Barr could not antedate the Hauss patent; but in his letter of October 27, 1911, he traverses the pertinence of this patent as a reference.

Hauss discloses an electric-light holder, which is in a somewhat different class of devices from the switch-shells of the interfering parties. The slot 1 in the housing of Hauss holds a collar L', of insulating material, through which a wire a passes. Hubbell, however, does disclose a switch-shell having therein an eyelet or collar, through which passes a pull-cord 25, similar to that of the interfering parties. It will be noted, however, that even if we combined this Hubbell switch-shell with the Hauss light-holder, Hauss being in a somewhat different art, we still do not quite meet the terms of the proposed issues, since it cannot be fairly said of Hubbell that his cap on the body holds the eyelet in place, as specified in count 2, because, unlike the caps of the interfering parties, which come down in contact with the eyelets, Hubbell's shell-cap is too far above his eyelet to hold it in place, or, as stated in proposed count 4, "prevent the movement of the chain guide in one direction."

There is some question, therefore, whether or not the proposed issues are met in these patents. As pointed out above, Both has contended, in effect, that they were not. Barr still contends that they are not met, and under these circumstances it is thought that the proposed counts should be added to the interference in view of the holding of the Court of Appeals of the District of Columbia in in re Orcutt (C. D., 1909, 334; 141 O. G., 567; 32 App. D. C., 345,) to the effect that-

In view of the inadvertence of the Patent Office in granting a patent to McDonald and McDonald for the claims of the issue, which patent is now beyond the control of the Office, it would probably have been the more equitable practice to have assumed patentability in the interference proceeding for the purpose of determining the question of priority between the two parties thereto.

Also, in ex parte Brinkman, decided by Commissioner Ewing January 8, 1914, (112 MS. Dec., 128,) it is held:

The question has been raised elsewhere as to the propriety of the refusal by this Office to grant a claim to an applicant which is the same as the claim of a patent disclosing interfering subject-matter. Without passing on this broad question, it seems to me clear that after a patent has once been granted it is not good practice to reject an applicant seeking an interference, where the rejection is based upon no clear anticipation, but the piecing together of several patents.

I therefore direct the Examiner to withdraw his rejection of claim 21 and to declare an interference with the Lewis patent.

The decision of the Examiners-in-Chief is therefore reversed.

EX PARTE SHELLABARGER.

Decided December 29, 1913.

200 O. G., 855.

APPLICATION-EXAMINATION—APPLICATION OF REFERENCES.

Where in the first Office action the Examiner cited four references and specifically applied the same to the claim and in the further prosecution of the case only one new reference was cited, which was not relied upon as an anticipation, and the applicant repeatedly amended his claims in view of these references, Held that no further application of the references is necessary.

ON PETITION.

FOLDABLE CHAIR.

Messrs. Chandlee & Chandlee for the applicant.

FRAZIER, First Assistant Commissioner:

This is a petition asking that the Primary Examiner be instructed to apply the references to the claims rejected.

The record shows that in the first official action of October 3, 1908, the Examiner cited four references and specifically applied the same to the claims. In the second action, following the substitution of the single claim for the six claims rejected, the Examiner again specifically applied the references to that claim. In the third official action this claim was again rejected on the references and for the reasons set forth in the previous official letter. This action was repeated in the fourth official letter in respect to two new claims presented, still using the references of record, and the single claim was similarly treated in the fifth official letter, and again in the sixth official letter. In the official letter of July 16, 1912, the Examiner specifically stated that the claim presented is substantially the same in substance as those previously considered, and using the same references, a clear issue having been reached, the rejection was made final. Applicant's action in repeatedly changing the claims to avoid the references cited warrants the conclusion that he had no difficulty in understanding the application of the references. Otherwise it is not easy to reconcile his action in changing the claims in the absence of a clear understanding of those references. The citation of an additional reference in the official letter of June 27, 1911, was unnecessary, since the action was based, not on this additional reference, but upon the references already fully considered and explained in the first official letter. The explanation of the Examiner, however, of the applicability of the references in the first official action was sufficient for all purposes, in my judgment, and the applicant appears to have conducted the further prosecution of the case in the light of that explanation.

In view of the facts shown no good reason is seen why the Examiner should be required to repeat in each letter an explanation of the references once given.

The petition is accordingly denied.

S. GALLE & COMPANY v. WESTERN GROCER COMPANY.

Decided February 13, 1914.

200 O. G., 1115.

APPEALS-LIE FROM A DECISION AND NOT FROM THE REASONS OF THE DECISION. It is well settled that an appeal is from the decision and not from the grounds or reasons upon which the decision is based, and where the Examiner of Trade-Marks granted a motion to dissolve, an appeal by the moving party alleging error in the reasons given by the Examiner for dissolving the interference will be dismissed.

ON APPEAL.

TRADE-MARK FOR CHEESE, ETC.

Messrs. Kiernan & Moore and Mr. Titian W. Johnson for S. Galle & Company.

Mr. F. T. F. Johnson for Western Grocer Company.

FRAZIER, First Assistant Commissioner:

This is an appeal by S. Galle & Company from a decision of the Examiner of Trade-Marks refusing to dissolve this interference on certain specified grounds.

