under the circumstances of this case, that the requirement for division
as to claim 19 reopened the case for the further prosecution of the
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DECISIONS OP THE OOMMISSIONEB OF PATENTS. 411
finally-rejected claims and all others which the applicant might
choose to present.
The only remaining question is as to the forwarding of the appeal
filed October 5, 1912. After the final rejection of October 6, 1911, the
case was closed so far as the consideration of any further claims on the
merits was concerned. The Examiner was right in admitting certain
amendments, upon a proper showing, for the purpose of determining
the necessity of an interference with the patents from which the
claims were copied. These claims had already been found allowable
before the issuance of the patents from which they were copied, and
the only question for consideration in this case ordinarily would be
whether they could properly be based upon applicant's disclosure.
The holding of the Examiner that they could not is a matter appeal-
able to the Examiners-in-Chief ; but this does not entitle the appli-
cant to carry up on such an appeal any claims other than those copied
from the patents for the purpose of interference. The other claims
presented have no standing in the case in view of the final rejection
then of record, and the Examiner properly required that they be can-
celed. This requirement is reviewable upon petition to the Commis-
sioner and not on appeal, because it requires no consideration of the
subject-matter of such claims.
So far as the appeal relates to the claims which the Examiner has
held are not readable upon applicant's case and cannot, therefore, be
put into interference it appears from the Examiner's statement that
he has twice acted upon these claims and refused to declare the inter-
ference for the same reasons, and it is believed that the circumstances
justify the Examiner in forwarding the appeal so far as it relates to
claims copied from patents for the purpose of obtaining the interfer-
ence. The prayer that other claims presented be included in the
appeal must be denied for reasons above noted. The prosecution of
this case before the Primary Examiner is closed, except for determin-
ing the question whether an interference is necessary and for the
prosecution of such interference, if declared.
The petition is granted to the extent indicated.
DixoN V. Bliss.
Bedded December 10, t91%.
185 O. G., 1381.
INTEBFKBENCE — ^RbOPENINO.
Where after decision on a motion to amend and on a motion to dissolve
on the ground that B. cannot make certain claims the interference was
0et down for final hearing and the Examiner of Interferences held that
certain of the claims in issue are not readable upon B/s disclosure, Held
that the interference wiU not be reopened for the purpose of allowing B.
to introduce therein another application.
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412 DECISIONS OF THE COMMISSIONBB OP PATENTS.
Appeal on Motion.
On Petition.
generator suspension.
Messrs, Duell^ Warfield <& Duell for Dixon.
Mr. E, B. H. Tower^ Jr.^ for Bliss.
Tennant, Assistant Commissioner.
This case is before me on appeal by Bliss from the decision of the
Examiner of Interferences denying his motion to vacate a decision
of priority rendered on October 12, 1912, and to add to the inter-
ference an application of said Bliss, No. * * *, which is alleged
to disclose the subject-matter of the counts of the interference as con-
strued by the Examiner of Interferences and was filed prior to the
dates alleged in Dixon's preliminary statement. There is also filed
a petition that the supervisory authority of the Commissioner be
exercised to give said Bliss the benefit of his application No.
* * * in this interference.
In support of this motion it is alleged that the Examiner of Inter-
ferences has placed a different interpretation upon the issue from
that placed upon the same by the Primary Examiner in declaring the
interference and that the issue, given the construction which has
been placed thereupon by the Examiner of Interferences, is readable
upon Bliss's application No. * * *, which is a later application
than that included in this interference.
The record of this interference shows that after the approval of
the preliminary statements the party Dixon filed a motion to dissolve
the interference, based in part upon the ground that Bliss had no
right to make the claims in issue, which motion was duly transmitted
to the Primary Examiner and denied by him. Voluminous pro-
ceedings have been had in the interference, which included a motion
on the part of Bliss, under Rule 109, to add new counts to the issue.
Abundant opportunity was afforded by the rules to permit the inclu-
sion of the application, which is now sought to be introduced, in the
preliminary stages of this interference, if such action were proper.
