It is well settled that the rules of procedure in the Patent Office, when not in conflict with any provision of law, have the full force and effect of statutes. These rules are made and promulgated by the Commissioner, by and with the approval of the Secretary of the Interior. The approval of the Secretary of the Interior being necessary to the adoption and establishment of a rule, we think the contrary would be true, that, where a rule of procedure is in force, it can only be repealed, modified, or suspended by the Commissioner with the approval of the Secretary of the Interior.

The real question before us, however, is not the effect of the rules of procedure in the Patent Office, but whether appellant is in a position to assail the action of the Commissioner. The position of counsel for appellant is an anomalous one. After invoking the jurisdiction of this court on appeal from a judgment of priority by the Commissioner of Patents, it is now insisted that that question is not properly before us for consideration. Appellant, after pursuing the issue of priority to defeat, apparently is seeking to rob his adversary of the fruits of his victory by having the invention in issue declared unpatentable. This result is sought to be obtained by here attacking the methods employed by the Commissioner in arriving at his decision.

We are not required to pass upon the regularity of the action of the Commissioner in this proceeding. That question is not before us for consideration. The patentability of an invention is a question to be determined by the Patent Office and not by this court upon appeal in an interference proceeding. There are two reasons why Mell cannot be heard to complain of the order of the Commissioner; first, because it was his appeal that was reinstated, and the order reinstating the appeal must be presumed to have been for his benefit, and, second, because he is not in a position to raise the question here presented. At the time the Commissioner made the order complained of, Midgley had a judgment of priority in his favor. Mell, in the face of that judgment, was in no better position to raise the question of patentability than that of a disinterested party. It is well settled that a disinterested party is never in a position to raise such a question. The Commissioner is charged with the duty of representing the public interests in the issuance of a patent, and, when he has declared an invention patentable, a mere disinterested party cannot question his judgment. This being true, the reference of the question of patentability to the Primary Examiner, so far as Mell is concerned, amounted to nothing more than a discretionary move on the part of the Commissioner, presumably for the purpose of gaining further information, and, when he again took up the matter of the appeal from the Board of Examiners-in-Chief, whether regular or irregular, a question upon which we express no opinion, he simply

resumed consideration of the only issue before him in which Mell was entitled to be heard, namely, the priority of invention. Upon that question alone he passed, and that is the only matter before us for consideration.

All the tribunals of the Patent Office found in favor of Midgley. Mell failed to establish any date prior to Midgley's filing date, and there is no hypothesis upon which a judgment in his favor could be based. We find no reason to disturb the decision of the Commissioner of Patents. The judgment is, therefore, affirmed, and the clerk is directed to certify these proceedings, as by law required. Affirmed.

[Court of Appeals of the District of Columbia.]

MOORE v. HEWITT.

Decided June 9, 1908.

136 O. G., 1535; 31 App. D. C., 577.

INTERFERENCE-ALLEGED REDUCTION TO PRACTICE-DELAY-EVIDENCE OF ABANDONED EXPERIMENT.

A delay of seven years by an inventor after an alleged reduction to practice, during which time he was active in developing a large number of other inventions, constitutes convincing evidence that the alleged reduction to practice amounted only to an abandoned experiment.

Mr. Joseph R. Edson for the appellant.

Mr. Charles A. Terry for the appellee.

ROBB, J.:

This is an appeal from the decision of the Commissioner of Patents in an interference case awarding priority of invention to Hewitt, (C. D., 1906, 497; 125 O. G., 2047,) the senior party. The issue is defined in the following counts:

1. The combination with an electrical translating device and a resistance device in series therewith, of a shunt across the circuit between the translating device and the reactance device, and a snap or quick-break switch in said shunt, the reactance device being placed in operative relation to the switch, so as to operate the same when the main circuit is closed.

2. The combination with an electric gas-lamp, of an electromagneticallyactuated circuit-interrupter having its contacts in multiple with the lamp and its magnet or coils in the supply-circuit with the lamp and adapted to hold the interrupter-contacts open by the current flowing through the lamp while the lamp is in action.

3. The combination with an electric gas-lamp connected with a low-potential source of energy through a circuit of self-induction of sufficient value to furnish a high-potential current proper for starting said lamp, an interrupter for said circuit of induction having its contact in multiple with the lamp, and au electromagnet for actuating said interrupter, said electromagnet having its coils connected to the supply-circuit and adapted to hold the interrupter-contacts open by the current flowing through the lamp while the lamp is in action.

The Commissioner thus describes the invention:

The purpose of the invention is to afford means to overcome the negativeelectrode resistance of electric gas-lamps. These lamps consist of a glass vessel containing air at low pressure or other gases. Within the glass vessel are two electrodes connected to the source of electrical current. Lamps of this character oppose a high resistance to the passage of the electrical current. The familiar Geissler tubes are operated by means of the intermittent highpotential discharge obtained by placing them in the secondary circuit of an induction-coil, the primary circuit being provided with the usual interrupter. While the resistance of lamps of this character cannot be overcome by a current of low potential, it has been found that such a current will form an arc between the electrodes if the initial resistance is momentarily broken down by a discharge of high potential.

Each of the three tribunals of the Patent Office has carefully reviewed the testimony in this case, and each has reached the conclusion that Hewitt is entitled to a judgment of priority.

