tion of B. and T., and that priority was therefore properly awarded
the latter. Williams v. Barnes and Tfu>r8chmidt, 168.
25. Same — Reduction to Practice. — Evidence reviewed and Held insufficient
to establish that a device constructed by O. prior to Q.'s reduction to
- practice of the invention in issue amounted to anything more than an
abandoned experiment. Quenzer v. Collis, 172.
26. Same — Concealment. — Held that if a device built by O. prior to Q,'s
reduction to practice constituted a reduction to practice of the Inyen-
tion C. had so concealed the same as to justify an award of priority
to Q. under the ruling in Mason v. Hepburn (C. D., 1898, 519; 84 O. G.,
147; 13 App. D. C, 86). Id.
27. Same. — 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. (♦) Huff v. Gulick, 488.
28. Same — Delay in Filing Application — Concealment. — ^Where W. re-
duced the invention to practice prior to the earliest date of Invoition
claimed by L., Held that W. did not forfeit his right to a patent In
favor of L. by delay in filing his application where there was no sup-
pression or concealment of the invention. Walker v. Lederer, 177.
29. Same. — Evidence reviewed and Held to establish that M. was the first to
conceive the Invention in lasue and the first to reduce the same to
practice. Priority Held, therefore, properly awarded to him. Bradley
V. Miggett, 183.
80. Same — Diligence. — Where B., who was the last to reduce the Invention
to practice, experimented with the invention during a period of eight-
een months or two years only in a desultory way, although he had
at his command every facility to promote expeditious work there-
upon. Held that he was not diligent and that he would not be entitled
to an award of priority If he had established a conception of the inven-
tion prior to that of M. Id.
81. Same. — Evidence reviewed and priority Held properly awarded to Q.
(C. D., 1912, 172; 179 O. G., 575). (♦) OollU v. Quenzer, 502.
32. Same — Right to Make the Claims. — Priority awarded to R. on the
ground that the claim in issue where properly construed is not read-
able upon the disclosure of S. (*)Rice v. Schutie, 606.
83. Same.— Priority Held properly awarded to M. (O. D., 1912, 183; 179
O. G., 1108). {*) Bradley v. Miggett, 510.
84. Same.— Priority Held properly awarded to K., the senior pariy (C. D.,
1912, 148; 178 O. G., 887). (♦) Baetz v. Kukkuck, 515.
35. Same— BABLna Applications.— Priority Held properly awarded to W. on
the ground that the invention in issue is not disclosed in certain earlier
applications relied upon by H. {*) Hewitt v. Weintrauh, 518.
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86. Same.— Priority Held properly awarded to N., the senior party.
(C. D., 1912, 110; 117 O. G., 771.) (•) Le Brou v. Niw, 521.
37. Same — Originality. — Evidence reviewed and Eeld to establish that C.
was not an original inventor of the Invention In Issue, but derived hla
knowledge thereof from S. {*) Summers v. Clark, 523.
38. Same. — Held that priority ^ould have been awarded to K. as to count
1 and that priority was properly awarded to T. as to the remaining
counts. i*)Kruh v. Thomas, 528.
39. Appeal — Question of Patentability Will Not be Gonsidsbed.— The
question of the patentability of the Issue of an Interference will not be
considered by the court of appeals. " In Interference cases we do not
determine whether either party shall receive a patent The question
presented to us Is, conceding there Is a patentable Invention, which
party was the first to Invent or discover the same." (*) Putnam v.
Wetmore and Niemann, 637.
40. AWABD— DnjQENCE. — O'C. conceived the Invention In November, 1908,
and Inmiedlately set about reducing It to practice, and filed his applica-
tion on February 4, 1909. C, who had conceived the Invention in
1898. made devices and tested them; but such tests were Insufllclent
to establish a reduction to practice. The last of these tests was just
prior to O'C.'s conception. G. did nothing further with the Invention
till his application was signed on January 19, 1909, which application
was not filed till February 8, 1909. Held that as G. had every facility
at hand to enable him to speedily reduce his Invention to practice or
file his application at a much earlier date he was lacking In diligence
and that priority was properly awarded to O'G. (*)Cour8on v. O'Con-
nor, 640.
