in size in the direction of flow of the steam, while the flow of hot
gases in the duct E for heating the conduits is in the opposite direc-
tion. It is believed to be no more necessary that the exact size or
number of the flanges on the conduits should be stated than that
the relative increase in size of the respective conduits should be
stated. Obviously these factors will be varied as required, and by
properly proportioning them in a manner well known to those
skilled in the art it is believed that they constitute a means ade-
quately fulfilling the requirements of the claim.

Concerning counts 2 and 3, de Ferranti contends that the subject-
matter is not patentable. Inasmuch as Lindmark has a patent and
the only question involved in. the present proceeding is the right
of de Ferranti to a patent, the interference would have been dis-
solved in its initial stages without expressing any opinion upon the
merits of this question, in accordance with the practice set forth in
Lipe V. MUler, (C. D., 1904, 114; 109 O. G., 1608,) Rohins, jr., v.
Titus and Titus, (C. D., 1904, 154; 110 O. G., 310,) and GH^th v.
Dodgson, (C. D., 1905, 200; 116 O. G., 1731,) had this contention
been made in a motion for dissolution of the interference. At this
stage of the proceeding, however, it is deemed best to tenninate
the proceeding by an award of priority. In Johnson v. Mueser
(C. D., 1909, 437; 145 O. G., 764; 29 App. D. C, 61) the Court of
Appeals of the District of Columbia held that the question of the
patentability of the issue is not a jurisdictional one which must be
considered by each of the tribunals called upon to pass on the ques-
tion of priority of invention in an interference proceeding. It is
well settled that the patentability of the issue will be considered on
final hearing only under the supervisory authority of the Commis-
sioner and in a clear case. {Dixon and Marsh v. Graves et al.,
C. D., 1907, 101; 127 O. G., 1993; Sohey v. Holsclaw, C. D., 1907, 465;
126 O. G., 3041; 28 App. D. C, 65; Potter v. Mcintosh, C. D., 1907,
505; 127 O. G., 1995; 28 App. D. C, 510; Huher v. Aiken, C. D.,
1899, 166; 88 O. G., 1525.) Such a case is not presented here.

Having found that Lindmark's exhibits " 1902 Description " and
"1902 Blue Print" were received in this country on October 15,
1902, and disclose the invention of the issue, it follows that Lind-
mark is entitled to this date as his date of conception of the inven-
tion. {De Kando v. Armstrong, C. D.. 1911, 413; 169 O. G., 1185;
37 App. D. C, 314.) Since said date is prior to the earliest datp —

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DECISIONS OF THE COMMISSIONER OF PATENTS. 303

November 11, 1902 — claimed by de Ferranti, Lindmark is entitled
to the award of priority, provided he exercised due diligence jn
filing his application from a date prior to November 11, 1902, to
the date — January 16, 1903 — when the application was actually filed
in the Patent Ofiice. Although de Ferranti has not contended on
this appeal that Lindmark did not exercise proper diligence in
filing his application, the evidence upon this point has been exam-
ined, and I agree with the holding below that due diligence was
exercised in filing the Lindmark application, especially in view of
the fact that it was necessary to send the application papers abroad
to be executed.

Priority of invention was properly awarded in favor of Lindmark^
and the decision of the Examiners-in-Ohief is accordingly affirmed.



Ex PARTE Goodrich Drug Co.

Decided May 28, 1912.

183 O. G., 783.

1. TBADE-MaRKB — €r0008 OF THS SAME DESCRIPTIVE PbOPEBTIBS — ^^ LAUWDBY

Soap," ** Soap," and " Saponified Shampoo Peepabations."
Soap and saponified shampoo preparations Held to constitute goods of
the same descriptive properties as laundry soap.

2. Sami>— Similarity — " Velvet " and " Vblvetina."

The marks " Velvet " and " Velvetina " Held to be so similar that their
use upon goods of the same descriptive properties would be likely to cause
confusion in the mind of the public and deceive purchasers.

On Appeal,

trade-mark for soap and saponified shampoo preparations.
Mr. Charles E. Foster and Mr. Delhert H. Decker for the applicant.

Billings, First Assistant Commissioner:

This is an appeal from the action of the Examiner of Trade-Marks
in refusing to register the word "Velvetina" as a trade-mark for
soap and saponified shampoo preparations.

