Automatic Weighing Machine Co. v. Pneumatic Scale Corporation, (C. D., 1909, 498; 139 O. G., 991; 166 Fed. Rep., 288,) the Commissioner said:

Interferences are declared after the applications involved are pronounced to be allowable by the experts of the Office. In determining whether the application is allowable the question of operativeness is one of the primary considertions. (Rule 133.) It hardly need be added that approved applications stand upon an entirely different basis from those which have been rejected by the Office or abandoned by the applicant. (Webster v. Sanford, C. D., 1888, 92; 44 O. G., 567; Beach v. Fowler, C. D., 1889, 187; 48 O. G., 821.) Completed and allowed applications evidence completion of invention, and in suits brought upon patents granted thereon that stage of invention which is usually evidenced by reduction to practice is conclusively assumed to have been reached. Hence the doctrine of “constructive reduction to practice."

In the case of Carty v. Kellogg (C. D., 1896, 188; 74 O. G., 657; 7 App. D. C., 542) the Court of Appeals of the District of Columbia said with reference to an abandoned application:

Failing in proof of actual reduction, Carty is forced to rely upon constructive reduction to practice, and, in order to antedate Kellogg, he claims it by virtue of his abandoned application of 1885. It seems to be a reasonable and wellestablished principle, conformed to in the practice of the Patent Office, that an abandoned application cannot be so considered. (Hien v. Pung, C. D., 1894, 92; 68 O. G., 657.) Having lapsed, it becomes inoperative for any purpose, save as evidence of the date of conception, and to that extent it has already been considered and its weight admitted.

It is argued on behalf of Lindstrom, first, that the additions made by his attorneys in reality constitute a part of the application which he executed, since they were made according to the directions contained in his letter transmitting the executed application to his attorneys, and, second, that the matter is an ex parte one between the Office and Lindstrom and can in no way affect the decision on priority, citing the decision in Davis v. Garrett, (C. D., 1906, 724; 123 O. G., 1991; 28 App. D. C., 9.)

With respect to the first contention the fact that Lindstrom had directed the changes to be made is immaterial, since the application as filed falls directly within the provisions of Rule 31, and is therefore not an application upon which a patent can be granted. As to the second contention it appears that in the case cited, as well as in the cases of Snider v. Bunnell (C. D., 1902, 460; 101 O. G., 2572) and Hopkins v. Scott, (C. D., 1903, 261; 105 O. G., 1263,) in which similar holdings were made, the party whose application it was urged should be stricken from the files was not relying upon his date of filing in order to prevail. In the present case Lindstrom is so relying on his filing date, since, as above pointed out, unless he is entitled to a constructive reduction to practice prior to Ames's filing date the latter is entitled to an award of priority as the first to conceive and the first to reduce to practice, Lindstrom's actual reduction

to practice being subsequent to Ames's filing date. Furthermore, in the case of Davis v. Garrett, supra, it appears that Garrett testified that he executed the papers after the alleged changes, and in his decision on the petition that Garrett's application be stricken from the files (81 MS. Dec., 213) the Commissioner said:

Garrett's oath that he did reëxecute the application on April 18, 1895, must be accepted in the absence of satisfactory proof to the contrary.

As Lindstrom cannot be given the benefit of the filing of his application as constructive reduction to practice, Ames is entitled to an award of priority.

After the termination of the interference the application of Lindstrom will be stricken from the files.

The decision of the Examiners-in-Chief is reversed.

DAVIS v. ZELLERS.

Decided May 19, 1911.

167 O. G., 513.

INTERFERENCE-MOTION TO AMEND FILED AFTER DISSOLUTION OF INTERFERENCE. A motion to amend the issue of an interference under Rule 109 filed after the decision of the Primary Examiner dissolving the interference had become final Held properly dismissed by the Examiner of Interferences.

ON PETITION.

SEWING-MACHINE.

Mr. Obed C. Billman for Davis.

Mr. Andrew V. Groupe and Mr. Wm. N. Cromwell for Zellers.

BILLINGS, Acting Commissioner:

This is a petition by Davis from the decision of the Examiner of Interferences dismissing his motion to add counts to the issue under the provisions of Rule 109.

The record shows that on March 9, 1911, the Examiner granted a motion filed by Zellers to dissolve the interference. He set the limit of appeal to expire March 29. The motion by Davis to add counts was filed March 30, 1911. The Examiner of Interferences dismissed the motion on the ground that as the limit of appeal from the decision dissolving the interference had expired before the motion was filed no interference existed and his jurisdiction over the same had ceased. The Examiner of Interferences was clearly right. This interference is now dissolved, and both applications which were involved therein are under the jurisdiction of the Primary Examiner for further prosecution under the rules and decisions applicable thereto. The petition is dismissed.

EX PARTE AUSTIN, NICHOLS & Co.

Decided February 13, 1911.

167 O. G., 981.

1. TRADE-MARKS-APPLICATION-DRAWING-LINING FOR COLOR.

Where the application states that the color of the mark is not claimed, Held that the Examiner properly objected to the lining of the drawing so as to indicate color.

2. SAME COFFEE AND COCOA GOODS OF THE SAME DESCRIPTIVE PROPERTIES.

A trade-mark for coffee Held properly refused registration in view of a mark so similar thereto as to be liable to cause confusion which had been previously registered for cocoa, since these are goods of the same descriptive properties, (citing Walter Baker & Company v. Harrison, C. D., 1909, 284; 138 O. G., 770; 32 App. D. C., 272.)

