solve, that the issue is patentable Is prohibited by the rules, and the
question of granting a rehearing of such a motion rests within the
Examiner's discretion. Oreene v. Covert, 230^



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DIGB8T OF DBCISIONB. 695

9. Tbanbiiibbion — ^Delat in Bringing.^A motion to dissolve on the ground
that the moving party has no right to make the claims Held properly
refused transmission where the moving party is under an order to
show cause and the motion is not brought until after the denial of his
motion to dissolve on the ground that the issue is not patentable. Id,

10. Same — ^Whebb Indefinite. — Where the motion to dissolve is based upon

the ground that the claim is not patentable to the adverse party, but
contains no such clear statement of the reasons why the claioa is not
patentable as is required by the rules and practice of the Office, Held
that the Examiner of Interferences properly refused to transmit the
motion, for the reason that the same is indefinite. Keyes and Kraus v.
Yunck, 246.

11. Same — Right to Make the Claim — ^Affidavits. — "The decision of the

Examiner of Interferences in so far as transmission is refused upon
the ground that the motion is based upon affidavits is also right, since
it is obvious from the reading of the motion papers that the allegation
of inoperativeness is mainly based upon the facts set forth in the
affidavits referred to, and it is well settled that such affidavits should
not be transmitted for consideration upon a motion for dissolution,
for reasons fully set forth in the case of Horton v. Leonard (C. D.,
1910, 81; 165 O. G., 305)." Id,

12. Alleged Ibbeoulabity in Declaration — Based on Inoperativeness — No

Appeal from Denial of Motion. — No appeal lies from the decision of
the Primary Examiner denying a motion to dissolve the interference on
the ground of irregularity in the declaration thereof when such irregu-
larity is based on the alleged inoperativeness of the opposing party's
structure. Seacomhe v. Burks, 270.

13. Transmission. — Where in*an interference involving two parties no mo-

tion to dissolve was made on the ground that the issue is not patent-
able. Held that a motion to dissolve on this ground filed after the addi-
tion of a third party to the interference was properly refused trans-
mission. Onderdonk v. Rontke v. Moffait, 296.

14. Consent of Parties Not Conclusive. — Where both of the parties to an

interference are applicants, Held that the fact that each of them moved
to dissolve the interference on the ground that the issue is not patent-
able does not warrant the dissolution of the same if the Examiner is
of the opinion that the issue is patentable. Tamlinson v. Kiely, 305.

15. Transmission. — ^A motion to dissolve, alleging that the opposing party

has no right to make the claims. Held properly refused transmission
where it appears that the real point urged is that the applicant has
shifted from one species of invention to another. Hollen v. Kelly, 329.

16. Difference of Meanings in the Claims. — A motion to dissolve on the

ground that the claims have different meanings In the application of
the respective parties, Held properly refused transmission where the
only statement in support of the ground of this motion is that the counts
will not read upon the device of the moving party. Mcintosh v. Riley,
352.

17. Right to Make the Claims and Difference in Meanings — Nor De-

pendent Upon Prior Art. — ^The fact that a motion to dissolve an inter-
ference on the ground that one of the parties has no right to make the
claims, and that the counts have different meanings in the applications
of the respective parties, has been transmitted to the Primary Exami-
ner, constitutes no reason for transmitting the motion on the ground
54282^—13 47



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696 DIGEST OF DEGISIOirS.

that the Issue is not patentable where this ground of the motion la
indefinite, since the question of the right to make the claims and of
difference of meanings of the counts is not depoident upon title prior
art Fotoler v. Uptegraff, 367.

18. Supported in Pabt by AFFroAvrrs— Transmission.— Where a moti<Hi to

dissolve is filed, wliich in part is in proper form and in part based
upon or supported by affldayits, Held that it should be refused trans-
<nis8ion only In so far as it is supported by the affidavits. Dunn v.
Douglass, 360.

