1908, upon an application filed August 9, 1907. Huff's application
was filed April 28, 1909. His application having been filed after
the grant of the patent to Gulick, it is incumbent upon him in order
to prevail to establish his ease beyond a reasonable doubt.
Huff alleges conception, the makii^ of drawings, and disclosure in
July, 1906, and reduction to practice in March, 1907. The Examiner
of Interferences found that Gulick had established a conception prior
to the earliest date claimed by Huff and that Huff had not established
a reduction to practice prior to Gulick's filing date. No serious con-
tention is made on behalf of Huff that this finding as to Gulick's date
of conception is not correct. In fact, on appeal from the decision of
the Examiner of Interferences the only error assigned, save the gen-
eral one of error in awarding priority to Gulick, was that the Ex-
aminer of Interferences erred in holding that Huff had not estab-
lished reduction to practice prior to Gulick's filing date, and this was
the only point considered in the decision of the Examiners-in-Chief.
It may therefore be taken as established that Gulids was the first to
conceive the invention.
The inventi<Mi in issue relates to a casing for transmission-gear
designed for automobiles. Counsel for Gulick contends that the
invention relates primarily to the means for retaining the oil in its
casing, which consists in providing the main casing with inwardly-
extending sleeves, or, as stated by him in reply to an objection to the
cross-examination of Huff, (Huff's record, p. 19,) that this is the
novel or vitalizing feature of the claim of the issue. On the other
hand, it is argued in behalf of Huff that, as appears from the record of
Gulick's patent, the feature which rendered the claim patentable is —
end casings detacbably fastened to the exterior of said main casings.
The claim is, however, for a combination and must be considered
as such, and in order to determine whether the invention in issue ha5?
been reduced to practice it is necessary to decide whether this com-
bination was reduced to practice and not whether any element thereof
is such that by itself the mere making thereof would constitute a
reduction to practice. This was the position taken by counsel for
Huff during the taking of testimony, as appears from the following
statement, (Huff's record, p. 20:)
By Mr. Watson: Ck)nnsel for Huff does not agree that the claim in issue is
dependent upon any so-called " novel or vitalizing feature." The claim on ita
M282'*— 13 ^10
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104 DECISIONS OF THB COMMISSIONBB OF PATENTS.
face and in fact is for a .novel combination and arrangement of a number of
elements.
According to Huff's testimony he conceived the invention in the
summer of 1906, had drawings made during the latter part of that
year, and in the early part of the year 1907 certain experimental
"bridges,'' as the rear-axle construction comprising the ii^vention
in issue is termed, were assembled. He further testifies that these
bridges were placed on cars for experimental purposes, that one of
them was run from Detroit to Pontiac, and that one of them started
from Detroit to Buffalo on a test run, which ended on March 30,
1907. He also testifies that the construction shown in his applica-
tion was embodied by the Packard Motor Car Company in its 1908
models, which were delivered to dealers in July, 1907, the first de-
livery taking place on July 80, 1907.
There is no testimony corroborating Huff as to any of the experi-
mental runs except that known as the Detroit-Buffalo run. It ap-
pears from the testimony that the bridge broke between Detroit and
Toledo, that a new bridge was put in at Toledo, and the run was
never finished, the car returning to Detroit. Both the Examiner of
Interferences and the Examiners-in-Chief held that this test did
not establish a reduction to practice of the invention in issue.
It is contended on behalf of Huff that this device is such that its
mere construction constituted a reduction to practice.
It appears that one of the objects of this invention was to prevent
the escape of the lubricating-oil along the axle, and according to
Huff's testimony a further object was to make a stronger housing
for the differential gearing.
I agree with the lower tribunals that this invention is not such
that it could be determined from a mere inspection thereof that it
constituted a reduction to practice, but is one of those inventicms
that requires a test to establish whether it was such or not.
In discussing this question the Examiners-in-Chief state :
In deciding whether an Invention is of such a simple character that reduc-
tion to practice can be predicated npon an untested construction, the qnestion
is not whether an expert would feel satisfied, from a study of the principles
of the invention as they might be gathered from drawings as well as from a
full size device, that the Invention was capable of embodiment in a practical
form. Such is the test in determining whether drawings and speciflcationfl
filed in the Patent Office may be given effect as constructive reduction to prac-
tice. But the question, when deciding whether a device is of such simple char-
acter that reduction to practice may be predicated thereon without any test
thereof, is whether those sliilleil in the art could be certain from an inspection
•of the actual device that that particular device would not fail when tested. If
there is any room for doubt a test is necessary, and this is truewhen the doubt
is whether the embodiment is mechanically sufficient as well as when the doubt
Is whether the alleged invention is sound in principle.