Furthermore, Bliss was well advised of his opponent's attack upon
his right to make the claims in his application in the interference,
and it was therefore incumbent upon bim to introduce such applica-
tions as in his opinion would clearly support the counts of the issue
in the preliminary stages of the interference. Bliss did not adopt
such a course, but permitted the case to go to final hearing under
Rule 130, on Dixon's motion, at which time the question of Bliss's
right to make the claims was duly considered.
Appeals from the decision of the Examiner of Interferences upon
the question of priority have been filed by both parties.
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DECISIONS OF THE COMMISSIONEB OF PATENTS. 413
It IS noted that the decision of the Primary Examiner upon the
motion to dissolve, holding that Bliss can make the claims in inter-
ference, and the decision of the Examiner of Interferences at the
final hearing that Bliss cannot make such claims were rendered by
coordinate tribunals. This question will be properly reviewed by
the Examiners-in-Chief when the case comes before them on appeal.
I find, therefore, no reason which would justify reversal of the
decision of the Examiner of Interferences refusing to reopen the
interference for the purpose of including application No. ♦ ♦ ♦ .
nor do I find any such circumstances as would justify the exercise
of the supervisory authority of the Commissioner in the manner
sought by Bliss.
The decision of the Examiner of Interferences refusing to reopen
the case is affirmed.
The petition for the exercise of the supervisory authority of the
Commissioner is denied.
Ex FABTE Lake Region Packing Association.
Decided December 19, 1912.
185 O. a, 1381.
Trade-Mabks — ^Anticipation — Disclaimed Features of Pbiob Registrations do
Not Constitute.
" I am therefore of the opinion that the features of illustration found
in the registration of n trade-marlc which are stated to be non-essential
features and the right to the exclusive use of which is disclaimed may not
be considered as constituting a ' registered or known trade-mnric * which
would bar the registration of similar arbitrary features by one who has
adopted and used the latter in a true trade-mark sense/'
On Appeal.
trade-mark for oranges, lemons, grape-fruit, tangerines, and
LIMES.
Mr. H. C. Underwood for the applicant.
Tennant, Assistant Commissioner:
This is an appeal from a decision of the Examiner of Trade-Marks
refusing to register as a trade-mark for oranges, lemons, grape-fruit,
tangerines, and limes the representatton of a stag leaping over a
barrier. This refusal was based on the registered trade-mark of
Du Vivier and Co., No. 9,181, March 7, 1882, for " vegetables and
fruits, either raw, pickled, or otherwise preserved."
The registered trade-mark is described as follows :
Our trade-mark consists of the arbitrarily-selected words " Windsor Manor."
These have generally been arranged as shown in the accompanying facsimile —
that Is, above the head and neck or body of a stag or deer, which latter in the
present example Is shaded by a dark background, and above snch figure is the
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414 DECISIONS OF THE COMMISSIONER OF PATENTS.
representation of a crown. Upon the sides of the stag or deer are arranged
branches of oaks and acorns; but the figure of the stag or deer, the dark back-
ground, the crown, and the oaks and acorns may be omitted or modified or
changed at pleasure without materially altering the character of our trade-
mark, the essential features of which are the words " Windsor Manor."
It is contended by applicant, first, that the marks are dissimilar,
and, second, that the Examiner erred in holding that the part of the
registered mark which is disclaimed and which the registrant says
may be omitted, modified, or changed at pleasure without materially
changing the trade-mark is nevertheless a part of the trade-mark and
authorizes the rejection of another application which embodies the
features so disclaimed.
The Examiner in his answer to this petition has carefully and ex-
haustively discussed the reasons for refusing registration in view of
the features which are stated in the prior registration to be non-
essential and refers to the decision in ex parte Diamond Ink Co.
(C. D., 1902, 45; 98 O. G., 1483) as a precedent for considering the
features disclosed in connection with the representation of the trade-
mark as sufficient to warrant rejection.
