ruthenium and the oxid of zirconium are the equivalents, respec-
tively, of osmium and the oxid of thorium and may be used in place
thereof. The position of the lower tribunals is that no invention
was involved in appellant's substitution in place of Edison's mixture
of ruthenium and the oxid of zirconium of a mixture of osmium and
thoroxid, their well-known and admitted equivalents. I agrtie with
this conclusion reached by the said tribunals. Furthermore, there is
no invention in appellant's using in his mixture a plurality of the
oxids mentioned by him, as called for in claim 5.
It is true that the term "filament" is not used by Edison in his
specification, and apparently at the date of his patent the word was
not commonly used in this art. Edison, however, states that the
light-giving body may be in the —
form of a cylinder, prism, or other mass of a size adapted to yield tbe required
volume of light.
It is also true that Edison in his patent did not contemplate inclos-
ing the light-emitting body in a vacuum. But the placing of the
Jjght-emitting body or filament in a vacuum-bulb was old in the prior
art, as shown by the patents to Reynier and Thowless. To the con-
tention that appellant was the first to invent a successful commercial
process of manufacturing said filaments it is a sufficient answer to
state that appellant has been allowed in this application claims cover-
ing his process.
The further rejection by the Examiner of claims 2 and 4 upon the
ground that the term " rare earth " is misdescriptive is well taken.
The decision of the Examiners-in-Chief is affirmed.
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DECISIONS OP THE C0MMI8SI0NBB OP PATENTS. 157
Ex PABTB The American Sugar EefininO Co.
Decided ApHl 2i, 1912.
178 O. G., 1153.
1 Tbade-Mabks — " Crystal Domino," fob Suoab.
The words " Crystal Domino," for sugar, Held properly refused regis-
tration in Tiew of the prior registration by the same applicant of the word
" Domino " for the same goods, the specimens filed being substantially the
same as those forming part of the application upon which the prior regis-
tration was based, (citing Planten v. Canton Pharmacy Co,, O. D., 1909,
408; 143 O. 0., 1113; 33 App. D. C, 268.)
2. Same — Same — ^Debcbiptive.
The words " Crystal Domino " Held not registrable as a trade-mark for
sugar, since the word " Crystal " is descriptive of such goods.
On Appeal.
TBADE-MABK FOB HABD SUOAB.
Messrs, Betts^ Sheffield^ Bentley <& Betts for the applicant.
Tennant, Assistant Commissioner:
This is an appeal from a decision of the Examiner of Trade-Marks
refusing to register the words " Crystal Domino" as a trade-mark for
sugar.
Registration was refused because of a prior registration by the
same party of the word " Domino " for goods of the same descriptive
properties.
It is urged upon appeal that the mark sought to be registered is
not the same as the mark previously registered, that the word
** Domino" has been used by the applicant and its predecessor in
business for a much longer period than have the words "Crystal
Domino," and that all the applicant is now seeking to do is to regis-
ter another valid trade-mark which has been extensively used in its
business.
In my opinion registration of this mark was properly refused.
The record of the prior registration, No. 73,099, shows that the speci-
mens forming part of the application upon which that registration
was based are substantially identical with those which are a part of
the present application. In each case the label shows the words
" Crystal Domino Sugar," together with other features, which are
also identical. In the previous registration it was asserted that the
trade- mark sought to be registered — to wit, "Domino" alone — had
been used in business by the corporation since August, 1900. The
present application for registration also asserts that the —
trade-mark has been contlDUously used in business by said corporation since
August, 1900.
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158 DECISIONS OF THE C0MMI88I0NBB OF PATENTS.
In the decision of the Court of Appeals of the District of Colum-
bia in Planten v. Canton Pharmacy Co. (C. D., 1909, 408; 143 O. G.,
1113; 33 App.'D. C, 268) it was held that although an applicant for
registration has a right to determine the features of his label which
constitute the trade-mark he after having registered one thing could
not when the exigencies of the situation demanded limit his claim to
a particular feature of the original mark. In passing upon this ques-
tion the Court said:
By the passage of the Trade-Mark Act Congress did not intend to confer upon
any dealer the right to register fictitious marlss for the purpose of limiting
and restricting the field of registration of others. When, therefore, the CJom-
missioner is satisfied that the applicant is attempting to register a particular
feature of a registered mark, he should require evidence that the mark of
the application has actually been used as a trade-mark. Not having limited
his claims in his original application, the applicant cannot prove statutory
use of the mark of the second application by showing such use of the regis-
tered mark. In other words, proof of the use of the words " Planten*s C & C
or Black Capsules," in a case where those words have been registered as a
trade-mark, does not establish the use of the words ** Black Capsules*' as a
trade-mark, for the words eliminated from the registered mark, are, under the
prior application part of that mark.
