39. RIGHT TO MAKE THE CLAIMS IN A PARTY'S OWN APPLICATION-FINAL HEARING. A party's right to make a claim in issue in his own application is not a matter that can be properly raised at final hearing under Rule 130. Hewitt and Waterman v. Greenfield, 244.

40. SAME

TWO APPLICATIONS OF SAME PARTY INVOLVED — TRANSFERRING CLAIMS.-Where a party contends that a claim in issue is not readable upon that one of two of his applications involved in which it is made, but upon the other, Held that, if true, this would not constitute such irregularity as to preclude a proper determination of priority and that the supervisory authority of the Commissioner will not be exercised to have the claim transferred from one application to the other. Id. INTERFERENCE BETWEEN ORIGINAL APPLICATION AND REISSUE. See Appeal to the Court of Appeals of the District of Columbia. INTERFERENCE PROCEEDINGS IN THE PATENT OFFICE. See PublicUse Proceedings; Suits for Infringement; Trade-Marks, 17, 18, 90. INTERFERING PATENTS.

DATES OF RESPECTIVE INVENTIONS.-When two patents for the same invention have been issued to independent inventors, the dates of their respective inventions are, first, the dates of the patents; second, the dates of the applications, provided the application sufficiently describes the invention; third, the dates of actual reduction to practice; fourth, the dates of conception, with this qualification, that if either patentee seeks to carry the date of his invention back to the date of his conception he must show reasonable diligence in adapting and perfecting his invention, and with respect to this rule there is no distinction between simple and complicated inventions. Automatic Weighing Machine Company v. Pneumatic Scale Corporation, Limited, 498.

INTERLOCUTORY HEARING. See Brief.

INTERNATIONAL AGREEMENT. See Copyright, 3.

INVENTION. See Abandonment of Invention; Affidavits under Rule 75, 2; Concealment of Invention; Construction of Specifications and Patents, Disclosure of Invention; Patentability, 2, 4, 5, 6, 7.

1. CONSTRUCTIVE REDUCTION TO PRACTICE.-The rule of the Patent Office that the filing of an allowable application is constructive reduction to practice is only the expression in another form of the rule that the application of a patented invention, if it sufficiently describes the invention, is conclusive evidence that the invention was made at least as early as that date. Automatic Weighing Machine Company v. Pneumatic Scale Corporation, Limited, 498.

2. DISCLOSURE and Drawing DOES NOT CONSTITUTE.-The authorities seem to be conclusive upon the point that a conception evidenced by disclosure and drawings does not constitute an invention under the patent laws. Id.

3. PATENTABILITY-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. *In re Orcutt, 334.

4. CONCEPTION-MERE IDEA IS NOT AN INVENTION.-A mere conception of the idea that a construction which had been used in one mechanism might be adapted to another for accomplishing a similar function does not amount to an invention. Invention consists of the conception of an idea and of means for putting it in practice and producing the desired result. (Burson v. Vogel, C. D., 1907, 669; 131 O. G., 942; 29 App. D. C., 388.) *Marder v. Dey and Dey, 398.

5. PATENTABILITY EVIDENCE OF.-If those skilled in the mechanical arts are working in a given field and have failed after repeated efforts to discover a certain new and useful improvement, he who first makes the discovery has done more than make the obvious improvement which would suggest itself to a mechanic skilled in the art and is entitled to protection as an inventor. ** The Expanded Metal Company et al. v. Bradford et al., and The General Fireproofing Company v. The Expanded Metal Company, 521.

6. SAME PROCESS INVOLVING MECHANICAL OPERATIONS.-The mere function or effect of the operation of a machine cannot be the subjectmatter of a lawful patent; but the invention or discovery of a process or method involving mechanical operations and producing a new and useful result may be within the protection of the Federal statute and entitle the inventor to a patent for his discovery. **Id.

