fw the application of the principle, but not essentially different
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488 MSCISIONS OF UNITED STATES C0UBT8 IN PATENT CASES.
ones. These claims were within the disclosure of the second applica-
tion in specification and drawing, and mi^t have, as we have seen,
bewi made and brought into that interference, and expressly and
directly embraced in the decision therein. To allow them in this
subsequent proceeding would result in a patent dominating the nar-
rower claims then directly determined, and impair the operation
and effect of that decision. The conditions bring the case within the
doctrine thus stated in Blackford v. Wilder^ supra:
Applying the well-aettled principle of estoppel by judgment, before stated. It
follows Inevitably that the final decision In the first interference is conclusive,
unless it can be made to appear that the question upon which the determination
of the second case rests is one that neither was, nor could have been presented
and determined in the first case.
The other cases are in accord. The decision was right and wiU he
affirmed. This decision will be certified to the CJommissioner of
Patents.
Afjirmed.
[Court of Appeals of the District of Columbia.]
HUTF V. GULICK.
Decided March 4, 1912,
1T9 O. G., 679; 38 App. D. C, 834.
INTERFBBENCE — PBIORITY.
Evidence reviewed and Held Insufficient to establish beyond a reasonable
doubt that H., who was the last to conceive the Invention In Issue, reduced
the same to practice before G. filed his application, and priority Held
properly awarded to G.
{For ComnUsHoner's decision see ante, 102; 177 O. O,, 525.)
Mr. J. A. Watson for the appellant.
Mr. A. H, Graves for the appellee.
Van Ohsdel, /.;
This is an appeal frcnn a decision of the Commissioner of Patents
in an interference proceeding.
The applications in issue relate to improvements in motor- vehicles,
and are explained by the Examiner of Interferences as follows :
The Invention In Issue Is concerned more particularly with the construction
of the back axle and embodies. In connection with other elements, a casing of
peculiar Intumed construction surrounding the differential and ends of the axle
section. The purpose of the organization appears to be the retention of the
lubricant In the casing, upon tilting of the axle, and to prevent consequent Im-
pairment of the functions of the adjacent band brake.
The invention is set forth in a single count, which reads as follows :
In a motor vehicle, the combination of axle-sections, differential gearing, a
main casing about said gearing having Inwardly-extended sleeves at Its opposite
ends surrounding said axle-sections, and end casings detachably fastened to the
exterior of said main casing and havlDg tubes or sleeves receiving said axle-
Mctions and fitted in said main casing sleeves.
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DECISIONS OF UNITED STATES COURTS IN PATENT CASES. 489
It appears that appellee conceived the invention at least as early as
February, 1906, while appellant failed to produce evidence of con-
ception prior to November, 1906. Appellee made no reduction to
practice before August 9, 1907, the date of the filing of his applica-
tion, upon which a patent was issued November 24, 1908. Appellant
did not file his application until April 28, 1909, a date subsequent to
the issuance of appellee's patent. Hence the burden is upon appel-
lant to prove his case beyond a reasonable doubt.
Appellant relies for reduction to practice upon a test run made in
March, 1907, with an automobile containing the invention in issue.
The testimony, however, fails to show definitely the successful opera-
tion of the device. The run was planned from Detroit to Buffalo,
but was abandoned at Toledo, owing to the breaking of the bridge
after a run of about eighty miles. The evidence shows that the injury
was not occasioned through any defect in the novel parts of the
bridge, and that the car ran well until the accident. The testimony,
however, goes no further. It fails to show that the device fulfilled its
purpose. It is apparent that the machine might have run well for
eighty miles, and yet the experimental bridge may have retained the
oil no better, or possessed no greater strength, than the known devices.
We agree with the tribunals of the Patent Office in holding that this
test was insufficient, and also that the invention is sufficiently complex
to require a test in order to demonstrate its practicability.
Appellant also testified as to other experimental runs, but his testi-
mony is uncorroborated, and, therefore, insufficient. The same ob-
jection applies to his testimony that several of the 1908 cars, which
are shown by an instruction-book offered in evidence to contain the
subject-matter of the issue, were sold between July 30, 1907, and
August 9th. It is true he testifies after reference to the books of the
company, but these books were not placed in evidence, and hence are
not corroborative. Neither is the date of the instruction-book proved.
