2. SAME-SAME-RULE 131 CONSTRUED.-Rule 131 relates only to the assignee of an undivided interest, and it is not necessary that the assignee of the entire interest file a motion such as provided for in that rule in order to be allowed to file a preliminary statement. Id.

PRESUMPTION. See Abandonment of Invention, 3, 4; Interference, 2; Priority of Invention, 3; Reduction to Practice, 2; Trade-Marks, 2, 16, 26, 58. PRIMA FACIE CASE. See Motion to Reopen Interference to Take Testimony, 2.

PRINTING THE RECORD.

See Testimony, 5, 6.

PRIOR APPLICATION. See Diligence, 2.

PRIOR INTERFERENCE. See Abandonment of Invention, 5; Interference, 15; Motion to Dissolve Interference, 1, 2, 8.

PRIORITY OF ADOPTION AND USE. See Trade-Marks, 16, 18, 27, 28, 48, 55, 73, 77, 78, 98, 99, 107.

PRIORITY OF INVENTION. See Abandoned Experiments; Abandonment of Invention, 5; Appeal to the 'Court of Appeals of the District of Columbia; Claims, 4; Concealment of Invention; Diligence, 1; Divisional Applications; First and Original Inventor; Interference, 6, 7, 14, 20, 22, 23, 24, 30, 31, 32, 33, 35, 36, 37, 38; Joint Applicants, 1; Jurisdiction of the Court of Appeals of the District of Columbia; Patentability, 2; Reduction to Practice, 6, 7; Suits for Infringement, 1.

1. DILIGENCE.-T. filed an application December 17, 1896. W. conceived the invention January 10, 1896, made working drawings thereof in the fall of 1896, reduced the invention to practice in April, 1897, and filed his application March 11, 1898. Held that W. was not exercising diligence at the time that T. filed his application and subsequently thereto and that T. was therefore the first inventor. Automatio Weighing Machine Company v. Pneumatic Scale Corporation, Limited, 498.

2. INTERFERENCE JUDGMENT BY DEFAULT-DISCRETION OF THE COMMISSIONER.-Judgment of priority was rendered against C. because of his failure 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. * Churchill v. Goodwin, 336.

3. SAME CIRCUMSTANCES AND PRESUMPTIONS.-P. filed his application for a cable-hanger after he had obtained knowledge, through an interference, of H.'s application. He claimed to have conceived the invention in issue and reduced it to practice at the same time that he invented a similar device shown in an earlier application on which he obtained a patent. Held that P., being a manufacturer of cable-hangers, an inventor, and highly skilled in the art, was certainly in a position to understand and fully appreciate the value of such device, and it was inconceivable that he should have failed to disclose it in his earlier application if he actually had conceived it and embodied it in concrete form. Peirce v. Hiss, Jr., 356.

4. DELAY IN FILING APPLICATION AFTER REDUCTION TO PRACTICE.—In the absence of evidence showing actual abandonment of the invention a mere failure to file an application for patent for about four years will not be considered as an estoppel by concealment within the meaning

of Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86) and Warner v. Smith (C. D., 1898, 517; 84 O. G., 311; 13 App. D. C., 111.) Rolfe v. Kaisling v. Leeper, 393.

5. EVIDENCE-ALLEGED DISCLOSURE TO OPPOSING PARTY-FAILURE TO TESTIFY.-Where a party to an interference testifies that he described to the opposing party certain experiments which he had made involving the invention of the issue and it appears that such party at the time of such disclosure was highly skilled in the art and that prior thereto he was not in possession of the invention, the failure of such party to testify in his own behalf justifies the conclusion that the testimony is true. Id. PRIOR PATENTS.

See Continuous Applications; Delay in Filing Application;
Patentability, 2; Priority of Invention, 3.

PRIOR PROCEEDINGS. See Interference, 6; Suits for Infringemeni,
PROCEEDINGS AT THE PATENT OFFICE.

PROCESS. See Patentability, 4.

See Trade-Marks, 44.

PROCESS AND APPARATUS. See Abandonment of Invention, 2; Claims, 1; Construction of Claims; Construction of Specifications and Patents, 1; Interference, 7; Patentability, 1, 5; Term of Patent, 1.

PROCESS AND PRODUCT. See Division of Applications, 3.

PROCESS OR METHOD. See Invention, 6, 7.

PROPERTY RIGHTS. See Trade-Marks, 28, 30, 39, 40.
PROSECUTION OF APPLICATION.

of Applications, 2.

See Amendments, 1, 2, 3; Examination

PUBLICATION OF TRADE-MARKS. See Trade-Marks, 62.
PUBLIC POLICY. See Trade-Marks, 5.

PUBLIC USE AND SALE.

LICENSE-TEST.-The fact that a license was taken out to make cigars on the premises where a cigar-making machine was being tested and that some of the cigars made were actually sold Held not to establish a public use of the machine where it appeared that the place where such tests were made was a machine-shop and not a cigar factory, the license being taken out in order to be able to make actual tests with tobacco, and that the machine was operated primarily for the purpose of developing imperfections in the machine and that many minor changes were made therein. Lacroix v. Tyberg, 215.

