corresponding to the counts of the issue, and that the issue has differ-
ent meanings when read upon the applications of the respective
parties. The Examiner of Interferences transmitted the motion as
to the last two grounds, but denied transmission as to the first two.
Fowler thereupon presented an amended motion to dissolve, which
Was refused transmission, and presented a second amended motion,
which the Examiner treated as a petition for rehearing.
The third motion is clearly entitled to no consideration otherwise
than as a motion for rehearing. (Rockstroh v. Wamoekj C. D.,
1908, 10; 132 O. G., 234.) However, this motion is no more definite
than the two preceding motions so far as the question of patentability
is concerned. Upon examination of the record I find no error in the
decisions of the Examiner of Interferences. The motion so far as it
alleges non-patentability of the issue clearly does not comply with
the decisions, two of which were cited in the first decision of the
Examiner of Interferences.
In Fowler's brief filed on this appeal it is urged that the motion
should be transmitted as to the ground of non-patentability, since
the Primary Examiner must consider the prior art in connection with
those grounds of the motion which have been transmitted. These
grounds, as above noted, relate to Uptegraff's right to make the
claims and the question of difference of meaning, neither of which is
dependent upon the prior art nor necessitates any consideration of
the prior art by the Primary Examiner. Both of the parties to this
interference are applicants, and consequently the prior art can have
no bearing upon the question whether the invention in issue is dis-
Digitized by VjOOQIC
DECISIONS OF THE COMMISSIONER OF PATENTS. * 359
closed in Uptegraffs application. The allegation that the counts
have different meanings as read upon the applications of the respec-
tive parties means that these counts read upon both applications, but
when so read do not define the same invention, and this question is
obviously independent of the prior art.
The decisions of the Examiner of hxterferences m^e affirmed.
Stollwerck Brothers, Inc., v. "Literxa^' Anglo-S\visÂ« Milk
Chocolate Co. v, Hoffman.
Decided October SI, 1912.
184 O. G.. 804.
Tbade-Marks â€” "Sweetened Chocolate and Candy** and "Coffee" â€” Nor
Goods of the Same Descriptive Properties.
Sweetened chocolate and candy Held not goods of the same descriptive
properties as coffee.
trade- Mark for cocoa, chocolate, and candt.
Messrs. Fraser^ Turk <& Myers for Stollwerek Brothers, Inc.
Mr. Frank S. Appleman for " Lucerna " Anglo-Swiss Milk Choco-
Messrs. Goepel c& Goepel for Hoffman.
Billings, First Assistant Commissioner:
This is an appeal by Hoffman from a decision of the Examiner
of Trade-Marlcs dissolving the above interference.
When this interference was declared, the goods of the respective
parties were set up as follows: Stollwerek Brothers, Inc., cocoa,
chocolate, and candy; "Luc^ma" Anglo-Swiss Milk Chocolate Co.,
cocoa, and Hoffman, coffee. After testimony was taken an amend-
ment was filed by Stollwerek Brothers, Inc., restricting their goods
to chocolate and candy. The interference was thereupon remanded
to the Examiner of Trade-Marks in accordance with the practice
laid down in Columbia River Packers Association v. Nave-McCord
Mercantile Company, (C. D., 1909, 129: 145 O. G., 511.) The Ex-
aminer of Trade-Marks declined to dissolve the interference on the
ground that the Stollwerek applications show that it uses its mark
upon unsweetened chocolate, which is commonly used as a beverage,
and that such chocolate is of the same descriptive properties as
coffee and cocoa. He suggested, however, that if Stollwerek Broth-
542S2'â€” 13 28
360 ' DECISIONS OF THE COMMISSIONER OF PATENTS.
ers, Inc., should limit its particular description of goods to sweet-
ened chocolate and candy the interference would be dissolved. An
amendment to this eflfect was filed, and the Examiner accordingly
dissolved the interference.
Though not so stated in his decision, it is obvious that the hold-
ing of the Examiner of Trade-Marks was only as to StoUwerck
Brothers, Inc., since under the ruling in Walter Baker cfe Co.j Ltd.^
V. Harrison (C. D., 1909, 284; 138 O. G., 770; 32 App. D. C, 272)
cocoa and coffee are goods of the same descriptive properties, and
therefore an interference still exists between the application of the
"Lucema" Anglo-Swiss Milk Chocolate Co. and ttie applications
of Hoffman. The only question to be considered in this appeal is
whether the amendments were properly admitted to the StoUwerck
applications and whether, as so amended, there is an interference
between these applications and the applications of Hoffman.
