DIVISION OF APPLICATIONS-Continued. 8. APPLICATION-DIVISION.-Division Held properly required between claims to a wrapping machine and claims to a torsion brake used in connection with that machine. *Id. 9. SAME SAME.-Division Held properly required between claims for a hand operated wrapping machine and a claim to a web feeding and cutting device used in connection with the machine. *In re Goerke, Bystrom and Schmale, 443. 10. SAME SAME.-A requirement that claims for a wrapped article be divided from claims for the machine for wrapping the article and the process of wrapping it Held properly made. *In re Burns, 441. DOUBLE PATENTING. See Designs, 3. DOUBT. See Interference, 36. 1. METHOD AND APPARATUS.-Where appellant has been granted a patent for a device for performing a method which may be also performed by other apparatus or by hand, it cannot be said that claims for the method recite the mere function of a machine, so that their allowance would be double patenting. *In re McKee, 67. 2. DEPOSIT-SAFE-Double PATENTING.-Certain claims for a deposit-safe having a change compartment and a surplus compartment, reciting a slot extending from one compartment to the other, Held properly rejected on the ground of double patenting in view of applicant's copending patent and other claims reciting the slot as extending through the wall of the container Held patentable. *In re Miller, 173. 3. PATENTABILITY.-Claims for a round metal rod having certain specified characteristics Held properly refused on the ground of double patenting in view of applicant's patent granted on a copending application, the claims of which are for a metal tube having the same characteristics as those specified in the claims on appeal. *In re Neuberth, 420. 4. SAME. Claims for an insecticide Held not patentable since they are in substance the same as claims of applicant's patent No. 1,764,792, since certain discoveries relating to the toxic value and non-burning of foliage which were made subsequent to the date of the patent, may not be held to entitle the applicant to another patent on the same product. *In re James, 474. DRAWINGS. See Appeal to the United States Court of Customs and Patent Appeals, 1; Claims, 4; Division of Applications 2; Rejection of Claims, 2, 7. ELEMENTS. See Construction of Claims, 28, 48; Construction of Specifications and Patents, 1; Division of Applications, 1; Patentability, 4. EMPLOYER AND EMPLOYEE. See Interference, 14. EQUIVALENTS. See Interference, 30. EQUITY. See Construction of Equity Rules; Suits for Infringement, 1; Suits under Section 4915, Revised Statutes; Trade-Marks, 3, 52. ERROR. See Appeal to the United States Court of Customs and Patent Appeals, 4, 5, 6; Interference, 24; Trade-Marks, 1. ESTOPPEL. See Interference, 15, 16, 17, 18, 19, 20, 21, 22, 41; Reissues, 1, 2; Trade-Marks, 3. EVIDENCE. See Interference 11, 14, 16, 31, 34, 36, 37, 39, 45, 58, 59; Preliminary Statement; Trade-Marks, 35, 53, 54. EXAMINER OF INTERFERENCES. See Interference, 26; Trade-Marks, 33. FAILURE TO MOVE IN INTERFERENCE. See Interference, 22. FINAL FEES. FEES-RETURN OF.-Where appeal is filed on the last day of the six months period following a final rejection of certain claims, and along with the appeal an amendment is filed canceling certain claims and amending others and thereafter the Examiner passes the application for issue in view of the amendment, Held the fee accompanying the appeal was not paid by mistake or in excess of the amount required by law and will not be returned. Ex parte Kaufmann and Bungartz, 11. FIRST AND ORIGINAL INVENTOR. See Interference, 11, 22, 28, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 42, 44, 45, 46, 47, 48. FOREIGN PATENTS. See Interference, 10, 11, 38. 1. ISSUANCE OF FOREIGN PATENT-PROOF.-The mere statement in the brief that a patent had been issued by a foreign patent office for claims substantially the same as those on appeal cannot be considered where it is not shown by the record that the patent had so issued. *In re Kleine, Pfannenstiel and Matthaes, 566. FOREIGN PATENTS-Continued. 2. SAME-WEIGHT.-Under the circumstances of the case Held that the issuance of the Dutch patent, if it had been established, would not justify a reversal of the decision of the Board of Appeals. * Id. FORMER DECISION CITED. See Construction of Claims, 17; Interference, 8, 59; Trade-Marks, 52. FORMER DÉCISION DISTINGUISHED. See Trade-Marks, 10. FUNCTIONS. See Claims, 1; Construction of Claims, 48; Double Patenting, 1; GEOGRAPHICAL TERMS. See Trade-Marks, 37. GOODS OF THE SAME DESCRIPTIVE PROPERTIES. See Trade-Marks, 6, 11, 15, 19, 20, 21, 22, 23, 24, 25, 26, 30, 36, 41, 43, 44, 47, 51, 55. GRANT OF PATENT. See Claims, 2, 5; Division of Applications, 2; Double Patenting, 1, 3. INDEFINITENESS. See Appeal to the United States Court of Customs & Patent Appeals, 6. INFRINGEMENTS. See Claims, 5; Construction of Specifications and Patents, 2; Construction of Statutes, 1; Disclaimers, 2; Interference, 43; Suits for Infringement. 