It is seen from the statement above quoted that where an applicant
has registered a composite mark he cannot thereafter be permitted
to register certain individual features of the mark without showing
statutory use of such features standing by themselves as separate
trade-marks. For similar reasons it is believed that an applicant
having registered an individual feature, which he swears in a decla-
ration accompanying his application is his trade-mark, should not
thereafter be given registration of another mark which includes the
same subject-matter, together with other features, where the speci-
mens filed by him are identical or substantially identical with the
labels upon which the previous registration was based. In the pres-
ent case not only are the specimens the same, but the period of use
alleged is the same and the registered mark is merely qualified by
the single word " Crystal."
There is a further reason why, in my opinion, this registration
should be refused — that is, upon the ground that the word " Crystal "
is descriptive of the merchandise upon which the alleged trade-mark
is used. Although the record shows that upon argument by the appli-
cant the Examiner withdrew his objection to the registration of the
word " Crystal," upon the ground that the word " Crystal " qualified
the word " Domino " rather than " Sugar," I am of the opinion that
this word as used upon the specimens shown is of a descriptive
rather than an arbitrary nature. The letters of the word " Crystal "
and " Sugar " are of the same size, whereas the word " Domino '' in
each instance is of a considerably larger size, and in each case the
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DECISIONS OF THE COMMISSIOKBB OF PATENTS. 159
label reads " Crystal Domino Sugar." " Oystal " is obviously de-
scriptive of sugar and does not lose its descriptive significance when
printed in the manner shown in the specimens.
The decision of the Examiner of Trade-Marks is affirmed.
Ex PARTE TURNEB.
Decided April 25, 1912.
179 O. G., 285.
APPUCATION — ^PbOSICUTION — ^ABAin)ONMENT.
Where at the end of the year following a proper final rejection the appli-
cant filed an amendment complying with certain formal requirements made
by the Examiner and a request that the final rejection be waived, but with-
out any sufficient showing why such action should be taken, Held that the
application is abandoned.
On Petition.
D^-NAMO-ELECTSIC MACHINE.
Mr. William Henry Taylor and Mr. Frank S. Appleman for the
applicant.
Moore, Commissioner:
This is a petition from the action of the Primary Examiner hold-
ing the above-entitled application abandoned.
On February 3, 1910, the Examiner finally rejected all of the
claims, on the ground that they were based on an inoperative struc-
ture. He notified the applicant also that before an appeal could be
forwarded all formal matters must receive attention. On February
1, 1911, an amendment was filed containing a new sheet of drawings*
an amendment to the specification, and a request that the Exam-
iner waive his final rejection —
in view of the difficulties encountered in working out the problems in an appa-
ratus of this character.
On April 5, 1911, the Examiner refused to enter this amendment,
on the ground that the case was under final rejection and that the
application was abandoned for lack of suflScient prosecution. The
present petition was filed March 16, 1912.
If the amendment did not affect the merits of the application, but
merely presented the invention more clearly, the Examiner might
have entered the amendment under the ruling in ex parte Lofpen-
tien^ (C. D., 1906, 188; 122 O. G., 1723;) but the amendment was
clearly not such as to save the case from abandonment. The final
rejection appears to have been proper in view of the record of the
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160 DECISIONS OP THE COMMISSIONBB OF PATENTS.
case, and applicant does not contend that it was premature. The
rule requires that before an appeal can be taken all preliminary and
intermediate questions relating to matters not affecting the merits
must be settled; but this does not extend the time within which to
take the appeal. No sufficient reasons were given in connection with
the amendment of February 2, 1911, for reopening the case.
The case is distinguished from ex parte Wynnes {ante^ 84; 176
O. G., 1070,) cited by the applicant, in that in that case no jSnal
rejection had been entered. In fact, the claims had never been
rejected by the Examiner, but he had insisted upon a demonstration
of the operativeness of the process.
