same effect as the sworn declaration of the individual of exclusive use of the trade-mark for that period. The ten-years proviso of section 5 of the Trade-Mark Act is as follows:

That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations or among the several States, or with Indian tribes which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act.

Rule 32 of the Trade-Mark Rules reads as follows:

32. Where application is made under section 5 of the act of February 20, 1905, on the ground that the mark has been in actual and exclusive use as a trade-mark by the applicant, or his predecessors from whom he derived title, for ten years next preceding the passage of said act, the applicant shall, in addition to the requirements of section 2 of said act, make oath to such actual use of the mark as a trade-mark by himself, or his predecessors, or by those from whom title to the same is derived, for the period specified, and that, to the best of his knowledge and belief, such use has been exclusive.

This rule prescribes the manner in which the applicant shall establish a prima facie right to registration of a non-technical mark. It is based upon the provisions of the statute above quoted, and no reason appears why its requirements should be departed from. While in force this rule must be observed.

The certificate of registration in a foreign country claiming user of a mark for a stated period does not constitute evidence of exclusive use of the mark for ten years next preceding the passage of the act of February 20, 1905, which is a prerequisite to the registration of a non-technical mark under the ten-years proviso of that act. It does not, therefore, have the same effect as the sworn declaration of the applicant that the trade-mark has been in actual and exclusive use for ten years next preceding the passage of the act of February 20, 1905.

The petition is denied.

SMITH V. FOLEY V. ANDERSON v. SMITH.

Decided November 1, 1907.

PATENT INTERFERENCE.

136 O. G., 847.

1. INTERFERENCE-RIGHT TO MAKE CLAIMS-RULE 130.

Where a party to an interference does not bring a motion to dissolve on the ground that his opponents have no right to make the claims and no showing is made why such a motion was not brought, he is not entitled to urge the question under the provision of Rule 130; but the fact that such a motion was not brought does not prevent the tribunals of the Office from considering the question of their own motion, when it appears that one or more of the parties have no right to make certain of the claims.

2. SAME TESTIMONY.

Where a witness, testifying as to disclosure of the invention, admits that he is testifying solely from memory as to a disclosure alleged to have been made many years previously and that he cannot recall the details of the invention nor remember any disclosure except this one, though many were called to his attention about the same time, his testimony is insufficient to establish that such disclosure was made.

APPEAL from Examiners-in-Chief.

ELEVATOR SAFETY DEVICE.

Messrs. Brown, Darby & Hopkins and Mr. C. M. Nissen for R. C. Smith.

Messrs. Duncan & Duncan for Foley. (Mr. Alan M. Johnson of counsel.)

Messrs. Duncan & Duncan for Anderson. (Mr. Alan M. Johnson of counsel.)

Messrs. Griffin & Bernhard for E. A. Smith.

MOORE, Commissioner:

This case comes before me on appeals by R. C. Smith, Anderson, and E. A. Smith from a decision of the Examiners-in-Chief reversing the decision of the Examiner of Interferences and awarding priority of invention to Foley as to counts 1, 2, 3, and 5 to 17, inclusive. The issue included seventeen counts, of which the following set forth the invention sufficiently for the purpose of this decision:

1. An elevator-car, a clamping device therefor, and a differential screw having a high-pitch thread and a low-pitch thread for actuating the clamping device.

2. An elevator-car, a clamping device therefor, a high-pitch screw and a lowpitch screw, said screws arranged to actuate the clamping device.

9. In a safety device for elevators, the combination of a car, guides over which the car is adapted to run, a clamping device on the car, a high-pitch screw arranged to move the clamping device against the guides, a low-pitch screw arranged to tighten the clamping device on the guides, and means for actuating the screws by the motion of the car.

17. In an elevator safety device, the combination of a car, guides therefor, clamping devices adapted to engage the guides, right and left hand screws arranged to move the clamping devices quickly against the guides, right and left hand screws of low pitch arranged to tighten the clamping devices on the guides, and means for actuating the screws by the movement of the car.

The Examiner of Interference awarded priority to Foley as to count 4, holding that E. A. Smith was not the original inventor of the invention set forth in that count, but derived his knowledge thereof from Foley, and that, as between Foley and R. C. Smith and Anderson, Foley was the prior inventor. He awarded priority of invention as to the remaining counts to E. A. Smith on the ground that neither R. C. Smith, Foley, nor Anderson disclosed a structure

on which claims corresponding to these counts could be based. The Examiners-in-Chief considered count 4 to be unpatentable in view of the state of the art and made a recommendation to that effect. The case was remanded to the Primary Examiner, and no appeal having been taken from his decision rejecting the claim corresponding to this count the same became final, and this count is not before me for consideration. The Examiners-in-Chief reversed the decision of the Examiner of Interferences as to the right of R. C. Smith, Foley, and Anderson to make claims corresponding to the remaining counts, but affirmed his decision as to the question of priority and originality and rendered a decision in favor of Foley.

The subject-matter of the interference is a safety device for elevators, and while the devices of the respective parties are different, each is designed to overcome certain defects alleged to exist in what was known as the "Ellithorpe safety." In this device there are mounted on the car clamping-jaws in position to grasp the guide-rails at either side of the elevator-shaft. These jaws are located on the outer ends of levers pivoted intermediate their length and provided on their inner ends with means adapted to engage actuating-cams. These cams are capable of movement in and out between said inner end of the levers and by this movement swinging the levers to bring the jaws into engagement with the guide-rails. In order to effect this movement of the cams, they are mounted on the outer ends of shafts which are threaded on their inner ends. These threads, which are of reverse kind for the opposite sides of the car, work in corresponding threads in opposite sides of a drum capable of being turned by the governorrope. This rope is attached to the drum and after a number of turns around it passes to the top of the shaft, over a pulley geared to the governor, and then to the bottom of the shaft, around another pulley, and back to the car. This rope normally travels as the car does, and so the drum on the car is stationary; but if the car attains too high a velocity the governor acts to grasp the rope, holding it stationary and thus unwinding it from the drum. This causes the drum to rotate, moves the screw-shaft and its attached cams longitudinally, and imparts movement to the jaws which grasp the rail, thereby stopping the movement of the car.

