'CS^ LAW BOOKS %1 
 
 UNIVERSITY 
 
 OF CALIFORNIA 
 
 LOS ANGELES 
 
 SCHOOL OF LAW 
 LIBRARY
 
 A 
 
 io
 
 UNDERWOOD'S 
 
 Interference Practice 
 
 BY 
 
 HOMER C. UNDERWOOD 
 DETROIT, MICH. 
 
 Published by 
 
 PATENT LAW PUBLISHING COMPANY 
 
 408 Buhl Block 
 DETROIT, MICH.
 
 T 
 
 {.in 1(^5'l 
 
 mo 
 
 Copyright 1920 
 
 by 
 
 Homer C. Underwood
 
 PREFACE. 
 
 In the preparation of this work I have sought to con- 
 fine the text to matters which pertain particularly to 
 Interferences and to cover all the important points which 
 have been the subject of controversy in the past twenty 
 years and which have not been rendered entirely obsolete 
 by changes in the Rules of Practice in that period. Many 
 old cases are considered, but they are such as are believed 
 might have a bearing upon the construction of present 
 rules. I have considered that brevity in the statements 
 of points of law would be more useful than extended 
 argument. It is assumed that those who use the book are 
 familiar with the subject in general and all they need in 
 the conduct of a case is a reminder of the points which 
 may be made and a citation of authorities relating there- 
 to. Without such reminder one may overlook important 
 points of evidence which might be presented. A busy 
 lawyer can not stop to read a volume on evidence before, 
 or at the time of taking testimony, hence evidence is 
 herein treated in a limited sense, relating to those matters 
 which are most likely to arise in taking testimony in an 
 Interference. 
 
 I send this book forth, hoping that it may aid in a more 
 accurate presentation of causes and in developing a more 
 uniform practice. 
 
 Your obedient servant, 
 
 Homer C. Underwood. 
 
 Detroit, Michigan.
 
 TABLE OF CASES. 
 
 Section 
 
 Adams, 119 O. G. 650 (1905) 14 
 
 Adams v. Miu-phy, 96 0. G. 845 ; 1901 C. D. 401 156 
 
 Adams V. Eandall, 125 0. G. 1700 (1906) 202, 212 
 
 Adams v. Uebelacher, 99 0. G. 2966; 1902 C. D. 220 100 
 
 Agawam v. Jordan, 7 Wall. 583 106, 164 
 
 Alexander v. Blackman, 121 O. G. 1979 (1906) ; 26 App. D. 
 
 C. 541 189 
 
 Alfree v. Sarver, 122 O. G. 2391 31 
 
 Allen, Comr., 127 O. G. 2398 (1907) 21 
 
 Allen V. Lowry, 116 O. G. 2253 (1905) 85, 86, 245 
 
 Allen V. Ames, 21 Gour. 66-6 (Sept., 1909) 49 
 
 AUis V. Stowell, 85 Fed. 481 216 
 
 Ames, Jr. v. Ryan, 238 O. G. 1639 (1917) 52 
 
 Anderson v. Wells, 122 O. G. 3014 (1906) 163 
 
 Anderson v. Peck, 133 0. G. 229 ; 1908 C. D. 66 41 
 
 Anderson v. Vrooman, 123 O. G. 2975 (1906) 76 
 
 Anderson v. Nilson, 105 O. G. 2059 (1903) 50 
 
 Andrews v. Nilson, 111 O. G. 1038 194 
 
 Andrews v. Nilson, 123 0. G. 1667 (1906); 27 App. D. C. 
 
 451 24, 96 
 
 Appert V. Brownsville Co., 144 Fed. 115 147 
 
 Atherton v. Cheney, 111 O. G. 1040 78 
 
 Atkins V. Paul, 94 O. G. 1785 ; 1901 C. D. 35 48 
 
 Auerbach v. Wiswell, 108 O. G. 289 74 
 
 Aufiero v. Monnot, 242 O. G. 750; 46 App. D. C. 297 157 
 
 Automatic Backing Machine Co. v. White Eacker Co., 145 
 
 Fed. 643 242 
 
 Babcock v. Pickard, 21 Gour. 85-13 (Nov., 1909) 89 
 
 Badger v. Morgan, 117 O. G. 598 (1905) 191b, 196 
 
 Bailey v. Davis, 102 O. G. 819 (1903) .39 
 
 Ball V. Flora, 117 O. G. 2088 (1905) 216, 243 
 
 Barber v. Wood, 127 O. G. 1991 (1907) 154a, 256 
 
 Barber v. Wood, 128 O. G. 2835 (1907) 89 
 
 Barber v. Wood, 132 O. G. 1588 244 
 
 Barber v. Ti-ansue, 19 Gour. 34-6 25 
 
 Barkley v. Schuler, 199 O. G. 309 ; 41 App. D. C. 250 142 
 
 Barnes v. Swartwout, 161 O. G. 1045 (1910) 188 
 
 V
 
 Section 
 
 Barr v. Bugg, 122 O. G. 2061 (1906) ". . 89 
 
 Barratt v. Swingelhurst, 144 0. G. 818 (1909) 84 
 
 Basch V. Hammond, 15 Gour. 34-4 (May, 1903) 48 
 
 Basch V. Hammond, 113 O. G. 55] 140 
 
 Bauer v. Crone, 118 O. G. 1071 158 
 
 Bay State Belting Co. v. Kelton Bruce Co., 127 O. G. 1580 170, 196 
 
 Beal V. Shuman, 120 O. G. 655 (1905) 161 
 
 Beall V. Lyon, 127 O. G. 3215 (1907) 198 
 
 Bechman v. Wood, 89 0. G. 2462 242 
 
 Bechman v. Southgate, 127 O. G. 1254 (1906) ; 28 App. D. 
 
 C. 405 247 
 
 Bechman v. Wood, 15 App. D. C. 484 3 
 
 Becker v. Currier, 104 O. G. 2439 (1903) 47 
 
 Becker v. Otis, 127 O. G. 1267 56, 57 
 
 Beckert v. Currier, 104 O. G. 2439 (1903) 216 
 
 Beedle v. Bennet, 122 U. S. 77 ; 30 L. Ed. 1074 106 
 
 Bell V. Brooks, 1881 C. D. 8 136 
 
 Bethlehem Steel Co. v. Niles, 160 Fed. 880 154 
 
 Bettendorf, 17 Gour. 41-22 (May, 1905) . 217 
 
 Bijur V. Eushmore, 246 O. G. 301 ; 46 App. D. C. 395 . . 30 
 
 Blackman v. Alexander, 98 O. G. 1281; 1902 C. D. 41 195 
 
 Blackman v. Alexander, 100 O. G. 2383 ; 1902 C. D. 323 220 
 
 Blackman v. Alexander, 104 O. G. 2441 (1903) 218 
 
 Blackman v. Alexander, 105 O. G. 2059 (1903) 209, 226, 227 
 
 Blackman v. Alexander, 113 0. G. 1703; 26 App. D. C. 541; 
 
 121 O. G. 1979 180 
 
 Blackford v. Wilder, 104 O. G. 578 (1903) ; 21 App. D. C. 1 
 
 133, 251 
 
 Blackford v. Wilder, 127 O. G. 1255; 28 App. D. C. 535 . .229, 232 
 
 Blease v. Garlington, 92 U. S. 1 197 
 
 Bliss V. McElroy, 122 O. G. 2687 (19U6) 156 
 
 Bliss V. Cneverling, 112 O. G. 499 50 
 
 Bliss V. Thompson, 20 Gour. 19-8 (March, 1908) 142 
 
 Bodwitch V. Todd, 98 O. G. 792; 1902 C. U. 27 71, 87 
 
 Bonsall v. Gilmore, 16 Gour. 82-3 48 
 
 Booth V. Hanan, 123 O. G. 319 (1906) 87 
 
 Borg V. Strauss, 130 O. G. 2719 (1907) 48 
 
 Bourn v. Hill, 123 O. G. 1284 (1906) ; 27 App. D. C. 291 . . 250 
 
 Bowen v. Bradley, 58 O. G. 386 217 
 
 Bradley v. Midgett, 150 O. G. 1042; 1910 C. D. 24 48 
 
 Bradley V. Miggctt, 179 O. G. 1108 (1911) 120,136 
 
 Brakoy, 156 O. G. 797 (1910) 13 
 
 Brannstein v. Holmes, 133 O. G. 1937 (1908) 164 
 
 Braucht v. Murdock, 13 Gour. 66 13 
 
 vi
 
 Section 
 
 Brami v. Wahl, 228 O. G. 1458; 45 App. D. C. 291 110 
 
 Breuing v. Ridgely, 19 Gour. 65-2 (Aug. 5, 1907) 50 
 
 Breiiizcr v. Eobinson, 166 O. G. 1281 (1911 ) 16S 
 
 Briggs V. Lillic, 116 O. G. 871 (1904) 34, 113, 125 
 
 Brill V. Uebelachor, 99 O. G. 2966; 1902 C. D. 220 23, 192 
 
 Broadwell v. Long, 164 O. G. 252; 36 App. D. C. 418 154a, 221, 247 
 
 Brooks V. Hillard, 106 O. G. 1237 (1903) 102 
 
 Brooks V. Hillard, 111 0. G. 302; 23 App. D. 0. 526 247 
 
 Brooks V. Smith, 110 O. G. 2013 156 
 
 Brooks V. Foote, 108 0. G. 287 59 
 
 Broiigh V. Snyder, 94 0. G. 221 ; 1901 C. D. 3 241 
 
 Brown v. Lindmark, 109 0. G. 1071 245 
 
 Brown v. Stroud, 122 O. G. 2688 21, 165 
 
 Brown v. Hill, 123 0. G. 1284; 27 App. D. C. 291 28 
 
 Brown v. Keeney, 105 O. G. 260 (1903) 47 
 
 Brown v. Cutler, 104 O. G. 1896 47 
 
 Brown v. Blood, 105 O. G. 976 (1903) 157 
 
 Brown v. Campbell, 201 O. G. 905; 41 App. D. C. 499 157 
 
 Brown v. Gillett, 191 O. G. 832 (1913) 240 
 
 Brown v. Gammeter, 132 O. G. 679 (1908) 255 
 
 Brown v. Inwood, 131 O. G. 1423 (1907) 256 
 
 Brown v. Dyson, 188 O. G. 809; 39 App. D. C. 415 46 
 
 Brungger v. Smith, 49 Fed. 124 171, 173 
 
 Biyce Bros. Co. v. Seneca Glass Co., 140 Fed. 161 166 
 
 Bundy v. Rumbarger, 92 0. G. 2001 92 
 
 Bundy v. Eumbarger, 92 O. G. 2002 98 
 
 Burleigh v. Elliott, 197 O. G. 240 (1913) 66 
 
 Burson v. Vogel, 125 0. G. 2361 (1906) 103 
 
 Burson v. Vogel, 131 O. G. 942 (1907) ; 29 App. D. C. 388 . 
 
 134, 167, 247 
 
 Butterworth v. Boral, 13 Gour. 2-1 (Jan., 1901) 49 
 
 Byron v. Henry, 104 O. G. 1895 (1903) 244 
 
 Byron v. Maxwell, 105 O. G. 499 (1903) 256 
 
 Cain V. Park, 86 O. G. 797 ; 14 App. D. C. 42 92, 94, 95 
 
 Campbell v. Dyson, 242 O. G. 253 (1916) 87 
 
 Capen, In re, 214 O. G. 685; 45 App. D. C. 342 52 
 
 Card V. Card, 112 O. G. 499 (1904) 13 
 
 Carlin v. Goldberg, 236 O. G. 1222; 1917 C. D. 128; 45 App. 
 
 D. C. 540 87, 246 
 
 Carroll'v. Stahlberg, 111 O. G. 1937 49 
 
 Carroll v. Halwood, 135 O. G. 896; 31 App. D. C. 165 232, 248 
 
 Carv-alho, 250 O. G. 514 ; 47 App. D. C. 584 247 
 
 Cazin v. Von Welshback, lvI9 0. G. 650 (1905) 201 
 
 vii
 
 Section 
 
 Cazin, 20 Gour. 86-15 (Dec., 1908) 255 
 
 Cedge V. Cromwell, 19 App. D. C. 198 164 
 
 Chambers v. Frost. 170 O. G. 244; 37 App. D. C. 332 141 
 
 Chapman v. Wintroath, — U. C. 64 L. Ed. — 185 
 
 Charmichael v. Fox, 104 O. G. 1656 215, 219 
 
 Charlton v. Sheldon, 111 O. G. 2492 40 
 
 Cherner v. Qauss, 116 O. G. 597 (1905) ; 25 App. D. C. 15 . 97 
 
 Chisholm v. Pierman, 225 O. G. 1105 (1915) 157 
 
 Christensen v. Ellis, 94 O. G. 2-561; 1902 C. D. 326; 17 App. 
 
 D. C. 498 106, 121 
 
 Christensen v. ilcKenzie, 117 O. G. 277 (1905) 244 
 
 Christie v. Seybold, 55 Fed. 69 110 
 
 Churchill v. Goodwin. 141 0. G. 568; 32 App. D. C. 428 ... 247 
 
 Churchward v. Douglas, 106 O. G. 2016 (1903) 59 
 
 Clark Thread Co. v. WiUimantic Linen Co., 140 V. S. 489, 35 
 
 L. Ed. 521 101 
 
 Qaussen v. Dunbar, 129 O. G. 2499 (1907) 216 
 
 Clement v. Kichards, 111 O. G. 1626 210, 217, 252 
 
 Clement v. Eichards, 113 O. G. 1143 113, 115 
 
 Qement v. Eichards, 16 Gour. 52-10 227 
 
 Clement v. Brown, 126 O. G. 2189 (1907) 70, 71 
 
 Clement v. Browne, 126 O. G. 2589 (1907) 165 
 
 aow V. Baker, 36 Fed. 692 198 
 
 Cobb V. Goebel, 108 O. G. 1591; 23 App. D. C. 75 102 
 
 Colburn t. Hitchcock, 145 O. G. 1022 (1909) 78 
 
 Coleman v. Bullard, 114 O. G. 973 256 
 
 Cole T. Zarbock, 116 O. G. 1451 215 
 
 Collom T. Thurman, 131 O. G. 839 30 
 
 Columbia etc. Co. v. Duerr & Co., 184 Fed. 9S3 156 
 
 Columbian Carbide Co., 20 Gour. 17-1 (Mar. 27, 1908) 200 
 
 Connor v. Dean. 142 O. G. 856; 24 App. D. C. 277 191 
 
 Continental Eubber Works v. Single Tube Co., 178 Fed. 452 lOS 
 
 Cooke V. Taylor, 116 O. G. 1181 (1904) 105 
 
 Cooper V. Downing, 222 O. G. 727 (1915) 191a 
 
 Cooper V. Downing, 230 O. G. 909; 45 App. D. C. 345 191a 
 
 Corey v. Blakey, 115 O. G. 1328 (1905) 89, 244 
 
 t.^rey v. Trout, 99 O. G. 2547 ; 1902 C. D. 195 15 
 
 Corey v. Trout, 110 O. G. 306 230 
 
 Corry et al. v. McDermott, 117 O. G. 279; 25 App. D. C. 305 164 
 
 Cosper V. Gold, 151 O. G. 194; 34 App. D. C. 194 87, 246, 247 
 
 Couch V. Bamett, 110 O. G. 1431 141 
 
 Coulson V. Callender, 101 O. G. 1607 77 
 
 Courson v. O 'Conner, 181 O. G. 544; 38 App. D. C. 131 ... 120 
 
 Cobb V. Goebel, 108 O. G. 1591 ; 23 App. D. C. 75 102 
 
 viii
 
 Section 
 
 Cragg V. Strickland, 250 O. G. 255 121 
 
 Cramer v. Carrier, 177 O. G. 769 (1912) 46, 49 
 
 Crane, Ex parte, 106 0. G. 999 7 
 
 Crescent Oil Co. v. W. C. Eobinson & Sons, 142 O. G. 1113 
 
 (1909) 216 
 
 Creveling v. Jepson, 256 O. G. 226; 47 App. D. C. 597 .... 33 
 
 Creveling v. Jepson, 226 O. G. 339 ; 44 App. D. C. 445 142 
 
 Cross V. Phillips, 87 O. G. 1399; 14 App. D. C. 288 100 
 
 Cross V. Phillips, 14 App. D. C. 228 46 
 
 Cross V. Busby, 204 O. G. 1347 ; 42 App. D. C. 227 229 
 
 Cummings v. McKenzie, 110 O. G. 1167 134 
 
 Curtiss, In re, 238 O. G. 650; 46 App. D. C. 183 228 
 
 Curtis V. Lindmark, 171 O. G. 484 and 215; 37 App. D. C. 
 
 322 92 
 
 Curtis V. de Ferranti, 171 O. G. 215 28 
 
 Curtain Supply Co. v. National Lock Washer Co., 178 Fed. 
 
 95 . .156, 157 
 
 Cutler V. Hall, 135 O. G. 449 (1908) 218 
 
 Cutler V. Leonard, 31 App. D. C. 297; 136 0. G. 438 96 
 
 Daggett V. Kaufmann, 145 O. G. 1024 ; 33 App. D. C. 450 . 141, 149 
 
 Dalgren v. Crocker, 98 O. G. 2586 ; 1902 C. D. 107 48 
 
 Dalton V. Hopkins, 121 O. G. 2666 (1906) 244 
 
 Dalton V. Wilson, 224 O. G. 741; 44 App. D. C. 249 192 
 
 Dashiell v. Tasker, 103 O. G. 2147; 21 App. D. C. 64; 102 
 
 O. G. 1551 142 
 
 Davis V. Ocumpaugh, 104 O. G. 2440 (1903) 36, 49 
 
 Davis V. Zellers, 167 O. G. 513 (1911) 55 
 
 Davis V. Swift, 96 O. G. 2409; 1901 C. D. 134 89 
 
 Davis V. Horton, 136 O. G. 1768 121 
 
 Davis V, Garrett, 123 0. G. 1991 (1906) 121 
 
 Davis V. Forsythe, 87 O. G. 516 157 
 
 Davis V. National Steam Specialty Co., 164 Fed. 191 123 
 
 Davis V, Cody, 101 O. G. 1369; 1902 C. D. 220 244 
 
 Day V. Adt, et al., 125 O. G. 2765 (1906) 49 
 
 Degen v. Pfadt, 133 O. G. 514 (1908) 256 
 
 DeKando v. Armstrong, 169 O. G. 1185; 37 App. D. C. 314 102, 136 
 
 Denton v. Burnhain, 18 Gour. 83-11 (Nov., 1906) 195 
 
 De Ferranti v. Lindmark, 183 O. G. 782 (1912) SO 
 
 De Ferranti v. Lindmark, 137 0. G. 733 (1908); 32 App. 
 
 D- C 217 
 
 Derr v. Gleason, 264 0. G. 864 249 
 
 Dickinson v. Hildreth, 122 O. G. 1397 (1906) 87 
 
 Dinkel v. D 'Oliver, 113 0. G. 2507 (1903) 76 
 
 ix
 
 Section 
 
 Dittgen v. Eaeine Paper Goods Co., 181 Fed. 394 167 
 
 Dittgen v. Parmenter, 99 0. G. 2966; 1902 C. D. 218 87 
 
 Dixon V. Graves, 130 O. G. 2374 (1907) 254 
 
 Dixon V. McElroy, 127 O. G. 2393 (1907) 50 
 
 Dixon V. Graves, 127 O. G. 1993 80 
 
 Dunbar v. Schellengers, 125 O. G. 348 (1906) 103, 121 
 
 Doble V. Henry, 110 O. G. 604 41 
 
 Doble V. Henry, 118 O. G. 2249 (1905) 158, 168 
 
 Donning v. Anderson, 111 O. G. 582 244 
 
 Donning v. Stackpole, 106 O. G. 264; 1903 C. D. 298 193a 
 
 Donning v. Fisher, 125 O. G. 2765 (1906) 213 
 
 Donnelly v. Wyman, 103 O. G. 657 (1903) 116 
 
 Dorr V. Ames, 15 Gour. 35-6 (June, 1903) 89 
 
 Double V. Mills, 112 O. G. 1747 143, 154 
 
 Dow V. Benson, 107 O. G. 1378 (1903) 14, 15 
 
 Drawbaugh, In re, 77 O. G. 313; 9 App. D. C. 219; 1896 C. 
 
 D. 527 243 
 
 Dreckscliniidt v. Scliaefer, 246 O. G. 301 157 
 
 Dudley v. Blickinsderfer, 99 O. G. 228; 1902 C. D. 119 ... 216 
 
 Duker, 115 O. G. 803 7 
 
 Dukesmith v. Covington, 126 O. G. 348 74 
 
 Dukesmith v. Carrington, 125 O. G. 348 (1906) 208, 256 
 
 Dunlap V. Creveling, 21 Gour. 67-8 (Sept., 1909) 63 
 
 Dunlap V. Creveling, 160 O. G. 774 (1910) 199 
 
 Dunbar v. Schellenger, 128 O. G. 2837 (1907); 29 App. D. 
 
 C. 129 247 
 
 Dunbar v. Schellenger, 118 O. G. 2536 (1905) 212 
 
 Dunbar v. Schellenger, 19 Gour. 37-17 (April, 1907) 217 
 
 Dunbar v. Schellenger, 121 O. G. 687 (3905) 224 
 
 Dunkcr v. Eeist, 119 O. G. 1925 (1905) 66, 78 
 
 Dunkley v. Beekhuis, 158 O. G. 886 (1910) 200 
 
 Dunn v. Holiday, 119 O. G. 1261 (1905) 47 
 
 Dunn v. Douglass, 184 O. G. 804 (1912) 89 
 
 Duryea v. Kice, 126 O. G. 1357 (1906) ; 28 App. D. C. 423 . 247 
 
 Dutcher v. Matthew, 118 O. G. 2538 (1905) 239 
 
 Dyson v. Land, 130 O. G. 1690 (1907) 194 
 
 Dyson v. Land, ]33 O. G. 1679 (1908) 21 
 
 Earll V. Love, 140 0. G. 1209 (1909) 78 
 
 Eastern Paper Bag Co. v. Continental Paper Bag Co., 142 
 
 Fed. 479 108 
 
 Eastman v. Houston, 95 O. G. 2064; 1902 C. D. 386; 18 
 
 App. D. C. 135 102 
 
 Ebersole v. Durkin, 132 O. G. 842 (1907) 142, 150 
 
 X
 
 Section 
 
 Eggbert v. Lippman, 104 U. S. 333 . . 166 
 
 Egly V. Sc-hiiltze, 117 0. G. 27G (1905) 69, 244 
 
 Eichelbergcr v. Dillon, 129 O. G. 3161 13 
 
 Elizabeth v. American etc. Co., 97 U. S. 135 166 
 
 Ellis V. Boyce, 195 O. G. 273 (1913) 84 
 
 Elsom V. Bonner, 246 O. G. 299 (1917), 46 App. D. C. 230 154a, 247 
 
 Emerson v. Sanderson, 174 O. G. 831 (1911) 142 
 
 Emmet v. Fullager, 130 O. G. 2719 (1907) 89 
 
 Emmet v. Fullager, 114 O. G. 1551 48 
 
 Emmet v. Fullager, 124 O. G. 2178 141, 149 
 
 Engel V. Sinclair, 152 O. G. 489 ; 34 App. D. C. 212 28 
 
 EscMnger v. Drummond, 121 O. G. 1348 (1906) 24, 87 
 
 Eshelman v. Shantz, 189 0. G. 1282 ; 39 App. 434 164 
 
 Evans v. Associated etc. Co., 241 Fed. 252 06 
 
 Ewing, Com'r v. U. S. ex rel. Fowler, 238 O. G. 983, 244 
 
 U. S. 1 4 
 
 Faller v. Lorimer, 16 Gour. 37-11 196 
 
 Faller v. Lorimer, 14 Gour. 50-2 (July, 1902) 257 
 
 Fanslow v. Whitneys, 266 O. G. 742 (1910) 236 
 
 Felbel v. Oliver, 13 Gour. 4-11 (Jan., 1901) 195 
 
 Felbel v. Oliver, 100 O. G. 1975 ; 1902 C. D. 309 197 
 
 Felbel v. Fox, 130 O. G. 2375 (1907) 238 
 
 Felsing v. Nelson, 121 0. G. 1347 (1906) 87 
 
 Fefel V. Stocker, 94 O. G. 434; 17 App. D. C. 317 123, 152, 156 
 
 Fend v. Miggett, 223 O. G. 649 (1915) 82, 88 
 
 Feinberg v. Cowan, 125 O. G. 667 (1906) ; 29 App. D. C. 80 116 
 
 Fenner v. Blake, 134 O. G. 2244; 30 App. D. C. 507 102 
 
 Fenwick v. Dixon, 15 Gour. 71-23 (Sept., 1903) 87 
 
 Ferris, 114 O. G. 541 88 
 
 Fessendon v. Potter, 101 0. G. 2823 ; 1902 C. D. 466 212 
 
 Fessenden v. Pierce, 21 Gour. 21-11 (INforcli, 1909) 130 
 
 Field, ex parte, 130 O. G. 1687 (1906) 224 
 
 Field V. Coleman, 131 O. G. 1686 (1907) 76, 23S 
 
 Field V. Coleman, 193 O. G. 221; 40 App. D. C. 598 247a 
 
 Finch V. Singleton, 98 O. G. 1709; 1902 C. D. 61 68 
 
 Flather v. Weber, 104 O. G. 312 (1903) ; 21 App. D. C. 179 189 
 
 Flora V. Powrie, 109 O. G. 2443 ; 23 App. D. C. 195 249 
 
 Floyd V. Eohlfiug, 133 O. G. 992 (1908) 50 
 
 Fordyce v. Taisey, 102 O. G. 831 (1903) 50 
 
 Forsyth v. Richards, 115 O. G. 1327 43, 84 
 
 Forsberg v. Bradbury, 177 O. G. 239 (1912) 51 
 
 Foster v. Antisdel, 88 O. G. 1527; 14 App. D. C. 552 158 
 
 Fowler v. Boyce, 118 0. G. 2534 (1905) ; 27 App. D. C. 55; 
 
 122 O. G. 1726 (1906) ; 121 O. G. 1014 100
 
 Section 
 
 Fowler v. Boyee, 107 0. G. 543 (1903) 40, 4S 
 
 Fowler v. Boyce, 108 O. G. 561 47, 48 
 
 Fowler v. McBertv, 121 O. G. 1015 (1906) 100 
 
 Foote V. Wenk, 118 O. G. 1366 (1905) 143 
 
 Franklin v. Cooley, 95 O. G. 2063 ; 1901 C. D. 49 48 
 
 Freeman v. Garrels, 102 O. G. 1777 (1903) 103, 104, 131 
 
 Freeman v. Parks, 117 O. G. 276 (1905) 58 
 
 Freistedt v. Harold, 116 0. G. 594 (1905) 47, 48 
 
 French v. Holcomb, 110 O. G. 1727 216, 218 
 
 French v. Holcomb, 115 O. G. 506 (1905) 102, 190 
 
 French v. Holcomb, 120 O. G. 1824 (1905) ; 26 App. D. C. 
 
