in the question whether the distinction is "material and substantial." The invention stated in the claim, so far as it may be patentable aside from the bearing of the copending patent, is the difference between it and the previously-known art. If that difference is nothing except the common subject-matter, there is no real distinction between that common subject-matter and the claim. If the difference between that difference and the common subject-matter is something, but is not a patentable difference, and is thus nothing with reference to patentable distinction, there is no "material and substantial" distinction be tween the claim and the common subject-matter. In other words, the "material and substantial" distinction between subject-matter dis closed in a copending patent which is pertinent to an issue of priority and the whole subject-matter of the claim must be found in the dif ference between the subject-matter of the claim and the previouslyknown art. For the purpose of comparison under these circumstances "patentable distinction" and "material and substantial distinction" are convertible terms. Of course the question whether the features added to the common subject-matter are patentable involves the combination of those features with the common subject-matter. Features which are not individually novel may make a combination with the common subject-matter which is patentable as a combination. When the subject-matter disclosed in a copending patent is pertinent to the issue of priority and was first invented by some one other than the applicant, either the patentee or the public has an established right antagonistic and superior to the right of the applicant, the extent of which is the subject-matter so disclosed. The applicant can transcend that extent of antagonistic right only by including in his claim distinguishing features which required invention, for if the claim includes only distinguishing features which did not require invention it is still, with reference to the question of patentable distinction, a claim to the same invention as that covered by the antagonistic right. It requires nothing more than a clear formulation of the question to show that the invention thus necessary is invention in view of all pertinent facts and that pertinent facts include those concerning the previously-known art. It is with reference to the situation presented when the pertinent subject-matter disclosed in a copending patent is pertinent to the issue of priority and with reference to the date of the patent upon which the abandonment to the public depends that the following language in ex parte Thomas (251 O. G., 848, fifth paragraph) is in point, viz.:

At this point the patent becomes one of anticipation as distinguished from priority.

The conditions attending a case of the type of the pending case predetermine the fact that the pertinent subject-matter disclosed in

the patent is in point on the issue of priority. That subject-matter has been in controversy in a trial on that issue between the same parties. No doubt the losing party in an interference may present claims to subject-matter other than that of the issue and not germane thereto which is disclosed or partly disclosed in the application of the winning party. If, then, the winning party takes out a patent disclosing that subject-matter and containing claims to which that subject-matter is germane, the case presented will not be of the type of the pending case, but of the type of the case considered in ex parte Thomas. In the pending case and in all cases of the same type the pertinent subject-matter disclosed in the copending patent is in point on the issue of priority, since it has been the subject or perhaps part of the subject or otherwise germane to the subject of a trial of the issue of priority. That being so, the antagonistic right established can only be avoided by a claim stating distinguishing features which required invention.

The extension of the rule to cases in which the disclosure of the winning party in the interference is not the subject-matter of the issue in interference, but is germane to that issue in that it forms part of the subject-matter of invention upon which the issue was founded, seems, neglecting possible unforeseen complications or peculiarities in cases, to obviously follow from the foregoing reasoning. Such germane subject-matter common to the two cases would be similar to the subject-matter disclosed in the copending patent in a case of the type of ex parte Thomas which was found to be pertinent to the issue of priority. It would also be subject-matter as to which priority might have been decided in the interference, and therefore covered by the judgment in the interference upon the issue actually contested. (Ex parte Willson, C. D., 1892, 111; 59 O. G., 1257; ex parte Bullier, C. D., 1899, 155; 88 O. G., 1161; Corry & Barker v. Trout v. McDermott, C. D., 1904, 144; 110 O. G., 306; Blackford v. Wilder, C. D., 1907, 491; 127 O. G., 1255; 28 App. D. C., 535; ex parte Phelps, C. D., 1912, 67; 176 O. G., 525.)

The position herein taken agrees with conclusions reached in ex parte Willson, supra; ex parte Bullier, supra; ex parte Robinson, (C. D., 1903, 346; 106 O. G., 1242;) and ex parte McCormick, (C. D., 1904, 575; 113 O. G., 2508;) although it proceeds upon somewhat different grounds. Jolliffe v. Waldo v. Vermeer and Schorik (C. D., 1917, 15; 234 O. G., 671) is in harmony with the position taken herein, at least in its discussion of supposable cases other than that decided. Applicant makes some contentions collateral to his main contention, which I will briefly consider.

It appears that a single assignee has become the owner of both the pending application and the patent to Hammond and Hammond. The effect of the rule herein stated upon the assignee is that of the

rule against double patenting, and the rule herein stated is in that special relation supported by the same reasons as the rule against double patenting. The invention of the pending case, construed as being the difference between the subject-matter of the claims and the prior art, has already been patented. (See ex parte Cahill, C. D., 1893, 78; 63 O. G., 1815; Miller v. Eagle Mfg. Co., C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186, which says:

The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially (not exclusively) to the same patentee;

in re Isherwood, C. D., 1916, 50; 231 O. G., 1211; and C. D., 1917, 226; 245 O. G., 847; 46 App. D. C., 507; Willcox & Gibbs Sewing Machine Co. v. Merrow Machine Co., 93 Fed. Rep., 206.) Benjamin Electric Mfg. Co. v. Dale Co., (158 Fed. Rep., 617) would, if it stood alone, authorize the allowance of claims to different species in one application, but does not traverse the rule that the difference between the subject-matter claimed in two patents must be a patentable difference.

