DIGEST OF DECISIONS. [Decisions of the Court of Appeals of the District of Columbia are indicated by a star (*), of the Supreme Court of the United States by two stars (**), and of the Secretary of the Interior by a dagger (†).] ABANDONED APPLICATIONS. 1. INTERFERENCE-PRIORITY-APPEAL TO COURT-STATUS OF REVIVED APPLICATION.-On an appeal on priority the court will not review the findings of the Commissioner upon the sufficiency of a showing to support a petition for the reinstatement of an abandoned application where there appears to have been no abuse of power on the part of the Commissioner. *Kinsman v. Strohm, 523. 2. DELAY NOT UNAVOIDABLE.-The fact that an applicant who has allowed an application to lapse by failure to prosecute becomes involved in an interference on a subsequently filed application in no way shows that the delay in prosecuting the earlier application was unavoidable. Ex parte Davis, 298. ABANDONED EXPERIMENTS. See Interference, 40, 44; Testimony, 11. INTERFERENCE-PRIORITY.-Where a device was tested by the assignee of the inventor for half a day in regular work, after which no further interest was taken in it, and it was discarded until after the opposing party filed his application, and another device for doing the same work, invented by another party, who was the employee of the assignee, was made and tested, and a number of such devices were built and put on the market, and no application was filed until knowledge was gained of the invention of the opposing party, Held that such device was merely an abandoned experiment. *Gordon v. Wentworth, 453. ABANDONMENT OF APPLICATIONS. See Abandoned Applications; Construction of Statutes, 9, 10; Interference, 13, 57. 1. DELAY NOT UNAVOIDABLE.-Where an applicant delays action on an application beyond the statutory period in order to prevent another party from securing access thereto by reason of its being the parent case of an application involved in interference with such party, Held that the failure to act was not unavoidable within the meaning of section 4894 of the Revised Statutes and that the application is abandoned. Ex parte Dilg and Fowler, jr., 58. 2. RESPONSIVENESS OF ACTION—ReinsertION OF CLAIMS AFTER ELECTION.— An amendment which is otherwise responsive to an action by the office is not rendered unresponsive by reason of the fact that it includes a claim to an independent invention, claims for which were previously canceled upon requirement for division. In such cases the Examiner should require the cancelation of such claim on the ground that it covers an invention different from that originally elected, and the amendment should otherwise receive action as though such claim were not present. Ex parte Gally, 80. 3. PRACTICE-AMENDMENT-REINSERTING CLAIMS TO AN INDEPENDENT INVENTION AFTER ELECTION.--Where an applicant cancels claims to an independent invention upon requirement for division and just within the year allowed by law for action responds to a rejection by amending the rejected claims and adding a series of new claims, one of which is drawn to the independent Id. invention, the amendment should be entered and a requirement should be made that the reinserted claim be canceled on the ground that applicant was bound by his original election, and at the same time action should be given on the merits of the claims of the invention elected. 4. SUFFICIENCY OF APPLICANT'S ACTION.-Where the claims of an application have been rejected and within the year allowed for action the applicant, in lieu of an oath under Rule 75, files a paper calling attention to certain testimony taken in an interference involving the application of which the application containing the rejected claims was a division, upon which reliance is placed to show prior invention, and the Examiner does not object to the competency of the testimony, but regards it as insufficient, the application is not abandoned through lack of proper prosecution. The sufficiency of the testimony is a question of merits, on which the applicant has a right to the opinions of the various appellate tribunals. Ex parte Newman, 177. 