 307 97,103 
 
 Frickey v. Ogden, 199 O. G. 307 233 
 
 Fullager v. Jungren, 114 O. G. 1550 47 
 
 Fuller Y. Hewlett, 17 Gour. 3-6 118 
 
 Funk V. Matteson, 100 O. G. 1563; 1902 0. D. 297; 20 
 
 App. D. C. 285; 1902 C. D. 553 100, 106, 133, 159 
 
 Funk V. Whitely, 117 O. G. 280 (1905) ; 25 App. D. C. 313 . 154 
 Furman v. Dean, 114 0. G. 1552 96, 242 
 
 Gabowsky v. Gallaher, 191 0. G. 835, 39 App. D. C. 548 . . .108, 10!) 
 
 Gaisman v. Gillette, 165 O. G. 244, 36 App. D. C. 440 141, 151 
 
 Gaely v. Brand, 16 Gour. 50-4 78 
 
 Gales V. Berrigan, 100 O. G. 232; 1902 C. D. 232 49 
 
 GaUagher v. Hein, 115 0. G. 1330 (1905) ; 25 App. D. C. 
 
 77 117, 139, 141, 148, 159 
 
 Gallagher v. Hein, 114 O. G. 974 143 
 
 Gallagher v. Hastings, 103 O. G. 1165; 21 App. D. C. 88 . . 180 
 
 Gaily V. Burton, 120 O. G. 325 (1905) 78 
 
 Gammeter v. Thropp, 190 O. G. 266 (1913) 51 
 
 Gammeter v. Lister, 253 O. G. 259 35 
 
 Garrels v. Freeman, 103 0. G. 1683, 21 App. D. C. 207 103 
 
 Gassau v. Odell, 190 O. G. 1028 (1913) 16 
 
 Gehring v. Barry, 225 0. G. 371 (1914) 80 
 
 General Electric v. Stcinberger, 208 Fed. 699 102 
 
 General Electric v. Steinberger, 206 O. G. 1161, 214 Fed. 781 28 
 Ghallenberger v. Andrews, 100 0. G. 3013; 1902 C. D. 346 . 89 
 
 Gibbons v. Poller, 124 O. G. 624 (1906) 116, 184 
 
 Gibbons v. Peller, 127 O. G. 3643 (1907) 88 
 
 Gilbert v. Gilbert, 160 O. G. 775 (1910) 16 
 
 Gilbert-Stringer v. Johnson, 102 O. G. 621; 1903 C. D. 20 . 76,95 
 
 Gillespie v. Dean, 15 Gour. 83-7 (Nov., 1903) 78 
 
 Gilman v. Hinson, 118 O. G. 1933 (1905) 143 
 
 xii
 
 Section 
 
 Gilman v. Hinsoii, 201 O. G. 1219 (1913) 156 
 
 Gilman v. Hinsoii, 122 O. G. 731, 26 App. D. C. 409 156 
 
 Giveiis V. Warren, 216 O. G. 1013, 44 App. D. C. 10 110 
 
 Gold V. Gold, 131 O. G. 1422 (1907) 244 
 
 Gold V. Gold, 150 O. G. 570, 34 App. D. C. 229 81, 234, 249 
 
 Gold V. Dixon, 194 O. G. 1142; 1913 C. D. 217 75, 78 
 
 Goldberg v. Halle, 151 O. G. 452, 34 App. D. C. 183 251 
 
 Goldschmidt v. Von Schutz, 192 0. G. 743 (1913) 195 
 
 Goldschmidt v. Von Schntz, 192 O. G. 743 (1913) 193 
 
 Goodfellow V. Jolly, 111 0. G. 1940 18, 194a 
 
 Goodfellow V. Jolly, 115 O. G. 1064 22, 244 
 
 Gordon v. Wentworth, 130 O. G. 2065 (1907) 151 
 
 Gordon v. Wentworth, 135 O. G. 1125, 31 App. D. C. 150 . . 156, 157 
 
 Graham v. Langhaar, 164 0. G. 739 (1911) 89 
 
 Graham v. Langhaar, 177 0. G. 240 (1912) 83 
 
 Granger v. Eichardson, 110 O. G. 722 190 
 
 Green v. Farley, 132 O. G. 235 (1907) 50 
 
 Greenawalt v. Mark, 111 O. G. 2224 92 
 
 Greenwood v. Dover, 108 O. G. 2143; 1904 C. D. 66 154 
 
 Greenwood v. Dover, 109 O. G. 2172, 23 App. D. C. 251 . . .247, 251 
 
 Greuter v. Matthieu, 111 O. G. 582 218 
 
 Greuter v. Matthieu, 112 O. G. 253 226 
 
 Griffith V. Dodgson, 116 O. G. 1731 (1905) 81, 257 
 
 Gueniffet v. Wictorsohn, 134 O. G. 255, 134 O. G. 779, 30 
 
 App. D. C. 432 234, 247 
 
 Guett V. Trengoniug, 114 0. G. 544 37 
 
 Hadley v. Ellis, 265 O. G. 458 (1919) ; 258 Fed. 984 141 
 
 Hall V. Alvord, 101 O. G. 1833 ; 1902 C. D. 418 194 
 
 Halwood V. Lalor, 103 O. G. 887 (1903) ; 21 App. D. C. 61 . 134 
 
 Halwood V. McCormick, 16 Gonr. 84-9 42, 78 
 
 Hamilton v. Carroll, 110 O. G. 2510 47 
 
 Hamilton v. Ide et al., 14 Gour. 4-9 (Feb., 1902) 49 
 
 Hamilton v. Holiday, 119 O. G. 1261 (1905) 47 
 
 Hammond v. Hart, 83 O. G. 743 7, 12 
 
 Hammond v. Basch, 115 O. G. 804, 24 App. D. C. 469 
 
 46, 100, 119, 139 
 
 Hanan v. Marshall, 21 Gour. 54-16 (June, 1909) 56 
 
 Hansel v. Wardwell, 116 O. G. 2008 (1905) 205 
 
 Hansen, 117 O. G. 2632 (1905) 21 
 
 Hansen! v. Dean, 129 O. G. 483 (1907) ; 29 App. D. C. 112 185 
 
 Harnish v. Gueniffet, 117 O. G. 1492 (1905) 204 
 
 Harris v. Stern, 105 O. G. 259 (1903) 132 
 
 Harris v. Stern, 101 0. G. 1132; 1902 C. D. 386 218 
 
 2 xiii
 
 Section 
 Barter v. Barrett, 114 O. G. 975, 24 App. D. C. 300 . . .102, 104, 185 
 
 Hartley v. Mills, 110 O. G. 604 41 
 
 Hathaway v. Field, 261 O. G. 413 (1919) 138, 157 
 
 Haskell v. Miner, 109 O. G. 2710 10 
 
 Hathaway v. Colman, 245 O. G. 1025, 46 App. D. C. 40 247 
 
 Haudenschild v. Huyek,, 164 O. G. 515 (1911) 13 
 
 Havemeyer v. Coryell, 186 O. G. 558 (1912) 154a 
 
 Hawkins v. Young, 21 Gour. 34-3 (May, 1909) 78 
 
 Hein v. Bnhonp, 81 0. G. 2088 133 
 
 Heintish v. Congdon, 106 O. G. 542 (1903) '. . . 48 
 
 Hellmund, 141 O. G. 565 (1909) 13 
 
 Hendler v. Graf, 96 O. G. 2063 ; 1901 C. D. 130 132 
 
 Henderson v. Gilpin, 186 O. G. 289 (1911) ; 39 App. D. C. 
 
 428, 187 O. G. 231 109, 144 
 
 Henderson v. Kindervater, 192 O. G. 741 170 
 
 Henderson v. Noakes, 59 O. G. 1431; 1892 C. D. 114 50 
 
 Henggi v. Dalhneyer, 253 O. G. 514 102 
 
 Herman v. Fi:llman, 107 O. G. 1094 " 158 
 
 Herman v. Fullman, 109 O. G. 1888, 23 App. D. C. 259 ... 100, 247 
 
 Hermsdorf v. Driggs, 133 O. G. 1189 (1908) 87 
 
 Herreshoff v. Knietsch, 111 O. G. 1624 227 
 
 Hett V. Swinnerton, 181 O. G. 542 (1911) 144 
 
 Hewitt \. Weintraub, 128 O. G. 1689 (1907) 224 
 
 Hewitt V. Weintranb, 134 O. G. 1561 (1908) 198 
 
 Hewitt V. Thomas, 122 O. G. 1045 215, 256 
 
 Hewitt V. Steinmetz, 122 O. G. 1396 (1906) 226 
 
 Hewlett V. Steinberger, 190 O. G. 270, 40 App. D. C. 287 . . 162 
 
 Heyne v. De A'ilbiss, 125 O. G. 669 (1906) 21, 66, 84 
 
 Hieks V. Costello, 103 O. G. 1163 (1903) 62 
 
 Hildreth, 97 O. G. 1374; 1901 C. D. 186 208 
 
 Hillard v. Fisher, 101 O. G. 2290; 1902 C. D. 448 61 
 
 Hillard v. Eckert, 101 O. G. 1831 ; 1902 C. D. 413 256 
 
 Hilliard v. Brooks, 111 O. G. 302, 23 App. D. C. 526 156 
 
 Hilliard v. Hewlett, 19 Gour. 55-10 (Apr., 1907) 67 
 
 Hinkley v. Baker, 97 O. G. 2742 ; 1901 C. D. 236 66 
 
 Hofk V. Hopkins, 21 Gour. 67 (Aug., 1909) 47, 48 
 
 Hocker v. Farr, 193 O. G. 220 (1913) 49 
 
 Hoogh V. Gordon, 108 O. G. 797 223 
 
 Holland, 99 O. G. 2548 ; 1902 (J. D. 199 7 
 
 Hollifield V. Cummings, 154 O. G. 1107 (1910) 62 
 
 Iloltz V. Hewitt, 127 O. G. 1992 (1907) 201 
 
 Hope Jr. V. Voigt, 115 O. G. 1585 (1905); 25 App. D. C. 
 
 22 102, 134, 139, 186 
 
 Uopfeit V. Head, 100 (). fi. 767 (1903) 66 
 
 xiv
 
 Section 
 Hopkins v. Newman, 134 0. G. 2028, 30 App. D. C. 402 . . 191a 
 
 Iloi.kins V. Newman, 131 O. G. 1161 (1907) 228 
 
 Hopkins V. Peters, 199 O. G. 1243 (1907); 41 App. D. C. 
 
 302 150 
 
 Horine v. Wende, 1907 C. D. 615, 29 App. D. C. 415 . .229, 232, 248 
 Horton v. Zimnier, 137 0. G. 2223 (1908); 32 App. D. C. 
 
 217 150, 201 
 
 Horton v. Leonard, 155 O. G. 305 89 
 
 Hough V. Gordon, 108 O. G. 797 212 
 
 Howard v. Spare, 21 Gour. 19-8 (IMJar., 1909) 193a 
 
 Howard v. Bowes, 137 O. G. 733 (1908); 31 App. D. C. 
 
 619 140, 157 
 
 Howard v. Hey, 95 O. G. 1647, 18 App. D. C. 142 249 
 
 Howell V. Hess, 132 O. G. 1074 (1907) ; 30 App. D. C. 194 . 138 
 
 Howell V. Hess, 122 O. G. 2393 (1906) 138 
 
 Hoyt V. Sanders, 119 0. G. 1260 (1905) 48 
 
 Huber v. Aiken, 88 O. G. 1525 80 
 
 Huebel v. Bernard, 90 O. G. 751, 15 App. D. C. 510 164, 192 
 
 Huff V. Gulick, 179 O. G. 579, 38 App. D. C. 334 143, 181 
 
 Huff V. Gulick, 177 O. G. 525 141 
 
 Hull V. McGill, 117 0. G. 597 218 
 
 Hunter v. Stikenian, 13 App. D. C. 214, 85 O. G. 16 138 
 
 Hubbard v. Berg, 195 O. G. 818, 40 App. D. C. 577 122, 157 
 
 Independent Baking Powder Co. v. Fidelity Mfg. Co., 94 0. 
 
 G. 222 ; 1901 C. D. 7 [ 195 
 
 International Tooth Crown Co. v. Gaylord, 140 U. S. 63, 35 
 
 L. Ed. 347 166 
 
 Jackson v. Patten, 150 O. G. 265 8, 14 
 
 Jackson v. Weber, 18 Gour. 84-13 (Nov., 1906) 73 
 
 Jameson & Yeserba v. Ellsworth, 192 O. G. 218, 40 App. D. 
 
 C. 164 164 
 
 Jarvis v. Quiney, 113 O. G. 550 89 
 
 Jarvis v. Focatiis, 20 Gour. 66-4 (March, 1908) 238 
 
 Jenner v. Dickinson, 116 O. G. 1181 (1904) 156 
 
 Jenner v. Dickinson, 117 O. G. 600 (1905) 102 
 
 Jobski V. Johnson, 247 O. G. 479, 47 App. D. C. 230 142, 154 
 
 Joliffe V. Waldo, 234 O. G. 671 (1916) '236 
 
 Johnson v. Erekson, 131 O. G.' "2419 (1907) 48 
 
 Johnson v. Mueser, 145 O. G. 764, 29 App. D. C. 61 80 
 
 Jones V. Cooke, 117 O. G. 1493 (1905) ; 25 App. D. C. 524 . 121 
 
 Jones V. Hulse, 21 Gour. 86-15 (July, 1909) 70 
 
 Jones V. Linn, 110 O. G. 1430 48 
 
 XV
 
 Section 
 
 Joues V. Starr, 111 O. G. 2221 194a 
 
 Jones V. Starr, 1905 C. D. 694, 25 App. D C. 529 194a 
 
 Jones V. Starr, 117 O. G. 1495, 26 App. D. C. 64 251 
 
 Jones V. Wplff, 17 Gour. 53-8 (July, 1905) 113 
 
 Jones V. Wolff, 17 Gour. 52-8 30 
 
 Juuge V. Harrington, 131 O. G. 691 ^ 25, 26 
 
 Kaezauder v. Hodges, 118 O. G. 836 65 
 
 Karpenstein v. Hertzberg, 127 O. G. 2393 (1907) 46 
 
 Keeeh v. Birmingham, 191 0. G. 2825 39 
 
 Keeler v. Bailey, 14 Gour. 82-1 (Dec, 1902) .' . . . 21 
 
 Keith V. George, 16 Gour. 19-4 89 
 
 Keith V. Lundquist, 128 O. G. 2835 (1907) 256 
 
 Keith V. Lundquist, 156 O. G. 798 (1910) 196 
 
 Keith V. Eriekson, 157 O. G. 754 (1910) 194 
 
 Kellogg V. International Co., 158 Fed. 104, 171 Fed. 651 ... 122 
 
 Kelly V. Dempster, 164 O. G. 975 (1911) 81 
 
 Kelly V. Park, 81 O. G. 1931 170 
 
 Kempshall v. Eoyce, 129 O. G. 3162 194 
 
 Kempshall v. Seiberling, 104 O. G. 1395 (1903) 257 
 
 Kendall v. Winsor, 21 Howe 322 157 
 
 Kenney v. O'Connell, 117 O. G. 1163 (1905) 19S 
 
 Kent V. Wilson, 137 0. G. 1943 50 
 
 Keyes v. Yunek, 182 0. G. 248 (1912) 66, 89 
 
 Kilbourn v. Hiner, 124 0. G. 1841 (1906) 114 
 
 I^nball V. Sharpies, 21 Gour. 68-10 (Aug., 1909) 55 
 
 King V. Hansen, 101 O. G. 1129; 1902 C. D. 378 48 
 
 Kinney v. Goodhue, 123 O. G. 1663 (1906) 87 
 
 Kinsman v. Strohm, 136 O. G. 1769 (1908) ; 31 App. D. C. 
 
 581 192, 247 
 
 Kinsman v. Strohm, 125 O. G. 1699 (1906) 193, 195 
 
 Kirby v. Clements, 216 0. G. 1319, 44 App. D. C. 12 25 
 
 Kirkegaard v. Ries, 125 O. G. 1700 (1906) 102, 103 
 
 Klahn, In re, 241 O. G. 623 ; 1917 C. D. 7 233 
 
 Klcnk V. Kruse, 177 0. G. 1300 (1912) 46 
 
 Klocke V. Burk, 189 O. G. 779; 1913 0. D. 85 37, 44 
 
 Klopetke v. Becker, 120 O. G. 658 (1905) 60 
 
 Kncisly v. Kaisling, 174 O. G. 830 (1911) 16S 
 
 Koib V. Hemingway, 122 O. G. 1397 (1906) 8!) 
 
 Kroag V. Green, 124 O. G. 1208 (1906) 159 
 
 Krcag V. (ireen, 127 O. G. 1581 (1906) 164 
 
 Kurts V. .lackson, 9S (). G. 2568; 1902 C. D. 106 67 
 
 Laas V. Scott, 161 Fed. 122 108, 141, 142, 155 
 
 Laas V. Scott, 122 O. G. 352 (1905) 117, 128 
 
 xvi
 
 Section 
 
 Lacroix v. Tyberg, 148 O. G. 831 (1908) 254 
 
 Lacroix v. Tyberg, 150 O. G. 267, 33 App. D. C. 580 .... 247, 247a 
 
 Lacloff V. Dempster, 166 O. G. 511, 36 App. D. C. 520 164 
 
 Lammers v. Weinwurm, 15 Gour. 66-2 (Sept., 1903) 257 
 
 Landa v. Kavle, 158 0. G. 228 (1910) 141 
 
 Larkin v. Eichardson, 122 O. G. 2390 184 
 
 Larkiii v. Eieliardson, 127 0. G. 2394 (1906) 164 
 
 Latshaw v. Duff, 130 0. G. 980 (1907) 216 
 
 Lautenschlager v. Glass, 249 O. G. 1223, 47 App. D. C. 443 . 247 
 
 Lawrence v. Voiglit, 147 O. G. 235 (1909) 156 
 
 Lederer v. Walker, 182 0. G. 511 157 
 
 Lloyd V. Antisdel, 95 O. G. 1645; 1901 C. D. 371 185 
 
 Lemp V. Mudge, 114 O. G. 763, 24 App. D. C. 282 156 
 
 Lemp V. Eandall, 123 O. G. 349 27 
 
 Lemp V. Eandall, 146 O. G. 255, 35 App. D. C. 430 192 
 
 Leonard v. Horton, 189 O. G. 781, 40 App. D. C. 22 26 
 
 Leonard v. Pardee, 164 O. G. 249 (1911) 154a, 256 
 
 Libby v. Farmer, 18 Gour. 37-14 (May, 1906) 164 
 
 Liberman v. Williams, 109 O. G. 1610, 23 App. D. C. 223 ... 114 
 Lindemeyer v. Hoffman, 95 0. G. 838 (1901) ; 18 App. D. 
 
 C. 1 135, 141 
 
 Lindmark v. De Ferranti, 153 O. G. 1082, 34 App. D. C. 445 . 238 
 Lindmark v. Hodgkinson, 137 O. G. 228, 31 App. D. C. 612. . 32 
 
 Lindstrom v. Lipschutz, 120 O. G. 904 (1905) 170, 172 
 
 Lindstrom v. Ames, 168 O. G. 250, 37 App. D. C. 365 192 
 
 Lipe V. Miller, 105 O. G. 1532 (1903) 21 
 
 Lipe V. Miller, 109 O. G. 1608 81, 257 
 
 Lipscomb v. Pfeiffer, 122 O. G. 351 (1906) 212 
 
 Lizotte V. Neuberth, 124 O. G. 1842 (1906) 66 
 
 Lobel V. Cassey, 157 Fed. 664, 211 
 
 Lockwood V. Schmidt, 100 O. G. 453; 1902 C. D. 253 50 
 
 Long V. Flaag, 190 O. G. 265 (1913) 89 
 
 Loomis V. Hauser, 99 O. G. 1172 (1902) ; 19 App. D. C. 401 141 
 Lorimer v. Erickson, 227 O. G. 144S ; 44 App. D. C. 503 ... 136 
 
 Lotterhand v. Cornwall, 148 O. G. 1344 (1909) 38 
 
 Lotterhand v. Cornwall, 154 0. G. 515 (1910) 63 
 
 Lotterhand v. Hanson, 110 O. G. 861, 23 App. D. C. 372 . .112, 247 
 
 Lottridge v. Eustice, 121 O. G. 689 (1906) 14, 38 
 
 Lotz V. Kenny, 19 Gour. 50-10 (July, 1907) . •. 103 
 
 Lowry v. Allen, 203 U. S. 476 3 
 
 Lowry v. Spoon, 14 Gour. 52-7 (July, 1902) 256 
 
 Lowry v. Spoon, 110 O. G. 858 92, 96 
 
 Lowry v. Spoon, 122 O. G. 2687 165, 244 
 
 Lowry v. Spoon, 124 O. G. 1846 (1906) 165 
 
 xvii
 
 Section 
 
 Lowrie v. Taylor, 118 O. G. 1681 (1905) 100, 141 
 
 Lowrie v. Taylor, 123 O. G. 1665 (1906) ; 27 App. D. C. 
 
 522 .' 100,128,134 
 
 Luby V. Taylor, 118 O. G. 835 (1905) 112 
 
 Luckett Y. Straub, 250 O. G. 999 (1918) 274a 
 
 Luellen v. Claussen, 190 O. G. 265 (1913) 168 
 
 Luke V. Cahill, 110 O. G. .2235 206 
 
 Luger V. Browning, 100 O. G. 231 ; 1902 C. D. 230 12, 78 
 
 Lutz V. Lewis, 110 O. G. 2014 ,. . . . 9o 
 
 Macey v. Laning, 101 O. G. 1608; 1902 C. D. 399 215, 256 
 
 Manley v. Williams, 168 O. G. 1034, 37 App. D. C. 194 192 
 
 ilanley v. WilUams, 21 Gour. 85-11 (Aug., 1909) 89 
 
 Marconi v. Shoemaker, 121 O. G. 2664 (1906) 195, 197 
 
 Marconi v. Shoemaker, 131 O. G. 1939 (1907) 154 
 
 Marconi, In re, 179 O. G. 577, 38 App. D. C. 286 232, 243 
 
 Mark v. Greenewalt, 118 O. G. 1068 (1905) 224 
 
 Marsh v. Grace, 127 O. G. 1993 (1907) 195 
 
 Martin v. Goodrum, 130 O. G. 1485 (1907) 84 
 
 Mason v. Hepburn, 84 O. G. 147, 13 App. D. C. 86 122, 141, 157 
 
 Matthes v. Burt, 114 O. G. 764. 2i App. D. C. 265 157 
 
 Matthes v. Burt, 111 O. G. 1363, 24 App. D. C. 265 - 192 
 
 Mattice v. Langworthy, 132 O. G. 678 (1907) 64 
 
 Mattice v. Langworthy, 140 O. G. 507 (1909) 195 
 
 Maxwell v. Byron, 98 O. G. 1968 ; 1902 C. D. 67 15 
 
 McBride v. Kemp, 109 O. G. 1069 224 
 
 McBerty v. Shore, 175 O. G. 843 (1911) 87 
 
 :NrcDermott, 15 Gour. 88-26 (Oct., 1903) 243 
 
 McDermott v. Hiklreth, 98 O. G. 1282; 1902 C. D. 43 49, 50 
 
 McDonald v. Edison, 105 O. G. 973 (1903) 124. 133, 157 
 
 McDonald v. Edison, 105 O. G. 1263 (1903) ; 21 App. D. C. 
 
