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trade-mark cases the issue is nsually a very narrow one and quite easily determined.

As pointed out in the opinion, section 7 of the Trade-Mark Act in terms clothes the Commissioner with powerto refuse to register both of two interfering marks or to register the mark, as a trade-mark, for the person first to adopt and use the mark, if otherwise entitled to register the same.

It will thus be seen that in a trade-mark interference proceeding the issue, which the Commissioner is called upon to determine, is not merely one of priority as in a patent interference proceeding, but involves any question that might be raised in an ex parte case. The provision at the end of section 9, that the same rules of practice and procedure shall govern in trade-mark cases as in patent cases "as far as the same may be applicable,” is not in conflict with the above conclusion. Neither is there in Rule 48 of the Trade-Mark Rules any. thing not in harmony with this opinion. That rule provides (inter alia) that the Commissioner before final judgment on the question of priority may suspend the interference and remand the same to the Examiner in charge of trade-marks for his consideration of matters relating to priority to which the attention of the Commissioner has been directed. Thus in Union Distilling Co. v. Schneider, (C. D., 1907, 613; 129 O. G., 2503; 29 App. D. C., 1,) the Commissioners did not finally determine the question of the right of appellant to registration, but, in effect, remanded the case that further testimony might be taken.

In re Fullagar, ante, 270; 138 O. G., 259; 32 App. D. C., 222, involved an interference as to an invention, in which, as above stated, the sole issue to be determined by the Commissioner is one of priority.

The petition for rehearing is denied.

[Court of Appeals of the District of Columbia. )

IN RE ORCUTT, ASSIGNOR TO THE STANDARD SCALE & FOUNDRY

COMPANY.

Decided January 5, 1909.

141 0. G., 567; 32 App. D. C., 345.

PATENTABILITY-NON-INVENTION-CHANGE OF MATERIAL,

The substitution of commercially-rolled channels for the cast-iron end frames of a wagon-scale Held not to involve patentable invention. Mr. J. C. Pennie and Mr. C. J. O'Neill for the appellant. Mr. F. A. Tennant for the Commissioner of Patents.

ROBB, J.:

This is an appeal from the decision of the Commissioner of Patents rejecting claims 1 to 6 of appellant's application. Claim 2, we think, typical and sufficiently illustrative of the claims. This claim is as follows:

In a pitless wagon-scale, the combination with two commercially-rolled channels forming the end members of the frame, means for connecting said channels together, castings secured to the inner faces of said channels, swinging members which are supported by said castings, rocker-shafts parallel with said end channels and provided with laterally-extending projections engaging said supporting members, said rocker-shafts also being provided with oppositely disposed projections for supporting the platform of the scale, rock-arms which are secured to said rocker-shafts and extend toward each other, and a crosslever to which said rock-arms are connected all of the above-mentioned elements being above the horizontal plane of the bottom faces of the channel end frames; substantially as described.

The subject matter of these claims relates to a pitless wagon-scale, the structure of which may be readily understood from reading the above claim.

Appellant's application was originally involved in interference with a patent to McDonald and McDonald for the same claims. The McDonald and McDonald application was filed June 30, 1904, and a patent was granted thereon June 6, 1905. Thereupon Orcutt copied the claims of the issue, and an interference was declared. The Examiner of Interferences awarded priority to McDonald and McDonald. Orcutt thereupon appealed to the Examiners-in-Chief, who, without passing upon the question of priority, stated to the Commissioner, under Rule 126, that in their opinion the claims in issue were unpatentable in view of a prior patent to McDonald and McDonald dated February 17, 1903. Under the practice, the case was thereupon referred to the Primary Examiner, who rejected the claims in accordance with the views of the Examiners-in-Chief, pointing out, however, certain structural differences between the claims and said prior patent to McDonald and McDonald. Upon appeal to the Examiners-in-Chief they again held the claims not patentable, which decision the Commissioner affirmed. This appeal ensued.

In view of the inadvertence of the Patent Office in granting & patent to McDonald and McDonald for the claims of the issue, which patent is now beyond the control of the Office, it would probably have been the more equitable practice to have assumed patentability in the interference proceeding for the purpose of determining the question of priority between the two parties thereto. However, it was within the scope of the Commissioner's authority to dissolve the interference, if convinced that the issue was not patentable. Should we declare the rejected claims patentable, the result would be that an interference would again be declared and the question

of priority determined. It will thus be seen that the decision of the Commissioner dissolving the interference did not preclude Orcutt, if there was merit in his claims, from ultimately contesting the question of priority with the patentees McDonald and McDonald. We, therefore, pass to a consideration of the question involved in this appeal, which is the patentability of the rejected claims.

Orcutt in his brief states that all the elements set forth in his claims are found in the original McDonald and McDonald patentwith the exception that in the scale of the McDonald patent (of February 17, 1903,) the end frames are cast-iron I-beams having vertical webs, the inner faces of which are provided with integral brackets for supporting the stirrups or swinging members, while in the construction set forth in the claims 1 to 6 in question, the end frames are commercially-rolled channels instead of castIron, and the brackets are separable castings, instead of being integral parts of the webs of the end frames.

In other words, Orcutt has employed rolled channels having separable brackets, that is, brackets fastened by bolts, in place of castiron channels with integral cast brackets. We agree with the Commissioner that the substitution of commercially-rolled channels for the castings of a patent did not involve patentable invention. While this change undoubtedly enhanced the utility of the device, it is plain, we think, that it would have been obvious to any iron-worker.

