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Held that a subsequent motion alleging that a new party to the interference had no right to make the claims based on the same ground as the prior motion should not be transmitted. Id.

3. SAME.-The decision in Gold v. Gold, (C. D., 1908, 377; 131 O. G., 1422) and Rockstroh v. Warnock (C. D., 1908, 10; 132 O. G., 234) construed and Held not to authorize the transmission, as a matter of course, of an amended motion to dissolve filed within the limit of appeal from a decision refusing to transmit a defective motion, but only where it does not appear from the record that such original motion was not brought in good faith. McQuarrie v. Manson, 77.

4. SAME.-A decision of the Examiner of Interferences transmitting a motion to dissolve will not be disturbed merely because the motion was filed more than thirty days after the preliminary statements of the parties were approved, but only where it is shown that there has been a clear abuse of discretion by the Examiner of Interferences in transmitting such motion. Thiem v. Bowen, 102. 5. SAME.

NON-PATENTABILITY OF ISSUE-EX PARTE AFFIDAVITS-TRANSMISSION REFUSED.-A motion to dissolve an interference on the ground that the issue is not patentable, based upon ex parte affidavits, should be refused transmission. Barratt v. Swinglehurst, 121.

6. DELAY IN BRINGING MOTION-DELAY EXCUSED.-A delay of about six weeks in bringing a motion to dissolve, alleging non-patentability of the issue in view of a foreign patent, excused where the issue related to a knitted fabric and it appeared that the moving party had made a search through the patents in the United States Patent Office, in the classes where he thought the device of the issue should be found, and then communicated with various foreign manufacturers, inquiring about the novelty of the invention in issue, and finally learned by this means of the patent on which the motion was founded, which relates primarily to a knitting-machine capable of producing the fabric of the issue and not to the fabric itself. Id.

7. TRANSMISSION-INDEFINITENESS.-Where a motion for dissolution refers only to "the old form of hickey" as evidence of unpatentability and merely alleges irregularity in the declaration, without showing wherein it consists, Held that the motion is too indefinite, and transmission thereof on these grounds was properly refused. Joseph v. Kennedy v. McLain, 122.

8. SAME.-Where the applications involved in an interference were involved in a prior interference, Held that a motion to dissolve was properly refused transmission as to any grounds which were or might have been raised on a motion to dissolve in the prior interference. Colburn and Washburn v. Hitchcock, 141.

9. SAME.-A motion to dissolve on the ground of irregularity in the declaration of the interference was properly refused transmission where the ground relied on to show irregularity raises a question which relates to the merits of the case. Id.

10. ADDITIONAL Ground of IRREGULARITY RAISED ON APPEAL.-Points alleged to constitute irregularity in the declaration of an interference and raised for the first time in the brief filed at the hearing on appeal from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve can receive no consideration. Id. 11. INOPERATIVENESS-TESTIMONY.-A motion to take testimony before the Primary Examiner on the question of inoperativeness of an opponent's device, Held properly refused transmission, since such testimony should

be taken, if at all, in accordance with the practice outlined in Pym v. Hadaway (C. D., 1906, 488; 125 O. G., 1702) and presented before the Examiner of Interferences at final hearing. Gibson v. Kitsee, 146. 12. COUNTS ADDED UNDER RULE 109.-Rule 109 does not permit the transmission of a motion to dissolve relating to counts added under its provisions merely because a party alleges surprise that the claims were held patentable to his opponent. Id.

13. RENEWAL MOTIONS-APPEAL-PIECEMEAL ACTION.-Where a motion to dissolve embodying two grounds is denied transmission as to both, Held that the grounds may not be separately prosecuted, one by direct appeal and the other by renewal motion and subsequent appeal. Wil liams v. Webster v. Sprague, 200.

14. SAME-SAME. The bringing of a renewal motion waives the right of appeal from the decision on the original motion. Id.

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15. TRANSMISSION.-A motion to dissolve, alleging no interference in fact on account of the meaning' which it is contended should be given a certain term, is too indefinite to be transmitted where this term does not occur in all the counts and it is not stated to which of the counts the motion is intended to apply. Baetz v. Kukkuck, 230.

16. SAME. An allegation in a motion to dissolve that the opposing party has no right to make the claims "since the issue covers an invention not contemplated nor disclosed by him in the original specification (Rule 70)," Held not a sufficiently definite statement of the reasons upon which the motion is based and transmission of the motion properly refused. Id.

17. SAME.-A motion to dissolve on the ground of the lack of right of the opposing party to make the claims was properly refused transmission where the motion did not specifically state what elements of the claims were not shown. Id.

18. RENEWED MOTION-APPEAL.-Where transmission of a motion to dissolve is refused and an amended motion is filed, appeal from the decision refusing to transmit the original motion is abandoned. Lotterhand v. Cornwall, 232.

19. TRANSMISSION-INFORMALITY.-A motion to dissolve, alleging informality because the claims in issue are for incomplete combinations when read on the opposing party's disclosure, was properly refused transmission, since this question is one relating to the merits. Id. 20. SAME-APPLICATION OF REFERENCES.-A motion to dissolve on the ground of non-patentability of the counts of the issue should be refused transmission unless the patents relied upon are specifically named and applied. Id.

