *Engel V. vSinclair et al., C. D. 1910, 152 O. G. 489. EVIDENCE. 1. While the allowance of an application is not evidence for the interested party in the ordinary sense, yet it is a record of an offi- cial action in the office and under the authority of the commissioner of which the court of ap- peals may take notice in order that justice may be done. *Cain v. Park, C. D. 1899, 80 O. G. 797. 2. In passing upon an application for a pat- ent the commissioner may go outside of the record and take notice of the official entries made in his own office and under his own supervision in order that justice may be done to parties. *Id. 3. Held, that congress did not intend to es- tablish two rules of evidence for determining the effective date of invention, one to be ap- plied where the rights of applicants are to be determined inter partes and another where they are to be determined ex parte. A ques- tion which is ex parte one day may be raised inter partes the next. Ex parte Grosselin, C. D. 1901, 97 O. G. 2977. EXAMINATION OF APPLICATION. I. In General. II. Rejection. III. Actions Other than Rejection. IV. Final Rejection. (a) Proper and In General. (b) Improper. V. E.XPLANATlON OF AcTION. (a) Sufficient and In General. (b) Insufficient. VI. Persuasiveness of Previous Action. VII. PREFERREn Ari'LICATION. I. In General. 1. Examiners should observe toward attor- neys the same courtesy that is required of attorneys in the prosecution of cases before the office. Ex parte Horstick, C. D. 1898, 84 O. G. 981. 2. The office has no right, except where the right of the applicant is clearly shown, to create a necessity or make it incumbent upon a prior inventor and pattentee to go into court to vindicate his patent as against a subsequent patentee for substantially the same invention, and therefore it should not allow claims mere- ly because they contain apparent structural differences over those of the patentee upon the theory that no great harm could be done by such course. *Marshutz v. Commissioner of Patents, C. D. 189S, 85 O. G. 778. 3. When an application has received its serial number and date of filing and has been forwarded to the examiner, it cannot be held to have no standing before the office in the absence of such vital defect as would warrant its return to the application clerk for correc- tion. Ex parte Becker, C. D. 1901, 97 O. G. 1597. 4. When an application has been sent for- ward for examination, it is presumably com- plete within the requirements of the statutes, and the examination thereof and action there- on should be directed throughout to the mer- its. Id. 5. When there is no defect in tke parts of an application which amounts to a failure to comply with the express terms of the statutes, it is contrary to the policy of the office and unjust to the applicant to postpone action on the merits because of a formal defect which does not render the disclosure of the alleged invention imperfect or prevent a complete un- derstanding of the same by the examiner. Id. 6. The examination of claims is not a mere formal proceeding, but is essentially an ex- amination into the merits of the case. Ex parte Broderick, C. D. 1901, 96 O. G. 1430. 7. When the invention can be understood, the case should receive action throughout on its merits. (Rule 04.) Ex parte Springborn, C. D. 1902, 99 O. G. G67. EXAMINATION OF APPLICATION, II. 137 8. To merely state that there is patentable subject-matter presented in the application is not sufficient under the last clause of Rule 64 to warrant the examiner in insisting upon formal requirements before the case receives action on its merits. Requirements in matters of form will be insisted upon only in those cases in which the examination on the merits is completed. The case, except for formal matters, must be ready for allowance or for appeal. Id. 9. A statement in a letter from the exam- iner that certain claims are allowed upon re- solving doubts in the applicant's favor or- dered stricken from the record. Ex parte Overstrom, C. D. 1903, lOfi O. G. 1531. 10. The request that the examiner be per- mitted to go to Woonsocket, R. I., to inspect the machine cannot be granted, for the reason that the facts do not warrant the examiner giving his whole time for several days to this one application when there are many other cases before him which are awaiting action. The rights of the other applicants who have applications pending before the examiner must be considered. Ex parte McTammany and Wright, C. D. 1903, 103 O. G. 661. 11. All objections to the application, wheth- er relating to form or merits, should be made as soon as possible, and new objections late in the prosecution of a case should be necessary only in exceptional cases ; but it does not fol- low that the objection is to be ignored be- cause not discovered as soon as desirable. Ex parte Lewis, C. D. 1904, 108 O. G. 559. 12. It is the duty of the patent office to make all proper tests and experiments with regard to matters involved in claims to inven- tions relating to science and the useful arts to establish the truth as between the parties and as between the parties and the public. (Sec. 4890, Rev. Stats.) *Flora v. Powne, C. D. 1904, 109 O. G. 2443. 13. In the actions upon cases both by the of- fice and l)y the applicants the reasons for the rules of procedure should be kept in mind, and they should not be lost sight of by too close attention to supposed technical require- ments as to form. The purpose of an action upon a case should be to make clear the posi- tion of the one acting, whether he is the ex- aminer or the applicant, and if he does this the form is of minor importance. Ex parte Murray, C. D. 1904, 111 O. G. 2491. 14. It is not good practice to base actions in a case upon oral understandings or agree- ments without stating in the record the rea- sons for the actions. Ex parte Hunter, C. D. 1905, 116 O. G. 1731. 15. Where no reason is given for the use of certain ingredients of the article of manu- facture which are set forth in the specification and the examiner is of the opinion that such ingredients have a deleterious effect or no effect at all, he should not refuse to act upon the merits of the case, but should reject the claim for this reason. Ex parte Danford, C. U. 1907, 131 O. G. 942. 16. Where an applicant filed an amendment directing the cancelation of the finally re- jected claims of his application and requesting that the case be passed to issue, but on the same day filed an appeal from the examiner's final rejection, in which appeal papers he asked that the amendment be withdrawn, although the request for the withdrawal of the amend- ment was informal, in that it was embodied in the appeal papers instead of in a separate paper, the examiner should not have entered the amendment and passed the case to issue without giving the applicant an opportunity to elect the course he desired to pursue. Ex parte Kruse, C. D. 1908, 133 O. G. 229. 17. "Complete actions on the part of this office are as important as the avoidance of piecemeal prosecution on the part of the ap- plicant. Thereby the burden incident to the prosecution of the application is reduced both for the applicant and the office, unnecessary delay is eliminated, and the issuance of the patent expedited. The importance of an early issuance of a patent on an application contain- ing allowable subject-matter, thereby placing the invention in the hands of the public through the expiration of the patent monopoly at as early a date as possible, has been em- phasized in many commissioners' decisions." Ex parte Garrett, C. D. 1910, 158 O. G. 701. II. Rejection. 18. Where the examiner's action was irreg- ular but was in effect a rejection and was so recognized by the applicant, the case is in con- dition for appeal and will not be remanded for further action by the examiner. Ex parte .Adams, C. D. 1898, 84 O. G. 311. 19. .-Ml the references applicable to a claim should, if possible, be cited in the first office action. Ex parte Waters, C. D. 1900, 97 O. G. 2744. 138 EXAMINATION OF APPLICATION. Ill, IV, (a). 20. It may be stated as a general rule that where an examiner rejects a claim because he thinks the subject-matter thereof is old he should either cite a specific reference show- ing the prior art or make the affidavit called for by Rule 60. Ex parte Walker, C. D. 1903, 1112 O. G. 465. 21. Where an examiner rejects a claim on a patent when taken in conjunction with a "common expedient" made use of by printers and refers to the blank form commonly used in oaths to applications as illustrating what he means by the "common expedient," his rejec- tion is sufficiently definite, and he should not be required to make an affidavit to explain his meaning more fully. Id. 22. Where two or more claims are met in a single reference or if the same grounds of rejection apply to them, a single statement by the examiner to that effect makes his position just as clear as would a repetition of the statement for each separate claim. The sin- gle statement, if clear, is sufficient, since it gains nothing in clearness or force by repeti- tion. There is objection to the grouping of claims only where it is done at a sacrifice to clearness. Ex parte Murray, C. D. 1904, 111 O. G. 2491. 23. Where the examiner after fully pointing out why the claims presented were held to be not patentable over the references of record stated that in his opinion the case was "de- void of any patentable merit whatsoever," Held, that such statement was unobjectionable. Ex parte Fox, C. D. 1910, l.--,? O. G. 485. III. Actions Other than Rejection. 24. The practice of raising objections to an amendment for the first time only after send- ing the applicant to the commissioner on a petition directed to other objections to the same amendment has been repeatedly con- demned. (Ex parte Kitson, C. D. 1881, 49, 20 O. G. 1750; Ex parte Bertrand, 69 MS. Dec., 54.) Ex parte Blanchard, C. D. 1000, 9.S O. G. 2106. 25. Where the examiner refused to enter an amendment on the ground that the case stood finally rejected, and upon petition to the com- missioner he was directed to enter it, but thereafter for the first time raised the re- quirement for a supplemental oath against the amendment and again refused to enter it on the new ground that it was not accompanied by such an oath, Held, that the examiner's re- fusal to comply with the order to enter the amendment admits of no excuse. Having violated Rule 64, which requires that all ob- jections be raised at one time, he is in no posi- tion to hide behind a strained construction of Rule 48 to excuse his refusal to comply with the commissioner's order. Id. 26. The practice of an examiner in his first action suggesting to an applicant that claims are in the wrong form is not objectionable. (Ex parte Aberli, C. D. 1900, 95, 91 O. G. 2:W1.) Ex parte Trevette, C. D. 1901, 97 O. G. 1173. 27. Formal objections to a case should be made in the first office letter; but the fact that they are not so made is no good reason for allowing a patent containing formal defects which are subsequently discovered. Ex parte Blakeman, C. D. 1902, 98 O. G. 791. 28. Where an applicant in good faith by amendment attempts to cure formal objections, if the amendments are not satisfactory the examiner should so state in specific language. Ex parte LjUngstrom, C. D. 1905, 119 O. G. 223.5. 29. Only where claims are indefinite in the sense that they are ambiguous, equivocal, lack- ing in clearness, or unintelligible, shall the ex- aminer's action be in the form of an objec- tion. The remedy from this action is by peti- tion to the commissioner in person. Ex parte Bitner, C. D. 1909, 140 O. G. 256. IV. Final Rejection. (a) Proper, and In General. 30. Where a case had received numerous actions and was under final rejection, Held, that under the practice as indicated in ex parte Barnes (C. D. 1897, 76, 80 O. G. 2038) the examiner should give applicant a full statement as to the pertinency of the refer- ences and the reasons for rejecting the claims without reopening the case. Ex parte Mer- genthaler, C. D. 1898, 85 O. G. 775. 31. Where the claims under consideration are not in the same words as those before re- jected, but mean substantially the same thing and cover the same idea of invention. Held. that they may properly be finally rejected. Ex parte Rider, C. D. 1898, 85 O. G. 1078. 32. In the letter which is intended to close the consideration of a case before him and place it in condition for appeal, the examiner should state that the rejected claims are finally EXAMINATION OF APPLICATION, III, IV, (a). 139 rejected. Ex parte Kendall, C. D. 1000, 93 O. G. 754. 33. Where after numerous actions in the case in which the e.\aminer states that there is nothing patentable presented the claims are finally rejected, although by reason of amend- ments they are not the same in all details as the claims before rejected, and the applicant thereafter presented two sets of claims sub- stantially the same as those finally rejected and the examiner while refusing to reopen the case stated that they were substantially the same and un])atentable, Held, that the final re- jection was technically unwarranted at the time, but that since there is a clear issue be- tween the applicant and the examiner no use- ful purpose would be served by reopening the case, and since substantially the same claims have been reconsidered by him it is directed that the last amendment be entered and the claims considered finally rejected. Ex parte Courville, C. D. 1901, 96 O. G. 3061. 34. Where in a letter of final rejection the examiner for the first time stated that "the introductory words of a claim import no struc- ture whatever into a claim, Held, that such a statement is merely an elaboration or explana- tion of the grounds of rejection previously cited against the claims and does not consti- tute a new reason for rejection. Ex parte Coddington, S. D. 1901, 96 O. G. 1239. 35. The words "new * * reasons for rejec- tion" in Rule 68 mean new "grounds involv- ing the merits of the invention," such as are enumerated in Rule 133. Id. 36. Where the examiner twice wrote the ap- plicant that a "patent is refused" without stat- ing in either letter that the claims were finally rejected and within one year from the last letter the applicant presented an amendment which the examiner refused to enter on the ground that the case was under final rejection and where the result of the examiner's action would be an abandonment of the case. Held, that the amendment should be entered. Ex parte Byrnes, C. D. 1901, 97 O. G. 191. 37. The rejection of claims should be in plain unmistakable terms, and the letter in- tended as closing the consideration of the case should indicate clearly that the claims are finally rejected. The burden of judging for himself whether the second letter of rejec- tion contains no new reasons for rejection should not be placed upon the applicant. Id. 38. Where in rejecting a claim the examiner fully states the reasons for such action and applicant, without specifically requesting re- consideration, submits a statement of reasons why, in his opinion, the claim is not met by the references, the only fair interpretation of such action by applicant is that he persists in his claim. It follows that a final rejection is proper, if in the opinion of the examiner the same references and reasons for rejection are applicable. Ex parte Vose, C. D. 1901, 97 O. C. 1599. 39. The examiner may finally reject claims and close the consideration of the merits of the case before him before all formal errors are corrected under the rule, which provides that objections to form will be subordinated to matters of merits. It is merely necessary that the formal matters be disposed of before an appeal is forwarded. Ex parte Severy, C. D. 1901, 97 O. G. 274.5. 40. Where after the rejection of claims the applicant presented an amendment correcting the spelling of words positively including ele- ments which were inferentially included before and transposing a descriptive phrase from one place to another, Held, that the amendment is merely formal in character and does not prevent a final rejection. Ex parte Casler, C. D. 1902, 100 O. G. 1330. 41. Where an applicant makes merely form- al amendments to the claims and requests re- consideration. Held, that a final rejection is in order. Ex parte Downing, C. D. 1902, 100 O. G. 2176. 42. Where the letter of final rejection is not full and specific, but when taken with the other letters in the case the examiner's posi- tion is made clear. Held, that he will not be required to make a further explanation. Ex parte Hallowell, C. D. 1903, 105 O. G. 1533. 43. Where the applicant asks the examiner to make his action final, he is estopped from thereafter alleging that the final rejection was premature. Ex parte Munson, C. D. 1903, 105 O. G. 204. 44. Where the claims in an application stand finally rejected and the examiner required the applicant as a condition precedent to the allowance of the claims to demonstrate the feasibility of the process claimed. Held, that such action was proper ; but it is optional with the applicant to produce such evidence before the examiner as will satisfy him of the utility of the process or to prosecute an ap- peal to the examiners-in-chief. Ex parte Brisbane, C. D. 1903, 107 O. G. 1097. 140 EXAMINATION OF APPLICATION. IV, (a). 45. Where a claim is finally rejected on two patents taken togetlicr and it appears that the claim has previously been rejected for the same reasons, but in the last preceding action only one of the patents was cited, field, that the final rejection was proper and that the applicant was not entitled to amend thereafter. E.X parte Minich, C. D. 1903, 107 O. G. 1971. 46. Where the claims in an application have been rejected and the reasons therefor have been fully and precisely stated and the ap- plicant files an argument to meet the exam- iner's views and asks for a further explana- tion. Held, that the examiner properly finally rejected the claims, although the applicant said he did not desire a formal reconsideration. Ex parte Casselman, C. D. 1903, 102 O. G. 230. 47. Where the applicant files an argument traversing the action of the examiner and the examiner insists upon his action without cit- ing new reasons for rejection, Held, that a final rejection is in order. Id. 48. Where in a design case the claim is re- jected and the applicant is required to cancel unnecessary description in the specification and he files an amendment canceling the de- scription and asking for reconsideration of the claim, Held, that the case is in condition for final rejection. Ex parte Segelhorst, C. D. 1904, 109 O. G. 1887. 49. An amendment to the specification in a design case canceling unnecessary descrip- tion does not change the invention claimed and does not introduce any new elements for consideration upon the question of patent- ability of the claim. It is not, in effect, an amendment of the claim. Id. 50. Where the examiner rejects the claims upon references and the applicant twice asks him to explain why the device shown in one of those references is operative and the ex- aminer has fully and carefully explained the reference and his position in regard to it, Held, that he was justified in finally rejecting the claims. Ex parte Leilich, C. D. 1904, 108 O. G. .-iOl. 51. Where the applicant explains his posi- tion in regard to the references fully and asks for reconsideration, Held, that the examiner properly rejected the claims finally, stating his reasons fully. The case is different from one where explanation is asked on some point be- fore action. Ex parte Silsby, C. D. 1904, 108 O. G. 1051. 52. Where one of the figures of the draw- ing, showing an unimportant detail, was ob- jected to in the same action in which the claims were rejected on references. Held, that a subsequent amendment overcoming this ob- jection and requesting a second action upon the claims places the case in condition for final rejection. Ex parte Marks, C. D. 1904, 109 O. G. 1008. 53. Where the invention is understood and action upon the merits is given. Held, that the presentation of an amendment overcoming some formal objection constitutes no reason for suspending further action upon the merits until the applicant is notified to the effect of the formal amendment. Id. 54. Where the application and the refer- ences present simple devices and the pertinence of the references and the examiner's position with respect to the rejected claims has been repeatedly explained and it appears from the arguments filed that the issue between the applicant and the examiner is clearly defined and the applicant is apparently not in doubt as to whether the features of his device upon which he relies to support the claims are dis- closed in the references, but disagrees with the conclusion of the examiner that these features do not render the claims allowable, and the claims were presented a second time with argument and without amendment. Held. that the examiner, adhering to his original opinion and having no new grounds of re- jection to offer, very properly decided that the prosecution before him should close and made his action final. Ex parte Almy, C. D. 19().->, 115 O. G. l.'>84. 55. Where a claim for a process is 'rejected, which claim is qualified by a brief statement of the article produced, and an amendment is filed more specifically defining the structure of the article, Held, that the process claim is not changed in scope, and a final rejection is in order. Ex parte Crecelius, C. D. 190.5, 116 O. G. 2.')31. 56. Where the letter of final rejection stated the grounds of rejection more explicitly than they had been stated before, but the previous letter had nevertheless stated these grounds with such clearness that the applicant could have decided intelligently therefrom whether to amend the case or to submit the same with- out change for reconsideration. Held, that the final rejection could not be considered im- proper, as one including new grounds of re- jection necessitating further amendment. Ex parte Wagner, C. D. 1905, 118 O. G. 1684. EXAMINATION OF APPLICATION, IV, (a). 141 57. Where in a letter of tinal rejection it was stated that amendments to the drawing and specification would be re(|uircd if the re- jection was sustained on appeal, Held, that this statement afforded no reason for setting aside the final rejection, though the specific changes which would be required had not been pointed out, but the grounds of rejection had been clearly stated in previous actions. Id. 58. Where the letter of final rejection in- cluded a withdrawal of one of the original grounds of rejection. Held, that this action afforded no reason for permitting further prosecution before the primary examiner and that the final rejection was not improper in view thereof. Id. 59. Where it was contended that the ex- aminer should reply to every argument which may be advanced before linally rejecting the claim of an application. Held, that such is not the case and that it is not the duty of exam- iners to enter into arguments with applicants, but to state their objections and reasons for rejection clearly, to consider such facts and arguments as may be presented, and to act in accordance with their conclusions determined in view of all the circumstances. Id. 60. Where petition is brought from the re- fusal of the examiner to point out previously rejected claims which he considers to be sub- stantially the same as those finally rejected, Held, that applicant is entitled to this in- formation, and examiner directed to furnish same, though without withdrawal of the final rejection. Ex parte Thayer, C. D. lOO,"., 118 O. G. 22r)2. 61. Where the examiner rejects the claims on the ground of inoperativeness and the ap- plicant files a letter and an affidavit seeking to show that the device is operative and asks for a reconsideration, which is given, and the claims are finally rejected for the same reasons. Held, that the final rejection cannot be considered premature simply because the examiner in his final rejection entered into an explanation to meet the arguments of the ap- plicant. Ex parte vSchmid, C. D. 1906, 121 O. G. 167.-.. 62. Where the final rejection referred to no new reasons or references and the inven- tion was simple, the fact that a more extended explanation of the same ground of rejection was given furnishes no reason for reopening the case for the consideration of additional claims. Ex parte Kinney and Schultz, C. D. 1906, 121 O. G. 3325. 63. Where a claim is presented a second time without material amendment and with no direct request for further explanation of the grounds for rejection. Held, that the ex- aminer, adhering to his original opinion and having no new grounds for rejection to offer, may properly make his action final, even though it is but the second action in the case. Ex parte Cox, C. D. 1906, 122 O. G. 104:>. 64. Where the prior office actions clearly disclose the grounds on wdiich each of the claims under final rejection stands rejected and the letter of final action contains a mere restatement at greater length of said grounds. Held, that the final rejection was in order. Ex parte Flindall, C. D. 1906, 123 O. G. 1396. 65. Where in response to the office action rejecting the claims on the ground that the device is devoid of utility applicant presents an argument traversing the position taken by the examiner. Held, that the examiner being of the opinion that his ground for rejection was well taken was correct in adhering to it and making it final. Ex parte Loppentien, C. D. 1906, 122 O. G. 172:i. 66. Where the examiner points out certain formal objections in his letter finally rejecting the claims of an application, Held, that the final rejection is not thereby rendered prema- ture. Ex parte Green, C. D. 1907, 130 O. G. 299. 67. Where substitute claims were rejected upon the same references as the prior claims and it was stated that the "claims are sub- stantially like those previously rejected on the same references, being, if anything, a little broader," Held, that a final rejection was proper. Ex parte Lasance, C. D. 1907, 131 O. G. 1421. 68. Where the pertinency of the references had been sufficiently explained and claims were presented without argument, but with a re- quest for further explanation of the refer- ences, a final rejection of the claims was prop- er. Ex parte Ault, C. D. 1908, 137 O. G. 1941. 69. Where the amendments or reasons pre- sented by an applicant in response to an action by the office do not necessitate the citation by the examiner of additional references or reasons, applicant's right to further prosecu- tion of the application before the examiner is at ,nn end, and the permission of further amendment is within the discretion of the of- fice. Ex parte Miller, C. D. 1909, 139 O. G. 730. 142 EXAMINATION OF APPLICATION, IV, (a). 70. Where tlic examiner has held that cer- tain claims are unpatentable and has fully ad- vised the applicant of his reasons for such holding and the latter, after reasonable prose- cution of the case, has failed to so amend the case as to necessitate the citation of new references and has been unable by argument to convince the examiner that he was in error, an issue is reached, and the examiner is justi- fied in refusing to accept further amendment and in finally rejecting the claims then of record in the case. Id. 71. Where the claims of an application have been rejected in view of references and the applicant, having had ample opportunity to differentiate his alleged invention from the references of record, if possible, and having failed to do so and also having been unable to convince the examiner by argument of the patentability of any claim presented and hav- ing been advised that the invention disclosed in the application is unpatentable, there is no reason for further continuing the prosecu- tion of the case before the examiner, and final rejection should be entered, notwithstanding the fact that the claim presented may differ in terms from those previously considered. Ex parte Perry, C. D. 1909, 140 O. G. 1001. 72. Where after a thorough discussion of the references the claims have been twice re- jected upon the same references, the appli- cant has a right of appeal from such rejection even though the examiner did not designate his second rejection a "final rejection." Ex parte McPhail, C. D. 1909, 141 O. G. 1162. 73. Where after the rejection of a claim the applicant presents another claim differing therefrom only in that it is a more accurate statement of the invention, together with a full argument upon the merits and a request that final action be given, final rejection is in order and should be given. Ex parte Mar- shall, C. D. 1909, 139 O. G. 198. 74. Where, after repeated actions on the part of the office and the applicant, a clear issue had been reached as to the patentabil- ity of applicant's invention. Held, that a final rejection was properly entered, notwithstand- ing the fact that the claims so rejected were not exactly the same as those previously con- sidered. Ex parte Miller, C. D. 1910, 150 O. G. 827. 75. "The action of the examiner in rejecting claims of a pending application on the ground that they were not patentable over matter claimed in other applications of the same party at that time in the issue is in accord with the well-established practice of this office. Wheth- er the differences in the inventions claimed arc patentable is a matter for appeal to the examiners-in-chief." Ex parte Waterman, C. D. I'JIO, IT)! O. G. 449. 76. Claims of an application were rejected on other allowed applications of the same party, which later became forfeited. //rW. that while in that condition they no longer constituted a bar to the allowance of those claims. Id. 77. Where a claim presented in lieu of a previously-rejected claim differed therefrom only in the inclusion of a feature which was shown in references of record and in view of which claims including this feature had been canceled. Held, that the action of the exam- iner in calling attention to these references did not constitute a new ground of rejection and that the final rejection of the claim was proper. Ex parte Lang, C. D. 1910, 153 O. G. lOSl. 78. Where in rejecting the claims in an ap- plication disclosing a very simple device the examiner states that the claims present no in- vention over the references and in response to the statement by the applicant as to certain differences between the device of the aijplica- tion and those disclosed in the references the examiner makes his rejection final. Held, that in view of the simple character of the device the examiner's statement that the claims pre- sent no invention over the references gave applicant all the information necessary to in- telligently prosecute his case and that the final rejection was proper. Ex parte Movers, C. D. 1910, 154 O. G. 1411. 79. Where the examiner rejects a claim as not patentable over either of two references and in response to an argument repeats the rejection, relying upon only one of these ref- erences. Held, that it was proper to make this rejection final. Ex parte Gentry, C. D. 1911, 162 O. G. 537. 80. Where in response to the action of the examiner rejecting a claim on a reference the applicant without amending the claim points out certain differences between the reference and the structure claimed, the invention being a simple one, and argues that in view of these differences the claim is allowable. Held, that the final rejection of the claim was not prema- ture. Ex parte Handel, C. D. 1911, 163 O. G. 999. EXAMINATION OF APPLICATION, IV, (b). 143 81. It is necessary in the prosecution of ap- plicatiuns for patent that the prosecution should at some time come to an end and that wlicn an apphcation has been fully considered and reached the state of final rejection further prosecution, except by appeal, be then closed, for an unlimited prosecution of an applica- tion necessarily prevents other applicants from having their applications examined in regular order. Ex parte Schmidt, C. D. 1911, 171 O. G. 482. 82. A petition to set aside a final rejection dismissed as premature where no request had been made of the primary examiner to with- draw that rejection. Ex parte Lawton, C. D. I'Jll, 172 O. G. 2.VJ. 83. Where the device shown in an appli- cation is a very simple one and in response ti) a rejection of the claims upon reference the applicant did not point out the manner in which the alleged invention is patentable over the references cited, but merely denied the pertinency thereof, held, that a final re- jection was properly entered. Ex parte Levy, C. U. 1911, 173 O. G. 2S8. (b) Improper. 84. Where an examiner after rejecting a claim a second time on the grounds of record, in the same letter discussed the state of the art and cited new references to support a state- ment that it was not possible for applicant to make an allowable claim, Held, that the claim was not properly finally rejected. Ex parte Gammons, C. D. 1902, 08 O. G. 2171. 85. An examiner's letter which is intended to close the consideration of the case before him should state such intention in clear and unmistakable terms. Id. 8G. The citation of new references in the letter finally rejecting the claims in effect re- opens the case when they are cited to show that the subject-matter of the application is unpatentable. Id. 87. Where a claim including a "tub" as an element is rejected and the applicant presents an amendment including an "oscillating tub," Held, that the claim is not the same in sub- stance and that a final rejection is not in order. Ex parte Casler, C. D. 1902, ino O. G. 1.3.30. 88. An examiner cannot finally reject a claim which has been amended in matter of substance on a single action. The claim must have been twice rejected. Ex parte Slaughter, C. D. 1903, 103 O. G. 498. 89. If the claim as amended does not as a matter of language present the same idea of invention as the old claim, it must be held that the claim has been amended in matter of substance and that a final rejection is not in order. Id. 90. Where the examiner announces that the claims are finally rejected before making such explanation of his position as is called for by the applicant's arguments. Held, that the final rejection is premature. Ex parte Starr, C. D. 1903, 106 O. G. 263. 91. Where the application covers a com- plicated machine and includes many claims and the applicant is apparent good faith amends every claim in the effort to make them allow- able, Held, that the examiner should not final- ly reject the claims in the second action in the case on the ground that they are not changed. The applicant should have a reasonable op- portunity to get his claims into allowable con- dition. Ex parte Stuart, C. D. 1904, 109 O. G. 1068. 92. It is the policy of the office to afford ap- plicants ample opportunity for amendment, and it is only in unusual and very simple cases that final rejection should be given in the sec- ond action. Ex parte Wieser, C. D. 1904, 110 O. G. 1726. 93. Where a claim is rejected on a reference previously cited in the case, but for the first time cited against that particular claim. Held, that the rejection of the claim should not be made final. Ex parte Booth, C. D. 1904, 113 O. G. 2216. 94. An applicant has the right to amend as often as new grounds of rejection are given, and the citation for the first time of a par- ticular reference against a particular claim is a new ground of rejection. Id. 95. Where after the examiner's first letter the applicant cancels some claims, presents an argument, and asks an explanation upon cer- tain points. Held, that the examiner should not in his second action finally reject the claims. Ex parte Greth, C. D. 190."., 116 O. G. 2.'-.32. 96. An applicant should have an opportunity to amend after he understands or has had an opportunity to understand thoroughly the ex- aminer's position. Id. 97. Where following a rejection the appli- cant merely requested that the pertinency of the references be pointed out as a guide to his further action, Held, that a final rejection following such action was not based upon a request for reconsideration or upon any action 144 EXAMINATION OF APPLICATION, V, (a). by the applicant which would justify recon- •sideration and that the final rejection was un- warranted. Ex parte Wainwright, C. D. 1906, l^-> O. G. 2047. 98. Where appellant's letter stated that the prior office action was not understood, request- ed that the pertinency of the references be pointed out as a guide to applicant in the further prosecution of the case, and express- ly stated that it was not intended as a request for reconsideration, Held, that the action of the examiner in treating this letter as calling for a reconsideration and in finally rejecting the claims was unwarranted. Ex parte Fow- ler, Jr., C. D. 1907, 127 O. G. 1578. 99. Where in the office action prior to the final rejection a claim was criticised, but its rejection was inadvertently omitted. Held. that the final rejection was premature. Id. 100. In response to an action by an appli- cant canceling two rejected claims and sub- stituting claims therefor, accompanied by an argument setting forth how the substitute claims distinguished from the references, the examiner rejected the substitute claims, stat- ing that "there is no invention in applicant's device over the art cited." Thereupon the ap- plicant asked for an explanation of the grounds of rejection, distinctly stating that he was not asking for a reconsideration, in re- sponse to which the examiner explained the references and finally rejected the claims, Held, that the final rejection was premature. While the examiner contended that the sub- stitute claims were substantially the same as previous claims with respect to which the references had been explained, the examiner did not finally reject the claims on the first action nor did he refuse the request for ex- planation on the ground that the pertinency of the references had been previously explain- ed. Ex parte Walker, C. D. 1907, 129 O. G. 481. 101. Where after a rejection in which rea- sons are given why references cited anticipate the claims applicant amends the claims and files an argument that one of the patents cited belongs to a different art and requests that the examiner explain why the patent cited was analogous to the invention in issue, Held, that a final rejection was premature and that the examiner should have given the explanation requested. Ex parte Burge. C. D. 1907, 129 O. G. 1611. 102. Where in answer to a rejection by the examiner giving a fair statement of his rea- sons for rejection the applicant responds by fully stating what he considered to be dis- closed in the references, what he considered to be covered by the rejected claims, and why such claims were not anticipated and requests a further statement from the examiner as to the bearing of the references upon the broad- est claim presented, the examiner should not finally reject merely upon the reasons form- erly stated, but he should make a further statement of the reasons of rejection in the light of applicant's argument. Ex parte Herbst, C. D. 1907, llil O. G. 361. 103. Where an examiner finds it necessary to give reasons explaining the applicability of a reference, a final rejection should not be entered in the letter in which these reasons are stated for the first time. Ex parte Jack- son, C. D. 1908. i:!2 O. G. ].';24. 104. Where in a letter finally rejecting the claims of an application the examiner states that his previous action was a request for in- formation and not a rejection and it appears that the claims as amended were not twice rejected by the examiner on the same ground. Held, that the final rejection was premature. Ex parte Stephens, C. D. 1910, 1J4 O. G. 1412. 105. In his first action the examiner cited certain references as illustrating the art. Ap- plicant thereupon canceled the claims and pre- sented one new claim in lieu thereof, pointing out wherein it was supposed to avoid the ref- erences. Held, that a final rejection of this claim was premature. Ex parte Pledger, Jr., and Campbell. C. D. 1910, 1,57 O. G. 486. 108. In the first office action the drawing and specification were criticized in certain respects and the claims rejected. Within a month thereafter applicant filed an amendment directing the correction of the formal errors and stated that he desired to submit within a reasonable time an argument with respect to the references and further amendment. The examiner finally rejected the claims and re- fused to admit an amendment filed thereafter. Held, that the final rejection was premature and that the proper response to applicant's first action, if any was necessary, would have been a letter stating that it was incomplete. Ex parte Barber, C. D. 1911, 168 O. G. 249. V. Explanation of Action. (a) Sufficient and In General. 107. The examiner should point out fully the reasons for the rejection of claims. Ex parte Wcllman, C. D. 1898, 86 O. G. 1986. EXAMINATION OF APPLICATION, V, (b). 143 108. Some discretion must be left with the examiners in the statement of reasons and authorities in support of their actions, since the extent and scope of the explanation neces- sary depends upon the circumstances of the particular case. Ex parte Schweitzer, C. D. 1901, 97 O. G. 1371. 109. Where the examiner explains his posi- tion in regard to the invention and references fully and the applicant presents new claims without pointing out how they avoid the ref- erences and the examiner rejects them, refer- ring to his previous explanation. Held, that the examiner's action has been regular and proper and that a further explanation by him was not called for. Ex parte Sandman, C. D. 1901. 97 O. G. 2532. 110. The examiner and the applicant should take some pains to present the reasons for their views to each other, so that an issue be- tween them calling for review by the commis- sioner will be reached only after careful con- sideration of the questions involved. Ex parte Tyson, C. D. 1902, 101 O. G. 310.5. 111. The action of the applicant in request- ing that the examiner make his action final and the action of the examiner in making it final without any explanation of reasons con- demned as not a compliance with the terms of the rules or with the principles upon which they are based. Id. 112. Where the applicant makes no attempt whatever to point out the supposed errors in the examiner's action, it is not incumbent upon the examiner to point out wherein he has failed. Ex parte Lewis, C. D. 1904, 108 O. G. od9. 113. Rule 66 merely requires that an ex- aminer in citing references shall, if the perti- nence of the same is not obvious, clearly ex- plain the grounds upon which he has rejected the claims. It is necessary only that the ex- aminer's position be made plain on the record, so that the applicant may intelligently amend his claim or present his case on appeal. The rule does not require that the examiner shall "meet" every argument advanced by an appli- cant. Ex parte Stier, C. D. 1904, 110 O. G. 599. 114. Held, that Rule 66, which provides that the pertinence of a reference, if not obvious, must be clearly explained, does not require that the examiner should point out all the elements therein of the applicant's claim. Ex parte Fletcher, C. D. 1905, 114 O. G. 545. 115. Where the examiner has clearly and 10 explicitly given his reasons of rejection, yet admits that the disclosure of the references is not in all respects identical with the appli- cant's disclosure, on which the rejected claim is based, Held, that the provisions of Rule 06 have been complied with, and the issue be- tween the examiner and the applicant should be determined on appeal. Id. 116. Where the applicant requests that the examiner be directed "to expound the law" and give "an exact definition" of invention as it applies to this case. Held, that the exam- iner should not be required to instruct the applicant upon the general principles or defini- tions of the patent law and that the specific application of the law to this case seems to have been sufficiently set forth by the exam- iner. Ex parte Wainwright, C. D. 1906, 125 O. G. 2047. 117. The statement by the examiner that the first three claims were clearly met in either one of three references cited and that the last three claims were met in the same in view of cither of the last two references cited. Held, in view of the character of the inven- tion to be a sufficient compliance with appli- cant's request for a specific application of the references. Ex parte Samstag, C. D. 1908, 133 O. G. 1188. 118. After the examiner has properly ap- plied the references the applicant is not en- titled to further reconsideration unless he points out why the references did not meet the claims. Id. 119. A request that a rejection be made final was properly refused by the examiner when the applicant made no attempt to show that there was any error in that rejection. Ex parte Reiss, C. D. 1908, 137 O. G. 1712. 120. Where the reference cited by the ex- aminer showed only the invention of the ap- plication and its pertinency was obvious. Held, that comment on the reference by the ex- aminer was unnecessary. Ex parte Floyd, C. D. 1910, 152 O. G. 229. 121. "It is well settled by the decisions con- struing Rule 65 that when the pertinency of the references is obvious, as where the dis- closure is simple or includes only the inven- tion of the applicant, a detailed application of the references is unnecessary." E.x parte In- man, C. D. 1910, 160 O. G. 1038. (b) Insufficient. 122. Where the examiner rejected claims on references showing different features of the 146 EXAMINATION OF APPLICATION, V, (b). matter claimed and gave little explanation of his reasons for rejection and it was apparent from the correspondence that the applicant did not understand the examiner's position in rejecting the claim, Held, that the examiner's action was not as full as should have been. (Ex parte Barnes, C. D. 1897, 76, 80 O. G. 2038, cited.) Ex parte Perkins, C. D. 1899, 88 O. G. 945. 123. Where an examiner rejected claims upon an "old way" of doing a thing and upon request of the applicant refused to make a particular citation of this old way or to fur- nish the affidavit required by Rule 66, Held, that this rule is explicit in its requirement and that there is no excuse for failure on the part of an examiner to be guided by the Rules of Practice, particularly where the language admits of but one construction, as in this case. Ex parte Garms, C. D. 1900, 93 O. G. 190. 124. Held, further, that it would have been much easier for the examiner to comply with the rule instead of assuming to arbitrarily override it and force applicant to repeatedly request compliance with it, and finally to take a petition, consuming the examiner's time in answering and obliging the commissioner to review the case and write an opinion for the guidance of the examiner in construing a rule that is as plain as A B C. Id. 125. Where the applicant repeatedly request- ed the examiner to apply the references to the claims and pointed out particularly wherein she regarded the claims as patentably dis- tinguishing her invention from the references, but the examiner merely rejected them "on the state of the art of record," Held, that he has not given such full examination of the position as the present practice requires. Ex parte Kroeninger, C. D. 1900, 91 O. G. 2002. 126. The mere fact that the applicant in re- sponse to rejections several times amended the claims does not show that she under- stood the examiner's position or relieve the examiner from the necessity of explaining the references, particularly where the applicant repeatedly requested an explanation. Id. 127. Where in answer to a petition the ex- aminer refers to certain oral explanations of the references said to have been given to the applicant's attorney, Held, that the action on the petition cannot be based upon the assump- tion that such oral explanations were full and complete. They should have, under Rule 1, been made a part of the written record in the case. Id. 128. Where after a rejection the applicant points out the features which he contends are not disclosed in the references and asks for a further explanation of the examiner's posi- tion. Held, that it is the duty of the examiner to assist the honest efforts of the applicant to understand his position. Ex parte Miller, C. D. 1903, 104 O. G. 309. 129. Where in view of the applicant's argu- ment the examiner has allowed some of the rejected claims and has cited a new reference against others. Held, that he cannot consist- ently urge that the pertinency of the refer- ences is so obvious as to need no explanation. Id. 130. Where an applicant is attempting in good faith to further the prosecution of his application, Held, that the office should give him all reasonable assistance. Ex parte Starr, C. D. 1903, 106 O. G. 263. 131. Where in amending the claims the ap- plicant points out certain specific features which he does not find in the patents cited as references and asks the examiner to point out where those features are to be found, Held, that the examiner should comply with the re- quest. Id. 132. Where several claims are rejected, it should appear in the examiner's letter whether all the references are cited against each claim or whether they are cited distributivcly against the various claims. In the latter event it should be made clear in connection with each claim which references are relied upon in the rejection thereof. Ex parte Lincoln, C. D. 1907, 127 O. G. 3216. 133. Where references cited are to be taken jointly, the theory upon which they are com- bined must be pointed out. The examiner need not, however, ordinarily apply the ref- erences to the claim element for element, the specification and drawings of the references being ordinarily sufficient to indicate their ap- plication to the claims. Id. 134. If any doubt exists as to the interpre- tation placed by the examiner upon a feature of the drawing or portion of the specifica- tion, he will furnish an explanation in re- sponse to a specific request making clear the uncertainty existing in the mind of the appli- cant. Id. 135. In many cases a mere statement that the claims are rejected on specified references is sufficient, in view of the character of the FEES, I. 147 invention ; but in all cases where references are grouped together it should be clearly- stated whether the claims are anticipated by each of the references separately or in what manner the references are to be combined. Ex parte Harris, C. D. 1909, 140 O. G. 736. 136. Where after a rejection, in view of several references, the applicant requests that the examiner explain and apply the same and it appears that while the references are sim- ple the manner in which they are to be taken together as showing that the claims are not patentable is not so obvious and that there has been no undue delay in the prosecution of the case, Held, that the examiner should have complied with applicant's request and not finally rejected the claims. Ex parte An- drews, C. D. 1911, 173 O. G. 1089. VI. Persuasiveness oe Previous Action. 137. Although the necessity of refusing to one applicant what has been allowed to an- other is always to be regretted, the question as to whether the claims in one case are al- lowable over the prior state of the art must be decided without regard to the fact that similar claims have been allowed and patent- ed to another on a copending application. From a rejection in such case appeal lies to the examiners-in-chief. Ex parte Russell, C. D. 1898, 84 O. G. 2021. 138. No statement in an office letter that certain claims are novel can be held to be binding upon this office to the extent that the claims must of necessity be subsequently al- lowed notwithstanding what art might be found to exist or notwithstanding the opinion of any tribunal which might subsequently be called upon to pass upon the patentability of the claims. Ex parte Fowler, C. D. 1902, 101 O. G. 2822. 139. While a favorable action by an ex- aminer should be very persuasive, it is not binding on his successor when called upon to pass upon a claim previously acted upon. Ex parte Fowler, C. D. 1902, 101 O. G. IS.'iS. 140. Until the patent is actually issued it is always competent for the patent office, with due regard to the rules of law, to vacate its favorable adjudication upon the question of patentability for good and sufficient cause. ♦Oliver V. Felbel, C. D. 1902, ino O. G. 2:!84. 141. Where one examiner after due consid- eration of the claims of an application has rendered a favorable decision as to the pat- entability of such claims, his action should not ordinarily be reversed by a successor un- less the rejection made by the latter is based upon different references or reasons from those which the record shows were advanced by his predecessor. (Ex parte Starr, C. D. 1S79, 91, 15 O. G. 10.53; ex parte Nealon, C. D. 1887, 174, 81 O. G. 1787; ex parte Fowler, C. D. 1902, 420, 101 O. G. 1833.) Ex parte Hay, C. D. 7909, 139 O. G. 197. Vn. Preferred Application. 142. ,'\pplications must be examined in reg- ular order, and the office cannot give one case precedence over others because of the appli- cant's business arrangements which are de- pendent upon a speedy allowance of the pat- ent. Ex parte Bischoff, C. D. 1902, 100 O. G. 2603. 143. Applications will not be given prece- dence over other cases in the order of exam- ination merely because the applicant asks for an interference with a patent, but only in those cases where it appears that there is a proper foundation for the request. Ex parte Lux, C. D. 1905, 116 O. G. 2011. FEES. I. Payment. II. Refundment. HI. Transfer of. IV. Final. I. Payment. 1. An application was allowed December 16, 1895, twenty dollars was paid to the assistant treasurer of the United States at Philadelphia, and a certificate of deposit obtained June 15, 1806, which was not filed in the patent office until June 18, 1898, with a request that the certificate be applied to the said application and a patent issued thereon. Held, that as the certificate was not promptly forwarded to the office, as required by the rules, it should not be applied to the application, but returned to applicant. Ex parte Stevenson, C. D. 1808, 84 O. G. 147. 2. The requirement of the statute is clear and unmistakable that a fee of $20 must be paid upon every appeal to the commissioner from the examiners-in-chief and makes no distinction between the first and other appeals in the same case. (Ex parte Arkell, 45 MS. 148 FEES, II. Dec, 25.) Ex parte .A.rms, C. D. 1898, 84 O. G. 1142. 3. No fee is required in case of a second appeal to the examiners-in-chief in the same case, the fee for the first appeal having been paid. Id. 4. When a notice of allowance was mailed on September 23, 1899, and a check for the final fee on the application was deposited in the mails at Boston on March 22, 1900, and was received at the Washington city post- office at twelve o'clock noon on March 23, but was not delivered to or received by the patent office until the morning of March 24, Held, that the fee was not received within the six months prescribed by law and that the patent was properly withheld. fEx parte Can- non, C. D. 1901, 94 O. G. 216r>. 5. The mailing of a letter to the commis- sioner of patents containing a check in satis- faction of the final fee is not a payment there- of, since the postal authorities are not the agents of the government for the collection of patent office fees. The agents for this pur- pose are designated in the rules. *Id. 6. It is incumbent upon a party to select an agency for the transmission of the final fee which will deliver it within the time allowed therefor by the law, and he is not entitled to have the arrangements for the delivery of mail to the patent office so adjusted that there will be a delivery at the close of the day. *Id. 7. Where a party has a single application involved in two companion interferences and both are dissolved by the examiner on the ground that the claims are not patentable, Held, that the party may appeal in both cases upon payment of a single appeal fee. Miller V. Miller v. Bacon v. Mann v. Torrance, C. D. 1905, 115 O. G. 1063. 8. The payment of an appeal fee in connec- tion with an appeal to the examiners-in-chief from the rejection of claims by the primary examiner does not obviate the necessity for the payment of a second fee in case an appeal is taken to the e.xaminers-in-chicf from the linding of priority by the examiner of inter- ferences. Cheney v. Venn, C. D. 1906, 125 O. G. 1703. II. Rei'undmBnt. 9. Where an applicant tiled an incomplete application and first fee on December 31, 1897, and on January 3, 1898, he completed the application, with the understanding that if it were possible it would be given the earlier date, and upon consideration it was decided that the application could not be given the earlier date, Held, that the first fee could not be refunded, as it was not paid by actual mis- take, but in paying it and completing his ap- plication the applicant took his chances as to the earlier date being given to the application, and, further, the application has had a full examination on the merits. E.\ parte Hall- berg, C. D. 1898, 83 O. G. 1208. 10. The mistake of an applicant as to the rules in reference to incomplete applications is not such mistake as will justify the return of the fee paid thereon or its transfer to an- other case. Ex parte Arakelion, C. D. 1898, 85 O. G. 1077. U. Where an examiner in his answer to an appeal stated that the alleged invention, which was rejected on a reference, also involved only what was understood to be the customary practice and applicant did not insist upon the examiner furnishing him with a specific ref- erence or affidavit to support the statement as to common use of the invention, but was willing to permit the examiners-in-chief to pass upon the patentability of the claim with- out such specific reference or affidavit, and after the decision of the examiners-in-chief the examiner had the case reopened and then procured an affidavit upon which he rejected the claim. Held, that the appeal fee should not be refunded. Ex parte Van Ausdal, C. D. 1900, 91 O. G. 1617. 12. Where a caveat is filed which fails to clearly disclose the invention. Held, that the fee will not be returned as paid by mistake, .'^n error in judgment does not warrant the return of a fee. Ex parte Landenberger, C. D. 1902, 99 O. G. 1866. 13. Where an application is filed contain- ing all of the necessary parts and it is such as to require and receive a complete examina- tion upon the merits, Held, the fee cannot be returned on the ground that the application is incomplete. Ex parte Lawson, C. D. 1902, 101 O. G. 1833. 14. Where an examiner rejects claims pre- sented by amendment on the ground that they involve new matter and at the same time says they are patentably novel, but must be pre- sented in another application, and where the applicant then files a new application contain- ing them and they are rejected by a different examiner. Held, that a petition asking that the claims be allowed or the filing fee returned FEES, II. 149 will be denied. Ex parte Fowler, C. D. 1902, 101 O. G. 1833. 15. Where an application fee is paid into this office in accordance with the law and the rules and the application has been examined, Held, that the fee will not be returned. Id. 16. The mistake which will warrant a re- turn of money is not a mistake of judgment in supposing that the application filed will be valid and allowable, but a mistake in making the payment itself. Kx parte Olsen, C. D. lit()2, 101 O. G. 2079. 17. The statement by the office in one case that certain claims are novel is no reason for returning the fee paid in a subsequent appli- cation filed covering them merely because they are rejected in the latter case. This is not such a mistake as will warrant the return of the fee. Ex parte Fowler, C. D. 1902, 101 O. G. 2822. 18. Where an applicant files an application for a patent upon certain claims after one e.x- aminer has indicated that they are, in his opinion, patentable, Held, that he assumes all chances as to the allowance of the claims, and he cannot be held to have filed the applica- tion through mistake because the claims are subsequently rejected. Ex parte Fowler, C. D. 1902, 101 O. G. 1833. 19. When an appeal to the examiners-in- chief is filed in spite of the provision of Rule 124 that from a decision of the primary examiner affirming an applicant's right to make the claim no appeal can be taken and said appeal is dismissed by the examiners-in- chief. Held, that the fee paid on filing the appeal is not paid by mistake and cannot be returned. Ex parte Brill and .A.dams, C. D. 1902, 98 O. G. 2.587. 20. The allegation that the practice of the office in granting design patents is necessarily changed in view of a decision by the court as to what is proper subject-matter for such a patent does not warrant the return of a fee paid in an application for such a patent. Ex parte Husky, C. D. 1902, 98 O. G. 2588. 21. The law requires that the fee for a de- sign patent shall be paid upon filing of the ap- plication as a part of the same. Id. 22. It cannot be determined before exam- ination whether or not an application for a design patent covers patentable subject-matter. The fee paid on filing such an application is paid as a prerequisite for such examination, and it is not paid by mistake within the mean- ing of the statute relating to the return of money (sec. 4930, Rev. Stats.) if such appli- cation proves upon examination to be unpat- entable. Ex parte Smith (C. D. 189'i, 99, 71 O. G. 297) commented on and explained. Id. 23. Where a party asks for the return of the fee paid on a divisional application filed upon the requirement of the examiner, it being alleged that the examiner has changed his mind and regards the invention as indi- visible. Held, that the request will be denied, since the mistake, if any, was one of judg- ment and since the petitioner was not bound to accept the examiner's judgment. Ex parte Thompson, C. D. 1903, 107 O. G. 270. 24. The allegation that the office mislead the applicant as to the scope and meaning of his claim furnishes no ground for granting a reissue without charge of office fees, since, if true, it was merely a mistake in judgment in which the applicant was not required to acquiesce. E.x parte Graves, C. D. 1903, 103 O. G. 227. 25. Where after filing an appeal to the ex- aminers-in-chief the applicant concludes to withdraw the appeal and ask for permission to amend the rejected claims. Held, that the appeal fee will not be returned. Ex parte Zehrbach, C. D. 1904, 108 O. G. 290. 26. Where a party after securing registra- tion of a trade-mark files a second application for the registration of the same thing and the office refuses registration. Held, that he is not entitled to the return of the fee in the second case on the ground of mistake. Ex parte Colchester, C. D. 1904, 113 O. G. 8.52. 27. The mistake which will warrant the re- turn of the fee in a trade-mark application is not a mistake in concluding to file the ap- plication, but only a mistake in paying too much or when not required by law. Id. 28. Where party appealed from adverse de- cision upon priority and before hearing of the appeal moved that ease be reopened for con- sideration of new evidence and the case was reopened and a new decision rendered, mak- ing further prosecution of the appeal impos- sible. Held, that the appeal fee was not paid by mistake or through any neglect or misin- formation on the part of the office and that the petitioner was not entitled to the return of the same. Ex parte Townsend, C. D. 190.5, 118 O. G. 1368. 29. Where notice of opposition was filed and an interference was declared between the 150 FEES. II. application of the opposer and the opposed ap- plication, Held, that the opposition fee would not be returned. Bomhard v. United States Graphite Company, C. D. 190C, 124 O. G. 627. 30. Where in the decision of the commis- sioner a new reference was cited to overcome a defect in point of date in one of the refer- ences previously cited and the applicant con- tends that he would not have prosecuted the appeal if he had had knowledge of the new reference, Held, that it was within the appli- cant's power as fully as it was in that of the office to discover the defect in the reference cited and that the case is not one justifying the repayment of the appeal fees. Ex parte Hofmann, C. D. 1906, 125 O. G. 991. 31. Where the applicant accepted the deci- sion of the examiner without appeal and filed a new application, Held, he is not entitled to the return of the filing fee on said application, notwithstanding the decision in ex parte Griserin-Werke Paul Camphausen G. M. B. II. (ante, 12, 120 O. G. 327.) Id. 32. The fact that applicant at the time he applied for registration of a trade-mark be- lieved that such a mark could be registered before being actually used forms no ground for the return of the fee. Ex parte Inter- State Milling Company, C. D. 1910, 159 O. G. 993. 33. C. moved to dissolve the interference on the ground that the issue is not patentable, and K. moved to dissolve on the ground that C. had no right to make the claim. The pri- mary examiner granted both motions, and his decisions were affirmed by the examiners-in- chief. C. appealed to the commissioner from the decision holding that he had no right to make the claim, which was dismissed as rais- ing a moot question, as K. did not appeal from the decision holding the issue unpatent- able. Held, that C.'s appeal fee was not paid by mistake and that he was not entitled to have it returned. Curtis v. Kleinert, C. D. 1911, 162 O. G. 538. 34. Where the attorney of record, who had received from his foreign associate a petition, oath, specification, and claims, filed the same as a new application and it thereafter appear- ed that these papers were designed by said foreign associate as an amendment to the ap- plication already on file. Held, that no such mistake had been made as would justify the return of the application fee. Ex parte Wer- thaler, C. D. 1911, 173 O. G. 864. III. Transfer of. 35. Where an applicant files a complete sole application. Held, that the fee constituting a part of said application cannot be subsequent- ly transferred to a new application which the applicant intends to file as a joint inventor with another person. Ex parte Olsen, C. D. 1902, 101 O. G. 2079. 36. The transfer of a fee from one appli- cation to another can be considered in no other way than as a return of the fee to the appli- cant and a payment by him in the other case. Id. 37. A fee cannot be transferred from one case to another except by considering it as returned and refiled, and it cannot be returned except where paid by mistake, such as in ex- cess or when not required by law. Ex parte Priest, C. D. 1903, 103 O. G. 428. 38. Where payment is made to a sub-treas- urer by one party on account of patent fees and a certificate of deposit is received, Held, that the certificate will not be received as pay- ment by a different party in a different appli- cation except upon the consent of the per- son in whose name it was issued. Held, further, that it is effective after receipt by the office as of the date of the consent to its use in the case and not as of the date of the payment to the sub-treasurer. Ex parte Avery, C. D. 1904, 109 O. G. 806. 39. Where two persons file an incomplete joint application and one of them thereafter sends the filing fee therefor to the office, but such a fee is not applied, as the case has be- come abandoned, and the person sending the fee thereupon files a sole application, lacking filing fee, for the same invention, and the aforesaid fee is applied to the latter applica- tion, and this application is prosecuted by the applicant. Held, that the fee cannot be trans- ferred to a later joint application for the same invention filed by the parties or their repre- sentatives. Ex parte Harris, C. D. 1905, 117 O. G. 1164. 40. Where an incomplete application be- comes abandoned and thereafter a sole appli- cation is filed complete by one of the parties of the previous application, and after that a joint application without fee is filed by the original parties. Held, upon the question of transfer of fee that these applications repre- sent three distinct proceedings in spite of the fact that all are drawn to the same inven- FEES, IV. 151 tion and that each case refers to the preced- ing one. Ex parte Harris, C. D. 1905, 118 O. G. 1683. 41. Where a filing fee has been properly applied by the office to a sole application, this fee has been withdrawn therefrom and ap- plied to a joint application. Id. 42. Where fee is sent to the office by a party to be applied as filing fee to joint ap- plication of said party and another and the office refuses to apply fee because the appli- cation has been abandoned, and thereafter the party files sole application without fee for the same invention. Held, that the application of the fee to the sole application by the office was proper. Id. IV. Final. 43. Where a final fee is paid by depositing it with an assistant treasurer, the certificate of such deposit should be mailed to the office within the six months allowed for the pay- ment of such fee. Ex parte Baldwin, C. D. 1903, 106 O. G. 1780. 44. Where the six months for the payment of the final fee expired on September 10 and on that date it was deposited with the assistant treasurer, but the certificate of deposit was not mailed until September 11, Held, this was not a payment within six months, since Rule 206 requires that the certificate must be mailed to the office within the six months. Id. 45. Where the final fee in a case is received one day too late it cannot be entered as paid the day before merely because it was sent by telegraph on that date. The telegraph com- pany is the agent of the applicant, not of this office. Ex parte Bolly, C. D. 1903, 104 O. G. 2442. 46. Held, that as section 488.'j, Revised Stat- utes, gives the office no authority to extend the six months within which a final fee must be paid or to accept such fee after the ex- piration thereof the excuse which may be given for the delay is of no consequence. Ex parte Roussel, C. D. 1904, 111 O. G. 2223. 47. The only remedy open to an applicant when the time expires without payment of the final fee is to renew the case under the pro- vision of section 4897 of the Revised Statutes. Id. 48. The allegation that notice of allowance was not received does not warrant the accept- ance of the final fee more than six months after the date when the office records indicate that the notice was sent. Ex parte Pieper, C. D. 1905, 115 O. G. 1063. 49. A final fee which was inclosed in a let- ter registered at a substation of the post- office of Washington, D. C, at about half- past ten o'clock of the last day for payment, but which was not delivered to the office until the second day thereafter because of an in- tervening holiday, will not be accepted and applied, as it was filed outside of the period fixed by law. Ex parte Dempsey, C. D. 1908, 132 O. G. 1072. 50. The postal authorities are the agents of the sender and not of the patent office, and a delay by them must be charged to the princi- pal. Id. 51. A final fee which is filed too late cannot be received on the ground that if the post- office instead of an agent of the patent office had delivered the same or if the agent of the patent office had called at the post-office late in the day instead of the middle thereof the fee would have reached the patent office in time. The patent office is required to send for its mail, and it cannot control this matter, and experience has shown that it is necessary to the security of those having business with the office and is most convenient to the office and the public to collect the registered mail shortly after midday, and no good reason is seen for departing from the practice. Id. 52. A final fee which was inclosed in a let- ter registered at a substation of the post-office of Washington, D. C, on the last day al- lowed for payment thereof and which reached the city post-office at about 2.30 p. m. of said day, but was not delivered to the patent of- fice until the second day thereafter because of an intervening holiday, should not be ac- cepted and applied, as it was filed outside of the period fixed by law. fin re Dempsey, C. D. 1908, 132 O. G. 1074. 53. The contention that a final fee which was placed in a receptacle set apart for the patent office by the city post-office on the last day allowed for payment is constructively a delivery to the patent office has no basis in the absence of proof that the fee was so set apart, tid. 54. The records of the city post-office as to the time when a registered package was placed in a receptacle set apart for the use of the patent office will be accepted as conclu- sive. tId. isie FOREIGN PATENTS, I. FOREIGN PATENTS. I. As References. II. As Bar to Applicants United States Patent. III. Proving. IV. Effect of Expiration. V. Benefit of Date. I. .^s References. 1. An affidavit tending to show that an in- vention shown but not claimed in a German patent was derived from the applicant and that it is in fact nothing more than a printed publication of applicant's invention and not the invention of another is competent evi- dence for the consideration of a primary ex- aminer and should be received and considered by him. (Ex parte Payen, 43 MS. Dec, 73, cited.) Ex parte Grosselin, C. D. 1898, 84 O. G. 1284. 8. An invention patented in the United States is not to be defeated by a prior for- eign patent unless its description or drawings contain or exhibit a substantial representation of the patented invention in such full, clear, and exact terms as to enable any person skilled in the art or science to which it appertains, without the necessity of making experiments, to practice the invention. (Seymour v. Os- borne, 11 Wall. 516, 555; Cahill v. Brown, C. D. 1879, 432, 15 O. G. 69T, 3 B. & A. 580, 587.) d Hanifen v. E. H. Godshalk Co. et al., C. D. 1898, 82 O. G. 895. 3. Prophetical suggestions in a foreign pat- ent of what can be done, when no one has ever tested by actual and hard experience and under the stress of competition the truth of the suggestions or the practical difficulties in the way of their accomplishment or even whether the suggestions are feasible, are not to be accepted as showing that a subsequent patent which has already been sustained by the courts as a meritorious one is without actual invention. d Westinghouse Airbrake Co. v. Great Northern Railway Co. et al., C. D. 1898, 85 O. G. 455. 4. Where the primary examiner cited a for- eign patent as being a pertinent reference, as it appeared upon its face that it was issued at a date prior to the filing date of the appli- cation under consideration, and it was con- tended by applicant that the foreign patent was not granted at the date shown on its face, Held, that when the foreign patent was cited the burden was shifted to applicant to prove that the said patent was not entitled to a date which made it effective as an antici- patory publication. Hummel v. Tingley, C. D. 1900, 90 O. G. 959. 5. Held, further, that the question is analo- gous to that raised by the citation of a prior patent to negative patentability of an inven- tion claimed by an applicant. In that case the burden is upon the applicant to show such prior patent does not disclose his claimed in- vention. (Durham v. Seymour, Commission- er of Patents, C. D. 1895, 307, 71 O. G. ooi.) Id. 6. .\ description of an invention in a foreign publication in order to defeat a patent in this country must be so cl^ar as to enable persons "skilled in the art" to make the invention. Pupin v. Hutin and Leblanc v. Stone, C. D. 1902, 100 O. G. 931. 7. Where the primary examiner cited a for- eign patent as a reference, it appearing upon its face that it was published at a date more than two years prior to the filing date of the application under consideration, and it was contended by the applicant that the foreign patent was not published at the date shown on its face, but at a later date, Held, that when the foreign patent was cited the burden was shifted to the applicant to prove that the pat- ent was not entitled to a date which made it a bar to the grant of the patent on the appli- cation under consideration. Ex parte Beck, C. D. 1903, 105 O. G. 1781. 8. When a reference is cited by an exam- iner against any claims presented by an ap- plicant, the burden is thereupon shifted to the applicant to convince the examiner that he is wrong. If the examiner still adheres to his opinion and twice rejects the claim for the same reasons, an appeal lies to the examiners- in-chief from such rejection. The question whether or not the reference cited constitutes a bar to the grant of the applicant's claim will not be decided on petition, as this is a matter which relates to the merits of the case. Id. 9. Evidence considered and Held, that the testimony "taken in connection with the ap- plication itself, is sufficient, in the absence of any evidence to the contrary, to justify the presumption that under the German law it is permissible to file an application in the name of an assignee." *National Metallurgic Com- pany, assignee of Tom Cobb King v. Whit- man et al., Whitman v. Hearne et al., C. D. 1910, 156 O. G. 1068. FOREIGN PATENTS, II. 153 II. As Bar to .A.pplicants United States Patent. 10. The date of a British application within the meaning of section 4887, Revised Statutes, is the date when the provisional specification is filed in the British patent office. Ex parte Smith, C. D. 1898, 85 O. G. 2U91. 11. Since the British act provides that every patent shall be dated and sealed as of the day of the application, the British authorities have, by giving the patent in this case the date of August 28, 18U6, when the provisional was filed, determined that to be the date of the application. Id. 12. This office should accept the construc- tion of the British patent officia;ls as to when the British application was filed, unless it can be shown that to do so would be against the spirit and intent of the statutes of this coun- try, since this is the rule of construction adopted by the courts. (Cathcart v. Robin- son, 5 Pet. 264.) Id. 13. By following the rule of our courts in regard to the weight to be given to foreign authorities on the interpretation of their laws it must result that the date of filing the British application on which the British pat- ent of appellant was granted is the date given to it by the British authorities, which is Aug- ust 28, 1896. Id. 14. A British provisional specification is not analogous to a petition in a United States ap- plication, since such petition gives applicant no protection, no date for any purpose, ex- cept a date from which an applicant must complete his application. When completed, however, the application is not given the date of the petition. Id. 15. There is no analogy between a British provisional specification and an incomplete United States application, since such incom- plete application gives no protection and does not furnish a date from which priority of in- vention is determined, while the British pro- visional specification gives the applicant the date of priority of that date, and he is saved from the consequences arising from any pub- lication or use after the filing thereof and prior to the sealing of the patent Id. 16. The complete specification is required by the British law to describe substantially the same invention as the provisional specifica- tion and is nothing more than a supplement to it, but conveying additional information, which may have been acquired during the life of the provisional specification, as to the man- ner in which the invention is to be performed. Id. 17. If the complete specification, after being accepted by the British authorities, describes and claims any invention different from that described in the provisional specification, the patentee has never applied for a patent or re- ceived provisional protection in respect to that different invention, and the patent would be void. Id. 18. The provisional specification is the foundation on which the patent is granted, and when the British patent is granted on an examination by the British authorities the pre- sumption is that the British patent is valid and that there is such similarity and connection between the provisional specification and the complete specification as would warrant the grant, and this office should accept their rul- ing, except in a case where it is clearly shown that their holding was wrong, and this has not even been intimated here. Id. 19. The notice of acceptance of the com- plete British application corresponds to the United States notice of allowance and not to the filing of the complete United States ap- plication. Id. 20. The words "application" and "patent" in section 8 of the act of March 3, 1897, mean United States applications and patents. Id. 21. When it is sought to invalidate a United States patent under Revised Statutes, sections 488o and 4920, by an alleged prior foreign patent, it has been repeatedly held, that such alleged foreign patent must be one that is open and accessible to the public — one that is a public and not a secret one. Roschach v. Walker, C. D. 1899, 88 O. G. 1333. 22. Where an application is filed in this country on April 23, 1898, for an invention patented in England and it appears that the ^ .^' application and provisional specification were t i filed in the British patent office on May 1, IV^ 1897, the complete specification was filed Feb- ruary 28, 1898, and was accepted June 1, 1898, and the patent was sealed and delivered .Aug- ust 10, 1898, Held, that the application here cannot be allowed in view of section 4887, Re- vised Statutes. *In re Swinbourne, C. D. 19U2, 99 O. G. 1625. 23. The time of filing the application in the British patent office accompanied only by the provisional specification must be taken as the date of the application for the foreign patent within the meaning of section 4887, Revised 154 FOREIGN PATENTS, III. Statutes. (Ex parte Smith, C. D. 1898, 276, 85 O. G. 2091, cited with approval.) *Id. 24. Independent of the form or function of either specification that may be filed in con- nection with it the instrument entitled the ap- plication throughout the British patent law re- mains the initiatory step in the proceeding to obtain a patent under that law and must there- fore fix the date from which the limitation of section 4887, Revised Statutes, begins to run. *Id. 25. Held, that the original paper called the "application" is not a mere introduction to the provisional specification and that the provi- sional specification is not the equivalent of a caveat under the United States law. *Id. 26. The act of March 3, 1903, amending section 4887, Revised Statutes, extending the time for filing applications after applications abroad from seven to twelve months applies to all applications pending whether filed be- fore or after the passage of the act Ex parte Klingelfuss, C. D. 1903, 104 O. G. 2149. 27. The part of the act of March 3, 1903, extending the time for filing applications from seven to twelve months has reference to the grant of patents after the passage of the act and makes no e.xception as to applications filed before the passage of the act. Id. 28. By extending the time from seven to twelve months the statutes simply removed a disability created by a former statute and is remedial in its nature. It is therefore to be liberally construed. Id. 29. Section 4887, Revised Statutes, as amended applies to cases pending at the time of the amendment, but not to cases abandoned before that date. Ex parte Casalonga, C. D. 1903, 105 O. G. 261. 30. Where the applicant filed an application in a foreign country on May 7, 1906, and a patent was granted thereon, an application filed in this country after May 7, 1907, can not be received. Applications which the law re- quires to be filed in this office within a cer- tain time cannot be held to be so filed by rea- son of the fact that they are in the hands of the postal authorities. Ex parte Ravelli, C. D. 1907, 130 O. G. 982. 31. Section 4894 of the Revised Statutes only applies to applications which already have a status in this office and is not appli- cable to cases in which an application is filed in this office more than one year from the date upon which the applicant filed an appli- cation in a foreign country and upon which he has received a patent. Id. 32. The second clause of section 4887, Re- vised Statutes, as amended March 3, 1903, construed and Held, not to be retroactive and not to apply to applications pending at the time of its passage. *De Ferranti v. Lind- mark, C. D. 1908, 134 O. G. 515. 33. Under the provisions of this section an applicant who filed an application in this country after the passage of the act is enti- tled to the benefit of a foreign application for the same invention filed less than twelve months prior to the domestic application, al- though such foreign application was filed prior to the passage of the act. *Id. 34. The act of March, 1903, by which the limitation within which an application must be filed in this country after the filing of a foreign application for the same invention was e.\.tendcd from seven months to twelve months construed and Held, not to apply to applica- tions pending at the date of its passage. *GuenifTet, Benoit, and Nicault v. Wictorsohn, C. D. 1908, 134 O. G. 779. 35. In computing the time under Revised Statutes, section 4887, as amended by act of March 3, 1903, the day upon which the ap- plication in a foreign country was filed should be excluded, and where such an application was filed on February 23, 1903, an application filed in this country February 23, 1904, was in time, c Hess-Bright Mfg. Co. et al. v. Standard Roller Bearing Co., C. D. 1909, 147 O. G. 521. 36. Where an application was rejected on a foreign patent. Held, that the examiner properly refused to withdraw the patent as a reference in the absence of an affidavit by the applicant fully identifying it as his own or filed on his behalf with his knowledge and consent. Ex parte Wlost, C. D. 1911, 1G5 O. G. 729. III. Proving. 37. The date of publication of a foreign patent is the constructive date of its publica- tion in this country. Rousseau v. Brown, C. D. 1903, 103 O. G. 659. 38. Where an alleged official copy of the specification and drawings annexed to a French patent is introduced in evidence, but no copy of the patent itself is produced, Held, that the patent cannot be regarded as in evi- dence. 'Rousseau v. Brown, C. D. 1903, 104 O. G. 1120. FOREIGN PATENTS, V. 155 39. Where on a motion to dissolve an in- terference a certified copy of a French patent is produced, but the certificate is on a sep- arate sheet from the specification and is not attached. Held, that the certificate may be taken to show the grant and its date and copy of the patent in the scientific Hbrary of this office may be accepted as proving the contents of the patent. Robin v. Muller and Bonnet, C. D. 1904, 108 O. G. 292. IV. Effect of Expiration. 40. While it has never been decided by the courts whether a patent granted in this coun- try for an invention previously made the sub- ject of a Gebrauchsmuster is hmited in term under section 4887 of the Revised Statutes, the data as to such Gebrauchsmuster should be given in the specification, the question of limitation being left to the courts. E.x parte Gillie, C. D. 1898, 84 O. G. 1143. 41. Where a French patent was granted for a term of fifteen years before the date of ap- plication for the United States patent for the same invention and the French patent was in full force at that date, but lapsed for the non-payment of annuity before the United States patent issued, Held, that there was no bar to the issue of the United States patent under section 4887, Revised Statutes, d Wels- bach Light Company v. Apollo Incandescent Gas Light Company et al., C. D. 1899, 87 O. G. 1784. 42. When a foreign patent is allowed to lapse by reason of non-compliance with some statutory provision before application is made in the United States, the grant of a patent in the United States is not prohibited by sec- tion 4887 of the Revised Statutes, but such patent is invalid under a different section on the ground of abandonment of the invention before the application was filed, d Id. 43. "To expire at the same time" in section 4887, Revised Statutes, should be taken to mean that the United States patent expires at the end of the term prescribed in the previous foreign patent without regard to mishaps occurring after the application was filed in this country, since the applicant was at that time entitled to his patent and could then have obtained it if the office could have been more prompt, d Id. 44. The provision of secion 4887 of the Re- vised Statutes that a patent shall expire at the same time with a foreign patent on the inven- tion means a foreign patent granted to the same party or with his consent. *Hobbs et al. v. Beach, C. D. 1901, 94 O. K. 23.'->7. 45. A claim for a process and a claim for an apparatus by which the process is per- formed are distinct inventions, and the United States patent for one does not expire, under section 4887, Revised Statutes, by reason of the expiration of a foreign patent for the other. **Leeds & Catlin Company v. Victor Talking Machine Company and United States Gramophone Company, C. D. 1909, 144 O. G. 1089. 46. A combination of elements is an in- vention distinct from one of the elements thereof, and a patent containing claims for both does not expire, as to the combination claim, by reason of the expiration of a for- eign patent covering one of the elements. **Id. 47. Under section 4887, Revised Statutes, a United States patent is not limited to its term by reason of the expiration of a prior Canadian patent before the end of the term for which it was granted by failure to pay the annual taxes thereon. (Pohl v. Anchor Brew- ing Co., C. D. 1890, 275, 51 O. G. 15G, 1.34 U. S. 381.) **Id. V. Benefit of Date. 48. R. applied for a Swiss patent on March 2, 1896, and on June 30, 1896, a certificate was issued by the Swiss patent office stating that a provisional specification, dated March 2, 189G, had been registered under No. 11,743 and that the patent document would immediately after the publication of the description and drawing be executed. Notice of the registra- tion was published in the Patent-Lisle of the Swiss office, a copy of which publication was received in the United States patent office on .August 7, 1897; but it contained no descrip- tion of the Swiss patent. The making pub- lic of the specification of the Swiss patent and its publication and printing were post- poned for six months, which ended September 2, 1896. Held, that R.'s Swiss patent was a secret patent until September 2, 1896, a date subsequent to W.'s filing date in this country, and that no date can be given to R.'s Swiss patent which will overcome W.'s date of filing his application in this country, and priority awarded to W. Roschach v. Walker, C. D. 1899, 88 O. G. 1333. 49. The benefit of the date of a foreign ap- plication filed under the International Con- 150 FORFEITED APPLICATIONS— GUARDIANS. vention cannot be secured by mere allega- tions that such application has been tiled, but only by proving such foreign application. Ex parte Pauling, C. D. 1905, 115 O. G. 1848. 50. There is no necessity for proving a for- eign application and thereby securing the ben- efit of its date under section 4887 of the Re- vised Statutes until some occasion arises for wishing to secure the benefit of that date. Such proof need not be filed with the appli- cation. Id. 51. Even where a party secures for his ap- plication here the benefit of the filing date of a foreign application the actual filing date in this country must appear and cannot be changed to the foreign filing date. Id. FORFEITED APPLICATIONS. 1. An application that has been allowed to lapse or become forfeited and before it is re- newed, ceases to have vital or operative ef- fect, except for a very limited and special purpose. *Christensen v. Noyes, C. D. 1900, 90 O. G. 223. 2. Where the examiner allows an applica- tion and the notice of allowance is properly sent, Held, that the allowance cannot be set aside after a forfeiture of the case for fail- ure to pay the final fee upon the allegation that it was an error for the examiner to have allowed it. Ex parte Bryant, C. D. 1902, 100 O. G. 3773. 3. Where a notice of allowance is sent to the attorney who has been prosecuting the case and he afterward raises the question as to his right to prosecute the case and the final decision is in favor of his right. Held, that the case was regularly allowed and that the final fee not having been paid within six months it is forfeited. Id. 4. In the case of payment of final fees the certificate of deposit under Rule 207 must be deposited in the mail for transmission to the patent office within six months from the al- lowance of the application. Where it is mail- ed by the applicant to his attorney and is filed in this office after the six months the ap- plication is forfeited. Ex parte Younger C. D. 1902, 101 O. G. 662. ))y means of circulars or letters distributed among agents and customers of a manufac- turer of goods claimed to infringe give no- tice of his rights as he understands them and of his intention to enforce them by suits when done in good faith, the sending of such no- tices and circulars in bad faith and without any intention of bringing the suits therein threatened, but solely for the purpose of de- stroying the business of such manufacturer, constitutes a fraudulent invasion of property rights, against which the party injured is en- titled to relief in equity by injunction. O. G. 610. 261. To overcome a case made by an earlier application the same weight of evidence is not required as in criminal cases. It is only nec- essary that the burden of proof should be sus- tained by the junior applicant by a preponder- ance of testimony. *Estey v. Newton, C. D. 1899, 8C O. G. 799. 186 INTERFERENCE, VII, (a). 262. Upon him who would overcome the presumption that to the person who has first reduced to practice belongs the merit also of priority of conception, the burden rests of doing so by satisfactory evidence. *Bader v. Vajen, C. D. 1899, 87 O. G. 1235. 263. Where Vajen swore to the disclosure which evidences his alleged conception of the invention and Bader denied that disclosure, which is not claimed to have been made to any other person than himself, Held, that the ut- most that can be said in favor of Vajen is that the testimony is balanced. *Id. 264. Where a party claims to have produced the hinge of the issue and to have appreciated its value and utility, but according to his own showing laid it aside and did nothing in the matter for three years and a half, although his company was engaged in manufacturing hinges and he knew, during a part at least of the time, that a rival company was putting substantially the same hinge on the market. Held, that his conduct raises a strong pre- sumption that he was not in possession of the invention and makes it incumbent upon him to establish the fact by evidence so clear and convincing as to leave no reasonable doubt in the matter. *Tyler v. St. Amand, C. D. 1901, 94 O. G. 1969. 265. Where A.'s application was on file and involved in an interference in which L. testi- fied as a witness and L. thereafter at the in- stance of the other party to the interference filed an application in his own name. Held, that the burden of proof is strongly on him. ♦Lloyd v. Antisdel, C. D. 1901, 9.1 O. G. 1G4.5. 266. Where L. knew of a controversy be- tween A. and another party in regard to the invention at issue and to assist A. in that con- troversy executed an afiidavit as to when the invention was made. Held, that it was then and there the duty of L. to assert his rights to the invention if he believed himself to be the inventor of it. ♦Id. 267. Where the evidence is conflicting and very unsatisfactory and the onus of proof is upon Austin, Held, that the decision of the assistant commissioner in favor of Johnson and Fry is the only rational conclusion which could be reached. ♦Austin v. Johnson et al., C. D. 1901, 9.5 O. G. 2685. 268. Where in so far as the office records go one party appears to be the first inventor of the combination in controversy. Held, that the burden of establishing a different state of facts should be placed upon his opponent. Sheppard v. Webb, C. D. 1901, 96 O. G. 1647. 269. H. being the first to reduce to practice and the first to apply to the office must be pre- sumed to be an original inventor of the ma- chine which it is conceded he built and oper- ated and for which he was the first to make an application for a patent. F. controverts this right of H., and it is incumbent upon him to show by clear and indubitable proof that the presumption in favor of H. is not well founded and that the right is in himself. Such proof F. has failed to produce, and priority of invention is therefore awarded to H. ♦Funk V. Matteson v. Haines, C. D. 1902, 100 O. G. 1764. 270. Held, that the controversy turned en- tirely upon the facts in evidence ; that in ad- dition to the burden imposed upon him by the patents regularly issued to Crone, Bauer has that of overcoming the effect of the suc- cessive adverse decisions in the patent office; that the evidence on behalf of Bauer is un- certain, fraught with suspension, and cannot be accepted as sufficient proof of the facts essential to establish the appellant's averments, either as originally made or as sought to be amended, and that the decision of the com- missioner must be affirmed. ♦Bauer v. Crone, C. D. 1906, 120 O. G. 1824. 271. The question of shifting the burden of proof is a matter within the jurisdiction of the examiner of interferences and not the primary examiner, and there is no appeal from his decision prior to final judgment. (Raulet and Nicholson v. Adams, C. D. 1905, 55, 114 O. G. 1827.) Scott V. Southgate, C. D. 1906, 121 O. G. 689. 272. Held, that it is the duty of any party to an interference proceeding upon whom the burden of producing evidence may fall to dis- charge that duty, if he would prevail, by proofs full, clear, and specific of the essential features of his case, or if such proofs cannot be produced, to furnish satisfactory reasons in excuse; otherwise he must ordinarily lose, for specific inferences cannot be drawn with any reasonable degree of certainty from the general statements of witnesses in these cases, nor should the burden of disproving the truth of specific matters claimed by a party to be de- ducible from the testimony which he has pro- duced be placed upon an applicant where said party or his witnesses have not by spe- cific statements in their testimony affirmed INTERFERENCE, VII, (b). 187 the truth of such matters. Robinson v. Thresher, C. D. 1906, 123 O. G. 2637. (b) Patentee i'. Al>t>licant. 273. The fact that an applicant delayed fil- ing his application for two years after the issue of the patent with which his applica- tion was put into interference is a circum- stance sufficient of itself to require that all doubts in the contest should be resolved against him. Guilbert v. Killinger, C. D. 1898, 82 O. G. 1")61. 274. Where an applicant comes into the patent office to overthrow a prior patent, he assumes the position, with all its burdens, of a defendant in a suit who sets up to defeat the right of a plaintiff, the want of novelty and invention covered by the patent held by the plaintiff, or the fact of existence of prior- ity of invention by the defendant or some third person having a right to the invention superior to that claimed by the plaintiff. ♦Wil- liams v. Ogle, C. D. 1899, 87 O. G. 1958. 275. Elwell, the junior party and patentee, filed his application January 20, 1890, and Ruete filed November 6, 1896. To overcome Elwell's case, Ruete alleged conception on January 17, 1895, and reduction in February or March, 1895. Held, that Ruete, on whom was the burden of proof and who under the rules is required to prove his case by evidence so cogent as to leave no reasonable doubt, has failed to discharge the onus placed upon him, and priority is therefore awarded to Elwell. (The decision of the commissioner of patents, Ruete v. Elwell, 65 MS. Dec, 256, affirmed.) *Reute v. Elwell, C. D. 1899, 87 O. G. 2119. 276. On an issue of priority of invention, constructive reduction to practice of the in- vention by simply filing an application for pat- ent and having it allowed, or by filing an allowable application for patent, does not in any manner change or enlarge the right of such applicant as against a prior inventor of the same or a similar invention, and which is made the subject of an issue of interfer- ence, though such prior inventor may be sub- sequent in filing an application. *Christensen V. Noyes, C. D. 1900, 90 O. G. 227. 277. The first applicant in such case becomes the senior party in the declaration of inter- ference, and his prior application imposes the burden of proof upon the junior party or sub- sequent applicant in trying the issue of prior- ity; but in no other respect does the mere constructive reduction to practice by a subse- quent inventor subordinate or affect a prior invention, and this rule in regard to the bur- den of proof does not apply as against a pat- entee whose patent has been regularly and lawfully issued in due course of proceeding. *Id. 278. A subsisting patent, lawfully issued, cannot be invalidated or in any manner affect- ed by any subsequent proceeding in the patent office, even to the extent of imposing the bur- den of proof upon its holder that it was law- fully issued, and it is the express provision of the statute that no person has a right to "ob- tain a patent for that which was in fact in- vented by another, who was using reasonable diligence in adapting and perfecting the same," or unless the latter has abandoned his inven- tion. *Id. 279. Where the burden is upon a party to establish his case beyond a reasonable doubt by reason of a previously granted patent to his opponent, Held, that doubts raised by con- tradictions and uncertainty in the testimony cannot be removed by conjecture or any plaus- ible theory as to the probability of the situa- tion. Mere preponderance of evidence in his favor is insufficient. Nielson v. Bradshaw, C. D. 1900, 91 O. G. 644. 280. Upon a review of the testimony. Held. that the presumption founded upon the pat- ent of the senior party more than counter- balances all the evidence produced for the junior party and applicant, and the decision of the commissioner awarding priority to the patentee affirmed. *Locke v. Boch, C. D. 1900, 93 O. G. 1722. 281. In trying the question of priority of invention in an interference case between an applicant and a patentee the principle to be applied is substantially analogous to that which is applicable in a case of infringement where the defense is that the patentee is not the original and first inventor. In all such cases it is a fundamental principle of patent law that to invalidate or supersede a patent by prior invention the proof must establish the fact beyond reasonable doubt. *Id. 282. Although the preponderance of evi- dence may be with the appellant. Held, that he has not established his case beyond a reason- able doubt, and therefore the decision of the commissioner of patents awarding priority of invention to the appellee affirmed. *Id. 283. VVhere the junior party has a patent to contend with and he was induced to tile his 188 INTERFERENCE, VII, (b). application by a perusal of that patent, Held. that the burden of proving his case beyond a reasonable doubt is upon him. *Kelly v. Fynn, C. D. 1900, 92 O. G. 1237. 284. Where one party holds a patent grant- ed before the other's application was filed, he is entitled to insist that every reasonable doubt should be resolved against his oponent. The principle involved is analogous to that raised by the defense of prior invention in a suit in a court for the infringement of a patent. Kelly V. Fynn, C. D. 1900, 92 O. G. 1233. 285. Where Read was the first to file his application, and while it was pending Miehle's application went to patent. Held, that Read is the senior applicant and entitled to all of the advantages which his earlier application gives him. *Miehle v. Read, C. D. 1901, 96 O. G. 426. 286. There is no tendency toward laxity in the application of the rule that a conclusive weight of evidence is necessary to establish priority on the part of an applicant to over- come a regular and formal patent granted to his opponent. *Sharer v. McHenry, C. D. 1902, 98 O. G. 585. 287. Where an applicant is placed in inter- ference with a previously-granted patent, the burden is upon him to show beyond a reason- able doubt that he is the first and original in- ventor of the matter in controversy. *Gedge V. Cromwell, C. D. 1902, 98 O. G. 1486. 288. Where an applicant is in interference with a patent granted before his application was filed. Held, that it is necessary for him to prove his case beyond a reasonable doubt. ♦Meyer v. Sarfert, C. D. 1903, 102 O. G. 1555. 289. The burden of proof is heavily cast upon an applicant who is placed in interfer- ence with a patentee when the application was not filed until after the date of the grant of the patent. *Gallagher v. Hastings, C. D. 1903, 103 O. G. 1165. 290. Where the applicant claims to have conceived the invention and to have disclosed it to the patentee and there is but one reduc- tion to practice — that of the patentee — and the testimony of the applicant is clear and un- shaken by cross-examination, it is sufficient for a time to overcome the burden of proof imposed upon the applicant and compel his adversary to account for his claim of the invention. *Id. 291. Where an applicant is involved in in- terference with a previously-granted patent, Held, that the burden is upon him to prove his case beyond a reasonable doubt. *Dashiell v. Tasker, C. D. 1903, 103 O. G. 2174. 292. To the heavy burden imposed by the established rule of law upon one who seeks to overcome the right of an adversary found- ed on a patent issued before the filing of his own application is superadded the necessity of making out a very clear case of error by reason of the concurrence of all of the tri- bunals of the patent office in deciding against the sufficiency of his evidence to prove this reduction to practice. (Howard v. Hey, C. D. 1901, 375, 95 O. G. 1647, 18 .\pp. D. C. 142, 146.) *Macdonald v. Edison, C. D. 1903, 105 O. G. 1263. 293. Where a patent is granted and there is on file in the patent office another applica- tion for the same invention, which application has never been forfeited or abandoned and which was pending when the patent was granted, and an interference is subsequently declared between the patent and the applica- tion. Held, that the patent was inadvertently granted, and the two parties in the interfer- ence proceeding are to be treated as applicants with copending applications. Wurts v. Har- rington (C. D. 1897, 3.59, 79 O. G. 337). Wat- son V. Thomas, C. D. 1903, 106 O. G. 1776. 294. Where a patent is inadvertently grant- ed to a later applicant while the application of the other party to the interference is pend- ing in the patent office, Held, that the patentee can derive no advantage from the fact that his patent has issued. *SchafFer v. Dolan, C. D. 1904, 108 O. G. 2146. 295. Where an applicant for patent is in in- terference with a previously-granted patent, the burden is upon the applicant to prove his case beyond a reasonable doubt. *Sendelbach V. Gillette, C. D. 1904, 109 O. G. 270. 296. Where L.'s patent was granted while S.'s application was pending disclosing, but not claiming, the invention, and S. subsequent- ly files a divisional application claiming the invention and is placed in interference, Held, that the burden of proof is on L., since he was the last to file. Lowry v. Spoon, C. D. 1904, 110 O. G. 858. 297. Where C, a patentee, alleges a concep- tion of the invention in February, 1901, and it is shown by clear and convincing testimony that K. reduced the invention to practice prior to that date. Held, that K. has overcome the burden of proof that is upon him by reason of the grant of a patent to C. and that K. is INTERFERENCE, VII, (c). 189 entitled to the award of priority of invention. Kyle V. Corner, C. D. 1904, 113 O. G. 2216. 298. Where a patent is inadvertently grant- ed on an application pending contemporane- ously with a pending application of another party. Held, that the patentee gains no advan- tage in an interference proceeding and that the patentee being last to file, is the junior party in the proceeding. *Furman v. Dean, C. D. 1905, 114 O. G. 1352. 299. Where the senior party was a patentee, but the application of the junior party was pending when the patent issued. Held, that no benefit accrued to the senior party from his possession of a patent in respect to the bur- den of proof imposed upon his adversary. *PauI V. Hess, C. D. 1905, 115 O. G. 251. 300. Where the senior party relies upon his record date, the burden is upon the junior party to show reduction to practice preceding that date or else earlier conception followed with due diligence to reduction to practice, cither actual or constructive. *Id. 301. When an interference is declared be- tween a patent granted prior to the date of filing of an interfering application, Held, that if the applicant is to prevail he must establish his case by proofs which admit of no reasonable doubt. (Sharer v. McHenry, C. D. 1902, .503. 98 O. G. 585; Meyer v. Sar- fert, C. D. 1903, .529, 102 O. G. 1155.) French V. Halcomb, C. D. 1905, 115 O. G. 506. 302. Where a party files his application after the issue of his opponent's patent and he copies the claims of that patent, Held, that the burden is on him to prove his case beyond a reasonable doubt. *Cherney v. Clauss, C. D. 1005. 116 O. G. 597. 303. Where B., the junior party to an in- terference, files his application for a patent after the senior party, C, has obtained patents for the invention in controversy, it is incum- bent upon B., if he is to prevail, to establish his case by proof which will admit of no rea- sonable doubt. (Sharer v. McHenry, C. D. 1902, 503, 98 O. G. 585.) Bauer v. Crone, C. D. 1905, 118 O. G. 1071. 304. An applicant in interference with a patent granted before the filing of the appli- cation has the burden of proving his case be- yond a reasonable doubt, and this burden is not discharged where the testimony merely raises a doubt as to which of the two parties made the invention or whether a third party may not have contributed the essential idea which led to the invention. French v. Hal- comb, C. D. 1906, 120 O. G. 1824. 305. Where the junior party's application was pending when the senior party's patent was granted, the senior party does not there- by gain any advantage with respect to the burden of proof. The patent was irregularly issued, and the junior party need only prove his case by a preponderance of evidence. ♦An- drews V. Nilson, C. D. 1906, 123 O. G. 1667. 306. In an interference between an appli- cation and a patent granted prior to the filing of the application the burden is upon the ap- plicant to prove his case beyond a reasonable doubt, and where the question is one of orig- inality and the evidence on behalf of the ap- plicant is not convincing priority should be awarded to his opponent. Kreag v. Geen, C. D. 1906, 124 O. G. 1208. 307. Where a patent is inadvertently issued, while an application by another is pending, without an interference, no advantage accrues to the patentee on the question of burden of proof. *CutIer v. Leonard, C. D. 1908, 136 O. G. 438. (c) Earlier Af^ff'cations or Patent Disclosing Issue. 308. A reissue applicant is entitled to the date of his original application as his date of filing in determining the question of burden of proof under Rule 116. Walsh v. Hallbauer, C. D. 1899, 88 O. G. 2409. 309. Where the real contention on which a motion is based is that the matter in issue was not disclosed in one party's case as originally filed, Held, that the question involves the merits and that it cannot be changed into one which is reviewable by the commissioner on appeal by merely misnaming the action and calling it a motion to shift the burden of proof. Id. 310. Where a patent discloses an invention. Held, that the patent being part of the records of the patent office it is the duty of the of- fice to take notice of said disclosure. (Fair- fax V. Hutin et al. v. Patten v. Steinmetz v. Scott. C. D. 1898, 246, 85 O. G. 1222.) Meyer V. Sarfest. C. D. 1901, 96 O. G. 1037. 311. The subsequent grant of a patent to one party does not affect the disclosure in the previous grant to another party. The burden of proof should not be on the party who first discloses the invention. Id. 190 INTERFERENCE, VII, (d). 312. The words "their completed apphca- tion" used in Rule 116 are not limited to mean only the application involved in the interfer- ence. They refer to any completed applica- tion in which the invention is disclosed, by means of which judgment of priority would necessarily be rendered in favor of the party so disclosing, provided no testimony was taken. (Rule 114.) Id. 313. Where M. has been granted a patent which fully discloses the inventions in issue, so that priority of invention would be award- ed to him should no testimony be taken, and after the grant of the same files applications for patents on said disclosed inventions, the claims of the issue having been held to be pat- entable in said applications, and said applica- tions are placed in interference with previous- ly-granted patents to S. which were granted subsequently to the grant of the patent to M., Held, that M. being the first to disclose the invention, as shown by the records of the patent office, so that priority of invention would be awarded to M. should no testimony be taken, the burden of proof should be on S. Id. 314. Where a prior pending application of one party fully discloses the issue in contro- versy and the claims of the issue could have been made therein, if desired, instead of claims to another form, Held, that such application is an office record showing that he was in pos- session of the invention at that time, and therefore he is entitled to the benefit of its date in determining upon whom the burden of proof shall rest. Sheppard v. Webb, C. D. 1901, 96 O. G. 1647. 315. Where the application in interference is not, strictly speaking, a division of a pre- vious application, since the devices disclosed contain specific differences in structure, but both embody the combination in controversy. Held, that the applicant is entitled to the date of the original case under Rule 116. Id. 316. Where an interference is declared be- tween an application and a patent granted be- fore the filing of the application and the ap- plicant introduces in evidence a prior applica- tion which was filed before the grant of the patent and which discloses the subject-matter of the later application involved in interfer- ence, Held, that the applicant has merely to establish his case by a preponderance of evi- dence and not by evidence beyond a reason- able doubt. Spaulding v. Norden, C. D. 1904, 112 O. G. 2091. 317. Where 'no motion to shift the burden of proof is made and where such motion is denied, the party may introduce his alleged earlier applications in evidence as a part of his proofs. Raulet and Nicholson v. Adams, C. D. 1905, 114 O. G. 827. 318. Where the burden of proof is heavy upon the applicant as being both the junior in the office and being required to overcome the effect of a patent in the hands of his oppo- nent, Held, that an earlier application filed by the applicant cannot lighten this burden of proof where such application does not dis- close the issue. *Norden v. Spaulding, C. D. 190.5, 114 O. G. 1828. (d) Shifting. 319. In order to warrant the transmission to the primary examiner of a motion to shift the burden of proof, it need only contain the grounds on which the motion is made and need not set up the reasons or facts relied on unless those facts are outside the record. Sheppard v. Webb, C. D. 1901, 94 O. G. 1577. 320. When access to such earlier application was at first refused and was finally granted after repeated requests had been made. Held, that a motion to shift the burden of proof brought by the junior party soon after such access was granted was brought without un- reasonable delay and should be transmitted to the primary examiner. Dittgen v. Parmentcr, C. D. 1902, 98 O. G. 1707. 321. The burden of proof in an interfer- ence may be shifted without dissolving and re- declaring the interference. Dinker v. D'Olier, C. D. 1904, 113 O. G. 2507. 322. As the question of shifting the burden of proof relates to a matter of evidence, which should be determined in the first in- stance by the examiner of interferences. Held, that such motions should be made before that tribunal and that there is no appeal prior to the appeal on the final decision upon the ques- tion of priority of invention. Raulet and Nicholson v. Adams, ante, 55, 114 O. G. 1827; Fennell v. Brown v. Borsch, Jr., C D. 1905, 115 O. G. 1328. 323. No appeal is permitted prior to final judgment on a motion to shift the burden of proof, and any supposed error in the decision thereon will be reviewed in connection with the decision upon the question of priority of invention. McGill v. Adams, C. D. 1905, 119 O. G. 1259. INTERFERENCE, VII, (e), (f). 191 324. Motion to shift the burden of proof should be made before and decided bj' the examiner of interferences. Raulet and Nich- olson V. Adams, C. D. 190.5, 114 O. G. 1827. 325. Where a motion to shift the burden of proof is denied, the alleged record evidence of earlier invention may be introduced as part of the proofs. Osborne v. Armstrong, C. D. 1905, 114 O. G. 2091. 326. Where appeal was taken from action of primary examiner denying motion to shift burden of proof, Held, that the appeal would not be considered and that the case would be remanded to the examiner of interferences for decision. Fisher v. Daugherty, C. D. lOO.j, 118 O. G. insi. 327. Where appeal was taken from action of primary examiner denying motion to shift burden of proof, Held, that the appeal would not be considered and that the case would be remanded to the examiner of interferences for decision. Duryea and White v. Rice, C. D. 1905, 118 O. G. 2249. 328. From a refusal of the examiner of in- terferences to grant a motion to shift the burden of proof no appeal lies (Rule 122) ; but the question will be considered at final hearing on priority. Hewitt v. Thomas v. Kruh V. Weintraub. C. D. 1906, 122 O. G. 1045. 329. No appeal lies from a decision of the examiner of interferences on a motion to shift the burden of proof. (Rule 122.) Duke- smith V. Corrington v. Turner, C. D. 1906, 125 O. G. 348. 330. It is well settled that the question of placing the burden of proof rests in the dis- cretion of the examiner of interferences, and his decision on a motion to shift the burden of proof will be reviewed only in a clear case of an abuse of that discretion. Young v. Town- send V. Thullen, C. D. 1908, 134 O. G. 1804. 331. Rule 122, providing that there shall be no appeal from decisions on motions to shift the burden of proof, applies also to cases where such a motion is made in response to a rule to show cause and judgment on the rec- ord results from the decision of the examiner of interferences on such motion. Barney v. Hess, C. D. 1910, 158 O. G. 702. (e) On Party Last to File. 332. No statutory drawing having been filed by Palmer and Thompson until after the com- plete application of Bailey was filed, the bur- den of proof in the interference is upon Pal- mer and Thompson. Palmer and Thompson v. Bailey, C. D. 1898, 83 O. G. 1267. 333. The rules of the office require that in order to constitute a complete application a drawing must be filed whenever the nature of the case admits. Until a drawing is filed the application is not complete. Until an applica- tion is completed by filing all the necessary papers and the payment of the fee it cannot be examined, nor can it be placed in interfer- ence. Id. 334. Where T. did not file his application for a patent until fourteen months after K.'s application was filed, although he knew of K.'s application and claim to the invention, Held. that the presumption is in favor of K., and the burden is upon T. to prove his case by full and satisfactory evidence. *Tyler v. Kelch, C. D. 1902, 98 O. G. 1282. 335. H. being the senior party, the first to apply to the patent office, has prima facie the priority of right, and the onus of proof is upon any junior applicant to show not only priority of invention, but he must also show that he has used reasonable diligence in adopting and perfecting his invention, for in such a case the mere conception without actual reduction to practice within a reasonable time does not avail a junior party making the claim. *Funk V. Matteson v. Haines, C. D. 1902, 100 O. G. 1764. 336. Where the burden of proof is upon the junior party, who is the first to conceive, Held. that it is as necessary for him to affirmatively show that he was diligent as it is for him to affirmatively show conception and reduction to practice. Watson v. Thomas, C. D. 1903, lofi O. G. 1776. 337. Held, that the evidence on behalf of Flora is not sufficient to sustain the onus of proof upon him due to his later filing date, and therefore the decision adjudging Powrie the first inventor affirmed. *FIora v. Powrie, C. D. 1904, 109 O. G. 2443. 338. The burden of establishing priority im- posed upon TurnbuU as the last to file appli- cation has, under the settled rule, been greatly increased by the concurring decisions of the several tribunals of the patent office in favor of his opponent. *Turnbull v. Curtis, C. D. 1906, 123 O. G. 2312. (f) On Party Last to Claim. 339. Where an interference was originally declared under Rule 116. which provided that 193 INTERFERENCE, VIII. the last to make the particular claim in issue was the junior party, and the rule remained in force until February 9, 1897, when it was changed to make it possible for P., upon mo- tion duly made, to shift his position from that of junior party to rank next below a patentee, and by a modification of the rule on April 19, 1897, it was possible for him to become the senior party, Held, that although F. did not make a motion to shift the burden of proof until long after he knew of the change in the practice mere delay in asserting his right under the changed rule cannot count against him. Fairfax v. Hutin and Leblanc v. Patten v. Steinmctz v. Scott, C. D. 1898, 8.5 O. G. 1222. 340. Held, that there is no rule of practice which compels a party to an interference who under the rule in force at the time when the interference was declared was made the junior party to assert his right to be made a senior party at any given time after the rules have been so changed that he is entitled to be treat- ed and in fact is treated by the amended rule as a senior party. Id. 341. Where any one of the parties to an in- terference is entitled to file a given motion and all refrain from so doing, the laches, if any, should not count for or against any one of the parties. Id. VIII. Chancinc Scope of Application to Ob- tain Interference. 342. While it is permissible to amend an ap- plication after the issue of a patent so as tn provoke an interference with such patent where the application as originally filed dis- closed the invention, such amendment should not be permitted where the invention itself is sought to be changed by such amendment. Grinnell v. Buel, C. D. 1899, 89 O. G. 186,3. 343. Wood, the senior party, filed his ap- plication on October 28, 1893. Bechman, the junior party, filed on October 26, 189.5. The interference was declared on the broad issue, which was covered by a broad claim made by Bechman when he filed his application. Wood, however, did not make the broad claim until .^pril 29, 1896. The testimony shows that Wood was the first to conceive of the inven- tion and that Bechman did not in any manner reduce it to practice prior to Wood's filing date. Held, that if the broad claim is patent- able it must belong to the first inventor of the specific machine, if to any one, and that one is Wood. It certainly cannot be allowed to any subsequent inventor of any other specific mechanism. * Bechman v. Wood, C. D. 1899, 89 O. G. 2459. 344. Held, further, that the broad claim is not patentable to either party — not to Bech- man, because he was not the first to invent an "independent transferring mechanism" in printing machines in the combination de- scribed ; not to Wood, because he did not make tlie claim before his rival made the discovery of his own patentable invention. *Id. 345. Held, further, that it is not competent for Wood, who had failed to make a broad claim and thus left the field open for other specific inventions than his own, to seek to control all such specific inventions by pro- curing a patent on the broad claim which he did not advance prior to the making thereof by Bechman. If the broad claim could be held to be patentable to Wood, the effect of a patent upon it to him would be unjustly retroactive, for it would sweep within its con- trol all specific inventions in the same field made previously to the time when he made his claim. (Chicago & Northwestern Railway Co. v. Sayles, C. D. 1879, 349, 15 O. G. 243, 97 U. S. 554, cited.) *Id. 348. Held, further, that while both parties to the interference are or may be entitled to patents for their respective specific devices neither one of them is entitled to a patent for the broad claim of the issue, and therefore there should be no judgment of priority of invention to either party with reference to the broad claim. *Id. 347. As a general proposition, the power of the court of appeals in interference cases is limited to the determination of the ques- tion of priority of invention as between the parties to the interference, and neither the question of patentability of the invention nor the propriety of the declaration of interfer- ence is open to consideration. *Bechman v. Wood, C. D. 1899, 89 O. G. 2462. 348. Where an applicant for a patent has re- stricted himself in the first instance to a nar- row claim for a specific device to effect a cer- tain result, and subsequently another applicant comes into the office with another narrow claim for another specific device to effect the same result, and thereafter the first applicant broadens his claim into a generic one, so as to cover and dominate all specific devices to effect such result, assuming that their specific devices have actually been invented in the INTERFERENCE, VIII. 193 order of their application to the office, the ut- most liberality of amendment will not justify the destruction of the right of the second ap- plicant to his own specific device, and the fact that the second applicant may have been the first to make the broad generic claim and that the lirst applicant then broadened his claim into generic proportions cannot affect this con- clusion. *Id. 349. Where the first applicant was found to be the true first and original inventor of his own specific device and apparently the first inventor of any device of the kind, and the second applicant was likewise found to be the true first and original inventor of the specific device stated in his application, this being the order of invention. Held, that the second applicant could not under any prin- ciple of law or any theory of justice be al- lowed the broad claim which would have dominated the invention of his predecessor in the field, and neither could that predecessor be allowed the broad claim, for the reason that be had not advanced it before the arrival of the other party on the field of invention. Id. 350. Held, further, that by making the nar- row claim for a specific device in the first in- stance the first applicant left the field open for all who would make other different de- vices to accomplish the same purpose, and it would not be right or just that he should after the invention of such another device by another person be permitted to go back and broaden his claim so as to sweep this second device within the scope of his own original application, even though the broad claim might properly have been advanced in the beginning, and even though under other circumstances he might have effectively broadened his claim in the course of the prosecution of the appli- cation and procured or entitled himself to a patent for such broad claim. *Id. 351. If an inventor comes to the patent of- fice with an application in which he first re- stricts himself to a narrow claim for a spe- cific device, but which he is entitled by the process of amendment to broaden into a gen- eric claim, and if he does in fact so broaden it, he may entitle himself to a patent for the broad claim, unless in the meantime the right of some other person has accrued to some other narrow claim for a similar device to ef- fect the same purpose which would be domi- nated by the broader claim of the first appli- cant. It is not just that rights which have 13 previously accrued should be overthrown by amendments subsequently made. Chicago & Northwestern Railway Co. v. Sayles, C. D. 1879, :i-19, 15 O. G. 243, 97 U. S. 554, cited.) *Id. 352. Neither party to this interference is entitled to prevail against the other on the broad claim of the issue, the first being estopped from setting it up against the second applicant in consequence of the intervening rights of the latter to his own specific device and the second applicant being precluded from having the benefit of it for the reason that he was not the first on the field of invention. *Id. 353. The former decision, holding that as Wood did not advance the broad claim of the issue until after Bechman had filed his ap- plication therefor he is not entitled to a judg- ment of priority for such broad claim, and that neither party is entitled to a judgment of priority of invention or to a patent for the broad issue, is adhered to. *Id. 354. Where in an interference between an application filed March 22, 1897, for the re- issue of McBerty's patent, dated August 13, 1895, and an application of Cook filed July 29, 1896, it was contended that Cook's original application contained no claim to the invention of the issue, that not until five months there- after and after the rejection of his claims in part did he amend by setting up the claims of the McBerty patent now in interference, and that consequently he is estopped, under Bechman v. Wood (C. D. 1899, 453 and 459, 89 O. G. 2459 and 2462), from claiming prior- ity of invention as against McBerty's subse- quent application for reissue, Held, that the attitude of the parties is different from that shown in Bechman v. Wood. McBerty did not come into the office originally after Cook, but before, and when he made his reissue ap- plication Cook's later claims had been made. He does not therefore stand in the situation of one who claims a specific invention with specification and claims that are not em- braced in the original application of an earlier applicant, but which the latter seeks by subse- quent amendment to dominate with claims that have no foundation in the original description of his invention. *McBerty v. Cook, C. D. 1900, 90 O. G. 2295. 366. Held, further, that the amended claims of Cook are clearly shown and described in the specification of his original application and that his amendment constitutes no de- 194 INTERFERENCE, VIII. parture which would subordinate him to the claim of even an intervening applicant, as was the case in Bechman v. Wood. *Id. 356. On a motion to dissolve on the ground that S. has no right to make the claims in view of the decision in Bechman v. Wood, since he did not make the broad claims in issue until after II.'s application was filed and made them then only upon the suggestion of the examiner, Held, that under the clear and explicit statements in the decision itself the office would not be justified in dissolving the interference at this time. Horton v. Summer, C. D. 1900, 93 O. G. 2339. 