5. INTERFERENCE-RULE 125.-A declaration of abandonment accompanied by a statement that applicant abandons certain counts because they are either limited or anticipated or are not applicable to the structure will not be accepted under Rule 125. Corrington v. Turner, 219. 6. SAME STRIKING FROM FILES.-A declaration of abandonment accompanied by reasons for filing the same will not be made the basis for judgment under Rule 125, but it should not be stricken from the files. Id. 7. PREVIOUS ACTION NOT TAKEN TILL END OF STATUTORY PERIOD-SHOWING REQUIRED.-Where it appears that for several years action upon the case has been intentionally delayed until the latter part of the period allowed by law within which to take such action, failure to file an amendment within the statutory period after the last Office action can be considered unavoidable only in view of circumstances of a compelling nature which prevented such action. Ex parte Ciolfi, 251. ABANDONMENT OF INVENTION. See Interference, 13. ACCESS TO PENDING APPLICATIONS. See Interference, 55; Trade- Marks, 58. 1. PERMISSION TO INSPECT.—A corporation which held an exclusive license to make and use an article disclosed in certain applications went into bankruptcy, and the trustee in bankruptcy included this license in the assets of the company. Held that the purchaser of said assets at the trustee's sale did not acquire such a title to the license as will entitle him to be permitted to inspect these applications. In re Bayle, jr., 79. 2. SHOWING OF INTEREST.-Access will not be granted to a pending application referred to in a patent purporting to be a division of such application merely upon an affidavit by an attorney that suit has been brought on such patent against one of petitioner's customers, that petitioner is desirous of defending such suit, and that access to the prior application is deemed necessary in order that a proper defense may be made. The practice requires that access to pending applications will be refused except to parties showing proper interest therein, and the mere allegation of an attorney that the company for which he is counsel desires to defend a suit brought on a patent divided out of such application is not a sufficient showing of interest. In re Miami Cycle & Mfg. Company, 217. ACQUIESCENCE. See Trade- Marks, 55, 91. ACT OF 1870. See Trade- Marks, 18, 76. ADMISSION OF EVIDENCE. See Interference, 28. ADMISSIONS AT HEARING. 1. INTERFERENCE-PRIORITY.-Where an admission is made before one of the tribunals of this Office, the party making such admission should not thereafter be allowed to repudiate it. Zimmer v. Horton, 290. 2. SAME-SAME.-An admission made at a hearing before a tribunal that was to pass upon the question involved in the case binds the party making it. *Horton v. Zimmer, 555. ADOPTION AND USE. See Trade-Marks, 11, 12, 15, 42, 137. AFFIDAVITS OF ATTORNEY. See Access to Pending Applications, 2. ALLEGATIONS. See Interference, 1, 4; Motion to Amend Preliminary Statement, 5; Preliminary Statement, 6; Reduction to Practice, 1, 2; Trade- Marks, 26, 46, 50, 62, 63. ALTERNATIVE. See Claims; Interference, 1; Trade- Marks, 133. AMENDMENTS. See Abandonment of Applications, 2, 3, 7; Motion to Dissolve Interference, 2, 3; Priority of Invention, 8; Signature to Amendments; Specifications, 3; Trade- Marks, 46, 67. 1. RIGHT TO WITHDRAW.-Where an applicant filed an amendment directing the cancelation of the finally rejected claims of his application and requesting that the case be passed to issue, but on the same day filed an appeal from the Examiner's final rejection, in which appeal papers he asked that the amendment be withdrawn, although the request for the withdrawal of the amendment was informal, in that it was embodied in the appeal papers instead of in a separate paper, the Examiner should not have entered the amendment and passed the case to issue without giving the applicant an opportunity to elect the course he desired to pursue. Ex parte Kruse, 65. 