lamp and its base, a helical spring having one end free, and covered by the pro-
tective sheU when the lamp is in position.
8. l%e herein described means for fastening against removal an ineaudescent
lamp in its socket, comprising the lamp socket, a protective shell therefor, the
Digitized by VjOOQIC
66 DECISIONS OF THE COMMISSIONER OP PATENTS.
lamp and its base, a helical spring having one end free and covered by the pro-
tective shell when the lamp is in position, and a key adapted to enter behiBd
the protective cover to render the clutch action of the helical spring inoperative.
The references cited are: Mitsch, December 9, 1890, No. 442,589;
Kurz et ah, May 10, 1892, No. 474,667; Knowles, March 20, 1894, No.
516,824; Arnold, April 19, 1892, No. 478,373; Donally, August 18,
1903, No. 736,368; Libby, August 28, 1906, No. 829,591; Russell,
August 29, 1907, No. 869,737; Uussell, June 2, 1908, No. 889,812.
The claims were rejected by the Primary Examiner on the ground
that it was common to provide an electric lamp with a coiled spring
which locks the lamp against reverse movement, as shown in the pat-
ents to Knowles, Kurz, and Arnold ; that it was common to provide
a spiral wire inside the socket, as shown in Bussell, and that it would
require no invention to make one end of Russell's spring free or pro-
vide the socket in the devices of the other patents with a casing, in
view of the fact that the device disclosed by applicant is an old and
well-known form of lock-nut, as shown in the patents to Libby,
Mitsch, and Donally.
The Examiners-in-Chief affirmed this action, pointing out that the
locking device employed by applicant having been used for the same
purpose in nut-locks he had made merely a double use of this old
instrumentality when he employed it as a means for fastening an
incandescent lamp in its socket.
In his brief filed on this appeal appellant contends that the nut-
lock patents cited are from a non-cognate art. This contention is,
however, believed to be not well founded. As pointed out by the
Examiner, the base of the lamp corresponds to a bolt and the socket
to a nut, and, as stated by the Examiners-in-Chief —
certain devices are common to tbe arts as a whole because they are adapted for
use in many situations. A nut and a bolt are proTided with co-acting screw
threads and these also are features of an incandescent lamp and its soclcet. A
locking device which is applicable to one of these devices is therefore equaHy
applicable to the other.
To use the spiral wire shown in the nut-lock patents for conducting
the current, as in the patents to Russell, Knowles, and Kurz, clearly
would not require invention; nor can invention be predicated upon
the fact that a key must be used in order to remove the lamp from its
socket, in view of the common practice of using keys to unfasten any
kind of a locking device, an illustration of which is shown in the
patent to Libby, it being necessary to use a key to release the lock-nut
shown therein.
TJie decision of the Exanwiers-in-Chief is affirmed.
Digitized by
Google
PECISIONS OF THE COMMISSIONER QF PATENTS. 67
Ex PABTE Phelps.
Decided November 27, 191 L
176 O. G.. 525.
1. Iittebfebbnce—Fbiobitt— Judgment Bab to Claims of Losing Pabtt.
After the termination of an interference on its merits it is the judgment
that the losing party is not Che first inventor rather than the application
of his opponent that stands as a Imr to the allowance of his claims to the
InreDtion, although reference may he made to the file of the successful party
to detomlne the scope of the Judgment.
% Same — Same — Same — Unaffected bt the Abandonment or Application of
Successful Pabty.
Where an interference was decided in favor of the senior party because
of the failure of the junior party to present testimony in support of the
allegation of his preliminary statement, Held that the fact that the senior
party's application was allowed to become finally abandoned constitutes no
ground for aUowing claims corresponding to the issue of the Interference
to the Junior party.
On Petition.
electbic lamp and contbolijng-switch thebefob.
Messrs. Peirce cfe Fisher and Mr. Percy B. Hills for the applicant.
Moore, Commissioner:
Applicant has petitioned that this case, now on appeal before the
Examiners-in-Chief, be restored to the jurisdiction of the Primary
Examiner for the purpose of considering certain claims presented
in connection with the petition.
The claims presented correspond to the six counts of interference
No. 26,530, which was between this application and an application
of Wormley. In that interference priority was awarded to Wormley,
the senior party, upon the record, because Phelps, the junior party,
failed to take any testimony in support of his preliminary statement.