PUBLIC-USE PROCEEDINGS.

1. HEARING-BRIEFS-PRACTICE.-In public-use proceedings after the filing of protestant's testimony it is customary merely to set a time within which the parties, the protestant as well the applicant, may file briefs with the Primary Examiner, and it is not the practice to set a case down for oral hearing. In re Henry, Jr., 40.

2. ORAL HEARING NOT GRANTED. The protestant will not be permitted to appear before the Primary Examiner and argue orally the pertinency of the evidence taken in the public-use proceedings, even though the protestant had knowledge of the application by reason of the fact that he had been involved in an interference proceeding with such application. Id.

REBUTTAL TESTIMONY. See Abandonment of Invention, 4; Interference, 16, 17, 26; Testimony, 1.

REDUCTION TO PRACTICE. See Affidavit Under Rule 75, 1; Concealment of Invention; Delay in Filing Application; Diligence, 2; Divisional Applications; Interference, 3, 4, 19, 22; Invention, 1; Priority of Invention, 4.

1. INTERFERENCE-WHAT CONSTITUTES.-Decisions involving this oftenlitigated question of actual reduction to practice may be divided into three general classes. The first class includes devices so simple and of such obvious efficacy that the complete construction of one of a size and form intended for and capable of practical use is held sufficient without test in actual use. The second class consists of those where a machine embodying every essential element of the invention, having been tested and its practical utility for the intended purpose demonstrated to reasonable satisfaction, has been held to have been reduced to practice, notwithstanding it may not be a mechanically-perfect machine. The third class includes those where the machine is of such a character that the particular use for which it is intended must be given special consideration and requires satisfactory operation in the actual execution of the object. *Sydeman and Meade v. Thoma, 340.

2. SAME CIRCUMSTANCES.-In cases falling within the second and third classes described long delay in putting the machine in actual use for the intended purpose has always been regarded as a potent circumstance in determining whether the test was successful or only an abandoned experiment. *Id.

3. SAME. Where the object of an invention was "the production of apparatus for rapidly and efficiently treating textile fabric coated with a rubber or gutta-percha compound or composition to the end that the coating may be temporatrily softened or rendered 'tacky' in order that the fabric may be readily applied to other objects such as insoles for boots and shoes," Held that a machine which the witnesses stated "worked too slow to be put into a shoe-shop" and which was subsequently remodeled was not a reduction to practice thereof. *Id. 4. SAME

MAKing of Device SUFFICIENT.—The making of a sample ringingkey for a four-party telephone-line Held to constitute a reduction to practice, as the operativeness of the device would be apparent to any one skilled in the art, there being little in the key that was new, and several witnesses who examined it carefully having pronounced the invention a success. *Connor v. Dean, 370.

5. SAME

TEST-SIMPLE DEVICES.-The mere construction without test of an electrical-circuit protector comprising means operable upon an excess of current for protecting the circuit and having provision whereby it is automatically reset and resoldered in reset condition Held to constitute a reduction to practice in view of the condition of the prior art. *Rolfe. v. Kaisling v. Leeper, 393.

6. SAME-SAME.-The making of drawings of a cutter-head for a planing machine and the disclosure of the invention to others Held not sufficient to entitle the inventor to an award of priority as against one later to conceive, but first to reduce the invention to practice. *Nelson v. Faucette, 415.

7. SAME PRIORITY-TESTIMONY.-Testimony as to the test of a gas-mantle Held insufficient to establish that such mantle was a reduction to practice where the witnesses content themselves with saying that the experiments were satisfactory and neither the inventor nor the officers of the assignee company who testified were expert mantle-makers and none of the expert workers in the factory were called to testify. *Daggett, Jr., v. Kaufmann, 444.

8. SAME-SAME-INVERTED Gas-Mantle-NOT A SIMPLE DEVICE.-A mantle for an inverted gas-lamp is not such a simple device that the mere construction thereof without a test to demonstrate its efficacy constitutes a reduction to practice. *Id.

REFERENCES. See Affidavits under Rule 75, 1; Amendment, 1, 2, 4; Exam ination of Applications, 1, 3; Interference, 6; Motion to Dissolve Interference, 20; Rejection of Claims, 2, 3.

REGISTRABILITY. See Trade-Marks, 1, 3, 4, 5, 6, 7, 10, 20, 23, 24, 27, 29, 30, 31, 32, 33, 41, 52, 53, 54, 60, 61, 63, 65, 70, 73, 74, 75, 76, 79, 81, 82, 83, 84, 88, 93, 98, 99, 102, 103.

REGISTRATION. See Labels and Prints; Trade-Marks, 2, 11, 13, 16, 17, 22, 42, 58.

REGISTRATION BY RESIDENTS OF THE PHILIPPINE ISLANDS. See Trade-Marks, 95.

REISSUES. See Appeal to the Court of Appeals of the District of Columbia; Interference, 14, 15.

