Cleveland's death in June, 1908, and after the applicant had filed a letter from Cleveland, dated October 7, 1900, authorizing the use of his name, but not his portrait. The decision in that case, therefore, seems to be that the fact of Cleveland's having been President precluded the registration of his portrait-in other words, that the picture of an ex-President was unregistrable, not because of any rights of any individual, but because it is against public policy, presumably because offensive to good taste, to use the portrait of a one-time chief officer of the country as a trade-mark.

The act of February 20, 1905, states in section 5 all of the grounds upon which the Commissioner is authorized to refuse registration. I find there no ground upon which to refuse the registration of Jefferson's portrait unless in some way, not here suggested, the use of Jefferson's picture would be so offensive to public taste as to bring it under the designation of "scandalous matter." From the history and wording of the law I can find no authority for the Commissioner to pass upon the question of public policy in any other sense, for it is to be presumed that the Congress fully considered the matter of public policy when it interdicted the registration of the portraits of living persons, manifestly because that might invade property rights of such persons. A dead man, however, has no property rights.

This provision that the portrait of a living individual may not be registered without his written consent seems to have been put into the statute during its discussion in Congress, for neither of the bills originally proposed by the committee which drew up the law mentions any such provision. (Report of the Commissioners for Revising the Patent and Trade-Mark Law, 1902, pp. 66, 83, and 130.) In Mr. Greeley's report of his own draft of the bill he said (p. 130) that it was the purpose of this section of the law

to provide for the registration of all marks which would or could, under the law as construed by the Supreme Court, be held to be capable of being appropriated as the exclusive property of the person using them as trade-marks. There was no reason at common law for excluding the portrait of a dead ex-President.

The Congress instead of casting the law in the form of a permissive law, as recommended by the majority of the committee, took pains to cast it in the form of a restrictive law, saying, in effect, that no mark should be refused registration unless in certain specified cases. Because a restrictive law must be construed against the officer governed thereby it seems improper to imply power to refuse registration in any other cases than those specified in the law. It was quite possible under the circumstances of that case that the then Commissioner considered the registration of the portrait of ex-President Cleveland as a trade-mark for cigars to be so offensive to public taste as to amount to scandal; but I do not see how it could be held that

the applicant's trade-mark here proposed to be registered is scandalous matter, and the Examiner's ruling must therefore be reversed. So far as this decision is out of harmony with that in ex parte Banner Cigar Manufacturing Company (C. D., 1909, 9; 138 O. G., 528) the position there taken is overruled.

1.

EX PARTE WILLIAMS.

Decided March 11, 1916.

245 O. G., 277.

DISCLAIMERS-ASSERTING THE CLAIMS IN AN APPLICATION.

The statute that provides for disclaimers does not allow a patentee to disclaim an invention claimed in a patent for the purpose of securing the claims covering that invention in a pending application, as it would, in effect, extend the monopoly which was granted by the first patent.

2. REJECTION-DOUBLE PATENTING-NOT OVERCOME BY DISCLAIMER.

An applicant cannot overcome a rejection on the ground of double patenting by offering to cancel the conflicting claims in his patent.

ON PETITION.

POT-HEAD CONNECTOR.

Mr. A. Miller Belfield for the applicant. WHITEHEAD, Assistant Commissioner:

This is a petition that the Examiner be directed to allow certain claims in this application, subject to the disclaimer of corresponding claims in applicant's Patent.

It appears that certain claims were rejected upon the ground of double patenting and that applicant has presented an amendment containing the three claims of the patent, with a request for their allowance and a statement that upon their allowance a disclaimer of these claims in the patent would be filed.

It is argued that a patentee is not limited by the statute to disclaiming only that of which he was not the original or first inventor, and attention is called to the case of Sessions v. Romadka, (C. D., 1892, 382; 59 O. G., 939; 145 U. S., 29,) in which a disclaimer was permitted

to avoid the effect of having included in the patent more devices than could properly be made the subject of a single patent.

The statute provides for the disclaimer by a patentee who without fraudulent intention has claimed more than that of which he was the original and first inventor, and while it has been construed as noted in the case above cited it has certainly never been construed to allow an applicant to disclaim an invention for the purpose of putting claims covering that invention in another application. The obvious

effect of such a practice would be to extend the monopoly which was granted by the first patent.

