DIGEST OF DECISIONS. [Decisions of the United States courts are indicated by an asterisk (*) and of the Secretary of the Inte rior by a dagger (†).] ABANDONED APPLICATIONS. 1. ACCESS TO RECORDS OF THE PATENT Office-ABANDONED APPLICATIONS-SECTION 892, REVISED STATUTES, CONSTRUED-Some of the records and papers of the Patent Office are public records, and of these any person is entitled to copies upon paying the usual fee therefor; but there are others not public records, and of these no one is entitled to copies without showing that they are material evidence for him, and the Commissioner of Patents cannot be required to furnish copies until such showing is made. Abandoned applications are evidently of the latter character. (Section 892, Revised Statutes, construed.) *United States, ex rel. Bulkley, v. Butterworth, Commissioner of Patents, 685. 2. SAME-SAME-EVIDENCE IN SUIT-MANDate of CourtT-No person is required to submit his private papers to others or produce them in court on the demand of a party to a suit on his allegation or claim that they are material evidence for such party, but only in obedience to the mandate of the court in which such suit is pending, and it is only reasonable that when a public officer has under his control a paper or document in its nature private, or such as the public generally is not entitled to have access to as a public record, he should not be compellable to produce it or deliver copies of it until he has some information from the court in which the case is pending that it is required as evidence. *Id. 3. SAME-SAME-TRIBUNAL TO DETERMINE QUESTION OF EVIDENCE-The court in which a suit is pending and not the Commissioner of Patents is the appropriate tribunal to determine whether a given paper should be produced as evidence, and where there is no satisfactory showing, as by a certificate of the court, that a paper is proper evidence the Commissioner of Patents may refuse copies of such paper, and a writ of mandamus will not issue to him to furnish such copies. *Id. ABANDONED EXPERIMENTS. See Priority of Invention, 4. EXPERIMENTAL USE-The fact that only one device was made and operated for only a short time and that it was then laid aside and not used again until other parties were making and advertising the device raises the presumption that such use was merely experimental and that what was done amounted to no more than an abandoned experiment. Wurts v. Harrington, 20. ABANDONMENT. See Reissue, 2. 1. DELAY IN APPLYING FOR PATENT-REASONABLE DILIGENCE-STANDARD OF PROOF OF-Delay in applying for a patent after an invention is made will not constitute abandonment where the inventor has used reasonable diligence to perfect the invention and avail himself of its benefits, and there is no general standard by which such diligence is to be established; but it 15377-53 ABANDONMENT-Continued. must be reasonable under all the circumstances of the particular case. The character of the invention; the health, the means, the liberty of the inventor; his occupation upon kindred or subordinate inventions, are proper subjects for consideration. Such reasonable diligence does not involve uninterrupted effort nor the concentration of his entire energies upon the single enterprise. *Von Schmidt v. Bowers, 529. 2. ABANDONMENT OF APPLICATION-ACQUIESCENCE OF ASSIGNEE-Where a letter of abandonment not containing the consent of the assignee is accepted upon the representation that it was impossible to communicate with such assignee and obtain his consent, but where the assignee afterward appears and objects to the abandonment, Held that the abandonment must be considered void and of no effect. Ex parte Weidemann, 194. 3. SUFFICIENCY-AMENDMENT TO SAVE CASE FROM ABANDONMENT-TIMELY OBJECTION-If an amendment, after rejection, inserting additional claims and requesting suspension of action upon other matters for stated reasons be admitted without question, it cannot be objected to at a subsequent period as insufficient to obviate abandonment. Ex parte Burson, 196. 