357. Where to dissolve the interference on the ground that S. has no right to make the claims, would make it necessary to allow the broad claims to H., which would dominate S.'s construction, while refusing them to S., al- though as far as the record goes S. appears to be the first inventor, Held, that the court clearly did not contemplate or sanction any such action in its decision. Id. 358. The question of estoppel by delay in making the claim is not a proper one to be raised by a motion for dissolution, since ac- cording to the court's decision it can be de- termined only by the special circumstances as shown by the proofs and it is well settled that motions for dissolution should not be based upon proofs taken. Id. 359. Although Tripler's application met with various objections on references and under- went frequent amendment to meet the same. Held, that the circumstances do not bring the case within the doctrine of Bechman t. Wood (C. D. 1899, 459, 89 O. G. 2462). *Ostergren et al. V. Tripler, C. D. 1901, 95 O. G. 837. 360. Held, that it is doubtful if Read is enti- tled to make the claims, since he appears to have so changed his claims as to cover an in- vention which he did not contemplate until after he saw Miehle's patent. (Bechman v. Wood, C. D. 1899, 459, 89 O. G. 2462.) Miehle V. Read, C. D. 1901, 96 O. G. 426. 361. When new matter is introduced into an application, it cannot be allowed to domi- nate previous claims of another applicant; but when matter has been disclosed but not claim- ed it is proper to include it in claims, and they may take precedence over the previous claims of another applicant. (Bechman v. Wood, C. D. 1899, 453, 89 O. G. 2459, 15 App. D. C. 484, construed.) *Luger v. Browning, C. D. 1903, 104 O. G. 1123. 362. Where after his alleged invention of the specific process in controversy M. filed an application with broad claims not disclos- ing the specific process and upon being in- formed by P. and C. of their specific process said nothing about having invented it, but thereafter presented claims to it in his appli- cation and filed the present application claim- ing it. Held, that his claim as the inventor is discredited. *McKnight v. Pohle, and Cross- dale, C. D. 1903, 105 O. G. 977. 363. Where Dean's application was first filed, but he did not make the exact claims of the issue until after Furman's patent was granted, including them, and until they were suggested to him by the examiner. Held, that Dean is not estopped from making the claims. Furman v. Dean, C. D. 1904, 111 O. G. 1366. 364. In an interference with a patent the fact that S.'s original application the day it was filed did not contain a claim in the words of the issue is immaterial, as under the provi- sions of Rule 94 (2) he filed an affidavit that "he made the invention before the patentee's application was filed," and the examiner has held that such original application disclosed the invention in issue. Schubert v. Munro, C. D. 1904, 113 O. G. 283. 365. The decision of Bechman v. Wood (C. D. 1899, 459, 89 O. G. 2459) does not involve the question of the regularity of the declara- tion of an interference or the right of one of the parties to make the claim, but affects only the question of priority of invention, and its effect can only be determined after consid- eration of the testimony in passing upon that question. Gaily v. Brand, C. D. 1904, 113 O. G. 851. 366. When new matter is introduced into an application, it cannot be allowed to dominate previous claims of another applicant; but when matter has been disclosed, but not claimed, it is proper to include it in claims, and they may take precedence over the previous claims of another applicant. Id. 367. Upon a consideration of the original application and the entire record of amend- ments thereto, Held, that the amendments of Dodge's claims were within the scope of his application and accompanying drawings and were therefore properly allowed. Seeberger v. Dodge, C. D. 1905, 114 O. G. 2382. 368. Ordinarily where the point has been raised whether the application of one of the parties was broad enough in the terms of its INTERFERENCE, IX, X. 105 specification and claims to embrace the inven- tion of the other, and especially where the in- vention is one of elaborate and complicated mechanism, the decisions of the expert tri- bunals of the patent office in respect of iden- tity have for obvious reasons, been accepted as conclusive. *Ecchman v. Southgate, C. D. 1007, 127 O. G. 1254. 369. Applicant docs not lose his right to claim an invention disclosed in his application by the fact that he makes no specific claim thereto until after another party files his ap- plication for the same invention. *Lotz v. Kenny, C. D. 1008, i;!5 O. G. 1801. IX. Caveat. 370. Wlicrc in his preliminary statement the junior party to an interference alleges the filing of a caveat disclosing the invention in issue. Held, that the senior party is not enti- tled to inspect such caveat, since it is optional with the junior party whether he will intro- duce such caveat in evidence or rely on other evidence of disclosure. (Claassen v. StelTen, C. D. 1004, :u?., 113 O. G. 2.J07, distinguished.) Stauft V. Reeder, C. D. 1010, 157 O. G. 20S. X. Conception oe Invention. 371. Where the evidence is very unsatis- factory and uncertain, but shows S. to have been active in experimentation on the general lines of this invention in February, 1S07, and that he then filed an abortive application not disclosing this invention and does not allege reduction to practice until the summer of 1807, Held, that he has not satisfactorily shown conception in February. *Silverman v. Hendrickson. C. D. 1902, 00 O. G. 1171. 372. Where the evidence shows that H. had a conception of the desirability of doing what the invention was designed to do, but fails to show that he had an adequate conception of the means by which the result was to be ac- complished. Held, that he cannot be regarded as having a conception of the invention in controversy. Herman v. Fullman, C. D. 1903, 107 O. G. 1094. 373. Where a sketch is introduced as evi- dence of conception and it fails to disclose a feature called for by the issue and the wit- nesses do not refer to that feature, Held, not proof of conception. Harris v. Stern and Lotz, C. D. lOo:!, 105 O. G. 259. 374. Where an inventor has only a concep- tion of what he wanted to accomplish and not a conception of the means to be used to that end. Held, that it is not an "available con- ception within the meaning of the law." Mer- genthaler v. Scudder, C. D. 1897, 724, 81 O. G. 1417. Lotterhand v. Hanson, C. D. 1904, 108 O. G. 790. 375. Where the witnesses called to corro- borate Cobb as to a disclosure of the invention make it appear that he had in mind the result to be accomplished, but not the means by which it was to be done. Held, that a concep- tion and disclosure of the invention is not es- tablished. *Cobb V. Goebel, C. D. 10O4, 108 O. G. 1501. 376. Where it appears that a machine was ccmstructed embodying all the elements of the issue and that there was a prior machine con- structed which embodies all the features of the second machine except the construction of a single element and it is shown by the testi- mony that this new element was considered to be necessary and that work was commenced on the second machine to that end, Held, that the evidence establishes a conception of the invention embodied in the second machine at the time that work was commenced on the second machine with the improvement ^in view. Cummings v. McKenzie, C. D. 1904, 110 O. G. 1167. 377. Where an original drawing is sub- mitted in evidence showing clearly all but one of the elements of the issue and the showing of that element is so vague that from the drawing alone without further description the invention of the issue cannot be understood, Held, that when other evidence is submitted which establishes the fact that the inventor had at the time he made the original drawing a complete conception of this vaguely-illus- trated element the fact of conception of the invention of the issue is satisfactorily estab- lished. Robinson v. Copeland, C. D. 1904, 111 O. G. 579. 378. Where certain pencil-marks were placed upon a patented drawing for the admitted pur- pose of distinguishing the invention shown in that drawing from another invention (not the invention of the issue ( then under discus- sion, and it appears that no adequate disclo- sure of the invention of the issue can be ob- tained from the pencil-marks alone and there is no evidence that the invention of the issue was disclosed at that time. Held, that a con- ception of the invention in issue at that time is not established, as, th?r? i§ ^lo evidence of 196 INTERFERENCE, XI, XII. the "formation in the mind of the inventor of a definite and permanent idea of the com- plete and operative invention as it is thereafter to be applied in practice." (Mergcnthaler v. Scudder, C. D. 1897, 724, 81 O. G. 1417.) Ritter v. Krakau and Conner, C. D. 1904, 111 O. G. 1935. 379. Where claims are advanced by a party of conception and disclosure at dates several years before any dates satisfactorily proved and it appears that in the meantime manufac- turers were demanding a device of the kind in issue and the party made no disclosure to such manufacturers nor any attempt to reduce to practice, but endeavored to sell patents upon prior devices and failed on the express ground that they did not possess the advantages found in the present invention, Held, that said claims to early conception and disclosure are entitled to no consideration. *Hope, Jr. v. Voight, C. D. 1905, 115 O. G. 1585. 380. Held, that the construction of a metal bar with corrugated sides, the relative posi- tion of the corrugations on the respective sides being accidental, is not evidence of con- ception of the invention set forth in a claim for a metal bar provided with interruptions in the surface and having substantially the same cross-sectional area throughout its length. Johnson v. Mucser, C. D. 1900, 124 O. G. 3533. 381. Where experiments were made which, in the light of present knowledge, seem to suggest the invention in issue, but it appears that such invention was not, in fact, presented to the minds of those familiar with them. Held, that such experiments do not show conception of the invention. Sherwood v. Drewson. C. D. 1906, 124 O. G. 1205. 382. The mere idea that there ought to be an arrangement to strip a stocking from a board or form on which it was mounted and return the board to the one who placed the stockings thereon, and the illustration of this idea by the originator thereof by stripping a stocking from a form by the passage thereof between his hand and the edge of a table does not amount to a conception of an invention. No mechanism was described by which the desired result could be obtained. Invention consists of the conception of the idea and of means for putting it in practice and producing the desired result. Until the latter concep- tion is complete and ready to be put in some practical form there is no available conception of the invention within the meaning of the patent law. (Mergenthaler v. Scudder (C. D. 1897, 724, 81 O. G. 1417, 11 App. D. C. 264. 276.) *Burson v. Vogel, C. D. 1907, 131 O. G. 942. 383. Merc knowledge of an invention in this country by a foreign inventor or his agent. Held, not equivalent to a conception of the invention in this country. Guinifet, Benoit, and Nicault v. Wictorsohn, C. D. 1907, 131 O. G. 1685. XI. CONSOLIUATION Ol' Inticrit.rences. 384. Where one interference is declared be- tween a pending application of S. and a patent to R. and another interference is declared between the said pending application of S. and an application for a reissue of the patent to R., Held, that on a consolidation of the two interferences the same will continue as to counts corresponding to claims in the pat- ent, even though these claims were originally presented in the reissue application and sub- sequently canceled therefrom on reference to an English patent to S. Read v. Scott, C. D. 1902, 100 O. G. 449. 385. The propriety of consolidating an in- terference covering an article with an inter- ference covering a machine for making that article is seriously doubted. Klein v. Groebli, C. D. 1904, 110 O. G. 305. 386. Where in one interference the junior party has to establish his case by a preponder- ance of evidence, but in the other interference he has to establish his case beyond a reason- able doubt. Held, that a stipulation to consoli- date the interferences will not be approved. Id. 387. The objects sought to be attained by consolidating two interferences can be ac- complished by stipulating that the record taken in one interference can be used in the other, under the provisions of Rule 157. Id. 388. Where more than two parties file ap- plications claiming substantially the same pat- entable subject-matter, an interference exists lietwcen each two of these applications; but it is proper to consolidate them for hearing and determination as one case. *Cosper v. Gold & Gold, Cosper v. Gold, C. D. 1911, 168 O. G. 787. XII. CoMP.^NION Interferencks. 389. The request in one interference for an extension of time, so that testimony in a INTERFERENCE, XIII, XIV, (a). 197 companion interference between the same par- ties may be taken at the same time, must be denied upon the protest of the opposing party. The office cannot without consobdating the interferences undertake to conduct them to- gether. Lipe V. Miller, C. D. 1903, in? O. G. 16C2. 390. Where in an interference between three parties, C, N., and R., the examiner of in- terferences finds from the testimony that C. is the prior inventor and thereupon refers a companion interference between N. and R. to the commissioner under Rule 12G in order that it may be dissolved without a decision on the question of priority, on the ground that C. is the first inventor. Held, that the interference should proceed to a final decision on the ques- tion of priority, inasmuch as the issue in the interference N. v. R. is not the same as the issue in the prior interference and as the decision of the e.xaminer of interferences in the prior interference that C. is the first inven- tor is not final, but is subject to appeal. New- ell v. Rose, C. D. 1905, 114 O. G. 337. 391. Where a party having two applications involved in companion interferences presents amendments cancelling the interfering claims from one application and adding them to the other for the purpose of withdraw'ing one ap- plication from interference and concealing its subject-matter. Held, that the request of the primary examier that the interference be transmitted to him for the purpose of consid- ering these amendments should be granted, as the other party will not be seriously in- convenienced by the slight delay caused by taking the desired action. Behrend v. Lamme, C. D. 1907, 120 O. G. 1065. 392. Where an amendment to an application in interference is filed which purports to put the application in condition for another inter- ference, the primary examiner should give the amendment consideration sufficient to deter- mine whether the application is, in fact, made ready for the additional interference. E.x parte Neidich, C. D. 1911, 172 O. G. 551. 393. Where the examiner finds that an amendment proposed for an application in interference puts the application in condition for another interference and the additional interference is otherwise ready for declara- tion, he should request authority to enter the proposed amendment and to declare the addi- tional interference without waiting for the termination of the pending interference. Id. 394. Where the examiner finds that a pro- pi iscd amendment to an application in inter- ference purporting to put the application in condition for another interference does not, in fact, put the application in condition for the proposed interference, or that it disturbs the condition of the application with respect to the pending interference, or that for any other reason the proposed amendment should not be received and the proposed interference declared, he should refuse to enter said amend- ment or to further consider the same prior to the determination of the pending interference. Id. XIII. Copvixr. Claims ok Opponent. 395. The claims of the appellant copied from a patent granted to another upon a print- ing press, Held, to have no proper foundation in the application as filed and to constitute new matter injected by amendment. Decision re- jecting claims affirmed. *In re Scott, C. D. 1005, 117 O. G. 278. 396. Where an applicant copies a claim from a patent for the purpose of interfer- ence and the examiner holds that such claim is not patentable in view of the prior art. Held, that from this action of the examiner appeal lies to the examiners-in-chief and that the question of the patentability of the claim will not be reviewed on petition. Ex parte McCullough, C. D. 1910, 155 O. G. 305. XIV. Declaration of. (a) III General. 397. Where the claims of the applications were rejected and the examiner declared the interference, he in effect withdrew the rejec- tion of the claims; but it is bad practice to declare an interference before the parties have been notified that there is an interference and given an opportunity to remove the objections and overcome the references. Cahn v. Schwei- nitz V. Dolly v. Geisler, C. D. 1899, 8G O. G. if>3:!. 398. Before an interference between two pending applications is declared one of the pending applications should be placed in con- dition for allowance, .\fter one of the inter- fering applications is in condition for allow- ance the declaration of the interference should not be delayed any longer than is necessary to settle "all pending questions" in the other application which relate to the issue of the 198 INTERFERENCE, XIV, (b). interference or which relate to what might eventually become a part of the issue of the interference. Ex parte Spoon, C. D. TJUl, 07 O. G. 1376. 399. When one of the interfering applica- tions is in condition for allowance, if there be any claims in the other application which are not to form part of the controversy or never could form part of the controversy it is not necessary that such claims should be first ad- judged to be patentable or that they be placed in condition for allowance before the declara- tion of the interference. A prompt declara- tion of the interference is not only desirable, but it is due to the applicant whose case is in condition for allowance. (Rule 96.) Id. 400. Where one of the interfering parties is a patentee, the same reasoning applies. It is only necessary that those claims in the ap- plication which are to form counts of the issue should be placed in condition for allow- ance before the declaration of the interference. It is not necessary for questions to be first set- tled which do not in any way affect nor never could affect the interference issue. Ex parte Spoon, C. D. 1901, 97 O. G. 1370. 401. The requirement of Rule 97 that the notices of interference should disclose "the invention claimed" means that the invention claimed should be disclosed by its title. HofT- stetter v. Kahn, C. D. 1902, 99 O. G. 1624. 402. The primary examiner, in preparing the statement prescribed by Rule 97 for use by the examiner of interferences should arrange the order of the parties to the interference in the inverse chronological order of the filing dates of the applications containing the inter- fering claims. Jackson v. Patten, C. D. 1910, l.iO O. G. 2C5. (b) Stiggesliiig Claims. 403. Where an applicant fails to make a claim suggested by the examiner for the pur- pose of interference and as a result the exam- iner rejects any claim of the application for the reason that failure to make the claim and to become a party to the interference will "be interpreted as equivalent to a concession," Held, that appellant's remedy is by appeal to the examiners-in-chief and not by petition to the commissioner. Ex parte Cain, C. D. 1S99, 87 O. G. 1397. 404. Where a claim is suggested to an ap- plicant and every opportunity afforded him to place his application in condition for inter- ference, Held, that his neglect to do so fairly raises the presumption that he is not the in- ventor of the subject-matter of the interfer- ence. Id. 405. The purpose of the recent practice of the office is not to avoid interferences between applications because of some differences in the form of the claims, but merely by sug- gestions to bring the parties together upon an issue which shall be as nearly as possible the same as the claims of the parties, so as to reduce to a minimum, the chances for mo- tions and controversies during the progress of the interference based upon differences in the claims. Ex parte Thompson, C. D. 1902, 98 O. G. 227. 406. Where two parties make claims to the same real invention, neither of which claims is patentable over the other, but neither party can make a claim in the words of the other be- cause of limitations therein to immaterial fea- tures not disclosed by him, Held, that the ex- aminer may, under Rule 90, suggest to both parties a claim covering the real invention common to the two cases and leaving out im- material limitations. Id. 407. Where the examiner suggested claims under Rule 96 and the applicant argued that they were not patentable and asked the ex- aminer to point out why he regarded them as patentable and the particular features re- garded as novel, Held, that the examiner prop- erly refused to enter into a discussion of the matter in advance of the declaration of the proposed interference. Ex parte Sutton and Steele, C. D. 1903, 107 O. G. 541. 408. Where the examiner suggests claims to an applicant for the purpose of interference, un36. (d) Application and Patent. 425. The commissioner is warranted in tak- ing jurisdiction of and granting a petition to restrain an e.xaminer from declaring an in- terference when it clearly appears that the ex- aminer's intended action is contrary to the practice of the office as indicated by the de- cisions of the commissioner. (Citing ex parte Baker, 64 MS. Dec, 71.) Ex parte Whitney, C. D. 1898, 83 O. G. 1659. 426. The office is not bound to declare an interference between a patent and an appli- cation in order to give the patentee the op- portunity of contesting the grant of a patent to the applicant because in its judgment the patentee's rights would be infringed or abridged by granting a patent on a pending application. Id. 427. The examiner should not make an issue for the purpose of bringing about an inter- ference. The applicants should make the is- sues by their claims. If an examiner desires the issue to be different, he should arrive at that result by requiring the claims to be amended by the applicants. (Citing Ham- mond v. Hart, ante, .■.2, 83 O. G. 743.) Id. 428. The office has no control over a pat- entee to require him to amend his claims. Un- less an applicant make substantially the same claim as the patentee no interference can be declared. Id. 429. For the purpose of declaring an inter- ference the claims of a patent must be taken as they read. The office has no authority to say that any of the limitations contained in the claims of a patent are immaterial and un- essential. Presumably the patentee did not put any unnecessary limitations in his claims. Id. 430. Where it appears that an interference was declared prior to the decision in Ham- mond v. Hart (ante, .52, 83 O. G. 743) on the ground that the subject-matter of the issue dominated the claims of one of the parties, and no testimony has been taken, delay in bringing a motion to dissolve on the ground that no interference exists under the present practice may be ignored and the motion trans- mitted to the primary examiner. Myers v. Hammel, C. D. 1898, 85 O. G. 1397. 431. Where the claims of an application are rejected upon references and without over- coming the rejection the applicant petitions to have an interference declared with a pat- ent to another party granted while his appli- cation was pending. Held, that his remedy is by an appeal from the rejection when it shall have been repeated. Ex parte Holland, C. D. 1902, 99 O. G. 2.548. 432. Where it appears that the invention as claimed in a patent is the same as an inven- tion claimed by an applicant. Held, that there is an interference notwithstanding the fact that the claims made by the parties are not couched in the same words. Ex parte Card and Card, C. D. 1904, 112 O. G. 499. 433. Where it appears that claims made by an applicant are not materially different from the claims made in a patent and that the ap- plicant's claims are not patentable over the invention defined by the claims in the patent. Held, that the applicant cannot be granted a patent unless he can establish the fact that he is the prior inventor in an interference pro- ceeding. Id. 434. Held, that the ruling that the real in- vention claimed by a patentee and an appli- cant is the same is not necessarily inconsistent with the ruling that the applicant should pre- sent a claim in different form to establish the issue of an interference. There may be a real conflict notwithstanding difference in wording of claims. Id. 435. The requirement as to the form of a claim is not for the purpose of bringing about a conflict, but to define the conflicting subject- INTERFERENCE, XIV, (e), (f). 201 matter in the same words in both cases, so as to avoid confusion and prevent disputes. Id. 436. An applicant cannot be permitted to avoid an interference w^ith a patentee by care- fully avoiding the words of the patentee's claim when the real invention claimed is the same, and therefore the office is justified in suggesting the patentee's claims to the appli- cant and stating that if they are not made cer- tain of the claims in the application will be rejected, as they are regarded as covering the same patentable invention as covered by the claims of the patent. Id. 437. Held, that in suggesting claims of a patent to an applicant it is proper to fi.x a limit of time for the applicant to make them. In regard to interferences it is a matter of practical necessity and has always been con- sidered proper to fix time limits, because of the interests of the opposing party. Id. 438. When an interference is declared be- tween an applicant and a patentee and the examiner is of the opinion that the applicant has presented claims which do not differ ma- terially from the issue of the interference, he should append to the declaration of the in- terference a statement that such claims, speci- fying them by number, will be held subject to the decision in the interference. If, in his opinion, there are no such claims, he should append to the declaration a statement to that eftect. Earll v. Love, C. D. 1909, 140 O. G. 1209. (e) Parly Already in Interference. 439. Where an amendment to an applica- tion in interference is filed which purports to put the application in condition for another interference, the primary examiner should give the amendment consideration sufficient to determine whether the application is, in fact, made ready for the additional interfer- ence. Hewitt V. Potter, C. D. 190.'), ll.") O. G. .'■)69. 440. Where the examiner finds that an amendment proposed for an application in in- terference puts the application in condition for another interference and the additional interference is otherwise ready for declara- tion, he should request authority to enter the proposed amendment and to declare the addi- tional interference without waiting for the termination of the pending interference. Id. 441. Where the e.xaminer finds that a pro- posed amendment to an application in inter- ference purporting to put the application in condition for another interference does not, in fact, put the application in condition for the proposed interference or that it disturbs the condition of the application with respect to the pending interference or that for any other reason the proposed amendment should not be received and the proposed interference declared, he should refuse to enter said amend- ment or to further consider the same prior to the determination of the pending interfer- ence. Id. 442. Where the claims of an application are allowable and the case ready to be passed to issue except for a probable interference with certain claims of a pending application of another party, C, now involved in an inter- ference with a third party upon other claims for an entirely independent subject-matter. Held, that the examiner should request juris- diction of the application of C. for the pur- pose of suggesting therein the claims of the prospective interference and for the purpose of entering the amendment and of declaring the interference if C. makes the suggested claims. Ex parte Brakey, C. D. 1910, 156 O. G. 797. (f) Pulling Case in Condition for Interfer- ence. 443. Rule 9G means that when the formal requirements of an application — such, for ex- ample, as the requirement for a new drawing or for an amended oath or for further action upon rejected claims which are not involved in the interference or for analogous changes — have not been complied with the interference shall be declared, so that the party whose ap- plication is in proper form shall not be un- necessarily delayed in the further prosecution of his application. Hammond v. Hart, C. D. 1898, 8:i O. G. 743. 444. Rule 96 does not mean that the ex- aminer declaring the interference can ignore the requirement that the claims of the party in fault must be put in such condition that they will not require alteration. If Rule 96 means that, then Rule 9."> means nothing. The two rules should be construed in connection with Rules 93 and 94, so as to give vitality to all. Id. 445. Under a proper interpretation of the rules there is no justification for the declara- tion of an interference between the allowed 202 INTERFERENCE, XIV, (g). claims of one application and the rejected claims of another application. Two applica- tions do not interfere in such a case. Id. (g) Subject-Mailer Must Conflict. 446. So far as the case ex parte Upton (C. D. 1884, 26, 27 O. G. 99) holds that an inter- ference should be declared between two ap- plications or between an application and a prior patent whose claims are not substan- tially identical in tenor and scope it is not well founded in law, and this decision is over- ruled. Hammond v. Hart, C. D. 1898, 83 O. G. 743. 447. There is no different rule of law appli- cable to an interference when it is declared between two applications than when it is de- clared between an application and an unex- pired patent. The same principles which de- termine whether there would be an actual in- terference must apply alike in each of the con- ditions in which the cases are when before the patent office to determine whether they would interfere. (Kinyon v. Carter, C. D. 1894, 2, 00 O. G. 513, overruled.) Id. 448. .An interference can only be instituted for the purpose of determining the question of priority of invention between two or more parties claiming substantially the same patent- able invention; that of necessity there must be allowed claims to all parties before an in- terference can be declared, and that not only a patent and an application must claim in whole or in part the same invention, but also two applications must claim in whole or in part the same invention before an interference can be declared. Id. 449. Where the issue of the interference was Wolfenden's third claim and involved his first, second, and fourth claims. Held, that as the issue is not the first, second, and fourth claims they should be dropped from the inter- ference, and if the examiner is of the opinion that there is no patentable invention in these claims over the subject-matter of the issue it would be better practice for him to notify Wolfenden that in the event of the interfer- ence being determined adversely to him such claims would stand rejected as involving no patentable invention. Wolfenden v. Price, C. D. 1898, 83 O. G. 1801. 450. Where Price's claim involved in the issue, which is Wolfenden's third claim, in- cludes certain limitations which are not stated in Wolfenden's claims and Wolfenden's claim contains a limitation not found in Price's claim, Held, that notwithstanding it is urged that these differences are immaterial and may be disregarded there is no interference in fact. Id. 451. The patent office is no more competent than the courts to say in declaring an inter- ference that an element which an applicant or a patentee has placed in his claim is an imma- terial one. Id. 452. An interference is not sufficiently clear and definite which requires that certain limi- tations in the claims of one party should be held to be immaterial and that other limita- tions should be read into the claims of either one or the other party to the proposed inter- ference in order to make them the issue of the interference. Id. 453. A claim may be patentable in the opin- ion of the examiner which does not contain certain limitations, and it is within his prov- ince, when he believes it is necessary for him to declare an interference, to indicate to the parties a patentable claim as the issue of the interference which shall omit imtnaterial ele- ments and thereby make it unnecessary for the office to hold that the issue and the claims are different from what they read. Id. 454. It is not necessary that identical lan- guage should be employed in the claims of every party to the interference; but when dif- ferent words are used they must mean and refer to the same thing. Id. 455. The case of Hammond v. Hart (ante, .52, 83 O. G. 743) was intended to bring about a practice in the office that should result in making the issue of an interference both def- inite and clear, and to that end to cause the parties to the proposed interference to claim substantially the same patentable invention, so as to obviate the many motions and appeals that have unnecessarily arisen in the office. Id. 45G. The present practice requires that in- terferences should be declared only when the claims involved are substantially identical in scope. Ex parte Thomas, C. D. 1898, 84 O. G. 1729. 457. Where a claim has certain limitations introduced to satisfy the requirements of the office as to its allowability over a reference and when in view of such limitations the claim is allowed, it cannot be said that such limita- tions are immaterial in order to declare an interference. INTERFERENCE, XIV, (h), XV. 203 (h) Claiiiis; Genus and Species. 458. A generic and a spccilic claim do not interfere, and it does not conflict with public interest to send a generic claim to issue after a specific claim has been patented. ( Draw- baugh V. Blake, C. D. 1883, 17, 23 O. G. 1221 ; Reed v. Landman, C. D. 1891, 73, 55 O. G. 1275, cited.) Hammond v. Hart, C. D. 1898, 83 O. G. 743. 459. Where two applications are concurrent- ly pending having claims of different scope drawn on the same structure, there is no good reason why the examiner should not give the applicant making the specific or narrow claim an opportunity, by suggestion, if necessary, to make the broader claim. If the suggestion is followed, then the parties would be making a claim identical in tenor and scope, and an interference will properly and naturally fol- low. To this extent ex parte Weeden (C. D. 1892, 185, 60 O. G. 1191) overruled. Id. 460. Grimm has made a broad claim and Dolan a narrow claim, Held, that both parties are not claiming substantially the same inven- tion, and under Hammond v. Harte (ante, 52, 83 O. G. 743) an interference does not prop- erly arise. Grimm v. Dolan, C. D. 1898, 83 O. G. 1209. 461. If Dolan is the inventor of the broad invention, he should make the broad claim of the issue. As the claims now stand there is no interference in fact, as an interference should not be declared between dominated and dominating claims. (Citing Hammond v. Hart, ante, 52, 83 O. G. 743.) Id. 462. Interference in fact exists where both parties make generic claims, although their structures may be specifically different. Miller V. Kelley, 84 O. G. 1144. 463. While under the decision in the case of Hammond v. Hart (ante, 52, 83 O. G. 743) and Grimm v. Dolan (ante, 70, 83 O. G. 1209) it would be irregular to declare an interfer- ence until both parlies made the claims in issue. Held, that in an interference in which decision on priority had been rendered and in which the party not making the claims in issue could make them and had submitted an amendment containing such claims the inter- ference should not be dissolved. Id. XV. Disclaimer. Concession. Etc. 464. On a motion for dissolution brought upon the ground of no interference in fact. the question of abandonment cannot be con- sidered. The proper ground would be lack of right to make the claim of the issue. Car- penter V. Mallory, C. D. 1898, 85 O. G. 291. 465. After the dissolution of an interfer- ence the question of the abandonment of the issues by one of the parties is ex parte, and the other party cannot be heard in the matter. Id. 466. Where after the argument the plain- tiff was permitted to file a disclaimer to cer- tain statements in the specification which were broader than the claims when construed as contended for. Held, that the admission of the disclaimer was proper. **Carnegie Steel Company, Limited v. Cambria Iron Company, C. D. 1902, 99 O. G. 1866. 467. The power to disclaim is a beneficial one and ought not to be denied except where it is resorted to for a fraudulent and decep- tive purpose. A disclaimer may extend to a part of the specification as well as to a dis- tinct claim. **Id. 468. A disclaimer the purpose of which is to re-form or alter the description of the in- vention or convert the claim for one thing into something else is objectionable, since pat- ents can only be amended for mistakes of this kind by a reissue. **Id. 469. Where O. deliberately states in answer to a question propounded by his own counsel that he does not claim to be the inventor of the matter in controversy. Held, that priority of invention cannot be awarded to him. •Oliver v. Felbel, C. D. 1902, 100 O. G. 2389. 470. Where each party files a written aban- donment of the invention alleging that it is not patentable. Held, that the interference should be dissolved. Krakau v. Harding, C. D. 1903, 107 O. G. 1662. 471. Where both parties abandon the inven- tion, there is a statutory bar to the grant of a patent to either, and the examiner of interfer- ences should call attention to the fact under Rule 126. Id. 472. Where an interference is declared be- tween an applicant and a patentee and the ap- plicant urges that the claim of the issue is not patentable to himself. Held, that the office will enter into no controversy with him, but will accept his admission and dissolve the interference. Lipe v. Miller, C. D. 1904, 109 O. G. 1608. 473. Held, that the only abandonment which can be accepted under Rule 125 is an unequiv- 204 INTERFERENCE, XVI, XVII, (a). ocal, unconditional, unlimited declaration of aliandonment of the invention which forms the subject-matter of the issue of the inter- ference under consideration. Gabrielson v. Felbel, C. D. lOnr,, 121 O. G. 691. 474. Where appeal is taken from a decision of the examiners-in-chief on the question of priority and the appellee files a motion to dismiss the appeal, accompanied by a disclaim- er of the invention in issue signed by the ap- pellant, Held, that the disclaimer will be considered a concurrence in the motion of the appellee to dismiss the appeal. Wert v. Borst and Groscop, C. D. 1907, 120 O. G. 2191. XVI. DlSCI,OSURE. 475. Disclosure in the sense of the patent law must be made ordinarily to persons com- petent to understand and appreciate the al- leged invention. Merely showing a device and a drawing to witnesses who do not under- stand the invention cannot be considered a dis- closure. *Eastman v. Houston, C. D. 1901, 95 O. G. 2064. 476. A disclosure of the invention to a party skilled in the art to which the invention be- longs is sufficient to be regarded as a disclo- sure in the sense of the patent law. Pupin v. Hutin and Leblanc v. Stone, C. D. 1902, 100 O. G. 9:!i. 477. A disclosure by an inventor that it was his intention to do a certain thing without disclosing the means by which that thing was to be accomplished. Held, not to be sufficient to establish the fact of conception and dis- closure. Brooks v. Hillard, C. D. 190.1, lOG O. G. 1237. 478. Where an inventor alleges that he dis- closed an invention to a draftsman for the purpose of having drawings made of the In- vention disclosed to him and neither the draw- ings produced by the draftsman nor the ma- chines built therefrom contain the invention, it is evident that either the invention had not been conceived or that it had not been dis- closed as claimed. *Peters v. Pike, Jr., C. D. 1909, H:i O. G. 2.59. XVII. Dissolution. (a) In General. 479. Where it was moved to dissolve an interference for the reason that the question of the interference Is res adjudieata as be- tween the parties, that the question of priority having been determined by a court of compe- tent jurisdiction could not be retried by the same parties in the patent office, and that one of the parties was estopped from asserting his right to the invention. Held, that these ques- tions should not be passed upon on an inter- locutory motion, as they are such questions as relate to the merits of the interference and would more properly form the basis of a judg- ment of priority of invention than for the dissolution of the interference. Roth v. Brown and Stillman, C. D. 1898, 8:! O. G. r,9X 480. It is not to be presumed that an ex- aminer failed to consider a reference cited by a previous examiner. By such considera- tion and the subsequent declaration of an Inter- ference the second examiner practically de- cided the Issue patentable in view of the ref- erence, and his decision on this point is not reviewable under Rule 124. StupakofF v. Johnson, C. D. 1898, 84 O. G. 982. 481. While, notwithstanding that under the present practice as defined in Hammond v. Hart (ante, 52, 83 O. G. 743) the interference should not have been declared upon the pres- ent Invention until both parties directly and definitely claimed the precise subject-matter, the Issue has been accepted by the parties, no motion to dissolve having been made and no question as to interference In fact raised be- fore the examiner of interferences or the ex- amlners-in-chief, it not being clear that the issue does not fairly well define the inven- tion intended by each of the parties, and dis- solution would necessarily be followed by dec- laration of a new interference better defined, perhaps, but yet In real subject-matter sub- stantially the issue on which testimony was taken, the dissolution is not necessary or jus- tifiable. Orourke v. Gillespie, C. D. 1898, 84 O. G. 984. 482. The examiner of interferences cannot dissolve an Interference except on the deci- sion of the primary examiner upon a motion to disssolve brought under Rule 122 and trans- mitted as provided for by that rule. Wethey v. Roberts, C. D. 1898, 84 O. G. 1586. 483. Motion for dissolution cannot be made in the first Instance before the primary ex- aminer, although the interference is before him for the consideration of another motion, but it must be made before and transmitted by the examiner of interferences before the pri- mary examiner can take jurisdiction of it. Howard v. Hey, C. D. 1899, 86 O. G. 184. INTERFERENCE, XVII, (a). 205 484. It is well settled that when a motion for dissolution is transmitted to the primary examiner he does not have jurisdiction of the interference for all purposes, but merely to decide the particular motion which has been transmitted to him. Id. 485. The four grounds for dissolution set forth in Rule 122 — namely, interference in fact, irregularity, patentability, and right to make the claim — have distinct and independ- ent meanings, which should not be confused by parties bringing motions under that rule. Each ground which it is desired to urge should be separately alleged and should be given the proper title specified in the rule. Woodward V. Newton, C. D. 1899, 86 O. G. 490. 488. It is to be presumed that claims which have not been specifically rejected are regard- ed as allowable. Even if claims have been re- jected their inclusion in an interference is in effect a waiver of that rejection. The failure of the examiner to state that the claims in- cluded are allowable is therefore no good ground for a dissolution of an interference. Sadtler v. Carmichael v. Smith, C. D. 1899, 86 O. G. 1498. 487. By the decision of Calm v. Dolley et al. (C. D. 1898, 194, 84 O. G. 1869) it was in- tended to dissolve the whole interference, al- though no motion to dissolve as to Calm was before the Commissioner when the said deci- sion was made, as the dissolution was war- ranted and in the interest of all the parties. Ex parte Calm. C. D. 1899, 87 O. G. 1397. 488. The commissioner of patents is vested with power to dissolve an interference on his own motion whenever he considers that jus- tice and equity demand that it should be done. (Bender v. Hoffman, C. D. 1898, 262, 8.5 O. G. 1737, and Bechman v. Wood, C. D. 1897, 188, 81 O. G. 2087, cited.) Id. 489. In case of the discovery of new facts after granting the motion to transmit to the primary examiner he may consider such facts, provided due and timely notice thereof be given to the party opposing the motion to dis- solve. Wells v. Packer, C. D. 1900. 90 O. G. 1947. 490. Where after the limit of appeal has expired a party makes a motion before the commissioner to restore the jurisdiction of the examiner of interferences to consider a motion to dissolve. Held, that the motion is fatally defective unless accompanied by the proposed motion for dissolution. Nieder- meyer v. Walton, C. D. 1901, 97 O. G. 2306. 491. Where the issue is not vague or in- definite, but it appears that the examiner places a different construction upon it from that given it by the parties. Held, that this does not alone constitute a good ground for dis- solving the interference. Annand v. Spalck- haver, C. D. 1901, 97 O. G. 2741. 492. .\n interference should not be dissolv- ed to permit the parties to make claims broad- er than the present issue and broader than what the examiner regards as patentable mere- ly because one of the parties wishes to make such claims and contest the question of pat- entability. Annand v. Spalckhaver, C. D. 1901, 97 O. G. 2083. 493. Where a party makes a motion to dis- solve in order to permit him to make claims broader than the issue, Held, that there is no justification for a dissolution where the claims have not been presented by both parties and where they would not be regarded as patent- able even if presented. Id. 494. Where a party made a motion to dis- solve on all of the grounds mentioned in Rule 122 and the primary examiner decided only two of those grounds, Held, on appeal that the case will be remanded to the exam- iner with instructions to decide all grounds alleged. Oldham and Padbury v. Peck v. Clement v. Richards, C. D. 1902, 99 O. G. 670. 495. Where it appears that the subject-mat- ter of the interference is not patentable. Held, that a decision upon the question of priority of invention will not be rendered, but the interference will be dissolved. Wright v. Lorenz, C. D. 1902, 101 O. G. 664. 49G. Where as a reason for permitting a second motion to dissolve in a case a party alleges that the examiner's decision indicated an interpretation of the issue at variance with that placed upon it by the petitioner. Held, that such difference of opinion is not a suf- ficient reason for a dissolution. Richards v. Kletzker & Goesel, C. D. 1902, 98 O. G. 1709. 497. Where after a motion to dissolve has been transmitted to the primary examiner the moving party discovers a new reference which he wishes to urge in support of his motion. Held, that it is not necessary to amend the motion to include that reference, but merely to give reasonable notice thereof to the op- posing party before the hearing. Kurz v. Jackson and Pierce, C. D. 1902, 98 O. G. 2:)8r,. 498. A motion to dissolve alleging that the issue is not patentable if construed to be 206 INTERFERENCE, XVII, (a). broad enough to apply to both devices, Held, raises only the question of patentability and not interference in fact. Appeal dismissed. White V. Thomson, C. D. 1002, 101 O. G. 1371. 499. Where on a motion to dissolve an in- terference the examiner holds that certain counts are unpatentable and other counts are patentable. Held, that the interference should be dissolved only as to the counts which are held unpatentable and that it should be con- tinued as to those counts held to be patentable. Hillard v. Eckert, C. D. 1902, 101 O. G. 1831. 500. The statute requiring reconsideration by the examiner where the applicant persists in his claim has no application to a decision upon a motion to dissolve an interference upon the ground that one of the parties has no right to make the claim of the issue. New- comb V. Lemp, C. D. 1904, 110 O. G. 307. 501. A party may obtain a reconsideration of a motion for dissolution only by showing good cause which justifies a rehearing. Id. 502. Where a motion for dissolution alleges all of the grounds stated in the rule and the examiner decides that the claims are not pat- entable to cither party in view of references and that therefore there is no interference in fact and there was irregularity in the declara- tion, Held, that his decision was irregular and incomplete. Owens v. Richardson, Jr., C. D. 1004, 111 O. G. 1037. 503. The several grounds for dissolution mentioned in the rule mean different things and should be separately considered and de- cided. Id. 504. The decision of Bechman v. Wood (C. D. 1899, 453, 89 O. G. 2459) does not involve the question of the regularity of the declara- tion of an interference or the question of in- terference in fact, but affects only the question of priority of invention, and its effect can only be determined after consideration of the testimony in passing upon that question. Bech- man v. Southgate, C. D. 1904, 111 O. G. 805. 505. The questions presented on motions to dissolve do not relate in any way to the ques- tion of priority of invention. They merely re- late to questions as to whether or not the interference should continue, and consequent- ly whether or not there is such an interfer- ence between the respective applications as to warrant the determination of the question of priority of invention under the provisions of section 4904 of the Revised Statutes. Jarvis V. Quincy v. Jarvis & Blakeslee v. Baron v. Briggs and Shepard. C. P, 1904, 113 O. G. 550. 506. When some of the grounds of a sec- ond motion for dissolution are the same as those of the prior motion which was denied by the examiner and on appeal and no show- ing is made why the same questions should be reconsidered. Held, that the second mo- tion, so far as it relates to the grounds of the earlier motion, should not be transmitted. Hcdiund v. Curtis, C. D. 1004, 113 O. G. 1410. 507. Where counts are added to the issue of an interference liy motion under Rule 109, Held, that a motion for dissolution may be made thereafter as to the new counts. Pfingst V. Anderson, C. D. 1905, 114 O. G. 264. 508. Where an interference has been dis- solved, Held, that neither party has a right to be heard upon the consideration of claims subsequently presented by the other parties to the interference. Meigs, Hughes and Stout v. Gcrdom, C. D. 1005, 116 O. G. 1184. 509. Where after the time for motions al- lowed by the rules has expired the examiner secures jurisdiction to consider the question of patentability of some counts of the issue. Held, that the parties cannot demand that he considers the other counts also. Ingoldsby V. Bellows, C. D. 1905, 116 O. G. 2532. 510. Where an interference is dissolved on motion on the ground that a party's device is inoperative, Held, that in the ex parte treat- ment of the application thereafter the exam- iner may receive affidavits upon the question of operativeness and is not bound by the rul- ing in the interference. Ex parte Mark, C. D. 1005, 117 O. G. 2636. 511. It does not follow because the exam- iner explained the meaning of terms of the issue in his decision upon motion for disso- lution that the issue is not so clear as to be readily understood. Pryor v. Ball v. Brand, C. D. 1905, 119 O. G. 653. 512. Where the motion is brought on all grounds mentioned in Rule 122, but the argu- ment before the primary examiner is con- fined to questions of patentability and right to make the claims. Held, that the primary examiner properly disposed of the grounds of irregularity in declaration and non-interfer- ence in fact by calling attention to the ab- sence of argument thereon, denying the mo- tion as to them, and fixing limit of appeal. Harnisch v. Gueniffet, Benoit, and Nicault, C. D. 1905, 117 O. G. 1492. 513. Where the examiner upon motion for dissolution on the ground of non-interference in fact stated that the issue did not read upon INTERFERENCE, XVII, (a). 207 the construction of the moving party, and for that reason granted the motion, Held, that it does not appear that there has been any prop- er decision upon the question of interference in fact, and that this question will not, there- fore, be decided by the commissioner on ap- peal, but that the case will be remanded to the primary examiner for decision on the motion as brought. Kaczander v. Hodges and Hodges, C. D. 1905, 118 O. G. 836. 514. Where it appeared that the examiner's decision granting motion for dissolution on ground of non-interference in fact was based upon the lack of right of party to claim the issue, which question was not presented by the motion, and the case was remanded for decision on the motion as brought. Held, that as the examiner was of the opinion that one of the parties was not entitled to claim the issue he might hear the parties upon this question and render a decision thereon. Id. 515. The four groimds for dissolving inter- ferences mentioned in Rule 122 relate, re- spectively, to very different matters and should not be confused with one another. (See Woodward v. Newton, C. D. 1899, 13, 86 O. G. 490, and Owens v. Richardson, C. D. 1904, 289, 111 O. G. 1037.) Id. 516. The question raised by the contention of non-interference in fact is whether the claims as found in the cases of the respective parties dctine one and the same invention, and this question is independent of the patenta- bility of the claims, the right of the parties to make them, or any irregularity in the decla- ration of interference. Id. 517. Where party moves for dissolution of interference in order to prosecute his applica- tion and secure the allowance of claims broad- er than the issues to form the issues of a new interference. Held, that his motion will be de- nied when based on hypothetical grounds, no reason appearing for believing that broader claims would be allowable and no new claims being offered nor any averment made that the party has proofs to offer for broader subject- matter different from the proofs which he may have of the present issue. Phelps v. Wormlcy v. McCullough, C. D. 190:>, 118 O. G. 1069. 518. Where dissolution is sought or ground that the narrowness of the issue remaining after dissolution as to broader issue precludes proper termination of the question of prior- ity. Held, that proofs may be offered under the preliminary statements on file such as will enable the office to determine the question of priority as to broader claims which may be I)resented later and that the interference should not be dissolved. Id. 519. When parties intend to make other claims to the subject-matter in issue after termination of the interference, they should present all their proofs relating to such sub- ject-matter in the one proceeding. Id. 520. Where the questions raised on motion for dissolution are none other than those of the rights of parties to make claims and of patentability. Held, that the motion should not be granted on the ground of non-interference in fact. Thullen v. Young and Townsend, C. D. 1905, 118 O. G. 2251. 521. Held, that alleged improper placing of the burden of proof forms no proper basis for motion for dissolution and that the ques- tion should be presented by separate motion to shift the burden to the other party. Id. 522. When the contentions on a motion for dissolution amount to the denial of the right of the contending party to make claims. Held, that the party is not compelled to insist upon the claims, but may abandon them. Votey v. Gaily, C. D. 1905, 119 O. G. 339. 523. Where a motion for dissolution rested only on limitations read into the claims by the moving party and not stated in such claims, Held, that the motion was properly denied. Id. 524. Held, that party is not estopped from bringing motions alleging that the interfer- ence was improperly declared because he made the claim constituting the issue and filed a preliminary statement relating to it. Van Auken v. Osborne v. Harrison v. Canfield and \'an .-Kukcn, C. D. 1905, 119 O. G. 1584. 525. Where upon appeal brought on the ground of non-interference in fact the ques- tions raised go to the right of a party to make claims, the appeal must be dismissed. Contentions which go to the right of a party to make claims can afford no proper basis for dissolution upon the ground of non-inter- ference in fact. Blackmore v. Hall, C. D. 1905. 119 O. G. 2523. 52G. Where upon motion for dissolution a party contends that the terms of the issue are erroneously and misleadingly used in his op- ponent's application, the question raised is one of right to make claim and is not one of interference in fact. Id. 527. Where an applicant secures a dissolu- tion of an interference upon his allegation that the claims are not patentable. Held, that 208 INTERFERENCE, XVII, (a). he should be required to cancel the claims. To reject the claims implies that there is an open question as to the applicant's right, and there is no open question in fact. Ex parte Miller, C. D. 1905, 116 O. G. 25a2. 528. The alleged abandonment of an inven- tion claimed in a reissue application by rea- son of the failure to make claims thereto in the original application goes to the right of the party to make such claims and cannot be considered under the head of irregularity in the declaration. Felsing v. Nelson, C. D. l O. G. 1780. 632. Where an interference was dissolved for non-patentability of the issue, and no appeal from that action was prosecuted in the interference, but an ex parte appeal was thereafter taken, upon which the claims in issue were found patentable, and the examiner reinstated the interference. Held, that the re- instatement of the interference should be set aside and also the decision on the appeal. Newcomb v. Thompson, C. D. 1900, 122 O. G. 3012. 633. Where the examiner finds on motion to dissolve an interference that the subject- matter in issue is not patentable, he should take such actions in the application subse- quent to his decision as will put them in con- dition for the statutory appeal, so that the appeals may be continued directly to the court of appeals without the necessity of a second course of appeal through the patent office. Newcomb v. Thomson, C. D. 1906, 122 O. G. 3013. (c) Appeal Lies. 1. In General. 634. Where the contention was made upon appeal on motion for dissolution that the ex- aminer's decision holding an application not to have become abandoned through insuffi- cient prosecution is one affirming party's right to make claims, and therefore one from which no appeal lies. Held, that such decision is not one upon the right to claim in the restricted sense in which this expression is used in pat- ent practice, but is one upon the regularity of the declaration of the interference, and therefore appealable under Rule 122. Meden v. Curtis, C. D. 1903, 117 O. G. 179:.. 2. Supervisory Authority of Commissioner. 635. Where in an interference between a patent and an application upon the same claims the primary examiner has held that there is no interference in fact, and the ex- aminers-in-chicf have held that the applicant has a right to make the claims and applicant has not appealed on the qhestion of interfer- ence in fact. Held, that under these circum- stances the supervisory power of the com- missioner would be exercised to prevent the issue of a patent on the application without amendment to distinguish its claims from those of the patent or a determination that such amendment is unnecessary. Howell v. Hess, C. D. 1906, 122 O. G. 2393. ?,. No Right to Make Claims. 636. .\ decision on motion holding that one party has no right to make the claims result* in a refusal of his patent and the allowance of a patent to the opposing party and finally disposes of the case upon the merits. Held, therefore that the decision must be regarded as appealable unless and until the courts de- cide to the contrary. Newcomb v. Lemp, C. D. 1904, 110 O. G. 307. 637. The right of a party to his claims is not finally determined by a decision on a mo- tion dissolving the interference on the ground that he has no right to them. He may con- test his right ex parte after the dissolution and may avail himself of his right of appeal. Newcomb v. Lemp, C. D. 1904, 112 O. G. 1216. 638. If it be incorrectly held that a party to an interference has a right to make a claim in issue, an award of priority to him is made possible. His adversary would thereby be deprived of a substantial right in that he would be refused a claim where he was nec- essarily the prior inventor, his adversary never having made the invention. Podlesak & Podlesak v. Mclnnerney, C. D. 1906, 120 O. G. 2127. 639. In view of the possible effect upon the determination of priority of an error in a decision holding that a party has a right to make a claim. Held, that the latter question should not be finally determined by the pri- mary examiner who originally declared the interference and that the court would there- fore take jurisdiction to determine that ques- tion as ancillary to that of priority. *Id. 640. The right of a party to make a claim goes to the foundation of an interference, and a judgment of a primary examiner denying that right may be appealed to the court of appeals of the District of Columbia, and that court will take jurisdiction to determine that question "as an ancillary question to be con- sidered in awarding priority of invention." •United States of America ex rel. The New- comb Motor Company v. Moore, Commission- er of Patents, C. D. 1908, 133 O. G. 464. 218 INTERFERENCE, XVII, (d), 1. (d) No Appeal Lies. 1. In General. 641. Where an appeal was taken to the com- missioner from the decision of the examiner denying a motion to dissolve an interference on questions which relate to the merits of the invention, Held, that as under the rules and the uniform practice of the office, the commissioner has dechned to take jurisdic- tion of such questions either by appeal or petition the appeal should be dismissed. (Manny v. Easley et al., C. D. 1889, 179, 48 O. G. 538; Steward v. Ellis et al., C. D. 1889, 49 O. G. 1983, and Edison v. Stanley, C. D. 1891, 173, 57 O. G. 273, cited.) Breul v. Smith, C. D. 1899, 80 O. G. 1635. 642. Where it is contended by the appellant on appeal from the decision of the examiner refusing to dissolve an interference that his opponent has not the right to assert claim to the invention in view of his concession of priority as a joint inventor in a former inter- ference and it appears that to render a deci- sion on that question adverse to the appellee would be to refuse him a patent, Held, that the question involved goes to the merits and is not a mere interlocutory matter and the appeal should be dismissed. Cammett v. Hal- lett, C. D. 1900, 96 O. G. 1237. G43. Where the examiner dissolves an in- terference on the ground that the respective parties thereto have no right to make the claims, no appeal from such a decision can be taken directly to the commissioner, and such an appeal will be dismissed. Story v. Cris- well, C. D. 1902, 100 O. G. 683. 644. Where the examiner dissolved an in- terference because the parties thereto have no right to make the claims on the ground of inoperativeness and the limit of appeal from said decision having expired, Held, that the question of interference in fact necessarily becomes a moot question, and an appeal from a decision involving the same will be dis- missed. Id. 645. A refusal to rehear a case is not an appealable action nor is a favorable decision by the examiner as to the patentability of claims. Macey v. Laning v. Casler, C. D. 1901, 101 O. G. 1608. 646. Where the examiner dissolves an in- terference on the grounds that there was no interference in fact, that there was irregular- ity in the declaration of the interference, and that the issue was not patentable to F. and U., and no appeal is taken to the cxaminers-in- chief from that part of the decision holding the issue not to be patentable. Held, that as one of the parties has no right to make the claim of the issue and the interference has been dissolved for that reason the questions of interference in fact and irregularity in declaring the interference become moot ques- tions and will not be decided. Appeal dis- missed. Fickinger and Blake v. Hulett, C. D. 1904, 111 O. G. 2492. 647. Where a motion to dissolve is brought upon all grounds of Rule 122 and the record sliows that the only grounds urged before the examiner relate to the merits, upon which he rendered an affirmative decision, and that the contention on appeal is that there is no in- terference in fact and that there has been ir- regularity in the declaration of the interfer- ence, for the reason that the claims are not patentable. Held, that the affirmative action of the examiner as to the patentability of the claim will not be reviewed indirectly upon an appeal relating to the other grounds permitted by Rule 122, as the appeal, while alleging ap- pealable grounds, really relates to grounds which are not appealable, .\ppeal dismissed. Wilkinson v. Junggren, C. D. 1904, 112 O. G. 252. 648. An appeal upon the ground of irregu- larity alleging the want of sufficiency of an affidavit filed under Rule 94 (2), but which in effect is an attempt to have reviewed a favorable decision of the primary examiner upon an applicant's right to make the claim. Held, that such appeal will not be entertained. Schubert v. Munro, C. D. 1904, 113 O. G. 28:!. 649. Where an appeal relates to appealable grounds, but in reality seeks to have reviewed the favorable decision of the primary exam- iner upon the patentability of the claims and upon his opponent's right to make them. Held, that the appeal will be dismissed. (Wilkin- son V. Junggren, ante, 374, 112 O. G. 252.) Forsyth v. Emery, C. D. 1904, 113 O. G. 2215. 650. Where both parties move to dissolve the interference upon all grounds permitted by the rules and the motions are granted. Held, that an appeal will not be entertained, since a party cannot appeal from a decision in his favor merely because he disagrees as to the reasons. Scott v. Badeau, C. D. 1905, 116 O. G. 2007. 651. Where the examiner dissolves the in- terference because the issue is not patentable, INTERFERENCE, XVII, (d), 1. 219 Held, that an appeal relating to interference in fact involves a moot question and will not be determined. Newell v. Hubbard, C. D. 1905, 11-) O. G. 1847. 652. Where on an appeal to the commis- sioner on the question of interference in fact it appears from the decision of the primary examiner and the brief of the appellant that the real question is one relating to the right to make the claims, the appeal will be dis- missed. Schofield V. McGovern v. Woods, C. D. 190.'., 119 O. G. 1924. 653. Where a motion is brought before the examiner to dissolve an interference on the ground that there is no interference in fact and that the issue is not patentable and the examiner grants the motion on both grounds. Held, that as no appeal was taken to the ex- aminers-in-chief on the question of patenta- bility within the limit of appeal the interfer- ence stands dissolved and the question of in- terference in fact becomes moot. Appeal dis- missed. Coleman v. Struble, C. D. 1905, 114 O. G. 973. 654. Where the primary examiner held that the interference should be dissolved on the ground of non-interference in fact because a party did not disclose the invention and the party appealed to the examiners-in-chief. Held, that the examiners-in-chief acted correctly in dismissing the appeal so far as it related to interference in fact in pointing out that the real ground of the examiner's decision was one appealable to them, and in accepting and considering the appeal as one taken on this ground. Harrison v. Shoemaker, C. D. 1905, 117 O. G. 1164. 655. Where motion for dissolution on ground of irregularity in declaration alleges that the claim is vague and indefinite, but the question involved is whether the claim involves a complete combination of elements and is distinguished from what is shown in the prior art. Held, that the examiner's deci- sion finding the claim patentable is not ap- pealable. Wickers and Furlong v. Weein- wurm, C. D. 1905, 117 O. G 1797. 656. Where the contention was made on motion for dissolution that an application in- volved in the interference had become aban- doned under law in force when filed by for- eign patent granted to same inventor on ap- plication filed more than seven months prior to the application and the primary examiner found that act of March 3, 1903, extending the period of seven months to twelve months, was retroactive and that no rights were secured by other parties upon applications filed before the passage of said act which could not be affected by retroactive interpretation thereof. Held, that this contention involves more than a mere question of the regularity with which the interference was declared and attacks the right of the opposing party to a patent and that no appeal can be taken from the exam- iner's favorable decision thereon. Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D. 1905, 117 O. G. 1492. 657. Where the examiner upon motion for dissolution on the ground of non-interfer- ence in fact stated that the issue did not read upon the construction of the moving party and for that reason granted the motion. Held, that the appeal of the opposing party to the exam- iners-in-chief from this decision was properly dismissed. Kaczander v. Hodges and Hodges, C. D. 1905, 118 O. G. 836. 658. Where no irregularity in declaring the interference independent of the contention of non-interference in fact was presented. Held. that the appeal as to the ground of irregular- ity in declaration would be dismissed. Wal- ker V. BrunhofT, C. D. 1905, 118 O. G. 2537. 659. When the question of interference in fact as raised presented for consideration nothing other than the question of the right of a party to claim the issue. Held, that ap- peal upon the ground of non-interference in fact should be dismissed. Blackmore v. Hall, C. D. 1905, 118 O. G. 2538. 660. Where no irregularity was urged be- fore primary examiner except that opponent's case contained new matter and appeal was taken from examiner's decision finding no ir- regularity, but one of right to make the claim, on which no appeal lies from affirmative deci- sion, and that there was no justification for the appeal. Brooker v. Smith, C. D. 1905, 119 O. G. 652. 661. Where a party made no motion for dissolution, he cannot appeal from the refusal of a motion made by another party. Town- send V. Copeland v. Robinson, C. D. 1905, 119 O. G. 2523. 662. Where a motion to dissolve the inter- ference on the ground that the counts of the issue mean essentially different things when read in the two applications in interference is denied by the primary examiner and appeal is taken to the commissioner, and it is contended 220 INTERFERENCE, XVII, (d), 2. that Rule 124 as amended June 12, 1906, does not apply, since the examiner's decision was rendered upon June 4, 19(16, Held, that as the appeal was not lilcd until June 22, 1906, and is clearly barred by the amended- rule, the appeal must be dismissed. Wheeler v. See- berger, C. D. 1900, 125 O. G. 2363. 663. Where action is taken by the office upon motion to dissolve an interference from which an appeal may be taken in the inter- ference, and the opportunity for such appeal is neglected, an ex forte appeal thereafter upon the same matter will not be entertained. Newcomb v. Thomson, 1906, 122 O. G. 3012. 664. When a party may not appeal from the decision on the motion, he may not appeal from a determination upon the admissibility of affidavits. The determination in such cases will only be reviewed upon a petition making out an apparent case of abuse of discretion. Brown v. Stroud, C. D. 1906, 122 O. G. 2688. 665. Where on a motion to dissolve an in- terference and the argument in support there- of it is contended that the counts of the issue have diflferent meanings in the applications of the respective parties, but the question real- ly raised relates to the right of one of the parties to make the claims in issue. Held, that an appeal will not be entertained from the pri- mary examiner's refusal to dissolve, as his decision was in effect an affirmative ruling upon a party's right to make claims. Wein- traub v. Hewitt, C. D. 1906, 124 O. G. 2534. 666. When a party may not appeal from a decision on a motion to dissolve, he may not appeal from a determination upon the admis- sibility of affidavits tiled with that motion. Brown v. Inwood and Lavenberg, C. D. 1907, 131 O. G. 1423. 667. The court of appeals of the District of Columbia has no jurisdiction to entertain an appeal from a decision of the commissioner of patents on a motion to dissolve an inter- ference between an applicant for reissue and an original application holding that applicant had no right to a reissue on the ground that his showing of inadvertence, accident, or mis- take was insufficient and that he had failed to excuse the long delay of more than two years in filing the reissue application, as such judgment does not constitute an adjudica- tion of the question of priority between the parties. *In re Fullagar, C. D. 1910, 138 O. G. 259. 668. A motion by E. that he be made a party to an ai)peal to the court of appeals of the District of Columbia taken by K. from a deci- sion of the commissioner of patents on a mo- tion to dissolve, holding that F. had no right to make the claims of the issue because of his delay in hling his reissue application involved in this interference denied on the ground that the commissioner's decision did not result in an award of priority to E., and therefore F. could not bring him before the court by an appeal. For the same person E.'s motions to have the docket entry changed and to dismiss F.'s appeal denied. *Id. 669. Where transmission of a motion to dis- solve is refused and an amended motion is tiled, appeal from the decision refusing to transmit the original motion is al)andoned. Lotterhand v. Cornwall, C. D. 1909, 148 O. G. 1344. 670. No appeal lies from a decision of the primary examiner denying a motion to dis- solve an interference on the ground that the issue is unpatentalilc and that the counts there- of have different meanings in the cases of different parties. Swift v. Crawford v. Balt- zer, 171 O. G. 214. 2. Supervisory Authority of Commissioner. 671. Upon petition by M. that the commis- sioner exercise his supervisory power and re- view the favorable decision of the examiner on the question of his opponents' right to make the claim, Held, that under Rule 124 there is no appeal from the decision of the examiner, and under the well-settled practice of the office such decision will not be review- ed, either upon appeal or upon petition to the commissioner, except in an unusual case where it is clear that the examiner has erred. An inspection of this case shows that it does not present such ' unusual circumstances and ob- vious errors by the examiner as would war- rant the exercise of the supervisory power to overrule his action. Mechlin v. Horn, Col- clazer, and Mungen, C. D. 1900, 92 O. G. 2507. 672. Where a petition is taken to the com- missioner from the decision of the examiner refusing to dissolve an interference on grounds some of which are appealable in the first instance to the examiners-in-chief and from others no appeal lies, Held, that a peti- tion will not be entertained by the commis- sioner when it seeks to obtain indirectly a review of an examiner's decision from which INTERFERENCE, XVII, (d), 3. 221 no direct appeal lies by merely misnaming the action and calling it a petition. (Woodward V. Neuton, C. D. 1899, 13, 86 O. G. 490.) Goss V. Scott, C. D. 1901, 96 O. G. 842. 673. The discretionary power of the com- missioner should be exercised only in excep- tional cases, and then only to correct some palpable error in the decision of the examiner which is clear and evident on its face. There should be no mooted question as to the patent- ability or non-patentability of a claim. (Ben- der V. Hoffmann, C. D. 1898, 262, 83 O. G. 1737.) Id. 674. Where an appeal is taken direct to the commissioner from the decision of the exam- iner refusing to dissolve the interference on grounds relating to the merits, Held, that de- cisions on these motions when appealable go to the examiners-in-chief in the first instance, and an appeal direct to the commissioner should be dismissed. (Rule 124.) Goss v. Scott, C. D. 1901, 96 O. G. 1707. 675. Held, that since the question of the right of a party to make the claims in issue may be contested at the final hearing on priority there is no occasion for the exer- cise of the commissioner's supervisory power to review the ruling of the primary examiner affirming a party's right to make such claims. Locke v. Crebbin, C. D. lOnfi, 124 O. G. 317. 676. No appeal lies from a favorable deci- sion on the right to make the claims or the identity of meaning of the counts in the cases of different parties, and such a decision will be reviewed on petition in the exercise of the commissioner's supervisory authority only to correct some palpable error in the decision which is clear and evident on its face. Lip- schutz v. Floyd, C. D. 1907, 1.10 O. G. 2718. 677. Where the question presented upon a motion for dissolution can be raised, under Rule 130, at final hearing before the exam- iner of interferences and upon appeals from such decision, there is no occasion for the exercise of the supervisory authority of the commissioner. Adkins and Lewis v. Sce- berger, C. D. 1907. 127 O. G. V-,7%. 678. Where at the hearing upon a motion for dissolution attention is directed to a pat- ent which is in a remote art and it appears that the examiner has held the claims in issue patentable thereover, no such unusual circum- stances as will justify the exercise of super- visory authority exist. Daggett v. Kaufmann. C. D. 1907, 127 O. G. 3641. 679. The supervisory authority of the com- missioner will not be exercised to determine whether one of the parties to the interference has a right to make the claims in issue where it appears that a motion to dissolve on that ground has been transmitted to the primary examiner and is awaiting action on his part. Thiem v. Bowen, C. D. 1909, 143 O. G. 1345. 680. Rule 124 provides that no appeal will be allowed from a decision on a motion to dissolve affirming an applicant's right to make the claims. In view of the fact that this ques- tion can be raised at final hearing under the provisions of Rule 130, the practice of at- tempting to have it passed upon by petition for the exercise of supervisory authority is to be condemned. Frost v. Chase, C. D. 1010, 151 O. G. 741. 681. The supervisory authority of the com- missioner will not be exercised to review a decision of the primary examiner denying a motion to dissolve, based on the ground that certain amendments to the application of the opposing party involved new matter, since this involves the right to make the claims, and the moving party has an adequate remedy under the provisions of Rule 130. Samuelson V. Flanders, C. D. 1911, 171 O. G. 745. 3. Favorable Decision on Merits. 682. No party can appeal from a decision favorable to himself, and the decision is no less favorable because rendered on a motion of his opponent similar to his own motion. Since acquiescence in a favorable decision can- not be considered acquiescence in the reasons given for it, no hardship results from a re- fusal to entertain an appeal. Doolittlc v. Hcrdman, C. D. 1898, 84 O. G. 1728. 683. The rule prohibiting an appeal from a favorable decision on patentability applies, whatever reason is given for that decision, since it is well settled that the appeal must be from the decision and not from the rea- sons advanced in support of it. (Breul v. Smith, C. D. 1898, 124, 84 O. G. 809.) Wood- ward V. Newton, C. D. 1899, 86 O. G. 490. 684. There being no direct appeal from the examiner's decision affirming patentability, a contestant will not be permitted to obtain in- directly a review thereof upon appeal by merely misnaming the action and calling it a petition. (Manny v. Easley v. Greenwood, C. D. 1889, 179, 48 O. G. .'J38, cited). Id. INTERFERENCE, XVII, (d), 3. 685. A request that the commissioner ex- ercise his supervisory power and review the favorable decision of the cxamincrs-in-chicf on the merits denied, since the present case docs not present any such state of facts as would warrant a violation of the ordinary course of procedure. Sharer v. McHcnry, C. D. moo, 91 O. G. 1034. 686. Where an appeal is taken to the com- missioner from the decision of the examiner refusing to dissolve the interference on the ground that one of the parties has no right to make a claim. Held, that no appeal from such a decision can be taken and should be dismissed. (Rule 1~4.) Goss v. Scott, C. D. 1901, 96 O. G. 842. 687. Where an appeal is taken to the com- missioner from the decision of the examiner refusing to dissolve the interference on the ground that one of the parties has the right to make a claim, Held, that no appeal from such a decision can be taken and should be dismissed. (Rule 124.) Meyer v. Sarfert, C. D. 1901, 96 O. G. 1037. 688. The proper practice on an interlocutory appeal is for the commissioner to refuse to entertain said appeal from a favorable deci- sion on the merits, and said appeal should be dismissed. Cammctt v. Hallctt, C. D. 1901, 96 O. G. 1237. 689. Where the cxaminers-in-cliicf on mo- tion dismissed an appeal taken to them from a favorable inter [>artcs decision of the pri- mary examiner on patentability, their action was right, as such appeal was obviously taken in contravention to the provisions of Rule 124. White V. Thomson, C. D. 1902, 101 O. G. 282.-). 690. The ruling of the primary examiner that an affidavit under Rule 75 is sufficient to overcome a reference cited is a favorable de- cision from which no appeal lies and it can- not be brought before the commissioner in an interference by alleging it as irregularity in the declaration. McCheslcy v. Krugcr, C. D. 1902, 101 O. G. 217. 691. Where a party appeals to the examin- ers-in-chief from a favorable decision upon the merits and his appeal is dismissed and he thereafter asks that the limit of appeal be ex- tended, so that he can bring the case before the commissioner upon the allegation that the matter relates to irregularity in the declara- tion, Held, that the request will be denied. Richards v. Kletzker and Goesel, C. D. 1902, 98 O. G. 1709. 692. The holding by the examiner that an affidavit filed by one party under Rule 7.5 is sufficient to overcome a foreign patent cited as a reference is not subject to review on appeal, since it is a favorable decision on the merits. Bryon v. Maxwell, C. D. 1903, 105 O. G. 499. 693. Where after decision by the examiners- in-chief holding the issues patentable B. con- tends that they arc not, in fact, patentable un- less amended, Held, that the affirmative deci- sion of the e.\aminers-in-chief upon the pat- entability of the issues is fmal and will not be reviewed on appeal. Brown v. Lindmark, C. D. 1904, 109 O. G. 1071. 694. The contention on a motion to dissolve that the disclosure in a party's application is too incomplete to show a conception of the invention relates to the merits and there is no appeal from a favorable decision in regard to it. Auerbach and Cubing v. Wiswell, C. D. 1904, 108 O. G. 289. 695. Where a motion to dissolve an inter- ference is denied by the examiner on the ground that the issue is patcntalile when con- strued broadly enough to include both inter- fering structures. Held, that no appeal lies from such decision. Bechman v. Southgate, C. D. 1904, 111 O. G. 805. 696. Held, that L. has no right of appeal from the decision of the examiner affirming the right of S. to make a claim correspond- ing to the count of the issue. Lowry v. Spoon, C. D. 1904, 112 O. G. 732. 697. Held, that Rule 124, prohibiting the right of appeal in an interference from an ac- tion of the examiner affirming the patentabil- ity of a claim, is valid and not inconsistent with the statute, as the decision is not a final adverse decision denying the right of a party to a patent. Id. 698. There is no appeal from llic affirmative decision of the primary examiner upon the right of a party to make the claim. Myers V. Brown, C. D. 1904, 112 O. G. 209.3. 699. Where the primary examiner has held on a motion to dissolve that the party has a right to make the claim. Held, that in ac- cordance with Rule 124 there is no appeal from his decision. Gaily v. Brand, C. D. 1904, 113 O. G. 851. 700. An appeal or petition for review of the examiner's decision on motion holding that the issue is patentable will not be entertained and determined. Brewer, Tily, Rehfuss, and INTERFERENCE, XVII, (d), 4. 223 Kehfuss V. Dement, C. D. 1905, 116 O. G. 2nH). 701. Held, that an appeal docs not lie to the commissioner from a decision of the ex- aniiners-in-chief reversing a decision of the primary examiner rejecting a count of the issue and refusing to dissolve an interference as to that count. Coleman v. Bullard v. Stru- ble, C. D. 190,5, 114 O. G. 973. 702. Held, that a favorable decision by the primary examiner that a party has the right to make the claim does not warrant enter- taining an appeal from the other party upon the ground that such decision is adverse to him, for the present practice docs not permit cither party In appeal from a favorable deci- sion upon the right to make the claim. Dur- yea and White v. Rice, C. D. 1905, 115 O. G. 80:!. 703. Though parties are permitted in these proceedings to secure reconsideration by the primary examiner of his ex parte conclusion that their opponents, aside from the conflict- ing claims to priority, are entitled to patents, and though they are entitled to appear and oppose upon such reconsideration their op- ponent's right to a patent, the interest of a party has never been considered such that he should be permitted to appeal from the exam- iner's inter partes conclusion affirming his op- ponent's right to patent. Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D. 1905, 117 O. G. 1492. 704. Held, that the court of appeals in the case of Podlesak and Podlesak v. Mclnnerney (ante, .558, 120 O. G. 2127) is not believed to have departed from its position announced in the case of Allen, Commissioner of Patents V. The United States of America ex rel. George A. Lowry and Planters' Compress Company (C. D. 1905, 643, 116 O. G. 2253), wherein it sustained the office in its refusal to permit appeals from decisions upon motions for dissolution which affirmed the merits of a party's claim. Miel v. Young, C. D. 1906, 121 O. G. 1350. 705. Neither the rules of the patent office nor any section of the Revised Statutes pro- vide for nor permit appeals from a decision rendered upon a motion for dissolution affirm- ing the patentability of the issue. (Allen v. Lowry, C. D. 1905, 643, 116 O. G. 2253.) *Sobey V. Holsclaw, C. D. 1907, 126 O. G. 3041. 706. From the decision of the examiner holding that there is interference in fact or that the counts of the issue have the same meaning in the cases of the different parties no appeal is permitted under the provisions of Rule 124. Dukesmith v. Corringlon v. Turner, C. D. 1907, 126 O. G. 3422. 707. There is no appeal from the decision of the primary examiner affirming the oppo- nent's right to make the claims or the iden- tity of meaning of the claims in their respec- tive applications. Daggett v. Kaufmann, 127 O. G. 3641. 708. A decision refusing to dissolve an in- terference on the ground of res adjudicata is a favorable decision on the merits and will not be reviewed on appeal. (Rule 124.) Degen v. Pfadt, C. D. 1908, 133 O. G. 514. 709. Appeal does not lie to the commission- er from a decision of the examiners-in-chief holding, on a motion to dissolve, that certain counts of the issue are patentable. Langslow V. Malocsay, C. D. 1010, 155 O. G. 1043. 710. No appeal will be permitted from a decision affirming an applicant's right to make the claims. Samuelson v. Flanders, C. D. 1911, 171 O. G. 745. 4. Irregularity in Declaration. 711. Where a party alleges irregularity in the declaration and asks that the issue be re- vised and the real reason given is that the issue is too broad, Held, that the commission- er will not review the favorable decision of the examiner upon that question of merits. Richards v. Kletzker and Gossel, C. D. 1902, 98 O. G. 1709. 712. Where an appeal is taken from a deci- sion on a motion for dissolution on the ground of irregularity in the declaration, but the only contention made is that one of the parties has no right to make the claim. Held, that the ap- peal will be dismissed. Atherton and Happ v. Cheney. C. D. 1904, 111 O. G. 1040. 713. Where the examiner denied T.'s mo- tion for dissolution for irregularity in decla- ration and no motion for dissolution on this ground had been filed by Y. and T., Held. that Y. and T. have no basis for appeal and the appeal taken dismissed. Thullen v. Young and Townsend, C. D. 1905, 113 O. G. 2251. 714. Where appeal is based upon the ground of irregularity in declaration and it appears that no argument was made before the pri- mary examiner upon this ground and that the primary examiner found nothing to consider in connection with this ground. Held, that 224 INTERFERENCE, XVII, (e), (f), 1. there is no basis for an appeal from the re- fusal to dissolve as to this ground. Town- send V. Copcland v. Robinson, C. D. 1905, 119 O. G. 2523. (e) Time Allowable ior Filini. Motions. 715. Under Rule 114 motion for dissolution must not only be tiled, but must also be no- ticed for hearing within the limit of appeal in order to operate as a stay to the running of the time limited. (Meyrose v. Jahn, C. D. 1891, 145, 56 O. G. H47, cited.) Trevctte v. Dexter, C. D. 1898, 84 O. G. 1283. 716. After judgment has been rendered on the record under Rule 114 a motion for dis- solution may be made at any time within the limit of appeal from such judgment. This in- cludes not merely the limit of appeal first set, but any extension thereof granted with the approval of the office. (Law v. Woolf, C. D. 1891, 91, 55 O. G. 1527.) Morss v. Henkje, C. D. 1899, 86 O. G. 183. 717. Where a party orders from the office copies of his opponent's application, but through delays in the office they are not re- ceived until after the limit of appeal has ex- pired. Held, that he is thereafter entitled to make a motion for dissolution, but should make it as soon as possible, and is not enti- tled to a period of twenty days. Niedermeyer v. Walton, C. D. 1901. 97 O. G. 2306. 718. Where a motion to dissolve is hied after the twenty days allowed by the rule, the burden is not upon the office or the opposing party to show that it might have been made earlier, but is upon the moving party to show that it could not have been made earlier. Niedringhaus v. Marquard v. McConnell, C. D. 1902, 101 O. G. 1010. 719. A motion to dissolve after testimony is taken comes too late, since it should be made within the time ti-xed by Rule 122. Ditt- gen V. Parmenter, C. D. 1903, 103 O. G. 1164. 720. Held, that motions to extend the time for filing motions under Rule 122 should not be granted, for the reason that the granting of such motions would have no other effect than to cause unnecessary delay in the pro- ceedings in those cases where the motions con- templated were not made. Egly v. Schulze, C. D. 1905, 117 O. G. 276. 721. The redeclaration of an interference for the purpose of adding another party there- to docs not give the right to one of the orig- inal parties to bring a motion to dissolve within thirty days after such redeclaration, raising questions which might have been raised in the interference as originally declared. The time for bringing such motions expired at the end of the thirty-day period following the original declaration. Townsend v. Ehrct V. Young V. Strublc, C. D. 1908, 137 O. G. 1484. 722. A party may under Rule 122 wait till the thirtieth day after the approval of the preliminary statements to bring a motion to dissolve: but if he brings it before the thir- tieth day he waives his right to the remainder of the period. Rockstroh v. Warnock, C. D. 1908, 132 O. G. 234. (f) Transmitt.xl or Motion to Primary Ex- A. MINER. 1. In General. 723. In considering the transmission of a motion the examiner of interferences deter- mines merely whether or not it is within the rules in so far as form and time are concerned and does not pass upon the sufficiency of the reasons urged in support of the motion. Shep- pard V. Webb, C. D. 1901, 94 O. G. 1577. 724. Where a motion is brought before the examiner of interferences to transmit an in- terference to the primary examiner to dissolve the same. Held, that the examiner of inter- ferences has jurisdiction to consider the mo- tion to the extent of determining whether in his opinion the motion alleged a sufficient ground for the dissolution of the interference. Jarvis v. Quincy v. Jarvis and Blakeslee v. Barron v. Briggs and Shepard, C. D. 1904, 113 O. G. 550. 725. A decision of the examiner of inter- ferences refusing to transmit to the primary examiner a motion to dissolve will not be dis- turbed unless it is shown that in making such decision there was an abuse of discretion or that the decision is clearly erroneous. Dunn V. Halliday, C. D. 1905, 119 O. G. 2236. 726. Where the opposing party is not given sufficient notice of the hearing on the motion to transmit a motion to dissolve, the motion should not be refused transmission on that ground, but the hearing should be continued. Phillips V. Scott, C. D. 1907, 130 O. G. 1312. 727. The question of transmitting motions to dissolve should be left largely to the discre- tion of the examiner of interferences, and where he grants a motion to transmit his deci- INTERFERENCE. XVII, (f), 2. 2SS sion will not be disturbed unless it be clearly shown that such discretion has been abused. Pickard v. Ashton and Curtis. C. D. 1908, 137 O. G. 977. 728. An appeal from a decision of the ex- aminer of interferences refusing to transmit a motion to dissolve will not be dismissed for failure to include a specific assignment of error where the question it is desired to have reviewed is clear. Gilkeson v. Valentine, C. D. 1910, i:)4 O. G. 835. 729. Where the examiner of interferences refuses to transmit a motion to dissolve and a renewed motion is filed, it was proper for the examiner of interferences to set a limit of appeal from his decision refusing to transmit the second motion. Id. 730. The fact that an appeal from a decision of the examiner of interferences refusing to transmit a motion to dissolve contains a ref- erence to a patent alleged to anticipate the issue constitutes no ground for expunging the appeal from the record. Id. 731. The transmission of motions to dis- solve is left largely to the discretion of the examiner of interferences, and his decision granting a motion to transmit will be dis- turbed only upon a clear showing of abuse of discretion. Blood v. Ross, C. D. 1910, 161 O. G. 267. 2. Transmitted. 732. Where a motion for dissolution is in proper form, alleges proper grounds, and is filed within the twenty days allowed by the rule, Held, that the examiner of interferences cannot properly refuse to transmit it. It is for the primary examiner to determine the propriety and sufficiency of the reasons ad- vanced in support of the allegations in the mo- tion. Cammett v. Hallett, C. D. 1900, 93 O. G. 939. 733. Where a motion to dissolve alleges public use and also anticipation by certain references. Held, that the motion should be transmitted to the primary examiner to deter- mine the question of anticipation. Davis v. Swift, C. D. 1901, 95 O. G. 2409. 734. Where the effect of a favorable deci- sion on a motion to dissolve would be to grant a patent to the moving party. Held, that such motion should be transmitted. Hull v. Hall- berg, C. D. 1904, 110 O. G. 1428. 735. Where motion for dissolution is brought by H. and V. appeals from the trans- 15 mission thereof because H.'s preliminary statement did not overcome the filing date of the senior party and H. was under order to show cause why judgment should not be ren- dered against him. Held, that if H.'s motion was well founded it is a complete answer to the order to show cause and that since it was filed in the time permitted by the rule and was found to be in proper form it was properly transmitted to the primary examiner as a matter of course. Van .^uken v. Os- borne V. Harrison v. Canfield and Van Auken, C. D. 190.1, 119 O. G. 1584. 736. Where claims have been suggested to an applicant and he made the same under pro- test, with a statement that he does not believe he has a right to make them, and where after inspecting the other party's application he still contends that he has no right to make these claims. Held, that he should be permitted to argue the question before the primary exam- iner, and the motion to dissolve should there- fore be transmitted. (Miller v. Perham, C. D. 1906, 157, 121 O. G. 2667, modified.) Eichel- berger and Hilner v. Dillon, C. D. 1907, 129 O. G. 3161. 737. Although the date of a reference relied upon in a motion to dissolve alleging antici- pation of the issue is later than the date of conception set up in the preliminary statement of the opposing party, the motion may never- theless be transmitted in order that the pri- mary examiner may consider the pertinency of the reference and permit the filing of an affi- davit alleging the facts required by Rule 75 outside of those contained in such preliminary statement. Martin v. Goodrum et al.. C. D. 1907, 130 O. G. 1480. 738. A motion to dissolve an interference involving a reissue application, alleging that the oath accompanying the application was in- sufficient to warrant the grant of a reissue patent, should be transmitted to the primary examiner. Emmet v. Fullagar, C. D. 1907, 130 O. G. 2719. 739. Where in a motion for dissolution the right of the adverse party to make the claims in issue is denied and it is also alleged that the claims when read upon the structures dis- closed by the respective parties have different meanings, reasons relied upon in support of such contentions being clearly pointed out. Held, that the motion to dissolve should be transmitted as to both grounds. (Cushman v. Edwards, ante. 129, 128 O. G. 456, modified.') 226 INTERFERENCE. XVII, (f), 3. Eilerman ct al. v. McElroy, C. D. 1907, 130 O. G. 2721. 740. The fact that a statement of a ground for dissolution of an interference covers two sets of counts, as to one set of which it is proper to transmit the motion and as to the other of which transmission is improper, is not a sufficient reason for refusing transmis- sion of the motion as a whole. The motion should be transmitted as to the set of counts which would be otherwise transmitted. Id. 741. A motion to dissolve alleging the bar of prior knowledge and use should not be transmitted. (Thomson and Unbehend v. Hisley, C. D. 1894, 43, 66 O. G. 1596; Davis v. Swift, C. D. 1901, 134, 96 O. G. 2409; Shrum V. Baumgarten, C. D. 1903, 150, 104 O. G. 577; Cory et al. v. Blakey, C. D. 1905, 116, 115 O. G. 1328.) Id. 742. Where a party acting in good faith files a motion which is held to be indefinite and an amended motion curing the informal- ities is promptly filed within the limit of ap- peal set from the previous decision, the amended motion should be transmitted. Rock- stroh V. Warnock, C. D. 1908, 132 O. G. 234. 743. A party cannot be permitted to prose- cute a case experimentally, and where the amended motion does not cure the informal- ities pointed out in the first decision a third motion is entitled to no consideration. Id. 744. Where an applicant adopted claims sug- gested under Rule 96 from another applica- tion, a motion to dissolve filed by him alleg- ing that he has no right to make such claims is proper, and the same should be transmitted to the primary examiner. (Miller v. Per- ham, C. D. 1906, 157, 121 O. G. 2667, and Mar- tin v. Mullin, C. D. 1907, 119, 127 O. G. 3216, modified ; doctrine of Eichelberger and Hib- ner v. Dillon, C. D. 1907, 230, 129 O. G. 3161, extended.) Hermsdorf v. Driggs v. Schnei- der, C. D. 1908, 133 O. G. 1189. 745. It is well settled that the transmission of motions to dissolve is left largely to the discretion of the examiner of interferences and that where he grants a motion to trans- mit his decision will be disturbed only upon a showing of abuse of discretion. Knight v. Cutler, C. n. 1909, 149 O. G. 1119. 746. Within the time set for bringing mo- tions K. filed a motion to dissolve, which was denied on the ground of indefiniteness. Four days later he filed an amended motion seek- ing to overcome the indefiniteness of the orig- inal motion. On the day of hearing he filed an affidavit in support of the motion, and upon objection by C. the hearing was post- poned one week. Held, that these facts do not show any abuse of discretion upon the part of the examiner of interferences in trans- mitting the amended motion. Id. 747. Where the issue of an interference consists of one hundred and thirty-two counts, Held, that this great number of counts would of itself tend to preclude a proper determina- tion of priority, and that under the provisions of Rule 212 the interference will be trans- mitted to the primary examiner to hear and determine the question whether the interfer- ence should not be dissolved and a reasonable number of counts substituted for those form- ing the issue. Ragona v. Harris, C. D. 1910, 150 O. G. 266. 3. Not Transmitted. 748. It is the almost uniform practice of the office not to transmit motions to dissolve an interference until after the preliminary state- ments are filed and approved. In the excep- tional cases where such motions have been transmitted prior to the approval of the state- ments it has been for the reason that the hear- ing could be had "under such circumstances as would make it just to hold parties to the result of a contest as res adjudicata." (Lau- rent-Cely v. Payen, C. D. 1890, 68, 51 O. G. 621.) King and Babendreier v. Libby, C. D. 1899, 89 O. G. 2653. 749. A motion to dissolve an interference on the ground that there has been such ir- regularity in declaring the interference as would preclude the proper determination of the question of priority and that no interfer- ence in fact exists should not be transmitted to the primary examiner until the preliminary statements have been approved. Id. 750. The questions raised by such a mo- tion cannot be so correctly determined with- out an inspection of the opponent's specifica- tion and drawings as it can with it. It can- not at the present time be so heard and de- termined that the parties could be justly held to be bound by it in subsequent proceedings. Id. 751. Moving to dissolve an interference upon any of the grounds stated in Rule 122 before the preliminary statements are opened and approved is a practice not to be encour- aged. Id. INTERFERENCE, XVII, (f). 3. 227 752. Even though a decision should be res adjudicata between the parties upon one or two questions presented by a motion to dis- solve before the preliminary statements are opened, the other grounds upon which mo- tions to dissolve might be made as a matter nf right within twenty days after the state- ments arc opened and approved could still be considered, and the condition of disposing of motions to dissolve by piecemeal would result, thus entailing an unnecessary burden upon parties to an interference and increasing the expense of proceedings and unnecessarily pro- Innging them. Id. 753. A motion to dissolve made before the preliminary statements are approved when as yet the parties have no right to inspect each other's applications should not be transmitted to the primary examiner except under those unusual circumstances which would render it just to hold all parties bound by the decision rendered. Whipple v. Sharp, C. D. 1901, 96 O. G. 2229. 754. Where a motion to dissolve an inter- ference is made upon the ground that the ap- plication of one of the parties was altered after being sworn to and should he stricken from the files under Rule 31. Held, that the motion should not be transmitted to the pri- mary examiner, since he has no authority to strike a case from the files. Hopkins v. Scott, C. D. 1903, 105 O. G. 1263. 755. The question whether the junior party's application should be stricken from the files because altered after being sworn to is an ex parte one which cannot affect the question of priority of invention. Id. 756. A motion to dissolve an interference will be refused transmission to the primary examiner where based upon the allegation that one of the parties is not an original inventor, but derived his knowledge of it from the other party. Cory, Gebhart, and Martin, Jr. v. Rlakey. C. D. 1905, 115 O. G. 1328. 757. Where a motion for dissolution of an interference is made upon the ground that the opposing party is estopped from making the claim by delay and it appears that the commissioner has ruled upon that matter. Held, that the motion should not be trans- mitted to the primary examiner. Egly v. Schulze, C. D. 1905, 117 O. G. 2363. 758. While as a general rule the examiner of interferences in transmitting a motion to dissolve does not pass upon the sufficiency of the grounds alleged, he may and should do so where the consideration of the motion would obviously result in a mere waste of time. Dunker v. Reist, C. D. 1905, 119 O. G. 1925. 759. A motion to dissolve an interference on the ground of irregularity which alleges the irregularity to be the improper issue of his opponent's patent during the pendency of his application should not be transmitted to the primary examiner, as it is a matter which the office cannot remedy. Id. 760. Held, that Rule 126 does not provide for the filing of motions and that a motion to dissolve purporting to be brought there- under should not be transmitted or consid- ered. Struble v. Young, C. D. 1906, 121 O. G. 340. 761. The examiner of interferences prop- erly refused to transmit to the primary ex- aminer motions which the primary examiner has no authority to decide. Becker and Patitz v. Edwards, C. D. 1906, 123 O. G. 1990. 762. Where nothing in the statement of the facts upon which a motion to dissolve on the ground of irregularity in declaration was based is directed to anything other than the patentability of claims, the rights of the par- ties to make claims, or the identity in mean- ing of claims when read in the respective cases. Held, that the motion was properly re- fused transmission as to this ground. Kle- pctko v. Becker, C. D. 1906, 120 O. G. 658. 763. Where no facts are alleged in support of a motion for dissolution on the ground of non-patentability except such as relate to the right of a party to make claims. Held, that the motion was properly refused transmission as to the ground of non-patentability. Id. 764. A motion to dissolve setting up ir- regularity on account of the insufficiency of the oath to the application of the opposing party by reason of the failure of the officer administering the same to impress his seal thereon should not he transmitted to the pri- mary examiner where it appears from an af- fidavit of such officer that at the time he ad- ministered the oath he w-as empowered to do so and that he was not provided with a seal, and from a certificate of the clerk of the county in which the oath was executed that at the time it was executed such officer did, in fact, have power to administer it. Scott v. Hayes and Berger, C. D. 1906, 121 O. G. 2326. 228 INTERFERENCE. XVII, (f), 3. 765. Where the motion for dissolution pre- sents matters which can be considered in con- nection with or as part of the determination of priority and which should only be so con- sidered, Held, that it raises no proper ques- tion for consideration by the primary exam- iner and transmission was properly refused. Strublc V. Young, C. D. 1906, 121 O. G. 339. 766. A motion to dissolve on the ground that the opposing party has no right to make the claims which raises the question whether such party is entitled to the date of the ear- lier one of two applications mentioned in the notice of the interference should not be trans- mitted to the primary examiner, as the ques- tion raised is one to be determined by the ex- aminer of interferences and not the primary examiner. Dickinson v. Hildrcth, C. D. 1906, 122 O. G. 1397. • 767. A motion to dissolve on the ground of non-interference in fact, which is founded upon the alleged character of a machine which the moving party believes the opposing party will rely upon in producing his evidence, should not be transmitted, even though the opposing party admits the substantial truth of the allegations respecting such machine. Barr v. Budd. C. D. 1906, 122 O. G. 20fil. 768. Where matter is set forth in a mo- lion for dissolution as a basis for one ground thereof which should only be considered in connection with another and different ground, Held, that the motion is not in proper form and should not be transmitted. Corey v. Eiseman and Misar, C. D. 1906, 122 O. G. 20():5. 769. A motion for dissolution alleging non- interference, in fact, in addition to lack of right of a party to make claims, and urging the same facts or reasons in connection with each ground should not be transmitted, in view of the unnecessary labor and delay at- tending such double consideration of the same matter both before the primary examiner and upon appeals. Booth, Booth and Flynt v. Hanan and Gates v. Marshall, C. D. 1906, 123 O. G. 319. 770. Where a motion to dissolve on the grounds of non-interference in fact and ir- regularity is refused transmission, because proper reasons for dissolution on these grounds are not stated, and appellant urged that he will thereby be cut off from appeal in case a decision is rendered against him on the remaining grounds of the motion, Held, that this is exactly what the practice is in- tended to accomplish and that if a party has no reasons to allege in his motion which would support dissolution upon appealable grounds he should not be permitted to waste the time and labor of his opponents and of the office with appeals which can have no other object than to obtain a review of non- appealable decisions. Pym v. Hadaway, C. D. 1906, 123 O. G. 1238. 771. Where L. moves to dissolve on the ground of no interference in fact and in sup- port of this ground alleges that the claims in issue arc not patcntalilc unless given a con- struction which precludes N. from making them in his application. Held, that the mat- ters alleged do not involve the question of non-interference in fact and that the motion should not be construed as relating to the question of right to make the claims and should not be transmitted to the primary ex- aminer. Lizotte V. Neuberth, C. D. 1906, 124 O. G. 1842. 772. Where L., in support of his motion to dissolve on the ground that N. has no right to make the claims, alleges as a reason that N.'s original disclosure is insufficient to sup- port the claims and that his specification and claims were unduly enlarged and broadened. Held, that in the absence of any indication as to whether L.'s motion is directed to all or part of the claims in issue and in the absence of any specific statement as to which elements of the claims are not supported by the orig- inal disclosure the motion should not be trans- mitted to the primary examiner. Id. 773. .\ motion for dissolution based upon the ground that the moving party has no right to make the claim to the subject-matter in issue should not be transmitted to the pri- mary examiner. Martin v. MuUin, C. D. 1907, 127 O. G. 3216. 774. Where on appeal from the decision of the primary examiner dissolving an inter- ference the examiners-in-chief affirmed the decision of the examiner as to claims 2, 3, and 4 and reversed it as to claim 1, and thereupon one party filed an amendment to his case, while the other party brought a motion to dissolve. Held, that the decision of the exam- iner of interferences refusing to transmit the motion to dissolve to the primary examiner is correct, since the moti'^n is based on the proposed amendment and presupposes its INTERFERENCE, XVII, (f), 3. 829 entry. Harnisch v. Gueniffet, Bcnoit, and Nicault, C. D. 1907, 128 O. G. 455. 775. Public use is considered in the prac- tice of this office as a separate question re- quiring an investigation independent of the question of priority of invention involved in an interference proceeding. A motion for dissolution based upon the ground of public use should not therefore be transmitted. Bar- ber v. Wood, C. D. 1907, 128 O. G. 283.-. 776. A motion by one party to an inter- ference to dissolve the interference as to cer- tain counts in case certain other counts are found to be unpatentable in view of the same references upon a motion to dissolve brought by his opponent should not be transmitted. Turner v. Macloskie, C. D. 1907, 128 O. G. 2835. 777. Where suggested claims were made by the joint applicants under protest, with a statement that they did not think they had a right to make the same, giving their reasons therefor. Held, that the declaration of inter- ference did not constitute informality within the contemplation of the rules and that the transmission of a motion for dissolution based upon this ground was properly refused. Eichelberger and Hibner v. Dillon, C. D. 1907, 129 O. G. 3161. 778. A motion to dissolve on the ground of irregularity in the declaration of the in- terference properly refused transmission where the alleged irregularity is that the issue of the present interference is substantially the same as that of a former interference which the primary examiner dissolved. Sug- den and Gidgin v. Laganke and Smith v. Mar- shall, C. D. 1907, 130 O. G. 1484. 779. A motion to dissolve on the ground of informality in declaring the interference was properly refused transmission where it ap- pears that the alleged informality relates to the right of the parties to make the claim. Danquard v. Courville, C. D. 1907, 131 O. G. 2421. 780. A motion to dissolve filed after the redeclaration of an interference with addi- tional counts directed to the old as well as the new counts. Held, to have been properly refused transmission so far as it related to the old counts, no showing being made why this part of the motion was not brought in the proper time. Murphy v. Borland, C. D. 1908, 132 O. G. 231. 781. The interference was originally de- clared between A. and B., and was afterward redeclared to include the application of C, the assignee of A. Held, that a motion to dis- solve brought by C. on the grounds that the issue is not patentable and that B. has no right to make the claims will not be trans- mitted, since C. had an opportunity to bring such a motion as .'K.'s assignee. Townsend v. Thullen and Thullen v. Young, C. D. 1908, 137 O. G. 1710. 782. A motion to dissolve based on the de- fectiveness of the oath tiled by the opposing party should not be transmitted, and it is well settled that the matter of a proper oath is an ex parte one and furnishes no ground for dissolution. Rowe v. Brinkmann, C. D. 1908, 133 O. G. 51.). 783. A motion to dissolve on the ground of non-patentability based on patents granted on applications filed subsequently to the date of invention alleged by one of the parties to the interference in his preliminary statement should not be transmitted. Raymond v. Kit- zelman v. Sommer et al. v. Claudin, C. D. 1908, 134 O. G. 2243. 784. A motion to dissolve on the ground of irregularity in declaration will not be trans- mitted where it appears that the basis of this ground is that the other party has no right to make the claims corresponding to the issue. Skinner v. Carpenter, C. D. 1908, 135 O. G. 661. 785. A motion to dissolve an interference on the ground that one of the parties thereto had no right to make the claims of the issue in an earlier application of which the appli- cation in issue was stated in the declaration to be a division raises a question relating to the burden of proof and should not be trans- mitted. Townsend v. Ehret v. Young v. Stru- ble. C. D. 1903, 137 O. G. 1484. 786. A motion to dissolve should not be transmitted where it appears that the moving party had had an opportunity to bring a mo- tion to dissolve on the same ground in a prior interference involving the same counts. Townsend v. Thullen v. Young, C. D. 1909, 138 O. G. 768. 787. A motion to dissolve on the ground of the non-patentability of the issue was re- fused transmission on the ground that the moving party had had an opportunity to bring such motion in a prior interference. Held. that a subsequent motion alleging that a new party to the interference had no right to make 230 INTERFEREiN'CE, XVII, (g), 1. the claims based on the same ground as the prior motion should not be transmitted. Id. 788. The decision in Gold v. Gold (C. D. 1908, 377, 131 O. G. 1422) and Rockstroh v. Warnock (C. D. 1908, 10, 132 O. G. 234) con- strued and Held, not to authorize the trans- mission, as a matter of course, of an amended motion to dissolve filed within the limit of appeal from a decision refusing to transmit a defective motion, but only where it does not appear from the record that such original mo- tion was not brought in good faith. Mc- Quarrie v. Manson, C. D. 1909, M2 O. G. 288. 789. A motion to dissolve an interfer- ence on the ground that the issue is not pat- entable, based upon ex parte affidavits, should be refused transmission. Barratt v. Swingle- hurst, C. D. 1909, 144 O. G. 818. 790. Where the applications involved in an interference were involved in a prior interfer- ence. Held, that a motion to dissolve was prop- erly refused transmission as to any grounds which were or might have been raised on a motion to dissolve in the prior interference. Colburn and Washburn v. Hitchcock, C. U. 1909, 145 O. G. 1022. 791. A motion to dissolve on the ground of irregularity in the declaration of the inter- ference was properly refused transmission where the ground relied on to show irregular- ity raises a question which relates to the merits of the case. Id. 792. Points alleged to constitute irregu- larity in the declaration of an interference and raised for the first time in the brief filed at the hearing on appeal from the decision of the e.xaminer of interferences refusing to trans- mit a motion to dissolve can receive no con- sideration. Id. 793. A motion to dissolve, alleging infor- mality because the claims in issue are for in- complete combinations when read on the op- posing party's disclosure, was properly refused transmission, since this question is one rela- ting to the merits. Lotterhand v. Cornwall, C. D. 1909, 148 O. G. 1344. 794. An interference was dissolved as to one count, but upon presentation of a modi- fied claim was redeclared. Held, that trans- mission of a motion to dissolve was properly refused so far as it related to the other counts. Kennedy v. McLain, C. D. 1910, 153 O. G. 547. 795. A motion to dissolve on the ground of irregularity in the declaration thereof based in part upon an alleged difference in the mean- ing of the counts as applied to the applica- tions of the different parties and in part upon the alleged lack of right of one of the parties to make the claims. Held, properly refused transmission. Vanderveld v. Smith, C. D. 1910, 1.59 O. G. 490. 796. Where after the denial of a motion to dissolve an interference based on the ref- erences of record the moving party brings a second motion based on an additional refer- ence and it does not appear that such refer- ence could not have been found within the time originally set for bringing motions. Held, that such motion was properly refused trans- mission. Topping V. Price, C. D. 1910, ICO O. G. 774. 797. A motion to dissolve alleging that the application oath of the opposing party is de- fective in that it does not comply with all the requirements of Rule 46, Held, properly refused transmission, since the matter of a proper oath is an ex parte one. Graham v. Langhaar, C. D. 1911, 164 O. G. 739. 798. Where a party to an interference calls attention to an informality in the application oath of the opposing party and contends that lie should not be required to contest the in- terference unless a proper oath is filed. Held, that an order may be issued calling upon the delinquent party to file an oath in compliance with Rule 46, within a limited time set, under penalty of dissolution of the interference. Id. 799. Where an interference was declared between the application of the winning party to a prior interference and an application owned by the assignee of the losing party thereto, Held, that a motion to dissolve on grounds which were or might have been raised in the prior interference was properly refused transmission. Keely v. Dempster, C. D. 1911, 104 O. G. 975. 800. Where a motion to dissolve alleged informality in the declaration of the interfer- ence based on the allegation that certain addi- tions to the disclosure of the opposing party were unwarranted. Held, that the motion was properly refused transmission as to this ground, since the allegation relates to the right to make the claims. Lasher v. Barratt, C. D. 1911, 106 O. G. 751. (g) Motion Delayed. 1. In General. 801. It is only within the twenty days al- lowed by the rule that the examiner of inter- INTERFERENCE, XVII, (g), 2. 231 ferences is bound to transmit a motion to the primary examiner if in proper form. After that time he is not bound to transmit it, al- though it is in proper form and could not have been made earlier, but he must exercise his discretion in determining whether it shall be transmitted under all of the circumstances. Pupin V. Hutin and Leblanc v. Stone, C. D. 1898, 82 O. G. 1418. 802. After testimony has been taken the showing which would warrant remanding the case to the primary examiner must not only make it plain that the motion could not have been made earlier but that it is absolutely necessary that the matter be passed upon in order that a proper conclusion may be reached on the question of priority. Id. 803. The examiner of interferences is bound to transmit proper motions noticed for hearing within the limit of appeal, if in prop- er form; but after that time he will exercise his discretion under the circumstances of each case in determining whether the motion shall be transmitted. Trevette v. Dexter, C. D. 1S98, 84 O. G. 1283. 804. Where a motion to dissolve is brought after the time fixed by the rule and is based upon newly- discovered evidence. Held, that it should be made to appear that the evidence could not have been obtained earlier by the exercise of reasonable diligence and that the motion was brought as soon as possible after the discovery of the evidence. Lipe v. Miller, C. D. 1903, 105 O. G. 1263. 805. Briefs upon motions should be filed three days before the hearing, as provided in Rule 163. They will not be considered when filed later except where the consent of the tribunal hearing the cause is obtained. Id. 2. Delay Excused. 806. Where a motion to dissolve an inter- ference based on any of the grounds speci- fied in Rule 122 is filed outside the twenty- day limit fixed by the rule, the question of its transmittal rests largely within the discretion of the examiner of interferences, who may upon a proper showing in excuse of the delay transmit the motion to the primary examiner. Winter v. Slick v. VoUkommer, C. D. 1901, 97 O. G. 1837. 807. A motion to dissolve an interference brought after the twenty-day limit allowed by the rule for such motions should be trans- mitted when the delay is slight and it appears that no testimony has been taken and that a motion to dissolve on another ground is al- ready before the primary examiner. Arbetter V. Lewis, C. D. 1902, 99 O. G. 1383. 808. If reasons exist why an interference should not be continued, it is for the interest of all concerned that all such reasons be con- sidered at the same time. Hence the matter submitted in excuse of the delay will not be so closely scrutinized as when presented at a later stage of the proceedings. Id. 809. Where the delay which occurred in bringing a motion to dissolve was due in part to delays in this office in filling an order for a copy of the opponent's file-wrapper and the facts show that the inventions are not simple ones, but, on the contrary, are quite compli- cated, and the moving party did not have suf- ficient funds at hand to promptly order the certified copy and no testimony has been taken. Held, that the reasons given are sufficient to excuse the delay in this particular case. Kletzker and Goesel v. Dodson, C. D. 1902, 101 O. G. 2822. 810. Where the examiner of interferences transmitted a motion for dissolution brought two days after the time allowed by the rules. Held, that such action of the examiner of interferences was not an abuse of discretion nor clearly erroneous and would not be dis- turbed, citing Winter v. Slick v. VoUkommer (C. D. 1901, 210, 97 O. G. 1837). Harrison v. Shoemaker, C. D. 1904, 109 O. G. 2170. 811. Where the delay in bringing a motion for dissolution is slight and no testimony has been taken, it cannot be held that the affidavit of the attorney that he had been occupied with other matters demanding immediate attention which prevented earlier consideration of the case may not be considered sufficient excuse for transmitting the motion. Id. 812. A motion to dissolve an interference filed five days after the expiration of the twenty days allowed for such motions was properly transmitted to the primary examiner in view of a verified showing that copies of the interfering applications were ordered im- mediately after the declaration of the inter- ference, but that such copies were not re- ceived until three days after the expiration of that twenty day period. On such showing it was not necessary to distinctly allege that such copies were orders directly from the pat- ent office and not through an agent. Stein- metz v. Thomas, C. D. 1905, 119 O. G. 1260. 232 INTERFERENCE, XVII, (g), 1. 813. Where the hearing on a motion to transmit a motion to dissolve is extended by stipulation of the parties and before the hear- ing an amended motion is filed stating the grounds of the first motion more specifically, Ili-ld. that the motion, if in proper form, should have been transmitted even if the first motion was not sufficiently specific. Smith V. Fo.x, C. D. 1907, 130 O. G. 1312. 814. A delay of seven days in filing an amended motion to dissolve, curing objections relating to indertniteness of the allegations of a prior motion, may be excused where it ap- pears that the first motion attempted in good faith to comply with the practice of the office. Auxer v. Pierce, Jr., C. D. 1907, 131 O. G. 359. 815. A decision of the examiner of inter- ferences transmitting a motion to dissolve will not be disturbed merely because the motion was filed more than thirty days after the pre- liminary statements of the parties were ap- proved, but only where it is shown that there has been a clear abuse of discretion by the examiner of interferences in transmitting such motion. Thiem v. Bowen, C. D. 1909, 143 O. G. Ki4,-j. 816. A delay of about six weeks in bring- ing a motion to dissolve, alleging non-patent- ability of the issue in view of a foreign pat- ent, excused where the issue related to a knit- ted fabric and it appeared that the moving party had made a search through the patents in the United States patent office, in the classes where he thought the device of the issue should be found, and then communica- ted with various foreign manufacturers, in- quiring about the novelty of the invention in issue, and finally learned by this means of the patent on which the motion was founded, which relates primarily to a knitting-machine capable of producing the fabric of the issue and not to the fabric itself. Barratt v. Swin- glehurst, C. D. 1909, 144 O. G. 818. 1. Delay Not Excused. 817. The fact that negotiations were pend- ing between the parties with a view to a set- tlement of the contest without proceeding with the interference is no valid excuse for delay in presenting a motion for dissolution, since the delay which will be excused must be caused by circumstances which have some- thing of a compelling power. Latham v. Force V. Parantian, C. D. 1898, 82 O. G. 185. 818. A motion to dissolve, made after the testimony has been taken, should not be trans- mitted to the primary examiner when no ex- cuse is given for the delay except in so far as it is based upon the testimony. Such mo- tions cannot properly be based upon the testi- mony. Shiels V. Lawrence ct al., C. D. 1899, 87 O. G. 180. 819. Where it appears that a party to an interference could and should have made a motion to dissolve the interference within the time allowed by Rule 122 and that he would not be deprived of any substantial rights by failing to have the examiner again consider the state of facts known during the treatment of the two applications involved in the inter- ference, the motion should not be transmitted to the examiner. Annand v. Spalckhaver, C. D. 1900, 93 O. G. 753. 820. When a motion to dissolve an inter- ference is not made within the time fixed by Rule 122, it is permissible to consider the probability of the grant of the motion to dis- solve and whether substantial justice cannot be done without the delay incident to the transmission of the motion to dissolve, its de- cision by the primary examiner, and in proper cases an appeal to the commissioner. Id. 821. In order to warrant transmitting a motion filed after the twenty days allowed by the rule, it must be satisfactorily explained why it was not possible to bring it within the time. The fact that the reasons for it did not occur to the party bringing it, when the information was within his reach, is not a suf- ficient excuse. Potter v. Van Vleck v. Thom- son, C. D. 1901, 95 O. G. 2484. 822. Where a party fails to make a mo- tion for dissolution within the twenty days al- lowed by the rule and thereafter makes one in view of a recent decision of the primary ex- aminer dissolving a kindred interference which he claims throws new light upon the invention, but which in reality merely encourages him to make use of information which has long been available to him. Held, that the motion should not be transmitted to the primary examiner. Id. 823. A motion to dissolve an interference brought after testimony has been taken and unaccompanied by a motion to transmit to the primary examiner and by no excuse for the delay is not brought in accordance with the rules and has no standing. Frederick v. Fred- erick and Frederick, C. D. 1902, 99 O. G. 18G5. INTERFERENCE, XVII, (g), 1. 233 824. A second motion for dissolution upon grounds urged in the first motion amounts to a request for a rehearing, and it will not be transmitted to the primary examiner after the twenty days allowed by the rules have expired except upon such a showing as would warrant the granting of a rehearing. Wilcomb v. Lasher, C. D. 1902, 101 O. G. 666. 825. Where a party fails to make a motion to dissolve under Rule 122 within the time provided, but waits before bringing his motion until testimony has been taken and a judgment rendered on priority, the jurisdiction of the examiner of interferences will not be restored for the purpose of considering the transmis- sion of such motion to the primary examiner. Fessenden v. Potter, C. D. 1902, 101 O. G. 282:!. 