On March 1 and 2, 1901, certain testimony and paper exhibits were

filed by Potter.

A motion made by Van Vleck to strike out the testimony was denied on March 7 and proceedings were suspended pending final determination thereof. The proceedings were resumed on March 16 and times were reset for taking testimony.

On March 18, 1901, this motion, which now comes before me on appeal, was filed by Thomson.

Rule 122 provides that

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Motions to dissolve an interference upon the ground that there has been such irregularity in declaring the same as will preclude a proper determination of the question of priority, or which 'deny the patentability of an applicant's claim * * * should, if possible, be made not later than the twentieth day after the statements of the parties have been received and approved.

In order to warrant the grant of this motion under the provisions of this rule, it is incumbent on the appellant to show that he was diligent in bringing the motion-i. e., it should be satisfactorily explained why it was not possible for him to have brought the motion within the twenty days, and not having so brought it that March 18, 1901, was the earliest date that it could have been brought.

The rights of the other parties to the interference should also be carefully considered to prevent injustice being done them.

It is stated in an affidavit filed in support of this motion that—

the motion to which this affidavit is attached is not made for purposes of delay, but in good faith, in order to provide an opportunity for the issue to be reformed to cover patentable subject-matter, so that the question of priority can be properly determined. The motion is based on the decision of the Examiner dissolving Interference No. 20,694, Van Vleck v. Thomson v. Nernst,) which completely changes the status of this interference, and said motion is made as soon as possible after the decision in that case became final.

It appears from the record that the second count of this interference was finally refused Van Vleck by the Primary Examiner as involving no invention over the prior art, that the Board of Examiners-in-Chief affirmed such rejection, and that the Commissioner of Patents reversed the decision of the latter.

It is further stated that

when this interference was declared, I did not have a copy of the Commissioner's decision above referred to, nor for some time thereafter, but the copy of the file of Van Vleck disclosed the fact that the Commissioner had held the second count herein to be patentable, and the first count being of substantially the same scope as the second, was assumed to have the same status. Hence the decision of the Commissioner was relied upon and no motion to dissolve was made at that time.

Nevertheless, I have always considered that the issues herein are very misleading, for they unquestionably read directly on Fig. 3 of the English patent to Nernst, No. 23,470 of 1897, and if they are held to cover patentable matter, a construction must be forced upon them in the light of the specifications and drawings of the parties of this interference, which is not apparent on their face.

In the last paragraph above quoted it appears that appellant claims to have always been of the opinion that the claims of the issue were not patentable, and therefore it seems clear to me that appellant was as well able to file a motion within the twenty days for transmittal and dissolution on the ground that the issue is not patentable as he is at this time and that it was just as possible for him to have done so. On this ground alone, therefore, the motion is brought too late and should be denied.

It is contended, however, that a recent decision of the Primary Examiner dissolving a kindred interference (No. 20,694) throws a new light upon the invention disclosed, and in view of this new light the appellant has drawn a new claim, which he asks should either be substituted for the present issues or else added to the interference as a new issue. He insists that—

* * this issue is clearly disclosed in the application of all three parties, and there is no question but that it is patentable over the art and over the issues at present in the case

and further, that if it be not now embodied in this case a second interference will necessarily have to be declared after the termination of the present interference in order to decide priority on the new issue. This claim could as well have been inserted in appellant's application prior to the declaration of the interference as now. The only reason given for not inserting the claim before is that it did not occur to the appellant's attorney to do so until after the decision of the Examiner dissolving the kindred interference above referred to.

The contention of Potter that

the decision of the Primary Examiner in interference No. 20,694 does not affect this interference except in so far as it encourages Thomson to use the information that has been available for his use since November 17, 1900

is, in my opinion, well founded.

The appellant states in his brief that—

it is not necessary to dissolve the interference and begin a new one over again. The motion to transmit may be granted, and the Primary Examiner may substitute the suggested new issue for the present unpatentable ones, or he may simply add the new issue. In either case this will be no hardship on any of the parties.

Potter has taken and filed his testimony-in-chief. It is more than probable if the new issue were substituted for the old ones, or even if it were merely added to the present interference, that it would be necessary for Potter to take new testimony, even though it should be stipulated by all parties to permit this testimony to be used in so far as it affects the old issues. To be compelled to take this testimony, Potter urges, "would work a peculiar hardship on him."

This statement cannot be lightly regarded in view of the fact that applicant might have made this claim before the declaration of the

interference. The fact that it did not occur to applicant to do so until after the Examiner's decision above referred to is not a valid reason for granting this motion, when to do so would work a hardship on others.

The statement by appellant that if this claim be not now incorporated in this case it will necessitate the declaration of a new interference between the same parties after the termination of the present interference, which would entail upon all the parties additional labor and expense, is undoubtedly true; but it is not seen that the labor and expense would be any the greater on one of the parties than on the

others.

In view of the fact that this reason is urged by but one of the parties I do not regard it as sufficient to warrant me in making an order in this case which would be contrary to the usual practice of the Office in similar cases. (Rule 122.) If this motion be granted, it seems to me that it would in all probability necessitate the filing of new preliminary statements, and it would therefore in effect be a new declaration of this interference, no matter which one of the several plans suggested by appellant be adopted.