3. SAME-SIMILARITY—“ SUNSHINE"-" SUNBEAM."

The words "Sunshine" and "Sunbeam" Held to be so similar that their contemporaneous use upon goods of the same descriptive properties would be liable to cause confusion in the mind of the public and deceive pur. chasers.

ON APPEAL.

TRADE-MARK FOR GROUND BLENDED COFFEE

Mr. Wm. H. Finckel for the applicant.

MOORE, Commissioner:

This is an appeal froin the action of the Examiner of Trade-Marks refusing to register as a trade-mark for blended coffee the trademark shown in the drawing, and which is described in applicant's brief as follows:

The trade-mark comprises a conventional representation of a sunburst, the disk containing the representation of Mercury's wand, flanked by the letters "AN CO," and a scroll superposed upon the rays and bearing the words "Sunbeam" and "Coffee."

The Examiner has objected to the lining of the scroll for blue, in accordance with the chart for draftsmen, in view of the fact that applicant has stated that color was not claimed and has refused to describe the color.

Registration was refused in view of the marks registered to Tillmann & Bendel, certificate No. 33,650, October 31, 1899, and to Consumers' Coffee Co. of N. O. Lmtd., certificate No. 58,636, December 18, 1906.

The Examiner's objection to the conventional lining upon the scroll was clearly correct. Applicant should either describe his mark as having the scroll colored blue or should omit the lining. The latter could be done either by representing the scroll in solid color,

leaving the letters as they now are, or by omitting the lining entirely and presenting the letters in black. This ruling is in accordance with the holding in ex parte M. Zimmermann Company, (C. D., 1907, 94; 127 O. G., 1991.)

The mark of the Consumers' Coffee Co. consists of the word "Sunshine." The word "Sunbeam" appearing in the mark sought to be registered clearly so nearly resembles the word "Sunshine" that their contemporaneous use upon goods of the same descriptive properties is liable to cause confusion in the mind of the public and deceive purchasers. The registration was properly refused upon this ground.

The mark to Tillmann & Bendel was properly cited, for under the decision in Walter Baker & Company, Limited v. Harrison (C. D., 1909, 284; 138 O. G., 770; 32 App. D. C., 272) coffee and cocoa are goods of the same descriptive properties, and the halo in the registered mark is clearly similar to the so-called "sunburst" of applicant. In the registration of Tillmann & Bendel it is stated that the word "Tillmann" and all the words appearing on the drawing are non-essential, the essential feature being "the representation of a halo."

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

EX PARTE BARBER.

Decided June 22, 1911.

168 O. G., 249.

APPLICATION-PROSECUTION-FINAL REJECTION.

In the first Office action the drawing and specification were criticized in certain respects and the claims rejected. Within a month thereafter applicant filed an amendment directing the correction of the formal errors and stated that he desired to submit within a reasonable time an argument with respect to the references and further amendment. The Examiner finally rejected the claims and refused to admit an amendment filed thereafter. Held that the final rejection was premature and that the proper response to applicant's first action, if any was necessary, would have been a letter stating that it was incomplete.

ON PETITION.

COMBINATION STEEL AND CONCRETE CROSS-TIE

Mr. H. C. McLellen for the applicant.

MOORE, Commissioner:

This is a petition from the action of the Primary Examiner finally rejecting the claims in the case and refusing to admit an amendment filed on May 18, 1911.

2097-12-7

The record shows that the first action by the Examiner was made on March 14, 1911, at which time the drawing and specification were criticized in certain respects and the following action given on the merits:

The claims are all rejected for the reason that they are functional and descriptive and also in view of the following patents.

Nine patents were then named. The case contained ten claims. Thereafter applicant made inquiries as to the proper procedure in amending the drawing, which were replied to by the Office, and on April 3, 1911, he filed an amendment directing the correction of the formal errors in the specification and stated:

We desire to submit within a reasonable time, for your consideration, a brief argument on the facts as developed by the references cited by the Examiner, and also such other amendments as may be necessary.

On April 6, 1911, the Examiner finally rejected the claims

in view of the reasons and patents set forth in the Office letter of the 14th ult. On April 17 a letter was received requesting the correction of the drawing. On May 18 an amendment was filed canceling these claims and substituting certain new claims in lieu thereof and arguing the pertinency of the references cited. This is the amendment which the Examiner refused to enter on the ground that the case was under final rejection.

In view of the obviously incomplete response of April 3, 1911, and the statements therein that a further amendment was to be made the Examiner was clearly in error in entering a final rejection. This is especially true in view of the fact that but one prior action had been made by the Office and in that nine references were cited without applying them to the ten claims then in the case. The proper response, if any, to applicant's amendment of April 3 would have been a letter calling attention to the fact that it was incomplete.

While it is not the intention to encourage sectional or piecemeal amendments, nevertheless a reasonable latitude should be afforded an applicant, especially where, as in this case, it appears that his attorney is not wholly familiar with the Office practice.

The petition is granted.

LOWRY v. RUPING.

Decided January 25, 1910.

168 O. G., 525.

INTERFERENCE-PRIORITY.

Priority of invention Held properly awarded to Lowry.

APPEAL from Examiners-in-Chief.