request of the then Commissioner of Patents. He might have properly disregarded the advice and have adhered to the long-continued and well-settled construction of the act, contemporaneously given it by a Commissioner whose duty it was to administer it; a construction which at no time Congress attempted to revise but during all these years acquiesced in. It had become a fixed rule of practice to receive more than one renewal application. Undoubtedly many patents were issued under that interpretation. The act, not being free from ambiguity required construction; and I am inclined to think that a court, for that reason alone, might have refused to disturb the Commissioner's construction, so long obtaining, even though as an original proposition the most narrow interpretation might have been all that the court could have deduced from the bare phraseology of the act. The opinions, which may have embarrassed the Commissioner of Patents since 1895, are in no sense controlling and you need not consider them of binding force, either advisory or otherwise. This will leave you free to exercise your own discretion in the matter; for the determination of the rights of this petitioner must be your judicial act-not that of the Secretary of the Interior who is not vested with supervisory or appellate control of your conduct in a judicial or quasi-judicial capacity. Congress has authorized the Commissioner of Patents to decide the patentability of inventions, subject to the right of appeal, not to this Department, but to the court. In the first instance at least, it is the duty of the Commissioner to construe the substantive law of patents, and that construction may be disturbed only by the courts. If you conclude to revert to the earlier practice, under the construction obtaining for nearly a generation, you have an unquestionable right so to do without the slightest reference to the two opinions of the Assistant Attorney-General. Whether or not these opinions are correct, and the first was certainly wrong in one respect-I need not decide; and I volunteer no expression of opinion because you should be left entirely untrammeled by any presentation of views which, in legal effect, would be at the most mere advice. Again, I must say, it is wholly within your province to determine the issue, the responsibility resting solely upon your conscience and discretion; and that in no event should you regard the two opinions as in any wise controlling your conclusion. The appeal in the case at bar is dismissed for want of jurisdiction and the case is remanded for such further proceedings as the Commissioner of Patents may in his discretion feel should be had. The prayer of the petitioner, to the extent herein indicated, is granted. Very respectfully, (Signed) FRANK PIERCE, First Assistant Secretary. DECISIONS OF THE UNITED STATES COURTS IN PATENT CASES, 1908. [Court of Appeals of the District of Columbia.] JANSSON V. LARSSON. Decided December 11, 1907. 132 O. G., 477; 30 App. D. C., 203. INTERFERENCE-EVIDENCE-CROSS-EXAMINATION OF PARTY TO PROCEEDING-RANGE ALLOWABLE. Where a party to an interference, relying upon certain specified installations as a reduction to practice, is asked upon cross-examination whether any other installations had been made, the question should be answered, as a wider range is allowable in the cross-examination of a party to the proceeding; but if such general questions were followed up by further questions clearly showing an intention to elicit information relating to the business of such party irrelevant to the questions at issue the witness might well refuse to answer under the advice of counsel. Mr. F. T. Brown and Mr. F. A. Hopkins for the appellant. Mr. L. W. Southgate and Mr. C. V. Edwards for the appellee. SHEPARD, J.: This is an interference case involving priority of invention of a mechanism for stopping a hydraulic plunger-elevator at the upper and lower limits of its run independently of the operator. The following is the issue declared: 1. In combination with an elevator-car and a stop mechanism therefor, of a rope connected to run with the elevator-car and stationary means for causing a deflection of said rope to actuate said stop mechanism. 2. In combination with an elevator-car and a stop mechanism therefor, of a rope connected to run with the elevator-car and stationary means unattached to the rope for causing a gradual deflection of said rope to gradually actuate said stop mechanism. 