existing. The reasons for the conclusion reached are fully and ably
stated in the decision in ex parte Agee, supra^ and need not be here
repeated. The case is squarely in point and is believed to correctly
^iitate' the law- on> this queafcioB. Furthermore^ the Office has now fol-
Vlowed the practice there indicated for many years, and numerous



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112 DECISIONS OF THE COMMISSIONEB OF PATENTS.

renewal applications have been filed in accordance therewith and
patents thereon granted. Under these circumstances it would not be
held that the practice was erroneous unless it were shown to be clearly
in contravention of the law. This the appellant has not done.

The objection that the petition for renewal did not mention the
original petition as one of the original papers which it was desired
to have used in the renewal is also wholly without force, for the
i-enewal petition itself supplied this element of the application. It
was exactly in the form suggested in Form 12 accompanying the
Rules of Practice and contained all the necessary features of such a
petition.

I agree also with the suggestion of the Examiners-in-Chief that
if a bare request for renewal accompanied by the fee had been re-
ceived the Office would properly assume that the applicant intended
to avail himself of all the privileges of Rule 176, which provides
that—

the oath, petition, specification, drawing and model of the original application,
may be used for the second application.

In either view of the case, therefore, the application is not without
n petition and is considered to be in proper form to constitute a com-
plete and valid application. To hold that it is fatally defective
because the original petition is not particularly specified as one of
the original papers to be used, although Rule 176 states that it may
be, would be to force a strictness of interpretation upon the rule to
which I cannot give my assent.

It may be noted here that the form of the renewal petition in this
case is identical with that filed in the case of ex parte Agee^ supra.
as appears from an inspection of the file of that application, although
appellant seems to have attempted to differentiate between the cases
in this respect.

Since the renewal of Nix is valid and sufficient for the purposes
of this interference, it follows that priority was properly awarded
to him cm the record.

The decision of the Exarmners-in-Chief is ajjirmed.



Ex PARTE MOORB.

Decided March 31, 1910.

177 O. G., 772.

Patehtabiutt— Pad foe AurinoiAL Teeth.

Claims for a pad to be worn between the gunui and a plate for artificial
teeth Held unpatentable over the prior art.

Appbal from Examiners-in-Chief.



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DECISIONS OF THE COMMISSIONER OF PATENTS. H3

PAD FOR ABTIFICIAL TE£TH.

Messrs. Mintum db Woemer and Mr. Ernest W. Bradford for the
applicant.

Tknnant, Assistant Commissioner:

This is an appeal from the decision of the Examiners-in-Chief
6nally rejecting the claims of this application, five in number, which
are as follows :

1. A soft elastic pad or cushion of cotton to be worn between the gums and
plates of artificial teeth.

2. The combination with a plate for artificial teeth of a pad or cushion of
cotton interposed between said plate and the gums.

8. A pad or cushion to be worn between the gums and lower plate of artificial
teeth comprising a roll of cotton reduced in thickness at its middle portion to
facilitate the bending of the roll Into U -shape to fit the contour of the plate.

4. As a pad or cushion to be worn betwe^i the gmns and the lower plate of
artificial teeth^ a roll of cotton reduced in thiclcness at its middle portion to
facilitate the bending of the roll Into a U-shape to fit the plate, the ends of said
roll being also reduced In thickness.

5. A pad or cushion for artificial teeth comprising cotton formed into a roll
and bent Into a U-shape to fit the plate for the teeth, the ends of said roll
being reduced in diameter.

The reference cited is a patent to Stapleton, March 28, 1893, No,
494^93.

The alleged invention, as set forth in claims 1 and 2, comprises a
pad or cushion of cotton to be worn between the plates of artificial
teeth and the gums of the wearer. As set forth in claims 3, 4, and 5,
lI comprises a roll of cotton of reduced thickness at its middle portion
•adapted to fit the contour of the lower plate.

The patent to Stapleton discloses a flexible pad, " preferably of silk
or similar fibrous material," adapted to be placed between a plate and
the gums or the roof of the mouth, it being pointed out in the speci-
fication that —

the construction of pad itself and manner of securing it to the plate are matters
which may be varied to suit Individual cases without departing from the
spirit of my invoition, and In some Instances I have found the device to work
perfectly without even securing the pad to the plate

The disdoeure in this patent clearly covers the alleged invention
as stated in claims 1 and 2. As stated in claims 3, 4, and 5, the ap-
pellant's invention is restricted to a roll adapted to be used in con-
nection with the lower plate. Such a construction is not believed to
involve invention, especially in view of the disclosure in the Stapleton
patent and the common use of rolls of cotton in the art of dentistry,
as admitted by the applicant in his argument before the Examiner.