That this motion is brought, as stated by appellant, "in good faith" and is not made "for purposes of delay" is undoubtedly so; but to grant the same might be the cause of great delay in the event that the Examiner should hold the new claim to be not patentable. This might result in a series of appeals before the several tribunals before the question of the patentability of the issue could be settled, and therefore cause great delay before the interference could be resumed.

In view of all the facts in this case and after a careful consideration of the argument of counsel for the appellant and of the briefs filed I am convinced that such a case is not presented as would warrant me in departing from the usual practice laid down in the rules governing such cases.

The decision of the Examiner of Interferences denying the motion to transmit this interference to the Primary Examiner is affirmed.

EX PARTE HARTJE.

Decided May 27, 1901.

(95 O. G., 2485.)

1. DESIGN Application-MISTAKE IN ENTERING AS A MECHANICAL APPLICATION. Where an informal application is received which is accompanied by a fee of fifteen dollars and a distinct request that the patent, if issued, be for seven years, even though the applicant subsequently filed an amended petition and an oath such as are used in mechanical applications, blank forms for which were sent him by the application clerk in order to complete the filing of the case, Held that it was a mistake to enter the same as a mechanical application.

2. SAME-SAME-TRANSFERRING APPLICATION.

Where the evident intent was that the patent, if issued, should be for a design and where the applicant does not seek to change his ground, but stands by his original request for a design patent for seven years, Held that a substitute specification and claim clearly setting forth a design should be entered and the application should be transferred to the jurisdiction of the Examiner of Designs. ON PETITION.

ATTACHMENT TO NECKTIE.

Application of Charles Hartje filed February 8, 1900, No. 4,581.

Mr. Victor J. Evans for the applicant.

MOORE, Assistant Commissioner:

This is a petition that a certain amended specification filed in this case April 22, 1901, be entered of record and made a part of the application, that the petitioner may have the privilege of amending his petition to apply to a design as originally made and intended, and that this application may be transferred to the jurisdiction of the Examiner of Designs.

It appears that this application was originally filed by the petitioner in person. The first paper filed by him was received in the Office on January 24, 1900. With this paper was inclosed a post-office moneyorder for fifteen dollars. This paper contained an informal petition, a short description of the invention, and concludes with the following statement:

I want the Letters Patent, if issued, to be for seven years. I will inclose a postoffice money-order for fifteen dollars.

The application clerk on January 25, 1900, sent to the petitioner a copy of the rules and blank forms for a petition and oath, such as are filed with an application for a mechanical patent, and required new papers and a drawing in order to complete the filing of this case.

Thereupon the petitioner filled out and filed the forms which were furnished him and also filed a drawing and specification. On the receipt of these papers the application was forwarded to Division XXIV for examination.

In the preamble to the specification the following language is used: Be it known that I, Charles Hartje, * * have invented and produced a new

and original design for the ends of neckties.

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The specification concludes with the following claim:

The design and the way it can be sewed onto the end of tie as herein shown and described.

In response to Office actions the petitioner filed on March 19, 1900, and May 17, 1900, respectively, two substitute specifications, in each of which he states that he has invented a "design" and claims a "design."

On March 6, 1901, the petitioner filed a power of attorney to the present attorney, who filed on April 22, 1901, a substitute specification in which the invention is described and claimed as a design.

The Examiner on April 23, 1901, refused to enter the specification, citing ex parte Sellers, (C. D., 1870, 58.)

Section 1934 of the Revised Statutes provides that—

The following shall be the rates for patent fees:

On filing each original application for a patent, except in design cases, fifteen dollars.

On issuing each original patent, * * *

In design cases: For three years and six months, ten dollars; for seven years, fifteen dollars; for fourteen years, thirty dollars.

The first fee for a patent, except in design cases, and the fee for a design patent to run seven years are therefore the same amount, and if the applicant had not in his first paper requested that the patent, if granted, should run seven years there might be a doubt whether or not this application was originally filed under the statute relating to patents for designs, for the reason that the terms "design," "trade-mark,” "copyright," &c., are frequently erroneously used by persons not familiar with the statutes relating to them.

It seems clear to me, however, that the petitioner used the word "design" advisedly, inasmuch as he had previously requested the patent, if issued, to be for the term of seven years. If in his first paper the petitioner had requested the patent to be for a term of three years and six months and had forwarded a fee of ten dollars or for a period of fourteen years and had forwarded a fee of thirty dollars, his intention would have been clear and the application would undoubtedly have been entered upon the record of design applications and forwarded to the Examiner of Designs for examination.

I am of the opinion, therefore, that the request as originally made by the petitioner showed his purpose of applying for a design patent. This opinion is strengthened by his persistent clinging to the word "design" in his specifications and claims subsequently filed.

Ignorance of the law is no excuse; but I am of the opinion that the errors committed by the petitioner were not due to that cause, but were merely errors as to form. That the application was orginally entered upon the list of applications for mechanical patents and sent to Division XXIV for examination was due to an error on the part of the Office, and the petitioner should not be made to suffer thereby.

The facts in this case are not the same as those in the case of ex parte Sellers, supra. In that decision the facts, as stated by Mr. Commissioner Fisher, were as follows:

Applicant filed in September, 1868, an application for a patent for “a new and useful improvement in a rolled hollow hexagonal column." He claimed, in terms, “a hollow column of uniform thickness, hexagonal in both its interior and exterior, and