Registration was refused in view of the following: Uriah G. Beck,
January 14, 1896, No. 27,641; William J. Anderson, April 11, 1899,
No. 32,705; The Procter & Gamble Company, September 15, 1908,
No. 70,580; The Procter & Gamble Company, September 29, 1908,
No. 70,767. •

The registrations of Beck and Anderson were subsequently with-
drawn as references ; but in his statement in answer to the appeal the
Examiner says that the Beck mark was inadvertently withdrawn
and is regarded as a valid reference. This holding appears to have
been made through a misapprehension. In the paper filed June 8,



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304 DECISIONS OP THE COMMISSIONBB OP PATENTS.

1911, applicant stated that the trade-mark " Velvetine," shown in
the Beck registration, No. 27,641, was the property of the applicant
and that an assignment from the registrant to the applicant is on
record in this Office. The assignment records show that this state-
ment is correct, and the action of the Examiner withdrawing this
registration as a reference was right.

The two remaining registrations of the Procter & Gamble Com-
pany show the word " Velvet " in connection with other matter, the
word "Velvet," however, being the prominent feature. The goods
are stated to be soap for laundry use. All soaps constitute goods
of the same descriptive properties. It is a well-known fact that many
soaps are used both as laundry and toilet soaps. It is believed that
the word " Velvetina " so nearly resembles the word " Velvet " as
to fall within the prohibition of the Trade-Mark Act against regis-
tration of a mark so nearly resembling a prior registered mark that
it would be likely to cause confusion in the mind of the public and
deceive purchasers.

The decision of the Examiner of Trade-Marks is affiTmed.



Ex PARTE The Utrecht Export Cy. Griendt Brothers, lyro.

Decided September 17, 191ft.
183 O. O.. 784.

1. Tbade-Mabks — Goods of the Same Descriptive Properties — "Butter" and

"Artificial Butter."
Butter and artificial butter or " oleomargarln " Held goods of the same
descriptive properties within the meaning of the trade-mark law.<

2. Same— Similarity.

A marlc consisting of the representation of a horse grazing Held properly
refused registration in view of a registered mark consisting of the word
*• Pony " and the representation of the head of a pony or horse applied to
goods of the same descriptive properties.

On Appeal.

TRADE-MARK FOR ARTIFICIAL BUTTER.

Messrs. Gravenhorst <& Co. and Messrs. Goepel d: Ooepel for the
applicant.

Tennant, Assistant Commissioner: ^

This is an appeal from the action of the Examiner of Trade-
Marks refusing registration of a trade-mark comprising the repre-
sentation of a horse grazing, as applied to artificial butter. Regis-
tration is refused in view of the registered trade-mark to Borden's
Condensed Milk Company, No. 35,600, December 18, 1900, which
consists of the word " Pony,'' accompanied by the representation of

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DECISIONS OF THE COMMISSIONER OF PATENTS. 305

the head of a pony or horse, for " milk, condensed milk, creamy
evaporated cream, butter, and cheese."

It is contended in behalf of appellant that butter and artificial
butter or " oleomargarin " or " margarin " are not goods of the same
descriptive properties and, further, that there is no such similarity
between the marks as would be likely to cause confusion in the mind
of the public.

As to the contention that butter and artificial butter or "oleo-
margarin " or " margarin " are goods of different descriptive prop-
erties it is sufficient to say that this question has been discussed in
the decision of John F. Jelke Co. v. Emil Fleisckl cfc Son^ {ante, 63;
176 O. G., 274,) and no reason is found for departing from the
ruling therein that butter and oleomargarin must be considered of
the same descriptive properties so far as the registration of trade-
marks is concerned.

While the appearance of the trade-mark of the appellant and
that of the registrant is different, it is believed that they have the
same general significance and that the " Pony Brand " would aptly
describe the appellant's mark, since the representation of a pony or
horse is the most prominent feature of the mark. Where, as in the
present case, the trade-mark has been for many years registered for
a staple commodity, as butter, it is believed that care should be
taken to prevent the registration of a mark for a similar but artificial
commodity which would in any way be likely to be mistaken for the
registrant's mark, in order that the public may not be deceived into
purchasing the artificial merchandise for the real product, as well as
to avoid any possibility of the registrant being damaged by the
substitution of an artificial product for that upon which he uses
his mark.

