of the privilege of driving, are contributing valuable space to the publication of the names of persons convicted of speeding and reckless driving in addition to those whose driving permits are revoked or suspended. We think appellant's license plate discloses a new and novel idea and a means for practicing it. Guthrie v. Curlett, 10 F. (2d) 725, 353 O. G. 266. In Cincinnati Traction Co. v. Pope, 210 F. 443, a "time limit transfer ticket" was held patentable because it was "not a method at all, but a physical tangible facility." So here, appellant's license plate may be characterized as a physical facility. The decree is affirmed as to claims 15 to 20, inclusive; and reversed as to claims 21 to 24, inclusive. Affirmed in part; [U. S. Court of Appeals for the District of Columbia] MARTIN v. COE, COMMISSIONER OF PATENTS PARTIES SUBSTITUTION 467 O. G. 243; 83 F (2d) 606 No. 6,450. Decided April 6, 1936 PRACTICE WHERE NEW COMMISSIONER ASSUMES OFFICE DURING PENDENCY OF SUIT UNDER SECTION 4915 REVISED STATUTES. Where a Commissioner of Patents, the defendant in an equity suit brought under section 4915 Revised Statutes, resigns and his successor assumes office after the case is argued and submitted but before decision is rendered thereon, a conversation between the trial justice and the plaintiff in which the former promised to render a decision soon, Held not to serve as a substitute for the necessary action in court, as a satisfactory showing to the court that there was a substantial need for continuing and maintaining the cause and obtaining an adjudication of the questions involved or that because of such a showing the court permitted the cause to be continued and maintained against the successor as required by title 48, sec. 780 U. S. C. A. Affirmed. Mr. James V. Martin, pro se. Mr. R. F. Whitehead for the Commissioner of Patents. Before MARTIN, Chief Justice, and ROBB, Van Orsdel, GRONER, and STEPHENS, Associate Justices MARTIN, C. J.: This case was begun by the filing of a bill in equity in the lower court by appellant, as plaintiff, against Thomas E. Robertson, as Commissioner of Patents, under section 4915 Revised Statutes (35 U. S. C. A., sec. 63), to require the Commissioner to issue a patent to appellant to include a group of claims which had been rejected by the tribunals of the Patent Office. The bill was filed in the lower court on February 10, 1930; on February 28, 1930 an answer was filed by the defendant; on April 7, 1933 the case was argued and submitted. On June 26, 1933, a date after the argument but before the decision of the case, Mr. Robertson resigned from the office of Commissioner of Patents and was succeeded by the present appellee, Conway P. Coe. Title 28, section 780, U. S. C. A., provides as follows for cases in which a public officer ceases to hold his office, during the pendency of a case brought against him as such, and is suceeded by a subsequent appointee: * * * [a] Where, during the pendency of an action, suit, or other proceeding brought by or against an officer of the United States, and relating to the present or future discharge of his official duties, such officer dies, resigns, or otherwise ceases to hold such office, it shall be competent for the court wherein the action, suit, or proceeding is pending, whether the court be one of first instance or an appellate tribunal, to permit the cause to be continued and maintained by or against the successor in office of such officer, if within six months after his death or separation from the office it be satisfactorily shown to the court that there is a substantial need for so continuing and maintaining the cause and obtaining an adjudication of the questions involved. [c] Before a substitution under this section is made, the party or officer to be affected, unless expressly consenting thereto, must be given reasonable notice of the application therefor and accorded an opportunity to present any objection which he may have. On June 26, 1934, the lower court dismissed the case upon the ground that after the accession of Mr. Coe as Commissioner, the case had not been "continued and maintained" by the court in accordance with the requirements of the foregoing statute. Afterwards, to wit, on July 26, 1934, the plaintiff, filed a motion in the lower court, together with a supporting affidavit, praying the court to vacate its order dismissing the case and assigning in substance the following grounds for the motion, to wit, that on or about the middle of August 1933 within 60 days following the succession of Mr. Coe to the office of Commissioner of Patents, plaintiff personally called at the office of the secretary of the trial justice for the purpose of asking when a decision could be expected in the case, and whether there was any further action which plaintiff should take in the case; that while plaintiff was asking the secretary these questions the trial justice came into the office and spoke to plaintiff substantially as follows: "I owe you an apology for not having reached a decision in your patent case, but I have been under considerable pressure of other work and will soon let you have a decision"; that following this conversation plaintiff relied upon the same and was convinced that there was no other action which was proper or necessary for him to take in the case until a decision was announced; and that the attorney of the Commissioner, made no objection to a continuation of the cause and a decision on the merits. Approximately a month following the August visit of plaintiff to the chambers of the trial justice, plaintiff visited the Patent Office on another matter and met the counsel of record [in the lower court] for the Commissioner, who said to plaintiff that he "wondered when we may expect a decision" in plaintiff's case. That plaintiff then repeated to him the statements made by the trial justice as to a speedy decision. The appellant contends that these occurrences, happening well within the six months' period following the accession of Mr. Coe to office, together with the trial record of the case awaiting decision in the hands of the trial justice, amounted to a satisfactory showing of a substantial need for continuing and maintaining an adjudication of the questions involved in the case, and that plaintiff had no doubt that the court so regarded it, and that when a decision was rendered the title of the case would show the name, Conway P. Coe, substituted for his predecessor in office. On January 18, 1935 the lower court entered a final decree in the case dismissing the plaintiff's bill of complaint, whereupon, the present appeal was taken. The sole question involved in this appeal is whether within six months after the retirement from office of Commissioner Robertson it was satisfactorily shown to the lower court