 527 133, 141 
 
 McCheslcy v. Kruger, 101 O. G. 219 ; 1902 C. D. 349 256 
 
 McConnell v. Wood, 250 O. G. 767 180 
 
 McDuflfe V. Hestonville Co., 181 Fed. 503 126 
 
 ^[cFarland v. Watson, 146 O. G. 257, 33 App. D. C. 445 . . . 247a 
 
 McGill V. Adams, 119 O. G. 1924 (1905) 256 
 
 McHarg v. Schmi<lt, 105 O. G. 263 (1903) 48 
 
 McHarg v. Schmidt, 106 O. G. 1780 (1903) 245 
 
 McKean v. Morse, 94 O. G. 1557 ; 1901 C. D. 33 223 
 
 McKcen v. Jerdone, 153 O. G. 272, 34 App. D. C. 163 164 
 
 McKnight v. Pohl, 105 O. G. 977, 22 App. D. C. 219 . .103, 185, 192 
 McKnight v. Pohl, 130 O. G. 2069 (1907) ; 30 App. D. C. 92 102 
 
 McKenzie v. Gillespie, 93 O. G. 2103 84 
 
 xviii
 
 Section 
 
 McMulkin V. Bollee, 126 0. G. 1356 (1906) 102 
 
 McNeil V. Stephenson, 192 0. G. 517 (1913) 128, 220 
 
 McNeal v. Macey, 106 O. G. 2287 (1903) 123 
 
 McQuan-ie v. Manson, 142 O. G. 288 (1909) 244 
 
 Mead v. Davis, 136 O. G. 2001 (1908) ; 31 App. D. C. 590 . 122 
 
 Meden v. Curtis, 117 O. G. 1795 (1905) 78 
 
 Mell V. Midgley, 136 0. G. 1534; 31 App. D. C. 534 247 
 
 Mercer, ex parte, 393 O. G. 1017 (1913) 13 
 
 Mergenthaler v. Scudder, 81 0. G. 1417, 11 App. D. C. 264. .101, 103 
 
 Meyer v. Sarfert, 96 0. G. 1037; 1901 C. D. 91 78, 92 
 
 Meyer v. Sarfert, 102 O. G. 1555 (1903) 157 
 
 Miehle v. Scott, 190 O. G. 1030, 40 App. D. C. 17 141, 144, 145 
 
 Miehle v. Bead, 96 0. G. 426, 18 App. D. C. 128 . .96, 115, 126, 242 
 Miel V. Young, 126 O. G. 2591 (1906) ; 29 App. D. C. 481 .. ^ 87 
 Miel V. Young, 128 O. G. 2532 (1907) ; 29 App. D. 0. 481 . . 25 
 
 Miles V. Todd, 112 O. G. 1479 37 
 
 Miller v. Kelley, 96 O. G. 1038 (1901) ; 18 App. D. C. 163 . 189 
 
 Miller v. Perham, ]21 O. G. 2667 (1906) 87 
 
 Miller v. Wallace, 131 0. G. 1689 (1903) 48 
 
 Miller v. Blackburn, 172 O. G. 549 (1911) 103, 164 
 
 Mills V. Torrence, 17 Gour. 67-6 (Oct., 1905) 142 
 
 Mills V. Torrence, 98 O. G. 416 (1902) 50 
 
 Milton V. Kiugsley, 75 O. G. 2193, 7 App. D. C. 531 164, 192 
 
 Miskolczy v. Glebsattel, 13 Gour. 19-6 (Apr., 1901) 257 
 
 Mixsell V. Lovejoy, 186 O. G. 294 (1912) S9 
 
 Molyueux v. Onderdonk, 191 0. G. 292 (1918) 154a 
 
 Monte V. Dunkley, 245 0. G. 278 25 
 
 Moody V. Colby, 198 O. G. 899, 41 App. D. C. 248 164 
 
 Moore v. Hewett, 115 O. G. 509 13, 62, 208 
 
 Moore v. Hewett, 136 O. G. 1535, 31 App. D. C. 577 156 
 
 Moore v. Curtis, 120 0. G. 324 (1905) 201 
 
 Moore v. Bradley, 180 0. G. 879 (1912) 88 
 
 Mortimer v. Thomas, 192 O. G. 215 (1913) 53, 201, 256 
 
 Mosher v. Tully, 99 O. G. 2968; 1902 C. D. 224 216, 218 
 
 Moss V. Blaisdell, 113 O. G. 1703 16S 
 
 Moss V. Blaisdell, 113 O. G. 2505 196 
 
 Mower v. Crisp, 83 O. G. 155 157 
 
 Mower v. Duell, Com 'r, 88 O. G. 191 157 
 
 Munro v. Alexander, 106 O. G. 1000 5, 92 
 
 Munster v. Ainsworth, 128 O. G. 2085 (1906) . 18, 195 
 
 Murphy v. Borland, 132 O. G. 231 66, 89 
 
 Murphy v. Cooper, 228 O. G. 1458, 45 App. D. C. 307 35 
 
 Myers v. Brown, 112 O. G. 2093 13, 78 
 
 six
 
 Section 
 
 Narman v. Krimelbein, 118 O. G. 2251 (1905) 78 
 
 National Ey. Materials Co., 129 O. G. 481 (1907) 14 
 
 Nanlty v. Cutler, 126 O. G. 389 (1907) 18, 214, 219 
 
 Nelson v. IT. S., 201 U. S. 92 197 
 
 Nelson v. Faueette, 143 O. G. 1348, 33 App. D. C. 217 121 
 
 Neill, ex parte, 82 O. G. 749, 11 App. D. C. 582 7 
 
 Nesbit V. Eiverside etc., 144 U. S. 610 232 
 
 Neth V. Ohmer, 123 0. G. 998, 27 App. D. C. 319 46, 238 
 
 Neth V. Ohmer, 116 0. G. 874 (1905) 47, 48 
 
 Neth V. Ohmer etc., 135 O. G. 662, 30 App. D. C. 478 ...... 164 
 
 Neuberth v. Lizotte, 141 O. G. 1165, 32 App. D. C. 329 29 
 
 Newcomb Motor Co. v. Moore, 133 O. G. 1680' (1908); 30 
 
 App. D. C. 464 234, 247 
 
 Newcomb v. Lemp, 110 O. G. 307 221 
 
 Newcomb v. Thompson, 122 O. G. 3012 (1906) 53, 242 
 
 New Orleans v. Citizen's Bank, 167 U. S. 371 232 
 
 Newell V. Clifford, 122 0. G. 730 (1905) 212 
 
 Newell V. Clifford, 125 0. G. 665 (1906) 216, 218 
 
 Newell V. Eose, 119 0. G. 337 (1905) 89 
 
 Newell V. Hubbard, 15 Gour. 82-3 (Dec, 1903) 58 
 
 Neidringhaus v. MeConnell, 121 O. G. 338 (1905) 168 
 
 Niedermeyer v. Walton, 98 O. G. 1707; 1902 C. D. 56 257 
 
 Noble V. Levine, 180 0. G. 602 (1912) 154a 
 
 Norling v. Hayes, 166 O. G. 1282 (1911), 37 App. D. C. 169 247 
 
 Norman v. Krimmelbein, 115 O. G. 249 60 
 
 Numan v. Ashley, 175 O. G. 1098 (1912) 255 
 
 Oakes v. Young, 152 O. G. 1225 121 
 
 O'Connor v. Vanderbilt, 102 O. G. 1782 (1903) 61, 62 
 
 O'Connel v. Schmidt, 118 O. G. 588 (1905) 113 
 
 O'Connell v. Schmidt, 122 O. G. 2065 (1906); 27 App. D. 
 
 C. 77 141, 249 
 
 Ocumpaugh v. Norton, 115 O. G. 1850, 25 App. D. C. 90 . .135, 156 
 Ohmer v. Neth, 118 O. G. 1686 (1905); 123 O. G. 998 
 
 (1906) ; 27 App. D. C. 319 39, 250 
 
 Oldham v. Peck, 99 O. G. 670 ; 1902 C. D. 148 66 
 
 Oliver V. Felbel, 100 O. G. 2384; 1902 C. D. 565, 20 App. D. 
 
 C. 255 88, 105, 124 
 
 Orcutt, In re, 141 O. G. 567 7 
 
 Orcutt V. McDonald, 118 O. G. 591 (1905) ; 123 O. G. 1287 
 
 (1906) ; 27 App. D. 0. 228 164, 250 
 
 Osborne v. Armstrong, 19 Gour. 3-8 (Jan., 1907) 102 
 
 Osborne v. Armstrong, 114 O. G. 2091 92,98 
 
 Osljorno v. Austin, 115 O. G. 1065 218
 
 Section 
 
 Otis Elevator Co. v. Tiitcrboroiigli Co., 222 Fed. 501 133 
 
 Owen V. Eicliardson, 111 O. G. 1037 (1904) 65, 6G 
 
 Papendell v. Bunnell, 131 O. G. 362 (1907) 66 
 
 Parker v. Lewis, 110 0. G. 305 50 
 
 Parker v. Lewis, 120 0. G. 323 (1905) 193 
 
 Parker v. Spoon, 14 Gour. 19-8 (Apr., 1902) 216 
 
 Parker v. Craft, 265 0. G. 309 247 
 
 Patee v. Cook, 16 Gour. 2-1 168 
 
 Patterson v. Heher, 192 O. G. 215 (1913) 81, 257 
 
 Paul V. Hess, 113 0. G. 847 26 
 
 Paul V. Hess, 115 O. G. 251, 24 App. D. C. 462 96, 141, 156 
 
 Paul V. Chapin, 187 O. G. 831 49 
 
 Paul V. Johnson, 109 O. G. 807, 23 App. D. C. 187 192 
 
 Paul V. Johnson, 109 0. G. 807, 23 App. D. C. 548 109, 111 
 
 Paul V. Johnson, 106 0. G. 2013 (1913) 119 
 
 Peckham v. Price, 118 O. G. 1934 (1905); 26 App. D. C. 
 
 556 164, 183 
 
 Perrault v. Pierce, 108 O. G. 2146 244 
 
 Perri v. Thoma, 188 O. G. 1053, 39 App. D. C. 460 179 
 
 Perkins v. Weeks, 188 O. G. 1052 (1913) ^ 89 
 
 Perrussel v. Wickmann, 99 O. G. 2970; 1902 C. D. 228 52 
 
 Peters v. Hopkins, 150 O. G. 1044, 34 App. D. C. 141 237 
 
 Phelps, ex parte, 176 O. G. 525 236 
 
 Phelps V. Wonnley, 118 0. G. 1069 (1905) 89 
 
 Phillips V. Sensenieh, 132 O. G. 677 (1907) 27 
 
 Phillips V. Sensenieh, 122 O. G. 1047 (1906) 78 
 
 Phillips V. Scott, 130 O. G. 1312 (1907) 66 
 
 Philadelphia etc. R. Co. v. Stimson, 14 Peters 448 101 
 
 Piermann v. Chisholm, 44 App. D. C. 460 157 
 
 Pittsburgh Brake Shoe Co., In re, 176 O. G. 750 (1912) ... 234 
 Podelsak v. Mclnnerney, 120 0. G. 2127, 26 App. D. C. 399 
 
 31, 87, 103, 163, 192, 246, 247 
 
 Poe V. Seharf, 130 O. G. 1309 (1907) 125 
 
 Pohle V. McKnight, 119 0. G. 2519 (1915) 156 
 
 Pool V. Dunn, 151 O. G. 450, 34 App. D. C. 132 141, 142 
 
 Pope V. Mims, 104 O. G. 2147 (1903) 50 
 
 Pope V. McKenzie, 176 O. G. 1072, 38 App. D. C. Ill 158 
 
 Potter V. Tone, 163 0. G. 729 (1911) 146 
 
 Potter V. Oehs, 95 O. G. 1049 ; 1901 C. D. 39 18, 195 
 
 Potter V. Mcintosh, 122 O. G. 1721 (1906) 254 
 
 Potter V. Mcintosh, 127 O. G. 1995, 28 App. D. C. 510 80 
 
 Potter V. Van Cleck, 95 O. G. 2484 ; 1901 C. D. 53 58 
 
 Pratt V. De Ferranti, 148 O. G. 569 35
 
 Section 
 
 Putman v. Wetmore, 181 O. G. 269, 39 App. D. C. 138 152 
 
 Pupin V. Hutin, 100 0. G. 931 ; 1902 C. D. 269 
 
 Pym V. Hadaway, 125 O. G. 1702 165 
 
 Quick y. ^klcGee, 107 O. G. 1376 21 
 
 Quist T. Ostrom, 106 O. G. 1501 154, 156 
 
 Quist V. Ostrom, 108 O. G. 2147, 23 App. D. C. 69 157 
 
 Eagena v. Harris, 150 0. G. 266 (1909) 72 
 
 Eanderson v. Hanna, 173 O. G. 586 (1911) 22 
 
 Eaulet V. Adams, 114 O. G. 1827 98 
 
 Earmond v. Kitzelman, 134 O. G. 2243 (1908) 84 
 
 Eead v. Scott, 14 Gour. 2-4 5, 66 
 
 Eeckmitzer v. Bernegan, 193 O. G. 512 (1913) 48 
 
 Eeed v. Concrete Machinery Co., 239 Fed. 869 88 
 
 Eeece v. Fenwick, 97 O. G. 188 (1901) 52 
 
 Eeece v. Fenwick, 99 O. G. 669 (1902) 60 
 
 Eeece v. Fen-nick, 14 Gour. 3-7 (Feb., 1902) 12, 61 
 
 E^ichenbach v. KeUey, 94 O. G. 1185; 1901 C. D. 282 156 
 
 Eeigger v. Beirel, 150 O. G. 826 (1909) 73 
 
 E«inhart v. Gibson, 185 O. G. 1383, 39 App. D. C. 358 160 
 
 Eeitzel v. Harmatta, 161 O. G. 1043 (1910) 89 
 
 Eeis V. Jebsen, 132 0. G. 845 (1907) ; 30 App. D. C. 199 . . 249 
 
 Eeynolds v. Bean, 100 O. G. 1763; 1902 C. D. 307 38 
 
 Eeynolds v. Bean, 101 O. G. 2821 ; 1902 C. D. 461 244 
 
 Eichards v. Kletzker, 98 O. G. 1709 ; 1902 C. D. 62 68 
 
 Eichards v. Meisner, 114 O. G. 1831 44, 247, 251 
 
 Eiddle, ex parte, 145 O. G. 1021 7 
 
 Eies V. Frick, 160 O. G. 1040 (1910) 18 
 
 Einchart v. Gibson, 185 O. G. 527 141 
 
 Eitter v. Krakau, 104 O. G. 1897 165 
 
 Eitter v. Krakau, 108 O. G. 1050 218 
 
 Eitter v. Krakau, 114 O. G. 1553, 24 App. D. C. 271 247 
 
 Eoberts v. Webster, 115 O. G. 2135 (1905) 22 
 
 Eoberts v. Bachelle, 101 O. G. 1831; 1902 C. D. 415 21S 
 
 Eobinson v. McCormick, 128 O. G. 3289, 29 App. D. C. 98 . . 138 
 
 Eobin V. Muller, 107 O. G. 2527 (1903) 21 
 
 Eobinson v. Mullcr, 110 O. G. 1429 124 
 
 Eobbins V. Titus, 111 O. G. 584 81, 257 
 
 Eobin.son v. Copeland, 102 O. G. 466 (1903) 93 
 
 Eobinson v. Copeland, 111 O. G. 579 114 
 
 Eobinson v. Copeland, 112 O. G. 501, 24 App. D. C. 68 37, 115 
 
 Eobinson v. Seelinger, 116 O. G. 1735 (1905) ; 25 App. D. C. 
 
 237 94 
 
 3uii
 
 Section 
 
 Robinson v. McCorniick, 128 0. G. 3289 (1907) 138, 164 
 
 Robinson v. Thresher, 18 Gour. 21-21 (Mar., 1906) 10:5 
 
 Robinson v. Thresher, 123 O. G. 2975, 28 App. D. C. 22 139 
 
 Robinson v. Thresher, 123 O. G. 2627 149 
 
 Robinson v. Townsend, 106 0. G. 997 (1903) .. ..213,217,219,227 
 
 Robinson v. Townsend, 107 O. G. 1376 216 
 
 Rochstroh v. Warnock, 132 O. G. 234 244 
 
 Roe V. Hanson, 99 O. G. 2.550 (1902) ; 19 App. D. C. 559 . . 142 
 
 Rolfe V. Kaisling, 143 O. G. 562, 32 App. D. C. 582 122, 181 
 
 Rolfe V. Hoflfnian, 121 O. G. 1350 (1905) 141, 142 
 
 Rolfe V. Leeper, 159 O. G. 991 (1910) 217 
 
 Rolfe V. Taylor, 111 O. G. 1938 195 
 
 Root V. Third Ave. R. Co., 146 U. S. 221 166 
 
 Rose V. Clifford, 135 O. G. 1361 (1908) 122 
 
 Roulet V. Adams, 114 O. G. 1827 8, 14 
 
 Rountree v. Sloan, 189 O. G. 1281 (1913) 66 
 
 Rountree v. Sloan, 45 App. D. C. 207 185 
 
 Rowe V. Hanson, 99 O. G. 2550; 1902 C. D. 546 121 
 
 Rowe V. Brinkmann, 133 O. G. 515 (1908) 89 
 
 Rowe V. Brinkmann, 172 O. G^ 1090 121 
 
 Royce v. Kempshall, 117 0. G. 2090 196 
 
 Royee v. Kempshall, 119 O. G. 338 (1905) 191 
 
 Royce v. Kempshall, 125 O. G. 1347 (1906) 127, 162, 181 
 
 Ruete V. Elwell, 15 App. D. C. 21 29 
 
 Rusby V. Cross, 204 O. G. 321, 42 App. D. C. 341 232 
 
 Ruthven v. Christeusen, 138 O. G. 257 (1908) 193a 
 
 Ryder v. White, 145 O. G. 763 (1919) 48 
 
 Sachs V. Haskins, 21 Gour. 17-1 (March, 1909) 141 
 
 Samboni, 20 Gour. 22-14 13 
 
 Sarfert v. Meyer, 98 0. G. 793 ; 1902 C. D. 30 168 
 
 Sarfert v. Meyer, 109 0. G. 1885 58, 229 
 
 Sauer v. Groebli, 239 O. G. 653 ' 121 
 
 Saunders v. Miller, 146 O. G. 505, 33 App. D. C. 456 182 
 
 Schneider v. Driggs, 162 0. G. 1000, 36 App. D. C. 116 . ..153, 181 
 
 Schmidt v. Clark, 138 O. G. 768, 32 App. D. C. 290 151, ISO 
 
 Schroeder v. Wageley, 118 O. G. 268 (1905) 164 
 
 Schrum v. Baumgarten, 104 O. G. 577 168 
 
 Schuler v. Barnes, 140 0. G. 509 (1909) 89 
 
 Schupphaus v. Stevens, 95 O. G. 1452, 17 App. D. C. 548 . . 247 
 Scott V. Scott, 96 O. G. 1650 (1901); 18 App. D. C. 
 
 - 420 18.5, 190, 191 
 
 Scott V. Laas, 118 O. G. 1367 (1905) HO 
 
 Scott V. Southgate, 121 O. G. 689 98 
 
 xxiii
 
 Section 
 
 Scott V. Emmett, 119 O. G. 2233 (1905) 57 
 
 Seacomb v. Burke, 182 O. G. 973 (1912) .^. .87, 256 
 
 Seaniau v. Brooks, 100 O. G. 685 ; 1902 C. D. 267 48 
 
 Seeberger v. Kussell, 107 O. G. 2528 (1903) 48 
 
 Seeberger v. Eussell, 121 O. G. 2328, 26 App. D. C. 244 . . .150, 154 
 
 Seeberger v. Dodge, 113 O. G. 1415 107, 119 
 
 Seeberger v. Dodge, 114 O. G. 2382, 24 App. D. C. 476 
 
 115, 117, 119, 247 
 
 Seller v. Goldberg, 116 O. G. 595 132 
 
 Sendelbaeh v. Gillette, 109 O. G. 276, 22 App. D. C. 168 97,^02, 124 
 
 Shaffer v. Dolan, 100 O. G. 3012 ; 1902 C. D. 344 218 
 
 Sharer v. McHenry, 98 0. G. 585 ; 1902 C. D. 503 97 
 
 Shaw etc. v. Quaker Citj Shirt Co., 157 O. G. 1000 (1910) . 194a 
 
 Sherwood v. Drewsen, 124 O. G. 1205 (1906) 184 
 
 Sherwood v. Drewsen, 130 O. G. 657, 29 App. D. C. 161 192 
 
 Shoemaker v. Sintz, 123 O. G. 2947 (1906) 37 
 
 Shreeve v. Grissinger, 202 O. G. 951 (1914) 126 
 
 Shrum v. Banningarten, 104 O. G. 577 (1903) 89 
 
 Shuman v. Beall, 123 O. G. 1664 138, 163 
 
 Silver v. Eustis, 14 Gour. 4-8 (Jan., 1902) 49 
 
 Silverman v. Hendriekson, 99 O. G. 445 ; 1902 C. D. 123 . . 146, 180 
 
 Slaughter v. Halle, 102 O. G. 469 (1903) 186 
 
 Slick V. Hansen, 181 O. G. 1076, 39 App. D. C. 131 120 
 
 Slingluff V. Sweet, 230 O. G. 659 (1916) ; 45 App. D. C. 302 247 
 
 Smith V. Foley, 136 0. G. 847 (1907) 103, 154a 
 
 Smith V. Brooks, 112 O. G. 953, 24 App. D. C. 75 124, 134, 196 
 
 Smith V. Griggs Mtfg. Co., 123 U. S. 264 167 
 
 Smith V. Ingram, 131 O. G. 2420 (1907) 59 
 
 Smith V. Kilgren, 215 O. G. 324, 43 App. D. C. 193 183 
 
 Smith V. Slocum, 123 O. G. 1990 (1906) 83 
 
 Smith V. Hill, 177 O. G. 523 (1912) 154a 
 
 Snyder v. Woodward, 173 O. G. 863 (1911) 168 
 
 Sobey v. Holsdilaw, 126 O. G. 3041, 28 App. D. C. 65 
 
 29, 80, 85, 86, 167, 247, 254 
 
 Soley V. Hebbard, 5 App. D. C. 99, 70 O. G. 921 164 
 
 Somervillc v. Larmuth, 190 O. G. 1028 (1913) 48 
 
 Sorrell v. Donnelly, 129 (). G. 2501 (1907) 254 
 
 Sovereign v. Lillie, 185 O. G. 830 (1912) 79 
 
 Spaulding v. Norden, 112 O. G. 2091, 114 O. G. 1828, 24 
 
 App. D. C. 286 134 
 
 Si)oon, 97 O. G. 176, 1901 C. D. 188 10 
 
 Stanbon v. Howe, 153 O. G. 823, 34 App. D. C. 413 154 
 
 Stapleton v. Kinney, 96 O. G. 1432 (1901); 18 App. D. 
 
 C. 394 112
 
 Section 
 
 Steele v. Meyers, 205 O. G. 1021 (1914) 14, 911 
 
 Steinberger v. Hewlett, 183 O. G. 1308 (1912) 181 
 
 Steinmetz v. Hewitt, 107 0. G. 1972 (1903) 191 
 
 Steiumetz v. Thomas, 137 O. G. 479 (1908) ; 31 App. D. C. 
 
 574 l'J'5 
 
 Stevens v. Seher, 81 O. G. 1932, 11 App. D. C. 245 192 
 
 Stewart v. Thomas, 202 O. G. 1262, 42 App. D. C. 222 144, 157 
 
 Stoetzel V. Fordyee, 21 Gour. 2-4 (Jan., 1909) 180 
 
 Stonaeh v. Shaw, 192 O. G. 989 (1913) 256 
 
 Strauble v. Young, 119 O. G. 338 (1905) 198 
 
 Streat v. Freckelton, 87 O. G. 695 30 
 
 Stroud V. Miller, 101 O. G. 2075; 1902 C. D. 423 195 
 
 Struble v. Young, 139 O. G. 729 (1909) 216 
 
 Struble v. Young, 121 O. G. 339 (1906) 89 
 
 Sugden v. Laganke, 130 O. G. 1484 (1907) 89 
 
 Summers v. Hart, 98 O. G. 2585; 1902 C. D. 104 206, 207 
 
 Sutton V. McDonald, 98 0. G. 1418 ; 1902 C. D. 47 218 
 
 Sutton, Steele & Steele, 121 O. G. 1012 (1906) 52,230,242a 
 
 Sutton V. Steele, 107 O. G. 541 13 
 
 Swaren v. Sandage, 17 Gour. 34-1 (Apr., 1905) 14, 22;3 
 
 Sweihart v. Mauldin, 99 O. G. 665; 1902 C. D. 137 133 
 
 Swihart v. Mauldin, 99 0. G. 2332, 19 App. D. C. 570 247, 249 
 
 Swinglehurst v. Ballard, 265 O. G. 459, 258 Fed. 973 159, 193 
 
 Sydemau v. Thoma, 141 0. G. 866, 32 App. D. C. 362 154 
 
 Talbot V. Mouell, 99 O. G. 2965; 1902 C. D. 216 194, 198 
 
 Talbot V. Alonell, 109 O. G. 280, 23 App. D. C. 108 97 
 
 Taylor v. Gilman, 158 O. G. 883 (1910) 152 
 
 Taylor v. Westinghouse, 119 O. G. 1257 (1905) 114, 115 
 
 Temple v. Goodrum, 176 O. G. 526 233 
 
 Templin v. Sergeant, 119 O. G. 961 (1905) 78 
 
 Thibodeau v. Hildreth, 117 0. G. 601, 25 App. D. C. 320 ... 164 
 
 Thieme v. Bowen, 21 Gour. 70-13 (Aug., 1909) 22, 256 
 
 Thomas v. Weintraub, 175 0. G. 1097 (1911) 158 
 
 Thomas v. Weintraub, 177 O. G. 772, 38 App. D. C. 281 . . . 46 
 
 Thomas v. Trissell, 97 O. G. 1598; 1901 C. D. 200 48, 50 
 
 Thomas v. Trissell, 107 O. G. 265 (1903) 133 
 
 Thomas v. Stewart, 202 O. G. 1259 (1913) ; 42 App. D. C. 
 
