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REISSUES-Continned. 6. AMENDMENT WITHIN THE SCOPE OF THE ORIGINAL INVENTION-EXPANSION OF

CLAIMS--No NEW OATH-Where the amendment of the application as first filed is within the scope of the original invention, no charge of undue expansion can be sustained and no new oath is necessary because the amendment introiluces no new invention. The rule of law in Railway Co. v. Sayles (C.D., 1879, 319; 15 0. G., 243; 97 U. S., 554) that an amendment seeking to introduce a material variation in the original application cannot be allowed is

not applicable where it introducos no new matter. "Id. 7. UNDUE EXPANSION BY THE WORD“ PREFERABLY"--Where the original patent

made no reference to an alternative construction of the device wherein one of the elements might be omitted, while the reissue merely retains the said element, “preferably," as another form of the device, Held that the effect of the insertion of the word “preferably" was to render this element non

essential and unduly to expand the original. "Olin et al. v. Timken, 645. REJECTED CASES. See abandonment, 1;'Amendments, 2, 3; Interference, 19. REJECTION FOR INDIVISIBILITY-APPEAL-A rejection may be given upon a patent

granteil to the same inventor npon an application which was pendhig concurrently with the application containing the rejected claim, and such rejection is, like all others, appealable to the Examiners-in-Chief. Ex parte

Hulbert, 1. REJECTED CLAIMS. See Construction of Specifications and Patents, 4, 16, 18; Inren

tion, 2, 12; Reissues, 3, 4; Supreme Court of the District of Columbia, 1. 1. SECTION 4914, REVISED STATUTES OF THE UNITED STATES—THE REVISION OF

THE COURT OF APPEALS CONFINED TO THE POIxts SET FORTH IN THE REASONS OF APPEAL-The action of the Commissioner of Patents in reject. ing a claim for the striker plate in another application by the same inventor, but which rejection was acquiesced in by the applicant, Held not to be reviewable on appeal from a decision of the Commissioner rojecting a claim in this application for the coinbination of the striker-plate and coor or

casing. "In re Forg, 138. 2. LACK OF INVENTION AND ANTICIPATION, DIFFERENCE BETWEEN-Complete

anticipation is rare, and to reject a claim on the ground that it is substantially inet by a reference is practically the same as to reject it on the ground of lack of invention in view of the reference, such differences as remain not involving invention. The two grounds of rejection, as applied to this case, are the same subject-matter of thought viewed from different points. Ex

parte Fergusson, 6. RENEWAL OF FORFEITED CASES. RENEWAL OF FORFEITED APPLICATIONS—The right of an applicant to renew a

forfeited application under section 4897 is exhausteil when once exercised.

+ Decisions of the Secretary of the Interior, 111. RES ADJUDICATA. Soe Prior Adjudication; Suits for Infringement, 1. RESULTS. See Infringement, 11; Particular Patents. 92. SALE OF PATENTED ARTICLES. See Public Appreciation Evidence of Inrention;

Use and Sale of Patented Articles. SECTION 4915, REVISED STATUTES. See Supreme Court of the District of Columbia. SERVICE OF PROCESS. See .188ignments, 2, 3. STIPULATION. See Suits for Infringement, 5. SUBSEQUENT PATENTS. See Abandoned Applications; Abandoned Experiments, 2;

Particular Patents, 6, 21, 76, 90. 1. EARLIER AND LATER PATENTS FOR THE SAME INVENTION TO THE SAME

INVESTOR-Of two patents for the same invention issuell to the same inventor the later is void. (Suffolk Company y, Hayden, 3 Wall., 315; James SUBSEQUENT PATENTS-Coutinued.

v. Campbell, C. D., 1882, 67; 21 O. G., 337; 104 U. 8., 382; Mosler Safe Co. v.
Mosler, C.D., 1888, 420; 43 O. G., 1115; 127 U. S., 355; McCreary v. Pennsylvania
CanalCo., C.D., 1891, 539; 57 0.G., 1131; 141 U. S., 467; Underwood v. Gerber,
C.D., 1893, 310; 63 0.G., 1063; 49 U. S., 224. *Miller et al. v. Eagle Manufac-

turing Company, 147. 2. THE REASON FOR THE RULE ESTABLISHED BY THE ABOVE-CITED CASES—The

reason for the rule established by the above-cited cases is that the power to create a grant is exhausted by the first patent, and for the further reason that a new and later patent for the same invention would operate to extend or prolong the monopoly beyond the period allowed by law. (Odiorne v,

Amesbury Nail Factory, 1819, 2 Masou, 28; 1 Robb, 300.) *IN. 3. THE RESULT OF THE FOREGOING AND OTHER AUTHORITIES OX THIS POINT OF

