A = c^ A ==^ o 8 7 ONALL 2 3 =^== j> 9 1 All 8 Uishers. Irei-I. tU.NY E. UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY INTERLOCUTORY MOTIONS IN THE United States Patent Office NOTES TO RULES 96-97, J 09, J 22, 123, 130 and J 53. BY E. J. STODDARD 'I I (Detroit Bar) Detroit KBY & STUBBS 1908 r Copyright E. J. STODDARD PREFACE These notes have been made for my own use during the last fifteen or twenty years. It is intended to render readily accessible as much existing material as possible on questions of daily practice. Of the weight or authority of a dictum, or the cor- rectness of a decision or its applicability to present practice, one must judge in each case. As bearing u]3on this point I have prepared a brief historical introduction. The notes are themselves in the nature of an index, but I have prepared a short supplementary index, co nomine, which will be of use. It has been very difficult to get the time required in preparing for publication. The surprising accuracy and efficiency of the printers, Messrs. Eby & Stubbs, have prevented many errors which would otherwise have oc- curred. ELLIOTT J. STODDARD. Previous experience in this line of publication makes me expect a small deficit. The advantages I hope for are to increase my acquaintance among Patent Lawyers outside of Michigan, and to increase my business as an expert. See Title, "Expert Testimony," in the back of this Volume. DATA. Born at Seymour, Conn., 1859. Educated in the Mechanical Engineering Course of the Sheffield Scientific School of Yale College and Law School of Columbia College in New York City (Class of 1881). Earned my living for a year or two as a Mechanical Draughtsman, thus becoming familiar with the details of machinery. Engaged in shop work as a Consulting and Superin- tending Engineer for about six years, largely in experi- mental work, involving mechanics, electricity and chem- istry. Have written a good deal for publication, and my writings have been favorably received. See ''Press Xotices" in back of this volume. Have been instructor in a local lodge of the National Association of Stationary Engineers for a number of years, and for two years a member, or Chairman, of the National Educational Committee of that excellent organ- ization, to which Professor Perry wrote from England in terms of the highest encouragement. About twenty years' experience in Patent Soliciting. For a number of years I have been frequently employed as an expert in Patent cases. See "Letters" at the end of this volume. Member of the Jury of Awards on Automobiles at the St. Louis World's Fair, Gas Engine Expert to the Marine Jurv and afterwards Chairman of the latter. INTRODUCTION Since the general revision of the Rules of December, 1879, all amendments have been published in the Official Gazette; and the changes in the various editions are noted in the front of the Rules as now published. RULE 96. A part of Rule 51 of 1878 reads as follows: *' Where a party who is required to put his case in proper shape for the purposes of an interfer- ence delays doing so beyond a reasonable time specified, the interference will at once proceed. After final judgment of priority the application of such party will be held for revision and restric- tion, subject to interferences with other applica- tions or new references." Only verbal changes were made in 1879. The present form of the rule had its origin in the case of Hammond vs. Hart, decided April 25, 1898. (1898 C. D. 52.) The correctness of this decision has been called in question in a pamphlet by Mr. J. H. Whitaker published by the Patent Law Association of Washington, D. C. The edition of the Rules of July 18, 1899, reads: ^'AVhenever two or more applications disclose the same invention, and one of said applications is ready for allowance and contains a claim to said invention, the primary examiner will notify the other applicant of such fact, furnish him with a copy of the patentable claim, and require him to make such claim and put his case in condition for allowance within a specified time, so that an interference can be declared. Upon the failure of any applicant to make the claim suggested within the time specified, such failure or refusal shall be taken without further action as a disclaimer of the invention covered by the claim, and the issue of the patent to the applicant whose application is in condition for allowance will not be delayed 6 INTRODUCTION unless the time for making tlic claim and putting the application in condition for allowance be ex- tended u])on a ])roper showing. If a party make the claim without putting his a])pIication in con- dition for allowance, the declaration of the inter- ference will not be delayed, but after judgment of priority the application of such party will be lield for revision and restriction, subject to inter- ference with other applications." (See Eule 94 of 1879 quoted below as to suggestion of claims.) Tn Wolfenden vs. Price, 1898 C. T). 87, Commissioner Duell said: ''In deciding the case of Hannnond vs. Hart it was my intention to bring about a practice in the Office that would result in making the issue of an interference both definite and clear, and to that end to cause the parties to the proposed inter- ference to claim substantially the same patent- able invention so as to obviate the many motions and a]i]~)eals that have unnecessarilv arisen in the Office." RULE 97. Previous to the Revision of December, 1879, the Pri- mary Examiner was required to notify the parties, and in the Rules of 1878 he was required to ''briefly and con- cisely define the interfering subject matter." In the re- vision of December, 1879, this rule reads: "97. When an interference is found to exist and the applications are prepared therefor, the princi- pal examiner will forward to the examiner of inter- ferences notices of interference for all the parties as specified in Rule 102, which will disclose the name and residence of each party, and that of his attorney, the date of the filing of his application, and, if his case be a patent, its date and number, the date of its application, the ordinals of conflict- ing claims, and the invention claimed, which shall be clearly and concisely defined in so many counts or branches as may be necessary in order to in- clude all interfering claims." INTRODUCTION 7 RULE 109. Rule 94 of 1879 reads as follows: ''When two or more pending applications show, but only one claims, an invention, the information 2jrovided for in Rule 97, so far as it may be ap- plicable to the case, will be sent to each applicant not claiming the invention; and if any such appli- cant shall within the time limited by the examiner, file an amendment of his application duly claim- ing the invention, he will be made a party to an interference to be declared, but not otherwise. "Whenever an interference is found to exist, under Rule 93, between two or more parties claiming an invention, applicants having pending applications showing, but not claiming, the invention, will be furnished with the information provided for in Rules 97 and 101, and if such applicants shall, within the time fixed for filing the preliminary statements, file amendments of their applications, duly claiming the invention, together with such statements, they will be made parties to the inter- ference, but not otherwise. AVhen a patent shows without claiming, an invention claimed in a pend- ing application, and the requirements of Rule 71 have been complied with, the patentee will be furnished with the information provided for in Rule 97; and if he shall, within the time limited bv the examiner, file a reissue application duly claiming the invention, he will be made a party to an interference to be declared: but otherwise he will be excluded therefrom, without prejudice to his right of reissue; but if an interference is found to exist between other parties, he will be furnished with the information ])rovided for by Rules 97 and 101, and if he shall file his prelim- inary statement, together with a reissue applica- tion claiming the invention, within the time limit- ed for filina* such statements, he will be made a partv to the interference, l)ut not otherwise. (See Rules 74 and 171.)" 8 INTRODUCTION RULES 122 AND 124. The Revision of December 1, 1879, reads as follows : "IIG. Motions to dissolve an interference wliicli deny the patentability of an applicant's chiini, or his right to make the claim, will be submitted to the examiner of interferences before the day fixed for filing the statements provided for in Kules 97 and 102, and will be transmitted by him, with the files and papers, to the primary ex- aminer, who will take jurisdiction of the case for the determination of such motions, and will return the files and papers to the examiner of interferen- ces, with his decision, at the exiDiration of the time limited for appeal, if no appeal shall have been taken, or sooner if the party entitled to appeal shall file a waiver in writing of his right of aj^peal; and such decision will be binding on the examiner of interferences unless reversed or modified on ap- peal. From a decision of the primary examiner on such motion denying the patentability of a claim or the right of an applicant to make it, an appeal may be taken ex parte to the examiners-in-cliief ; but from liis decision affirming its patentability or the ai)plicant's right no appeal can be taken." "118. Appeal may be taken directly to the commissioner from decisions on all motions, except motions to dissolve interferences denying the patentability of aj)plicant's claims, or their right to make the claims, and other lawful motions involving the merits of the case, which, when ap- l)oalable may be appealed to the board of the ex- aniiners-in-chief. (See Rule 116.)" See Allen, Commissioner of Patents, vs. The United States of America, ex rel. Lowrv and Planters Compress Company, 1905 C. D. 643—116 0^. G. 2253 (May 21, 1895). RULE 123. See case cited under Rules 122-121 above. Rule 117 of 1879 reads: ''Motions to dissolve an interference upon the ground that no interference in fact exists, or that INTRODUCTION 9 there has been such irregularity in declaring the same as will preclude the proper determination of the question of ])riority between the parties, and all other lawful motions except those men- tioned in Rule 116, will be made before the tribunal having jurisdiction at the time. Such motions should, if practicable, be made before the taking of testimony, and it must always appear that they are made in good faith, and immediately after the discovery of the grounds on which they are based. If grounds for such a motion are discovered at a time when it cannot be properly made, they may on due notice be urged at the hearing before, and will be disposed of by, the tribunal considering the case, as i)rovided in Rule 120." Rule 59 of 1878 reads in part as follows: ''59. After the declaration of the interference and before the time for filing the preliminary statements, has expired, motions to dissolve the same on the grounds of lack of novelty, or that no interference in fact exists, or that there has been such other irregularity in declaring the same as will preclude the proper determination of the question of right between the parties, must be made before the examiner by whom the inter- ference was instituted. After the declaration of interference such motion must be made before the tribunal having jurisdiction at the time. Appeal may be taken to the commissioner in per;' on; but if the examiner should decide that the subject- matter is not patentable in view of the state of the art the interference will be dissolved, and the matter decided upon can 'be proceeded with ex parte. RULE 126. Rule 120 of 1879 reads: "120. In their decision of the question of prior- ity, or before such decision, the examiner of inter- ferences and the examiners-in-chief will direct the attention of the commissioner to any fact not re- lating to pi'iority which may have been brought to their notice (by motion or otherwise), and 10 INTRODUCTION wliicli ill their opinion, amounts to a statutoi'V bai- to the grant ol* a ]»atiMit to either of the par- tics for tlie claim or chiims in interference. Tlie commissioner may, befoi'c Judgment on the (juestion of })riority of invention, suspend the interfei-ence, and remand the case to the primary examiner for the consideration of the statutory l)ar so sui»',i>-ested, sul)ject to appeal to the ex- aminers-in-chief, as in other cases. If the case shall not be so remanded, the primary examiner will, after ,iudgment, consider and determine the same, unless it shall have been i)reviously dispos- ed of by the connnissioner." T7ule 59 of 1878 reads in part as follows: "In tlieir decision of the question of priority, or before such decision, the examiner of interfer- ences, or the examiners-in-cliief, as the case may be, will direct the attention of the commissioner to any fact not relating to priority which may have come to their attention (by motion or other- wise), and which, in their opinion, amounts to a statutory bar to the grant of a patent to either or both parties. After final judgment the primary examiner will consider and determine any such matter not i)reviously disposed of by the commis- sioner." I find no jirovision in the Eules of Sei^tember 1, 1873. RULE 130. See Podlesak and Podlesak vs. Mclnnerney, 1906 C. D. 558; 120 O. G. 2127 and cases referring to it, especially United States of America ex- rel. The Newcomb Motor C'ompanv v. Moore, Commissioner of Patents, 133 0. G. 1680. RULE 153. Rules of December 1, 1879 : "MOTIONS." "1-1-9. In contested cases reasonable notice of all motions and copies of motion papers and affi- davits, must be served as provided for in Rule 150 (2). Proof of such service must be made before the motion will be entertained by the Office; and motions will not be heard in the absence of either INTRODUCTION 11 party except upon default after due notice. Motions will be heard in the first instance by the officer or tribunal before whom the jDarticular ease may be pending; but an appeal from the decision rendered may be taken on questions in- volving the merits of the case to the board of ex- aminers-in-chief; on other questions, directly to the commissioner. In original hearings, on mo- tions, the moving parties shall have the right to make the opening and closing arguments. In con- tested cases the i^ractice on points to which the rules shall not be applicable will conform, as near- ly as i^ossible, to that of the United States courts in equity proceedings." In 1869 Rule 50 read in part as follows: "In contested cases no motion will be heard in the absence of the other party, except upon de- fault after due notice; nor will a case be taken up for oral argument after the day of hearing except by consent of both parties. If the engagements of the tribunal before whom the case is pending are such as to prevent it from being taken up on the day of hearing, a new assignment will be made, or the case will be continued from day to day until heard." And Rule 57 of 1869 reads: "57. If either party wishes the time for taking his testimony, or for the hearing, postponed, he must make application for such postponement, and must show sufficient reason for it by affidavit filed before the time previously appointed has elapsed, if practicable; and must also furnish hi? opponent with copies of his affidavits, and with seasonable notice of the time of hearing his ap- plication." In 1870 the following rule was added: "MOTIONS." "50. Reasonable notice of all motions and copies of the motion ])a])ers and affidavits, must be sei-ved upon the <)pi)osite j)ai-tv or his attor- nov." 12 INTRODUCTION 111 1871 tlie rules read: "MOTIONS IN CONTESTED CASES." "50. In contested cases reasonable notice of all motions and copies of the motion papers and affi- davits must be served upon the opposite party or his attorney. Proof of such service must be made before the motion will be entertained by the Office; and motions will not be heard in the absence of either party except upon default after due notice. Motions will be heard in the first instance by the officer or tribunal before whom the particular case may be pending; but an appeal from the decision rendered may be taken to the commissioner in person. ' ' INTERLOCUTORY MOTIONS. TITLE CD. O.G. Allen, Com. etc., V. U. S. ex rcl. Lowry et al 1905-643 1905-238 116-2253-2254 117-277 1905-555 119-2521 1906-563 120-2129 1906-120 121-1348 1906-125 121-1350 1906-225 122-2688 1906-228 122-2689 1906-292 123-2973 133-1188 133-1682 Allfrie v. Sower. 1906 214 122-2391 Anderson and Dyer v. Lowry.... Anderson v. Vrooman Andrews v. Nilson Andrews v. Nilson ■ Annand v. Spalckhaver Anson v. Woodbury Anson v. Woodbury Arbetter v. Lewis Archer Armstrong Aston Atherton and Happ v. Cheney.. .. Auerbach and Cubing v. Wiswell, Autenrieth and Kane v. Sorensen. Auxer v. Pcirce, Jr Bachman v. Southgatc Ball V. Flora Ball V. Rego Ballzley v. Secberger i... 1899 230 1900-60 1900-66 1901-11 1906-295 1904-291 1906-717 1900-172 1901-212 1901-234 1877-4 1877-49 1880-69 1877-49 1877-4 1880-69 1902-161 1891-191 1895-18 1906-161 1904-294 1904-7 1904-461 1906-62 1904-269 1905-298 1905-289 1905-503 1905-120 89-1861 91-819 91-1034 94-224 123-2975 131-1687 111-1038 123-1667 93-753 97-2083 97-2741 11-243 12-1 17-394 12-1 11-243 17-394 99-1383 57-696 71-1615 122-730 111-1040 108-289 11. ',-284 132-678 120-2126 131-359 111-805 117-2362 117-2088 119-1258 115-1329 14 INTERLOCUTORY MOTIONS TITLE CD. 0. G. Banigan Co. v. Bloomingdale 1899-224 89-1670 Banks v. Siicdiker ••.... 1879-304 1880-95 16-1096 Banks v. Snediker 17508 Barber v. Wood 127-1991 132-1588 Barber v. Wood 132-1588 Barney v. Kellog 1880-134 17-1096 Beardslce v. Moeslin 1889-127 1902-380 46-1640 101-1130 1904-346 111-2222 Beatty 1891-151 1893-130 56-^^1563 05—751 1894-46 66-1596 Bcciiman v. Southgate 1904-269 111-803 Bechman v. Southgate • • 1906-270 123-2309 Bechman v. Southgate 127-1254 Bechman v. Wood 1899 453 1899-99 89-2459 87-1073 1899-99 87-1074 •1899-102 90-2295 ^ 1900-408 93-2320 1899-459 94-224 1901-370 95-1454 1903-595 104-1124 1905-584 114-1553 1905-607 114-2383 1905-667 117-278 1906-274 123-2309 132-477 B cell man v. Wood • • 1899-459 89-2462 1897-188 81-2087 1898-266 85-1738 1899-99 87-1073 1899-102 87-1074 1899-105 87-1397 1899-107 87-1398 1899-453 89-2459 1899-459 89-2463 1900-248 90-2295 1900-153 93-3340 1900-408 93-3330 1901--10 94-324 1901-350 95-837 1901-370 95-1454 1902-231 100-231 1903-595 104-1124 1904-489 113-8511 # 1904-490 113-852 1905-584 114-1553 1905-606 114-2383 1905-667 117-278 1906-274 123-2309 127-1254 129-2861 INTERLOCUTORY MOTIONS IJ TITLE CD. O. G. Becker and Patitz v. Edwards. Becon v. Otis Behrend v. Lammer v. Tingley Bellows V. King 1906-270 Bender v. Hoffman. Benct and Alcrcic v. McClean. Benger v. Burson Benjamin v. Searle Berrye, Kane and Stengard v. Hildreth.... Berry v. Fitzimmons Bigelow V. The Commissioner of Patents.. Bissel V. Robert 1906- 1903 1904- 1904- 1904- 1905- 1898- 1899- 1899- 1899- 1899- 1900- 1901- 1901- 1905- 1901- 1904- 1902 1892- 1908- 1902 407 328 155 177 201 •121 262 105 107 •169 233 137 ■11 83 704 191 394 164 97 186 1153 Blackford v. \\'ilder. Blackford v. Wilder. . . . Blackman v. Alexander. Blackman v. Alexander. Blackmorc v. Flail 1890- 1891- 1906 1902- 1903- 1903- •1904- 190.5- 1905- 77 113 304 204 ■573 406 632 12 642 1902-41 1902-323 1905-335 1905-345 1903-288 1904-102 190.5-164 190.5-440 1905-456 123-1990 129-^1267 124 2536 106 997 110-310 ■110-860 110-1429 115-1330 85-1737 87-1397 87-1398 88-1526 89-1862 92-1197 94-224 96-844 117-1800 97-1595 106-2018 99-1384 59-630 122-1722 99-863 7-603 606 51-1618 56-804 124-319 99-2769 104-580 106-2292 109-2173 114-263 116-1736 127-1255 127-3644 129-2860 130-660 133-514 127-1255 132-678 98-11281 ioo-2;;83 111-1939 111-2221 105-2059 109^1336 116-595 118-2253 118 2538 16 INTERLOCUTORY MOTIONS TITLE CD. O. G. Blcickmorc v. 11 all IJlackinorc v. i lall Blinn v. Gale Blue V. Power v. Owen Booth, Booth and Flynt v. Hanan and Gates V. Marshall Booth • • Bourne v. Hill, Jr Brewer, Tily, Rehfus and Rchfus v. Demerel Briggs V. Conley Brill and Adams v. Uebelacker Brissenden v. Rocsch Brown and Taplin v. Bixby Brown v. Hodgkinson Brown v. La Dow Brown v. Lindmark • • . . Brown v. Stroud Bryant, Wo'lcott and Davidson Bryon v. ^laxwell... Bundy v. Rumbarger Bundy v. Rumbarger Bury V. Thompson Byron v. Henry . Cammet v. Hallet Campbell v. Brown Card and Card • • Carmichael v. Fox Carnell v. Glasgow v. Cook Carney v. Latimer Carroll v. Stahlbcrg Carter and Dwycr v. Perry and Dicky 1905-561 1906-46 1906-114 1906-216 1906-533 1879 174 '1879-228 1902-425 1908-238 1906 1905 1903- 1903- 1904- 1902- 1903 1891- 1908- 1880- 1904- 1906 699 218 158 •291 -102 220 440 166 290 199 93 2688 1906-145 1903-230 1900-142 1900-94 1900^143 1900-94 1901-93 1904-41 1892-42 1903-178 1900-176 1891-154 1904-383 1903-177 1905-193 1906-32 1905-481 1904-331 1875-111 1876-44 '1876-214 119 2523 120-90G 121-101:5 122—2392 120-1477 16-459 16-72:; 101 2076 123-319 128-1291 120-1284 116-2010 104-1119 105-2061 109-1337 99-2966 118 2253 131 1886 123-2973 18-1049 109-1071 122-2689 127-1992 129-480 i:! 1-1 42 3 121-2663 105-499 92 2001 91-2210 92-2002 96-1037 96-1038 ■108-799 58-1255 104-1895 93-939 56-1565 112 499 112-500 104-1656 116-1451 120-901 119-652 1:52-1588 111-1937 8-518 10-585 INTERLOCUTORY MOTIONS IT TITLE CD. O.G. Carty v. Kellogg. 1896 1890 1901 1904 1904 1905 1905 Cazin v. Von Welsback i 1905 188 -83 Carver v. McCanna Cory, Gibhart & Martin Jr. v. Blake}- Chambers & Mendham v. Tucker et. Cheney v. Venn Christensen v. Xoycs Churchward v. Douglas v. Cutler Clement v. Browns v. Stroud Coleman v. Bullard v. Struble Coleman v. Struble Cole V. Zarbock v. Greene Collcy V. Copenhaven Collom V. Thurman Corey v. Eiseman & Misar Corey, Gibhart & ^lartin Jr. v. Blakey. Crawford v. Lichtenstein Croskey v. Atterbury Coulson V. Callendar Cramer v. Ilaak Cummins Cutler V. Riddell Curtis . Daggett V. Kaufman 1877 1903 1900 1900- 1903- 1903- 1904- •1904- 1904- 1905- -132 -284 246 116 475 32 492 201 -212 -372 -393 -108 -111 -174 -577 1903-389 1905-189 1906-461 1905-40 1903-39 1905-194 1903-415 1906-201 1903-116 1892-230 1903-446 1896-437 1898-146 1899-148 1903-321 1904-132 1902-395 1902-352 1905-61 1903-310 1901-147 74-657 73-285 95-838 109-2171 111-1035 117-599 115-1328 119 650 11-1009 123-1703 90-223 92-1 23.-) '106-1777 106-2018 109-1605 109-1607 110-858 114-766 132-1588 106-2016 116-1185 125-1703 • 128-2837 132-1073 125 992 114-973 132-845 114-973 116-1451 107 268 131-359 122-2063 115-1328 61-1480 107-835 76-163 84-1143 88-1159 106-768 109-171 101-1607 101-220 114 2090 108 763 97-189 127-3641 132-1588 133-1188 18 INTERLOCUTORY MOTIONS TITLE Davis V. Ocumpaugh v. Garrett Davis V. Swift Dctsch V. Looncn Dickinson v. Hildreth Dickinson v. Norris Dickinson v. Thibodeau v. Hildreth Dietz ■ • •■ Dilg Dinkcl v. D'Olier Dittgen v. Parmcnter Dixon and Marslr v. Graves v. Whittemorc. Dixon and Marsh v. Graves v. Whittemorc. Denton et. al. v. Riker Doble V. Eckhart v. Henty Jr Dod V. Cobb Dorr V. Ames & Rearson Dow V. Benson Drawbaugh Drawbaugh v. Blake Du Bois and ]\IcCloskey Dukesmith v. Carrington v. Farner Dunbar v. Tchellinger Duncan v. Westinghouse Jr Dunn V. Halliday Dunker v. Rcist Duryea & White v. Rice Duryea & White v. Rice Duryea & White v. Rice Dunton v. Young & ^IcFarren CD. 1903-130 i<)0.")-:ui4 1901-134 1905-117 1906-179 1905-159 1902-202 1903-155 1904-401 1904-572 1903-125 1905-117 O. G. 1902 I90:i- 1904- 1876- 1903- 1903- 1891- 1883- 1891- 1898- 1898- 1880 1906- 1906- 1906- 1906- 1894- 1905- 1905 I'.iOB- 1905 1906 i906 1876 15 2:!6 168 232 296 476 182 17 14 -52 ■57 142 426 99 147 ■428 12 545 533 -J(U 97 172 279 -167 103-1679 iis-s:!7 96-2409 115-1328 129-2835 132-232 131-2146 132-681 122-1397 116-593 99-2550 104-852 112-953 113-2507 '131-1687 103-1164 115-1328 127-1993 130-2374 133-1188 98-415 105-744 110-604 10-826 108-263 107-1378 57-693 23-1221 54-503 83-743 83-745 17-1158 125 348 121-687 121-2663 125-348 66-1005 119-2236 119-1925 122-730 115-803 122-1395 123-2627 10-243 INTERLOCUTORY MOTIONS 19 TITLE CD. 0. G. Eastman v. Houston ■1899-113 1901-386 87-1781 95-2064 1902-278 100-934 1903-210 105-260 1903-342 106-1240 Edison & Gilliland v. Phclp s 1887-11 38 539 Egly V. Schulzc 1905-237 117-276 131-1690 Egly V. Scliulze 1905-308 117-2366 Eichelberger and Hibner V. Dillon 129 3161 133-^1189 Eninict V. Fullagar 1906-386 1905-52 124-2179 114-1551 Eschinger v. Drummond & Lieberknecht . . 1906-121 121 1348 Essex V. Woods 1899-189 1903-573 89-353 104-580 Evans & Bussell v. Vose. 1873-36 3-180 Pagan v. Graybill 1906-115 121-1013 Fairbank & Saner v. Karr 1905-476 1904-503 119-651 113-1148 Faure v. Bradley & Crock Cowles :r V. Cowles & 1888-120 1898-3 44-945 82-185 1898-26 82-1419 1898-49 83-594 1898-179 84-1587 1905-117 115-1328 Farnsvvorth v. A.ndrcws 1876-3 9-195 Fay V. Conradson 1893-129 65-751 Fclbil V. Oliver 1900-150 1902-309 92-2339 100-1975 1902-315 100-2175 aOO-2384 1902-565 105-977 - 1903-618 1904-387 112-501 1112-955 T^ol^inp" V X^t^lsoti 1906-77 1906-118 120-2445 A. \^ LJ lll^ V. ^^V-10*_^ii 121-1347 •1906-185 122-1722 130-2720 Fclsincf V. kelson 1906-118 121-1347 130-2720 Fcnncll v. Rrown v. BorsL h, J>- 1905-117 115-1328 Ferris 1905 16 1902 466 114 541 Fcssendcn v. Fottcr 101 2823 Fickingcr & I'>alke v. TluU 'tl 1904-177 1905-121 110 859 ii5-i:;30 Fickinger and lUakr v. il lie tt 1904-360 111-2492 20 INTERLOCUTORY MOTIONS TITLE CD. O. G. Finch V. Bailey & Talbot 1883-69 1905-399 25191 Fisher v. Dougherty 118 1681 Foglcsong V. lliitt & Phillips 1892-200 61-151 1892-190 60-190 Forscland v. ^latthcxvs 1891-237 1899-413 1902-399 57 1720 I'ostcr V. Autisdcl 88-1527 101-1608 103-1684 104-1124 1903-227 105-498 105-977 1903-158 107-1097 1109-1050 1904-285 111-1036 112-958 1905-380 'M8-1072 1906-148 121-2664 128-2839 P^Qwd^;-}- Y_ Beiitoii • • . . 1880-39 1898-265 17-266 85-1 7:i8 4901-166 97-1171 1901-168 97-1172 Frank & Gutmaiin v. Alacwilliam 1905-17 1905-262 114-542 117-1165 Frederick v. Frederick & Frederick 1902-182 99-1865 1902-346 100-3013 1904-203 110-1429 1904-473 113-551 iM-ick 1872-124 1889-185 1-574 48-185 Fuller V. Brush . .' 1879-329 16-1188 Fur 111 an v. Dean • • 1904-305 1905-582 111-1366 114-1552 1904-305 111-1366 132-477 Gaily V. Burton 1906-7 120-325 1906-300 124-317 Gaily V. Brand 1904-488 113-851 ' Garcia v. Pons 1906-177 1903-542 122-1396 Garrels v. Freeman . . . • • 103-1683 132-842 INTERLOCUTORY MOTIONS 21 TITLE CD. O.G. Garrison w Hubiicr 1891-59 1898-160 54-1889 84-1283 1898-162 84-1284 1900-185 93-1917 ■1901-17 94-584 1904-36 108-797 1904-101 109-1336 Giroud v. Abbott, Giroud and McGirr.... 1903-108 103-662 Gerdom v. Ehrhardt 1905-163 116-595 Gibboney 1903-249 1894-51 105-976 Glidden v. Xoble 67-676 Gold V. Gold 131-234 Goodfcllovv V. Jolly 1904 163 110-602 Goodwin v. Smith 1906-257 123-998 131-1687 131-2421 Gordon v. Wentworth 1906-52 120 1165 Goss V. Scott 1901-80 1901-222 96-842 97-2306 1902-16 98-415 •1-902-236 10.5-744 1903-274 105-1780 1903-311 106-763 1904-320 •106-767 190.-5-219 116-2010 Gray 1889 91 1904-540 46-1277 Gray v. ^IcKenzie v. McElroy 113-1968 Green v. Siemens v. Hall v. Field 1886-43 37-1475 1889-197 49-130 1901-211 97-1837 1893-15 62-587 Grccnawalt v. Marks 1903-135 103-1913 ■1903-404 106-2291 1903-406 Greater v. Mathieu 1904-264 1904-380 111-583 112-254 Griffith V. Dodgson 1905-200 1906-204 1905 269 116-1731 Griffith \'. Dodgson 122-2064 Gueniffet, Benoit & Xicault v. Wictorsohn 117-1492 134-255 Hall V. Alvord 1902-418 101-1833 1 904-2'.) 