After the interference Phelps canceled the claims in issue, and the
Examiner finally rejected certain others, using the application of
Wormley as prior art. When the case was before the Examiners-in-
Chief on appeal from this rejection, it was discovered that Wormley's
application had become finally abandoned through failure to pay the
final fee within six months or to renew it within two years after the
notice of allowance.
The petitioner urges that under these circumstances the Wormley
application is not evidence of reduction to practice, but nothing more
than an abandoned experiment, and should not prevent the allowance
of any claims whatsoev^ to him.
The result of this contention, if sustained, would be in effect to
reverse the judgment rendered in an interference merely because of
Digitized by
Google
68 DECISIONS OF THE COMMISSIONER OF PATENTS.
the subsequent abandonment, accidental or otherwise, of the appli-
cation of the winning party. The subsequent condition of the pre-
vailing party's case, however, is believed to have no effect upon the
loser's right to a patent for the invention in controversy.
After the termination of an interference on its merits it is, strictly
speaking, the judgment that the losing party is not the first inventor
rather than the application of his opponent that stands as a bar to
the allowance of his claims to the invention. The interference record
and, in fact, the applicant's own file show that he is not the first
inventor of the subject-matter in dispute, and while reference may
properly be made to the file of the winning party to determine the
scope of the judgment, since it affects all matter which not only was,
but might have been adjudicated, {Blackford v. Wilder ^ C. D., 1907,
491;. 127 O. G., 1255; 28 App. D. C., 536,) nevertheless it is not this
application itself nor its standing in the Office which constitutes this
bar. The right of the unsuccessful party to the invention in issue is
res ad judicata by reason of the judgment which stands of record
against him.
Since, therefore, it must be held that the petitioner is barred from
obtaining a patent containing the claims submitted, it would be
useless to remand the case to the Primary Examiner for a considera*
tion of them.
The petition is denied.
In re Lewthwaite.
Decided January 11, 191S.
176 O. G., 525.
Public Use — Prima Facie Case— Insufficiency of Affidavits.
Where in support of a petition for the institution of public-use proceed-
ings only a single affidavit is filed, unaccompanied by a print drawing, or
photograph of the devices alleged to have been in public use, or a detailed
description of the same, and merely alleging a conclusion that devices iike
the one claimed by the applicant have been In public use. Held that a ptima
facie case of public use has not been made out
On Petition.
Messrs. Shepherd <t Camphell for Lewthwaite.
Moore, Commissioner:
This is a petition that a public-use proceeding be instituted for the
purpose of establishing a bar to the grant of a patent upon an alleged
application by one Frederick H. Fuller.
Digitized by VjOOQIC
DECISIONS OF THE C0MMIS8I0KER OF PATENTS. 69
In support of the petition is the single affidavit of the petitioner.
Said affidavit is to the eflfeet that petitioner is informed that Frederick
H. Fuller alleges himself to be the inventer of a certain device, that
devices like those claimed by the said Fuller to be his invention have
IcHig been in public use, citing three instances of alleged use, and that
the devices above referred to embody every essential feature alleged
by Fuller to constitute his invention.
This showing is manifestly insufficient to constitute a prima facie
showing of public use. The showing is not accompanied by any print,
drawing, or photograph of the devices alleged to have been in use nor
any detailed description of the same. It merely alleges a conclusion
of affiant that devices like that claimed by Fuller and embodying the
essential features alleged to constitute Fuller's invention have been in
public use; but it does not disclose the construction of said devi( es,
so that the Office can judge for itself whether they constitute a jyrima
facie showing of the existence of a statutory bar to the grant of any
pending application.
It is further noted that the petition is not accompanied by proof of
service upon the alleged applicant. {Siebert v. Bloomberg^ C. D.,
1906, 825 ; 124 O. G., 628 ; Booth Brothers, C. D., 1907, 140 ; 128 O. Q.,
1291.)
The petition is demed.
Hewitt v. Holz v, Hewitt.
Decided February ft, 1912.
176 O. G., 526.
InmnBENCB — ^MonoH to Dissolve — Vagueness ob Indefiniteness of the
Ooxtnts.
Where the claims in issue are perfectly dear whoi read upon the struc-
tures disclosed in the applications directly involved in an interference,
Held that these claims are not indefinite because perchance it may be
difficult to determine whether or not some other structure satisfies them.
