8. RIGHT TO Make Claims-NECESSITY FOR Supplemental ОATH.-Where one of the parties to an interference added the claims in issue by amendment without a supplemental oath, the court of appeals would not be justified in awarding priority to the opposing party because of such failure. The most that the court could do under the circumstances would be to remand the proceeding, in order that a supplemental oath may be made and the matter renewed. *Phillips v. Sensenich, 391.

9. SAME-SAME.-The original specification of N.'s application relating to combined type-writing and adding-machines did not describe the addingmachines, but stated that the invention was illustrated "in connection with an adding-machine of the class known as 'registering accountants,'" and only the case and a few minor elements thereof were shown in the drawings. Held that in view of the evidence showing that such term referred to a wellknown construction and that such construction was the only one on the market which had the distinctive appearance illustrated in the drawing, N. had the right to make claims to a combination including specific elements of such adding machine. *Hopkins v. Newman, 395. 10. SAME. In awarding priority of invention the right of a party to make a claim may be considered as an ancillary question; but where three tribunals of the Patent Office have concurred in answering the question in the affirmative the court will follow them unless a manifest error has been committed. *Lindmark v. Hodgkinson, 540.

11. INTERFERENCE EVIDENCE.-Where the inventor has no definite recollection of the time he conceived his invention, but can only estimate the date by the filing of a certain document which was filed five days after the filing of the opposing party's application, and in answer to one question he placed his conception at a few weeks prior to the filing of the document and later admits that before testifying he fixed the time in the affidavit at about one week, Held that the evidence is too uncertain to overcome the filing date of the opposing party's application. *Steinmetz v. Thomas, 544.

PRIOR PATENTS. See Continuous Application, 1.
PRIOR REGISTRATION. See Trade- Marks, 116.

PRIOR USE. See Interference, 4.

PROCESS. See Invention, 2, 7, 8.
PROCESS OF LAW.

CONSTITUTIONAL LAW-SEARCHES AND SEIZURES.-Constitutional rights of a corporate defendant in an action for the forfeiture of infringing copies of a painting protected by copyright are not violated by the admission in evidence of the replevin proceedings under which such infringing copies were seized over the objection that by such proceedings rights under the fourth and fifth amendments to the Federal Constitution were invaded. ** *American Tobacco Company v. Werckmeister, 571.

PROOF. See Reduction to Practice, 1, 2.

PROPERTY RIGHTS. See Copyright, 3,4, 5, 6, 7.

PROSECUTION OF APPLICATION. See Reopening of Rejected Cases.
PUBLICATION OF TRADE-MARKS. See Trade-Marks, 67, 82.
PUBLIC USE.

1. EVIDENCE-COMMISSIONER'S DECISION INSTITUTING PROCEEDINGS NOT CONCLUSIVE. The fact that the Commissioner holds certain ex parte affidavits filed in support of a petition for the institution of public-use proceedings to be sufficient to make out a prima facie case of public use such as to warrant the taking of testimony does not preclude the Primary Examiner from ruling that 69025-H. Doc. 1349, 60-2-42

the evidence taken in such proceedings is not sufficient to warrant the rejection of the claims. Ex parte Hartley, 224.

2. APPEAL NOT ALLOWED from PRIMARY EXAMINER'S FAVORABLE DECISION ON PUBLIC USE. The action of the examiner holding that testimony in publicuse proceedings is insufficient to warrant the rejection of the applicant's claims will be reviewed only where such obvious error appears as will warrant the supervisory action of the Commissioner. Id.

PUBLIC-USE PROCEEDINGS. See Priority of Invention, 1, 2; Public Use, 2. REBUTTAL TESTIMONY. See Testimony, 2; Trade- Marks, 5.

RECONSIDERATION. See Examination of Applications, 2, 3; Motion to Amend Preliminary Statement, 4.

RECORDS OF THE PATENT OFFICE. See Drawings, 2.

REDECLARATION OF INTERFERENCE. See Interference, 50, 54.

