Whether the mark can be registered as a valid trade-mark, because of its character and use, is a question that is not before us on this appeal. Assuming, as found by the Commissioner, that it may be registered by the one entitled to its use, the sole question is as to the rights of the respective claimants. The evidence in support of the claims of the parties has been fully and fairly reviewed by the Commissioner, and, agreeing with his conclusion, we see no occasion for its discussion. If the mark was used in such a way as to constitute it a trade-mark, we think that the Commissioner was clearly right in holding that Murphey & Co. had the superior right to register it. The decision will therefore 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.] DURKEE, JR., v. WINQUIST AND TURNSTROM. Decided April 14, 1908. 136 O. G., 229; 31 App. D. C., 248. INTERFERENCE- It is well settled that the uncorroborated testimony of the junior party in interference is insufficient to overcome the presumption attaching to the prior filing date of the senior party. Mr. L. S. Bacon and Mr. J. H. Milans for the appellant. VAN ORSDEL, J.: This is an appeal from a decision of the Commissioner of Patents in an interference proceeding awarding priority of invention to Winquist and Turnstrom for a toe-calk for horeshoes. Durkee, Jr., filed his application for patent on January 30, 1905. Victor Winquist and Alfred Turnstrom filed their application October 14, 1904. A patent was granted to Durkee, Jr., on August 8, 1905. The issue in interference is as follows: 1. A horseshoe-calk composed of a V-shaped outer plate of iron with an angular opening extending lengthwise of its body below the line of its free ends, and a steel plate fitting within the opening, the steel plate being provided with a pointed lug integral therewith and extending outwardly from the edges of the outer plate. 2. A horseshoe-calk consisting of a steel-plate portion having a pointed lug extending from its edge and integral therewith, having a plate of iron folded upon the lengthwise edge opposite the lug, said iron portion enveloping one edge and entire side surfaces of the steel-plate portion. The evidence of Durkee, Jr., to establish his claim consisted of his own deposition, unsupported by any other evidence. It is well setled that the uncorroborated testimony of a junior party in an inter ference is insufficient to overcome the presumption attaching to the prior filing date of the senior party. Winquist and Turnstrom, relying on their senior application, offered no evidence, the burden being on Durkee, Jr. They were justified in resting on their prior application, until he had discharged the burden of proof resting upon him to establish a conception of the invention in question, and reduction of the same to practice, at a date prior to the filing date of the senior applicants. This he failed to do by his own uncorroborated evidence. It was held by the Commissioner of Patents that the terms of the claims, when given their ordinary meaning, clearly read upon the structure of both parties. With this decision, we fully agree. Winquist and Turnstrom, being the senior applicants, are entitled to the priority. The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed. [Court of Appeals of the District of Columbia.] IN RE FABER. Decided June 2, 1908. 136 O. G., 229; 31 App. D. C., 531. PATENTABILITY-COMBINATION—ANTICIPATION. The mere combination of articles disclosed in two former patents will not constitute invention unless it results in producing a new and useful article not applied by those familiar with the state of the art. A patent should not be issued when the alleged invention is a mere modification of the principle involved in former inventions or discoveries. Mr. H. S. Knight and Mr. James A. Carr for Faber. VAN ORSDEL, J.: This is an appeal from the Commissioner of Patents refusing to grant a patent to the appellant, Herman W. Faber, for a surgical dressing. The claims upon which the application for patent is based are nine in number, but the following sufficiently disclose the invention: 1. A surgical dressing comprising a binding medium cellularly and interstitially impregnated and superficially coated with an ointment having an oleaginous base. 4. A surgical dressing comprising a binding material cellularly and interstitially impregnated and superficially coated with an ointment having a nonadhesive, non-absorbent base and containing a refrigerating anesthetic and nonirritating antiseptic. The claims were rejected because of the state of the art as shown in two former patents. A patent issued June 28, 1881, to one Rosenwasser, discloses an antiseptic dressing closely resembling appellant's, except that it had no oleaginous base. This base, however, is disclosed fully in a patent issued to one Doppelmayer on October 7, 1890. The Examiner-in-Chief referred to appellant's alleged invention, and to these patents, as follows: In our opinion the article produced is obviously lacking in invention in view of matters of common knowledge. To use a bandage or dressing impregnated with an ointment is so well known and in such common use that judicial notice may be taken of it. It is well known that such dressing prevents drying of the wound and prevents the bandage from adhering to the parts. The patent to Rosenwasser discloses an antiseptic dressing and except for the absence of the oleaginous base substantially anticipates the dressing here claimed. We agree with the Examiner that there was no invention in adding the oleaginous base. The patent to Doppelmayer discloses a liniment having an oleaginous base and while the patentee states in his specification that he prefers to use it without bandaging the wound we are of the opinion that one who prefers to, and does in fact, use it on a bandage does not thereby become an inventor. This patent shows that an oleaginous base may be combined with the ordinary antiseptics used in treating a wound and to use the compound produced in one of the ordinary ways in which ointments and antiseptics are used is in our opinion an obvious expedient. It was held by all of the tribunals of the Patent Office that there is nothing new in the custom of applying ointment to a cloth which is to be used as a bandage, as described in the claims of appellant. The mere combination of the article disclosed in the two former patents will not constitute an invention, unless it result in producing a