 222 137 
 
 Thomas v. Weston, 99 O. G. 864; 1902 C. D. 521 154 
 
 Thomas v. Weston, 94 O. G. 985, 19 App. D. C. 373 157 
 
 Thomas & Son Co. v. Electric Porcelain Mig. Co., 97 O. G. 
 
 1838, 111 Fed. 923 242 
 
 Thompson, 98 O. G. 227 ; 1902 C. D. 6 13 
 
 XXV
 
 Sectiou 
 
 Thompson v. Storrie, 245 O. G. 845, 46 App. D. C. 324 109 
 
 Thullen v. Townsend, 130 O. G. 1312 (1907) 66 
 
 Thuken v. Young, 118 O. G. 2251 (1905) 66 
 
 Toledo Scale Co. v. Dunn, 214 0. G. 1321, 43 App. D. C. 377 92 
 
 Townsend v. Thullen, 137 O. G. 1710 (1908) 235 
 
 Townsend v. Thullen, 21 Gour. 37-12 (May, 1909) 216 
 
 Townsend v. Ehret, 137 O. G. 1484 (1908) 15, 89 
 
 Townsend v. Ehret, 137 O. G. 1485 (1908) 235 
 
 Townsend v. Copeland, 100 O. G. 683 (1902) 216 
 
 Townsend v. Copeland, 126 O. G. 1355 (1907) '. . 52, 53 
 
 Townsend v. Copeland, 124 0. G. 623 (1906) 62 
 
 Townsend v. Corey, 119 0. G. 2237 (1905) 203 
 
 Tower v. Yost, 19 Gour. 66-6 (July, 1907) 114 
 
 Tournier, 108 O. G. 798 243 
 
 Tracey v. Leslie, 14 App. D. C. 126 29 
 
 Trissell v. Thomas, 109 O. G. 809, 23 App. D. C. 219 133 
 
 Tripp V. Wolff, 103 O. G. 2171 (1903) 87 
 
 Tripp V. Wolff, 108 O. G. 563 18 
 
 Tripler v. Linde, 101 0. G. 2288; 1902 C. D. 444 95 
 
 Tripler v. Linde, 102 O. G. 1297 (1903) 188 
 
 Truax v. Robinson, 13 Gour. 82-2 (Dec, 1901 ) 78 
 
 Trufant v. Brindle, 101 O. G. 1608; 1902 C. D. 397 100, 192 
 
 Turnbull v. Curtis, 120 O. G. 2442 (1905) 
 
 104, 107, 1 12, 117, 180, 182 
 
 Turnbull v. Curtis, 123 O. G. 2312 (1906) 116 
 
 Turner v. Benzinger, 102 O. G. 1552 (1903) 244 
 
 United Shoe Machinery Co. v. Greeneman, 153 Fed. 283 . . 153, 154 
 
 U. S. Wood Preserving Co., 153 O. G. 271 (1910) 168 
 
 United States v. Ewing, Com 'r, 203 O. G. 603, 42 App. D. C. 
 
 176 167 
 
 Universal Motor Truck Co. v. Universal Motor Car Co., 197 
 
 O. G. 535, 41 App. D. C. 261 247 
 
 Union Distilling Co. v. Schneider, 129 0. G. 2503, 29 App. 
 
 D. C. 1 247 
 
 Vanderveld v. Smith, 159 O. G. 490 (1910) 66 
 
 Van Ausdel, ex parte, 91 O. G. 1617 84 
 
 Vielc V. Cummings, 19 Gour. 2-6 25 
 
 Von Keller v. Ilaydcn, 173 O. G. 285 (1911) 191 
 
 Voiglitmann v. Perkinson, 138 Fed. 56 101 
 
 Votcy V. Wuest, 111 O. G. 1627 6 
 
 Vrcohind v. Fossciiden, 117 (). G. 2633 (1905); 119 O. G. 
 
 1925 ^ 66
 
 Section 
 
 Walker v. Lederer, 179 0. G. 851 122 
 
 Warner v. Smith, 94 O. G. 311, 13 App. D. C. Ill 124 
 
 WatFon V. Tlioinas, 108 O. G. 1590, 23 App. D. C. 65 119 
 
 Webber v. Wood, 184 O. G. 553 218 
 
 Welch V. Aufiero, 219 0. G. 930 (1915) 89 
 
 Welshbach v. Cohn, 181 Fed. 122 156_ 
 
 Wells V. Packer, 90 O. G. 1947 (1900) 206 
 
 Wende v. Horine, 118 O. G. 1070 (1905) 70 
 
 Wende v. Horine, 130 O. G. 1311 (1907) 222 
 
 Wcintraub v. Hewitt, 154 O. G. 254, 34 App. D. C. 487 247 
 
 Weiseuthanner v. Dodge Metallic Cap Co., 156 Fed. 365 ... 242a 
 
 Weiseiithanner v. Goldstein, 111 O. G. 810 (1904) 82 
 
 Weis V. Mack, 185 O. G. 830 (1912) 154a 
 
 Werk V. Parker, 264 O. G. 159, 249 U. S. 130 243 
 
 Wert V. Borst, 122 O. G. 2062 (1906) 168, 254 
 
 Werener, 139 O. G. 197 (1909) 13 
 
 Western Electric Co. v. Martin, 182 O. G. 723, 39 App. D. 
 
 C. 147 29 
 
 Western Electric Co. v. Sperry Electric, 65 O. G. 597 87 
 
 Westinghoiise v. Hein, 159 Fed. 936 3, 236 
 
 Wheeler v. Palmros, 133 O. G. 230 (1908) 52 
 
 Wliipple V. Sharp, 14 Gonr. 66-2 (Sept., 1902) 257 
 
 Wlaipple V. Sharp, 98 O. G. 226 ; 1902 C. D. 5 45 
 
 Whipple V. Sharp, 112 0. G. 1749 156 
 
 White V. Powell, 160 O. G. 776 (1910) 221 
 
 White V. Hewitt, 115 O. G. 1847 (1905) 21 
 
 T^Tiitlock V. Scott, 99 O. G. 1385 (1902) 206 
 
 Whitman v. King, 160 O. G. 260, 35 App. D. C. 449 181 
 
 Whitney v. Brewer, 177 O. G. 1296 157 
 
 Whitall V. Gillespie, 171 O. G. 744 (1911) 50 
 
 Wickers v. Weinriim, 129 O. G. 2501 (1907) 256 
 
 Wickers v. Weinnurni, 117 O. G. 1797 (1905) 78 
 
 Wickers v. McKee, 129 O. G. 869, 29 App. D. C. 4 141, 192 
 
 Williams v. Gibbon, 20 Gour. 84-4 (Nov., 1908) 57 
 
 Williams v. Liberman, 100 O. G. 1331; 1902 C. D. 295 49 
 
 Williams v. Foyer, 142 O. G. 1114 (1909) 37 
 
 Williams v. Webster, 148 O. G. 280 (1909) 244 
 
 Winslow V. Austin, 86 0. G. 2171 181 
 
 Winslow V. Austin, 14 App. D. C. 137 162 
 
 Wintroath v. Chapman, 248 O. G. 1004, 47 App. D. C. 428 . . 192 
 
 Wilson V. Ellis, 211 O. G. 286, 42 App. D. C. 552 30 
 
 Wilson V. Donelly, 21 App. D. C. 81 115 
 
 Winter v. Slick, 107 O. G. 1659 (1903) 124 
 
 Wood V. Beckman, 89 O. G. 2459, 15 App. D. C. 484 123 
 
 xxvii
 
 Section 
 
 Woods V. Poor, 126 O. G. 391 (1906) 116,161 
 
 Woods V. Poor, 130 O. G. 1313 121 
 
 Wood V. Pfister, 154 O. G. 837 (1910) 80 
 
 Woodbridge v. Winship, 21 Gour. 19-7 (Feb., 1909) 193 
 
 Woodbridge v. Winship, 145 O. G. 1250, 33 App. D. C. 490 . 249 
 
 Woodbridge v. Conrad, 165 O. G. 241 (1911) 87 
 
 Woodward v. Kennedy, 104 O. G. 1393 (1903) 36, 50 
 
 Woodward v. Newton, 86 O. G. 490 65, 66 
 
 Wright V. Lorenz, 101 O. G. 664 157 
 
 Wyman v. Donnelly, 104 O. G. 310 (1903); 21 App. D: C. 
 
 81 115, 140, 142, 148 
 
 Yates V. Huson, 74 O. G. 1732, 8 App. D. C. 93 192 
 
 Yoder v. Mills, 34 O. G. 1048 164 
 
 Young V. Struble, 153 O. G. 1223 126 
 
 Young V. Eiek, 113 O. G. 547 67, 206
 
 INTERFERENCES. 
 
 1. Orig-in of Interferences. An interference is a statu- 
 tory proceeding, arising solely under the authority of 
 Sec. 4904, and means a disijute on the question of prior- 
 ity of invention. It is a contest between rival applicants 
 for a patent, or a contest between one or more applicants 
 for a patent, and the owner of one or more outstanding 
 letters patent. Western Electric Mfg. Co. v. Chicago 
 Electric Co., 14 Fed; G91. 
 
 2. Interference Statute. See. 4904, R. S. U. S. 
 ' ' Whenever an application is made for a patent which, in 
 the opinion of the Commissioner, would interfere with 
 any pending application, or with any unexpired patent, 
 he shall give notice thereof to the applicants or appli- 
 cant and patentee, as the case ma}^ be, and shall direct 
 the Primary Examiner to proceed to determine the ques- 
 tion of priority of invention. And the Commissioner 
 may issue a patent to the party who is adjudged the 
 prior inventor, unless the adverse party appeals from 
 the decision of the Primary Examiner, or the Board of 
 Examiners-in-Chief, as the case may be, within such 
 time, not less than twenty days, as the Commissioner 
 shall prescribe." 
 
 3. The Declaration of Interference. A brief but gen- 
 eral summary of the Patent Office proceedings in Inter- 
 ference cases will be found in WestingJwuse v. Hein, 159 
 Fed. 936-939, in which Judge Sanborn said : "When an 
 application for a patent is filed, an officer known as a 
 Primary Examiner decides whether the application on 
 its face sjiows patentable invention, Rules 95, 96. No 
 appeal lies from his decision. Rule 124. Patentabilit.y 
 being affirmed, it may occur that the application dis- 
 
 ■< 1
 
 closes the same invention as another application on file 
 or as a patent already issued. If so, interference exists, 
 and the patent officers are then required, according tb 
 the practice and rules of the office, to set on foot an inter- 
 ference proceeding, in order to determine which of the 
 hostile claimants first discovered the invention. This 
 proceeding is carried on before the Examiner of Inter- 
 ferences, and is a proceeding inter partes and results 
 either in a decision awarding priority to one, ahd deny- 
 ing it to the other, or for some particular reason denying 
 priority to either. 
 
 "This question of priorit}'^ of invention, meaning pri- 
 ority in time, has become the important and almost sole 
 question for consideration in an interference proceeding. 
 Other questions may arise in the Patent Office, such as 
 whether one or both parties has the right to make the 
 claim, whether he has really disclosed in his drawings the 
 invention claimed, whether he is the real inventor, wheth- 
 er he is guilty of laches or estopped to claim j)riority, 
 whether his devise is operative, whether both claim the 
 same invention so as to actually show interference. By 
 the course of practice in the Patent Office, however, an 
 interference proceedii^g is confined to the question of 
 priority in .time, other questions being raised by mo- 
 tion before the Primary Examiner. The Examiner of 
 Interferences may also call the attention of the Commis- 
 sioner to facts showing that no interference exists, or 
 that the declaration of interference was irregular, and 
 the Commissioner may then suspend the interference 
 proceedings and remand the case to the Primary Ex- 
 aminer for consideration of the question so raised. Rule 
 126. It may also appear in the interference proceedings 
 that while ])()th applications disclose patentability and 
 interference, and one is clearly prior in time, yet that 
 neither party is entitled to a judgment of priority 
 against the other, because it would operate inequitably 
 against the other. This happened in Bechman v. Wood, 
 
 2
 
 15 App. D. C. 484, where Wood first discovered a broad 
 invention, but made only a narrow claim, and the junior 
 applicant, Bechman, claimed a specific device in the 
 same field, and also claimed the broad invention. Wood 
 was adjudged to be not entitled to the broad claim be- 
 cause this would defeat Bechman 's special apparatus, 
 and Bechman was not entitled to it because he was not 
 the first inventor, but in the ordinary case an award of 
 priority follows as a matter of course. 
 
 "While the question whether the interference was 
 properly declared, or any interference in facts exists, can 
 not be directlj^ raised in the interference proceeding, it 
 may by a motion to dissolve the interference. It is the 
 practice to present to the Examiner of Interferences a 
 motion to transmit the motion to dissolve to the Primary 
 Examiner, together with the motion to dissolve. If the 
 latter motion is in proper form he transmits it to the 
 Primary Examiner, and he may at the same time pro- 
 ceed with the interference, Rule 123. When the Primary 
 Examiner has decided the motion, an appeal may be 
 taken to the Commissioner but no further appeal is per- 
 mitted, the motion being regarded as an interlocutory 
 proceeding. U. S. ex rel. Lowry v. Allen, 203 U. S. 476, 
 27 Sup. Ct. 141, 51 L. Ed. 281. If the motion to dissolve 
 is denied, the Examiner of Interferences, in the usual 
 case, renders judgment awarding priority of invention 
 to one of the contestants and also fixes the limit of ap- 
 peal from such judgment. If no appeal is taken letters 
 patent are issued to the successful party, and the Pri- 
 mary Examiner notifies the other party that his claims 
 stand finally rejected. Sec. 4904, Rev. St. U. S. Comp. 
 St. 1901, p. 3389. Rule 132. If the defeated party de- 
 sires to appeal he may do so within the time limited. 
 The appeal first goes to the Examiners-in-Chief (Sec. 
 4909, U. S. Comp. St. 1901, p. 3390), then to the Com- 
 missioner in person (Sec. 4910, U. S. Comp. St. 1901, p. 
 3391), and from his decision to the Court of Appeals of 
 
 3
 
 the District of Columbia (Act Feb. 9, 1893, c. 74, 27 Stat. 
 476, Sec. 9, U. S. Comp. Statutes, 1901, p. 3391)." 
 
 ( Note : — Since the above decision the rules of practice 
 have been amended as to jurisdiction of officers who pass 
 upon motions to dissolve.) 
 
 4. Declaration of Interference Is Within the Discre- 
 tion of the Commissioner. Sec. 4904 commits to the judg- 
 ment of the Commissioner the effect of an application 
 upon a pending one as to whether it interferes with such 
 pending application; something more, therefore than 
 the effect of two applications, something more than the 
 mere assertion of a claim. The assertion must be, in the 
 opinion of the Commissioner, an interference with an- 
 other, and it is this other that is first in regard, not to be 
 questioned except at the instance of the Commissioner by 
 an exercise of judgment upon the circumstances. Ew- 
 ing, Commissioner v. U. S. ex rel. Fowler Car Co., 238 0. 
 G. 983, 244 U. S. 1. 
 
 5. Earlier Application Excluded in Case of Doubt. 
 When there is doubt as to whether the earlier applica- 
 tion discloses the invention in a later continuous applica- 
 tion involved in interference, the earlier application 
 will be excluded. Munro v. Alexander, 106 0. G. 1000. 
 
 Mechanical Equivalent. x\n interference should be 
 declared between a patent and an application where a 
 claim of the application is the same as the claim of the 
 patent with the exception of one element which is a me- 
 chanical equivalent of a like element of the patented 
 claim. Read v. Scott, 14 Gour. 2-4. 
 
 6. What Should Be Made Counts — Only Claims Pat- 
 entably Different. Where tlie claims are not patentably 
 distinct, an issue consisting of a single count will be suf- 
 ficient to defermine the question of priority, and the 
 parties sliould be notified that if prioritj^ of invention is 
 awarded against them their claims which do not contain 
 patentable subject matter over the issue, will be rejected. 
 Votcy V. Wuest v. Doman, 111 0. G. 1627. 
 
 4
 
 7. No Interference When. A party is not entitled to 
 an interference if his claim when broadh^ construed is 
 unpatentable, since a claim must be patentable before it 
 can be put into interference. In ex parte Riddle, 145 0. 
 G. 1021, Riddle asked to be put into interference with 
 certain claims of patentees Dement and Hull and insist- 
 ed that the claims were patentable because patent had 
 been granted thereon, but it was held that when read 
 upon the Riddle structure it could not be allowed because 
 he would have no right to make the claim and in this 
 respect the case was distinguished from that of In re Or- 
 cutt, 141 0. G. 567. 
 
 No interference will be declared when it is apparent 
 from the outset that no patent can issue on an applica- 
 tion, since a party is not entitled to an interference ex- 
 cept as to an allowable application. Crane, 106 0. G. 
 999. In an early (1898) and important decision it was 
 held that an interference should not be declared where 
 one of the applications contained no allowed claims. 
 Hammond v. Hart, 83 0. G. 743. 
 
 No Interference on Rejected Claims. No interference 
 will be declared on claims which have been rejected. 
 Holland, 99 0. G. 2548; 1902 C. D. 199; Duker, 115 
 0. G. 803 ; In re Neill, 82 0. G. 749, 11 App. D. C. 582. 
 
 8. Prior Application — Reference to in Declaration. If 
 the apj)lication is clearly a division of, or a continuation 
 of an earlier application, the Primary Examiner should 
 so state. If there is doubt upon this question, no refer- 
 ence should be made to an earlier application, the matter 
 being left for determination upon motion to shift the 
 burden of proof. (See Burden of Proof.) Jackson v. 
 Patten, 150 0. G. 265 ; Roulct & Nicholson v. Adams, 
 114 0. G. 1827. 
 
 9. Preliminaries to Declaration of Interference. Be- 
 fore a declaration of interference all preliminaries must 
 be settled by the Primary Examiner, and the issue must 
 be clearly defined; the invention which is to form the 
 
 5
 
 subject of the controversy must be decided to be patent- 
 able, and the claims of the respective parties must be put 
 in such condition that they will not require alteration 
 after the interference shall have been finally decided, 
 unless the testimony adduced upon the trial shall neces- 
 sitate or justify such change. Rule 9.5. 
 
 10. One of the Applications Should Be Ready for Al- 
 lowance. Before an interference between two pending 
 applications is declared, one of the pending applications 
 should be placed in condition for allowance, ^poon, 97 
 0. G. 176, 1901, C. D. 188. 
 
 11. Claims Not Forming a Part of the Controversy 
 Need Not Be Considered. AVhen one of the interfering 
 applications is in condition for allowance, if there be any 
 claims in the other application which are not to form 
 part of the controversy, or never could form part of a 
 controversy, it is not necessary that they should be con- 
 sidered before declaring the interference. Spoon, 97 0. 
 G. 176, 1901 C. D. 188. 
 
 12. Effect of Putting a Claim in Interference. Put- 
 ting a claim in interference is an allowance of the claim. 
 Luger v. Browning, 100 0. G. 231, 1902 C. D. 230; Beece 
 V. Fenwick, 14 Gour. 3-7. In the foregoing cases there 
 had been no allowance of the claims of one of the parties 
 prior to the declaration of interference. If any question 
 is raised on such state of the record it should be by mo- 
 tion to dissolve upon the ground of irregularity in de- 
 claring the interference. In an earlier case (1898) of 
 Hammond v. Hart, 83 0. G. 743, it was held that where 
 one of the applications contained no allowed claims the 
 interference should not liave been declared. 
 
 13. Claim Suggested by the Examiner. Rule 96. The 
 Examiner has tlie right and it is his duty under Rule 96 
 to suggest claims. The purpose of the practice of sug- 
 gesting claims is not for the purpose of avoiding inter- 
 ferences between applications because of some differ- 
 ences in the form of claims, but merely by suggestion to 
 
 6
 
 bring the parties together upon an issue which shall be 
 as nearly as possible the same as the claim of the parties 
 so as to reduce to the minimum the chances for motions 
 and controversies during the progress of the interference 
 based upon differences between the claims. Thompson, 
 98 0. G. 227, 1902 C. D. 6 ; Myers v. Broivn, 112 0. G. 
 2093. 
 
 Rule 96 provides the conditions under which the Ex- 
 aminer may suggest claims to applicants and when claims 
 are suggested thereunder the applicant should make the 
 claims in the precise words suggested if they are appli- 
 cable to his structure, but at all events should vary there- 
 from as slightly as possible. BraucJit v. Murdoch, 13 
 Gour. 66, If the applicant fails to make the claims sug- 
 gested within the time specified, such failure or refusal 
 shall be taken, without further action, as a disclaimer of 
 the invention covered by the claim, (Rule 96), Where 
 one party clainLs only a part of a combination claimed by 
 another, such combination claim should not be suggested, 
 Mercer, 193 0. G. 1017 (1913) ; Handenschild v. Huijck, 
 164 0, G, 515 (1911), The Examiner may suggest the 
 claims of a patent and unless such claims are made by the 
 applicant, his claims may be rejected and the correctness 
 of the ruling may then be questioned on appeal. Card 
 V. Card, 112 0. G. 499 (1904). Avoiding the languages 
 of patented claims to avoid an interference Avill not be 
 permitted where the inventions are the same. Card v. 
 Card, supra. The Examiner should not suggest claims to 
 other api^licants who disclose the process but claim only 
 the apparatus for carrj'ing out the process, Werener, 
 139 0. G, 197 (1909). A party may not argue the pat- 
 entability of suggested claims before the interference is 
 declared. Sutton v. Steele, 107 0. G. 541. A party to 
 whom claims are suggested can either make them, refuse 
 to make them, or make them under protest, after which 
 he may make a motion to dissolve, but if he refuses to 
 make them the Commissioner will not review the ques- 
 
 7
 
 tion under his supervisory authority. Samhoni, 20 Gour. 
 22-14; Eichelherger & Hibner v. Dillon, 129 0. G. 3161. 
 Where an applicant is entitled to an interference with a 
 party who is already involved in a different interference 
 on different subject matter, his application should not be 
 held until final termination of the first interference, but 
 the Examiner should request jurisdiction of the applica- 
 tion involved in the first interference for the purpose of 
 declaring a new interference. Brakey, 156 0. G. 797 
 (1910) ; Moore v. Hewitt v. Potter, 115 0. G. 509 (1905). 
 Since under Rule 96 the Examiner may fix the time with- 
 in which a party shall make suggested claims, if the ap- 
 plicant is unable to make them within the time specified, 
 he may, upon proper showing, have the time extended. 
 Hellmund, 141 0. G. 565 (1909). 
 
 PARTIES TO INTERFERENCES. 
 
 14. Arrang-ement of Parties. It is the duty of the Ex- 
 aminer under Rule 97 to arrange the parties to an inter- 
 ference in the inverse chronological order in which they 
 filed the applications directly involved in the interfer- 
 ence. Eoulet d- Nicholson v. Adams, 114 0. G. 1827 
 (1905) ; Jackson v. Patten, 150 0. G. 265 (1910) ; Steel 
 & Steel V. Meyers, 205 0. G. 1021 (1914). 
 
 Who Are Proper Parties. Only those who can make 
 claim to all the counts should be made parties, and if 
 there is another party who can make some of the counts, 
 but not all of them, a new interference should be declared 
 between his application or patent and the other appli- 
 cations containing like claims. Dotv v. Benson, 107 0. 
 G. 1378 (1903). An assignee may prosecute an interfer- 
 ence where the assignor refuses to prosecute the same. 
 SiK'li right of an assignee may be determined upon mo- 
 tion. Adams, 119 O. G. 650 (1905) ; Lottridge v. Eus- 
 tice, 121 0. G. 689 (1906). An exclusive licensee will 
 not be permitted to intervene so long as the licensor is in 
 good fiiith |)roseeutiiig the same. The National Railways
 
 Materials Co., 129 0. G. 481 (1907). Judgment may be 
 rendered against such parties as fail to overcome, in their 
 preliminary statements, the prima facie ease made by the 
 party first filing. Stvaren v. Sandage, etc., 17 Gour. 
 34-1 (Apr., 1905). 
 
 15. New Parties may be added to an interference, but 
 that does not extend the time of the original parties for 
 making a motion to dissolve to 30 days from the date such 
 new party is added. Townsend v. Ehret etc., 137 0. G. 
 1484 (1908). It is too late to add new parties after 
 decision on priority has been rendered by the Examiners 
 in Chief and the Commissioner, Corey & BaJcer v. Trout, 
 99 0. G. 2547 ; 1902 C. D. 195. One who does not claim 
 all the counts can not be added as a new party, but where 
 it appears that an applicant can make part of the counts 
 the Examiner should request jurisdiction for the purpose 
 of declaring a new interference with the parties who 
 make the same counts. Dow v. Benson, 107 0. G. 1378 
 (1903). Where it is found on motion to dissolve that 
 one of the parties has no right to make the claims, the 
 interference should be dissolved as to him and continued 
 as to the other parties. Maxwell v. Byron v. Henry, 98 
 0. G. 1968; 1902 C. D. 67. 
 
