it is perfectly, obvious that this is entirely an erroneous statement. There is no problem in forming the threads into a straight trough form. The problem is to form them into a circular trough. It is this function which is performed by the shoe 100 of Gammeter, and this function, it is perfectly plain, the so-called "guide " E of Lister cannot accomplish and was not intended to accomplish.

Considering, then, the object, the function, and the operation of the device described by the claims, I think it plain that Lister can make none of the claims in issue. Specifically, he has no means for manipulating what is properly called a "fabric" in every one of the claims. He has no means for imparting to fabric or to anything else before application to the core of any curvature of the outline of the core, as called for by each of the claims except Nos. 4 and 5. I think the same structure is required by the words "convex" and "concentric" in claim 4 and the expression "surrounding a portion of said core and acting to cup the fabric" in claim 5. Lister has no means for holding the fabric out of contact with the core until it has been formed, as called for by claim 2. He has no guide-shoe concentric with the core, as called for by claims 10 and 11, and no means between the feed-roll and the core for shaping the fabric approximately to the shape it is to finally occupy, as called for by claim 12.

As to claim 15, while it is questionable whether Lister's rollers A' could operate to smooth the fabric, this might depend upon the degrees of pressures used, and the terms of the claim are broad enough to cover Lister's device. Assuming that claim 15 is patentable, it must be awarded to Lister.

It will be plain from the above discussion that Lister cannot make claims 38 and 39, added to the issue upon Lister's motion to amend, since even if Lister has what is properly a fabric his guide-shoe E has nothing whatever to do with shaping it, and it is, in fact, not shaped at all before being applied to the core, but is shaped by the core itself into the circular trough form.

If the holding that Lister never made the invention in issue at all is correct, there would be no interference-no contest as to who made it first; but if the holding that Lister did not have the invention should turn out on an ex parte appeal to be an error then an interference would exist and would have to be redeclared. The Court of Appeals of the District of Columbia has repeatedly held that the lack of disclosure by one party to an interference is a proper ground for an award of priority to the other party-e. g., Cosper v. Gold and Gold (C. D., 1911, 387; 168 O. G., 787; 36 App. D. C., 302.)

The decision of the Examiners-in-Chief is reversed as to all except claim 15, and priority is awarded to Gammeter on claims 1 to 12.

EX PARTE SCHNEIDER.

Decided June 18, 1918.

253 O. G., 513.

1. REISSUE-DELAY IN APPLYING FOR-BROADER CLAIMS.

Where two years and eight months after the grant of a patent an application for reissue is made with broader claims, Held that the reissue was properly refused.

2. SAME-SAME-INTERVENING RIGHTS.

Where there is a delay of two years in filing a reissue application after the grant of the original patent, Held that intervening rights will be presumed, in accordance with the trend of recent decisions.

3. SAME-SAME-INSUFFICIENT EXCUSE.

Where it appears that a patentee did not discover that the claims of his patent were unduly limited until his attention was called to it more than two years after the grant of the patent, Held that this did not constitute a sufficient excuse for the delay in filing his reissue application. APPEAL from Examiners-in-Chief.

GEARING.

Messrs. Fay, Oberlin & Fay for the applicant.

NEWTON, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Primary Examiner refusing this reissue for broadened claims.

The essential facts in this case are that applicant delayed two years and eight months after the issue of his patent to ask for claims admittedly broader than are the claims of the original patent.

Since the decision of the Supreme Court in Topliff v. Topliff et al. (C. D., 1892, 402; 59 O. G., 1257; 145 U. S., 156) it has become settled law that a reissue applied for more than two years after the issue of the original patent merely to broaden the claims should not ordinarily be allowed.

Justice Brown in that decision, after a most careful review of the authorities on this point, and particularly the case of. Mahn v. Harwood (C. D., 1885, 144; 30 O. G., 657; 112 U. S., 354), in which the Supreme Court had held void a reissue for broader claims granted nearly four years after the issue of the original patent and which discusses the reason why a period of more than two years is ordinarily fatal, held as follows:

That due diligence must be exercised in discovering the mistake in the original patent, and that, if it be sought for the purpose of enlarging the claim, the lapse of two years will ordinarily, though not always, be treated as evidence of an abandonment of the new matter to the public to the same extent that a failure by the inventor to apply for a patent within two years from the public

use or sale of his invention is regarded by the statute as conclusive evidence of an abandonment of the patent to the public.

This decision has been followed in practically all of the recentlydecided cases. See, for example, Felbel v. Aguilar (C. D., 1906, 113; 121 O. G., 1012), which held the delay of three and one-half years fatal; Rawson et al. v. C. W. Hunt Co. (140 Fed. Rep., 716), holding a delay of two years and three months fatal; ex parte Tilden (C. D., 1912, 265; 182 O. G., 971); in re Starkey (C. D., 1903, 607; 104 O. G., 2150; 21 App. D. C., 519); in re Ams (C. D., 1906, 424; 125 O. G., 347, and C. D., 1907, 532; 127 O. G., 3644; 29 App. D. C., 91); Milloy Electric Co. v. Thomson-Houston Electric Co. (148 Fed. Rep., 843); and American Automotoneer Co. v. Porter (232 Fed. Rep., 456).

It is true that in in re Heroult (C. D., 1907, 521; 127 O. G., 3217; 29 App. D. C., 42) there was a delay of slightly more than two years; but the record of that case shows that this matter of delay was never raised and presumably never considered. The point in the case was that Heroult, having originally been granted a patent for an apparatus, should be allowed to reissue and cover a process.