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DECISIONS OF THE COMMISSIONER OF PATENTS. 105
We think that an inspection of the bridges assembled by the Packard Rioter
Car Company in the spring of 1907 did not inform the engineers of the com-
pany that these bridges were satisfactory in principle, or that these bridges
would not break when tested through some weakness or defect in their cou-
stmction. This conclusion is borne out by the fact that the engineers con-
sidered it necessary to make experimental bridges and to make tests of the
same before proceeding with the construction of cars for commercial purposes.
It does not appear from any testimony in this case whether the
device was satisfactory in preventing the escape of oil. So far as
the strength is concerned it is not shown whether it was due to
weakness of the device that it broke or whether it was merely because
of an accident due to the peculiar condition of the roads at that
time; nor does it appear anywhere, except in Huff's testimony, that
no changes were made in the bridge after this test.
It is argued on behalf of Huff that his testimony as to the success
of this device is corroborated by the testimony of Morgan and
Bertoli, who when asked if they could mention any difference in con-
struction between the bridge used on this trip and the prior bridge
referred to the fact that the latter had the webs on the outside,
whereas the experimental bridge was round on the outside and had
the ribs on the inside. They do not testify, however, that there
were no other differences; nor do they testify that the bridges which
were put in the 1908 models were in all respects like the experi-
mental bridge, or if different in what that difference consisted.
If it had been established that all the cars put out by the Packard
Motor Car Company after July, 1907, embodied the invention in
L«?sue, that might be sufficient to justify a holding that bridges like
the experimental bridge had been further tested and found satis-
factory prior to Gulick's filing date; but there is no such testimony
in the record, save that of Huff himself, and it is too well settled to"
need the citation of decisions that reduction to practice cannot be
based upon the testimony of the inventor alone.
The publications introduced in evidence by Huff do not show the
mvention in issue, since they show only the exterior of the bridge.
It must be held, therefore, that Huff has failed to establish beyond
a reasonable doubt that he reduced the invention of the issue to prac-
tice prior to Gulick's filing date.
In view of this holding it is unnecessary to consider whether
Huff derived his knowledge of the invention from Gulick, as claimed
by the latter, or whether, if it should be held that Huff had estab-
hshed a reduction to practice in March, 1907, Gulick would not still
be entitled to an award of priority on the ground that he was first
to conceive the invention and was diligent in reducing it to practice
at the time Huff entered the field and subsequently thereto.
The decision of the Examiners-in-Chief is affirmed.
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106 DECISIONS OF THE COMMISSIOHEB OF PATEKT8.
Cramer and Hodge v. Carrier.
Decided January IS, 1912.
177 O. G., 709.
1. Interference — Preliminary Statement — ^Amendment — ^Iatters or Record.
It is well settled that where an amendment sought to be made to a pre-
liminary statement merely sets up matters of record or the dates of appli-
cations on file in the Patent Office the rule respecting the showing reQuised
is applied less strictly.
2. Same — Same — Same — Discretion of the Examiner of Intufbrsngks.
The question of amending a preliminary statement is largely within the
discretion of the Examiner of Interferences, and his decision on this ques-
tion will not be disturbed unless it is shown that such discretion has been
abused.
Appeau3 on Motions.
humidity \nd temperature regulatob.
Mr. D. O. Reinohl and Mr. H. G. Kimball for Cramer and Hodge.
Messrs. Wilhehn^ Parker cC? Hard for Carrier.
Moore, Commissioner:
This case is before nie upon appeals by both the parties to the
above-entitled interference.
Cramer and Hodge appeal from the portion of the decision of the
Examiner of Interferences denying their supplemental motion to
amend their preliminary statement in respect to the dates of dis-
closure and the making of drawings of the invention of 'count 1.
