he has performed with one cylindrical valve in an internal-combustion engine what heretofore has required two. This seems to be invention of the first order. The only question is whether the appealed claims are specific enough to include a new characteristic feature of applicant's valve to distinguish it from the prior art.

These claims do not include the compound motion referred to; but just where invention in this case begins to split off from the prior art is exceedingly difficult to express. The claims call for a "cylindrical slide valve." The Turcot et al. French patent has two cylindrical slide-valves, and of course if it has two it has one; but neither of the Turcot et al. valves C or D controls both the inlet and outlet ports. One of the Turcot et al. valves controls the inlet and the other the outlet port; but the ground of rejection has been that in view of such valves as that shown in Herreshoff there would be no invention in closing both the inlet and outlet valves of the Turcot et al. patent with one cylindrical valve. This might be true if the cycles of opening and closing the valves in, say, a four-stroke-cycle type of internal-combustion engine were not so different from the steam-engine, say, of the Herreshoff or Nitcher type.

In such an internal-combustion engine a downward stroke of the piston acts to draw in a charge of gas. Then the inlet-opening must be open and the exhaust-opening closed. On an upward or compression stroke of the piston both inlet and exhaust openings must be closed. On the second downward stroke of the piston following an explosion both inlet and exhaust openings must be closed, and, finally, on the second upward stroke of the piston, when the gases are rejected, the exhaust-openings must be open and the inlet-openings must be closed.

No such opening and closing of the valves in the Herreshoff or Nitcher engines could be so timed, and certainly these engine-valves do not suggest how to convert the Turcot et al. double cylindrical valves into a single cylindrical valve.

When legitimate combination claims, such as those appealed, are rejected on two or more references, the trend of the best authorities indicates that at least one of the references ordinarily should show the general combination claimed. This the Turcot et al. patent does. Then if the specific features claimed and shown by the other reference or references may be substituted without such changes as require invention and perform the function intended the two references may be legitimately combined against the claim; otherwise not. If the Herreshoff or Nitcher valve were substituted for the Turcot et al. valve structure, a device would result which could not perform the function of an internal-combustion engine.

Legitimate combination claims are for constructions or mechanisms for performing a function, and it is improper to reject them on ideas

extracted from various references unless those ideas are accompanied by constructions that may be put together without so changing them as to require invention to adapt them to perform the desired result.

In determining the patentability of a claim over features found only in a plurality of references it is necessary to consider the structural differences specified in the claims, as well as their functional difference or result. If the structures of the several references cannot be combined without the exercise of invention, even though the result is old, the claim should be allowed. If the structures of the references may be combined or substituted one for the other and the combined function or result is new, the claim should be allowed. It is only when both the structural features found in the references may be combined without invention to meet the structure called for by the claim and the function or result involves no invention that the claim should be rejected.

Applying these rules to claim 27, the broadest of the appealed claims, it is not legitimately anticipated by the references and may be allowed.

Claim 28 is drawn on the same general lines as claim 27, with the addition of means for cooling the fixed cylinder, and is regarded patentable over claim 27 and the references.

Claims 29 and 30, besides specifying the features of claim 27, call for means for cooling the cylindrical casing outside the slide-valve. Applicant does not seem to show any such means and certainly does not describe any such means. The history of these claims is that they were suggested from another application which clearly shows and describes such means. Possibly the inlet 7 of applicant might be called

means for cooling the cylindrical casing outside of the slide valve,

but it is not so described and is ordinarily not regarded as a cooling

means.

It must be held, therefore, that applicant is not entitled to make claims 29 and 30. Applicant has presented four claims covering very much the same construction as his appealed claims, but somewhat more limited. He should be allowed to substitute his claims numbered 27 and 28 for present claims 27 and 28 or add said claims to his present claims, if he so desires.

The decision of the Board of Examiners-in-Chief denying patentability to claims 27 and 28 is reversed. Their decision denying claims 29 and 30 is affirmed.

STEEL AND STEEL v. MYERS.

Decided July 22, 1914.

205 O. G., 1021.

1. INTERFERENCE-PROOF OF FOREIGN APPLICATIONS.

If an applicant who is involved in interference has stated in the oath to his original application that he filed the application in a foreign country, that should be taken, in my opinion, as establishing prima facie that the foreign application was filed by him or with his knowledge and consent. If, however, the original oath does not state that the foreign application had been filed, but the allegation is made in a subsequent oath or in the preliminary statement, the applicant should, in view of conflicting affidavits, be given the benefit of the filing of the foreign application only upon a stipulation of the parties or where it is established by duly taken testimony that he was in fact the party who filed the foreign application or that it was filed with his knowledge and consent.

2. SAME-SAME-BENEFIT OF FOREIGN APPLICATION.

The Examiner of Interferences upon the filing of a proper motion, accompanied by a certified copy of the foreign application, shall in cases falling within the above ruling give the party filing the same the benefit of the foreign application if in his opinion the invention in issue is disclosed therein.

ON REFERENCE.

BLOWPIPE OUTFIT.

Messrs. Wilkinson, Fisher, Witherspoon & Mackaye and Messrs. Wilkinson, Giusta & Mackaye for Steel and Steel.