2. ADDING CLAIMS COVERING MATTER ORIGINALLY DISCLOSED.-An applicant has a right to add claims by amendment to cover matter which is disclosed in his drawings, but not originally claimed, where the original specifications refer to such matter as an essential part of the construction sought to be patented. *Phillips v. Sensenich, 391. 3. RULE 68-DELAY.-An amendment touching the merits of the case will not be admitted under the provisions of Rule 68 unless accompanied by a verified showing of good and sufficient reasons why it was not earlier presented. Ex parte Brown and Sprink, 194. AMENDMENT TO OPPOSITION. See Trade- Marks, 28, 50, 60, 109. AMENDMENT TO PRELIMINARY STATEMENT. See Motion to Amend Preliminary Statement, 5, 6; Preliminary Statement, 1, 5, 6, 7. INTERFERENCE.-A motion to amend a preliminary statement will not be granted in the absence of a valid ground therefor, even though the proposed amendment does not seek to change the sequence of dates set up originally by the respective parties. Ridgway v. Tilyou, 246. ANALOGOUS USE. See Patentability, 3. ANCILLARY QUESTIONS. See Interference, 21; Priority of Invention, 10. ANTICIPATION. See Invention, 1, 4; Patentability, 3; Trade- Marks, 48, 65, 68, 71, 75, 96. APPEAL. See Interference, 22, 30, 32; Jurisdiction of the Commissioner of Patents; Preliminary Statement, 8; Trade- Marks, 64, 73, 80. OBJECTION TO FORM OF ACTION.-The objection to the form of an action embodied, after verdict, in a motion for a new trial comes too late to be available in an appellate court. ** American Tobacco Company v. Werckmeister, 571. APPEAL FROM THE EXAMINER OF INTERFERENCES. See Appeal to the Examiners-in-Chief; Interference, 6, 15, 47; Motion to Suppress Testimony; Trade- Marks, 22, 27, 101, 125. APPEAL FROM FAVORABLE DECISIONS. See Interference, 7, 8, 15, 18, 27; Motion to Dissolve Interference, 7; Public Use, 2. APPEAL TO THE COMMISSIONER OF PATENTS. See Interference, 43, 48, 51. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Abandoned Applications, 5, 6; Court of Appeals of the District of Columbia; Interference, 21, 42, 43; Motion to Suppress Testimony, 1; Reopening of Decided Cases. APPEAL TO THE EXAMINERS-IN-CHIEF. INTERFERENCE-PRIORITY-ASSIGNMENT OF ERRORS.-On appeal to the Examiners-in-Chief from a decision of the Examiner of Interferences an assignment of error which assails the decision of the Examiner of Interferences in awarding priority on the whole case to the opposing party is sufficient to preserve appellant's right to argue the question of res adjudicata by reason of a judgment in a prior interference. *Carroll v. Hallwood, 444. APPEAL TO THE SECRETARY OF THE INTERIOR. See Renewal of Forfeited Applications, 3. APPEAL TO THE SUPREME COURT OF THE UNITED STATES. See APPLICANT AND PATENTEE. See Burden of Proof. ASSIGNEES. See Construction of Statutes, 10; Interference, 54, 57; Motion to Dissolve Interference, 17; Preliminary Statement, 3; Priority of Invention, 6. ASSIGNMENT OF ERROR. See Appeal to the Examiners-in-Chief. ASSIGNMENTS. See Construction of Statutes, 2; Construction of Trade- Mark Statutes, 1; Copyright, 5, 6; Grant of Patents; Trade- Marks, 59. RESERVATION-LICENSE.-An instrument purporting to convey "an undivided one-sixth of all right, title and interest" in an invention, but reserving to the assignor the sole right to manufacture and sell the invention and providing that the assignee "shall not so manufacture and sell" except by assignor's consent, conveys nothing more than a right to use the invention. It is a mere license and not an assignment and is not such an interest as would warrant the issuance of the patent to the grantee, notwithstanding the request in such instrument that the patent so issue. Ex parte Taliaferro, 222. ATTORNEY. See Construction of Statutes, 8; Signature to Amendments; Testimony, 4; Trade- Marks, 7, 100, 108, 109. AUTHORITY OF THE COMMISSIONER OF PATENTS. See Date of Filing Application. BANKRUPTCY. See Access to Pending Applications, 1. BAR TO PATENT. See Interference, 4, 24; Jurisdiction of the Commissioner of Patents; Two Applications by Same Inventor. BAR TO REGISTRATION. See Trade- Marks, 18, 82. BURDEN OF PROOF. See Employer and Employee, 2; Interference, 29; Motion to Dissolve Interference, 15; Trade- Marks, 120. INTERFERENCE INADVERTENTLY-ISSUED PATENT.