REDUCTION TO PRACTICE. See Delay in Filing Applications, 1; Divisional Applications; Employer and Employee, 3; Evidence, 1; Interference, 5, 11, 26, 40, 41, 44, 55, 56; Motion to Amend Preliminary Statement, 5, 6; Priority of Invention, 3, 4, 9.

1. INTERFERENCE-PROOFS RESTRICTED BY ALLEGATIONS OF PRELIMINARY STATEMENT.-Where the preliminary statement of a party alleges reduction to practice in January, 1905, evidence showing the construction of an alleged model in 1895 cannot be accepted as proving an earlier date of reduction to practice. Phillips v. Sensenich, 14.

2. SAME

ISSUE-CONSTRUCTION.-The terms of an interference issue will not be given a strained or unnatural meaning or be construed to refer to something not disclosed by either party in order to include within the issue an early device made by one of the parties. Id.

3. SAME EVIDENCE.-The statement of witnesses who were thoroughly familiar with the construction of a device that it operated successfully Held sufficient to establish a successful test where the operation of the device is easily understood and the device itself is in evidence and found to satisfactorily perform the intended functions. Ebersole v. Durkin, 29.

4. SAME CHARACTER OF TESTS.-Where devices of the kind involved were well understood and the only point to be determined by a test was whether upon the operation of the controller-handle the dog which was attached thereto would move in the way stated, Held that it was not necessary that a test be performed under conditions of actual service in order to establish a reduction to practice. Id.

5. SAME-AGENT.-An inventor conceived an invention and embodied it in a model which was submitted to the company that controlled the sale of the machine for which the improvement was designed, but the company refused to purchase the invention and returned the model to the inventor. An officer of such company disclosed it to the foreman of the factory of a subsidiary corporation, who set about adapting it to the machine made by them for the parent company, and a completed machine was built embodying such invention. Held that such reduction to practice does not inure to the inventor, as such companies were not acting as the inventor's agents, and the fact that they subsequently purchased and procured an assignment of the invention does not affect the question. (Hunter v. Stikeman, C. D., 1898, 564; 85 O. G., 610; 13 App. D. C., 214, 226; Robinson v. McCormick, C. D., 1907, 574; 128 O. G., 3289; 29 App. D. C., 98, 111; Shuman v. Beall, C. D., 1906, 710; 123 O. G., 1664; 27 App. D. C., 324, 328, distinguished.) *Howell, jr., v. Hess, 315.

6. DILIGENCE.-Where it appeared that W. I. Ohmer had a conception of the invention which he disclosed to Neth and Tamplin in 1902 and prior to January, 1903, had caused an embodiment of this invention in working plans and drawings, but did not reduce the invention to practice until February, 1903, and it is shown that John F. Ohmer reduced the invention to practice in January, 1903, Held that it cannot be successfully held that W. I. Ohmer was lacking in reasonable diligence in reducing his invention to practice, when it is considered that a complicated and difficult piece of mechanism was constructed in four months. *Neth and Tamplin v. Ohmer, and Ohmer v. Ohmer, 431.

7. SAME.-Where the appellant established conception and disclosure of the invention in the summer of 1903, but took no steps toward reducing the invention to practice until April 21, 1904, when he instructed his attorney to prepare an application for patent, which was not, however, filed until September 19, 1904, while his opponents entered the field on March 1, 1904, and in excuse of his lack of diligence urged that his financial condition was such that it was impossible for him to reduce the invention to practice earlier, but the testimony showed that in the meantime he had enlarged his business and that his gross income amounted to about two hundred dollars a month, Held that the showing is insufficient to excuse the appellant's lack of diligence. *McArthur v. Mygatt, 499.