The StoUwerck applications are now limited to sweetened choco-
late and candy. While sweetened chocolate may be used as a bev-
erage, it is also sold as a confection, and in view of this fact it is
believed that there is no interference between the StoUwerck appU-
cations, which are now restricted to sweetened chocolate and candy,
and the applications of the remaining parties. Nor is any irregu-
larity found in admitting the amendment to the StoUwerck appli-
cations after the testimony was taken. If the marks now sought
to be registered by StoUwerck Brothers, Inc., are for goods of
different descriptive properties from those of the remaining parties,
no proper judgment of priority could be rendered with respect to
its applications. As stated above, in my opinion the goods of StoU-
werck Brothers, Inc., and those of the other parties to this inter-
ference are of different descriptive properties.
The decision of the Examiner of Trade-Marks is affvrmed in so
far as it dissolves the interference as to the appUeations of StoU-
werck Brothers^ Inc.
Dunn v. Douglass.
Decided yovemher 1, 191t.
184 O. G., 804.
1. IifmnBEHCB â€” Motion to Dissolve â€” Supported in Part by Affidavitsâ€”
Where a motion to dissolve is filed which in part is in proper form and in
part based upon or snwwrted by aflMavits, Held that it should be refused
transmission only in so far as it is supported by the affidavits.
2. Sameâ€”Sameâ€” Allegation of Public Useâ€” Transmission.
A motion to dissolve on the ground that the invention in issue has beeo
In public use Held properly refused transmission.
Digitized by VjOOQIC
DECISIONS OF THE COMMISSIONER OF PATENTS. 361
8. SJlme â€” Same â€” Filed Before Opening of the Pbeliminaby Siatements.
A motion to dissolve if filed before the opening of the preliminary state-
ments should be refused transmission unless the circumstances are such
tiiat the parties would be held bound by a decision rendered on such a
motion and would not be entitled after the opening of such statement to file
Appeal ok Motion.
Mr, John G. Elliott for Dunn.
Messrs. Rummler <& Bummler for Douglass.
BiLLiNos, First Assistant Commissioner:
This is an appeal by Dunn from the decision of the Examiner of
Interferences refusing to transmit a motion to dissolve the inter-
Prior to the opening of the preliminary statements Dunn filed a
motion to dissolve the interference, alleging that the issue thereof
was not patentable in view of the prior art, the application of which
to the issue was fully stated. The motion was also accompanied by an
affidavit of Dunn which in effect allied that the invention in issue
had been in public use more than two years prior to the filing of the
application of either party and stated why in the opinion of affiant
a certain construction shown in one of the British patents cited in
the moti(m was the mechanical equivalent of a certain construction
shown in the Douglass application. The motion to dissolve also
stated that since it had Â«been brought before the filing of the prelimi-
nary statement attention was called to the fact that counsel for the
respective parties had submitted to each other the application draw-
ings, the instruments from which said drawings were made, and their
claims up<m whidi the issue was declared.
The Examiner of Interferences refused to transmit the motion on
the ground that it was prematurely filed and that it was not the
practice to transmit motions filed at such a time. He also held that
the motion could not be transmitted because based upon an affidavit^
citing Horton v. Leonard, (C. D., 1910, 81; 155 O. G., 305.) After
the preliminary statements were filed Dunn renewed his motion, and
it was refused transmission because based upon an affidavit. The
motion was again renewed, omitting the affidavit and all reference
thereto. This last motion the Examiner held was, under the decision
in Rockstroh v. Wamock, (C. D., 1908, 10; 132 O. G., 234,) entitled to
no consideration except as a petition for rehearing, and that as no
error in the original decision refusing to transmit the motion had
been pointed out the last motion was dismissed.
As stated above, the original motion complied with the decisions in
point of definiteness so far as the allegation of non-patentability was
362 DECISIONS OF THE COMMISSIONER OF PATENTS.
concerned. The decision in H art on v. Leonard^ svpra^ held that
motions to dissolve based upon or supported by affidavits relating to
the question of inoperativeness should not be transmitted, but this
decision did not go so far as to hold that where a motion was in part
regular and unsupported by affidavits and in part based upon affi-
davits it should be refused transmission as a whole. In other words,
under this decision if the motion was in proper form and alleged non-
patentability of the issue and also alleged that the opposing party
had no right to make the claims for reasons stated in supporting
affidavits the motion should be transmitted as to the first ground and
refused transmission as to the second.
