This application was passed for publication and, later, an interference was declared between it and an application for registration of the same words filed by Robertson, Sanderson & Co., Limited, on November 23, 1905. The latter, a firm engaged as liquor dealers in Leith, Scotland, claimed the use of the words as a trade-mark for Scotch whisky in Great Britain, since the year 1846, and also trademark use in this country. The evidence on their behalf showed the use in Great Britain, and one sale and shipment of a small lot of whisky with said brand to a grocery merchant in Philadelphia in February, 1883. There was no evidence of any further shipments to this country until August, 1894, when they established an agency in the city of New York, and since which time, through said agents and their successors, they have sold large quantities of their goods, branded as aforesaid. The brand was also advertised in trade journals, and agent's price-lists.

The evidence on behalf of Dennehy & Co. showed that their predecessors in title to the trade-mark had commenced the use of the same in 1882, and had continuously used it in interstate trade since that time.

The Examiner of Interferences awarded priority to Dennehy & Co. and Robertson, Sanderson & Co. appealed to the Commissioner. It is unnecessary to state the grounds upon which he denied the effect of the foreign use by them, as they contented themselves, before the Commissioner, with opposing the registration of their opponents, and have not appealed from his decision denying registration to both parties.

As the Commissioner did not question the right of Dennehy & Co. to claim registration, both as a technical trade-mark, and by reason of the ten years' use, under his substituted application, we will follow bis example, but without intending to approve or disapprove the practice. He considered, first, the right to registration as a technical trade-mark and denied it for reasons stated in the following extract from his opinion:

The question of whether the words “Mountain Dew" when applied to whisky are "descriptive of the goods with which they are used, or of the character or quality of such goods" so as to render them ineligible to registration as a technical trade-mark under the first part of section 5 of the Trade-Mark Act will be considered first. Judicial notice is taken of the fact that it is a matter of common knowledge that the term "mountain-dew" means whisky and is defined in the Century, Worcester, Webster and Standard Dictionaries as follows: "Mountain-dew. Whiskey, especially Highland whiskey. (Scotch.)

"The shepherds who had all come down from the mountain heights and were collected together (not without a quench of the mountain-dew or water of life) in a large shed." J. Wilson, Lights and Shadows of Scottish Life, p. 305. (Century Dictionary, edition of 1890.)

"Mountain dew. Scotch Highland whisky that has paid no duty. (Worcester Dictionary, editions of 1865 and 1902.)

"Mountain-dew. Illicitly-distilled whisky; so called from being very commonly made among the mountains." (Standard Dictionary, edition of 1895.) It is unnecessary to cite others than these commonly-accepted authorities which are conveniently at hand. They show conclusively that the words "mountain-dew" commonly mean whisky or a particular kind of whisky. (C. D., 1908, 117; 134 O. G., 513.)

He also referred to certain testimony of Dennehy to the effect that the trade-mark was suggested to him by an Irish salesman who said that "the words mountain-dew, in Ireland, are suggestive of whisky."

We agree with the Commissioner that the words, " Mountain Dew," however fanciful the term may, originally, have been, are now generally recognized as meaning whisky; and we deem it unnecessary to add anything to his discussion.

The Commissioner was clearly right in denying registration under the "ten-years clause" of the Trade Mark Act, because the evidence shows that the use by Dennehy & Co. was not an actual, exclusive use of the same for ten years next preceding the passage of the TradeMark Act. (Worcester Brewing Co. v. Reuter, C. D., 1908, 329; 133 O. G., 1190; 30 App. D. C., 428, 431; Natural Food Co. v. Williams, C. D., 1908, 320; 133 O. G., 232; 30 App. D. C., 348, 351; BrownForman Co. v. Beech Hill Distilling Co., C. D., 1908, 384; 134 O. G., 1565; 30 App. D. C., 485, 486; Ky. D. & W. Co. v. Old Lexington C. D. Co., C. D., 1908, 417; 135 O. G., 220; 31 App. D. C., 223, 227.) The decision must be affirmed. It is so.ordered, and the clerk will certify this decision to the Commissioner of Patents as required by the statute.