41. Appeal — Patentability or Issue Not Gonsidebed by Gourt op Ap-
peals. — On an appeal from a decision of the examiner awarding
priority the question of the patentability of the Issue will not be con-
sidered. {*) Hopkins v. Cleal, 546.
42. Award. — Priority on the face of the record Held properly awarded to O.
as to counts 1 and 3 of the Issue and to H. as to count 2. (*)Id,
43. Same — Evidence. — Evidence reviewed and Held Insufllclent to establish
that W. was the first to conceive the Invention In Issue, and priority
Held properly awarded B. and T. (^) Williams v. Barnes and Thor-
Schmidt, 550.
44. Same — Diliqence. — ^H., who was the first to conceive the invention. Held
lacking In diligence In reducing the same to practice and priority
awarded to S. (*) Slick v. Hansen, 561.
45. Same — Evidence. — Evidence reviewed and Held that O. had not sus-
tained the burden of proof on him as junior party and that he derived
his knowledge of the invention from P., to whom priority should be
awarded. (♦) Poffenharger v. Olson, 553.
46. Reduction to Practice — Goncealment. — " The principle governing Mason
V. Hepburn, and cases following it, applies where the facts and circum-
stances of inaction show an intention to abandon, suppress, or conceal
the knowledge of the invention, until notice of the entry of a subse-
quent inventor on the unoccupied field Induces activity ; and that mere
delay, not Induced by such facts and circumstances, may be explained
and accounted for in accordance with the general principles governing
the equitable doctrine of laches." (•) Lederer v. Walker, 560.
47. Same— Same. — "As Walker's application was not stimulated by knowl-
edge of Lederer's subsequent invention, we are of the opinion that hli
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704 DIGEST OF DE0IBI0K8.
d^y in making the same, under all the facts and drcnmstanoea stated,
was not so inexcusable as to estop him from claiming the reward of his
earUer invention.*' {*) Id.
48. Sahc — BviDENCE. — ^Evidence reviewed and Eeld to establish that S.
reduced the invention to practice prior to the earliest date to which B.
is entitled, and priority Held properly awarded the former. Blingluff
v. Bolin, 257.
49. Sams — Same. — M. Held entitled to make the claims in issue and the evi-
dence Held to establish conception and reduction to practice by him
prior to the earliest date to which McQ. and B. are entitled or at least
prior conception followed by diligence and priority properly awarded
him. (♦) Weaiem Electric Co, v. Martin, 567.
50. Same— Same. — Evidence considered and Held to establish that lind-
mark introduced the invention into this country prior to the earliest
date claimed by de Ferranti and was reasonably diligent in filing his
application and that priority was therefore properly awarded him.
De Ferranti v. Lindmark, 300.
5L Same — Same — Right to Make the Claim. — Record considered and Held
to show that the claims in issue define a process not disclosed in the
specification of D. and that priority was therefore properly awarded W.
Wood V. Duncan, 314.
52. Same — Same. — Evidence reviewed and Held in the absence of any testi-
mony on behalf of H. to establish that he was not an original inventor,
but derived his Imowledge of the invention in issue from S. through a
third party and priority awarded to S. Steinberger v. Hewlett, 823.
53. Obiginalitt. — Evidence reviewed and Held to establish that J. was not
an original inventor of the invention in issue, but that he derived his
knowledge thereof from P., and priority Held properly awarded the
latter. Jenks v. PageUen, 330.
54. Conception of Invention — Reduction to Practice. — Testimony reviewed
and Held to establish that R. was the first to conceive the invaition in
issue and the first to reduce the same to practice, and priority Held
properly awarded him. Rogers v. Lang, 382.
65. Same — Same. — Evidence reviewed and Held insufficient to establish that
B., who was the last to conceive the invention, reduced the same to
practice prior to G.*8 filing date. Rinehart v. Gibson, 387.
56. OaiGiNALiTT. — Evidence reviewed and Held to establish that R. was not
an original inventor, but derived his knowledge of the invention in issue
from G., and that priority was properly awarded the latter. (•) Rine-
hart V. Qib8on, 573.
PROCESS. See Construction of Claims, 7 ; Invention, 1 ; Priority of Invention,
51 ; Prosecution of Applications, 11, 12.
PROCESS AND APPARATUS. See Abandonment of Applications, 8.
PROCESS AND ARTICLE. See Patentability, 5 ; Prosecution of Applications,
16, 17.
