right arm 11. The carbon pile 12 is placed between the arms 11 11. The arm 11 mounted on 8 is substantially stationary so far as 12 is concerned. The arm 11 mounted on 9 is pressed against the carbon pile by a spring 13, attached to the arm 9 near its outer end and bearing against the under side of the arm 8. The normal pressure of the springs 5 and 3 upon the carbon piles 3 and 12, respectively, is reduced by the operation of a solenoid 18 and plunger-core 17, attached to one end of the arm 9 by a rod 15. When the core 17 is sucked in, the spring 13 is compressed until the stop 16 strikes the under side of the arm 8, at which time the pressure exerted upon the carbon pile 12 has been reduced to a minimum. The elements 9 and 8 thereafter act as a rigid arm, and with further downward motion of the core 17 they operate to extend the spring 5 and reduce the pressure on the carbon pile 3, without, however, producing any further effect upon the carbon pile 12.

Each of the claims here appealed calls for two levers.

Referring now to claim 7, the carbon pile must be pile 12. The lever operating upon one end of the pile is 9 11. The second lever, operating upon the other end of the pile, is lacking for the reason that so far as pile 12 is concerned the element 7 8 11 acts merely as a stop or abutment, just as does the back of the frame in which pile 3 is mounted.

The foregoing comment disposes of the remaining claims.

As indicated above, the ground of this decision is identical with that reached in the inter partes proceeding.

In the structure disclosed by the Jepson application involved therein the carbon pile was, in fact, pinched between the short ends of two levers, the long ends of which lay parallel to each other beneath the piles and were attached to plungers of two solenoids located under the ends of the pile.

To predicate the claim of Jepson, which constituted the count of the issue upon the disclosure of the present application, seems to be impossible without forcing upon the terms of the count a meaning which robbed them of their sense, and this is true of the claims appealed, as indicated above.

As to the question of division, it is apparent from an examination of claims 1 to 6, as filed August 16, 1913, that they are for a general system. The term "carbon pile" does not appear in any of them, nor is any specific term used to indicate this element. Both of the lower tribunals have stated the fact to be that carbon piles have acquired a distinct status in the art as subjects of invention independently of the systems in which they are to be used. Under these circumstances I find no error in the requirement of division.

The decision of the Examiners-in-Chief is affirmed.

EX PARTE PHILIPP AND SCHMIDT.

Decided February 23, 1918.

248 O. G., 1003.

1. EXTENSION OF TIME-TRADING WITH THE ENEMY ACT-RECIPROCAL PRIVILEGES. Held that German citizens are entitled to the benefit of the extension of time under section 10 (a) of the Trading with the Enemy Act, since that country grants reciprocal privileges.

2. FEES-DELAY-"CONDITIONS ARISING OUT OF WAR."

Delay in payment of patent fees to this Government because the German Government for a time refused to allow its citizens to pay such fees Held to be a “condition arising out of war."

ON PETITION.

MANUFACTURE OF AROMATIC STIBINIC ACID.

Messrs. Brown & Seward for the applicants.

NEWTON, Commissioner:

The applicants, who state in their application that they are subjects of the King of Saxony and the King of Prussia, respectively, petition that the final fee, which was paid more than six months after the date of the notice of allowance, but within nine months from the expiration of that period, be accepted under the provisions of the Trading with the Enemy Act of October 6, 1917.

The act of August 17, 1916, provides for an extension where an applicant was "unable on account of the existing and continuing state of war" to pay a fee or take other required action within the time fixed by law. It also provides that—

no extension shall be granted under this act to citizens or subjects of any country while said country is at war with the United States.

Section 10 (a) of the Trading with the Enemy Act provides that an enemy or an ally of an enemy who is unable during the war or six months thereafter on account of conditions arising out of the war to file an application for patent or to pay any fee or to take any action required by law within the period fixed by law may be granted an extension of nine months, provided that the nation of which the applicant is a citizen shall extend substantially similar privileges to citizens of the United States.

While, therefore, between the time that a state of war was declared to exist between Germany and this country and the passage of the Trading with the Enemy Act an extension could not be granted to a German citizen, such an extension can now be granted, upon a proper showing, if Germany extends substantially similar privileges to citizens of this country.

Prior to the time that a state of war was declared to exist between Germany and this country Germany had issued certain orders under which extensions were granted to citizens of this country. (Ex parte Jung, C. D., 1916, 86; 233 O. G., 352.) A letter has been recently received from the International Bureau of the Union for the Protection of Industrial Property in which it is stated that the German legal provisions relating to the filing of applications and renewals have not been abrogated with respect to alien enemies. Attention is also called to the notice of September 12, 1917 (La Propriété Industrielle for 1917, p. 117), by which German citizens are permitted to pay patent fees in this country.

As the original orders of the German Government provided for extensions of the times for paying fees and of the " period of priority" to citizens of a country which grants reciprocal privileges to German citizens and as these orders do not appear to have been revoked, it would seem that upon the passage of the Trading with the Enemy Act citizens of this country were entitled to extensions under the German orders, and it is therefore held that German citizens are entitled to the benefit of the Trading with the Enemy Act.