826. Where a motion for dissolution was brought twenty-three days after the expira- tion of the twenty days allowed by Rule 122 and the reason given for delay is that the ref- erence on which the motion is based was not found until after the expiration of the time allowed by the rule and it does not appear that the reference was not found in its ex- pected place or that any attempt had been made to find the reference within the time allowed by the rule, Held, that the examiner of interferences properly refused to transmit the motion. Sturgis v. Hopewell, C. D. 1904, 109 O. G. 1067. 827. A motion to dissolve an interference will not be transmitted to the primary exam- iner after the twenty days fixed by the rule merely because no testimony has been taken. Good reasons must be shown for the delay. Arbetter v. Lewis, C. D. 1902. 161, 99 O. G. lliS."!, distinguished. Id. 828. The transmission of motions for dis- solution brought after the twenty days allow- ed by Rule 122, but before testimony is taken, without satisfactory showing of reasons for delay would nullify the provisions of the rule in this respect. Id. 829. Motions to dissolve generally involve delay, which is often useless and vexatious. It is desirable that they be brought as soon as possible, and twenty days seems to be suf- ficient time for that purpose when not pre- vented by circumstances of a compelling na- ture. Id. 830. Rule 126 provides sufficiently for the consideration of matters which might have been made the basis of motion under Rule 122, but which were not so presented, and the action of the examiner of interferences trans- mitting or refusing to transmit a motion brought after the twenty days allowed by the rule will not be disturbed except where there has been an abuse of discretion or his action is clearly erroneous. Id. 831. Where a motion is filed after the twenty days to transmit a motion to dissolve and the motion to transmit is denied on the ground that no sufficient reasons have been set forth to excuse the delay and thereafter an- other motion is made. Held, the subsequent motion should be treated as a motion for re- hearing, and no limit of appeal from a deci- sion on that motion should be set. Good- fellow V. Jolly, C. D. 1904, 110 O. G. 602. 832. Where a motion to transmit an in- terference is brought by a new attorney ap- pointed after the time for filing has expired, and it appears that the reason why the motion was not brought within the prescribed time was that the attorney then having charge of the case did not think such motion advisable, and so far as appears the motion at this time is due to a change of purpose, arising from the fact that a new attorney was appointed, Held, that such reason is not sufficient excuse for the delay, and motion should be denied. Rayburn v. Strain, C. D. 1904, 110 O. G. 603. 833. A motion to dissolve filed after the twenty days permitted by the rule will not be transmitted to the primary examiner in the absence of a showing why it was not sooner presented. Mc.\rthur v. Gilbert, C. D. 1904, 111 O. G. 1624. 834. The pendency of a motion to shift the burden of proof is no good reason for delay in bringing a motion for dissolution. Id. 835. Where a motion for dissolution is brought nearly a year after the expiration of the twenty days allowed by Rule 122 and the reason given for delay is that the reference on which the motion is based was not found until after the expiration of the time allowed by the rule and it does not appear that the ref- erence was not found in its expected place or that any attempt had been made to find the reference within the time allowed by the rule. Held, that the examiner of interferences prop- erly refused to transmit the motion. (Stur- gis V. Hopewell, ante, 82, 109 O. G. 1067.) Schirmer v. Lindemann and Stock, C. D. 1904, 111 O. G. 2222. 234 INTERFERENCE, XVII, (g), 1. 836. Where a motion for dissolution is brought long after the expiration of the twenty days allowed by the rule and no at- tempt has been made to show that the moving party could not have brought the motion ear- lier (Nicdringhaus v. Marquard v. McCon- ncll, C. D. 1902, 403, 101 O. G. 1610) or that the alleged anticipating patent could not have been found by exercising reasonable diligence (Lipe V. Miller, C. D. 1903, 266, 105 O. G. 1532), Held, that the motion should not be transmitted. Id. 837. The fact that the moving party has had several attorneys to represent him during the prosecution of his application is not a valid excuse for failure to bring his motion to dissolve within the time expressly given by the rule. The right of the party directly involved is not the present attorney, but the applicant, who had an opportunity to take ad- vantage of Rule 123, but failed to do so. Id. 838. When motion to dissolve for no inter- ference in fact is denied by primary examiner and by commissioner on appeal and a new mo- tion is then brought by same party to dissolve on ground of non-patentability of issue, but the time for bringing motions has expired. Held, that the transmission of the new mo- tion depends upon whether good and sufficient reasons are shown why the new ground was not presented as part of the earlier motion or within the time fixed by the rules for bring- ing such motions. Hedlund v. Curtis, C. D. 1904, 113 O. G. 1419. 839. It would obviously be preferable from the point of view of parties who cannot pre- vail upon priority, to raise first the contention of no interference in fact and in the event of an adverse decision on this issue to attack the patentability of the claims; but the in- terest of other parties and good practice de- mand that this course be permitted only upon showing of good and sufficient reasons why all of the questions were not raised in the first instance. Id. 840. When on previous motion to dissolve for no interference in fact the examiner and commissioner had pointed out, respectively, different specific structures as included by the claim in issue, but the claim is obviously lim- ited to neither of these structures. Held, that this divergence of the commissioner's from the examiner's decision did not create a new situation or furnish reasonable ground for surprise, warranting transmission of a new and tardy motion for dissolution. Id. 841. That the moving party had arbitrarily adopted a narrow interpretation of the issue and had not anticipated an unfavorable deci- sion upon his earlier motion cannot be ac- cepted as a showing sufficient to justify trans- mission when the second motion comes long after the time fixed by the rules for filing mo- tions. Id. 842. Where a party consumes the twenty days in which motions for dissolution should be filed in negotiations for a settlement of the interference and waits until the negotia- tions are broken off, which occurs a few weeks after the expiration of the twenty days, before he makes a search for antici- pating references, Held, that a motion to dis- solve brought at that late date should not be transmitted to the primary examiner. In- goldsby V. Bellows, C. D. 1904, 113 O. G. 2214. 843. Held, that negotiations for a settle- ment of an interference are not circumstances of a compelling nature which prevent the bringing of a motion to dissolve within the time permitted by the rules. Id. 844. Where motion for dissolution is made after the twenty days allowed by the rule and no showing is made why the grounds of the motion were not discovered and the motion brought within the twenty days except that the motion was delayed to await decision upon a motion by another party, Held, that the mo- tion will not be transmitted to the primary examiner. Jackson v. Cuntz, C. D. 1905, 115 O. G. 510. 845. The pendency of one motion furnishes no excuse for delay in presenting another mo- tion beyond the twenty days fixed by the rule. Id. 846. Where a motion for dissolution is brought long after the time fixed by the rules and is based upon patents discovered six months before the motion was made. Held, that the motion will not be transmitted to the examiner for consideration. Wilcox v. New- ton, C. D. 1905, 116 O. G. 1452. 847. Where motion for dissolution was filed long after the time allowed by the rules and in excuse for the delay it is said that a refer- ence relied upon was newly discovered, but it appears that other references are cited and other grounds for dissolution given. Held, INTERFERENCE, XVII, (g), 1. 235 tliat the excuse is insufficient. Pfingst v. An- derson, C. D. 190.-,, 117 O. G. 597. 848. The pendency of an appeal upon one motion is no excuse for delay in filing another motion which the rules permit on condition that it is filed within a specified time. Id. 849. Where it appears that a motion to dis- solve was not brought by counsel for one of the parties within the time permitted by the rules because such procedure was not deemed admissible, Held, that a mere change of opin- ion after retention of additional counsel will not justify transmission of the motion for dis- solution long after the time when it should have been brought. Carver v. McCanna, C. D. Ul0.i, 117 O. G. .599. 850. Where motion for dissolution was filed two months after access was permitted to op- ponent's case and it appeared that the delay was due to several delays in attending to the preliminaries to the motion, not shown to be unavoidable, Held, that the motion would not be entertained. Carney v. Latimer, C. D. \WJ, 119 O. G. 652. 851. Where excuses offered for delay in bringing motion for dissolution do not cover the period in which the motion should have been brought or some of the subsequent pe- riod, but apply only to the latter portion of the subsequent period. Held, that the motion should not be transmitted. McKee v. Baker, C. D. 1906, 120 O. G. 657. 852. Where it is not shown that a party went diligently to work upon his case at the proper time to discover whether a motion for dissolution should be brought, nor that he was prevented from making the necessary investigation and bringing the motion within the period fixed by the rules, Held, that the motion should not be transmitted. Id. 853. The rule requiring motions to be brought within a fixed time is a wholesome one, and its enforcement requires that motions be not accepted when brought after the ex- piration of that time except where circum- stances are shown which made it impossible to bring the motion within the regular period or under which the party could not reasonably be expected to have brought it therein. Id. 854. A delay of three months in bringing a motion to dissolve is not excused because of alleged delay to the moving party in pro- curing copies of two applications which are referred to in the preliminary statement of the opposing party. It was not necessary to the bringing of the motion to procure copies of such applications, as they were not includ- ed in the interference and could not, there- fore, form a basis for its dissolution. Moore V. Curtis, C. D. 1906, 121 O. G. 2325. 855. Where a motion to dissolve was brought more than seven months after the time li.xed by the rules and the e.xcuse for the delay was that the attorney was so busy with other business matters that he could not soon- er bring the motion. Held, insufficient to ac- count for the long delay. Townsend v. Cope- land V. Robinson, C. D. 1906, 124 O. G. 1210. 856. Where it is urged that even though the showing in excuse of the delay in bringing a motion to dissolve be regarded as insufficient the motion should nevertheless be transmitted in view of the fact that no testimony has yet been taken and that there is a motion to amend now pending before the examiner. Held, that these circumstances are not con- trolling and that the provision of Rule 122 re- quiring motions to be brought, if possible, within a time fixed is conducive to orderly procedure and must be enforced. Id. 857. The fact that similar motions have been brought in companion interferences con- stitute no sufficient excuse for delay in bring- ing a motion to dissolve. Cutler v. Carichoff, C. D. 19U7, 130 O. G. 656. 858. Where a motion to dissolve on the ground that the adverse party had no right to make the claims and that his application did not show an operative device, was brought nearly two months after the expiration of the thirty days. Held, that the fact that attorneys were busy with other matters and that it was necessary to make certain models constitutes no sufficient excuse for the delay, especially as no showing w-as made why it was necessary to make so many models or to take so long a time to complete them. Josleyn v. Hulse, C. D. 1097, 130 O. G. 1689. 859. The pendency of a motion under Rule 109 is no excuse for the delay in bringing a motion to dissolve. Id. 860. The fact that numerous appeals and petitions have been taken to have transmitted a motion to dissolve which was not in proper form constitutes no excuse for the delay in bringing the motion in proper form. Brant- ingham v. Draver and Draver, C. D. 1907, 130 O. G. 2720. 861. A delay of seven weeks in the filing of a motion to dissolve will not be excused on 236 INTERFERENCE, XVII, (li), i. a showing that counsel called applicant's at- tention to the advisability of filing the motion, that it was applicant's intention to visit Wash- ington for the purpose of consulting his attor- ney regarding the motion, but that before a meeting could be arranged business of great importance called him to other places, espe- cially in view of a vigorous protest by the op- posing party against delay and a showing that such delay would result in hardship to him. Blackmore v. Hall, C. D. 1908. 132 O. G. 158. 862. The fact that an appeal had been taken from a decision refusing to transmit a former motion to dissolve and that applicant was awaiting a decision thereon, Held, insufficient to excuse delay in bringing a second motion. PapendcU v. Bunnell v. Reizenstein v. Gais- man v. Gillett, C. D. 1908, 1,32 O. G. 18:57. 863. The pendency of a motion to shift the burden of proof is no excuse for the delay in bringing a motion to dissolve. Price v. Black- more, C. D. 1908, i:« O. G. 514. 864. A motion to dissolve filed late and based on alleged admissions in a motion filed by the opposing party will not be transmitted. Ellis v. Schroeder v. Allen, C. D. 1908, l,-i4 O. G. 180!!. 865. Where in answer to an order issued under Rule 114 against a junior party to an interference to show cause why judgment should not be rendered against him such party presents a motion for dissolution alleging non- patentability of the issue, it is incumbent upon him to comply strictly with the provisions of Rule 122, and such a motion filed after the expiration of the thirty days allowed by the rule should not be transmitted in the absence of a very satisfactory showing of reasons why it was not earlier presented. Ryder v. Brown V. Tripp and McMeans v. White, C. D. 1908, i:!7 O. G. 228. 866. The fact that the primary examiner discovers a reference and brings it forward of his own motion in a companion interfer- ence is no excuse for the delay of a party in bringing a motion to dissolve based on such reference where it does not appear that the same could not have been discovered in time had diligence been exercised. Townsend v. Ehret v. Young v. Struble, i:?7 O. G. 1484. 867. A motion to dissolve brought by the junior party after the expiration of his time for taking testimony, Held, properly refused transmission in the absence of satisfactory reasons why such motion was not brought within the time allowed by Rule 122. Ries v. Gould v. Pomeroy, C. D. 1911, 171 O. 0. 483. (h) Defiiiilcncss of Motion. 1. In General. 868. A motion to dissolve an interference will not be regarded as in proper form for transmission to the primary examiner unless it is made definite and gives information as to the point to be argued. Vreeland v. Fessen- den v. Schloemilch, C. D. 1905, 117 O. G. 26Xi. 869. In order to restrict, so far as possible, the labor of investigation and consideration on the part of the office and on the part of the parties against whom motions for dissolu- tion are brought to the exact matters by rea- son of which the moving party believes the interference should be dissolved, it is believed that the motion should set forth the specific facts relied upon to show that the interference should not continue. Klepetko v. Becker, C. D. 190G, 120 O. G. G5S. 870. In setting forth facts in motions for dissolution the distinctions between the gen- eral grounds of dissolution which have been pointed out in Wodward v. Newton (C. D. 1899, 13, 86 O. G. 490) ; Owens v. Richardson (C. D. 1904, 289, 111 O. G. 1037), and Kac- zander v. Hodges and Hodges (C. D. 1905, 361, 118 O. G. 836), must be carefully ob- served. The observance of these distinctions is necessary to the logical presentation of the questions raised and to the avoidance of con- fusion in the matter of appeals. Id. 871. Where the motion does not state facts of such nature as might form proper basis for dissolution upon the general ground upon which the facts are alleged, the motion is not sufficiently clear and definite, and it should not be transmitted as to those grounds to which such objections apply. Id. 872. Where a motion is brought to dissolve the interference on the ground of irregularity in the declaration, because the counts are not clear and definite. Held, that the alleged in- definiteness must reside in certain portions of the counts or in certain words used and that the motion should point out wherein the sup- posed indefiniteness lies. The motion need not state the arguments, but should definitely set forth the points to be argued. Berrye, Kane, and Stengard v. Hildreth, C. D. 1906, 122 O. G. 1722. 873. A motion to dissolve on the ground of non-patentability of the counts of the issue INTERFERENCE, XVII, (h), 2, 3. 237 should be refused transmission unless the patents rehed upon are specifically named and applied. Lotterhand v. Cornwall, 148 O. G. 1344. 874. A motion to dissolve on the ground of nonpatentahility which does not clearly point out the pertinency of the references re- lied upon should not be transmitted. Vander- weld V. Smith, l.j'J O. 0. 41)0. 2. Sufficiently Definite. 875. The specific facts upon which a mo- tion to dissolve is based need not be stated when the only facts relied upon arc disclosed in the record. (Law v. Woolf, C. D. 1801, 91, :>r, O. G. 1.J27; Wells v. Packer, C. D. I90n, 35, 90 O. G. 1947.) Winter v. Slick v. VoU- knmmer, C. D. 1901, 97 O. G. 1837. 876. A motion to dissolve alleging non-pat- tcntability of the opposing party's claims in view of certain specified patents is not in- definite simply because the patents are early enough to anticipate the claims of both par- ties. The allegation that the patents antici- pate the claims of the opposing party only will not prevent a holding by the primary ex- aminer that they anticipate the claims of both parties. Latour v. Lundell, C. D. 1906, 122 O. G. !046. 877. A motion to dissolve on the ground of non-interference in fact which alleges that no interference in fact exists, for the reason that certain specified elements of specified counts cannot be read on the constructions of both parties with the same meaning, is not open to the objection of indefiniteness. It is not necessary for the motion to state the grounds on which the allegations are based, as this is a matter of argument. Garcia v. Pons, C. D. 1906, 122 O. G. 1396. 878. A motion to dissolve on the ground of non-patentability, which states that a given count "does not involve patentable invention over each of the foUow-ing Letters Patent," after which certain patents are specified, is not open to the objection of indefiniteness. Mc- Canna v. Morris, C. D. 1907, 128 O. G. 1292. 3. Not Sufficiently Definite. 879. Where more than two parties are in- volved in an interference and a motion for dissolution is made alleging no interference in fact, but not stating the particular parties in regard to which the contention is to be made. Held, that the motion is not sufficiently definite. Vreeland v. Fessenden v. Schloc- milch, C. D. 190.-), 117 O. G. 263.3. 880. A motion for dissolution alleging ir- regularity in the declaration without specify- ing the nature of the supposed irregularity is not sufficiently degnite. Id. 881. A motion for dissolution alleging that there is no interference in fact, but not speci- fying the counts of the issue in regard to which the contention is to be made, is not sufficiently definite. Vreeland v. Fessenden V. Schloemilch, C. D. 1905, 119 O. G. 1259. 882. A motion for dissolution should give the opposing party a reasonably definite idea of the points to be considered when the hearing is had. Id. 883. No motion for dissolution should be brought unless the moving party has some definite point in mind which he wishes to make, and it is no hardship to require him to state the point in his motion. Id. 884. Where a motion for dissolution alleges irregularity in the declaration, but the spe- cific statement of facts upon which the alle- gation is based shows that the real question goes to the right of a party to make the claim. Held, that they should be included under the allegation that the opposing party has no right to make the claim. Id. 885. A motion to dissolve alleging that a party has no right to make the claims is not sufficiently definite where the point to be ar- gued is stated to be merely the failure of such party to disclose anything in his appli- cation which is "suggestive of the issue." The particular element or elements which are be- lieved to be not properly disclosed and the particular count or counts including such ele- ments should be specified. Dunker v. Reist, C. n. 1905, 119 O. G. 1925. 886. In a motion to dissolve the bare alle- gation that there is no interference in fact is insufficient. The point or points to be argued should be specified with great particularity. Not only the count or counts, but the particu- lar element or elements which are to be brought in question, should be specified. Id. 887. .\ motion to dissolve which alleges that the opposing party has no right to make the claims of the issue, five in number, because he does not show five specified combinations of elements, is objectionable on the ground of indefiniteness, where it is found that the five combinations specified are the same as the 233 INTERFERENCE, XVll, (h). 3. combinations of the claims in issue. The alle- gation amounts to nothing more than a state- ment that the opposing party has no right to make the claims of the issue. Latour v. Lun- dcll, C. D. 1906, 122 O. G. 1046. 888. A motion to dissolve on the ground of non-interference in fact which alleges that neither party should be permitted to secure claims broad enough to cover the other's con- struction is indefinite and should not be trans- mitted to the primary examiner. Dickinson V. Hildreth, C. D. 1906, 122 O. G. 1397. 889. Where nineteen unapplied references are cited as a reason for dissolution of an in- terference on the ground of non-patentability. Held, obviously bad and that this reason for dissolution will not be entertained in consid- ering the motion. Pym v. Hadaway, C. D. 1906, 123 O. G. 1238. 890. A motion to dissolve on the ground of lack of interference in fact which alleges merely that there is no interference in fact as to either count, because they do not mean the same thing when read on the constructions of both parties, is not sufficiently definite, as it fails to specify the element or elements of the counts wherein the different meanings are supposed to reside, and should not be trans- mitted to the primary examiner. Miller v. Mann, C. D. 1906, 122 O. G. 730. 891. In augurating the practice of requiring definiteness in motions to dissolve it was the intention not to require that the arguments should be given, but that reasonable notice should be given of the points to be argued. These facts must be in the mind of the mov- ing party when the motion is drawn, if it is one brought in good faith, and no reason is known why his opponent should not be given this information before the hearing for his assistance in preparing his defense. Heyne, Hayward, and McCarthy v. De Vilbiss, Jr., C. D. 1906, 12.5 O. G. 669. 892. Where the motion to dissolve alleges non-patentability of the ten counts of the issue in view of six enumerated patents, Held, that if the moving party is of the opinion that each of the references is an anticipation of each of the claims the motion should so state; if not, the motion should enumerate the references in connection with the claims to which they will be applied in the argument. If the con- tention of non-patentability is based upon the theory of aggregation or double use or sub- stitution of equivalents, it should appear in the motion, also the manner in which it is pro- posed to combine the references. Id. 893. Where a motion for dissolution refers to the prior art cited in the records of the applications and gives no information as to what patents are to be urged against the re- spective counts or how they are to be used or combined to anticipate invention stated in said counts, Held, that the motion is too in- definite and transmission of the same was properly refused. Brown v. Inwood and Lav- enberg, C. D. 1907, 130 O. G. 978. 894. Where it is moved to dissolve an inter- ference on the ground that the issue is not patentable in view of certain references cited. but it is not stated how these references arc to he applied, the motion to transmit should be denied. Phillips v. Scott, S. D. 1907, 130 O. G. 1312. 895. The allegation in a motion for disso- lution that the issue is unpatentable in view of eight references, of which it is said that "each of the counts is also met in each of the above patents, singly or in combination," is vague and indefinite, and the transmission of the motion for dissolution was properly re- fused. Thullen v. Townsend, C. D. 1907, 130 O. G. 1312. 896. Held, that a motion to dissolve an in- terference on the ground that the claims in issue are not patentable in view of certain patents and others which "will be cited more than five days before the hearing" should not be transmitted. Rule 122 requires that the motion for dissolution must "contain a full statement of grounds relied upon." Papen- dell V. Bunnell et al., C. D. 1907, 131 O. G. 362. 897. A motion to dissolve alleging that each of the counts of the issue is anticipated or necessarily limited, so as to prevent them from being read upon the devices of both of the parties in view of seven enumerated patents, is indefinite, because the allegation that the counts are anticipated or limited is in the al- ternative and the motion does not state which counts are to be urged as anticipated and which limited, nor does it state which of the patents are relied upon for anticipation and which for restriction. Murphy v. Borland, C. D. 1908, 132 O. G. 231. 898. A motion alleging that the opposing party has no right to make the claims on ac- count of informality of his specification is too INTERFERENCE, XVII, (i), 1. 239 indefinite to be transmitted. Id. Rowe v. Brinkmann, C. D. isns, lH.i O. G. 51.1. 899. Where a motion for dissolution refers only to "the old form of hickey" as evidence of unpatentability and merely alleges irregu- larity in the declaration, without showing wherein it consists. Held, that the motion is too indefinite, and transmission thereof on these grounds was properly refused. Joseph V. Kennedy v. McLain, C. D. 1909, 144 O. G. 1089. 900. A motion to dissolve, alleging no in- terference in fact on account of the meaning which it is contended should be given a cer- tain term, is too indefinite to be transmitted where this term does not occur in all the counts and it is not stated to which of the counts the motion is intended to apply. Bactz V. Kukkuck, C. D. 1909, 148 O. G. 1343. 901. An allegation in a motion to dissolve that the opposing party has no right to make the claims "since the issue covers an inven- tion not contemplated nor disclosed by him in the original specification (Rule 70)," Held, not a sufficiently definite statement of the rea- sons upon which the motion is based and transmission of the motion properly refused. Id. 902. A motion to dissolve or. the ground of the lack of right of the opposing party to make the claims was properly refused trans- mission where the motion did not specifically state what elements of the claims were not shown. Id. (i) Irregularity in Declaration. 1. Dissolved. 903. Where the issue of the interference was for a process and the examiner included under that issue claims for an article of man- ufacture which were not made by one of the parties. Held, that the interference was im- properly declared and that the article claims should not have been included in the inter- ference. Calm V. Schweinitz v. Dolley v. Geisler, C. D. 1899, 86 O. G. 1633. 904. Since the decision in Hammond v. Hart (C. D. 1898, ^2, 83 O. G. 743) it has been the practice of the office to dissolve an interfer- ence where each party has not made the claim of the other, if no testimony has been taken and the parties will not be injured by the dis- solution. Id. 905. Both parties disclose a lubricator of the type known as "balanced hydrostatic sight- feed lubricators." They disclose suitable cyl- inder and equalizing-pipe connections. In Wood's claim in interference these connec- tions are specified, while in Essex's they are not. Both parties disclose a valve for con- trolling the by-passage automatically, and it is recited as an element in the respective claims of the parties. Wood's claim recites that this valve is automatically regulated "by variations of pressure within the duct," such a state- ment not being in Essex's claim. Held, that under the practice of the office the limitations found in one claim and not in the other can- not be construed as non-essential, and the in- terference was improperly declared. Essex V. Woods, C. D. 1899, 89 O. G. 3.53. 906. Held, further, that had the examiner believed that Essex's device was inoperative without the use of suitable cylinder and equal- izing-pipe connections and without the valve being automatically operated by variations of pressure within the duct, and called upon Essex to amend his claim accordingly, there would have been no necessity for placing a construction upon Essex's claim by reading into it certain limitations. Id. 907. Held, further, that had Essex refused to comply with the examiner's suggestion, the examiner would have been justified in reject- ing Essex's claim as being for an inoperative device and as unpatentable sver the Woods in- vention. Id. 908. An interference is not sufficiently clear and definite which requires that certain lim- itations in the claims of one party should be held to be immaterial and that other limita- tions should be read into the claims of either one or the other party to the proposed inter- ference in order to make them the issue of interference. (Wolfenden v. Price C D 1898, 87, 83 O. G. 1801, cited.) Id. ' " 909. Where the claims constituting the issue are so vague and indefinite that it is impos- sible to obtain a clear idea of their scope, confusion will result in taking testimony, and therefore the interference should be dissolved on the ground of irregularity in the declara- tion. Dinkel v. D'Olicr, C. D. 1904, 113 O G 2J07. 910. Where the claims of the parties differ in phraseology and the claims of one party contain expressions not found in the claims of the other party. Held, that the interference should be dissolved. Reichert v. Brown C. D. 1906, 124 O. G. 2903. ^' 240 INTERFERENCE. XVII, (i), 2. 911. Vagueness and indefiniteness of the issue are proper questions to raise under al- legations of informality or irregularity in the declaration of the interference. Field v. Cole- man, C. D. 1907, 131 O. G. 1686. 912. The examiner suggested to M. two claims which were the same as two of K.'s claims, except that the term "supporting mem- ber" was substituted for "attaching-lirackct," but did not suggest them to K. After M. made the claims the interference was declared with these claims as two counts of the issue. J/clH. that this was an irregularity in the declaration of the interference, as Rule 96 clearly contemplate that the issue shall be in terms of the claims actually made by both par- ties or which they have had an opportunity to make. McBride v. Kroder, C. D. 1908, 133 O. G. 1680. 2. Not Dissolved. 913. When under the present practice the in- terference was improperly declared by reason of the fact that the claims of the parties are not of the same scope, but it appears that the party with the specific claim can make and in- tends to make the broad claim, although he has not actually presented such claim by amendment. Held, that the interference should not be dissolved, since a dissolution would merely result in a redeclaration on the same issue. Morss v. Henkle, C. D. 1899, 86 O. G. IS 3. 914. It is irregular to include several claims of one party under one issue; but when judg- ment has been rendered on the record and no testimony is to be taken, it is not such ir- regularity as to preclude a proper decision on priority, and is therefore not a good ground for dissolution. Id. 915. Where the irregularity is alleged to consist in the fact that M. has stated in his applications involved in the interference that they are divisions of a prior patent granted to him. Held, that such a statement does not in any way effect the disclosure of the inven- tion in cither the patent or the applications. It merely calls attention to an alleged fact (Bundy v. Rumbarger, C. D. 1900, 143, 92 O. G. 2002) and does not constitute such an "irregularity in declaring" the interference "as will preclude a proper determination of the question of prioritj'." Meyer v. Sarfert, C. D. 1901, 96 O. G. 1037. 916. Where the examiner has not notified the parties that the claims in issue are patent- able. Held, that this does not constitute such irregularity as will preclude a proper decision of the question of priority of invention and does not warrant a dissolution of the interfer- ence. Luger V. Browning, C. D. 1902, 100 O. G. 231. 917. Held, that questions as to the patenta- bility of the claims and irregularity in the declaration should be raised by motion under Rule 122 and that they will not be considered upon an appeal relating to priority of inven- tion. Id. 918. A petition that the interference be re- manded to the primary e-xamincr with direc- tions to dissolve it on the ground that the issue is not patentably different from the issue in another interference between the same par- ties denied, since even if the contention is well founded there is nothing to prevent a proper decision on priority. Dorr v. Ames and Rcarson, C. D. 1903, 106 O. G. 263. 919. Where it is contended that there was irregularity in the declaration of interference because one party was not required to furnish a supplemental oath, Held, that this is an ex j'arte matter not open to argument in the in- terference. Auerbach and Gubing v. Wiswcll, C. D. 1904, 108 O. G. 289. 920. Where on a motion to dissolve it is contended that the issue is a species of the in- vention shown by H., H., and H. which they did not claim originally and that they should not have been permitted to shift from one spe- cies to another. Held, that this is a mere mat- ter of procedure alone which in no way affects the rights of B. and is not such irregularity as will preclude a proper decision as to pri- ority of invention. Hoefer, Hoefer and Hoe- fer v. Barnes. C. D. 1904, 108 O. G. .560. 921. Where it is urged that the interference was irregularly declared, because the claims cover two species of the invention. Held, that this is not such irregularity as will preclude a proper decision of the question of priority of invention and that it furnishes no good ground for dissolution. Atherton and Happ V. Cheney, C. D. 1904, 111 O. G. 1040. 922. Where on a motion to dissolve it is . contended the interference is irregularly de- clared because a supplemental oath lacks a notarial seal. Held, that this is an ex parte matter, and furthermore is not such irreg- ularity as will preclude a proper determination INTERFERENCE, XVII, (i), 2. 241 of the question of priority. Schubert v. Munro, C. D. 1904, 113 O. G. 283. 923. Where motion for dissolution is based upon the contention that the suggestion of the claim in interference to a party by the examiner was improper, because said party had not claimed substantially the same inven- tion expressed in said claim, Held, that the question raised involves no such irregularity in declaring the interference as might pre- clude proper determination of the question of priority of invention and that no ground for dissolving the interference is presented there- on. Meden v. Curtis, C. D. 1905, 117 O. G. 1795. 924. Where party requests that a claim of his opponent be added to the issue, under Rule 109, and this is done. Held, that the party is hardly in a position to urge that the ac- tion of declaring the interference as to this claim was irregular. Wickers and Furlong v. Weinwurm, C. D. 1905, 117 O. G. 1747. 925. The improper suggestion of claims under Rule 96 is not considered such an ir- regularity in the declaration of the interfer- ence as will preclude a proper determination of the question of priority and is not there- fore, a sufficient warrant for dissolving the same. Templin v. Sergeant, C. D. 1905, 119 O. G. 961. 926. Failure to include in the issue certain claims made by both parties does not consti- tute an irregularity where such claims are not patentahly different from those which were included. Gaily v. Burton, C. D. 1906, 130 O. G. 325. 927. The omission or improper use of hy- phens in the counts of an issue and the use of the word "power" instead of the word primary are mere clerical errors, which may be corrected by a letter of the primary ex- aminer calling attention to them, and they furnish no reason for dissolving the inter- ference on the ground of irregularity in the declaration. Id. 928. Where two interferences are declared, one between an application of S. and a divi- sional application of P. and the other be- tween the same application of S. and the pa- rent case of P., the fact that the issue in- volving the parent case could as well have been included in the interference involving the divisional application does not constitute such an irregularity as will prevent a proper de- termination of the question of priority. 16 Phillips V. Sensenich, C. D. 1906, 122 O. G. 1047. 929. Where neither of the applications in interference was ready for allowance, but the decision of the commissioner on appeal affirm- ing the rejection of certain claims of one of the applications had become final, and said application was not open for prosecution but merely awaited the cancelation of the re- jected claims. Held, not such an irregularity as to preclude a proper determination of the question of priority or to warrant dissolution of the interference, until one of the applica- tions was in condition for allowance. Locke V. Crehbin. C. D. 1906, 124 O. G. 317. 930. Held, that the failure of the examiner to include in the issue claims which he thinks do not patentahly differ therefrom did not constitute an irregularity. (Gaily v. Burton, ante, 7, 120 O. G. 325.) Id. 931. A motion to dissolve the interference on the ground of irregularity in declaration by reason of uncertainty in the meaning of the counts of the issue denied, since the issue appears to be clear and definite. Goodwin V. Smith, C. D. 1906, 123 O. G. 998. 932. Where both parties are applicants and under the head of informality in declaring the interference it is alleged in a motion to dis- solve that the claims do not apply to the structures of either party. Held, that this is not such an admission as to justify a decision on priority adverse to the moving party. (The case of Lipe v. Miller, C. D. 1904, 114, 109 O. G. 1608, distinguished.) Danquard v. Cour- villc. C. V). 1907, 131 O. G. 2421. 933. The failure of an examiner to include in the interference issue claims not patentahly different from the issue furnishes no reason for the dissolution thereof on the ground of informality in the declaration. Earll v. Love, C. D. 1909, 140 O. G. 1209. 934. Where a party contends that a claim in issue is not readable upon that one of two of his applications involved in which it is made, but upon the other. Held, that, if true, this would not constitute such irregularity as to preclude a proper determination of priority and that the supervisory authority of the com- missioner will not be exercised to have the claim transferred from one application to the other. Hewitt and Waterman v. Greenfield, C. D. 1909, 149 O. G. 1119. 935. It is well settled that the question of whether claims inserted by amendment should 243 INTERFERENCE, XVII, (j), 1, 2, 3. be supported by a supplemental oath is an ex parte matter not open for argument in the interference proceeding and that in the ab- sence of such an oath, even where it should have been furnished, there is no such irregu- larity as will preclude the proper determina- tion of the interference. Rietzel v. Harmatta, C. D. inin, 161 O. G. 1043. 936. Where a party moves to dissolve an interference on the ground that he should have been made the senior instead of the junior party. Held, that this alleged irregular- ity relates merely to the burden of proof and affords no ground for dissolving the interfer- ence. The Seamless Rubber Co. v. The Star Rubber Co., C. D. 1910, 152 O. G. 957. (j) Right to Make Claims. 1. In General. 937. When two applications of one party are included under one issue, the allegation that the applicant has no right to make the claim in one of those cases, although it is ad- mitted that he has such right in the other case, is a proper ground for a motion to dis- solve. Sadtler v. Carmichael v. Smith, C. D. 1S99, 86 O. G. 149S. 938. Where a motion to dissolve an inter- ference as to some of the counts of the issue on the ground that one of the three parties has no right to make the claims is granted. Held, that the interference is continued as to the remaining counts without the necessity of a redeclaration as to them. Maxwell v. Bryon v. Henry, C. D. 1902, 98 O. G. 1968. 939. The contention that one of the parties has no right to make the claim will not be con- sidered upon an appeal upon the question of priority of invention, but should be presented by a motion to dissolve. Woods v. Waddell, 106 O. G. 2017. 940. Facts which will support the ground of no right to make claims relate to extent of disclosure, estoppel, operativeness, and the like and if established, lead to rejection of the claims in the application of at least one of the parties. Booth, Booth and Flynt v. Hanan and Gates V. Marshall, C. D. 1906, 123 O. G. 319. 941. Where the real contention of the ap- pellant is that he has no right to make the claims in issue, Held, there is no reason why the office, having once decided that a party is entitled to make certain claims, should recon- sider the question on the party's own motion. Goodwin V. Smith, C. D. 1906, 123 O. G. 998. 942. A motion to dissolve alleging that some of the counts do not properly read on the patented structure of the moving party relates to the right of the patentee to make the claims and is not a question of informal- ity in the declaration. Earll v. Love, C. D. 1909, 140 O. G. 1209. 943. Where an interference is dissolved on the ground that one of the parties thereto has no right to make claims corresponding to the counts of the issue and no appeal is taken from such decision, the question of his right to make such claims is res adjudicata. *Gold v. Gold, C. D. I9ie, 150 O. G. 570. 944. Where the commissioner of patents af- fiims a decision dissolving an interference on the ground that one of the parties thereto has no right to make the claims, Held, that since the question of the right to make the claims is ancillary to that of priority the com- missioner had jurisdiction to enter an order that such party is not the first inventor. *Cos- pcr V. Gold & Gold, C. D. 1911, 168 O. G. 787. 945. "We attach no importance to the fail- ure to give a representation of the car in connection with the foregoing drawing. It is not necessary to add a drawing of that which was well known to every one whether skilled in the art or not. This reasonable doc- trine, well established in the patent office, has been repeatedly sanctioned by this court. *Id. 2. Dissolved. 946. Where the claim of the issue includes "compensating devices" as a separate and in- dependent feature from the other elements of the combination and one party discloses no such independent devices. Held, that he has no right to make the claim. Bowditch v. Todd, C. D. 1902, 98 O. G. 792. 3. Not Dissolved. 947. Where a motion to dissolve an inter- ference is made upon the ground that the opposing party's claim is anticipated in a pat- ent cited, but the preliminary statement of that party alleges invention before the date of the patent. Held, that the interference will not be dissolved. Forsyth v. Richards, C. D. 1905, 115 O. G. 1327. 948. Where D. discloses the mechanism cov- ered by the issue and that mechanism is me- chanically operative, his right to make the claim of the issue is not to be denied upon any INTERFERENCE, XVII, (k), 1. 243 conclusion as to the comparative superiority as between his device and those of the other parties. Jenncr v. Dickinson v. Thibedeau, C. D. 1905, 116 O. G. 1181. 949. There is no apparent reason why the office should consider the question of a party's right to make claims on his request after hav- ing once decided that he had the right to make them. Miller v. Perham, C. D. 1906, 121 O. G. 2667. 950. Where the issue specifies "means for narrowing and widening" a knit tube and certain "pickers" necessary in the perform- ance of this operation are not shown or re- ferred to in the application, but reference is made to ordinary stocking-knitters in which it is common to use "pickers," Held, that the disclosure is sufficient to inform those skilled in the art that the usual "pickers" are to be used and that the disclosure is sufficient to support the issue. Kilbourne v. Herner, C. D. 1906. 124 O. G. 1841. 951. The right of the appellant to make the claim of the issue will not be considered, for reasons stated in Miller v. Perham (ante, 157, 121 O. G. 2667.) Kinney v. Goodhue, C. D. 1906, 123 O. G. 1663. 952. A party cannot be deprived of the right to make a claim by reason of the fact that his structure performs some function in addition to what is called for by the claim. Miel v. Young. C. D. 1907. 126 O. G. 2591. 953. The contention that a party has no right to make a claim for a process of pro- ducing a printing surface because he de- scribes a step of heating the plate which is not included in the issue cannot be admitted as well founded where his specification makes it clear that the step is not necessary in all cases. *Wickers and Furlong v. McKee, C. D. 1907, 129 O. G. 869. 954. The question whether or not a sup- plemental oath should be required has been uniformly held by the office to be an ex farte matter upon which the proper determination of priority is not dependent, and the absence of such an oath furnishes no ground for hold- ing that the issue is not patentable to the party in whose case the same is required. Phillips v. Sensenich, C. D. 1908, 132 O. G. 677. 955. The original specification of N.'s ap- plication relating to combined type-writing and adding-machines did not describe the adding-machines, but stated that the invention was illustrated "in connection with an adding- machine of the class known as 'registering ac- countants,' " and only the case and a few minor elements thereof were shown in the drawings. Held, that in view of the evidence showing that such term referred to a well- known construction and that such construction was the only one on the market which had the distinctive appearance illustrated in the draw- ing, N. had the right to make claims to a combination including specific elements of such adding-machine. *Hopkins v. Newman, C. D. 1908, 134 O. G. 2028. (k) Non Interference in Fact. 1. In General. 956. Where the commissioner dissolves an interference as to a certain count on the ground of no interference in fact, because one of the parties does not show a feature, or the equivalent thereof, shown and included in the claim of the other party, the commissioner does not decide necessarily that either party is entitled to a claim in the language of the particular count under consideration. In such case the commissioner decides merely that one of the parties is attempting to cover a certain structure, but he does not decide that the language which the party employs clearly defines that structure. Ex parte Scott, C. D. 1903, 102 O. G. 820. 957. It is clear that two claims in the same language should not be allowed, and when such claims are drawn on substantially dif- ferent structures it follows that one of them at least does not define the invention on which it is based in the clear, concise, and exact terms required by law. A claim might be readable on both of such structures, but in connection with one of them it must neces- sarily be indefinite or ambiguous. Id. 958. Where an interference has been dis- solved by the commissioner on the ground of no interference in fact and the claims of the parties are in the same language, the primary examiner should determine in which case the claims define the invention disclosed in clear and exact terms, and he should object to the claims in the other case as ambiguous or in- definite. Id. 959. Where the examiner dissolved the in- terference because of non-interference in fact and because one party had no right to make claim and was reversed on appeal as to latter 244 INTERFERENCE, XVII, (k), 1. ground, but no appeal as to former ground was taken, Held, that the interference must be continued, not because of any technical rights of the parties, but because the office must refuse to issue two patents in the same art with identical claims. Elspass v. Taj'Ior, C. D. 1905, 117 O. G. 1748. 960. Where contention was made that de- vices of the parties were essentially different, but it appeared that the terms of the issue referred in the respective case to correspond- ing parts having corresponding operation and functions. Held, that there was no ground for contention that the counts meant different things in the applications of the different par- ties. Walker v. Brunhoff, C. D. 190.3, 118 O. G. 2:.:i7. 961. Where the counts in issue are claims made by both parties, there is interference in fact, unless the terms of the counts have dif- ferent meanings when read in the applications of the different parties. Townsend v. Cope- land V. Robinson, C. D. 190.S, 119 O. G. 2523. 962. The terms of claims cannot properly be held to have different meanings in the ap- plications of different parties merely because the elements to which they refer are espe- cially different in the devices of the different parties. Id. 963. In determining the question of inter- ference in fact the counts of the issue will not be construed in view of the prior art to have more limited meanings than are neces- sitated by the limitations which they express- ly include. In determining the meaning of counts the fair natural significance of the lan- guage used will be adopted. If the state of the art should require a different meaning, it must be put into the counts by amendment. Id. 964. Where arguments advanced amount to denial that the issue is patentable when read with only those limitations which arc demand- ed by the language used, Held, that such arguments will not be considered in connec- tion with the question of interference in fact. Id. 965. Dissolution for non-interference in fact must be based only on those facts and rea- sons which show that the counts of the issue have such different meanings that they might properly be allowed to both parties. Id. 966. Non-interference in fact was placed in the rules as a ground for dissolution of inter- ference as a time when parties were put into interference proceedings who had not made the same claims and is a thing of compara- tively rare occurrence in interferences de- clared under the present practicc^i. c, where both parties make claims in identical lan- guage. Blackmore v. Hall, C. D. 1905, 119 O. G. 252.3. 967. Where, as at present, parties have made the same claims, there can be no question of the existence of interference in fact separate from that of the right of a party to make claims, except in those rare cases where the same terms, though properly used in the ap- plication of each party, have distinctly differ- ent meanings in the respective cases. Id. 968. Observation of the distinction between interference in fact and right to claim is im- portant, for the reason that dissolution for non-interference in fact affords no ground for refusing the claims in issue to either party, and dissolution should not, therefore, be based on this ground, except where it would be proper, so far as the matters con- sidered in connection therewith are concerned, to issue patents to both parties containing the claims in question. Id. 969. The term "interference in fact" as used in the patent office must be restricted in meaning to exclude questions of right to make claims in order to avoid confusion through the different courses of appeal permitted in the two cases. The question of interference in fact does not properly arise until it has been found or assumed that the parties have the right to make the claims under consideration, and when raised the question is one merely of identity or diversity in the meaning of those claims as they rightfully appear in the appli- cations of the respective parties. Warner v. Mead, C. D. 1906, 122 O. G. 2061. 970. The decision of the primary examiner. upon the question of interference in fact re- lates to the specific subjects covered by the claims instead of to the devices disclosed by the parties and has no force beyond the claims before him when the decision is ren- dered. Warner v. Mead, C. D. 1906, 122 O. G. 2061. 971. Where it is urged that if the claims are literally construed they are not patentable in view of a certain specified patent, and for this reason they must be limited by construc- tion to the specific device shown by the re- spective parties, and that as so limited there is no interference in fact. Held, that this ar- INTERFERENCE, XVII, (k), 2, (1), 1. 245 gument ret|uires a comparison of the counts with the prior art to determine whether they are patentable, that the question of patenta- hihty cannot be thus raised on a motion to dissolve alleging non-interference in fact, but that the patentability of the counts must be taken as estal)lished, and that the only ques- tion open for consideration is the identity of the subject-matter claimed. Klepetko v. Becker, C. D. 1906, 129 O. G. 908. 972. Where a motion for dissolution con- tains no positive allegation that certain terms appearing in the issue have such distinct mean- ings when read as claims in the different ap- plications that different inventions are repre- sented thereby, Held, that the motion contains nothing which may be properly urged as a basis for dissolution on the ground that there is no interference in fact. Booth, Booth, and Flynt V. Hanan and Gates v. Marshall, C. D. 1906, 123 O. G. 319. 973. Facts which support the ground of non-interference in fact relate to the meanings of words and, if established, should lead to the rejection of the claim in all the applica- tions, as failing to define the invention of any party from the different inventions of the other parties. Id. 974. Where a motion is made to dissolve the interference on the ground of non-inter- ference in fact. Held, that the only question to be considered is whether the language of the issue supports different meanings with equal propriety in the applications of the re- spective parties. Kinney v. Goodhue, C. D. 1906, 123 O. G. 1663. 975. If there is no interference in fact, it is either because one of the parties has no right to make the claims or because the claims have different meanings in the applications of the different parties. The parties will not be heard to deny their own right to make the claims. (Miller v. Perham, C. D. 1906, 1.17, 121 O. G. 2067.) Daggett v. Kaufmann, C. D. 1907, 127 O. G. 3041. 976. The provision in Rule 122 for dissolu- tion upon the ground of difference in the meaning of claims was placed there to cover a clean-cut class of cases which theoretical considerations show may arise, but which, in fact, are of very rare occurrence. To justify transmission of a motion brought upon this ground, facts must be alleged indicating some- thing more than a possible lack of right upon the part of one or the other of the parties to use the language of the claim in issue. Cush- man v. Edwards, C. D. 1907, 128 O. G. 456. 977. Where it is found upon motion for dis- solution that the claims in issue have differ- ent meanings in the cases of the respective parties, the examiner should require one or both of the applicants to so modify the claims as to avoid a conflict in the terms employed to define the respective inventions. Id. Eiler- man et al. v. McElroy, C. D. 1907, 130 O. G. 2721. 2. Dissolved. 978. Where Finzelberg and Schmidt's appli- cation did not clearly describe the process which is the subject-matter involved in the interference, and no claim was made to it, and the application did not contain an allowed or allowable claim interfering, within the meaning of the law, with Dolley's claim, and their single claim was under rejection, Held, that the interference should be dissolved be- cause such irregularities preclude proper de- termination of the question of priority. (Ham- mond V. Hart, ante, 52, 83 O. G. 743, cited.) Calm V. Dolley v. Finzelberg and Schmidt, C. D. 1898, 84 O. G. 1869. 979. When the claim of a party covers a method which includes a step not claimed or disclosed by the other parties, there is no interference in fact whether or not he has the right to claim that method himself. Sadt- ler V. Carmichael v. Smith, C. D. 1S99, 8G O. G. 1498. (1) .Woii-Patciilabilily of Issue. 1. In General. 980. A motion to dissolve an interference on the ground of non-patentability is in the nature of a suggestion to the office of certain facts which are believed to negative patent- ability or to show that one of the parties is not entitled to make the claim. It is not a contest in which testimony can be received or anything presented for consideration which is not actually or presumably within the knowl- edge of the examiner in the ex parte treatment of the applications of the respective parties prior to the declaration of the interference. Painter v. Hall, C. D. 1898, 83 O. G. 180.3. 981. The motion is brought not on the ground that the interest of the party bringing it would be adversely affected by the issuance 246 INTERFERENCE, XVII, (I). 2. of a patent for the subject-matter to his oppo- nent, but for the reason that it appears to the moving party that the office was in error in finding the claim patentable. Id. 982. The fact that the interest of the mov- ing party may be adversely affected by the is- suance of the patent for the subject-matter to his opponent does not in itself entitle him or any other person to be heard, nor is it a fact to be considered in the determination of the question by the examiner. The question is the same question that was considered before the declaration of the interference — a ques- tion of patentability. Id. 983. If the examiner, upon hearing the mo- tion to dissolve, adheres to his decision that the claims are patentable and patentable to the respective parties, the contest as to these questions is concluded in so far as it is pre- liminary to the question of priority. Id. 984. The commissioner is clothed with pow- er to dissolve an interference on the ground that the issue is not patentable without de- ciding the question of priority. This power, however, should be exercised with great care, and the interference should not be dissolved except in a clear case. (Bender v. Hoffmann, C. D. 1898, 2G2, 85 O. G. 1737, and Anderson and Dyer v. Lowry, C. D. 1899, 230, 89 O. G. 1861, cited.) Walsh v. Hallbauer, C. D. 1901, 94 O. G. 223. 985. Where objection to the motion is made on the ground that non-patentability of the issues is alleged, not generally, but to one of the parties. Held, that the objection is not a valid one, as it is conceivaljle that the claims might have such different meanings in the cases of the respective parties as to be patent- able in one case and not in the other. Pym V. Hadaway, C. D. 1906, 123 O. G. 1238. 986. The consideration of a motion to dis- solve alleging non-patentability of the issue should not be postponed until after the de- termination of a motion to shift the burden of proof, as such practice would result in piecemeal prosecution of the motion to dis- solve. Field v. Colman, C. D. 1907, 131 O. G. 1686. 2. Dissolved. 987. The question as to whether either or both parties are entitled to claims as broad as the issue would ordinarily be left to the examiner, but where the conclusions on the question of interference in fact regularly ap- pealed necessarily involve the question of the right of either applicant to make the claims. Held, that the question will be considered. V'alipuet v. Johnson, C. D. 1900, 92 O. G. 179.">. 988. Where the issue is in effect broadly for a loose gasket and a patented structure, when operated as the patentee clearly intend- ed that it should be, produces a loose gasket, Held, that the issue is not patentable and the case remanded to the examiner, with instruc- tions to reject the claims of the parties in- volved. (Bender v. Hoffman, C. D. 1898, 262, 85 O. G. 1737.) Id. 989. Where the examiners-in-chief had con- strued counts of the issue so that they dis- tinguished from a reference, but so that they failed to include appellant's proofs, and ap- pellant accepts the construction so far as nec- essary to distinguish from the reference, but opposes it so far as it excludes his proofs, Held, that the counts in question read upon the reference as well as they did upon any of the structures involved in the interference and that the interference should be dissolved as to these counts. Briggs v. Lillie v. Cook V. Jones and Taylor, C. D. 1905, 116 O. G. 871. 990. Where it was contended that counts of the issue were not met by a patent, because operating parts of the patented device must be considered in abnormal position in order to meet the terms of the issue, but it appears that the position of the parts referred to as abnormal was one which they were intended to occupy in the regular operation of the ma- chine, and that whether considered in this or in other positions the patented machine dis- closed all of the elements specified by the counts in question, and these elements were capable of performing and were intended to perform every operation necessarily involved by the counts in question, Held, that the counts were anticipated by the reference. Id. 991. Where various contentions had been made as to the meaning of counts of the issue and these counts had been maintained over prior art only through construction and inter- pretation, by which they were assumed to be limited to structure which their terms did not, in fact, define. Held, that if the counts were capable of supporting the various mean- ings which had been suggested for them it would follow that they were so vague and in- definite as to prevent proper determination of the question of priority of invention. Id. INTERFERENCE, XVII, (m), (n). 247 (m) Afl'licant v. Patentee. 992. Where in an interference between an applicant and a patentee it appears that the claims are not patentable to the applicant, Held, that the question of priority of inven- tion should not be decided ; but the interfer- ence should be sent to the primary examiner to consider the question of dissolution. Hall V. Weber, C. D. 1904, 109 O. G. 1607. 993. Where a patentee in interference with an applicant moves to dissolve upon the ground that the issue is not patentable, this office will not refuse to entertain the motion on the ground that the decision may cast a cloud upon the patent. (Bellows v. King, C. D. 1903, 328, 206 O. G. 997; and Lipe v. Miller, C. D. 1904, 114, 109 O. G. 1608, distinguished.) Baltzley v. Seeberger, C. D. 1903, 113 O. G. 1324. 994. The office does not refuse to entertain motions or decide questions upon the mere ground that the decision may cast a cloud upon a patent already issued, but does refuse where that is the only purpose and effect of the motion. Id. 995. Where the opponent of the party mov- ing to dissolve for non-patentability of the issue is a patentee. Held, that the interference should be dissolved without consideration of patentability and that the case is distinguished from one w'here both parties are applicants, in which case the moving party is heard for the assistance of the office in deciding a ques- tion kept actually before it by the opposing applicant insisting upon his right to a patent. Griffith v. Dodson, C. D. 1905, 116 O. G. 1737. 996. Where applicant claims that he has the right under the statute and rules to have con- sidered the patentability of the issue, Held, that the statute does not specifically provide for the consideration of motions, and the rule limits the right to such consideration to those cases where the opponent of the moving party is an applicant. Id. 997. Where the opponent of a motion to dissolve for non-patentability is the holder of a patent inadvertently issued during the pen- dency of the moving party's application. Held, that the case is not distinguished from one where the opponent's patent was regularly is- sued and that the interference should be dis- solved without consideration of patentability. Id. 998. Where an applicant is the prior inven- tor of matter for which a patent has been in- advertently issued to another during the pen- dency of his application, Held, that he may es- tablish his rights against such patentee by proving his priority in an interference de- clared for the purpose of giving him that op- portunity and that if he is not the prior in- ventor he is not affected by the inadvertent issue of the patent, except as one of the gen- eral public. Id. 999. Where a motion for dissolution is based on the grounds that the issue is not patentable to one of the parties because it has already been patented to him, and that the issue is not patentable over the prior art, and it is contended that the motion should not be transmitted because a decision might cast a cloud on the party's prior patent. Held, that the reason is not sufficient, and the motion should be transmitted. Griffith v. Dodgson, C. D. 1906, 122 O. G. 2064. 1000. Where applicant moves for dissolu- tion upon ground of non-patentability and his opponent is involved upon a regularly-issued patent and the motion is brought after the expiration of the time for taking testimony and no testimony has been taken, Held, that the practice announced in Lipe v. Miller (C. D. 1904, 114, 109 O. G. 1608) should not be followed and that the case should proceed to judgment. Smith v. Slocum, C. D. 1906, 123 O. G. 1990. (n) Claims Identical in Two Applications. 1001. Where both parties to an interference have the same claims in their applications, Held, that the interference should not be permanently dissolved except upon some ground which will form a basis for rejection or for requiring modification of the claims in the application of one of the parties. Corey V. Eiseman and Misar, C. D. 1906, 122 O. G. 2063. 1002. Where parties have made the same claims, the interference should not be dis- solved unless it is shown either that one of the parties has no right to make the claims or that the language of the claims as properly used in the respective applications has dis- tinctly different meanings therein. Booth, Booth and Flynt v. Hanan and Gates v. Mar- shall. C. D. 1906, 123 O. G. 319. 1003. The only contentions and arguments which are in order in support of motions to dissolve interferences for non-interference in fact where the parties have made the same 348 INTERFERENCE, XVII, (o), (p). claims are those tending to show that the claims have different meanings in the cases of the respective parties, notwithstanding a perfect right upon the part of each party to make the claims. Goodwin v. Smith, C. D. 1906, 12:5 O. G. 998. (o) Ex parte Affidavits and Exhibits. 1004. The question of public use cannot prop- erly be considered on a motion to dissolve, and in no event can mere ex parte affidavits warrant the rejection of a claim. Davis v. Swift, C. D. 1901, 95 O. G. 2409. 1005. Affidavits which consist merely of opinions of various parties as to the ques- tion of interference in fact between the claims involved in the interference are incompetent and should not be received. Summers v. Hart, C. D. 1902, 98 O. G. 2585. 1006. Where an interference is transmitted to the examiner to determine the right of a party to make the claim, Held, that affidavits and an exhibit tending to show that he was in possession of the invention before he filed his application are incompetent and should not be received and considered. Dow v. Con- verse, C. D. 1903, 106 O. G. 2291. 1007. Affidavits tending to assist the primary examiner in determining the question trans- mitted to him may be received in an interfer- ence; but the office will not accept any and all affidavits that the parties choose to present. (Greenawalt v. Mark, construed.) Id. 1008. Where the question is whether the ap- plication discloses the invention, the only af- fidavits acceptable are those throwing light upon the question what the application would mean to those skilled in the art. Id. 1009. Consideration of affidavits on motion to dissolve an interference is not a right which parties are entitled to demand. Browne v. Stroud, C. D. 1906, 122 O. G. 2688. 1010. Ex parte affidavits are not equivalent to testimony, and the office is not bound to give effect thereto in determining patentability. Browne v. Stroud, C. D. 1906, 122 O. G. 2688. 1011. All proper rules for the exclusion of voluminous and multitudinous affidavits should be applied strictly. Id. 1012. Where affidavits are filed by any of the parties which are not in answer to affi- davits filed by opponents, they must ordinarily, under established practice, be served upon the opponents at least five days before the date of hearing. Affidavits in rebuttal may then be filed by opponents; but such affidavits should ordinarily be served before the day of the hearing. Ordinarily, further affidavits should not be necessary, and such further af- fidavits should not in any case be admitted except upon a satisfactory showing excusing the delay or justifying the admission of surre- buttal evidence. Id. 1013. The conclusion of the primary exam- iner upon the character of an affidavit as basis for its admission or exclusion will only be set aside in cases of clear error, and exten- sive affidavits will not be studied upon appeal to determine whether proper or improper un- less the matters urged upon the appeal have been fully urged before the primary examiner and the supposed errors in his decision are clearly pointed out on appeal. Id. 1014. An interference will not be dissolved upon the affidavit of a party thereto alleging that an affidavit of an opposing party filed under Rule 75 during the ex parte prosecu- tion of the opposing party's application to avoid a reference was false or upon such an affidavit considered in connection with the^ testimony taken in the interference, which, it is alleged, tends to disprove the allegations made in such affidavit. The affidavit of the moving party which merely denies the allega- tions of the affidavit filed under Rule 75 is obviously insufficient evidence, and it is well settled that an interference will not be dis- solved on grounds arising out of the testi- mony taken on the question of priority. Schuler v. Barnes v. Swartwout, C. D. 1909, 140 O. G. 509. 1015. Motions to dissolve alleging that the adverse party has no right to make the claims, which allegation is supported by or based upon affidavits, should not be transmitted, nor should affidavits in support of a motion to dissolve be considered by the primary exam- iner at the hearing of the motion. Horton V. Leonard, C. D. 1910, 155 O. G; 305. (p) Testimony and Facts Outside Record. lOlG. A motion to dissolve an interference cannot properly be based upon grounds rising out of the testimony taken on the question of priority, since the questions involved in such motion have nothing to do with the actions of the applicants in making the invention or reducing it to practice or with anything not appearing from the applications themselves. INTERFERENCE, XVII, (p). 849 Latham v. Force and Paranteau, C. D. 1898, 82 O. G. 185. 1017. Since the application is the absolute foundation of the applicants rights and can- not be moditied or limited by some other docu- ment or statement, the examiner is bound by the language of the application, and nothing else, in declaring an interference and also in considering a motion to dissolve. Id. 1018. The fact that the invention referred to in the testimony is not the same as that cov- ered by the issue is no ground for a dissolu- tion of the interference, but is matter within the jurisdiction of the examiner of interfer- ences, who has the exclusive right to deter- mine the competency, construction, scope, and legal meaning of the evidence introduced and to decide whether it covers the same inven- tion as that involved in the interference. Id. 1019. The dissolution of an interference after testimony has been taken should not be per- mitted under the decision of Hammond v. Hart (ante, 52, 83 O. G. 743), when another interference upon the same subject-matter would necessarily follow, even though the claims of the parties are not the same. O'Rourke v. Gillespie, ante, 136, 84 O. G. 984, and Wright and Stebbins v. Church, ante, 173, 84 O. G. 1585, cited.) Richards v. Nick- erson, C. D. 1898, 84 O. G. 1585. 1020. Upon a motion to dissolve an interfer- ence after testimony has been taken, on the ground that there is no interference in fact, under the practice as indicated in the decision of Hammond v. Hart (ante, 52, 83 O. G. 743), Held, that after parties have been put to the delay and expense of taking testimony the of- fice should not dissolve an interference with the certainty that it will be redeclared upon another issue based upon the same subject- matter. (O'Rourke v. Gillespie, ante, 13G, 84 O. G. 984, cited.) Wright and Stebbins v. Church, C. D. 1898. 84 O. G. 1585. 1021. The examiner of interferences cannot transm; to the primary examiner a motion to dissolve an interference brought subsequent to the taking of testimony. Nor is such a motion, if based upon and requiring considera- tion of testimony taken in the case, within the jurisdiction of the primary examiner to de- termine, even if transmitted. Wethey v. Rob- erts. C. D. 1898. 84 O. G. 1580. 1022. A dissolution of an interference which has proceeded beyond the stage at which mo- tions to dissolve may properly be made but in which it is clear that there is no interfer- ence in fact between the applications involved is provided for by Rule 126. Id. 1023. When it is not disputed that there is an invention common to the two parties to an interference it is unjust, after testimony has been taken, to permit dissolution for the pur- pose of permitting a redeclaration with the claims of the parties the same. (Citing Park V. Davis, ante, 111, 84 O. G. 146.) Smith v. Warner, C. D. 1898, 85 O. G. 151. 1024. When after decision by the court of appeals on the question of priority a motion to dissolve on the ground that D.'s applica- tion does not disclose an operative device is transmitted to the primary examiner and he denies the motion, holding that D.'s device is operative. Held, that such holding is a favor- able decision on D.'s right to make the claim, and no appeal can be taken. Fowler v. Dodge, C. D. 1898, 85 O. G. 1584. 1025. The question as to the operativeness of D.'s device clearly involves the merits, and if an appeal was proper at all it should have been taken to the examiners-in-chief rather than to the commissioner. Id. 1026. F. may have an interest in having D.'s application withheld from issue; but the rights of D. as well as the rights of F. must be con- sidered, and since there has been a definite decision by the office that D. is entitled to a patent to still refuse to allow such patent and to permit F. to further contest his right there- to would be to deny him a right to which the office has adjudged him entitled. Id. 1027. Contests as to whether a patent shall issue to a particular applicant are permitted in this office not because of the interest of the contestant, but because the circumstances are such that there is doubt as to whether the applicant is entitled to a patent, and this ques- tion cannot properly be determined without further investigation. After the office be- comes satisfied on this question it would not be justified in continuing the contest. Id. 1028. F.'s contention that a direct appeal should be entertained, since no indirect con- sideration on appeal may now be had at final hearing before the examiners-in-chief and commissioner, as might have been the case if his motion to dissolve had been made in prop- er time under Rule 122, denied, since his fail- ure to get such indirect consideration was due to his own failure to make the motion 2J0 INTERFERENCE, XVII, (p). and to no fault of the office or of his oppo- nent. Id. 1029. F.'s request that it be directed that his patent is.sue dismissed, since although worded as a motion it is in effect an appeal and is evidently an attempt to obtain a decision by the commissioner as to the operativeness of D.'s device. (Manny v. Easley v. Greenwood, C. D. 1889, 179, 48 O. G. .538.) Id. 1030. Certain affidavits tiled in the case on motion to dissolve should not be considered, as they were not entitled in the cause (Gold- stein V. Whelan, C. D. 1894, 518, 69 O. G. 124) ; but the memorandum filed on behalf of one of the parties referring to certain publica- tions to show that the invention as described by another of the parties is inoperative should be considered to the extent of examining the publications referred to in that paper to ascer- tain whether they show that the process is inoperative. Calm v. Schweinitz v. Dolly V. Geisler, C. D. 1899, 86 O. G. 1633. 1031. Where on a motion to dissolve an in- terference affidavits and exhibits were intro- duced, on a motion to strike them from the record on the ground that they attempt to show that the subject-matter of the inter- ference was not patentable and that ex parte affidavits are not sufficient to show non-pat- entability, Held, that the affidavits and ex- hibits should not remain a part of the record, as the patent office would not be warranted in dissolving an interference upon such af- fidavits and exhibits. McKenzie v. Gillespie v Ellis V. McElroy v. Ocumpaugh v. Norton, C. D. 1900, 93 O. G. 2103. 1032. Held, further, that as the statutory bar of public use cannot be proved by ex parte affidavits, neither can a patent be supplement- ed by such affidavits to show that the inven- tion is not patentable. Id. 1033. Held, further, that the affidavits and accompanying exhibits should be removed from the files, but should remain in the office for such further consideration as may be warranted by the subsequent proceedings in the case. Id. 1034. It is not necessary that the facts upon which a motion to dissolve is based be stated in any case where the only facts relied upon are disclosed in the record. A fair presump- tion is that where the moving party does not state any additional facts he considers that the record discloses sufficient to warrant the dissolution of the interference, and that he does not wish to refer to anything not thus disclosed. (Law v. Woolf, C. D. 1891, 91, 53 O. G. 1527, construed.) Wells v. Packer, C. U. 1900, 90 O. G. 1947. 1035. Where a motion to dissolve an inter- ference is based upon facts not disclosed in the record, the motion should make a showing of the facts outside of the record, so that there would be no surprise nor any necessity for delay in the proceeding. Id. 1036. On the hearing of a motion to dissolve an interference nothing should be considered by the primary examiner outside of the facts disclosed by the record, unless a showing of such additional facts accompanies the mo- tion to transmit to the primary examiner. Id. 1037. The allegation that the testimony taken on the question of priority made clear the meaning of the issue and showed that there is no interference in fact is no excuse for the delay in bringing a motion for dissolution, since the question of interference in fact must be determined from the applications them- selves, and this should be done before testi- mony is taken. Felbel v. Oliver, C. D. 1000, 92 O. G. 2339. 1038. The fact that F. in his testimony placed a different construction on the issue from that given it by O. furnishes us good ground for transmitting to the primary examiner a mo- tion to dissolve after the twenty days allowed by the rule have expired and after testimony has been taken. Id. 1039. Where a motion to dissolve was made fourteen months after the declaration of the interference and was based upon testimony taken in the case. Held, that the examiner of interferences properly refused to transmit it to the primary examiner. Sullivan v. Thom- son, C. D. 1901, 94 O. G. 585. 1040. When the motion alleges that T.'s de- vice does not operate in the manner set forth in his specification and certain admissions by T. in his testimony are referred to as show- ing this. Held, that the motion is based upon the testimony and should not be transmitted. Id. 1041. If it appears from the applications themselves and not from the testimony that there is no interference in fact, the discovery should have been made by an examination of the applications within the time allowed by the rules instead of waiting until after testimony was taken. Id. INTERFERENCE, XVII, (p). 251 1042. It is settled practice of this office that nothing can be considered by the primary examiner on a motion to dissolve an inter- ference which is not contained in the record of the case unless timely notice of such mat- ter as may be urged in support of the motion which is not of record is served upon the opposing party before the time set for hear- ing. Summers v. Hart, C. D. 1902, 98 O. G. 1043. To permit a party who relies upon such matter to delay presentation thereof until the time of hearing would necessitate a postpone- ment of the hearing. Such a delay of the proceedings might be obtained at any time by the observance of this course by the moving party. Such a delay should not be permitted except upon a showing of facts that the new matter could not have been earlier presented. Id. 1044. A motion for dissolution should not be brought on grounds arising from the testi- mony. Facts which are alleged to be estab- lished by the testimony are to be determined on final hearing and not on motions for dis- solution. Shellenberger v. Andrews, C. D. 1903, too O. G. 3013. 1045. Where facts not disclosed by the rec- ord are to be considered in determining whether or not an interference should be dis- solved, due and timely notice of those facts should be given to the parties. Greenawalt v. Mark, 103 O. G. 1913. 1046. A motion to dissolve an interference based upon the allegation of two years' public use and supported by ex parte affidavits should not be transmitted to the primary ex- aminer although filed within twenty days after the approval of the preliminary statements. Shrum V. Baumgarten, C. D. 1903, 104 O. G. 577. 1047. Ex parte affidavits as to public use can in no case furnish ground for dissolving an interference or for rejecting the claims of an application. The bar of public use must be established by testimony taken in accordance with the rules of evidence. Id. 1048. Affidavits may form the basis for insti- tuting public-use proceedings where the pro- testant expresses a willingness to produce the witnesses for examination and to bear the expense of taking their depositions. Id. 1049. Where it is asked that times be set for taking testimony to be used on a motion to dissolve, the purpose of the testimony being to show that certain strangers to the record made the invention. Held, that the request will be denied. Steinmetz v. Hewitt, C. D. 1903, 107 O. G. 1972. 1050. As a general rule motions to dissolve an interference are not transmitted when the reasons for bringing the motion arise out of the testimony. (Felbel v. Oliver, C. D. 1900, 150, 92 O. G. 2339.) Winton v. Jeffrey, C. D. 1904, 112 O. G. r,oo. 1051. Interlocutory motions to dissolve are not permitted upon matters which cannot be determined from a consideration of the ap- plication and office records and which requires the taking of proofs. Cory, Gebhart, and Martin, Jr. v. Blakey, C. D. 1905, 115 O. G. 1328. 1052. Where motion for dissolution is based entirely upon affidavits presented by an oppo- nent in the ex parte prosecution of his case, which affidavits had been ordered sealed, but which were not sealed until copies thereof had been obtained by the moving party, Held, that such motion should not be transmitted to the primary examiner for consideration. Kins- man V. Kintner, C. D. 1905, 118 O. G. 837. 1053. Where motions were brought before the examiner of interferences and primary examiner for permission to take testimony to be used before the primary examiner in sup- port of a motion to dissolve on the ground that one of the parties had no right to make the claims in issue, Held, that the motions were properly denied. Pym v. Hadaway, C. D. 1906, 125 O. G. 1702. 1054. Where a party desires to take testi- mony in support of his contention that his opponent has no right to make the claim in issue. Held, that he should proceed in accord- ance with Rule 130 and the decisions in the cases of Lowry and Cowley v. Spoon (ante, 224, 122 O. G. 2687) and Browne v. Stroud (ante, 226, 122 O. G. 2688), first prosecuting his motion to dissolve before the primary ex- aminer and subsequently, if necessary, bring- ing his motion before the examiner of inter- ferences for leave to take testimony. Id. 1055. Where a motion for permission to take testimony for the jjurpose of showing that the opponent's device is inoperative, pend- ing the determination of a motion to dissolve the interference, was denied by the examiner of interferences on the ground that the rules do not provide for the taking of testimony in interference cases prior to the determination 252 INTERFERENCE, XVII, (q). of a motion to dissolve, Held, tliat no appeal lies from the decision of the examiner of in- terferences on the question of taking testi- mony to show inoperativeness and that no oc- casion is presented for the exercise of the supervisory authority of the commissioner. Barber v. Wood, C. D. 1907, 127 O. G. 1991. 1056. A motion to take testimony before the primary examiner on the question of inoper- ativeness of an opponent's device, Held, prop- erly refused transmission, since such testi- mony should be taken, if at all, in accordance with the practice outlined in Pym v. Hada- way (C. D. 1906, 488, 125 O. G. 1702) and presented before the examiner of interfer- ences at tinal hearing. Gibson v. Kitsee, C. D. 1909, 145 O. G. 1249. 1067. A motion to dissolve an interference based upon matters growing out of the testi- mony should not be transmitted unless the facts alleged to constitute a bar to the issue are so clear and apparent that the propriety of the dissolution of the interference as to the specific counts cannot be seriously ques- tioned. Foster v. Bell, C. D. 1910, 159 O. G. 241. (q) New GroiDid. 1058. In view of a recent change in the practice in regard to declaring interferences, from which it follows that facts not before pertinent might be considered upon a motion for dissolution, such motion, upon rehearing, was directed to be transmitted to the primary examiner. Casler v. Armat, C. D. 1898, 84 O. G. l.'J83. 1059. Wherein an appeal to the commissioner from the refusal of the examiner to dissolve an interference new references are cited and it is asked that the case be remanded to the examiner for reconsideration, Held, that this amounts to a new motion for dissolution, and since motions should not be made peacemeal the request will be denied. Niedermeyer v. Walter, C. D. 1902, 98 O. G. 1707. 1060. Where an interference is suspended under Rule 128 and a decision is rendered dissolving the interference in view of newly- discovered references. Held, that the parties may appeal to the examiners-in-chief within the limit of appeal or may permit the decision to become final and then amend the claims to avoid the references. Davis v. Swift, C. D. 1902, 99 O. G. 1169. 1061. Upon the discovery of new facts after a motion to transmit a motion for dissolu- tion is granted "the primary examiner may consider such facts, provided due and timely notice thereof be given to the party opposing the motion to dissolve." (Wells v. Packer, C. D. 1900, 35, 90 O. G. 1947.) Whitlock and Huson V. Scott, C. D. 1902, 99 O. G. 1385. 1062. If notice of the new facts be served on the opposing party at least five days before the day set for hearing, such notice shall be considered as "due and timely." Id. 1063. Unless the practice of giving "due and timely notice" on the discovery of new facts is enforced a postponement of the time of hearing becomes necessary, and therefore a delay of proceeding might be obtained by the observance of this practice by the moving party. It is therefore held that such a delay should not be permitted except upon a show- ing of facts that the new motion could not have been earlier presented. (Citing Sum- mers V. Hart, ante, 104, 98 O. G. 258.';.) Id. 1064. Where a second motion to transmit a motion for dissolutnon is brought before the examiner of interferences on the ground of the discovery of new references, Held, that the consideration of unavoidable delay should be controlling with the examiner of interfer- ences, for the granting of the second motion for transmittal necessarily results in a second hearing of the motion for dissolution by the primary examiner and the same end would be gained by a different means. Id. 1065. Where after a period of three months has elapsed from the date of the decision of priority on the record and it appears that the new references were discovered after a very short search on the morning of the day of hearing among the records of this office in places where they might be expected to have been found, Held, that the delay in discover- ing the new references was not unavoidable. Id. 1066. Where a second motion for dissolu- tion is brought on the ground of newly-dis- covered references, the party's right to be heard depends upon whether he has been dili- gent in finding the references and whether the delay in presenting them was unavoidable. Id. Wilcomb V. Lasher, C. D. 1902, 101 O. G. 666. 1067. Where the new references relied upon on a second motion to dissolve were found in the place where they would naturally be expected to be found if careful search were INTERFERENCE, XVII, (r), (s). 253 made. Held, that proper diligence was not ex- ercised on the first motion and transmission of the second refused. Id. 1068. Where certain patents and publications are referred to on a motion to dissolve and the opposing party states on the record that he has no objection to their consideration, al- though five days' notice was not given him, Held, that the references should have been considered by the examiner. Lake v. Cahill, C. D. 1904, 110 O. G. 22.H.5. 1069. Patents referred to by one of the par- ties which are not of record and have not been served on the other parties at least five days before the hearing will not be consid- ered on motion to dissolve unless service is waived by the opposing parties. Young v. Hick, C. D. 1904, 11.3 O. G. .547. 1070. Where new grounds for dissolution are discovered by a party after the motion there- for is brought and notice thereof cannot be duly served on the other parties, the continu- ance of the hearing upon the motion may be obtained upon request, accompanied by a state- ment of facts showing that the new grounds could not have been earlier discovered. Id. 1071. The statement of the attorneys that they could not make a search until a few days before the hearing and expected that their opponents would agree to a postponement thereof, but were disappointed, is not such a showing as would have warranted a continu- ance of the hearing. Id. (r) Partial. 1072. Where an interference between three parties is dissolved as to some of the counts because one of the parties has no right to make the claims, Held, that the examiner should at once declare a new interference as to those counts between the remaining parties. Maxwell v. Bryon v. Henry, C. D. 1902, 98 O. G. 1968. 1073. An interference should not continue between two parties as to some counts and between three parties as to other counts, but two interferences should be declared. Id. (s) l>wl0. 1080. The question whether the device dis- closed in a party's application is operative re- lates to the question whether or not the decla- ration of the interference was proper and not to the question of priority of invention. Such questions should be raised by motion to dis- solve. Osborn v. Hotsapiller, C. D. 1903, 102 O. G. 1296. 1081. The contention that a party's disclosure in his application is incomplete and that the device there shown is inoperative if sustained would constitute a reason for dissolving the interference and not a reason upon which to base a decision on priority. Osborn v. Aus- tin, C. D. 1903, 102 O. G. 1781. 354 INTERFERENCE, XVII, (t). 1082. Where the examiner held certain claims to be anticipated by a certain patent and others not anticipated, and in his deci- sion questioned the operativeness of certain features of the device disclosed in the pat- ent, but "rendered any doubts in favor of the patent" in rejecting claims, Held, that such decision does not conflict with itself to the extent that the patent shows an operative structure for one purpose, which structure is inoperative for another purpose. There is no such error in the decision as to warrant a review of the same on petition. Rinsche v. Sandherr, C. D. 1903, 105 O. G. 1780. 1083. In presenting a motion to dissolve based upon alleged inoperativeness there is no necessity for a showing on the part of the moving party that his own structure is not inoperative, since dissolution will be neces- sary whether one or both of the structures is inoperative; but such showing is necessary to support a motion before the examiner of in- terferences for permission to take testimony on the question of operativeness. Clement v. Browne v. Stroud, C. D. 1907, 126 O. G. 2189. 1084. Where affidavits are presented in sup- port of a motion to take testimony on the question of the operativeness of the opposing party's device, they will not be transmitted to the primary examiner to consider the suffi- ciency thereof, as they are not pertinent to the motion to dissolve, but only to the motion to take testimony, which is a matter for the consideration of the examiner of interfer- ences. Id. 1085. Where after hearing a motion to dis- solve the primary examiner, acquired juris- diction of the interference for the purpose of considering the operativeness of the device of one of the parties and gave notice that on a certain day practical demonstration of this matter might be presented by cither or both of the parties. Held, that a petition that the jurisdiction of the examiner be withdrawn was premature. Wentworth v. Sutton, Steele & Steele, C. D. 1910, 154 O. G. 1107. (t) Review or Rehearing. 1086. The construction placed by the ex- aminers-in-chief upon an issue is not such new evidence as would justify a rehearing of a motion to dissolve an interference granted on the ground that the issue is not patentable as to one count. It does not furnish ground for the allegation of surprise. Casler v. .\Tmzt, C. D. 1898. 84 O. G. 1583. 1087. It is doubtful if an appeal lies from the decision of the examiner refusing to grant a rehearing in any case, and his action will cer- tainly not be reviewed where he fully con- siders the points raised in his decision deny- ing a rehearing. Holt v. IngersoU, C. D. 1898, 84 O. G. 1873. 1088. Where review is requested by G. of examiner's rulings upon the meanings of claims in his decision granting G.'s motion for dissolution, Held, that G. was not entitled to such review. \'otey v. Gaily, C. D. 1905, 119 O. G. .139. 1089. Where review of examiner's action under Rule 128 holding issues patentable over new references was sought by party who agreed with the conclusion reached. Held, that the party was not entitled to such review either by appeal or petition. Cazin v. Von Welsbach, C. D. 1905, 119 O. G. 650. 1090. The primary examiner has no author- ity to grant a motion for rehearing filed after the limit of appeal from his decision has ex- pired. Becker and Patitz v. Edwards, C. D. 1906, 123 O. G. 1990. 1091. Where a motion for dissolution on the ground that F. had no right to make the claims in his reissue application because of intervening rights was denied by the exam- iner on the ground that the record contained no evidence of intervening rights, but in his decision stated that if this ground of the motion could be substantiated he would grant a rehearing on this point, Held, that the tribu- nals of the patent office have a power over their judgments within the limits of appeal similar to that of a court over its judgments, that they have the power to request a rehear- ing on any point upon which they desire fur- ther light, and that the examiner acted within his authority in suggesting a rehearing. Don- ning v. Fisher, C. D. 1906, 125 O. G. 2765. 1092. The granting of a rehearing or a re- fusal to grant the same are matters within the discretion of the tribunal having juris- diction of the case at the time, and it is a well-settled principle that the commissioner will not control that discretion except to pre- vent irreparable injury. Id. 1093. It being incumbent upon a party to a motion to dissolve to cite such references as are necessary to inform the tribunals of the state of the art, Held, that he is not in a posi- INTERFERENCE, XVIII. 255 tion to demand a rehearing on the ground that the decision was induced by lack of such information. White v. Powell, C. D. 1910, 160 O. G. 776. 1094. Since it is well settled that a motion to dissolve on the ground of non-patentabil- ity will not be considered when based upon ex parte affidavits (Barratt v. Swinglehurst, C. D. 1909, 121, 144 O. G. 818), a request for rehearing based upon such showing must also be refused. Id. 1095. Matter which was not presented to the lower tribunals when the case was pending before them will not be considered on appeal (Reppeto V. Stephens, C. D. 1903, 272, 105 O. G. 1779; Ocumpaugh v. McElroy, C. D. 1905, 128, 115 O. G. 1847) and therefore does not constitute ground for granting a rehearing. Id. XVIII. DmsioNAi, Applications. 1096. .An application should not be admitted into an interference as a division of another unless it corresponds with it in all respects save as to extent of disclosure. Immaterial differences can be omitted without injury, and material differences are obviously im- proper. Ex parte Barry, C. D. 1898, 82 O. G. 337. 1097. Where the examiner suspended ac- tion on an application until the termination of an interference in which an earlier case is involved, of which the one under considera- tion is a division and which the examiner states contains the same claims as the earlier application, Held, that proceedings should not be suspended and the application indefinitely delayed, but the applicant should at the present time be permitted to contest the matter by such action as the condition of the case re- quires. Ex parte Bullier, C. D. 1899, 88 O. G. 1161. 1098. If the claims in the present applica- tion are the same as the issue of the inter- ference or cover the same invention as the application of the other party to the inference, it is clear that the applicant's right to the claims cannot be determined until the deci- sion on the question of priority, but the possi- bility that the examiner may be mistaken in holding that the claims in this case are not patentable over the invention disclosed by the other party to the interference must be con- templated just as the rules providing for ap- peals contemplate the possibility of mistake in rejecting claims on references, and the appli- cant should be permitted to contest the ques- tion at the present time instead of waiting until the interference is decided. Id. 1099. The question to be determined is of the same kind as if the decision had been ren- dered against the applicant in the interference, and it would be unjust to him to cause him the delay when the matter can be settled at the present time. Id. 1100. It is contrary to the well-settled pol- icy of the office to suspend action on an appli- cation unless such suspension is absolutely necessary to determine the right of an appli- cant to a patent on that application. As pointed out in ex parte Drawbaugh (C. D. 1893, 85. 64 O. G. 155), action on one of several divisional cases should not be sus- pended to await the allowance of another ap- plication. Id. 1101. Where on an ex parte appeal the ex- aminers-in-chief held H.'s application was a proper division of a prior application and that amendments to the prior case disclosing the subject-matter of the later did not in- volve new matter. Held, that the examiner should not consider such decision as absolute- ly binding upon him without considering the merits of the question when raised inter partes on a motion. Brill and Brill v. Hunter, C. D. 1901. 96 O. G. 641. 1102. Held, that the question whether the invention in issue was disclosed in a prior application, of which the one in interference is claimed to be a division, raised by a motion to shift the burden of proof is an interlocu- tory matter which will be considered upon di- rect appeal. It does not directly involve the right to make the claim, although the conclu- sion which is reached may indirectly affect that question. Id. 1103. Where an application in interference is claimed to be a division or continuation of a previous application, but it appears that the subject-matter of the issue was not disclosed in the original case as filed. Held, that the ap- plicant is not entitled to the date of the orig- inal case as fixing the burden of proof. Id. 1104. Where the issue is limited to two springs for each motor, one above and the other below, and each bearing upon the free end of the motor, and the original case, of which this is claimed to be a continuation, disclosed merely a single plate-spring for each motor and said that a coil or other form of 256 INTERFERENCE, XVIII. spring could be substituted for it, Held, that the original case did not disclose the inven- tion in issue and that the applicant is not en- titled to its date. Id. 1105. Where on a motion to shift the bur- den of proof K. contends that his application is a division of a patent granted to him and it appears that the construction claimed is not clearly shown in the patent and there is no description of it. Held, that he is not entitled to the date of the application upon which the patent issued. Krakau v. Harding, C. D. 190:i, 103 O. G. 1531. 1106. Where the disclosure in an original application is identical with the disclosure in the later divisional application involved in an interference, the interference is to be consid- ered the same as though the earlier applica- tion had been included in place of the later one. Hopfelt v. Read, C. D. 1903, 106 O. G. 767. 1107. When it has been finally decided that the disclosure is sufficient in the divisional application to support the claims and the dis- closure in the original application is the same as in the divisional, Held, that there was no irregularity in referring to the original appli- cation in the declaration of interference. Id. 1108. Where an application is filed as a divi- sion or continuation of an earlier application which disclosed the invention of the later case, but contained no claim to it, Held, that in an interference as to the later case the ap- plicant is entitled to the date of the earlier case for a constructive reduction to practice. Id. 1109. Where the claims of a divisional ap- plication could not have been made in the original application by reason of a rule of practice adopted by the office, Held, that the applicant may nevertheless avail himself of the earlier application as a constructive reduc- tion to practice of the invention claimed in the later case. Id. 1110. Where the application of the senior party involved in an interference is a division of an earlier application and the senior party takes no testimony, Held, that the senior party is restricted to the date of filing of the earlier application for a constructive reduction to practice. *Robinson v. Seelinger, C. D. 190.", 116 O. G. 1735. 1111. An application was filed on June 8, IflO.i, covering an igniter and an engine. The claims to the engine were erroneously reject- ed, were canceled, the application was allow- ed, and subsequently became forfeited. On July 16, 1898, the application was renewed, and additional claims to the engine were in- cluded. Division was required between the claims to the igniter and the engine. On March 28, 1899, applicant canceled the claims to the engine, and on April 25, 1899, the office acted on the remaining claims to the igniter. Subsequently applicant reinstated the claims to the engine, and the office again permitted him to elect which of the inventions he would prosecute in the application, but afterwards informed him that he was bound by the pre- vious cancellation of the claims to the engine, and applicant thereupon, on October 30, 1900, canceled the engine claims, and after several communications between the office and appli- cant the application matured into a patent, dated January 12, 1904. On April 16, 1903, applicant filed a divisional application covering the engine. Held, that the divisional applica- tion is entitled to the date of the original ap- plication of June 8, 1895, as a constructive re- duction to practice. *Duryea and White v. Rice, Jr., C. D. 1907, 126 O. G. 1357. 1112. A divisional application filed while the original application is pending in the office covering matter carved out of the original is a continuation of the latter and is entitled to its date as a constructive reduction to prac- tice, even though such divisional application was filed more than two years after an action by the oflfice on claims which applicant elected to retain in response to a requirement of divi- sion. *Id. 1113. A divisional application dates back to the original one and secures to the applicant the benefit of a constructive reduction to prac- tice, whether the claims of the divisional ap- plication were in the original when filed or not. *Lotz V. Kenny, C. D. 1908, 135 O. G. 1801. 1114. Where a divisional application is in- volved in an interference and the applicant desires to secure the benefit of the date of the parent application without exposing the entire case, he is entitled to do so by filing under Rule 105 a certified copy of so much of the parent application as relates to the invention involved in the interference, withholding from the inspection of the opposing party the re- maining portion thereof. Dilg and Fowler v. Shaver, C. D. 1909, 144 O. G. 561. INTERFERENCE, XIX. 257 1115. Where an applicant, in compliance with the examiner's requirement for division between process and apparatus, divides out the process and tiles a separate application there- for, the examiner should not suggest the pro- cess claims to other applicants who disclose the process but claim only an apparatus for carrying out such process. In re Werner, C. D. lOO'J, l,i9 O. G. 197. 1116. Where an application involved in in- terference is a division of an earlier applica- tion which had not been abandoned or for- feited at the time such divisional application was filed, Held, that the applicant is entitled to a constructive reduction to practice as of the date of the earlier application, even though this earlier application contained no claim to the invention in issue (citing Mc- Berty v. Cook, C. D. 1900, 248, 90 O. G. 229.5 ; Phillips v. Sensenich, C. D. 1908, 391, 134 O. G. 1806, and Lotz v. Kenny, C. D. 1908, 467, 13.J O. G. 1801.) Von Recklinghausen v. Dempster, C. D. 1909, 148 O. G. 277. 1117. A divisional application is entitled to the date of tiling of the original application as a date of constructive reduction to practice whether the claims of the divisional applica- tion were presented in the earlier application or not. Saunders v. Miller, C. D. 1909, 461, 146 O. G. 50.5, 33 App. D. C. 456, distinguished. *\'on Recklinghausen v. Dempster, C. D. 1910, 1.54 O. G. 2.52. 1118. Where as the result of an adverse de- cision in an interference all the claims of an application arc rejected. Held, that a divi- sional application filed within one year from the date of such rejection is entitled to the date of the original application as a date of constructive reduction to practice. *Id. 1119. If any application containing the in- terfering claims is clearly a division or a con- tinuation of an earlier application, the pri- mary examiner should so state. If there is doubt upon this question, no reference should be made to an earlier application, the matter being left for determination upon motion to shift the burden of proof. Jackson v. Patten, C. D. 1910, 150 O. G. 265. XIX. Effect of P.\tent Office Decisions IN THE Courts. 1120. The question of patentability is not ordinarily regarded as open on appeal to the court of appeals of the District of Columbia in an interference case, but is to be regarded 17 therein as conclusively established by the com- missioner of patents. The question in such cases is one of priority and not of patentabil- ity. (Hisey v. Peters, C. D. 1895, 349, 71 O. G. 892; Doyle v. McRoberts, C. D. 1897, 413. 79 O. G. 1029; Newton v. Woodward, C D. 1900, 406, 93 O. G. 2319.) *Latham v. Armat, C. D. 1901, 95 O. G. 232. 1121. When the question as to whom prior- ity should be awarded is doubtful, that doubt demands that the decision of the commissioner of patents should be affirmed. *Id. 1122. Upon an appeal on priority the court will accept the adjudication of the patent of- fice as conclusive of the question whether the invention specified in the issue is disclosed in the applications of the parties, and therefore authorized the declaration of interference. ♦Ostergsen et al. v. Tripler, C. D. 1901, 95 O. G. 837. 1123. On appeal to the court the question is as to priority of invention and not as to patentability, and therefore the court will ac- cept the ruling of the patent office that the claims now in issue were sufficiently apparent from the specifications and drawings in the original application and that they constituted part of the invention intended to be covered by the original patent. *Austin v. Johnson et al., C. D. 1901, 95 O. G. 268.5. 1124. A decision by the patent office on the question of priority in an interference in favor of the junior party is not conclusive when suit is brought on the patent, but it overcomes any presumption due to the earlier filing date that his opponent was the prior inventor, c John R. Williams Co. et aL v. Miller, Du Brul & Peters Mfg. Co., C. D. 1901, 97 O. G. 2.308. 1125. Where the tribunals of the patent of- fice concur upon a mere matter of fact, it is necessary for the appellant to make out a clear case of error in order to obtain a reversal. ♦Howard v. Hey, C. D. 1901, 95 O. G. 1647. 1126. Where the question of priority of in- vention was decided in favor of Boch by the patent office and the court of appeals. Held, that such decisions must be accepted as con- trolling in the absence of evidence carrying through conviction to the contrary. c R. Thomas & Sons Company v. Electric Porce- lain and Manufacturing Company et al., C. D. 1901. 97 O. G. 183S. 1127. Where an appellant comes to the court as the junior applicant and with three con- 258 INTERFERENCE, XIX. current decisions of the tribunals of the patent office against him, Held, that the presumption is strongly against his claim as the prior in- ventor. Swihart v. Mauldin, C. D. 1902, 540, 99 O. G. 2323. 1128. The court will not, except in extreme cases, go behind the declaration of interfer- ence in order to determine the question of identity of the inventions claimed by the parties. *Id. 1129. The decisions of the expert tribunals of the patent office as to the sufficiency of the dfsclosurc in the original application to sup- port the invention defined in the counts of the issue will be accepted as conclusive by the court in considering questions of priority of invention. *Stone v. Pupin, C. D. 1902, 100 O. G. 1113. 1130. Where the record shows that the facts of the case have been fully and care- fully examined by the tribunals of the patent office, resulting in a concurrence of decision thereon. Held, that it is the established rule that the court will not reverse that decision unless it clearly appears that the decision was against the weight of evidence. It will not be reversed on a matter of doubt. *Flora v. Powrie, C. D. 1904, 109 O. G. 2443. 1131. Where a junior party to an interfer- ence appeals to the court of appeals and the three tribunals of the patent office have ren- dered concurrent opinions against him, Held, that in order to prevail in the court of ap- peals he must show a clear case of error in these decisions. *Murphy v. Meissner, C. D. 1905, 114 O. G. 1830. 1132. When the utmost that could be said in favor of the appellant is that the testimony is evenly balanced and the circumstances are all against the contention of the appellant. Held, that the tribunals of the patent office were fully warranted in awarding judgment of priority to the appellee. *Id. 1133. Where the commissioner concurs in and affirms the decision of the examiners-in- chief on matters of fact, the court of ap- peals will not reverse that decision unless it clearly appears that the decision was against the weight of evidence. Where matters of law are involved, a different principle applies. *Orcutt v. McDonald, Jr., and McDonald, C. D. 1906, 123 O. G. 1287. 1134. Unanimity in the patent office tribu- nals imposes upon the appellant here the bur- den of showing very clearly that the commis- sioner erred in the final decision appealed from. (See In re Adams, C. D. 1905, 602, 114 O. G. 2093, 24 App. D. C. 277; Seeberger V. Dodge, C. D. 1905, 603, 114 O. G. 2382, 24 App. D. C. 481.) *In re Clunies, C. D. 1906, 123 O. G. 2631. 1135. Where a question of interference in fact or right to make claims has been fully considered by the primary examiner, the ex- aminers-in-chief, and the commissioner and all have concurred in finding that a party to an interference has the right to make a claim which is the same as the count of the issue of an interference. Held, that these conclusions will ordinarily be considered by the court as conclusive. Podlesak & Podlesak v. Mcln- nerney, 120 O. G. 2127. 1136. Where the three patent office tribunals have been in accord and consequently the case falls within the decisions of this court that, except extraordinary cases, it will not disturb the findings of fact of the patent office, Held, that this does not mean that the court is bound by the conclusions drawn from such facts unless convinced that such conclusions are correct. *0'Conncll v. Schmidt, C. D. 1906, 122 O. G. 2065. 1137. Where the three separate tribunals of the patent office, consisting of five experienced men familiar with considering and weighing evidence, agree in their conclusions, the court of appeals will not reverse their rulings ex- cept in a very clear case. Bourne v. Hill, Jr., C. D. 1906, 123 O. G. 1284. 1138. Unanimity in the decisions of the pat- ent office tribunals imposes upon the appellant the burden of showing very clearly that the commissioner erred in the final decision ap- pealed from. *Parkes v. Lewis, C. D. 1906, 123 O. G. 2313. 1139. The decisions of the expert tribunals of the patent office on the question of the suf- ficiency of the disclosure of a party to an in- terference will be accepted by the court of appeals as conclusive, except in extreme cases where palpable error has been committed. (Seeberger v. Dodge, C. D. 1905, 603, 114 O. G. 2382, 24 App. D. C. 481 ; Podlesak and Pod- lesak v. Mclnnerney, C. D. 1906, 558, 120 O. G. 2127, 26 App. D. C. 405.) *Kilbourn v. Hirner, C. D. 1907, 128 O. G. 1689. 1140. Whether or not an application in- volved in interference discloses the subject- matter in issue, and therefore whether or not INTERFERENCE, XX. 250 the interference is properly declared, is a question to be ordinarily determined by the patent office (Ostergren v. Tripler, C. D. 1901, 3J0, 93 O. G. 837, 17 App. D. C. 358 ; Herman V. Pullman, C. D. 1904, 623, 109 O. G. 1888, 23 App. D. C. 264, 263) ; but in extreme cases where palpable error has been committed the court may review the decision of the patent office on this point. (Podlesak and Podlesak V. Mclnnerney, C. D. 1906, 338, 120 O. G. 2127, 26 App. D. C. 399.) *MacMulkin v. Bollee, C. D. 1907, 130 O. G. 1691. 1141. To justify the court of appeals in re- versing the concurrent decisions of the pat- ent office tribunals on a conclusion of facts, plain error must be shown. *Ries v. Kirke- gaard and Jebsen, C. D. 1908, 132 O. G. 843. 1142. To justify the court of appeals in re- versing the unanimous decisions of the patent office tribunals error therein must be made to clearly appear. *Onderdonk v. Parkes, C. D. 1908, 135 O. G. 663. 1143. Unanimity in the decisions of the pat- ent office tribunals necessarily imposes upon the appellant the burden of making out a clear case of error in the decision appealed from. *Id. Woodbridge v. Winship, 145 O. G. 1230. 1144. Where in a suit for infringement of a patent which was granted after an inter- ference proceeding in the patent office the only defense set up is that the other party to the interference was the prior inventor, the decision of the patent office tribunals and the court of appeals of the District of Columbia on the question of the fact involved is enti- tled to great weight, if it is not absolutely controlling, d .\utomatic Weighing Machine Company v. Pneumatic Scale Corporation, Limited, C. D. 1909, 139 O. G. 991. 1145. "It is the settled doctrine of this court that the allowance of a claim in the patent office is conclusive of the question of patent- ability in an interference proceeding, because the appellate jurisdiction in respect of patent- ability is limited to cases where claims have been rejected on that ground." *Gold v. Gold, C. D. 1910, 130 O. G. 570. 1146. Where all of the tribunals of the patent office have concurred in holding, espe- cially in a case involving somewhat compli- cated mechanical means, that the invention claimed is not disclosed in the description of a party's invention, error must be clearly shown in their conclusion to justify a reversal of the same. *Id. 1147. Where the sole issue is one of fact, we are slow to disturb the finding of the pat- ent office, especially, as in this case, where the evidence appears to fully sustain the conclu- sion reached by the commissioner. *Swartout v. Barnes, C. D. 1911, 162 O. G. 1187. XX. Estoppel. 1148. The question whether a party is estop- ped by prior proceedings from asserting prior- ity of invention as against his opponent relates to the merits of the controversy, and the evidence of estoppel goes to establish the ques- tion of priority. Cammett v. Hallett, C. D. 1900, 93 O. G. 939. 1149. Where a party has made application for a patent on the invention and contested an interference in regard to it, the contention against his successful rival that the invention is not patentable does not come with good grace, c R. Thomas & Sons Company v. Elec- tric Porcelain and Manufacturing Company ct al., C. D. 1901, 97 O. G. 1838. 1150. Held, that a declaration by one of the parties to an interference made to parties in interest that his invention was different from the invention of the other party does not necessarily raise an estoppel, as the effect of such a declaration could be explained by testimony, inasmuch as there might well be differences of detail between the two claims, while they might be the same in substance. *Furman v. Dean, C. D. 1903, 114 O. G. 1332. 1151. Held, that a party is not estopped from subsequently making a claim to an invention unless there is a failure of the specification to disclose it. The absence of a definite and special claim for an invention when the ap- plication w^as originally filed docs not act as an estoppel to the subsequent making of the claim. *Id. 1152. Held, that the doctrine of estoppel announced in the cases of Bechman v. Wood (C. D. 1899, 459, 89 O. G. 2462) and Miehle V. Read (C. D. 1901, 396, 96 O. G. 426. 18 App. D. C. 128), was based upon the failure of the parties to disclose the invention. Those cases refer to substantial differences between the original claims and specifications of an ap- plication and new and enlarged claims subse- quently introduced for the first time after rights of third parties have intervened. *Id. 260 INTERFERENCE, XXI, (a), (b). XXI. EviDKNCE. (a) Admissability. 1153. Wliile as a general rule nothing is to be considered as evidence in an interference case unless introduced into the record before final submission, yet neither the general pur- pose nor the efficiency of the rule is impaired by the creation of an exception thereto in favor of the consideration of a relevant and material fact shown by a record in the patent office entered in the regular course of pro- ceedings therein. *Cain v. Park, C. D. 1899, 278, 86 O. O. 797. 1154. When a party relics on his own mem- ory, and fails to consult parties whom he knows to be equally familiar with the facts in the case, Held, to show a lack of diligence on his part in discovering the evidence which those parties may be able to produce. Jobes V. Roberts v. Hauss, C. D. 1899, 86 O. G. 1805. 1155. Held, that the examiner of interfer- ences should not in his decision refer to a pending application not directly included in the interference and not referred to in the testimony, because such reference is a viola- tion of the rule of secrecy and also because the application has not been introduced in such a way as to constitute proper evidence. Robinson v. Copeland, C. D. 1903, 102 O. G. 466. 1156. It is not the practice for the office to supplement the proofs upon one side or the other in an interference case, and it is no more permissible for it to bring new evidence into a case after the proofs are closed when the opposing party has no opportunity to rebut it than it is for one of the parties to do so. Id. 1157. It is a fundamental rule that a party should be permitted to meet and explain any evidence presented against him, and therefore all facts to be considered in the decision should be brought out in the testimony. Id. 1158. Where exhibits are put in evidence, the character of which necessitates a micro- scopic examination to determine what is dis- closed by them, as no idea of their structure or the process of making them can be had from mere inspection by the naked eye, Held, that a microscopic examination is proper and that while it is by no means conclusive it is sufficient to raise a doubt in the mind of the observer that the plates were made as alleged. by the process of the issue. Flora v. Powric, C. D. 1903, 106 O. G. 2288. 1159. Where exhibits are introduced in evi- dence and it is not pretended that everything on those exhibits is discernible to the naked eye, Held, that an examination of the exhibits by the aid of a microscope is legally admissi- ble. To hold otherwise would even preclude a judge with defective eyesight the right to use his spectacles. *Flora v. Powrie, C. D. 1904, 109 O. G. 2443. 1160. The results of the use of the micro- scope are admissible as evidence and are pre- sumed to be correct until shown to the con- trary, upon the same principle that the results of the working of many nthcr scientific instru- ments are presumed to be correct. *ld. 1161. Where the cxamincrs-in-chief in pass- ing upon the patentability of the issue to one of the parties considered evidence presented in an interference between that party and a stranger to the present interference. Held, that the examiners-in-chief were not therein in error under the circumstances, though this evidence was not open to the opposing party, and had not been considered by the primary examiner. Harrison v. Shoemaker, C. D. 190r), 117 O. G. 1164. 1162. A letter which a party refused to in- troduce into evidence on the ground that it related to a secret invention cannot be filed in this office merely for the inspection of the various tribunals who may consider the case. If the letter did not tend to affect the final judgment, there would be no reason for con- sidering it, and if it did, the opposing party would have a right to inspect and meet it as he might see fit. Lindstrom v. Lipschutz, C. D. 1906, 120 O. G. 904. 1163. Constitutional rights of a corporate defendant in an action for the forfeiture of infringing copies of a painting protected by copyright are not violated by the admission in evidence of the replevin proceedings under which such infringing copies were seized over the objection that by such proceedings rights imder the fourth and fifth amendments to the federal constitution were invaded. **Amer- ican Tobacco Company v. Werckmeister, C. D. 1908, 133 O. G. 1433. (b) Admissions. 1164. Where an admission is made before one of the tribunals of this office, the party making such admission should not thereafter INTERFERENCE, XXI, (c), (d), 1. 261 be allowed to repudiate it. Zimmer v. Hor- ton, C. D. 1908, 137 O. G. 2219. 1165. An admission made at a hearing be- fore a tribunal that was to pass upon the question involved in the case binds the party making it. *Horton v. Zimmer, C. D. 1908, 137 O. G. 2223. (c) Best. 1166. While as a general rule the best evi- dence which the nature of the case admits of must be adduced, yet where the non-produc- tion of such evidence is accounted for satis- factorily and no suspicion attaches for not producing it. Held, that under some circum- stances this rule may be relaxed. Shaffer v. Dolan, C. D. 1903, 107 O. G. .'iSO. 1167. Where the question is not what are the contents of a written instrument, but is merely as to the sale of a business. Held, that the testimony of the parties to such sale is not secondary evidence. J. R. Newberry Co. v. Jos. J. O'Donohue's Sons, C. D. 1904, 111 O. G. 299. 1168. Where the parties testify to a sale of a business without introducing in evidence the inventory upon which the sale was based or the books in which entries of the sale were entered, they rely upon weaker evidence than they could produce; but their testimony as to the sale is not for this reason secondary evi- dence. Id. 1169. Where all of the evidence which might be construed to establish one of the essential parts of a case is found in testimony to con- clusions by a witness where facts upon which these conclusions were based should have been given and this testimony was duly ob- jected to, Held, that the objections will be sustained and the testimony rejected. Peck- ham v. Price, C. D. 190.5, 118 O. G. 1934. 1170. Where witness testified to duties of employee to employer in details beyond the provisions of the express contract of employ- ment. Held, that he should have set forth the conversations and acts of the parties upon which his belief and opinion as to such duties were founded. Id. 1171. An affidavit of a physician attached to a deposition, setting forth the physical con- dition of a witness who has left the stand during cross-examination because of inability to stand the strain of cross-examination, forms no part of such deposition. The affiant should have been called and sworn to testify as a witness. *Id. (d) Documentary. 1. In General. 1172. Where it appeared that in an inter- ference proceeding one of the parties offered in evidence copies of certain letters contained in certain letter-books and on objection by counsel for the other party the letter-books were themselves put in evidence with the un- derstanding that they should remain in pos- session of the party offering them, subject to production upon notice, and where it further appeared that upon failure of such party to produce these books on a motion the exam- iner of interferences required him to produce these books, but permitted him to seal up cer- tain portions foreign to the case before pro- ducing them for the inspection of counsel for the opposing party. Held, that the letter-books having been introduced into the case as evi- dence were in evidence in so far as anything contained in them is relative to the case for all purposes and must be open to the inspec- tion of the opposing counsel without restric- tion. The relevancy of matter contained in said books cannot be left to the determination of the party introducing them. Boch v. Locke, C. D. 1898, 85 O. G. 1226. 1173. Where every document of importance introduced in the case to fix the date of dis- closure by A. before September 24 is open to suspicion and needs explanations, which are not furnished by the testimony, Held, that the evidence is at least inherently weak and not convincing. Blackman v. Alexander, C. D. 1904, 113 O. G. 1703. 1174. Where a party testifies that letters offered in evidence were received by him through the mail in answer to letters written by himself, Held, that the letters offered were sufficiently proved for admission and consid- eration as part of the evidence. Briggs v. Lillie V. Cook v. Jones and Taylor, C. D. 1905, 116 O. G. 871. 1175. Where certain letters, checks, and testimony were offered to prove activity in connection with the invention at a certain time, Held, that though these taken separately would afford but slight support to the case, when taken collectively and in the absence of anything to the contrary this evidence must be accepted as convincing. Id. 262 INTERFERENCE, XXI. (d), 2. 1176. Where ohjcction had been made to the introduction of letters on the ground that their execution had not been sufficiently proved, Held, that the objection was not ten- able, as the letters were introduced merely as collateral evidence relating to the conduct of the party, and the fact that they were re- ceived in due course of mail and acted upon by the writer and the addressee was sufficient proof of genuineness. *Jones & Taylor v. Cooke, C. D. 1905, 117 O. G. 1493. 1177. Where objections had been made to the introduction of letters and checks on the ground that it was not shown that they re- lated to the invention in issue. Held, that though the correspondence does not set out the invention and might have related to some other improvement in typewriters, there is no reasonable doubt in view of the testimony and surrounding circumstances that the corre- spondence and checks do relate to the pres- ent invention. ♦Id. 1178. The statements in a memorandum of a note-book produced by French, one of the interfering parties, and alleged to disclose the invention in issue, Held, insufficient to prove conception where it appears that the entry was seen by no one and there is no corrobora- tive evidence on the point except a statement of another witness that French produced such a book at a given date. *French v. Halcomb, C. D. 1906, 120 O. G. 1824. 1179. An inventor after having testified in regard to his conception and the work done thereon produced a shorthand diary and read a number of entries from the diary showing dates and memoranda of work done. Of this evidence the court said : "Burson is a man over seventy years of age and appears to have kept a diary for fifty years in which he made a daily record of events. There is nothing in the appearance of this diary to ex- cite suspicion. The dates follow consecutive- ly. It is true that the record is in shorthand after the Pittman system ; but it appears that interpretation thereof could be made with sufficient certainty by one skilled in that meth- od. * * * We see no substantial difference between this and the ordinary use of mem- oranda by a witness to refresh his memory." ♦Burson v. Vogel, C. D. 1907, 131 O. G. 942. 