S. PEBERDY.

Extension.

IN THE MATTER OF THE APPLICATION OF SAMUEL PEBERDY FOR EXTENSION OF PATENT NO. 22,197, GRANTED NOVEMBER 30, 1858, FOR LADIES' HOOP-SKIRTS.

(Decided November 27, 1872.)

Extension refused where only five per cent. of the net profits to arise from the extended term were to go to the inventor, and ninety-five per cent. to assignees.

LEGGETT, Commissioner:

The invention sought to be extended by this application consists of a hoop-skirt formed of a single wire, or other suitable material, coiled spirally and combined with the fabric which it supports. This spiral frame-work was designed to take the place of the separate ring hoops or ribs which had previously been used, and it was new and useful when patented. It is, as appears from the testimony, to a considerable extent, valuable and important to the public, and the inventor has derived little or no profit from it. He was diligent in manufacturing and introducing it during the first three years of the term of the patent, but finding the business unprofitable, and being pressed by poverty, be assigned his entire right, title, and interest in the patent to a Mr. Bradley, in 1861, for $40. It does not appear from the evidence that Bradley engaged in the manufacture of this skirt at all. He held the patent till 1867, when he assigned his entire interest in it to a Mr. Lockwood. It does not appear that Lockwood engaged in manufacturing, or made any efforts to introduce the invention. It had begun to be appreciated, however, and suit was brought by him against manufacturers who were pirating it. Lockwood supports this application, under an agreement with the patentee that he (Lockwood) shall pay the expenses of procuring the extension, and shall have all the proceeds arising during the extended term, except five per cent. of the net profits, which is to be paid to the inventor. The only obstacle to the grant of this extension appears here. The law contemplates the grant of extensions for the benefit of inventors and not of assignees and speculators. They are designed to reward those who, without default, have failed to obtain, during the life of their patents, an adequate remuneration for the benefit they have conferred upon the public by making and promulgating useful inventions. I cannot regard five per cent. of the net profits to be derived from this extension as promising a sufficient reward to the inventor, or as a justification for mulcting the public to the extent of ninety-five per cent. for the benefit of a speculator who appears to have done nothing to introduce the invention. To grant this extension upon the evidence presented would be a direct violation of the policy of the law and vexatious to the public, and it must be refused.

THE COLLINS COMPANY, ASSIGNEES.

Appeal.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF THE COLLINS COMPANY, ASSIGNEES, FOR THE REISSUE OF PATENT OF JORDAN & SMITH FOR WRENCHES, GRANTED OCTOBER 10, 1865; REISSUED FEBRUARY 22, 1870.

(Decided November 29, 1872.)

The use of the words "substantially as described" is not objectionable; but they should not be relied upon by the Office to render a claim valid which without them would be invalid.

LEGGETT, Commissioner:

The issue in this appeal is confined to the first claim, which is as follows:

The fixed removable step combined with the bar, and supported thereby against back pressure at the immediate point of connection therewith, substantially as described.

The examiner says:

It is a claim for an invention which can only be distinguished from those referred to by the construction to be given to the words "substantially as described."

It is admitted that the device differs from the references cited, and the applicant maintains that the words "substantially as described" sufficiently indicate the difference and define and limit the invention intended to be secured by this claim. These words should be regarded precisely as other words should be—that is, as having their ordinary meaning-when used in a claim, as elsewhere, and nothing more. There is no artificial significance to be set up for them by which they are to be considered either as desirable or dangerous. There is no objection whatever to their use where they make sense; but they have no legal effect either to enlarge or limit a claim properly drawn, and, so far as the grant of a patent is concerned, they should have no influence one way or the other. The claim should be sufficient in its terms either with or without them, because, either with or without them, its meaning and effect are to be determined in the courts by the light of the specification. The real issue in this case is whether the claim presented is met by the references cited. Otherwise an appeal to the board would not have been in order. I think that as drawn it is met. ited by including the nut F, or otherwise, to clearly distinguish the invention from the references, and then the words "substantially as described " may or may not be used; but, as they serve to well round a claim, I would rather favor their employment than otherwise.

The decision of the board is affirmed.

It should be lim

B. GRAHAM.

Trade-Mark.

APPEAL FROM THE EXAMINER OF TRADE-MARKS IN THE MATTER OF THE APPLICATION OF BYRON GRAHAM FOR THE REGISTRATION OF A TRADE-MARK FOR HARVESTERS.

(Decided November 30, 1872.)

"Manny," as applied to harvesters, is a generic and descriptive name, and is common property as such. The word "New" as a qualifier of "Manny” is held to be equivalent to improved, as such as is descriptive.

Such a mark (The New Manny) cannot distinguish a machine from those of other manufacturers of "Manny" machines with improvements.

THACHER, Acting Commissioner:

Applicant seeks to register the words "The New Manny" as a trademark for a harvesting-machine manufactured by a company of which he is a member.