In that case application was made for the registration of the repre-
sentation of a diamond or lozenge shaped figure. Registration was
refused in view of a prior registration consisting of a diamond-
shaped figure and the words " Black Diamond," the registrant stat-
ing that the diamond-shaped figure might be omitted and that the
essential features of the mark consisted of the words "Black Dia-
mond." It was pointed out by the Commissioner that the trade-mark
sought to be registered so nearly resembled the facsimiles of the
registered mark that they would be likely to cause confusion in trade
by the concurrent use of these devices, it being stated that —
Two marks the facsimiles of which are so familiar as to cause confusion should
not be registered. If a party's registration is intended to be limited to certain
features which have been separately used as a trade-mark, he should show only
those features. The showing of other features either gives him protection up<m
them or leads to confusion.
It is further stated in that decision :
A statement of the essential features merely calls attention to those pre-
dominant and controlling features and cannot in any case have the effect of
changing that which in fact constitutes the mark. The question whether a
feature is essential is one of fact, as is also the question whether it is the only
arbitrary and distinctive feature of the mark which would be impressed upon
the mind of the purchasing public.
It was held that since the facsimiles were so similar as to be likely
to cause confusion registration of the applicant's mark should be
refused.
At the time that decision was rendered it was the practice of the
Office to determine of what the essential features of an applicant's
mark consisted. This practice was, however, overruled in the deci-
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DBGIBIONS OF THE OOMIOSSIONEB OF PATENTS. 415
sion of the Court of Appeals in re Standard Underground Cable Com-
pany, (C. D., 1906, 687; 123 O. G., 656; 27 App. D. 0., 320,) in which
it was held that the Commissioner of Patents is not vested with
power to decide for the applicant the scope of his claimed trade-mark.
In that case the Court said :
We repeat that we do not think that Congress intended to confer upon the
Commissioner of Patents authority to say to an applicant how much or how
little of the embellishments appearing, in connection with what may be called
the essential features of a trade-mark, form an actual part of the trade-mark.
Rather do we think that this right of selection and designation rests with the
applicant No general rule can possibly be applied, and where this is the case
it is unwise to attempt to exercise a power not expressly vested in an executive
offlctr.
The Examiner of Trade-Marks, however, expresses the opinion
that —
as understood, this decision has not vested in an applicant the right to elect
what features do or do not constitute the mark where it appears that such
election would prejudicially affect a third party. (John Rutgert Planten v.
Canton Pharmacy Co,, C. D., 1909, 408; 143 O. G., 1113; 33 App. D. C, 268;
Johnson v. Brandau, C. D., 1909, 298 ; 139 O. G., 732 ; 32 App. D. C, 348 ; ex parte
Newfnan, C. D., 1910, 194; 159 O. G., 993.)
In the first of the decisions cited by the Examiner the court re-
ferred to the Standard Underground Cable Company case as follows :
In the Cable Go. case it was merely held that for the purpose of registration
the applicant may determine of what his mark consists; but, having described
and shown one thing, he cannot, when the exigencies of the situation demand,
limit his claim to a particular feature of the original mark. {Johnson v.
Brandau, C. D., 19«9, 298; 139 O. G., 732; 32 App. D. C, 348.)
By the passage of the Trade-Mark Act Congress did not intend to confer upon
any dealer the right to register fictitious marks for the purpose of limiting
and restricting the field of registration of others. When, therefore, the Com-
missioner is satisfied that the applicant is attempting to register a particular
feature of a registered mark, he should require evidence that the mark of
the application has actually been used as a trade-mark. Not having limited
his claims in his original application, the applicant cannot prove statutory use
of the mark of the second application by showing such use of the registered
mark. In other words, proof of the use of the words "Planten's C & C or
Black Capsules," in a case where those words have been registered as a trade-
mark, does not establish the use of the words *' Black Capsules " as a trade-
mark, for the words eliminated from the registered mark, are, under the prior
application, an essential part of that mark.
In the case of Johnson v. Brandau it is pointed out that applicant
did not limit his claim to any particular feature of the drawing or
claim any particular feature as the essential feature of his trade-
mark, as he might have done, and the court held that the inclusion
within the registration of the word "Asbestos" thereby made the
same an essential feature of his mark, stating:
When an applicant describee and iUustrates his trade-mark and applies for
its registration as so described, the Commissioner must likewise consider it in
Its entirety.
