acter of the goods in the same way that the expression " Getwell ^
is descriptive of a medicine, as it has been held to be. {In re Antu
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DECISIONS OF THB COMMISSIONER OF PATENTS. 3
Cori-Zine Company, C. D., 1910, 291; 151 O. G., 452; 34 App. D. C,
191.)
It is believed that the registration was properly refused.
The decision of the Examiner of Trade-Marks is affirmed.
Pope v. McKenzib.
Decided June 6, 1911.
174 O. G.. 583.
IXTKBFEBFNCE — PbIOBITT.
Priority Held properly awarded M., since the evidence fttlls to establish
that P., the jnnior party, had a conception of the invention prior to M's
filing date, or if he be assumed to be the first conceiver that he was diligent
at the time M. entered the field.
Apfcal from Examiners-in-Chief.
APPABATUS FOB DISTILUNG WOOD.
Messrs. Kay, Totten cfe Winter and Mr. Frederick W. Winter for
Pope.
Messrs. Redding, G^teeley cfe Austin for McKenzie.
Moore, Commissioner:
This is an appeal by Pope from the decision of the Examiners-in-
Chief reversing the decision of the Examiner of Interferences and
awarding priority of invention to McKenzie.
The issue is in three counts, as follows :
1. An apparatus for the extraction of turpentine, etc, from wood» comprising
a closed vessel for the reception of the wood to be treated provided with inlet
and outlet for the batli and combined products respectively, a vessel for the
reception of the bath and combined products, means for circulating Uie bath
between the two vesads, means for Introducing steam into the bath in the
second-aamed vessel, means for condensing the vapors from the second-named
vessel, and means for reheating the bath on its return from the second-named
vessel to the first-named vessel.
2. An apparatus for the extraction of turpentine, etc., from wood, comprising
a vees^ for the reception of tiie wood to be treated provided with inlet and
outlet for the bath and comMned products respectively, a vessel for the recep-
tion of a portion of the bath with which the wood has been treated, means for
circulating a portion of the hath l>etween the two vessels, means for introducing
steam into the portion of the bath in the second-named vessel to remove the ex-
tracted products, and means for condensing all the vapors from the second-
named vessel.
3. An apparatus flor extracting products from wood, a retort in whidi tlie-
wood is to be treated with a bath, a vaporising-chamlier connected to the retort,
means for maintaining pressure in said retort, means for circulating the bath
from the retort to the vapor izing-chamber and return, and means for heating
the bath on its way back to the retort
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4 DECISIONS OP THE COMMISSIONER OP PATENTS.
McKenzie is an applicant for the reissue of his Patent No. 852^36,
the application for which was filed December 30, 1905. In his pi*e-
liminarj' statement he alleges conception and disclosure in October,
1903, drawings in May, 1904, and reduction to practice in Noveniber,
1904.
Pope is an applicant for patent, his application having been filed
December 13, 1906, and in his preliminary statement he alleges con-
ception in July, 1904, disclosure in August, 1904, drawings September
13, 1904, and reduction to practice in December, 1904.
From the testimony filed it is clear that the actual reduction to
practice to which each party lays claim in his preliminary statement
is a single apparatus built by the Weed Distilling Company at Wil-
mington, N. C., about November or December, 1904. Both parties
were then associated with this company, McKenzie as vice-president
and general manager and Pope as superintendent. The apparatus
in question was known as the paving-block unit, and was the out
growth of plans and efforts upon the part of one Weed, which began
about May, 1904. Weed was also the inventor of the process and
apparatus under which the Weed Distilling Company originally op-
erated. His testimony, which would doubtless have thrown uiuch
light on the present controversy, could not be obtained on account of
his death.
Weed's scheme for making paving blocks, upon which he begun
working about May, 1904, was to first distil the turpentine, etc., from
the blocks and thereafter saturate them with some preserving com-
pound, as usual. He conducted some experiments toward this end
on Mayo's Island about May, 1904, and ordered from the Richmond
Iron Works iron tanks and other apparatus for use in a full-sized
plant. He also had drawings made, one of which showed diagram-
matically a full apparatus for performing the distilling step of his
process. This is in evidence as " McKenzie's Exhibit, Cares Sketch,
Solid Bosin Bath Apparatus of June 2, 1904," and, as will be seen
later, clearly embodies or implies all the elements called for by the
counts of the present issue, except that it does not indicate an inten-
tion to introduce steam into the hath^ as called for by counts 1 and 2.
