the same, it is not permissible to amend by setting up a new claim to the invention or a part thereof not before claimed. The unsoundness of this proposition in a case where the subject-matter is contained in the application though not followed by a specific claim therefor, has been pointed out in the recent case of Phillips v. Sensenich, ante, 14; 134 O. G., 1806.

Where the conditions of the original application require division instead of its amendment merely, to secure a patent embracing the additional claims, the rule is necessarily the same, as held in the case last cited; and the new application dates back to the original one, securing to the applicant the benefit of a constructive reduction to practice as of that date. (Duryea v. Rice, C. D., 1907, 443; 126 O. G., 1357; 28 App. D. C., 423, 435.)

It is further contended that by Kenny's failure to make the specific claim of the invention of the issue under his original application, or by division, until after Lotz entered the Office with an application therefor, he must be regarded, as to Lotz at least, as having lost his right now to make the claim. The following decisions are relied on to support this contention: (Miller v. Brass Co., C. D., 1882, 49; 21 O. G., 201; 104 U. S., 352; Railroad Co. v. Sayles, C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554; Bechman v. Wood, C. D., 1899, 453; 89 O. G., 2459; 15 App. D. C., 484.) Miller v. Brass Co. was a case of a reissued patent, and it was there held that when a specific device or combination only is claimed, and a patent issued therefor, any other device or combination disclosed but not claimed is regarded as abandoned to the public, unless at least, with due diligence the patentee applies for reissue, and shows clearly that his omission to make the claim was the result of inadvertence, accident, or mistake. The present is not a case of that kind, nor does it come within the rule governing the other two cases. In both there were, after long delay, material alterations of the specifications so as to cover the invention then claimed. In Bechman v. Wood, (C. D., 1899, 453; 89 O. G., 2459; 15 App. D. C., 484, 491,) the original specifications did not disclose the broad claim of the issue, and it was not made for nearly three years after filing, and after Bechman had entered the Office making a claim for another specific form of the generic invention; and it was said, on the authority of Railway Co. v. Sayles (C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554 :)

But it was not competent for Wood so to alter his specifications as to interfere with other inventions made prior to the alteration.

Where, as in this case, the invention was shown in the original application, and the making of the claim involved no material alteration of the specifications, the rule in Bechman v. Wood does not apply. (McBerty v. Cook, C. D., 1900, 248; 90 O. G., 2295; 16 App. D. C.,

133, 138; Luger v. Browning, C. D., 1903, 593; 104 O. G., 1123; 21 App. D. C., 201, 205.) In that case it was said:

It is sought, also, to bring this case within the ruling of Bechman v. Wood (C. D., 1899, 453; 89 O. G., 2459; 15 App. D. C., 484) and Chicago & N. W. Ry. Co. v. Sayles (C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554,) which latter was the decision that determined the ruling in Bechman v. Wood. The contention of the appellant in this regard, if sustained, would apply to all cases in the Patent Office wherein the claim of one application is suggested to another applicant for the purpose of an interference thereupon to be declared. But the case of Bechman v. Wood, as explained in the case of McBerty v. Cook, was not intended to have any such application. The distinction is well pointed out by the Board of Examiners-in-Chief in their opinion filed in this case. It is that, when new matter is introduced into an application, it cannot be allowed to dominate previous claims of another applicant; but that when matter has been previously disclosed, although not formally claimed, it is proper to be included in a subsequent formal claim, and may take precedence of previous claims advanced by another applicant. (See also, Furman v. Dean, C. D., 1905, 582; 114 O. G., 1552; 24 App. D. C., 277, 281.)

