shall state or refer to all his objections.
Reference is made to Rule 134, which relates to appeals and which
contains the following provision :
There must have been two rejections of the claims as originally filed, or, if
amended in matter of substance, of the amended claims, and all the claims
must have l>een passed upon, and except in cases of division all preliminary and
intermediate questions relating to matters not affecting the merits of the in-
vention settled, before the case can be appealed to the Examiners-in-Chief.
The Examiner's letter, dated June 28, 1912, states :
As this requirement is analogous to a requirement for division as stated in
em parte Chapman, of record, it foUows that an examination on the merits is
not in order before an appeal is taken to the Board of Examiners-in-Ghief.
The statement contained in ex parte Chapman referred to is as
The requirement for the elimination of a part of the claims because of need-
less duplication is to be regarded as a rejection for the same reasons that a
requirement for division is a rejection. This applicant's remedy, therefore, is
an appeal to the Examiners-in-Ohief and not an interlocutory petitiou.
While the action of the Examiner in this case is substantially in
accordance with the practice set forth in ex parte Chapman and
ex parte Kadow^ supra^ it is believed that the business of the OflSce
would be expedited if action upon the novelty of the invention were
also given by the Examiner. As pointed out in ex parte Chapman:
It is clearly the duty of this Office to see that patents do not issue with
claims so multiplied as to embarrass and confuse the public. It should allow
sufficient claims to amply protect the real invention but should not permit need-
In cases of this character it is believed that in addition to group-
ing the claims action upon the merits of each group should be given,
in order that the applicant may be in a position to consider the ad-
visability of eliminating such claims or groups of claims as are
anticipated by the prior art, as well as the question of restricting the
number of the claims to one of each group. By following this course
of action strict compliance will be had with the rules and the full
benefit of the practice announced by ex parte Chapman and ex parte
Kadow will be obtained, since by repetition of the requirement that
each group be restricted to one claim the case will be placed in final
action in respect to this ground of rejection in the same manner in
Digitized by VjOOQIC
DECISIONS OP THE COMMISSIONER OF PATENTS. 275
which final action is reached by repetition of rejections in view of
Ths petition is gnmted to the extent indicated*
Ex PARTE HOBBS.
Decided April S, 1912.
183 O. G., 217.
PATENTABnJTT — BlLUABD-OOUNTEBS — SUBSTITUTION OF METAL FOB WOOD— No
The substitution of sheet metal for wood in billiard-counters Held not
to have required inyention, the advantages alleged for the metal counters
being due to the well-known prop^ties of sheet metal.
Appeal from Examiners-in-Chief.
Mr. J. N. Mclntire for the applicant.
This is an appeal from a decision of the Eiutminers-in-Chief affirm-
ing the rejection by the Primary Examiner of the following claim :
1. In a string billiard counter, the combination with the usual wire on
which the ''buttons" are strung, of counter buttons which are composed
wholly of sheet metal and are centrally perforated; all substantially as and
for the purposes set forth.
The references are: Waterbury et al.<, 457,859, August 18, 1891;
Lachman, 492,924, March 7, 1898; Smith, 628,862, July 11, 1899;
Yoxall, 971,164, September 27, 1910.
The patent to Waterbury et al. shows a billiard-counter consist-
ing of a wire or bar upon which are strung wooden counter-buttons.
This reference shows the combination of a wire and counter-buttons
to be old, and the question involved in this appeal is whether inven-
tion is involved in substituting sheet metal in place of wood as the
material of which the buttons are made. The remaining references
cited above show it to be old to make wheels and the rollers of
casters and roller-skates of sheet metal.
Appellant claims a great advantage in his sheet-metal counters over
the wooden counters in that they are non-breakable. To emphasize
this, he has cited several patents for counters so constructed as to
permit their substitution for broken counters without taking down
Admitting that this advantage is possessed by appellant's counters,
it is due to a well-known property of sheet metal. It has become
so common to make various articles, as shown by the references, of
eheet metal that no invention is thought to be involved in the idea
276 DECISIONS OP THE COMMISSIONER OP PATENTS.
that this metal might advantageously be used in the construction of
This case is believed to fall in the class of devices held to be unpat-
entable by reason of the substitution of material in Am. Acetylene
Burner v. Kirchherger et al.^ (142 Fed. Rep., 744;) Am. Lava Go.