 16. A Sole Applicant May Be Placed in Interference 
 With Himself and Another as Joint Applicants. Gilbert v. 
 Gilbert (& Lindley, 160 0. G. 775 (1910). A sole appli- 
 cant can not claim the benefit of an earlier application 
 filed by himself and another. Haskell v. Mirier v. Ball, 
 109 0. G. 2710. A joint application can not be changed 
 to a sole application by motion. Sole inventors and joint 
 inventors are distinct entities. GassoAi & Marklein v. 
 Odell, 190 0. G. 1028 (1913). 
 
 17. Notice to Parties. Kule 153 provides that in 
 contested cases, reasonable notice of all motions and 
 copies of motion papers and affidavits must be served, 
 as provided in Rule 154. Proof of service must be 
 made before a motion will be entertained by the office. 
 
 9
 
 Motions will not be heard in the absence of either 
 party, except upon default after due notice. 
 
 What amounts to reasonable or due notice has been 
 defined by the decision which will be hereinafter set 
 forth. 
 
 Rule 154 provides for the giving of due notice to the 
 opposing party of the taking of testimony, as to the 
 time when and the place where testimony will be 
 taken, of the cause or matter in which they ' will be 
 used, the names and residences of the witnesses to be ex- 
 amined; that the notice shall be such as to give the 
 opposing party or his attorney full opportunity to be 
 present and cross-examine the witnesses. If witnesses 
 are examined who are not named in the notice and the 
 opposing party fails to object to the examination of 
 such witnesses, or cross-examine them, he waives his 
 right to object to such examination for want of no- 
 tice. The notice shall be such as to give the party rea- 
 sonable opportunity to travel to the place where the 
 testimony is to be taken, or to the place where the mo- 
 tion is to be heard. 
 
 18. Notice of Taking Testimony, which contains the 
 names and addresses of certain witnesses and contains 
 the added statement "and perhaps others," is not good 
 except as to the witnesses named. Potter v. Ochs, 95 0. 
 G. 1049, 1901 C. D. 39; Tripp v. Wolf v. Jones, 108 0. 
 G. 563. Notice by telegram on Saturday to take testi- 
 mon}^ on Tuesday, which did not give the names and ad- 
 dresses of witnesses, but followed on Monday with a 
 formal notice of the taking of testimony of R, "and per- 
 haps others," was not sufficient, and testimony was 
 stricken out. Ries v. Frick, 160 0. G. 1040 (1910). No- 
 tice may be waived by conduct of attorney who might 
 otherwise successfully urge objections to the notice. 
 Munster v. Ashworth, 128 0. G. 2085 (1906). Objection 
 to the insufficiency of notice should be urged at the earli- 
 est opportunity, or it will be deemed to have been waived. 
 
 10
 
 Naulty V. Cutler, 126 0. G. 389 (1906). In computing 
 time a notice served on Saturday will be deemed to have 
 been served on Monday at the same hour, for counsel can 
 not be compelled to travel on Sunday, even if no objec- 
 tion to Sunday travel is raised. Goodfellow v. Jolly, 111 
 0. Gr. 1940. Time to communicate with client should be 
 given counsel, in determining whether reasonable time is 
 given. Goodfellow v. Jolly, 111 0. G. 1940. Notice 
 served in Chicago to take testimony in Erie, Pa., less 
 than two days thereafter, is not reasonable notice. Tripp 
 V. Wolf V. Jones, 108 0. G. 563. 
 
 19. Service of Notice. The notice of taking testimony 
 or an}" motion, must be served upon the attorney of rec- 
 ord, if there be one, or, if there be no attorney of record, 
 upon the adverse party. A stipulation in writing, signed 
 by the attorney's and filed in the cause, dispenses with the 
 necessity of notice. 
 
 20. How Served. There are five ways of serving no- 
 tices : 1, by delivering a copy of the notice to the ad- 
 verse part}^ or his attorney; 2, by leaving a copy at his 
 usual place of business and with some one in his employ- 
 ment ; 3, when he has no usual place of business, then by 
 leaving a copy at his residence ; 4, by registered mail, 
 and 5, by express. 
 
 21. Notice of Motions, Petitions, Etc. Notice to an at- 
 torney of a party is notice to him whether he has actual 
 notice or not. White v. Hewitt £• Nolen, 115 0. G. 1847 
 ( ] 905 ) . A motion will not be entertained when no notice 
 was served on opposing partj^ Hansen, 117 0. G. 2632 
 (1905). Like notice must also be given where a motion 
 is renewed. Dyson v. Land, etc., 133 O. G. 1679 (1908). 
 Notice of petition must be given. BoMn v. Muller & 
 Bonnett, 107 0. G. 2527 (1903). Where a party is rep- 
 resented by more than one attorney of record, a notice 
 signed by one of them is sufficient. Heyne, Hayward & 
 McCarthy v. DeVilUss, 125 0. G. 669 (1906) . It is with- 
 in the discretion of the Examiner of Interferences to dis- 
 
 11
 
 pense with notice of a motion to extend time for filing 
 preliminary statement. Keeler v. Bailey v. Davis, 14 
 Gour. 82-1 (Dee., 1902) ; Quick v. McGee, 107 0. G. 
 1376. Copies of affidavits must be served five days be- 
 fore the hearing unless they are reply affidavits, in which 
 case they should be served before the hearing. Brown v. 
 Stroud, 122 0. G. 2688. In all cases where service is re- 
 quired by the rules, proof of service must be made under 
 Rule 154. Allen, Commissioner, 127 0. G. 2398' (1907) ; 
 Lipe V. Miller, 105 0. G. 1532 (1903). 
 
 22. Sufficiency of Notice. A notice delivered by pri- 
 vate messenger on Saturday afternoon to the office of 
 counsel, notwithstanding Saturday afternoon is a legal 
 holiday in Washington, is good, where counsel is given 
 ample time to prepare for the hearing, and it appearing 
 also that counsel actually received the notice on Monday 
 afternoon. Gooclfellow v. Jolly, 115 0. G. 1064. "Where 
 the attorneys for both parties resided in the same city 
 and notice to take testimouj' was served at 10 a. m. to 
 take testimony at 2 p. m. of the same day, it appearing 
 that the attorne^^s for both parties appeared, it was held 
 that the testimony should not be stricken out, notwith- 
 standing the objection in the record of insufficient no- 
 tice and a refusal to cross-examine. liolyeris v. Webster, 
 115 0. G. 2135 (1905). A notice given in New York City 
 on June 22, that testimony would be taken in Troy, N. 
 Y., on June 24, was held insufficient. Eanderson v. 
 Ilanna & Ilanna, 173 0. G. 586 (1911). An affidavit op- 
 posing a motion to dissolve, served four days before the 
 hearing was held insufficient notice. Thieme v. Bowen, 
 21 Gour. 70-13 (Aug., 1909). 
 
 ISSUES. 
 
 23. The Issues. The issues in an interference are the 
 counts — tlie claiiii or claims. 
 
 The Issue Must Remain Fixed. It is necessary to order- 
 ly pi'occdiirc IliJit llic issues remain fixed throughout the 
 
 12
 
 interference proceeding. To permit a party to change 
 the issue by adding new matter, wouki lead to the great- 
 est confusion. Brill c& Adams v. Uehelocher, 99 0. G. 
 2966, 1902 C. D. 220. 
 
 24. Construction of Issue — Terms in Claims Should Be 
 Given Their Ordinary Meaning-. The reasonable presump- 
 tion is that an inventor intends to protect his invention 
 broadly, and the scope of the claims should not be re- 
 stricted beyond the fair and ordinary meaning of the 
 words, except for the purpose of saving them from in- 
 validity. Andreivs v. Nilson, 123 0. G. 1667; Esch- 
 inger v. Drummond, etc., 121 0. G. 1348. 
 
 25. Claims Broadly Construed. (See Exception, Sec. 
 35.) 
 
 While the applications are pending in the Patent Of- 
 fice, the claims will be construed as broadly as the ordi- 
 nary meaning thereof will permit. Jungc v. Harrington, 
 131 0. G. 691; Mid v. Young, 128 0. G. 2532, 29 App. 
 D. C. 481; Barber v. Transue, 19 Gour. 34-6; Kirhy v. 
 Clements, 216 0. G. 1319, 44 App. D. C. 12. 
 
 Issue Construed as Broadly as Disclosures Warrant. A 
 limited construction should not be forced upon a broad 
 claim in order to free a party who had asserted such 
 claim upon the supposition that he was the first in the 
 field, from the exigencies of the situation into which he 
 was forced by the subsequent appearance of another 
 partliy who created the broad subject matter of inven- 
 tion of an earlier date. Viele v. Cummings, 19 Gour. 2-6 ; 
 Monte V. Dunldey, 245 0. G. 278. 
 
 26. Estoppel to Urge Limitations Upon Issue. A party 
 who first presents claims should not be later heard to 
 urge limitations upon the terms thereof which might 
 readily have been expressed therein, had it been intend- 
 ed that they should be so restricted. Junge v. Harring- 
 ton, 131 0. G. 691; Paul v. Hess, 113 0. G. 847; Leon- 
 ard V. Horton, 189 0. G. 781, 40 App. D. C. 22. 
 
 13
 
 27. Language of the Issue Should Not Be Given a 
 Forced Meaning. Nor should it be given a meaning 
 founded upon specific differences in the devices of the 
 parties which are not set forth in the issue. Lemp v. 
 Randall & Bates, 123 0. G. 349; Phillips v. Sensenich, 
 132 0. G. 677 (1907). 
 
 28. Construction Where Applicant Copies Claims of a 
 Patent. AVhere the claims of a patent are copied for the 
 purpose of provoking an interference, the claims are 
 construed in the light of the specifications of the patent. 
 Bourn v. Hill, 123 0. G. 1284, 27 App. D. C. 291 ; Funk 
 V. Whitehj, 117 0. G. 280, 2.5 App. D. C. 313 ; Engel v. 
 Sinclair et al., 152 0. G. 489, 34 App. D. C. 212; Curtis 
 V. de Ferranti, etc., 171 0. G. 215 ; General Electric Co. 
 V. Steinherger, 214 Fed. 781, 206 0. G. 1161. 
 
 29. Are Construed in the Light of the Application of 
 the Party First Making Them. Sohey v. HolscJilaw, 126 O. 
 G. 3041, 28 App. D. C. 65; Tracy v. Leslie, 14 App. D. 
 C. 126; Ruete v. Elwell, 15 App. D. C. 21; Neulerth v. 
 Lizotte, 141 0. G. 1165, 32 App. D. C. 329; Western 
 Electric Co. v. Martin, 182 0. G. 723, 39 App. D. C. 147. 
 
 30. All Elements of the Claims Must Be Assumed to Be 
 Material. Jones v. Wolff, 17 Gour. 52-8 ; Collom v. Thur- 
 man, 131 0. G. 839 ; Streat v. FrecJcelton, 87 0. G. 695 ; 
 Wilson & Forest v. Ellis, 211 0. G. 286, 42 App. D. C. 
 552; Bijur v. Rushmore, 246 0. G. 301, 46 App. D. C. 
 395. 
 
 31. Different Inventions of Different Parties Defined 
 by the Same Claims. When the same language is used by 
 different parties to define different inventions, it is clear 
 that the language of the claims must be ambiguous or 
 indefinite, and should be amended to clearly distinguish 
 the inventions before issue of patents thereon. Alfree 
 V. Sarver, 122 0. G. 2391 ; Podclsak v. Mclnnerney, 120 
 0. G. 2127, 26 App. D. C. 399. 
 
 32. Construction in New Art. A limited construction 
 will not be i)ut ui)on terms of a chiim where it appears 
 
 14
 
 that the art is comparatively new and the terms used 
 have not ac(iiiired a fixed and definite meaning therein. 
 Undmark v. Hodcjkinson, 137 0. G. 228, 31 App. D. C. 
 612. 
 
 33. Necessity of Considering Prior Art. Where the 
 meaning of tlie claims of an interference are clear and 
 they read upon both parties, it is not error to refuse to 
 consider the effect of the prior art. Creveling v. Jepson, 
 256 0. G. 226, 47 App. D. C. 597. 
 
 34. Vague and Indefinite Counts. If the claims are so 
 vague and indefinite as to be susceptible of various mean- 
 ings, the interference should be dissolved, or the claims 
 amended (Sec. 31). Briggs v. Lillie, etc., 116 0. G. 871 
 (1904). 
 
 35. Exception to Broad Interpretation. Where there 
 is a clear difference in the structures making the claims 
 wholly without point when applied to one, the claims 
 should be given a reasonable interpretation, consistent 
 with the specification in which they originated to the end 
 that the real inventor may prevail. Murphy v. Cooper, 
 228 0. G. 1458, 45 App. D. C. 307. They cannot be con- 
 strued so as to ignore limitations which give them life. 
 Gammeter v. Lister, 253 0. G. 259. 
 
 Whether a Party Has the Right to Make the Claim — 
 Construction. A claim should be given the broadest 
 meaning consistent with its terms; but it cannot be en- 
 larged beyond the plain import thereof as set forth in 
 the specification on which it is based. Sinclair v. Engel, 
 147 0. G. 769, 1909, 152 0. G. 489, 34 App. D. C. 212. 
 
 Different Parties Use Different Terms to Describe Same 
 Structure. It is immaterial that the parties use different 
 terms to describe the same structure. Pratt v. De Fer- 
 ranti, etc., 148 0. G. 569. 
 
 THE PRELIMINARY STATEMENT. 
 
 36. Filing of Preliminary Statement. After the issues 
 of an interference have been fixed, the next step required 
 
 15
 
 of a party is to file a preliminary statement. The office 
 fixes the time within which the parties shall file their 
 statements. What a preliminary statement shall contain 
 is set forth in detail in Rule 110. The statement should be 
 prepared with great care for it is very difficult to obtain 
 leave to amend. The rule itself contains a caution to 
 the practitioner that the statement should be carefully 
 prepared and that the parties will be strictly held in 
 their proofs to the dates set up therein. If a party prove 
 any date earlier than alleged in his preliminary state- 
 ment, such proof will be held to establish the date al- 
 leged and none other. The statement must be sealed up 
 before filing (to be opened^only by the Examiner of In- 
 terferences as provided in Rule 111), and the name of 
 the party filing it, the title of the case, and the subject 
 matter of the invention indicated on the envelope. The 
 envelope should contain nothing but this statement. 
 
 Reasons for Requiring- a Preliminary Statement. The 
 Preliminary statement is made in ignorance of the dates 
 claimed by the opposing party, and this is required for 
 the purpose of avoiding the temptation to fraud. If a 
 party could make his statement after knowing the date 
 of invention claimed by his opponent, there would be 
 strong temptation to fraud and perjur3\ Davis v. Ocum- 
 paugh V. Garrett, 104 0. G. 2440 (1903) ; Woodward v. 
 Kennedy, 104 0. G. 1393 (1903). 
 
 37. What Statement Must Contain. The allegations of 
 the statement must conform to Rule 110, hence a state- 
 ment that the inventor reduced the invention to practice 
 by constructing the devise, witliout any allegation as to 
 its successful use, is insufficient. Ordinarily an inven- 
 tion is not reduced to practice by merely constructing 
 the devise. The fact, if it be a fact, that the invention 
 is of such nature that no test of its practicability is re- 
 (|uired, will appenr on finnl hearing, but a party may not 
 be excused from alleging the use which he has made of 
 his devise, merely because he believes he is not required 
 
 16
 
 to prove use. Klochc v. Burk, 189 0. G. 779, 1913 C. D. 
 85; Williams v. Foijcr cO Kurz, 142 0. G. 1114 (1909). 
 Loose and careless assertions tend to discredit the state- 
 ment. Miles V. Todd, 112 0. G. 1479. The allegations 
 must be clear and complete. Shoemaker v. Sintz, 123 
 0. G. 2974 (1906). Inconsistent allegations will not be 
 accepted. RoMnson v. Copdand, 112 0. G. 501, 24 App. 
 D. C. 68; Guett v. Trengoning, 114 0. G. 544. 
 
 38. Who May Sign Statement. The inventor is of 
 course the proper party to sign the preliminary state- 
 ment, but if he refuses to do so, an assignee may sign and 
 file the statement. Reynolds v. Bean, 100 0. G. 1763, 
 1902 C. D. 307; Lottridge v. Eustice, 121 0. G. 689 
 (1906). Upon a proper shoMdng an assignee of only a 
 part interest may file under Rule 131. Lotterhand v. 
 Cornwall, 148 0. G. 1344 (1909). 
 
 39. Motions for Extension of Time for Filing — How 
 Made. This motion should be made in accordance with 
 Rule 104. The motion should state the reasons for ask- 
 ing the extension. It must be verified, a copy served on 
 the other party or parties or their attorneys, together 
 with a notice of the time of hearing of such motion and a 
 proof of service of a copy of the motion and notice of 
 hearing should be filed with the motion. The granting 
 of the motion is within the discretion of the examiner. 
 Bailey v. Davis, 102 0. G. 819 (1903) ; Ohnier v. Neth 
 d- Tamplin, 118 0. G. 1686 (1905), 123 0. G. 998 (1906), 
 27 App. D. C. 319. The motion should state a definite 
 time of extension asked for, or it will be refused. Kecch 
 V. Birmingham, 191 0. G. 2825. 
 
 40. Time for Filing Statement. Where a party is un- 
 able to prepare his preliminary statement within the time 
 fixed, it is his duty to present the facts to the office and 
 ask for an extension of time, before he is in default, or 
 as soon as possible. Fowler v. Boyce, etc., 107 0. G. 543 
 (1903). 
 
 Filed After Expiration of Time. A preliminary state- 
 
 17
 
 ment filed nine days after time expired, was accepted, 
 reasonable diligence in procuring the necessary data hav- 
 ing been shown. Charlton v. Sheldon, 111 0. G. 2492. 
 
 41. Circumstances Warranting Extension. It is not 
 possible to state any rule as to what circumstances vsdU 
 warrant an extension, for each case must rest upon its 
 own facts. A party must at all times act in good faith ; 
 he must not be careless or negligent ; he must exercise 
 reasonable diligence in preparing his statement and he 
 must not seek to take advantage of his opponent. Dodle 
 V. Eckart v. Henry, 110 0. G. 604. "Where it appears 
 from the showing made that a party, his assignee, or his 
 counsel, or all of them, have been negligent or careless 
 in the matter of preparing and filing his preliminary 
 statement, an extension of time will be denied. Ander- 
 son V. Peck, 133 0. G. 229, 1908 C. D. 66 ; Hartleij v. 
 Mills, 110 0. G. 604. 
 
 42. New Counts Added — New Statement Should Be 
 Filed. Where new counts are added, additional prelim- 
 inary statements applying to the new counts should be 
 filed. Halwood v. Mc'Cormick, 16 Gour. 84-9. 
 
 43. A Preliminary Statement May Be Taken as a Sub- 
 stitute for an Affidavit Under Eule 75. Forsyth v. Rich- 
 ards, 115 0. G. 1327. 
 
 44. Allegations as to Reduction to Practice. If merely 
 making the device is alleged it must be .stated whether 
 such device was successfully used. Klocke v. Burk, 189 
 0. G. 779 (1913). 
 
 Allegations as to Time. ' ' In the early spring of 1900 ' ' 
 means not earlier at the utmost than March 1, 1900. 
 Richards v. Meisner, 114 0. G. 1831. 
 
 45. Inspection of by Opposing Parties. The rules pro- 
 vide that where preliminary statements are filed and ap- 
 I)roved, the opposing parties will be permitted to see and 
 obtain copies of their opponents applications and all of 
 the papers in the case' and to make motions for dissolu- 
 
 18
 
 tion within 30 days (Rule 122). Whipple v. Sharp, 98 
 0. G. 226, 1902 C. D. 5. 
 
 46. Amendment of Preliminary Statement. A pre- 
 liminary statement may be amended under Rule 113, 
 which provides : "In ease of material error arising 
 through inadvertence or mistake, the statement may be 
 corrected on motion (see Rule 155), upon a satisfactory 
 showing that the correction is essential to the ends of 
 justice. The motion to correct the statement must be 
 made, if possible, before the taking of any testimony, and 
 as soon as practicable after the discovery of the error. ' ' 
 
 Permission to Amend is Within the Discretion of the 
 Commissioner (or the Examiner of Interferences in the 
 first instance). The rule requiring preliminary^ state- 
 ments is a salutarA^ one, its obvious object being to elicit 
 from each of the parties certain vital information before 
 any party is informed as to the statement of any other. 
 Owing to the purpose of the rule, the exercise of the 
 Commissioner's discretion in passing upon motions to 
 amend such statements will not be disturbed unless it is 
 plain that there has been an abuse of that discretion. 
 Thomas v. Wemtraul), 177 0. G. 772, 38 App. D. C. 281 ; 
 Brotvn v. Dyson & Land, 188 0. G. 809, 39 App. D. C. 
 415 ; Hammond v. Basch, 115 0. G. 804, 24 App. D. C. 
 469; Cross v. Phillips, 14 App. D. C. 228, 237, 238; 
 Neth & Tamplin v. Ohmcr, 123 0. G. 998 (1906), 27 App. 
 319. 
 
 It is within the discretion of the Examiner of Inter- 
 ferences to permit amendment. Karpenstein v. Hertz- 
 lerg, 127 0. G. 2393 (1907) ; Klenk v. Kruse, 177 0. G. 
 1300 (1912) ; Cramer cO Hodge v. Carrier, 177 0. G. 769 
 (1912). 
 
 47. What the Motion Must Show. It is not sufficient 
 to show merely that the original statement is incorrect, 
 but it must also be shown that the error did not arise 
 from lack of proper care and diligence in preparing the 
 statement. Becker v. Currier, 104 6. G. 2439 (1903). 
 
 19
 
 Not merely a statement that the error was due to inad- 
 vertence and mistake, but a showing of facts which will 
 enable the office to judge that there was inadvertence or 
 mistake and that amendment is essential to the ends of 
 justice. Brown v. Keeney, 105 0. G. 260 (1903) ; Brown 
 V. Cutler V. Keelen, 104 0. G. 1896. Where it is alleged 
 that the mistake is due to not understanding the meaning 
 of "reduction to practice," it was held that it was the 
 party's duty to discover the meaning of the allegations 
 which he made, or ascertain the meaning from his attor- 
 ney. Dimn V. Hollidaij, 119 0. G. 1261 (1905). Where 
 a party alleges that he stated the facts in his original 
 statement as he believed them to be and subsequently 
 discovered his error, it must also appear that he could 
 not have discovered the facts sooner by careful and dili- 
 gent search. Hamilton v. Carroll, etc., 110 0. G. 2510. 
 Where it is alleged that an assignee accepted the state- 
 ment of an associate of the inventor, it must also be 
 shown that he made diligent effort to ascertain the facts 
 from others who would likely know the facts. Hamilton 
 V. Carroll, etc., 110 0. G. 2510. Where it is alleged that 
 a party when preparing to take testimony learned of an 
 earlier disclosure than that alleged in his statement, 
 there must also be shown a good reason for not discover- 
 ing the fact sooner. Foivler v. Boyce, etc., 108 0. G. 561. 
 Where a party seeks to amend by showing the making of 
 a model, he must show a satisfactory reason for omitting 
 it from the original statement, and also a good excuse for 
 delay in l)ringing the motion. Fullager v. Jungrcn, 114 
 0. G. 1550. Where forgetfulness is alleged it must be 
 shown what effort was made to refresh the affiant's recol- 
 lection originally or what steps were taken to fix definite- 
 ly the dates alleged. Friestcdt v. Harold, 116 0. G. 594 
 (1905). It must not only appear that there was error 
 in Ihc original statement, but that such error could not 
 have been avoided by the exercise of reasonable care in 
 the i)rt'|)aration of the statement. NctJi & Tamplin v. 
 
 20
 
 Ohmer, IIG 0. G. 874 (1905). A party must not only 
 show diligence in discovering the facts, but also diligence 
 in bringing the motion to amend. Hock v. Hopkins, 21 
 Gour. (57 (Aug., 1909). 
 