Applicant contends that—

it results from the rejection that, if adhered to, patentable claims will fail to be secured by the grant of patent.

It is not considered that the claims in the pending case patentable. They are not allowable to this applicant, for reasons above stated. For like reasons, Hammond and Hammond's application having matured into a patent, they are not allowable to any other applicant.. In the case of another applicant the fact of pertinency of the subject-matter in question to an issue of priority would not have been predetermined, but it would be so pertinent in consequence of its contents, and the patent would be available under ex parte Thomas.

Applicant contends that were Hammond and Hammond's case still an application (when abandonment to the public would not have occurred) another applicant who made only Allen's present claims and might have invented their subject-matter later than Allen did could have them allowed without interference. Such an application could not be put in interference with Allen's application, because the claims are not allowable to Allen, nor, in accordance with the present practice in declaring interferences, with Hammond and Hammond's application, because the applicant supposed would not have made Hammond and Hammond's claims, but only claims limited to features not shown by them, and their application would not be citable on the issue of anticipation, as held by abundant authorities, for lack of publicity. In this case no wrong would be done to Allen, for he would be deprived of nothing to which he

was entitled. The grant of a patent to the other applicant who made the same claims would not be improper because no bar against him would exist. The bar against Allen is individual to him. He is not concerned with the fate of another application against which the individual bar does not exist. It may be argued that Hammond and Hammond's claims could be suggested to the other applicant on the ground that they state the subject-matter of his claims in a broader aspect, and that if the other applicant declined to make them he would have disclaimed the invention in that broader aspect, and that such disclaimer could be logically held to be tantamount to a decision of priority on the claims suggested, and that then the claims made by the other applicant could be rejected on the prior art and the application of Hammond and Hammond. That argument, if sound, would support, not the grant of a patent to Allen, which is otherwise found to be improper, but a revision of the practice of interferences.

But Hammond and Hammond's application might have become abandoned. In that case, if Jolliffe v. Waldo v. Vermeer and Schorik, supra, were followed, the obstacle to the allowance of Allen's claims would be removed and this application and another application making the same claims would stand in the ordinary relation of interfering applications. Should it be found that the doctrine of Jolliffe v. Waldo v. Vermeer and Schorik cannot be sustained, the abandonment of Hammond and Hammond's application would not change the situation.

There was no error in refusing the appealed claims to Allen, and the decision of the Examiners-in-Chief is affirmed:

EX PARTE SPIEGEL.

Decided October 25, 1919.

268 O. G., 741.

DESIGNS-DESCRIPTION-SOMETIMES PERMISSIBLE.

There should be no hard and fast rule that a design may not be described in the specification. The question whether such a description will give a better understanding of the design is left to the discretion of the Examiner; but nothing useless should be added to the record. (Ex parte Cady, C. D., 1916, 57; 232 O. G., 619, modified.)

ON PETITION.

DESIGN FOR A SHEET OF WRAPPING-PAPER.

Messrs. Peirce, Fisher & Clapp and Mr. Percy B. Hills for the applicant.

NEWTON, Commissioner:

This is a petition requesting that the Examiner withdraw his objection to the inclusion in the specification of a statement descriptive of the design sought to be patented.

The invention is an ornamental design for a piece of wrappingpaper, the design consisting of a netlike pattern formed by diagonally-arranged intersecting cords knotted at their points of intersec`tion. Applicant proposes to insert in his specification the following:

In the embodiment of the invention illustrated in the accompanying drawing, these intercepting cords are shown as superposed upon a plurality of symmetrically disposed rectangular panels.

The Examiner in his action is attempting to follow the decision in ex parte Cady (C. D., 1916, 57; 232 O. G., 619.) In that decision it was held that

As to the appearance of the design, it is improper to describe that, because no amount of language can explain how a thing looks as well as the thing itself explains how it looks; but as to its use it would seem to be not only proper, but necessary, to explain the use, because without use the design is not in the useful arts and is not patentable.

Generally speaking, this rule is well founded and reasonable; but there are occasions when a description would help the pictorial representation. The pictorial representation is not the thing itself and does not always give a clear idea thereof, and a word picture might add to a better understanding of the actual device. Hence I see no use in a hard and fast rule that pictorial representations must not be verbally described, but would prefer ordinarily to leave this matter to the descretion of the Examiner, with the general comment that nothing should be added to the record that is useless. The description that applicant wishes to add is short, it contributes to a better understanding of the design as actually used, and may be added. The petition is accordingly granted.

EX PARTE ARMAT.

Decided January 17, 1918.

269 O. G., 189.

PATENTABILITY EVIDENCE OF NEW RESULTS-EX PARTE AFFIDAVITS.

Where it is admitted by the lower tribunals that the appealed claims present patentable subject-matter of considerable merit if the results claimed are actually achieved, but after witnessing demonstrations deny that such results are achieved, and conclude, on the other hand, that the results are inferior to prior devices, Held on appeal that the claims should be allowed in view of affidavits by experts that the results claimed were accomplished.

[NOTE. This application has resulted in Patent No. 1,259,066.]