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ON REFERENCE.

TRADE-MARK FOR CHILL COMPOUND, COUGH COMPOUND, AND CORN COMPOUND.

Mr. Edwin M. Hulse and Messrs. Steuart & Steuart for the applicants.

TENNANT, Assistant Commissioner:

This case has been referred to me by the Examiner of Trade-Marks for consideration of applicant's request that the substitute papers filed August 9, 1909, be accepted and the name of the applicant thereby changed from Certain Cure Company to C. C. C. Co.

It appears that the application was originally filed by the Certain Cure Company and that objections were raised to registering the mark on the ground that the name of the company, Certain Cure Company, forms a distinctive part of the labels filed in the application and as applied to the goods claimed would be a misbranding, since any one inspecting the labels or buying the goods with the labels thereon would be led to believe that the goods were a certain cure.

In view of this objection the substitute papers above referred to were filed, in which it was set forth that the C. C. C. Co. was the owner of the mark and that the Certain Cure Company was its predecessor in business. It appears also from the statement that the individuals composing the Certain Cure Company are the same as those composing the C. C. C. Co.

It is not believed that these facts justify the entry of the paper filed August 9, 1909. Sections 10 and 11 of the Trade-Mark Act provide for the assignment of a trade-mark and the application for the registration of the same and for the issuance of the certificate of registration to the assignee. No such assignment has been filed in the case; nor if it had would it warrant the permission of the proposed change in the name of the applicant. The fact that the same individuals compose the two firms does not alter the situation.

The papers filed August 9 cannot be treated as a new application and the fee filed with this application be transferred to the same, for the reason that no mistake was made in filing this application such as is contemplated by Rule 72 of the Trade-Mark Rules, under the provisions of which the fee may be returned. As pointed out in ex parte Olsen, (C. D., 1902, 432; 101 O. G., 2079:)

The mistake which will warrant a return of money is not a stake of judgement in supposing that the application filed will be valid and allowable, but a mistake in making the payment itself.

VON RECKLINGHAUSEN V. DEMPSTER.

Decided June 2, 1909.
148 0. G.,

277.

1. INTERFERENCE-PRIOBITY-DIVISIONAL APPLICATION_ENTITLED TO DATE OF

ORIGINAL AS CONSTRUCTIVE REDUCTION TO PRACTICE. Where an application involved in interference is a division of an earlier application which had not been abandoned or forfeited at the time such divisional application was Alled, Held that the applicant is entitled to a constructive reduction to practice as of the date of the earlier application, even though this earlier application contained no claim to the invention in issue, (citing McBerty v. Cook, (C. D., 1900, 248; 90 O. G., 2295;) Phillips v. Sensenich, (C. D., 1908, 391; 134 O. G., 1806,) and Lotz v. Kenny, (C. D.,

1908, 467; 135 0. G., 1801.) 2. SAME-SAME-ABANDONMENT OF INVENTION.

In an interference between D. and B. & S. involving a species different from that involved in the present interference it was held that D. had forfeited his rights in favor of B. & S. Held that the testimony in the earlier interference has no bearing on the question of abandonment of the invention in issue in the present interference.

APPEAL from Examiners-in-Chief.

VAPOR ELECTRIC APPARATUS.

Mr. Charles A. Terry for von Recklinghausen.

Mr. A. G. Davis for Dempster. (Mr. A. D. Lunt of counsel.) MOORE, Commissioner:

This is an appeal by von Recklinghausen from the decision of the Examiners-in-Chief awarding priority of invention to Dempster.

The invention in issue relates to mercury-vapor lamps, and comprises means whereby the mercury which is normally contained in pockets forming electrodes at the ends of the lamp is caused to flow temporarily from one pocket to the other when, by reason of the breaking of the current of mercury, an arc is struck which initiates the action of the lamp.