While, as stated by the Examiner of Interferences, it is not the
practice to transmit motions to dissolve filed before the preliminary
statements are opened, for the reasons fully pointed out in Wkipph
v. Sharp (C. D., 1901, 133; 96 O. G., 2229)' and the decisions therein
cited, an exception may be made where the circumstances are such
that the parties would be held bound by the decision rendered on
such a motion and would not be entitled after the opening of the
preliminary statements to file further motions. The Examiner ap-
parently overlooked the statement above referred to that the appli-
cation drawings and the claims had been submitted to the opposing
parties. This statement in the motion of Dunn, which is not denied
by the attorney for Douglass, would have constituted sufficient
ground for transmitting the motion if otherwise in proper form. In
my opinion the motion should have been transmitted in so far as it
alleged non-patentability of the issue and refused , transmission so
far as the affidavit is concerned, since, as pointed out in Murphy v.
Borland. (C. D., 1908, 1; 132 O. G., 231,) the question of public use
cannot be considered on such a motion. Since the motion filed Sep-
tember 26, 1912, is but a copy of the motion originally filed omitting
the affidavit, that motion is transmitted to the Primary Examiner.
The decision of the Examiner of Interferences refusing to transmit
the motion to dissolve in so far as it alleges that the issue is not
patentable in vietc of the prior art is reversed.
Ex PARTE HeRTZBERG AND WoHU
Decided September 16, 1912,
184 O. a. 805.
Application â€” Divisional.
An application filed by two imrtles is not a division of an application
filed by these two parties and another party, and a statement to this effect
Held properly refused admission.
Digitized by VjOOQIC
DECISIONS OF THE COMMISSIONER OF PATENTS. 363
MOVABLE BALLAST FOB SUBMABINE VESSELS.
Mr. L, J, Doolittle for the applicant.
Tennant, Assistant Commissioner:
This is a petition that the Examiner be directed to explain the
grounds of rejection and that he be instructed to admit the state-
ment that this case is a division of an earlier application filed by
Hertzberg, Low, and Wohl.
The structure disclosed in the drawing and specification of this
application is exceedingly simple, and the pertinency of the refer-
ences of this case is believed to be sufficiently pointed out in the
The request that the Examiner withdraw his refusal to admit the
statement that this case is a division of an earlier application filed by
the three parties, Hertzberg, Ix)w, and Wohl, must be refused, since
two joint applicants constitute an entirely different entity from a
sole applicant, as has been repeatedly pointed out in published deci-
sions. (See Arnold v. Vaughen and Cabot v. Arnold and Fisher^
C. D., 1904, 78; 109 O. G., 805, and the decisions therein cited.) For
the same reason three joint applicants constitute a distinct and dif-
ferent entity from two joint applicants.
The petition is denied.
Ex parte Thompson and Soss.
Decided September 17, 1912.
184 O. G.. 805.
Application â€” Prosecution â€” Abandonment.
Where the Examiner required a correction in the drawing, certain formal
corrections in the 8i>eci float Ion, and stated that the claims were allowable.
Held that the applicants were not entitled to postpone the correction of the
drawing until the question of the formal requirements bad been finally
settled and that an amendment filed at the end of the year correcting the
specification, but not correcting the drawing, is insufficient to save the
application from abandonment.
Mr. Ithiel J. Cilley for the applicant.
Tennant, Assistant Commissioner:
This is a petition that the above-entitled case be held not aban-
The Examiner in his first action upon this application of March
23| 1911, called attention to the chief draftsman's criticism of the
Digitized by VjOOQIC
364 DECISIONS OF THE OOMMISSIONER OF PATENTS.
drawing on account of the lines being pale and rough and advised the
applicants that the drawing had been admitted for the purpose of
examination only. Action was also given upon the claims. On
May 3, 1911, the applicants responded to the action of the Examiner,
but failed to correct the drawing, and on June 20, 1911, the objecticm
to the drawing was repeated, certain criticisms were made in respect
to clerical errors in the specification, and the applicants were advised
that the case was otherwise considered to be in condition for allow-
ance. On June 29, 1911, the applicants filed an amendment correct-
ing the errors in the specification which had been criticised by the
Examiner and inquired the cost for correcting the drawing. They
were advised of the amount required for the correction of the drawing
on July 15, 1911, and on August 1, 1911, the Examiner again repeated
the objecticm to the drawing, criticised a single word in the specifica-
tion as being inapt, and again stated that " the claims stand allowed."
