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DECISIONS

OF THE

COMMISSIONER OF PATENTS

FOR

THE YEAR 1908.

MURPHY V. BORLAND.

PATENT INTERFERENCE.

Decided November 29, 1907.

132 O. G., 231.

1. INTERFERENCE-DISSOLUTION-MOTION ALTERNATIVE-INDEFINITE.

A motion to dissolve alleging that each of the counts of the issue is anticipated or necessarily limited, so as to prevent them from being read upon the devices of both of the of seven enumerated patents, is

indefinite, because the all counts are anticipated or limited

the

is in the alternative and the motion does not state which counts are to be urged as anticipated and which, limited, nor

high limited, nor does it state which of the patents are relied upon for anticipation and which for restriction.

2. SAME-REDECLARED-MOTION TO DISSOLVE RELATING TO OLD AND New Counts.

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A motion to dissolve fled after the redeclaration of an interference with additional counts directed to the old as well as the new counts Held to have been properly refused transmission so far as it related to the old counts, no showing being made why this part of the motion was not brought in the proper time.

3. SAME DISSOLUTION-MOTION COVERING TRANSMISSIBLE AND NON-TRANSMISSIBLE GROUNDS.

The fact that a statement of a ground for dissolution of an interference covers two sets of counts, as to one set of which it is proper to transmit the motion and as to the other of which transmission is improper, is not a sufficient reason for refusing transmission of the motion as a whole. The motion should be transmitted as to the set of counts which would be otherwise transmitted.

4 SAME-SAME-MOTION ALLEGING BAR Of Prior KnowLEDGE AND USE.

A motion to dissolve alleging the bar of prior knowledge and use should not be transmitted. (Thomson and Unbehend v. Hisley, C. D., 1894, 43; 66 O. G., 1596; Davis v. Swift, C. D., 1901, 134; 96 O. G., 2409; Shrum v. Baumgarten, C. D., 1903, 150; 104 O. G., 577; Cory et al. v. Blakey, C. D., 1905, 116; 115 O. G., 1328.)

APPEAL ON MOTION.

LOCK.

Messrs. Seymour & Earle for Murphy.

Messrs. Coburn & McRoberts for Borland.

MOORE, Commissioner:

Both parties to this interference have appealed from the decision of the Examiner of Interferences on Murphy's motion to transmit a motion to dissolve. Murphy appeals from the refusal to transmit all grounds of the motion to dissolve except grounds 10 and 11, while Borland appeals from the transmission of these grounds.

This interference was originally declared with two counts, and motions were brought to dissolve the interference and to add additional counts to the interference. The Primary Examiner acted upon the motions on July 9, 1907, and redeclared the interference, adding counts 3 to 9. New preliminary statements were filed covering the invention of the added counts.

Ground 1 of the motion to dissolve was refused transmission for the reason that it is not sufficiently specific. This ground allegesthat additional issues (counts) 3, 4, 5, 6, 7, 8 and 9 and each of them are and is anticipated or necessarily limited so as to prevent them and each of them from being read upon the devices of both of the parties, in view of the following anticipatory or restrictive patents and each of them, namely:

Here follow seven enumerated patents. The Examiner of Interferences held that although anticipation is alleged in view of several patents and each of them it appears from the remainder of the motion that Murphy does not rely upon an anticipation of the issue by these patents taken singly, and since this ground does not state how they are to be combined it is not sufficiently specific. While in some of the following grounds of the motion Murphy has combined two or more of these patents, in others he uses them singly. It is not thought that the inference of the Examiner of Interferences is warranted or necessarily true. This ground, however, appears to be clearly indefinite, for the following reasons: The allegation is in the alternative that the counts are "anticipated or necessarily limited; " but the motion does not state which counts Murphy intends to urge as being anticipated and which limited, nor does it state which of the patents cited he relies upon to show anticipation and which for restriction of the counts. Limiting the meaning of the issues is not of itself a reason for dissolving the interference, and the statement "so as to prevent them and each of them from being read upon the devices of both of the parties" leaves the motion indefinite as to which party cannot make the restricted counts or whether the motion contemplates arguing it against each party. The opposite party would evidently be quite at sea as to what would be urged under this ground. Grounds 2, 3, 4, 6, and 12 of the motion are also indefinite, for the same reasons.

