Claims 3 to 8, inclusive, include also a "size testing" device useful with
any check controlled apparatus, and these claims are further rejected as
aggregations for this reason. See the patent to Joy, 767,345, August 9, 1904,
(194—102.)
Responsive to amendment of October 2, 1911.
The claims are rejected as aggregations for the reasons noted in the last
Offtee letter.
Attention is called to the patents to Clifford, 414,795, November 12, 1889,
(194—30,) Dieterich. 452,636. May 19, 1891, (194—58,) and Cornell, 441,536,
November 25, 1890, (194—57.)
Responsive to letter of December 1, 1911.
The claims in this case define aggregations for the reasons noted in em parte
Caster of record, third section of the syllabus as noted in the Office letter of
July 22, 1911.
The Office cannot suggest claims but may only act on those presented.
It would seem that there should have been no misunderstanding
in the mind of the attorney as to the grounds of the rejection thus
given. Reference was made to ex parte Caster^ which is to be con-
sidered in connection with the various references cited to make clear
the reasons of the rejection.
At the same time the Examiner's actions do not deal with the case
with the particularity and clearness that they might. They might
easily have been so worded that no misunderstanding was possible.
For instance, in the letter of December 12, 1911, which preceded the
final rejection, it was held that the claims —
define aggregations for the reasons noted in ex parte Caster of record, third
section of the syllabus.
Ex parte Cosier does not deal with the question of aggregration,
properly speaking, and the third section of the syllabus does not
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DEOISIONS OF THE COMMISSIONEB OF PATENTS. 293
set forth a ground upon which the present claims could be rejected.
Following that portion of the decision to which the third section
of the syllabus refers will be found a statement of the reasons for
rejecting a certain class of claims under which the Examiner evi-
dently thinks the claims in this case fall. Briefly stated, it is this:
that where a combination of elements is old claims to that combina-
tion should not be allowed, whether they state the elements of the
combination broadly or specifically, unless the specific form of the
elements themselves enter into the combination to produce a new
result. This ground of rejection is in no way peculiar to the claims
relating to the coin-controlled art, and the Examiner should cite the
art which he considers to disclose the combination claimed and apply
that' art to the various claims in such a way as to make the reasons
of his holding clear.
On the whole it is believed that the applicant is entitled to a more
full and complete statement of the relation of the art to his claim
and the reasons for the rejection entered.
The petition is therefore granted.
Ex PARTE AliLGOEVER.
Decided July 26, 1912.
183 O. G., 505.
!• Tbadb-Mabks — Goods ot the Same Debobiptive Pbopebties — ^''Stbup fob
Flavobino BEVEBAeES/* '* Ginoeb-Ale, Sabsapabilla, and Lemon-Soda.'*
A concentrated syrup for flavoring beverages Held to constitute goods
of the same descriptive properties as ginger-ale, sarsaparilla, lemon-soda,
and club-soda.
2. Same — Similabity — " Rex-0-Tone " and " Rex."
The marks " Rex " and " Rex-0-Tone " bear such a resemblance to each
other as would be likely to confuse purchasers if the two marks were con-
currently used upon goods of the same descriptive propertiea
On Appeal.
tbade-mabk fob tonics, bevebagxs, and bxtbacts.
Messrs, Edgar Tate cfe Co. and Messrs. Herrick & Drew for the
applicant.
Billings, First Assistant Commissioner:
This is an appeal from the decision of the Examiner of Trade-
Marks refusing to register " Rex-0-Tone " as a trade-mark applied
to a concentrated syrup for flavoring beverages. Registration was
refused in view of the mark " Rex " applied to ginger-ale, sarsa-
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294 DECISIONS OF THB OOMMISSIONEB OF PATEKT8.
parilla, lemon-soda, and club-soda, registered May 26, 1903, l^
William A. Megrath, No. 40,440.
Applicant contends that the goods are of different descriptive
properties and that the marks are not deceptively similar. Appli-
cant's flavoring-syrup is for the preparation of drinks, and the labels
filed bear directions for its use in making soda, which is one of the
drinks to which the registered mark is applied.
It is believed that these goods are of such a similar nature that a
purchaser would naturally be led to believe that they were put up
by the same manufacturer if he found upon them the same or similar
trade-marks.
