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Full text of "Annual digest of the decisions of the Supreme Court of the United States, the Federal courts, and of the Commissioner of Patents, in matters relating to patents, trademarks, designs, labels, and copyrights, for 1898-[1900]"




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UNIVERSITY 

OF CALIFORNIA 

LOS ANGELES 



SCHOOL OF LAW 
LffiRARY 



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PUBI^ICATIONS OF 

JOHN BYRNK & CO. 



Foreign Patent and Trademark Laws. 

A Comparative Study. 

By ARTHUR P. GREELEY. 

8vo. 319 pp. Express paid, $5.00. 



United States Supreme Court Practice and Procedure, 

^A/ith the Rules and Forms. 

By HEBER J. MAY. 
8vo. 1000 pp. $6.50, Express paid. 

An Index Digest to the Decisions of the United 
States Supreme Court, 

In Patent Causes from 1800 to 1897. 

By WOODBURY LOWERY. 

Svo. $5.00, Express paid. 



Annual Digest to the Decisions 

Of the Supreme Court of the United States, the Federal Courts and of 

the Commissioner of Patents in matters relating to Patents, 

Trademarks, Designs, Labels and Copyrights for 1898. 

By LOUIS M. SANDERS. 

Svo. $2.50, Express paid. 

■WASHING-TON, D. C. 



ANNUAL 

DIGEST OF THE DECISIONS 



OF THE 



SUPREME COURT OF THE UNITED STATES 
THE FEDERAL COURTS 



THE COMMISSIONEE OF PATENTS 

(INCLUDING MANUSCRIPT DECISIONS) 

IN MATTERS 

RELATING TO PATENTS, TRADEMARKS, DESIGNS 
LABELS AND COPYRIGHTS 



KOR 1899 



L 



LOUIS M. gANDERS 

ASSISTANT EXAMINER U. S. PATENT OFFICE 



WASHINGTON: 

JOHN BYRNE & CO 
1900 



Copyrighted, 1900, 
JOHN BYRNE & CO. 

m9 



PREFACE 



Several new features have been added to the ' ' Digest for 
1899," which, it is behevcd, will l)e of value to users of the 
book. Among these ma}^ be mentioned the following: Such of 
the unpubhshed or MS. decisions of the Commissioner and 
Assistant Commissioner of Patents as are accessible to the public; 
lists of all appealed cases and their disposition on such appeal; 
lists of all patents adjudicated upon where the decision has been 
published, etc., etc. The Court, jurisdiction and date of deci- 
sion has been annexed to the several syllabi. 

It will be noted that a new classification has been adopted for 
all matter pertaining to the Application during its pendency as 
such. Matters pertaining to Interferences, however, have been 
left under the general head of Interferences. 

The * precedes all Federal Court decisions. The f precedes 
the decisions of the Secretary of the Interior. The decisions of 
the Commissioner and Assistant Conmiissioner are unmarked. 

L. M. S. 

Washington, D. C, January^ 1900. 

(V) 



755635 



JUSTICES 

OF THE 

SUPREME COURT OF THE UNITED STATES. 



Melville Weston Fuller. Chief Justice. 

John Marshall Harlan, ] 
Horace Gray, 
David Josiah Breaver, 
Henry Billings Brown, , . 

GEORGE ShIRAS, Jr., \ ASSOCIATE JUSTICES. 

Edward Douglass White, 
KuFus W. Peckham, 
Joseph McKenna, j 



JUDGES OF THE UNITED STATES CIRCUIT COURTS OP 
APPEALS, AND THE CIRCUIT AND DISTRICT COURTS. 

1st CIRCUIT. 

Horace Gray, Circuit Justice. 

Le Baron C. Colt, ) Circuit Judges. 

William L. Putnam, J 

Nathan Webb, Me., 1 

Edgar Aldrich, N. H., I 

-ay ^ t^ T^^r^^T T\r o, ^ District Judges. 

Francis C. Lowell, Mass., 

Arthur L. Brown, R. I., j 

2d circuit. 

RuFUS W. Peckham, Cihcuit Justice. 
William J. Wallace, ^ 
E. Henry Lacombe, i Cihcuit Judges. 
Nathaniel Shipman, j 
William K. Townsend, Conn., 1 

Alfred C. CoxE, N. D. N. Y., j 

Addison Brown, S. D. N. Y., }■ District Judges. 

Edward B. Thomas, " E. D. N. Y., | 
HoYT H. Wheeler, Vt., J 

(vii) 



District Judges. 



viu judges of the federal courts. 

3d circuit. 

Gj:orge Shiras, Jr., Circuit Justice. 

Marcus W. Acheson, \ 

George M. Dallas, Y Circuit Judges. 

George Gray,* J 

Edward G. Bradford, Del., ~1 

Andreav Kirkpatrick, K. J., I 

William Butler,' E. D. Fa., [ District Judges. 

Joii:n B. McPiierson,^ E. D. Pa., | 

Joseph Buffington, W. D. Pa., J 

* Additional Judgeship created Jan. 25, 1899. 

1 Retired Jan. 31, 1899. = Commissioned Mar. 2, 1899. 

4th circuit. 

Melville W. Fuller, Circuit Justice. 

Nathan Goff, > „ -r . ^^^ 

„ TT ij ^ > Circuit Judges. 

Charles H. biMONTON, / 

Thomas J. Morris, Md., 

Thomas E. Furnell, E. D. N. Car., 

Hamilton G. Ewart,' W. D. N. Car. 

William R. Brawley, E. & W. D. S. Car, 

Edmund Waddill, Jr. ,E. D. Va., 

John Paul, W. D. Ya., 

John J. Jackson, W. Ya., 

' Commissioned Apr. 13, 1899. 

5th circuit. 

Edward D. White, Circuit Justice. 

Don A. Pardee, ^ 

A. P. McCoRMiCK, i Circuit Judges. 

David D. Shelby,* J 

John Bruce, N. D. Ala., 1 

Harry T. Toulmin, S. D. Ala., I 

Charles SwAYNE , N.D. Fla., 

James W. Locke, S. D. Ela., | 

William T. Newman, N. D. Ga., j 

Emory Speer, S. D. Ga., district Judges. 

Charles Parlange, E. D. La., , 

Aleck Boarman, W. D. La., | 

Henry C. Niles, S. D. Miss., 

David D. Bryant, E. D. Tex., 

Edward Ft. Meek, N. D. Tex., | 

Thomas S._Maxey,'X^W. D. Tex., J 

* Additional Judgeship created Jan. 25, 1899. 



JUDGES OF THE FEDERAL COURTS. 



6th circuit. 



John M. IIaklan, Circuit Justice. 

William 11. Taft, ^ 

Horace 11. Lurtox, I Circuit Judges. 

AViLLiAM R. Day,* J 

JoHK Watson Baur,^ Ky., "| 

Walter Evaks,^ Ky., 

Henry 11. Swan. E. D. Micli., 

Henry F. Severens, AV. D. Mich., | 

Augustus J. Kicks, N. D. Ohio, } District Judges. 

George R. Sage,'' S. D. Ohio, I 

Albert C. Thompson,* S. D. Ohio, 

Charles D. Clark, E. & M. D. Tenn., | 

Eli S. Ha^imond, W. D. Tenn., J 

* Additional Judgeship created Jan. 25, 1899. 
' Retired Feb. 21, 1899. " Commissioned Mar. 3, 1899. 

^ Resigned. •* Comrais.sioued Sept. 23, 1899. 

Ttii circuit. 

Henry B. Broavn, Circuit Justice. 
William A. Woods, 1 
James G. Jenkins, ! ,, 

JohnW.Showaltek,- [ <^iRCUiT .Judges. 

Peter S. Grosscup,^ j 

Peter S. Grosscup,* X. D. Ills., ] 

Christian C. Kohlsaat,* N. D. Ills., I 

William J. Allen, S. D. Ills., ! , 

John H. Baker, Ind., District Judges. 

AViLLiAM H. Seaman, E. 1). Wis., | 
Bomanzo Bunn, W. D. Wis., J 

> Deceased Dec. 10, 1898. = Commissioned Jan. 23, 1899. 

^ Resigned to take efl'ect upon bis qualifying as Circuit Judge. 
* Commissioned Feb. 28, 1899. 



8th circuit. 

David J. Brewer, Circuit Justice. 

Henry C. Caldwell, -j 

Walter H. Sanborn, i Circuit Judges. 

Amos M. Thayer, J 

John A. Williams, E. D. Ark., 1 

John H. Rogers, W. D. Ark., I 

Moses Hallett, Colo., {' District Judges. 

Oliver P. Shiras, N. D. la., 

John S. Woolson, ' S. D. la.. 



JUDGES OF THE FEDERAL COUETS. 



Cassitjs G. Foster,! Kan., 
William C. Hook,'' Kan., 
William Lochren, Minn., 
Elmer B. Adams, E. D. Mo., 
John F. Philips, W. D. Mo., 
W. H. MuxGER, :Neb., 

Charles F. Amidon, N. Dak., 
John E. Carland, S. Dak., 
John A. Marshall, Utah, 
John A. Riner, Wy., 

' Resigned Feb. 28, 1899. 



[ District Judges. 



= Commissioned Feb. 13, 1899. 



9th circuit. 



Joseph McKenna, Circuit Justice. 

William W. Morrow, 

William B. Gilbert, 

Erskine M. Boss, 

John J. De Haven, 

Olin Wellborn, 

Hiram Knowles, 

Cornelius H. Hanford, Wash., 

Thomas P. Hawley, Nev., 

Charles B. Bellinger, Ore., 

James H. Beatty, Id., 

Charles S. Johnson, Alaska, 



Circuit Judges. 



X. D. Cal. 
S. D. Cal., 
Mont., 



► District Judges. 



COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. 

Richard H. Alvey, Chief Justice. 

Martin F. Morris, j Associate Justices. 
Seth Shepard, } 



JUDGES OF THE FEDERAL COURTS. 

UNITED STATES PATENT OFFICE. 

Hon. Charles Holland Duell, 

Commissioner of Patents. 

Hon. Arthur Philip Greeley, 

Assistant Commissioner of Patents. 



TABLE OF CONTENTS. 



PAGE 

ABANDONMENT OF INVENTION. (See Applications, 

Abandokkd.) 1 

I. In General 1 

II. By Failure to Claim 3 

AMENDMENT TO PATENT LAW IN KEGABD TO IN- 
SANE PERSONS 4 

ANTICIPATION 5 

I. Patents and Printed Publications 5 

II. Prior Art 9 

III. Prior Use 12 

TV. Public Use or Sale 13 

APPEAL. (See Interferences, Appeal.) 15 

I. From Primary Examiner to Commissioner ... 15 

II. To the Board of Examiners-in-Cuief 15 

III. From the Commissioner to the Court of Ap- 

peals, D. C 17 

IV. Return of Appeal Fees 18 

V. To the Circuit Court of Appeals 18 

APPLICATIONS 19 

I. Abandoned 21 

(a) In General 21 

(b) Bevivalof 26 

II. Affidavits. To Obtain Interferences 28 

III. Amendments 28 

(a) In General 28 

(&) Election and Division 29 

(c) After Final Rejection . 29 

(d) New Matter 30 

(e) After Allowance under Bide 7S 31 

IV. Attorneys 31 

(a) Powers of 31 

(6) Use of Assignment Records 33 

(c) Disbarred 33 

V. Claims 33 

(a) Duplicate or Redundant 33 

(6) Functional or Indefinite 34 

(c) Two Inventions in One Claim 35 

(cZ) Order in Relation to Punctwition 35 

(xiii) 



XIV CONTENTS. 

PAGE 

VI. Complete. Order in Eelation to 36 

VII. Division of 36 

(a) Classification in the Patent Office 36 

(b) Practice 38 

(c) Process and Ajjparatus- 39 

(d) Process and Product 40 

(e) Different Processes .... 40 

(/) Status of Invention in the Arts 41 

VIII. Drawings 41 

(a) In General 41 

(&) Order in Pelation to 43 

IX. Examination of 44 

(a) Information and Advice to Applicants 44 

(6) Rejection 46 

(c) Actions Other than Bejection 47 

X. Fees. Order 48 

XI. Forfeited. Penewal of 48 

XII. Model 49 

XIII. Name of Applicant. Order 49 

XIV. Oath 49 

(a) New or Reneiced 49 

{!)) Supplemental 50 

(c) In Foreign Countries. Order 50 

XV. Pending. Access to 51 

XVI. Petition ; . . . . 51 

XVII. Public Use Proceeding 51 

XVIII. Reissue. New Hatter - ... . . 52 

XIX. Specification • " 53 

(a) In General 53 

[b) Sufficienci/ of Description 53 

XX. Suspension of Action 54 

XXI. By Administrator of Deceased Inventor ... 55 

XXII. Joint and Sole 56 

ASSIGNMENT 56 

I. In General 56 

II. Of Future Improvements 57 

CASES DISTINGUISHED 58 

COMITY 58 

CONTRACTS 61 

I. Construction of 61 

II. Specific Performance 61 

COPYRIGHTS 62 

I. Copyrightable Subject-Matter . 62 

II. False Marking 62 



CONTENTS. XV 

PAGE 

III. IXFRINGEMENT (i3 

(a) In General "3 

(b) Injunction 05 

IV. Penalties 66 

V. PUBLICATIOX AND SALE (j7 

DAMAGES AND PROFITS 08 

I. Estimation and Measuke of 68 

II. oSTOMIXAL 71 

DECISIONS OF THE COMMISSIONER OF PATENTS . . 71 

I. Affirmed ox Appeal to Court of Appeals, D. C. 71 

II. Eeveksed on Appeal to Court of Appeals, D. C. 72 

III. Affirmed in Part and Reversed in Part ... 72 

DECISIONS OF THE FEDERAL COURTS 72 

I. Affirmed on Appeal 72 

I r. Reversed on Appeal 83 

III. Appeals Dismissed . 91 

IV. Disposition of Motions for Rehearing 98 

DECISIONS OF FOREIGN COURTS 93 

DEFENSES 94 

I. In General 94 

II. Burden of Proof 94 

DESIGNS • 95 

I. Appeal and Petition 95 

II. Construction of Statutes ... 96 

III. Infringement 97 

IV. Limited to a Single Invention 97 

V. Interfekence 98 

VI. Practice in tup: Patent Office 98 

VII. Test of Identiiv ... 99 

DISCLAIMER 99 

I. Construction of 99 

II. Delay in Filing 100 

III. Under the Statute, 4917 R. S 100 

EQUITY 101 

I. Bill 101 

(a) In General 101 

(b) Mnltifariou.sness 101 

II. Demurrer 103 

III. Plea 103 

IV. Ansaver 103 

V. Jurisdiction 103 

VI. Master's Report 104 

VII. Res adjudicata 103 

QUIVALENTS lOo 



XVI CONTENTS. 

PAGE 

ESTOPPEL 107 

EVIDENCE 109 

I. Admissibility 109 

II. Suppression on Motiox 109 

III. Weighing 110 

EOKEIGN PATENTS AND PUBLICATIONS 110 

INFRINGEMENT Ill 

I. In General Ill 

II. Claims for Combination 114 

III. Contributory 114 

IV. By Cities and Corporations 115 

V. Process 116 

VI. Particular Cases 116 

INJUNCTION 118 

I. In General 118 

II. Dissolution 118 

III. Preliminary 119 

{u) In General 119 

{h) When Grafted 120 

(c) When Denied 121 

IV. Prior Judgment 123 

V. Public Acquiescence 125 

VI. Violation of 125 

INTERFERENCES 126 

I. In General 128 

II. Access to and Production of Papers 129 

III. Amending Applications, Rule 109 129 

IV. Appeal 131 

(a) In General 131 

(h) No Appeal Lies 132 

V. Burden of Proof 133 

(a) In General 133 

{h) When one Contestant is a. Patentee 134 

VI. Declaration of 135 

(a) In General 135 

(b) Application and Patent 136 

(c) Claims : Subjects- Matter must Conflict 137 

(c7) Suggesting Claims 137 

(e) Generic and Specific Claims 138 

(/) Claims: Identical in Scope 139 

VII. Dissolution 139 

(a) In General 139 

(6) Pule 122 143 

(c) Time Allowable for Filing Motions ■ . . . 145 

(d) Stntutonj bars 145 

(e) Transmittal of Motion to Primary Exaininer . . 146 



CONTENTS. XVU 

PAGE 

VIII. Effect of Patent Office Decisions in the 

Courts 146 

IX. Ex parte PROCKiiDiii OS 147 

X. Issue 147 

XI. Judgment on the Kecord 149 

XII. Motions Generally 14!) 

XIII. Practice on Final Hearing and after Judg- 
ment 150 

xiv. preli3i1nary statements 151 

(a) In General 151 

(6) Amendment of 152 

XV. Priority 156 

(a) In General 156 

(&) Abandoned Experiments 160 

(c) Eniploi/er a)id Employe 160 

{d) Foreign Patents 160 

(c) Invention Made b)j Third Party 161 

XVI. Reduction to Practice 162 

(a) In General 162 

(h) Actwd 162 

(c) Constructive 163 

(d) Diligence 164 

(e) Dratvings and Models 167 

XVII. Reinstatement and Reopening of 167 

XVIII. Service of Notict: 167 

XIX. Suspension . 168 

XX. Testimony 169 

(o) In General 169 

(b) Timefor Taking 170 

(c) Interested Parties 170 

(d) Irrelevant 171 

XXI. Vacating Judgment 171 

INTERFERIXG PATENTS 172 

I. To THE SA3IB Inventor 172 

II. To Different Inventors 174 

JUDICIAL NOTICE ! .... 174 

JURISDICTION 176 

I. Commissioner of Patents 176 

II. Secretary OF THE Interior 17S 

III. Federal Courts 178 

(a) Court of Appeals^ District of Columbia 178 

(&) Circuit Courts 180 

LABELS ISl 

LICENSE 182 

I. In General 182 



XVm CONTENTS. 

PAGE 

II. Implied .... 184 

III. To Make, Use and Sell 185 

MAKKING ARTICLES PATENTED 186 

PATENTABILITY 186 

I. In General ..... 187 

II. Combination 188 

III. Invention and Skill Distlnguished 189 

TV. Invention and Suggestion Distlnguished ... 191 

Y. Evidence of Extensive Use 191 

VI. Evidence of Result 192 

YII. Utility 192 

VIII. Novelty and Invention 193 

(a) New Use or Adaptation 193 

(6) Process or Method 194 

(c) Products . 195 

(d) Substitution of Materials 195 

IX. Novelty Without Invention 196 

(a) Aggregation ... 196 

(b) Arrangement 197 

(c) Composition of Matter 198 

(d) Double or Analogous Use 198 

(e) Process or Method 200 

(/J Substitution of Materials 200 

((/) Particular Cases 201 

PATENTS 202 

I. In General 203 

II. Presumption of Validity 203 

III. Defective or Void 204 

IV. Construction of 205 

(a) In General 205 

(b) Liberal or Broad 208 

(c) Bij T>rai.cings 211 

(d) By Specification 211 

(e) By State of the Art 212 

V. Claims 213 

(a) Ambiguous, How Construed 213 

(b) For Combination 213 

(c) For Specific Element (f Combination 213 

(d) Limited by Amendment in Patent Ofjlce 214 

(g) Limited by their Terms 215 

(0 " Substantially as Described,'''' etc 216 

VI. Correction of 217 

(a) By Certificate of Correction 217 

(6) By lidssue 218 

VII. Limitation of, b\^ Foreign Patents 219 



CONTENTS. XIX 

PAGE 

VIII. Reissue 220 

IX. Valid and Infringed 220 

X. Valid but Not Infringed 233 

XI. Validity Xot Determined, Not Infringed . . 237 

XII. Void in Whole or in Part 242 

PRACTICE IN THE UNITED STATES COURTS 2ol 

PRINTS 252 

PRINTS AND LABELS 2o:j 

PRIOR ADJUDICATION 253 

PROTECTION OF PATENTS IN TERRITORY SUBJECT 
TO MILITARY GOVERNMENT BY UNITED STATES 

FORCES 255 

REOPENING CASES IN THE PATENT OFFICE 25S 

I. Ex Parte 2oS 

II. Interferences 259 

REPAIR OF PATENTED MACHINES 260 

RULES OF PRACTICE 200 

REVENUE STAMPS 203 

STATUTES, CONSTRUCTION OF 205 

SUITS 206 

I. Attorneys 200 

II. Costs 200 

III. Laches 207 

IV. Parties 20s 

V. Title 271 

TESTIMONY OF EXPERTS 271 

TRADE MARKS AND TRADE NAMES 272 

I. In General 273 

II. Abandonment 275 

III. Alternatives 270 

IV. Anticipation 270 

V. Arbitrary . 270 

VI. Arbitrary" Descriptive 277 

VII. Assignment 278 

VIII. Descriptive 278 

IX. Essential Features . . 279 

X. Foreign Words 280 

XI. Generic Terms 281 

XII. Geographical Names 282 

(a) Indicathvi Locality 282 

(6) Used Arhitrariljj or Fancifidhj 283 



XX CONTENTS. 

PAGE 

XIII. Infringement 284 

(fO In General 284 

(h) Particular Cases 284 

Xiy. Injunction 285 

XV. Interference 28G 

XVI. -lURISDICTION OF COURTS • 287 

XVII. Practice IN the Patent Office 288 

XVIII. Registration 289 

XIX. Eight to Use Name of Patented Article . . - 290 

XX. Eight to Use Personal Name 291 

XXI. Statute Construed 292 

XXII. Unfair Competition 294 

XXIII. Use and Sale as Establishing Title 301 

XXIV. What Does Not Constitute 301 



ANNUAL 
DIGEST OF DECISIONS 



IN 



PATENT, TRADEMARK, DESIGN, LAREL, 
AND COPYRKiHT CASES. 



Abandonment of Invention. (See Applications, Abanijoned.) 
I. In General. 
II. By Failure to Claim. 

I. In General. 

1, The failure of an inventor to show that he made his in- 
vention at a elate prior to the fihng of the application for a 
patent, Avhich is cited as anticipating the claims of his applica- 
tion, and the acceptance of a patent with claims so narrowed as 
to exclude the anticipated matter, is an abandonment of such, 
matter to the public; and the inventor will not be allowed, in a 
suit upon the patent so narrowed, to claim a construction which 
would cover the matter thus abandoned. (C. C, D. N. J. 
May 25, 1899.) 

Gray, J.] ^Maier et al. v. Bloom et al, 95 Fed. Rep. 159. 

2. Where after a reduction to practice of an invention an ap- 
plicant delayed for eleven years in filing an application because 
of the fixed and determined purpose on the jiart of the owner 
of the invention to keep it from the public and to prevent his 
partners from obtaining any benefit Avhatever therefrom until 
the expiration of certain patents and he could find it profitable 
to dispose of certain machines that he had on hand, and in the 
meantime third parties had applied for and obtained a patent 



Z ABANDONMENT OF INVENTION. 

for the same invention. Held that there was no excuse or justifi- 
cation whatever for the want of diligence in making the appU- 
cation. (C. A. D, C. June 6, 1899.) 
Alvey, J.] * Mower v. Duel], Com'r of Patents, 88 0. G. 191. 

3. Under such circumstances, to say the least of the matter, 
there was not much consideration given to the public in this 
scheme of delay, however much it may have inured to the 
benefit and advantage of the owner of the invention. */f/. 

4. Where an applicant reduced an invention to practice and 
delayed for about eleven years in filing an application, and 
during this delay subsequent and independent inventors of the 
same device came into the Office with their completed invention 
and applied for and obtained a patent at much cost and trouble, 
and put the invention into operation and gave the public the 
benefit of it, Held that to grant a patent to the first to reduce 
the invention to practice and thereby defeat the patent of three 
years' standing would neither be equitable nor just, nor would 
it be promotive of the great object of the patent laws. (Bates 
V. Coe, 98 U. S. 31, cited.) ^Id. 

5. The patent laws are founded in a large public policy to 
promote the progress of science and the useful arts. The pub- 
lic, therefore, is a most material party to and should be duly 
considered in the application for a patent securing to the indi- 
vidual a monopoly for a limited time in consideration of the 
exercise of his genius and skill. */(Z. 

6. The arts and sciences will not be promoted by giving en- 
couragement to inventors to withhold and conceal their inven- 
tions for an indefinite time or to a time when they may use and 
apply their inventions to their own exclusive advantage irre- 
spective of the public benefit, and certainly not if the inventor 
is allowed to conceal his invention to be brought forward in 
some after time to thwart and defeat a more diligent and active 
inventor who has placed the benefit of his invention within the 
reach and knowledge of the public. */c/. 

7. In withholding the invention after its completion, when a 
patent could be obtained therefor, for an undue and unreason- 
able time until after other inventors have by their skill and 
ingenuity perfected a similar invention and obtained a patent 
therefor, the first or original inventor shows himself to be un- 



ABANDONMENT OF INVENTION. 6 

mindful of both the piiUlic niul iii(li\i(lual rights, inul one of 
the reasons why the statute lias ct)nliclecl such large [K)\vers to 
the Commissioner of Patents in refusing a i)atent is to prevent 
such abuse. -■•/(/. 

8. Under section 4893, Revised Statutes, an invention claimed 
must not only be shown to be new and useful, but it must also 
be made to appear that a claimant is justly entitled to a patent 
therefor. A claimant cannot l)e justly entitled if a patent when 
granted would or could oi)erate a wrong either to the public or 
a rival inventor and that wrong be the result of the claimant's 
own laches or negligent delay in asserting liis rights. */(/. 

9. Where it was urged that under section 4886, Revised 
Statutes, there can be no abandonment of a right to a patent 
unless such abandonment be afhrmatively proved. Held that 
affirmative facts may be proved by negative evidence, and 
Avhere the acts and conduct of a party are of such nature as to 
give rise to a rational presumption of a fact, that presumption, 
after the rights of other parties have intervened and attached, 
cannot be removed or gotten rid of by simply denying the in- 
tention to produce the result. -•'/(/. 

10. Parties must be bound by the consequence of their own 
acts, and this principle is true in the patent law as it is in all 
other departments of the law. A deliberate intentional delay 
and non-action in a matter of either a public or private concern 
is proof of a very cogent nature, and tbe party chargeable with 
such conduct must bear the consequences of it, and will not be 
heard to excuse himself by simply declaring that he did not in- 
tend to prejudice the rights of others or to waive rights of his 
own that would have been available to him if they had been 
timely exercised. */(/. 

II. By Failure to Claim. (See Tatexts, Construction of, In 
General. 
1. The failure of an applicant to claim separately the steps of 
the process additional to those set forth in other claims is not a 
confession by him that he w'as not the inventor of them; such 
failure goes no further than a dedication to the public of such 
steps if he was the inventor of them. (Oct. 9, 1899.) 
DuELL, C] Ex parte Fauche, 68 US. Dec. 29. 



4 AMENDMEJsT IN REGARD TO INSANE PERSONS. 

2. A description of a device or C()nil»ination, -which is not 
claimed in the drawing or specification of a patent, estops the 
patentee from securing a monopoly of its use by a siibsc(]iient 
patent ns well as by any other means. (C. C. A., 8th Cir. 
Oct. 9, 1899.) 

Sanborn, J.] *McBride v. Kingman et al.; Same v. Sickels 
et ah; Same r. Randall et al; Same v. Ains- 
worth d al, 97 Fed. Rep. 217. 

Ameiiclment to Patent Law in Regard to Insane Persons. 

[Public— No. 91.] 
An Act to amend section forty-eight hundred and ninety-six of the Revised 

Statutes. 

Be it enacted by the Senate and House of Representatkes of the 
United States of America in Congress assendjJed, That section forty- 
eight hundred and ninety-six of the Revised Statutes is hereby 
amended by inserting after the words "in his life-time" the 
following words: "and when any person having made any new 
invention or discovery for which a patent might have been 
granted becomes insane before a patent is granted, the right of 
applying for and obtaining the patent shall devolve upon his 
legally appointed guardian, conservator, or representative in 
trust for his estate, in as full manner and on the same terms 
and conditions as the same might have been claimed or enjoyed 
by him while sane; " and by inserting at the end of said section 
the following words: "The foregoing section, as to insane per- 
sons, is to cover all applications now on file in the Patent Office 
or which may be hereafter made," so that the said section as 
amended will read as follows: 

"Sec. 4896. When any person, having made any new inven- 
tion or discovery for which a patent might have been granted, 
dies before a patent is granted, the right of applying for and 
obtaining the patent shall devolve on his executor or adminis- 
trator, in trust for the heirs at law of the deceased, in case he 
shall have died intestate; or if he shall have left a will, dispos- 
ing of the same, then in trust for his devisees in as full manner 
and on the same terms and conditions as the same might have 
beeu claimed or enjoyed by him in his lifetime; and when any 
person having made any new invention or discovery for which a 



ANTICirATIOX. O 

patent might have heeii grnntt^'d Iteconies insane before a patent 
is granted, the right of applying for and obtaining the patent 
shall devolve on his legally appointed guardian, eonscrvator, or 
representative in trust for his estate, in as full manner and on 
the same terms and conditions as the same might have been 
claimed or enjoyed by him while sane; and when the applica- 
tion is made by such legal representatives, the oath or aflirma- 
tion required to lie mad(> shall be so varied in form that it can 
be made by them. 

"The foregoing section, as to insane ])ersons, is to cover all 
applications now on file in the Patent Ollice or which ma}- be 
hereafter made." 

Approved, February 28, 1899. 

Anticixiation. 

I. Patents and Printed Publications. 
11. Prior Art. 

III. Prior Use. 

IV. Public Use or Sale. 

I. Patents and Printed Publications. 

1. ^^'here a patent discloses in the drawing clearly and com- 
pletely everything set forth in the claims of an application, 
though the descriptive part of the specification of the patent 
does not describe or refer to the construction, Held, to be a 
proper reference, and to anticipate the claims in ([uestion. 
(Dec. 5, 1899.) 

Greeley, A. C] Ex parte Scott, 68 MS. Dec. 251. 

2. A party is entitled to a patent only when he gives to the 
public a novel invention, and that invention is not novel if it 
has been previously disclosed to the puljlic by another in such 
manner that one skilled in the art can make and use it. If that 
disclosure is complete and puts the public in full possession of 
the invention, it is immaterial how it was made, whether by the 
drawing or by the description. The question in each case is, 
whether or not the invention is, in fact, fully disclosed to the 
public. /(/. 

8. A material consisting of the comminuted cellular portion 
of coni-})ith freed from sappy, deleterious, and adherent matters 



6 ANTICIPATION. 

by subjecting tbe jyith to tbe action of a blast of air, preferably 
heated, Held to be not anticipated by applicant's prior patent 
disclosing corn-pith obtained by passing cornstalks through 
breakers and then separating the pith from the fiber and outside 
shell, as there is no description in the patent that the pith is 
subjected to air at a high temperature. (C. A. D. C. Feb. 8, 
1899.) 

Morris, J.] *Marsden v. Duell, Com'r of Patents, 87 0. G. 
1239. 

4. When it is sought to invalidate a United States patent 
under Revised Statutes, sections 4885 and 4920, by an alleged 
23rior foreign patent, it has been repeatedly held that such 
alleged foreign patent must be one that is open and accessible to 
the public — one that is a public and not a secret one. (June 
23, 1899.) 

Duell, C] Roschach v. Walker, 88 0. G. 1333. 

5. It does not appear that tbe Bundy device was ever put to 
practical use; and fiom the time of Bundy to the time of 
Simonds, dies constructed according to the mechanical laws 
covering those of both inventors, so far as shaping various 
articles is concerned, are not found in the art. Bundy had 
been buried for more than three-quarters of a century when 
Simonds gave to the world his patent, which admittedly revo- 
lutionized the art of the production l)y power of articles circular 
in cross-sectional area. It would be strange, indeed, if a patent 
like that of Bundy, buried so long as his, and originating when 
forging by power rolls and power dies was unknown, could be 
held to anticipate so important an advance on tha subject- 
matter of forging by power as the invention of Simonds, ex- 
pressed in his patent. (C. C, D. Me. July 30, 1898.) 
Putnam, J.] * Simonds Rolling-Mach. Co. r. Hathorn Mfg. 

Co. etal, 90 Fed. Rep. 201. 
G. A patent which fails to show tbe one feature upon which 
invention rests is valueless as an anticipation. (C. C. , S. D. 
N. Y. Nov. 15, 1898.) 

CoxE, J.] '-i^Gormully & J. Mfg, Co. r. Stanley Cycle Mfg. 
Co. etal, 90 Fed. Rep. 279. 
7. A design patent Held, anticipated l)y a patent for the article 



ANTICIPATION. / 

of niiinufacturc, granted more than two years prior to the tiling 
date of the application for the design i)atent, both i)atents cov- 
ering the same snbjcct-matter and granted to the same inventor. 
(C. C, S. D. N. Y. Nov. 22, 1898.) 
Wheeler, J.] *Cary Mfg. Co. r. Neal d ai, 90 Fed. Rc]). 720. 

8. There is a manifest difference between the necessities of a 
system for varying the illuminating effects of incandescent 
lamps in a room and the needs of electric mechanism for regu- 
lating the current to bo conveyed to electric motors, and thus 
regulating the speed of a car. The patent for the one with its 
groups of electric lights told nothing to the inventor who was 
trying to protect an electric car motor in action from the in How 
of a current dangerous both to machinery and passengers. 
(C. C. A., 2d Cir. Dec. 7, 1898.) 

Shipman, J.] * Electric Car Co. of America d al. v. Nassau 
Electric R. Co., 91 Fed. Rep. 142. 

9. Where a prior patent is alleged to anticii)ate the patent in 
suit, the description in the prior patent must be tested for 
sufficiency by the knowledge of persons skilled in the art as it 
existed at the date of the prior patent. (C. C, N. D. Cal. 
Dec. 12, 1898.) 

MoRROAV, J.] * Bowers r. San Francisco Bridge Co., 91 Fed. 
Rep. 381. 

10. The granting of a patent raises a jn-esumption in favor of 
its operativeness and utihty (Dashiell v. Grosvenor, 162 U. S. 
425, 16 Sup. Ct. 805); and wlien the defects therein are merely 
in minor details of construction, such defects will not defeat the 
efficiency of the patent as an anticipation, provided it suffi- 
ciently discloses the principle of the alleged invention. (Pick- 
ering r. McCullough, 104 U. S. 310; Electric Ry. Co. v. 
Jamaica & B. R. R. Co., 61 Fed. Rep. 655.) (C. C, D. 
Conn. Jan. 24, 1899.) 

Tow^NSEND, J.] * Patent Button Co. v. Scovill Mfg. Co., 92 
Fed. Rep. 151. 

11. Where it was contended that the prior art, as disclosed in 
all of the alleged anticipatory patents, was in 1882 so suggestive 
as to make the car-coupler of the patent in suit ol)vious to an 
intelligent and skilled mechanic; and with a view of demon- 



8 ANTICIPATION. 

stratiiig this obviousness the defendant, in 1896, submitted the 
Janney construction, under the 1879 patent, to three skilled 
mechanics, and, without further instructions, asked them to 
substitute a vertical lock in lieu of the side or laterally working 
lock of the patent of 1879, which they did, and their results 
fairly show the device of the patent in suit. Held, that the 
action of these mechanics is not a fair test of obviousness for 
two reasons: First, they did their work in 1896 instead of 1882, 
the date of the patent, and it does not follow that if a mechanic 
in 1896, with all the light of advanced knowledge in the art, 
could ajjply the mechanical knowledge as it existed in 1882 to 
a new result, such mechanic could have done so if he had made 
the effort in ]889. Second, the question sul)mitted to the 
mechanics practically stated the object to be accomplished. A 
jDart of the invention was to apprehend that there could be an 
effectively working vertical pin, and this part of the invention 
was imparted to the mechanics. (C. C. , E. D. Mo.; E. D. 
Feb. 14, 1899.) 

Adams, J.] ^McConway & Torley Co. v. Shickle, Harrison & 
Howard Iron Co., 92 Fed. Rep. 162. 

12. Unless the prior publication describes the invention in 
such a full, clear and intelligible manner as to enable persons 
skilled in tJie art to comprehend it and reproduce the processor 
article claimed, without assistance from the patent, the publica- 
tion is insufficient as an anticipation. (Cases cited.) (C. C. , 
S. D. N. Y. May 8, 1899.) 

CoxE, J.] ^^Badische Analin & Soda Fabrik v. Kahe et al, 94 
Fed. Rep. 163. 

13. A description which is insufficient to support a patent 
cannot be relied on as an anticipation. In each instance the 
same precision is required. */(/. 

14. If prior patents and publications can be reconstructed by 
extrinsic evidence to fit the exigencies of the case, the inquiry 
will no longer be confined to what the publication communicates 
to tbe public, but it will be transferred to an endeavor to ascer- 
tain what the author intended to communicate. The question 
is. What does the prior j^ublication say? not what it might 
have said or what it should have said. The court has simply 
to consider what the publication has contrilmted to the art. If 



ANTICIPATION. V 

it fails to show tlio invention whicli it is said to anticii)ate, the 
contention that its author knew enough to write an anticijiation 
is grotesquely irrelevant. Were such a rule estahlished, the 
law upon this suhjeet would be thrown into ini'xtriea]»li' con- 
fusion. ''•f(L 

15. The criterion ]»y wliich to determine whether or not a 
foreign i)atent is an anticipation of a patent granted in the 
United iStatcs is to ascertain whether or not the description and 
drawings of the foreign patent are so full, clear and exact as to 
enable any person skilled in ai't to which they relate to })ractice 
theinvention of the U. S. patent, and if so found, then the U. S. 
patent is void for anticipation. (C. C, E. D. Mo. E. D. June 
26, 1899.) 

Adams, -J.] * Springfield Furnace Co. et al. v. Miller Down- 
Draft Furnace Co. ctai, 96 Fed. Rep. 418. 

16. To sustain the defense of anticipation, it is necessary that 
the anticipatory matter should clearly show the invention sub- 
sequently patented in such manner as to enable any person 
skilled in the art or science to which it relates to make or con- 
struct and practically use the invention for the purposes con- 
templated in the subsequent patent. (C. C. A., 3d Cir. Oct. 
4, 1899.) 

Bradford, J.] *McXeely et al. v. AMlliames et al. 

AVilliames d al. r. INIcNeely et ai, 96 Fed. 
Rep. 978. 
II. Prior Art. 

1. An inventor is entitled to be protected to the extent of 
what he practically accomplishes, and no more; and in this 
particular, anticipatory matter which has never gone into prac- 
tical use is to be narrowly construed; (citing Ford r. Bancroft, 
85 Fed. Rep. 457, 461.) because, otherwise, the effect given to 
an invention of doubtful utility " Avould operate rather to the 
discouragement than to the promotion of inventive talent." 
(Citing Deering r. Harvister W'ks, 155 U. S. 286, 295; 15 Sup. 
Ct. 118; 69 0. G. 1641; C. D. 1894.) (C. C, D. Me. July 
30, 1898.) 

Putnam, J.] *Simonds Roller-Mach. Co. v. Hathorn ^ffg. Co. 
daZ.,'90Fed. Rep. 201. 



10 ANTICIPATION. 

2. In determining wliether what a patentee has done involved 
real invention, the court is bound to assume that the patentee 
knew everything about the art to which the alleged invention 
pertains which was contained in printed publications or in the 
public history of that art, and upon that assumption to say 
"whether the step taken required the exercise of the inventive 
faculty. (C. C, S. D. Ohio, W. D. Dec. 2, 1898.) 

Taft, J.] *Fry v. Rookwood Pottery Co. ct al, 90 Fed. Rep. 
495. 

3. An impractical)le prior device, not capable of performing 
the function of a subsequent patented device that is practicable 
and useful, is no anticipation. (C. C, N. D. Cal. Dec. 12, 
1898.) 

Morrow, .T.] * Bowers v. San Francisco Bridge Co. , 91 Fed. 
Rep. 381. 

4. It is not sufficient to constitute an anticipation that a prior 
device might, by modification, be made to accomplish the func- 
tion performed by the device of the patent, if it was not designed 
by its maker, nor adapted nor actually used for the perform- 
ance of such functions. (C. C, E. D.'wis. July 5, 1898.) 
Seaman, J.] * \\>stern Electric Co. v. American Rheostat Co. 

etal, 91 Fed. Rep. 650. 

5. A claim for a compound bar for making cutting-tools, con- 
sisting of an inner bar of harder metal and an inclosed bar of 
softer metal pressed on the same, etc., contains nothing that is 
patentabl}^ new in view of a patent which shows a bar of hard 
steel surrounded or partly surrounded by a bar of softer steel 
and another patent which shows a bar for cutting-blades made 
by i^artly surrounding the hard steel by iron. (C. A. D. C. 
Mar. 8, 1899. ) 

Alvey, J.] ^-i^ Bedford et al. v. Duell, Com'r of Pats., 87 0. G. 
1611. 

6. Where a protest was entered in the German Patent Office 
to the grant of a claim for a method for making steel bars for 
tools by combining two bars of different grades of steel so that 
the superior steel is inserted in a bar of inferior steel, on the 
ground that the method was already known, and the protest 
was overruled, Held, that the action of the German Office can 



ANTICII'ATION. 11 

have no influence upon the dcterniination of the ]n-esent case, 
as there is no evidence tliat tlie references before tlie Patent 
Office here were before the (icrnian Office. ^'-Id. 

7. The simiHtude in tlie invention relied on as matter of 
anticipation with the invention for Avhich a ])atent is sought 
need not be exact in form or structure; but if the information 
contained therein is full enough and sufficiently precise to enable 
any person skilled in the art to which it relates to perform the 
process or make the thing covered by the claim of invention 
sought to be patented, it will be sufficient to establish the fact of 
anticipation and the want of novelty in the alleged invention. 

8. A claim for a traveling carrier of a hog-hoisting machine 
the essential feature of which is chain-pendants permanently 
attached to the carrier. Held, to be anticipated by an endless 
carrier for hoisting building material, having rod-pendants per- 
manently attached thereto, the uses of the two devices being 
practical!}' the same, as by substituting the chain for the rod 
attached to the carrier of the reference the latter would be avail- 
able for drawing hogs from the pen to the hoisting-point in the 
manner described by appellant. (C. A. D. C. Apr. 4, 1899.) 
Shepaed, J.] * Lowry v. Duell, Com'r of Patents, 88 0. G. 717. 

9. An accidental result not contemplated by a prior inventor 
cannot anticipate a later patent. (C. C. , D. Mass. A})!-. 7, 
1899.) 

Colt, J.] ^Tannage Patent Co. r. Donallan, 93 Fed. Rep. 811. 

10. A patent for an ordinary street-ear trolley with an ordi- 
nary buffer spring so constructed as to come into operation 
when the trolley has assumed a vertical i)osition, and ])y engag- 
ing therewith prevent damage being done to the trolley,, or by 
the trolley to the car upon which it is placed. Held, antici- 
pated by the common device for throwing glass target-balls 
wherein a buffer spring is used for a similar purpose, i. e., to 
prevent damage to the projector or its mechanism. (C. C, 
D. N. J. July 7, 1S99.) 

KiRKPATKicK, J.] ^-^^ Thomson-Houston Electric Co. v. Rahway 

Electric Light & Power Co. , 95 Fed. 
Rep. 660. 



12 ANTICIPATION. 

11. It is iKit sufficient to constitute anticij^ation, tiiat the de- 
vice relied on might, by modification, be made to accomplish 
the functions performed by the invention alleged to be antici- 
pated, if it were not designed by its maker, nor adapted, nor 
actually used for the performance of such functions; neither 
will mere accidental use of the features of an invention, without 
recognition of its benefits, anticipate a patent. (C. C. , D. N. J.) 
KiRKPATRicK, J.] ^Ryan v. Newark Spring Mattress Co., 96 

Fed. Rep. 100. 

12. The mere secret practice of a process or the physical pres- 
ence of a product or manufacture in this country is insufficient 
as an anticipation, unless and until the public acquires, or has 
an opportunity to acquire, therefrom such knowledge as would 
enable one skilled in tlio art to practice the invention. Such 
alleged anticipation, whether by foreign printed publication or 
physical presence in this countiy, must so embody the patented 
article, that a specification could be based thereon. (C. C. , 
S. D. N. Y. July 29, 1899. ) 

TowNSEND, J.] *Acme Flexible Clasp Co. v. Cary Mfg. Co., 
96 Fed. Rep. 344. 

13. By knowledge and use, the legislature meant knowledge 
and use accessible to the public. The knowledge and use of an 
invention in a foreign country by persons residing in this coun- 
try will not defeat a patent wliich has here been granted to a 
bona fide patentee, who, at the time, was ignorant of the exist- 
ence of the invention or its use abroad. It is the inventor who 
is the first to confer on the pul)lic in this countr}^ the benefit of 
his invention, who is entitled to a patent. *7<i. 

III. Prior Use. 

1. Experiments producing unsatisfactory results, and aban- 
doned in consequence, cannot be held to establish a prior use 
which would close the door to further invention by which a 
commercially valuable and useful product can be placed upon 
the market. (C. C, D. N. J. July 14, 1899.) 
KiRKPATRicK, J.] * Westinghouse Electric & Mfg. Co. v. 
Beacon Lamp Co. et al, 95 Fed. Rep. 
462. 



ANTICIPATION. 13 

2. The apiilieatioii for tlie iiatcnt in suit was filed on Dec. 22, 
1883. Articles differing in degree only from those covered by 
the patent were imported and sold in ^lay, 1883, seven months 
prior to the date of the application, but subsequent to the inven- 
tion and commercial introduction of the articles in England. 
f/eW, that the patentee should be permitted to carry the date of 
his invention back to what was done by him in England prior 
to his arrival in this country, in order to overcome the defense 
of prior use. (C. C, S. D.^N. Y. Aug. 4, 1899.) 
Town-send, J.] *Hanifen ?'. Price ct al, 96 Fed. Rep. 435. 

3. In interference cases a foreign inventor can only carry back 
the date of his invention in a foreign country by a patent or a 
publication, or, in this country, by the date of the arrival in this 
country of knoAvledge of said invention. ]>ut there is a distinc- 
tien between the provisions of § 4923 R. S., which provides for 
the protection of the patentee against proof of prior knowledge 
or use of his invention, without publication, in a foreign 
country, and the general grant by § 4886 R. S., of the right to 
a patent to any person who has made an invention not known 
or used bv others in this country, and nowhere patented or 
described in any printed pu])lication. The natural interpreta- 
tion of the language of § 488() indicates an intention to confer 
the benefit of the patent law upon any individual who could 
show a prior completed inventive conception, regardless of the 
place where the invention was conceived. ^^Id. 

IV. Public Use or Sale. 

1. The fairly constant use of a bicycle rim made of wood, for 
a period of four or five years, though at a time when the demand 
for bicycles, and the bicycle art as well, were in the formative 
stage, yet in a locality which Avas probabl}' the most important 
manufacturing center for bicycles at that stage of the art, w'as 
manifestly a "public use," within the meaning of the patent 
law, such as to render a later production of identical means 
non-patentable, without regard to actual knowledge of such 
prior discovery and use. (C. C', E. D. Wis. Nov. 27, 1898.) 
Seaman, J.] * Indiana Novelty ^Nlfg. Co. v. Crocker Chair Co.; 
Same r. Smith Mfg. Co., 90 Fed. Rep. 488. 



14 ANTICIPATION. 

2. It is the fact of use given to and received by the com- 
munity at large, in contradistinction to shop experiments, or 
mere occasional exhibitions, or use by the inventor alone, which 
must control ; and it is not to be measured by degrees or terri- 
torial extent, nor made dependent upon any probability of fact 
that knowledge of such use should have reached the later 
claimant. */f/. 

3. So far as concerns the question of anticipation, it is imma- 
terial whether a patentee knew, or did not knew of the antici- 
pating machine, at the time he claims to have invented the 
machine covered by his patent. The court, in passing upon 
his device, is bound to assume that he had the anticipating 
machine before him. (C. C, 8. D. Cal. Jan. 30, 1899. 
Wellborn, J]. *Lettcherv. Mann et al, 91 Fed. Rep. 909. 

4. Where a machine is used for profit, not experiment, and 
particularly where it is exposed to the vieAV of persons other 
than the inventor and his employes pledged or enjoined to 
secrecy, such use is public use, and in order to invalidate a 
patent, such use must be established by proof that is clear and 
convincing. (C. C, S. D. Cal. Jan. 30, 1899.) 
Wellborn, J.] *Lettelierv. Mann et al, 91 Fed. Rep. 917. 

5. Where it is shown that the patentee and his partner used 
in their business a number of machines essentially the same as 
the one patented for more than two years prior to the applica- 
tion for the patent, such use being for the common profit of the 
firm, and that the employes of the firm not enjoined to secrecy, 
as well as the patentee's partner, saw the machines in operation, 
such proof will invalidate the patent; for to constitute public 
use it is not necessaiy that more than one person should have 
known of that use. */(i. 

6. Improvements in a machine which are not of the sub- 
stance of the patent and do not add anything patentable to the 
machine, do not save the patent from the invalidating effect of 
a prior public use. */(i. 

7. "Whenever," under R. S. § 4923, "it appears that a 
patentee, at the time of his application for a patent, believed 
himself to be the original and first inventor or discoverer of the 
thing patented," a prior use in a foreign country will not defeat 



APPEAL. 15 

the patent. The law limits the inquiry as to prior use to this 
country. (C. C, S. D. N. Y. May 8,"l899.) 
CoxE, J.] *Badische Analin & Soda Fabrik v. Kalle el ai, 94 
Fed. Rep. lG;-3. 

Appeal. (See Interfekexcks, Appeal.) 

I. From Primary Examiner to Commissioner. 
II. To the Board of Examiners-in-Ciiief. 

III. From the Commissioner to the Court of Appeals, 

D. C. 

IV. Return of Appeal Fees. 

V. To THE Circuit Court of Appeals. 

I. From Examiner to the Commissioner. 

1. Upon the requirement of an Examiner that an a]~iplicant 
present, in addition to his own affidavits, affidavits of third 
parties, Held, that the question raised is reviewable by petition 
to the Commissioner. (Oct. 27, 1899.) 

Duell, C] Ex parte Johnson, 89 0. G. 1341. 

2. Held, further, that such requirement is unauthorized, as 
Rule 75 does not provide in terms for corroborative affidavits. 
If, however, the Examiner believes that an applicant's affidavit 
is fraudulent and so charges, the applicant should be given 
leave to file corroborative affidavits. {Ex parte Hurlbut, 52 0. 
G. 1062, cited.) Id. 

3. From an Examiner's requirement that the original model, . 
structure or drawing, referred to in an affidavit filed under the 
provisions of Rule 75, be produced, petition may be taken to 
the Commissioner. Id. 

II. To the Board of Examiners-in-Chief. 

1. The failure of an examiner to carry into effect a decision 
by the Commissioner, is a proper matter to be brought up on 
petition; but the application of the rulings of a decision ren- 
dered in one case to the facts of another case for the purpose of 
determining whether or not the claims of that case are allow- 
able, requires a judicial determination, and is clearly a matter 
of merits which should be reviewed by the examiners-in-chief 
in the first instance. (Sept. 27, 1899.) 
Greeley, A. C] Ex parte Ryley, 67 MS. Dec. 495. 



16 APPEAL. 

2. So long as the decision was not rendered in the case under 
consideration, it is immaterial that it was rendered in another 
case filed by the same party, since it could give no more force 
than if it were rendered in a case filed by some other party. 
Examiners are expected to follow^ the decisions of the Com- 
missioner although rendered in other cases, but where the action 
of the examiner indicates no hesitation to give full force and 
effect to a decision of the Commissioner, but holds that it is not 
applicable to the case in hand, a question of merits is involved 
which is appeala])le to the board of examiners-in-chief. Id. 

3. Division was required )\y the examiner and acquiesed in 
by the applicant, who filed divisional ajjplications, one of which 
Avas allowed. The examiner rejected a claim of the other ap- 
plication in view of certain claims in the allowed application 
taken in connection Avith other references. Whereupon petition 
was taken and it was requested that the examiner be instructed 
in effect to allow the application. Helcl^ that the question pre- 
sented was one of merits which should not be j^assed upon by 
the Commissioner prior to an adverse decision by the examiners- 
in-chief; to hold otherwise would be to deprive the petitioners 
in case of an adverse decision on the question of patentability, 
of the right of appeal to the Court of Appeals of the District of 
Columbia. (Sept. 27, 1899.) 

DuELL, C] ExjKirte Lawton d ah, 67 MS. Dec. 492. 

4. The examiner held that an application covers separate 
and indei^endent inventions which should not be claimed in 
one case and preparatory to requiring division rejected certain 
claims on the ground ol aggregation. Certain patents were 
cited as showing the state of the art, without specifically apply- 
ing them to all of the claims or attempting to give a full and 
complete action upon tlie merits of the claims. Appeal was 
taken from the action of the examiner in finally rejecting the 
claims for aggregation. In his answer to the appeal, the exam- 
iner applied the references cited to the appealed claims and 
held that they are anticipated aside from the question of aggre- 
gation. Held, that the question of anticipation was not brought 
up by the appeal and should not have Ijcen discussed by the 
examiner, since the sole question is as to whether or not the 
claims cover aggregations, and that is the only question which 



APPEAL. 17 

can be decided by the exaniiners-in-ehief iii)on the appeah 
(Nov. 11, 1809.) ' 

Gkeelev, a. C] Ex parte Ciirleton, 08 ]\LS. JJee. 189. 

4. ^Vhen claims are rejected on the applicant's prior patent, 
a review of the facts in the case to determine the correctness of 
that action must be had in the first instance on appeal to the 
examiners-in-chief, and not on petition. (Nov. 8, 1898.) 
Greeley, A. C] Ex parte Wellman, 86 0. G. 1986. 

5. Where petition was taken from an action of the examiner 
on the ground that a single reference had not been cited show- 
ing in combination all of the features covered bj^ the claims, 
but several references wei'e cited said to show substantially the 
several features, and the claim was rejected on the ground that 
no invention was involved in bringing those features together 
in one device, Held, that this is a question of merits which is 
appealable to the exaniiners-in-chief and cannot properly be 
brought up on petition. (June 1, 1899.) 

Greeley, A. C] Ex parte Perkins, 88 O. G. 548. 

6. When objections to the sufficiency of an affidavit to over- 
come a rejection based upon a prior patent are raised by the 
examiner, the question presented goes to the merits, and an 
appeal lies in the first instance to the examiners-in-chief. 
{Ex parte Boyer, 49 0. G. 1985, cited.) (Oct. 27, 1899!) 
Duell, C] £a; p«r^e Johnson, 89 0. G. 1841. 

III. From the Commissioxer to the Court of Appeals, D. C. 

1. AMiere the decision of the Commissioner of Patents ap- 
pealed from to the Court of Appeals of the District of Columbia 
was dated Decemljer 10, 1898, but entry was not made on the 
file-wrapper until December 12, 1898, when the notice of the 
decision was sent to appellant, and appeal was taken to the 
court on January 20, 1899, Held, that the appeal was taken too 
late under Pvule XX. of the court, which requires an a])peal to 
be taken within forty days from the date of the decision of the 
Commissioner, and not afterward. (C. A. D. C. Apr. 4, 1899.) 
Alvey, J.] * Burton r. Bentley, 87 0. G. 2326. 

2. The rule limiting the time of appeal from the decision of 

2 



18 appp:al. 

the Commissioner to the court has no reference to the notice of 
the decision given to appellant. It is from the date of the de- 
cision that the time for taking the appeal must be reckoned, and 
not from the time of sending notice of the decision to the party 
against whom it is made. ^Id. 

3. The terms of the rule must be allowed their ordinary 
meaning and import, and they plainly limit the commencement 
of the period of forty days within which an appeal can be taken 
from the date of the decision appealed from, excluding the day 
of the date. (Bemis v. Leonard, IIG ]Mass. 502, and Sheets v. 
Selden, 2 Wall. 189, cited.) */d 

4. Where it is not pretended that appellant has been sur- 
prised or in any manner prejudiced b}^ computing the time of 
taking the api)eal, as he has had ample time within which to 
appeal, and as he has thought proper to delay the appeal until 
after the time for taking it had elapsed, Held, that he has no one 
to blame but himself, and the appeal must be dismissed. */r/. 

IV. Return of Appeal Fees. 

In all cases in which additional references or reasons for re- 
jection are given prior to the actual hearing and decision of the 
appeal, the applicant is permitted to withdraw his appeal and 
to have his appeal fee returned; but Avhere the ai:»pellate tribunal 
affirmed the decision of the examiner on the record, calling 
attention to additional references, not for the purpose of giving 
ground for rejection where none existed before, but merely for 
strengthening the position taken by the exam.iner, the appeal 
fee should not be returned. (Oct. 24, 1899.) 
Greeley, A. C] Ex parte Gayv, 68 MS. Dec. 77. 

V. To THE Circuit Court of Appeals. 

1. An exception upon the sole ground that a question, 
allowed b}' the trial judge to be answered, is leading, is never 
tenable, for the ruling upon such a question is discretionary 
with the trial judge. (C. C. A., 2d Cir. Dec. 7, 1898.) 
Wallace, J.] * Ross v. Raphael Tuck & Sons Co., 91 Fed. 

Rep. 128. 

2. Whether the several observations of the trial judge, when 
giving his exposition of the meaning of a statute, were correct • 



APPLICATIONS. 19 

or not need not be considered on appeal, and if tlie ultimate 
ruling is right, it is quite immaterial whether or not it was 
reached upon a correct process of reasoning. */f/. 

3. "When all of the steps necessary to perfect an ai)peal to an 
appellate court have been properly taken, the action is within 
the control of that court, and a trial court should not engage in 
undoing or modifying the proceedings bj^ which such jurisdic- 
tion has been obtained, and a motion for leave to substitute an 
appeal bond should te addressed to that court. (C. C, E. D. 
N. Y. Jan. 28, 1899.) 

Thomas, J.] *Morrin r. Lawler, 91 Fed. Rep. 693. 

4. It is the allowance of the appeal by the trial court, and not 
the perfecting of all the steps necessary to a hearing of the 
appeal in the court above, which saves the appellant or plaintiff 
in error from the bar of the statutory period fixed for the bring- 
ing of appeals and writs of error. Neither the issuing of the 
citation nor the giving of bond is jurisdictional. (C. C. A., 6th 
Cir. Mar. 28, 1899.) 

Per Curiam.] ^Noonan v. Chester Park Athletic Club Co., 
93 Fed. Rep. 576. 

5. Where there is an issue of fact in the circuit court, and a 
jury is waived, and the cause is submitted to the court, as per- 
mitted in §§ 649 and 700 Rev. St., there is nothing to review in 
the appellate court, except (1) rulings of the court in the 
progress of the trial, if excepted to at the time and duly pre- 
sented by a bill of exceptions, and (2) when the finding is 
special, the review may extend to the determination of the 
sufficiency of the facts found to support the judgment. (C. C. 
A., 5th Cir. Apr. 11, 1899.) 

Pardee, J.] ^-Sarrazin v. W. R. Irby Cigar & Tobacco Co., 
Lim., 93 Fed. Rep. 624. 

Application s. 

I. Abandoned. 
(a) In General. 
(6) Revival of. 

II. Affidavits. To Obtain Interferences. 



20 APPLICATIONS. 

III. Amendments. 
(a) In General. 
(6) Election and Division. 

(c) After Final Rejection. 

(d) New Matter. 

(e) After Allowance under Ride 78. 
IV. Attorneys. 

(a) Powers of. 

(&) Use of Assignment Records. 
(c) Disbarred. 
V. Claims. 

(a) Dujjlicate or Redundant. 
(6) Functional or Indefinite. 

(c) Two Inventions in One Claim. 

(d) Order in Relation to Punctuation. 
VI. Complete. 

Order in Relation to. 
VII. Division of. 

(a) Classification in the Patent Office. 

(b) Practice. 

(c) Process and Ajyparatus. 

(d) Process and Product. 

(e) Different Processes. 

(/) Status of Invention in the Arts. 
VIII. Drawings. 

(a) In General. 

(b) Order in Relation to. 
IX. Examination of. 

(a) Information and Advice to Applicants. 

(b) Rejection. 

(c) Actions Other than Rejection. 
X. Fees. 

Order. 
XI. Forfeited. 

Renewal of 
XII. Model. 



APPLICATIONS. 21 

XIII. Name of Applicant. 

Order. 

XIV. Oath. 

(a) New or Reneired. 
(h) SupplemenUd. 
(c) 7/1 Foreign Countries. Order. 
XV. Pending. 

Access to. 
XVI. Petition. 

XVII. Public X7se Proceeding. 
XVIII. Reissue. 

New Matter. 
XIX. Specification. 

(a) III Genercd. 

(b) Sufficiency of Descrijition. 
XX. Suspension of Action. 

XXI. By Administrator of Deceased Inventor. 
XXII. Joint and Sole. 
I. Abandoned. 

(a) In Genercd. 

1. After a decision of the examiner-in-cliief affirming the 
decision of the primary examiner rejecting claims of an apphca- 
tion on the ground of aggregation, the apphcant requested the 
examiner to cite references referred to in a general way by the 
examiners-in-chief in their decision, which request was refused, 
and the statement made that applicant's remedy was by appeal 
to the Commissioner on the merits or petition to re-open. More 
than two years after the decision the petition was filed. Held, that 
the case did not come under Rule 66, even if the examiner 
had authority to re-open, since it does not appear that he did 
not cite the best references at his command, and that the appli- 
cation is abandoned. (Feb. 2, 1899.) 

Greeley, A. C] Ex parte jNIerrell, 66 MS. Dec. 244. 

2. Where an amendment, presented in supposed compliance 
with the decisions and recommendations on appeal, but was not 
a complete and definite compliance with such decisions and 



22 APPLICATIONS. 

recommendations, in tliat it failed to direct tlie cancellation of 
the rejected claims, though the amendment was presented in 
good faith, and such failure to cancel the claims was due to 
oversight, Held^ sufficient to save the case from abandonment, 
and provided an amendment be promptly filed directing the 
cancellation of the rejected claims, the Examiner is directed to 
enter it and re-open the case for the consideration of the previous 
amendment. (June 7, 1899.) 
Greeley, A. C] Ex -parte Herzog, 67 MS. Dec. 151. 

3. Where it was shown that an amendment had been mailed 
in ample time to reach the office before the expiration of the 
two years, but owing to the blizzard of February, 1899, the 
trains were delayed, and the amendment did not reach the city 
in time to be delivered until the day after. Held to be sufficient 
to save the case from abandonment. The fact that in other 
cases "this applicant is in the habit of taking the full statutory 
period in prosecuting his cases," thereby unnecessarily pro- 
longing the pendency of his applications, urged by the examiner 
as a reason why the rule should be enforced with more than 
usual stringency against him, is not a sufficient ground for 
making an exception unfavorable to applicant. (June 5, 1899. ) 

Greelev, a. C] Ex. parte Herzog, 67 MS. Dec. 147. 

4. On July 7, 1899, an applicant made an amendment to the 
specification, which the examiner held was not a compliance 
with the requirements of the office letter of July 9, 1898, in 
which all of the claims had been rejected and a new reference 
cited, and on July 11, 1899, held that the application was 
abandoned by failure to prosecute within one year from July 9, 
1898; Held, that since the action of July 9, 1898, was not a 
final rejection, applicant was entitled to a reconsideration either 
with or without amendment, and the amendment of July 7, 
1899, was virtually a request for a reconsideration of all matters 
not covered by the amendment, and therefore the question as to 
whether or not the amendment was a compliance with the 
requirement before made was immaterial, and it was not neces- 
sary for applicant to amend to keep the case alive. The case is 
not abandoned, and applicant is entitled to an action on the 
merits. (Aug. 17, 1899.) 

Greeley, A. C] Ex parte Carroll, 67 MS. Dec, 874, 



APPI.ICATIOXS. 23 

5. An application was filed May 18, 1899, and acted on by the 
Office July 2, 1897. The attorne}^ in the case was disbarred 
from practice Oct. 1, 1897, and a new attorney was appointed 
Nov. 13, 1897. No further action was taken in the case until 
July 24, 1899, and the examiner properly held the case to be 
abandoned. The disbarment of the attorney did not change 
the condition of the case itself in any ]-espect or the kind of 
action required, but mere]}' changed the person who would be 
permitted to take that action, and while such disbarment might 
be advanced as an excuse for part of the delay in acting on the 
case under a request to revive under rule 172, yet it could not 
be considered under a petition from the action of the examiner 
holding the case abandoned. (Oct. 24, 1899.) 

Greeley, A. C] Ex parte Larson, 68 MS. Dec. 79. 

6. On jMarch 2, 1897, the examiner rejected a series of claims 
in an application which had been filed some eight years before. 
On July 23, 1897, the applicant presented an argument in re- 
gard to the examiner's position, but did not amend the claims. 
On July 29, 1897, the examiner finally rejected the claims re- 
ferred to. On July 29, 1899, the applicant filed another argu- 
ment, which the examiner held was not such an action as the 
condition of the case required at that time, and that therefore 
the case was abandoned because of applicant's failure to take 
proper action, namely, appeal, within two years from the date 
of the last office action. Held, that the examiner's action was 
correct and that the case is abandoned. (Nov. 3, 1899. ) 
Geeeley, a. C] Ex parte Hunter, 68 MS. Dec. 111. 

7. A mistake by an examiner in rejecting claims is no valid 
excuse for an applicant's failure to take proper action within 
two years. The statutes and rules clearly indicate that an 
appeal is the proper remedy when an applicant thinks an ex- 
aminer has improperly rejected his claims, and they specifically 
provide that such appeal must ])e taken within a specified time, 
irrespective of the question whether or not the rejection was in 
fact proper. Id. 

8. If an amendment and proceedings relative thereto, as pro- 
vided in rule 68, will not save a case from abandonment, it is 
clear that a mere argument unaccompanied by an amendment 



24 APPLICATIONS. 

will not save it, and is not such action as the condition of the 
case requires. Id. 

9. The contention that an application "was prosecuted 
within the two years' limit liy the prei)aration and forwarding 
on August 22, 1899 of the amendment and argument, the same 
being deposited in the mail in proper season to have been de- 
livered in the Patent Office in one day * * *" and was there- 
fore "such action on the part of applicants" as to constitute a 
"legitimate prosecution of the case within the statutory limit," 
cannot be granted since the Office cannot recognize anything as 
an action until it is actually received. The mere preparation 
of the amendment within the time is not sufficient, since that 
does not change the condition of the case in any respect until it 
is filed. Held., therefore, that as the statutory period expired 
on August 23, 1899, and the amendment not having been re- 
ceived until August 24, 1899, the application is abandoned. 
(Nov. 10, 1899.) 

Greeley, A. C] Ex parte Hall and Hall, 68 MS. Dec. 140. 

10. By analogy to the rule prohibiting one of two joint appli- 
cants from al:)andoning an application by an instrument in 
writing without the consent of the other applicant and any 
assignees, Held., that one of two joint applicants should not be 
permitted to indirectly abandon a case by refusal to join in its 
prosecution. (Dec. 1, 1899.) 

Greeley, A. C] Ex parte Franklin and Tonnar, 68 IMS. Dec. 
235. 

11. The mere appointment of an attorney is not such an 
action as will save a case from abandonment, since it is not 
within the meaning of the rule, l)ut is merely a power to some 
other person to act. Id. 

12. The record shows that after various actions the claims 
, were rejected on references on Nov. 9, 1895. On May 5, 1896, 

applicant requested "re-examination of claim 24," Avithout re- 
ferring to other rejected claims, and on Mny 9, 1896, the exam- 
iner finally rejected claim 24 and other claims on the reasons 
and references before cited. On Apr. 4, 1898, nearly two years 
later, applicant filed an amendment canceling all the claims and 
substituting 24 new claims, but failed to make any showing or 



ArrLicATioNS. 25 

even a statement as to avIiv tlie amendment was not earlier pre- 
sented. Held, that tlie case became al)andoned on May 9, 1898. 
(Apr. 29, 1899.) 
Greeley, A. C] Ex parte Stel)l)ins, 88 0. (;. 1885. 

13. Tlie office action of Jan. 19, 1897, and those prior 
thereto, contain rejections of claims on references and a formal 
requirement of division. On Dec. 29, 1898, affidavits were 
filed under rule 75 to overcome certain of the references, and 
the examiner refused to consider the same on the ground that 
they were not completely responsive to the requirement of di- 
vision, and in support of his action cites ex parte Rappleye, 85 
0. G. 2096; and further, on Jan. 23, 1899, the examiner held 
that the case became abandoned on Jan. 13, 1899. Held, that 
the filing of the affidavits, while not completely responsive to 
every requirement, yet it was responsive to the action rejecting 
the claims, and was such as the condition of the case required, 
and therefore saved it from abandonment, since it was appar- 
ently made in good faith. (Apr. 29, 1899.) 

Greeley, A. C] £":(; pa W^^ Wright & Stebbins, 88 0. G. 1161. 

14. Action by an applicant made in good faith, which is such 
action as the condition of tlie case requires, is sufficient to save 
the case from abandonment, although it is not com})letely re- 
sponsive to every requirement made. Id. 

15. It cannot be properly held that an application has no 
standing before the Office because the inventor is dead and the. 
executor has not asserted his rights. The legal representatives 
of the deceased have the right to prosecute the application, and 
the mere fact that the}^ are not known to the Office and that 
they have not actually prosecuted the case b}' any action on 
their part cannot be considered an abandonment of the applica- 
tion until the expiration of the two years allowed by law for 
amendments. (Decker r. Loosley, 77 0. G. 3140. Refrigerat- 
ing Co. V. Featherstone, 62 0. G. 741.) (July 3, 1899.) 
DuELL, C] Handley v. Bradley, 89 O. G. 522. 

16. Although an applicant's death may be legalh' established, 
his application is a legal pending application and an interference 
cannot be dissolved upon the ground tliat bis application has 
no standing in the Office. /(/. 



26 APPLICATIONS. 

I. Abandoned. 

(6) Revival of. 

1. Where at the time of fihng the appUcation, the applicant 
had entered into a partnershijD for developing the invention and 
all his means were in said business, Avhich failed while the ap- 
plication was pending, and was sold out by the sheriff, Held^ 
that the failure to prosecute was sufficiently excused, and being 
unable to file a new application because of more than two 
years' public use and because of the granting of a foreign patent, 
the petition for revival was granted. (Mar. 23, 1899.) 
DuELL, C] Ex parte Seyfang, 66 MS. Dec. 407. 

2. Where an applicant arranged with his licensee to attend to 
the prosecution of the application, to keep applicant posted as 
to the i3rogress of the case, to confer with the attorneys and to 
direct them as to the prosecution of the application, the licensee 
occujDied the place of the applicant and the attorneys were 
powerless in the case except by express direction of the licensee, 
and if by inaction on his part or by any miscarriage of the ar- 
rangements, failure to take action in order to avoid abandon- 
ment ensued, the applicant was alone to blame, and his petition 
to revive denied. (Aug. 28, 1899.) 

Geeeley, a. C] Ex parte Noyes, 67 MS. Dec. 409. 

3. A communication had been filed within the two years 
allowed for action, but by reason of the fact that it did not 
correctly identify the ai)plication intended or any applica- 
tion on file, it was not entered and was returned. Two days 
after the two 3'ears had expired an amendment had been filed 
properly identifying the case, but was properly refused admis- 
sion on the grcnmd that the case was abandoned. The facts of 
the case, however, show that tliere was an attempt to act on the 
case within the two years, and the failure to do so was due to 
inadvertence or mistake, and the circumstances warrant a re- 
vival of the application under the provisions of rule 172. 
(Sept. 27, 1899.) 

Greeley, A. C] Ex parte Shaw, 67 MS. Dec. 497. 

4. Where the claims of an application were rejected July 20, 
1899, and an amendment filed July 20, 1899, containing an ad- 
ditional claim which was held not to be responsive to the last 



APPLICATIONS. 27 

Office action, and the case was therefore declared to he alian- 
doned; later ap})licant was notified that his projier remedy was 
by petition to revive under rule 172. Held, that the excuse for 
delay ])eing that when the case Avas taken uji for aniemhnent the 
Office letter could not be found and it was too late to procure a 
cop3', and further, a})plicant was engafjed in some ex])eriniental 
work which progressed slowly from lack of funds, the a})plica- 
tion could be revived and applicant given leave to tile a respon- 
sive amendment, to be examined on its merits. (Oct. G, 1899.) 
DuELL, C] Ex parte Penner, 68 MS. Dec. 28. 

5. The reason for .not acting sooner is set forth as follows: 
"Pecuniary reasons, however, prevented our pushing the prose- 
cution ci the case to such extent as we desired, and we have 
been unable to devote money to this work owing to prolonged 
business dejn'ession, resulting in bankruptcy proceedings, which 
are still pending." 

It is not definitel}^ stated that apj^licants were unable to take 
action in the case at any time within the two years prescribed 
by the statute, and even if the above-quoted statement is con- 
strued as meaning that they were unable to take such action 
during the lousiness depression, there is nothing to show that 
the depression extended over the entire period of two years. 
No particulars are given, and tlie mere fact that there was a 
business depression does not show that action could not have 
been taken as well within the two years as one day after that 
time had expired. (Nov. 10, 1899.) 
Greeley, A. C] Ex imrte Hall & Hall, 68 MS. Dec. 140. 

6. Where a statement is intended to convey the impression 
that a device has been in public use for more than two years 
and that as a consequence a new application cannot be filed, 
it must contain something more than a mere inference from 
vague and indefinite statements to establish the fact that hard- 
ship would be worked by refusing to revive the case. Id. 

7. Where it was shown that A and B are Joint applicants; 
that A refused to join in the prosecution of the application and 
it was impossible for B to take action until the Office recognized 
his right to do so without the acquiescence of A; that B ap- 
pointed his attorneys within the two years allowed by law, but 



28 APPLICATIONS. 

neither he nor his attorneys could take action in that time in 
view of the refusal of the Office to recognize his right to prose- 
cute the case alone, Held, that in so far as B is concerned the 
delay was unavoidaljle, and therefore the case is revived under 
rule 172. (Dec. 1, 1899.) 

Greeley, A. C] Ex jxirtc Franklin and Tonnar, 68 MS. Dec. 
235. 

II. Affidavits. 

To Obtain Intcrfcrcnre. 

1. Where two applications were pending at the same time 
and one went to patent having claims that the other did not 
contain, which claims were subsequently inserted in the appli- 
cation remaining in the Ofiice, and an interference was de- 
manded with the patent, U})on petition from the examiner 
requiring that an affidavit should be filed under rule 94 (2) be- 
fore the interference would be declared. Held, that in view of 
rule 96, which requires an examiner to notify one party of the 
claims made by the other, the patent was inadvertently allowed, 
and the applicant should not l)e prejudiced by the fact that the 
examiner overlooked or ignored rule 96. (Nov. 24, 1899.) 
DuELL, C] Ex parte Tizley, 89 0. G. 2259. 

2. Held, further, that had the examiner observed the rule he 
would not have required an affidavit under rule 94 (2), but 
would have declared the interference under section 1 of that 
rule. In such a case as this the second section of the rule does 
not apply, and the interference should be declared and the 
rights of the parties determined on the same ground as if both 
were applicants. Id. 

III. Amendments. 

(a) In General. 
1. Courts, in passing upon a patent which has been granted 
and which is not open to amendment like an application, over- 
look many formal defects, in order that the grant may not fail 
entirely, which they would not sanction if it were possil)le to 
correct them by amendment; but so long as an application is 
pending and is open to amendment the same reason for over- 
looking formal defects does not exist, and it is the recognized 



ArPIJCATIONS. 29 

duty of the Office to see to it that the statutory veciuirement tliat 
appHcants clearly and ])ro])crly set forth their inventions, l.)oth 
in the specification and claims, so that there will he no uncer- 
tainty as to what is included, is complied with. (Apr. 10, 
18990 
Greeley, A. C] Ex jxirte Averell, ()6 MS. Dec. 442. 

2. The insertion ])y amendment in an original ap})lication of 
the term " preferahly " in descrihing the structure of certain 
features should l)e permitted and cannot properly be objected to 
as involving a departure from the original disclosure. (Jan. G, 
1899.) 

Greeley, A. C] Er parte Hollis, 86 0. G. 489. 

3. So long as an application is pending before this Office the 
api^licant may be permitted to amend in the direction of broad- 
ening the statement of his invention, provided he does not 
change the invention on which that statement is l)ased, and if 
his specification and claims as filed do not adequately express 
the full breadth of his invention he may amend in such way as 
to secure full protection. /(/. 

III. AmExNTDMENT., 

(6) Election and Division. 
When the primary examiner required a division, holding that 
the claims covered two independent inventions, and applicant 
complied by erasing the claims as to one invention. Held, that 
having his election as to which invention he would claim, ap- 
plicant is estopped from recalling it, the claims remaining in 
the case now being under rejection. (Aug. 28, 1899.) 
Greeley, A. C] Ex parte Clausen, 88 0. G. 2242. 

III. Amendment. 

(c) After Final Rejection.. 
1. Where after final rejection claims are sul)niitted which not 
only change the form of expression, but also change the scope 
of the claims, they cannot properly be entered on the ground 
that they place the claims already in the case in better form for 
appeal, since they are not the same in substance but are new 
claims requiring a new examination to determine their patent- 
ability. (Nov. 11, 1899.) 
Greeley, A. C] Ex parte Waring, 68 MS. Dec. 170. 



30 APPLICATIONS. 

2. A statement that applicant thought the claims would be 
allowed as they stood upon reconsideration and that amend- 
ment was unnecessary, is not a verified showing as contem- 
plated by rule 68, and is alone clearly no good reason upon 
which to reopen a case after final rejection, since such a state- 
ment could be made in every case in which the claims are 
finally rejected, and it would thus be impossible to bring the 
prosecution of any case to a conclusion except at the will of the 
applicant. Id. 

3. Rule 68, prohibiting the entry of amendments touching 
the merits after a case is in condition for appeal except upon a 
proper showing, unless the case is in fact in condition for ap- 
peal and the consideration before the primary examiner has 
been properly closed, presupposes that the final action by the 
examiner was proper and in order ; for otherwise the alleged 
final action has no force or validity and does not in fact place 
the case in condition for appeal, notwithstanding the allegation 
to that effect in the action itself. Id. 

III. Amendment. 

(d) New matter. 

1. After the termination of public use proceedings, an amend- 
ment to the application was presented, which the examiner 
refused to enter on the ground of new matter. In the applica- 
tion the applicant stated that one of the steps in his process was 
one "commonly used," and in the amendment he stated that 
this step was not old, and was a part of his jDresent invention. 
This, under the circumstances, Avas a departure from the original 
invention, and could not be claimed in the present application, 
but only in a separate application as provided in rule 70. (July 
27, 1899.) 

Greeley, A. C] Ex parte France, 67 MS. Dec. 324. 

2. The question whether or not matter sought to be intro- 
duced into a pending application is to be refused as new matter 
is quite a different question from the question whether or not 
such matter may be introduced in a re-issue application. (Jan. 
6, 1899.) 

Greeley, A. C] Ex parte Hollis, 86 0. G. 489. 

3. When a patent has issued, the specification and claims are 



APPLICATIONS. 31 

no longer open, as a matter of course, to the same amendments 
which could have been made before issue, since the applicant 
for re-issue must show not only that the amendment is neces- 
sary to the protection of his rights, but also satisfactory reasons 
why it was not made before the issuance of the patent. Id. 

III. Amendments. 

(d) After nllowance under Ride 78. 

1. Where a claim was offered in an allowed application which 
the examiner stated to be patentable over the art, but the ad- 
mission of which he refused to recommend under Rule 78, Held, 
that this is clearly a case where the amendment should be per- 
mitted, for Rule 78 M'as amended to meet just such cases. (Oct. 
4, 1899.) 

DuELL, C] E.r parte O'Connor, 89 0. G. 1141. 

2. Held, further, that had the examiner recommended that 
the amendment be admitted without withdrawing the ease from 
issue, justice would have been done to the applicant, his 
attorney would have been saved the labor of preparing a brief, 
while the examiner and the clerical force of the Office would 
have been spared much unnecessary labor. Id. 

Order. 
Hereafter all amendments proposed to allowed applications, 
and all petitions and requests relating thereto, shall be filed with 
the docket clerk, and transmitted by him to the primary exam- 
iner for report. If the examiner shall report favorably to the 
admission of such amendment, the matter will be laid before 
the Commissioner for immediate dfetermination. If the exam- 
iner shall report unfavorably, the case will be docketed, and 
will be heard and decided by the Commissioner in regular 
course, unless good reasons shall appear for immediate action. 

IV. Attorneys. 

(a) Powers of. 
1. ^^'here a compan}' had entered into an agreement with an 
applicant, respecting the subject matter of his application, but 
there was no assignment of record, and the application even 
was not on file at the time of entering into such agreement, the 
protest of said compan}' against the revocation of the power of 



32 APPLICATIONS. 

attorney by the applicant, cannot receive favoral)le considera- 
tion. (Aug. 25, 1899.) 
Greeley, A. C] Ex parte Swan, 67 MS. Dec. 398. 

2. In order for such a protest to receive favorable considera- 
tion it must appear of record that the conii^any are assignees of 
an entire interest in the application of record as provided by 
rule 20, but in view of the showing made the company should 
be allowed access to the files of this application, and this 
through an attorney of their own selection; and also, when re- 
quested, to have copies, at usual rates of all actions, either by the 
Office or by the applicant, during the progress of the case. Id. 

3. An attorney appointed by alleged assignees will not be 
recognized in the prosecution of an application unless an assign- 
ment clearly identifies that particular application, so that there 
can be no doul^t that it is the one referred to. The Office re- 
quires certainty and not mere probability in such matters. 
(Aug. 18, 1899.) 

Greeley, A. C] Ex parte ^^'illiamson, 88 0. G. 2065. 

4. An applicant is bound by the acts of his attorney, whether 
made by the principal attorney or by his associate of record. 
(Aug. 28, 1899.) 

Greeley, A. C] Ex parte Clausen, 88 0. G. 2242. 

5. Where it appeared that an applicant had entered into an 
agreement with a company to assign all the inventions pertain- 
ing to the subject-matter of his application, but had not actually 
made such an assignment. Held, that the OfHce should not 
interfere to prevent the revocation of the power of attorney 
given l:)y applicant. {Ex parte Gallatin, 59 0. G. 1104, cited.) 
(May 29, 1899.) 

Ditell, C] In re McPhail, 89 0. G. 521. 

6. Held, further, that even if the agreement between the com- 
pany and the ap})licant should be considered as an assignment, 
the Office should not recognize the right of the company to ap- 
point an attorney to prosecute the case, as the application is 
not identified in the agreement. {Ex 'parte Chillingsworth, 80 
0. G. 1892, cited.) Id. 

7. It is the practice of the Office to refrain from settling tlie 
private rights of an applicant and an alleged assignee in such 



ArrLicATioNs. 33 

matters as that raised by this petition, as tlicy arc proj^crly 
determined by a eourt of ecjuity. Id. 

IV. Attorneys. 

(6) Use of Assignment Records. 

It has been brought to my attention that certain attorneys 
and other persons had made use of the assignment records to 
obtain the addresses of persons having apphcations pending be- 
fore this ofiice, in order to send them letters and circulars offer- 
ing to secure foreign patents or to transact other business which 
it may be presumed the attorneys of record in such aj)plicatioTid 
are competent and willing to do. Such use of the nssignment 
records is not a proper or legitimate use. These records arc not 
open to the public for any such purpose. 

It is hereby ordered that any attorney or other person who is 
known to make such use of the assignment records of tliis Ofiice 
will be denied access thereto. C. H. Duell, Commissioner. 

IV. Attorneys. 

(c) Disbarred. 
Order. 

It is hereby directed that any person who has been disbarred 
from practice before the Patent Office by order of the Commis- 
sioner be denied access to the files of the Office, either in his own 
capacity or as the representative of any other person or firm. 

86 0. G. 1. 

V. Claims. 

(a) Duplicate or Redundant. 
1. A fair amount of tautology and reiteration in the claims 
may be prudent and permissible, and the general rule that 
claims should be patentably different from each other should 
not always ])e insisted upon, particularly in cases where it is 
found difficult to express in language the invention intended to 
be covered in its full breadth. But the multiplication of claims, 
particularly where the invention is simple and readily under- 
stood, should not be permitted to be carried to such an extent 
as to obscure rather than make clear what invention or dis- 
covery is intended to be particularly pointed out and distinctly 
claimed. (Apr. 10, 1899.) 

Greeley, A. C] i'x pw^e Avcrell, 66 MS. Dec. 442. 
3 



34 APPLICATIONS. 

2. The fact that all of the claims "call for tlie same sub- 
stantive improvement," docs not prevent the api)licant from 
claiming specifically what he has claimed broadly; while the 
differences may be slight, yet the applicant is entitled to full 
protection for his invention, and the Office is not disposed to 
unnecessarily limit him in presenting claims defining it. (July 
26, 1899.) 

Geeeley, a. C] Ex parte Perlinsky, 67 MS. Dec. 314. 

3. Where one of the claims defined a method of treating ores 
without reference to the employment of any particular kind of 
furnace, and the other claim limited its employment in an ordi- 
nary blast furnace, a clear distinction in the claims is apparent 
and they are not identical in scope. (Aug. 4, 1899.) 
Greeley, A. C] Ex parte Ellershausen, 67 MS. Dec. 343. 

4. Where the examiner held that the claims of an application 
were needlessly multiplied and refused to act further in the case 
until this objection was removed, without citing references or in 
any manner indicating whether or not the claims were regarded 
as covering patentable subject-matter. Held, that these actions 
are not in accord with rule 64 and the present practice of the 
Office, which require that the examiner shall act fully and com- 
pletel}^ on a case, and set forth full_y and clearly the reasons for 
his action. (Dec. 1, 1899.) 

Geeeley, A. C] Ex jMuie Kokernot, 68 IMS. Dec. 240. 

5. The examiner has no authorit}' to determine Avhich claims 
are to be canceled where several claims are duplicates, but he 
should state specifically which claims he regards as duplicates 
and why he so regards them. The applicant is entitled to be 
informed on these questions so that he may intelligently argue 
the matter or determine for himself which of the alleged dupli- 
cate claims he will cancel. He is entitled to an action on the 
merits of the claims, under the provisions of rule 64, before the 
formal objections are insisted upon. Id. 

V. Claims. 

(b) Fanctional and Indefinite. 
1. Where claims contain no statement as to the structure of a 
device, and depend entirely for an indication of that structure 



APl'LICATIONS. 35 

upon the statement of tlie function to he jierfornied. and cover 
any and every device for efi'ectinjj; t^ucli function, and contain no 
qualifying words setting forth the function or capacity of the 
device, Held, that sucli claims are vague and indelinite, and 
m effect cover only the result produced without regard to the 
means employed. (June 23, 1800.) 
Geeeley, a. C] Ex parte IMackmore, 07 :\IS. Dec. 210. 

2. The mere fact that a claim includes functional statements 
does not make its allowance in that form impropei', provided the 
structural comhination actually set forth is patentable. Id. 

3. The statement in a claim that "one of said segments is 
provided with a recess on one side thereof," does not necessarily 
imply that other segments have no such recess, and the ohjec- 
tion that such was the implication from the statement quoted 
should not be insisted on. (Aug. 11), 1899.) 

Greeley, A. C] Ex parte Bmke, 67 MS. Dec. 385. 

4. A claim is objectionable which includes a "projection 
adapted to fit in said recess" without including the segment 
having the projection, as obviously there could be no projection 
unless there is something from which it projects. Id. 

V. Clai.ais. 

(c) Two Inventions in One Claim. 

1. It is the settled policy of the Office, founded upon good 
and substantial reasons, not to permit two separate inventions 
to be covered by one claim. To do so would lead to uncer- 
tainty in the meaning of the claim. The fact that the courts 
have sustained claims which thus cover two separate inventions, 
because of necessity in order that an invention might be 
adequately protected, is not to be taken as an approval of such 
a practice. (Apr. 10, 1899.) 

Greeley, A. C] ^a; par^e A verell, 66 MS. Dec. 442. 

2. A method is a separate invention from an apparatus, and 
both inventions should not be included in one claim. /(/. 

V. Claims. 

(cZ) Order in relation to punctuation. 
It is hereby directed that in the printing of claims of applica- 
tions for patents the punctuation of the claims as made by 



36 APPLICATIONS. 

applicants be strictly followed, and that the punctuation of the 
specification made hy applicants be not departed from, except 
to cure a manifest absurdity. 86 0, G. 350. 

VI. Complete. 

Order in relation to. 

It is hereby ordered that applications shall not be given serial 
numbers as complete applications, and forwarded to the exam- 
ining divisions for examination, (1) when the petition has not 
been signed by the inventor ; (2) when the specification and 
claims have not been signed by the inventor and the signature 
attested by two witnesses (Sec. 4888, Rev. Stats.); (3) when 
the drawing has not been signed by the inventor or his attorney 
in fact, and the signature attested by two witnesses ; (Sec. 
4889, Rev. Stats.,) and (4) Avhen the oath to the application 
does not fill the recpiirements of Sections 4887 and 4892, Revised 
Statutes. 

The requirements of Section 4896, Revised Statutes, respect- 
ing the right of executor or administrator to make application 
for a patent for the invention of a deceased person must also be 
observed before the application will be considered as complete 
and forwarded for examination. The legal requirements in 
cases where the application is made by a foreign administrator 
are stated in ex parte Ransome (C. D. 1870, 143). 

Under existing law no right is given to the guardian of an in- 
sane person to make an application for a patent for the inven- 
tion of said insane person, and such application will not be 
received for examination.* 

This order, so far as applicable, relates to applications for the 
registration of trade-marks, labels and prints, which must in all 
respects comply with the requirements of the statutes. 

86 0. G. 185. 

VII. Division of. 

(a) Classification in the Patent Office. 

1 . The requirement of the examiner that the different parts 

of a dental chair, consisting of a hydraulic lifting mechanism, 

a head-rest, a back-rest, and a foot-rest, should be made the 

subject of separate applications, sustained as to the lifting 

* See " Amendment to Patent Law in Regard to Insane Persons," p. 4, supra. 



APPLICATIONS. 37 

mechanism and head-rest, but reversed as to the back-rest and 

foot-rest. (Mar. 7, 1899.) 

DuELL, C] £!r par^e Wilkerson, 87 O. G. 513. 