PROOF. See Priority of Invention, 12 ; Reduction to Practice, 8.
PROPERTY RIGHTS. See Abandonment of Trade-Marks, 3; Assignment of
Trade-Marks, 1 ; Patent Rights,
No Abstract Property Right Therein. — It is well settled that there Is
no abstract property right in trade-marks. The use of a trade-mark
by one manufacturer or vender upon an article will not prevent another
from adopting the same trade-mark for an article of different descriptive
properties. Johnson Educator Food Co. v. Sylvanus Smith d Co.,
Inc., 27.
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DIGEST OF DBCISI0K8. 705
PROSECUTION OP APPLICATIONS. See Abandonment of AppUcaUons;
Affidavits Under Rule 76; Amendments; Bankruptcy; Claims; Designs;
Drawings; Division of Applications; Interference, 15, 20; Notary Public
^in Foreign Country; Reissue Applications; Specifications.
1. Declamation of Interference. — Where the Examiner held that a design
for an aatomobile lamp was not patentable in view of the references
of record. Held that he properly refused to declare an interference
with a prior patent for a design for a similar lamp. Bw parte
Taylor, 1.
2. Presentation of Claims After Final Rejection — Insufficient Show-
ing. — Where after a final rejection an amendment was filed directing
that the finally rejected claims be canceled and presenting new claims.
Held that a statement that neither the applicant nor his attorney had
looked for a final rejection and in view of the Examiner's action appli-
cant was willing to take narrower claims was not such a showing as
required by Rule 68 (citing ea? parte Wilier, C. D.. 1900, 02; 91 O. G.,
1083). Eof parte Dietrich, IL
8. AsANDONMENT. — 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 re-
fused to enter for lack of sufficient showing under Rule 68, and after
the expiration of the year applicant directed that the new claims be
canceled. Held that no responsive action had been made within the
year and that the application was abandoned. Id,
4. Same.— An allegation that an amendment was mailed within the statu-
tory period and that the attorney was unaware that such amendment
had not been received until he made inquiry of the Office long after
the expiration of that period, in view of a letter from his foreign
associate. Held insuffici^it to show that the delay in the prosecution
of the case was unavoidable. Em parte Amigo, 21.
5. Final Rejection.— Where ample opportunity had been afforded the
applicant to present such claims as he desired te adhare to and an
issue had been reached between himself and the Examiner, Held that a
final rejection was properly entered. Ew parte Poulson, 38.
6. Action Not Responsive— Abandonment. — Where within the year follow-
ing a final rejection which had been properly Altered an applicant
neither cancels the rejected claims nor appeals, but merely seeks to
have the final rejection set aside as premature, Held that the applica-
tion is abandoned. Id. .
7. Time Within Which Action Mat be Taken. — Where claims were re-
jected on June 1, 1909, the statutory year for action expired June 1,
1910. Id,
8. Application — Petition That Examiner Explain Reasons for Rejec-
tion. — ^A petition that the Examiner be directed to apply the references
to the claims dismissed as premature where it appears that the Ex-
aminer had not been requested to give a further explanation of the
rejection. Ex parte Smith, 49.
9. Election — Ground for Rejection. — Where the Examiner is of the
opinion that an amendment contains claims for an invention separate
and distinct from that previously claimed, he should require the can-
celation of such claims. From such action appeal lies to the Ex-
aminers-in-Chief. Ex parte Weaver, 80.
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706 DIGEST OF DECISIONS.
10 Abandonment. — Where in response to a requirement of the Bzamlner
that a design he illustrated by showing the article in perspective or
side elevation the applicant materially changed his claim, Held that
the fact that the Examiner did not consider this amendment a com-
pliance with the decision of the Commissioner in applicant's copending
application did not justify a holding that the amendment was insuffi-
cient to save the case from abandonment Ew parte Mygatt, 81.
11. Deviob Held to be Inopebativb — ^Action on the Mebits. — ^Wh«e in
response to a requirement to demonstrate the operatlveness of the
process claimed the applicant filed affidavits which the Examiner re-
garded as insnfflcient to comply with the requirement, Held that the
Examiner should tiave rejected the claims on the ground that the
process was inoperative. Ex parte Wynne, S4.