1 1 11-1038 130-1690 Hall V. Latta • ■ 1892-113 1902-229 59-1431 99-2970 117-2632 Hall V. Weber 1904 112 109-1607 22 INTERLOCUTORY MOTIONS TITLE CD. O. G. I lammdiid v, I lart Hansen Hansen v. Davis • • . . . Harnisch v. Guenififet, Benoit & Nicault Harnisch v. Gucniffet, Benoit & Xicault Harrison v. Hogan Harrison v. Shoemaker Harvey Harvey v. Lubbers v. Raspillane HaupT 1898-52 1898-71 1898-8:5 1898-88 1898-89 1898-100 1898-138 1898-144 1898-152 1898-168 1898-170 1898-174 1898-174 1898-187 1898-196 1898-207 1898-256 1899-lG 1899-37 1899-42 1899-67 11899-111 1902-6 1903-573 1903-351 1903-373 1904-290 1904-310 1905-314 1891-72 1893-109 1905-271 1880-191 1887-53 1901-409 1904-129 1903-21 1905-167 1904-411 1906-138 1901-153 1903-107 1904-410 83-743 83-1209 83-1659 83-1801 83-1806a 84-984 84-1141 84-1144 84-1434 84-1583 84-1585 84-1586 84-1729 84-1869 84-2020 85-1397 86-490 86-491 86-1500 86-1634 87-180 87-1607 98-228 104-580 106-1502 106-1777 ■111-1038 111-1368 120-2127 117-2632 55-998 64-1006 117-1492 128-455 18-921 40-346 40-348 96-1040 109-2120 128-2837 102-621 102-622 116-597 112-1215 121-2326 97-192 103-662 112-1215 INTERLOCUTORY MOTIONS TITLE CD. 0. G. Hedges V. Daniels 1880-9 1880-64 1903-320 1905-98 1904-515 1905-24 1906^175 1906-174 1906-450 1903-123 1903-250 1887-40 1892-74 190.5-701 1894-45 1898-136 189.3-56 1902-413 1901-186 1903-347 1903-476 1901-236 ■1902-149 1903-310 1906-191 1880-185 1904-19 1904-34 1902-199 1903-319 1903-261 1896-1 1897-168 1898-266 1899-107 1902-22 1899-234 1897-168 17-152 Hedlund v' Curtis 17-394 106-767 11.5-803 113-1419 114-544 Hess V. Joerissen v. Felbel 114-545 131-1419 Hewitt V Steinmetz 133-1188 122-1396 Hewitt V. Weintrauton, Hewitt & Rogers.. Heyne, Hayward & McCartliy v. De Vilbiss Jr 122-1395 128-^1689 125-669 Hicks V. Costello Hicks V. Keating v. Purvis &. Bilgram Hillard v Eckert 132-232 103-1163 105-976 132-1588 40-343 58-1840 117-1799 66-1596 84-984 63-464 101-1831 Hildreth Hinkley v Barker . 97-1374 106-1242 107-1378 97-2742 Hirsch Co. v. Jenner v. Hellert Sons v. Sample & Co Hockhausen v Weston 97-670 106-763 122-1724 18-857 Hoefer, Hoefer & Hoefer v. Barnes 108-560 108-797 Holland Holz V Hewitt 99-2548 127-1992 Hopfelt V. Read Hopkins v. Scott Hopkins v Hunter 129-2501 129-2857 106-767 105-1263 74-653 81-967 85-1739 87-1398 98-417 89-1862 81-968 24 INTERLOCUTORY MOTIONS TITLE Hornc v. Somcrs Co. Ilornc V. W'ondc Horton v. Summcr House V. Butler. . . Hulett V. Long. . . C. D. Hull V. Hallberg Huson V. Crovvell v. Yate.'^ Hutin & Leblanc v. Stcinmctz v. Scott v. Fairfax Hutt & Phillips V. Foglesong. Ingoldsby v. Bellows Ingoldsby v. Bellows Jackson v. Cuntz Jackson v. Xichol Jenkins v. Barney & Berry Jcnne v. Brown v. Booth, Jenner v. Dickson v. Thibodeau.. Judd V. Campbell Kaczander v. Hodges and Hodges Kafer & Gould v. Dennison. Kane v. Brill & Adams Kelleher & Grumm v. :NLayhew. Keller & Olmesdahl v. Felder. Kempshall v. Royce ■ Kempshall v. Sieberling Kempshall v. Sieberling Kempshall v. Sieberling Kephart O.G. 1900-152 l'.)()4-490 1893-14 1808-218 1899-446 1901-369 1905-607 1905-697 1904-200 1893-107 1899-185 1901-393 1901-240 1903-219 1892-190 1898-168 1899-9 1904-554 1905-229 1905-92 1871-278 1873-19 1892-78 1905-14 1906-7 1905-180 1904-232 1905-361 1905-530 1869-14 1898-146 1876-246 1903-169 1903-428 1904-197 1903-137 129-1609 129-2858 132-G78 92-2339 113-852 62-587 85-289 89-1141 95-1454 114-2383 117-1490 110-1428 64-1006 88-2409 95-2686 97-2743 105-264 60-1477 84-1434 86-184 113-2214 116-2532 115-510 3-119 7-605 59-158 114-264 120-325 116-1181 110-2016 118-836 119-1924 ; 84-1142 I 132-078 I 72-895 10-944 I 129-3162 104-1395 107-541 I 110-1427 ■ 103-1914 INTERLOCUTORY MOTIONS TITLE CD. O. G. Kilbourn v. Hirner. 1906-161 1906-307 Kilbourn v. Hirner 1906-367 King V. Babcndricr v. Libbcy 1899-252 Kinney v. Goodhue 1906-264 Kinsman v. Strohm 1906-481 j 1906-64 Kitsee v. Robertson I 1901-221 Klein v. Groeble • • i 1904-140 Klepetko v. Becker Klepetko v. Becker Klepetko Kletzker and Goesel v. Dockon. Kletzker and Goesel v. Dodson. Knight V. Bagncll v. Curtis v. Morgan. Kohler v. Kohler and Chambers Kolb V. Hemingway v. Curtis. Krakaw v. Harding Kugele V. Blair Kugele V. Blair Kurz V. Jackson v. Pierce...-, Laas & Sponenburg v. Scott. Lake v. Cahill Lamb v. Warren Larter v. Jones Latour v. Lundell Lattig and Goodrum v. Dean. Law V. Woolf Lenip V. Randall v. Bates, 1906-24 1906-336 1902-463 1904-100 1896-109 1888-19 1889-221 1891-145 1892-73 1893-62 1900-156 1902-184 1904-79 1904-203 1906-178 1903-484 1906-477 1902-106 1904-242 1904-467 1906-621 1904-241 1893-91 1900-111 1906-168 1905-698 1891-91 1899-5 1901-210 1906-240 1906-42 122-729 124-319 128-1689 124-1841 131-1161 89-2653 123-16G3 125-1699 120-2127 97-2306 110-305 1 10-308 120-658 124-908 126-387 101-2822 109-1336 110-308 76-1115 43-247 49-1043 56-1447 58-1840 63-612 92-2508 99-1865 109-805 110-1429 122-1397 107-1662 125-1350 127-1253 98-2383 110-2235 113-548 122-352 110-2235 64-437 92-383 122-1046 117-1798 55-1527 86-183 97-1837 123-319 120-905 26 INTERLOCUTORY MOTIONS TITLE CD. O. G. Lipe V. Miller. Lipc V. Miller. Lipscomb v. Pfieffer Little V. Lillie, Pillard & Sargent Lizotte V. Neuberth Locke Locke V. Crebbin • • I Lossier v. Wilson v. Cowles & Cowles v Rogers v. Darling v. Bogusko v. Gratzel Lombard • • Lotterhand v. Hanson .... Lovejoy v. Cady Lowry Lowry & Cowley v. Spoon Lowry v. Spoon Luger V. Browning Lutz V. Lewis • • Lynch & Raff v. Dryden & Underwood Lovrien v. Banister • • Macey v. Tabey v. Laning 1903-114 1903-266 1903-483 1904-556 1905-121 1904-84 1905-201 1904-347 1904-114 1906-269 1906-158 1876-207 1887-44 1906-370 1901 267 1906-298 1892-117 1888-56 1891-11 1891-103 1891-111 1898-100 1904-647 1905-46 1906-245 1900-1 1906-224 1906-381 1904-400 1902-230 1904-227 1873-73 1881-15 1880-630 1880-152 1904-79 1901-168 109-1608 105-1532 107-1662 113-2215 115-1330 109-1067 116-1732 111-2222 109-1608 131-2422 123-1990 122-351 10-543 40-344 124-1842 94-432 124-317 132-1588 133-1188 59-1605 43-1347 54-503 56-139 56-142 83-1804 83-1806a 110-861 114-1265 132-842 123-654 •131-692 90-445 122-2687 127-1992 129-480 124-1846 128-457 127-1992 132-1588 112-732 100-231 104-1123 110-2014 3-407 ■19-662 18-794 18-299 109-805 97-1172 INTERLOCUTORY MOTIONS 27 TITLE CD. O. G. Manny v. Easlcy v. Greenwood Jr. Marks v'. Grecnwalt. . . . Marsh v. Dodge Martin v. Mullin Mattice v. Sangworthy McArthur v. Gilbert. . , AIcBerty v. Cook McBride v. Kemp McCallum v. Bremer , McChesley v. Kruger McGill V. Adams McKcc V. Baker McKniglit V. Pohle Mead v. Brown . . • • McKnight v. Pohle v. Crossdale 1889-179 1891-15 1899-14 1899-14 1899-46 1899-186 1899-233 1901-83 1901-167 1902-16 1903-461 1904-165 1905-370 1904-352 1872-245 1876-198 1904-314 1904-245 1900-248 1900-153 1901-27 1901-353 1902-570 1903-596 1903-345 1903-414 1904-675 1905-577 1905-607 1906-591 1906-618 1904-89 1900-186 1902-349 1905-504 1906-22 1889 173 1903 220 48-538 78-1904 86-490 86-491 86-1636 88-2409 89-1862 96-844 97-1172 98-415 107-1098 110-603 118-1068 111-2224 2-643 127-3216 13.3-1189 132-678 132-1073 111-1624 110-2509 133-514 90-2295 92-2340 94-986 95-838 100-2386 104-1124 105-977 106-1241 107-267 112-955 114-766 114-2383 121-1351 121-2668 109-1070 93-1917 101-1833 101-219 119-1259 120-657 130-1092 131-362 130-2069 132-1588 48 397 105 977 119-2520 28 INTERLOCUTORY MOTIONS TITLE Mechlin v. Horn, Colclazer and Mungcr Medcn v. Curtis Mets V. Crane and Bloomfield Meucci Meyers v. Sarfert Meyers v. Tyden Meyrose v. Jahn Miel V. Young, . . • Miller Miller v. Lambert Miller v. Mann Miller v. Mann v. Bacon v. Torrance Miller v. Perham CD. 1900-154 1900-180 1901-187 1905-272 190G-119 1892-36 1890-65 1901-91 1903-21 1904-2 1891-145 1898-161 1903-181 . 1906-124 1906-225 1906-299 1905-228 1895-77 1906-164 1905-104 1906-157 1906-258 1906-265 O.G. Mills Mills V. Torrance Mills V. Torrance.. Moore v. Curtis Moore v. Curtis. Moore v. Heweth v. Potter Moss V. Blaisdell Munro v. Walker Myers v. Brown National Phonograph Co.. Xaulty V. Cutler Neth V. Tamplin v. Ohmcr 1905- 1903- 1904- 1906 1906 1906 1904 1904- 1906 1904 1905 1899 1902 677 306 172 6 136 -89 -519 -568 -200 -445 -489 -221 -571 1906 1905 1905 131 1906 1 177 -412 -2419 693 92-2507 93-1123 97-1374 117-1795 121-1347 58-947 51-299 96-1037 102-621 108-287 56-1447 84-1283 104-1896 121-1350 122-2688 124-317 116-2532 72-1903 122-730 115-1063 121-2667 123-998 123-1663 127-3217 127-3641 129-3161 133-1189 117-904 106-544 110-857 120-324 121-2325 115-509 113-1703 113-2505 122-2062 112-2093 119-962 89-1669 101-1133 126-389 120-323 116-874 118-1686 123-998 INTERLOCUTORY MOTIONS 29 TITLE CD. O.G. Neuboeker v. Schafhaus , • • Newcomb v. Lemp Nevvcomb v. Thompson • ■ Newell V. Hubbard Newell V. Rose '. Newell V. Clifford v. Rose Newell V. Clifford v. Rose Newell V. Clifford v. Rose Newell V. Hubbard . . • • • . . Niedringhaus v. Marquard v. McConnell. Niedringhaus v. Marquard v. McConnell... Niedermcyer v. Walton • • Noble V. Sessions Norden v. Spaulding Normand v. Krummellein Oldham and Padbury v. Peck v. Clement v. Richards • • Oliver v. Felbel 1873-138 1874-5-i Osborne v. Armstrong. Osborn v. Hotsapillar . . 1906-235 1906-232 1905-128 1905-457 1905-514 1906-164 1906-440 1904-51 1902-403 1904-84 1904-315 1904-348 1904-555 1906-91 1906-92 1901-220 1906-119 1905-588 1905-73 1902- 1902- 1902- 11903- 1903- 1903- 1903- 1903- 190.3- 1903- 1904- 1904- 1905- 1905- 1906- 11906- 4-319 4-314 1904-412 ' 112-1216 122-3013 122-3012 115-1847 119-337 119-1583 122-730 129-2499 125-665 108-1053 115-1847 101-1610 101-1610 109-1007 111-1624 11 1-2222 113-2215 121-337 121-338 97-2306 121-1348 114-1828 131-944 115-249 1902-148 99-670 565 309 315 ■118 ■596 618 333 345-6 ■393 226 304 ■578 701 92 ■591 1905-65 1903-47 1903-393 1904-36 100-2384 101-267 101-2572 102-1470 103-890 104-1124 105-977 106-1000 106-1241 106-2018 110-2014 111-1366 114-766 117-1799 121-337 121-1351 127-3644 131-1686 114-2091 102^1296 100-2018 108-797 30 INTERLOCUTORY MOTIONS TITLE O'Shaughness v. Van Dcpocle Owens V. Richardson, Jr Paget V. Bugg Papendell v. Bunnell v. Rcizenstcin v. Guis- nian v. Gillette Patten v. Wiesenfeld Perrault v. Pierce Perrussel v. Wichmann Pfingst V. Anderson Pfingst V. Anderson Pfingst V. Anderson Phelps V. Wormley v. McCuilough Phillips V. Sensenich Podlesak & Podlesak v. Mclnnerney Podlesak & Podlesak v. Mclnnerney CD. Podlesak & Podlesak v. Mclnnerney 1893-19 1896-7:; 1904-289 11)04-290 1905-3(>3 1903-3GS 1899-214 1900-1 r)4 1902-34G 1903-2G1 1902-114 1904-73 1902-228 1904-315 1904-324 1905-92 1906-138 1905-13 1905-240 1906-138 1903-368 1905-374 1905-538 1906-170 1908-558 1905-358 1906-125 1906-184 1906-225 1906-228 1906-266 O. G. Pohle V. McKnight Potter V. Mcintosh 1906 265 1905-549 1906-162 1906-307 1905-195 62-1063 ;> I- 143(1 111-1037 1 1 1-1038 118-837 118-1067 89-1342 92-2340 100-3013 105-1263 130-2720 131-362 98-2589 108-2146 99-2970 111-1624 111-1628 115-510 121-2326 114-264 117-597 121-2326 118-1067 118-1069 !■ 19-2234 122-1047 120-2127 118-835 121-1350 122-1722 122-2688 122-2689 123-1989 127-1994 128-1690 129-874 130-1691 130-2721 131-1162 131-1691 123-1989 127-^1996 128-2533 130-1691 133-1682 134-255 119-2519 122-729 124-319 116-1451 INTERLOCUTORY MOTIONS 31 TITLE CD. O.G. Potter V. Mcintosh Potter V. Mclntosli Potter V. Van Vlcck v. Thomson Prindle v. Brown Pryor v. Ball v. Brand Pugh V. Hamilton Pym V. Hadaway Pym V. Hadaway Pym V. Hadaway Pym V. Hadaway Quest V. Ostrom Quimby v. Randall Raulet and Nicholson v. Adams.. Rayburn v. Strain Read v. Scott. . . . Reece v. Fenwick Recce v. Fenwick 1906-56 1906-183 1906-273 1906-183 1906-307 1901-53 1901-229 1902-467 1903-261 1904-680 1905-482 1871-116 1870-153 1871-233 1887-47 1906-260 1906-488 1903-348 1878-111 1905-55 1905-65 1905-66 1905-118 1905-429 1905-504 1906-97 1906-105 1906-180 1904-167 1902-242 1902-145 1901-73 1902-145 120-1823 122-1721 123-2309 127-1994 131-1419 131-1687 122-1721 124-319 129-1609 93-2484 97-2532 101-2823 105-1263 112-951 132-842 119-653 40-346 123-1283 130-1312 125-1702 129-480 129-2073 106-1501 14-748 114-1827 114-2091 114-2092 115-1328 118-2249 119-1259 121-340 121-689 122-1398 131-1690 110-603 101-449 99-669 129-1267 196-643 99-669 32 INTERLOCUTORY MOTIONS TITLE Rccd V. Landman. CD. O. G. Reichcrt v. Brown Reichenback v. Goodwin Rennyson v. Alerritt.... Reynolds v. Bean Reynolds v. Haberman Richardson v. Leidgen Ries V. Thomson Rinsche v. Sandherr Ritter v. Kralkaw & Connor Roberts v. Webster Robin V. Muller and Bonnet Robin V. Muller and Bonnet Robin V. Muller and Bonnet Ro'bins v. Titus v. Titus Robinson v. Copeland Robinson v. Copeland Robinson v. Copeland Robinson v. Townsend v. Copeland 1891-73 1893-lOG 1898-52 1894-2 1898-52 1894-3 ■1898-84 1894-13 1899-111 1906-415 1893-50 1892-54 1893-20 1897-195 1902-126 1904-8 1902 1903- 1889- 1891- 1892- 1901- 1896- 1891- 1893- 1903- 1903- 1904- 1905- 1905- 1904 1904 1904 1904 1904- 1904- 1905- 1903 1901- 1905 1903 1904 1904 190G- 1903 1904 1902 1902 1903 461 179 195 93 105 211 63 233 41 273 183 325 •585 138 569 201 571 154 -267 -282 -201 13 -227 -10 -218 -233 664 -739 327 -320 -405 263 418 55-1275 G4-1005 83-743 66-513 83-746 66-513 83-1660 66-1005 87-lGOS 124-2903 63-311 58-1415 62-1063 81-2246 99-446 108-290 132-678 101-2821 104-1895 49-130 55-1527 59-1103 97-1837 77-153 57-1598 62-1516 105-1780 104-1897 111-1935 114-1553 115-2135 113-2506 110-1429 113-2506 110-310 111-584 111-810 116-1732 102-466 97-2531 114-262 105-263 110-2017 112-501 123-2313 106-997 111-1627 101-1611 100-683 107-269 INTERLOCTTTORY MOTIONS TITLE CD. O. G. Robinson v. Scelinger Rockstroh v. Warnick Roemer v. Xeumann Rogers v. Winssinger Rolf V. Taylor Rinsche v. Sandherr Sanders v. Hawthorne v. Hoyt... Sanford Mills v. Avej'ard Sarfert Sargent v. Burge Schenckc v. Redir Schermer v. Linderman and Stork Schmiedl v. W'alden Schmertz v. Appert Schnabel v. Schellabergcr Schofield V. McGovern v. Woods. Schubert v. Munro Schulze Schiipphans Schiipphaus v. Stevens Schweitzer Scott V. Radeau Scott V. Emmet and Hewlett Scott V. Emmet and Hewlett 1905-10 1889-654 1902-463 1891-111 1904-333 1903-273 1906-467 1899-129 1903-151 1902-38 1877-62 1885-19 1878-28 1870-135 1872-205 1874-20 1876-115 1876-144 1880-181 1904-347 1891-150 1896-95 1898-77 1894-95 1899-334 1905-529 1904-460 1905-49 1902-339 1901-365 1902-340 1903-48 1904-413 1905-606 1901-179 1903-443 1903-475 1906-215 1905-210 1905-189 1905-536 1905-189 114-262 130-660 131-234 132-1837 49-1535 101-2821 56-804 111-1938 122-680 105-1780 125-1347 12S-4.-)6 88-385 104-577 102-1049 11-1055 30-1091 13-498 9-964 10-165 18-733 111-2222 56-1563 77-1784 83r-1511 68-658 89-1862 119-1924 113 284 114-1550 100-2775 93-1452 100-2776 102-1296 112-1216 114-2383 97-1371 107-834 107-1378 116-2009 116-2007 116-1184 119-2233 119-1184 34 INTERLOCUTORY MOTIONS TITLE CD. 0. G. Scott V. Ford " 1878-106 14 413 1887-78 40-807 Scott V. Hayes & Bergcr 1906-140 1906-104 1906-49 L 121-2326 Scott V. Southgate 121-689 125-1703 Scribner & Warner v. Child v. Balslc> 1892-104 59-1103 Seaman v. Brooks .... 1902-267 100-685 Sibley Soap Co. v. Lambert Pharmacal Co. 1903-143 103 2172 Seeberger v. Dodge 1904-505 113-1415 Seeberger v. Dodge 1905-603 114-2382 1904-505 113-1415 1905-554 119-2521 1906-566 120-2130 1906-743 123-2631 1906-735 123-2312 ' 1906-738 123-2313 127-1234 128-1690 132-477 Scldcn V. Gerts and Palmer 1903-262 105-1531 Serrell v. Donnelly .... 120-2501 Shallenberger v. Andrews 1902-346 1900-65 100-3013 Sharer v. McHenry 91-1034 Sharer v. McHenry 1902-503 1900-65 98 583 91-1034 1903-52 102-1552 190.3-545 103-1684 1903-350 106-1501 1905-81 11.5-506 1905-379 118-1071 Sheppard v. Webb 1901-32 94-1577 Short V. Sprague 1891-166 56-1708 Shrum v. Banmgarten 1903-150 104-577 1905-117 115-1328 '129-2835 132-232 Sibley Soap Co. v. Lambert Pharmacal Co. 1903-143 103-2172 Siebert v. Blumbcrg 1906-325 1896-47 1899-173 1900-179 124-628 Sievert v. Shuman 76-1714 Sih' erman v. Hendrickson 88-1703 9.3-940 1901-82 96-843 1901-238 97-2742 1903-311 106-763 1905-98 115-803 Silverman v. Hendrickson 1902-123 99-445 1902-527 99-1171 99-1388 1903-320 106-767 INTERLOCUTORY MOTIONS 35 TITLE CD. O. G. Silverman v. Hendrickson Smith V. Carmichael Smith V. Dimond Smith V. Perry Snider v. Bunnell , Snider v. Bunnell , Sobey v. Holsclaw Spaulding v. Xorden Stapleton v. Kinney Stearns v. Prescott. . , Steinmetz v. Hewitt. Steinmetz v. Thomas, Story V. Criswell.... Streat v. Freckleton.. Struble v. Young. . . , Sturgis V. Hopewell. 1902-527 99-1171 1902-199 99-2548 1905-46 114-1265 1900-179 93-1123 1901-188 97-1374 1881-34 20-742 1876-12 9-688 1877-14 11-196 1877-16 11-197 1878-141 15-387 1880-69 •17-394 1902-460 101-2572 1903-117 103-890 1902-460 101-2572 1903-306 106-544 1904-93 109-1071 1904-233 110-2017 1904-279 111-809 1906-93 121-338 127-1992 1905-523 119-1922 1906-57 ■120-1823 1906-185 122-1722 1906-273 123-2309 1906-307 124-319 126-3041 127-1994 127-1995 127-1996 131-1419 132-1588 133-1188 134-256 1904-439 112-2091 1901-414 96-1432 1904-497 113-1145 1906-74 120-2444 132-842 1878-24 13-121 1904-489 107-1972 1904-203 110-1429 1905-507 119-1260 1902 262 100-683 1899-85 87-695 1902-7 98-227 1903-573 104-580 131-360 1906-95 121-339 1906-97 121-340 1904-82 109-1067 1904-347 111-2222 1905-546 119-2236 131-363 36 INTERLOCUTORY MOTIONS TITLE CD. O. G. Sullivan v. Thomson Summers v. Hart Sutton V. Steele ■ Sutton V. Steele and Steele Sweeney v. Jaros Swift Talbot V. Monell Templin v. Sergeant Thompson Thomson and Unbehend v. Hisley Thomson v. Weston Thomson v. Weston Thullen v. Young & Townsend.... Tournier Tournier Townsend v. Copcland v. Robinson Townsend v. Copeland v. Robinson Townsend v. Copeland v. Robinson Townsend v. Copeland v. Robinson Towmsend v. Copeland v. Robinson 1901-21 1903-2G1 1902-104 1002-168 1904-342 1904-467 1903-427 1906-111 1892-197 1904-365 1902-216 1902-419 1904-291 1905-488 1902-6 1894-43 1898-3 1898-173 1901-24 1902-521 1903-227 1903-345 1903-364 1903-410 1904-299 1904-577 1905-436 1906-306 1902-12 1904-36 1905-559 1906-46 1906-76 1906-114 1906-299 1906-311 1905-559 1906-299 1906-379 1906-356 1906-379 94-585 105-1263 98-2585 99-1380 110-2235 113-548 107 541 121-1012 129-12GT 60-1883 111 2494 99-2965 101-1833 111-1038 130-1690 119-961 98-22? 133-1680 66-1596 82-185 84-1584 132-1584 94 988 99-864 105-498 106-1241 106-1507 107-266 106-2018 111-1365 114-766 128-460 118-2251 94-2166 98-229 108-798 119-2523 120-906 120-2445 121-1012 124-317 124-623 119-2523 124-317 124-1845 124-1210 124-1845 126-1355 132-845 132-1073 INTERLOCUTORY MOTIONS 37 TITLE Townscnd v. Corey Townsend v. Ivhrct Tripp V. Wolff V. Jones Trant and Trant v. Disston and Morse.... Trnfant v. Prindlc v. Brown Trufant v. Prindlc v. Brown U. S. ex rcl. Lowry ct al. v. Allen Com. . . . U. S. ex rel. The Newcomb Motor Co. v Allen (Moore) Commissioner Vali(iuct V. Johnson Von Alteneclv v. Thompson et al Van Auken v. Osborne v. Harrison v. Camp bell and Van Anken Van Dcpoele v. Daft Von Hefner-Altcneck Von Welsbach v. Lungren Votey V. Galley Votey V. Wuest Jr. v. Doman Vreeland v. Fessenden v. Schlocmilch Vrecland v. Fessenden v. Schloemilch Walker v. Brunhoff Wallace • • Walsh V. Hallbauer Walsh V. Hallbauer Warnant v. Warnant Warner v. Mead Waters et al. v. Yost et al Webber Weber CD. O. G. 1905-548 119-2237 1906-506 125 2051 1903 141 103-2171 1870-99 1902-397 101-1608 1904-282 111 1033 1904-680 112-957 1906-765 125-2365 127-1994 133-1188 130-302 133-1188 133-1680 1900-132 92-1795 1880-109 17 571 1905-518 119-1584 1892-15 58-520 189:3-109 64-1006 1883-114 23-2233 1889-177 48-537 1891-13 54-503 1891-15 1898-265 85-1738 1905-462 119 339 1904-323 111-1627 1906-S 120-325 1903-315 117-2633 1905-534 119-1926 1906-26 130-659 1906-169 122-1046 1905-506 119-1259 1905-454 118-2537 1905-411 118-1688 1899-184 88 2409 1903-141 10.3-2171 1901-9 94-223 1903-236 105-744 1880-36 17-265 1906-197 122 2061 1875-59 8-517 1887-49 40-345 40-346 1902 93 98 2362 1902-457 101 2570 38 INTERLOCUTORY MOTIONS TITLE Weber v. Hall Weeden Weidcmann Weintraub v. Hewitt Weissenthanner v. Goldstein Weitling v. Cabell Wells V. Packer CD. 1904-279 Wende v. Home Wert V. Borst and Groscop Wheeler Wheeler v. Seeberger Wherry v. Heck Whipple V. Sharp Whipple V. Sharp Whipple V. Sharp White V. Demarest White V. Thomson White V. Thomson O. G. 111-809 1892-185 60-1190 1898-53 83-743 1898-60 83-746 1897-194 81-2245 1901-47 95-1853 1906-401 124-2534 1904-281 111-810 1905-201 116-1732 1872-185 2-223 1875-187 1900-35 90-1947 1901-33 94-1577 1901-211 97-1837 1902-105 98-2586 1902-105 98-2585 1903-136 103-1913 1904-242 110-2235 1904-467 113-548 130-1311 132-233 1896-198 122-2062 130-2720 1883-12 23-1031 1890-39 50-1132 1893-87 64-155 1906-515 125-2363 1889-201 49-559 1903-343 106-1240 1901-133 96-2229 1902-2 98-225 1904-101 109-1337 •1904-381 112-254 1902-5 98-226 1887-133 41-1161 1900-48 91-228 1902-393 101-1371 1902-471 101-2825 INTERLOCUTORY MOTIONS 39 TITLE CD. 0. G. Whitlock and Huson v. Scott 1902-166 101-2823 1902-467 101-2823 1904-467 113-548 Wickers and Furlonut no patent should issue until the mistake was recti- ficil. Warnant v. Waniant, 17 0. G. 265. 72 INTERLOCUTORY MOTIONS 122 190. Wlien an interference is sent back to the Primary Examiner on a motion to dissolve or suspend the inter- ference, or by direction of the Commissioner upon the allegation that there exists a statutory bar to the claim, or that the claim is not patentable, or that the applicant has no right to make the claim (Rule 116-120), which motion is granted by the Examiner, the interference is pro hac vice dissolved, and the application involved be- comes ex parte. Faure v. Bradley v. Cowles & Cowles, 40 0. G. 243. 191. Interference dissolved to permit Primary Ex- aminer to require an oath applying to date of completion of the application. Miller v. Lambert, 72 0. G. 1903. 192. Motion to dissolve interference upon the ground of estoppel by oath of applicant to a preliminary state- ment and by the testimony of his witnesses in a jDrevious interference wherein he was one of two applicants. Mead & Brown, 48 0. G. 397. 193. Where foreign patent expired because of non- payment of tax and applicant summoned to show cause why interference should not be dissolved for want of right to make the claim. His failure to respond con- strued an admission. Armstrong, 71 0. G. 1615. 194. A motion to dissolve because opponents were estopped from having this interference in view of a prior interference transmitted. Poglesing v. Hutt & Phillips, 61 0. G. 151. 195. Interference dissolved because of non-patenta- bility of issue, claims were limited and new interferences declared; motion to dissolve because patentability was res adjudicata refused. Kitsee v. Robertson, 97 0. G. 2306. 196. In that case (121 0. G. 1978) the existence of in- terference in fact was regarded as doubtful, and it was in view of the doubt that the consent of the parties was per- mitted to turn the decision in favor of dissolution. I have no doubt as to the existence of interference in fact in the present case. The interference must accordingly continue. (Trade-Mark.) Hirsch & Co. v. Jennen v. Hilbert & Sons v. Sam- ple & Co., 122 0. G. 1724. ^22 INTERLOCUTORY MOTIONS 73 197. A motion for dissolution l3ases upon the ground that the moving party has no right to make the claim to the subject-matter in issue should not be transmitted. Martin v. Mullin, 127 0. G. 3216. Miller V. Perham, 121 0. G. 2667. Bellows V. King, 106 0. G. 997. Kobins, Jr., v. Titus, 110 0. G. 310. PATENTEE— APPLICANT. 198. Transmission refused to examine into the ques-, tion of public use alleged to be shown by preliminary statement of an applicant on motion of a patentee. Cases reviewed. Thomson & Unbehend v. Hisley, 66 0. G. 1596. 199. "Where a patentee claiming specifically would be entitled to all his claims, even if he were an applicant, in sj)ite of a judgment of priority in favor of his opponent, the fact that his opponent's claim would dominate his own is no sufficient reason for declaring or continuing an interference. Rule 75 provides for preciselv such a case. Eeed v. Landman, 1891 C. D. 73. 199a. Where a party's opponent is a patentee said party cannot move to dissolve on the ground that he has no right to make the claims adopted by him when sug- gested under Rule 96, otherwise if opponent is an apj)licant. Hernsdorf v. Driggs v. Schneider, 133 0. G. 1189. 200. An applicant for reissue moved to dissolve the interference on the grounds that the issue was not patent- able. HELD, such motion should not be considered. Bellows V. King, 106 0. G. 997. 201. Where E., an applicant, moved to dissolve on the ground that the issue was not patentable, it was said: ''The only question to be determined in the inter- ference is whether a patent should issue to K., since he is the only applicant claiming the invention, and since he admits by his motion that he is not entitled to the claims there seems to be no reason why the Office should consume time in considering the matter." Robins, Jr., v. Titus and Titus, 110 0. G. 310. 202. A patentee is clearly entitled to make a motion uj^on anv of the grounds specified. Fickinger & Balke v. Hulett, 110 0. G. 859. <*^ 74 INTERLOCUTORY MOTIONS 1*>'^ 203. An applicant may move to dissolve interference on the ground that a patentee had no right to make the claims. Hull v. Hallberg, 110 0. G. 1428. 204. AYhere one of the parties to an interference is a patentee and the applicant brings a motion to dissolve on the ground that the issue is not patentable, held that the interference will be dissolved, and the applicant will be thereafter regarded as estopped from insisting upon the claims. Weissenthauner v. Goldstein, 111 0. G. 810. *205. A patentee may move to dissolve an interference on the ground that the claims are not patentable. Baltzley v. Seiberger, 115 0. G. 1329. 206. Where an applicant is in interference with a pat- entee and moves for a dissolution of the interference on the ground of non-patentability of the issue, the interfer- ence should be dissolved even where patent has been inadvertentlv issued during pending of application. Griffith V. Dodgson, 116 0. G. 1731. Garnell v. Pope, 115 O. G. 2136. 207. The statute does not specifically provide for the consideration of motions, and Eule 122 both in the letter and reason limits the fight to such consideration to those cases where the opponent of the moving party is an applicant. Griffith v. Dodgson, 116 0. G. 1731. 208. In Hisey v. Peters (6 ApjD. D. C. 68) this court said an applicant who claims an alleged patentable in- vention is not to be heard to urge non-patentability of his claim after it has been placed in interference with other claims. Potter v. Mcintosh, 127 0. G. 1995. FORM OF MOTION. (See "Transmission of Motion.") Winter v. Slick v. Wollkommer, 97 0. G. 1837. 209. An objection to the patentability of a claim should be made by a motion to dissolve the interference and not bv an attempt to restrict the issue. Hockhausen v. Weston, 18 O. G. 857. 