2. Although foot-rests and adjustable backs of a dental chair 
are separately classified in the Office, yet from the showing 
made by applicant the claims for these two inventions may be 
permitted to remain in the application, as it does not appear 
that they form the subject of separate invention or that other 
foot-rests or back-rests may be substituted for those made for 
the particular chair shown. Id. 

3. The hydraulic means for raising and lowering the chair is 
a mere improvement on old devices and does not in any manner 
modify the operation of the devices covered by the other claims, 
and therefore should l)e made the subject of sej^arate invention. 

4. The head-rest is a mere improvement and is not especially 
adapted for the particular chair shown, and other head-rests 
may be substituted for this one, and as it is separately classified 
in the Office classification from other parts of a dental chair and 
has been made the subject of separate invention, it should be 
put in an application separate from the other parts of the chair. 

Id. 

5. Where devices are independent of each other and do not 
mutually contribute to i)roduce a single result and the action of 
one does not in any manner modify or affect the action of the 
other, they should not be permitted to be covered by one appli- 
cation. (E.r par^e Williams, 83 0. G. 1346, cited.) Id. 

6. Although it has been the practice of the Office to allow all 
parts of a dental chair to be claimed in one application should 
applicant so elect, the time has come, owing to the increased 
number of patents in the Office and the extension of the field of 
search, when this practice should be discontinued. Id. 

7. When an application shows, describes and claims a device 
which in its entirety presents subjects-matter which are classified 
in different divisions of the Office, Held, that division should 
be required and separate applications presented, each of which 
should include only claini'^ to devices which are classified in a 
single division. (July 27, 1899.) 

Greeley, A. C] ^r par^e Rouse, 88 0. G. 2242. 



38 APPLICATIONS. 

VII. Division of. 
(6) Practice. 

1. Where the examiner in requiring division had made a 
cursory examination, and given the apphcant the result of his 
examination, Held, that this is all the practice of the Office 
requires. (May 16, 1899.) 

DuELL, C] Xr par^e Patrick. 67 MS. Dec. 58. 

2. Where an application is held to cover two distinct inven- 
tions, but has claims on alleged coin1)inations of those inven- 
tions which are held to be mere aggregations. Held, that division 
should not be insisted upon until the question of aggregation is 
determined. (Aug. 24, 1899.) 

Greeley, A. C] Ex parte Feucht, 88 0. G. 2066. 

3. Amended Rule 41 applies to applications filed prior to the 
promulgation of the rule as well as to those filed subsequently 
thereto. (Oct. 10, 1899.) 

DuELL, C] Ex parte Farquhar, et al, 89 0. G. 706. 

4. It is a well-settled principle that enactments which are re- 
medial in their nature and which impair no vested rights or the 
obligations of a contract are retroactive. Id. 

5. It has been the practice of the Office Avhenever amend- 
ments to the rules have been made to apply the amended rules, 
so far as they w^ere applicable, to all pending cases. {Ex parte 
Macmaster, 80 0. G. 1475. ) Id. 

6. The Rules of Practice of this Office themselves are authority 
for applying amended Rule 41 to applications filed prior to its 
promulgation. Rule 42 provides that it is within the discretion 
of tlie primar}^ examiner to require division at any time before 
final action on the case. Under this rule it matters not whether 
the claims have been considered on the merits before requiring 
division. This requirement may be mode at any time during 
the examination of the case. Id. 

7. An applicant Avho has had his claims considered on the 
merits before the requirement of division has been favored by 
the Office to the extent that he has had an action on the merits 
on all of his claims instead of on only one set thereof, as would 
have been the case had division been made before such action 
was given. Id. 



ArPLICATIONS. 39 

VII. Division of. 

(c) Process ami Apparatus. 

1. Process and a})paratus are sejjaratc and independent in- 
ventions, and claims covering both should not lie joined in the 
same apphcation. (July 11, 1899.) 

DuELL, C] Ex parte Boucher, 88 0. G. 545. 

2. The argument that claims for the process and apparatus 
should be [)ermitted to be joined in the same application in the 
interest of inventors to save them from the expense of iiling two 
applications is of little force in view of the fact that the statutory 
charge. for the examination of an application is reasonable, and 
it Avould be unjust to the Government, to the public at large, 
and to other inventors to permit one of their number to present 
several inventions for examination under a single fee and receive 
more of the time of the examiner than he had jiaid for. (Ex 
parte Yale, C. D. 1869, 110, cited.) Id. 

3. The argument that claims for process and for api)aratus 
should be permitted to be joined in the same application be- 
cause the courts have not declared patents invalid as covering 
more than one invention does not rest on any hrni foundation, 
and the answer to it is that while there are numerous cases in 
which it has been held that a patent once granted is to be liber- 
ally construed, and that it is to be presumed that pul)lic officers 
do their duty, that the court will not inquire into slight defects 
or mere informalities in the grant of Letters Patent where there 
is a meritorious invention, yet it would be a grave error to found 
upon such decisions a rule of action for the Commissioner, for it 
by no means follows because a patent has been sustained not- 
Avitlistanding certain informalities in the issue, that every suc- 
ceeding patent is to exhibit the same informalities. (Ex parte 
Yale, C. D. 1869, 110, cited.) Id. 

4. Process and apparatus should not be joined in the same 
application because they are examinable in the same division. 
The classification of inventions is necessarily subject to frecjuent 
changes through the advance in the arts, requiring the organiza- 
tion of new divisions and the establishment of new classes and 
sub-classes. It naturally follows that a decision based upon this 
ground, while api)lying at the time when it was rendered to the 



40 APPLICATIONS. 

case in point, might not apply to an identically similar case 
thereafter. Id. 

5. While it may be that a perfect examination as to the nov- 
elty of an apparatus requires the same labor on the part of the 
examiner that would be required if process and apparatus were 
both claimed in the same application, yet this cannot always be 
so, and even though one examination will answer for both pro- 
cess and apparatus claims, yet that affords no good reason for 
permitting two inventions to be claimed in one application. An 
examination system to be of value must be a perfect one, and 
perfection will be more readily attained by the requirement 
that separate applications be filed for a process and an appar- 
atus. Id. 

6. The prior decisions on the question of devision between 
process and apparatus reviewed and Held, that the practice of the 
Office on this question would be less liable to frequent change if 
a rule clearly setting forth the line of action to be followed were 
promulgated, and change in rule 41 indicated. Id. 

VII. Division of. 

(fl) Process and Product. 
Where the examiner required division between a set of claims 
covering })rocesses of making alloys, and a claim covering an 
alloy which upon examination was found to be the product of 
the process of one of the set of claims, and furthermore, both 
process and product are examinable in the same division. Held, 
that the claims should not be separated. (May 16, 1899.) 
DuELL, C] Ex parte Patrick, 67 MS. Dec. 58. 

VII. Division of. 

(e) Different Processes. 

1. Where in one claim a step in a process covered by another 
claim is omitted without changing the order in which the other 
steps in the process are performed. Held that the claims do not 
cover such different processes that it is necessary to put them in 
separate applications. (May 1, 1899.) 

Greeley, A. C] Ex parte Oxnard and Baur, 88 0. G. 1526. 

2. An applicant may properly in one case have claims cover- 
ing the principal or essential steps of a process and other claims 



APPLICATIONS. 41 

including those steps, together with otlicr specific steps which 
arc not ahsolutely necessary to the performance of the process, 
but which add to its efficiency or make its operation more per- 
fect. Id. 

VII. Division of. 

(/) Status of Invention in the Arts. 

1. In an apphcation for a patent on a voting machine, division 
was properly re<iuired between the registering mechanism and 
the voting mechanism, inasmuch as registering mechanism has 
acquired a definite place in art and manufacturing, and can be 
used in other relations than with the voting mechanism shown 
in the case. (Jan. 7, 1899.) 

Greeley, A. C] E'x j)ar/e Tuttle, 66 MS. Dec. 145. 

2. Division was properly required between the ai)paratus for 
bending metallic printing forms to approximately the shape of 
the printing cylinder, and the apparatus for further bending 
them info exact form and ascertaining the relation the engraved 
surface should have to the impression surface, so that by 
"underlaying" at the proper places the hghts and shades of 
the printed picture may be properly brought out. The first 
belongs to the art of metal-bending, and the second to the art of 
printing. (Aug. 29, 1898.) 

Greeley, A. C] Ex 2xirte Osborne, 86 O. G. 492. 

VIII. Drawings. 

(a) In General. 

1. A party may upon showing a single s])ecific structure 
present claims of such breadth as to include n}any different 
modifications of it, but that does not give him the right subse- 
quently to show every modification he chooses merely because 
his claim is l)road enough to apply to it. (Feb. 21, 1899.) 
Greeley, A. C] Ex parte Sattley, 66 MS. Dec. 345. 

2. Where the subject-matter of two figures of a drawing was 
not covered l)y any claim, l)Ut such figures were used to illus- 
trate modified forms of certain adjuncts of the device covered by 
the claims, so as to show that applicant was not limited to the 
use of any specific form of such adjuncts, they were allowed to 
remain in the case, but applicant was required to amend the 



42 APPLICATIONS. 

descriiition to set forth that these figures were used for that pur- 
pose only. (May 19, 1899.) 
DuELL, C] Exjxirte Lilly, 67 MS. Dec. 80. 

3. After applicant had complied with the requirement of 
division and properl}^ limited his claims, the examiner required 
the cancellation of certain figures of the drawings, for the reason 
that they were unnecessary to the disclosure of the invention 
claimed. Held, that such figures should ordinarily be canceled, 
but inasmuch as they were on the same sheet with another 
figure which it was necessary to retain, and which could not be 
transferred to another sheet, and such cancellation would not 
reduce the number of sheets, and, further, some such means as 
illustrated in such figures were necessary to the operation of the 
devices claimed, they should be allowed to remain, together with 
the short description thereof which appeared in the specification. 
(Aug. 19, 1899.) 

Greeley, A. C] Ex jmrte Person, 67 MS. Dec. 382. - 

4. Where it seemed obvious that the device would not operate 
as described in the original specification so long as a certain 
aperture shown in the drawings was not closed, and that this 
would be recognized by any mechanic upon examining the de- 
vice, it seemed clear that such aperture was shown by the drafts- 
man through clerical error, inasmuch as the description of the 
function of such aperture Avas inconsistent with the descrij^tion 
of the operation of the device, Held, therefore, that the failure 
to show the aperture closed and the insertion of the description 
of its function were due to inadvertence and constituted such 
clerical errors as niay be corrected by amendment, and such 
amendment would not involve the introduction of new matter 
into the apphcation. (Sept. 7, 1899.) 

Greeley, A. C] Ex parte Chace, 67 MS. Dec. 427. 

5. Rule 49, as well as the statute, provides that when the 
nature of the case admits of a drawing the applicant shall fur- 
nish one; therefore where the results of the successive steps of a 
process could be represented in a drawing, such drawing was 
properly required. (Sept. 8, 1899.) 

Greeley, A. C] Ex parte Daniel, 67 MS. Dec. 432. 

6. Where a mistake was made by the Office in issuing a 



APPLICATIONS. 43 

patent, and upon request of the patentee it was decided to re- 
issue the patent under rule 170 at the exjjense of the Office. 
Held that a new drawing should he prepared, notwithstanding 
some person whose authority does not appear, had endorsed 
upon the reissue file "Old drg. to he used" and the examiner 
had not required a new drawing. (Nov. G, 1S99. ) 
Greeley, A. C] Ex parte Boutell, G8 MS. Dec. 87. 

7. Where a drawing, although informal, was admitted for the 
purpose of examination. Held that the requirement tliat the ob- 
jections thereto be removed before an appeal is taken, was im- 
proper and should not have been insisted upon. Rule 54 ])ro- 
vides for the admission of such a drawing, and means that it 
need not be corrected until the case is ready for issue. Rule 
134 was not intended to and does not in fact nullify this ])ro- 
vision. (Dec. 7, 1899.) 

Greeley, A. C] Ex parte Cathrae, 68 MS. Dec. 259. 

8. The drawing should show the entire thing described in the 
specification as constituting the invention and not merely a sec- 
tion thereof. (Nov. 25, 1898.) 

Greeley, A. C] Ex parte Le Febvre, 86 0. G. 995. 

VIII. Drawings. 

(1)) Order in Relation to Dravjings and Blue-Prints. 

Erasures and alterations in drawings forming part of applica- 
tions will not be permitted, except as herein provided. 

No alteration will be permitted in a drawing forming any part 
of an application by an applicant, or any person acting for him, 
except where a blue-print or other photographic copy has been 
filed in the case. When, however, the examiner makes a re- 
quirement for a change in the original drawing and no blue- 
print or other copy has been furnished by the applicant, tlie 
Office will make such copy without charge, and thereupon the 
required alteration may be made by the applicant, under the 
direction of the examiner, subject to liis approval; or, u])on 
request, it will be made by the Office at the exjiense of the 
applicant. 

Requirements of the Office for alterations in original di'awings 
will be made in writing, and the aiiplicant's response must also 
be in writing. The copy of the drawing, the requirement to 



44 APPLICATIONS. 

alter, and the applicant's response will form part of the record 
in the case. 

Alterations in drawings cannot be made in the Attorneys' 
Room, except upon written permission of the examiner in 
charge of the application. 

Action on the merits by the Office will not l)e suspended 
pending the change of a drawing, if the invention claimed may 
be understood by the examiner. 

Applicants are requested to furnish with their originals a 
blue-print or other photographic copy of all drawings forming 
part of an application, and when this is done such copy shall 
be made a jDermanent part of the record in the case; or, upon 
the request of applicants, the Office will make blue-prints for 
five cents a sheet. 

In appeal cases and upon the declaration of an interference, a 
blue-print or other copy of the drawings will be sent forward 
with the files, the examiner retaining the original drawing until 
the day of hearing. 

Applicants may inspect their drawings in the Attorneys' 
Room before blue-prints are filed. 

Violation of the requirements and provisions of this order 
will be considered ground for disbarment. 

Orders No. 986, of January 25, 1S94, and No. 1,134, of June 
5, 1897, are hereby revoked. 86 0. G. 1. 

IX. Examination of. 

(a) Information and Advice to Ajiplkauta. 

1. Where the Office letter stated " It is thought that the case 
could be materially aljridged with a great gain in clearness and 
without unduly restricting the scope of tlie invention," Held 
the sentence was too general in its character, and did not give 
the applicant such full information as would enable him to 
overcome the examiner's objections. Applicant is entitled to 
have pointed out to him wherein " the case could be materially 
abridged" so as to make it more clear, and such information 
should be given in a supplementary letter. (Sept. 8, 1899.) 

Greeley, A. C] Ex parte Daniel, 67 MS. Dec. 1899. 

2. Where a petition contained numerous requests for general 
instructions to the examiner as to his duty in acting upon ap- 



APPLICATIONS. 45 

plications, and did not ask for specific relief from any particular 
action taken, Held that general or moot (piestions of tliis kind 
cannot be properly brought up on ])etition and will not l)e ruled 
upon. If an applicant is dissatisfied with any specific action 
by an examiner he may have that action reviewed on petition, 
but the Office will not answer hypothetical questions merely 
because they are presented by an apjilicant. (Sept. 6, 18i)9. ) 
Geeeley, x\. C] Ex parte Laperle & Boulard, 67 MS. Dec. 429. 

3. There is no authority for the statement by the examiner 
that " he will not again consider the case until duplicate claims 
are cancelled and each claim is made distinguishable from every 
other," since it is contrary to the settled practice of the Office to 
refuse to act upon a case of this kind. The mere presence of 
claims which the examiner regards as equivalents is no good 
reason for refusing to act on the case, particularly when the 
applicant has never been informed as to which claims were 
regarded as equivalents. Id. 

4. In such a case each claim should be treated fully as to its 
merits and the applicant should be clearly and specifically in- 
formed as to which claims are regarded as duplicates, and the 
reasons upon which the action is based should be fully and 
clearly set forth. Id. 

5. Where an examiner failed to state specifically that such 
claims as were not rejected were allowable, Held, that that is 
the natural and obvious inference from his action, since it is a 
well recognized practice with some examiners to mention only 
the claims that are rejected, and omit all reference to those that 
are regarded as allowable. (Nov. 3, 1899.) 

Greeley, A. C.] Ex jmrte Hunter, 68 MS. Dec. 111. 

6. It would be better practice for the examiner to mention 
each claim and state whether or not it is allowable, but in view 
of the recognized custom, his failure to do so in a particular case 
is not such irregularity as to render his action of no effect. Id. 

7. Where an applicant was, after the first action in the case, 
aware of the references relied on by the examiner, but not aware 
of the reasons why he regarded those references as anticipations 
until apprised of them in the letter giving a final rejection. 
Held, that the final action was premature, as the applicant had 



46 APPLICATIONS. 

not been furnished witli the full inforniation which Avould 
enal^le him to intelligently amend the claims so as to meet the 
examiner's views and avoid the references. (Nov. 11, 1899.) 
Greeley, A. C] Ex parte ^^'aring, 68 MS. Dee. 170. 

8. An a})plicant is entitled to fully understand the examiner's 
position while he has the right of ajnendment, and not merely 
after the prosecution before the examiner is closed. The right 
of amendment is more important than the right of appeal, and 
it is essential that the applicant and the examiner understand 
each other's position before the right of amendment is lost. Id. 

9. Where the examiner rejected claims on references showing 
different features of the matter claimed, and gave little explana- 
tion of his reasons for rejection, and it was apparent from the 
correspondence that the applicant did not understand the exam- 
iner's position in rejecting the claim. Held, that the examiner's 
action was not as full as should have been. (Ex ixirte Barnes, 
80 0. G. 2038, cited.) (Mar. 15, 1899.) 

Gkeeley, a. C. ) Exparle Perkins, 88 0. G. 945. 

IX. Examination of. 
(h) Rejection. 

1. Where in giving a final rejection the examiner cited cer- 
tain decisions in support of his position. Held that this was not 
a new reason for rejection and therefore did not reopen the case 
for further amendment. The tribunals of the Office, like the 
courts, take judicial notice of decisions which have been ren- 
dered, and may properly cite them at any and all stages in the 
prosecution of an application. (Feb. 16, 1899.) 

Gkeeley, A. C] Ex parte Telfer, 66 MS. Dec. 286. 

2. It is well settled that claims in an application may properly 
under certain circumstances be rejected on a patent granted to 
the same party on a copending application. (Ex parte Mullen & 
Mullen, 50 0. G. 837.) (Nov. 8, 1898.) 

Greeley, A. C.] Ex parte Wellman, 86 0. G. 1986. 

8. Since mere disclosure in a patent of matter properly divis- 
ible from the invention claimed is no bar to the allowance of 
claims to that matter if presented in a copending application, 
the examiner should, if he insists upon a rejection of the claims, 



APPLICATIONS. 47 

point out more fully the reasons therefor. Rule 92 does not 
prevent tlie allowance of claims coming under the second class 
of cases mentioned in ex parte Mullen & iMullen. Id. 

4. Claims for an alleged eoml)inati()n may properly be rejected 
on references none of which shows the coml^ination, hut which 
show the elements to be old, if it is clear that by assembling the 
elements in one structure no new effect different from the sum 
of the effects of the separate elements is secured. (June 1, 
1899.) 

Greeley, A. C] Ex parte Perkins, <S8 0. G. 548. 

5. The applicant's request for reconsideration of one claim 
while other claims were under rejection, was properly construed 
as applying to the entire case, for otherwise it would not be a 
proper request and could not be granted. (Apr, 29, 1899.) 
Greeley, A. C] Ex parte i^tehh'ms, 88 0. G. 1335. 

6. If applicants were permitted to prosecute each claim separ- 
ately to a conclusion before taking action in reference to other 
claims in the same case, it would be practically impossible for 
the Office to bring the prosecution of any case to a conclusion. 
Such piecemeal action has not been and cannot be permitted. 

Id. 

7. Where the examiner in his first action rejected claim 1 on 
a British patent and claim 3 on a United States patent, and in 
his second action gave reasons for refusing the claims which did 
not appear in the first action, viz., that there is no invention in 
making an ordinary' diaphragm with a serrated edge and that 
the combination recited in claim 3 lacks invention, in view of 
the British patent, taken in connection with the United States 
patent. Held that new reasons for refusing the claim having been 
given the application was not under final rejection, under the 
rules and practice of the Office, and the amendment presented 
after the second action on the case should be admitted. (Oct. 
2, 1899.) 

DuELL, C] Exjxirfe Valiquet, 8<) 0. G. 354. 

IX. Examination of. 

(c) Actions Other than Rejection. 
1. A model is only necessary as an alternative of failure to 
properly describe an invention, and this defect can often l)e 



48 APPLICATIONS. 

removed by compliance with objections definitely stated by the 
examiner. (Nov. 25, 1898.) 

Greeley, A. C] Ex jxirte Isenhart, 87 0. G. 179. 

2. An examiner in making the objection of inoperativeness 
should point out the particulars in respect to which the device 
objected to is inoperative, if there l)e any such. Id. 

X. Fees. 

Order. 

Department of the Interior, 

United States Patent Office, 

Washington, D. C, November 23, 1898. 
The attention of all those who purchase certificates of deposit 
to be sent to this Office is called to the following regulation, 
which was made by the United States Treasury Department 
and is still in force: 

Hereafter all certificates of deposit issued for patent fees must 
state on their face the name and address of the person on whose 
behalf the deposit is made, (the name of the attorney not being 
sufficient,) and the particular invention, improvement, or object 
to which their amounts are to be applied. 

Unless this information accompanies each deposit of this kind 
the deposit should be refused. 

C. H. DUELL, Commissioner. 
86 0. G. 1327. 

XL Forfeited. 

Reneival of. 
Where an application had been once forfeited and renewed, 
and became forfeited a second time for non-payment of the 
final fee within the prescribed six months, and more than tw6 
years had elapsed since the date of allowance in the first in- 
stance. Held, that no renewal could now be allowed or permitted. 
The only recourse now open to applicant is the filing of an 
entirely new and separate application, provided, of course, that 
his invention has not been patented or described in any printed 
publication in this or any foreign country for more than two 
3'ears prior to his application, and not in public use or on sale 
in this country for such length of time. (Aug. 17, 1899.) 
Greeley, A. C] Ex parte Kellow, 67 MS. Dec. 377. 



APPLICATIONS. 49 

XII. :Model. 

It is within the examiner's discretion to permit a drawing of 
a model or structure or a copy of an ori<rinal (h-awing to be 
filed; but whenever required the original model, structure, or 
drawing should be produced for the inspection of the Ofllice, 
with leave to the applicant to withdraw the same after it has 
served the purpose for which it was produced. In case of 
withdrawal a drawing of the original should be filed. (Oct. 
27, 1899.) 
DuELL, C] Ex parte Johnson, 89 0. G. 1841. 

XIII. Names of Applicants. 

Order. 
When the full first name of the applicant does not appear 
either in his signature or in the preamble to the specification, 
the examiner will, in his first official letter, require an amend- 
ment supplying the omission, and he will not pass the applica- 
tion to issue until the omission has been supplied, unless an 
affidavit shall have been filed setting forth that the full first 
name of the applicant is the one originally given by him. 
86 0. G. 350. 

XIV. Oath. 

(a) New or Renewed. 

1. Where aj^plicant filed a new oath in compliance with the 
requirement of the examiner and said oath referred to "the 
annexed specification" and no such specification accompanied 
the oath, but the oath was intended to apply to an application 
already on file, Held that the oath did not properly identify the 
application by serial number and date of filing and that a new 
oath should be furnished proj^erly identifying the application 
to which it is to be applied. (June 3, 1899.) 

DuELL, C] Ex parte Heusch, 88 0. G. 1703. 

2. As rules 10 and 32 of the Rules of Practice require that a 
letter concerning an application must properly identify the ap- 
plication, and that when all parts of an apj)lication are not filed 
together a letter should accompany each part accurately and 
clearly connecting it with the other parts of the application, 

4 



50 APPLICATIONS. 

Held that tliese rules apply to an oath as well as to any other 
papers relating to an application. Id. 

XIV. Oath. 

(6) Sujyplemental. 

1. ^^'hel•e an examiner held that certain claims in an amend- 
ment covered new matter and required a supplemental oath, 
and stated that when such oath had been supplied the claims 
Avould be rejected as covering new matter, Held, that if these 
claims introduced new matter into the case they could not be 
supported by any oath, but should be rejected on the ground of 
new matter without requiring a new oath, so that an oppor- 
tunity could be afforded for appeal to the various tribunals on 
the ground of rejection. (Mar. 25, 1899.) 

DuELL, C] Ex parte Marsh, 66 MS. Dec. 416. 

2. Where the question as to whether or not a claim was for 
matter substantially embraced in the statement of invention or 
claim originally presented is not free from doubt, under the 
particular circumstances of the case, the doubt should be re- 
solved in favor of the petitioner. (Oct. 20, 1899.) 

DuELL, C] Ex parte Marsh, 68 MS. Dec. 67. 

3. When a reputable attorney makes the statement "that if 
it were possible to obtain a supplemental oath from the appli- 
cant, such a course would have been pursued; but the appli- 
cant has refused to make such affidavit as well as to execute an 
application which was intended to be filed in lieu of the present 
application," the Office should accept that statement and not 
allow itself to be made a party to a "hold-up." Id. 

XIV. Oath. 

(c) In Foreign Countries. Order. 
It is hereby directed that oaths accompanying applications 
for patents made within the following-named foreign countries 
must be taken before a minister, charg^ d'affaires, consul, or 
commercial agent holding commission under the Government of 
the United States: 



Austria-Hungary. 
Argentine Republic. 
Belgium. 



Brazil. 
Costa Rica. 
Denmark. 



APPLICATIONS. 51 

Haiti. Portugal. . 

Honduras. Russia. 

Italy. San Salvador. 

Mexico. Servia. 

Netherlands. Sweden. 

Norway. Switzerland. 
Peru. 
Applications filed in this Office presenting oatlis not executed 

in compliance with this order will be treated as incomplete. 

XV. Pp:nding. 

Access to. 

Order No. 1,271. 
Department of the Interior, 

United States Patent Office, 

Washington^ D. G, March 27, 1899. 
Hereafter no person except the applicant, the assignee whose 
assignment is of record, or the attorney of record will be per- 
mitted to have access to the file of any application, except as 
provided for under the interference rules, unless written author- 
ity from the applicant, assignee, or attorney, identifying the 
application to be inspected, is filed in the case to become a part 
of the record thereof, or upon the written order of the Conmiis- 
sioner, which will also become a part of the record of the case. 

C. H. DUELL, Commissioner. 

XVI. Petition. 

It is possible that the name of the town and county, wherein 
an applicant resides, given in the petition, is also his complete 
postoffice address; but under the rule (33) that fact, if it is 
true, must appear positively from the petition itself and not 
left to conjecture. (Dec. 7, 1899.) 
Greeley, A. C] Ex jmrte Caihrne, 68 MS. Dec. 259. 

XVII. Public Use Proceedings. 

1. Rule 130 provides that amendments to the specification 
will not be received during the pendencj' of an interference ex- 
cept as provided in rules 106, 107 and 109; this rule is equally 
applicable to a proceeding to determine the question of public 
use. (July 27, 1899.) 
Greeley, A. C] Ex-jxirte France, 67 MS. Dec. 324. 



52 APPLICATIONS. 

2. Applicant's claims were finally rejected as a result of a 
public use proceeding, and his right of ai)peal existed and 
therefore the question of public use had not been finally deter- 
mined. No amendment of the application involved in such a 
proceeding is legitimate or proper until such question is finally 
disposed of, and applicant should await such final disposition 
before attempting to amend. Id. 

3. A protest was filed against the grant of a patent to D. on 
the ground that the invention had been in public use for more 
than two years prior to the filing of D.'s application. M., who 
claimed the same invention, was put in interference with D., 
and his assignee was permitted to take part in the interference 
proceeding. A copy of M.'s application was obtained by pro- 
testants against the wish of M. Held, that it is not necessary 
for the conduct of public use proceedings that the protestants 
should have a copy of M.'s application, and the copy obtained 
by them should be returned to the Office. (Oct. 9, 1899.) 
DuELL, C] //(, re Nat'l Phonograph Co., 89 0. G. 1669. 

4. Held, further, that as protestants have filed affidavits 
alleging that certain machines had been made and were in pub- 
lic use, it is incumbent upon them to prove their allegations by 
proper evidence. When this evidence is before the Office, it 
will judge whether the machines were in public use at the time 
alleged, and whether the evidence is sufficient to ])revent the 
grant of a patent. Id. 

Held, further, that as M.'s assignee has been made a party to 
the public use proceeding at its request and has the right to 
cross-examine the witnesses produced on behalf of protestants, 
the evidence may be used against M. in the consideration of his 
application on the question of patentability. Id. 

XVIII. Reissue. 

JVew Matter. 
It is well recognized in the practice of the Office and in the 
courts that the question whether or not matter sought to be 
introduced into a pending application is to be refused as new 
matter is quite a different question from the question whether 
or not such matter may be introduced in a reissue application. 
So long as an application is pending before this Office the 



APPLICATIONS. 53 

applicant may be permitted to amend in tlie direction of l)road- 
ening the statement of his invention, i)rovided he does not 
change the invention on which that statement is based. In 
other Avords, if liis specification and claims as originally filed do 
not adequately express the full breadth of the invention which 
he has disclosed, he may amend in such a Avay as to secure full 
protection. When a patent has issued, the specification and 
claims are no longer o])en, as a matter of course, to the same 
amendments which could have been made before issue. The 
burden of proof is then upon tlie patentee who seeks to amend 
by an application for reissue to show not only that the amend- 
ment desired is necessary to the protection of his rights, but to 
show also satisfactory reasons why the amendment was not 
made before issuance of the patent. This is because other 
questions are to be decided and other surrounding circumstances 
are to be considered in passing upon an amendnient in a reissue 
application. (.Jan. 6, 1891).) 
Geeeley, a. C] Ex imrte Holhs, 86 0. G. 489. 

XIX. Specification. 

(a) //( General. 
It is the policy of the Office to permit an applicant in de- 
scribing his invention to select his own terms of reference so 
long as their use does not lead to ambiguity. (Jan. 6, 1899.) 
Geeeley, A. C] Ex parte Mollis, 86 0. G. 489. 

XIX. Specification. 

(h) Sufficiency of Description. 
1. Where, in describing and illustrating an electrical inven- 
tion, the specification was in general terms, and conventional 
forms were used such as are employed to a great extent in illus- 
trating electrical inventions. Held that for these reasons the 
application does not disclose an inoperative device, though 
lacking in mechanical detail. To hold that an application is 
insufficient because of the use of such forms and general de- 
scription, would upset the practice of the Office and necessitate 
the rejection of a great number of applications now on file and 
accepted as reduction to practice of the invention disclosed, 
(Mar. 8, 1899.) 

DuELL, C] Brown v, Hoopes, 66 IMS. Dec. 875. 



54 APPLICATIONS. 

2. It is the policy of the Office to permit an appHcant to 
select his own terms of reference in describing his invention so 
long as their use does not lead to confusion and uncertainty. 
(Apr. 10, 1899.) 

Greeley, A. C] Ex parte AveveW, 66 MS. Dec. 442. 

3. Where an application bore evidence of having been drawn 
abroad without that realization of the requirements of this Office 
which is reasonably expected of attorneys practicing before this 
Office, and it is obvious that it needed a very full and careful 
revision, it is proper to grant the rec^uest of the applicant that 
the examiner cite such references as are at his immediate com- 
mand to aid applicant to properly restrict the application, as a 
compliance with the request might materially facilitate the 
progress of the application. (Aug. 19, 1899. ) 

Greeley, A. C] Ex parte Theisen, 67 MS. Dec. 388. 

4. Section 4888 of the Revised Statutes and Rule 34 require 
that specifications state the manner of using the invention ; but 
in the present case this has been done within the meaning of the 
statute and the rule. The purpose of this requirement is that 
upon reading the patent others will clearly understand the in- 
vention, and the manner of using it. The rod-coupling shown 
in this case is obviously adapted for use wherever it is desired to 
connect two sections of a rod, and neither the wording nor the 
spirit of the rule requires that the use to which the rod is to be 
put should be stated. The purpose and use of the coupling pin 
are the same in whatever apparatus and for whatever purposes 
the rod is used. (Aug. 28, 1899.) 

Greeley, A. C] Xi- parte Hinkle and Ashmore, 88 0. G. 2410. 

XX. Suspension of Action on. 

1. Where the examiner suspended action on an application 
until the termination of an interference in which an earlier case 
is involved, of which tlie one under consideration is a division, 
and which the examiner states contains the same claims as 
the earlier application, Held^ that proceedings should not be 
suspended and the application indefinitely delayed, but the 
applicant should at the present time be permitted to contest the 



APPLICATIONS. 55 

matter by siicli action as tlie condition of the case requires. 

(May 3, 1899. ) 

Greeley, A. C] Ex parte Bullier, 88 0. G. 1161. 

2. If the claims in the i)resent application are the same as the 
issue of the interference, or cover the same invention as the 
application of the other party to the interference, it is clear t])at 
the applicant's right to the claims cannot l)c determined until 
the decision on the question of priority, but the possibility that 
the examiner may be mistaken in holding that the claims in this 
case are not patentable over the invention disclosed by the other 
party to the interference must be contemplated just as the rules 
providing for appeals contemplate the possibility of mistake in 
rejecting claims on references, and the applicant should be per- 
mitted to contest the question at the present time instead of 
■waiting until the interference is decided. /(/. 

3. The question to be determined is of the same kind as if the 
decision had been rendered against the applicant in the inter- 
ference, and it would be unjust to him to cause him the delay 
when the matter can be settled at the present time. Id. 

4. It is contrary to the well-settled policy of the Office to sus- 
pend action on an application unless such suspension is abso- 
lutely necessary to determine the right of an applicant to a 
patent on that application. As pointed out in ex parte Draw- 
baugh (64 0. G. 155), action on one of several divisional cases 
should not be suspended to await the allowance of another 
application. Id. 

XXI. By Admixistrator of Deceased Inventor. 

1. Where an application was filed by a party as an adminis- 
trator of the estate of a deceased person, unaccomiianicd by 
letters of administration duly taken out in the United States, 
Held, that said application has no standing in the Patent Office. 
{Ex parte Ransome, C. D. 1870, 143, cited.) (Mar. 3, 1899.) 

DuELL, C] Ex parte Langen, 87 O. G. 697. 

2. The fact that such an ajiplication had been given a serial 
num])er, and that oral instructions had been given to forward 
it for examination, does not make it a legal ajiplication or re- 
lieve the applicant or his attorney from the responsibility of 
filing an ai)i)lication by an administrator duly appointed in this 



56 ASSIGNMENT. 

country, so as not to be affected by tbe statute which prohibits 
the grant of a patent in this country when a foreign patent had 
been obtained on an application filed more than seven months 
prior to the filing of the application in this country. Id. 

3. As said application has no standing, an administrator ap- 
pointed in tliis country after the application is filed cannot be 
substituted for the present applicant or be permitted to sign the 
application nunc pro tunc, as the application would then lack the 
oath of the proper administrator, and would not be a complete 
application until such oath was filed. Id. 

XXII. Joint and Sole. 

1. Where each of two joint inventors files a petition, specifica- 
tion, and oath separately signed and executed by him, the 
specifications being duplicates and the papers reciting the fact 
that the parties are joint inventors, Held, that they constitute a 
valid application under the law, and that it is not necessary to 
file a new petition, specification, and oath signed by both 
parties. (Aug. 14, 1899.) 

Geeeley, a. C] Ex parte Wellman et cd., 88 0. G. 2065. 

2. Where duplicate specifications have been filed by joint in- 
ventors, the attorney for the applicants should for the conven- 
ience of the Office substitute by amendment a single copy of the 
specification for the two on file, so as to prevent confusion in 
the entry of amendments and the printing of the patent. Id. 

Assignment. 

I. In General. 
II. Of Future Improvements. 
I. In General. 

1. Where an instrument, purporting to be an assignment, 
was clearly nothing more than an executory contract; did not 
convey the legal title to the invention, but was merely an agree- 
ment to transfer the patent to be granted upon the performance 
of certain conditions specified; and was not such an assignment 
as the Office could recognize. Held, that in an interference pro- 
ceeding it was not necessary that a concession of priority made 
by the alleged assignor be signed by the alleged assignee. 
(Apr. 25, 1899.) 
Greeley, A. C.] Bates v. Johnson, 66 MS. Dec. 477. 



ASSIGNMENT. 57 

2. A patent right is an incorporeal kind of personal property 
and in a certain sense analogous to property in a share of stock. 
The discoverer of a new and useful improvement is vested hy 
law with an inchoate right to its exclusive use which he may 
perfect and make absolute hy securing a patent from \hv gov- 
ernment in the manner provided l\y law. This right tlie in- 
ventor may, under the law, assign before the patent is issued, 
and request that the patent be issued to the assignee. When 
the patent is issued, an exclusive right to the invention for the 
statutory period has been created and vested in the assignee. 
(C. C, N. D. Cal. May 22, 1899.) 

Morrow, J.] * Fruit-Cleaning Co. v. Fresno Home-Packing 
Co. etciL, 94 Fed. Rep. 845. 

3. An oral agreement for the sale or assignment of the right 
to obtain a patent is not invalid; if sufficiently proved it can 
be specifically enforced in equity. */<:?. 

4. It is common knowledge that a partnership may acquire 
the title to an invention in the name of the partnership after 
the patent has issued, and there does not appear to be any 
good reason why it may not do so before the patent is issued. 
The gi-ant in the patent does not change the character of the 
property, and under the law a patent is not void because the 
grant of an exclusive right has been made to a co-partner- 
ship. */(/. 

II. Of Future Improvements. 

Where an employe of a manufacturing company granted to 
the company "all the patents, inventions and improvements 
by him," now existing and used by "the company" in the 
manufacture and sale "of certain machinery;" also "all in- 
ventions and improvements in said machiner}^ made by " him; 
also "all new designs of such machinery hereafter made l)y" 
him; also "all inventions and improvements hereafter made 
by" him, "in the machinery covered by such new designs. " 
Held, that the "inventions and improvements" of the st'cond 
clause were to pass by the grant, even though made after the 
grantor left the company's emplo}'; Held further that tlie " new 
designs" of the third clause, and "inventions and improve- 
ments" of the fourth clause passed while the employment con- 



58 COMITY. 

tinned (but were impliedl}' reserved if they were made after the 
employment ceased), unless the "new designs" were so di- 
vergent from the " machinery " in question, were so thoroughly 
typical, and so different in plan and structure as to be radically 
distinctive. (C. C, E. I). Penn. Jan. 31, 1899.) 
Dallas, J.] * Geiser Mfg. Co. et al. v. Frick Co., 92 Fed. 
Rep. 189. 

Cases Distinguished. 

1. In the case of Palmer r. ]\Ifg. Co., 84 Fed. Rep. 454, 457, 
each of the two patents involved was really for a machine, the 
machine in the earlier patent merely needing well-known con- 
nections to accomplish the results of the machine of the later 
patent; so that the two patents were clearly for the same subject- 
matter; but the case at bar is not one of this kind, as Simonds' 
earlier patent was clearly for a mechanism, and the later one 
clearly for an art. (C. C., D. Me. July 30, 1898.) ' 
Putnam, J.] -"^ Simonds Rolling Mach. Co. v. Hathorn Mfg. 

Co. etal, 90 Fed. Rep. 201. 

2. The case of Potts v. Creager, 155 U. S. 597, 15 Sup. Ct. 
194, 70 0. G. 494, laid down no i\ew principles of law^, neither 
did it overrule any of the cases cited in Briggs v. Ice Co., 60 
Fed. Rep. 87. On the contrary, it indicates quite clearly that 
the question of so-called double use, /. c, whether the new use 
is so nearly analogous to the former one that the applicability 
of the device to its new use would occur to a person of ordinary 
mechanical skill, is one dependent upon the peculiar facts of 
each case. (C. C. A., 2d Cir. Apr. 4, 1899.) 

Lacombe, J.] *Briggs v. Duell, Com. of Patents, 93 Fed. 

Rep. 972. 
Comity. 

1. The circuit court of appeals and the circuit court also 
must take up all cases Avhich involve the invalidity of ])atents 
upon their merits and determine them independently of the 
rulings of other circuits, except so far as the decisions of such 
other circuits are instructive upon the subject under considera- 
tion. (Stover Mfg. Co. v. Mast, Foos & Co., 32 C. C. A. 231, 
89 Fed. Rep. 333; Sand. Pat. Dig., 1898, 51.) (C. C, N. D. 
111. Nov, 28, 1898.) 
Grosscup, J.] *Ross V. City of Chicago, 91 Fed. Rep. 265. 



COMITY. 59 

2. Ordinarily, it is proper practice upon the question of 
granting a preliminary injunction to accept and follow the de- 
cision of a circuit court of appeals of another circuit sustaining 
and construing a patent; but where the circumstances are so 
unusual as to require a court to make an independent investi- 
gation as to the validity and scope of the patent and to deter- 
mine whether the rights of the patent owner have been violated 
by another alleged infringer, such decision may not be followed. 
(C. C. A., 3d Cir. Dec. 21, 1898.) 

AcHESON, J.] * Horn & Brannen Mfg. Co. v. Pelzer, 91 Fed. 
Rep. 665. 

3. Where, in a second suit, it appears that 12 years after the 
grant of the patent sued upon, it was declared invalid and 
shortly thereafter an application for a reissue thereof was made, 
which application was subsequently granted, and further that 
the alleged infringing device is made under a patent antedating 
the reissue patents, such facts raise proper questions for such 
independent investigation and consideration. -^Id. 

4. As a general rule, and especially in patent cases, the de- 
cision of a circuit court of appeals of one circuit should be fol- 
lowed in another circuit upon final hearing Avith respect to the 
issues determined, if based upon substantially the same state of 
facts, unless it should appear that there was manifest error, 
(C. C. A., 1st Cir. Feb. 13, 1899.) 

Colt, J.] Beach r. Hobbs et al, Hobbs et al. v. Beach, 92 Fed. 
Rep. 146, 87 0. G. 1961-. 

5. On a motion to dissolve a preliminary injunction, when 
the court has before it the opinions of two circuit courts of ap- 
peal covering the question at issue in the suit at bar, in which 
opinions antagonistic conclusions are reached, it ma}' closely 
examine the reasoning of each of the said courts and the grounds 
upon which they arrive at their respective conclusions, in addi- 
tion to the facts brought out at the hearing of the case at bar, 
and adopt the reasoning of either of said courts in so far as it 
may impress the court as being correct and applicable to the 
case at bar. (C. C, N. D. Ills. Apr. 13, 1899.) 
KoHLSAAT, J.] * Pelzer v. Newhall et al, 93 Fed. Rep. 684. 

6. "Where the court of appeals of one circuit had gone into the 



60 COMITY. 

claims of a patent fully and given a decision in regard to one 
claim, which caused a reissue of the patent and the modification 
of that claim, and later the same court, on motion for prelimi- 
nary injunction, had held that claim as modified by reissue to 
be invalid, while the court of appeals of another circuit had, 
upon final hearing, held the claim to be valid, both courts hav- 
ing gone equally into the merits of the case as the basis of their 
respective decisions, Hdd., that upon a motion for preliminary 
injunction in the court of still another circuit, the case does not 
fall within the customary rule, tliat as between conflicting de- 
cisions of two circuit courts of appeals of other circuits respect- 
ing the validity of a patent, that one will be followed which was 
rendered upon final hearing rather than one which was rendered 
upon a preliminary motion. (C. C. , N. D. 111. N. D. May 
23, 1899.) 
KoHLSAAT, J.] *Maitland v. Graham, 96 Fed. Rep. 247. 

7. A circuit court of ai)peals is not in the least concluded by 
the decision of a circuit court of another circuit upon the ques- 
tion of the validity of a patent, nor do considerations of comity 
toward a circuit court with respect to its rulings have the same 
potency with a circuit court of appeals as they may properly 
have with a circuit court when confronted with the alternative of 
following or departing from the ruling of another circuit court. 
(C. C. A., 3dCir. Oct. 4, 1899.) 

Bradford, J.] *McNeely et al. v. Williames et al. 

Williames et al. v. McNeely et al, 96 Fed. 
Rep., 978. 

8. The circuit courts and the circuit courts of appeals through- 
out the United States are respectively of equal dignity, and there 
is no reason why, unless in cases of clear error or oversight, each 
of 'these courts should not follow the rule practiced by the two 
divisions of the court of appeal, sitting under the Enghsh judi- 
cature acts, to the effect that each division accepts the decisions 
of the other as of binding force, thereby avoiding the just com- 
plaints, and the substantial detriment to the administration of 
the law, which come from inconsistent proceedings of several 
tribunals of like authority. (C. C, D. Mass. Oct. 4, 1899.) 
Putnam, J.] *Duff Mfg. Co. v. Norton, 96 Fed Rep. 986. 



CONTRACTS. 61 

Contracts. 

I. Construction of. 
II. Specific Performance. 

I. Construction of. 

1. Where each party to a contract grants to the other a hcense 
under all United States patents owned and controlled hy it, sub- 
ject to outstanding licenses, but neither is permitted to grant 
licenses to its territorial licensees under the patents of the other 
part}'', though neither is authorized nor forbidden to sell to its 
licensees the apparatus covered by the patents of the other 
party, and such sales are recognized, the contract cannot be 
construed as an express covenant not to make such sales, so as 
to afford a basis for a suit by one party to enjoin the other from 
making them, but it leaves both parties, so far as such sales are 
concerned, as they stood prior to the making of the contract. 
(C. C, N. D. N. Y. May 22, 1899.) 

CoxE, J.] * Westinghouse Electric & Mfg. Co. r. General 
Electric Co., 94 Fed. Rep. 381. 

2. Where an inventor made an invention, and entered into an 
agreement with a company whereb}' it was to pay him "all the 
costs and expenses of making and perfecting such invention, 
and obtaining patents," which were to be assigned to the com- 
pany, in consideration whereof the inventor was to have the 
right to manufacture the invention at a reasonable profit, and in 
such quantities as the company should put upon the market ; 
whereupon the inventor perfected one sample or specimen of 
the invention and obtained a patent therefor and the company 
paid the weekly bills presented for labor, materials, etc., and 
for obtaining the patent. Held, that this was a practical con- 
struction of the contract by the parties, and the company could 
not thereafter, in respect to subsequent inventions of the same 
character, set up that its obligations covered only the expenses 
of obtaining the patent. (C. C. A., 6th Cir. June 6, 1899.) 
LuRTON, J.] * Hartz v. Cleveland Block Co., 95 Fed. Rep. 681. 

II. Specific Performance. 

Where one of the objects of a bill in e(iuity is to obtain the 
specific performance of a contract whereby it is alleged that one 



62 COPYRIGHTS. 

of the defendants agreed not to manufacture patented articles 
for a period specified, and the bill fails to set out the contract or 
make profert thereof, or have a copy thereof annexed, no op- 
portunity is afforded the court to determine the rights of the 
parties thereunder, and it would not be justified in forbidding 
said defendant to follow an employment which he says is neces- 
sary for the support of himself and his family. (C. C, D. 
N. Jer. Dec. 14, 1898.) 

KiRKPATRicK, J.] * Richmond Mica Co. v. De Clyne et al, 90 
Fed. Rep. 661. 

Copyriglits. 

I. Copyrightable Subject-Matter. 
II. False Marking. 

III. Infringement. 
(a) In General. 
(6) Injunction. 

IV. Penalties. 

V. Publication and Sale. 

I. Copyrightable Subject-Matter. 

A reporter of the decisions of a court may not copyright the 
opinions of the court nor the statements or headnotes of cases 
as prepared by the court or any member thereof (Banks v. 
Manchester, 128 U. S. 244; 9 Sup. Ct. 36); but he can obtain 
a copyright for it as an author, and such copyright will cover 
the parts of it of which he is the author, but not the opinions 
themselves. (Callaghan v. Myers, 128 U. S. 617, 645, 650; 9 
Sup. Ct. 177.) The compiler and annotator of a volume of 
state statutes may also copyright his book, and such copyright 
covers all in it which may fairly be deemed the result of his 
labors, such as marginal references, notes, memoranda, table of 
contents, indexes, and digests of judicial decisions prepared by 
him from original sources of information. (C. C. A., 6th Cir. 
Nov. 9, 1898. ) 
Harlan, Cir. Jus.] * Howell v. Miller e« al, 91 Fed. Rep. 129. 

II. False Marking. 

1. R. S. § 4963, as it read prior to the amendment of 1897, 



COPYRIGHTS, 63 

imposed a iienalty upon "any person who shall insert or im- 
press" a copyright notice in or upon any book for which he has 
not obtained a copyright, and did not apply to a person " who 
shall issue or sell" such a book bearing a fictitious copyright 
notice, where it is shown that he did not make the book nor 
cause the notice to be inserted; such latter provision was the 
purpose of the amendment of 1897. (C. C. A., 2d Cir. Dec. 
7, 1898.) 

Wallace, J.] *Ross v. Raphael Tuck & Sons Co., 91 Fed. 
Rep. 128. 
2. An essential element of the copyright notice, as required 
by R. S. § 4962, is the date of the copyright. The phrases in 
§4963, viz., "such notice of copyright or words of the same 
import" and "a notice of United States copyright," refer most 
clearly to the notice specified in § 4962 ; and while the courts 
have been liberal in holding any form of notice sufficient which 
contains the essentials of "name," "claim of exclusive right," 
and "date w'hen obtained," they have not yet sustained the 
sufficienc}' of a notice which wholly omits one of these three 
essentials^ (C. C, S. D. N. Y. June 8, 1899.) 
Lacombe, J.] *Hoertel v. Raphael Tuck & Sons Co., 94 Fed. 
Rep. 844. 

III. Infringement. 

(a) In General. 

1. A state cannot authorize its oflficers or agents to violate a 
citizen's right of property in a copyright, and then invoke the 
eleventh amendment of the constitution of the United States to 
protect those officers or agents against suit by the owner of the 
copyright for the protection of his rights against injury by such 
officers or agents. (C. C. A., 6th Cir. Nov. 9, 1898.) 
Harlan, Cir. Jus.] * Howell v. Miller et nl, 91 Fed. Rep. 129. 

2. If property be the subject of litigation, such property be- 
longing to the state and in its actual possession by its officers, a 
suit against such officers to enjoin them from using or control- 
ling the property would be regarded as a suit against the state, 
and, for the reasons stated in Belknap v. Schild, 161 U. S. 10, 
25, 16 Sup. Ct. 443, would be dismissed. ^/c/. 

3. By an act of the Michigan legislature in 1895 it w'as pro- 



64 COPYRIGHTS. 

vided tliat all the general laws of the state should be collected 
and compiled, without alteration, under appropriate heads and 
titles, with marginal notes, references, index, and complete 
digest of the supreme court of the state relating to such general 
laws. In 1897 provision was made for the printing, binding, 
distribution and sale of such compilation from the prepared 
manuscript. The manuscript of the compilation is the prop- 
erty of the state, and the mere i:)reparation of such manuscript 
and the possession of it by the state do not constitute a legal 
wrong to the plaintiff, who had some years before published 
and copyrighted "Howell's Annotated Statutes." He may, 
however, invoke the aid of a court of equity to restrain the 
printing and publishing such manuscript, if the printing and 
publishing of it would infringe his rights under the laws of the 
United States. */(/. 

4. If the plaintiff has a valid copyright he is entitled, under 
the constitution and laws of the United States, to the sole 
liberty of printing, reprinting, publishing and vending the 
books copyrighted by him. R. S. § 4952. The jurisdiction 
conferred by statute (R. S. § 4970) upon the federal courts 
may be exercised for the protection of an individual against 
any injury to his rights under the copyright statutes by officers 
of a state. Those officers cannot interpose their official char- 
acter, or the orders of the state, against such relief as may pro- 
perly be granted. ^Id. 

5. The author of a literary composition may claim it in 
whatever language or form of words it can be identified as his 
production. The true test of piracy is, not whether a com- 
position is copied in the same language or the exact words of 
the original, but whether, in substance, it is reproduced ; not 
whether the whole, but whether a material part is taken with- 
out authority. (C. C, N. D. Ills. April 26, 1899.) 
Seaman, J.] * Maxwell v. Goodwin, 93 Fed. Rep. 665. 

6. The rule in patent causes at law, that issues of infringe- 
ment and identity must be passed upon by the jury, is equally 
applicable to the issues of piracy and infringement of copyright. 
Under the same rule the court is authorized to set aside a ver- 
dict unsatisfactory to itself as against the weight of evidence. 



COPYRIGHTS. 65 

7. Where it was the duty of a salaried einjiloy^, inter (iliti, to 
compile, pre))are, and revise certain instruction and (juestion 
papers, the literary ))roduct of such work became tiie projjcrty 
of the employer, which he was entitled to coi)yright, and which 
when copyrighted, the emi)loyt§, after severing his connection 
with the employer, would have no more riglit than a stranger 
to reproduce or co{)y. (C. C, S. D. N. Y. Apr. 4, 1S99.) 
Lacombe, J.] * Colliery Engineer Co. r. United Corresi)ond- 

ence Schools Co. et al, 94 Fed. Rep. 153. 

8. While he was not at liberty to reproduce so much of his 
work as had been cof)yrighted by his employer for whom it was 
prepared, even by availing himself of liis recollection of the con- 
tents of the copyrighted books and pamphlets, yet the employ^ 
was not debarred after his contract terminated from making a 
new compilation, nor from using the same original sources of 
information, nor from availing of such information and experi- 
ence as he ma}' have acquired in the course of his employment. 

9. Where the chief purpose of a copj-righted pamphlet was to 
advertise the business of its author and publisher, no copies of 
the pamphlet being sold or offered for sale but large numbers 
having been distributed free, and where it is of doubtful com- 
mercial value in other respects, Held, that these facts afford 
insufficient foundation to warrant an award of substantial dam- 
ages for the infringement of the coi)y right. (C. C, W. D. Mo. 
June 12, 1899.) 

Philips, J.] * D'Ole v. Kansas City Star Co., 94 Fed. Rei). 840. 

III. Infringement. 

(6) Injunction. 

1. When the legislature of a state has determined that tlie 
public interests require a new compilation of the laws of the 
state, and the work has been completed, a court of equity 
should not interfere by injunction to restrain an alleged in- 
fringement of copyright, unless the right to such relief is clearly 
manifest from the evidence. (C. C. A., 6th Cir. Nov. 9, 1898. ) 
Harlan, Cir. Jus.] * Howell v. Miller et al, 91 Fed. Rep. 129. 

2. Where the answer to the question of fact ui)on which a 
suit for the piracy of a copyrighted publication turns is not 

5 



66 COPYRIGHTS. 

clear, the granting of a preliminary injunction would be prac- 
tically a judgment in advance of hearing and might work irre- 
parable damage to the defendants. Under such circumstances 
it ife best to relegate the question to final hearing. (C. C. , S. D. 
N. Y. Apr. 4, 1899.) 

Lacombe, J.] * Colliery Engineering Co. v. United Correspond- 
ence Schools et al, 94 Fed. Rep, 152. 
IV. Penalties. 

1. The action authorized by § 4965 R. S. in so far as it re- 
lates to the recovery of money is one to enforce a penalty and 
not an action to recover compensation for the actual damage 
which the plaintiff has sustained by reason of the alleged in- 
fringement of his copyright. The money judgment for which 
the statute provides is one for a penalty, and its character in this 
respect is not at all affected by the fact that its recovery is to be 
had in a civil action and not by a criminal prosecution. Nor 
can the action under this statute be regarded as remedial, be- 
cause one-half of any judgment recovered is for the use of the 
plaintiff whose rights have been invaded by the infraction of the 
law. No provision is made for the recovery of any sum by the 
plaintiff except as part of an entire penalty, to be divided, it is 
true, but only by the same judgment by which it is inflicted 
upon the defendant; and it is apparent that the statute does not 
contemplate that any recovery shall be had unless the case pre- 
sented shows that the defendant is justly subject to the entire 
penalty which the statute provides for its violation. (D. C, 
N. D. Cal. July 17, 1899.) 

De Haven, J.] * McDonald v. Hearst, 95 Fed. Rep. 656. 

2. Section 4965 R. S. provides for the recovery of a penalty 
for the infringement of a copyright obtained pursuant to the 
provisions of § 4956 R. S. ; hence, a plaintiff may not maintain 
an action for the recovery of penalty under § 4965 unless he has 
complied with the conditions precedent stated in § 4956, which 
should be strictly construed, because it contains the condition 
precedent to the recovery of heavy penalties. (C. C. A., 2d Cir. 
July 18, 1899.) 

Thomas, J.] * Bennett t;. Carr, 96 Fed. Rep. 213. 

3. Section 4956 R. S. provides that; "No person shall be 



COPYRIGHTS. 67 

entitled to a copyright unless he shall * * * * deliver * * * 
or deposit * * * a printed copy of the title of the ])ook, or a 
description of the painting j * * M< * nor unless he shall also 
* * * deliver or deposit * * * two copies of such copyright 
book '!^ * * or in case of a painting * * * a photograph of 
the same," in the Librar}' of Congress. The statute therefore 
specifically states that in case of a painting, there must be a 
description thereof and a photograph of the same, and it may 
not be read to mean that the deposit of a photograph shall 
fulfill both requirements, so as to enable the painter to recover 
penalties for infringement. *7d. 

V. Publication and Sale. 

1. "Publication" in copyright law is "the act of making 
public a book; offering to public notice; that is, offering or com- 
municating it to the public by sale or distril)ution of copies." 
Without undertaking to state the qualifications of this definition, 
as applied to certain incidents, by which the book might be 
exhibited by its author prior to copyrighting it without amount- 
ing to a publication within the spirit of the statute, it is safe to 
say that the appearance of a book or pamphlet, after its deliv- 
ery to the plaintiff by the printer or publisher, in a public 
hotel, subject to be seen and read by any one about the place, 
was "rendering it accessible to public scrutiny," and was like- 
wise "communicating it to the public by distribution of copies " 
and rendered a subsequent copyright upon the book void. 
(C. C, W. D. Mo. June 12, 1899.) 

Philips, J.] ^ D'Ole v. Kansas City Star Co. , 94 Fed. Rep. 840. 

2. The serial publication of a book in a monthly magazine 
prior to any steps taken toward securing a copyright is such a 
publication of the same within the meaning of the act of Feb- 
ruar}^ 3, 1831, as to vitiate a copyright of the whole 1)ook ob- 
tained subsequently, but prior to the publication of the book as 
an entity. (Sup. Ct. U. S. Apr. 24, 1899.) 

Brown, J.] * Holmes r. Hurst, 89 0. G. 189. 174 U. S. 82. 

3. It is the settled law of this country and England that the 
right of an author to a monopoly of his publication is deter- 
mined by the copj^right act, which superseded the common 
law. */rf. 



68 DAMAGES AND PROFITS. 

4. The right secured by the cop3'right act is not a right to the 
use of certain words, because they are the common property of 
the human race, nor is it the right to ideas alone, since in the 
absence of means to communicate them they are of value to no 
one but the author; but the rigbt is to that arrangement of 
words which the author has selected to express bis ideas. */cZ. 

5. If the several parts of a publication bad been once dedi- 
cated to the public and the monopoly of the author thus aban- 
doned, it cannot be reclaimed by collecting such parts together 
in the form of a book. ^Id. 

6. If an author permits his intellectual productions to be pub- 
lished, either serially or collective!}', his right to a copyright is 
lost as effectually as the right of an inventor to a patent upon 
an invention which he deliberately abandons to the public, and 
this, too, irrespective of his actual intention to make such aban- 
donment. */(/. 

7. The word " book " as used in the statute is not to be un- 
derstood in its technical sense of a bound volume, but any 
species of publication which the author selects to embody his 
literary production. There is no distinction between the publi- 
cation of a book and the publication of the contents of such 
book, whether such contents be published piecemeal or en 
bloc. ^M. 

8. There is no fixed time within which an author must apply 
for copyright, so that it be "before publication," and if the 
publication of the parts serially be not a publication of the book 
a copyright might be obtained after the several parts, whether 
published separately or collectively, had been in general circu- 
lation for years. This cannot be within the spirit of the copy- 
right act. */(/. 

Damages and Profits. 

I. Estimation and Measure of. 
II. Nominal. 
I. Estimation and Measure of. 

1. Generally, the profit derived by a defendant from his in- 
corporation of an infringing article into his ultimate product, is 
to be measured by the excess in price which he has received for 
that product by his wrongful inclusion therein of the patented 



DAMAGES AND PROFITS. 69 

thing. But this measure is not exclusive of all others. If 
there has been a profit in fact and that profit can be shown in 
any legitimate mode, the plaintiff is entitled to recover it; and 
it would be quite as legitimate to establish the existence of a 
profit by showing that tbe defendants by using the infringing 
article had cheapened the cost of their product, as by showing 
that by such use they had enhanced the price of that product. 
(C. C, E. D. Penn. Dec. 21, 1898.) 
Dallas, J.] *Rose v. Hirsch et al, 91 Feb. Rep. 149. 

2. The law is solicitous that wrongdoers shall not profit by 
wrongdoing, but it does not sanction the substitution of un- 
founded conjecture for proof in determining either the fact of 
the existence of profit or the amount thereof, and where the 
plaintiff has failed to adduce evidence from which a finding of 
profits upon any theory can be founded, no decree for profits 
can be given. -^/rf. 

3. In an action at law f(3r damages for the infringement of a 
patent, if the plaintiff shows no established license fee, no 
market price, and no other use tlian that of the defendant, 
there is no basis for computation of substantial damages, and 
he can only recover nominal damages. (C. C. A., 1st Cir. 
Dec. 9, 1898.) 

Putnam, J.] *City of Boston t: Allen, 91 Fed. Pvep. 248. 

4. In proving profits it is necessary to show a saving by the 
use of the infringing tool over the cost of operating any other 
tool which tbe defendant was free to use. (C. C. A., 2d Cir. 
Jan. 5, 1899.) 

Lacombe, J.] *Hohorst v. Hamburg-American Packet Co. 
et al, 91 Fed. Rep. 655. 

5. AVhere it is shown that prior to November, 1894, the pat- 
ented articles could not be purchased except from the patentee, 
who alone made them and who maintained a close monopol}^ of 
their manufacture, and that the infringers purchased such 
articles from him and thus acquiesced in the monopoly of his 
patent from 1891 to .June, 1894, at which latter date they 
ceased buying of the patentee and thereafter deliberately in- 
fringed his patent until enjoined in this case, it is reasonable to 
conclude that if they had not thus deliberately and wantonly 



70 DAMAGES AND PROFITS. 

become infringers and wrongfully trespassed upon the patentee's 
rights, they would have purchased from him the articles they 
used. (C. C. A., 3d Cir. May 4, 1899.) 
BuFFiNGTON, J.] * Rose V. Hirsh et at., 94 Fed. Rep. 177. 

6. These facts unite to afford substantial, not mere conjec- 
tural grounds upon which to base the conclusion that the pat- 
entee, by the infringers' wrongful acts lost the sale of articles" 
purchased elsewhere, and to that extent he was damaged. */rf. 

7. Where the operations of the manufacturing patentee are 
exceedingly simple, and the cost of raw materials used is easily 
ascertained, a comparatively easy basis is afforded for determin- 
ing the operative cost and the cost of tiiC product of his manu- 
facture, and where the evidence as to such cost is not only not 
disputed, but is corroborated by the evidence for the defendant 
infringers, no grounds exist for the conclusion of the master that 
" the evidence presents no definite basis upon which damages 
can be assessed." */d. 

8. In ascertaining the profits of a corporation, due to its 
manufacture and sale of an article in infringement of a patent, 
where such manufacture and sale constitute but a minor part of 
the business, it is improper, in computing general expenses, to 
include such items as interest on dividends to stockholders, in- 
surance, taxes, attorneys' fees, or physicians' fees while in 
attendance upon an injured employee; but a sum paid to a 
commercial agency for information as to credits, etc., is a proper 
part of sale expenses and may be included, inasmuch as it is the 
ordinary method by which business men regulate their sales. 
(C. C, S. D. Ohio, W. D. July 10, 1899.) 

Taft, J.] *Nat'l Folding-Box & Paper Co. v. Dayton Paper 
Novelty Co. et al, 95 Fed. Rep. 991. 

9. It is also proper in such a case to include " the usual sal- 
aries of the managing officers " as a part of the general expenses, 
but where such salaries seem to be excessive, and to be really a 
division of profits, they should be cut down to a reasonable 
figure. *Id. 

10. Where in a suit upon the same patent in another circuit, 
and against parties in privity with the defendants in the suit 
at bar, the finding of the circuit court of appeals that all of 



DECISIONS OF THE COMMISSIONERS OF PATENTS. ( 1 

the profits from the sale of the infringing articles were due to 
the patented invention of complainant, is binding upon the 
court. '•'/'/. 

11. The profits allowed in equity for the injury that a pat- 
entee has sustained by the infringement of his patent are to be 
considered as a measure of unliquidated damages, which, as a 
general rule and in the absence of special circumstances, do not 
bear interest until their amount has been judicially ascertained; 
infringement of a fraudulent or wanton character may justify 
the imposition of interest under the decisions of the supreme 
court. (C. C, S. D. Ohio. Nov. 2, 1899.) 
Taft, J.] *Nat'l Folding-Box & Paper Co. r. Dayton Paper 
Novelty Co. et al, 97 Fed. Rep. 331.' 

II. Nominal. 

Where the defendant has derived an advantage from the use 
of the infringing device, but the character of the testimony by 
which this fact was established was so conflicting and uncertain, 
and the knowledge of the witnesses was so limited in scope, that 
it was manifestly impossible to obtain therefrom any basis of 
calculation from which to determine with any degree of cer- 
tainty, either the extent of the use of the infringing devices, or 
the saving effected, or profits derived from such use, nominal 
damages only can be recovered. (C. C. A., 2d Cir. Jan. 5, 
1899.) 

Lacombe, J.] *Hohorst r. Hamburg-American Packet Co. 
etal, 91 Fed. Rep. 655. 

Decisions of tlie Comnaissioner of Patents. 

I. Affirmed on Appeal to Court of Appeals, D. C. 
II. Reversed on Appeal to Court of Appeals, D. C. 
III. Affirmed in Part and Reversed in Part. 
I. Affirmed on Appeal to the Court of Appeals, D. C. 
Marvel v. Decker et al , 86 0. G. 348. Dec. 9, 1898. Morris, J. 
Nimmy V. Com'r of Patents, 86 0. G. 345. Dec. 9, 1898. 
Morris, J. 

Pickles V. Aglar, 86 O. G. 346. Dec. 9, 1898. Morris. J. 
Cain V. Park, 86 0. G. 797. Jan. 3, 1899. Shepard, J. 
Esty V. Newton, 86 0. G. 799. Jan. 3, 1899. Shepard, J. 



72 DECISIONS OF THE FEDERAL COURTS. 

■ Traver v. Brown, 86 0. G. 1324. Jan. 3, 1899. Shepard, J. 

Winslowv. Austin, 86 0. G. 2171. Jan. 10, 1899. Alvey, 
C. J. 

Smith V. Duell, Com'r of Pats., 87 0. G. 893. Feb. 7, 1899. 
Shepard, J. 

Fowler v. Dodge, 87 0. G. 895. Apr. 4, 1899. Morris, J. 

Barratt v. Duell, Com'r of Pats., 87 0. G. 1076. Morris, J. 

Cross V. PhilHps, 87 0. G. 1399. Feb. 8, 1899. Shepard, J. 

Bedford v. Duell, Com'r of Pats., 87 0. G. 1611. Alvey, C. J. 

Williams v. Ogle, 87 0. G. 1958. Jan. 17, 1899. Alvey, C. J. 

Reutei'. Elwell, 87 0. G. 2119. May 4, 1899. Shepard, J. 

Mower v. Duell, Com'r of Pats., 88 0. G. 191. June 6, 
1899. Alvey, C. J. 

Dowry v. Duell, Com'r of Pats., 88 0. G. 717. Apr. 4, 1899. 
Shepard, J. 

Foster v. Antisdel, 88 0. G. 1527. May 2, 1899. Alvey, C. J. 

Hulett V. Long, 89 0. G. 1141. Oct. 4, 1899. Alvey, C. J. 

II. Reversed on Appeals to Court of Appeals, D. C. 

Tracy et al. v. Leshe, 87 0. G. 891. Jan. 10, 1899. Shep- 
ard, J. 

Marsden v. Duell, Com'r of Patents, 87 0. G. 1239. Feb. 8, 
1899. Morris, J. 

III. Affirmed in Part and Reversed in Part on Appeal to 

THE Court of Appeals, D. C. 
Bader v. Vajen, 87 0. G. 1235. Feb. 8, 1899. Morris, J. 
De Wallace v. Scott et al., 88 0. G. 1704. June 6, 1899. 
Shepard, J. 

Griffin v. Swenson, 89 0. G. 919. June 6, 1899. Morris, J. 

Decisions of the Federal Courts. 

I. Affirmed on Appeal. 
II. Reversed on Appeal. 

III. Appeals Dismissed. 

IV. Disposition of Motions for Rehearing. 
I. Affirmed on Appeal. 

1. Norton et aJ. v. Jensen, 81 Fed. Rep. 494. Appealed 
from the Circuit Court of the United States for the District of 



DECISIONS OF THE FEDERAL COURTS. 73 

Oregon. Judgment of the court below affirmed. (C. C. A., 

9th Cir. Oct. 24, 1898.) 

Morrow, J.] * Norton et al. v. Jensen, 90 Fed. Rep. 415. 

2. Vermilya v. Pennsylvania Steel Co. et al, 87 Fed. Rep. 481. 
Appealed from the Circuit Court of the United States for the 
Eastern District of Pennsylvania. Decree of the Circuit Court 
affirmed. (C. C. A., 3d Cir. Nov. 28, 1898.) 

AcHESOx, J.] * Pennsylvania Steel Co. et al. r. Vermilya, 90 
Fed. Rep. 493. 

3. Brill r. St. Louis Car Co. et ai, 80 Fed. Rep. 909. Ap- 
pealed from the Circuit Court of the United States for the 
Eastern District of Missouri. Decree of the Circuit Court 
affirmed. (C. C. A., 8th Cir. Nov. 28, 1898.) 

Thayer, J.] =^ Brill r. St. Louis Car Co. et al, 90 Fed. Rep. 
666. 

4. United States Glass Co. v. Atlas Glass Co. et ai, 88 Fed. 
Rep. 493. Sand. Pat. Dig. '98, 5, 119. Appealed from the 
Circuit Court of the United States for the Western District of 
Pennsylvania. (C. C. A., 3d Cir. Dec. 6, 1898.) 

Dallas,. J.] * United States Glass Co. r. Atlas Glass Co. et al., 
90 Fed. Rep. 724. 

5. Van Camp Packing Co. r. Cruikshanks Bros. Co., not 
reported. Appealed from the Circuit Court of the United 
States for the Western District of Pennsylvania. Refusing 
grant of preliminary injunction. Appeal dismissed and order 
of the lower court affirmed. (C. C. A. , 3d Cir. Nov. 28, 1898. ) 
Butler, J.] *Van Camp Packing Co. v. Cruikshanks Bros.. 

Co., 90 Fed. Rep. 814. 

6. Solvay Process Co. v. Michigan Alkali Co., not reported. 
Appealed from the Circuit Court of the United States for 
the Eastern District of Michigan. Decree of the Circuit Court 
affirmed. (C. C. A., 6th Cir. Nov. 28, 1898.) 

Taft, J.] * Solvay Process Co. v. Michigan Alkali Co. et al, 
90 Fed. Rep. 818. 

7. Societe Anonyme du Filtre Chamberland Systeme Pasteur 
et al. V. Allen et al, 84 Fed. Rep. 812. Sand. Pat. Dig. '98, 
47, 49. Appealed from the Circuit Court of the United States 



74 DECISIONS OF THE FEDERAL COURTS. 

for the \^^estern Division of the Northern District of Ohio. 
Order of lower court refusing injunction affirmed. (C. C. A., 
6th Cir. Nov. 9, 1898.) 

Taft, J.] *Societe Anonyme du Filtre Chamberland Systeme 
Pasteur et al. v. Allen et a/., 90 Fed. Rep. 815. 

8. United States Mitis Co. v. Carnegie Steel Co. Lim., 89 
Fed. Rep. 206, 343. Sand. Pat. Dig. 1898, 101, 131. Ap- 
pealed from the Circuit Court of the United States for the 
Western District of Pennsylvania. No opinion. Affirmed. 
(C. C. A., 3d Cir. Oct.' 21," 1898.) 

* Carnegie Steel Co. Lim. v. United States Mitis Co., 90 Fed. 
Rep. 829. 

9. Von Mum et al v. Witteman et al, 85 Fed. Rep. 966. 
Appealed from the Circuit Court of the United States for the 
Southern District of New York. Decree of the Circuit Court 
affirmed. (C. C. A., 2d Cir. Dec. 7, 1898.) 

Per Curiam.] * Von Mum et al v. Witteman et al, 91 Fed. 
Rep. 126. 

10. Ross V. Raphael Tuck & Sons Co., not reported. In 
Error to the Circuit Court of the United States for the Southern 
District of New York. Judgment of the Circuit Court affirmed. 
(C. C. A., 2d Cir. Dec. 7, 1898.) 

Wallace, J.] Ross v. Raphael Tuck & Sons Co., 91 Fed. Rep. 
128. 

11. Howell V. Miller et al, not reported. Appealed from 
the Circuit Court of United States for the Eastern District 
of Michigan. The order denying injunction affirmed. (C. C. 
A., 6th Cir. Nov. 9, 1898.) 

Harlan, Cir. Jus.] * Howell v. Miller et al, 91 Fed. Rep. 129. 

12. Electric Car Co. of America et al v. Nassau Electric Ry. 
Co., 89 Fed. Rep. 204. Appealed from the Circuit Court of the 
United States for the Eastern District of New York. Order of 
the Circuit Court granting a preliminary injunction affirmed. 
(C. C. A., 2d Cir. Dec. 7, 1898.) 

Shipman, J.] * Electric Car Co. of America et al v. Nassau 
Electric Ry. Co., 91 Fed. Rep. 142. 

13. Lovell V. Johnson, 82 Fed. Rep. 206. Appealed from 



DECISIONS OF THE FEDERAI. COURTS. 75 

the Circuit Court of the United States for the Distriet of ■Shissa- 
chusetts. Decree of the Circuit Court dismissing tlu' bill 
affirmed. (C. C. A., 1st Cir. Dec. 27, 1898. ) 
Colt, J.] *Lovell v. Johnson, 91 Fed. Rep. 160. 

14. Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 
86 Fed. Rep. 764. Sand. Pat. Dig. 1898, 153. Appealed from 
the Circuit Court of the United States for the Northern District 
of Ohio. Decree of the Circuit Ct)urt affirmed. (C. C. A., Gtli 
Cir. Dec. 19, 1898.) 

LuRTON, J.] * Deering Harvester Co. v. Whitman & Barnes 
Mfg. Co., 91 Fed. Rep. 376. 

15. Hohorst v. Hamburg-American Packet Co., 84 Fed. Rep. 
354. 82 0. G. 898, Sand. Pat. Dig. 23. Appealed from the 
Circuit Court of the United States for the Southern District of 
New York. Decree of the Circuit Court affirmed. (C. C. A., 
2d Cir. Jan. 5, 1899. ) 

Lacombe, J.] * Hohorst r. Hamburg-American Packet Co. 
etal, 91 Fed. Rep. 655. 

16. Thomson-Houston Electric Co. v. Athol and Orange St. 
Ry. Co., 83 Fed. Rep. 203. Sand. Pat. Dig. 1898, 114. Ap- 
pealed from the Circuit Court of the United States for the 
District of Massachusetts. Decree of CiiTuit Court aflirmed. 
(C. C. A., 1st Cir. Jan. 26, 1899.) 

Colt, J.] * Thomson-Houston Electric Co. r. Athol and 
Orange St. Ry. Co., 91 Fed. Rep. 767. 

17. "William Schollhorn Co. r. Bridgeport Mfg. Co. ef aJ., 84 
Fed. Rep. 674. Appealed from the Circuit Court of the United 
States for the District of Connecticut. Decree of Circuit Court 
affirmed. (C. C. A., 2d Cir. Jan. 2, 1899.) 

Shipman, J.] * Bridgeport Mfg. Co. et al. v. \\"\\\\-a\\\ Scholl- 
horn, 91 Fed. Rep. 775. 

18. Thatcher Mfg. Co. v. Creamery Package Mfg. Co. et al., 
not reported. Appealed from the Circuit Court of the United 
States for the Northern District of Illinois, Northern Division. 
Decree of the Circuit Court, dismissing the bill for want of 
equity, affirmed. (C. C. A., 7th Cir. Feb. 7, 1899.) 

Per Curiam.] * Thatcher Mfg. Co. v. Creamery Package Mfg. 
Co. etal, 91 Fed. Rep. 919. 



76 DECISIONS OF THE FEDERAL COURTS. 

19. Schrei et al. v. Morris et al, 87 Fed. Rep. 217. Appealed 
from the Circuit Court of the United States for the Northern 
District of Ilhnois. Decree of the Circuit Court dismissing the 
bill affirmed. (C. C. A., 7th Cir. Feb. 16, 1899.) 

BuNN, J.] Schrei et al. v. Morris et «/., 91 Fed. Rep. 992. 

20. Doig?'. Morgan Machine Co., 89 Fed. Rep. 489. Sand. 
Pat. Dig., 1898. 50. Appealed from the Circuit Court of the 
United States for the Northern District of New York. Order 
granting preliminary injunction affirmed. (C. C. A., 2d Cir. 
Jan. 5, 1899.) 

Per Curiam.] * Doig v. Morgan Machine Co., 91 Fed. Rep. 1001. 

21. Graham v. Earl, not reported. In error to the Circuit 
Court of the United States for the Northern District of Cali- 
fornia. Judgment of the Circuit Court affirmed. (C. C. A., 
9th Cir. Oct. 24, 1897.) 

De Haven, J.] * Graham v. Earl, 82 Fed. Rep. 737; 92 Fed. 
Rep. 155. 

22. Wilson et al. v. McCormick Harvesting Mach. Co., not 
reported. Appealed from the Circuit Court of the United 
States for the Northern District of Illinois, Northern Division. 
Decree dismissing complainant's bill affirmed. (C. C. A., 7th 
Cir. Feb. 16, 1899.) 

Woods, J.] =i^ Wilson et al. v. McCormick Harvesting Mach. 
Co., 92 Fed. Rep. 167. 

23. Western Electric Co. v. Western Tel. Const. Co., 81 Fed. 
Rep. 572. Appealed from the Circuit Court of the United 
States for the Northern District of Illinois, Northern Division. 
Decree dismissing complainant's bill affirmed. (C. C. A., 7th 
Cir. Feb. 16, 1899.) 

Woods, J.] * Western Electric Co. v. Western Tel. Const. Co., 
92 Fed. Rep. 181. 

24. Proctor & Gamble Co. v. Globe Refining Co., not re- 
ported. Appealed from the Circuit ("ourt of the United States 
for the District of Kentucky. Order denying a preliminary 
injunction affirmed. (C. C. A., 6th Cir. Mar. 7, 1899.) 
Severens, J.] <^ Proctor & Gamble Co. v. Globe Refining Co., 

92 Fed. Rep. 357. 



DECISIONS OF THE FEDERAL COURTS. 77 

25. Ginna et al. v. ^rersereau Mfg. Co., 69 Fed. Rep. 344. 
Appealed from the Circuit Court of the United States for the 
District of New Jersey. Decree of the Circuit Court dismissing 
the bill affirmed. (C. C. A., 3d Cir. Jan. 25, 1899.) 
Dallas, J.] * Ginna et al. v. Mersereau INIfg. (]o., 92 Fed. 

Rep. 369. 

26. Universal Milling Co. r. Willimantic Linen Co., 82 Fed. 
Rep. 228. Appealed from the Circuit Court of the United 
States for the District of Connecticut. Decree affirmed. (C. C. 
A., 2d Cir. Jan. 25, 1899.) 

Per Curiam.] * Universal Milling Co. r. ^^'illimantic Linen 
Co., 92 Fed. Rep. 391. 

27. Chambers Bros. Co. r. Penfield, not reported. Appealed 
from the Circuit Court of the United States for the Northern 
District of Ohio. Decree affirmed as to claim 24 of patent No. 
297,671. (C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] * Penfield 1-. Chambers Bros. Co., 92 Fed. Rep. 630. 

28. Loewenbach v. Hake-Stirn Co., not reported. Appealed 
from the Circuit Court of the United States for the Eastern Dis- 
trict of Wisconsin. Decree dismissing bill affirmed. (C. C. A., 
7th Cir. Feb. 23, 1899.) 

Per Curiam.] * Loewenbach v. Hake-Stirn Co., 92 Fed. Rep. 
661. 

29. Kelly fi al. v. Springfield Ry. Co. etal, 81 Fed. Rep. 617. 
Appealed from the Circuit Court of the United States for the 
Southern District of Ohio, Western District. Decree dismissing 
the bill affirmed. (C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] ^ Kelly d al. v. Springfield Ry. Co. etal, 92 Fed. 
Rep. 614. 

30. E. Ingraham Co. v. E. N. Welch Mfg. Co., 87 Fed. Rep. 
1000. Sand. Pat. Dig. 1898, 106, 107. Appealed from the 
Circuit Court of the United States for the District of Connecticut. 
Decree of the Circuit Court affirmed. (C. C. A., 2d Cir. Mar. 
1, 1899.) 

Per Curiam.] *E. Ligraham Co. v. E. N. Welch Mfg. Co. 
etal., 92 Fed. Rep. 1019. 

31. Wm. Mumsen & Sons v. Manitowoc Pea-Packing Co., 



78 DECISIONS OF THE FEDERAL COURTS. 

not reported. Appealed from the Circuit Court of the United 
States for the Eastern District of Wisconsin. Order of the Cir- 
cuit Court affirmed. (C. C. A., 7th Cir. Apr. 11, 1899.) 
Woods, J.] * Manitowoc Pea-Packing Co. v. Wm. Mumsen & 
Sons, 93 Fed. Rep. 196. 

32. Pahner v. Curnen et al, 84 Fed. Rep. 829. Appealed 
from the Circuit Court of the United States for the Southern 
District of New York. Decree of Circuit Court affirmed. (C. C. 
A., 2d Cir. Mar. 1. 1899.) 

Per Curiam.] *Pahiier v. Curnen et al, 93 Fed. Rep. 464. 

33. Sarrazin v. W. R. Irby Cigar & Tobacco Co. Lim., 
not reported. In Error to the Circuit Court of the United 
States for the Eastern District of Louisiana. Judgment of the 
Circuit Court affirmed. (C. C. A., 5th Cir. Apr. 11, 1899.) 
Pardee, J.] * Sarrazin v. W. R. Irby Cigar & Tobacco Co, 

Lim., 93 Fed. Rep. 624. 

34. Richardson v. D. M. Osborne & Co. et al, 82 Fed. Rep. 
95. Appealed from the Circuit Court of the United States for 
the Northern District of New York. Decree of the Circuit 
Court affirmed. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Shipman, J.] * Richardson v. D. M. Osborne & Co. et al, 93 

Fed. Rep. 828. 

35. Warren y. Casey etal, 91 Fed. Rep. 653. Appealed from 
the Circuit Court of the United Stat?s for the Eastern District 
of Pennsylvania. Decree of the court below that the charge of 
infringement had not been made out, affirmed. (C. C. A. 
May 1, 1899.) 

KiRKPATRiCK, J.] * Warren v. Casey et al, 93 Fed. Rep. 963. 

36. Christy et al v. Hygeia Pneumatic Bicycle Saddle Co. 
etal, 87 Fed. Rep. 902. Appealed from the Circuit Court of 
the United States for the District of Maryland. Decree dis- 
missing the bill affirmed. (C. C. A., 4th Cir. May 2, 1899.) 
GoFF, J.] * Christy et al v. Hygeia Pneumatic Bicycle Saddle 

Co. etal, 93 Fed. Rep. 965. 

37. Ryan v. Runyon et al, not reported. Appealed from 
the Circuit Court of the United States for the District of New 



DECISIONS OF THE FEDERAL COURTS. 79 

Jersey. Decree of the Circuit Court ailirmed. (C. C. A., 
3dCir. May 4, 1899.) 

AcHESON, J.] *Ryan v. Runyoii et (iL, 93 Fed. Rep. 970. 

38. Briggs v. Duell, Commissioner of Patents, 87 Fed. Rep, 
479. Appealed from the Circuit Court of the United States for 
the District of Connecticut. Decree dismissing the bill afTirmed. 
(C. C. A., 2d Cir. Apr. 4, 1899.) 

Lacombe, J.] * Briggs v. Duell, Com. of Patents, 9o Fed. 
Rep. 972; 87 0. G. 1077. 

39. Sarrazin v. Augustus Craft Co., Lim. In error to the 
Circuit Court of the United States for the Eastern District of 
Louisiana. The pleadings, rulings and other questions involved 
in this case are the same as those involved in Sarrazin v. 
Tobacco Co. 93 Fed. Rep. and for the reasons therein stated, 
the judgment of the Circuit Court is affirmed. (C. C. A., 5th 
Cir. Apr. 11, 1899.) 

Pardee, J.] * Sarrazin v. Augustus Craft Co. ct ciL, 93 Fed 
Rep. 988. 

40. Overweight Counterbalance Elevator Co. v. Improved 
Order of Red Men's Hall Association of San Francisco, 86 Fed. 
Rep. 338; Sand. Pat. Dig. '98, 46, 47. In error from the Cir- 
cuit Court of the United States for the Northern District of Cal- 
ifornia. Judgment of the Circuit Court affirmed. (C. C. A., 
9th Cir. Feb. 13, 1899.) 

Hawley, J.] * Overweight Counterbalance Elevator Co. v. 
Improved Order of Red Men's Hall Associ- 
ation of San Francisco, 94 Fed. Rep. 155. 

41. Sarrazin v. Preston et al. In error to the Circuit Court of 
the United States for the Eastern District of Louisiana. For 
the reasons given in Sarrazin v. W. R. Irby Tobacco Co., 93 
Fed, Rep. 624, the judgment of the Circuit Court is affirmed. 
(C. C. A., 5th Cir. June 1, 1899.) 

Per Curiam.] * Sarrazin v. Preston et al, 94 Fed. Rep. 1023. 

42. Blakey et al. v. Nat'l Mfg. Co. et al. Appealed from the 
Circuit Court of the United States for the Western District of 
Pennsylvania. Decree of the lower court denying preliminary 



80 DECISIONS OF THE FEDERAL COURTS. 

injunction affirmed for the reason that infringement was not 
clearly established. (C. C. A., 3d Cir. June 1, 1899.) 
Dallas, J.] * Blakey et al. v. Nat'l Mfg. Co., 95 Fed. Rep. 
136. 

43. United States Repair & Guaranty Co. et al. v. Standard 
Paving Co., 87 Fed. Rep. 339. Appealed from the Circuit 
Court of the United States for the Northern District of New 
York. Decree of lower court affirmed. (C. C. A., 2d Cir. 
May 25, 1899.) 

Shipman, J.] * United States Repair & Guaranty Co. et al. v. 
Standard Paving Co., 95 Fed. Rep. 137. 

44. Nelson et al. v. A. D. Farmer & Son Type Founding Co., 
91 Fed. Rep. 418. Appealed from the Circuit Court of the 
United States for the Southern District of New York. Decree 
of lower court affirmed in the main but modified as to several 
of the claims in question. (C. C. A., 2d Cir. May 25, 1899.) 
Shipman, J.] * Nelson et al. v. A. D. Farmer & Son Type 

Founding Co. et al, 95 Fed. Rep. 145. 

45. Western Electric Co. v. Millheim Electric Tel. Co. et ed., 
88 Fed. Rep. 505; Sand. Pat. Dig., 1898, 5, 6, 116. Appealed 
from the Circuit Court of the United States for the Western 
District of Pennsylvania. Decree of lower court affirmed. (C. 
C. A., 3d Cir. June 8, 1899.) 

KiRKPATRicK, J.] =^ Millheim Electric Tel. Co. et al. v. Western 
Electric Co., 95 Fed. Rep. 152. 

46. Cushman Paper Box Mach. Co. v. Godclard et al, 90 Fed. 
Rep. 727; Sand. Pat. Dig. 1899. Appealed from the Circuit 
Court of the United States for the District of Massachusetts. 
Decree affirmed. (C. C. A., 1st Cir. June 1, 1899.) 
Putnam, J.] * Cushman Paper Box Mach. Co. v. Goddard etal. 

88 0. G. 2410, 95 Fed. Rep. 664. 

47. Sprague Electric Ry. & Motor Co. v. Nassau Electric Ry. 
Co., 91 Fed. Rep. 786. Sand. Pat. Dig. 1899. Appealed from 
the Circuit Court of the United States for the Eastern District 
of New York. The part of the order den3'ing an injunction is 
affirmed; the part granting an injunction is reversed. (C. C. 
A., 2d Cir. May 25, 1899.) 

Per Curiam.] * Sprague Electric Ry. & Motor Co. v. Nassau 
Electric Ry. Co., 95 Fed. Rep. 821. 



DECISIONS OF THE FEDERAL COURTS. 81 

48. MacColl v. Knowles Loom W'ks, 87 Fed. Rop. 727, Sand. 
Pat. Dig. 1898, 117. Appealed from the Circuit Court of the 
United States for the District of Massachusetts. Decree affirmed. 
(C. C. A., 1st Cir. May 31, 1899.) 

Colt, J.] * MacColl v. Knowles Loom W'ks, 95 Fed. Rep. 982. 

49. MacColl v. Crompton Loom W'ks, 87 Fed. Rep. 731. 
Appealed from the Circuit Court of tlie United States for the 
District of Massachusetts. Decree aflirmed. (C. C. A., 1st 
Cir. May 31, 1899.) 

Colt, J.] * MacColl v. Crompton Loom ^^^'ks, 95 Fed. Rep. 
987. 

50. Bass et al. v. Henry Zeltner Brewing Co., 87 Fed. Rep. 
468. Appealed from the Circuit Court of the United States for 
the Southern District of New York. Decree affirmed upon 
opinion of court below. (C. C. A., 2d Cir. Mar. 17, 1899.) 
Per Curiam.] *Bass et al. v. Henry Zeltner Brewing Co., 95. 

Fed. Rep. 1006. 

51. Flomerfelt v. Newwitter cUJ. , 88 Fed. Rep. 696. Sand. 
Pat. Dig. 1898, 6, 30. Appealed from the Circuit Court of the 
United States for the Southern District of New York. Decree 
affirmed on opinion of court below. (C. C. A., 2d Cir. Mar. 
15, 1899.) 