The party Carrier appeals from the portion of the decision of the
Examiner of Interferences granting the motion of Cramer and
Hodge to amend their preliminary statement as to the date of con-
structive reduction to practice of count 1 of the issue.
The original preliminary statement of Cramer and Hodge alleged
conception of the invention in March, 1906, disclosure in June, 1906,
and in February, 1909, and reduction to practice in August, 1909.
Their first motion, filed x\pril 25, 1910, requested permission to
amend their preliminary statement to allege a constructive reduction
to practice on December 26, 1907, by reason of their filing on that
date application Serial No. 408,049, which is referred to in the speci-
fication of their application involved in interference. They filed a
supplemental motion on May 6, 1910, to further amend their pre-
liminary statement by alleging the commencing of sketches and
working drawings on May 27, 1907, and their completion prior to
June 14, 1907, also disclosure to others on May 27, 1907.
In support of each motion is an affidavit of Kimball, the associate
attorney. Said affidavits state that while affiant was abroad a letter
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DBCI8I0KS OF THE COMMISSIONER OP PATENTS. 107
was received asking him to take charge of the above-entitled inter
ference; that he did not return until April 5, 1910, when he took up
the matter at once, prosecuted it diligently, and on April 27- 1910^
filed motions to dissolve the interference, to shift the burden of
proof, and to amend the preliminary statement; that the first mo-
tion to amend was hastily prepared from the facts definitely in hand
and that the delay in filing the second motion to amend was due to
the necessity of his clients examining their records to ascertain the
dates th^e alleged.
The record shows that action on the motions ta amend was deferred
by the Examiner of Interferences and the motion to dissolve was
transmitted to the Primary Examiner. The interference was re-
formed by the Primary Examiner as to counts 2 to 8, inclusive, and
consequently the motioBs to amend apply only to presMit count 1.
In the new preliminary statement called fo^ r^pecting counts 2 to 8
Cramer and Hodge allege the dates that they now seek to insert by
amendment in their original preliminary statement.
The Examiner of Interferences granted the motion to amend the
preliminary statement by- inserting that the invention was construc-
tively reduced to practice^ on. December 26, 1907, by reason of the
filing of Cramer and Hodge^ prior application, Serial No. 408,049,
on condition that it can be shown that said application contains the
invention in issue. He further held that the showing was insufficient
to warrant the granting of the motions to amend the preliminary
statements in the other particulars noted above.
Respecting the appeal of Carrier attention is called to the fact that
it is well settled that the question of amending the preliminary state-
ment is a matter largely within the discretion of the Examiner of
Interferences and that his decision will not be disturbed unless it is
shown that such discretion has been abused. (^Karpenstein v. Hertz-
herg, C. D.. 1907, 106; 127 O. G., 2398,)
It is well recognized that where the amendment sought to be made
to the prel:minary statement merely sets up matters of record or- the
dates of applications on file in the Patent Office the rule respecting
the showing required is applied less strictly. In the case of Emmet v.
PvUagar, (C. D. 1905, 52; 114 O. G., 1551,) where it was desired to
amend the preliminary statement to obtain the benefit of the date of
filing of an application on which a patent had issued, the Commis-
sioner said :
This patenl constltates a printed publication of the inTention coTered thereby,
and, as held in Da^>i8 v. Oisumpaugh v. Garrett, (C. D., 1903, 198; 104 O. G,
2440,) where an amendment is sought to be made to a preUmlnary stateniem
bj the insertion therein of a reference to a printed publication the showin^:
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108 DECISIONS OF THE OOM&USSIONEB OF PATSKT8.
usually required regarding the ameadmeut of preliminary statements shoald
not be applied with too great strictness.
It is to be noted that If the statement is not amended ns requested with re-
gard to this patent Fullagar will be umible to utilize whatever he might be nble
to show as to the disclosure of his own invention in this patent Whether he is
able to establish such a disclosure should not l>e decided on a motion to amoid
a preliminary statement, as this question cannot be properly determined in the
absence of testimony regarding that disclosure. In the case of Davis t. Ocum-
paugh V. Garrett, »upra, it v^as said :
" The puriH>se of requiring preliminary statements made in ignorance of the
dates of the opposing parties is to avoid the temptation to witnesses to make a
case which will overcome that of the opposing parties. The t^nptation to
fraud may be great where the difference in dates is slight and where the case
depends upon the recollection of witnesses. In the case of record evidence, how-
ever, like the publication in this case, the reason for a statement made iu
secrecy has 'ess force. The publication is something which is fixed and certain
both as to date and subject-matter and is not dependent upon the recollection of
fallible witnesses. Under such circumstances the rule requiring that the utmost
diligence be shown to have been exercised in preparing the original statement
may be applied with less strictness,"
Applying to this case the principles therein announced, the motion to amoml
with respect to the filing of the application on March 5. 1900, which resulted Id
the grant of Patent No. a'i5,414, should have been granted.
