MARTIN vs. BOGLE, RUNYAN, AND PATRIC.

Interference.

O. G., vol. xii, p. 625.

APPEAL FROM THE DECISION OF THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF A. J. MARTIN, FILED MAY 6, 1875, J. S. BOGLE, FILED MAY 3, 1875, AND A. RUNYAN, FILED MARCH 17, 1875, AND THE PATENT OF C. E. PATRIC, DATED JANUARY 26, 1875, FOR IMPROVEMENTS IN GRAIN-DRILLS."-Decided August 23, 1877.

The contestant in an interference controversy, who first perfected the operative device, awarded priority notwithstanding his adversary was the first to apply it in series, in the manner designed for use.

The arrangement in series may have been more satisfactory and permitted nicer adjustment of subordinate mechanism, but it proved operativeness no more than the test of the single device itself.

The fact that in one instance a claim is for a single device, and in another for a series of them, does not constitute difference of invention. The state of the art, and the Office latitude in allowing claims, may level the distinction.

The preliminary statement rigidly adhered to, where there was substantial departure therefrom in the interference contestant's testimony.

SPEAR, Commissioner:

The first issue, as stated by the Examiner of Interferences, is as follows:

A pivoted gage or valve, arranged to operate within the channel of a vertical distributing-wheel, and vary or regulate the size and capacity of the measuring-channel. This is stated in the third claim of Martin more clearly, as follows: In combination with a vertically-rotating feed-wheel, having a continuous seedchannel between its hub and rim, a gage or valve loosely pivoted, so as to be free to turn or move on its bearings or supports within the seed-channel of said wheel, and vary or regulate the size or capacity of said channel at the will of the operator, substantially as described.

I do not deem it necessary to go into any discussion whatever on the question of priority on this issue. The Examiner and the Board both found Patric to be the prior inventor, and so far as relates to the parties to this controversy, I see no reason to differ with them on this point. But the patent of H. L. and C. P. Brown, No. 35,501, granted June 10, 1862, clearly anticipates the invention claimed. In that patent is shown the vertical distributing-wheel with a seed-channel between its flange and hub, and with a pivoted valve arranged to operate within the seedchannel, so as to adapt the channel to different sizes of grains, or to regulate the flow, as may be desired.

The controversy on this point included all the parties named above. Upon the second issue only Martin, Bogle, and Runyan are in the controversy. That issue is stated by the Examiner of Interferences to be

The combination of a series of flanged distributing-wheels, with a series of gates operating between the flanges of said wheels and their shaft or hubs, and connecting directly to an adjusting-rod or shaft located outside of the periphery of said wheels.

This subject-matter is in Martin's fifth claim, and Bogle's first and second claims, but does not appeat to be claimed by Runyan, but is shown in his application.

I agree with the Board that the date of Martin's invention in respect to this subject-matter is the early part of 1874, probably some time in January. I also agree with them in finding that Bogle cannot assert any claim whatever earlier than the latter part of 1874, or January, 1875. His conversations prior to that time, giving them the most favorable construction possible, can, in my judgment, cover no more than he now concedes to Patric. But granting that he had any definite conception or purpose in respect to the cup with its vertical wheel and valve, with its outside pivoting, or a series of such cups and valves, he exercised no diligence, and offers no substantial excuse for the delay.

It was urged at the hearing that Bogle had been the only one, of all the contestants, to reduce the invention to practice. If it be meant by this that he was the first and only one to apply a series of these cups and valves upon the hopper of a grain-drill, and test the same in the field, this may be admitted, as shown in the testimony; but if it be understood to mean that he was the first to operate the cup and valve, and to test it as a separate piece of mechanism, capable of measuring the grain which passed through it, then the record does not bear out this statement. For, in February, 1874, Martin had the cup and valve with the vertical wheel, the valve being pivoted upon its proper shaft outside the wheel, the parts being adapted to each other, capable of adjustment, and the operation being precisely like that of Bogle; and this was many months before the time which Bogle can fix as the date of any substantial embodiment of his invention.