It appears that Weed, after pursuing the project for sometime on
his own behalf and with some effort at secrecy, found himself unable
to bear the expense and sold the apparatus being made to his order
by the Richmond Iron Works, as well as that used on Mayo's Island,
to the Weed Distilling Company.
The paving-block unit was completed by this company under Pope's
care largely from the material thus acquired, and during its con-
struction Pope had a drawing made of its lay-out, which is in evi-
dence as " Pope's Exhibit, Drawing of Paving Block Unit." This
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DECISIONS OF THB 00MMI6SI0NBB OF PATENTS. 6
drawing differs f rcxn the Cates sketch made for Weed in that it omits
Ai^y suggestion of a stand-pipe or other means to produce pressure
in the distilling-retort, as shown in the Cates sketch and called for
by count 3, and, further, in adding another outlet to the vaporizing-
tank besides one in the bottom, as shown by Cates's sketch. This
additional outlet was made in Uie side of the vaporizing-tank about
thirteen inches from the bottom and was apparently put in under
Pope's direction.
Assuming that the paving-block unit was built according to this
exhibit drawing of Pope's, it would have embodied the invention of
counts 1 and 2 if it was so operated that the outlet in the bottom of
the vaporizing-tank was closed and the bath allowed to collect and
flow out the opening in the side above referred to, so that tiie steam
which enters this tank through perforated pipes at the bottom might
be introduced ^^ into the bath," as specified in these counts. There is
no evidence, however, that the apparatus was used in this way or that
if it was its operation was successful enough to demonstrate the prac-
ticability of the invention. (McKenzie record, p. 143, X-Q. 328;
Pope record, p. 12, Q. 42; p. 44, Q. 18; p. 101, Qs. 55 and 66.) As
above pointed out, the apparatus did not embody count 3 because
there was no means for maintaining pressure in the vaporizing-tank.
Clearly, therefore, the paving-block unit cannot be taken as a
reduction to practice of any of the counts of the issue by either party.
A second plant, called the " first distilling unit," was built by the
Weed Distilling Company, which it is also claimed was a reduction
to practice of the present invention. This plant was started while
Pope was still superintendent, but finished several months after he
left the company. There is somewhat more testimony as to its suc-
cess than is found in regard to the success of the paving-block unit ;
but its structure is even less satisfactorily shown, and up<m the whole
the evidence is entirely insufficient to establish this apparatus as a
reduction to practice — certainly not for Pope's benefit, for he was not
present or responsible for its completion and test.
There is no other proof of actual reduction to practice by either
party. Both parties must, therefore, rely upon the constructive re-
duction to practice to which they are entitled by the filing of their
respective applications, and Pope, the junior party, can prevail over
McKenzie only by showing that he conceived the invention prior to
McKenzie and was diligent in reducing it to practice at and after
the time McKenzie entered the field.
The time of McKenzie's entry into the field is very much in doubt.
His claims to conception in 1903 are not proved by the evidence
submitted in support thereof for reasons clearly pointed out by the
tribunals below, and it seems doubtful whether he even had an under-
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6 DECISIONS OF THE C0HMIS3I0NBB OF PATENTS.
etanding of the invention, whether original or not, until after 1904«
In the view I take of the case, however, it is immaterial whether he
be given a date of concepticm earlier than the filing of his original
application on December 30, 1905, or not.
Pope admits full knowledge of the paving-block apparatus as pro-
posed by Weed and shown in the Gates sketch prior to his alleged
conception in July, 1904. (Pope record, p. 31, X-Q. 150; p. 52,
X-Qs. 279 to 289.) This Gates sketch discloses a structure which
satisfies count 3, including the means for producing pressure in the
distilling-retort, as above indicated. Pope urges that no such means
is shown, but it seems to be shown there as clearly as in the Pope
application, the means being a stand-pipe in eadi case and apparently
of about the same heights As to counts 2 and 3, Pope seems to rely
upon his addition to the Weed apparatus of the pipe leading fr<Mii
the side of the vaporizing^tank about thirteen incl^ from the bottom
(as shown in the drawing made for him) for evidence of conception
by him of the invention covered therein. It has already been pointed
out that the record fails to prove that this outlet wa^ the exit of the
rosin bath as used or that it was so intended. It was only by using it
in this manner that the steam could be introduced ^' into the bath,^
as specified in counts 1 and 2. Even Pope's application as filed more
than two years after the making of the Pope exhibit drawing of
paving-block unit, into which this feature was introduced, is strangely
silent on the question of introducing the steam into the bath. 'Diis
is an expression adopted from McKenzie's case, where stress ia laid
on this point.