The particular form of the roll set forth in these claims is one which
is obviously necessitated by the form of channel of the lower plate.



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114 DECISIONS OF THE COMMISSIONER OP PATENTS.

Furthermore, it is obvious that any irregular depression formed by
the receding of the grnns after the plate was made would necessitate
a somewhat diflferent form of cushion. To construct a roll suitable
to the exigencies of a particular case would, in my opinion, involve
nothing more than the ordinary skill of persons familiar with the art
of -dentistry or, indeed, of a layman.

Several affidavits of dentists have been filed which state that, to
the best of the knowledge of the affiants, no device such as appdlsuit's
invention has been employed in the art of dentistry. Even if this
be true it is not believed that the production of the applictjsyt's struc-
ture involved the exercise of the inventive faculties.

The decision of the Examiners-in^hief is <xfp/rmed.



Madame Irene v. ScHWEiNBUROb

Decided January 9, 191t*

111 O. G., 1043.

1. Trade-Marks — Abandonment.

It is well settled that the mere non-use of a trade-mark does not establisb
abandonment thereof, but that one who contends that the mark has been
abandoned must establish that the original owner of the mark not only
discontinued its use but intended to abandon the same. (BaffUn et al v.
CuBeMer, C. D., 1911, 562; 169 O. G., 449; 221 U. S. 580, and casen therein
cited.)

2. Same — Interference — Right of Junior Party to Registration.

Registration Held properly refused the Junior party, since the senior party
was the first to adopt and use the mark In Issue and the evidence did not
establish that he had lost his rights thereto by abandonment
On Appeal.

trade-mark for corsets.

Messrs. Roherfson rfe Johnson for Madame Irene.
Mr. C. P. Ooefel for Schweinbiirg.

Moore, Commissioner:

This an appeal from the decision of the Examiner of Interferences
holding that the firm of Madame Irene is not entitled to the regis-
tration for which it has made application.

The interference involves the application of the firm Madame Irene
for registration of the word "Irene" as a trade-mark for corsets
and two registrations of Schweinburg of the word " Irene " and the
words " The Rene," the word " The " being written in small letters
in the upper curve of the " R "' as trade-marks for the same goods.

The record shows that Schweinburg adopted these trade-marks
prior to the dates of his registrations in 1890 and 1892, respectively,



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DECISIONS OP THE COMMISSIONER OF PATENTS. 116

and that the firm of Madame Irene did not adopt its mark until
some years later, the testimony being conflicting as to whether
it was.ad<^ted in 1901, 1903, or 1904. The only question in the
case is whether Sohweinburg abandoned his marks and that in view
of sudi Abandonment Madame Irene is entitled to registration.
This question the Examiner of Interferences decided adversely to
Madame Irene, holding that abandonment had not been established.

It is contended on behalf of Madame Irene that there is no in-
terference in fact between the mark " Irine " and the marie " The
Rene." The Ebiaminer of Interferences held otherwise, pointing
out that the word "Ren6" in appearance was quite similar to
" Irene " and that the public inquiring for goods bearing this mark
would probably pronounce this word similarly to "queen," or as
if it were spelled ** reen."

As it will appear hereinafter, it is not necessary to decide this
question, but it is deemed proper to refer to the statement in the
brief on behalf of Schweinburg that this question had previously
been decided by the Office on a motion to dissolve. (Brief for
Schweinburg, pp. 9 and 17.) The record does not bear out this
statement. A motion to dissolve the interference as to the mark
"The Ren4" was brought on behalf of Madame Irene sometime
after the declaration of the interference. Transmission of this mo-
tion was refused on the ground that it was brought late and that the
failure to bring the motion earlier was the result of deliberate
election on the part of Madame Irene. On appeal the decision of
the Examiner of Interferences refusing to transmit the motion to
dissolve was affirmed, but the question of the conflict between the
marks " Irfene " and " The Ren6 " was not considered on the motion
to dissolve by any of the tribunals of the Patent Office.

