Lapas attēli
PDF
ePub

ing that it was not until six months after his business was established that he could afford to move from a place for which the rental was eleven dollars per month to a place for which the rental was thirty-five dollars per month, where it appeared that the old place was retained and business carried on at both places for about three months before his opponent entered the field; nor does the fact that he sustained a financial loss by the peculation of an employee affect the question where such loss occurred some months after the beginning of the period to be covered by the showing. Id.

13. ABANDONMENT OF INVENTION-NOT CONSIDERED ON PETITION.-A petition that a rule be issued against an opposing party to show cause why it should not be held that he has abandoned his invention and that petitioner be permitted to offer testimony upon such question will not be entertained under the Commissioner's supervisory authority where petitioner has other remedies and is, in fact, pursuing another remedy before the Examiner of Interferences. Barber v. Wood, 52.

14. MOTION TO AMEND ISSUE UNDER RULE 109-TRANSMISSION.-A motion to amend the issue of an interference under Rule 109 was properly refused transmission where it contained a proviso that the claims shall be added "without prejudice to the right to contest such claims under the provisions of Rule 122." Wheeler v. Palmros, 69.

15. SETTING ASIDE RECORD JUDGMENT APPEAL.-No appeal will be entertained from a decision of the Examiner of Interferences setting aside a record judgment and fixing a time for final hearing. O'Brien v. Gale v. Zimmer v. Calderwood, 74.

16. RULE 130.-The fact that on appeal from a decision on a motion to dissolve the Examiners-in-Chief have held that a party has a right to make the claims does not prevent the question being raised before the Examiner of Interferences at final hearing under Rule 130. Id.

17. TESTIMONY-SURREBUTTAL.-The junior party took testimony as to priority, but did not attack the operativeness of the senior party's device. The senior party took the testimony of two witnesses to show that the device shown in Figure 3 of his application was operative, and certain exhibits were introduced, which one of the witnesses testified were tested by him. In rebuttal the junior party offered expert testimony to show certain structural differences between the exhibits and the invention disclosed in the senior party's application. Held that such testimony afforded no ground for allowing the senior party to take surrebuttal testimony. Gold v. Gold, 86. 18. MOTION TO DISSOLVE-FAVORABLE DECISION NON-APPEALABLE.-A party to an interference has no right to a review by the Commissioner of a favorable decision by the Primary Examiner on a motion to dissolve alleging nonpatentability of the issue either on direct appeal or upon petition for the exercise of his supervisory authority. While section 4904, Revised Statutes, gives the Commissioner the right to determine when an interference exists, this authority is delegable, and when it is delegated to the Primary Examiner and he makes a favorable decision thereon such decision will be reviewed only in an extraordinary case. Hawkins v. Coleman v. Thullen, 90. 19. RENEWAL OF MOTION-NOTICE.-Rule 153 provides that reasonable notice of all motions must be given and that a motion will not be entertained in the absence of proof of service of such notice. The same reason exists for requiring notice of the renewal of a motion as of the motion itself, and the mere request at the final hearing and in a brief filed at final hearing is not such notice. Dyson v. Land v. Dunbar v. Browne, 99.

20. MOTION TO DISSOLVE - IRREGULARITY IN DECLARATION. -The Examiner suggested to M. two claims which were the same as two of K.'s claims, except that the term "supporting member" was substituted for "attaching-bracket," but did not suggest them to K. After M. made the claims the interference was declared with these claims as two counts of the issue. Held that this was an irregularity in the declaration of the interference, as Rule 96 clearly contemplates that the issue shall be in terms of the claims actually made by both parties or which they have had an opportunity to make. McBride v. Kroder, 101.

21. RIGHT TO MAKE CLAIMS A QUESTION OF PRIORITY-APPEAL TO COURT.-The right of a party to make a claim goes to the foundation of an interference, and a judgment of a Primary Examiner denying that right may be appealed to the Court of Appeals of the District of Columbia, and that court will take jurisdiction to determine that question "as an ancillary question to be considered in awarding priority of invention." *United States of America, ex rel. The Newcomb Motor Company v. Moore, Commissioner of Patents, 332. 22. MOTION TO DISSOLVE-EXAMINER'S DECISION FINAL UNLESS APPEAL PROSECUTED.-Where a Primary Examiner on a motion to dissolve decides that one of the parties has no right to make the claims of an interference issue and such party, after filing an appeal from such decision, fails to prosecute the same and abandons it, such decision becomes final and binding upon the parties and precludes the subsequent ex parte consideration of the same question. *Id.