I regard the test of the single valve, by passing grain through it and moving the valve to give the proper variation to the channel, as substantially the same sort of a test, so far as the valve and the cup are concerned, as Bogle's test of the series upon the hopper of the graindrill in the field. Bogle's test might have been more satisfactory, so far as it related to the accurate adjustment of the levers and connecting mechanisms by which the bar carrying the valves was moved; and the whole argument on this point appeared to me to relate rather to these additional parts for moving the rocking shaft, on which all the valves were fixed, and by which they were simultaneously moved.

Certainly, if Bogle's cup and valve are operative, then those of Martin's are also, for the two are precisely alike, though both differ from Runyan's.

The invention made by Martin was designed to be applied to a machine in series, and not singly; and the test of a dozen is no more than the test of one. Further, if there be any invention or merit in the application of these devices in a series, or the testing of them in a series, instead of singly, then Bogle has not illustrated his invention before the Office, for neither his drawing nor model shows more than one of the cups with its valve.

Doubtless the model and drawing, in connection with the specification, sufficiently illustrate the invention. Being shown how one of these

devices could be applied to a machine, it is plain that any mechanic skilled in the art could apply a number of them in the same way. Nor does the fact that the Office has allowed a claim for a single device, and another for a series of devices, justify the assertion that the inventions are distinct and not the same. The Office has uniformly allowed some latitude to applicants in stating, in different forms, claims for substantially the same invention. (Perry vs. Lay, Com. Dec., 1869, p. 3.)

I am unable to agree with the Board in respect to the claim of Run. yan. In the first place, his testimony is indefinite and unsatisfactory; and further than this, it is in fatal disagreement with his preliminary statement. No motion appears ever to have been made for the correction of his preliminary statement, and he must be held strictly to it. It was to meet precisely such cases as this that the rule relating to preliminary statements was made.

In one of his preliminary statements he says that he completed his first model in March, 1874, and to this he must be held. Even if he were allowed to go back, his testimony would be of little account. This was later than the date of the completion of the full-sized working mechanism by Martin.

Runyan does not appear to have followed the matter with very great diligence, and the final result produced by him is not very satisfactory. It is doubtful whether, if the matter had been left to him alone, the invention would have been of any practical value.

What I have said in regard to the priority of Martin on the second issue is applicable to the third and fourth. There the contest is between Martin and Bogle. The element of the series does not come into the question, and the priority of Martin is clear.

Upon the second issue, therefore, I reverse the decision of the Examiners-in-Chief, and upon the third and fourth affirm their decision on all three points, awarding priority of invention to Martin..

JACOB GORDON.

Trade-Mark.

O. G., vol. xii, p. 517.

APPEAL FROM THE DECISION OF THE EXAMINER OF TRADE-MARKS IN THE MATTER OF THE APPLICATION OF JACOB GORDON FOR REGISTRATION OF TRADE-MARK, FILED JUNE 25, 1877.-Decided August 27, 1877.

That a trade-mark is consumed with the article to which it is applied is no test of its invalidity.

If the mark is unessential in the structure of the article, and serves merely to distinguish it, the intimacy of incorporation is immaterial.

A trade-mark must have the independent and sole quality of distinguishing the goods as being of a particular manufacture, or as belonging to a particular party.

A strip of leaf-tobacco placed as a wrapper around the mouth-piece or end of a cigarette denied registration, the leaf serving more a mechanical than a distinctive purpose.

DOOLITTLE, Acting Commissioner:

The trade-mark sought to be registered is described as a narrow strip of leaf-tobacco placed as a wrapper around the mouth piece or end of a cigarette, and which varies with the size of the cigarette.

It is urged by the Examiner that the matter claimed as a mark enters into the mechanical structure of the article itself, and therefore was not an arbitrary symbol nor a lawful trade-mark; that in Harrington vs. Libby (12 OFFICIAL GAZETTE, 188), the court held that the forms and materials of packages were not the proper subjects of a trade-mark, and that the mark in question was a functional part of the cigarette, and was consumed with it.