We are of opinion, therefore, that appellant has failed to overcome
the heavy burden resting upon him, especially in view of the fact that
he was in a position to prove beyond question the facts upon which
he seeks to establish his right to a patent. Even if the operation of
the experimental bridge on the Toledo run was not susceptible of more
definite proof, other tests were made about which evidence could have
been adduced. It was also within his power to prove conclusively
that the 1908 cars were put into operation prior to appellee's filing
date, if such was the fact. Having this evidence within his control,
and not producing it, it must be presumed that it was unfavorable to
his case.
The decision of the Commissioner of Patents is affirmed^ and the
clerk is directed to certify these proceedings as by law required.
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490 DECISIONS OF UNITED STATES COURTS IN PATENT CASES.
[Court of Appeals of the District of Columbia.]
In re Meyer Bros. CoFf ee and Spice Compant,
Decided April i, 1912,
179 O. a, 579; 38 App. D. C, 520.
Tbads-Mabks — " Tbopht " — Descriptivi.
The word "Trophy" Held properly refused registration on Uie ground
that it is descriptive, in that it Indicates that the goods to which it is
applied had been recognized as of superior quality.
(For Commissioner's decision see C. />., 1911, 109; 110 0. G., 105.)
Mr. J. A. Carr for the appellant.
Mr. W. S. Ruckman for the Commisioner of Patents.
Shepard, 67. /.;
Applicant appeals from a decision of the Commissioner of Patents
denying registration of a trade-mark for coffee, which consists of the
representation of a loving-cup in connection with the word " Trophy."
The Commissioner held that the mark is descriptive, in that it indi-
cates that the applicant's goods have been recognized as of a superior
quality by the representation of a prize or trophy.
The decision is within the principle governing former decisions
of this court, and others. (See in re National Phonograph Co.^ C. D.,
1907, 550; 128 O. G., 1296; 29 App. D. C, 142; Worcester Brewing
Corporation v. Renter cfe Co., C. D., 1908, 329; 133 O. G., 1190; 30
App. D. C, 428 ; in re Meyer Bros. Coifee and Spice Co., C. D., 1909,
312; 140 O. G., 756; 32 App. D. C., 277; in re New South Brewery
Co., C. D., 1909, 364; 142 O. G., 291; 32 App. D. C, 591; Tin/lor v.
Gillies, 59 N. Y., 331 ; Standard Paint Co. v. Trinidad Asphalt Co.,
C. D., 1911, 530; 165 O. G., 971; 220 U. S., 446.)
The decision wiU be affirmed and this decision certified to the Com-
missioner of Patenta
Affirmed.
[Court of Appeals of the District of Columbia. 1
In re Meta Mattullath, Administratrix of Hugo MATTUUiATH.
Decided AprU 1. 1912.
179 O. a, 853; 38 App. D. C, 497.
1. Abandonment of Application — Appeal from Decision of Comhibsion^h-
JUBISDICTION of OOURT OF APPEALS OF THE DiSTBIOT OF OOLTTMBIA.
Where the Ckmimlssioner decides that the showing made is not suffid^t
to establish that the delay in the prosecntion of an application was un-
avoidable within the meaning of section 4884, Revised Statutes, Held that
his action is subject to review on direct appeal to the Court of Appeals of
the District of Columbia.
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DECISIONS OP UNITED STATES COURTS IN PATENT CASES. 491
2. Same — ^Delay Unavoidable.
Record reviewed and delay In the prosecution of the application Held
"unavoidable" within the meaning of that term as used in section 4894,
Revised Statutes. (Ruling in ex parte Pratt, C. D., 1887, 31; 39 O. G.,
1549, approved.)
Mr. W. H. Swenarton for the appellant
Mr. W. S. Ruckman for the Commissioner of Patents.
Shepard, G. J.:
On J-anuary 8, 1900, Hugo MattuUath filed an application for a
patent for a flying-machine. His home was then in the city of New
York, where his family then, and has since resided. At the time of
filing the application he was in the city of Detroit, Mich., and gave
a power of attorney to Barthel & Barthel, patent solicitors, having an
office in that city, to represent him. The power of attorney was
filed with the application and the same was prosecuted by the solici-
tors in connection with their associate in the city of Washington.
