CONSTRUCTION OF CLAIMS-Continued. 2. SAME-SAME-SAME.-"The term must be taken, both from the general 3. SAME LIMITATIONS-RESTRICTION OF BREADTH BY DEFINITION IN SPECIFICATION.-"It is to be noted that in defining the special sense in which certain terms are employed in the Christiansen et al. patent we find the following: ""edible oils" to designate oils used for therapeutic and alimentary purposes.' In our opinion this definition clearly confines that patent to the kind of oils and their use set out in the definition and to no others. These oils are of animal and vegetable origin and are not essential oils. They are fixed or fatty oils. Therefore the holding that the claims of that patent containing the words 'edible oils' are broad enough to include the fruit extracts and oils involved herein so far as we are able to ascertain we think is clear error." *In re Johnston et al., 168. 4. RIGHT TO MAKE CLAIMS CLAIMS COPIED FROM PATENT.-"We cannot say that the language of the claims is free from ambiguity, and inasmuch as claims 1 to 4 inclusive were copied from the Siebenburger patent presumably for purposes of interference, it is proper to resort to that patent to determine the proper construction of those claims." *In re Bertsch, 224. 5. SAME SAME.-In claims 1 to 4, copied by appellant from the patent to Siebenburger, the phrase "in a condition free from other sulfate and sulfonic acid groups," limiting the recitation of "sulfuric acid esters of monovalent unsaturated aliphatic alcohols" Held, by reference to said patent, to mean "that the sulfate esters claimed are unsaturated, as are the alcohols from which they are derived," and Held that appellant has no right to make said claims in his application. * Id. 6. WORDS AND PHRASES "COMPRISING ESSENTIALLY. "While it is true that the word 'comprising' is usually in patent law held to be synonymous with the word 'including' we think that the use of the two words 'comprising essentially' should receive a different interpretation." * Id. 7. SAME "COMPOSED OF."-In view of circumstances, the words "composed of" Held to be synonymous with "consisting of." * Id. CONSTRUCTION OF FEDERAL RULES OF CIVIL PROCEDURE. See Trade-Marks, 19, 20, 47, 48, 49, 50, 51. CONSTRUCTION OF SPECIFICATIONS. 1. WORDS AND PHRASES "TRAY."-In regard to the term "tray" Held that "we find no definition of the term which would include an article not having an upstanding edge, or upstanding edges, completely surrounding its bottom or 'floor.'" *In re Korf et al., 210. 2. SAME "FORCE."-"The word 'force' may have a mathematical or technical physical meaning and one of common usage. The two are not identical, but they are closely related. As applied to physical forces, the one is a function of the other. * * * 'Force' may mean either exact pressure times exact area to which the pressure is applied, or it may mean simply an operative physical power, without taking account of the exact quantity applied." a The Hydraulic Press Corporation, Inc., and Ernst v. Coe, Commissioner of Patents, 12. 3. APPLICATION.-A patent specification is merely descriptive or illustrative of an invention, and is not to be read as though it were claims whose function is to exclude from the patent all that is not specifically claimed. Marconi Wireless Telegraph Company of America v. The United States; The United States v. Marconi Wireless Telegraph Company of America, 781. 4. WORDS AND PHRASES "UNITARY."-A structure, the various parts of which are bolted, clamped, screwed, or tied together, Held not to be a "unitary" structure. *In re Heltzel, 665. CONSTRUCTION OF STATUTES. See Applications, 7, 9; Claims, 1, 2, 4, 18; Confliction of State Law and Federal Policy; Continuing Applications; Divisional Applications, 6; Interference, 9, 12, 23, 34; Patentability 15, 32, 46; Reissue Applications, 1, 3; Right to Make Claims, 2; Suits under Section 4915, R. S., 6, 7, 9; Validity of Patents, 5. SECTION 4886 R. S.-EFFECTIVE DATE OF AMENDMENT.