DISCRETION OF THE EXAMINER OF INTERFERENCES. See Interference, 29; Preliminary Statement, 8; Suspension of Interference; Trade- Marks, 10, 51. DIVISIONAL APPLICATION. See Access to Pending Applications, 2; Continuous Application, 2; Motion to Dissolve Interference, 15. INTERFERENCE-ENTITLED TO DATE OF ORIGINAL AS CONSTRUCTIVE REDUCTION TO PRACTICE.—A divisional application dates back to the original one and secures to the applicant the benefit of a constructive reduction to practice, whether the claims of the divisional application were in the original when filed or not. *Lotz v. Kenny, 467. DIVISION OF APPLICATIONS. See Abandonment of Applications, 2, 3. 1. REQUIREMENt of Cursory EXAMINATION.-Where a requirement of division is made, the most pertinent references readily available should be cited in order that the applicant may be able to intelligibly divide his application. Ex parte Moorhead, 48. 2. APPEAL-RES ADJUDICATA.-Where a requirement for division between process, article, and apparatus claims, made by the Primary Examiner and affirmed by the Examiners-in-Chief and Commissioner, has been complied with, the Examiner is not precluded from requiring division between the claims presented in one of the divisional applications relating to the article upon the ground that they cover different species. The question of division as between different species of the article is not res adjudicata in the divisional application, as it was not one of the questions passed upon by the Examinersin-Chief. Ex parte McHale, 185. DOUBLE USE. See Invention 5. DRAWINGS. See Amendments, 2; Testimony, 7. 1. APPLICATION.-The conclusion of the chief draftsman as to whether or not drawings forming a part of the application for patent shall be accepted will not be disturbed unless there is such palpable abuse of discretion on his part as would warrant the exercise of the supervisory authority of the Commissioner. Ex parte Mealus, 206. 2. MUTILATED DRAWING NOT ACCEPTED.-Mutilated drawings will not be accepted by the Office as a part of the permanent records. This rule is founded upon the necessity of preserving the records of the Office for an indefinite period and must be enforced. Ex parte Frankman, 226. 3. SHEET CONTAINING ONLY ONE FIGURE.-A sheet of drawings containing only one figure, occupying only a small portion of one side thereof, is objectionable. Ex parte Chaffee, 281. EARLIER APPLICATIONS. See Interference, 34; Motion to Dissolve Interference, 14; Two Applications by Same Inventor. EARLIER DATES. See Reduction to Practice, 1; Testimony, 2. EMPLOYER AND EMPLOYEE. See Interference, 45; Testimony, 3. 1. INTERFERENCE-PRINCIPAL AND ASSISTANT.-It is well settled that in the relation of employer and employee where the employer conceived the principle or plan of an invention and the employee is directed to perfect the details, though the employee may make valuable improvements thereon, the improved result belongs to the employer. The same rule of law applies to principal and assistant, though they may be fellow employees. *Braunstein v. Holmes, 341. 2. SAME-SAME-PRESUMPTION.-B. was assigned to assist H. in making investigation and actually did the work which resulted in reducing the invention to practice. Held that the presumption is that what he accomplished was done under H.'s direction, and the burden is on him to overcome that presumption. Id. 3. SAME PRIORITY-REDUCTION TO PRACTICE.-It is well settled that if one conveys to his employees information and instructions to proceed and manufacture a piece of mechanism which, with the instruction imparted, can be constructed by the application of ordinary mechanical skill, such employer is entitled to the benefit of the skill and ingenuity of the employee in successfully completing the device. (Sparkman v. Higgins, 1 Blatchf., 206; Yoder v. Mills, C. D., 1886, 115; 34 O. G., 1048; 25 Fed. Rep., 821; Huebel v. Bernard, C. D., 1900, 223; 90 O. G., 751; 15 App. D. C., 510; Agawam v. Jordan, 7 Wall., 583.) *Neth and Tamplin v. Ohmer, and Ohmer v. Ohmer, 431. EQUIVALENTS. See Claims, 2; Infringement, 2. EVIDENCE. See Interference, 5, 32, 33, 34, 35, 36, 44, 49, 52, 56; Payment of Final Fee, 5, 6; Priority of Invention, 1, 2, 3, 11; Process of Law; Public Use; Reduction to Practice, 1, 3; Testimony, 3, 5, 6, 7, 12; Trade- Marks, 10, 11, 12, 15, 79, 90, 121. 1. INTERFERENce-Oral TesTIMONY.-Where witnesses have an independent recollection of events and the dates of their occurrence, the records of which are accessible to opposing counsel, it is unnecessary that documentary evidence be produced as a means of refreshing their recollection. Ebersole v. Durkin, 29. 2. Same-FixinG DATES.-Where a party attempts to fix a certain date, as to which he has no independent recollection, by reference to the dates in a cashbook showing when another party was absent, and the cash-book also shows that such party was absent at other times not remote, Held that the evidence is not sufficient to fix the earlier date rather than the later. *Howard v. Bowes, 547. EXAMINATION OF APPLICATIONS. See Amendments; Claims; Division of Applications; Drawings; Reopening of Rejected Cases; Specifications. 1. FINAL REJECTION-PREMATURE.-Where an Examiner finds it necessary to give reasons explaining the applicability of a reference, a final rejection should not be entered in the letter in which these reasons are stated for the first time. Ex parte Jackson, 43. 