The record shows that the Western Grocer Company, the registrant, filed a motion to dissolve on the ground that the mark of S. Galle & Company is descriptive of Roquefort cheese, the goods for which registration is sought; that on December 1, 1913, S. Galle & Company, the junior party, filed a motion to dissolve on the ground of no interference in fact, lack of similarity between the marks, and goods of different descriptive properties.

On December 26 the Examiner denied the motion of S. Galle & Company and granted that of the Western Grocer Company, dissolving the interference, fixing the limit of appeal at January 15,

1914.

Inasmuch as the interference was dissolved and the limit of appeal-January 15, 1914 expired and no appeal from the decision of the Examiner dissolving the interference was filed, the question here presented is, as contended for by the Western Grocer Company, a purely academic one, since it involves a consideration of the reasons of appeal rather than of the decision from which the appeal should be taken. It is well settled that an appeal is from the decision and not from the grounds or reasons on which that decision is based. The appeal is therefore dismissed.

MANSON v. HUTCHISON.

Decided March 26, 1914; on rehearing, April 6, 1914.

201 O. G., 569.

INTERFERENCE-APPLICANT AND PATENTEE-MOTION BY PATENTEE TO DISSOLVE ON GROUND THAT ISSUE IS NOT PATENTABLE-SHOULD NOT BE TRANSMITTED. Where a patentee moves to dissolve the interference in which he is involved on the ground that the issue is not patentable, Held that such a motion should not be transmitted, since otherwise the patentee could contend in this Office that the subject-matter of the patent is not patentable and in the courts that his patent is valid. (Baltziey v. Seeberger, C. D., 1905, 120; 115 O. G., 1329, overruled.)

APPEAL from Examiners-in-Chief.

SIGNALING DEVICE.

Mr. F. O. Richey for Manson.

Mr. George Cooper Dean for Hutchison.

EWING, Commissioner:

This case is before me on an appeal by Hutchison from a decision of the Examiners-in-Chief affirming the decision of the Primary Examiner dissolving the interference.

The issues in this interference are in the language of the claims of Manson's patent.

It is contended on behalf of Manson that he is entitled to bring this motion to dissolve on the ground that the claims constituting the counts are not patentable. As there are thirteen claims of the patent and all of them are involved in this interference and the motion includes all of the counts, this is equivalent to the contention that the patent which Manson holds is invalid.

The only question that the Office can pass upon at this time is whether Hutchison is entitled to a patent containing claims in the language of the counts. If Manson were one of the general public, he could not be heard in opposition to Hutchison's right to these claims. It has been held, however, that a patentee may bring such a motion to dissolve as is here involved. (Baltzley v. Seeberger, C. D., 1905, 120; 115 O. G., 1329.)

The right of a patentee to bring such a motion must arise out of the fact that he has received a grant. No disclaimer has been filed by the patentee, and however persuasive this motion might be against his right to sue upon his patent he would not be legally estopped. Under the doctrine of the case above referred to he would be privileged as a patentee to contend in this Office that the subject-matter of his patent is unpatentable and in the courts that his patent is valid and should be enforced against infringers. Here, therefore, are two inconsistent rights claimed as arising out of the grant.

72367°-15-3

After fully considering the situation presented in this case I am satisfied that a patentee has no right to move to dissolve on the ground that an issue drawn in the language of one of his claims and directed to the same subject-matter as his patent purports to cover is unpatentable. It follows that the motion to dissolve should not have been transmitted. The result in this case is that the Office is troubled with an interference over subject-matter which two tribunals thereof have held to be unpatentable, but the remedy for such annoyance is to develop the state of the art fully before granting patents.

The case of Baltzley v. Seeberger is overruled.

The motion to dissolve is denied.

ON PETITION FOR REHEARING.

A petition for rehearing has been filed by Manson, with an offer to enter a disclaimer of the counts of the interference if the tribunal having final jurisdiction shall hold that they are not patentable.

The patentee cannot distinguish himself from the general public in any way or acquire any right arising out of his patent by maintaining that the patent is void.

The petition for rehearing is denied.

JOHN L. WHITING-J. J. ADAMS Co. v. RUBBER AND CELLULOID HARNESS TRIMMING CO.

Decided March 26, 1914.

201 O.G., 569.

TRADE-MARKS-CANCELATION PROCEEDING-NEW EQUITY RULES-INTERROGATORIES. Held that the new equity rules apply to cancelation proceedings and that either party thereto may file interrogatories and that in the event of the failure to answer such interrogatories the party in default is liable to the penalty provided by Equity Rule 58.

ON PETITION.

TRADE-MARK FOR BRUSHES.

Mr. William Quinby, Mr. Frank F. Reed, Mr. Edward S. Rogers, Mr. William S. Hodges, and Mr. F. M. Phelps for John L. WhitingJ. J. Adams Co.

Mr. Charles C. Gill and Mr. Wm. G. Henderson for Rubber and Celluloid Harness Trimming Co.

NEWTON, Assistant Commissioner:

This is a petition that the supervisory authority of the Commissioner be exercised to set aside an order of the Examiner of Inter