LAW-IXDIVISIBLE VERSUS INDEPENDENT INVENTIONS—The result of the authorities on this point of law is that no later patent can be issued for an invention actually covered by an earlier patent, especially to the same patentee, although the terms of the claims in the two patents may differ anal the later patent may contain the broader claims, but that where the later pateut covers matter described in the earlier patent, which, however, is essentially distinct and separable from the invention covered by the earlier pat

ent and claims made thereunder, its validity may be sustained. "Id. 4. SAME-MUST BE INDEPENDENT INVENTIOXS, Not MERE DIFFERENCE IN THE

BREADTH OR SCOPE OF THE CLAIMS IN THE Two PATENTS—In the last class of cases just mentioned it must distinctly appear that the invention covered by the later patent was a separable invention, distinctly different and indopendent from that covered by the first patent. It must consist in something more than a mere distinction of the breadth or scope of the claims of each

patent. "Id. 6. THE MATTER OF DivisioN OF AN APPLICATION MAY INVOLVE THE VALIDITY

OF THE PATEXTS ISSUED ON THE DIVISIONS-Nor, in view of the aforecited authorities, cau the proposition be sustained that, whether the invention shall be protected in part of its features by one patent, and as to the rest by another, or sball be coinplotely protected by a single patent, is a matter

whichi concerns solely the Patent Office and the inventor. *Id. 6. SAME-AS TO THE RULE OF LAW THAT PRODUCT AND PROCESS, APPARATUS

AND PRODUCT, AND AN IMPROVEMENT OF A PATENTED DEVICE MAY BE SEPARATELY PATENTED—While it is settled law that a process and its prod. uct, an apparatus and its product, and animprovement on a patented iuvention each may be patented in separate later patents, yet in each case the invention must be clearly distinct from and inilependent of the one previ. ously patented. (Sewall v. Jones, C. D., 1876, 256;.9 0.G., 47; 91 U. S., 190;

Merrill v. Yeomans, C. D., 1877, 279; 11 0.G., 970; 94 U.S., 94.) * Id. 7. SAME-SAME—THE RULE OF NO APPLICATION TO THE PATENTS IN THIS SUIT

The invention covereil by the first patent (No. 222,767) consists in a spring which serves the double purpose of lifiingor holding down the plows at will, the patent thus embracing both the listing and depressing operations, and the latter patent (No. 242,497) consists in the iilentical spring useil for the single purpose of the lifting operation. The subject-matter being the same, no patentable distinction can be drawn between the two patents, and the

rule above announced can bave no application to the case. "Id. 8. SAME-SAME-PATEXTEE ENTITLED TO ALL THE USES OF PATEXTED DEVICE

The invention in the earlier patont covered the means by which the results sought by the later patent were to be accomplished, aud, as it is settled la w that the patentve of a device is entitled to all its uses whether described or not, (Roberts v. Ryer, C, D., 1876, 439; 10 O. G., 204; 91 U. S., 103; Stor v. Chicnyo, C. D., 1882, 131 ; 21 O. G., 790; 101 U. S., 547,) the increased lifting SUBSEQUENT PATENTS-Continued.

effect of the spring sought to be covered in the later patent being clearly shown and described and claimed in the earlier patent, it follows that it

was not the subject of a later patent. "Id. 9. SAVE-EFFECT OF A RESERVATION CLAUSE IN A PATENT-This conclusion is in

no way affected by the reservation attempted to be made in the earlier patent of the "broad idea of a lifting-spring which acts with increased force as the beam rises,” for the reason that the broad idea sought to bo reserved is embodied in identically the same mechanical device constituting the invention and covered by the first patent, which completely occupies all the

ground that was reserved. * Id. 10. SAME—THE Class ix BOTH PATENTS JIGIT HAVE BEEN MADE IN EITHER

The claims in both patents might have been made in either patent, as they covered one and the same invention, and to hold that the second patent, which was for one part of the invention or in its function, after such part or its action had been covered by a prior patent, presents distinct invention, or that both are valid for the same invention, would involve the drawing of vlis.

tinctions too refined for the practical administration of the patent law. * Id. 11. EARLIER AND LATER PATENTS FOR SAME INVENTION-MILLER 0. EAGLE MANU