The Examiner of Interferences after reviewing Moore's testimony reached the following conclusion:

That while developing his system of lighting by means of sparks or flashes produced by a rapidly interrupted current, some of the tubes accidentally arced. That Moore at first regarded this as a detriment, since it quickly destroyed the electrodes, and he proceeded to adjust the magnet to prevent it. That he conceived the possibility and desirability of producing a light on that principle, and later made experiments in that direction. That he met wth poor success and probably had little faith of perfecting such a system, for none of his tubes prior to 1902 were much, if any, more successful than the first, where the arcing occurred accidentally. That Moore met with much better success along other lines of electric lighting, and beyond a few desultory experiments, did little with this system until after he became aware of the progress made by Hewitt in this line. * If it be assumed that Moore had a conception of the invention prior to his opponents, in the absence of a prior reduction to practice it can avail him only in case he shows due diligence at and subsequent to the appearance of his opponents in the field. As shown by the analysis of the testimony, heretofore noted, Moore did little and appears to have made no advance from the time of his 1897 experiments with the apparatus introduced in evidence until the filing of his application in 1902, after he had become aware of the efforts of Hewitt along the same line. * Moore has failed to show the necessary diligence, and in either case the award of priority must be against him.

*

The Examiners-in-Chief found that there was sufficient testimony to prove reduction to practice by Moore in 1897 or 1898. The Board held, however, that Moore was clearly lacking in diligence, and that his conduct

shows a deliberate concealment of the invention of such a character as to prevent him from availing himself of his early reduction to practice.

The Board further said:

After the experiments in 1897 and 1898 which have been referred to Moore devoted his attention to other forms of devices and did nothing further with this invention until 1902 when he filed his present application and after he had seen some of Hewitt's devices in operation.

69025-H. Doc. 1349, 60-2--34

The Commissioner's review of the testimony is a very thorough and impartial one, and his conclusions are adverse to Moore, both on the question of reduction to practice and of priority of invention. The Commissioner states:

During the period between 1895, when Moore claimed to have made the invention in issue, and May 6, 1902, when he filed the application involved in this interference, he filed forty-two applications which matured into patents. The invention here in issue is not described in any of these patents—

and that on April 12, 1901, Moore witnessed an exhibition by Hewitt, the appellee herein, of lamps of the character involved in this issue. The Commissioner finally concludes:

The imperfect operation of the lamps made by Moore and the fact that he did not file his application until seven years after the date when he claims to have made the invention, during which period he was active in developing other inventions, lead to the conclusion that his operations amounted to nothing more than abandoned experiments and that he is entitled to no date of invention prior to the filing of his application.

We do not deem it necessary to again review the testimony in this case. It is sufficient to say that we have examined the record with care, and fully concur in the conclusion reached by the Commissioner. If Moore reduced this invention to practice in 1897, as he now contends, his delay until May, 1902, in filing his application, after he had seen a successful exhibition of the invention by his opponent, is inexcusable. (Paul v. Hess, C. D., 1905, 610; 115 O. G., 251; 24 App. D. C., 462; Seeberger v. Dodge, C. D., 1905, 603; 114 O. G., 2382; 24 App. D. C., 476.) The fact that during this interval he filed fortytwo applications which matured into patents lends itself to the conclusion reached by the Commissioner that he had not conceived the invention when he saw it publicly exhibited by Hewitt.

The decision of the Commissioner was clearly right, and, therefore, is affirmed. The clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents, in accordance with law.

[Court of Appeals of the District of Columbia.]

IN RE TAYLOR.

Decided June 2, 1908.

136 O. G., 1767; 31 App. D. C., 529.

PATENTABILITY-PRINTED MATTER NON-INVENTION.

A claim for a guarantee credit book having certain designated columns for certain entries, Held to involve no invention over the prior art which disclosed the general scheme, the only difference being the addition of certain columns for the purpose of keeping an account of liquidated damages

Mr. H. E. Bellows for the appellant.

Mr. F. A. Tennant for the Commissioner of Patents.

SHEPARD, C. J.:

This is an appeal from the decision of the Commissioner of Patents denying an application for a patent having the following claims:

In a guarantee credit book, two pages, one of which has a column suitably designated for balances due stores, columns suitably designated for entries pertaining to liquidated damages and a column suitably designated for balances due as liquidated damages, while the other is provided with columns coöperating with those of the first-mentioned page and suitably designated for entries pertaining to gross credit balances available for the use of a purchaser and suitably designated for entries pertaining to net credit balances for which a guarantor is responsible, respectively.

The references in the decision of the Patent Office tribunals are, first, a patent to Taylor February 4, 1902, No. 692,384; second, a patent to Taylor March 10, 1903, No. 722,391. The first of these is for a deposit credit book having complementary pages, one of which is a deposit-sheet, the other an account-sheet provided with appropriately-headed spaces for data relating to commercial transactions other than those with the bank, etc. The second relates to books employed to secure safety in commercial transactions, and has for its purpose the utilization of a bank account or other credit balance to secure credit for an equal or lesser sum in merchandise elsewhere than at the place of deposit without withdrawing any part of the bank account in the first instance, and without interrupting the accumulation of interest upon the balance. The claim is for a credit-book with oppositely-disposed sheets divided into columns appropriately headed, in which are to be made different entries showing the amount deposited, the amount withdrawn, the amount of purchases at certain stores, and balance due the depositor. The general scheme of the present application is the same as that of the above-mentioned patents. It adds other columns for the purpose of keeping an account of liquidated damages, that is the amount which the depositor must pay the guarantor for the failure to purchase a stipulated amount of merchandise.

We agree with the Commissioner that it involves no invention to add to the book the additional columns to accomplish this purpose. (See Munson v. New York City, C. D., 1888, 253; 42 O. G., 1061; 124 U. S., 601, 604; U. S. Credit System Co. v. American Credit Indemnity Co., 69 Fed. Rep., 139, 143.)

The decision will be affirmed. It is so ordered, and that this decision be certified to the Commissioner of Patents. Affirmed.