On March 10, 1900, objections were made by the Examiner, in which
he pointed out many formal defects, suggesting changes, amendments,
etc In the body of this communication he said :
The construction is regarded as inoperative for the purpose intended and
therefore not useful within the meaning of the patent law. No successful
attempt has yet been made to rise from the earth's surface by means of an
aerial vessel unprovided with a balloon. The results of previous experimenta-
tion indicate that even if the rising could be successfully accomplished, the
vessel would be uncontrollable through inability to maintain its normal
position or balance. Minor difficulties lie in the apparent inadequacy of the
propelling means acting against the air, to insure such speed either in the air
or in water as is needed to give the aeroplanes sufficient lifting power. Ap-
plicant has disclosed no new principle or construction which would on its face
exempt his device from the difficulties by his predecessors in this line. How-
ever plausible applicant's theory may be, in view of the present state of the
mechanic arts and the results of previous experimentation the step Is so long
from the theory to actual use, and the practicability of his apparatus is so
problematical that actual demonstration of operatlveness will be required be-
fore the grant of a patent.
The communication was responded to April 9, 1900, by the Wash-
ington solicitor in a communication proposing amendments, and ar-
guing in favor of general patentability. A communication from the
Examiner, dated May 16, 1900, objected to certain claims, allowing
one, and suggesting amendments to others. In conclusion he added :
The former criticisms as to the showing, etc., are repeated.
Other amendments were offered during 1901 and 1902, and the
Examiner, on October 1, 1902, sent a communication, rejecting
claims 1 and 2 on references, suggesting amendments to claims 15
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492 DECISIONS OF UNITED STATES COURTS IN PATENT CASES.
and 16, and that claims 21, 22, and 23 appear to be allowable. In
conclusion he said:
The rejection on the ground of inoperativeness and conseqa^it lack of util-
ity is adhered to.
The correspondence took place between the Washington solicitor
and the Examiner. September 18, 1903, the solicitor filed formal
amendments in an attempt to comply with the last notice of objec-
tions. September 29, 1903, the Examiner made the following in-
dorsement on the application for amendment, signing his name
thereto officially :
This application as amended September IS, 1903, has been considered. An
amendment has been received in this case, but no action can be taken upon the
merits thereof for the reason that the applicant's death operates as revocation
of the power of attorney to Barthel & Barthel and there is no one of record
authorized to prosecute the case.
There is no suggestion of the death of the applicant in the record,
and how knowledge thereof came to the Examiner is not shown.
The transcript of the proceedings in the Office does not show the
fact, but it appears from the affidavits filed in the prosecution re-
newal that a letter was addressed to Barthel & Barthel notifying
them of the revocation of their power of attorney by the death of the
applicant. It appears in the same way that Hugo Mattullath died
in Washington December 30, 1902. It appears from the Office tran-
script that a letter was filed August 14, 1909, from the Washington
solicitor giving permission to Professor Zahm to inspect the applica-
tion and drawings on file.
October 19, 1909, Meta Mattullath who had received letters of
administration upon the estate of her deceased husband, Hugo Mat-
tullath, executed a power of attorney to one R. H. E. Starr of New
York, authorizing him to represent her in the Patent Office, which
was filed and accepted November 5, 1909, and Starr was so notified
November 6. September 16, 1910, she executed another power of
attorney to Joseph F. O'Brien, which was filed in the Office. On
November 22, 1910, O'Brien filed a short amendment of the original
application canceling claims 1 and 2 and formally amending claims
15 and 16 by inserting the " of " as suggested in the before-mentioned
communication of the Examiner dated October 1, 1902. The appli-
cation was entered on the Office records as abandoned October 3,
1903. On November 23, 1910, Meta Mattullath filed a petition to
revive. In this she alleged that her husband lived in New York and
died in Washington December 30, 1902, leaving petitioner, his
widow, and three daughters. That she had been duly appointed
administratrix of his estate. That while she and other members of
his family knew that intestate had worked on an invention of flying-
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DECISIONS OF UNITED STATES COUBTS IN PATENT CASES. 49d
machines, none of them had knowledge of Uie existence of the said
application until about October 13, 1909, when informed by an attor-
ney in New York, who called to request her to sign an instrument
authorizing him to have access to said file. Said authority was given
to Mr. Newell, but subsequently she executed a power of attorney
to R. H. E. Starr, revoking the f(Miner one. That intestate left no
estate whatever, and petitioner was destitute, and being supported
by her children. Mr. Starr consented to act for her without fee, if
she could advance money for necessary disbursements. That she
managed to pay him forty-one dollars for the purpose, and he agreed
to make application to revive the application for patent. That peti-
tioner believed that application had been made. She has since
learned that no application was made by Mr. Starr on account of
severe illness, which finally resulted in his death. Shortly before his
death she wrote to him to return her papers in case his illness was
so serious that he could not prosecute the business promptly. Receiv-
ing word that he was unable to proceed, petitioner undertook to
recover her papers, among them copies of Patent Office proceedings
which Starr had obtained with the money advanced by her. That
these papers were scattered and could not be obtained. Petitioner
then undertook to procure the services of others and among th^n
considered Barthel & Barthel, but learning that they had written to
Mr. Starr wanting $100 per day, she did not communicate with them.
