23. Had it been intimated in the original patent that the lesser number of elements could be used in combination, this would have justified a claim to them on reissue. [* Miller & Co. vs. Bridgeport Brass Company, 336.

24. Without such suggestion the claim is invalid, as a departure from the original invention.

[* Ibid., 336.

25. A reissue patent need not be rigidly confined in description to what was described before. It may include whatever else was suggested or substantially indicated as a part of the original patented invention.

[* Herring et al. vs. Nelson et al.

Same vs. Gage et al., 359.

26. Differences in the descriptions and claims of the old and new specifications are not the tests of substantial diversity. The description may be varied and the claim restricted or enlarged, provided the identity of the subject-matter of the original patent is preserved.

[* Ibid., 359.

27. The doctrine of Vance vs. Campbell, 1 Black, that the use of a lesser number of ele ments than are contained in the patented combination is no infringement because not the same invention does not apply to the practice of reissuing patents. It is true the law requires that reissues shall be for the same invention as the originals on which they are based, but it is no departure to make separate claims to sub-combinations which were originally joined in one.

[* Ibid., 359.

28. If the patentees have not claimed the whole of their invention, and the omission has been the result of inadvertence, the error can be corrected by the remedy of reissue. [* The Keystone Bridge Company vs. The Phoenix Iron Company, 384.

(See Decree, 4; Disclaimers, 4; Enlarged Invention, 1; Jurisdiction, 2, 8; 9; New Matter, 1; New Results and Uses, 1; Novelty, 2; Practice in Patent Office, 14; Presumption, 2, 3; Res Judicata, 1.)

REJECTED APPLICATIONS.

1. Assuming its similarity to the Deuchfield (the patentee) device, the rejected application does not make out that the thing described was ever used, nor is such a description a patent or publication within the statute.

[* Herring et al. vs. Nelson et al. Same vs. Gage et al., 359.

RES JUDICATA.

1. A patent having been issued to the unsuccessful party to an interference after his withdrawal of the interfering claim, he cannot introduce the same matter in a reissue application, his right to it being res judicata.

[W. S. Gillen, 20.

2. The validity of the Cummings patent, as well as its construction, must be consider. d as settled by the decision of the Supreme Court of the United States in Smith vs. Goodyear Dental Vulcanite Company.

[* Goodyear Dental Vulcanite Company vs. Davis. Same vs. Defendants in Fixty-seven other cases, 327.

1. If no new effect was produced the simple substitution would have been without patentable merit.

[James Greaves, 80.

2. The use of one material instead of another in constructing a known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called an invention unless some new and useful result, as increase of efficiency, or a decided saving in the operation, be obtained. But where there is some such new and useful result, where a machine has acquired new functions and useful properties, it may be patentable as an invention, though the only change made in the machine has been supplanting one of its materials by another. This is true of all combinations, whether they be of materials or processes.

[* Smith vs. The Goodyear Dental Vulcanite Company et al., 171.

3. The characteristic and valuable feature of both articles being their self-righting quality arising from their weighted bottoms, the invention remains the same, notwithstanding metal may be substituted for papier mache in their manufacture.

[* Ingersoll vs. Turner and Turner, 310.

4. The substitution of sheet metal for less appropriate material involved no invention, and the construction of the cuspadore in three pieces is but obvious mechanical skill.

[* Ibid., 310.

5. The substitution in a patented mixture of an ingredient which, although not precisely the same in its action, produces all the valuable and beneficial results attending that for which it was substituted, and in substantially the same manner, is to be regarded as an equivalent and an infringement of the patent.

[* The Atlantic Giant Powder Company vs. Mowbray et al., 331.

(See Construction of Specifications and Patents, 10; Infringement, 8, 9, 16, 20, 34, 35; Invention, 4; Patentability, 1, 4, 9, 10.)

SUPREME COURT DISTRICT OF COLUMBIA.

(See Jurisdiction, 4, 5.)

TRADE-MARKS.

1. Registration denied a trade-mark which, although not absolutely identical with, was so close in its resemblance to another in long use as to readily mislead the public. [Coggin, Kidder & Co., 26.

2. The addition of an arbitrary symbol to an old trade-mark may not amount to a sufficient difference to warrant registration.

[Ibid., 26.

3. A trade-mark consisting of words which are merely descriptive of the quality of the goods to which the mark is to be applied will not be registered.

[The Goodyear Rubber Company, 53.

4. "Crack-proof" as a trade-mark for rubber goods held to be descriptive of quality and not entitled to registration.

[Ibid., 53.

5. The law is complied with if but one fac-simile mode of using a trade-mark is illustrated.

[W. S. Kimball, 54.

6. To multiply illustrations that simply show various modes of applying the mark, different arrangements of non-essential, arbitrary matter, &c., is not only unnecessary but encumbers the office records, and tends to confuse the public as to the scope of the registration.

[Ibid., 54.

7. A trade-mark interference, unlike those for patentable matters, has nothing to do with the question as to who was the first to conceive or suggest the mark, but who was the first to put it into actual practice.

[Swift vs. Peters, 57.

8. A contestant who acted in the capacity of an agent, and as such received and shipped the goods to which the trade-mark was attached, cannot be said to have put the mark into actual practice.

[Ibid., 57.

9. The title of the registrant of a trade-mark is for the courts, not for the Office to determine. [Ibid., 57.

10. A star and crescent applied as a trade-mark to soap is registerably different from a star alone.

[Cornwall et al., 82.

11. Whether a proposed mark deceptively resembles another already registered is a question of judgment, to be determined upon the probabilities of the case. (Ex parte Imbs, 10 OFFICIAL GAZETTE, 463.)

[Ibid., 82.

12. A geographical word used as a trade-mark in a fanciful sense, and not fraudulently nor deceptively applied, may generally be registered.

[Cornwall & Brothers, 85.

13. There may, however, be a difference in this regard between foreign and domestic geographical words.

[Ibid., 85.

14. The word "Dublin" registered as a trade-mark for soaps, it not appearing that it was either a descriptive or deceptive term in this connection.

[Ibid., 85.

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

[Jacob Gordon, 108.

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

[Ibid., 108. 17. 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.

[Ibid., 108.

18. 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.

[Ibid., 108.

19. The rule in relation to "lawful trade-marks rightfully in use on July 8, 1870,” as laid down in India Rubber Comb Company, 8 OFFICIAL GAZETTE, 905, and Rubber Clothing Company, 10 OFFICIAL GAZETTE, 111: Held, to apply in excluding the words "Egg Macaroni" from registration.

[Dole Brothers, 117.

20. At the time of their first adoption by applicants' assignor, they were properly descriptive of an article known long before, and, moreover, up to July 8, 1870, it does

not appear that the words had been used alone, but in connection with other designating matter. They are not a lawful trade-mark rightfully in use at that time.

[Ibid., 117.

21. Held, That complainant could not legally enjoy the exclusive right to use a decorative tin pail as a collar-box notwithstanding that he was the first to so employ it, and had registered it as a trade-mark.

(See Labels.)

USE.

(See Infringement, 39, 40.)

[*Harrington v8. Libby, 308.