19. Allegation of Pubuc Use— Transmission,— A motion to dissolve on the

ground that tlie Invention in issue has been in public use Held properly
refused transmission. Id,

20. Filed Before Opening of the Preliminary Statements. — A motion

to dissolve if filed before the opening of the preliminary statements
should be refused transmission unless the circumstances are such that
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 further motions. Id,

21. Based on Public Use— Will Not be TRANSMrrrED. — A motion to dissolve

based on the allegation that the invention in issue 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 de-
termination of priority will be refused. Gardner v. Dels<m v. SampUner
V. Meyers, 367.

22. Transmission — Rests Largely Within the Discretion of the Ex-

aminer OF Interferences. — ^The transmission of motions to dissolve
rests largely within the discretion of the Examiner of Interfer^ices,
and his action transmitting such a motion will be disturbed only
where an abuse of his discretion is shown. Quensel v. Knox v. Pries
V. Murphy, 372.

23. Same. — ^The fact that the references cited on a motion to dissolve were

of record in the application of the parties is not in itself suffici^it
ground for refusing to transmit such a motion. Id,

24. Allegation of Inoperativeness Should Not be Supported by Affi-

davits.— A motion to dissolve based on the ground that the device of
the opposing party is inoperative should not be refused transmission
because unaccompanied by affidavits In support thereof, since such affi-
davits could not be considered by the Primary Examiner, (citing Horton
V. Leonard, C. D., 1910, 81; 155 O. G., 305.) Id,

25. Transmission.— A motion to dissolve on the ground that the issue is not

patentable over the prior art Held properly refused transmission where
a prior motion by the same party based on the gound that the opposing
party had no right to make the claims and that the claims have diifer-
ent meanings in the cases of the respective parties had been denied,
it being well settled that the issue of an interference will be given the
broadest interpretation consistent with the plain language thereof.
Burden v. Manson, 393.

MOTION TO SUPPRESS TESTIMONY. See Testimony, 7, a

MOTION TO TAKE TESTIMONY. See Testimony, 4, 5, 6.

NEW APPLICATION. See Abandoned Applications, 9.

NEW CLAIMS. See Abandonment of Applications^ 2; Prosecution of Applica-
tions, 2, 3, 29, 43, 44.



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DI€«ST OF DECISIONS. 697

NBW Bf ATTBR. S^ Amendments, 8 ; Claims, 5 ; Prosecution of Applications,
27; Reissue Applications, 10.

NEW OATH. See Detaj/ in FUinif Applications.

NEW RESULTS. See Claims, 4.

NEW USE. See Invention, 4.

NOTARY PUBLIC IN FOREIGN COUNTRY.

Appuoations — Oath — CiarnricATE of Diplomatic ob Consulab Offioeb. —
Where an oath to an application was taken before a foreign notary
whose authority was certified to by another notary, whose authority
was in turn certified to by a consular ofilcer of the United States, Held
not a compliance with the provisions of section 4892, Revised Statutes.
Ew parte Rose, 194.

OATH. See Notary Public in Foreign Country; Perjury.

OBJECTIONS. See Testimony, 1.

OLD DEVICES. See Construction of Claims, 6.

OI J) MATERIAL. See Invention, 4.

OPERATIVENBSS. See Priority of Invention, 11 ; Prosecution of Applications,
11, 12, 14 ; Reduction to Practice, 10.

OPPOSITION TO REGISTRATION. See Goods of the Same Descriptive Prop-
erties, 2; Classes of Goods, 3; Similarity of Marks, 21; Ten-Years
Clause.

1. Tbade-Mabk — Likelihood of Injuby Not Shown. — ^The use of a mark

upon fish products Held not likely to injure the owner of the same
mark as applied to bread, crackers, and similar foodstuffs and an oppo-
sition by the latter to the former's registration of the mark dismissed.
Johnson Educator Food Co, v. Sylvanus Smith d Co., Inc., 27.

