INTERFERENCE-Continued. date of invention back of a reference cited against C.'s application involved in this interference. Creveling⚫v. Jepson, 2. 6. RIGHT OF APPLICANT TO CLAIMS OF A PATENT-ESTOPPEL.-The failure of an applicant during a period of more than a year following the grant of a patent to assert his rights to claims in that patent Held to estop him from making them at all unless he shall satisfy the Commissioner that the delay was unavoidable. (Rowntree v. Sloan, C. D., 1916, 192; 227 O. G., 744; 45 App. D. C., 207, construed.) *Wintroath v. Chapman and Chapman, 154. 7. JURISDICTION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA.— Held that the Court of Appeals of the District of Columbia has jurisdiction to consider, on an appeal from an award of priority in an interference involving an applicant and a patentee, the question of the applicant's laches in copying the claims of the patent. *Id. 8. PRIORITY-RES ADJUDICATA.—The testimony in another interference between the same parties on "the same subject" adjudged to the appellee, being stipulated herein, the questions of law and fact presented here (are) res adjudicata." *Thompson v. Storrie, 159. 66 66 9. USELESS APPEAL.-Where a case involving the same subject-matter and submitted on the same testimony had been decided in a former interference in favor of the appellee, we are at a loss to apprehend upon what theory of law the appellant has brought the cause here, thereby harassing the appellee and unnecessarily consuming our time." *Id. 10. PRIORITY-EDGE-FOLDING MACHINE.-Where there is a unanimity of decisions in the Patent Office Held that the burden is heavily upon the appellant to establish error. *Lautenschlager v. Glass, 162. 11. RIGHT TO MAKE CLAIMS-QUESTIONS NOT RAISED IN THE PATENT OF FICE ARE NOT BEFORE THE COURT.-The question whether L.'s construction embodies the issue not having been raised in the Patent Office, Held that this question is not before the court; but it was noted that L.'s garment responds to the terms of the issue. *Luckett v. Straub, 169. 12. RULE 75 CONSTRUED AND APPLIED TO WHAT CASES APPLICABLE.-An application should be rejected on such a patent if an interference in fact, based upon the claims in the application and the subject-matter disclosed in the patent which is germane to the invention claimed therein, the counts of which might be broader than or otherwise different from the claims in the application, provided they did not omit a material and substantial feature of those claims, would exist if both were applications, irrespective of the claims in the patent. Ex parte Thomas, 11. 13. RIGHT TO MAKE CLAIMS OF REISSUE PATENT ESTOPPEL BY DELAY.— Where K. copies claim appearing first in P.'s reissued patent, two months after its issuance, but more than two years after the issuance of the original patent, Held K.'s application comes within the rule of estoppel laid down in the case of Rowntree v. Sloan, since the basis for the claims of the issue in this matter is to be found in the original patent of P., of which K. had notice from the date of its issue. *Kane v. Podlesak, 207. INTERVENING RIGHTS. See Delay in Applying for Reissue, 2. INVENTION. See Abandonment of Invention; Amendment of Applications, 1, 2; Appeals to the Court of Appeals of the District of Columbia; Cancelation of Claims; Claims, 3, 5; Commercial Success; Construc INVENTION-Continued. tion of Claims, 1, 2, 3, 8; Construction of Specifications and Patents; 1. "MECHANICAL SKILL."-The adaptation to metal mechanical toys of previously-disclosed inventions used in wooden toy building-blocks does not amount to "invention," but is a mere exercise of "mechanical skill." Wagner v. Meccano Limited, 231. d 2. WHAT CONSTITUTES.-The mere improvement of a well-known device without substantial change in either means or result does not amount to invention. Id. 3. SAME. d A device simply uniting two parts of a previously-known device into an integral construction does not amount to invention, particularly where the two parts had previously been joined mechanically. a Id. d 4. NEW USE OF OLD DEVICE.-The transfer of elastic features previously used in drawers or overalls to union-suits, when they are subjected to different strains and do not perform precisely the same functions, and therefore do not produce the same result, may constitute patentable invention. a Globe Knitting Works v. Segal et al., 254. 5. EVIDENCE OF INVENTION-POPULAR RECOGNITION.-Where the question of invention is close, as it usually is when the thing done is simple, the thing achieved, its recognition by the art, and the demand for it by those who use it are matters properly to be put in the scale and weigh in favor of invention. Id. d 6. PATENTABILITY-HANDLE-ATTACHING MEANS.-Attaching handles to storage-battery cases by securing the handles in place by means of a plug of lead which is run, while in a molten state, into a cavity extending transversely of a channel in which the shank of the handle is located Held to be the exercise of mere mechanical skill in view of the art of record. * In re Palmer, Jr., 195. 7. MECHANICAL COMBINATION.