12. Same — Abandonment. — Where the Examiner required tliat the opera-
tlveness of applicant's process be demonstrated and at the end of the
year applicant filed affidavits in an attempt to comply with the re-
quirement, the fact that the Examiner regarded these affidavits as
insufficient to establish that the process was operative did not justify
a holding of abandonment. Id.
18. Matters of Merit Not Reviewable on Petition. — The ruling of the
Examiner that an element should not be cited more than once in a
claim and that the claim is objectionably functional relates to matters
of merit and will not be reviewed on petition. Ew parte Jennings, 153.
14. Inoperativeness — Ground of Rejection. — If the Examiner believes
the device as shown and described to be inoperative, he should make
this one of the grounds of rejection. If he believes that an operative
device is disclosed, but intends to hold merely that the illustration in
the drawing is inconsistent with such disclosure in the specification,
the requirement should be worded accordingly. Id,
15. Bringing Premature Petitions Condemned. — ** The practice of attempt-
ing to prosecute applications before the Commissioner under the guise
of petitions brought prematurely and upon points which are not peti-
tionable cannot be too strongly condemned, and serves no useful pur-
pose." Ex parte Strimban, 195.
16. Division of Applications — Election. — Where after a requirement for
division between article and process claims applicant limited his claims
to the article. Held that he is not entitled to thereafter prosecute in
that application claims for the process. Em parte 8troh, 208.
17. Same — Same — Abandonment. — ^After having elected to prosecute claims
for an article the presentation of process claims is not a proper response
to the rejection of article claims, and no other action having been
taken within the year following such rejection the application is
abandoned. Id.
18. Pinal Rejection. — ^A final rejection Held not premature where the only
change i^ade in the claims was in stating that the supporting chain is
"secured to" the vessel instead of referring to it as a ''suspending
chain " or as " adapted to sustain " the vessel. Ex parte Kaufman, 255.
19. Statutory Period Expiring on Sunday. — Where the year within which
action could be taken expires on Sunday, Held that in order to save
the case from abandonment amendment should be filed on the preceding
day. Ex parte MUler, 265.
20. Requirement for Reduction of the Number of Claims — ^Action on
Merits. — ^Where the Examiner required applicant to diminish the num-
ber ef claims and grouped the same in accordance with the practice in
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DIGEST OF DECISIONS. 707
ew parte Kadow, Held that be sbould also have acted apon the merits
of each group of claims. Ecd parte Both, 278.
21. Postponement. — ^The statements of a foreign attorney that he was under
the impression that the case was being prosecuted by his associate, who
had been instructed to keep the application pending, Held insufficient
to establish that the delay in the prosecution of the case was unayeid-
able, no showing being made why the associate attorney did not reply
to the Office letter and no excuse being given for the delay in filing the
petition after the foreign attorney learned that an amendment had not
beai filed within the year. Ew parte Hanna and Hanna, 270.
22. Explanation of Refebenoes. — ^Where a clear issue as^to the patent-
ability of the claims has been reached between the applicant and the
Examiner and it Is evident from the record that the applicant under-
stands the application of the references to the claims, Held that the
final rejection was not premature, and no further explanation of the
references is necessary. Ex parte Kellep, 283.
28. Owner of an Option to Pubohase Not Recognized. — ^While the assignee
of the entire interest may be permitted to prosecute an application to
the exclusion of the inventor, this Office cannot recognize a party
having only an option to purchase. In re Netoman, 284.
24. Final Rejection. — ^A final rejection should not be given upon the second
official action unless an unmistakable issue is reached between the
applicant and the Examiner as to the patentability of the invention
claimed. Ex parte Basa, 294.
26. Same. — Where, in response to an action holding certain affidavits filed
under Rule 75 insufficient and rejecting the claims upon a reference
cited for the first time, applicant filed an argument against the holding
that the affidavit was insufficient and stated that the action was not
intended to be a response to the rejection on the reference, but that
he wished to know whether it would be necessary to overcome both
references cited. Held that the Examiner should not have finally
rejected the claims. Em parte Hamby, 808.