2. Business Entries. 1180. Where a certified copy of an applica- tion was introduced in evidence, but no proof was made as to the application having been allowed, field, that as the commissioner had examined the files of his office and found that the said application had been formally allowed and had considered the fact in making his decision it was sufficient proof that the appli- cation had been allowed. *Cain v. Park, C. D. 1899, 86 O. G. 797. 1181. Where the junior party to establish a material date called witnesses who testified from recollection that their company moved from a store on New Year's of 1888 and the senior party introduces record evidence show- ing that they paid rent for this store until October, 1890, Held, that the rebuttal testi- mony of a clerk in the employ of the junior party that he was sent to collect rent from a tenant who had sublet this store is not suffi- cient to rebut the presumption from the rec- ord evidence that they occupied the store at that time, particularly as neither the alleged tenant nor the member of the firm from whom she is alleged to have sublet were called or their absence satisfactorily accounted for. .\uerbach & Sons v. Hall & Hayward Com- pany, C. D. 1904, 111 O. G. 806. 1182. Entries made by a bookkeeper in the shop-books in his regular course of business are entitled to more weight than mere "notes" made by an employee in a pocket note-book. Blackman v. Alexander, C. D. 1904, 113 O. G. 1703. 1183. Where a ledger is introduced in evi- dence to fix a date by an entry therein, but the person who made the entry and who is presumed to have had personal knowledge of the facts was not called to corroborate it, Held, that neither the ledger nor the entry are proved. Id. 1184. A rent-book kept by a private party in the ordinary course of his business stands upon the same footing as the books of the trader or merchant. For entries in such books to be admissible it is not merely necessary that they be made contemporaneous with the facts to which they relate, but it is necessary that the entries be made by parties having personal knowledge of the facts and be cor- roborated by their testimony if living and ac- cessible or by proof of their handwriting if dead or insane or beyond the reach of the process of commission of the court. Auer- bach & Sons v. Hall & Hayward Co., C. D. 1904, 111 O. G. 806. 1185. Such a rent-book is not evidence per se; but with the testimony of the person who INTERFERENCE, XXI, (d), 3. 263 made the entries all objection was removed and the book was properly admitted in evi- dence. Id. 1186. Where R. testified that certain letters of K. introduced in evidence were received by him in the ordinary course of business, that he is familiar with the handwriting of K. and that these letters are in the handwriting of K. and the signatures are K.'s, Held, that the letters are sufficiently proved and are prop- erly introduced in evidence. Royce v. Kemp- shall, C. D. 1906, 125 O. G. 1347. 1187. Where neither the original letters nor the letter-press book are introduced in evi- dence, but certain alleged copies of letters of R. to K. have been introduced as exhibits, but no one has testified or certified that the al- leged copies are true copies of the original letters or of the letter-press copies. Held, that they are entitled to no consideration. Id. 1188. Where K. was called on to produce the original letters of R. to K., but failed to do so, whereupon R. in his deposition quoted said letters from a letter-press book and testi- fied that he wrote the letters and that all the statements contained in them are true, but the letter-press book was not introduced in evi- dence, although produced at the examination, and counsel for K. was given the privilege of e.xamining the portions of said book contain- ing copies of the letters, but was denied ac- cess to the entire book. Held, that R. had the right to use the letters in his letter-press book as a means of refreshing his memory, and the fact that he did not introduce his letter- press book in evidence does not warrant the suppression of his testimony concerning said letters. Id. 1189. Books produced at the examination of a witness for the purpose of refreshing his memory need not be offered in evidence. (Laas and Sponenburg v. Scott, C. D. 1906, 621, 122 O. G. 352; McCormick v. Cleal, C. D. 1898, 492, 83 O. G. 1514.) Bay State Belting Co. v. Kelton-Bruce Mfg. Co., C. D. 1907, 127 O. G. 1580. 1190. Where certain books were referred to by a witness for the purpose of refreshing his recollection, and opposing counsel, who was given an opportunity to examine them, did not interpose any objection to the books or cross-examine the witness relative to the entries. Held, that a subsequent refusal to pro- duce the books for inspection or to offer them in evidence does not warrant the suppression of any part of the deposition of the witness who referred to said books. Id. 1191. Where a party to an interference who is in possession of original copies of letters written in the regular course of business is asked to produce them, so that they may be used as evidence, but fails to do so, although he has ample time therefor, letter-press copies produced by the proper custodian of the same may be admitted with the same force and ef- fect as the originals without throwing open the entire letter-press book to the inspection of the opposing party. *Kempshall v. Royce, C. D. 1907, 129 O. G. 3162. 1192. Where witnesses have an independent recollection of events and the dates of their occurrence, the records of which are accessi- ble to opposing counsel, it is unnecessary that documentary evidence be produced as a means of refreshing their recollection. Ebersole v. Durkin, C. D. 1908, 132 O. G. 842. 1193. Where a party attempts to fix a cer- tain date, as to which he has no independent recollection, by reference to the dates in a cash-book showing when another party was absent, and the cash-book also shows that such party was absent, at other times not remote. Held, that the evidence is not sufficient to fix the earlier date rather than the later. ♦How- ard V. Bowes, C. D. 1908, 137 O. G. 733. 1194. The production of a book purporting to show the date of a sale to which a witness has testified adds nothing by way of corro- boration of a witness's oral testimony where the person who kept the book is not called to identify it. Actiengesellschaft Paulaner- brau Salvatorbrauerei v. Conrad Seipp Brew- ing Co., C. D. 1908, 135 O. G. 1121. 1195. Entries in an account book more than thirty years old, which was found in proper custody and was free from all grounds of sus- picion. Held, properly received in evidence. *H. C. Cole & Company v. The William Lea & Sons Company, C. D. 1910, 156 O. G. 259. 3. Drawings, Etc. 1196. Where an inventor testifies to a dis- closure of his invention by means of a cer- tain sketch and the sketch is not produced and it is held that the oral testimony given is in- sufficient to establish the fact of disclosure. Held, that the sketch itself, if produced, is material to the case. Robinson v. Townsend V. Copeland, C. D. 1903, 107 O. G. 1376. 1197. Where a drawing was accidentally discovered under a scrap-heap in the corner S64 INTERFERENCE, XXI, (c). of an office in a manufacturing establisliment and it was only found in cleaning out the of- fice preparatory to finishing the interior of the office in hardwood, Held, that the draw- ing was lost and only found by accident and it constitutes newly-discovered evidence. Id. 1198. Where a drawing is introduced in evidence which is claimed to have been made before September 24 by a witness who was not called, but who was in the habit of dating his drawings, Held, that it is significant that the paper has been cut down to the irregular shape of the figure, removing that portion upon which the date would ordinarily appear. Blackman v. Alexander, C. D. 1904. 113 O. G. 5703. 1199. Where W.'s drawings of the invention were numbered 42 and 43 and it was testified that these drawings had been kept in a drawer with many others to which C. had access and C. admits that he started to make blue-prints of the drawings in that drawer and numbered the drawings as he did so, and drawings from that drawer are afterwards produced by C. numbered 40, 41, 44, 45, and 46, Held, that W.'s contention that C. derived the invention from W. is strongly corroborated by this evi- dence. Wilkin V. Cleveland, C. D. 1905, US O. G. 2533. 1200. Where drawings bearing certain dates and showing all the features of the issue are offered in evidence and the witnesses to the drawings testify that their names were placed on the drawings on the dates given, but it does not appear that any of these witnesses understood the invention in issue except in a general way and there is no testimony what- ever to show the condition of the drawings at the time they were witnessed, Held, that it is doubtful if these drawings can be con- sidered a disclosure of the invention in issue at the dates they bear. Kirkegaard and Job- sen, C. D. 1906, 125 O. G. 1700. 1201. Where sketches claimed to have been made by the inventor were not produced, but the inventor testified that the sketches were not made for preservation and were, in fact, not preserved. Held, that no unfavorable in- ference should be drawn from their non-pro- duction. Turnbull v. Curtis, C. D. 1906, 120 O. G. 2442. 1202. Where objection was made at the hearing to certain alleged working drawings introduced in evidence on the ground that they are blue-prints, and therefore secondary evidence, but no specific objection on this ground was made at the time, but merely the one general objection at the close of the de- position of the witness during whose testi- mony they were introduced, to the effect that the deposition of the witness is objected to as being irrelevant and incompetent, and that this objection also includes the exhibits, Held, that this objection was insufficient to entitle it to consideration. Emmett v. FuUagar, C. D. 1906, 124 O. G. 2178. 1203. The testimony of a witness that pho- tographic copies of application drawings are "practically the same thing" as a prior con- struction is very materially weakened by the admission under cross-examination that he did not understand such drawings because he did not understand mechanical drafting. Actiengesellschaft Paulanerbrau Salvatorbrau- erei v. Conrad Seipp Brewing Co., C. D. 1908, 135 O. G. 1121. 1204. Testimony as to the making of draw- ings. Held, insufficient to establish that they were made at the dates claimed, since it did not appear that they had remained in the pos- session of the witnesses since the time they were said to have been shown to them and since the witnesses were unable to absolutely identify the drawings as being in the same condition as at that time. Miller v. Black- burn, C. D. 1911, 172 O. G. 549. (e) Exhibits. 1205. Cards attached to exhibits and bear- ing signatures subsequently identified by the signers and stated by them to have been made at dates specified upon the cards are not, in the absence of identification by the signers of the exhibits themselves, sufficient proof of the existence of the exhibits themselves at the dates mentioned. Guilbert v. Killinger, C. D. 1898, 82 O. G. 1561. 1206. The rules of the patent office do not require that paper exhibits should be repro- duced, so that copies may be furnished for the convenience of the various tribunals of the office and for the counsel for the adverse par- ties. In the absence of such rule it is not within the discretion of the commissioner of patents to make such requirement. Freeman v. Bernstein et al., C. D. 1898, 83 O. G. 155. 1207. Held, further, that no authority is vested in the examiner to remove affidavits and accompanying exhibits from the files of the case, that power, so far as the office is concerned, being vested in the commissioner. INTERFERENCE, XXI, (f), i, 2. 265 McKenzie v. Gillespie v. Ellis v. McElroy v. Ocumpaugh v. Norton, C. D. 1900, 93 O. G. 2103. 1208. A motion that an investigation be made as to the alleged loss of a part of an exhibit in the case in the patent office denied, since that is a matter which should have been settled in the patent office before taking an appeal to the court. *I31ackford v. Wilder, C. D. 1903, 104 O. G. 580. 1209. Affidavits would be permitted to show or explain material changes that may have occurred by accident or otherwise in an ex- hibit after its transmission to the court, but they will not be received by the court in con- tradiction or correction of the record of the proceedings in the patent office. *Id. 1210. The question whether a certain ex- hibit was a reduction to practice depends upon its condition at the time it is claimed to have been reduced to practice and not at the time that it was introduced in evidence, and this can be shown only by testimony. *Id. 1211. Where the testimony fails to show that the device when made embodied a cer- tain element included in the issue. Held, that the allegation that such element was in the device when introduced in evidence and was subsequently lost is immaterial. *Id. 1212. Where the inventor Flora testifies that he made certain screens in evidence by the process of the issue, but the screens them- selves do not show how they were made, and the only corroborating witnesses testify that the screens were made, but do not know how they were made, Held, that Flora has not es- tablished the fact that he performed the pro- cess of the issue. *Flora v. Powrie, C. D. 1904, 109 O. G. 2443. 1213. Where certain screens in evidence are said by the inventor to have been made by the process of the issue, but an examination of those screens with a microscope by the tribu- nals of the patent office indicates that they were not made by that process, Held, suffi- cient to determine the matter against him in view of the onus upon him of proving his case. *Id. 1214. To guard against accidental changes in exhibits resulting from frequent handling, it would be prudent for the party offering them to have them particularly described in respect of appearance, construction and oper- ation at the time that he offers them in evi- dence. Greenwood v. Dover, C. D. 1904, 109 O. G. 2172. 1215. An allegation that an exhibit has been tampered with after the grant of the con- testant's patent should be based upon the tes- timony in the record or convincing surround- ing circumstances which would tend to support such a charge. Spaulding v. Norden, C. D. 1904, 113 O. G. 2091. 1216. The failure of a party to an interfer- ence to produce the first device alleged to have been made by him embodying the inven- tion, Held, to be immaterial where a later de- vice made by him is produced which the testi- mony shows was a reproduction of the form- er. *Saunders v. Miller, C. D. 1909, 146 O. G. .'50.5. (f) Presumptions, i. In General. 1217. The decision of the commissioner of patents awarding priority to Finkenbiner re- versed, since the evidence is not sufficient to overcome the presumption in favor of Beals arising from his having been the first to file his application. *Beals v. Finkenbiner, C. D. 1898, 82 O. G. 593. 1218. Where it is alleged in a preliminary statement that the invention was disclosed to a certain person, Held, that the fact that this person was not called to testify when he could have been called raises a presumption that his testimony had it been given would not tend to support the allegation in the preliminary statement. Flora v. Powrie, C. D. 1903, 106 O. G. 2288. 1219. Where a machine was made and used by F.'s company, Held, that it is to be pre- sumed that F. was the inventor even if there is no testimony to that effect. The suggestion that some stranger to the record is the in- ventor is not pertinent. Herman v. FuUman, C. D. 1903, 107 O. G. 1094. 2. From Conduct. 1220. Where a party makes application for a patent upon one invention and claims to have had at that time a superior invention of the same precise nature and does not file an application for that other invention until long afterward, Held, that his claim is not to be credited unless sustained by very clear and convincing testimony. *Sachs v. Hundhausen, C. D. 1903, 105 O. G. 1534. 1221. Where S. claims to have made the invention in 1897 and was thereafter employed 266 INTERFERENCE, XXII. by H.'s company which he knew was in pur- suit of some such device and he failed to dis- close the invention to the officers of the com- pany, although he did suggest other improve- ments, Held, that his conduct indicates that he did not have the invention as alleged. ♦Slaughter v. Halle, C. D. 1903, 102 O. G. 409. 1222. Where the circumstances are such that it would have been most natural for S. to have disclosed the invention to a company engaged in making such devices and he fails to do so until stimulated to activity by a knowledge of what his opponent was doing. Held, that the presumption that he did not have the invention is stronger than the testi- mony of witnesses. *Id. 1223. Where .\. testified that he disclosed the invention to B. on September 24 by means of a "Sketch Block" which had plainly written on it in two places "Sep. 12," it is inconceivable how B., if the facts were as stated, would go into an interference with A., alleging in his preliminary statement no date earlier than September 24. Blackman v. Alexander, C. D. 1904, 113 O. G. 1703. 1224. Where two inventors are in the em- ploy of the same company and one admits that he knew that the other had conceived an invention and made a disclosure of the same by means of drawings and a model and also admits that in view of that knowledge he said nothing at that time to any one connected with the company about his alleged prior concep- tion of the same generic invention, when it is shown by the record that it was his duty to speak. Held, that the fact that he remained silent raises a strong presumption that he did not at that time have a conception of the invention. Barrett v. Harter, C. D. 1904, 112 O. G. 729. 1225. Where an inventor did not protest when he knew that another inventor was pre- paring drawings and a model disclosing the invention, when the facts show that he was bound by all conscience and equity to disclose the invention to his employer, nor did he im- mediately file an application for a patent, but waited for more than a year to do so. Held, that such actions are not in accordance with the laws of ordinary human conduct and raise a presumption that he is not the first inventor. Id. 1226. Where H.'s testimony is in direct con- flict with the testimony of several witnesses who testify in behalf of B., and grave pre- sumptions are raised against H.'s claim by his policy of silence whe'n it was his duty to speak and when H.'s actions are directly contrary to the ordinary course of human conduct, Held, that these considerations are sufficient to overcome the mere oral testimony of such interested witnesses as a wife and a father- in-law, which testimony rests solely on their ability to remember, unaided by any docu- ments, occurrences which are alleged to have taken place some four years prior to the time that the testimony of their witnesses was taken. Id. 1227. When it appears that a patent was previously issued to one of the parties em- bodying the general features and performing the same functions as that performed by the invention of the issue, which later invention differs from the patented device in the omis- sion of one element and the modification of the remaining elements to make them perform the functions hitherto performed by all, and the inventor claims to have invented both de- vices at about the same time, Held, that the fact that when he disclosed the first invention to his attorney he failed to speak about omit- ting one of the parts raises the presumption that he had no intention at the early date of using the combination with the part omitted or that such a construction could be used practically, but that it was an afterthought, brought about by subsequent events. Pierce V. Hallett, C. D. 1905, 117 O. G. 265. 1228. Where it is claimed that a party made an invention at a certain time, but he continued thereafter to experiment upon other inventions for securing the same ultimate results, and full records and reports made at the time do not mention the invention in issue, and pat- ents were taken out upon the other inventions, but no application was then filed upon the in- vention in issue, Held, that the conduct of the inventor at the time is stronger evidence against his claim to invention than is the tes- timony of himself and witnesses in favor of the same. Sherwood v. Drewsen, C. D. 1906, 124 O. G. 1203. XXII. Ex Parte Proceedings. 1229. Where a party makes claims made by another applicant and contends that they are anticipated not only by the references cited by the examiner, but by others sufficiently old to anticipate the other applicant, and takes an appeal to obtain a ruling upon that ques- tion. Held, that action upon the other applica- INTERFERENCE, XXIII. 267 tion should not be suspended to await the decision upon the appeal. E.x parte Coleman, C. U. 1903, 107 O. G. 1662. 1230. An applicant has no right to argue ex parte the question whether certain claims shall be allowed to another applicant. Id. 1231. Where an applicant is notified of a probable interference and files a protest against its declaration on the ground that the supposed interfering applicant has no right to make the claim because of a prior inter- ference. Held, that the protest will be dis- missed without considering the merits of the question. In re Sarfert, C. D. 1903, 102 O. G. 1049. 1232. The question whether an interference is proper should be raised after the declara- tion by a motion to dissolve under Rule 122. Id. 1233. Where all of the evidence is before the ofiice upon which to base a final determina- tion upon priority, such final determination should in general be reached before consid- eration of ex parte rights is undertaken. Dun- bar V. Schellinger, C. D. 1906, 121 O. G. G87. XXIII. Interference in Fact. 1234. An interference does not exist mere- ly because the parties have claims in identical words, since to interfere those words must mean and refer to the same thing. Newton v. Woodward, C. D. 1898, 84 O. G. 2020. 1235. Terms of reference copied by a party from an opponent's application after it is open to his inspection cannot change the in- vention and must be considered as meaning the same things as those originally employed. If there was no interference as to the inven- tion originally disclosed a mere change in the words of reference will not produce it. Id. 1236. An issue which is not a claim made by either party is not a proper issue. (Hammond v. Hart, ante, .'■)2, 83 O. G. 743.) Id. 1237. When the claim of one party includes a step in the process not included in the issue or the claim of the other party, there is no interference in fact. Bullier v. Willson, C. D. 1S99, 87 O. G. 180. 1238. Mere similarity in the wording of claims does not show that there is an interfer- ence in fact unless those words construed in the light of the disclosures made by the par- ties mean the same thing. Edgecombe v. East- man v. Houston, C. D. 1899, 89 O. G. 707. 1239. Where the claim of one party, when read in connection with his disclosure and the terms employed are given their ordinary and intended meaning, covers features not disclosed by the other party. Held, that there is no interference in fact. Id. 1240. It is competent for parties to an in- terference case to show in the development of their testimony that their devices are differ- ent, and thereby preclude any adjudication of priority that would prevent either one from being protected in the possession of his own device. The prima facie and ex parte adjudi- cation of identity which was the necessary prerequisite to the declaration of interference might be shown upon judicial investigation to have been erroneous, and the interests of justice would seem to demand that it should be open to the parties to make such showing, and when such showing is made as part of the cause and in the ordinary course of the litigation upon the merits it enters into the substance of the cause and is proper to be considered by the court of appeals on appeal from the final decision of the commissioner. *Bechman v. Wood, C. D. 1899, 89 O. G. 24.-)9. 1241. In an interference if the counts though identical in language cover mechanisms which differ very materially in construction and in operation there is no interference in fact. It is well settled that interferences are declared between things and not between words. Goss v. Scott, C. D. 1901, 96 O. G. 842. 1242. Where an applicant discloses a novel means for changing the gearing and thereby the speed of a bicycle by back pressure upon the pedals and claims it in combination with a sprocket-wheel and another applicant claims the same means in combination with a bevel- gear and the examiner regards the sprocket- wheel and bevel-gear an equivalent in the combination, Held, that both cases cannot properly be allowed. Ex parte Thompson, C. D. 1902, 98 O. G. 227. 1243. Where two parties claim the same combination and real invention and the claims differ merely in the statement of the specific form of one of the elements of the combina- tion and the two forms are mechanical equiva- lents of each other. Held, that each device would infringe the other party's claim and that there is a conflict between the claims. Id. 1244. Where two devices are structurally the same and are capable of performing the same function there is an interference in fact between them even though they are not used for the same purpose. Blue v. Power v. Owens, C. D. 1902, 101 O. G. 2076. «6S INTERFERENCE, XXIII. 1245. Where two applications disclose and claim the same process, there is an interfer- ence in fact, notwithstanding one of the ap- plications may disclose other steps preliminary to those forming the process of the issue, which preliminary steps, though preferably employed, are not essential to a practice of the process in issue. Power v. Proeger, C. D. 1902, 101 O. G. 3108. 1246. Where two processes as described and claimed are the same except that the applica- tion on which one of them is based describes as a preferable though not an essential mode of procedure the employment of an additional step intermediate of the steps forming the process of the issue, there is an interference in fact on the processes as claimed. Id. 1247. The question of interference in fact and the question of patentability of the issue must be presumed to have been finally deter- mined in the patent office. They will not be inquired into by the court, except perhaps in very rare and exceptional cases. *Luger v. Browning, C. D. 1903, 104 O. G. 1123. 1248. Where the issue of an interference is in the words of a claim allowed in a patent, and the interfering applicant testifies that the language used in the claim to define the in- vention is not in his opinion strictly correct. Held, that this testimony is not sufficient of itself to warrant the conclusion that the in- ventions at issue are not the same. Mac- donald v. Edison, C. D. 1903, 10.5 O. G. 973. 1249. Where each party's claims include elements not found in the claims of the other party, Held, that there is no interference in fact. Wheildon v. Tench, C. D. 1903, lOG O. G. 7G3. 1250. Where the claims are for an article of manufacture and they mean the same thing in each of the applications involved in an in- terference. Held, that there is an interference in fact notwithstanding the fact that one of the applications discloses specifically a method of manufacture while the other application is silent as to the method by which the article is produced. Hopfelt v. Read, C. D. 1903, 106 O. G. 767. 1251. Where the issue is broad, covering only common features of construction. Held. that there is an interference in fact notwith- standing differences in details of construction not claimed. Auerbach and Guting v. Wis- well, C. D. 1904, 108 O. G. 289. 1252. When the claims in issue are made by each of the parties, the only question to be considered in determining the existence or non-e-xistence of interference in fact is wheth- er the terms of the claims have the same or different meanings in the applications of the respective parties. Greer v. Christy, C. D. 190.-), 116 O. G. 297. 1253. When the devices of the parties are identical in substance so far as they are de- fined by the claims in issue, though such de- vices differ in specific characteristics to which said claims are not limited. Held, that there is interference in fact as to such claims. Id. 1254. It is fundamental that the patent office should not allow identical claims to two differ- ent parties for invention in the same art. Such claims either interfere or one of them does not correctly describe the device upon which it is supposed to be based. Elspass v. Taylor, C. D. 1905, 117 O. G. 1798. 1255. Where the counts in question are claims made identically by both parties, the only question raised by the contention of non- interference in fact is whether the terms of the counts have the same meaning when ap- plied to the inventions of the respective par- ties. Pfingst v. Anderson, C. D. 1905, 118 O. G. 1067. 1256. In determining the question of inter- ference in fact specific differences in the de- vices of the parties to which the issues are not limited must not be mistaken for differ- ences in the essential character of the inven- tions or elements to which the same terms have been applied by the different parties. Id. 1257. Where the terms of an issue are generic, there may be an interference in fact, although the devices of the parties may differ in specific details. Sanders v. Melvin, C. D. 1905, 119 O. G. 1921. 1258. Where different parties have the same claims and each has proper foundation for them in his application, Held, that either the inventions which these claims represent in the different cases are the same or each party has failed to distinguish his invention from that of the other party and that in the latter event the claim is indefinite and ambiguous in each case and should be rejected. Ex parte Cutler, C. D. 1906, 123 O. G. 665. 1259. Since the statutes require that par- ties shall distinguish their inventions from the inventions of others and that they shall par- ticularly point out and distinctly claim their inventions. Held, that the definition of the in- vention and the distinctions between it and INTERFERENCE, XXIII. 289 the inventions of others should be carried into the claims. Id. 1260. Where the claims of interfering par- tics are in identical language and each party has a construction responding in function to the broad terms thereof, there is an interfer- ence in fact, although the constructions are specifically different. Gordon v. Wentworth, C. D. 1906, 120 O. G. 1163. 1261. General terms may be used which ap- ply equally to two structures which are not the same, as may be shown when those terms are read and construed in the light of the specifications behind them; but in most cases where two structures are not specifically the same and the art does not warrant a generic claim the language of the claims can be made precise and to fittingly describe each struc- ture so that the use of identical language be avoided. Podlesak and Podlesak v. Mcln- ncrney, C. D. 1906, 120 O. G. 2127. 1262. Where the claim read in the light of the specification of one party means one thing and the same claim read in the light of the specification of another party means an- other thing. Held, that the same phraseology should not be employed. *Id. 1263. Where the issue if broadly construed read upon the devices of both parties, but consisted of a claim which had been allowed over a reference only upon a narrow construc- tion inapplicable to the devices of one party, and it appeared that such construction of the claims was necessary in order to sustain the same, Held, that, in the opinion of the court, an error had been committed and that the case should be remanded undecided to the patent office for further consideration as to identity of invention. *Id. 1264. Held, that apparently neither party is entitled to a claim for the feature in contro- versy which should dominate the other and that apparently the claims presented by both and made the issue should be so re-formed that each should have a specific claim, pro- vided each could draw one to avoid the ref- erence. *Id. 1265. There may be an interference in fact on a generic issue based on two devices which are specifically different. Kolb v. Heming- way V. Curtis, C. D. 1906, 120 O. G. 244.5. 1266. Where the .same language is used by different parties to define different inventions, it is an unavoidable conclusion that they have not distinguished their inventions from each other. In such cases if the inventions are in fact different and each party has a right to make the claim, the language of the claim must be ambiguous or indefinite and should be amended to clearly distinguish the inven- tions before the issue of patents thereon. Howell V. Hess, C. D. 1906, 122 O. G. 2393. 1267. Where the petitioner was allowed claims found in a patent granted to another party upon an application filed during the pendency of the petitioner's application, but the examiner refused to declare an interfer- ence on the ground that the terms of the claims mean different things in the different cases and that there is no interference in fact. Held, that the examiner has improperly construed the plain broad terms of the com- mon claims in view of different specific struc- tures shown by the parties and in view of dif- ferent specific purposes dwelt upon in the specifications and has thereby imposed upon the claims specific meanings not required by the language of the claims themselves, that the claims when properly read are undoubted- ly generic to the two disclosures, and that in- terference should be declared. Ex parte Cut- ler, C. D. 1906, 123 O. G. 655. 1268. Where each of two applicants for pat- ent has made a claim in identical language and the claim reads without violence to the proper natural meaning of its terms upon the devices disclosed by each party, but the pat- entable invention which this claim is sup- posed to represent is found only in the device of one of the parties. Held, that the claim fails to define the invention. Podlesak and Podle- sak V. Mclnnerney, C. D. 1906, 123 O. G. 1989. 1269. Where, so far as the invention in issue is concerned, the same results arc accomplish- ed by substantially the same or equivalent means in the device of each party and the terms of the issue have the same meaning in each case. Held, that there is interference in fact. Heintzelman and Camp v. Vraalstad and Doyle, C. D. 1906, 120 O. G. 906. 1270. Where the claims of the issue cover only such elements of the structures as are common to the two cases and the specific dif- ferences in the structure shown are not such as to make the terms have different meanings in the two cases, Held, that there is an inter- ference in fact. Noble v. Sessions, C D. 1906, 121 O. G. 1348. 1271. The issue as interpreted in the light of the specification of the party first making the same is limited to an improved means for protecting the necessary joints in conductors 270 INTERFERENCE. XXIV, (a), (b). for high-tension currents of electricity. The invention of the other party is an improvement in insulating-conductors, his plan of insula- tion at the joints being the same as along the entire length of the conductor. Held, that the latter has no right to make the claim, the resemblance of the two devices being acci- dental rather than real. *Vielc v. Cummings, C. D. 1908, 134 O. G. 777. 1272. Where the interference involves a structure creating a "main" and a "leakage" flux, it is immaterial for the purposes of the interference that the flux described as the "main flux" by one party is called the "leakage flux" by the other, and vice versa, in their respective specifications. Pratt v. de Fer- ranli and Hamilton, C. D. 19nn, 148 O. G. 369. 1273. A decision dissolving an interference on the ground that there is no interference in fact involving two design applications is, in effect, a ruling that each design is patentable notwithstanding the other. Ex parte Litle, Jr., C. D. 1910, 160 O. G. 1272. XXIV. Issue. (a) In General. 1274. One claim cannot properly be included under two separate issues, since it must neces- sarily be broader or narrower than one of those issues. (Hammond v. Hart, ante, 52, 83 O. G. 743.) Kane v. Brill and Adams, C. D. 1898, 84 O. G. 1142. 1275. It is not proper to include several claims in one application under one issue since they cannot all mean the same thing, and therefore confusion as to the meaning of the issue would be likely to result in taking testi- mony. (Wolfenden v. Price, C. D. 1898, 87, 83 O. G. 1801.) Sadtler v. Carmichael v. Smith, C. D. 1899, 86 O. G. 1498. 1276. It is proper to include two applications of the same party under one issue when the invention in controversy is disclosed and claimed in both cases. Id. 1277. Where there is but a single issue in the interference, but the interference letter states that said issue constitutes claim 2 of Houston's original application and also em- braces the substance of claims 1 and 4, re- spectively, of two divisional applications. Held. that under the present practice Houston should be notified that these claims will be held to await the result of the interference and will be rejected at the termination of the interference if priority is awarded to his op- ponent. If, however, they are not substan- tially the same claims and such claims are made by his opponent, then said claims should be placed in one or more ditTercnt interfer- ences. In any event the divisional applications are not properly involved in this interference. Eastman v. Houston, C. D. 1899, 87 O. G. 1781. 1278. Where both parties arc applicants, an issue should not be formulated which includes features not disclosed by one of the parties merely because in the examiner's opinion the devices are not patentably different; but if there is a common patentable invention, that invention alone should be made the issue if the parties desire to and do in fact make claims to it. Edgecombe v. Eastman v. Hous- ton, C. D. 1899, 89 O. G. 707. 1279. It is necessary to orderly procedure that the issue remain fixed throughout the interference proceeding. To permit a party to change the issue at will, to add to it so as to include matter not covered by its original- ly, would lead to the greatest confusion. Brill & Adams v. Uebelacker, C. D. 1902, 99 O. G. 296G. 1280. A limitation that the fuse is "within the casing" is broad enough to included the fuse anywhere within the outer surface of the casing. It need not be within the cavity of the casing, but may be embedded in the walls. *Sachs v. Hundhausen, C. D. 1903, lOo O. G. 1534. (b) Patenlability of. 1281. Where Y. presented for consideration the question of the non-patentability of the issue of the interference in view of prior pat- ents. Held, that this is a question which will not be passed upon at final hearing on prior- ity by the commissioner ; but the primary ex- aminer is directed to consider it after the in- terference has been finally determined. Young V. Donnelly, C. D. 1898, 82 O. G. 1417. 1282. The facts disclosed by this case do not make it clear that the issue of the inter- ference is not patentable. It is one of those cases where there can be an honest difference of opinion, and it therefore does not come within the exception referred to in Hopkinson V. Hunter (C. D. 1896, 1, 74 O. G. 653), Ben- der V. Hoffmann (C. D. 1898, 262, 85 O. G. 1737), and Breul v. Smith (ante, 44, 86 O. G. 1635). Anderson and Dyer v. Lowry, C D. 1899, 89 O. G. 1861. INTERFERENCE, XXIV, (c), (d), 1, 2. 271 1283. Where a motion is made to remand the case to the patent office to consider the pat- tentability of the issue in view of certain pat- ents cited and it appears that the patent of- fice has not reserved the question of pat- entability for future consideration, Held, that the motion must be denied. *L,uger v. Brown- ing, C. D. 1903, 104 O. G. 1123. 1284. In formulating the issue of an inter- ference the question as to the patentability of ihe claims cannot be reserved for subsequent ex t'arte consideration, since an interference as to an unpatentable claim would involve a moot question. O'Connor v. Vanderbilt, C. D. l'J03, 102 O. G. 1782. 1285. Where the inclusion of a multiplicity of counts in the issue was complained of. Held, that if the counts were separately pat- entable there was no irregularity in including all of them in the interference. Normand v. Krimmelbein, C. D. 1905, 118 O. G. 2251. 1286. Where an appeal was taken on ground of irregularity in declaration from refusal to dissolve because of multiplicity of counts in the issue. Held, that the propriety of the in- clusion of all the counts depended upon their separate patentability and was therefore a question of merits not to be considered upon direct appeal to the commissioner. Id. 1287. Where in their decision on priority one examiner-in-chief found the issue to be patentable and another found it unpatentable and the third was absent. Held, that the case is not distinguished in substance from one where all three found the issue unpatentable, since by their divided opinion they affirm the conclusion of the primary examiner that the issue is patentable. Potter v. Mcintosh, C. D. 1906, 120 O. G. 1823. (c) Bar to Other Applications. 1288. Where it appears that the claims in an application do not involve invention over the issue of an interference of which the appli- cant was held not to be the first inventor. Held, that the interference record constitutes a bar to the grant of the claims. Ex parte Carpenter, C. D. 1904, 110 O. G. 2233. 1289. Where it appears that the process claimed by C. was invented by M. at the time M. invented the article produced by that pro- cess, of which article M. has been held in an interference proceeding to be the prior in- ventor, Held, that M. is also the prior inventor of the process and C. is not entitled to claims for the same. Id. 1290. Where claims in an application do not involve invention over the issue of an mterference of which the applicant was held not to be the first inventor. Held, that the in- terference record constitutes a bar to the grant of the claims. Ex parte Voley, C. D. 1905, 114 O. G. 2.59. 1291. Where the unsuccessful party in the interference has two applications pending at the same time, some of the claims in the ap- plication not directly involved in the interfer- ence being held not to involve invention over the issue of the interference, Held, that they were properly rejected upon the record of the interference. Id. 1292. Where a decision of priority of in- vention has been awarded against one of the contestants and certain claims in another ap- plication of his have been rejected upon the interference record, Held, that an affidavit filed in the second application under the pro- visions of Rule 75 is merely an attempt to es- cape the effect of a judgment entered after an inter partes proceeding and that such affi- davit was properly ignored. Id. (d) Counts of. 1. In General. 1293. In declaring an interference each count of the issue should be patentably dis- tinct from all the others. There is no neces- sity of making several counts unless they dif- fer materially from each other, for to do so would merely lead to confusion in taking testimony. Votey v, Wuest, Jr. v. Doman, C. D. 1904, 111 O. G. 1627. 1294. If several claims made by all the parties to an interference are patentably dis- tinct, they should be made separate counts of the issue. Where, however, the claims are not patentably distinct, an issue consisting of a single count will be sufficient to deter- mine the question of priority, and the parties should be notified that if priority of invention is awarded against them their claims which do not contain patentable subject-matter over the issue will be rejected. Id. 2. Interpretation. 1295. The mere fact that two witnesses may disagree as to the construction of the issue or as to what devices come within its terms is no good ground for a dissolution oi the interference or a definition by the primary examiner of the meaning of the issue, and 273 INTERFERENCE, XXIV, (d), 2. therefore proceedings should not be suspended for a consideration of the matter. Pupin v. Hutin and Lcblanc v. Stone, C. D. 1898, 82 O. G. 1418. 1296. In introducing their testimony in any case the parties must put their own construc- tion upon the issue, and to suspend proceed- ings at every time during the taking of testi- mony that there is uncertainty or dispute as to whether a particular exhiliit comes within its terms would lead to endless contests and is not proper practice. Id. 1297. For the speedy and orderly conduct of interference proceedings, it is desirable that there should be the least possible room for dispute as to the meaning of the interference issue. Fitzgerald v. Guillement, C. D. 1898, 84 O. G. 2017. 1298. Where the meaning of the interfer- ence issue was not clear and not free from ambiguity, the interference was dissolved and remanded to the primary examiner for re- declaration should the parties make inter- fering claims. (Hammond v. Hart, ante, 52, 83 O. G. 743, cited.) Id. 1299. In the consideration of an interference the office is no more competent than the courts to say that an element which an applicant has placed in his claims is an immaterial one, es- pecially when in framing the issue the office had made the element a part thereof. (Ham- mond V. Hart, C. D. 1898. 52, 83 O. G. 743, and Wolfenden v. Price, C. D. 1898, 87, 83 O. G. 1801, cited.) Streat v. Freckleton, C. D. 1899, 87 O. G. 60.i, 1300. Where one of the parties to an inter- ference who is an applicant had before him when he prepared his application the patent of his opponent and adopted the claims of said opponent for the apparent purpose of an interference. Held, that the applicant is not entitled to demand a construction of the claim of the patentee which would render it invalid by reason of that which he himself had accom- plished if it can be upheld by any other rea- sonable interpretation not necessarily incon- sistent with the statement of the patentee. *Ruete V. Elwell, C. D. 1899, 87 O. G. 2119. 1301. Where a claim is held allowable on appeal on the ground that it contains a certain limitation as distinguishing it from the prior art. Held, that the issue in an interference subsequently based upon that claim cannot be construed as not including that limitation. Edgecombe v. Eastman v. Houston, C. D. 1899, 89 O. G. 707. 1302. Where the record of the cases, taken in connection with the prior art, shows that the parties started from different positions in the art, were working on different lines, and the features of novelty in the devices produced are different, there can be no interference in fact between the two inventions. Valiquet v. Johnson, C. D. 1900, 92 O. G. 1795. 1303. Where J.'s whole idea was to so sup- p O. G. 1356. 1353. Where in his original drawing B. showed a valve controlling communication be- tween several chambers and a passage leading to the cylinder of an engine and in his speci- fication referred to the chambers as "carbure- ters" supplying sprayers with mixtures vary- ing in proportion of hydrocarbon contained in the several chambers, Held, that the use of the word "carbureter" was a sufficient disclosure of the idea of providing "hydrocarbon inlets" in which air and hydrocarbon were to be sup- plied separately to each of the passages con- trolled by the valve, as called for by the issue. Id. 1354. Where the examiner stated in a letter to B. suggesting the claims in interference that the interference was not declared during the pendency of M.'s application for the rea- son that B.'s original specification so ob- scurely presented his invention that it could not be understood at that time, Held, that the examiner's action in admitting a substitute specification and drawing was, in effect, a rul- ing on his part that the substitute specification and drawing did not contain new matter. Id. 1355. Evidence considered and held to show that the application on which the patent in- volved in interference was granted did not as originally filed disclose the invention in issue, and priority therefore awarded to the junior party. *McKnight v. Pohle, C. D. 1907, 130 O. G. 2069. 135G. Assignments of error by the commis- sioner of patents raising the question of the sufliciency of disclosure in appellee's applica- tions will be given but passing notice by the court of appeals where such question was not raised before the tribunals of the patent of- fice. It was incumbent upon appellant to INTERFERENCE, XXV. 277 "raise this question before the primary ex- aminer, whose skill in the particular art pecu- liarly qualilied him to consider it." *Cutler V. Leonard, C. D. 1908, 136 O. G. 438. XXV. Joint and Sole. 1357. No presumption arises against a sole applicant by reason of his having previously made application as joint inventor with an- other for the same invention, the joint appli- cation having been abandoned and the sole application filed promptly upon ascertaining that the invention was in fact sole. Stupak- off v. Johnson, C. D. 1898, 84 O. G. 982. 1358. The allegation that the testimony shows that joint applicants who are parties to the interference are not joint inventors is not a proper ground for a motion to dissolve or for a suspension of the interference. Shiels v. Laurence et al., C. D. 1899, 87 O. G. 180. 1359. To pass on the question of joint in- vention would require as full consideration of the testimony as would the question of orig- inality, and therefore both questions should be decided at one time. Id. 1360. The question as to whether L. and K. are original inventors is just as important as is the question whether they are joint inven- tors, and therefore the question of joint in- vention will not be given the preference at the mere option of their opponent. Id. 13G1. When an interference is declared be- tween a joint application and a sole application of one of the joint applicants, the question of priority necessarily resolves itself into a determination as to whether the entity com- posed of the joint applicants ever made the invention at all. A motion to dissolve, there- fore, which sets up as a reason for dissolution that the records shows that the joint appli- cants never made the invention is irregular, since it seeks to obtain a decision on the very question which is to be decided at final hear- ing. Frederick v. Frederick and Frederick, C. D. 1902, 99 O. G. 186.-). 1362. Where one of several joint applicants files a sole application for the same invention and after being placed in interference argues that the joint application is abandoned through a lack of proper prosecution. Held, that all doubts should be resolved in favor of the joint applicants, so that the rights of the par- ties may be fully investigated in the interfer- ence. Giroud v. Abbott, Giroud, and McGirr, C. D. 1903, 103 O. G. 662. 1363. Where Quist's application was filed after Oslrom's patent issued, but it appears that at the time of the issue there was a joint application by Hogan and Quist pending. Held, that Quist can derive no benefit in so far as the burden of proof is concerned from the joint application. *Quist v. Ostrom, C D. 1904, 108 O. G. 2147. 1364. Where two parties file an application as joint inventors and upon discovering that it was a mistake one of them files an applica- tion as sole inventor and is placed in inter- ference with a third party. Held, that the sole applicant can derive no benefit from the ear- lier joint application in determining the bur- den of proof in the interference. Arnold v. Vaughen and Cabot v. Arnold and Fisher, C. D. 1904, 109 O. G. 80o. 1365. The burden of proof in any proceed- mg rests on the party against whom judgment would be rendered if no evidence were ad- duced on either side. A party cannot be ad- judged the first and sole inventor merely be- vause he filed a prior application as joint in- ventor with another party. Id. 136G. Where a junior party to an interfer- ence asks that he be made the senior party by reason of a prior application filed by him as joint inventor with another party. Held, that his request will be denied, since a joint appli- cation and a sole applicant cannot constitute parts of one proceeding. Haskell v. Miner v. Ball, C. D. 1904, 109 O. G. 2170. 1367. A joint application is no proof that one of the parties is a sole inventor and can- not be used as the basis for a judgment in his favor in an interference, and therefore it cannot affect the burden of proof. Id. 1368. A joint application cannot be accept- ed as constructive reduction to practice by a sole inventor who subsequently files a sole application, since to constitute constructive reduction to practice the application must be allowable. Id. 13G9. The allegation that the testimony shows that joint applicants who are parties to the interference are not joint inventors is not a proper ground to suspend the interfer- ence. Robin v. Muller and Bonnet, C. D. 1904, 110 O. G. 1429. 1370. To pass on the question of joint in- vention would require as full consideration of the testimony as would the question of prior- ity, and therefore both questions should be considered at the same time. Id. 278 INTERFERENCE. XXVI. 1371. It is not proper to institute a separate iiKiuiry in an interference proceeding to in- vestigate the question of joint inventorship, as this relates to a statutory bar. Id. 1372. The question as to whether a sole ap- plicant, or joint applicants, one of which is the sole applicant, is entitled to a patent re- lates to the question of priority of invention and cannot properly be determined by the pri- mary examiner on a motion for dissolution. Jarvis v. Quincy v. Jarvis & Blakeslee v. Baron v. Briggs and Shephard, C. D. 1904, 113 O. G. 550. 1373. Where an interference is dissolved for the reason that one of the contestants has no right to make the claims, Held, that the question of joint inventorship of the other contestant becomes an ex l>arlc matter. Robin V. Muller and Bonnet, C. D. 1904, IK! O. G. 2500. 1374. Where three joint applicants executed an application which was subsequently placed in interference with another joint application filed by two of the three joint applicants. Held, that a power of attorney filed by the two ap- plicants will not be accepted in the first ap- plication, for such action would permit the two applicants to conduct both sides of the controversy, to the exclusion of the third joint applicant. Ex parte Hinkson, Hey, and Mc- Conahy, C. D. 1904, 111 O. G. 2220. 1375. The question of the joint inventor- ship of one of the parties to an interference is not one that can be considered in an inter- ference proceeding and a motion to take tes- timony on the question will not be granted. Pickard v. Ashton and Curtis, C. D. 1908, 137 O. G. 733. 1376. Where a joint application is involved in an interference, the question whether the joint applicants were in fact joint inventors is pertinent to the question of priority, since if they were not in fact joint inventors they were not entitled to make the application in interference and are without standing therein. *Lemp V. Randall and Bates, C. D. 1909, 146 O. G. 255. 1377. It is not necessary that the testimony of the joint applicants be corroborated in order to establish that they were in fact joint inventors, and unless there is a preponderance of evidence to the contrary their testimony should be sufficient on that question. *Id. 1378. G. and L. filed a joint application for patent, and L. assigned his interest therein. Subsequently G. filed a sole application for the same inventiun, and an interference was de- clared. Held, that L.s assignee is entitled to control the prosecution of the interference on behalf of G. and L. Gilbert v. Gilbert and Lindley, C. D. 1910, 160 O. G. 775. XXVI. Judgment on the Record. 1379. The commissioner has authority under the statute to institute interference proceed- ings to determine the question of priority of invention ; but he has no authority, when that question is determined, to continue the pro- ceedings for any other purpose. The com- missioner would not be justified in arbitrarily putting a party who in his judgment is enti- tled to priority to the trouble and expense of taking testimony on the mere possibility that some other tribunal might disagree with him and thus render the taking of testimony nec- essary. It is not to be presumed that the com- missioner's decision will he overruled on ap- peal. McGuire v. Hill, C. D. 1898, 84 O. G. 983. 1380. Appeal from the decision of the ex- aminer of interferences granting a motion for judgment on the record dismissed for the rea- son that such decision was an adjudication on the merits of the controversy and appeal lies to the examiners-in-chief and not to the com- missioner. Otherwise there would be no right of appeal to the court of appeals under West- inghouse v. Duncan (C. D. 1894, 170, 66 O. G. 1009.) Id. 1381. Judgment cannot be rendered on the record against a party whose alleged date of conception is prior to the record date of his opponent merely because his reduction to prac- tice is subsequent thereto. Kane v. Brill and Adams, C. D. 1898, 84 O. G. 1142. 1382. Following the decision of the supreme court in Columbia v. Alcorn (C. D. 1893, 672, 65 O. G. 1916, 1.50 U. S. 460), that a word in common use as designating a locality or sec- tion of county cannot be appropriated by any one as his exclusive trade-mark, Held, that the appellees' claim or right to the exclusive use of the word "Columbia" as a designation of tissue or toilet paper cannot be maintained. d Morgan Envelope Co. v. Walton et al., C D. 1S98, 84 O. G. 811. 1383. After judgment on the record the losing party may bring any motions permitted by the rules, provided he does so within the time limit therefor and has not waived his INTERFERENCE, XXVI. 279 right of appeal. Rittcr v. Krakau, C. D. 1902, 98 O. G. 1708. 1384. Such a judgment does not prevent a consideration of facts which may show, if proved, that the issue is not patentable or that it is not patentable to one of the parties. If a mistake has been made in the declaration of the interference, it is essential to the ends of justice that opportunity for the correction of this mistake be given and the judgment va- cated. Id. 1385. Where an order is regularly issued against a junior party to an interference to show cause why judgment should not be ren- dered against him there is no appeal from such order. McHarg v. Schmidt and May- land, C. D. 1903, 106 O. G. 1780. 1386. Where proceedings were suspended before the examiner of interferences on April 23, pending the final determination of the ques- tion of the right of one of the parties to amend his preliminary statement, and pro- ceedings were resumed on June 15, and the order to show cause was issued on June 17, Held, that as the case was within the jurisdic- tion of the examiner of interferences the order was regularly issued, and no appeal lies from his order. Id. 1387. If there were good reasons why judg- ment should not be rendered, they should be brought forward in answer to the order to show cause. Appeal lies to the examiners-in- chief from the decision of the examiner of interferences entering judgment against the party cited to show cause and not to the com- missioner. Id. 1388. Where S. filed his application Novem- lier IG, and W. alleges in his preliminary state- ment conception in November, Held, that W. may prove conception before November 16 and that therefore judgment cannot be enter- ed against W. on the record. Winsor v. Stru- ble, C. D. 1904, 110 O. G. 600. 1389. Where the junior party fails to take any testimony and judgment is given against him upon the record. Held, that the effect of such record judgment is just as binding as though it had been given after full proofs. Ex parte Votey, C. D. 1905, 114 O. G. 259. 1390. Where party petitions that examiner of interferences be directed to render judg- ment on record against his opponent because the latter has not printed his testimony, Held. that the examiner must decide that matter for himself and that his judgment will not be controlled bv an order made in advance. Mark v. Grecnawalt, C. D. 1905, 118 O. G. 1068. 1391. Since well-established policy, express- ed in Rule 124, denies the right of appeal from the decisions affirming the patentability of claims, it would seem that the opportunity of a party whose preliminary statement failed to overcome the record date of his opponent to contest his opponent's right to a patent was at an end when the primary examiner held on motion for dissolution that the issue was patentable. Sobey v. Holsclaw, C. D. 1905, 119 O. G. 1922. 1392. Where junior party failed to file pre- liminary statement alleging dates prior to the record date of the senior party, Held, regard- ing consideration of patentability on appeal on priority that the junior party was relegated by his preliminary statement to a position com- parable to one of the general public; that he was no longer in the position of a party seek- ing a patent ; that the question of patentability as now presented by him would not be con- sidered, and that the conclusion that the issues are patentable is no longer to be considered as directed against his private interests. Id. 1393. Where the preliminary statement of the junior party failed to overcome the record date of the senior party and judgment on the record was rendered and the examiners-in- chief upon appeal upon priority considered the question of patentability and refused to make any statement against the patentability of the issue, but affirmed the decision on priority, Held, that upon appeal to the com- missioner the question of priority alone is raised and that the question of patentability will not be considered. Id. 1394. Where consideration of patentability was urged on appeal on priority in case where judgment had been rendered on the record and it was contended that no proper decision on priority could be rendered until the issue had been determined to be patentable. Held, in view of action of primary examiner holding ex parte and also inter fortes on motion for dissolution the issue to be patentable and in view of refusal of examiners-in-chief to state that the claims were not patentable, that the issue had been regularly determined to be pat- entable and that the determination was a final one and a sufficient basis for the determina- tion of priority. Id. 1395. Where one of the parties to an inter- ference fails to file a preliminary statement and his filing date is later than that of one 280 INTERFERENCE, XXVI. of his opponents, judgment of priority may be properly entered against him after his fail- ure to respond to an order to show cause why judgment should not be so entered. Such a judgment is a ruling that he was not the first inventor and is not a ruling that he was the last of all the parties to make the invention. Dutcher v. Matthew v. Dutcher and Peter v. Jackson, C. D. 1905, 118 O. G. 2538. 1396. Held, that decisions of the examiner of interferences denying motions for judg- ment on the record should not be subject to review on appeal, as such decisions are not final determinations that judgment will not be rendered in favor of the moving parties. Lemp V. Randall and Bates v. Thompson, C. D. 1906, 120 O. G. 905. 1397. Denial of an appeal from decisions of the examiner of interferences refusing to render judgment on the record deprives the parties of no substantial right, while to per- mit appeals in such cases results in unneces- sary delay, labor, and expense. Id. 1398. Held, that Rule 114 does not clearly and unmistakably require the examiner of in- terferences to render judgment against a party who has been called upon to show cause under that rule and who fails to take any action in response. Id. 1399. Where the preliminary statement of N. and T. failed to overcome the record date of O.'s application and motion by N. and T. to amend their preliminary statement had been denied and the denial affirmed on appeal. Held, that O. is entitled to an award of prior- ity of invention. Neth and Tamplin v. Ohmer, C. D. 1906, 120 O. G. 323. 1400. Where the patent office awarded prior- ity in favor of the senior party on the record. Held, that under the case as presented by the preliminary statement, which may be called the pleadings of the party, there was nothing to do but render a decision in favor of the senior party, whose application for the patent was a constructive reduction to practice of the invention several months earlier than the alleged conception of the same by his oppo- nent. *Neth and Tamplin v. Ohmer, C. D. 190G, 123 O. G. 998. 1401. Where a judgment on the record is rendered and a limit of appeal set, the running thereof is not stayed by filing a petition to set the case down for hearing under Rule 130. Pym V. Hadaway, C. D. 1907, 129 O. G. 2073. 1402. Where in response to an order to the junior party to show cause why judgment of priority could not be rendered against him because his alleged date of conception was subsequent to the filing date of the senior party the junior party files a statement alleg- ing that certain of the counts are specific to his structure and that the subject-matter cov- ered thereby was not shown or described by the senior party. Held, to be insufficient, as the question sought to be raised was one which should have been raised by a motion to dis- solve rather than by the mere filing of a state- ment. Felbel v. Fox, C. D. 1907, 130 O. G. 2375. 1403. A motion to dissolve on the ground of non-patentability of the issue is a proper answer to an order under Rule 114 to show cause why judgment of priority should not be rendered on the record. Field v. Colman, C. D. 1907, 131 O. G. 168G. 1404. No appeal will be entertained from a decision of the examiner of interferences set- ting aside a record judgment and fixing a time for final hearing. O'Brien v. Gale v. Zimmer v. Calderwood, C. D. 1908, 133 O. G. 514. 1405. Where a junior party to an interfer- ence alleges in his preliminary statement a date of conception of the invention in issue prior to the senior party's filing date, but the other dates alleged are subsequent thereto, Held, that an order to show cause why judg- ment be not rendered on the record should not be issued as, conceivably, conception might be proved as alleged. *Peters v. Hopkins and Dement, C. D. 1910, 150 O. G. 1044. 140G. A motion for judgment on the rec- ord in an interference does not present the case for final hearing on the merits, but raises only the question of the sufficiency of the allegations of the preliminary statements of the opposing parties, admitting their truth for the purposes of such motion only. *Lindmark V. De Ferranti, C. D. 1910, 153 O. G. 1082. 1407. A decision of the court of appeals of the District of Columbia, reversing a decision of the commissioner of patents granting a mo- tion for judgment on the record can go no further than a similar decision by the tribunal of original jurisdiction n»glit have gone, and does not, therefore, amount to an award of priority in favor of the appellant or deprive the appellee of his right to bring a motion to set times for taking testimony. *Id. INTERFERENCE, XXVII. 281 XXVII. Jurisdiction. 1408. The transmission of a motion pro- vided for by the rules by the examiner of interferences to the primary examiner for his decision does not give the primary examiner jurisdiction for all purposes, but only for con- sideration of the motion transmitted. Juris- diction as to all other matters respecting the interference clearly remains with the examiner of interferences and he has authority to en- tertain motions to dissolve or any other mo- tions which may under the rules be made. (Hutt and Phillips v. Foglesong, C. D. 1892, 190, GO O. G. 1477, and Jenne and Brown v. Booth, 45 MS. Dec. 88, cited.) Crocker v. Allderdice, C. D. 1898, 84 O. G. 1434. 1409. After the examiner of interferences has made a decision on priority and the limit of appeal has expired he has lost jurisdiction to further consider the case, and before he can consider a motion to transmit a motion to dissolve the interference application must be made to the commissioner in person to re- store jurisdiction to the examiner of inter- ferences. Benger v. Burson, C. D. 1900, 93 O. G. 1917. 1410. It is not understood that by the deci- sion of Trevette v. Dexter (C. D. 1898, 160, 84 O. G. 1283) it was intended to change the practice outline in Garrison v. Hubner (C. D. 1891, 59, 54 O. G. 1889.) Id. 1411. The practice is well settled that after an interference has been declared the primary examiner will take jurisdiction of the case only for the consideration of the motions transmitted by the examiner of interferences. Smith V. Carmichael, C. D. 1900, 93 O. G. 1123. 1412. After an interference has been de- clared the primary examiner will take juris- diction of the case solely for the considera- tion of matters relating to the interference when the same is transmitted to him by the examiner of interferences. Ex parte Hildreth, C. D. 1901, 97 O. G. 1374. 1413. The jurisdiction of the primary ex- aminer is then not for all purposes, but is limited to the consideration of the questions specifically presented for determination either in the motion duly made or in the examiner's request that the interference be transmitted. Id. 1414. The examiner of interferences has authority under the rules to transmit the in- terference after a consideration of motions duly made or upon the request of the exam- iner in order that questions may be considered by the examiner which relate to matters affect- ing the interference. In all other cases where jurisdiction is desired by the examiner it can only be obtained by order of the commissioner. Id. 1415. The proper practice to follow in the event that the examiner wishes jurisdiction of an application involved in an interference for the consideration of matters not relating to the interference is for the examiner to file a request with the commissioner that jurisdic- tion of the case involved be restored to him for the purpose of making such action. Id. 1416. Where a motion is brought to restore jurisdiction to the examiner of interferences after the limit of appeal has expired in order that he may consider a motion to transmit a motion for dissolution and the motion is granted for that sole purpose, Held, that the jurisdiction of the examiner of interferences was not restored for all purposes. Benger v. Burson, C. D. 1902, 99 O. G. 1384. 1417. The record evidence as to the date to which a party is entitled relates to proof of priority of invention, and therefore it should be passed upon by the examiner of interfer- ences rather than the primary examiner. Raulet and Nicholson v. Adams, C. D. 1905, 114 O. G. 827. 1418. Held, that rules of practice in inter- ference cases are necessary and should not be disregarded and that the court does not sit to review the rulings of the commissioner of patents in discretionary matters or to re- view decisions made by the examiner of inter- ferences not lawfully appealed from. *Jones V. Starr, C. D. 1905, 117 O. G. 1495. 1419. Where an interference is transmitted to the primary examiner for the purpose of determining the right of one of the parties to make a claim and the examiner also decides the question of interference in fact, Held, that the examiner exceeded his jurisdiction in de- termining the question of interference in fact. Podlesak and Podlesak v. Mclnnerney, C. D. 1005, 118 O. G. 83.5. 1420. Where an interference is transmitted to the primary examiner for the considera- tion of one question, he is without jurisdic- tion to consider an entirely independent ques- tion. Moore v. Curtis, C. D. 190G, 121 O. G. 2325. 1421. Where petition is made to restore the jurisdiction of the examiner of interferences to consider certain motions. Held, that copies 282 INTERFERENCE, XXVIII, (a), (b). of the motions which the petitioner desires the examiner of interferences to consider and de- cide should accompany the petition, and serv- ice of the papers should be made upon the op- posite party to the interference. Ex parte Adams-Randall, C. D. 1906, 125 O. G. 1700. 1422. Where petition is made to restore the jurisdiction of the examiner of interferences to consider certain motions, the form merely and not the merits of said motions will be con- sidered in determining the petition, since the merits of the motions should be decided in the first instance by the examiner of interferences. Id. 1423. The examiner of interferences has no jurisdiction of an application in interference to require the filing of a new oath therein. Dukesmith v. Corrington v. Turner, C. D. 1906. 125 O. G. 669. XXVIII. Motions. (a) In General. 1424. Where a motion for dissolution filed by one party and a motion to amend under Rule 109 filed by the other party are trans- mitted to the primary examiner, he should de- cide both motions and not suspend action on the motion to amend until the decision on the other motion becomes final. Uebelacker v. Brill. C. D. 1899, 87 O. G. 1783. 1425. In accordance with the general spirit of the practice all questions which can be fairly considered at the same time should be so considered. The object of this practice is to diminish the number of appeals and expe- dite the final determination of cases. Id. 1426. Upon an appeal by H. et al. from the decision of the examiner refusing to transmit the case to the examiner of interferences for the consideration of a motion that they be assigned a reasonable time within which to file an amended preliminary statement. Held, that the examiner's decision refusing to suspend the proceedings and transmit the motion to the examiner of interferences was proper. The case was before him merely for the de- termination of the motion to dissolve, and the pendency of that motion did not prevent the parties from bringing any other proper motion before the examiner of interferences. Mech- lin V. Horn, Colclazer & Mungen, C. D. 1900, 92 O. G. 2507. 1427. Where the issues are the claims of both parties and have been held patentable by the exarainers-in-chief upon appeal on motion to dissolve and it appears from B.'s prelim- inary statement that he cannot prevail over L.'s record date. Held, that the examiner of interferences properly denied B.'s motion to return the case to primary examiner for the consideration of interference in fact and re- formation of the issues in connection with the decision of the examiners-in-chief. Brown v. Lindmark, C. D. 1904, 109 O. G. 1071. 1428. Where L. moved for judgment on the record and B. moved that L.'s motion be dis- missed. Held, that the examiner of interfer- ences properly denied B.'s motion as L. had the right of appeal from the decision on his motion for judgment. Id. 1429. The contention that the motion to amend contains new matter relates to the merits and is a matter for the consideration of the primary examiner and not the examiner of interferences. The motion was therefore properly transmitted. Brown v. Inwood and Lavenberg. C. D. 1907, 130 O. G. 978. 1430. A motion will not be considered on appeal which has been dismissed by the ex- aminer of interferences, having original juris- diction thereof, although the reason for which it was dismissed no longer exists. Keith, Erickson, and Erickson v. Limdquist v. Lori- mer and Lorimer, C. D. 1910, 158 O. G. 701. (b) Delay in Bringing. 1431. Where at the hearing on a motion a supplemental affidavit is filed attempting to explain the delay in bringing the motion, Held, that it should not be received and con- sidered. Reasonable notice of all motions and affidavits must be served upon the op- posing parties before the hearing. Id. Lipe V. Miller, C. D. 1903, 105 O. G. 1263. 1432. Where a motion to shift the burden of proof is brought four months after the expiration of the twenty days allowed for motions and the only excuse is that a motion for dissolution was pending. Held, that the examiner of interferences properly refused to transmit the motion to the primary examiner. Harvey v. Lubbers v. Raspillaire, C. D. 1904, 112 O. G. 1215. 1433. All motions should be brought within the twenty days allowed by the rule, and the pendency of one motion is no reason for delay in bringing another. Id. 1434. Where the excuse for the delay of more than twenty days in bringing a motion is that it was supposed that an agreement INTERFERENCE, XXVIII, (c), (d). 283 would be reached between the parties and it appears that the motion was finally brought more for delay than to test the questions raised, Held, that the motion will not be trans- mitted to the examiner. Dickinson v. Norris, C. D. 1905, 116 O. G. 593. 1435. A mere unverified statement accom- panying a motion filed one day late stating that the motion should not be brought sooner on account of other work is insufficient. A showing in e.xcuse for delay should be under oath, and it should state facts from which the office may judge whether or not the delay was excusable. Felbel v. Fox, C. D. 1907, 130 O. G. 2375. 1436. While it is not the desire of the of- fice to be too technical, it is better to insist upon a reasonable and just compliance with the rules of the office, though it may work a hardship in an individual case, than to adopt a course that would result practically in ab- rogating the rules, with consequent confusion. (Keller v. Wethey v. Roberts, C. D. 1897, 157, 81 O. G. 331 ; Estes v. Cause, C. D. 1899, 164, 88 O. G. 1336.) Id. 1437. Where a motion was filed by N. on the last day of the limit of appeal and on the same day notice by registered letter was mail- ed to C.'s attorney and C. makes no conten- tion that said notice was not received in ample time to prepare for the hearing. Held, that N. is entitled to the date of the receipt of his motion in this office as its date of filing. Naulty V. Cutler, C. D. 1907, 126 O. G. 389. 1438. Where a sufficient excuse is offered for the delay in bringing a motion to amend as to certain claims thereof. Held, that the en- tire motion should be transmitted, as no ad- ditional delay will be occasioned. Id. Bastian V. Champ, C. D. 1907, 128 O. G. 2837. 1439. Where the reasons which are alleged to excuse delay in bringing a motion appear clearly from the record it is only necessary for the moving party to call attention thereto. Cutler V. CarichoflF, C. D. 1907, 130 O. G. 656. (c) Notice of. 1440. Where appeal is taken from action of examiner of interferences transmitting motion for dissolution to the primary examiner on the ground of insufficient notice, Held, that if the notice was insufficient to enable counsel to appear and oppose the motion he should have asked for a postponement of the hearing and that the motion should not be dismissed on this ground. Taylor v. Kinsman v. Kintner v. Potter, C. D. 1905, 118 O. G. 838. 1441. VVhere it appears that a notice of a motion was delivered by private messenger on a Saturday afternoon and received by a clerk in the office of counsel and counsel him- self actually received the notice on Monday afternoon, which was ample time to prepare for the hearing on motion. Held, that the no- tice was good and that the motion should be entertained. Id. 1442. Where a protest was filed by one of the parties against consideration upon rehear- ing on the ground that due notice of the filing of the motion for rehearing and a copy thereof were not served upon him. Held, that the practice does not require notice of the filing of the motion and that a notice by the office of the time and place of rehearing and of the matter to be reconsidered is sufficient. Townsend v. Copeland v. Robinson, C. D. 1906, 124 O. G. 1845. 1443. Where the transmission of a motion to dissolve is opposed on the ground that no proper notice was given of the bringing of the motion, the notice of the motion having been signed by only two of the three independently- appointed attorneys, Held, that the objection is not well taken and that the signature to a notice is sufficient if the party notified under- stands from the signature from whom or in whose interest the notice is given. Heyne v. Hayward and McCarthy v. De Vilbiss, C. D. 1900, 125 O. G. 669. 1444. Rule 153 provides that reasonable no- tice of all motions must be given and that a motion will not be entertained in the absence of proof of service of such notice. The same reason exists for requiring notice of the renewal of a motion as of the motion it- self, and the mere request at the final hearing and in a brief filed at final hearing is not such notice. Dyson v. Land v. Dunbar v. Browne, C. D. 1908, 133 O. G. 1679. (d) Piecemeal. 1445. Defects in the ev be corrected at all, should patent office by making a tion for leave to do so, should not be subject to pense attending an appeal appellant upon a defective *Nielson v. Bradshaw, C. 644. idence, if they can be corrected in the seasonable applica- since the appellee the trouble and ex- to this court by the state of the record. D. 1900, 91 O. G. 384 INTERFERENCE, XXIX. 1446. The piecemeal disposition of motions to dissolve is not a method to be commended, and it is regarded as for the interests of all parties that motions be transmitted and decid- ed only after each party is in full possession of the facts which may have a bearing upon the matter. A knowledge of the application without a knowledge of the actions which have been taken is not such full information. Whip- ple V. Sharp, C. D. 1901, 96 O. G. 2229. 1447. The practice of the office does not permit a party to bring a motion to dissolve upon one ground and if it is denied to bring another motion setting up different grounds, since this would result in unwarrantable delay of the proceedings and in trouble and expense to the opposing party. Finch v. Singleton, C. D. 1902, 98 O. G. 1709. 1448. Motions to dissolve should not be made piecemeal ; but the whole case should be presented at one time. Richards v. Kletz- ker and Goesel, C. D. 1902, 98 O. G. 1709. 1449. Held, that it is against the policy of this office to permit piecemeal motions in in- terference cases. Egly v. Schulze, C. D. 1905, 117 O. G. 276. 1450. It is well settled that piecemeal action cannot be permitted ; but where a party acting in good faith tiles a motion which is held to be indefinite and an amended motion curing the informalities is promptly filed within the limit of appeal set from the previous decision the amended motion should be transmitted. Gold V. Gold, C. D. 1907, 1.31 O. G. 1442. 1451. The piecemeal prosecution of motions places an unnecessary burden upon the office and upon the parties, and the practice is strongly condemned. Crescent Oil Co. v. W. C. Robinson & Son Co., C. D. 1909, 142 O. G. 1113. XXIX. Practice on Fin."il Hearing and After Judgment. 1452. Where the court of appeals in decid- ing priority based its decision on D.'s appli- cation as a constructive reduction to practice at the date of tiling, but refused to decide whether that application disclosed an operative device. Held, that the question of operative- ness is still open for consideration by this office and may properly be made the ground of a motion to dissolve. Fowler v. Dodge. C. D. 1898, 82 O. G. 1687. 1453. Where the question of operativeness and the sufficiency of the disclosure of a party to entitle him to an award of priority were, under the practice in force at the time, open for consideration at final hearing. Held, that the failure to make a motion to dissolve was not a waiver of the right to be heard on this question. A party cannot be deprived of his rights by a mere change in the method of procedure in this office. Id. 1454. After decision on priority the defeat- ed party ordinarily has no right to be heard on the question as to the right of the success- ful party to a patent ; but this rule does not apply to a case where a decision is necessary to finally settle the very question raised by the inter partes proceedings. Id. 1455. An inoperative device is not such proof of prior invention as to defeat a sub- sequent application of a patent, and it is im- material whether the proof of that inopera- tive device consists of testimony as to an actual machine or of a defective application. (Stevens et ?.I. v. Seher, C. D. 1897, 761, 81 O. G. 1932.) Id. 1456. Where, according to the court's deci- sion, D.'s application is the only thing in bar of F.'s right to a patent, and that only assum- ing it to be an allowable application. Held, that if it is found not to be a valid and al- lowable application the patent must be grant- ed to F. Id. 1457. To hold D.'s device inoperative and to grant F. a patent would not be a reversal of the decision of the court, since it neither held that D. was entitled to a patent nor that F. was not entitled to a patent. The court's decision is binding only as to the spe- cific matters stated to be before it for deci- sion. (Ex parte French, 91 U. S. 423; Ex parte Potts & Co., C. D. 1897, 342, 78 O. G. 3049.) Id. 1458. Where after the decision of the court of appeals of the District of Columbia a peti- tion was made praying that the award of priority be set aside upon the ground that no interference in fact existed between the claims of the parties. Held, that after an award of priority by the court of appeals in an inter- ference proceeding the commissioner of pat- ents has no power to vacate the court's deci- sion. To do so would be in effect to hold that an inferior tribunal can nullify the deci- sion of a higher tribunal. Ex parte Guilbert, C. D. 1898, 8.-1 O. G. 454. 1459. In an interference proceeding after testimony has been taken thereon and the va- rious tribunals of the patent office and the INTERFERENCE, XXIX. 285 court of appeals of the District of Columbia have passed upon the issue and made an award of priorit}', Held, that it is too late to vacate the proceedings on the ground that no inter- ference in fact exists. Id. 1460. The fact that the case of the success- ful party to the interference has become a part of the prior art will not militate against the grant of claims to the defeated party for sub- ject-matter not covered in the structure of the successful party. The claims of the de- feated party which are embraced or said to be involved in the interference should be con- sidered, and if patentably different from the invention disclosed by the successful party they may be allowed. Id. 1461. Where before an interference was de- clared the party was notified that his applica- tion was otherwise in condition for allowance, Held, that there was no irregularity after the termination of the interference in at once sending the case to issue without notifying the applicant and giving him an opportunity to amend. Ex parte Pierce, C. D. 1901, 97 O. G. 2307. 1462. Where a final decision on priority has been rendered against a party in an interfer- ence and his claims involved have been finally rejected under Rule 132, Held, that he has the right of appeal to the examiners-in-chief from the rejection. Ex parte Schupphaus, C. D. 1902, 100 O. G. 2775. 1463. Where W. is made the senior party to an interference by virtue of a prior applica- tion, which application is held by the exam- iner to disclose the invention of the issue, and the examiner of interferences renders a judgment on the record of priority of inven- tion in favor of W. on the ground that the preliminary statement filed by the junior party failed to overcome the prima facie case made against him by W.'s aforesaid application ; Held, that a motion by the junior party to vacate the judgment on the ground that it was an error to give W. the benefit of the date of his first application on a constructive re- duction to practice does not lie; that if in the opinion of the junior party there was such irregularity in declaring the interference as to preclude a proper determination of the question of priority he should have brought a motion to dissolve the interference on that ground. (Rules 114 and 122.) (Ritter v. Kraukau. ante, 59, 98 O. G. 1798.) Patten v. Wiesenfeld, C. D. 1902, 98 O. G. 2589. 1464. Held, that a final decision on priority in an interference is not a decision that the defeated party is not entitled to a patent upon the claims, although it may furnish a basis for such a decision. Ex parte Schupphause, C. D. 1902, 100 O. G. 2775. 1465. Where a claim which was involved in an interference is rejected by the examiner under the provisions of Rule 132 on the ground that the applicant is not the first in- ventor of the invention defined therein. Held. that such a rejection is to be regarded as a new reason for rejection and that the appli- cant has the right to amend the claim to over- come the rejection. E.x parte Harvey, C. D. lOO.'l, 102 O. G. 621. 1466. .\fter the termination of an interfer- ence the examiner has jurisdiction of an appli- cation involved to consider amendments to the application whether they be filed to over- come the rejection of the claims involved in the issue or to perfect the specification and other claims. Id. 1467. Where a motion under Rule 122 to dissolve an interference is not brought at the proper time, the parties thereto must be con- sidered to have acquiesced in the declaration of the interference, and therefore cannot as a matter of right have the points involved in such a motion considered at final hearing. Freeman v. Garrels and Kimball, C. D. 1903, 102 O. G. 1777. 1468. Where after a record judgment a party brought a motion before the examiner of interferences to transmit a motion to the primary examiner, which motion to transmit was filed within the limit of appeal from the judgment, but was not noticed for hearing until after the expiration of the limit of ap- peal. Held, that the examiner of interferences was without jurisdiction to transmit and his decision to this effect affirmed. Kneedler v. Shephard, C. D. 1903, 104 O. G. 1895. 1469. Held, however, that in view of the circumstances of the case the jurisdiction of the examiner of interferences to entertain the motion to transmit will be restored, especially as under the provisions of present Rule 114 motions to transmit need not be noticed for hearing within the twenty days allowed for filing motions. Id. 1470. Where after judgment against a party and after a motion by him to dissolve has been denied he presents a petition asking that the case be referred to the examiner to con- sider additional references said to anticipate 286 INTERFERENCE, XXIX. the issue, Held, that the petition will be denied. The question as to the patentability of the suc- cessful party's claims is an ex parte matter. Kempshall v. Seiberling, C. D. 1903, 107 O. G. 541. 1471. Where after a decision against the applicant in an interference the examiner re- jects certain claims as not patentable over the issue and requires the applicant to amend or cancel them within a fixed time. Held, that the examiner had no authority to require action within any time less than that fixed by law. Ex parte Hewlett, C. D. 1904, 108 O. G. 1052. 1472. Where after a decision against a party in an interference the examiner rejects the claims under Rule 132, Held, that the appli- cant is entitled to amend. Ex parte Greuter, C. D. 1905, 116 O. G. 596. 1473. The rejection under Rule 132 is to be considered as a rejection in an ex parte case upon a new ground, and applicant is entitled to request a reconsideration and to point out why the rejection is not proper. Ex parte Lyon, C. D. 1906, 124 O. G. 2905. 1474. Where it is contended by one party to an interference that he has a right to urge the unpatentability of the issues to either party at the final hearing under Rule 130 and to take testimony in support thereof, Held, that the contention is erroneous and that this rule permits a party to urge the non-patent- ability of a claim to his opponent as a basis for the decision upon priority of invention only when it is material to his own right to a patent. Dixon and Marsh v. Graves and Whittemore, C. D. 1907, 127 O. G. 1993. 1475. Where the primary examiner refused to dissolve an interference on the ground that the senior party had no right to make the claims, but the examiner of interferences under Rule 130 decided that he had no right to make the claims, Held, that this state of facts was sufficient to excuse delay in bring- ing a motion to amend the issue under the practice announced in Churchward v. Douglas V. Cutter (C. D. 1903, 389, 106 O. G. 2016), es- pecially in view of the recent decisions of the court of appeals in Blackford v. Wilder (ante, 491, 127 O. G. 1255), and Horine v. Wende (ante, 615, 129 O. G. 2858). Becker v. Otis, C. D. 1907, 129 O. G. 1267. 1476. Rule 130 does not confer upon a party the absolute right to contest his opponent's right to a claim, but allows him to do so only when the objections urged against his oppo- nent's right to make the claim do not apply with equal force to his own case. Pym v. Hadaway, C. D. 1907, 131 O. G. 692. 1477. Under Rule 130 where the operative- ness of an opponent's device or his right to make the claim is material to the right of a party to a patent said party may urge the mat- ter at final hearing before the examiner of interferences as a basis for his award of priority ; but as a condition precedent to such right the party must first present the matter upon a motion for dissolution or show good reason why such motion was not made and prosecuted. Barber v. Wood, C. D. 1907, 127 O. G. 1991. 1478. The fact that a party cannot under the provisions of Rule 109 bring a motion to dis- solve as to counts added to the issue of the interference will not of itself prevent him from urging under the provisions of Rule 130 the right of his opponent to make the claims. Josleyn v. Hulse, C. D. 1908, 132 O. G. 679. 1479. The fact that on appeal from a deci- sion on a motion to dissolve the examiners-in- chief have held that a party has a right to m.akc the claims does not prevent the question being raised before the examiner of interfer- ences at final hearing under Rule 130. O'Brien v. Gale v. Zimmer v. Calderwood, C. D. 1908, 133 O. G. 514. 1480. Where a party to an interference does not bring a motion to dissolve on the ground that his opponents have no right to make the claims and no showing is made why such a motion was not brought, he is not entitled to urge the question under the provision of Rule 130 ; but the fact that such a motion was not brought does not prevent the tribunals of the office from considering the question of their own motion when it appears that one or more of the parties have no right to make certain of the claims. Smith v. Foley v. Anderson v. Smith, C. D. 1908, 136 O. G. 847. 1481. A party's right to make a claim in issue in his own application is not a matter that can be properly raised at final hearing under Rule 130. Hewitt and Waterman v. Greenfield, C. D. 1909, 149 O. G. 1119. 1482. A party has no right under the provi- sions of Rule 130 to urge at final hearing the non-patentability of the issue. Perry & Hun- toon v. Busse, C. D. 1911, 163 O. G. 490. 1483. Where a party to an interference op- poses the granting of a motion to amend under Rule 109 on the ground that the moving party has no right to make the proposed claims. Held, that under the provisions of Rule 130 he INTERFERENCE, XXX, (a). 287 can urge this at final hearing. Leonard v. Pardie, C. D. 1911, 164 O. G. 249. 1484. Rule 130 provides a party may urge at final hearing the non-patentability of a claim to his opponent only if he has presented a motion to dissolve the interference upon that ground or shows good reason why such mo- tion was not presented and prosecuted. Held, that "the determination of the question wheth- er or not such reason exists in a given case rests largely in the discretion of the tribunals of the patent office and unless there has been gross abuse of discretion this court will not interfere. *Broadwell v. Long, C. D. 1911, 104 O. G. 25?. 1485. After all the testimony had been taken Broadwell filed a motion to dissolve the in- terference, on the ground that Long had no right to make the claims, and a motion for permission to take testimony to show that the Long device is inoperative. Transmission of the motion to dissolve the interference was refused and the motion to reopen denied, on the ground that the showing made as to fail- ure to bring the motions within the proper time was insufficient. Held "the Commissioner has ruled, and we think properly, that the reasons assigned for the delay were not suf- ficient to warrant the reopening of the case. * * * We conclude, therefore, on this branch of the case, that Broadwell is here estopped to question Long's right to make these claims." *Id. 1486. Where a party seasonably brought a motion to dissolve the interference on the ground that his opponent had no right to make the claims because of laches and estoppel and the existence of intervening rights. Held, that this was sufficiently broad to entitle him to argue at final hearing the sufficiency of his opponent's disclosure to support the issue. *Manly v. Williams, C. D. 1911, 168 O. G. loni. 1487. Appellee's disclosure considered in the light of the treatment of the application by the office and the applicant himself and Held, not to constitute a basis for claims to the invention in issue. *Id. 1488. Where after a decision on priority by the court of appeals of the District of Colum- bia the defeated party files a bill in equity under the provisions of section 491."), Revised Statutes, Held, that the issuance of a patent to the successful party to the interference cannot be suspended pending the final deter- mination of the suit. Mclntyre v. Perry, C. D. 1911, 169 O. G. 943. 1489. Where two applications each of which disclosed several species of the invention were involved in an interference on a broad claim, Held, that the successful party to such inter- ference may after the termination be allowed a claim limited to one of the specific forms. Ex parte Van Yort, C. D. 1911, 170 O. G. 243. XXX. Originality. (a) In General. 1490. Where Winslow relied upon his rec- ord date to prove priority and Austin took testimony and claimed that he disclosed the invention to Winslow before Winslow filed his application. Held, that Winslow's failure to rebut this assertion of Austin's furnished convincing evidence that Austin was the prior inventor. *Winslow v. Austin, C. D. 1899, 86 O. G. 2171. 1491. The fact that Austin took an assign- ment from Licht and Kceney, who were the assignees of Winslow, ought not to be taken as an admission on his part that he in reality and truth had no claim to the invention in- volved in the issue and that the sole and ex- clusive right was in Winslow. *Id. 1492. When the only right which S. had to the continuance of the contest was to deter- mine the question of originality of invention, he will not be permitted to turn the contest off upon some other question, and thus pos- sibly avoid a decision on the only question which he really has the right to contest. Shiels v. Lawrence et al., C. D. 1899, 87 O. G. 180. 1493. Where Pickles made the application drawing for Aglar and put on said drawing Aglar's name as the inventor and made no claim at that time that he was the inventor. Held, that such actions are strongly against his claim to be the inventor, and as his claim to the invention is not supported by any tes- timony except his own he cannot prevail over Aglar, the senior party. *Pickles v. Aglar, C. D. isy9, 86 O. G. 346. 1494. Where the junior party admits that his efl^orts in the field of invention had been superinduced by a knowledge of a different invention by the senior party upon the same lines embodying the germ of the one in con- troversy and the question arises which of them was the inventor. Held, that the presumption is in favor of the senior party. *Scott v. Scott, C. D. 1901, 96 O. G. 16.i0. 288 INTERFERENCE, XXX, (a). 1495. Where the senior party informed the junior party that he had apphed for a patent on the invention and the junior party made no protest and signified neither by word nor by act that the invention was his own, Held, that it was then, if ever, he should have spoken. *Scott V. Scott, C. D. 1901, 96 O. G. 16.50. 1496. The issue of a patent raises a prima facie presumption that the patentee is the first and original inventor; but this presumption is met and overcome by the fact that several years before the date of his application he prepared an application for the same inven- tion for another party and signed it as a wit- ness for that other alleged inventor, d Barr Car Co. V. Chicago & Northwestern Railway Company, C. D. 1901, 97 O. G. 2.').34. 1497. Where the assignee of Howard, who furnished the money for making the machine in 1883, which was afterward dismantled, claims to have subsequently employed another party merely to devise a new feeding device for the machine, but he caused applications for patents covering the entire machine, and not merely the feeding device, to be filed in the name of the second party. Held, that his con- duct was inconsistent with the claim that he regarded Howard as the successful inventor of the machine. Lloyd v. Antisdel, C. D. 1901, 95 O. G. 164.-). 1498. Where it is shown that H. independ- ently built and operated a machine and filed an application for a patent on the same, H. must be presumed to be an original inventor, and it is incumbent upon F., who alleges prior dis- closure to H., to establish his allegation by clear proof. Funk v. Matteson v. Haines, C. D. 1902, 100 O. G. 1563. 1499. When H. is the only party to establish an actual reduction to practice and when the testimony in behalf of F. not only does not support the allegation of F. that the invention was disclosed through his agent to H., but is quite persuasive that the invention disclosed to H. related to another structure, Held, that priority of invention should be awarded to H. Id. 1500. The question of originality when it arises between two parties to the interference must be investigated, because the question of priority is involved in it. It is not the fact of disclosure from one to the other which controls, but the fact of priority. Trufant v. Prindle v. Brown, C. D. 1902, 101 O. G. 1608. 1501. Where two rival inventors admit that the invention of the issue was reduced to practice in the presence of both of them at a certain time in a certain place and that no other person was present at the time and place, Held, that the fact that the invention of the issue was actually reduced to practice must be accepted as established and that the only question for decision is which one of the rival inventors is entitled to the benefit of this reduction to practice. Weber v. Flather, C. D. 1903, 103 O. G. 223. 1502. Where it is established that a reduc- tion to practice grew out of the conception of it by W., even though it may be assumed that this reduction to practice was the direct act of F., Held, that the reduction to practice in- ures to the benefit of W. Id. 1503. When the contesting parties to an in- terference are not independent inventors, working out the same conception separately and unknown to each other, but each claims the conception and reduction to practice of a construction that was set on foot by one to meet a novel condition and was manufac- tured by the other, and the only witnesses are the contesting parties, each of whom tes- tifies in his own behalf, which testimony re- sults in conflict of statement, it is natural and proper to look to the unquestioned facts and circumstances that surround the trans- action, or occurrence, and shed light upon it, to ascertain whether they, and the proper in- ference therefrom, corroborate or contradict one or the other party. For such purposes they are always entitled to more or less weight and sometimes even carry more than do the words of witnesses. Beals v. Finkenbiner, C. D. 1898, 326, 82 O. G. 598, 13 App. D. C. 23, 29, and cases cited. Gallagher v. Hastings, C. D. 1003, 103 O. G. 1165. 1504. Where there was but one person be- sides the parties themselves who had any di- rect knowledge of their respective claims to the conception of the invention — viz., a drafts- man employed by G., who was present at the invention and heard all that occurred — and the testimony shows that this person is still in the employ of G. and could have been called by either party, any unfavorable inference that may arise from the failure to call this witness ought to operate against G. rather than H., for the reason that it is hardly to be presumed that H. had an equal opportunity with G. to know what his recollections of the occurrence might be. It is hardly possible to INTERFERENCE, XXX, (a). 289 believe that G. did not know whose testimony this witness would corroborate if called to testify. *Id. 1505. Where each party claims to have dis- closed the invention to the other and there were constant disputes between them in re- gard to the matter, but it is admitted by one party and his financial backer that the other party suggested many improvements and they permitted him to file an application without protest and actually paid the expenses of it, Held, that he must be regarded as the first inventor. *Whitney v. Howard, C. D. 1903, 104 O. G. 16.59. 1506. Where H. employed W. to build a machine and each party claims to have in- vented the improvements embodied therein and it appears that H. filed his application through the attorneys of W.'s company and the company paid the expenses and W. with a full knowledge of that application made affidavits for use by H. therein referring to the making of the invention. Held, that H. must be regarded as the inventor. *Id. 1507. Where the question at issue is one of originality of invention and the testimony shows that F. was an experienced inventor, that the general type of machine in contro- versy was invented by him, that he made the drawings of the improvements in issue, and that these improvements were constructed under his supervision, whereas D. and D. were inexperienced inventors and yet contend that F. worked under their directions. Held. that there arises a strong presumption that F. is the inventor. Fenwick v. Dixon and Dixon, C. D. 1903, 107 O. G. 1373. 1508. In the absence of clear and convinc- ing testimony to the contrary the presumption in favor of F. must prevail, and judgment is accordingly rendered in his behalf. Id. 1509. Where there is evidence that one party to the interference, T., disclosed the in- vention to another party. C, and because of insufficient evidence T. failed to establish a conception prior to that established by C, Held, that newly-discovered evidence tending to show that T. conceived before the alleged date of disclosure to C. becomes material to the case. Robinson v. Townsend v. Copeland, C. D. 1903, 107 O. G. 1376. 1510. Held, that Sendelbach was the orig- inal and first inventor of the subject-matter in controversy and that the patent was prop- erly issued to him. *Sendelbach v. Gillette, C. D. 1904, 109 O. G. 276. 19 1511. Where Gillette claims to have dis- closed the invention to Sendelbach, but it does not appear that the disclosure was of such special character as to the combination of parts as to have enabled a mechanic of ordi- nary ingenuity and skill in that particular trade or calling to have constructed and put the improvement in successful operation. Held, that Sendelbach must be regarded as an independent inventor. *Id. 1512. Where a party claims to have con- ceived the invention and disclosed it to an- other, who reduced it to practice, the dis- closure in order to be effectual must be shown to have been fully and clear as to all the essential elements of the invention and such as was sufficient in itself to enable the party to whom the disclosure was made to give the invention practical form and effect without the e.xercise of invention on his part. *Id. 1513. An inventor cannot be deprived of the right to his invention where he has used due diligence in the assertion of his right ex- cept by express contract or by a course of conduct that fairly gives rise to an implica- tion of an intention to part with or dispose of the right, and a presumption to that effect is not lightly to be made. *Id. 1514. Held, upon a consideration of the evidence that Russell was the original and first inventor of the device in controversy, and therefore the decision must be in his favor. Russell v. Asencio, C. D. 1904, 109 O. G. 160.-. 1515. .Asencio's assignee and principal wit- ness claims that Asencio disclosed the inven- tion to him, but it appears that he did not re- duce it to practice or file an application until after he heard of Russell's work upon the same lines and until after Russell, with his financial assistance, had made and tested the device and, with his consent, had filed an ap- plication which was assigned to .A.scncio, Held. that Russell must be regarded as the inventor. Id. 1516. Where Asencio's assignee was the one who furnished the money for Russell's ex- periments and paid for Russell's application for patent, but refused to pay the final fee and let the application become forfeited and then induced .■\sencio to file an application for and secure a patent upon the same inven- tion, while Russell's case was forfeited. Held, that the burden of proof is upon Asencio to show that he was the first inventor. (Christ- 290 INTERI-ERENCH, XXX, (a). enson v. Noyes, C. D. 1900, 212, 90 O. G. 227, distinguished.) Id. 1517. Held, that the evidence shows that Greenwood disclosed the invention to Dover and fails to show that Dover had a concep- tion of it before the date of conception proved by Greenwood and that therefore Greenwood must be regarded as the first inventor. ♦Greenwood v. Dover, C. D. 1904, 109 O. G. 2172. 1518. Held, that P. cannot be adjudged the prior inventor as against B., who was first to file his application and who actually reduced the invention to practice before P. conceived it. The allegation that B. is not an original inventor does not assist P.'s claim. Trufant V. Prindle v. Brown, C. D. 1904, 111 O. G. 1035. 1519. Held, that the evidence is insufficient to show that Brown derived his knowledge of the invention from Trufant, and therefore Brown is to be regarded as an original inven- tor. Id. 1520. Where both parties were working for the same company and each party claims to have disclosed the invention to the other, but where it is admitted by the president of the company, who is the financial backer of one of the parties, that the other contestant was hired for the purpose of making such inven- tions, Held, the presumption is that the inven- tion was made by the person hired for that purpose. Murphy v. Meissner, C. D. 1904, 367, 112 O. G. 249. 1521. Where the testimony is conflicting, but it is acknowledged by the president of the company that he instructed one of the con- testants, who was employed to make such in- ventions, to file an application through the attorneys \ employed by the company, and where such application was actually prepared and filed in the patent office. Held, that the party who executed such application must be regarded as the first inventor. Id. 1522. Where such first applicant's inventor- ship was not questioned until a disagreement between the president of the company and the applicant as to the ownership of the in- vention, resulting, under direction of the president, in another application being filed for the same invention by another employee of the company, Held, that the first applicant must be regarded as the true inventor. Id. 1523. Where Asencio secured his patent while Russell's application was forfeited, but that forfeiture was due to the fault of Asen- cio's agent, and it appears from the evidence that Russell was the first to conceive the in- vention and took part in the single reduction to practice claimed by both parties. Held, that Russell is the first inventor. *Asencio v. Rus- sell. C. D. 1904, 112 O. G. 955. 1524. Where A., who was not skilled in the art, claims to have conceived the invention in feeding pulverized fuel in 1896, and to have then disclosed it to his agent, N., who was at- tempting to make improvements in that art, but they made no progress toward reducing it to practice until they met R., who was an expert in the art, claiming prior conception of the invention, and who proceeded to re- duce it to practice, and the evidence indicates that R. furnished the ideas and N. the money. Held, that R. is the real inventor. *Id. 1525. Where M. fails to establish that he had a conception of the invention in issue before meeting D. and they both claim to have disclosed the invention to the other by having a tool changed to embody the issue and the witnesses called to corroborate M. in the man corroborate D. and his witnesses, Held, that M. has not sustained the burden of proof and that D. is the original inventor. Mitchell V. Dinsmore, C. D. 1904, 113 O. G. 279. 1526. Where A. claims to have conceived, disclosed, made drawings, and reduced the in- vention to practice between September 12 and September 24, the date of the interview with B., and several witnesses corroborate him, but in some instances there are circum- stances tending to show that these witnesses are mistaken and in others the surrounding circumstances are suspicious and the means relied upon for fixing the date discredited. Held, that B., who claims that he disclosed the invention to A. at the interview on Sep- tember 24, and whose testimony is not im- peached, is the original inventor. Blackman V. .Mexander, C. D. 1904, 113 O. G. 1703. 1527. Where C. alleges a conception of the invention in February, 1901, and it appears that C. was an employee of K. prior to that date and the testimony shows that he was present while the work was going on under the supervision of K. with respect to the in- vention of the issue, and that he had an op- portunity of seeing and observing the work, and. in fact, did see and observe the work, and C. does not deny these facts, Held, that they must be regarded as established, and C. is therefore not an original inventor of the INTERFEREN'CE, XXX, (a). 291 issue. Kyle v. Corner, C. D. inof, 113 O. G. 2216. 1528. Where it is established beyond ques- tinn that B. had working drawings and a model made of the invention and that H. saw them and understood their construction and operation and said nothing about any pre- vious conception or disclosure of it by him- self, notwithstanding the fact that both parties were at the time in the employ of the same company, which was engaged in the manufac- ture of similar devices and whose superintend- ent solicited suggestions from its employees for improved constructions, and H. persisted for more than a year in the same silence after seeing the invention as disclosed by B. and did not even seek within that time to protect himself by an application for a patent. Held, that H.'s conduct was antagonistic to his claim of invention and was not consistent with the existence of a right on his part which he was desirous to protect. *Harter v. Bar- rett, C. D. 1905, 114 O. G. 975. 1529. Where the case is one of originality as distinguished from priority of invention and it appears that the junior party filed his application only because the senior party re- fused to assign his invention to the company which employed him, and the senior party's application was filed at the solicitation of said company. Held, that these circumstances show quite conclusively that the senior party is the inventor. *Murphy v. Meissner, 114 O. G. 1830. 1530. Where the applicant Cherney proves that he made patterns embodying certain counts of the issue before any date proved by Clauss, and Clauss asserts that they were made from disclosures by him, but this is denied by Cherney, Held, that Cherney must be regarded as the inventor of these counts. The burden was on Clauss to prove the dis- closure, and he failed to sustain it. *Cherney V. Clauss, C. D. 1905, 116 O. G. 597. 1531. Where T. made a machine at H.'s request which when completed embodied the invention in issue and each party claims to have suggested the improvements, and where there is evidence of conception by H. before T. was employed and no evidence of concep- tion by T., and after making the machine T. delayed his application for patent for nine months, although he knew of H.'s applica- tion. Held, that H. is the real inventor. Thi- bodcau V. Hildreth, C. D. 1905, 116 O. G. 1183. 1532. Held, that D. was the original inven- tor of the subject-matter in controversy and that H. derived his knowledge of it from a communication by D.'s company to H.'s com- pany. Doble V. Henry, C. D. 1905, 118 O. G. 2249. 1533. Where it appears that W. was a pro- fessional inventor of machinery of the class in issue when he claims to have made the invention in issue, that the G. and L. Company was making patented machinery of W.'s in- vention at that time, that C. first appears with the invention after W. had terminated his contract with the company, and that C, then president of the company, desired a machine avoiding W.'s patents, Held, that these facts lend support to the contention of W. that the invention was derived by C. from W. Wilkin V. Cleveland, C. D. 1905, 118 O. G. 2533. 1534. Where the party to an interference proceeding who is the first to reduce an in- vention to practice is shown to have received his knowledge of the invention from the other party, who is the first to conceive of the invention. Held, that the reduction to practice of the invention in- ured to the benefit of the one who was the lirst to conceive. Weyant v. Brown v. Sitt- mann. C. D. 1905, 118 O. G. 587. 1535. Where the claim is made that an in- vention was disclosed by one party to another, who afterwards is alleged to have threatened to appropriate the invention to his own use, and it appears after the threat was alleged to have been made that neither party promptly took active steps toward reducing the inven- tion to practice, Held, that such delay is not in accordance with the laws which govern ordinary human conduct, and the claim of misappropriation of the invention is not proved. Id. 153G. Held, that although the conclusion to be drawn from the fact that R. did not file his application until after K.'s failure to assign his patent to the company (assignee of R.'s application) is unfavorable to R., the presump- tion against K. from his failure to deny the charges of R. is of greater weight, and that even if K. was not the inventor it was for the interest of the company to acquire an assign- ment of K.'s patent in order to avoid possible litigation. Royce v. Kempshall. C. D. 1906, 125 O. G. 1347. 1537. Evidence considered and Held, insuffi- cient to clearly prove that the invention of the issue originated with French rather than Hal- 292 INTERFERENCE, XXX, (a). comb. *French v. Halcomb, C. D. 1906, 120 O. G. 1824. 1538. Where a party contended that he com- municated the invention to his opponent, but did not claim to have made complete disclo- sure, and the circumstances did not support the theory of derivation, Held, that the rule of Winslow V. Austin (C. D. 1899, 301, 86 O. G. 2171, 14 App. D. C. 137) that the fail- ure of a party to relnit the sworn statement of his adversary that he had fully disclosed the invention to him furnished strong evi- dence that the latter was not the prior inven- tor did not apply. *Podlesak and Podlesak V. McTnnerney. C. D. 1906, 120 O. G. 2127. 1539. Held, that the commissioner of patents having found there was an interference in fact and that McTnnerney had the right to make the claim could come to no other conclu- sion upon the proofs and the law applicable thereto than the one he did, and consequently his award of priority is correct if the remain- ing questions be decided in Mclnnerney's favor. *Id. 1540. As between two parties each claiming disclosure of the invention to the other, where one of such parties has a practical knowledge of the art and the other has not there is a strong presumption in favor of the one having such practical knowledge. ♦Alex- ander V. Blackman, C. D. 1906, 121 O. G. 1979. 1541. Where the evidence shows that H. is not an original inventor. Held, that the ques- tion of the diligence of D. is immaterial. ♦Henry v. Doble, C. D. 1906, 122 O. G. 1398. 1542. Where plans and specifications sub- mitted to the construction company with which H. was connected disclosed the inven- tion and H. prepared a proposal to meet said requirements, Held, that H. is not an original inventor. *Id. 1543. If there could be any doubt that the invention of the issue was disclosed by cer- tain specifications to the perception of H., who undertook the preparation of a proposal to meet their requirements, it is removed by his own admission under examination as a witness that they suggest the subject-matter of the interference. *Id. 1544. Upon the question of originality of invention the surrounding circumstances and the conduct of the parties at the time are more convincing as evidence than specific claims made by them long afterward, and it is essential in weighing the specific testimony to have in mind the relations of the parties to each other and to the principal facts proved or admitted in the development of the inter- ference. Larkin v. Richardson, C. D. 1906, 122 O. G. 2390. 1545. When a party claims an invention and also to have communicated that invention to another, who has applied mechanical work thereto, and put such invention into practice, claiming the same as his own, the communi- cation in order to be effectual must be shown to have been full and clear as to all the essen- tial elements of the invention and such as was sufficient in itself to enable the party to whom the disclosure was made to give the invention practical form and effect without the exercise of invention on his part. ♦Ander- son V. Wells, C. D. 1906, 122 O. G. 3014. 1546. Held, that upon examination of the evidence and aside from the weight attached to the unanimous decisions of the patent of- fice tribunals there is no doubt but that Wilkin was the real inventor and that Cleveland ob- tained his knowledge of the invention from Newton's drawing made after Wilkin's orig- inal sketch. ♦Cleveland v. Wilkin, C. D. 1906, 123 O. G. 1286. 1547. Held, that wherever there is a con- flict between the witnesses surrounding and well-established circumstances of great weight support those who testified on behalf of Wil- kin. ♦Id. 1548. Where S. obtained patents before B.'s applications were filed, but credible and competent witnesses testify to disclosure of the invention to them by B. before the date of conception claimed by S. and to disclosure by B. to the brother-in-law and business asso- ciate of S. before that date and circumstances support the conclusion that B. and not S. is the inventor and the delay of B. in applying for patents and his failure to reduce to prac- tice are satisfactorily explained, Held, that S. derived the invention from B. *Shuman v. Bcall. Jr., C. D. 1906, 123 O. G. 1664. 1549. Where B. conceived the invention and S. appropriated B.'s conception and reduced the same to practice and took out patents upon the same as his own invention, Held, that the work of S. upon the invention inured to the benefit of B. ♦Id. 1550. Reduction to practice by S. in the course of work for the company employing B. under circumstances which naturally led B. to suppose the reduction was recognized as that of his own invention satisfactorily ac- INTERFERENCE, XXX, (a). 293 counts for B.'s long inaction and other con- duct tending to bear against the justice of his claim for patents. *ld. 1551. Where it is contended by K. that he suggested the invention in issue to K., but K. denies that R. made suggestions to him rela- tive to the structure of the stopper in issue except as to the narrow slot, and it is shown by K. that he had in his possession prior to his conversation with R. a patent to one Harris showing a similar slot. Held, that it is of little consequence whether K. obtained a suggestion as to the form of the slot from R. or from the Harris patent, as this feature is only one element of the structure embodied in the combination defined by the issue. Kirke- gaard and Jebsen v. Ries, C. D. 1906, 125 O. G. 1700. 1552. Where B. claims conception of the in- vention and disclosure to an associate of S. prior to S.'s alleged date of conception and is corroborated as to both matters by credible witnesses and the associate is discredited by his denial that the invention was so disclosed to him and the weight of circumstances is in favor of derivation by S. from B. through the associate. Held, that the testimony of S. and the associate to independent invention by S. and the inference unfavorable to B. from inactivity in connection with the invention are overcome and that B. is entitled to an award of priority of invention. Beall v. Shu- man, C. D. 1906, 120 O. G. 635. 1553. Held, that the mere appearance of two parties with the same invention identical in many novel and distinct details raises some suspicion of derivation by one from the other, and where one of these parties is proved to have been in possession of the invention prior to any date of possession proved by the other party and it is shown that opportunity for derivation by the later party from the earlier party occurred prior to such proved date of possession by the latter party the suspicion of derivation, in the absence of s£ O. G. 1645. 1585. Where a party prepares an application for patent and drawings for another party as inventor and signs them as a witness and makes no claim at that time that he is the inventor and asserts no such claim until three years thereafter, when he files an application. Held, that no credit can be given to his claim, judging the case in the light of the usual con- duct of men. d Barr Car Co. v. Chicago & Northwestern Railway Company, C. D. 1901, 97 O. G. 2.i34. 1586. Where an alleged inventor was em- ployed by a company and failed to assert claim to the invention in the face of claims by a superior officer to the same invention and al- leges as an excuse a fear that he would lose his employment, Held, that this is not a valid excuse for his silence in the absence of active compulsion by the superior, d Id. 1587. Where it is shown that T. construct- ed the first machine embodying the invention and delivered it to K. when finished and it is alleged on behalf of K. that T. was merely employed to embody K.'s idea and the evi- dence shows that K. had a conception of the invention before T.'s alleged date of concep- tion. Held, that K. is the prior inventor. The decision of the commissioner of patents af- firmed. *Tyler v. Kelch, C. D. 1902, 98 0. G. 1282. 1588. The rule is that one who by way of partnership or contract, or in any other, em- powers another person to make experiments upon his own conception for the purpose of perfecting it in its details is entitled to the ownership of such improvements in the con- ception as may be suggested by such other person. The second person is not in law to be regarded as an independent and original inventor. *Gedge v. Cromwell, C. D. 1902, 98 O. G. 1486. 1589. Where C.'s company by contract agreed to make improvements upon G.'s pat- ented reel, Held, that it was incumbent upon C. to show beyond a reasonable doubt that what he did was his own invention and not that of G. *Id. 1590. Where C.'s company agreed to im- prove G."s reels and it appears that G. made disclosures to one member of C.'s company. Held, that it was not necessary to show dis- closure to C. in person, since he was charge- able with the notice to his firm. *Id. 1591. Where G. had a patent upon wire- reels, granted in 1891, and in 1897 C. by con- tract undertook in subordination to G. and for the benefit of his invention to make im- provements upon that reel and perfect its de- tails, the profits to be equally divided between them. Held, that whatever improvements were made are to be regarded as the invention of G. (.\gawam v. Jordan, 7 Wall. 583; Milton v. Kingsley, C. D. 1896, 420, 75 O. G. 2193, 7 App. D. C. 531.) Id. 1592. When one who has conceived the prin- ciple or plan of an invention employs another to perfect the details and to realize his con- ception and the employee devises new and valuable improvements in the original con- ception or invention, the improvements belong to the employer and not to the employee, (.^gawam Company v. Jordan, 7 Wall. 583, r.02; Milton V. Kingsley, C. D. 1890, 420, 75 O. G. 2193.) Hastings v. Gallagher, C. D. 1903, 103 O. G. 425. 1593. It is not necessary for the employer to disclose every specific feature of the issue to the employee. In order to be entitled to an award of priority, the employer need only disclose to the employee the general principle of the invention — the broad idea — and engage him to "perfect the details" and to "realize his conception." Id. 1594. Where the employee claims that the reduction to practice which was realized on the conception of the employer contains cer- tain new improvements which were devised by the employee. Held, that even admitting that fact, the improvements "belong to the employer and not to the employee." (Milton V. Kingsley, supra.) The exceedingly liberal policy of the patent office in the allowance of independent patents for minute improvements is not to be regarded as contravening this rule. Gedge v. Cromwell, C. D. 1902, 514, 98 O. G. 1486. Id. 1595. Where H. disclosed the idea of a bol- ster with recesses for sills to G. and employed him to construct one of that kind, the rela- INTERFERENCE, XXX, (b). 297 tion of employer and employee, to which the law attaches certain consequences, was estab- Hshed between them. These consequences are that if the employee makes a mere improve- ment on the general idea in the course of reducing the invention to practice it belongs to the employer and not to the employee. Id. 1596. Where the relation of employer and employee is established between two contest- ing parties to an interference, the principle controlling that relation imposed upon the employee, at least, the burden of showing that the employment was not to give practical form to a conception of his employer, but merely to provide means to answer a general purpose, and that in so doing he had an inde- pendent conception of the way to accomplish that purpose. Id. 1597. Where it is established that H. em- ployed G. to work out an invention the gen- eral features of which were disclosed by H. to G., Held, that the reduction to practice by G. inures to the benefit of H. and H. is en- titled to the award of priority of invention. Id. 1598. Where it is conceded that W. was the mover and instigator of the whole effort to produce the invention, that all experiments made after F. became interested were in the presence and with the co-operation of W., and that the experiments were made in W.'s shed with no other witness present to say what was done, Held, that W. must be regarded as the inventor. *Flather v. Weber, C. D. 1903, 104 O. G. 312. 1599. Where W. signed the application of F. as a witness, but it appears from the evidence that it was through a misunderstanding and upon the supposition that the application was for their joint benefit, Held, that the circum- stance cannot be construed against W.'s claim as inventor and in favor of F. *Id. 1600. The weight of the testimony of the parties and its inherent probabilities must be considered in the light of all the circumstances of the case, and though conflict may exist a rational conclusion may be drawn from what appears to be the real transaction as disclosed by the surrounding circumstances — such cir- cumstances as lend support to the credibility of one of the parties as opposed to that of another. *Id. 1601. Where it is admitted by both parties that the invention was reduced to practice in the presence of both of them and the only dispute between the parties is as to which one is entitled to the benefit of this reduction, Held, that the fact that the invention was re- duced to practice may be taken as established. *Id. 1602. Where the device embodying the in- vention in controversy was made by W. upon the order of H. and it is admitted that H. was familiar with the subject and suggested all sorts of alterations. Held, that H. must regarded as the inventor in the absence of con- vincing evidence that W. was the real inven- tor. Whitney v. Howard v. Stanley and Stanley, C. D. 1903, 104 O. G. 1391. 