which these three methods could be carried out is not here in ques-
tion; but it is evident that as a process no invention was involved in
bringing together two or all three of the independent methods of
operation. (In re Harris, C. D., 1911, 429; 170 O. G., 484; 37 App.
The apparatus disclosed is capable of being operated in any one
of three ways, and the appealed claims are alleged methods for
changing at will from one of such modes of operation to one or the
other or both of the remaining modes; but this adjustment of the
device is not a process, but merely operating it in the manner in
which it was designed to be operated.
As to the question of res adjudicata it is perfectly apparent that if
the claims state merely the adjusting of the device so as to operate it
in the way in which it was designed to be operated they are not sep-
arably patentable from the machine itself â€” in other words, that they
are but different statements of the invention defined by the apparatus
claims. It therefore follows that the judgment in the prior inter-
ference is a bar to the allowance of any claims the alleged method of
which could be carried out by the apparatus in issue in that inter-
The decision of the Examiners-in-Chief is affirmed.
166 decisions of the commissioner of patents,
Burton Medicine Co. v. United Drug Co.
Decided May 10, 1912.
179 O. G., 288.
Tbadb-Mabksâ€” Opposition â€” Cross-Bill Not Permissible.
Where an opposition to the registration of a trade-mark !s filed by a
registrant. Held that a cross-bill asking for the cancelation of the opposer's
registration will not be admitted.
Appeal from Examiner of Interferences.
TBAJ)B-MARK FOB BHAMPOO-PASTE, HAIB-TONIO, ETa
Messrs. Small <& Small and Messrs. McReynolds ds Hay for the
Burton Medicine Co.
Mr. Edw. C. Davidson and Messrs. Emery ^ Booths Janney <& Var-
ney for the United Drug Co.
Tbnnant, Assistant Commissioner:
This is an appeal by the United Drug Co. from the refusal of the
Examiner of Interferences to admit a cross-bill filed by it which seeks
the cancelation of a registration of a trade-mark to the Burton Medi-
The present proceeding is an opposition instituted by the Burton
Medicine Co. to the registration of the word "Kexall" as a trade-
mark for certain pharmaceutical preparations, application for which
has been made by the United Prug Co., and the opposition refers to
a trade-mark " Kex Oil," owned by the Burton Medicine Co., which
is registered in this Office. It is this registration that the United
Drug Co. seeks to have canceled by the proposed cross-bill.
It is urged that there is nothing in the statutes authorizing the in-
stitution of opposition and cancelation proceedings which necessi-
tates the consideration of these questions in separate proceedings and
that the rules of the Office which deal at all with the procedure treat
them together and indicate that the usual equity practice should be
followed as far as possible in such proceedings.
Assuming, without deciding, that there is nothing in the statute
or rules to prohibit a consideration of an opposition to registration
and an application for cancelation of a registration of the opposer
in a single proceeding, I am, nevertheless, of the opinion that the
issue raised by the application for cancelation is a distinct issue and
not, in this instance at least, germane to the subject-matter of the
proceeding in opposition to the registration of the trade-mark by the
United Drug Co.
The filing of a cross-bill is not permitted in equity practice unless
it relates to the same subject-matter as the original bill :
A cross bill may and usuaUy does introduce new facts and new issues not
disclosed by the original bill; but such new facts and issues must relate to the
DECISIONS OF THE COMMISSIONER OF PATENTS. 167
subject matter of the original, and must be so closely connected therewith as
to constitute the cross-bill a mere auxiliary of the original or a dependency
thereon. It must not set up matter which is not germane to the matter of the
original bill. Questions which are entirely distinct from those presented In the
original bill cannot be introduced by a cross-bill, although such questions l>e
connected with the subject-matter of the original bill; nor can a new subject-
matter be introduced, although the controversy with relation thereto and that
with relation to the subject-matter of the original bill arise out of the same
transaction. A cross bill will of course not lie to litigate a question open
only to a direct proceeding for the purpose involved. (16 Cyc, 331.)