Mr. E. G. Siggers for Myers.

EWING, Commissioner:

The Examiner of Interferences has referred this case, with a request for instructions as to the practice to be followed in fixing the burden of proof where the benefit of a foreign application is claimed. by one or more of the parties under the provisions of section 4887 of the Revised Statutes.

It appears that it has been the practice to disregard the foreign application in fixing the burden of proof and to require the applicant, in order to obtain the benefit of such foreign application, to establish either by testimony or by stipulation that he is the same person that filed the foreign application, and, if such foreign application was filed in the name of another, that it was done with his knowledge and consent.

The Examiner of Interferences points out that this practice occasions considerable cost and delay, since if the parties will not stipulate these facts it is necessary, if the applicant resides in a foreign country, to take testimony abroad, which requires the filing of interrogatories and a deposit with the State Department and the suspension of the taking of testimony in this country. It does not appear that in any case it has been established that ar applicant was not entitled to the

benefit of the foreign application as claimed if, as a matter of fact, it disclosed the invention. This latter question is one which is determined not by the testimony but by a comparison of a certified copy of the original application with the application in the interference.

In the case of Raulet and Nicholson v. Adams (C. D., 1905, 55; 114 O. G., 1827) the Primary Examiner had shifted the burden of proof in view of the fact that the filing date of the foreign application referred to in Adams's oath was prior to the filing of Raulet and Nicholson's United States application. The Commissioner held that this was not a question to be considered by the Primary Examiner and remanded the case to the Examiner of Interferences. The record of that case shows that Adams was made the junior party, but was given the benefit of his foreign filing date in view of his testimony and that of his attorney that he was the same Daniel B. Adams who filed the foreign application.

This question was raised in the cases of Greenbaum v. Barker and Jeapes (98 MS. Dec., 425) and Braun v. Wahl. (C. D., 1913, 78; 189 O. G., 254.) In the former case it was held that it would be necessary for the applicant to establish by proper proof that he was entitled to the benefit of the filing of his foreign application, which had been filed by his assignee. In the latter case the Examiner of Interferences had refused to shift the burden of proof, and a petition from that action was dismissed on the ground that no appeal lay from such a decision of the Examiner of Interferences and that the question could be raised at final hearing.

Section 4887 of the Revised Statutes reads in part as follows:

An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law, affords similar privileges to citizens of the United States shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country, provided the application in this country is filed within twelve months in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes, and within four months in cases of designs, from the earliest date on which any such foreign application was filed.

Article 4 of the International Convention for the Protection of Industrial Property, as revised at Washington June 2, 1911, with relation to the rights of priority in the contracting countries, reads in part as follows:

(d) Whoever shall wish to avail himself of the priority of an anterior filing, shall be required to make a declaration showing the date and the country of this filing. Each country shall determine at what moment, at the latest, this declaration must be executed. This information shall be mentioned in the publications issued by the competent Administration, particularly on patents and

the specifications relative thereto. The contracting countries shall require of one who makes a declaration of priority the production of a copy of the application (specification, drawings, etc.) previously filed, certified to be a true copy by the Administration which shall have received it. This copy shall be dispensed from any legalization. It may be required that it be accompanied by a certificate of the date of filing, issuing from this Administration, and of a translation. Other formalities shall not be required for the declaration of priority at the time of the filing of the application. Each contracting country shall determine the consequences of the omission of the formalities prescribed by the present article, unless these consequences exceed the loss of the right of priority.

(e) Later other justifications can be demanded.

If an applicant who is involved in interference has stated in the oath to his original application that he filed the application in a foreign country, that should be taken, in my opinion, as establishing prima facie that the foreign application was filed by him or with his knowledge and consent. If, however, the original oath does not state that the foreign application had been filed, but the allegation is made in a subsequent oath or in the preliminary statement, the applicant should, in view of conflicting affidavits, be given the benefit of the filing of the foreign application only upon a stipulation of the parties or where it is established by duly taken testimony that he was in fact the party who filed the foreign application or that it was filed with his knowledge and consent.

The question whether an interferant is entitled to the benefit of his foreign application should be raised before the Examiner of Interferences rather than before the Primary Examiner, since it is one of evidence, as stated in Raulet and Nicholson v. Adams, supra, and at the time the interference is declared copies of the foreign application are not usually on file.

The Primary Examiner should therefore prepare the notices of interference in accordance with the date of filing of the applications in this country; but the Examiner of Interferences upon the filing of a proper motion, accompanied by a certified copy of the foreign application, shall in cases falling within the above ruling give the party filing the same the benefit of the foreign application if in his opinion the invention in issue is disclosed therein.

W. A. LAWRENCE & SON V. THE LICKING CREAMERY COMPANY.

Decided July 3, 1914.

206 O. G., 589.

1. TRADE-MARKS-REPRESENTATION OF A Cow FOR CHEESE-VALID.

"I am inclined to hold that if Lawrence & Son can clearly establish priority of adoption of the representation of a cow as a trade-mark for cheese and show continuous use from 1876 to the present time such mark should be held valid. Such long-continued use by a user of a trade-mark should resolve all doubt as to its validity in favor of the user."