No error is found in the decision of the Examiner of Interferences
permitting^ the amendment from which Carrier has appealed.
In consi.iering the appeal of Cramer and Hodge it is noted that
by the amendment to their statement they do not seek to advance the
date of conception nor of their first disclosure, but merely the date of
the making of drawings with respect to the invention of count 1 to
correspond with the allegations in their subsequent preliminary state-
ment as to the invention of counts 2 to 8, based upon their prior appli-
cation, Serial No. 408,049. To restrict Cramer and Hodge to the
allegations of their original statement concerning this count might
result in an award of priority in favor of one party as to the inven-
tion of count 1 and to the other party as to the invention of the re-
maining counts and result in much confusion in case these inventions
do not patentably differ. Drawings of the invention of application
Serial No. 408,049 obviously must have been made at a date prior to
the filing of said application, and under the circumstances of this
case it is considered proper to admit the amendment to the statement
as a whole^ subject to the same conditicms as that upon which the
Examiner of Interferences granted the amendment respecting the
constructive reduction to practice — namely, that said prior applica*
tion be shown to contain the invention in issue.
Except js indicated above the decision of the Examiner of Inter-
ferences is affirmed.
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DBCI8I0KS OF THE COMMISSIONEB OF PATENTS. 109
Walter Baker & Company, Ltd., v. Worth.
Decided January 6, 1912,
177 O. G., 770.
Tbadb-Mabks — Caitcexation — Reoistbations Unbeb the Act of 1870.
A petition for the cancelation of a trade-mark registration effected under
the law of 1870 Held properly dismissed, since such registration was
granted for a period of thirty years, and therefore if valid would have
expired before the petition for cancelation was filed.
Appeal from Examiner of Interferences.
TBADE-MABK FOB TEA AND COFFEE.
Messrs. Putnam, Putnam <& Bell for Walter Baker & Company,
Ltd.
Messrs. Munn dk Co. for Worth.
Moore, ComnUssianer:
This is an appeal by Walter Baker & Company, Ltd., from the
decision of the Examiner of Interferences dismissing its application
for cancelation of trade-mark registration No. 842, granted May 28,
1872, to J. G. Worth.
The Examiner of Interferences dismissed the application of ap-
pellant without forwarding a copy thereof to the registrant and
without further proceedings in the case for three reasons, stated in
his decision as follows:
1. The act of 1870 under which the registration referred to was granted was
declared unconstitntional by the Supreme Ck)urt of the United States in the
Trade-Mark Cases, (C. D., 1879, 619; 16 O. G., 999; 100 U. S., 82.) There was
therefore no valid registration under that act and nothing of any effect ever
existed or remains to be canceled.
2, Even had the registration been a valid one under a valid act it would have
expired May 3, 1902, since the Act of 1870 provided that registrations should be
effective for thirty years unless renewed. There was no renewal of the regis-
tration here involved. Having expired, nothing remains of the registration te
be canceled.
8. In the case of Funke v. Baldwin C. D., 1907, 73 : 127 O. G., 392 ; the Com-
missioner held: "that section 13 of the act of 1905, providing for the can-
elation of trade-maric registrations, applies only to those registrations mada
onder that act."
As stated by the Examiner of Interferences, the Trade-Mark Act
of July 8, 1870, was held unconstitutional because not limited to the
registration of trade-marks used —
in commerce with foreign nations, and among the several States or with the
Indian tribes,
by the United States Supreme Court in the Trade-Mark Cases^
(C. D., 1879, 619; 16 O. G., 999; 100 U. S., 82.)
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110 DECISIONS OF THB COMMISSIONEB OF PATENTS.