26. Same. — Where, in response to an action holding certain affidavits insuffi-
cient to overcome a reference cited and rejecting the claims on a new
reference, applicant filed an argument that the affidavit was sufficioit
and requested further information whether it was necessary for him to
overcome one or both references. Held that the Examiner should have
informed the applicant that this was an incomplete response to the
prior rejection or should have complied with the request for reconsid-
eration of the holding that the affidavits were insufficient and reminded
the applicant that his year for action ran from the date of the preced-
ing Office letter. Id,
27. Same. — Where after a second rejection of the claims on the same refer-
ences applicant amended by inserting what the Examiner held to be
new matter and the claims were rejected on that ground the applicant
canceled the new matter, but made no argument that the claims were
patentable over the references cited, Held that they were properly
finally rejected on the references of record. Em parte Webster, 312.
28. Same. — It is well settled that a final rejection may be in order, notwith-
standing the fact that the applicant has failed to respond to objections
of a formal character made by the Examiner. Em parte Labofiah, 813.
29. E3NTRT OF Amendment After Final Rejection. — ^The rule provides that
after a final rejection new claims may be considered if they present
the rejected claims in better form for appeal or upon a verified showing
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708 DIGEST OF DECI8I0K8.
of good and safficient reasons why sncb claims were not earlier pre-
8«ited ; bat it is within the discretion of the Bxaminer to enter after
final rejection an amendment containing claims which, im his opinion,
are patentable. Bw parte Paine, 322.
80. ELBcnoif OF Species. — Where after a requirement for division, bat be-
fore snch requirement bad been complied with, claims were suggested
for the purpose of Interference and such interference was declared and
decided adversely to the applicant. Held that the prosecution of this
interference did not constitute an election to the species involved therein
and that applicant was entitled to present in this application claims
to the other species. Ew parte Burk, 338.
ZL Final Rejection. — Where the Examiner had stated the grounds of re-
jection with sufficient fullness and it was apparent that applicant under-
stood the references and their application to the claims, the fact that
in the letter making the rejection final the £3xaminer also stated his
views fully as to the non-patentability of the claims did not render the
final rejection premature. Ex parte Hartford, 345.
82. Same — ^Admission of Amendment After. — ^An amendment presented
after final rejection Held properly refused admission where the Bx-
aminer holds that the claims submitted differ in scope from those
previously rejected and no error in this holding is pointed out, and
the only showing for failure to present the claims earlier is that the
final rejection was unexpected. Id,
88. Same. — Where the Examiner rejected certain claims in view of refer-
ences, including a prior jmtent of the applicant, but did not exi>Iaia
the grounds of his rejection and in response to an amendment stated
that the claims of the application cover the same invention as
that covered by applicant's prior patent and therefore the allowance
of the application would lead to double patenting, Held that a final
rejection in this action was premature. Ex parte Mygatt, 354.
84. Same. — ^Where, after repeated consideration of the amplication, claims
were presented substantially the same as those previously presented.
Held that a final rejection was not premature. Ex parte Mfera, 356.
86. Abandonment. — A statement that It was not discovered until after the
year in which action should have been taken had expired that the date
of one of the patents cited was subsequent to applicant's filing date
Held insufficient to establish that the delay in the prosecution of the
application was unavoidable, since it did not appear wtiy no response
was made so far as the rejection, based on other patents, was con-
cerned, nor whether the question of an interference with the patoit
referred to had l)een considered. Ex parte DetnnUer, 375.
86. Final Rejection. — Where an action rejecting a claim closed with the
following statem^t, "this rejection may be considered as final for
the purpose of appeal," Held that this action was not so clearly a
statement that the case was closed for prosecution before the Primary
Bxaminer as would justify a refusal to admit an amendment filed
wifliin one year after such rejection. Ex parte Mygatt, 396.
87. Abandonment — "Prosecution.'' — ^The prosecution of an api^lcation re-
quired by section 4804, Revised Statutes, includes all necessary actions
on the part of the applicant, not only to comply with the previous
Office action, but to bring the case with a proper showing before the
Commissioner for consideration of the question of unavoidable d^lay.
B» parte La Jeunesie, 898.
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DIGEST Of DBCI8I0NB. 709
88. Same. — While the reasons for the delay of more than one year hi the
fllhig of a responslTe amendment may be entirely satisfactory, yet
where an applicant allows a long period of time to lapse before pre-
senting to the Commissioner the showing required by the statute and
either gives no reason at all or fails to give satisfactory reasons for
this further delay the conclusion is justified that the delay in the