4. EXAMINER'S SUCCESSOR-The tacitly favorable action of one Examiner upon a question of abandonment should at least be persuasive upon his successor. Id. ABANDONMENT OF PETITION. See Mandamus, 6, 7. ACQUIESCENCE. See Construction of Specifications and Patents, 13; Interference, 22. ADJUDICATED PATENTS. See Injunction, 1, 4, 5, 9, 10. ADVERTISING INVENTIONS FOR SALE. See Attorneys, 33, 34. AFFIDAVITS. See Interference, 48, 49, 50. AGENTS. See Attorneys, 9, 10; Decree; Injunction, 8. AGGREGATIONS. See Construction of Specifications and Patents, 21, 22. AGREEMENT OF PARTIES IN INTERFERENCE. See Interference, 3. AMENDMENTS. See Abandonment, 3; Applications, 1; Construction of Rules; Interference, 30; New Matter; Rehearing, 6. AMENDMENTS TO PRELIMINARY STATEMENTS. See Interference, 36, 37. ANSWER TO BILL. See Construction of Specifications and Patents, 40; Demurrer, 3; ANTICIPATION. See Cancellation of Patents, 5; Construction of Specifications and Patents, 3, 15, 35; Defense, 2, 3; Infringement, 8; Particular Patents, 27, 43, 61, 62; Printed Publications. APPEAL. See Attorneys, 35, 36, 37, 38; Injunction, 7. FAILURE TO FILE APPEAL-APPEAL DISMISSED-COSTS-When it appears that an appellant has failed to have his cause filed and docketed, his appeal may, on motion, be docketed and dismissed, with costs. *Rosebrugh v. Holman, 322. APPEALED CASES. See Applications, 1; Rehearing, 6. REOPENING CASE-Applicants insisting upon broad claims only and appealing such claims have no vested right in a further examination if they fail to prevail on the appeal. Ex parte Snow, 48. APPEAL FROM THE COMMISSIONER OF PATENTS. See Appeal to the Court of Appeals of the District of Columbia; Circuit Courts of the United States; Court of Appeals of the District of Columbia; Former Decisions Affirmed; Interference, 18, 19, 22; Mandamus, 3, 6, 7. APPEAL FROM THE EXAMINERS-IN-CHIEF. See Decisions of the Examiners-inChief, 3. APPEAL TO THE COMMISSIONER OF PATENTS. See Examination of Applications, 2; Rehearing, 6. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Former Decisions Affirmed; Interference, 3, 4, 8, 9, 10, 13, 14, 15, 16, 17, 18, 19, 21, 22; Mandamus, 2, 3, 6, 7; Reissue, 1. 1. FORMER DECISION AFFIRMED-Upon a consideration of the merits of the case, Held that there was no error in the decision of the Commissioner of Patents appealed from and that such decision should accordingly be affirmed. *Briggs v. Seymour, Commissioner of Patents, 211. 2. INTERFERENCE-APPEAL TO COURT-FORMER DECISION AFFIRMED-On appeal to the Court of Appeals of the District of Columbia it was Held that the Commissioner was right in his decision that Parmelee was the inventor of the device in controversy, and that the decision is therefore affirmed. *Hill et al. v Parmelee, 214. 3. PATENTABILITY OF ISSUES IN PRIORITY CASES-DECISION OF COMMISSIONER NOT FINAL-The fact that the Court of Appeals of the District of Columbia has refused to consider questions of patentability of issues in priority cases does not establish the conclusion that the decision of the Commissioner upon questions of patentability in such cases is final and conclusive. Such questions should come before the court by regular course of appeal. Breul v. Smith, 12. 4. INTERFERENCE-DECISION OF THE OFFICE-APPEAL-EVIDENCE-In the case of interference appealed to a court the decision of the Patent Office must stand unless the evidence shows beyond any reasonable doubt that the appellant was the original inventor. *Arnold v. Tyler, 349. 5. RECORD-FAILURE TO PRINT-Failure to print transcript of record is ground under Court Rule 18 for dismissing an appeal. *Munson v. Carper, 359. 6. INTERFERENCE-APPEAL TO COURT-In an interference of two issues, one of which the Commissioner decided was made by one contestant and the other by the other, when he also holds in the same decision that the two are structurally and patentably different, the party adjudged the prior inventor has no ground of appeal, since if the Commissioner was right in his holding the first issue covers all that there is patentable, and if the Commissioner is not right his mistake does not injure such prior inventor. *Shellaberger v. Schnabel, 364. 