V. Steward^ (155 Fed. Rep., 731;) Marshall v. Pettingell-Andrews
Co.^ (164 Fed. Rep., 862;) Cover v. American Thermo-Ware Co.j
(188 Fed. Rep., 670;) in re RusseU, (C. D., 1911, 322; 165 O. G., 474;
36 App. D. C., 444,) because the substitution developed no new uses
or properties and no invention was involved in making the change,
rather than in the class where the substitution was held to involve
invention and to be patentable, of which examples are found in
George Frost Go. v. Scmistag^ (180 Fed. Rep., 739;) Hogan v. West-
moreland Specialty Go.^ (163 Fed. Rep., 289.)
The distinction between the two classes is well set forth in Union
Hardware Go. v. Selchow^ (112 Fed. Rep., 1006-1008,) where the
These differences are weU illustrated by a comparison of this cause with
George Frost Co. v. Cohn (decided contemporaneously; 112 Fed., 1009). The
court has considered these causes together because it is difficult to conceive
of better illustration of the rule referred to. Both inyolve a change of ma-
terial in existing structures; but in the one instance the skate operates after
the change precisely as it did before, and in the other a hose supporter which
does not support is converted, by the change, into a hose supporter which does
support In the former case, by the use of cheaper, Ughter and stronger
metal the skate is made cheaper, lighter and stronger, in the other, the substitu-
tion of a rubber button for a metal button transformed a destructiye and
inoperative device into a highly successful one.
A case analogous to the present one is that of Hicks v. Kelsey^
(6 O. G., 94; 18 Wall., 670,) where the United States Supreme Court
held that the substitution of iron for wood in a wagon-reach was not
a patentable invention, notwithstanding the iron reach was a better
one, required less repair, and possessed greater solidity.
The decision of the Examiners-in-Ghief is afiirmed.
Ex PARTE HORTON AND K^EEN.
Decided April iO, 1912.
183 O. G., 217.
1. Patentability — Fobce-Feed LtrsBiCATOB.
Where the prior art shows a force-feed lubricator the spray-pipe of which
communicates with the cross-head pin of an engine, a claim differentiating
therefrom only in specifying that the spray-pipe communicates with the
expansion-chamber of the engine-cylinder Held unpatentable.
2. Same — Same.
Certain claims for a force-feed lubricator Held patentable over the prior
Appeal from Examiners-in-Chief.
DECISIONS OP THE COMMISSIONER OF PATENTS. 277
AFPABATUS FOB LUBRICATING EN0INE8.
Messrs. Linthicum^ Belt <& Ftdler for the applicants.
This is an appeal from the decision of the Examiners-in-Chief
affirming the action of the Primary Examiner rejecting the follow-
ing claims :
1. In a lubricator, the combination with a spray pipe, of a drop feed lubri-
cator in communication with the pipe and including a casing and a dropping tube
extending therethrough, a conduit leading from a source of fluid pressure into
the casing in rear of the discharge «id of the dropping tube, a valve in the con-
duit, and means for intermittently op^ilng the valve.
2. The combination of an engine cylinder, a lubricator having a spray pipe
communicating with the expansion chamber of the cylinder independent of the
chai-ge inlet, and means for supplying fluid pressure to the spray pipe for spray-
ing the lubricant into the expansion chamber.
8. The combination with an engine cylinder, of a spray pii)e communicating
with the expansion chamber of the cylinder independent of the charge Inlet, a
drop feeding lubricator In communication with the spray pipe, a conduit leading
through the lubricator from a source of fluid pressure for supplying the spray
pipe with pressure, a valve in the conduit, and means for intermittently opening
4. The combination with a gravity feed lubricator and its delivery connection,
of a fluid pressure supply connected with the discharge of the lubricator, a
valve controlling the pressure supply, and means for operating the valve at
5. The combination with a lubricator having inlet and discharge outlets, of an
independent fluid pressure supply delivered into the discharge connection of the
lubricator, a valve for controlling the fluid pressure supply, and means for
intermittently operating the valve to thereby permit the flow of fluid pressure
to discharge the lubricant
0. Apparatus for lubricating engine cylinders comprising means connecting
a dropi^ng tube with a source of liquid lubricant, a conduit into which said drop-
ping tube discharges regulated quantities of the lubricant, said conduit leading
into said engine cylinder, a fluid pressure supply connected with the conduic
between the dropping tube and engine cylinder, a valve controlling the fluid
pressure supply, and means for intermittently operating said valve to admit
fluid pressure to the conduit and thereby force lubricant therein into the engine
The references cited are the patents to Pielicke, 744,101, November
17, 1908; Carlsson et oi.^ 719,665, February 3, 1903.