new and useful article not applied by those familiar with the state of the art. A patent should not be issued where the alleged invention is a mere modification of the principle involved in former inventions or discoveries. It is well settled that a valid patent cannot be issued for an improvement which is simply a new application of knowledge already familiar to those skilled in the art. (Ryan v. Hard, C. D., 1892, 423; 59 O. G., 1435; 145 U. S., 241; Grant v. Walter, C. D., 1893, 317; 63 O. G., 910; 148 U. S., 547; Market Street Cable Railway Co. v. Rowley, C. D., 1895, 152; 70 O. G., 632; 155 U. S., 621.) The record, we think, discloses that appellant's alleged invention contains nothing new to those skilled in the art. The application of the principles involved in the issue is obvious to those familiar with the use of such bandages in connection with the performance of surgical operations. Where this is apparent, no patent should issue. As stated in Hollister v. Benedict & Burnham Mfg. Co., (113 U. S., 59:) It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice; and is in no sense the creative work of that inventive faculty which it is the purpose of the Constitution and the patent laws to encourage and reward. We fully agree with the conclusions of the Commissioner and his decision is affirmed. The clerk will certify these proceedings as required by law. Affirmed. [Court of Appeals of the District of Columbia.] CUTLER V. LEONARD. Decided May 5, 1908. 136 O. G., 438; 31 App. D. C., 297. 1. APPEAL COURT OF APPEALS OF THE DISTRICT OF COLUMBIA-CONSIDERATION OF QUESTION NOT RAISED BELOW. Assignments of error by the Commissioner of Patents raising the question of the sufficiency of disclosure in appellee's applications will be given but passing notice by the court of appeals where such question was not raised before the tribunals of the Patent Office. It was incumbent upon appellant to "raise this question before the Primary Examiner, whose skill in the particular art peculiarly qualified him to consider it." 2. INTERFERENCE-BURDEN OF PROOF--INADVERTENTLY-ISSUED PATENT. Where a patent is inadvertently issued, while an application by another is pending, without an interference, no advantage accrues to the patentee on the question of burden of proof. 3. RENEWAL OF APPLICATION-ABANDONMENT-SECTION 4897, REVISED STATUTES, CONSTRUED. Under section 4897, Revised Statutes, relating to the renewal of forfeited applications, providing that upon the hearing of renewed applications preferred under this section, abandonment shall be considered as a question of fact," the question of abandonment is one to be determined upon proof of the facts and circumstances and will not be presumed from laches in filing the renewal application, although it may be within the power of the Commissioner, whenever he entertains a doubt as to whether there has been abandonment, to require an explanation of the delay. Mr. J. R. Edson and Mr. W. Clyde Jones for the appellant. ROBB, J.: This is an interference proceeding, in which no proofs were taken by either party, and involving an improvement in controllers for electrical vehicles as stated in the following counts: 1. The combination with a suitable controlling-circuit, of a plurality of electromagnetic windings connected in parallel between the opposite mains of said circuit, and adapted to respectively respond to variations of voltage, and a controller for varying the voltage impressed upon said controlling-circuit without thereby altering the resistance of said controlling-circuit. 2. The combination with a suitable controlling-circuit, of a plurality of electromagnetic windings connected therewith in parallel and adapted to respond to variations of voltage, and a suitable source of current-supply having means for varying at will the voltage impressed thereby, the voltage impressed by said source being substantially unaffected by the internal resistance of said circuit. 3. The combination with a suitable controlling-circuit, of a plurality of electromagnetic windings connected in parallel with said circuit and adapted to respond to variations in voltage, a generator for supplying current to said circuit, and means for varying the voltage impressed by said generator. The interference was declared between a patent issued to Cutler November 29, 1904, on an application filed by him April 15, 1903. In his preliminary statement Cutler alleges that he conceived the invention about October, 1902. Leonard's original application was filed January 24, 1901, and on March 22, 1902, he filed a divisional application, which he suffered to become forfeited May 11, 1905, and which on July 6, 1906, he renewed. Upon the allowance of the patent to Cutler, Leonard petitioned the Patent Office that his divisional application, which was copending, be withdrawn from issue and placed in interference with the patent. This petition was refused by the Primary Examiner upon the ground that the claims meant one thing when applied to the patent and quite another when applied to the application, and that, therefore, there was no interference in fact. Leonard thereupon suffered his application, which was passed to issue November 10, 1904, to become forfeited, and fourteen months thereafter renewed said application and petitioned the Patent Office for an interference with the Cutler patent. Thereupon the Examiner, who had previously declined to declare an interference between Leonard's application of which the present was a renewal, granted the petition on the authority of ex parte Cutler, (C. D., 1906, 247; 123 O. G., 655.) In that case, which was decided prior to the filing of the petition for renewal, the Commissioner said: In this Office a claim which is broadly drawn will be broadly read. If a narrow meaning is desired, it must be secured by limitations expressed in the claims. An interference having been declared, the Examiner of Interferences gave notice to Cutler that, inasmuch as his date of conception of the invention was subsequent to the filing date of Leonard, judgment would be given on the record against him unless he could show cause why such action should not be taken. In answer to this notice Cutler filed a motion to shift the burden of proof, basing his motion solely upon the ground of Leonard's delay in renewing his application which Cutler averred Leonard had suffered to become forfeited when he was cognizant of the fact that Cutler's patent had issued. |