Subsequently Bard was permitted by the Primary Examiner to file additional drawings comprising figures numbered 7 and 8, and these seem to illustrate grooves located in the seating surface of the valve body.

It is noted from the record that appellant filed the amendment copying the claims from the Flodin patent on November 9, 1932, and that on November .14, 1932, the Primary Examiner rejected a number of them, including those which are now the counts at issue, on the ground that Bard was not entitled to make them for the reason that his application showed the grooves in the seating surface of the plug while the claims required that they be in the seating surface of the valve body.

Thereupon Bard tendered the additional drawings. They were "added to the case" by the Primary Examiner on December 5, 1932, and the interference declared on January 23, 1933.

It was urged by Flodin before the Examiner of Interferences that the addition of the drawings added new matter to his application. The Examiner of Interferences held:

Contrary to contentions of Flodin, it is thought said sheet of drawings added by Bard to his application does not constitute "new matter." Not only is the transposition of grooves from plug member to valve body deemed adequately suggested in Bard's original specification, but it is thought that this transposition would be permissible were there no such suggestion by Bard. As Bard plainly shows in his brief, to which reference is made, workers in the art, including Flodin, recognize that, in general, lubricating grooves may be placed at will either in the seating surfaces of a plug or in the seating surfaces of the valve body, and that the disclosure of one form usually implies the other form as an obvious alternative.

Upon this point the Board of Appeals reversed the Examiner of Interferences, saying:

Bard bases his right to make this change in the drawing on the last paragraph of his specification which originally read as follows:

"By the expression 'grooves in the seating surface of the valve and its seat', appearing throughout the specification and claims, is intended an arrangement of grooves either wholly in the valve member or partly in the valve member and in its seat, for the purpose specified."

Clearly the reference to the "grooves lying wholly within the valve member" has no bearing upon the claims before us and therefore the only question is the interpretation of an arrangement in which the grooves are "partly in the valve member and its seat." This expression unquestionably reads upon the arrangement shown in Bard's original drawing but we are unable to see how this would warrant changing the position of the grooves which substantially surround the passage from the valve plug to the valve seat member. The only thing in this paragraph which in our opinion indicates a structure other than that shown in the Bard original drawing is the arrangement in which the grooves would be "wholly in the valve member".

The Examiner of Interferences has indicated that, even without this paragraph, Bard should be permitted to transfer the grooves which substantially surround the passage from the valve plug to the valve seat member as this

change clearly would not involve invention. We cannot agree with this view. The Courts have repeatedly held that in considering a party's right to make a claim, the question of patentable distinction is not involved and we therefore are satisfied that it is immaterial whether the substitution is patentable or not and that Bard's right must be based strictly upon his disclosure. While it is true, therefore, that the reference to grooves which lie partly in the valve member and its seat would be generic to the specific structure called for by the counts under discussion, that does not, we consider, justify introducing another species of this generic arrangement, which was not described in Bard's specification, into his drawing.

It is our view that the board is correct in its statement of the law here applicable, and there is no occasion for us to repeat the statement in different phraseology. The brief on behalf of Bard and the authorities cited have been carefully scrutinized. Much of the argument is devoted to the contention that the counts must be broadly construed. This is true, but it is equally true that clearly expressed limitations may not be disregarded. Henry P. Field v. Audley Hart Stow, 18 C. C. P. A. (Patents) 1502, 49 F. (2d) 1072.

The limitations as to the grooves being located in the seating surface of the valve body are clearly expressed in the particular counts at issue and, without any reference to the question of patentability, such limitations must be taken into account in an interference proceeding. Atherton v. Payne, 19 C. C. P. A. (Patents) 867, 54 F. (2d)

821.

The decision of the Board of Appeals is affirmed.

471 O. G. 249; 23 C. C. P. A. 1049; 82 F. (2d) 615

TRADE MARKS

SKRAM Co. v. BAYER CO., INC. (No. 3616) 2

OPPOSITION-SIMILARITY OF GOODS.

While the goods of the respective parties belong to the same broad class, they are not identical. The words which constitute the central, if not the dominant feature of the marks do not resemble each other in sound or meaning, and their particular arrangement is nothing new in trade mark practice. When this fact is considered there appears to be no sound reason why the opposition should be sustained.

United States Court of Customs and Patent Appeals, April 6, 1936 APPEAL from Patent Office, Opposition No. 13002

[Reversed.]

Clarence A. O'Brien (Charles E. A. Smith, Thomas E. Turpin, and George C. Baldt of counsel) for appellant.

Edward S. Rogers, James F. Hoge, William T. Woodson, and Thomas L. Mead, Jr. (James H. Rogers and Brown & Phelps of counsel) for appellee.

2 Rehearing denied June 17, 1936; see opinion on page 1286.

115363°-37-26

[Oral argument March 9, 1936, by Mr. Baldt and Mr. Edward S. Rogers]

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

The Skram Company here appeals from a decision of the Commissioner of Patents reversing the decision of the Examiner of Interferences who dismissed an opposition by the Bayer Company to appellant's application for registration of the word "SKRAM" printed in the form of a cross (that is both horizontally and vertically) with the middle letter "R" common to both lines, the cross being within a circle having a black background with a narrow circle of white around the outer edge. The application was filed April 10, 1933, and alleges continuous use of the mark since January 15, 1932, "for a preparation for treatment of human foot troubles such as athletes foot, and tired, aching, swollen or itching feet."