2. REJECTION-EXPLANATION OF REFERENCES.-The statement by the Examiner that the first three claims were clearly met in either one of three references cited and that the last three claims were met in the same in view of either of the last two references cited, Held in view of the character of the invention to be a sufficient compliance with applicant's request for a specific application of the references. Ex parte Samstag, 93. 3. SAME-RECONSIDERATION.-After the Examiner has properly applied the references the applicant is not entitled to further reconsideration unless he points out why the references did not meet the claims. Id. 4. PRACTICE-EXAMINER BOUND BY THE DECISIONS OF THE HIGHER TRIBUNALS.— It is self-evident that an examiner should follow the decisions of the higher tribunals whether he agrees with them or not; but where the examiner holds that a decision is not applicable to a given case the proper manner in which to have his decision reviewed is by appeal to the Examiners-in-Chief in the first instance and not by a petition to the Commissioner. Ex parte Konold, 107. 5. RULE 69-PRACTICE.-A request that a rejection be made final was properly refused by the Examiner when the applicant made no attempt to show that there was any error in that rejection. Ex parte Reiss, 272. 6. SAME-NOT INCONSISTENT WITH SECTION 4903, REVISED STATUTES.-Rule 69, which provides that an applicant in order to be entitled to reconsideration of his claims after they have been rejected must distinctly point out the supposed errors of the Examiner's action, is not inconsistent with section 4903 of the Revised Statutes, which provides for a reëxamination of an application. Id. 7. EXPLANATION OF REFERENCES-FINAL REJECTION.-Where the pertinency of the references had been sufficiently explained and claims were presented without argument, but with a request for further explanation of the references, a final rejection of the claims was proper. Ex parte Ault, 282. EXAMINER OF INTERFERENCES. See Interference, 13, 27, 47; Motion to Amend Preliminary Statement, 3, 4; Motion to Suppress Testimony; Preliminary Statement, 7; Trade- Marks, 27, 34, 101; Transmission of Motions. EXAMINER OF TRADE-MARKS. See Trade- Marks, 64, 67, 80, 81, 82. FINAL FEES. See Payment of Final Fees. FINAL HEARING. See Interference, 15, 16, 19. FIRST AND ORIGINAL INVENTOR. See Interference, 9, 31, 33, 35, 49, 52, 53; Reduction to Practice, 10; Testimony, 9, 10, 12. FOREIGN APPLICATIONS. See Construction of Statutes, 5, 6, 7. FOREIGN INVENTION. See Interference, 26. FOREIGN PATENTS. See Date of Filing Application; Interference, 24; Jurisdiction of the Commissioner of Patents. FOREIGN PUBLICATION. See Copyright, 1. FOREIGN REGISTRATION OF TRADE-MARKS. See Trade- Marks, 121. FORFEITED APPLICATIONS. See Payment of Final Fees, 1, 3, 4; Renewal of Forfeited Applications FORMER DECISIONS CITED. See Claims, 1; Concealment of Invention; Copyright, 3; Employer and Employee, 3; Grant of Patent; Interference, 4, 34; Renewal of Forfeited Applications, 3; Trade- Marks, 10, 12, 55, 63, 86, 94, 95, 115, 116, 126, 138. FORMER DECISIONS DISTINGUISHED. See Reduction to Practice, 5. GENERIC MARK. See Trade- Marks, 47. GEOGRAPHICAL TERMS. See Trade- Marks, 19, 20, 21, 84, 87, 99. GRANT OF PATENTS. See Assignments. PATENT SHOULD NOT ISSUE TO A MERE LICENSEE.-The Patent Office should not issue a patent to an alleged assignee where the inventor has reserved to himself the exclusive right to make or use or sell the invention covered by his application or any combination of these elements which limits the interests of the alleged assignee to an interest in the invention less than that defined as an assignment by the Supreme Court of the United States in the decision Waterman v. McKenzie, (C. D., 1891, 320; 54 O. G., 1562; 138 U. S., 252,) which defined an assignment to be either (1) the whole patent, comprising the exclusive right to make, use, and vend the invention throughout the United States, or (2) an undivided part or share of that exclusive right, or (3) the exclusive right under the patent within and throughout a specified part of the United States. Ex parte Taliaferro, 222. HARDSHIP. See Motion to Dissolve Interference, 4. HEARING. See Admissions at Hearing. INCOMPLETE APPLICATIONS. See Oath. INFRINGEMENT. See Certiorari; Copyright, 2, 4, 8; Suits for Infringement Against an Officer of the United States; Trade-Marks, 56, 57. 1. PATENTS-COмITY.—In a suit in equity to enjoin the infringement of certain patents where it appeared that the question of their validity had been decided adversely by the United States Circuit Court of Appeals for the Third Circuit and that that decision had been followed by two other courts in cases where the real parties in interest were the same, Held that the court below properly applied the doctrine of comity in the absence of some new and material defense, and its decree dismissing the bill of complaint affirmed. *Brill et al. v. The Washington Railway and Electric Co., 377. 2. EQUIVALENTS-RANGE DEPENDS UPON NATURE OF INVENTION.