210. For form and practice under this rule see Green V. Siemens v. Hall v. Field, 37 0. G. 1475. J *i3 INTERLOCUTORY MOTIONS 75 211. Irregularity in declaring an interference has ref- erence to a case where, in consequence of some defect, some misdescription, some error in describing the thing alleged to be the subject of the interference, or something of that character, a proper solution of the question of priority cannot be reached. It does not refer to what are irregularities in consequence of a violation of the provisions of Rules 121 and 122. Edison & Gilliland v. Phelps, 38 0. G. 539. 213. The decision must be confined to the question presented. ZeidW v. Leech, 1891 C. D. 9. 214. If facts are relied upon other than those dis- closed by the record, they should be stated in order to receive consideration. Law V. Woolf, 1891 0. D. 91, 55 0. G. 1527. 215. Patentability is not in question in a motion to dissolve for non-interference in fact. Forslund v. Matthews, 1891 C. D. 237. 216. On the granting of a motion to dissolve the in- terference after judgment on the record the Examiner of Interferences will vacate the judgment of priority. Garrison v. Hubner, 1891 C. D. 59. 217. Failure to make a motion to dissolve, upon a ground that an accepted amendment to one of the ap- plications involved is for new matter, amounts to an ac- quiescence in such acceptance and in the decision of the Office that such amendment does not involve new matter. Croskey v. Atterbury, 1896 C. D. 437. 2"18. Moving to dissolve an interference upon any of the grounds stated in Rule 122 before the preliminary statements are opened and approved is a practice not to be encouraged. King V. Babendrier v. Libby, 89 0. G. 2653. 219. A motion to vacate judgment is not an alterna- tive remedv with a motion to dissolve. . Patten v. Weisenfeld, 98 0. G. 2589. 220. In a decision the four reasons for dissolution should be kept distinct. Woodward v. Newton, 86 0. G. 490. 221. The case remanded to have a decision having regard to the distinctions pointed out above. Owens V. Richardson, Jr., Ill 0. G. 1038. 76 INTERLOCUTORY MOTIONS Igg 222. A motion to extend time for filing an appeal should be accompanied by appeal. Greuter v. Matthew, 112 0. G. 253. 223. That the counts are vague and indefinite is such an irregularity in the declaration of an interference as to preclude a proper determination of the question of priority. Dinkel v. D'Olier, 113 0. G. 2507. 224. If the motion is for the pui^iose of including ''al- lowable claims" in another pending application which has been filed by applicant, the motion should be accom- panied by a copy of such claims. Normand v. Krimmelbein, 115 0. G. 249. 225. The motion to extend the time for filing motions was properly denied by the Examiner, who stated that the reasons set forth might justify the excuse for delay should a motion be made. Egly V. Schulze, 117 0. G. 276. 226. A motion to dissolve for non-interference which does not specify w*hicli of two opponents does not inter- fere is irregular and should not be transmitted. Yreeland v. Fessenden v. Schloemilch, 117 0. G. 2633. 227. The four grounds for dissolving interferences re- late respectively to very different matters and should not be confused with one another. The question raised by the contention of non-inter- ference in fact is whether the claims as found in the cases of the respective parties define one and the same inven- tion, and the question is independent of the jDatentability of the claims, the right of the parties to make them or any irregularity in the declaration of the interference. Kaczander v. Hodges & Hodges, 118 0. G. 836. 228. As pointed out in the cases of Woodward v. New- ton, 86 0. G. 490, and Owens v. Richardson, 111 0. G. 1037, the four grounds for dissolution given in Rule 122 have distinct meanings which should not be confused. Pfingst V. Anderson, 118 0. G. 1067. 229. A motion for dissolution should give the oppos- ing party a reasonably definite idea of the j)oints to be considered when the hearing is had. ±22 INTERLOCUTORY MOTIONS 77 The counts of the issue against which non-interference is alleged should be specified. Vreeland v. Fessenden v. Schloemilch, 119 0. G. 1259. 230. In a motion to dissolve the bare allegation that there is no interference in fact is insufficient. The point or points to be argued should be specified with great particularity. Not only the count or counts, but the i^articular element or elements which are to be brought into question should be specified. Dunker v. Reist, 119 0. G. 1925. 231. Dissolution for non-interference in fact must be based only on those facts and reasons which show that the counts of the issue have such different meanings that they might properly be allowed to both parties. Townsend v. Copeland v. Eobinson, 119 0. G. 2523. 232. In setting forth facts in motions for dissolutions the distinction between the general grounds of dissolution which have been pointed out in Woodward v. Xewton, 86 0. G. 490, Owen v. Richardson, 111 0. G. 1037, and Kacz- ander v. Hodges & Hodges, 118 0. G. 836, must be care- fully observed. The observance of these distinctions is necessary to the logical presentation of the question raised and to the avoidance of confusion in the matter of appeals. Klepetko v. Becker, 120. 0. G. 658. 233. It is to be noted that the motion does not specify the element or elements of the counts which cannot be read on the two devices with the same meaning and gives no information to the opposing parties of the points to be argued. Therefore the motion was not in proper form and should not have been transmitted. Miller v. Mann, 122 0. G. 730. 234. A motion to transmit because opponents' applica- tion did not originally contain the subject matter of ^ combination claim must specify what element or ele- ments of the combination were wanting. Latour v. Lundell, 122 0. G. 1046. 235. A motion to dissolve alleging non-patentability of the opposing parties' claims in view of certain speci- fied patents is not indefinite simply because the patents are enough to anticipate the claims of both parties. Latour v. Lundell, 122 0. G. 1046. 78 INTERLOCUTORY MOTIONS 133 236. The recently established practice requiring def- initeness requires that motions shall distinctly and def- initely set forth the points to be argued, but not argu- ments themselves. Garcia v. Pons, 122 0. G. 139G. 237. The right of the appellant to allege and urge that there is no interference in fact is recognized, but under the present practice of the Office he is required to make clear upon what point he intends to base his argu- ments. Dickinson v. Hildreth, 122 0. G. 1397. 238. In a motion to dissolve because of indefiniteness of the counts the moving party should point out wherein the supposed indefiniteness lies, so that the opposing party will know the character of the arguments that he will be called on to meet. Berrv, Kane & Stengard v. Hildreth, 122 0. G. 1722. 239. Where matter is set forth in a motion for dissolu- tion as basis for one ground thereof which should only be considered in connection with another and different ground, the motion is not in proper form and should not be transmitted. Corey v. Eisman & Misar, 122 0. G. 2063. 241. The statement contains no positive allegation that certain terms appearing in the issue have such dis- tinct meaning when read as claims in tlie different ap- plications that different inventions are represented there- by in the respective cases. Motions to dissolve on this ground are not in proper form unless they contain specific allegation of the kind mentioned. Booth, Booth & Flynt v. Hanan & Gates v. Mar- shall, 123 0. G. 319. 242. The only contentions and arguments which are in order in support of motions to dissolve interferences for non-interference in fact where the parties have made the same claims are those tending to show that the claims have different meanings in the case of the respective parties notwithstanding a perfect right upon the part of each partv to make the claims. Goodwin v. Smith, 123 0. G. 998. 122 INTERLOCUTORY MOTIONS 79 243. The objection urged to ground C is that non- patentability of the issue is alleged therein, not generally but to Hadaway. The objection is not a valid one as it is conceivable that the claims might have such different meanings in the cases of the respective parties as to rep- resent patentable subject matter in one case and non- patentable subject matter in the other. Pym V. Hadaway, 123 0. G. 1283. 244. It is urged that if the claims are literally con- strued they are not patentable in view of a certain speci- fied patent, and for this reason they must be limited by construction to the specific device shown by the res- pective parties and that as so limited there is no inter- ference in fact. The question of patentability cannot be thus raised on a motion to dissolve alleging non-interference in fact. Klepetko v. Becker, 124 0. G. 908. 245. Grounds must be specific. If it is alleged that new matter has been improperly introduced the new matter should be jDointed out. Lizotte V. Newberth, 1240 G. 1842. 246. Robinson's motion to amend the issue does not come within the provisions of Rule 109. The proposed claims are claims not made by either of the opposing parties and were asserted for the first time in this motion. Besides there was too much delay in bringing the motion. Townsend-Copeland v. Robinson, 124 0. G. 1845. 247. In inaugurating the practice of requiring defin- iteness in motions to dissolve it was not the intention to require the parties to give the arguments, but it was the intention that the opposite party should be given reason- able notice of the points to be argued. If the moving party is of the opinion that each of the references is a substantial anticipation of each of the claims it should be so stated; if not the motion should enumerate the reference in connection with the claims to which they will be applied in the argument. Hevne, FTaywood and McOarthv v. De Vibbness, Jr., 125 0. G. 669. 250. Where a motion is made before the Examiner of Interferences to set times for taking testimony as to 80 INTERLOCUTORY MOTIONS 1 '>'> operativeness, a showing of reasons which do not apply to applicants' own case must be made. Clement v. Browne v. Stroud, 125 O. G. 992. 251, "Where a party makes a reasonable showing be- fore the Examiner of Interferences tending to show that his opponent has no right to make a claim, and that showing does not extend to his own structure, he may be permitted to take testimony provided that the proposed testimony is of a character to justify such action. Pym v. Hadaway, 125 0. G. 1702. 252, Towusend's argument that it is useless for him to appeal on the cjuestion of his right to make the chiim until it is settled that the claims are patentable is not sound. As well might he argue that it would be useless for him to contest the patentability of the claims as long as it was held he had no right to make the claims. Townsend v. Ehret, 125 0. G. 2051. 253, The distinction between the several grounds for dissolution — refused to exercise supervisory power upon question of patentability under the circumstances. Daggett V, Kaufmann, 127 0, G. 3641. 251. M. moved to dissolve as to one set of counts if the other set were found unpatentable on T's motion. Transmission refused because it was alternative and bad in form. Turner v, Macloskie, 128 0, G. 2835, 255. The statement that this count ''does not involve 23atentable invention over each of the following letters patent" after which certain patents are specified, is a sufficient compliance with the practice of the Office as set forth in He>Tie et. al. v. De Yilbiss, 125 0. G. 1292. 256. Nothing is alleged in this case in supjoort of the motion to dissolve because the counts have different meanings in the two apj^lications, which may not be fully accounted for by lack of right of one or the other of the parties to make the claim, or which indicates that any other reason exists for dissolving the interference; under these circumstances the refusal to transmit the motion was right. Cushman v. Edwards, 128 0. G. 457. 257. It is not pointed out in the motion what meaning may be given to counts 4 and 5 in one case that would justify the allowance of these claims to each party with- \2'4 INTERLOCUTORY MOTIONS 81 out regard to wliicli was the prior inventor. Such a state- ment is essential for transmission on the ground of different meanings. Cushman v. Edwards, 128 0. G. 450. 258. Where claims have been suggested to an appli- cant and he makes the same under protest, accompanying the protest with a statement that he does not believe that he has a right to make them, giving his reasons for that statement, and where after inspecting the other parties' application he still contends that he has no right to make them, he should be permitted to argue the question be- fore the Primary Examiner. The practice announced in Miller v. Perlian, 121 0. G. 2667, is modified to this extent. Eichelberger & Hibner v. Dillon, 129 0. G. 3161. Hermsdorf v. Driggs v. Schneider, 133 0. G. 1189. 259. Fifteen patents were cited but their pertinency was not explained. Should not be transmitted. (Same case.) Eichelberger & Hibner v. Dillon, 129 0. G. 3161. 260. The reasons given are general and do not ])oint out the specific portions of the claims which are alleged to have different meanings in the two applications, and is too indefinite to be transmitted. Eichelberger & Hibner v. Dillon, 129 0. G. 3161. 261. Where the reasons for delay appear clearly upon the record it is unnecessary to call attention to them in the motion to transmit. Cutler V. Carichoff, 130 0. G. 656. 262. If a machine is alleged as an anticipation it should be stated where it can be found. Brown v. Inwood & Lavenberg, 130 0. G. 978. 263. The ground of the motion based upon the prior art is entirely too indefinite to satisfy the requirements of the present practice. It gives the opponent no inform- ation as to what patents are to be urged against the respective counts or how applicant proposes the use or combine them to anticipate the inventions of the counts. Brown v. Inwood & Lavenberg, 130 0. G. 978. 264. It is stated in the motion that each of the counts from 1 to 9 inclusive is un]^atentablo in view of tlio eight cited patents, and it is said: "Each of the counts is also met in eacli of tlie above ])ntents. singly or in combination." 82 INTERLOCUTORY MOTIONS 132 This statement is clearly alternative and tlierefore the motion in that particular instead of being clear and specific, which was the end desired to be accomplished by inaugurating the present practice, is vague and indefi- nite. Thullen v. Townsend, 130 0. G. 1312. Phillips V. Scott, 130 0. G. 1312. 265. Where a motion is brought which in accordance with the practice cannot be transmitted, it is no excuse for the delay in bringing the motion in proper form that numerous appeals and petitions have been taken in an at- tempt to have the original motion transmitted. Birantingham v. Draver & Draver, 130 0. G. 2720. 266. The first ground of the motion is insufficiently stated, for the reason that it is not pointed out in what respect the claims of the issue comprise aggregations and not combinations. Papeudell v. Bunnell v. Keizenstein v. Gainsman V. Gillett, 131 0. G. 362. 267. The second ground is insufficiently stated since the difference in the meanings of the claims are not pointed out. Papendell v. Bunnell v. Eeinzenstein v. Gaisman V. Gillett, 131 O. G. 362. 268. A motion to dissolve because the issue is antici- pated, must specify the anticipation. The practice of allowing additional references to be cited five days before the hearing has been discontinued. Papendell v. Bunnell v. Reizenstein v. Gaisman V. Gillett, 131 0. G. 362. 269. The refusal of the Examiner to dissolve the inter- ference on the ground that there is no interference in fact was correct, notwithstanding affidavits which have been filed alleging that no confusion has resulted from the use of the marks referred to (Trade Mark). Philadelphia Watch Case Co. v. The Dueber Watch Case Co. v. etc., 122 0. G. 1725. 270. Dow cannot be permitted to establish the fact that he made the invention and its date by ex parte affidavits. Dow v. Converse, 106 0. G. 2291. 271. Motion to dissolve an interference, affidavits as ±22 INTERLOCUTORY MOTIONS 83 to operativeness received. Motion to remove from files refused. D. v. T. v. H. 99 0. G. 2550. 1902 C. D. 202. Dickinson v. Thibodeau v. Hildrett. 272. The allegations is in the alternative that the counts are "anticipated or necessarily limited", but the motion does not state which counts he intends to urge as being anticipated and which limited, nor does it state which of the patents cited he relies upon as showing anticipation and which for restriction of the counts. Murphy v. Borland, 132 0. G. 231. 273. It is not intended to follow the technical rules of the Court, but merely to require that motions shall clearlv and definitelv set forth the points to be urged. Murphy v. Borland, 132 0. G. 231. 27-1. Ground 11 does not state what grounds it is al- leged against, and for that reason is indefinite and should not be transmitted. (125 0. G. 669.) Murphy v. Borland, 132 O. G. 231. 275. A motion alleging that the opposing party has no right to make the claims on account of informality of his specification is too indefinite. If petitioner meant that new matter had been improperly introduced into his opponent's specification he should have said so definitelv. Eoe v. Brinkmann, 133 0. G. 515. TRANSMISSION OF MOTION. (See "Form of Motion.") 276. It is no reason for refusing to transmit a motion, that the question has been considered ex parte. Eeynolds v. Haberman, 49 0. G. 130. 277. When motion in proper form and made within the former. For these reasons grounds 7, and 9, should the time limit the Ex. of Interferences cannot refuse to transmit it. Cammet v. Hallett, 93 0. G. 939. 278. Motion to transmit in order to consider the ques- tion of shifting the burden of proof. Ex. of Interf. only decides if it is in proper form. Sheppard v. Webb, 94 0. G. 1577. 84 * INTERLOCUTORY MOTIONS ±22 279. These motions should not be transmitted previous to the approval of the preliminarv statements. Wliipple V. Sharp, 96 0. G. 2229. 280. If the motion is made within the twenty day limit the Examiner of Interferences seems to have no dis- cretion but to transmit the motion. If made after that time it is a matter of discretion and will not be disturbed except when there has been an abuse of this discretion. The specific facts upon which a motion to dissolve is based need not be stated when the only facts relied upon are disclosed in the record. Winter v. Slick v. Vollkonnner, 97 0. G. 1837. 281. Eitter's motion to dissolve was based upon the testimonv taken and was properlv refused transmission. Eitter v. Kralkaw & Connor, 104 0. G. 1897. 282. In the absence of an explanation of the delay the motion will not be transmitted, or when the cause for dissolution arises out of the testimonv. Hopkins v. Scott, 105 0. G. 1263. 283. A motion to transmit an amendment canceling- claims before statements filed will not be transmitted under this rule. Colley V. Copenhaver, 107 0. G. 268. 284. One party appealed to the Board on the question of patentability but recommended changes. The motion to transmit for reformation and dis- solution should be denied as it appears that no good pur- pose would be served therebv. Brown, Lindmark, 109 0. G. 1071. 285. It is not ground for a motion to transmit because the Examiner has requested such a course in another case. Parkin & Parkin v. Eiotte, 109 0. G. 1335. 286. As a general rule motions to dissolve an inter- ference are not transmitted when the reasons for bringing the same arise out of the testimonv. (Felbel v. Oliver, 92 0. G. 2339.) Winton V. Jeffrey, 112 0. G. 500. 287. When an applicant has had ample opportunity to present such claims as he wished and had presented several sets, a motion to transmit the interference in order to permit the Examiner to consider another set of claims was properlv denied. Scott V. Emmet & Hewlett, 116 0. G. 1184. 122 INTERLOCUTORY MOTIONS 85 289. AVliere a motion for dissolution is brought long- after the time fixed by the rules and is based upon patents discovered six months before the motion was made, the motion should not be transmitted to the Exam- iner for consideration. Wilcox V. Xewton, 116 O. G. 1452. 290. A motion to dissolve should not be transmitted when the Commissioner has ruled upon the point in- volved. Egly V. Schulze. 291. A decision of the Examiner of Interferences re- fusing to transmit will not be disturbed unless it is shown that it was clear! v erroneous. Dann v. Halliday, 119 0. G. 2236. 292. The Examiner of Interferences properly refused to transmit to the Primary Examiner motions which the Primarv Examiner has no authoritv to decide. Becker & Patiz v. Edwards, 123 0. G. 1990. 293. A motion to transmit for inserting claims that: it appears from a decision of the Primary Examiner in the case cannot be made by the party, should be refused. Townsend v. Copeland v. EolDinson, 124 0. G. 623. 294. Where no testimony has been taken and there is no objection by the other parties wlio have made simi- lar motions — a motion to transmit to reform the issue should be granted. Townsend v. Copeland v. Eobinson, 124 0. G. 623. (But see same case 124 0. G. 1845). 295. The transmission of a motion tiled outside of the regular time is a matter resting largely within the dis- cretion of the Examiner of Interferences (cases). Bastian v. Champ, 126 0. G. 2837. 296. A motion to amend the specification involved in an interference for the purpose of curing an alleged error therein should not be transmitted. Wheeler v. Palmros, 133 0. G. 230. (See also note to 109). 297. A motion based on defective oath should not be transmitted. Rowe v. Brinkmann, 133 O. G. 515. 298. An indefinite motion should not be transmitted. Rowe V. Brinkmann, 133 0. G. 515. 86 INTERLOCUTORY MOTIONS J^23 PETITION TO EXTEND TIME. 299. A petition to extend the limit of appeal to include an appeal filed after the expiration thereof must be sup- ported by verified showing in excuse for the delav. Kletzker & Goesel v. Dodson, 109 0. G. 1336. Autenrith & Eane v. Soresen, 120 0. G. 2126. 300. When an appeal is filed after the time limited it should be accompanied bv a motion to restore jurisdic- tion. Greuter v. Mathiew"^, 112 0. G. 253. 301. As the present motion is not accompanied by affidavits showing why appeal has not been taken to the Examiner-in-Chief within the limit of appeal originally set, it has no standing and must be dismissed from fur- ther consideration. Kletzker & Goesel v. Dodson, 109 0. G. 1336. 110 0. G. 305-308. 302. Although the date of a reference relied upon in a motion to dissolve alleging anticipation of the issue is later than the date of conception set in the preliminary statement of the opposing party, the motion may never- theless be transmitted in order that the Primary Exam- iner may consider the pertinency of the reference and permit the filing of an affida\^t alleging the facts re- quired by Eule 75, outside of those contained in such preliminary statement. Martin v. Goodman v. Dvson v. Suttig & Good- rum, 130 0. G. 1485. (See note in subject matter.) 303. Xo reasons being given in support of the reasons for dissolution, transmission was properlv refused. Miller V. Wallace, 131 0. G. 1689." 304. The original counts, 1 and 2, stand so related to the added counts that whatever conclusion the Exam- iner reaches regarding the dissolution of the interference as to the latter counts would jorobably be applicable to be transmitted as to all counts. Murphy v. Borland, 132 0. G. 231. 305. A motion alleging informality showing that the real grounds relate to the right of a party to make the claim should not be transmitted. Danquard v. Courville, 131 0. G. 2421. 132 INTERLOCUTORY MOTIONS 87 306. W'here a party actin^i^ in good faith files a motion which is held to be indefinite and an amended motion covering the informality is promptly filed within the limit of appeal set from the prior decision, the Examiner of Interferences should transmit the second or amended motion. He cannot, however, be permitted to present his case experimentally. The first , motion having been denied because not sufficiently definite and decisions cited, the second motion should have cured the defect, a third motion refused transmission. Gold V. Gold, 131 0. G. 1422. Eockstroh v. Warnick, 131 0. G. 234. Papendell v. Bunnell v. Eeizenstein v. Gaisman V. Gillette, 132 0. G. 1837. EVIDENCE— AFFIDAVITS. 307. Affidavits received on both sides as to public use. Young V. Hoard, 1870 C. D. 59. 308. Affidavits received as to utility of device. Hunger, 1869 C. D. 3. Cheesbvough, 1869 C. D. 18, backed bv affidavits of others. Harris, 1870' C. D. 62. Phillips, 1871 C. D. 273. Richardson, 1872 C. D. 144. 309. As to the former practice of invention. AVilliam Thie, 1870 C. D. 61. The affidavits of experts. 310. Ex parte affidavits are not competent to estab- lish the statutorv bar of two vears' public use. Wicks & Wyman v. Knowles, 11 0. G. 196. Anson v. Woodbury, 12 0. G. 1. 311. It is not enough for the applicant to charge fraud, which is never presumed, but must always be strictly proved, and then to demand that he be relieved from "the burden of proof which the law has imposed upon him. Such a course will not shift the burden of proof. Hansen v. Davis, 1891 C. D. 72. 312. If the operativeness of the device is denied, whether on a motion to dissolve the interference, or in any other ])roc('cding, tlic a|)])li('aiit lias a right, under Eule 88 INTERLOCUTORY MOTIONS ±22 31 (76) to submit affidavits in pi'oot' of tlie oi:>erativeness of liis invention. An ap]:»lieant cannot l)y indirection l)e de])rived of the benefit of tliis rule. Fuller V. Brush, 79 C. D. 828, 16 0. (I. 1188. ol."). This rule (76) is in accordance with law. Hidges V. Daniels, 1880 C. D. 64. .■)14. The Conmiissioner is not authorized to reject an aijplication on the ground of more than two years' public use and sale, on c.v parte affidavits, without giving the ai)plicant an opportunity to cross-examine the affiants. The proof should conform to the fundamental canons of the law of evidence. Alteneck, 23 0. G. 269. Decision by the Supreme Court of the District of Columbia. 315. Public use and sale asserted, and affidavits tend- ing to establish such facts filed, an order that all files be forwarded to the Commissioner. Upon examining the affidavits and files, an order issued requiring applicant to show cause, at a certain date, assigned, why an order directing an inquiry, into the question of public use and sale, should not be made. A copy of order directed to be served on a]3plicant. Barricklo, 37 0. G. 672. See also Barricklo, 38 0. G. 417. 316. The oaths of the applicant that he is the first and original inventor and does not know and does not believe that the same was ever before known or used, and that letters patent for the same invention for the United King- dom of Great Britain and Ireland have been granted to Charles William Siemens, as a communication from abroad bearing date the 5th of June, 1873, etc., is suffi- cient to identify the applicant with the British patentee, so as to defeat a motion to dissolve the interference on the ground that the same invention was described in said previous British patent. Van Alteneck v. Thompson, 17 0. G. 57. 