2

23. SAME-SAME-SUPERVISORY AUTHORITY OF COMMISSIONER.-Upon a motion to dissolve it was held that one of the parties had no right to make the claims in issue, and the appeal from that decision was abandoned; but subsequently in the ex parte prosecution of that party's case it was held by the Examinersin-Chief that said party had a right to make the identical claims, and the interference was redeclared. The Commissioner thereupon set aside the ex parte decisions and directed a rehearing of the case before the Examiners-inChief inter partes. Held that the decision in the interference was res adjudicata and that the Commissioner was without authority to direct the readjudication in such ex parte application of the question whether said party had a right to make the identical claims of the issue of the interference. *Id. STATUTORY BAR TO ONE PARTY AN EX PARTE QUESTION.-The question whether one of the parties to an interference proceeding is debarred from receiving a patent by reason of his having secured a foreign patent for the same invention is a question for ex parte consideration after the termination of the interference. Gueniffet, Benoit, and Nicault v. Wictorsohn, 108. 25. PRIORITY-RIGHT TO MAKE THE CLAIMS.-The issue as interpreted in the light of the specification of the party first making the same is limited to an improved means for protecting the necessary joints in conductors for hightension currents of electricity. The invention of the other party is an improvement in insulating-conductors, his plan of insulation at the joints being the same as along the entire length of the conductor. Held that the latter has no right to make the claim, the resemblance of the two devices being accidental rather than real. *Viele v. Cummings, 362.

26. KNOWLEDGE OF THE INVENTION IN A FOREIGN COUNTRY-INTRODUCTION INTO THE UNITED STATES.-Appellants built in a foreign country a machine embodying the invention in issue, which was explained to an agent who came to this country. Held that even if this agent remembered what was explained to him such knowledge on his part, in the absence of disclosure to others or reduction to practice by himself within a reasonable time, would

not be equivalent to an introduction of the invention into this country. *Gueniffet, Benoit, and Nicault v. Wictorsohn, 367.

27. APPEAL-MOTION TO TAKE TESTIMONY-SHOWING.-No appeal lies from a favorable decision of the Examiner of Interferences upon the sufficiency of the showing in support of a motion to take testimony on the question of the operativeness of another party's device. Martin v. Goodrum v. Dyson v. Lattig and Goodrum, 135.

-

28. TESTIMONY-ADMISSIBILITY OF TESTIMONY GIVEN IN PRIOR INTERFERENCE. In an interference between H. and T. a witness testified to certain facts. Later, in an interference between H. and W., he denied any knowledge of these facts. Held that T. and W., not being privies, the testimony in the former interference cannot be admitted in the latter except for the purpose of discrediting the witness. Hewitt v. Weintraub, 140. 29. Burden of Proof-Discretion of the Examiner of INTERFERENCES.—It is well settled that the question of placing the burden of proof rests in the discretion of the Examiner of Interferences, and his decision on a motion to shift the burden of proof will be reviewed only in a clear case of an abuse of that discretion. Young v. Townsend v. Thullen, 147.

30. APPEAL FILED AFTER EXPIRATION OF LIMIT OF APPEAL WHEN ENTERTAINED.-An appeal filed after the expiration of the limit of appeal will be entertained only in very unusual and extraordinary circumstances. McKeen v. Jerdone, 148.

31. ORIGINALITY-DISCLOSURE MUST INCLUDE IDEA of Means.-The communication of an idea of the desirability of accomplishing a certain result, without a disclosure of the means to be employed, cannot be regarded as a communication of an invention. *Fenner v. Blake, 404.

32. REHEARING TO ADMIT NEWLY-DISCOVERED

EVIDENCE-APPEAL.- The reopening of a case for the introduction of newly-discovered evidence is always a matter for the trial court and in its discretion, and the Court of Appeals of the District of Columbia will not review the decision of the Commissioner of Patents upon this point, except where it appears that there has been an abuse of discretion. *American Stove Company v. Detroit Stove Works et al., 407. 33. ORIGINALITY - EVIDENCE.-W., who was a manufacturer of cluster-sockets, entered into a contract with D., whereby he was to furnish such sockets to D. and to no other manufacturer, and D. was to push the sale of the same. There was a demand for an improved form of socket, and W. constructed such a device embodying the issue in August, 1902, which he testified he showed to D. Held that this testimony in view of the relation between the parties and in the absence of an unequivocal denial by D. is sufficient to establish such disclosure. *Weeks v. Dale, 412.

34. REOPENING TO INCLUDE Earlier ApplicaTIONS-RES ADJUDICATA.-Where an interference had been decided adversely to C. upon the ground that although first to conceive he had concealed the invention and had thereby lost his rights to a patent under the doctrine stated in Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147,) and it is alleged that it was found after the termination of the interference that an earlier application by C. disclosed the invention in issue, Held that such circumstances do not justify the reopening of the interference to include said earlier application, since the alleged newly-discovered evidence is such as might have been utilized in the original interference, and that for this reason the case is res adjudicata under the doctrine stated in Blackford v. Wilder (C. D., 1907, 491; 127 O. G., 1255,) and Horine v. Wende (C. D., 1907, 615; 129 O. G., 2858.) Cutler v. Hall, 157.

