held substantially that, being a new trade-mark, an application must be made for the registration of it, and a fee paid "in the same manner, and for the same purpose, as the fee required for patents." (Sec. 4939.)

The manner and the purpose of the payment of the fee required for patents is well understood. It is not in the nature of a tax levied upon inventors, but is for the purpose of defraying the expenses of the examination. The fees in such cases are never refunded on account of any lack of patentability in the subject-matter of the application. A fee paid upon the filing of an application for a patent can be returned only when it is found that there was no requirement of law for such fee, as if the applicant had already paid the fee or should pay in excess of what is required by law. The practice of the Office is distinctly stated in Rule 111:

Money paid by actual mistake, such as a payment in excess, or when not required by law, will be refunded; but a mere change of purpose after the payment of money, as when a party desiring to withdraw his application for a patent or for the registration of a trade-mark, will not entitle a party to demand such return.

Fees in trade-mark cases being paid in the same manner and for the same purpose as the fee required for patents, it follows that they should be refunded only under the same circumstances. The fact that the Office refuses registration, or that the applicant changes his purpose and does not desire registration of the mark for which he made application, or desires the registration of another mark, is not enough to justify the Office under the law in returning a fee. Permission to amend the application so as to introduce into it a new trade-mark is of precisely the same nature.

I concur in the opinion of my predecessor, expressed in this case when it was before him on a former occasion, that such a practice would not be in strict accordance with the law, and would lead to confusion in the transaction of business. The amendment upon an application for trademark by the substitution of a new and lawful trade-mark for that which was found not to be a lawful trade-mark in the original application would amount, as I have said, to a return of the fee.

The question which applicants bring before me at this time is essentially the same question which they brought before the Commissioner on the former appeal. He refused to allow a new trade-mark to be injected into the old application. Applicants filed a new application, and now they ask that the fee paid upon the filing of the old application shall be refunded. If would have been precisely the same if they had asked to have it transferred to the new application, and that was precisely the same in substance as asking that the new application might be injected into the old.

I am, therefore, of opinion that there is no law for returning such fees in trade-mark cases. That the labor of examining such an application and determining that the mark which it presents is not a lawful trade-mark is comparatively small, and that the fee is disproportionate to the labor

involved in the examination is another matter. That complaint is against the law, which prescribes the amount of the fee, and with that I have nothing to do. It is my duty to require the fees. when applications are made, and to pay such moneys into the Treasury. I have no authority to return them.

The request of the applicant is denied.

YOST AND WARNER v. POWELL.

Decided November 26, 1877.

(O. G., vol. xiii, p. 122.)

1. In a second interference controversy over the same subject-matter, a motion made at final hearing of the question of priority to admit certain new claims and remand the case to the Primary Examiner to determine their patentability was refused for want of sufficient reason.

2. Favorable action respecting the claims would reopen the cause for additional testimony. Since the emphatically novel element in the new claims is already embodied in those stated in the issue, a neglect to take satisfactory evidence relating thereto, which has not been the case, would be inexcusable.

3. An employer is entitled to use the suggestion or invention of an employé which is an improvement ancillary to a preconceived plan of reorganizing an old machine. APPEAL from the decision of the Board of Examiners-in-Chief in the matter of the interference between the application of Yost and Warner, filed October 13, 1875, and the application of Powell, filed May 27, 1875, for "Improvement in Harvesters."

SPEAR, Commissioner :

Immediately before the hearing on appeal from the Board in this case, a motion was made to remand the case to the Primary Examiner, with instructions to examine new and enlarged claims. This motion contemplated, if the decision and the claims should be favorable, the reopening of the case for the taking of new testimony on behalf of Powell as to the enlarged claims.

It was alleged that the testimony had been taken in relation only to the combination which the Commissioner in the former interference on this same subject-matter had declared to be the true issue, and, further, that it was now discovered by Powell that he was entitled to make broader claims, and specifically to claim at least one element of the combination as new in itself.

It did not appear to me from the presentation then made that the case should be reopened; but final decision was reserved on that point until after hearing on the question of priority. After more thorough examination I find nothing to change the conclusion then reached.

One important element of the combination which constituted the original issue was what is called the "horn" upon the forward end of

the frame. With the motion to reopen, the new claims proffered by Powell more particularly related to this element. Of these claims it may be said that the first is not for patentable subject-matter. The horn alone has no significance or use. It is only in combination with the chain and other parts that it becomes of importance. Further, as it was the main element in the combination, and emphatically the novel part of the construction, I think Powell could not be excused for failure to put in all the testimony in his possession in regard to it. As a matter of fact, he did testify, as well as other witnesses on his behalf, as to the making of this special element. The wrought-iron horn, alleged to have been made by Graves, under Powell's directions, in the spring of 1870, is specifically referred to in the testimony, both by Powell and by Graves. (New testimony, Int. 13, Graves; Int. 4, Powell; and Cross-Int. 13, Powell.) To reopen this case now in this second interference on the same subject-matter, and after so long a lapse of time, would require reasons much stronger than those presented.

On the question of priority of invention the decisions of the Examiners-in-Chief and Examiner of Interferences agree. A great mass of irrelevant testimony was taken, and, as is usual when parties working at first harmoniously afterwards fall out, the contest has been conducted with bitterness.

Amid all the contradictions, it is clear that Powell was in the employ of Yost when the invention was made; that the invention was an improvement ancillary to the preconceived plan of reorganizing the "Climax" machine, for the construction of which reorganized machine Powell and other workmen had been employed by Yost. I agree with the Examiner of Interferences, that Yost was entitled to use the suggestions of Powell as to the arrangement of the chain and pulley in the end of the horn, granting that Powell made them first. Of this, however, I am not convinced.