7. SAME SAME-When the Commissioner decides that one of two issues of an interference was invented by one party and the other by the other party, but that the second issue has no patentable novelty to distinguish it from the one first invented, an appeal from his decision awarding priority of the second issue amounts to nothing more than a moot case and should not be adjudicated. *ld. 8. SAME-NON-PATENTABILITY-DISSOLUTION-When the Commissioner has determined that there is no patentable invention in issue, that determination is a virtual dissolution of any interference, for there cannot be interference unless there is at least prima facie patentable novelty. *Id. 9. COURT OF APPEALS-POWER TO MAKE RULES LIMITING THE TIME OF APPEALSApart from the general rule that courts have power to make reasonable rules not conflicting with express statutes, the Court of Appeals was duly authorized by statute to make rules limiting the time of appeals from the decisions of the Commissioner of Patents. *In re Hien, 367. 10. TIME OF APPEAL MAY BE MODIFIED BY RULE MADE AFTER DECISION APPEALED FROM-The fact that a rule of the Court of Appeals relating to the time in which an appeal must be taken was promulgated after the decision appealed from is not controlling as to the appeal, since the right of APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIAContinued. appeal is not a vested right, but one which may be altered by statute or by rule of court. *Id. 11. Court of APPEALS-RULES FOR TAKING APPEALS NOT GOVERNED BY SECTION 4894, REVISED STATUTES-The Court of Appeals of the District of Columbia has authority to limit the time for taking appeals, and there is no restriction by reason of section 4894, Revised Statutes, which has reference solely to the abandonment of an application by failure to prosecute. *Id. 12. SAME-GANDY v. Marble CONSTRUED-The decision of the Supreme Court in Gandy v. Marble, in which it was held that a bill in equity under section 4915, Revised Statutes, was sub modo a branch of the application and governed as to laches by section 4894, Revised Statutes, had nothing to do with the time in which an appeal from the decision of the Commissioner of Patents must be taken. *Id. 13. SAME SECTIONS 4911 AND 4915-BUTTERWORTH v. HOE CONSIDERED-The Supreme Court in Butterworth v. Hoe (C. D., 1884, 429; 29 O. G., 615,) in considering the difference between an appeal under section 4911, Revised Statutes, and a bill in equity under section 4915, Revised Statutes, held that the latter is a proceeding according to the ordinary course of equity. This being so, section 4894, Revised Statutes, is inapplicable to the case of an appeal from the decision of the Commissioner of Patents. *Id. 14. APPEAL-DISMISSAL OF-FAILURE TO FILE AND DOCKET CAUSE-The appellant having failed to have his cause filed and docketed, on motion of the appellee the cause was docketed and the appeal dismissed. * Cleaveland v. Wright, 413. 15. INTERFERENCE-APPEAL-PROCEEDING AT LAW-An appeal to the Court of Appeals of the District of Columbia in an interference case is not a proceeding in equity and the provisions of Revised Statutes, section 4915, do not apply. It is a proceeding at law, and hence a decision of the Supreme Court of the United States as to the statute referred to does not apply in this case. Doyle v. McRoberts, 413. 16. JURISDICTION OF COURT OF APPEALS OF THE DISTRICT OF COLUMBIA TO ENTERTAIN APPEALS FROM THE COMMISSIONER OF PATENTS-The act of Congress approved February 9, 1893, by which the determination of appeals from the Commissioner of Patents was vested in the Court of Appeals of the District of Columbia, does not overstep the boundaries erected by the Constitution between the three great departments of the Government, but it is within the power of Congress to enact such law. *Bernardin v. Seymour, Commissioner of Patents, 428. 17. SAME AS Congress had the power to create a distinct special tribunal, proceeding after the manner of a court of law or equity, for the adjudication of claims to patents for inventions, there seems to be no convincing reason why it could not without violating the Constitution make it a branch or bureau of an executive department, subject to supervision in matters administrative only by the head of that department and subject to review in matters judicial in their nature by a court of competent jurisdiction. Id. 18. APPEAL-DISMISSAL OF-FAILURE TO FILE AND Docket CAUSE-The appellant having failed to have his cause filed and docketed, on motion of the appellee the cause was docketed and the appeal dismissed. *Southall et al. v. Seymour, Commissioner of Patents, 480. 