21. SAME. It is well settled that the transmission of motions to dissolve is left largely to the discretion of the Examiner of Interferences and that where he grants a motion to transmit his decision will be disturbed only upon a showing of abuse of discretion. Knight v. Cutler, 242. 22. SAME.-Within the time set for bringing motions K. filed a motion to dissolve, which was denied on the ground of indefiniteness. Four days later he filed an amended motion seeking to overcome the indefiniteness of the original motion. On the day of hearing he filed an affidavit in support of the motion, and upon objection by C. the hearing was postponed one week. Held that these facts do not show any abuse of discretion upon the part of the Examiner of Interferences in transmitting the amended motion. Id.

MOTION TO EXTEND TIME FOR TAKING TESTIMONY. See Trade-Marks, 89, 90.

MOTION TO REOPEN INTERFERENCE TO TAKE TESTIMONY.

1. INTERFERENCE-EVIDENCE-EXHIBIT.-A motion to reopen an interference for the purpose of taking further testimony with respect to a blueprint which is in evidence as an exhibit was properly denied where it appeared that the moving party had had an opportunity during the taking of the testimony to adduce all the material evidence concerning the exhibit and it did not appear that the admission of the proposed testimony would in any way modify the decision. Struble v. Young and Townsend v. Sawyer, 20.

2. SAME

PRACTICE.-On a motion to remand an interference to the Examiner of Interferences to reopen the same and take further testimony, Held that while motions to reopen an interference and take further testimony should generally be heard and determined in the first instance by the Examiner of Interferences (Robinson v. Townsend v. Copeland, C. D., 1903, 327; 106 O. G., 997) it is well settled that in order to Justify remanding the case to the Examiner of Interferences the moving party should make out a prima facie case. (Estes v. Gause, C. D., 1899, 164; 88 O. G., 1336.) Otis v. Ingoldsby and Bowling, 105. 3. SAME-SAME.-The fact that the junior party took no testimony, but relied on his contention that the senior party had no right to make the claims, and the further fact that on appeal the Examiners-in-Chief reversed the holding of the Primary Examiner and the Examiner of Interferences that the senior party had a right to make the claims, Held to constitute no ground for reopening the case to allow the senior parties to take testimony on the question of their right to make the claims, which testimony was in their possession and could have been taken within the time set. Id.

MOTION TO SHIFT BURDEN OF PROOF. See Motion to Amend Preliminary Statement, 2.

MOTION TO TAKE TESTIMONY. See Motion to Dissolve Interference, 11. NAME OF APPLICANT. See Trade-Marks, 61, 84, 96, 97.

NEW CLAIMS. See Abandonment of Applications, 4, 9; Amendment, 5; Appeal;
New Matter; Reopening of Decided Cases; Reopening of Rejected
Applications.

NEWLY DISCOVERED EVIDENCE. See Interference, 12, 16, 17, 26.
NEW MATTER.

See Reissues, 1, 2.

PATENTABILITY CLAIMS BASED ON THEORY OF OPERATION NOT ORIGINALLY DISCLOSED.-Where an application as originally filed did not differentiate from the prior art either in construction or theory of operation and an amendment thereto was filed, without verification by the inventor, introducing a new theory of operation and containing process claims covering such theory, such claims are invalid as covering new matter. **Steward et al. v. American Lava Company et al.; Kirchberger et al. v. American Lava Company et al., 557.

NEW OATH. See Oath.

NEW RESULTS. See Invention, 6.
NEW USE. See Invention, 4, 5, 13.
OATH. See Perjury.

DELAY IN FILING APPLICATION-AFFIDAVITS TO SHOW DATE OF EXECUTION.Affidavits tending to show that the oath in an application was executed later than it purported to be executed Held insufficient to excuse filing

a substitute oath under the practice laid down in ex parte Branna (C. D., 1901, 232; 97 O. G., 2533,) but rather to constitute an additional reason for requiring a new oath. Ex parte Tillman, 144.

OLD DEVICES. See Invention, 4, 12, 13.

OPERATIVENESS. See Abandonment of Applications, 8; Examination of Applications, 4; Motion to Dissolve Interference, 11; Reduction to Practice, 4.

OPPOSITION TO REGISTRATION. See Trade-Marks, 11, 18, 38, 43, 66, 75, 94, 98, 99, 103, 105.

ORIGINAL DEVICE. See Interference, 29.

OWNERSHIP. See Access to Pending Applications, 2, 3; Trade-Marks, 2, 19. PARTNERSHIP.

See Interference, 36.

PATENTABILITY. See Amendment, 1, 2, 3; Bill in Equity Under Section 4915, Revised Statutes; Construction of Claims, 1; Construction of Specifications and Patents; Designs; Examiner's Decision to be Respected by His Successors; Interference, 23, 25, 35; Invention; Jurisdiction of the Court of Appeals of the District of Columbia; Motion to Dissolve Interference, 2, 5, 6, 7, 20; New Matter; Rejection of Claims, 2. 1. FUNCTIONS OR RESULTS NOT PATENTABLE.—It is a well-settled law that a patent cannot issue for a result sought to be accomplished by the inventor of a machine, but only for the mechanical means or instrumentalities by which that result is to be obtained. One cannot describe a machine which will perform a certain function and then claim the function itself and all other machines that may be invented by others to perform the same function. In re Gardner, 306.