" Rex " and " Rex-O-Tone " clearly bear such a resemblance to each
other as would be likely to confuse purchasers if the two marks were
concurrently used upon goods of the same descriptive properties.
The Examiner in his statement has cited a number of instances in
which marks quite as dissimilar as these have been held deceptively
similar.
The decision of the Examiner of Trade-Marks is affirmed.
Ex PARTE Bass.
Bedded September 9, 191S.
183 O. a, 506.
Application — Pbosecution — Final Rejection.
A final rejection should not be given upon the second official acti<m unless
an unmistakable issue is reached between the applicant and the Elxaminer
as to the pat^itability of the invention claimed.
On Petttion.
combined qage and cuttinq-tooi..
Mr. Victor J. Evans for the applicant.
Tennant, Acting Commissioner:
This is a petition that the Examiner be directed to waive the final
rejection in the above-entitled application.
The record shows that in the first action the Examiner made cer-
tain criticisms of the specification and rejected the claims as not
being supported by the drawing and also in view of references. The
applicant thereupon amended the same by directing the substitution
of a single claim and corrections of the matters objected to by the
Examiner in the specification. The Examiner thereupon rejected the
new claim as being misdescriptive and also in view of the references
of record and said :
Applicant having failed to so amend as to avoid the refer^ioes, and not
having traversed the position of the Bxaminer hj argumoit, this rejection is
made final.
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DB0I8I0NS OF THB COMMISSIONEB OF PATENTS. 295
Thereafter applicant requested the entry of a further amendment
and accompanied the same by an argument pointing out ^e alleged
difference between the applicant's structure as set forth in the claims
and the references of record. This amendment was refused entry in
view of the decision in ew parte Miller (C. D., 1909, 23; 139 O. G.,
730) and others of the same character.
AVhile the Examiner was correct in insisting upon compliance with
the provisions of Rule 68, it does not appear that such an issue had
been reached as to the patentability of the invention as is contem-
plated by the decisions cited. Final rejection should not be given
upon the second official action unless an unmistakable issue is reached
between the applicant and the Examiner as to the patentability of the
invention claimed.
Tlie petition is granted.
Ex PARTE Shumate Razor Company.
Decided September 16, 1912,
183 O. a, 506.
TkaDB-MaBKS — ^DbSOBIPTITB — "TUNOSTEEL** FOB RaZOBS AND FoCKET-KNIYKS.
The mark " Tungsteel " as applied to razors and pocket-knives Held not
registrable, since it would clearly indicate that the plates were made of
tungsten steel.
On Appeal.
TBADB-MABK TOB BAZOBS AND POCKTr-KNIYES.
Messrs. Carr <& Garr for the applicant.
Tennant, Assistant Commissioner:
This is an appeal from the action of the Examiner of Trade-Marks
refusing the registration of the word " Tungsteel " as a trade-mark
for razors and pocket-knives.
Registration is refused upon the ground that the word "Tung-
steel " is a contraction or misspelling of the words " tungsten " and
"steel," which as applied to the merchandise above specified is de-
scriptive in character.
It is urged that the word " Tungsteel " is an arbitrary word and
that —
assuming, however, that the newly coined word "Tungsteel" suggests a com-
bination of the words " tungsten " and ** steel/' the fact remains that the word
" Tungsteel " is newly coined and is arbitrary in its application to razors and
pocket-knives, and the Examiner tails to point out that tungsten steel has been
used to any considerable extent or is desirable fos use in the manufacture of
razors or pocket-knives.
54282*— 13 ^22
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296 DECISIONS OF THE COMMISSIONEB OF PATENTS.
In the early history of this application the Examiner referred to
the Century Dictionary and Cyclopedia^ in which it is stated that —
" tungsten steel *' is a variety of special steel, now largely employed in the
manufacture of the harder grades of crucible steel. • ♦ ♦ Tungsten steel is
exceedingly hard and very brittle; it is used chiefly for the tools of lathes and
4)laners for heavy work.
It is contended in applicant's brief that the latter quality is unde-
sirable for pocket-knives, and it is therefore urged that the rejection
of the Examiner, even assuming that the ^ark is suggestive of the
character of the goods, is erroneous. This contention of the appli-
cant is not believed to be well founded. Tungsten steel is well known
as a steel ha^-ing particular qualities, and the use of the contracted
word "Tungsteel" would clearly indicate that the blades of the
knives or razors were made of tungsten steel. If the articles were so
constructed, the term would be descriptive of the quality or character
of the goods; if not, it would be deceptive, and in either event pro-
hibited registration.
