EX PARTE PERKINS.

Decided April 16, 1909.

142 O. G., 855.

DRAWINGS-DEVICE OF GENERAL APPLICATION-SUFFICIENCY.

Where an application fully discloses the construction of the alleged invention which is of general application, the illustration of the invention applied to a particular use should not be required.

ON PETITION.

HINGE.

Mr. Raymond I. Blakeslee and Messrs. Collamer & Co., for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition from a decision of the Primary Examiner requiring further illustration and refusing action on the merits until the same is furnished, praying that the Examiner be advised that no further illustration is necessary and that action on the merits should be given.

The specification of the application states that:

This invention relates to hinges; and has for its objects to provide improved hinge means, or means for connecting two or more devices, things or parts for relative movement of the same, which will provide for temporarily or yieldingly locking or interlocking the same to prevent the said relative movement; and which hinge devices or hinge means, including said locking means, shall be relatively inexpensive and simple in construction, positive in operation, durable, and generally superior in point of efficiency and serviceablity.

The drawing shows two members having relative movement about a common axis. Each of these members is provided with an extended portion resembling a portion of the usual buggy-top brace. In the first action the Examiner stated that it would be impossible to make an examination upon the merits until applicant disclosed with what his device was intended to be used. Upon a repetition of this requirement applicant inserted in the specification the following statement:

The parts a and b may constitute in themselves portions of a hinged device; as, for instance, the arms or rods of a folding buggy-top of the ordinary wellknown type.

Assuming that additional illustration is necessary in this case, there is no reason why action on the merits should have been postponed until such illustration was furnished. The construction seems to be clearly described and shown, and, in fact, the Examiner does not claim that he does not understand the invention. He states that without further illustration it would be impossible to classify the application and hardly possible to examine it with accuracy. The reason

given is not regarded as sufficient to warrant the refusal to act upon the merits. If the applicant had shown his construction in connection with some special machine or device, this would not excuse the Examiner from making a reasonable search in all other places where such a construction might be found. As far as aiding the Examiner in his search is concerned, the statement in the specification inserted by amendment is as efficient as would be a further illustration.

The Examiner cites ex parte Hartley (C. D., 1901, 247; 97 O. G., 2746,) as sustaining his requirement. In ex parte Hartley the drawing did not clearly disclose the invention so as to enable one to understand the construction which was the subject of the claim. Here the invention is clearly described and shown, although its specific application is not illustrated. Moreover, in the decision cited there is no authority to refuse to act upon the merits. The decision of the Commissioner in the case of ex parte Hinkle and Ashmore (C. D., 1899, 186; 88 O. G., 2410) seems to be more nearly in point and should govern the disposition of this case. Under the circumstances the Examiner should have given an action on the merits and at the same time required a further illustration if in his opinion such illustration was necessary.

It is believed, however, that no further illustration should be required, as the invention claimed is clearly described and shown. The petition is granted.

CRESCENT OIL COMPANY v. W. C. ROBINSON & SON COMPANY.

Where counsel was of the opinion that certain testimony which it was proposed to take might be introduced in rebuttal and after the expiration of the time set for taking rebuttal testimony, upon a motion to extend such time, the Examiner of Interferences denied the motion, upon the ground that the testimony sought to be taken was not proper rebuttal, but was part of the case-in-chief, and thereupon a motion to reopen was filed for the purpose of taking such testimony as newly-discovered evidence, Held that the excuse for the delay was insufficient.

2. SAME-SAME-SAME EVIDENCE MUST BE SHOWN TO BE MATERIAL.

In order to warrant the grant of a motion to take newly-discovered evidence, it must appear that the proposed evidence is material.

8. SAME-MOTIONS-PIECEMEAL PROSECUTION.

The piecemeal prosecution of motions places an unnecessary burden upon the Office and upon the parties, and the practice is strongly condemned.

APPEAL ON MOTION.

LUBRICATING-OIL.

Messrs. Minturn & Woerner for Crescent Oil Company.

Messrs. Steuart & Steuart for W. C. Robinson & Son Company.

BILLINGS, Assistant Commissioner:

This is an appeal by the Crescent Oil Company from the decision of the Examiner of Interferences refusing to reopen the case for the purpose of taking alleged newly-discovered evidence.

The motion was denied on two grounds-first, because of delay in bringing the same, and, second, because it was piecemeal in nature.

The alleged newly-discovered evidence relates to the use of the mark in issue by a third party, with the permission of W. C. Robinson & Son Company, which, it is alleged, is shown by the testimony taken on behalf of W. C. Robinson & Son Company on September 23, 24, and 25, 1908.

The motion was not brought until December 26, 1908. The excuse offered for the delay is that counsel was of the opinion that it was proper to take testimony upon this question in rebuttal and that it was their intention to do so. They permitted their time for taking rebuttal testimony to expire, and a motion was brought to extend the time for taking such testimony, particularly for the purpose of showing such use by a third party; but this motion was denied by the Examiner of Interferences upon the ground, among others, that the testimony sought to be introduced was not proper rebuttal evidence, but was admissible, if at all, as a part of the case-in-chief. Thereupon this motion was brought to reopen the case for the purpose of taking this evidence as newly-discovered evidence. The excuse given is not regarded as sufficient.