2. Same — Modification of Application Afteb Advebsb Decision. — Where

an opposition was filed to the registration of a mark on the ground
that one of its features constituted the mark of the opposer and such
opposition was decided adversely to the applicant. Held that his ap-
plication could thereafter be amended by omitting this feature only if
the mark was not thereby mutilated and upon the filing of an aflldavit
that the mark without the repres^itation of the mark of o{^x>ser was
actually used by the applicant as a trade-mark. Ew parte Tf^ VuStix
Products Company, 54.
8. Same — Cboss-Bill Not Permissible. — Where an opposition to the regis-
tration of a trade-mark is filed by a registrant. Held that a cross-bill
asking for the cancelati<m of the opposer's registration will, not be
admitted. Burton Medicine Co. v. United Drug Co., 166.

4. Same — Opposition. — Where an opposer used neither the mark sought to

be registered by the applicant nor one so similar thereto as to be liable
to cause confusion in the mind of the public, he has no standing in the
opposition proceedings {citing Underwood Typewriter Co. v. A. B. Dick
Co., C. D., 1911, 298; 163 O. G., 730; 36 App. D. C, 175). Chilton
Printing Co. v. The Class Journal Co., 251.

5. Distilled Wateb and Pebozid of Htdbogen — Not Goods of the Samb

Descbiptive Peopebties. — Where a notice of opposition was filed to
the registration of a mark as a trade-mark for perozid of hydrogen,
alleging use of the mark first upon artificial ice and subsequently upon
distilled water, ginger-ale, metal coolers, and peroxld of hydrogen, but
the mark was not used upon peroxid of hydrogen until after its use
by applicant. Held that the opposition was properly dismissed, since
peroxid of hydrogen does not constitate goods of the same descriptive



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698 DIGEST OF DECISIONS.

propertiefl as distilled water nor merchandise of such charactw as to
come within the natural expansion of the previous business of the
opposer. Oonsumera Oo. v. Hydrow OhenUoal Co., 261.

OPTION. See Prosecution of AppUcaiions, 28.

ORAL TESTIMONY. See Interference, 1.

ORDER OF THE CX)URT. See Bankruptcy, 2.

ORIGINAL APPLICATION. See Division of Applications, 3; Reissue AppW
cations, 6, 10.

OWNERSHIP. See Certificate of Correction.

PARTICULAR PATENTS.

1. TwiTOHKLL— No. 927,298.— The patent to Twitchell, No. 927,298, HeUd

valid and infringed. («) TwitcheU v. Rudolph d West Co., 417.

2. De Range — No. 901,229— Gas-Chbck. — ^The De Range patent, for a gas-

check. Held not anticipated, valid, and infringed. (**) The United
States V, Boci6t6 Anonyme des Anciens EtaUissements Caih 620.
PATENTABILITT. See Ahandonment of Applications, 8; Anticipation, 1;
Construction of Claims, 1, 3, 4, 5, 8, 10, 11, 12, 18. 15, le, 17, 18, 21, 22;
Designs, 1, 2 ; Interference, 14, 15, 19, 37 ; Invention; Motion to Amend
Applications; Motion to Dissolve Interference, 3, 5, 8, 9, 10, 18, 14, 17,
21, 25; Priority of Invention, 39, 41; Prosecution of Applications, 1, 22,
24, 27, 29, 31; Reissue Applications, 5, 6; Res Ad judicata, 2, 8; Right
to Make Claims, 8.

1. Not Considebed. — It is well settled that the patentability of the issue over

the prior art is not a matter which can be raised at final hearing on
priority, and, further, that no appeal lies from the refusal of the Ex-
amlners-in-Chlef to make a recommaidation as to the patentability
under Rule 128. {WaUh v. Hallbauer, C. D., 1901, 9; 94 O. Q., 223;
Woods V. Waddell, O. D., 1903, 391; 106 O. G., 2017.) Smith and
Larsen v. Hill, 97.

2. Pad fob Abtificial Teeth. — Claims for a pad to be worn between the

gums and a plate for artificial teeth, Held unpatentable over the prior
art Ex parte Moore, 112.