1. ACCOUNTING DEDUCTIONS.—Sale resulting in loss may not be offset by infringer against another independent sale resulting in gain for the purpose of extinguishing or reducing liability for profits. Duplate Corporation and Pittsburgh Plate Glass Company v. Triplex Safety Glass Company of North America, 677. 2. SAME SAME.-Extent of gain from sale is not susceptible of ascertainment without deduction and allowance of incidental costs; to make product of factory ready for market labor and material must be consumed by seller-manufacturer; cost of such consumption does not cease to be charge against proceeds because viewed in isolation it may be classified as waste; if waste is unavoidable or even fairly to be expected in normal course of such business there is diminution of profit for infringer as for others; in measuring gain from particular transaction defendant should have allowance for expense of incidental waste unless wastage is so great as to overpass bounds of reason. Id. 3. SAME SAME.-No allowance should be made of cost of glass sold by defendant and returned by customers for defects afterward discovered; the sales did not yield profit; they have no place in accounting at all. Id. 4. SAME SAME.-Defendant furnished glass to its subsidiary to make into infringing material. This was in addition to the regular business of defendant and is properly charged at cost of manufacture by defendant and not at market value. Id. 5. SAME SAME DEDUCTIONS.-Reasonable royalty may not be deducted by defendant as compensation for economies effected through his own patented devices in manufacturing infringing product. Id. 6. SAME SAME.-Sales of infringing product were sometimes at high price and sometimes at low price; owner of patent in holding infringers to accounting is not confined to all or nothing; there may be acceptance of transactions resulting in gain with rejection of transactions resulting in loss; patentee is not looked on as quasi-partner of infringer under duty to contribute to cost of infringing business as whole; he is victim of tort free to adopt what will help and discard what will harm. Id. 7. SAME-SAME.-Average cost even if not identical with actual cost is best approximation known to accountants and may be adopted when individual costs cannot be ascertained with precision and especially where defendant so keeps its books; defendant cannot charge complainant with losses of unprofitable transactions because gains of profitable ones cannot be reckoned to nicety; wrong-doer bears burden in case of confusion. Id. 8. SAME-SAME-INTEREST.—If an award of damages upon the basis of reasonable royalty is appropriate, interest should run from date when damages are liquidated and not from date of last infringement, when there are no exceptional circumstances justifying departure from general rule. Id. INTERFERENCE. See Petition for Writ of Prohibition: Trade-Marks, 21. Appeal to the United States Court of Customs and Fatent Appeals 1. PATENTABILITY NOT CONSIDERED.-Losing party in interference may not raise on appeal the question of patentability of the counts or questions which should have been but were not raised during the motion period of the interference. *Ufer and Niemann v. Williams, 147. 2. APPEAL-WHAT MAY BE CONSIDERED.-The question whether L. unduly delayed in filing his application for reissue of his patent is not one ancillary to the question of priority of invention and can not be considered on an appeal from an award of priority. *Bechtold v. Lanser, 401. Construction of Issue 3. ISSUE-INTERPRETATION OF.-The terms "substantially coincident with" and "close to" appearing in the issue of the interference and defining the position of a shaft relative to the center of gravity of a part of the machine Held not to mean "coincident with" or "at", but to be satisfied by a structure if the shaft therein is close enough to the center of gravity so that the objects of the invention are accomplished and its proposed new and useful results obtained. *Robins v. Wettlaufer, 302. 4. CONSTRUCTION OF ISSUE.-The claims in issue in an interference must be broadly construed, but clearly expressed limitations can not be disregarded. *Bard v. Flodin, 395. 5. PRIORITY-CONSTRUCTION OF ISSUE.-"It is a familiar rule that the counts of an interference must be given the broadest interpretation which they reasonably will support.' *Bechtold v. Lanser, 401. 6. ISSUE-CONSTRUCTION.