After some delay she succeeded in securing the services of Mr.
O'Brien, who agreed to represent her without compensation. That
she is informed that an amendment to the application was prepared
by Barthel & Barthel, or their Washington associate, after the death
of her husband and that the same was refused (m the ground that
his death had reveled their authority. That she was never notified
by said attorneys of said action; and had she been would certainly
have ratified the act of said attorneys in filing the amendment and
have endeavored to prosecute the application. That neither she nor
her children knew that her husband had an application pending, and
in fact did not know that there was a difference between an applica-
tion for a patent, and a patent. That they thought, frcnn his efforts
in the matter of airships that her husband had scnne kind of a patent,
but upon investigation found that such patients as he had had been
assigned to other parties. This petition to revive the application was
sworn to by the petitioner and supported by affidavits of each of the
children of intestate, and a son-in-law. An affidavit by the confi-
dential clerk of Mr. Starr, Rose V. Finn, corroborated petitioner as
regards the employment of Mr. Starr, and gave the details of his
sickness, of his attempt to attend to the revival of the application, of
his being compelled to leave his office, and removal of some of his
papers to his father's home; of the communications from petitioner
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494 DECISIONS OF UNITED STATES COUBTS IN PATENT CASB8.
regarding the business, and Mr. Starr's expression of the belief that
he would soon be strong enough to prosecute the business. She also
stated that when a suggestion was made to him to give the business
up, his reply was that petitioner had no money to employ another
attorney, and that he would soon be able to attend to it. A few days
before his death, he realized his condition, and then notified petitioner
and instructed that her papers be surrendered. Affiant searched for
copy of the application and file-wrapper, but was unable to find them.
Mr. Starr died of tuberculosis and neuritis on September 8, 1910.
The affidavit of Joseph F. O'Brien, the succeeding attorney, was to the
effect that as soon as employed he began the search for papers sup-
posed to have been in Starr's possession, and succeeded in obtaining
a letter of Wilbur F. Wright from Mr. Starr's father. The certified
copy of the application and file-wrapper could not be found and he
was ccHnpelled to obtain the same from the Patent Office, which he
received about ten days or two weeks before filing the petition to
revive. To this affidavit is attached the following letter from
Wilbur F. Wright:
College Pabk, Mabyland,
U October, 1909.
Miss Alice Mattullath, New York,
Deab Madam : — I thank you for your very kind letter of 29th Sept, which I
have found it impossible to answer hitherto. I had already arranged a canoe
to float the machine in case of coming down, so could not try the raft you were
so kind as to suggest and offer, but I very much appreciate the friendly spirit
which prompted you.
I knew a little of your father's work through conversation with Professor
Zahm and others, but he had died before my brother and I had reaUy begun our
work.
With many thanks and best respects,
Yours truly, Wh^bub Wright.
The following letter from Barthel & Barthel, to Mr. Starr, was also
attached :
Detboit, Mich., Nov, 20, 1909.
Mr. R. — StABB, 280 Broadway, New York, N, F.
Deab Sib : — In reply to your favor of November 13, re Mattullath, would say
that we believe the same discloses at least some of the fundamental principles
of the aeroplane.