1603. Where W. and H. working together made the invention and there is a conflict of testimony as to who was the originator, but it appears that W. permitted H. to file an application in his own name without protest and executed an affidavit to be used by H. in that case and did not file his own application until si.x months later. Held, that H. is the first inventor. Id. 1604. Whatever equitable interest B. may have in the W. invention is not a question to be decided upon an appeal on priority unless the relation of employer and employee be established in the perfecting of the invention. In such cases it must satisfactorily appear that the employer disclosed the invention to the employee and that the employee merely per- fected the same on the lines of the original disclosure to him. Bowler v. Wilcox, C. D. 1903, lUG O. G. 993. 1605. Where the testimony clearly shows that R. was the first to conceive of an arti- cle of manufacture and subsequently consulted with G., a mechanical expert, to inquire of G. whether a machine could be built to make that invention, and G., at R.'s request, suc- ceeded in constructing a mechanism to per- form that work. Held, that the resulting re- duction to practice of the article of manufac- ture inures to the benefit of R., and R. is therefore the prior inventor of said article of manufacture. Granger v. Richardson, C. D. 1901. 110 O. G. 1724. 1606. When there is a conflict of testimony between the contesting inventors and all the surrounding circumstances point plainly to the fact that R. was the first, if not the only, conceiver of the invention and all that G. did in connection with the same grew out of and was dependent upon R.'s disclosure to him. Held, that R. is the prior inventor. Id. 1607. Where Jackson and Summerfield en- tered into an agreement under which Jackson 298 INTERFERENCE, XXX, (b). was to make improvements in cotton-pickers and Summcrfield was to bear the expense, the parties sharing equally in the profits, and it appears that Jackson did design a machine, but that Summerfield suggested an improve- ment in one element of that machine. Held, that Jackson is to be regarded as the first in- ventor of the issue, although it includes the element suggested by Summerfield. Jackson V. Summerfield, C. D. 1904, 112 O. G. 1212. 1608. Where a party has conceived the prin- ciple or plan of an invention and is working under a contract with another person to per- fect it for the benefit of both and that other person suggests an improvement ancillary to the plan and preconceived design, Held, that the first person is entitled to claim the device, including the improvement, and is entitled to the patent. Id. 1609. Where W. and S. made the invention while employed by a company in a position where Schroeder was their superior officer, but it does not appear that Schroeder disclosed the invention to them or employed them to work out any preconceived design made by him. Held, that W. and S. are to be regarded as original inventors. Schroeder v. Wageley and Stocke, C. D. 1905, 118 O. G. 268. 1610. To establish the relation of employer and employee which will entitle the employer to claim the benefit of improvements made by the employee, it must be shown that the em- ployment relates to the subject-matter of the invention involving an agreement to perfect a preconceived design of the employer re- lating to that invention. The mere employ- ment of a workman does not entitle the em- ployer to claim all inventions made by him. Id. 1611. Where the evidence clearly shows that O. was engaged as a mechanic by McD. to construct a device w'hich had been conceived by McD. and a feature auxiliary to the main invention is placed upon the machine during the construction of the same. Held, that the relation of employer and employee is estab- lished and the entire invention belongs to the employer and a patent should be granted to him. Orcutt v. McDonald and McDonald, C. D. lOO.'i, 118 O. G. 591. 1612. Where the employee delayed in filing his application for some fourteen months after the employer filed his application and after he had failed to obtain from the employer money which he demanded of him, which de- mand was made not because he claimed to be the inventor, but merely for work done as a mechanic. Held, that such actions do not tend to support the employee in his claims as an inventor of the invention of the issue. Id. 1613. Where employee improved patented device of employer, but the improvement of that specific device was not contemplated as part of the employee's duty and no suggestion of such improvement was made by the em- ployer. Held, that the employee and not the employer is the inventor of the improvements. Peckham v. Price, C. D. 1905, 118 O. G. 1934. 1614. The doctrine by which the creations of one party are patented as the inventions of another party on account of certain rela- tions existing between the parties when the in- vention was made is an exception to a rule of the patent law of this country, otherwise strictly enforced, namely, the creator of the specific art or instrument to be patented is alone to be considered the inventor thereof and that it is only to him or his representatives or assigns that a valid patent can be issued. Id. 1615. The unexplained failure of the em- ployer to take the stand necessitates inferences in favor of the employee's claim to independ- ent inventorship. Id. 1616. Where the record clearly shows that H. not only exercised rigid and careful super- vision of the work performed by F., but also gave many specific directions to F. as to what he should do in making tests, and it is apparent that F. did little more than carry out the suggestions and make reports of the re- sults of the tests to H., and that H. was the president of the company of which F. was the chemist. Held, that the relation of employ- er and employee existed between H. and F., and though the invention of the issue was actually reduced to practice it was the result of a general disclosure of the invention by H. to F., and that all F. did after the dis- closure to him by H. is what might have been expected from any person skilled in the art who was employed for the purpose of com- pleting a general conception, and that priority of invention should be awarded to H. French V. Halcomb, C. D. 1905, 115 O. G. 506. 1617. Where it is admitted by F. that H. furnished him with all mixes and made sug- gestions and exercised rigid oversight over all his work, with the sole exception of the single specific invention of the issue, and H. obtains a patent before F. files his application, which was only done after the knowledge INTERFERENCE, XXX, (b). 299 came to him of H.'s patent. Held, that the presumption is raised that H. also disclosed the invention of the issue to F. Id. 1618. Where F. testifies to a certain dis- closure to H. and H. does not deny the fact of this alleged disclosure, Held, the absence of this denial can have no effect upon the cir- cumstances of the case, since the alleged dis- closure, even if true, is not a disclosure of the invention of the issue, but a mere disclosure of something that was already well known by experts in that art. Id. 1619. Held, that Corry and Barker, who built a device under the directions of McDer- mott, have not sustained the burden of prov- ing that the device embodied an independent invention made by them and not disclosed by McDermott. Decision in favor of McDermott affirmed. *Corry et al. v. McDermott, C. D. ]90.->, 117 O. G. 279. 1620. Where Corry and Barker were not only the junior parties, but admittedly em- ployed by McDermott to construct a machine embodying an invention made by him, Held, that the burden is upon them to prove that the improvements embodied by them in the machine Were their own invention and not the ideas suggested by McDermott *Id. 1621. Where Thibodeau was employed by Hildreth and was admittedly instructed to improve a particular machine and each party claims the machine made as his invention. Held, that the decision must be in favor of Hildreth in the absence of any satisfactory evidence as to who suggested the improve- ments, particularly since Thibodeau allowed Hildreth to make application without protest. ♦Thibodeau v. Hildreth, C. D. 190:,, 117 O. G. 6111. 1622. When the employer instructed the employee to stamp the article "Patent applied for," which he did without protest. Held, that it was then, if at all, that the employee would naturally be expected to assert his claim of invention, and his failure to do so raises a strong presumption that the employer was the real inventor and that the present claim of the employee is a mere afterthought. Larkin V. Richardson, C. D. 1906, 122 O. G. 2390. 1623. Where R. suggested the main and predominating structural features of the in- vention and all that remained to be supplied were the details of the fastening means. Held. that these details, if they called for anything more than the skill of the mechanic, are clear- ly merely ancillary features, brought about by the suggestion of the general plan or main structural features, and even in the absence of specific proof that they were suggested by R. they are to be regarded as his invention. Id. 1624. Where the evidence is silent as to who suggested the specific details, the presumption is that the inventor of the broad idea also suggested the details. Id. 1625. One who conceives the plan of an in- vention and is engaged in experiments to perfect it and who employs another to realize his conception is not to be deprived of the exclusive property in the perfected improve- ment by any suggestions of the employee which do not amount in themselves to a com- plete invention. The suggested features are to be regarded as ancillary to the main in- vention and belong to the employer. *Orcutt V. McDonald, Jr., and McDonald, C. D. 190C, 123 O. G. 1287. 1626. When one conceives the principle or plan of an invention and employs another to perfect the details and realize his conception, though the latter may make valuable improve- ments therein, such improved result belongs to the employer. *Kreag v. Geen, C. D. 1907, 127 O. G. 1581. 1627. Where a person has discovered an improved principle in a manufacture and em- ploys others in assisting him to carry out that principle, and these in that employment make valuable additions to the preconceived design of the employer, such suggested improve- ments are in general to be regarded as the property of the party who discovered the original improved principle and may be em- bodied in his patent as part of his invention. (See Agawam Co. v. Jordan, 7 Wall. r.S:!, 602; Gedge v. Cromwell, C. D. 1903, .514, 9.S O. G. 1480, 19 .\pp. D. C. 198; Milton v. Kingsley, C. D. 1896, 42G, 75 O. G. 2195, 7 App. D. C. 537.) *Larkin v. Richardson, C. D. 1907, 127 O. G. 2394. 1628. Inventors are often compelled to have their conceptions embodied in construc- tion by skilled mechanics and manufacturers, whose practical knowledge often enables them to suggest and make valuable improvements in simplifying and perfecting machines or de- vices, and the inventor is entitled to protec- tion from their efforts to claim his inven- tion. At the same time an employee is to be protected from the rapacity of his employer also, and if in doing the work assigned him the employee goes farther than mechanical skill enables him to do and makes an actual 300 INTERFERENCE, XXX, (b). invention he is equally entitled to the benefit of his invention. *Robinson v, McCormick, C. D. 1907, 128 O. G. :!28'J. 1629. Where an employee claims protection for an improvement wliich he devised while working ii|)on a general conception of his em- ployer, the burden is generally upon him to show that he made an invention in fact. *Id. 1630. To claim the benefit of the employee's skill and achievement, it is not sufficient that the employer had in mind a desired result and employed one to devise means for its ac- complishment. He must show that he had an idea of the means to accomplish the par- ticular result, which he communicated to the employee in such detail as to enable the latter to embody the same in some practical form. *Id. 1631. Where an employee was assigned to the duty of producing a new telephone trans- mitter and during the time he was experiment- ing on such devices constructed six or seven different transmitters, but did not construct any embodying the invention in issue, the pre- sumption is strong that he did not construct such device because he was not possessed of the inventive idea. *Hansen v. Dean, C. D. 10(17, 129 O. G. 48.3. 1632. Where an employee is assigned to the duty of producing a new telephone trans- mitter, but after experiments to this end fails to produce an acceptable device and is assigned to the work of testing electrical instruments and while so employed he tests a transmitter invented by a coemployee containing the in- vention in issue and continues in his employ- ment for several months thereafter without making claim to the one who had charge of the experimental work and who assigned him to such work that the invention was his, al- though the claim was made to others, and fails to construct a device or file an applica- tion until after he had left his employer and about seven months after he had tested the invention claimed by his coemployee, a claim that he invented the device during his experi- mental work can be given little weight. *Id. 1633. Where an invention is reduced to practice by B. while working as an assistant of H. and in pursuance of a general plan ar- ranged by H. and his associate officers with a view to the attainment of the result actually accomplished by such invention, the presump- tion is that the reduction to practice is a re- sult of H.'s disclosures to B., and in order for the latter to prevail on the question of priority he must affirmatively show that he was an independent inventor. Braunstein v. Holmes, C. D. 1907, lliU O. G. 2;!71. 1634. It is well settled that in the relation of employer and employee where the employer conceived the principle or plan of an inven- tion and the employee is directed to perfect the details, though the employee may make valuable improvements thereon, the improved result belongs to the employer. The same rule of law applies to principal and assistant, though they may be fellow employees. ♦Braun- stein V. Holmes, C. D. 1908, 13:! O. G. 19:!7. 1635. B. was assigned to assist H. in mak- ing investigation and actually did the work which resulted in reducing the invention to practice. Held, that the presumption is that what he accomplished was done under H.'s direction, and the burden is on him to over- come that presumption. *Id. 1636. It is well settled that if one conveys to his employees information and instructions to proceed and manufacture a piece of me- chanism which, with the instruction imparted, can be constructed by the application of ordi- nary mechanical skill, such employer is enti- tled to the benefit of the skill and ingenuity of the employee in successfully completing the device. (Sparkman v. Higgins, 1 Blatchf. 206; Yoder v. Mills, C. D. 1886, 115, 34 O. G. 1048, 25 Fed. Rep. 821 ; Huebel v. Bernard, C. D. 1900, 22;j, 90 O. G. 751, 15 App. D. C. 510; Agawam v. Jordan, 7 Wall. 583.) *Neth and Tamplin v. Ohmer, and Ohmer v. Ohmer, C. D. 1908, 135 O. G. 662. 1637. Where the question is one of orig- inality and the relation of employer and em- ployee exists between the parties, the fact that the junior party, who was the employee, did not file his application till nearly a year after he knew of the issuance of the senior party's patent and has given no excuse for such delay justifies resolving any doubt as to who was the originator of the invention against him. *McKillop, V. Fetzer, C. D. 1908, 136 O. G. 1770. 1638. Evidence considered and Held, to show that B. originated the invention and that no such relation of employer and employee was shown to exist as would cause the inven- tion to inure to the benefit of G. Gould v. Barnard. C. D. 1908, 132 O. G. 1071. 1639. R. was a manufacturer of artificial limbs and a prolific inventor in that art. M. at the time he entered R.'s employ was not a mechanic nor skilled in the art, and though INTERFERENCE, XXXI, (a). 301 lie claimed to have conceived the invention while in R.'s employ made no disclosure of it to any one, but within a month from the time he entered the employ of a rival manu- facturer made a full-sized device. These facts, together with the fact that M. was ad- mittedly familiar with the improvements got- ten up l)y K., Held, sufficient to show, as testi- fied by R., that he disclosed the invention in issue to M. *Martin v. Rowley, C. D. 1000, 146 O. G. 722. 1640. It is a well-established principle of the patent law that where an inventor em- ploys another to embody his conception in practical form he is entitled to any improve- ment therein due to the mechanical skill of the employee; but if the latter goes farther than mechanical skill enables him to do and makes an actual invention he is entitled to the benefit thereof. *McKeen, Jr. v. Jerdone, Jr., C. D. 1910, 153 O. G. 272. 1641. The principle is well settled that if one employed to carry out an invention by another of a machine, manufacture, or com- position of matter makes valuable discover- ies ancillary to the plan and preconceived de- sign of the employer such discoveries inure to the benefit of the employer, and the prin- ciple applies to the case of principal and as- sistant engaged in the work of a common em- ployer. *Ladoff V. Dempster, Dempster v. Ladnff, C. D. 1911, 166 O. G. .511. 1642. D. was employed to improve upon the magnetite electrode of S. He made several different combinations of material, one of which contained three to twelve per cent, of titanium oxid. L. was employed to assist D. and mixed, fired, and tested the pencils ac- cording to his directions, but was not called upon to advise or assist him in any other way. While doing the work L. conceived the idea of an entire or substantially entire reduction of the oxids to iron. Held, that this did not inure to the benefit of D., since it was not a mere mechanical improvement of the thing L. was employed to perfect. *Id. 1643. M. organized a company for the pur- pose of manufacturing a gasolene-truck in which was to be used a transmission device designed by M. B. was employed by M. as a draftsman and while so employed improved the transmission device used by M. Held. that the relation of employer and employee in the sense in which that term is used in the patent law did not exist between M. and B., since B. was not employed to assist M. in any capacity except that of draftsman and since the transmission device designed by M. was notoriously old, and therefore the inven- tion of B. was not ancillary to an invention made by M. Miller v. Blackburn, C. D. 1911, 172 O. G. 549. XXXI. Prkliminary Statumknt. (a) /;( General. 1644. The filing of a preliminary statement by an applicant stating that he made the in- vention of the issue at a certain date does not estop that party from afterwards alleg- ing in a motion for dissolution that he docs not claim that invention. Preliminary state- ments are necessarily made with reference to the invention disclosed in a party's own case upon the presumption that the issue applies to that invention. Sadtler v. Carmichael v. Smith, C. D. 1899, 86 O. G. 1498. 1645. The requirement of specific prelim- inary statements by the contending parties under oath is a reasonable one, and experience has demonstrated its special adaptation to the conditions that ordinarily exist in interference cases. *Cross v. Phillips, C. D. 1899, 87 O. G. i:!09. 1646. The dates of conception and reduc- tion to practice are peculiarly within the knowledge of the inventor, and the facts by which they may be eslalilished are naturally of difficult contradiction by his adversary. Hence it is quite important to the administration of justice in contests between them that he be required to state those dates with reasonable certainty before notice of the foundations of his adversary's claim. These preliminary statements constitute what may be called the "pleadings'" in the case, and to their allega- tions the evidence must respond. *Id. 1647. Interferences are declared for the purpose of determining the question of pri- ority or originality of invention between two or more parties. Preliminary statements are the pleadings of the parties and set forth cer- tain facts as to conception, disclosure, and reduction to practice, and to the allegations set up in the preliminary statements the evidence must respond. Huber v. .\iken, C. D. 1899, 8S O. G. 152.->. 1648. In the production of proof in matters of interference the parties must be held strict- ly to the dates set forth in their preliminary statements. Funk v. Matteson v. Haines, C. D. 1902, 100 O. G. 17G4. 303 INTERFERENCE, XXXI, (a). 1649. Where a preliminary statement is held by the office to be informal in that it does not sufficiently state the facts and the party is called upon for a new statement. Held, that the new statement will not be stricken out on motion merely because it states addi- tional facts besides those called for by the office. Shaw v. Gaily, C. D. I'JOS, 100 O. 0. uOI4. 1650. Preliminary statements are not like the pleadings in the courts, since they do not make the issue. They consist merely of a statement by a party of his case made in ig- norance of the case to be made by his oppo- nent and operate merely as an estoppel. If not made in ignorance, they serve no useful purpose. Woodward v. Kennedy, C. D. 1903, 104 O. C. IHO:!. 1651. The purpose of preliminary state- ments made in ignorance of the dates claimed by the opposing party is to avoid the tempta- tion to fraud, and where the chances of fraud are eliminated the reason for the statement made in secrecy has less force. Davis v. Ocumpaugh v. Garrett, C. D. 1903, 104 O. G. 2440. 1652. Where A, claims that he knew the exact date of his conception (September 12) when he executed his preliminary statement, yet alleged an indefinite date, which would permit him to establish September 1 if neces- sary to his ends. Held, that this looseness of assertion in the statement is inexcusable and tends to discredit him and is in marked con- trast with B.'s specific statement and proofs. Blackman v. Alexander, C. D. 1904, 113 O. G. 1703. 1653. A preliminary statement is inconsist- ent and misleading which alleges that draw- ings and a device were made before the date assigned for actual conception, and such state- ment should not have been made without some explanation. *Robinson v. Copeland, C. D. 1904, 112 O. G. 501. 1654. Where it is alleged in a preliminary statement that an invention is conceived "in the early spring of 1900," Held, that such statement necessarily means not earlier at the utmost than March 1, 1900. *Richards v. Meissner, C. D. 1905, 114 O. G. 1831. 1655. The sworn preliminary statements re- quired when an interference has been declared constitute the pleadings of the parties, and we have had occasion several times, and for reasons satisfactory now as then, to approve the practice of holding the parties strictly to the dates given herein. (Bader v. Vajen, C. D. 1899, 329, 87 O. G. 1235, 14 App. D. C. 241, 254; Stevens v. Seher, C. D. 1897, 767, 81 O. G. 1932, 11 App. D. C. 245, 251.) *Ilammond V. Basch, C. D. 1905, 115 O. G. 804. 1656. The proHminary statement of a party alleging invention prior to the date of a pat- ent cited will be accepted as a substitute for an affidavit under Rule 75, making out a friiita facie case justifying a continuance of the interference in which the facts will be mure completely shown by the proofs. For- syth V. Richards, C. D. 1905, 115 O. G. 1327. 1657. Where a party's preliminary statement fails to overcome his opponent's filing dale, Held, that the contention that he should on that account not be regarded as a real party to the interference entitled to a hearing as to the rights of other parties is not sound. Taylor v. Kinsman v. Kinter v. Potter, C. D. 1905, 118 O. G. 838. 1658. Held, that a preliminary statement is conflicting, and therefore objectionable, which contains allegations that an invention was re- duced to practice on a certain date, but no de- vices embodying the invention were ever made. Guett v. Trcgoning, C. D. 1005, 114 O. G. 544. 1659. Parties are required to prepare their statements before having an opportunity to see the applications and statements of the op- posing parties, and the filing of a statement subsequently will not be permitted except upon a clear showing that justice demands it. Dutcher v. Matthew v. Dutcher and Peter v. Jackson, C. D. 1905, 118 O. G. 2538. 1660. Where an applicant has taken no ac- tion in his case and has not filed a preliminary statement and the time for filing statements has expired, a statement filed within the time fixed by the assignee of an undivided part interest whose assignment is of record in this office will be accepted. Lottridge v. Eustice, C. D. 1906, 121 O. G. 689. 1661. An order permitting an alleged equit- able assignee to file a preliminary statement will not be entered where the assignment is not of record and ample opportunity has been given to file a statement in accordance with Rule 131 and the failure to do so is not suffi- ciently excused. Churchill v. Goodwin, C. D. 1908, 132 O. G. 1S38. 1662. In cases where the junior party to an interference alleges in his preliminary state- ment a date of conception prior to the senior INTERFERENCE, XXXI, (b), 1. 303 party's filing date, hut the other dates alleged are subsequent thereto, the examiner of in- terferences should issue an order to show cause why judgment on the record should not be rendered against such junior party, as ex- perience shows it is rarely, if ever, that con- ception is proven by means other than dis- closure. Hopkins v. Peters v. Dement, C. D. loos, KM O. G. lonn. 1663. If in response to the order to show cause such junior party or his attorney shall file an affidavit stating it is proposed to estab- lish conception by means other than disclo- sure, the examiner of interferences should not render judgment, but should set times for taking testimony. Id. 1664. Rule 110 requires that the allegations of the preliminary statements should set forth iiiler alia the "date of the reduction to prac- tice of the invention." This allegation of the reduction to practice should be alleged posi- tively either in the terms of the rule or in such other language as will leave no question as to the actual reduction to practice of the in- vention. Williams v. Foyer and Kurz, C. D. I'JOO, 142 O. G. 1114. 1665. Where an application was filed by the administrator of an inventor and the entire interest therein assigned, it is not necessary that the preliminary statement be made by the "applicant," but it may be made by the assignee. Lotterhand v. Cornwall, C. D. 1909, 14S O. G. 1344. 1666. Rule l.il relates only to the assignee of an undivided interest, and it is not neces- sary that the assignee of the entire interest file a motion such as provided for in that rule in order to be allowed to file a preliminary statement. Id. (b) Ameiidincut of. 1. In General. 1667. After testimony has been taken the showing which would warrant an amendment to a preliminary statement changing the date of disclosure must be of the same kind as if the moving party were attempting to carry his date back of that of his opponent. Ber- nard v. Huebel, C. D. 1898, 84 O. G. 1729. 1668. While motions to amend preliminary statements are to be decided in view of the particular facts disclosed in each case, and therefore no cast-iron rule can be applied to all cases, it may be said that amendments to preliminary statements should be permitted only when the motion has been made promptly after the discovery of the error, and then only when equity and justice demand it — as, for example, in a case where the testimony of neither party has been taken, or, if it has been taken, where the other party will not be injured, save as the true state of facts may be injurious, and the opponent would not be misled nor the expenses of the proceeding increased. Whitney v. Gibson, C. D. 1899, 86 O. G. 1083. 1669. After testimony has been taken an amendment to set back the dates set forth in the preliminary statement is open to suspicion and will be received only upon a clear show- ing of mistake, and, further than this, the moving party must be free from negligence and must show the utmost diligence in seek- ing to correct this mistake. (Citing Hender- son v. Noakes, C. D. 1892, 114, .59 O. G. 14:il.) McDermott v. Hildreth, C. D. 1902, 98 O. G. 1282. 1670. When in making a preliminary state- ment a party was aware of the facts, but not of the force and effect that these facts might have, a failure to ascertain the true character of his previous acts shows negligence from which he has no relief. (Citing Franklin v. Morton v. Cooley, C. D. 1901, 49, 95 O. G. 2063; Thomas v. Trissell, C. D. 1901, 200, 97 O. G. 1598.) Id. 1671. Amendments to preliminary state- ments should be permitted only where it is made clearly to appear that the party used all reasonable care and diligence in preparing his original statement and in discovering the facts to be alleged therein. Woodward v. Kennedy, C. D. 1903, 104 O. G. 1393. 1672. Whether an amendment to preliminary statement shall be allowed in an interference proceeding under the rules of practice of the patent office calls for the exercise of a wide latitude of discretion by the commissioner, and certainly nothing less than an abuse of that discretion, causing a palpable miscarriage of justice, would warrant the review and re- versal of his action. (Cross v. Phillips, C. D. 1899, 342, 87 O. G. 1399, 14 App. D. C. 228, 237, 238.) *Hammond v. Basch, C. D. 1905, 115 O. G. 804. 1673. Where a motion to amend a prelim- inary statement is based upon a publication or official record and not upon the memory of witnesses. Held, that the rule requiring 304 INTERFERENCE, XXXI, (b), 2. that the utmost diligence be shown to have been exercised in preparing the original state- ment may be applied with less strictness. Fullagar v. Junggreu, C. D. 1905, 114 O. G. l.-).50. 1674. Whether leave shall be given to amend a preliminary statement is a matter within the discretion of the commissioner and is not re- viewable, save possibly in a case of palpable abuse of that discretion. *Neth and Tamplin V. Ohmcr, C. D. 1906, 123 O. G. 998. 1675. A motion to amend a preliminary statement should be brought promptly after the discovery of the facts on which the mo- tion is based, and delay in bringing the mo- tion is a sufficient ground for denying it. Floyd V. Rohlhng, C. D. 1908, 13:j O. G. 1992. 1676. Where a motion to amend a prelim- inary statement is based upon testimony taken in the case, it is indefinite if it fails to point out particular parts of the testimony upon which reliance is placed. Id. 1677. Since the granting of a motion to amend a preliminary statement will injure the opposing party only so far as his case will be prejudiced by evidence showing the true state of facts, a limit of appeal should be set by the examiner of interferences in his deci- sion on such motions only when he denies the motion. Smith and Wickes v. Emerson v. Sanders, C. D. 1908, 133 O. G. 1433. 1678. Where the examiner of interferences required one of the parties to an interference to amend his preliminary statement in cer- tain particulars or be penalized by being re- stricted to his record date. Held, that no ap- peal lay from the decision and that the ac- tion of the examiner of interferences would not be reviewed in the absence of a showing of a clear abuse of discretion. Opalla v. Hughes, C. D. 1910, 158 O. G. 481. 2. Permitted. 1679. Where it appears that a mistake was made in a preliminary statement through a misunderstanding by the applicant as to what constituted a reduction to practice. Held, that amendment should be permitted if no change is made in the date of conception and dis- closure alleged in the original statement. Mc- Connell v. Lindsay and Tonner, C. D. 1898, 82 O. G. 337. 1680. A motion for leave to amend a pre- liminary statement brought by the eenior party after testimony-in-chief has been taken may be granted when notice of such intended motion has been given and when any state- ments in the testimony may be met by re- buttal testimony. Webb v. Lcvedahl, C. D. isns. 84 O. G. 810. 1681. Notice of intention to move for amended statement given at the beginning of lestiraony-in-chief is sufficient notice. Id. 1682. Where a motion was made to fde an amended preliminary statement within fifteen days after the original preliminary statements had been approved and the time set for taking testimony and also before any testimony had been taken. Held, that there was no lack of diligence in bringing the motion. May v. Mcrker, C. D. 1898, 85 O. G. 150. 1683. It is the duty of the office to issue a jiatcnt to the one entitled thereto, and to that end it is desirable to have before it for consideration all the facts essential to a cor- rect determination of the question of prioritj'. Where, therefore, an adversary will not be injured by the grant of a motion to amend a statement, and to deny the motion would be unjust to the moving party and might lead to the grant of a patent to one who was not en- titled to it. Held, that the motion to amend should be granted. Id. 1684. A motion for leave to amend a pre- liminary statement brought after the taking of testimony may be granted when at the begin- ning of the taking of testimony it was stip- ulated that any testimony taken might be used in or in support of any statement which might thereafter be made and when testimony was thereafter taken in accordance with such stip- ulation. (Webb V. Levedahl, ante. 126, 84 O. G. 810, and Kasson v. Hetherington, 63 MS. Dec, 403, cited.) Shantz v. Osborn, C. D. 1S98, 85 O. G. 1224. 1685. The rule of the patent office which permits the statement of either party to an interference to be amended where material error has been committed through inadvert- ence or mistake and its correction is essen- tial to the ends of justice is reasonable and just and seems to conform as near as may be, considering the peculiar character of inter- ference cases, to the general rule prevailing in the courts of equity. *Cross v. Phillips, C. D. 1899, 342, 87 O. G. 1399. 1686. In courts both of law and equity the right to amend is not an absolute one, but rests in the discretion of the court, and the e.xercise of this discretion is not reviewable INTERFERENCE, XXXI, (b), 2. 305 unless it may be in case of its palpable abuse. Necessarily the allowance or refusal of leave to amend a preliminary statement in an inter- ference case rests in like manner in the dis- cretion of the commissioner of patents, and it might be said for even a stronger reason, because he is vested with the authority to make the needful rules for the regulation of the practice of his office without the supervi- sing power of any appellate tribunal. *Id. 1687. If the exercise of the discretion of the commissioner in the matter of allowing and refusing leave to amend preliminary state- ments be subject to review by the court of appeals of the District of Columbia at all, it must be confined to those cases where the question comes up properly with the appeal from the decision on the merits and where it can be made clearly to appear that this dis- cretion has been abused to the extent of caus- ing a palpable miscarriage of justice. *Id. 1688. After a decision on priority an amend- ment to the preliminary statement may be permitted where a material error has occurred through inadvertence or mistake and it clearly appears that there was no negligence in dis- covering the error or in bringing the motion to amend and that the correction is essential to the ends of justice. Richardson v. Humph- rey, C. D. 1899, 88 O. G. 2241. 1689. When a preliminary statement is amended to conform to the evidence after de- cision on priority. Held, that new- times for taking testimony should be set, so as to give the opposing party an opportunity to cross- examine the witnesses in regard to the matter. Id. 1690. An amendment to a preliminary state- ment was admitted where a mistake therein was not discovered until the beginning of the taking of testimony and notice of an inten- tion to amend was given at that time. (Webb V. Levedahl, C. D. 1898, 126, 84 O. G. 810.) Ancora v. Keiper, C. D. 1899, 86 O. G. 2171. 1691. An amendment made to correct a mis- take in a preliminary statement may be ad- mitted where it does not change the date of conception, disclosure, or reduction to practice. (Maltby v. Miehle, C. D. 1898, 11, 82 O. G. 749.) Id. 1692. Where a motion was made by a party to an interference that his opponent be re- quired to amend his preliminary statement by adding thereto a statement showing the ex- tent of use of the invention, or if it has not 20 been used to any extent, specifically disclosing that fact, Held, that under Rule 110 the mo- tion should be granted. Loeben v. Hamrick, C. D. 1899, 89 O. G. 1672. 1693. It is important that the extent of use of a completed invention be disclosed in the preliminary statement ; but it is not necessary that such disclosure should be prolix and give unnecessary details ; but it should set forth in concise and explicit terms the extent of use of the completed invention. Id. 1694. After decision on priority had been rendered by the examiner of interferences and an appeal from his decision had been taken a petition asking that the jurisdiction of the examiner of interferences be restored for the consideration of a motion to amend a preliminary statement was granted under the circumstances of this case. Richardson v. Humphrey, C. D. 1899, 86 O. G. 1804. 1695. When it is contended that the mis- take in the preliminary statement was not discovered until it was made apparent by the decision of the examiner of interferences on priority and the moving party uses reasonable diligence thereafter in presenting his motion to amend. Held, that the jurisdiction of the examiner of interferences will be restored to consider the motion. Id. 1696. On a petition that the jurisdiction of the examiner of interferences be restored for the purpose of considering an amendment to a preliminary statement the question as to whether or not that amendment shall be ad- mitted is not up for consideration, but mere- ly the question whether proper diligence has been exercised in presenting that motion. Id. 1697. Where one of the parties to an inter- ference who has made a bona fide mistake in the preparation of his preliminary statement not due to his own negligence moves promptly to amend before testimony has been taken, if no additional burden or expense will be thrown upon the opposing party the amend- ment upon a proper showing of the facts may he admitted. McDermott v. Hildreth. C. D. 1902. 98 O. G. 1282. 1698. An amendment to a preliminary state- ment to set back the date of conception and reduction to practice of the invention should be permitted when a refusal to do so might result in the allowance of a patent to one who is not the inventor and where it appears, further, that the opposing party will not be injured except as the true state of facts may 306 INTERFERENCE, XXXI, (b), 2. injure him and that he will not be misled nor the expenses of the proceeding increased. Silver V. Eustis, C. D. 1902, 98 O. G. 2361. .1699. Where it appears that an amendment to a preliminary statement will not carry the date of reduction to practice back of that of the opposing party and a reasonable excuse is . offered for the delay in presenting the amendment and, further, that no testimony has been taken. Held, that the amendment should be permitted. Gales v. Berrigan, C. D. 1902, 100 O. G. 231. 1700. Where there is no attempt to change the date of conception, disclosure, or reduc- tion to practice, the reason for the strict rule against amendment does not apply. Williams V. Liberman, C. D. 1902, 100 O. G. 1331. 1701. Where it appears from the testimony that a model was in fact made which had been forgotten and motion to amend the pre- liminary statement to allege that fact is made before the opposing party's time for taking testimony is closed, Held, that the amendment will be permitted. Id. 1702. Where a party in a preliminary state- ment makes a bona fide mistake in the use of the word "model," he should be allowed to correct the mistake if he acts diligently; but he should not be allowed to carry back the date alleged of a particular act without a proper showing. Fordyce v. Taisey, C. D. 1903, 102 O. G. 829. 1703. Amendments to preliminary state- ments based on newly-discovered evidence should not be allowed, especially after the testimony of an opponent has been taken, un- less it clearly appears that the evidence could not have been discovered at the time the orig- inal statement was made by the exercise of reasonable care and diligence. Id. 1704. Where a motion to amend a pre- liminary statement was based upon the acci- dental discovery of a publication referring to the invention and it appears that this publi- cation was not discovered when the original statement was prepared, although a careful search was made, Held, that the amendment should be permitted. Davis v. Ocumpaugh v. Garrett, C. D. 1903, 104 O. G. 2440. 1705. The rule against the amendment of preliminary statements except where the ut- most care and diligence was exercised in pre- paring the original statement may be ap- plied with less strictness where the amendment is based upon record evidence and not upon the memory of fallible witnesses. Id. 1706. Where it clearly appears that a party has made a clerical error in writing a date in his preliminary statement and he promptly moves to correct it, Held, that the amendment will be permitted. Osborne v. Mitchell, S. D. 1904, 111 O. G. 301. 1707. Where the invention is a highly-com- plicated mechanism, one of the elements of which is "item-wheels," and from the show- ing it appears that the preliminary statement w^as carefully drawn to include a machine made by C. having item-wheels of a peculiar construction, but later it is found that the term "item-wheels" is not limited to the sec- ond structure made by C, but apparently cov- ers an earlier machine made by him. Held, that as no testimony has been taken C. should be permitted to amend his preliminary state- ment to include his earlier machine. Car- roll v. Stahlberg, C. U. 1904, 111 O. G. 1937. 1708. Held, that a preliminary statement which contains no allegations regarding mod- els, reduction to practice, or extent of use should not be accepted, but an amended state- ment containing the allegations specified in Rule 110 should be required. Schoonmaker v. Sintz, C. D. 1906. 123 O. G. 2974. 1709. Held, that the requirement for an amended preliminary statement containing al- legations regarding the making of models, re- duction to practice, and extent of use, which allegations had been omitted from the orig- inal preliminary statement, will not necessarily result merely in the filing of an amended state- ment containing an allegation that no model or machine had been made, and furthermore, such an allegation would be useful as notice to the opposing party and the office. Id. 1710. Where a party used the word "model" in his preliminary statement, as commonly used in the factory, to indicate experimental full-sized devices made by hand, which, if found satisfactory, are copied in subsequently making the commercial device in large quan- tities by machinery, and it appears that his attorney prepared the preliminary statement from written memoranda mailed to him and did not discover that the party had not used the word "model" in the legal sense until preparing to take testimony, and where the motion was brought before any testimony was taken and it does not appear that the delay in bringing the motion will work any injury INTERFERENCE, XXXI, (b), 3. 307 to the opponent, Held, that the party should be permitted to correct his mistake. Day v. Adt V. Hardy, C. D. 1906, 12j O. G. 2765. 1711. The junior party to an interference permitted to amend his preliminary statement by carrying the date of the production of two full-sized devices from a date subsequent to the opponent's filing date, on which the oppo- nent alone relies for reduction to practice, to a date prior thereto, where the motion to amend was brought only thirteen days after the filing of the original statement and be- fore any testimony was taken and where it appears from affidavits filed that prior to the execution of his first preliminary statement he examined such records and consulted with such persons as would in his opinion enable him to secure all the necessary facts. Davis V. Kennard, C. D. 1907, 131 O. G. 695. 3. Not Permitted. 1712. Where an amendment to a prelim- inary statement is presented after testimony has been taken, the office will not consider such testimony to determine what dates have been proved, but the possibility must be con- templated that the moving party may be at- tempting to carry his dates back of those which in his opinion have been established by his opponent. Bernard v. Huebel, C. D. 1898, 84 O. G. 1729. 1713. Where an applicant prepares his pre- liminary statement under the counsel and di- rection of an attorney, but through ignorance of the law fails to inform him of all of the material facts within his knowledge as to the disclosure of the invention. Held, that it shows negligence on his part and furnishes no good ground for permitting an amendment to the statement. 1714. After testimony has been taken an amendment to a preliminary statement will not be permitted where no excuse whatever is given for not making the motion to amend earlier or for not sooner discovering the al- leged error in the original statement. Miehlc V. Read, C. D. 1899, 89 O. G. 354. 1715. When a party after discovering that there is an error in his preliminary statement makes no effort whatever for a long time to discover the true state of facts and after dis- covering the facts does not use diligence in presenting a motion to amend, Held, that the amendment will not be permitted. Atkins v. Paul V. Johnson, C. D. 1901, 94 O. G. 1785. 1716. Where a party with a full knowledge of all the facts in regard to the making of his invention prepares and files his preliminary statement and testimony is taken by his oppo- nent and he afterwards desires to amend his statement because of an alleged mistake as to his right to allege experiments as a con- ception and reduction to practice of the in- vention, Held, that the amendment should not be permitted. Franklin v. Morton v. Cooley, C. D. 1901, 95 O. G. 2063. 1717. Where the facts were within a party's knowledge since their respective dates, but new light has reached him as to the law of his case, Held, that his mistake was not of fact, but of law, from which courts do not re- lieve. Id. 1718. After a party to an interference, rely- ing upon his opponent's statement, has taken his proofs the inability of the commissioner to impose terms upon the other party for the expense of taking supplementary proofs should operate agaijist permitting an amend- ment which might render such supplementary proofs necessary. Id. 1719. The rule that preliminary statements are conclusive upon the parties in whose be- half they are made operates powerfully against manufactured evidence and will only be re- la.xed upon great consideration in view of the special circumstances of the case. Id. 1720. After the junior party to an interfer- ence has taken his testimony and has disclosed his date of invention the senior party should not me permitted to amend his preliminary statement to carry back his date of reduction to practice when it appears that the facts were within his knowledge when he made his pre- liminary statement, but that he was not aware of the full weight which they might have. Thomas v. Trissel, C. D. 1901, 97 O. G. 1598. 1721. Where a preliminary statement con- tains the allegation that no model was made and it is desired to amend it by adding the allegation that an experimental device was made and it appears that said device was in fact a model, field, that the amendment should not be permitted, since it would make the statement contradictory. Williams v. Liberman, C. D. 1902, 100 O. G. 1331. 1722. Where a party discovers an alleged mistake in his preliminary statement and there- after permits his opponent to take and file his testimony without any notice of an intention to amend. Held, that he will not thereafter be permitted to amend by carrying his dates 308 INTERFERENCE, XXXI, (b), 3. back of those originally alleged. Mills v. Torrance, C. D. 1002, 98 O. G. 416. 1723. The question as to the truth or falsity of the allegations in a proposed amendment to a preliminary statement is not controlling upon the question whether the amendment shall be permitted. The rights of the oppos- ing party to the interference must be consid- ered. Id. 1724. Where two months after a decision on priority against him a party makes a mo- tion to amend his preliminary statement to strengthen his case where it was weak and it appears from his statement that he knew of the facts desired to be alleged all of the time and did not use diligence in presenting his motion. Held, that a case is not made out which would warrant restoring the jurisdic- tion of the examiner of interferences to con- sider the motion. Dahlgren v. Crocker, C. D. 1902, 9S O. G. 2.-.S6. 1725. Where in preparing his original state- ment a party knew all of the facts which he desires to set forth by amendment, but did not state them or disclose them to his attor- ney because he did not consider them material to his case. Held, that his error was one of law and not of fact and that therefore the amendment should not be permitted. Id. 1726. Where the examiner of interfer- ences decided priority against a party for the reason that he was not exercising diligence in regard to the invention during a certain period of time and the party thereafter wishes to amend his statement to set up certain work done at that time which he did not include in his original statement because he did not re- gard it as material, Held, that the amendment should not be permitted. Id. 1727. Where testimony has been taken by both parties, a motion for leave to amend a preliminary statement by changmg the date of reduction to practice will not be granted where there is no showing that the utmost dil- igence in preparing the original statement had been used and when it does not appear that a mistake had been made in alleging the date of reduction to practice. (McDermott v. Hil- dreth, ante, 43, 98 O. G. 1282.) Lockwood v. Schmidt, C. D. 1902, 100 O. G. 4.53. 1728. Where preliminary statements have been filed in an interference proceeding and on motion the interference is subsecjuently dissolved as to one of the counts and con- tinued as to others, this fact of itself does not warrant new times for filing preliminary statements being set, as such a proceeding would have the eflfect of permitting the amendment of the original statement. Sea- man V. Brooks, C. D. 1902, 100 O. G. 683. 1729. Where the showing which accom- panies a motion to file a new preliminary state- ment, which is in eflfect a motion to amend the original statement, merely states that ad- ditional facts have been discovered, without specifying said facts, and that the utmost dil- igence was exercised in making the discovery of the new facts, without stating what means were employed and the reasons why the same means could not have been earlier employed. Held, not sufficient to warrant the grant of the motion. (McDermott v. Hildreth, ante, 43, 98 O. G. 1282.) Id. 1730. Where K. prepared his preliminary statement from memory without attempting to look up records relating to his invention and six months later when preparing to tes- tify he found records tending to show that he had made a mistake. Held, that his mistake was due to negligence and he is not entitled to amend his statement. King v. Hansen, C. D. 1002, 101 O. G. 1129. 1731. The desire of the office to discover all facts and to issue the patent to the one who is in fact the first inventor does not justify it in relieving a party from the effects of his own negligence. Id. 1732. The question whether the expense of the proceedings is increased and whether the opposing party will be injured except as the true state of facts is injurious cannot be ac- cepted as the sole test of the right to amend a preliminary statement. Id. 1733. The rule that the preliminary state- ment upon which the party will rely must be Idcd at a time fixed and must be carefully prepared is a good one and will be enforced, since it is regarded as the best means of doing justice between all parties. Id. 1734. Where a party makes a motion to amend his preliminary statement, carrying his date of conception back ten years, basing it upon the testimony taken on his behalf, Held, that the motion will be denied in the absence of good and sufficient reasons why the facts were not discovered when the orig- inal statement was prepared. Woodward v. Kennedy, C. D. 1903, 104 O. G. 1393. 1735. Where a party moves to amend his preliminary statement, alleging that he has discovered the facts upon which it is based from certain witnesses who were hard to lo- INTERFERENCE, XXXI, (b), 3. 309 cate, but it does not appear that he was un- able to find them or that he made proper ef- forts to do so when preparing his statement, Held, that he did not exercise proper care, and the motion must be denied. Id. 1736. Where in support of a motion to amend a preliminary statement it is alleged that the testimony shows clearly that the facts are as alleged in the amended statement and that unless it is admitted the decision must be in favor of one who is not the first in- ventor, Held, without considering the truth of the allegation that the amendment will not be permitted in the absence of a showing of care in preparing the original statement. Id. 1737. In considering the propriety of per- mitting an amendment to a preliminary state- ment the question is not whether the party can prove the allegations therein, but the matter turns upon the reasons why the alle- gations were not made in the original state- ment. Id. 1738. Where B. in support of his motion to amend his preliminary statement filed an affi- davit that a mistake was made in his original statement "due to inadvertence and mistake," but made no showing of fact as to how the inadvertence or mistake arose, Held, that the motion should be denied. Brown v. Cutler v. Keeney, C. D. 1903, 104 O. G. 1896. 1739. Where a certain machine is set up by the inventor as a reduction to practice and it is alleged that the attorneys did not inform him that the machine did not embody the in- vention of the issue until just prior to the filing of the motion to amend, Held, not to constitute a bona fide mistake, such as to war- rant the grant of a motion to amend, as it constitutes nothing less than gross negli- gence, as all the steps could have been taken at first to ascertain the facts which were sub- sequently taken after the applicant's testimony- in-chief has been closed. Id. 1740. To warrant an amendment to a pre- liminary statement it is not sufficient to show merely that the original statement is incor- rect. It must be shown that the error did not arise from a lack of proper care and dili- gence in preparing the statement. Beckert v. Currier, C. D. 1903, 104 O. G. 2439. 1741. An amendment to a preliminary state- ment will not be permitted upon the mere al- legation that the error was due to inadvertence or mistake, but only upon a showing of facts which will enable the office to judge that there was inadvertence or mistake and that amend- ment is essential to the ends of justice. Brown v. Keeney, C. D. lyo.i, 105 O. G. 200. 1742. Where on a moticjn to amend a pre- liminary statement it is alleged that new facts were discovered from a proposed witness and it does not appear why they were not dis- covered before. Held, that the motion will be denied. McHarg v. Schmidt and Mayland, C. D. 1903, 103 O. G. 263. 1743. Where a certain machine was con- sidered in preparing the original preliminary statement and it was concluded that it did not embody the invention in controversy and after the testimony of the opposing party is taken it is concluded upon further considera- tion that the machine does embody the in- vention, Held, that the party is not entitled to amend his statement so as to include the making of that machine. Soley v. Peck v. Clement v. Richards v. Meissner, C. D. 1903, 105 O. G. 1262. 1744. Where the facts which it is desired to allege in an amended preliminary statement were known when the original statement was prepared and were not set forth through an alleged error in judgment. Held, that the amendment will not be permitted, since the error was due to carelessness. Id. 1745. Where a motion to amend a prelim- inary statement is made and it appears that the dates which it is desired to allege are those which were disclosed to the attorney when preparing the original statement, but which were not embodied in the statement through some alleged misunderstanding which is not explained, Held, that the amendment will not be permitted. Heinitsh and Moriarty V. Congdon v. Kelsea, C. D. 1903, lOG O. G. .'>42. 174G. Where a party wishes to amend his statement to include dates within his knowl- edge when he prepared his original statement. Held, that it is incumbent upon him to show very clearly and satisfactorily why they were not alleged and that the omission was not due to a lack of care. Id. 1747. Where a motion to amend a prelim- inary statement is based upon the allegation that a mistake was made by the inventor as to what was meant by reduction to practice, but there is no explanation what the mistake was or how it arose and the dates which it is desired to allege are not given. Held, that the motion must be denied. Fowler v. Boyce v. Dyson V. McBerty, C. D. 1903, 107 O. G. 3544. 310 INTERFERENCE, XXXI, (b), 3. 1748. Where it appears that R. was negli- gent in preparing his first preliminary state- ment and in informing his attorneys of all the facts and he also did not use the utmost diligence in trying to find the alleged new wit- ness before making his preliminary statement. Held, that R. has not sufficiently excused his failure to allege all the facts in his first pre- liminary statement and that an amendment of the same should not be permitted. Seeberger V. Russel, C. D. 1903, 107 O. G. S.-ias. 1749. Where a party wishes to amend his preliminary statement after testimony is taken to carry back the date of the making of a ma- chine to the date alleged for making a model, but the testimony shows no justification for alleging that date and indicates that proper care was not exercised in preparing the orig- inal statement, Held, that the amendment will not be permitted. Parkes v. Lewis, C. D. 1904, 110 O. G. 305. 1750. Where a party prepares his prelim- inary statement under the direction of his at- torney, it is to be presumed that he is advised as to the legal effect of the facts disclosed to his attorney, and he is not to be permitted to amend his statement carrying his dates back upon the mere allegation that he did not un- derstand the difference between a model and a full-sized machine. Id. 1751. An amendment to a preliminary state- ment alleging earlier dates will not be per- mitted merely because the party making it stated the facts as he believed them to be and subsequently discovered his error when it does not appear that he could not have dis- covered the facts sooner by careful and dili- gent search. Hamilton v. Carroll v. Goldberg v. Stahlberg, C. D. 1904, 110 O. G. 2510. 1752. Where because of the death of the inventor the assignee executed the prelim- inary statement and in doing so accepted the statements of an associate of the inventor without making diligent inquiries of others who would be likely to know, Held, that he will not be permitted to amend the statement because of an alleged error subsequently dis- covered. Id. 1753. Where a motion is made to amend a preliminary statement after testimony is taken and it is considered that the testimony shows that a bona fide mistake was made in the date set up and that the testimony also suffi- ciently excuses the presumptive inadvertence and neglect, Held, that as a consideration of the testimony is necessary in order to rightly determine whether or not the amended pre- liminary statement should be received this consideration should be postponed until final hearing. Bauer v. Crone, C. 1). 1904, 111 O. G. 1939. 1754. Whare in support of a motion to amend a preliminary statement it is said by F. that when preparing to take testimony he learned of an earlier disclosure than that al- leged in his statement, but no good rea.son is shown for not discovering the fact sooner. Held, that the amendment should not be per- mitted. Fowler v. Boyce v. Temple and Good- rum, C. D. 1904, 108 O. G. 561. 1755. Where a party wishes to amend his preliminary statement, setting up an earlier reduction to practice, and it appears that he has discovered no new facts, but upon consul- tation with his attorney has obtained a better idea of what in law constitutes a reduction to practice, Held, that the amendment should not be permitted. He should consult his attor- ney when preparing his statement. Id. 175G. Applicants should exercise the same care in preparing their preliminary statements that they exercise in discovering evidence after they learn the dates alleged by their opponents. Id. 1757. Where a party wishes to amend his statement and include dates furnished to his attorney, but which were not included, and who deliberately two days after furnishing this information to his attorney swore to an- other date. Held, that either the party or his attorney was guilty of gross carelessness, and the amendment will not be permitted. Jones V. Linn, C. D. 1904, 110 O. G. 1430. 1758. An affidavit of an attorney that he was engaged upon other pressing work which demanded his attention cannot excuse care- lessness in preparing a preliminary statement. Id. 1759. Held, that after the testimony of one of the parties to an interference has been l:ikcn, relying upon the dates alleged by the other party, an amendment to the preliminary statement changing those dates will not be permitted without a most clear and satisfac- tory showing. Bliss v. Creveling, C. D. 1904, 112 O. G. 499. 17G0. Held, that the unverilied statement of the attorney as to what the inventor be- lieved in making his original preliminary statement, unsupported by other showing, is not sufficient to warrant the granting of a INTERFERENCE, XXXI, (b), 311 motion to amend a preliminary statement. Guett V. Tregoning, C. D. 1905, 114 O. G. 544. 1761. Motion to amend preliminary state- ment by alleging the making of a model de- nied where no satisfactory explanation is given for the omission from the original state- ment and no good excuse is given for the delay in bringing the motion to amend. Full- agar v. Junggren, C. D. 1905, 114 O. G. 1550. 1762. Where a party is called upon to show cause why judgment should not be rendered against him on the record and he then seeks to amend his preliminary statement, carrying his dates back of his opponent's dates, but no good reasons appear why the dates were not discovered and alleged originally. Held, that the amendment will not be permitted. Frie- stedt V. Harold, C. D. 1905, 116 O. G. 594. 1763. Amendment to a preliminary state- ment will not be permitted where the excuse for the alleged error is forgetfulness and there is no showing what effort, if any, was made to refresh his recollection originally or what steps were taken to fix definitely and cer- tainly the dates to be alleged. Id. 1764. Where motion to amend preliminary statement to carry date back of those alleged by opponent is brought after opportunity to see opponent's statement and case has been af- forded. Held, that the motion will be denied unless supported by a most satisfactory and convincing showing. Hoyt v. Sanders v. Hawthorne, C. D. 1905, 119 O. G. 1260. 1765. Where in support of a motion to amend preliminary statement to carry dates back of those of opponent it is merely alleged that search for certain evidence now possessed was originally unsuccessful, but no satisfac- tory e.xplanation is made why the search could not have been completed in time for the orig- inal statement instead of later, Held, that the showing is not satisfactory and convincing. Id. 1766. Where motion to amend a prelim- inary statement is brought after the state- ments have been open to inspection and seeks to carry the party's reduction to practice from a date subsequent to that of his opponent to a date prior thereto. Held, that such amend- ment will not be permitted unless supported by a clear and satisfactory showing that jus- tice requires it and that the alleged error was not due to negligence. Dunn v. Halliday, C. D. 1905, 119 O. G. 1261. 1767. Where upon motion to amend pre- liminary statement it is stated in excuse of alleged error in the original statement that the party did not correctly understand what was meant by reduction to practice. Held, that it was clearly his duty to discover the mean- ings of the allegations which he made and that he apparently could have discovered them from from his attorney. Id. 1768. Where in excuse of alleged error in preliminary statement upon motion to amend the same it is stated that party did not under- stand the meaning of the words reduction to practice and it appears that these words were not used in the statement, which, on the other hand, gave the date of construction of full- sized operative apparatus. Held, that the ex- cuse was insufficient. Id. 1769. A motion to amend a preliminary statement based upon conception, drawings, and model made abroad will not be granted, since acts performed abroad are immaterial upon the question of priority of invention. Emmet v. Fullagar, C. D. 1905, 114 O. G. 1551. 1770. Amendment to a preliminary state- ment carrying the dates back of the dates of the opposing party will not be permitted where the alleged error was due to carelessness or inattention in preparing the original state- ment. Neth and Tamplin v. Ohmer, C. D. 1905, 116 O. G. 874. 1771. On a motion to amend a preliminary statement the question is not whether the mov- ing party would be able to prove his case if amendment were permitted, but is whether the showing made warrants permitting the amend- ment. Id. 1772. Where a party seeks to amend his statement after learning the dates of his op- ponent, it should be made to appear not mere- ly that there was error in the original state- ment, but that such error could not have been avoided by the exercise of reasonable care in the preparation of that statement. Id. 1773. Where the alleged error in a pre- liminary statement is discovered as soon as an inspection of the opposing party's case re- veals the fact that the allegation of an earlier date is necessary, Held, that the presumption is strong that the alleged error could have been discovered sooner if proper care had been exercised. Id. 1774. Unless the circumstances surround- ing the discovery of the alleged error are fully set forth and make good reasons appear why it was possible to fix the earlier date after knowing the opponent's dates and not before. 312 INTERFERENCE, XXXI, (b), 3. Held, that this office can pay very httle atten- tion to the mere allegation that it was impos- sible to discover the error sooner. Id. 1775. Where in excuse for the alleged error in the original statement it is alleged that the sketches and tangible evidence were not in the possession of the moving party when he. prepared his statement, but it appears that he has not yet obtained possession of them or seen them. Held, that the excuse is insufficient. Id. 1776. A motion to amend a preliminary statement to correct the inadvertent use of the word "model" instead of the fords "full- sized machine" will not be granted where it is found that the device referred to as the "full-sized machine" does not disclose the issue. Parkes v. Lewis, C. D. 1906, 120 O. G. 333. 1777. A motion by one party that the op- posing party be required to file an amended preliminary statement based upon the alleged character of a machine which the moving party assumes will be relied upon by the op- posing party in producing his evidence should not be granted. The sufficiency of the ma- chine to establish a date of invention will be determined by the office when it is introduced in evidence and in connection with the testi- mony which may be taken concerning it. Barr V. Bugg, C. D. 1906, 122 O. G. 2061. 1778. Where after decision upon a motion for dissolution a party moves to amend his preliminary statement and it is held that the showing in support thereof is insufficient to warrant such amendment, a second motion to amend will not be granted where no good reason appears why the showing then made could not have been presented in connection with the first motion. Parties cannot be per- mitted to try their cases piecemeal and ex- perimentally. Borg v. Strauss, C. D. 1907, 130 O. G. 2719. 1779. Amendments to preliminary state- ments are to be permitted after a party has had an opportunity to inspect his opponent's case only in cases where bona fide mistakes of fact have been made and a full and clear showing is made that there was no negligence in discovering the true facts. Id. 1780. An amendment to a preliminary state- ment will not be permitted upon the allega- tion of the moving party that at the time of the declaration of the interference he sup- posed that the issue was restricted to the ma- chine shown in the application, but that he later learned that the examiner construed it so broadly as to read on a prior application, where it did not appear that the examiner had construed the issue except by declaring the interference, and that the examiner had held, on a motion to shift the burden of proof, that the issue was not readable upon the earlier application. In any event the mis- take was one of law and affords no ground for amendment. Miller v. Wallace, C. D. 1907, 131 O. G. 1689. 1781. A motion to amend a preliminary statement cannot be granted where it has not been shown that proper care was exercised in the preparation of the original statement and no explanation is given of how the orig- inal mistake occurred or why it was not sooner discovered. Johnston v. Erekson and Carl- son v. Barnard, C. D. 1907, 131 O. G. 2419. 1782. Where it appears that at the time of making his preliminary statement a party did not read the counts of the issue, that the al- leged mistake therein was not discovered till testimony was taken, and the motion to amend was not brought for more than two months thereafter, Held, that neither proper care in preparing the statement nor diligence in in- vestigating the matter and discovering the mis- take was shown. Smith v. Ingram, C. D. 1907, l.;i O. G. 2420. 1783. Whether a decision on a motion to amend a preliminary statement should be ren- dered before or at final hearing is a matter within the discretion of the examiner of in- terferences. Id. 1784. A party will not be permitted to amend his preliminary statement to carry back his date of disclosure to cover the date proved by his opponent in a prior interference with a third party where the amended date is earlier than that set up in a preliminary statement filed three years before in an interference be- tween him and said third party and where the affidavit in support of the motion indicates an uncertainty whether the alleged disclosure took place prior to the date originally given. Beall, Jr. v. Lyon, C. D. 1907, 126 O. G. 388. 1785. Where D. was notified that his pre- liminary statement was indefinite and should be amended, but no amendment was made, and the present motion was not brought until eight months later and after testimony had been taken by D., and was inspired by a statement placed on the record by his opponent. Held, that the motion was properly denied in the absence of a showing in excuse for the long INTERFERENCE, XXXI, (b), 3. 313 delay in bringing the motion or the failure to respond to the requirement for a more def- inite statement or of a satisfactory showing of accident or mistake or of newly-discovered evidence. Dixon v. McElroy, C. D. 1907, 127 O. G. 2393. 1786. The question of amending the pre- liminary statement is a matter largely within the discretion of the examiner of interfer- ences. Unless it be shown that such discre- tion has been abused his decision will not be disturbed. Karpenstein v. Hertzberg, C. D. 1907, 127 O. G. 2393. 1787. A motion to amend a preliminary statement will not be granted in the absence of a valid ground therefor, even though the proposed amendment does not seek to change the sequence of dates set up originally by the respective parties. Ridgway v. Tilyou, C. D. 1908, 137 O. G. 979. 1788. Where a motion to amend a prelim- inary statement has been denied by the ex- aminer of interferences and his decision af- firmed on appeal, it should not be reconsid- ered in the absence of any additional showing as to the grounds on which it was denied. Dyson v. Land v. Dunbar v. Browne, C. D. 1908, 133 O. G. 1679. 1789. Where during the taking of testimony notice was given by counsel for W., in con- nection with an answer of a witness as to the date of disclosure, of an intention to present a motion for leave to amend W.'s preliminary statement, Held, that such notice is insufficient to warrant amendment of the statement to change the allegation of making a model to an allegation of reduction to practice at such date. Kent v. Wilson v. Jeffery and Jeffery, C. D. 1908, 137 O. G. 1943. 1790. Where counsel for W. was apprised the acts which W. expected to prove as early as September 23, 1908, and the testimony in behalf of W. was filed in the patent office on October 9, 1908, but the motion to amend the preliminary statement was not filed until October 30, Held, that in the absence of suffi- cient excuse the -delay in filing the motion warrants the denial of the motion. Id. 1791. Where a party in preparing a prelim- inary statement recollects having had a con- ersation in which the invention in issue was discussed and writes a letter addressed to the party with whom the conversation was had to find out whether the invention was dis- closed to him at that time, but gets no reply, and does nothing further with respect thereto. and it does not appear whether the letter was returned or whether it even had a return card on it, or that applicant endeavored to find out through mutual friends of such party's whereabouts. Held, that such party was negli- gent and that he was not entitled to amend his preliminary statement after testimony was taken carrying his date of disclosure back to the date of such conversation on the plea of poverty, applicant having failed to take the steps within his means to secure the informa- tion sought. Floyd v. Robbing, C. D. 1908, 133 O. G. 992. 1792. Since the rule regarding the allega- tions of preliminary statements requires a specific statement as to disclosure as well as to conception of the invention, a party may not amend his statement by carrying back the date alleged for disclosure to the date al- leged for conception on the theory that dis- closure is merely evidence of conception. Id. 1793. The practice in permitting amend- ments to preliminary statements has been well defined in many consistent decisions, and the applicability of the principles announced there- in to the facts in any particular case should ordinarily be left to the discretion of the ex- aminer of interferences. Smith v. Wickes v. Emerson v. Sanders, C. D. 1908, 133 O. G. 1433. 1794. On a motion to amend a preliminary statement to change the date of a disclosure and of the making of drawings from a date subsequent to a date prior to the dates al- leged by the opposing party, where it appears that the drawings which are alleged to con- stitute newly-discovered evidence were exam- ined prior to the making of the preliminary statement, an averment that the element shown therein and which is involved in interference was an obscure part of the machine and that the illustration thereof was therefore over- looked does not constitute a sufficient excuse for failure to earlier discover such evidence. Goldberg v. Crumpton v. Carlin, C. D. 1909, 141 O. G. 286. 1795. C.'s motion to amend his preliminary statement was denied by the examiner of in- terferences. He then renewed his motion and filed additional affidavits. This motion was dismissed. Held, that on appeal from the former decision the affidavits filed with the renewed motion will not be considered. (Borg V. Strauss, C. D. 1907, 320, 130 O. G. 2719.) Curtis V. Hedlund, C. D. 1909, 139 O. G. 989. 314 INTERFERENCE, XXXI. (c), (d). 1796. It appeared that the drawings and records of the inventor were arranged in classes and that the drawing now rehcd upon to support the proposed amended prehminary statement was in its proper class and might have heen found when the original preliminary statement was prepared had the search of the records extended to that class and that such search was made only after a decision on a motion to shift the burden of proof which changed the relation of the parties. Held, that the motion to amend was properly de- nied. Id. 1797. Where in support of a motion to amend his preliminary statement a party al- leges that at the time it was made he thought the claims were limited to the structure shown in his drawing and did not discover that they were capable of a broader construction until after a decision was rendered on a motion to dissolve, Held, that such a mistake is one of law and not of fact and constitutes no ground for permitting the amendment. Ryder v. White, C. D. 1909, U:> O. G 76.^ 1798. Where a party has had access to the preliminary statement of his opponent, he will not be permitted to amend his statement to change the date of conception or of reduc- tion to practice from a date subsequent to that alleged by his opponent to one prior to such date unless most satisfactory reasons are given in explanation of the facts necessitating such amendment and of the delay in bringing a motion to amend. Id. 1799. Where from the showing to amend a preliminary statement brought by the senior party after the junior parties had taken their testimony-in-chief it appeared that at the time the preliminary statement was executed there was doubt as to its correctness, but that no thorough search was made to discover evi- dence of an earlier disclosure, Held, that the motion to amend was properly denied. Whit- all v. Gillespie v. Blair, 171 O. G. 744. (c) Inspection of. 1800. A preliminary statement having been filed by a party through his regularly-appoint- ed attorney and opened, a second preliminary statement filed through another attorney will not be opened at the instance of the other party, it appearing that it was not intended that the second statement should be filed. Converse et al. v. Kerst, C. D. 1898, 84 O. G. 1146. 1801. After preliminary statements are filed and approved they will not be sealed up so that motions for dissolution may be made be- fore they are open to the inspection of the op- posing parties. Whipple v. Sharp, C. D. 1903, 98 O. G. 22&. 1802. Where the junior party's statement fails to overcome the filing date of the senior party, the preliminary statement of the senior party should remain sealed and should be placed in the confidential archives of the of- fice and should not be open to inspection either before or after the grant of the patent. In re Bacon, C. D. 1902, 99 O. G. 861. (d) Delay in Filing. 1803. Where a party files a motion one day before his time for filing his preliminary state- ment expires, and thereby indirectly obtains an extension of time to which he was not otherwise entitled. Held, that if after the mo- tion is decided he fails to file his statement within the one day remaining of his time it is his own fault, and he has no right to com- plain if he is held strictly to his rights. Whip- l)k- v. Sharp, C. D. 1902, 98 O. G. 225. 1804. Where an inventor refuses to file a preliminary statement and the records show that the assignee was diligent in endeavoring to obtain a statement from the inventor. Held, that a statement made by the assignee should be accepted even though filed shortly after the expiration of the time for filing preliminary statements. Reynolds v. Bean, C. D. 1902, 100 O. G. 1763. 1805. Where a motion is brought to extend the time for filing preliminary statements and no definite period is specified in said motion. Held, that to grant the motion would place the interference in a state of indefinite suspen- sion, and for this reason the motion should be denied. No interference should be sus- pended for an indefinite period. Keech v. Birmingham, C. D. 1902, 101 O. G. 2825. 1806. Delays in the grant of a patent affect not merely the interests of the parties, but also the interests of the public, and as the representative of the public the office is not bound to approve delays merely because the parties consent. Sponsel v. Darling, C. D. 1903, 105 O. G. 498. 1807. Where by stipulation a party is given three months within which to file a prelim- inary statement, but fails to file it and allows judgment to be entered against him and there- INTERFERENCE, XXXI, (e). 315 after makes a motion to vacate the judgment and to be permitted to tile a statement alleg- ing merely that he was too busy to prepare it sooner, Held, that the motion will be denied. Fowler V. Boyce v. Temple and (ioodrum v. Dyson v. McBerty, C. U. 1903, 107 O. G. 543. 1808. Where a motion to vacate a judgment of priority is not based upon newly-discovered evidence, the question of primary importance is why the facts were not sooner presented by proper motion. Id. 1809. Where the motion to amend was not brought for nearly two months after the orig- inal statement was tiled and no explanation was given as to the cause of the long delay, Held, that this is another reason why the motion should be denied. Brown v. Cutler V. Keeney, C. D. 1903, 104 O. G. 1896. 1810. Where a motion to amend a prelim- inary statement is brought after the testimony of the opposing party has been taken, it is always a suspicious circumstance, and the showing in support of such a motion is to be carefully scrutinized. Pope and Mims v. Mc- Lean, C. D. 1903, 104 O. G. 2147. 1811. Where it is said that the original statement was carefully prepared after due consultation with parties who were thought to know the facts and that it was not deter- mined to file a motion to amend until after consultation with certain witnesses just prior to the taking of testimony and it appears that these witnesses could have been consulted earlier. Held, not to constitute such a showing as would warrant the amendment in tola of the original preliminary statement. Id. 1812. Where party bases a motion to amend his preliminary statement upon the discovery of a sketch, but it appears that he did not disclose it to his attorney or take any steps to amend for more than a month after dis- covering it, during which time the opposing party look his testimony. Held, that the mo- tion will be denied. Andrew v. Nilson, C. D. 1903, 10.5 O. G. 2059. 1813. Where a party asks for an extension of time for tiling preliminary statements and it appears that the notice of interference was delayed in reaching him and he moved prompt- ly after receiving notice and is not seeking to make his statement after learning his oppo- nent's dates. Held, that the request will be granted. Doble v. Eckart v. Henry, Jr., C. D. 1904, 110 O. G. 604. 1814. Where it appeacs that an applicant was reasonably diligent in his endeavors to obtain the data necessary to make a complete preliminary statement and that it was not pos- sible to tile a complete statement until nine days after the time set had expired. Held, that the statement, though liled late, should be accepted. Charlton v. Sheldon, C. D. 1904 111 O. G. 2492. 1815. Delay in bringing a motion to amend a preliminary statement will not be excused merely because negotiations were pending be- tween the parties to the interference looking to the settlement of the case. Bradley v. Mig- gett, C. D. 1910, 150 O. G. 1042. (c) Testimony at I'ariance. 1816. Where testimony was introduced to prove things alleged to have been done prior to the dates set up in a preliminary statement Held, that such testimony cannot be regarded as having any weight. *Id. Bader v. Vajen, C. D. 1899, 328, 87 O. G. 1235. 1817. The rule of the patent office pre- scribing that "the parties will be strictly held in their proofs to the dates set up" in their preliminary statements is in accordance with right, reason, and with the principles of jus- tice, for otherwise parties might be misled to their detriment. *Id. 1818. Where a party to an interference took testimony to prove a reduction to practice of his invention at a date prior to that set up in his preliminary statement. Held, that said tes- timony without amendment to the preliminary statement duly made by the authority of the commissioner of patents was inadmissible and entitled to no consideration. (Colhoun v. Hodgson, C. D. 1895, 122, 70 O. G. 276.) *Cross V. Phillips, C. D. 1899, 87 O. G. 1399. 1819. The suggested possibility that the of- fice may throw out of consideration entirely evidence of an earlier date of invention than that alleged in the preliminary statement and so may not accord to a party even the date al- leged. Held, not alone a sufficient ground upon which to permit an amendment to the state- ment, since to so hold would virtually nullify the rule recpiiring diligence. The statement would then have no useful purpose or effect, since in all cases it would be changed to con- form to the testimony. Miehle v. Read, C. D. 1899, 89 O. G. 354. 1820. .\ party is confined in his proofs to the dates set up in his preliminary statement as to conception and disclosure, and evidence tending to establish an earlier date is inad- 316 INTERFERENCE, XXXI, (e). missible. (Cross v. Phillips C. D. 1899, 342, 87 O. G. 1399.) Funk v. Matteson v. Haines, C. D. 1902, 100 O. G. 1J63. 1821. If amendments to preliminary state- ments were permitted merely to make them conform to the facts shown by the evidence, the rule requiring preliminary statements might as well be abolished. Woodward v. Kennedy, 104 O. G. 1393. 1822. Where a motion to amend a prelim- inary statement is not brought promptly after the discovery of the error it will be denied. Brown v. Keeney, C. D. 1903, 105 O. G. 2G0. 1823. The fact that in the testimony a party makes no attempt whatever to support the allegation of his preliminary statement as to the dates indicates a reprehensible looseness of assertion on his part and tends to discredit him. Schaffer v. Dolan, C. D. 1904, 108 O. G. 214G. 1824. Where the evidence on behalf of a party to an interference shows that the inven- tion was made at a date later than that al- leged in the preliminary statement. Held, that the evidence is not to be disregarded because of the variance from the statement. *Herman V. Fullman, C. D. 1904, 109 O. G. 288. 1825. Where the dates proved are later than those alleged in the preliminary statement no harm or prejudice is caused to the opposing party, and since it is a general rule that no attention will be paid to technical objections which have caused no substantial injury. Held, that the evidence will not be disregarded. *Id. 1826. Where the facts established by the testimony are so much at variance with the allegations in a preliminary statement as to make it evident that the statement was made without due regard to the facts. Held, that such "looseness of assertion in the preliminary statement tends to discredit" the party filing such statement. (Shaffer v. Dolan, ante, 592, 108 O. G. 2146.) Miles V. Todd, C. D. 1904, 112 O. G. 1479. 1827. Where a contestant alleges in his pre- liminary statement that he made a model on a certain date. Held, that he is restricted to the allegation in his statement and that there is no foundation to introduce testimony of re- duction to practice upon this date. Basch v. Ilanmiond, C. D. 1904, 113 O. G. 551. 1828. Where a party presents evidence of completion of the invention prior to the date to which he is restricted by his preliminary statement, Held, that such evidence is entitled to some consideration upon the question of diligence as tending to show that he had some reason to be satisfied with the practicability of his device. Hammond v. Basch, C. D. 1905, 115 O. G. 804. 1829. It is essentia! in interference proceed- ings that preliminary statements made by the respective parties without knowledge of their opponents' cases should not be disregarded when the proofs are taken. Fowler v. Boyce, C. D. 1905, 118 O. G. 2534. 1830. Where a party has been refused per- mission to put back his dates as set out in his preliminary statement after seeing his ad- versary's dates, any attempt to prove the ear- lier dates is contrary to the rules of the pat- ent office and to the general rules applicable to pleading in courts of law. *FowIer v. Mc- Berty, C. D. 1906, 121 O. G. 1015. 1831. Where a party in order to prevail de- pends upon earlier dates than those alleged in his preliminary statement and permission to amend the statement to set out said earlier dates has been refused. Held, that testimony relating to such earlier dates must be disre- garded. *Id. 1832. Where the junior party is limited by his preliminary statement to date subsequent to the opposing party's record date, there is no good reason for examining the testimony of such junior party attempting to prove dates earlier than those set up in such preliminary statement where permission to amend the pre- liminary statement was asked and refused. *Fowler v. Boyce, C. D. 1906, 122 O. G. 1726. 1833. Where leave to amend a preliminary statement is asked and refused by the patent office, testimony tending to establish dates ear- lier than those alleged cannot be considered on the question of priority, even with the con- sent of counsel, unless expressly approved by the commissioner of patents or his represen- tatives. *Id. 1834. Cases may often arise where the in- terest of the parties and the public will be best subserved by permitting dates earlier than those set forth in preliminary statements to be proved. It should, however, be done under the supervision of and with the approval of the patent office. *Id. 1835. Testimony tending to establish dates earlier than those alleged in the preliminary statement will not be considered either by the tribunals of the patent office or by the court of appeals on appeal from the commissioner of patents unless timely amendment of such statement is made and the court is without INTERFERENCE, XXXI, (f). 317 power to consider such testimony where leave to amend is asked and refused. *Lowrie v. Ta.vlor and Taylor, C. D. 1906, 123 O. G. 1663. 1836. A party is not called upon to rebut any testimony of his opponent tending to es- tablish dates earlier than those set up in the opposing party's preliminary statement. *Id. 1837. Where the preliminary statement of a party alleges than an "experimental" de- vice was constructed in January, 1901, and no date of reduction to practice is given, such party will not be restricted to the date of his application for his reduction to practice where no objection was made to the statement on the ground that it was indefinite. (Hammond V. Basch, C. D. 190.5, 615, 115 O. G. 804, 24 App. D. C. 469, distinguished.) *Burson v. Vogcl, C. D. 1907, 127 O. G. 2393. 1838. Where a party gave notice at the con- clusion of the taking of his testimony that he proposed to bring a motion to amend his pre- liminary statement to conform to his proofs, but failed to bring the motion until after the testimony of the opposing party was taken and filed, although the error to be corrected by such amendment was known to him at least two months before notice of the proposed amendment was given, Held, that amendment will not be permitted, as no excuse is offered for the delay, and it does not appear that the evidence on which the motion was based was not accessible or would not have been dis- covered before preparing the original state- ment had proper care and diligence been ex- ercised. Green v. Farley, C. D. 1908, 132 O. G. 235. 1839. Where the preliminary statement of a parly alleges reduction to practice in January, 1005, evidence showing the construction of an alleged model in 189:" cannot be accepted as proving an earlier date of reduction to prac- tice. Phillips v. Sensenich, C. D. 1908, 132 O. G. 677. 1840. Where the allegations made by an applicant in his preliminary statement and in atfidavits filed during the ex parte prosecu- tion of his application are not at all supported by the testimony offered on his behalf in the interference. Held, that this variance tends to discredit the value of the testimony. Barnes V. Swartwout, C. D. 1910, If.l O. G. 1045. (f) Extension nf Time. 1841. When a motion is brought for a defi- nite extension of time for filing preliminary statements and the request is a reasonable one. Held, that the examiner of interferences did not exceed the discretion given him by the rules in granting the motion, although there was no notice of service of such motion. The denial of such a request would be warranted only in an extraordinary case. Bailey v. Davis, C. D. 190.!, 102 O. G. 819. 1842. Where a party makes a motion for an extension of time for filing his preliminary statement and such motion is made within the time originally allowed for filing the state- ment, but is not served on his opponent, the examiner of interferences may in his discre- tion dispense with notice of service of the motion. Quick v. McGec, C. D. 1903, 107 O. G. 1376. 1843. Where a party is unable to prepare his preliminary statement within the time fixed, it is his duty to present the facts to the office and ask for an extension of time be- fore he is in default or as soon as possible. Fowler v. Boyce v. Temple and Goodrum v. Dyson v. McBerty, C. D. 1903, 107 O. G. 543. 1844. Where a party through carelessness or lack of attention supposed that a notice of interference which he received related to one case in which he did not wish to file a pre- liminary statement and after his time had ex- pired he discovered that it related to another case which he wished to contest and he asked that he be permitted to file a statement. Held, that his motion was properly denied. Hart- ley V. Mills, C. D. 1904, 110 O. G. 2236. 1845. Parties will not be relieved of the ef- fects of their negligence and carelessness in the matter of preparing preliminary state- ments. Id. 1846. Held, that the question of extension of times for filing preliminary statements is left wholly within the discretion of the ex- aminer of interferences, and from his decision upon these matters no appeals will lie. Ohnier V. Neth and Tamplin, C. D. 190.5, lis O. G. 16S6. 1847. Where in the opinion of the appli- cants the decision of the examiner of inter- ferences upon the question of extension of times for filing preliminary statements would involve hardships upon them, an appeal may be allowed by the commissioner; but in all such cases the decision of the examiner of interferences must be complied with until such appeal is allowed. Id. 1848. Where the time for filing prelim- inary statements had been extended several 318 INTERFERENCE, XXXII. months in view of the mental condition of one of the parties, Held, that a motion for further extension was properly denied where the only showing in support of the motion is the affidavit of a physician stating that in his opinion the apphcant will in a few months be sufficiently recovered to be reliable as to his recollection of past occurrences. Churchill v. Goodwin, C. D. 1908. 132 O. G. 18,!8. 1849. Permission to file a preliminary state- ment will not be granted when filed nearly four months after the expiration of the period allowed for such action and after the granting of two extensions of time for the taking of testimony where it appears that applicant's counsel notified the assignee of an undivided half interest of the interference and asked him to secure from the applicant the informa- tion necessary to make a preliminary state- ment and that said counsel addressed a letter to applicant advising him about the prelim- inary statement, which presumably was deliv- ered, as it was not returned. Whether appli- cant had actual notice or not, the failure to obtain the necessary data by counsel or by the assignee was negligence with which applicant is chargeable. Anderson v. Peck, C. D. 1908. 133 O. G. 229. 1850. The question of the extension of times for filing preliminary statements will be left wholly within the discretion of the examiner of interferences, and no appeal will lie from his decisions thereon. Lukaszewske v. Cole, C. D. 1908, 134 O. G. 1050. 1851. Judgment of priority was rendered against C. because of his failure to file a preliminary statement within the time set. Held, that the extension and limitation of time within which a party to an interference shall file his preliminary statement is within the discretion of the commissioner, and his refusal to extend such time is not subject to review by the court of appeals of the District of Columbia unless it clearly appears from the record that he has abused his discretion. *Churchil! v. Goodwin, C. D. 1909, 141 O. G. 568. XXXII. P.\TUNTEE. 1852. Where an applicant has adopted the claims of a patent, in any subsequent interfer- ence in which such claims constitute the issue they must be construed to have the meaning which the patentee intended them to have. Latham v. Force and Parenteau, C. D. 1898, 82 O. G. 1690. 1853. In an interference between an appli- cant and a patentee in which the issue is the same claim in both cases the applicant will not be permitted to force upon the issue a con- struction whereby the patent will be rendered invalid if any other construction is practi- cable. Id. 1854. While there is no interference in fact between Park's application and Davis's patent, yet in view of the fact that the interference has proceeded to final hearing and that Davis is a patentee whose patent cannot be recalled by the patent office. Held, that it is best not to direct that the interference be dissolved, but to award priority on the issue in contro- versy to Park. Park v. Davis, C. D. 1898, 84 O. G. 146. 1855. So long as the claims of an applicant stand rejected they cannot be placed in inter- ference with similar claims of a patent, al- though that patent was granted during the pending of the application. Ex parte Russell, C. D. 1898, 84 O. G. 2021. 1856. After reviewing the testimony. Held, that the explanation of Dickey as to delay in applying for a patent, while plausible, was not satisfactory ; but the proofs show that he was the first inventor, and priority awarded to him over the patentee, Fleming. *Dickey v. Fleming, C. D. 1898, 83 O. G. 1348. 1857. Where two applications were pending at the same time and one went to patent hav- ing claims that the other did not contain, which claims were subsequently inserted in the application remaining in the office, and an interference was demanded with the patent, upon petition from the examiner requiring that an afl5davit should be filed under Rule 94 (2) before the interference would be declared, Held, that in view of Rule 9fi, which requires an examiner to notify one party of the claims made by the other, the patent was inadvertent- ly allowed, and the applicant should not be prejudiced by the fact that the examiner over- looked or ignored Rule 96. Ex parte Tizley, C. D. 1899, 89 O. G. 2259. 1858. Held, further, that had the examiner observed the rule he would not have re- quired an affidavit under Rule 94 (2), but would have declared the interference under section 1 of that rule. In such a case as this the second section of the rule does not apply, and the interference should be declared and the rights of the parties determined on the same ground as if both were applicants. Id. INTERFERENCE, XXXII. 319 1859. A petition from the examiner's re- fusal to declare an interference between the apphcant's case and a patent granted to an- other on the ground that the claims do not conflict dismissed, since the applicant cannot be regarded as injured by the action. Ex parte Gibboney, C. D. JQOS, 10.5 O. G. 976. 1860. Where the office allows the claims made by the applicant, he has no good ground for complaint merely because he does not acquiesce in the reasons which influence the office to grant his request for a patent. He cannot appeal from a favorable decision. Id. 1861. Where the only effect of a favorable decision on a motion to dissolve would be to cast a cloud on a patent, such motion should not be transmitted. Bellows v. King, C. D. 1903, 105 O. G. 997. 1862. Where it appeared that B. was a pat- entee and K. an applicant for reissue and K. having copied certain claims in B.'s patent brought a motion to dissolve an interference as to these claims on the ground that they were not patentable. Held, that such motion should not be transmitted to the primary ex- aminer. Id. 1863. The real question which the oflice de- sired to determine in instituting the interfer- ence between B. and K. is whether K. is en- titled to a patent, and if K. on his own ad- mission is not entitled to a patent the very purpose of the interference fails. Id. 1864. Where the application of O. on which a patent issued was copending with a joint application of two parties, one of which filed a sole application after the issue of a patent for a different species from that covered by the joint application, and the circumstances arc such that the claim made in the joint ap- plication might have been suggested to O. and in the event of declaring an interference there- on the joint applicants would have obtained knowledge of the pendency of O.'s applica- tion, Held, that the fact that such interfer- ence was not declared furnishes no foundation for the sole applicant's contention that the patent was irregularly issued. Quist v. Os- trom, C. D. 1903, 106 O. G. 1501. 1865. A distinction must be made between a case where a party's patent was regularly granted while the opposing party's application was forfeited and a case where the patent was granted while the opposing party's application was pending, but contained no claim corre- sponding to the issue. (Christensen v. Noyes, C. D. I'j'oo, 301, 90 O. G. 223, distinguished.) Lowny v. Spoon, C. D. 1904, 110 O. G. 858. 1866. Where an applicant who is in inter- ference with a patentee makes a motion for dissolution on the ground that the issue is not patentable, Held, that the motion will not be transmitted to the examiner, since the only effect of it would be to cast a cloud upon the patent. Robins, Jr. v. Titus and Titus, C. D. 1904, 110 O. G. 310. 1867. Where an interference is declared between a patent and an application and the patentee files a motion for dissolution within the time fixed by the rule and it is in proper form. Held, that the motion should be trans- mitted to the primary examiner for decision. (Bellows V. King, C. D. 1903, 328, 106 O. G. 997, distinguished.) Fickinger and Blake v. Hulett, C. D. 1904, 110 O. G. 8.-.9. 1868. A motion for dissolution of an inter- ference filed by a patentee is not to be re- fused consideration upon the suggestion that it may cast a cloud on the patent, since the moving party is the one chiefly interested in that matter. Id. 1869. Where Hallberg is a patentee and Hull, an applicant who has copied certain claims from the patent, brought a motion to dissolve the interference on the ground that Hallberg has no right to make the claims. Held, that the motion should be transmitted. Hull V. Hallberg, C. D. 1904, 110 O. G. 1428. 1870. Where an interference is declared be- tween a patentee and an applicant, the real question which the office desires to determine is the right of the applicant to a patent, and if that right appears on the face of the papers there is no necessity for continuing the inter- ference. Id. 1871. Where an interference is declared be- tween a patentee and an applicant whose ap- plication is filed after the grant of the patent, Held, that upon a motion to dissolve by the applicant the burden will be upon the moving party to show beyond a reasonable doubt that his motion should prevail. Id. 1872. Where one of the parties to an inter- ference is a patentee and the applicant brings a motion to dissolve the interference on the ground that the issue is not patentable. Held. that the office is justified in accepting the ap- plicant's contention that his claims are not patentable, and his conduct is such as to estop him from hereafter insisting upon his right to the claims of the issue. Robins v. Titus and Titus, C. D. 1904, 111 O. G. 584. 320 INTEKl'KRENCE, XXXIII, (a). 1873. Where it appears that one of the parties to an interference is a patentee and the applicant brings a motion to dissolve the interference on the ground that the issue is not patentable, Held, that the interference should be dissolved and the application re- manded to the primarj' examiner for c.r ['arte action. Id. 1874. Where one of the parties to an inter- ference is a patentee and the applicant brings a motion to transmit a motion to dissolve on the ground that the issue is not patentable, the examiner of interferences should refer the case to the commissioner, under Rule l:i6, and call attention to the fact that the applicant contends in his motion that the issue is not patentable. Weissenthanncr v. Golstein, C. D. inn4, 111 O. G. 810. 1875. Where one of the parties to an inter- ference is a patentee and the applicant brings a motion to dissolve on the ground that the issue is not patentable, Held, that the inter- ference will be dissolved, and the applicant will thereafter be regarded as estopped from insisting upon the claims. Id. 1876. Where an applicant copies claims of a patent for the purpose of provoking an in- terference, but when these claims are attempt- ed to be read upon the construction illustrated by the applicant the meaning of the w'ords has to be forced and constrained, and even then it is impossible to read them upon his con- struction. Held, that such claims embody new matter and are not patentable to the appli- cant. Ex parte Dilg. C. D. 1904, 113 O. G. 547. 1877. Where an applicant copies the claim of a patent for the purpose of provoking an interference. Held, that if there is any doubt as to the meaning of the issue it shall be con- strued in the light of the disclosure in the patent. Funk and Mickcl v. Whitely, C. D. !!)(».-,, 114 O. G. 471. 1878. Where two applications are pending contemporaneously and one goes to patent. Held, that an interference may be declared between the patent and the application without calling upon the applicant for an afifidavit as to prior invention, under Rule 94. Ex parte Simonds, C. D. 1905, 114 O. G. 1544. 1879. Held, that an interference should not be declared between a pending application and an unexpired patent when the claims corre- sponding to the proposed issue are under final rejection. Ex parte Dukes, C. D. 1905, 115 O. G. 803. 1880. Where an applicant adopts a claim of a patent for the purpose of procuring an interference, Held, that the meaning of the issue is to be determined by the specification of that patent. *Funk et al. v. Whitely, C. D. 1905, 112 O. G. 280. 1881. ,\ patentee whose patent issues while the application of another party for the same invention is pending in the patent office ac- quires as against that other party no rights by the issuance of the patent. DeFerranti v. Lindmark, C. D. 1908, 134 O. G. 515. 1888. Where an applicant makes claims identical with those of a patent and the ex- aminer holds that when construed broadly enough to read upon the applicant's device the claims are unpatentable. Held, that this is in eflfect a holding that applicant has no right to make the claims, and a request for inter- ference was properly denied until the question of patentability of the claims to him had been settled. Ex parte Riddle, C. D. 1909, 145 O. G. 1021. 1883. A motion to dissolve alleging that the counts have different meanings in the two cases and that R. has no right to make the claims. Held, properly transmitted, notwith- standing the fact that R. is a patentee. Blood V. Ross, C. D. 1910, 161 O. G. 267. 1884. In an interference involving a pat- entee and an applicant a motion to dissolve brought by the applicant and alleging that if the counts be construed broadly enough to read on both cases they are unpatentable, Held, properly refused transmission. Id. XXXIII. Priority. (a) In General. 1885. Although priority of invention is awarded to D. over F., yet it is not to be understood by the decision in awarding prior- ity to D. that he is entitled to a patent for his invention, for from the statements of the commissioner and the board of examiners the inference to be drawn would seem to be that D.'s device is found to be wanting in patent- ability and therefore that the declaration of interference was based upon mistake or in- advertence. *Dodge V. Fowler, C. D. 1898, 82 O. G. 595. 1886. Motion to define the status of the parties as to seniority in advance of final hearing denied. Converse et al. v. Kerst, C. D. 1898, 84 O. G. 1146. INTERFERENCE, XXXIII, (a). 321 1887. The question of the exercise of rea- sonable diligence in adapting and perfecting the invention, and also the question of aban- donment, from long-settled practice are prop- er to be considered and determined in deciding upon the principal question of priority of in- vention. *Christcnsen v. Noyes, C. D. 1900, 90 O. G. 227. 1888. Between rival inventors, the date of the invention in issue is fixed at the time at which a complete and intelligible embodiment by which those skilled in the art can under- stand it is presented, but it would also appear to be settled that the date of an invention may be prior to the time the invention is embodied in a form capable of being patented. *Id. 1889. In an application for a patent relating to machinery, the invention may be exhibited as well in a drawing as in a model, so as to lay the foundation of a claim to priority, if such drawing be sufficiently plain to enable those skilled in the art to understand it. *Id. 1890. Where the appellees were the first to conceive the invention and were the first by three days to file their application. Held, that they are entitled to the award of priority of invention and the decision of the assistant commissioner affirmed. *Ostergren et al. v. Tripler, C. D. 1901, 9.-) O. G. 837. 1891. Where S. alleges the earlier dates of conception and reduction to practice, but the evidence shows that his first machines were unsuccessful and that he did not construct a satisfactory machine until after he had seen M.'s invention. Held, that the decision award- ing priority to M. must be affirmed. *Swihart v. Mauldin. C. D. 1902, 99 O. G. 2322. 1892. Held, that the testimony in behalf of McKnight, the junior party, fails to establish a conception of the invention prior to the date of filing of the application by Pohle and Croasdale, the senior party, and that therefore priority of invention should be awarded to Pohle and Croasdale. McKnight v. Pohle and Croasdale, C. D. 1903, lO.") O. G. 493. 1893. When McKnight alleges a conception of a specific invention prior to the date of filing by him of an application for a patent covering the broad invention and no mention of the specific invention appears in the record of the application prior to an admitted disclo- sure to him of the specific invention by the opposing parties when an amendment is filed by him relating to the specific invention. Held. that these circumstances are alone sufficient, unless explained, to warrant the conclusion 21 that McKnight never independently invented the specific invention of the issue. Id. 1894. Held, that the junior party, Harris, has failed to show a conception of the inven- tion before his opponent's filing date and that priority of invention was properly awarded to Stern and Lotz. *Harris v. Stern and Lotz, C. D. 1903, lOf) O. G. 746. 1895. Where neither party proves actual reduction to practice of the invention, but the junior party. Greenwood, was the first to con- ceive the invention and disclose it to the senior party before his application was filed. Held, that the junior party must be regarded as the first inventor. *Greenwood v. Dover, C. D. 1904, 109 O. G. 2172. 1896. Where T. admits that he did not con- ceive the invention in issue until after he had seen D.'s invention as disclosed in D.'s appli- cation. Held, that T. cannot be adjudged the prior inventor upon the contention that D.'s application does not disclose the issue. The contention, if sound, warrants dissolution, not judgment. Jenner v. Dickinson v. Thibodran, C. D. 190.5, 116 O. G. 1181. 1897. If party cannot establish priority of invention over opponent, he is not entitled to patent, and whether the opponent is entitled to one is question for ex parte considera- tion by the office. Id. Gurneiffet, Benoit and Nicault V. Wictorsohn, 117 O. G. 1492. 1898. Where the testimony of the witnesses on the part of Bliss was given long after the event and is by no means satisfactory. Held, that priority should be awarded to McElroy. Bliss V. McElroy, C. D. 1906, 122 O. G. 2687. 1899. While the award of priority by the examiner of interferences is ordinarily a ground for rejecting claims of the unsuccess- ful party by the primary examiner, it is a different question from that of the patenta- bility of the claims, requires the consideration of entirely different subject-matter, and gives rise to a different class of appeals. Cheney v. Venn, C. D. 1906, 12.5 O. G. 1703. 1900. Where the examiner of interferences awarded priority of invention to one party on the ground that the application of his oppo- nent fails to show an operative device. Held. that the operativeness of an applicant's de- vice affects his right to make the claim and that the action of the examiner of interfer- ences was in accord with the rules and deci- sions. Greenawalt v. Mark, C. D. 1907, 126 O. G. 1063. 322 INTERFERENCE, XXXIII, (b). 1901. The decision of the examiner of in- terferences is not a rejection of the claims under section 4903. Revised Statutes, although it may form a basis for such rejection by the primary examiner under Rule 132. Id. 1902. Where neither the testimony presented by S. nor that offered in behalf of D. satis- factorily establishes conception of the inven- tion in issue, Held, that each party must be restricted to the date of filing of his applica- tion for conception and constructive reduc- tion to practice, and since D. was the first to file, priority of invention must be awarded to him. Sherwood v. Drewsen, C. D. 1907, 130 O. G. 657. 1903. Appellants built in a foreign country a machine embodying the invention in issue, which was explained to an agent who came to this country. Held, that even if this agent remembered what was explained to him such knowledge on his part, in the absence of dis- closure to others or reduction to practice by himself within a reasonable time, would not be equivalent to an introduction of the inven- tion into this country. *Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D. 1908, 134 O. G. 779. 1904. No appeal lies from a favorable deci- sion of the examiner of interferences upon the sufficiency of the showing in support of a mo- tion to take testimony on the question of the operativeness of another party's device. Mar- tin v. Goodrum v. Dyson v. Lattig and Good- rum, C. D. 1908, 134 O. G. 1297. 1905. Where in an intsrference between sev- eral parties the preliminary statement of the junior party fails to overcome the filing date of the senior party, but does overcome the filing date of an intermediate party, and such junior party raises the question of the opera- tiveness of the senior party's device and is entitled to argue such a question at final hear- ing. Held, that it is proper to assign such junior party time to take testimony on the question of priority and also, upon sufficient showing, upon the question of the operative- ness of the senior party's device. All ques- tions relating to priority should be tried out in one proceeding and not piecemeal. Id. 1906. Where one of the parties to an inter- ference added the claims in issue by amend- ment without a supplemental oath, the court of appeals would not be justified in awarding priority to the opposing party because of such failure. The most that the court could do under the circumstances would be to remand the proceeding, in order that a supplemental oath may be made and the matter renewed. ♦Phillips V. Sensenich, C. D. 1908, 134 O. G. 1806. 1907. Where the evidence fails to show any activity on the part of S. from July, 1903, to December, 1906, when he filed his application, and in the meantime C. enters the field and gives the public the benefit of his discovery by manufacturing several hun- dred devices embodying the invention, in order to prevail S. must prove his case beyond a reasonable doubt. (Warner v. Smith, C. D. 1898, .517, 84 O. G. 311, 13 App. D. C. 111.) »Schmidt V. Clark, C. D. 1909, 138 O. G. 768. 1908. A would-be inventor frequently has a nebulous and general idea of a result which he wishes to accomplish and possibly a gen- eral idea of means to accomplish that result, but, being unable to give his ideas practical form, allows them to slumber. Upon learning that another has successfully worked out such ideas the mists of uncertainty are immediate- ly dissipated, vagueness takes definite form, and the would-be inventor becomes in his own mind the actual inventor and acts accordingly. The danger and opportunity for fraud or mis- take in such cases are so great that the proof should be very clear and very convincing to warrant an award to the dilatory party. *Id. (b) Foreign Patents. 1909. Appert took no testimony, but relied upon a French patent dated October 19, 1893, which was issued and published on January 12, 1894. Schmertz proved conception on January 10, 1894, and reduction to practice on January 17, 1894. Held, that Appert's date of invention is January 12, 1894, the date of the publication of his foreign patent, and as there was no delay on Schmertz's part be- tween the date of his conception and the date of his reduction to practice priority is awarded to Schmertz. Schmertz v. Appert, C. D. 1898, 83 O. G. 1511. 1910. It is the settled rule of the office that it is the date of the publication of the foreign patent and not the date of the application therefor that controls in interference proceed- ings. (De Ferranti v. Westinghouse, Jr., C. D. 1890, 114, 52 O. G. 457; Appert v. Parker, C. D. 1896, 5, 74 O. G. 1587.) This is also the rule of the courts. (Am. Bell Telephone Co. V. Cushman et al., C. D. 1893, 546, 65 O. G. INTERFERENCE, XXXIII, (b). 323 135.) The case of Hanifen v. Godshalk (C. D. 1897, 375, 79 O. G. 510) seems to hold the contrary; but the weight of authority is clear- ly as first above stated. Id. 1911. Held, that Triplcr did not invent the process and apparatus for liquefying air until after Linde had obtained a foreign patent upon it in June, 1895, and therefore priority awarded to Linde. Tripler v. Linde, C. D. 1902, 101 O. G. 2288. 1912. The popular belief that Tripler was the first to make liquid air is entitled to no weight in this proceedings, since it is based upon what was done by Tripler after Linde had obtained a foreign patent on the inven- tion. Id. 1913. Where the subject-matter of T.'s earlier application had been patented by him abroad and in his oath to his present appli- cation he alleged that he had obtained no for- eign patent upon the present invention, Held, that this shows that T. did not regard the two as the same and that the claim that the foreign patent discloses the invention was an after- thought. Id. 1914. Where B. establishes a conception of the invention of the issue on April 24, 1900, a reduction to practice on July 24, 1900, and it appears that he was diligent in reducing the invention to practice, and R. rests his case on a French patent granted to him July 18, 1900, on an application filed April 2, 1900, Held, that B. is the prior inventor. Rousseau v. Brown, C. D. 1903, 103 O. G. 659. 1915. Where the application in this coun- try was filed more than twelve months after the application abroad, Held, that the appli- cant cannot in interference obtain the benefit of his foreign filing date under section 4887, Revised Statutes, as amended. Muller v. Lau- ber, C. D. 1903, 106 O. G. 2016. 1916. The second clause of section 4887 does not merely establish a new rule of evi- dence, but confers upon applicants a distinct right which they did not possess before, and therefore it is not to be given a retroactive effect. Id. 1917. The amendment to section 4887 does not enable the applicant to prove the filing of his foreign application by evidence of a different character, but attaches a different legal effect to the act itself. To give it a ret- roactive effect might disturb vested rights. Id. 1918. Since the office is not final in interfer- ences and since no court has ruled upon the question whether section 4887, Revised Stat- utes, as amended March 3, 1903, is retroactive, the office should not exclude evidence under that section, because, in its opinion, the amend- ment to the law does not apply to cases filed before its passage. Id. 1919. Where a party whose application was filed before the act of March 3, 1903, amend- ing section 4887, Revised Statutes, moves to take testimony in England to prove the filing of an English application within one year be- fore his application here, Held, that the mo- tion should be granted, so that he may, if de- sired, contest the question as to the compe- tency of the evidence by appeal to the court of appeals. Id. 1920. The second clause of section 4887, Revised Statutes, conferring upon applicants the benefit of the date of foreign applications filed within twelve months before the appli- cation here, applies only to applications filed after the amendment of March 3, 1903. Stiff v. Galbraith, C. D. 1903, 107 O. G. 2532. 1921. Where the date and contents of a foreign patent are proved, the burden is upon the party against whom it is used to show that it was not published or open to public inspec- tion on the date which it bears. Robin v. Muller and Bonnet, C. D. 1904, 113 O. G. 2506. 1922. Where the senior party moves for judgment on the record and his record date is prior to the date of introduction of the in- vention into this country set up in the pre- liminary statement of his opponent. Held, that judgment will not be delayed solely that the junior party may take testimony concerning a foreign application which in the opinion of the office cannot affect the result. Brown v. Lindmark, C. D. 1904, 109 O. G. 1071. - 1923. Where B.'s preliminary statement goes back of L.'s record date only by reference to foreign applications and B.'s domestic ap- plication was filed prior to the act of March 3, 1903, Held, that judgment will not be de- layed solely that B. may take testimony con- cerning the foreign applications. Stiff v. Gal- braith, C. D. 1903, 515, 107 O. G. 2532, dis- tinguished. Id. 1924. Where the proofs of the junior party to an interference are insufficient to overcome the date of a foreign patent granted to the senior party, the question whether a foreign patent granted to such senior party stands as a bar to the allowance of his United States ap- plication will be left for ex parte considera- tion after the termination of the interference 324 INTERFERENCE, XXXIII, (c), (d). Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D. 1907, 131 O. G. 1685. 1925. W. obtained a French patent on Sep- tember 25, 1900. The earliest foreign filing date of the opposing party was subsequent to this date, and the evidence did not establish an introduction into this country by said party prior thereto. Held, that priority of invention was properly awarded to W. *Gueniffet, Be- noit, and Nicault v. Wictorsohn, C. D. 1908, 134 O. G. 779. (c) Foreign Applications. 1926. The international convention for the protection of industrial property is not ef- fective to give to an applicant in this coun- try the benefit of priority from the date of his foreign application. Butterworth v. Boral and Kymer v. Ecob, C. D. 1901, 193, 97 O. G. 1596. Rousseau v. Brown, C. D. 1903, 103 O. G. 659. 1927. Held, that the testimony on behalf of Tripler fails to show that he made the in- vention in liquefying air prior to the date of this application, and since Linde had filed his application before that time Linde is the first inventor. Decision of commissioner of patents (C. D. 1902, 444, 101 O. G. 2288) af- firmed. *Tripler v. Linde, C. D. 1903, 102 O. G. 1207. 1928. Where in the oath to his application Tripler alleged that he had obtained no for- eign patents upon the invention and in the interference he subsequently claimed that an English patent granted to him is for that in- vention. Held, that the claim is an after- thought and cannot be maintained without an admission of deliberate fraud and wilful per- jury. *Id. 1929. Lender the second clause of section 4887 of the Revised Statutes as amended March 3, 1903, an application for patent in the United States is not entitled to the date of an application filed by the applicant in a for- eign country prior to March 3, 1903, although the United States application was filed after this date. De Ferranti v. Lindmark, C. D. 1007, 129 O. G. 1610. 1930. Since both France and the United States had adhered to the international con- vention for the protection of industrial prop- erty. Held, priority was properly awarded to L. when it appeared that his French applica- tion was filed prior to any date which could be awarded to W. Latour v. Winter and Eich- berg, C. D. 1910, 156 O. G. 537. 1931. Subsequently to the adherence of France and the United States to the interna- tional convention for the protection of indus- trial property and less than twelve months prior to the filing of his application involved in interference L. had filed an application for patent for the same invention in France. Held, that in the absence of proof that France did not "afford the same privileges to citizens of the L'nited States in the sense contemplated by section 4887, R. S.," L. was entitled to the benefit of the date of filing his French ap- plication. *Winter and Eichberg v. Latour, C. D. 1910, 157 O. G. 209. 1932. W., who filed an application for pat- ent in this country on March 7, 1903, had filed an application for patent for the same inven- tion in Germany on January 14, 1903. Ger- many did not adhere to the international con- vention for the protection of industrial prop- erty till May 1, 1903. Held, that W. is not entitled to the filing date of his German appli- cation as a date of constructive reduction to practice. *Id. 1933. Where it was contended that inasmuch as Dicke's German application subsequently became abandoned it cannot avail Dicke as a constructive reduction to practice, Held, "We perceive no reason why Dicke's German appli- cation, being substantially identical with the present application, should not be held under the statute to constitute a constructive reduc- tion to practice, since had it been filed here it would have entitled him to a patent." ♦Whit- man v. Hearnc et al., C. D. 1910, 156 O. G. 1068. 1934. L.. the senior party, field, entitled to an award of priority, since neither the prior application relied upon by C. nor the British application of De F. discloses the invention in issue. Antis v. De Ferranti v. Lindmark, C. D. 1911, 171 O. G. 215. (d) Prior Conception and Reduction. 1935. Held, that the evidence establishes the fact that Fullman reduced the invention to practice before Herman's date of conception and reduction to practice, and therefore the decision awarding priority of invention to Fullman must be affirmed. *Herman v. Full- man, C. D. 1904, 109 O. G. 288. 1936. Held, that the testimony shows that Dean was the first to conceive the invention, and since he was the first to reduce to prac- tice by filing his application he is to be re- INTERFERENCE, XXXIII, (e), 1. 335 garded as the first inventor. Furman v. Dean, C. D. 1904, 111 O. G. 1366. 1937. Held, that as the testimony presented by L. fails to establish that he had a concep- tion of the invention prior to the date on which H. filed his application, H. is entitled to the award of priority of invention. Lavery V. Heene, C. D. 1905, 115 O. G. 801. 1938. Held, that H. should be awarded pri- ority of invention as he is not only the first to reduce the invention to practice, but also the first to conceive. Id. 1939. Held, that the appellee Voight had conceived and disclosed the invention and re- duced it to practice by May 6, 1902, whereas there is no satisfactory proof in the record that at any time before May 26, 1902, the ap- pellant Hope had a conception of the inven- tion. The decision appealed from awarding priority of invention to Voight affirmed. ♦Hope, Jr. V. Voight, C. D. 1905, 115 O. G. 1585. 1940. Where Dickinson made and used his machine before Thibodeau's date of concep- tion and that machine operated successfully, although it was not so perfect as Thibodeau's machine, Held that Dickinson is the first in- ventor. *Jenner v. Dickinson, C. D. 1905, 117 O. G. 600. 1941. Held, that Wageley and Stocke are original inventors and that they reduced the invention to practice before any date which can be awarded Schroeder for conception. Sehroeder v. Wageley and Stocke, C. D. 1905, 118 O. G. 268. 1942. Where it is established that W. was the first to conceive and the first to reduce to practice, Held, that he is the prior inventor. Funk and Mickle v. Whitely, C. D. 1905, 114 O. G. 971. 1943. Where first tangible evidence of con- ception by F. was dated August, 1901, and reduction to practice by F. prior to his ap- plication date of July 18, 1902, was not es- tablished, and where M.'s application was filed January 24, 1902, and M. has established con- ception as early as May, 1901, Held, that pri- ority of invention must be awarded to M. as the first to reduce to practice and the first to conceive the invention. Fowler v. McBerty, C. D. 1905, 118 O. G. 2535. 1944. Where Fowler is limited by his pre- liminary statement to a disclosure and reduc- tion to practice subsequent to Boyce's record date, Held, that priority should be awarded to Boyce. *Fowler v. Boyce, C. D. 1906, 121 O. G. 1014. 1945. Held, that the appellant had not dis- charged the burden upon him of satisfactorily establishing conception of his invention prior to the filing of the appellee's application and that the decision appealed from should be af- firmed. *Ball V. Flora, C. D. 1900, 121 O. G. 2608. 1946. The evidence considered and Held, to establish that Mclntyre, who was the last to conceive the invention in issue, did not re- duce the same to practice prior to Perry's filing date and that the latter was therefore entitled to an award of priority. Mclntyre v. Perry, C. D. 1911, 170 O. G. 703. (e) Questionable Diligence. 1. In General. 1947. The question of diligence cannot be determined by any general rule applicable to all cases, but necessarily depends upon the special circumstances of each case as it arises. ♦McCormick v. Cleal, C. D. 1898, 83 O. G. 1514. 1948. There is no general rule of what con- stitutes due diligence, that being a question to be determined by all the facts and sur- rounding circumstances in the particular case. Kasson v. Hetherington, C. D. 1899, 88 O. G. 1157. 1949. No hard and fast rule can be laid down as to what constitutes diligence. What is or is not diligence in a given case must depend upon its special facts and circum- stances. Some indulgence is generally ex- tended to an inventor who is engaged in a bona fide attempt to perfect his invention. (McCormick v. Cleal, C. D. 1898, 492, 83 O. G. 1514, cited.) *De Wallace v. Scott et al., C. D. 1899, 88 O. G. 1704. 1950. The diligence required of an inventor is diligence rather in the reduction of his in- vention to practice than in application to the patent office or in manufacturing his device for public use. *01iver v. Felbel, C. D. 1902, 100 O. G. 2384. 