It was said that if such a motion be granted the senior party would go to patent and the junior party would be rejected upon the senior and might then file affidavit and demand an interference. At most, public use could be a reason for suspension only.

In Campbell v. Brown (C. D., 1891, 154; 56 O. G., 1564) it was held that the progress of an interference should not be interrupted to determine such question as that of public use, unless for extraordinary and amply sufficient reasons.

In Chase v. Ryder (C. D., 1892, 219; 61 O. G., 885) it was said that priority is the one question in an interference, and that it ought to be tried to a final issue, leaving questions of abandonment or public use or proper parties to be decided at the proper time.

(3.) Petitions and protests bringing up the question collaterally.

In the case of Milligan v. Niedringhaus and Niedringhaus (31 MS. Dec., 214) both interference and public use proceedings were in progress, and Milligan had taken his testimony, while Niedringhaus and Niedringhaus rested upon the record. Milligan requested hearing and disposi tion of the interference, whereupon Niedringhaus petitioned that both public use and priority be heard and decided at the same time. In a general discussion the Commissioner reached the conclusion that as a rule it is better to proceed with the interference proceedings and then take up the public-use question.

In Toundorff v. Kuhn (31 MS. Dec., 260) the Commissioner could find no good reason for inquiry into public use prior to the termination of interference. The only proper way, it was said, would be to suspend, receive and consider testimony and forward to the Primary Examiner for consideration, who, if he should reject, would prepare the way for the full line of appeal, with the possibility of having finally to proceed with the interference.

In Manny v. Smith v. Jones (39 MS. Dec., 482) the moving party furnished affidavits and photographs of convincing character; but Manny's preliminary statement set up by far the earliest date of conception, and therefore the Commissioner refused to dissolve.

The same ruling holds upon the point of joint invention, and in the case of Hicks v. Keating v. Purvis and Bilgram, (C. D., 1887, 40; 40 O. G., 343) quoted with approval in Miller and Miller v. Lambert, (53 MS. Dec., 374,) it was said that

in almost every case the interest of the public will be conserved by letting the case take its regular course to final hearing and award of priority.

It is argued upon the motion that this case is distinguished by the fact that one of the parties is an applicant and the other a patentee; that a decision upon priority cannot affect the patent, and that it would be better, therefore, to consider a suggested statutory bar prior to the interference, so that the expenses may be lessened. To support this certain decisions are cited, the one most in point being ex parte Wheat, (C. D., 1878, 110; 14 O. G., 787.) This was a petition upon the refusal

of the Examiner of Interferences to receive a preliminary statement which did not fully set forth the extent of use under the rule of that time, numbered 53. In the course of the decision the Commissioner said:

If such a use is admitted by an applicant it is fatal to his application under the provisions of section 4886, Revised Statutes, and the interference need not proceed if the applicant's opponent is a patentee.

This apparently was intended to explain the purpose of a requirement of the rule and is not directly in point.

The matter of expense is not sufficiently settled to form a reason for granting the motion. It is merely a possibility that the expense may be lessened.

That the Patent Office has no interest in determining priority of inven tion cannot be granted. If it has granted a patent to one who may not be the first inventor, it is the duty of the Office to proceed with an interference created by the filing of an application for the same invention, unless some clear and unmistakable bar to the application appear, so that it may become a matter of record whether or not the patentee be really the first inventor, a point that may be of great importance to the public.

The present case could have no other argument over the decisions but that the motion has been brought promptly and that no great expense or time has been expended upon the interference. There is, however, a strong objection to this case per se, for where sworn testimony or specific affidavits are not accepted as final and conclusive it is apparent that a mere statement unsupported by any testimony and unexplained by proof does not make out even a prima facie case of public use and certainly offers no reason for reversing an established policy. (Ex parte Beatty, C. D., 1891, 151; 56 O. G., 1563.)

It is, perhaps, possible that so clear and unmistakable a case of public use might arise as would warrant not only suspension but a dissolution of an interference; but this is not such a case.

It is believed, then, to be the proper practice to refuse to stop an interference to allow a party to try to create a bar upon the basis of a disclosure of the interference proceedings. The rule provides only for the use of an already complete bar-a bar independent of the interference proceedings-and there appears to be no good reason for extending the rule.

The decision of the Examiner of Interferences is, therefore, affirmed.

EX PARTE ZUBER.

Decided March 24, 1894.

67 O. G., 529.

1. AMENDMENT-New Matter-PROPER PRACTICE.

When an amendment is filed which in the judgment of the Examiner substantially varies the scope of the application as originally filed and necessitates a change in the drawings, Held that the amendment should be entered and rejected on the ground of new matter and for all other reasons which bar its patentability.

2. SAME-SAME-SAME-THE DRAWINGS.

In such a case the drawings should not be changed unless and until the question of the new matter in the amendment has been determined in favor of the applicant.

ON PETITION.

NUT-LOCK.

Application of Gottlieb Zuber filed June 13, 1892, No. 436,552.

Messrs. Higdon & Higdon & Longan for the applicant.

SEYMOUR, Commissioner:

The applicant offered an amendment on December 1, 1893, substituting a new claim for the claim under a second and final rejection. The Examiner refused to admit the amendment on the ground that it was new matter not shown in the specification or drawings. The applicant desired to change his drawings so that they would correspond with the proposed amended claim; but the Examiner refused to permit any change in the drawings.

The petition is brought that an order may be entered herein directing how and wherein the drawing shall be corrected and directing the Examiner to proceed in the examination of this case upon its merits after proper correction of the drawing has been made.