317. Where on final hearing before the Commissioner an interference is sus])ended and the case remanded to the Primary Examiner for consideration of the question of operativeness, this question will not be considered infer partes but will be determined by the Examiner, 133 INTERLOCUTORY MOTIONS 89 subject to the regular course of appeal in c.v parte pro- ceedings. Archer, 1891 C. D. 191. 57 0. G. 696. 318. The affidavit of a party that the device was oper- ative is questionable in view of the fact that the testi- monv of others, who were not produced, was accessible. Kelly V. Flyn, 92 0. G. 1237. 319. Affidavit of Expert received and considered as to identity of invention. Felbel v. Oliver, 92 0. G. 2339. 320. Motion to dissolve an interference, affidavits as to operativeness received. Motion to remove from files refused. Dickinson v. Thibodeau v. Hildreth, 99 0. G. 2550. 1902 C. D. 202. 321. Dow cannot be permitted to establish the fact that he made the invention and its date by ex parte affi- davits. Dow V. Converse, 106 0. G. 2291. 322. Affidavits as to interference in fact and as to scope of claims in snp])ort of motion under Rule 122 re- fused. Dickinson v. Thibodeau v. Hildreth, 99 O. G.- 2550. Summers v. Hart, 98 0. G. 2585. 323. AYliere certain ])atents and publications are re ferred to on a motion to dissolve, and opposing party states on the record that he has no objection to their con- sideration, although five days' notice has not been given, the reference should be considered. Lake v. Cahill, 110 0. G. 2235. 324-. A party's rights are not limited by proceedings had in another interference between different parties. Gray v. :McK:enzie v. McElroy, 113 0. G. 1968. 325. Where there were two attorneys of record the sickness of one is not sufficient excuse for neglect to look up evidence. Ingoldsby v. Bellows, 113 0. G. 2214. 326. If the Examiner when the case is reached for action rejects claims on the ground of non-invention the applicant may undoubtedly present in response to such rejection and have admitted affidavits which include so much of the present affidavits as relate to the merits and efficiencv of his device, but which omit the irrelevant 90 INTERLOCUTORY MOTIONS l^'^i statements made in tlie affidavits eoncerning tlie devices of others. Robinson, 115 0. G. 1584. 327. The refusal of the Examiner to dissolve the in- terference on the ground that there is no interference in fact was correct, notwithstanding affidavits which have been filed alleging that no confusion has resulted from the use of the marks referred to. (Trade Mark.) Philadelphia Watch Case Co. v. The Dueller Watch Case Co. v. etc., 122 0. G. 1725. 328. I am of the opinion that testimony upon the operativeness of the device disclosed by the senior party should be accepted and considered in determining wbo is the prior inventor in this case, provided a prima facie case of imperativeness is made out and a satisfactory showing is presented that the ])roposed evidence is of a character to justify opening the case for taking testi- mony. Whether testimony may be taken in this case should be determined in the first instance by the Examiner of Inter- ferences. Lowry & Cowley v. Spoon, 122 0. G. 2687. 329. Consideration of affidavits upon motions to dis- solve is not a right which the parties are entitled to demand. The rights of parties on such motions extend no further than is expressly provided by rules of practice. Usually will extend no further than testimony and rebuttal. Browne v. Stroud, 122 0. G. 2689. 330. Affidavits as to inoperativeness of opponent's device in interference cases proper for making a prima facie case. Lowry & Cowley v. Spoon, 124 0. G. 1846. 331. Affidavits as to operativeness of opponent's de- vice in an interference proceeding. Clement v. Brown v. Stroud, 125 0. G. 992. 332. Ex parte affidavits as to intervening rights in interference cases. Donning v. Fisher, 125 0. G. 2765. 333. No testimony as to inoperativeness or public use previous to motion to dissolve. Barber v. Wood, 127 0. G. 1991. 334. Public use is considered in the practice of this Office as a separate question, requiring an investigation independent of the question of priority of invention in- 133 INTERLOCUTORY MOTIONS 91 volved in an interference proceeding. Xo testimony lias been taken, and there is nothing in the case upon which the Primary Examiner at the jDresent time can intelli- gently consider the bar of joublic use. Xo error is found in the refusal to transmit on this ground. Davis V. Swift, 96 0. G. 2409. Shruni v. Baumgarten, 104 0. G. 577. 335. An ex parte affidavit is not enough to carry a party's filing date back to that of a foreign application and change the burden of proof. Raulett & Nicholson v. Adams, 114 0. G. 827. 336. These affidavits as to operativeness of invention may be tiled notwithstanding an interference has been dissolved because of the inoperativeness of the device. Mark, 117 0. G. 2636. 337. An affidavit refused consideration on the ground that certain testimony referred to therein was not prop- erly authenticated as to officer taking it. Brown v. Inwood & Savenberg, 131 0. G. 1423. 338. The matter at issue in an interference proceeding and a public use proceeding are different, and it is for this reason that testimony taken on the cpiestion of priority in an interference is not used on the issue of public use without further proceedings, in which the party adversely affected is given an opportunity to cross-examine the witnesses with that issue framed and to produce witnesses to explain the evidence. (Weber, 101 0. G. 2570.) For the same reason testimony taken in the public use pro- ceeding cannot be held conclusive of the question of priority of invention, and should not be used against Gilman without the institution of a second interference. Ex parte Menzelman & Overholt, 132 0. G. 232. 339. Where both parties are applicants and under the head of informality in declaring the interference it is alleged in a motion to dissolve that the claims do not apply to the structure of either party. HELD that this is not such an admission as to justify a decision on priority adverse to the moving partv. The case of Lipe v. Miller, 109 0. G. 1608, distinguished. Danquard v. Courville, 131 O. G. 2421. 92 INTERLOCUTORY MOTIONS J *J2 DELAY IN BRINGING MOTION, ETC.— EXCUSE FOR SECOND MOTION. 340. A motion niade and judgment passed upon it res adjudicata and cannot be entertained a second time upon the same state of facts. Little V. Little, Pillard ife Sargent, 10 0. G. 543. 341. The rules contemplate that a motion to dissolve the interference on the ground of non-patentability of the subject matter when the facts on which it is based are known should be made at the outset. Such a motion by a defeated party refused after judg- ment because of tlie delay. Blinn V. Gale, 16 0. G. 459. 342. A motion to dissolve an interference based on non-interference or an irregularity in the declaration may be heard and decided at any time before final judg- ment, subject to appeal to the Commissioner. Banks v. Snediker, 16 0. G. 1096. 343. It is not an abuse of discretion for the Examine]- of Interference to grant a motion to transmit, after the 20 day limit, provided the status of the case has not changed. Keynolds v. Haberman, 97 0. G. 1837. 344. It is not a sufficient excuse that one part}^ did not discover that his opponent's application did not inter- fere until testimony was taken. Felbel v. Oliver, 92 0. G. 2339. 345. The motion to dissolve should not be granted in view of the delay, etc. Annand v. Spalackhaver, 93 0. G. 753. 346. When a motion to dissolve is not made within the time fixed by Eule 122, it is permissible to consider the probability of the grant of the motion, etc. Annand v. Spalckhaver, 93 0. G. 753. 347. The 20 days having elapsed a motion to restore jurisdiction to the Examiner of Interference for the pur- pose of moving to dissolve should be accompanied by the motion to dissolve. If such latter motion cannot be made within the time limit it should be made as soon thereafter as possible. Niedermeyer v. Walton, 97 0. G. 2306. 132 INTERLOCUTORY MOTIONS 93 348. In case of discovering new facts after granting the motion to transmit to the Primary Examiner, he may consider such facts provided due and timely notice thereof be given to the party oposing the motion. A petition to amend is unnecessarv. Kurz V. Jackson & Pierce, 98 0. G. 2586. 349. Whether a delay beyond the time limited shall be excused lies somewhat within the discretion of the Examiner. 99 0. G. 1383. 350. When a second motion to transmit is made on the ground of newly discovered evidence it is proper for the Examiner of Interferences to consider the question of due diligence. Whitlock & Huson, 99 0. (i. 1385. 351. A motion pending under this rule is not a bar to a motion under Rule 109, nor does it excuse delav. Perrussel v. Wichmann, 99 0. G. 2970. 352. If a motion is not made within the 20 days lim- ited, the burden is upon the mover to show that it could not have been sooner. Xiedringhaus v. Marquard v. McDonnell, 101 0. G. 1610. 353. Delay in making motion excused in view of the cost of obtaining a copy of opposite party's application, the difficulty of getting the money for the same, and the complicated nature of the case. In the above case the delav was also due in part to the Office. Kletzer & Goesel v. Dodson, 101 0. G. 2822. 354. Under the circumstances of this case even admit- ting that Miller did not appreciate the pertinency of the patents referred to till April 21, 1903, a delay of over a month in bringing his motion after this date was not exercising due diligence. The affidavit accompanying witness' motion is de- fective in that it does not appear therefrom that the patents on which he relies to anticipate the issue could not have been obtained earlier by the exercise of reason- able diligence. Lipe V. Miller, 105 0. G. 1532. 355. As the applicant has made no satisfactory show- ing that the references could not have been found before, and the motion presented earlier to grant his appeal 94 INTERLOCUTORY MOTIONS 133 would, in effect nullify the clause in Rule 122 requiring sucli motions to be made within 20 days following the approval of the preliminary statement. Sturgis & Hopewell, 109 0. G. 1067. 356. When no testimony has been taken and the delay is slight, the motion may be entertained. Harrison v. Shoemaker, 109 0. G. 2170. 357. A second motion to transmit considered as a motion for a new trial and no limit of appeal set. Goodfellow v. Jolly, 110 0. G. 602. 358. It appears, therefore, that the real reason for bringing the motion at this time is a change of purpose, arising from the fact that the applicant has appointed a new attorney. Such reason is not sufficient excuse for the delay. Rayburn y. Strain, 110 0. G. 603. 359. Where parties have not seen each other's state- ments a slight delay may be excused. Doble y. Eckhart y. Henry, 110 0. G. 604. 360. After 20 days the burden of proof is upon appli- cant to show diligence. In the absence of such showing a refusal to transmit is proper. The pendency of a motion to shift the burden of proof is no excuse. :\lcArthur & Gilbert, 111 0. G. 1621. 361. The fact that an alleged anticipating jjatent was not discovered until the expiration of the time limit not considered sufficient excuse. Schirmer y. Lindemann & Stock, 111 0. G. 2222. 362. The pendency of a motion for dissolution is no good reason for delay in bringing a motion to shift the burden of proof. (See Mc Arthur y. Gilbert, 111 O. G. 1621.) Harvey v. Lubbers v. Easpillaire, 112 0. G. 1215. 363. A second motion for dissolution will not be entertained unless there is good showing why new rea- sons advanced were not presented at the time of the first motion. Hedlund v. Curtis, 113 0. G. 1419. 364. The pendency of a motion to dissolve by one party does not excuse delay in making such a motion by another party. Jackson v. Cuntz, 115 0. G. 510. 365. The excuse for delay in bringing motion was the non-discovery of a German patent. ^22 INTERLOCUTORY MOTIONS 95 Some of the ^rounds alleged had nothing to do with the German ])atent and therefore that was no excuse for delaying the motions on these grounds. No reason why the Grerman patent was not discovered earlier was given and no sufficient excuse was given for the delay of more than two months after such discovery, "Tlie pendency of an appeal upon the first mo- tion, which had been decided against him is no excuse." Pfingst V. Anderson, 117 0. G. 597. 366. A mere change of opinion after retention of new counsel will not justify transmission of the motion for dissolution long after (two months) the time when it should have been brought. Carver-v. McCanna, 117 0. G. 7m. 377. It is against the policy of the Office to permit piecemeal motions in interference cases. Egly V. Schulze, 117 0. G. 276. 378. Unexcused delay in bringing motion. Carney v. Latimer, 119 0. G. 6522. 379. That one was not able to get copies of papers within the 20 days' limit received as an excuse. It was however unnecessarv to allege the pa]iers were furnished by the Office. Steinmetz v. Thomas, 119 0. G. 1260. 380. If the excuse for delay in bringing a motion does not cover the entire time the motion should not be trans- mitted. McKee v. Baker, 120 0. G. 657. 381. The provisions of Rule 122 requiring motions to be brought if possible within a time fixed is conducive to orderly procedure and must be enforced. The Exam- iner of Interference was right in refusing to transmit a motion not made in time and unaccompanied by a proper excuse. Townsend v. Copeland v. Eobinson, 124 0. G. 1210. 382. "Where an amendment to a motion was filed after the time limit had expired, the original motion having been filed in time and no delay being occasioned, held that the time of filing the amendment was no objection. Smith V. Fox, 130 0. G. 1312. 383. Motions on ground of inoperativeness are not favored and it is iiuMimbent upon one bringing them to do so promptly. Joslyn V. Hulse, 130 0. G. 1689. 96 INTERLOCUTORY MOTIONS 133 38J-. In response to an order to show cause under Eule 114 applicant moved to dissolve for non-patentabil- ity of issue, but was not sufficiently specific in api)lyini>- references, amendment filed seven days after limit. In view of this attempt to apply the references, the Ijromptness with which the second motion was filed, and the fact that refusal of the motion will be fatal to appellant's case, it is thought that the last motion to dissolve should be transmitted to the Primarv Examiner. Anser v. Pierce, Jr., 131 0. G. 359. 385. A junior party, cited to show cause why judg- ment should not be rendered against him on the record, may move to dissolve for non-patentability of the issue. Papendell v. Bunnell v. Eeizenstein v. Gaisman V. Gillett, 131 0. G. 362. 386. The bringing of motions or the taking of peti- tions to the Commissioner will not stay the running of the limit of appeals from a decision on prioritv. Pym V. Hadaway, 131 0. G. 692. 387. As to claims involved in a second interference between the same parties which could have been made in the first interference, HELD that a final decision in the first interference on the question of priority renders that C[uestion res adjudicata. Hopkins v. Xewman, 131 0. G. 1161. 388. It is well settled that piece-meal action cannot be permitted, but where a party acting in good faith files a motion which is held to be indefinite, and an amended motion curing the informalities is promptly filed within the limit of appeal set from the previous decision, the amended motion should be transmitted. Gold V. Gold, 131 0. G. 1422. See, however, Eockstroh v. "\Varnock, 132 O. G. 234. 389. A second interference between the same parties upon the same subject-matter should not be instituted. AVenzelman & Overholt, 132 0. G. 232. 390. Delay not relieved against by re-declaration to include additional counts. Murphy V. Borland, 132 0. G. 231. 391. Transmission of motion to dissolve refused in view of the fact that the excuse for delav was insuffi- 122 INTERLOCUTORY MOTIONS 97 cient in that it alleged that business of great importance l^revented him from consulting his attorney in time, but did not show why the matter could not be attended to ])y correspondence. Blackmore v. Hall, 132 0. G. 1387. 392. The pendency of a motion to shift the burden of proof is no excuse for the delay in bringing a motion to dissolve. Price v. Blackmore, 133 0. G. 514. McArthur v. Gilbert, 111 0. G. 1621. 392a. In the absence of ]wsitive written law exclud- ing Sundays from the period of time prescribed for any purpose, they are counted, even though the period ends on Sunday. (Lewis Southerland Statutory Construction, Vol. I, p. 335.) The same rule is ai^plicable to holidays. (Trade mark.) Robert A. Keaslev Companv v. Portland Cement Fabrik Hemmor, 133 0. G. 1936. EXPEDITING PROCEEDINGS. EXAMINER'S ACTIONS— TIME LIMIT. 393. Motions under this rule formerly required to be noticed for hearing within the time limited for appeal, so that the jurisdiction should not be lost. Meyrose v. Jahn, 56 0. G. 1417, 1891 C. D. 145. 394. The decision must be confined to the question presented. Zeidler v. Leech, 1891 C. D. 9. 395. The time limited for the making of motions runs from the day the original statements are received and approved, and a subsequent amendment of a preliminary statement does not of itself operate to extend this time. Scribner & Warner v. Childs v. Balslev, 1892 C. D. 104. 396. Upon a motion to dissolve an interference upon the ground of irregularity in declaring the same the Primary Examiner is not at liberty to decide the question of patentabilitv. Hutt & Phillips V. Foglesong, 1892 C. D. 190. 397. On hearing nothing should be considered by the Primary Examiner outside of the fact disclosed by the record unless a showing of such additional facts accom- panies the motion to transmit, but that where moving 98 INTERLOCUTORY MOTIONS 133 jjarties rely ui)ou the record it is unneeessary for them to state in the motion the facts upon which tlie motion for dissolution is based. In the case of the discovery of new facts after grant- ing the motion to transmit, the Primary Examiner may consider such facts provided due and timely notice thereof be given to the opposite partv. Wells v. Packer, 90 0. G. 1947. 398. When motions to dissolve are brought upon the grounds specified in Rule 122, the Examiner should decide the motion on all grounds, and if this decision is of such a nature that appeals therefrom may be taken he should fix a limit of appeal. Hingley v. Parker, 97 0. G. 2742. 399. The Examiner should decide the motion upon all the grounds presented. Oldham & Padbury v. P. v. C. v. R., 99 0. G. 670. 400. If the Examiner is of the opinion that part of the claims are unpatentable he should dissolve the inter- ference as to these claims and continue it as to the re- mainder. If the remaining claims are sufficient to base a conclusive decision upon, the interference should not be dissolved to present new claims in place of those held unpatentable. A motion to amend may be granted con- ditioned on the filing of an affidavit under Eule 75. Hillard v. Eckert, 101 (3. G. 1831. 401. When a motion is made on all the grounds speci- fied in Eule 122, it is the duty of the Examiner to con- sider and determine all these grounds and assign limits of ajipeal to all that are appealable. Cutler V. Eiddell, 100 0. G. 763. See also Hopfelt v. Eead, 106 0. G. 767 and cases cited. 402. Where time is limited in which to take action after the rendering of a decision, the date of the decision and not the date of the receipt of notice thereof governs. Greuter v. Mathieu, 112 (). G. 254. 403. If there is a broad invention common to the respective inventions, it would seem that this fact could be determined by the respective parties and the claims included in the issue, so that this interference can pro- 122 INTERLOCUTORY MOTIONS 99 ceed on its merits without fiii'ther delay, of which there has been too much in this case. Noi-niaiid v. Krimmelbein, 115 0. G. 249. • ..... 404. The time limit fixed in the rules for motions means actual time, and Sundays and liolidays are not ex- cluded in computing it. Dickinson v. Norris, IIG (). G. 593. 405. Where an interference is transmitted to the Primary Examiner for the purpose of determining the right of one of the parties to make the claim, and the Examiner also decides the (juestion of interference in facts — HELD that the Examiner exceeds his jurisdiction. Podlesak & Podlesak v. Mclnnernev, 118 0. G. ' 835. See next case also, 118 0. G. 836. 406. The time limited for appeal begins to run when the case is returned to the Examiner of Interferencs and formal resumption of proceedings is noted. Hewitt V. Steinmetz, 122 0. G. 1396. 407. Where the questions involved are patentability and the right of party to make claim, the motion should not be granted on the ground of non-interference in fact. Thullen v. Young & Townsend, 118 0. G. 2251. 409. Successive motions discouraged. Scott V. Emmet & Hewlett, 119 0. G. 2233. 410. Prior ex parte decision by appellate tribunal not binding on Primary Examiner in inter partes considera- tion. Pelsing V. Nelson, 120 0. G. 2445. 411. The Examiner may upon a motion for dissolution of an interference where a party has filed a certified copy, determine whether or not it is necessary for the other party to see other parts or the whole of the original application. Pagan v. Graybill, 121 0. G. 1013. 412. It is well settled that where an interference is transmited to the Primary Examiner for the considera- tion of one question, he is without jurisdiction to con- sider an entirely independent question. Moore v. Curtis, 121 O. G. 2325. 413. Where the Examiner finds on motion to dissolve an interference that the subject matter in issue is not patentable, he should take sucli action in the applications 100 INTERLOCUTORY MOTIONS 122 subsequent to his decisions as will put them in condition for statutory appeal, so that the appeal may be continued directly to the Court of Appeals without the necessity of a second course of appeal through the Patent ( )ffice. Newcomb v. Thomson, 122 0. G. 8013. 414. No good reason appears for holding that a tribunal may not properly render a decision on a motion for a rehearing made within the time limited for an appeal but noti/:!ed bevond such limit. Naulty V. Cutler, 126 0. G. 389. 415. If a motion is made before the expiration of the 30 days, the balance of the time is waived. Rockstroh v. Warnick, 132 0. G. 234. 416. No limit of appeal should be set on a decision refusing to expunge testimony. Green, Tweed & Co. v. Manufacturers' Belt Hook Co., 132 0. G. 680. 417. Where an Examiner rejects claims presented by a party for interference under Rule 109, he should set a limit of appeal from his decision whether the claims had been allowed to the other party or had been made for the first time bv the moving partv. Mattice v. Langworthy, 132 0. G. 1073. GROUNDS OF APPEAL. 418. When it appears upon the face of the paper that the real grounds of a motion to dissolve relates to the merits, the Commissioner will not take jurisdiction either by appeal or petition. Manny v. Easlev v. Greenwood, Jr., 48 0. G. 538, 86 0. G. 490-491, 98 0. G. 415, 97 0. G. 1172, 110 0. G. 6036, 107 O. G. 1098, 88 O. G. 2409, 96 0. G. 844, 86 0. G. 1636, 89 0. G. 1862, 78 0. G. 1904. 419. It thus appears that the Court of Appeals will not entertain an appeal from a decision on a motion to dissolve an interference, even where the decision is ad- verse to the right of a party to make the claim. This latter question may be settled ex parte in the usual way after the interference. The whole proceeding relating to motion for dissolu- 132 INTERLOCUTORY MOTIONS 101 tion is one of office procedure provided for by the au- thority of R. S. Sec. 483, Newcomb v. Lemp, 112 0. G. 1216. But see U. S. ex rel. The Newcomb Motor Co. v. Moore Com., 133 0. G. 1680. 420. Examiner required to set a limit for appeal upon the question of irregularity and interference in fact. If these grounds are mere pretenses to get the question not appealable under Rule 124 reviewed the appeal will be dismissed. Duryea & White v. Rice, 115 0. G. 803. 421. It having been finally determined that Struble has no right to make claims corresponding to the counts of the issue, the question raised by the appeal, namely, the question of interference in fact, becomes moot and will not, therefore, be decided. Coleman v. Struble, 114 0. G. 973. 422. All the reasons given where alleged but the case was not appealed solely upon the ground of non- patentability of his opponent's claim. The Examiner properly set a limit of appeal, as he is not the judge of the propriety of the appeal. Harnisch v. Guenitfet Benvit & Nicault, 117 0. G. 1492. 423. A decision that a claim has not been abandoned bv failure to prosecute is appealable under this rule. Meden v. Curtis, 117 0. G. 1795. 424. Where the claims of the interfering party are in identical language there is an interference in fact, al- though there may be specific differencs in the two con- structions, such specific differences not being specified in the claims. Gordon v. Went worth. 425. It is not a question whether the issue applies to both structures and means the same thing in both cases, but whether giving it to its natural and ordinary mean- ing the issue is patentable. The Examiner's decision on patentability being favorable the motion to dismiss this appeal is granted. White V. Thomson, 101 0. G. 1371 and 2825. 426. On appeal matters not urged before the Ex- aminer will not be considered. Pfingst V. Anderson, 118 0. G. 1067. 102 INTERLOCUTORY MOTIONS 122 427. In trade-mark cases on an appeal as to priority, identity of subject-matter will not be considered. " Home V. Somers & Co., 129 O. G. 1609. 428. ^^Iietber or not the application discloses the sub- ject-matter of the interference, and, therefore, whether or not the interference is properly declared, is a question ordinarily to be determined by the Patent Office. (See Ostergen v. Tripler, 17 App. D. C. 558; Herman v. Full- man, 23 App. D. C. 264-265.) However, this Court has held that in extreme cases where palpable error has been com- mitted, the decision of the Patent Office holding identity of invention between the devices of the parties to the interference may be reversed. (See Podlesak & Pod- lesak V. Mclnnernev, 26 App. D. C. 399.) McMulken v. Bollee, 130 0. G. 1691. SHIFTING BURDEN OF PROOF. 429. Burden of proof when originality denied. Wherry v. Heck, 49 O. G. 559. 430. It is not enough for the applicant to charge fraud, which is never presumed, but must always be strictly proved, and then to demand that he be relieved from the burden of proof, which the law has imposed upon him. Such a course will not shift the burden of proof. Hansen v. Davis, 1891 C. D. 72. 431. The burden of proof in an interference is upon the contestant who fails to make a claim to the improve- ment in controversy or a statement equivalent thereto until the same was claimed by the other party to the interference. • Reichenbach v. Goodwin, 1893 C. D. 50. 432. A formal abandonment of the earlier application does not shift the burden of proof, if there is a clear continuity of action between it and the second appli- cation, where the two applications are filed by the same applicant and cover substantiallv the same subject- matter. Parmly v. Hockhausen, 1891 C. D. 180. 