Claim 1 is rejected on each of the references cited. The claim does
not read upon the patent to Pielicke, because that patent does not
show a valve in the conduit leading from the source of fluid-pressure
into the casing in the rear of the discharge end of the dropping-tube,
as called for by the claim. It does show a valve; but it is located in
the dropping- tube (if it can be called such) and not in the fluid-pres-
sure pipe. The claim may be also said to distinguish in calling for a
spray -pipe, inasmuch as Pielicke discloses a graphite-lubricator, and
278 DECISIONS OP THE COMMISSIONER OF PATENTS.
graphite can hardly be said to form a spray. It is by no means dear
that changing the position of the valve of Pielicke from the location
he shows to that defined in the claims would not produce a materially-
different result, and it is clear that to substitute oil for the graphite
as a lubricator would require substantial changes in the structure. I
am not prepared to say, therefore, that the structure defined by this
claim is devoid of invention over the Pielicke reference.
The Examiners-in-Chief found, however, that this claim reads
directly upon the patent to Carlsson et oil. The diflBiculty of reading
this claim upon the Carlsson patent is that the means for producing
the fluid-pressure must also be read as the ^' means for intermittently
opening the valve." The Examiners-in-Chief state that the " motion
of the piston compressing air against the valve" is the means for
intermittently opening it. It is obvioysly error, however, to construe
a " motion " of the parts as answering to a physical element called for
by the claim. It might be argued that inasmuch as the claim includes
the source of fluid-pressure only indirectly the cylinder and piston
for producing this pressure in the Carlsson device may be used to
anticipate the element defined in the claim as '^ means for intermit-
tently opening the valve." Inasmuch, however, as the valve itself in
this patent performs a wholly different function from applicants'
valve, I am of the opinion that at best it requires a very strained
construction to hold this claim anticipated by the Carlsson reference.
It is believed that the claim should have been allowed over the art
Claim 2 does not call for any valve or means for opening it and
is fully met by the Carlsson reference, except that the spray-pipe does
not communicate with the expansion-chamber of a cylinder, but with
the cross-head pin of an engine which it is desired to lubricate. I see
no invention, however, in applying the oiler to an engine-cylinder
in the manner suggested. It must be held, therefore, that this claim
fails to define any invention over the Carlsson reference.
Claim 3 is allowable for the same reasons as claim 1. Claims 4, 5,
and 6 all specify as an element " a valve controlling the pressure-
supply." The valve in Carlsson obviously does not control the fluid-
pressure supply. It is a mere check-valve to prevent back-pressure
upon the oil in the spray-pipe due to the suction caused by the
receiving-piston c. The valve in Pielicke does not control the pres-
sure-supply in the sense the expression is used in these claims, because
the fluid-pressure is constantly exerted upon the supply of lubricant,
the valve being located beyond the point at which the lubricant enters
and merely serving to permit the passage of the lubricant under the
influence of the constantly-supplied pressure. I am of the opinion,
therefore, that neither of the references meet claims 4, 6, or 6, either
Digitized by VjOOQIC
DECISIONS OF THE COMMISSIONER OF PATENTS. 279
in terms or spirit, and it is believed that they should have been
The decision of the Examiners-in-Chief is affirmed as to claim t
and reversed as to claims i, 5, 4? 5, and 6.
Ex PARTE HaNNA and HaNNA«
Decided June 22, 1912.
183 O. G.. 2ia
Application — ^Prosecution — ^Postponement.
The statements of a foreign attorney that he was under the impression
that the case was being prosecuted by his associate, who had been in-
structed to keep the application pending, Held insufficient to establish that
the delay in the prosecution of the case was unayoidable, no showing being
made why the associate attorney did not reply to the Office letter and no
excuse being given for the delay in filing the petition after the foreign
attorney learned tliat an amendment had not been filed within the year.
MANX7FACTXJBB OF BUSHES OB BEABINGS FOB SHAFTS, ETC.