As stated above, the record shows that Schweinburg adopted and
used the marks " Irene " and " The Rene " long before any date of
adoption claimed by Madame Irene. It appears that Schweinburg
was an importer of corsets manufactured by the firm of Zoeppritz,
Cantz & Ziegler, of Cannstatt, Germany; that he placed certain
trade-marks on these corsets ; that corsets marked " Irene " were sold
exclusively to the firm of J. Lichtenstein & Sons, and, after their
failure, to the firm of Joumeay & Bumham, and that corsets marked
'^The Ren6" were sold exclusively to the firm of Ehrich Bros. It
also appears that in 1901 certain contracts were entered into between
Schweinburg and B. Altman & Co. and between Schweinburg, B.
Altman & Co., and Zoeppritz, Cantz & Ziegler, by which B. Altman
& Co. became the distributers of the corsets manufactured by the
latter firm which had been formerly handled by Schweinburg. One
of these contracts contained the provision that it mi«flit be terminated
at the end of five years upon notice by B. Altman & Co. under cer-



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116 DECISIONS OP THE COMMISSIONER OF PATENTS.

lain circumstances. After the making of these contracts Schwein-
hurg handled no more corsets, and at the end of five years B. Altman
& Co. gave notice that the contracts would be considered as termi-
nated. Schweinburg thereafter brought suit against B. Altman &
Co. for the royalties due him under these contracts for one year.

It further appears that no corsets marked "Irene" were sold by
B. Altman & Co. after 1903 or 190i and possibly no corsets marked
'"The Ren^" sold after that time. The testimony is somewhat con-
flicting as to how long corsets bearing these trade-marks continued on
8ale. It appears thpt the firm of Joumeay & Bumham became in-
volved, that, with Schweinburg's consent, B. Altman & Co. ceased to
sell corsets to them sometime prior to their failure in 1907, and that
in May of that year the left-over stock of that firm of " Irene " cor-
sets were sold at a receiver's sale to the firm of Edwards & Son, of
Syracuse, N. Y., by whom they were closed out. There is some testi-
jnony to show that the firm of Ehrich Bros, bought no corsets from
B. Altman & Co. bearing the mark " The Ren^ '' later than 1903, and
that when in 1909 and 1910 attempts were made by employees of
Madame Irene to purchase corsets bearing this mark they were in-
formed that while Ehrich Bros, had such corsets on hand they were
merely left-over corsets which they sold at reduced prices and they
were not keeping that line of corsets " up to date."

It is contended on behalf of Madame Irene that these facts show
an absolute abandonment by Schweinburg of the marks, and that
thei:efore registration should be accorded to the former. On behalf
of Schweinburg it is contended that there is no proof of an intent to
abandon the mark, it being pointed out that the testimony shows that
Schweinburg, while having no actual place of business, kept on hand
his forms and stamps, that B. Altman & Co. had on hand labels bear-
ing the marks " Irene " and " The Ren^," and that the suit brought
by Schweinburg against B. Altman & Co., while in form a suit for
royalties due under the contracts, must, in effect, result in a determi-
nation whether or not Schweinburg has the right to use his maik.

It is well settled that the mere non-use of a trade-mark does not
establish abandonment thereof, but that one who contends that thi*
mark has been abandoned must establish that the original owner
of the mark not only discontinued its u?e but intended to abandon
the same. (BagJm et al v. Cvf^enifr, C. D., 1911, 552; 169 O. G.,
449; 221 U. S., 580, and cases therein cited.) It is true that it
is not necessary that it be proved that the original owner of the
mark has stated that he intended to abandon the mark. Such intent
may be proved by his actions and the circumstances of the case.

In my opinion an intent by Schweinburg to abandon either the
mark " Irene " or the mark " The Rene " has not been established
in this case. As pointed out by the Examiner of Interferences, the



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DECISIONS OF THE COMMISSIONER OF PATENTS. 117

record shows that Schweinburg kept on hand his forms and labels,
and the question of the liability of B. Altman & Co. to Schweinburg
is still in litigation. Schweinburg positively testifies that he never
intended to abandon these marks and denies that he told the agent
of R. G. Dtin & Co. that he had given up his business and sold out
all interest therein.

In reaching this conclusion I have not overlooked the fact that
the contracts above mentioned referred to the " Z-Z " and " Au-Coeur "
brands of corsets more fully than to the " Irene " and " The Ren^ "
brands and that apparently under one of these contracts B. Altman
& Co. were not required to sell the " Irene " corsets to other parties
should the firm to whom Schweinburg had given the exclusive
handling of these corsets go out of business.