433. The presumption is that the Office did its duty in notifying the caveators of the filing of the interfering application, and the bur^den is upon them to establish their allegation of no notice by adequate proof. Killeher & Grimm v. Mayliew, 72 0. G. 895. 133 INTERLOCUTORY MOTIONS 103 434. A resissue has the same standing as to linrdeni of ])roof as the original patent. Hansen v. Davis, 1891 C. ]). 72. 435. Motion to shift need not set up facts unless tliey are outside the i-ecord. 81iei)i)ard v. AVebb, 94 O. G. 1577. ^'•^'^' 436. A motion to shift the burden of proof may be founded upon matters outside of the record. Bundy v. Rumbarger, 92 O. G. 2001-2. 437. If one wishes to estal)lish the date of filing of an earlier application he should do so by a motion to shift the burden of proof, in which case the decision of the Primary Examiner as to the admission of claims will be final. If such earlier a])plication is brought in the course of taking the testimony it will be considered like other testimonv bv all the tribunals having jurisdiction. Robinson v. Copeland, 102 0. G. 466. 438. A motion to shift the burden of i)roof because the invention in issue was introduced by amendment is im- proper. The remedv is bv motion to dissolve under rule 122. Tripp v. Woiff v. Jones, 103 0. G. 2171. 439. When an error is discovered by the Examiner of Interferences which would amount to such an ir- regularity as would preclude proper determination of the question of priority, such as the improper placing of the burden of ]:)roof, the interference should be for- warded to the Primary Examiner with a statement of facts, that he may correct his letter forwarded to the Examiner of Interferences under Rule 97. Lutz V. Lewis, 110 0. G. 2014. (Sup.) 440. F's patent does not make him the senior party in the proceeding; as D. was the first to file an appli- cation, he is the senior party in this proceeding, and it is incuinbent ujwn F. in order to prevail to establish his case bv a ])reponderance of evidence. Furman v. Dean, 111 O. G. 1366. 441. The i)endency of a motion for dissolution is no good reason for delav in bringing a motion to shift the burden of proof (See McArthur v. Gilbert, 111 O. G. 1624.) Harvey v. Lubbers v. Kasi)inaire, 112 (). G. 1215. 104 INTERLOCUTORY MOTIONS 122 442. Motions to shift the burden of proof are brought under the provisions of Rule 116. In a proper case the burden of proof can be shifted without dissolving and redeclaring the interference. 443. Said by Commissioner on Appeal — Before the interference proceeds further it should be positively de- termined whether or not these new reference anticipate the issue. Wright & Stebbens v. Hansen, 114 0. G. 761. 444. An ex parte affidavit is not sufficient to change the burden of proof by carrying back a party tiling date to that of a foreign application. Eaulet & Nicholson v. Adams, 114 0. G. 1827. 445. Motions to shift the burden of proof should be made before the Examiner of Interferences within the twenty days after the approval of the preliminary state- ment allowed for motions. This case withdraws juris- diction from the Primarv Examiner in this class of cases. Raulet & Nicholson v. Adams, 114 0. G. 1827. 446. A previous application which does not show all the elements of the issue cannot avail to shift the burden of proof. Norden v. Spaulding, 114 0. G. 1828. -t47. As held in the case of Raulet & Nicholson v. Adams (114 0. G. 1827) no appeal will be entertained upon interlocutory motion relating to the burden of proof, but that matter may be brought up with the final decision as to priority of invention. Such motions should be made before the Examiner of Interferences. Osborne v. Armstrong, 114 0. G. 2091. 448. Claimed that the invention was not .shown in original application but was introduced by amendment subsequent to the filing of opponent's application. If well founded this would entitle S., who was the first to conceive, to the benefit, also, of the earlier reduction to practice, and an inquir}' into the question of diligence would be unneeessarv. Seeberzer v.Dodge, 114 0. G. 2382. 449. As a general rule the burden of proof rests on the party against whom judgment would be rendered if no evidence were adduced on either side. This question involving the taking of testimony, should be considered J^33 INTERLOCUTORY MOTIONS 105 by the Examiner of Interferences, and there is no appeal from his decision prior to the final appeal. Fennell v. Brown v. Borsch, 115 0. G. 1328. 450. Where an appeal was taken from the action of the Primary Examiner denying motion to shift burden of proof, the appeal not considered and case remanded to Examiner of Interferences. Head note to Fisher v. Daigherly, 118 0. G. 1681. Opinion does not seem to bear out head note. 451. The alleged improper placing of the burden of proof forms no proper basis for motion for dissolution, and that question should be presented by separate motion to shift the burden of proof. Blackmore v. Hall, 118 0. G. 2538. 452. The question of shifting the burden of proof is a matter within the jurisdiction of the Examiner of In- terferences and not the Primary Examiner, and there is no appeal from this decision prior to final judgment. Eaulet & Nicholson v. Adams, 114 0. G. 1827. Scott V. Southgate, 121 0. G. 689. / MISCELLANEOUS. Allen, Com., etc., v. U. S. ex rel. Lowrv et al., 116 O. G. 2253. Eschinger v. Drummond & Lieberknecht, 121 0. G. 1348. See note to Eule 124. Ingoldslv V. Bellows. 116 0. G. 2532. See note to Kule 128. Wallace, 118 0. G. 1686. See note to Rule 145. Cazen v. Von Welsbach, 119 0. G. 650. See note to Rule 153. Sobev V. Holsclaw, 119 O. G. 1922. Park Y. Lewis, 120 O. G. 323. See note to Rule 124. Felsing y. Xelson, 121 0. G. 1347. See note to Rule 124. Garnall y. Pope, 115 0. G. 2136. vSee note to Rule 126. Miller, 116 O. G. 2532. See note to Rule 66. Hicks Y. Costello, 103 0. G. 1163. SibleY Soap Co. v. Lambert Pharmacal Co., 103 0. G. 2172. Dickinson y. Tliibodeau y. Hildreth, 99 0. G. 2550. See Rule 76. Fessenden y. Potter, 101 0. G. 2823. 106 INTERLOCUTORY MOTIONS ^22 Votev V. Weist, Jr., v. Donovan, 111 0. G. 1627. Macev v. Tobev v. Laning, 97 0. G. 1172. Potter V. Van Vleck v. Thomson, 95 0. G. 2-t84. Valiquet v. Johnson, 92 0. G. 1795. Banks v. Snediker, 17 0. G. 508. Carroll v. Stahlberg, 111 0. G. 1937. Fickinger &: Blake v. Hulett, 111 0. G. 2492. Wilkinson v. Junggren, 112 O. G. 252. In re Lowry, 90 0. G. 445. See note 1, Kule 15. Philadelphia AVatcli Case Company. The Dueber Watch Case Manufacturing Co. The Keystone Watch Case Com])any y. Byron L. Stras- burger & Company, 122 0. G. 1725. See note to Rule 76. Kugele y. Blair, 127 0. G. 1253. Hewitt y. Weintraub y. Hewitt y. Rogers, 128 0. G. 1689. See note under Rule 130. U. S. A. ex rel. The Xewcomb Motor Co. y. Allen (Moore) Commissioner. See note to 124-130, 0. G. 302. 123 INTERLOCUTORY MOTIONS 107 RULE 123. 123. All lawful motions, except those mentioned in Rule 122, will be made before and determined by tlie tribunal liaving jurisdiction at the time. The filing of motions will not operate as a stay of proceedings in any case. To effect this, motion should be made before the tribunal having jurisdiction of the interference, who will, sufficient grounds appearing therefor, order a suspension of the interference pending the determination of such motion. STAY OF PROCEEDINGS. 453. A motion to operate as a stay of proceedings should be accompanied by a petition to that effect. An order should then be entered at or before the hearing of said motion granting or refusing the petition. Dubois V. McCloskey, 17 0. G. 1158. 454. A motion for a rehearing — even if filed within the limit would not operate as a stav. Oarmichael v. Fox, 104 0. G. 1656. 455. When Alexander's motion to re-open was filed on March 11, only three days remained to him for the time limited for appeal. The suspension of proceedings at that time did not have the effect of setting aside and nullifying the order fixing 30 days as the limit of appeal, but merely stopped the running of the time until the question raised could be finally disposed of. As soon as that question was disposed of by the decision of May 13, the time for appeal again began to run. A limit of appeal will not usuallv be extended. Blackman v. Alexander, 105 0. G. 2059. 456. There is no necessity for a suspension of proceed- ings, as there is now no limit of appeal running against any of the parties. Robinson v. Townsend v. Copeland, 106 0. G. 997. 457. A petition under Rule 145 is not good ground for asking a suspension of the interference. ■Churchward v. Douglas v. Cutler, 106 0. G. 2016- 17. 108 INTERLOCUTORY MOTIONS 1»J3 458. It is deemed better in tlie interest of uniform practice to require that motions be filed as provided in Eules 122 and 123 should a suspension of proceedings be desired pending the determination of any lawful, motion. Hoegh v. Gordon, 108 0. G. 797. 459. It is no ground for the suspension of an inter- ference that an infringement suit is pending. McBride v. Kemp, 109 0. G. 1070. Kletzker & Goesel v. Dodson, 109 0. G. 1336. 460. If it is difficult to obtain testimony and a party elects to take his chances without it, he cannot have the case reopened to introduce such evidence. Grenter v. Matthew, 111 0. G. 583. 461. When a suspension has been granted the time commences to run immediately on the expiration of the time of suspension, or upon the determination of the motion. Grenter v. Matthew, 112 0. G. 253. 462. A motion for rehearing does not operate as a stay of the running of the time in which an appeal from that decision should be taken. Cole V. Zarbock v. Greene, 116 0. G. 1451. 463. Cases in the Office will not be suspended to await the final decision of the Courts upon another case where similar questions are raised. Potter V. Mcintosh, 116 0. G. 1451. 464. A stay will not be granted to await the deter- mination in an ex parte consideration of an application not involved in the interference. Mark V. Greenwalt, 118 0. G. 1068. 465. The pendency of one motion is no excuse for the failure to bring other motions, and a suspension of pro- ceedings as to one motion does not extend the period of time for bringing other motions. (Cases cited.) Moore v. Curtis, 121 O. G. 2325. Naully V. Cutler, 126 0. G. 389. JURISDICTION. 466. It is a matter wholly within the discretion of the Commissioner wliat questions or whether all ques- tions arising out of interference cases shall be decided ±2ii INTERLOCUTORY MOTIONS 109 in the first instance, by the Examiner of Interferences or some other Primary Examiner. Weitling v. Cabell, 72 C. D. 185. See also 22 0. G. 22-33. 467. To what tribunal they (questions arising in an interference proceeding) may be appealed may be deter- mined altogether by the nature of the questions them- selves, and the law relating to them. Weitling et al. v. Cabell, 1872 C. D. 187, 185. 468. Questions of patentable combinations remanded to the Primary Examiner for consideration. Lynch & Raff v. Dryden & Underwood, 1873 C. D. 73. 470. If in the judgment of the Examiner of Interfer- ences neither party is entitled to a patent for want of novelty, he must send the question back to the Primary Examiner for determination. He cannot decide it him- self. Neuboeker v. Schafhaus, 1873 C. D. 138. 471. The practice indicated by this Rule approved by Mc Arthur J., but Judge Wylie said ''I have no idea that it was the intention of the law makers that in questions of interference the Office should go into the question of abandonment, and he did not think the Commissioner had a right to establish a rule permitting it." Bigelow V. The Commissioner of Pats., 7 0. G. 606. 472. The Examiner of Interferences is the tribunal be- fore whom an interference is originally to be heard. It is irregular to present the question to the Board of Ex- aminers in the first instance. Farnsworth v. Andrews, 9 0. G. 195. 473. The question of two years' public use as a statu- tory bar receives consideration from the Examiner of Interferences. He overlooks in this connection, the ques- tion of sale. This appears to be a very important point. This case was remanded by the acting Commissioner to the Primary Examiner to consider the question of sale more than two years before application. Keller & Olmesdahl v. Felder, 10 0. G. 944. 474. The Examiner of Interferences has no jurisdic- tion over questions of patentability. Such questions should go to the Primary Examiner as they are appeal- 110 INTERLOCUTORY MOTIONS J 23 able to the Supreme (V)urt of the District, and matters within tlie jurisdiction of the Examiner of Interferences cannot be appealed from the Decision of the Commis- sioner. Little V. Little et ah, 10 0. G. 543. 47."). Facts establishing two years' public use before application for a ])atent developed in an interference cannot afterward be explained away by (\r parte affi- davits. Case remanded to the Primary Examiner to con- sider such question. Stearns v. Prescott, 13 0. G. 121. 47(). ((Questions of statutory bar of jniblic use referred to the Primary Examiner by the Conunissioner without an appeal from the decision of the Examiner of Inter- ferences. Quiinby v. Randall, 14 0. G. 748. 477. The Examiner of Interferences has no jurisdic- tion over of two vears public use as a bar to a patent. Little V. Little et al., 76 C. D. 207. Ansen v. Woodbury, 77 C. D. 4. 478. The Examiner of Interferences cannot dissolve an interference in view of c.v parte affidavits setting forth public use as a bar to the application. The question should be remanded to the Primarv Examiner. Hedges v. Daniels, 17 0. G. 152. 479. After the declaration of an interference a motion to dissolve should be made to the Examiner of Interfer- ences. Barney v. Kellogg, 17 0. G. 1096. 480. The Examiner of Interferences has jurisdiction to hear and determine the fact of joint or sole invention in an interference between joint patentees and a sole ap- l)licant w'ho is one of said patentees. Lourien v. Banister, 18 0. G. 299. E.v parte Bruker, M. S. 481. If it is decided that there was no joint invention the sole applicant would be the prior inventor, as the entitv, the joint inventors, never invented it at all. Kohler v. Kohler & Chambers, 43 0. G. 247. See Harrison v. Hogan, 18 0. G. 921. 482. Judgment of priority given by the Commissioner and the case remanded to the Primary Examiner to de- termine the question of a statutory bar by reason of, l)ublic use. Smith v. Dimond, 20 0. G. 742. 133 INTERLOCUTORY MOTIONS 111 483. The Examiner of Interferences is a j)roper person to hear and determine questions relative to abandonment. Von Heffner v. Alteneck, 23 0. G. 2233. 484. The practice indicated by this rule (126?) seems to be that such reference by the Commissioner can only be made when the case is brought to him regularly on a]> peal. In a case where the testimony conclusively estab- lishes the fact that the invention had been in public use for more than two years prior to the time when the api^lication for a patent was filed, I do not know that it would be a violation of the Rule for the Commissioner to order that the question should be determined before any decision of prioritv is made. But as above stated such is not the practiceSinder said Rule. Such reference will not be made if the testimony relating to public use is not conclusive. Finch v. Bailey «& Talbot, 25 0. G. 191. 485. Motion for the dissolution of the interference on the ground that it was declared in violation of the provisions of Rules 121 and 123 should be determined bv the Examiner of Interferences. Edison & Gilliland v. Phelps, 38 0. G. 539. 486. Motion to re-ojoen for the purpose of taking more testimonv comes properlv before the Examiner of Inter- ferences." McCallum v. Bremer, 93 0. G. 1918. Hildreth, 97 0. G. 1374. 487. The restoration of jurisdiction for one purpose does not restore it for all. Benger v. Burson, 99 0. G. 1384. 488. After appeal it was refused to restore jurisdic- tion to the Examiner of Interferences in order to present a motion to dissolve. Fessenden v. Potter, 101 0. G. 2823. 489. The fact that a similar question has been raised by another party furnishes no ground for a rehearing. Davis V. Ocumpaugh v. Gerrett, 103 0. G. 227. 490. Motions to shift the burden of proof should be made before the Examiner' of Interferences within the 20 days after the approval of the preliminary statements allowed for motions. (Changing jurisdiction from Pri- mary Examiner to Examiner of Interferences.) Raulet & Xicholson v. Adams, 114 O. G. 1827. 112 INTERLOCUTORY MOTIONS ±2S 491. Jurisdiction restored to the Examiner of Inter- ferences after time limited for appeal had expired. The party should have a hearing- upon the question whether the showing made by him is sufficient to warrant the reopening of the case. Lipscomb v. Pfeiffer, 122 0. G. 351. 492. The only apparent questions for consideration on a motion to restore jurisdiction to the Examiner of Interferences are whether the motion is in projDer form and whether so far as can be seen, without going into the merits of that motion, it is brought in good faith. Newell V. Clitford v. Rose, 122 0. G. 730. 493. It is urged that the earlier api3lication does not disclose the invention, and it is very clear that this is a matter which is to be considered and determined by the Examiner of Interferences and not the Primarv Ex- aminer. Dickinson v. Hildreth, 122 0. G. 1397. 494. Jurisdiction of Examiner of Interferences. Lowry & Cowley v. Spoon, 122 0. G. 2687. Behrend v. Lammer v. Tinglev, 124 0. G. 2536. Kugele V. Blair, 125 0. G. 1350. 124 INTERLOCUTORY MOTIONS 113 RULE 124. 124. Where, on motion for dissolution, the Primary Examiner renders an adverse decision upon the merits of a party's case, as when he holds that the issue is not patentable or that a i)arty has no right to make a claim or that the counts of the issue have different meanings in the cases of different parties, he shall fix a limit of ap- peal not less than twenty days from the date of his dec- ision. Appeal lies to the Examiners-in-Chief in the first instance and will be heard inter partes. If the appeal is not taken within the time fixed, it will not be entertained except by permission of the Commissioner. No appeal will be permitted from a decision rendered upon motion for dissolution affirming the patentability of a claim or the applicant's right to make the same or the identity of meaning of counts in the cases of different parties. Appeals may be taken directly to the (*onnuissioner, ex- cept in the cases provided for in the preceding ])ortions of this rule, from decisions on such motions as, in his judgment, should be appealable. HISTORY AND SUBJECT MATTER. 495. This rule is not inconsistent with section 4909 of the Revised Statutes. Lowrv V. Spoon, 112 0. G. 732. (See 133 0. G. 1680). 496. Previous to 1880 an appeal seems to have been allowed from a decision affirming the patentability of a claim. The same result can now be attained by a protest under Eule 12. Fowler v. Benton, 17 0. G. 266. 497. Propriety of rule discussed. (Consolidating In- terferences. ) Klein v. Groebli, 110 0. G. 305-308. 498. The practice indicated by Rules 122-123-125 may not be the best, but as long as it is the established practice it should be observed. Brown v. La Dow. IS ( ). (;. 1049. 114 INTERLOCUTORY MOTIONS j*i4 499. DGtei'iniiied means ended or decided. This rule should control Rules 116 and 120. Hicks V. Keating & Bilo'ram v. Purvis, 40 0. G. 344. 500. The statutes do not provide for an appeal to the Exaniiners-in-Chief from a decision upon a motion to dissolve an interference. Allen, Commissioner, v. U. S. ex rel. Lowrv et al., 116 0. G. 2258. 501. The Commissioner has, however, supervisory authoritv over these matters. Anderson & Dyer v. Lowry, 89 0. G. 1861. 502. It is more than doubtful whether a construction of Rule 124 which would deprive the Commissioner of jurisdiction would be a valid one. Von "Welsbach v. Lungen, 48 0. G. 537. 503. Questions arising under this rule are not review- able by the SujDreme Court of the District of Columbia on Appeal. Hulett v. Long, 89 0. G. 1141. See however U. S. ex rcl. The Newcomb Motor Co. v. Moore, Com., 133 0. G. 1680. 504. I know of no confusion in the practice at present existing as to the proper course of appeal upon the ques- tion of interference in fact. Rule 124 seems clear and unmistakable upon this point. Allfree v. Sarver, 122 0. G. 2391. 506. The Rules cannot take away the right of an ap- plicant to an appeal after two rejections by the Primary Examiner. See R. S. Sec. 4809. U. S. ex rel. The Newcomb Motor Co. v. Allen (Moore) Commissioner, 130 0. G. 302. 507. Appeal denying motion to dissolve for non-in- terference in fact is to the Commissioner and not to the Bbard. Zeidler v. Leech, 1891 C. D. 9. 508. Xo appeal from the refusal of the Examiner-in- Chief to direct the attention of the Commissioner to cer- tain patents alleged by one of the contestants to consti- tute a statutorv bar. Schmiede v. Walden, 1891 C. D. 150. 509. Where a partj- may, not appeal from a motion he may not appeal from a determination upon the admis- sibility of affidavits filed with that motion. Brown v. Inwood et al., 131 0. G. 142. 134 INTERLOCUTORY MOTIONS 115 510. The same reasons for not permitting an appeal from a favorable decision exists in the case of a motion brought under Rule 109 as on a motion to dissolve. The practice on motions under Rule 109 should follow the practice under Rule 124. Townsend v. Copeland v. Robinson, 126 0. G. 1355. Josleyn v. Hulse, 132 0. (i. 844. 511. No appeal from a decision denying a motion to suppress testimony or requiring a party to print ex- hibits. Deitsch Brothers v. Loonen, 131 0. G. 2146. 512. No appeal from a decision setting aside a rec- ord judgment and fixing a time for final hearing, as this is not a final determination of the rights of petitioner in the premises. O'Brien v. Gale v. Limmer v. Calderwood, 133 0. G. 514. 513. A decision refusing to dissolve an interference on the ground of res adjndicata is a favorable decision on the merits and was not to be reviewed on appeal. Degen v. Pfadt, 133 0. G. 514. 513a. A party to an interference has no right to a review by the Commissioner of a favorable decision by the Primary Examiner in a motion to dissolve alleging non-patentability of the issue either on direct appeal or upon petition for the exercise of his supervisory author- itv (R. S. 4904) urged to the contrarv. Hawkins v. Coleman v. Thullen, 133 0. G. 1187. 513b. An appeal from the Examiner's ruling raises only the question whether or not the Examiner was right in postponing the consideration of the question, which is a matter that will not be reviewed and reversed except in a clear case of abuse of discretion. Royce v. Kempshall, 119 0. G. 338. 513c. The provision of the statute giving an applicant the right to have a claim twice rejected (Sees. 4903-4909) does not apply in inter partes cases. Where a Primary Examiner, on motion to dissolve de- cides that one of the parties has no right to make the claims of an interference issue, and such party after filing an appeal from said decision fails to prosecute the same, and abandons it, such decision becomes final and binding 116 INTERLOCUTORY MOTIONS 134 on the parties aud precludes the subsetiuent cu- parte con- sideration of the same question. U. S. ex rel. The New- comb ]\rotor Co. V. Moore, Commissioner of Patents, 133 0. G. 1680. ABANDONMENT, SHIFTING THE BURDEN OF PROOF, ETC. 514. Appeal allowed from decision of Examiner of Interferences fixing dates for taking testimony as to abandonment of opponent's application. Kinsman v. Strohm, 125 O. G. 1699. 518. Xo appeal is permitted prior to final judgment on a motion to shift the burden of proof, and any sup- posed error in the decision thereon will be reviewed in connection with the decision upon the question of priority of invention. McGill V. Adams, 119 0. G. 1259. 519. A decision that a claim is not abandoned is not one that is not appealable under the last paragraph of this rule, but is appealable under Rule 122. Meden v. Curtis, 117 0. G. 1795. 520. A mandamus refused to compel the Commis- sioner to allow an appeal where the ([uestion of abandon- ment was decided in favor of the applicant. Bigelow V. Commissioner of Patents, 7 O. G. 603. 524. Refusal to suppress testimony not reversible error. Kempshall v. Royce, 129 O. G. 3162. 525. An appeal should be allowed where permission to take testimonv is refused. Pym V. Hadaway, 128 0. G. 457. 526. It is believed that it will be to the interest of all parties concerned, if the Examiner of Interferences in granting motions for the extension of time for taking testimonv should not set a limit of appeal from such motion. ' Goodfellow v. Jolly, 115 0. G. 1064. 527. Decisions of the Examiner of Interferences are final on motions to extend time for taking testimony, and no limit of appeal should be set. Christensen v. McKenzie, 117 0. G. 277. 124 INTERLOCUTORY MOTIONS 117 528. Xo appeal from a decision refusing to shift the burden of proof. ^fillei- V. Wallace, 131 O. G. 1689. RIGHT TO MAKE THE CLAIM. 529. When it was contended that one of the jDarties did not interfere because he did not show one element of the issue, the question was one of the right of the party to nialve the claim, and tlie question was not appealable. Ball V. Rigo, 119 0. G. 1258. 530. Res adjudicata is a (luestion of right to make the claim and will not be considered on petition from a fav- orable decision. Eschinger v. Drummond &' Lieberknecht, 121 0. G. 1348. 531. There is no appeal from a judgment of priority rendered in view of the admission of a party that he is not the inventor, and no limit of appeal need be set from such a decision. Townsend v. Corey, 119 0. G. 2237. 532. Where both parties were agreed that the claim was unpatentable the appeal was entertained under the supervisorv authoritv of the Commissioner. Reichert v. Brown, 124 0. G. 2903. 533. Favorable decision as to right to make the claim not considered on appeal. Blackford v. Wilder, 124 0. G. 319. 534. As the question of the operativeness of one of the devices now in interference is directly presented to us as an incident of the main ([uestion of priority, we hold that it is not one for our consideration. It is as we have before indicated a preliminary question determinable in the first instance in the case of every api^lication for a patent, and when determined in favor of the applicant is not appealable. When determined in his favor, and an interference declared thereon with another similarly allowed application, the same rule applies. Duryea & White v. Rice, Jr., 126 0. G. 1357. 535. Interferences are to determine }n-iority. Though parties in these proceedings are permitted to secure re- consideration by the Primary Examiner of his ex parte 118 INTERLOCUTORY MOTIONS 1 '>4 conclusions that tlieir oj^ponents, aside from the conflict- ing claims of priority, are entitled to patents, and though they are entitled to appear and oppose such reconsidera- tion, their opponents' right to a patent, the interest of a party has never been considered such that he should be permitted to appeal from the Examiner's inter partes conclusion affirming his opponent's right to a patent. Gueniffet, Benoit & Nicault v. Wictorsohn, 117 0. G. 1492. 