Mr. WiUiam Henry Taylor and Mr. Herbert W. T. Jenner for the
BnjLiNGS, First Assistant Conmiissioner:
This is a petition that the above-entitled application be held not
On May 10, 1910, applicants were informed that the title should be
changed and that certain figures not specifically covered by the claims
should be canceled.
An amendment was filed on June 17, 1911, which on June 24, 1911,
the Examiner informed the applicants could not be entered, since it
was not filed within the year, and the present petition was filed June
8, 1912. The petition is accompanied by an affidavit of the foreign
attorney, who states that he was under the impression that the case
was being prosecuted by the associate attorney ; that the filing of the
divisional application was postpcmed pending the allowance of this
application; that on May 23, 1910, the a£sociate attorney was in-
structed "to keep the original application going;" that on April 5,
1911, a letter of inquiry regarding the original case was sent to the
associate attorney, which it subsequently appeared was not received;
that the divisional application papers were forwarded May 17, 1911,
and that it was not imtil the receipt of a letter of June 13, 1911, that
it was learned that this case had become abandoned.
The facts stated are clearly insufficient to show that the delay in
the prosecution of the case was unavoidable within the meaning of
M282'— 18 ^21
Digitized by VjOOQIC
280 DECISIONS OF THE COMMISSIONER OF PATENTS.
section 4894, Revised Statutes. It does not appear why the associate
attorney did not respond to the letter of May 10, 1910; nor is any
excuse whatever given for the daly in filing this petition after the
foreign attorney learned that no amendment had been filed within
a year from that date.
The petition is denied.
B. Fischer & Co. v. John Blaul's Sons Company v. The Columbia
Bice Packing Co., Ltd.
Decided July 26, 1912.
183 O. G., 219.
TbADE-MaBKS — SiMILARITT — " KiTCHEN QUEEN,** " QUEEN,** ** QlTEEN QirALXTt.**
Where a prior registration showed in the drawing the words ** Queen
Quality*' and in the specification the latter word was disclaimed, H^d
that registration of a mark consisting of the words '* Kitch^i Queen " as
applied to the same class of goods was properly refused, since a marlc con-
sisting of the word " Queen ** or of the words *' Queen Quality " is so simi-
lar to a marlc consisting of the words '* Kitchen Queen ** that their simul-
taneous use would he likely to cause confusion in the mind of the public
Appeal on Motion.
TBADE-MABK FOS BICE.
Messrs. 0. A. Snow <& Co. for B. Fischer & Co,
Mr. Cyrus Kehr for John Blaul's Sons Company.
The Columbia Rice Packing Co.^ Ltd.^ pro se.
Billings, First Assistant Commissioner:
This is an appeal by John BlaXiPs Sons Company from the decision
of the Examiner of Trade-Marks denying its motion to dissolve the
The motion to dissolve is based on the ground that its mark and
the mark of B. Fischer & Co. are not so similar as to be likely to cause
confusion in the trade by reason of their simultaneous use upon
goods of the same descriptive properties.
The mark of John Blaul's Sons Company consists of the words
" Kitchen Queen." The mark of B. Fischer & Co. as set forth in
its application as filed consists of the words " Queen Quality." The
Examiner thereafter, under the authority of the decision in Johnson
V. Brandau, (C. D., 1909, 298; 139 O. G., 732; 32 App. D. C, 348,)
required that the word "Quality," since it is descriptive, should
either be disclaimed or removed from the drawing. The statement
of the application was then amended by inserting after the word
" drawing " the words " no claim being made to the word * Quality.' ^
DBdiSIOKS OF THE COMMISSIONER OF PATENTS. 281
It is contended on behalf of John Blaul's Sons Company that the
applicant had no right to thus change its mark, since the significance
of the words " Queen " and " Queen Quality " is entirely different,
that the mark of B. Fischer & Co. must be considered to be " Queen
Quality,'' and that this mark is not so similar to the mark consisting
of the words " Kitchen Queen " as to be likely to cause confusion.
It is not necessary to decide whether under the circumstances of
the case B. Fischer & Co. should be allowed to disclaim the word
" Quality," since, in my opinion, whether the mark of B. Fischer &
Co. be considered as consisting of the word " Queen " alone or the
words " Queen Quality " it is so similar to the mark " Kitchen
Queen " that their simultaneous use would be likely to cause con-
The decision of the Examiner of Trade-Marks is affirmed.