-Clearly expressed limitations in the counts of the issue of an interference may not be ignored, especially where it appears that the inclusion of these limitations was one of the principal reasons for the issuance of the patent containing said claims which are involved in the interference. Krieger v. Gautier and Nichols. *Krueger v. Chabot, 478. 7. SAME. Where certain language in a count of the issue of an interference is ambiguous and susceptible of more than one construction, that language must be construed in conformity with the meaning given it in the specification in which the count originated. *Hausman v. Hochman, 512. Diligence 8. Interference-DiligenCE.-Deakin v. Schwartz, 44 App. D. C. 258, 223 O. G. 651, Held to be "authority for the proposition that an inventor who actually reduces to practice counts involving a broad invention is entitled to have such diligence as is shown in perfecting such invention inure to his benefit, where his diligence is questioned in connection with the invention in other counts to specific forms of the same invention, and where he is claiming both forms of the invention." *Davis v. Maclachlan, 225. 9. SAME SAME.-Making of hose structure, including layers of rubber and cloth and a layer of spirally wound wire or metallic mesh and on the outside of the hose a wire helically wound in spaced convolutions, by junior party M. before conception by D. Held not to constitute reduction to practice of the invention set forth in count 1 of interference No. 61,395 calling for a plurality of spirally wound layers and Held that diligence of M. in connection with such structure does not inure to his benefit in connection with the subject matter of the remaining counts of said interference and the count of interference No. 61,396. *Id. 10. SAME ACTIVITIES IN FOREIGN COUNTRY.-The right of an interfering party to the benefit of its activities abroad is only that granted by section 4887, Revised Statutes, and the only right thus granted is the benefit of the filing date of the foreign application. Activities abroad, either in actual or constructive reduction to practice of an invention, unaccompanied by any activities in the United States, may not be considered in establishing diligence in reducing an invention to practico. *Wilson and Dick v. Sherts and Hamill, 264. INTERFERENCE-Continued. 11. SAME SAME.-Where W. and D. filed their provisional specification in Great Britain four and one-half months after disclosing the invention in this country and the opposing party conceived and reduced to practice in this country during that period Held that the shortness of the period would not excuse W. and D. from showing diligence during that period since one who is the first to conceive but the last to reduce to practice is chargeable with diligence from immediately prior to the time the later inventor entered the field and such diligence must be established by evidence. *Id. Dissolution of Interference 12. PATENTABILITY-DISSOLUTION OF INTERFERENCE-NONINVENTIVE DIFFERENCE FROM ISSUE.-"We therefore hold, in harmony with our decisions hereinbefore cited, that in order to warrant the allowance of the claims before us the claims must be inventively different from said interference counts; or, in other words, the specific details or limitations in the claims before us not found in said interference counts must, when combined with the structure embraced in said counts, involve invention over said counts." *In re Cole, 407. 13. SAME-SAME-SAME.-Claims for an electrolytic condenser Held unpatentable as differing only noninventively from the claims in issue in an interference involving appellant's application which was dissolved on the ground that the issue was unpatentable. *Id. Employer and Employee 14. INTERFERENCE.-Evidence reviewed and Held that neither D. nor his employer, the Baltimore and Ohio Railroad Company, occupied the relation to C. of employer to employee since neither of the former directed the work of C. or paid him compensation. *Davis v. Carrier, 194. Estoppel 15. INVENTION DISCLOSED BUT NOT CLAIMED IN APPLICATION OF OPPONENT. Where junior and losing party in interference failed to present, under rule 109, claims to an invention disclosed but not claimed in the application of the winning party Held that the losing party is estopped from presenting claims to that invention in another application. *In re Rhodes, 166. 16. EQUITABLE ÉSTOPPEL.-Evidence held not to establish that S's. activities amounted to an abandoned experiment or that there was concealment or suppression of the invention by him and Held that the facts in the case afford no proper basis for the application of the doctrine akin to equitable estoppel which deprives the first inventor of his right to a patent. *Swan v. Thompson. Thompson v. Swan. Holtzman v. Swan, 156. 17. PATENTABILITY-FAILURE TO MOVE IN INTERFERENCE UNDER RULE 109.