In the case of Stonemetz Printers* Machinery Co. v. Brown Fold-
ing Mach. Co. (46 Fed. Rep. 851) suit was brought under section
4918 of the Revised Statutes alleging interference between the com-
plainant's and the defendant's patents and also alleging infringement
of the complainant's patent by the defendant. The defendant sought
to file a cross-bill alleging infringement of the defendant's patent by
the complainant. In discussing this question the Court said:
A cross-bill em vi ierminorum implies a bill brought by a defendant against
the plaintiff in the same suit, or against other defendants in the same suit,
or against both, touching the matter in question in the original biU. (Story,
Â£q. PI., sec. 389.) It is brought either to obtain a discovery of facts in aid of
the defense to the original bill, or to obtain full and complete relief to all
parties as to the matter charged in the original bill. It should not introduce
new and distinct matters not embraced in the original bill, as they cannot
be properly examined in that suit, but constitute the subject-matter of an
original Independent suit The cross-bill is auxiliary to the proceeding in
the original suit, and a dependency upon it. It is said by Lord Hardwicke
that both the original and cross-bill constitute but one suit, so intimately are
they connected together. (Ayers v. Carver, 17 How., 501; Cross v. De Valle,
1 Wall., 1.) It should not introduce any distinct matter. It is auxUiary to
the original suit, and a graft and dependency upon it. If its purpose be
different from this, it is not a cross-bill, though it may have a connection
with the same general subject.
The cross-bill does not seeic to defeat plaintiff's causes of action, and the
matters alleged in it are not essential to the complete disposition of plaintiff's
case, or of defendant's rights in relation to the plaintiff's causes of action.
The object of the opposition filed by the Burton Medicine Co.,
which corresponds to the original bill, in the present instance is to
prevent the registration of a certain mark to the United Dnig Co.
The object of the proposed cross-bill is to secure cancelation of the
registration of a different mark, ownership of which is claimed by
the Burton Medicine Co.
It is true that the opposition mentions the registration which it is
sought to cancel by the cross-bill; but the rights attacked by the
original and the cross bills are wholly distinct, and it might well
be that the opposition could be sustained in the absence of the reg-
istration which it is sought to cancel or that the registration could
54282*â€” 13 ^14
168 DECISIONS OF THE COMMISSIONER OF PATENTS.
be canceled even though the opposition to the registration of the
United Drug Co. were sustained.
It must be held, therefore, that the question raised by the pro-
posed cross-bill is not germane to the issue raised by the opposition
proceeding. The cases cited by appellant in which cross-bills have
been permitted have been duly considered; but it is believed that
they bear less analogy to the present case than that above cited.
The testimony in this case on the issue raised by the opposition has
all been taken, and to permit the filing of the cross-bill would inject
a new issue into the proceeding, which would in all probability
require a reopening of the case for the taking of further testimony.
This is an additional reason for denying the petition in the present
The decision of the Examiner of Interference is believed to he
right and is affirmed.
Williams v. Barnes and Thorschmidt.
De<Hded October 4, 1911.
179 O. G., 573.
INTEBFEBENCB â€” PRIORITY.
Evidence reviewed and Held insufficient to establish that W. had a con-
ception of the invention in issue prior to that of B. and T. or that he
reduced the invention to practice prior to the filing of the application of B.
and T., and that priority was therefore properly awarded the latter.
Appeal from Examiners-in-Chief.
Mr. Conrad A. Dieterich for Williams.
Mr, Harold Serrell for Barnes and Thorschmidt.
This is an appeal by Williams from a decision of the Examiners-
in-Chief affirming the decision of the Examiner of Interferences
awarding priority to Barnes and Thorschmidt.
The invention in issue relates to machines for driving corrugated
sheet-metal fasteners, which are used in making box-shooks. The
issue is set out in eight counts, of which the following sufficiently
indicate the nature of the invention:
2. In a machine of the character described, means for feeding a metal strip,
means for varying siiid feed to produce fasteners of different widths, means for
severing a fastener from said strip, and means for driving the fastener edgewise.