The Examiner^s holding that this application was abandoned is
clearly right^ and the petition is denied.
Ex PARTE Sims.
Decided April 29, J 9 12.
179 O. Gm 285.
1. Tbape-Mabks — Goods of the Same Descbiptiye Pbopebties — CAifircD Fish
AND Canned Salmon.
Canned fish and canned salmon Held to be goods of the same descrlptiye
properties.
2. Same — ^Anticipation.
A trade-mark consisting of the words "Harbor Light" In association
with a marine scene the prominent feature of which is the representation
of a lighthouse Held properly refused registration in view of the prior
registration of marks consisting, respectively, of the word "Harbor" and
the words "Light House" associated with the picture of a lighthouse ap-
plied to goods of the same descriptive properties.
On Appeal.
trade-mark for canned salmon.
Mr. n. A. Seymour for the applicant
Moore, Commissioner:
This is an appeal from the refusal of the Examiner of Trade-
Marks to register as a trade-mark for canned salmon a mark con-
sisting of the words " Harbor Light •' in association with a marine
scene the prominent feature of which is the representation of a
lighthouse.
The refusal to register was based on the following registrations:
Jed Frye & Co., January 27, 1003, No. 39,672; Rosenstein Brothers,
December 22, 1903; No. 41.718: Jed. Frye & Co., December 24, 1907,
No. 66,679; Rosenstein Brothers Inc., January 21, 1908, No. 67,195.
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DECISIONS OP THE COMMISSIONER OP PATENTS. 161
The mark of Jed Frye & Co. consists of the word " Harbor.'' The
goods upon which it is used are canned fish. The mark of Rosenstein
Bros, consists of the words " Light House " and the picture of a light-
house. The goods are stated to be dried, pickled, or otherwise-
preserved fish.
It is contended that applicant's goods are not of the same descrip-
tive properties as that of the registrants and that his mark does not
so nearly resemble theirs that their simultaneous use would be liable
to cause confusion.
Under the rulings of the Court of Appeals of the District of
Columbia canned fish and canned salmon are goods of the same de-
scriptive properties. In the case of John Braadland^ Ltd.^ (post^
432; 174 O. G., 1029; 37 App. D. C, 602,) in considering whether
a mark consisting of the picture of a bear and the words " Teddy
Bear Brand " was registrable as a trade-mark for sardines, the Court
said:
Registration was refused in view of certain existing registered marks, the
most prominent one, which will be sufficient for this case, being that of the
Northwestern Fisheries Company. Its mark consists of the picture of a bear
haying one foot resting upon a fish, the same being surrounded by ornamental
scrolls and surmounted by the words "Pioneer Fishery." It appears that the
latter mark has only been used on canned salmon, but the r^istration Includes
all kinds of canned fish. The mark could therefore at any time in the future
be used upon canned sardines. The fact that the mark has not been used on
sardines will not prohibit the owner from so using it at any time. Non-user
will not deprive the owner of the protection of the courts.
The fact that applicant's place of business is on the Pacific slope,
while the registrants are located in New York, is believed to be
immaterial.
In my opinion the Examiner of Trade-Marks was right in holding
that applicant's mark so nearly resembles that of the registrants as
to be likely to cause confusion in the mind of the public. As stated
above, the mark of Jed Frye & Co. consists of the word " Harbor."
Obviously the words " Harbor liight " could not be registered in
view of the prior registration of the word " Harbor," and the fact
that these words are associated with a marine scene including the
representation of a lighthouse does not obviate the liability of con-
fusion. The mark of Rosenstein Bros, includes the representation
of a lighthouse and the words " Light House," and since applicant's
mark includes the representation of a lighthouse the liability of
confusion is obvious.
The decision of the Examiner of Trade-Marks is affirmed.
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162 DECISIONS OF THE COMMISSIONER OF PATENTS.
Ex PARTE Gold.
Decided DecemJ>er IS, 191U
179 O. G., 286.
Patentability — Process or Heating by Steam.
Claims for a process of beating by steam Held to state nothing more
than the function of the apparatus shown and to be anticipated by the
prior art.
Appeal from Examiners-in-Chief.
LBT OF heating BY STEAM.