In view of the holding that abandonment has not been established
it is not necessary to consider whether there is an interference in
fact between the marks " Irene " and " The Rene."

The record of this case is long drawn out, and the testimony
consists in large part of references to irrelevant and immaterial
matters. Questions were asked witnesses over and over again in sub-
stantially the same form. A fair example of a large part of the
testimony is foimd in the cross-examination of Mrs. Kann, (record
for Madame Irene, pp. 61 and 62,) two pages of which relate to the
time when her previous deposition when testifying on behalf of
Schweinburg was closed, whether at one o'clock or two o'clock in
the afternoon. Such a record as this not only greatly adds to the
expense of the proceeding, but very greatly increases the labor of
all the tribunals who have to consider the case.

The decmon of the Exawmer of Interferences is affirmed.



In re Stebler.

Decided January 27, 191ft.

177 O. G., 1044.

1. OwifES OF Appucatiow fob Patent — Bankrxtpt — Title of Trustee.

Where the owner of an application for patent is declared a bankrupt.
Held that the title to the interest in the patent about to be granted is trans-
ferred by operation of law to the trustee In bankruptcy.

% Same — Same — Pbosecutiow of Application and Issuance of Patent.

Where the trustee In bankruptcy sells certain applications for patent
owned by a bankrupt, and that sale is confirmed by a court of competent
jurisdiction, and the order of the court and the bill of sale by the trustee
are recorded In this Office, Held that the transferee should be recognized in
the prosecution of the application and the patent thereon be issued to him.

On Petttion.



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118 DECISIONS OF THE 00MMI8SI0NBR OF PATENTS.

Messrs, Lyons d& Hockley for the petitioner.

Billings, FiHt Assistant Corrmiissioner:

This is a petition by Fred Stebler, of Riverside, Cal., that his right
be recognized to control and prosecute two applications for patent
filed by Charles C. Mcintosh, and that the patents when granted be
issued to him as assignee.

The principal question la: ed by this petition — namely, whether
under the Bankruptcy Act of July 1, 1898, the interests of a bank-
rupt in an application for patent pass to the trustee by operation
of law — ^has been before the courts at least three times, and the pub-
lished decisions rendered in these cases show that the courts are not
in agreement thereon.

The first reported decision was rendered by District Judge Shiras
in the case of in re McDormell^ (N. D. Iowa, 101 Fed. Rep., 239,) who
held that a trustee in bankruptcy takes no title to a patent for an
invention granted to the bankrupt after the date of the adjudica-
tion in bankruptcy, although the application for such patent was
made before the adjudication of bankruptcy and was pending at
the time of the said adjudication.

The second reported decision was rendered by District Judge Sea-
man, Northern District of Illinois, in the case of in re Dann^ (129
Fed. Rep., 495.) In this case the court held that the bankrupt's in-
corporeal interest in an alleged invention covered by an application
for patent does not pass to his trustee in bankruptcy under the Bank-
ruptcy Act.

It is therefore seen that these two decisions are to the same effect.

The third reported decisiim was rendered by District Judge Hale,
District Court, District of Maine, in the case of in re Cantelo Mfg.
Co., (185 Fed. Rep., 276.)

In the third and last case reported the court came to a different
conclusion from the adjudications in the two cases previously cited,
holding that applications for patents constituted property which
passed to the corporation's trustee in bankruptcy under the Bank-
ruptcy Act of July 1, 1898. While it is to be noted that the three
decisions were rendered by courts of equal jurisdiction, yet the court
in the last case had the benefit of the two previously-cited cases and
discussed them quite fully in its opinion. After carefully consider-
ing each one of the opinions above cited, it is quite clear that the
ruling in the case of in re Cantelo Mfg, Co. should be followed by
the Patent Office in such cases.