On July 11, 1912, the applicants corrected the specification, but failed
to correct the drawing, whereupon the Examiner held the case to be
It is contended by the applicants that it is their understanding that
the correction of the drawing was not absolutely demanded until the
application was otherwise in condition for allowance, and it is re-
quested that the case be held not abandoned until they shall have had
an opportunity to send the required fee for the correction of the draw-
ing. Such a contention has no application to the present case. While
it is true that the Office does not ordinarily require the correction of
drawings which are merely informal because of rough lines until the
case has been examined and claims found to be allowable, no excuse
exists for the postponement of the correction of a drawing until all
merely clerical errors have been corrected. The applicants have twice
been advised that the claims in his case stand allowed and for more
than a year have been aware of the amount required for the correction
of the drawing. Under these circumstances there is no excuse tor
the delay in correcting the drawing in accordance with the Examiner's
requirements, and his action holding the case abandoned is clearly
T/ie petition is denied.
Ex PARTE HeRSHBERG & CoMPANT*
Decided October 17. 1912,
184 O. a, 806.
Tbade-Mabksâ€”" Master-Craft " fob Suits and Overcoats â€” ^Descriptiyr.
The word " Master-Craft " as applied to suits and overcoats Held de-
scriptive of the character or qaaUty of the goods, since it indicates that
they are slcilfnHy made.
Digitized by VjOOQIC
DECISIONS OF THE OOMMISSIONEB OF PATENTS. 865
TRADB-MABK FOB CLEANEBS.
Messrs. Osgood^ Davis <6 Dorsey for the applicant.
Tennant, Assistant Commissioner:
This is an appeal from the decision of the Examiner of Trade-
Marks refusing registration of the word " Master-Craft " as a trade-
mark for suits and overcoats.
Kegistration is refused upon the ground that the same is descrip-
tive of the character or quality of the goods, indicating that the
clothes are skilfully made, as by a master.
In my opinion the decision of the Examiner of Trade-Marks is
right. The word " craft," as pointed out by the Examiner, is defined
art or skill ; dexterity, as in some manual employment ; skillf ulness in planning
or executing ; hence, an occupation or employment requiring this ; a manual art ;
a trade, business or profession.
The word " master " serves to indicate the degree of skill as that
of the highest order.
It is urged that the hyphenated word " master-craft " has no es-
tablished meaning of its own and at best is merely suggestive. This
contention is not believed to be well founded. The word " master ''
is used in connection with many well-known English words in pre-
cisely the sense in which it is used here â€” as, for example, master me-
chanic, master builder, mastership, master stroke, master touch,
masterwork, and masterpiece. The significance, therefore, of the
trade-mark sought to be registered is not merely suggestive, but is
rather purely descriptive, and falls within the category of marks for
which registration is prohibited by section 5 of the Trade-Mark Act.
The decision of the Examiner of Trade-Marks is affirmed.
Ex PARTE BUSER.
Bedded June 26, 1912.
184 O. Gm 1073.
Certain claims for a tufting-machine Held patentable over the prior art,
since not anticipated by the principal reference alone and since the changes
therefrom would not be suggested by the prior art
Appeal from Examiners-in-Chief.
Mr. A, S, PatUson for the applicant
This is an appeal from the decision of the Examiners-in-Chief
affirming the action of the Primary Examiner finally rejecting claims
Digitized by VjOOQIC
866 DECISIONS OF THE COMMISSIONER OF PATENTS.
7 to 11, inclusive, of this application, of which the following s^
forth the invention sufficiently for the purpose of this proceeding:
7. In a tufting machine, the combination of a mold-board, a stationary com-
bined button supporting, guiding and piercing rod adapted to pass through and
project beyond a hollow button, and a vertically movable follower-board carry-
ing a clenching device having an opening to receive said rod.
11. In a tufting machine, a firmly 8upi)orted combined button and cloth sup-
porting and piercing rod adapted to pass through a hollow button, and a clench-
ing device adapted to receive said rod and to expand the end of said hollow
The references cited are as follows: Piatt, August 30, 1892, No.