Mr. Otto R, Burnett for the applicant.
Billings, First Assistant Commissioner:
This is an appeal from the decision of the Examiners-in-Chief
affirming the action of the Primary Examiner in finally rejecting
the claims of this application, sixteen in number, of which the fol-
lowing set forth the invention sufficiently for the purpose of this
decision :
1. Tbe improvement in the art of heating by steam which consists in provid-
ing a supply of steam at high pressure, providing in the apartment to be heated
an inclosed body of steam in free communication with a zone of low pressure,
which body receives steam from said supply, utilizing the thermostatic prop-
erties of said body of steam to control the inflow thereto from said supply,
producing at will a higher temperature in said body, by neutralizing said
thermostatic control of the inflow and closing said free communication with
a zone of low pressure.
3. The improvement in the art of heating by steam which consists in provid-
ing a supply of steam at high pressure, providing in the apartment to be
heated an inclosed body of steam taken from said supply and which has a
freely open outlet, utilizing the thermostatic properties of the steam adjacent
said outlet to control the inflow of steam to said inclosed body, whereby said
body of steam is maintained at substantially atmospheric pressure, and
maintaining said body at a higher temperature by, at will, eliminating or
varying the conditions of said thermostatic control of inflow, so as to main-
tain said body, either at a pressure substantially equal to that of the supply
or at any pressure intermediate atmospheric pressure and said supply pressure.
7. The improvement in the art of heating by steam which consists in provid-
ing a supply of steam at high pressure, providing in the apartment to be
heated an inclosed body of steam which receives steam from said supply and
which has an outlet, utilizing the thermostatic properties of steam from said
body in a region beyond said outlet to control the inflow to said body, whereby
said Inclosed body is maintained at substantially atmospheric pressure, and
increasing the temperature of said body by excluding steam from said region
beyond said outlet, thereby eliminating thermostatic control of said inflow,
and utilizing the steam near said outlet to close the same.
12. The process of maintaining a body of steam, in a radiating sjrstem which
has an outlet to the atmosphere, at supply pipe pressure, atmospheric pressure
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DECISIONS OF THE COMMISSIONER OF PATENTS. 163
or any intermediate pressure at will which consists of providing a source of
supply of high pressure steam in communication with said system, utilizing
the temperature of the steam in said system to control the Inflow from said
supply to said system and causing said control to be neutmlized and said
outlets to be closed under various predeterminable conditions of temperature
and pressure in said system.
The references cited are as follows: Weber, May 14, 1889, No.
403,162; Gold, May 30, 1893, No. 498,545; Mason, December 24,
1895, No. 551,778; Gold, May 5, 1908, No. 886,969. British: Still
et al., April 21, 1904, No. 9,209.
The Examiners-in-Chief also called attention to the following
references: E. E. Gold, November 7, 1893, No. 508,134; E. E. Gold,
July 3, 1894, No. 522,253; Martin, October 25, 1887, No. 371,959.
The claims were first rejected on the following grounds: (1) that
the question of their patentability to this applicant is res ad judicata
by reason of a decision adverse to him in interference No. 27,640,
entitled Gold v. Gold; (2) that they define nothing more than the
function of the particular apparatus shown; (3) that they state
nothing requiring invention over the prior art.
On appeal this action of the Examiner was affirmed by the Ex-
aminers-in-Chief, except as to the rejection of claims 3, 5, 11, 12,
13, and 15, on the ground of res adjudicata. After appeal was
taken to the Commissioner the Examiner obtained jurisdiction of
the case for further consideration in connection with the patent to
Weber in view of a demonstration of an apparatus constructed in
accordance with that patent, which had been witnessed by him.
He filed in the case an affidavit as to the test and held that all the
claims were anticipated by this patent. Upon further appeal the
Examiners-in-Chief affirmed this action, and the case is now before
me upon all the grounds of rejection.
The claims cover an alleged process of heating by steam, speci-
fically heating the cars of a railway-train, in which the steam may
be supplied to the radiators at atmospheric pressure, at train-pipe
pressure, or at any predetermined pressure therebetween.
The patent to Weber discloses a steam trap and radiator in which
both the inlet and outlet valves are under the control of a single
thermostat placed between the radiator and the outlet-valve so that
the water of condensation and the steam passing from the radiator
come in contact therewith. The thermostat is adjustably connected
to the valves, whereby the extent of its action thereupon can be
regulated.
