of Leidgen's second application. Leidgen's claim 1, above quoted, is substantially the same as claim 1 of Richardson's patent and is broader than any claim in Leidgen's original application, and it was not made by Leidgen until the filing of his second application, which was about two years after the issue of Richardson's patent.

Rule 116 provides:

116. In original proceedings in cases of interference the several parties will be presumed to have made the invention in the chronological order in which they claimed the same in their completed applications for patents clearly illustrating and describing the invention; and the burden of proof will rest upon the party who shall seek to establish a different state of facts.

The first to make a claim in substance and effect covering the invention is the senior party. (Edison v. Ball, C. D., 1895, 811; 71 O. G., 1313.)

Richardson being the first party to make the claim in controversy, it must be held that he is the senior party, and the burden of proof is upon Leidgen to show that Richardson is not the first inventor of the matter in issue.

The decision of the Primary Examiner is reversed.

MORGAN. HANSON.

Decided June 13, 1896.

77 O. G., 154.

INTERFERENCE-MOTION TO DISSOLVE-IRREGULArity—Breadth of Issue.

It is a cardinal principle that in declaring an interference the issue must be as broad as the broadest claim included thereunder.

APPEAL on motion.

REVOLVING CHAIR.

Application of Frederick L. Morgan filed September 25, 1895, No. 563,572. Application of Miles A. Hanson filed July 15, 1895, No. 555,945.

Mr. John E. Wiles for Morgan.

Messrs. Benedict & Morsell for Hanson.

FISHER, Acting Commissioner:

This case comes before me on appeal from the Examiner's refusal to dissolve upon the ground that no interference in fact exists as to claim 6 of Hanson's application and upon the ground of irregularity for the reason that the issue is not as broad as said claim 6, which is stated to be included under the issue.

The determination of the first ground rests upon the question as to whether the "rigid pins or projections" in the issue means the same as Hanson's "adjustable arm” and whether, also, the "means for holding HI. Doc. 354—5

the arm" of Hanson has the same meaning as the "lateral notches" of the issue.

The Examiner says that—

there is no element in Hanson's sixth claim that does not find an equivalent in the issue. The structures are so nearly identical that it is difficult to conceive how it could be otherwise.

This conclusion is believed to be correct. The structure is the same in each case, and the claim and issue are simply different statements of the elements of that structure. The use of general or specific terms to describe the features of such structure does not affect the existence of a condition of interference.

The second ground is based upon good reason. The sixth claim of Hanson is broader in certain respects than the issue. "Means for hold. ing the arm" is a more general expression than "lateral notches." It is a cardinal principle that in declaring an interference the issue must be as broad as the broadest claim included thereunder; otherwise, as Hanson alleges is the fact in this case, a party may be the inventor of the broad claim and not the inventor of the more specific issue.

For this reason the interference is dissolved and should be redeclared, so as to have an issue as broad in all respects as any claim included thereunder.

EX PARTE Bryant.

Decided May 24, 1895.

76 O. G., 451.

REISSUE TO BROADEN CLAIMS-ACQUIESCING IN REJECTION OF ORIGINAL CLAIMS. Where an applicant acquiesced in the limited construction put on his invention, and at no time during the prosecution of his original application suggested or intimated that the invention resided in the broad device now sought to be claimed in the reissue application, Held that the failure to make the claim in the original patent did not arise through inadvertence, accident, or mistake, and the reissue claim refused.

APPEAL from the Examiners-in-Chief.

BOOT OR SHOE.

Application (reissue) filed October 31, 1893, No. 489,668.

Mr. A. P. Browne and Messrs. Alexander & Davis for the applicant. SEYMOUR, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief sustaining the action of the Primary Examiner rejecting the following

claim:

1. A boot or shoe having the front portion of the upper face of the inner sole provided with transverse grooves or channels extending across the same, for the purpose set forth.

The references are patents to Thomas, dated July 28, 1868, No. 80,518; Hill, dated September 14, 1875, No. 167,762; Knipe and Day, dated January 19, 1886, No. 334,668; Dalsheimer, dated March 13, 1888, No. 379,452.

The claim is refused substantially on the grounds, first, that the invention now sought to be patented is not the same invention as that of the original patent; second, that the failure to make the claim in the original patent did not arise through inadvertence, accident, or mistake, and, third, that the claim is anticipated by the references.

Considering first the pertinency of the references, the claim is for a boot or shoe having the upper face of the inner sole provided with transverse grooves extending across the same for the purpose of making the sole of the shoe flexible. The reference principally relied upon as an anticipation of the claim is the patent to Knipe and Day. This patent shows a shoe having an outer sole made of two thicknesses of leather, the upper thickness having grooves on its upper face, not extending, however, across the sole, and an ordinary inner sole on top of and fastened to the outer sole.

A shoe so made is not flexible like applicant's, the flexibility of the grooved sole being destroyed by the ordinary inner sole placed on top of and fastened to the outer sole.

The patent to Dalsheimer shows a shoe the inner sole of which has transverse incisions or cuts ƒ across its under face. It has been stated that what applicant has done is to turn the insole shown by this patent the other side up. This may be true, yet applicant has by doing this made an improved shoe.

The references do not show an anticipation of the shoe covered by the claim, and the applicant is entitled to said claim in the reissue patent unless he has by his actions lost his right to it.

While the shoe or sole now sought to be covered by this claim is shown and described by the patent, yet from the record of the application on which said patent is granted I am led to believe that applicant did not consider this sole to be his invention nor attempt to cover it by said patent.