Applicant in his brief seems to have assumed that the Office has taken the position that it would never allow a reissue where there had been a delay of two years; but this is not true. The Supreme Court in Topliff v. Topliff, supra, only held that the lapse of two years

will ordinarily, though not always, be treated as evidence of an abandonment of the new matter to the public.

This necessitates a close scrutiny of applicant's reason for his delay to see if applicant's excuse for delay is "ordinary."

Applicant's reasons for the delay are as follows:

Affiant further deposes and says that the original specification and claims of his patent do not cover an important feature of his invention and his patent is therefore narrower than it should be to properly cover the invention. Affiant further deposes and says that he had no occasion to review his patent from the date of its issue until the present time, and that the insufficiencies in his original specification and claims only came to his attention through others, namely, Mr. Burton W. Sweet, who is employed by him, and his attorneys, Messrs. Fay, Oberlin, and Fay, within the past few weeks, and that he did not delay after he had knowledge of the insufficiency of his original patent.

These reasons are not unusual. They are the ordinary reasons for asking a reissue. These are the reasons given by four-fifths of the applicants for reissue-namely, that after receiving their patent they relied on their attorney's skill and there was nothing to call their attention to the limited nature of the claims until some circumstance, like the sale of the patent or a charge of infringement or something of that nature, awakened the patentee to the fact that his patent was unnecessarily limited.

To grant this reissue to broaden the claims after the two years' delay under such circumstances as outlined by applicant in his reissue oath would be to ignore the Supreme Court decisions in Topliff v. Topliff and Mahn v. Harwood, supra.

Applicant at the hearing seemed to rely on the decision of the Supreme Court in Abercrombie et al. v. Baldwin et al. (post, 329; 246 O. G., 567; 245 U. S., 198); but that decision rather affirms than modifies Topliff v. Topliff, since the pertinent part of the decision turns on whether the original and reissue were substantially the same invention. The arguments in that case were that the reissue should be held invalid under Topliff v. Topliff because it broadened the invention; but the Court in effect said the invention was not broadened, their holding being:

In the reissue after the words "comparatively large size" it was added 66 extend the tube which forms the duct downward so that its end will be always embedded in the carbid."

In other words, the tube is explicitly described as extending to and its end embedded in the carbid, and this, it is contended, was an enlargement of the original patent.

The contention is untenable if there was in the original patent an implication of such length and termination of the tube, and we think there was.

This decision therefore does not modify Topliff v. Topliff. Indeed, the trend of recent decisions is that—

intervening rights will be presumed after a delay of two years. (American, etc., Co. v. Porter, supra.)

I find no error in the decision of the lower tribunal, and it is affirmed.

EX PARTE HOLST AND LEERS.

1. CLAIMS-ALTERNATIVE.

66

Decided March 19, 1918.

253 O. G., 953.

Where claims 1 and 2 are for combinations in the usual form and claim 3 is for the combination above set forth," plus certain additional matter, Held that this imports into claim 3 an alternative meaning, depending on whether the additional matter is to be combined with the features of claim 1 or claim 2.

2. SAME-SAME.

Held that a subsequent claim can only refer back to a single combination for additional matter, in accordance with the long-established practice against allowing alternative claims. (Ex parte Hulbert, C. D., 1893, 74; 63 O. G., 1687.)

3. SAME PRACTICE IN EX PARTE BROWN NOT EXTENDED.

Held that the practice outlined in ex parte Brown (C. D., 1917, 22; 235 O. G., 1355) is not extended beyond what was indicated therein.

ON PETITION.

DOUBLE-DECK DRAWBRIDGE.

Mr. Myron F. Hill for the applicant.

NEWTON, Commissioner:

Petitioners ask that I overrule the Primary Examiner's holding that certain claims which petitioners contend are drawn in accordance with what was permitted in ex parte Brown (C. D., 1917, 22; 235 O. G., 1355) are indefinite, as they refer to a plurality of other claims for their full disclosure.

Claims 1 and 2 are for combinations in the usual form. Claim 3 is for "the combinations above set forth, each having the parts," etc. This evidently imports into claim 3 an alternative meaning, depending on whether the additional element is to be combined with the features of claim 1 or claim 2.

The combinations set up in the remaining claims by reference to several previous claims become still more complex in meaning. Thus claim 9 calls for "the combinations set forth in claims 6, 7, and 8, each having the means," etc. Thus claim 9 is for either one of three different combinations, and claim 10 specifies "the combinations set forth in claim 9 each having means," etc.

To clearly comprehend each of the separate and alternative combinations set up for example in claim 10 would require more mental effort than if each of the combinations were set forth in a separate self-contained claim of the ordinary type.

I am unwilling to extend the practice outlined in ex parte Brown, supra, beyond what was indicated therein-viz., that a subsequent claim can only refer back to a single combination for additional matter. It should never involve alternative combinations. This is only adhering to the long-established practice against allowing alternative claims. (Ex parte Hulbert, C: D., 1893, 74; 63 O. G., 1687.) The petition is denied.

EX PARTE VACUUM OIL COMPANY.

Decided July 3, 1918.

253 O. G.,.953.

1. TRADE-MARKS-APPLICATION-MUST BE RESTRICTED TO ONE CLASS OF GOODS. Action of Examiner of Trade-Marks requiring applicant to restrict the use of his mark to a single class of goods affirmed.

2. SAME-FEES-ACT OF MAY 4, 1906, SECTION 2, CONSTRUED.

Act of May 4, 1906, section 2, construed and Held to require an applicant, to pay a fee for the registration of his mark for every class of articles on which the mark is used.

ON APPEAL.

84150°-19- -6