AFFBAIi ON MonON.
VAPOB ELEOTBIC APPABATI7B.
Mr. Charles A. Terry for Hewitt.
Mr. Albert O. Davis for Holz.
BiLLiKGS, First Assistant Commissioner?
This is an appeal by Holz from a decision of the Primary Exam-
iner refusing to dissolve the above-entitled interference as to counts
2, 8, and 12 thereof.
Digitized by
Google
70 DECISIONS OF THB OOMMISSIONBB OF PATBNT8.
The motion was made to dissolve the interference as to these counts
on the ground that there has been irregularity in the declaration, the
counts being vague and indefinite. There is no contention by either
party to the interference that ihe language of the counts is indefinite
when applied to the structures disclosed in the interfering applica-
tions. In fact, there does not appear to be any ground for such con-
tention had it been made. Holz contends, however, that the language
used in the counts causes them to be vague and indefinite, for the
leason that it is —
cUfBcult to tell jost what kind of a structure wlU or will not satisfy tbese
counts.
Inasmuch as there is no question that the structures disclosed in
the interfering applications satisfy these counts, it cannot be held
that the claims are indefinite because perchance it may be difficult to
determine whether or not some other structure satisfies these counts,
which structure may or may not be proved. The principle cannot
be laid down that a claim of an application or patent which is per-
fectly clear when read upon the structure disclosed therein becomes
vague just so soon as some other structure is alleged either to embody
the invention disclosed in the application or to infringe the patent,
and the question thus presented is found difficult to determine. As
the claims are perfectly clear when read upon the structures disclosed
in the applications directly involved in the interference, there is no
reason for dissolving the interference upon the groimd of informality
in its declaration.
The decision of the Primary Examiner is afflrmed.
Ex PARTE Temple and Goodrum.
Decided November 11, 1911.
176 O. G., 626.
Res Adjudioata.
The doctrine of res adjudicata Is applied by the courts for the salutary
purpose of prevoitlng a successful party to litigation being veiM with
subsequoit litigations by the same party who contested the prior suit or by
those in privity with him over the same cause of action.
Patentability— Adtebsb Dbcisioic in Intrrfebeitce — Res Adjudioata.
In an interference inyolving applications of A., B., and G. Judgment
was rendered against A. on the record. After the termination of the inter-
ference claims were made by A. which were readable upon all three appU-
cationa Held that the question of A.'s right to a patent containing such
claims wtLBres adjudioata, notwithstanding the t&ct that these claims could
not have been added to the issue of the three-party interference in view of
a decision adverse to B. in another interference^
Digitized by
Google
DECISIONS OF THE COMMISSIONEB OF PATENTS. 71
S. Samb — Saihe — Same— Absionees.
Wbere after the termination of an Interference the assignee of the
losing party placed the claims in issue in another application owned by
said assignee at the time the interference was declared, Held that these
claims were properly refused on the ground that the right of the assignee
to a pat^it containing the same was res {idfudicata by reason of the adverse
decision in the interference.
Appeal from Examiners-in-Chief.
TKUBPHONE 8T8TE1C*
Mr. Charles G, Bvlkley for the applicants,
Tennant, Assistant Commissioner:
This is an appeal from the decision of the Examiners-in-Chief
affirming the decision of the Primary Examiner finally rejecting
claims 38, 39, 40, and 44 to 64, inclusive.
The rejection was based on the following state of facts which ap-
pear of record in this Office :
June 23, 1903, an interference. No. 22,795, Schellenger v. Dunbar
V. Clausen^ was declared, and on April 5, 1904, judgment on the
record was rendered against Clausen, who took no testimony. Subse-
quently a final award in favor of Schellenger was rendered. Clausen
was involved in this interference on application Serial No. 80,207.
June 23, 1903, an interference. No. 22,797, Schellenger v. Clatisen^
was declared and was on June 1, 1904, decided in favor of Schel-
lenger. Clausen was also involved in this interference on application
Serial No. 80,207.
March 5, 1905, an interference. No. 24,500, Temple and Goodrum
V. Clausen v. Dean^ was declared, and on April 29, 1905, judgment
against Temple and Goodrum, who failed to file any preliminary
statement, was rendered. Clausen was involved in this interference
on application Serial No. 103,943.