536. The provisions of the last clause cannot be avoid- ed by a petition to the Commissioner to exercise his su- pervisorv authority. kempshall v. Sieberling, 10-t 0. G. 1395. 537. It is a well settled principle that a decision re- lating to sufficiency of disclosure will not be disturbed except for manifest error, Auerbach & Gubing v. Wisweld, 108 0. G. 289. 538. No appeal from the decision of the Examiner that affidavit was sufficient to overcome the reference. McChesley v. Kruger, 101 0. G. 219. 539. No appeal can be taken from the decision of the Primary Examiner allowing claims upon an affidavit under Rule 75, as this is a favorable decision. Byron v. Maxwell, 105 0. G. 499. 540. Decision that a claim is a good combination and is not anticipated is not appealable. Wickers & Furlong v. Weinwurm, 117 0. G. 1797. 541. Where a party requests an interference, and the Examiner rules that he is not entitled to make the inter- fering claim. . . . HELD that the matter will not be reviewed on interlocutorv petition or appeal. Hanson, 117 0. G. 2632. 542. Question of' new matter is not one of regularity but one of right to make the claim, from which no appeal lies. Brooker v. Smith, 119 0. G. 652. 543. Matters urged as irregularities, but which relate to right to make the claim, will not be heard on appeal. Pryor v. Ball v. Brand, 119 0. G. 653. 544. There is no appeal from an affirmative decision upon the right of a party to make a claim, and equivalent consideration is not to be obtained by presenting the contention in different form and under a different name. 1*^4 INTERLOCUTORY MOTIONS 119 As, for instance, whetlier the counts mean tlie same in reference to both a})pli cations. Weintranl) v. ITewitt, 124 0. G. 2534. 545. The contention that the o})posing parties do not have a construction responding to a certain language in the issue is one relating to the right to make the claim and not to interference in fact — No appeal. Oarnel] v. Glasgow v. Cook, 120 0. G. 901. 546. There is no ap])eal from tlie decision of the Pri- mary Examiner affirming tlie opponent's right to make the claims or the identity of meaning of the cUiims in their respective applications. Daggett V. Kauimann, 127 0. G. 3641. 547. A petition to review a decision affirming ])atent- ability, or the riglit to make the claim, and identity of meaning of counts, in the exercise of supervisory au- thoritv, will be considered only in extraordinary cases. Lipschutz V. Floyd, 130 O. G. 2718. See note 513. AFFIRMING PATENTABILITY. 548. The Examiners-in-Chief having allowed a claim corresponding to count 5 to Strouble, there is conse- quentlv no appeal from that decision. Coleman v. Bullard v. Strouble, 114 0. G. 973. 549. No appeal lies from the decisions of the Ex- aminer-of-Trade-Marks adjudging that a party is en- titled to the registration of a trade-mark, Siblev Soap Co. v. Lambert Pharmacal Co., 103 0. G. 2172. 550. It would be only in a very clear case that the Examiner's decisions affirming patentability would be re- viewed on appeal. Rinsche v. Sandherr, 105 0. G. 1780. 551. There is no appeal from a decision of the Ex- aminer holding that the issue is patentable when con- strued broadly enough. Bachman v. Southgate, 111 O. G. 805. 552. An appeal does not lie from a decision affirming patentability. White v. Thomson, 101 (3. G. 2825. 120 INTERLOCUTORY MOTIONS 124 553. No appeal lies from the refusal of the Examiners- in-Cliief to call attention to the question of ]^atenta])ility under Rule 1'26. So long as this rule stands it must be enforced, and it has been approved by the different Com- missioners. Benet & Meroie v. McOlean, 97 O. G. 1595. 554. The law makes no provision for an ajipeal from the favorable decision of the Examiners-in-Chief affirming patentabilitv. Barney v. Kellogg, 17 O. G. 109n. 555. Last clause affirmed. Faure v. Bradlev v. Crocker v. Cowles & Cowles, 10 (). G. 213." 55(5. The supervisory authority of the Commissioner will be exercised to review a favorable decision on ]iat- ental)ilitv onlv in verv exceptional cases. Read 'v. Scott", 101 0. G. 419. 557. When the Examiner has decided in favor of the ])atentability of claims, it would seem that the right of the oi)posing partv to raise this issue was at an end. Sobey v. Holsclaw, 119 0. G. 1922. 558. The validity of this rule, as to denying an ap- peal in decisions affirming patentability of a claim, af- firmed by the Supreme Court of the United States, two justices dissenting. U. S. ex. rel. Lowrv v. Allen, Com., 125 0. G. 2365. AMENDMENTS. 559. The fact that there has been a "final rejection" in the course of the interference should not be taken to mean, as the applicant seems to fear it may, that further amendments will not be permitted except as an act of grace or leniency. Sanders v. Hawthorne v. Hoyt, 125 0. G. 1347. 560. This rule does not authorize amendment of the claims during the interference. Sanders v. Hawthorne v. Hovt, 125 0. G. 1347. 1«J4 INTERLOCUTORY MOTIONS 121 ASSIGNMENT OF REASONS. ')()!. A (juestioii involving tlio right of an applicant to make the claim in interference will not be passed upon by the Commissioner on a])j)eal from the decision of the Primary Examiner upon a motion to dissolve the interference. 'Sweeney v. Jarvos, 1892 C. ]). 97. Prvor v. Ball v. Brand, 119 O. G. (153. Weintraub v. Hewitt, 124 O. G. 2534. 562. Where no irreguhirity in declaring the inter- ference independent of the allegation of non-interference in fact was ]n-esented, HELD tliat the appeal as to tlie ground of irregularitv in dechiration would be dismissed. Walker v. Brunhoif, 118 0. G. 2537. Blackmore v. Hall, 118 0. G. 2538. 563. Where the Examiner dissolves the interference because the issue is not })atentable, HELD that an ap- l)eal relating to interference in fact involves a moot (jues- tion and will not be determined. Newell V. Hubbard, 115 (). G. 1847. 5()4. There is no appeal from the Examiner's action liohling that the counts are })atentable, and therefore the sole question to be determined is whether the counts in question are the same when applied to the structure of both parties. Anderson v. Vrooman, 123 0. G. 2975. 565. Questions cannot be raised on appeal which have not been raised by the motion and passed on below. Larkin Gompanv v. Pacific Coast Borax Co., 132 0. G. 679. 566. Where it has been decided that one of the parties to the interference has no right to make the claims, the question of interference in fact is a moot question and will not be considered on api)eal. Selden v. Gerts & Palmer, 105 0. G. 1531. 567. Right to make claims and patentability will not be reviewed upon appeals on non-interference in fact, and irregularitv in declaration. Thullen v. Young & Townsend, 118 O. G. 2251. 122 INTERLOCUTORY MOTIONS 134 568. On appeal on question on priority, patentability will not be considered. Fairbanks & Saner v. Karr, 119 0. G. 651. 569. Where on an appeal to the Commissioner on the ([uestion of interference in fact it appears from the opin- ion of the Primary Examiner and the brief of the ap- pellant that the real question is one relating to the right to make the claims, the appeal will be dismissed. Schofield V. McGovern v. Woods, 119 0. G. 1924. 570. Contentions which go to the right of a party to make claims can afford no proper basis for dissolution upon the ground of non-interference in fact. Appeal dismissed. Blackmore v. Hall, 119 0. G. 2523. Blackmore v. Hall, 120 0. G. 1477. 571. The decision of Primary Examiner affirming patentability will not be reviewed in an appeal relating to other grounds permitted by Eule 122. Wilkinson v. Junggren, 112 0. G. 252. 572. This appeal while nominally on appealable grounds is really for the purpose of getting a review of the Examiner's decision affirming patentability and ap- plicant's right to make the claims. It is therefore dis- missed. Forsyth v. Emery, 113 0. G. 2215. 573. An affirmative decision upon the right of the appellee to make the claim is not appealable and will not be considered in an appeal on other grounds. Kinney v. Goodhue, 123 0. G. 1663. 574. A new appeal fee must be paid on the api)ea] denying the jDatentability of a claim in an mter partes matter notwithstanding an appeal has been once taken on that point on an c.v porta matter. Cheney v. Venn, 125 0. G. 1703. 575. Applicant's claims were involved in two inter- ferences. A motion has been made in each on the ground of lack of patentability, which was granted. Held that one appeal fee was sufficient. Miller y. Mann v. Bacon v. Torrance, 115 0. G. 1063. 576. Where an interference is dissolved by the Pri- mary Examiner on motion, appeal cannot be taken by the 1 24 INTERLOCUTORY MOTIONS 123 party bringing such motion, though granted on a part only of the grounds urged therein. Zeitinger v. Reynolds y. Mclntire, 1891 C. D. 212. Ries y. Thomson, 1891 C. D. 233. 577. No valid reason appears to exist for making an exception where the motion is appealable to the Ex- aminers-in-Chief and in allowing only one party to the contested proceedings to appear and be heard. Duncan y. Westinghouse, Jr., 6G 0. G. 1005. 578. When both parties moye to dissolve the inter- ference upon all grounds permitted by the rules and the motions are granted, HELD that an appeal will not be entertained since a party cannot aj^peal from a decision in his favor merely because he disagrees as to the reason. Scott v. Badeau, 116 0. G. 2007. 579. Favorable decision not appealable. Potter v. Mcintosh, 116 0. G. 1451. 580. Where a review is requested by G. of Examiner's rulings upon the meaning of claims in his decision grant- ing G.'s motion for dissolution, HELD that G. was not entitled to such review: his motion for dissolution as to counts embodying the substance of these claims having been granted. Votey v. Gaily, 119 0. G. 339. 581. Where a party made no motion for dissolution he cannot appeal from the refusal of a motion made by another party. Townsend v. Copeland v. Robinson, 119 0. G. 2523. 582. The supervisory authority will not be exercised to review a favorable decision on the question of pat- entability except in a very clear case. Eschinger v. Drummond & Lieberknecht, 121 0. G. 1348. 583. There is no reason, as was pointed out in ]\liller V. Perham, 121 0. G. 2627, why the Office, having once decided that a party is entitled to make certain claims, should reconsider the question on the partj^'s own motion. Goodwin v. Smith, 123 0. G. 998. 584. It is the substance of the decision which deter- 124 INTERLOCUTORY MOTIONS 134 mines whether it is appealable to the Coiiiinissioiier and not the reason given by the Examiner. Von Welsbaeh v, Lungren, 48 0. G. 537. Cited, 85 O. G. 1738. 585. Only one injnred mav appeaL Judd V. Campbell, 110 0. G. 2017. 586. No appeal from favorable decision. Cazin v. Von Welsbaeh, 119 0. G. 650. 587. Last clause. A petition will not be entertained except in a clear case, to review a favorable decision. Denton et al. v. Riker, 98 (). G. 415. 588. Xon-appeal lies from a refusal to declare an in- terference with an existing patent accompanied by an al- lowance of applicant's claims under the last clause. Gibboney, 105 0. G. 976. REHEARINGS. 589. There is no appeal from a decision refusing a rehearing. Carmichael v. Fox, 104 0. G. 1656. Brvon v. Henrv, 104 0. G. 1895. Reynolds v. Bean, 101 0. G. 2821. Roemer v. Neumann, 49 0. G. 1535. Cole V. Zarbock v. Greene, 116 O. G. 1451. DECISION OF THE COMMISSIONER. 590. The judgment of the Examiner will not be con- trolled by an order made in advance, Marks v. Greenawall, 118 0. G. 1967. 591. An appellant will not be heard to argue that an interference should be dissolved, upon the ground under Rule 122, not argued before the Examiner. Pfingst V. Anderson, 118 0. G. 1067. 592. Last clause. This clause may not be avoided by considering the standing of the application as evidence. Shupphaus v. Stevens, 95 O. G. 1452. 593. The Commissioners may, upon api)eal upon points not involving the question, declare that there is no con- flict in fact. Schupphaus v. Stevens, 95 O. G. 1454. 1 24 INTERLOCUTORY MOTIONS 125 594, Does not prevent tlie Com 'r froiti considering any reason: for dissolving lan interference whieli mar be brouglit to his attention or which lie may discover. A ])etition will not be entertained when it seeks to obtain indirectly a review of an Examiner's decision from which no appeal lies, bv merelv misnaming the proceedings. Goss V. Scott, 96 0. G. 844. ^ 595. Decision of Primary Examiner. When a motion to dissolve is brought upon the grounds specified in Rule 122 the Examiner should decide the motion upon all grounds, and if the decision is of such a nature that ap- peal therefrom may be taken he should fix a limit of appeal. Duryea & White v. Rice, 115 O. G. 803. 59(i. If a])pealable grounds are })resented an aj^peal ma}" not be refused by an Examiner because he chooses to decide the motion upon unappealable grounds. Silverman v. Hendrickson, 88 O. G. 1703. TIME WHEN TAKEN— EXCUSE FOR DELAY— PE- TITION TO EXTEND TIME. 597. An appeal from a decision on a motion w^ill not be entertained and considered nunc pro tunc after the limit of ai^peal has expired, because of a showing that it was the intention to appeal and the failure was due to a misunderstanding between attornevs. Gerdon v. Elirhardt, 116 O". G. 595. 598. Negligence or oversight of attorneys not suffi- cient excuse for not taking appeal within the time limited. Brissenden v. Roesch, 118 O. G. 2253. 599. Since the defeated jiarty failed to take his a])peal within the limit set, he is not now entitled to have that decision reviewed bv another tribunal. Briggs V. Conley, 104 O. G. 1119. 600. A limit of appeal should be set in decisions dem^- ing a right to make a claim. Judd V.' Campbell, 110 0. G. 2016. 601. Where in an interference it is decided that one of the parties has no right to make the claim, it seems clear that it is not just to the other party to withhold in- definitely his application, which is ready to issue, merely 126 INTERLOCUTORY MOTIONS 124 to await the pleasure of the otlier party. A limit of ap- ])eal should be set. Hutin V. LeBlanc v. Steinmetz v. Scott v. Fair- fax, 97 0. G. 2744. i](y2. No appeal from a decision of the Examiner ex- tending time for taking testimony. It can only be modified by the exercise of the supervisory authority of the Commissioner, and this onlv in unusual cases. Wickers & Furlong v. Weinwurm, 129 0. G. 2501. See however, Kinsman v. Strohm, 125 0. G. 1699. 603. The bringing of motions or the taking of petitions to the Commissioner will not stay the running of the limit of appeal from a decision on priority. Pym V. Hadaway, 131 0. G. 692. TO THE BOARD OR TO THE COMMISSIONER. 604. Appeal denying motion to dissolve for non-inter- ference in fact is to the Commissioner and not to the Board. Zeidler v. Leech, 1891 C. D. 9. 605. A motion of one party to amend his application by inserting two claims taken from his opponent's ap- l^iication, not appealable directlv to the Commissioner. Berry v. Fitzsimmons, 99 0. G. 863. 606. Interference in fact appealable to Commissioner in person. Oldham & Padburv v. Peck v. Clement v. Rich- ards, 99 0. G. 670.^ 607. Appeal, from decision dissolving interference because there is no right to make the claims, appealable to Examiners-in-Chief. Story V. Criswell, 100 0. G. 683. 608. An appeal from an action holding that there is no such combination does not lie to the Commissioner. Webber, 98 0. G. 2362. DECISIONS OF THE BOARD. 609. If the Examiners-in-Chief are equally divided the Primary Examiner is affirmed, and upon questions of patentabilitv there is no appeal. Porter v. Mcintosh, 120 0. G. 1823. 134 INTERLOCUTORY MOTIONS 127 610. The only (luestion tliat can be i:>resented to the Board, under tlie Statute, on an appeal in an interference case upon the nierits, is priority of invention. The Board has no right to make the question of whether there is an interfering matter in tlie device a part of tlieir decision. Brown v. La Dow, 18 0. G. 1019. 611. No appeal from favorable decision of the Board on questions of right to make tlie claim. Josleyn v. Hulse, 132 0. G. 814. Coleman v. Bullard v. Struble, 114 0. G. 978. MISCELLANEOUS. Bechman v. Southgate, 123 0. G. 2309. Last clause. In re Locke, 94 0. G. 432. Mvers v. Sarfert, 96 0. G. 1037. Reece v. Fenwick, 97 0. G. 188. Hinkley v. Barker, 97 0. G. 2742. Sharer v. McHenrv, 91 0. G. 1034. Wheeler v. Seeberger, 125 0. G. 2363. Hopfelt V. Read, 106 0. G. 767. Myers v. Brown, 112 0. G. 2093-4. Schubert v. Munro, 113 0. G. 284-3. Gully V. Brand, 113 0. G. 852. Last clause. Harnisch v. Gueniffet, Benoit, & Nicault, 117 0. G. 1492-3. Allen, Commissioner, v. U. S. ex rel. Lowry et al., 116 0. G. 2254-3. Neth V. Tamplin v. Ohnier, 120 0. G. 323. ^ See note to 114. Last paragraph. Brewer, Tilv, Rehfuss & Rehfuss v. Dement, 116 0. G. 2010. Duryea & White v. Rice, 123 O. G. 2627. Locke V. Baldwin, 124 0. G. 317. Harnisch v. Gueniffet, Benoit & Xicault,'128 0. G. 355. 128 INTERLOCUTORY MOTIONS J '^(J RULE 126. 126. The examiner of iuterfereiifes or the exainiiiers- in-chief may, either before or in their decision on the question of priority, direct the attention of the ( Com- missioner to any matter not relating to priority which may have come to their notice, and which,; in their o))inion, establishes the fact that no interference exists, or that there has been irregularity in declaring the same (Rule 122), or which amounts to a statutory bar to the grant of a patent to either of the parties for the claim or claims in interference. The Commissioner may, be- fore judgment on the question of priority, suspend the interference and remand the case to the primary examiner for his consideration of the matters to which attention has been directed. From the decision of the examiner appeal may be taken as in other cases. If the case shall not be so remanded, the primary examiner will, after judgment, consider any matter affecting the rights of either joarty to a patent which may have been called to his attention, unless the same shall have been previously disposed of by the Commissioner. STATUTORY BAR SUGGESTED. 611. If public use for more than two years is shown by preliminary statement the interference should be dis- solved. Schenck v. Rider, 1870 C. D. 135. 612. The question of priority decided by the Commis- sioner and the case referred to the Primary Examiner to determine the question of novelty in view of newly dis- covered references. Yost v. Heston, 1871 C. D. 226. 613. The question of novelty is alwaj^s a proper one for consideration of the Office at any time prior to the grant of a patent. An interference case re-opened to admit testimony of that kind after the time for taking testimony had expired. The Examiner of Interferences directed to assign dates for taking such testimonv. Wood V. Morris, 1873 C. D. 39. See Hovev v. Hufeland. 1 •>(; IXTERLOCITTORY MOTIONS 129 614. I believe it lias been the custom of the Coin- iiiissioners, although such matters are purely ex parte, to hear other parties, in order that he mig'ht be as fully in- foi-med as possible in relation to the merits of the ease. Com. Spear in Carter & Dwver v. Perrv & Dickey, 1875 C. D. 111. 615. In the case of Rouse and Stoddard, 75 C. D. 33, the practice of sending letters of inquiry to the inventor who has filed and abandoned an application, calling for information in the form of affidavits as to public use of the invention, and informing the applicant that another application for the same invention is pending, was in- augurated; this practice was discontinued in the case of Casilear & Mclntire, 1875 C. D. 117. 616. Nor can I think that an interference proceeding authorized by law for one specific purpose (i. e. to deter- mine priority of invention) can be rightfully used by the Commissioner for any other purpose, and in my judg- ment, no part of the testimony taken and submitted in such case, if plainly outside the issue, is evidence at all against the right of the adverse party. This decision re- lated to abandonment bv ])ublic use apparentlv. Smith V. Perryi 9 0. G. 688. 617. The law of 1836 provided that in connection with interference proceedings, like proceedings should be had to determine which, or whether either of the applicants is entitled to receive a patent as prayed for. But in the act of 1870 this provision was omitted. Smith V. Perry, 9 0. G. 688. 618. When the Examiner of Interferences finds that neither party is the first and original inventor he should render his judgment accordingly. As this question re- lates to priority it should be appealed to the Board and not referred to the Connnissioner under this rule. Wood V. Eames, 17 0. G. 512. 619. The i^rovisions of this rule must not be construed to provide an alternate remedy, but can only be availed of when motions relating to a statutory bar cannot be made as prescribed in the other rules. Barney v. Kellogg, 17 0. G. 1096. 620. The joint patentees proving not to be joint in- ventors the interference was decided against them and 130 INTERLOCUTORY MOTIONS 126 the case was remanded to tlie Primary Examiner to con- sider whether there was not a statutory bar existing- to the grant' of the patent by reason of the right of one of said joint patentees to obtain a patent. Harrison v. Hogan, 18 0. G. 921. 621. If the question presents itself in the preliminary statement, applicant should be given a chance to avoid the objection by amendment; if he does not do so the pre- liminary statement should be approved if correct in other particulars, and in his decision of the question of priority the Examiner of Interferences should call the attention of the Commissioner to the existence of the statutory bar. Hicks v. Keating v. Purvis & Bilgram, 40 0. G. 343. 622. The question of statutory bar as contemplated in Kule 120 relates to matter that is purely a bar as con- tradistinguished from title, or whether applicants are joint inventors. Under the present rule a statutory bar to either one of the parties in interference may call into exercise the action authorized by it. Formerly it was only a statutory bar to both. Hicks V. Keating v. Purvis & Bilgram, 40 0. G. 343. 623. The question as to what is the correct practice under this rule when joint applicants prove not to be joint inventors has presented itself in a variety of phases to the Commissioners, and their conclusions are by no means in harmony. During the period covered by these decisions the rule has been changed and modified, but this fact will not explain the conflict in them. Decisions reviewed. Hicks v. Keating v. Purvis & Bilgram, 40 0. G. 343. 624. Public use proceeding on motion of defeated partv to an interference refused. Beardslee v. Moeslein, 46 0. G. 1640. 625. When an allegation of public use comes up for consideration in connection with an application which is being considered ex parte after the termination of the interference proceedings, the proper practice is for the Examiners to pass upon the question whether or not a prinia facie case of public use has been established, re- jecting the claims in the case if he decided the question in the affirmative. ±26 INTERLOCUTORY MOTIONS 131 Unsworn statements do not make a prima facie case. Beatty, 56 0. G. 1563. 626. The interference should not be delayed by public use proceedings unless for extraordinary and amply sufficient reasons. Campbell v. Brown, 56 0. G. 1565. 627. The invalidating two years' public use of the statute does not require the knowledge, allowance or consent of the inventor. Drawbangh, 57 0. G. 546. 628. The establishment of abandonment or of two years' public use requires proof so clear as to put the matter beyond all reasonable doubt. Bury V. Thompson, 58 0. G. 1255. 629. With the small sum appropriated by Congress for conducting public use proceedings the Patent Office is not justified in instituting such proceedings unless a strong prima facie case is made. Fay V. Conradson, 65 0. G. 75. 630. Where the structure of one of the parties to an interference is inoperative, priority of invention cannot be awarded to him. Glidden v. Xoble, 67 0. G. 676. 631. Bar of public use not avoided bv caveat. Meucci, 51 0. G. 299. 632. Interference suspended to take testimony relative to public use proceedings, without a recommendation. Sanford Mills v. Aveyard, 88 0. G. 129. 633. Bar arising should not be considered during the interference proceeding by subordinate tribunal, but re- ferred to Commissioner. Paget V. Bugg, 89 O. G. 1342. 634. In the public use proceeding a copy of an applica- tion involved refused protesting j^artv. National Phonograph Co., 89 "O. G. 1669. 635. The Commissioner may take notice of these mat- ters on his own motion. Anderson & Dyer v. Lowrv, 89 0. G. 1861. Larter v. Jones, 92 0. G. 383. 132 INTERLOCUTORY MOTIONS ±2(y 636. The 6 showing of public use and an expression of a willingness on the part of the moving party to produce the witnesses for examination and to bear the expense of the proceed- ing, including the expense of an officer detailed from the Office to conduct the proceeding. Shrum v. Baumgarten, 104 0. G. 577. 649. Public use proceedings not applicable to trade- marks. Dietz, 104 0. G. 1852. 650. Tlie Examiner of Interferences was of the opinion that one applicant had no right to make the claims. The matter referred to the Primary Examiner who thous:ht applicant had such right. The matter was then referred to the Board who held that applicant had no such right. The Commissioner directed that a limit of time to appeal from the decision of the Board be set. Eobinson v. Copeland, 105 0. G. 263. 651. Under this rule, the Examiners-in-Chief may, if they deem it advisable, call the attention of the Com- missioner to any matter not relating to priority which in their opinion establishes the fact that no interference exists or that there has been irregularity in declaring the same or which amounts to a statutory bar to the grant of a patent to either party for the claim in interference. This is not, however, compulsory upon them, and if they refuse to do so, no appeal lies. Walsh V. Hallbauer, 94 0. G. 223. Wilcomb V. Lasher, 105 0. G. 743. 652. Where he (the Primary Examiner) disagrees with the other tribunals, it is believed that the question should be regarded as unsettled and should be referred to a higher tribunal for decision. Snider v. Bunnell, 103 0. G. 890. Mills V. Torrence, 106 0. G. 544. 653. Tlie Examiner's action or failure to act under this rule is not appealable. It is in eifect a favorable decision as to the patentability of the claims. Woods V. Waddell, 106 0. G. 2017. Kempshall v. Sieberling, 107 0. G. 541. Dittgen v. Parmenter, 107 0. G. 1098. 654. The question of public use is, furthermore, one which eannot properly be decided against Winter without l»i(5 INTERLOCUTORY MOTIONS 135 g-iviiig him an opportunity to take rebutting proofs, since that evidence was taken upon a different issue. Weber, 101 0. G. 2570. Winter v. Slick v. Volkommer, 107 0. G. 1659. 655. If both parties file an abandonment of the in- vention the Examiner of Interferences should call at- tention to this bar. Krakaw v. Harding, 107 0. G. 1662. 