-The specification of a mechanical combination patent generally discloses a large number of elements, and the invention consists in the act of selecting some of these elements for the combination, which constitutes an independent entity, serviceable to the art and theretofore unknown. H. Ward Leonard, Inc., v. Maxwell Motor Sales Corporation, 317. JOINT AND SOLE APPLICATIONS. SOLE APPLICATION NOT A CONTINUATION OF JOINT APPLICATION.-Where after the filing of a joint application an application is filed by one of the applicants alleging that he in fact was the sole inventor, Held that this application cannot be regarded as a continuation of the joint application. Ex parte Prioleau and Prioleau, 55. JUDGMENT OF PRIORITY. See Jurisdiction of the Court of Appeals of the District of Columbia, 2; Mandamus, 3, 4. JUDGMENT ON THE RECORD. See Interference, 2; Mandamus, 1. JURISDICTION OF THE CIRCUIT COURT OF APPEALS.-See Contracts, 3. JURISDICTION OF THE COMMISSIONER OF PATENTS. See Abandon ment of Applications, 2; Foreign Registrant. -Where a party MAY NOT BE DENIED BY PARTY WHO HAS SUBMITTED TO. brought a petition before the Commissioner of Patents to reopen an interference in which a decision had been rendered against him and a hearing was had by the Commissioner, who denied the petition, JURISDICTION OF THE COMMISSIONER OF PATENTS-Continued. a Held that the petitioner may not thereafter deny that the Commissioner had jurisdiction. Briggs v. Commissioner of Patents, 99. JURISDICTION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Interference, 7. 1. APPEAL FROM COMMISSIONER OF PATENTS.-The statute does not provide for an appeal to the court of appeals from a ruling by the Commissioner of Patents or of any of the subordinate tribunals affirming the patentability of a claimed invention. *Elsom v. Bonner and Golde, 116. 2. INTERFERENCE. This court is without jurisdiction to entertain an appeal in an interference case except from a judgment of priority. *Field et al. v. Colman, 135. 3. MOTION TO DISSOLVE.-An appeal to this court involving the sole question of whether the decision of the Patent Office tribunals on a motion to dissolve an interference should be sustained or denied will not be entertained. *Id. 4. ABANDONMENT OF APPLICATION-APPEAL FROM THE DECISION OF COMMISSIONER. Where the Commissioner of Patents decides that the showing made is not sufficient to establish that the delay in the prosecution of an application was unavoidable within the meaning of section 4894, Revised Statutes, Held that his action is not reviewable on appeal to the Court of Appeals of the District of Columbia. *In re Carvalho, 165. 5. COURT OF APPEALS OF THE DISTRICT OF COLUMBIA.-The jurisdiction of the Court of Appeals of the District of Columbia to entertain appeals from the decision of the Commissioner of Patents embraces but two classes of cases: first, where an application for a patent or the reissue of a patent has been twice rejected by the Primary Examiner, then by the Examiners-in-Chief, and afterward by the Commissioner, and, second, where the Commissioner in an interference has awarded priority to one of the parties. *Id. JURISDICTION OF THE COURTS. See Foreign Registrant; Infringement, 2, 5; Suits Under Section 4915, Revised Statutes, 3. 1. COURTS-FEDERAL COURTS.-Where a patent has been held valid and infringed, the unfair-competition feature arising out of that infringement may be included in an accounting for profits and damages, though the parties are citizens of the same States. Detroit Showcase Co. v. Kawneer Mfg. Co., 281. d 2. SAME-SAME.-Where a patent was found not to have been infringed and the parties to the suit were citizens of the same State, the Federal court Held, under the facts presented, without jurisdiction over a cause of action for unfair competition arising out of defendant's sale of the alleged infringing articles. Id. JURISDICTION OF THE COURTS OVER THE COMMISSIONER OF PATENTS. See Mandamus. LABELS. CONTAINING PUBLIC INSIGNIA-NOT REGISTRABLE.-Held that it is against public policy to register a label including public insignia. Ex parte The Biddle Corporation, 71. 1. APPLICATION-CLAIMS COPIED FROM A PATENT-RIGHT TO EXPLAIN.— Laches is a charge which is rebuttable unless the delay exceeds a 84150°-19-28 LACHES-Continued. period specified by statute. Whatever, therefore, be taken as the period limiting an applicant's right to copy claims from a patent, he must be granted the right to explain the delay beyond that period. Wintroath v. Chapman and Chapman, 9. 2. SAME-SAME-SAME-PRACTICE.-Where an applicant who copies claims from a patent is chargeable with laches in presenting them, the interference should be declared only where a prima facie case overcoming the charge of dilatoriness is made out. Such a showing would be open to attack inter partes. Id. LAW EXAMINERS. See Cancelation of Claims, 2. LICENSES. See Government Use of Patented Inventions; Infringement, 1. LIMIT OF TIME. See Abandonment of Applications, 2; Anticipation, 1; Court of Appeals of the District of Columbia, 2; Double Patenting; Laches, 1. LIMITATION OF CLAIMS. See Claims, 5; Construction of Claims, 2, 3, 5, 6, 7; Construction of Specifications and Patents, 1, 5; Delay in Applying for Reissue, 3; Interference, 3; Particular Patents, 5, 20. LIMITATION OF PATENT. SCOPE PRIOR ART.