3. Invention — Pad fob Abtificial Teeth. — Claims for a pad of particular

form to be worn between the gums and a plate for artificial teeth, Held
patentable over the prior art in view of affidavits of dentists of skill
and long experience that this pad provides an ^ective remedy for the
trouble arising from false teeth and tender gums and that they had
constantly exercised their Ingenuity and skill to find a remedy therefor,
but without success. (*) In re Moore, 472.

4. Same — ^Filament fob Electbio Lamps. — Claims for a filamoit for electric

lamps, Held unpatentable in view of the prior art Em parte Wels-
bach, 154.
6. Abtiole — SuPEBiOBiTY OF Pbooess ImmatebiaI/. — In considering the ques-
tion of the patentability of an article " made by whatever process one
may choose to employ" the superiority of the process by which it is
actually made is immaterial. (*) In re Hodkinson, 558.

PATENTEE AND APPLICANT. See Interference, 17.

PATENT RIGHTS. See Jurisdiction of the Federal Courts; Monopoly, 2;
Suits Upon Contracts.
1. Rights Undeb Patent. — The property right in the materials composing a
patented machine and the right to use for the purpose and in the
manner pointed out by the pat^it are separable righta (**) Henry
et al. V. A. B. Dick Company, 575.



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DIGEST OP DEOISIOKS. 699

2. Baici.— The property right to a patented machine may pass to a pur-
chaser with no right of use or with only the right of use in a specified
way or at a specified place or for a specified purpose. The unlimited
right or exclusiye use which is possessed by and guaranteed to the
patentee will be granted if the sale be unconditional ; but if the right
of use be confined by specific restrictions the use not permitted is
necessarily reserved to the patoitee. (**) Id,
8. Same — Limitation Thereof. — ^There are certain limitations upon the
right of vending and using a pat^ited machine. If the thing patented
belongs to a class of things which on account of their inherent
danger to the public safety or health cannot be sold or used because
prohibited by an exertion of the police power of a State, they will
not1>e immune to such law because pataited. (**) Id.

PERJURY.

AiTiDAViT TO SuFPOBT APPLICATION FOB LJETTEBs PATENT. — An oath, declara-
tion, or affidavit subscribed by an applicant for patent in support of
his api^ication 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 5392, Revised Statutes of the United
States, if the party making the oath or making the declaration or affi-
davit 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.
(•) United States of America v. Patterson, 418.

PETITION TO THE COMMISSIONER OF PATENTS. See Abandonment of
Afiplioations, 11, 18; Applications, 1; Construction of Claifns, 19; Divi-
sion of Applications, 2, 3; Dratoinnts, 2; Prosecution of Applications,
18, 15, 21, 87, 38, 89.

PRACTICE IN THE COURTS. See Interference, 8, 18; Mandamus; Priority
of Invention, 20, 89, 46; Res Adjudicata, 1; Similarity of Marks, 4.

PRACTICE IN THE PATENT OFFICE. See Amendments; Amendment to
Preliminary Statement; Assignments; Motion to Dissolve Interference,
10; PuJbHc-Use Proceedings, 1, 2.

PRELIMINARY STATEMENTS. See Amendment to Preliminary Statement;
Interference, 1, 5, 11 ; MotUm to Amend Preliminary Statment; Motion
to Dissolve Interference, 20; Priority of Invention, 7.

PRESUMPTION. See Interference, 81 ; Priority of Invention, 8.

PRINTED PUBLICATIONS. See Interference, 9; SimHaHty of Marks, 16.

PRIOR APPLICATIONS. See Anticipation, 1; Division of Applications, 8;
Interference, 1 ; Priority of Invention, 7.

PRIOR PATENTS. See Abandonment of Applications, 2; Priority of Invention,
6 ; Prosecution of Applications, 1 ; Suits upon Contract, 2.

PRIOR REGISTRATION. See Anticipation, 8, 6, 6; Registration, 4, 6^ 6, 7;
Similarity of Marks, 9.