656. The question of patentability is ex parte in char- acter, and if it becomes necessary to take testimony upon that cjuestion the Office will investigate in a proceeding independent of the interference. Steinmetz v. Hewitt, 107 0. G. 1972. 657. Where public use is shown by testimony regu- larly taken, its effect cannot be overcome by ex parte affi- davits, but oiilv bv evidence regularlv taken. Tournier, 108 0. G. 798. 658. It is contrary to usual practice to suspend an interference between two ajDplicants to investigate the question of public use. Perrault v. Pierce, 108 0. G. 2146. 659. The rule provides sufficiently for the considera- tion by the Office on its own motion of matters which might have been made the basis of the motion mentioned in Rule 122, but which were not so presented; and the action of the Examiner refusing to transmit will not be disturbed except in a clear case. Sturgis V. Hopewell, 109 0. G. 1008. 660. In an interference between an applicant and a patentee if the Examiner of Interferences is of the opinion that the applicant is not entitled to make the claims, the case should be transmitted to the Primary Examiner for immediate determination. Hall V. Weber, 109 0. G. 1607. 661. Successful applicant did not think the invention patentable to him. Interference dissolved. Lipe v. Miller, 109 0. G. 1608. 662. The question of public use may be determined infer partes. Mills V. Torrence, 110 0. G. 857. Judd V. Campbell, 110 0. G. 2017. loG INTERLOCUTORY MOTIONS 13(} ()().'). A iiitH'liaiiical ni)i)lic'atioii cannot effect the bur- den of ])roof in interference between desi^^ns. McArthur v. Gilbert, 110 0. G. 2509. ()()4. It is held, therefore, that when the question upon which the Examiner and the Examiner of Interferences (litTcr relates to the patentability of the claims or the right of one of the parties to make the claims, and there- by involves the merits of the invention, the interference should be referred to the Examiners in Chief; but when the dill'erence of opinion is merely upon formal matters, such as interference in fact or irregularity in declaring the interference, the case should be referred to the Com- missioner for final determination. Weber v. Hall, 111 0. G. 809. 665. If an alleged anticipating patent is discovered too late for a motion under Eule 122, it may still be called to the attention of the Commissioner under this Rule. Schrimer v. Lindemann & Stock, 111 0. G. 2222. 666. Originally there were two counts in the interfer- ence, but under the procedure set forth in Rule 126 one of these has been eliminated. Spaulding v. Norden, 112 0. G. 2091. 667. Public use alleged against some of the counts but not all. Held that the question of public use if necessarily raised at all, should be after the conclusion of the inter- ference. Moss V. Blaisdell, 113 0. G. 1703. 668. In the matter of trade-marks. Prank & Gutmann v. Macwilliam, 114 0. G. 542. 669. Public use suggested by assignee of entire in- terest sufficient to warrant action bv the Office. Cummings, 114 0. G. 2090." 670. A case transmitted to consider patentability where one party was a patentee. The Office will not waste time deciding a moot ques- tion simplv to avoid casting cloud upon a patent. Yarnell v. Pope, 115 O. G. 2136. 671. If an applicant in contest with a patentee ad- mits a statutorv bar to himself the interference should be dissolved. Griffith v. Dodgson, 116 0. G. 1731. 672. If Carver is of the opinion that there is no inven- tion in fact, he is not without remedy. The provisions 126 INTERLOCUTORY MOTIONS 137 of Rule 126 are available when this case comes on for final liearing. Carver v. MeCanna, 117 0. G. 599. In re Mill, 117 0. G. 904. 673. The question of patentability and interference in fact were iiresented for consideration on motion but not pressed, and that they were argued before the Ex- aminer of Interferences and the Examiners-in-Chief on final hearing and these tribunals asked to make a recom- mendation under Rule 126 and such recommendation was refused, these facts do not waq-ant a review bv tlie Com- missioner. Bell V. Eloi-a, 117 0. G. 2362. 674. The Examiner referred the case to the Com- missioner because he thought the first count j^atentable to C. in the interference, X. v. C v. R., and not patent- able to X. or R: HELD that the two interferences should proceed. Xewell v. Rose, 119 0. G. 337. 675. Reference under Rule 126 consideration of merits of an application not postponed on account of possible erroneous decision on ])rioritv. Xewell V. Clifford v. Rose, 119 0. G. 1583. Sobey v. Holsclaw, 119 O. G. 1922. 676. It is thought that the Commissioner should re- mand the case and not decide it himself. Serrell v. Donnelly, 120 0. G. 2501. 677. The parties are therefore notified that the testi- mony already taken will be used as a prima facie case in suppoj't of the allegation of public use, and that if any one of them wishes to take testimony in explanation or rebuttal he must so notify the Office within 20 days. Xiedringhaus v. Marquard v. McConnell, 121 0. G. 337. 678. A suggestion by the Examiners in Chief referred to the Primary Examiner who agreed. There is no conflict of oi)inion, because the Examiner previously thought differently, to warrant a review by the Commissioner under the practice announced in Snider V. Bunnell, 121 O. G. 338. 679. This rule does not provide for the filing of motions (as for the return of the case to the Primary Examiner to determine a question of Statutory Bar). Motion entitled under it dismissed. Struble v. Young, 121 0. G. 340. 138 INTERLOCUTORY MOTIONS 12(5 680. An interference will not be suspended for the purpose of considering the question of estoppel against one party where dissolution of the interference would apparently leave the wa}' clear to the allowance of a jDatent to another party who may not be the first in- ventor. Dunbar v. Schellenger, 121 0. G. 687. 681. Where all the evidence is before the Office upon which to base a final determination upon priority, such final determination should in general be reached before consideration of ex parte rights is undertaken. Dunbar v. Schellenger, 121 0. G. 687. 682. Examiners thought one party had not disclosed the invention. The interference remanded to the Primary Fxn]iiine]-, to hear the parties and furnish his opinion as to the question raised, together with a statement of the reasoas for his conclusions. The Examiner's opinion placed in the interference file, copies sent to the parties and the case returned to the Commissioner for decision upon the appeal. Kilbourn v. Hirner, 122 0. G. 729. 683. A consideration of the affidavit and testimony referred to by the protestant makes it seem probable that such bar does exist. It is not necessary to analyze that testimony to determine whether it is technically sufficient if true to prove public use. Ashton, 122 0. G. 730. Duryea & White v. Rice, Jr., 122 0. G. 1395. 684. I see no reason why I should act to control the discretion of the Examiner of Interferences calling at- tention to matter under Rule 126 or refusing to call at- tention under that rule. Wert V. Borst & Groscop, 122 O. G. 2062. Munro v. Walker, 122 O. G. 2062. Andrews v. Nilson, 123 0. G. 1667. 685. The proper practice when a case is referred to the Primary Examiner upon suggestions by the Ex- aminers-in-Chief of lack of right of a party to make claims, and the Primary Examiner disagrees with the conclusions of the Examiners-in-Chief , is to refer the case to the Commissioner for decision. Durvea & White v. Rice, 123 0. G. 2627. 1 •>(; INTERLOCUTORY MOTIONS 139 686. Thought that it would be an improvement if the Examiner of Interferences in these cases would make his opinion the basis of a judgment of priority of inven- tion iiistead of calling attention to the supposed facts un- der Kule 126. Brown v. Hodgkinson, 123 0. G. 2973. Cites Podlesak & Podlesak v. Melnnernev, 120 0. G. 2127. Allen, Commissioner of Pats., v. The U. S. of America ex rel. George A. Lowrv & Planters Compress Co., 116 0. G. 2253. 687. The affidavits fail to make out a prima facie case of public use of the invention more than two years prior to Siebert's filing date. They state the conclusions of the witnesses largely to the exclusion of the facts upon which such conclusions are based. "Where facts are given they are not recited with sufficient particularity and cer- tainty. A portion of the showing is also objectionable as hearsay. The Office should not institute a proceeding that may uselessly consume the time and labor of all parties upon such a showing. Siebert & Bloomberg, 124 0. G. 628. 688. Petitioner has not made such a showing as would warrant institution of public use proceedings (Siebert v. Bloomberg, 124 0. G. 628.) Barber v. Wood, 127 0. G. 1991. 689. A protest on the ground of public use was once dismissed because unaccompanied by an offer to produce witnesses and bear expenses. It is now dismissed because affidavit set up conclusions instead of facts. Af)plicant should i^resent this case as well as may be done by affi- davits so as to give the opponent an opportunity to intelligently oppose the institution of the proceeding and the consequent delav. Booth, 128 b. G. 1291. Wickers & Furlong v. McKee, 129 0. G. 1269. 690. A petition that a rule be issued against an op- posing 23arty to show cause why it should not be held that he has abandoned his invention, and that petitioner be permitted to offer testimony upon such question, will not be entertained under the Commissioner's supervisory authority where the petitioner has other remedies and is 140 INTERLOCUTORY MOTIONS ±2(j in fact pursuing another remedy before the Examiner of In f PT*TPT*(^T1 OPS (Cases cited) Barber v. Wood, 132 0. G. 1588. 691. A motion to take testimony as to inoperativeness of opponent's aj^iparatus, brought in the regular course of the proceedings, affords petitioner an adequate remedy without the necessity of invoking the supervisory au- thority of the Commissioner, and should be determined in the first instance by the Examiner of Interferences. Lowry & Cowley v. Spoon, 122 O. G. 2687. Barber v. Wood, 132 0. G. 1588. The question whether one of the j)arties to an inter- ference proceeding is debarred from receiving a patent by reason of his having secured a foreign patent for the same invention is a question for ex parte consideration after the termination of the interference. Guenift'et, Benoit and Nicault v. Wictorsohn, lol 0. G. 255. iliO INTERLOCUTORY MOTIONS 141 RULE 130. 130. Where the patentability of a ehiiin to an oppon- ent is material to the ri^^^ht of a party to a patent, said party may urge the non])atentability of the claim to his opponent at final hearing before the examiner of inter- ferences as a basis for the decision upon jiriority of in- vention, and upon appeals from such decision. A party shall not be entitled to take such step, however, unless he has duly presented and |)rosecuted a motion under Rule 122 for dissolution up>on tlie ground in (juestion, or shows good reason why such a motion was not presented and prosecuted. WHAT MAY BE CONSIDERED ON FINAL HEARING. G92. Where on final hearing before the Commissioner an interference is suspended and the case remanded to the Primary Examiner for consideration of the question of operativeness, this question will not be considered inter partes but will be determined by the Examiner sub- ject to the regular course of appeals in c.r parte proceed- ings. Archer, 57 0. G. 696. 693. It is the clear duty of the Office in such a case to decline to further consider the question of abandon- ment of Y's ai)plication until the question of priority of invention shall have been determined, when unquestion- ably a much fuller light will have been shed ui)on the whole matter. Young V. Case, 58 0. G. 945. 694. In view of the obvious irregularities in declaring the interference, it is extremely difficult to render a deci- sion on the question of priority. The Examiner is directed to carefully consider the question of patentability of the issue and take such action as the case demands. Mets V. Crane & Bloomfield, 58 0. G. 947. 695. Where the Examiner of Interferences refused to consider a motion to strike out a wife's testimony and re- served the question until final hearing, HELD, on appeal 142 INTERLOCUTORY MOTIONS 130 to the Commissioner, that this was a proper subject for interlocutory action. Crawford v. Lichenstein, 61 0. G. 1480. G96, Where an applicant copied the claims of a patent all the tribunals must pass upon the question of the right of applicant to make the claim. Reichenbach v. Goodwin, 63 0. G. 311. 697. Priority of invention cannot be awarded to an applicant whose device is inoperative. Glidden v. Noble, 67 0. G. 676. 698. Question of patentability refused consideration on final hearing in view of the fact that no motion was made under Eule 122. 'Schnabel v. Shellaberger, 68 0. G. 658. 699. AVhere the question of priority has been decided without the suspension of an interference proceeding, the question of patentability of a claim involved in the in- terference will be considered not infer partes but e.v parte bv the Primarv Examiner. Pell V." Pierpoint, 76 0. G. 1573. 700. The pendency of a motion to dissolve before the Primary Examiner does not prevent the parties from bringing any other proper motion before the Examiner of Interferences. Mechlin v. Horn, Colclazer & Munger, 92 0. G. 2507-8. 700a. To pass upon the question of whether or not the evidence should be suppressed would require such a con- sideration of the very voluminous record in this case as will necessarily be given at the final hearing, and for that reason a final disposition of the matter should be post- jDoned until that time. Talbot V. Monell, 99 0. G. 2965. 700b. In certain cases it is better to postpone the con- sideration of questions relating to the suppression of testimony until final hearing. The present case is not one of these. The Examiner of Interferences' decision granting motion to strike out affirmed. Brill & Adams v. Uebelacker, 99 0. G. 2966. 701. Motions requiring the whole case to be gone into" will be considered onlv at the final hearing. Hall V. Alvord, 101 0. G. 1833. l;50 INTERLOCUTORY MOTIONS 143 701a. It lias been the uniform practice not to suppress tlie testimonv before final hearing. Andrews v. Xelson, 111 0. G. 1038. 702. Questions of patentability raised for the first time on appeal to the Commissioner refused consideration and brief on question stricken from the files. Hedlund v. Curtis, 114 0. G. 544-5. 703. Where the question is appealed to the Com- missioner on the question of priority, a motion to trans- mit the interference to the Primary Examiner to consider the question of patentability will not be granted unless a clear and unmistakable error appears in the prior de- cision. Parker v. Lewis, 120 0. G. 323. 704. The question of the right of a party to make .a claim goes to the very foundation of an interference, for if the party has not such right the interference falls. If it be incorrectly held that such a party has a right to make the claim priority may be awarded to him and his adversar}' be deprived of a substantia] right in that he is not given a claim where he necessarily is the prior in- ventor, his adversary never having made the invention. Manifestly that question should not be finally determined by the Primarj- Examiner who originally declared the interference. Podlesak v. Podlesak v. Mclnnerney, 120 0. G. 2127. 705. Xo interlocutory appeal on decision affirming right to make claims, but an opponent's right to make claims "may" be questioned upon appeal from decisions upon priority of invention where a holding of right on the part of one party to make the claims operates to deny a j^atent to another party who if such holding be in error is the first inventor. Miel V. Young, 121 0. G. 1350. See also Xoble v. Sessions, 1210 0. G. 1348. 706. The question of the right to make a claim is re- viewable, if at all, with the final decision in the inter- ference and not upon interlocutory appeal. Zimmermann v. Lamboni, 121 0. G. 2326. 707. I am of the opinion that the question raised by this attack (sufficiency of disclosure) is one properly considered in determining the question of priority in those cases where a holding that a party is entitled to 144 INTERLOCUTORY MOTIONS 1 HO make the claim in issue results in a judgment against a party, who, if he be the true inventor and entitled to a patent. Kilbourn v. Hirner, 122 0. G. 729. 708. The consideration of the ciuestion of patentability or right to make the claims will not be considered at the final hearing, where the moving party is in no case en- titled to receive a patent on the subject matter. Potter V. :\rcTntosh, 122 0. G. 1721. 709. After the present motion to dissolve is disposed of petitioner may pursue his motion for an order permit- ting him to take testimony under the practice announced in Browne v. Stroud, 122 0. G. 2687, and Lowrv & Crow- lev V. Spoon, 122 0. G. 2687. Barber v. Wood, 127 0. G. 1991. 710. The right of Crebbin to make the claims cor- responding to the issue may be urged at the final hear- ing. Locke V. Crebbin, 124 0. G. 317. 711. The right of McKee to make the claims question- ed by AVickers and Furlong will be given consideration as ancillarv to the question of priority. Wickers & Furlong v. McKee, 124 0. G. 908. Cites, Podlesak & Podlesak v. Mclnnernev, 120 O. G. 2127. Pohle V. Mclvnight, 119 0. G. 2519. 712. The Court of Appeals in the District of Columbia, in the case of Podlesak v. Mclnnerney (120 0. G. 2127) held that the question of the right of a party to make a claim may be an ancillary question to be considered in awarding prioritv of invention. In mv decision in the case of Pohle v. McKnight (119 0. G. 2519) and of Kil- bourn V. Hirner (122 0. G. 729) certain reasons are set forth why the question of the right to make the claiuis may be considered as a basis for an award of priority rather than a dissolution of the interference. Under the practice indicated above it was held that one of the parties had no right to make the claim of the issue because its subject matter was not shown in the original application, , Emmet v. Fnllagar, 124 0. G. 2179. Cites, Gallager v. Hien, 115 0. G. 1330 on page 2180. l:{0 INTERLOCUTORY MOTIONS 145 Laas & Sponenburg v. Scott, 122 (). G. 352 on page 2181. Podlesak v. Mclnnernev, 120 0. G. 2127 on i)age 2182. Pohle V. McKnight, 111) 0. G. 2519 on page 2182. Kilbourn v. Hirner, 122 0. G. 729 on page 2182. Robinson v. Seelinger, 116 O. G. 1735 on page 2182. 713. Where the operativeness of an opponent's device or his right to make the claim is material to the right of a party to a patent, said party may urge the matter at final hearing before the Examiner of Interferences as a basis for his award of priority; but as a condition prece- dent to such riglit, the party must first ])resent the mat- ter upon a motion for dissolution or show good reason why such motion was not made and prosecuted. Barber v. Wood, 127 O. G. 1991. 714. Interferences are for the purpose of determining the question of priority only. That the issue is not patentable to either party has no bearing. In cases contemplated by Kule 130, however, a decision that the issue is not patentable to one party would nec- essarily result in a decision of priority in favor of the other party. Dixon & Marsh v. Graves & Whitemore, 127 0. G. 1993. 715. An award of priority is also proper under Rule 130 of the Rules of Practice of the Office, where it is shown at the final hearing of an interference that the ap- plication of a party relied upon as evidence of invention at the date thereof does not warrant the claim in issue. Martin v. Mullin, 127 0. G. 3216. 716. W's preliminary statement failed to overcome the record date of H. and W. In response to our order to show cause why judgment should not be rendered against him W. moved to dissolve the interference on the ground that H. and R. had no right to final hearing on priority under Rule 130. This proceeding should be a part of the main case and not a separate proceeding. All relates to priority. Hewitt V. Weintraub v. Hewitt & Rogers, 128 0. G. 1689. 146 INTERLOCUTORY MOTIONS IJiO 717. It is believed that testimony consisting wholly of the opinions of expert patent lawyers as to the legal elTect of claims should not be received. Pym V. Hadaway, 129 0. G. 480. 718. In cases 122 0. G. 2687 and 2688, it was decided that where a party makes a reasonable showing before the Examiner of Interferences of the inoperativeness of his opponent's device, and that showing does not extend to his own structure, he may be permitted to take testi- mony provided that the proposed testimony is of a char- acter to justify such action. No reason appears for mak- ing any distinction between a case where a party alleges that his opponent's device is inoperative and one where it is contended that the opponent has no right to make the claim in issue. Such testimony should be ijermitted only under Rule 130. Pym V. Hadaway, 129 0. G. 480. 719. In Podlesak v. Mclnnerney, 26 App. D. C. 399, this Court has held that the question of the right to make a claim may sometimes be an ancillary question to be considered in awarding prioritv of invention. Wickers & Furlong v. McKee, 129 0. G. 869. 720. After record judgment of priority in favor of 0. and upon motion by B. the interference was reopened in order to permit him to urge under Eule 130 that 0. had no right to make the claims of the issue. Becon v. Otis, 129 0. G. 1267. 721. Eule 130 was intended to cover those cases where it was contended that one party had a right to make the claims, but the other did not, and that therefore the lat- ter was not entitled to the date of filing of his application as a date of conception and constructive reduction to practice of the invention in issue. The reasons given must not be applicable to both cases. Pym V. Hadaway, 129 0. G. 2073. 722. We greatly doubt whether the affidavits in this record presented for the consideration of this Court and controverting the sufficiency of disclosure found in the W. application in interference could be profitably con- sidered by this Court. That question should come be- fore us upon testimony taken in the interference pro- ceeding. (A. D. C.) Wickers & Furlong v. McKee, 124 0. G. 908. 130 INTERLOCUTORY MOTION'S 147 728. A motion to suppress testimony calling for an examination of a large part of the record will be post- poned to the final hearing, Dvson V. Sand. v. Dunbar v. Browne, 130 0. G. 1690. 724. (See note to Rule 122.) McNulken v. Bollee, 130 0. G. 1691. 725. Evidence considered (by Court of Appeals) and held to show that the application on which the patent was granted did not, as originally filed, disclose the in- vention in issue, and i)riority thei-efore awarded to the junior party. :\IcKnight v. Pohle, 130 0. G. 2069. 726. The sole contention on this appeal is that the issue is not patentable to either party. The question has been before the Primary Examiner both ex parte and infer partes, and in each case he has held the issue to be patentable. Both the Examiner of Interferences and the Examiner in Chief upon appeal on jDriority have refused to recommend under Rule 126 that the claims be rejected as being without patentable novelty. Under these circum- stances the question i)resented will be considered only under my supervisory authority for the purpose of cor- recting a manifest error. Dixon & ^larsli v. Graves & Whittemore, 130 0. G. 2374. 727. It is evident that what Rule 130 requires is that the question of the patentability of the claims to the other party shall have been duly presented and prosecuted before the Primary Examiner, and it is therefore im- material whether this was done on a motion to dissolve or on a motion to amend. Josleyn v. Hulse, 132 0. G. 844. 728. A decision of the Examiner of Interferences re- fusing to expunge testimony will only be reviewed at the final hearing. Royce v. Kempshall, 119 O. G. 338. Greene, Tweed & Co. v. Manufacturers' Belt Hook Co., 132 0. G. 680. 729. The Examiner of Interferences has jurisdiction to decide at final hearing the question raised upon this motion, namely, whether "mixed paints" and "ready mixed jDaints" are goods of different descrii3tive prop- 148 INTERLOCUTORY MOTIONS l;iO erties, for the trade-mark statute provides for the deter- iiiiiiatioii of the question of the "right of registration to such trade-mark." The trade-mark statute gives much larger jurisdiction than the patent statute, which merely provides for the determination of the question of j^riority. Lewis »5v: Bros. Co. v. Phoenix Paint & V'arnish Co., 131 O. G. 361. 730. Rule 130 does not confer upon a party the ab- solute right to contest his opponent's right to a claim, but allows him to do so only when the objections urged against his opponents to make the claim do not apply With equal force to his own case. Pym V. Hadaway, 131 0. G. 692. Anderson & Dyer v. Lowry, 89 0. G. 1861. Bechman v. Southgate, 127 0. G. 1251. Bechman v. Wood, 89 O. G. 480. Briggs v. Conley, 104 0. G. 1119. Cory v. Gibhart & Martin, Jr., v. Blakev, 115 0. G. 1328. Denton v. Parker, 98 0. G. 415. Goss V. Scott, 96 0. G. 844. Gallv V. Burton, 120 0. G. 325. Home V. Somers & Co., 129 0. G. 1609. Jenner v. Dickson v. Thibodeau, 116 0. G. 1181. Kilbourn v. Hirner, 128 0. G. 1689. Kempshall v. Sieberling, 110 0. G. 1427. Locke v. Crebbin, 124 0. G. 317. McGill V. Adams, 119 0. G. 1259. Miel V. Yough, 121 0. G. 1350. Read v. Scott, 101 0. G. 449. Ruische v. Sandherr, 105 0. G. 1780. Seeberger v. Dodge, 113 0. G. 1415. Shallenberger v. Andrews, 1902 C. D. 246. Sobey v. Holsclaw, 119 0. G. 1922. Talbot V. Morrell, 99 0. G. 2955. Weintraub v. Hewitt, 124 0. G. 2534. 731. Rule in accordance with the holding of the Court of Appeals in the decision in Podlesak and Podlesak v. Mclnnernev (120 0. G. 2127) and in Kilbourn v. Hirner and in Wickers and Furlong (129 0. G. 869). Hopkins v. Newman, 131 0. G. 1161. 732. The question of the patentability of the issue will not be considered on an appeal on priority except J 30 INTERLOCUTORY MOTIONS 149 under such special circumstances as would warrant the exercise of the supervisory authority of the Commis- sioner. Hess V. Jorrissen v. Felbel, 131 0. G. 1419. 733. Wliere testimony must be considered in deter- mining a motion to amend a pi-eliminary statement, it is within the discretion of the Examiner to consider such testimony for the purpose of deciding the motion prior to final hearing. When in his oi)inion the conditions of the case justify an early adjudication of the questions raised, his decision should not be delayed. Smith V. Ingram, 131 0. G. 2420. 734. Where the defeated party alleges public use, HELD that the matter will not be considered until the decision on priority becomes final. Doble v. Henry, 118 U. G. 2249. 734a. If a witness refuses to answer a material ques- tion and no application is made to the U. S. Court, testi- mony will not be stricken out except preparatory to final hearing. Independent Baking Powder Co v. Fidelity Mfg. Co., 94 0. G. 223. 735. Where the defeated party alleges public use, HELD that the matter will not be considered until the decision on priority becomes final. Doble y. Henry, 118 0. G. 2249. 