/ am clearly of the opinion that the action of the Ewaminer of
Trade-Marks refusing registration of appellants mark is right, and
it is accordingly affirmed.



TOMLINSON V, KlELT.

Decided October 4, 1912.

183 O. G., 784.

INTEBFBBENCE — DISSOLUTION — CONSENT OF PARTIES NOT CONCLUSIVE.

Where both of the parties to an interference are applicants, Held that
the fact that each of them moved to dissolve the interference on the ground
that the issue is not patentable does not warrant the dissolution of tlie
same if the Examiner is of the opinion that the issue is patentable.

On Petition.

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806 DECISIONS OP THE COMMISSIONER OF PATENTS.

TIIIE'BECORDEB.

Messrs, Parsons^ Hall d' Bodell for Tomlinson.
Messrs. Kerr^ Page^ Cooper <& Hayward for Kiely,

Tennant, Assistant Commissioner:

This is a petition by Tomlinson that the Primary Examiner be
instructed to dissolve the interference as to counts 1, 2, 3, and 6.

The record discloses the following state of facts :

The interference was declared November 18, 1911. On December
27, 1911, Kiely moved to dissolve the interference as to count 5 on
the ground that he has no right to make the claim and as to counts
1, 2, 3, and 4 on the ground that said counts are unpatentable over
the British patent to Boult, No. 15,592 of 1908. On December 80,
1911, Tomlinson moved to dissolve the interference as to count 5
upon the ground that Kiely has no right to make the same and as
to counts 1, 2, 3, 4, and 6 upon the ground that they are not pat-
entable over the British patent mentioned above and also over various
other patents cited. These motions were transmitted to the Primary
Examiner, who in a decision rendered May 10, 1912, dissolved the
interference as to counts 4 and 5, but held that counts 1, 2, 3, and 6
are patentable and denied the motion as to those counts.

It further appears from the decision of the Primary Examiner
that Tomlinson at the hearing before him urged that —

In view of the fact that both parties were contending that counts 1 to 4 and 6
were not patentable to them, the Examiner need not consider the merits of
these counts but should dissolve the interference.

This contention was denied by the Primary Examiner, who held
that—

the question must be settled on its merits and not on such ground as that urged
by Tomlinson, to wit, that both parties to the interference considered them
unpatentable.

It is urged by petitioner in his brief filed at the hearing before me
that—

♦ ♦ ♦ in view of the fact that l>oth parties moved to dissolve and that, at
the hearing neither recanted but both contended that claims 1 to 4 and claim 6
are not patentable, that it was not incumbent upon the Primary Examiner to
loolc into the patentability of the claims in question, but, on tlie contrary, be
should dissolve the interfereuce as to such claims, and reject the same in the
applications of the respective parties on the doctrine of estoppel.

In support of his petition Tomlinson calls attention to the practice
announced in the decisions of Lipe v. Miller^ (C. D., 1904, 114; 10ft
D. G.. 1608,) Robins, yV., v. Titus and Titus, (C. D., 1904, 267; 111
( . G., 584,) and others, to the effect that in an interference between
on applicant and a patentee the interference will be dissolved where a
motion is brought by the applicant alleging the non-patentability of
the issue, without considering the merits of the motion.



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DECISIONS OP THE COMMISSIONER OF PATENTS. 307

In those cases it was held that since the only question before the
Office was the right of an applicant to a patent and as his motion
alleging non-patentability was an admission that he was not entitled
to a patent he should not be permitted to cast a cloud upon the
patent of his opponent and that it was a waste of time for the Office
to consider the merits of the motion. Said principle is set forth in
the Commissioner's decision in Tarnall v. Pope^ (C. D., 1905, 140;
115 O. G., 2136,) as follows:

The applicant who is the only one before the Office seeliing a patent is not
entitled to move to dissolve on the ground that his own invention is unpatent-
able, since the only purpose of such motion is to cast a cloud upon his opponent's
patent. Where t)ie applicant admits that he is not entitled to a patent, this
Office will not waste time In considering the question of patentability, but will
accept the applicant's admission, dissolve the interference, and reject his claims.
It i» aot necessary for the Office to consider the question of patentability in
order to dispose of the interference, and it will not do it for the sole purpose
•f discrediting the patent which has been granted.