1951. By a reduction to practice a party's rights are protected, and it is not necessary thereafter to use the same amount of diligence in putting the invention upon the market as is necessary in a reduction to practice by one first to conceive but the last to reduce to practice. Felbel v. Oliver, C. D. 1902, 100 O. G. 2175. 326 INTERFERENCE, XXXIII. (e), 2, 3. 1952. When reduction to practice by the first inventor is shown, his right to a patent is not barred by delay thereafter unless there be some circumstance of concealment, suppres- sion, or abandonment of the invention. Oli- ver V. Felbel, C. D. 1902, 100 O. G. 2384. 1953. There is no hard and fast rule by which to determine the question of due dili- gence. In other words, there is no general rule of what constitutes due diligence, that being a question to be determined by all the facts and surrounding circumstances in the particular case. *0'Connell v. Schmidt, C. D. 1906, 122 O. G. 2065. 2. In Filing Application. 1954. It is greatly to the interest of the pub- lic that long delay unexplained between the time of the alleged invention and the applica- tion for patent when other inventors have en- tered the same field and other rights have ac- crued should be held to bar stale claims of priority. (Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147; Warner v. Smith, C. D. 1898, 517, 84 O. G. 311.) *Fefel v. Stocker, C. D. 1901, 94 O. G. 433. 1955. Inventors striving honestly, in good faith, and with due diligence to perfect their inventions, instead of engaging in a race of diligence to reach the patent office with crude and probably inoperative devices, should be commended for their delay rather than be charged with laches ; but there is sometimes a tendency to hold back applications for pat- ents in order to circumvent rival claimants and to prolong the life of the monopolies pre- viously granted, which tendency should be re- buked whenever it is possible to do so. *Id. 1956. Where for a period of more than two years L. knew that the device was being man- ufactured and sold by A., and that A. was involved in a controversy with another party in regard to the rights to the invention, but during all of that time L. failed to assert his right to the invention. Held, that this course of inaction is not in accordance with the ordi- nary rules that govern human conduct ♦Lloyd v. Antisdel, C. D. 1901, 95 O. G. 1645. 1957. Unexplained delay in applying for a patent is a circumstance of considerable sig- nificance when considered in connection with other circumstances tending to discredit the applicant's claims. *Sendelbach v. Gillette, C D. 1904, 109 O. G. 276. 1958. Where R. did not file an application for a patent disclosing the combination of ele- ments set forth in the issue until nearly two years after the date of his alleged actual re- duction to practice, but during that two years filed an application for a patent for an inven- tion which lacks one of the most essential elements of the combination. Held, that the fact that this essential element was not dis- closed in the application which he first filed is very significant if he had, in fact, succeeded in reducing the invention to practice, as al- leged. Robinson v. Seelinger, C. D. 1905, 114 O. G. 262. 1959. Where an allegation is made of an actual reduction to practice and it is shown by the record that an application was subse- quently filed, the disclosure of which lacked one of the most essential elements of the issue, and that the application involved in this interference, which discloses all the elements of the issue, was not filed until eighteen months after the first application and twenty-three months after the date of alleged reduction to practice. Held, that the testimony which is presented to establish the actual reduction to practice should be examined with care. Id. 1960. Where Jenner claims to have con- ceived the invention in 1809, but the testimony on his behalf is full of inconsistencies and con- tradictions, and it appears that he waited three years before filing his application and during that time kept his machine concealed under a heap of rubbish, although there was a demand in the trade for such an invention, Held, that he has not established his case. •Jenner v. Dickinson, C. D. 1905, 117 O. G. 600. 1961. Where Jenner saw a notice of Dickin- son's invention in 1900 and did not file his own application for patent until he was in- duced to do so by Hildreth in 1902, Held, that no value can be attached to testimony on his behalf that he made the invention in 1899. *Id. 1962. The inventor is entitled to a reason- able time to perfect his invention before ap- plying for a patent, and what is a reasonable time is dependent upon the circumstances of the particular case. *Mead v. Davis and Var- ney, C. D. 1908, 136 O. G. 2001. 3. In Reduction to Practice. 1963. The burden of proof is not only upon a junior applicant to show priority of inven- tion, but he must also show that he has used reasonable diligence in developing and per- INTERFERENCE, XXXIII, (e), 3. 327 fecting his invention, for in such cases mere conception without actual reduction to prac- tice within a reasonable time amounts to nothing. *Hunter v. Stikeman, C. D. 1898, 85 O. G. 610. 1964. While circumstances such as poverty, sickness, etc., tend to excuse delay in reducing an invention to practice, they will not justify indefinite postponement of action for a period of years, for to allow them to have that ef- fect would be in many cases to close entirely the field of invention against competition and to nullify the purposes of the patent law. *Griffin V. Swenson, C. D. 1899, 89 O. G. 919. 1965. Where an inventor interested a third party to co-operate with him in exploiting and testing an invention and procuring a patent therefor, but without any steps whatever being taken toward the object in view beyond the mere determination to have the invention tested at some time. Held, that such unde- veloped intentions unaccompanied by any ac- tion cannot be held to be due diligence on the part of the inventor. *Id. 1966. Neither the delay that is proper in one case nor the diligence that is due in the other can in the absence of any statutory lim- itation of time in this regard be measured by any arbitrary standard. It has been repeated- ly held that the question of due diligence is one to be determined in each case by its own circumstances. *Id. 1967. While less harm is done and the pol- icy of the law better promoted by a rigid insistence upon the requirement of diligence than by laxity in the encouragement of delay, it does not seem that the rule of diligence should be pushed to a harsh and unreasonable extent. What the law requires is reasonable, not extraordinary, activity. *Id. 1968. For the reasons assigned the commis- sioner's decision, cause No. 116 (65 MS. Dec, 196), affirmed and judgment of priority of invention awarded to appellee ; but his deci- sion in cause No. 117 (56 MS. Dec, 191), re- versed and judgment of priority awarded to appellant. *Id. 1969. Prior conception without prior re- duction to practice will not avail unless there has been diligence in the elaboration of the idea looking toward reduction to practice. ♦Silverman v. Hendrickson, C. D. 1902, 99 O. G. 1171. 1970. The allegation on behalf of S. that he reduced the invention to practice in the summer of 1897 does not show that he re- duced it to practice before June 9. *Id. 1971. The diligence or lack of diligence on the part of the first to reduce to practice is immaterial, since he is prima facie the first in- ventor. His right to a patent can be overcome only by showing prior conception connected with reduction to practice by diligence. Paul V. Johnson, C. D. 1903, 106 O. G. 2013. 1972. Where sickness is alleged as the ex- cuse for delay in reducing to practice or filing an application. Held, that it must constitute a continued disability such as would excuse diligence during the entire period when dili- gence was required to be exercised. *Id. 1973. Where neither party actually reduced the invention to practice, Held, that the senior party, being the first to conceive, is entitled to the award of priority of invention. *Fur- man v. Dean, C. D. 1905, 114 O. G. 1552. 1974. When the lapse of time between H.'s conception and his date of reduction to prac- tice would be fatal if unexplained, but his delay is claimed to have been caused by an in- fringement suit and the same suit is relied upon by B. to explain delay, Held, that B. is in no condition to take advantage of the omis- sion to show what there was in that suit to excuse delay in the matter of this invention. Hammond v. Basch, C. D. 1905, 115 O. G. 804. 1975. In order to bring his case within the doctrine of those cases where inventors were considered diligent who postponed the com- pletion of their inventions in order to complete other devices intimately connected therewith, a party must produce evidence that his inven- tion is not useful except in connection with the devices in whose favor the delay was made. Failing to do so, his opponent is re- lieved from the duty of producing evidence to the contrary, and the party connot thereafter rely upon the absence of such evidence to the contrary to support the contention that the in- vention was not otherwise useful. TurnbuU V. Curtis, C. D. 1906, 120 O. G. 2442. 1976. There is no arbitrary rule or stand- ard by which diligence may be measured. The sole object of the law being to mete out the fullest measure of justice, each case must be considered and decided in the light of the cir- cumstances of that case. The nature of the invention, the situation of the inventor, the length of time intervening between concep- tion and reduction to practice, the character and reasonableness of the inventor's testimony 328 INTERFERENCE, XXXIII, (e), 4, ({), 1. and that of liis witnesses, are all Important factors in determining the question of dili- gence. 'Woods V. Poor, C. D. l'J07, 130 O. G. 1313. 1977. "The question of diligence is one de- pending upon the facts in each case. What is reasonable time in one case may, under the circumstances, be unreasonable in another. The courts will grant great latitude when the inventor has been delayed by reason of cir- cumstances over which he has no control ; but where the delay is caused by the negligence of the inventor, or for a manifest ulterior pur- pose no leniency whatever should be extend- ed." *Nelson v. Faucette, C. D. 1909, 143 O. G. 1348. 1978. The question of what constitutes due diligence in reducing an invention to practice must depend upon the circumstances of each case and cannot be determined by a mere com- putation of time. *Storer v. Barr, C. D. 1910, l->2 O. G. 231. 4. In Prosecuting Application. 1979. Where it was contended that a party was not diligent in the prosecution of his ap- plication in the office, Held, that this has no bearing on the question of priority, since his rights became fixed by the filing of his appli- cation, and they could not be lost and become vested in others by mere delay on his part in their prosecution. Miehle v. Read, C. D. 1901, 96 O. G. 426. 1980. Alleged delays in prosecuting the ap- plication in the patent office cannot operate as a forfeiture of the applicant's rights so long as he complies with the law fixing the time for action on his part. Osborn v. Hotsapillar, C. D. 1903, 102 O. G. 296. 1981. It cannot be said that a party has wilfully or unreasonably delayed giving the invention to the public so long as he has an application for it pending in the patent office. Osborn v. Austin, C. D. 1903, 102 O. G. 1781. (f) Held Diligent. 1. In General. 1982. Cleal's conception and reduction to practice is the date of his application, July 6, 1894. McCormick prepared two applica- tions for patent in February, 1894. One he filed on March 5, 1894, for what is called "ma- chine No. 4." The other application, the one involved in this interference, under which "machine No. 3" had been begun but laid aside for No. 4, was not filed until October 6, 1894. On April 8, 1894, he began "machine No. 5," which contained the locking mechan- ism of No. 4 and differs from the mechanism of the issue merely in the time of the opera- tion of the two sets of keys, in the issue the department-key being first pressed and the cash-key thereby unlocked, while in machines Nos. 4 and 5 the cash-keys are first pressed and the department-keys thereby unlocked. Held, that machine No. 3 fell short of being a reduction to practice; but as, judging by McCormick's actions, he neither saw the su- periority of one mode of operation over the other at the time he was working on the ma- chines nor apprehended that there was a sub- stantial difference between the functions of the mechanism in merely reversing the time of the locking action upon the distinct sets of keys, the locking device being the important improvement, and he appreciating its value, through he may have been mistaken as to the most advantageous mode of its operation and may also for a time have supposed that it was the same invention when operated re- versely, also Held, that under such circum- stances what McCormick was doing during the eight months from the date of preparing his application to the filing of it in the patent office was not unreasonable delay, and priority awarded to him over Cleal. *McCormick v. Cleal, C. D. 1898, 83 O. G. 1514. 1983. Where Roe conceived the invention in November, 1898, made a machine embodying it in August, 1899, and operated it at that time in such manner as to show its practicability, and in March, 1900, first used it in a mill and made the first commercial test of it. Held, that he is entitled to the decision on priority as against Hanson, who conceived in April, 1899, and reduced to practice in July, 1899. *Roe V. Hanson, C. D. 1902, 99 O. G. 2550. 1984. Where Roe conceived the invention in November, 1898, completed drawings in April, 1899, and then commenced work on a ma- chine which was completed in August, 1899, and it appears that he was a very busy man and devoted all of the time that he could spare to work upon this invention. Held, that he was not lacking in diligence. *Id. 1985. Where Roe completed his machine in August, 1899, and wished to place it in the sawmill which he was then building for his company, but was not permitted to do so, and where he placed it in the next mill built INTERFERENCE, XXXIII, (f), 2. 329 in March, 1900, Held, that there was no un- reasonable delay by him in making commer- cial use of his invention. *Id. 1986. A party does not forfeit his rights by a failure to manufacture and put on the market devices embodying his invention after he has filed an application for a patent upon it. Osborn v. Hotsapillar, C. D. 1903, 102 O. G. 296. 1987. Held, that the date of execution of the application is evidence of activity of the inventor at that time. Briggs v. Lillie v. Cook V. Jones and Taylor, C. D. 1903, 116 O. G. 871. 1988. Where the evidence showed activity up to within one month of the filing of the application, Held, that the party would not fail to prevail for lack of diligence. Id. 2. In Filing Application. 1989. It is a settled principle in practice as well as in reason that forbearance to apply for a patent during the progress of experi- ments and until the party has perfected his invention and tested its value by practical experiment affords no ground for presumption of abandonment, nor should such delay oper- ate in any way to the prejudice of the in- ventor or to his right to obtain a patent for his invention, certainly not as against a sub- sequent or junior inventor. *Christensen v. Noyes, C. D. 1900, 90 O. G. 227. 1990. Mere forbearance to apply for a pat- ent during the progress of experiments and until the party has perfected his invention and tested its value affords no ground for pre- suming abandonment. *Christensen v. Noyes, C. D. 1900, 90 O. G. 237. 1991. W. filed an application in April, 1896, disclosing a collar attached to the heel of a knitting-machine needle and inserted between its limbs and so bent around it as to form the letter S. What he actually disclosed to his attorney, and that upon which the application was based, was a collar in shape of the figure 8. In February, 1897, N. filed an application in which he claimed both the S form and the 8 form indifferently. Two successive interfer- ences were then declared, both of which were dissolved on N.'s motions that there was no interference in fact. W.'s application became a patent in August, 1898. In June, 1898, he filed the application which is now in interfer- ence with the application of N. N.'s earliest date of conception is October, 1896, and of reduction to practice January, 1897. Held, that under the circumstances W. should not be charged with laches in filing the applica- tion involved, as the greater part of the delay was due not to his inaction, but to the course of action of the patent office, and being first to conceive and reasonably diligent in con- structive reduction to practice he is entitled to an award of priority. *Newton v. Wood- ward, C. D. 1900, 93 O. G. 2319. 1992. Held, further, that it was only when t was finally determined by the patent office that the S-shaped device and the 8-shaped de- vice were distinct inventions and equally pat- entable that it became incumbent upon W. to take steps for the protection of his invention as he had actually made it. He is not charge- able with any want of due diligence when he acquiesced in the decisions of the patent of- fice. *Id. 1993. Where it is clearly established that D. reduced the broad invention to practice. Held, that his taking out two patents on improved constructions, which he erroneously consid- ered covered the broad invention, cannot de- feat his right to a patent for the broad or original construction. Double v. Mills, C. D. 1904, 112 O. G. 1747. 1994. Held, that D. reduced the invention to practice before M. conceived of the invention, and that therefore D. is the prior inventor. Id. 1995. Where C. is a patentee and is re- stricted to his application date for a con- ception and a reduction to practice, and there is ample testimony in behalf of K. to establish the fact that he actually reduced the invention to practice and caused the invention to be used a few months prior to C's application date, and that C. was employed by K. at that time and had ample opportunity to be- come acquainted with the process, and work of K., Held, that K. should be awarded pri- ority of invention, notwithstanding the fact that no sufficient cause is shown for K.'s delay in making application for a patent until after he has seen C's patent. *Corner v. Kyle, C. D. 1905, 114 O. G. 2092. 1996. Held, that C. was entitled to an award of priority over J. and T. by reason of an earlier conception of the invention, coupled with due diligence, extending from a time be- fore the only date established for J. and T. to the filing of C's application. *Jones and Taylor v. Cooke, C D. 1905, 117 O. G. 1493. 330 INTERFERENCE, XXXIII, (f), 2. 1997. The following acts held to show due diligence throughout the period covered by the dates given ; Opened correspondence with attorney in March, 1902 ; sent check for pre- liminary examination on 2-lth of same month; sent check for drawings on April 2, 1902 ; swore to the application for patent upon May 12, 1902, and filed the same on June 11, 1902. *Id. 1998. Where there was a failure to explain the reason why the application attested on May 12, 1902, and returned to the patent so- licitor was not filed before June 11, Held, considering all the evidence relating to the occupation and means of the applicant and his diligence in the employment and payment of his solicitor, with whom he had not the op- portunity of meeting, and the very short time which was suffered to elapse, that it shows sufficient diligence to entitle him to the benefit of his earlier conception. ♦Id. 1999. Where the junior party establishes conception of the invention as early as Oc- tober 31, 1903, and files his application on Jan- uary 29, 1904, and the senior party stands on his record date of November 28, 1903, for a conception and reduction to practice, and the record shows that there was doubt as to the successful and practical construction of the device, and the junior party, after conceiving and disclosing his invention sought and ob- tained expert opinion on that subject before filing his application, and as the whole period of delay was less than three months and the inventor was an active business man engaged with other matters, Held, that he was reason- ably diligent and should be awarded priority of invention. Green v. Benners, C. D. 1905, 117 O. G. 2631. 2000. Where two years elapsed between a party's alleged reduction to practice and the filing of his application for a patent, during which interval his rival entered the field and secured a patent, Held, that such delay stand- ing by itself does not constitute an abandon- ment of his rights to a patent based on pri- ority of invention. *Rolfe v. Hoffman, C. D. 1906, 121 O. G. 1350. 2001. Where two years elapsed between an alleged reduction to practice and the filing of an application for patent. Held, that neither abandonment nor forfeiture of a right to re- ceive a patent can be presumed, but must be proved. ♦Id. 2002. Where O'Connell conceived and em- bodied the invention in a model which was al- most a reduction to practice, and had it been connected up and tested would have been a reduction to practice, prior to the date when his rival conceived and constructively reduced to practice by filing his application, and where at the time his rival entered the field O'Con- nell was urging that the invention be accepted and patented, and although his application was not filed until a few days over five months after that of his rival the application was pre- pared and executed a month before filing, and where although O'Connell might have had his working model tested in the intervening time it would not, according to his witnesses, ex- pert in the art, have given them any more knowledge of the invention. Held, that there is no rule which under these circumstances re- quires an inventor to rush to the patent of- fice in order to preserve his rights as the first inventor. ♦O'Connell v. Schmid, C. D. 1906, 122 O. G. 2065. 2003. Where an inventor immediately after reducing his invention to practice was sent by his employer from a large city to a com- paratively small town on work which it was supposed would require about sixty days, after which the inventor expected to return to the city and file his application, but because of unforseen delays the work was not completed for about four months, and after his return to the city he took immediate steps to file his application. Held, that he was not lacking in diligence, especially in view of the additional circumstance that his invention related to a highly technical art, a knowledge of which he understood was not possessed by the at- torneys in the town where he was then lo- cated. Dunbar v. Schellenger, C. D. 1906, 125 O. G. 348. 2004. Where the reduction to practice of the invention was clearly established, a delay of two and a half years in filing the application therefor is not sufficient to destroy the weight of proof of actual reduction to practice, es- pecially where it appears that drawings show- ing substantially the same construction as the original device were sent to applicant's attor- neys more than a year before the application was filed and before any one else had entered the field. ♦Seeberger v. Russell, C. D. 1906, 121 O. G. 2328. 2005. Where Poe, who was the first to con- ceive, but the last to constructively reduce to practice, was diligent at the time Scharf en- tered the field and the delay of three months between this time and the filing of his appli- INTERFERENCE, XXXIII, (f), 3. 331 cation was due to no inaction on the part of Poe, but the fact that the attorney for his assignee, who was particularly skilled in the art and prepared all its patent applications, was delayed by other work which had accumu- lated because of his sickness, and the testimony shows that there was no intentional delay upon his part in the preparation of Poe's applica- tion. Held, that Poe was not lacking in dili- gence. Poe V. Scharf, C. D. 1907, 130 O. G. 1309. 2006. After reduction to practice of an in- vention a mere delay of the inventor in apply- ing for a patent, in the absence of concealment, abandonment, or suppression, will not prevent the inventor from getting a patent based upon priority of invention. *Rose v. Clifford and Newell et al., C. D. 1908, 135 O. G. 1361. 3. In Reduction to Practice. 2007. De Wallace had a complete conception of the invention on December 1, 1896, when he employed a skilled mechanic to embody his ideas in a working machine. Scott et al. proved conception on December 8, 1896, and reduced the invention to practice prior to re- duction to practice by De Wallace. Held, that as De Wallace was actually engaged in his efforts to reduce the invention to practice when Scott et al. entered the field, and as his delay in reducing to practice was not unrea- sonable under all the circumstances disclosed by the evidence, priority should be awarded to De Wallace over Scott et al. (Decision of the Commissioner, Scott et al. v. De Wal- lace, 66 MS. Dec, 30, overruled.) *De Wal- lace V. Scott et al., C. D. 1899, 88 O. G. 1704. 2008. W. filed an application on April 13, 1896, which was put in interference on April 20, 1897, with an application of N. filed Febru- ary 16, 1897. W. actually reduced the inven- tion to practice three months after the filing date of N. That interference was dissolved on October 18, 1897, by the assistant commis- sioner, reversing the action of the examiner refusing to dissolve. W. then filed an amend- ment and a new interference was declared, which was also dissolved by the assistant com- missioner on June 1, 1898, reversing the ex- aminer. W. then filed a new application on June 13, 1898, and the present interference was declared. Held, that under this state of facts, leaving out of consideration W.'s actual reduction to practice and relying upon his con- structive reduction, as indicated by the second application, he cannot be charged with laches in reducing the invention to practice, and pri- ority is awarded to him. Woodward v. New- ton, C. D. 1900, 92 O. G. 381. 2009. E. conceived the invention of the issue in March, 1897. It was to be an attachment to a complicated machine. He began to build the full-sized machine, but put on it another and cheaper attachment having the same gen- eral purpose instead of one of the issue. Find- ing the machine worked as a whole, he then, in March, 1898, put on the preferred and more expensive form — that of the issue. Held, that E. used reasonable diligence in perfecting his invention and is entitled to priority over C, who conceived in .'Kugust, 1897, and completed his machine in February, 1898. *Christensen v. Ellis, C. D. 1901, 94 O. G. 2561. 2010. Where E. first developed his general improvements, but in making his first machine added the separate card attachment instead of the autographic-roll mechanism of the issue. Held, under the circumstances shown by the evidence that this was done with no intention to abandon the autographic roll, but upon the suggestion of his backer to save expense. *Id. 2011. Where H. was first to conceive the invention defined in all the counts and the first to reduce the invention to practice as to all the counts save one and exercised due dil- igence in reducing to practice the invention defined in the remaining count. Held, that pri- ority of invention as to all the counts should be awarded to H. Slaughter v. Halle, C. D. 1902, 99 O. G. 2771. 2012. Whoever first perfects a machine is entitled to the patent therefor and is the real inventor, although others may have previously had the idea and made some experiments to- ward putting it in practice, subject, however, to this qualification, that if the party who con- ceives the invention was at the time of a second invention by another party using rea- sonable diligence in perfecting the same he is entitled to be recognized as the first inventor, although the second to conceive may have been the first to reduce to practice, either ac- tual or constructive, (.^gawam Co. v. Jordan, 7 Wall. 583.) *Funk v. Matteson v. Haines, C. D. 1902, 100 O. G. 1764. 2013. It is a fundamental principle of patent law that the first to reduce to practice is prima facie the first inventor and entitled to a pat- ent, and he can be deprived of that right only by showing that some one else was first to 333 INTERFERENCE, XXXIII, (f), 3. conceive the invention and exercised diligence thereafter in perfecting it. *Id. 2014. There is no requirement of law for the exercise of diligence on the part of the first to reduce to practice, and no lack of diligence can be imputed to him, since he was, in fact, the first to give the invention to the public by a reduction to practice. The com- parative diligence of the parties is not ma- terial. *Id. 2015. Where H. is the first to conceive and first to reduce to practice the invention of some of the counts and though first to con- ceive and last to reduce to practice the inven- tion of the remaining counts was diligent in reducing that invention to practice, Held, that H. is the prior inventor as to all the counts. ♦Hillard v. Brooks, C. D. 1904, 111 O. G. 302. 2016. Where T. was the first to conceive, but was later than B. in reduction to prac- tice and was lacking in diligence, and P. was the last to conceive and the last to reduce to practice. Held, that B. is entitled to judgment as the first inventor. Trufant v. Prindle v. Brown, C. D. 1904, 111 O. G. 103.5. 2017. Held, that as from the whole record presented in behalf of S. it is shown that he was the first to conceive and though last to reduce to practice was diligent in so doing from a time just previous to the entry of L. and S. into the field, S. is entitled to the award of priority of invention. Scott v. Laas and Sponenburg, C. D. 1905, 118 O. G. 1367. 2018. Where an inventor retained an attor- ney residing in another city to prepare a pat- ent application covering a voting-machine, and after a large amount of correspondence the attorney requested the inventor to make and send to him a model for use in preparing the application, and the inventor decided to make a complete machine instead of a model and undertook its construction himself, being financially unable to bear the great expense of having it built by others, but when the ma- chine was partially completed, realizing that its construction would involve great delay, discontinued work thereon and in response to his attorney's repeated request made a model. Held, that the inventor's attempt to build a complete machine was a commendable effort to complete his invention and that the delay caused thereby did not constitute laches. ♦Davis V. Garrett, C. D. 1906, 123 O. G. 1991. 2019. Where Fowler conceived and disclosed in August and was last to reduce to practice, Held, that McBerty, who was the first to con- ceive and who reduced to practice in the following January, was reasonably diligent. Fowler v. McBerty, C. D. 1906, 121 O. G. 1915. 2020. Where on October 24, 1903, twenty- three days after his conception of the inven- tion, Woods left the company by which he had been employed to embark in business on his own account, and during this period had made a blackboard drawing of the invention and frequently discussed with one Jacob, who was skilled in the art, the possibility of over- coming certain criticisms, and where after establishing his own business he employed said Jacob and resumed the consideration of these defects, and while he did not eventually modify his device, but filed his application January 27, 1904, Held, he was not lacking in diligence, and priority was awarded to him over Poor, who reduced his invention to prac- tice by filing his application December 17, 1903. *Woods V. Poor, C. D. 1907, 130 O. G. 1313. 2021. Where the inventor of an apparatus for supporting insulating overhead-trolley con- ductors which are utilized for supplying high- voltage energy to high-speed alternating-cur- rent electric railways is not in a position to make an actual test of his invention, and the company which employs him is likewise not in a position to make such a test, he cannot be held lacking in diligence in reducing his in- vention to practice between March, 1904, and December 2, 1904, where he approached a railway company in March and endeavored to have his invention tried out, ordered an in- sulator which was one of the essential fea- tures of the apparatus and received the same in October, procured a visit from the officers of another electric railway company in Sep- tember, and early in December attached a crude apparatus to the fence in the factory yard to see how it would appear and operate. *.Mead v. Davis and \'arney, C. D. 1908, 136 O. G. 2001. 2022. Where it appeared that W. I. Ohmer had a conception of the invention which he disclosed to Neth and Tamplin in 1902 and prior to January, 1903, had caused an em- bodiment of this invention in working plans and drawings, but did not reduce the inven- tion to practice until February, 1903, and it is shown that John F. Ohmer reduced the invention to practice in January, 1903, Held, that it cannot be successfully held that W. I. INTERFERENCE, XXXIII, (g), 1. 333 Ohmer was lacking in reasonable diligence in reducing his invention to practice, when it is considered that a complicated and difficult piece of mechanism was constructed in four months. *Neth and Tamplin v. Ohmer, and Ohmer v. Ohmer, C. D. 1908, 135 O. G. 662. 2023. Where the junior party had disclosed the invention to several persons and had or- dered tools to manufacture the same prior to the entry of the senior party into the field and in a few months thereafter actually sold a small number which was followed a few months later by the manufacture and sale of large numbers of such devices, Held, that he was diligent in reducing his invention to prac- tice. *Davis v. Horton, C. D. 1908, 136 O. G. 1768. 2024. Evidence considered and Held, to show that C, who was the first to conceive the invention in issue, was exercising due dil- igence in reducing it to practice at the time S. entered the field and subsequently thereto. *Scott and Scott, executors of the estate of Walter Scott, deceased v. Cruse, C. D. 1910, 154 O. G. 252. 2025. Evidence considered and Held, to es- tablish that Schartow, who was the first to conceive the invention in issue, was reasonably diligent in reducing the same to practice and was therefore entitled to an award of prior- ity. * Schartow v. Schleicher, C. D. 1910, 156 O. G. 800. 2026. H. conceived the invention in issue in the early part of 1902, made and tested a machine embodying this issue in England in the fall of the year, and filed his application on December 4, 1902. According to the tes- timony of N. he conceived the invention in 1901 and disclosed it to his employers; but nothing was done with it until H.'s machine was shown to them in December, 1902, when he was instructed to prepare working draw- ings. These were not completed until May, 1903, and N.'s application was filed September 21, 1903. Held, that N. was lacking in dili- gence in reducing the invention to practice. *Norling v. Hayes, C. D. 1911, 166 O. G. 1282. 2027. Evidence considered and Held, to es- tablish that R., who was the first to conceive the invention in issue, but the last to reduce it to practice, was reasonably diligent in reduc- ing the same to practice from the time of his conception and that priority was properly awarded him. Rowe v. Brinkmann, C. D. 1911, 172 O. G. 1090. (g) Not Held Diligent. 1. In General. 2028. A mistake by a party in supposing that the invention was covered by a prior patent granted to him cannot under any known principle of law be considered a good excuse for delay in perfecting the invention or filing an application covering the same. Under the circumstances of this case the applicant is, furthermore, chargeable with the knowledge possessed by his agent or attorney as to the scope of the former patent. *PIatt v. Ship- ley, C. D. 1898, 82 O. G. 461. 2029. Where the testimony shows beyond a reasoaable doubt that Kelly conceived the invention in 1894 and had a machine embody- ing it made during 1895, prior to any date proven by F>Tin, but thereafter did nothing but experiment with it and make changes in it until he was stirred to greater activity by the grant of Fynn's patent. Held, that Fynn is the prior inventor. Kelly v. Flynn, C. D. 1900, 92 O. G. 1233. 2030. Where Austin claims to have con- ceived the invention in February, 1895, but laid it aside and was doing nothing when Johnson and Fry entered the field in June, ]S9J, although he was able to reduce the in- vention to practice either actually by making the device or constructively by filing an ap- plication at any time he desired, Held, that he was lacking in diligence. *Austin v. John- son et al., C. D. 1901, 95 O. G. 2685. 2031. Where it is shown that Miehle had a conception of the invention in June, but did nothing in regard to it until after Read en- tered the field and filed his application in the following December, Held, that Miehle did not exercise diligence and that the decision of the commissioner of patents in favor of Read should be affirmed. *Miehle v. Read, C. D. 1901, 96 O. G. 426. 2032. Where the only excuse given for delay is that the party was engaged in other things which required his attention, and it ap- pears that he might at any time have had an application for a patent filed by devoting two hours to a conference with his attorney. Held, that he was lacking in diligence. *Id. 2033. Where a party claims to have had a complete knowledge of a process involving the use of bacterial food and had one form of such food. Held, that his failure to practically use the process for several years is not to 334 INTERFERENCE, XXXIII, (g), 1. be excused upon the allegation that he was trying to find a food which could be obtained at all seasons. Petrie v. De Schweinitz, C. D. 1902, 99 O. G. 446. 2034. Where H. claims to have conceived the invention in July, 1899, and did nothing further with the invention for one year and nine months later, during which time his op- ponent made the invention. Held, that he was lacking in diligence and priority must be awarded to his opponent. *Harris v. Stern and Lotz, C. D. 1903, 105 O. G. 746. 2035. Where B. has shown beyond doubt that he had actually reduced the invention to practice and there is no evidence of any ac- tions on his part to warrant the conclusion that he had abandoned his invention or that he had lost his rights under the doctrine of equitable estoppel and there is no action on the part of B. to warrant the conclusion that the machine which he constructed was an abandoned experiment and not a reduction to practice. Held, that B. is the prior inventor. Brooks V. Hillard, C. D. 1903, 106 O. G. 1237. 2036. Where a party could test the inven- tion or file an application at any time, Held, that the making of drawings which were then locked up in his desk cannot be considered an act of diligence in perfecting the inven- tion. Paul V. Johnson, C. D. 1903, 106 O. G. 2013. 2037. Where the invention in controversy relates to thermostats. Held, that the efforts of the inventor in regard to other thermostatic devices cannot be considered diligence in per- fecting the particular one in controversy. Id. 2038. Where a complete conception is es- tablished and as an excuse for inactivity in perfecting an invention it is claimed that no one could be found who was qualified to con- struct the requisite parts of the device and willing to do the actual work, and it appears that the inventor could have obtained a con- structive reduction to practice by filing his application in the patent office, and as the very fact of his inability to get any one to do the work for him should have dictated the pro- priety of diligence in making such application. Held, that the inventor was not diligent. *Rob- inson v. Copeland, C. D. 1904, 112 O. G. 501. 2039. Where an inventor is very busy in other directions. Held, to be no excuse for inactivity, which allows the intervention of others in the field of invention and the per- fection of their enterprises. *Id. 2040. The party first to conceive but last to reduce to practice must show diligence in perfecting the invention mechanically, and it is not sufficient to show that efforts were made to exploit commercially the business in which the invention might be used. Seeberger v. Dodge, C. D. 1904, 113 O. G. 1415. 2041. One having the first complete concep- tion of an invention cannot hold the field against all comers by diligent efforts merely to organize and procure sufficient capital to en- gage in the manufacture of his device or mechanism for commercial purposes. This is a different thing from diligence in actual re- duction to practice. *Seeberger v. Dodge, C. D. 1905, 114 O. G. 2382. 2042. When an assignee of an invention neglects cither to cause an actual reduction to practice of the same when a complete model has been submitted to him by the inventor or to cause an application for a patent to be filed and the inventor takes no active steps in either direction. Held, that some one interested must be diligent, and the inventor cannot excuse his lack of diligence by shifting the responsibil- ity to the assignee, who was admittedly not diligent. O'Connell v. Schmidt, C. D. 1905, 118 O. G. 588. 2043. Diligence in attempting to secure cap- ital to engage in the manufacture of the de- vice or to exploit the invention is not the diligence in reducing to practice required of the first to conceive, but the last to reduce to practice, in order to hold the field. *Laas v. Sponenberg v. Scott, C. D. 1906, 122 O. G. 352. 2044. The conceiver of an invention whose financial condition is such as to excuse him from any attempt unaided to actually reduce the invention to practice must, if he would hold the field, enlist the aid of others in ac- tual reduction to practice or file an applica- tion for patent. TurnbuU v. Curtis, C. D. 1906, 120 O. G. 2442. 2045. Where a party was in straitened finan- cial condition, but his efforts during the period of delay in reducing to practice were directed toward commercial exploitation of his inven- tions generally, rather than toward securing the construction of the machine in issue or toward filing an application for patent there- on. Held, that he was not reasonably diligent Id. 2046. Where G. and B. slept on their rights and for more than five years failed to bring their invention to a complete and operative INTERFERENCE, XXXIII, (g), 2. 335 form. Held, that by their laches they lost rights which for a long time they little valued and which they cannot now successfully as- sert *Achman and Brown v. Hinson, C. D. 1906, 122 O. G. 731. 2047. A. conceived the invention in July, 1902, and endeavored to make the same in his own shop and to have the same made by an- other in the latter part of the year, but failed on account of lack of proper machinery. In the early part of January, 1903, he applied to a company by which W., the opposing party, was employed and unsuccessfully endeavored to make some arrangements with them to man- ufacture the device. In April or May, 1903, he applied to another company, who made the device some months later. He filed his ap- plication December 14, 1903. W. entered the field in the latter part of January, 1903, after A.'s visit to his company, and filed his appli- cation March 27, 1903, on which a patent was granted May 26, 1903. Held, that W. is en- titled to the award of priority, as A. was not diligent. *Anderson v. Wells, C. D. 1906, 122 O. G. 3014. 2048. Howell conceived the invention in the spring of 1900 and made a model in April, 1900, which he immediately showed to the typewriter-manufacturing company for whose use the improvement was primarily intended. He requested the company to adopt the in- vention, but they did not agree to do so. After this nothing was done by the inventor until December, 1900, except to call the atten- tion of one of the company's officers during the summer of 1900 to the fact that nothing had been done with the invention. In the meantime, in September, 1900, Hess conceived the invention. Held, that Howell was lacking in diligence. Howell v. Hess, C. D. 1906, 122 O. G. 2393. 2. In Filing Application. 2049. Where an inventor is guilty of laches in putting aside a machine for eleven years after it was perfected and tested, he is estop- ped by such laches from receiving a patent by reason of the entrance into the same field of a rival inventor who reduced the invention to practice, obtained a patent, placed the in- vention on the market, and gave to the world the knowledge and use of such invention. Mower v. Crisp and Copeland, C. D. 1898, 83 O. G. 155. 2050. While M. was the first to reduce to practice and therefore entitled to an award of priority, j'et on account of laches in applying for a patent he is not entitled to a patent, and the examiner directed to reject the claims of M. involved in the interference after final award of priority. Id. 2051. Where it was shown that the one to first conceive of the invention did not have the money with which to actually reduce it to practice, but there was nothing to show that he could not have filed an application which would have been a constructive reduc- tion to practice and would have given him the benefits of an actual reduction. Held, that there was no excuse for delay and priority awarded to the second to conceive. Kasson V. Hetherington, C. D. 1899, 88 O. G. 1157. 2052. Where a party claims to have been in possession of the invention and to have con- sulted his attorney in 1896 to see whether he was infringing upon any rights. Held, that his delay for nearly two years thereafter before filing his application is a remarkable circum- stance and tends to throw discredit upon his whole story in regard to the date of his al- leged invention. *Nielson v. Bradshaw, C. D. 1900, 91 O. G. 644. 2053. Where two joint inventors executed an application on July 1, 1896, which was not filed until May 26, 1867, more than nine months after the application of the se- nior party was filed, and the excuse given for the delay was that one of the joint inventors went abroad the latter part of July and before he returned the company with which he was connected made an assignment ; that the other joint inventor was not in a situ- ation, financially, to go on with the case and to pay the attorney's fees until after the other joint inventor had returned from abroad. Held, that it is not consistent with the general allegation of poverty that one of the joint inventors after the application had been pre- pared could afford to embark upon a long tiavel and to remain absent for several months in a foreign country, which required the ex- penditure of a considerable amount of money, and the excuse for the delay is not satisfac- tory, especially where there is no explanation why some small part of the money so ex- pended could not have been applied in filing the application in the patent office. *Jackson et al. V. Knapp, C. D. 1900, 91 O. G. 1034. 2054. It is an easy thing to allege that it was the want of financial means to pay the fees attending the application that produced the delay in making it, and it is sometimes a dif- 336 INTERFERENCE, XXXIII, (g), 2. ficult thing to do to disprove the truth of such reason assigned ; but where the delay and the circumstances attending it give rise to the presumption of negligence the onus of proof is upon the party charged with the delay, and it is incumbent upon him to repel such presumption by clear and definite proof. ♦Id. 2055. The bare assertion of inability to pay the expenses of an application for a patent will not suffice to excuse the party charged with negligence to prevent the effect of delay when the question of due diligence becomes important in determining the question of right as between such party and another who has been diligent and prior in point of time in coming into the patent office for a patent, though he may be subsequent in conception and perfecting his invention. *Id. 2056. The mere statement that a party was unable to pay the expenses of an application, without showing the special facts and circum- stances that rendered him unable, will not do. The special facts should be shown and not mere general conclusions, which may have been wholly unjustified by the facts. *Id. 2057. The proof offered in this case to re- lieve appellants of the charge of negligence is the same as that offered in the case of Jack- son et al. v. Knapp, ante, 281, 91 O. G. 1034, and for the same reason that was held in that case — that the appellants had not by suf- ficient proof relieved themselves of the con- sequence of their delay and neglect — the de- cision of the commissionter of patents award- ing priority to their opponents is affirmed. ♦Jackson et al. v. Getz et al., C. D. 1900, 91 O. G. lorifi. 2058. Where the appellant took out seven patents on other inventions after the alleged reduction to practice before he filed his pres- ent application. Held, that his delay and ap- parent indifference in regard to an application until after he saw the patent of the appellee are significant. ♦Kelly v. Fynn, C. D. 1900, 93 O. G. 1237. 2059. Where the applicant alleged that he made the invention in 1892 yet he did not apply for a patent until 189S, after his oppo- nent had obtained a patent, and in the interim he had filed several other applications. Held, that it is reasonable to suppose that if appli- cant had in his possession the invention at the time alleged he would have applied for a pat- ent earlier and not have held the invention unprotected for more than five years and until after another had applied for and obtained a patent for the same thing. ♦Locke v. Bock, C. D. 1900, 399, 93 O. G. 1722. 2060. Where S. was engaged in the special work of devising means to remedy imperfec- tions in scales of the class in controversy, having taken out several patents upon that line, and where he claims to have completed the particular invention in issue, Held, that his failure to apply for a patent until six months after he had seen M.'s device is peculiarly significant. ♦Swihart v. Mauldin, C. D. 1902, 99 O. G. 2322. 2061. Where W. conceived the invention in IS'.u, constructively reduced it to practice by filing his application in 1890, and in the mean- time did nothing with it save to try to get a few persons with means interested in it, and where D. conceived in May, 1898, and reduced to practice a few months thereafter. Held, that D. is the first inventor. ♦Wyman v. Don- nelly, C. D. 1903, 104 O. G. 310. 2062. Where a machine embodying the in- vention was too expensive for W. to build and he did nothing with the invention for five years after his conception except make a few efforts to enlist the interest of men of cap- ital, although he was able to file an applica- tion for a patent at any time. Held, tliat he was lacking in diligence. *Id. 2063. Where D. was the first to conceive but the last to reduce to practice and delayed filing his application for a period of two years, during which time T. obtained his pat- ent. Held, That T. is to be regarded as the inventor. *Dashiell v. Tasker, C. D. 1903, 103 O. G. 2174. 2064. Where Talbot claims to have been in possession of the invention for ten years, but made no effort to patent it, although he pat- ented other processes, and where he ridiculed Monell's process as impractical and after the grant of Monell's patent he copied it and secured an interference. Held, that his claim as the prior inventor is discredited. ♦Talbot V. Monell, C. D. 1904, 109 O. G. 280. 2065. Where Paul had a conception of the invention so complete and definite in 1891 that he could have given the necessary in- formation from which an application for pat- ent could have been prepared. Held, that there was no reason or necessity for delaying the application until 1896, and that his delay shows a lack of diligence. *Paul v. Johnson, C. D. 1904, 109 O. G. 807. INTERFERENCE, XXXIII, (g), 2. 337 2066. Where during the period of delay when Paul says he was unable to do anything it appears that he filed applications relating to other inventions, Held, that his claim that the delay was unavoidable is not sustained. *Id. 2067. Where in excuse of delay in filing an application a party urges that he could not come to terms with the company and that as their employee, constructing the machine at their expense, it was proper that he should not apply for patent on his own account. Held, these reasons for delay insufficient, as not show- ing why an understanding with the company could not have been reached, as involving mere business considerations and not circum- stances of a compelling nature, and as not proved, in that they depend upon the unsup- ported assertions of the party. Paul v. Hess, C. D. 1904, 113 O. G. 847. 2068. Where S. conceived the invention in 1S9.T or 1896 and reduced it to practice by building a machine from September, 1898, to June, 1899, and in the meantime did nothing toward testing the invention or filing an ap- plication, and where D. filed his application in January, 1898, Held. D. is the first inventor. Seeberger v. Dodge, C. D. 1904, 113 O. G. 141.5. 2069. Where neither party actually reduces an invention to practice and all that each has done is to conceive of an invention and file an application, Held, that while weeks and months and perhaps even years may not count for much in the race of diligence be- tween rival inventors when the time is to be applied to the actual reduction to practice of a complicated invention, whose operativeness it is required to prove by laborious experi- ment, yet an unexplained delay by the first conceiver in merely filing an application for a patent warrants the granting of the patent to a more diligent opponent. *Ritter v. Kra- kau and Connor, C. D. 1905, 114 O. G. 1553. 2070. Where S. conceived the invention in May, 1895, and had such complete drawings made in the summer of 1896 that he could have filed an application for patent at that time, but did not do so or reduce the inven- tion to actual practice until after D. filed his application in January, 1898, Held, that S. was lacking in diligence. *Seeberger v. Dodge, C. D. 1905, 114 O. G. 2382. 2071. Granting that actual reduction to practice is preferable to that which is con- 22 structive merely, as more to the interest of the public, and that reasonable indulgence ought to be extended to one pursuing that course in good faith, yet when the construc- tion of an experimental device involves so great cost and risk that an inventor, though possessed of sufficient means, may well hesi- tate to undertake the same entirely at his own expense, due diligence requires that he should then attempt to secure his right and promote the public interest by filing an appli- cation for patent. *Id. 2072. Where an inventor relies upon the constructive reduction to practice established by his application, and upon diligence, coup- ling this with an earlier conception, and urges in excuse of delay in filing the applica- tion that he could not come to terms with the company at whose expense the invention had been made. Held, this excuse is insuffi- cient, as it does not attempt to explain why an understanding could not have been reached earlier either that the company file the appli- cation or allow the inventor to protect the in- vention himself. *Id. 2073. Where the excuse given for delay in filing application for patent is impossibility of agreement with employers concerning the invention, Held, that the excuse is insufficient to establish diligence, as it involves business considerations rather than circumstances of a compelling nature. *Id. 2074. Where a delay in filing an applica- tion is due to the business convenience of the assignee and it is shown that during that delay the assignee filed many applications for other inventions, Held, that the delay in filing the application in controversy is not excused and diligence is not established beyond a reason- able doubt. Rolfe v. Hoffman, C. D. 1905, 118 O. G. 83.'5. 2075. The contention that a party could not file his application earlier than he did is rebutted by the fact that he filed or caused to be filed subsequent to his conception of the invention in issue and prior to the filing of his application in interference applications for patents upon six other inventions. Turnbull V. Curtis, C. D. 1906, 120 O. G. 2442. 2076. It is to be presumed that an invention which is contested in interference proceedings is a valuable asset and that an inventor if without other means can ordinarily draw on this source, at least for means wherewith to file his application. If he fails to do so, he 338 INTERFERENCE, XXXIII, (g), 2. must show that the failure was unavoidable and after every reasonable effort in that di- rection had been exerted. Id. 2077. Where during his more than three years of inaction Turnbull appli«d for six patents for other inventions and, while poor, had the available means to make an applica- tion for this one, Held, that his lack of dili- gence could not be excused on the ground of poverty. *Id. Turnbull v. Curtis, C. D. 1906, 123 O. G. 2312. 2078. Where the real ground of delay, as disclosed by the evidence, was that the in- ventor thought it to his interest to withhold his application until he might be able to make an advantageous arrangement with some per- son of large capital for the exploitation of the invention, Held, that such an excuse for lack of diligence is insufficient. (Seeberger v. Dodge, C. D. 190.5, 603, 114 O. G. 2382, 24 App. D. C. 476, 485; Wyman v. Donnelly, C. D. 1903, 556, 104 O. G. 310, 21 App. D. C. 81, 87.) *Id. 2079. A delay of nearly three years in filing an application after an alleged reduction to practice by one who was a manufacturer in the art to which the invention belonged and who had full knowledge of the need for the invention and ample means for making im- provements outweighs the mere oral testimony of witnesses who do not testify clearly and positively. *Bourn v. Hill, Jr., C. D. 1906, 123 O. G. 1284. 2080. An inventor who delays the filing of an application for more than two years and who fails to take any other steps to protect his rights is lacking in diligence, and a plea of poverty cannot be accepted as a sufficient excuse for the delay where it appears that he was possessed of sufficient means to file an application for another invention and to take out foreign patents thereon. Gibbons v. Peller, C. D. 1906, 124 O. G. 624. 2081. Where a claimant to the inventorship of a device sees such device offered for sale in the open market and at the time makes no claim that he is the inventor thereof and fails to file an application within a reasonable time and files it finally only at the solicitation of another, the presumption is strong that he did not make the invention at the time claimed. Id. 2082. Where an inventor after an alleged reduction to practice of his invention lays it aside for five years, during which time he files several domestic and foreign applications and develops another system to accomplish the same purpose which he regards as su- perior, and fails to file an application until after the grant of a patent to another for the same invention who was proceeding in good faith, he is guilty of inexcusable laches. *Bliss V. McElroy, C. D. 1907, 128 O. G. 458. 2083. Where McA. conceived the invention in the summer of 1903, but did practically nothing toward reduction to practice until April 21, 1904, when he wrote to his patent attorney instructing him to file an application, which was prepared promptly and sent to McA., but was not filed until September 19, 1904, Held, that he was not diligent as against M., who entered the field on March 1, 1904. McXrthur v. Mygatt, C. D. 1908, 132 O. G. 1585. 2084. Where it appears that Kinsman in- stalled mechanism embracing part of the issue in 1890 which was experimental in its nature and found to be unsuccessful, and immediate- ly thereafter unsuccessfully tested a second experimental device, and in 1892 and 1893 in- stalled a system embodying the invention which after being used for several months was taken out and discarded, and no further evidence of activity on the part of Kinsman was shown prior to the filing of his applica- tion in December, 1903, which was subsequent to the time Kintner entered the field and re- duced the invention to practice, and during this time Kinsman was active in experimenting with other forms of invention. Held, that he was lacking in diligence. *Kinsman v. Kint- ner, C. D. 1908, 136 O. G. 1532. 2085. The object of the patent laws is to foster and protect invention for the universal benefit of mankind, and while every presump- tion will be resolved in favor of the inventor who delays filing an application until he has perfected his invention, the object of the law would be lost to view should we permit the displacement of an inventor who has given the world the benefit of his discovery by one who has permitted his invention to lie dor- mant for a decade. *Id. 2086. Where the appellant established con- ception and disclosure of the invention in the summer of 1903, but took no steps toward re- ducing the invention to practice until April 21, 1904, when he instructed his attorney to prepare an application for patent, which was not, however, filed until September 19, 1904, INTERFERENCE, XXXIII, (g), 3. 339 while his opponents entered the field on March 1, 1904, and in excuse of his lack of diligence urged that his financial condition was such that it was impossible for him to reduce the invention to practice earlier, but the testimony showed that in the meantime he had enlarged his business and that his gross income amount- ed to about two hundred dollars a month, Held, that the showing is insufficient to excuse the appellant's lack of diligence. *McArthur V. Mygatt, C. D. 1908, 136 O. G. 661. 3. In Reduction to Practice. 2087. The decision of the commissioner of patents awarding priority of invention to Shipley and Hyde affirmed for the reason that although Piatt was the first to conceive he was the last to reduce the invention to prac- tice and did not use due diligence in such re- duction to practice. *Platt v. Shipley et al., C. D. 1898, 82 O. G. 461. 2088. A person cannot be charged in law with any want of due diligence before the ad- vent of a rival inventor upon the field ; but at and after that time he becomes liable to lose the benefit of his previous conception un- less he uses due diligence. Delay for the purpose of the elaboration and perfection of a crude conception may well be commended ; but it will not be excused where no such end is in view. *Id. 2089. The fact that a party does not know that a rival has entered the field is no excuse for delay, since the risk that a rival may ap- pear at any time is something which every in- ventor is bound to contemplate and to antici- pate, and in this lies the fundamental reason for the requirement of due diligence. *Id. 2090. Although F. was the first to conceive, n. was the first to reduce to practice, and as F. did not use due diligence in perfecting the invention. Held, that D. should be awarded priority. Decision of the commissioner of patents reversed. *Dodge v. Fowler, C. D. 1898, 82 O. G. 595. 2091. Where the testimony showed that F.'s delay was occasioned only by the fact that some one to whom he had made application refused or declined at the time to construct a machine for him. Held, that if such a cause were allowed to excuse total inaction in re- gard to the invention and the discarding of it for the time for other and more immediately profitable enterprises it is difficult to see why inaction might not be justified forever and all rival inventors effectually barred out of the field of invention. Id. 2092. Where it appeared that the first in- ventor to conceive could have completed a drawing in a short time after it was begun, but he took five months to do so because there was no hurry for it, and after the drawing was finished his assignee still further delayed for one year and four months in reducing the invention to practice because there was no hurry to reduce it to practice, as it was not sooner needed. Held, that there was no ex- cuse for such delay and priority of invention awarded to the second to conceive but the first to reduce to practice. Kasson v. Hether- ington, C. D. 1899, 88 O. G. 1157. 2093. Diligence cannot wait upon the con- venience or business arrangements of an in- ventor or his company. (Dailey v. Jones, C. D. 1S94, 71, 67 O. G. 1719, cited.) Id. 2094. Although Marvel was the first to conceive, he did not show reasonable diligence in reducing his invention to practice, and Decker having conceived and reduced to prac- tice in the meantime. Held, that the decision of the commissioner should be affirmed and priority awarded to Decker. *Marvcl v. Deck- er et al., C. D. 1899, 86 O. G. 348. 2095. The decision of the commissioner of patents holding that although Cross was the first to conceive the invention Phillips was the first to reduce to practice, and as Cross was not reasonably diligent in reducing to prac- tice priority should be awarded to Phillips, affirmed. *Cross v. Phillips, C. D. 1899, 87 O. G. 1399. 2096. Where the party first to conceive but the last to reduce to practice did nothing for nine years between his conception and reduc- tion to practice except to make drawings and talk about the invention occasionally and to urge one or two persons "to take it up," and in the meantime had taken out patents on the same subject-matter. Held, that there is no sufficient excuse offered for delay in reducing to practice. *Marvel v. Decker et al., C. D. 1899, 86 O. G. 348. 2097. Where it is admitted that G. actually reduced the invention to practice in June, 1897, and he is entitled to constructive reduc- tion to practice by filing his application in August, 1897. he is entitled to the decision on priority, even if it be conceded that D. had a conception of tlie invention prior to that 340 INTERFERENCE, XXXIII, (g), 3. time, since D. has not shown an actual re- duction to practice at any time or diligence up to the time when he filed his application a year later. *Darnell v. Grant, C. D. 1900, 02 O. G. 557. 2098. Where D. may have been the first to conceive the invention, but G. was the first by a year to reduce it to practice and D. did not show diligence during his delay, Held, that the decision of the commissioner of pat- ents in favor of G. was correct and will be affirmed. *Id. 2099. Where S. conceived the invention in April, 1897, but did not reduce it to practice until November, 1899, and in the meantime devoted his energies to perfecting a machine for easily and economically applying the in- vention, whereas K. conceived in October, 1898, and reduced the invention to practice in April, 1899, Held, that K. is to be regarded as the first inventor, and therefore the deci- sion of the commissioner of patents is affirm- ed. *Stapleton v. Kinney, C. D. 1901, 96 O. G. 1432. 2100. Where S. had a conception of an im- proved retaining device for rubber tires and could have applied it to practical use at any time by means then well known in the art, although such means was crude and imperfect, but instead of so doing he devoted his time for more than two years to devising a simple and economical machine for applying the re- taining device, Held, that he did not exercise diligence in regard to the retaining device. *Id. 2101. Although in some instances a device may be dependent for its practical use upon the invention of further or additional mechan- ical appliances, notwithstanding the fact that the two devices may be regarded as patent- ably distinct and separate in the patent office and in such case a pause in the perfection of one would be excused by due diligence in the completion of the other. Held, that this is not such a case. *Id. 2102. Assuming the truth of the statement contained in the preliminary statement of F. or even that contained in his testimony as to the time of conception of the invention, the great delay in attempting to complete and re- duce the invention to practical operation is entirely without explanation and must con- sequently give rise to a strong presumption against his pretensions. *Id. Funk v. Matteson V. Haines, C. D. 1902, 100 O. G. 1764. 2103. Where W. conceived the invention in 1894 and did not reduce it to practice or file an application until after D. completed the in- vention in 1898, Held, that his long delay can- not be excused by the fact that the machine was large and expensive and by the allegation that he was not financially able to build and test the machine. Donnelly v. Wyman, C. D. 1903, 103 O. G. 657. 2104. Where L. reduced the invention to practice in December, 1897, and at that time H. was doing nothing with the invention, al- though he claims to have conceived it one year before, Held, that L. is the first inventor. Hallwood V. Lalor v. BockhofI, C. D. 1903, 103 O. G. 887. 2105. Where H. did not reduce his inven- tion to practice for fifteen months after his conception, although he was possessed of ample means and facilities, and he gives as an excuse that he was busy upon other more important inventions. Held, that he was lack- ing in diligence. Id. 2106. Where H. conceived the invention in January, 1897, and did nothing with it until May, 1898, although possessed of ample means and facilities, and L. reduced the invention to practice in 1897, Held, that L. must be regard- ed as the first inventor whether or not he was first to conceive. *Hallwood v. Lalor, C. D. 1903, 103 O. G. 2173. 2107. Where H. claims to have conceived the invention in August, 1890, and did not file an application or reduce it to practice for two years thereafter, during which time S. and L. entered the field. Held, that he was lacking in diligence and that S. and L. must be regarded as the first inventors. Harris v. Stern and Lotz, C. D. 1903, 105 O. G. 259. 2108. Where the senior party to an inter- ference takes no testimony, but relies on his record date, and the junior party proves a date of conception prior to this date, but does not show that he was exercising diligence in re- ducing the invention to practice when the senior party filed his application, Held, that the senior party is entitled to an award of priority. Pihl v. Mersman, C. D. 1903, 106 O. G. 1775. 2109. Where the senior party filed his ap- plication on June 28, 1901, and the junior party filed July 8, 1901, and the testimony in behalf of the junior party shows he had a concep- tion of the invention as early as January, 1901, but it does not show that he took any INTERFERENCE, XXXIII, (g), 3. 341 steps after that time toward reducing the in- vention to practice until after the date of filing of the senior party, Held, that the senior party is the prior inventor. Id. 2110. Where an inventor might have pro- ceeded in reducing his invention to practice, but deliberately withheld from that course be- cause he was not at liberty to do so by rea- son of a certain contract into which he had entered, Held, that such an excuse will not justify the delay, as diligence will not wait on business convenience. Kasson v. Hether- ington, C. D. 1899, 143, 88 O. G. 1157. Wat- son V. Thomas, C. D. 1903, 106 O. G. 1776. 2111. Where P. conceived the invention in 1891 and did nothing with it but talk of it and make drawings of it until 1896 and where J. entered the field July, 1895, and was the first to file his application. Held, that J. is to be regarded as the first inventor. Paul v. John- son, C. D. 1903, 196 O. G. 2013. 2112. Where P. was the first to conceive and the last to reduce to practice and attempts to e.xcuse his inactivity at the time that J. entered the field by showing that he was in- capacitated by illness, but it appears that he was doing nothing before and after his ill- ness. Held, that he was lacking in diligence. Id. 2113. Where L. claims conception in March, 1900, and reduction to practice in December, 1900, and W. proves conception and reduction to practice in July, 1900, Held, that W. must be regarded as the first inventor in the ab- sence of a showing that L. was diligently en- gaged in perfecting his invention. Williams V. Liberman, C. D. 1903, 107 O. G. 832. 2114. Where after his conception L. did nothing with the invention for seven months, during which time he made machines em- bodying substitute constructions and applied for a patent upon one of them and intention- ally delayed action upon the invention in con- troversy, Held, that he was lacking in dili- gence. Id. 2115. Held, that Watson was the first to conceive the invention and the last to reduce to practice and that he has not shown that he was exercising diligence. The decision of the commissioner of patents awarding prior- ity of invention to Thomas affirmed. ♦Wat- son V. Thomas, C. D. 1904, 108 O. G. 1590. 2116. Where the inventor who was first to conceive the invention produces no evidence whatever of any action on his part to reduce the invention to practice beyond the making of some working drawings and a blue-print from them. Held, that these acts cannot be held to be a manifestation of due diligence. *Id. 2117. Where the burden is upon a party to show diligence between his conception and re- duction to practice and his proofs leave it in doubt whether the alleged steps taken by him were before or after his opponent entered the field. Held, that he has not proved dili- gence, and the decision must be against him. *Id. 2118. Held, that Paul was the first to con- ceive the invention, but was the last to reduce to practice, and that he was not exercising dil- igence when Johnson entered the field and filed his application, and that therefore John- son is to be regarded as the inventor. *Paul v. Johnson, C. D. 1904, 109 O. G. 807. 2119. Where during the time between his conception and his reduction to practice Paul had drawings of the invention made, but put them to no use and locked them up in his desk, Held, not to constitute diligence in adapting and perfecting the invention. *Id. 2120. Held, that Thomas was the last to conceive the invention, but the first to reduce to practice, and that Trissell was not exer- cising diligence when Thomas entered the held, and that therefore Thomas is to be re- garded as the first inventor. *TrisseIl v. Thomas, C. D. 1904, 109 O. G. 809. 2121. Held, that Liberman, although first to conceive the invention, was the last to re- duce it to practice and did not exercise dili- gence in perfecting it, and that therefore the decision in favor of Williams as the first in- ventor is right. *Liberman v. Williams, C. D. 1904, 109 O. G. 1610. 2122. Where Liberman did not reduce the invention to practice for nine months after his conception and during that time deliberately and intentionally put it aside while he worked upon other inventions in the same art. Held, that he was lacking in diligence. *Id. 2123. Assuming that L. was the first to con- ceive, he was the last to reduce to practice and gives no satisfactory reason for a delay of more than a year in reducing to practice, or at le'ast filing his application for patent, and therefore it is Held, that H. is to be regarded as the first inventor. *Lotterhand v. Hanson, C. D. 1904, 110 O. G. 861. 343 INTERFERENCE, XXXIII. (g), 3. 2124. To delay one invention for the sake of another projected invention to be used in connection with it and which might never be realized cannot be construed in the patent law as an exercise of due diligence. *Id. 2125. Where the evidence shows that C. was the first to conceive of the invention as to counts 1, 2, 3, and 5 of the issue, and though last to reduce to practice he was diligent in so doing, and that C. was first to reduce to practice the invention defined in counts 4 and 6, Held, that C. is the prior inventor as to all the counts, because McK. though first to con- ceive was last to reduce to practice the inven- tion of counts 4 and 6, and was lacking in rea- sonable diligence. Cummings v. McKenzie, C. D. 1904, 110 O. G. 1167. 2126. Where the invention related to esca- lators and S. made no efforts to test that in- vention mechanically, but merely tried to get investors and the public interested in the esca- lator business, Held, that he was lacking in diligence. Seeberger v. Dodge, C. D. 1904, 113 O. G. 1415. 2127. The large cost which would be in- volved in building and testing the invention is material only upon the theory that the in- ventor could not afford it, and where it ap- pears that he could afford it his failure to test the invention for three years shows a lack of diligence. Id. 2128. Where N. is the second to conceive and the first to reduce to practice and O. though first to conceive fails to connect his reduction to practice by reasonable diligence, Held, that priority of invention should be awarded to N. Ocumpaugh v. Norton, C. D. 1904, 110 O. G. 1723. 2129. When an inventor is first to conceive of the invention of the issue and last to re- duce it to practice. Held, that work on an- other independent invention while the work on the invention of the issue is laid aside does not constitute a reasonable diligence in re- ducing the invention of the issue to practice. Robinson v. Copeland, C. D. 1904, 111 O. G. 579. 2130. Granting that H. was the first to con- ceive, he was not diligent when B. entered the field and reduced to practice ; therefore, Held, that B. is the prior inventor. Basch v. Ham- mond, C. D. 1904, 113 O. G. 551. 2131. Where R. is the first to conceive and the last to reduce to practice and is lacking in diligence and C. during R.'s inactivity enters the field and reduces to practice, Held, that C. is the first inventor and entitled to the award of priority of invention. Decision of com- missioner of patents affirmed. (Ante, 257, 111 O. G. 579.) *Robinson v. Copeland, C. D. 1904, 112 O. G. 501. 2132. Where H. claims to have conceived an invention twelve years before his opponent V. entered the field, and did not reduce the in- vention to practice until several months after v., and the testimony shows that H. did noth- ing during that twelve years but make experi- mental devices and models, all of which were thrown in the scrap, Held, that his action in throwing these alleged prior devices in the scrap-heap is a good indication of their char- acter, and as it is obvious that no great amount of labor would be required to reduce the invention to practice by constructing a full- sized lock, H.'s delay is to be explained by the fact that he was making no real effort to re- duce the invention to practice. Voight v. Hope, C. D. 1905, 114 O. G. 762. 2133. Held, that D. was the first to reduce the invention to practice, and is to be regarded as the first inventor, because of a lack of dili- gence on the part of S. *Seeberger v. Dodge, C. D. 1905, 114 O. G. 2382. 2134. Since S. was the first to conceive, but the last to reduce to practice, the burden is upon him to show that immediately before D. entered the field and upon that date he was exercising due diligence in perfecting his in- vention and attempting to reduce it to actual practice. *Id. 2135. Delay by an inventor in reducing his invention to practice and applying for a pat- ent is not to be excused because of his sup- position that a prior patent owned by him was sufficiently broad to include the invention. *Id. 2136. Where it appears that for at least a year the only efforts of G. toward completing his invention consisted in more or less de- sultory talk about his invention, indecisive ef- forts to get his invention adopted by a cor- poration, and in a leisurely manner making drawings of the device, and where it is shown that it would have cost but little to have ac- tually reduced the invention to practice and to have made proper tests and that he was free to take up this work if he so desired and he had ample means to have at least filed an application. Held, that G. was not in the ex- ercise of reasonable diligence in completing INTERFERENCE, XXXIII, (g), 3. 343 his invention. *GaIlagher, Jr. v. Hien, C. D. 1905, 115 O. G. 1330. 2137. The responsibility for the lack of dil- igence by a minor must rest upon some one and cannot be suspended during his minority, and therefore if he shifts the responsibility to his guardian we must look to the action of the guardian to determine whether there was reasonable diligence. Id. 2138. Where a party who was a minor seeks to excuse his lack of diligence in perfecting the invention by the allegation that his guar- dian would not permit him to work on it. Held, that the excuse is insufficient, and the opposing party, who was the first to reduce the invention to practice, must be regarded as the first inventor. Fuller v. Jones, C. D. 1905, 115 O. G. 1066. 2139. A minor cannot claim the benefit of all that he does during his minority and at the same time avoid responsibility for all that he fails to do in regard to the same matter. Id. 2140. Where it appeared that T. had no conception of the invention until after he had seen D.'s machine, and J. did not reduce the invention to practice until after reduction by D., and does not show diligence after his alleged earlier conception, Held, that D. is the first inventor. Jenner v. Dickinson v. Thi- bodeau, C. D. 1905, 116 O. G. 1181. 2141. Where an invention is complete in it- self. Held, that lack of diligence in perfecting it will not be e.xcused by consuming the time between conception and reduction to practice, in attempting to make other improvements to be used with it. Luby v. Taylor, C. D. 1905, 118 O. G. 835. 2142. Held, that Nilson was the first to re- duce the invention to practice and that at the time he entered the field Andrews was not exercising diligence and that therefore Nilson is to be regarded as the first inventor. An- drews V. Nilson, C. D. 1905, 118 O. G. 1363. 2143. When F. in his preliminary statement alleged reduction to practice in May and B.'s application was filed in March of the same year and no evidence was presented to show that F. was diligent in reducing to practice from a time prior to the application date of B., Held, that F. cannot prevail. Fowler v. Beyer, C. D. 1905, 118 O. G. 2534. 2144. Where T. conceived the invention and made drawings and a model more than three years before his opponent conceived the in- vention and reduced it to practice and during that time T. did nothing with it save work occasionally upon a second model and it ap- pears that he secured patents upon other in- ventions in the same art. Held, that T. was lacking in diligence. Taylor v. Westinghouse, C. D. 190.5, 119 O. G. 1251. 2145. Where after making drawings and a model a party made no attempt to reduce the invention to practice, but merely worked oc- casionally upon a second model intended mere- ly for illustrative purposes, Held, that the making of the second model was not a step forward in the development of the invention and that work thereon was not diligence in adapting and perfecting the invention. Id. 2146. Where T. laid aside the invention in issue and as a matter of choice, based upon business considerations, devoted his time and attention to other inventions and secured pat- ents upon them. Held, that he was lacking in diligence. Id. 2147. Held, that Scott, although the first to conceive the invention, was the last to con- structively reduce it to practice and was not exercising diligence in perfecting it when Laas and Sponenburg entered the field and that therefore Laas and Sponenburg are to be regarded as the first inventors. Laas & Sponenburg v. Scott, C. D. 1906, 122 O. G. 352. 2148. Held, that Fowler, who is the first to conceive and disclose, but is the later to re- duce to practice, has failed to show diligence and that priority should be awarded to Dyson. ♦Fowler V. Dyson, C. D. 1906, 121 O. G. 1015. 2149. Where F. conceived the invention in September, 1903, and reduced it to practice in May, 1904, but did nothing with the invention between September, 1903, and April, 1904, while C. established conception and reduction to practice in March, 1904, Held, that C. is the prior inventor. Feinberg v. Cowan, C. D. 1906, 125 O. G. 667. 2150. Where the first to conceive was the last to reduce to practice and was not dili- gent and his excuse for his delay is that he was so busy earning his living that he did not have time to attend to the matter, also that he did not have the money to pay for having the device made and did not wish to borrow it. Held, insufficient to excuse his lack of dili- gence. Id. 2151. Where L.'s original application was filed two years prior to P.'s application and nearly a year prior to his reduction to prac- tice and P. was making no effort to reduce the invention to practice at the date of L.'s ap- 344 INTERFERENCE, XXXIII, (g), 3. plication, or until some months thereafter, al- though he had ample means and actually built many machines and tiled a large number of applications in the same art, but none of which included the invention of the issue. Held, that P. was lacking in diligence and that L. is entitled to the award of priority of invention. Parkes v. Lewis, C. D. 1906, 133 O. G. 2313. 2152. Work upon machines not embodying the invention in issue and not necessary for the development of that invention does not constitute diligence. Kilbourn v. Hirner, C. D. 1U06, 124 O. G. 1841. 2153. Where R. was the last to reduce to practice and was not exercising reasonable diligence in reducing to practice at the time his rival entered the field, he cannot prevail in the interference even if it be considered that he was the first to conceive the invention. Kirkegaard and Jebsen v. Ries, C. D. 1906, 125 O. G. 1705. 2154. Where P. conceived the invention in the early part of November, 1903, and filed his application December 11, 1903, and W. conceived the invention on September 16, 1903, but did not reduce it to practice prior to the filing of his application on January 27, 1904, Held, that W. was lacking in diligence in the absence of a sufficient excuse for the delay. Woods v. Poor, C. D. 1907, 126 O. G. 391. 2155. The claim of an inventor, advanced as an excuse for his delay in reducing to prac- tice, that he was endeavoring to improve upon his conception is not supported by testimony showing merely that conversations were held looking to the improvement thereof where it does not appear that any changes were actu- ally made or that any material changes were even suggested. Id. 2156. A claim of an inventor that he was financially unable to reduce his invention to practice after paying the necessary expenses of his business is not proved where the evi- dence does not show what the necessary ex- penses of the business were and where there is no evidence of the inventor's resources ex- cept his own statement that he had only a given amount of cash on hand. Id. 2157. Where L. and W. made and secretly tested a machine embodying the invention August 23, 1903, and at once dismantled the same, made and tested another machine Oc- tober, 1903, but did not use the same again until September, 1904, and where L. and W. consulted their attorneys in November, 1903, and had the application papers prepared in January, 1904, but did nothing further toward filing their application until June, 1904, after they had heard of C.'s patent. Held, that L. and W. were lacking in diligence and cannot prevail over C., who reduced the invention to practice and filed his application in Septem- ber, 1903. *Lewis and Williams v. Crone- mcyer, C. D. 1907, 130 O. G. 300. 2158. Work on an auxiliary invention which the inventor regarded as necessary to the commercial success of his invention cannot be regarded as constituting diligence where the evidence does not satisfactorily show the nature of the experiments or when they were made. Fordyce v. Stoetzel, C. D. 1907, 130 O. G. 2372. 2159. Evidence held to show that B., while the first to conceive the invention in issue, was the last to reduce to practice and was not exercising diligence at the time H. entered the field and subsequently thereto and prior- ity properly awarded to H. Hamm v. Black, C. D. 1908, 132 O. G. 841. 2160. Where an inventor has a conception of a device which can be put to practical use upon devices existing in the art, delay in re- ducing the invention to practice for the pur- pose of perfecting other inventions to be used in connection therewith cannot be con- sidered as an exercise of due diligence where another has in the meantime entered the field and reduced the invention to practice. Id. 2161. Where N. conceived the invention of the issue on October 13, 1904, and reduced the same to practice on October 26, 1905, by the filing of his application, and F. conceived the invention on June 30, 1905, and reduced the same to actual practice on July 31, 1905, and it appears that N. did not disclose the in- vention to anyone, except a few of his friends confidentially, until after the filing of his ap- plication, and his excuse for failure to re- duce the same to practice was that he had sold a prior invention of the same nature to his employers and was attempting also to sell the invention of the issue to them, that they would likely interfere should he attempt to do anything with it, and that he was wait- ing to see what claims would be allowed on his prior application, Held, that the excuse for the delay is insufficient. *Nelson v. Fau- cette, C. D. 1909, 143 O. G. 1348. 2162. T. filed an application December 17, 1896. W. conceived the invention January 10, 1896, made working drawings thereof in the INTERFERENCE, XXXIII, (h), 1. 345 fall of 189G, reduced the invention to prac- tice in April, 1897, and filed his application March II, 1898. Held, that W. was not exer- cising diligence at the tiine that T. filed his application and subsequently thereto and that T. was therefore the first inventor, d Auto- matic Weighing Machine Company v. Pneu- matic Scale Corporation, Limited, C. D. 1909, 139 O. G. 991. 2163. Work on one form of a device can not be considered as diligence in the reduc- tion to practice of another form. Taylor v. Oilman, C. D. 1910, 158 O. G. 883. 2164. Where F., who was the first to con- ceive the invention in issue, but the last to re- duce it to practice, was lacking in diligence before and at the time R. entered the field. Held, that this lack of diligence could not be cured by activity subsequently to that time. *Floyd V. Rohlfing, C. D. 1910, 152 O. G. 230. 2165. Evidence considered and held, to es- tablish that B. if the first to conceive the in- vention in issue was the last to reduce it to practice and was not exercising due diligence at the time C. entered the field and subse- quently thereto. *Bastian v. Champ, C. D. 191(1, l.-,2 O. G. 734. 2166. R. placed the control of an invention made by him in the hands of L., the manager of a company, for the use of that company, and he had an application prepared which was executed by R. and returned. This applica- tion was mislaid during the moving of the company's office and was not discovered and filed until two months after H.'s application was filed. Neither party actually reduced the invention to practice, and it appeared that R.'s application could have been reproduced from the attorney's carbon copy. Held, that R. was lacking in diligence and priority of invention properly awarded to H. *Robischung v.Hand- iger, C. D. 1911, 162 O. G. 786. 2167. Evidence considered and Held, to es- tablish that S. did not derive the invention from M., that if M. was the first to conceive the in- vention he was the last to reduce it to practice and was not exercising due diligence at the time S. entered the field. *Miller v. Speller, C. D. 1911, 165 O. G. 732. (h) Concealment. 1. In General. 2168. When an inventor in any manner or for any reason refuses to give to the public the benefit of his invention, the public are en- titled to withdraw from him the special pro- tection accorded to him for his invention. On this principle an inventor is required to be diligent in reducing his conception or inven- tion to practice. *Warner v. Smith, C. D. 1898, 84 O. G. 311. 2169. One who has made an invention and who has locked it up in the secrets of his own exclusive knowledge and who produces it only when a rival inventor has entered the field cannot be held to have acted in accord- ance with the policy of the law or with the spirit and purpose of the constitutional pro- vision relating to promoting "the progre^ of science and useful arts." Such inaction not only contravenes the interest of the public, but also operates to injure a rival inventor who in the meantime enters the field of in- vention upon the faith of the conditions as they appear to exist and upon which he is en- titled to rely. *Id. 2170. Probably one who makes an invention and keeps it within his knowledge and fails to lay claim to it until a rival has entered the field is not barred by any statute from making his claim, artd if he proves his case he and not his rival will be entitled to a patent; but such conditions make it imperative upon him that he should prove his case beyond all rea- sonable doubt, and the patent office and the courts are justified in presuming in such cases that what is claimed to be reduction to prac- tice is no more than mere experiment until the contrary is clearly shown. *Id. 2171. The patent laws are founded in a large public policy to promote the progress of science and the useful arts. The public, therefore, is a most material party to and should be duly considered in the application for a patent securing to the individual a mo- nopoly for a limited time in consideration of the exercise of his genius and skill. *Mower V. Duell, Commissioner of Patents, C. D. 1899, 88 O. G. 191. 2172. The arts and sciences will not be promoted by giving encouragement to inven- tors to withhold and conceal their inventions for an indefinite time or to a time when they may use and apply their inventions to their own exclusive advantage irrespective of the public benefit, and certainly not if the inven- tor is allowed to conceal his invention to be brought forward in some after time to thwart and defeat a more diligent and active inventor who has placed the benefit of his invention 346 INTERFERENCE, XXXIII, (h), 2. within the reach and knowledge of the pub- he. *Id. 2173. In withholding the invention after its completion, when a patent could be obtained therefor, for an undue and unreasonable time until after other inventors have by their skill and ingenuity perfected a similar invention and obtained a patent therefor the first or original inventor shows himself to be un- mindful of both the public and individual rights, and one of the reasons why the statute has confided such large powers to the com- missioner of patents in refusing a patent is to prevent such abuse. *Id. 2174. Under section 4893, Revised Statutes, an invention claimed must not only be shown to be new and useful, but it must also be made to appear that a claimant is justly enti- tled to a patent therefor. A claimant cannot be justly entitled if a patent when granted would or could operate a wrong either to the public or a rival inventor and that wrong be the result of the claimant's own laches or negligent delay in asserting his rights. *Id. 2175. Where it was urged that under sec- tion 4886, Revised Statutes, there can be no abandonment of a right to a patent unless such abandonment be afiirinatively proved. Held, that affirmative facts may be proved by nega- tive evidence, and where the acts and conduct of a party are of such nature as to give rise to a rational presumption of the fact, that presumption, after the rights of other parties have intervened and attached, cannot be re- moved or gotten rid of by simply denying the intention to produce the result. ♦Id. 2176. If there be concealment or suppres- sion of the invention, the field lies open to be occupied by a more diligent, though later, inventor, who when he has not only put the invention into public use, but has also obtained a patent for it, cannot be divested of his right to hold the field except upon proof beyond a reasonable doubt that the earlier and more negligent inventor has not gone back to an abandoned device or a device suppressed or concealed in order to establish a prior right. ♦Richards v. Burkholder, C. D. 1907, 128 O. G. 2533. 2. Rights Lost. 2177. Hepburn's date of invention is his record date, April 3, 1894. Mason conceived of the invention and made a complete draw- ing June 28, 1887. He reduced the invention to practice soon after. The device was then stored away in the model-room of his com- pany, and it was not produced until the insti- tution of the interference proceedings. No devices of the kind were manufactured for any purpose and no exhibit of the device was made to the public, and no one saw it, except Mason and one or two other employees of his company, field, that Mason had aban- doned the invention, and priority was award- ed to Hepburn. *Mason v. Hepburn, C. D. 1898, 84 O. G. 147. 2178. Considering the interest of the pub- lic, it is Held, that a subsequent inventor of a new and useful manufacture or improve- ment who had diligently pursued his labors to the procurement of the patent in good faith and without any knowledge of the pre- ceding discoveries of another shall as against that other who has deliberately concealed the knowledge of the invention from the public be regarded as the real inventor and as such entitled to his reward. *Id. 2179. An abandonment after completion of an inventive act applies in a case where the right of the public to the use is involved and not in one where the contention is between rival claimants merely of a monopoly. The ground for this doctrine lies in the spirit and policy of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting in perfect good faith that which he and all others have been led to believe has never been discovered by reason of the in- difference, sui)ineness, or willful act of one who may, in fact, have discovered it long be- fore. ♦Id. 2180. Where Smith claims to have reduced the invention to practice in January, 1892, and thereafter did nothing and remained si- lent for three years and nine months, although there were several occasions when he might and should have spoken if his invention was such as he now claims it to have been, and he made no movement, either through the patent office or otherwise, to give the public the benefit of it in any way, and during this time there was a demand for the invention, and there is no explanation of the delay in filing an application. Held, that under these circumstances the presumption is in favor of the theory that he did not have a completed invention in January, 1892, or at any time INTERFERENCE, XXXIII, (h), 2. 347 prior to the filing of his apphcation in the patent office. *Id. 2181. Where an inventor made and tested a device and then partially dismantled it and put it in a private drawer, where it remained for five years before applying for a patent, when he had ample means to patent it, and the evidence showed that he had taken out other patents, Held, that his right to a claim of priority is barred where it is shown that dur- ing his concealment of his invention his rival had entered and taken possession of the field and reduced the invention to practice and given its benefits to the public. Davis v. For- syth and Forsyth, C. D. 1899, 87 O. G. .'51 R. 2182. The bare statement of the first in- ventor that he never abandoned his invention counts for naught in the light of such circum- stances. Id. 2183. An inventor may conceal his inven- tion for an unlimited time without forfeiting his right to a patent, provided, however, that no statutory bar intervenes, and provided, fur- ther, that no other person during such period makes the same invention and secures a pat- ent therefor. (Bates v. Coe, C. D. 1879, 365, 15 O. G. 337, and Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147, cited.) Id. 2184. The right of the first inventor to an award of priority becomes barred by the de- signed or negligent concealment of his inven- tion from the public upon the entry of a later inventor into the same field. Id. 2185. Where T. made an instrument and placed it in a private laboratory, to which outsiders were not admitted, and the knowl- edge of the instrument and its use were con- fined to T. and his assistant, and it appeared that the public derived no benefit from it and that T. did not attach sufficient importance to it to take steps to obtain a patent until another had patented the same device and put it into use, Held, that T. is not entitled to a patent and that priority should not be awarded to him. (Mower v. Crisp and Copeland, C. D. 1898, 41, 83 O. G. 155; Mason v. Hepburn. C. D. 1898, 510, 84 O. G. 147; Davis v. Forsyth and Forsyth, C. D. 1899, 79, 87 O. G. 516, and In re Mower, C. D. 1899, 395, 88 O. G. 191, cited.) Thomas v. Weston, C. D. 1901, 94 O. G. 985. 2186. Where an inventor has reduced an invention to practice, applied for and obtained a patent and given the benefit of the invention to the public, a cloud should not be thrown on that patent by a (iro forma award of pri- ority to his rival, who comes into the patent office after seeing the patent and introduces as evidence of his claim to priority a device made long before the patentee's, but kept secret and not given to the public. Id. 2187. Where Houston knew of a demand for the invention, but he suppressed it and practically concealed his device for more than four years after the time when he claims to have actually reduced it to practice and until a rival entered the field, although he had abundant means and ample opportunity to file an application, Held, that such delay raises a presumption which it is incumbent on him to rebut by clear and satisfactory proof. ♦East- man v. Houston, C. D. 1901, 95 O. G. 2064. 2188. Where one party deliberately conceals his invention from the public until another has made the invention and given it to the public, Held, that he should not be heard to assert his claim in opposition to the later dil- igent inventor. Wright v. Lorenz, C. D. 1902, 101 O. G. 664. 2189. Where in excuse for concealing his invention for five years a party alleges that he was trying to devise a machine for making it cheaply. Held, that the excuse is insufficient. He should have given it to the public and al- lowed others to improve the means for mak- ing it. Id. 2190. Where during a delay of six years P. was poor, but concealed his invention and failed to make efforts to interest others in it to assist him in securing a patent or in making practical use of it, Held, that mere poverty cannot excuse an absence of all effort for such a length of time. *Petrie v. De Schwei- nitz, C. D. 1902, 99 O. G. 1387. 2191. Where W. reduced the design to prac- tice in 1896 by making a few of the devices and then concealed his invention until sev- eral months after L. had obtained a patent on it in 1900, Held, that L. is properly regard- ed as the real inventor. Wright v. Lorenz, C. D. 1902, 101 O. G. 664. 2192. Where T. made an electric measuring instrument embodying the invention in contro- versy in 1S94 and placed it in his private ex- perimental room, where it was seen only by employees, but where it was used frequently in making measurements, and T. did not man- ufacture it or apply for a patent until 1898, after he knew of W.'s patent upon it. Held, that W. is entitled to the decision on priority. (Citing Mason v. Hepburn, C. D. 1898, 510, 343 INTERFERENCE, XXXIII, (h), 2. 84 O. G. 147, 13 App. D. C. 86.) *Thomson V. Weston, C. D. 1902, 99 O. G. 864. 2193. Where a party deliberately conceals his invention after completion without reason- able excuse and is stimulated to make appli- cation for a patent only by the publication of a patent to another and later inventor. Held, that he has forfeited his rights in favor of the later and more diligent inventor and that the length of the concealment is not material. *Id. 2194. By deliberate concealment or suppres- sion of the knowledge of his invention the in- ventor subordinates his claim, in accordance with the general policy of the law in the pro- motion of the public interest, to that of an- other and bona fide inventor who during the period of inaction and concealment shall have given the benefit of the discovery to the pub- lic. *Id. 2195. The circumstances of private and par- tial test accompanied by long delay thereafter have justly been given great weight as indi- cating with certainty that the device was ex- perimental merely and not satisfactory. *Id. 2196. Where it is contended that a device made in 1894 was a reduction to practice and it was then laid aside and kept secret for five years and practically nothing done with it until another and later inventor had obtained a patent. Held, that in the absence of a rea- sonable excuse for the delay the first inven- tor had lost his rights in the invention as against the latter and more diligent inventor. Quist v. Ostrom, C. D. 1903, 106 O. G. 1501. 2197. Where McNeal made a device em- bodying the invention in 1896, but did noth- ing in the way of giving it to the public and refrained from applying for a patent upon it because he thought it would infringe a prior patent and in the meantime Macey secured a patent upon it and placed it upon the market, Held, that McNeal has forfeited his right to a patent by concealment. McNeal v. Macey, C. D. 1903, 106 O. G. 2287. 2198. Where as an excuse for doing nothing with the invention for four years McNeal al- leges poverty, but it is shown that he filed many other applications on kindred devices and gave those devices preference because he thought that the present device would in- fringe a patent, Held, that his excuse is insuf- ficient. Id. 2199. Held, that Matthes reduced the inven- tion to practice in 1899, before Burt's date of conception, but forfeited his rights to a pat- ent by his inaction and negligent concealment of the invention until February, 1902, after he had learned that Burt was manufacturing devices embodying it, and that therefore judg- ment must be rendered in favor of Burt Matthes v. Burt, C. D. 1904, 111 O. 0. 1363. 2200. An inventor who has completed the inventive act by reduction of his invention to practice may lose his right to obtain a pat- ent, in favor of a subsequent inventor, by concealment and delay in applying for a pat- ent. Id. 2201. A party who refuses to instruct the workers in the art and seeks to protect him- self in the use of the invention by keeping it secret, thus apparently leaving the field of invention vacant to stimulate the activity of other inventors, cannot secure a patent in the face of the claims of a later inventor who has given the invention to the public. In so far as he is concerned the field is truly as vacant as he wished it to appear. Id. 2202. Where the junior party to an inter- ference after having completed his invention and reduced it to practice lays it aside and shows no intention of giving the public the benefit of it or of filing an application for a patent until he learns that his rival is using it and placing the product of such invention on the market, Held, that he has forfeited his rights in favor of his rival, whether or not that rival has already secured a patent. Id. 2203. Where M. made a device, used it to some extent, apparently to his own satisfac- tion, and then practically concealed the de- vice, suppressed its use, and withheld it from the public for a period of three and one-half years, and the record shows that M. indicated no substantial intention of change of policy until he had obtained definite knowledge of B.'s exploitation of the same invention, B. having no knowledge of M.'s discovery, and encouraged and induced by the apparently un- occupied field, went diligently to work to per- fect his invention and put his product upon the market, Held, /hat M.'s right had become subordinate to that of B., who was the first to invent in accordance with "the true policy and ends of the patent laws," as declared by the Supreme Court of the United States in Kendall v. Winsor (21 How. 322, 327, 328.) *Matthes v. Burt, C. D. 1905, 114 O. G. 764. 2204. Where an inventor who has actually reduced an invention to practice, and whose right to a patent because of undue conceal- INTERFERENCE, XXXIII, (h), 3. 349 ment and suppression of the invention has become subordinate to another inventor who is first to invent in accordance with "the true pohcy and ends of the patent laws," Held, that such cases present no question of dili- gence in respect of adapting and perfecting the invention as between rival claimants, or of reasonable excuse for delay on other grounds relieving that delay of the imputa- tion of deliberate concealment, or where delay is a potent circumstance in determining whether the tests made at a remote period amounted to a complete reduction to practice. *Id. 2205. Held, that the fact that B.'s applica- tion had not ripened into a patent before M. filed his application does not substantially af- fect the application of the doctrine of equit- able estoppel to M. While the possession of a patent makes, ordinarily, a stronger case in favor of the holder, the doctrine in respect of concealment by one earlier to invent does not necessarily depend upon that fact. *Id. 2206. Where a party constructed a device in October, 1900, but allowed it to remain entirely within the knowledge of the inven- tor and his coemployes until knowledge was obtained of the invention of the opposing party, when the application in interference was filed showing a different form, apparently sug- gested by such knowledge, Held, that such party's rights were forfeited by concealment. Marconi v. Shoemaker, C. D. 1907, 131 O. G. 1939. 2207. The concealment and suppression of an invention after a reduction to practice for a period of more than two years, until def- inite knowledge was obtained of the invention of another party, who in the meantime had made the invention and placed it upon the market, is sufficient to defeat the right to a patent. (Matthes v. Burt, C. D. 190.5, 574, 114 O. G. 764, 24 App. D. C. 265.) *Gordon v. Wentworth, C. D. 1908, 135 O. G. 1125. 2208. Where after reduction to practice an inventor puts aside his invention for more than a year until he discovers that his rival has placed the invention upon the market. Held, that he must be charged w-ith conceal- ment or suppression of the invention and as not entitled to an award of priority over his more diligent rival. Howard v. Bowes, C. D. 1908, 137 O. G. 733. 2209. L. made a device embodying the in- vention prior to V.'s conception thereof. He showed it only to the officers of his com- pany, who laid it aside on account of other business, and no attention was given it by them or L. until they obtained knowledge of the work done by a rival company, V.'s as- signee. Held, that if the device made by L. was a reduction to practice he had forfeited his right to a patent by his concealment (citing Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147, 13 App. D. C. 86, and other decisions.) Lawrence v. Voight, C. D. 1909, 147 O. G. 23.J. 2210. B. conceived the invention in issue in 1903, built a machine in accordance therewith which was kept in a room to which only he and a few employees had access until an ap- plication for patent on the machine was filed on January 31, 1906. Elbows made on the machine were in the meantime placed on the market. Held, that by concealment of the invention B. lost his rights in favor of D., who conceived the invention of some of the counts of the issue in 1893 and that of the others in 1901, and filed his application on January 18, 1906. Dieckmann v. Brune, C. D. 1911, 171 O. G. 1258. 3. Rights Not Lost. 2211. Where Cook reduced the invention to practice in 1891 and 1892, but did not put it into commercial use or apply for a patent until 1896, Held, that the delay of Cook in applying for a patent or making commercial use of his invention was not such as to indi- cate an intention to suppress or conceal his invention from the public that would subor- dinate his right to that of McBerty, who promptly applied for and obtained a patent. *McBerty v. Cook, C. D. 1900, 90 O. G. 2295. 2212. Where F. reduced the invention to practice and for one year and five months thereafter made no other machines and made no substantial advance toward placing the in- vention on the market, during which time O. made the invention and put it into use. Held. that F. is the first inventor in the absence of a showing that he intentionally concealed the invention from the public or abandoned the idea of obtaining a patent and using the in- vention. Felbel v. Oliver, C. D. 1902, 100 O. G. 2175. 2213. Where S., an applicant, established beyond a reasonable doubt that he reduced the invention in issue to practice prior to the date of conception of M., a patentee, S. is en- titled to an award of priority unless he has 350 INTERFERENCE, XXXIII, (h), 3. lost his right to a patent by deliberately lay- ing the invention aside or concealing it from the public. Sarfert v. Meyer, C. D. 1902, 101 O. G. 2286. 2214. Where the invention in issue was a machine and S. reduced it to practice on March 16, 1898. applied for a patent thereon on March 10, 1900, and in the meantime em- ployed the machine in producing goods for the market and used it in such a manner that his employees had access to it, his conduct was not such as to warrant the finding that he had concealed the invention from the pub- lic, especially as his delay in applying for a patent is explained by the fact that he con- templated making certain improvements in the machine. Id. 2215. Where Sarfert concealed his inven- tion in stocking-singeing machines for a short time, but gave to the public the result of its operation and showed it to his opponent Meyer, Held, that his conduct is inconsistent with the theory of suppression of the inven- tion which would deprive him of his rights. *Meyer v. Sarfert, C. D. 1903, 102 O. G. 1555. 2216. Where Blood conceived the invention in April, 1899, and reduced it to practice on May 15, and filed his application April 27, 1901, and Brown does not claim conception until the middle of May, 1899, Held, that Blood is the first inventor. Blood v. Brown, C. D. 1903, 105 O. G. 496. 2217. Where Blood reduced the invention to practice in May, 1899, and did not file his application until two years later, but in the meantime secured a patent upon the machine for making it, and it appears that he was unable to secure continuous employment dur- ing that time. Held, that there was no such concealment of the invention from the pub- lic as would work a forfeiture of his right to a patent. Id. 2218. Where after reducing the invention to practice Blood did not manufacture it or put it on the market for a period of more than two years, but it is shown that he was poor and did not have the facilities for doing the work and made ineffectual efforts to ob- tain assistance from others, Held, that there was no such concealment of the invention as would work a forfeiture of his rights. *Brown V. Blood, C. D. 1903, 105 O. G. 976. 2219. Where Blood did not manufacture the invention for two years, but during that time obtained a patent on the machine for making it. Held, that he did not conceal the invention from the public and is not deprived of his right to a patent. *Id. 2220. The rule of Mason v. Hepburn as to a forfeiture of the right to a patent by delib- erate concealment and suppression of the in- vention is a strict one and will not be extend- ed to any case not clearly falling within it. *Id. 2221. Where a hay-loading machine has been completely built and it could only be put to a practical test during the haying sea- son, which lasts about two months in each year, and it was tested during two seasons and in the meantime the machine was stored in the factory-yard and the factory-building with no injunction of secrecy or concealment. Held, that such actions do not warrant the applica- tion of the doctrine of estoppel. Thomas v. Trissel, C. D. 1903, 107 O. G. 265. 2222. Held, that Rolfe did not abandon his invention or conceal it from the public, and being the first to conceive, the first to dis- close to others, and the first to reduce to prac- tice is the first inventor and entitled to award of priority. *RoIfe v. Hoffman, C. D. 1906, 121 O. G. 1350. 2223. The failure to file an application for more than two years after reduction to prac- tice where the machine was put into actual use in a factory the policy of the management of which was not to patent machines used for their own work is not such a concealment or suppression of the invention as will subor- dinate the inventor's rights to one who, claim- ing conception in July, 1900, reduced it to practice in April, 1901, but did not file an ap- plication until May, 1902, and did not arrange to manufacture the same until June, 1903. *Burson v. Vogel, C. D. 1907, 131 O. G. 942. • 2224. Evidence considered and Held, suffi- cient to show that the junior party originated the invention in issue and disclosed the same to the senior party. Weston v. Benecke, C. D. 1908, 137 O. G. 1709. 2225. Where it is found that one of two in- terfering parties originated the invention in issue and disclosed the same to the other, the doctrine of forfeiture of the right to a pat- ent by concealment does not apply. Id. 2226. The evidence considered and Held, to show that Z. reduced the invention to practice prior to the earliest date claimed by H., and therefore priority was properly awarded to Z. Zimmer v. Horton, C. D. 1908, 137 O. G. 2219. INTERFERENCE, XXXIII, (i). 351 2227. An application was filed by E. and D., and an interference was declared between it and a patent to H. Thereafter an applica- tion was filed by Z., which was added to the interference. E. and D.'s and Z.'s applica- tions were assigned to the same party, and E. and D. conceded priority to Z. It appeared Z.'s application was filed more than two years after his device was built and tested. Held, that these facts do not bring the case within the doctrine of Mason v. Hepburn, as Z.'s de- vice was tested in shops open to the public, and the filing of the application of E. and D. negatived any intention on the part of the assignee to abandon the invention. Id. 2228. Where the development of an inven- tion extended over a year and required the expenditure of $100,000 and was witnessed by a large number of employees and visitors and where the party so developing the invention was also the first to file his application. Held, that there is no such concealment of the in- vention as to bring the case within the doc- trine of Mason v. Hepburn (C. D. 1898, 510, 84 O. G. 147.) Shiner v. Edison, C. D. 1909, 147 O. G. 517. 2229. In the absence of evidence showing actual abandonment of the invention a mere failure to file an application for patent for about four years will not be considered as an estoppel by concealment within the meaning of Mason v. Hepburn (C. D. 1898, 510, 84 O. G. 147, 13 App. D. C. 86) and Warner v. Smith (C. D. 1898, 517, 84 O. G. 311, 13 App. D. C. 111.) *Rolfe v. Kaisling v. Leeper, C. D. 1909, 143 O. G. 562. 2230. A delay by L- of two and a half years in filing an application after reducing the in- vention to practice, during which time he was endeavoring to get his employers to undertake the manufacture of the device, Held, not to constitute such concealment of the invention as to work a forfeiture of his right to a pat- ent. Landa v. Kaole, C. D. 1910, 158 O. G. 228. (i) Prior Inventor Not Party. 2231. Where Antisdel, the junior party, made out a prima facie case in support of his claim for priority of invention and Foster did not attempt to rebut or overcome it, but re- lied upon the evidence of Lloyd, one of Antis- del's witnesses, to show that Lloyd and not Antisdel was the inventor of the subject-mat- ter of the invention. Held, that Lloyd's testi- mony cannot be used in favor of Foster, and priority of invention is therefore awarded to Antisdel. (The decision of the assistant commissioner, Antisdel v. Foster, 65 MS. Dec, 390, affirmed.) *Foster v. Antisdel, C. D. 1899, 88 O. G. 1527. 2232. Interference proceedings are instituted to determine as between the parties thereto which of them is entitled to an award of pri- ority of the invention claimed. Both cannot be entitled to it, but one may be entitled as against the other, though there may be some third party who might if the claim of that person were placed in issue as between that person and one or both of the parties to the interference proceeding show that he was in fact and in reality entitled to an award of priority of the invention in controversy. *Id. 2233. Evidence that some other party than the parties to the interference proceeding is really the inventor of the device in issue is im- pertinent to the issue and cannot be received or considered by those charged with the duty of determining the issue. *Id. 2234. If the practice obtained of allowing the claims or pretensions of any or all per- sons though not parties to the interference proceedings to be set up as a means of de- feating the claims of one of the parties, it would be difficult if not impossible in many cases to try the interference issue as between the immediate parties to it. Such practice would open the door to collusion, and perjury would be the recourse of many who failed to support their claims by legitimate evidence. *Id. 2235. Testimony that one of the parties to an interference is not an original inventor, but received a disclosure of it from some third party not connected with the interfer- ence, relates to his ex parte rights and not to the question of priority. It may bar him, but it does not affect the rights of the other par- ties. Trufant v. Prindle v. Brown, C D. 1902, 101 O. G. 1608. 2236. The contention that some stranger to the record was in fact the first inventor does not relate to the question of priority involved in the interference and will not be considered upon an appeal relating to that subject. Os- born V. Austin, C. D. 1903, 102 O. G. 2781. 2237. Evidence that some other person than the parties to the interference is the inventor of the issue is not pertinent to an interfer- ence proceeding. Foster v. Antisdel, C. D. 1899, 413, 88 O. G. 1527, 14 App. D. C. 552, 352 INTERFERENCE, XXXIII, (j). 554. *Garrels et al. v. Freeman, C. D. 1903, 103 O. G. 1683. 2238. Where Garrels et al. call a witness (U.) who testifies that he is the inventor of the issue and this testimony does no more than establish the relation between the witness U. and one of the contesting parties F. of em- ployee and employer, respectively, whereby the assistance of the employee inures to the benefit of the employer under the well-estab- lished rule governing that and similar rela- tions. Held, that such testimony offered in be- half of Garrels et al. has the effect to strength- en rather than weaken F.'s claim of act and date of invention. *Id. 2239. Where Prindle was the last to reduce to practice and the last to file his application, he cannot be awarded priority of invention over his opponent, Brown, upon the sugges- tion or even upon proof that Brown derived his knowledge from Trufant, who was once involved in the interference. *Prindle v. Brown. C. D. 1904, 112 O. G. 957. 2240. A junior claimant of an invention cannot overcome the prior date of his adver- sary by proof that some third person was in fact the inventor, even where that third per- son was once a party to the interference. *Id. 2241. The question whether the senior ap- plicant may be entitled to priority of inven- tion as against all persons is not the issue in an interference case between two claimants of the invention ; but the question is whether the junior applicant has sustained the burden of establishing his own priority over that of his opponent. *Id. 2242. Held, that the question whether some other person than the parties to an interfer- ence proceeding is an inventor of the issue is not pertinent to the issue. It can only become pertinent should the alleged third person file an application for patent on the invention of the issue. Bauer v. Crone, C. D. 1905, 118 O. G. 1071. 2243. Where H. contends that D. is not an original inventor, but derived knowledge of it from a third party not now involved in the interference. Held, immaterial to the question of priority as between H. and D. Doble v. Henry. C. D. 1905, 118 O. G. 2249. 2244. Where it is alleged that one of the parties to an interference testified in another proceeding that the invention was disclosed to him by a third party. Held, that if true it cannot change the award of priority so long as he was in possession of the invention be- fore his opponent and that although it might lead to the rejection of his claims if final judgment is in his favor it furnishes no ground for reopening the interference for the admission of further evidence. Dunbar v. Schellenger, C. D. 1906, 121 O. G. 2663. 2245. The question whether a third party not involved in an interference is the real inventor of the subject-matter in issue is not pertinent to the question of priority of in- vention. Hasson v. Black, C. D. 1908, 132 O. G. 841. (j) As to Different Counts. 2246. A generic and specific claim do not interfere even when based on the same spe- cies, and valid patents may issue to different inventors — to one for the specific claim, to the other for the generic claim — and the law does not require that before the patents issue it should be determined in the patent oflice that one is the first inventor of the species and the other the first inventor of the genus. (Reed v. Landman, C. D. 1891, 73, 55 O. G. 1275, overruled.) Williams v. Perl, C. D. 1800. 87 O. G. 1607. 2247. Notwithstanding the fact that two in- ventors filing independent applications disclose the same species, it does not follow that the first inventor of the species shown by both was the first inventor of the genus. The one earlier in the field may have reached the spe- cies by a process of evolution. The one later in the field may have conceived and disclosed the species shown at the very outset of his creative act. Id. 2248. It does not follow from the fact that two inventors finally reach the same species that both of them first conceived or embodied the invention in the form of that species shown by both. Either or both of them might have independently conceived of the genus in a different specific form. Id. 2249. The presumption is that the one to make the specific claim is the first inventor of the species and that the one who makes the generic claim is the first inventor of the genus, and this presumption is strengthened, as in the present case, when neither applicant will make both generic and specific claims upon the sug- gestion of the office. Williams v. Perl, C. D. 1899, 87 O. G. 1607. 2250. Where the testimony shows a con- ception and disclosure of one specific form of the invention, Held, sufficient to establish a INTERFERENCE, XXXIII, (j). 353 conception and disclosure of the generic in- vention based upon another specific form. Slaughter v. Halle, C. D. 1902, 99 O. G. 2771. 2251. Where the machines of the respective applicants differ specifically from each other, but both embody the same generic invention and the issue of the interference is sufficiently broad to cover that generic invention. Held, that as between the parties to the interference the one who invented his specific machine first is consequently the first inventor of the gen- eric invention defined in the issue. Barrett V. Harter, C. D. 1904, 112 O. G. 929. 2252. Where an inventor deliberately pro- ceeds to complete one specific form of his in- vention and lays aside the work on another specific form and no reason appears for this course, except that it suited his own per- sonal business affairs, Held, that in law he is not excusable for the delay, as business con- venience does not excuse delay in reducing an invention to practice. Id. 2253. As proofs which establish the facts of conception and disclosure and also of re- duction to practice of one specific form of an invention cannot be held to establish con- ception and disclosure or reduction to prac- tice of another specific form of the same gen- eric invention, Held, that diligence in redu- cing to practice the conception of one spe- cific form cannot be held to be diligence in the reduction to practice of another specific form. Id. 2254. Where the testimony shows concep- tion of the invention by an inventor of two specific forms, one form of which constitutes the invention of the issue, and that the in- ventor worked upon and reduced to practice the form of the invention not defined by the issue and did nothing toward completing the invention defined in the issue until after his opponent entered the field, Held, that the in- ventor has not shown reasonable diligence. Clement v. Richards v. Meissner, C. D. 1904, 113 O. G. 1143. 2255. Where a party disclosed two distinct forms of invention, diligence in the perfec- tion of one form cannot take the place of dil- igence in the perfection of the other form to support an award of priority as to the latter form. Briggs v. Lillie v. Cook v. Jones & Taylor, C. D. 1905, 116 O. G. 871. 2256. Held, that Cherney was the first in- ventor of the construction covered by certain counts of the issue and that Clauss was the 23 first inventor of the construction covered by the other counts. Decision affirmed. *Cher- ney v. Clauss, C. D. 1905, 116 O. G. 597. 2257. Where it appears that the junior party invented the main construction of sup- porting the entire rotating baking-support, in- cluding means for supporting the stone slabs upon the arms, and where it further appears that certain changes were made by the junior party in the castings for the arms. Held, that two counts which include merely an improved manner of mounting the slabs upon the arms cover an invention ancillary to the junior party's invention, and priority of invention is awarded to him also upon these counts, par- ticularly in the absence of testimony tending to establish that they were invented by the other party. Id. 2258. Where some of the counts of the issue cover a rotating baking-surface and other counts include such a rotating baking-surface in combination with a peculiar arrangement of flues. Held, that though the applicant is the original inventor of the rotating baking- surface he has presented no convincing evi- dence tending to prove originality of the com- bination claims, and priority upon these claims is awarded to the patentee. Cherney v. Clauss, C. D. 1905, 115 O. G. 2131. 2259. A claim for a flexible photographic film and a strip of black paper longer than the film, including "means whereby one end of the film is attached to the black paper," Held, to be generic and to cover the devices of two interfering parties, one of whom showed the film attached by means of a flexi- ble piece of paper and the other of whom showed tongues upon the film-form engaging slots in the black strip. Id. 2260. Where the issue of an interference is generic and includes the specific construc- tions of both parties, the first inventor of either of the species is entitled to the award of priority. Lovejoy v. Cady, C. D. 1906, 123 O. G. 654. 2261. Where the issue of the interference is a generic claim and the evidence shows that McCormick disclosed the specific invention disclosed in his application to a third party, who thereupon reduced to practice another specific form of the broad invention. Held. that such reduction to practice inures to Mc- Cormick's benefit so far as the generic in- vention is concerned. McCormick v. Robin- son, C. D. 1906, 124 O. G. 2903. 354 INTERFERENCE, XXXIII, (k). (k) Disclosure in Prior Application or Patent. 2262. Park filed an application May 8, 1895, which disclosed but did not claim the subject- matter of the issue and which was passed to issue November 16, 1895. The application in the interference was filed July 30, 1896, con- taining and claiming the subject-matter of the first application, and in addition thereto new matter. The first application became abandoned after the second application was filed. Held, that the subject-matter of the first application being a part of the second application, any idea that Park intended to abandon the subject-mattter of the application is negatived. Park v. Cain, C. D. 1898, 83 O. G. 1345. 