736. The fact that on appeal from a decision on a motion to dissolve the Examiners-in-Chief have held that a party has a right to make the claims does not prevent the question being raised before the Examiner of Inter- ferences at final hearing under Eule 130. O'Brien v. Gale v. Limmer v. Calderwood, 133 0. G. 514. 736a. A motion to suppress testimony decided at final hearing, may not be appealed separately, but may be con- sidered by the appellate tribunal on appeal upon the main question. Dvson v. Sand v. Dunbar v. Browne, 133 0. G. 1679. 150 INTERLOCUTORY MOTIONS 153 RULE 153. 153. In contested cases reasonable notice of all mo- tions, and copies of motion papers and affidavits, must be served, as provided in Rule 154 (2). Proof of such ser- vice must be made before the motion will be entertained by the Office. Motions will not be heard in the absence of either party except upon default after due notice. Motions will be heard in the first instance by the officer or tribunal before whom the particular case may be pend- ing. In original hearings on motions the moving parties shall have the right to make the opening and closing arguments. In contested cases the practice on points to which the rules shall not be applicable will conform, as near as possible, to that of the United States courts in equity proceedings. NOTICE. 737. A party cannot move to reform the declaration of interference without notice. Grav V. Bell, 1878 C. D. 133, 15 0. G. 133. Bell V. Gray, 15 0. G. 776, 1879 C. D. 42. 738. A concession of priority excluded as evidence by the Examiner of Interferences for want of notice. Tucker v. Kahler, 1879 C. D. 71, 15 0. G. 966. 739. The usual rule is to exclude the first or last day of the notice, when not personallv served. Hoag V. Abbott, 1879 C. D., 15 0. G. 471. 740. If a party would be compelled to travel night and day the notice is not reasonable. Hoag V. Abbott, 1879 C. D. 3, 15 0. G. 471. 741. As to the failure to give the name of a witness. See Kenerson v. Brown & Brown, 779 C. D. 249, 16 0. G. 857. Masury, 73 C. D. 110. 742. A motion based upon the same state of facts and reasons as a previous one should be refused on the ground that the matter is res adjudicata. Little V. Little, Pillard & Sargent, 1876 C. D. 207, 15 0. G. 543. Banks v. Snediker, 1880 C. D. 95, 17 0. G. 508. 153 INTERLOCUTORY MOTIO>^S 151 74.'}, The aj)i)eai-ance of a party in a case and the submission of arguments on the merits of the disputed points, is a virtual waiver of the riglit of notice. Keller c^ Olmsdalil v. Polder, 1876 C. D. 2-K;, 10 (). (J. 944. 744. A motion with notice is only necessary, when a demand is made whicli may be refused. When a motion is made whicli must be granted, it is not a motion in the sense of this rule. Booth V. Lyman, 1880 C. D. 170, 17 O. G. 393. 745. Motions in which no i)roof of service u))on tlie opiiosite partv is made will not be entertained. Bechman v. Jolmson, 1889 C. D, 184; 48 0. G. GJ:). C. r. 97 (). G. 2531 ; 92 (). G. 1236; 1890 C. D. 125. 746. A i^etition that a certain ai)plication be ""a ith- drawii from issue, and a rule made that cause be shown wliv the order should not be made permanent. Spielman, 1892 C. I). 1; 58 0, G. 141, 747. It is not the practice of the OflSce to recjuii-e a party to serve upon his opponent copies of all office rec- ords referred to in a motion made by him. Bundv V. Rumbacker, 92 ()." G, 2002, 1900 C. D. 143. 748. The notice of certain named witnesses and, per- haps, others, does not warrant the taking of the testi- mony of any witnesses than those named, at least under the circumstances of the case. A notice one day that the testimony will be taken the next day is not sufficient where attorneys are in a distant city and only represent- ed bv an associate attorney. Potter V. Ochs, 95 0. G. 1049, 1901 C. D. 39. 749. All parties must be notified. Grand v. Abbott v. Grand & McGraw, 103 0. G. 662. 750. Notice of new matter in cases transmitted under Rule 126. Greenawalt v. Mark, 103 0. G. 1913. 751. It should be noted that both applications here involved are owned by the same party, and that the same attorney appears for both parties; under such circum- stances the Office should be ^particularly on its guard to prevent unreasonable delays. 152 INTERLOCUTORY MOTIONS 153 Unreasonable delays in the prosecution of interferences will not be ])erinitted merely because the parties agree to the delay. Sponsel v. Darling, 105 0. G. 498. 752. An affidavit filed after the hearing relating to the merits stricken from the files, as these rules con- template that a party shall be given notice of his oppon- ent's case before the hearing. Miller, 105 0. G. 1532-33. 753. Notice served June 16, at 12 o'clock for taking testimony in Erie, Pa., 10 A. M. June 18, is insufficient even if it contained names of witnesses. Tripp V. Wolff V. Ames, 108 0. G. 563. 754. A notice that would necessitate travel on Sunday is insufficient. Counsel must be given time to prepare for a journey. Goodfellow v. Jolly, 111 0. G. 1940. 755. ISTew grounds for dissolution not of record in either application and not included in the motion must be served upon the opposing party at least 5 days before the hearing. If notice of the new grounds is not served and service is not waived, these grounds will not be con- sidered bv the Primarv Examiner in deciding the motion. (Wells v] Parker, 90 'O. G. 1947; Summers v. Hart, 98 0. G. 2585; Kurz v. Jackson v. Pierce, 2586; Whitlock v. Hudson V. Scott, 99 0. G. 1385.) In cases where due service of the new grounds could not have been rendered, a postponement of the hearing should be requested, and the request being ac- companied bv a statement of facts. Young V. Eick, 113 0. G. 547. Fowler, 113 0. G. 549. 756. It seems service 'of joapers on Saturday afternoon in the District of Columbia is legal. Goodfellow V. Jolly, 115 0. G. 1064. 757. A notice given at 10 o'clock that testimony was to be taken at 2, where all parties attended and the testi- mony was brief, testimony not stricken out notwith- s'tanding moving partv refused to cross-examine. Roberts v. Webster, 115 0. G. 2135. 758. A petition to suspend an interference and declare a new one will not be considered when the opposing party was not notified. Hansen, 117 0. G. 2632. 153 INTERLOCUTGRV MOTIONS 153 751). Tlie time of liearing is a matter resting in the discretion of tlie tribunal before whom the case is pend- ing. Cazin v. Von Welsbach, 119 0. G. 550. 760. It is the well settled practice of this Office, as an- nounced in Klotsker & Goesel v. Dodson, 109 0. G. 1336, C. D. 1904, 100, and other decisions, that an appeal filed after the expiration of the limit of appeal will not be entertained except upon a verified' showing why it was not presented in proper time. Thuiien v. Young & Townsend, 120 0. G. 904. 761. The petition must be denied on the merits, but it is to be noted also that copies were not served upon the opposing parties and that therefore it is informal. Kolb V. Hemmingwa.y v. Curtis, 122 0. G. 1397. 762. Where affidavits are filed by any of the parties which are not in answer to affidavits filed by opponents, they must ordinarily be served upon the opponents at least five days before the hearing. Affidavits in rebuttal may then be filed but should be served before the liearing. Browne v. Stroud, 122 0. G. 2688. 763. The signature to a notice is sufficient if the party notified understands from the signature from whom or in whose interest the notice is given. Hevne, Havwood & McCarthy v. De Vilbliss, Jr., 125 0. G.^669. Adams-Randall, 125 0. G. 1700. 764. A motion to amend declaration in a trade-mark case so as to insert a statement of ten years' exclusive use, which statement had been previously withdrawn in view of testimony in an interference case, refused. Keiiyon,'l25 0. G. 1702. 765. The rule provides that reasonable notice of all motions must be given and that a motion will not be en- tertained in absence of proof of service. The same reason exists for requiring notice of the renewal of a motion as of the motion itself, and the mere request at the final hear- ing is not such notice. Dvson V. Sand v. Dunbar v. Browne, 133 0. G. "1679. INDEX. Where capital letters are used the references are to headings. The numerals refer to the numbers of the notes. .\BAXDOX.ME\T (SHIFTING BIRDEX OF PROOF, ETC.)— 423 : 483 : 120 : 471 : 514 to 547. See "SHIFTING BURDEN OF PROOF." Acquiescence — 132 — See "Estoppel." Admission — See "Estopi)el." AFFIDAVITS— EVIDEXCE— See "EVIDENCE." Affidavit under Rule 75—101 : 539. AFFIRMING PATENTABILITY— RULE 124—548 to 558. Alternative— 254 : 264 : 272. AMENDMENTS— 559 and 560 : 382 : 30 : 147 : 179. Appeal Fee — 574 : 575./ APPEAL— GROUNDS OF— 418 to 427. APPEALS TO THE BOARD OR TO THE CO.MMISSIONER— See "BOARD." APPEAL— WHEN TAKEN— 597 to 603. Appeal— Who may take— 576 : 578 : 579 : 580 : 581 : 583 : 585 : 586 : 611 : 512. APPLICANT AND PATENTEE— See "PATENTEE"— 5 : 20 : 53 : 54. ASSIGNMENT OF REASONS ON APPEAL— 561 to 588. Authentication of Officer — 337. BAR— STATUTORY SUGGESTED— 612 to 691a. See under "JURIS- DICTIOX." BOARD— DECISIONS OF THE— 609 to 611. BOARD OR TO THE COMMISSIONER— APPEALS TO THE— 604 to 608. See "GROUNDS OF APPEAL"— 29: 507 : 664. BURDEN OF PROOF— SHIFTING — 429 to 452—392 : 528. See "SHIFTING BURDEN OF PROOF." Caveator— 143 : 433 : 44. CLAIM— RIGHT TO MAKE— 529 to 547— See under Rule 97 : 561 : 197. Claims — Meaning of — 168. Cloud on Patent— 92 : 670. COMMISSIONER— APPEALS TO THE— See "BOARD." COMMISSIONER— DECISIONS OF— 590 to 596. CONSTRUCTION AND EFFECT OF CLAIMS— 14 to 21 : 468. Court of Appeals— 419 : 503 : 534. DECISION OF THE COMMISSIONER— 590 to 596 : 676 : 686. Decisions— 220 : 221 : 410 : 684 : 690i^. Default— 120. 156 INDEX. DELAY IN BRINGING MOTION— EXCUSE FOR SECOND MOTION— 340 to 392 : 513b. DELAY— EXCUSE FOR— 597 to 603 : 751. Designs — 638% : 663. Disclosure — 537. DISSOLUTION— GROUNDS FOR— 180 to 197. Division— 90 : 133 : 111. Error — Clerical — 51 : 148. Estoppel— 144 : 661 : 671 : 680 : 192 : 194 : 217 : 103 : 132 : 531 : 591 : 698. EVIDENCE— AFFIDAVITS— TESTIMONY— 307 to 339 : 643 : 654 657 : 677 : 683 : 687 : 709 : 717 : 723 : 724 : 728 : 733 : 734a 775 : 251 : 269 : 270 : 271 : 281 : 282 : 286 : 294 : 301 : 302 : 416 440 : 449 : 460 : 486 : 509 : 511 : 524 : 179a : 527 : 614 : 616 : 632 647 : 663 : 695 : 713 : 736a : 752. EXAMINER'S ACTION— 393 to 417 : 590 : 684. EXCUSE FOR SECOND MOTION— 340 to 392 : 306. EXPEDITING PROCEEDINGS— EXAMINER'S ACTION— TIME LIMIT —393 to 417. Expert— 319 : 322 : 330 : 331 : 717. EXTEND TIME — PETITION TO— 299 to 306 and 597 to 603. FINAL HEARING— RULE 130—692 to 736 : 87 : 117 : 134 : 568 : 672 : 428 : 447 : 452 : 518 : 179a : 630 : 667 : 765. Final Rejection — 559. Foreign Application — 444. FORMALITIES— 576 to 603 : 93 : 679. FORM OF MOTION— 209 to 275. GENERAL POLICY AND MEANING OF RULE 122—79 to 93 : 139. GROUNDS OF APPEAL— 418 to 427. GROUNDS FOR DISSOLUTION— 180 to 197. HISTORY— SEE INTRODUCTION- RULE 109—146. RULE 122—77 and 78. HISTORY AND SUBJECT MATTER— RULE 124—495 to 513b. History and Subject Matter— Rule 126—615 : 617 : 622 : 629 : 484 : 689 INSERTION OF CLAIMS— RULE 109—62 to 76. Intervening Rights — 332. ISSUE AND NOTICES— RULE 97—32 to 61 : 666. Joint Inventors— 99 : 114 : 130 : 135 : 620 : 622 : 623 : 176 : 180 ; 182 ; 480 ; 481 ; 182. Judicial Notice — 635. JURISDICTION— 466 to 494 : 639 : 300 : 26 : 67 : 68. Limit of Appeal — 650. Meaning of Rule 122—79 to 93. Meaning of Rule 96—1 to 6. Moot Question— 563 : 670. INDEX. 157 MOTIONS— SUBJECT MATTER OF— 94 to 197. FORM OF— 209 to 275. TRANSMISSION OF— 276 to 297. DELAY IN BRINGING- 340 to 392. EXCUSE FOR SECOND— 340 to 392. Moving Party— 197 : 258. NEGLECT AND REFUSAL TO MAKE CLAIM SUGGESTED UNDER RULE 96. TIME LIMIT— 22 to 31a. New Claims (R. 109)— 2 : 138. New Matter— 122 : 124 : 132 : 134 : 5 : 7 : 8 : 9 : 64 : 94 ; 103 : 542 : 750. NOTICE— 737 to 765 : 105 : 113 : 644 : 348. NOTICES— ISSUE AND— RULE 97. Novelty— 613 : 614 : 104 : 121. Oath— 128 : 162 : 163 : 178 : 189 : 191 : 297. Operativeness- 105 : 110 : 119 : 630 : 691 : 692 : 697 : 713 : 718 ; 271 : 312 ; 317 : 318 : 320 : 328 ': 330 : 331 : 336 : 383 : 534. Originality— 640 : 177 : 49 : 166. PATENTABILITY— AFFIRMING, ETC.— 548 to 558 : 653 : 18 : 468 : 470 : 474 : 513a. PATENTEE APPLICANT— 198 to 208 : 5 : 20 : 43 : 145 : 53 : 54 : 670 : 671. PETITION TO EXTEND TIME— 299 to 306. Preliminary Statement— 83 : 144a : 176 : 621. PROCEEDINGS— EXPEDITING— 393 to 417. PROOF— SHIFTING BURDEN OF— See 'SHIFTING BURDEN OF PROOF." Public Use— 112 : 123 : 735 : 181 : 198 : 334 : 338 : 473 : 476 : 166 : 176 : 475. See notes under "STATUTORY BAR SUGGESTED." REASONS— ASSIGNMENT OF— 561 to 588. Reasons given by the Examiner — 584 : 596. Record— 107 : 113 : 136 : 436 : 179a : 747. Record Date — 115. Record— Judgment on the— 167 : 171 : 216 : 384 : 385 : 512. References— 268 : 443 : 57. REHEARINGS— 589 to 596 : 414 : 454 : 462 : 489 : 491 : 720. Reissues — 170 : 434. Res .'Icijudicata—lQl : 195 : 387 : 530 : 85 : 513 : 742. RIGHT TO MAKE THE CLAIM— 529 to 547 : 720. Revised Statutes — 495 : 500 : 513c. Sale — 473. SECOND MOTION— EXCUSE FOR— See "EXCUSE FOR SECOND MOTION." 158 INDEX. SHIFTING BURDEN OF PROOF— 429 to 452— (Rule 124) 514 to 547 : 164 : 490. Sole — See "Joint." Specific Claim— 90 : 133 : 65 : 71 : 156. STATUTORY BAR— 612 to 691a : 127 : 508. See "Public Use" and "ABANDONMENT." STAY OF PROCEEDINGS— 453 to 465 : 71 : 700. SUBJECT MATTER OF MOTION— 94 to 197. SUBJECT MATTER OF MOTION AND HISTORY OF RULE 124—495 to 547 : 591 : 599. SUGGESTION OF CLAIM— 7 to 13 : 102 : 126 : 142. Supervisory Power of Commissioner— 556 : 582 : 587 : 602 : 642 : 659: 690 : 691 : 703 : 726 : 253 : 291 : 501 : 513a : 532 : 536 : 547. TIME LIMIT— 393 to 417 and 22 to 31. TIME WHEN APPEAL TAKEN— EXCUSE FOR DELAY— PETITION TO EXTEND TIME— 597 to 603. Trade Mark— 106 :-649 : 668 : 729 : 764 : 173 : 196 : 269 : 327 : 427 : 549. TRANSMISSION OF MOTION— 276 to 297 : 197 : 381 : 100 : 114 : 149.: 175 : 670. WHAT MAY BE CONSIDERED AT FINAL HEARING— 692 to 736— Rule 130. EXPERT TESTIMONY. It seems to mo that the subject of expert testimony in Patent Cases is one that may profitably be given special attention. I refer to the testimony of the expert in the general sense, as distinguished from the specialist in particuhn- lines. While the work is laborious and in- volves much of detail, still one nuiy often work for those capable of appreciating the quality of his work. T have had very unusual op))ortunities for observing and applying scientific and engineering principles in practice, having generally practically complete charge of experiments, relating to engineering, electricity and chemistry, for periods covering a number of years. I keep up a small engineering and scientific library, which I am able to use with facility. I believe I can make this si)ecial experience of use to others, and that special care and skill as an expert will be appreciated. In this connection I value my experience as a teacher in trying to present scientific and practical subjects to men not then familiar and ready with the language of the books, as well as my considerable exper- ience in the legal application of such principles. The necessity of an expert is generally recognized. I suppose there was never yet a case presented that was not a subject of more or less regret in the retrospect. This regret will surely be less if the case is carefully pre- sented from the witness-stand in the first instance. If the burden of the details is assumed by the witness, a truer perspective may be presented in the brief, besides the Courts are apt to require that the points should bo presented by a witness that may be cross-examined. 160 EXPERT TESTIMONY. The following are a few dicta of the courts that may be interesting: "Were the patent taken bodily from "Holy Writ" no more antagon- istic dogmas and warring theories could be deduced therefrom." Brace- well V. Passaic Print Works, 107 F. R. 467. "The explanation given by both parties seems to me purely con- jectural. The little understood operation of the electric current can- not be reduced to formulae by the dicta of the Court, which must needs lag where experts run." Queen & Co. v. R. Friedlander & Co., 149 F. R. 774. "Expert testimony is sometimes valuable, and frequently interest- ing, but seldom controlling — never when directed to matters capable of ocular demonstration, unscientific matters." Farmers' Mfg. Co. v. Sprinks Mfg. Co., 119 F. R. 597. "Even were it possible to do so it is surely unnecessary to follow all the excursions of the experts into the occult realms of electro- chemical science. Some of these trails seem to vanish into thin air, others are lost in a desert of technicalities, and of others still it is true that he who attempts to travel them is quite likely to find himself wandering aimlessly "through caverns measureless to man.' " Electric Smelting & Aluminum Co. v. Pittsburg Reduction Co., 125 F. R. 926-938. "Progress in nearly every field of mechanical activity is like the advance of the tide — the last high mark having been attained, not by a single thought thrown far in advance of the flood, but by the column of thought that the weight of the flood projects. Where one inventive mind has run far out, marking a distinct field to be thereafter covered, it is not difficult for the courts to set the stakes that give boundary to the advance. But when the advance is but an item of a similar advance, all along the line, care must be taken that the boundaries given do not include up and down the line, every character of mechan- ism that thereafter may bring about similar results." Motsinger Device Mfg. Co. v. Hendricks Novelty Co., 149 F. R. 995 (C. C. A.) "And often machines which are alleged to be infringements are so unlike in their apparent construction and appearance that it would seem almost preposterous to call them the same machines, and yet when tested by men who understand the particular art to which they relate, are found to be mere changes of form." Howes v. W'ashburne & Washburne, 5 O. G. 491. "A thorough understanding of the purposes which the inventor sought to accomi)lish, and the principles applicable thereto, in the absence of a thorough explanation by experts of both practical and scientific attainments in the art, requires a mastery of the particular science to which the patent in suit relates — the expert testimony on either side proceeds too much on the assumption that the court has special knowledge which it would not be justified in making use of, even if it thought itself possessed of it." Bradford v. Belknap Motor Co., 105 F. R. 64. "(The Judge referred to facts within his own knowledge but not of record. The Appellate Court say:) 'That he freely stated the facts he had in mind tends no more to invalidate or impeach his decree than the fact that he had this knowledge. Extended experience in the affairs of life, does not disqualify a .Judge who does not seek to use it un- fairly.' " Thompson Scenic Ry. v. Chestnut Hill, etc., 127 F. R. 703. EXPERT TESTIMONY. 161 "If it had not been for the knowledge acquired by the writer in previous litigations concerning similar devices, it would have been impracticable on such hearing to satisfactorily determine the bearing of the prior art on the invention in suit." Snow v. Sargent, 106 F. R. 231. "At the hearing we gathered an apprehension of the conclusions which we must reach. Our subsequent investigations have not changed that apprehension; and, although it has increased our doubts with reference thereto, yet we are satisfied that they would not be re- moved by further consideration of the case, and that the interest of the parties will be better advanced by a disposition of the suit which will enable an appellate tribunal seasonably to review it rather than by holding it longer under advisement." Bradford v. Belknap Motor Co., 105 F. R. 64. "It Is a matter of historical curiosity, as illustrating the mysterious working of the Official Mind, that the United States Patent Office refused to grant a patent to Mr. A. Bernstein, in 1883, for the employ- ment of transformers intended to lower pressure and increase current, and yet the same office granted a patent to Gualard and Gibbs, in 1886, for the very same thing. The application was rejected by the Officials of the United States Patent Office on the ground that appli- cant should demonstrate more clearly to the office the possibility of producing quantity currents from intensity currents by means of an induction coil; it is not quite apparent how applicant in any case can get more quantity from a secondary coil than he has in his primary. "Will any say, after this, and having regard to Henry's experi- ments half a century before, that official wisdom is to be trusted in the matter of granting or refusing patents." Prof. A. J. Fleming, 'The Transformer,' Vol. 2, pp. 81-82. "In regard to the differences between the claims under consider- ation in the domestic and British patents, we are referred by the com- plainant in lump to eight printed pages of the testimony of its expert witness Bentley, without any attempt on its part to analyze that evidence. We, of course, decline to analyze it ourselves, pointing to our rules which require this to be done by the complainant itself, with proper specific references as therein stated." Thompson-Houston Electric Co. v. M'Lean, 153 F. R. 887. I shall be giad to assist on the brief or with reference to the examination of specialists. PRESS NOTICES. The following notices are such as I have handy relat- ing to matter published under the head of '*Gas Engine Design," shortly after leaving the shop, and embodying some of the results of my experience, study and observa- tion while so employed: Prof. Picolet kindly writes: "I am pleased to note that the very considerable addition of new matter in the present edition has in no way diminished the lucidity of treatment which characterized the former." "Permit me to congratulate you for having produced * * * a treatise on gas engine design embodying the_latest and most im- proved methods of the art." This is what Power says: "This is one of the simplest and at the same time the clearest treatise on the thermodynamics which underlie gas engine design that we have seen." ****** "The chapter on compressed air is a marvel of lucid explanation and comprehensiveness. "The method of obtaining compression temperatures and calcu- lating * * volumes and pressures produce formulas which almost make mental calculation possible. "The matter on gas engine design proper shows the derivation and application of formulas used in proportioning the principal parts of the engine. "The preface states that the work is intended for a reference by busy men, and in such a capacity it certainly is a success. It is more than this, however, and students of the subject and any interested in the subject will find it intensely practical as well as instructive." "POWER." Issue of September. 1903. "Contains * * work that is of unusual merit." "MINING AND SCIENTIFIC PRESS," San Francisco, Cal. "The book is free from much of the mystery which has sometimes been made to surround the design of the gas engine, and the treat- ment of the adiabatic curve for gases is handled without the use of the differential calculus, which is a large advance over everything heretofore attempted." "THE ENGINEER," Chicago, October 15. 1903. PRESS NOTICES. 163 "It is not easy to suggest how the work of the author could have been better done in any respect, and all who have to do with gas or oil engines should be glad to obtain the book, and none can well fail to appreciate it." 'THE AMERICAN MACHINIST." "The best brief treatise of the subject extant." STANLEY H. MOORE, M. E., Director Manual Training Department of the Manual Training High School, Kansas City, Mo. '■Really valuable work." PROF. LUCIEN E. PICOLET, Department of Mechanical Engineering, I'niversity of Pennsylvania. "Leading formulae." PARSELL & WEED, Gas Engine Construction. "It is the first practical work of its kind I have been able to get." ARTHUR C. ISBELL, ' 474 Seaview Ave.. Bridgeport, Conn. I wish also to tliaiik ^^Ir. F. L. P^iraute for the very kind notice in his hook, "The How and Wliy of the Auto- mobile. ' ' Mr. Hvler T. AVhite has also kindly given me credit for work used by him. Professor Lucke, in his leading and standard work on "Gras Engine Design," has done me the honor to use matter that I suppose I originated, and that had in'ev- iously been published over my signature. LETTERS. Law OflBces of Specialty, R. A. PARKER PATENTS, PARKER & BURTON, C. F. BURTOX TRADE MARKS, 603-607 Moffat Building, COPYRIGHTS. Telephone Main 310 Detroit, Mich., May 29th, 1908. Mr. Elliott J. Stoddard, Detroit, Mich. Dear Mr. Stoddard : I am pleased to express to you my high opinion of your capacity for careful, critical, and accurate analysis of the claims of patents, and of the components of mechanical devices. Also my high opinion of your knowledge and careful analyses of chemical problems, many of which problems, both mechanical and chemical, I have placed before you for solution in the last six or seven years. My experience with you has been that you are very unwilling to ex- press an opinion until you know the facts on which it is to be founded, and that when the facts are thoroughly studied out, and are fully comprehended, your opinions have almost invariably been accurate, not only in my opinion, but, so far as I have used them, have been sustained by the judges and courts who have subsequently considered the same matters. As an Expert! I consider you a very painstaking, careful, and accurate examiner, and more than this, I have found that you have the ability to explain in very clear and comprehensible language the opinions which you have formed, making your testimony extremely valuable and useful. Very respectfully, CHARLES F. BURTOX LETTERS. 165 From Mr. V. H. Lockwood, Lecturer on Patent Law and Trade- marks, Indiana University. V. H. LOCKWOOD, Counsellor at Law, 415-418 Lemcke Building. Indianapolis, Aug. 4th, 1906. Patent and Trademark Law Mr. Elliott J. Stoddard, Detroit, Mich. Dear Sir : I beg to acknowledge the receipt of your testimony with your accompanying suggestions. I also wish to express my appreciation of your services, as I never had a more satisfactory expert than you proved to be. I enclose herewith a check from the Anderson Tool Co. for the amount of your bill. Yours truly, V. H. LOCKWOOD. To get the experience and have the benefit of instruction from one of the most experienced and skillful Chemists of the State, I recently took a course in Chemical Analysis under Professor Allen. The final clause of the following testimonial was unsolicited, and I value it as the opinion of one whose judgment I believe worthy of respect. Sf troU 0rljool of (EIifmiBtrg txtxh pi|armari| Srtmit. lllirtitsan laboratories: DiTBoiT COLLEGE NOW ASSOCIATION INSTITUTE OF MEDICtNC BLDG. 25 April, '08. To Whom It May Concern: Mr. E. J. Stoddard studied Chemistry and Physics in the labora- tories of the above School; and it gives me pleasure to say that he not only possesses a fair knowledge of these sciences, but also the power to apply his knowledge to comprehend more complex problems when presented to him. W. H. ALLEN, Ph. G., Prof. Chemistry Dj S. of Chemistry and Pharmacy.