I do not find that Pope had e^ablished a conception of the inven-
tion by him prior to McKenzie's filing date; but it is clear that be
cannot prevail even if he be granted the benefit of a conception as
early as alleged in his prelimiiuury statement, for there is absolutely
no evidence of diligence on his part during December, 1905, when
McKenzie came into the Office with an application, or thereafter,
until December 13, 1906, when his (Pope's) application was filed.
The evidence in this case is such that the parties must, in effect,
fetand upon their respective filing dates, and on these McKenzie must
prevail.
Pope also urged that McKenzie has no right to make a claim cor-
responding to coimt 3 of the issue. He brought a motion to dissolve
upon this ground, which was denied by the Primary Examiner. I
find no error in the holding of the Examiner on this point.
The deciiion of the Ewaminers-in-Chief is affirmed.
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DSOIBIOHS OF THE OOMMISSIONBB OF PATENTS. f
BOTTER V. SaMUELSON.
Decided December 28, 191U
174 O. a, 684.
Intebfeebnce — Obdeb to Show Cattse — Motion to Dissolve — ^Delat nr
BsniGiNO.
Where a party who is nnder order to show cause why judgment should
not be rendered against him on the record brings a motion to dissolve the
interference after the time allowed by the rules, it is incumbent upon him
to Justify the delay in bringing such motion by reasons which are com-
pelling fai their nature. It is not sufficient to merely show that it was not
convenient to file the motion within the time or tliat the matter was delayed
by other business which was deemed more pressing.
Appeal on Motion,
STEAM-TURBINB.
Mr. G. F. De Wein for Rotter.
Mr. Albert G. Davis for Samuelson,
Billings, First Assistant Commissioner:
This is an appeal by Rotter from the decision of the Examiner of
Interferences refusing to transmit his motion to dissolve the above-
entitled interference.
The record shows that Rotter alleged in his preliminary statement
a date of conception which is subsequent to the filing date of the
Samuelson application.
The Examiner of Interferences thereupon issued an order upon
Rotter to show cause within thirty days why judgment should not
be rendered against him.
In response to the order to show cause and after the expiration of
thirty days Rotter filed a motion to transmit a motion to dissolve
the interference. The sole ground for dissolution set forth in the
motion is that the invention defined in the issue is anticipated by
itertain prior patents.
Where a party is under order to show cause why judgment should
not be rendered against him, because his date of conception as alleged
in the preliminary statement is subsequent to the filing date of the
fc«enior party, the rules provide for the filing of the various motions
which may be deemed pertinent to the order. When such motions,
however, are filed late, it is incumbent upon such parties to justify
the delay by reasons which are compelling in their nature. It is not
sufficient in such cases to merely show that it was not convenient to
file the motion withm the time or that the matter was delayed be-
i*ause of other business which was deemed more pressing. To the
same effect is the decision of the Commissioner in the case of Ryder
â–¼. Brovm v. Tripp and McMeans v, White^ (C. D., 1908, 233; 137
O. G., 228.)
54282'— 13 4
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8 DBOISIOirS 07 THB OOMMISSIONBB 07 PATENTS.
In justification of the appellant's delay it is stated in the affidavit
of counsel that he thought it necessary to consult with the chief en-
gineer of the assignee company before filing the motion and that he
could not gain an audience witii this official until the day before the
expiration of the time in which the motion should ordinarily be filed.
It does not appear, however, that there was any special eff<^ made
to have an early interview.
The motion merely sets up a few patents in anticipation of the in-
vention defined in the issue. It is not clear why it was necessary for
counsel to interview the chief engineer of the company to asccortain
whether such a motion should be filed.
The showing is wholly insufficient to justify transmission in view
of the conditions of this interference — to wit, the moving party is
prima facie the second inventor, and it is nowhere alleged that the
senior party, so far as his disclosure is concerned, is not entitled to
make the claims.
The decision of the Examiner of Interferences is affirmed.
Ex PABTB Soci^TE Anonyke Des XJsines Remt«
Decided Novemher 28, 191 J.
174 O. G., 585.
Tbadb-Mabks — ^Application — Declabatioh — ^Bxclubive Use.