It is argued that the claims should be allowed as requested, since the Office was at fault in not calling the applicant's attention to the fact that claims for substantially the same subject-matter had been presented in the two applications and notifying him that they could be allowed in only one of the applications.

While it would have been better practice for the Examiner in the action of March 20, 1914, to have stated that the claims in question were for substantially the same subject-matter as that claimed in the other application which had been found allowable, the attorney was primarily at fault in not preserving a proper line of division between the two applications, and the fact that the Office did not call attention to this is no ground for allowing in this application claims which have been standing in the patent for more than a year. Whether the other claims were properly rejected on the ground of double patenting is a question which is reviewable in the first instance on appeal to the Examinersin-Chief. If the rejection was proper, applicant's remedy, if any, would seem to be in a reissue of the patent.

Record reviewed and priority awarded to Dunkley. APPEAL from Examiners-in-Chief.

PEELING OF FRUITS AND VEGETABLES.

Mr. Geo. H. Strong and Mr. T. W. Fowler for Monte.
Messrs. Chappell & Earl for Dunkley.

EWING, Commissioner:

This is an appeal by Monte from a decision by the Examiners-inChief, one member dissenting, affirming the decision of the Examiner of Interferences awarding priority of invention to Dunkley on the following issues:

1. The process herein described of peeling fruits and vegetables, which process consists in subjecting the fruit or vegetable to a bath of disintegrating solution for the purpose of loosening the skin thereof; and then passing the fruit into the range of action of hydraulic sprays of sufficient force to remove the loosened skin.

2. The process herein described of peeling fruits and vegetables, which process consists in subjecting the fruit or vegetable to the action of a disin

tegrating solution having the capacity to disintegrate and loosen the skin thereof, and then subjecting the fruit or vegetable so treated to the action of fluid sprays and substantially coördinately therewith imparting motion to the fruit or vegetable.

The history of this case is such as to indicate that it presents a very close point. In the interference Dunkley v. Beekhuis, involving apparatus for practising the process which constitutes the issues herein, a motion to dissolve was made by Beekhuis on the ground that Dunkley was not entitled to make the claims. This motion was denied by the Primary Examiner, and at final hearing the Examiner of Interferences came to the opposite conclusion, awarding priority to Beekhuis. The Examiners-in-Chief reversed the Examiner of Interferences, one member dissenting. The Commissioner reversed the Examiners-in-Chief, and the court of appeals reversed the Commissioner. (C. D., 1913, 362; 190 O. G., 267; 39 App. D. C., 494.) Monte's patent is one of two issued upon the same date. The other one, numbered 858,094, being for apparatus which is generally similar to that shown in No. 858,095, embraces a conveying-belt instead of a shaking-table. The difference between the two machines is probably not very important in view of the speed-about one thousand to fifteen hundred feet a minute-at which the belt is driven. (Copy of evidence, Dunkley Co. v. California Canneries Co., p. 9.)

Moreover, it is noted that the defendant's apparatus involved in the suit cited, while embracing a traveling belt, was also provided with means for thumping the belt, so as to agitate the fruit thereon.

But whatever difference there may be between the shaking-table and the belt operates against the contention of Monte, because the Patent No. 858,095 shows the shaking-table. While it is true that this shaking-table is old in fruit-graders, nevertheless it is obvious that it would tend to agitate the fruit in substantially the same manner as the apparatus illustrated in the patent to Beekhuis. In fact, it is not understood that the attorney for Monte attempts to draw any distinction between these apparatuses. (See supplemental brief on behalf of appellant, filed Dec. 24, 1915, p. 1.)

Nor is there any difference between the counts of this interference and count 4, for example, of the Dunkley v. Beekhuis interference, excepting that one is for the method and the other for the apparatus. Whether there is any patentable difference between them I am not at this time considering.

I am forced to the conclusion, after considering everything which has been presented to me, that the decision of the court of appeals in the Dunkley v. Beekhuis interference is controlling in this interference.

The Examiners-in-Chief are sustained.