35. ORIGINALITY-ADMISSION OF PRIOR INVENTION BY ANOTHER.-The testimony of a party to an interference that he devised a removable metallic plate for a specified purpose after he had received the suggestion of a third party through the opposing party of a removable plate covered with cloth for the same purpose is equivalent to an admission that the opposing party was first in possession of the invention in issue covering a removable surface or plate broadly and also a metallic removable plate for such purpose. *Bossart v. Pohl, 428. 36. TESTIMONY-LETTERS ROGATORY.-The fact that a witness is not an employee of the party calling him and cannot leave his employment for a sufficient time to come to the United States to testify is sufficient to warrant the issuance of the letters rogatory to take his testimony in a foreign country. Lowry v. Ruping, 165.

37. 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. Smith v. Foley v. Anderson v. Smith, 210.

38. 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. Id.

39. PRIORITY.-The testimony considered and Held to afford no ground for disturbing the award of priority to Foley and Anderson. *Smith v. Foley et al., 501.

40. REDUCTION TO PRACTICE-LACK OF DILIGENCE.-Where it appears that Kinsman installed mechanism embracing part of the issue in 1890 which was experimental in its nature and found to be unsuccessful, and immediately thereafter unsuccessfully tested a second experimental device, and in 1892 and 1893 installed a system embodying the invention which after being used for several months was taken out and discarded, and no further evidence of activity on the part of Kinsman was shown prior to the filing of his application in December, 1903, which was subsequent to the time Kintner entered the field and reduced the invention to practice, and during this time Kinsman was active in experimenting with other forms of invention, Held that he was lacking in diligence. *Kinsman v. Kintner, 508.

41. SAME-SAME.-The object of the patent laws is to foster and protect invention for the universal benefit of mankind, and while every presumption will be resolved in favor of the inventor who delays filing an application until he has perfected his invention, the object of the law would be lost to view should we permit the displacement of an inventor who has given the world the benefit of his discovery by one who has permitted his invention to lie dormant for a decade. *Id.

42. APPEAL TO COURT ON PRIORITY-PATENTABILITY NOT CONSIDERED.-The question of the patentability of an invention is not one for determination by the court of appeals upon an appeal from a decision on priority. * Mell v. Midgley, 512.

43. SAME-REGULARITY OF COMMISSIONER'S ACTION.-After an adverse decision by the Primary Examiner upon a motion to dissolve decisions on priority were rendered by the Examiner of Interferences and the Examiners-in-Chief

and appeal was taken to the Commissioner of Patents from the latter decision. Pending this appeal a successor of the Primary Examiner requested jurisdiction of the interference for the purpose of considering the patentability of the issue. Such request was granted, and the Primary Examiner dissolved the interference upon the ground that the issue was not patentable. Upon petition to the Commissioner the decision of the Primary Examiner was set aside and the interference was restored to its prior condition of appeal to the Commissioner on priority. On appeal to the court of appeals from the decision of the Commissioner Held that the regularity of the action of the Commissioner in setting aside the decision of the Primary Examiner dissolving the interference is not a question for the consideration of the court. *Id.

44. 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. * Moore v. Hewitt, 516.

45. ORIGINALITY-DELAY IN FILING APPLICATION.-Where the question is one of originality and the relation of employer and employee exists between the parties, the fact that the junior party, who was the employee, did not file his application till nearly a year after he knew of the issuance of the senior party's patent and has given no excuse for such delay justifies resolving any doubt as to who was the originator of the invention against him. *McKillop. v. Fetzer, 526.

46. PRIORITY-DILIGENCE.-Where the inventor of an apparatus for supporting insulating overhead-trolley conductors which are utilized for supplying high-voltage energy to high-speed alternating-current electric railways is not in a position to make an actual test of his invention, and the company which employs him is likewise not in a position to make such a test, he cannot be held lacking in diligence in reducing his invention to practice between March, 1904, and December 2, 1904, where he approached a railway company in March and endeavored to have his invention tried out, ordered an insulator which was one of the essential features of the apparatus and received the same in October, procured a visit from the officers of another electric railway company in September, and early in December attached a crude apparatus to the fence in the factory yard to see how it would appear and operate. *Mead v. Davis and Varney, 532.

47. ADMISSION OF TESTIMONY FILED LATE-APPEAL.-No appeal will be entertained from a decision of the Examiner of Interferences granting a motion to admit testimony the printed copies of which were not filed within the time required by the rule. Blackmore v. Hall, 248.

48. APPEAL ON PRIORITY-PATENTABILITY OF ISSUE.-Where in an interference in which the junior party is defeated on the record the Primary Examiner held the issue patentable and the Examiners-in-Chief refused to make a recommendation that the same is not patentable, there is no such manifest error as will warrant the consideration of this question upon appeal on priority under the Commissioner's supervisory authority Moffatt v. Weiss, 252 49. ORIGINALITY-EVIDENCE- ALLEGED DISCLOSURE TO OPPOSING PARTY THROUGH AGENT.-Where the junior party testified that he disclosed the invention to the senior party, through the latter's agent, which is denied by the senior party, the failure of the senior party to call the agent to corroborate his testimony does not raise a presumption in favor of the junior party of sufficient force to dispense with proof to corroborate his allegations. Brown v. Fessenden, 255.

« iepriekšējāTurpināt »