-Where section 4886 R. S. (U. S. C., title 35, sec. 31), requiring as a condition for the issuance of a patent that the invention was not in public use or on sale in this country for more than two years prior to the filing of the application, was amended by an act approved August 5, 1939, by shortening the period to one year, and this act provided that the amendment should take effect one year after the approval of the act, Held that the amendment became effective on August 5, 1940, in accordance with the "general rule that in determining the effective date of a statute which is to take effect on a future day, the first day shall be excluded and the last day shall be included, and that its taking effect shall be from the first minute of the last day." * In re Donaldson, 739. CONSTRUCTION OF TRADE-MARK STATUTES. See Trade-Marks, 10, 11, 21 to 28 inclusive, 36, 37, 38, 41, 42, 43, 52, 53. CONTINUING APPLICATIONS. See Applications, 5, 7, 8; Divisional Applications, 3; Election by Common Assignee, 1; Interference, 75. 1. EFFECT OF REPEAL OF SECTION 4897 R. S.-"The repeal of section 4897 * * * left the law with respect to continuing applications as it was before the enactment of that section. All that the repeal accomplished was to deny to an applicant whose application had become forfeited the right to file a renewal application which should have the benefit of the filing date of his original application.” *In re Febrey, 510. 2. SAME. Where Febrey filed an application A on September 28, 1938, which was allowed on July 20, 1940, and was forfeited on January 20, 1941; and on January 9, 1941, Febrey filed an application B, which he stated to be a continuation of his application A, Held that application B was a continuation of application A and that Febrey was entitled to the benefit of the filing date of application A. *Id. CO-PENDING APPLICATIONS. See Construction of Claims, 2; Estoppel, 3; Interference, 8, 49, 75. COPYING CLAIMS. See Appeal to the U. S. Court of Customs and Patent Appeals, 4; Applications, 4; Construction of Claims, 4, 5; Estoppel, 2, 3, 4; Interference, 8, 24, 33, 40, 49, 74; Right To Make Claims, 3, 4, 5, 6, 7. CORPORATE NAME. See Trade-Marks, 52. DAMAGE. See Infringement, 1; Trade-Marks, 13, 45. DATE OF FILING APPLICATIONS. See Applications, 2, 8, 10; Construction of Statutes; Continuing Applications, 1, 2; Interference, 3, 14, 26, 48, 52, 53, 56; Patentability, 66, 78, 96. DECISIONS OF THE BOARD OF APPEALS OF THE U. S. PATENT OFFICE. See Appeal to the U. S. Court of Customs and Patent Appeals, 9, 10, 15; Applications, 9; Interference, 41, 44; Patentability, 4, 97. DECISIONS OF THE SUPREME COURT OF THE UNITED STATES. See Patentability, 15. APPELLATE POWER OF SUPREME COURT.-"This Court, in the exercise of its appellate power, is not precluded from looking at any evidence of record which, whether or not called to the attention of the court below, is relevant to and may affect the correctness of its decision sustaining or denying any contention which a party has made before it." Marconi Wireless Telegraph Company of America v. The United States; The United States v. Marconi Wireless Company of America, 781. DECISIONS OF THE TRIBUNALS OF THE U. S. PATENT OFFICE. See Suits under Section 4915, R. S., 6. DECISIONS OF THE U. S. COURT OF CLAIMS. 1. DECISION ON VALIDITY AND INFRINGEMENT FINALITY.- 'Although the interlocutory decision of the Court of Claims on the question of validity and infringement was appealable, United States v. EsnaultPelterie, 299 U. S. 201, 476 O. G. 483, 303 U. S. 26, 489, O. G. 453; 28 U. S. C. § 288 (b), as are interlocutory orders of district courts in suits to enjoin infringement, 28 U. S. C. § 227 (a); John Simmons Co. v. Grier Bros. Co., 258 U. S. 82, 89, 312 O. G. 826, the decision was not final until the conclusion of the accounting.' Marconi Wireless Telegraph Company of America v. The United States; The United States v. Marconi Wireless Company of America, 781. 2. REMAND.-Judgment of Court of Claims holding claim 16 of Marconi Patent No. 763,772 valid and infringed, vacated, and cause remanded. •Id. DECISIONS OF THE U. S. COURT OF CUSTOMS AND PATENT APPEALS. See Appeal to the U. S. Court of Customs and Patent Appeals; Res Adjudicata, 1, 4. DESCRIPTIVE TRADE-MARKS. See Trade-Marks, 12, 22, 25, 26, 27, 29, 30, 31, 32, 53, 57, 59, 60, 62, 66. DESIGNS. 1. PATENTABILITY. "We know of no authority, and none is cited by counsel 2. SAME INVENTION. "So far as the record discloses, appellant's design, 3. SAME DEHYDRATOR TUBE.