It appears that the final fee in this case was not paid within the six months because of the fact that for a time German citizens were not allowed to pay patent fees in this country. The inability to pay the fee was therefore due to "conditions arising out of war."

The petition is granted, and it is directed that the fee paid be applied as of the date hereof.

WINTROATH v. CHAPMAN AND CHAPMAN.

Decided June 18, 1917.

248 O. G., 1003.

1. APPLICATION-CLAIMS COPIED FROM A PATENT-LACHES-RIGHT TO EXPLAIN. Laches is a charge which is rebuttable unless the delay exceeds a 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.

2. SAME-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.

APPEAL from Examiners-in-Chief.

DEEP-WELL PUMP.

Messrs. Synnestvedt & Bradley and Mr. Robert A. Steps for Wintroath.

Messrs. Adams & Jackson for Chapman and Chapman,

EWING, Commissioner:

This is an appeal by Chapman and Chapman from a decision of the Examiners-in-Chief affirming the decision of the Examiner of Interferences and awarding priority of invention to Wintroath.

This is the first case which has been brought before me since the decision in Rowntree v. Sloan (C. D., 1916, 192; 227 O. G., 744; 45 App. D. C., 207), wherein the question of loss of right by laches in making claims for a period of less than two years after the grant of a patent is presented without any complication.

It is admitted in the brief on appeal of Chapman and Chapman that no claim to the fluid and ball bearings in combination was inserted in the application until about twenty months after the granting of the patent of Wintroath. Thus on page 33 it is stated that the original claims were much broader in scope than the claims of the issue, on page 34 that the bearings were each particularly claimed, but not in combination, on page 36 that the original application contained claims dominating the subject-matter of the issue, but did not contain claims for the precise combination of the issue.

On the other hand, in the brief for Wintroath there is no contention against Chapman and Chapman excepting delay in making the claims to the invention. On pages 7 and 8 the point is urged that Wintroath had entered the field as an independent inventor and had spent thousands of dollars in placing the devices on the market and that Chapman and Chapman had made no claim for more than three years after Wintroath began, or until twenty months after the patent had been regularly issued to him.

Sloan waited three years after the grant of a patent to Rowntree before copying the claims involved in that interference. The court held that Sloan had been guilty of fatal laches and that it was his duty to have made the claims promptly, at the farthest "within the time allowed for amendment after Office action "-namely, one year. To establish a fixed limit of one year after which claims may not be copied from a patent presents two serious difficulties.

In the first place, an applicant who has waited more than one year to amend his application may save his rights by showing to the Commissioner that the delay was unavoidable. (Rev. Stats., sec. 4894.) Moreover, generally speaking, laches is a charge which is rebuttable unless the delay exceeds a period specified by statute. No matter what period be taken it seems clear, therefore, that the right to explain the delay must be granted to the applicant.

In the second place, an inventor after another has patented the invention may wait up to two years before filing his own application therefor. (Rev. Stats., sec. 4886.) Since the making of a claim is a mere incident to the patenting of an invention, a patent could not be denied on any theory of laches in such a case.

No reason is seen why a stricter rule should be laid down to regulate the conduct of an inventor who has already filed his application at the time when a rival patent is granted than would be applied to one who filed after the rival patent was granted.

In the Rowntree-Sloan case the question whether the limit of time should be set at one year or two years was not directly involved, and therefore presumably was not considered as fully as it would have been had it been necessary for the disposition of the case.

I am persuaded that on further consideration the court of appeals instead of selecting the time allowed for amendment by section 4894 will follow section 4886, making the time two years.

The limit of two years would also be supported by analogy with the treatment of reissue cases in Miller v. Brass Company (C. D., 1882, 49; 21 O. G., 201; 104 U. S., 350); Mahn v. Harwood (C. D., 1885, 144; 30 O. G., 657; 112 U. S., 354); and Wollensak v. Reiher (C. D., 1885, 310; 31 O. G., 1301; 115 U. S., 87). There is, however, this difference, that whereas the rule in reissue cases demands diligence at all times, with especially good explanation if the delay exceeds two years, the diligence of one who, having already filed, copies its claims within two years of the granting of a patent cannot be inquired into without imposing a condition more strict than is imposed by section 4886 upon one who does not file his application until after the rival patent has been granted.

The rule therefore would set a period of two years as a limit below which delay would not be inquired into and beyond which it must be satisfactorily accounted for.

Under this rule the Primary Examiner should deny the right of an applicant to make a claim taken from a patent where the period of delay exceeds two years and declare an interference only where a prima facie case overcoming the charge of dilatoriness is made out by the applicant. Such a showing would of course be open to attack inter partes.

For the reasons indicated above award of priority must be made to Chapman and Chapman.

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

1. RULE 75 CONSTRUED AND APPLIED ANTICIPATION AND PRIOR INVENTION DIS

TINGUISHED.

A patent which discloses an invention in controversy and was granted after the filing of an application therefor (or other reduction to practice), on an application filed earlier, does not establish anticipation of that invention. The bar which it establishes, if any, is that of prior invention, as of the date of filing the application on which it was granted.