8. In a machine of the character described, the combination with a support
for the material to be Joined, of a transverse support arranged above said sup-
port having arranged thereon a feeding device adapted to advance a metal
Digitized by VjOOQIC
DECISIONS OF THE COMMISSIONER OF PATENTS. 169
â€¢trip, means for adjasting said feeding device to vary the extent of the feed,
a chuck arranged adjacent to said feeding device adapted to receive one end
of said strip, a cutting device adai)ted to sever the end of the strip within said
chuck, means for holding the severed end of said strip longitudinally in a hori-
zontal position within said chuck and means for forcing said severed end
edgewise from said chuck, and into the material to be joined.
Williams alleges that he conceived the invention in September,
1904, that he made drawings thereof and disclosed it to others in
November, 1904, and reduced it to practice in November, 1905.
Barnes and Thorschmidt claim conception of the invention, the
making of drawings thereof, and disclosure to others in November
or December, 1904, and reduction to practice in August or September,
The application of Barnes and Thorschmidt was filed March 8 and
that of Williams March 21, 1906.
The counts are all limited to a machine in which means are pro-
vided for varying the feed so that fasteners of suitable lengths may
be cut off from the strips of metal.
The Examiner of Interferences and the Examiners-in-Chief each
found that Barnes and Thorschmidt and Williams built machines
embodying the invention in issue in August, 1905, and November,
1905, respectively; but they both found that there was no evidence
establishing at what time prior to the building of the machine either
of the parties to the interference had a conception of the variable-
feed device. They further found that neither of the parties had es-
tablished a reduction to practice of the invention in issue prior to
his filing date, since there was no testimony that the machines were
ever adjusted to cut off fasteners of different lengths.
That Williams built a machine substantially like the machines
shown in his application in November, 1905, is abundantly proved;
but there is no testimony that this machine was ever operated in the
manner called for by the issue of this interference. Several of the
witnesses testify to having seen the machine operated in November
or December, 1905 ; but none of them refers to the adjustability of the
feed mechanism. Pearson, who was a box-manufacturer in Phila-
delphia, testifies that in the early part of January, 1906, he saw one
of these machines operated and was so pleased with it that he ordered
one substantially like it. He does not say, however, anything about
the adjustable feature, merely stating that the machine worked and
drove fasteners satisfactorily. As there is no further evidence as
to the operation of the machine prior to the date on which Williams
filed his application, it must be held that he has not established a
reduction to practice of the invention in issue prior to that date.
It is contended that the testimony on behalf of Williams shows
that this machine was completed so that it could be operated by
hand in August, 1905, the only thing lacking to make the machine
170 DECISIONS OF THE COMMISSIONER OF PATENTS.
automatic being the placing in position of miter-gears, which, it
appears, were not ordered until November, 1905. Williams himself,
however, does not so testify, merely stating (Q. 63) that the machine
was running by November 8, 1905, and that â€”
I had the machine finished some time before that except two brass gears â€” miter
gears, that I was waiting for from Boston.
Reich testifies that the machine was built in August, except for the
gears ; but he undertakes to fix the date by the fact that he wrapped
up certain parts of this machine in newspaper and that he remembers
noticing that the paper was dated August, 1905. The testimony is
believed to be clearly insufficient to establish that the machine had
been built at this time. Nor is Fennelly's testimony any more defi-
nite on this point. It is to be noted that neither Fennelly nor Reich
testifies that the machine contained the adjustable feed mechanism at
the time they say it was originally built.
The testimony offered on behalf of Barnes and Thorschmidt is be-
lieved to establish that they built a machine substantially like that
shown in their application in August or September, 1905. This date
is fixed by Thorschmidt, Wood, and Gansert with reference to certain
orders given to Gansert, who actually built the machine.
Thorschmidt testifies (Q. 36) that the machine contained two
levers which could be â€”
closed or opened in order to lengthen or to shorten the strips of metal or end-
menders to be cut at the desired length.
Gansert testifies that the machine introduced in evidence as
"Barnes and Thorschmidt First Machine July-September 1905" is
the identical machine which he built. In describing this machine he
states (Q. 24) thatâ€”
the ratchet wheel was operated by means of a pawl ; the same pawl was attached
to an adjustable lever.