The decision of the Examiner of Trade-Marks is affirmed.
Onderdonk v. Rontke v. Moffatt.
Decided September 26, 1912,
183 O. G.. 507.
Intebfebence — Motion to Dissolve — ^Tbansmission.
Where in an interference involving two parties no motion to dissolve was
made on the ground that the issue is not patentable, Held that a motion to
dissolve on this ground filed after the addition of a third partjr to the
interference was properly refused transmission.
Appeal on Motion.
FOLDEB FOB SEWIN0-MA0HINE8.
Messrs. Sturtevant cfe Mason for Onderdonk.
Mr. F. W. Ostrom and Mr. Henry Calver for Rontke*
Messrs. Sturtevant <& Mason for Moffatt.
Tennant, Assistant Commissioner:
This is an appeal by Rontke from a decision of the Examiner of
Interferences refusing to transmit a motion to dissolve by him in
so far as it is alleged that the counts of the interference are not pat-
entable in view of the prior art.
It appears that count 1 of this interference was count 9 of inter-
ference No. 33,894, involving the parties Onderdonk and Rontke,
and that counts 2 and 3 correspond to claims which were presented in
that interference by Onderdonk under the provisions of Rule 109.
In view of the fact that the party Moffatt could make these claims
this interference was declared to involve three parties.
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DECISIONS OF THE COMMISSIONER OF PATENTS. 297
Within the period allowed by the rules, after the approval of the
preliminary statements, the party Rontke moved to dissolve, upon
the ground that the claims have different meanings as applied to the
applications of Moffatt and llontke, that Moffatt has no right to
make the claims, and that the claims are unpatentable in view of the
prior art. The Examiner of Interferences transmitted the motion
as to the first and second grounds, but refused to transmit it in respect
to the allegation that the claims are not patentable in view of the
prior art, on the ground that Rontke should have raised this question,
if at all, upon a motion to dissolve in the earlier interference or in
connection with Onderdonk's motion to add claims corresponding to
certain of these counts under Rule 109.
It is urged in behalf of Rontke that the claims as read upon the
Onderdonk and Rontke structure appear to be patentable over the
prior art, but when read more broadly in such a manner as to include
the structure of Moffatt, which differs widely from that of either of
the other parties, that he should be entitled to urge the non-patent-
ability of the issue thus construed. This contention is believed to
be without substantial foundation.
It is well settled that the issue in interference is to be considered
as broadly as the terms will permit. As stated in the case of Andrews
V. Nilson, (C. D., 1906, 717; 123 O. G., 1667; 27 App. D. C, 451:)
The reasonable presiiinption is that an inventor intends to protect his inven-
tion broadly, and consequently the courts have often said that the scope of a
claim should not be restricted beyond the fair and ordinary meaning of the
words, except for the purpose of saving it from Invalidity.
It is not seen, therefore, that the inclusion of the party Moffatt in
this interference affords any sufficient reason for the transmission
of the motion to dissolve. A further reason why the motion should
not be transmitted is that in support of the non-patentability ten
patents are cited, unaccompanied by any sufficient statement of the
manner in which the references are to be applied to the claims.
The decision of the Examiner of Interferences is afftrmed.
Ex PARTE Thompson.
Decided February /2, 1912.
183 O. G., 781.
1. APPI.ICATION — DlSCLOSFBE.
A petition stating that the attorneys filed an informal application and
then asking that the Examiner instruct them in what way to make it formal
denied, since it is obvious that the invention for which a patent is sought
must be disclosed by the applicant and not by ihe Examiner.
2 Same — New Matter — Question op Reviewable by Examinebs-in-Chief.
Whether the claims in an application as amended cover new matter is a
question reviewable in the first instance by the Examinei*s-in-Ohief.
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298 DECISIONS OF THE C0MMI8SI0NBB OF PATENTS.
On Petition.
FEED-COOKEB.
Messrs. Chandlee (Sk Chandlee for the applicant
Moore, Commissioner :
This is a petition that certain instructions be given to the Ex-
aminer.