Registrations under the act of 1870 are not considered by the
Patent Office a bar to the registration of a trade-mark under the
present Trade-Mark Act. {Ex parte Havana- American Company ^
C. D., 1908, 61; 132 O. G., 1839.)
Section 78 of the act of 1870 provided that registrations thereunder
should remain in force for thirty years, with a right of renewal oo
application made six months prior to the expiration of the registra-
tion. Inasmuch as the registration of Worth was granted in 1872 for
a term of thirty years and was not renewed, the registration, had it
been a valid one, would have expired in 1902. Since the certificate
of registration of a trade-mark, like a patent grant for an invention,
is issued for a definite term, it necessarily follow* that after the ex-
piration of that term there is no valid existing registration on which
a judgment for cancelation can operate.
Since the Worth registration is not a valid existing registratioBy
the Examiner of Interferences rightfully dismissed the application
for cancelation.
The decision in the case oiFunke v. Baldwin, (C. D., 1907, 73; 127
O. G., 392,) cited by the Examiner as his third reason for dismissing
the application, discussed and passed upon registrations only under
the Trade-Mark Acts of 1881 and 1882 and under the act of 1905.
It reached the conclusion that section 30 of the latter act exempts
registrations under the acts of 1881 and 1882 from the operation of
the cancelation section of the act of 1905. It apparently recognized
the fact that no valid registration existed under the act of 1870.
Moreover, in the case of De Ferranti v. Lindm^rk (C. D., 1908,
353; 134 O. G., 515; 30 App. D. C, 417) the Court of Appeals of the
District of Columbia said :
It is a genera] rule of statutory constrnction that, in the absence of language
in a statute clearly expressing an intention to the contrary, statutes wUl be
construed prospectively.
In view of the conclusion reached above, that there are no valid
existing registrations under the act of 1870, it is unnecessary to con-
sider whether the cancelation section of the present act could be
construed retroactively to cover them.
The decision of the Examiner of Interferences is affirmed^
Le Brou v. Nix.
Decided August 2, 1911.
177 O. G., 771.
1. Applioatioh — Renewal — Attobwey of Record Has AuTHORmr to File.
Heid that the attorney of record in an application which was allowed
and became forfeited has authority to sign and file a petition for tbe re-
newal of the same.
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DECISIONS OF THS OOMMI8SIONBB OF PATENTS. Ill
2. INTESFEBENCE— PRIOBITT.
Priority Held properly awarded t© N., the senior party, since the Junior
party did not allege a date of invention prior to tbe original filing of N.'s
application which became forfeited and was renewed.
On Priority^
PBOOESS OF ABTIFICIAL INCUBATION.
Mr. J. WaUer Douglass for Le Brou.
Mr. James Z. Hopkins for Nix.
BHiLiNGS, First Assistant Commissioner:
This is an appeal l^ Le Brou from thB decision of the Rzaminers-
in-Chief affirming the decision of the Examiner of Interferences
awarding priority of invention to Nix.
Jud^pnent was rendered against Le Brou by the Examiner of In-
t^ferences because the date of conception alleged in his preliminary
jitatement was subsequent to the filing date of Nix, and no cause was
shown why such judgment should not have been entered. Le Brou
had previously brought a motion to dissolve the interference on the
ground that Nix has no right to make the claiixke; but this was denied
by the Primary Examiner.
Le Brou is now urging the same contention at final hearing under
Rule 130. The ground upon which he contends Nix has no right to
make the claims is that his application, which is a renewal applica-
tion, is legally insufficient by reason of the fact that the petition for
renewal was signed by the attorneys of record rather than by the
applicant himself, that it failed to make the original petition and
power of attorney a part of the renewal papers, and was accompanied
by no new power of attorney.
The original power of attorney in this case gave the attorneys
authority, among.other things —
to tiaiiBafct a]l business 4n tbe Patent Office connected berewitk.
Such language has been specifically held, in ea? parte Agee^ (C. D.,
1902, 399; 101 O. G., 1609,) to give the attorney authority to sign
and file the petition for renewal of such application. That decision
overruled in terms the holding in the case of ex parte Thomas (C. D.,
1900, 116; 92 O. G., 1085) and ex parte^Barri, (C. D., 1901, 177; 97
O. G., 1176,) which were the authority for a contrary practice then