that there was a substantial reason for continuing and maintaining the cause and obtaining an adjudication of the question involved, and whether such a substitution was made by the court, and whether before such a substitution was made the Commissioner of Patents, unless expressly assenting thereto, was given a reasonable notice of the application there for accorded an opportunity to present any objection which he might have thereto. We think that the explanation given by appellant of the facts connected with the case in the lower court does not show such a substitution. The conversation between the trial justice and the plaintiff did not serve as a substitute for the necessary action in court, as a satisfactory showing to the court that there was a substantial need for continuing and maintaining the cause and obtaining an adjudication of the questions involved, or that because of such a showing the court permitted the cause to be continued and maintained against Mr. Coe as successor in office to Mr. Robertson. A similar question was before this court in the case of The Black Clawson Co. v. Robertson, 63 App. D. C. 236; 71 F. (2d) 536, wherein similarly the six months' period permitting the substitution of the incoming Commissioner of Patents for the retiring Commissioner had not expired when the cause was argued and submitted to this court for decision, but that no action was taken within the six months' period for a substitution under the statute. Upon 2 motion made after the expiration of such period praying for a substitution in the case, we held against the application and dismissed the case. In United States Ex rel. Claussen v. Curran, 276 U. S. 590, the court said: It appearing that Henry H. Curran, sued herein as Commissioner of Immigration, resigned such office on March 31, 1926, and was succeeded by Benjamin M. Day, who now holds that office, and that no motion was made under sec. 11 of the act of February 13, 1925 (c. 229, 43 Stat. 936, 941), asking the court to "Permit the cause to be continued and maintained by or against the successor in office of such officer", and that the six months' period within which such a motion could have been made, has expired, the court now vacates the judgments entered in the District Court and in the Circuit Court of Appeals and remands the cause to the District Court with a direction to dismiss the cause as abated. See Le Crone v. McAdoo, 253 U. S. 217. Consistently with the foregoing authorities we affirm the judgment of the lower court dismissing plaintiff's bill, at appellant's cost. [U. S. Court of Appeals for the District of Columbia] BAKELITE CORPORATION v. COE, COMMISSIONER OF PATENTS No. 6,523. Decided March 23, 1936 469 O. G. 6; 83 F. (2d) 553 1. PATENTABILITY-ABRASIVE INSTRUMENT. Claims for an abrasive instrument Held anticipated by prior art patent. 2. BILL UNDER SECTION 4915 R. S.-WHAT MAY BE CONSIDERED. "The third claim is not properly before us because not passed upon by the Board of Appeals and therefore may not be presented or considered in the bill in equity under section 4915, Lucke v. Coe, 69 F. (2d) 379, 63 App. D. C. 61.” APPEAL from the Supreme Court of the District of Columbia. Affirmed. Mr. Ralph E. Parker and Mr. Charles H. Potter for Bakelite Corporation. Mr. R. F. Whitehead for the Commissioner of Patents. Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices ROBB, A. J.: Appeal from a decree in the Supreme Court of the District dismissing appellant's bill, filed under section 4915, Revised Statutes, as amended (35 U. S. C. A. sec. 63), to authorize the issuance of a patent to appellant (assignee of applicant Redman). Three claims are involved; claims 10 and 11, and a third claim which was denied by the Examiner, cancelled, and no appeal taken to the Board of Appeals. Claim 10 is illustrative of claims 10 and 11, and reads as follows: As a new article of manufacture, an abrasive implement comprising a flexible base, abrasive grains, and a binder for securing said grains to said base, said binder including a condensation product of a phenolic body and an aldehyde characterized by flexibility inherent in the product per se when set by the action of heat to the infusible stage. The product covered by these claims is a flexible abrasive sheet of sandpaper type to which the abrasive grains are cemented by phenolaldehyde synthetic resin. The expression in the claim "condensation product of a phenolic body and an aldehyde" means the synthetic resin formed by reacting the aldehyde with a phenolic compound. The words, "set by the action of heat to the infusible stage", mean hardened by heating to a condition wherein the resin cannot be caused to flow. The final product is characterized by inherent flexibility. Claims 10 and 11 were rejected as being met by the patent to Carlton, 1,775,631, September 16, 1930. Carlton fully describes sandpaper consisting of a backing sheet, abrasive grains, and a bond. The bond is described as a phenol formaldehyde resin containing a phenolic body and an aldehyde. According to the patent, the materials theretofore used were open to objections which the patent was designed to overcome. In the specification it is stated: * * * The principal objects of my present invention are the provision of an abrasive article having a binder which functions efficiently; the provision of an abrasive article having a binder characterized by the desired degree of flexibility. I have discovered that resinous materials are preferable not only to gums (which are more or less water soluble) but also to gum-resins and to hardened oils for certain purposes contemplated by me, and particularly synthetic resins as peculiarly adapted for my ends for a number of reasons * *. I have found that various aldehyde-phenol materials are avail. able, but phenol-formaldehyde products of condensation is preferred by me as a major constituent of the binder, that is as best attaining the desired ends, viewed from certain aspects. Sandpaper made in accordance with the disclosure of my present invention is characterized by the desired degree of flexibility without adverse deleterious effects, great resistance to water and moisture generally, and to various other solvents employed in the arts, and a bond of great mechanical strength which is capable of sustaining the grit even in the case of the coarser grits where the strains are relatively high. * I have further discovered that the flexibility of the resultant article may be somewhat varied by heat treatment after the application of the binder and grit. I have further discovered that by carrying out my improved process I am enabled to utilize resinous material without being under the necessity of employing oils in connection therewith, as have been heretofore employed in processes known to me. * |