FACTURING COMPANY CONSTRUED—The decision of the Supreme Court in the case of Miller v. Eagle Manufacturing Company (ante, 147; 66 0. G., 815) interpreted and Held that it did not change the law. It simply declared a second patent void on the plain ground that it was for the same invention as the first, and the effect of it, if sustained, would be to prolong the monopoly beyond the period intended by the patent law. *Fenton Metallic Mann

facturing Company v. Office Specialty Manufacturing Company, 474. SUITS FOR INFRINGEMENT. See Acquiescence; Affidavits; Answer to Bill; Assign

ments; Demurrer; Injunction; Inspection of Defendant's Machine; Public Appre

ciation Evidence of Invention; Witnesses. 1. JUDGMENT-RES JUDICATA - PATENTS FOR INVENTIONS—Where a suit for

infringement of a patent is brought against a firm that is a branch of the company that manufactures the infringing device and such company conducts the defense, raising the question of validity of the patent, a decree for complainant is conclusive as to the validity of the patent as against the company condncting the defense, even in regard to alleged anticipations not referred to in the suit, since under the issues all anticipatory inventions might have been shown in defense. (50 Fed. Rep., 193, affirmed.) *David

Bradley Manufacturing Company v. Eagle Manufacturing Company, 121. 2. SAME-Such decree is none the less conclusive because it was merely interlocu

tory at the bringing of the suit in which it is set up as a bar and subse.

quently ripened into a final decree. * Id. 3. SAME-PLEADING AND PROOF-Where snch interlocutory decree in the first

suit was alleged in the second bill, a final decree in the first suit, rendered pending the second suit, may be shown in evidence therein withont supplemental pleading, where defondant took no exceptions to the bill, consented to the introduction of the final decree in ovidence so far as the same was material, and only objected thereto on the ground that in rendering such decree the court erred through failure to understand the operation of an

alleged anticipatory invention. Id. 4. SAME-WAIVER-Taking testimony in the second suit as to the validity of the

patent is not a waiver of the bar of the final decree in the former suit where such testimony was taken before said final decree was rendered, since until

rendition of the final decree the proceedings in the first suit were no bar. * Id. 6. SAME-DECREE ON STIPULATION-In a suit to restrain infringement of a pat

ent and to obtain an accounting, an interlocutory decreo was rendered, granting a temporary injunction, and afterward a final decree, making the SUITS FOR INFRINGEMENT-Continued.

injunction perpetual, and awarding only noininal damages, was rendered upon a stipulation which provided that such decree should not be a bar to the recovery of substantial damages in a subsequent suit. Held that the decree was conclusive as to the validity of the patent, the stipulation only

affecting its force as an adjudication on the subject of damages. "Id. 6. SUIT BY ASSIGNEES FOR INFRINGEMENT—CROSS-BILL BY ASSIGNORS-On a bill

by the assignee of a patent against the assignors for infringement, praying for an accounting, defaults of the assignee in pot complying with conditions of the assignment and other wrongs on bis part, which do not authorize a forfeiture by the terms of the contract, are not grounds for a cross-bill by the assignors to cancel the assignment or to remove the cloud on their title to tbe patent arising therefrom or for other affirmative relief where all the matters complained of may be pleaded as defenses to the original bill and damages therefor may be considered on the accounting. "E. C. Atkins of

Company v. Parke et al., 484. 7. EFFECT OF ADMISSION IN INTERFERENCE PROCEEDINGS IN THE PATENT

OFFICE-Where a party to au interterence practically withdrew by means of a stipulation by which he agreed that the preliminary statement of the other party shonld be accepted as evidence, that no additional evidence should be received, aud that priority should be decided on this evidence, and without argument, and where, a patent having been issuod to his opponent, he accepted a license thereunder, Held that the stipulation amounted to an admission of priority sufficient, as eviilence in a suit for iufringement, to show, prima facie, that the successful party in the interference was the

first inventor. * Shoemaker et al. v. Merrow, 491. SUITS FOR INFRINGEMENT AGAINST THE UNITED STATES. SCHILLINGER-CONCRETE PAVEMENT-CLAIM AGAINST THE UNITED STATES FOR

AN ALLEGED WRONGFUL USE OF PATESTED INVENTION NOT SUSTAINABLE, BECAUSE SOUNDING IN TORT-Action against the United States to recover damages for the alleged wrongful use of the invention secured by a patent, No. 105,599, issued July 19, 1870, and reissued May 2, 1871, No. 4,364, to John J. Schillinger, for an improvement in concrete pavements, lleld to be an action “sounding in tort" and not maiutainable. * Schillinger et al. v. United

States, 658. SUITS IN EQUITY. See Answer to Bill; Assignments, 1, 2, 3, 4, 5; Suits for Infringe

ment,SUITS UNDER SECTION 4915, REVISED STATUTES. See Priority of Inrention, 1. SUPREME COURT OF THE DISTRICT OF COLUMBIA. See Patentability, 2. 1. ESTOPPEL-Where an applicant in the Patent Office withdrev claims which

were rejected and substituted others with the statement that they were the ones on which he would want a final decision, Held that such action was a waiver by the applicant of his right to assert title to the withdrawn claims in

a bill in cquity under section 4915. *Durham v. Commissioner of Patents, 547. 2. SECTION 4915-JURISDICTION OF SUPREME COURT, DISTRICT OF COLUMBIA,