The principle therein announced does not apply to the present case,
where both parties are applicants. Here there is no question of cast-
ing a cloud upon a patent. Moreover, in the present case there is no
question of saving the time of the Office in passing upon the motion,
since the Primary Examiner has already rendered a decision holding
counts 1, 2, 3, and 6 to be patentable.

Nor is the case similar to that of Oliver v. Felbel^ (C. D., 1902, 565 ;
100 O. G., 2384; 20 App. D. C, 255,) decided by the Court of Appeals
of the District of Columbia, also relied upon by petitioner. There
the court held the queStion of priority of invention to be a moot one
in view of the fact that the Commissioner in his decision held the
question of patentability in abeyance, to be reconsidered by the
Primary Examiner upon the return of the case to him. In that case
the court found that appellent stated in his testimony that he did not
claim to be the inventor of the subject-matter of the issue of the inter-
ference and that this was —

a positive declaration under oath that he never was the inventor of the matter
in issue.

The court expressed its opinion that this should settle the contro-
versy. That case, however, is not similar to the present one, where
the parties merely assert in their motions, but not under oath, that the
issue is unpatentable.

Petitioner may be satisfied in the present case with a dissolution
of the interference upon a holding whereby neither party receives a
patent for the invention of the issue. Should a third party, however,
file an application claiming the invention here in issue, he would
apparently be entitled to a patent under the Examiner's holding that
the invention of the issue is patentable. Would the action petitioner
has taken in the present interference, in case it was dissolved, estop



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808 DECISIONS OF THE COMMISSIONER OF PATENTS.

him from contesting priority of invention with such third party!
Clearly petitioner's action in order to warrant dissolution of the
present interference should be of such a nature as to preclude him
from contesting priority with any future applicant.

If the parties to the present interference do not wish to contest the
question of priority, they have a remedy by simultaneously filing an
abandonment of the invention of the counts of the issue. In the case
of Krakau v. Harding, (C D., 1903, 484; 107 O. G., 1662,) where
such a course was followed, it was held that the proper action was a
dissolution of the interference.

The petition is denied.



Ex PARTE Hamby.

Decided March 9, 1912.

183 O. G., 1031.

1. Apeucation — Prosecution — Fin^l Rwection.

Wbere, in response to an action holding certain affidavits filed under Rule
75 insutiicient and rejecting the claims upon a reference cited for the first
time, applicant filed an argument against the holding that the affidavit was
insnfficient and stated that the action was not intended to be a response to
the rejection on the reference, but that he wished to know whether it would
be necessary to overcome both references cited, Held that the Examiner
should not have finally rejected the claims.

2. Same — Same.

Where, in response to an action holding certa^p affidavits insufficient to
overcome a reference cited and rejecting the claims on a new reference,
applicant filed an argument that the affidavit was snfficleiit and requested
further information whether it was necessary for him to overcome one or
both references, Held that the Examiner should have informed the applicant
that this was an incomplete response to the prior rejection or should have
complied with the request for reconsideration of the holding that the
affidavits were insufficient and reminded the applicant that his year for
action ran from the date of the preceding Office letter.'

On Petition.

SLIDE-RULE.

Mcsfn'8. C, A. Snow <& Co. for the applicant

Moore, Commissioner:

This is a petition that the Examiner in charge of this application
be advised that the final rejection entered on February 8, 1911, was
premature and that he was in error in holding that a certain affidavit
filed under the provisions of Eule 75 is insufficient to antedate the
references cited.



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DECISIONS OF THE COMMISSIONER OF PATENTS. 309

On December 8, 1910, the Examiner repeated a rejection upon a
reference which applicant had attempted to overcome by an affidavit
under Rule 75, holding that the affidavit was insufficient, and further
rejected the claims upon a patent to Speckman, cited for the first
time. On January 30, 1911, applicant filed an argument against the
holding that the affidavit was insufficient and closed with this state-
ment:

This action is not intended to be a response to that portion of the Examiner's
letter in which the claims are rejected on the references as appUcant desires
to have a definite and fin^l nnderstanding ns to whether, in view of applicant's
showing, it will be necessary for him to overcome one or both of the references
heretofore cited.

The only proper reply to such a communication from the applicant
would have been either a statement from the Examiner that it was an
incomplete response to the preceding Office rejection of December 8,
1910, and that no action on the case would be given until it had been
made complete or a letter complying with the request for reconsidera-
tion of his holding as to the insufficiency of the affidavits and remind-
ing the applicant that his year for action ran from the date of the
preceding Office letter.