Per Curiam!] *Flomerfelt v. NeAvwitter et al, 95 Fed. Rep. 
1006. 

52. Wm. Rogers ^Ifg. Co. v. Rogers, 84 Fed. Rep. 639. Ap- 
pealed from the Circuit Court of the United States for the East- 
ern District of New York. Order denying preliminary injunc- 
tion affirmed. Wallace, C. J. concurring in opinion of court 
below and Shipman, C. J. dissenting. (Before Wallace and 
Shipman, C. Js. ) 

Per Curiam.] *Wm. Rogers Mfg. Co. v. Rogers, 95 Fed. 
Rep. 1007. 

53. Thompson el al. v. N. T. Bushnell Co., 88 Fed. Rep. 81. 
Appealed from the Circuit Court of the United States for the 
District of Connecticut. Decree affirmed. Wallace, J. dis- 
senting. (C. C. A., 2d Cir. May 25, 1899.) 

Lacombe, J.] * Thompson et al. v. N. T. Bushnell Co., 96 
Fed. Rep. 238. 
6 



82 DECISIONS OF THE FEDERAL COURTS. 

54. Way V. McClarin, 91 Fed. Rep. GG3. Sand. Pat. Dig., 
1899. Appealed from the Circuit Court of the United States 
for the Eastern District of Pennsylvania. Decree afHrnied and 
appeal dismissed. (C. C. A., 3d Cir. May 9, 1899.) 
BuFFiNGTON, J.] * Way t'. McChuin, 96 Fed. Rep. 416. 

55. Ball & Socket Fastener Co. v. C. A. Edgarton Mfg. Co. 
Appealed from the Circuit Court of the United States for the 
District of Massachusetts. Decree dismissing bill affirmed. 
(C. C. A., 1st Cir. May 26, 1899.) 

Putnam, J.] "-^ Ball & Socket Fastener Co. v. C. A. Edgarton 
Mfg. Co., 96 Fed. Rep. 489. 

56. Union Switch & Signal Co. d al. v. Philadelphia & R. R. 
■Co. et at., 87 Fed. Rep. 906. Appealed from the Circuit Court 
•of the United States for the Eastern "District of Pennsylvania. 
Decree affirmed. (C. C. A., 3d Cir. Sept. 13, 1899.) 
KiRKPATRicK, J.] ^ Union Switch & Signal Co. et al. v. Phila- 
delphia & R. R. Co., 96 Fed. Rep. 761. 

57. Westinghouse Air-Brake Co. v. New York Air-Brake Co. 
et al, 87 Fed. Rep. 882. Appealed from the Circuit Court of 
the United States for the Southern District of New York. De- 
cree of the Circuit Court affirmed. Lacombe, J., dissenting. 
(C. C. A., 2d Cir. .July 18, 1899.) 

Shipman, J.] * Westinghouse Air-Brake Co. v. New York Air- 
Brake Co. et al, 96 Fed. Rep. 991. 

58. Buzzell v. Reynolds, not reported. Appealed from the 
Circuit Court of the United States for the District of Massa- 
chusetts. Decree of the Circuit Court affirmed. (C. C. A., 1st 
Cir. Sept. 14,1899.) 

Colt, J.] * Reynolds v. Buzzell, 96 Fed. Rep. 997. 

59. C. & A. Potts & Co. V. Creager et a/., 77 Fed. Rep. 454. 
Appealed from the Circuit Court of the United States for the 
Southern District of Ohio. Decree of the Circuit Court dismiss- 
ing the bill as to the patent to Potts, No. 368,898, affirmed. 
(C. C. A., 6th Cir. Oct. 23, 1899.) 

Taft, J.] =K,1. & A. Potts & Co. V. Creager et al, 97 Fed. 
Rep. 78. 

60. Westinghouse Electric & Mfg. Co. v. Triumph Electric 



DECISIONS OF THE FEDEHAI, COURTS. 83 

Co., not reported. Ap})ea]e(l from tlie Circuit Court of the 
United States for the Soutliern District of Ohio. Decree dis- 
missing bill affirmed. (C. C. A., Gth Cir. Oct. 3, 1897.) 

Taft, J.] * Westinghouse Electric & ^Nlfg. Co. v. Triumph 
Electric Co., 97 Fed. Rep. 99. 

61. McBride v. Kingman ct ah Same v. Sickels el al. Same 
V. Randall et al. Same r. Ainsworth H at., 72 Fed. Rep. 908. 
Appealed from the Circuit Court of the United States for the 
Southern District of Iowa. Decree dismissing bills adlrnied. 
(C. C. A., 8th Cir. Oct. 9, 1899.) 

Sanborn, J.] * McBride v. Kingman cf al. Same v. Sickels et 
ul. Same r. Randall ct al. Same v. Ains- 
wortl-i,e< al, 97 Fed. Rep. 217. 

62. Coburn Trolley-Track Co. r. Chandler et al., 91 Fed. Rep. 
260. Sand. Pat. Dig. 1899. Appealed from the Circuit Court 
of the United States for the District of Massachusetts. Decree 
affirmed. (C. C. A., 1st Cir. Sept. 14, 1899.) 

Putnam, J.] * Coburn Trolley-Track ]Mfg. Co. v. Chandler et 
al., 97 Fed. Rep. 333. 

63. Kenney V. Bent, 91 Fed. Rep. 259. Sand. Pat. Dig. 1899. 
Appealed from the Circuit Court of the United States for the 
District of INIassachusetts. Decree affirmed. (C. C. A., 1st Cir. 
Sept. 14, 1899.) 

Putnam, J.] ^iaCenney r. Bent, 97 Fed. Rep. 337. 

64. Kisinger-Ison Co. v. Bradford Belting Co., n(»t reported. 
Appealed from the Circuit Court of the United States for the 
Southern District of Ohio, Western Division. Decree affirmed 
as to the Kisinger patent. (C. C. A., 6th Cir. Oct. 3, 1899.) 

Taft, J.] * Kisinger-Ison Co. r. Bradford Belting Co., 97 Fed. 
Rep. 502. 

II. Reversed on Appeal. 

1. Thomas Robeits Stevenson Co. r. ]McFasscll, 88 Fed. Rep. 
278. Sand. Pat. Dig. 1898, Ho. Appealed from th(> Circuit 
Court of the United States for the Eastern District of Pennsyl- 
vania. Decree of the Circuit Court I'eversed, and the case re- 



84 DECISIONS OF THE FEDERAL COURTS. 

mandptl to that court with direction to enter a decree in favor of 
the complainant in the bill (C. C. A., 3d Cir. Nov. 28, 1898.) 
AcHEsoN, J.] * Thomas Roberts Stevenson Co. v. McFassell, 
90 Fed. Rep., 707. 

2. Pahner Pneumatic Tire Co. v. Lozier, 84 Fed. Rep. 659. 
Sand. Pat. Dig. '98, 36, 95. Appealed from the Circuit Court 
of the United States for the Eastern Division' of the Northern 
District of Ohio. Decree of the Circuit Court reversed, and the 
cause remanded, Avith direction to dismiss the bill and deny the 
relief prayed for by the ansAver, for the reason that the court 
finds that the respective patents alleged in the bill to be interfer- 
ing patents are void in res'pect to the claims in controversy, for 
lack of invention. (C. C. A., 6th Cir. Dec. 5, 1898.) 
Severexs, J.] ^^ Palmer Pneumatic Tire Co. v. Lozier, 90 Fed. 

Rep. 732. 

3. Hugbes et ol. v. American Box-Mach. Co., not reported. 
Appealed from the Circuit Court of the United States for 
the Southern District of New York. Interlocutory order grant- 
ing an injunction ijendente lite reversed, with costs. Held^ also, 
that the patent in suit was not infringed. (C. C. A., 2d Cir. 
Dec. 7 , 1898.) 

Shipman, J.] * American Box-Mach. Co. v. Hughes etah, 91 
Fed. Rep. 147. 

4. Stuart v. F. G. Stewart Co. et al, 85 Fed. Rep. 778. Ap- 
pealed from the Circuit Court of the United States for the North- 
ern District of Illinois. Decree of the Circuit Court reversed 
and the cause remanded with directions to enter a decree in 
favor of the complainant (appellant) pursuant to the prayer of 
the bill. (C. C. A., 7th Cir. Jan. 3, 1899.) 

Jenkins, J.] * Stuart v. F. G. Stewart Co. et nl, 91 Fed. Rep. 
243. 

5. Allen v. City of Boston, not reported. In error to the 
Circuit Court of the United States for the District of Massa- 
chusetts. Judgment of the Circuit Court reversed and the case 
remanded to that court with directions to set aside the verdict 
and proceed thereafter according to law unless the plaintiff be- 
low shall, within such time as that court may direct, remit all 



DECISIONS OF THE FEDERAL COURTS. 85 

damages in excess of one dollar. (C. C. A., 1st Cir. Dec. 9, 

1898.) 

Putnam, J.] * City of Boston r. Allen, 91 Fed. Kei.. 248. 

6. Joliet Mfg. Co. V. Sandwich Enterprise Co., not reported. 
Appeal from the Cin^uit Court of the United States for the 
Northern District of Illinois, Northern Division. Decree re- 
versed and cause remanded with directions to the court Ijelow 
to dismiss the bill. (C. C. A., 7th Cir. Jan. 8, 1899.) 
BuNN, J.] * Sandwich Enteri)rise Co. ct al. v. Joliet. Mfg. Co., 

91 Fed. Rep. 254. 

7. Pelzer v. Horn & Brannen Mfg. Co., 87 Fed. Rep. 869. 
Appealed from the Circuit Court of the United States for the 
Eastern District of Pennsylvania. Order of the Circuit Court 
granting preliminary injunction reversed and the cause re- 
manded for further proceedings. (C. C. A., 3d Cir. Dec. 21, 
1898.) 

AcHESON, J.] *IIorn & Brannen ^Nlfg. Co. v. Pelzer, 91 Fed. 
Rep. 665. 

8. Heap v. Greene et al. , 75 Fed. Rep. 405. Appealed from the 
Circuit Court of the United States for the District of Massachu- 
setts. Decree of the Circuit Court dismissing the bill reversed 
and the case remanded to that court with direction to enter a de- 
cree in favor of the complainant. (C. C. A., 1st Cir. Jan. 30, 
1899.) 

Brow.n, J.] =^-Heap v. Greene et ai, 91 Fed. Rep. 792. 

9. Centaur Co. v. Neathery, not reported. Appealed from 
the Circuit Court of the United States for the Eastern District of 
Texas. Order of Circuit Court refusing preliminary injunction 
reversed, and the cause remanded with instructions to grant 
same. (C. C. A. 5th Cir. Dec. 13, 1898.) 

SwAYNE, J.] * Centaur Co. v. Neathery, 91 Fed. Rep. 891. 

10. Centaur Co. v. Hughes Bros. Mfg. Co., not reported. 
Appealed from the Circuit Court of the United States for the 
Northern District of Texas. Order of Circuit Court refusing 
preliminary injunction reversed, and the cause remanded with in- 
structions to grant same. (C. C. A., 5th Cir. Dec. 18, 1898.) 
SwAYNE, J.] * Centaur Co. v. Hughes Bros. Mfg. Co., 91 Fed. 

Rep. 901. 



86 DECISIONS OF THE FEDERAL COURTS. 

11. Centaur Co. v. Reineckt', not reported. Appealed frona 
the Circuit Court of the United .States for the Northern District 
of Texas. Order of the Circuit Court refusing prehminary 
injunction reversed and the cause remanded with instructions 
to grant same. (C. C. A., 5th Cir. Dec. 13, 1898.) 
SwAY.\E, J.] * Centaur Co. v. Reinecke, 91 Fed. Rep. 1001. 

12. Saxlehner v. Neilson, 88 Fed. Rep. 71. Appealed from 
the Circuit Court of the United States for the Southern District of 
New York. Decree of the Circuit Court reversed and the cause 
remitted with instructions to dismiss the hill. (C. C. A., 2d 
Cir. Jan. 5, 1899.) 

Per Curiam.] * Saxlehner v. Neilson, 91 Fed. Rep. 1004. 

13. Beach r. Hohhsei ni, 82 Fed. Rep. 916. Appealed from 
the Circuit Court of the United States for the District of Massa- 
chusetts. Decree of the Circuit Court reversed as to claims 1, 
2 and 3, and affirmed as to claim 6, and the cause remanded 
with directions to proceed in conformity with this opinion. (C. 
C. A., 1st Cir. Feh. 13, 1899.) 

Colt, J.] * Beach v. Hobbs et al. — Holjhs fi al. v. Beach, 92 
Fed. Rep. 146. 

14. American Graphophone Co. r. Nat'l Gramophone Co. 
etal.^ 90 Fed. Rep., 824. Appealed from the Circuit Court of 
the United States for the South(n-n District of New York. Order 
granting an injunction pendente Utc reversed. (C. C. A., 2(1 Cir.) 
Shipman, J.] * American Grai)h()phone Co. v. Nat'l Gramo- 
phone Co. et al. , 92 Fed. Rep. 364. 

15. Hart & Hegeman IMfg. Co. v. Anchor Electric Co. et al, 
82 Fed. Rep. 911. Appealed from the Circuit Court of the 
United States for the District of Massachusetts. Decree reversed; 
and case remanded for further ])roceedings. (C. C. A., 1st Cir. 
Mar. 13, 1899.) 

Lowell, J.] *Hart <k Hegeman Mfg. Co. v. Anchor Electric 
Co. etal, 92 Fed. Rep. 657. 

16. Chaml)ers Bros. Co. v. Penfield, not reported. Ap- 
pealed from the Circuit Court of the United States for the 
Northern District of Ohio. Decree reversed as to claims 7, 9, 
10, 11 and 12 of patent No. 362,204, claim 2 of patent No. 



DECISIONS OF THE FEDERAL COURTS. 87 

297,675, claim No. G of patent No. 207, ()7o, and claim 1 of 
patent No. 275,467 on the ground that the claims are invalid 
for want of invention. (C. C. A., 6th Cir. "Shn: 7, 1899.) 
Taft, J.] *Pen(ield r. Chambers Bros. Co., 92 Fed. Rep. 630. 

17. Palmer ct al. r. John E. Brown Mfg. Co., 92 Fed. Rep. 
925. Appealed from the Circuit Court of the United States for 
the District of Massachusetts. Decree of Circuit Court reversed 
and cause remanded with direction to enter a decree in favor of 
complainants sustaining the validity of claims 9, 10, 14, 16, 18, 
19, 22 and 24 of com{)lainants' patent No. 308, 9^1, Dec. 9, 1884, 
adjudging that said claims have heen infringed, and other relief 
prayed. (C. C. A., 1st Cir. Mar. 16, 1899.) 

Browx, J.] '^= Palmer et al. r. John E. Brown Mfg. Co., 92 
Fed. Rep. 925. 

18. Dodge et al. v. Fulton Pulley Co. et al, not reported Ap- 
pealed from the Circuit Court of the United States for the 
Northern District of New York. Order granting a jireliminary 
injunction reversed. (C. C. A., 2d Cir. Dec. 7, 1898.) 
Lacombe, J.] * Dodge et al. r. Fulton Pulley Co. et a/., 92 

Fed. Rep., 995. 

19. Peck, Stow ct Wilcox Co. v. FvayetaL, 88 Fed. Rep. 784. 
Sand. Pat. Dig. 1898, 47. Appealed from the Circuit Court of 
the United States for the District of Connecticut. Order grant- 
ing preliminary injunction reversed. (C. C. A., 2d Cir. Nov. 
15, 1898.) 

Per Curiam.] =^Peck, Stow & Wilcox Co. v. Fray et a!., 92 
Fed. Rep. 1021. 

20. Batcheller r. Thomson (2 cases). Thomson r. Batchcller, 
86 Fed. Rep. 630. Sand. Pat. Dig. 1898, 152. Appealed from 
the Circuit Court of the United States for the Southern District 
of New York. Decrees of the Circuit Court reversed. (C. C. 
A., 2 Cir. April 4, 1899.) 

SriiPMAX, J.] -''^ Batclieller ?■. Thomson (2 cases). 

Thomson v. Batcheller, 93 Fed. Rep. 660. 

21. Whcatfield v. Reubens et aJ., not reported. Appealed 
from the Circuit Court of the United States for the Northern 
District of Illinois. Order granting a preliminary injunction 



88 DECISIONS OF THE FEDERAL COURTS. 

reversed, as the patent sued on is invalid. (C. C. A., 7th Cir. 

Feb. 7, 1899.) 

Woods, J.] * Rubens et al. v. Wheatfield, 93 Fed. Rep. 677. 

22. Thompson v. Tliird Avenue Traction Co. et al, 89 Fed. 
Rep. 321. Appealed from the Circuit Court of the United 
States for the Western District of Pennsylvania. Decree of the 
Circuit Court reversed and the cause remanded to that court 
with direction to enter a decree in favor of complainant. 
(C. C. A., 3d Cir. May 1, 1899.) 

AcHESON, J.] * Thompson v. Third Avenue Traction Co. et al, 
93 Fed. Rep. 824. 

23. Simonds Rolling-Machine Co. v. Hathorn Mfg. Co., 90 
Fed. Rep. 201, Sand. Pat. Dig. 1899. Ai)pealed from the Cir- 
cuit Court of the United States for the District of Maine. De- 
cree of the Circuit Court modified as to requiring an accounting 
by each individual defendant. (C. C. A., 1st Cir. Apr. 25, 
1899.) 

Colt, J.] * Simonds Rolling-Mach. Co. v. Hathorn INIfg. Co. 
et al. Hathorn Mfg. Co. et al. v. Simonds Roll- 
ing-Mach. Co., 93 Fed. Rep. 958. 

24. Warren v. Casey et al, 91 Fed. -Rep. 653, Sand. Pat. 
Dig. 1899. Appealed from the Circuit Cburt of the United 
States for the Eastern District of Pennsylvania. Decree of the 
court below holding the patent in suit invalid reversed. (C. C. 
A. May 1, 1899.) 

KiRKPATRiCK, J.] =^ Warren v. Casey et al, 93 Fed. Rep. 963. 

25. Tower v. Eagle Pencil Co., 90 Fed. Rep. 662. Appealed 
from the Circuit Court of the United States for the Southern 
District of New York. Decree of lower court reversed with in- 
structions to dismiss the l)ill. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Wallace, J.] * Tower v. Eagle Pencil Co., 94 Fed. Rep. 361. 

26. Nat'l Cash Register Co. v. Leland et al. Same v. Wright 
et aZ., 77 Fed. Rep. 242. In error to the Circuit Court of the 
United States for the District of INIassachusetts. The judgment 
of the Circuit Court is reversed, the verdict set aside and the 
case remitted to that court for further proceedings in accordance 
with law. (C. C. A., 1st Cir. Apr. 12, 1899.) 

Lowell, J.] * Nat'l Cash Register Co. v. Leland et al. Same 
V. Wright et al, 94 Fed. Rep. 502. 



DECISIONS OF THE FEDERAL COURTS. 89 

27. Crosby Steam Gage and Valve Co. v. Ashton Valve 
Co., not reported. Appealed from the Circuit Court of the 
United States for tlie District of ^lassachusetts. Decree of Court 
below reversed and the case remanded with directions to dismiss 
the bill. (C. C. A., 1st Cir. May 4, 1899.) 

Putnam, J.] * Crosby Steam Gage & Valve Co. v. Ashton Valve 
Co., 94 Fed. Rep. 510. 

28. Bundy Mfg. Co. v. Detroit Time-Register Co., not 
reported. Appealed from the Circuit Court of the United 
States for the Eastern District of Micliigan. Decree of the Cir- 
cuit Court reversed, and case remanded with directions to enter 
a decree finding defendant guilty of infringement and for an 
injunction and account. (C. C. A., 6th Cir. May 2, 1899.) 
LuRTON, J.] * Bundy Mfg. Co. v. Detroit Time-Register Co., 

94 Fed. Rep. 524. 

29. Elgin Nat'l Watch Co. v. Illinois Watch Case Co. et al, 
89 Fed. Rep. 487. Sand. Pat. Dig. 1898, 145. Appealed from 
the Circuit Court of the United States for the Northern District 
of Illinois. Decree of the court below reversed and the cause 
remanded with direction to dismiss the bill. (C. C. A., 7th 
Cir., June 6, 1899.) 

Jenkins, J.] * Illinois Watch Case Co. et al. v. Elgin Nat'l 
Watch Co., 94 Fed. Rep. 667. 87 0. G. 2323. 

30. Huntington Dry Pulverizer Co. et al. v. Whitaker Cement 
Co. et al, 89 Fed. Rep. 323. Sand. Pat. Dig. 1898, 43, 118. 
Appealed from the Circuit Court of the United States for the 
District of New Jersey. Decree of the Circuit Court reversed 
and cause remanded with direction to dismiss the bill. (C. C. A., 
3d Cir. July 6, 1899.) 

Dallas, J.] * Whitaker Cement Co. et al. v. Huntington Dry 
Pulverizer Co. et al, 95 Fed. Rep. 471. 

31. Hartz v. Cleveland Block Co., not reported. Appealed 
from the Circuit Court of the United States for the Eastern 
Division of the Northern District of Ohio. Decree reversed. 
(C. C. A., 0th Cir. June 0, 1899.) 

Lurton, J.] * Hartz ?-. Cleveland Block Co., 95 Fed. Rep. 081. 

32. Pelzer v. City, of Binghanipton et al., not reported. 



90 DECISIONS OF THE FEDERAL COURTS. 

Appealed from the Circuit Court of tlie Ignited States for the 
Northern District of New York. Order denying injunction re- 
versed; cause remanded with instructions to issue order of in- 
junction ^ieurfenie //^c. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Shipman, J.] *Pelzert'. City of Binghampton et al, 95 Fed. 
Rep. 823." 

33. Carr r. Bennett, not reported. In error to Circuit 
Court of tlie United States for the Soutliern District of New 
York. Judgment reversed. (C. C. A., 2d Cir. J ul}- 18, 1899.) 
Thomas, J.] -'- Bennett v. Carr, 9(5 Fed. Rep. 213. 

34. Welsbach Light Co. v. Apollo Incandescent Gaslight Co. 
et al, 94 Fed. Rep. 1005. Sand. Pat. Dig., 1899. Appealed 
from the Circuit Court of the United States for ths Southern 
District of New York. Order denying preliminar}' injunction 
reversed. (C. C. A., 2d Cir. Apr. 4, 1899.) 

Shipman, J.] * Welsbach Light Co. v. Apollo Incandescent 
Gaslight Co. et al, 87 0. G. 1784; 9(5 Fed. 
Rep. 332. 

35. Carnegie Steel Co. Lim. v. Cambria Iron Co., 89 Fed. 
Rep. 721. Sand. Pat. Dig., 1898, 5, 11, 31, 116. Appealed 
from the Circuit Court of the United States for the Western Dis- 
trict of Pennsylvania. Decree reversed and cause remanded 
Avith directions to dismiss the bill. (C. C. A., 3d Cir. Aug. 
21, 1899.) 

KiRKPATRicK, J.] *Caml)ria Iron Co. r. Carnegie Steel Co. 
Lim., 96 Fed. Rep. 850. 

36. Williames et al v. McNeely et al, 64 Fed. Rep. 766. 
Appealed from the Circuit Court of the United States for the 
Eastern District of Pennsylvania. Decree reversed. (C. C. A., 
3d Cir. Oct. 4, 1899.) 

Bradford, J.] * McNeely et al r. Williames et al. 

Williames et al. v. McNeely ci al, 96 Fed. 
Rep. 978. 

37. C. & A. Potts & Co. V. Creager et ah, 77 Fed. Rep. 454. 
Appealed from the Circuit Court of the United States for the 
Southern District of Ohio. Decree dismissing the bill as to 



DECISIONS OF THE FEDERAL COURTS. 91 

the Potts putent No. 322,398 reversed. (C. C. A., Gtli Cir. 
Oct. 23, 1899.) 

Taft, J.] *C. & A. Potts & Co. V. Crcager d a/., 97 Fed. 
Rep. 78. 

38. Magic Light Co. v. Economy Gas-Lamp Co., not reported. 
Appealed from the Circuit Court of the United States for the 
Northern Division of the Northern District of IlHnois. Decree 
granting prehminary injunction reversed, and cause remanded 
■with directions to dismiss the hill. (C. C. A., 7th Cir. Oct. 
3, 1899. ) 

Woods, J.] * Magic Light Co. i\ Economy Gas-Lan)p Co., 97 
Fed. Rep. 87. 

39. Celluloid Co. v. Arlington Mfg. Co., 85 Fed. Rep. 449. 
Sand. Pat. Dig. 1898, 6. Appealed from the Circuit Court of 
the United States for the District of New Jersey. Decree re- 
versed. (C. C. A., 3d Cir. Sept. 22, 1899.) 

Bradford, J.] ^^ Arlington Mfg. Co. v. Celluloid Co., 97 Fed. 
Rep. 91. 

40. Kisinger-Ison Co. v. Bradford Belting Co., not reported. 
Appealed from the Circuit Court of the United States for the 
Southern District of Ohio, Western Division. Decree reversed 
as to the Morrison patent. (C. C. A., 6th Cir. Oct. 3, 1899.) 
Taft, J.] * Kisinger-Ison Co. v. Bradford Belting Co., 97 Fed. 

Rep. 502. 

41. Fenton Metallic Mfg. Co. v. Office Specialty Mfg. Co., 12 
C. A. D. C. 201. Appealed from the Court of Appeals for the 
District of Columbia. Decree of the court l^elow reversed and 
case remanded with directions that the bill be dismissed. 
(Sup. Ct. U. S. May 15, 1899.) 

Brown, J.] ^^ Office Specialty Mfg. Co. v. Fenton INIetallic 
Mfg. Co., 87 0. G. 1608. 

III. Appeals Dismissed. 

1. Von Emperger v. City of Detroit. Appealed from the Cir- 
cuit Court of the United States for the Eastern District of ]\Iich- 
igan. Dismissed for failure to print record. (C. C. A., 6th 
Cir. Mar. 7, 1899.) 
* Von Euiperger v. City of Detroit, 92 Fed. Rep. 1023. 



92 DECISIONS OF THE FEDERAL COURTS. 

2. Western Electric Co. v. Citizens Telephone Co., 89 Fed. 
Rep. 670. Sand. Pat. Dig., 1898, 121. Appealed from the 
Circuit Court of the United States for Western District of Mich- 
igan. Dismissed on motion of appellant. (C. C. A., 6th Cir. 
Mar. 27, 1899.) 

* Western Electric Co. v. Citizens Telephone Co. et al, 92 Fed. 
Rep. 1023. 

3. E. T. Burrowes Co. v. Adams & Westlake Co. et al , 93 
Fed. Rep. 462. Sand. Pat. Dig. 1899. Appealed from the 
Circuit Court of the United States for the District of Maine. 
Appeal dismissed. (C. C. A., 1st Cir. Apr. 27, 1899.) 

Per Curiam.] *E. T. Burrowes Co. v. Adams & Westlake Co. 
etal, 93 Fed. Rep. 987. 

4. Welsbach Light Co. v. Rex Incandescent Light Co. et al., 
87 Fed. Rep. 477. Sand. Pat. Dig. 1898, 124. Appealed from 
Circuit Court of the United States for the Southern District of 
New York. Appeal dismissed and cause remanded to the Cir- 
cuit Court with instructions to entertain another motion for an 
injunction. (C. C. A., 2d Cir. Apr. 27, 1899.) 

Per Curiam.] '-i^ Welsbach Light Co. v. Incandescent Light 
Co. etal, 93 Fed. Rep. 989. 

5. Carter-Crume Co. v. Ashley et al, 68 Fed. Rep. 378. 
Appealed from the Circuit Court of the United States for the 
Northern District of New York. Appeal dismissed on motion 
of appellee. (C. C. A., 2d Cir. Nov. 10, 1897.) 

Per Curiam.] * Carter-Crume Co. v. Ashley et al, 96 Fed. 
Rep. 1004. 

6. Tannage Patent Co. v. Donallan, 93 Fed. Rep. 811. 
Sand. Pat. Dig. 1899. Appealed from the Circuit Court of the 
United States for the District of Massachusetts. Appeal dis- 
missed per stipulation. (C. C. A., 1st Cir. Nov. 2, 1899.) 

Per Curiam.] * Donallan v. Tannage Patent Co., 96 Fed. Rep. 
1004. 

7. New York Filter Mfg. Co. v. Elmira Water W'ks Co., 83 
Fed. Rep. 1013. Appealed from the Circuit Court of the 
United States for the Northern District of New York. Appeal 



DECISIONS OF FOREIGN COURTS. 93 

dismissed on consent inirsuant to the 20th rule. (C. C. A., 2d 
Cir. Mar. IG, 1898.) 

Per Curiam.] ^Ehninv Water Wks Co. v. New York Filter 
Mfg. Co., 9G Fed. Rep. 1005. 
8. Brown d at. r. Reed ^ifg. Co., 81 Fed. Rep. 48. Ap- 
pealed from the Circuit Court of the United States for the 
Northern District of New York. Appeal dismissed on consent 
pursuant to 20th rule. (C. C. A., 2d Cir. Mar. 10, 1898.) 

Per Curiam.] *Reed INIfg. Co. v. Brown et aL, 9G Fed. Rep. 
1005. 

IV. Disposition of Petition for Rehearing. 

1. Antisdel v. Chicago Hotel Cabinet Co., 89 Fed. Rep. 308. 
Sand. Pat. Dig. 1898, 24, 37, 104, 109. Petition for rehearing 
denied. (C. C. A., 7th Cir. Dec. 1, 1898.) 

* Antisdel v. Chicago Hotel Cabinet Co., 90 Fed. Rep. 828. 

2. Atwater et al. v. Castner el oL, 88 Fed. Rep. G42. Petition 
that mandate be recalled and a rehearing be ordered dismissed. 

* Atwater et al. v. Castner et al. , 90 Fed. Rep. 828. 

3. Willcox & Gibbs Sewing-Mach. Co. v. Merrow Mach. Co., 
98 Fed. Rep. 206; 85 0. G. 1078. Sand. Pat. Dig. 1898, 43, 
108, 131. Api)lication for rehearing was allowed upon the 
single "question of similarity of equivalency of defendants' 
hoop looper to complainants' double-jawed looper. " No cause 
for modifying the original opinion appears. (C. C. A., 2d 
Cir. Mar. 1, 1899.) 

Lacombe, J.] *AVillcox & Gibbs Sewing-Mach. Co. v. ^lerrow 
Mach. Co. elal, 93 Fed. Rep. 215. 

4. Hart & Hegeman Mfg. Co. v. Anchor Electric Co. et al., 
92 Fed. Rep. G57. Sand. Pat. Dig. 1899. Petition for rehear- 
ing denied. (C. C. A., 1st Cir. Aug. 1, 1899.) 

Per Curiam.] *Hart & Hegeman Mfg. Co. v. Anchor Electric 
Co. etal, 97 Fed. Rep. 224. 

Decisions of Foreign Courts. 

The decisions of courts of a foreign country that a certain pro- 
cess is patentable, are in no way controlling upon the courts of 
this country, but they are valuable as the opinions of trained 



94 DEFENSES. 

experts in the country of the inventor where the })articuhir art 
in question is l)est understood. The oi)inions of such men, 
learned, able and disinterested, officially ex})ressed after thor- 
ough examination, are persuasive to Sciy the least. (C. C, 
S. D. N. Y. May 8, 18'J9.) 

CoxE, J.] *Badische Analin & Soda Fabrik v. Kalle et al, 94 
Fed. Rep. 1G3. 

Defenses. 

I. Is General. 
If. Burden of Proof. 

I. In General. 

1. The interveners may make any defense which the original 
defendants could make, but they cannot strengthen that defense 
by showing that if they had tliemselves been sued, their posi- 
tion would have been stronger, nor set up a defense not open to 
the original defendants. (C. C, E.' D. Penn. Fed. 23, 1899.) 
Dallas, J.] * Powell et al. v. Leicester Mills et al, 92 Fed. 

Rep. 115. 

2. Aliandonment, not a{)pearing on the face of the bill, is a 
dfifense which must be interposed by answer showing the facts. 
(Walk. Pat. § G02.) (C. C., D. Conn. Feb. 22, 1899.) 
Townsend, J.] * Warren Featherbone Co. v. ^^'arner Bros. Co., 

92 Fed. Rep. 990. 

II. Burden of Proof. 

1. The burden of proof to show that the patent in suit has 
been anticii)ated l)y prior patents is u})on the party who alleges 
such anticipation, and he must establish the fact of anticipation 
and want of originality by clear and convincing evidence and 
place the matter beyond a reasonal)le doul)t; particularly so 
where the ])atent in suit has been held valid in another suit. 
(C. C, N. D. Cal. Dec. 12, 1898.) 

Morrow, J.] * Bowers r'. San Francisco Bridge Co., 91 Fed. 
Rep. 381. 

2. Anticipation to defeat a patent must be proved beyond a 
reasonable doubt. (C. C, S. D. N. Y. Dec. 16, 1898.) 
Wheeler, ,J.] * Nelson et al. v. Farmer Type-Founding Co. 

etal, 91 Fed. Rep. 418. 



DESIGNS. 95 

8. The ])uidcn of proving anticipation rests upon the defend- 
ants, and every reasonable doubt should be resolved against 
them. (C. C./S. D. N. Y. May 8, 1899.) 
CoxE, J.] ^i'Badische Analin S: Soda Fabrik r. Kalle ct al., 94 
Fed. Rep. 163.) 

4. The existence of doubt defeats anticipation. */cZ. 

Designs. 

I. Appeal and Petition. 

II. Construction of Statutes. 

III. Infringement. 

IV. Limited to a Single Invention. 
V. Interference. 

VI. Practice in the Patent Office. 
A^'II. Test of Identity. 

I. Appeal and Petition. 

1. Where a petition was takeri to the Commissioner praying 
that the examiner be advised that applicant's article can be 
protected under the design statute and that the said application 
should be allowed unless the design l)e found to be fully antici- 
pated, Held, that this is a question which goes to the merits of 
the case and is appealaljle to the examiners-in-chief. (Oct. 25, 
1899. ) 

DuELL, C] Ex parte Groyes, 89 0. G. 1671. 

2. Where the Commissioner Avas asked by petition to advise 
the examiner what is or is not a competent reference, Held that 
this is a c]uestion not to be settled by petition. The examiner 
in the first instance is the judge of the pertinency of the refer- 
ence or ground of rejection. The Commissioner may diffei' 
wiih him, and when the case comes to him on ajipeal he may 
properly make that difference of opinion known; but he is not 
authorized in an irregular way to coerce the independent judg- 
ment of the examiner. Id. 

3. Where it was prayed that the examiner be instructed that 
originality and utility are proper grounds to justify the grant of 
design patent to the applicant. Held that this is a ([uc^^tion of 
merits Avhich is appealable to the examiners-in-chief in the first 
instance. Id. 



96 DESIGNS. 

4. Where an applicant claimed a design for inner and outer 
tubes forming (he fire-walls between the inner and outer Hame 
of a hydrocarbon-burner, and tbe examiner required him to 
amend his case to set up a single definite article of manufacture 
and not two articles, on petition to the Commissionei', Held that 
the question presented is one involving the merits of the claim 
rather than its form, and that therefore it is not reviewable on 
petition. {Ex, parte Brower, 4 0. G. 450; ex parte Smith, 81 
0. G. 9(59; ex parte Tallman, 82 0. G. 337; ex parte Brand, 83 
0. G. 747, and ex parte Kapp, 83 0. G. 1993, modified.) 
(Nov. 3, 1899.) 

Greeley, A. C] Ex parte '^Xievman and Harms, 89 0. G. 2067. 

5. Where an applicant asks for a design patent covering a 
certain form of device, the Office cannot i)roperly refuse to act 
upon the merits of the case and require him to sul)stitute there- 
for a claim to some other article, as to do so would deprive him 
of the statutory right of appeal to the examiners-in-chief, to the 
Commissioner, and to the Court of Appeals. Id. 

6. The holding that two or more elements covered by a single 
claim should be divided is in effect a holding that such claim 
cannot be allowed, and is such a refusal of the claim as entitles 
api^licant to a review of that action l>y the several tribunals 
mentioned in the statutes, since it is based upon the subject- 
matter covered and not the mere form of the claim. Id. 

II. Construction of Statutes. 

1. The broad proposition that R. S. § 4929 was not intended 
to apply to structures having movable parts, is not supported 
by the citation of any judicial decision; and although certain 
rulings of the Patent Office are cited to support the proposition, 
{Ex parte Tallman, 82 0. G. 337; ex parte Adams, 84 0. G. 311; 
ex parte Smith, 81 0. G. 969; ex parte Brower, C. D. 1873, 151), 
such a construction of the statute calls for an unwarranted and 
unreasonable limitation of the terms "manufacture " and " any 
article of manufacture," and leads to absurd and unjust results, 
(C. C, D. Mass. Dec. 5, 1898.) 

Brown, J.] * Chandler Adjustable Chair & Desk Co. v. Hay- 
wood Bros. & Wakefield Co., 91 Fed. Rep. 163. 

2. The whole purpose of Congress in authorizing the grant of 



DESIGNS. 97 

design }>atents was to tiivo encoiiram'njcnt to the clccorative 
arts. It contemplated not so inurh utility as ap})earanee. 
Section 4929 provides among other things that ''Any person 
■who * * * has invented and produced * * -•■ * any new, vi^e- 
ful and original shape or configuration of any article of manu- 
facture * * * * may * * * ohtain a patent tlierefor." The 
word "useful," introduced by revision of the patent laws into 
the statute does not have the same meaning as it has in the sec- 
tion providing for patents for useful inventions, hut was prob- 
ably inserted out of abundant caution to indicate that things 
which were vicious and had a tendency to corrupt, and in this 
sense were not useful, were not to be covered b}' the statutes. 
(C. C. A., 6th Cir. Oct. 3, 1899.) 

Taft, J.] * Westinghouse Electric & Mfg. Co. v. Triumph 
Electric Co. , 97 Fed. Rep. 99. 

III. Infringement. 

1. AMiere a design patent differs from prior design patents 
only in the shape or contour of a certain specified feature, 
Heldj that it is not infringed l)y a design in Avhich the shape or 
contour of that feature is different. (C. C, S. D. N. Y. Nov. 
19, 1898.) 

Wheeler, J.] *Mesinger Bicycle Saddle Co. v. Humber c^ al, 
94 Fed. Rep. 672. 

2. Where the similarity of appearance between an alleged 
infringing design and the design of the patent grows out of the 
general similarity in designs of such articles, rather than out of 
the particular similarity of the alleged infringing design to the 
design of the patent, and the patent was not of a primary 
nature. Held, there was no infringement. (C. C, S. D. N. Y. 
May 11, 1899.) 

Wheeler, J.] *Mesinger Bicycle Saddle Co. v. llmwljvr d (d., 
94 Fed. Rep. 674. 

IV. Limited to a Single Invention. 

1. Designs have relation to external appearance merely and 
are not concerned with internal structure. (Oct. 26, 1899.) 
Greeley, A. C] Feder v. Poyet, 89 0. G. 1343. 

2. In design patents it. is the showing of the design which is 

7 



98 DESIGNS. 

of prinuuT importance, tlie description l)eing merely auxiliary 
to the showing. The language of the description cannot be 
used to give to the design a generic meaning which would 
include designs so far different from the design shown that they 
would not be mistaken for it. (Ex parte Traitel, 25 0. G. 783; 
C. D., 1883, 92.) Id. 

3. There is no such distinction of generic and specific in 
design patents as there is in mechanical patents. If an inventor 
has a generic design capable of modification — that is, a design 
made up of a small number of simple elements to which other 
elements may be added without modification of the essential 
elements — he should in order to secure protection for the generic 
design show the design in his application in its simplest form. 
He must show the genus stripped of additions. Id. 

V. Interference. 

1. The issue in the present case being the conventional claim 
for the design showai and described, its meaning is to be ascer- 
tained from the drawing and description to which it refers. 
(Oct. 26, 1899.) 

Greeley, A. C] Feder v. Poyet, 89 0. G. 1343. 

2. If there is doubt as to the meaning of the issue and one 
])arty has a patent granted before the filing of the other party's 
application, its meaning is to be ascertained from the patent as 
well in design as in mechanical cases. Id. 

3. Held, that the designs produced by F. prior to P. 's filing 
date do not embody the invention in issue, and therefore priority 
awarded to P. Id. 

VI. Practice in the Patent Office. 

1. Where a claim was for "a design for ornament for the 
handle of a tooth-brush," etc., and the examiner required that 
the invention should be claimed as " a design for the handle of 
a tooth-brush," etc., Held, that the examiner's requirement 
should be sustained, as such an ornament is an intangible thing 
which should not under the circumstances and decisions be 
patented as a design, but the design patent should be granted 
for the instrument which applicant has invented and produced. 
(Mar. 31, 1899.) 
DuELL, C] Ex parte Hewitson, 87 0. G. 515. 



DISCLAIMEK. 99 

2. Held^ furtlior, tliat altlum^li applicant's design is produced 
by ornamentation instead of by sbape there is no more reason 
why it should be claimed as a design for an ornament than that 
a design consisting of the shape of an article or a design for a 
pattern for carpet should be claimed as a design for the shape or 
pattern instead of as a design for the article shaped or a design 
for the carpet. Id. 

3. To require division between the elements covered by a 
claim of the kind under consideration is analogous to requiring 
division between the elements covered by an alleged combina- 
tion claim in a mechanical application. It has been repeatedly 
held in such cases that, although the claim covers a mere aggre- 
gation and not a true combination, division between the ele- 
ments covered by it should not be insisted upon, but the claim 
should be rejected. (Nov. 3, ]899.) 

Greeley, A. C] Ex parte Sherman and Harms, 89 0. G. 2067. 

VII. Test of Identity. 

The true test of identity of design is sameness of appearance, 
in other words, sameness of effect upon the eye of the ordinary 
observer, and if two designs are so much alike that one may be 
readily taken for the other b}^ an ordinary observer, the earlier 
is an anticipation of the later, even though there may be differ- 
ences in detail and in non-essential matters. (C. C, E. D. 
Penn. July 10, 1899.) 

McPherson, J.] *Sagendorph v. Hughes, 95 Fed. Rep. 478. 

Disclaimer. 

I. Construction of. 
II. Delay in Filing. 
III. Under the Statute, 4917 R. S. 
I. Construction of. 

1. In considering the scope and effect to be given a disclaimer, 
the same rules are to be observed as in construing any other 
written instrument, and so as to carry out the intention of the 
person executing it, as indicated by its language when construed 
with reference to the proceedings of which it forms a part. It 
cannot be read independently of its relation to the original 



100 DISCLAIMER. 

specification of which it hecoines^ part when recorded. (C. C. 
A., 9th Cir. Oct. 24, 1897.) 

DeHaven, J.] * Graham v. Ear], 82 Fed. Rep. 737; 92 Fed. 
Rep. 155. 

2. B}^ disclaiming the broad claims of his patent and retain- 
ing the narrower ones, the patentee intended to limit his patent 
to the specific invention descril)ed in such narrower claims, and 
not to abandon them. */(i. 

3. Where it was manifest that an invention might be applied 
to any one of four varieties of an article of manufacture, but if 
applied to two of those varieties, it would subserve no useful 
purpose and the patent for such invention might fairly be held 
void for lack of utility, and when applied to the other two of 
those varieties it would accomplish a "desirable result," as 
both the Circuit Court and Court of Appeals held, Held, that 
there was an actual, separable invention, and that the specifica- 
tion and claim was broader than the invention. Held, further, 
that a disclaimer to the application of the invention to the two 
varieties Avas proper, and leaves the patent in force as to the 
other two varieties of the class of articles to which it added a 
desirable result. (C. C. A., 2d Cir. May 25, 1899.) 
Lacombe, J.] * Thompson et al. v. N. T. Bushnell Co., 96 

Fed. Rep. 238. 

II. Delay in Filing. 

Where the Circuit Court, from the evidence before it, did not 
consider a disclaimer to certain features of a patent in suit 
necessary, and it was onl}^ Avhen the decision of the Circuit 
Court of Appeals was filed that the owners of the patent were 
apprised of the necessity of such disclaimer, which was duly 
filed within six weeks thereafter. Held, that said patent owners 
acted with reasonable promptness in filing such disclaimer. 
(C. C. A., 2d Cir. May 25, 1899.) 

Lacombe, J.] -'= Thompson et al. v. N. T. Bushnell Co., 96 
Fed. Rep. 238. 

III. Under the Statute. § 4917 R. S. 

1. A disclaimer to be effective under the statute must give up 
some material or substantial part of the thing patented of which 



EQIITV. 101 

the patentee was not the orijiinal inventor. Tlie statute ex- 
pressly limits a disclaimer to a rejection of something elainied 
as new. (C. C. A., 3d Cir. Aug. 21, 1899.) 
KiRKPATRicK, J.] * Cambria Iron Co. v. Carnegie Steel Co. 
Lim., m Fed. Rep. 850. 
2. No disclaimer in a patent is necessary to the recovery of 
da.mages or costs in a suit for the infringement of the patent 
unless the patentee has included in the claims sued upon some- 
thing to which he was not entitled. (C. C. A., 3d Cir. Oct. 
4, 1899.) 
Bradford, J.] *McNeely et al. v. Williames et al. 

Wilhames et al. v. McNeely et al, 96 Fed. 
Rep. 978. 
Equity. 

I. Bill. 

(a) In General. 
(6) Multifariousness. 
II. Demurrer. 

III. Plea. 

IV. Answer. 

V. Jurisdiction. 
VI. Master's Report. 
VII. Res adjudicata, 
I. Bill. 

(a) In General. 

Where the complaint sets forth the invention of the patent 
upon which suit is brought by the name given it in the patent, 
and makes special reference to the patent "for further and 
fuller description of the invention therein patented," such refer- 
ence imports into the complaint the description contained, and 
is controlling as to the nature of the invention patented. (C. C. 
A., 9th Cir. Oct. 18, 1897.) 
DeHayen, J.] * Graham v. Earl, 82 Fed. Rep. 737; 92 Fed. 

Rep. 155. 
I. Bill. 

(b) Multifariousness. 

1. Unlawful competition before the grant of a patent is en- 



102 EQUITY. 

tirely distinct from aii}^ infringement after; the acts are separate 
and their consequences distinct. The setting up of both acts as 
grounds for relief makes two cases for distinct relief in the same 
bill. The demurrer for multifariotisness was sustained. (C. C, 
S. D. N. Y. Dec. 5, 1898.) 

Wheeler, J.] * Ball & Socket Fastener Co. v. Cohn et ciL, 90 
Fed. Rep. 664. 

2. The objection of multifariousness is one which addresses 
itself to the sound discretion of the court, and should not be 
sustained where the relief prayed for is of the same kind with 
respect to the matters complained of in the bill, and no hard- 
ship or injustice is likely to result from the inclusion of such 
matters in one suit. (C. C, D. Del. May ij, 1899.) 
Bradford, J.] *Dennison Mfg. Co. v. Thomas Mfg. Co., 94 

Fed. Rep. 651. 

3. A bill Avhieh sets up a claim for damages under the anti- 
trust law of July 2, 1892, and also sets forth facts upon which 
the complainants ask that defendants be enjoined from using 
complainants' trade-mark and trade-name is multifarious, inas- 
much as it joins two distinct causes of action, having no con- 
nection with each other, the one triable at law and the other is 
of equitable cognizance. (C. C, S. D. Ohio, W. D. July 31, 
1899. ) 

Thompson, J.] * Block et al. v. Standard Distilling & Dis- 
tributing Co., 95 Fed. Rep. 978. 

4. Where the l)ill of com})laint is based upon the infringe- 
ment of several patents each covering a device which is sold 
separately, and all used in various relations, no one machine 
using them all at one time, and such bill does not seek to 
restrain the infringement of any specific combination, it is bad 
for multifariousness. (C. C, N. D. 111. N. D. July 19, 1899.) 
KoHLSAAT, J.] * Louden Mach. Co. v. Montgomery Ward & 

Co., 96 Fed. Rep. 232. 

5. Such a case does not come within the rule which permits 
a plurality of patents to be sued upon in one action where the 
invention covered by those patents are embodied in one infring- 
ing process, machine, process, or composition of matter. ^Id. 



EQUITY. 103 

II. Demurrer. 

The failure of a bill to allege that the inventions set forth and 
claimed in the patents in suit were not abandoned before the 
application therefor, is no ground for demurrer. Abandon- 
ment, not appearing in the face of a bill, is a defense which 
must be interposed by answer showing the facts. (C. C, D. 
Conn. Feb. 22, 1899.') 

TowNSEXD, J.] * Warren Featherbone Co. r. Warner Bros., 
92, Fed. Rep. 990. 

III. Plea. 

Where the hearing was upon the plea, a general replication 
and the evidence taken in support of the plea, such plea being 
a special answer to the bill, nothing is put in issue so far as the 
plea extends, but the truth of the matter pleaded. And where 
the original plea was set down for argument as insuflicient in 
laAv, and the court permitted it to be amended, and no error 
having been assigned upon the ruling of the court in sustaining 
the plea as sufficient in law, the onlv question open to review 
on appeal is as to whether the court erred in holding that the 
plea was sustained by the evidence. If it was not supported it 
should have been overruled and the defendant ordered to answer, 
and if supported, the 1)111 should have been dismissed. (C. C. 
A., 6th Cir. June 6, 1899.) 
LuRTOX, J.] "^^ Hartzf. Cleveland Block Co., 95 Fed. Rep. 681. 

IV. Answer. 

Where an amendment to the answer pleads the effect of cer- 
tain written instruments in the nature of an assignment, which 
were filed in the case subsequent to the original answer but 
long before the case was submitted, and such amendment does 
not affect the facts of the case, but may be said to be an amend- 
ment to conform to the proof, there is no reason why it should 
not be allowed to be filed. (C. C, D. Ivy. June 3, 1899.) 
Evans, J.] * Patent Button Co. v. Pilcher, 95 Fed. Rep. 479. 

V. Jurisdiction. 

1. The authorities are fairly uniform that where a pattMit will 
expire a few days sul)se(iuent to the commencement of a suit, 
and the return day of the subpoena follows by a few days the 



104 EQUITY. 

expiration of the patent, equity will not take jurisdiction even 
though the bill of complaint contain a prayer for injunction 
both preliminary and permanent, and the usual prayer for dis- 
covery and accounting. Where no special circumstances are 
shown over the ordinary cases of account, which would make 
the accounting so intricate as to make a suit at law an inade- 
quate and incomplete remedy, and nothing appears from the 
bill to show that adequate discovery cannot be had at law, 
equity will not interfere. (C. C, N. D. 111. N. D. July 19, 
1899."^) 

KoHLSAAT, J.] ^^ Overweight Counterbalance Elevator Co. v. 
Standard Elevator Co. Same v. Eaton & 
Prince Co. et al. Same v. Crane Elevator 
Co. Same v. J. W. Reedy Elevator Mfg. 
Co., 96 Fed. Rep., 231. 

2. A mere allegation that complainant has no adequate 
remedy at law, unaccompanied by allegations of facts supporting 
the same will not confer jurisdiction upon equity. */cZ. 

3. A court of equity will not take cognizance of a case simply 
for the purpose of construing the meaning or scope of a patent. 
Where the ultimate object sought is the payment of royalties 
the suit is essentially one on a contract, and a suit on a contract 
of license under letters patent is not a suit arising under the 
patent laws. (C. C, N. D. 111. N. D. July 27, 1899.) 
KoHLSAAT, J.] ^^ Perry v. Noyes et al, 96 Fed. Rep. 233; 

VI. Master's Report. 

1. The procedure enjoined by the 83d rule of equity with 
resjDect to the tiling of the master's report does not deprive the 
court of the power and jurisdiction to permit the master to 
withdraw the report for amendment, nor, by virtue of the rule, 
do the parties to the suit acquire a vested right in the report 
akin to the right of property, of which they cannot be divested 
except by due process of law. (C. C, S. D. Ohio W. 1). 
Feb. 4, 1899.) 

Taft, J.] *Nat'l Folding-Box & Paper Co. v. Dayton Paper- 
Novelty Co., 91 Fed. Rep. 822. 

2. The order of the court giving the master leave to withdraw 
his report for amendment, necessarily gave him authority to 



ECJUIVALENTS. 



105 



make an amended report, and he was as mueli mastiT of the 
court when he made the seeond report as when he math' the 
first. --'I'l 

3. After the master has made and filed his report, lie should 
not upon re-reference for amendment, reverse his rulings on the 
evidence and law without giving the parties notice. "^Id. 

VII. Res Adjudicata. 

An order dismissing a bill for want of i)rosecution is not a 
bar to another bill. (C. C, D. Mass. Jan. 24, 1899.) 
Brown, J.] ='^ A\'hitaker v. Davis et al, 91 Fed. Rep. 720. 

Where a plea merely avers that the parties are the 'same or 
in privit}^ that the letters patent relied on are the same and 
that the acts of infringement are the same as those on a former 
suit, wherein the bill for relief for infringement w^as dismissed 
for want of prosecution, Held, that it does not show that the 
matter is res judicata. ^Id. 

Eqiiivalents. 

1. While it is an abuse of the term "equivalent" to employ 
it to cover every combination of devices in a machine Avhich is 
used to accomplish the same result, yet where a device was a 
well known and proper substitute for the one described in com- 
plainant's specification at the date of his patent, it is a mechan- 
ical equivalent therefor, according to repeated expressions of 
the Supreme Court left unqualified by the decision in Westing- 
house v. Power Brake Co., 170 U. S. 537, 18 Sup. Ct. 707, 83 
O. G. 1067, and recognized in that case by its citation of 
Imheuser v. Buerk, 101 U. S. 647, 656. (C. C. A., 1st Cir. 
Feb. 13, 1899.) 

Colt, J.] * Beach?'. Hobbs et al. Hobbs et al. v. Beach, 92 
Fed. Rep. 146, 87 0. G. 1961. 

2. Neither the words "substantially as described" in the 
claims nor the proceedings in the Patent Office in which the 
patentee accpiiesced in the decision that these words must be 
inserted after the word "mechanism" in the claims, jjrohibit 
the patentee from invoking the doctrine of equivalents with re- 
spect to alleged infringers. Nor in dealing with a broad inven- 
tion which represents a distinct advance in the art, does it estop 



106 EQUIVALENTS. 

a meritorious inventor from asking the court to apply a more 
liberal rule as to what constitutes equivalents, than is applicable 
to a narrow invention which is only an improvement on what 
was old and well known. */fZ. 

3. Where, at the date of the patent, pivoted and fixed switch 
rails or tracks were old and familiar devices for transferring cars 
from one track to another, well known equivalents, and the 
substitution of one for the other in the combination of the 
patent works no new or different result whatever. (C. C. A., 
3dCir. May 1, 1899.) 

AcHESON, J.] * Thompson v. Third Avenue Traction Co. et ciL, 
93 Fed. Rep. 824. 

4. The range of equivalents depends upon the nature and 
extent of the invention. The meritoriousness of an improve- 
ment depends, first, upon the extent to which the former art 
has taught or suggested the step taken; and second, upon the 
advance made in the usefulness of the machine as improved. 
To be entitled to the benefit of the doctrine of equivalents, it is 
not essential that the patent be for a pioneer invention in the 
broadest sense of the term. If the invention has marked a 
decided step in the art and has proven of value to the public, 
the inventor or patentee will be entitled to the benefit of the 
rule of equivalents, though not in so liberal a degree as if the 
invention was of a primary character. (C. C. A., 6th Cir. 
May 2, 1899.) 

LuRTON, J.] ^^ Bundy ]\Ifg. Co. v. Detroit Time-Register Co., 
94 Fed. Rep. 524. 

5. A patent covers only known equivalents, and where at the 
time of the issue of a patent a different device was not known to 
be a mechanical e(]uivalent of the device of the patent, and in 
fact such equivalency had been expressly denied by the patentee 
in his correspondence with the Patent Office, the fact that such 
different device was afterward shown to accomplish the same 
result as that of the patent does not make its use for such pur- 
pose an infringement of the patent. (C. C. A., 7th Cir. Oct. 
3, 1899.) 

Woods, J.] '-^ Magic Light Co. v. Economy Gas-Lamp Co., 97 
Fed. Rep. 87. 



ESTOPPEL. 107 

6. Where a claim is drawn to include an t'litire f^mup of 
chemical agents or elements, such as alkalies, and only certain 
elements of the grouji are capable of carrying out the specific 
objects of the patent, such claim cannot be held to include as 
equivalents such other elements of the group as are incapable of 
carrying out such objects. (C. C, D. Conn. Aug. 28, 1899.) 
TowxsEND, J.] *Rickard et al. v. Du Bon, 97 Fed. Rep. 96. 
Estoppel. 

1. The defendants originally filed a plea of license to the bill 
in equity for infringement of a patent, but by leave of court 
before hearing withdrew the same and filed an answer in which 
the license was not pleaded. Held, that defendants are not 
estopped to deny the validity of the patent by reason of such 
plea, as it is not before the court. (C. C, S. D. Ohio, W. D. 
Dec. 2, 1898.) 

Taft, J.] *rry v. Rookwood Pottery Co. et al, 90 Fed. Rep. 
495. 

2. If one not a party of record nor in privity with a })arty of 
record desires to avail himself of the judgment as an estop])el 
on the ground that he in fact defended the action resulting in 
the judgment, he must not only have defended the action, but 
must have done so openly to the knowledge of the opposite 
party and for the defense of his own interests. That he em- 
ployed an attorney who appeared for the defendant of record 
and appeared as a witness for such defendant, is not sufficient 
where these facts are not knoAvn to the plaintiff. (C. C. A., 
9th Cir. Feb. 13, 1899.) 

Gilbert, J.] * Cramer r. Singer Mfg. Co., 93 Fed. Rep. 636. 

3. The fact that an alleged infringer at one time held a 
license, since expired, and marked his machines as made under 
the patent sued on is not an estoi)iK'l against him on the ques- 
tion of infringement when the record does not shctw whether or 
not his conduct in obtaining such license and so marking his 
machines w^as because he misconstrued the patentee's rights 
under his claims or was merely not disposed to make any con- 
test for the time being. (C. C. A., 1st Cir. June 1, 1899.) 
Putnam, J.] *Cushman Pai)er Box Mach. Co. r. Goddard 

et al, 88 0. G. 2410, 95 Fed. Rep. 664. 



108 ESTOPPEL. 

4. The doctrine of equitable estoppel ap])lies in the adminis- 
tration of the patent law, as it does in other cases, for the pre- 
vention of injustice. (C. A. D. C. June 6, 1899.) 

Alvey, J.] * Mower r. Duell, Coni'r of Patents, 88 0. G. 191. 

5. The law does not favor estoppels, and the facts relied on to 
estojj a defendant from denying the validity of a patent must be 
clearly established and not matters of inference. As a general 
rule, fraud is an essential element of an estoppel in pais. 
(C. C, N. D. 111. N. D. July 27, 1899.) 

KoHLSAAT, J.] *Burrell et al. v. Elgin Creamery Co., 96 Fed. 
Rep. 234. 

6. Each of the parties had manufactured the articles covered 
by a design patent for about a year and a half prior to the 
issue of the patent. Prior to said issue complainant requested 
defendant to discontinue manufacture of said articles as a patent 
had been granted to him. Defendant then requested informa- 
tion as to when and where the patent was issued. Complainant 
replied that the patent "has been granted and gone to issue, 
and as soon as we have a copy from the Patent Office will for- 
ward same to you." The patent was duly issued but com- 
plainant never sent defendant a cop}^, and defendant kept on 
manufacturing for a year and a half when complainant without 
notice brought suit. Held, that notwithstanding the broken 
promise of the complainant, he was not estopped to claim full 
damages upon an accounting. (C. C, D. Conn. Aug. 14, 1899.) 
TowNSEND, J.] * Jennings et al. v. Rogers Silver Plate Co., 96 

Fed. Rep. 340. 

7. Where a patentee acquiesced in the action of the Patent 
Office in rejecting two of his three claims, leaving the third 
claim • exactly as it was originally drawn, Held, that a mere 
remark of the examiner that " It is not seen that there is any 
material difference in the claims," does not estop the patentee 
from claiming the construction shown by the specification and 
such original claim, nor does it limit him to a construction 
embraced only by the rejected claim. It is the construction of 
the patent as finally issued which is to be considered. (C. C, 
S. D. N. Y. July 29, 1899. ) 

TowNSEND, J.] *Acme Flexible Clasp Co. v. Cary Mfg. Co., 
96 Fed. Rep. 344. 



EVIDENCE. 109 

Evidence. 

I. Admissibility. 
II. Suppression on Motion. 
III. Weighing. 

I. Admissibility. 

1. In an action at law to recover damages for tlie infringe- 
ment of a patent, evidence of what was paid for royalties under 
a distinct patent held by a stranger, especially when the alle- 
gations in the declaration fail to shut out the itossihility that 
that patent covered more than the patent in issue is incompetent 
and inadmissible on the question of damages, as is also evidence 
as to amounts rec^eived in settlement of claims against other 
infringers. (C. C, D. Mass. Dec. 22, 1898.) 

Putnam, J.] *Ewart Mfg. Co. r. Baldwin Cycle-Chain Co. 
etal., 91 Fed. Rep. 262. 

2. The rule that a compromise of litigation affords no satis- 
factory evidence of the value of the property litigated is an 
underlying one, and recognizes no distinctions not of a funda- 
mental character. */f^. 

3. Where a patent is introduced in evidence as showing the 
prior state of the art and merely to illustrate its connection with 
the questiori of infringement, and not for the purpose of antici- 
pating the patent in suit, there is no error under R. S. § 4920 
in admitting it, even though notice of such patent has not been 
given. (C. C. A., 9th Cir. Feb. 13, 1899.) 

Hawley, J.] * Overweight Counterbalance Elevator Co. v. 
Improved Order of Red Men's Hall Associa- 
tion of San Francisco, 94 Fed. Rep. 155. 

II. Suppression of, on ^Iotion. 

The defendant should complete his evidence with respect to 
the state of the art before the taking of the complainant's testi- 
mony in rebuttal ; additional testimony and exhibits, even 
though introduced for the sole purpose of narrowing the claims 
of the patent, if introduced after the evidence of the complain- 
ant has all been taken, will be suppressed on motion. (C. C, 
E. D. Penn. May 26, 1899.) 
Dallas, J.] * Smith et al. v. Ulrich, 94 Fed. Rep. 865. 



110 



FOREIGN PATENTS AND PUBLICATIONS. 



III. Weighing. 

Where an elaborate opinion of a court of last resort upon the 
evidence is published, and the weaknesses of the losing side are 
clearly brought out, and the defeated party is thereafter given 
an opportunity to strengthen the defects of his case by evidence 
as to transactions long past, and machinery long since cast into 
the scrap heap, there is great danger that the exigencies of the 
case may lead witnesses to round out evidence beyond that 
which exact truth would permit. Such evidence must be taken 
with great caution, and weighed in the light of this danger. 
(C. C. A., 6th Cir. Oct. 23, 1899.) 

Taft, J.] *C. & A. Potts & Co. V. Creager et al, 97 Fed. 
Rep. 78. 

Foreign Patents and. Publications. 

The patents (if printed) and other official patent publications 
of the following governments may be found in the Scientific 
Library of the U. S. Patent Office: 



Austria- Hungary. 

Barbadoes. 

Belgium. 

British Honduras. 

Canada. 

Ceylon. 

Denmark. 

Fiji. 

Finland. 

France. 

Germany. 

Great Britain. 

Hungary. 

Hawaii. 

India. 

Italy. 

Jamaica. 

Japan. 

Leeward Islands. 

Luxemburg. 



Malta. 

Mauritius. 

Mexico. 

Netherlands. 

New South Wales. 

New Zealand. 

Norway. 

Portugal. 

Queensland. 

Russia. 

South Australia. 

Spain. 

Straits Settlements. 

Sweden. 

Switzerland. 

Tasmania. 

Trinidad. 

Victoria. 

West Australia. 



INFKIXGKMENT. Ill 

Infringement. 

I. In General. 

II. Claims for Combixatiox. 

III. Contributory. 

IV. By Cities and Corporations. 
V. Process. 

VI. Particular Cases. 

I. In General. 

1. Infringement is a tort which must be proved. It cannot 
rest whoh}^ upon inference and conjecture. (C. C, S. D. N. Y. 
Dec. 5, 1898.) 

CoxE, J.] *King et ah v. Anderson et al, 90 Fed. Rep. 500. 

2. The defendant's device is in accord with patents dated 
March 3, 1896 and March 16, 1897, under Avhich justification 
is asserted but cannot be sustained, as complainant's patent 
Avas granted upon an apphcation filed March 5, 1895, and ante- 
dated the application in both of the other patents. The fact 
that complainant's application was forfeited for inadvertence 
and subsequently reinstated, cannot affect this priority of any 
invention in the device. (C. C, E. D. Wis. July 5,"l898.) 
Seaman, J.] * Western Electric Co. v. American Rheostat Co. 

et al, 91 Fed. Rep. 650. 

3. The fact that the alleged infringing device was more cum- 
bersome and involved delays in its use, is only an ordinary 
feature of colorable infringements and does not avail to escape 
infringement. (C. C. A., 1st Cir. Jan. 30, 1899.) 

Brown, J.] *Heap r. Greene et ah, 91 Fed. Rep. 792. 

4. One who appropriates the exact device of a valid claim of 
a patent cannot escape infringement simply because he uses it 
in slightly difTering environments. (C. C, N. D. N. Y. 
Jan. 3, 1899.) 

CoxE, J.) * Deere et al. r. Arnold, 92 Fed. Rep. 186. 

5. Invasion of the rights of a patentee may be avoided, how- 
ever nearly approached, if the subject-matter of the grant be 
not substantially taken; l)ut if the principle of the invention 
be appropriated, liability for infringement cannot be evaded 



112 INFRINGEMENT. 

upon tlie ground tliat the mechanism employed by the infringer 
does not, in form and structure, precisely correspond with that 
descril)ed in the patent. (C. C, E. D. Penn. Mar. 6, 1899.) 

Dallas, J.] * Rood et al. v. Evans d a/., 92 Fed. Rep. 371. 

6. A change of form does not avoid infringement of a patent 
unless the patentee specifies a particular form as a means by 
which the effect of the invention is produced, or otherwise con- 
fines himself to the particular form of what he describes. Even 
where a change of form somewhat modifies the construction, 
the action, or the utility of a patented thing, non-infringement 
will seldom result from such a change. (C. C. , N. D. Cal, 
Jan. 23, 375.) 

Morrow, J.] *Risdon Locomotive & Iron W'ks v. Trent, 92 
Fed. Rep. 375. 

7. An infringer cannot evade liability for his infringement by 
deliberately diminishing the utility of the invention, without 
materially changing its form, its chief function, or its manner 
of operation. (C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] *Penfield v. Chambers Bros. Co., 92 Fed. Rep. 630. 

8. It is an infringement for the licensee of the owner of a 
patent for a machine for setting lacing studs to use the machine 
for setting studs obtained from others, where the conditions of 
the license are that the licensee shall only use the studs manu- 
factured by the licensor, the studs themselves not being pat- 
ented. (C. C, D. Mass. July 29, 1898. ) 

Lowell, J.] '-^ Tubular Rivet & Stud Co. v. O'Brien et al, 93 
Fed. Rep. 200. 

9. By the general principles of law and by analogy with other 
torts, a director of a corporation who, as director by vote or 
otherwise, specifically commands the subordinate agents of the 
corporation to engage in the manufacture of an infringing article, 
is liable individually in an action at law for damages brought 
by the owner of the patent so infringed. As with other in- 
fringers, it is immaterial whether the director knew or was 
ignorant that the article manufactured and sold did infringe a 
patent. (C. C. A., 1st Cir. Apr. 12, 1899.) 

Low^ELL, J.] *Nat'l Cash Register Co. v. Leland et al. Same 
V. Wright et al, 94 Fed. Rep. 502. 



INFRINGEMENT. 113 

10. One may not escape infringement by the mere joinder of 
two elements into one integral part. If the united part effects 
the same results in substantially the same way as tiie separate 
parts before the union, the change is colorable. (C. C. A., 6th 
Cir. May 2, 1899.) 

LuRTON, J.] * Bundy Mfg. Co. v. Detroit Time-Register Co., 
94 Fed. Rep. 524. 

11. An improvement may itself be patentable, but the in- 
ventor of an improvement accpiires no right to a})])r(tpriate the 
main invention to which his iniprovement relates; and it is of 
no consequence if the patented article be so dealt with as to 
impair its usefulness, if its essential features l)e retained. 
(C. C, E. D. Penn. May 20, ■;899.) 

Dallas, J.] * Smith d al. v. Ulrich, 94 Fed. Rep. 865. 

12. A person will not be permitted to appropriate a patented 
invention by adding thereto a new function which in no way 
changes the action of the patented combination. (C. C, N. D.. 
N. Y. June 14, 1899.) 

CoxE, J.] * Consolidated Fastener Co. v. Hays et al., 95 Fed. 
Rep. 168. 

13. That the infringing device is so constructed as to secure 
only a part of the advantages derived from the device infringed 
is no defense; where the essential features of an invention have 
been appropriated, it is immaterial that the infringing device 
works poorly or is not so practicable as the one infringed. 
(C. C, S. D. N. Y. June 13, 1899.) 

TowNSEND, J.] *Cimiotti Unhairing Co. et al. v. Bowsky, 95 
Fed. Rep. 474. 

14. Where the president of a recently organized corporation 
was at the time of organization a licensee under complainant's 
patent, and the treasurer had but a short time before made a 
compromise with the complainant for past infringements, Held, 
that their knowledge was the knowledge of the corporation, and 
in a suit against the corporation for infringement of the patent, 
the corporation is precluded from setting up that tiie infringe- 



114 INFRINGEMENT. 

ment was entered upon under the belief that the complainant's 
rights were worthless or abandoned. (C. C. , D. N. J.) 
KiRKPATRicK, J.] *Ryan v. Newark Spring Mattress Co., 96 
Fed. Rep. 100. 

II. Claims for Combination. 

1. In a patent for a combination the alleged infringing 
machine must contain all of the elements of the combination or 
their mechanical equivalents. (Prouty v. Ruggles, 16 Pet. 337; 
Stimpson v. Ry. Co., 10 How. 329; Eames v. Godfre}', 1 Wall. 
78; Seymour v. Osborne, 11 Wall. 516; Dunbar v. Myers, 94 
U. S. 187; Fuller i-. Yentzer, 94 U. S. 298; Merrills. Yeomans, 
94 U. S. 568; Water-Meter Co. v. Desper, 101 U. S. 332; Miller 
V. Brass Co., 104 U. S. 350; Rowell v. Lindsay, 113 U. S. 97; 
5 Sup. Ct. 507.) (C. C. A., 9th Cir. Oct. 24, 1898.) 
JNIoRROW, J.] * Norton et al. v. Jensen, 90 Fed. Rep. 415. 

2. Where the specification describes some details of the de- 
vice which are made elements of tlie claim and which are not 
essential to the combination covered by the claim, it is not 
essential to constitute an infringement that the infringing device 
should contain such details. A description of such details is to 
be held as only pointing out the better method of using the 
combination. (C. C. A., 1st Cir. Dec. 9, 1898.) 

Putnam, J.]" * City of Boston v. Allen, 91 Fed. Rep. 248. 

3. Where a patent is limited b}' the express terms of the 
claim, as well as by the description in the specification to the 
special details of construction, it is not infringed by a construc- 
tion which omits one of the details with a corresponding omis- 

ion of function. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Wallace, J.] * Tower v. Eagle Pencil Co., 94 Fed. Rep. 361. 

III. Contributory. 

1. Where a defendant is engaged delilierately in manufactur- 
ing and selling a device designed and inteijded by him to enable 
an individual user thereof to employ complainant's patented 
process, said device being useful for no other process than in 
the practice of said process, he is guilty of intentional contribu- 
tory infringement. (C. C, E. D. Mo., E. D. Dec. 27, 1898.) 
Adams, J.] *New York Filter Mfg. Co. v. Jackson, 91 Fed. 
Rep. 422. 



INFRINGEMENT. 115 

2. Where the defendant was a luemlxr of a firm of architects 
which advertised by means of circulars and otherwise to furnish 
mills similar to the one which is found to infringe, and while 
never having had a foundry or machine shop or iron works of 
their own when orders were secured, the firm have invited bids 
from various manufacturers for making the required machinery 
from plans furnished by themselves; and said defendant having 
made i)lans for the infringing mill Avhich the owner made at his 
own uianufactor}^, Held, that his position is that of a contrib- 
uting infringer. (C. C, N. D. Cal. Jan. 2>\, 1899.) 
Morrow, J.] *Risdon Iron & Locomotive \\''ks r. Trent, 92 

Fed. Rep. 375. 

3. A person who sells a machine which is useful only for 
the purpose of making a patented article, or makes such sale 
with the knowledge that the thing sold is to be used to produce 
an infringing article, is himself liable as an infringer. (C. C. , 
E. D. Penn. Feb. 25, 1899.) 

Dallas, J.] * American Graphophone Co. v. Hawthorne et aJ., 
92 Fed. Rep. 516. 

4. One who sells an unpatented article to another, knowing 
the use to be made of it becomes lialjle as a contributory in- 
fringer if the proposed use is an infringement of a patent. 
(C. C, D. Mass. July 29, 1898.) 

Lowell, J.] * Tubular Rivet & Stud Co. v. O'Brien d al., 93 
Fed. Rep. 200. 

5. The doctrine of contributorv infringement has never been 
applied to a case where the thing alleged to be contributed is 
one of general use, suitable to a great variety of other methods 
of use, and especially where there is no agreement or definite 
purpose that the thing sold shall l)e employed with other things 
so as to infringe a patent right. (C. C, W. I). Mich. S. D. 
June 13, 1899.) 

Severens, J.] ^^ Edison Electric Light Co. et al. r. Peninsular 
Light, Power & Heat Co. et al, 95 Fed. 
Rep. 669. 

IV. By Citie3 and Corporations. 

Where a city accepted a bid for electric light and gas fixtures, 



116 INFRINGEMENT. 

and purchased the same after having been notified that they 
were being sold in infringement of a patent, taking a bond of 
indemnit}' from the bidder against the result of lawsuits, such 
city has no equity, on the ground of impropriety of enjoining a 
municipal corporation, to claim exemption from a preliminary 
injunction against using the fixtures pending a suit for the in- 
fringement, particularly where other fixtures can be substituted 
with little delay. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Shipman, J.] *Pelzer v. City of Binghampton el al, 90 Fed. 
Rep. 823. 

V. Process. 

Two processes cannot be said to be substantially alike where 
the successive steps which they involve are different; and where 
several of the steps which are requisite to the one are wholly 
omitted from the other, identity of method cannot exist. (C. 
C. A., 3d Cir. Dec. 6, 1898.) 

Dallas, J.] * United States Glass Co. v. Atlas Glass Co., 90 
Fed. Rep. 724. 

VI. Particular Cases. 

1. The legitimate rights of the holder of a patent for a valance 
for hammocks, canopies, lambrequins and similar articles 
where hanging drapery is commonly used, cannot be invaded 
by one who protects from wear the bottom of women's skirts; 
the two fields are wide apart and have nothing in common. 
(C. C, S. D. N. Y. Nov. 15, 1898.) 

CoxE, J.] * Palmer et al. v. De Yongh, 90 Fed. Rep. 281. 

2. The only differences between the patented device and the 
alleged infringing device are: (1) in the latter, the catch is re- 
leased by a movement radially outward, while in the former the 
releasing movement is radially inward. In this respect, the 
two devices are mechanical equivalents, the one of the other. 
(2) The device of the patent is operated by a flat spring, one 
end of which is attached to a stud depending from a spring 
plate; the infringing device is operated by a spiral spring, the 
corresponding end of which is attached either to a small cap at 
the top of the hub just beneath the operating handle, or is fas- 



INFRINGEMENT, 117 

tened b}' passing tliroiigli tlio handle itself, the ca]) in that case 
being omitted. Held, that the si)iral spring is the eqnivalent of 
the tlat spring, and the cap in which the end of the spring is in- 
serted is the equivalent of the spring plate and depending stud, 
and that the patent is infringed. (C. C. A., 1st Cir. Mar. 13, 
1899.) 

Lowell, J.] *Hart & Hegeman Mfg Co. v. Anchor Electric 
Co. d al. , 92 Fed. Rep. 657. 

3. Where a patent for a roller-coasting structure claims 
" tracks running parallel with each other and having the start- 
ing and terminal stations at the same elevation." Held, that 
mathematical precision as to elevation is not necessary and not 
prescribed, and that the claim is infringed by another similar 
structure where the difference in elevation of starting and ter- 
minal stations is only six inches or a foot. (C. C. A., od Cir. 
May 1, 1899.) 

AcHESON, J.] * Thompson v. Third Avenue Traction Co. et a/., 
93 Fed. Rep. 924. 

4. A claim for a combined bathing shoe and stocking having 
the sole formed of cork coated with rubber cement and having 
an outer covering of cotton or other fabric, Held, not infringed 
by a similar shoe and stocking with a sole made of linoleum 
and an outer covering of canvas. (C. C. , S. D. N. Y. May 26, 
1899.) 

Shipman, J.] *S. Rauh & Co. v. Guinzbnrg, 95 Fed. Rep. 151. 

5. The Helouis process of treating lime crayons which is 
relied upon as anticipation in the case seems (]uite different in 
object and result from that of the patent. Within the broad 
range of equivalents indicated in Welsbach Light Co. v. Sun- 
light Incandescent Gas Lamp Co., 87 Fed. Rep. 221, the process 
of defendant is an infringement, and preliminary injunction 
ordered. (C. C, S. D. N. Y. July 19, 1899.) 

Lacombe, J.] * Welsbach Light Co. v. New York Chemical 
Refining Co., 95 Fed. Rep. 1007. 



118 INJUNCTION. 

Injunction. 

I. In General. 
II. Dissolution. 

III. Preliminary. 

(a) In General. 
(6) When Granted. 
(c) When Denied. 

IV. Prior Judgment. 

V. Public Acquiescence. 
VI. Violation of. 

I. In General. 

1. It is not the purpose of the patent laws to compel the dis- 
continuance of the lawful manufacture and sale of known pro- 
ducts in public use by reason of the mere recognition by some 
one that they possess merits not theretofore appreciated. (C. C. , 
D. N. Jer. ' Feb. 13, 1899.) 

Bradford, J.] *McEwan Bros. Co. v. McEwan et al, 91 Fe(,l. 
Rep. 787. 

2. Tbe owner of a patent is entitled to protection against the 
repetition of accidental or unintentional infringements. (C. C. 
A., 2d Cir. :\hiy 25, 1899.) 

Lacombe, J.] =^ Thompson et al r. N. T. Bushnell Co., 96 Fed. 
Rep. 238. 

II. Dissolution. 

Where the Circuit Court granted an injunction pendente lite 
upon the theory that the complainant's construction of the 
claim alleged to have been infringed had been positively adopted 
by the Circuit Court of Appeals in a prior suit U})on the same 
patent, the only question to be determined on appeal from the 
order granting the injunction is whether that theory is well 
grounded, by ascertaining the scope of the decision in the prior 
suit, and Held^ that the injunction was granted on a misunder- 
standing as to the scope of such decision and the order granting 
the same reversed. (C. C. A., 2d Cir.) 

Shipman, J.] * American Graphophone Co. v. Nat'l Gramo- 
phone Co. et al, 92 Fed. Rep. 364. 



INJUNCTION. 119 

III. Preliminary. 

(") In General. 

1. The weight to be given to tlie circuiut-tanees of non- 
disclosure by the defendant or his witnesses upon a prehminnry 
hearing with reference to tlic question of infringement was a 
matter which addressed itself to the court l)elow in the exercise 
of a sound legal discretion as to whether a preliminary injunc- 
tion should issue or not. I'nless that discretion has been 
abused the action of the couit below should not be reversed. 
(C. C. A., 6th Cir. Nov. 9, 1898.) 

Taft, J.] *Societe Anonyme du Filtre Chamberland Systeme 
Pasteur et al. v. Allen et al., 90 Fed. Rep., 815. 

2. The function of a court of appeals in reviewing an order 
of a lower court granting or refusing a preliminary injunction 
is such that it may properly affirm an order refusing a pre- 
liminary injunction in one case and an order granting it in 
another on substantially the same evidence, because it is easy 
to conceive a case presenting upon a preliminary hearing such 
an evenly balanced controversy that the court above would 
affirm the action of the court below, whether one way or the 
other, when that action involves the exercise, not of exact 
judicial judgment, but merely judicial discretion. -^^Id. 

3. Tlie (juestion to be determined on appeal from an order 
denying a preliminary injunction is whether the discretion of 
the court below was improvidently exercised, and not whether 
upon final hearing, upon full view of all ')f the facts in the case, 
the appellate court would, upon the evidence before it, reach 
the same conclusion as the court below. To justify an appellate 
court in reversing an order of this kind it must be (piite clearly 
apparent that a mistake was committed by the court below. 
(C. C. A., Gth Cir. Mar. 7, 1899.) 

Severens, J.] * Proctor & Gamble Co. r. Globe Refining Co., 
92 Fed. Rep. 857. 

4. The three things essential to maintaining a preliminary 
injunction in a patent case are: (1) That the i)atent is valid; 
(2) that the plaintiH' is the owner of a legal or e(|uitalile interest 
therein, and (3) that the defendant is about to conmiit an act 
of infringement. In order to entitle a complainant to a i)rc- 



120 ■ INJUNCTION. 

liminary injunction when the patent sued upon has never been 
adjudicated, he must show that the pubhc has long used the 
invention and has acquiesced in the vahdity of the patent; and 
has never undertaken by htigation to question the patentee's 
exckisive rights thereunder or the validity thereof. (C. C. , 
N. D. Ohio, E. D. Dec. 3, 1898.) 
Ricks, J.] * Elliott d al. v. Harris d ah, 92 Fed. Rep. 374. 

5. The rule as to public acquiescence or prior adjudication to 
support and warrant a preliminary injunction is as applicable 
to the case of design patents as it is to patents for machines. 
(C. C, D. Conn. Feb. 20, 1899.) 

TowNSEND, J.] * Smith v. Meriden Britannia Co., 92 Fed. 
Rep. 1003. 

III. PEELi:\riNARY. 

(6) ]Vhen granted. 

1. Infringement of the patent by defendant prior to the insti- 
tution of this suit clearly appears by the use of an infringing 
attachment which may be readily connected and disconnected, 
and the fact that shortly prior to the institution of this suit, and 
when it was itnminent, defendant disconnected such attachment 
and informed the complainant that he would no longer use the 
same, does not constitute sufficient ground for denying a pre- 
liminary injunction. The ada]^tal>ility of the device to such 
facile changes affords a constant temptation to defendant, as 
well as a constant menace to com]i]ainant, and complainant is 
entitled to greater security against a once-existing infringement 
than the mere statement by defendant that he will no longer 
infringe. (C. C, E. D. Mo. E. D. Apr. 20, 1899.) 
Adams, J.] *New York Filter Mfg. Co. v. Chemical Bl'dg 

Co., 93 Fed. Rep. 827. 

2. Upon the question of infringement, the'complainant must 
in order to obtain a preliminary injunction, satisfy the court 
beyond a reasonable doubt. (C. C, N. D. N. Y. May 21, 
1899. ) 

CoxE, J.] * Consolidated Fastener Co. r. American Fastener 
Co., 94 Fed. Rep. 523. 

3. Where the court starts with the projiosition that a patent 



INJUXCTION. 121 

is valid, and since it is not disputed that the alleged infringing 
article responds to all of the tests required l)y the patent, such 
article must be held to be an infringement and an injunction 
will issue. (C. C, S. D. N. Y. June 8, 1899.) 
Lacombe, J.] * Badische Anilin & Soda Fabrik r. Matheson 
etal., 94 Fed. Rep. 1021. 

III. Preliminary. 

(c) When denied. 

1. Where an essential element of a claim of a patent is omitted 
from the alleged infringing device, there is no infringenunit of 
the claim, and assuming that the patent is valid, it is limited in 
scope by the prior art ; a case of infringement, such as would 
justify the granting of a preliminary injunction is not made out 
under these circumstances. (C. C, D. Mass. Oct. 31, 1898.) 
Colt, J.] * Consolidated Fastener Co. r. Wisncr et aL, 90 Fed. 

Rep. 104. 

2. Where the patent sued on has never been adjudicated ujxm 
and the bill of complaint does not disclose any use, or public 
acquiescence in its validit}', a preliminary injunction will not 
be granted to restrain an alleged infringement of it. (C. C, D. 
N. Jer. Dec. 14, 1898. ) 

KiRKPATRicK, J.] * Richmond Mica Co. v. De Clyne et al., 90 
Fed. Rep. 661. 

3. Where the court in a prior suit against another defendant 
had decreed the validity of the patent which is the foundation 
of the present suit, and had enjoined the defendant therein 
from the manufacture, sale and use of machines declared to be 
infringing, an appeal in which suit is still pending, and the de- 
fendants in the present suit are users of some 21 of the infring- 
ing machines, in their extensive business in which they employ 
some 200 persons, and have large orders for future delivery of 
the products of said machines, and are financially responsible to 
answer in damages for any award which may be made against 
them, while the complainant has not been at any time and is 
not now able to supply defendants with the patented machine, 
except gradually as they could be built and even then at a large 
expenditure of money, Held, that an injunction against the 
use of such infringing, machines would not be granted, for the 



122 IXJUNCTIOX. 

damages to the defendant would far outweigh the advantages 
acermng to the complainant. (C. C, D. N. Jer. Jan. 9, 1899.) 
KiRKPATBicK, J.] * Huntington Dry Pulverizer Co. et al. v. 

Al]>ha Portland-Cement Co. et al., 91 

Fed. Rep. 585. 

4. A preliminary injunction Avas denied where it sought to 
prevent the replacing of a part of a patented machine which 
wears out quickly, even though such })art is the subject-matter 
of a separate claim of the patent and spfcially protected thereby. 
(C. C, N. D. Cal. Mar. 16, 1899.) 

Morrow, J.] ^^ Alaska Packers' Ass'n r. Pacific Steam Whal- 
ing Co. et al, 9o Fed. Pvep. 672. 

5. Where there is a conflict of testimon)^, both expert and 
otherwise it would be an unwise exercise of judicial discretion to 
grant a restraining order before the hearing upon pleadings and 
proofs. (C. C, S. D. N. Y. Mar. 6, 1899.) 

Lacombe, J.] '^Thomson-Houston Electric Co. v. Bullock 
Electric Co., 93 Fed. Rep. 991. 

6. Where the patent has never been adjudicated and there has 
been no general acquiescence in its validity, and infringement is 
stoutly denied, the rule is well-nigh universal that a preliminary 
injunction should not issue. (C. C, N. D. N. Y. May 21, 
1899.) 

CoxE, J.] ^'Consolidated Fastener Co. v. American Fastener 
Co. , 94 Fed. Rep. 523. 

7. Upon an application for preliminary injunction the ques- 
tion was raised Avhether or not b}' reason of the lapsing of a 
prior foreign patent subsequent to the application, but prior to 
the issue of the United States patent, such United States patent 
was improi^erly issued. Under decisions of the Supreme Court 
there is so much doubt as to the correct answer to this question, 
that it should not be decided upon preliminary motion, but 
upon final hearing, so that the defeated party may be in a posi- 
tion to apply to that court for a certiorari should it be so ad- 
vised. (C. C., S. D. N. Y. July 12, 1898.) 

Lacombe, J.] ^^Welsbach Light Co. v. Apollo Incandescent 
Gaslight Co., 94 Fed. Rep. 1005. 



INJUNCTION. 123 

8. AMiere a prior foniun i):itent lapsed In'twccn tlic ilate of 
application for the ]>alrnl in suit and the date of its issuance, 
questions are raised as to the validity of the patent which ou<rht 
not to be decided U[)oii a ))irliniinarv motion, and where a i)re- 
liniinarv injunction has been denied in another subsecjuent suit 
U}ion these facts, there is no good reason wiiy a {)articular 
defendant should be enjoined while others are left free to in- 
fringe, and a motion to vacate a preliminary injiuiction will be 
granted. (C. C, S. D. N. Y. Aug. 1, 1898.) 

Lacombe, J.] * Welsbach Light Co. v. Rex Incandescent Light 
Co., 94 Fed. Rep. 1005. 

9. A preliminary injunction should never be awarded where 
the right is doubtful or the wrong uncertain; and in a patent 
case it should not be aAvardcd where infringement is not clearly 
established. (C. C. A., 8d Cir. June 1, 1890.) 

Dallas, J.] * Blakey et ah v. Xat'l Mfg. Co., 95 Fed. Rep. 136. 

10. Where the question of infringement is doubtful and de- 
pends for its determination u])on a broader construction of the 
claims of the patent in suit than was touched upon in ])rior 
adjudications, it should not he resolved upon a motion for ])re- 
liminary injunction, liut should be reserved until the final 
hearing of the cause. (C. C. A., 2(1 Cir. INIay 25, 1899.) 
Per CrRiA:si.] * Sprague Electric Railway & Motor Co. v. 

N&ssau Electric Ry. Co., 95 Fed. Rep. 821. 

IV. Prior Judgment. 

1. Where the validity of a patent has l)cen estal>lishr(l by 
repeated adjudications, and no iieM' case has been made out 
against its validity the earlier decisions arc to be folloAved in 
granting a motion for prelinn'nar}' injunction. (C. C. , S. D. 
N. Y. Feb. 26, 1898.) 

Laco:mbe, J.] * New York Filter ^Nlfg. Co. v. Loomis-Manning 
Filter Co., 91 Fed. Rep. 421. 

2. Where the validity of a patent has been repeatedly upheld 
and injunctions have been granted against its infringement, its 
validity is no longer an open C{uestion upon a motion for a pre- 
liminary injunction, unless some new defense is interjjosed and 
the evidence oiJered to su]iport it is so cogent and persuasive as 



124 INJUNCTION. 

to impress the court with the conviction that, if it had been 
presented and considered in the former case, it would probably 
have availed to a contrary conclusion. (C. C, E. D. Mo., E. D. 
Dec. 27, 1898.) 

Adams, J.] *New York Filter Mfg. Co. v. Jackson, 91 Fed. 
Rep. 422. 