THEREUNDER-The juristlictiou of the Supreme Court of the District of Columbia to proceed in a suit under section 1915 can arise only in case of refusal of an application by the Commissioner of Patents or the Supreme

Court on appeal from him. * Id. TECHNICAL TERMS. Sco Construction of Specifications and Patents, 23; l'onstruc

lion of Stalat08; Reirsies, 7. CARBON ACROUS ANODE-CONSTRUCTION OF CLAJM 2—The words “carbonaceous

aloude" il clim 2 cover both anodes made partly of and wholly of carbon. * l'illsburgh Picduction Company v. Cowles Electric Smelting and Iluminum Compawny, 637.

TERM OF PATENT. See Limitation of United States Patent by Foreign Patent Pre

riously Granted. TESTIMONY. See Interference, 17; Priority of Inrention, 2; Suits for Infringement, 4;

Witne88e8. TORT. See Jurisdiction of the Court of Claims; Suits for Infringement Against the

Unitel States. TRADE-MARKS. See Affidavits. 1. DUTIES IMPOSED UPON COMMISSIONER OF PATENTS BY ACT OF MARCH 3, 1881,

ARE Not MINISTERIAL AND CANNOT BE CONTROLLED BY WRIT OF MAN. DAMUS—The duties imposed upou the Commissioner of Patents by the Trade-Mark act of March 3, 1881, are not ministerial, but their discharge requires the exercise of judgment and discretion, and his action in refusing to issue a certificate of registration of a Trade Mark cannot be controlled by a writ of mandamus. * United States ex rel, the State of South Carolina v.

Commissioner of Patents, 174. 2. COMMISSIONER MAY MAKE REGULATIONS AND REQUIRE APPLICANTS TO COM

PLY WITH THEM-The anthority to make regulations and requiring applicants to comply with them seems to imply that the Commissioner is left free

to institute the necessary inquiry in his own mind. "Id. 3. MANDAMUS—WRIT OF ERROR—Mandamus will not lie save in a plain case and

where there is no other legal remedy, and under no circumstances can the

writ of mandanı us be made to operate as a writ of error. *Id. 4. SAME-ACTION OF HEAD OF DEPARTMENT Not CONTROLLED BY—The action

of the head of a Department in construing the law for his guidance is not

subject to revision by mandamus. * Id. 5. Actiox or TRADE-MARK EXAMINER—The action of the Primary Examiner of

Trade-Marks is but the report of a partial examination made by a subordi

nate. * Id. 6. COMMISSIONER'S POWER IN DETERMINING THE RIGHT TO REGISTRATION—The

decision of the Commissioner goes to the question of the lawful use of the Trade-Mark in commerce with foreign nations or the Indian tribes, and whether the applicant has actually used the Trade-Mark in such commerce, and then whether he has the right to the nse of it at all. He must decide whether the alleged Trade-Mark is in itself a lawful Trade-Mark, or is identical with the Trade-Mark of another, or is a deceptive imitation, or is

the property of the applicant. * Id. 7. FOREIGN COMMERCE-Whether an isolated sale in a foreign country for the

purpose of giving foun.lation to the affidavit is foreign commerce within the

meaning of the law, quære. * Id. 8. SAME-AUTHORITY FOR UNDER THE DISPENSARY LAW OF SOUTH CAROLIXA

There is nothing in the dispensary law of the State of South Carolina
intended to give authority for trade in liquors outside the limits of the
State. It follows, therefore, that the sale of a case of State liquors in
Canada by the State commissioner was not authorized by the law and was

not the act of the State, but of the officer. * Id. 9. COMMISSIONER'S ACTION AFFIRMED-The Commissioner did not err in the

conclusion that the Trade Mark applied for had not been lawfully used in

foreign commerce. * Id. 10. DECISION OF LOWER COURT REVERSED-Judgment reversed and the relator's

petition dismissed. * Id. 11. TRADE-MARK-“Bull's Cough SYRUP”-DESCRIPTIVE WORDs-FRAUDI'LENT

Use-Descriptive words, like " Cough Syrup," cannot be appropriated as Tracie-Marks. Nevertheless they may be nised for the purpose of perpetrating a fraud which attects the public, anıl in which cases a court will, as against the fraudulent party, atford relief to the party injured. (Coats v.

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