Instead of taking either of such actions, however, the Examiner
entered a final rejection on each of the patents of record. This was
done on February 8, 1911, and on January 19^ 1912, applicant at-
tempted to amend the case by substituting new claims accompanied
by an argument. This amendment was refused admission, whereupon
the present petition was taken.

It is clear that the final rejection was premature.

The sufficiency of the affidavit to overcome the reference is a matter
of merits w^hich will be reviewed by the Examiners-in-Chief on appeal
and not upon a petition of this nature.

The petition is granted to the extent indicated.



Ex PARTE Taylor.

Decided May 2/, 1912.

183 O. G., 1031.

Beissue — New Matteb.

Certain matter inserted In the specification of a reissue application Held
to constitute new matter and its cancelation properly required.

On Petition.

AUTOMATIC SPBINKLEB.

Mr. WHmarth H. Thurston for the applicant.



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810 DECISIONS OF THE COMMISSIONEB OF PATENTS.

Moore, Com/missioner:
This is a petition that —

tbe Examiner in charge of such application be advised that sach reqalrement
with respect to the cancelation of the matter inserted in the reissue specifica-
tion be not insisted upon, and that the Ebcaminer be directed to permit such
matter to be retained in the specification, to the end that the application which
is otherwise ready for allowance may be allowed and the patent issued with
such matter contained therein.

This is an application for the reissue of applicant's Patent No.
842,725 for automatic sprinklers, issued January 29, 1907. The
Primary Examiner allowed the claims, but required the cancelation
of certain matter in the specification upon the ground that it is new
matter and describes a different invention from that originally dis-
closed.

The invention is for an automatic sprinkler of the type in which
the sprinkler is held closed by a frangible vessel and is released by
the expansive or explosive force of the contents of the vessel induced
by the action of heat.

The Examiner takes the position that new matter has been added
in the specification of the reissue application describing a different
specific form or alternative device from that disclosed in the patent.
The applicant contends that the additional matter in the specification
merely sets forth another theory as to the cause of the explosion that
takes place in certain cases before the contents of the vessel have
reached the boiling-point. The specification of the patent states
that applicant has discovered —

that what is essential * * * is that the material to be employed as the
contents of the frangible vessel or support shall be such as will boil or become
gaseous at or about the temperature at which it is desired the sprinkler shall
open, and so that when the contents of the vessel has by the rise of the tem-
perature to the predetermined point expanded sufficiently to fracture or rupture
the vessel, such contents will when thus released from the restraint of the
containing vessel and exposed to the atmosphere instantaneously become
gaseous, thereby creating a sudden and violent explosion, which will serve to
completely shatter the vessel, and thereby insure the complete release of the
valve and the opening of the sprlnltler.

The specification of the patent describes the method of preparing
the frangible vessel as follows, (p. 2, lines 1-9:)

A convenient way to prepare the frangible vessel and its contents to secure
this result is to subject the vessel with the material or mixture up to approxi-
mately its boiling or vaporizing point, taking care that the vessel shall be com-
pletely filled with the material or mixture at this temperature and then tightly
close the vessel, preferably by hermetically sealing the same.

Claims 2, 5, and 7 of the patent specify —

a frangible vessel containing a non-gaseous material or mixture.



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DBCISIOKS OF THE OOMMISSIONEB OF PATENTS. 311

In the oath to his reissue application appellant states that —

the implication in the specification that the frangihle vessel is to be or may be
sealed at the high temperature to which said vessel and its liquid contents are
heated prior to the sealing of the same,

is an error; also, that the statement or implication that the ex-
plosion —

is In all cases due to the contents of the vessel becoming gaseous ♦♦♦ In-
stead of in some cases being due to the escape of a gas already present in the
vessel and held in solution in the liquid contents at the time fracture takes
place,

is an error.

Not only is no reference made in the specification of the patent-
to the absorption or solution of a gas in the liquid contents of the
vessel, but, as stated above, such a conditiwi is interdicted by claims
2, 5, and 7. Instead of setting forth merely a new theory as to what
possibly takes place in the explosion of vessels constructed as de«
scribed in the specification of the patent, the new matter added in