An inspection of the machine shows that the length of the fastener
is varied by adjusting such a lever.
There was introduced in evidence a working drawing said to have
been made by Gansert in June, 1905, and while this drawing does not
show the part connected with the feed levers which in the application
drawing is lettered i Gansert points out that the levers shown in that
drawing are arranged in two sections.
This testimony establishes a conception of the invention by Barnes
and Thorschmidt prior to any date that can be awarded Williams,
and as the latter has not established a reduction to practice of the
invention prior to his filing date priority was properly awarded
Barnes and Thorschmidt, whose application was filed prior to that
The decision of the BnamhierS'in-Chief is affirmed.
DECISIONS OF THE COMMISSIONER OP PATENTS. 171
Ex PARTE BaRTHELS.
Decided May i, 1912.
179 O. G., 574.
Affidavit Under Rule 75 â€” Fobeion Application â€” Date of and Identitt of
Inventions â€” How Established.
Where an applicant claims the benefit of the filing of an application in a
foreign country for the purpose of overcoming a reference, his affidavit,
filed under the provisions of Rule 75, "should be accompanied by a cop^
of the original foreign application, certified to by the Patent Office of the
country in which it was filed, and if it is not in the English language, a
sworn translation of the same or a translation made by the official trans-
lator of this Office. If the application was not made by the inventor him-
self, applicant's affidavit should also state that the application in the
foreign country was filed for his benefit and that such procedure is in
accordance with the procedure in the foreign country.
Mr. B, Singer and Mr. Carl H. Crawford for the applicant.
Billings, First Assistant Commissioner:
This is a petition from the action of the Primary Examiner hold-
ing insufficient an aflBdavit filed under the provisions of Rule 75 to
overcome a reference cited.
It appears that applicant's claims were rejected on a foreign pat-
ent. He thereupon filed an affidavit stating that he had filed in
(lermany on a date given, which was prior to the effective date of
the reference cited, an application â€”
fully disclosing the subject-matter of the above entitled United States applica-
Section 4887 of the Revised Statutes reads, in part, as follows :
An application for patent for an invention or discovery or for a design filed
In this country by any person who has previously regularly filed an application
for a patent for the same Invention, discovery, or design in a foreign country
which, by treaty, convention, or law, affords similar prii^leges to citizens of
the United States shall have the same force and eflTect as the same application
would have if filed In this country on the date on which the application for
patent for the same Invention, discovery, or design was first filed in such
foreign country, provided the application in this country is filed within twelve
months In cases within the provisions of section forty-eight hundred and eighty-
six of the Revised Statutes, and within four months in cases of designs, from
the earliest date on which any such foreign application was filed.
Rule 76 of the Rules of Practice provides that when an application
is rejected on reference to a domestic patent which substantially
shows and describes but does not claim the rejected invention or on
reference to a foreign patent such patent, unless its date is more
172 DECISIONS OP THE COMMISSIONER OP PATENTS.
than two years prior to the date on which application was filed in
this country, will not be a bar to the grant of a patent if the inventor
shall make oath to facts showing the completion of the invention in
this country before the filing of the application on which the domes-
tic patent issued or before the date of the foreign patent and that the
invention has not been in public use more than two years prior to
iiis application and that he has not abandoned the same.
The statement of applicant that the foreign application discloses
^the same invention that he is now claiming is merely his conclusion.
1 ae fact tliat a copy of the patent granted on that application is in
this Office is not sufficient, since there is nothing to show that the
disclosure of the patent is exactly the same as the disclosure of the
application as filed.
In order to comply with the provisions of Rule 75 applicant's
affidavit should be accompanied by a copy of the original foreign
application, certified to by the Patent Office of the country in which
it was filed, and, if it is not in the English language, a sworn trans-
lation of the same or a translation made by the official translator of
this Office. If the application was not made by the inventor himself,
applicant's affidavit should also state that the application in the
foreign country was filed for his benefit and that such procedure is
in accordance with the procedure in the foreign country. The Ex-
aminer will then have the information before him from which he
can determine whether the application relied upon was for the same
invention as that which applicant is now claiming.