The facts leading up to this petition are as follows :

Charles C. Mcintosh, of Los Angeles, Oal., filed in the Office two
applications for patent, one, No. 520,962, on October 4, 1909, the
other. No. 574,102, on July 27, 1910. Each of these applications for



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DECISIONS OF THE COMMISSIONER OF PATENTS. 119

patent was assigned by Mcintosh to H. K. Miller Mfg. Ck)., of Los
Angeles, Cal., a corporation of California. These assignments were
duly recorded in the Patent OflBce, and a request h made therein by
Mcintosh that the patents issue to the assignee, the H. K. Miller
Mfg. C!o. Subsequently the H. K. MiHer Mfg. Co., the assignee of
Mcintosh, was adjudged a bankrupt by a court of competent juris-
diction, and a trustee in bankruptcy was appointed. The trustee in
bankruptcy sold to Fred Stebler, of Riverside, Cal., all the patents
and patent rights and applications belonging to the bankrupt com-
pany. A certified copy of the order adjudging the H. K. Miller
Mfg. Co. to be a bankrupt, appointing a trustee in bankruptcy, and
ordering the trustee to make an appropriate conveyance, also a bill
of sale by the trustee in bankruptcy and a certified copy of the order
of the court confirming this sale, have been recorded in the Patent
Office.

The Bankruptcy Act of July 1, 1898, (c. 641, sec. 70a; 30 Stat.,
565; U. S. Comp. St., 1901, p. 3451,) provides that the trustee-
shall in turn be vested by operation of iaw with the title of the bankrupt, as
of the date he was adjudged a bankrupt. ♦ ♦ ♦ to all ♦ ♦ ♦ (2) in-
terests in patents, patent rights, copyrights, and trade-marks. * * * (5)
property which prior to the filing of the petition he could by any means have
transferred or which might have been levied upon and sold under Judicial
process against him.

As stated by the Court in the McDonnell case:

In the construction of statutes, it is a well-recognized rule that regard may
be had to all statutory provisions touching a given subject, as aids in arriving
at the legislative intent. ♦ ♦ ♦

Section 4895 of the Revised Statutes provides in part :

Sec. 4S95. Patents may be granted and issued or reissued to the assignee of
the inventor or discoverer ; but the assignment must first be entered of record
in the Patent Office.

It is therefore seen that the law specifically provides for the trans-
fer of the inchoate rights or interests in an alleged invention de-
scribed and claimed in an application for patent before the patent is
actually granted. It is true that the right to recover damages for
infringement does not become effective until the grant; but that
there is property in an invention which is covered by an application
for a patent pending in the Patent Office cannot be gainsaid. The
assignee company enjoyed the use and benefit and right to obtain a
patent and must have derived some of its credit upon that right
In the case of the Cantelo Co.^ aupra^ the Court said :

Clearly the trustee in bankruptcy should not be deprived of their benefit if,
under a fiilr construction of the law, they may be held to be a part of the
tmnkrupt estate. In spite of the weU-considered opinion in the McDonnell
case, I think It is not altogether clear but that the interests in the inventions

64282*— 18 ^U



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120 DECISIONS OF THE GOMMISSIONEB OF PATENTS.

which have become the subject of patent applicatioiis may fairly be held to be
an "Interest in patents'* wittdn the meaning of the law; but whether or not
these inventions may be so held, it seems to me, under subdivision 5 of section
70a, they may be held to be " property " which could be transferred.

In analyzing the decision in the Dann case^ supra^ Judge Hale said
that the Court in its opinion in the Dann case reasoned that:
* * * the interest of the bankrupt in the alleged invention cannot be reached
through the general terms of clause 5, in the face of the specific provision for
patent interests in clause 2. His theory appears to be tliat, in clause 2, the
law-making power disposed of the question of " patent rights " and " interests
in patents,'* and when they came to item 5 they did not intend by the term
"property** to include anything in relation to interests in patents or patent
rights.

The Court (in the Cantelo case^ supra^) then said:

It seems to me that, aft^ providing in clause 2 that the bankrupt should
be vested by operation of law with the title of bankrupt in interests in patents
and patent ri^ts, Ck)ngress proceeded in clause 5 to extend somewhat the
meaning of clause 2, to cover by very general words the whole subject of " prop-
erty,'* and to include in the term every vested right and interest attaching to,
or growing out of, property. It seems to me that subdivision 5 embraces, and
is meant to embrace, much of the property that is designated under the other
subdivisions; that it is meant to include everything that can properiy be the
subject of a lawful transfer, whether it be corporeal or incorporeal. It seems
to me that, instead of aUowing clause 2 to limit and constrain the meaning of
clause 5, the court should give to the latter clause a meaning as broad and
inclusive as it was possible for the law-making power to make it

That the inchoate right to the interest in the patent to be granted
is a proper subject of a legal and equitable transfer cannot be well
disputed in face of the direct provision in section 4895 of the Re-