-Where a patent is inadvertently issued, while an application by another is pending, without an interference, no advantage accrues to the patentee on the question of burden of proof. *Cutler v. Leonard, 483. CANCELATION OF TRADE-MARK CERTIFICATES. See Trade- Marks, 3, 4, 5, 6, 31, 32, 33, 41, 42, 43, 102, 103, 104, 113, 114, 115, 116, 118, 122. CERTIFICATE OF COURT. See Trade- Marks, 58. CERTIORARI. REVIEW OF FACTS.-The concurrent finding of a circuit court and circuit court of appeals on questions of fact will not be disturbed by the Federal Supreme Court on certiorari unless clearly erroneous. **Continental Paper Bag Company v. Eastern Paper Bag Company, 594. CLAIMS. See Abandonment of Applications, 2, 3; Amendments, 12; Construction of Claims; Reissue Applications. 1. ALTERNATIVE EXPRESSIONS.-Alternative expressions in claims are not generally permitted; but where two terms are employed to designate a particular element, both of which terms describe the element correctly, the claim is not objectionable, as the alternativeness is of language rather than of structure. Ex parte Holder, C. D., 1903, 442; 107 O. G., 833; Phillips v. Sensenich, 14. 2. "ASBESTOS OR ITS EQUIVALENT"-ALTERNATIVE.-The expression "asbestos or its equivalent" occurring in a claim renders the claim objectionable as being alternative in form. Ex parte Phillips, 195. CLASSIFICATION. REQUEST FOR TRANSFER FROM ONE DIVISION TO ANOTHER.-The filing of petitions requesting that an application be transferred from one division to another, which are in the nature of complaints, condemned. Ex parte Maynard, 279. CLASS OF GOODS. See Trade- Marks, 25, 48, 54, 61, 63, 68, 69, 70, 71, 73, 74, 75, 77, 113. COAT-OF-ARMS. See Trade- Marks, 124, 128. COMBINATION. See Invention, 4, 5. COMITY BETWEEN COURTS. See Infringement, 1. COMMISSIONER OF PATENTS. See Abandoned Applications, 1; Construction of Statutes, 3, 9; Court of Appeals of the District of Columbia, 3; Date of Filing Application; Interference, 6, 13, 18, 23, 43; Jurisdiction of the Commissioner of Patents; Jurisdiction of the Court of Appeals of the District of Columbia Over Practice in the Patent Office; New Application; Public Use; Renewal of Forfeited Applications, 3, 4; Rules of Practice of the United States Patent Office; Trade- Marks, 31, 117, 122. CONCEALMENT OF INVENTION. See Interference, 34, 53, 57; Reduction to Practice, 10. INTERFERENCE-PRIORITY.-The concealment and suppression of an invention after a reduction to practice for a period of more than two years, until definite knowledge was obtained of the invention of another party, who in the meantime had made the invention and placed it upon the market, is sufficient to defeat the right to a patent. (Matthes v. Burt, C. D., 1905, 574; 114 O. G., 764; 24 App. D. C., 265.) *Gordon v. Wentworth, 453. CONCEPTION OF INVENTION. See Preliminary Statement, 9, 10. CONCESSION OF PRIORITY. See Priority of Invention, 6. CONSTRUCTION OF CLAIMS. 1. LIMITATION BY DESCRIPTION.-An inventor must describe what he conceives to be the best mode of constructing his invention; but he is not confined to that if his claims are broad, particularly where he states in his specification that means other than the means shown may be employed. **Continental Paper Bag Company v. Eastern Paper Bag Company, 594. 2. "MEANS" FOR Performing CeRTAIN FUNCTIONS.-The following claim: “In a paper-bag machine, the combination of a rotating cylinder provided with one or more pairs of side-forming fingers adapted to be moved toward or from |