2. NON-INVENTION-SHELF-Bracket — CHANGE IN FASTENING.-A shelfbracket having a brace pivotally secured to the bracket at one end, so that it can be swung aside while securing the bracket to the wall and shelf, Held lacking in patentable invention in view of a prior patent disclosing a bracket having a brace arranged to be attached to the bracket after the latter is secured in position. * In re Berger, 320. 3. METHOD OF BRIDGE-BUILDING MATERIAL USED DOES NOT AFFECT PATENTABILITY OF THE CLAIMS.-It makes no difference in considering the patentability of the "method" claim of what materials the bridge is made. * In re Luten, 402.

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4. PROCESS OF Making ALDEHYDES.-A process of producing aldehyde which consists in inducing a reaction between hydrocarbon and oxygen and abstracting the excess heat therefrom" Held not patentable in view of the prior art, which shows that it was old to produce formic aldehyde both from methyl alcohol and hydrocarbon and that applicant's method of extracting heat from the reaction-chamber was also old. In re Blackmore, 428.

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5. SAME EFFICACY OF AN APPARATUS IMMATERIAL TO THE QUESTION OF THE PATENTABILITY OF THE PROCESS.-" The fact that appellant has in his possession an apparatus suitable for the production of formic aldehyde in the manner set forth in his specification in larger quantities than any apparatus set forth in the references cited, is immaterial and has no bearing upon the patentability of the process." Id. 6. INVENTION-DUPLICATION OF PARTS.-The provision of two cranes in a boring machine for the purpose of enabling the new work to be hoisted to position simultaneously with the removal of the completed piece, Held to amount to a patentable improvement where the prior art shows only one crane. Ex parte Sears, 198.

7. SAME AGGREGATION.-Where two mechanisms for performing successive operations upon a piece of work are both old in the art, the assembling of these mechanisms upon a unitary support in such manner that the operator may transmit the work from one to the other without changing his position at the machine Held not to involve invention. Ex parte Smith, 214.

PATENTS TO ASSIGNEES. See Assignments, 1, 2.

PERJURY.

1. AFFIDAVIT TO SUPPORT APPLICATION FOR LETTERS PATENT.-The offense of perjury as defined by section 5392, Revised Statutes of the United States, may be predicated upon the oath, declaration, or affidavit subscribed in support of an application for Letters Patent if the party making the oath or making the declaration or affidavit swore falsely with relation thereto or if at the time of making said oath he did not believe the matter or facts set forth therein to be true. United States of America v. Patterson, 257.

2. SAME-WORD "SOLE" MATERIAL.-The use of the word "sole" in the affidavit as subscribed, in connection with the words "original" and "first," has a significant and material bearing in the inquiry which was then being prosecuted before the Commissioner of Patents, and a false oath with reference thereto renders the affiant guilty of perjury. United States of America v. Patterson, 263.

PETITION TO COMMISSIONER OF PATENTS. See Claims, 2; Suggested Claims.

PIECEMEAL PROSECUTION OF MOTIONS. See Interference, 18; Motion to Dissolve Interference, 13, 14.

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POWER OF ATTORNEY. See Attorneys.

1. JOINT APPLICANTS-ORDINARILY Both APPLICANTS MUST JOIN IN POWER"It seems to be well settled that one of two joint applicants cannot appoint an attorney without the concurrence of the coapplicant, except upon a showing of inability to obtain such concurrence (citing ex parte Benjamin and Bailey, C. D., 1892, 85; 59 O. G., 298; ex parte Barrett and Alter, C. D., 1907, 76; 127 O. G., 847.)" Ex parte De Forest and Horton, 64.

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2. CONCURRENCE OF ALLEGED ASSIGNEE-EVIDENCE OF ASSIGNMENT.—A power of attorney given by one of two joint applicants, with the concurrence of an alleged assignee, cannot be recognized in the absence of evidence of the assignment. Id.

PRACTICE IN THE COURTS. See Diligence, 1.

PRACTICE IN THE PATENT OFFICE. See Amendment; Interference, 25, 26; Reopening of Rejected Applications; Trade-Marks, 13, 37, 44, 45, 103.

PRELIMINARY STATEMENTS. See Interference, 12, 19; Motion to Amend Preliminary Statement; Priority of Invention, 2.

1. INTERFERENCE-APPLICATION FILED BY AN ADMINISTRATOR-STATEMENT MAY BE MADE BY ASSIGNEE OF ENTIRE INTEREST.-Where an application was filed by the administrator of an inventor and the entire interest therein assigned, it is not necessary that the preliminary statement be made by the "applicant," but it may be made by the assignee. Lotterhand v. Cornwall, 232.

21895-H. Doc. 124, 61-2-39

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