Grounds 2, 4, 5, 6, 7, 9, and 12 were refused transmission by the Examiner of Interferences because they "apply to counts in the interference when originally declared." Murphy contends that inasmuch as the interference was redeclared to include additional counts it is a new interference for all purposes and gives him the right to bring a new motion to dissolve respecting the old counts as a matter of course. This contention is unwarranted. The interference retained its old serial number and the preliminary statements on file as to the original counts. Motions to dissolve based upon the same grounds as those formerly urged should not be transmitted as to the original counts, nor should new grounds be transmitted as to said counts, without a proper showing in excuse of the delay in bringing the motion. Borland contends that by analogy to the court practice concerning assignments of error grounds of the motion covering both the original counts and the added counts should not be transmitted because they cover two propositions-the adjudicated matter of the original counts and the new matter of the added counts. It is not the intention in the practice regarding the framing of motions to dissolve to follow the technical rules of the courts, but merely to require that the motions shall clearly and definitely set forth the points to be urged. The fact that a ground includes some counts that cannot be transmitted is believed to constitute no valid reason for refusing transmission as to the remaining counts. All of the grounds except 7 and 9 refused transmission by the Examiner of Interferences for the above reason should not be transmitted for other reasons stated herein.

Although grounds 7 and 9 include both the original and added counts, they are based on matter not urged in the former motion to dissolve, and Murphy has stated reasons in excuse of the delay in not urging said matter sooner. The original counts 1 and 2 stand so related to the added counts that whatever conclusion the Examiner reaches regarding the dissolution of the interference as to the latter counts would probably be applicable to the former. For these reasons grounds 7 and 9 should be transmitted as to all the counts.

Grounds 3, 4, and 5 allege the bar of prior knowledge and use based upon the affidavit of one Plumb. These grounds were properly refused transmission under the well-established practice set forth in Thomson and Unbehend v. Hisley, (C. D., 1894, 43; 66 O. G., 1596;) Davis v. Swift, (C. D., 1901, 134; 96 O. G., 2409;) Shrum v. Baumgarten, (C. D., 1903, 156; 104 O. G., 577;) Cory, Gebhart, and Martin, Jr., v. Blakey, (C. D., 1905, 116; 115 O. G., 1328.) Murphy contends that because these decisions refer primarily to the bar of public use the practice set forth therein is not applicable. This contention, however, is not well taken, since the bar of prior knowledge

and use alleged in the Plumb affidavit would have to be proved in a manner similar to the bar of public use.

Ground 8 of the motion consists of an argument pointing out alleged error in the decision of the Primary Examiner on the prior motion to dissolve. It was properly refused transmission, as setting forth no proper ground for dissolution.

In Borland's appeal from the transmission of grounds 10 and 11 he urges that these grounds are indefinite in that they do not specifically indicate whether the patents to Roche, cited therein, are to be considered with one or all of the patents to Newell, Munger, and Taylor. It appears to be clear, however, that each of these patents taken singly is relied upon to disclose the "broad idea" mentioned. The terms "basic invention" and "broad idea" are not believed to render these grounds indefinite, as contended by Borland.

Ground 10 states that it applies to counts 4 and 9; but ground 11 does not state what counts it is urged against, and for that reason is indefinite and should not be transmitted. (Heyne, Hayward, and McCarthy v. De Vilbiss, Jr., C. D., 1906, 450; 125 O. G., 669.)

Grounds 7, 9, and 10 should be transmitted. The decision of the Examiner of Interferences is accordingly reversed as to grounds 7, 9, and 10 and is affirmed as to the remaining grounds.

EX PARTE WENZELMANN AND OVERHOLT.

APPLICATION FOR PATENT.

Decided December 6, 1907.

132 O. G., 232.

1. INTERFERENCE-DECISION ON PRIORITY-TESTIMONY AS TO PUBLIC USE. Where after a decision on priority in favor of G. has become final, publicuse proceedings are instituted in view of a protest of W. and O., the decision on priority will not be set aside in view of the testimony taken in that proceeding.

2. INTERFERENCE AND PUBLIC-USE PROCEEDINGS.-MATTERS AT ISSUE DIFFERENT. The matters at issue in an interference and in public-use proceedings are different, and the testimony taken in the latter cannot be held conclusive of the question of priority of invention.

ON PETITION.

WAGON-DUMP OR THE LIKE.

Messrs. Bacon & Milans for the applicants.

MOORE, Commissioner:

This is a petition by Wenzelmann and Overholt that, acting under my supervisory authority, I issue an order setting aside the judgment. adverse to petitioners in the interference Gilman v. Wenzelmann and Overholt.

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