This brings us to the consideration of the other question, namely, whether the invention of the issue was conceived and reduced to practice by Lotz before Kenny's original application was filed. If it was he is entitled to the award of priority. The device of the issue as described in the specifications and illustrated by the drawings consists of a comparatively small glass tube connected with the pipe bearing the dust-laden current, at a point between the hand implement used on the carpet and the chamber for receiving the deposit of the dust, in such manner as to intercept and partially arrest the dust-laden current and enable one to readily observe when the dust ceases to pass from the sweeper. This is the transparent chamber or receptacle of the issue, in which no dust is, or is intended to be deposited. This is clearly shown in Lotz's description where it is said:

I discovered that if means be employed in the tube, pipe or hose for temporarily diverting the air-current, the dust in the air will become visible through a suitable glass and this without in any way affecting the main operation. The diverted current expands into the glass chamber in

a condition of disturbance, the effect of which is clearly visible in the eddying and whirling of dust, tending to precipitate, but unable to do so on account of the air-pressure from behind and the suction ahead.

It is apparent, also, that the purpose of the observation-chamber would not be accomplished if the dust was permitted to settle in it. The testimony of Lotz tended to show the construction of a box in July, 1901, which is claimed as embodying the invention of the issue. The tribunals of the Office found that this box was not used until about February, 1902, and two held that even if it embodied the issue, Lotz had not used due diligence prior to the entry of Kenny in the field. All concurred in holding that it failed to show conception of the invention of the issue. It was a large wooden box made

in three compartments as indicated in the sketch by which it was constructed. The top was removable and a piece of glass was inserted in one side of each compartment. The suction-pipe discharges into compartment one and is then continued into and through compartments two and three. Lotz has a patent issued March 11, 1902, on an application filed December 4, 1900, for an apparatus for cleaning carpets, in which a similar construction is shown as a receivingchamber for dust. It is therein stated that the heavier particles of the discharged material are deposited in the first compartment, the lighter being carried into the second, where the heavier particles remaining will be deposited. The remaining particles are carried into the third compartment which is partly filled with water in which the end of the discharging-pipe is submerged, and in consequence of which all foreign matter is collected in the water. The pipe proceeds from compartment three to the suction-pump. There was no glass in the side of this box, which like that in the sketch is square and with a sectional area much greater than the pipe. Lotz testified that the purpose of the glass inserted in this second box was to enable the action of the current to be observed. He said that the great difference in the cross-sectional area of the box and the pipereduced the velocity of the air to such an extent that it not only made the dust visible, but precipitated the heavier particles which lodged in the bottom of the box to the extent until the air agitated it and carried it further.

One of his witnesses, Herbst, who saw the operation in February, 1902, said that:

It was perfectly satisfactory, as far as I know. It showed plainly that it worked all right. It showed how the dust came out and gathered in the box.

Another said it showed the dust going into the box. There was nothing tending to show that there was any other dust-collector than this box. As described by Herbst:

The model consisted of a sweeper connected with the hose to an air-pump, and the box being between the sweeper and the air-pump to demonstrate the amount of dust being removed from the carpet.

We agree with the tribunals of the Office that this device is not an embodiment of the issue. A dust-collector between the sweeper and the pump is an essential part of the carpet-cleaning apparatus. This compartment-box seems to be nothing more than the dust-collector of the former patent, before mentioned, with panes of glass inserted in one side of each compartment through which the collection of the dust could be seen. It is supplied with the same removable top for the removal of the dust collected therein. The first compartment evidently serves as a place for the settlement of the heavier particles, as described in the earlier patent before mentioned, while the lighter particles are successively deposited in the second and third com

partments. The issue calls for a transparent device which temporarily arrests the velocity of the current, and enables the operator or observer to ascertain when the dust and removable particles have been completely removed by the sweeper. It must not only be transparent, but of such size and construction that will not permit the deposit of any of the dust; otherwise it would not answer the required purpose. That it is intended not to be a part of the dustcollecting chamber, but to be located at some convenient point between it and the sweeping implement is evident. Moreover, it must be a transparent chamber. We are not prepared to say that if such a box had been used separately, and so constructed as to prevent the settlement of any dust on its way to the collector, it might not be regarded as a transparent chamber within the meaning of the issue. But considering its construction as a compartment of the dustcollector, and the fact that it precipitated and retained a part of the dust, we cannot regard it as the transparent observation-chamber of the issue. Under favorable conditions of light, the observer might have been enabled to see the deposit of dust, but it is not the transparent chamber of the issue, in which no dust can be deposited, and which enables the observer, under all conditions, to determine when the extraction of dust from the fabric that is being swept has ceased. The decision awarding priority to Kenny must be affirmed. It is so ordered, and that this decision be certified to the Commissioner of

Patents.