On December 31, 1910, permission to amend the drawings in this
case was finally refused and the claim was finally rejected on the
references of record and on the ground that " no smoke consumer in
addition to element 15 '' was either shown or described when the case
was filed. On July 13, 1911, there was filed a petition from the
action of the Examiner refusing permission to amend the drawing.
It was also requested that the Examiner be directed to consider the
application on its merits. The petition was dismissed on the ground
that it raised a question of merits, reviewable in the first instance
by the Examiners-in-Chief on appeal, and with respect to the request
that the Examiner be instructed to act on the merits it was pointed
out that the case had been throughout rejected on the references.
The present petition states that the attorneys have come into the
Office with an informal application and —
they ask your honor to direct the Examiner to Instruct them In what way to
make the application formal.
The petition also asks whether the Examiner should have required
the applicant to illustrate in some conventional way the element
included in the original claim or to eliminate the same from the
application.
It should have been obvious to the attorneys that, as pointed out
by the Examiner, the invention for which a patent is sought must be
disclosed by the applicant for patent and not by the Examiner. If
the application does not disclose the invention claimed, it does not
comply with the statute, and any attempt to amend that application
so as to put therein an invention not originally shown and described
would constitute new matter. TVTiether such is the case in the present
application is a question, as held in the decision on the prior petition,
reviewable in the first instance by the Board of Examiners-in-Chief.
No irregularity whatever has been shown in the actions of the
Examiner.
It is to be noted that no action responsive to the final rejection of
December 31, 1910, has been taken in this application since that time.
The application therefore stands abandoned.
The petition is denied.
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DECISIONS OF THE COMMISSIONER OF PATENTS. 299
£x PARTE PaRTKIDQE.
Decided ApHl 11, 1912.
183 O. G., 781.
AssioNiiENTS — Conflicting — ^Disputes Not Settled by the Office.
The Patent Office will not undertake to settle disputes among conflicting
assignees, but will leave the parties to their remedy in the courts.
On Petition.
smelter.
Messrs. Spear^ MiddUton^ Donaldson <& Spear for the applicant.
Messrs. Byrnes^ Tovmsend cfe Brickenstein for The Universal
Smelting and Sefining Company.
MooRE, Commissioner:
This is a petition by the applicant, Partridge, through his attorneys
of record —
♦ ♦ ♦ that the flnal fee ♦ ♦ ♦ be not accepted, and the case be allowed
to become forfeited so that your petitioner may renew the same and thus have
the necessary time within which to apply for his foreign patents.
The assignment records of this Office show the following two con-
flicting assignments relating to this application : an assignment dated
January 23, 1911, recorded February 23, 1911, from the applicant,
Partridge, to The Universal Smelting and Kefining Company, also
an assignment dated November 3, 1910, recorded March 31, 1911, from
the applicant. Partridge, to The Partridge Smelting and Refining
Company.
The petition is accompanied by an affidavit of Partridge in which
he alleges that the first of the above-mentioned assignments is a
forgery. As against this affidavit there have been filed on behalf of
The Universal Smelting and Refining Company the affidavits of
A. W. Hille and of Mrs. A. L. Briggs, who states that she is secre-
tary of The Universal Smelting and Refining Company and that
A. W. Hille is president of said company, both of whom allege that
they were present at a meeting of the board of directors of The Uni-
versal Smelting and Refining Company on the 30th day of January,
1911, and that Allen R. Partridge executed and delivered said assign-
ment to The Universal Smelting and Refining Company at that meet-
ing, also the affidavit of George M. Jarecki, the notary before whom
said assignment was acknowledged, who states that in his presence, on
January 30, 1911, Partridge acknowledged signing and delivering an
assignment to The Universal Smelting and Refining Company and
that at the reque^ of Partridge he made the verification or acknowl-
edgment and that the signature and seal to the same are his.
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300 DECISIONS OF THE COMMISSIONER OF PATENTS.
It is well settled that this Office will not undertake to settle disputes
among conflicting assignees, but must leave this to the courts. It is
not necessary in order to dispose of the present petition to determine
the rightful owner of the application in question.
It is noted that while Partridge claims that the assignment to The
Universal Smelting and Refining Company is a forgery he admits the
assignment of all his right, title, and interest in the invention of said
application to The Partridge Smelting and Refining Company. He
has no such interest, therefore, as entitles him to be heard upon the
question of whether the payment of the final fee was authorized.