3. While it may not be improbable that the defendant may 
succeed at the final hearing in establishing the defenses upon 
which it relies in defeating complainant's patent, yet if the new 
evidence is not cogent, the questions presented thereby should 
not be determined adversely to complainants upon affidavits, 
with the result of depriving him, upon motion for a preliminary 
injunction, of the benefit of a prior adjudication in his favor 
after a strenuously contested litigation. (C. C. A., 2d Cir. 
Jan. 5, 1899.) 

Per Curiam.] * Doig v. Morgan Machine Co. , 91 Fed. Rep. 1001. 

4. Where there has been a prior, thoroughly considered de- 
cision on the question of infringement, the rule as to prior ad- 
judication supporting a preliminary injunction, necessarily 
applies with the same effect as to a question of validity of the 
patent. In many cases one issue is involved in the other, and 
in either case the court to which the later application for pre- 
liminary injunction is made has a right to rely on a presump- 
tion that all the defenses of value were presented and considered 
in the earlier litigation. A different practice would deprive an 
inventor of the substantial advantages of protracted litigation in 
the first case, and would subject him, on the subsequent appli- 
cation, to all the labor and cost of investigating the merits on 
every discovery of some supposed anticipatory matter, not 
brought forward in the prior suits. Therefore, unless on all 
such issues the court accepts the results of such prior litigation 
except for some clear and cogent matter, the beneficent rule 
with reference thereto would be lost. (C. C, D. Mass. Mar. 
15, 1899.) 

Putnam, J.] * Duff Mfg. Co. v. Norton, 92 Fed. Rep. 921. 

5. Where the patents sued on have been the subject of stren- 
uous litigation in the federal courts of one circuit where their 
validity was sustained both by the Circuit Court and the Cir- 



INJUNCTION. 125 

cuit Court of Appeals, the general rule of comity requires the 
court of another circuit to award a preliminary injunction, if 
there is infringement, and postpone to the final hearing the de- 
termination of the questions relating to the validity of the 
patents, unless there is some new evidence of such a clear and 
persuasive character as to leave no fair doubt that the former 
decisions were erroneous in point of fact and would have been 
different if the new matter had been before the court. (C. C. , 
\¥. D. Mich. Aug. 3, 1898.) 

Severens, J.] * Duff Mfg. Co. v. Kalamazoo R. R. Velocipede 
& Car Co., 94 Fed. Rep. 154. 
6. When a patent has been estal)lished by a decision of a 
Circuit Court after careful consideration upon a full record, 
another judge sitting subsequently in the same court upon ap- 
plication for preliminary injunction on ex -parte papers, might 
well deem himself constrained, contrary even to his own judg- 
ment, to adopt the rulings of his own court, since he does not sit 
as a court of review to reverse upon sul)8tantially the same 
record the decision of a judge of co-ordinate jurisdiction. A 
re-examination of the rulings made upon the original hearing is 
to be sought, not in the Circuit Court, but in the Circuit Court 
of Appeals. (C. C, S. D. N. Y. May 26, 1899.) 
Lacombe, J.] *Welsbach Light Co. v. Rex Incandescent Light 
Co., 94 Fed. Rep. lOOG. 

V. Public Acquiescence. 

In order to take the place of an adjudication, accjuiescence 
must be long continued in such circumstances as to induce the 
belief that infringements would have occurred but for the fact 
that a settled conviction existed in the minds of manufacturers, 
vendors and users that the patent was valid and must be re- 
spected. A patent which is not molested sin)ply because it is 
for no one's interest to infringe, is not ac(iuiesced in within the 
legal acceptation of that term. (C. C, N. D. N. Y. :May 21, 
1899.) 

CoxE, J.] * Consolidated Fastener Qo. v. American Fastener 
Co., 94 Fed. Rep. 523. 

VI. Violation of. 

1. Where the question of the violation by a defendant of an 



126 INTERFERENCES. 

injunction issued in a suit for infringement of a patent, depends 
upon Avhether or not a new article sold by defendant since 
the granting of the injunction is an infringement of complain- 
ant's patent, which is an intricate question dependent Uj)on 
structure, requiring a com])arison of the article with others and 
a consideration of other ])atents, the court will not attenj])t to 
determine it on a motion for an attachment, but, no intentional 
violation being claimed, will deny the motion, and leave the 
complainant to his remedy b}^ a new bill. (C. C. , S. D. N. Y. 
Feb. 28, 1899.) 

Wheeler, J.] * United States Playing-Card Co. v. Spalding 
Bros, et al^ 93 Fed. Rep. 822. 

2. ^Mlere a suit for the infringement of a patent was ])rought 
against "Frank Armstrong, alias James," defendant, his true 
name being James, and an order was issued restraining "the 
said defendant Frank Armstrong" from further infringement, 
the order being served u})on the defendant. Held, that he being 
in fact the person guilty of the infringement, he was bound by 
the order, and his subsequent violation of the order subjected 
him to punislnnent for contempt. (C. C. , S. D. N. Y. May 
24, 1899.) 

Lacombe, .J.] * Dickerson v. Armstrong, 94 Fed. Rep. 8G4. 

3. An order imposing a fine for the violation of a preliminary 
injunction cannot be reviewed except upon an appeal from the 
final decree in the cause. (C. C. A., 2d Cir. May 25, 1899.) 
DeHayex, J.] * Nassau Electric Ry. Co. v. Sprague Electric 

Ry. ct Motor Co., 95 Fed. Rep. 415. 

Interferences. 

I. In General. 
II. Access to and Production of Papers. 

III. Amending Applications, Rule 109. 

IV. Appeal. 

(a) III General. 
(6) No Appeal Lies. 
V. Burden of Proof. 
(a) In General, 
(h) When one Contestant is a Patentee. 



INTEIJFKHKNCES. 127 

VI. Declaration of. 
(a) In GencruL 
(6) Applicddon tt" Patent. 

(c) Claims: Subjects- Matter viad Conflict. 

(d) Snggexling Claims. 

(c) Generic and Specific Claims. 
(./ ) Claims: Identical in Scope. 
VII. Dissolution. 

(a) In Genercd. 

(b) Ride 122. 

(c) Time AlUnvai)le for Filing Motions, 
{d) Statutorij bars. 

(e) D'ansmittal of Motion to Primary Examiner. 
VIII. Effect of Patent Office Decisions in the 

Courts. 
IX. Ex parte Proceedings. 
X. Issue. 

XI. Judgment on the Record. 
XII. • Motions Generally. 

XIII. Practice on Final Hearing and after Judg- 

ment. 

XIV. Preliminary Statements. 

(a) In General. 

(b) Amendment of. 
XV. Priority. 

(a) la Genercd. 

(6) Abandoned Experiments. 

(c) Emploi/cr and Employe. 

(d) Foreign Patents. 

(e) Invention Made by Third Party. 
XVI. Reduction to Practice. 

(a) In General. 
(6) Adnal. 
(c) Constrnctive. 
(ri) Diligence. 
(e) Drawings & Models. 
XVI I. Reinstatement and Reopening of. 



128 



i 


INTERFERENCES. 


XVIII. 


Service of Notice. 


XIX. 


Suspension. 


XX. 


Testimony. 




(rt) In General. 




(6) Time for Takiiig. 




(c) Interested Par-ties. 




(rf) Irrelevant. 


XXI. 


Vacating Judgment. 


In General. 



1. The practice of the defeated party to an interference at- 
tempting to retry the interference by fihng or having filed in his 
belialf another application or by amending an application, and 
thus delaying the issue of a patent to the successful party to the 
first interference, cannot be too strongly condenmed. (Feb. 17, 
1899. ) 

DuELL, C] Bechman v. Wood, 87 0. G. 1073. 

2. The motion for reconsideration of the Commissioner's 
decision of February 17, 1899, denied. (Feb. 23, 1899.) 
DuELL, C] Bechman r. Wood, 87 0. G. 1074. 

3. Where a claim is suggested to an applicant and every 
opportunity afforded him to place his application in condition 
for interference. Held, that his neglect to do so fairly raises the 
presumption that he is not the inventor of the subject-matter of 
the interference. (Apr. 13, 1899.) 

DuELL, C] Ex parte Calm, 87 0. G. 1397. 

4. Where an equitable owner of an application involved in 
interference petitioned to defend the interference, as applicant 
would not do so, Held, that there being no assignment of record 
and it appearing that the respective rights of the parties have 
been submitted for settlement to a competent court, it is not 
wise for this Office to do more than preserve the rights of the 
parties so far as it is able. (Sept. 27, 1899.) 

DuELL, C] Reiner v. McPhail, 89 0. G. 521. 

5. Held, further, that the applicant has the right to conduct . 
the interference by an attorney of his own selection. Id. 

6. HeUL further, that under all the circumstances of the case 



IXTEHFEHENCES. 129 

the eqiiital)](' o^vncM' is entitlrd to lie kept fully iiifoi'iiicd (if the 
status of the interference, and to he furnislu'd coiiics of the 
interference proceedings. Jd. 

II. Access to and Production of Pateks. 

1. The purpose of rule lOo is to ]»revent the disclosure of 
other inventions than the one in controversy, and not to pre- 
vent tlie disclosure of the full record of the invention which is 
in controversy. (Jan. 6, 1899.) 

Greeley, A. C] Hutin and Lehlanc r. Fairfax, 0() M8. Dec. 
142. 

2. It was never intended hy rules 105 and 10(J that a jiaiiy 
should be permitted to conceal from his opponent in interfer- 
ence anything but a clearly divisible invention not claimed by 
his opponent, and this construction is in harmony with rule 
108. (Mar. 27, 1899.) 

DuELL, C] Ex parte Walrath, 87 0. G. 1397. 

3. To permit a party to disclose to his opponent only the 
claim involved in interference when he has other claims based 
upon the same indivisible structure upon which the interfering 
claim is based would be in effect to nullify rule 109. Id. 

III. Amending Applications. Rule 109. 

1. Under rule 109 an interferent is not restricted to the intro- 
duction of claims identical with the issue, but may introduce 
more specific claims directed to the same subject-matter, and if 
he desires to claim the invention at all, he should be allowed to 
do so with as few restrictions as those imposed upon the multi- 
plicity and scope of claims of an original application. (Jan. 6, 
1899.') 

Greeley, A. C] Crocker v. Allderdice, 66 MS. Dec. 140. 

2. Rule 109, under present practice, has but little bearing 
upon such cases, since the results intended to be accomplished 
by it are now accomplished prior to the declaration of the inter- 
ference. But if the rule opens the way to amendment to one 
of the parties, it also opens the way to amendment to any other 
party, and neither is given an unfair advantage. Id. 

3. While the purjwse of rule 109 is to have the question of 
priority as to all matters which can be contested between the 

^9 



130 INTERFERENCES. 

parties settled in one proceeding, it does not follow that each of 
the claims admitted under the rule must be such as will consti- 
tute a separate count of the interference issue. If they are 
drawn to the same subject-matter, although they are not of 
the same scope as those made by the other party, they are ad- 
missible notwithstanding the fact that on account of the differ- 
ence in scope there is no interference in fact under the present 
practice. The question of interference in fact between the 
claims is not decisive of the question as to whether they shall 
be admitted. (Feb. 10, 1899.) 
Greeley, A. C] Uebelacker v. Brill, 6G MS. Dec. 271. 

4. Motion to amend an application in interference under the 
provisions of rule 109 should, if seasonably presented, be 
transmitted to the primary examiner for decision even where 
judgment of priority has been rendered on the record under 
rule 114. (Nov. 25, 1898.) . 

Greeley, A. C] Dempsey et al. v. Wood, 86 0. G. 182. 

5. It is the policy of the Office to have all questions which 
may be presented brought up and considered at one time and 
in one proceeding, and since the contested proceedings are not 
at an end until the limit of appeal has expired it is proper 
within that time to make a motion to amend under rule 109 
after judgment on the record. Id. 

6. It may be that no substantial advantage is apparent in a 
particular case for considering the matter on motion, but it is 
always best that the course of procedure should follow that 
seemingly indicated in the rule unless there is some good reason 
why the rule does not and was not intended to apply. Id. 

7. It is a well-settled and long-established practice of the 
Patent Office to allow amendn)ents to applications to be made 
under proper circumstances to supply omissions and defects in 
the original specifications and claims as filed which have 
occurred by mistake, oversight, or inadvertence, or want of the 
requisite skill in the preparation and presentation of cases to 
the Office, and the making of such amendments should not be 
allowed to operate to the prejudice of the claims of applicants, 
if made in due and reasonable time and in good faith. (C. A. 
D. C. Oct. 4, 1899.) 

Alvey, J.] *Huletti.'. Long, 89 0. G. 1141. 



INTERFERENCES. 131 

8. ^^llile it is permissible to amend an application after the 
issue of a patent so as to i)rovoke an interference with such 
patent where the application as originally filed disclosed the in- 
vention, such amendment should not be permitted where the 
invention itself is sought to be changed by such amendment. 
(Nov. 13, 1899.) 
DuELL, C] Grinnell v. Buell, 89 0. G. 1863. 

IV. Appeal. 

(a) In General. 

1. Even in the absence of any motion by a party to an inter- 
ference, the OfRce will of its own motion, take notice of the limit 
set by it Avithin which action must be taken. (Feb. 10, 1899.) 
Greeley, A. C] Uebelacker v. Brill, GG MS. Dec. 271. 

2. A party is deprived of his right of appeal b}' the expira- 
tion of the limit set by the Office, and it requires no action on 
the part of his opponent to make that limitation effective. Id. 

3. The Office is not bound by the strict rules of practice that 
obtain in the courts, and the Commissioner has authority to ex- 
tend the limit of appeal in a proper case, even after the limit of 
appeal has expired; but it is well settled practice not to extend 
such limit except upon a showing of good and sufficient reasons. 
(July 26, 1899.) 

Greeley, A. C] Ancora v. Keiper, 67 MS. Dec. 317. 

4. Where it was clear that the failure to pay the fee and thus 
perfect the appeal before the limit of appeal had expired was 
due to inadvertence, accident or mistake, and the delay was not 
due to any intention or negligence on the part of appellant, the 
motion to extend the limit of aj^peal was granted. Id. 

5. Where an applicant fails to make a claim suggested b}- the 
examiner for the purpose of interference and as a result the 
examiner rejects any claim of the application for the reason 
that failure to make the claim and to become a part}' to the in- 
terference will " be interpreted as ecjuivalent to a concession," 
Held, that appellant's remedy is by appeal to the Examiners-in- 
Chief and not by petition to the Commissioner. (Apr. 13, 
1897.) 

Duell, C] Ex parte Calm, 87 0. (i. 1397. 



132 INTERFERENCES. 

IV. Appeal. 

(ft) No Ap}:)eal Lies. 

1. Rule 124 provides that no appeal can be taken from the 
decision of the examiner, holding that a party has a right to 
make a claim, and this rule applies whether tlie question is 
raised by amendment under rule 109 or comes up under some 
other rule. (Feb. 10, 1899.) 

Greeley, A. C] Uebelacker v. Brill, 66 MS. Dec. 271. 

2. The rule prohibiting an appeal from a favorable decision 
on patentability applies, whatever reason is given for that de- 
cision, since it is well settled that the appeal must be from the 
decision and not from the reasons advanced in support of it. 
{Breidv. Smith, 84 0. G. . 809.) The rule is not founded on 
the presuinption that no mistake will ever be made in holding 
a claim patentable, but is for the reason that it is essentially an 
ex parte matter in which no person other than the applicant can 
have such interest as to entitle him to be heard. It is the well- 
settled policy of the Office to refuse to entertain an appeal from 
such a decision. (Jan. 6, 1899.) 

Greeley, A. C.] Woodward v. Newton, 86 0. G. 490. 

3. There being no direct appeal from the examiner's decision 
affirming patentability, a contestant Avill not be permitted to 
obtain indirectly a review thereof upon appeal by merely mis- 
naming the action and calHng it a petition. (Manny v. Easley 

V. Greenwood, 48 0. G. 538, cited.) Id. 

4. When a motion to dissolve alleging that the device of one 
of the parties is inoperative was denied by the Primary Exam- 
iner, no right of appeal existed and the Examineri-in-Chief 
properly dismissed such appeal. (Dec. 15, 1898.) 

Greeley, A. C.] Fowler v. Dodge, 86 0. G. 1497. 

5. A party will not be permitted after the interference is de- 
cided to prevent action on his opponent's application or the 
issue of his patent by merely filing an appeal when it has been 
decided that he has no right of appeal. Id. 

6. Where an appeal was taken to the Commissioner from the 
decision of the examiner denying a motion to dissolve an inter- 
ference on questions which relate to the merits of the invention, 



INTERFERENCES. ] 33 

Hdd, that as under tlic rules and the uniform ]>ractice of the 
Office the Commissioner has decHncd to take jurisdiction of 
such questions either by appeal or i)etition, the appeal should 
be dismissed. (Manny v. Easley etal., 48 O. G., 548 ; Stewart 
V. Ellis et ah. 49 0. G., 1988, and Edison r. Stanley, 57 0. G., 
273, cited.) (Jan. 19, 1899.) 
DuELL, A. C] Breul r. Smith, 86 0. G., 1685. 

7. The practice of the Office under which tlie Commissioner 
declines to take jurisdiction of questions relating to the merits 
brought to him by i^etition or appeal from the decision of the 
Primary Examiner on a motion to dissolve should be followed 
unless there should appear some extraordinary reason for de- 
parting therefrom. Id. 

V. Burden of Proof. 
(a) In General. 

1. To overcome a case made by an earlier application the 
same weight of evidence is not required as in criminal cases. 
It is only necessary that the burden of proof should be sustained 
by the junior applicant by a preponderance of testimony. (C. 
A., D. C. Jan. 8, 1899.) 

Shepard, J.] ^ Esty v. Newton, 86 O. G. 799. 

2. Upon him who would overcome the presumption that to 
the person who has first reduced to practice belongs the merit 
also of priority of conception, the burden rests of doing so by 
satisfactory evidence. (C. A., D. C. Feb. 8, 1899.) 
Morris, J.] *Bader v. Vajen, 87 0. G. 1235. 

8. A reissue applicant is entitled to the date of his original 
application as his date of filing in determining the question of 
burden of proof under Rule 116. (Aug. 81, 1899.) 
Greeley, A. C] Walsh x. Hallbauer, 88 0. G. 2409. 

4. A reissue can be granted only for an invention clearly dis- 
closed and intended to be claimed in the original patent, and 
therefore if a party is entitled to a claim by reissue it follows 
that the original application clearly disclosed the matter covered 
by it. Id. 



134 INTERFERENCES. 

V. Burden of Proof. 

(b) When one Contestant is a Patentee. 

1. When an applicant comes into the Patent Office to over- 
throw a prior patent, he assumes the position, with all its bur- 
dens, of a defendant in a suit who sets up to defeat the right of 
a plaintiff, the want of novelty and invention covered by the 
patent held by the plaintiff, or the fact of existence of priority 
of invention by the defendant or some third person having a 
right to the invention superior to that claimed by the plaintiff. 
In such case the patent held by the plaintiff furnishing irrima 
facie evidence that the patentee is the first inventor of the device 
described in the patent and of its novelty, that 'prima facie effect 
can only be overcome and defeated by clear and indubitable 
evidence. In Cantrell r. Wallich, 35 0. G. 871 ; 117 U. S. 
690, the Supreme Court of the United States in speaking of the 
effect of a patent in such case said: The burden of proof is upon 
the defendant to establish this defense ; for the grant of letters 
patent is prima fade evidence that the patentee is the first in- 
ventor of the device described in the letters patent and of its 
novelty. Smith v. Goodyear Dental Vulcanite Co., 11 0. G. 
246; 93 U. S. 486; Lehnbeuter v. Holthaus, 21 0. G. 1783; 105 
U. S. 94. Xot only is the burden of proof to make good this 
defense upon the party setting it up, but it has been held that 
ever}^ reasonable doubt should be resolved against him. Citing 
Coffin V. Ogden, 5 0. G. 270; 18 Wall. 120, 124, and Washburn 
V. Gould, 2 Story 122, 142. (C. A., D. C. Jan. 17, f899.) 
Alvey, J.] =i< Williams v. Ogle, 87 0. G. 1958. 

2. E. , the senior part}' and patentee, filed his application 
January 28, 1896, and R. filed November 6, 1896. To over- 
come E.'s case, R. alleged conception on January 17, 1895, and 
reduction in February or ^larch, 1895. Hekl^ that R., on 
whom was the burden of proof and who under the rules is re- 
quired to prove his case by evidence so cogent as to leave no 
reasonable doubt, has failed to discharge the onus placed upon 
him, and priority is therefore awarded to E. The decision of 
the Commissioner of Patents, Ruete v. Elwell, 65 MS. Dec. 
256, affirmed. (C. A., D. C. May 4, 1899.) 

Shepard, J.] * Rente v. Elwell, 87 0. G. 2119. 



INTERFERENCES. 135 

VI. Declaration of. 
(a) III General. 

1. It is not proper to include several claims in one application 
under one issue, since they cannot all mean the same thing, and 
therefore confusion as to the meaning of the issue would be 
likely to result in taking testimony. (Wolfenden v. Price, 83 
0. G. 1801.) (Jan. 16, 1899.) 

Greeley, A. C] Sadtler v. Carmichael v. Smith, 86 0. G. 

1498. 

2. It is proper to include two applications of the same party 
under one issue when the invention in controvery is disclosed 
and claimed in both cases. Id. 

3. Where the issue of the interference was for a process and 
the examiner included under that issue claims for an article of 
manufacture which were not made by one of the parties, Held, 
that the interference was improperly declared and that the 
article claims should not have been included in the interference. 
(Feb. 5, 1899.) 

Greeley, A. C] Calm v. Schweinitz r. Dolley v. Geisler, 86 
0. G. 1633. 

4. Where the claims of the a))plications were rejected and the 
examiner declared the interference, he in effect withdrew the 
rejection of the clain)s; Init it is l)ad ])ractice to declare an inter- 
ference before the parties have been notified that there is an 
interference and given an oj^portunity to remove the objections 
and overcome the references. /(/. 

5. When the claim of one party includes a step in the ])rocess 
not included in the issue or the claim of the other party, there 
is no interference in fact. (Dec. 21, 1898.) 

Greeley, A. C] Bullier v. Willson, 87 O. G. 180. 

6. AVhen the specification clearly and fully sets forth the 
advantages of using an alternating instead of a direct current, it 
cannot be held that when tlic limitation to the use of an alter- 
nating current was inserted in the claim it was intended to or 
does in fact apply to the use of any current broadly. /(/. 

7. In the consideration of an interference the Office is no 
more competent than the courts to say that an element which 
an ap])licant has placed in his claims is an innnaterial one, 



186 INTERFERENCES. 

especially when in framing the issue tlie Office had made the 
element a part thereof. (Hammond v. Hart, 83 0. G. 743, and 
Wolfenden v. Price, 83 0. G. 1801, cited.) (Mar. 2, 1899.) 
DuELL, C] Streat v. Freckleton, 87 0. G. 695. 

8. Where there is but a single issue in the interference, but 
the interference letter states that said issue constitutes claim 2 
of H.'s original application, and also embraces the substance 
of claims 1 and 4, respectively, of two divisional applications, 
Held, that under the present practice H. should be notified 
that these claims will be held to await the result of the inter- 
ference, and will be rejected at the termination of the interfer- 
ence if priority is awarded to his opponent. If, however, they 
are not substantially the same claims and such claims are made 
by his opponent, then said claims should be placed in one or 
more different interferences. In any event the divisional ap- 
plications are not properly involved in this interference. (May 
12, 1899.) 
DuELL, C] Eastman r. Houston, 87 0. G. 1781. 

VI. Declaration of. 

(/>) Ajyplication and Patent. 

1. If it is clear that a patentee's claim is limited to a specific 
construction and the later applicant chooses to claim the same 
invention generically and can establish a prima fade right to the 
claim under the rules, such generic claim may be allowed with- 
out an interference. So, too, if the later applicant limits his 
claim to a species not claimed by the patentee. (Feb. 1, 1899.) 
Greeley, A. C] Edison v. White, 66 MS. Dec. 240. 

2. An applicant cannot be permitted, by merely wording his 
claim differently from that of a patent granted before the filing 
of his application, to secure a patent for the same invention 
unless and until he has established his right thereto in an inter- 
ference proceeding. Id. 

8. B's application was not filed until after R's patent had 
been granted, and he had been notified that he (B) was in- 
fringing said patent. R had also manufactured the device and 
placed it on the market a year before B commenced to manu- 
facture it. Held, that in order to prevail, B must prove his 



INTERFERENCES. 137 

€ase beyond a rcasonahle (loul)t, and not merely ])y a i)repon- 

derance of evidence. (Mar. 25, 1899. ) 

Greeley, A. C] Bragger i'. Rhind, 66 MS. Dec. 409. 

4. If the evidence in an interference between an application 
and a patent is susceptible of two interpretations, one sustain- 
ing and one destroying the patent, the one sustaining it must 
be accepted. Id- 

5. Where an interference was found to exist Ijetween an appli- 
cation and a patent, and upon request of applicant the interfer- 
ence was innnediately declared without waiting to determine the 
question of the patentability of the claims of his a^jplication 
which did not interfere. Held, that this is proper i)ractice, 
since nothing is to be gained by delaying the declaration in 
cases of this kind, and it is to the advantage of all parties, and 
is the purpose of the rules to have interferences settled as soon 
as possible. (Aug. 22, 1899.) 

Greeley, A. C] Shaffer v. Dolan, 67 MS. Dec. 392. 

6. That portion of rule 96 relating to the putting of an ap- 
plication in condition for allowance, applies as well where one 
of the parties to an interference is a patentee, and an interfer- 
ence need not be delayed because of the failure of the applicant 
to put his case in condition for allowance. Id. 

VI. Declaration of. 

(c) Claims; Subjects- Matter must Conflict. 
A condition precedent to the declaration of an interference 
under the present practice is, that interfering claims of one in- 
terfering party must be read upon the structure of the other 
party, and where this condition is absent no interference should 
be declared. (Jan. 6, 1899.) 
Greeley, A. C] Crocker v. Allderdice, 66 MS. Dec. 140. 

VI. Declaration of. 

(fZ) Suggesting Claims. 
The examiner having held that G's original disclosure sup- 
ported the claim of the issue which was H's claim and had 
been suggested to G, and that G had a right to make the claim, 
and it appearing that H substantially admitted that there was 
an interference if G had a right to make the claim. Held, that 



138 INTERFERENCES. 

upon appeal from the examiner's denial of H's motion to dis- 
solve on the ground of no interference in fact, and irregularity 
in declaring the interference, the examiner's decision should be 
affirmed. (May 16, 1899.) 
DuELL, C] Gathman ?'. Hurst, 67 MS. Dec. 61. 
VI. Declaration of. 

(e) Genus and Species. 

1. A generic and specific claim do not interfere even when 
based on the tame species, and valid patents may issue to dif- 
ferent inventors — to one for the specific claim, to the other for 
the generic claim — and the law does not require that before the 
patents issue it should be determined in the Patent Office that 
one is the first inventor of the species and the other the first 
inventor of the genus. (Reed r. Landman, 55 0. G. 1275, 
overruled.) (May 6, 1899.) 

DuELL, C] Williams v. Perl, 87 0. G. 1607. 

2. The case of Miller v. Eagle Manufacturing Co. (66 0. G. 
845) does not hold that a patent cannot issue to A with a generic 
claim and to B with a specific claim, both based on the disclo- 
sure of the same species. Id. 

3. The presumption is that the one to make the specific claim 
is the first inventor of the species and that the one who makes 
the generic claim is the first inventor of the genus, and this pre- 
sumption is strengthened, as in the present case, when neither 
applicant will make both generic and specific claims upon the 
suggestion of the Office. Id. 

4. It does not follow from the fact that two inventors finally 
reach the same species that both of them first conceived or em- 
bodied the invention in the form of that species shown by both. 
Either or both of them might have independently conceived of 
the genus in a different specific form. M. 

5. Notwithstanding the fact that two inventors filing inde- 
pendent applications disclose the same species, it does not follow 
that the first inventor of the species shown by both was the first 
inventor of the genus. The one earlier in the field may have 
reached the sj^ecies by a process of evolution. The one later in 
the field may have conceived and disclosed the species shown at 
the very outset of his creative act. Id. 



INTERFERENCES. 139 

VI. Declaration of. 

(/) Claims Identical in Scope. 

1. Both parties disclose a luln-icator of tlie type known as 
"balanced hydrostatic sight-feed lubricators." They disclose 
suitable cylinder and equalizing-pipe connections. In W's claim 
in interference these connections are specified, -while in E's' 
they are not. Both parties disclose a valve for controlling the 
by-passage automatically, and it is recited as an element in the 
respective claims of the parties. W's claim recites that this 
valve is automatically regulated "by variations of pressure 
within the duct," such a statement not being in E's' claim. 
Held, that under the practice of the office the limitations found 
in one claim and not in the other cannot be construed as non- 
essential, and the interference was improperly declared. (Sept. 
21, 1899.) 

DuELL, C] Essex v. Woods, 89 0. G. 353. 

2. Held, further, that had the examiner beheved that E's 
device was inoperative without the use of suitable cylinder and 
equalizing- pipe connections and without the valve being auto- 
matically operated by variations of pressure within the duct, 
and called upon E to amend his claim accordingly, there would 
have been no necessity for placing a construction upon E's 
claim by reading into it certain limitations. /(/. 

3. Held, further, that had E refused to comply with the 
examiner's suggestion, the examiner would have ])een justified 
in rejecting E's claim as being for an inoperative device and as 
unpatentable over the W invention. Id. 

4. An interference is not sufficiently clear and definite; which 
requires that certain limitations in the claims of one party 
should be held to be immaterial, and that the other limitations 
should be read into the claims of either one or the other party 
to the proposed interference in order to make them the issue of 
the interference. (Wolfenden r. Price, 83 0. G. 1801, cited.) 

Id. 

VII. Dissolution. 

(a) In General. 
1. It would be contrary to equity and good practice to dis- 
solve an interference after the parties had both taken testimony, 



140 INTERFERENCES. 

and proceeded to trial, if the dissolution would be followed 
immediately by a redeclaration on an issue founded upon the 
same structure ; but where only one of the parties had taken 
testimony, and under the present practice there is no interfer- 
ence in fact, and the interference should not have been declared 
in its present form. Held^ that dissolution was proper. (Jan. 
6, 1899.) 
Greeley, A. C] Crockery. Allderdice, 66 MS., Dec. 140. 

2. When under the present practice the interference was im- 
properly declared by reason of the fact that the claims of the 
parties are not of the same scope, but it appears that the party 
with the specific claim can make and intends to make the broad 
claim, although he has not actually presented such claim by 
amendment, Held, that the interference should not be dissolved, 
since a dissolution would merely result in a redeclaration on the 
same issue. (Dec. 1, 1898.) 

Greeley, A, C] Morss v. Henkle, 86 0. G. 183. 

3. It is irregular to include several claims of one party under 
one issue ; but when judgment has been rendered on the record 
and no testimony is to be taken, it is not such irregularity as to 
preclude a proper decision on priority, and is therefore not a 
good ground for dissolution. Id. 

4. Motion for dissolution cannot be made in the first instance 
before the Primary Examiner, although the interference is be- 
fore him for the consideration of another motion, but it must 
be made before and transmitted by the Examiner of Interfer- 
ences before the Primary Examiner can take jurisdiction of it. 
(Dec. 8, 1898.) 

Greeley, A. C] Howard v. Hey, 86 0. G. 184. 

5. Since the decision in Hammond v. Hart (83 0. G. 743) it 
has been the practice of the Ofhce to dissolve an interference 
where each party has not made the claim of the other, if no 
testimony has been taken and the parties will not be injured by 
the dissolution. (Feb. 5. 1899.) 

Greeley, A. C] Calm v. Schweinitz v. Dolly v. Geisler, 86 0. 
G. 1633. 

6. Certain affidavits filed in the case on motion to dissolve 



INTERFERENCES. 141 

should not be considered, as they were not entitled in the cause, 
(Goldstein r. Whelan, 69 0. G. 124 ;) but the memorandum 
filed on behalf of one of the parties referring to certain ))ubliea- 
tions to show that the invention as described by another of the 
parties is inoperative, should be considered to the extent of ex- 
amining the pu])lications referred to in that paper to ascertain 
whether they show that the process is inoperative. Id. 

7. The allegation that the testimony shows that joint a])pli- 
cants who are parties to the interference are not joint inventors 
is not a proper ground for a motion to dissolve or for a suspen- 
sion of the interference. (Dec. 16, 1898.) 

Greeley, A. C] Shiel v. Lawrence et ai, 87 O. G. 180. 

8. To pass on the question of joint invention would re(iuire as 
full consideration of the testimony as would the question of 
originality, and therefore both questions should be decided at 
one time. Id. 

9. The question as to wliether L and K are original inventors 
is just as important as is the question whether they are joint 
inventors, and therefore the question of joint invention will not 
be given the preference at the mere option of their opponent. Id. 

10. The Commissioner of Patents is vested with power to dis- 
solve an interference on his own motion whenever he considers 
that justice and equity demand that it should be done. (Ben- 
der V. Hoffmann, 85 0. G. 1737, and Bechman r. Wood, 68 0. 
G. 2087, cited.) (Apr. 13, 1899.) 

DuELL, C] Ex parte Ca\ir\, 87 0. G. 1397. 

11. Where a motion was made to dissolve an interference on 
the ground of (1) no interference in fact, (2) no right of one of 
the parties to make a claim, and (3) irregularity in declaring 
the interference, and the examiner in his decision treated the 
grounds as raising only the question of the right of one of the 
parties to make the claim and decided that there was such right 
and refused to fix a limit of ai)peal. Held, that the examiner's 
refusal to set a limit of appeal raises a question which if carried 
to its logical conclusion would nullify rule 124 and make the 
primarj'^ examiner the sole tril)unal to determine whether or not 
an interference should continue. (July 12, 1899.) 

DuELL, C] Silverman v. Hendrickson, 88 0. G. 1703. 



142 INTERFERENCES. 

12. Where motion is made to dissolve an interference based 
upon various grounds, some of wliich are appealable to the 
Commissioner under rule 124, it cannot be successfully main- 
tained that the primary examiner by grouping the appealable 
grounds with a ground which is not appealable may prevent 
the Commissioner from reviewing his action. It is not within 
the power of a primary examiner by such ingenious action to 
nullify an office rule. Id. 

13. As both parties consented to and did present the question 
of merits for decision, i/e/c/, that it is unnecessary to remand the 
case to the primary examiner for the purpose of setting a limit 
of appeal, and the appeal disposed of. Id. 

14. It is the almost uniform practice of the Office not to 
transmit motions to dissolve an interference until after the pre- 
liminary statements are filed and approved. In the exceptional 
cases where such motions have been transmitted prior to the 
approval of the statements, it has been for the reason that the 
hearing could be had "under such circumstances as would 
make it just to hold parties to the result of a contest as res ad- 
judicata.''^ (Laurent-Cely t'. Payen, 51 0. G. 621.) (Dec. 7, 
1899.) 

DuELL, C] King & Badendreier v. Libby, 89 0. G. 2653. 

15. A motion to dissolve an interference on the ground that 
there has been such irregularity in declaring the interference as 
would preclude the proper determination of the question of pri- 
ority and that no interference in fact exists should not be trans- 
mitted to the primary examiner until the preliminary statements 
have been approved. Id. 

16. The questions raised b}' such a motion cannot be so cor- 
rectly determined without an inspection of the opponent's 
specification and drawings as it can with it. It cannot at the 
present time be so heard and determined that the parties could 
be justly held to be bound by it in subsequent proceedings. Id. 

17. Moving to dissolve an interference upon any of the 
grounds stated in rule 122 before the preliminary statements 
are opened and approved is a practice not to be encouraged. Id. 

18. Even though a decision should be res adjudlcata between 
the parties upon one or two questions presented by a motion to 



INTERFERENCES. 148 

dissolve before the preliminary statements are opened, the other 
grounds upon which motions to dissolve might be made as a 
matter of right within twenty days after the statements are 
opened and approved could still be considered, and the condi- 
tion of dis])osing of motions to dissolve by piecemeal would re- 
sult, thus entaiHng an unnecessary burden upon parties to an 
interference and increasing the expense of proceedings and 
unnecessarily prolonging them. Id. 

VII. Dissolution. 

(/>) Rule 122. 

1. A petition praying tliat the examiner "* * * be advised 
that from every motion based upon the ground of irregularity, 
wherein it is contended by the moving part}^ that the ground of 
irregularity involves something more than the question of patent- 
able invention of the issue, a limit of appeal should be fixed to 
enable such moving party to appeal; " cannot be granted, since 
the Office must, without regard to the views of the parties, 
determine for itself whether the grounds urged as showing what 
the moving party calls irregularity do in fact relate to the merits. 
In each case it is not a question as to the opinion of the parties 
or their contentions, but it is one of fact. If the reasons stated 
as showing irregularity really involve the question of patent- 
ability or the applicant's right to make the claim, it involves 
the merits, and a party cannot transform it into another ques- 
tion by merely calling it irregularity. The four grounds for 
dissolution set forth in rule 122 — namely, interference in fact, 
irregularity, i)atentability, and right to make the claim — have 
distinct and independent meanings, which should not be con- 
fused by parties bringing motions under that rule. Each ground 
which it is desired to urge should be separatedly alleged and 
should be given the proper title specified in the rule. (Jan. 6, 
1899. ) 

Greeley, A. C] Woodward r. Newton, 86 0. G. 490. 

2. Interference in fact refers to the question of conllict in 
subject-matter claimed, as set forth in Hammond r. Hart, (S3 
0. G. 743), and irregularity means some vital formal defect 
which will preclude a proper decision on priority, although 
there may be a conflict in subject-matter, such as indefiniteness 



144 INTERFERENCES. 

or uncertainty in the wording of the issue. These questions 
relate strictly to the conduct of the interference proceedings 
without involving the merits of the invention or either party's 
right to a patent, and are therefore essentially inter- partes ques- 
tions which are appealable directly to the Commissioner. Id. 

3. The question of patentability and the right of an appli- 
cant to make the claim clearly relate to the merits, and when 
appealable at all are ex parte questions between the applicant 
whose claim is affected and the Office. (Painter v. Hall, 83 
0. G. 1803.) As stated in Zeidler v. Leech, (54 0. G. 503:) 

Questions involving the " merits of an invention " are questions concerning tlie meri- 
torious or unmeritorious attitude of an alleged invention to the antecedent rights of the 
public; or, in ottier words, questions other than questions of "form" arising between 
the applicant and the Office. * * * If they were not ex parte— that is to say, if the ques- 
tions which go to the Examiners-in-Chief in the first instance under rule 124 were not 
always and necessarily ex parte questions — the rule which denies to all but one of the 
parties the right to be heard would be formulated injustice and nothing else. Id. 

4. The question of patentability of course relates generally to 
the question as to whether there is a bar to the grant of a patent 
containing the claim in controversy, whereas the c^uestion of the 
right of an applicant to make the claim involves the question 
whether that particular applicant has a right to claim that 
invention aside from any independent or general bar to the 
grant of a patent covering it — such, for instance, as new matter 
introduced after the case is on file. Id. 

5. When two applications of one party are included under 
one issue, the allegation that the applicant has no right to make 
the claim in one of those cases, although it is admitted that he 
has such right in the other case, is a proper ground for a motion 
to dissolve. (Jan. 16, 1899.) 

Greeley, A. C] Sadtler v. Carmichael v. Smith, 86 0. G. 
1498. 

6. It is to be presumed that claims which have not been 
specifically rejected are regarded as allowable. Even if claims 
have been rejected their inclusion in an interference is in effect 
a waiver of that rejection. The failure of the examiner to state 
that the claims included are allowable is therefore no good 
ground for a dissolution of an interference. Id. 

7. Whether or not an applicant's device will operate in the 
manner set forth by him, his description of his method and his 



I STK n FERENCES. 1 4 5 

claim to it must be accepted in so far as tlic (nu stion of inter- 
ference in fact is concerned. A (daini cannot be construed to 
mean something different from that intende(l ami clearly indi- 
cated by the terms employed. hi. 

6. When the claim of a party covers a method whicli includes 
a step not claimed or disclosed ])y the other ])arties, there is no 
interference in fact, whether or not he has the right to claim 
that method himself. Id. 

VII. DlSSOHTION, 

(r) Time AUoicahlc fur Filing Motions. 
After judgment has been rendered on the record under rule 
114, a motion for dissolution may be made at any time within 
the limit of appeal from such judgment. This includes not 
merely the limit of appeal first set, but any extension thereof 
granted with the approval of the Oflfice. (Law r. ^\'oolf, 55 
0. G. 1527.) (Dec. 1, 1898.) 
Greeley, A. C] Morss v. Henkle, 86 0. G. 183. 
VII. Dissolution. 

(d) Statutory Bars. 

1. The question of public use will not be inquired into dur- 
ing the progress of an interference. The fact that it is alleged 
to be shown by the statements of the parties in interest in 
another proceeding in which they were involved is no ground 
for making this case an exception to the rule. (Dec. 8, 1898.) 
Greeley, A. C] Howard v. Hey, 86 0. G. 184. 

2. Where a motion was made to dissolve an interference on 
the ground that "the invention disclosed in the issue of said 
interference is not patentable to Leonard Paget or his assignees, 
the Reliance Lamp Electric Company, by virtue of concessions 
made in the testimony taken in l)ehalf of said Leonard Paget, 
which concessions allege that the subject-matter of the issue 
embraces no invention over the subject-matter disclosed in a 
prior i)atent. No. 618,993, granted to said Leonard Paget on the 
7th day of February, 1899," Held, that the motion being l)ased 
upon grounds arising out of testimony taken on the question of 
priority, it should not under the settled practice of the Oflice be 
transmitted to the primary examiner. (Cook v. Leach, 42 MS. 

10 



146 INTERFERENCES. 

Dec. 370; Potter et al. v. Soden, 47 MS. Dec. 119; Thomson 
et al. V. Hisley, m 0. G. 1596, cited.) (Oct. 30, 1899.) 
DuELL, C] Paget, v. Bugg, 89 0. G. 1342. 

3. Held^ further, that the testimony on which the motion is 
based is such testimony as should be considered on the question 
of priority, and if the examiner of interferences or the ex- 
aminers-in-chief are of the opinion that it estabhshps a statutory 
bar to the grant of a patent, rule 127 provides relief for the 
appellant in that these tribunals may call the (Commissioner's 
attention to the statutory bar. Id. 

VII. Dissolution. 

(e) Transmittal of Motion to Primary Examiner. 

1. It is well settled that when a motion for dissolution is trans- 
mitted to the primary examiner he does not have jurisdiction of 
the interference for all purposes, but merely to decide the par- 
ticular motion which has been transmitted to him. (Dec. 8, 
1898.) 

Greeley, A. C] Howard v. Hey, 86 0. G. 184. 

2. A motion to dissolve made after testimony has been taken 
should not be transmitted to the primary examiner when no 
excuse is given for the delay except in so far as it is based upon 
the testimony. Such motions cannot properly be based upon 
the testimony. (Dec. 16, 1898.) 

Greeley, A. C] Shiels v. Lawrence, et al, 87 0. G. 180. 

VIII. Effect of Patent Office Decisions in the Courts. 

1. There is a great difference between inoperativeness and 
imperfection. It is well known that many invention were ex- 
tremely crude in their inception, and it is not always easy to 
recognize the original conception in the perfect device. (C. A. 
D. C, Apr. 4, 1899.) 

Morris, J.] * Fowler r. Dodge, 87 0. G. 895. 

2. As it is not usual for courts to disturb the conclusions of 
the Patent Office on such a question as the operativeness of a 
device as shown and described by an application for patent 
without very cogent proof of error, and there being no such 
proof in this case, Held, that the decision of the Patent Office 



INTERFERENCES. 147 

that the D ai)|)]icati()n describes an operative device should he 
affirmed. Id. 

IX. Ex Parte Proceedings. 

1. ^^'hether the claims made by the defeated party to an in- 
terference, and read upon the disclosure made in his application 
are or are not met by the disclosure made by the successful 
party, is a question to be determined ex parte and the practice 
approved in ex parte Guilbert, 85 0. G. 454 ; Sand. Pat. Dig. 
1898, 76, 94, should be followed. (Feb. 23, 1899.) 
Greeley, A. C] Richards v. Nickerson, 66 IMS. Dec. 812. 

2. The question of patentability and the right of an appli- 
cant to make the claim clearly relate to the merits, and when 
appealable at all, are ex parte questions between the applicant 
Avhose claim is affected and the Office. (Painter v. Hall, 83 0. 
G. 1803. (Jan. 6, 1899.) 

Greeley, A. C] Woodward r. Newton, 86 0. G. 490. 

X. Issue. 

1. For the purposes of the interference, the issue should be 
construed, whenever by reason of material differences found to 
exist between the inventions disclosed in the applications of the 
parties it becomes necessary to construe the issue, with reference 
rather to the disclosure made in the application of the senior 
party than that of the junior party, and where priority is 
awarded to the senior party, the effect of such construction is 
to make his application as to the cJaim of the issue as read upon 
the disclosure made by him, a part of the prior art so far as the 
junior party is concerned — to make it, in short, a reference 
which the junior party must avoid in drawing his claims. 
(Feb. 23, 1899.) 

Greeley, A. C] Richards v. Nickerson, 66 MS. Dec. 312. 

2. The issue of an interference is to be strictl}' construed, and 
where an applicant copies the claims of a patent for the pur- 
pose of an interference, the issue must be construed in the 
light of the specification of the patent. (June 24, 1899.) 
DuELL, C] Thomas v. Chapman, 67 MS. Dec. 223. 

3. Where one of the parties to an interference who is an 



148 INTEKFERENCES. 

applicant had l)efore liim when he prepared his apphcation the 
patent of his opponent and adopted the claims of said opponent 
for the apparent })nrpose of an interference, Held, that the ap- 
plicant is not entitled to demand a construction of the claim of 
the patentee which woidd render it invalid by reason of that 
which he himself had accomplished if it can be upheld by any 
other reasonable interpretation not necessarily inconsistent with 
the statement of the patentee. (C. A. D. C. May 4, 1899.) 
Shepard, J.] * Rente V. Elwell, 87 0. G. 2119. 

4. Neither the rules nor the practice of this Office provide 
for raising and testino; the question as to whether an interfer- 
ence issue is anticipated l)y prior patents in the manner at- 
tempted in this case. (June 20, 1899.) 

DuELL, C] Huber v. Aiken, 88 0. G. 1525. 

5. To permit a party to an interference to take up the ques- 
tion of anticipation of the issue by prior patents and call experts 
to testify at length on such matter would be in effect to suspend 
the interference proceeding and is unwarranted by the rules. 

Id. 

6. When a party to an interference is of the opinion that the 
issue is anticipated by the prior art, he should proceed to raise 
this question, as provided b}- rule 122. Id. 

7. Mere similarity in the wording of claims does not show 
that there is an interference in fact unless those words construed 
in the light of the disclosures made by the parties mean the 
same thing. (Oct. 10, 1899..) 

DuELL, C] Edgecomlje v. Eastman v. Houston, 89 0. G. 707. 

8. Where the claim of one party, when read in connection 
with his disclosure and the terms employed are given their 
ordinary and intended meaning, covers features not disclosed by 
the other party. Held, that tliere is no interference in fact. Id. 

9. Where a claim is held allowable on appeal on the ground 
that it contains a certain limitation as distinguishing it from the 
prior art, Held, that the issue in an interference subsequently 
based upon that claim cannot l)e construed as not including 
that limitation. Id. 

10. Where both parties are applicants, an issue should not be 
formulated which includes features not disclosed bv one of the 



INTKUFKKKNCKS. 140 

parties merely because in the cxaiuiiicr's ojiiiiion (lie devices 
are not ])atentably diflferent; l)nt if there is a common patent- 
able invention that invention alone should be made the issue if 
the parties desire to and do in fact make claim to it. Id. 

XI. Ji'DOMEXT ON Tin-: Record. 

^^'here })riority was awarded to the senior party to an inter- 
ference by the examiner of interferences and the junior party 
took an appeal on the uround that the application of the senior 
party did not disclose the invention of the issue, IlchJ, that the 
senior party's original ai)])lication did not disclose the invention 
of the issue, and thai he is not entitled to an award of priority 
based upon tliat ai)plication, which is the only evidence of his 
claimed invention, and the decision of the examiners-in-chief 
in awarding priority to such party affirmed. (Nov. 13, 1899.) 
DuELL, C] Grinnell r. Buell, 89 0. G. 1863. 

XII. Motions Generally. 

1. Where W made a motion that certain additions be made to 
the certified copies of the parts of his application involved in an 
interference, which motion was regularly presented to the ex- 
aminer and granted, and subsequently H, the other party, ap- 
pealed from the examiner's decision granting the motion, while 
in the meantime the examiner had requested the suspension of 
the interference for the purpose of adding a new party thereto 
under rule 129, Held, that, inasmuch as the whole (question 
raised by the appeal is the right of W to make the claim of the 
interference issue based upon the additions allowed by the ex- 
aminer, it is unnecessar}^ to pass upon it at this time, since if 
the new party is added and the interference redeclared, any of 
the parties thereto have a right to bring any of the motions 
provided by the rules, and therefore under such circumstances 
H can bring his motion to dissolve the interference as rede- 
clared. (Nov. 29, 1899.) 

DuELL, C] Weikly v. Hodges, 68 MS. Dec. 227. 

2. Where a motion for dissolution filed by one party and a 
motion to amend under rule 109 filed by the other party are 
transmitted to the primary examiner, he should decide both 
motions and not suspend action on the motion to amend until 



150 INTERFERENCES. 

the decision on the other motion becomes final. (Nov. 30, 

1898. ) 

Greeley, A. C] Uebelacker v. Brill, 87 0. G. 1783. 

3. In accordance with the general spirit of the practice all 
questions which can fairly be considered at the same time 
should be so considered. The object of this practice is to 
diminish the number of appeals and expedite the final determi- 
nation of cases. Id. 

4. VV^here the real contention on w^hich a motion is based is 
that the matter in issue was not disclosed in one party's case as 
originally filed, Held, that the question involves the merits and 
that it cannot be changed into one which is reviewable by the 
commissioner on appeal by merely misnaming the action and 
calling it a motion to shift the burden of proof. (Aug. 21, 
1899.) 

Greeley, A. C] Walsh v. Hallbauer, 88 0. G. 2409. 

XIII. Practice on Final Hearing and After Judgment. 

1. A decision on priority makes the successful party's inven- 
tion a part of the prior art in so far as his opponent is concerned 
to the same extent that it would be if shown in a prior patent; 
it is if anything a better reference, since in regard to certain 
matters the defeated party is estopped from disputing its perti- 
nency. (Feb. 10, 1899.) 

Greeley, A. C] Uebelacker v. Brill, 66 MS. Dec. 271. 

2. Where, after judgment on the record in an interference 
proceeding between foreign applicants, a motion made by the 
defeated party to reopen the case to tr}'' the question of origi- 
nality was granted, Held, that the burden of proof is upon 
said defeated party to prove be3''ond a reasonable doubt that 
his opponent obtained a knowledge of the invention from him, 
and upon his failure to sustain such burden or to show that 
his opponent was not in fact the original inventor, there is no 
warrant for withholding a patent from the successful party. 
(Nov. 18, 1899.) 

Duell, C] Shiels v. Lawrence & Kennedy, 68 MS. Dec. 201. 

3. The claims of a defeated party to an interference to be 
allowable, must not only be patentable over the issue itself, but 



INTERFERENCES. 151 

over the structure of the successful party to which that issue 
was drawn. The structure to Avhich the claim is drawn and 
not merely the claim itself is the thing that is in controversy, 
and after a decision on priority, the defeated party obviously 
should not be permitted to insert other claims to the same 
matter, although they may contain specific differences, and 
thereby provoke a second interference in regard to the same de- 
vice previously contested. To do so would be to provide a way 
whereby a defeated party to an interference could by successive 
interferences indefinitely delay the issue of a patent to the suc- 
cessful party. (Nov. 11, 1899.) 

Greeley, A. C] Harkness v. Strohm, 68 MS. Dec. 157. 

4. Rule 127 provides that "A second interference will not be 
declared upon a new application for the same invention filed by 
either party, and it necessarily follows that a second interfer- 
ence between the same applications will not be declared." 
" The same invention " means the same substantive matter, and 
not that it shall be claimed in the same way. These words 
mean practically the same thing in reference to successive inter- 
ferences, as they are defined by the courts as meaning in the 
rulings made by them that a party cannot have two patents for 
the same invention. (Miller v. Eagle Mfg. Co., 6G 0. G. 845, 
C. D. 1894, 147 ; Fassett v. Ewart Mfg. Co., 64 0. G. 439.) 

Id 

5. The examiner's action in suggesting to a defeated party 
claims filed by a successful party to an interference, after the 
decision of priority of invention for the purpose of a second 
interference Avas irregular and improper, and the second inter- 
ference in regard to those claims should not have been declared. 

Id. 

XIV. Preliminary Statements. 
(a) In General. 
1. The filing of a preliminary statement by an applicant 
stating that he made the invention of the issue at a certain date 
does not estop that party from afterward alleging in a motion 
for dissolution that he does not claim that invention. Prelim- 
inary statements are necessarily made with reference to the 



152 INTERFERENCES. 

invention disclosed in a party's own case upon the presumption 
that the issue apphes to that invention. (Jan. 16, 1899.) 
Greeley, A. C] Sadtler v. Carmichael v. Smitli, 8(3 0. G. 
1498. 

2. The rule of tl)e Patent Office prescribing that "the parties 
will be strictly held in their proofs to the dates set up " in their 
preliminary statements is in accordance with right, reason, and 
with the principles of justice, for otherwise parties might be 
misled to their detriment. (C. A. D. C, Feb.. 8, 1899.) 
Morris, J.] * Bader 7^ Vajen, 87 0. G. 1235. 

3. Interferences are declared for the purpose of determining 
the question of priority or originality of invention between two 
or more parties. Preliminary statements are the pleadings of 
the parties, and set forth certain facts as to conception, dis- 
closui'e, and reduction to practice, and to the allegations set up 
in the preliminary statements the evidence must respond. 
(June 20, 1899.) 

Duell, C] Huber i;. Aiken, 88 0. G. 1525. 

4. It is important that the extent of use of a completed 
invention be disclosed in the preliminary statement ; but it is 
not necessary that such disclosure should be prolix and give 
unnecessary details ; but it should set forth in concise and 
explicit terms the extent of use of the completed invention. 
(Oct. 26, 1899.) 

Duell, C] Loeben v. Hamrick, 89 0. G. 1672. 
XIV. Preliminary Statements. 
(h) Amendment of. 
1. The bare statement of an interferent that he did not recol- 
lect certain circumstances material to his cause is not a good 
ground upon which to permit an amendment to his preliminary 
statement, particularly where it carries his date of reduction to 
practice back of that alleged by his opponent, for such a state- 
ment could be made in every case, and there is no way of con- 
troverting it. A party who relies exclusively upon his own 
memory and subsequently finds himself mistaken, must accept 
the consequences, since they are due to his own negligence. 
The allegation in the original statement may in fact be wrong 



ixTKRi i:hexces. 153 

and the error may l)e material to the moving })arty's ease, but 
that alone is not deeisive of tlie question where it is due to care- 
lessness or neghgence, since the rights of other paities arc to be 
considered. (Nov. 6, 1899.) 
Greeley, A. C] Warner r. Gorton t'. Smith, 68 MS. Dee. 125. 

2. It has been the uniform practice of the Oflice, founded 
upon good and substantial reasons, to require a party to exer- 
cise diligence and care in discovering and alleging his correct 
dates in his original statement, and to refuse to permit an 
amendment in a material matter unless such diligence and care 
have been clearly shown. If an amendment were permitted in 
every case Avhere a party relied solely upon his own memory 
without making any efforts to confirm his opinion, merely be- 
cause he subsequently found himself mistaken, the useful effect 
of preliminary statements would be destroyed. (Nov. 7, 1899. ) 
Greeley, A. C] Silverman v. Hendrickson, 68 ]\IS. Dec. 130. 

3. After decision on priority liad been rendered by the Exam- 
iner of Interferences and an appeal from his decision had been 
taken, a petition asking that the jurisdiction of the Examiner of 
Interferences be restored for the consideration of a motion to 
amend a preliminary statement was granted under the circum- 
stances of this case. (Jan. 11, 1899.) 

Greeley, A. C] Richardson v. Humphrey, 86 O. G. 1804. 

4. When it is contended tliat the mistake in the preliminary 
statement was not discovered until it was made apjiarent by the 
decision of the Examiner of Interferences on i)riority and the 
moving party uses reasonable diligence thereafter in presenting 
his motion to amend, Held, that the jurisdiction of the Examiner 
of Interferences will be restored to consider the motion. Id 

5. On a petition that the jurisdiction of the Examiner of 
Interferences be restored for the purpose of considering an 
amendment to a preliminary statement, the question as to 
whether or not that amendment shall be admitted is not up 
for consideration, ])ut merely the question whether proi)er dili- 
gence has been exercised in presenting that motion. Id. 

6. While motions to amend preliminary statements are to be 
decided in vieAV of the particular facts disclosed in each case, 
and therefore no cast-iron rule can be applied to all cases, it 



154 INTERFERENCES. 

may be said that amendments to preliminary statements should 
be permitted only when the motion has been made promptly 
after the discovery of the error, and then only when equity and 
justice demand it — as, for example, in a case where the testi- 
mony of neither party has been taken, or, if it has been taken, 
where the other party will not be injured, save as the true state 
of facts may be injurious, and the opponent would not be mis- 
led nor the expenses of the proceeding increased. (Jan. 28, 
1899. ) 
DuELL, C] . Whitney v. Gibson, 86 O. G. 1983. 

7. An amendment to a preliminary statement was admitted 
where a mistake therein was not discovered until the beginning 
of the taking of testimony and notice of an intention to amend 
was given at that time. (A^'ebb r. Levedahl, 84 0. G. 810.) 
(Dec. 8, 1898.) 

Greeley, A. C.] Ancora v. Keiper, 86 0. G. 2171. 

8. An amendment made to correct a mistake in a preliminary 
statement may be admitted where it does not change the date of 
conception, disclosure, or reduction to practice. (Maltby v. 
Miehl, 82 0. G. 749.) Td. 

9. Where a party to an interference took testimony to prove 
a reduction to practice of his invention at a date prior to that 
set up in his preliminary statement, HehJ, that said testimony 
without amendment to the preliminary statement duly made by 
the authority of the Commissioner of Patents was inadmissible 
and entitled to no consideration. (Colhoun v. Hodgson, 70 
0. G. 276.) (C. A. D. C. Feb. 8, 1899.) 

Shepard, C.] * Cross v. Phillips, 87 0. G. 1399. 

10. The requirement of specific preliminary statements by the 
contending parties under oath is a reasonable one, and experi- 
ence has demonstrated its special adaptation to the conditions 
that ordinarily exist in interference cases. ^Id. 

11. The dates of conception and reduction to practice are 
peculiarly within the knowledge of the inventor, and the facts 
by which they may be established are naturally of difficult con- 
tradiction by his adversary. Hence it is quite important to the 
administration of justice in contests between them that he be 
required to state those dates with reasonable certainty before 



INTERFERENCES. 155 

notice of the foundations of his adversary's claim. These pre- 
liminary statements constitute what may he called the " plead- 
ings " in the case, and to their allegations the evidence must 
respond. *A/. 

12. The rule of the Patent Office which permits the statement 
of either party to an interference to be amended where material 
error has been committed through inadvertence or mistake and 
its correction, is essential to the ends of justice, is reasonable and 
just and seems to conform as near as may be, considering the 
peculiar character of interference cases, to the general rule pre- 
vailing in courts of equity. */^/. 

13. In courts l)oth of law and equity the right to amend is 
not an absolute one, but rests in the discretion of the court, 
and the exercise of this discretion is not reviewable unless it 
may be in case of its palpable abuse. Necessarily the allow- 
ance or refusal of leave to amend a preliminary statement in an 
interference case rests in like manner in the discretion of the 
Commissioner of Patents, and it might be said for even a 
stronger reason, because he is vested with the authority to 
make the needful rules for the regulation of the practice of his 
Office without the supervising power of an appellate tribunal. 

14. Appeals do not lie to this court from all or any prelimin- 
ary decisions in matters of interferences, though seriously affect- 
ing the rights of the parties, but only from those wherein the 
priority of the .claim to the invention has been finally awarded. 
(Westinghouse v. Duncan, 66 0. G. 1009.) *7t/. 

15. If the exercise of the discretion of the Commissioner in 
the matter of allowing and refusing leave to amend preliminary 
statements be subject to review by the Court of Appeals of the 
District of Columbia at all, it must be confined to those cases 
where the question comes up i)roperly with the appeal from the 
decision on the merits and where it can be made clearly to aj)- 
pear that this discretion has been abused to the extent of caus- 
ing a palpable miscarriage of justice. '-^Id. 

16. After a decision on priority an amendment to the prelim- 
inary statement may be permitted where a material error has 
occurred through inadvertence or mistake and it clearly appears 
that there was no negligence in discovering the error or in 



156 INTERFERENCES. 

bringing the motion to amend and that the correction is essen- 
tial to the ends of justice. (July 7, 1899.) 
Greeley, A. C] Richardson v. Humphrey, 88 0. G. 2241. 

17. After testimony has been taken an amendment to a pre- 
liminary statement will not be permitted where no excuse what- 
ever is given for not making the motion to amend earlier or for 
not sooner discovering the alleged error in the original statement. 
(Aug. 14, 1899.) 

Greeley, A. C.] Miehle v. Read, 89 0. G. 354. 

18. The suggested possibility that the Office ma}^ throw out 
of consideration entirely evidence of an earlier date of invention 
than that alleged in the preliminar}' statement and so may not 
accord to a party even the date alleged, Held, not alone a suffi- 
cient ground upon which to permit an amendment to the state- 
ment, since to so hold would virtually nullify the rule requiring 
diligence. The statement would then have no useful purpose 
or effect, since in all cases it would be changed to conform to 
the testimony. Id. 

19. Where a motion was made by a party to an interference 
that his opponent be required to amend his preliminary state- 
ment b}^ adding thereto a statement showing the extent of use 
of the invention or, if it has not been used to any extent, specifi- 
cally disclosing that fact, Held, that under rule 110 the motion 
should be granted. (Oct. 26, 1899.) 

DuELL, C.] Loeben v. Hamirick, 89 C. G. 1672. 

XV. Priority. 

(a) In, General. 

1. Where P made the application drawing for A and put on 
said drawing A's name as the inventor and made no claim at 
that time that he was the inventor. Held, that such actions are 
strongl}' against his claim to l)e the inventor, and as his claim 
to the invention is not supported by any testimony except his 
own he cannot prevail over A, the senior party. (C. A. D. C. 
Dec. 9, 1898.) 

Morris, J.] * Pickles v. Aglar, 86 0. G. 346. 

2. Where W relied upon his record date to- prove priority 
and A took testimony and claimed that he disclosed the inven- 



INTERFERENCES. 157 

tion to W Ix'foiv ^^' lilfd liis iqjplication, Ilchl^ lliat \\''s fail- 
ure to rebut this Hsscrtion of A's fiirnislicd convincing evidence 
that A was the ])ri()r inventor. (C. A. D. C. Jan. 10, 1899.) 
Alvey, J.] *WinsloAv r. Austin, 80 0. G. 2171. 

3. The fact that A took an assignment from L and K, who 
were the assignees of A\', ought not to he taken as an a(hnission 
on his i)art that he in realit}' and truth had no claim to the 
invention involved in the issue, and that the sole and exelusive 
right was in W. ^^fd. 

4. It is a well-settled |)rincii)le in patent laM- that as between 
rival inventors the date of invention may be fixed and will take 
precedence from the time at which a complete and intelligible 
embodiment of the subject of invention is i)roduced, by which 
those skilled in the art could readily understand it. (C. A. 
D. C. Oct. 4, 1899.) 

Alvey, J.] ^-i^Hulett r. Long, 89 0. G. 1141. 

5. W, the senior party, filed his application on October 28, 
1893. B, the Junior party, filed on October 26, 1895. The 
interference was declared on the broad issue, which was covered 
by a broad claim made by B when he filed his apjilication. 
W, however, did not make the broad claim until April 29, 
1896. The testimony shows that W was the first to conceive of 
the invention and that B did not in any manner reduce it to 
practice prior to Ws filing date. Held^ that if the broad claim 
is patentable it must belong to the first inventor of the specific 
machine, if to any one, and that one is W. It certainly cannot 
be allowed to any subsequent inventor of any other specific 
mechanism. (C. A. D. C. Apr. 4, 1899.) 

Morris, J.] * Bechman r. Wood, 89 0. G. 2459. 

6. Held^ further, that the broad claim is not })atentat)le to 
either party — not to B, because he was not the first to invent an 
"independent transferring mechanism" in printing-machines 
in the combination described; not to A\', because he did not 
make the claim before his rival made the discovery of his own 
patentable invention. ^=/r/. 

7. Held, further, that it is not competent for ^^', who had 
failed to make a broad claim and thus left the field oi)en for 
other specific inventions than his own, to seek to control all 



158 INTERFERENCES. 

such specific inventions by procuring a patent on the broad 
claim which he did not advance prior to the making thereof 
by B. If the broad claim could be held to l)e patentable to 
W, the effect of a patent upon it to him would be unjustly 
retrotractive, for it would sweep within its control all specific 
inventions in the same field made previously to the time when 
he made his claim. (Chicago & Northwestern Railroad Co. ?'. 
Sayles, 15 0. G. 248; 97 U. S. 554, cited.) Id. 

8. Held^ further, that Avhile both parties to the interference 
are or may be entitled to patents for their respective specific 
devices, neither one of them is entitled to a patent for the broad 
claim of the issue, and therefore there should be no judgment 
of priority of invention to either party with reference to the 
broad claim. Id. 

9. Where an applicant for a patent has restricted himself in 
the first instance to a narrow claim for a specific device to eft'ect 
a certain result and subsequently another applicant comes into 
the Office with another narrow claim for another specific device 
to effect the same result and thereafter the first applicant broadens 
his claim into a generic one, so as to cover and dominate all spe- 
cific devices to effect such result, assuming that their specific 
devices have actually been invented in the order of their appli- 
cation to the Office, the utmost liberality of amendment will not 
justify the destruction of the rights of the second applicant to 
his own specific device, and the fact that the second applicant 
may have l)een the first to make the broad generic claim and 
that the first applicant then broadened his claim into generic 
proportions cannot affect this conclusion. (C. A. D. C. , Dec. 
6, 1899.) 

Morris, J.] *Bechman v. Wood, 89 0. G. 2462. 

10. Where the first applicant was found to be the true first 
and original inventor of his own specific device and apparently 
the first inventor of any device of the kind, and the second ap- 
plicant was likewise found to be the true first and original in- 
ventor of the specific device stated in his application, this being 
the order of invention, Held., that the second applicant could 
not, under any principle of law or any theory of justice, be al- 
lowed the broad claim which would have dominated the inven- 
tion of his i^redecessor in the field, and neither could that pre- 



I NTK H fj:hkxce.s. 1 59 

decessor be allowed tlie broad claim, for the reason that lie had 
not advanced it before the arrival of the other party on the field 
of invention. Id. 

11. Held, further, that by making the narrow claim for a 
specific device in the first instance the first ajjplicant left the 
field open for all who would make other different devices to 
accomplish the same purpose, and it would not be right or just 
that he should, after the invention of such another device l)y 
another person be permitted to go back and broaden his claim 
so as to sweep this second device within the scope of his own 
original application, even though the broad claim might prop- 
erly have been advanced in the beginning, and even though 
under other circumstances he might have effectively broadened 
his claim in the course of the prosecution of the api)lication and 
procured or entitled himself to a patent for such broad claim. 

Id. 

12. If an inventor comes to the Patent Office with an appli- 
cation in which he first restricts himself to a narrow claim for a 
specific device, but which he is entitled by the process of amend- 
ment to broaden into a generic claim, and if he does in fact so 
broaden it, he may entitle himself to a patent for the broad claim 
unless in the meantime the right of some other person has ac- 
crued to some other narrow claim for a similar device to effect 
the same purpose which would be dominated by the broader 
claim of the first applicant. It is not just that rights which 
have previousl}^ accrued should be overthrown by amendments 
subsequently made. (Chicago & Northwestern Railway Co. v. 
Sayles, 97 U. S. 554; 15 O. G. 243, cited.) " Id. 

13. Neither party to tliis interference is entitled to prevail 
against the other on the broad claim of the issue, the first being 
estopjied from setting it up against the second applicant in con- 
sequence of the intervening rights of the latter to his own spe- 
cific device, and the second applicant being precluded from 
having the benefit of it for the reason that he was not the first 
on the field of invention. Id. 

14. Tlie former decision holding that as \\' did not advance 
the broad claim of the issue until after B had filed his applica- 
tion therefore he is not entitled to a judgment of priority for such 
broad claim, and that neither i>arty is entitled to a judgment of 



160 INTERFERENCES. 

priority of invention or to a patent for tlie Ijroad issue is adhered 
to. Id. 

XV. Priority. 

(i) Abandoned ExpcrimenU. 
AVhere T constructed and tried an apparatus embodying the 
issue in February, 1889. which proved unsatisfuctory and dis- 
appointing to him, and which he l)Oxed up and laid away in 
his shop until the latter part of 1892, when he shipped it to his 
attorney u])on hearing that B had appeared Avith a successful 
device of the same general character, Held, that what T did in 
1889 amounted to no more than an experiment, Avhich was 
abandoned and revived only after B's appearance in the field, 
and priority of invention awarded to B. (C. A, D. C, Jan. 3, 
1899.) 
Shepard, J.] *Traver r. Brown, 86 0. G. 1324. 

XV. Priority. 

(c) Employer and Employe. 

1 . The first inventor cannot be deprived of an award of priority 
because he was at one time employed by his opponent, who had 
disclosed to him a portion of the issue of the interference, when 
it appeared that he was not employed to devise or perfect an 
invention being developed by the employer, or the suggestions 
or improvements made by the first inventor were not merely 
"ancillary to the plan and preconceived design of the em- 
ployer." (Mar. 2, 1899.) 

DuELL, C] Streat v. Freckleton, 87 0. G. 695. 

2. An employe performing all the duties assigned to him in his 
department of service may exercise his inventive faculties in any 
direction he chooses with the assurance that whatever invention 
he may thus conceive and perfect is his individual property. 
(Solomons v. U. S., 137 U. S. 342.) Id. 

XV. Priority. 

(f/) Foreign Patents. 
R applied for a Swiss patent on INIarch 2, 1896, and on June 
30, 1896, a certificate was issued by the Swiss Patent Office 
stating that a provisional specification, dated March 2, 1896, 



INTERP''ERENCES. IGl 

had been registcnd under No. 11, 7-^3 and that the ]>atent docu- 
ment Avould ininiediatel}' after tlie publication of the descrijjtion 
and drawing be executed. Notice of the registration Avas ])ub- 
lished in tlie Patent-Liste of the Swiss office, a cojiy of which 
publication was received in the United States Patent Otlice on 
August 7, 1897; but it contained no description of the Swiss 
patent. The making public of the specification of the Swiss 
patent and its publication and printing were postponed for six 
months, which ended September 2, 1896. Held, that R's Swiss 
patent was a secret patent until September 2, 1896, a date sub- 
sequent to Ws filing date in this country, and that no date can 
be given to R's Swiss patent which will overcome Ws date of 
filing his application in this country, and priority a-\varded to 
W. (June 23, 1899.) 
DuELL, C] Roschach v. Walker, 88 0. G. 1888. 

XV. Priority. 

(e) Invention made by third ixirty. 

1. Where A, the junior party, made out 2i prima fade case in 
support of his claim for priority of invention and F did not at- 
tempt to rebut or overcome it, but relied upon the evidence of 
L, one of A's witnesses, to show that L and not A was the in- 
ventor of the subject-matter of the invention, Held, that L's 
testimony cannot l)e used in favor of F, and priority of inven- 
tion is therefore awarded to A. [The decision of the Assistant 
Commissioner, Antisdel v. Foster, 65 MS. Dec. 390, affirmed.] 
(C. A. D. C. May 2, 1899.) 

Alvey, J.] ^Foster r. Antisdel, 88 0. G. 1527. 

2. Interference proceedings are instituted to determine as be- 
tween the parties thereto which of them is entitled to an aw^ard 
of priority of the invention claimed. Both cannot be entitled 
to it, but one may be entitled as against the other, though there 
may be some third party who might, if the claim of that person 
were placed in issue as betw^een that person and one or both of 
the parties to the interference proceeding, show that lie was in 
fact and in reality entitled to an award of priority of the inven- 
tion in controversy. Id. 

3. Evidence that some other party than the parties to the 
interference proceeding is really the inventor of the device in 

11 



162 INTERFERENCES. 

issue is impertinent to the issue and cannot he received or con- 
sidered hy those charged with the duty of determining the 
issue. /(/. 

4. n the practice obtained of allowing the claims or pre- 
tensions of any or all persons though not parties to the inter- 
ference proceedings to be set up as a means of defeating the 
claims of one of the parties, it would be difficult if not impos- 
sible in many cases to try the interference issue as between the 
immediate parties to it. Such practice would open the door to 
collusion, and perjury would be the recourse of many who 
failed to support their claims by legitimate evidence. Id. 

XVI. Reduction to Practice. 
(a) In General. 

1. It is an elementary principle in patent law that he who 
first reduces to practice is to be regarded as the true inventor of 
the idea or device so reduced from a mere abstraction to a con- 
crete form, in the absence of proof that he has only elaborated 
the ideas of others or of proof that there has been prior con- 
ception of the invention by another, with a showing of due 
diligence in the way of effort to reduce it to practice. (C. A. 
D. C, Feb. 8, 1899.) 

Morris, J.] *Bader r. Vajen, 87 0. G. 1235. 

2. Reduction to practice by B would not avail him as against 
V if it were shown that B was merely obeying the instructions 
of V and giving effect to the conceptions of the latter. Id. 

3. A reasonable doubt as to what constitutes a reduction to 
practice will be resolved against the inventor, and special cir- 
cumstances — as for example, unreasonable delay in making 
practical or commercial use of the invention or in applying for 
a patent or the like — would have a tendency to raise this doubt 
in a particular case. (C. A. D. C. May 4, 1899.) 
Shepard, J.] * Rente v. Elwell, 87 0. G. 2119. 

XVI. Redection to Practice. 
(ft) Actual. 
1. By actual reduction to practice the right to the invention 
becomes perfect, and can only become subordinate to the claim 
of a subsequent bona fide inventor by some such course of con- 



INTERFERENCES. 1G3 

duct as that shown m Mason r. ][(i)l)urn, (84 O. (J. 147) (C. 

A. 1). C, Jan. 3, 1899.) 

Shepard, J.] *P:sty V. Newton, 86 0. G. 799. 

2. The importance of mere delay while the inventor is en- 
gaged in the prosecution of other improvements in the same 
art is of more or less weight, according to circumstances, in 
determining whether the attemi)ted reduction to practice 
amounted to an actual reduction or an ahandoned experiment. 

3. A fodder-shredder in wiiich a cutter-har was taken out of 
an old machine, leaving an inch of open space between the 
edges of the cutter-teeth and the periphery of the lower feed- 
roll at the point of nearest approach, is not a reduction to prac- 
tice of an issue which calls for cutters arranged in immediate 
relation to the lower feed-roll, whereby the points of the teeth 
of the cutter are brought close to the said feed-roll. (C. A. D. 
C, Jan. 10, 1899.) 

Shepard, J.] * Tracy ef al. v. Leslie, 87 0. G. 891. 

4. Where the records of the case show that the primary ex- 
aminer had found no novelty in the omission of a cutter-bar in 
the old form of fodder-shredder from the new combination and 
had " with doubt and hesitation " declared novelty to exist in 
the restricted action of the cutter-teeth in inunediate relation 
with the lower feed-roll acting as a cutter-bar in the very closest 
approach that could be accomplished, Held, that the slight dif- 
ference in arrrngement being the very thing and the only thing 
that gave novelty to the new combination, it must follow that 
the practical test of a combination which did not fall within the 
specific combination is not a reduction to practice of that coui- 
bination. (Breul v. [Smith, 78 0. G. 1906, cited.) */f/. 

XVI. Reduction to Practice. 
(c) Condnictlve. 
Where a second application was tiled while a tirst application 
was forfeited, and a comparison of the two applications shows 
that the drawing of the first is the same as one sheet of the 
second and that the specification of the first is incorporated in 
the second, and additional drawings are filed with the second 
application and additional matter is included in the specification 



164 INTERFERENCES. 

thereof which embodies some features not in the first, Held, 
that on an interference on the second application the applicant 
should have the benefit of his original application as a con- 
structive reduction to practice of the invention set forth therein 
and embodied in the second application. (C. A. D. C. , Jan. 3, 
1899. ) 
Shepard, J.] *Cain v. Park, 86 0. G. 797. 

XVI. Reduction to Practice. 
(r/) Diligence. 

1. Where the party first to conceive but the last to reduce to 
practice did nothing for nine years between his conception and 
reduction to practice except to make drawings and talk about 
the invention occasionally and to urge one or two persons "to 
take it up," and in the nieantime had taken out patents on the 
same subject-matter, Held, that there is no sufficient excuse 
offered for delay in reducing to practice. (C. A. D. C. Dec. 
9, 1898.) 

Morris, J.] * Marvel v. Decker et al, 86 0. G. 348. 

2. Although M was the first to conceive, he did not show 
reasonable diligence in reducing his invention to practice, and 
D having conceived and reduced to practice in the meantime, 
Held, that the decision of the commissioner should be affirmed 
and priority awarded to D. * Id. 

3. Where an inventor made and tested a device and then par- 
tially dismantled it and put it in a private drawer \\ here it re- 
mained for five years before appl3dng for a patent, when he had 
ample means to patent it and the evidence showed that he had 
taken out other patents. Held, that his right to a claim of 
priority is barred where it is shown that during his concealment 
of his invention his rival had entered and taken possession of 
the field and reduced the invention to practice and given its 
benefits to the public. (Mar. 21, 1899.) 

DuELL, C] Davis v. Forsyth and Forsyth, 87 0. G. 516. 

4. The bare statement of the first inventor that he never 
abandoned his invention counts for naught in the light of such 
circumstances. Id. 

5. An inventor may conceal his invention for an unlimited 



INTERFERENCES. 1G5 

time without forfeitin<; iiis riglit (o a ]):ik'nt, provided, liowevcr, 
that no statutory har intervenes and provided, further, that no 
other person during sueh period makes the same invention and 
secures a patent therefor. (Bates r. Coe, lo (). G. .'>o7, and 
Mason v. Hei)hurn, 84 0. (J. 147, cited.) /'/. 

6. The right of tlie first inventor to an award of priority he- 
comes barred by tlie designed or negligent concealment of his 
invention from the i)ul)lic upon the entry of a later inventor into 
the same field. Id. 

7. Where it a])pt^arcd that the first inventor to conceive could 
have completed a drawing in a short time after it was begun, but 
he took five months to do so because there was no hurry for it, 
and after the drawing was finished his assignee still further de- 
layed for one year and four months in reducing the invention to 
practice because there was no hurry to reduce it to practice, as 
it was not sooner needed, Held, that there was no excuse for 
such delay and priority of invention awarded to the second to 
conceive but the first to reduce to practice. (Feb. 27, 181)9.) 
DuELL, C] Kasson v. Hetherington, 88 0. G. 1157. 

8. Diligence cannot wait upon tlie convenience or business 
arrangements of an inventor or his company. (Dailey v. Jones, 
67 0. G., 1719, cited.) ' fd. 

9. Where it was shown that the one to first conceive of the 
invention did not have the money with which to actually reduce 
it to practice, but there was nothing to show that he could not 
have filed an application which would have been a constructive 
reduction to practice and would have given him the benefits of 
an actual reduction. Held, that there was no excuse for delay 
and priority awarded to second to conceive. Id. 

10. There is no general rule of what constitutes due diligence, 
that being a question to be determined by all the facts and sur- 
rounding circumstances in the particular case. /(/. 

11. De Wallace had a complete conception of the invention 
on December 1, 1890, when he em})loyed a skilled mechanic to 
embody his ideas in a working machine. Scott et at. proved 
conception on December 8, 1896, and reduced the invention to 
practice prior to reduction to practice by De Wallace. Held, 
that as De A\'allace was actually engaged in his eflforts to reduce 



166 - INTERFERENCES. 

the invention to practice when Scott et at. entered the field, and 
as his delay in reducing to practice was not unreasonable under 
all the circumstances disclosed by the evidence, priority should 
be awarded to De Wallace over Scott et al. (Decision of the 
Commissioner, Scott eiaZ. v. De Wallace, 66 MS. Dec, 30, over- 
ruled.) (C. A. D. C, June 6, 1899.) 
Shepard, J.] De Wallace v. Scott et al, 88 0. G., 1704. 

12. No hard and fast rule can be laid down as to what consti- 
tutes diligence. What is or is not diligence in a given case must 
depend upon its special facts and circumstances. Some indul- 
gence is generally extended to an inventor who is engaged in a 
bona fide attempt to perfect his invention. (McCormick v. 
Cleal, 83 0. G., 1514, cited.) Id. 

13. While circumstances such as poverty, sickness, etc., tend 
to excuse delay in reducing an invention to practice, they will 
not justify indefinite postponement of action for a period of 
years, for to allow them to have that effect would be in many 
cases to close entirely the field of invention against competition 
and to nullify the purposes of the patent law. (C. A. D. C. , 
June 6, 1899.) 

Morris, J.] ^-^^Griffin v. Swenson, 89 0. G., 919. 

14. Where an inventor interested a third j^arty to cooperate 
with him in exi)loiting and testing an invention and procuring 
a pntent therefor, l)ut without an}' steps whatever being taken 
toward the object in view beyond the mere determination to 
have the invention tested at some time. Held, that such unde- 
veloped intentions unaccompanied by any action cannot be held 
to be due diligence on the part of the inventor. */r/. 

15. Neither the delay that is proper in one case nor the dili- 
gence that is due in the other can in the absence of any statu- 
tory limitation of time in this regard l)e measured by any arbi- 
trary standard. It has been repeatedly held that the question 
of due diligence is one to be determined in each case by its own 
circumstances. */r/. 

16. While less harm is done and the policy of the law better 
promoted by a rigid insistence upon the requirement of diligence 
than by laxity in the encouragement of delay, it does not seem 
that the rule of diligence should be pushed to a harsh and un- 



INTERFERENCES. 1 67 

reasonable extent. M'liat the law requires is reasonable, not 
extraordinary, activity. ^Id. 

XVI. Reduction to Pr.\ctice. 

{e) Drawings and Models. 

1. The contention that a drawing demonstrating efficiency 
and operativeness is the full etinivalent of an actual machine 
and just as effectively embodies the adoption and perfection of 
the invention cannot be sustained by anj^ authorit}'. (Feb. 27, 
1899.) 

DuELL, C] Kasson v. Hetherington, 88 0. G. 1157. 

2. That a drawing or a model cannot be used as showing a 
completion of invention seems to be too well settled for argu- 
ment. (Stephenson v. Goodell, 9 0. G. 1195 ; Green v. Hall, 
46 0. G. 1115, and 47 0. G. 1631 ; Hunter v. Stykeman, 85 0. 
G. 610 ; Mason v. Hepburn, 84 0. G. 147 ; Telephone Cases, 
126 U. S. 535 ; Porter v. Louden, 73 O. G. 1551 ; Croskey v. 
Atterbury, 76 0. G. 1613, cited.) Id. 

XVII. Reinstatement or Reopening of. 

1. Motions to reopen interferences must be heard and decided 
in the first instance by the examiner of interferences, and the 
only question to be determined iij^on a petition to reopen to take 
additional testimony, which, with an additional showing of 
facts, was in effect a renewal of a similar petition which was de- 
nied for insufficient showing of diligence, is as to whether the 
jurisdiction of the examiner of interferences should be restored 
for the purpose of considering the matter of reopening. (Apr. 
19, 1899.) 

Greeley, A. C] Joljes r. Roberts v. Hauss, 66 I\IS. Dec. 
471. 

2. Where the showing set forth facts indicating diligence on 
the part of the petitioner, both in discovering new evidence and 
in bringing the petition to reopen, Held, to })e sufficient to war- 
rant the transmission of the case to the examiner of interferences 
for the purpose of deciding the question /(/. 

XVIII. Service of Notice. 

]. Where notices to a party to file his j)reliminary statement 
had been sent and the preliminary statement was not filed, but 



168 INTERFERE^'CES. 

the Office was notified tliat the party was dead, the examiner of 
interferences instructed to send new notices setting a new date 
for the fihng of the preliminary statement, and that date should 
be set so as to give an opportunity for the apj)ointment of an 
administrator, notices being sent to the heirs of the deceased. 
(Julys, 1899.) 

DuELL, C] Handley v. Bradley, 89 0. G. 522. 

2. The examiner of interferences having called the Commis- 
sioner's attention to the fact that no response had been made 
to the notices sent under the order of the Con)missioner in the 
case of Handley v. Bradley, of July 3, 1899, the examiner is 
directed to set times for taking testimony and to send notices 
thereof to the assignee of the part interest of the deceased at the 
addresses which have been furnished to the Office. If the other 
party closes his testimony and there is no testimony presented 
on behalf of the deceased, the examiner of interferences shall, if 
proper motion is made, consider the testimony offered and enter 
judgment in the case accordingly. (Sept. 25, 1899.) 

DuELL, C] Handley v. Bradley, 89 0. G. 524. 
XIX. Suspension. 

1. Under rule 126 a suspension of proceedings for the consid- 
eration of an alleged statutory bar is not granted as a matter of 
right on the part of one of the parties, but merely in the discre- 
tion of the Commissioner in a [)roper case in order to terminate 
needless contests. (Dec. 16, 1898.) 

Greeley, A. C] Shiels v. Lawrence et al, 87 0. G. 180. 

2. Even wdiere the Commissioner's attention is called to an 
alleged statutory bar as provided in the rule, the interference 
will not be suspended for a determination thereof unless sub- 
stantial justice demands it. Id. 

3. When the only right which S. had to the continuance of 
the contest was to determine the question of originality of inven- 
tion, he will not be permitted to turn the contest off upon some 
other question, and thus possibly avoid a decision on the only 
question which he really has the right to contest. Id. 

4. Where it appeared that a statutory bar of two years' pub- 
lic use existed, which would prevent the issue of a patent to A, 



INTERFERENCES. 1 69 

Held, that as no testimony had been taken by cither i)arty the 
interference should be suspended and the statutory bar deter- 
mined. Thomson et al. v. Hisley, (Hi 0. G. 159!); Tyler v. 
Arnold, 84 0. G. 1584, and Howard v. Hey, 86 0. G. 184, dis- 
tinguished from the present case. (June 26, 1899.) 
DuELL, C] Sanford INlills v. Aveyard, 88 0. G. 385. 

5. To refuse to institute public-use proceedings at this time 
and to refuse to suspend the interference would be a hardship 
and would add unnecessarily to the expense of both i)arties. 

Id. 

6. It being a well-settled rule of law that it is within the 
sound discretion of a court to stay proceedings when there is 
another action between the same parties involving the same 
issues 1 ending m a court of a sister State or in a court of the 
United States, by analogy the facts herein set forth w^arrant stay- 
ing the interference proceedings in this case and the institution 
of public-use proceedings. /(/. 

7. As rule 126 provides for the suspension of an interference 
proceeding by the Commissioner before judgment on priority to 
determine a statutory bar which has been called to his attention 
by the examiner of interferences or the examiners-in-chief, there 
is no reason for delaying the institution of public-use proceed- 
ings in this case until after one of these tribunals has called the 
commissioner's attention to the existence of the statutory bar. 

Id. 

8. Protestants having made out &. prima facie case against the 
grant of a patent to A, formal proceedings to establish legally 
the alleged facts set forth by protestants will be instituted upon 
certain conditions to be complied \vith. Id. 

XX. Testimony. 

(a) In General. 

1. The fact that negotiations were pending between the parties 
looking to a settlement of the controversy without prosecuting 
the interference cannot be received as a valid excuse for the fail- 
ure to take testimony. (Jan. 17, 1899.) 

Greeley, A. C.] Igleheart Bros. v. Houston, Meeks & Co., 86 
0. G. 631. 

2. Where testimony was introduced to prove things alleged to 



170 INTERFERENCES. 

have been done prior to tlie dates set uj) in a preliminary state- 
ment, Held, that such testimony cannot l)e regarded as having 
any weight. (C. A. D. C, Feb. 8, 1899.) 
Morris, J.] *Bader r. Vajen, 87 0. G. 1235. 

XX. Testimony. 

(6) Time for Taking. 
When a prehminary statement is amended to conform to the 
evidence after decision on priority, Held, that new times for 
taking testimony should be set, so as to give the opposing party 
an opportunity to cross-examine the witnesses in regard to the 
matter. (July 7, 1899. ) 

Greeley, A. C] Richardson r. Humphrey, 88. 0. G. 2241, 

XX. Testimony. 

(c) Interested Parties. 

1. If the testimony of an interferent, upon whom rests tlie 
burden of proof, is entirely clear and satisfactory, it is well set- 
tled that it would not be sufhcient to establish his case without 
corroboration. (March 25, 1899.) 

Greeley, A. C.] Bragger r. Rhind, 66 MS. Dec, 409. 

2. "While it is true that the fact of conception by an inventor 
for the purpose of estalilishing ]iriority cannot be proved by his 
mere allegation or his unsupported testimony, where there has 
been no disclosure to others or embodiment of invention in 
some clearly perceptilile form, such as drawings or models, with 
sufficient proof of identity in ])oint of time, it does not follow 
from this princi]ile that the party upon whom is cast the onus 
of proving the fact of priority of invention is an incompetent 
witness to testify in his own behalf as to the facts of priority. 
(C. A. I). C. Jan. 10, 1899.) 

Alvey, J. *Wins]ow v. Austin, 86 0. G. 2171. 

3. Where V swore to the disclosure which evidences his al- 
leged conception of the invention and B denied that disclosure, 
which is not claimed to have been made to any other person 
than himself. Held, that the utmost that can be said in favor of 
V is that the testimony is balanced. (C. A. D. C. Feb. 8, 
1899.) 