7. SAME PROCESS OF TEMPERING MetalLIC ARTICLES.-Where the prior art disclosed the cooling of a tempering fluid by means of a liquid circulating in a cooling-coil and it was also old to introduce ice into a tempering bath, Held that to cool such bath by a refrigerating-coil to a point approximating the freezing point" involved no invention. *In re Chase, 474.

66

8. SAME. Where the art showed it was old to introduce a powder as a modifying element into a stream of molten metal in the direction of its travel between the ladle and the mold, also that it was old to blow powder into a stream of metal transversely, Held that no invention is involved in introducing the powder in the manner first described by the aid of fluid pressure. Ex parte Wright, 165.

9. SAME REARRANGEMENT OF MACHINE.-The substitution of electrical means for operating a chuck jaw in place of mechanical means shown in the art Held to require such rearrangement of the machine as to involve invention. Ex parte Johnson, 188.

10. SAME-SUBSTITUTION OF EQUIVALENTS.-Where the art shows it is old to drive a lathe-spindle through gearing by an electric motor mounted on the headstock and also that it is old to mount motor armatures directly on the spindles of machine tools, Held unpatentable to use the armature shaft as the headstock spindle of a lathe. Ex parte White and Medford, 190.

11. SAME-MOUNTING HAND WHEEL IN CONVENIENT PLACE.-Mounting a hand wheel in a convenient place on the spindle of a self-contained electric motor head stock Held to require no invention over the art, which showed such a wheel on a belt-driven headstock. Id.

12. SAME.-Where it was old to utilize a telephone for the display of advertisements and also old to control a movable-band advertising device by a lever operated by removing a weight from or restoring it to a hook support, Held that it did not amount to invention to attach a movable-band advertising device to a telephone box, so that it would be operated when the receiver is removed from and restored to the hook thereon. *In re Lyon, 494.

13. SAME-NEW USE.-Where it was old to communicate motion to a movable-band advertising device by means of a lever operated by removing a weight from or restoring it to a hook, the use of the lever of a telephone for that purpose is not a new, but an additional use for that lever. Id.

INVESTIGATION. See Authority of the Commissioner of Patents; Jurisdiction of the Courts Over Practice in the Patent Office.

IRREGULARITY IN DECLARATION OF INTERFERENCE. See Interference, 9, 10, 11; Motion to Dissolve Interference, 7, 9, 10.

IRRELEVANT MATTER. See Testimony, 4, 6.

JOINT APPLICANTS.

Attorney.

See Abandonment of Applications, 5, 6; Power of

1. INTERFERENCE-PRIORITY.—Where a joint application is involved in an interference, the question whether the joint applicants were in fact joint inventors is pertinent to the question of priority, since if they were not in fact joint inventors they were not entitled to make the application in interference and are without standing therein. *Lemp v. Randall and Bates, 455.

2. SAME-SAME-SUFFICIENCY OF TESTIMONY.-It is not necessary that the testimony of the joint applicants be corroborated in order to establish that they were in fact joint inventors, and unless there is a preponderance of evidence to the contrary their testimony should be sufficient on that question. *Id.

JUDGMENT BY DEFAULT. See Priority of Invention, 2.

JUDGMENT OF STATE COURTS. See Access to Pending Applications, 2, 3. JURISDICTION OF THE COURTS OVER THE COMMISSIONER OF PAT

ENTS. See Authority of the Commissioner of Patents, 1, 3; Jurisdiction of the Courts Over Practice in the Patent Office; Priority of Invention, 2.

JURISDICTION OF THE COURTS OVER EXECUTIVE OFFICERS. MANDAMUS-POWER OF Court to ContrOL ACTION OF EXECUTIVE OFFICER.—

The court is powerless to direct the action of an executive officer unless a positive legal right is being invaded by the officer where the duty imposed upon him is clearly prescribed and enjoined by law. The duty, however, must be so plain and positive that the officer has no discretion left. (Merrill on Mandamus, p. 64.) *Moore, Commissioner of Patents, v. The United States of America, ex rel. Boyer, 276. JURISDICTION OF THE COURTS OVER PRACTICE IN THE PATENT

OFFICE.