The notice of opposition alleges continuous use "For many years and long prior to January 15, 1932," by the Bayer Company and its predecessors of a mark comprising the word "Bayer" arranged in the form of a cross "both with and without a circle and with black and white and colored backgrounds, as trade-marks for chemical and pharmaceutical preparations," and pleads ownership of five registrations ranging in date from May 30, 1922, to June 21, 1927.

One of the registrations so plead comprises simply the word "Bayer" printed in cross form, without any circle; a second has the word in cross form upon a black background surrounded by alternating narrow white and black circles, and the other three show the word in cross form upon a white background surrounded by a narrow black circle.

Taking opposer's cited registrations as a whole, they cover a large number of chemical, pharmaceutical and medicinal preparations, none of which, however, is identical with the preparation described by the applicant.

It is obvious that there is no similarity between the words "Skram" and "Bayer" standing alone, except perhaps that each contains five letters, but opposer contends that the placing of appellant's word in cruciform arrangement, within a circle, creates a mark which, taken as a whole, so resembles the mark of opposer as that, when applied to goods of the same descriptive properties, which is alleged to be true of the goods of the respective parties here, it would be likely to cause confusion or mistake in the mind of the public and to deceive purchasers, especially as to origin, and that opposer would be damaged by the registration sought.

The contention thus made was sustained by the commissioner upon the ground, as we interpret his decision, that, in view of

certain similarities in the physical appearance of the marks of the contesting parties, he did not "consider the question of probable confusion to be free from doubt."

Our view of the matter coincides with that of the Examiner of Interferences rather than with that of the commissioner.

While the goods of the respective parties belong to the same broad class, and in that respect may be said to be of the same descriptive properties, they are not identical. When this fact is considered in connection with what seems to us to be the striking difference in the marks themselves, we are unable to discern any sound reason why the opposition should be sustained.

It is true that there is a physical resemblance between the marks when visualized with the eye only, and, as said in the decision of the commissioner, they might impress the "casual observer as being the same." (Italics ours). One of the witnesses for opposer, who was its general sales manager, in answer to an inquiry as to why he believed the registration of appellant's mark would be injurious to opposer, said:

For the reason that the words crossed as they are in a circle might indicate to the casual observer that this product was the product of the Bayer Company.

We do not find in the statute any reference to "the casual observer." The statute refers to confusion or mistake "in the mind. of the public" and to the deception of "purchasers."

It is probable that an observer looking casually at packages bearing the respective marks, located side by side upon the shelf of a dealer in such merchandise, and noting only the cruciform arrangement of the words in a circle, without observing the difference in the words themselves, would be impressed with a resemblance in the appearance of the marks, but it is well nigh inconceivable that any purchaser, or any member of the public, able to read who gave even ordinary attention to the marks would be led to the belief that the goods are of common origin. The words which constitute the central, if not the dominant, feature of the mark do not resemble each other in sound or meaning, and their particular arrangement is nothing new in trade-mark practice.

The decision of the Commissioner of Patents is reversed.

470 O. G. 723; 23 C. C. P. A. 1051; 82 F. (2d) 415

BECHTOLD V. LANSER (No. 3615)

1. PATENTS-INTERFERENCE RIGHT TO MAKE THE CLAIM.

Each of the parties hereto has the same objective, viz., the separation of gases from liquids in liquid dispensing apparatus. By apt language the appellant could have limited his claim but he did not see fit to do that.

Instead he used a term which is broad enough in its ordinary and common meaning to include the conduit disclosed by appellee between his receiving chamber and his second float chamber. The disclosure of appellee entitles him to make the claim corresponding to the count here in issue.

2. PATENTS-INTERFERENCE LACHES.

Assuming without deciding that appellant's application for reissue is invalid because of delay in filing the same, an estoppel against appellee arises in favor of the public only, and not in favor of appellant. Such an estoppel may not be considered in this proceeding, but is matter for ex parte consideration by the Patent Office Tribunals.

United States Court of Customs and Patent Appeals, April 6, 1936 APPEAL from Patent Office, Interference No. 65875

[Affirmed.]

Carl T. Mack (Walter G. Burns and Royce A. Ruess of counsel) for appellant. Cox & Moore (Theodore A. Hostetler, Ballard Moore, and Richard R. Trexler of counsel) for appellee.

[Oral argument March 9, 1936, by Mr. Mack and Mr. Hostetler]

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

LENROOT, Judge, delivered the opinion of the court:

This is an appeal in an interference proceeding from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the Examiner of Interferences, awarding priority of invention to appellee upon the sole count in issue, which reads as follows:

In combination with a pump for liquid having a suction chamber and an outlet chamber, an air separating means having a receiving chamber and a float chamber provided with a restricted air passageway therebetween, said receiving chamber having communication with the outlet chamber of said pump and provided with a liquid discharge outlet, a connection for liquid between said float chamber and the suction chamber of said pump, said float chamber having an air vent, and a float actuated valve including a float in said float chamber for controlling said connection.

The interference arises between a patent issued to appellant on October 6, 1931, No. 1,826,340, the application therefor having been filed on July 18, 1930, and a reissue application of appellee for reissue of his patent No. 1,783,510, issued December 2, 1930. Appellee's original patent application was filed November 16, 1928, and the instant reissue application was filed January 6, 1933.

The count here in issue was copied by appellee from claim 31 of appellant's patent. It will be observed that said reissue application was filed 15 months after the date of appellant's patent, and 2 years, 1 month and 4 days after the date of appellee's patent.