22G3. Held, further, that while, strictly speaking, the second application for all pur- poses may not be susceptible of being treated as a continuation of the first application, yet for many purposes it can be so treated. Id. 2264. Held, further, that the second applica- tion is, for the purpose of showing a con- structive reduction to practice, a continuation of the first application, and that Park, having disclosed the subject-matter of the issue in his first application at a date prior to any date that can be given to Cain, is entitled to an award of priority. Id. 2265. Park filed an application on May 8, 1895, which disclosed and claimed substan- ually the subject-matter of the interference. This application was allowed, but became abandoned. Park filed a second application, the one involved in this interference, before the first became abandoned, containing sub- stantially the claim of the allowed and aban- doned application. Held, that Park is entitled to claim a constructive reduction to practice as of May 8, 1895, as in the first application there was not only clearly disclosed the issue of the interference, but a claim was allowed which was repeated in the application in in- terference and which became the issue there- of. Park V. Davis, C. D. 1898, 84 O. G. 146. 2266. Where a second application was filed while a first application was forfeited, and a comparison of the two applications shows that the drawing of the first is the same as one sheet of the second and that the specification of the first is incorporated in the second, and additional drawings are filed with the second application and additional matter is included in the specification thereof which embodies some features not in the first, Held, that on an interference on the second application the applicant should have the benefit of his orig- inal application as a constructive reduction to practice of the invention set forth therein and embodied in the second application. *Cain V. Park, C. D. 1899, 86 O. G. 797. 2267. Where in a motion to dissolve an in- terference and to redeclare it an earlier ap- plication than the one in issue is disclosed by the moving party on which said party re- lies to anticipate his opponent. Held, that as the motion is based upon what is disclosed in said earlier application the said application should be disclosed to the opposing party. (White V. Demarest, C. D. 1887, 133, 41 O. G. 1161, distinguished.) Thorpe v. White and White, C. D. 1900, 91 O. G. 227. 2268. Held, further, that said moving party should not be permitted to take advantage of his neglect in not earlier moving to have said application included in the interference. Id. 2269. Where there was a judgment on the record against Thorpe in an interference in which two of his applications were involved and he moved to vacate the judgment for the purpose of having an interference declared on the same subject-matter, including an ear- lier application of his, which it is admitted on behalf of White and White discloses part of the subject-matter of the interference; but they contend that Thorpe having canceled the interfering claims in his earlier application and filed the two later ones for the purpose of interference is estopped from placing the interfering claims in the prior application for the purpose of a second interference, Held, that as Thorpe's earlier application discloses the counts of the issue the office is in posses- sion of facts showing an earlier constructive reduction to practice by Thorpe than by White and White, and it is the duty of the office to place the earlier application in interference with White and White. Thorpe v. White and White, C. D. 1900, 91 O. G. 1435. 2270. Where White and White contended that Thorpe was not acting in good faith and that the motion made by him was a dila- tory one with the object of delaying the issue of the patent to White and White after judg- ment by default, Held, that even conceding this to be true it cannot affect the decision of the case if Thorpe is asserting a legal right and is not seeking to obtain relief, the grant or refusal of which is in the discretion of the office, it being well settled that motives which actuate a litigant in asserting a legal INTERFERENCE, XXXIII, (k). 355 right cannot lawfully control the decision of the question. Id. 2271. The contention that a motion to shift the burden of proof and include in the inter- ference a prior application filed by B. is im- proper because based upon matter outside of the present record is not well founded, since if there was error in failing to include that application the only way in which it can be corrected is by referring to matter outside of the present record. Bundy v. Rumbarger, C. D. 1900, 92 O. G. 2001. 2272. Where on a motion to shift the bur- den of proof and include an earlier pending application it appears that the earlier case clearly discloses the invention in controversy, although there is no statement in either case connecting it with the other and the second includes additional matter not shown in the first. Held, that the motion should be granted. Bundy v. Rumbarger, C. D. 1900, 92 O. G. 2002. 2273. The question whether the second ap- plication is a continuation of the first as to the matter in issue is one of fact which must be determined by the office without regard to any statement to that effect in the cases them- selves. The statement would be a mere no- tice of the fact ; but the fact and not the state- ment is what would justify action. This of- fice must take notice of facts shown by its records. Id. 2274. If an application involved in the in- terference is a continuation of a prior appli- cation such as to give the applicant the bene- fit of its date for a constructive reduction to practice of the matter in issue, although it is not a continuation for all purposes, Held, that the applicant is entitled to the benefit of the earlier date on the question of burden of proof. (Park v. Cain, C. D. 1898, 73, 83 O. G. 1345.) Id. 2275. Since the rules provide that the first to file an application clearly disclosing the in- vention will be presumed to be the first in- ventor and will be made the senior party and that in the absence of testimony judgment will be rendered on the record against the junior party. Held, that a party who was the first to file an application disclosing the in- vention and in so far as the office records go appears to be the first inventor should not be made the junior party. Id. 2276. For two applications to be continua- tions of each other such as to warrant the second application in having the benefit of the first date the proceeding relating to the two must be in fact continuous. The pro- ceedings on the two must be merged into a single proceeding. There must be a connec- tion between the two which is warranted by law. (Sec. 4894, Rev. Stats.) Sarfert v. Meyer, C. D. 1902, 30, 98 O. G. 793. 2277. Where it appears that a patent to Meyer was granted on January 16, 1900, and that it disclosed an invention which consti- tuted the subject-matter of an application filed February 9, 1901, Held, that the appli- cation filed February 9, 1901, was not a con- tinuation of the application on which the pat- ent was granted, but must stand by itself and upon its own merits. Id. 2278. The last action by the office on the parent application was the date upon which the patent granted thereon was signed, sealed, and delivered — viz., January 16, 1900. The next action by applicant was the filing of the present application on February 9, 1901, more than one year after January 16, 1900. The actions are not such as to make of the "whole one continuous proceeding" such as defined in section 4894. A period of more than one year elapsed between successive actions. Id. 2279. Where H. filed an application for a patent on the invention in controversy on June 9, 1897, and at a later date filed the applica- tion here involved as a substitute for that earlier one, Held, that he is under the well- settled rule entitled to June 9, 1897, for a con- structive reduction to practice. Silverman v. Hendrickson, C. D. 1902, 99 O. G. 1171. 2280. Where W. had two applications pend- ing in either of which the claims in contro- versy could be made and he elects to make them in the latter case. Held, that he is enti- tled to the date of his earlier case as his record date upon the question of priority. Patten v. Wiessenfeld, C. D. 1902, 99 O. G. 2:)47. 2281. Where priority was awarded to W. by reason of a prior application not directly included in the interference and P. moves to dissolve on the ground of irregularity, alleg- ing that the earlier case should have been pos- itively included in the interference. Held, that the motion relates to a technicality rather than to the merits and was properly denied. Id. 2282. Where a party to an interference is given the benefit of the date of an earlier application filed by him under Rule 116 and on a motion to shift the burden of proof the examiner decides that the early case discloses 356 INTERFERENCE, XXXIII, (k). the invention, Held, that this is not a favor- able decision upon his right to make the claim from which no appeal can be taken, but is merely a ruling as to his record proofs from which an appeal may be taken to the commis- sioner. Diftgen v. Parmenter, C. D. 1902, 99 O. G. 29G0. 2283. Where on a motion to shift the bur- den of proof it is argued that a party is not entitled to the benefit of the date of an ear- lier application because the claim was not made therein and because there was included a disclaimer of it. Held, that this relates to his right to make the claim and not to the disclosure in the early case, which is the only thing considered under Rule 116. Id. 2284. Where T. claims that a prior applica- tion filed by him in 189.3 and abandoned after the present application was filed disclosed the invention, Held, that he is entitled to the date of that application for everything that it dis- closes, since the two are continuous if they cover the same thing. Tripler v. Linde, C. D. 1902, 101 O. G. 2288. 2285. Where the issue calls for a cooler as a separate element of the combination and T.'s earlier application introduced in evidence does not disclose such a cooler and has been rejected as inoperative because of its absence. Held, that he is not entitled to the date of that application for a constructive reduction to practice. Id. 2286. Where the issue includes a cooler as an element and the evidence shows that T. did not regard a cooler as necessary and did not intend to use one. Held, that he had no conception of the invention. Id. 2287. Where a party in his testimony refers to an earlier application not involved in the interference as proof of earlier invention by him, Held, that it must be considered like any other evidence and that the examiner of in- terferences must determine whether or not it disclosed the invention in controversy with- out regard to the views upon the subject which may have been expressed by the primary ex- aminer in his treatment of the case. Robinson V. Copeland, C. D. 1903, 102 O. G. 466. 2288. Where the examiner of interferences is of the opinion that an application intro- duced in evidence did not as filed disclose the invention and that the disclosure therein con- stituted new matter inserted therein by amend- ment and it appears that the primary exam- iner permitted the amendment and does not regard it as involving new matter, Held, that the examiner of interferences is not bound by the action of the primary examiner, but must give his independent judgment. Id. 2289. .■\ party is entitled to contest the ques- tion whether his opponent's application direct- ly involved in the interference discloses the invention by a motion to dissolve notwith- standing a prior favorable decision, and he has an equal right to contest before the ex- aminer of interferences at final hearing the same question in regard to applications in- troduced as part of the evidence. Id. 2290. Where a later application discloses matter not disclosed in an earlier application, but also includes matter which is common to both applications, Held, that the later applica- tion is a continuation of the prior applica- tion as far as the invention common to both applications is concerned, and as to this com- mon invention the inventor is entitled to the benefit of the filing date of his prior applica- tion in an interference proceeding. Gilbert- Stringer v. Johnson, C. D. 1903, 102 O. G. 621. 2291. Where an interference is declared and one of the parties is given the benefit of the date of filing of a prior application which does not disclose the subject-matter of one of the counts of the issue. Held, that there was such irregularity in the declaration of the in- terference as to this count as to preclude the proper determination of the question of pri- ority. Id. 2292. Where there is doubt whether an earlier application disclosed the invention in a later continuous application involved in in- terference. Held, that the earlier application should be excluded from the declaration of the interference. Munro v. Alexander, C. D. 1903, 106 O. G. 1000. 2293. Where the office fails to include an earlier application by one of the parties in the declaration of the interference, he is not deprived of the benefit of it if it discloses the invention, since he may introduce it as a part of his evidence. Id. 2294. Where M. files a mechanical applica- tion and subsequently a design application and is placed in interference with a design application filed by G. after the filing of his mechanical application, but prior to the filing of his design application. Held, that the bur- den of proof was properly placed upon M. McArthur v. Gilbert, C. D. 1904, 110 O. G. 2509. 2295. When an applicant filed a complete application for a patent on a certain inven- INTERFERENCE, XXXIII, (k). 357 tion and thereafter files another application for the same invention the two appHcations pending at the same time, and subsequently permits the first application to become aban- doned, he is entitled to the date of the first application for his date of constructive reduc- tion to practice for the invention which is common to the two applications. Lotterhand V. Hanson, C. D. 1904, 108 O. G. 799. 2286. When two applications filed by the same applicant are pending together, the ap- plicant has the benefit of the first date of filing for a constructive reduction to practice, as the whole constitutes one continuous proceed- ing. Id. 2297. H. having a constructive reduction to practice prior to the date of L.'s established conception is entitled to the award of priority of invention. Id. 2298. Where a party files an application claiming a machine and describing the article produced by it and while that application is pending he files a second application claiming the article. Held, that in an interference as to the second case the applicant is entitled to the date of the first case in determining the question of the burden of proof. Lowry v. Spoon, C. D. 1904, 110 O. G. 858. 2299. A divisional application entitles the applicant to the benefit of the date of the original application from which it was di- vided, and this is true although the first con- tained no claims to the matter in the second, since the two constitute parts of one contin- uous proceeding. Id. 2300. Where a party files an application for patent disclosing an invention, but permits it to become abandoned, and thereafter files a second application which is placed in inter- ference. Held, that the first application is proof only of the conception of the invention and is not a constructive reduction to practice. Trufant v. Prindle v. Brown, 111 O. G. 1035. 2301. Where there is doubt whether an ear- lier application disclosed the invention in a later continuous application involved in in- terference, Held, that the earlier application should be excluded from the declaration of the interference. (Munro v. Alexander, C. D. 1903, 334, lOG O. G. 1000.) Greenawalt v. Mark, C. D. 1004, 111 O. G. 2224. 2302. Where the office fails to include an earlier application by one of the parties in the declaration of the interference, he is not de- prived of the benefit of it, if it discloses the invention, since he may introduce it as part of his evidence. Id. 2303. Where it appears that the senior party to an interference has a patent disclosing the invention of the issue and it is contended by him that the junior party has not established by means of his testimony a date of concep- tion prior to the date of filing of the applica- tion on which the patent was granted. Held, that the question presented for decision is that of priority of invention and that judg- ment should be rendered in favor of the se- nior party if the facts be found, as alleged, and that the interference should not be dis- solved on motion. Winton v. Jeffrey, C. D. 1904, 112 O. G. 500. 2304. Where a party to an interference has a prior patent which he believes discloses the invention of the issue, Held, that to insure its consideration attention should be called to the patent in the record under the provisions of Rule 154 (6). Id. 2305. The primary examiner should, in pre- paring the notices under Rule 97, arrange the parties in the inverse chronological order in which they filed the applications directly in- volved in the interference, leaving the ques- tion whether there are earlier applications by either party which may constitute legal proof of earlier invention for subsequent determi- nation by the examiner of interferences. Rau- let and Nicholson v. Adams, C. D. 1905, 114 O. G. 827. 2306. The examiners should, in connection with the declaration of the interference, call the attention of the examiner of interferences to any earlier applications by either party which it is thought may be considered proof of earlier invention of the subject-matter in issue. Id. 2307. Where an applicant relies upon an earlier application and its filing date is such that if he had made the invention at that time it could have been described and claimed in such application, but was not, Held, that the emission to include the invention of the issue in such applications discredits his testimony that he has made the invention at such early date. *Norden v. Spaulding, C. D. 1905, 114 O. G. 1828. 2308. Where an inventor takes out a patent covering a certain combination of elements and subsequently makes a second application for a patent on a combination which performs substantially the same function, but differs from the first by the omission of one element 358 INTERFERENCE, XXXIII, (k). and conscqufnt m(Kli(ication of certain others, and the patent office finds a patentable dif- ference between the two inventions, Held, that the inventor will not be heard to argue in an interference proceeding that a conception of the first invention necessarily involves a con- ception of the second and that the second differed from the first only by reason of the exercise of mere mechanical skill. Pierce v. Hallett, C. D. I'JO'i, 117 O. G. 20;-). 2309. Where in an interference relating to a mechanical invention it appears that one of the parties has a design patent fully disclosing the invention granted before his opponent's date of conception. Held, that he must be regarded as the first inventor. Lowrie v. Tay- lor and Taylor, C. D. 1905, 118 O. G. 1681. 2310. The statute makes disclosure in a patent or printed publication an absolute bar against the allowance of a patent to one who subsequently makes that invention and there- fore a design patent must be given the same eflfect as completion of the invention disclosed therein by reduction to practice. Id. 2311. Where it is urged that Struble is bar- red from obtaining a patent upon the inven- tion in issue by his foreign patents in view of his failure to refer to his prior applica- tions and in view of the statements in the oath which forms part of the application in interference excluding foreign patents. Held, that if the invention in issue was disclosed in the earlier applications, then the latter ap- plication is a continuation of said earlier ap- plications and the foreign patents are no bar to the issue of a patent thereon. Struble v. Young, C. D. 1906, 121 O. G. 3,39. 2312. The question of whether an applicant in interference is entitled to the benefit of the dates of his earlier applications, raised by the introducing of his earlier applications in evi- dence and by the testimony taken concerning them, should be considered by the examiner of interferences and appellate tribunals as part of the case upon priority of invention. Id. 2313. Priority of invention awarded to L. because she was the first to reduce to prac- tice and because the invention was disclosed in a design patent granted to her prior to the earliest date of conception which can be found for T. and T. *Taylor and Taylor v. Lowrie, C. D. 190G, 123 O. G. 1991. 2314. Where a party has two applications involved in a interference and moves under Rule 109 for the addition of claims to one of his applications and the structure disclosed in that application can perform the function specified in the claims only by the omission of a part, and the application contains no reference to the omission of that part, or the the function set forth in the claims, Held, that the fact that the applicant's other application discloses the idea of omit- ting the part referred to, and thus securing the function described in the claims, affords no reason for granting the motion, and Held, that the entire disclosure necessary to sup- port the claim must be in the application in which the claim is made. Scott v. Southgate, C. D. 190G, 125 O. G. 1703. 2315. S. relied for conception and construc- tive reduction to practice of the invention on an earlier application copending with the one involved in the interference. Y. contended that the earlier application did not, as filed, disclose the invention. Some months prior to Y.'s date of conception an amendment to that application was filed which clearly dis- closed the invention on issue. Held, that this amendment established conception and dis- closure of the invention, that the prosecution of the invention disclosed therein in the ear- lier application constituted diligence and that priority was properly awarded to S. ''"Young v. Struble, C. D. 1910, l.')2 O. G. 123S. 231G. S. relied for conception and construc- tive reduction to practice of the invention on earlier application copending with the one in- volved in the interference. Y. contended that the earlier application did not, as filed, dis- close the invention. Some months prior to Y.'s date of conception an amendment to that application was filed which clearly dis- closed the invention in issue. Held, that this amendment established conception and dis- closure of the invention, that the prosecution of the invention disclosed therein in the ear- lier application constituted diligence, and that priority was properly awarded to S. *Young v. Struble, C. D. 1910, 157 O. G. 488. 2317. Priority Held, properly awarded to H. and G., the senior parties, since the invention in issue was disclosed in an application filed by them prior to any date of conception claim- ed by the junior parties. *Booth, Booth and Flynt v. Hanan & Gates, C. D. 1911, 163 O. G. 729. 2318. Where C. relies upon a prior appli- cation of which he contends the application in interference is a division and it appears that the claims of such prior application were INTERFERENCE, XXXIII, (1). 359 rejected by all the tribunals of the patent of- fice and that thereafter and after the issu- ance of L.'s patent C. filed his present appli- cation with claims taken from his patent, copying the drawings of the prior application, but adding to the specilication thereof, Held, that there is imposed upon C. the burden of showing very clearly that he had a conception of the invention in issue and disclosed it in his prior application. *Curtis v. Lindmark, C. D. 1911, 171 O. G. 484. 2319. Prior application relied upon by C, the junior party. Held, not to disclose the in- vention in issue and that priority was prop- erly awarded to L. *Id. (e) Concession. 2320. Where a motion was made to dissolve an interference on the ground that "the in- vention disclosed in the issue of said interfer- ence is not patentable to Leonard Paget or his assignees, the Reliance Lamp Electric Com- pany, by virtue of concessions made in the testimony taken in behalf of said Leonard Paget, which concessions allege that the sub- ject-matter of the issue embraces no invention over the subject-matter disclosed in a prior patent. No. 618,993, granted to said Leonard Paget on the 7th day of February, 1899," Held, that the motion being based upon grounds arising out of testimony taken on the question of priority, it should not, under the settled practice of the office, be transmitted to the primary examiner. (Cook v. Leach, 43 MS. Dec, 370; Potter et al. v. Soden, 47 MS. Dec, 119; Thomson et al. v. Hisley, C. D. 1894, 43, 66 O. G. 1596, cited.) Paget v. Bugg, C. D. 1899, 89 O. G. 1342. 2321. Held, further, that the testimony on which the motion is based is such testimony as should be considered on the question of priority, and if the examiner of interferences or the examiners-in-chief are of the opinion that it establishes a statutory bar to the grant of a patent Rule 120 provides relief for the appellant in that these tribunals may call the commissioner's attention to the statutory bar. Id. 2322. The sole and original inventor of a device cannot part with his right to a patent and give a valid claim to some one else as inventor by a surrender or concession in favor of that other party. The patent must disclose the real inventor, and the issue there- of must be founded upon his right as such inventor. *Tyler v. Kelch, C. D. 1902, 98 O. G. 1282. 2323. A written abandonment of the inven- tion to avoid the continuation of an interfer- ence under Rule 125 must be signed by the in- ventor as well as by the assignee. Skinner v. Murray, C. D. 1903, 107 O. G. 542. 2324. The law requires the inventor to sign the application for a patent even after he has parted with all interest in the invention, and since he is at least a nominal party he should in all cases sign the letter of abandonment. Id. 2325. Where after a decision as to priority is rendered in favor of the senior party be- cause the junior party fails to print his testimony the senior party files a paper conceding priority to the junior party. Held, that the decision will be set aside and the concession of priority entered. Couper and Somers v. Bannister, C. D. 1904, 112 O. G. 1480. 2326. Where a decision as to priority of in- vention is made from a consideration of the evidence, Held, that it will not be set aside because of a paper thereafter filed by the suc- cessful party conceding priority of invention by his opponent. Humphrey v. Fickert, C. D. 1904, 113 O. G. 2094. 2327. Where the office finds one party to be the first inventor, it cannot issue the pat- ent to another merely because the first inven- tor consents to it. Id. 2328. Judgment based upon some technical default, such as failure to print testimony, may be vacated upon consent of the parties ; but this is not true where the case was de- cided on its merits. Id. 2329. Where a decision on the question of priority of invention based upon the evidence has been rendered in favor of one party and that decision has become final. Held, that the decision will not be set aside and priority of invention awarded to the other party in view of a concession of priority subsequently filed. Humphrey v. Fickert, C. D. 1905, 115 O. G. 803. 2330. Where claims are made by a party upon suggestion under Rule 96 and the party thereafter concludes that he has no right to make the claims, he may properly concede priority to his opponent or abandon the in- vention represented by the claims, or he may permit judgment by default to be rendered against him. Miller v. Perham, C. D. 1906, 121 O. G. 2667. 360 INTERFERENCE, XXXIII, (m). 2331. An award of priority may mean either that one of two inventors of the same thing subsequent in date to another or that one party is the only inventor of the issue, be- cause the other never invented the same at all, and there seems to be no reason why this should not be as true where the award is based upon concession as where it is based upon testimony. Martin v. Mullin, C. D. 1907, 127 O. G. 3216. 2332. A declaration of abandonment accom- panied by a statement that applicant abandons certain counts because they are either lim- ited or anticipated or are not applicable to the structure will not be accepted under Rule 125. Corrington v. Turner, C. D. 1908, 136 O. G. 1067. 2333. A declaration of abandonment accom- panied by reasons for tiling the same will not be made the basis for judgment under Rule 12'), but it should not be stricken from the files. Id. 2334. A concession of priority should be signed by the applicant, if living, or, if not, by his executor or administrator, even though both the applications involved in the interfer- ence are assigned to the same party. Alt v. Carpenter, C. D. 1908, 132 O. G. 1587. (m) Ancillary Questions. 2335. The question of patentability of the claim in interference is not involved in the interference. (Hisey v. Peters, C. D. 1895, 349, 71 O. G. 892; Doyle v. McRoberts, C. D. 1897, 413, 79 O. G. 1029,) After the interfer- ence shall have been finally determined the question of patentability may be raised against the successful party. *Hill v. Hodge, C. D. 1898, 83 O. G. 1211. 2336. When the interference has been de- termined and the question of patentability is before the primary examiner, the defeated party to the interference has no other inter- est in the decision on patentability than as one of the general public whose interests are under the protection of the commissioner of patents. *Id. 2337. The proofs show that after Christen- sen's conception of the device. May, 1894, he disclosed it to others in the latter part of that year; that he tried to obtain money to enable him to apply for patent in December, 1894; that he sought to interest a party in the invention in the spring of 1895 ; that in June, 1895, he made another attempt to file an ap- plication; that in September, 1895, an oral agreement was made in regard to the matter; that in December, 189.5, working drawings were made and that from that time on to the time he filed his application he was working on the invention ; that patterns were finished in 1896 and the device tested in March, 1896, and that he applied for a patent in April, 1896. Held, that it is difficult to conceive that greater perseverance and diligence could be in reason required, especially of one who for the greater part of the time was in a state of almost abject poverty and who was under the necessity of pursuing constant employment to procure the means of subsistence for him- self and family. *Christensen v. Noyes, C. D. 1900, 90 O. G. 223. 2338. Where an appeal is taken upon the question of priority of invention, Held, that tlie appellant is not entitled to a hearing upon the question as to the patentability of his op- ponent's claim. Kempshall v. Seiberling, C. D. 1904, 110 O. G. 1427. 2339. Held, that only the party who is in- jured by an adverse decision can appeal there- from. Judd V. Campbell, C. D. 1904, 110 O. G. 2016. 2340. It is within the power and is the duty of the tribunals of the patent office in deciding priority to examine and decide all ancillary matters necessary to a correct determination of the main questions; but they are not re- quired to decide the ancillary matters prior to the final decision. *Allen, Commissioner of Patents v. United States of America, ex rel. Lowry and Planters" Compress Co., C. D. 1905, 116 O. G. 2253. 2341. The question as to the right of a party to make the interfering claim raised by interlocutory motion is to be reviewed, if at all, on the hearing of the statutory appeal al- lowed from the decision of the question of priority by the examiner of interferences. *Id. 2342. Where consideration of patentability on appeal on priority was urged with a view to the exercise of the supervisory authority of the commissioner, Held, that introduction of supervisory authority into the judicial determinations of the patent office is a thing which should not be done excepting as a last resort to avoid a clear miscarriage of justice. Sobey V, Holsclaw, C. D. 1905, 119 O. G. 1922. 2343. Where the supervisory authority was invoked for the consideration of the patent- ability of the issue and it appeared that the primary examiner had found the issue to be INTERFERENCE, XXXIII, (m). 361 patentable and that the examiners-in-chief had refused to recommend adversely to the patentability of the issue in their decision on priority and that in each case the action had been made in view of the references still re- lied upon. Held, that the case instead of being one presenting palpable necessity for interfer- ence by supervisory authority is one in which the patentability of the issue is so well set- tled by the determination of competent tribu- nals that the prevailing party should be al- lowed to take the claims and support their validity before the courts. Id. 2344. Under the circumstances set forth in Pohle v. McKnight (C. D. 1905, 549, 119 O. G. 2519) and Podlesak and Podlesak v. Mc- Innerney (ante, 558, 120 O. G. 2127) the ques- tion of the right of a party to make a claim may be an ancillary question to be considered in awarding priority of invention. Wickers and Furlong v. McKee, C. D. 1900, 124 O. G. 905. 2345. In view of the holding by the court of appeals in Podlesak and Podlesak v. Mc- Innerney (ante, 55S, 120 O. G. 2127), and by the commissioner in Pohle v. McKnight (C. D. 1905, 549, 119 O. G. 2519) and Kilboum v. Hirner (ante, 161, 122 O. G. 729) that the question of the right of a party to make the claims may be considered as a basis for an award of priority, the right of F. to make the claim of the issue is given consideration, and it is found that his original application did not disclose the complete invention of the issue; that consequently he has no right to the claim forming the issue, and that E. is therefore en- titled to the award of priority. Emmet v. Fullagar, C. D. 1906, 124 O. G. 2178. 2346. The question of the right of a party to make a claim may sometimes be an ancil- lary question to be considered in awarding priority of invention, and there are good rea- sons why the question of the right to make the claims may be considered a basis for an award of priority rather than a ground for a dissolution of an interference. *Wickers and Furlong v. McKee, C. D. 1907, 129 O. G. 869. 2347. In awarding priority of invention the right of a party to make a claim may be con- sidered as an ancillary question ; but where three tribunals of the patent office have con- curred in answering the question in the affirm- ative the court will follow them unless a mani- fest error has been committed. ♦Lindmark V. Hodgkinson, C. D. 1908, 137 O. G. 228. 2348. The claims as interpreted in the light of N.'s amended specification, where they orig- inated, call for twice bending the covering material — first at right angles to the edge of the flange of the eyelet and then over under the flange to secure it thereto. Held, that as N.'s machine as constructed and operated and as shown in his application was not capable of operating in this manner N. has no right to make these claims. *Nenberth v. Lizotte, C. D. 1009, HI O. G. 1161. 2349. Count 7 specifies a machine for cover- ing studs. N.'s machine as shown and illus- trated could not be used for covering studs. Held, that as he does not point out in his specification any modification of his machine by which it could be made to cover studs and as such modilication would not be a mere matter of mechanical skill, N. has no right to make a claim in the terms of this count. *Id. 2350. A disclosure in an application which is sufficiently specific to enable persons skilled in the art to readily construct and use the invention constitutes a compliance with sec- tion 48S8, Revised Statutes (Hopkins v. New- man, C. D. 1908, 395, 134 O. G. 2028, 30 App. D. C. 402) ; but in an application for an automatic signaling sj'Stem involving an induc- tive bond employed to bridge the rails a general reference to "transformers" does not entitle the applicant to amplify his description by adding thereto a description of a particu- lar kind of transformer and make claims thereto, although such construction may have been old in the art when the application was originally filed. *Townsend v. ThuUen, C. D. 1909, 142 O. G. 1116. 2351. In deciding whether a party to an in- terference has a right to make a claim in- volved therein such claim should be given the broadest meaning consistent with its terms ; but it cannot be enlarged beyond the plain import thereof as set forth in the specifica- tion on which it is based. Sinclair v. Engel, C. D. 1909, 147 O. G. 769. 2352. Where the invention in issue is a water-tube boiler and the counts which corre- spond to S.'s claims specify, respectively, "a plain drum having separate tube-landings formed therein" and "a plain drum having parallel rows of separate circular tube-land- ings," Held, that these claims cannot be made by E., whose application discloses a drum having landings adapted to receive at least two tubes. Id. 362 INTERFERENCE, XXXIII. (m). 2353. Where the terms of the claims in issue are found to apply aptly to the structure of a party to the interference who has copied them from the patent of the other party, Held, he has a right to make the claims even though his disclosure embodies an element the use of which it was the expressed purpose of the patentee to render unnecessary by the struc- ture particularly referred to in the claims. Pratt V. de Ferrranti and Hamilton, C. D. 1909, 148 O. G. 569. 2354. Where the claim in issue specifies separate sources of current connected to a plurality of electrodes of a mercury-vapor de- vice and H. shows separate phases of a poly- phase generator connected to the respective electrodes. Held, that he has a right to make this claim (citing Westinghouse Electric Mfg. Co. v. The New England Granite Co., 110 Fed. Rep. 753.) Weintraub v. Hewitt, C. D. 1909, 148 O. G. 1087. 2355. While the question of the patentabil- ity of the issue will not be entered on appeal from an award of priority, the right of one of the parties to make the claims under the disclosures of his application will be enter- tained as an ancillary question. (Podlesak and Podlesak v. Mclnncrney, C. D. 1906, 588, 120 O. G. 2127, 26 App. D. C. 399.) *Gold V. Gold, C. D. 1910, 150 O. G. 570. 2356. In the device of W. each of the posi- tive electrodes is connected to an individual or distinct coil of a polyphase generator. Held, that W. is entitled to make the claims in issue, in which it is specified that each of the positive electrodes is connected to a sep- arate source of current. ♦Weintraub v. Hew- itt, C. D. 1910, 154 O. G. 254. 2357. The examiners-in-chief rendered a decision on priority in favor of R., but refused to consider the right of S. to make the claims, on the ground that they had previously con- sidered that question on appeal from the de- cision of the primary examiner on a motion to dissolve the interference and that the com- missioner had refused to review their deci- sion in the exercise of his supervisory author- ity. Held, that the examiners-in-chief were in error in refusing to consider the question of the right of S. to make the claims, and the interference is remanded to them to render a supplemental decision upon that question. Schutte V. Rice, C. D. 1910, 157 O. G. 753. 2358. The question of the right of a party in an interference to make the claims of the issue is one that may be raised, decided, and brought up as an ancillary question necessar- ily involved in that of priority. *Cosper v. Gold and Gold, C. D. 1910, 1 O. G. 2359. Record considered and field, to es- tablish that appellant is entitled to make the claims in issue. *Gold v. Gold, C. D. 1910, 152 O. G. 731. 2360. Held, that M., the senior party, has no right to make the claims in issue, since the invention covered thereby is not fully and clearly disclosed in his application. *Slinguff & Herchert v. Maynard, C. D. 1911, 762 O. G. 1002. 2361. "We agree with the patent office 'that Hayes is entitled to make all of the counts, he having disclosed an air-chamber and valves with ports and passages within the fair and natural meaning of those terms and only dif- fering in degree rather than substance from those disclosed by Norling.' " Norling v. Hayes, C. D. 1911, 166 O. G. 1282. 2362. Held, that B., the senior party, is en- titled to make the claims and that priority was properly awarded to him on the record. •Grif- fith V. Braine, C. D. 1911, 168 O. G. 249. (m) Appeal. 2363. There is no appeal directly to the commissioner from the decision of the exam- iner of interferences awarding priority of in- vention in accordance with the provisions of Rule 116. Brough v. Snyder, C. D. 1900, 94 O. G. 221. 2364. The patentability of the claims of the contesting parties in an interference case is not involved in an appeal on the question of priority of invention and will not be deter- mined by the court. *Schupphaus v. Stevens, C. D. 1901, 95 O. G. 1452. 2365. Where it was contended that the ques- tion whether Steven's application discloses or covers the invention of the issue is necessarily involved in the determination of the question of priority of invention. Held, that this con- tention has no support in any decision of the court. It is a question of patentability and nothing else. *Id. 2366. Where Stevens was the first to file an application for a patent and the testimony for Schupphaus failed to show that he made the invention prior to the date of that appli- cation. Held, that judgment will be rendered in favor of Stevens without considering the question whether his application as filed dis- closes the invention in controversy, since that INTERFERENCE, XXXIII, (m). 363 matter was settled by proceedings in the pat- ent office. *Id. 2367. Where after the limit of appeal on the question of priority has expired a motion to dissolve is transmitted to the primary exam- iner and decided by him. Held, that the party is not entitled thereafter to take an appeal as to priority. Benger v. Burson, C. D. 1902, 99 O. G. 13S4. 2368. While it may have been necessary in justice to both parties to finally determine whether or not an interference in fact existed or whether or not either of the parties had a right to make the claim, the necessity for an appeal to the examiners-in-chief from a decision awarding priority on the record is not apparent. Such a course would only op- erate to delay the final determination of the case. Id. 2369. On an appeal to the court relating to priority of invention the question whether one party's application furnishes a basis for the claims of the issue will not be considered, since it is rendered res adjudicala by the dec- laration of the interference. The only ques- tion to be determined is priority of invention. ♦Herman v. Pullman, C. D. lUOt, 1U9 O. G. 288. 2370. On an appeal relating to priority of invention the court will not consider the ques- tion whether the device shown in the appli- cation of one of the parties is operative. The decision of the patent office on that matter will be accepted. *Lotterhand v. Hanson, C. D. 1904, 110 O. G. 861. 2371. Where upon appeal upon priority no error was pointed out in the decision below, but the appellant argued that the issue was not patenta1)Ie, Held, that the question of patent- ability was not up for consideration. Fair- banks and Sauer v. Karr, C. D. 1905, 119 O. G. 651. 2372. Where the examiner of interferences rendered a decision in an interference case on the question of priority of invention. Held, that a review of that decision should be ob- tained by an appeal to the examiners-in-chief and that a petition that the examiner of inter- ferences be directed to reconsider his decision will be dismissed. Gallagher v. Despradels, C. D. 1905, 114 O. G. 973. 2373. Where an interference is before the commissioner on appeal from a decision of the examiners-in-chief on the question of priority of invention and a protest is filed by the ap- pellant against the grant of a patent to the appellee in view of certain previously granted patents cited in the protest and a brief is filed by the appellant discussing the question of patentability. Held, that the brief should be stricken from the files, as the question of an- ticipation is an ex parte one and the appel- lant has no right to argue the pertinency of the references against the appellee's cbims except on a motion to dissolve brought at the proper time. Hedlund v. Curtis, C. D. 1905, 114 O. G. 544. 2374. There is no appeal from the refusal of the examiner of interferences to enter judgment of priority in favor of a particular party, nor will the matter be reviewed upon interlocutory petition. The appeal must be from the final judgment when entered. Mul- ligan V. Tempest Salve Company, C. D. 1905, 119 O. G. 1924. 2375. Where a party who cannot prevail upon priority takes an appeal from the deci- sion against him thereon merely for the pur- pose of attacking the patentability of the issue. Held, that the appeal raises merely the ques- tion of priority, and the decision below must ordinarily be affirmed without consideration of the question of patentability, for the rea- sons given in Sobey v. Holsclaw (C. D. 1905, 523, 119 O. G. 1922.) Potter v. Mcintosh, C. D. 1906, 120 O. G. 1823. 2376. Where a party to an interference did not appeal from the adverse decision of the examiners-in-chief upon priority, so that under Rule 132 of the patent office the claims which were involved in that interference stand finally rejected. Held, that such party has no standing before the court in the inter- ference as to those claims. *Fowler v. Boyce, C. D. 1906, 121 O. G. 1014. 2377. Held, that the decision of the court in the case of Podlesak and Podlesak v. Mc- Innerney (ante, 55S, 120 O. G. 2127) does not support the contention that the question of patentability should be considered upon the appeal upon priority of invention. Potter v. Mcintosh, C. D. 1906, 122 O. G. 1721. 2378. Where the grounds for dissolution specified in Rule 122 were raised at the proper time and decided by the primary examiner and by the examiners-in-chief on appeal and the case is appealed to the commissioner from a decision of the examiners-in-chief on the question of priority, a motion to transmit the interference to the primary examiner to con- sider the question of patentability will not be granted unless a clear and unmistakable error 364 INTERFERENCE, XXXIII, (m). appears in the prior decisions. Parkes v. Lewis, C. D. 1906, 120 O. G. 323. 2379. Held, that the case of Podlesalv and Podlesak v. Mclnnerney (ante 558, 120 O. G. 2127), is believed to emphasize and carry for- ward the suggestions contained in the case of Allen, Commissioner of Patents v. The United States of .\merica, ex rel. George A. Lowry and Planters' Compress Company (C. D. 1905, 643, 116 O. G. 2253), to the effect that an opponent's right to make claims might be questioned upon appeal from decisions upon priority of invention where a holding of right on the part of one party to make the claims operates to deny a patent to another party who, if such holding be in error, is the first inventor. Id. Miel v. Young, C. D. 1906, 121 O. G. 1350. 2380. Where a decision awarding priority of invention is based upon the date of con- structive reduction to practice obtained by a party through filing his application in inter- ference and upon appeal the opposing party attacks the sufficiency of the disclosure in the application to support a judgment upon the subject-matter of the issue. Held, that the question raised by the attack is one properly considered in determining the question of priority. Kilbourn v. Hirner, C. D. 1906, 123 O. G. 729. 2381. Where the question of a party's right to make the claims in issue is raised on appeal on priority and it is decided to entertain that question and the machines upon which the issue is drawn and those of the prior art are complex and intricate and their operation in- volved and no written opinion upon the ques- tion has been made by the primary examiner, Held, that the interference will be remanded to the primary examiner, who will hear the parties and furnish his opinion as to the question raised, together with a statement of the reasons for his conclusions. Id. 2382. After a decision of the court of ap- peals on the question of priority the commis- sioner of patents may refuse a patent to the successful interferant. *Sobey v. Holsclaw, C. D. 1907, 126 O. G. 3041. 2383. Where the patentability of the claims of an interference issue has been favorably passed upon by the primary examiner ex parte and also inter partes upon a motion to dis- solve, from whose affirmative decision in the latter case no right of direct appeal is given either by the patent statutes or the rules of the patent office, and both the examiner of interferences and the examiners-in-chief have refused to direct the attention of the commis- sioner, under Rule 126, to the fact that the claims were unpatentable, it cannot be suc- cessfully maintained that the commissioner of patents decided the question of priority without first determining and deciding that the subject-matter was patentable. *Id. 2384. Where the question of the patentabil- ity of the claims of the issue has been repeat- edly raised before the subordinate tribunals of the patent office and is again raised upon appeal to the commissioner on priority, the adoption by the commissioner of the views of the subordinate tribunals is a sufficient de- termination by him of the question so far as it is necessary to be determined in an inter- ference proceeding. *Id. 2385. The question of the patentability of the issue will not be considered on appeal on priority under such special circumstances as would warrent the exercise of the supervisory authority of the commissioner. Hess v. Joerissen v. Felbel, C. D. 1907, 131 O. G. 1419. 2386. The court of appeals of the District of Columbia will not consider the operative- ness of a device disclosed by one of the in- terfering parties as incident to the main ques- tion of priority where that question has been settled in favor of such party by the patent office in accordance with the practice of that office. *Duryea and White v. Rice, Jr., C. D. 1907, 126 O. G. 1357. 2387. Where the junior party to an inter- ference concedes that his preliminary state- ment fails to overcome the filing date of the senior party and the patentability of the issue has been favorably passed upon by the tribu- nals of the patent office, before whom the question was brought in accordance with the practice of that office, on appeal to the court of appeals from a judgment on priority the question of patentability will not be consid- ered where it is raised merely for the purpose of preventing the grant of a patent to the se- nior party, except in an extraordinary case. ♦Potter V. Mcintosh, C. D. 1907, 127 O. G. 1995. 2388. "As regards the contention of the ap- pellant that 'the structure in interference dif- fers from the prior structure of Roberts in but two particulars,' * * * it is sufficient to say, that in so far as it appears to raise a question of patentability, that question has been settled by the allowance of the claims." INTERFERENCE, XXXIV. 365 Dunbar v. Schellenger, C. D. 1907, 128 O. G. 2837. 2389. On an appeal on priority the court will not review the findings of the commis- sioner upon the sufficiency of a showing to support a petition for the reinstatement of an abandoned application where there appears to have been no abuse of power on the part of the commissioner. *Kinsman v. Strohm, C. D. 1908, 136 O. G. 1769. 2390. The question of the patentability of an invention is not one for determination by the court of appeals upon an appeal from a decision on priority. *Mell v. Midgley, C. D. 1908, 136 O. G. 1534. 2391. Where in an interference in which the junior party is defeated on the record the primary examiner held the issue patentable and the examiners-in-chief refused to make a recommendation that the same is not patent- able, there is no such manifest error as will warrant the consideration of this question upon appeal on priority under the commis- sioner's supervisory authority. Moffatt v. Weiss, C. D. 1908, 137 O. G. 1481. 2392. Where an appeal from a decision on priority does not question the propriety of such decision, but merely seeks a ruling on questions previously considered by the com- missioner on interlocutory appeals, relief will be refused. Smith v. Irland, C. D. 1908, 137 O. G. 1708. 2393. A decision by the court of appeals of the District of Columbia in an interference proceeding which leaves no question open for further consideration relating to priority of invention terminates the interference proceed- ing, and the commissioner of patents is with- out jurisdiction thereafter to entertain a mo- tion by the losing party to dissolve the inter- ference on the ground that the court held that the opposing party was not entitled to a pat- ent by reason of his having secured a for- eign patent for the same invention on an ap- plication filed more than the statutory period prior to the filing of the application in this country. GuenifTet, Benoit, and Nicault v. Wictorsohn, C. D. 1908, 134 O. G. 255. 2394. The question of the patentability of an invention is not one for determination by the court of appeals upon an appeal from a decision on priority. *Mell v. Midgley, C. D. 1908, 136 O. G. 1534. 2395. The question of the counts of the issue having different meaning and of their non- patentability will be considered on appeal on priority only under such extraordinary cir- cumstances as will warrant the exercise of the supervisory authority of the commission- er. Lacroix v. Tyberg, C. D. 1909, 148 O. G. 831. 2396. "It is also urged that the commission- er erred in awarding priority of invention to Tyberg on count 4 because the applications of the respective parties, so far as this count is concerned, do not show the same invention. This question cannot be raised for the first time at this stage of the proceeding. It should have been raised by appropriate motion be- fore the patent office and brought here on ap- peal." *Lacroix v. Tyberg, C. D. 1910, 150 O. G. 267. 2397. "Neither are we called upon in this proceeding to determine the patentability of the invention. That is a question to be de- termined by the patent office. (Mell v. Midg- ley, C. D. 1908, 512. 136 O. G. 1534, 31 App. D. C. 534; Sobey v. Holsclaw, C. D. 1907, 465, 126 O. G. 3041, 28 App. D. C. 65.)" *Id. 2398. Where the decision of the commis- sioner of patents was based on testimony, but this testimony is not included in the record on appeal, it must be assumed that hi.= deci- sion is correct. *GoIdberg v. Halle, C. D. 1910, 151 O. G. 452. XXXIV. Redeclaration. 2399. Where the primary examiner dissolves an interference on motion and no appeal is taken within the limit set, Held, that the de- feated party has no right to demand a rein- statement or redeclaration of the interference, but the office may of its own motion redeclare the interference where it is satisfied that the dissolution was due to a mistake. Hien v. Shephard. C. D. 1903, 105 O. G. 2062. 2400. \ petition by one party that a pend- ing interference be suspended and a new in- terference declared between the same parties will not be entertained when no notice was served upon the opposing party. Ex parte Hansen. C. D. 1905, 117 O. G. 2632. 2401. Where P. has a divisional application involved in an interference with S., and the parent case is involved in another interfer- ence with the same application of S., and P. is desirous of transferring the issue involv- ing the parent case to the other interference in order that he may prosecute to allowance the parent case on divisible subject-matter. 3GG INTERFERENCE, XXXV, (a). this purpose cannot be accomplished by a dis- solution of the interference involving the di- visional application. The remedy is to re- form the interference. Phillips v. Sensenich, C. D. 1906, 122 O. G. 1047. XXXV. Reduction to Practice. (a) In General. 2402. A device that could be used and might to some extent serve the purpose for which it was designed. Held, to be not necessarily a reduction to practice. ♦Warner v. Smith, C. D. 1898, 84 O. G. 311. 2403. A device which has all the essential parts, and elements of completeness and which was used in fact, is entitled to be considered a reduction to practice. *Hunter v. Stikeman, C. D. 1898, 85 O. G. 610. 2404. It is well settled that while the law accords the right to a patent to the later appli- cant who connects by due diligence a prior conception, the reduction to practice must be by the applicant himself or by his authorized agent and not by some other third party. It is not enough to entitle the applicant to a patent that some one else has shown the prac- ticability of the invention by reducing it to practice. *Id. 2405. It is a manifest inconsistency that parties should under oath set up claim to the invention themselves if they were in fact act- ing for and in behalf of another party to the interference in merely perfecting his invention and placing him in position to assert his rights. *Id. 2406. It is a well-settled principle in patent law that as between rival inventors the date of invention may be fixed and will take prece- dence from the time at which a complete and intelligible embodiment of the subject of in- vention is produced by which those skilled in the art could readily understand it. *Hulett v. Long, C. D. 1899, 89 O. G. 1141. 2407. Where the records of the case show that the primary examiner had found no nov- elty in the omission of a cutter-bar in the old form of fodder-shredder from the new com- bination and had "with doubt and hesitation" declared novelty to exist in the restricted ac- tion of the cutter-teeth in immediate relation with the lower feed-roll acting as a cutter-bar in the very closest approach that could be ac- complished, Held, that the slight difference in arrangement being the very thing and the only thing that gave novelty to the new combina- tion, it must follow that the practical test of a comljination which did not fall within the specific combination is not a reduction to prac- tice of that combination. (Bruel v. Smith, C. D. 1897, 332, 78 O. G. 1906, cited.) ♦Tracy et al. V. Leslie, C. D. 1899, 87 O. G. 891. 2408. It is an elementary principle in patent law that he who first reduces to practice is to be regarded as the true inventor of the idea or device so reduced from a mere abstraction to a concrete form in the absence of proof that he has only elaborated the ideas of others or of proof that there has been prior concep- tion of the invention by another, with a show- ing of due diligence in the way of effort to reduce it to practice. *Bader v. Vajen, C. D. 1899, 87 O. G. 123.5. 2409. Reduction to practice by Bader would not avail him as against Vajen if it were shown that Bader was merely obeying the instructions of Vajen and giving effect to the conceptions of the latter. *Id. 2410. A reasonable doubt as to what con- stitutes a reduction to practice will be resolved against the inventor, and special circumstances — as, for example, unreasonable delay in mak- ing practical or commercial use of the inven- tion or in applying for a patent or the like — would have a tendency to raise this doubt in a particular case. *Reute v. Elwell, C. D. 1899, 87 O. G. 2119. 2411. Delay is often a potent circumstance in aid of the determination in a case not other- wise clear of the question whether an inven- tion has been successfully reduced to practice or has resulted in nothing more than an aban- doned experiment. (Esty v. Newton, C. D. 1899, 284, 86 O. G. 799, cited.) *McBerty v. Cook, C. D. 1900, 90 O. G. 2295. 2412. Where G. testifies to the construction and successful use of certain machines em- bodying the invention in June and July, 1897, and in order to shorten the matter of taking testimony counsel for the opposing party ad- mitted on the record that the machines were made and used substantially at the time and in the manner testified, Held, that G. is en- titled to the date of June or July for a re- duction to practice of the invention. *Darnell v. Grant. C. D. 1900, 92 O. G. 557. 2413. Evidence that a party at a certain time stated that he had reduced the invention in controversy to practice while admissible as tending to establish the fact of conception is clearly incompetent to prove the independent INTERFERENCE, XXXV, (a). 357 fact of reduction of that conception to prac- tice. *Petrie v. De Schwcinitz, C. D. 1902, 99 O. G. i;!87. 2414. In order to constitute a patentable in- vention, there must be more than mere prog- ress to an end, however near that progress may have approximated to the end in view. The law requires not conjecture, but certain- ty, and where the question relates to a ma- chine the conception must have been clothed in substantial form, which demonstrated at once its practical efficiency and utility. (Coffin V. Ogden, 5 O. G. 270, 18 Wall. 120.) *Funk V. Matteson v. Haines, C. D. 1902, 100 O. G. 1764. 2415. Where an inventor designed an im- provement primarily for the use of a certain typewriter manufacturing company and un- successfully negotiated with them with re- spect to the adoption thereof and after nego- tiations were broken off the company reduced the invention to practice without the inventor's knowledge or assistance, Held, that the act of the company did not inure to the benefit of the inventor, as there was no relation between them of principal and agent, created either expressly or by implication. Howell v. Hess, C. D. 1906, 122 O. G. 2393. 2416. Where the evidence shows that there was, in fact, no reduction to practice of the invention, but the attitude of the parties amounted to concession that the invention was reduced to practice in the course of the work. Held, That the office cannot shut its eyes to the facts where they are clear upon the record and accept as true an unsound conclusion of law which the parties are entirely incompetent to make, and this is true even though each party has waived his right to object to such acceptance by having urged the same. Sher- wood v. Drewsen, C. D. 1906, 124 O. G. 1205. 2417. A published description of an inven- tion by the inventor describing the invention in such full and intelligible manner as to en- able persons skilled in the art to understand the operation of the invention and to carry it into practical use is sufficient to overcome the filing date of the application of the op- posing party. Marconi v. Shoemaker, C. D. 1907, 131 O. G. 1939. 2418. The reduction to practice of an inven- tion by an original inventor cannot be taken as a reduction to practice by another merely because the ownership of the claims of both may afterward become vested in the same per- son or persons. It is not enough to entitle an applicant to a patent that some one else, not his agent, has shown the practicability of the invention by reducing it to practice. (Hunter v. Stikeman, C. D. 1898, 564, 85 O. G. 610, 13 App. D. C. 214, 226.) *Robinson v. McCor- mick, C. D. 1907, 128 O. G. 3289. 2419. Complete invention must amount to demonstration. The efforts of the inventor must have passed beyond experiment, beyond the reach of possible or probable failure, must have attained certainty by embodiment in the intended form, and must be capable of pro- ducing the desired result, for where experi- ments have inspired hope of future achieve- ment of the purpose for which they were de- signed they still fall short of reduction to practice. *Wickers and Furlong v. McKee, C. D. 1907, 129 O. G. 869. 2420. Reduction to practice must produce something of practical use, coupled with a knowledge, preferably by actual trial, that the thing will work practically for the intended purpose. The conception may give rational hopes of future fulfilment of the purpose at which it aims; but if as a matter of practice it falls short of success it is not a sufficient reduction to practice. Complete invention amounts to demonstration. When, as in this case, it had not quite passed beyond experi- ment and had not quite attained certainty and had fallen short of demonstrating the ca- pacity of the invention to produce the desired result, the invention itself was still inchoate. These parties sought certainty ; but they had not attained certainty beyond all conjecture, which certainty the law requires. (See Mc- Kenzie v. Cummings, C. D. 1904, 683, 112 O. G. 1481, 24 App. D. C. 140; Hunter v. Stike- man, C. D. 1898, 564, 85 O. G. 610, 13 App. D. C. 219; Coffin v. Ogden, 5 O. G. 270, 18 Wall. 124.) *Sherwood v. Drewsen, C. D. 1907, 130 O. G. 657. 2421. The construction of another device to obviate defects in a prior device tends to show that the first device was unsatisfactory. Marconi v. Shoemaker, C. D. 1907, 131 O. G. 1939. 2422. In case of doubt upon the question of interference of marks the determination there- of should be postponed until final hearing in order to get the benefit of any testimony that may be taken on the subject. Anheuser- Busch Brewing Association v. D. G. Yueng- ling & Son et al., C. D. 1907, 129 O. G. 2501. 3GS INTERFERENCE, XXXV, (b), 1. 2423. An inventor conceived an invention and embodied it in a model which was sub- mitted to the company that controlled the sale of the machine for which the improve- ment was designed, but the company refused to purchase the invention and returned the model to the inventor. An officer of such company disclosed it to the foreman of the factory of a subsidiary corporation, who set about adapting it to the machine made by them for the parent company, and a com- pleted machine was built embodying such in- vention. Held, that such reduction to practice does not inure to the inventor, as such com- panies were not acting as the inventor's agents, and the fact that they subsequently purchased and procured an assignment of the invention does not affect the question. (Hunter v. Stikeman, C. D. 1898, .'564, 8.5 O. G. 610, 13 App. D. C. 314, 226; Robinson v. McCormick, C. D. 1907, -,7i, 128 O. G. 3289, 29 App. D. C. 98, 111; Shuman v. Beall, C. D. 1906, 710, 123 O. G. 1664, 27 App. D. C. 324, .328, distin- guished.) ♦Howell, Jr. v. Hess, C. D. 1908, 132 O. G. 1074. 2424. Decisions involving this often-litigated question of actual reduction to practice may be divided into three general classes. The first class includes devices so simple and of such obvious efficacy that the complete con- struction of one of a size and form intended for and capable of practical use is held suffi- cient without test in actual use. The second class consists of those where a machine em- bodying every essential element of the inven- tion, having been tested and its practical util- ity for the intended purpose demonstrated to reasonable satisfaction, has been held to have been reduced to practice, notwithstanding it may not be a mechanically-perfect machine. The third class includes those where the ma- chine is of such a character that the particular use for which it is intended must be given special consideration and requires satisfac- tory operation in the actual execution of the object. *Sydeman and Meade v. Thoma, C. D. 1900, 141 O. G. 866. 2425. In cases falling within the second and third classes described long delay in putting the machine in actual use for the intended pur- pose has always been regarded as a potent circumstance in determining whether the test was successful or only an abandoned experi- ment. *Id. 2426. Where the object of an invention was "the production of apparatus for rapidly and efficiently treating textile fabric coated with a rubber or gutta-percha compound or composi- tion to the end that the coating may be tem- porarily softened or rendered 'tacky' in order that the fabric may be readily applied to other ol)jects such as insoles for boots and shoes," Held, that a machine which the witnesses stated "worked too slow to be put into a shoe- shop" and which was subsequently remodeled was not a reduction to practice thereof. *Id. (b) Actual. 1. In General. 2427. What amounts to reduction to prac- tice of a machine as contradistinguished from unsatisfactory and abandoned experiments de- pends cliiefly upon the special circumstances of each case in which it is sought to be es- tablished, and a rule cannot be laid down in one case to govern all others. *Latham v. Armat, C. D. 1901, 9.5 O. G. 232. 2428. It is not necessary to a reduction to practice that S. should have thought of all uses to which the composition could be applied and have actually employed it practically for those uses, but merely that he should have tested it to determine its qualities, so as to demonstrate its practical utility for some pur- poses. Id. Silberman v. Hendrickson, C. D. 1902, 99 O. G. 445. 2429. Where it is alleged that a machine was used for several months, but it was op- erative without the features of the invention of the issue and those features were not em- bodied as a permanent part of the machine, but would fall off each time the machine was stopped, Held, that it cannot be assumed that the machine embodied the invention during the entire period of operation in the absence of specified testimony to that effect. Andrews V. Nilson, C. D. 1905, 118 O. G. 1363. 2430. Held, that it is not essential for a re- duction to practice of an invention that the invention be mechanically perfect or that there are "possibilities of greater excellence in shape, location, arrangement material, or ad- justment." *Gallagher, Jr. v. Hien, C. D. 1905, 115 O. G. 1330. 2431. Held, that it is essential that a device to constitute a reduction to practice must show that the work of the inventor is finished physically as well as mentally, and that noth- ing is left for the inventive genius of the pub- lic. *Id. INTERFERENCE, XXXV, (b), 2. 369 2432. While it is not always essential that actual tests of the invention be made in order to complete the invention (Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147), yet the device relied upon as a reduction to practice must, if it has not been worked, clearly be capable of work and not have been a mere experiment. *Id. 2. Held a Reduction. 2433. Where it is claimed that the roller- holder was made and used in 1893, again used in 1S95, and a third time in 1897, although the impressions were not satisfactory and the device was never again used, Held, that this would be considered a reduction to practice if the construction of the roller-holder at that time is shown to be the same as it now exists. Eastman' v. Houston, C. D. 1901, 95 O. G. 2064. 2434. Where Roe in August, 1899, com- pleted the shifting device for the saws of a gang-edger and embodied it in a full-sized machine adapted for practical use and then tested it, but did not place it in a sawmill and test it commercially until March, 1900, Held, a reduction of the invention to practice in August, 1899. Roe v. Hanson, C. D. 1902, 99 O. G. 2550. 2435. Where one specific form of invention embodied in a machine is shown to have work- ed practically and successfully. Held, to con- stitute a reduction to practice of the inven- tion notwithstanding the fact that this form is shown to have been capable of improvement. (Hien v. Buhoup, C. D. 1897, 190, 81 O. G. 2088.) Slaughter v. Halle, C. D. 1902, 99 O. G. 2771. 2436. Where after making and successfully testing one form of ejecting mechanism for iTiatch-machines D. made an improved form and showed the second form in his applica- tion, but made broad claims including the first form. Held, that the first machine was a re- duction to practice. *Wyman v. Donnelly, C. D. 1903, 104 O. G. 310. 2437. Where the issue relates to ejecting mechanism of a match-machine and the de- vice introduced in evidence is merely the eject- ing mechanism, but the witnesses say it was used on a full-sized match-machine. Held, that it may be fairly inferred that the machine in- cluded all of the parts usual in such machines. *Id. 2438. Where a machine is constructed which embodies the combination of elements called 24 for in the issue and it is established by clear and explicit testimony of competent witnesses that the machine was put to practical use and operated successfully to perform the work for which it was adapted. Held, that the ma- chine is reduction to practice, as these facts outweigh any presumption that the machine was not a successful one because the inventor saw fit to subsequently construct another ma- chine which was a more perfect one me- chanically. Thomas v. Trissel, C. D. 1903, 107 O. G. 265. 2439. In determining whether or not a cer- tain machine is a reduction to practice the class of machinery to which it belongs should be considered, and when a machine fully meets the requirements of that class as to the me- chanical perfection of the parts it is a re- duction to practice. Id. 2440. The fact that an inventor proceeds to construct a cheaper and lighter machine, changed in certain details to perfect it for trade, does not alter the fact that a former machine was a reduction to practice which was complete in all its details and by test had been shown to be capable of performing the work for which it was adapted. (Hien v. Buhoup, C. D. 1897, 81 O. G. 2088.) Id. 2441. Where several witnesses say a ma- chine was made and used successfully and is now in the same condition and in use at the same place and where the allegations could have been easily disproved if untrue, but no effort was made to disprove them, Held, proof of reduction to practice. Herman v. Pullman, C. D. 1903, 107 0. G. 1094. 2442. Where a machine was built by hand and has not the finish and is not made of the materials which would be used in the com- mercial manufacture of such machines, but is in its present form practically operative for the purpose intended. Held, a reduction to practice. Hallwood v. Lalor v. BockhoflF, C. D. 1903, 103 O. G. 887. 2443. Held, that a voting-machine consti- tutes a reduction to practice though it is not absolutely perfect in construction, but which is "so constructed as to embody all the essen- tial elements of the invention in a form that would make them practical and operative, so as to accomplish the result in a reasonably practical way." (American Company v. Tool Company, 4 Fisher, 299.) Cummings v. Mc- Kenzie, C. D. 1904, 110 O. G. 1167. 370 INTERFERENCE, XXXV, (b), 2. 2444. Where Brooks made a full-sized ma- chine before Smith conceived the invention and Brooks himself and one witness testify clearly that it was operating practically and successfully, and although certain parts of the machine are now missing the workman- ship and construction of the machine are such as to make it seem probable that it would work successfully. Held, that it was a reduc- tion to practice of the invention and that Brooks was the first inventor. Brooks v. Smith, C. D. 1904, 110 O. G. 2013. 2445. Where the devince is full-sized and has been thoroughly tested and used satisfac- torily. Held, that though it is made of wood, whereas the commercial article would be made of porcelain, it is nevertheless a reduction to practice of the invention. Spaulding v. Nor- den, 112 O. G. 2091. 2446. Where a hose-supporter introduced in evidence as showing a reduction to practice is of full size, but lacks certain removable and co-operating parts, and the testimony of the witnesses is clear and explicit that when the device was successfully tested such removable and co-operating parts were attached to it, Held, that the making of the device was a reduction to practice. Basch v. Hammond, C. D. 1904, 113 O. G. 551. 2447. Where the device is made of wood, but is full-sized and was thoroughly tested. Held, that it is a reduction to practice though the commercial article would be made of some more durable substance. *Norden v. Spauld- ing. C. D. 1905, 114 O. G. 1428. 2448. The fact that the construction has been called in the testimony a model is of no consequence if it is, in fact, a reduction to practice. *Id. 2449. Where it was contended that a device was no more than a crude and experimental model, which was not fit for marketable use, the court found that it was a full-sized opera- tive structure which, except for ornamentation and polish, was fit for commercial use and held the same to be a reduction to practice. ♦Hope, Jr. v. Voight, C. D. 1905, 115 O. G. 1585. 2450. Where a moving-machine was con- structed and practically operated under usual conditions and though crude found to be sat- isfactory and successful in its operation, Held, to be a reduction to practice, notwithstanding the fact that the machine was afterward dis- mantled and some of the parts were used in building other machines which differed in some respects from the old one. *Funk et al. v. Whitely, C. D. 1905, 117 O. G. 280. 2451. While the destruction or dismantling of a first construction and the loss of some of its parts or their use in making other ma- chines are sometimes important in determin- ing the question of reduction to practice, they are only important when depending upon other circumstances tending to cast doubt upon the claims of the earlier reduction to practice, notably that of long and unreasonable delay in the exploitation of the invention. *Id. 2452. Where it is established that a seal- press was made and used under actual work- ing conditions, that it worked on the right principle and gave satisfaction to those using the press, but that after some six months of use a rivet supporting one of the parts gave way and the press was sent to the factory for repair, with the suggestion that a stronger rivet be used, Held, that the fact that one of the parts of the device broke after long use is not a sufficient reason for denying to the inventor thereof the benefit of reduction to practice. Foote v. Wenk, C. D. 1905, 118 O. G. 1366. 2453. Where a device was actually used for the purposes for which it was intended and completely demonstrated its utility and prac- ticability, Held, that such device was the equiv- alent of a reduction to practice, even though it was but half the size of the commercial machine. *Gallagher, Jr. v. Hien, C. D. 1905, 115 O. G. 1330. 2454. Where a device embodying the inven- tion in issue is shown to have been construct- ed and the question is whether or not such device operated successfully and satisfactor- ily, the testimony of the inventor and of two witnesses who showed that they were thor- oughly familiar with the construction, that the device operated successfully, and that they used it a number of times is sufficient to warrant the conclusion that such device was an actual reduction to practice, and it is un- necessary that the facts on which they base their conclusion appear in the record. *See- berger v. Russel, C. D. 1906, 121 O. G. 2328. 2455. Where the invention in issue related to an auxiliary traveling platform in combina- tion with an escalator and it appears that after an alleged successful operation the platform was removed from the escalator and never re- placed and some of the parts disappeared and INTERFERENCE, XXXV, (b), 3. 371 twelve escalators were built without the plat- form, Held, that these circumstances when un- explained tend strongly to create the infer- ence that the alleged test was not regarded as successful ; but when a reasonable and satis- factory explanation thereof is given such an inference is unwarranted. *Id. 2456. A material part of an apparatus may be separate from the apparatus and tempor- arily held up to its work, and yet constitute reduction to practice. (Loewer v. Ross, C. D. 1896, 66.5, 77 O. G. 2141.) *Andrews v. Nel- son, C. D. 1906, 123 O. G. 1667. 2457. Where the Rolfe exhibits were made and tested, Held, that it is considered that his work as an inventor was finished, phys- ically as well as mentally, and that there was a complete reduction to practice. *Rolfe v. Hoffman, C. D. 1906, 121 O. G. 13S0. 2458. A garment-fastener which was used for two months in practical operation, Held. to be a reduction to practice, although it ap- peared that it was not mechanically perfect, that it was not made of a material which would be used in a commercial article, that the hooks were not in size adapted to retain thick skirt-bands, and that it was not en- tirely satisfactory and successful, where it ap- peared that the defects were clearly mechan- ical imperfections which could easily be rem- edied. *Lowrie v. Taylor and Taylor, C. D. 1906, 123 O. G. 1665. 2459. A machine may be crude in construc- tion, but if it contains all the essential ele- ments of the invention of the issue and in its operation successfully demonstrates its prac- tical efficacy and utility reduction to practice is accomplished. (Coffee v. Guerant, C. D. 1894, 384, 68 O. G. 279, 3 App. D. C. 497, 409; Norden v. Spaulding, C. D. 190.->, 588, 114 O. G. 1828, 24 App. D. C. 286, 290; Gallagher v. Hien, C. D. 1905, 624, 115 O. G. 1330, 25 App. D. C. 77, 82; Lowrie v. Taylor, C. D. 1906, 713, 123 O. G. 1665, 27 App. D. C. 522, 526.) The mere fact that mechanical improvements may be suggested and made in the course of operation that tend to perfect the operation of the machine and increase its practical ef- ficiency, while retaining the essential elements of the invention which it puts in practice, does not impair the effect of the original demon- stration of utility if established satisfactorily. *Burson v. Vogel, C. D. 1907, 131 O. G. 942. 2460. A device for supporting hose for fire- protection purposes embodying a telescoping arm which was fully operative to carry out the object for which it was designed con- stitutes an actual reduction to practice, al- though it was found desirable to add a set- screw to prevent the complete withdrawal of such telescoping arm. "Any mechanic skilled in the art would have added the means to prevent the complete withdrawal of the tele- scoping arm. Telescopes and spy-glasses con- tain such devices. Moreover, the testimony shows that in its then condition the device was an improvement over the prior art, and that it required an unusual or very sudden pull to entirely withdraw the telescoping arm from its socket. It was the idea of the tele- scoping arm, which would receive the links as the hose was pulled from the rack, that con- stituted the invention. No patent could have been obtained on the set-screw because that was old in the art." *Howard v. Bowes, C. D. 1908, 137 O. G. 733. 3. Not Held a Reduction. 2461. A fodder-shredder in which a cutter- bar was taken out of an old machine, leaving an inch of open space between the edges of the cutter-teeth and the periphery of the lower feed-roll at the point of nearest approach, is not a reduction to practice of an issue which calls for cutters arranged in immediate rela- tion to the lower feed-roll, whereby the points of the teeth of the cutter are brought close to the said feed-roll. *Tracy et al. v. Leslie, C. D. 1899, 87 O. G. 891. 2462. The fact that a machine operated sat- isfactorily after it was filed as an exhibit in the patent office is not proof that it so oper- ated and was a reduction to practice some years prior to that time, when it is claimed to have been made. *Fefel v. Stocker, C. D. 1901, 194 O. G. 433. 2463. Where a machine was made and was operated effectively as a camera for taking consecutive pictures and it was experimented with privately on one or more occasions as an apparatus for projecting pictures and was kept and satisfactorily operated as a camera for taking pictures, but was not again tried for their projection. Held, that such use can- not be regarded as reduction to practice of an apparatus for exhibiting pictures because of the patentable distinction between appa- ratus for taking pictures and that for their exhibition. (Bruel v. Smith, C. D. 1897, 332, 78 O. G. 1906; Tracy v. Leslie, C. D. 1899, 372 INTERFERENCE, XXXV, (b), 3. 306, 87 O. G. 891.) *Lathram v. Armat, C D. 1001, 95 O. G. 232. 2464. Where the cap made was crude and the inventor himself testifies that he did not regard that particular cap as fit for practical use on a bottle. Held, that it cannot be re- garded as a reduction to practice of the in- vention although others made subsequently upon the same pattern were practical and suc- cessful. *Lindemeyer v. Hoffman et al., C. D. 1901, 95 O. G. 838. 2465. Where a certain exhibit contains a chamber as a material part thereof, which is so connected and associated with the other parts that it would probably have a material effect upon the operation of the device. Held, that this chamber cannot be ignored in order that the exhibit may be considered as a re- duction to practice. Blackford v. Wilder, C. D. 1902, 99 O. G. 2762. 2466. Where B. contends that a certain ex- hibit if operated at this time would contain oil in the trough and that therefore it must be held that it contained oil in 1896 when operated, Held, that a demonstration of the burner at this time even if satisfactory would not be sufficient, since B. should have shown by his proofs that it did contain oil and that he appreciated the fact at the time. It is not sufficient that he supposes now that an opera- tion took place which he did not appreciate at the time. Id. 2467. Where the issue is for defiberized cornstalk-pith saturated with oil and it appears that S. produced the pith and in experiment- ing with it saturated small quantities with oil, but made no practical use of it to determine its properties and value. Held, not a reduc- tion to practice. Silverman v. Hendrickson, C. D. 1002, 99 O. G. 44.5. 2468. The fact that an unsuccessful device could have been made successful by mere mechanical skill does not make that device constitute a reduction to practice, since until made operative it does not demonstrate the practicability of the invention any more than would drawings or a model. Swihart v. Mauldin, C. D. 1902, 99 O. G. 6G.5. 2469. Where the mechanism of the claim operates successfully, it is not necessary that all parts of the machine in which it is used shall be mechanically perfect; but where the mechanism claimed is the part which proves defective. Held, not a reduction to practice. Id. 2470. Where W. made a device in .A.pril, 1896, embodying the construction in issue ex- cept one feature and B. made a device em- bodying all features of the issue in Novem- ber, 1896, Held, that B. is the first inventor. ♦Blackford v. Wilder, C. D. 1903, 104 O. G. 578. 2471. Evidence of reduction to practice must embrace all of the elements of the issue, leaving nothing to inference merely, since no element can be said to be subordinate and im- material. *Id. 2472. Where the issue covers an oil-burner of novel construction and includes as an ele- ment a wick fitting in the burner in a certain way. Held, that a device cannot be received as a reduction to practice of the invention un- less it is shown that it contained a wick of the particular form specified. *Id. 2473. Where the issue includes two distinct elements in combination — viz., a line-lock mechanism for typewriters in combination with a mechanism for positively releasing the lock — Held, that a machine which contains a mere latch capable of being turned on its pivot in order to disengage it from its co- acting stop — i. e.. a mere latch capable of being "picked" — is not a reduction to practice of the invention defined in the issue. Brooks v. Hil- lard, C. D. 1903, 106 O. G. 1237. 2474. Where the issue covers a line-lock mechanism for type-writers. Held, that a ma- chine provided with a mere bell-trip which occasionally obstructs the escapement-bar is not a reduction to practice of the invention defined in the issue. Id. 2475. Held, that an accidental occasional, incomplete, and imperfect operation of a structure especially when said structure was constructed and designed to perform another and wholly different function, is not sufficient to establish the fact of invention. Such a structure is not a reduction to practice. (Chis- holm et al. v. Johnson, 106 Fed. Rep. 191.) Id. 2476. Where the inventor McKenzie does not testify and a machine is introduced in evidence which apparently is a reasonably per- fect machine, but there is no satisfactory evi- dence that the machine was the invention of the alleged inventor and it does not appear from the evidence that the machine was sat- isfactory in its operation when it was alleged to have been completed. Held, that the evi- dence does not establish either a conception INTERFERENCE, XXXV, (b), 3. 373 or a reduction to practice for McKenzie. Id. Cummins v. McKenzie, C. D. 1904, 110 O. G. 1167. 2477. Where it appears that a crude device was completed fully illustrating an operative construction and doubt e.xists as to whether or not that device is a mere illustrative model or a reduction to practice. Held, that a long delay in building a practically operative ma- chine or in filing an application for a patent is significant and raises a presumption that the device at the time it was built was not considered to be reduction to practice by the inventor. Ocumpaugh v. Norton, C. D. 1904, 110 O. G. 1723. 2478. As the primary and most essential requisite of the registering mechanism of a voting machine is that of unfailing accuracy, Held, that a voting-machine which admittedly fails to register as desired as often as "once in a hundred times" is not a reduction to practice. ♦McKenzie v. Cummings, C. D. 1904, 112 O. G. 1481. 2479. Where after the alleged date of re- duction to practice of a machine the party and his employers placed other machines of the same kind upon the market and applied for patents thereon, but did not put this ma- chine upon the market or attempt to patent it until after the value of its date for pur- poses of priority had been made manifest, Held, that the conduct of the party and his employers is evidence that the machine did not constitute reduction to practice at the date claimed. Paul v. Hess, C. D. 1904, 113 O. G. 847. 2480. Where an exhibit type-writer sub- mitted as reduction to practice of type-bar mechanism has but six type-bars, and of these the only two that are side by side are located where the difficulties of operation are least, Held, that the operation of this machine at the hearing is not sufficient to establish re- duction to practice so that proof of earlier successful operation may be dispensed with. Id. 2481. Where there is doubt whether a device made operated successfully and constituted a reduction to practice. Held, that long and un- explained delay in manufacturing the device or applying for a patent warrants resolving the doubt against the maker of the device. Greenwood v. Dover, C. D. 1904, 108 O. G. 2143. 2482. Where all the elements of the issue are not present in the device which is offered in evidence and on which reliance is made for a reduction to practice and their absence is not explained in the testimony. Held, that the fact of an actual reduction to practice is not established. Robinson v. Seelinger, C. D. 1903, 114 O. G. 262. 2483. Where the machine claimed as a re- duction to practice was submitted to the in- ventor's employers, but they adopted another machine, and this proving unsatisfactory was withdrawn and still another machine put on the market. Held, that the circumstances point to the conclusion that the machine did not represent a complete and practical invention. ♦Paul V. Hess, 115 O. G. 2.il. 2484. A device which merely illustrates the mode of mechanical construction and opera- tion of the conceived idea and which may be said to be an embodiment of the invention in visible form is not necessarily a reduction to practice, for though the device is operative as a mechanical movement there is no cer- tainty that it will perform its function when put to use under full conditions of practical use. *Ocumpaugh v. Norton, C. D. igo.'i, 114 O. G. 545. 2485. Where an exhibit embodies an inven- tion and is operative as a mechanical move- ment, yet various parts of the structure which are the essence of a practical working machine are so crude and even certain of derangement that no one would seriously consider building machines in accordance with the exhibit with- out further experiments. Held, that such de- vice is not a reduction to practice. *Id. 2486. Held, that the proofs tending to es- tablish a reduction to practice must be con- sidered as a whole and the attendant circum- stances of the case must be borne in mind, and the action of the inventor with respect to the exhibit prior to the necessity for its use in the interference proceeding, his failure to construct other machines or promptly file an application, and the fact that the application when filed discloses different features from those in the exhibit all tend to show that the device was not a reduction to practice, but merely an experimental device. *Id. 2487. Where exhibits are offered in evidence on which to predicate a reduction to practice and these exhibits are lacking in one or more elements of the issue, Held, that the neces- 374 INTERFERENCE, XXXV, (c). sary elements in the exhibits cannot be sup- plied unless warrant for such finding is found in the record. *Robinson v. Seelinger, 116 O. G. 1735. 2488. Held, that evidence of reduction to practice must embrace all the elements of the issue, leaving nothing to inference merely. (Blackford v. Wilder, C. D. 1903, 567, 104 O. G. 578, 21 App. D. C. 1.) *Id. 2489. Where the evidence is not convincing that the device under consideration is capable of being used for practical purposes and an examination of the device in connection with a consideration of the facts of record war- rants the opinion that it is essentially an ex- perimental device and never passed beyond that stage. Held, that such device is not a re- duction to practice. *Ocumpaugh v. Norton, C. D. 1905, 114 O. G. 545. 2490. On an issue relating to a wire-draw- ing machine, including a rotary block having a vise pivoted thereon to engage the wire and a swinging die-holder, in which the drawing operation begins with the vise in a radial posi- tion on the block, evidence considered and Held, insufficient to show that the early de- vice relied upon by S. as a reduction to prac- tice was operated with the vise in a radial position prior to the date to which T. is enti- tled, and priority is therefore awarded to T. ♦Thompson v. Smith, C. D. 1908, 145 O. G. 513. (c) Constructive. 2491. The filing of an allowable application is a constructive reduction to practice of the invention at its date, and it is not necessary to show actual reduction to practice thereafter to establish the right to a patent. Osborn v. Holsapillar, C. D. 1903, 102 O. G. 1296. 2492. Where an application has been filed complete in the patent office, any alleged de- fects in the construction and operation of the machine which are within the provisions of every mechanic to cure and which changes it may be admitted are necessary to make in order to adapt the machine to perform its work more perfectly, Held, that such appli- cation is in law a constructive reduction to practice. Watson v. Thomas, C. D. 1903, 106 O. G. 1776. 2493. The question as to whether an appli- cation on file in this office should be given the effect of constructive reduction to practice in- volves the question of whether the application is allowable, since that effect is given only to allowable applications. Ex parte Brisbane, C. D. 1903, 107 O. G. 1059. 2494. Held, that an applicant is entitled to the benefit of a constructive reduction to prac- tice by filing an allowable application for a patent and that to constitute an allowable ap- plication the machine described and claimed therein must be an operative machine. Bow- ditch v. Todd, C. U. 1904, 112 O. G. 1477. 2495. Held, that this court will not disturb the long-established doctrine that the filing of an allowable application for a patent is to be regarded as equivalent to a reduction to practice. *Davis v. Garrett, C. D. 1906, 123 O. G. 1991. 2496. The rule of the patent office that the filing of an allowable application is construc- tive reduction to practice is only the expres- sion in another form of the rule that the ap- plication of a patented invention, if it suffi- ciently describes the invention, is conclusive evidence that the invention was made at least as early as that date, d Automatic Weighing Machine Company v. Pneumatic Scale Cor- poration, Limited, C. D. 1909, 139 O. G. 991. 2497. "The theory underlying the doctrine of constructive reduction to practice is that the filing of a proper application constitutes a sufficient disclosure to enable one skilled in the art to practice the invention." ♦Na- tional Metallurgic Company, assignee of Tom Cobb King v. Whitman et al. Whitman v. Hearne et al, C. D. 1910, 156 O. G. 1068. 2498. Where an application was altered after being signed and sworn to. Held, that a pat- ent cannot be granted thereon and that it can- not be given the effect of a constructive re- duction to practice. Ames v. Lindstrom, C. D. 1911, 167 O. G. 241. 2499. Where the testimony showed that L., who was the second to conceive the invention but the first to file an application therefor, did not actually reduce it to practice until after A. filed his application and that L.'s application had been altered after being signed and sworn to, Held, that the application of L. did not constitute a constructive reduction to prac- tice and that priority should be awarded to A. (Davis V. Garrett, 123 O. G. 1991, 28 App. D. C. 9; Snider v. Bunnell, 101 O. G. 2572, and Hopkins v. Scott, 105 O. G. 1263, distin- guished.) Id. INTERFERENCE, XXXV, (d), 1. 375 (d) Abandoned and Unsuccessful Experi- ment. 1. Held Abandoned Experiment. 2500. The action of Finkenbiner in failing to manufacture the device for two years after his alleged reduction to practice, during which time there was a general demand in the trade for the device and specific demand was made upon him for a device performing its func- tions, and the attempt on his part to meet the demand by devising some other form of device, raise the presumption that what was done amounted to no more than an abandoned experiment, and this presumption is not over- come by the statement of several witnesses that the test of the device was satisfactory. *Beals v. Finkenbiner, C. D. 1898, 82 O. G. 598. 2501. The fact that the construction of a device has not been followed within a rea- sonable time by practical use or application for patent affords a strong inference that what had been done was regarded by the in- ventor as experimental only and not a com- pletion of the invention, and this would be re- inforced if in the meantime the machine had been dismantled or destroyed. *Mason v. Hepburn, C. D. 1898, 84 O. G. 147. 2502. Killinger stood on his record date of July 25, 1892. Guilbert claimed to have con- ceived the invention and reduced it to prac- tice in November, 1891. Held, that the exhibit offered by Guilbert to show reduction to prac- tice was at best nothing more than a mere ex- perimental model abandoned or laid aside and recalled afterward by the publication of Kil- linger's patent. The decision of the commis- sioner awarding priority to Killinger affirmed. *Guilbert v. Killinger, C. D. 1898, 84 O. G. 313. 2503. Where Traver constructed and tried an apparatus embodying the issue in February, 1889, which proved unsatisfactory and dis- appointing to him, and which he boxed up and laid away in his shop until the latter part of 1892. when he shipped it to his attorney upon hearing that Brown had appeared with a suc- cessful device of the same general character, Held, that what Traver did in 1889 amounted to no more than an experiment, which was abandoned and revived only after Brown's appearance in the field, and priority of inven- tion awarded to Brown. ♦Traver v. Brown, C. D. 1899, 86 O. G. 1324. 2504. Where D. testifies on direct exam- ination that he worked on a full-sized machine from 1896 to 1898 and completed it and suc- cessfully operated it in July, 1898, but on cross-examination admits that the machine was far from being complete and operative, and that it had only been used as an illustra- tion and was nothing more than an experi- mental model, Held, that it cannot be received as a reduction to practice. *Darnell v. Grant, C. D. 1900, 92 O. G. 557. 2505. The machine belongs to that class that requires something more than mere construc- tion in order to amount to a reduction to prac- tice, and in the absence of any explanation of the nature of the tests, coupled with the fact that the machine was so frequently altered, and also taking into account the absence of any corroboration of the inventor's testimony. Held, that the machine was experimental in nature and that there was no complete re- duction to practice shown. Kelly v. Flynn, C. D. 1900, 92 O. G. 1233. 2506. The apparent abandonment of a ma- chine by the inventor and the long and wholly- unexplained delay of more than four years in the application for a patent are strongly in- dicative of the fact that the machine was not a successful reduction to practice and was not more than an abandoned experiment. *FefeI v. Stocker, C. D. 1901, 94 O. G. 433. 2507. Where a machine was constructed by K., and a single test was made, and it was shipped to England, and there is no evidence respecting its use or operation there, and the parties interested in the machine failed to make another to supply the growing demand in this country for the product, and there was a failure to apply for a patent until after the publication of the patent issued to R., Held. that these circumstances tend to show not a willful abandonment of a completed inven- tion, but rather the failure of an attempt to reduce the invention to practice and the aban- donment of further experiment in that direc- tion, and priority awarded to R. *Reichen- bach v. Kelley, C. D. 1901, 94 O. G. 1185. 2508. Where the efficiency of a machine de- pended upon the making of perfect joints in the belt of the machine and the applicant failed to disclose the manner of making these joints, claiming that it was the subject of an independent and patentable invention, but failed to file an application for that invention, Held, that the failure to disclose the manner 376 INTERFERENCE, XXXV, (d), 1. of making the invention or file an applica- tion is evidence that Vkfhat was done amounted to no more than an abandoned experiment. ♦Id. 2509. Where the proof shows that prior to Boch's invention a party made two-part insu- lators and attached them by glazing and in some instances used an extra amount of glazing material, but the results were not sat- isfactory and the spaces and cracks were not completely filled. Held, not an anticipation of this invention, but an abandoned experi- ment, c R. Thomas & Sons Company v. Elec- tric Porcelain and Manufacturing Company et al., C. D. 1901, 97 O. G. 1838. 2510. Where it appears that a machine of full size was made for the purpose of study and with the expectation that it would be used as a model for others if it was decided to manufacture them and that after it was tested several experimental changes were made in it, but there is no satisfactory evidence that it operated practically and suc- cessfully. Held, that it was not a reduction to practice. Kelly v. Flynn, C. D. 1900, 92 O. G. 1237. 2511. Where A. claims to have reduced the invention to practice in July, 1897, and there- after worked on other inventions, but did nothing with the one in controversy until he filed his application on January 14, 1899, and in the meantime M. perfected his invention, Held, that the presumption is warranted that what was done by A. amounted to nothing more than an abandoned experiment until the contrary is clearly shown. *Adams v. Mur- phy, C. D. 1901, 96 O. G. 845. 2512. Where it was shown that a stamp- canceling machine was completed and operated upon letter-mail in the postoffice at Boston for several hours a day for from four to eight days early in 1883, but was then taken back to the shop, partly dismantled, and then laid aside and never again operated or tested in public. Held, that it was a mere abandoned ex- periment and not a reduction to practice. *Lloyd V. Antisdel, C. D. 1901, 95 O. G. 1645. 2513. Where Howard and his assignee tes- tify that the operation of the machine in 1883 was successful and the testimony of two em- ployees of the postoffice was to the same effect, but was vague and indefinite and given sixteen years after the event. Held, insufficient to overcome the presumption raised by the ap- parent abandonment of the machine. *Id. 2514. Where an applicant does not file his application until after he has seen claims of a patent published in the Official Gazette, and he admits that the publication of the patent was the reason for filing the application as soon as he did. Held, that this conduct raises a presumption that the tests made after the completion of the machine were not success- ful, but were mere experiments which cul- minated in no definite result, especially a definitely successful result. (Warner v. Smith, C. D. 1898, 517, 84 O. G. 311.) Mac- donald v. Edison, C. D. 1903, 105 O. G. 973. 2515. Where a device was made in 1894 and it is contended that it was successfully oper- ated at that time, but was then laid aside and nothing further done with it until application was made for a patent in 1899, nowithstanding there were urgent demands for a device which would accomplish the purpose which it is claimed the said device did accomplish and in the meantime the company having the device in its possession had resorted to other means for accomplishing the result, but without suc- cess. Held, that the only reasonable deduction from these facts is that the device did not successfully accomplish the results for which it was designed. Quist v. Osborn, C. D. 1903, 106 O. G. 1501. 2516. Where it appears that Q. made an at- tachment to a sewing machine in 1894 which is claimed was operated successfully at that time, but the testimony leaves the question of successful operation in doubt, and the device was then laid aside until 1899 notwithstanding the trade was continually asking for a machine which would be free from the defects which it is claimed it was the aim of the attachment to remedy. Held, that the presumption is that the device was not a reduction to practice, but at most an experimental device. Id. 2517. Where the roller-bearing in contro- versy was made by W. and was not put into practical use, but was tested by hand to see if it would run smoothly, Held not a reduc- tion to practice, but a mere experiment, par- ticularly in view of W.'s admission that he made bearings subsequently for the purpose of testing them in practical use. Winter v. Slick v. Vollkommcr, C. D. 1903, 107 O. G. 16.59. 2518. Where after making the device W. did not put it to practical use or apply for a patent for two years and a half, Held, suf- INTERFERENCE, XXXV, (d), 1. 377 ficient to show that the making of the device was a mere abandoned experiment. Id. 2519. Where a device said to embody the invention was made by Greenwood, but the pin used as the pivot of the joint was loose and was not of the proper length for practical use, Held, that the device was a mere experi- ment and was not a reduction to practice. Greenwood v. Dover, C. D. 1904, 108 O. G. 2143. 2520. Where the attachment in controversy is said to have been made by Quist and suc- cessfully tested in 1804, but it was then re- moved from the machine, put away in a draw- er, and nothing was done in the way of put- ting it on the market or applying for a patent for four years, although it is said that there was a demand for that very thing. Held, that the making of the device must be regarded as an unsuccessful and abandoned experiment. *Quist V. Ostrom, C. D. 1904, 108 O. G. 2147. 2521. Where the device is a simple one eas- ily made and attached to machines then in use and its commercial value is apparent. Held, that the failure of the inventor to make use of it for four years, during which time he put substitutes on the market, is sufficient to discredit his claim that he regarded it as perfected. Id. 2522. Where it is established that a certain device was made and used to some extent, but it appears that the device was discarded and thrown into the scrapheap and no similar device was again used, hut that a new one quite different in construction was made and used and then thrown into the scrap, and no testimony is given as to the successful opera- tion of either of the devices, and it appears that other experiments were taken up in dif- ferent lines, and no application was filed for patent until after a patent had been granted to another, Held, that neither device is a re- duction to practice of the invention, but that they were nothing more than experimental devices, and were so regarded by the inventor at that time. Lcmp v. Mudge, C. D. 1904, 112 O. G. 727. 2623. Held, tliat Sharp was the first to con- ceive the invention and the first to reduce it to practice and that therefore he is the first inventor. Whipple v. Sharp, C. D. 1904, 112 O. G. 1749. 2524. Where the witnesses testify that a de- vice was made and used experimentally, but do not describe the structure clearly and do not say that it proved successful in use, and it appears that the inventor laid it aside and worked on other devices. Held, that the de- vice was a mere abandoned experiment and not a reduction to practice. Whipple v. Sharp, 112 O. G. 1749. 2525. Where a machine embodying the in- vention of the issue was constructed and found to be operative to perform the func- tion for which it was intended, but it appears that the machine was subsequently changed by another inventor, who had been placed in charge of the machine, by substituting a de- vice of his own for a device originally placed on the machine, and it appears that the orig- inal device was never again restored to that machine or placed upon any other machine for practical use, and no machine with the original device has ever been manufactured for actual use or sale, and a period of nearly two years was allowed to elapse after the alleged reduction to practice before the ap- plication for a patent was filed, and in the meantime the inventor, so far as the record shows, seemed to have done nothing toward the practical development of the alleged in- vention. Held, that all this, whether it be re- garded as neglect or concealment, would tend to show that what was done by the inventor originally was rather an unsatisfactory ex- periment than a successful reduction to prac- tice. *Hillard v. Brooks, C. D. 1904, 111 O. G. 302. 2526. Where the construction of a device shows that it was adapted only for temporary experiments and there is no convincing evi- dence that it proved satisfactory in use. Held, that it must be regarded as an abandoned ex- periment and not as a reduction to practice. Andrews v. Nilson, C. D. 1905, 118 O. G. 1363. 2527. Where in an electric interrupter An- drews placed washers on the vibratory strip where they would be held by magnetic attrac- tion during the operation of the machine, but would fall off when the machine was stopped. Held, a mere temporary experiment and not a reduction to practice Id. 2528. Where a device is tested and broken during the test and the parts are destroyed and lost and nothing more is done on the in- vention for a period of six years until an ap- plication for patent is filed and it appears that the application was only filed on learning that the opposing party was offering for sale a device embodying the same features of inven- 378 INTERFERENCE, XXXV, (d), 1. tion which it is contended were present in the knuckles which were tested and lost, Held, that these old devices are nothing more than unsuccessful and abandoned experiments. Gil- man and Brown v. Hinson, C. D. 1905, 118 O. G. 1933. 2529. Where it appears that a device was made by L. of the nature of the invention de- fined in the issue, but after a few trials was discarded and relegated to the scrap-heap and never again used, and subsequently a larger device was made, but also discarded and relegated to the scrap-heap and never again used, that nothing whatever was done to uti- lize either until L. filed his application ten months after the grant of a patent to M., and that only on reading the patent did L. recall the fact that he thought he previously had the same device, Held, that the devices which were discarded constituted nothing more than unsuccessful and abandoned experiments. *Lemp v. Mudge, C. D. 1905, 114 O. G. 763. 2530. Where devices embodying an inven- tion are made, and after trials discarded and thrown in the scrap, and no similar devices were ever used afterwards, and only upon reading a patent which had been granted to another person does the inventor recall the fact that he thought he had the same device some years before. Held, that while that is not an unusual idea under such circumstances, claims of this character must be proved by testimony of the clearest and most satisfac- tory character before they can be accepted. *Id. 2531. Held, that a total abandonment of a device, notwithstanding that there was a con- stant and incessant need for some such de- vice, is proof positive that the contrivance which was discarded was not a reduction to practice, but no more than an unsuccessful and abandoned experiment. *Id. 2532. Held, long delay in making use of an invention claimed to have been reduced to practice or in applying for patent tend to show that the alleged reduction to practice was nothing more than an unsatisfactory or abandoned experiment, and this is especially the case where in the meantime the inventor has been engaged in prosecuting similar in- ventions or others without reasonable expla- nation, have been adopted for manufacture and use. *Paul v. Hess, C. D. 1905, 115 O. G. 251. 2533. Where J. claims to have made and successfully tested a candy-pulling machine in 1899 and for three years thereafter pulled candy by hand and did not use it in his candy- pulling establishment, but says that he tested it occasionally when he was not busy. Held, that the machine must be regarded as a mere experiment and not a reduction to practice. Jenner v. Dickinson v. Thibideau, C. D. 1905, 116 O. G. 1181. 2534. Where the evidence indicates that several years prior to the filing of his appli- cation Moore constructed an apparatus con- forming to the interference issue and that the apparatus had on several occasions oper- ated momentarily in the manner specified in the issue, Held, to be evidence of an experi- mental device, but not to establish a reduc- tion to practice of the invention. Moore v. Hewitt, C. D. 1906, 125 O. G. 2047. 2535. The imperfect operation of the lamps made by Moore, and the fact that he did not file his application until seven years after the date when he claims to have made the inven- tion, during which period he was active in de- veloping other inventions, lead to the conclu- sion that his operations amounted to nothing more than abandoned experiments and that he is entitled to no date of invention prior to the filing of his application. Id. 2536. Where after an alleged successful test a device is thrown aside and apparently for- gotten until knowledge is gained of a rival's successful invention, notwithstanding an ap- parent demand for such a device. Held, that such conduct carries a strong presumption that the device was regarded only as an un- successful experiment. Gordan v. Wentworth, C. D. 1907, 130 O. G. 2065. 2537. A device which was experimented with and afterwards laid aside and partly dismantled and which when produced in evi- dence did not have all of the original parts, some of the important parts being replace- ments, Held, not to constitute a reduction to practice, the evidence tending to show the identity of the parts replaced and the original parts not being satisfactory. *Burson v. Vogel, C. D. 1907, 131 O. G. 942. 2538. Where it is claimed that the form of device described and illustrated in the appli- cation produced the most satisfactory results, and it appears that a device of this construc- tion was built and tested and afterwards sev- eral modifications of such device were made and tried without success, and that a prior INTERFERENCE, XXXV, (d), 2. 379 construction was finally reverted to, and that a number of devices of the latter construction were built for use in preference to the form- er, the presumption is warranted, in the ab- sence of testimony establishing a satisfactory test, that such device was not successful. Marconi v. Shoemaker, C. D. 1907, 131 O. G. 1930. 2539. Where a device was tested by the assignee of the inventor for half a day in regular work, after which no further inter- est was taken in it, and it was discarded until after the opposing party filed his application, and another device for doing the same work, invented by another party, who was the em- ployee of the assignee, was made and tested, and a number of such devices were built and put on the market, and no application was filed until knowledge was gained of the invention of the opposing party. Held, that such device was merely an abandoned experiment. ♦Gor- don V. Wentworth, C. D. 1908, 135 O. G. 1125. 2540. A delay of seven years by an inventor after an alleged reduction to practice, during which time he was active in developing a large number of other inventions, constitutes con- vincing evidence that the alleged reduction to practice amounted only to an abandoned ex- periment. *Moore v. Hewitt, C. D. 1908, 136 O. G. 1535. 2541. D. constructed a model pulley em- bodying the invention in issue in 1895, but made no attempt to introduce the invention into commercial use or patent it, but passed it over in favor of another construction until 1904. Held, that this model was nothing more than an abandoned experiment, which was un- availing as against a later conception by L. *Duff V. Latslaw, C. D. 1908, 136 O. G. 658. 2542. Where after making a device which while capable of operation was still in a crude stage L- turned it over to the officers of his company, who laid it aside and later set other employees to work to devise a similar im- provement, and it was not until he learned of their work that L. took any further interest in his invention. Held, that the device made by L. was a mere abandoned experiment. Lawrence v. Voight, C. D. 1909, 147 O. G. 235. 2. Not Held Abandoned Experiment. 2543. The fact that after Brooks made a machine embodying the invention he made a second machine differing from the first mere- ly in improvements in details cannot be taken as showing that the first machine was unsuc- cessful and an abandoned experiment. Brooks V. Smith, C. D. 1904, 110 O. G. 2013. 2544. A delay of two years and eight months after an alleged reduction to practice of the invention raises a strong presumption that what was done amounted to a mere aban- doned experiment ; but such presumption may be overcome by satisfactory proof that the machine was successfully operated. *Smith V. Brooks, C. D. 1904, 112 O. G. 953. 2545. Where the inventor and a witness skilled in the art testify that the operation of the machine was successful in 1896, and the machine in its present condition, although partly dismantled by the removal of parts, supports their allegations as to it, Held, that it must be regarded as a reduction to prac- tice. *Id. 2546. The comparative crudeness of an original construction as contrasted with sub- sequent machines is no ground for the re- fusal of the merit of operative success. Few great inventions have been perfect in the first instance. *Id. 2547. Where the testimony clearly estab- lishes that a machine was made and operated successfully and then photographed, Held, that the fact that it was afterward dismantled to enable its parts to be used in an improved machine does not warrant the conclusion that it was merely an abandoned experiment, par- ticularly when the evidence is clear that it was not. Funk & Nickle v. Whitely, C. D. 1905, 114 O. G. 471. 2548. Where the evidence satisfactorily shows that Hallwood constructed a machine embodying the invention in issue and suc- cessfully operated it more than five years prior to the filing of his application and that several machines were afterward constructed and sent to various parts of the United tSates, Held, that these acts should not be considered merely as evidence of an abandoned experi- ment, but as evidence of a reduction to prac- tice, although other machines were built em- bodying an older form of device for perform- ing the same function, where it appears that the old devices satisfactorily performed the desired function in ordinary use and that they were so made in order to dispose of old ma- terials then on hand. *McCormick v. Hall- wood, C. D. 1907, 130 O. G. 1487. 380 INTERFERENCE, XXXV, (e), (f), 1. (e) Model. 2549. A small experimental model of a size not calculated to be of any practical value, never intended to be more than an illustra- tion, put away after it was made and of which no use was attempted to be made until after the declaration of interference does not con- stitute a reduction to practice. *Hunter v. Stikeman, C. D. 1898, 85 O. G. 610. 2550. Complete invention must amount to demonstration. It must be shown to have passed the region of experiment — of possible or probable failure — and to have arrived at certainty by being embodied in the form in- tended, capable of producing the desired re- sult. A model alone, no matter how com- plete in detail of construction, does not come within the operation of such a rule. (Step- henson V. Goodell, C. D. 1876, 133, 9 O. G. 1195, cited.) *Id. 2551. Held, that a mere model, though com- plete in detail and illustrative of an operative construction, has the effect of establishing only a conception of the invention and is not a reduction to practice. Ocumpaugh v. Nor- ton, C. D. 1904, 110 O. G. 1723. 2552. Where the allegation of the con- struction of a model is followed by a separate allegation of reduction to practice in a full- sized device upon a later date, the idea of intention to claim for the first construction anything more than conception is precluded. The opposing party may have rested his case on later dates in view of such statement, and to admit proof of an earlier date of reduction than that given would seriously impair, if not destroy, the rule of certainty in pleading long maintained in the patent office. (Cross V. Phillips, C. D. 1899, 342, 87 O. G. 1399, 14 App. D. C. 228, 236.) *Hammond v. Basch, C. D. 1905, 115 O. G. 804. 2553. There is no doubt that the construc- tion of a full-size device capable of use to a sufficient extent to demonstrate the practical utility of the invention may often be regard- ed as a reduction to practice, notwithstanding it may have been called a model, as well as intended by the inventor to be used as a model for the construction of a like device of better and different materials, when there has been some test or application to use. (Norden v. Spaulding, ante, 588, 114 O. G. 1828; Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147, 13 . App. D. C. 86, 89.) *Id. 2554. Such a model, so called, must be quite different from the ordinary model which, while it may show the invention, is incapable of operation to effect its purpose, and the cases must be few, if any, indeed, in which the construction and disclosure of a device intended as an illustrative model merely with- out some test of its capacity to perform the service intended could be accepted not only as evidence of conception, but of reduction to practice also. *Id. 2555. Where a motor was constructed as an experimental machine and was not intend- ed to be used in filling an order, but was more than a mere model intended to illustrate the invention. Held, that if it completely embodied the invention and was capable of testing its efficiency to the full extent of its power the mere fact, that later manufactures to fill or- ders may have been on a larger scale cannot impair its effect as constituting reduction to practice. *Robinson v. Thresher, C. D. 1906, 123 O. G. 2976. (f) Tests. 1. In General. 2556. Where twelve complete scales em- bodying every feature of the interference issue were made and shipped to customers for test in practical use and they were all returned as unsatisfactory. Held, not a re- duction to practice of the invention. Swi- hart V. Mauldin, C. D. 1902, 99 O. G. 665. 2557. The mere construction of a device embodying the elements of the issue cannot be accepted as a reduction to practice unless that device proves so satisfactory in use as to demonstrate the practicability of the in- vention. Id. 2558. Where a gun embodying the extractor mechanism in controversy was made by D. and successfully subjected to a preliminary test with less than the service charge of pow- der to see if there was sufficient probability of its success in actual use to justify sending it to Sandy Hook for complete tests, Held, not proof of reduction to practice. Dashiell V. Tasker, C. D. 1903, 103 O. G. 1551. 2559. Where upon complete tests after a successful preliminary test the gun embodying the invention was found to be defective in many particulars and in the reports of the test no mention is made of the particular feature of the gun in controversy. Held, not proof of the success of that feature. Id. INTERFERENCE, XXV, (f), 1. 381 2560. Where a gun embodying the inven- tion in controversy was made and tested by a board of ordnance officers with a view to its adoption by the government as a type, and it was not thereafter adopted and no more Hke it were built and it appears that it was not as a whole successful, Held, that it cannot be assumed that it was successful in any par- ticular in the absence of proof of the fact. Id. 2561. Where the invention consisted in ejecting mechanism to be used in a match- machine and it appears that D. made such mechanism and applied it to a full-sized match-machine and satisfactorily tested it in ejecting dummy matches, Held, a reduction to practice, although the device was never put into use with real matches. Donnelly v. Wyman, C. D. 1903, 103 O. G. 637. 2562. Where the invention relates only to the ejecting mechanism of a match-machine. Held, that a shop test with dummy matches made under all of the other conditions of ac- tual use, and which demonstrated that the mechanism would successfully eject the splints, must be considered a reduction to practice. Id. 2563. Where one full-sized machine is made and successfully tested and thereafter a sec- ond machine of a different and improved con- struction is made for the same purpose, Held, not proof that the first machine was unsat- isfactory. Id. 2564. Where the invention is not a simple one, the mere fact of the construction of a machine is not sufficient to establish the fact that the machine as constructed was capable of successfully performing the work for which it was designed. If it is not shown by the testimony that the machine was capable of performing the work for which it was de- signed, even to a small degree of efficiency, the machine docs not constitute in law a re- duction to practice. Macdonald v. Edison, 10") O. G. 97.3. 2565. Where it is incumbent upon the ju- nior party to establish the fact beyond a rea- sonable doubt that the machine which he had placed in evidence and on which he relies as his reduction to practice was actually capable of successfully performing the work for which it was built. Held, that the mere state- ment that the machine was used for several months succeeding its completion, without es- tablishing by competent evidence the result of that use, is not sufficient to establish the fact that the machine was successful in its operation. From the testimony it is left whol- ly to conjecture as to the success or non- success of the test. Id. 2566. Where the invention is a mere at- tachment to automatically turn out the light in a printing-machine and is of such a sim- ple nature that a test is scarcely necessary to prove its success and where several witnesses testify that it was successfully used, Held proof of reduction to practice. Herman v. Pullman, C. D. 1903, 107 O. G. 1094. 2567. Where it appears that Thomas con- structed a hay-loader and the testimony is ample and satisfactory to show that the device was successfully tested and operated during three successive hay-making seasons, Held, that the device is a reduction to practice not- withstanding the fact that another device was subsequently constructed embodying an im- provement not necessarily connected at all with the invention of the issue, even though it be admitted that the second device was a better one than the first. *Trisscll v. Thom- as, 109 O. G. 809. 2568. From the length of time taken for the tests of a hay-loader — three successive years in the hay-making seasons of the year — no inference can be deduced unfavorable to the inventor. On the contrary, considering the nature of the device and the purpose for which it was intended and that the best pos- sible test was that which could be made in the outward operation of the machine in the field in the work for which it was intended, his care and diligence are rather to be com- mended, in view of the fact that there were no rivals in the field so far as he knew and there being no testimony to show fraud, sup- pression, concealment, or improper action of any kind. *Id. 2569. Where the evidence shows beyond question that Pullman made a full-sized blue- print machine embodying the invention in March, 1901, and the witnesses testify that it was operated to see how it would work and that blue-prints were actually made by it and distributed during April, Held, that the ma- chine must be regarded as a reduction to prac- tice. *Herman v. Pullman. C. D. 1904, 109 O. G. 2S8. 2570. Where it appears that D. constructed a full-sized underrcamer and loaned it to a practical oil-well driller of eighteen years' ex- perience to test with, the idea that if success- 383 INTERFERENCE, XXXV, (f), 1. fui orders would be given for similar ones, and in testing it the underreamer was used for two weeks satisfactorily, underreaming a well for a distance of 222 feet to the point where tools of its size ceased to be used, and where it further appears that, relying upon this test, orders were given for a similar tool even after it was discovered that one of the parts of the underreamer had cracked. Held, that the device is a reduction to practice. Double V. Mills, C. D. 1904, 112 O. G. 1747. 2571. The fact that this order was filled by an improved tool cheaper to manufacture, while the original underreamer was rented to an inexperienced oil-driller, who broke it after using it four days, during which he had underreamed a well some forty to seventy- five feet. Held, not sufficient to warrant hold- ing the device inoperative in the light of the testimony of experienced oil-well drillers that other forms of tools were "being torn to pieces all the time." Id. 2572. Where it is shown by the record that a device was made for the purpose of illus- tration and experimental test and that the test to which the device was subjected was not under conditions of actual use, yet when given the test which was deemed necessary the de- vice failed to meet the requirements of the tests and was crushed into fragments, Held, that such device is not an actual reduction to practice, but a mere illustrative model made for experimental purposes only. Gallagher v. Hien, C. D. 190.5, 114 O. G. 974. 2573. Where the claim to reduction to prac- tice is founded on a type-writing machine having six type bars embodying the issue and the inventor testifies that he manipulated these bars, and thereby satisfied himself of the practical mechanism of the invention, but no paper was used and his satisfaction was de- rived from the operation of the bars singly, Held, that this is not sufficient to show actual reduction to practice. *Paul v. Hess, C. D. 1905, 115 O. G. 251. 