In reference to the various points covered in your letter would say, first,
when we received the Patent Office letter notifying us that the death of the
applicant had operated as a revocation of our power, we believed that we
notified no one, as we did not know the address or whereabouts of the widow.
Second, as far as we know there was no ngreeuient in existence between the
applicant and other parties unless it might possibly have been parties in Pitts-
burgh or Prof. Langley or Zahm with whom we had consulted considerably
while in Washington. Third, we have no copy of any agreement or other docu-
ment which could show any interest in any outside party.
We could verify the above points fully upon making a proper search through
our office records.
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DECISIONS OF UNITED STATES COURTS IN PATENT CASES. 495
It is our recollection that at the time of Mr. Mattullath's death he was in or
near Washington and we had given him the address of our Washington asso-
. ciate, and that at the time of his leaving here he gave us no address where we
could reach him.
We received a notice from the Patent Office revoking our power of attorney
and do not believe that the family knew anything of the existence of this appli-
cation as Mr. Mattullath was very secretive in connection with work on this
invention. Our charge as attorneys would be $100.00 per day and expenses.
* * * Mr. Mattullath was a frequent caller upon us during the preparation
of this application and might state that he spent weeks at a time in and about
our office in connection with this matter.
(Signed) Barthex & Babthel.
The petition came before Assistant Commissioner Tennant, who
denied it in a decision entered March 25, 1911. The grounds of his
decision are fairly represented in the following extract from his
opinion :
It is urged in support of the petition that the delay in amending this applica-
tion within the period allowed by law was unavoidable, for the reason that the
administratrix was wholly unaware of the pendency of the application Mntil
October 13, 1909, and that thereafter she did all within her power and financial
means to obtain the revival of this application and resumption of its prosecu-
tion. It is urged that the ground of inoperativeness or lack of utility which was
the basis of the objection was removed at the time it was first demonstrated
that aeroplanes could be successfully flown and managed In flight, and it is
insisted that the Mattullath machine embodies the same principles as those
machines which are in successful flight at the present time.
Although the path of the administratrix of the estate of Hugo Mattullath,
as appears from the affidavits, has since October, 1909. been strewn with ob-
stacles, I am clearly of the opinion that the showing is insufficient to establish
unavoidable delay for the entire period since October, 1903, in the circumstances
attending this case. The application was flled in the early part of 1900, and a
patent was refused upon the ground that no heavier than air machines of this
character had ever been successfully flown and that therefore the invention
lacked utility. There is no showing In the record that any attempt was ever
made by this applicant to overcome this ground of rejection, although the case
was pending over two years before the death of the applicant It appears
from the affidavit of the administratrix, Mra Mattullath, that as early a date
as her marriage with Hugo Mattullath, which occurred in the year 1868, she was
aware that her husband was studying aeronautics and intended to build a flying
machine.
(It is to be observed that while this required demonstration of
opera tiveness was insisted upon, the Office had been commendably
permitting and aiding in the formal perfection of the clahns, pre-
liminary to the final demonstration of utility, which formal perfec-
tion had not been completed and was attempted in the last amendment
filed September 18, 1903.)
Petitioner renewed her petition for hearing before the Commis-
sioner. It is in the nature of an application for a rehearing. In
support of this petition she filed an elaborate affidavit stating particu-
larly, her efforts to obtain information. She said that her husband
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496 DECISIONS OF UNITED STATES C30UBTS IN PATENT CASES.
left Detroit on May 10, 1900, for Washington and only occasionally
visited New York city. Unable to learn anything about his interests,
she consulted Kaufman Simon, an attorney and friend, who advised '
her to communicate with all parties known to have been closely as-
sociated with her husband, who might know anything of his affairs.
Accordingly in January, 1903, she wrote to Charles H. McKse and
Frank Moore of Pittsburgh, and Professor Zahm and Mr. Brown of
Washington, who were believed to know something of her husband^s
work, inquiring if he had left any patents or anything in any shape
or form of value. No reply was received from McKee or Moore;
the letter to Brown was returned from the Washington post-office.
Professor Zahm replied that he did not know of MattuUath's having
any patent on flying-machines, and so far as he knew there was noth-
ing of value left by him. Affiant did not know of the Detroit at-