-A design for a dehydrator tube Held un- DILIGENCE. See Appeal to the U. S. Court of Customs and Patent Appeals, 11, 12; Interference, 10, 27, 38, 39, 42, 43, 47, 50. DISCLAIMERS. See Interference, 11, 12, 30, 31, 32; Particular Patents, 2, 3; Trade-Marks, 32, 57, 67, 70; Validity of Patents, 3, 4, 5. DISCLOSURE OF INVENTION. See Appeal to the U. S. Court of Customs and Patent Appeals, 1, 10; Applications, 4, 5, 8, 10; Claims, 12, 13; Election by Common Assignee, 1; Interference, 2, 17, 19, 24, 25, 28, 33, 54, 64, 72, 74, 76, 77, 78; Patentability, 41; Res Adjudicata, 3; Right to Make Claims, 2, 3. DISCRETION OF THE BOARD OF APPEALS OF THE U. S. PATENT OFFICE. See Appeal to the U. S. Court of Customs and Patent Appeals, 15. DISCRETION OF THE COMMISSIONER OF PATENTS. See Interference, 13. DISCRETION OF THE COURT. DECISION ON VALIDITY AND INFRINGEMENT-FINALITY-POWER TO REHEAR AND REOPEN.-"The court did not lack power at any time prior to entry of its final judgment at the close of the accounting to reconsider any portion of its decision and reopen any part of the case. Perkins v. Fourniquet, 6 How. 206, 208; McGourkey v. Toledo and Ohio Ry., 146 U. S. 536, 544; Simmons Co. v. Grier Bros. Co., supra, 90-91. It was free in its discretion to grant a reargument based either on all the evidence then of record or only the evidence before the court when it rendered its interlocutory decision, or to reopen the case for further evidence." Marconi Wireless Company of America v. The United States; The United States v. Marconi Wireless Company of America, 781. 8 DISSOLUTION OF INTERFERENCE. See Interference, 11. DIVISIONAL APPLICATIONS. See Estoppel, 2; Interference, 75; Reissue, 1. DIVISION-WAIVER.-The rejection of a claim by the Primary Examiner and the Board of Appeals as unpatentable over the prior art, when the same claim was also rejected on the ground of estoppel arising from an uncontroverted requirement for division Held not to amount to a waiver of the requirement for division. *In re Waugh, 411. DIVISIONAL APPLICATIONS-Continued. 2. SAME ESTOPPEL.- -"Appellant admits that he elected to claim the composition and product and did not question the correctness of the action of the Examiner requiring that the method claims be divided out of the application. After having so elected, he urged the allowance of the method claim 34 in the instant application. Both tribunals held that under such circumstances he was estopped from claiming claim 34 in the instant application. Notwithstanding the fact that the Board passed upon the patentability of the claim over the prior art, we think its holding on the question of estoppel under the circumstances stated was proper, and said holding is affirmed." *Id. 3. PATENTABILITY-NEW MATTER.-Where amendments by appellant to his parent application involved matter not described or suggested in his parent application as filed Held that appellant might not base amendments to his continuing application, on appeal, upon such new matter found in his amendments to his parent application. *In re Mims, 304. 4. SAME-SAME.-"We may assume that in this case if the amendment to his parent application did not contain new matter, appellant would have the right to incorporate in his instant application by way of amendment the subject matter of that application as amended, but we cannot agree with him that the question of whether his amendments to his parent application included new matter may not be inquired into." *Id. 5. SAME-SAME-SUPPLEMENTAL OATH.-"As to the effect of a supplementary oath filed with respect to new matter added to applications, rule 70 * * is explicit that that may not be done where the matter added by amendment is not found in the original application and involves a departure from the original invention.' *Id. * * 6. SAME-SAME-SAME.