2574. Where new devices are of an old type and the novelty resides in specific con- struction, it may be that practical utility may be determined without use under conditions of industry; but where the device is of a new type there is no need for demonstration of utility under the conditions of practical oper- ation. *Id. 2575. Where the invention is a knuckle for car-couplers and it appears that a knuckle made of brass was given a short test on an improvised train of cars in the freight yards, and that during this test the parts of the knuckle were broken and it was found as a result of the test that the material of which the device was made and the shape of the same should be changed, Held, that the evi- dence adduced does not establish the fact that the device was a reduction to practice of the invention in issue. Gilman and Brown v. Hin- son, C. D. 1905, 118 O. G. 1933. 2576. Where the invention in controversy is a friction-spring and it appears that a device embodying the invention was first put in a vise subjected to pressure, but there are no facts appearing of record which show what the pressure was, nor are any facts stated which enable the court to determine whether the inventor's conclusion is justified that the result of the test was satisfactory. Held, that the fact of reduction to practice is not proved. ♦Gallagher, Jr. v. Hien, C. D. 1905, 115 O. G. 1330. 2577. Where a friction-spring was tested in a vise and under a steam-hammer and broken under the last test and no measure- ments were taken to show the tensile strength of the spring or the pressure to which they were subjected and no facts appear of record upon which the court can have a conclusion that the device was adapted to perform the work for which it was built, Held, that the de- vice was a mere experimental device and not a reduction to practice. *Id. 2578. Where a device is shown to have been constructed and such device requires a test in order to demonstrate its practicability and witnesses merely testify that in their opinion the device was operative, but no facts appear of record which enable the court to determine for itself whether those witnesses were justi- fied in their conclusion that the result of the tests was satisfactory, Held, that the fact of reduction to practice is not established. See- berger v. Russel, C. D. 1905, 117 O. G. 2086. 2579. Held, that the actions of the inventor with regard to an invention at the time out- weigh mere oral testimony as to the opinion of witnesses. Id. 2580. Where a machine was constructed and tested for a short time, but subsequently dis- mantled and parts of the same lost, and the machine was never again used, nor were sim- ilar machines made for several years. Held, that these acts raise a presumption that the device was not deemed satisfactory when used. Id. INTERFERENCE, XXXV, (f), 1. 383 2581. Where it is the practice of the parties interested to take photographs of a device under construction to show the progress of the work, and photographs are introduced in evidence which were taken of the machine for that purpose during its construction, and in no one of the photographs is the invention of the issue shown, and where also it is shown that many machines of the kind were built, sold, and operated, but in no one of them was the invention of the issue. Held, that these facts overcome tlie mere oral testimony that the machine which was tested for a short time, but afterward dismantled was satisfactory in its operation. Id. 2582. Where e.xperiments claimed to be such operation of the invention as to show re- duction to practice were much more than mere laboratory tests, but it does not appear that the invention was practically carried on there- in or that possibility of practical operation was satisfactorily demonstrated. Held, that the experiments could not be accepted as showing reduction to practice. Pohle v. Mc- Knight, C. D. 1905, 119 O. G. 2519. 2583. Where tests relied upon as reduction to practice are admitted not to be very satis- factory, and the plant was soon dismantled and never re-erected, and friends refused to assist in view of these tests, and no applica- tion for patent was made in view thereof, though a caveat had been filed, and no further attempts to operate the invention were made for several years, when further experiments were undertaken, Held, that the so-called re- duction to practice must be considered as merely an abandoned experiment. Id. 2584. Where the invention is the knuckle of a car-coupler and the evidence relied upon to establish reduction to practice showed the making of a knuckle consisting of a crude brass casting, which was broken when tested, and a knuckle consisting of a gray-iron cast- ing, which was never actually tested, Held, that the knuckles were made of metals not suitable for practical use, but were models, and that they did not prove a satisfactory re- duction to practice. *Gilman and Brown v. Hinson, C. D. 1906, 122 O. G. 731. 2585. Where the device was tested and broken during the test and the parts were destroyed or lost and nothing more was done on the invention until more than five years later, when an application was filed, but in the meantime an earlier device for the same purpose, patented by the same party, was placed on the market in large quantities, and it appears that an application for the later device was only filed after learning that his opponent was selling a similar device, Held, that the conduct of the party indicates that the device was unsatisfactory and that what was done amounted to nothing more than an abandoned experiment. *Id. 2586. Where a model was constructed that clearly disclosed the invention and would en- able those skilled in the art to thoroughly understand it, in brief sufficient to enable the utilization of the invention so that had death removed the inventor before an application for patent had been filed the invention would have survived. Held that in the absence of any test it does not constitute an actual reduction to practice unless the invention belongs to that class of simple inventions which require no other proof of their practicability than the construction of a model. *0'Connell v. Schmidt, C. D. 1906, 122 O. G. 2065. 2587. Where a device was never used for its intended purpose of lighting a car, but for the purpose of experiment was tested in the basement of a building and after the test was laid aside and another system of lighting put into use. Held, that such conduct naturally tends to discredit the allegation that the test of the invention was a success. Bliss v. Mc- Elroy, C. D. 1906, 122 O. G. 2687. 2588. Where a device was tested and laid aside and an attempt to rebut the presumption that the test was unsuccessful is made by showing that the party was dependent upon his father, and it was necessary to devote his attention to inventions which would make bet- ter financial returns, and it appears that other applications were filed, and no effort was made to secure the adoption and use practically of the present invention, Held, that the show- ing is insufficient. Id. 2589. Where the award of priority depends upon the sufficiency of the proofs of success- ful reduction to practice by one of the par- ties. Held, that the witnesses who testify to the success of tests and operations of ma- chines should give clear, full, and specific statements as to all essential facts and that in a case of this kind it is not sufficient for the witnesses to state that a machine was tested and found satisfactory. The opinions of wit- nesses that a machine contained the issue and their conclusions from observation that its operation was successful are entitled to some weight ; but wherever possible the observed 384 INTERFERENCE, XXXV, (f), 1. facts should be fully stated, so that the tribu- nal trying the case may judge the reasonable- ness of the opinions and conclusions stated. Robinson v. Thresher, C. D. 1906, 123 O. G. 2627. 2590. Where changes were made during the tests in the principal elements of the inven- tion and explanations arc furnished in the testimony why some of the various changes were made, Held, that these explanations, if full and satisfactory, would not take the place of the complete and detailed description of the tests of the invention, which information is shown to be necessary, both by the fact that the changes were made and by the nature of the changes, to an intelligent estimation of the alleged success of the early operation of the invention. Id. 2591. Where it is contended that the possi- bility of successful operation of the invention in issue is so obvious that demonstration by successful operation of a machine embodying the same is not essential to reduction to prac- tice, Held, that practical demonstration by successful operation should be dispensed with only in those cases where the inventions are extremely simple. Seemingly perfect theor- etical demonstrations are not infrequently shown to be worthless when tested by actual conditions, and it is probably for that reason that the law, save for a few exceptional cases, regards successful operation of the invention an essential point of actual reduction to prac- tice. Id. 2592. Where the tirst test was made with an incomplete machine and several essential parts of the invention were lacking. Held, not to show successful reduction to practice of the invention. *Id. 2593. Where this court is not without doubt as to the proper conclusion to be drawn from a second test, Held, that under the burden of proof that doubt must be resolved in favor of the holder of the patent, and aside from this the decision of the commissioner ought to stand when there is doubt whether it is founded in error. *Id. 2594. Where engineers, draftsmen, and keepers of records and files were called to certify, and yet the engineer who personally made the test which is the crucial point of the case, and subsequently made the entries in the report, was neither called nor his ab- sence accounted for, and it was this report which the supervising engineer made his in- dorsement upon and referred to as the basis of his evidence. Held, that this indorsement of the supervising engineer that the machine operated successfully is not a satisfactory substitute for specific information as to the details of the test upon which his general con- clusion was based. *Id. 2595. Where the evidence shows that a segment of a turbine-wheel was constructed as an experimental device and was subjected to certain tests to determine the strength of riveting, but there is no evidence as to the nature of these tests or the strain to which the riveting was subjected. Held, insufficient to enable a determination to be made whether the testimony that the result of the test was satisfactory is justified, and that even if the test demonstrated the sufficiency of the riveting it did not demonstrate the practicability of the invention. Emmett v. Fullagar, C. D. 1906, 124 O. G. 2178. 2596. Where the device in issue is said to belong to that class of simple devices the mere production of which without test is re- garded as an actual reduction to practice, but the device originally made was not produced in evidence, and the testimony tending to es- tablish the identity of a later device, which was introduced in evidence, with the original device is so general as to leave it uncertain whether this later device is of the same strength, size, shape, and proportion as the original, Held, that actual reduction to prac- tice is not proved. Richards v. Burkholder, C. D. 1907, 128 O. G. 2529. 2597. Where it appears that L. and W. con- structed a machine embodying the tin-plate catcher set forth in the issue and secretly tested the same August 23, 1902, but it is not clear that freshly-tinned plates were used in the test, and the machine was at once dis- mantled, and that subsequently, in October, 1903, another machine was constructed which is said to have been operated until November 18, 1903, but was not again used until Sep- tember, 1904, after L. and W. heard of C.'s patent, and no sheets which were run through this catcher are produced, and where another machine, which was made in February, 1905, in conformity with the first machine and test- ed in the presence of witnesses called in this case, required frequent adjustments of the catcher-disks to prevent the sheets from slip- ping and yet to place them far enough apart to avoid denting the sheets, Held, that the ex- perimental stage of the invention had not been passed and that such tests did not establish INTERFERENCE, XXXV, (f), 2. 385 reduction to practice of tlie invention. *Lewis and Williams v. Cronemeyer, C. D. 1907, 130 O. G. 300. 2598. The mere general statements of wit- nesses that a device operated successfully, un- supported by the production of the articles upon which the machine operated at the time must be regarded as meager evidence of a successful test. Gordon v. Wentworth, C. D. 1907, 130 O. G. 206.5. 2599. If a machine may be successfully operated at the time testimony is taken, this fact, taken in connection with statements of witnesses that it operated successfully when first constructed, may be considered sufficient evidence of a successful test where it appears that the device has not been changed in the meantime. Id. 2600. In view of the failure of the inventor to testify as to the character or results of tests of a magneto-receiver for wireless tel- egraphy and the testimony of a witness who assisted in the tests that the signals were faint, the unsupported statement of an electrical en- gineer who tested the device that his operator received intelligible messages is not sufficient to establish the operativeness of the device, especially where it does not appear with what certainty or rapidity the signals or messages were received. Marconi v. Shoemaker, C. D. 1907, 131 O. G. 1939. 2G01. A test by a party during the taking of rebuttal testimony out of the presence of the opposing party or his agent is entitled to no consideration as proof of the operativeness of the device several years previous under dif- ferent conditions. Id. 2602. The statement of witnesses who were thoroughly familiar with construction of a device that it operated successfully. Held, suf- ficient to establish a successful test where the operation of the device is easily understood and the device itself is in evidence and found to satisfactorily perform the intended func- tions. Ebersole v. Durkin. C. D. 1908, 132 O. G. 842. 2603. Where the testimony as to the testing of a device was given by witnesses skilled in the art and is clear and convincing, the fact that no record was kept of such tests does not discredit this testimony. *Horton v. Zim- mer, C. D. 1908, 137 O. G. 2223. 2604. In order that a device may constitute a reduction to practice, it is necessary in every case, except that of a very simple de- 25 vice, that it be tested. *Pool v. Dunn, C. D. 1910, 1.51 O. G. 4.50. 2605. It is not necessary in order to es- tablish reduction to practice that the test of the device relied upon should be one of com- plete accuracy. It is seldom that an inventor reaches perfection in the first device con- structed. The test should be to ascertain whether the device reasonably meets the re- quirements of the specifications, and if it does not measure up to this test can it be made to meet it by the introduction of mere mechanical changes? If it can it should be re- garded as a reduction to practice. *PooI v. Dunn, C. D. 1910, 151 O. G. 4.50. 2606. T. offered at the hearing to have a certain exhibit which had been offered in evi- dence tested, in order to show that it was then in an operative condition. Held, that the result of such test would be immaterial, since the question of reduction to practice is one which must be decided on the record as pre- sented. Taylor v. Gilman, C. D. 1910, 158 O. G. 883. 2607. Testimony that a gun embodying the invention was built under D.'s directions, was shipped to the government proving-grounds, and tested, and that after the test it was adopted by the government and other guns were made exactly like it for the government, Held, sufficient to establish reduction to prac- tice by D. Duggs V. Schneider, C. D. 1911, 162 O. G. 269. 2. Necessary. 2608. Where it is a conceded fact that the original machine on which M.'s claim of pri- ority is founded was constructed prior to the filing of E.'s application, which resulted in a patent, and E. took no testimony, Held, that inasmuch as the invention is not a simple one in order for M. to succeed it was necessary for him to prove that his machine as con- structed was actually capable of successfully performing the work for which it was intend- ed. *Macdonald v. Edison, C. D. 1903, 105 O. G. 1263. 2609. Where the changes in the roller-bear- ing in controversy over those previously in use are slight, Held, nevertheless, that the device is not of such a simple character that its success will be obvious without a test in actual use. Winter v. Slick v. Volkonmer, 107 O. G. 1659. 386 INTERFERENCE, XXXV, (f), 2. 2610. Where government officers subjected a gun embodying the invention to a prelim- inary test not under the conditions of actual service and found the result sufficiently satis- factory to warrant sending the gun to the proving-grounds for a complete test, Held, not a reduction to practice, but a mere experi- ment. *Dashiell v. Tasker, C. D. 1903, 103 O. G. 2174. 2611. Where a gun embodying the extractor mechanism in controversy was tested by gov- ernment officers at the proving-ground and a memorandum was made of defects in the fir- ing mechanism and other parts of the breech mechanism, but nothing was said of the ex- tractor, Held, that the silence as to the ex- tractor is not proof that it was satisfactory. *Id. 2612. Where a gun embodying the invention was tested by the government with a view to its adoption as a type and after repeated tests disclosing many defects in the gun as a whole no more guns like it were made and there was no recommendation by the officers that it be adopted, Held, that it cannot be regarded as a reduction to practice of the invention. *Id. 2613. A breech mechanism for a rapid-firing gun belongs to that class of devices in which it must be shown that all of the parts were functioning properly under rigorous and ex- act requirements of actual service, before the mechanism can be said to be adapted and per- fected for practical use. *Id. 2614. Where machinism for ejecting match- splints from the carrier was placed upon a full-sized match-machine and tested in the shop in ejecting dummy matches and was found to be successful. Held, to be a reduc- tion to practice. *Wyman v. Donnelly, C. D. lOO.l, 104 O. G. 310. 2615. Where D. was not a match manufac- turer, but a manufacturer of machines. Held, that his failure to test his device with real matches instead of dummy matches and his failure to use the machine commercially can- not be taken as discrediting his claim that the machine was successfully reduced to practice. *Id. 2616. Where it was contended that the ex- hibit type-writing machine was so simple that no actual test thereof was required to estab- lish reduction to practice. Held, that though the change from prior devices is slight the in- vention is in an art where slight changes may have material effect upon the operation, and a test was therefore necessary to determine the success of the device. Paul v. Hess, C. D. 1904, 113 O. G. 847. 2617. Held, that an improvement in type bars of type-writers, upon the efficacy of which the successful operation of the whole machine depends, is not of that simple char- acter which requires no test on operation in order to establish reduction to practice. *Paul v. Hess, C. D. 1905, 115 O. G. 251. 2618. Where both parties subject their in- ventions to tests. Held, that it is therefore, in effect, admitted by both parties that the de- vices belongs to that class of inventions which requires actual use or thorough tests to dem- onstrate its practicability. *Gallagher, Jr. v. Hien, C. D. 1905, 11.5 O. G. 1330. 2619. Where an invention undoubtedly be- longs to that class which requires either actual use or thorough tests to determine its prac- ticability. Held, that there can be no actual reduction to practice until one or the other thing takes place and is proven. *Id. 2620. Where it appears that an invention is a radical departure from previous methods. Held, that in order to establish the fact of reduction to practice thorough tests are neces- sary. *Id. 2621. Where an invention is of such char- acter as to require testing to demonstrate its practicability and the evidence does not show the result of the test, whether satisfactory or otherwise. Held, that the fact of actual re- duction to practice is not established. Bauer V. Crone, C. D. 1905, 118 O. G. 1071. 2622. Where a telephone transmitter device which contains a disclosure of the invention was constructed for the purpose of illustra- tion merely, so that a commercial instrument could be built from its design, and was never put in circuit and tested. Held, not to be a re- duction to practice, but only an evidence of conception. O'Connell v. Schmidt, C. D. 1905, 118 O. G. 588. 2623. Held, that a mechanism adapted to be put in a telephone-circuit is not a simple invention, such as needs no test, and that an actual operation of the same in a telephone- circuit to determine whether it is capable of performing the work for which it is con- structed is essential in order to warrant the conclusion that the device is a reduction to practice. Id. 2624. Where the invention is for an elec- trical circuit protector formed of delicate co- INTERFERENCE, XXXV, ({), 3. 387 operative parts and meant to be used in an art where an unexpected change in the cur- rent may cause vastly different effects. Held, that such device needs a test in order to es- tablish its practicability and is not such a simple invention that the mere construction of the same is sufficient to warrant the hold- ing that the device is a reduction to practice. Rolfe V. Hoffman, C. D. 1905, 118 O. G. 833. 2625. Where an invention needs a test to demonstrate its practicability and the testi- mony is to the effect that it was operated to some extent, but whether the operation was successful or not is left entirely to conjecture. Held, that the fact of reduction to practice is not established beyond a reasonable doubt. Id. 2626. The mere making of a garment-hook without successful tests cannot be regarded as a reduction to practice on the theory that it is so simple as to require no test when it ap- pears that defects developed in the first de- vice made and also in the second one made to cure the defects in the first. Lowrie v. Tay- lor and Taylor, C. D. 190.5, 118 O. G. 1681. 2627. Where the object of the invention, as clearly appears from the applications and testimony of the various parties to the inter- ference, is to produce a graduated printing- plate which will practically do away with the necessity for "make-ready" on the platen or impression-cylinder. Held, that a partially- graduated plate which will produce satisfac- tory prints only when used in connection with "make-ready" does not disclose the invention and is not a reduction to practice thereof. Wickers and Furlong v. McKee, C. D. 1906, 124 O. G. 905. 2628. Where the invention consists of a plate graduated in such a manner as to obviate the necessity for "make-ready," Held, that to establish a reduction to practice requires that the plate be subjected to actual printing tests without the use of "make-ready," since a flat plate printed with an overlay will produce the same imprint as a graduated plate. Id. 2629. Where the invention is a cover-strip for the ends of the blades of a turbine-wheel. Held, that in view of the complex conditions under which the device operates it can be told with certainty that it will satisfactorily perform its function only after subjecting the device to tests under the conditions of actual use. Emmet v. Fullagar, C. D. 1906, 124 O. G. 2178. 2630. Where the invention consists of a plate graduated in such manner as to obviate the necessity for "make-ready," Held, that to establish a successful reduction to practice re- quires a printing test under actual working conditions on a power-press and without the use of a "cut-overlay." *Wickers and Fur- long V. McKee, C. D. 1907, 129 O. G. 869. 2631. As a general rule, before a machine can be considered as a reduction to practice it must be subjected to a test, and the test must demonstrate the fitness of the machine for a useful purpose. Gordon v. Wentworth, C. D. 1907, 130 O. G. 2065. 2632. The making of drawings of a cutter- head for a planing machine and the disclosure of the invention to others, Held, not suffi- cient to entitle the inventor to an award of priority as against one later to conceive, but first to reduce the invention to practice. *Nel- son v. Faucette, C. D. 1909, 143 O. G. 1438. 2633. A mantle for an inverted gas-lamp is not such a simple device that the mere con- struction thereof without a test to demon- strate its efficacy constitutes a reduction to practice. *Daggett, Jr. v. Kaufmann, 145 O. G. 1024. 3. Not Necessary. 2634. What is successful construction is a matter the determination of which must large- ly depend upon the nature and purpose of the device in the particular case, as well as upon the special circumstances surrounding the alleged construction and use. Some devices are so sim- ple and their purpose so obvious that the com- plete construction of one of a size and form capable of practical use might be regarded as a sufficient reduction to practice without ac- tual use or test in an effort to demonstrate their complete success or probable commercial value. *Mason v. Hepburn, C. D. 1898, 84 O. G. 147. 2635. No actual test of the practicability of a device is needed where the device is itself complete and capable of practical use. (Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147.) *Lindemeyer v. Hoffman et al., C. D. 1901, 95 O. G. 838. 2636. Some inventions are so simple that no actual test is required when the device is a complete construction of full size and form. (Citing Mason v. Hepburn, C. D. 1898, 510, 84 O. G. 147.) Loomis v. Hauser, C. D. 1902, 99 O. G. 448. 388 INTERFERENCE, XXXV, (g). 2637. An envelop constructed by hand made from a sheet of light brown paper, which on inspection is clearly seen to be capable of se- curely holding tickets, for which use the in- vention is intended, though never put into commercial use, Held, to constitute a full and complete reduction to practice. Id. 2638. A theater-ticket holder made from a sheet of ordinary paper and constructed as stated in the issue. Held, a reduction to prac- tice, although the advertisements, program, time-table, and diagram of seats usually found on such holders were not printed thereon. Id. 2639. The ticket-holder in controversy is an exceedingly simple invention consisting main- ly in the folding of a small piece of paper, and there can scarcely be any practical difference between what is designated as an illustrative model and the perfected device. Held, there- fore, that the making of such a holder by Hauser was a reduction to practice. *Loomis V. Hauser, C. D. 1902, 99 O. G. 1172. 2640. Some devices are so simple and their purpose and efficiency so obvious that the com- plete construction of one of a size and form intended for and capable of practical use may well be regarded as a sufficient reduction to practice without actual use or test in an ef- fort to demonstrate their complete success or probable commercial value. (Citing Mason V. Hepburn, C. D. 1898, 510, 84 O. G. 147, 13 App. D. C. 86.) *Id. 2641. This case distinguished from Linde- meyr v. Hoffman (C. D. 1901, 353, 95 O. G. S38), wherein the inventor expressly admitted that his device was not fit for practical use. *Id. 2642. Where it appeared that a gas-burner forming the subject-matter of an interference had never been put to an actual test, but that a tip differing therefrom only in a slight variance in the inclination of the air-inlets had operated successfully, Held, that the oper- ation of the device in issue was evident from the operation of the prior device and that no test of the burner in issue was necessary to constitute reduction to practice. Shaffer v. Dolan, C. D. 1903, 107 O. G. 539. 2643. A common cloth-cased horse-collar stuffed with cotton is one of those devices which are so simple and their purpose and efficiency so obvious that the complete con- struction of one of a size and form intended for and capable of practical use is to be re- garded as a sufficient reduction to practice without actual use or test. *Couch v. Barnett, C. D. 1904, 110 O. G. 1431. 2644. Where devices of the kind involved were well understood and the only point to be determined by a test was whether upon the operation of the controller-handle the dog which was attached thereto would move in the way stated, Held, that it was not neces- sary that a test be performed under condi- tions of actual service in order to establish a reduction to practice. Id. Ebersole v. Dur- kin, C. D. 1908, 132 O. G. 842. 2645. The making of a sample ringing-key for a four-party telephone-line. Held, to con- stitute a reduction to practice, as the opera- tiveness of the device would be apparent to any one skilled in the art, there being little in the key that was new, and several witnesses who examined it carefully having pronounced the invention a success. *Connor v. Dean, C. D. 1909, 142 O. G. 856. 2646. The mere construction without test of an electrical-circuit protector comprising means operable upon an excess of current for protecting the circuit and having provision whereby it is automatically reset and resol- dercd in reset condition, Held, to constitute a reduction to practice in view of the condition of the prior art. *Rolfe v. Kaisling v. Leeper, C. D. 1909, 143 O. G. 562. 2647. A key-cup made of a single piece of sheet metal. Held, to be of that simple char- acter which requires no test to demonstrate its practicability. Landa v. Kavle, C. D. 1910, 158 O. G. 228. 2648. An improvement in safety-razors of which the only novel feature is the clamp by which the blade is held in position. Held, such a simple device that the making thereof amounted to a demonstration of utility and- constituted reduction to practice. *Garsman v. Gillette, C. D. 1911, 165 O. G. 244. (g) Accidental Production. 2649. Where the invention consists of a draft-pipe for a motor-vehicle having an open upper end and it appears that W. lost the cap on his draft-pipe and ran his machine one day without it. Held, that this accidental em- bodiment of the invention cannot be regarded as showing either reduction to practice or conception. Whitney v. Howard v. Stanley and Stanley, C. D. 1903, 104 O. G. 1391. INTERFERENCE, XXXV, (h), (i), (j). 389 (h) Process, Product, Composition of Mat- ter, Etc. 2650. After reviewing the testimony, Held, that while Schmertz may have come very near to developing the process of the issue prior to the date of Appert's constructive reduction to practice he lacl.or, INTERFERENCE, XXXIX, 2. is merely cumulative of that already in the case. Id. 2744. Where the question of priority of in- vention has been decided in favor of the se- nior party on the ground that the junior party has failed to file his testimony within the time assigned for that purpose, Held, that the case will not be reopened and the junior party permitted to file his testimony when it appears that the testimony which has been taken re- lates in no way to the question of priority of invention, but solely to the right of the oppo- sing party to make the claims of the issue. Osborn v. Austin, C. D. 1905, 115 O. G. 1065. 2745. Where after decision upon priority the losing party moves that case be reopened to take new testimony in view of a newly-found letter which is alleged to relate to the inven- tion, but the letter itself does not bring to light anything which might change the orig- inal conclusion. Held, that the motion will be denied. Ball v. Flora, C. D. 1905, 117 O. G. 20S8. 2746. Where decision upon priority has been rendered by each of the tribunals of the pat- ent office and notice given of appeal to the court of appeals, Held, that the showing which would justify reopening the case to take fur- ther testimony must make it clearly and cer- tainly appear that reopening is essential to the ends of justice. Id. 2747. Where motion to reopen case is based upon newly-discovered evidence and it is also proposed to take additional testimony as to certain matters said to be indefinitely brought out in the original testimony. Held, that as there is no apparent connection between the letter and the testimony said to be ambiguous the finding of the letter does not justify re- opening the case for taking testimony supple- mentary to such originally ambiguous testi- mony. Id. 2748. Where the testimony in an interfer- ence refers to a certain exhibit which is not introduced in evidence, although its where- abouts is known, and the interference is re- opened for the purpose of taking an additional deposition to properly connect such exhibit with the original testimony, the interference will not be reopened a second time because of the insufficiency of such deposition. Au- tenrieth and Kane v. Sorensen, C. D. 1906, 120 O. G. 1164. 2749. Where the examiner of interferences denied a motion to reopen the interference for the purpose of introducing testimony given by one of the parties as a witness in another proceeding and which, it is claimed, tends to discredit his testimony in the present inter- ference, Held, that in the absence of a show- ing of an abuse of discretion by the examiner of interferences his decision will not be dis- turbed on interlocutory appeal; but should it appear on consideration of the entire record on appeal that the decision on priority would be changed the case may be reopened to admit the said testimony. Dunl)ar v. Schellenger, C. D. 1906, 121 O. G. 260:!. 2750. Where it appeared that a substitute attorney because of his unfamiliarity with the case closed his proofs without the introduc- tion of evidence necessary to the success of his cause and the examiner of interferences thereupon reopened the proofs and set new times for taking testimony, Held, that the case is not of such peculiar difficulty as to consti- tute an exception to the general rule that de- cisions by the examiner of interferences ex- tending times for taking testimony will not be reviewed on appeal. Dalton v. Hopkins v. Newman, C. D. 1906, 321 O. G. 2666. 2751. An interference will not be reopened after testimony has been taken and a decision on priority rendered thereon for the purpose of introducing evidence tending to show that the invention in issue was first invented by a third party. Dunbar v. Schellenger, C. D. 1906, 125 O. G. 348. 2752. Where an inventor, testifying in his own behalf, states that he constructed a four- relay telephone system upon a certain date and he subsequently testifies in an interference between entirely different parties that under the direction of one of said parties he set up a three-relay telephone system at an earlier date and it appears that some of his claims in- volved in the issue are broad enough to cover both systems, Held, that the interference will not be reopened for the taking of further proofs on the theory that the inventor's later testimony tends to show that his first testi- mony was false. The testimony in the two cases is not necessarily inconsistent, as the inventor was testifying to the construction of specific devices without regard to the broad invention common to both. Id. 2753. An interference will not be reopened for the purpose of introducing newly-dis- covered evidence where it does not appear that the evidence could not have been dis- INTERFERENCE, XXXIX, 3. 397 covered at the time of taking testimony. Lat- shaw V. Duff V. Kaplan, C. D. 1907, 130 O. G. 980. 2754. An appeal from the e.xaminers-in-chief will not be reheard for the purpose of consid- ering a patent of one of the parties to the in- terference which is not in evidence. Id. 2755. A practice which would allow a con- testant to experimentally conduct his case to a probable failure and then permit him after consultation and with competent assistance to make further endeavors to show what he could and should have earlier shown with such assistance would be contrary to all well-estab- lished rules and legal principles. Standard Import Co., Ltd. v. New Orleans Import Co., Ltd., C. D. 1907, 131 O. G. 1164. 2756. The fact that a motion to reopen an interference to take additional evidence was brought before final hearing is no reason why it should be granted. Id. 2757. A motion to reopen an interference for the purpose of taking further testimony with respect to a blueprint which is in evidence as an exhibit was properly denied where it ap- peared that the moving party had had an op- portunity during the taking of the testimony to adduce all the material evidence concerning the exhibit and it did not appear that the ad- mission of the proposed testimony would in any way modify the decision. Struble v. Young and Townsend v. Sawyer, C. D. 1909, 139 O. G. 729. 2758. On a motion to remand an interfer- ence to the examiner of interferences to re- open the same and take further testimony, Held, that while motions to reopen an inter- ference and take further testimony should generally be heard and determined in the first instance by the examiner of interferences (Robinson v. Townsend v. Copeland, C. D. 1003, 327, 106 O. G. 997) it is well settled that in order to justify remanding the case to the examiner of interferences the moving party should make out a frima facie case. (Estes V. Cause, C. D. 1899, 164, 88 O. G. 1336.) Otis V. Ingoldsby and Bowling, C. D. 1909, 143 O. G. 1346. 2759. The fact that the junior party took no testimony, but relied on his contention that the senior party had no right to make the claims, and the further fact that on appeal the examiners-in-chief reversed the holding of the primary examiner and the examiner of interferences that the senior party had a right to make the claims. Held, to constitute no ground for reopening the case to allow the senior parties to take testimony on the ques- tion of their right to make the claims, which testimony was in their possession and could have been taken within the time set. Id. 2760. "Motions to reopen an interference and take further testimony should generally be heard and determined in the first instance by the examiner of interferences; but it is well settled that in order to justify restoring the jurisdiction of the examiner of interfer- ences to consider such a motion the moving party should make out a t'rima facie case." Rolfc V. Leeper, C. D. 1910, 159 O. G. 991. 2761. Where a junior party to an interfer- ence, who had taken no testimony but his own, brought a motion, after the time set for taking testimony had expired, to extend the time for final hearing, which the examiner of interferences denied, and two months later he brought a motion to restore the jurisdic- tion of the examiner of interferences to con- sider a motion to reopen the interference, Held, that in the absence of any showing why a motion for an extension of time was not brought in the first instance and of any ex- cuse for the delay after the decision of the examiner of interferences jurisdiction would not be restored. Id. 3. Newly Discovered Evidence. 2762. Where motion is made to reopen the interference for the admission of alleged "newly-discovered evidence," but it appears that much of said evidence is not properly "newly-discovered" and that no satisfactory excuse has been made for the delay in bring- ing the motion, Held, that the motion was properly denied. Newell v. Clifford v. Rose, C. D. 1906, 125 O. G. 665. 2763. Where appeal is taken from the ad- verse decision of the examiner of interfer- ences on motion to reopen the interference for the admission of additional evidence after a decision has been rendered by him on prior- ity and said appeal is accompanied by a re- quest that consideration of the appeal on the motion be held in abeyance until the case reaches the commissioner on appeal on pri- ority, Held, that if the interference is to be reopened at all it should be done at once and not delayed until appellant has had an oppor- tunity to test the sufficiency of the present 398 INTERFERENCE, XL. record before the various appellate tribunals. Id. 2764. Where an interference had been de- cided adversely to C. upon the ground that although first to conceive he had concealed the invention and had thereby lost his rights to a patent under the doctrine stated in Mason V. Hepburn (C. D. 1898, r,10, 84 O. G. 147), and it is alleged that it was found after the termination of the interference that an earlier application by C. disclosed the invention in issue, Held, that such circumstances do not justify the reopening of the interference to include said earlier application, since the al- leged newly-discovered evidence is such as might have been utilized in the original inter- ference, and that for this reason the case is res odjudicata under the doctrine stated in Blackford v. Wilder (C. D. 1907, 491, 127 O. G. 1235), and Horinc v. Wende (C. D. 1907, 615, 129 O. G. 2858). Cutler v. Hall, C. D. 1908, 135 O. G. 449. 2765. Where counsel was of the opinion that certain testimony which it was proposed to take might be introduced in rebuttal and after the expiration of the time set for taking re- buttal testimony, upon a motion to extend such time, the examiner of interferences de- nied the motion, upon the ground that the testimony sought to be taken was not proper rebuttal, but was part of the case in chief, and thereupon a motion to reopen the case was filed for the purpose of taking such testimony as newly-discovered evidence. Held, that the excuse for the delay was insufficient. Crescent Oil Company v. W. C. Robinson & Son Com- pany, C. D. 1909, 142 O. G. 1113. 2766. In order to warrant the grant of a motion to take newly-discovered evidence, it must appear that the proposed evidence is material. Id. XL. Reissue Application. 2767. Where Austin contended that Wins- low is estopped from asserting his right to the subject-matter of the issue, as claims cov- ering the matter were presented in an original application and after rejection on references were canceled. Held, that while it is well settled that claims contained in the reissue patent which were asserted in the original application, but were rejected and canceled, will not be sustained by the courts, and there- fore should not be allowed by the office, yet this question is one between tb? public and the applicant making the claims. This ques- tion of estoppel has no bearing upon the ques- tion of priority, the question for considera- • tion in an interference proceeding, and there- fore will not be considered here. (Hoeveler et al. V. Verner et al., 43 MS. Dec, 444, 448.) Austin V. Winslow, C. D. 1898, 83 O. G. 1991. 2768. Where it is contended on a motion to dissolve on the ground of irregularity in the declaration that a reissue application does not cover the same invention as the original pat- ent and this motion is denied. Held, that the question involves the right of a party to make the claim and no appeal lies from a favorable decision on that question. Holt v. Ingersoll, C. D. 1898, 84 O. G. 1873. 2769. The rules do not expressly provide for an interference between an application for the reissue of an unexpired patent and a patent granted on an application filed subsequent to the grant of the patent sought to be reissued, and it is open to doubt whether such an in- terference should ordinarily be declared. Id. 2770. Where, however, H.'s application was withheld from issue for long time in view of a probable interference with certain rejected claims in I.'s reissue application, but was finally passed to issue in view of I.'s unrea- sonable delay in taking an appeal from the rejection of his claims, Held, that I. cannot take advantage of his own delay until H.'s patent issued and thus avoid a contest on the question of priority. L'nder the circumstances the interference was properly declared. Id. 2771. Paragraph 7 of Rule 94 does not mean that an interference must be declared between a reissue application and an unexpired patent merely because the original applications were pending at the same time and the reissue ap- plicant filed an affidavit showing that he made the invention before the original application of the patentee was filed, regardless of wheth- er the reissue applicant is entitled to have his. patent reissued. It does not mean that the interference must be declared merely because the applications were pending concurrently. Boyer v. Breitenstein, C. D. 1900, 91 O. G. 1801. 2772. Before an interference is declared under paragraph 7 of Rule 94 the examiner should determine affirmatively that under all the authorities governing reissues the reissue applicant is entitled to have his patent reis-. sued. Id. INTERFERENCE, XL. 399 2773. Where a reissue application is in- volved in an interference with a patent, Held, that the application is regarded as a continu- ation of the original application and that the party is entitled to the date of that original application for a constructive reduction to practice. *Austin v. Johnson et al., C. D. 1901, 95 O. G. 2685. 2774. Where a patentee involved in an in- terference reissues his patent omitting the claims of the issue and the examiner of in- terferences renders judgment against him on the ground that he has abandoned the inven- tion, Held, that the examiner's decision will not be reviewed by the commissioner on peti- tion, since the remedy is by appeal to the examiners-in-chief. Lattig and Goodrum v. Dean, C. D. 1904, 111 O. G. 301. 2775. While it was irregular and improper to permit a patentee to reissue his patent dur- ing the progress of an interference, the ques- tion whether that reissue omitting the claims of the issue amounts to an abandonment of the invention is a matter involving the merits and is appealable to the examiners-in-chief. Id. 2776. Where an interference is declared be- tween a patentee and an applicant and during the pendency of the interference the patentee obtains a reissue patent from which are omit- ted the claims corresponding to the issue, Held, that this action of the patentee in sur- rendering to the public the right to the claims corresponding to the issue of the interference cannot be regarded in any other light than a formal written abandonment of the invention of the issue, and priority of invention as to the issue should be awarded to the applicant. (Rule 125.) Lattig and Goodrum v. Dean, C. n. 1905, 115 O. G. 505. 2777. Where during interference proceed- ings between applicant and patentee the pat- entee reissues the patent in interference with- out the interfering claims. Held, that the ex- aminer of interferences was without jurisdic- tion to render any judgment for or against cither party, as the patent office had ousted itself of jurisdiction by extinguishing the pat- ent in interference through the reissue there- of. *Lattig and Goodrum v. Dean, C. D. 1905, 117 O. G. 1798. 2778. Where during interference proceed- ings between applicant and patentee the pat- entee applies for and obtains reissue of the patent in interference and the interfering claims are omitted from the reissue and there- after decisions awarding priority in said in- terference proceeding are rendered in the pat- ent office and appeal is taken to the court of appeals. Held, that the court, equally with the various tribunals of the patent office, is with- out legal authority to render any judgment for the relief of either party and that the ap- peal must be dismissed. *Id. 2779. Rule 125 of the Rules of Practice of the patent office, if interpreted to require judg- ment to be rendered upon priority of inven- tion after the patent involved in interference has been extinguished, would conflict with the statutes as interpreted by the courts and be invalid ; but a fair interpretation of said rule does not prevent dissolution of interference without judgment of priority under such con- ditions. *Id. 2780. Where the senior party to an inter- ference is an applicant for reissue and pre- sents no evidence of possession of the inven- tion in issue at a date earlier than the filing of the junior party's application except the original application for the patent upon which the reissue application is based and the ex- aminer of interferences is of the opinion that the original application does not disclose the invention. Held, that he should make his opin- ion the basis of a judgment upon priority of invention instead of directing attention to the matter under Rule 126, as has previously been the practice. Brown v. Hodgkinson, C. D. 1906, 123 O. G. 2973. 2781. As stated by the court of appeals in Podlesak and Podlesak v. Mclnnerney (ante, 558, 120 O. G. 2127), a decision holding erro- neously that one party has a right to make claims, if not set aside, will, under conditions similar to those in the present case, result in the grant of a patent to one who is not the first inventor, and in such a case the question should not be finally determined by the pri- mary examiner who declared the interference, but should be decided by the examiner of in- terferences and made the basis of his decision on priority of invention. Id. 2782. Where it appeared in an interference proceeding between a patent and an applica- tion for the reissue of a patent that the re- issue applicant is not entitled to make the claim because it is not for the same invention intended to be secured in the original patent, the decision on priority was awarded in favor of the patentee. *Nelson v. Felsing and Fel- sing V. Nelson, C. D. 1909, 142 O. G. 289. •JOl) INTERFERENCE, XLI. 2783. Held, that in an interference involv- ing an application for the reissue of a patent the court of appeals of the District of Colum- bia has no jurisdiction to pass upon the ques- tion whether such intervening rights exist as will constitute a ground for refusing the re- issue. (Skinner v. Carpenter, 166 O. G. 1281, construed.) *Norling v. Hayes, C. D. 1911, 166 O. G. 1282. 2784. Held, that in an interference involving a reissue application the question whether such intervening rights exist as will consti- tute a ground for refusing the reissue will not be considered (citing Norling v. Hayes, 166 O. G. 1282). *Frost v. Chase, C. D. 1011, 169 O. G. 945. XLI. Renew.^l Applic.'\tion. 2785. As between an applicant resting on a mere constructive reduction to practice, espe- cially where his application is a renewal of a forfeited application, and a party who is really the first inventor and to whom a patent has been issued for the invention, Held, that pri- ority must be found for the patentee. *Chris- tensen v. Noyes, C. D. 1900, 90 O. G. 223. 2786. Ilcld. further, that the mere construc- tive reduction to practice cannot be set up to defeat an existing patent granted to the first inventor. A patent stands for something more than a mere written description of an inven- tion, and against a pending application for the same invention resting upon no better foundation than a constructive reduction to practice the patent must prevail. *Id. 2787. Noyes filed his application on May 13, 180,'>, which was allowed November 26, 1895, and became forfeited on May 26, 1896, by failure to pay the final fee. On April 30, 1896, Christensen filed his application, upon which a patent issued April 20, 1897. Noyes filed a renewal of his application on June 28, 1897, after the patent had issued to Christen- sen. Christensen proved that he was the first to conceive the invention. Noyes did not reduce to practice in any form prior to the filing of his application. Held, that priority of invention should be awarded to Christensen. (65 MS. Dec, 472, deversed.) *Id. 2788. Because Noyes, the second party to conceive, was the first to file an allowable ap- plication, which application was passed and allowed, though it became forfeited, he does not obtain a superior right to priority over Christensen upon the renewal or second ap- plication filed within the time authorized by the statutes, notwithstanding that Christen- sen was the first inventor and that within he time that the application of Noyes stood as for- feited a patent had been issued to Christensen. ♦Christensen v. Noyes, C. D. 1900, 90 O. G. 237. 2789. The forfeited application of Noyes conferred no right except that of renewal in the manner and within the time prescribed, and the renewed application conferred no right in addition to that of the first applica- tion. It certainly conferred no right as against a prior inventor who happened to file his ap- plication subsequent to that of the second in- ventor. *Id. 2790. The first applicant could only acquire an inchoate right as against a prior inventor, dependent upon it being made to appear that the first inventor had either abandoned his in- vention or lost the right to it by the want of reasonable diligence in perfecting it and mak- ing application for a patent. *Id. 2791. Whether the first application was for- feited or not, or supposing it had been re- newed before the patent was issued to the first inventor, or even if the patent had been issued on the first application, the first inventor upon showing a compliance with the requirement of the statute would be entitled to a patent for his invention, and he could not be deprived of his right of priority by any mere technical rule of procedure adopted in the patent office. *Id. 2792. After reviewing the facts in the case, Held, that Christensen was entitled to priority of invention, and the motion for rehearing denied. *Id. 2793. The description and drawings filed in the patent office as part of an application, as against an existing patent issued to the first inventor, cannot be accepted as an actual re- duction to practice. *Christensen v. Noyes, C. D. 1900, 90 O. G. 223. 2794. If such written description, illustrated by drawings, will not be allowed to defeat or affect a subsequent patent issued to an inde- pendent inventor, a fortiori will not such de- scription and illustrative drawings be allowed to defeat or affect a patent granted to the first or prior inventor after the forfeiture of an application first filed, but on a subsequent conception of the invention. *Id. INTERFERENCE, XLII. 401 2795. Generally in the case of a forfeited application and the filing of a second or re- newed application within two years, the in ventor may, under proper circumstances, be- come entitled to the original or forfeited ap- plication as a constructive reduction to prac- tice. *Id. 2796. Where an application is allowed and becomes forfeited through a failure to pay the final fee within six months and during the time that it is forfeited an application is filed by another party covering the same invention and a patent is granted thereon, Held, that in an interference between the patent and a re- newal of the first application the burden of proof is upon the applicant notwithstanding the earlier date of his first application. Asen- cio V. Russell, C. D. 1902, 99 O. G. 2321. 2797. Where an application is allowed, for- feited, and renewed. Held, that the applicant is entitled to his original filing date for a con- structive reduction to practice. Woods v. Waddell, C. D. 1903, 106 O. G. 2017. 2798. Where an application is allowed and is forfeited by a failure to pay the final fee and before the case is abandoned a second ap- plication is filed for the same invention, Held. that the applicant is entitled to his first filing date for a constructive reduction to practice of the invention. *Lotterhand v. Hanson, C. D. 1904, 110 O. G. 861. 2799. Where during the time that an appli- cation is forfeited another party files an ap- plication for the same invention which goes to patent. Held, that in an interference between the patent and a renewal of the first applica- tion the burden of proof is upon the appli- cant notwithstanding the earlier date of the first application. Lutz v. Lewis, C. D. 1904, 110 O. G. 2014. 2800. The burden of proof should not be placed upon the patentee even though his pre- liminary statement alleges a date of concep- tion subsequent to the applicant's original filing date. Id. XLII. Second .'\ppucation on Same Subject. 2801. The practice of the defeated party to an interference attempting to retry the inter- ference by filing or having filed in his behalf another application or by amending an appli- cation, and thus delaying the issue of a patent to the successful party to the first interfer- ence, cannot be too strongly condemned. Bech- man v. Wood, C. D. 1899, 87 O. G. 1073. 26 2802. Where two parties are involved in an interference and one of them files a second application containing allowable claims which the other party could make and it appears that the decision in the interference cannot settle the question of priority as to those claims. Held, that the jurisdiction of the pri- mary examiner will be restored to suggest the claims to the second party without suspending the interference. Ex parte Robinson, C. D. 1902, 98 O. G. 792. 2803. Where after a decision against him in an interference a party files a new appli- cation as a substitute for the one involved. Held, that he is entitled to take any action in the new case which he could have taken in the old and that the office cannot refuse to con- sider the new case. Ex parte Schupphaus, C. D. 1902, 100 O. G. 2775. 2804. Where an interference is in progress and one of the parties files a second applica- tion containing claims which other parties to the interference could make. Held, that action upon the second case should not be suspended indefinitely to await a deci- sion in the interference. If the claims are not patentable over the issue, they should be re- jected, and if they are materially different they should be suggested to the other parties and a second interference declared. Ex parte Robinson. C. D. 1903, 106 O. G. 1242. 2805. Where a party is involved in an in- terference and files a second application, Held, that as to the second application the subject- matter of the interference must be regarded as equivalent in force to the prior art pending a final determination of the question of pri- ority. Id. 2806. Where an application is filed contain- ing claims not patentably different from claims in another application by the same party in- volved in interference. Held, that action on the second case may be suspended; but if the applicant insists upon action upon the merits such action should be given, treating the sub- ject-matter of the interference as part of the prior art. Ex parte McCormick, C. D. 1904, 113 O. G. 2508. 2807. Where in considering an application for patent the court has ruled that the evi- dence in possession of the office showed pub- lic use of the invention for more than two years before the filing date, Held, that the of- fice is justified in rejecting a subsequent appli- cation by the same party claiming the same de- 402 INTERFERENCE, XLIII. vice on the ground of public use. Ex parte Tournier, C. D. 1904, 108 O. G. 798. 2808. Where public use is shown by testi- mony regularly taken, Held, that its effect cannot be overcome by ex parte affidavits, but only by evidence taken in the regular way. Id. 2809. An application containing process claims will not be withdrawn from issue to await the result of an interference involving a companion application containing apparatus claims. Ex parte Stuart, C. D. 1904, 113 O. G. 850. 2810. Where a party whose application is involved in interference proceedings presents another application based upon the invention involved in the interference, it is proper to re- fuse a patent upon the later application until the interference has been terminated. In such case it is just to suspend action on the later application. *In re Wickers and Furlong, C. D. 1907, 129 O. G. 2074. XLIII. Second Interference. 2811. Where an interference is dissolved be- cause the issue is not patentable and one party presents an amended claim which he asks be substituted for the issue, Held, that the re- quest was properly denied. If the new claim is patentable and the other parties make it, a new interference may be declared and the old testimony may be used under the condi- tions specified in Rule 157. Brooks v. Foote v. Wenk, C. D. 1904, 108 O. G. 287. 2812. A single interference between the same parties upon the same applications should be sufficient ordinarily, and a second interfer- ence should be necessary only under very ex- ceptional circumstances. Sarfert v. Meyer, C. D. 1904, 109 O. G. 1885. 2813. Where an interference was decided in favor of S. because of limitations in the issue, it being suggested that M. was the first in- ventor of the broad invention, and where in view of that suggestion a second interference was declared and was decided in favor of S., Held, that M. is not entitled to present other claims and contest a third interference. He is estopped, since upon entering the second interference he should have asserted all claims to the common invention which he wished to contest w'ith S. Id. 2814. The declaration of a second interfer- ence between the same applications should be necessary only in rare cases and under very exceptional circumstances. It should not or- dinarily be declared upon claims to the same device and differing from the first issue merely in scope. Corry and Barker v. Trout v. Mc- Dermott, C. D. 1904, 110 O. G. 306. 2815. The office is justified in taking the de- cision as to priority of invention as prima facie evidence that the successful party was the first inventor not merely of the particular issue in controversy, but of the invention com- mon to the two cases, whether more broadly or more specifically stated. Id. 2816. To justify a second interference be- tween the same parties upon claims differing merely in scope, the burden is upon the defeat- ed party to show special circumstances of the particular case which make it improper to apply the first decision to the new claims. Id. 2817. The question which party made the in- vention first does not become a new question merely because the invention is described in different words in a new claim. Id. 2818. Where Trout was defeated in an in- terference with Corry and Barker relating to the present invention, the issue in that inter- ference differing from the present issue mere- ly in scope, and where the decision did not turn upon the scope of the issue, Held, that Trout should not have been included in this interference. Id. 2819. A party cannot be refused the right to make a motion for dissolution in one inter- ference on the ground that the issue is not patentable merely because he has contested an interference with another party upon the same issue without making a motion for dissolution. Gray v. McKenzie v. McElroy, C. D. 1904, 113 O. G. 1968. 2820. Where if a second interference is de- clared it must be regarded as due to the fault of the successful party in the first interfer- ence in neglecting to present certain claims until after the termination of the first inter- ference. Held, that said successful party should not be heard to complain because of the declaration of a second interference. Ex parte Cramer and Haak, C. D. 1908, 118 O. G. 1068. 2821. Where upon termination of interfer- ence new claims are made by successful party that differ from the issue in other respects than in scope and the defeated party already has allowable claims relating to the same sub- ject-matter. Held, that the new claims may be INTERFERENCE, XLIII. 403 properly suggested to the defeated party under Rule 96. Id. 2822. Where the successful party to an in- terference inserts broader claims and his pat- ent issues containing those claims, Held, that the defeated party may contest the issue of priority of invention as to the broad claims upon making a prima facie showing that he invented the broad issue prior to the date established by the successful party. Wende V. Horine, C. D. 190.5, 118 O. G. 1070. 2823. Where a second interference is de- clared, Held, that the primary examiner should not on motion to dissolve attempt to decide priority as to the new issue from the evidence in the first interference, but should merely de- termine whether such prima facie case is made for the defeated party as justifies continuing the interference. Id. 2824. Held, that the presentation after ter- mination of interference of new claims for the purpose of securing a second interference and taking new proofs is objectionable and should not be permitted, as the proofs taken in the one proceeding should be sufficient to determine the question of priority as to the subject-matter common to the cases involved. Phelps V. Wormley v. McCullough, C. D. 190.5, 118 O. G. 1069. 2825. Where on a motion for dissolution on the ground of irregularity in declaration the irregularity is stated to consist in declaring a second interference on claims which one of the parties should have copied under Rule 109 in a prior interference if they wanted to con- test the same, Held, that the subject-matter for consideration is not properly presented under the head of irregularity in declaration. Corey v. Eiseman and Misar, C. D. 1906, 123 O. G. 2003. 2826. Objection that a second interference should not have been declared upon claims which one of the parties could have made under Rule 109 in a prior interference may be raised by a motion for dissolution based on the grounds designated in Rule 122 as non- patentability and lack of right to make claims. Id. 2827. Where it is contended by B. that the present interference should be disposed of by application of the doctrine of res adjudicata or estoppel by reason of the judgment in a former interference involving the same appli- cations, Held, that for reasons similar to those stated in Potter v. Mcintosh (ante, 183, ISS O. G. 1721) and Sobey v. Holsclaw (C. D. 1905, 523, 119 O. G. 1922) this question will not be considered upon appeal on priority of invention. Blackford v. Wilder, C. D. 1906, 124 O. G. 319. 2828. Where the question involved in the contention of B. relates to the patentability of the present issue over the subject-matter of the issue of the former interference, and not to the right of W. to make the claim by rea- son of the nature of this disclosure in his ap- plication, Held, that the question is not in the class indicated in Pohle v. McKnight (C. D. 1905, 549, 119 O. G. 2519), Kilbourn v. Hinner (ante, 161, 122 O. G. 729), and Podlesak and Podlesak v. Mclnnerney (ante, 558, 120 O. G. 2127), as subject to consideration in deter- mining the award of priority. Id. 2829. Held, that the primary purpose of Rule 127 and of the doctrine of estoppel in interference cases is to save the successful party in one interference the trouble, expense, and delay of again contesting the same sub- ject-matter with the same opponent, and that where B., after raising the question of res adjudicata at the proper time and exhausting his remedies without avail, proceeded to take testimony the question of right to the claim should be awarded to the prior inventor of the subject-matter of the issue as disclosed by the evidence taken. Id. 2830. Where the issue of the present inter- ference is broader with respect to the igni- ting member than the prior interference, a holding that the testimony shows that "Ex- hibit E" was provided with the igniting mem- ber of the issue of this interference is not inconsistent with the holding of the court in the former interference that said exhibit did not disclose the invention of that interference. Id. 2831. Where a second interference is de- clared between the same applications on an issue relating to the subject-matter of inven- tion as that of a prior interference, of broader scope than the first issue, and the construc- tions relied on, respectively, as evidencing con- ception and reduction to practice of the inven- tion of both issues are the same and the fun- damental facts of both cases are the same, Held, that the final decision in the first in- terference is conclusive and that the question of priority is res adjudicata unless it can be made to appear that the question upon which the determination of the second case rests is 404 INTERFERENCE, XLIII. one that neither was nor could have been pre- sented and determined in the first case. ♦Blackford v. Wilder, C. D. 1907, 127 O. G. 1255. 2832. Where judgment is rendered in an interference proceeding in the patent office holding that the issue was limited to matters not found in certain exhibits upon which a party relics for an award of priority, although such party contends to the contrary, and no appeal is taken from such holding and the case is finally decided, adversely to such party, Held, that in a subsequent interference be- tween the same parties on an issue which is the same as the prior issue, with the excep- tion that in the second interference such lim- itations were omitted, the question of priority is res adjudicata. *Horine v. Wende, C. D. 1907, 128 O. G. 2858. 2833. As to claims involved in a second in- terference between the same parties which could have been made in the first interference. Held, that a final decision in the first inter- ference on the question of priority renders that question res adjudicata. Id. Hopkins v. Newman, C. D. 1907, 131 O. G. 1161. 2834. Where in the first interference be- tween the same parties C. formally abandoned the invention specifically stated in the issue, Held, that in a second interference the issue of which is based upon the same disclosure as that upon which the issue of the first inter- ference was based judgment must be render- ed against C. upon the ground that the matter is res adjudicata. Hallwood v. Carroll, C. D. 1907, 131 O. G. 2417. 2835. The fact that no testimony was taken in the first interference does not avoid the ap- plication of the doctrine of res adjudicata to the second interference, even though the issue of the latter includes details not expressly re- cited in the first interference (citing Black- ford V. Wilder, ante, 491, 127 O. G. 12,55, and Wende v. Horine, ante, 615, 129 O. G. 28.58). Id. 2836. Where in a second interference the question of priority was held to be res ad- judicata and a decision rendered in favor of Blackford, Blackford's claims corresponding to the issue of the interference cannot be re- jected upon the ground that they are antici- pated by an exhibit introduced into the second interference by Wilder. In- asmuch as the second interference should not have been declared, the testimony taken there- in is of no force and is to be given no effect for any purpose whatever. In re Wilder, C. D. 1907, 128 O. G. 455. 2837. The court of appeals of the District of Columbia having held that a second inter- ference involving claims differing merely in scope from those involved in the first inter- ference should not have been declared, the latter will not be reopened for the purpose of allowing the issue of the second interfer- ence to be contested therein. Wende v. Hor- ine. C. D. 1907, 130 O. G. 1311. 2838. The fact that a proceeding by bill in equity under section 4915, Revised Statutes, might prove slow and expensive should not outweigh the necessity for proper and or- derly procedure in an interference. Id. 2839. Whether or not the question of pri- ority of invention is res adjudicata by reason of a judgment in a prior interference is a question which may be raised at any stage of the interference proceedings, and it is not only proper, but is the duty of the tribunal before whom the case is tried to take up and con- sider this question of its own motion where it is not raised by the parties. *CarrolI v. Hall- wood, C. D. 1908, 135 O. G. 896. 2840. Where, in an interference proceeding, after bringing a motion to dissolve the inter- ference, alleging non-patentability and non- interference in fact, and unsuccessfully con- testing the same, the senior party abandoned the invention of the issue and the patent office rendered judgment of priority in favor of the junior party, the senior party can not thereafter file an amendment to his applica- tion claiming the invention which is compre- hended in the prior issue and have the ques- tion of priority between the same parties re- adjudicated ; the decision in the first interfer- ence renders the question of priority of the more limited issue of the second interference res adjudicata. *Id. 2841. Where no appeal was taken from the decision of the primary examiner dissolving an interference on the ground that the claims in issue are not patentable and a second inter- ference was declared involving claims not es- sentially different from those involved in the former interference. Held, that the question of patentability was not concluded by the de- cision in the prior interference. *Gold v. Gold, C. D. 1910, 150 O. G. 510. INTERFERENCE, XUV, (a), (b). 405 XLIV. Statutory Bars. (a) III General. 2842. The question of a statutory bar aris- ing out of the grant of a patent to a party other than the applicant and one arising out of the grant of a patent to the applicant relate to the merits, and there is no distinction be- tween them in so far as the right of appeal is concerned. An appeal from a favorable deci- sion of the examiners-in-chief on the merits dismissed. Rule 124. (Fowler v. Dodge, C. D. 1898, 257, 85 O. G. 1584.) Sharer v. Mc- Henry, C. D. 190U, 91 O. G. 1034. 2843. Where the examiners-in-chief in their decision on priority call attention to the fact under Rule 12G that one party is not entitled to make the claims by reason of a prior patent granted to him, but the record shows him to be the first inventor. Held, that the interfer- ence should not be dissolved without deciding priority, since to do so would be to allow a patent to the other party who is not the first inventor. Jones v. Larter, C. D. 1900, 92 O. G. 383. 2844. Where a party raises the question of a bar to the grant of his opponent's claims for the first time at final hearing and the al- leged bar does not affect his own claims. Held, that the interference will not be dissolved, but the examiner directed to act on the ques- tion of a bar after the limit of appeal from the decision on priority has expired. Id. 2845. The question whether one of the par- ties to an interference proceeding is debarred from receiving a patent by reason of his hav- ing secured a foreign patent for the same in- vention is a question for ex parte considera- tion after the termination of the interference. Gueniffet, Benoit, and Nicault v. Wictorsohn, C. D. 1908, 134 O. G. 255. (b) Public Use. 2846. It is the established practice of the office to refuse to suspend interference pro- ceedings for the purpose of trying the issue of public use, since the determination of pri- ority by means of the interference already established is of as much importance as the establishment of another statutory bar by means of public-use proceedings. Tyler v. Arnold, C. D. 1898, 84 O. G. 1584. 4847. The question of public use will not be inquired into during the progress of an interference. The fact that it is alleged to be shown by the statements of the parties in interest in another proceeding in which they were involved is no ground for making this case an exception to the rule. Howard v. Hey, C. D. 1899, 86 O. G. 184. 2848. Even where the commissioner's at- tention is called to an alleged statutory bar as provided in the rule the interference will not be suspended for a determination thereof unless substantial justice demands it. Shiels v, Lawrence, et al., C. D. 1899, 87 O. G. 180. 2849. Where it appeared that a statutory bar of two years' public use existed, which would prevent the issue of a patent to Ave- yard. Held, that as no testimony had been taken by either party the interference should be suspended and the statutory bar determined. (Thomson et al. v. Hisley, C. D. 1894, 43, 66 O. G. 1596; Tyler v. Arnold, C. D. 1898, 172, 84 O. G. 1584, and Howard v. Hey, ante, 8, 86 O. G. 184, distinguished from the present case.) Sanford Mills v. Aveyard, C. D. 1899, 88 O. G. 385. 2850. To refuse to institute public-use pro- ceedings at this time and to refuse to suspend the interference would be a hardship and would add unnecessarily to the expense of both parties. Id. 2851. It being a well settled rule of law that it is within the sound discretion of a court to stay proceedings when there is another action between the same parties involving the same issues pending in a court of a sister state or in a court of the United States, by analogy the facts herein set forth warrant staying the interference proceedings in this case and the institution of public-use proceedings. Id. 2852. As Rule 126 provides for the suspen- sion of an interference proceeding by the com- missioner before judgment on priority to de- termine a statutory bar which has been called to his attention by the examiner of interfer- ences or the examiners-in-chief, there is no reason for delaying the institution of public- use proceedings in this case until after one of these tribunals has called the commission- er's attention to the existence of the statutory bar. Id. 2853. Protestants having made out a prima facie case against the grant of a patent to Aveyard, formal proceedings to establish le- gally the alleged facts set forth by protes- tants will be instituted upon certain conditions to be complied with. Id. 40fi INTERFERENCE, XUV, (b). 2854. A protest was filed against the grant of a patent to D. on the ground that the in- vention had been in public use for more than two years prior to the filing of D.'s applica- tion. M., who claimed the same invention, was put in interference with D., and his as- signee was permitted to take part in the inter- ference proceeding. A copy of M.'s applica- tion was obtained by protestants against the wish of M. Held, that it is not necessary for the conduct of public use proceedings that the protestants should have a copy of M.'s application, and the copy obtained by them should be returned to the ofhce. In re Na- tional Phonograph Company, C. D. 1899, 89 O. G. 1669. 2855. Held, further, that as protestants have filed affidavits alleging that certain machines had been made and were in public use it is incumbent upon them to prove their allega- tions by proper evidence. When this evi- dence is before the office it will judge whether the machines were in public use at the time alleged and whether the evidence is sufficient to prevent the grant of a patent. Id. 2856. Held, further, that as M.'s assignee has been made a party to the public use pro- ceeding at its request and has the right to cross-examine the witnesses produced on be- half of protestants the evidence may be used against M. in the consideration of his appli- cation on the question of patentability. Id. 2857. An interference between an applicant and a patentee is instituted merely to deter- mine whether a patent shall be granted to the applicant, and when the office discovers some bar to the grant of a patent to him not in- volving the question of priority of invention it should dissolve the interference without deciding priority. Weston v. Jewell, C. D. 1903, 98 O. G. 417. 2858. Where an applicant is in interference with a patentee and the testimony shows that his invention had been in public use for more than two years before his application and he admits that he does not desire or expect a patent, Held, that the question of priority of invention is a moot question which will not be decided. Id. 2859. Where it appears that a prima facie case of public use is made out, which if sub- stantiated would prevent a grant of a patent to Meyer, Held, that as Sarfert is a patentee and as no testimony has been taken by either party the interference should be suspended and the statutory bar determined. (Sanford Mills V. Aveyard, C. D. 1899, 129, 88 O. G. 38.').) Sarfert v. Meyer, C. D. 1902, 98 O. G. 793. 2860. Where the interference is between pending applications, the institution of public- use proceedings prior to the final determina- tion of priority is uniformly refused, for the reason that if the bar of public use or sale be established against one of the parties it might leave the road clear to the grant of a patent to the other, who perhaps might not be the prior inventor as against the debarred appli- cant. (Chinnock v. Edison v. Wheeler, 46 MS. Dec, 398.) Id. 2861. Public-use proceedings will not ordi- narily be instituted prior to the final deter- mination of priority in cases where the alle- gation of public use was based upon facts which appear by means of admissions or state- ments made in the testimony which has been taken by either party during the interference prt)cccdings. Id. 2862. Where one of the parties to an in- terference is a patentee and the other is an ap- plicant, it is for the office to determine wheth- er or not said applicant is legally entitled to the grant of a patent. This being the sole question for determination, it is incumbent upon the office to decide, in view of all the facts, what procedure is the best to pursue in the interest of all parties concerned. Id. 2863. The delay incident to establishing pub- lic-use proceedings before the final determina- tion of the question of priority is an impor- tant consideration. Where it appears, how- ever, that no testimony has been taken and that a suit for infringement of the patent which is involved in the interference is pend- ing, the question of delay is not an important one, because testimony showing priority of invention can be taken in the pending suit and this testimony can be used in the interference proceedings. Id. 2864. Where it appears from the testimony of Meyer taken in a prior interference that the invention here involved has been in pub- lic use, Held, that said testimony is only suf- ficient to establish a prima facie case and that Meyer is not estopped by reason of this sworn testimony from showing what the ac- tual facts may be. (Mead v. Brown, C. D. 1889, 173, 48 O. G. 397; Howard v. Hey, C. D. 1899, 8, 86 O. G. 184.) Id. INTERFERENCE, XLIV, (b). 407 2865. Protestants having made out a prima facie case against the grant of a patent to Meyer, formal proceedings to estabhsh legally the alleged facts set forth by protestants will be instituted upon certain conditions to be complied with. Id. 2866. Where the evidence in a party's behalf in an interference shows that his invention had been in public use for more than two years before the date of his application, Held, that the issue of public use will be formulated and the evidence will be used as the prima facie case upon that issue and the party will be permitted to recall the witnesses and cross- examine them and to produce further evi- dence. Ex parte Weber, C. D. 1902, 101 O. G. S.ITO. 2867. The testimony in an interference be- ing given in reference to the issue of priority of invention cannot be used upon the issue of public use without giving the party an op- portunity to cross-examine the witnesses upon that issue and to produce further explanatory evidence. Id. 2868. Where the evidence was given by the applicant himself and his witnesses in a pro- ceeding instituted to investigate one phase of the question whether his patent should issue no fundamental rule of evidence will be vio- lated by using it upon another phase of that question when he is given the right to recall the same witnesses and cross-examine them further in regard to that matter and produce further testimony. Id. 2869. A motion to remand an interference to the primary examiner to consider the ques- tion of public use which it is alleged is shown by the testimony in the interference denied, since that testimony relates to priority and cannot be used as a basis for rejection of claims without further proceedings. Dittgen v. Parmcnter, C. D. 1903, 103 O. G. 1164. 2870. Where on appeal the suggestion is made that the testimony in the interference shows that the invention had been in public use for more than two years before the de- feated party filed his application, Held, that the question of priority of invention should be decided, leaving the question of public use for subsequent investigation in case it becomes necessary to decide it. Winter v. Slick v. Volkommer, C. D. 1903, 107 O. G. 1659. 2871. It is contrary to the usual practice to suspend an interference between two ap- plications to investigate the question of public use of the invention. Perrault v. Pierce, C. D. 1904, 108 O. G. 2146. 2872. Where one of two applicants involved in an interference expresses a willingness to abandon the claims of the issue if public-use proceedings are instituted, but it appears that the case is ready for final hearing upon the question of priority of invention and affi- davits have not been filed making out a prima facie case of public use. Held, that the inter- ference should proceed to a decision upon the question of priority before investigating the question of public use. Id. 2873. Where an interference was suspend- ed to investigate the question of public use of the invention. Held, that it was proper to consider the testimony inter partes and to dissolve the interference on the ground that the applicant is not entitled to a patent, be- cause of two years' public use. Mills v. Tor- rance, C. D. 1904, 110 O. G. 857. 2874. Where in an interference between an applicant and patentee a showing of two years' public use is made as to some counts of the issue, but not all, Held, that the interference will not be suspended to institute public-use proceedings. Moss v. Blaisdell, C. D. 1904, 113 O. G. 1703. 2875. Where the examiners-in-chief in their decision on priority call attention to the fact that in their opinion the testimony taken in the interference shows public use of the inven- tion more than two years before the applica- tion date of any of the parties and other bars, Directed, that proceeding be suspended and the case be referred to the primary examiner for report upon the matters to which atten- tion is called by the examiners-in-chief. Nied- ringhaus v. Marquard v. McConnell, C. D. 1905, 118 O. G. 1683. 2876. Where the party defeated before the lower tribunals upon the question of prior- ity urges that a patent to the successful party is barred by public use of the invention. Held, that the matter will not be considered until the decision on priority becomes final. Doble v. Henry, C. D. 1905, 118 O. G. 2249. 2877. The rules of law as to what consti- tutes a "prior use" and what constitutes a "re- duction to practice" are the same, and as there is not sufficient proof of reduction to prac- tice so also there is not sufficient proof of "prior use." *Gilman and Brown v. Hinson, C. D. 1906, 122 O. G. 731. 408 INTERFERENCE, XLIV, (b). 2878. Where the evidence taken in an in- terference shows, in the opinion of the exam- iner, that the subject-matter of the issue was in public use for more than two years before any of the applications involved were filed, Held, that the office is not justified in con- tinuing the interference without investigating and finally determining the question of public use. Niedringhaus v. Marquard v. McConnell, C. D. 1906, 121 O. G. 337. 2879. Evidence which was presented upon the issue of priority of invention and not upon that of public use cannot be used by this office as a basis for a final determination of the question of public use without giving the parties an opportunity to take further tes- timony in explanation or rebuttal. Id. 2880. Where the examiners-in-chief, under Rule 126, call attention to the fact that in their opinion the evidence in an interference showed public use of the invention in issue for more than two years prior to the filing date of any of the parties and that the issue was therefore unpatentable, and the case is referred to the primary examiner for con- sideration and report, and he agrees with the examiners-in-chief, the fact that the primary examiner previously held the issue patentable does not present a case of conflicting deci- sions of lower tribunals which the commis- sioner should decide under the practice an- nounced in Snider v. Bunnell (C. D. 1903, 117, 103 O. G. 890). Niedringhaus v. Mar- quardt v. McConnell, C. D. 1906, 121 O. G. 338. 2881. Where the examiners-in-chief, under Rule 126, call attention to the fact that in their opinion the evidence in an interference shows that the issue is not patentable because of two years' public use, the question pre- sented is whether the interference should be stopped for the purpose of permitting the parties to present further evidence upon the question of public use, so that judgment can be rendered upon this question prior to a final determination of the question of prior- ity. Under these circumstances the case is referred to the primary examiner for his report and not for decision. Id. 2882. Where an applicant is ordered to show cause why public-use proceedings should not be instituted against him, and no showing is made save an argument that the depositions and affidavit filed do not so identify the com- plete invention of the claim as to make out a prima facie case of public use, Held, that tes- timony will be taken in regard to the question of public use. Ex parte Aston, C. D. 1906, 122 O. G. 730. 2883. Where upon consideration of the affi- davit and testimony referred to by the pro- testant it seems probable that the bar of pub- lic use of the invention exists. Held, that it is not necessary to analyze that testimony to de- termine whether it is technically sufficient if true to prove public use. Id. 2884. Where it is ordered that testimony be taken in regard to the question of public use. Held, that the protestant should promptly notify this office of the names of the witnesses and the times when and place where they will be produced for examination. Id. 2885. Where affidavits state the conclusions of the witnesses largely to the exclusion of the facts, and the facts given are not recited with particularity and certainty, and a portion of the showing made is hearsay. Held, that a prima facie case of public use is not made out. Siebert v. Bloomberg, C. D. 1906, 124 O. G. 628. 2886. Where a petition and affidavits are filed seeking public-use proceedings, but it does not appear that they have been served upon the applicant and are not accompanied by an offer to produce the witnesses nor to bear the expense of investigation, Held, that the proceeding will not be instituted. Id. 2887. Where in response to an order to show cause why public use proceedings should not be instituted against his application an applicant states that an interference is in progress involving the same subject-matter and it appears that his application was not added to the interference by reason of the progress in that interference already made when his application was filed. Held, that public use proceedings should be instituted, as a finding of public use applicable to this application would cause all proceedings upon the applications in interference and this ap- plication to terminate with the interference now pending. In re Setter, C. D. 1907, 126 O. G. 3421. 2888. The question whether the invention in issue was placed in public use by one of the parties to an interference is not one which can be raised in an interference proceeding, but is one for the consideration of the com- missioner of patents on thp final allowance of INTERFERENCE, XLV, (a). 409 the patent. ♦Biirson v. Vogel, C. D. 1907, 131 O. G. 942. 2889. Where after a decision on priority in favor of G. has become final public-use pro- ceedings are instituted in view of a protest of W. and O., the decision on priority will not be set aside in view of the testimony taken in that proceeding. Ex parte Wenzelmann and Overholt, C. D. 1908, 132 O. G. 232. 2890. The matters at issue in an interfer- ence and in public-use proceedings are differ- ent, and the testimony taken in the latter cannot be held conclusive of the question of priority of invention. Id. 2891. "Whether there exists a statutory bar of public use to the issuance of a patent to Tyberg, as is contended by appellant, is not an issue here. (Burson v. V'ogel, C. D. 1907, 669, 131 O. G. 942, App. D. C.)" Lacroix v. Tyberg, C. D. 1910, 150 O. G. 267. 2892. Where the testimony taken in an in- terference which is relied on to establish the statutory bar of public use or sale against the issuance of a patent on the application of the successful party to such interference does not show that certain samples or test devices made by the other party were offered for sale, or that if they were shown to prospective cus- tomers more than two years prior to the filing of said application preparation had then been made to manufacture the device or place it on the market, Held, that a prima facie case of public use is not made out. In re Rolfe, C. D. 1910, 155 O. G. 799. 2893. While motions to dissolve certain re- lated interferences on the ground of the ex- istence of statutory bars to the issuance of a patent on any of the applications involved were pending before the primary examiner a petition for the institution of public-use proceedings was filed which made out a prima facie case of public-use. Held, that institu- tion of public-use proceedings should be de- ferred pending the final determination of the motions to dissolve. In re United States Wood Preserving Company, C. D. 1910, 133 O. G. 271. 2894. Where a petition for the institution of public-use proceedings with reference to certain applications involved in interference is filed and a prima facie case of public use is made out. Held, that if no testimony has been taken in the interference the public-use proceedings should take precedence. Id. 2895. It is the well-established practice of the office not to suspend action in an interference proceeding where testimony has been taken and the case is ready for final hearing in order to institute a public-use proceeding. (Doble V. Henry, 118 O. G. 2249; Wert v. Borst and Groscop, 122 O. G. 2062.) Brenizer v. Robin- son, C. D. 1911, 166 O. G. 1281. 2896. Where after the filing of a motion to dissolve an interference on the ground that the issue thereof is not patentable and the opposing party has no right to make the claims the moving party filed a petition for the in- stitution of public-use proceedings. Held, that the motion to dissolve should be first heard and determined. Snyder v. Woodward, C. D. 1911, 173 O. G. 863. XLV. Suspension. (a) In General. 2897. A motion to dissolve will not operate as a stay of proceedings in any case, and the pendency of such motion does not relieve the parties from the necessity for taking testi- mony within the time set. Leonard v. Chase, C. D. 1898, 84 O. G. 1727. 2898. A separate motion for suspension should be filed and should be supported by a showing as to why a suspension is necessary during the consideration of the other mo- tion filed. Unless and until an order suspend- ing proceedings is made the requirement that testimony be taken remains in force. (Birrell V. Regan, 62 MS. Dec, 149.) Id. 2899. When a party relies on his motion being granted and thus fails to take testimony within the time set, he does so at his own risk, since he has no right to an extension of time if his motion is denied. Id. 2900. Under Rule 126 a suspension of pro- ceedings for the consideration of an alleged statutory bar is not granted as a matter of right on the part of one of the parties, but merely in the discretion of the commi<=<;ioner in a proper case in order to terminate need- less contests. Shiels v. Lawrence et al., C. D. 1899, 87 O. G. 180. 2901. Where at the beginning of the twen- ty days allowed by the rules for making mo- tions to dissolve the attorneys entered into a verbal agreement to suspend proceedings so that one of them could go abroad, and he ac- tually went abroad before the twenty days expired. Held, that the obvious intent was to postpone the making of motions as well as the taking of testimony, notwithstanding the 410 INTERFERENCE, XLV, (a). fact that the written stipulation filed in this oflfice merely referred to an extension of time for taking testimony. McKean v. Morse, C. D. 1901, 94 O. G. 1577. 2902. A party cannot be presumed to have finally determined whether or not he will make a motion to dissolve until the twenty days allowed by the rule have expired, and where all proceedings are suspended prior to that time. Held, that he has the right to make such motion after the suspension is at an end. Id. 2903. The procedure upon a suspension of an interference under Rule 128 for the con- sideration of references should follow as closely as possible that upon a motion to dis- solve under Rule 122. Macey v. Tobey v. Laning, C. D. 1901, 97 O. G. 1172. 2904. Under present Rule 128 the primary examiner should render an inter paries deci- sion as to the pertinency of the references and should not merely reject the claims in the application c.r parte. (Westinghouse v. Thom- son, C. D. 1891, 110, 56 O. G. 142, modified.) Id. 2905. Where an interference is suspended and remanded to the primary examiner to de- termine the right of one of the parties to make the claim. Held, that the examiner should render a formal decision on the ques- tion and if in his opinion he has no right to make the claim should set a limit of appeal from the decision. Hutin and Leblanc v. Steinmetz v. Scott v. Fairfax, C. D. 1901, 97 O. G. 2743. 2906. Where it is held that one of the par- ties to an interference has no right to make the claim, the other parties are entitled to ex- pect that he will appeal without unreasonable delay or if he does not that their applications will not be further delayed, and it is to the interest of all parties to know in advance what period of delay will be permitted. Id. 2907. Where a motion is brought to sus- pend proceedings after an appeal has been taken from a decision of the examiners-in- chief, Held, that as there is no limit of appeal running a suspension of proceedings in un- necessary, but that if the occasion requires it the hearing on the appeal may be continued. Robinson v. Townsend v. Copeland, C. D. 1903, 106 O. G. 997. 2908. The mere filing of a petition to the commissioner is no good reason for suspend- ing proceedings in an interference. Church- ward V. Douglas V. Cutler, C. D. 1903, 106 O. G. 2016. 2909. Where after judgment by the exam- iner of interferences certain motions are made and appeal taken thereon within the limit of appeal from the judgment. Held, that neither the motions nor the appeal operated as a stay, since Rule 123 specifically requires a separate motion for a stay of proceedings. Hocgh V. Gordon, C. D. 1904, 108 O. G. 797. 2910. Where both parties have completed their lestiraony-in-chief, the interference will not be suspended to add new counts consist- ing of claims made by one party, which claims the opposing parly is presumed to have known even before the declaration of the interfer- ence. If there is to be a contest as to them, it must be a separate interference. Newell v. Hubbard, C. D. 1904, 108 O. G. 1053. 2911. Where one of the parties to the in- terference is a patentee and he has brought suit in the courts against the other party for infringement, Held, that the pendency of such suit is no reason for suspending the interfer- ence until its conclusion. McBride v. Kemp, C. D. 1904, 109 O. G. 1069. 2912. An interference is the only proceeding provided by law for directly determining which of two claimants is the first inventor, and such interference must proceed in a reg- ular and orderly way without regard to any collateral investigation of that matter in a suit pending in the courts. Id. 2913. Where an examiner requests a sus- pension of the interference under Rule 128 for the purpose of considering the pertinency of a new reference and the interference is transmitted to him for that purpose, the ex- aminer should set a day for hearing upon a question of patentability, and after the hear- ing if he is of the opinion that the claims are not patentable in view of the references a de- cision should be rendered dissolving the in- terference upon that ground and limit of ap- peal set. If no appeal is taken and the deci- sion becomes final, the application should be then considered ex parte and the claims cor- responding to the counts of the issue should be rejected. Ex parte Struble, C. D. 1904, 109 O. G. 1335. 2914. Where the examiner in interferences suspends proceeding pending an appeal from his decision, Held, that he may modify the order of suspension even after appeal so long as he does not change the status of the parties in reference to the question involved in the appeal. Herreshoff v. Knietsch, C. D. 1904, 111 O. G. 1624. INTERFERENCE, XLV, (a). 4U 2915. Where a motion is granted to suspend proceedings pending the final determination of another motion, the proceedings are imme- diately resumed on the date upon which that motion is finally determined. Greuter v. Mathieu, C. D. 1904, 112 O. G. 2.53. 2916. Cases in this office will not be sus- pended to await the final decision of the courts upon another case where similar ques- tions are raised. Potter v. Mcintosh, C. D. 1905, 116 O. G. 1451. 2917. Where the examiner requests the sus- pension of the interference to determine per- tinency of a newly discovered reference, Held, that a decision will not be rendered as to the right of one party to see prior applications filed by the other, since this question may be- come moot by the examiner's decision. Wright and Stebbins v. Hanson, C. D. 1905, 114 O. G. 761. 2918. Where party has an application once in interference with present opponent, but now on appeal from rejection as inoperative, and it is impossible to determine what bearing the decision in the ex parte case will have upon the decisions in the interference without con- sidering entire record. Held, that the office cannot undertake to consider the entire record in advance of final hearing and that no sus- pension of the interference will be ordered. Mark v. Greenawalt, C. D. 1905, 118 O. G. 1068. 2919. When a party to an interference who has no substantial standing therein takes an unwarranted appeal. Held, that another party thereto who is identified in interest with the first-mentioned party would not be granted a suspension of proceedings pending decision upon said appeal in prolongation of previous extensive delay. Dalton v. Hopkins v. New- man, C. D. 1906, 120 O. G. 900. 2920. An interference will not be suspended for the purpose of considering the question of estoppel against one party where dissolu- tion of the interference would apparently leave the way clear to the allowance of a pat- ent to another party who may not be the first inventor. Dunbar v. Schellinger, C. D. 1906, 121 O. G. 687. 2921. Where proceedings are suspended pending the final determination of a motion brought within the twenty days, such suspen- sion does not operate to extend the period for bringing other motions, and a motion brought after the twenty days should not be transmitted, although the case is still under suspension. Moore v. Curtis, C. D. 1906, 121 O. G. 2325. 2922. The times fixed for taking testimony do not commence to run after suspension of proceedings for consideration of motions for dissolution until the cases are returned to the examiner of interferences and formal resump- tion of proceedings is noted. Hewitt v. Stein- metz, C. D. 1906, 122 O. G. 1396. 2923. Interference proceedings will not be suspended after final hearing before the ex- aminer of interferences on priority for the purpose of investigating the existence of in- tervening rights alleged to be shown by the testimony taken on priority as constituting a bar to the grant of the opposing party's re- issue application. Wert v. Borst and Groscop, C. D. 1906, 122 O. G. 2062. 2924. Where the evidence relating to pri- ority of invention is before the office and the question of a statutory bar is raised which ap- plies to but one of two applications involved in the interference and which requires for its determination consideration of evidence, and possil)ly further taking of testimony, such de- termination should be postponed until priority of invention has been settled, at least so far as the same can be settled in this office. Id. 2925. The decision of the examiner of in- terferences refusing to suspend proceedings pending a determination of contempt pro- ceedings brought in a United States circuit court for failure of witnesses to appear and testify in response to subpcena will not be disturbed where it does not appear that great hardship will otherwise ensue. Outcault v. The New York Herald Company, C. D. 1907, 126 O. G. 757. 2926. An interference relating to a machine will not be suspended and the time for open- ing the preliminary statements postponed in order that one of the parties may take out a patent upon an application covering a closely related process not involved in the interfer- ence before the existence of such application is discovered by his opponent through access to the machine application which contains a cross-reference thereto. Ex parte Field, C. D. 1907, 130 O. G. 1687. 2927. The commissioner will exercise his supervisory authority to review the decision of the examiner of interferences, refusing to suspend an interference proceeding only where it clearly appears that there has been an abuse 412 INTERFERENCE, XLV, (b), (c), XLVI. of discretion operating to the injury of one of the parties. Brown v. Inwood and Laven- berg, C. D. 1908, 135 O. G. 895. (b) For Adding New Parties. 2928. When an interference is pending be- tween two applicants on several counts, a patentee who does not claim all the counts can- not be made a party to the interference. In such cases a new interference should be de- clared between the three parties as to the counts which all claim and the old interfer- ence continued between the two parties as to the other counts. Dow v. Benson, C. D. 1903, 107 O. G. 1378. 2929. Where, after giving notice of a hear- ing on a motion to dissolve an interference, the primary examiner acquired jurisdiction of the case for the purpose of adding new parties, Held, that the notice that the case had been transmitted to the primary examiner for this purpose superseded the hearing and that the hearing on the motion should have been post- poned until it had been determined whether such new parties would be added and whether any further motions would be brought in view thereof. Whitelaw v. Eckhardt v. Koch, C. D. 1911, 163 O. G. 727. (c) New References. 2930. Where the transmission to the pri- mary examiner of a motion to dissolve is re- fused on the ground of lack of diligence in presenting it, but in the decision by the com- missioner the attention of the primary exam- iner is called to the reference upon which the motion is based for action, under Rule 128, Held, that if in the opinion of the examiner the reference does not anticipate the invention he may properly refuse to request a suspen- sion or to grant a hearing to the parties. Hagcman v. Young, C. D. 1898, 82 O. G. 1049. 2931. The "reference" referred to in Rule 128 necessarily means one that seems to the examiner to anticipate the claims of at least one of the parties, since he would not be justified in suspending proceedings and putting the parties to the delay and trouble incident thereto in view of any patent or publication which, in his opinion, is not an anticipation. Id. 2932. After a party has by delay lost his right to make a motion for dissolution the opinion of the examiner and not that of the party himself as to the pertinency of the ref- erence is to govern in determining whether a hearing shall or shall not be granted on the question. If it is held to be not pertinent, the parties have no right to be heard or to appeal from the holding. Id. 2933. A letter written by the examiner to the examiner of interferences informing him that he has considered the reference called to his attention, but docs not consider it an an- ticipation and therefore refuses to request a suspension of proceedings, is not an action in the case such as requires notice to the parties. Id. XLVI. Suggestions to Commissioner. 2934. Rule 122 means that the decision of the primary examiner on a motion to dis- solve shall be binding upon the examiner of interferences; but it does not prevent him from calling the commissioner's attention to such matters as are provided for by Rule 126. Bender v. Hoffmann, C. D. 1898, 85 O. G. 1737. 2935. That part of Rule 124 which provides that from a decision of the primary examiner affirming the patentability of the claim or the applicant's right to make the same no appeal can be taken is construed merely to prevent an appeal being taken to the examiners-in- chief by a party to the interference when the primary examiner has favorably passed upon the patentability of his opponent's claim. It does not, however, prevent the commissioner from considering any reason for dissolving an interference which might be brought to his attention or which he himself discovers. Id. 2936. Rule 126 does not authorize the com- missioner to suspend an interference only when his attention has been called to certain matters by the examiner of interferences or the examiners-in-chief, but he may suspend and dissolve an interference on his own mo- tion whenever he considers that justice and equity require it. (Fowler et al. v. Benton, C. D. 1880, 39, 17 O. G. 266 ; Von Welsbach v. Lungren, C. D. 1889, 177, 48 O. G. 537, and Bechman v. Wood, C. D. 1897, 188, 81 O. G. 2087, cited.) Id. 2937. No right of appeal exists from the refusal of the examiners-in-chief to call at- tention to the question of patentability under Rule 126, since if this refusal can be consid- ered an action at all it is a favorable decision on the question of patentability. (Schmiedl v. Walden, C. D. 1891, 150, 56 O. G. 1563.) INTERFERENCE, XLVI. 413 Benet and Mercie v. McClean, C. D. 1901, 97 O. G. 1595. 2938. The purpose of Rule 126 is not to permit parties to argue tlie question of patent- ability before the examiners-in-chief and the commissioner after a favorable decision by the examiner, for this would be in effect per- mitting appeals contrary to the provisions of Rule 124. Id. 2939. While Rule 126 provides that the ex- aminers-in-chief may, if they deem it advisable, call the attention of the commissioner to any matter not relating to priority which in their opinion establishes the fact that no interfer- ence exists or that there has been irregularity in declaring the same or which amounts to a statutory bar to the grant of a patent to either party for the claim in interference. Held, that this is not compulsory upon them, and when they decline to do so no appeal lies. Walsh V. Hallbauer, C. D. 1901, 94 O. G. 223. 2940. Rule 126 provides a way in which an interference may be terminated where newly- discovered references or reasons show that the issue is not patentable, and it would re- quire very unusual circumstances to warrant action under it where all of the facts were fully considered by the examiner before pro- nouncing the issue patentable. Benet and Mercie v. McClean, C. D. 1901, 97 O. G. 1595. 2941. Where the examiners-in-chief call at- tention under Rule 126 to a matter which in their opinion renders the interference improp- er, Held, that the commissioner will not de- cide priority until that question is settled. Snider v. Bunnell, C. D. 1902, 101 O. G. 2572. 2942. Where the examiners-in-chief decline to call attention to an alleged bar to the grant of a patent under Rule 126, their action is virtually an allowance of the claims and no appeal lies therefrom. Wilcomb v. Lasher, C. D. 1903, 105 O. G. 743. 2943. The action of the examiner of inter- ferences in refusing to call attention under Rule 126 to an alleged bar to the grant of a patent to the opposing party will not be re- viewed on appeal to the commissioner. The discretion of the examiner of interferences should not be controlled in this regard. Wert v. Borst and Groscop, C. D. 1906, 122 O. G. 2062. 2944. Whore the examiners-in-chicf in their decision in an interference upon priority of invention call the attention of the commis- sioner under Rule 126 to the fact that in their opinion the issue is not patentable and the decision becomes final by the expiration of the limit of appeal without appeal, the examiner will be directed to reject in the application of the successful party the claim correspond- ing to the issue found by the examiners-in- chief to be unpatentable. (Snider v. Bunnell, C. D. 1903, 117, 103 O. G. 890, distinguished.) Holz V. Hewitt, C. D. 1907, 127 O. G. 1992. 2945. It is not to be presumed that the ex- aminers-in-chief would form an opinion ad- verse to a party's interest and call attention to the same upon the record without careful consideration in those cases where the grounds of their opinion had already been considered by the primary examiner and held insufficient to warrant such adverse opinion. When they express an opinion under these circumstances, the same is clearly of sufficient force to bind the primary examiner and sustain his pro forma rejection of claims until the opinion is withdrawn by the examiners-in-chief them- selves or overruled by the commissioner or court of appeals in the regular course of ap- peal. Id. 2946. Rule 126 does not provide for a hear- ing by the commissioner, and no reason ap- pears why a hearing should be given to an applicant whose claims are found to be un- patentable by the board of examiners-in-chief in their consideration of the claim in connec- tion with the question of priority of inven- tion. Id. 2947. Where upon reference by the exam- iners-in-chief, under Rule 126, stating that in their opinion the issue of an interference is unpatentable, the examiner is directed to re- ject the claims in the application of the suc- cessful party, the pro forma rejection of the examiner puts the case at once in condition for a course of appeal which may be carried to the court of appeals if the application is otherwise in condition therefor. Id. 2948. The recommendation of the examin- ers-in-chief that the issue is not patentable is not a final decision of this question by them, and as the statutes provide for appeals to the court of appeals of the District of Columbia only after successive appeals have been taken to the examiners-in-chief and the commis- sioner from a second rejection of the primary examiner the question of patentability will not be reviewed by the commissioner until it has been finally passed upon by the lower tri- bunals. Serrell v. Donnelly, C. D. 1907, 129 O. G. 2501. 414 INTERFERENCE, XLVII. XLVII. Remanding to Primary Examiner. 2949. The question of apparent grounds for refusing letters patent to a party in interfer- ence is not directly a part of the question of priority, and failure on the part of the exam- iners-in-chief to call attention to such grounds is not reviewable by the commissioner. Stupakoff V. Johnson, C. D. 1898, 84 O. G. 982. 2950. While under Rule 126 the commis- sioner may before judgment on the question of priority suspend the interference and re- mand the case to the primary examiner for consideration of any matter to which his at- tention is called by the examiners-in-chief as establishing the fact that no interference in fact exists, neither the rule nor the practice contemplates such action unless the ground therefor is entirely clear. O'Rourke v. Gil- lespie, C. D. 1898, 84 O. G. 984. 2951. Where the examiner of interferences refused to consider a question of interference on the ground that the action of the primary examiner in declaring the interference is binding upon him and that he "will not for a moment attempt to disturb his action or in any manner criticise it," Held, that he took a position contrary to the purpose and intent of Rule 126, making the rule, so far as he is con- cerned, without force or effect. Wethey v. Roberts, C. D. 1898, 84 O. G. 1586. 2952. The functions of the examiner of in- terferences are not restricted to the considera- tion of the single question of priority as to the invention of the issue as drawn up by the primary examiner. Where the evidence shows that there is no legitimate interference be- tween two applications, it is the duty of the examiner of interferences, under Rule 126, upon ascertaining the facts to call the atten- tion of the commissioner thereto. Whether this be done before decision on the question of priority or not, his decision upon that question is by the rule left to the discretion of the examiner of interferences. Id. 2953. The issue of the interference not be- ing patentable to Bender the case is remanded to the primary examiner to dissolve the inter- ference and when the application of Bender comes before him ex parte to reject his claim involved in the interference. Bender v. Hoff- mann, C. D. 1898, 85 O, G. 1737. 2954. Where the examiners-in-chief call at- tention under Rule 126 to the fact that in their opinion the interference should be dissolved and upon reference to him the examiner reaches the opposite conclusion. Held, that the examiner should refer the matter with his decision to the commissioner for a final de- cision. Snider v. Bunnell, C. D. 1903, 103 O. G. 890. 2955. Where the examiner of interferences calls attention under Rule 126 to the fact that in his opinion the interference should be dis- solved and upon reference to him the primary examiner reaches the opposite conclusion. Held, that the examiner should refer the matter with his decision to the examiners-in- chief for decision. Id. 2956. While the rules do not permit an ap- peal by one of the parties from a favorable decision upon patentability, it is proper in case of conflicting opinions on that question to refer the case to an independent tribunal for final settlement. Id. 2957. Where in the case of conflicting opin- ions an interference case is referred to a higher tribunal for decision. Held, that a hearing should be granted to the parties in- volved in the interference. Id. 2958. Where an interference is remanded to the primary examiner under Rule 126 to consider whether or not the interference was properly declared. Held, that he may make use of any information available and is not confined to a consideration of facts shown by the record. Greenawalt v. Mark, C. D. 1903, 103 O. G. 1913. 2959. There is no appeal from the failure of the examiners-in-chief to recommend a dissolution of the interference under Rule 126 on the ground that one of the parties has no right to make the claim. Woods v. Waddell, C. D. 1903, 106 O. G. 2017. 29G0. Where an interference is remanded to the primary examiner to consider the pat- entability of the issue in view of a newly- discovered reference and the examiner after hearing dissolves the interference, his decision becomes final and the interference terminates unless appeal is taken within the time set. Ex parte Henderson, C. D. 1903, 107 O. G. 1661. 2961. Where an interference is referred to the primary examiner under Rule 126 to con- sider the question of dissolving the interfer- ence. Held, that the action is taken by the office upon its own motion and is not depend- ent upon the rights of the parties to demand a consideration of the matter. Judd v. Camp- bell, C. D. 1903, 107 O. G. 2527. INTERFERENCE, XLVII. 413 2962. The failure of the parties to make a motion to dissolve within the time fixed by the rule is no reason why the office should not upon its own motion consider the matter under Rule 126. Id. 2963. Where the examiner of interferences calls attention, under Rule 126, to the fact that in his opinion the interference should be dis- solved on the ground that there is such ir- regularity in the declaration thereof as to preclude the proper determination of the question of priority or on the ground that there is no interference in fact and upon ref- erence to him the examiner reaches the op- posite conclusion, Held, that the examiner should refer the matter with his decision, to the commissioner for final decision. Weber V. Hall, C. D. 1904, 111 O. G. 809. 2964. Where the examiner of interferences calls attention, under Rule 126, to the fact that in his opinion the interference should be dissolved on the ground that the issue is not patentable because of anticipation or that one or both of the parties have no right to make the claims and upon reference to him the ex- aminer reaches the opposite conclusion, Held, that the examiner should refer the matter, with his decision, to the examiners-in-chief for decision. Id. 2965. Where the examiners-in-chief award priority to an applicant in interference, but state reasons why they do not regard the issue to be patentable, and the primary examiner agrees with the examiners-in-chief and re- jects the claims, but after amendments and affidavits becomes convinced that the claims are allowable. Held, that the case should not be referred to the commissioner for decision. (Snider v. Bunnell, C. D. 1903, 117, 103 O. G. 890, distinguished.) Ex parte Allen, C. D. 1904, 109 O. G. 1071. 2966. The primary examiner is a tribunal created by law to pass upon questions of pat- entability in the first instance, and his favor- able decision will not generally be reviewed. The exception to this rule which is directed in the case of Sindcr v. Bunnell does not ex- tend to a favorable conclusion of the primary examiner based on amendments and affidavits filed subsequent to an adverse recommendation of the examiners-in-chief. Id. 2967. Where an applicant in interference with a patentee moves to dissolve on the ground that the issue is not patentable, his motion will be granted without considering the merits of the question of patentability; but where the applicant does not admit that his claims are unpatentable it is necessary for this office to consider and decide the matter for itself. Id. 2968. The office will not conduct an inter- ference as to an unpatentable issue merely because one of the parties is a patentee. It will not waste time deciding a moot question simply to avoid casting a cloud upon a patent. Id. 2969. Where a tribunal of the office calls attention to the fact that the issue is not re- garded as patentable, the office will not refuse to consider the matter because one of the parties is a patentee, but the case will be transmitted to the examiner for action under Rule 126. (Lipe v. Miller, C. D. 1904, 114, 109 O. G. 1608, distinguished.) Yarnall v. Pope, C. D. 1905, 115 O. G. 2136. 2970. Where an interference is before the primary examiner upon reference under Rule 126 after decision on priority by examiner of interferences to consider the patentability of the issue to the unsuccessful party aside from the question of priority and it is sought to prevent decision of the primary examiner on the ground that dissolution of interference at this time will prevent appeal on priority and may result in the issue of a patent to one not the original inventor. Held, that the right of the unsuccessful party to further oppose the grant of a patent to the successful party depends upon the validity of the standing of the former as an applicant entitled to patent in the event of final decision on priority in his favor and that the order sending the case to the primary examiner should not be re- voked. Newell V. Clifford v. Rose, C. D. 1905, 119 O. G. 1583. 2971. In remanding the interference to the patent office undecided for further considera- tion of the question of identity of invention. Held, that if after such consideration the office adheres to the opinion that there is an interference in fact the present interference record with any additions will be further con- sidered by the court. Podlesak and Podlesak v. McTnnerney. C. D. 1906, 120 O. G. 2127. 2972. Where the examiners-in-chief upon appeal on priority call attention under Rule 126 to the fact that in their opinion the de- vice of one of the parties is inoperative and the primary examiner, in the light of numer- ous affidavits and arguments by both parties, reaches the conclusion that the device is oper- ative and the opposing party makes no attempt 416 INTERFERENCE, XLVIII, XUX. at the hearing before the commissioner to point out any supposed errors in the exam- iner's decision and no good reason appears for doubting the correctness of the conclu- sions stated therein, Held, that these concKi- sions will be accepted as correct. Duryea and White V. Rice, C. D. 1906, 122 O. G. 1395. 2973. When it is contended that under the provisions of Rules 126 and 130 a right of appeal lies to the examiners-in-chief from the decision of the primary examiner on a refer- ence under Rule 126, Held, that these rules provide that appeals may be taken as in other cases, that the other cases referred to are those provided for in Rule 124, and that under the latter rule no appeal is permitted from the decision of the primary examiner affirming the applicant's right to make the claim. Duryea and White v. Rice, C. D. 1906, 123 O. G. 2627. 2974. Held, that the proper practice when a case is referred to the primary examiner upon suggestion by the examiners-in-chief of lack of right of a party to make claims and the primary examiner disagrees with the con- clusions of the examiners-in-chief is to refer the case to the commissioner. Id. 2975. Where the examiner of interferences called attention, according to the provisions of Rule 126, that in his opinion the issue is not patentable and upon reference the primary examiner disagreed vi\x\\ the examiner of in- terferences, whereupon the question was re- ferred to and decided by the examiners-in- chief, who affirmed the decision of the pri- mary examiner. Held, that no sufficient reason appears why the decision of the examiners-in- chief should be reviewed on petition. Munro V. Walker, C. D. 1906, 122 O. G. 2062. 2976. Where a case is remanded to the pri- mary examiner by the commissioner upon ref- erence by the examiners-in-chief under Rule 126, the primary examiner will enter a pro forma rejection of the claims. (Holz v. Hewitt, ante, 98, 127 O. G. 1992.) He may, however, in such action include any recom- mendation he may deem proper in order that the examiners-in-chief may have the benefit of his expert knowledge of the art if the case comes before them on appeal. Serrell v. Donnelly, C. D. 1907. 129 O. G. 2501. 2977. Where an interference is remanded to the primary examiner in view of a recom- mendation by the examiners-in-chief, the ex- aminer should enter a decision in the inter- ference in conformity with that recommenda- tion and should set a limit of appeal from said decision. Behrend v. Lamme v. Tingley, C. D. 1910, 151 O. G. 1013. XLVIII. Suspending Action on Other Ap- plications During Interference. 2978. An application will not be withdrawn from issue to await the termination of an in- terference involving another application by the same party when this office is of the opin- ion that the two applications cover separate and divisible inventions. Ex parte Carroll, C. D. 190.5, 115 O. G. 510. 2979. Where a divisional application is filed for purposes of interference with claims to the same specific form shown in the original case, though the claims in the divisional case are narrower than the claims in the original case. Held, that the original application will not be allowed until the contemplated inter- ference is terminated. Ex parte Gueniffet, Benoit, and Nicault, C. D. 1905, 119 O. G. 33S. 2980. Where claims of a divisional applica- tion and claims of a parent application arc readable upon the same specific form. Held, that the parent case will not be allowed be- fore termination of a proposed interference upon the divisional case merely because the claims of the parent case are broader than those of the divisional case and also read upon a species not patentably different from that of the divisional case. Id. XLIX. Stipulations and Waivers. 2981. A stipulation that S. completed the invention in June and July does not prove that he completed it before June 9, when H. filed his application. Silverman v. Hendrick- son, C. D. 1902, 99 O. G. 445. 2982. Where a stipulation was signed to the effect that the amount of molten metal in the defendant's mixer varies from nothing to its full capacity, but upon the facts being more fully ascertained notice was given by the plaintiff that the stipulation in so far as it was contrary to the evidence would be repudiated. Held, that the stipulation is not binding. **Carnegie Steel Company, Lim- ited V. Cambria Iron Company, C. D. 1902, 99 O. G. 1866. 2983. While a stipulation is undoubtedly ad- missible in evidence, it ought not to be used as a pitfall, and where the facts subsequently INTERFERENCE, XUX. 417 developed show with respect to a particular matter that it was inadvertently signed coun- sel may upon giving notice in sufficient time to prevent prejudice to the opposite party re- pudiate any fact inadvertently incorporated therein. **Id. 2984. In public-use proceedings a stipula- tion as to what a witness would testify if called, signed by counsel for the applicant and counsel for the protestant, is not effective unless approved by the patent office. Ex parte Kephart. C. D. 190.3, 103 O. G. 1914. 2985. Public-use proceedings are not to be regarded as a contest between the protestant and the applicant, but as an investigation on behalf of the public by the patent office. The approval of the patent office is necessary to make any agreement affecting the merits of the case binding. Id. 2986. Where the examiner in his decision makes a statement as to admissions and waiv- ers by counsel at the hearing. Held, that if there was error in the statement it should be corrected by rehearing before the exam- iner. The matter will not be reviewed on ap- peal. Hansen v. Wardwell, C. D. 1905, 116 O. G. 2608. 2987. Where it is alleged that there was error in the examiner's decision because of a misunderstanding as to an oral waiver made at the hearing, Held, that the error must be corrected by motion for rehearing promptly made and that it cannot be corrected long after the limit of appeal has expired. Id. 2988. The provisions in .the statutes and rules in regard to taking depositions may be waived by the opposing party, since they are intended for his benefit. Badger v. Morgan and Hopeisel, C. D. 1905, 117 O. G. 598. 2989. Objections as to informalities in de- positions should be made at the time they are taken unless the right of objection is re- served by stipulation. Id. 2990. Where it was agreed that testimony for one party should be taken in the absence of opposing counsel and it was stipulated that certain named objections were reserved. Held, that other objections were waived. Id. 2991. Where the two parties to an inter- ference file a stipulation in lieu of testimony and in that stipulation one of the parties states that he is not the inventor of the sub- ject-matter in issue, Held, that there is no reason for continuing the interference, and the examiner of interferences may render 27 judgment of priority without setting a day for hearing. Townsend v. Corey, C. D. 190.5, 119 O. G. 2237. 2992. There is no appeal from a judgment of priority rendered in view of the admis- sion of a party that he is not the inventor, and no limit of appeal need be set from such a decision. Id. 2993. Where a party to an interference, in which times for taking testimony had been set, files a motion for judgment on the record, together with a stipulation signed by the par- ties setting forth that the parties involved in the interference are the same parties who filed certain applications for foreign patents spe- cified in the oaths attached to their respective applications and in their preliminary state- ments, and judgment is rendered on the record so made by the several tribunals of the pat- ent office and by the court of appeals of the District of Columbia, permission will not be granted thereafter to such party to take tes- timony upon the question of priority of inven- tion. A submission of the case upon the stipulation after an opportunity was given to take testimony amounted to a waiver of the right to take testimony. De Ferranti v. Lind- mark, C. D. 1908, 137 O. G. 731. 2994. The filing of stipulations in uncer- tain and indefinite language which require construing by the office instead of an undis- puted statement of facts or testimony duly taken with opportunity for cross-examination cannot be too strongly condemned. Shiner v. Edison, C. D. 1909, 147 O. G. 517. 2995. Where O. was restricted to his filing date, August 8, 1906, for his date of concep- tion and constructive reduction to practice of the invention in issue, a stipulation that patterns of an article embodying this invention were made by Y. on July 3, finished articles made on July 25, sold and delivered July 29, found satisfactory and paid for September 17, 1906, Held, sufficient to establish that Y. was the first to conceive the invention and was