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416 DECISIONS OF THE COMinSSIONSB OF PATENTS.
I do not find in the holding of the court in these cases any suffi-
cient basis for assuming that a portion of an illustration of a regis-
tered trade-mark which is disclaimed as non-essential to the mark
will defeat the right of another to register one or more features
shown in the disclaimed matter, especially where, as in the present
case, it is stated in the description of the illustration that the non-
essential portions may be omitted or modified at pleasure without
changing the character of the mark. It is possible that an exception
might exist if the feature stated to be non-essential is an alternative
of the portion designated as the essential feature ; but this condition
does not exist in the present case.
It is obvious that the value of a trade-mark is dependent upon the
continuous use of the feature which the owner of the trade-mark
believes designates the origin of the merchandise to which the mark '
is applied. In the Standard Underground Cable Company case,
above quoted, it was pointed out that trade-marks as ordinarily
used upon labels are accompanied by embellishments, ornamenta-
tions, and other matter, which, standing by themselves, may be
proper trade-marks, but that —
such matter Is no essential part of the trade-mark claimed and by which the
brand. In connection with which they are used, becomes known.
Furthermore, these features being subject to modification or omis-
sion do not perform the true function of a trade-mark. It has
always been the right of an applicant for registration to include all
arbitrary features found upon his label as a trademark, if he so
desires, and his failure to include any arbitrary feature in his regis-
tered marif may properly be considered a disclaimer thereof in so
far as that particular registration is concerned. I am therefore of
the opinion that the features of illustration found in the registra-
tion of a trade-mark which are stated to be non-essential features and
the right to the exclusive use of which is disclaimed may not be con-
sidered as constituting a " registered or known trade-mark " which
would bar the registration of similar arbitrary features by one who
has adopted and used the latter in a true trade-mark sense.
Tfie decision of the Examiner of Trade-Marks is reversed.
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DECISIONS
OF THB
UNITED STATES COUKTS
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PATENT CASES,
1912.
[Sapreme Coart of the District of Colambla.]
TwiTCHELL V. Rudolph & West Company.
Decided October 26, 1911.
177 O. G., 527.
Patentabilitt — Infringement.
The patent to Twitchell, No. 927,298, Held valid and infringed
Suit in Equity by Charles R. Twitchell against Rudolph & West
Company for infringement of Patent No. 927,298, dated July 6, 1909,
pressure-gage for pneumatic tires. On final hearing. Decree for
plaintiff.
Mr. J. Nota McGill for the plaintiff.
Mr. C. D. Davis for the defendant.
Clabaugh, C. e/., (orally:)
I do not believe that by taking this matter under consideration I
can get any better understanding of the situation than I now have.
It does seem to me that where a presumption of validity arises from
the issuance of the patent, it requires a strong case to overcome that
presumption; and the burden is the same in patent cases as well as
in other cases. I was much impressed by the language of the
Supreme Court in the recent case of Diamond Rubber Co. v. Consoli-
dated Rubber Tire Co., (C. D., 1911, 538; 166 O. G., 251; 220 U. S.,
428.) In this case it seems to me there is more than a mere aggre-
gation of parts that have been in use and are common to the public.
Now that the plaintiff has produced the invention shown by the
article in evidence, by putting together a lot of things that are some-
417
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418 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
what similar, to say it is merely a mechanical aggregation is to my
mind extraordinary. When a patentee has produced an arrangement
which fulfills a long-desired want, namely, to ascertain the pressure
in a tire — ^not as the air is being supplied, as in defendant's, but one
which gives you the pressure after it is supplied — ^and in such a small
compass and in such an absolutely novel manner, there must be more
than a mere aggregation of parta It is not only the work of the
mechanic, but in this case it seems to me to be the novel combination
which goes beyond mere mechanical putting together.