-The range of equivalents depends upon the extent and nature of the invention. If the invention is broad and primary in its character, the range of equivalents will be correspondingly broad under the liberal construction which the courts give to such inventions. **Continental Paper Bag Company v. Eastern Paper Bag Company, 594. INJUNCTION. See Infringement. EFFECT OF NON-USE OF PATENTED INVENTION.-The non-use of a patented invention by the owner of the patent occasioned by a desire to save the expense incident to changing from an old type of machine to the patented ⚫ device is not so unreasonable as to warrant a court in refusing injunctive relief during the latter part of the term of the patent, there being no question of a diminished supply of the product of such machine or of an increase of prices. **Continental Paper Bag Company v. Eastern Paper Bag Company, 594. INTERFERENCE. See Abandoned Applications; Abandoned Experiments; Abandonment of Applications; Admissions at Hearing; Amendment to Preliminary Statement; Appeal to the Examiners-in-Chief; Burden of Proof; Concealment of Invention; Construction of Statutes, 3; Court of Appeals of the District of Columbia; Divisional Application; Division of Applications; Employer and Employee; Evidence; Invention; Joint Inventors; Jurisdiction of the Commissioner of Patents: Jurisdiction of the Court of Appeals of the District of Columbia over Practice in the Patent Office; Mandamus; Motion to Amend Applications; Motion to Amend Preliminary Statement; Motion to Dissolve Interference; Motion to Suppress Testimony; Preliminary Statement; Priority of Invention; Public Use; Reduction to Practice; Rehearing; Reopening of Interference; Reopening of Rejected Cases; Res Adjudicata; Suits for Infringement Against an Officer of the United States; Supplemental Oath; Suspension of Interference; Testimony; Trade- Marks, 8, 10, 15, 34, 73, 74, 97, 123, 127, 131, 132, 134; Transmission of Motions. 1. 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 parties in view of seven enumerated patents, is indefinite, because the allegation that the counts are anticipated or limited is in the alternative and the motion does not state which counts are to be urged as anticipated and which limited, nor does it state which of the patents are relied upon for anticipation and which for restriction. Murphy v. Borland, 1. 2. REDECLARED-MOTION TO DISSOLVE RELATING TO Old and New COUNTS.A motion to dissolve filed 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. Id. 3. 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. Id. 4. 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.) Id. 5. EVIDENCE-CROSS-EXAMINATION OF PARTY TO PROCEEDING-RANGE ALLOWABLE.-Where a party to an interference, relying upon certain specified installations as a reduction to practice, is asked upon cross-examination whether any other installations had been made, the question should be answered, as a wider range is allowable in the cross-examination of a party to the proceeding; but if such general questions were followed up by further questions clearly showing an intention to elicit information relating to the business of such party irrelevant to the questions at issue the witness might well refuse to answer under the advice of counsel. Jansson v. Larsson, 307. 6. APPEAL ON Priority-SuperviSORY AUTHORITY OF COMMISSIONER.—A petition to dismiss an appeal from a decision of the Examiner of Interferences on priority rendered on the record will not be considered by the Commissioner in the exercise of his supervisory authority, since petitioner has adequate remedies provided by the rules. Brown v. Gammeter, 19. 7. PRACTICE-RULE 109.-No appeal lies from a favorable decision rendered on a motion to amend under Rule 109 whether rendered by the Examiner or the Examiners-in-Chief. Josleyn v. Hulse, 34. 8. SAME-RULE 130.-The fact that a party cannot under the provisions of Rule 109 bring a motion to dissolve as to counts added to the issue of the interference will not of itself prevent him from urging under the provisions of Rule 130 the right of his opponent to make the claims. Id. 9. ORIGINALITY—ACTS INCONSISTENT WITH CLAIM TO ORIGINATION.-Where R., who was a patent solicitor, familiar with the patent law, both as inventor and solicitor, entered into a contract with K. and J., joint claimants of the invention in issue, according to the terms of which he was to attempt the sale of the invention and if he was successful he was to have one-third of the proceeds, Held to constitute a substantial acknowledgment that the invention was made by K. and J. *Ries v. Kirkegaard and Jebsen, 312. 10. RULE 109-APPEAL.-Where an Examiner rejects claims presented by a party for interference under Rule 109, he should set a limit of appeal from his decision whether the claims had been allowed to the other party or had been made for the first time by the moving party. Mattice v. Langworthy, 17. 11. PRIORITY-Diligence.—Where McA. conceived the invention in the summer of 1903, but did practically nothing toward reduction to practice until April 21, 1904, when he wrote to his patent attorney instructing him to file an application, which was prepared promptly and sent to McA., but was not filed until September 19, 1904, Held that he was not diligent as against M., who entered the field on March 1, 1904. McArthur v. Mygatt, 44. 12. SAME-SAME-ALLEGED POVERTY.-A claim by McA. of poverty as an excuse for failure to reduce to practice is not sustained by evidence show69025-H. Doc. 1349, 60-2——41 |