-It is well settled that a party to an interference who does not present claims to subject matter disclosed in an application owned by him and claimed by his adversary is estopped to obtain claims not so submitted or claims broader than the interference, and it is also his duty to bring forward such claims if the subject matter is clearly disclosed in the application of his adversary though not claimed therein. *In re Long, 428. 18. ESTOPPEL. "It is too well settled to require extended citation of authority that estoppels, and bars not created by statute, when interposed against statutory rights, are not favored by the courts. They should never be applied except where the facts upon which such doctrines are based are clear and definite and never on suppositions, conjectural or hypothetical premises." *Id. 19. INTERFERENCE-PRIORITY.-Where L's. application was involved in interference with the applications of E. and D. on a narrow issue and the record shows that all the parties understood that the issue was narrow and that the broader claims were not patentable over the prior art to either E. or D. Held that after an adverse decision on priority on the narrow claims in issue, L. was not estopped to obtain broader claims otherwise patentable to him. *Id. INTERFERENCE-Continued. a 20. PATENTABILITY-ESTOPPEL.-"This court has characterized estoppel arising out of omission to assert claims in an interference proceeding as estoppel by judgment, not as estoppel in pais; that is to say, the court has applied the doctrine res judicata.' International Cellucotton Products Company v. Coe, 40. 21. SAME SAME. Where, after a judgment of priority in interference W. v. B. in favor of B., a second interference was declared between the application of W. and an application of T. owned by the assignee of the application of B., on subject matter not disclosed in the B. application Held that the failure of the assignee of the B. and T. applications to move under rule 109 in the W. v. B. interference for the declaration of an interference between the T. and W. applications on claims to the subject matter not disclosed in the B. application, did not estop said assignee from asserting such claims in the T. application, since these claims could not have been made issues in the W. v. B. interference. a Id. Failure to Move in Interference 22. PATENTABILITY-ESTOPPEL.—“We know of no case, however, where a party losing narrow claims in an interference has been denied broad claims because he failed to present the same in an interference where the subject matter was not patentable to any one of the other parties, and where they, in claiming an improvement over the broad invention either disclaimed the broad invention or by their conduct clearly conceded that in any event they could not be regarded as its first inventor." *In re Long, 428. Limitation of Claims 23. CONSTRUCTION OF ISSUE.-"It seems to us that the two limitations upon which appellant relies are themselves of such a breadth that the disclosures of Knight read fairly upon them. It is a familiar rule that courts may not, in an interference proceeding, read limitations into a count which are not clearly expressed therein. To sustain appellant's position here it seems to us limitations not expressed would have to read into the limitations upon which reliance is placed." *Altvater v. Knight, 247. Mandamus 24. INTERFERENCE-DISCRETIONARY POWER OF THE COMMISSIONER.Where an intereference involving the application of D. and a patent to B. owned by petitioner was dissolved on the ground that D. was not entitled to the claims in issue, Held that in allowing other claims in the D. application the Commissioner merely exercised the discretion reposed in him by law and if error was committed the remedy is not by mandamus. a In re United States, Ex Relatione American GasAccumulator Company, a corporation of New Jersey v. Conway P. Coe, Commissioner of Patents, 48. 25. SAME RULES OF PROCEDURE.-Mandamus will not lie to compel the Commissioner to enter a formal judgment in an interference between a patent and an application which was dissolved and a patent thereafter issued to the applicant since no statute or rule of the Patent Office requires the entry of the judgment following a decision on a motion to dissolve and the procedure in interferences is determined by the rules of the Patent Office. a Id. 26. SAME DISCRETIONARY POWER OF THE COMMISSIONER.-Mandamus will not lie to compel the Commissioner of Patents to issue a judgment in an interference following the decision of the Examiner of Interferences since the Commissioner is vested with authority to pass upon the proceedings in intereferences and in the exercise of this authority he acts in a quasi-judicial capacity. a Id. |