66

1. MUST BE FOR THE "SAME INVENTION "-SECTION 4916, REVISED STATUTES.— The phrase same invention" in section 4916, Revised Statutes, relating to reissues of patents, has been repeatedly defined by the courts to mean whatever invention was described in the original Letters Patent and appears therein to have been intended to be secured thereby. (Walker on Patents, sec. 233.) By "new matter" is meant "new substantive matter," such as would have the effect of changing the invention or of introducing what might be the subject of another application for a patent. (Powder Co. v. Powder Works, C. D., 1879, 356; 15 O. G., 289; 98 U. S., 126; Parker & Whipple Co. v. Yale Clock Co., C. D., 1887, 584; 41 O. G., 811; 123 U. S., 87; Corbin Cabinet Lock Co. v. Eagle Lock Co., C. D., 1893, 612; 65 O. G., 1066; 150 U. S., 38.) *Nelson v. Felsing and Felsing v. Nelson, 358.

2. IDENTITY OF INVENTIONS CLAIMED HOW DETERMINED.-In the consideration of the right to make claims in a reissue it is not to be concluded that what was suggested or indicated in the original specification, drawing, or Patent Office model is to be considered as a part of the invention intended to have been covered by the original patent unless it can be seen from a comparison of the original patent and the reissue that the invention which the original patent was intended to cover fairly expresses the things suggested or indicated in the original specification, drawings, or Patent Office model and unless the original specification indicated that those things are embraced in the invention intended to have been secured by the original patent. *Id.

3. MERE DISCLOSURE IN DRAWING NOT A SUFFICIENT INDICATION OF INTENT TO CLAIM.-Where the original specification is silent as to matters sought to be covered by a reissue application, although the drawings might be construed to disclose the same, there is no sufficient indication of intention in the original patent to claim such an invention; but where the patent shows and describes a construction and claims it in general terms the reissue applicant is not barred from making a claim in specific language to such construction because he failed to designate such construction by that specific language or because he attributes to it a function additional to that which was originally attributed thereto. (In re Briede, C. D., 1906, 677; 123 O G., 322; 27 App. D .C., 298, distinguished.) *Id.

REJECTION OF APPLICATION. See Examination of Applications, 1; TradeMarks. 18.

REJECTION OF CLAIMS. See Abandonment of Applications, 1, 4, 8; Construction of Claims, 1; Examination of Applications; Examiner's Decision to be Respected by His Successors; Final Rejection of Claims; Interference, 25; Reopening of Rejected Applications; Suggested Claims, 2.

1. CLAIMS-FUNCTIONAL-REMEDY BY APPEAL.-In all cases where the Examiner holds a claim otherwise clear and intelligible to be functional— that is, for a function merely or because it fails to include sufficient mechanical elements to effect the function expressed in the claimthe action of the Examiner shall be a rejection of the claim upon the ground that the claim does not point out the invention with sufficient particularity and distinctness to meet the requirements of section 4888, Revised Statutes. The rejection shall at the same time include all of the grounds enumerated in Rule 133 that the Examiner thinks applicable. Applicant's remedy is by way of appeal successively to the Examiners-in-Chief, the Commissioner, and the Court of Appeals of the District of Columbia. E parte Bitner, 32.

2. RECOMMENDATION OF THE EXAMINERS-IN-CHIEF—ACTION BY PRIMARY EXAMINER-REOPENING OF THE CASE.-Where the Examiners-in-Chief stated that a claim was patentable over the references cited against it, but recommended that it be rejected upon another reference, and the Examiner rejected the claim on this reference, Held that while this action reopened the case such reopening was merely as to the subjectmatter of the rejected claim. Ex parte Dieterich, 82.

8. SAME-APPEAL.-Where on appeal from the rejection of certain claims the Examiners-in-Chief hold that the references cited are insufficient to anticipate the claims, but call attention to certain other references and suggest that the Examiner reject the claims thereon and the Examiner does so reject the claims, Held that appeal from this action lies to the Examiners-in-Chief in the first instance. Ex parte Motsinger, 101.

REMEDY. See Claims, 2; Jurisdiction of the Courts Over Practice in the Patent Office; Mandamus, 1; Rejection of Claims, 1; Trade-Marks, 77, 79.

RENEWAL OF FORFEITED APPLICATIONS. See Abandonment of Invention, 1.

RENEWED MOTIONS. See Motion to Dissolve Interference, 13, 14, 18.
REOPENING OF DECIDED CASES. See Trade-Marks, 87.

REOPENING CASE AFTER APPEAL.-An inventor is presumed to know the
essence of his invention before it is filed, certainly before it has been
prosecuted through an appeal, and the mere statement that a certain
feature has been found to be important is not a showing of sufficient
cause to justify reopening the case to admit new claims. Ex parte
Wagner, 241.

REOPENING INTERFERENCE TO TAKE TESTIMONY. See Interference, 16, 17; Mandamus, 2; Motion to Reopen Interference to take Testimony; Trade-Marks, 89, 90, 94.

REOPENING OF REJECTED APPLICATIONS. See Rejection of Claims, 2. 1. PRACTICE-FINAL ACTION.-Where one petition for the entry of an amendment for the purposes of appeal or for reconsideration of the merits, at the discretion of the Examiner, has been granted and the Examiner in entering the amendment indicates that it is done for the purpose of appeal, Held that the applicant is not in a position to urge