There is no claim of any right to the term "Manny." In fact, this word has become a generic name, applied for a long number of years past to a large class of machines in general use throughout the country, and is probably common property. If the proposed trade-mark is lawful it is because of the qualifying word "New." Hence it becomes necessary to determine what is its effect in the proposed combination. It is evident that the word is not used as a mere arbitrary term, but as a qualifier of "Manny." I think it would be understood by every one to mean about the same thing as "improved," and to a certain extent, therefore, it is descriptive in nature, implying a change in the construction of the old machine, whereby a new and better one is produced. Applicant cannot arrogate the exclusive right to use a term of this description. It is the common property of all the improvers of the Manny machines, and may be appropriated with equal propriety by any manufacturer of the old Manny machines with improvements.

There is nothing in the mark to distinguish the machines of applicant from those having similar characteristics, but manufactured by others. The law expressly prohibits the registration of "The name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons." By parity of reasoning it would seem that the same requirements should be made when a generic term only is used. If such a test is applied to the present case it will be found to be utterly destitute of the characteristics of a lawful trade-mark. (Dawes & Fanning, Official Gazette, vol. 1, p. 27, sec. 3, and cases cited thereunder.)

As the only essential portion of the proposed trade-mark is descriptive and not distinguishing, I am of the opinion that registration should be denied.

The decision of the Examiner of Trade-Marks is accordingly affirmed.

LLOYD vs. ENGEMAN.

Interference.

IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATIONS OF MONTGOMERY LLOYD, FILED NOVEMBER 17, 1871, AND CHAS. ENGEMAN, FILED AUGUST 3, 1872, FOR COMBINED CLEVIS-PIN AND WRENCH.

(Decided December 3, 1872.)

Practice in interferences.

A case may be referred to the Commissioner in person when, in the judgment of the Examiner of Interferences, the interference has been improperly declared, and the case has passed beyond the jurisdiction of the primary examiner.

The mere exchange of a feature of a device for a different but not novel one of the same kind, to be used in the same way, does not indicate invention.

LEGGETT, Commissioner:

The Examiner of Interferences presents this case for the decision of the Commissioner upon the question whether the alleged invention involved is not met by the references appearing in the record, as cited by the primary examiner, in anticipation of the device as presented by one of the parties, and he submits his opinion that it is. This course 1 have authorized him to take whenever it shall appear manifest to him in any case that a mistake has been made in the declaration of an interference where no patentable subject-matter is involved. Such cases are not likely to often happen, but if they do it is necessary that they be taken notice of and that the proceedings be stopped.

The alleged invention consists in a clevis-pin provided with an adjustable wrench-head, and it is claimed as a new article of manufacture. The wrench-head itself is old, as shown by the patent of W. C. Noyes of May 31, 1864, and clevis-pins with wrench-heads not adjustable have been in common use perhaps from times of antiquity, and one is cited as shown but not claimed in the patent of P. Gallagher, November 26, 1845. What applicants have done is merely to substitute an adjustable wrench-head, which was old, for the old one not adjustable, upon a clevis-pin, and they thereupon claim, as a new article of manufacture, a combined clevis-pin and plow-wrench with adjustable jaws. There was no new conception necessary, no obstacle to overcome, no invention required to accomplish this, and therefore they have not, in the sense contemplated by the law, produced a new article of manufacture. There have been examples in which a transfer of a feature of one article to another and different article has produced a new device and exhibited invention, as, for instance, the gimlet-pointed screw now in such extensive use. So the man who originally put a wrench-head upon a clevispin undoubtedly made an invention. The difference between these and

like examples and the present one is not that an existing feature was exchanged for a different and old one of the same kind, but that an absolutely new feature was added. Pointed screws and wrench-headed clevis-pins were before unknown, and their conception was the work of inventive genius. But as wrench-headed clevis-pins are now old, in order to produce a new article of this kind, in the eye of the law, a new wrench or other feature must be invented and added, and not merely an old one substituted.

The interference is suspended for the time being, and the cases will be returned to the examiner for further examination, in view of the strictures herein made. The usual time allowed for appeal from the decision of the Examiner of Interferences will be granted from the time that the question herein raised is finally settled, provided it is then determined that the applications contain patentable matter.

GOODMAN vs. SCRIBNER.

Interference.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF HORATIO N. GOODMAN, FILED APRIL 2, 1870, AND PATENT NO. 104,653, GRANTED TO GEORGE W. SCRIBNER, JUNE 21, 1870, FOR REED-ORGANS.

(Decided December 7, 1872.)

In an interference between an application and a patent, where it appeared that the patent had been granted during the pendency of the application without an interference: Held, that the parties should be treated as if both were applicants.

LEGGETT, Commissioner:

The subject-matter of this interference is embraced in the following claim presented by Goodman:

The combination in a reed or cabinet organ of an exhaust-chamber (in which the air is rarefied by the action of an exhaust-bellows) with a series of reeds vibrated by a current of air produced by suction, and a series of graduated resonant pipes or tubes for increasing the volume and modifying the quality of the tone produced by the reeds, substantially as set forth.

This subject-matter is shown but not claimed in the patent of Scribner. At the date of the grant of that patent it appears that Goodman had claims pending which should have prevented its grant without an interference. This fact, which appears to have escaped the notice of the board, I think ought to place the parties on an equal footing-that is, they should be regarded precisely as if they were both applicants for patent. Such conclusive proof of priority of invention, therefore, as, the board justly remarked, should be required to warrant the Office in granting a patent to an applicant, after having granted one for the same