The invention is stated in the issue in nine counts, of which the following is a sufficient illustration of the matter in controversy:

1. A vapor device comprising a movable container, normally separated electrodes or contacts in said container and included in the main operating-circuit of the device, one of such electrodes being a conducting liquid, and automatic means for moving the container so as to make and break conductive connection between the said electrodes.

Von Recklinghausen is a patentee, his patent having been granted July 18, 1905, No. 794,745, upon an application filed December 13, 1904. Dempster's application involved in this interference, No. 274,212, was filed August 14, 1905, and is a division of an earlier application, No. 205,107, filed April 27, 1904. There appears to be no serious dispute concerning the facts of the case, the question at issue being whether as a matter of law Dempster is entitled to the date of his original application as the date of his constructive reduction to practice of the invention.

It was held by the Examiner of Interferences, and it is not disputed, that Dempster has established conception of the invention as early as the summer of 1901. Von Recklinghausen does not claim to have conceived the invention until October, 1903, or to have reduced the invention to practice until October, 1904, which is subsequent to the date of filing of Dempster's original application. If, therefore, Dempster is given the benefit of the date of filing of his original application for constructive reduction to practice, he must prevail, since he would then be first to conceive and first to reduce the invention to practice.

It is contended in behalf of von Recklinghausen that Dempster's original application did not contain any claim to the invention in issue, that the decision in a prior interference between Dempster and Bastian and Salisbury shows that Dempster had abandoned this invention, and that in view of these circumstances an estoppel exists against Dempster, since he did not present the claims forming the issue of this interference until after the patent to von Recklinghausen had been granted. It is also urged that in any event Dempster is not entitled to any earlier date of the invention in issue in this interference than the date upon which he first made claim to said invention.

This contention is believed to be untenable. The drawings of Dempster's parent application, No. 205,107, and those of his later divisional application, No. 274,212, are identical in all respects, and the specification of his divisional application is a verbatim copy of his original application, the claims alone differing from those originally presented. In both applications a single apparatus is disclosed in Figure 1, two methods in which this apparatus may be used being diagrammatically shown in Figs. 2, 3, and 4, 5 of the drawings. In the form disclosed in Figs. 2 and 3, to which the original claims were directed, the lamp is maintained normally in a horizontal position, so that the pockets forming electrodes are normally connected by the mercury and means are provided whereby the lamp is tilted to separate the mercury between the electrodes, thus causing an arc to be struck, the lamp being maintained while active in an inclined position. In the form shown in Figs. 4 and 5 the lamp is normally maintained in an inclined position and is caused by means of the solenoid to assume a horizontal position upon the initial passage of the current, thus causing the mercury to flow from one electrode to the other, whereupon the solenoid is short-circuited and the lamp returned to its normally inclined position, thus striking the arc. In this case, also, the lamp when operating is maintained in an inclined position. In the preamble to Dempster's original specification it is stated thatmy present invention relates to certain improvements in means for starting and operating mercury-vapor apparatus such for example as mercury-vapor lamps, rectifiers, or the like. In carrying my invention into practice I mount the lamp or other device so as to be carried on a pivot and provide electromagnetic means for tilting the device on this pivot in order to start the same. The features of novelty characteristic of my invention are pointed out in the appended claims.

It is contended in behalf of von Recklinghausen that, inasmuch as Dempster refers to his invention as that “pointed out in the appended claims,” which were limited to the form first described, and in view of the holding in the prior interference that Dempster had so concealed the invention as to subordinate his right to a patent to that of Bastian and Salisbury, Dempster had, in fact, disclaimed and abandoned the present invention.

It is true that in the interference between Dempster and Bastian and Salisbury it was held that Dempster, who was first to conceive, but last to file his application, had, by reason of concealment of the invention, forfeited his claim thereto in favor of his more active rival. In the present case, however, Dempster was not only first to conceive the invention, but he had also filed his application in the Patent Office prior to the earliest date which von Recklinghausen claims for actual reduction to practice of the invention and also prior to the date upon which the latter filed his application. The issue of the present interference does not cover the same species as that constituting the issue of the interference between Dempster and Bastian and Salisbury, and the testimony of the latter case can therefore have no effect on the present interference.