I find nothing in the record sufficient to warrant the refusal of a patent to Yost and Warner as joint inventors. They were doubtless in consultation when the invention was in progress. This is enough to justify their claim. The Office does not undertake to go behind the oath of joint invention, unless it appear from the evidence that such joint invention was impossible.

The decision of the Examiners-in-Chief is affirmed.

STEARNS v. PRESCOTT.

Decided December 1, 1877.

(O. G., vol. xiii, p. 121.)

1. Public use and sale of the invention under circumstances fatal to the grant of a patent having been disclosed in the testimony of an interference contestant, he was not permitted to explain away its force by additional ex parte evidence.

2. Such testimony may have entered materially into the determination of the ques

tion of priority. To present it for one purpose, and, after favorable award, to allow it to be assailed for another, might result in the reversal of the former award, and would be a bad precedent as well.

3. After expiration .of limit of appeal, and in event none is noted by the adverse (the defeated) party, the application remanded to the Primary Examiner to ascertain whether the statutory bar of public use or sale is established by the testimony. In the matter of the interference between the application of Henry A. Stearns, filed May 20, 1876, and the patent of Charles H. Prescott, No. 175255, January 17, 1876, for "Improvement in Machines for Folding Batting or Wadding."

DOOLITTLE, Acting Commissioner:

In the above-named interference the Examiner found that Stearns, the applicant, was the first and original inventor, but that the invention was reduced to practice by him, and publicly sold for more than two years prior to the date of filing his application. This being a statutory bar to the grant of a patent to Stearns, the Examiner, while awarding priority to him, at the same time reports this fact to the Commissioner, as provided by Office Rule 59.

Counsel for Stearns now requests that he be allowed sufficient time to file affidavits to fully explain all matters relating to his invention, its conception and reduction to practice, in order to establish conclusively that the use prior to the time provided for by law was of an experimental character, and should not operate to deprive Stearns of his patent.

The limit of appeal not having expired, the case does not become ex parte until that time; but it is just as well to now render my decision on this request, as it will not affect the future proceedings of the case, should either appeal be taken or the case be returned to the Primary Examiner, without an appeal upon the question of priority, to determine the matter of abandonment on the part of Stearns.

The very purpose of the interference was to develop the history of the invention on the part of the contestant, and it was necessary for the applicant to adduce proof showing not only that he had completed this invention experimentally, but had actually reduced it to practice before the patentee, in order to establish priority against the latter.

The fact of abandonment by public use or sale should be established by indubitable proof; and if there is any doubt upon this point, that doubt should be resolved by the Office in favor of the applicant, so that if the proof in this case is not sufficient to establish that fact clearly and unequivocally, Stearns will be allowed his patent. On the other hand, if the proof of public sale for more than two years prior to the filing of his application is established against Stearns by the testimony already taken, it would be simply disproving his own case by counter affidavits to allow him to now show that such was not the fact. It would be establishing a very bad precedent, indeed, if, after a party has set forth the dates of the conception, completion, and use of his invention in a proceeding especially adapted for that purpose, he were allowed, upon ob

taining an award of priority, to proceed to rebut or explain away the very proof, perhaps, upon which such judgment had been based. The effect of the affidavits now proposed to be taken by the applicant might be of that character that, if originally considered by the Examiner of Interferences, would possibly have changed his opinion or materially modified his decision on the question of priority, especially as against a patentee.

It will be seen that the Examiner of Interferences does not rest his report as to abandonment alone upon public use of the invention by applicant for more than two years prior to his application, but also upon the fact of sale. Now, a single instance of sale for profit, or offering for sale, is sufficient to create a statutory bar, whereas mere use may be experimental. Whatever the character, then, o. the applicant's use of his invention may have been, if the proof is clear that the completed invention was sold, or offered for sale, by him more than two years prior to the filing of his application, there is no discretion left to the office or to the courts. The law is inflexible on this subject. Sisson v. Gilbert, 5 Fish.,

109; Blandy v. Griffith, 3 ib., 617.

The request is denied, and the case will remain suspended until the time of appeal has expired; and if the patentee has not, during that time, taken his appeal, the case will be remanded to the Primary Examiner to consider the testimony, in view of the report of the Examiner of Interferences, and decide thereon in accordance with the above principles.

DANIELS v. CHESTERMAN.

Decided December 15, 1877.

1. A disclaimer contained in an original patent may be omitt "pon reissue, notwithstanding it was entered to avoid a threatened interference, it being clearly established that the admission which it makes is an inadvertence.

2. If the interfering patentee believed the reissue applicant estopped from withdrawing the disclaimer, he should have objected at the outset of the controversy and moved to dissolve the interference.

3. His failure to do so presumptively admits the applicant's right to omit the disclaimer.

MOTION in the matter of the interference between the application of William Daniels for the reissue of letters patent No. 150,539, granted May 5, 1874, and letters patent No. 153,475, granted to Edwin Chesterman, July 28, 1874, for "Improvement in Fare-Registers."

SPEAR, Commissioner:

The interference contest between the above parties was finally decided in favor of Daniels. Motion is now made op behalf of Chesterman to grant a rehearing and permit the reopening of the case for the purpose of taking additional testimony. The object of the new testimony is to show that Daniels was fully advised of the nature and effect of the disclaimer