Beed & Carnrick v. Waterbury Chemical Company.
Decided August i, 1912,
183 O. G.. 219.
1. Opposition— Testimony— Motion to Suppress.
It is well settled that no appeal lies from the decision of the Examiner of
Interferences denying a motion to suppress testimony or postponing a con-
sideration of such a motion to final hearing.
2. Same — Same — Same — Refusal to Answer Questions.
Where a witness refases to answer questions and no application is made
to the district court for an order compelling him to answer them, a decision
on the question of suppressing the testimony will be postponed to final
Appeal on Motion.
TBADE-MABK FOB DIGESTANT8.
Messrs. Kiddie <& Wendel for Reed & Carnrick.
Mr. Wallace R. Lane for Waterbury Chemical Company.
Billings, First Assistant Commissioner:
This is an appeal by Reed & Carnrick from a decision of the Exam-
iner of Interferences denying a motion to require the AVaterbury
Chemical Company to recall one of its witnesses and direct that he
answer certain cross-questions or, in the alternative, that his entire
deposition be stricken from the record.
The Examiner of Interferences held that the witness was justified
in refusing to answer certain cross-questions. He also held that other
cross-questions should have been answered, but that as the motion
asked that the witness be compelled to answer all the questions or
282 DECISIONS OF ^HE COMMISSIONER OF PATENTS.
his deposition be stricken out the motion was denied, without preju-
dice to its renewal at final hearing. It is well settled that no appeal
lies from the decision of the Examiner of Interferences denying a
motion to suppress testimony or postponing the consideration of such
a motion to final hearing.
In the case of Greene^ Tweed cfc Co, v. Manufacturers* Belt Hook
Co. (C. D., 1908, 23 ; 132 O. G., 680) it was said :
In his decision on the present motion the Examiner of Interferences set no
Umit of appeal. In the case of Deitsch Brothers v. Loonen (C. D., 1907, 413;
131 O. G.. 2146) it was stated:
" It is believed that it will be in the interest of good practice and will work
no hardship to the parties if hereafter no appeal be allowed from a decision
of the Examiner of Interferences denying a motion to suppress testimony or
a motion to require the other party to print exhibits prior to the appeal from
his decision on priority rendered after final hearing. The question of the
correctness of his decision on the motion can of course be raised on such
Although this appeal was taken prior to the date of said decision, the reasons
which prompted the practice set forth therein are applicable to the present
case and afford an additional ground why the decision of the Examiner of Inter-
ferences should not be disturbed.
It is to be noted, furthermore, in the present case that no applica-
tion was made to the Federal court of the district wherein the tes-
timony was taken for an order compelling the witness to answer the
questions. In the case of the Independent Baking Powder Company
V. Fidelity Manufacturing Company (C. D., 1901, 7; 94 O. G., 222)
the Commissioner, after referring to the fact that no such applica-
tion was made in that case, said :
Where a party fails to take such action, it is the settled practice of the Office
to postpone a decision on the matter until final hearing on priority, when the
whole record is reviewed.
The practice in opposition proceedings follows that of the Federal
equity practice. In the case of H. Scherer <& Co. et cH. v. Everest
(168 Fed. Rep., 822) the Court of Appeals for the Eighth Circuit,
which is the circuit in which the present deposition was taken, said:
The rulings of the referee and of the court upon the yarlous motions to
suppress the depositions of these witnesses have been considered, so far as th^
were material, on the theory, adopted by court and counsel below, that the sup-
pression of depositions was the proper remedy for the refusal of witnesses to
produce relevant evidence. But this is an error. The remedy in the national
courts in equity and in bnnl^ruptcy for the failure or refusal of a witness to
answer competent questions or to produce material evidence Is not the suppres-
sion of the deposition or of the evidence which he does produce, and that for
the reason that all evidence which is not glaringly Irrelevant, whether deemed
material and competent by the referee and the court below or not, must be made
a part of the record, and In case of an appeal retnmed to the appellate court to
the end that a final adjudication may be rendered in that court without another
Digitized by VjOOQIC
DECISIONS OP THE COMMISSIONEB OF PATENTS. 283
hearing below. The true remedy for the refusal of a witness to answer proper
questions or to produce relevant evidence Is an enforced order of the proper
court that he shall do so.
The appeal is dismissed.