[Court of Appeals of the District of Columbia.]

IN RE BLACKMORE.

Decided January 5, 1909.

140 O. G., 1209; 32 App. D. C., 338.

1. SPECIFICATION-SUFFICIENCY OF DISCLOSURE.

In claiming a patent for the discovery of a useful result in any art, machine, manufacture, or composition of matter by the use of certain means the application must specify "the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes." (O'Reilly v. Morse, 15 How., 62, 119.)

2. APPLICATION-RIGHT TO AMEND CITATION OF NEW REFERENCE AFTER APPEALTIME FOR OBJECTION.

Where an Examiner in his statement on appeal raises a new ground for rejection for the first time and offers applicant an opportunity to withdraw his appeal in view of that fact, which applicant declines to do, it is too late to raise an objection on appeal to the court of appeals that he was deprived of the opportunity to amend his claims after the citation of such reference.

Mr. C. L. Parker for the appellant.

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

SHEPARD, C. J.:

This is an appeal from the rejection by the Commissioner of Patents of the following claims of an application for a patent for a process of extracting aluminum and other metals:

1. The process of electrically producing metals from substances containing the same, which consists in fusing the substance containing the metal desired by the action of an alternating current so disposed or applied through a fused conductor as to impart heat to the substance and liberating the metal therefrom by the action of a direct current.

2. The process of electrically producing metal from substances containing the same, which consists in fusing the substances containing the metal desired by the action of an alternating current so disposed or applied through a fused conductor as to impart heat to the substance and liberating the metal therefrom by the action of a direct current while in the presence of a substance capable of uniting with the electronegative constituents of the metal-containing substance to be electrolyzed.

3. The process of electrolytically producing metal from substances containing the same, which consists in maintaining the fusion of the metal-containing substance by the action of an alternating current so disposed or applied through a fused conductor as to impart heat to the substance and liberating the metal therefrom by the action of a direct current.

4. The process of electrolytically producing metal from substances containing the same, which consists in maintaining the fusion of the metal-containing substance by the action of an alternating current so disposed or applied through a fused conductor as to impart heat to the substance and liberating the metal therefrom by the action of a direct current while in the presence of a substance capable of uniting with the electronegative constituents of the metal-containing substance to be electrolyzed.

5. The process of electrically producing metal from substances containing the same, which consists in maintaining the fusion of the substance containing the metal desired by the action of a non-electrolyzing current applied through a fused conductor and liberating the metal therefrom by an electronegative current.

6. The process of electrically producing metal from substances containing the same, which consists in maintaining the fusion of the substance containing the metal desired by the action of a non-electrolyzing current applied through a fused conductor and liberating the metal therefrom by an electrolytic current while in the presence of a substance capable of uniting with the electronegative constituents of the metal-containing substance to be electrolyzed.

7. The process of electrically producing metal from substances containing the metal desired, which consists in subjecting such substance to the action of an electric current of selective and non-metal-yielding heating nature through a fused conductor and an electric current of electrolytic nature, the said heatingcurrent being applied independent of the electrolyzing-current, whereby the electrolytic efficiency of the direct or electrolytic current may be utilized without loss.

8. The process of electrically producing metal from substances containing the same, which consists in maintaining fusion of the metal-containing substance by the action of an alternating current so disposed or applied through

a fused conductor as to heat the ingredients independent of the electrolytic electrodes and liberating the metal therefrom by the action of a direct current. 9. The process of reducing metals which consists in maintaining fusion of substances containing metal by the action of a non-metal-yielding electric current through a fused conductor communicating therewith, while liberating metal therefrom by the action of a metal-yielding electric current.

We adopt the statement of the invention by the Commissioner:

The invention disclosed in the application is the reduction of a metal-containing compound in a fused bath, specifically, the reduction of aluminum oxid fused with aluminum fluorid. In the ordinary process of electrolytic reduction a direct current is employed for heating and reducing. In order to avoid various disturbances caused by the use of so large a direct current, applicant proposes to employ an alternating current for fusing the material and a comparatively weak direct current for accomplishing the reduction of the metal.