3. In combination with an elevator-car and a stop mechanism therefor, of means for actuating said stop mechanism, a pair of running ropes for actuating said means, and means for causing a deflection of one or the other of said ropes as the car approaches the end of its run. 4. In combination with an elevator-car and a stop mechanism therefor, of means for actuating said stop mechanism, a pair of ropes connected to run with the elevator-car for actuating said means, and means for causing a deflection of one or the other of said ropes as the car approaches the end of its run. 5. In combination with an elevator-car and a stop mechanism therefor, a pair of ropes connected to travel with the car and means for causing a deflection of each of said ropes to actuate said stop mechanism. Larsson first filed an application on March 7, 1903, which became abandoned through oversight of his solicitor. He filed the application in interference on July 5, 1904. The drawings and specifications and all of the claims but one were copies of the former application. The change in the single claim was to avoid an objection that had been raised by the Examiner. Jansson's application was filed April 19, 1904, and patent issued to him December 13, 1904. Through inadvertence in the Patent Office the patent issued without regard to Larsson's application then pending. This interference was brought about by Larsson who, for that purpose, inserted certain claims of the patent. The patent having been issued under these circumstances does not add to the burden of proof of the junior applicant. The three tribunals of the Patent Office concurred in awarding priority to Larsson upon the testimony. A preliminary question arose over the contention of Jansson that Larsson was estopped to embody the claims of the former's patent, under the principle enounced in Bechman v. Wood, (C. D., 1899, 453; 89 O. G., 2459; 15 App. D. C., 484.) We agree with the Commissioner that the facts do not bring the case within the principle; but are analogous to those in cases decided since Bechman v. Wood. (McBerty v. Cook, C. D., 1900, 248; 90 O. G., 2295; 16 App. D. C., 133, 138; Luger v. Browning, C. D., 1903, 593; 104 O. G., 1123; 21 App. D. C., 201, 206; Furman v. Dean, C. D., 1905, 582; 114 O. G., 1552; 24 App. D. C., 277, 281; Seeberger v. Dodge, C. D., 1905, 603; 114 O. G., 2382; 24 App. D. C., 476, 483.) Another question earnestly pressed on the argument relates to the refusal of Larsson, upon the advice of counsel, to answer certain questions propounded on cross-examination. It is true, these questions related to whether other installments of elevators had been made, than those in Pittsburg and Allegheny buildings, which Larsson relied on for reduction to practice. It is to be remembered that Larsson was a party to the proceeding, wherefore wider range of cross-examination was allowable. We think that the general questions should have been answered. Then, if followed up by further questions clearly showing an intention to elicit information relating to the business of Larsson and his assignee, not relevant to the questions at issue, the witness might well refuse to answer under the advice of counsel. As counsel for the appellant did not undertake to point out the relevancy of these questions by stating what he expected to elicit, and the case was otherwise so plainly made out, we do not think there was error in refusing to suppress or exclude the deposition. The questions of the dates of conception of the invention by the respective parties, and its actual reduction to practice by Larsson were of fact exclusively. The tribunals of the Patent Office were unanimous in the conclusion, from the evidence, that Larsson conceived the invention as early as February 19, 1903, and reduced it to actual practice as early as November 14, 1903, by introducing it into elevators in several buildings. It is unnecessary to add anything to their satisfactory review of the evidence supporting that finding. We find nothing in it to justify a different conclusion. They also agreed in finding that Jansson conceived the invention as early as January 28, 1903. We agree with them, also, that Jansson lost the benefit of his earlier conception through want of diligence in seeking to perfect his invention. He did practically nothing during the fourteen months that elapsed between his conception and the filing of his application. Meanwhile Larsson had conceived the invention and followed it diligently to actual reduction to practice, in a satisfactory manner, more than four months before Jansson showed any activity. The decision is right, and will be affirmed; and this decision will be certified to the Commissioner of Patents. It is so ordered. Affirmed. [Court of Appeals of the District of Columbia.] UNITED STATES PLAYING CARD Co. v. C. M. CLARK PUBLISHING CO. Decided December 11, 1907. 132 O. G., 681; 30 App. D. C., 208. 1. TRADE-MARKS-TRADE-MARK USE-EVIDENCE. 66 "Stage" That a particular brand of cards was known to the trade as cards does not prove use of the name Stage" as a trade-mark to indicate origin and ownership. 2. SAME-ADDITIONAL MARK USED AS A GRADE-MARK. Evidence considered and held to show that the ace of spades bearing a conventional figure of Columbia was adopted, used, and advertised as a trade-mark for playing-cards and that the word 'Stage" was used in addition thereto merely for the purpose of indicating style, class, and grade. (Manufacturing Co. v. Trainer, C. D., 1880, 464; 17 O. G., 1217; 101 U. S., 51, 54; Columbia Mill Co. v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150 U. S., 460, 463; Burton v. Stratton, 12 Fed. Rep., 676, 700.) Mr. Fritz v. Briesen for the appellant. Mr. F. A. Spencer for the appellee. 69025-H. Doc. 1349, 60-2-21 |