The invention of each of the parties to the interference is designed to move the jaws quickly until they come into contact with the rails and then move them more slowly, but more powerfully, to force them tightly against the rails, and thus bring the car to a stop.

Taking up, first, the question of the right to make the claims, it would appear that none of the devices includes a "differential screw," according to the technical definition of that term. E. A. Smith, however, in his specification defines what he means by the expression "differential screw," and the term seems to be loosely used to mean any

combination of two screws of different pitch, as appears from the patent to Pridmore, No. 658,583, which is in evidence as "E. A. Smith's Exhibit No. 9," and from the patent to Pratt, No. 853,733, the application for which was originally involved in this interference. E. A. Smith did not bring a motion to dissolve the interference on the ground that the other parties had no right to make the claims, and as no showing was made why such motion was not brought he is not entitled to urge this question under the provisions of Rule 130. The fact that no such motion has been made does not prevent the tribunals of the Office from considering the question of their own motion when it clearly appears that one or more of the parties have no right to make the claims corresponding to some or all of the counts of the issue. Where, however, no such motion was made and the parties have during the whole procedure of the case acquiesced in the position taken by the Primary Examiner in declaring the interference, a decision should be rendered that certain of the parties are not entitled to make the claims only in a clear case where there can be no doubt on the question. No such case exists here. R. C. Smith, Foley, and Anderson each shows a spiral cam which, as stated by the Examinersin-Chief, is, in effect, a mutilated screw-thread.

As will hereinafter appear, each of the parties E. A. Smith, Foley, and Anderson has shown that he was in possession of the invention as early as February 1, 1905. As R. C. Smith does not claim to have conceived the invention until February 4, 1905, and as he alleges reduction to practice subsequent to the filing of the applications of the other parties, he can under no circumstances prevail, and the testimony offered on his behalf need not be considered.

Neither E. A. Smith, Foley, nor Anderson claims to have actually reduced the invention to practice. Anderson alleges conception in December, 1903; but as Foley, as will appear later, has established conception prior to that date and as their applications were filed on the same day, of these two Foley must prevail.

As between the remaining parties, E. A. Smith and Foley, the question of originality has been raised, each alleging that he disclosed the invention to the other. At the time of these alleged disclosures Foley was an inspector of elevators of the building department of New York city and E. A. Smith was an engineer representing the Otis Elevator Company at tests made by the building department of elevators installed by this company.

Foley states that he met Smith at two such tests, one on January 6, 1905, at the Times Building, and the other on January 24, 1905, at a building on the corner of Eighty-first street and Columbus avenue; that at the first of these tests a discussion arose as to a new regulation which had been promulgated by the building department requiring

69025-H. Doc. 1349, 60-2—15

that all safeties should be arranged so as to bring the clamping-jaws in contact with the rail within a travel of the car of a foot and a half after the governor-rope had been stopped and to stop the car within a further travel of eight feet. During this discussion Foley says he told Smith that he had a device which would comply with the regulation and made sketches showing how it could be done, using a high-pitch screw and a low-pitch screw, and how the clampingjaws could be worked by a hand-lever in the elevator-car. At the second test on January 24, 1905, Smith, according to Foley's story, asked him about the device and said that he did not understand how the change was to be made from the high-pitch to the low-pitch screw, and he (Foley) explained it to him, making a rough sketch of the device.

Smith admits meeting Foley at the two tests, but denies that any disclosure was made to him, and alleges that at the tests of January 24, 1905, when the question of the new regulation came up, he told Foley that he had a device which would comply with the regulations and explained to him what this device was.

As there is no direct corroboration of either of these stories, it will be necessary to consider the testimony offered to show that the parties were in possession of the invention prior to the time of their alleged disclosures and the conduct of the parties and the surrounding circumstances.

Foley claims to have first devised a means for moving the clamp of an elevator safety at two speeds in 1888, to have made a drawing at that time, and to have made various drawings showing different forms of the device subsequently to that time. He has placed in evidence six drawings, which are designated "May 1888 Drawing," "July 1893 Drawing," " November 1895 Drawing," "March 14, 1899, Drawing," "February 1903 Drawings," and "Working Drawings, Sheets 1, 2, 3, 4, and 5." The Examiner of Interferences has fully discussed the testimony of Foley and the witnesses to whom these drawings were shown and by whom they were signed, and it is not deemed necessary to repeat that discussion here. It is sufficient to say that the testimony clearly shows that Foley was in possession of the invention in issue as early as 1896. The hand-operated feature which appears in his application is first shown in the 1903 drawing. It is also shown in the working drawings, which are alleged to have been made in 1904. As to these dates there is no sufficient corroborating evidence. It is stipulated, however, that the working drawings were taken to Munn & Co. by Foley on January 27, 1905, and his application prepared therefrom.

E. A. Smith claims to have conceived the invention in issue in 1897 and to have disclosed it at that time to Lindstrom and Mason, superintendent and chief draftsman, respectively, of the A. B. See Eleva