In the brief of McDonald and McDonald, which they were permitted to file, it is urged that weight should be given to the limitation contained in the claims thatall of the above-mentioned elements are above the horizontal plane of the bottom faces of the channel end frames.

Manifestly, as observed by the Commissioner, if these elements were not above the horizontal plane of the bottom faces of the channel end framesthe scale would not be entitled to be designated as a "pitless " scale. Being thus aptly described, the manner of securing the castings to the channel-bar is obvious.

The decision of the Commissioner is right, and is affirmed.

The clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents, as required by law.

[Court of Appeals of the District of Columbia.)

CHURCHILL v. GOODWIN.

Decided January 18, 1909.

141 O. G., 568; 32 App. D. C., 428. INTERFERENCE-JUDGMENT BY DEFAULT-DISCRETION OF THE COMMISSIONER.

Judgment of priority was rendered against C. because of his fallure to file a preliminary statement within the time set. Held that the extension and limitation of time within which a party to an interference shall file

his preliminary statement is within the discretion of the Commissioner, and his refusal to extend such time is not subject to review by the Court of Appeals of the District of Columbia unless it clearly appears from the

record that he has abused his discretion. Mr. F. T. Brown and Mr. F. A. Hopkins for the appellant. Mr. R. C. Mitchell and Mr. Langdon Moore for the appellee.

VAN ORSDEL, J.:

This is an appeal from the decision of the Commissioner of Patents in an interference proceeding. The subject matter of the interference is an improvement in locks for locker-doors. It is unnecessary to set out the issue for the purpose of deciding the case before us.

Appellee filed his application on January 9, 1904. Appellant filed his application August 7, 1905. The interference was declared March 12, 1907.

Appellant, the junior party, failed to file any preliminary statement as required by the rules of the Patent Office. It appears from the statement of counsel that the time for filing the preliminary statement was extended repeatedly, but this extension, or the reasons therefor, do not appear in the transcript of record, and are not properly before us for consideration.

On March 24, 1908, the Examiner of Interferences rendered the following decision:

On February 13, 1908, notice was given that judgment on the record would be rendered against Churchill, the junior party, for fallure to file a preliminary statement, unless he should, by March 14, 1908, show, sufficient cause why such action should not be taken. This time having passed and no sufficient showing having been made [the petitions by Churchill having been denied by the Commissioner) judgment of priority of Invention of the subject matter in issue in this Interference is hereby rendered in favor of Edward C. Goodwin, the senior party.

The petitions referred to within the brackets in this decision do not appear in the record.

From the record it is impossible for us to even pass upon the question of the proper exercise of discretion by the Commissioner of Patents. It appears that one year elapsed between the declaration of the interference and the decision of the Examiner. During this period, appellant failed to file his preliminary statement. Due notice was given him by the Patent Office to the effect that, if this statement was not filed by a given date, judgment would be rendered against him on the record. He failed to respond to the notice, and judgment was accordingly rendered. So far as the record before us discloses, no injustice was perpetrated upon appellant by any of the tribunals of the Patent Office, and, in the absence of such showing, we must presume that none was committed. The extension and limitation of the time within which appellant should file his preliminary statement was a matter within the discretion of the Commissioner. The exercise of discretion in refusing to longer continue the case in order to give appellant further time to file his preliminary statement is not subject to review by us, unless it clearly appears from the record that the rights of appellant have been prejudiced by an unwarranted departure from the law or rules of procedure regulating proceedings of this kind in the Patent Office. (Hallowell v. Darling, App. D. C., present term, and cases cited.) No such abuse of discretion is apparent on the face of this record.

The decision of the Commissioner of Patents is therefore affirmed, and the clerk is ordered to certify these proceedings, as required by law.

[Court of Appeals of the District of Columbia.]

THE HANNIS DISTILLING COMPANY V. GEORGE W. TORREY COMPANY.

Decided February 2, 1909.

141 O. G., 569; 32 App. D. C., 530.

1. TRADE-MARKS-OPPOSITION PROCEEDINGS—AMENDMENT OF NOTICE.

A refusal by the Patent Office to permit an amendment of a notice of opposition after the expiration of the thirty days allowed by the statute approved on the ground that if the amendment did not set up new grounds of opposition no advantage could result from the amendment, and if it did set

up new grounds it was brought too late. 2. SAME-ABANDONMENT OF MARK-STATE LAW.

The non-user of a trade mark for liquor for a period of years, caused by a restriction upon the sale thereof by a State law, did not operate as an abandonment of the property rights in the mark which were acquired prior

to the passage of the said law. 3. SAME-SAME-SAME-USE IN INTERSTATE TRADE.

The non-user of a trade-mark for liquor for a period of years, caused by a restriction upon the sale thereof by a State law, should not be held to operate as an abandonment of the property rights in the mark which were acquired prior to the pa ssage of the State law where it appears that the owner of the mark was engaged in interstate trade and there was nothing in the restricting act to prevent the manufacture of the liquor bearing the

mark and the disposal of it in other States. Mr. William N. Cromwell for the appellant. Mr. James Hamilton for the appellee.

VAN ORSDEL, J.:

This case is brought here by appellant, the Hannis Distilling Company, from a decision of the Commissioner of Patents dismissing its notice of opposition to the registration by appellee George W. Torrey

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