A statement that a mark has been in exclusive use for ten years next
preceding the passage of the Trade-Mark Act of February 20, 1906, HeU
not sufficient to bring the case under the provisions of that act as amended
February 18, 1911, since the original act went into effect April 1, 1906, and
the term ''passage of the act*' refers to that date, (ew parte Joseph B.
Funke Company, G. D., 1906, 413; 124 O. 6., 2902,) whereas the amendment
specifies that the use must have been exclusive for "ten years next pre>
ceding February 20, 1906."
On Petition.
TRADE- MARK FOR STARCH FOR LAUNDRY AND OTHER PITRPOSBBL
Mr. Henri Van Oldenneel for the applicant.
Tennant, Assistant Gomjmissioner:
This is a petition that the requirement of the Examiner that a new
declaration be furnished be set aside and the declaration already filed
be accepted.
This application is presented for registration under the ten-year
proviso of section 5 of the act of February 20, 1905, and the declara-
tion concludes as follows:
* * * that said mark has been in actual use as a trade-mark of the appli-
cants and of applicants' predecessors in business from whom title was deriyed
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DECISIONS OF THB OOMMISSIONSB OF PATENTS. 9
for ten years next preceding the passage of the act of February 20, 1905, and
that, to the best of deponent's knowledge and belief, such use has been ex-
cluslTe.
The Examiner in his first letter criticized the declaration as
follows :
The words *'the passage of the act of* should not have appeared therein.
(See Trade-Mark I^w Aniendni^t, 163 O. 6., 733.)
It is pointed out in response by counsel for the applicant that the
Kules of Practice which were issued prior to the date of the passage
of the amendment to the Trade-Mark Law which was approved
February 18, 1911, and also the copies which were furnished to him
afterward, contained in Form 8 of the Appendix a declaration in the
precise terms used by the applicant. It is urged that in view of
these facts the requirement for a new declaration should be waived.
In the act of February 20, 1905, the ten-year proviso contained the
requirement that the marks must have been in exclusive use as a
trade-mark by the applicant or his predecessors " for ten years next
preceding the passage of this act." This provision was construed
in the case of Joseph B. Funke Company (C. D., 1906, 418 ; 124 O. G.,
2902) to mean that the period covered by exclusive use to warrant
registration must be the period of ten years next preceding April 1,
1905. In that decision it was stated that —
* * * the expression, *' passage of the act ** as usually construed when used
to fix a date In a statute which goes into effect upon a different date from that
upon which it is enacted or approved refers to the going into effect of the
act and not to its approval.
By the amendment which was approved February 18, 1911, the
terms of the statute were modified to provide that the period of ex-
clusive use must be "ten years next preceding February 20, 1905."
The provisions of section 5 of the act of February 20, 1905, as
amended are conditions precedent to the issuance of a certificate of
registration, and since such a grant follows the course of statutory
procedure it is necessary that the applicant should follow the terms
prescribed by statute. It is therefore held that the requirement of
the Examiner that a new declaration should be filed is right.
It is unfortunate that in the present case the applicant has been
misled by publications issued from this Ofiice. It is to be noted, how-
ever, that it has been the practice of the Office ever since the passage
of the amendment of February 18, 1911, to inclose in the copy of
Trade-Mark Rules a printed copy of the Trade-Mark Law. Notice
of such amended law was also published in the Official Gazetiw
immediately after its approval. Under these circumstances it is
not believed that the excuse given by the applicant is entitled to any
special consideration, even if it could otherwise be accepted.
The petition is denied.
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10 DECISIONS OP THE COMMISSIONER OF PATENTS.
Ex PARTE GrOSSE AND FrENCH.
Decided February 4, 1911,
174 O. G., 829.
Patentability — Ironing-Machines.
A claim for an ironlDg-machine Held unpntentable over the prior art,
since neither the substitntion of gas for steam an the bent lug medium or
placing the gas-burner below the level of the median line of the shoe re-
quired invention.
Appeal from Examiners-in-Chief.
IBONING-MACHINB.
Mr. WiUiam L. Hall for the applicants.