481,587; White, March 27, 1000, No. C46.0G:^; Freschl, January 28,
1902, No. 691,937; Stinipson, August 19, 1902, No. 707,274; Whitte-
more, June 2, 1903, No, 729,825; Dickson, March 23, 1909, No. 916,120;
Tauber, February 6, 1910, No. 811,883; Fisher, March 15, 1910, No.
952,189; Buser, May 31, 1910, No. 960,073.
The lower tribunals held that while applicant's invention as de-
fined by the appealed claims differed in certain respects from the dis-
closure of the patent to Fisher these changes were not such as require
invention in view of the prior art. The Examiners-in-Chief referred,
however, only to the patent to Stimpson in addition to that of Fisher.
The patent to Fisher discloses an apparatus of the same general
character as applicant's. In this patent, however, the button-guiding
rod is neither a supporting nor a piercing rod, the prongs of the but-
ton only passing through the material. The position of the majority
of the Examiners-in-Chief was that the idea that a piercing-rod and
cooperating perforated abutment, such as shown in the Stimpson
patent, might be used in a tufting-machine was one that would be ob-
vious to those skilled in the art and that there was nothing unobvious
in the idea of applying these features to the Fisher machine, so that
the perforation for the button-shank might be made by the button-
supporting rod. They also stated that no invention could be predi-
cated upon making the rod stationary, since if the Stimpson rod were
transferred to the tufting apparatus of Fisher there would be no
reason for making it movable, provided that an opening was made
in the anvil of the Fisher patent, following 4;he idea of Stimpson in
providing an opening in the abutment 23.
It is evident, as pointed out by the Primary Examiner, that the
Fisher patent alone does not constitute an anticipation of the ap-
pealed claims, nor is it believed that it could be held that it would
not require invention to modify the Fisher structure in the manner
called for in these claims in the absence of any suggestion from the
prior art. In my opinion neither the Stimpson patent nor any of the
other patents cited suggests such a change in the Fisher structure.
In other words, it is believed that it would require invention to mod-
DECISIONS OF THE COMMISSIONEB OF PATENTS. 367
ify the Fisher structure in the manner suggested by the Examiners^
The decision of the Examiners- in-Chief is reversed.
Gardner v, Delson v. Sampliner v. Meyers.
Decided Seplcmhcr 9, 1912.
184 O. G., 1073.
Interference â€” Motion to Dissolve â€” Based on Public Use â€” Will Not be
A motion to dissolve based on the allegation that the invention in issne
is unpatentable by reason of a certain public use Held properly refused
transmission, since it is well settled that where an interference exists
between pending applications the institution of public-use proceedings prior
to the determination of priority will be refused.
Appeal on Motion.
Mr. J, D. Caplinger and Messrs, Flanders^ Bottum^ Fawsett <&
Bottum for Gardner.
Mr, Charles W, Hills for Delson.
Mr. Albert Lynn Laurence for Sampliner.
Mr. Percy U, Moore for Meyers,
Ten N ANT, Acting Commissioner:
This case is before me upon petition by Gardner that thje Examiner
of Interferences be directed to transmit to the Primary Examiner a
-motion for dissolution based upon the ground that the issue is unpat^
entable by reason of certain public use. The allegation of public use
is based upon the assertions contained in the affidavit of Frank E,
Dennett, one of the associates of counsel for Gardner.
This petition is in fact an appeal from the decision of the Examiner
of Interferences denying the transmission of such motion and will be
The decision of the Examiner refusing transmission of the -motion
is based upon the ground that the motion raises a question which
could not properly be considered by the Primary Examiner upon a
motion for dissolution. It is contended by the appellant that the
question relates to the patentability of the issue and that it is neces-
sary to determine that a patentable invention exists before the inter-
ferants proceed and take testimony upon the question of priority, and
that the allegation of public use suggests a statutory bar which should
be invesrtigated by the Primary Examiner who is charged with the
examination of applications in respect to the patentability.
S68 DECISIONS OF THE COMMISSIONER OF PATENTS.
The decision of the Examiner of Interferences refusing to trans-
\n\t the motion is clearly right. It is well settled that where an inter-
ference exists between pending applications the institution of public-
Mse proceedings prior to the determination of priority will be refused.