PRACTICE OF THE PATENT OFFICE-AUTHORITY OF THE COURTS THEREOVER.— The courts are vested with no power to interfere with or supervise the practice of the Patent Office. It is only in cases where a hearing is refused a party or the Commissioner refuses to perform a plain duty or where he undertakes to do an unwarranted act for which there is no other adequate remedy that the courts are authorized to interfere by mandamus or injunction. *Moore, Commissioner of Patents, v. Heany, The Heany Company, and the Heany Lamp Co., 488. JURISDICTION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Appeal to the Court of Appeals of the District of Columbia.

APPEAL FROM THE COMMISSIONer of Patents.-The jurisdiction of the Court of Appeals of the District of Columbia to entertain appeals from the decisions of the Commissioner of Patents in proceedings relating to patents is limited to two classes of cases-(1) where the claims of an application for a patent or the reissue of a patent after having been twice rejected have been finally rejected on appeal to the Commissioner in due course of procedure; (2) where on appeal to the Commissioner in an interference proceeding there has been a final decision on priority in favor of one of the parties thereto. (Rev. Stat., secs. 4909, 4910, 4911; Westinghouse v. Duncan, C. D., 1894, 170; 66 O. G., 1009; 2 App.

D. C., 131, 132; Allen v. Lowry, C. D., 1905, 643; 116 O. G., 2253; 26 App. D. C., 8, 17, 26; Union Distilling Co. v. Schneider, C. D., 1907, 613; 129 O. G., 2503; 29 App. D. C., 1.) *In re Fullagar, 270. JURISDICTION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA OVER PRACTICE IN THE PATENT OFFICE. See Interference, 23. PATENTABILITY.-Where appeal is taken to the Court of Appeals of the District of Columbia from the decision of the Commissioner, that court has no jurisdiction to review the decision of the Examiners-in-Chief allowing certain claims. *In re Luten, 402.

JURISDICTION OF THE EXAMINER OF INTERFERENCES. See Interference, 13, 23; Trade-Marks, 79, 103, 105.

JURISDICTION OF THE EXAMINER OF TRADE-MARKS. See TradeMarks, 103.

LABELS AND PRINTS.

1. USE OF LEGEND “GUARANTEED UNDER THE FOOD and Drugs ACT"-REGISTRATION REFUSED.-A label containing the words “Guaranteed under the Food and Drugs Act, June 30, 1906," is not entitled to registration, as the use of this legend tends to convey the impression that the Government guarantees the merchandise contained in the receptacle on which the label may be applied. Ex parte Ruppert, 43.

2. SAME-SAME.-For the reasons stated in ex parte Tennessee Brewing Company (C. D., 1908, 227; 136 O. G., 1999) and ex parte Ruppert (ante, 43; 140 O. G., 755) a print containing the words "Guaranteed under the Food and Drugs Act, June 30, 1906," was properly refused registration. Ex parte Lake Chemical Company, 67.

3. REGISTRATION-APPLICATIONS FILED PRIOR TO JULY 1, 1909.-The Copyright Act of March 4, 1909, construed and Held to permit the registration of all prints and labels the applications for the registration of which were on file and pending in the Patent Office on June 30, 1909, if otherwise registrable. Ex parte Lutz, 126.

LIMIT OF APPEAL. See Motion to Dissolve Interference, 3; Trade-Marks, 90. LIMIT OF TIME. See Abandonment of Applications, 2, 3, 4, 5, 6, 8, 9; Construction of Statutes; Interference, 5; Motion to Dissolve Interference, 4, 22; Priority of Invention, 2; Suggested Claims; Trade-Marks, 38. LIMITATION OF CLAIMS. See Interference, 8.

LIMITATION OF UNITED STATES PATENT BY FOREIGN PATENT. See Term of Patent.

MACHINES. See Construction of Claims, 2; Disclosure of Invention; Invention, 9; Patentability, 1; Public Use and Sale; Reduction to Practice, 1, 2, 3.