The invention actually covered by the patent is stated as follows:

My invention relates to certain improvements in the construction of boots and shoes; and it consists in forming the insole, to which the upper of the shoe is first fastened, with a series of transverse grooves or channels across the top front part of the insole and afterward securing to the shoe thus constructed one or more outer soles similarly grooved or channeled, and in certain details of construction, which will be more fully explained by reference to the accompanying drawings.

After describing certain details of construction applicant further says:

The outer sole is stitched or fastened around the edges to the insole in the usual manner; but that portion between the lines of stitching or fastening which forms the whole bottom of the shoe is not in any way connected with the inner sole, and consequently in the action of walking the inner sole is free to move upon the outer

one, and each sole retains the flexibility which is incident to its peculiar construction. It will be manifest that if these soles were cemented or otherwise fastened together the transverse grooving or channeling of the outer sole would be useless, as the outer sole could have no movement of flexure about itself, but would form a part of the insole and would have only such movement as would be permitted by the insole.

From this it appears that the invention is an inner and an outer sole, both grooved across the top and separated except at their edges, so that in bending upward each sole would retain the flexibility incident to its grooves, and this and this alone was what applicant considered to be his invention and what he intended to cover by his claims. To show that the Office considered the invention to be thus limited, reference may be made to the decision of the Examiners-in-Chief allowing the patented claims on appeal. In that decision it was said:

The Knipe and Day patent has a combined inuer and outer layer, the inner layer of cheap material requiring transverse grooves to obviate its rigidity, and both attached together, and so claimed. Appellant's claim to invention is distinguished from this and limited to soles separated from each other except at the edges, and both soles grooved, forward of the center.

The applicant acquiesced in the limited construction thus put on his invention, and at no time during the prosecution of his application did he suggest or intimate that the invention resided in the grooved insole only, the subject-matter of the appealed claim.

The appellant has made certain changes in the statement of invention and in the description of his patent upon which to support the appealed claim. It is stated by him that these changes were supposed to be mere verbal changes, and that he is willing to amend the specification by striking out such changes and restoring the specification to its exact original form. It is clear that the description in the patent will not support such a claim as that now made. The changes are material and are not warranted, and therefore the rejection on the ground that the invention now sought to be covered by the appealed claim is not the same invention was correct.

As to the second ground of rejection, on February 5, 1890, this applicant filed an application, Serial No. 339,308, for outer soles for boots and shoes, stating that his invention

consists in forming transverse grooves or channels on the inner face of the sole, for the purpose of making the leather more flexible.

Claim 1 of this application is substantially for a sole, either inner or outer, having transverse grooves formed across the inner face, and claim 2 for an outer sole having such grooves. After repeated rejec tions of these claims on certain references applicant formally abandoned this application by letter of January 22, 181. On February 24, 1891, he filed application, Serial No. 383,307, on which Patent No. 462,468, for which applicant is now applying for reissue, was granted. This

latter application and patent show and describe such a shoe-sole as applicant is now attempting to claim; but, as has been stated above, there is nothing in them to indicate that applicant considered the present broad device as his invention; but, on the other hand, as he acquiesced in the decision of the Examiners-in-Chief in giving a limited construction to the device when allowing the claims in the patent there are indications the other way.

Considering this second ground of rejection on these facts, the Examiners-in-Chief in their decision said:

Whether the grooves be so put on an outsole or on an insole, is immaterial, the action of the grooves is the same on either sole. The invention is the same when applied to either sole.

Having abandoned this application, if he had not abandoned its invention, he would have presented it in his next application, that which became his patent now sought to be reissued.

When the second application was presented to him for his oath and signature it did not state or claim either of these things to be its invention, but did everywhere state and describe and did claim a shoe having both the inner and outer soles grooved and free to move over each other, as now appears in the specification of the patent.

And it appears that this applicant after all this effort in one application, and according to his oath in the second application, to obtain a claim for a shoe with one sole only grooved, did not discover that he had not obtained a claim for such a simple matter until within a few days of two years after he obtained his patent.

The abandonment of the first application does not imply an abandonment of its invention. But the filing immediately after the abandonment of the first application of a second application showing the invention of the first application, but not claiming it, is a presumptive abandonment of that prior invention; and the prosecution of the narrower invention and taking of it in a patent and the holding of the patent for two years without questioning its invention, strengthens the presumption of abandonment and the presumption that the patent was intended to cover precisely what it describes and claims and nothing otherwise or broader than its claimed and described invention.

The facts of the record appear to us to negative any accident, inadvertence, or mistake in the wording of the claim of the patent.

Furthermore, a claim for this invention in substance was made in the prior application and was abandoned therein and it was not renewed in the original application of his patent, and it was only the limitations put on his claims by the decision of the Board allowing them that enabled him to obtain his patent with the limited claims. He cannot revive this abandoned claim by reissue. The omission to claim it was not mistake but a deliberate conclusion. (Yale Lock Mftg. Co. v. Berkshire Natl. Bank, C. D., 1890, 347; 51 O. G., 1291, and the cases therein cited.)

In this conclusion I concur.

I am of the opinion, therefore, that although the appellant made such an invention as expressed by the claim, which is not anticipated by the references, yet owing to his conduct, as above stated, he is not now entitled to such claim in this reissue.

To the extent above indicated the decision of the Examiners-in-Chief is affirmed.