MooRE, Commissioner:
This is an appeal from a decision oi the Examiners-in-Chief affirm-
ing the action of the Primary Examiner finally rejecting the follow-
ing claim :
7. The combination with a rotary drum of a chamber in rear of said drum
the forward side of which comprises a concave shoe, between which and the
drum the work is passed, the axis of the drum being disposed at a substantial
distance above the level of the longitudinal median line of the shoe wherry
the shoe is inclined rearwardly from the vertical and a horizontal burner
arranged longitudinally of said chamber in rear of said shoe, and below the
level of said longitudinal median line.
The references are: Crawford, No. 238,657, March 8, 1881; Poland,
No. 540,334, June 4, 1895 ; Binder, No. 568,732, October 6, 1896.
The object of the invention covered by this claim is, as stated in the
specification —
♦ ♦ ♦ to so arrange the shoe relatively to the drum as to facilitate the heat-
iiig of the ironing-surface of the shoe.
The patent to Poland discloses an ironing-machine in which the heat-
ing-chamber is so arranged that the longitudinal median line thereof
is disposed a substantial distance below the axis of the drum. This
chamber is heated by steam; but the position of the Primary Ex-
aminer is that applicants have done nothing more than to substitute
gas for steam as a heating medium, such use of gas being old in the
patents to Crawford and Binder.
This holding is believed to be entirely correct. The mere placing
of the gas-burner below the level of the longitudinal median line of
the shoe, so that the flame plays upwardly on the heating-surface,
cannot be held to rise to the dignity of invention. Such a modifica-
tion of the devices of the prior art is believed to be well within the
skill of the ordinary mechanic.
The decision of the Examiners-in-Ckief is affinned.
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DB0I8I0N6 OF THE 00MMI88I0KEB OF PATSNT8. 11
Ex PABTE DnSTRICK.
Decided November 6, 191L
174 O. G^ 829.
1. Appucation — PjtosEOUTioN — Pbeuntation of GLAI1C8 Afteb FHfAL Rb-
JVCTIOn — INSCITICISNT SHOWUVG.
Where after a final rejection an am^dment was filed directing ttiat tlie
finally-rejected claims be canceled and presenting new claims. Held that
a statement that neither the applicant nor his attorney had looked for a
flsal rejection and in view of the Examiner's action ai^icant was willing
to take narrower c^ims was not such a showing as required by Rule 68,
(citing ew parte WUler, a D., 1900, 02 ; 91 O. G.. 1033.)
2. Sams— Same — Insuffk^sht Pbosboution — ^Abajtdormbnt.
Where within a year from the date of a final rejection an amendment
was filed directing that the finally-rejected claims be canceled and adding
new claims, which amendment the Examiner refused to. enter for lack of
sufficient showing under Rule 08, and after the expiration of the year appli-
cant directed that the new claims be canceled. Held that no responalye
action tiad been made within the year and that the application was
abandoned.
On PwinoN.
MATCH-PACRAGK.
Mr. Wilbur W. Williamson for the applicant.
MooRB, Commimoner:
This Ib a petition from the Examiner holding the above-entitled
application abandoned.
On June 80, 1910, the Examiner rejected all the claims in view of
the references, giving his reasons for such holding, certain of the
references being already of record. On August 1, 1910, the appli-
cant filed an amendment presenting one new claim and coiitaining an
argument as to the patentability'of the remaining claims. On Au-
gust 12, 1910, the Examiner hdd that claims 5 and 6 were allowable,
subject to certain corrections, pointed out that the new claim pre-
sented in die amendment of August 1, 1910, covered subject-matter
which had already been considered, and finally rejected the claims
other than 5 and 6. On January 3, 1911, an amendment was pre-
sented canceling the finally-rejected claims, adding three claims, and
stating that claim 6 was in proper form as it stood, since " a separate
integral portion " referred to the portion D'. This amendment the
Examiner refused to enter, since the case was under final rejection
and no good and sufficient reason, duly verified, was given why the
amendment was not earlier presented. He also notified the applicant
that the year in which proper action could be taken ran from '^August
12, the date of final rejection.^'
On April 28, 1911, there was presented an affidavit of the attorney
stating that the three claims had not been earlier presented since
neither applicant nor attorney had looked for a final rejection, but
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12 DECISIONS OF THB OOMMISSIONEB OF PATENTS.
that since the Examiner was of the opinion that the claims were not
allowable applicant was willing to take narrower claims. This
amendment was refused admission, and on August 21, 1911, an amend-
ment was presented directing the cancelation of " claims 8, 4 and 5."
The Examiner thereupon held this case abandoned, since tiie amend-
ment was not presented within the ytear, and from this holding the