Morris, J.] ^^Bader v. Vajen, 87 0. G. 1235. 



INTERFERENCES. 171 

XX. Testimony. 

(f) Iirelevant. 

1. H's testimony in rebuttal consisted of that of an expert on 
the question of non-])atental)ilit3' of tlie issue. A objected to 
this testinnony during tlie taking thereof and later made a mo- 
tion to strike it out on the ground that it was not pro])er rebut- 
tal testimony. H contends that as the word "rebuttal" was 
not used in the objection on the record it is now too late to 
move to strike out on this ground. Held, that although A did 
not raise the specific objection to the testimony, yet the motion 
is considered and the testimony being outside of the interference 
question is imj^-oper rebuttal and should be stricken out. 
(June 20, 1899.) 

DuELL, C] Huber v. Aiken, 88 0. G. 1525. 

2. Testimony should not be taken in an interference proceeding 
merely for the purpose of showing that the issue of an interfer- 
ence is anticipated or devoid of patentability in view of the 
prior art when the opposing party objects to such testimony. 
Testimony should be confined to the question of priority of in- 
vention. (Straus r. Cook, 43 MS. Dec. 65, cited.) Id. 

XXI. Vacating -Judgment. 

1. The discovery of new evidence in one interference is no 
reason for the vacation of the judgment on priority and setting 
new times for taking testimony in another merely because in the 
moving party's opinion the interferences are closely related. 
(Jan. 17, 1899.) 

Greeley, A. C] Igleheart Bros. v. Houston, Meeks & Co., 86 
0. G. 681. 

2. A party who voluntarily fails to prosecute one interference 
because in his o])inion he cannot prevail in another closely-re- 
lated interference, is bound by his election and cannot afterward 
obtain a vacation of judgment merely because he finds himself 
mistaken as to that other interference. Id. 

3. When a prhna facie case of newly-discovered evidences and 
reasonable diligence was made out after decision by the exam- 
iner of interferences on the question of priority and after ap])eal 
had been taken from his decision his jurisdiction Avas restored 



172 INTERFERING PATENTS. 

for the consideration of a motion to vacate the decision on 
priority and set new times for taking testimony. (Jan. 17, 
1899. ) 
Greeley, A. C] Igleheart Bros. v. Land et ah, 86 0. G. 632. 

4. The question as to whether the showing warrants the vaca- 
tion of the judgment and setting new times for taking testimony 
is not up for decision, the sole question being whether it warrants 
the transmission of the case to the examiner of interferences for 
a determination of that question. Id. 

5. Tlie jurisdiction of the examiner of interferences will not 
be restored for the consideration of a motion to vacate the de- 
cision on j^riority and set new times for taking testimony on the 
ground of newly-discovered evidence where it clearly appears 
that the moving party did not use reasonable diligence either in 
discovering the evidence or in bringing the motion. (Jan. 24, 
1899.) 

Greeley, A. C] Jobes v. Roberts v. Hauss, 86 0. G. 1805. 

6. AVhen a party relies on his own memory and fails to con- 
sult parties whom he know^s to be equally familiar with the facts 
of the case, Held, to show a lack of diligence on his part in dis- 
covering the evidence which those parties may be able to pro- 
duce. Id. 

Interfering Patents. 

I. To THE Same Inventor. 
II. To Different Inventors. 
I. To THE Same Inventor. 

1. For a long time after Rubber Co. v. Goodyear, 9 Wall. 
788, 796, in connection with Suffolk Co. v. Hay den, 3 Wall. 
315, 378, if not before the date of the expressions found in those 
cases, it was understood that an inventor might lawfully divide 
his invention so far as to take out independent patents for his 
machine, his process, and his product, provided, the applications 
were all pending in the Patent Office before either patent issued, 
or were pending otherwise under such circumstances as to save 
him from the abandonment implied in taking out a patent for 
less than his whole invention. This statement is sustained his- 
torically by Judge Colt in Eastern Paper-Bag Co. v. Standard 



INTERFERING PATENTS. 173 

Paper-Bag Co., 30 Fed. Rep. 63; 41 0. (J. 231; C. D. 1887, 
althougli some of the dicfn in tliat case as to al)an(lornnent may 
need modification in view of later decisions of the Supreme 
Court — among the rest, Underwood r. Gerber, 149 U. S. 224, 
230; 13 Sup. Ct. 854; Deering v. Harvester Wks, 155 U. S. 
28G, 21)6; 15 Sup. Ct. 118; 60 0. G. 1641; C. D. 1894. The 
pro})osition that independent jtatents may certainly lie taken for 
the machine, the art, and the product involved in the same 
fundamental invention, when applications therefor are })ending 
at the same time in the Patent Office, has l)een very mucli em- 
barrassed by the exi)ressions found in Lock Co. r. INIosler, 127 
U. S. 354, 361; 8 Sup. Ct. 1148; 43 0. G. 1115; C. D. 1888, and 
in Underwood v. Gerber, ubi svpra. In each of those cases it 
appeared that the various applications were filed at difT(>rent 
times in the Patent Office; yet, although all were pending before 
any patent issued, only the earlier patent was sustained. (C. C, 
D. Me. July 30, 1898.) 

Putnam, J.] *Simonds Rolling Mach. Co. v. Hathorn Mfg. 
Co. etaJ., 90 Fed. Rep. 201. 

2. One cannot lawfully have two patents for the same inven- 
tion; when once the invention has been used as consideration of 
a grant, its value for that purpose is spent, and there is nothing 
in it on which a second grant can be supported. And the rule 
holds good though the scope of the patents may be different. 
A patentee cannot extract an essential element of his invention 
from his former patent, without which such patent woidd not 
have l)een granted, and make it the subject of a second patent. 
It is not necessary to the rule that the patents should be for co- 
extensive inventions or tliat the subject matter should be tech- 
nically the same. The rule rests upon the broad and oV)vious 
ground that, if the second patent is for an invention that was 
necessary to the use of the invention first patented, it camiot be 
sustained. (C. C. A., 6th Cir. Dec. 5, 1898.) 

Severens, J.] * Palmer Pneumatic Tire Co. v. Lozier, 90 Fed. 
Rep. 732. 

3. The conception of a mechanism capable merely of produc- 
ing motion in a predetermined form, and the conception of this 
mechanism combined, with other elements, in a machine pro- 



174 JUDICIAL NOTICE. 

ducing work theretofore done only by hand are distinct, and 
where an inventor has made such distinct conceptions the sub- 
jects matter of separate patents, particularly Avhere the "me- 
chanical movement" is capable of use in other machines, he 
should not be deprived of the protection of letters patent for 
that which he regards as his chief invention, connnercially 
considered. (C. C. A., 1st Cir. Mar. 16, 1899.) 
Beown, J.] * Palmer v. John E. Brown Mfg. Co., 92 Fed. 
Rep. 925. 

11. Different Inventors. 

1. In suits brought under R. S. § 4918 to obtain an adjudi- 
cation of priority of invention covered by two interfering pat- 
ents, the court is not confined to the single determination of 
priority, with the consequent determination that the patent to 
the later inventor is void. On the contrary, the court is bound 
to determine whether upon identifying the subject-matter of the 
interfering patents, the matter stated therein is patentable. If 
upon inspection of the complainant's patent or in the course of 
the investigation it must make to determine the nature of the 
alleged invention, the court should see that the patents are void 
for lack of patentable subject-matter, it ought not to proceed to 
an inquiry as to who first discovered the thing which the court 
finds to be null, and decree thereon, but should dismiss the 
bill, and deny relief to either party. (C. C. A., 6th Cir. Dec. 
5, 1898.) 

Severens, J.] * Palmer Pneumatic Tire Co. v. Lozier, 90 Fed. 
Rep. 732. 

2. R. S. § 4918 necessarily involves the presence of patent- 
able invention as the subject-matter of the litigation, and the 
court cannot close the door to all inquiry as to whether such 
subject-matter for controversy exists. The court is, by the 
terms of the statute, empowered, as a sequel to its inquiry, to 
determine either of the patents void in whole or in part. *M 

Judicial Kotice. 

1. Where a certified copy of an application was introduced in 
evidence, but no proof was made as to the application having 
been allowed. Held, that as the commissioner had examined the 



JUDICIAL NOTICE. 175 

files of his office and found that the said application had been 
formally allowed and had considered the fact in making his de- 
cision, it was sufficient proof that the application had been 
allowed. (C. A. D. C, Jan. 8, 1899.) 
Shepard, J.] *Cain v. Park, 86 0. G. 797. 

2. While as a general rule nothing is to be considered as evi- 
dence in an interference case unless introduced into the record 
before final submission, yet neither the general purpose nor the 
efficiency of the rule is impaired by the creation of an excep- 
tion thereto in favor of the consideration of a relevant and 
material fact shown by a record in the Patent Office entered in 
the regular course of proceedings therein. */c/. 

3. While the allowance of an application is not evidence for 
the interested party in the ordinar}^ sense, yet it is a record of 
an official action in the Office and under the authority of the 
commissioner of which the Court of Appeals may take notice in 
order that justice may be done. */f/. 

4. In passing upon an application for a patent the commis- 
sioner may go outside of the record and take notice of the offi- 
cial entries made in his own office and under his own supervis- 
ion in order that justice may be done to parties. */(/. 

5. For the purpose of ascertaining the state of the art when 
it concerns a matter of general interest the court may take judi- 
cial notice of what is disclosed by its own records in a previous 
case involving an invention appertaining to the same art. (C. 
C. A., IstCir. June 1, 1899.) 

Putnam, J.] *Cushman Paper Box Mach. Co. r. Goddard ei 
a/., 88 0. G. 2410; 95 Fed. Rep. 664. 

6. The court may take judicial notice that the alleged inven- 
tion is nothing more than the application to a rope or cord of the 
devices from time inmiemorial applied to garters, suspenders, 
curtain cords, and tag strings. (C. C, tS. D. N. Y. Aug. 9, 
1899.) 

TowNSEND, J.] * Covert r. Travers Bros. Co., 96 Fed. Rep. 
568. 



176 JUEISDICTION. 

Jurisdiction. 

I. COMMISSIOXER OF PATENTS. 

II. Secretary of the Interior. 

III. Federal Courts. 

(a) Court of Appeah^ District of Colambia. 

(b) Circuit Courts. 
I. Commissioner of Patents. 

1. As under the Constitution Congress has power to make 
laws which shall he necessary and projier for carrying out that 
express power of the Constitution in regard to protecting patents, 
it folloAvs that Congress may provide such instrumentalities in 
relation to the matter as in its judgment will he hest calculated 
to effect that ol)ject. (Sup. Ct. U. S. Jan. 23, 1899.) 
Fuller, C. J.] *U. S. ex rel. Bernardin v. Duell, Comr. of 

Pats., 86 0. G. 995. 

2. As one of the instrumentalities designated by Congress in 
execution of the power granted the office of Commissioner of 
Patents Avas created, and though he is an executive officer, mat- 
ters in the disposal of which he exercises functions judicial in 
their nature may properly be brought within the cognizance of 
the courts. *^"^- 

3. In deciding Avhether or not a patent shall issue the Com- 
missioner acts on evidence, finds facts, applies the law, and 
decides questions affecting not only i)uhlic but private interests, 
and so as to reissues or extensions or interferences between con- 
testing claimants. In all this he exercises judicial functions. 
(Butterworth v. Hoe, 29 0. G. 615; 112 U. S. 50, cited. *M 

4. While the Commissioner of Patents is an executive officer 
and subject in administrative or executive matters to the super- 
vision of the Secretary of the Interior, his actions in deciding 
patent cases are essentially judicial in their nature and not sub- 
ject to review^ by the executive head, an appeal to the courts 
having been provided for. (Butterworth r. Hoe, 29 0. G. 615; 
112 IT. S. 50, cited.) */f/. 

5. The different statutes show that in the gradual develop- 
ment of the policy of Congress in dealing with the subject of 
granting patents the recognition of the judicial character of the 
questions involved became more and more pronounced. */cZ. 



JUEISDICTION. 177 

6. Althougli nilc 124 jti-ovidcs that from a derision of the 
Primary Exauiiner afiirmiiig the patentahility of a claim or the 
right to make it no appeal can be taken, and rule 126 provides 
that the lower tribunals may call the Commissioner's attention 
to matter whicli amounts to a statutory bar to the grant of a 
patent, Held, that under the supervisory power confiM'red upon 
the Commissioner by statute he may review a favoial)le decision 
of the Primary Examiner on the (question of patentability, not- 
withstanding rule 124, and even when his attention has not been 
called to the matter, as provided for by rule 126. (Oct. 16, 1899. ) 
DuELL, C] Anderson & Dyer r. Lowry, 89 0. G., 1861. 

7. As the statute has imposed upon the Commissioner of 
Patents the superintending or performing of all duties relating 
to the granting and issuing of patents, any rule that would pre- 
vent the Commissioner from exei-cising such power would be 
invalid. Id. 

8. It being impossible for the Commissioner to '^ perform a]\ 
duties respecting the granting and issuing of patents," that fact 
does not relieve him from the duty of superintendence, and he 
has no. power to make a rule which would prevent him from 
performing his statutory duties. Id. 

9. Under the proper construction rules 124 and 126 do not 
deprive the Commissioner of his supervisory power, and it 
would be a very anomalous condition of affairs if the exam- 
iners, who are appointed upon the nomination of the Commis- 
sioner, are above his superintendence. If he has no power to 
superintend and revise the action of the examiners, he could 
not superintend the granting and issuing of patents. Id. 

10. The Commissioner should not refuse in a proper case to 
exercise his supervisory power, and it would be nonfeasance for 
him to refuse. The courts which have appellate jurisdiction 
over the Patent Oftice have more than once held that the Com- 
missioner may refuse patents, even after favorable decision by 
subordinates, under his general supervisory power. Id. 

11. The reserve supervisory power of the Commissioner 
should be used in the treatment of cases of the class to which 
the present one belongs only where some extraordinary reason 
for such action is disclosed. Id. 

12 



178 JURISDICTION. 

II. Secretary of the Interior. 

1. The general powers of discretion and superintendence given 
by law to the Secretary of the Interior over the several Bureaus 
of the Interior Department do not have the same application to 
the Patent Office as to the General Land Office, the Pension 
Office, and the Indian Office for the reason that Congress in the 
one case has provided another and exclusive manner of correct- 
ing errors in the decisions of the Commissioner, while in land, 
pension, and Indian matters no such other or exclusive remedy 
is provided. (Feb. 20, 1899.) Opinion of the Asst. Atty. Gen. 
for the Department of the Interioi'. fPiwle r. Avery, 87 0. G. 
357. 

2. The decision of the Commissioner of Patents in placing the 
burden of proof in an interference case is not the act of an ad- 
ministrative officer and purely ministerial in its nature, but is 
the act of a judicial officer, and therefore the Secretary of the 
Interior is without jurisdiction or authority over the matter pre- 
sented to him by appeal. -fid. 

3. The duty imposed upon the Commissioner to determine 
which of certain rules were applicable to an interference and 
upon whom the burden of proof should be placed involved the 
exercise of a judicial discretion and authority the same as the 
admission or rejection of evidence or the making of any other 
interlocutory ruling, and for that reason his decision on this 
question cannot be reviewed by the Secretary of the Interior on 
appeal to him from the decision of the Commissioner. -fid. 

III. Federal Courts. 

(a) Court of Appeals, Dist. of Columbia. 
1. The act of Congress approved February 9, 1893, which 
gave the Court of Appeals of the District of Columbia the power 
to review the decisions of the Commissioner of Patents, is such 
an act as Congress was authorized to pass under the Constitu- 
tion, and in the matter of such appeal no encroachments of the 
judicial department of the Government on the domain of the 
executive department are found to justify the courts in holding 
that the act in question is unconstitutional. (Sup. Ct. U. S. 
Jan. 28, 1899.) 

Fuller, C. J.] *U. S. ex rel. Bernardin v. Duell, Com'r. of 
Pats., 86 0. G. 995. 



JURISDICTION. 179' 

2. Where appeal ^vas tak^n to the Court of Appeals on the 
ground that the Commissioner of Patents erred (1) in refusing 
to consider whether a patent granted to one of the parties to the 
interference was for the same invention as that involved in the 
interference and if so whether it is not a statutory bar to the 
grant of a patent for said invention to said party; (2) in holding 
that this question of a statutory bar was an ex "parte one and 
therefore not involved in the interference; (3) in declining to 
consider Avhether an application as filed disclosed the invention 
in controversy, and (4) in refusing to hold that the subject- 
matter of the interference w'as inserted in one of the applications 
by amendment after the application had been filed in the Patent 
Office and subsequently to the application filed by the other 
party, upon which his patent had issued, Held^ that these ques- 
tions are of a preliminar}^ nature and do not arise for considera- 
tion by the Court of Appeals upon a decision by the Commis- 
sioner of Patents in an interference case. (C. A. T.. C. Oct. 
4, 1899.) 

Alvey, J.] *Hulett r. Long, 89 0. G, 1141. 

3. Held, further, that the mode of raising these (questions in 
the Patent Office and of their determination therein is specially 
provided for and prescribed by rules 122, 124 and 126 of the 
rules of practice of that office. Id. 

4. The appeal allowed to the Court of Appeals for the Dis- 
trict of Columbia by the act of Congress of February 9, 1893, 
in case of interferences, is for the purpose of having the final 
decision of the Commissioner of Patents on the question of 
priority of invention reviewed and determined as that question 
is contemplated and provided for in section 4904, Revised 
Statutes, and not for the purpose of having decisions upon 
collateral or interlocutory questions reviewed and decided. Id. 

5. If all collateral and interlocutory proceedings in the Patent 
Office were subjects of appeal to the Court of Appeals, the pro- 
ceedings for patents might be made almost interminable, to say 
nothing of the enormous costs that would be incurred in prose- 
cuting and defending against such appeals. Id. 

6. Where it was urged on appeal to the Court of Appeals 
from the decision of the commissioner in an interference case 
that the ap})lication of one of the parties as originally filed did 



180 JUEISDICTION. 

not claim or disclose the subject-matter of the interference and 
that the matter of interference is new matter put in the case by 
amendment since the original application was filed, and there- 
fore said party had no right to make the claim in issue, and 
that he could not be given the benefit of constructive reduction 
to practice as of the date of filing his original application. Held, 
that this is a preliminary question which has been disposed of 
by the tribunals of the office on motion to dissolve under rule 
122. Id. 

7. It is competent for parties to an interference case to show 
in the development of their testimony that their devices are 
different, and thereby preclude any adjudication of priority 
that would prevent either one from being protected in the 
possession of his own device. The prima facie and ex parte 
adjudication of identity which was the necessary prerecpiisite to 
the declaration of interference might be shown upon judicial 
investigation to have been erroneous, and the interests of justice 
would seem to demand that it should be open to the parties to 
make such showing, and when such showing is made as part of 
the cause and in the ordinary course of the litigation upon the 
merits it enters into the substance of the cause and is proper 
to be considered by the Court of Appeals on appeal from 
the final decision of the commissioner. (C. A. D. C. Apr. 4, 
1899. ) 

Morris, J.] * Bechman v. Wood, 89 0. G. 2459. 

8. As a general proposition, the power of the Court of Appeals 
in interference cases is limited to the determination of the ques- 
tion of priority of invention as between the parties to the inter- 
ference, and neither the question of patentability of the invention 
nor the propriety of the declaration of interference is open to 
consideration. (C. A. D. C, Dec. 6, 1899.) 

Morris, J.] * Bechman v. Wood, 89 0. G. 2462. 

III. Federal Courts. 

(h) Circuit Courts. 

1. Having obtained jurisdiction of a suit in equity, when 
brought, the court does not lose such jurisdiction merely because 
by reason of subsequent events the right to relief by injunction 



LABEL?. 181 

ma}^ have been lost. The court ^vi]l liold llic cnusc until linal 

disposition. (C. C, S. D. N. Y., Mar. 25, 18!)!).) 

Lacombe, J.] * Lalance tSr Grosjean Mfg. d al. v. Ilabennan 

Mfg. Co. Same r. ^Nlatthai ct al. 98 Fed. 

Kep. 197. 

2. When both complainant and defendant are corjjorations of 
the same state, and therefore for purposes of jurisdiction, citi- 
zens of that state, a federal court can have no jurisdiction of a 
cause of action arising out of a contract of license under a 
patent. The failure to pay royalties upon which a claim of 
forfeiture of license is grounded, is a breach of contract cogni- 
zable in a court of common law. That and the cancellation of 
the contract of license or other equitable remedy in that regard 
are matters justiceable in a state court, but in the absence of 
diverse citizenshij^ are clearly outside the jurisdiction of a fed- 
eral court. (C. C, E. D. Penn. June 27, 1899.) 

Gray. J.] * Standard Dental Mfg. Co. r. Nat'l Tooth Co., 95 
Fed. Rep. 291. 

3. The allegation in a bill that the defendant corporation was 
" organized under and pursuant to the laws of the state of New 
Jersey" is an affirmative statement that it is a citizen of New 
Jersey, and therefore sufficient to confer jurisdiction upon a 
federal court, inasmuch as the complainant is a resident of 
another state. (C. C, S. D. Ohio, W. D. July 31, 1899.) 
Thompson, J.] * Blocked al. v. Standard Distilling & Distri- 
buting Co., 95 Fed. Rep. 978. 

liabels. 

1. Where the Examiner refused to accept api)lication papers 
signed by the attorney for applicant on the ground that there 
is no provision in the copyright law which permits the applica- 
tion to be signed l)v any other than the pro])rietor or owner of 
a label. Held, as that there is no provision in the copyright law 
that requires an application to be signed by the proprietor, and 
as it has been the uniform practice of this Office and the Libra- 
rian of Congress to register for an author, designer, etc., books, 
etc., upon an application made by his agent or attorney the 
application should be accepted. (Oct. 29, 1898.) 
DuELL, C] E.V parte McLoughlin Bros., 86 0. G. 1633. 



^182 LICENSE. 

2. Where the Examiner refused to accept application papers 
for registratioTi of a label which were signed by the attorney for 
applicant on the ground that there was no written power of at- 
torney, Held, that as it has been the practice to receive applica- 
tions so signed without a written power the application should 

;be received. (Blake et al. r. Allen & Co., 56 F. R. , 764, cited.) 

Id. 

3. Where the Examiner required that as the forn)s in the 
Rules of Practice of the Patent Office relating to the registration 

, of prints and labels provided for the signing of the application 
by the owner or proprietor of the label these forms should be 
followed, Held, that the forms in the Print and Label Rules are 
merely suggestive and it is not mandatory on an applicant that 
he should follow them. Id. 

liiceiise. 

I. In General. 
II. Implied. 
III. To Make, Use and Sell. 
I. In General. 

1. Whei'e an applicant in certain instruments assigned his 
right, title and interest in an invention, retaining for himself 
the exclusive right to emplo}' the invention in the manufacture 
of a certain class of m.achines, Held, that such instruments do 
not conve}^ the entire interest in the invention or an undivided 
part thereof; and they are construed to be nothing more than 
licenses. (Gaylor r. Wilder, 10 How., 477, and Waterman v. 
Mackenzie, 54 0. G. 1562, cited. Oct. 5, 1899.) 

DuELL, C] Ex parte Rosback, 89 0. G. 705. 

2. Held, further, that under the authorities and the settled 
practice of the office, the office was justified in construing such 
instruments as not conveying such an interest in the invention 
and the patent as would authorize the commissioner under the 
provisions of rule 26 to issue the patent to the party named as 
assignee. Id. 

3. A license does not become void ipso facto by failure to pay 
stipulated royalties; even though a provision is made in the 

.contract of license that such failure to pay shall work forfeiture 



LICENSE. 183 

of such license, the licensee has a right to be heard as to the 
facts upon which such forfeiture or annulment is made to de- 
pend. The license would remain operative and pleadable and 
therefore defeat an action for infringement, until rescinded by 
a court of equity. The obvious course of procedure would be 
either to sue for damages for non-payment of royalties, or by 
bill in equity seek the rescission of the contract of license, and 
that being obtained, to pursue the licensee in a federal court 
for infringement, and not by a suit which has the dual object 
of rescinding the contract and obtaining the remedy for in- 
fringement at the same time in the same bill. C. C. , E. D. 
Penn., June 27, 1899.) 

Gray, .J.] * Standard Dental Mfg. Co. v. Nat'l Tooth Co., 95 
Fed. Rep. 291. 

4. A mere breach of covenant (if such breach be establislied) 
does not, ipso facto, annul a license. In order to annul it there 
must be some proper proceeding and a rescission in equity. 
(C. C, E. D. Penn., June 19, 1899.) 

Gray, J.] *Hanifen v. Lupton et ciL, 95 Fed Rep. 465. 

5. Where, under a license, the licensee was empowered to 
deal in, import, use and sell certain articles covered by patent 
at certain specified royalties, and he covenanted not to deal in, 
handle, take orders for, etc., sucb articles so patented made by 
any person in this country who is not licensed under the pat- 
ent ^^ unless he pays the ro3'alties thereon himself." Held, that 
it is not important whether the last clause is treated as an 
estoppel upon the licensor to treat as infringers those manufac- 
turers with whom the licensee dealt in accordance with the 
license, or as an implication of license to such manufacturers to 
make and sell their product through the licensee, for the effect 
of it is, as to the articles thus dealt in, that the patent monopoly 
was waived. */(/. 

6. Where a license under a patent contained the provision : 
"This royalty shall be paid only upon said sales and said busi- 
ness done by the part}' of the second part, the orders for which 
are taken subsequent to April 1, 1896; and at the expiration or 
termination in any wise of the agreement, the said royalties 
shall be paid on all orders taken prior to such expiration or ter- 



184 LICENSE. 

mination, whether the goods are dehvered prior thereto or sub- 
sequent thereto," the impHcation is very strong that deliveries 
upon new orders must cease. It was not the intention of the 
agreement that goods could be accumulated by the licensee dur- 
ing the continuance of the license, and, although not ordered 
before its voluntary cancellation, could be subsequently sold in 
competition with other licensees. Such sales made after cancel- 
lation are unauthorized. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Shipman, J.] *Pelzer v. City of Binghampton et al., 95 Fed. 
Rep. 823. 
7. A suit on a contract of license under letters patent is not 
a suit arising under the patent laws. (C. C, N. D. 111. N. D. 
July 27, 1899. ) 

KoHLSAAT, J.] * Perry v. Noyes et al, 96 Fed. Rep. 233. 
II. Implied. 

1. The existence of an implied license from an employ^ to 
his employer has always been treated as a mixed question of 
law and fact, and the determination of the question in one suit 
cannot make a decisive precedent for another, because the re- 
sults of such questions may be caused to differ by slight circum- 
stances. (C. C. A., 1st Cir. Dec. 9, 1898.) 

Putnam, J.] *City of Boston v. Allen, 91 Fed. Rep. 248. 

2. An implied license, if it relates to an improvement in a 
process, ordinarily authorizes the employer to continue to prac- 
tice the process during the whole period of the patent, for the 
reason that the subject matter of, the process is indivisible. 
But, if the invention pertains to a machine, only the specific 
machine or machines set up during the time of employment 
are protected. The rule, however, is more for the application 
of facts than a rule of law, and therefore is not rigid. ^Id. 

3. The permitted use of one or more devices at one locality 
at one time does not raise any presumption, either of law or 
fact, in favor of a permission to use others at another locality 
some years later. */(i. 

4. If the circumstances indicate such an intention, a license 
to use implies a license to make the thing to be used, and a li- 
cense to use a thing which one is authorized to make, in the ab- 
sence of controlling circumstances, imports a license to use it 



IJCENSE. 1.S5 

during the life of a patent. If any restriction was intended it 
is reasonable to suppose it woukl have been stipulated for at the 
time. (C. C, W. D. Mich. S. D. June 13, 1899.) 

Severens, .].] *Kdison Electric Light Co. ct ah v. Pcninsuhir 
Light, Power & Heat Co., 95 Fed. Rep. 
669. 

IIL To ]Make. Use and Sell. 

1. The complainant, being the owner of letters i)atcnt of the 
United States, No. 264,586, Sept. 19, 1882, for an improvement 
in soda-water apparatus, executed a license to a firm, conferring 
upon it, among other things, tlie exclusive right to make, use 
and sell the patented invention as applied to new soda-water 
apparatus "of their own manufacture only," and providing 
that the license "shall be binding on the parties hereto, their 
heirs, successors, administrators or assigns and shall be valid 
until the 19th day of September, 1899, unless sooner terminated 
b}' the written consent of both parties hereto," Held on con- 
sideration of all the provisions in the license, that in im])osing 
the restriction "of their own manufacture only," the complain- 
ant intended that the right to make, use and sell the patented 
invention as applied to new apparatus should only be confined 
to such person or persons as should hold the license from time 
to time during its term and manufacture such apparatus, and 
not exclusively to the firm, and that the license was assignable. 
(C. C, D. N. Jer. Mar. 16, 1899.) 

Bradford, J.] * Waldo r. American Soda-Fountain Co., 92 
Fed. Rep. 623. 

2. In accordance with the controlling rules of law, the sale 
and construction of apparatus embodying the substance of a 
patented invention, as the electric lighting fixtures in a build- 
ing, carries with it the right to use such subsidiary and co- 
operating elements as are, in the contemplation of the parties to 
the sale, necessary to make the invention useful. (C. C. , W. 
D. Mich. S. D. June 13, 1899.) 

Severens, J.] * Edison Electric Light Co. et aJ. v. Peninsular 
Light, Power & Heat Co. et al, 95 Fed. 
Rep. 669. 



186 PATENTABILITY. 

Marking Articles Patented. 

1. Where a patent has lain absolutely dormant, the require- 
ment of the statute (R. S. §4900), with reference to marking 
patented articles, becomes physically impossible, and does not 
apply so as to prevent recovery of damages in an action at law 
for the infringement of the patent. (C. C, D. Mass. Dec. 22, 
1898.) 

Putnam, J.] *Ewart Mfg. Co. r. Baldwin Cycle-Chain Co. et 
al, 91 Fed. Rep. 262. 

2. Where the complainant gave notice to the whole public, thus 
including the defendants by properly marking the manufactured 
articles, or the inclosing packages with the word "patented," 
or affixing thereto a label with such a notice, defendants, whose 
infringement is not denied, cannot avoid liability by denying 
actual knowledge of the patent at the time of the infringement. 
It is not material that they did not have actual knowledge pro- 
vided the constructive knowledge is shown, in the marking as 
provided by R. S. § 4900. (C. C. , E. D. Penn. May 26, 1899. ) 
McPherson, J.] *Hogg r. Gimbel, etal, 94 Fed. Rep. 518. 

3. Where in an action to recover penalties for falsely mark- 
ing articles "patented," the plaintiff alleged that defendant, on 
a certain date and each and every day thereafter, until the com- 
mencement of this suit, did "mark upon 1500 spring-balance 
computing scales the words and figures ' Patented Feb. 13, '94,' " 
and asks judgment for $150,000 one-half payable to the United 
States and the other half to the plaintiff. Held^ that while it 
is doubtful whether the continuous markings of a day or given 
time would constitute more than a single cause of action, yet 
the defendant is, under the provisions of the statute of the state 
in which the action is brought, entitled to have the different 
causes of action separately stated and numbered. (D. C, S. 
D. Ohio W. D. July 22, 1899.) 

Thompson, J.] *Hoytr. Computing Scale Co., 96 Fed. Rep. 
250. 

Patentability. 

I. In General. 
II. Combination. 



PATENTABILITY. 187 

III. Invention and Skill Distinguished. 

IV. Invention and Suggestion Distinguished. 
V. Evidence of Extensive Use. 

VI. Evidence of Result. 

VII. Utility. 

VIII. Novelty and Invention. 

(a) New Use or Adaptation. 
(6) Process or Method. 
(c) Products. 
(rf) Substitution of Materials. 

IX. Novelty Without Invention. 

(a) Aggregation. 

(6) Arrangement. 

(c) Composition of Matter. 

(d) Double or Analogous Use. 

(e) Process or Method. 

(/) Substitution of Materials, 
(g) Particidar Cases. 

I. In General. 

1. Where patentable novelty has been denied not only by one 
but by all the expert tribunals of the Patent Office, the appli- 
cant must make out a very clear case of invention, (Barratt v. 
Commissioner of Patents, 79 0. G. 2020, cited,) and this is 
but another application of the same principle that governs in 
those cases where a patent having been regularly granted all 
doubt in respect of invention is resolved in favor of the patentee. 
Fenton Co. v. Office Specialty Co., 12 App. D. C. 201, cited. 
(C. A. D. C, Feb. 7, 1899.) 

Shepard, J.] * Smith V. Duell, Commissisoner of Patents, 87 
0. G. 893. 

2. It is as necessary to the validity of a claim that the con- 
struction covered by it involve invention as that it involve 
novelty. (June 1, 1899.) 

Greeley, A. C] Ex parte Perkins, 88 0. G. 548. 



188 PATENTABILITY. 

3. An idea or discovery unaccompanied by any inventive act 
or practical application of an inventive nature is not within the 
scope of the patent hiws. (C. C, D. N. Jer. Feb. 13, 1899.) 
Bradford, J.] * McEwan Bros. Co. r. McEwan et al 91 Fed. 

Rep. 787. 

4. A mere abstract idea is not patental)le irrespective of the 
means described for carrying it into execution. If when the 
question arises the answer is self-evident, there can be no pat- 
entable novelty in carrying out the idea. (C. C. , S. D. N. Y, 
May 8, 1899.) 

CoXE, J.] *Badische Analin &: Soda Fabrik v. Kalle et al, 94 
Fed. Rep. 163. 

II. Combination. 

1. When the combination as a whole performs a duty that 
no combination of such parts has i^erformed before, that gives 
it patentability. (C. C, E. D. N. Y. Oct. 6, 1898.) 

Thoma3, J.] *Morrin v. Lawler. Same ef a/, v. Edison Elec- 
tric Illuminating Co. of Brooklyn, 90 Fed. 
Rep. 285. 

2. Where the combination was one of old elements, but it 
was a novel arrangement of those devices, so that by their ac- 
tion a result was attained which had not before been success- 
fully accomplished, such a combination is patentable. (C. C. 
A., 2dCir. May 25, 1899.) 

Shipman, J,] * Nelson et al. v. A. D. Farmer & Son Type 
Founding Co. et al, 95 Fed. Rep. 145. 

3. A combination of old elements, patented or non-patenta- 
ble in themselves, may be the result of invention, and thus in 
itself be patentable. But such a combination must possess at- 
tributes distinct from those of its constituent elements, and the 
old elements must so cooperate with each other as to produce a 
new and useful result. A mere duplication of old elements 
may be useful, but it does not produce a result differing from 
what would be produced by the same elements separately, ex- 
cept in quantity or degree. There must be some attribute or 
quality in the combination distinct from those of its elements, 



PATENTABILITY 



189 



so as to distinguish it from a mere aggregation of parts. (C. 
C, D. N. J. May 25, ISiM). ) 

Gray, J.] *Maier d al. r. Bloom et al., 9-") Fed. Rep. 159. 
III. Invention and Skill Distinguished. 

1. The use of dowel i)ins and lioles for centering one part of 
a device upon another is so old and well-known as to be a mat- 
ter of common knowledge, and was in fact shown in some of 
the references cited, and to substitute this old centering njeans 
for the means shown in the patents cited, Avould not involve 
invention but merely the exercise of good judgment. (June 8, 
1899.) 

Greeley, A. C] Ex parte Pridmore, 67 MS. Dec. 123. 

2. A mechanic, skilled in shaping metal, confronted with the 
practical idea of avoiding friction between a trolley wheel and 
the track or groove would easily devise means for accomplishing 
this result. If a wheel did not revolve freely in a groove of 
given shape it would almost necessarily occur to him that the 
groove should be so shaped as not to offer resistance or obtrude 
friction ; and while such change in shape may produce a de- 
sirable improvement in the domain of construction, yet it would 
be the result of ordinary judgment and mechanical skill, and 
would not involve inventive genius. It would be going too far 
to hold that one who had found that a wheel of given shape 
could revolve more freely in circular or rounded grooves than in 
angular grooves should be given the monopoly of all the half- 
round or circular trolley track which the business of this 
country may require. (C. C, D. Mass., Dec. 2, 1898.) 
Aldrich, J.] *Coburn Trolley-Track Mfg. Co. v. Chandler e< 

al, 91 Fed. Rep. 260. 

3. Where the sweater was felt to be objectionable, but was 
still worn, and there was no struggle to devise something to take 
its place, in which the patentee was alone successful, the produc- 
tion of a garment which would be divested of so much of the 
sweater as objectionally increased the clothing of the wearer 
required no special power of discernment to distinguish the 
portion to be discarded, but was only the exercise of niechanical 
skill. (C. C, E. D. Penn. Jan. 18, 1899.) 

Dallas, J.] * Way v. McClarin, 91 Fed. Rep. 663. 



190 PATENTABILITY. 

4. Mere structural changes, or changes in the location of parts 
of an operative and successful machine, which only add to the 
capacity of the machine, involve only mechanical skill, and not 
invention. (C. C, S. D. Cal. Jan. 30, 1899.) 
Wellborn, J.] * Lettelier ?;. Mann etal, 91 Fed. Rep. 909. 

5. AVhere the change in size and shape of a part of an old 
machine was but such an adaption of an old thing to a new 
purpose as would occur to a mechanic of ordinary skill, it did 
not justify a patent. */d 

6. The idea of providing a coiled-wire handle for implements 
which come in contact with heat, thus permitting the circulation 
of air and ensuring sufficient coolness of the handle to permit 
of ready manipulation at all times, having once been put into 
practical form, the subsequent work of fitting the handle to the 
bails of different vessels and adjusting it to new environments 
is within the domain of the skilled mechanic. (C. C, N, D. 
N. Y. Feb. 27, 1899.) 

CoxE, J.] ^Gaitley v. Greene, 92 Fed. Rep. 367. 

7. The substitution of a heavy "momentum" pulley for a 
light pulley may be advantageous in a particular case, but the 
advantage results from the use of ordinary mechanical skill 
and without the exercise of inventive faculty. (C. C. , D, Mass. 
Feb. 24, 1899.) 

Brown, J.] * Parsons v. Seelye, 92 Fed. Rep. 1005. 

8. As soon as the want of a high back as well as a high front 
to overalls should be felt, the exercise of mechanical skill, with- 
out inventive genius would provide it. (C. C. , D. Ver. Apr. 
1, 1899.) 

Wheeler, J.] *Corser v. Brattleboro Overall Co., 93 Fed. 
Rep. 805. 

9. The placing of garment patterns in a particular way for 
the purpose of economizing cloth does not amount to invention. 
If the order of placing is not new it is merely a good way; if it 
is new, it is merely a better way, and amounts only to a matter 
of judgment, producing good workmanship, and not a matter 
of invention, producing a distinctively new method. (C. C. , 
D. Ver. Apr. 1, 1899.) 

Wheeler, J.] *Corser v. Brattleboro Overall Co., 93 Fed. 
Rep. 809. 



PATENTABILITY. 191 

10. A patent must combine utilitj', novelty and invention. 
It may in fact embrace utility and novelt}' in a high degree, 
and still be only the result of mechanical skill as distinguished 
from invention. It must amount to invention. (C. C. A., 4th 
Cir. May 2, 1899.) 

GoFF, J.] * Christie et al. v. Hygeia Pneumatic Bicycle Saddle 
Co. et al, 93 Fed. Rep. 965. 

IV. Invention and Suggestion Distinguished. 

ISIerely telling a skilled workman to fix an old device so that 
it will perform a new function, would not have produced a new 
device, unless the workman, in addition to his mechanical skill, 
possessed sufficient ingenuity to contrive the new device, and if 
such new device involved patentable invention, the original sug- 
gestion would not defeat the right to a patent therefor. Such a 
suggestion is mere information, the receiving and acting upon 
which are not surreptitious or unjust. (C. C, D. Ver. Apr. 
1, 1899.) 

Wheeler, J.] *Corser v. Brattleboro Overall Co., 93 Fed. 
Rep. 809. 

V. Evidence of Extensive Use. 

1. Although it may appear that a device is of superior utility 
over other devices, as it has gone into general use, the fact that 
it hns gone into such use, even to the displacement of other de- 
vices, has no weight upon the question of patentable novelty 
except when it is otherwise in doubt. (C. A. D. C. Feb. 7, 
1899.) 

Shepard, J.] * Smith v. Duell, Com'r. of Pat., 87 0. G. 893. 

2. In a doubtful case, the fact that the patented device has 
gone into general use, and superseded other devices, may be suf- 
ficient to turn the scale, and sustain the presumption of patent- 
ability arising from the grant of the patent. (C. C. A., 3d Cir. 
Nov. 28, 1898.) 

AcHESON, J.] ^= Thomas Roberts Stevenson Co. v. McFassell, 
90 Fed. Rep., 707. 

3. The question of anticipation or lack of novelty not l>eing 
free from doubt, the success with which the patented product 



192 PATENTABILITY. 

has met has weight in turning the scale in favor of the inven- 
tion. (C. C, D. N. Jer. Feb. 18, 1899.) 
Beadford, J.] *McEwan Bros. Co. v. IVIcEwan ct a/., 91 Fed. 
Rep. 787. 

4. Where tlie differences between the patented devices and 
the alleged anticipating devices are slight, yet are sufficient to 
make the patented device commercially successfnl, the magni- 
tude of that success aids the court in resolving doubtful consid- 
erations in favor of the patent in suit. (C. C. , S. D. N. Y. 
Dec. 27, 1898.) 

Thomas, J.] -''Rubber Tire Wheel Co. v. Columbia Pneumatic 
Wagon Wheel Co., 91 Fed. Rep. 978. 

5. Where the sales of an article and its extensive use have 
been phenomenal they may be considered as evidence of nov- 
elty, value and usefulness of the article, but it does not neces- 
sarily follow that invention was required to design and construct 
it, and where invention is lacking a patent for the article cannot 
be sustained. (C. C. A., 4th Cir. May 2, 1899.) 

GoFF, J.] * Christy et al. v. Hygeia Pneumatic Bicycle Saddle 
Co., 93 Fed. Rep. 965. 

VI. Evidence of Result. 

1. The addition of improvemenis toiin old but commercially 
unsuccessful machine, whereby a great increase of speed and 
great saving in cost of operation results, thereby bringing the 
machine up to commercial requirements, so that it may be con- 
sidered as the first successful machine, entitles the improver to 
a place among inventors. (C. C, N. D. Cal. May 22, 1899.) 
Morrow, J.] * Fruit Cleaning Co. v. Fresno Home-Packing 

Co. etoL, 94 Fed. Rep. 845. 

2. Where a machine turned out satisfactory work, but it was 
not commercially successful, for the reason that it did not turn 
out the work with desirable rapidity. Held, that such device was 
not so inoperative as to be deficient in patentability. (C. A. D. 
C. Apr. 4, 1899.) 

Morris, J.] *Bechman v. Wood, 89 0. G, 2459. 

VII. Utility. 

1. While utility is a circumstance to be considered in deter- 



rATENTAHlLITV 



103 



mining the question of novelty, it is not necessarily conelusive 
of the question ; for, if so, every improvement in a machine, 
however slight and although resulting from nieehanieal skill 
only, would he patentahle, and this, according to the uniiues- 
tionahle weight of authority, is not the law. (C. C, S. I). C'al. 
Jan. 30, 1S90.) 
Wellborn, J.] =i= Letteher r. :\rann ct al., 91 Fed. Rep. 909. 

2. The utility of an invention must he gauged liy llic state 
of the art at time the })atent was api)lied for, and it is imma- 
terial that since then otlicr means have heen employed to ac- 
complish the same result at still less cost. (('. C, I). N. J. 
July 14, 1899. ) 

KiRKPATKicK, J.] *M'estinghouse Electric Mfg. Co. v. Beacon 
Lamp Co. etal, 95 Fed. Rep. 462. 

3. Mere utility does not estahlish patentahility. It is not 
every improvement in a mechanism that is the result of the 
exercise of the inventive faculty. In the progress of the arts, 
improvements are constantly heing developed wdiich are clearly 
the result of obvious mechanical suggestion, and to grant patent 
monopolies for such improvements would not be to encourage 
invention, but would impose upon mechanics and the public 
generally burdens for which there would be no adequate com- 
pensation. (C. C, E. D. Penn. Aug. 9, 1899.) 

Gray, J.] *Shoe r. Gimbel et al, 96 Fed. Rep. 96. 
IX. Novelty and Invention. 

(a) New Use or Ada-ptation. 

1. A device that effects a valuable function should not he de- 
clared unpatentable or lacking in novelty because some one has 
used one of the parts here and another there to secure the same 
result, but has used them so awkwardly and illy associated 
"with other parts that the result was not obtainable. (C. C, S. 
D. N. Y. Dec. 27, 1898.) 

Thomas, J.] * Rubber Tire Wheel Co. r. Columbia Pneumatic 
Wagon Wheel Co., 91 Fed. Rep. 978. 

2. It is established by various decisions that a novel concep- 
tion of the a}>plieation of old means to produce an unusual or 
unexpected result is not a double use and may be patented. 

13 



194 PATENTABILITY. 

The question in such cases is whether or not the conception in- 
volves invention. (C. C, D. Conn. Sept. 5, 1899.) 
TowNSEND, J.] * Yale &: ToAvne Mfg. Co. r. Sargent & Co., 97 
Fed. Rep. 106. 

IX. Novelty and Invention. 
(h) Process or Method. 

1. In view of the case of Westinghouse v. Boyden Co., 83 0. 
G. 1067; 170 U. S. 537, it cannot be claimed that the case of 
Risdon Works v. Medart, 71 O. G. 751; 158 U. S. 68, decided 
that a process to be patentable necessarily involves a chemical 
or other similar elemental action. (Apr. 10, 1899.) 

DuELL, C] Exjmrte Rogers & Winslow, 87 0. G. 699. 

2. From the decision of Westinghouse r. Boyden Co. it may 
be deduced, first, that processes which involve "some chemical 
or other elemental action " are patentable; second, that processes 
which involve "nothing more than the operation of a piece of 
mechanism of the function of a machine" are not patentable, 
and, third, that processes may be patentable w^hich "though 
ordinarily and most successfully performed by machinery may 
also be performed by simple manipulation." Id. 

3. Processes which consist in the manipulation of a blank to 
make abrasive pad-covers for buffing-machines, the steps of 
which consist substantially in holding the edge of the blank, 
stretching and forming the center of the blank, and manipu- 
lating the blank so that the edges wall be brought over the cen- 
tral part. Held, to fall within the third class of processes and to 
be patentable. Id. 

4. Some processes of manufacture are certainly patentable, 
though no test by which they may be distinguished from those 
which are not, and which can be definitively applied to all cases, 
has been authoritatively established. But there is no warrant 
in the authorities for the assumption that, unless a chemical 
change be effected by a process, no patentable invention or dis- 
covery can be involved in it. It is true that in both Corning v. 
Burden, 15 How. 252, and Locomotive Works v. Medart, 158 U. 
S. 71, 15 Sup. Ct. 745, 71 O. G. 751, processes involving chem- 
ical reaction were contrasted Avith methods which comprise noth- 
ing but successive mechanical steps to produce a merely mechan- 



PATENTABILITY. 195 

ical change in the sul)stanees operated upon; hut in so doing 
the courts were ilhistrating, not defining, the difference between 
a patentable and an unpatentable process. (C. C, E. D. Penn. 
Jan. 12, 1899.) 

Dallas, J.] ^^^IMelvin et al. v. Thomas Potter, Sons & Co., 91 
Fed. Rep. 151. 
5. A discovery to be patentable must have the attributes of 
invention, but the mental operation is somewhat different in 
one who invents a machine and one who discovers a process. 
The basic truth upon which rests a process ma}' come to the dis- 
coverer suddenly and unexpectedly. He may not understand 
the law upon which the process operates, and he may be unable 
to explain the cause of certain iDhenomena; nevertheless, if he 
be the first to give to the world as a result of his method a new 
and valuable article of manufacture, he is entitled to protection. 
(C. C, S. D. N. Y. May 8, 1899.) 

CoxE, J.] *Badische Anahn & Soda Fabrik v. Kalle et al., 94 
Fed. Rep. 163. 

IX. Novelty and Invention. 
(c) Produds. 
If one discovers a new and useful product he is entitled to 
the full benefit thereof no matter how it may be produced. A 
patent for a product must produce, by the process it describes, 
that article and no other. If the article be old, it cannot be the 
subject of a patent even though made artificially for the first 
time. A product is not patentable upon the ground that an al- 
ready known article is made more perfectly by the new process 
or machine than it was before. If this rule were otherwise the 
product of each successive machine would be patentable, but 
improvements in degree or quality are not patentable. (C. C, 
S. D. N. Y. May 8, 1899. ) 

CoxE, J.] *Badische Analin & Soda Fal)rik v. Kalle et al, 94 
Fed. Rep. 163. 

IX. Novelty and Invention. 

(rf) Substitution of Materials. 
1, The substitution of one material for another having the 
same general characteristics, involves no patentable invention. 



196 PATENTABILITY. 

particularly where the substitution is simple and obvious, in- 
volving no novelty of construction nor anything substantially 
new in the resulting product. But where the substituted ma- 
terial possessed new and theretofore unknown properties which 
produce better results and save time, labor and money, then 
such substitution involved invention. (C. C, S. D. N. Y. 
Dec. 5, 1898.) 

CoxE, J.] *King ct al. v. Anderson et al, 90 Fed. Rep. 500. 

2. The substitution of hydrated lime for powdered marble in 
a compound for restraining the too rapid setting of plaster of 
Paris where the resulting compound is better calculated to mix 
evenly with the plaster and its action is more uniform, prompt 
and relial)le, and further, where the difference between the old 
compound and that with the substituted lime hydrate was the 
difference between partial and complete success, involved patent- 
able invention. ^Id. 

IX. Novelty without Invention. 
(o) Aggregation. 

1. The combination here claimed has not produced a new de- 
vice differing in character and function from others then in 
existence and common use, nor does it accomplish a novel re- 
sult through the co-operative action of old agencies. The ap- 
plicant has done nothing more than exercise mechanical skill 
in bringing old devices into juxtaposition, and th(>reby consti- 
tuting an aggregation merely of separate elements. (C. A. D. 
C. Feb. 7, 1899.) 

Shepard, J.] * Smith v. Duell, Com. of Pat., 87 0. G. 893. 

2. Where a combination of old devices produces a new result 
such combination is doul)tless patentable, but where the com- 
bination is not only of old elements, but of old results, and no 
new function is evolved from such combination, it falls within 
the rulings of this court in Hailes v. Van Wormer, 5 0. G. 89; 
20 Wall. 353, 368; Reckendorfer v. Faber, 10 0. G. 71; 92 U. 
S. 347, 356; Phillips v. City of Detroit, 17 0. G. 191; 111 U. S. 
604; Brinkerhoff v. Aloe, 146 U. S. 515, 517; Palmer v. Corn- 
ing, 70 0. G. 1497; 156 U. S. 342, 345; Richards v. Chase Ele- 



PATENTABILITY. 197 

vator Co., 71 0. G. 1456; 158 U. S. 299. (Sup. Ct. V. S. May 
15, 1899.) 

Brown, J.] * Office Specialty Mfg. Co. r. Fcnton Metallic 
Mfg. Co., 87" 0. G. 1608. 

X. Novelty Without Invention. 
(6) Arrangement. 

1. Where a mechanical result is obtained l)y the movement 
of one element upon another element of a combination, it does 
not usually involve invention to reverse the operation, and 
secure the same result by making the first element stationary 
and the second movable. And so, where the resultant motion 
is secured by a stationary cam guiding a tool, it may often be 
an obvious change to reverse the parts by making the cam 
movable and the tool stationary. But the question whether or 
not such change is obvious is to be determined by examination 
of the particular machine in which it is made. (C. C. A., 6th 
Cir. Mar. 7, 1899.) 

Taft, J.] *Penfield v. Chambers Bros. Co., 92 Fed. Rep. 
630. 

2. While it is true that the exact counter])art of the patented 
device is not found in the prior art, every feature of it is to be 
found in earlier patented devices combined in the same imme- 
diate relations and performing the same functions as in the com- 
binations of the patented device ; and whatever of novelty there 
may be said to be in the combination is a matter of selection 
and arrangement, and did not involve invention. (C. C. A., 
7th Cir. Feb. 23, 1899.) 

Per Curiam.] *Lowenbach v. Hake-Stern Co. et al, 92 Fed. 
Rep. 661. 
8. After dynamic-electric machines and electric motors of 
sufficient power to serve as a propelling force for driving street 
cars were invented, it did not involve the exercise of the in- 
ventive faculty to substitute good machines in an old combina- 
tion for the defective ones when the functions to be performed 
had been clearly outlined in the prior art. (C. C. A., 6th Cir. 
Mar. 7, 1899.) 

Taft, J.] * Kelly et al. v. Springfield Ry. Co. et al, 92 Fed. 
Rep. 614. 



198 PATENTABILITY. 

X. Novelty Without Invention. 

(c) Composition of Matter. 

In order to sustain a patent for a compound, it is not only 
necessary that its production in the manner prescribed in the 
specification shall be novel, but it is necessary that such pro- 
duction shall also involve invention. (C. C. A., 3d Cir. Sept. 
22, 1899.) 

Bradford, J.] * Arlington Mfg. Co. r. Celluloid Co., 97 Fed. 
Rep. 91. 

X. Novelty Without Invention. 

(d) Double or Analogous Use. 

1. The courts have held that the mere use of an apparatus is 
not an art, machine, manufacture or composition of matter, and 
therefore does not come within the definition of a patentable 
invention. This holding is not inconsistent with the accepted 
doctrine that invention may sometimes be displayed in the 
adoption of an old device in a different art, but even in such a 
case the thing itself and not the bare idea of using it, should 
be made the subject of the claims. (Apr. 10, 1899.) 
Greeley, A. C] Ex parte AwereW, 66 MS. Dec. 442. 

2. An improvement in a stocking-supporter, consisting in 
raised lugs on the side of the slot-plate to prevent the stud over 
which the upper end of the stocking is gripi3ed from rising in 
the slot and becoming disengaged, does not rise to the dignity 
of invention in view of the fact that lugs for the same purpose 
have been used in suspender-clasps. (C. A. D. C. Feb. 7, 
1899.) 

Shepard, J.] * Smith v. Duell, Commissioner of Patents, 87 
0. G. 893. 

3. There is no such remoteness in the use of the slot-plate 
with the lugs in the clasp of the suspender as is sufficient to 
raise its adaptation to use in a stocking-supporter from the 
plane of mechanical ingenuity to that of invention. The use 
is clearly analogous. (Potts r. Creager, 155 U. S., 597, and 
Briggs V. Commissioner of Patents, 78 0. G., 169, cited.) 

4. The art of painting on canvas and paper is so nearly 



PATENTABILITY. 199 

allied to painting or decorating clay that it involved no inven- 
tion to transfer the use of the atomizer from one art to the other, 
and the use of the atomizer to apply pigments to clay is only a 
case of applying Avhat was on its face expressly intended for 
all arts to a special art for which it was peculiarly adapted. 
(C. C, S. D. Ohio, W. D. Dec. 2, 1898.) 
Taft, J.] *Fry r. Rookwood Pottery Co. et al, 90 Fed. Rep. 
495. 

5. A device having transverse pipes arranged in horizontal 
series in a vessel into which beer was allowed to drip, and 
through which pipes there was a continuous flow of cold 
water to cool the beer, having been shown to be old. Held, that 
no invention was involved in using a substantially similar series 
of pipes in the Solvay bicarbonate column, particularly in view 
of the fact that other quite similar means had also been used to 
cool the bicorbonate mixture of the Solvay column. (C. C. A.. 
6th Cir. Nov. 28, 1898. ) 

Taft, J.] * Solvay Process Co. i\ Michigan Alkali Co. et ai, 
90 Fed. Rep. 818. 

6. If the patentee had invented some practical method of 
overcoming the tendency of street-railway rails to expand and 
contract, according to changes in temperature, he would have 
invented something new and useful, but he is not entitled to a 
monopoly of such supposed invention merely because the well- 
known old process of his patent fell into a use made available by 
the adaptation of new conditions to new needs, with which the 
patentee had no concern. The application of an old and well- 
known method to a new use in an art analogous to that to which 
the old method had been a2:)plied does not involve patentable 
invention. (C. C, E. D. Mo., E. D. Jan. 10, 1899.) 
Adams, J.] *Falk :Mfg. Co. v. Missouri Ry. Co. et al, 91 Fed. 

Rep. 155. 

7. As overalls with high fronts or bibs Avere old, the patent 
could only be valid for specific improvements if valid at all, 
and if the improvement could be said to cover the extension of 
the back of overall to the same height as the bib in front, for 
the protection of the back of the wearer, the extension would 
be like the bib in front and would be merely putting that device 



200 PATENTABILITY. 

to the same use in a new i)]ace in the same garment, for the 
same purpose. Such putting to a new use does not constitute 
patentahl-e invention. (C. C, D. Ver. Apr. 1, 1899.) 
Wheeler, J.] * Corser v. Brattlehoro Overall Co., 93 Fed. 
Rep. 805. 

8. The question of double or analogous use, i. e., whether 
the new use is so nearly analogous to the former one that the 
applicability of the device to its new use would occur to a per- 
son of ordinary mechanical skill, is one dependent upon the 
peculiar facts of each case. (C. C. A., 2d Cir. Apr, 4, 1899.) 
Lacombe, J.] * Briggs v. Duell, Com. of Patents, 93 Fed. 

Rep. 972; 87 0. G. 1077. 
X. Novelty without Invention. 
(e) Process or Method. 

1. A process or method of forming a rail-joint consisting of, 
(]) Cleaning the surfaces of the rails for a short distance from 
the ends to be joined; (2) heating the cleaned rail ends; (3) 
forming and adjusting a mould upon and around the rail ends; 
(4) pouring molten metal into this mould and letting it remain 
there until it solidifies, belongs to the domain of mechanical 
skill and not to the domain of invention, for each and every 
step of the process was well-known to foundrymen and artisans 
in iron, steel and metals long before its particular application to 
the forming of rail joints. (C. C, E. D. Mo., E. D. Jan. 10, 
1899.) 

Adams, J.] *Falk Mfg. Co. v. Missouri Ry. Co. et al, 91 Fed. 
Rep. 155. 

2. Where the process is simply the mechanical operation of a 
combination of mechanical elements, with no chemical or sim- 
ilar elemental action involved in producing the desired result, 
the operation is simply the function of a machine, and as such 
is not the subject of a patent. (C. C, D. N. Jer. ) 
KiRKPATRicK, J.] * Stokes Bros. Mfg. Co. v. Heller et al, 96 

Fed. Rep. 104. 
IX. Novelty without Invention. 

(/) Substitution of Materials or Parts. 
1. It is well settled that the mere substitution of one mate- 



PATENTABILITY. 201 

rial for another does not involve jjatentalili' novelty. altlKtugh 
the substitnted material may he sujierior for the jJiirjKisc to that 
before in use. (Feb. 2, 18!)9.) 
Greeley, A. C] Ex j^arte Cochran, 6(3 MS. Dec. 247. 

2. The substitution of direet driving for indireet driving by 
countershaft and gearing is a mere substitution of a well-known 
equivalent, and there is no invention in api)lying to a main 
shaft the same mechanism whieh was formerly applied to a 
countershaft. (C. C, D. Mass. Feb. 24, 1899.) 
Brown, J. * Parsons v. Seelye, 92 Fed. Rep. 1005. 
IX. Novelty Without Invention. 
(g) Particular Cases. 

1. A pliable metallic capsule for bottles having applied to 
its inner surface a coating of material which becomes adhesive 
when moistened. Held, to be not patentable, as cemented appli- 
ances — such as envelopes, labels and postage-stamps — requiring 
merely the application of moisture to put them into use are old. 
(C. A. D. C. Dec. 9, 1898.) 

Morris, J.] *Nimmy r. Commissioner of Patents, 8G 0. G. 
345. ^ 

2. Mere cheapness is not patentable. Cheap boxes have been 
made from time immemorial, and it is no new thing and in- 
volves no patentable invention, to make a box so cheap that it 
may be better thrown away or used to kindle a fire than to re- 
ship, and whether a box shall be made slightly and cheaply so 
as to be thrown away after one shipment, or more permanently 
and substantially at a greater cost, so as to be used in many 
shipments, is a question of construction and good, prudent 
business management, rather than of invention. (C. C. A., 
7th Cir. Feb. 16, 1899.) 

BuNN, J.] *Schrei et al. v. Morris et al, 91 Fed. Rep. 992. 

3. Where the art discloses that an open looj) without an anti- 
friction roller in over-check guides for bridles Avas old, and a 
closed loop with an anti-friction roller was also old, Ilehl, that 
no invention was involved in combining the two to produce an 
open loop with the anti-friction roller. (C. C, N. D. N. Y. 
Apr. 12, 1899.) 

CoxE, J.] * Smith v. Maxwell, 93 Fed. Rep. 466. 



202 PATENTS. 

4. In a patent for a safety valve, the only novelty covered by 
the claim in issue is the extension upward within and through 
the top of the valve case, and above the mufller, of means for 
controlling from the outside the regulating device. The thought 
involved in the mere idea of having some contrivance by which 
any interior work can be controlled by a rod extending exter- 
iorly, thus avoiding the necessity of taking apart, is a primary 
one in all the arts ; S(; that the suggestion of making such a 
connection in this case clearly involved no invention. (C. C. 
A., IstCir. May 4, 1899.) 

Putnam, J.] * Crosby Steam Gauge & Valve Co. v. Ashton 
Valve Co., 94 Fed. Rep. 516. 

5. The substitution of a frame of buckram and coarse cloth 
for a wire and gauze frame, for a hat support used in trunks and 
hat-boxes whereby the hat may be securely fastened and held 
by a hat-pin does not rise to the dignity of patentable invention. 
(C. C, S. D. N. Y. May 28, 1899.) 

Shipman, J.] * Lyons v. Bi.shop et a/., 95 Fed. Rep. 154. 

Patents. 

I. In General. 

II. Presumption of Validity. 

III. Defective or Void. 

IV. Construction of. 

(a) In General. 

(b) Liberal or Broad. 

(c) By Draivings. 

(d) By Specification. 

(e) By State of the Art. 

V. Claims. 

(a) Ambiguous, Hoio Construed. 

(b) For Combination. 

(c) For Specific Element of Combination. 

(d) Limited by Amend.ment in Patent Office. 

(e) Limited by their Terms. 

(/) ^^ Substanticdly as Described,^' etc. 
VI. Correction of. 

(a) By Certificate of Correction. 



PATENTS. 203 

(b) Bi/ Reissue. 
VII. Limitation of, by Foreign Patents. 
VIII. Reissue. 
IX. Valid and Infringed. 
X. Valid but Not Infringed. 
XI. Validity Not Determined, Not Infringed. 
XII. Void in Whole or in Part. 

I. In General. 

1. A patent for an invention which the patentee refuses to 
make available himself, and refuses to allow others to make 
useful, is not within the spirit of the constitution, which assigns 
as a reason for securing exclusive rights to authors and inven- 
tors a desire "to promote the progress of science and the useful 
arts," and patents so held are entitled to scant, though neces- 
sarily to some, recognition at law, and to none whatever in 
equity. They are not the equivalent of a highly cultivated 
field, surveyed, plotted and fenced in by the owner; but they 
constitute, for all useful purposes, a waste from which the pub- 
lic is sought to be excluded for reasons of which equity takes 
no cognizance. (C. C, D. Mass. Dec. 22, 1898.) 

Putnam, J.] *Evvart Mfg. Co. r. Baldwin Cycle Chain Co. et 
ai, 91 Fed. Rep. 262. 

2. While an improver may have made it possible, through 
his improvements of a pre-existing successful machine, to largel}' 
increase the capacity thereof, yet by such improvement he 
does not entitle himself to the pre-existing subject-matter to 
which it related. (C. C. A., 3d Cir. Jan. 25, 1899.) 

Dallas, J.] *Ginna et al. v. Mersereau Mfg. Co., 92 Fed Rep. 
369. 

II. Presumption of Validity. 

1. Where two patents apparently describe the same art or 
article, the question of identity is open for examination, with 
the presumption in favor of their diversity. Rob. Pat. § 896. 
The presumption is that the patentee invented something new, 
or he would not have secured the second patent. (C. C. A., 
9th Cir. Oct. 24, 1898.) 
Morrow, J.] * Norton v. Jensen, 90 Fed. Rep. 415. 



204 PATENTS. 

2. The rule that a patent is 'prima facie evidence of novelty 
and invention, is a mere rule of evidence, which, although it 
casts the burden of proof upon the alleged infringer, does not 
take from the courts authority to declare what constitutes nov- 
elty and invention. (C. C, S. D. Cal. Jan. 30, 1899.) 
Wellborn, J.] ^Lettelier v. Mann et al, 91 Fed. Rep. 909. 

3. Where a patent has been declared valid after a protracted 
litigation it raises a strong presumption in its favor, and new 
alleged anticipatory matter must clearly convince the court that 
the former decisions were wrong. If any doubt exists on this 
point the former adjudications should stand. (C. C, D. Mass. 
Feb. 9, 1899.) 

Colt, J.] * Tripp Giant Leveller Co. v. Bresnahan et a/., 92 
Fed. Rep. 391. 

4. All the elements of the combination had been used before 
and the functions of each were well known in the art, but it 
does not appear that they had ever similarly specifically com- 
bined for effecting the purpose accomplished by the device of the 
patent. The grant of the patent carries with it the presumption 
of patentability and this presumption is strengthened by the 
general acceptance of the device, the acquiescence of those 
skilled in the art and their willingness to accept licenses there- 
under. (C. C. A., 3d Cir. June 8, 1899.) 
KiRKPATRicK, J.] *Millheim Electric Tel. Co. etal v. Western 

Electric Co., 95 Fed. Rep. 152. 

III. Defective or Void. 

1. There is no authority which holds that a patent regularly 
issued and valid on its face can be declared void because of a 
clerical error of an examiner in failing to follow the local rules 
of practice in the Patent Office. (C. C, N. D. N. Y. June 
14, 1899.) 

CoxE, J.] * Deere et al v. Arnold, 95 Fed. Rep. 169. 

2. Under the authority of Ry. Co. v. Sayles, 97 U. S. 564, 
and subsequent cases it is doubtful if a patent, granted on a 
feature which did not appear in the original specification, and 
not until some months later by amendment, is valid, especially 



PATENTS. 205 

where such amendment is not sworn to by applicant. (C. C, 

D. Ky. Junes, 1899.) 

Evans, J.] * Patent Button Co. v. Pilcher, 95 Fed. Rep. 479. 

IV. Construction of. 
(rt) In General. 

1. Notwithstanding the apparent concessions of counsel on 
each side as to the scope of the patent in suit, the court, which, 
with reference to questions so far affecting the pul)lic as those 
of validity and construction of patents, is not bound b\' stipula- 
tions of parties, cannot accept their conclusion when the speci- 
fication of the patent is clearly insufficient to reach anything 
be3^ond what is expressly described in it. (C. C. , D. ]Me. 
July 30, 1898.) 

Putnam, J.] *8imonds Roller Mach. Co. v. Hathorn Mfg. Co., 
90 Fed. Rep. 201. 

2. The law intends that the patent shall be preserved, unless 
the invalidity appear be3'ond a reasonable doubt; and when a 
machine created pursuant to the specification of letters patent 
has reached in its domain the greatest distinction for useful op- 
eration, while others who have sought the same ends have failed 
substantially, and when the rights are of great pecuniary value 
and have enlisted large financial undertakings, a court of equity 
should not be diligent to discover nice resemblances to former 
inventions, especially in behalf of a person who had recognized 
its validity through years of service in commending it to the 
public, and whose own signature acknowledged its validity. 
(C. C, E. D. N. Y. Oct. 6, 1898.) 

Thomas, J.] * Morin v. Lawler. Same ei al. v. Edison Elec- 
tric Illuminating Co. of Brooklj'n, 90 Fed. 
Rep. 285. 

3. The difference between a ])ioneer inventor and an im- 
prover, in the construction of patents, is very marked. An 
original inventor, a pioneer in the art, he who evolves the orig- 
inal idea and brings it to some successful, useful and tangible 
result, is by the law of patents entitled to a broad and liberal 
construction of his claims; whereas an improver is only entitled, 
and justly so, to what he claims, and nothing more. Further- 



206 PATENTS. 

more, an application for a patent which has been rejected and 
subsequently amended to conform to the objections of the Pat- 
ent OfRce is strictly construed. (Sargent y. Lock Co., 114 U. 
S. 63; 5 Sup. Ct. 1021; Water Meter Co. v. Desper, 101 U. S. 
332; Gage v. Herring, 107 U. S. 640; 2 Sup. Ct. 819; Fay v. 
Cordesman, 109 U. S. 408, 420; 3 Sup. Ct. 236. (C. C. A., 9th 
Cir. Oct. 24, 1898.) 
Morrow, J.] * Norton et at. v. Jensen, 90 Fed. Rep. 415. 

4. While a feature of construction described in the specifica- 
tion may be read into the claims with a view of showing the 
connection in which the device is used, and proving that it is 
an operative device, yet it may not be done for the purpose of 
making out a case of novelty or infringement, and where an ele- 
ment is expressly included in one claim, it cannot be read into 
another claim where it is not mentioned. (C. C. A., 7th Cir. 
Feb. 16, 1899.) 

W^ooDS, J.] * Wilson et al. r. McCormick Harvesting Mach. 
Co., 92 Fed Rep. 167. 

5. Where a claim is distinctly, exclusively and broadly for a 
new combination, there is no authority or principle of law 
which, so reading it, would Avarrant the conversion of it by con- 
struction into a claim for mere details. (C. C. , N. D. Cal. 
Jan. 23, 1899.) 

Morrow, J.] *Risdon Iron & Locomotive W'ks. v. Trent, 92 
Fed. Rep. 375. 

6. The more meritorious the invention, the greater the step 
in the art, the less the suggestion of the improvement in the 
prior art, the more liberal are the courts in applying the doc- 
trine of equivalents in favor of the patentee. The narrower the 
line between the faculty exercised in inventing a device and me- 
chanical equivalents, the stricter are the courts in rejecting the 
claim of equivalents by the patentee in respect of alleged in- 
fringements. (C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] ^Penfieldr. Chambers Bros. Co., 92 Fed. Rep. 630. 

7. Where the fundamental rules of construction applicable to 
ordinary instruments solve the case it is not necessary to resort 
to any of those peculiar and somewhat artificial rules of con- 
struction which are sometimes assumed to be appropriate with 



PATENTS. 207 

reference to letters patent issued to inventors. (C. C. , D. Me. 
Mar. 22, 1899.) 

Putnam, J.] * Adams ct M'cstlake Co. et al. v. E. T. Burrowes 
Co., 93 Fed. Rep. 462. 

8. Where the language of a claim is clear and simple there is 
no room for construction, and such a claim for an article cannot 
be sustained, if to sustain it is necessary to import into it the 
method or process used in producing such article. (C. C. , N. 
D. N. Y. Apr. 12, 1899.) 

CoxE, J.] * Lappin Brake-Shoe Co. v. Corning Brake-Shoe 
Co., 94 Fed. Rep. 162. 

9. Where a patentee might have claimed a process, or an arti- 
cle used in carrying out the process, but has done neither, the 
court is prohibited from giving him a patent for a product pro- 
duced by means of an alleged ingenious device, which is not 
even mentioned in the claim. Were the rule otherwise it would 
be a dangerous menace to public rights, which might be de- 
stroyed, not by the patent emanating from the Patent Office, 
but by a different patent subsequently granted by the court. 

10. While the claims of a patent are necessarily confined to 
the specific combinations. which they describe, yet their scope 
should not be so restricted as to admit of the avoidance of in- 
fringement by resort to merely colorable and evasive variations. 
(C. C, E. D. Penn. May 26, 1899.) 

Dallas, J.] * Smith et al. v. Ulrich, 94 Fed. Rep. 865. 

11. In the construction of a patent, the omission of the pat- 
entee to point out or refer in his specification or claims to the 
special feature which he subsequently maintains is the most im- 
portant part of his invention, is very significant and should be 
carefully scrutinized. In McClain v. Ortmayer, 57 0. G. 1229, 
141 U. S. 419, 12 Sup. Ct. 76, the court held : 

"The object of the patent law in requiring the patentee to ' particularly point out 
and distinctlj' claim the part, improvement or combination whicli lie regards as his 
invention or discovery,' is not only to secure to tiim all to which he is entitled, but to 
apprise the public of what is still open to them. The claim is the measure of his right 
to relief." 

(C. C. A., 1st Cir., May 31, 1899.) 

Colt, J.] *MacColl v. Knowdes Loom ^^'orks, 95 Fed. Rep. 

982. ■ 



208 PATENTS. 

12. A patent to the original inventor of a machine which 
first performs a useful function, protects him against all 
mechanisms which perform the same functions by equivalent 
mechanical devices; but a patent to one who has simply made 
a slight improvement on a device that performed the same func- 
tion before as after the improvement is protected only against 
those who use the very improvement that he describes and 
claims, or mere colorable evasions of it. (C. C. A., 8th Cir. 
Oct. 9. 1899.) 

Sanborn, J.] * McBride v. Kingman et. nl. Same v. Sickels 
et al. Same v. Randall et al. Same v. Ains- 
worth ct al, 97 Fed. Rep. 217. 

13. The statute requires the inventor to particularly point out 
and distinctly claim the improvement or combination which he 
claims as his discovery. R. S. § 4888. When under this 
statute the inventor has made his claims he has therel)y dis- 
claimed and dedicated to the public all other combinations and 
improvements apparent from his specification and claims that 
are not mere evasions of the device, combination or improve- 
ment, which he claims as his own. While the patent is notice 
of the claims which it contains and allows, it constitutes an 
estoppel of the patentee from claiming under that or any subse- 
quent patent any combination or improvement there shown 
which he has not clearly pointed out and distinctly claimed as 
his discovery or invention when he received his patent. It is 
a complete and a legal notice to every one — notice on which 
every one has a right to rely — that he may freely use su(!h im- 
provements and combinations without claim or molestation 
from the patentee. It would constitute rank injustice to permit 
an inventor, after a combination or device that he did not dis- 
tinctly claim in his patent had gone into general use, and years 
after his patent had been granted, to read that combination into 
one of the claims of his patent and to recover for its infringe- 
ment of every one who had used it upon the faith of his 
solemn declaration that he did not claim it. ^ Id. 

IV. Construction of. 

(/;) Liberal or Broad. 
1. It is of no legal consequence that a patentee fails to ex- 



PATENTS. 



209 



plain the physical laws of which he makes use in tlie ])ractice 
of his invention, l)ecause an inventor is not de})rived of the 
fruits of his genius hy the fact, if it exists, that he is neither a 
mathematician nor a jjliysicist. (C. C, D. Me. July .30, 
1898. ) 

Putnam, J.] *Sinionds Rolling. ]Mach. Co. r. Hathorn Mfg. 
Co., 90 Fed. Rep., 201. 

2. While it is the ordinary rule, often stated, that a ])atentce 
is entitled to claim all the uses and advantages Avhich helong to 
his patent, whether foreseen by him or not, yet this is limited 
so as to exclude uses which require further exercise of the in- 
ventive faculty, and uses the means for accomplishing which 
are not so indicated in the specification as to make them avail- 
able to persons of ordinary skill in art. */rf. 

3. It is not enough that a patent suggests an object to be ac- 
complished, if it does not also suggest or point out practically 
the means for its accomplishment. (Citing Gordon v. Warder, 
150 U. S. 47, 50; 14 Sup. Ct. 32.) */d 

4. Where a patentee's contribution to the art constituted an 
invention, not a great or primary invention, but yet a distinct 
advance in an art crowded with skilled mechanics, the court 
should uphold his patent. (C. C, S. D. N. Y. Nov. 15, 
1898. ) 

CoxE, J.] *Gormully & J. Mg. Co. v. Stanley Cycle Mfg. Co. 
etal., 90 Fed. Rep. 279. 

5. The rule that an inventor of a machine is entitled to the 
benefit of all the uses to which it can be put, whether he knew 
of them or not, cannot operate to sw^eep within the patent 
structures which do not embody the invention claimed and 
only rtsemble some of its subordinate features, and to infringe 
the defendant must use the invention which the patentee has 
described and claimed. (C. C, S. D. N. Y., Nov. 15, 1898.) 
CoxE, J.] * Palmer et al. v. De Yongh, 90 Fed. Rep. 281. 

6. Where it appears that a patented process has proved com- 
mercially successful, and not only revolutionized the art to 
which it pertains both as to time saved and to superior product, 
but also has resulted in disi)la(ing other processes of a similar 

14 



210 PATENTS, 

nature, the court is disposed to sustain it, unless it is clearly in- 
valid under the law. Nor does it detract from the merit of 
such an invention that prior inventions had nearly solved the 
problem or had reached a successful experimental stage in its 
solution. When the prior art is brought to bear upon any im- 
portant invention, this is often found to be the situation. (C. 
C, D. Mass. Apr. 7, 1899.) 
Colt, J.] * Tannage Patent Co. v. Donallan, 93 Fed. Rep. 811. 

7. Previous efforts and previous failures add to the import- 
ance of the work of the successful inventor or discoverer. A 
process carefully conducted by a skilled expert may be adequate 
to tan skins, and yet be commercially worthless. Such experi- 
mental success should have little or no weight in determining 
the scope of a patent for a commercially successful process. 

8. In determining the question of anticipation, if the iden- 
tity of method and result of the patented device with that of 
the alleged anticipatory matter is doubtful, the doubt must be 
resolved in favor of the successful patentee, who has in a prac- 
tical way materially advanced the art. (C. C. A., 1st Cir. 
Apr. 25, 1899.) 

Colt, J.] *Simonds Rolling Mach. Co. v. Hathorn Mfg. Co. 
et al. 
* Hathorn Mfg. Co. et al. v. Simonds Rolling Mach. 
Co., 93 Fed. Rep. 958. 

9. A patentee who is the original inventor of a device or 
machine — a pioneer in the art — is entitled to a broad and lib- 
eral construction of his claims; but an inventor who only 
claims to be an improver is only entitled to what he claims and 
nothing more. In other words, the original inventor of a de- 
vice or machine has the right to treat as infringers all who make 
devices or machines operating on the same principle, and per- 
forming the same functions by analogous means or equivalent 
combinations. (C. C. A., 9th' Cir. Feb. 13, 1899.) 
Hawley, J.] * Overweight Counterbalance Elevator Co. v. 

Improved Order of Red Men's Hall Ass'n of 
San Francisco, 94 Fed. Rep. 155. 

10. Where an inventor has devised a machine or tool for 



PATENTS 



211 



doing work which had previously been done by hand, and the 
utihty of the device is at once recognized by the trade, the 
court should hesitate to declare the patent therefor void for want 
of invention because what was done may be eflfected by the 
moditife'ation of an old structure used for a different purpose. 
(C. C. A., 1st Cir. Sept. 14, 1899.) 
Colt, J.] * Reynolds r. Buzzell, 90 Fed. Rep. 997. 
IV. Construction of. 
(c) By Draivi))gti. 

1. The mere fact that a patent expressly shows a scale upon 
which the drawings are made is not of a controlling character; 
for it is of little consequence whether the relative dimensions of 
the parts of a device are gathered from a scale expressly shown, 
or from the apparent proportions indicated by the drawings 
without a scale; and in either event, the dimensions shown are 
not to be taken as elements in the claim, unless the patentee has 
expressly limited himself within the rules stated by the Court 
of Appeals in Reece Buttonhole Mach. Co. v. Globe Buttonhole 
Machine Co., 10 C. C. A. 194; 61 Fed. Rep. 958; 67 0. G. 
1720; C. D. 1894. (C. C, D. Me. July 30, 1898.) . 
Putnam, J.] ^Simonds Rolling Mach. Co. v. Hathorn Mfg. 

Co., 90 Fed. Rep. 201. 

2. If there be any invention, it is not to be found in the 
combination described in the claims, but by reference to the 
drawing and in the words "substantially as described." This 
would confine the plaintiff to a metallic frame divided longi- 
tudinally into three sections, each fitted with short rollers, two 
of which project above and forward of the front bar of the 
frame, which is bent inward in front of the middle section to 
form the "re-entrant bend or recess" for the insertion of the 
hand. (Sup. Ct. U. S. May 15, 1899.) ' 

Brown, J.] * Office Specialty Mfg. Co. v. Fenton ^letallie Mfg. 
Co., 87 0. G. 1608. 

IV. Construction of. 

(d) By the Specification. 
1. A description of details, in a specification, which the claim 
does not make elements of the combination, and which are not 



212 PATENTS. 

essential to it, is to be held as only pointing out the better 
method of using tlie combination. (C. C. A., 1st Cir. Dec. 9, 
1898. ) 
Putnam, J.] * City of Boston v. Allen, 91 Fed. Rep. 248. 

2. While the claim and specification of a patent may be read 
together for the purpose of l)etter understanding the meaning of 
the claim (Sulphate Pulp Co. v. Falls Pulp Co., 80 Fed. Rep. 
395, 405) the specification cannot be accepted as enlarging or 
extending the invention stated in the claim itself. (C. C, D. 
Mass. Dec. 2, 1898.) 

Aldrich, J.] * Coburn Trolley-Track Mfg. Co. v. Chandler ef 
ai, 91 Fed. Rep. 260. 

3. In construing a patent, if explanation is required, the en- 
tire description of the invention is applicable to a true interpret- 
ation of the claims. (C. C, N. D. Cal. May 22, 1899.) 
Morrow, J.] * Fruit Cleaning Co. v. Fresno Home-Packing 

Co. et al, 94 Fed. Rep. 845. 

4. The description of non-essentials in the specification of a 
patent merely amounts to a statement of the better method of 
using the conibination claimed. (C. C. , S. D. N. Y. June 13, 
1899.) 

TowNSEND, J.] *Cimiotti Unhairing Co. et al. v. Bowsky, 95 
Fed. Rep. 474. 

5. Where a claim does not include a particular element which 
is necessary to the operativeness of the invention as set forth in 
the specification, in order to sustain it the court may resort to 
the specification and read such element into the claim. (C. C. . 
D. Mass. July 28, 1899.) 

Brown, J.] * Miller v. Mawhinne}^ Last Co., 96 Fed. Rep. 
248. 

IV. Construction of. 

(e) By State of the Art. 

Where an invention is not of a primary, but of a subordinate 

character, the claims of a patent therefor must be limited to 

the specific devices shown. (C. C, D. N. J. June 20, 1899.) 

Acheson, J.] * Union Writing Mach. Co. v. Domestic Sewing 

Mach. Co., 95 Fed. Rep. 140. 



PATENTS. 213 

V. Claims. 

(a) Ambiguous. How Construed. 
Where the language of a claim, abstnu'tly coiisidci-ed, is sus- 
ceptible of either of two constructious, it must bo read in the 
hght of the actual condition of things, and if technical and 
defining, the proper meaning -would be determined from the 
evidence of tliose skilled in the art. (C. C, E. 1). Penn. Jan. 
12, 1899.) 
Dallas, J.] *Melvin et al. v. Thomas Potter, Sons & Co., 91 

Fed. Rep. 151. 
V. Claims. 

(6) For Combination. 

1. A claim for combination cannot be defeated by showing 
that each of its elements, separately considered, was old. The 
proof must shoAV that the combination was old, and failure in 
such proof is irretrievable failure. (C. C. , S. D. N. Y. Nov. 
15, 1898.) 

CoxE, J.] *Gormully & J. Mfg. Co. r. Stanley Cycle Mfg. Co. 
et al, 90 Fed. Rep. 279. 

2. While all of the elements of the claim of the patent in suit 
are contained in the claim of a prior patent to the same in- 
ventor, the latter patent has in combination an additional mech- 
anism which is necessary to enable it to accomplish the pur- 
pose for which it was designed. The claims of the patents are 
therefore not co-extensive, and the inventor was entitled to a 
separate patent for each. Claims are not co-extensive where 
one specifies all the features of an}'^ or all the parts of its subject, 
while one omits one of those subjects." (C. C. , D. N. Jer. ) 
KiRKPATRiCK, J.] *Ryanv. Newark Spring Mattress Co., 96 

Fed. Rep. lOU. 
V. Claims. 

(c) For Specific Element of a Combination. 
1. The failure to claim a specific element of a combination as 
a device by itself, is, in effect, an admission that the particular 
element is old or Avas not invented by the patentee. (C. C. A., 
9th Cir. Feb. 13, 1899.) 

Hawley, J.] * Overweight Counterbalance Elevator Co. v. 
Imp. Order of Red Men's Hall Association 
of San Francisco, 94 Fed. Rep. 155. 



214 PATENTS. 

2. Every element of a combination claim is presumed to be 
material, and it is the comlnnation of elements that is pre- 
sumed to be new, and not the elements themselves, when con- 
sidering claims for a combination. */d. 
Y. Claims. 

(d) Limited by Amendment in Patent Office. 

1. " Limitations and provisos imposed by the inventor, es- 
pecially such as were introduced into the application after it 
had been persistently rejected, must be strictly construed 
against the inventor, and in favor of the public, and looked 
upon in the nature of disclaimers." Mr. Justice Blatchford in 
Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021. (C. C. A., 
9th Cir. Oct. 24, 1898.) 

MoREOW, J.] * Norton et al. v. Jensen, 90 Fed. Rep. 415. 

2. In view of the amendment of the specification and claims 
to meet the objections — and it is immaterial whether those ob- 
jections were proper or not — of the Patent Office, the patentee 
cannot now be heard to assert that the amendment was imma- 
terial nor to insist upon a construction of his claims which would 
cover a method of making his device which he was required to 
abandon or disclaim for the purpose of obtaining favorable 
action on his application. It is too late now to assert that he 
was entitled to his original claims, or that the claims as finally 
allowed are as broad as the original claims. (Sutter v. Robin- 
son, 119 U. S. 530, 7 Sup. Ct. 376; Shepard v. Carrigan, 116 
U. S. 593, 6 Sup. Ct. 493; Rubber Co. v. Tire Co., 28 U. S App. 
470, 515-517, 16 C. C. A., 632, 70 Fed. Rep. 58, and ca&es there 
cited.) (C. C. A,, 8th Cir. Nov. 28, 1898.) 

Thayer, J.] * Brill v. St. Louis Car Co. et al, 90 Fed. Rep. 
666. 

3. Acquiescence in a Patent Office rejection and amendment 
of claims and specification amounts to a disclaimer by the pat- 
entee of matter eliminated l)y such amendment. (C. C. , E. 
D. Mo. E. D. Feb. 7, 1899.) 

Adams, J.] * Michaelis et al. v. Larkin et al, 91 Fed. Rep. 
778. 

4. Where a patent is entitled to a broad construction, an 
amendment of the specification during the pendency of the 



PATENTS. 215 

application in the Patent Office, l\v striking out a reference to 
certain well-known mechanical equivalents for reversing motion, 
is immaterial, and does not exclude the application of the doc- 
trine of equivalents, which doctrine is so effective that under 
ordinary circumstances it supersedes the usual rule of interpre- 
tation, — Ex-pressio unius est exclusio alterius. (C. C. A., 1st Cir. 
Jan. 30, 1899.) 
Brown, J.] *Heap v. Greene, et al., 91 Fed. Rep. 792. 

5. Where the Patent Office rejects a claim covering a certain 
device, on its merits, and such rejection is acquiesced in, and the 
patent issues, the patentee cannot afterwards be allowed a con- 
struction of the other allowed claims broad enough to cover the 
claim which was rejected. (C. C. A., 6th Cir. May 2, 1899.) 
LuRTON, J.] *Bundy JM'f'g Co. v. Detroit Time-Register Co., 

94 Fed. Rep. 524. 

6. To be estopped by the action of the Patent Office, the 
patentee must be shown to have surrendered something which 
he now claims in order to obtain that which was allowed. 

7. The estoppel which arises when claims are limited by 
amendment to meet the rulings of the Patent Office, is in the 
nature of esto})pel by contract, not equitable estoppel or estop- 
pel in pais, and its scope in a jtarticular case, like the meaning 
of a contract, is a matter of interpretation and construction of 
the terms used according to their fair meaning. (C. C. A., 
7th Cir. Oct. 3, 1899.) 

\\'ooDS, J.] * Magic Light Co. v. Economy Gas-Lamp Co. , 97 

Fed. Rep. 87. 
V. Claims. 

(e) Liriiited hi/ their Terms. 
The law requires the applicant for a patent to make S])ecific 
claim or claims defining his invention for the information of the 
public, and when so made and granted it cannot be enlarged in 
his interest l)eyond the plain import of its terms. When neces- 
sary to its understanding, the specification and drawings, if any, 
may be resorted to. The claim may also be limited by the 
specification when such is the necessary effect of its recitals and 
its true meaning ascertained from the context. (Tilghman v. 



216 PATENTS. 

Proctor, 19 0. G. 859; 102 U. S. 707, 721, 728; Howe Machine 
Co. V. National Needle Co., 51 0. G. 475; 134 U. S. 388, 394; 
White V. Dunbar, 37 0. G. 1002; 119 U. 8. 47, 51; McLain v. 
Ortmayer, 57 0. G. 1129; 141 U. S. 419, 425; Celluloid Mfg. 
Co. V. Arlington Mfg. Co., C. D. 1893, 483, 488; 64 0. G. 
1263.) (C. A. D. C. May 4, 1899.) 
Shepard, J.] *Reute v. Elwell, 87 0. G. 2119. 
V. Claims. 

(/) ^' Substantially as Described,^ ^ etc. 

1. The words "herein described" are more positive in their 
effect than the ordinary expression, "substantially as de- 
scribed" or "substantially as set forth;" and even these latter 
expressions have, in many cases, been held to limit a claim, 
and sometimes to save it. (C. C., D. Me. July 30, 1898.) 
Putnam, J.] *Simonds Rolling Mach. Co. v. Hathorn Mfg. 

Co., 90 Fed. Pvep. 201. 

2. The "yoke-shaped axle-box pedestals, C," referred to in 
the claim are the pedestals which, in every instance, are de- 
scribed in the specification as extending below the axle-boxes. 
The words "substantially asset forth," with which the claim 
concludes, refer to the specification, and make the description 
of the housings therein contained an essential part of the claim. 
"General language in a claim which points to an element or 
device more fully described in the specification is limited to 
such an element or device as is there described." (Adams 
Elec. Ry. Co. v. Lindell Ry. Co., 40 U. S. App. 482, 512, 23 
C. C. A. 223, 77 Fed. Rep. 432-439; Mitchell v. Tilghman, 19 
Wall. 287; Sterratt v Mfg. Co., 27 U. S. App. 13, 47, 10 C. C. 
A. 216, 61 Fed. Rep. 980.) (C. C. A., 8th Cir. Nov. 28, 
1898.) 