In the brief on this appeal reference is made to the fact that appel-
lant was not represented at the test referred to in the affidavit of
the Primary Examiner. This is, however, immaterial. The affi-
davit does not show by whom the test was made or in what proceed-
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164 DECISIONS OP THE COMMISSIONER OF PATENTS.
ing the operation of the Weber device had been called in question.
It is sufficient to say that the proceeding in which the test was made
was not an inter partes proceeding in which the present appellant
was involved and that therefore the doctrine laid down in Mark v.
Oreenawalt (C. D., 1909, 288; 138 O. G., 965; 32 App. D. C, 253)
does not here apply. The Examiner has, however, stated under oath
ihe facts within his knowledge, (Rule 66,) and appellant could, if he
had so desired, have filed rebutting affidavits based on tests by him.
(Rule 76.)
The test witnessed by the Examiner shows, as appears from the affi-
davit, that the apparatus of the Weber patent can be adjusted to
carry out the process set out in the appealed claims — that is to say,
convertibly. Appellant does not seriously contend that this is not
true as to operating the device at atmospheric pressure or at train-
pipe pressure; but he argues that the Weber device cannot be ad-
justed to automatically establish and maintain any desired inter-
mediate pressure under all conditions. In other words, he contends
that if the Weber device could be adjusted to supply steam to the
radiators so as to maintain a temperature of 70° in the car, for ex-
ample, when the outside temperature was 40*^ it would not do so if
the outside temperature should drop to zero and that in order to
maintain the desired temperature in the car it would then be neces-
sary to further adjust the apparatus.
The proposition upon which appellant bases this argument over-
looks the fact that the closing of the outlet- valve, which is necessary
in order to get any pressure in the radiators higher than atmospheric
and consequently a. higher temperature than that corresponding to
steam at atmospheric pressure, is not an absolute closure, but merely
such as will prevent the escape of the steam, while allowing the es-
cape of the water of condensation, the water acting as a seal against
the passage of the steam. (See appellant's argument before the
Examiners-in-Chief filed April 12, 1911, p. 9, and appellant's Patent
No. 771,628, lines 10 to 19, p. 3.) Furthermore, it is not necessary
that the—
automatic inlet valve must be operated absolutely independent of the outlet
valve if the intermediate pressure is to be maintained.
The inlet and outlet orifices may be exceedingly small in most in-
stallations. (See patent to Tudor, No. 318,401, p. 2, and Modt^m
Plumbing^ Steam and Hot Water II eating ^ by Lawler,p. 282.) Con-
sequently but slight movements of the supply and exhaust valves of
the Weber device produce very material effects. As pointed out
above, the closing of the outlet-valve is not an absolute closing, but
that necessary to prevent the escape of steam. Furthermore, the
exhaust-valve of the Weber patent is provided with a soft seating
portion. Consequently there may be additional movement of the
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DECISIONS OP THE COMMISSIONER OF PATENTS. 165
supply-valve after the exhaust-valve has reached its closed position.
Moreover, any tendency to rise or fall in the radiator-pressure is
counteracted, at least in part, by a corresponding increase or decrease
in the rate of condensation, since the temperature varies with the
pressure, and the higher the temperature the greater the rate of con-
densation. Not only this, but an increase in radiator-pressure lessens
the inflow of steam and increases the rate of discharge of the water of
condensation, allowing more steam to come in contact with the ther-
mostat, whereby the valves are moved nearer their seats.
Not only is the device of the Weber patent capable of being oper-
ated convertibly, but, as pointed out in the Examiner's statement of
April 10, 1911, such convertibility of action is an inherent charac-
teristic thereof. This being true, the claims were properly rejected
on this patent.
The references of record show car-heating systems in which the
steam is supplied to the radiators at atmospheric pressure, systems
in which it is supplied at train-pipe pressure, and systems in which
it is supplied at a predetermined intermediate pressure. Each of
these methods of heating is operative by itself and would be un-
affected by the fact that in a suitable apparatus one or both of the
other methods could be also carried out. They have therefore no
cooperative relation, and the appealed claims cover mere aggrega-
tions. Whether it required invention to devise an apparatus in