No protest against the receipt of the final fee and the issuance of
the patent has been made by The Partridge Smelting and Refining
Company. Under these circumstances it must be held that there was
no error in receiving and applying the final fee.
Petitioner states as a further reason why this petition should be
granted that he desires to take out foreign patents and that it is
doubtful if he will have time to file such applications before the issu-
ance of a patent upon the application in question if the fee which has
been paid, as stated above, is applied. The showing in support of
this ground of the petition is altogether too indefinite to entitle it to
consideration. It does not appear what effort or progress has been
made concerning said foreign applications, nor whether, as a matter
of fact, it would not be possible to file said applications in time if
the patent is allowed to issue in due course upon the present applica-
tion. Said patent in due course will issue under date of May 7, 1912,
which will give petitioner over three weeks in which to perfect the
filing of his foreign applications.
The petition is denied^ and the issue of the patent will not be
withheld.
De Ferranti v. Lindmark«
Decided April 6, 1912.
183 O. G., 782.
Interference — Priorftt.
Evidence considered and Held to establish that Lfndmarlc introduced the
invention into this country prior to the earliest date claimed by de Fer-
ranti and was reasonably diligent in filing his application and that priority
was therefore properly awarded him.
Appeal from Examiners-in-Chief.
STEAM-TURBINC
Messrs. Spear^ Middleton^ Donaldson cfe Spear for de Ferranti.
Messrs. Harding <& Harding for Lindmark. {Mr. George J. Hard-
ing and Mr. Fraiik S. Bvsser of counsel.)
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DECISIONS OF THE COMMISSIONER OF PATENTS. 301
Billings, First Assistant Commissioner:
This is an appeal by de Ferranti from a decision of the Examiners-
m-Chief affirming the decision of the Examiner of Interferences
awarding to Lindmark priority of the invention of the following
issue:
1. In combination with a plurality of elastic-fluid motors wherein said fluid
undergoes progressive expansions, means for maintaining uniform the tempera-
ture of said fluid at the inlets of the several motors.
2. The combination of a plurality of elastic-fluid turbine- wheels, a shaft
supporting the same, a casing, partitions in said casing forming successive
chambers, conduits exterior to said casing and connecting said chambers in
series, and means for heating said conduits.
3. The combination of a plurality of elastic-fluid turbine-wheels, a shaft
supporting the same, a casing, partitions in said casing forming successive
wheel-chambers, c<mduits exterior to said casing and connecting said chambers
in series, and a duct for conveying heated gas; the said connecting-conduits ex-
tending into said duct
De Ferranti is involved in this interference upon an application
filed March 9, 1905, as a division of a prior application filed October
81, 1903. He rests his case upon a British application filed November
11, 1902. His claim to the benefit of this application is based upon a
certified copy of said application and a stipulation that he is the
applicant named in the said British application.
Lindmark has a patent granted November 1, 1904, upon an appli-
cation filed January 16, 1903. He took testimony for the purpose of
establishing an introduction of the invention into this country on
October 15, 1902.
The lower tribunals agreed in holding that Lindmark introduced
the invention of the issue into the United States on October 15, 1902,
when his exhibits " 1902 Description " and " 1902 Blue Print " were
received in New York.
De Ferranti does not dispute that the evidence shows that these
exhibits were received in New York on October 15, 1902 ; but he con-
tends that these exhibits do not disclose —
means for maintaining uniform the temi^erature of said fluid at the inlets of
the several motors,
as called for in count 1, and he has taken the testimony of the expert
Ayres in support of his contention. It is pointed out that Lind-
mark's exhibit " 1902 Blue Print " shows five heat-absorbing flanges
on the conduit 12, six flanges upon the conduit 11, and seven flanges
upon the conduit 10, whereas his patent involved in the interference
shows a uniform number (six) upon each conduit. It is argued that
this difference is material and that if the blue-print shows the inven-
tion the patent does not and, vice versa, that if the patent discloses
the invention it is not found in the blue-print. Neither the Lind-
mark exhibit " 1902 Description " nor the specification of the Lind-
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802 DECISIONS OF THE COMMISSIONEB OF PATENTS.
mark patent states the number of heat-absorbing flanges that are to
be located on the respective conduits. Moreover, these flanges do not
constitute the only —
means for maintaining uniform the temperature of the fluid at the inlet of
the several motors,
for both the exhibits and the patent disclose the conduits increasing