-"Section 4892 of the Revised Statutes (title 35, sec. 35) makes no provision for a supplemental oath, and the only rule of the Patent Office permitting it is rule 48 * which is not applicable here for the reason that the amendments include matter not 'shown or described' in either appellant's instant application as filed or in his parent application as filed." *Id. DOMINANT FEATURE OF MARK. See Trade-Mark, 33, 35, 54, 67. DOUBLE PATENTING. See Election by Common Assignee, 3; Patentability, 35. DOUBT. See Interference, 26; Invention, 1. DRAWINGS. See Applications, 1, 2, 3; Designs, 1; Interference, 54, 64, 72; Right to Make Claims, 6. EARLIER AND LATER APPLICATIONS.-See Election by Common Assignee, 1; Interference, 48; Patentability, 14, 66. ELECTION BY COMMON ASSIGNEE: 1. ELECTION BY COMMON ASSIGNEE. In a situation where the Fischel and Rieper application on appeal was filed on September 15, 1938, as a continuation of an earlier application filed June 2, 1934; a patent was granted on June 21, 1935, in Great Britain on an application corresponding to said earlier, abandoned application; the common assignee of the Fischel and Rieper application on appeal and a Fischel and Thiry application filed the latter application on May 21, 1938; a patent was granted on said Fischel and Thiry application on January 30, 1940, containing, as claims 7 and 8, two claims identical with two of the claims on appeal in the Fischel and Rieper application and, like all the appealed claims, broadly defining the patented construction and that disclosed in the application; and a reissue of said Fischel and Thiry patent was applied for on December 10, 1940, and granted on April 15, 1941, omitting said two claims 7 and 8, which, upon the appeal record, were invalid in that patent because of the British patent Held that to such a situation there applied the doctrine of election as announced in In re Dunbar, 51 App. D. C. 251, 278 Fed. 334, 300 O. G. 201, In re Mann and Koppelman, 18 C. C. P. A. (Patents) 1020, 47 F. (2d) 370, 408 O. G. 7, and Haight v. Nell, 354 O. G. 247, 1927 C. D. 4. *In re Fischel et al., 496. ELECTION BY COMMON ASSIGNEE-Continued. 2. SAME. "Appellants * * * seek to avoid the effect of the application of the doctrine of election * * * for the reason that, as they contend, claims 7 and 8 were inserted in the Fischel and Thiry patent through inadvertence, accident, or mistake, and that therefore the assignee made no deliberate election. Both applications were owned by the common assignee. It elected to take out the broad invention in the Fischel and Thiry patent and is bound thereby. It cannot now, in view of the facts of this case, avoid the effect of the election and the consequent waiver of the right to take out the instant subject-matter in the instant application by contending that it was a mistake. To hold with appellants on this phase of the case would be, in our judgment, to lend hopeless confusion to the administration of the patent laws when questions like that at bar are presented to the Patent Office tribunals.' *Id. 3. SAME. “We think the true doctrine of election in patent cases is grounded 4. SAME. 5. SAME. "The Patent Office tribunals in the instant case, while tacitly 6. SAME. "Appellants' assignee, having elected to take out in the Fischel "" ELEMENTS. See Claims, 8, 12, 16; Interference, 72, 78; Patentability, 32, 76, EQUITY. See Suits under Section 4915, R. S., 9; Trade-Marks, 49, 65, EQUIVALENT. See Interference, 7; Patentability, 101. ERROR. * See Appeal to the U. S. Court of Customs and Patent Appeals, 3, 5, 6, 7, 8, 10, 11, 14; Construction of Claims, 3; Infringement, 3; Interference, 39; Invention, 3; Jurisdiction of the Courts, 6; Patentability, 51; Right to Make Claims, 2; Suits under Section 4915, R. S., 1; Trade-Marks, 19, 63. ESTOPPEL. See Appeal to the U. S. Court of Customs and Patent Appeals, 4, 5; Certiorari, 2; Divisional Applications, 1, 2; Interference, 14, 15, 16, 17, 18, 33; Licenses; Reissue Applications, 2, 3, 4; Res Adjudicata, 1, 2, 3, 4. 1. ESTOPPEL UNDER RULE 109.-"When Becker had the opportunity to present the instant claims under rule 109 for priority adjudication, he remained silent. Having remained silent when he should have spoken, he is estopped from speaking now. His assignee, under the circumstances stated, is not entitled to a second interference, and to sustain its contentions here would be injurious to its adversary and to Patent Office procedure." *In re The Hoover Company (assignee of Bernard C. Becker, deceased), 338. |