19. SAME-SAME-SAME-The appellant having failed to have his cause filed and docketed, on motion of the appellee the cause was docketed and the appeal dismissed. * McCreery v. Seymour, Commissioner of Patents, 480. 20. SAME-SAME-SAME-The appellant having failed to have his cause filed and docketed, on motion of the appellee the cause was docketed and the appeal dismissed. * Morrissey v. Seymour, Commissioner of Patents, 481. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIAContinued. 21. REVERSING DECISION OF PATENT OFFICE-Where all the tribunals of the Patent Office have decided adversely to an appellant, the concurrent decision will not be reversed except in a very clear case. * Barratt v. Seymour, Commissioner of Patents, 506. 22. PATENT OFFICE RECORD FOR USE IN COURT-TAXING COST-Where on appeal from the decision of the Commissioner of Patents a record was allowed to be filed in the case by appellee upon assurance that it would have some material bearing upon the question of the issue presented by the appellee, but on consideration it was found that the record had no such bearing, Held that the record so introduced must be at the cost of the appellee. *Stevens et al v. Seher, 761. APPEAL TO THE EXAMINERS-IN-CHIEF. See New Matter; Rejected Claims. SUFFICIENCY OF DESCRIPTION-QUESTIONS FOR EXAMINERS-IN-CHIEF-A petition asking that an Examiner be advised that a certain figure and description are sufficiently described and indicated in the original specification and drawing presents an appeal from the sufficiency rather than the propriety of a rejection. This is a question for the Examiners-in-Chief. Ex parte Coe, 187. APPEAL TO THE SECRETARY OF THE INTERIOR. See Secretary of the Interior. APPEALS WHEN INVENTION IS KNOWN TO BE UNPATENTABLE. See APPLICANT AND PATENTEE. See Interference, 13, 14, 15, 16, 17. APPLICATIONS. See Abandoned Applications; Copies of Pending Applicatione; Delay in Filing Application; Division of Application; Drawings, 2; Examination of Applications, 1; Joint Application—One Applicant not Inventor; Oath; Particular Patents, 27, 29, 37. 1. CLAIMS TO BE INCLUDED-An applicant should present his whole case at one time by both broad and narrow claims. It is not considered good practice to allow an applicant to present broad claims, try them through all the tribunals of the Office, and when such broad claims are refused, go back to the Examiner and present narrow claims. Ex parte Snow, 48. 2. CHANGED AFTER BEING SWORN TO-STRUCK FROM THE FILES-Where it appeared that the sheets of the specification were removed from the cords or ribbons connecting the same to the other papers of the application, and over the ends of which the seal of an officer before whom the oath was taken was affixed, and another specification was substituted, Held that there was a violation of Rule 31 and an offense against the notice published in the OFFICIAL GAZETTE, Vol. 79, page 1369, and the application was ordered stricken from the files of the Office. Ex parte Altmann, 52. 3. RETURN OF PAPERS COMPRISING-It is the settled practice of the Patent Office to refuse to return any of the papers of a complete application—that is, an application which comprises all necessary papers properly executed and on which the filing fee has been paid. Applications which do not comprise all papers necessary to a complete application properly executed may be returned where their return is necessary in order to enable the applicant to complete the papers, and this may be done whether the filing fee has been paid or not. Ex parte Van Etten, 68. 4. SAME-There are good reasons why papers should not be returned. It must be presumed that in filing the papers the applicant contemplated and intended the completion of the application and its preparation for examination within the period fixed by statute. They must be taken to have been filed in good |