Moreover, as stated by the Examiner of Interferences, the motion is piecemeal and was properly refused on this ground. As stated in my decision dated February 2, 1909, three motions were brought to reopen the case to take newly-discovered evidence, upon which decisions were rendered by the Examiner of Interferences, dated, respectively, October 24, November 6, and November 18, 1908. It is obvious that the present motion should have been presented with the previous motion for reopening, and the fact that the newly-discovered evidence presented in the previous motion related to a different matter is immaterial. The piecemeal prosecution of motions places an unnecessary burden.both on this Office and upon the parties, and the practice cannot be too strongly condemned.

There is another ground upon which the Examiner of Interferences might properly have refused to grant the motion-namely, that the alleged newly-discovered evidence has not been shown to be material, which is necessary to be shown to warrant the reopening of a case for 21895-H. Doc. 124, 61-27

the purpose of taking additional testimony. The testimony proposed to be taken does not appear to have any possible bearing upon the right of the Crescent Oil Company to registration, and as the mark of W. C. Robinson & Son Company has been registered its right to registration is not a matter for investigation in this proceeding, except in so far as it may be necessary to a consideration of the rights of the Crescent Oil Company.

The decision of the Examiner of Interferences is affirmed.

IN RE THE VACUUM SPECIALTY COMPANY.

Decided April 15, 1909.

142 O. G., 1114.

ACCESS TO ABANDONED APPLICATION-ACCESS Granted.

Where suit is brought on a patent the file-wrapper of which shows that all the claims thereof were the allowed claims of a prior application belonging to the same assignee, which were transferred to the patented application, the prior application at the same time being formally abandoned, and the only discussion of the merits of the claims was in the prior application, Held that the defendants are entitled to inspect and obtain copies of the prior application if it can be identified by the Office, although neither the patent itself nor the file-wrapper identifies it by the name of the applicant, the serial number, or the date of filing.

ON PETITION.

Mr. Hillary C. Messimer for the Vacuum Specialty Company. Mr. Park Benjamin for the American Thermos Bottle Company. BILLINGS, Assistant Commissioner:

This is a petition to inspect and obtain copies of an abandoned application referred to in the patent to Hubert Henn, No. 884,582, April 14, 1908, for a vessel with double walls and protective case, on which petitioner alleges suit has been brought charging it with infringement.

The file-wrapper of the application on which the patent involved in the suit was granted shows that the only action in the case on the part of the Office was a requirement for division, accompanied by the citation of three patents to show the state of the art. In the next action a substitute specification and five claims were filed, accompanied by the statement that the claims had all been passed upon as allowable in a copending application and that such application had been abandoned. This statement did not indicate from what application these allowed claims were transferred; but the records of the Office show that on the same day on which this substitute specification was filed formal abandonment was filed in the application of Charles S. Reed, o. 397,553, filed October 15, 1907, for bottles, signed by the applicant nd the American Thermos Bottle Company, as assignee. A com

parison of the claims 4, 7, 8, 9, and 10 of that application and of the five claims of the patent in suit shows that they are identical. At that time this company was the owner of both of the applications, as the assignment records of this Office show.

Thus it is sufficiently established that the application from which the allowed claims were taken was the application above referred to and that at the time of the abandonment and the grant of the patent the American Thermos Bottle Company was the owner of both inventions.

The circumstances in this case are similar to the circumstances set forth in the Commissioner's decision in the case of Metropolitan West Side Elevated Railroad Company et al. v. Siemens, (C. D., 1898, 220; 85 O. G., 290.) In that case the application papers on which the patent was granted disclosed the fact that one of the claims of the patent, infringement of which was charged, was a substitute for a claim which had been allowed in the abandoned application to which access was desired. In that case access was granted, notwithstanding the fact that petitioner did not present a certificate of the court before which the suit between the parties was pending showing that copies of such application would be relevant and material to the issues involved therein.

In my opinion the abandoned application of Reed, No. 397,553, is a part of the proceedings leading to the grant of the patent in suit and for that reason virtually part and parcel of said patent.

The petition to inspect said abandoned application and to be furnished copies thereof is therefore granted.

WILLIAMS v. FOYER AND KURZ.

Decided May 5, 1909.

142 O. G., 1114.

INTERFERENCE-PRELIMINARY STATEMENT ALLEGATIONS THEREOF MUST CONFORM TO THE RULES.

Rule 110 requires that the allegations of the preliminary statements should set forth inter alia the “date of the reduction to practice of the invention." This allegation of the reduction to practice should be alleged positively either in the terms of the rule or in such other language as will leave no question as to the actual reduction to practice of the invention.

ON PETITION.

GO-CART.

Messrs. Bradford & Hood for Williams.

MOORE, Commissioner:

This is a petition by Williams from the action of the Examiner of Interferences requiring an amended preliminary statement alleging