-A patent the application for which was filed prior to that for the patent in suit is prima facie a part of the prior art and may be considered in the limitations it imposes on the scope of the patent in suit. a Jackson Cushion Spring Co. v. Adler, 218. d MACHINES. See Priority of Invention, 9, 10. MANDAMUS. 1. DECLARING OF AN INTERFERENCE CANNOT BE CONTROLLED BY.-It is well settled that the duty imposed upon the Commissioner of Patents by section 4904, Revised Statutes, (Comp. Stat., 1916, sec. 9449,) to declare an interference involves the exercise of his judgment upon the facts presented and cannot be controlled by mandamus. (Ewing v. United States, C. D., 1917, 409; 238 O. G., 983; 244 U. S., 1; 37 Sup. Ct. Rep., 494.) *United States, ex rel. International Money Machine Company, v. Newton, 211. 2. QUESTION OF RES ADJUDICATA NOT REVIEWED ON.-Where an interference had been dissolved and a subsequent interference was declared between the same applications, Held that the question whether the decision in the original interference is res adjudicata as to the second interference cannot be raised on a petition for mandamus. It may be urged before the various tribunals of the Patent, Office and on appeal to the Court of Appeals of the District of Columbia. (Gold v. Gold, C. D., 1910, 269; 150 O. G., 570; 34 App. D. C., 229.) * Id. 3. DOES NOT LIE WHERE NO LEGAL INJURY IS SHOWN.-Where after a number of motions and appeals in an interference in which the relator was involved a decision on priority adverse to certain parties was entered and thereafter the Commissioner dissolved the interference as to these parties, Held that mandamus would not issue to compel him to set aside his action and proceed to a judgment of priority, since the relator had sustained no legal personal injury by such action. * United States of America, ex rel. Johnson, v. Ewing, Commissioner of Patents, 93. a 4. DISCRETIONARY ACTION OF THE COMMISSIONER NOT CONTROLLED BY.— Where after a judgment of priority had been entered in an interference the Commissioner vacated that order and dissolved the interference as to certain of the parties, Held that his action involved the exercise MANDAMUS-Continued. of judgment and discretion and cannot be controlled by mandamus. Id. 5. WHEN ISSUED." The writ of mandamus can never be issued to an administrative officer unless he is refusing to perform a positive ministerial duty. It cannot be made to serve the purpose of an appeal from a decision which he has made, nor can it be made the basis of a proceeding in any manner to review a legal act of judgment or discretion on his part which he has performed. If the act which the official has done is within the jurisdiction constitutionally confided to him by the Congress, the mere fact that what he has done is at variance with the views of one side or another to the controversy does not give to a court the power to direct him by the writ of mandamus to undo what he has done and proceed to act in a different manner." a Briggs v. Commissioner of Patents, 99. 6. DISCRETIONARY ACTION OF THE COMMISSIONER OF PATENTS NOT CONTROLLABLE THEREBY.-While mandamus may be invoked to compel a court or officer to take cognizance of a case in which the jurisdiction of the subject-matter has been conferred by law, it will not lie to control the judgment or discretion of such a tribunal. *Briggs v. Commissioner of Patents, 215. 7. REDECLARATION OF AN INTERFERENCE.-DISCRETIONARY ACTION.-Where it was sought by mandamus to compel the Commissioner of Patents to reopen an interference, Held that the relief sought was not to require the Commissioner to do a mere ministerial act which the law requires him to perform, but to decide in a particular way a matter confided by law to his discretion and judgment. *Id. MECHANICAL PATENTS. See Designs; Double Patenting. MECHANICAL SKILL. See Commercial Success; Invention, 1, 2, 3, 6; Particular Patents, 9. MERITS. See Construction of Specifications and Patents, 2; Suits for Infringement, 3; Suits Under Section 4915, Revised Statutes, 2. METHOD. See Particular Patents, 17. METHOD OF APPLYING TRADE-MARKS. See Trade-Mark Use, 1. MILITARY OR NAVAL SERVICE. See Practice Before the Patent Office, 3. MODEL. See Preliminary Statement. MODIFYING CLAUSE. See Construction of Claims, 6. MONOPOLY. See Contracts, 1, 2; Registration of Trade-Marks, 10, 16; TradeSecrets. MOTION TO DISSOLVE INTERFERENCE. See Jurisdiction of the Court of Appeals of the District of Columbia, 3. NAME OF APPLICANT. See Registration of Trade-Marks, 20. 1. FULL NAME.-Where the applicant's first name as signed to the paper is known as a Christian name, an affidavit that the name as given is his full name should not be required even though it is also an abbreviation. Ex parte Bowen, 1. 66 2. 'FRED" FULL CHRISTIAN NAME-NO AFFIDAVIT NECESSARY.-As "Fred" is a Christian name, the decision in ex parte Smith and Kimble (C. D., 1901, 231; 97 O. G., 2533) is overruled in so far as it held that an affidavit should be required when the papers are signed "Fred." Id. NEW MATTER. See Amendment of Applications, 2, 3. NEW RESULTS. See Invention, 4; Particular Patents, 8; Suits Under Section 4915, Revised Statutes. |