Thayer, J.] * Brill r. 8t. Louis Car Co. ct al, 90 Fed. Rep. 
666. 

3. The words "substantially as specified" have been uni- 
formly held to import into the claim the particulars of the 
specification and the court is not at liberty to disregard what 
the patentee terms one of the most important features of his 
invention without unduly extending the claim. (C. C, D. 
Mass. Feb. 24, 1899.) 

Brown, J.] * Parsons v. Seelye, 92 Fed. Rep. 1005. 



PATENTS. 217 

4. Ex])ress phraseology, commencing with the closing words 
of the claim (substantially as and for the purpose set forth) 
connected through the specifications, with the drawings is as 
effectual as though everything contained in the specification 
and drawing were set out in the claims. On the general and 
natural rules of construction it is impossible to reject what is 
expressl}^ inserted, and clear language must prevail over doubts 
incidentally raised. (C. C, D. Me. Mar. 22, 1.S99.) 

Putnam, .J.] * Adams & Westlake Co. et al. v. E. T. Burrowes 
Co. , 93 Fed. Rep. 462. 

5. If a claim of a patent contain the phrase "substantially 
as described " or its equivalent, the entire specification is en- 
titled to be considered in connection with the claim. (C. C. , 
N. D. Cal. May 22, 1899.) 

Morrow, J.] * Fruit Cleaning Co. v. Fresno Home-Packing 
Co. etal., 94 Fed. Rep. 845. 

VI. Correction of. 

(a) By Certificate of Correction. 

1. As certificates of correction are granted by the office only 
for the purpose of correcting a discrepency between the patent 
as printed and the record, Held, that no mistake was made in 
omitting the place of incorporation of a company which appears 
as assignee of record and to which the patent was granted, and 
a petition requesting a certificate of correction stating that the 
patent should have been issued to said company, "a corpora- 
tion organized under the laws of the state of New Jersey," 
denied, as the uniform practice of the office had been followed. 
(Apr. 4, 1899.) 

DuELL, C] III re Lamson Consolidated Stove Service Co., 66 
MS. Dec. 437. 

2. Where the examiner had criticised one of the claims of an 
applicant, and in view of such criticism applicant had amended 
the claim to read as it appeared in the i)atent. Held, that a 
reissue could not be granted at the expense of the Office, and a 
certificate of correction could not be granted because the patent 
as printed corresponded to the records of the Office, and certifi- 



218 PATENTS. 

cates of correction are granted only to correct an error made by 

the Office. (Sept. 15, 1899.) 

DuELL, C] In re Moses S. Okun, 67 MS. Dec. 429. 

3. It is the practice of the Office to issue certificates of correc- 
tion only for the purpose of making the patent as issued corres- 
pond to the record of the case and not for the purpose of 
correcting mistakes of an applicant. (Apr. 10, 1899.) 
DuELL, C] Ex parte Burson, 87 0. G. 698. 

4. Where the Office in amending a claim literally followed the 
directions given by an applicant, Held, if there is any mistake 
or ambiguity in the claim it cannot be said that such mistake 
was incurred through the fault of the Office, and certificate of 
correction should be refused. Id. 

5. Where the Office did not notify the interested parties that 
the request to issue a patent to an alleged assignee would not be 
granted, because the Office did not consider the instruments as 
conveying such interest as Avould authorize the issuing of the 
patent as requested. Held, that this is not sufficient ground to 
warrant the issue of a certificate of correction, as the parties are 
presumed to know the rules and practice of the Office. (Oct. 5, 
1899.) 

DuELL, C] Ex parte Rosback, 89 0. G. 705. 

6. Certificates of correction of patents are issued only for the 
purpose of making the patent when issued correspond to the 
records of the Office. Id. 

VI. Correction of. 

(6) By Reissue. 

1. If by reason of inadvertence or mistake in the drawings 
or specification, a patent is rendered in part inoperative, and 
the patentee promptly applies for a reissue, and no substantial 
rights are affected, or fraudulent intent charged, the Commis- 
sioner has the right under § 4916 R. S. to cause a new patent 
to issue, and under such circumstances his decision is conclu- 
sive. (C. C. A., IstCir. Feb. 13. 1899.) 

Colt, J.] * Beach v. Hobbs et al. Hobbs et al. v. Beach, 92 
Fed. Rep. 146; 87 0. G. 1961. 

2. Where a reissue was granted to correct the error of a single 



PATENTS. 219 

word in the specification (by changing "hole" to "slot"), and 
a corresponding modification was made in a single feature of 
one of the eleven figures illustrating the patent, the error hav- 
ing been caused by oversight and being in no way connected 
with the gist of the invention, though its adoption rendered the 
machine inoperative (no change was made or needed in the 
claim), Held, that if the patentee made a meritorious in- 
vention, he ought not to lose the benefit of it by reason of 
a defect so narrow and technical. (C. C. A., 1st Cir. ^lar. 
13, 1899.) 

Lowell, J.] *Hart & Hageman INIfg. Co. v. Anchor Electric 
Co. etal, 92 Fed. Rep. 657. 

VII. Limitation of, by Foreign Patent. 

1. Where a French patent was granted for a term of fifteen 
years before the date of application for the United States patent 
for the same invention and the French patent was in full force 
at that date, but lapsed for the non-payment of annuity before 
the United States patent issued. Held, that there was no bar to 
the issue of the United States patent under section 4887, Re- 
vised Statutes. (C. C. A., 2d Cir. Apr. 4, 1899.) 

Shipman, J.] *Welsbach Light Co. v. Apollo Incandescent 
Gaslight Co., et ai, 87 0. G., 1784; 96 
Fed. Rep. 332. 

2. When a foreign patent is allowed to lapse by reason of non- 
compliance with some statutory provision before application is 
made in the United States, the grant of a patent in the United 
States is not prohibited by section 4887 of the Revised Statutes, 
but such patent is invalid under a different section on the 
ground of abandonment of the invention before the application 
was filed. */r/. 

3. "To expire at the same time" in section 4887, Revised 
Statutes, should be taken to mean that the United States patent 
expires at the end of the term prescribed in the i)revious foreign 
patent without regard to mishaps occurring after the apjjlication 
was filed in this country, since the applicant was at that time 
entitled to his patent and could then have obtained it if the 
Office could have been more prompt. */(i. 



220 PATENTS. 

VIII. Reissue. 

Where, 12 years after the grant of a patent, it was held to be 
invalid and was subsequent!}' reissued, and in the meantime and 
prior to the adjudication and reissue, other patents had been 
granted for devices which are covered by the reissue claims, 
which devices have been in extensive public use, Hdd, that in 
view of the intervening private and public rights which have 
sprung up and the unreasonable delay in applying for the re- 
issue, the said reissue must be held to be invalid. (C. C. A., 
3d Cir. Dec. 31, 1898. ) 

AcHESON, J.] * Horn & Brannen Mfg. Co. v. Pelzer, 91 Fed. 
Rep. 665. 

(Butler, J,, dissented on the ground that the decision in 
Maitland v. Mfg. Co., 29 C. C. A. 607, 86 Fed. Rep. 124, 85 0. 
G. 776. Sand. Pat. Dig. 1898, 129, by this Circuit Court of 
Appeals for the second circuit should control, inasmuch as the 
proofs were the same in both cases, and the defendant in the 
present case was associated in the other case. ) 

IX. Valid and Infringed. 

1. The Simonds patents No. 319,754, granted June 9, 1885, 
for improvements in faces for car-axle dies, and No. 419,292, 
granted Jan. 14, 1890, for a method of making rolled-metal 
forgings that are circular in cross-sectional area, Held, valid and 
infringed. (C. C, D. Me. July 30, 1898.) 

Putnam, J.] * Simonds Rolling Mach. Co. v. Hathorn Mfg. 
Co. et «/., 90 Fed. Rep. 201. 

2. Patent No. 398,158, Feb. 19, 1889, to T. B. Jeffery, for 
improvements in velocipedes. Held, valid and infringed. (C. 
C, S. D. N. Y. Nov. 15, 1898.) 

CoxE, J.] * Gormully & Jeffery Mfg. Co. v. Stanley Cycle Mfg. 
Co. etal, 90 Fed. Rep. 279. 

3. Patent No. 309,727, Dec. 23, 1884, to T. F. Morrin and 
W. W. Scott, for improvements in steam generators. Held, 
valid, not anticipated, and infringed as to claim 2. 

Patent No. 463,307, Nov. 17, 1891, to T. F. Morrin for im- 
provements in steam generators. Held, valid, not anticipated, 
and infringed as to claims 1 and 2. 



PATENTS. 221 

Patent No. 463,308, Nov. 17, 1891, to T. F. ]\rorrin, for im- 
provements in sectional casinfrs for steam generators, Held, 
valid, not anticipated and infringed. (C. C, E. D. N. Y. 
Oct. 6, 1898.) 

Thomas, J.] ^Morrinr. Lawler. Same r< a/. Edison Electric 
Illuminating Co. of Brooklyn, 90 Fed. Rep. 
285. 

4'. On the authority of \\'ilgus r. Germain et al., 44 U. S. 
App.; 19 C. C. A. 188; 72 Fed. Rep. 778, that patent to Wil- 
gus. No. 443,734, Dec. 30, 1890, for "improvements in lawn 
sprinklers," was a mere adaptation of the device of the patent 
to Gauthier, No. 386,121, July 7, 1888, Held, that articles made 
in conformity with said Wilgus patent are substantial copies of 
the device of, and infringe said Gauthier patent. (C. C. , S. D. 
Cal.. Nov. 21, 1898.) 
Ross, J.] * Newton Mfg. Co. v. Wilgus, 90 Fed. Rep. 483. 

5. The patent to Brahn No. 248,990, Nov. 1, 1881, for an 
improvement in railway switches (though not of the highest 
order, yet was new and useful and involved invention), Held, 
valid and infringed by the switch bar made under patent No. 
308,378. (C. C. A., 3d Cir. Nov. 28, 1898.) 

AcHESON, J.] * Pennsylvania Steel Co., et al. v. Vermily«, 90 
Fed. Rep. 498. 

6. The patent to King No. 397,296, Feb. 5, 1899, for an 
improvement in compounds to restrain the setting of ])laster, 
Held valid, not anticipated and infringed. (C. C, S. D. N. Y. 
Dec. 5, 18980 

CoxE, J.] *King et al. r. Anderson et al, 90 Fed. Rep. 500. 

7. The patent to Tower No. 378,228, Feb. 21, 1888, for a 
pen-holder with a cork sleeve, Held valid, and infringed. 
(C. C, S. D. N. Y. Nov. 19, 1898.) 

Wheeler, J.] * Tower v. Eagle Pencil Co., 90 Fed. Rep. 663. 

8. The patent to Hayes No. 310,276, Jan. 6, 1885, for an 
improvement in ranges and stoves. Held valid not anticipated 
and infringed. (C. C. A., 8(1 Cir. Nov. 28, 1898.) 
AcHESON, J.] * Thomas Rol^erts Stevenson Co. r. ]\IcFassel, 

90 Fed. Rep. 707. 



222 PATENTS. 

9. The patent to Bisler No. 525,941, Sept. 11, 1894, for an 
apparatus for playing duplicate whist. Held, valid and in- 
fringed as to claims 1, 2 and 4. (C. C, S. D. N. Y. Nov. 

23, 1898.) 

Wheeler, J.] * United States Playing-Card Co. v. Spalding 
etal, 90 Fed. Rep. 729. 

10. The patent to Bell & Tainter, No. 341,214, May 14, 
1886, for an improvement in recording and reproducing speech. 
Held, valid and infringed as to claim 21, on motion for prelim- 
inary injunction. (C. C, S. D. N. Y. Dec. 10, 1898.) 
Lacombe, J.] * American Graphophone Co. v. National Gramo- 
phone Co. et al, 90 Fed. Rep. 824. 

11. The patent to Condict, No. 393,323, Dec. 4, 1888, for an 
improvement in switches for electric motors, Held valid, not 
anticipated and infringed as to claims 20, 21, 22, 27, 28, 29 and 
31, on appeal from an order directing a preliminary injunction. 
(C. C. A., 2d Cir. Dec. 7, 1898.) 

Shipman, J.] * Electric Car Co. of America et al. v. Nassau 
Electric R. Co., 91 Fed. Rep. 142. 

12. The patent to Melvin, No. 412,279, Oct. 8, 1889, for a 
process of manufacturing linoleum floor-cloth, Held, to disclose 
a patentable invention, valid, not anticipated and infringed. 
(C. C, E. D. Penn. Jan. 12, 1899.) 

Dallas, J.] * Melvin et al. v. Thomas Potter, Sons & Co., 91 
Fed. Rep. 151. 

13. The design patented to Hill, No. 27,272, June 29, 1897, 
for a design for a furniture support. Held valid on demurrer. 
(C. C, D. Mass. Dec. 5, 1898.) 

BbgWxX, J.] * Chandler Adjustable Chair & Desk Co. v. Hey- 
wood Bros, et Wakefield Co. , 91 Fed. Rep. 163. 

14. The patent to Bowers, No. 318,859, May 26, 1885, for a 
dredging machine as to claims 9, 10, 11, 12, 16, 22, 25, 53, 54, 
59 and 87; No. 318,860, May 26, 1885, for the art of dredging, 
as to claims 3 and 5, and No. 372,956, Nov. 8, 1887, for an 
excavator, as to claims 1, 12, 13 and 15, Held valid, not antici- 
pated and infringed. (C. C, N. D. Cal. Dec. 12, 1898.) 
Morrow, J.] * Bowers v. San Francisco Bridge Co., 91 Fed. 

Rep. 381. 



PATENTS. 223 

15. The Hochstedt et al. patents, No. 352,869, Nov. 16, 
1886, and No. 354,060, Dec. 7, 1886, and tlie Rettig patent, 
No. 354,935, Dec. 28, 1886, all for improvements in type- 
casting machines. Held valid, not anticipated by the patent to 
Mason, No. 187,880, Feb. 27, 1877, and infringed. (C. C, 
S. D. N. Y., Dec. 16, 1898.) 

Wheeler, J.] * Nelson et al. v. Farmer Type-Founding Co. 
etai, 91 Fed. Rep. 418. 

16. The patent to Hyatt, No. 293,740, Feb. 14, 1884, for an 
improvement in the art of filtration of water. Held valid, and 
infringed on motion for preliminary injunction in each case. 
(C. C, S. D. N. Y. Feb. 26, 1898.) 1st case. (C. C, E. D. 
Mo. E. D. Dec. 27, 1898. ) 2d case. 

Lacombe, J.] *New York Filter Mfg. Co. r. Loomis-Manning 

Filter Co., 91 Fed. Rep. 421. 
Adams, J.] *Ne\v York Filter Mfg. Co. v. Jackson, 91 Fed. 
Rep. 422. 

17. The patent to Warner, No. 565,867, Aug. 11, 1896, for 
a cut-out for electric motors. Held, valid, not anticipated and 
infringed as to claims 1, 2 and 3. (C. C, E. D. Wis. July 5, 
1898.) 

Seaman, J.] * Western Electric Co. v. American Rheostat Co. 
etal.,91 Fed. Rep. 650. 

18. The patent to Huntington, No. 277,134, May 8, 1883, 
for a stone and ore-crushing machine. Held, valid as to claim 1 
and infringed on motion for preliminary injunction. (C. C, S. 
D. N. Y. Jan. 23, 1899.) 

Lacombe, J.] * Huntington Dry Pulverizer Co. v. Newell Uni- 
versal Mill Co., 91 Fed. Rep. 661. 

19. The patent to Bernard, No. 427,220, May 6, 1890, for an 
improvement in pliers. Held, valid and infringed as to claim 1, 
but not infringed as to claim 2. (C. C. A., 2d Cir. Jan. 2, 
1899. ) 

Shipman, J.] * Bridgeport Mfg. Co. et al. v. William Scholl- 
horn Co., 91 Fed. Rep. 775. 

20. The patent to Anderson, No. 250,700, Dec. 31, 1881, and 
the patent to McNutt, No. 378,934, Mar. 6, 1888, both for ma- 



224 PATENTS. 

chines for pointing skewers, construed and Held, valid, the for- 
mer as to claim 1, and the latter as to claim 3. (C. C, E. D. 
Penn. Jan. 24, 1899.) 
Dallas, J.] * American Skewer Co. v. Helms, 91 Fed. Rep. 

784. 

21. The patent to Sprague, No. 324,892, Aug. 25, 1885, for 
an electric railway motor. Held, valid and infringed as to claims 
2 and 4. (C. C, E. D. N. Y. Jan, 24, 1899.) 

Lacombe, J.] *Spragne Electric Ry. and Motor Co. v. Nassau 
Electric Ry. Co., 91 Fed. Rep. 786. 

22. The patent to McEwan et al, No. 492,937, Mar. 7, 1893, 
for an improvement in paper-board, construed and Held, valid 
and infringed. (C. C, D. N. Jer. Feb. 13, 1899.) 
Beadford, J.] * McEwan Bros. Co. v. McEwan et al. 91 Fed. 

Rep. 787. 

23. The patent to Grosselin, No. 377,151, Jan. 31, 1888, for 
a cloth-napping machine, Held, valid and infringed. (C. C. A., 
IstCir. Jan. 30, 1899.) 

Brow^n, J. *Heap v. Greene et al., 91 Fed. Rep. 792. 

24. The patent to Elliott, No. 350,727, Oct. 12, 1886, for a 
folding paper, Held, valid, not anticipated and infringed. (C. 
C, E. D. N. Y. Dec. 9, 1898.) 

Thomas, J.] * Whitney v. Gair, 91 Fed. Rep. 905. 

25. The patent to Grant, No. 554,675, Feb. 18, 1896, for a 
rubber tired wheel. Held, valid, not anticipated and infringed. 
(C. C, S. D. N. Y. Dec. 27, 1898.) 

Thomas, J.] * Rubber Tire Wheel Co. v. Columbia Pneumatic 
Wagon Wheel Co., 91 Fed. Rep. 978. 

26. The reissue patented to Beach, No. 11,167, May 26, 1891 
(original No. 447,225, Feb. 24, 1891), for an improvement in 
machines for attaching stays to the corners of boxes. Held to be 
for a broad invention and entitled to cover known equivalents at 
the date of the patent and infringed as to claims 1, 2 and 3. 
(C. C. A., IstCir. Feb. 13, 1899.) 

Colt, J.] * Beach v. Hobbs et al. Hobbs et al. v. Beach, 92 
Fed. Rep. 146. 



PATENTS. 225 

27. The reissue patent to Earl, No. 11,324, Apr. 18, 1893, 
(original, No. 465,615, Dec. 22, 18U1), for a ventilator and 
combined ventilator and refrigerator ear, construed and Held, 
not invalid because of any expansion i»ver the original patent, 
and infringed by a car made according to patent to Kerl)y, No. 
537,293, Apr. 9*^ 1895. (C. C. A., 9th Cir. Oct. 24, 1897.) 
De Haven, J.] * Graham v. Earl, 82 Fed. Rep. 737; 92 Fed. 

Rep. 155. 

28. The patent to Janney, No. 254.093, Fel). 21, 1882, for an 
improvement in car couplers, Held, valid, not anticipated and 
infringed. (C. C, E. D. Mo., E. D. Feb. 14, 1899. ) 
Adams, .J.] *McCon\vay & Torley Co. v. Shickle, Harrison & 

Howard Iron Co.^ 92 Fed. Rep. 162. 

29. The patent to Barley, No. 256,619, A])r. 19, 1882, for im- 
provements in harrows. Held, valid and infringed. (C. C. , N. 
D. N. Y. Jan. 3, 1899.) 

CoxE, J.] ^ Deere et (d. v. Arnold, 92 Fed. Rep. 186. 

30. The patent to Rood and Vaughan, No. 383,918, June 5, 
1888, for improvements in machines for shaving hides or skins 
covers a meritorious invention, and the claims should be so con- 
strued as to adequately protect the invention, and Held, valid 
and infringed. (C. C, E. D. Penn. Mar. 6, 1899.) 

Dallas, J.] *Rood et al. v. Evans et al, 92 Fed. Rep. 371. 

31. The patent to Schierholz, No. 538,884, May 7, 1895, for 
an ore crusher, Held, to be for a pioneer invention, and there- 
fore entitled to a broad range of equivalents and infringed. 
(C. C, N. D. Col. Jan. 23, 1899.) 

Morrow, J.] *Risdon Iron & Locomotive Wks. v. Trent, 92 
Fed. Rep. 375. 

32. The patent to Cutcheon, No. 384,893, June 19, 1888, 
for improvements in machines for beating out the soles of boots 
and shoes. Held, valid, not anticipated and infringed. (C. C, 
D. Mass. Feb. 9, 1899.) 

Colt, J.] * Tripp Giant Leveller Co. v. Bresnahan et (d., 92 
Fed. Rep. 391. 

33. The reissue patent to Hart, No. 11,395 (original No. 
459,706), Dec. 12, 1893, for electric snap switches, Held, valid, 

15 



226 PATENTS. 

not anticipated and infringed by the switches made in accord- 
ance with the patent to Marshall, No. 547,149, Oct. 1, 1895. 
(C. C. A., 1st Cir. Mar. 13, 1899.) 

Lowell, J.] *Hart & Hegeman Mfg. Co. v. Anchor Electric 
Co. etal, 92 Fed. Rep. 657. 

34. The patent to Chambers, No. 297,671, Apr. 29, 1884, for 
improvements in brick machines, HeM, valid as to claim 24 and 
infringed. (C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] *Penfield r. Chambers Bros. Co., 92 Fed. Rep. 
630. 

35. The patent to Palmer, No. 308,981, Dec. 9, 1884, for a 
machine for sewing and quilting fabrics. Held, valid as to claims 
9, 10, 14, 16, 18, 22 and 24, and infringed. (C. C. A., 1st Cir. 
Mar. 16, 1899.) 

Brown, J.] * Palmer et al. r. John E. Brown Mfg. Co., 92 
Fed. Rep. 925. 

36. The patent to Willcox & Borton, No. 472,094, Apr. 5, 
1892, for machines for making overseams in sewing knit goods, 
construed and Held, valid and infringed as to claims 2 and 5. 
(C. C. A., 2d Cir. Mar. 1, 1899.) 

Lacombe, .J.] *^^'illcox & Gibbs Sewing Mach. Co. v. Merrow 
Mach. Co. et al, 93 Fed. Rep. 215. 

37. The patent to Crissen, No. 513,307, Jan. 23, 1894, for 
window or curtain fixtures. Held, valid and infringed as to all 
of the claims. (C. C, D. Me. Mar. 22, 1899.) 

Putnam, J.] * Adams & Westlake Co. et a!, r. E. T. Burrowes 
Co., 93 Fed. Rep. 462. 

38. The patent to Moore, No. 524,502, Aug. 14, 1894, for 
improvements in hoisting and conveying apparatus employed 
in digging sewer trenches, construed and Held, to disclose pat- 
entable invention and infringed. (C. C., N. D. N. Y. Apr. 
12, 1899.) 

CoxE, J.] * Moore r. Marnell, 93 Fed. Rep. 467. 

39. The patent to Corser, No. 372,062, Oct. 25, 1887, for 
combined metallic buckle and Initton holder. Held, valid and 
infringed. (C. C, D. Ver. Apr. 1, 1899.) 

Wheeler, J.] ^^ Corser v. Brattleboro Overall Co., 93 Fed. 
Rep. 807. 



PATENTS. 227 

40. The patent to Woodward, No. 354,499, Dec. 14, 1886, for 
an improvement in sewing machines, construed, Held, vahd 
and infringed as to claims 4 and 6. (C. C. , D. Me. Jan. 24, 
1899.) 

Putnam, J.] '^-Pentiicket Variable Stitching-Mach. Co. r. 
Jones Special INhich. Co., 98 Fed. Rep. 669. 

41. The patent to Jensen, No. 281,767, July 24, 1883, for a 
can-filling machine. Held, infringed, on motion for preliminary 
injunction. (C. C, N. D. Cal. Mar. 16, 1899.) 

Morrow, J.] * Alaska Packers' Ass'nr. Pacific Stean) Whaling 
Co. etal, 93 Fed. Rep. 672. 

42. The patents to Schultz, Nos. 291,784 and 291,785, Jan. 
8, 1884, for a process of tawing hides and skins, known as 
"chrome tanning," Held, valid, not anticipated and infringed. 
(C. C, D. Mass. Apr. 7, 1899.) 

Colt, J.] * Tannage Patent Co. r. Donallan, 98 Fed. Rep, 
811.' 

43. The patent to Thompson, No. 310,966, Jan. 20, 1885, for 
a roller-coasting structure, construed and Held, valid and in- 
fringed as to claim 1. (C. C. A., 3d Cir. May 1, 1899.) 
AcHESON, J. * Thompson v. Third Avenue Traction Co. et al., 

93 Fed. Rep. 824. 

44. The patent to Hyatt, No. 293,740, Feb. 14, 1884, for an 
improvement in the art of filtering water, Held, infringed, on 
motion for preliminary injunction. (C. C, E. D. ]Mo. E. D. 
Apr. 20, 1899.) 

Ar)A:MS, J.] * New York Filter Mfg. Co. /•. Chemical Bldg. Co., 
93 Fed. Rep. 827. 

45. The patent to Simonds, No. 319,754, June 9, 1885, for 
improvements in dies for forging articles circular in cross-sec- 
tion. Held, valid, not antici])ated and infringed. (C. C. A., 1st 
Cir. Apr. 25, 1899.) 

Colt, J.] *Simonds Rolling-Mach. Co. '•. Hathorn Mfg. Co. 
et al. Hathorn Mfg. Co. et al. ?\ Sinionds Roll- 
ing-Machine Co., 93 Fed. Rep. 958. 

46. The patent to Simonds, No. 419,292, Jan. 14, 1S90, for 



228 PATENTS. 

a methofl of making rolled-metal forgiiigs that are eircular in 
cross-sectional area, IMd, valid, not anticipated and infringed. 

47. The patents to Barrett, Nos. 455,993, July 11, 1891, and 
527,102, Oct. 9, 1894, for lifting jacks. Held, valid and in- 
fringed, the former as to claims 1 and 6, and the latter as to 
claim 19; on motion for }»ieliminary injunction. (C. C, W. 
D. Mich. Aug. 3, 1898.) 

Sevekens, J.] * Duff Mfg. Co. v. Kalamazoo R. R. Velocipede 
& Car Co., 94 Fed. Rep. 154. 

48. The patent to Julius, No. 524,254, Aug. 7, 1894, for im- 
provements in the manufacture of blue coloring matter, Held, 
valid and infringed. (C. C, S. D. N. Y. May 9, 1899.) 
CoxE, J.] '-i'Badische Analin ct Soda Fabrik v. Kalle et ai, 94 

Fed. Rep. 1C3. 

49. The patent to Disbrow and Payne, No. 490,105, Jan. 17, 
1893, for a combined churn and butter worker, being the first 
to combine the double function in a satisfactory manner, is en- 
titled to the liberal construction accorded to pioneer inventions 
and Held, valid and infringed. (C. C. , D. Minn. Feb. 1, 
1899.) 

LocHREN, J.] *0\vatonna Mfg. Co. v. F. B. Fargo & Co., 94 
Fed. Rep. 519. 

50. The patent to Bundy, No. 452,894, May 20, 1891, for a 
workman's time recorder, construed broadly and Held, valid 
and infringed as to claims 3 and 4 by the time recorder made 
under the patent to Watson, No. 515,805, Mar. 6, 1894. (C. 
C. A., 6th Cir. May 2, 1899.) 

LuRTON, J.] * Bundy Mfg. Co. ik Detroit Time Register Co., 
94 Fed. Rep. 524. 

51. The patent to La Due, No. 543,834, July 30, 1895, for a 
fruit-seeding machine, construed and Held, valid, not antici- 
pated and infringed as to claims 1, 2, 3, 4 and 5 by a machine 
made under the patent to Cox, No. 608,108, July 26, 1898, but 
not infringed as to claims 6, 7 and 8. (C. C. , N. D. Cal. 
May 22, 1899.) 

Morrow, J.] * Fruit Cleaning Co. v. Fresno Home Packing 
Co. etal, 94 Fed. Rep., 845. 



PATENTS. '2'2d 

52. The patent to Smith, No. 522,435, July 3, 1894, for im- 
provements in spring-tooth harrow, construed and Held, vaHd 
and infringed as to claims 1 and 2. (C. C, E. D. Penn. ^lay 

26, 1899. f 

Dallas, J.] * Smith cf (if. r. rh-idi, 94 Fed. Rep. 865. 

53. The patent to Tesla, No. 511,559, Dec. 26, 1893, for im- 
provements in electrical transmission of power is not void on its 
face, as covering a mode of operation involving only the func- 
tion of a machine or apparatus, but is for a new method of pro- 
ducing an eletrical result, and the new method is carried out or 
produced by the use of apparatus. (C. C, S. D. N. Y. May 
17, 1899.) ' 

Shipmax, J.] -•= Westinghouse Electric & INIfg. Co. v. Catskill 
Illuminating & Power Co., 94 Fed. Rep. 
868. 

54. The patent to Rawson et al, No. 407,963, July 30, 1889, 
for improvements in incandescent mantles for gaslights, in view 
of prior adjudication. Held, valid and infringed on motion for 
preliminary injunction. (C. C, S. D. N. Y. Apr. 23, 1898.) 
(Injunction dissolved, see supra p. 123.) 

Lacombe, J.] *Welsbach Light Co. v. Rex Incandescent Light 
Co., 94 Fed. Rep. 1004. 

55. The i)atent to Rawson, No. 407,963, July 30, 1889, for 
improvements in incandescent mantles for gaslights. Held, not 
anticipated by the French patent to Welsbach, No. 172,064, 
Nov. 4, 1885, nor the English patent to Welsbach, No. 15,266, 
Dec. 12, 1885, and valid and infringed, on motion for prelimi- 
nary injunction. (C. C, S. D. N. Y. May 26, 1899.) 

Lacombe, J.] * Welsbach Light Co. r. Rex Incandescent 
Light Co., 94 Fed. Rep. 1006. 

56. The patent to Rittig, No. 354,935, Dec. 28, 1886, for im- 
provements in moulds for casting type. Held, not anticipated, 
valid and infringed as to claims 6 and 7, but void as to claims 
4 and 5. (C. C. A., 2d Cir. May 25, 1899.) 

Shipman, J.] * Nelson et al. v. A, D. Farmer & Son Type 
Foundry Co. et al, 95 Fed. Rep. 145. 



230 PATENTS. 

57. The Hochstadt ct al patents, Nos. 352,869, Nov. 16, 
1886, and 354,060, Dec. 7, 1886, for improvements in moulds 
for casting type, Held^ not anticipated, valid and infringed, the 
former as to claims 1, 3 and 4, the latter as to claims 1, 2, 3 
and 4. Claim 6, however, of the former patent is invalid for 
want of invention. */f/. 

58. The patent to Mead, No. 325,430, Sept. 1, 1885, for im- 
provements in buttons, Held^ infringed by the device of the pat- 
ent to Pringle, No. 600,114, on motion for a preliminary injunc- 
tion. (C. C, N. D. N. Y. June 14, 1899.) 

CoxE, J.] * Consolidated Fastener Co. r. Hays et al, 95 Fed. 
Rep. 168. 

59. The patent to Barley, No. 265,619, Apr. 19, 1882, for 
improvements in harrows, Held, not anticipated as to the 5th 
claim by the patent to Wiard & Bullock, No. 229,217, June 22, 
1880. (C. C, N. J). N. Y. June 14, 1899.) 

CoxE, J.] * Deere et al. v. Arnold, 95 Fed. Rep. 169. 

60. The patent to Stanley, No. 323,372, July 28, 1885, for 
a process for manufacturing carbon conductors for incandescent 
lamps. Held, valid and infringed. (C. C, D. N. J. July 14, 
1899.) 

KiRKPATRiCK, J.] * Westinghouse Electric & Mfg. Co. v. 

Beacon Lamp Co. et al. 95 Fed. Rep. 
462. 

61. The patent to Sutton, No. 383,258, May 22, 1888, for a 
machine for removing hairs from fur skins construed and Held, 
valid as to claim 8, and infringed by the device of the patent to 
Jenik No. 557,129, of 1896. (C. 'c, S. D. N. Y. June 13, 
1899.) 

TowNSEND, J.] * Cimiotti Unhairing Co. et al. v. Bowsky, 95 
Fed. Rep. 474. 

62. The patent to Palmer, No. 251,630, Dec. 27, 1881, for a 
bed or mattress supporting frame, construed. Held, valid, not 
anticipated, and infringed. (C. C, D. N. Jer. ) 
KiRKPATRiCK, J.] *Ryan v. Newark Spring Mattress Co., 96 

Fed. Rep. 100. 

63. The patent to Miehle, No. 317,663, May 12, 1885, for 



PATENTS. 231 

improvements in })nnting machines, construed and Held, valid, 

not anticipated and infringed. (C. C, N. D. 111. N. D. July 

27, 1899.) 

Kohlsaat, J.] *Miehle Printing-Prcss & Mfg. Co. v. Camp- 
bell Printing-Press & Mfg. Co., 96 Fed. 
Rep. 226. 

64. The patent to Perkins, No. 560,599, May 19, 1896, for 
an apparatus for repairing asphalt i)avements, Held, valid and 
infringed. (C. C, N. D. 111. N. D. June 27, 1899.) 
KoHLSAAT, J.] * United States Repair & Guarantee Co. r. 

Assyrian Asphalt Co. et cd., 96 Fed. Rep. 
285^ 

65. The patent to Fowler, No. 328,019, Oct. 13, 1885, for 
an improvement in metal cutting saws, construed and Held, 
valid and infringed. (C. C. A., 2d Cir. May 25, 1899.) 
Lacombe, J.] * Thompson ct al. r. N. T. Bushnell Co., 96 

Fed. Rep. 238. 

66. The patent to Rawson, No. 407,963, July 30, 1889, for 
improvements in mantles for incandescent gas lamps. Held, not 
void because of lapse, for failure to pay an annuity of a prior 
French patent for the same invention, ]iending the application 
for the U. S. patent. (C. C. A., 2d Cir. Apr. 4, 1899.) 
Shipman, J.] *Welsbach Light Co. r. Apollo Incandescent 

Gaslight Co^ et al, 87 0. G. 1784. 96 Fed. 
Rep. 332. 

67. The patent to Swett, No. 314,204, Mar. 17, 1885, fur a 
staple fastener for wooden vessels, construed. Held, valid, not 
anticipated and infringed. (C. C, S. D. N. Y. July 29, 
1899. ) 

TowNSEND, J.] *Acme Flexible Clasp Co. r. Cary Mfg. Co., 
96 Fed. Rep. 344. 

68. The patent to Parmly, No. 540,800, June 11, 1895, for an 
electric arc lamp, construed, Held, valid, not anticipated and 
infringed. (C. C, W. D. Penn. May 13, 1899.) 
AcHEsoN, J.] * Elliptical Carbon Co. v. Solar Carbon & Mfg. 

Co. etal, 96 Fed. Rep. 413. 

69. The patent to By water, No. 374,888, Dec. 13, 1887, for 



232 PATENTS. 

improvements in knitted fabrics, Ilelil, valid, not anticipated 
and infringed. (C. C, 8. D. N. Y. July 31, 1899.) 
TowNSEND, J.] ^Hanifen r. Price et al, 96 Fed. Rep. 435. 

70. The patent to Low, No. 238,940, Mar. 15, 1881, for im- 
provements in dentistry, Held, valid, not anticipated and 
infringed. (C. C, S. D." N. Y. Jidy 31, 1899.) 
TowNSEKD, J.] * International Tooth-Crown Co. v. Kyle, 96 

Fed. Rep. 442. 

71. The patent to Anderson, No. 412,155, Oct. 1, 1889, for 
an improvement in electric railway contact devices, construed 
and Held, valid as to claim 8, not anticijjated and infringed. 
(C. C, D. N. Jer. Aug 1, 3 899.) 

KiRKPATRicK, J.] * General Electric Co. r. Railway Electric 
Light & Power Co., 96 Fed. Rep. 563. 

72. The patent to Williames, No. 256,089, Apr. 4, 1882, for 
an improvement in heating apparatus, construed and Held, 
valid, not anticipated and infringed. (C. C. A., 3d Cir. Oct. 
3, 1899.) 

Beadford, J.] *McNeely et al. v. Williames et at, Wilhames 
et al. v. McNeely et al., 96 Fed. Rep. 978. 

73. The patent to Barrett, No. 455,993, July 14, 1891, for an 
improvement in lifting jacks, construed and Held, valid and in- 
fringed. (C. C, D. Mass. Oct. 4, 1899.) 

Putnam, J.] *Duft' Mfg. Co. ;'. Norton, 96 Fed. Rep. 986. 

74. The patent to Buzzell, No. 317,622, May 12, 1885, for a 
tool for grinding and polishing the front of boot and shoe heels. 
Held, valid, not anticipated and infringed. (C. C. A., 1st Cir. 
Sept. 14, 1899.) 

Colt, J.] * Reynolds i: Buzzell, 96 Fed, Rep. 997. 

75. The patent to Marqua, No. 301,908, July 15, 1884, for 
improvements in sending-traps for flying targets. Held, valid 
and infringed. (C. C, D. N. Jer. Oct. 5, 1899.) 

Bradford, J.] * Cleveland Target Co. v. Empire Target Co. 
etal, 97 Fed. Rep. 44. 

76. The patent to Potts and Potts, 322,393, July 14, 1885, 



PATENTS. 233 

for a clay disintegrator, construed, Held, valid and inlVinged. 

(C. C. A.", 6th Cir. Oct. 23, 181)9.) 

Taft, J,] *C. & A. Potts & Co. r. Creager c < (il., !»7 Fed. Ucp. 

78. 
77. The patent to Morrison, No. 428,123, INIay 20, 1890, for 
a fence-Avire coupling, construed and Held, valid and infringed 
b}' the device shown in the patent to Gerard & Lawrence, No. 
575,641, Jan. i9, 1897. (C. C. A., 6th Cir. Oct. 3, 1899.) 
Taft, .J.] ^-^^ Kisinger-Ison Co. r. Bradford Belting Co., 97 Fed. 

Rep. 505. 

X. Valid, but not Infringed. 

1. Assuming the patent No. 325,430, granted Sept. 1, 1885, 
to A. G. Mead, to be valid, yet in view of the limited scope of 
the patent as detined by the prior art, it is not infringed. (C. 
C, D. Mass. Oct. 31, 1898.) 

Colt, J.] * Consolidated Fastener Co. r. Weisner e< a/. Same 
V. Lehr, 90 Fed. Rep. 104. 

2. The patent to J. A. Brill, No. 432,115, July 15, 1890, for 
an improvement in car trucks, construed as to claims 1, 4 and 
6, and Held, limited to a combination the essential element of 
which is the "pedestal which extends below the bottom of the 
axle box," and not infringed. (C. C. A., 8th Cir. Nov. 28, 
1898.) 

Thayer, J.] * Brill r. St. Louis Car Co. et al, 90 Fed. Rep. 
666. 

3. The patent to Munro, No. 298,879, May 20, 1884, for an 
improvement in box trimming and covering machines, construed 
and Held, limited to specific forms of mechanism described and 
claimed and not infringed as to claims 2, 3 and 6. (C. C. A., 
2d Cir. Dec. 7, 1898. ) 

Shipman, J.] * American Box-Mach. Co, v. Hughes ei al., 91 
Fed. Rep. 147. 

4. The patent to Eutebrouk, No. 230,409, July 27, 1880, for 
an improvement in breech-loading firearms, construed and 
Held, valid when limited as it is by the proceedings in the Pat- 
ent Office, and the language of the specification and claim, to 
the functions of the two essential elements of the claim, and not 



234 PATENTS. 

infringed by a device which omits one of these elements. (C. 

C. A., IstCir. Dec. 27, 1898.) 

Colt, J.] * Lovell r. Johnson, 91 Fed. Rep. 160. 

5. The patent to Gillet, No. 247,388, Sept. 20, 1881, for im- 
provements in corn-shellers, Held, valid, but not infringed. 
(C. C. A., 7th Cir. Jan. 3, 1899.) 

BuNN, J.] * Sandwich Enterprise Co. et al. v. Joliet Mfg. Co., 
91 Fed. Rep. 254. 

6. The patent to Michaehs, No. 322,194, July 14, 1885, for 
improvements in the manufacture of chloroform and acetic acid,- 
construed and Held, valid, but not infringed. (C. C. , E. D, 
Mo. E. D. Feb. 7, 1899.) 

Adams, J.] * Michaehs et al. v. Larkin ct al, 91 Fed. Rep. 
778. 

7. The patent to Hipperling, No. 281,508, June 17, 1883, for 
an improvement in machines for double-seaming the head and 
bottonj of rectangular shaped tin cans, inust in view of the 
prior art, be confined to the particular form of construction 
shown, and Held, that the 2d and 3d claims are not infringed 
by a machine made imder the patent to Adriance, No. 472,284. 
(C. C. A., 3d Cir. Jan. 25, 1899.) 

Dallas, J.] *Ginnac^ al. r. IMersereau Mfg. Co., 92 Fed. Rep. 
369. 

8. The patent to Wardwell, No. 480,157, Apr. 2, 1892, for a 
machine for winding cops construed, and. Held, not infringed. 
(C. C. A., 2d Cir. Jan. 25, 1899.) 

Per Curl\m.] * Universal Winding Co. v. Willimantic Linen 
Co., 92 Fed. Rep. 391. 

9. The patent to Chambers, No. 362,204, Mar. 3, 1887, for 
improvements in brick machines, construed and Held, not in- 
fringed as to claims 7, 9, 10, 11 and 12. (C. C. A., 6th Cir. 
Mar. 7, 1899.) 

Taft, J.] *Penfield v. Chambers Bros. Co., 92 Fed. Rep. 
630. 

10. The patents to Green, Nos. 465,407 and 465,432, Dec. 
15, 1891, for an electric railway and means of operating the 
same, if construed to be valid must be confined to specific de- 



PATENTS. 235 

vices disclosed in thcni and IlcJ(h not infringed. (C. C. A., 
6th Cir. Mar. 7, 1899.) 

Taft, J.] * Kelly et al. r. Springfield Ry. Co. d al., 92 Fed. 
Rep. 614. 

11. The patent to Ewig, No. 408,800, Ang. 6, 1889, for a 
waist-band fastener for trousers, contains only one novel feature, 
narrowly construed, and Held, not infringed. (C. C, D. Md. 
Feb. 5, 1899. ) 

Morris, J.] *Blum et al. r. Kerngood, 92 Fed. Rep. 992. 

12. The patent to Dodge and Philion, No. 260,462, July 4, 
1882, for a separal)le pulley, construed and Held, liniited to a 
pulley in which the parts contact at the rim but are separated 
at the hub, and not infringed by a pulley in which the parts 
contact at both rim and liub. (C. C. A., 2d Cir. Dec. 7, 
1898.) 

Lacombe, J.] * Dodge et al. v. Fulton Pulley Co. ct al., 92 
Fed. Rep. 995. 

13. The patent to Warren, No. 589,676, Sept. 7, 1897, for an 
eye-gl iss case. Held, valid, but not infringed. Warren r. Casey 
et al., 91 Fed. Rep. 953, reversed as to decree of invalidity. (C. 
C. A., 3d Cir. May 1, 1899.) 

Kirkpatrick, J.] * Warren v. Casey et al, 93 Fed. Rep. 663. 

14. The patent to Gail, No. 399,867, Mar. 19, 1899, for an 
improvement in woven-wire mattresses and bed-bottoms, con- 
strued and Held, limited by the prior art to the specific form 
shown, and not infringed. (C. C. A., 3d Cir. May 4, 1899.) 
AcHESON, J.] *Ryan v. Runyon et al., 93 Fed. Rep. 970. 

15. The patent to Ryan, No. 403,143, May 14, 1889, for im- 
provements in woven-wire mattresses and bed-bottoms, con- 
strued and Held, limited by the prior art to the specific form 
shown. ^Id. 

16. The patent to Tower, No. 378,223, Feb. 21, 1888, for a 
pen-holder with a cork sleeve, construed and Held, not in- 
fringed. (C. C. A., 2d Cir. Apr. 4, 1899. (Tower v. Eagle 
Pencil Co., 90 Fed. Rep. 662, revenged.) 

Wallace, J.] * Tower v. Eagle Pencil Co. 94 Fed. Rep. 361. 

17. The patent to Bauer, No. 305,882, Sept. 20, 1884, for a 



236 PATENTS. 

■watchman's time-detector, construed, limited and Held^ not in- 
fringed by the time-recorder made under the patent to A^^atson, 
No. 515,805, Mar. 6, 1894. (C. C. A., 6th Cir. May 2, 1899.) 

LuRTox, J.] *Bundy Mi'g. Co. v. Detroit Time-Register Co., 
94 Fed. Rep. 524. 

18. The patent to Perkins, No. 501,537, July 18, 1893, for 
an improved method of repairing asphalt pavements, an essen- 
tial feature of which consists in the perfect commingling of old 
and new material in the process of repairing, is not anticipated 
by the so-called Crochet process in which the old material is 
removed and new material put in its place, and Held, not 
infringed by process in which no such commingling is 
attempted, but the old material is removed, the depression 
carefully cleaned and coated with cement to cause adhesion 
with the ncAV material which is then added. (C. C. A., 2d 
Cir. May 25, 1899.) 

Shipman, J.] * United States Repair & Guaranty Co. et al. v. 
Standard Paving Co,, 95 Fed. Rep. 137. 

19. The patent to Brooks, No. 454,845, June 30, 1891, for 
improvements in typewriting machines, if valid must, in view 
of the state of the art, be limited as to claims 5, 6, 7, 8 and 9, 
to the precise construction shown and described. (C. C. , D. 
N. J. June 20, 1899.) 

AcHESON, J.] * Union Writing Mach. Co. v. Domestic Sewing 
Mach. Co., 95 Fed. Rep. 140. 

20. The patent to Rauh, No. 347,442, Aug. 17, 1886, for a 
combined bathing shoe and stocking, construed and in view of 
the state of the art, Held^ limited to the precise construction 
shown and not infringed. (C. C, S. D. N. Y. May 26, 1899.) 
Shipman, J.] *S. Rauh & Co. v. Guinzburg, 95 Fed. Rep. 159. 

21. The patent to Huntington, No. 277,134, May 8, 1883, for 
a crushing mill, construed and Held^ not infringed. (C. C. A., 
3d Cir. July 6, 1899.) 

Dallas, J.] *Whitaker Cement Co. et al. v. Huntington Dry 
Pulverizer Co. et cd., 95 Fed. Rep. 471. 

22. Claim 1 of Letters Patent No. 364,161, issued May 31, 
1887, to George H. Cushman, for improvement in paper-box 



PATENTS. 237 

machines, Held^ to be limited in view of the prior state of the 
art to the specitic form of mechanism shown and described, and 
as so construed not infringed. (C. C. A., 1st Cir. June 1, 
1899. ) 

Putnam, J.] ^Cushman Paper-Box Mach. Co. v. (ioddard ci 
ai, 88 0. G. 2410, 95 Fed. Rep. (UM. 

23. The patents to ^hicCoU, Nos. 570,259 and 570,2(10, Oct. 
27, 1896, for improvements in lappet looms, construed and 
Held, not infringed. (C. C. A., 1st Cir. May 31, 1899.) 
Colt, J.] ^JNIacColl v. Knowles Loom Works, 95 Fed. Rep. 

982. 
* MacColl V. Cromjiton Loom ^^'orks, 95 Fed. Rep. 
987. 

24. The patents to Stokes, Nop. 376,400, Jan. 10, 1888, 
397,254, Feb. 5, 1889, for rasp-cutting machines, and No. 
383,999, June 5, 1899, for a rasp as an improved article of man- 
ufacture, construed, and Held, valid, luit not infringed. (C. 
C, U. N. Jer.) 

KiRKPATRicK, J.] ^'Stokes Bros. Mfg. Co. v. Heller f< cd., 96 
Fed. Rep. 104. 

25. The patent to Miehle, No. 322,309, July 14, 1885, for 
improvements in printing njachines, construed, and Held, not 
infringed as to claims 1, 2 and 4. (C. C, N. D. 111. N. D. 
July 27, 1899. ) 

KoHLSAAT, J.] *]\Iiehle Printing Press & Mfg. Co. v. Camp- 
bell Printing Press cS: Mfg. Co., 96 Fed. Rep. 
226. 

26. The patent to Westinghouse, Jr., No. 538,001, Apr. 23, 
1895, and the patent to D'ixon, No. 382,032, May 1, 1888, 
both for improvements in air-brakes for railroad cars, construed, 
and Held, limited to the specific devices shown and dcs('ril)ed, 
and not infringed. (Lacombe, J., dissenting as to Westing- 
house patent.) (C. C. A., 2d Cir. July 18, 1899.) 
Shipmax, J.] * Westinghouse Air-Brake Co. v. New York Air- 

Brake Co. et (d., 96 Fed. Rep. 991. 

XL Validity Not Determined, Not Infringed. 

1. It is unnecessary to determine whether, in view of certain 



238 PATENTS. 

exhibits, it involved invention to produce the valance of the 3d 
claim of the patent to Palmer, No. 474,997, May 17, 1892, for 
an improvement in woven valances for hammocks, for the rea- 
son that the claim cannot be broadened to cover the alleged in- 
fringing article without including the said exhibits also. The 
bill is dismissed. (C. C, 8. D. N. Y. Nov. 15, 1898.) 
CoxE, J.] * Palmer et al. r. De Yongh, 90 Fed. Rep. 1898. 

2. Claim 8 of the patent to Alexander McTammany, No. 
290,697, Dec. 25, 1883, which relates to a device for "feeding, 
winding and guiding the perforated music sheets " used in auto- 
matic musical instruments, does not cover a primary invention, 
and the complainant is therefore not entitled to a broad range of 
equivalents, and since defendant's device differs so radically 
from complainant's he cannot be held as an infringer, even if 
the claim wxre entitled to a broad interpretation. The bill is 
dismissed. (C. C, S. D. N. Y. Nov. 15, 1898.) 

CoxE, J.] ^McTammany et al v. Paillard, 90 Fed. Rep. 283. 

3. The facts disclosed by the file-wrapper in the Norton pat- 
ent, No. 267,214, Nov. 7, 1882, for improvements in can-head- 
ing machine, show that it is not for a primary invention, and it 
must therefore be strictly construed. Machines made under the 
patent to Mathias Jensen, No. 443,445, Dec. 23, 1890, for ma- 
chine for capping and crimping cans, does not infringe the Nor- 
ton patent; nor do such machines infringe the following pat- 
ents: Norton and Hodgson, No. 274,363, Mar. 20, 1883; Norton 
and Hodgson, No. 294,065, Feb. 26, 1884; Jordan, No. 322,- 
060, July 14, 1885. (C. C. A., 9th Cir. Oct. 24, 1898.) 
Morrow, J.] * Norton et al. r. Jensen, 90 Fed. Rep. 415. 

4. The patent to Arbogast, No. '260,819, July 11, 1882, for 
an improvement in the method of manufacturing glass ware, 
construed and Held, not infringed. (C. C. A., 3d Cir. Dec. 
6, 1898.) 

Dallas, J.] =i= United States Glass Co. v. Atlas Glass Co. et al., 
90 Fed. Rep. 724. 

5. The patent to Cushman, No. 364,161, May 31, 1887, for 
an improvement in paper-box machines, construed, and in view 
of the prior state of the art, limited to the specific mechanism 



PATENTS. 239 

shown and described, and llchJ^ \wi infringed. (C. C, D. ISIass. 
Dec. 5, 1898.) 

Colt, J.] *Cnshnian Paper-Box Maeh. Co. r. CJoddard ei a/. , 
90 Fed. Rep. 727. 
t). The patent to Rice, No. 448,260, Mar. 17, 1891, for an 
improvement in motor suspension for railway cars. Held, not 
infringed by the motor suspension made in accordance with the 
patent to Uebelacker, No. 554,353, Feb. 11, 1896, or the patent 
to Short, No. 546,360, Sept. 17, 1895. (C. C. A., 1st Cir. 
Jan. 26, 1899.) 

Colt, J.] * Thomson-Houston Electric Co. v. Athol and 
Orange St. Ry. Co., 91 Fed. Rep. 767. 

7. The patent to Barnhart, No. 411,368, Sept. 17, 1889, for 
improvements in means for capping and sealing milk bottles, 
construed and Held, not infringed. (C. C. A., 7th Cir. Feb. 
7, 1899.) 

Per Curiam] * Thatcher JMfg. Co. v. Creamery Package Mfg. 
Co. etal, 91 Fed. Rep. 919.' 

8. The patent to Smith, No. 233,035, Oct. 5, 1880, for an 
improved mowing machine. Held, not infringed. (C. C. A., 
7th Cir. Feb. 16, 1899.) 

Woods, J.] * Wilson et (d. r. McCormick Harvester Mach. Co., 
92 Fed. Rep. 167. 

9. The patent to Roosevelt, No. 215,837, May 27, 1879, for 
an improvement in telephone switches, Held, to be for a narrow 
invention at most and not infringed. (C. C. A., 7th Cir. Feb. 
7, 1899.) 

Woods, J.] * Western Electric Co. r. Western Tel. Const. Co., 
et(d., 92 Fed. Rep. 181. 

10. The patent to Palmer, No. 271,510, Jan. 30, 1883, for an 
improvement in hammocks or bed-bottoms, claims 1 and 2 of 
Avhich have for their fundamental characteristic suspension 
loops formed of the unwoven war}) threads of the faliric, con- 
strued and Held, not infringed by a hammock, the suspension 
loops of which are made of the completely woven fabric. 
Claim 4, covering the ]»illow ])ocket, Held, to be for the specific 
construction of such pocket as described in the patent, and not 
infringed. (C. C, E. D. Pemi. Feb. 28, 1899.) 

Dallas, J.] * Palmer r. Knight, 92 Fed. Rep. 365. 



240 PATENTS. 

11. The patent to Warren, No. 327,626, Oct. 6, 1885, for a 
method of attaching stiffenings for dress waists, is not void on 
its face for want of novelty and invention. (C. C. , D. Conn. 
Feb. 22, 1899.) 

TowNSEND, J.] * Warren Featherbone Co. r. ^^'arner Bros. Co., 
92 Fed. Rep. 990. 

12. The patent to WiUiams & Lade, No. 439,920, Nov. 4, 
1890, for an improvement in buttons, construed and Held, not 
infringed. (C. C, D. Ky. June 3, 1899.) 

EvAxXS, -J.] ^= Patent Button Co. r. Pilcher, 95 Fed. Rep. 479. 

13. The patent to Hawley, No. 447,179, Feb. 24, 1991, for 
an improvement in furnaces if valid, must be limited as to 
claim 1, to the specific devices enumerated, and Held, not in- 
fringed. (C. C, D. Mass. Aug. 7, 1899.) 

Colt, .J.] '-J^ Hawley Furnace Co. of N. E. r. Braintree & W. 
St. Ry. Co., 96 Fed. Rep. 221. 

14. The patent to Ericson, No. 491,012, Jan. 31, 1893, for a 
bicycle bell. Held, limited by specification and not infringed. 
(C.'C, D. Mass.) 

Brown, J.] * Nutter et al, v. Brown et al, 96 Fed. Rep. 229. 

15. The patent to Fay, No. 319,215, June 2, 1885, for spring 
calipers and dividers, Held, not infringed. (C. C, D. Mass. 
July 29, 1899.) 

Brown, J.] *Starrett v. J. Stevens Arms & Tool Co. Same v. 
Athol Mach. Co., 96 Fed. Rep. 244. 

16. The patent to Smith, No. 395,668, Jan. 1, 1889, for a 
shoedast, construed as to claim 2 and Held, not infringed. (C. 
C, D. Mass. July 28, 1899.) 

Brown, J.] * Miller v. Mawhinney Last Co., 96 Fed. Rep. 
248. 

17. The patent to Richardson, No. 412,296, Oct. 8, 1889, for 
improvements in fastenings for gloves and other articles, con- 
strued and limited to the precise form shown and described and 
Held, not infringed by the fastener of the patent to Adams, No. 
566,731, Sept. 1, 1896. (C. C. A., 1st Cir. May 26, 1899.) 
Putnam, J.] *Ball & Socket Fastener Co. v. C. A. Edgarton 

Mfg. Co., 96 Fed. Rep. 489. 



PATENTS. 241 

18. The patents to Gassett, No. 233,746, Oct. 20, 18S0, and 
No. 246,492. Aug. 30, 1881, for electric railway signalling ap- 
paratus, limited to precise construction shown and Held, not 
infringed. (C. C. A., 3d Cir. Sept. 13, 181)9.) 
KiRKPATRicK, J.] '!= Union Switch & Signal Co. et al. v. Phila- 
delphia & R. R. Co. et al, 96 Fed. Rep. 
761. 

19. The Gassett c^ Fisher patent, No. 227,102, May 4, 1880, 
and the patent to Means, No. 273,377, Mar. 6, 1883, for con- 
nectors for electric track circuits. Held, not infringed. */(^/. 

20. The patent to Jones, No. 404,414, June 4, 1889, for a 
process of mixing molten metal, Held, not infringed. (C. C. 
A., 3d Cir. Aug. 21, 1899.) 

KiRKPATRiCK, J.] * Cambria Iron Co. v. Carnegie Steel Co., 
Lim., 96 Fed. Rep. 850. 

21. The patent to Hebbard, No. 371,839, Oct. 1887, for im- 
provements in target- traps construed, and if it is to be sustained 
at all in view of the prior art must be limited to the precise 
construction shown and described, and Held, not infringed. 
(C. C, D. N. Jer. Oct. 5, 1899.) 

Bradford, J.] * Cleveland Target Co. v. Empire Target Co. 
et a!., 97 Fed. Rep. 44. 

22. The design patent to Williams, No. 30,147, Feb. 7, 1899, 
for a fixture for generating and burning gas from liquid hydro- 
carbons. Held, not infringed. The patent to ^^'illiams, No. 
606,435, June 28, 1898, for improvements in gas-generating gas 
fixtures, construed, and Held, not infringed. (C. C. A., 7th 
Cir. Oct. 3, 1899.) 

Woods, J.] * Magic Light Co. r. Economy Gas-Lamp Co., 97 
Fed. Rep. 87. 

23. The patent to Rickard & Long, No. 604,338, May 17, 
1898, for an improvement in the art of maturing tobacco 
leaves, construed, and Held, not infringed. (C. C, D. Conn. 
Aug. 28, 1899.) 

Tow>rsEND, J.] * Rickard et al. v. Du Bon, 97 Fed. Rep. 96. 

24. The patent to Roulstone, No. 508,557, Nov. 14, 1893, for 
adjustable supports for school furniture, construed and limited 

* 16 



242 PATENTS. 

to exact devices shown, and Held, not infringed. (C. C, D. 
Conn. Oct. 11, 1899.) 

TowNSEND, J.]- * Chandler Adjustal)le Chair ct Desk Co. v. 
Town of Windham, 97 Fed. Rep. 107. 
25. The patent to Coburn, No. 365,240, June 21, 1887, for 
an improved trolley-track, construed, and without determining 
the question of invention. Held, not infringed. (C. C. A., 1st 
Cir. Sept. 14, 1899.) 
Putnam, J.] * Coburn Trolley-Track Mfg. Co. r. Chandler «« 

a/., 97 Fed. Rep. 333. 
XII. Void in Whole or in Part. 

1. The patent to McKee & Harrington, No. 506,430, Oct. 10, 
1893, for "improvements in wood rims for bicycles," Held, to 
be anticipated as to claims 1 and 4 by prior public use and 
prior art. 

The patent to Marble, No. 547,732, Oct. 8, 1895, for im- 
provements in bicycle wheels, the tongue and groove-joint in 
the rim of which was the sole feature for which novelty was 
claimed. Held, anticipated as to claims 1 and 2 by prior publi- 
cations and letters patent. (C. C, E. D. Wis. Nov. 7, 1898.) 
Seaman, J.] * Indiana Novelty Mfg. Co. v. Crocker Chair Co. 
Same v. Smith Mfg. Co., 90 Fed. Rep. 488. 

2. The patent to Laura A. Fry, No. 399,029, Mar. 5, 1889, 
for an improvement in the art of decorating pottery ware. Held, 
to be void for lack of patentable novelty and for anticipation. 
(C. C, S. D. Ohio, W. D. Dec. 2, 1898. ) 

Taft, .J.] * Fry v. Rookwood Pottery Co. et al., 90 Fed. Rep. 
495. 

3. The patent to J. A. Brill, No. 432,115, July 15, 1890, for 
an improvement in car trucks. Held, anticipated as to claim 3 
by the patent to \\'oodbury, 40,008, May 30, 1865. (C. C. A., 
8th Cir. Nov. 28, 1898.J 

Thayer, J.] * Brill r. St. Louis Car Co. et ah, 90 Fed. Rep. 
6G6. 

4. The design patent to Cary, No. 28,142, Jan. 11, 1898 (ap- 
plication filed Oct. 15, 1894), for a box-fastener, Held, antici- 
pated by (article of manufacture) }>atent to the same inventor, 



PATf:NTS. *J4.'> 

Cary, No. 450,75;?, Apr. 21, ISDl, fur tlu- same suhjoct-mattcr, 
granted more than two years prior to tlie filing date of the aj*- 
plication for the desij^n ])ati'nt. (C. C, S. D. N. Y. Nov. 22, 
1898.) 

Wheeler, J.] *Cary Mfg. Co. r. Neal rt al., HO Fed. Kep. 
725. 

5. The patent to Palmer, No. 493,220, Mar. 7, 189o, for a 
fabric made of elastic and impervious material, such as rubber. 
Held, void on the ground that such fabric constituted the 
essential feature of the invention covered by patent No. 489,- 
714, Jan. 10, 1893, to the same patentee, for a rubber tube for 
pneumatic and other purposes. 

The patent to Huss, No. 539,234, May 14, 1895, for the same 
fabric, Held, void for the same reasons, on prior patent to Huss, 
No. 495,975, April 25, 1S93, for improvement in ]meumatie 
tires. 

Suit was l»rought under R. S. § 4918, to determine priority of 
invention between the above noted patents, but as both were 
declared void, it was held that determination of priority was 
unnecessary. (C. C. A., 6th Cir. Dec. 5, 1898.) 
Severexs, J.] * Palmer Pneumatic Tire Co. r. Lozier, 90 Fed. 
Rep. 732. 

6. The patent to Cogswell, No. 362,938, May 17, 1887, for 
apparatus for cooling saline soluiions, Held, void, in view of 
prior art. (C. C. A., 6th Cir. Nov. 28, 1898.) 

Taft, J.] * Solva}- Process Co. r. Michigan Alkali Co. cf al., 
90 Fed. Rep. 818. 

7. The patent to Falk, No. 545,040, Aug. 20, 1895, for an 
improvement in rail-joints and methods of forming the same, 
Held, void, for want of patentable invention and anticipation. 
(C. C, E. D. Mo. E. I). Jan. 10, 1899.) 

Adams, J.] *Falk Mfg. Co. r. Missouri Ry. Co. ct al., 91 Fed. 
Rep. 155. 

8. The patent to Kenney, No. 549,370, Nov. 5, 1895, for a 
device for holding woven wire fabrics, is for a mechanical con- 
ception and appliance ])ure and simple, discloses no patentable 
invention and is void. (C. C, D. Mass. Dec. 8, 1898.) 
Aldricii, J.] * Kenney r. Bent, 91 Fed. Rep. 259. 



244 PATENTS. 

9. The patent to Cobnrn, No. 365,240, June 21, 1887, for a 
trolley track, Held, void as to claim 1, for lack of patentable in- 
vention. (C. C, D. Mass. Dec. 2, 1898.) 

Aldeich, J.] *Coburn Trolley-Track Mfg. Co. v. Chandler e< 
al, 91 Fed. Rep. 260. 

10. The patent to Bragg, No. 173,261, Feb. 8, 1876, for an 
electro-magnetic power generator. Held, void as to claim 2 for 
want of invention. (C. C, N. D. 111. Nov. 28, 1898.) 
Grosscup, J.] *Ross V. City of Chicago, 91 Fed. Rep. 265. 

11. The patent to Warren, No. 589,676, Sept. 7, 1897, for a 
spectacle case. Held, void for want of invention. (C. C. , E. D. 
Penn. Feb. 2, 1899.) (See Patents. Valid but not in- 
fringed, § 13.) 

Dallas, J.] * Warren v. Casey et al, 91 Fed. Rep. 653. 

12. The patent to Way, No. 593,954, Nov. 16, 1897, for a 
chest and neck protector. Held, void for want of invention. (C. 
C, E. D. Penn. Jan. 18, 1899.) 

Dallas, J.] *Way v. McClarin, 91 Fed. Rep. 663. 

13. The reissue patent to Stieringer, No. 11,478, Mar. 12, 
1895 (original No. 259,235, June 6, 1882), for an improvement 
in electrical fixtures, Held, void as to claim 1 as not being sup- 
ported bj" the claims and specification of the original patent 
and for unreasonable delay in applying for reissue. (C. C. A., 
3dCir. Dec. 21, 1898.) 

Acheson, J.] *Horn & Branner t;. Pelzer, 91 Fed. Rep. 665. 

14. The patent to Lettelier, No. 482,484, Sept. 13, 1892, for 
a machine for making box binding channel strips, construed 
and Held, void for want of invention. (C. C, S. D. Cal. 
Jan. 30, 1899.) 

Wellborn, J.] * Lettelier v. Mann et al, 91 Fed. Rep. 909. 

15. The patent to Lettelier, No. 549,375, Nov. 5, 1895, for 
an improvement in box machines, Held, void on account of 
prior public use, of more than two years. (C. C. , S. D. Cal. 
Jan. 30, 1899.) 

Wellborn, J.] * Lettelier v. Mann et al, 91 Fed. Rep. 917. 

16. The patent to Schrei, No. 547,185, Oct. 1, 1885, for an 



PATKNTS. 245 

improvement in refrigerator crates, Held, void for lack of in- 
vention. (C. C. A., 7th Cir. Feb. 1(5, 1809.) 
BuNX, J.] *Schrei d air. Morris etal., 91 Fed. Kep. 992. 

17. The patent to Jackson and Piatt, No. 429,580, Jnne 3, 
1890, for a button, construed and Held, not infringed by a 
button made under the patent of Shepley, No. 548,143, Oct. 15, 
1895, or if construed to cover the Shipley button then it is void 
for lack of novelty. (C. C, D. Conn. Jan. 24, 1899.) 
TowxsEXD, J.] * Patent Button Co. v. Scovill Mfg. Co., 92 

Fed. Rep. 151. 

18. The patent of Gaitley, No. 338,506, Mar. 23, 1886, for a 
bail for lifting and carrying kettles, Held, void for want of 
invention. (C. C, N. D. N. Y. Feb. 27, 1899. ) 

CoxE, J.] * Gaitley i: Greene, 92 Fed. Rep. 367. 

19. The patents to Wardwell, No. 480,158, Aug. 2, 1892, for 
a method of winding cops, and No. 486,745, Nov. 2, 1892, for a 
cop which is the product of such process, Held, void for lack of 
novelty. (C. C. A., 2d Cir. Jan. 25, 1899.) 

Per Curiam.] * Universal Winding Co. r. Willimantic Linen 
Co., 92 Fed. Rep. 391. 

20. The patents to Chambers, Nos. 207, 343, Aug. 27, 1878, as 
to claim 6, 297,675, Aug. 29, 1884, as to claim 2 and 275,467, 
Apr. 10, 1883, as to claim 1. Held, void for lack of invention. 
(C. C. A., 6th Cir. Mar. 7, 1899.) 

Taft, J.] ^Penfield v. Chambers Bros. Co., 92 Fed. Rep. 630. 

21. The patent to Loewenbach, No. 390,087, Sept. 25, 1888, 
for an improvement in receipt and record books. Held, void for 
want of invention. (C. C. A., 7th Cir. Feb. 23, 1899.) 

Per Curiam.] * Loewenbach v. Hake-Stirn Co. etal., 92 Fed. 
Rep. 661. 

22. The patent to Warren, No. 389,993, Sept. 25, 1888, for 
an improved dress or garment stay. Held, void for want of 
novelty. (C. C, D. Conn. Feb. 22, 1899.) 

TowxsEXD, J.] * Warren Fcatherbone Co. v. Warner Bros. 
Co., 92 Fed. Rep. 990. 

23. The patent to Parsons, No. 386,108, Aug. 9, 1887, for a 
machine for cutting leather or other materials, construed and 



246 PATENTS. 

Held., invalid as to claims 3 and 4 and not infringed as to claim 

5. (C. C, D. Mass. Feb. 24, 1899.) 

Brown, .J.] * Parsons i'. Seelye, 92 Fed. Rep. 1005. 

24. The patent to Palmer, No. 272,311, Feb. 13, 1883, for 
improvements in hammocks, Hdd, to be void as to claims 4 and 
8, unless construed as limited to the exact construction set forth 
in the specification and claims, in wiiich case they are not 
infringed. (C. C. A., 2d Cir. Mar. 1, 1S99.) 

Per Curiam.] * Palmer r. Curnen et a/., 93 Fed. Rep. 464. 

25. The patent to Smith, No. 315,672, Apr. 14, 1885, for an 
improvement in loops for bridles. Held, void for lack of inven- 
tion. (C. C, N. D. N. Y. Apr. 12, 1899.) 

CoxE, -J.] * Smith /•. Maxwell, 93 Fed. Rep. 466. 

26. The patent to Ewig, No. 408,300, Mar. 9, 1890, for an 
improved waistband fastener, Held, void for anticipation and 
lack of invention. (C. C. A., 7th Cir. Feb. 7, 1899.) 
Woods, J.] * Rubens et al. v. Wheatfield, 93 Fed. Rep. 677. 

27. The patent to Corser, No. 366,621, July 12, 1887, for im- 
provements in overalls, Held, void for want of invention. (C. 
C, D. Ver. Apr. 1, 1899.) 

Wheeler. -T.] * Corser r. Brattleboro Overall Co., 93 Fed. 
Rep. 805. 

28. The patent to Corser, No. 364,219, June 7, 1887, for 
improvements in coats and methods of niaking them, Held, void 
as to all but the 3d claim for want of invention. (C. C, D. 
Ver. Apr. 1, 1899.) 

^^'HEELER, J.] * Corser r. Brnttlelioro Overall Co., 93 Fed. 
Rep. 809. 

29. The patent to Christy, No. 532,444, Jan. 15, 1895, for a 
bicycle saddle. Held, void for lack of invention. (C. C. A., 4th 
Cir. May 2, 1899.) 

GoFF, J.] * Christy et al. v. Hygeia Pneumatic Bicycle Saddle 
Co.,' 93 Fed. Rep. 965. 

30. The patent to Wohlfarth, No. 543,072, July 23, 1895, for 
an improvement in brake-shoes, Held, void for want of inven- 
tion. (C. C, N. D. N. Y. Apr. 12, 1899.) 

CoxE, J.] *Lappin Brake-Shoe Co. r. (V)rning Brake-Shoe 
Co., 94 Fed. Rep. 162. 



PATENTS. 247 

31. The patent to Lohbiller, No. 49(),0o8, A])r. 25, 189H, r..r 
improvements in safety valves, Held, void for lack of invention. 
(C. C. A., 1st Cir. May 4, 1899.) 

PTTTNA^f, J.] * Crosby Steam Gage c'e Valve Co. r. Asliton 
Valve Co., 94 Fed. Hep. 51(). 

82. The patent to Lyons, No. 578,789, Dec. 22, 189G, for im- 
provements in hat boxes or trunks, IlchJ, void on its face for lack 
of patentable invention. (C. C, S. D. N. Y. May 28, 1899. ) 
Shipman, J.] --Lyons r. Bishop etal, 95 Fed. Rep. 154. 

38. The patent to Maier, No. 803,393, Apr. 12, 1884, for a 
spring l)ed-bottom, Held, void on the ground of abandonment 
of invention as shown by the record, and also that the claims 
cover an unpatentable aggregation. (C. C, D. N. J. May 25, 
1899.) 
Gray, J.] ^ Maier et al. v. Bloom et nl, 95 Fed. Rep. 159. 

34. The reissue patent to Hedbavny, No. 11,079, May 27, 
1890, (original No. 408,879) for a machine for removing hairs 
from fur skins. Held, void as to claims 1 and 2 for want of in- 
vention; claim 8, if valid, must be limited to the precise con- 
struction shown, and neither it nor claim 4 is infringed by the 
patent to Jenik, No. 557,129, of 189G. (C. C, S. D. N. Y. 
June 18, 1899.) 

TowNSEND, J.] *Cimiotti Unhairing Co. et <d. r. Bowsky, 95 
Fed. Rep. 474. 

35. The design patent to Sagendorph, No. 17,235, for a de- 
sign for metallic siding for buildings. Held, void as anticipated 
by the patent to Hardy, No. 168,991, .Tune, 1875. (C. C, E. 
D. Penn. July 10, 1899.) 

!McPhersox. J.] ^Sagendorph r. Hughes, 95 Fed. Rep. 478. 

86. The patent to Baker, No. 437,961, Oct. 7, 1890, for an 
improvement in trolley devices for electric railways. Held, an- 
ticipated by prior patents for throwing glass Ijalls, and void. 
(C. C, D. N. J. July 7, 1899.) 

KiRKPATRUK, J.] * Thomson-Houston Electric Co. r. Rahway 
Electric Light c^- Power Co., 95 Fed. 
Rep. 660. 

87. The patent to Rulifson, No. 864,608, June 7, 1SS7, for 



248 PATENTS. 

improvements in bean-harvesters, construed in view of the 
prior state of the art and, Held, void as to claims 1, 3, 4, 7, 8 
and 9, for lack of invention. (C. C, N. D. N. Y. July 6, 

1899.) 

CoxE, J.] *Rulifson et al v. Johnson, 95 Fed. Rep. 825. 

38. The patent to Shoe, No. 558,218, Apr. 14, 1896, for im- 
provements in bicycles saddles, Held, void for lack of patent- 
able invention. (C. C, E. D. Penn. Aug. 9, 1899.) 

Gray, J.] *Shoe v. Gimbel et al, 96 Fed. Rep. 96. 

39. The patent to Stokes, No. 408,936, Aug. 13, 1889, for a 
method of forming teeth on a rasp blank, Held, void as covering 
the mechanical operation or function of a machine. (C. C. , D. 
N. Jer.) 

KiRKPATRicK, J.] * Stokes Bros. Mfg. Co. v. HeWer et al. , 96 
Fed. Rep. 104. 

40. The patent to Orr, No. 456,202, Apr. 30, 1890, for 
improvements in fire proof buildings, construed and Held, void 
for want of invention in view of the prior art. (C. C. , E. D. 
Penn. Aug. 7, 1899.) 

McPherson, J.] *New Jersey Wire-Cloth Co. v. Merrill et cd., 
96 Fed. Rep. 216. 

41. The patent to Lawrence, No. 295,180, May 18, 1884, for 
a process of treating milk, construed and Held, void for lack of 
patentable invention and for anticipation. (C. C. , N. D. 111. 
N. D. July 27, 1899. ) 

KoHLSAAT, J.] *Burrell et al. v. Elgin Creamery Co., 96 Fed. 
Rep. 234. 

42. The patent to Perkins, No. 501,537, July 18, 1893, for 
an improvement in the method of repairing asphalt pavements. 
Held, void for anticipation. (C. C, N. D. Ill, N. D. June 7, 
1899. ) 

KoHLSAAT, J.] * United States Repair & Guaranty Co. v. 
Assyrian Asphalt Co. et al. , 96 Fed. Rep. 
235. 

43. The patent to Leslie, No. 581,123, Apr. 20, 1897, for an 
improvement in temporary binders, known as " jie^'P^tual 
ledgers," construed and Held, void as to claims 8 to 13, inclu- 



PATEXTS. 24*.) 

sive, for lack of patentable invention. (C. C, X. D. 111. X. I). 
June G, 1899.) 

KoHLSAAT, J.] -■^William Mann Co. v. Hoffman, 9G Fed. Rep. 
237. 
44. The patent to Davey, No. 555,434, Feb. 25, 1S96, for an 
improvement in pegging-maebines, Held, void as to claims 1, 2, 
3 and 10, for lack of invention. (C. C, 1). INIass. Aug. 4, 
1899.) 

Brown, J.] * Davey Pcgging-Macb. Co. r. Isaac Prouty <K: Co., 
etal, 96 Fed. Rep. 336. 

46. The patent to Chatillon, No. 304,172, Aug. 26, 1884, for 
an improvement in scale-pans, which consists in applying to an 
enameled flanged scale-pan, a protecting metal ring which over- 
laps the edge of the pan and the bottom edge of the flange, 
Held., void for want of invention. (C. C, S. D. N. Y. Aug. 
7, 1899.) 

TowNSEXD, J.] * Chatillon r. Forschner et al., 96 Fed. Rep. 
342. 

47. The patent to Way, No. 593,954, Nov. 16, 1897, for chest 
and neck pratector. Held, void for want of novelty, 91 Fed. Rep. 
663, Sand. Pat. Dig. 1899, affirmed. (C. C. A., 3d Cir. May 
9, 1899.) 

BuFFiNGTON, J.] * Way V. McClarin, 96 Fed. Rep. 416. 

48. The patent to Hawley, No 447,179, Feb. 24, 1891, for an 
improvement in furnaces, Held, anticipated and void. (C. C. , 
E. D. Mo. E. D. .June 26, 1899.) 

Adams, J.] * Springfield Furnace Co. et al. v. Miller Down- 
Draft Furnace Co. et cd., 96 Fed. Rep. 418. 

49. The patent to Johnston, No. 490,849, .Jan. 31, 1893, for 
an improvement in ore concentrators, Held, void in view of the 
prior state of the art. (C. C, N. D. Cal. Aug. 7, 1899. 
Morrow, J.] * Johnston v. Woodbury, 96 Fed. Rep. 421. 

50. The patent to Covert, No. 208,157, Sept. 18, 1878, for an 
improvement in rope clamps. Held, anticipated and void. (C. 
C, S. D. N. Y. Aug. 9. 1899.) 

TowNSEND, J.] * Covert v. Travers Bros. Co., 96 Fed. Rep. 

568. 



250 PATENTS. 

51. The patent to Westingliou.se, No, 270,867, Jan. 16, 1883, 
for improvements in electric circuits' for railway signalling, 
Held, void because of two 3'ears ])rior ])ul)lic use and descrip- 
tion and publication more than tAVO years prior to application 
for the patent. (C. C. A., 3d Cir. Sept. 18, 1899.) 

KiRKPATEicK, J.] * Union Switch & Signal Co. et nl. v. Phila- 
adelphia ct Reading R. R. Co. et al., 96 
Fed. Rep. 761. 

52. The patent to Sperry, No. 267,032, Nov. 7, 1882, for a 
fanning mill, discloses a combination of old elements producing 
no new results, and Held, void for lack of invention. (C. C. , 
D. Minn., 4th Div. Oct. 19, 1899.) 

LocHREN, J.] * Sperry Mfg. Co. r. J. L. OAvens Co., 96 Fed. 
Rep. 975. 

53. The patent to Barrett, No. 511,923, Jan. 2, 1894, for an 
improvement in lifting jacks, Held, void for lack of invention. 
(C. C, D. Mass. Oct. 4, 1899.) 

Putnam, J.] ^'- Duff ]\Ifg. Co. r. Norton, 96 Fed. Rep. 986. 

54. The patent to Potts and Potts, No. 368,898, Aug. 23, 
1887, for an improvement in clay disintegrators, construed and 
Held, void for lack of patental)le invention. (C. C. A., 6th 
Cir. Oct. 23, 1899.) 

Taft, J.] *C. tt A. Potts c^' Co. r. Creager et al., 97 Fed. Rep. 

78. 

55. The patent to Stevens & Harrison, No. 546,360, Sept. 17, 
1895, for a method of producing a |)yroxyline compound in 
imitation of onyx, Held, void for lack of novelty and inven- 
tion. 

The patent to Thurl)er & Schaefer, No. 542,452, July 9, 
1895, for an improvement in celluloid articles and process of 
manufacturing the same. Held, void both as to product and as 
to process. (C. C. A., 3d Cir. Sept. 22, 1899.) 
Bradford, J.] * Arlington Mfg. Co. r. Celluloid Co., 97 Fed. 
Rep. 91. 

56. The design patent to Schmid, No. 21,416, Mar. 22, 1892, 
for a design for the frame of an electric machine. Held, void as 



PHACTICK IN TIIK TNITKI) STATES COrHTR. 251 

not disclosing patent:il)k' invention. (C. C. A., Gth Cir. Oct. 
3, 1899.) 

Taft, J.] * Westinghouse Electric it Mfg. Co. v. Tiiumiih 
Electric Co., 97 Fed. Rep. 99. 

57. The patent to Taylor, No. 878,107, Nov. 15, 1887, for an 
improved lock, construed and Held, void for lack of invention. 
(C. C, D. Conn. Sept. 5, 1899.) 

TowxsENi). J.] * Yale ct Towne Mfg. Co. '•. Sargent & Co., 97 
Fed. Rep. 106. 

58. The patents to McBride, No. 199,082, Jan. 8, 1878, and 
No. 284,036, Aug. 28, 1883, for improved riding attachments 
for plows, Held, anticii)ated and void. (C. C. A., 8th Cir. 
Oct. 9, 1899.) 

Sanborn, J.] * McBride v. Kingman et al. Same r. Sickels 
et (d. Same v. Randall et al. Same v. Ains- 
worth et al, 97 Fed. Rep. 217. 

59. The patent to Kenney, No. 549,370, Nov. 5, 1895, for a 
device for holding woven wire fabrics on a mattress frame, Held, 
void as to claim, for lack of patentable invention. (C. C. A., 
1st Cir. Sept. 14, 1899.) 

Putnam, J.] * Kenney r. Bent, 97 Fed. Rep. 337. 

r>0. The patent to Kisinger, No. 492,811, Mar. 7, 1893, for a 
trolley-wire connector, Held, antici]jated by the Moirison pat- 
ent, No. 428,123, May 20, 1890, and void." (C. C. A.. 6th Cir. 
Oct. 3, 1899.) 

Taft, J.] *Kisinger-Ison Co. v. Bradford Belting Co., 97 Fed. 
Rep. 502. 

61. The patent to Hoffman, No. 450,124, Apr. 7, 1891, for 
improvements in storage cases for books, Held, void as to clainjs 
1 and 2. (Sup. Ct. U. S. :May 14, 1899.) 
Brown, J.] * Office Specialty Mfg. Co. r. Fcnton >retallic 
Mfg. Co., 87 O. (4. 1608. 

Practice in the United States Courts. 

Where the lower court correctly instructed the jury in relation 
to the law applicable to each of the questions of novelty and 
infringement, they being mixed questions of law and fact, the 
verdict of the jury is conclusive on writ of error to an appellate 



252 



PRINTS. 



court as to every fact embraced -witliin the issues submitted to 
the jury for decision, unless there Avas an entire want of evi- 
dence upon which to Ijase the verdict returned by the jury. 
This results from the well-settl(>d rule that on a writ of error the 
appellate court can only consider errors of law, and that the 
review under such writ does not extend to matters of fact. (C. 
C. A., 9th Cir. Oct. 18, 1897.) 

De Haven, J.] * Graham v. Earl, 82 Fed. Rep. 737; 92 Fed. 
Rep. 155. 

Prints. 

1. An arbitrary and fanciful representation to be placed upon 
cards and letter-heads as an ornamentation thereof is not a print 
within the meaning of the coj^yright law^ such as may be regis- 
tered in this Office. (May 31,' 1899. ) 

Greeley, A. C.] Ex parte Barnhart Bros. & Spindler 87 0. G. 
2118. 

2. When an alleged print possesses artistic merit, but does 
not relate to the trade or pertain to an article of manufacture 
within the meaning of the statute, which requires that it shall 
be for some article of manufacture, Held, that it is not regis- 
trable as a print, whatever right the designer may have to pro- 
tection in some other form. Id. 

3. "For any article of manufacture" in the statute and 
"pertaining to an article nf manufacture" in the rule have ref- 
erence to the subject-matter of the print itself, and if that sub- 
ject-matter does not suggest or in some manner indicate some 
other article of manufacture it is not registrable in this Office. 
The article indicated must be separate and independent of the 
print itself. Id. 

4. Aside from the rule that a print to be registrable must not 
be borne by the article to w'hich it pertains, Held, that the al- 
leged print in this case does not pertain to cards and letter- 
heads within the meaning of the statute, since its subject-mat- 
ter does not suggest them, and it is merely an ornamental de- 
sign which might be placed upon a variety of articles. Id. 

5. Proofs or prints do not pertain to the plate from which 
printed in the sense of the statute requiring that they shall be 
for an article of manufacture. To so hold would render mean- 



PKIOR ADJUDICATION. 253 

ingless the statutes distin^nus]iin<i; iK'twcen co])vriglits, j)rints 
and designs. Id. 

6. Prints are designed to give protection in tlie use of the 
print itself in whatever manner produced as a representation or 
indication of the article of manufacture to wliich it i)ertains, 
l)ut not in the manufacturw and use of the article itself. Id. 

Pi'ints and Labels. 

Department of the Interior, 

Umted States Patent Office, 

Washington, D. C, March 3,. 1899. 
The attention of all persons ordering copies of Prints and La- 
bels from this Office is respectfully called to the following no- 
tice, in view of w'hich a written statement, setting forth the par- 
ticular use to which the copy is to be applied, will in each case 
be required: 

Department of thk Inteuior, 

United States Patent Office, 

Washington, D. C, Jmiuanj SO, 1899. 
Hereafter copies of Prints and Labels will be furnished only upon an order from the 
Commissioner. 
By direction of the Commissioner. 

Prior Adjudication. 

1. The matters in controversy in the present suit are not res 
adjudicata by reason of the case of Norton r. Jensen, 7 U. S. 
Ap. 103; 1 C. C. A. 452; 49 Fed. Rep. 859. The parties are 
the same; the patents here involved are the same as were held 
valid as against Jensen's first machine in that suit. But here a 
different patent of Jensen's is now involved, not the same but a 
second patent which the Patent Ofhce deemed proi)er to allow 
him. There is prima facie a lack of identity in the subject- 
matter of the two cases, and therefore upon the face of the 
record there is no estoppel either in judgment or in evidence. 
(C. C. A., 9th Cir. Oct. 24, 1898.) 

MoRROAV, J.] * Norton et al. r. Jensen, Fed. Rep. 415. 

2. Where, in a prior suit at law for the infringement of a 
patent, the verdict and judgment were based upon the ground 
that the patent was a mere adaptation of the device of a })rior 
patent, and therefore invalid, Held, that the judgment thus 
given — the court having jurisdiction of the subject-matter and 



254 PRIOR ADJUDICATION. 

of the parties — is good as a plea in bar, and conclusive when 
given in evidence in a subsequent suit between the same parties 
or their privies, upon the same point, not only of the invalidity 
of the patent sued upon, but also that articles made in con- 
formity with that patent are substantial copies of the device of 
the prior patent. (C. C, 8. D. Cal.* Nov. 21, 1898.) 
Ross, J.] * Newton Mfg. Co. r. Wilgus, 90 Fed. Rep. 483. 

3. To ai)ply a prior judgment and give effect to the adjudi- 
cation actually made, resort may be had to extrinsic evidence, 
such for example as the special verdict of the jury, and the 
evidence in the prior suit as embodied in the transcript of the 
record of that suit. */r/. 

4. Where an ai)})licant appealed to the Court of Appeals from 
the decision of the Commissioner of Patents, holding that his 
invention was without patentable novelty, and the court sus- 
tained the decision of the Commissioner and suggested to appli- 
cant to file a bill in equity, and applicant instead of following 
the suggestion filed a new application for the same matter that 
was in the first application. Held, on appeal to the court on the 
second application, that the question of patentable novelty will 
not be again passed upon, as that question is res adjudicata. 
(C. A. D. C. Feb. 9, 1899.) 

Morris, J.] * Barratt v. Duell, Comr. of Patents, 87 0. G. 
1075. 

5. \Mien an application for patent is after due examination 
rejected and finally determined against the applicant after 
exhaustion of the right of appeal allowed to him. Held, that it 
is not incumbent upon the Patent Office as a duty to entertain 
such second application, and that if the Commissioner refuses 
to entertain it he has a perfect legal right to do so. * Id. 

(). There is no provision of law for a second application where 
a previous application has been adjudicated and a patent denied. 
The absence of such provision is sufficient evidence that the 
right to have a second application considered after the refusal of 
a patent upon a previous application does not exist. */f/. 

7. While the rules that govern the finality and conclusiveness 
of adjudication at the common law do not apply in the strict 
sense to administrative or quasi-judicial actions in the Execu- 



PROTECTION TO I'ATKNT^:. 255 

live Departments of tlie Goveniiuent, yet in such actions as well 
asin judicial proceedings it is both expedient and necessary 
that there should be an end to controversy. * Id. 

8. Where in a court of law there has been one investigation 
and one adjudication, such action becomes final and can only 
be reviewed, if at all, by the way of appeal. Subsequent suit 
for the same subject-matter and between the same parties 
cannot be sustained, and there is no good reason why the 
course of procedure should be different in the Patent OHice. 

9. The principles applicable to the proceedings in the Patent 
Office are so nearly akin to judicial proceedings as to be most 
properly designated as quasi-judicial, and it is only by regard- 
ing these proceedings as such that the validity of the legislation 
which authorizes appeals to the Court of Appeals from the deci- 
sion of the Commissioner of Patents can be sustained. * Id. 

10. In an action between the same parties, or those in privity 
with them upon the same claim or demand, a prior judgment 
or decree upon the merits is conclusive of every matter that 
was or might have been litigated in tiie earlier suit. (C. C. A., 
8th Cir. June 19, 1899.) 

Sanborn, J.] *Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co., 
95 Fed. Rep. 457. 

Pi'otection of Patents in Tei'i'itory Subject to Military 
Government by United States Forces. 

[^Circular Xo. 12. ~\ 

Division of Customs and Insular Affairs. 