Applicant asks for a general ruling on many points as to the prov-
ing of foreign applications ; but such ruling is not necessary for the
purpose of this case and is therefore not made except as above indi-
TJie petition is denied.
QUENZER V. CoLLIfl.
Decided July 11, 1911.
179 O. G., 575.
1. INTEBFEBENCB â€” PRIORITY â€” REDUCTION TO PRACTICE.
EiVidence reviewed and Held insufficient to establish that a device con-
structed by C. prior to Q/s reduction to practice of the invention In Issue
amounted to anything more than an abandoned experiment
2. Same â€” Same â€” Concealment.
Held that if a device built by C. prior to Q.*s reduction to practice con-
stituted a reduction to practice of the invention O. had so concealed the
same as to justify an award of priority to Q. under the ruling In Mason v.
Hephurn, (O. D., 1898, 510; 84 O. G., 147; 13 App. D. C, 86.)
Appeal from Examiners-in-Chief.
DECISIONS OF THE COMMISSIONEB OF PATENTS. 173
Mr. Elgin L. McBurney and Mr, Eugene C. Brown for Quenzer.
Mr. Joseph R, Littell for CoUis.
Tennant, Assistant Commissioner:
This is an appeal by CoUis from the decision of the Examiners-
in-Chief affirming the decision of .the Examiner of Interferences
awarding priority of invention to Quenzer, the junior party.
The issue of the interference is as follows :
An improYed ankle support and protector of the class described, comprising
flexible non-elastic front strips constituting retaining members, a body consist-
ing of a strip wholly of elastic fabric or webbing and extending from edge to
edge of said front strips and connected at its ends with the rear edges of said
front strips and adapted ta surround the anlsle, and a bottom member consisting
of a strip wholly of elastic fabric or webbing and extending from edge to edge
of said front strips at the bottom and having Its ends connected with the l>ot-
torn edges of said front strips and adapted to pass under the Instep.
Quenzer alleges conception, disclosure, and reduction to practice
in October, 1907. CoUis alleges conception in the fall of 1906 and
disclosure and reduction to practice in December, 1906.
It is claimed in behalf of Quenzer that immediately after his re-
duction to practice of the invention in October, 1907, devices embody-
ing the invention in issue were placed upon the market by him and
continuously marketed to the date of taking testimony.
CoUis claims to have reduced the invention to practice by a con-
struction of certain devices embodying the invention in issue, which
are offered in evidence as Exhibits C and D. He testifies that he
wore the ankle-supporter. Exhibit C, home on his foot December 10,
1909, showed it to his wife, and wore it back again the next day to
the factory; that on December 11 he put these Exhibits C and D
away with the paper patterns in a drawer that he kept for that pur-
pose. (Qs. 32 to 34.) On cross-examination he testifies (X-Qs. 83
to 87) that these exhibits remained preserved in his desk until they
were produced when he was preparing for the interference. It is
shown, however, by the testimony that in February, 1909, he began
the manufacture of devices similar to Exhibits 5 and 6 and continued
to manufacture the same until the time the testimony was taken.
It appears that on January 9, 1908, Quenzer filed an application
for patent, No. 409,978, which disclosed the invention in issue and
also another form of support. Division was required by the Patent
Office, and the particular device involved in this interference was
canceled from that application, and a patent. No. 921,563, was sub-
sequently issued upon the remaining species of the invention dis-
closed in the original application. In April, 1909, Quenzer, learning
that CoUis had begun the manufacture of the invention in issue,
174 DECISIONS OF THE COMMISSIOKEB OF PATENTS.
threatened him with suit for infringement of his Patent No. 921,563.
Upon finding out, however, that that patent did not cover the inven-
tion in issue, which, as above stated, had been canceled during the
pendency of the application, he filed his application involved in this
interference, which was subsequently placed in interference with an
application of Collis which had been filed in the meantime.
The Examiner of Interferences held that thr^ device, Exhibit C,
relied upon by Collis, amounted to nothing more than an abandoned
experiment, and that in the absence of any showing of diligence
or excuse for his lack of diligence from 1906 to 1909 his right to a