MANDAMUS.

See Access to Pending Applications, 2, 3; Jurisdiction of the Courts Over Executive Officers; Jurisdiction of the Courts Over Practice in the Patent Office.

1. USE OF. The writ of mandamus cannot be used to perform the office of an appeal or writ of error or granted in any case where there is another adequate remedy. * Moore v. United States, ex rel. Lindmark, 483.

2. FINAL ORDER-RIGHT OF APPEAL.-In an interference between F. and L. the decision of the Commissioner in favor of L. was reversed by the Court of Appeals of the District of Columbia. Thereafter L. filed with the Commissioner a petition that the interference be reopened

for the purpose of taking further testimony. This petition was denied, but an order directing a patent to issue to F. was not entered. Held that mandamus would not lie to compel the Commissioner to reopen the case, since upon the entry of such final order L. would have the right of appeal to the court of appeals. Id.

MATERIAL. See Patentability, 3.

MECHANICAL ADVANTAGE OF DESIGN. See Designs.
MECHANICAL SKILL. See Claims, 5; Invention, 4, 5, 6.

MERITS OF THE CASE. See Examination of Applications, 4; Motion to Dissolve Interference, 9, 19; Reopening of Rejected Applications, 1.

METHOD. See Patentability, 3, 4.

MISTAKE. See Motion to Amend Preliminary Statement, 3.
MONOPOLY. See Trade-Marks, 22, 25, 26, 107, 108.

MOTION TO AMEND AN APPLICATION. See Interference, 34.
MOTION TO AMEND PRELIMINARY STATEMENT. See Interference, 12.
1. INTERFERENCE-AFFIDAVITS.-C.'s motion to amend his preliminary state-
ment was denied by the Examiner of Interferences. He then renewed
his motion and filed additional affidavits. This motion was dismissed.
Held that on appeal from the former decision the affidavits filled with
the renewed motion will not be considered. (Borg v. Strauss, C. D.,
1907, 320; 130 O. G., 2719.) Curtis v. Hedlund, 27.

2. SAME-SAME-SHOWING INSUFFICIENT.-It appeared that the drawings
and records of the inventor were arranged in classes and that the draw-
ing now relied upon to support the proposed amended preliminary state-
ment was in its proper class and might have been found when the origi-
nal preliminary statement was prepared had the search of the records
extended to that class and that such search was made only after a
decision on a motion to shift the burden of proof which changed the
relation of the parties. Held that the motion to amend was properly
denied. Id.

3. SAME PRELIMINARY STATEMENT.—Where in support of a motion to
amend his preliminary statement a party alleges that at the time it was
made he thought the claims were limited to the structure shown in his
drawing and did not discover that they were capable of a broader con-
struction until after a decision was rendered on a motion to dissolve,
Held that such a mistake is one of law and not of fact and constitutes
no ground for permitting the amendment. Ryder v. White, 136.
4. SAME-SAME.-Where a party has had access to the preliminary state-
ment of his opponent, he will not be permitted to amend his statement
to change the date of conception or of reduction to practice from a
date subsequent to that alleged by his opponent to one prior to such
date unless most satisfactory reasons are given in explanation of the
facts necessitating such amendment and of the delay in bringing a
motion to amend. Id.

MOTION TO DISSOLVE INTERFERENCE. See Appeal to the Court of
Appeals of the District of Columbia; Brief, 1; Interference, 9, 34:
Supervisory Authority of the Commissioner of Patents; Trade-Marks, 47.

1. TRANSMISSION.-A motion to dissolve should not be transmitted where
it appears that the moving party had had an opportunity to bring
a motion to dissolve on the same ground in a prior interference in-
volving the same counts. Townsend v. Thullen v. Young, 15.
2. SAME.-A motion to dissolve on the ground of the non-patentability of
the issue was refused transmission on the ground that the moving
party had had an opportunity to bring such motion in a prior interfer-