It will not do, I think, to carry this doctrine to the extreme of saying that nothing can be regarded as a proper trade-mark which is so intimately connected with an article as to be consumed with it. For if that were the rule, a mark upon a cake of soap, a symbol in the sole of a shoe, a peculiar seal over the mouth of a wine-bottle, and many other forms of devices which might be mentioned, and which are undoubtedly excellent trade-marks, would lose their character and value as such from the mere fact that the use or consumption of the article would also result in the destruction of the mark.

A distinction must be made in these cases between the material which is essential in the structure of an article and unessential matter placed thereon or incorporated therein, for the mere purpose of distinguishing the origin or ownership of the article.

Thus the box, barrel, or wrapper containing merchandise, whatever its form, cannot, per se, be the trade-mark; but a name, symbol, figure, letter, form, or device, cut, stamped, cast, impressed, or engraved thereon, or in some other manner attached thereto, or connected with the article itself, may be a proper trade-mark. (Moorman vs. Hoge, 2 Sawyer, 78.) The court held that the mark need not be inseparably connected with the package, as when blown into glass, but that it must have the independent and sole quality of distinguishing the goods as being of a particular manufacture, or as belonging to a particular party. I regard it, therefore, as no objection to the mark now sought to be registered that it is connected so intimately with the article to which it is attached as to necessitate its consumption with that of the article itself. But does it perform the sole office of a trade-mark? Very little has been said on this point by attorneys for applicant, and I am constrained to agree with the Examiner of Trade-marks, that the leaf of tobacco wrapped around the mouth-piece or end of the cigarette answers a practical and perhaps a very useful purpose. Being composed of tobacco, it is an addition to the material of the cigarette, strengthens the wrapper, is probably more agreeable to the taste than the paper of a cigarette, &c.

The useful properties of the article, therefore, seem to be the predominant ones, while the function the wrapper performs as a trade-mark is

merely incidental. Perhaps this objection would not lie, if, as in the case cited by applicant, that of Mommers, for which a trade-mark was granted for a silk band around a champagne bottle, a silk band was attached to the cigarette, or a colored piece of paper or similar device connected therewith. For in such instance the device would answer no other purpose than that of a trade-mark-perform no mechanical function.

If applicant has introduced an improvement in the manufacture of cigarettes, and is entitled to protection thereon, it should be by a patent; but if not protected by a patent, other manufacturers of cigarettes cannot be prevented from using the like useful device.

The intent of the trade-mark law is to afford protection to symbols, and not to inventions or mechanical devices. It being a common right to use any mechanical device which is deemed useful, the use of which is not restricted by a patent, it would seriously embarrass trade if, in the present instance, the exclusive right should be given to applicant to use his device as a trade-mark.

The principle here sought to be applied is clearly set forth in the case of The Canal Co. vs. Clark, 13 Wall., 311, wherein it is held that no one has the right to appropriate to his own use as a trade-mark a device which, from the nature of the use to which it is put, others may adopt and employ for the same purpose.

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

P. J. HARDY.

Motion.

O. G., vol. xii, p. 1075.

IN THE MATTER OF THE APPLICATION OF P. J. HARDY FOR LETTERS PATENT FOR "IMPROVEMENT IN THE APPLICATION OF MARBLE OR OTHER STONE TO BUILDINGS," FILED JULY 21, 1975, ALLOWED JULY 27, 1875, AND FORFEITED FOR NON-PAYMENT OF THE FINAL FEE.-Decided August 27, 1877.

Under section 4897, Revised Statutes, an applicant who fails to renew his case within two years after its allowance is effectually debarred from doing so, nor can he make the invention the subject of a new application.

The cases under this section distinguished from the abandoned applications covered by section 4894, and which may be revived or new applications filed in their stead under certain conditions. The former have been passed upon and allowed; the latter have never had final action.

DOOLITTLE, Acting Commissioner:

Applicant seeks to renew a forfeited application more than two years after the date of allowance of the original application. This case falls under the requirements of section 4897 Revised Statutes, which requires that where an applicant fails to make payment of his final fee within six months from the date upon which the application was passed and allowed, and notice thereof was sent to the applicant or his agent, he shall have the right to make an application for a patent within two years after the allowance of the original application.