[Court of Appeals of the District of Columbia.]

THE HALL'S SAFE COMPANY v. HERRING-HALL-MARVIN SAFE

COMPANY.

Decided June 2, 1908.

135 O. G., 1804; 31 App. D. C., 498.

1. NOTARIES-MAY NOT TAKE ACKNOWLEDGMENTS, ETC., OF CLIENTS IN CASES BEFORE THE DEPARTMENTS OF THE UNITED STATES GOVERNMENT-SEC

TION 558, CODE OF DISTRICT OF COLUMBIA, CONSTRUED.

Held that the provisions of section 558 of the code of the District of Columbia, which provides that no notary public shall be authorized to take acknowledgments, administer oaths, certify papers, or perform any official acts in connection with matters in which he is employed as counsel, attorney, or agent, or in which he may be in any way interested, for any of the Departments of the United States Government in the District of Columbia or elsewhere, applies to all notaries, whether within or without the District of Columbia.

2. TRADE-MARKS OPPOSITION-VERIFIED BEFORE OPPONENT'S ATTORNEYS INVALID. Held that an opposition which was verified before a notary who was at the same time attorney for the opponent is invalid.

3. SAME-SAME-SAME-NOT CURED BY AMENDED OPPOSITION FILED LATE.

Where an objection was raised in the Office that the attempted verification was invalid because made before and certified to by a notary who was at the same time the attorney of the opponent for the prosecution of the opposition and no leave was applied for to cure the defect by verifying it before a qualified notary, but the action taken was to file a new opposition, entitled an amendment, which was signed by the same authorized representative officer of the corporation and verified before a proper notary, Held that this was practically a new opposition and as such came too late. Mr. A. F. Herbsleb and Mr. G. R. Hamlin for the appellant. Mr. H. A. Dodge for the appellee.

SHEPARD, C. J.:

On February 14, 1906, the appellee filed an application for the registration of "Hall's Standard Safe," as its trade-mark, which was passed to publication. On August 6, 1906, A. F. Herbsleb, as attorney for the appellant, forwarded a notice of opposition which was received and filed August 8, 1906, in the Patent Office, which was two days before the expiration of the thirty days allowed for opposition to a published trade-mark. This opposition denies that the words applied for constitute a registrable trade-mark under the terms of the law, alleges that it is descriptive merely, that it has not been used by the applicant, that if used at all it has not been so used exclusively for ten years prior to the act of February 20, 1905; and that the appellant is entitled to build the Hall Standard Safe, and would sustain irreparable damage by the use of the same by appellee, etc. This opposition was signed thus: "The Hall's Safe Company, By, W. H. Hall, Treasurer;" and was sworn to by said Hall, August 6, 1906, before A. F. Herbsleb, notary public in and for Hamilton county, Ohio, who certified thereto under seal. The opposition was accompanied by a copy of a resolution of the board of directors of said company, authorizing the opposition and authorizing said Hall to execute and verify the same. On August 30, 1906, the Examiner of Interferences notified the appellant to show cause on or before September 18, 1906, why its opposition should not be dismissed because the certificate thereof had been acknowledged before a notary who had been retained as counsel in its prosecution. On September 17, 1906, the appellee filed an amendment referring to the original and adding two grounds of opposition substantially similar to others. formerly assigned. This was verified by said Hall before Julius H. Quasser, notary public of Hamilton county, Ohio, and accompanied by official proof of the fact that said Quasser was a notary public of said county, together with a copy of a resolution of the directors of appellee authorizing the said amendment and its verification by said Hall. Notice was then given to the appellee to plead, demur to, or answer said opposition on or before October 18, 1906. The appellee