On May 5, 1908, an interference. No. 28,867, Temple and Goodrum
V. Schellenger^ was declared, the applications involved therein bemg
the same as those involved in the above-mentioned interferences and
the counts of interference No. 28,867 being the same as the counts of
interference No. 22,795.
The applications of Temple and Goodrum and Clausen were all
assigned to the same company. Schellenger moved to dissolve inter-
ference No. 28,867 on the ground that Temple and Goodrum were
estopped to make the claims in issue therein by reason of the fact
that these claims could have been made by all the parties to inter-
ference No. 24,500, which was decided adversely to them. The Pri-
mary Examiner denied this motion on the ground that these claims
could not have been included in interference No. 24,500 by reason
M282'— 13 8
Digitized by VjOOQIC
72 DECISIONS OF THE OOMMISSIONBB OF PATENTS.
of the fact that Clausen had been defeated by Schellenger in the
prior interference and therefore could not be allowed any claims
which could be made by Schellenger. He obtained jurisdiction of
the interference, however, for the purpose of considering the effect
of the prior adjudication in interference No. 22,795, in which judg-
ment had been rendered against Clausen, whose application was
owned by the assignee of the Temple and Goodrum application, and
dissolved the interference, holding that the common assignee was
the real party in interest and that the question of its right to obtain
a patent containing the claims in issue in the later interference, which
had also been in issue in the earlier interference, was res ai judicata.
His decision was affirmed on appeal by the Examiners-in-Chief and
by the Conmiissioner. An appeal to the court of appeals was dis-
missed for want of prosecution.
In my decision rendered February 24, 1910, it was stated that it
was unnecessary to decide at that time whether in all cases an assigaee
who had contested an interference upon the application of one
assignor would be estopped to later contest the subject-matter of
that interference upon the application of another assignor. It was
pointed out that in the present case the relations of the parties in
the two interferences Nos. 24,500 and 22,795 were such that the
American Electric Telegraph Company, the common assignee of
Temple and Goodrum and Clausen, was clearly in privity with
these parties, and therefore bound by the judgment in the prior
interferences.
Following the dissolution of interference No. 28,867 the Primary
Examiner rejected the appealed claims, which include the three cor-
responding to the issue of that interference. The grounds of the
rejection were (1) that claims 38, 39, and 40, which are identical
with the counts of interference No. 28,867 are not patentable to
Temple and Goodrum, for the reasons stated in the decisions dis-
solving that interference; (2) that the remaining claims appealed
are either identical with claims 38, 39, and 40 or not patentable
thereover. Of the second group of claims he held (a) that claims 44,
45, 46, 48 to 54, inclusive, and 61 to 64, inclusive, might have been
included in interference No. 22,795 and that as this interference was
decided adversely to Clausen the common assignee of Clausen and
Temple and Goodrum was under the doctrine of re^ adjudicata
estopped to prosecute these claims in Temple and Goodrum's appli-
cation and (6) that claims 47 and 55 to 60, inclusive, are not patent-
able over the disclosure in the Schellenger application in view of
the disclosure in the application of Dean and the application of
Clausen, No. 103,943, all of which had become prior art to Temple
Digitized by VjOOQIC
DECISIONS OP THE COMMISSIONEB OF PATENTS. 73
and Groodnim by reason of the decisions in the above-mentioned in-
terferences. He also held that the judgment adverse to Temple and
Groodnim in interference No. 24,600 was not conclusive against them
as to any claims which Schellenger could make, which includes all
the claims involved herein, since such claims were not patentable
to Clausen by reason of the fact that he had been defeated by
Schellenger in the prior interferences.
The Examiners-in-Chief affirmed the action of the Examiner, but
in reference to claims 47 and 56 to 60, inclusive, which the Examiner
had stated were readable upon the construction disclosed in the
applications involved in interference No. 24,500, said :
When the Primary Examiner noted the fact last mentioned, he need have
gone no farther, for as Judgment was rendered against Temple and €k>odrum
in interference No. 24,500, in which interference they might have had included
as counts aiq;)ealed claims 47 and 56 to 60, inclusive, it is manifest that by
virtue of the application of the doctrine of res adjudicata said claims have now
become unpatentable to them. * * * But we note again that in rejecting
appealed claims 47 and 55 to 60, inclusive, it is unnecessary to resort to inter-
ference No. 22,795, or the Schellenger application, and that the question of the
patentability of said claims to Temple and Goodrum is res adjudicata by virtue
of the fact that said claims might have been included as counts in interference
No. 24,500.