 48. Insufficient Showing-. A showing to support a mo- 
 tion to amend a preliminary statement must be such as 
 to make it appear clearly that the error in the original 
 statement could not have been avoided by the exercise of 
 reasonable care in preparing it. A showing is insuffi- 
 cient to warrant amendment setting back the date of 
 conception and reduction to practice, where the moving 
 party files his motion after learning of his opponent's 
 dates and he fails to set forth fully the reason he was 
 unable to learn of and set forth the earlier dates in the 
 first instance. Neth & Templin v. Ohmer, 116 0. G. 874 
 (1905). Since a party must show due diligence in pre- 
 senting the motion, a showing that the delay was occa- 
 sioned by negotiations for settlement is not a sufficient 
 excuse for such delay. Bradley v. Midgett, 150 0. G. 
 1042, 1910 C. D. 24. A showing is insufficient when it 
 is not made to appear that due diligence was exercised 
 to ascertain the true facts alleged to have been erroneous- 
 ly stated, or omitted. Hock v. Hoplins, 21 Gour. 67 
 (Aug., 1909). Showings are also insufficient in the fol- 
 lowing instances : Where one seeks to carry his dates 
 back of his opponent's dates, but no good reason is shown 
 why the correct dates were not discovered and alleged 
 originally. Freistedt v. Harold, 116 0. G. 594 (1905). 
 Where the motion is upon the ground of newly discov- 
 ered evidence from a proposed witness and it does not ap- 
 pear why the facts were not discovered before. McHarg 
 V. Schmidt & Mayland, 105 0. G. 263 (1903). Where 
 the ground was newly discovered evidence and it is al- 
 leged that a search for certain evidence in the past was 
 not successful, but no satisfactory explanation is given 
 why the search could not have been completed in time 
 for the original statement instead of after learning his 
 
 21
 
 opponent's dates. Hoyt v. Banders v. Hawthorne, 119 
 0. G. 1260 (1905). Where it was alleged that a mistake 
 was made by the inventor as to what was meant by ''re- 
 duction to practice," but there was no explanation of 
 what the mistake was, or how it arose, and the dates he 
 desires to allege are not given. Fowler v. Boyce, etc., 107 
 0. G. 544 (1903). Where it is not shown that the party 
 informed his attorneys of all the facts, and it is not 
 shown that he used the utmost diligence in trying to find 
 the alleged new evidence before making his preliminary 
 statement. Seeherger v. Russell, 107 0. G. 2528 (1903). 
 Where a party discovers the error in his original state- 
 ment and makes no effort for a long time to discover the 
 true facts and does not use diligence in presenting his 
 motion to amend. Atkins v. Paul v. Johnson, 94 0. G. 
 1785, 1901 C. D. 35. AVhere a party in making his pre- 
 liminary statement was aware of the facts, but not of the 
 force and effect thereof. Thomas v. Trissell, 1901 C. D. 
 200, 97 0. G. 1598 ; Franklin & Norton v. Cooley) 1901 
 C. D. 49, 95 0. G. 2063 ; where the facts alleged show 
 that the error was one of law and not of fact. Dalgren v. 
 Crocker, 98 0. G. 2586, 1902 C. D. 107 ; Miller v. Wal- 
 lace, 131 0. G. 1689 (1903) ; Bonsall v. Gilmore, 16 
 Gour. 82-3; Fowler v. Boyce, etc., 108 0. G. 561. Where 
 a party makes up his preliminary statement from mem- 
 ory and after looking up the records discovers that he 
 made a mistake. King v. Hansen, 101 0. G. 1129, 1902 
 C. D. 378. Where a party states that the utmost dili- 
 gence was exercised in making the discovery of the new 
 facts, without stating what means were employed and 
 the reasons why the same means could not have been 
 earlier employed. Seamen v. Brooks, 100 0. G. 685, 1902 
 C. D. 267. Where there is no reason shown why the 
 question could not have been considered in the first 
 amendment. Borg v. Strauss, 130 0. G. 2719 (1907). 
 Where there is no showing that proper care was exer- 
 cised in preparing the original statement and no expla- 
 
 22
 
 uatiou as to how the original mistake occurred, or why 
 it was not sooner discovered. Jolinson v. Erekson, etc., 
 131 0. G. 2419 (1907). A motion based on acts per- 
 formed abroad will not be considered as any reason for 
 amendment. Emmet v. Fullager, 114 0. G. 1551. A 
 failure to appreciate the scope of the claims is an error 
 of law and is no ground for amendment. liyder v. White, 
 145 0. G. 763 (1909). Where on account of the press of 
 business a party fails to investigate letters and records. 
 Somerville v. Larmuth, 190 0. G. 1028 (1913). AVhere 
 the motion is based on statements made to a prior attor- 
 ney of record and no affidavit from that attorney is filed. 
 Rechmitzer v. Bernegan, 193 0. G. 512 (1913). Where 
 the error is alleged to have been due to a misunderstand- 
 ing of a telephone conversation. Ileintish & Moriarity v. 
 Congdon v. Kclsca, 106 0. G. 542 (1903). W^here the 
 showing indicates carelessness and negligence in prepar- 
 ing the original statement. Basch v. Hammond, 15 Gour. 
 34-4 (May, 1903). Where the error occurred by reason 
 of the attorney being engaged in other pressing work. 
 Jones V. Linn, 110 0. G. 1430. 
 
 49. Amendments Have Been Permitted. Amendments 
 have been permitted under the following circumstances: 
 
 Where the notice of declaration was not clear. Hoeker 
 V. Farr, 193 0. G. 220 (1913). Where there was doubt 
 as to a certain part of a machine involved, and no testi- 
 mony had been taken. Carroll v. Stahlherg, 111 0. G. 
 1937. Where the affidavit of the inventor was corrob- 
 orated by another and it was shown that due care and 
 diligence was exercised in the preparation of the orig- 
 inal statement, and that a bona fide mistake was made. 
 Butterworth v. Boral, etc., 13 Gour. 2-1 (Jan., 1901). 
 Where a party acted mth diligence in discovering the 
 mistake and moved to amend before any testimony had 
 been taken, and was diligent in preparing the original 
 statement, and that the amendment would not injure the 
 other party. Silver v. Eustis, 14 Gour. 4-8 (Jan., 1902). 
 
 23
 
 Where there was a bona fide mistake due merely to a 
 clerical error, and there had been no unreasonable dela}'. 
 Hamilton v. Ide v. Loiventhal, U Gour. 4-9 (Feb., 1902). 
 AVliere there was a bona fide misapprehension as to the 
 sense in which the word "model" was used. Day v. Adt 
 I'. Hurdy, 12.3 0. G. 2765 (]906). Where the failure to 
 recall the early disclosure was due to illness. Paul v. 
 Chapin, 187 0. G. 831. Where the grounds of amend- 
 ment were based on records in the Patent Office. Cramer 
 & Hodge v. Carrier, 177 0. G. 769 (1912). Where there 
 was no attempt made to change the dates and it was 
 shown that it would not injure the opposing party. Wil- 
 liams V. Liherman, 100 0. G. 1331, 1902 C. D. 295. 
 Where a party showed prior diligence in making his orig- 
 inal statement and also made his motion to amend before 
 any testimony had been taken and there would be no ad- 
 ditional burden or expense thrown upon the opposing 
 party. McDermott v. Hihlreih, 98 0. G. 1282, 1902 C. 
 D. 43. Where no testimony had been taken and the 
 amendment would not carry the date of reduction to 
 practice back of his opponent's, and a reasonable excuse 
 is presented for delay in presenting the amendment. 
 Gales V. Berrigau, 100 0. G. 232, 1902 C. D. 232. Where 
 the ground was an accidental discovery of a publication 
 referring to the invention, and this publication was not 
 discovered when the original statement was filed, al- 
 though a careful search had been made. Davis v. Ocum- 
 paufjh V. Garrett, 104 0. G. 2440 (1903). 
 
 The Examiner of Interferences May Require Amend- 
 ment. Allyn cO Turner v. Anics, 21 Gour. 66-6 (Sept., 
 1909). 
 
 50. Amendment After Taking Testimony. After testi- 
 mony has been taken, an amendment to set back dates set 
 forth in preliminary statement is open to suspicion and 
 will be received only upon a clear showing of mistake, 
 and the moving party must be free from negligence, and 
 must show the utmost diligence in seeking to correct the 
 
 24
 
 mistake. McDermott v. Ilildreth, 98 0. G. 1282, 1902 C. 
 D. 43; Pope V. Minis v. McLean, 104 0. G. 2147 (1903) ; 
 Ilenclerson v. Noakes, 1892 C. D. 114, 59 0. G. 1431 ; 
 Bliss V. Cleverling, 112 0. G. 499. Changing- the date of 
 reduction to practice will not be permitted where there is 
 no showing of the utmost diligence in preparing the 
 original statement. Lockwood v. Schmidt, 100 0. G. 453, 
 1902 C. D. 253 ; Parker v. Lewis, 110 0. G. 305. A claim 
 that the part}' making the statement did not understand 
 the terms used, is not sutficient. Parker v. Lewis, 110 0. 
 G. 305. That a party did not read all of the counts is 
 no excuse. Smith v. Ingram, 131 0. G. 2420 (1907). A 
 showing that a party made an investigation as to certain 
 facts before making his original statement, but which 
 failed to show that he exhausted every reasonable means 
 of obtaining the desired information, is not sufficient to 
 warrant amendment. Floyd v. Bohlfing, 133 0. G. 992 
 (1908). A motion based on testimony taken in a case 
 must point out the particular parts of the testimony 
 upon which he relies to sustain his motion. Floyd v. 
 Rohlfiiig, 133 0. G. 992. Where the opposing party had 
 not completed the taking of his testimony and the mo- 
 tipn was based upon an accidental discovery of an ex- 
 hibit which w^as dated at an earlier date than that set 
 forth in the preliminary statement, and other affidavits 
 were filed by parties who stated that they saw the exhibit 
 on the date alleged, and it further appearing that the 
 moving party had made diligent search for all of his 
 drawings previous to making his original statement, 
 amendment was permitted. Brening v. Ridgely, 19 Gour. 
 65-2 (Aug. 5, 1907). A party may not give notice of 
 intention to amend and then delay in presenting his mo- 
 tion until his opponent has completed taking- his testi- 
 mony. Green v. Farley, 132 0. G. 235 (1907). Where 
 a party discovers a mistake in his preliminary statement, 
 he must act prompt^ to correct it, and if there is any 
 delay, he must show a satisfactory excuse for the delay. 
 
 25
 
 Kent V. Wilson, etc., 137 0. G. 1943 ; Anderson v. Nilson, 
 105 0. G. 2059 (1903). A notice of intention to move 
 to amend, given during- the taking of testimony, must be 
 exact and explicit as to what amendment is to be made. 
 Kent V. Wilson, etc., 137 0. G. 1943. Where a party 
 doubted the accuracy of his original statement at the 
 time he made it, but made no thorough search for the 
 true facts, amendment was denied. WJiitall v. Gillespie 
 V. Blaw, 171 0. G. 744 (1911). The fact that- a party 
 did not fully appreciate the effect certain evidence woufd 
 have upon the issue, but knew of the existence of the 
 evidence at the time he made his original statement, 
 would not entitle him to amend. Thomas v. Trissel, 97 
 0. G. 1598, 1901 C. D. 200. Where a party discovers 
 a mistake in his preliminary statement and thereafter 
 permits his opponent to take and file his testimony with- 
 out giving notice to amend, the motion will be denied. 
 Mills V. Torrence, 98 0. G. 416, 1902 C. D. 17. In pass- 
 ing upon a motion to amend the Examiner of Interfer- 
 ences will not try the question of whether the allegations 
 in the motion are true or false, before granting or deny- 
 ing the motion. Mills v. Torrence, 98 0. G. 416. To 
 warrant amendment after the testimony has been taken, 
 the ground being newly discovered evidence, it must 
 clearly appear that the evidence could not have been 
 discovered at the time of the filing of the original state- 
 ment. Fordyce v. Taisey, 102 0. G. 821 (1903). Where 
 a party seeks to carry his date of conception back ten 
 3'ears, basing his motion upon testimony taken in his own 
 behalf, the motion will be denied in the absence of any 
 sufficient reasons why the facts were not discovered at 
 the time his original statement was filed. Woodward v. 
 Kennedy, 104 0. G. 1393 (1903). Even where the testi- 
 mony shows clearly that a mistake was made in the pre- 
 liminary statement, the amendment will not be permitted 
 in the abseiice of a showing of due care in making the 
 original statement. Woodward v. Kennedy, 104 0. G. 
 
 26
 
 1393. Where a party had been notified that his state- 
 ment was indefinite, but no motion to amend was filed 
 until eight months later and after his opponent had 
 taken his testimony, and no satisfactory excuse given for 
 the delay, he was not entitled to amend. Dixon v. Mc- 
 Elroy, 127 0. G. 2393 (1907). 
 
 61. Motions to Amend When Reviewable. Considera- 
 tion of motions to amend may be postponed until final 
 hearing in which case the decision of the Examiner of 
 Interferences is reviewable by the examiners in chief. 
 Gammeter v. Thropp, 190 0. G. 266 (1913) ; Forsherg 
 V. Bradbury, 177 0. G. 239 (1912). 
 
 AMENDMENT OF ISSUE. 
 
 52. Adding — Counts — Rule 109. After an interfer- 
 ence has been declared, it often becomes important to 
 add new counts to an interference. This may be done at 
 any time within thirty days after the preliminary state- 
 ments of the parties have been filed and approved. One 
 who desires to add new counts should make a motion to 
 amend in accordance with Rule 109 and Rule 153, the 
 latter rule applying to giving notice of the motion to the 
 opposing parties, service of copies and proof of service. 
 The procedure should follow Rule 124 as amended May 
 7, 1914, which though apphing to motions to dissolve, 
 has been held to be applicable and the proper practice 
 on motions to add counts. Tow mend v. Copeland v. 
 Robinson, 126 0. G. 1355 (1907). 
 
 The motion to amend the application should contain 
 the claim or claims wdiich the moving party believes 
 should be made the basis of interference between himseK 
 and the other parties. It should contain a statement that 
 it is believed the claims are patentable and should be 
 made an issue in the interference, and it should be point- 
 ed out specifically wherein the claims w'hich it is desired 
 to add are applicable to the structure of each of the par- 
 ties, and must not be conditional or with a proviso. 
 
 27
 
 Ames, Jr., v. Ryan, 238 0. G. 1639 (1917) ; Wheeler v. 
 Palmros, 133 0. G. 230 (1908). 
 
 The purpose of Rule 109 is to enable a party to claim 
 a patentable invention which he shows and describes, 
 but has not claimed, and which the opposing party has 
 claimed. Perrussel v. Wickmann, 99 O. G. 2970, 1902 
 C. D. 228. A further purpose of the rule is that an in- 
 terference may be made to completely cover the patent- 
 able invention which is common to the applications in- 
 volved. Reece v. Fenivick, 97 0. G. 188, 1901 C. D. 143. 
 And to avoid a second interference. Townsend v. Cope- 
 land V. Robinson, 126 0. G. 1355 (1907). 
 
 Since it is the purpose of Rule 109 to give a party to 
 an interference full opportunity to put in issue matter 
 which he may think patentable or common to the inter- 
 ference applications, but which was not included in the 
 interference as originally declared, if he fails to take 
 "^ advantage of this rule while the interference is pending, 
 
 ^ . he is estopped thereafter from presenting broader claims. 
 
 (iJar^/n re Capen, 214 0. G. 685, 43 App. D. C. 342; Capen, 
 214 0. G. 683 (1914) ; Sutton, Steele & Steele, 121 0. G. 
 1012 (1906). 
 
 53. An Appeal May Be Taken from the decision of the 
 Law Examiner refusing a motion to amend, to the Ex- 
 aminers in Chief in the first instance, but the appeal 
 must be inter partes. Rule 124. Since the amendment 
 of Rules 109 and 124, May 7, 1914, when a motion to 
 amend is made, if found in proper form, it will be trans- 
 mitted by the Commissioner to the Law Examiner and if 
 the Law Examiner renders an adverse decision, he shall 
 fix a limit of appeal, not less than twenty days, for ap- 
 peal to the Examiners in Chief, and if the appeal is not 
 taken witliin the time fixed by the Law Examiner it will 
 not be heard except by permission of the Commissioner. 
 In Townsend v. Copcland v. Robinson, 126 0. G. 1355 
 (1907), it was held that the reasons which led to the 
 change in Rule 124, .set forth in Newcomb v. Thompson 
 
 28
 
 (122 0. G. 3012), apply with nearly the same force to 
 motions under Rule 109, hence it was held that the 
 proper practice was to follow the procedure under Rule 
 124. The reason for allowing such appeal is that a final 
 adverse decision rendered on such motion would obvious- 
 ly constitute ground for refusing such claims presented 
 after the conclusion of the interference. Mortimer v. 
 Thomas v. Broicnson, 192 O. G."215 (1913). 
 
 54. When Motion Must Be Made. Rule 109 provides 
 that a motion to amend may be made at any time within 
 thirty days after the preliminary statements of the par- 
 ties have been received and approved. However, for 
 various reasons, motions have been presented long after 
 the thirty days' limit therein stated, hence there have 
 been many rulings applying to the particular facts pre- 
 sented. 
 
 55. Reopening Interference to Amend Issue. After 
 the expiration of the time allowed for bringing motions, 
 and after a decision of the Law Examiner on a motion to 
 dissolve has become final, the interference will not be re- 
 opened to amend the issues, especially where there is no 
 valid excuse shown for delay in bringing the motion. 
 Ignorance of the provisions of Rule 109 is no excuse. 
 Kimball v. Sharpies, 21 Gour. 68-10 (Aug., 1909) ; Davis 
 V. Zellers, 167 0. G. 513 (1911). But it would seem that 
 upon proper showing an interference might be reopened. 
 
 56. Amendments Have Been Allowed Long After 
 Thirty Day Limit. Where a party was able to make sat- 
 isfactory explanation for the delay in bringing the mo- 
 tion, as was the case in Becker v. Otis, 127 0. G. 1267, 
 amendment was permitted after the thirty day limit. 
 But where the motion was made after testimony was 
 taken, alleging as the reason for the delay the fact that 
 the Examiners in Chief, on appeal on priority, found 
 that the moving party had no right to make the claims, 
 which was contrary to the ruling made by the Primary 
 Examiner and the Examiner of Interferences, the motion 
 
 29
 
 was properly refused as there was no excuse for the 
 delay of six months after the decision of the Examiners 
 in Chief. (Distinguishing Becker v. Otis, 127 0. G. 
 1267 ; Hanan d- Gates v. Marshall, 21 Gour. 54-16 (June, 
 1909). 
 
 57. Where the Necessity for Amendment Did Not Arise 
 Until After a Decision on Motion to Dissolve, it was held 
 that the motion to amend should be transmitted for the 
 reasons given in Becker v. Otis, 127 0. G. 1267'; Wil- 
 liams V. GiUon, 20 Gour. 82-4 (Nov., 1908). New 
 counts will not be admitted after partial dissolution 
 where proofs as to the same may be presented in connec- 
 tion with the counts remaining. Scott v. Emniett & Hew- 
 lett, 119 0. G. 2233 (1905). 
 
 58. Adding Counts After Taking Testimony. Where 
 testimony has been taken, the Examiner should not sug- 
 gest new counts before judgment on priority. Freeman 
 V. Parks, 117 0. G. 276 (1905) ; Potter v. VanCleck v. 
 Thompson, 95 0. G. 2484, 1901 C. D. 53 ; Newell v. Huh- 
 hard, 15 Gour. 82-3 (Dec, 1903). After decision on 
 priority it is too late to amend by adding new counts. 
 Safert v. Meyer, 109 0. G. 1885. 
 
 59. Amendment Substituting Patentable for Unpatent- 
 able Counts. It has been held in Churcliwarcl v. Douglas 
 V. Cutler, 106 0. G. 2016 (1903), that where some of the 
 counts of the issue are unpatentable and one of the par- 
 ties proposes amended claims as substitutes for them, 
 they should be considered by the Primary Examiner, and 
 if found patentable he should suggest them to the other 
 party and fix a time limit within which such other party 
 may make tliem, and if he fails to make them within the 
 time, such failure should have the same effect as sug- 
 gested claims under Eule 96. Tt was also observed that 
 at tlie time Rule 109 was adopted the practice of suggest- 
 ing claims had not been inaugurated and that the prac- 
 tice outlined in this case is not provided for in Rule 109 
 (Note: Rule 109 has since been amended). If new pat- 
 
 30
 
 entable counts are proposed after the original counts 
 have been held unpatentable, on the evidence taken, the 
 interference may be redeclared and a motion under Rule 
 157, to use the testimony previously taken, would be in 
 order. Brooks v. Foote v. Wenk, 108 0. G. 287. The 
 foregoing decisions are given for the purpose of assisting 
 the practitioner in interpreting Rule 109 as now in 
 force. 
 
 60. Adding New Counts by Stipulation. New counts 
 may be added to an interference hy motion signed by all 
 the parties to the interference, if the Law Examiner 
 holds the proposed counts to be patentable, though there 
 are no rules providing for such practice. Bcese v. Fen- 
 wick, 99 0. G. 669, 1902 C. D. 145; Norman v. Krimmel- 
 Uiii, 115 0. G. 249. 
 
 61. Proposed Counts Must Be Patentable. The Law 
 Examiner should decide whether the proposed counts are 
 patentable. If so, they should be included in the inter- 
 ference, and if not, he should make a specific ruling to 
 that effect, giving his reasons therefor, and the amend- 
 ment should be refused admission, and the party whose 
 motion is denied may then appeal to the Examiners in 
 Chief. Reece v. Fenwick, 14 Gour. 3-7 (Feb., 1902) ; 
 milard V. Fisher, 101 0. G. 2290, 1902 CD. 448 ; O'Con- 
 nor V. Vanderhilt, 102 0. G. 1782 (1903). 
 
 62. Proposed Counts Must Be Such That All Parties 
 Can Make Them and Patentably Different From Those Al- 
 ready in the Interference. O'Connor v. Tandcrbilt, 102 
 O. G. 1782 (1903) ; Holli field v. Cummings, 154 0. G. 
 1107 (1910) ; Moore v. Ilewett v. Potter, 115 0. G. 509; 
 Hicks V. Costcllo, 103 0. G. 1163 (1903) ; Toivnsend v. 
 Copeland v. Bobinson, 124 0. G. 623 (1906). 
 
 63. Questions Considered on Motions to Amend. A 
 motion to amend raises the question of the patentability 
 of the proposed counts ; the right of the parties to make 
 them and all grounds raised in opposition to the motion, 
 but the same questions will not be again considered on a 
 
 31
 
 motion to dissolve. Rule 109. Dimlap v. Creveling v. 
 Rector, 21 Gour. 67-8 (Sept., 1909) ; Lotterhand v. Corn- 
 umll, 154 0. G. 515 (1910). 
 
 64. After a Motion Has Been Transmitted, additional 
 claims not set out in the original motion, will not neces- 
 saril^' be considered bj^ the Examiner. Mattice v. Lang- 
 worihij, 132 0. G. 678 (1907). 
 
 DISSOLUTION. 
 
 65. Dissolution of Interference— Rule 122. Rule 122 
 sets forth three separate and distinct grounds for dis- 
 solving interferences. 
 
 1. That there has been such informality in declaring 
 the same as will preclude a proper determination of the 
 question of priority of invention. 
 
 2. On the ground that the claims of the issue are not 
 patentable. 
 
 3. That a party has no right to make the claim. 
 
 It has been held that the three grounds for dissolution 
 mentioned in Rule 122, relate respectively to very differ- 
 ent matters and should not be confused, one with the 
 other. Kaczander v. Hodges tO Hodges, 118 0. G. 836 ; 
 Woodward v. Newton, 86 0. G. 490 ; Owen v. Richard- 
 son, 111 0. G. 1037 (1904). 
 
 66. Motion to Dissolve — In General. It should be 
 borne in mind in considering the older decisions relating 
 to motions to dissolve, that the rules were amended May 
 7, 1914, transferring from the Primary Examiner to the 
 Law Examiner jurisdiction of motions to dissolve. 202 
 0. G. 634. 
 
 Motions 1o dissolve must set i'orth definitely the 
 grounds, upon wliicli motion is l);ise(l and a failure to be 
 specific and accurate often results in denial of the mo- 
 tion. If the ground is, that the issue is not patentable, 
 llicn the motion must ch-arly set forth why it is not pat- 
 entahh'. It iinist state how the ])atents cited anticipate 
 the issne, that is, whether each patent anticipates the 
 
 32
 
 issue, or if not, how they are to be combined to show 
 anticipation of the issue. If there is more than one count 
 in the issue, it must be shown to what count the antici- 
 pating patents apply and how they apply. Rountree v. 
 Sloan, 189 0. G. 1281 (1913) ; Keyes & Kraus v. Yunck, 
 182 0. G. 248 (1912; yandcrveld v. Smith, 159 0. G. 490 
 (1910) ; Heij7ie, etc. v. DeVilhm, 125 0. G. 669 (1906) ; 
 Burleigh v. Elliott, 197 0. G. 240 (1913). 
 
 A party may base his motion upon all the grounds 
 mentioned in Rule 122 and the Primary Examiner (Law 
 Examiner) is required to decide the motion upon all the 
 grounds and fix a limit of appeal as to those grounds 
 upon which an appeal may be taken. Hopfelt v. Read, 
 106 0. G. 767 (1903) ; Oldham cC; Padhury v. Feck et al., 
 99 0. G. 670, 1902 C. D. 148 ; Read v. Scott, 14 Gour. 
 3-5 (Jan., 1902) ; Hinkley v. Baker, 97 0. G. 2742, 1901 
 C. D. 236; Owen v. Richardson, Jr., Ill 0. G. 1037. 
 
 The several grounds mentioned in Rule 122 have sep- 
 arate, distinct and well defined meanings, and the mo- 
 tion should not state the facts in such way that the Ex- 
 aminer will not be able to determine what facts are re- 
 lied upon to support each separate ground for dissolving 
 the interference. The Examiner is recpiired to decide 
 the motion upon each ground alleged and therefore it is 
 important that the motion should state what facts furnish 
 the reason for dissolving the interference upon ground 
 1 ; what facts furnish the reason for dissolving the inter- 
 ference upon ground 2, and what facts furnish the rea- 
 son for dissolving the interference upon ground 3. 
 Woodward v. Newton, 86 0. G. 490; Vreeland v. Fessen- 
 den, etc., 117 0. G. 2633 (1905) and same case, 119 0. G. 
 1259 (1905) ; Dunker v. Reist, 119 0. G. 1925 (1905) ; 
 Thiilen v. Young & Townsend, 118 0. G. 2251 (1905) ; 
 Kl&petke v. Becker, 120 0. G. 658 (1905) ; Owens v. 
 Richardson, 111 O. G. 1037 (1903). 
 