8. SAME PRIORITY.-Where the junior party had disclosed the invention to several persons and had ordered tools to manufacture the same prior to the entry of the senior party into the field and in a few months thereafter actually sold a small number which was followed a few months later by the manufacture and sale of large numbers of such devices, Held that he was diligent in reducing his invention to practice. *Davis v. Horton, 520. 9. DEVICE COMPLETE EXCEPT AS TO A MECHANICAL DETAIL.-A device for supporting hose for fire-protection purposes embodying a telescoping arm which was fully operative to carry out the object for which it was designed constitutes an actual reduction to practice, although it was found desirable to add a set-screw to prevent the complete withdrawal of such telescoping arm. "Any mechanic skilled in the art would have added the means to prevent the complete withdrawal of the telescoping arm. Telescopes and spy-glasses contain such devices. Moreover, the testimony shows that in its then condition the device was an improvement over the prior art, and that it required an unusual or very sudden pull to entirely withdraw the telescoping arm from its socket. It was the idea of the telescoping arm, which would receive the links as the hose was pulled from the rack, that constituted the invention. No patent could have been obtained on the setscrew because that was old in the art." *Howard v. Bowes, 547. 10. CONCEALMENT OR SUPPRESSION.-Where after reduction to practice an inventor puts aside his invention for more than a year until he discovers that his rival has placed the invention upon the market, Held that he must be charged with concealment or suppression of the invention and as not entitled to an award of priority over his more diligent rival. *Id. REFERENCES. See Division of Applications, 1; Examination of Applications, 1, 2, 3, 7; Motion to Dissolve Interference, 16.

REGISTRATION. See Construction of Trade- Mark Statutes, 2; Trade- Marks, 1, 2,

6, 13, 14, 17, 18, 19, 20, 21, 22, 33, 35, 37, 38, 39, 43, 45, 48, 49, 50, 52, 53, 55, 58, 61, 62, 64, 65, 66, 70, 71, 72, 74, 76, 77, 80, 81, 82, 83, 84, 85, 86, 87, 88, 92, 93, 94, 95, 98, 99, 102, 103, 104, 105, 107, 120, 124, 130, 136, 137, 138.

REHEARING. See Interference, 49.
SUFFICIENCY OF SHOWING.-A rehearing of a decision upon the patentability of
the claims of an invention will not be granted on the bare statement that
information which it is sought to present upon rehearing "could not have
been obtained at an earlier date" where there was a delay of eleven months
after the decision before the petition for rehearing was filed and there is no
excuse for this delay nor any showing that if proper diligence had been
exercised the information referred to could not have been obtained at an
earlier date. Ex parte Bartholomew, 280.

REISSUE APPLICATIONS.

1. PATENTABILITY OF CLAIMS CANCELED FROM ORIGINAL.-The deliberate cancelation of claims from an application in response to an official objection precludes the assertion of such claims in an application for the reissue of a patent granted thereon notwithstanding the fact that applicant had another application pending in which such claims could have been made which had not matured into a patent when the application for reissue was filed. *In re Lacroix, 345.

2. NEW MATTER.-In an application for the reissue of a patent for a cigar-bunchshaping machine disclosing no means for transporting the bunch after it is formed except the hand of the operator claims cannot properly be allowed which include as an element means for "transferring" or "transporting” the bunches. *Id.

3. SAME CHANGES ALLEGED TO BE IMMATERIAL.-Claims will not be allowed in a reissue application which are not clearly readable upon the disclosure of the patent, and the contention that they cover an "adaptation of means" involving "immaterial changes" is of no avail where the patent does not disclose the nature of the changes or how the adaptation can be accomplished. *Id.

REJECTION OF CLAIMS. See Amendments, 1; Construction of Statutes, 4; Exami-
nation of Applications; Public Use.

RENEWAL OF FORFEITED APPLICATIONS. See Construction of Statutes, 9.
1. SECOND RENEWAL VALID-SECTION 4897, Revised Statutes, Construed.—
The provision of section 4897, Revised Statutes, relating to the renewal of
forfeited applications that "such second application must be made within
two years after the allowance of the original application" construed and
Held not to prohibit the filing of a second renewal application within two
years after the allowance of the original application. Ex parte Lambert, 187.
2. SAME NOT RETROACTIVE.-The practice which prevailed prior to 1894 of
allowing more than one renewal of a forfeited application, providing it was
made within two years following the date of allowance of the original appli-
cation, is restored, but it is not to be construed as in any way retroactive. Id.
3. SAME-NO APPEAL TO SECRETARY OF THE INTERIOR FROM REFUSAL TO
ACCEPT.-No appeal lies to the Secretary of the Interior from a refusal of
the Commissioner of Patents to accept a second renewal application. The
question raised being one of a judicial or quasi-judicial character, the remedy,
if there be one, lies in appeal to the courts. (Butterworth, Commissioner
of Patents v. U. S. ex rel. Hoe et al., C. D., 1884, 429; 29 O. G., 615; 112 U. S.,
501; Poole v. Avery, C. D., 1899, 255; 87 O. G., 357; 14 Asst. Atty. General's
Opinion, 501.) †In re Lambert, 303.