The reasons for the appeal allege no specific error on the part of
the Examiners-in-Chief except as to the applicability of the doctrine
of res adpidicata to the present case, and that is the only question
discussed in the brief. It is therefore taken, as admitted by appli-
cants, that if the doctrine of res adjudicata is applicable to the case
tiie rejection of all the appealed claims was proper.
It is believed that there was no error in the holding of the Ex-
aminers-in-Chief. This doctrine of res ^idjudicata is applied by the
courts for the salutary purpose of preventing a successful party to
litigation being vexed with subsequent litigations by the same party
who contested the prior suit or by those in privity with him over thd
same cause of action.
In the present case the assignee of Clausen had contested with
Schellenger the right to a patent containing certain claims. It has
no more right to recontest the question with Schellenger upon the ap-
plication of Temple and Goodrum, which was owned and controlled
by it at the time the prior interference was declared, than upon the
application of Clausen. Applicants have argued that Clausen was
not a mere nominal party to the first interference, but the real party
thereto, and that the fact that his application was asj^igned does not
make the assignee the real party in interest. They further argue
that, assuming that the assignee is bound as in privity with Clausen,
it cannot be bound to any greater extent than the latter, and the
Digitized by
Google
74 DECISIONS OP THE COMMISSIONER OF PATENTS.
judgment against Clausen is only that he was not the inventor of the
subject-matter in issue in the interference in which he was involved.
Unquesti(Hiably the judgment against Clausen precludes him frcMn
again contesting with Schellenger not only what was included in the
prior interference but what might have been decided therein, {Black-
ford V. Wilder, C. D., 1907, 491, 127 O. G., 1255; 28 App. D. C, 585,)
whether on the same or another applicatioji, and Clausen's assignee is
bound to the same extent. Since said assignee was the owner of the
Clausen and the Temple and Goodrum applications at the time this
interference was declared, it had as such entire control of the prosecu-
tion of these applications. When it was notified that such in-
terference would be declared either by suggestion of claims or by
notification that the Clausen claims had been suggested to another
party, the assignee could have asked to have both the Clausen and the
Temple and Goodrum claims placed in the interference, or after
the declaration of the interference it could have made the claims in
the Temple and Goodrum application and asked that it be included
in the interference. (Rule 103 provides that if any of the applica-
tions involved in an interference has been assigned notice of the
declaration of the interference must be sent to the assignee.) Having
thus control of these applications, it must be held that the assignee,
whether regarded as the real party in interest or in privity with the
actual party thereto, is estopped to further contest with the moving
party the subject-matter of such interference or what might have
been decided therein. (See Mower v. Duell, C. D., 1899, 395; 88
O. G., 191; 15 App. D. C, 144.)
Moreover, as pointed out in my decision of February 24, 1910, in
view of the various interferences in which these parties have been
involved there was clearly such a privity between Clausen, Temple
and Goodrum, and their common assignee that the latter is estopped
to prosecute in the Temple and Goodrum application the claims as
to which judgment was rendered adverse to Clausen in the interfer-
ence with Schellenger.
It is also argued that the " claim or demand " in the interference
between Temple and Goodrum and Schellenger is not the same as
that in the interference between Clausen and Schellenger. It is
stated that the test of identity of cause of action is the idenity of
facts essential to maintain them, and it is pointed out that proof
that Temple and Goodrum were the first inventors would not have
altered the result in the interference between Clausen and Schellen-
ger, since proof that a third party, a stranger to the proceeding,
made the invention is not admissible for any purpose.
But the " claim or demand " in the earlier interference was a pat-
ent containing the claims in issue, and if the assignee of Temple and
Digitized by
Google
DE0I8I0K8 OF THE COMMISSIONEB OF PATENTS. 76
Goodrum had caused their application to be placed in the interfer-
ence the testimony as to their invention would have been material.
The conclusion of the Examiners-in-Chief that the judgment in
interference No. 24,500, adverse to Temple and Goodrum, precludes
them from contending for any claim readable upon the structures