The specification and the drawings of Dempster's original application clearly disclosed the invention in issue in this interference. The original application had neither been forfeited or abandoned at the time the divisional application, No. 274,212, was filed. During the pendency of the original application Dempster was entitled to amend the same, and inasmuch as he could not be permitted under the rules of the Patent Office to embody claims to the second species shown on Figs. 4 and 5 in the original application he was entitled to file a divisional application containing such claims, and this he did. The original specification, in my opinion, clearly contains a sufficient assertion of inventorship to both species disclosed therein to entitle Dempster to the date of filing of the original application for any claim which he subsequently presented either in the original case or in the divisional application. The case in my opinion does not fall within the ruling of Christensen v. Noyes, (C. D., 1900, 212; 90 O. G., 227; 15 App. D. C., 94) or Bechman v. Wood, (C. D., 1899, 459; 89 0. G., 2462; 15 App. D. C., 484,) as contended by the appellant, but rather within the ruling in the decisions McBerty v. Cook, (C. D..

1900, 248; 90 O. G., 2295; 16 App. D. C., 133;) Phillips v. Sensenich, (C. D., 1908, 391; 134 O. G., 1806; 31 App. D. C., 159,) and Lotz v. Kenny, (C. D., 1908, 467; 135 0. G., 1801; 31 App. D. C., 205.)

In McBerty v. Cook, supra, the Court stated in part, in distinguishing that case from Bechman v. Wood, supra:

The contention is that Cook's original application of July 29, 1896, contained no claim whatever to the invention of the issue; that not until five months thereafter and after the rejection of his claims in part did he amend by setting up the claims of the McBerty patent now in the issue, and that consequently he is now estopped or barred to claim priority of Invention thereof as against McBerty's subsequent application for reissue.

In the first place it may be remarked in passing that the attitude of the parties is quite different from that shown ia Bechman v. Wood. McBerty did not come into the Patent Office originally after his rival, but before, and when he made his reissue application his rival's later claims had been made. He does not, therefore, stand in the situation of one who claims a specific invention, with specifications and claims that are not embraced in the original application of an earlier applicant, but which the latter seeks by subsequent amendment to dominate with claims that have no foundation in the original description of his invention.

We agree, however, with the Commissioner of Patents that the amended claims of Cook are clearly shown and described in the specifications of his original application and that his amendment constitutes no departure which would subordinate him to the claim of even an intervening applicant, as was the case in Bechman v. Wood.

In Phillips v. Sensenich, supra, facts similar to those in the present case existed. Sensenich's original application was filed November 9, 1904. Phillips's application was filed March 6, 1905, and Sensenich's divisional application containing the claims in controversy was not filed until August 26, 1905. The court, however, held that Sensenich was entitled to the date of filing of his original application as a constructive reduction to practice of the invention in issue.

In the more recent case of Lotz v. Kenny, supra, in which a similar state of facts was present, the Court stated:

It is quite clear that the invention of the issue was disclosed in the prior application, though no specific claims therefor were made until after the issue of the patent to Lotz. The claims could have been inserted therein by amendment, but for the rule of the Patent Office which does not permit a patent to 18sue for two separate inventions. Under such conditions, nothing remained but to Alle a new and divisional application, or to abandon this part of the invention.

The first contention on behalf of the appellant is that, as section 4888 Revised Statutes requires that the application shall not only contain a full description of the invention but also contain claims for the same, it is not permissible to amend by setting up a new claim to the invention or a part thereof not before claimed. The unsoundness of this proposition in a case where the subject matter is contained in the application though not followed by a specific claim therefor, has been pointed out in the recent case of Phillips v. Sensenich. (C. D., 1908, 14; 134 0. G., 1806.)

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