PRIORITY OF ADOPTION AND USE. See Anticipation, 4, 6; Cancelation of
Trade-Mark Registration, 3; Foreign Applicant; Motion to Dissolve
Interference, 6; Registration, 3; Testimony, 9.
1. Cancelation — Registration. — Evidence considered and Held to establish
that appellee adopted and used its mark prior to the earliest date of
adoption by appellant and that as the marks are deceptiv^y similar a
petition for the cancelation of the registration of appellant's mark was
properly sustained. (*) Oarmel Wine Company v. California Winery,
42a



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700 DIGEST OP DBCISIOKB.

2. INTEBFEBENOE— Abandonment. — Evidenoe Held to show that tbe mark
in issue was abandoned by tbe predecessor in business of tbe L. Go.
and priority awarded to tbe M. Ck>., wbich began tbe use of tbe mark
subeequ^it to tbis abandonment, but inior to tbe use of tbe L. Co.
Leverinff Coffee Company v. Merchants Coffee Co., 187.

8. Same — Same. — Byidence Held to sbow tliat tbe mark in issue was aban-
doned by tbe predecessor in business of tbe L. Ck>., and priority awarded
to tbe M. Co., wbich began the use of tbe mark subsequent to tbis
abandonment, but prior to the use of the L. Go. (*) Levering Coffee
Company v. Merchants Coffee Co., 547.
PRIORITY OF INVENTION. See Construction of Claims; Interference, 1. 2.
4, 12, 21, 23, 80, 35; Motion to Dissolve Interference, 21; PatentabUUy;
Public-Use Proceedings, 4, 5; Reduction to Practice; Riyht to Make
Claims; Testimony, 1.

1. Diligence. — ^Priority Held properly awarded M., since tbe evidence

faiis to establish that P., tbe Junior party, liad a conception of tbe in-
vention prior to M.'s filing date, or if lie be assumed to be the first
conceiver that he was diligent at the time M. entered the field. Pope v.
McKengie, 8.

2. Same. — ^Evidence considered and Held to establiA that B. was tbe

first to conceive the invention and was exercising due diligence in
reducing the same to practice at tbe time that 0*0.. entered the field
and subsequently thereto. Bettendorf v. O'Connor, 41.
8. Testimony — Failube to Intboducb Cumulative Bvidenoe. — Where B.
had clearly established that he was the first to conceive the invention.
Held that no unfavorable presumption could be drawn from the fact
that he did not introduce the testimony of other witnesses to describe
the invention In detail. Id.

4. DiLiQENOE. — Evidence reviewed and Held to establish that W. was the

'first to conceive the invention and was diligent at and after the time
M. entered tbe field and that priority was properly awarded him.
i*)Midgley v. Ward, 442.

5. Right to Make Claims. — Where it appeared that one of the parties to

an interference had no right to make tbe claims in issue, Held that tbe
Ezaminers-in-Cbief properly awarded priority to the opposing party on
that ground. McBerty v. Shore and Shore, 45.
^ AwABD — Diligence. — ^H. after his conception of the invention in issue
entered into an investigatiim to determine whether it would infringe
any previously granted patent before filing his application. During
this investigation W. conceived the invoition and filed his application.
Held that H. was lacking in diligence and that priority was properly
awarded to W. Hawkins v. Ward, 50.

7. Same— DiscLOSUBE op Invention. — Priority Held properly awarded to

W., since certain prior applications relied upon by T. do not disclose
the invention, even if T. could be permitted to amend bis preliminary
statement so as to allege dates of invention as early as the filing dates
of these applications. Thomas v. Weintrauh, 55.

8. Same. — Held that the record established that B. was the prior inventor.

(♦) O'Connor v. Bettendorf, 444.
%. Same.— Priority Held properly awarded to B. (*) O'Connor v. Betten-
dorf, 446.
10. Same.— Priority Held properly awarded to B. (•) Hash v. Bettendorf,
447.