War Department, 
Washinyfim, D. C, April 11, 1899. 
The following is published for the information and guidance 
of all concerned: 

In territory subject to mihtary government by the miHtary 
forces of the United States, owners of patents, including design 
patents, which have been issued or which may hereafter be is- 
sued, and owners of trade-marks, prints, and labels, duly regis- 
tered in the United States Patent Office under the laws of the 
United States relating to the grant of patents and to the regis- 



256 PROTECTION TO PATENTS. 

tration of trade marks, prints, and labels, shall receive the pro- 
tection accorded them in the United States under said laws; 
and an infringement of the rights secured by a lawful issue of 
a patent or by registration of a trade-mark, jn-int, or label, shall 
subject the person or party guilty of such infringement to the 
liabilities created and imposed by the laws of the United States 
relating to said matters: Provided, That a duly certified copy of 
the patent or of the certificate of registration of the trade-mark, 
print, or label, shall be filed in the ofhce of the Governor 
General of the island wherein such protection is desired; and. 
Provided further', That the rights of property in jiatents and trade- 
marks secured in the Islands of Cuba, Poi'to Rico, the Philip- 
pines, and other ceded territory, to persons under the Spanish 
laws, shall be respected in said territory, the same as if such 
laws were in full force and effect. 

G. D. Meiklejohn, 
Acting Secretary of War. 

l_Ciradar No. 21.~\ 

Division of Customs and Insular Affairs. 

"War Department, 
Washington, D. C, June 1, 1899. 

The following is published for the information and guidance 
of all concerned: 

Parties who desire protection in territory under government 
of the military forces of the United States for patents, trade 
marks, prints, or labels, as provided in Circular No. 12, Divi- 
sion of Customs and Insular Affairs, War Department, should 
forward a certified copy of the patent or of the certificate of 
registration of the trade-mark, print, or label, together with a 
letter of transmittal to the Governor-General, requesting that 
such copy be filed in his ofhce for reference. 

Upon the receipt of such certified copy the Governor-General 
will issue his formal receipt therefor and forward it to the party 
filing the same. 

A fee of one dollar will be charged for filing such copy and 
should be inclosed with the letter of transmittal to the Governor- 
General. 

The requirements for filing under the provisions of Circular 



I'HOTECTION TO PATENTS. 2o7 

No. 12, above referred to, a]){)ly only to i)cit('nts duly issued, 
and to trade-marks, prints, or labels duly registered in the 
United States Patent Office under the laws of the United States. 
The only certification required is that issued by the Connnis- 
sioner of Patents. Communications should be addressed to the 
Governor-General of Cuba, Havana, Cuba; or Governor-General 
of Porto Rico, San Juan, Porto Kico; or Governor-drencral of 
the Philiiipine Islands, Manila. Philippine Islands. 

(i. D. Meiklejohn, 
Af<f!!f<tant Serretory of War. 



[Circular No. ^^.] 

Division of Customs and Insular Affairs. 

War Department, 
Washinyton, D. C, September 25, 1899. 
The following is j)ublished for the information and guidance 
of all concerned : 

So much of Circular No. 21, of the Division of Customs and 
Insular Affairs, War Department, dated June 1, 1899, as re- 
quires the payment of a fee for filing certified copies of patents 
or certificates of registration of trade marks, prints, or labels is 
hereby rescinded. 

Said Circular No. 21 is hereby further amended by tlie addi- 
tion thereto of the following paragraphs: 

"A power-of-attorney from the owner thereof authorizing 
another for him and in his name, place and stead to file a certi- 
fied copy of a patent or a certificate of registration of a trade- 
mark, print or label must be filed Avith such certified copy or 
certificate of registration in each of the islands wherein the 
protection of such patents, trade-marks, prints or labels is de- 
sired. 

"Assignments of patents, trade-marks, prints, or labels, or 
certified copies thereof, naust be filed in the same manner as 
herein provided for filing certified copies of patents and certifi- 
cates of registration of trade-marks, prints or labels." 

G- D. Meiklejohn, 
Amstafnt Secretary of War. 
17 



258 REOPENING CASES IN THE PATENT OFFICE. 

Reopening Cases in the Patent Office. 

I. Ex Parte. 
II. Interferences, 
I. Ex Parte. 

1. The exaniiners-in-chief affirmed the rejection by the exam- 
iner, whereupon appeal was taken to the Commissioner, and ap- 
pellant contends that the case was not in condition for appeal, 
and that he was prematurely forced by the examiner to take 
such appeal, and requests that the case be remanded to the ex- 
aminer for reconsideration, and that he be permitted to file an 
amendment, Held, that certain of the appealed claims are vague 
and indefinite, and were not in condition for appeal at the time 
they were finally rejected. Under such circumstances he should 
have been given an opportunity, and, in fact, should have been 
required to make such claims clear and definite before an ap- 
peal was permitted. The case is therefore re-opened and re- 
manded to the examiner for further consideration. (June 1, 
1899.) 

Greeley, A. C] Ei: parte Herzog, 67 MS. Dec. 139. 

2. Rule 142 provides that cases decided upon appeal will not 
be reopened before the primary examiner without specific au- 
thority from the Commissioner, and it is the settled practice of 
the Office not to re-open such cases except for good and sufficient 
reasons. Where there Avas no recommendation by the exam- 
iners-in-chiei, under rule 139, that any of the appealed claims 
would be allowable if amended, and there was nothing in their 
decision to warrant the admission of the amendment presented, 
and the only reason given for the failure to sooner present the 
amended claims was that applicant did not realize the necessity 
for amending until after the decisions on appeal, Held, that 
such reason is insufficient to warrant there-opening of the case. 
(June 17, 1899.) 

Greeley, A. C] Eo: parte Betz, 67 MS. Dec. 194. 

3. Where a case was remanded by the examiners-in-chief to 
the primary examiner for reconsideration, the entire case was 
re-opened, and it was necessar}^ for him to use his own judgment 
in treating the claims without being bound by the opinions of 



REOPENING CASES IN THE PATIENT OFFICE. 259 

the examiners-in-chiof ; fur if he were to he absohitely hound 
by their rulings there would be no useful purpose served in 
remanding the ease to him. (June 29, 1899. ) 
Greeley, A. C] Ex parte Hunter, 67 MS. Dec. 248. 

4. Where an applicant was furnished by the office with a de- 
fective copy of the principal reference relied on in the rejection 
of his application by the examiner, the board of examiners-in- 
chief and the Commissioner, Held, that the case should be re- 
opened and remanded to the examiner with instructions to enter 
and consider the amendment presented and such other amend- 
ments as are presented in regular order. (Dec. 7, 1899.) 
Greeley, A. C] Ex parte Robertson, 68 MS. Dec. 260. 

5. Where the claims of an application have been finally re- 
jected and the applicant has taken and prosecuted an appeal to 
the examiners-in-chief, it is too late to raise ihe question whether 
the examiner in his rejections fully explained the pertinency of 
the references. (Nov. 25, 1898.) 

Greeley, A. C] Ex parte Hardie, 86 O. G. 181. 

6. While the Office is disposed to assist applicants unfamiliar 
with the practice in bringing out the patentable novelty in their 
cases, the practice cannot properly be carried to the extent of 
re-opening cases which have proceeded as far as this one has 
merely for the purpose of further amendment. To do so would 
make it practically impossible to bring the prosecution of a case 
to a conclusion, and, as stated in ex parte Snow, (80 0. G. 
1271)— 

There must be an end somewhere to the prosecution of an application, and the Office 
is justified in restricting the power to bring up lor consideration matters which should 
have been presented and disposed of prior to the closing of the case before the primary 
examiner. 

hi 

II. Interference. 

Where judgment of priority had been rendered by the exam- 
iner of interferences and his action affirmed by the board of 
examiners-in-chief, a petition to reopen the case for the purpose 
of presenting additional testimony not newly discovered, denied. 
(May 3, 1899.) 
Greeley, A. C] Estes o. Gause, 88 0. G. 1336. 



260 RULES OF PRACTICE. 

Repair of Patented Machines. 

1. The purchaser of a patented machine may rej)air the 
machine which he has purchased by replacing worn out parts, 
so long as the identity of the machine is not destroyed. The 
sale of an entire machine carries with it the right to replace a 
part which, in relation to the whole structure, is temporary in 
its nature, although such part may be one of the novel or valu- 
able devices covered by. the claims of the patent. But the 
right to repair does not include the right to build a new 
machine, or to reconstruct or rebuild an old one. (Authorities 
cited.) (C. C, N. D. Cal. Mar. 16, 1899.) 

Morrow. J.] -!= Alaska Packer's Ass' n v. Pacific Steam Whal- 
ing Co. et al, 93 Fed. Rep. 672. 

2. There is a distinction between a patent covering an entire 
machine composed of several separate and distinct parts, and a 
machine not patented as an entirety, but in parts, and such parts 
covered by different patents. In the former case the purchaser 
will not infringe by replacing temporary parts as they wear out, 
so long as the identity of the machine is retained, while in the lat- 
ter, the manufacture and sale of the parts constitute infringe- 
ment. * Id. 

3. It may l)e that this distinction will not satisfactorily de- 
termine all cases, particularly where separate parts are covered 
by separate claims in the patent: but the other distinction, which 
gives the purchaser of a patented machine under an ordinary 
sale the right to preserve its normal life by replacing temporary 
parts when worn out, is a distinction that can be a])plied in all 
cases of repair, and is in accordance with the just rights of 
ownership of the property. ^Id. 

Rnles of Practice. 

Department of the Interior, 

United States Patent Office, 
Washington. D. C, July li, 1899. 
The sixteenth edition of the Rules of Practice of this Office 
has been adopted and duly approved by the Secretary of the 
Interior, to take effect on July 18, 1899. The changes made in 
the rules of the fifteenth revised edition of June 18, 1897, and 
the second edition thereof, December 1, 1897, are as follows: 



RULES OF TKAtTn-K. 2(U 

Rules 9, 18, 25, 33, 41, 46, 47, 60, 77, 78, 91, 96, 107, 110, 112, 
124, 128, 149, 154, 156 and 162 are amended, the changes 
noted in the appendix of the second edition of December 1, 
1897, and those appearing in The Official Gazette since the 
pubHcation of the fiftcentli edition have been incorp<irated in 
the rules, and rule 214 lias been added. 

Forms 1 to 17 and 37 have been amended, a new form 7 
added, and the forms renumbered as necessary. 

C. H. DUELL, 

Comuiissioner. 
Rules 9, 41 and 47 nx Amended to Take Effect Juh/ IS, 1899. 

9. A separate letter should in every case be written in relation 
to each distinct subject of inquiry or application. Assignments 
for record, final fees, and orders for copies or abstracts must be 
sent to the Office in separate letters. 

Palmers sent in violation of this rale ivill be returned. 

41. Two or more independent inventions cannot be claimed 
in one application; but where several distinct inventions are 
dependent ujdou each other and mutually contribute to produce 
a single result they may be claimed in one application. 

A machine, a process, and. a product are separate and independent 
inventioiu, and claims for each must be presented in a separate appli- 
cation. 

47. If the application be made by an executor or administra- 
tor of a deceased person or the cfuardian, conservator or representa- 
tive of an insane person, the form of the oath will be correspond- 
ingly changed. 

The oath or atfirmation may be made before any person 
within the United States authorized by law to administer oaths, 
or, when the applicant resides in a foreign country, before any 
minister, charg^ d'affaires, consul, or commercial agent holding 
commission under the government of the United States, or be- 
fore any notary public of the foreign country in which the 
applicant may be, the oath being attested in all cases, in this 
and other countries, by the proper official seal of the ofiicer be- 
fore whom the oath or affirmation is made. When the person 
before whom the oath or affirmation is made is not provided 
with a seal, his official character shall be established by com- 



262 RULES OF PRACTICE. 

petent evidence, as by a, certificate from a clerk of a court of 
record or other proper officer having a seal. 

An oath taken before a notary ■public or niaf/istrate ivill not be ac- 
cepted imless a certificede of the official character of the p>eri<on admin- 
istering the oath, dating the date of appointment and term, of office, 
is filed. To obviate the necessity of a separate certificate in each ap- 
plication, a certificate may be fnmished with the request that it be filed, 
in the Patent Office for general reference. 

Department of the Interior, 

United States Patent Office, 
Washington, D. C, September 2, 1899. 
Rule 47 of the Rules of Practice in the United States Patent 
Office, edition of July 18, 1899, is amended by canceling the 
last paragraph thereof, which reads as follows: 

An oath taken before a notary public or magistrate will not be accepted unless a cer- 
tificate of the official character of the person administering the oath, stating the date of 
appointment and term of office, is filed. To obviate the necessity of a separate certifi- 
cate in each application, a certificate may be furnished with the request that it be tiled 
in the Patent Office for General reference. 

C. H. Duell, 
Approved : Commissioner. 

E. A. Hitchcock, 

Secretarg of the Interior. 

Department of the Interk^r, 

United States Patent Office, 
Washington, D. 0., December 5, 1899. 
Rule 47 of the Rules of Practice of the United States Patent 
Office, edition of -July 18, 1899, is amended to read as follows: 

" 4". If the application be made by an executor or administrator of a deceased person 
or the guardian, conservator, or representative f)f an insane person, the form of the oath 
will be correspondingly changed. 

" The oath or affirmation may be made before any person within the United States 
authorized by law to administer oaths, or, when the applicant resides in a foreign 
country, before any minister, charge d'affaires, consul or commercial agent holding 
commission under the Government of the United States, or before any notary public of 
the foreign country in which the applicant may be, who is mdhorized by the laws of his 
country to adminhter oaths, the oath being attested in all cases, in this and other countries, 
by the proper official seal of the officer before whom the oath or affirmation is made. 
When the person before whom the oath or affirmation is made is not provided with a 
seal, his official character shall be established by competent evidence, as by a certificate 
from a clerk of a court of record or other proper officer having a seal. 

" When the oath is taken be/ore an officer in a country foreign to the United States, all the 
application papers must be attached together and a ribbon passed one or more times through 
all the sheets of the application, and the ejids of said ribbon brought together under the seal be- 
fore the latter is affixed and impressed, or each sheet must be impressed xoith the official seal of 



REVENUE STAMPS. 263 

the officer before whom the oath was taken, or if he is not provided with a seal, theii tach sheet 
must be initialed by him." 

C. H. DUELL, 

Commissioner. 

Department of the Interior, Dm ih/mt (J, 1899. 

Approved, the Inst paragraph of this rule to take effect M;iy 
1, 1900. E. A. Hitchcock, 

Secretary of the Interior. 

Revenue Stamps. 

Department of the Interior, 

United States Patent Office, 
Washington, D. C, September 16, 1898. 
The attention of persons having business before this Office is 
called to the following ruling of the Commissioner of Internal 
Revenue in relation to affixing revenue stamps to trade mark, 
print, and label certificates issued by this Office: 

Treasury Department, 
Office of the Commissioner of Internal Revenue, 

Washiiujton. D. C, Septembers, 1898. 
Hon. C. H. Duell, 

Cotnmissioiar of Fatent.'<. InUrior Departiiwnt. 
Sir: I have the honor to acknowledge the receipt of your let- 
ter of current date, submitting three forms which are used by 
your Office and asking in regard to their liability to the internal 
revenue tax under Schedule A of tlie War Revenue Act of June 
13, 1898. 

These forms are as follows: 

Exhibit " A " is a certificate of registration of trade mark. Exhibit " B " is a certifi- 
cate that there has been deposited in yo»ir Office for registration a print; and Exhibit 
"C" is a certificate that there has been deposited in your Office for registration a 
label. 

These certificates are all rociuired by law and are given for 
private use. In conformity with the opinion of the Attorney- 
General and the rulings of this Offiee, each of tliese certifieates 
required a ten-cent stamp. 

Verj' respectfully, W. B. Scott, 

Comiiiifsionrr. 

The Commissioner of Internal KeveiHU^ has also ruled that a 



264 RKVENUE STAMPS. 

certificate of acknowledgement accompanying an assignment, in 
accordance with section 4898 of the Revised Statutes as amended 
March 3, 1897, re(iuires a revenue stamp to the vahie of ten 
cents to be affixed thereto. 

C. H. DUELL, 

Commissioner. 

Department of the Interior, 

United States Patent Office, 
Washington, D. C, June 15, 1899. 

By an act of ('ongress approved June 13, 1898, entitled " An 
Act to provide ways and means to meet war expenditures and 
for other purposes," certain certificates are required to have 
affixed thereto a revenue stamp to the value of ten cents. The 
Comnjissioner of Internal Revenue, in view of certain decisions 
of the Attorney-General of the United States, has decided that 
certificates of registration of trade marks, prints and labels, and 
such certificates as are issued by this Office certifying to copies 
of the records, come under the provisions of said act, and as 
they are for the benefit of the person to whom they are issued, 
a proper revenue stamp must be furnished by said person to be 
affixed to said certificate. 

To save annoyance to this Office and delay in delivering the 
certified copies of records and certificates of registration of trade 
marks, prints and labels, it is requested that the order for certi- 
fied copies of the records be accompanied by a ten-cent revenue 
stamp for each certificate to be issued, and that upon receipt of 
notice that an application for the registration of a trade mark, 
print or label has been allowed, a ten-cent revenue stamp be 
promptly forwarded to this Office. 

As this Office does not deal in revenue stamps or keep ac- 
co\mts with the public for such purpose, a stamp must be fur- 
nished by the interested party. The Office will not purchase 
stamps out of cash forwarded by or on deposit to the credit of 
said party. Attention is also called to the fact that postage 
stamps will not be accepted in lieu of revenue stamps. 

By direction of the Commissioner. 



STATUTES, CONSTRUCTION OK. 266 

Amending regulations as to cancellation of documentary and pro- 
prietary stamps. 
[Circnlar No. J 42— Int. Rev.. No. o^O.] 
Treasury Department, 
Office of Commissioner of Internal Revenue, 

Washington, D. C, December 1, 1899. 
To Collectors of Internal Revenue and others : 

Existing regulations providing for the cancellation of adhesive 
revenue stamps by writing or stamping thereon, with ink, the 
initials of the name and the date when attached, or by cutting 
and canceling said stamp with a machine or punch which will 
affix the initials and date as aforesaid, and the cancellation of 
imprinted stamps on checks, drafts or other instruments by fill- 
ing out tlu- dates and blank lines on said instruments in the 
usual manner of drawing checks and drafts, or by perforating 
through the stamp and paper to which it is attached the amount 
in figures for which said instrument Avas drawn, having proved 
inadequate to prevent frauds on the revenue which have been, 
and now are, extensively practiced, said regulations are hereby 
amended by adding thereto the following provision and require- 
ment: 

In all cases where a documentary stamp of the denomination of 10 cents or any larger 
denomination shall be ased for denoting any tax imposed by the act of June 13, 1898, 
the person using or affixing the same shall, in addition to writing or stamping thereon, 
with ink, the initials of his name and the date when affixed, mutilate said stamp by 
cutting three parallel incisions lengthwise through the stamp, beginning not more than 
one-fourth of an inch from one end thereof, and extending to within one-fourth of an 
Inch of the other end. 

Where such stamp is canceled by cutting or perforating in any manner authorized by 
existing regulations, as aforesaid, the mutilations herein provided will not be required. 

This provision shall take eflfect and be in force on and after December 15, 1899. 

G. W. Wilson, 
Approved : Commissioner. 

L. J. Gage, 

Secretary. 

Statutes, Construction of. 

§ 861 of the Revised Statutes provides that the " mode of 
proof in the trial of actions at common law shall be by oral 
testimony and examination of witnesses in open court," and 
while under a state law the mode of proof may be by interroga- 
tories addressed to the.opposite party, such mode cannot be jus- 



266 SUITS. 

tified under § 914 of the Revised k^tatutes, which provides that 
the "practice, pleadings and forms and modes of proceeding in 
civil causes, in the Circuit Courts, shall conform, as near as maj^ 
he, to the practice, pleadings and forms and modes of proceeding 
existing at the time in like causes in the courts of record of the 
state within which such Circuit Courts are held," for, as stated by 
the Supreme Court in ex parte Fisk, 113 U. S. 713, 5 Sup. Ct. 
724, " if Congress has legislated upon this subject and prescribed 
a definite rule for the government of its courts, it is to that ex- 
tent exclusive of any legislation of the states in the same mat- 
ter." (C. C. A., IstCir. Apr. 12, 1899.) 

Lowell. J.] * Nat' 1 Cash Register Co. r. Leland ei al. Same 
r. Wright et al., 94 Fed. Rep. 502. 

Suits. 



1. 


Attorneys. 


II. 


Costs. 


[II. 


Laches. 


IV. 


Parties. 


V. 


Title. 



I. Attorneys. 

Where a motion is made by complainants lor a direction by 
the court to the former solicitors of said complainants to cancel 
and withdraAv from the retainer of other defendants in later 
suits, and forbidding them during the prosecution of such later 
suits to accept any other retainer from such defendants the 
motion njust be denied, for the reason that the acceptance of 
the later retainer was in the full belief that the former litiga- 
tions had terminated, and the whole matter may be left to the 
solicitors themselves. The honorable obligation of a reputable 
member of the bar is a better assurance that professional secrets 
will be respected than would be an order of the court. (C. C. 
A., 7th Cir. Apr. 11, 1899.) 

Woods, J.] *Lalance & Grosjean Mfg. Co. et al. v. Haberman 
Mfg. Co. Same v. Matthai et al, 93 Fed. 
Rep. 197. 

II. Costs. 

Where the larger part of the record on botli sides in a patent 



siuT!«. 267 

suit is -wholly useless, ajid ovorloaded witli matter, mainly the 
the testimony of exjterts ahoiinding in repetition and irksome 
and prolix disquisitions wholly irrelevant and immaterial. 
Held, that a successful defendant should be denied costs in the 
proportion -which such testimony hears to the whole amount of 
evidence in the record. 

CoxE, J.] * Edison Electric Light Co. r. E. (4. Hernard Co. 
rt al., 91 Fed. Rep. 694. 

III. Laches. 

1. Where the OAvners of a jiatent have been reasonably dili- 
gent in prosecuting other infringers, and sustaining the validity 
of the patent upon two successive appeals to the circuit court of 
appeals, they cannot be held to have been guilty of laches in 
not sooner proceeding against other infringers, such as would 
defeat them in such suits. (C. C, S. D. N. Y. Feb. 26, 
1898.) 

Lacombe, J.] * New York Filter Mfg. Co. r. Loomis-Manning 
Filter C(.., 91 Fed. Rep. 42L 

2. Where the owners of a patent -warned a prospective in- 
fringer of their claim to a monopoly, and cautioned him against 
infringement, and prior to this warning suits had been instituted 
against another infringer, and the patent sustained both by the 
trial court and the court of appeals, of which suits and its 
results the })rospective infringer was notified, and the owners 
instituted and prosecutc^l successfully other suits against other 
infringers and from time to time notified the prospective 
infringer who in the mean time had become an active infringer, 
of each recurring favorable adjudication, until they finally 
reached his case, some five years later, these facts present no 
case for the application of the doctrine of laches, for he had ex- 
pended no money, incurred no obligations or clianged no 
situation in reliance upcjn the owners' acquiescence. (C. C, 
E. D. Mo., E. 1). Dec. 27, 1898.) 

Adams, J.] *New York Filter Mfg. Co. /-. .lackson, 91 Fed. 
Rep. 422. 

3. Failure to prosecute to final judgnient a suit against an 
insolvent infringer, who has disapjieared, does not constitute 



268 SUITS. 

such laches as to disentitle a patentee or patent owner to recover 
for other and later infringements by diiJerent parties. (C. C, 
S. D. N. Y. Jan. 23, 1899.) 

Lacombe, .J.] * Huntington Dry-Pulverizer Co. et al. v. Newell 
Universal Mill Co. etal., 91 Fed. Rep. 661. 

4. The failure of the owner of a patent at any time during a 
period of fourteen years to take steps to enforce his rights under 
the patent, during which period he had been cognizant of the 
extensive and increasing manufacture of alleged infringing 
machines, constitutes such laches as will preclude him from 
maintaining a suit for the infringement of such patent. (C. C. 
A., 2dCir. Apr. 4, 1899.) 

Shipman, J.] * Richardson c. D. M. Osborne & Co. etal., 93 
Fed. Rep. 828. 

5. Equity is indisposed to assist parties who have slept upon 
their rights, and acquiesced in their appropriation by others for 
a great length of time. (C. C, S. D. N. Y. May 23, 1899.) 
Wallace, J.] *T.a Republique Francaise e^ a?. ?'. Schultz, 94 

Fed. Rep. 500. 

6. Where a patent owner delays bringing suit for an alleged 
infringement, for a period of 10 years after knowledge of such 
infringement and correspondence with the alleged infringer, who 
contended in evident good faith for such a construction of the 
patent as would avoid infringement, Held, that such laches are 
such as to debar not merely a claim for profits, but any claim 
to interposition by a court of equity. (C. C, D. Mass. July 
29, 1899.) 

Brow^n, J.] *Starrett v. J. Stevens Arms & Tool Co. Same 
w. Athol Mach. Co., 96 Fed. Rep. 244. 

7. Where the complainant knew that the defendant had been 
manufacturing the alleged infringing device for 14 years before 
he brought suit, Held, such laches are a bar to a decree for an 
accounting. (C!. C, S. D. N. Y. Aug. 9, 1899.) 
TowNSEND, J.] * Covert v. Travers Bros. Co., 96 Fed. Rep. 

568. 

IV. Parties. 

1. The complainant may properly maintain a suit on a pat- 



SUITS. 2G9 

ent, if he owned it when the suit was commenced and continues 
to own it. (C. C, S. D. N. Y. Nov. 15, 1898.) 
CoxE, J.] *Gormiilley & JefTery Mfg. Co. v. Stanley Cycle 
:\Ifg. Co. et ciL, 90 Fed. Rep. 279. 

2. The rule that a mere W(nkman or servant who makes, uses 
or vends for another, and under that other's immediate super- 
vision, a patented article, is not liable in an action for damages 
which may have been sustained by the patentee by reason 
thereof, is an exception to the general principle of law which 
makes all who participate in a tort of misfeasance, principals, 
and liable in damages therefor, and should not be so extended 
as to exempt from liability the general manager of a business 
which infringes the exclusive right of a patentee to make, use 
and vend the invention protected by bis patent. (C. C. A., 9th 
Cir. Oct. 24, 1897.) 

De Haven, J.] * Graham >\ Karll, S'2 Fed. Kep. 787; 92 Fed. 
Rep. 155. 

3. Where the manufacturers of an infringing article assumed 
the defense in a suit against the dealers in said article, without 
becoming technical parties thereto, and the resulting injunction 
ran against the dealers, their ofhcers, trustees, etc. and "manu- 
facturers," Hehl, that the "manufacturers" were included in 
the writ, not as agents and manufacturers of everybody with 
whom they might do business, but as agents and manufacturers 
of the defendant dealers, and sales of the infringing article to 
other dealers having no connection Avith or relation to the de- 
fendant dealers, do not bring the manufacturers within the pro- 
hibition of the writ. They are therefore not in contempt for 
continuing their sales to such other dealers. (C. C, S. D. N. 
Y. Feb. 24. 1899.) 

Wheelek, J.] *IJ. S. Playing Card Co. r. Spalding et al, 92 
Fed. Rep. 368. 

4. Tlie execution of an assignment and a release by one of 
the joint owners of a patent of his right to damages from an in- 
fringer of the patent does not destroy the co-owner's right to 
recover his damages from such infringer. (C. C, S. D. N. Y. 
Mar. 25, 1899.) 

Lacombe, J.] *Lalance & Grosjean Mfg. Co. et al. v. Haber- 
m an .Mfg. Co. Same v. Matthai et nl, 93 
Fed. Rep. 197. 



270 SUITS. 

5. Where there seems to be no necessity for it, the court will 
not undertake at an early stage of the case by an order to make 
a party complainant, whose interest may be with the defend- 
ants, a defendant, but at final hearing will arrange the ])arties 
and administer relief as their respective rights may require. 
But should the co-complainant undertake to delay, harass or 
impede the orderly progress of the cause, the motion to make 
such co-complainant a party defendant may be renewed. */«'/. 

6. In an infringement suit brought against a corporation and 
several individual defendants, it is not necessary to limit the 
decree to the joint infringement of all the defendants, but each 
individual defendant may be required to account for his several 
infringements. (G. C. A., 1st Cir. Apr. 25, 1899.) 

Colt, J.] *8imonds Rolling Machine C!o. r. Hathorn Mfg. Co. 
et al. Hathorn Mfg. Co. et al. i\ Simonds Roll- 
Machine Co., 93 Fed. Rep. 958. 

7. The i)atentees, by contract in writing, granted to complain- 
ant the exclusive right to manufacture and sell throughout the 
United States articles made undei- their patent. As this writing 
did not by its terms convey the exclusive right to use the pat- 
ented invention, it did not amount to a transfer of the title of 
the patent, and must therefore be classified as a license, leaving 
the holder of the title a necessary party to any suit for infringe- 
ment of the patent for technical reasons, although in every case 
of infringement by an unauthorized manufacture or sale of the 
patented article the complainant alone would, in equity, be en- 
titled to all damages recovered, and if the owner of the patent 
refused to jom the complainant in a suit ag-ainst infringers he 
might be brought into the suit by being joined as defendant. 
(C. C, D. Minn. Feb. 1, 1899.)" 

LocHREN, .J.] 'i^Owatonna Mfg. Co. v. F. B. Fargo & Co., 94 
Fed. Rep. 519. 

8. In a suit in equity, where the complainant has all the sub- 
stantial right to the relief and to the recovery, if he omits to 
join a technically necessary, though really formal, party, he will 
be allowed to bring such party in by amendment; and where 
the complainant actually acquired the technical title to a jDatent 
just after the suit was begun, he was properly allowed to allege 



TESTIMONY OK KXPKHTS. 271 

that fact by supplemental bill. There was no longer any reason 
to make the prior holder of the title to the patent a party, as 
even in respect to the past infringements alleged, the e(iuitable 
and substantial right (^f recovery was in the complainant alone. 

9. The specilic averment as to parties composing a firm or 
partnership named as complainant discloses the real parties in 
interest and informs the respondents of the names of their 
adversaries. Thes3 are the parties to whom the court will 
resort if necessary, to compel obedience of orders and to enforce 
the payment of any costs awarded in favor of the respondents. 
(C. C.^ N. D. Cal." May 22, 1899.) 

Morrow, .!.] * Fruit Cleaning Co. v. Fresno Home- Packing 
Co. et nl, 94 Fed. Rep. 845. 

V. Title. 

If a party improvidently or mistakenly institutes a suit and 
claims that his title is of a certain character, he is not thereby 
precluded in another suit against other parties from claiming 
his true title, nor if in the latter case he should prove the claim 
to be true is he precluded from securing a judgment the reverse 
of what he may have recovered in the former suit. (C. C, D. 
Ind. Feb. 10," 1899. ) 
Baker, -T.] * Centaur Co. v. Robinson, 91 Fed. Rep. 889. 

Testimony of Experts. 

1. The court is not bound to accept the testimony of expert 
witnesses as conclusive, for it has the unquestioned right to 
draw its own conclusions from an exhibition and inspection of 
the machines in controversy or models thereof as well as from 
the opinions of such expert witnesses. It considers the facts 
upon which the opinions of the witnesses are based and de- 
termines from all the evidence in the case whether the con- 
clusions given by the witnesses are sound and substantial. 
(C. C. A., 9th Cir. Feb. 13, 1899.) 

Hawley, J.] * Overweight Counterbalance Elevator Co. v. 
Improved Order of Red INIen's Hall Ass'n 
of San Francisco, 94 Fed. Rep. 155. 

2. More weight is given to the testimony of a witness based 



272 TRADE MARKS AND TRADE NAMES. 

upon facts within his own knowledge and experience, than to 
the testimony of a witness which is largely the assertion of 
theory. */d. 

3. The rule, that the trial court not only has the power but 
it is its duty, where the evidence is insufficient to support a 
verdict for the plaintiff, to instruct the jury to find a verdict for 
the defendant, is applicable to patent as well as other cases, 
and it is as applicable to the question of infringement as to any 
other material or controlling question involved in the case. */d 

4. An expert witness may describe the results of the omission 
of certain elements of a device, but he may not be permitted to 
call such an omission a ' ' fatal fault, ' ' for the word fatal con- 
tains an inference that goes beyond the province of an expert. 
(C. C. A., IstCir. Apr. 12, 1899.) 

Lowell, J.] *Nat'l Cash Register Co. r. Leland 6i a^. Same 
r. Wright et al, 94 Fed. Rep. 502. 

Trade Marks and Trade Names. 

I. In General. 
II. Abandonment. 

III. Alternatives. 

IV. Anticipation. 
V. Arbitrary. 

VI. Arbitrary Descriptive. 
VII. Assignment. 
VIII. Descriptive. 
IX. Essential Features. 
X. Foreign Words. 
XI. Generic Terms. 
XII. Geographical Names. 
(a) Indicating Locality. 
(6) Used Arbitrarily or Fancifully. 

XIII. Infringement. 
(a) In General. 

(6) Particular Cases. 

XIV. In.tunction. 



TRADK MARKS AND TRADE NAMES. 273 

XV. InTE I! FE H ENCE. 

XVI. Jurisdiction of Courts. 
XVII. Practice in the Patent Office. 
XVIII. Registration. 

XIX. Right to use Name of Patented Article. 
XX. Right to Use Personal Name. 

XXI. Statute ('onstrued. 
XXII. Unfair Competition. 

XXIII. Use and Sale as Establishing Title. 

XXIV. What Does Not Constitute. 

I. In General. 

1. Where T was the OAvner and originator of a trade-mark 
which he used upon the entire product of his factory in Eng- 
land, stamped it in England upon all goods which he sold to T. 
L. & Co., a firm of which he was a partner, and subsequently 
permitted the firm to use it upon the product of their factory at 
Bridgeport, Conn., U. S. A., Held, chat this licensed use in the 
business of a firm of a trade-mark owned by one partner does 
not place the trade-mark in the firm as a part of its assets. T's 
permission or allowance to the firm to use his trade-mark did 
not make it partnership property. (C. C. A., 2d Cir. Apr. 4, 
1899. ) 

Shipman, J.] *BatcheIlerv. Thomson (2 cases). 

Thomson v. Batcheller, 92 Fed. Rep. G60. 

2. Upon the dissolution of the partnership and the transfer 
by T of his interest in the factory property, he could rightfully 
continue in the purchaser the right to use the trade-mark which 
he had previously permitted the firm to use in their factory. 
The ownership and right to a general use remained in T, the 
limited right to use for a limited period being continued in the 
purchaser individually. ' */(/. 

3. Where T had been continuousl}' and still Avas the owner of 
the trade-mark and also an extensive manufacturer of the goods 
to which It Avas affixed, Held, that the relinquishment of a li- 
cense Avhich he had granted to another Avas not void, on the 
ground that the trade-mark, as distinct property separate from 



274 TRADE MARKS AND TRADE NAMES. " 

the article created by the original manufacturer, is not the sub- 
ject of sale, as it was merely the relinquishment to the owner of 
the right to use his own proi3erty. */r/. 

4. The function of a trade-mark is to indicate to the public 
the origin, manufacture or ownership of articles to which it is 
applied, and thereby secure to its owner all the benefit resulting 
from his identification by the pul)lic with articles bearing it. 
No other person than the owner of a trade-mark has a right, 
without the consent of such owner, to use the same on like arti- 
cles, because by so doing he would in substance falsely repre- 
sent to the public that his goods were of the manufacture or se- 
lection of the owner of the trade-mark, and thereby would or 
might deprive the latter of the profit he otherwise might make 
by the sale of the goods which the purchaser intended to buy. 
Where a trade-mark is infringed the essence of the wrong con- 
sists in the sale of the goods of one manufacturer or vendor as 
those of another, and that is the ground upon which a court of 
equit}'' protects trade-marks. It is not necessary that a trade- 
mark should on its face show the origin, manufacture or owner- 
ship of the article to which it is applied; it is sufficient that by 
association with such articles in trade it has acquired with the 
public an understood reference to such origin, manufacture or 
ownership. (C. C, D. Del. May 5, 1899.) 

Bradford, J.] *Dennison Mfg. Co. v. Thomas Mfg. Co., 94 
Fed. Rep. 651. 

5. A trade-mark may consist of a name, mark, form, brand, 
device or symbol, although well-known, but not jjreviously used 
in connection with the same article; and subject to certain- 
qualifications, it may consist of letters or figures. No one has 
a right to the exclusive use of any words, letters, figures or sym- 
bols, which have no relation to the origin or ownership of the 
articles to which they are applied, but only indicate their names 
or quality. ^Id. 

6. Nothing can be legally appropriated by any one as a trade 
mark which, aside from superiority in excellence, popularity or 
cheapness of the articles bearing it, would practically confer 
upon him a monopoly in the j)roduction or sale of like articles. 

7. A trade mark is designed to enable one to legitimately 



TRADE MARKS AND TRADE NAMES. 275 

build up or protect lii.s business, but not to deprive others of tlie 
right to use necessary or proper means for carrying on an hon- 
orable competition in trade. */(/. 

8. No one has the right to appropriate a sign or a symbol 
which, from the nature of the fact it is used to signify, others 
may employ Avith equal truth, and therefore have an ecjual right 
to employ for the same ])urpose. Hence, no one can acquire an 
exclusive right to the use, as a trade mark, of a generic name 
or word which is merely dcscrijitive of an article or a sign, 
symbol, figure, letter, brand, form or device, which either on its 
face or by association, indicates or denotes merely grade, (juality, 
class, shape, style, size, ingredients or composition of an article, 
or a word or words in common use designating locality, section 
or region of country. *Id. 

9. The word ''quality" is used in different senses in the 
different cases. It is employed in some to denote grade, in- 
gredients or properties of an article, and in others to indicate 
generally the merit or excellence of an article as associated with 
or coming from a certain source. ^\'hile there can be no valid 
trade-mark as denoting quality when used merely in the former 
sense, there may be a valid trade-mark as indicating quality 
when used in the latter sense. */d. 

II. Abandonment. 

1. In view of the continued and increasing appropriation by 
competitors of his label and of his trade name (as a general 
designation) a comj^lainant who has for nine years done nothing 
toAvards maintaining or even asserting his original rights cannot 
be heard to sup})ress the competition which his supineness has 
has allowed, and even invited and encouraged to grow up. The 
delay or acquiescence has continued so long and under such cir- 
cumstances as to defeat the right itself. (C. C. A., 2d Cir. 
Jan. 5, 1899.) 

Lacombe, .J.] 'i'^Saxlehner r. Eisner & Mendelsohn Co. Same 
r. Siegel Cooper Co. Same v. Gies, Same 
V. Marquet, 91 Fed. Rep. 537. 

2. The provisions of a treaty with a foreign country are not 
to be construed as to hold that when the pul)lic in this country 
has acquired through the owner's laches the right to use a trade 



276 TRADE MARKS AND TRADE NAMES. 

name and a trade-mark, such right is abrogated wlienever, by 
the operation of some sulisequent law of such foreign country, 
the trade name and trade-mark is secured to him in such foreign 
country. (C. C. A., 2d Cir. Jan. 25, 1899. On motion for 
re-argument.) ^Id. 

III. Alternatives. 

1. It is well settled that a picture and a word cannot be 
covered by one registration unless they are true alternatives. 
(Mar. 30, 1899.) 

Duell, J.] Ex parte Muir, 87 0. G. 357. 

2. The representation of a rose and the words "American 
Beauty ' ' are not true alternatives and cannot be registered as one 
trade-mark. Id. 

IV. Anticipation. 

1. The word " Dyspepticide " refused registration as at rade- 
mark for certain named medicinal preparations as it is antici- 
pated by the registered mark ' ' Dyspepticure ' ' for the same 
class of goods. (Apr. 29, 1899.) 

Duell, C] Ex parte Foley & Co., 87 0. G. 1957. 

2. The differences either to the eye or ear are no greater between 
"dyspepticure" and "dyspepticide" than between "saponite" 
and "sapolio," or between "cellonite" and "celluloid," or 
between "wamyesta" and "wamsutta," or between " maiz- 
harina" and "maizena. " Between such words the courts have 
found " infringing resemblances. " Id. 

3. Where it was contended that as the endings of " dyspepti- 
cure" and "dyspepticide" are distinctly different and have 
different meanings and therefore the mark of the application 
should be registered, Held, that in order to correctly decide 
whether or not an alleged trade-mark is likely to cause confusion 
or mistake because of its resemblance to a registered lawful 
mark, the marks must be taken as a whole. In the case of a 
word the ordinary purchaser is not expected to analyze it and 
resolve it into its component parts. It is only required that the 
purchaser should consider the word as an entirety. Id. 

V. Arbitrary. 

Where the examiner refused to register the word " Otaka " as 



TRADE MARKS AND TKADK NAMES. 277 

a tnide-niark for Msciiits on tlio urouiul that it so iicarl>- ri'&cni- 
bled the mark " Uneeda " ah-eady registered as to he Hkely to 
cause confusion in the mind of the public, Held, that the dif- 
ferences between the appearance and sound of the two words are 
marked, as is also the idea conveyed by them, and tliat the 
word should be registered. (Oct. 23, 1899.) 
DuELL, C] Ex parte Lorenz, 89 0. G. 2067. 

YI. Arbitrary, Descriptive. 

1. Ap})licant having filed an affidavit that the wonis " Royal 
Blue" are not descriptive of the general color of the carpet- 
sweeper in connection with which the words are used. Held, 
that these words when so applied to carpet-sweepers as not to 
be indicative of the color of the sweepers cannot be refused 
registration, as they liave an arbitrary suggestive meaning. 
(May 12, 1899.) 

DuELL, C] Ex parte Grand Rapids School Furniture Com- 
pany, 87 0. G. 1957. 

2. The general principle upon which registration has been 
refused by this Office for words used deceptively is, that a 
fraud is practiced upon the public. Examples are numerous — 
" Tamarac Balsam" for a medical compound in which ad- 
mittedly no tamarac was used; "American Sardines" as a 
mark for fish of another kind. The general rule is that words 
should not be registered whenever it clearly and distinctly 
appears that the proposed trade-mark constitutes a misrepre- 
sentation of such a character that the courts would not protect. 
(Ex parte Bloch & Co. , 40 0. G. 443. ) Id. 

3. Where an applicant sought to register as a trade-mark for 
powdered soap "the picture of a bag having the open end 
thereof held closed by a tie," Held, that the mark is either 
descriptive or deceptive and cannot be registered. (Nov. 13, 
1899.) 

Greeley, A. C] Ex parte Martin, 87 0. G. 2259. 

4. The objection to registering a descriptive mark is not 
alone on the ground that it does in fact describe the goods to 
which an applicant actually attaches it, but because others liave 
the right to use the same mark to describe their goods, and 



278 TRADE MARKS AND TRADE NAMES. 

therefore the exclusive right to the mark cannot be given to one 
person. Id. 

5. The mark may not be descriptive of the particular goods 
sold b}' an applicant; but at the same time it may be descrip- 
tive of similar goods sold by another party, and that other party 
cannot be prevented from using that descriptive mark on his 
goods. Id. 

6. While letters and figures arbitrarily may not, and often do 
not, of themselves indicate shape, size, grade or quality, yet if 
they be attached to articles to distinguish different shapes, sizes, 
styles, grades or qualities, they may become by association just 
as descriptive as words expressly defining the same. (C. C, 
D. Del. May 5, 1899.) 

Bradford, J.] *Dennison Mfg. Co. v. Thomas Mfg. Co., 94 
Fed. Rep. 657. 

VII. Assignment. 

Every trade-mark is assignable, together with the business in 
which it is used, unless it is strictly personal, and if a trade- 
mark belongs to the class of assignable trade-marks, it is trans- 
ferred, by the operation of the insolvency or bankrupt laws, to 
the assignee, as part of the bankrupt's assets. (C. C. A., 5th 
Cir. Apr. 11, 1899.) 

Pardee, J.] *Sarrazin v. W. R. Irby Cigar & Tobacco Co., 
Lim., 93 Fed. Rep. 624; 88 0. G. 387. 

VIII. Desbriptive. 

1. The words ''Bromo Soda Mint" refused registration as a 
trade-mark for remedies for certain named diseases, as they are 
indicative of the ingredients and characteristics of the prepara- 
tion to which they are applied, as any one reading said words 
would gather that soda-mint, an article Avell-known to phar- 
macists, is combined with bromin or a bromid. (Nov, 26, 
1898.) 

DuELL, C] Ex 'parte Spayd, 86 0. G. 631. 

2. The phrase "Apple and Honey" is descriptive. It may 
not be entirely descriptive, but it is sufficiently so under the de- 
cisions of the Federal courts to compel me to refuse registration. 
The case most in point is that of Brown Chemical Co. v. Meyer 
(55 0. G. 287; 139 U. S. 540, 542). It is there said: 



TRADE MARKS AND TRADE NAMES. 279 

The genenil proposition is well estiiblished that words which are merely descriptive of 
the character, qualities or composition of an article, or of the place where it is manu- 
factured or produced, cannot be monopolized as a tra<le-mark (Canal Company v. Clark, 
13 Wall. 311 ; Amoskeag Manufacturing Company !•. Trainer, 17 O. G. 1217 ; 101 U. S. 51 ; 
Caswell V. Davis, 35 N. Y. 281 ; Thomson v. Winchester, 19 Pick. 214 ; Raggett r. Find- 
later, L. R., 17 Eq. 29); and we think the words " Iron Bitters" are so far indicative ot 
the ingredients, characteristics and purposes of the plaintilTs preparation as to fall 
within the scope of these decisions. 

" Iron Bitters" are no more indicative than are " Ap])le and 
Honey" as used by applicants. (Mar. 4, 1899.) 
DuELL, C] Ex parte G. F. Heublein & Bro., 87 0. G. 179. 

3. The words "Chill Stop" refused registration as a trade- 
mark for chills and fever, malaria, and intermittent fever, as 
they express a quality of the article upon which they are used. 
(Mar. 7, 1899.) 

DuELL, C] Ex. parte Hance Bros. & White, 87 0. G. 698. 

4. While the arrangement of the words "Chill Stop" is 
somewhat different from the ordinary and they do not express 
qualit}' in the most grammatical form, they being catchy and 
slangy, they are nevertheless descriptive as well as advertising. 
{Ex parte Brigham, 20 0. G. 891, cited.) Id. 

5. The rearrangement of descriptive words in common use 
cannot clothe them with attributes not possessed when not so 
arranged. Id. 

IX. Essential Features. 

1. The W'ords " Nickel Soap " cannot be registered as a trade- 
mark, as the word " Soap " is merely the name of the goods to 
which the mark is applied and is made the essential feature of 
the mark. (Apr. 27, 1899.) 

DuELL, C] Ex parte Butler, 87 0. G. 1781. 

2. The word "nickel" as applied to soap does not indicate 
the price at which the soap is sold and may be registered as a 
trade-mark. Id. 

3. Nickel is the name of a metal, and it is not robbed of its 
primary significance by the fact that in some localities it has a 
secondary meaning in that it is used as a name for a coin. This 
subordinate or fanciful meaning does not bar its adoption and 
use as a trade-mark for soap. The words "eagle" and 
"crown" have been held to be subject to exclusive appropri- 
ation as lawful trade-marks, and yet they have a subordinate or 



280 TRADE MAKKS AND TRADE NAMES. 

secondnry meaning in that certain coins are designated and 
known by such names. Id. 

4. Tested by the definitions given to tlie term "trade-mark" 
and applying the rules laid down as guides, it is Held, that the 
term "Ever-Ready," plainly meaning a/uTfi/.s ready, as applied 
to a domestic coffee-mill intended for ordinary and daily house- 
hold use is not a trade-mark, in that it lacks the essential 
characteristics of individuality and exclusiveness. (May 18, 
1899.) 

DuELL, C] Ex parte The Bronson Company, 87 0. G. 1782, 

5. The facsimile of the mark presented for registration dis- 
closes the flag of the United States crossed cliagonall}' by a band 
or panel, upon which aj^pears the word "Standard," and dis- 
tributed about the flag are stars, the whole being inclosed in 
concentric circles, between which appear the Avords "Standard 
Fashion Company, New York." The essential features are 
recited as consisting of " the representation of a standard or flag 
and a number of stars distributed about the standard or flag;" 
Held^ that as j^resented the mark is not registrable. (Sept. 19, 
1899.) 

DuELL, C] Ex2)arte Standard Fashion Co., 89 0. G. 189. 

6. Held, further, that the band or panel diagonally crossing 
the flag gives to it a distinctive feature, and the examiner was 
justified in holding it to be an essential feature of applicant's 
mark. Id. 

7. Held, further, that none of the words can properly be said 
to constitute an essential feature of the mark, and they are not 
so claimed. Id. 

8. Held, further, that the concentric circles are merely acces- 
sories, but but not essential features, and to insist upon their 
being included in the statement of essential features might tend 
to the injury of applicant and the benefit of an infringer. Id. 

9. The essential feature of a trade-mark is not that which the 
applicant elects to designate as such, but that which would 
strike the public mind as its most salient feature. Id. 

X. Foreign Words. 

1. The words " Gold Label," which are unregistrable in Eng- 



TRADE INIARKS AND TRADE NAMES. 281 

lish characters, do not become registrable when pro(hic('(l in 
Hebrew cliaracters, ahhouuli there may be no words in the He- 
brew language corresponding to these English words. (Dec. 22, 
1899.) 
DuELL, C] Ex ixirte SiuhmQY, 86 0. G. 181. 

2. The fact that the Enghsh words "Gold Label" are pro- 
duced in Hebrew cliaracters, which may be illegible to the 
majority of English-speaking people, is no reason why such 
words may become subject to ado])tion as a lawful ti'ade mark. 

I<J. 

3. The word " Matzoon " (or "Madzoon") having been 
used in Armenia for centuries to designate an article of food or 
diet made from sterilized and fermented milk, cannot be appro- 
priated as a trade mark by the person who introduced both the 
name and the article into this country; nor can the defendants 
be enjoined on the theory that the word has become, in a si)ecial 
and secondary sense, a mark of tlie origin of complainant's 
goods, where the defenclant's label clearly distinguishes their 
own product from that of complainant. (C. C, D. Mass. 
Dec. 1, 1898.) 

Colt, J.] * Dadirrian r. Yacubian et aJ., 90 Fed. Rep. 812. 

XI. Generic Terms. 

A term which can be truthfully used by many in the descrip- 
tion of a business or occupation cannot be exclusively appropri- 
ated by any one of them. The word "Continental" is a gen- 
eric term, and it is not the policy of the law to permit the 
exclusive appropriation of words or terms which are generic; 
that is, which pertain to a class of related things, and which 
are of general api^lication. The right to use such words should 
remain vested in the public. (C. C, N. D. Texas. Oct. 10, 
1899.) 

Meek, J.] * Continental Ins. Co. v. Continental FireAss'n, 96 
Fed. Rep. 846. 

XII. Geographical Names. 
(a) Indicating Locality. 

1. The name "Bowdoin," V)oing the name of a township in 
Maine, the name of a college (situated in the same state), which 



282 TRADE MARKS AND TRADE NAMES. 

was named after James Bowdoin, is both geopraphical and a 
surname, and therefore refused registration. The fact that 
" Bowdoin " is the name of a college does not serve to make an 
exception of the word. If it did, then " Columbia," " Cornell " 
and names of other well-known colleges would be subject to ex- 
clusive appropriation, although such words are geographical or 
surnames. (Nov. 29, 1899.) 

DuELL, C] Ex parte Shaw, Hammond &: Carney, 68 MS. Dec. 
229. 

2. While the word "Gibraltar" has a certain arbitrary and 
fanciful meaning, implying firmness and strength, yet that is 
secondary to its geographical meaning, and it should not be 
registered as a trade-mark. (Feb. 23, 1899.) 

DuELL, C] Ex. parte Nave & McCord Mercantile Co., 86 0. G. 
1985. 

3. The fact that no one carries on the manufacture of goods 
at any of the places named Gibraltar should not be controlling, 
as the applicant by appropriating the word cannot bar another 
who may hereafter manufacture goods at Gibraltar from marking 
his goods with that word. Id. 

4. The name "Vichy" is not a trade-mark or trade-name in 
the strict legal sense of the term, but is a geographical name 
applied by the various owners of mineral springs at or near 
Vichy, France, to designate the locality of origin, and indicate 
the general characteristics of the waters. A suit by such own- 
ers can therefore be maintained against a defendant who applies 
the name to artificial waters, only upon the theory of unfair 
competition. (C. C, S. D. N. Y. May 23, 1899.)"^ 
Wallace, J.] *La Republique Francaise (?^ ai. ^\ Schultz, 94 

Fed. Rep. 500. 

5. It is not now a question that no one can acquire an ex- 
clusive right to the use of geographical names as trade-marks, 
as that question has been settled by a long line of court de- 
cisions. (C. C. A., 7th Cir. June 6, 1899.) 

Jenkins, J.] * Illinois Watch Case Co. et al. v. Elgin Nat'l 
Watch Co., 94 Fed. Rep. 667; 87 0. G. 2323. 

6. The decision of the court below sustaining the bill upon the 
ground that the word "Elgin" had acquired a secondary sig- 



THADE MARKS AND TRADE NAMES. 283 

nification, and tliroiigli a long course of business had come as 
applied to watches to designate the manufacture of ai)pellee as 
an article of approved excellence, and that therefore the word 
in that connection performed distinctly the function of a trade- 
mark, and could be registered and upheld as such under the 
act of Congress, Held, to be erroneous and that the word "El- 
gin" was not and could not be made a trade-mark. (Elgin 
Watch Co. V. Illinois Watch Case Co., 89 Fed. Rep. 487, 
Sand. Pat. Dig. 1898, 145, reversed.) */(i. 

XII. Geographical Names. 

(6) Used Arhitrarily or Fandfulhj. 

1. On appeal from the decision of the examiner lef using to 
register the word "Hansa" as a trade-mark for lard, sausages 
and bacon on the ground that as it is the name of a trading 
league comprising the cities of Hamburg, Lubeck, and Bremen, 
known as "the Hansa," it is geographical in character. Held, 
that the word has no such geographical character to-day as 
would forbid its registration. (June 10, 1899.) 

DuELL, C] Ex parte Tietgens & Robertson, 87 0. G. 2117. 

2. As the word "Hansa" Avas registered in Germany under 
the German law, which prohibits registration of words which 
are of a geographical character, any doubt of the propriety of 
registering it here should be waived, as the German Patent Of- 
fice is eminently qualified to pass upon the question of the geo- 
graphical character of the word, and its decision is entitled to 
respect, although in no manner controlling. (Carter v. Woll- 
schlaeger, 53 Fed. Rep. 573, cited. ) Id. 

A word-symbol to be refused registration because of its geo- 
graphical character must refer to some specific locality. Id. 

3. The words " BufTalo Pitts" as a trade-mark for agricultu- 
ral machinery refused registration, the word "Pitts" being an 
ordinary surname and a salient feature of applicant's name and 
the word " Buffalo " being a geographical term and also a part 
of applicant's name, it being well settled that ordinary surnames 
and geographically-descriptive words are not registrable. (Nov, 
24, 1899.) 

DuELL, C] Ex parte Bufl'alo Pitts Co., 89 0. G. 2069. 



284 TRADE MAKKS AND TRADE NAMES. 

XIII. Infringement. 

(a) In General. 
No one, who has counterfeited a legitimate trade-mark and 
apphed the spurious S3'mbol in competition Avith the genuine, 
can avoid the charge of infringement by showing that the false 
mark has, in practice, been so accompanied, on labels, capsules 
or otherwise, by trade-names, designations, descriptions or 
other accessories, not forming part of it, as to render it unlikely 
that the public has been deceived. Such a showing, while it 
may effect the nature or measure of the relief to be granted 
cannot defeat a suit for infringement. (C. C. , D. N. Jer. 
Aug. 5, 1899.) 

Bradford, J.] ^=Bass, Ratcliff & Gretton, Lim. v. Christian 
Feigenspan, 96 Fed. Rep. 206. 

XIII. Infringement. 

{h) Particukir Qises. 

1. The word "Uneeda" as applied to a biscuit is a proper^ 
trade-mark, and the owner thereof is entitled to an injunction 
against the use of the word " Iwanta" when applied by another 
to a similar biscuit put up and sold to dealers in similar pack- 
ages such as would be likely to deceive the public. It is imma- 
terial that the dealers themselves are not deceived. No one 
expects they will be. It is the probable experience of the pub- 
lic that the court considers. (C. C, S. D. N. Y. June 27, 
1899.) 

Lacombe, J.] *Nat'l Biscuit Co. v. Baker et al.^ 95 Fed. Rep. 
135. 

2. The complainant's trade-mark for pale-ale, consisting of 
an equitateral triangular figure, which, as applied to bottled 
pale-ale, is colored red, is infringed by the defendant's mark as 
applied to pale-ale and half-and-half, consisting of a red tri- 
angle nearly equilateral, a narrow gold border surrounding and 
binding it, a monogram composed of the letters C and F in the 
middle, and some fine scroll ornamentation in the middle. 
(C. C, D. N. Jer. Aug. 5, 1899.) 

Bradford, J.] *Bass, Ratcliff & Gretton, Lim. v. Christian 
Feigenspan, 96 Fed. Rep. 206. 



TRADE MARKS AND TRADE NAMES. 285 

3. Courts should not be astute to recognize in favor of a 
trade-mark infringer, fine distinctions between different articles 
of merchandise of the same general nature, and should resolve 
against the wrongdoer any fair doubt whether the public may 
or may not be deceived through the tlie application of the 
spurious symbol; and hence, pale-ale and half-and-half must, 
as against an infringer of a trade-mark for the former, be treated 
as malt liquors substantially similar to each other and belong- 
ing to the same class. */(i. 

XIV. Injunction. 

1. The soap sold by the defendants is like that of the com- 
plainants in shape and size, and in the mark "a base de 
Glycerine." It differs however in color and has for a distinc- 
tive name "Rose de France" instead of " La Parisienne. " It 
has not been made to appear that any one has been deceived or 
induced by similarity to buy the soap sold by the defendants 
for that of the complainants, and the facts presented do not 
.furnish a sufficient ground upon which to base a right to a pre- 
liminary injunction restraining defendants from selling soap 
such as described, upon the ground of deceit, or that by so 
doing they unfairly compete in trade with the complainants. 
(C. C, D. N. J. May 15, 1899.) 

KiRKPATRicK, J.] *Kroppf et al. v. Furst et a?., 94 Fed. Rep. 
150. 

2. He who applies a false trade-mark has no just cause of 
complaint if he is prevented from further violating the exclusive 
right of the lawful employer of the genuine symbol, and he 
should not be allowed, at the peril of the latter, fraudulently to 
experiment in the use of such false mark with accessories of 
varjdng character, with the double purpose of filching the cus- 
tom of a business rival, and at the same time shielding himself 
from the consequences of infringement. (C. C, D. N. Jer. 
Aug. 5, 1899.) 

Bradford, J.] * Bass, Ratcliff & Gretton, Lim. r. Christian 
Feigenspan, 96 Fed. Rep. 206. 

3. Relief by injunction is sometimes granted in cases where 
the party enjoined is using as a trade-mark or distinguishing 
name which is geographical or descriptive in character, and 



286 TRADE MARKS AND TRADE NAMES. 

therefore could not be exclusively appropriated by the party se- 
curing the relief, but the relief is granted, not because of an ex- 
clusive right to appropriate such words, but because of fraud 
and deception in their adoption, and similar methods of their 
use with the purpose and intention of attracting customers away 
from rivals in business. (C. C, S. D. Texas. Oct. 10, 1899.) 
Meek, J.] '-^^ Continental Ins. Co. r. Continental Fire Ass'n, 96 
Fed. Rep. 846. 
4. Where, in a suit to enjoin the infringement of a trade- 
mark, no allegation or showing is made as to any insolvency of 
defendant, and no showing of irreparable injury to plaintiff as 
liable to occur during the i)endency of the suit, nor that the 
output of defendant's works is so great as materially to affect 
the market as against plaintiff's output, meanwhile. Held, that 
a preliminary injunction should not issue without strong show- 
ing therefor, and especially where the right to relief prayed for is 
squarely put in issue, and result not clear beyond the pleadings, 
and where its issuance would tend to disturb the established 
and long-continued business of a manufacturing concern. (C. 
C, S. D. Iowa C. D. Sept. 12, 1899.) 

WooLsoN, J.] * E. T. Fairbanks & Co. v. Des Moines Scale 
& Mfg. Co., 96 Fed. Rep. 972. 

XV. Interference. 

1. It is not an essential and important prerequisite that a 
mark should 1)6 affixed or attached to the goods with which it is 
used to make it a valid trade-mark. It is sufficient if the mark 
is so associated irith the goods as to distinguish them by the par- 
ticular mark. (.Jan. 27, 1899.) 

DuELL, C] Hay & Todd Mfg. Co. r. Querns Bros., 86 0. G. 
{323. 

2. Where a mark was used by a company and it became 
recognized by the trade as the distinguishing mark of its goods, 
although not actually affixed thereto, Held, that it is in a posi- 
tion to invoke the aid of equity for the protection of its rights. 

Id. 

3. Where the mark in question had been so associated with 
the goods of the junior party, although not actually affixed 
thereto, that they had become known to the trade by that 



TRADE MARKS AND TRADE NAMES. 287 

mark, it would be an injustice to award })riority to its adver- 
sary, who actually aflixod the mark to the goods, but was the 
later to adopt it. Id. 

4. Where an interference was declared between an ajiplica- 
tion of B, for the registry of the words " American Volunteer " 
for men's boots and shoes, and an application of R for the regis- 
try of the word "Volunteer" for overshoes, the issue being 
stated to be " The word 'Volunteer,' for overshoes," IMd^ that 
the issue in respect to the class of goods is narrower than the 
class of goods upon which B uses his mark, and under the rule 
in Hernsheim et cd. v. Hargravc et cd. (81 0. G. 503) there has 
been such irregularity in declaring the interference that it 
should be dissolved. ^(Oct. 13, 1899.) 

DuELL, C] Joseph Bannigan Rubber Co. r. Bloomingdale, 
89 0. G. 1670. 

5. Held, further, that as the parties have taken testimony and 
the case has been submitted on final hearing, and as there is 
no dispute as to the facts disclosed by the record, no good pur- 
pose would be subserved by directing the examiner to redeclare 
the interference; but it is decided that as B had used the words 
"American Volunteer" in connection with men's shoes before 
R used the word " Volunteer " in connection with overshoes, he 
is entitled as l)etween the two to have the mark registered. /(/. 

6. Held, further, that wdiether or not R is entitled to have 
his mark "Volunteer" registered for use in connection with 
overshoes is an ex parte question to be determined in the first 
instance by the examiner. ' Id. 

XVI. Jurisdiction of Courts. 

1. In the case of the infringement of a trade-mark existing at 
the common law, or in cases of unfair trade, in order to confer 
jurisdiction upon the courts of the United States, there must 
exist diverse citizenship of the parties, and that diverse citi- 
zenship must appear upon the record. The term " inhabitant " 
or "resident" does not necessarily imply "citizenship" and 
cannot be substituted for it. (C. C. A., 7th Cir. Nov. 11, 
1898. ) 

Jenkins, J.] ^== Allen B. Wrisley Co. r. Geo. E. Rouse Soap Co. 
et al, 90 Fed. Rep. 5, 



288 TRADE MARKS AND TRADP: NAMES. 

2. In the absence of the proi)er allegations of citizenship, in 
order to bring the case within the provisions of the statute (21 
Stat. 502) there must be a showing that the trade-mark in- 
volved is used upon goods intended to be transported to a for- 
eign country, or in lawful connnercial intercourse Avith an 
an Indian tribe. Otherwise, the federal courts are without 
jurisdiction. * Id. 

3. The fact that the word " Elgin " had acquired a secondary 
signification might be forceful if the word were shown to be used 
to palm off the goods of one as the goods of another, which, 
coupled with other evidence evincing intent to mislead and de- 
fraud, would be operative to move a court of equity to prevent 
the wrong, and the Federal Court would not have jurisdiction 
in such case unless there exist and appear from the record the 
necessary diverse citizenship of the parties. The remedy for 
fraud existed before the statute relating to trade-marks and was 
not given by it, but recognizing the iitvalidity of the trade-mark 
was applied for the prevention of fraud. (C. C. A., 7th Cir. 
June 6, 1899.) 

Jenkins, J.] * Illinois Watch Case Co. et al. v. Elgin Nat'l 
Watch Co., 94 Fed. Rep. 667; 87 0. G. 
2323. 

4. The courts of the state furnish ample remedy for the 
wrong, if any, under which the appellee suffers, and the Federal 
Courts have no right to redress or prevent trespass upon the 
common-law rights of the appellee, the citizenship of the parties 
forbidding jurisdiction. If it were allowable to a Federal 
Court to assume jurisdiction to grant equitable relief upon the 
ground of fraud, the relief could only extend in restraint of the 
wrong so far as it affected foreign commerce and commerce Avith 
the Indian tribes. */(i. 

XYII. Practice in the Patent Office. 

1. It is incumbent upon the various tribunals of the Patent 
Office having in charge the registration of trade-marks when an 
application for registration is filed to decide at the outset two 
questions: (1) Is applicant the owner, and (2) is that which he 
seeks to register a trade-mark? (May 18, 1899.) 
Duell, C] Ex j)arte The Bronson Company, 87 0. G. 1782. 



TKADK MAUKS AND TIJADK NAMES. 289 

2. Tlie tribunals of tlic I'atcnt Ollicc in deciding the (iiU'stion 
of ownership are not precluded by the statement and declaration 
of ownership made by the applicant from considering and decid- 
ing whether he is or is not the owner of the thing sought to be 
registered. /''■ 

3. It is the i)rovince antl duty of the tril)\uials of tbe Patent 
Office having jurisdiction of tlie registration of trade-marks to 
decide whether the thing presented for registration is a trade- 
mark. An applicant may be the owner of the tiling alleged to 
be his trade-mark, and yet the thing i)resented for registration 
may not be a trade-mark. The statement and declaration of 
applicant that the thing presented for registration is a trade- 
mark are not conclusive. Id. 

X-VIII. Registration. 

1. An association of manufacturers which as an association 
does not make, brand, or sell the article of merchandise in con- 
nection with which the trade-mark is used is not entitled under 
the Act of March 3, 1881, to register a trade-mark. (Feb. 3, 
1899.) 

DuELL, C] Ex ixirte The Anti- Adulteration League, 86 0. G. 
1803. 

2. The right to register a trade-mark in the Patent Office is a 
statutory one, and the action of the Office in registering trade- 
marks is limited by the terms of the Acts of March 3, 1881, and 
August 5, 1882. The latter act need not be considered, and if 
there is a statutory right vested in appellant to register the 
mark it must be found in the Act of March 3, 1881. B}' that 
act it is provided — 

that the owners of trade-marks used in commerce with foreign nations or with tlie Indian 
tribes, provided such owners shall be domiciled in the United States or located in any 
foreign country or tribe, which, by treaty, convention, or law, affords similar privileges 
to citizens of the United States, may obtain registration of such trade-marks by comply- 
ing with certain requirements. 

Section 2 provides that the statement which is to be recorded 
must be accompanied by — 

a written declaration verified by the person, or by a member of a firm, or by an officer of 
a corporation applying, to the effect that such party has at the time a right to the use of 
the trade-mark sought to be registered, and that no other person, firm or corporation has 
the right to such use, either in the identical form or in any such near resemblance 
thereto as might be calculated to deceive. 

19 



290 TRADE MARKS AND TRADE NAMES. 

Authority is vested in the Commissioner to decide the pre- 
sumptive lawfulness of claim to the alleged trade-mark. Id. 

3. While appellant has adopted the mark, and without doubt 
is entitled to it, yet within tlie meaning of the term ^^ owners" 
as employed in the trade-mark act it does not own the mark. 
The only ownership vested in appellant is that which arises 
from the adoption, and that under the law is not sufficient. 
Adoption must be followed by use. Id. 

4. There is no authority in the trade-mark act permitting the 
Patent Office to register a trade-mark the right to use which is 
farmed out and which is not actually used by the would-be 
registrant. Id. 

5. The Office should not register a composite trade-mark all 
the features of which are objectionable either as being anticipated 
or not a proper subject for registry. (Feb. 15, 1899.) 
DuELL, C] Eximrte Guenther MilHng Co., 86 0. G. 1986. 

XIX. Eight to Use Name of Patented Article. 

1. The patent under which the medicine known by the name 
of "Castoria" was manufactured and sold having expired in 
1885, the name which was descriptive of the article became 
public property and no trade-mark right exists therein, nor 
could such right be acquired by subsequent use. The right to 
manufacture Castoria and the right to use the name in selling it 
are both public property. (Singer Mfg. Co. v. June jMfg. Co., 
163 U. S. 169; 16 Sup. Ct. 1002.) (C. C, W. D. Mo. W. D. 
Feb. 6, 1899.) 

Phillips. J.] * Centaur Co. v. Marshall ct ah, 92 Fed. Rep. 
605. 

2. Where the trade-mark antedated the patent relating to the 
article to which the trade-mark was applied by more than 2|- 
years, and so far as can be seen, it was the name and not the 
patent which gave value to the article. i/cW, that the exclusive 
right to use the trade-inark did not cease upon the expiration of 
the patent. (C. C. A., 2d Cir. Apr. 4, 1899.) 

Shipman, J.] ^ Batcheller f. Thomson (2 cases). 

Thomson r. Batcheller, 93 Fed. Rep. 630. 



THADK MARKS AND TRADE NAMES. 291 

XX. Right to Use Personal Name. 

1. The word '' ' Feathorstone ' in script letters, in a diagonal 
line, and with a forwardly-extending understroke or flourish," 
is merely the name of the applicant and is not registrable in 
view of section o of the trade-mark act of March 3, 1881. 
(Jan. 27, 1899.) 

DuELL, C] Ex parlc A. Featherstone & Co., 86 0. (1. 1497. 

2. The name of an applicant docs not cease to be merely the 
name of the applicant l)ecause it is in script letters and disposed 
diagonally. Its use is an attempt to appropriate that which 
cannot be lawfully appropriated against others of the same 
name. Id. 

3. Where an applicant sought to register as a trade-mark the 
words "Guenther's Best" surrounded by the representation of 
a circular belt or zone bearing a Avreath of wheat-ears. Held, 
that the mark should not be registered, as "Guenther" is an 
ordinary surname and the salient feature of applicant's name, 
while the word " Best" is descriptive, and that the circular belt 
or zone cannot impart any registrable quality to the symbol, as 
the belt or zone is non-essential. (Feb. 15, 1899.) 

DuELL, C] Ex parte Guenther Milling Co., 86 0. G. 1986. 

4. ' ' ^Mlile the right can be denied to no one to employ his 
name in connection with his business, or in connection with 
articles of his own production, so as to show the business or 
product to be his, yet he should not be allowed to designate his 
article by his own name in such way as to cause it to be mistaken 
for the manufacture or goods of another already on the market 
under the same or a similar name. Whether it be his name or 
some other possession, every one, by the familiar maxim, must 
so use his own as not to injure the possession or rights of an- 
other." (C. C. A., 7th Cir. Jan. 3, 1899.) 

Jenkins, J.] * Stuart v. F. G. Stewart Co. et al, 91 Fed. Rep. 
243. 

5. A man may not use his own nan)e to accomjilish a fraud, 
designed or constructive. '-^Id. 

6. A man has no right to use his own name, if he uses it in 
such away as that he misleads the pul)lic, to thtir injury, by 
imi^osing upon them ailicles of his manufacture as those man- 



292 TRADE MARKS AND TRADE NAMES. 

ufacturcd by somebody else, who hr.s a ])rior right to use the 
same name as his. (C. C, D. Ind. Feb. 10, 1899.) 
Baker, J.] * Centaur Co. r. Robinson, 91 Fed. Rep. .S89. 

7. W'^hile one cannot obtain the exclusive right to use a geo- 
graphical name as a trade-mark, and cannot make a trade ma.rk 
of his own name to deprive another of the same name from 
using it in his business, that other may not resort to arti^ce to 
do that which is calculated to deceive the public as to the iden- 
tity of the business or of the article produced and so create 
injury to the other beyond that which results from the similar- 
ity of the name. (C. C. A., 7th Cir. June 6, 1899.) 
Jenkins, J.] * Illinois Watch Case Co. et al. v. Elgin National 

Watch Co., 94 Fed. Rep. 667; 87 0. G. 
2323. 

8. This doctrine does not proceed upon the ground of the in- 
fringement of a trade-mark, but upon the ground of fraud, and 
that equity will not permit one, aside from any question of trade- 
mark, to palm off his goods as the goods of another and so de- 
ceive the public and injure that other. ^Id. 

9. It is not necessary in such cases in order to give a right to 
an injunction that a specific trade-mark should be infringed, 
but that the conduct of the party should show an intent to palm 
off his goods as the goods of another. The allegations respect- 
ing trade-marks are in such cases only "regarded as matter of 
inducement leading up to the question of actual fraud." 

XXI. Statute, Construed. 

1. The })hrase "owners of trade-marks" apj^earing in the 
act of March 3, 1884, manifestly limits the right of registration 
to such person or persons, natural or artificial, as jDossess the 
legal title to that for which registration is sought, and it further 
limits the right of registration to that which is a trade-mark. 
(May 18, 1899.) 

Duell, C] Ex parte The Bronson Company, 87 0. (1. 1782. 

2. There is nothing in section 13 of the trade-mark act which 
takes this case outside the authorities because registration is 
desired for the purpose of registering the alleged trade-mark in 



TKADE MAUKf' AND THADK NAMKS. 293 

a foreign countrv, \vhcrc as a condition precedent to such foreign 
registration })rior registration in the home country of tlic a))i)li- 
cant must first be had. (Nov. 24, 1809. ) 
DuELL, C] ExjMrte Buffalo-Pitts Co., 89 0. (i. 2069. 

3. No additional rights are conferred upon citizens and resi- 
dents of this country under section 13 of the trade-mark act 
•which are not conferred upon them under the other i)rovisions 
of the act. /'/. 

4. A foreigner is not entitled to any other or further riglits 
than those given to citizens of the United States. The phrase 
" as is above allowed to foreigners" renders section 13 of the 
trade-mark act meaningless. /(/. 

5. Congress did not intend to permit the registration of un- 
lawful trade-marks simply for the purpose of permitting the 
owner of such unlawful trade-marks to register the same in a 
foreign country. Id. 

6. The trade-mark act does not make the Patent OfRc^e merely 
a registration office and compel the Commissioner to register a 
trade-mark without permitting him to pass upon the lawfulness 
of the trade-mark presented for registry. Id. 

7. The registry of a trade-mark under the Act of Mar. 3, 
1881, neither adds anything to nor takes anything from the 
right of ownership in such trade-marks, and in a suit not 
pitched upon the statute (/. e., in a suit between citizens of 
different states, alleging infringement generally, covering state 
and interstate commerce) the fact that the trade-mark is regis- 
tered vel non, is a matter of utter irrelevance, for the act above 
referred to only makes registry 'prima fade evidence of owner- 
ship. Trade-marks do not lie in the sphere of patents and 
copyrights. The former are common law rights of property in 
devices used in trade to indicate origin, quality, grade or source 
of manufacture of certain articles, while the latter are govern- 
mental grants of exclusive privileges, and the federal govern- 
ment has sole and exclusive legislative authority over them. 
(C. C. A., 5th Cir. Apr. 11, 1899.) 

Pardee, J.] *Sarrazin v. W. R. Irby Cigar & Tobacco Co. 
Lim., 93 Fed. Rep. 624. 88 0. G. 387. 

8. The constitutionality of the trade-mark act approved 



294 TRADE MARKS AND TRADE NAMES. 

March 3, 1881, held to be fairly doulAful. (C. C. A., 7th Cir. 
June 6, 1899.) 

Jenkins, J.] * Illinois Watch Case Co. ct al. v. Elgin Nat'l 
Watch Co., 94 Fed. Rep. 667. 87 0. G. 2323. 
9. The trade-mark act does not define what shall constitute a 
trade-mark. To determine what the trade-mark is which is 
protected by the act, reference must be made to the common 
law. *Id. 

XXII. Unfair Competition. 

1. The defendant's use of boxes or cartons similar to the 
plaintiff's and nothing more, could not be complained of, for it 
is a common method of packing various articles of merchandise; 
and even if the complainant Avas the first to apply it to packing 
catsup, he has not thereby obtained a monopoly of its use for 
that purpose. Where the question as to whether the imitation 
of packages, boxes and stamps complained of is such as is likely 
to impose on ordinary i)urchasers, exercising such care only as is 
commonly used in purchasing such articles, cannot be answered 
with certainty or safety, in the absence of proof that any one 
has actually been misled, a motion for a preliminary injunction 
was properly denied. (C. C. A., 3d Cir. Nov. 28^ 1898.) 
Butler, J.] *Van Camp Packing Co. r. Cruikshanks Bros. 

Co. 90 Fed. Rep. 814. 

2. Complainants originated, and have for many years used, 
a rose or brilliant copjoer-colored soft metal capsule embossed 
with their name, and other devices as a distinguishing mark for 
their wine; and by reason of the practice of serving such wine 
from an ice-chest or in coolers, the bottle is liable to lose its 
labels before it is shown to the customer, so that in such case 
the capsule is the only easily-available means of identification. 
Defendants are not producers or dealers in champagne, but 
make and sell bottlers' supplies. — The widespread use of col- 
ored capsules among producers of champagne, however, does 
not preclude protection to each separate producer in the use of 
his own color without depriving some new comer of the right 
himself to select and use a colored capsule. The possible com- 
binations of color are so manifold that it is hard to conceive 
how such new comer, honestly endeavoring to dress his goods 



THADE MAUKS AND TKADE NAMES. 295 

in such wise as to mark thoni as his own, could experience any 
difficulty in devising a new capsule. Com})lainants are not 
entitled to a decree enjoining the sale merely of a rose-colored 
capsule, luiembossed, or even with the words "Extra Dry" 
impressed thereon, though of the same size and shape, in the 
absence of evidence that it was not used in a manner to deceive 
customers to comi)lainants' damage, where it is capable of such 
a use as not to injure complainants. (C. C. A., 2d Cir. Dec. 
7, 1898.) 

Per CuKTAM.] *Von INIum et al. v. Witteman et al., 91 Fed. 
Rep. 126. 

3. Where a wrapper for a medicine package contains an erro- 
neous statement as to the general character of the contents of 
the package, but truthfully gives the formula in accordance 
with which the medicine is made, it does not constitute such 
fraud as will defeat the manufacturer's right to relief from 
unfair competition. (0. C, D. Ind. Feb. 10, 1899.) 
Baker, J.] ^K^entaur Co. v. Robinson, 91 Fed. Rep. 889. 

4. If the Centaur Co. through years of experience and labor in 
building up a trade, has caused the public to become ac- 
quainted with an article of its manufacture to which they have 
given the name "Castoria," even though it may not have the 
exclusive right to the use of that name, still other persons have 
no right to appropriate the name in connection with a medicine 
put up in bottles and having wrappers, and a dressing up of 
the goods in such a way that an intending purchaser would be 
deceived into buying it when lie intended to buy that prepared 
by the Centaur Co. */'/• 

5. Where the most casual inspection of the wrappings of 
defendant's packages, their size, shape, the method of wrai)i)ing, 
and the general impression from the imprint on them, shows 
that they do not have such dissimilarity as would arouse the 
suspicion of a careless or unwary purchaser, it amounts to evi- 
dence of an intend(Ml imposition which will be restrained. 

G. While the manufacture of "Castoria" is free to all since 
the expiration of the i)atent, yet no one has the right to dress 
his goods up in such a manner as to deceive an intending })ur- 



296 TRADE MARKS AND TRADE NAMES. 

chaser, and induce him to believe that he is buying those of the 
complainant. Inasmuch as the issue raised in such cases is 
one of fraud, of deceitful representation, or perfidious dealing, 
the intent of the defendant when clearly made out is often 
illuminative of the question to be decided, and such intent may 
be made out from not only direct testimony, but also from clear 
inference from all the circumstances, even where the defendant 
protests that his intention was innocent. (C. C. A., 5th Cir. 
Dec. 13, 1898.) 
SwAYNE, J.] *Centaur Co. v. Neathery, 91 Fed. Rep. 891. 

7. In putting the article on the market the new manufacturer 
must clearly identify his goods, and not engage in unfair com- 
petition, nor do anything which will tend to deceive the public, 
and induce it to take his goods under the belief that they are 
the goods which it, has heretofore Vjeen accustomed to purchase 
under the same name; and where the similarity of the labels 
has that tendency to deceive, and such similarity evidently the 
result of design the use of the deceptive label, or any label 
substantially similar to the original label, which is calculated to 
deceive the public will be enjoined. */rf. 

8. Where the respondents' packages of "Castoria" have 
been so bottled, labeled, prepared, and put upon the market in 
such a form as is calculated to deceive, and does deceive the 
public into the belief that they are buying the preparation 
manufactured and put up by the complainant, they have thus 
infringed upon its lawful rights and are likely to interfere with 
its legitimate profits in the sale of its preparation, and are guilty 
of unfair and fraudulent business methods, and will therefore 
be restrained. (C. C. A., 5th Cir. Dec. 13, 1898.) 
SwAYNE, J.] * Centaur Co. r. Hughes Bros. Mfg. Co., 91 Fed. 

Rep. 901. 

9. It is not the test of infringement to find, upon comparison, 
dissimilarities in two trade-mark wrappers. The purchaser has 
not the advantage of comparison, and he is required only to use 
that care which persons ordinarily exercise under like circum- 
stances. A specific article of approved excellence comes to be 
known by certain catch-words easily retained in memory, or by 
a certain picture which the eye readily recognizes, and where a 



TRADE ISIAUKS AND TRADE .\A:MES. 297 

purchaser desiring the remedy to which his attention had heen 
attracted by advertisement, or which he had before purchased, 
and knew the remedy as "Stuart's Dyspepsia Tablets," and 
that it was in a blue wrapper, the name and the color were pres- 
ent to him; and it would require more than the care ordinarily 
used under like circumstances to expect that he Avould be warned 
by the prefix "Dr.," or to expect that his artistic taste should 
be cultivated to a degree to detect the difference between a light 
blue wrapper and an indigo blue wrapper in a hurried purchase 
of the remedy. (C. C. A., 7th Cir. Jan. 3, 1899.) 
Jenkins, J.] =i' Stuart r. F. G. Stewart Co. et al, 91 Fed. Re]). 
243. 

10. The cardinal rule upon the subject of unfair competition 
is that 1.0 one shall, by imitation or any unfair device, induce 
the public to believe that the goods he offers for sale are the 
goods of another, and thereby appropriate to himself the value 
of the reputation which the other has acquired by his own 
products or merchandise. (C. C. A., 6th Cir, Mar. 7, 1899.) 
Severens, J.] * Proctor & Gamble Co. v. Globe Refining Co., 

92 Fed. Rep. 357. 

11. One cannot make an exclusive appropriation of words or 
marks which he puts upon his goods, and which simply indi- 
cate their superiority, or popularity, or universality in use, and 
no more. If he could, he might thus absorb a privilege which 
is common to all. */''^ 

12. However innocent a person may be of intentional simu- 
tion of another's trade-mark, the equitable jjrinciples which 
underlie the question of fair trade and by which courts of ecpiity 
are guided, will not permit the use of such trade-mark if such 
use amounts to infringement or constructive fraud. The act, 
however innocent, is considered constructively fraudulent if the 
result would tend to unfair trade, to confusion of goods, and to 
interference with the rights of another. (C. C. A., 7th Cir. 
Apr. 11, 1899.) 

Woods, J.] * Manitowoc Pea-Packing Co. r. William Nunison 
& Sons, 93 Fed. Rep. 196. 

13. " The defendants have no right to dress their goods up in 
such manner as to deceive intending purchasers, and induce 



298 TRADE MARKS AND TRADE NAMES. 

them to believe they are buying those of the plaintiff;" (Coats 
V. Thread Co., 149 U. S. 562, 13 Sup. Ct. 96G) but the similar- 
ity of dress which will warrant the interference of the court 
must be determined by the circumstances of each case. (C. C. , 
D. N. J. May 15, 1899.) 

KiRKPATRicK, J.] ^Kroppf ct al. V. Furst et al, 94 Fed. Rep. 
150. 

14. ^Miere the testator of defendant began the manufacture 
of artificial water in New York in 1862, and continued to manu- 
facture and sell large quantities, advertising it as "Schultz's 
Vichy Water," and was solicitous to have the water with his 
name as its manufacturer, and so far from attempting to palm 
it off upon the public as natural Vichy water, he sought to com- 
mend it as an artificial water having substantially the ingredi- 
ents and properties of the natural water, but of greater purity 
and excellence than the water manufactured by his competitors, 
Held, that Avhile the use of the name "Vichy" in connection 
with the water made l)y Schultz may have tended to divert 
to some extent the sales of the complainants', yet it did not 
tend to appreciably confuse the identity of the two articles, for 
if any part of the public bought or used "Shultz's Vichy 
Water" supposing it to be natural Vichy water, they must have 
been very careless or very ignorant persons. (C. C. , S. D. N. 
Y. May 23, 1899.) 

Wallace, J.] *La Republique Francaise ci a/, v. Schultz, 94 
Fed. Rep. 500. 

15. The infringement of trade-marks is the violation by one 
person of an exclusive right of another person to the use of a 
word, mark or symbol. Unfair competition in trade, as distin- 
guished from infringement of trade-marks, does not involve the 
violation of any exclusive right to the use of a word, mark or 
symbol. Two rivals in business competing with each other in 
the same line of goods may have an equal right to the use of 
the same w^ords, marks or symbols on similar articles produced 
and sold b}^ them respectively, yet if such words, marks or sym- 
bols were used by one of them before the other and by associa- 
tion have come to indicate to the public that the goods to which 
they are applied are of the production of the former, the latter 



TRADE MARKS AND TRADE NAMES. 299 

will not be permitted, -with intent to mislead the pnblie, to use 
the Avords, marks or symbols in sueh a manner by trade-dress 
or otherwise, as to deceive or be capable of deceivinjjf the ])ul)lic 
as to the origin, manufacture or ownership of the articles to 
which they are applied; and the latter may be re(|uired, when 
using such Avords, marks or symbols, to place on the articles of 
his own production or the packages in which they are usually 
sold, something clearly denoting the origin, manufacture or 
ownership of such articles, or negativing any idea that they 
were produced or sold by the former. (C. C, D. Del. INlay 5, 
1899.) 

Bradford, J.] ^^'Dennison Mfg. Co. r. Thomas Mfg. Co., 94 
Fed. Rep. 651. 

16. The rule is now settled that a preliminary injunction 
against unfair competition should be awarded only where the 
right is plain and the Avrong beyond reasonable doubt; and 
where an examination of the envelopes in which the defendants 
enclose and sell their goods discloses that they are a misleading 
and intentional simulation of those of the plaintiff, an injunc- 
tion against their use will be awarded. (C. C, E. D. Penn. 
June 27, 1899.) 

Dallas, J.] * Draper v. Skerrett cf ah, 94 Fed. Rep. 912. 

17. The courts have been advancing with respect to the ques- 
tion of protecting persons in their legitimate business enterprises 
from appropriation by others. They Avill restrain persons who 
are engaged in Avhat is called " unfair competition in trade'' 
and Avill prevent them from appropriating the fruits of skill and 
enterprise of others, "Irrespective of any question of trade- 
marks, rival manufacturers have no right, by imitative devices, 
to beguile the public into buying their Avares under the impres- 
sion that they are buying those of their rivals." (Coats v. 
Thread Co., 149 U. S."^562; 13 Sup. Ct. 966.) (C. C, N. D. 
Cal. June 5, 1899.) 

MoRROAV, J.] * California Fig-Syrup Co. v. Worden et aJ., 95 
Fed. Rep. 182. 

18. The fact that a preparation may not as a medicine ac- 
complish all that is claimed for it is not sufficient evidence of 
fraud to deprive the manufacturers thereof of the right to relief 
in a court of equity. *Id. 



300 TRADE MARKS AND TRADE XAMES. 

19. Where complainant's goods had for 25 years ])een put up 
in packages of cjdindrical form, enclosed in a red "wrapper, and 
sold as "Franck's Red Roll Cliicory, " and as such had ac- 
quired a certain degree of popularity in certain localities, a rival 
company known as the "Frank Chicory Company" will be 
restrained from putting up and offering for sale similar goods 
in similar packages under the same colored wrappers, where 
such packages and wrappers are colorable imitations of those of 
complainant, even though the name of the rival company is 
changed so that its distinctive part no longer resembles that of 
the complainant. (C. C, E. D. Wis. June 12, 1899.) 
Seaman, J.] *Franck et aJ. v. Frank Chicory Co. et al., 95 

Fed. Rep. 818. 

20. Where the bill alleges that the complainants and defend- 
ant are competitors in the same line of business; that the de- 
fendant has assumed a trade-name similar to, and in imitation 
of complainants' trade-name, and the public has been deceived 
thereby, and great confusion and injury has resulted to com- 
plainants' business therefrom ; that the incorporators of the 
defendant corporation, before its organization, knew of the 
existence and character of complainants' business, and the 
trade-name under Avhich it was being carried on; and, notwith- 
standing its attention has since been called to the injury which 
it has done to complainants' business, it refuses to desist from 
the use of the name so wrongfully used. Held, that such bill 
states a cause of action for unfair competition, and these facts 
being admitted by demurrer, they are sufficient to justify relief 
by injunction. (C. C, S. D. Ohio W. D. July 31, 1899.) 
Thompson, J.] ^ Block et al v. Standard Distilling & Dis- 
tributing Co., 95 Fed. Rep. 978. 

21. The fact that complainants were doing business as a part- 
nership, under the name "Standard Distilling Company" is 
not sufficient to warrant the assumption as a fact in the case 
that the complainants thereby intended to mislead and cheat 
the public, or that the public was thereby cheated or misled, 
neither is it sufficient to warrant the assumption that they rep- 
resented themselves as a corporation, by using such name 
without more for the purpose of deceiving the public. The 



TKADK MARKS AND THADK NAMKS. -"iOl 

misrepresentation whieh would justify the court in n-fusing 
relief by injunction atiainst unfair competition must Ite such as 
is intended to or does in fact mislead or cheat the public, such 
as operates as a fraud upon the i)ul)lic. *A/. 