 We have seen by the foregoing decisions that the mo- 
 tion must be definite and certain as to how the facts apply 
 c 33
 
 to each ground stated in the motion, but the question 
 often arises as to what is and what is not definite. Where 
 there was more than one count in the interference and 
 the moving party failed to specify whether his motion 
 was directed to all or onlj- a part of the counts in issue, 
 and there was no specific statement as to which element 
 of the claims are not supported by the original disclo- 
 sure, it was held that the motion should not be trans- 
 mitted. Lizotte V. Neuherfh, 124 0. G. 1842 (1906). 
 Where the motion was on the ground of unpatentability 
 in ^iew of eight references, of which it is stated "each 
 of the counts is met by each of the patents singly or in 
 combination, "it was held that the allegations were in 
 the alternative and indefinite. Thullen v. Townsend, 130 
 0. G. 1312 (1907). Where the allegation was that the 
 issue is not patentable in view of certain references, but 
 it was not stated how these references are to be applied, 
 transmission of the motion was refused. Phillips v. 
 Scott, 130 0. G. 1312 (1907). Where it was alleged that 
 each of the counts of the issue is anticipated, or neces- 
 sarily limited, it was held that the allegations are in the 
 alternative and the motion therefore does not state which 
 counts are to be urged as anticipated and which limited, 
 nor does it show which patents are to be relied upon for 
 anticipation and which for restriction. Murphy v. Bor- 
 land, 132 0. G. 231. All the references must be put into 
 the motion when filed. A moving party will not be per- 
 mitted to cite certain references in his motion and then 
 state that he will cite others more than five days before 
 the hearing. The motion would be good as to the pat- 
 ents cited, but not as to any that might be thereafter 
 cited. Papcndrll v. Bunnell, etc., 131 0. G. 362 (1907). 
 67. References Discovered After the Motion Has Been 
 Piled or Transmitted. If a party can make a proper show- 
 ing tliat he has discovered since the filing of his motion, 
 or since its transmission, a new and pertinent reference, 
 and a further satisfactory^ showing that it could not have 
 
 34
 
 been earlier discovered, he may, by giving due notice to 
 his opponent, have such reference considered as a part 
 of his motion. Kurts v. Jackson (& Pierce, 98 0. G. 2568, 
 1902 C. D. 106; Young v. Eick, 113 0. G. 547. But 
 where no such showing is made a party will not be per- 
 mitted to argue the pertinency of references not set out 
 in his motion. Ililliard & Persons v. Hewlett, 19 Gour. 
 55-10 (April, 1907). 
 
 68. Only One Motion to Dissolve. A motion to dissolve 
 may not be presented in piece meal by presenting a mo- 
 tion on one ground and if it is denied, present another 
 motion upon a different ground. The whole case must 
 be presented in one motion. Richards v. Kletzker & 
 Goesel, 98 0. G. 1709, 1902 C. D. 62 ; Finch v. Singleton, 
 98 0. G. 1709, 1902 C. D. 61 ; Egly v. Schultze, 117 0. G. 
 276 (1905). 
 
 69. Motion to Extend Time for Filing Motion to Dis- 
 solve. The granting or refusing of a motion to extend 
 time for filing motion to dissolve is within the discretion 
 of the official before whom the motion is filed. Egly v. 
 Schultze, 117 0. G. 276 (1905). 
 
 70. Amendment of Motion. Amendment of a motion 
 may be permitted and time given therefor, if it appears 
 that a party is acting in good faith. Jones v. Hulse v. 
 Melville, 21 Gour. 86-15 (July, 1909). 
 
 Questions involving priority are not presented by mo- 
 tions to dissolve and the Examiner should not pass upon 
 such questions. Clement v. Broum v. Stroud, 126 0. G. 
 2189 (1907) ; Wcnde v. Horine, 118 0. G. 1070 (1905). 
 
 71. Operativeness. On motion to dissolve on the 
 ground of inoperativeness, it was held that the interfer- 
 ence would be dissolved whether the structure of one or 
 both of the parties is inoperative, but where a party 
 files a motion before the Examiner of Interferences for 
 permission to take testimony on the ground that his op- 
 ponent's structure is inoperative, it is necessary for the 
 moving party to show that the alleged ground of inopera- 
 
 35
 
 tiveness does not apply to his own structure. This is 
 because if the structures of both parties are inoperative, 
 there is no question of priority presented. Clement v. 
 Browne v. Stroud, 126 0. G. 2*189 (1907) ; Bodivitch v. 
 Todd, 98 0. G. 792. 
 
 72. Informality in Declaring the Interference. "Where 
 there were 132 counts in the interference, it was held that 
 the great number of counts would of itself tend to pre- 
 clude a proper determination of priority, and under the 
 provisions of Rule 212, the interference should be trans- 
 mitted to the Primary Examiner to determine whether 
 the interference should not be dissolved and a reasonable 
 number of counts substitued for those forming the issue. 
 Bagena v. Harris, 150 0. G. 266 (1909). 
 
 73. Defects in Oath. Where the oath filed with one 
 of the applications was administered by the attorney for 
 the applicant, the interference was dissolved. Reigger 
 V. Bcirel, 150 0. G. 826 (1909) . Where it was discovered 
 during the taking of testimony that there was an inform- 
 ality in the oath of one of the parties and such party 
 promptly filed a corrected oath, the motion was denied. 
 Jackson V. Wcler, 18 Gour. 84-13 (Nov., 1906). 
 
 74. Lack of Official Seal of officer who administered 
 the oath may be cured by proof that the officer actually 
 had authority to administer it. Dukesmith v. Covington 
 V. Turner, 126 0. G. 348. The lack of such seal is an ex 
 parte matter and not an irregularity warranting disso- 
 lution. Aucrlach & GuMng v. Wiswell, 108 0. G. 289. 
 
 75. Supplemental Oath. Where a party has filed no 
 preliminary statement, a motion to dissolve upon the 
 ground that the claim should have been supported by a 
 supplemental oath, should be transmitted for determina- 
 tion of wlicther a supplemental oath is necessary, and, 
 if found necessary and is not furnished within a reason- 
 able time, tlie interference slioukl be dissolved. Gold v. 
 Dixon, 194 0. G. 1142, 1913 C. D. 217. 
 
 76. That the Issues Are Vague and Indefinite, are 
 
 36
 
 proper questions to raise as constituting informality in 
 declaring an interference. Field v. Colnian, 131 0. G. 
 1686 (1907); Anderson v. Vrooman, 123 0. G. 2975 
 (1906) ; Dinkel v. D' Oliver, 113 0. G. 2507 (1903). An 
 interference is irregularly declared where one of the 
 applications does not disclose the subject matter of one 
 of the counts. Gilhert-Stringcr v. Johnson, 102 0, G. 
 621 ; 1903 C. D. 20. 
 
 77. Abandonment. Where an abandoned application 
 is put in interference with another application, it may 
 be dissolved as irregularly declared. Coulson v. Callen- 
 der & Callendcr, 101 0. G. 1607. 
 
 78. "What Is Not Such Irregularity or Informality in 
 Declaring- the Interference as Will Preclude the Proper De- 
 termination of the Question of Priority of Invention. Mul- 
 tiplicity of counts is not an irregularity, if the counts are 
 separately patentable. Narman v. Krimelbein, 118 0. G. 
 2251 (1905). That the Examiner has not notified the 
 parties that the claims in issue are patentable. Luger 
 V. Broivning, 100 0. G. 231 ; 1902 C. D. 230. That a 
 party has stated in his applications involved in the in- 
 terferences that they are divisions of a prior patent 
 granted to him ; Meyer v. Sarfert, 96 0. G. 1037 ; 1901 
 C. D. 91. That a party has rejected claims and if they 
 should be decided "to be patentable, a new interference 
 would be necessary. Truax v. Rohinson, 13 Gour. 82-2 
 (Dec., 1901). Where no irregularity was pointed out, 
 and the issue was construed as broad enough to cover 
 the inventions of both parties. Gillespie v. Dean, 15 
 Gour. 83-7 (Nov., 1903). That the claims of the counts 
 cover two species of invention. Atlierton tO Happ v. 
 Cheney, 111 0. G. 10-10. That the suggestion of claims 
 was not authorized by the practice then in force. Myers 
 V. Broivn, 112 0. G. 2093. The sending of a notice of 
 interference to a patentee referring to his patent as an 
 application. GaeUj v. Brand, 16 Gour. 50-4. That the 
 suggestion of the claim in interference to the party by 
 
 37
 
 the Examiner, was improper, because said party had not 
 claimed substantiallr the same invention expressed in 
 said claim. Medcn v. Curtis, 117 0. G. 1795 (1905). 
 That the Examiner improperly suggested claims under 
 Rule 96. Templin v. Sergeant, 119 0. G. 961 (1905). 
 That the Examiner improperly issued a patent to the op- 
 ponent of the mo^*ing party during the pendency of his 
 application (That is a matter the office can not remedy). 
 Dunher v. Beist, 119 0. G. 1925 (1905). That the Ex- 
 aminer failed to include certain claims made by both 
 parties, where the claims not included are not patentably 
 different from those which were included. Galhj v. Bur- 
 ion, 120 0. G. 325 (1905) ; Earll v. Love, 140 0. G. 1209 
 (1909). Mere clerical errors which may be corrected by 
 a letter of the Primary Examiner calling attention to 
 them, does not warrant dissolution. Gaily v. Burton, 
 120 0. G. 325 (1905). The fact that the issue invoh-ing 
 a parent ease could as well have been included in the 
 interference iuYolving a divisional application. Phillips 
 V. Sensenick, 122 0. G. 1047 (1906). That the counts of 
 the interference are not patentably different. Hawkins 
 V. Young, 21 Gour. 34-3 (May, 190*9) ; McEeen v. Davis, 
 21 Gour. 84-7 (Aug., 1909). The fact that the Exam- 
 iner formulated the claim suggested for the purpose of 
 interference, is not an informality in declaring the inter- 
 ference. Gold V. Dixon, 194 0. G. 1142 (1913). 
 
 Irregularities in the prosecution of an application 
 should not be confused with irregularities in declaring 
 the interference. Colburn cC Washburn v. Hitchcock, 
 145 0. G. 1022 (1909). 
 
 A party who requests a declaration is not in a position 
 to urge irregularity in declaring it. Wickers & Furlong 
 V. Weinnurm, 117 0. G. 1797 (1905). 
 
 AVhcre a party malvcs suggested claims under protest, 
 it was held that while such facts might warrant a motion 
 by such party to dissolve on the ground that he had no 
 right to make the claims, the same facts, however, would 
 
 38
 
 not sustain a motion to dissolve on the ground of in- 
 formality and irregularity in declaring the interference. 
 Eichelberger & Hihner v. Dillon, 129 0. G. 3161 (1907). 
 Where the Examiner includes in an interference 
 counts Avhich he has held not patentable, such inclusion is 
 not an irregularity in declaring the interference, because 
 the party had a right to appeal on the question of the 
 patentability of those counts and they are properly re- 
 tained in the interference, but if he fails to appeal within 
 the time set therefor, the interference stands dissolved as 
 to those counts. In such case it is customary for the 
 Examiner of Interferences, when the case is returned to 
 him from the Law Examiner, to notify the parties that 
 the interference is dissolved as to such counts. Halwood 
 V. McCormick, 16 Gour. 84-7. 
 
 79, Motion to Dissolve on the Ground That the Issue Is 
 Not Patentable — Who May Question Patentability of the 
 Issue. A party whose claims are held not patentable can 
 not question the patentability of the claim of his op- 
 ponent. Soverign & Lenders v. Lillie, 185 0. G. 830 
 (1912). 
 
 80. Who Has Jurisdiction to Determine Patentability. 
 A motion for dissolution was based on all grounds pro- 
 vided by the rules. The motion was denied by the Pri- 
 mary Examiner. A petition to the Commissioner was 
 filed, asking that the Examiner of Interferences be di- 
 rected to pass on the patentability of certain counts. 
 The Commissioner held that the Examiner of Interfer- 
 ences had no jurisdiction to pass upon the questions 
 which were sought to be placed before him, because they 
 do not relate to the question of priority. Wood v. Pfis- 
 ier, 154 0. G. 837 (1910). 
 
 The question of the patentability of the issue should be 
 raised by a motion to dissolve and will be determined by 
 the Law Examiner (formerly by the Primary Exam- 
 iner). The Court of Appeals, D. C, has held that the 
 question of the patentability of the issue is not a juris- 
 
 39
 
 dictional one which must be considered by each of the 
 tribunals called upon to pass on the question of priority 
 of invention in an interference proceeding. Johnson v. 
 Mueser, 29 App. D. C. 61, 145 0. G. 764. It is well 
 settled that the patentability of the issue will be consid- 
 ered on final hearing only under the supervisory author- 
 ity of the Commissioner and in a clear case. Dixon v. 
 Marsh, et at., 127 0. G. 1993 ; Soley v. Ilolschlaw, 126 
 0. G. 3041, 28 App. D. C. 65 ; Potter v. Mclntosch, 127 
 0. G. 1995, 28 App. D. C. 510 ; Iliiher v. Aiken, 88 0. G. 
 1525. Where an applicant sought to present the ques- 
 tion of patentability on an appeal to the Commissioner 
 from a judgment of priority, it was held that the inter- 
 ference should not be dissolved, though had the question 
 been presented at the proper time by a motion to dis- 
 solve it would have been dissolved. De F arrant i v. Lind- 
 mar/c, 183 0. G. 782 (1912). 
 
 81. Nature of Right to Question Patentability. A mo- 
 tion to dissolve on the ground of non-patentability is not a 
 matter of right under any statute, but is a matter of pro- 
 cedure arising under the rules of practice, and the mov- 
 ing party appears in such motion merely as amicus curea. 
 Whether a certain count is patentable is a question be- 
 twe'en the applicant presenting it and the office, as is 
 every claim presented in an application where there is 
 no opposing party. But following certain decisions indi- 
 cating that it is of assistance to the office to have the op- 
 posing party argue the patentability of the issue, the 
 rules were amended to provide for appeals on this ques- 
 tion, inter partes. See Appeal, Kelly v. Dempster, 164 
 O. G. 975 (1911); Gold v. Gold, 150 0. G. 570- 573; 
 Griffith V. Dodgson, 116 O. G. 1731 (1905) ; Lipe v. Mil- 
 ler, 109 0. G. 1608; liohUns v. Titus, 111 0. G. 584; 
 Patterson v. Hrhrr, 192 0. G. 215 (1913). 
 
 82. Effect on Moving Party. Where an applicant 
 moves to dissolve on the ground that the issue is not pat- 
 ental)lc, his opponent being a patentee, such applicant is 
 
 40
 
 thereafter estopped from insisting upon the claims. 
 Weissenthanner v. Goldstein, 111 0. G. 810 (1904). A 
 patentee may not urge non-patentability of his claims. 
 Fend v. Miggett, 223 0. G. 649 (1915). 
 
 83. When Motion Should Be Made. The motion to 
 dissolve upon this ground should of course be made at 
 the time and as provided by the rules, but such motions 
 have been made at various stages of the proceedings. 
 Where the motion was made after the taking of testi- 
 mony, it was held that the interference would not be sus- 
 pended to consider the pertinency of a reference. To 
 warrant such consideration the anticipation must be 
 clearly apparent. Graham v. LangJiaar, 111 0. G. 240 
 (1912) . Where a party is an applicant and his opponent 
 is a patentee and the applicant in response to a motion 
 to show cause why judgment should not be rendered 
 against him for failure to take testimony, no testimony 
 having been taken, moves to dissolve on the ground 
 that the issue is not patentable, the interference should 
 not be dissolved, but judgment should be rendered. 
 Smith V. Slocum, 123 0. G. 1990; 1906 C. D. 269. 
 
 84. Character of Showing Required. Where the mo- 
 tion to dissolve alleges that the counts are not patentable 
 in view of certain enumerated patents, if the moving 
 party is of the opinion that each of the references is an 
 anticipation of each of the claims, the motion should so 
 state. If not, the motion should enumerate the refer- 
 ences in connection with the claims to which they will 
 be applied in the argument. If the contention of non- 
 patentability is based upon the theory of aggregation, or 
 double use, or substitution of equivalents, it should ap- 
 pear in the motion, also the manner in which it is pro- 
 posed to combine the references. Heyne, Hay ward & Mc- 
 Carthy V. DcYilbiss, 125 0. G. 669 (1906). Ex parte af- 
 fidavits will not support the motion, for the reason, that 
 if the interference is dissolved, the claims must be re- 
 jected and the claims can not be rejected on ex parte 
 
 41 
 
 /
 
 affidavits. Ellis v. Boyce v. Burcherial, 195 0. G. 273 
 (1913) ; Barratt v. Swingelhurst, 144 0. G. 818 (1909) ; 
 Ex parte Van Ausdel, 91 0. G. 1617 ; McKenzie v. Gil- 
 lespie, et al., 93 0. G. 2103. 
 
 Anticipating- patents must be such as are not antedated 
 by the preliminary statement. Forsyth v. Richards, 115 
 0. G. 1327 (1905), but in Martin v. Goodrum, etc., 130 
 0. G. 1485 (1907), it was held that a motion setting up 
 such a patent as an anticipation should be transmitted 
 for the purpose of permitting the (Examiner) Law Ex- 
 aminer to consider the pertinency of the reference and 
 permit the filing of an affidavit alleging facts required by 
 Rule 75, outside those contained in the preliminary state- 
 ment. 
 
 Patents granted on applications filed subsequent to the 
 date of invention alleged in the preliminary statement 
 of one of the parties, are not anticipating patents which 
 will support a motion to dissolve an interference upon 
 the ground of non-patentability. Raymond v. Kitsel- 
 man, et al, 134 0. G. 2243 (1908). • 
 
 85. Appeal — When Not Permitted (See Appeal). No 
 appeal is permitted from a decision of the Law Examiner 
 affirming patentability of the issue. All interlocutory 
 matters, such as motions to dissolve, are regulated by the 
 Patent Office rules and a party has no statutory right to 
 appeal on any question except a judgment on priority 
 rendered in an interference, hence if he has a right to 
 appeal he must find that right in the Patent Office rules. 
 The Primary Examiner is given authority to pass on 
 questions of patentability of the issue and neither the 
 statute nor the rules of the Patent Office permit appeals 
 from a decision rendered upon a motion for dissolution 
 affirming patentability of the issue (Allen v. Lowry, 116 
 O. G. 2253) and it is only from decisions adverse to the 
 patentability of the claims that an appeal will lie (Sohey 
 V. Ilolschlaw, 126 0. G. 3041, 28 App. D. C. 65). As the 
 Priinary Examiners are under the Commissioner, he 
 
 42
 
 may, where it is clear that gross error has been commit- 
 ted in holding the issue patentable, exercise his super- 
 visory authority and take jurisdiction of the question, 
 but such will not be exercised where there is merely a 
 difference of opinion on the part of the lower tribunals. 
 
 86. How the Question of Patentability of the Issue 
 May Come Before the Commissioner. The Examiner of 
 Interferences, in his decision, and likewise the Exam- 
 iners in Chief on appeal, are confined to the question of 
 prioritj', but if any other matter not relating to priority 
 and which would amount to a statutory bar to the grant- 
 ing of a patent to either of the parties, shall come to their 
 notice, they may direct the attention of the Commis- 
 sioner to such matter under Rule 126, and the Commis- 
 sioner may, before 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 his attention has been directed, and from the 
 decision of the Examiner an appeal may be taken. If 
 the Commissioner does not remand the case, the Primary 
 Examiner will, after judgment, consider any matter af- 
 fecting the rights of either party to a patent which may 
 have been called to his attention, unless the same shall 
 have been previously disposed of b}^ the Commissioner. 
 After the Primary Examiner has held the claims to be 
 patentable and the Examiner of Interferences and the 
 Examiners in Chief have omitted or declined to call the 
 attention of the Commissioner to the non-patentability of 
 the issue, or where the Commissioner has declined to re- 
 view the decision of the Primary Examiner, after his at- 
 tention has been called to the alleged non-patentability 
 of the issue, the Court of Appeals will consider the pat- 
 entability' of the issue settled, except in an extraordinary 
 case. Soheij v. Ilolschlaw, 126 0. G. 3041, 28 App. D. C. 
 65; Allen v. Lowry, 116 0. G. 2253 (1905). 
 
 87. No Right to Make the Claims. Since the decision 
 of the Court of Appeals, D. C, in Podelsack v. Mclnner- 
 
 43
 
 ney, 26 App. D. C. 399, the question of the right of a 
 party to make the claims of the issue, has been uniformly 
 held to be an ancillary question to be considered in de- 
 termining the question of priority of invention and this 
 question may be raised on final hearing and on appeal. 
 As a result of this decision Rule 130 was promulgated, 
 by the provisions of which, where the patentability of a 
 claim to an opponent is material to the right of th^ party 
 to a patent, said party may urge the non-patentability 
 of the claim to his opponent at final hearing and on ap- 
 peal, but he can not raise the question unless he shall 
 have duly presented a motion under Rule 122 for disso- 
 lution upon that ground, or show good reason why such 
 motion was not presented. It was therefore held in 
 McBerty v. Shore & Shore, 175 0. G. 843 (1911), that 
 the Examiners in Chief properly awarded priority upon 
 the ground that one of the parties had no right to make 
 the claims. Following further the development of the 
 practice we find in Cosper v. Gold ct Gold, 151 0. G. 194, 
 34 App. D. C. 194, the Court of Appeals dismissed the 
 appeal upon the ground that it was taken from a deci- 
 sion of the Commissioner dissolving the interference be- 
 cause Cosper had no right to make the claims of the issue, 
 and under such circumstances it was not a final decision 
 which could be appealed to that court. Thereupon the 
 Commissioner entered an award of priority based upon 
 Cosper 's lack of right to make the claims and from this 
 decision Cosper appealed to the Court of Appeals, and it 
 was held that under the practice established by the de- 
 cision of Podclsack v. Mclnncrncy, two questions arise 
 in every interference case where the right of one of the 
 parties to make the claims of tlie issue are presented on a 
 motion to dissolve upon that ground, to wit: the right to 
 make the claims, and the priority of invention. If the 
 first sluill he decided adversely to the claimant, the 
 foniiwl award of priority goes to his opponent as a mat- 
 ter of course. But in Carlin v. Goldberg, 45 App. D. C. 
 
 44
 
 540, 23G 0. G. 1222; 1917 C. D. 12S, it was held that no 
 award of priority could be made on a motion to dissolve 
 upon this ground, before proofs are taken, and it was 
 pointed out that in Cosper v. Gold the judgment was 
 entered after the interference had been tried and the 
 question of priority hinged upon the question as to 
 whether Cosper had a right to make the claims. Where 
 there has been no hearing upon the question of priority, 
 no award of priority can be made on motion to dissolve. 
 
 On motion to dissolve on the ground that a party has 
 no right to make the claims, the sole question to be con- 
 sidered is whether the specification and drawings of the 
 application are sufficient to justify the allowance of the 
 claims in question. Seacomhe v. Burke, 182 0. G. 973 
 (1912). 
 
 A dissolution on the ground that a party has no right 
 to make the claims, is merely a ruling that it was a mis- 
 take to declare the interference as to that party. Camp- 
 hell V. Dyson v. Dunham, 242 0. G. 253 (1916). 
 
 Abandonment of the invention goes to the question of 
 the right to make the claims. Felsing v. Nelson, 121 0. 
 G. 1347 (1906). 
 
 Where the issue was alleged to be substantially the 
 same as that of a prior interference between the same 
 parties, and the senior party had been defeated on the 
 question of priorit}^, it was held that the question pre- 
 sented was one involving the right of the senior party to 
 make the claims. Eschinger v. Drummond, etc., 121 0. 
 G. 1348 (1906). 
 
 Where the moving party alleges that he has no right 
 to make the claims, tlie motion will be refused transmis- 
 sion, because if he is of the opinion that he has no right 
 to make the claims, he should take action in accordance 
 with the provisions of Rule 125, or he may take no ac- 
 tion whatever in the interference and permit judgment 
 to go by default. MiUer v. Perham, 121 0. G. 2667 
 (1906); Kinneij v. GoodMe, 123 0. G. 1663 (1906); 
 
 45
 
 Goodwin v. Smith, 123 0. G. 998 (1906). But Commis- 
 sioner Billings allowed the filing of motions under such 
 circumstances. And where the claims were suggested 
 under Rule 96, a different rule prevails, and a party may 
 properly move to dissolve on the ground that he has no 
 right to make the claims, but in such case he must state 
 specifically the reasons upon which his motion is based. 
 Hermsdorf v. Driggs v. Schneider, 133 0. G. 1189 
 (1908). 
 
 The facts which will support a motion to dissolve on 
 the ground that a party has no right to make the claims, 
 relate to the extent of disclosure, estoppel, operativeness, 
 and the like, and if established will result in rejection of 
 the claims to which they are applicable. Booth, et al., v. 
 Hanan, et al., 123 0. G. 319 (1906). 
 