After numerous objections and amendments, a number of the process claims were allowed. These it seems were then canceled and presented in a later divisional application. The amended claims set out above, were rejected in succession by each tribunal of the Office upon the grounds: 1. That they were not warranted by the description in the application, and are too indefinite; 2. That they are anticipated by other patents referred to.

In claiming a patent for the discovery of a useful result in any art, machine, manufacture, or composition of matter by the use of certain means, the application must specify

the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. (O'Reilly v. Morse, 15 How., 62, 119.) The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. (The Incandescent Lamp Patent, 159 U. S., 465, 474.)

Applicant filed no drawing with his application and described no specific apparatus therein. The description given is recited in the decisions as follows:

In extracting the aluminum or other metal in accordance with my process as aforestated, I fuse the composition by the action of an alternating current and dissociate or reduce the metal by the simultaneous action of a direct current. In this manner, the constituents may be maintained in a molten condition without interrupting the action of a direct current or deteriorating the value of the same as an electrolytic agent, whereby the whole of the direct current may be expended in yielding metal instead of being utilized to a considerable extent to maintain fusion as employed in processes hitherto.

The appellant recites this in his brief also, and relies upon it for the disclosure on which he rests his claims.

It was not then broadly new to use an alternating current in coöperation with a direct current in fusing and electrolyzing metal

21895-H. Doc. 124, 61-2—--22

bearing substances. Carlson and De Laval had done this in certain ways pointed out in their patents. Their patents are referred to at this time not to show anticipation of the apparatus and process of Blackmore, but to emphasize the importance of requiring particularity in the description of his invention not only to point out the particulars in which it consists, but also to clearly differentiate it from the others.

Appellant in his argument says that

the appellant is the first to pass an alternating current through the bath in an electrolytic process. In the practical application of appellant's process, in the extraction of the metal, as, for example, aluminum, the metal-containing substance, preferably a mixture of aluminum oxid and aluminum fluorid, is simultaneously subjected to the action of an alternating and a direct current, the former operating to maintain the bath in a melted or fused condition, while the latter operates to electrolytically disrupt or separate the elements of the bath, and thereby effect the extraction of the metallic aluminum. The appellant's invention is thus seen to consist broadly in an electrolytic process of separating metals from metal-containing substances, by maintaining the fusion thereof by the action of an alternating current passed therethrough, while liberating the metal therefrom by the action of a direct current.

The difficulty with the description, which this statement fails to meet, is thus stated by the Examiner:

It is not therefore disclosed in the original case whether the alternating current is to be passed through the electrolytic, or some other conductor. But even were the disclosure of the passage of the heating-current through the fused bath, it is not set forth in the claims; on the contrary, in each it is stated that the alternating current passes through a “fused conductor" which may or may not be electrolytic. The claims are broad enough in their language to cover a process in which the current is passed through a conductor other than the electrolyte, so long as the conductor is "in communication with the bath,” which is understood to mean in heat-conducting relation thereto.

In affirming the decision of the Examiner, the Examiners-in-Chief said:

In the appellant's procedure a mass of material, such as a mixture of aluminum oxid and aluminum fluorid, is placed in a containing vessel.

This mass of material is fused by the action of an alternating current and the metal dissociated or reduced by the simultaneous action of a direct current. The original specification was not accompanied by a drawing and there was no further description than that above referred to as to the arrangement of the apparatus.

By the action of the alternating current the mixture is fused and electrolyzed, causing the deposition of aluminum, which would, however, be less conducting than the electrolyte so that the heating-current would pass mainly through the electrolyte.

There is no hint in the original specification of placing metallic aluminum in the bottom of the vessel to start the operation.

When in operation, therefore, the material itself must be simultaneously fused and electrolyzed, and the curious language of the claim means that the same particles which are the "fused conductor" of the claims are imparting heat to each other. So read, the claims are indistinct. If they are intended to cover the use of a fused material other then the mixture itself they are unwarranted