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point is who was first to actually adopt and use the same, for the purpose of indicating the ownership or proprietorship of the articles to which the mark is applied.

Although Swift alleges in his application that he had been using this brand for about two years, yet be used it merely as an agent uses the trade-mark of the firm for whom he sells goods. He did not use it nor pretend to use it as his own mark upon goods or upon packages of goods prepared by him. The mark at no time indicated that he was either the manufacturer of the article itself or one of the firm who sold the article throughout the country. These are the facts that have been found by both the lower tribunals.

The point is made, however, that if the mark does not belong to Swift, neither is it the property of Peters, as the trade-mark was adopted and used by the firm of Snowden & Peters, which firm was dissolved in 1876, and the right to use it thereafter did not remain in Peters.

Whatever may be the rights of Peters and Snowden as to each other in this matter, it is perfectly clear that Swift has not even overcome the prima facie case made by Peters. Peters is a registrant, and it is of no avail whatever for this Office to enter into an inquiry as to his right of ownership to the trade-mark in dispute, formerly owned by the firm of Snowden & Peters. The judgment of this Office as to Peters's right of property in the mark, would not affect Snowden's claim in the least. That is a question for the courts, and over which the Office has no jurisdiction. It would be unnecessary waste of time, therefore, for the Office to inquire into the respective rights of those parties. It is sufficient for the purposes of this contest to show that Swift, the applicant, has no right whatever, as against Peters. They are the only parties to this contest, and the judgment must be confined to them alone.

The decision of the Board of Examiners-in-Chief, awarding priority to Peters in the adoption of this trade-mark, is affirmed on the ground that Swift, his opponent, had never adopted or qwned it at all in the sense contemplated by the trade-mark law.



O. G., vol. xii, p. 51.


Section 35 of the act of 1870, which declared all applications to be abandoned that had been rejected or withdrawn prior to the date of its passage, and that had neither been renewed nor a new application fiied within six months thereafter, construed to be modified by section 111 of the same act, so as to not include applications pending at the date of its passage.

The word "pending" is used in the section in the same sense as it is applied to a suit— that is, it is pending so long as it remains undecided or in suspense.

Any case in which judgment has been rendered by a competent tribunal, the parties notified, and no appeal taken or noted, can hardly be regarded as pending.

The Office rules in force at the time of the passage of the act of 1870 construed to mean that a case was pending only until the decision of an appeal after a second rejection thereon, or until after the party bad withdrawn the case from the further consideration of the Office.

An application for letters patent having been acted upon for the last time January 27, 1869, by the Board of Examiners-in-Chief, who affirmed a previous rejection of the Primary Examiner, a motion to reopen the case and dispose of it on its own merits was denied, it having been abandoned under the law of 1870, and not pending at the date of the passage of said act.

DOOLITTLE, Acting Commissioner:

The last action taken by the Office on the above-entitled application was January 27, 1869. This consisted of a decision by the Board of Examiners in Chief affirming the rejection of the Primary Examiner. A motion is now made to reopen the case on the ground that no time having been fixed by law at that date for an appeal to the Commissioner, the parties may exercise that right at any time.

Applicant also insists that his application falls within the provisions of section 4894 Revised Statutes.

He submits affidavits to show that by reason of poverty he could not sooner take his appeal to the Commissioner.

Under the practice of the Office of late this application would be held to be abandoned by virtue of that proviso in section 35 of the act of July 8, 1870, which enacted that, when an application for a patent had been rejected or withdrawn prior to the passage of that act, the applicant should have six months from the date of such passage to renew his application, or to file a new one; and, if he omitted to do either, his application should be held to have been abandoned.

The only restriction upon this section seems to have been created by section 111 of the same act, which provides

That all applications for patents pending at the time of the passage of this act, in cases where the duty has been paid, shall be proceeded with and acted on in the same manner as though filed after the passage thereof.

The question arises as to the proper construction to be placed on the word "pending" in the latter-named section. It was once held to include all cases in which the application-fee had been paid prior to the passage of the law, and which at that time either stood upon the docket awaiting action on the part of the Office, or were subject to be called up for further consideration by action on the part of the applicant, and this, too, until the case had been carried up to the highest tribunal on appeal within or without the Office. But the better opinion seems to be that the word "pending" here refers to an application in the same sense that the word is applied to a suit—that is, it is pending so long as it remains undecided or in suspense. Any case, therefore, in which judgment has been rendered by a competent tribunal, the parties notified, and no appeal has been taken or noted, can hardly be regarded as pending.

In accordance with the above definition the Office rules in force at the time of the passage of said act held that a case was pending only until the decision of an appeal after a second rejection thereon, or until after the party had withdrawn the case from the further consideration of the Office. (See Office Rules 45 and 123, of the August edition of 1869.)

It is well settled that, in the absence of any provision of law to the contrary, the Office Rules of Practice have the authority of law in all matters arising at the time in which they were in force.

The same proviso of section 35 also requires that, upon the hearing of such renewed applications, abandonment should be considered as a question of fact. The mischief which the requirements of that section were designed to remedy was quite apparent. Applications, after lying in the Office for years, were dug up and renewed, to greatly embarrass patentees and manufacturers who had reduced the invention to successful operation, and also to cover up other analogous inventions which had been freely used by the public years after the slothful applicant had ceased to prosecute his claims in the Office.

In regard to this mass of rejected applications which could be revived after the lapse of any number of years, an eminent judge of the supreme court of this District remarked, before the passage of the above act, that

Many, perhaps most, of this multitude of rejected cases, although falling short of invention, embody suggestions which, under the unscrupulous and ingenious manipulation of professional inventors, would reissue into patents to the utter confusion of existing rights. Abandonment, in fact, should be an estoppel at law, especially against exhuming this potter's field of the Patent Office. (Gates et al. vs. Benson, C. D., 1870, p. 76.)