4. OPINION OF THE ASSISTANT ATTORNEY-GENERAL-NOT BINDING UPON COM-
MISSIONER OF PATENTS.-An opinion of an Assistant Attorney-General for
the Interior Department relating to the right to file a second renewal appli-
cation rendered upon request of the Commissioner of Patents Held to be

merely advisory in nature, and the Commissioner might properly have disregarded the same had he desired, and should now disregard the same if in his opinion it was in error. †Id.

REOPENING OF DECIDED CASES.

AFTER APPEAL TO COURT-UNUSUAL CIRCUMSTANCES.-After an appeal to the Court of Appeals of the District of Columbia refusing the allowance of certain claims, a case will not be reopened for the consideration of additional claims except under unusual circumstances, and the allegation that the interpretation put upon a certain term in the appealed claims by the tribunals of the Patent Office and by the court was not contemplated by applicant when the claims were made, is not such an unusual circumstance as is contemplated by the practice. Ex parte Milans, 179.

REOPENING OF INTERFERENCE. See Interference, 34.

TESTIMONY AFTER APPEAL TO COURT.-Where a party to an interference, in which times for taking testimony had been set, files a motion for judgment on the record, together with a stipulation signed by the parties setting forth that the parties involved in the interference are the same parties who filed certain applications for foreign patents specified in the oaths attached to their respective applications and in their preliminary statements, and judgment is rendered on the record so made by the several tribunals of the Patent Office and by the Court of Appeals of the District of Columbia, permission will not be granted thereafter to such party to take testimony upon the question of priority of invention. A submission of the case upon the stipulation after an opportunity was given to take testimony amounted to a waiver of the right to take testimony. De Ferranti v. Lindmark, 234.

REOPENING OF REJECTED CASES.

REOPENING APPLICATION FOR FURTHER PROSECUTION AFTER FINAL REJECTION.Where the claims in an application are finally rejected after a full prosecution by the applicant and a clear issue has been reached between the applicant and the Primary Examiner, the case will not be reopened for further prosecution. Ex parte Litchfield, 285.

RES ADJUDICATA. See Appeal to the Examiners-in-Chief; Division of Applications, 2; Interference, 23, 34; Motion to Dissolve Interference, 7, 17; New Application; Trade- Marks, 134.

1. WHEN QUESTION MAY BE RAISED.-Whether or not the question of priority of invention is res adjudicata by reason of a judgment in a prior interference is a question which may be raised at any stage of the interference proceedings, and it is not only proper, but is the duty of the tribunal before whom the case is tried to take up and consider this question of its own motion where it is not raised by the parties. *Carroll v. Hallwood, 444.

2. SECOND INTERFERENCE.-Where, in an interference proceeding, after bringing a motion to dissolve the interference, alleging non-patentability and noninterference in fact, and unsuccessfully contesting the same, the senior party abandoned the invention of the issue and the Patent Office rendered judgment of priority in favor of the junior party, the senior party can not thereafter file an amendment to his application claiming the invention which is comprehended in the prior issue and have the question of priority between the same parties readjudicated; the decision in the first interference renders the question of priority of the more limited issue of the second interference res adjudicata. *Id.

RESPONSIVE ACTION BY APPLICANT. See Abandonment of Application, 2, 3, 4.

RETROSPECTIVE LAW. See Construction of Statutes, 5, 7; Renewal of Forfeited Applications, 2.