If there were any doubt about that, the very fact of the enormous
sale — ^which is nothing by itself, as there might be a patent which
was itself iio good while the sale of the article might be very exten-
sive, and yet this would be without weight — ^but when you find a
new combination of parts, for which a patent has issued, and con-
sider the importance of being able to readily, easily, and accurately
determine the pressure in a tire, and the introduction of the device
is followed by such enormous sales, and the cost at such variance with
any other article of this character, it seems to me that the evidence is
overwhelming, and that the court is justified under these circum-
stances in upholding the patent. As far as I can see the whole
matter is, in the main, similar to what is covered by the California
decree. The case there seems to have been passed upon by Judge
Wellborn after consideration of almost everything here present.
The device of the French patent is, as I understand it, out of the
case. The only important part was in respect to the slip-joint shown
in Figure 3. As I understand the law, where an invention has been
conceived and used in this country this fact may be shown as a bar
as against the effect of a foreign patent of a later date. If that is
the point in issue, the mere fact that the slip-joint was joined with a
well-known gage does not carry force. It seems that plaintiff has
done all that is required under the law. It is the combination that
gives patentability to the device, and as that is true, then there would
be nothing to be urged against it in respect to this French patent
[U. S. Dlftrlct Court — ^District of Oregon.]
United Staixs op America v. Patterson.
Decided May 11, 1911.
174 O. a, 287.
Peejxjbt— Athdavit to Sitppobt Application fob Lettbbb Patentei^
An oath, declaration, or affidavit subscribed by an applicant for patent
in support of his application is one touching a matter material to an inquiry
before the Commissioner of Patents and is such a one upon which perjury
may be predicated under section 6392, Bevised Statutes of the United
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DECISIONS OF UNITED STATES COUBTS IN PATENT CASES. 419
States, if the party making the oath or making the declaration or affidavit
swore falsely in relation thereto or if at the time of making such oath he
did not believe the matter set forth therein to be true.
Mr. Salter E. Evana^ Assistant United States Attorney.
Mr. H, H. Riddell and Mr. L. H. Mahone for the defendant.
Bean, Dis. /., (charging jury:)
Now, gentlemen, you have heard the testimony and the argument
of counsel in this case and it only remains for the court to define the
law by which you are to be governed in arriving at your verdict. The
defendant is accused by the indictment returned against him, with a
violation of section 5392 of the Revised Statutes, which provides that
every person who having taken an oath before a competent tribunal,
officer, or person in any case in which the law of the United States
authorizes an oath to be administered, that he will testify, declare,
depose, or certify truly or that any written testimony, declaration,
deposition, or certificate by him subscribed is true, wilfully and con-
trary to such oath states or subscribes any material matter which he
does not believe to be true, is guilty of perjury.
The indictment charges that on the 14th day of March, 1907, the
defendant in this case swore falsely, under an oath administered to
him by C. W. Hodson, a notary public for this State, in a material
matter on an inquiry then pending before the Commissioner of Pat-
ents of the United States. A copy of the oath is set out in the indict-
ment, and it is charged that Patterson on the day mentioned, swore
in this affidavit that he verily believes himself to be the original, first,
and sole inventor of the improvement in buckles described and
claimed in the annexed specification ; that he does not know and does
not believe that the same was ever known or used before his inven-
tion or discovery thereof, whereas, in truth and in fact, he well knew
that he was not the original and first inventor of the improvement,
and that one A. E. Van Emon was such original and first inventor
and discoverer of this improvement in buckles, and that he, the said
Patterson well knew and believed that the same had been known and
used before his alleged invention and discovery thereof.
Now, under the laws of Congress relating to patents, it is requisite
for one desiring to obtain a patent upon a new invention or a novel
improvement upon an old invention, to make an application therefor
in writing to the Commissioner of Patents and file the same in the
Patent Office, specifying in a certain manner the invention he wishes
to have patented. The law further requires that the petitioner or
applicant for the patent shall make an oath that he does verily be-
lieve himself to be the original and first inventor or discoverer of the
art, machine, or improvement for which he solicits patent, and that
he does not know and does not believe that the same was ever before
known or used.
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420 DECISIONS OP UNITED STATES COUBTS IN PATENT CASES.
Such an oath, aflSdavit, or declaration constitutes in part the proof
upon which the Commissioner of Patents acts in determining whether
or not the invention claimed is new or useful and is such a one as to