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PIQ£8T OF DECISIONS. 701

U. FoBMBB DioisioN AiTiBMED.— The decision of the Commissioner of Pat-
ents holding that the device of I. and L. was not inoperative and
awarding priority to them afiSrmed. (*) Healey v. Inwood and haven-
hero, 448.

12. When Seniob Pabty is Put to Proof. — The party to an interference

who first files an allowable application is not put upon his proof until
his adversary shall have introduced evidence showing his own inde-
pendent conception of the invention prior to that date. (♦) Pope v.
McKens^, 450.

13. AWABD. — ^Evidence reviewed and Held insufllcient to show that P. con-

ceived the invention prior to McK.'s filing date and that priority was
therefore properly awarded the latter. {*) Id,

14. Reduction to Practice— Dhjgenck. — ^Where H., who was the first to

conceive the invention in issue, delayed the reduction to practice
thereof until it could be determined whether his invention would be
an infringement of any prior existing patent and whether it would be
necessary to modify the device, so as to avoid such prior patent, and
in the meantime W. conceived the invention and reduced the same to
practice. Held that H. was lacking in diligence, and priority was prop-
erly awarded to W. (♦) HawkinB v. Ward, 453.
16. Award; — Priority Held properly awarded to N., the senior party, since
the Junior party did not allege a date of invention prior to the original
filing of N.*s application, which became forfeited and was renewed.
he Brou v. Niw, 110.

16. Same — Disclosure. — Priority Held properly awarded to W., since the

earlier applications relied upon by T. did not disclose the invention in
issue (•) Thomas v. WeintrauJ), 456.

17. Same — Reduction to Practice — Concealment. — Held that W. is aiti-

tled to award of priority, although B. was the first to conceive the in-
vention, since the device built by B. prior to W.*s reduction to practice
was either an abandoned experiment er, if a reduction to practice of
the invention, was so concealed by B. that he forfeited his right to a
patent in favor of W. Whitney v. Brewer, 127.

18. Same — Evidence. — Evidence considered and priority Held properly

awarded to D., the senior party. (*) Mills and Conn v. Darlington,
Mills and Conn v. Elliott and Darlington, 460.

19. Reduction to Practice — Abandoned Experiment — Concealment. — Pri-

ority Held properly awarded to K. on the ground that certain machines
built by B., who was the first to conceive the invention in issue, did
not constitute a reduction to practice thereof and that B. was not
diligent, or that, if these machines did constitute a reduction to prac-
tice of the invention, B. had lost his right thereto oy concealment
Baetz V. Kukkuck, 148.

20. Concurrent Decisions of the Patent Office — Entitled to Great

Weight. — " Where the three tribunals of the Office have concurred in
their decision of a question of this kind, it is the settled rule of this
court not to disturb their conclusion unless manifest error can be
found therein. {Podlesak v. Mclnnemey, C. D., 1906, 558; 120 O. Q.,
2127; 26 App. D. C, 33D-405; Newoomh Motor Co. v. Moore, C. D.,
1908, 332; 133 O. G., 1680; 30 App. D. C, 414.) And especially is this
the case where the question is one relating to the operation of compli-
cated apparatus, involving the application of scientific principles about
which learned and highly skilled electricians differ." i*)Weintrauh
T. Metoitt and Rogers, 466.



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702 DIGEST OF DECISIONS.

21. Award — Evidence. — Record and evidence considered and Held that the

application of H. and R., the senior parties, discloses the invention in
issue, and priority was therefore properly awarded to them. {*)Id,

22. Same. — Priority Held properly awarded to W., the senior party. (C D.,

1912, 127; 177 O. G., 1296.) {*) Brewer v. Whitney, 474.
28. Same. — Evidence reviewed and McM. Held to be the " real inventor,** and
therefore entitled to the award of priority. (♦) McManua v. Ham-
mer, 474.

24. Same. — Evidence reviewed and Held insufficient to establish that W. had

a conception of the Invention in issue prior to that of B. and T. or that
he reduced the invention to practice prior to the filing of the applica-