22. Originally the name " Waltham " was used in a geo- 
graphical sense, but by continued use it has acquired a 
secondary meaning as a designation of watches of a particular 
class, and purchasers have come to understand that watches 
stamped with the name " Waltham" are watches made by the 
American Waltham Watch Co., and the use of the word by 
another company upon the plates of its watches without some 
accompanying statement which shall clearly distinguish its 
watches from those manufactured by the American Waltham 
Watch Co. constitutes unfair competition, and will he enjoined. 
(C. C, S. D. X. Y. July 28, 1899.) 

TowNSEND, J.] * American Waltham Watch Co. r. Sandman, 
96 Fed. Rep. 330. 

XXIII. Use and Sale as Establishing Title. 

Propert}' in a trade-mark arising from its use in connection or 
association with articles manufactured Ijy a certain party natu- 
rally excludes every other person from the right to use the same 
mark upon the same articles. (Collins Co. v. Cohen, 3 K. & J., 
428; ex parte Langdon and Batcheller, 61 0. G. 286, cited.) 
(Feb. 3, 1899.) 

DuELL, C] Ex parte The Anti-Adulteration League, 86 0. G. 
1803. 

XXIV. What Does Not Constitute. 

Where a system of using letters and numerals upon the parts 
or pieces composing a machine, was originally adopted and used 
with no other purpose than to conveniently designate the size, 
shape and capacity of the article, and to distinguish it from 
other parts, sizes, shapes and adaptability, and with no inten- 
tion to thereby indicate its origin or manufacture, no trade-mark 
right is acquired. Such mark or symbol must be designed, as 
its primary object and purpose, to distinguish each of the arti- 
cles to which it is affixed from like articles produced by others, 
i. e., to point out distinctly the origin or ownership of the 



302 tka.de marks and trade names. 

article to which it is affixed. (C. C. A., 6th Cir. Dec. 19 
1898.) 

LuRTON,J.] ^i^Deering Harvester Co. v. Whitman & Barnes, 
Mfg. Co., 91 Fed. Rep. 876. 



TABLE OF CASES. 



A 

Acme Flexible Clasp Co. v. Carey Mfg. Co. 12, 108, 231 

Adams & Westlake Co. v. E. T. Burrowes Co 207, 217, 226 

Adams & Westlake Co.— E. T. Burrowes Co. v ... 92 

A. Featherstone & Co., eo; jjttrte 291 

Aglav— Pickles I'. ... 71,156 

Aikin-Huber v 148, 152, 171 

Ainsworth-McBride i- 4, 8:5, 208, 251 

Alaska Packers' Ass'n v. Pacific Steam Whaling Co. . . 122, 227, 260 

Allderdice— Crocker v 129, 137, 140 

Allen B. Wrisley Co. v. Geo. E. House Soap Co 287 

Allen— City of Boston u. . . 69,84,114,184,212 

Allen — Societe Anonyme du Filtre Chamberlaud Systeme Pas- 
teur V 74, 119 

Alpha Portland Cement Co. — Huntington Dry Pulverizer Co. v. ■ 122 

American Box Mach. Co. v. Hughes 84, 233 

American Fastener Co.— Consolidated Fastener Co. v. . 120, 122, 125 

American Graphophone Co. v. Hawthorne et al 115 

AmericanGraphophone Co. v. Nat'l Gramophone Co. . . 86, 118, 222 

American Kheostat Co. — Western Electric Co. v 10,111,223 

American Skewer Co. f. Helms 224 

American Soda Fountain Co. — Waldo v 185 

American Waltham Watch Co. v. Sandman 300 

Anchor Electric Co.— Hart & Hegeman Mfg. Co. v. 86, 93, 117, 219, 226 

Ancora I'. Keiper . , 131,154 

Anderson & Dyer v. Lowry 177 

Anderson— King V 111,196,221 

Anti-Adulteration League, fj-parie 289,301 

Antisdel v. Chicago Hotel Cabinet Co 93 

Antisdel— Foster v. . . . 72, 161 

Apollo Incandescent Gaslight Co.— Welsbach Light Co. v. 

90, 122, 219, 231 

Arlington Mfg. Co. ?;. Celluloid Co 91,198,250 

Armstrong — Dickerson v . 126 

Arnold— Deere V 111,204,225,230 

Ashley et a?.— Carter-Crume Co. v 92 

Ashton Yalve Co.— Crosby Steam Gage & Valve Co. v. . . 89, 202, 247 

( 303 ) 



304 TABLE OF CASES. 

Assyrian Asphalt Co.— United States Repair & Guaranty Co. v. 231, 248 
Atliol & Orange St, Ry. Co.— Thomson-Houston Electric Co. v. 75,239 

Athol Mach. Co.— Starrett v 240 

Atlas Glass Co.— United States Glass Co. r 73,110,238 

Atwater v. Castner 93 

Augustus Craft Co.— Sarraziji v 79 

Austin— Winslow v 72, 1-57, 170 

Averell, exjXM-<e 29,33,35,54,198 

Avery— Poole v 178 

Aveyard— Sanford Mills v 169 

B 

Bader v. Vajen 72, 133, 152, 162. 170 

Badische Anilin & Soda Fabrik v. Kalle . . 8, 15, 94, 95, 188, 195, 228 

Badische Anilin & Soda Fabrik v. Matheson 121 

Baker— Nat'l Biscuit Co. i; 284 

Baldwin Cycle-Chain Co.— Ewart Mfg. Co. v 109, 186, 203 

Ball & Socket Fastener Co. v. Cohn 102 

Ball & Socket Fastener Co. v. C, A. Edgarton Mfg. Co. . . .82, 240 

Barnhart Bros. & Spindler, ex parte 252 

Barratt v. Duell, Com. of Patents 72, 254 

Bass, Katcliff & Gretton i". Christian Feigenspan 284, 285 

Bass V. Henry Zeltner Brewing Co 81 

Batcheller v. Thomson 87, 273, 290 

Batcheller— Tliomson r 87, 273, 290 

Bates V. Johnson 56 

Beach v. Hobbs 59, 86, 105, 218, 224 

Beach— Hobbsv 59,86,105,218,224 

Beacon Lamp Co. — Westinghouse Electric & Mfg. Co. v. ■ 12, 193, 230 

Bechmau i". Wood 128, 157, 158, 180, 192 

Bedford u. Duell, Com. of Patents 10,72 

Bennett v. Carr . . . 66, 90 

Bent— Kenney v 83, 243, 251 

Bentley — Burton v 17 

Bernard Co. (E. G.)— Edison Electric Light Co. i' '■ ■ 267 

Bernardin (U. S. ex rel.) v. Duell, Com. of Patents 176, 178 

Betz, ex parte 258 

Binghampton, City of— Pelzer v 90, 116, 184 

Bishop— Lyons v 202, 247 

Blackniore. ex parte 35 

Blakey v. Nat'l Mfg. Co 80, 123 

Block r. Standard Distilling & Distributing Co 102, 181, 300 

Bloom-Maier u 1,188,247 

Bloomingdale— Joseph Bannigan Rubber Co. r 287 

Blum V. Kerngood 235 

Boucher, ex parte 39 



TABLE OF CASES. 305 

3ouie]\, ex jjarte 4."i 

Bowers v. San Francisco Bridge Co 7, 10, 'J4, 'Z22 

Bowsky— Cimiotti Unhairing Co. t' 11.;. 21U, 230, 247 

Bradford Belting Co. — Kisinger-Ison Co. r iS3, 01, 233. 2ol 

Bradley— Hundley v 25, 1G8 

Braggery, lihind 137. 170 

Braintree & W. St. Ry. Co. — Ilawley Fnrnace Co. c 240 

Brattleboro Overall Co.— Corser i; 190,101,200,220,246 

Bresnahan— Trip Giant Leveller Co. v 204, 225 

Breul V. Smith 133 

Bridgeport Mfg. Co. v. Wm. Scliollhorn Co 75, 223 

Briggs V. Diiell, Com. of Patents 58, 79, 200 

JJrill V. St. Louis Car Co 73, 214, 216, 233, 242 

Brill— Uebelacker ^) 130,131,132,150 

Bron.son Co., ea;2)arte 280,288,292 

Brown v. Hoopes . . 53 

Brown — X utter v 240 

Brown (J. E.) Mfg. Co.— Palmer « 87,174,226 

Brown— Eeed Mfg. Co. t) 93 

Brown— Traver v 72, 160 

Buell— Grinnell « 131,149 

Buffalo-Pitts Co., ex parie 283,203 

Bugg— Paget V 146 

~Bn\\\ei\ ex jjurte 55 

Bullier v. Willson 135 

Bullock Electric Co.— Thomson-Hou.ston Electric Co. v 122 

Bundy Mfg. Co. v. Detroit Time Register Co. . 89, 106, 113, 215, 228, 236 

Burke, ex parte ... 85 

Burrell v. Elgin Creamery Co 108, 248 

Burrowes, E. T., Co. 1-. Adams & "Westlake Co 02 

Burrowes, E. T., Co. — Adams & Westlake Co. f 207,217,226 

Burson, ex parte 218 

Burton v. Bentley 17 

Bushnell (X. T.) Co.— Thompson* 81,100,118,231 

Butler, ex parte 279 

Buzzell— Reynolds « 82,211,2.32 

c 

C. A. Edgarton Mfg. Co.— Ball & Socket Fastener Co. v. ... 82, 240 

C. & A. Potts & Co. tJ. Creager 82,90,107,110,233,250 

Cain V. Park 71, 164, 175 

California Fig iSyrup Co. t'. AVorden 299 

C-A\m, ex parte 128,131,141 

Calm t). Schweinitz r. Dolley r. Giesler 135,140 

Cambria Iron Co. V. Carnegie Steel Co. Lim 90,101,241 

20 



306 TABLE OF CASES. 

Campbell Printing-Press & Mfg. Co. — Miehle Printing-Press & 

Mfg. Co. ® 231, 237 

Carleton, ex parte 17 

Carmicliael v. Smith— Sadtler v 135, 144, 152 

Carnegie Steel Co, Lim.— Cambria Iron Co. v 90, 101, 241 

Carnegie Steel Co. Lim. v. United States Mitis Co 74 

Carr— Bennett v 66, 90 

Carr, ex parte 18 

Carroll, exx^arte 22 

Carter-Crume Co. d. Ashley - . •_ 92 

Cary Mfg. Co.— Acme Flexible Clasp Co. 'v 12, 108, 231 

Cary Mfg. Co. v. Neal 7, 243 

Casey— Warren v 78, 88, 235, 244 

Castner — Atwater v 93 

Cathrae, ex parte 43, 51 

Catskill Illuminating & Power Co.— Westinghouse Electric & 

Mfg. Co. r 229 

Celluloid Co.— Arlington Mfg. Co. ® ltl,]98, 250 

Centaur Co. v. Hughes Bros. Mfg. Co 85, 296 

Centaur Co. v. Neathery 85, 296 

Centaur Co. v. Reinecke 86 

Centaur Co. ». Robinson •. . . .271,292,295 

Centaur Co. v. Marshall 290 

Chace, ex parte 42 

Chambers Bros.— Pentield v 77, 87, 112, 197, 206, 226, 234, 245 

Chandler Adjustable Chair & Desk Co. ■». Ileywood Bros. & 

Wakefield Co • 96, 222 

Chandler Adjustable Chair & Desk Co. v. Town of Windham . . 242 
Chandler— Coburn Trolley-Track Mfg. Co. «. . . 83, 189, 212, 242, 244 

Chapman— Thomas v 147 

Chatillon v. Porschner 249 

Chemical Building Co.— Kew York Filter Co. ?) 120,227 

Chester Park Athletic Club Co. — Noonan v 19 

Chicago Hotel Cabinet Co. — Antisdel» 93 

Christy v. Hygeia Pneumatic Bicycle Saddle Co. . . . 78, 191, 192, 246 

Christian Feigenspan— Bass, Batcliff: & Gretton v 284, 285 

Cimiotti Unhairing Co. v. BoAvsky 113, 212. 230, 247 

Citizens' Telephone Co. — Western Electric Co. v 92 

City of Binghamton— Pelzer « 90, 116, 184 

City of Boston v. Allen .' 69, 84, 114, 184, 212 

City of Chicago— Ross w ^ 58,244 

City of Detroit — Von Emperger v 91 

Clausen, ex parte 29,32 

Cleveland Block Co.— Ilartz ?; 61,89,103 

Cleveland Target Co. v. Empire Target Co 232, 241 

Coburn Trolley-Track Mfg. Co. v. Chandler ... 83, 189, 212, 242, 244 
Cochran, ex parte 201 



TABLE OF CASES. 307 

Cohn— Ball & Socket Fastener Co. v 102 

Colliery Engineer Co. v. United Correspondence Schools Co. . . U5, Gli 
Colnnibia Pneumatic AVagon Wheel Co.— "Rubber Tire Wheel 

Co. I- 1!I2, lt>3, 224 

Computing Scale Co. — Iloyt v ISO 

Consolidated Fastener Co. v. American Fastener Co. . . 120, 122, 125 

Consolidated Fastener Co. I'. Hays 113,230 

Consolidated Fastener Co. v. Lehr 233 

Consolidated Fastener Co. t'. Weisner ei oZ 121,233 

Continental Fire Assurance Co.— Continental Ins. Co. v. . .281, 28G 
Continental Ins. Co. r. Continental Fire Assurance Co. . . .281,286 

Corning Brake Shoe Co.— Lappin Brake Shoe Co. v 207, 246 

Corser V. Brattleboro Overall Co IW, 191, 200, 226, 246 

Covert V. Travers Bros. Co 175, 240, 208 

Cramer r. Singer Mfg. Co 107 

Crane Elevator Co.— Overweight Counterbalance Elevator Co. v. 104 

Creager— C. & A. Potts & Co. v 82, 90, 107, 110, 233, 250 

Creamery Package Mfg. Co.— Thatcher Mfg. Co. v 75, 239 

Crocker v. Allderdice 129, 137, 140 

Crocker Chair Co. — Indiana Novelty Co. v 13, 242 

Crompton Loom Wks. — McColl ;> 81,237 

Crosby Steam Gage t^ Valve Co. v. Ashton Valve Co. . . 89, 202, 247 

Cross V. Phillips 72, 154 

Cruikshanks Bros. Co.— A'an Camp Packing Co. v 73, 294 

Curnen— Palmer v 78, 246 

CushmanPaper Box Mac)). Co. y. Goddard . . .80,107,175,237,239 



D 

Dadirrian r. Yacuhian 281 

Daniel, ex parte 42, 44 

Davey Pegging Mach. Co. v. Isaac Prouty & Co 249 

Davis V. Forsyth & Forsyth 164 

Davis— Whittaker v 105 

Dayton Paper-lSTovelty Co. — National Folding-Box & Paper Co. v. 

70,71,104 

De Clyne— Richmond Mica Co. V 62,121 

Decker— Marvel v. . ., 71, 164 

Deere 1^. Arnold f 111,204,225,230 

Deering Harvester Co. *'. AVliitman & Barnes Mfg. Co 75, 302 

Dempsey v. Wood • 130 

Dennison Mfg. Co. v. Thomas Mfg. Co 102, 274, 278, 299 

Des Moines Scale & Mfg. Co.— E. T. Fairbanks & Co. v 286 

Detroit Time Register Co.— Bundy Mfg. Co. v. 89, 106, 113, 215, 228, 236 

Dexter — Trevette '• 

De Wallace v. Scott 72, 166 



308 TABLE OF CASES. 

De Yongh— Palmer » 116,209,238 

Dickerson v. Armstrong 126 

D. M. Osborne & Co.— Ricliartlson v 78, 268 

Dodge— Fowler v 72, 132, 146 

Dodger. Fulton Pulley Co 87,235 

Doig )'. Morgan Machine Co 76, 124 

Dolan— Shaffer t' 137 

Dole V. Kansas City Star Co 65, 67 

Dolley V. Geisler — Calm v. Schweinitz v 135, 140 

Domestic Sewing Mach. Co. — Union Writing Mach. Co. v. . 212, 236 

Donallan v. Tannage Patent Co 92 

Donalian-Tannage Patent Co. ?^ 11,210,227 

Draper v. Skerrett 299 

Du Bon-Rickard v 107, 241 

Duell, Com. of Patents— Barratt v 72, 254 

Duell, CJom. of Patents— Bedford v 10, 72 

Duell, Com. of Patents — Bernardin v 176, 178 

Duell, Com. of Patents— Briggs v 58, 79, 200 

Duell, Com. of Patents— Lo wry i) 11,72 

Duell, Com. of Patents— Marsdeii v 6, 72 

Duell, Com. of Patents— Mower » 2,72,108 

Duell, Com. of Patents— Nimmy r 71,201 

Duell, Com. of Patents— Smith r 72,187,191,196,198 

Duell, Com. of Patents— U. S. ex rel. Bernardin v 176, 178 

Duff Mfg. Co. V. Kalamazoo K. R. Velocipede & Car Co. . . 125, 228 
Duff Mfg. Co. V. :N'orton 60, 124, 232, 250 

E 

Eagle Pencil Co.— Tower i- 88. 114, 221, 235 

Earl— Graham y 76,100,101,225,252,269 

Eastman v. Houston 136 

Eastman v. Houston — Edgecombe v 148 

Eaton & Prince Co. — Overweight Counterbalance Elevator Co. i'. 104 

Economy Gas-Lamp Co.— Magic Light Co. « 91,106,215,241 

Edgarton (C. A.) Mfg. Co.— Ball & Socket Fastener Co. v. . . 82, 240 

Edgecombe v. Eastman v. Houston 148 

Edison v. White 136 

Edison Electric Light Co. v. E. G. Bernard Co 267 

Edison Electric Light Co. v. Peninsular Light, Power and Heat 

Co 115, 185 

Edison Electric Illuminating Co. — Morrin v 19, 188, 205, 221 

E. G. Bernard Co.— Edison Electric Light Co. i' 267 

E. Ingraham Co. f. E. :N. Welch Mfg. Co 77 

Eisner & Mendelsohn Co. — Saxlehner v 275 

Electric Car Co. of America v. jSTassau Electric R. Co. ... 7, 74, 222 
Elgin Creamery Co.— Burrell v 108, 248 



TABLE OF CASES. 309 

Elgin Nat'l Watch Co.— Illinois Watch Case Co. v. S9, 282, 288, 292, 294 

Ellershau?en, f.x jjortc 34 

Elliott V. Harris 120 

Elliptical Carbon Co. t). Solar Carbon & ^Slfg. ('o 234 

Eluiira Water Wks. Co. v. Xew York Filter Mt>. Co 93 

Ehvell— Rente r 72, 134, 14S, 1G2, 2J6 

Empire Target Co.— Cleveland Target Co. r 232,241 

E. N. Welch AJfg. Co. — E. Ingraham Co. u 77 

Essex V. AVoods 139 

Estes V. Gause 259 

Esty r. Newton . . , 71,133,163 

E. T. Burrows v. Adams & Westlake Co 92 

E. T. Burrows— Adams & AVestlake Co. r 207,217,226 

E. T. Fairbanks & Co. v. Des Moines Scale & Mfg. Co 286 

Evans— Rood r 112,225 

Ewart Mfg. Co. v. Baldwin Cycle-Chain Co 109, 186, 203 

F 

Fairbanks (E. T.) & Co. v. Des Moines Scale & Mfg. Co .... 286 

Fairfax — Hutin & Leblanc v 129 

Talk Mfg. Co. V. Missouri R. Co 199, 200, 243 

rargo(F. B.)& Co.— OwatonnaMfg. Co. « 228,270 

Farmer Type-Founding Co.— Nelson v 80, 94, 188, 223, 229 

Farquhar, ex parte 38 

Fauche, ex parte 3 

Featherstone & Co. , ex parte 291 

Feder v. Poyet 97, 98 

Fenton Metallic Mfg. Co.— Office Specialty Mfg. Co. v. 91, 197,211, 251 
Yeucht, ex parte 38 

F. G. Stewart Co.— Stuart ® 84,291,297 

Fish Bros. Mfg. Co.— Fish Bros. Wagon Co. v 255 

Fish Bros. Wagon Co. v. Fish Bros. Mfg. Co 255 

Flomerfelt v. Newwitter 81 

Foley & Co., ex parte 276 

Forschner- Chatillon v 249 

Forsyth et aL— Davis v 164 

Foster «. Antisdel 72,161 

Fowler r. Dodge 72, 132, 146 

France, ex parte 30, 51 

Franck r. Frank Chicory Co 300 

Frank Chicory Co.— Franck v 300 

Franklin & Tonnar, ex ^jarie 24,28 

Fray- Peck, Stow and Wilcox Co. i" 87 

Freckleton— Streat v 136, 160 

Fresno Home Packing Co. — Fruit Cleaning Co. v. 

57, 192, 212, 217, 228, 271 



310 TABLE OF CASES. 

Frick Co. — Geiser Mfg. Co. v -58 

Fruit Cleaning Co. v. Fresno Home-Packing Co. 

57, 192, 212, 217, 228, 271 

Fry V. Eookwood Pottery Co 10,107,199,242 

Fnlton Pulley Co.— Dodge v 87, 235 

Furst— Kroppf v 285, 298 



G 

Gair— Whitney v 224 

Gaitley v. Greene 190, 245 

Gatlimanu v. Hurst 138 

Gause — Estes v 259 

Geisler— Calm ®. Schweinitz «. Dolley ® 135,140 

Geiser Mfg. Co. v. Frick Co 58 

General Electric Co. — Westingliouse Electric & Mfg. Co. v. . . . 61 

Gen'l Electric Co. v. Rah way Electric Light & Power Co 232 

G. F. Heuhlein & Bro., e.x parte 279 

Gibson — Whitney?; ■ . . 154 

Geo. E. Rouse Soap Co.— Allen B. Wrisley Co. « 287 

Gies — Saxlehner v 275 

Gimbel— Hogg v 186, 248 

Gimbel— Shoe v 193 

Ginna 1). Mersereau Mfg. Co 77,203,234 

Globe Refining Co.— Proctor & Gamble Co. tJ 76,119,297 

Goddard—Cushman Paper Box Mach. Co. ® 80,107,237 

Goddard — Cushmau Paper Box Mach. Co. v 80, 175, 239 

Goodwin — Maxwell v 64 

Gormully «fc .Jelfery Mfg. Co. v. Stanley Cycle Mfg. Co. 

6, 209, 213, 220, 269 

Gorton v. Smith — Warner 153 

Graham t;. Earl 70,100,101,225.252,269 

Graham— Maitland i- 60 

Grand Rapids School Furniture Co., ex 2JfH"<(' 277 

Greene— Gaitley v 190, 245 

Greene— Heap u 85,111,215,224 

Griffin v. Swenson 72. 166 

Grinnell r. Buell 131,149 

Groves, ex parte 95 

Guenther Milling Co., ex pa7-ie 290 

Guinzburg— S. Rauh & Co. v 117,236 

H 

Haberman— Lalance & Grosjean Mfg. Co. v 180, 266, 269 

Hake-Stirn Co.— Loewenbach v 77, 197, 245 



TABLE OF CASES. .'51 1 

H;ilK<c ll;ill,fxpm-«c 24,27 

Hallbuuer— Walsh v 183, 150 

Hainbiag- American Packet Co. — Hohorst « 09,71,75 

Ilaiiirick— Loeben v 152, 15(5 

Ilance Bros. «fc AVliite, ex parte . • ■ 27!» 

H and ley ®. Bradley 25, KiK 

Hanifen i\ Liipton 188 

Hanifen v. Price 13, 231 

IhxnVie^ ex parte 259 

Harkness v. Strohni 151 

Harris— Elliott ® 120 

Hart & liegeman Mfg. Co. v. Anchor Electric Co. . 86, 93, 117, 219, 226 

Hartz ®. Cleveland Block Co 61,89,103 

Hathorn Mfg. Co. — Simonds Rolling Mach. Co. v. 

6, 9, 58, 88, 173, 205, 208, 210, 211, 216, 220, 227, 270 
Hathorn Mfg. Co. v. Simonds Rolling Mach. Co. . . . 88, 210, 227, 270 

Hauss— Jobes v. Roberts v 167 

Hawley Furnace Co. ®. Braintree & W. St. Ry. Co 240 

Hawthorne— American Graphophone Co. v 115 

Hay & Todd Mfg. Co. v. Querns Bros 286 

Hays— Consolidated Fastener Co. v 113, 230 

Heap «. Greene 85,111,215,224 

Hearst— McDonald v 66 

Heller— Stokes Bros. Mfg. Co. v 200, 237, 248 

Helms — American Skewer Co. v 224 

Hendrickson — Silverman « 141,153 

Henkle— Morss v 140, 145 

Henry Zeltner Brewing Co. — Bass v 81 

Herzog, ex j:*arte 22,258 

Hetherington— Kasson v 165, 167 

Heublein & Bro., fx jjorte 279 

Hensch, exp«i"ie 49 

Hewitson, ex parte 98 

Heywood Bros. & Wakefield Co.— Chandler Adjustable Chair & 

Desk Co 96, 222 

Hey— Howard v 140, 145, 146 

Hibbard, ex parte 

Hinkle & Ashmore, ex parte 54 

Hirsh— Rose v 69, 70 

Hobbsi'. Beach 59,86,105,218 

Hobbs— Beach v 59, 86, 105, 218 

Hodges— Weikly v 149 

Hoertel v. Raphael Tuck & Sons' Co ...... 63 

Hoffman— Wm. IMann Co. « 249 

Hogg I'. Gimbel . . 186 

Hohorst «. Hamburg-American Packet Co 69,71,75 

Holl is, ex pa?tc 29,30,53 



312 TABLE OF CASES. 

Holmes «. Hurst 67 

Hoopes — Brown « 54 

Horn & Brannen Mfg. Co. v. Pelzer 59, 85, 220, 244 

Houston V. Eastman 136 

Houston — Edgecombe v. Eastman « 148 

Houston, Meeks& Co. — Igleheart Bros, w 169,171 

Howard®. Hey ' 140,145,146 

Howell V. Miller 62, 63, 65, 74 

Iloyt V. Computing Scale Co 186 

Huber v. Aiken 148, 152, 171 

Hughes — American Box-Macli. Co. v 84, 233 

Hughes Bros. Mfg. Co.— Centaur Co. iJ 85,296 

Hughes — Sagendorph v 99, 247 

Hulett V. Long 72, 130, 157, 179 

Humber— Mesinger Bicycle Saddle Co. v 97 

Humphry — Kichardson v 153, 170 

Hunter, ex parte 23, 45, 259 

Huntington Dry Pulverizer Co. v. Alpha Portland Cement Co. . 122 
Huntington Dry Pulverizer Co. v. Newell Universal Mill Co. 223, 268 
Huntington Dry Pulverizer Co.— Whitaker Cement Co. v. . . 89, 236 

Hurst— Gathmann v. . . . 137 

Hurst— Holmes v 67 

Hutin & Leblanc v. Fairfax 129 

Hygeia Pneumatic Bicycle Saddle Co.— Christy v. . 78, 191, 192, 246 



Igleheart Bros. v. Houston, Meeks & Co 169, 171 

Illinois Watch Case Co. v. Elgin Kat'l Watch Co . 89, 282, 288, 292, 294 
Improved Order of Red Men's Hall Ass'n— Overweight Counter- 
balance Elevator Co. ® 79, 109, 210, 213, 271 

Indiana Novelty Co. v. Crocker Chair Co 13, 242 

Indiana Novelty Co. v. Smith Mfg. Co 13, 242 

In re Lamson Consolidated Store Service Co 217 

hx re Nat'l Phonograph Co 52 

International Tooth Crow^n Co. v. Kyle 232 

Irby (W. E.) Cigar & Tobacco Co.— Sarrazin v 19, 78, 278, 293 

Isaac Prouty & Co. — Davey Pegging Mach. Co. v 249 

Isenhart, ex parte 48 

J 

Jackson— New York Filter Mfg. Co. ® 114, 124, 223, 267 

Jennings v. Eogers Silver Plate Co 108 

Jensen— Norton I) 73,114,203,206,214,238,253 

J. L Owens Co.— Sperry Mfg. Co. ® 250 



TABLE OF CASES. 318 

Jobes f. Roberts V. Haiiss ]()7 

John E. Brown Mfg. Co.— Palmer r 87,174,1225 

Johnson— Bates v 56 

Johnson, ra jjarie 15, 17, 49 

Johnson — Lovell v 75, 23-4 

Johnson— Rulifson v 248 

Jolmston V. Woodbury 249 

Joliet Mfg. Co. — Sandwich Enterprise Co. v S5, 2;^4 

Jones Special Mach. Co.— Pentucket Variable Stitching Sewing 

Mach. Co. t' 227 

Joseph Banigan Rubber Co. v. Bloomingdale ... 287 

J. Stevens Arms & Tool Co.— Starrett v 240, 268 

J. W. Reedy Elevator Mfg. Co.— Overweight Counterbahmce 

Elevator Co. «. 1U4 



K 

Kalamazoo R. R. Velocipede & Car Co.— Duff Mfg. Co. v. . . 125, 228 
Kalle— Badische Anilin & Soda Fabrik v. . . 8, 15, 94, 95, 188, 195, 228 

Kansas City Star Co.— D'Ole v 65, 67 

Kasson v. Hetherington 165, 167 

Keiper — Ancora ?; 131,154 

Kellow, ex parte 48 

Kelly V. Springfield Ry. Co 77, 197, 285 

Kenney v. Bent 83, 243, 251 

Kerngood— Bhun v 235 

King ». Anderson 111,196,221 

King & Badendreier v. Libby 142 

Kingman— McBride v 4, 83, 208, 251 

Kisinger-Ison Co. «. Bradford Belting Co 83,91,233,251 

Knight — Palmer v 239 

Knowles Looms Wks.—McColl t) 81,207,237 

Kokernot, ex parte 34 

Kroppf V. Furst 285, 29S 

Kyle— International Tooth Crown Co. v 232 



Lalance & Grosjean Mfg. Co. v. Haberman 180, 266, 269 

Lalance & Grosjean Mfg. Co. v. Matthai 180. 266, 269 

Langen, ex parte 55 

Lamson Consolidated Store Service Co. in re 217 

Laperle & Boulard, ex parte 45 

Lappin Brake Shoe Co. v. Corning Brake Shoe Co 207, 246 



314 TABLE OF CASES. 

La Republique FrauQaise v. ISchultz 268, 282, 298 

Larkin— Michaelis v 214, 234 

Larson, ex parte 23 

Lawler-Morrin v 19, IBS, 205, 221 

Lawrence & Kennedy — Shiels t' 141,146,150,168 

Lawton, ex parte 16 

LeFebvre, ex parte 43 

Lehr — Consolidated Fastener Co. v 233 

Leicester Mills— Powell v 94 

Leland— Nat'l Cash Eegister Co. r 88,112,266 

Leslie — I'racy v 72, 163 

Lettelier ?). Mann 14,190,193,204,244 

Libby — King & Badendreier v, 142 

Lilly, ex parte 42 

Loeben ®. Hamrick 152, 156 

Loewenbach o. Hake-Stirn Co., 77, 197, 245 

Long— Ilulett « 72, 130, 157, 179 

Loomis-Manning Filter Co. — Xew York Filter Mfg. Co. v. 

123, 223, 267 

Lorenz, ex parte ; . . 277 

Louden Macli, Co. v. Montgomery Ward & Co 102 

Lovell V. Johnson 75, 234 

Lowry — Anderson & Dyer « 177 

Lowry r. Duell, Com. of Patents 11,72 

Lozier— Palmer Pneumatic Tire Co. v 84, 173, 174, 243 

Lxiptou — Hanifen v. 183 

Lyons i;. Bishop ■. . . .202,247 



M 

Magic Light Co. i'. Economy Gas-Lamp Co 91,106,215,241 

Maier«. Bloom 1,188,247 

Maitland v. Graham 60 

Manitowoc Pea-Packing Co. v. Wm. Mumsen & Sons .... 78, 297 

Mann— Lettelier v. . . 14, 190, 193, 204, 244 

Marnell— Moore v 226 

Marquet — Saxlehner v ... 275 

Marsden v. Duell, Com. of Patents 6, 72 

Marsh , ex parte 50 

Marsliall— Centaur Co. v 290 

Martin, ex parte 277 

Marvel v. Decker 71 , 164 

Matheson— Badische Anilin & Soda Fabrik v 121 

Matthai— Lalance & Grosjean Mfg. Co 180, 266, 269 

Mawhinney Last Co.— Miller tj 212,240 

Maxwell v. Goodwin . 64 



TABLE OF CASES. 315 

Maxwell— Smith » 2(i],:24G 

MeBride r. Ainsworth 4, s:}, :2(i8, 251 

McBriile v. Kiiigiiian 4, Jv>, 208. 261 

McBritle v. Eandall 4. .s;^, 208, 251 

McBride v. Sickels '. 4, S'i, 2(i8, 251 

McClarin— Way « 82.18(1.244,249 

McColl V. Crompton Loom Wks 81 , 237 

McColl r. Knowles Loom Wks 81,207,237 

McCoimick Harvesting Macli. Co. — Wilson v 7(), 20(), 239 

McConwaj^ & Torley Co. v. Shickle, Harrison & Ho ward Iron 

Co. . . '. 8, 225 

^McDonald v. Hearst 66 

McEwan Bros. Co. ®. McEwan 118,188,192,224 

McEwan— McEwan Bros. Co. t' 118,188,102.224 

McFassell— Thomas Roberts Stevenson Co. t' 84,191,221 

McLoughlin Bros., e.r pa7'fe 181 

McNeely «. Williames . . .9,60,90.101,232 

McNeeley— Williames I- 9,60,90,101,232 

McPhiiil, in re 32 

McPhail— Reiner I' 128 

McTammany v. Paillard . . . .< 238 

Melvin I'. Thomas Potter, Sons & Co 194.213,222 

Meriden Britannia Co. — Smitli v 120 

Mevrell, ex parte . . . 21 

Merritt— New Jersey Wire Cloth Co. v . 248 

Merrow Mach. Co. — Willcox & Gibbs Sewing Mach. Co. v. . . 93, 226 

Merserean Mfg. Co. — Ginna » 77,234 

Mesinger Bicycle Saddle Co. v. Humber 97 

Michigan Alkali Co. — Solvay Process Co. « 73.199,243 

Michaelis «. Larkin " 214,234 

Miehle Pointing- Press & Mfg. Co. v. Campbell Print ing-Pre.ss & 

Mfg. Co 231 , 237 

Miehle v. Reed 1-56 

Miller Down-Draught Furnace Co. — Springfield Furnace Co. v. . 9. 249 

Miller ». Mawhinney Last Co 212,240 

Miller— Howell v 62, 63, 65, 74 

Millheim Electric Tel. Co. v. Western Electric Co 80, 204 

Missouri R. Co.— Falk Mfg. Co. » 199. 200, 243 

Montgomery Ward & Co. — Louden Mach. Co. v 102 

Moore v. Marnell 226 

Morgan Machine Co.— Doig v 76, 124 

Morrin B. Edisonllluminating Co 19,188,205,221 

Morrin «. Lawler 19,188,205,221 

Morris— Schrei tj 70,201,245 

Morss V. Henkle 140, 145 

Moses S. Okun, in re 218 

Mower v. Duell, C^m'r of i'atents 2, 72, 108 



316 TABLE OF CASES. 

Muir, ex parte 276 

isr 

Nassau Electric E. Co. — Electric Car Co. v 7,74,222 

Nassau Electric Ej\ Co. v. Sprague Electric Ry. & Motor Co. . . 126 
Nassau Electric Ry. Co. — Sprague Electric Ry. & Motor Co. v. 

80, 123, 224 

Nat'l Biscuit Co. v. Baker ^284 

Nat'l Cash Register Co. v. Leland 88, 112, 266, 272 

Nat'l Cash Register Co. v. Wright 88, 112, 266, 272 

Nat'l Foldiug Box & Paper Co. v. Dayton Paper Novelty Co. 70, 71 , 104 
Nat'l Gramophone Co. — American Graphophone Co. v. . . 86, 118, 222 

Nat'l Mfg. Co.— Blakey v 80, 123 

Nat'l Phonograph Co., in re 52 

Nat'l Tooth Co.— Standard Dental Mfg. Co. u 181,183 

Nave & McCord Mercantile Co., e.Tj9«rie 282 

Neal— Cary Mfg. Co. v 7, 243 

Neathery— Centaur Co. u 85,296 

Neilsen— Saxlehner v 86 

Nelson v. Farmer Type-Founding Co 80, 94, 188, 223, 229 

Newark Spring Mattress Co.— Ryan v 12, 114, 213, 230 

Newell Universal Mill Co. — Huntington Dry-Pulverizer Co. v. 

223, 268 

Newhall — Pelzer v 59 

New Jersey Wire-Cloth Co. v. Merritt 248 

Newton— Esty u 71.133,163 

Newton Mfg. Co. -y. Wilgus 221,253 

Newton «. Woodward 132, 143 

New York Air-Brake Co.— Westinghouse Air-Brake Co. v. . . 82, 237 
New York Chemical Refining Co.— Welsbach Light Co. ■».... 117 

New York Filter Co. ». Chemical Bldg. Co 120, 227 

New York Filter Mfg. Co.— Elmira Water Wks. Co. v 98 

New York Filter Mfg. Co. v. Jackson 114, 124, 223, 267 

New York Filter Mfg. Co. v. Loomis-Manning Filter Co. 

123, 223, 267 

Newwitter— Flomerfelt v 81 

Nickerson — Richards v 147 

Nimmy 17. Com 'r of Patents 71,201 

Noonan v. Chester Park Athletic Club Co 19 

Norton-Duf£ Mfg. Co. t; 60, 124, 232, 250 

Norton v. Jensen 73, 114, 203, 206, 214, 238, 253 

Noyes, ex parte 26 

Noyes— Perry v 104, 184 

N. T. Bushnell Co.— Thompson I' 81,100,118,231 

Nutter V. Brown 240 



TABLE OF CASES. .'517 

o 

O'Brien— Tubular Rivet cV: Stud Co. I- Ill', 115 

O'Connor, ex parte .31 

Office Specialty Co. i;. Fenton Metallic Mfg. Co. . . . !)1, 197, 211, ii.51 

Ogle— Williams v 72, 134 

Okun, in re 218 

Osborne (D. M.) & Co.— Richardson ;• 78, 2G8 

Osborne, tx parte 41 

Overweight Counterbalance Elevator Co. v. Crane Elevator Co. . 104 
Overweight Connterl)alance Elevator Co. c Eaton iV Prince Co. . 104 
Overweight Counterbalance Elevator Co. v. Improved (3rder of 

Red Men's Hall Ass'n 79, 109, 210, 2K5, 271 

Overweight Counterbalance Elevator Co. r. ,T. W. Reedy Elevatt)r 

Mfg. Co 104 

Overweight Counterbalance Elevator Co. v. Standard Elevator & 

Mfg. Co 104 

Owatonna Mfg. Co. r. F. B. Fargo & Co 228, 270 

Owens (J. L.) Co. — Sperry Mfg. Co. i" 250 

Oxnard & Baur, ex parte 40 

P 

Pacific Steam Whaling Co.— Alaska Packers' Ass'n i\ . . 122, 227, 2G0 

Paget r. Bugg 146 

Paillard— McTamman> r 238 

Palmer i- Curnen 78, 24H 

Palmer y. DeYongh 110,209,237 

Palmer v. .John E. Brown Mfg. Co 87, 174, 225 

Palmer r. Knight 239 

Palmer Pneumatic Tire Co. r, Lozier 84,173,174,243 

Park - Cain r . .71,164,175 

Parsons w. Seelye . .190,201,216,246 

Patent Button Co. v. Pilcher 103, 205, 240 

Patent Button Co. v. Scovill Mfg. Co 7, 245 

Patrick, ex jjavie 38,40 

Peck, Stow & AYilcox Co. v. Fray 87 

Pelzer *-. City of Binghampton 90,110,184 

Pelzer v. Xewhall 59 

Pelzer— Horn & Brannen Mfg. Co. v 59, 85, 220, il4 

Penfield r. Chambers Bros 77, 87, 112. 197, 206, 226, 234, 245 

Peninsular Light, Power cS: Heat Co.— Edison Electric Light 

Co. f 115, 185 

Penner, expa7'ie 27 

Pennsylvania Steel Co. r. Vermilya 73,221 

J'entucket Variable Stitching Sewing Mach. Co. v. Jones Special 

Mach. Co 227 

Perkins, ex jjctrie 17,46,47,187 



318 TABLE OF CASES. 

Perl— Williams v 138 

Peilinsky, fxj?a?'ie 34 

Perry v. Noyes 104. 184 

Person, ex jjarte 42 

Philadelpliia & R. R. Co.— Union Switch & Signal Co. v. . 82, 241, 250 

Phillips— Cross v 72, 154 

Pickles «. Aglar 7],15G 

Pilcher— Patent Button Co. e 103, 205, 240 

Poole V. Avery 178 

Potter, Sons & Co.— Melvin v 194. 213, 222 

PottsCo. (C. & A.) r. Creager 82,90,107,110,233,250 

Powell V. Leicester Mills 94 

Poyet— Feder v 97, 98 

Preston — Sarrazin v 79 

Price— Hanifen v 13. 231 

Pridmore, ex parte 189 

Proctor cS: Gamble Co. V. Globe Refining Co 76,119,297 

Prouty (Isaac) & Co.— Davey Pegging Mach. Co, v 249 

Q 

Querns Bros.— Hay iS: Todd Mfg. Co. « 286 

K 

Rah way Electric Light & Power Co. — Gen'l Electric Co. v. . , . 232 
Rah way Electric Light «& Power Co. — Thomson-Houston Electric 

Co. V 11,247 

Randall— McBride v 4, 83, 208, 251 

Raphael Tuck & Sons Co.— Hoertel v 63 

Raphael Tuck & Sons Co. — Ross w 18,63,74 

Rauh & Co. (S.) I'. Guinzburg 117,236 

Reed Mfg. Co. v. Brown 93 

Reed— Miehle v 156 

Reinecke— Centaur Co. v 86 

Reiner v. McPhail 128 

Rente v. Elwell 72, 134, 148, 162, 216 

Rex Incandescent Light Co.— Welsbach Light Co. v. . 92, 123, 125, 229 

Reynolds r. Buzzell 82,211,232 

Rhind— Bragger v 137, 170 

Richards v. Nickerson 147 

Richardson v. V. M. Osborne & Co 78, 268 

Richardson v. Humphry 153, 170 

Richmond Mica Co. v. DeClyne . 62, 121 

Rickard v. DuBon ... 107, 241 

Risdon Iron & Locomotive Wks. v. Trent 112, 115, 206, 225 

Roberts v. Hauss— Jobes v 167 



TABLE OF CASES. 319 

Robertson, f.r pftr^e 259 

Eobiiison — Centaur Co. c Ii71,292. 205 

Kogers Mfg. Co. v. Rogers si 

Rogers Silver Plate Co.— Jennings r lus 

Rogers— Wm. Rogers Mfg. Co. v 81 

Rogers & Winslow, ex parte 194 

Rookwood Pottery Co.— Fry v 10. 107, 199, 242 

Rood V. Evans 112,225 

Rosback, ex parte 182, 218 

Roscliach r. Walker G, KJl 

Rose V. Ilirsh GO, 70 

Ross V. City of Chicago 58, 244 

Ross V. Raphael Tuck & Sons Co 18, 08, 74 

Rouse, ex parte 37 

Rouse Soap Co.— Allen B. Wrisley Co. v 287 

Rubber Tire Wheel co. i'. Columbia Pneumatic Wagon Wheel Co. 

192, 193, 224 

Rubens v. Wheatlield 88, 246 

Rulifson V. Johnson 248 

Runyau— Ryan v 79, 235 

Ryan v. Newark Spring Mattress Co 12, 114, 213, 230 

Ryan v. Runyon 79, 235 

Ryley, ex parie 15 

s 

Sadtler v. Carmichael v. Smith 135, 144, 152 

Sagendorph i\ Hughes 99,247 

Sandman — American Waltham Watch Co. v 301 

Sandwich Enterprise Co. v. Joliet Mfg. Co. . 85, 234 

Sanford Mills v. Aveyard 169 

San Francisco Bridge Co.— Bowers v 7, 10, 94, 222 

Sargent & Co.— Yale & Towne Mfg. Co 194, 251 

Sarrazin v. Augustus Craft Co 79 

Sarra/in v. Preston 79 

Sarrazin V. W. R. Irby Cigar & Tobacco Co. 19,78,278,293 

Sattley, ex jja/rte 41 

Saxlehner v. Eisner & Mendelsohn Co 275 

Saxlehner v. Gies 275 

Saxlehner v. Marquet 275 

Saxlehner v. Xeilsen 86 

Saxlehner v. Siegel-Cooper Co 275 

Schollhorn (William) Co.— Bridgeport Mfg. Co. r 75, 223 

Schrei r. Morris 70,201,245 

Schultz — La Republique Frangaise I- 208,282,298 

Schweinitz v. Uolley v. Geisler — Calm v 135, 140 



320 TABLE OF CASES. 

Scott, ex parte 5 

Scott— De Wallace v 72, 166 

Seovill Mfg. Co.— Patent Button Co. v 7, 245 

Second Avenue Traction Co. — Thompson i' 88,10(3,117,227 

Seelye— Parsons r 190,201,216,246 

Seyfang, ex %)arte 26 

Shaffer v. Dolan 137 

Shaw, ea?jjarie 26 

Shaw, Hammond & Carney, e.cpa7-ie 282 

Sherman & Harms, ex parte 96, 99 

Shickle, Harrison & Howard Iron Co. — McConway «fc Torley 

Co. r 8, 225 

Shiels r. Lawrence & Kennedy 141,140,150,168 

Shoe V. Gimbel 193, 248 

Sickels— McBride v 4, 83, 208, 251 

Siegel-Cooper Co. — Saxlehner v 275 

Silverman L'. Hendrickson 141,153 

Simonds KoUing Mach. Co. v. Hathorn Mfg. Co. 

58, 88, 173, 205, 208, 210, 211, 216, 220, 227, 270 
Simonds Rolling-Mach. Co.— Hathorn Mfg. Co. r . 6,9, 88,210,227,270 

Singer Mfg. Co. — Cramer v 107 

Skerrett— Draper r 299 

Smith— Breul v 133 

Smith V. Duell, Com. of Patents 72, 187, 191, 196, 198 

Smith r. Maxwell 201,246 

Smith Mfg. Co.— Indiana Novelty Mfg. Co. r 13, 242 

Smith I'. Meriden Britannia Co 120 

Smith — Sadtler r. Carmichael v 135, 144, 152 

Smith u. Ulrich 109,113,207,229 

Smith— Warner v. Gorton v 153 

Societe Anonyme du Filtre Chamberland System Pasteur v. 

Allen 74, 119 

Solar Carbon & Mfg. Co.— Elliptical Carbon Co. v 231 

Solvay Process Co. v. Michigan Alkali Co 73, 199, 243 

Spalding— United States Playing Card Co. « 126, 222, 269 

Spayd, ex parte 278 

Sperry Mfg. Co. v. J. L. Owens Co 250 

Sprague Electric & Motor Co.— Nassau Electric Ry. Co. v. . . . 126 
Sprague Electric Ry. & Motor Co. v. Nassau Electric Ry. Co. 

80, 123, 224 
Springfield Furnace Co. v. Miller Down-Draught Furnace Co. . 9, 249 

Springfield Ry. Co.— Kelly v 77, 197, 235 

S. Rauli & Co. y. Guinzburg 117,236 

Standard Dental Mfg. Co. v. Nat'l Tooth Co 181, 183 

Standard Distilling & Distributing Co.— Block i; 102,181,300 

Standard Elevator & Mfg. Co.— Overweight Counterbalance Ele- 
vator Co. u 104 



TABLE OF CASES. 321 

Standard Fashion ('o., ex parte 280 

Standard Paving Co.— United States Repair cV: Guaranty Co. v . S0,L'3(i 
Stanley Cycle Ufg. Co.— Gormully v. Jeffery Mfg. Co. r. 

(1, 2(ii>. lii:;, 2l'(). iKiO 

Starrelt v. Alliol Macli. Co 240 

Starrett r. J. Stevens Arms & Tool Co 240. 2()8 

Stebbins, e.^; ;)«r<e 2o, 47 

Stevens Arms & Tool Co.— Starrett r 240,2(18 

Stevenson Co. r. McFassell S4, 101,221 

Stewart Co., F. G.— Stuart r 84,201,207 

St. Louis Car Co.— Brill v 73, 214, 2Ui, 238, 242 

Stokes Bros. Mfg. Co. r. Heller 2U0, 237, 248 

Streat v. Freckleton 130, 100 

Strohm— Harkiiess r 151 

Stuart V. F. G. Stewart Co 84,201,297 

Stuhmer, ex jxtrte 281 

Swan, eximrte 32 

Swenson— Gritlin r 72, 106 



T 

Tannage Patent Co.— Donallan v 02 

Tannage Patent Co. u. Donallan 11,210,227 

Telfer, ex parte 46 

Thatcher Mfg. Co. v. Creamery Package Mfg. Co 7o, 239 

Theisen, f.x j^arte o4 

Thomas v. Chapman .... 147 

Thomas Mfg. Co.— Dennison Mfg. Co. v 102. 274, 278, 299 

Thomas Potter, Sons ^ Co.— Melvin v 194, 213, 222 

Thomas Roberts Stevenson Co. I". McFassell 84,191,221 

Thomson— Batcheller t' 87,273,290 

Thomson v. Batcheller 87, 273, 290 

Thompsons. X. T. Bushnell Co 81, 100, 118, 231 

Thompson V. Second Avenue Traction Co 88,106,117,227 

Thomson-Houston Electric Co. v. Athol & Orange St. Ry. Co. 75, 239 

Thomson-Houston Electric Co. v. Bullock Electric Co 122 

Thomson-Houston Electric Co. v. Rahway Electric Light & 

Power Co 11, 247 

Tietgens & Robertson, ficpar^e 283 

Tizley, ex parte 28 

Tower I'. Eagle Pencil Co 88,114,221,235 

Town of Windham- Chandler Adjustable Chair & Desk Co. v. ■ 242 

Tracy v. Leslie 72, 163 

Ti-aver v. Brown 72, 160 

Travers Bros. Co.— Covert v 175, 240, 268 

Trent— Risdon Iron & Locomotive Wks. v 112, 115, 200, 225 

21 



322 TABLE OF CASES. 

Tripp Giant Leveller Co. v. Bresnahan 204, 225 

Triumph Electric Co.— Westinghouse Electric & Mfg. Co. v. 83, 97, 251 

Tubular Rivet & Stud Co. v. O'Brien 112,115 

Tuttle, ex parte 41 

u 

Uebelacker V. Brill 130,131,132,150 

Ulrich— Smith v 109, 113, 207, 229 

Union Switch & Signal Co. v. Phila. & R. R. Co 82, 241, 250 

Union Writing Mach. Co. v. Domestic Sewing Mach. Co. . . 212, 236 
United Correspondence Schools Co.— Colliery Engineer Co. v. . 65, 66 
United States ex rel. Bernardin v. Duell, Com. of Patents . . 176, 178 

United States Glass Co. v. Atlas Glass Co 73, 116, 238 

United States Mitis Co. — Carnegie Steel Co. Lim. v. 74 

United States Playing Card Co. v. Spalding 126, 222, 269 

United States Repair & Guaranty Co. v. Assyrian Asphalt Co. 231, 248 
United States Repair <fc Guaranty Co. v. Standard Paving Co. . 80, 236 
Universal Winding Co. v. Willimantic Linen Co 77, 234. 215 



Vajen— Baderv 72,133,152,162,170 

Valiquet, ex parte 47 

Yan Camp Packing Co. v. Cruikshanks Bros. Co 73, 294 

Yerniilya — Pennsylvania Steel Co. i' 73,221 

Yon Emperger v. City of Detroit 91 

Yon Mumm «. Witteman . .74,295 

w 

Waldo V. American Soda Fountain Co 185 

Walker— Roschach v 6, 161 

Walrath, ex parte 129 

Walsli V. Hallbauer . 133, 150 

Waring, ex parte 29, 46 

Warner v. Gorton v. Smith 153 

Warner Bros. Co.— Warren Peatherbone Co. r. ... 94, 103, 240, 245 

Warren v. Casey 78, 88, 235, 244 

Warren Featherbone Co. v. Warner Bros. Co 94, 103, 240, 245 

Way V. McClarin 82, 189, 244, 249 

Weikly v. Hodges 149 

Weisner e( aL— Consolidated Fastener Co. !^ 121,233 

Wellman, ex ^^ai'ie 17,46 

Welsbach liight Co. v. Apollo Incandescent Gas Light Co. 

90, 122, 219, 231 



TABLE OF CA8i:s. 323 

"Welsbacli Light Co. r. Xt'W York Clu'iiiical lit'liiiiiig Co 117 

Welsbju'li I.ieht Co. r. Kex Incandescent Light Co. . 92, 123, 12o, 229 

Western Electric Co. i: American Rheostat Co Id, 111, 223 

IVestern Electric Co. v. Citizens' Telephone Co !(2 

Western Electric Co.— Millheim Electric Tel. Co, '■ H). 204 

Western Electric Co. ?'. Western Tel. Const. Co 7(1,239 

Western Tel. Const. Co.— Western Electric Co. r 70,239 

Westing-house Electric & :Mfg. Co. r. Beacon Lamp Co. . 12, 193, 230 
Westingliouse Electric & jMfg. <'"o. r. Catskill Ilhiminating & 

Power Co 229 

We.stinglion.se Electric & Mfg. Co. v. General Electric Co. ... Gl 
We.stinghonse Air-Brake Co. r. New York Air-Brake Co. . . S2, 237 
AVestinghonse Electric & Mt'g. Co. r. Triumph Electric Co. 

82, 97, 251 

Wheatfield— Bubens v • . . 88, 246 

Whitaker Cement Co. r. Huntington Dry Pulverizer Co. . . . s9, 236 

White— Edison v 136 

Whitman & Barnes Mfg. Co.— Deeriug Harvester Co. r. . . . To, 302 

Whitney v. Gair 224 

Whitney v. Gibson 154 

Whittaker v. Davis et al. 105 

Wilgus— Newton Mfg. Co. V 221,253 

Wilkerson, ex jxnie 87 

AVillcox & Gibbs Sewing Mch. Co. v. Merrow Mach. Co. . . . 93, 225 

Williames !-. McXeeley 9,60,90,101,232 

Williames— McXeeley r 9,60,90,101,232 

Williams r. Ogle 72, 134 

Williams r. Perl 138 

AVillimantic Linen Co. — Universal Winding Co. c 77, 234, 245 

AVilliam Mann Co. v. Hoffman 249 

AVilliam Schollhorn Co. — Bridgeport Mfg. Co. v 75, 223 

Williams v. Ogle ... 72 

Willian\son, ex pa?-ie 32 

Wilson e< aL 1-. McCorniick Harvesting Mach. Co 76,206,239 

Willson — BuUier r ' 135 

Winslow V. Austin 72, 157, 170 

Witteman — Von Mumm '• 74, 295 

Wm. Mumsen & Sons— Manitowoc Pea-Packing Co, v 78, 297 

Wm, Rogers Mfg, Co, v. Rogers 81 

Wood— Bechman r 128,157,158,180,192 

Wood— Denipsey v 130 

Woods— Essex c 139 

Woodward v. Newton 132, 143 

Wordeii — California Fig-Syrup Co, v 299 

Wright and Stebbins, e.7; jxn^e . . 25 

AVright—Nat'l Casii Register Co. r 88,112,266 

W. R. Irby Cigar & Tobiicco Co.— Sarrazin v 19, 78, 2.8, 293 



324 TABLE OF CASES. 

Wrisley Co. v. Geo. E. Rouse Soap Co 287 

Woodbury — Johuston v 249 

T 

Yacubian — Dadirrian v 281 

Yale & Towue Mfg. Co. v. Sargent & Co 194, 251 



INDEX TO SUBJECT MATTEE. 



A 

Abandoned Applications 21-28 

Abandoned Applications, revival of 2G 

Abandoned experiments 12 

Abandoned experiments, priority 160 

Abandonment by one of two joint applicants 24 

Abandonment of Invention 1 

Abandonment of trade-mark 27-5 

Access to and production of papers in interferences 129-131 

Accidental infringements, injunction against 118 

Accidental result no anticipation 11 

Acquiescence in Patent Oflice rejection 214,215 

Actions other than rejection 47 

Actual reduction to practice 163 

Aggregation 196 

Alternatives, trade-mark 276 

Ambiguous claims, how construed 213 

Amending applications in interference 129-131 

Amendment after allowance 31 

Amendment after final rejection 29,30 

Amendment in Patent Office claims limited 214, 215 

Amendment of Api)lication 28-31 

Amendment of bill in e(iuity 270 

Affidavit to obtain interference 28 

Amendment to Patent Law § 4896 4 

Amendments to rules of practice 26U 

Amendments presented to save from abandonment 21, 22, 23, 24 

Analogous use 198-200 

Answer in equity 103 

Anticipation 5 

Anticipation, how tested 5, 6, 7, 8 

Appeal 15 

Appeal and i)etition — designs !'5, 96 

Appeal Fees, return of 18 

Appeal to Commissioner 15 

Ai)peal to the Circuit Court of Appeals 18 

Appeal to Examiners-iu-Chief 15 

Appeal, limit of 17, 18, 19 

(325) 



326 INDEX TO SUBJECT MATTER. 

Appeals dismissed 91-93 

Appeals in interference cases 181-133 

Applications 19 

Applications abandoned 21-28 

Applications, access to pendin<^ 51 

Application, amendment of 2S-31 

Application by administrator of deceased inventor 55, 56 

Application, complete 36 

Application, delay in filing 1, 2 

Applications, division of 36-41 

Applications, drawings -11-44: 

Application, examination of 44-48 

Applications, forfeited 48 

Applications, joint and sole 56 

Applicants' names 49 

Applications, oatli 49 

Applications, petition 51 

Api)lication, public use proceedings^ 51, 52 

Applications, re-issue 52 

Application, specification 53, 54 

Application, suspension of action on 54, 55 

Arbitrary -descriptive trade-mark 277 

Arbitrary words, trade-marks 276 

Arrangemen t, patentabi lity 1 97 

A rt icle of m anuf ac ture 252 

Assignments 56, 57 

Assignment of trade-mark 278 

Attorneys, disbarred 33 

Attorneys, powers of 31 

Attorn eys, suits 266 

Attorneys, use of assignment records 33 

B 

Bar to maintenance of suit 268 

Bill, amendment of 270 

Bill in equity, multifariousness 101, 102 

Blue-prints 43 

Burden of proof, defenses 94 

Burden of proof in interferences 133, 134 

c 

Cases distinguished 58 

Certificate of correction of patents 217, 218 

Cities and Corporations, infringement by 115, 116 

Claims, ambiguous, how construed 218 

Claims, duplicate or redundant 33, 34 



INDEX TO SUBJECT MATTER. 327 

Claims for combination •2]:i 

Claims for conibiiiatious, infringement 114 

Claims for specific element of combination lil.'!. iil4 

Claims, functional and indefinite ;>4. 35 

Claims identical in scope IHO 

Claims limited by.amendmeut in Patent Otlice 214. :il5 

Claimb limited by specification lilo 

Claims limited by their terms ijbj, liio 

Claims of an application 33,;:!4, 35 

Claims, punctuation of 35 

Claims substantially as described I'Kl, 1'17 

Colorable infringement Ill, 113 

Combination, patentability 1S8 

Comity 5H-(jO 

Commissioner of Patents, jurisdiction 17(), 177 

Complete applications 3G 

Composition of matter, patentability 198 

Construction of contracts 61 

Construction of disclaimer 99, 100 

Construction of paten ts 205 

Construction of patents by state of the art 212 

Construction of patents, liberal or broad 208-210 

Construction of Statutes 265 

Construction of St at utes— designs 96-97 

Constructive reduction to practice 105, 165 

Contracts, construction of 61 

Contracts, spec i fie performance f il , 62 

Contributory infringement 11 -I. 115 

Copy righ t able subject-matter 62 

Copyrights 62-68 

Copyrights, false marking 62 

Copyrights, infringement of (Jo 

Copyrights, penalties m 

Copyrights, ])ublicati()M and sale 67 

Correction of i)ateuts by certificate 217, 218 

Coi-rection of i)atents by reissue 218,219 

Costs of suits 26() 

Court of Appeals, I). C 178,179,180 

D 

Damages and Profits 68 

Death of ajiplicant 25 

Deceased inventor, aiiplication by administrator of 55, 56 

Deceptive trade-marks 277 

Decisions of the Commissioner of Patents affirmed 71. 72 

Decisions of the Commissioner of Patents reversed 72 



328 INDEX TO SUBJECT MATTER. 

Decisions of the Commissioners of Patents, affirmed in part and 

reversed in part 72 

Decisions of Federal Conrts, affirmed 72-83 

Decisions of Federal Courts, reversed 83-91 

Decisions of Foreign Courts 93 

Declaration of inteiference 135, 139 

Declaration of interference, application and patent 136-137 

Dedication to the public 3 

Defective or void patents 204 

Defenses 94 

Delay in bringing suit 267 

Delay in tiling application 1, 2, 165 

Delay in filing disclaimer 100 

Delay in filing re-issue application 220 

Demurrer in equity 103 

Descriptive trade-mark 278 

Designs 95-99 

Designs, appeal and petition 95, 96 

Designs, infringement 97 

Designs, interference , 98 

Designs, limited to a single invention 97 

Designs, test of identity 99 

Different processes, division ,. 40 

Diligence in reducing to practice 164-166 

Disbarred attorneys 33 

Disclaimer 99-101 

Disclaimer by amendment in Patent Ofhce 214, 215 

Disclaimer, construction of 99, 100 

Disclaimer, delay in filing 100 

Disclaimer under the statute, E. S. H917 100 

Dispositions of motions for rehearing 93 

Dissolution of inj unction 118 

Dissolution of interferences 139-146 

Dissolution of interference, statutory bars 145 

Dissolution of interference, time allowable for filing motions for. 145 

Dissolution, transmittal of motion for '. 146 

Division of application 36-41 

Division, classification in the Patent Office 36,37 

Division, different processes 40 

Di vi sion practice 38 

Division, process and apparatus 39,40 

■ Division, process and product 40 

Division, status of invention in the arts 41 

Double or analogous use 198, 199, 200 

Drawings 41-44 

Drawings and blue-prints 43 

Drawings and models, as reduction to practice 167 



INDEX TO SUBJECT MATTER. 329 

Drawings, construction of imtents by 211 

Duplicate or redundant claims :v^, 34, 4o 

Duties of the Commissioner of Patents 176, 177, 17S 

E 

Effect of Patent Ottice decision in the courts 146 

Election and Division 29 

Employer and emjiloye, priority 169 

Equitable estoppel 215 

Equity 101-105 

Equity answer 103 

Equity l)ill 101 

Equity, demurrer 103 

Equity jurisdiction 103, 104 

Equity, master's report 104 

Equity, plea 103 

Equity, res adjudicata 105 

Equivalents 105, 106 

Estimation and measure of damages and profits 68 

Estoppel 107, 108 

Estoppel by action of Patent Oflice 215 

Estoppel by election 29 

Estoppel by failure to claim 4 

Esto]ipel by judgment 253 

Ei-sential features of trade-mark 279 

Essentials of valid trade-mark 274 

Evidence 109, 110 

Evidence, admissibility of 109 

Evidence of extensive use patentability 191, 192 

Evidence of result, patentability 192 

Evidence, weighing 109 

Examination of application 44-48 

Ex parte cases, reopening of, in the Patent Office 258 

Ex pa rte proceed ings i n interferences 1 47 

Experiments, abandoned 12 

Experts, testimony of 271 

Extent of protection by patent 9 

F 

Failure to claim invention 3, 4 

Ealse marki ngs, copyrigh ts 62, 63 

Eees 48 

Final rejection, amendment after 29, 30 

Functional and indefinite claims .34, 35 

Foreign jiatents and publications 110 

Foreign patents, limitation of U. S. patents by 219 



330 INDEX TO SUBJECT MATTER. 

Foreign patents, priority based on 160 

Foreign words as trade-marks 280 

Future improvements, assignment of 57 

G 

Generic terms as trade marlvs 281 

Genus and species interferences 138 

Geographical names indicating locality trade-marks 281 

Geographical names used arbitrarily as trade-marks 283 

I 

Implied license 184 

Information and advice to ai)plicants 44, 4"), 46 

Infringement 111-117 

Infringement by licensee 112 

Infringement, claims for conil>iuatioiis 114 

Infringement, contributory 114, 115 

I nf ri ngement , designs 97 

Infringement of copyright 63 

Infringement of process 116 

Infringement, particular cases 116, 117 

Infringement of trade-mark 274, 284 

Injunction 118-126 

Injunction against infringement cf co|)yright 65 

Injunction, dissolution of 118 

Injunction, preliminary 110-123 

Injunction, preliminary, when denied 121-123 

Injunction, preliminary, when granted 120 

Inj unction, prior judgmen t 123 

Injunction, public acquiescence a ground for 125 

Inj unction , trade-marks 285 

Injunction, violation of 125, 126 

Insane Persons, Amendment to Patent Law in regard to 4 

Interferences 126-172 

Interferences, access to and production of papers 129-131 

Interferences, amending applications 129-131 

1 nter f erences, appeals 131-133 

Interference between application and patent 136, 137 

Interferences, burden of proof 133, 134 

Interferences, claims identical in scope 139 

Interferences, declaration of 135-139 

Interference, designs 98 

Interferences, dissolution 139-146 

Interferences, dissolution of, statutory bars 145, 146 

Interferences, genus and species 138 

Interferences, issues 147, 148 



INDEX TO SUBJECT ^FATTKH. 331 

Interfences, judji^int'iit on the record 14!) 

Interferences, practice on linal hearins^- and alter jndyuienl ... loO, lol 

Interference, priority lo(i-l(jii 

Interferences, preliminary statements 151-1 ")(3 

Interference, rednction to practice KJiI-KiT 

Interferences, re-instatement or re-openini>- 107 

Interferences, service of notices ICT, 1(18 

Interferences, snbjects-matter mnst conflict l.'}7 

Interferences, sngges'ing claims KJT 

Interferences, suspension of l(j,s, Kit) 

Interferences, testimony lOO-lTl 

Interference, trade-mark jsti 

Interferences, vacating judgment 171, 172 

Interfering patent 172-174 

Intervening rights 2, 220 

Invention, abandonment of 1 

Invention and skill distinguished 1S;)-1!)1 

Invention and suggestion distinguislied 191 

Invention, failure to claim 3, 4 

In ven t ion , secret 2 

Irrelevant testimony 171 

Issue in interference 147. 148 

J 

Joint and sole inventors 56 

J udicial notice 1 74 . 1 75 

Judgment on the reccnxl in interferences 14!) 

Jurisdiction 17(i-181 

Jurisdiction, Commissioner of Patents 176, 177 

Jurisdiction, equity lO;?, 104 

Jurisdiction of court, trade-mark 287 

Jurisdiction of Federal Courts 17S 181 

Jurisdiction, Secretary of the Interior 178 

L 

Labels 181 

Laches 1, 2, 3 

Laches, suits 267 

Liberal or broad construction of patents 208-210 

License 182-185 

License, implied 1 84 

License to make, use and sell 185 

Licensee, infringement V)y 112 

Limit of api)eal 17, 18, 1!) 

Limitation of U. S. patent by foreign patent 219 



332 INDEX TO SUBJECT MATTER. 

M 

Marking articles patented 1S6 

Master's report 104 

Models 47,49 

Multifariousness of bill inequity 101, 102 

Multiplicity of claims 33, 34 

isr 

Names of applicants 49 

New application ■. 254 

New matter 30,52 

New or renewed oath 49 

New use or adaptation 193 

Nominal damages 71 

Notice, judicial 1 74, 175 

Novelty and invention 193-196 

o 

Oath in application 49, 261 

Oatli in foreign countries 50 

Oath, supplemental 50 

Operativeness and utility 7 

P 

Particular cases of infringement 116, 117 

Parties to a suit 268 

Patentability 187-202 

Patentability, aggregation 196 

Patentability, arrangement 197 

Patentability, combination 188 

Patentability, composition of matter 198 

Patentability, double or analogous use 198-200 

Patentability, evidence of extensive use 191, 192 

Patentability, evidence of result 192 

Patentability, invention and skill distinguished 189-191 

Patentability, invention and suggestion distinguished 191 

Patentability, new use or adaptation 193 

Patentability, substitution of materials 195, 196, 200, 201 

Patentability, utility 192,193 

Patent Laws, Amendment to 4 

Patents '. 202 

Patents, ambiguous claims, how construed 213 

Patents and printed publications -•- 5 

Patents and publications, foreign 110 

Patents, construction of 205 



INDEX TO SUBJECT MATTER. 333 

Patents, constiuction of by drawings 211 

Patents, construction of by specilication 211, 212 

Patents, construction of by state of the art 212 

Patents, construction of, liberal or broad 20S-210 

Patents, claims, substantially as described 210, 217 

Patents, claims, limited by their terms 21o, 216 

Patents, claims limited by amendment in Patent Office 214, 215 

Patents, claims for specific element of combination 213, 214 

Patents, claims for combination 213 

Patents, correction of by certificate 217, 218 

Patents, correction of by reissue 218, 219 

Patents, defective or void 204 

Patented machines, repair of 2(30 

Patents, inierf er ing 1 72-1 74 

Patents, limitation of by foreign patents 219 

Patents, presumption of validity 203, 204 

Patents, reissue 220 

Patents to different inventors, interfering 174 

Patents to same inventor, interfering 172-174 

Patents, valid and infringed 220-233 

238,940. Mar. 15, 1881. Low 232 

248,990. Nov. 1,1881. Brahm 221 

250,700. Dec. 31,1881. Anderson 223 

251,630. Dec. 27, 1881. Palmer 230 

254,093. Feb. 21,1882. Janney 225 

256,089. Apr. 4, 1882. Williames 232 

256,619. Apr. 19, 1882. Barley 225 

265,619. Apr. 19, 1882. Barley 230 

277,134. May 8. 1883. Huntington 223 

281,767. July 24, 1883. Jensen 227 

291.784. Jan. 8,1884. Schultz 227 

291.785. Jan. 8, 1884. Schultz 227 

293,740. Feb. 14, 1884. Hyatt 223,227 

297,671. Apr. 29, 1884. Chambers 226 

301,908. July 15, 1884. Marqua 232 

308,981. Dec. 9, 1884. Palmer 226 

309,727. Dec. 23, 1884. Morrin 220 

310,276. Jan. 6, 1885. Hayes 221 

310,966. .Jan. 20, 1885. Thompson 227 

314,204. Mar. 17,1885. Sw^ett 231 

317,622. May 12, 1885. Buzzell 232 

317,663, May 12, 1885. Mielile 230 

318.859. May 26, 1885. Bowers 222 

318.860. May 26, 1885. Bowers 222 

319,754. June 9, 1885. Simonds 220,227 

322,393. July 14, 1885. Fotis et al 232 

323,372. July 28, 1885. Stanley 230 



334 INDEX TO SUBJECT MATTER. 

Patents, valid and intringed — Continued. 

324.892. Aug. 25, 1885. Spiague 224 

828,019. Oct. 18, 1885. Fowler 231 

841,214. May 14, 1880. Bell & Tainter 222 

350,727. Oct. 12, 188G. Elliott 224 

352,809. Nov. 10, 1880. Hoclistedt et al 223, 230 

3o4,(iG0. Dec. 7, 188(). Hockstedt 223, 230 

354,499. Dec. 14, 1880. AVoodwaid 227 

354,935. Dec. 28, 1880. Eettig 229 

354,954. Dec. 28, 1880. liittig 228 

872,000. Oct. 25. 1887. Corser 220 

872,950. Nov. 8, 1887. Bowers 222 

377,151. Jan. 31,1888. Grosseliii 224 

878,223. Feb. 21, 1888. Tower 221 

378,934. Mar. 0,1888. McNutt 223 

388,258. May 22, 1888. Sutton 230 

388,918. June 5, 1888. Rood ei oZ 225 

384.893. June 19, 1888. Cutcheon 225 

380,121. July7. 1888. Gauthier 221 

893,323. Dec. 4, 1888. Condict 222 

397,290. Feb. 5,1889. King 221 

398,158. Feb. 19, 1889. Jettery 220 

417,908. July 30, 1889. liawson, fi cd 229,231 

312,155. Oct. 1,1889. Anderson 232 

412,279. Oct. 8, 1889. Melvin 222 

419,292. Jan. 14, 1890. Simonds 220.227 

427,220. May 0,1890. Bernard 223 

428,123. May 20, 1890. Morrison 283 

448,734. Dec. 30, 1890. Wilgus 221 

Ee. 11,107. May 20, 1891. Beach 224 

(Original 447,225. Feb. 14, 1891.) 

452.894. May 20, 1891. Bundy 228 

455,993. July 11, 1891. Barrett 228, 232 

403,307. Nov. 17,1891. Morrin 220 

403,808. Nov. 17, 1891. Morrin 220 

472,094. Apr. 5, 1892. Wilcox, eJ «^ 220 

490.105. Jan. 17, 1893. Disbrow, et al 228 

492,987. Mar. 7,1893. McEwan 224 

Be. 11,324. Apr. 18, 1898. Earl 225 

(Original 405,015, Dec. 22, 1891.) 

Be 11,395. Dec. 12, 1893. Hart 225 

(Original 459,700. 1891.) 

513.307. Jan. 23, 1894. Crissen 220 

522,435. July 8, 1894. Smith 229 

524,254. Aug. 7, 1894. Julius -28 

524,502. Aug. 14, 1894. Moore 226 

525,941. Sept. 11, 1894. Bisler .« 222 



INDKX TO SUBJECT MATTKH. 335 

Patents, valid and infrinjied— Coiittjutcd. 

527.102. Oct. !», 1894. Barrett 228 

538,884. jSIay 7, 1895. Scliierliolz 225 

540,80(1. June 11, 1895. Family 231 

543,884. July 30, 1895. La Due 228 

554.675. Feb. 18, 1890. Grant 224 

500.599. May 19, 189(!. Perkins 2:^1 

505,807. Aug. 11, 189(). AVarner 223 

27,272. June 29, 1897. Hill (design) 222 

Patents, valid but not infringed 233-237 

230.409. July 27, 1880. Eutebrouk 233 

247.388. Sept. 20, 1881. Gillelt 234 

200,402. July 4, 1882. Dodge ci «? 235 

277.134. May 8, 1883. Huntington 236 

281,508. June 17, 1883. Hipperling 234 

298,879. May 20, 1884. Munro 233 

305,882. Sept. 20,1884. Bauer 235 

322.194. July 14, 1885. Mieliaelis 234 

322,309. June 14, 1885. Mielile 237 

325,430. Sept. 1,1885. Mead 233 

347,442. Aug. 17, 1886. Eauli 236 

362,204. March 3, 1887. Chambers 234 

364,101. May 31, 1887. Cnshman 236 

376,400. Jan. 10,1888. Stokes 237 

378,223. Feb. 21,1888. Tower 235 

382,032. May 1,1888. Dixon 237 

383,999. June 5, 1888. Stokes 237 

397,254. Feb. 5, 1889. Stokes 237 

399,807. March 19, 1899. Gail 235 

403,143. May 14, 1889. Ryan 235 

408,300. Aug. 0.1889. Ewig 235 

432,115. July 15,1890. Brill 233 

454,845. June SO, 1891. Brooks 236 

465,407. Dec. 15, 1891. Green 234 

465,432. Dec. 15, 1891. Green 234 

480,157. Apr. 2, 1892. Wardwell 234 

501,537. July 18, 1893. Perkins 236 

538,001. Apr. 23, 1895. Westinghouse, ,Jr 237 

570.259. Oct. 27, 1896. McColl 237 

570.260. Oct. 27, 1896. McColl 237 

589,670. Sept. 7, 1897. Warren 235 

Patents, validity not determined; not infringed 237-242 

215,837. May 27, 1879. Roosevelt 239 

227,102.. May 4, 1880. Gassttt ei aZ 241 

233,035. Oct. 5, 1880. Smith 239 

233,746. Oct. 26, 1880. Gassett 241 

246.492. Aug. 30, 1881. Gii^sett 241 



336 INDEX TO SUBJECT IMATTEK. 

Patents, validity not determined; not mfriuged— Continued. 

200,819. July 11, 1882. Arbogast 238 

267.214. i^ov. 7,1882. Norton 238 

271,510. Jan. 30, 1883. Palmer 239 

273,377. Mar. G, 1883. Means 241 

274,363. Mar. 20, 1883. Xorbon ct al 238 

290,697. Dec. 2.5, 1883. McTammany 238 

294,06-5. Peb. 26, 1884. [Norton ct al 238 

319.215. June 2, 1885. Fay 240 

322,060. July 14, 1885. Jordan 238 

327,626. Oct. 6, 1885. Warren 240 

364,161. May 31, 1887. Cusliman ,238 

365,240. June 21, 1887. Coburn 242 

371,839. Oct. 25, 1887. Hebbard 241 

395,668. Jan. 1,1889. Smith 240 

404,414. June 4, 1889. Jones 241 

411,368. Sept. 17, 1889. Barnhart 239 

412,296. Oct. 8, 1889. Richardson 240 

439,920. Nov. 4, 1890. Williams c« a/ 240 

447.179. Feb. 24, 1891. Hawley 240 

448,60. Mar. 17, 1891. Rice 239 

474,997. May 17. 1892. Palmer 238 

491,012. Jan. 31,1893. Ericson 240 

508,5.57. Nov. 14, 1893. Roulstone 241 

604,.338. May 17, 1898. Rickard c« aZ 241 

606,435. June 28, 1898. Williams 241 

30,147. Feb. 7, 1899. Williams (design) 241 

Patents, void in whole or in part 242 

173,261. Feb. 8, 1876. Bragg 244 

199,082. Jan. 8, 1878. McBride 251 

207,343. Aug. 27, 1878. Chambers 245 

208,157. Sept. 18, 1878. Covert 249 

267,032. Nov. 7, 1882. Sperry 250 

270,867. Jan. 16, 1883. Westinghouse 250 

272,311. Feb. 13, 1883. Palmer 246 

275,467. Apr. 10, 1883. Chamber!^ 245 

284,036. Aug. 28, 1883. McBride 251 

295.180. May 18, 1884. Lawrence 248 

297,675. Aug. 29, 1884. Chambers 245 

303,393. Apr. 12, 1884. Maier 247 

304,172. Aug. 26, 1884. Chatillon 249 

315,672. Apr. 14, 1885. Smith 246 

338,506. Mar. 23, 1886. Gaitley 245 

17,235, Apr. 5, 1887. Sagendorph (design) 247 

362,938. May 17, 1887. Cogswell 243 

364,219. June 7, 1887. Corser 246 

364,603. June 7, 1887. Rulifson 247 



INDEX TO SUBJKCT .MATTER. 337 

Patents, void in wlioU^ or in iKirt — Contiiiucd. 

;U)r),24(i. ,Inne L'l, 1S87. Cobuin i^ii 

;M),(i:Jl. July 12, 1^87. Coiner 24(i 

31)8,898. Aug. 28, 1887. Potts, c( a^ -"'0 

373.107. Nov. lo, 1887. Taylor liol 

380.108. Aug. 9, 1888. Parsons 215 

380,993. Sept. 2o, 1888. AVarren -1") 

390,087. Sept. 2-3, 1888. Loewenbacli -4o 

399.029. Mar. o, 1889. Fry -'4'-^ 

408,300. Mar. 9, 1890. Ewig -!0 

408,930. Aug. 13, 188!). Stokes -48 

Pve. 11.079. May 27, 1890. ITcdbaviiy -^" 

(Original 408,879.) 

429.030. June 30, 1890. Jackson e^fi ii4o 

432.115. July 15,1890. Brill -42 

437,901. Oct. 7, 1890. Baker -47 

447,179. Feb. 24, 1891. llawley 249 

450,124. Apr. 7, 1891. Hoffman 251 

450,202. Apr. 30, 1891. Orr 248 

21,410. Mar. 22, 1892. Sclnnid (design) 250 

480.158. Aug. 2, 1892. Wardwell 245 

482,484. Sept. 13, 1892. Lettelier 244 

480,745. Nov. 2, 1892. Wardwell 245 

490,849. Jan. 31, 1893. Johnston 249 

492,811. Mar. 7, 1893. Kisinger 2".l 

493,220. March 7, 1893. Palmer -43 

496,058. Ain-. 25, 189;^. Lohbiller -1~ 

501,537. July 18, 1893. Perkins 248 

500,430. Oct. 10, 1893. McKee et a? 242 

511,923. Jan. 2, 1894. Barrett 250 

532,444. eJan. 15, 1895. Christy 240 

Re. 11,478. Mar. 12, 1895. Stieringer 244. 

(Original Xo. 259,235. June 6, 1882.) 

539,234. May 14, 1895. IIuss 243 

543,072. July 23, 1895. Wohlfarth 240 

545,040. Aug. 20, 1895. Falk 243 

540,360. Sept. 17, 1895. Stevens e( aZ 250 

547,185. Oct. 1,1895. Sclirei 244 

547,732. Oct. 8, 1895. Marble 242 

549,370. Nov. 5, 1895. Kenney 243, 251 

549,375. Nov. 5, 1895. Lettelier 244 

555,434. Feb. 25, 1890. Davey 249 

558,218. Apr. 14, 1890. Shoe 248 

573,789. Dec. 22, 1890. Lyons 247 

581,123. Apr. 20, 1897. Leslie 248 

589,070. Sept. 7, 1897. Warren 244 

593,954. Nov. 10,1897. Way 244,249 

22 



338 INDEX TO SUBJECT MATTER. 

Patents, void in whole or in part — Continued. 

2S,U2. Jan. ll,lS!kS. Cary (design) 242 

Petition in api)liration 51 

Plea in equity 103 

Postotlice address of applicants 51 

Poveity and sicliness, as excuses for delay 165, 1G6 

Powers of attorney HI 

Practice, division 38 

Practice in the Patent Otiiie, Irade-niark 288 

Practice in the U. ». Courts 251 

Prai-tice on final hearing and after judgment, interferences ...150, 151 

Preliminary injunction 119-123 

Preliminary injunction, essentials to niaiitaiu 119 

Preliminary injunction, when denied 121-123 

Preliminary injunction, when granted 120 

Preliminary statements, auiendment of 152-156 

Preliminary statements, interferences 151-156 

Prt sumption of operativeness and utility 7 

Presumiition of validity 203, 204 

Printed publications ,. 5 

Prints 252 

Prints and labels, order in relation lo 253 

Prior adjudication 253-255 

Prior adjudication of patent 121, 123 

Prior art ' 9, 10, 11, 12 

Priority (jf invention 156-162 

Prioiily of invention as affected by foifeiture of application Ill 

Priority, abandoned experiments 160 

Priority, generic and specific inventions 158 

Priority, invention made by tliird party 161 

Prior judgment 123 

Process and apparatus, division 39,40 

Process and product, divisicm 40 

Processes, differe)it, division 40 

Process or method, patentability 194, 195, 200 

Process, infringement of 116 

Products, patentability 195 

Professional secrets 266 

Protection of patents in territory subject to military government 

by U. S. forces ■ -55 

Public acquiescence, injiuictiun 125 

Public use or sale 13,14,15 

Public use proceedings.. 30, 51, 52 

Punctuation of claims 35 



INDEX TO SUBJECT MATTEK. 339 

Q 

Questions leviewablf on Mppeal to Boaid lo, 10 

Questions reviewable on appeal to a Ciicuit Court of Ai)iieals 19 

Questions reviewable on petition 15 

R 

Reduction to piaclice Kiil-KiT 

Reduction to juactice, actual 1('>2, 1G3 

Reduction to practice, constructive 163 

Reduction to practice, dilifjcence 1(14-166 

Reduction to practice, drawings and models 167 

Registration of trade-mark 289 

Reinstatement or re-opening interfcrei;c;'s 167 

Re-issue applications 52 

Re-issue, correction of by re-issue 21S. 219 

Re-issue patents 220 

Rejection 4(), 47 

Renewal of forfeited applications 48 

Re-opening cases in the Patent Oflice 21,258 

Re-opening of interference cases 259 

Repair of patented machines 260 

Bes adjiulimta 105, 258-255 

Revenue Stamps 263 

Revised Statutes, §^ 649 and TOO 19 

Revised statutes, i 914 266 

Revised Statutes, Mf'So 6 

Revised Statutes, ^ 4886 .'!, 18 

Revised Statutes, ? 4887 86,219 

Revised Statutes, {J 4888 86, 208 

Revised Statutes, ? 4889 86 

Revised Statutes, ? 4892 86 

Revised Statutes, M898 3 

Revised Statutes, ? 4896 86 

Re\ised Statutes, ? 4900 186 

Revised Statutes, 'i 4916 218. 219 

Revised Statutes, M917 100 

Revised Statutes, ? 4918 174 

Revised Statutes, ? 4920 6 

Revised Statutes, ? 4928 18, 14 

Revised Statutes, ? 4929 96. 97 

Revised Statutes. ^^ 4952 64 

Revised Statutes, § 4956 67 

Revised Statutes, ? 4962 63 

Revised Statutes, g 4968 62, 63 

Revised Statutes, 'i 4965 67 



340 INDEX TO SUBJI-:CT MATTER. 

Revised Statutes, 2 4970 64 

Revival of abandoned applications 26, 27 

Riglit to use name of patented article as trade-mark 290 

Right to nse personal name as trade-mark 291 

Rule 1) 261 

Rule 10 49 

Rule 26 182 

Rule 32 49 

RuCSa 51 

Kill ■ 41 38. 40, 261 

Rule 42 38 

Rule 47 261,262 

Rule 49 42 

Rule (16 21 

Ride'iS 23, 30 

Rule 70 30 

Rule 75 15 

Rule 78 31 

Rule 92 47 

Rule 94 28 

Rule 96 28 

Rule 105 129 

Rule 106 51, !29 

Rule 107 51 

Rule 108 129 

Rule 109 51, 129, 130, 132, 149 

Rule 122 142, 243-145, 148, 179, 180 

Rule 124 132, 141, 142, 177, 179 

Rule 126 168, 169, 177, 179 

liule 127 146, 151 

RUV129 149 

Rule 130 51 

Rule 139 258 

Rule 142 258 

Rule 170 43 

Rnli- 172 23, 26, 27, 28 

Rules of Practice, amendments to 260-263 

S 

" Same invention." rule 127 151 

Second application 254 

Secretary of the Interior, jurisdiction 178 

Secret invention 2,164,165 

Secret use no anticipation 12 

Service of notice in interferences 167, 168 

Specification, construction of patents by 211, 212 



INDEX TO SUBJECT MATTER. 341 

Specification, sufliciency of o3, 54 

Specific element of combination, claims for 213, 214 

State of the art, construction of patents by 212 

Status of invention in the arts, division 41 

Statutes, construction of 265 

Statute construed, trade-mark 292 

Subsequent applications 48 

"Substantially as described," etc 105, 21f), 217 

Substitution of materials 195, 196, 200, 201 

Suggesting claims 151 

Suggesting claims for interference' 137 

Suits, attorneys 266 

Suits, costs 266 

Suits, laches 267 

Suits, parties 268 

Suits, title 271 

Suppleirental oath 50 

Suppression of evidence on motion 109 

Suspension of action on application 54, 55 

Suspension of interferences 168, 169 

T 

Testimony in interferences 169-171 

Testimony, irrelevant 171, 267 

Testimony of interested parties 170 

Testimony of experts 271 

Test of identity, designs 99 

Test of trademark infringement 296 

Time allowable for filing motions for dissolution 145 

Times for taking testimony 170 

Title suits 217 

Trade-mark, abandonment of 275 

Trade-mark alternatives 276 

Trade-marks and Trade-names 272 

Trademarks and trade-names, unfair competition 294 

Trade-mark, anticipation 276 

Trade-mark , arb i trary 276 

Trade-mark, arbitrary descriptive 277 

Trade-maik assign ment • 278 

Trade-mark, deceptive 277 

Trade-mark, descrii)tive 278 

Trade-mark, essential features 279 

Trade-mark, foreign words 280 

Trade-mark, function of 274 

Trade-marks, generic terms 281 

Trade-mark, geographical names 281 



342 INDEX TO SUBJECT MATTER. 

Trade-marks, geographical names used arbitrarily 283 

Trade-mark, infringement 284 

Trade-mark, injunction 285 

Trade-mark, interference 286 

Trade-mark, jurisdiction of couit 287 

Trade-mark, practice in the Patent Ollice 288 

Trade-mark, registration 289 

Trade-mai-k, right to use name of patented article ."T 290 

Trade-mark, right to use personal name 291 

Trade-mark statute construed 292 

Trade-:nark, test of infringement " 296 

Trade-mark, use and sale as establishing title 301 

Trade-mark, what does not constitute 301 

Trade-marks and Trade-names, words and names. 

'• American Beauty " 276 

" American Volunteer " 287 

" Apple and Honey" 278 

"Bowdoin" 281 

"Bromo-Soda-mint"' 278 

"Buffalo-Pitts" 283 

"Castoria" 290, 295,296 

"Chill stop" 279 

"Continental" 281 

" j)yspepticide " • 276 

"Elgin ' 282,288 

"Ever-ready" .- 280 

"Extra Dry " 295 

" Featherslone " 291 

"Franck'sRed Roll Chicory " 300 

"Gibraltar" 283 

"Gold label" 280 

" Guenther's Best " 291 

"Hansa" 283 

"Swanta" 284 

"Matzoon" (or "Madzoon") 281 

"Nickel Soap" 279 

"Otaka" 276 

"Rose de France " 285 

" Royal Blue " '.. 276 

" Schultz's Vichy Water " 298 

"Standard" 280 

" Standard Distilling Co." 300 

" Stuart's Dyspepsia Tablets " 297 

" Uneeda" 276, 284 

"Vichy" 282 

"Volunteer" 287 

"Waltham" 301 



INDEX TO SUBJECT MATTER. 343 

Two iiiveiitioiis in ono claim 80 

u 

Use and sale as establishing title in trade-mark 301 

Use of assignment records by attorneys o3 

Utility 1!)2, \m 

Y 

Vacating judgments, interferences 171, 172 

Verdict, evidence insudicient to support :>12 

Violation of injunction 12o, V2Cy 

w 

Weighing evidence 110 

What does not constitute a trade-mark 3U1 

Writ of error 2o2 



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