If it is true that new matter is presented in this claim, affecting its scope, no interlocutory appeal lies from the Examiner to the Commissioner; but the appeal lies to the Examiners-in-Chief. (Ex parte Suter, C. D., 1892, 112; 59 O. G., 1431.) The amendment should be received not because it is not new matter, upon which no opinion is expressed, but because that question goes to the merits and should be decided by the Primary Examiner in such form that an appeal would lie to the Examiners-in-Chief.

In this case the drawings should not be changed unless and until the Examiner or an appellate tribunal decides that the amended claim is not a material addition to or variance from the original, and that it does not enlarge the scope of the application as filed. (Chicago and N. W. Ry. Co. v. Sayles, C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554, 563.) In a case where the proposed change goes to the merits, as enlarging the scope of the application, it is the duty of the Examiner to decide

that point and also the alternative question whether the claim as amended presents patentable subject-matter in all other respects, to the end that upon appeal the Examiners-in-Chief may have the neces sary references before them which would enable them to judge of the question of novelty in case they should differ from the Examiner upon the question of the right to amend as proposed.

Let the amendment be received for the purpose of its consideration on the merits.

GLIDDEN v. BUSELL.

Decided March 21, 1894.

67 O. G., 675.

1. INTERFEREnce-ReductION TO PRACTICE-EXPERIMENTAL MACHINE IS NOT. Where one of the parties to an interference had first made a machine upon which the issue can be read, but which was inoperative and was dismantled and not assembled until and excopt for the purpose of the interference, and, furthermore, after such dismantling the party continued to experiment in that line with other devices and finally was only successful by substituting in his machine a device of another inventor, Held that the first machine was an experiment and not a reduction to practice.

2. SAME-SAME-SAME-PRIORITY.

Glidden constructed, in 1886, a heel-trimming machine in which the randknives were connected with the hollow heel cutter shaft by a flexible coil-shaft, and with it trimmed and randed a few heels. It was treated as an experimental machine, was dismantled, and never assembled until it became necessary for the purposes of this interference. He experimented with other devices for driving the rand-cutter, and adopted finally the "Winter invention," a small shaft with a universal joint, by which the rand-cutter was driven, Held that the flexible-wire coil-shaft is not such a conuection for the rand-cutter and the cutter-head as completes the invention, and that the 1886 machine was experimental and does not afford the basis of a judgment of priority in favor of Glidden as against Busell's patent.

APPEAL from the Examiners-in-Chief.

HEEL-TRIMMER.

Application of Charles W. Glidden filed June 2, 1888, No. 275,880. Patent granted James H. Busell October 9, 1888, No. 390,750.

Messrs. Crosby & Gregory and Messrs. Lange & Roberts for Glidden. Messrs. Maynadier & Beach for Busell.

SEYMOUR, Commissioner:

This is an appeal taken by Glidden from the decision of the Examiners-in-Chief, reversing the decision of the Examiner of Interferences and awarding priority of invention in favor of Busell.

The issue in interference is as follows:

1. In a heel trimming machine, a rotary heel cutter, a recessed rand guard, and a rotary rand cutter having its blades projecting outwardly between the blades of the

rotary heel cutter adjacent to the rand guard whereby the position of the rand guard, with its cutter and the rotary heel cutter, may be changed relatively to expose more or less of the acting edges of the blades of the heel cutter as the contour of the heel being trimmed varies.

2. In a heel trimming machine, the combination with a rotary heel cutter, of a rotary rand cutter and a rand or counter guard, both located at the end of the heel cutter, and both together made movable in substantially the line of the axis of the said heel cutter, and with relation to the end thereof, to uncover more or less of the heel cutter blades as the rear of the heel is being trimmed.

This interference is between Glidden's application filed June 2, 1888, and the patent of Busell, issued October 9, 1888, upon an application filed December 18, 1886, for the same invention.

The case turns upon the question of Glidden's alleged reduction to practice in and by what is known in this record as "Glidden's 1886 machine," and both parties base their arguments upon this proposition. Before either of the applications was filed machines for trimming heels were old. A separate machine was used for randing. The attention of manufacturers and inventors was directed toward the combination of the trimming and randing devices in one machine, such that heels of any form, and particularly of the ogee or Pompadour style, could be randed and trimmed at the same time. It was believed by many that such a machine could be devised. It was recognized as a thing much to be desired, and invention took two paths toward its object. The one was to employ in a heel-trimming machine the ordinary heel-cutter with a recessed rand-guard covering that part of the cutterknives not brought into use for trimming the lowest part of the heel. The lip of the rand guard fitting in the rand-crease yields under the mild pressure applied to it by turning the heel, uncovering more of the cutter-knives, as when the shoe was turned in position so that the rear of the heel with its greatest curve was presented to the knives, and as the position of the shoe was further changed so as to turn the other side of the heel the rand-guard by a spring was brought back gradually to its first position, again covering all that part of the heel-cutter knives, not needed when the lowest part of the heel was trimmed. The rand cutter was placed between the cutter-knives of the heel-cutter so as to run close to the edge of the rand-guard and was driven by a small shaft within the hollow shaft driving the heel-cutter, to which it was attached by a pin through a slot, a spring holding this small randknife shaft to its innermost position by a moderate tension, but allowing it to yield precisely with the motion of the raud-guard when more of the cutter-knives was uncovered. The hub upon which the rand-knives are carried is so attached to the rand-guard that the rand-knives always run close to the edge of the rand-guard, whatever the position of the rand-guard may be. In this device the rand-guard yields axially when uncovering more or less of the cutter-knives.

The other path which invention took in this matter resulted in a machine which gave the rand-guard and the rand-knives a combined