In the recent case of the United States Rifle and Cartridge Company t al. vs. The Whitney Arms Company (11 OFFICIAL GAZETTE, p. 373), the same section of the law was construed by Judge Shipman as follows:

The thirty-fifth section of this act provided that when an application for a patent has been rejected or withdrawn prior to the passage of this act, the applicant shall have six months from the date of such passage to renew this application or to file a new one, and if he omit to do either, his application shall be held to have been abandoned. Upon the hearing of such renewed applications abandonment shall be considered as a question of fact. Prior to the passage of this act the practice of the Patent Office in regard to the granting of renewed applications for patents after the lapse of years from the date of their previous rejection or withdrawal was not uniform. It had been held that the withdrawal of an application and the neglect to prosecute it within a reasonable time was an abandonment of the invention. The contrary had been held both by the Patent Office and the courts. Inventors whose applications had been rejeeted were desirous of renewing them, and it was proper both that some limitation should be placed upon the time within which the new applications should be made, and that some stable principle should be adopted in regard to the question of abandonment. The section provided that this question should be regarded as a matter of fact, that lapse of time should not of itself be conclusive evidence of abandonment, but that the decision of such cases should depend upon peculiar circumstances as a question of fact and not of law.

In the case of A. Mills (7 OFFICIAL GAZETTE, 961), the Commissioner held that not only was an application abandoned which was not renewed within the six months prescribed by the section under consideration, but that by the terms of the section an applicant was barred from prosecuting a new application for the same invention at any time thereafter, the statute having fixed a limitation upon such right.

In the case of George Crompton (9 OFFICIAL GAZETTE, p. 5), the effect of that section was held to be, however, not to bar the applicant from filing a second application after the time mentioned, but only to sever all connection between the original and new application, so that the original application could not be relied upon to sustain the patent in the event of two years' public use. It was also held that the original application was dead absolutely.

In view of the law and practice thus established this application of Mygatt must be regarded as having been abandoned by virtue of section 35 of the act of 1870, and cannot now be revived.

So far as section 4894 Revised Statutes (section 32 of the act of 1870) is concerned, a new principle was there adopted,applicable to cases pending at the time of the passage of the act of 1870, or filed thereafter, which required applicants, in order to avoid abandonment of their ap plications, to prosecute the same within two years after any action therein, or else show to the satisfaction of the Commissioner that such delay had been unavoidable.

Of course, having found that the application in question was not pending at the time of the passage of the act of 1870, the provisions of the latter-mentioned section are not pertinent thereto. (W. H. Golding, 8 OFFICIAL GAZETTE, 141.)

It appears, too, that on June 26, 1876, applicant filed a new application for this same invention. The latter one, which is now pending, can alone be considered.

The motion is denied.


O. G., vol. xi, p. 1055.



The faultiness of claims which, for the purpose of securing an interference with an adverse party, enumerate important elements of a combination only in the most general language, commented upon and deemed a sufficient warrant to dismiss an appeal. The mere fact that devices cited as references have little commercial value is of no significance in determining their pertinency.

An applicant as against an interfering patentee must show that his invention was complete, not simply for experimental but for successful practical use, prior to the invention of his adversary.

Such successful use involves not only the successful mechanical operation of the invention in the single instance, or in a number of instances, but its actual utility in every other respect.

Where devices in interference differ from each other in important particulars of construction, the successful use of one cannot be inferred from that of the other, which is established.

An applicant whose machine was tested experimentally only, then laid aside and not revived until after the successful introduction of that of his contestant, is concluded as to its lack of perfection and reduction to a useful practicable form.

In order to defeat a patent, a prior machine must have some commercial value, be worth manufacturing for public sale, and worth buying for practical use.

A machine which is abandoned by its inventor, tested only experimentally by his assignee, and declined by the public, is conclusively of no value.

JAMES L. NORRIS and J. J. COOMBS for Sargent.


SPEAR, Commissioner:

The interference is between the letters patent of Sargent, No. 165,370, granted July 3, 1875, and his application for reissue of letters patent No. 165,878, granted July 20, 1875, on the one hand, and on the other two applications of Burge, one an original application, filed the 21st day of August, 1876, and the other an application for a reissue of letters patent No. 166,155, granted August 3, 1875.

The Board of Examiners-in-Chief, in their decision in this matter, called my attention, under Rule 59, to the claims in the reissue application of the Burge patent, which was put in the interference, and expressed their opinion to the effect that the subject-matter included in those claims was not sustained by the patent of Burge. Counsel for Sargent also raise an objection against the claims in interference in the original application of Burge (the 4th and 5th), on the ground, as they allege, that these claims do not embrace a practically operative combination. I have, therefore, to consider, before proceeding to the discussion of the testimony, as bearing more particularly upon the issue and relating to the question of priority of the invention stated in the issue, the preliminary question whether the claims set up by Burge could properly be allowed him in these applications.

The problem which the inventor had to solve in constructing what may be called a time-lock—that is to say, a lock incapable of unlocking from the outside, and only self-unlocking from within-was first to provide some means for obstructing the bolt or bolts to prevent retraction, and to provide also means for removing such obstruction after a lapse of time measured by the internal clock-work; but this was not the solution of the problem, for it was necessary to set the clock-mechanism for a given hour, and to arrange the obstruction for the bolt or bolts, under the conditions named above, with the door open. But the bolt-work being thrown forward and obstructed, the door could not be closed. It was necessary, therefore, in the second place, to provide some other expedient by which the clock-mechanism, together with the mechanism for obstructing the bolt-work, could be set for operation while the bolt

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