 Alleging on motion to dissolve, facts which relate to 
 priorit.Y does not present anj^ question for consideration 
 on such motion, and it will be refused transmission. 
 Dickinson v. Hildreth, 122 0. G. 1397 (1906). 
 
 Recommendation by Examiners in Chief. If the Exam- 
 iners in Chief in affirming a decision of the Law Exam- 
 iner holding that a party has no right to make the 
 claims, recommends that the other party also has no right 
 to make the claims, such other party may appeal ex parte 
 from such recommendation. Woodhridge v. Conrad, 165 
 0. G. 241 (1911). 
 
 A party cannot be deprived of his right to make claims 
 because his structure performs some function in addi- 
 tion to what is called for by the claims. Miel v. Young, 
 ]26 0. G. 2591 (1906), 29 App. D. C. 481. 
 
 That a partj^ is not entitled to the date of an earlier 
 application because the claim was not made therein, and 
 because there was included a disclaimer of it, relates to 
 the right of the party to make the claims. Dittgen v. 
 rarmenter, 99 O. G. 2966; 1902 C. D. 218. 
 
 That a party's application did not disclose tlie inven- 
 tion until a certain amendment was filed therein, is a 
 
 46
 
 contention that he has no right to make the claims, and 
 should be presented in a motion to dissolve and not in a 
 motion to shift the burden of proof. Tripp v. Wolff v. 
 Jones, 103 0. G. 2171 (1903). 
 
 The fact that an issue includes an element of a com- 
 bination which one party does not disclose, is ground for 
 dissolution on the ground that such party has no right 
 to make the claim. Bodwitch v. Todd, 98 0. G. 792; 
 1902 C. D. 27. 
 
 Inoperativeness should not be insisted upon in a mo- 
 tion to dissolve except in a clear case. Bodwitch v. Todd, 
 98 0. G. 792. 
 
 If a party's structure is capable of performing the 
 function in question, it is immaterial whether or not his 
 description refers to it. Western Electric Co. v. Sperry 
 Electric Co., 65 0. G. 597 ; Fenivick v. Dixon & Dixon, 
 15 Gour. 71-23 (Sept., 1903). 
 
 88. Disclaimer — Rule 107. Rule 107 provides: An 
 applicant involved in an interference may, with the writ- 
 ten consent of the assignee, when there has been an as- 
 signment, before the date fixed for the filing of his pre- 
 liminary^ statement (Rule 110), in order to avoid the 
 continuance of the interference, disclaim under his own 
 signature, attested by two witnesses, the invention of the 
 particular matter in issue, and upon such disclaimer and 
 cancellation of any claims iuA^olving such interfering 
 matter, judgment shall be rendered against him, and a 
 copy of the disclaimer shall be embodied in and form 
 part of his specification (See Rule 182). 
 
 Were a disclaimer is filed, such disclaimer only ex- 
 tends to the particular claim or claims as to which the 
 interference has been declared, and the judgment fol- 
 lowing does not effect the question of invention as to 
 other claims, although they may contain other interfer- 
 ing matter. Reed v. Concrete Machinery Co., et al., 239 
 Fed. 869 (C. C. A. 7th Cir. 1916). An assignee of entire 
 interest may disclaim invention. Moore & McKee v. 
 
 47
 
 Bradley, etc., ISO 0. G. 879 (1912). A judgment of 
 prioritr may be avoided by disclaimer, or by filing an ap- 
 priority may be avoided by disclaimer, or by filing an ap- 
 only. Fend v. Miggett, 223 0. G. 649 (1915). 
 
 Disclaimer by Refusal to Make Claims TJiider Eule 96. 
 If an applicant refuses to make claims suggested under 
 Rule 96, he disclaims the interfering subject matter. 
 Fd-ris. 114 0. G. 541. 
 
 Oral Disclaimer. If a party to an interference in an- 
 swer to a question propounded to him in the taking of 
 testimony, states that he does not claim to be the inven- 
 tor of the subject matter in controversy, a judgment of 
 priority can not be awarded to him. Oliver v. Felbcl, 
 100 0. G. 23S4 ; 1902 C. D. 565. A statement by an ap- 
 plicant to his assignee that he does not regard himself 
 as the inventor of the subject matter claimed, is not suf- 
 ficient to oA'ercome his oath that he is the inventor there- 
 of, especially where it appears that he is hostilje to his 
 assignee. GiUons v. Peller, 127 0. G. 3643 (1907). 
 
 89. Miscellaneous Motions to Dissolve. The grounds 
 for dissolving interferences are set forth in Rule 122, and 
 a motion which does not state any of the grounds therein 
 enumerated, is not a proper motion. Keith v. George, 16 
 Gour. 19-4. However, there have been many attempts 
 of a miscellaneous character to dissolve interferences for 
 grounds not mentioned in Rule 122. and which have been 
 invariably refused transmission, illustrations of which 
 are. that a party failed to file a supplemental oath, or 
 that the oath is defective. The filing of an oath is an ex 
 parte matter and not a ground for dissolution. Graham 
 V. Langhaw, 164 0. G. 739 (1911) ; Rcitzcl v. Harmatta, 
 161 0. G. 1043 (1910) ; Howe v. Brinkmann, 133 0. G. 
 515 (1908) ; Emmet v. Fullagcr, 130 0. G. 2719 (1907). 
 Motions to dis.solve upon the grounds of public use, and 
 ba.sed upon ex parte affidavits, will not be transmitted. 
 Davis V. Srrift, 96 0. G. 2409; 1901 C. D. 134: Shrum 
 V. Baningartcn, 104 0. G. 577 (1903); Dunn v. Doug- 
 
 48
 
 lass, 184 0. G. 804 (1912) ; Barhcr v. Wood, 128 0. G. 
 2835 (1907). Nor where it is alleged that the structure 
 of one of the parties is greatly superior to that of the 
 other. Kolh v. Hemingway v. Curtis, 122 0. G. 1397 
 (1906). Nor on the ground that a party is intending to 
 rely upon a certain machine in the production of his 
 testimony. Barr v. Bugg, 122 0. G. 2061 (1906). Nor 
 where the question raised is one involving the burden 
 of proof. Toivnsend v. Ehret, etc., 137 0. G. 1484 (1908). 
 Nor where it is alleged that an affidavit filed under Rule 
 75 is false. Schider v. Barnes, etc., 140 0. G. 509 (1909). 
 Nor that a party has no right to make the claims because 
 of his delay in making them. Manly v. Williams, 21 
 Gour. 85-11 (Aug., 1909) ; Long v. Flagg, etc., 190 0. 
 G. 265 (1913). Nor that the claims were formulated by 
 the Examiner. Mixsell v. Lovejoy, 186 0. G. 294 (1912). 
 Nor upon the ground of intervening rights in the issu- 
 ance of a patent. Perkins & Reqna v. Weeks, 188 0. G. 
 1052 (1913). Nor that the invention was made by a 
 third party. Welch v. Aufiero, 219 0. G. 930 (1915). 
 Nor merely alleging abandonment of the invention by 
 reason of delay in renewing application. GeJiring & 
 Cadden v. Barry, etc., 225 0. G. 371 (1914). Nor al- 
 leging prior knowledge and use as a bar. Murphy v. 
 Borland, 132 0. G. 231, and cases there cited. Nor that 
 the issues are substantially the same as that of a prior 
 interference. Sugden & Pidgin v. Laganke, etc., 130 0. 
 G. 1484 (1907). Nor an allegation by a sole inventor 
 that himself and another as joint inventors did not in- 
 vent the device. Bahcock v. Pickard, etc., 21 Gour. 85- 
 13 (Nov., 1909) ; Jarvis v. Quincy, 113 0. G. 550. Nor 
 where the motion is based on affidavits as to inoperative- 
 ness. Horton v. Leonard, 155 0. G. 305 ; Keyes & Kraus 
 V. Yunck, 182 0. G. 248 (1912). Nor where the facts 
 set forth in the motion are based upon testimony taken. 
 Ghallenherger v. Andreivs, 100 0. G. 3013 ; 1902 C. D. 
 346; Sullivan v. Thompson, 94 0. G. 585; 1902 C. D. 
 6 49
 
 21. Nor that one of the parties is not an original inven- 
 tor but derived his knowledge from another. Corey, etc., 
 ■v. Blakey, 115 0. G. 1328 (1905). Nor on the ground 
 that a party desires to present claims of a broader na- 
 ture, since proofs may be offered in the interference to 
 cover any broader claims which the applicant may later 
 present. Phelps v. Wormley, etc., 118 O. G. 1069 (1905). 
 Nor on the ground that the moving party is shown by the 
 testimony in another interference to be the first inven- 
 tor. Newel V. Rose, 119 0. G. 337 (1905) ; Dorr v. Ames 
 & Rearson, 15 Gour. 35-6 (June, 1903). Nor where the 
 question presented is one which may be determined on 
 final hearing and which should be so determined. Stru- 
 Ue V. Young, 121 0.,G. 339; 1906 C. D. 95. 
 
 EVIDENCE. 
 
 90. The subject of evidence as here treated has special 
 reference to interference proceedings and such questions 
 as are likel}^ to arise in presenting proofs in such cases. 
 
 91. Burden of Proof. Kule 116 provides that the sev- 
 eral parties to interferences will be presumed to have 
 made the inventions in the order in which they filed their 
 completed applications for patents clearly illustrating 
 and describing the invention; and the burden of proof 
 shall rest upon the party who shall seek to establish a 
 different state of facts. 
 
 92. What is the Filing Date. The filing dates are the 
 respective dates on which the applications were filed in 
 the Patent Office. However, if the application is a true 
 division of an earlier application, then the later applica- 
 tion takes the filing date of the earlier application. This 
 is only true where tlie earlier application clearly dis- 
 closes the same invention. Lov)ry v. Spoon, 110 0. G. 
 858; Meyer v. Sarfert, 96 0. G. 1037; Cain v. Park, 
 86 0. G. 797, 14 App. D. C. 42 ; Bundy v. Rmnhargcr, 
 92 0. G. 2002; Toledo Scale Co. v. Dunn, 214 0. G. 
 
 50
 
 1321, 43 App. D. C. 377 ; Curtis v. Lindmark, 171 0. G. 
 484 and 215, 37 App. D. C. 322. 
 
 Earlier Application as Evidence. Even though the 
 Primary Examiner fails to include an earlier application 
 by one of the parties, in the declaration of interference, 
 he is not deprived of the benefit of it, if it discloses the 
 invention, since he may introduce it as a part of his evi- 
 dence. Mmiro V. Alexander, 106 0. G. 1000 (1903) ; 
 Greenawalt v. Mark, 111 0. G. 2224; Oshorne v. Arm- 
 strong, 114 0. G. 2091. 
 
 93. Divisional Application — Evidence. The action of 
 the Primary Examiner as to what is and what is not a 
 division, is not controlling upon the Examiner of Inter- 
 ferences, since it is a matter relating to priority on which 
 it is the peculiar province of the Examiner of Interfer- 
 ences to pass judgment, and where the Primary Exam- 
 iner permitted an application to be amended by adding 
 what in his opinion was not new matter, such ruling is 
 subject to the independent judgment of the Examiner of 
 Interferences. Rohinson v. Copeland, 102 0. G. 466 
 (1903). 
 
 94. Official Records as Evidence. Subdivision (e) of 
 Rule 154, provides that upon notice given to the oppo- 
 site party before the closing of the testimony, any of- 
 ficial record, and nwy special matter contained in a 
 printed publication, if competent evidence and pertinent 
 to the issue, may be used as evidence at the hearing. 
 This section relates to two classes of evidence, official 
 records and printed publications. 
 
 An official record is a record kept by an official, though 
 usually it must be one required by law to be kept. Thus 
 in the State of New York, where death certificates are 
 filed in the Health Department, it was held tliat such 
 certificates are ''Official Records" within the meaning of 
 Code Civil Procedure, Sec. 959, providing that certain 
 official records shall be presumptive evidence of their 
 contents. Rohinson v. Supreme Commandery, Order of 
 
 51
 
 Golden Cross, 79 N. Y. Supp. 13, 16. Judgments, orders 
 and decrees are property proved by the minutes or cal- 
 endar entries where the latter form the legal record 
 thereof, but if the record consists of a judgment roll or 
 some more formal writing, the latter if in existence, is 
 the proper evidence. It is not the purpose to here under- 
 take to state the various classes of official records and 
 how they may be introduced in e%'idence, but merely to 
 call attention to the subject in a general way to illus- 
 trate the class of evidence that would come within the 
 foregoing subdivision of Rule 154. For an extended dis- 
 cussion of the subject of Official Records as e%'idence, 
 reference is made to Encyclopedia of Evidence,' Vol. 10, 
 page 716. 
 
 Testimony taken in another action is not rendered ad- 
 missible by the introduction of the record in such ac- 
 tion. Encyclopedia of EWdeuce, Vol. 10, page 761. The 
 Rules of Practice relating to the introduction of testi- 
 mony taken in another interference, follow in a general 
 Avay the rules of e^adence in courts of law and recognize 
 tliat such testimony is not an official record referred to 
 in subsection (e) of Rule 154. Therefore special provi- 
 sion is made for introducing testimony taken in another 
 interference. Rule 157. 
 
 An earlier application may become available as e\i- 
 dence, even though not involved in the interference, by 
 introducing a certified copy thereof. To avoid any ele- 
 ment of doubt there should also be introduced a certi- 
 fied copy of the filing date, or of the notice of allow- 
 ance, if allowed. In Cain v. Pari', 14 App. D. C. 42; 
 1899 C. D. 278, 86 0. G. 797, a certified copy of the ap- 
 plication had been introduced in evidence and the Com- 
 missioner took judicial notice of his own records and 
 found that the application was allowed and a pending 
 application when the application in interference was 
 filed. In Robinson v. Seelinger, 116 0. G. 1735 (1905), 
 25 App. D. C. 237, thn Examiners in Chief had taken 
 
 52
 
 judicial notice of the filing of a prior application (which 
 had not been introduced in evidence) and the court held 
 that it could not be expected to consider something which 
 is not a record open to the public and which was in no 
 form before the court as was the application which was 
 taken judicial notice of in Cain v. Park, supra. It would 
 seem, therefore, that while the office may take judicial 
 knowledge of its own action upon an application and the 
 date on which such action was taken, it is necessary to 
 introduce a certified copy of the application to make it 
 available as evidence. 
 
 Any special matter contained in a printed publica- 
 tion may be used as evidence at the hearing if before 
 closing the testimony notice is given to the opposite party 
 as provided in subdivision (e) of Rule 154, of intention 
 to so use the same. A question may sometimes arise as to 
 what is and what is not a printed publication. In Wal- 
 ker on Patents, Sec 56, it is said: "A printed publica- 
 tion is anything which is printed, aud without any in- 
 junction of secrecy, is distributed to any part of the 
 public in any country ; and such publication may nega- 
 tive novelty. Indeed, it seems reasonable that no actual 
 distribution need occur, but that exposure of printed^ 
 matter for sale is enough to constitute a printed publi- 
 cation. But the mere existence of a printed thing is 
 not a printed publication, though its deposit in a public 
 library is. A drawing, in a prior patent or printed pub- 
 lication, if its meaning is really undeniable, may negative 
 novelty. ' ' 
 
 95. Continuous Application Takes Filing Date of 
 Original Application. Where an application is a continu- 
 ation of a prior application which became abandoned, 
 the applicant is entitled to the filing date of the earlier 
 application as to everything that it discloses, even though 
 the later application may contain new matter not shown 
 in the original application. Tripler v. Linde, 101 0. G. 
 2288; 1902 CD. 444; Gilbert-Stringer v. Johnson, 102 
 
 53
 
 0. G. 621 (1903) ; Cain v. Park, 14 App. D. C. 42, 86 0. 
 G. 797. 
 
 Identical Filing Dates. Where both applications are 
 filed ou the same day it is the practice of the office to 
 throw the burden upon the one who was last to execute 
 his application. 
 
 96. Burden as Between Applicant and Patentee. Where 
 through inadvertence an interference was not declared 
 between two pending applications for the same inven- 
 tion until after a patent had been issued to the junior 
 applicant, the patentee does not thereby gain any ad- 
 vantage with respect to the burden of proof, but is in the 
 same situation he would have been had his patent not 
 been granted. Evans v. Associated Automatic Sprin- 
 kler Co., 241 Fed. 252, 229 Fed. 1007 ; Cutler v. Leonard, 
 31 App. D. C. 297, 136 0. G. 438 ; Andrews v. Nilson, 
 123 0. G. 1667 (1906), 27 App. D. C. 451. 
 
 If the patentee was the last to file he is properly the 
 junior party. Furynan v. Dean, 114 0. G. 1552 ; Miehle 
 V. Read, 18 App. D. C. 128, 96 0. G. 426 ; 1901 C. D. 
 396 ; Paul v. Hess, 115 0. G. 251, 24 App. D. C. 462. 
 
 Patent Granted During- Forfeiture of Application. 
 Where a party permits his application to become forfeit- 
 ed, and while it is forfeited another files an application 
 and secures a patent for the same invention which is put 
 in interference with a renewal of the forfeited applica- 
 tion, the burden of proof is upon the renewal applicant 
 notwithstanding the earlier date of his first application. 
 Lutz V. Lewis, 110 0. G. 2014. There is a distinction as 
 to the burden of proof as between a patent granted while 
 opposing party's case is pending and a patent granted 
 while opposing party's case is forfeited. Lowry v. Spoon, 
 110 0. G. 858. 
 
 97. Proof Beyond a Reasonable Doubt — In What Cases. 
 Where one party is a patentee and the other party filed 
 his application after the issue of the patent, the burden 
 is upon tlie applicant to prove beyond a reasonable doubt 
 
 54
 
 that he reduced his invention to practice before the pat- 
 ent was granted. French v. Ilalcornl), 26 App. D. C. 
 307, 120 0. G. 1824 (1905) ; Cheniey v. Clauss, 25 App. 
 D. C. 15, 116 0. G. 597 (1905) ; Sendelhach v. Gillette, 
 109 0. G. 276, 22 App. D. C. 168; Talhot v. Monell, 23 
 App. D. C. 108, 109 0. G. 280 ; Sharer v. McHenry, 98 
 0. G. 585; 1902 C. D. 503 (See also 98 0. G. I486; 1902 
 C. D. 514, 103 0. G. 2174 and 1165). 
 
 Reasonable Doubt Defined. Efforts of courts to define 
 what is meant by "reasonable doubt" have not resulted 
 in any established definition. However the definition 
 stated in Words & Phrases, Vol. 7, page 5964, and sup- 
 ported by abundant authorities, is as follows : 
 
 "Evidence is sufficient to remove a reasonable doubt 
 when it convinces the judgment of an ordinarily prudent 
 man of the truth of a proposition with such force that 
 he would voluntarily act upon that conviction, without 
 hesitation, in his own most important affairs." Stout v. 
 State, 90 Ind. 1, 12; Jarrcll v. State, 58 Ind. 293, 296; 
 Arnold v. State, 23 Ind. 170 ; Troop v. State, 92 Ind. 13- 
 16; Harris v. State, 58 N. E. 75, 77, 155 Ind. 265; Wil- 
 liams V. U. S. 69 S. W. 871, 874 ; MUes v. United States, 
 103 U. S. 304, 309, 26 L. Ed. 481 ; United States v. Allis, 
 73 Fed. 165, 167 ; United States v. Kenney, 90 Fed. 257, 
 262; United States v. Yoiitsey, 91 Fed. 864, 868; United 
 States V. Fitzgerald, 91 Fed. 374, 376; United States v. 
 Wright, 16 Fed. 112, 114; United States v. Niemeyer, 94 
 Fed. 147, 149; United States v. Politzer, 59 Fed. 273, 
 279 ; Gannon v. People, 127 111. 507 ; People v. Hughes, 
 137 N. Y. 29; Ryan v. State, 83 "Wis. 486; Butler v. 
 State, 92 Ga. 601. 
 
 98. Shifting the Burden of Proof. It often becomes 
 a matter of controversy as to which party has the burden 
 of proof and this usuall}^ arises out of the uncertainty 
 about the filing dates to which the respective parties are 
 entitled. A party may discover after an interference has 
 been declared that he is made the junior party therein 
 
 55
 
 where as he should have been made the senior party by 
 reason of an earlier application filed by him, or by rea- 
 son of his application being a continuing one, and which 
 discloses exactly the same invention as that involved in 
 interference. Under such circumstances he may make 
 a motion to shift the burden of proof. This motion is 
 within the jurisdiction of the Examiner of Interferences 
 and not the Primary Examiner, and there is no appeal 
 from his decision prior to final hearing. Eoiilet d; Nich- 
 olson V. Adams, ll-l: 0. G. 1827; Scott v. Southgate, 121 
 0. G. 689; Osborne v. Armstrong, lU 0. G. 2091. 
 
 Evidence to Support the Motion. Xo evidence is nec- 
 essary to support the motion where the record in the 
 respective cases show all the facts necessary to determine 
 the question. Bundg v. Bumtargfr. 92 0. G. 2001. 
 
 99. Foreign Application — Burden. WTiere a party 
 claims the benefit of a foreign application, the notice of 
 interference will be prepared in accordance with the 
 date of filing of the applications in this country ; but the 
 Examiner of Interferences may, upon a proper showing, 
 shift the burden of proof and give the party the benefit 
 of the filing date of his foreign application. Steel d; 
 Steel V. Myers, 205 0. G. 1021 ; 191-1 C. D. 74. 
 
 100. Priority — Evidence in Interferences. The testi- 
 mony taken in an interference must be confined to the 
 question of priority of invention of the issue. Brill v. 
 Adams v. Velelacher, 99 0. G. 2966; 1902 C. D. 220. 
 
 Priority means priority in point of time to make the 
 invention. Trufant v. Brindle v. Brown, 101 0. G. 1608; 
 1902 C. D. 397. 
 
 Testimony must not be at variance with the prelim- 
 inary statement, as to conception, disclosure and reduc- 
 tion to practice, and testimony taken tending to estab- 
 lish earlier dates, if admitted, will be effective only for 
 the purpose of establishing the dates alleged. Cross v. 
 Phillips, 14 App. D. C. 228, 87 0. G. 1399; 1899 C. D. 
 342; Funk v. Matterson v. Haines, 100 0. G. 1563; 1902 
 
 56
 
 C. D. 297, 20 App. D. C. 28o, 100 0. G. 1764; 1902 C. D. 
 553; Lowrie v. Taylor cO Taylor, 118 0. G. 1681 (1905) ; 
 Fowler v. Boyce, 118 0. G. 2534 (1905), 27 App. D. C. 
 55, 122 0. G. 1726 (1906), 121 0. G. 1014; Foivler v. 
 McBerty, 121 0. G. 1015 (1906) ; Lowrie v. Taylor & 
 Taylor, 27 App. D. C. 522, 123 0. G. 1665 (1906) ; Her- 
 man V. Fullman, 109 0. G. 1888 ; Hammond v. Basch, 
 115 0. G. 804, 24 App. D. C. 469. 
 
 101. Conception — Evidence of. A conception of the 
 mind is not an invention until represented in some phy- 
 sical form. Clark Thread Co. v. Wiliamantic Linen Co., 
 140 U. S. 489, 35 L. Ed. 521, 525 ; Voightmami, et al., 
 V. Perkinson, et al., 138 Fed. 56 ; Mergenthaler v. Scud- 
 der, 11 App. D. C. 264, 81 0. G. 1417 (1897). In some 
 instances statements and conversations of the inventor 
 maybe shown to establish conception of the invention. 
 In many cases of inventions, it is hardly possible in any 
 other manner to ascertain in the precise time and exact 
 origin of the particular invention. The invention itself 
 is an intellectual process or operation ; and, like all other 
 expressions of thought, can in many cases be scarcely 
 made known, except by speech. The invention may be 
 consummated and perfect, and may be susceptible of 
 complete description in words, a month, or even a year 
 before it can be embodied in visible form, machine or 
 composition of matter. Conversations and declarations 
 of the inventor that he made a certain invention, and de- 
 scribing its details and explaining its operations, are 
 properly to be deemed an assertion of his right, at that 
 time, as an inventor to the extent of the facts and details 
 which he then makes known ; although the date of his 
 invention in such case would be the time when he makes 
 known the invention and not the time when he claims to 
 have first had it in mind, if that be a previous time. 
 Philadelphia tO Trenton Bailroad Co. v. Stimpson, 14 
 Peters 448, 10 U. S. Law Ed. 535, 542. If the inventor 
 orally describes his invention with sufficient clearness, 
 
 57
 
 even though he does not state all the details, that an 
 artisan can work out the details, he has disclosed an in- 
 vention, Westinghouse Electric & Mfg. Co. v. Stanley 
 Instrument Co., 133 Fed. 167. 
 
 Where an oral statement by the inventor is relied upon 
 to prove invention it must be shown not only that the 
 statement was sufficiently clear and complete to enable 
 one skilled in the art to make the machine, or practice 
 the process or art, but also that it was made to one who 
 understood it and remembered it with sufficient accuracy 
 to enable him to communicate it to the world. Stephens 
 V. Salishurtj, 1 McArthur's Patent Cases, 385. 
 
 102. Kinds of Evidence to Prove Conception. The evi- 
 dence may consist of oral or written description of the 
 invention, or drawing or model or partly of one of these 
 forms of evidence and partly of another. But we have 
 already seen that the description or drawing, or model, 
 must be known to some one other than the inventor and 
 the date of invention is the date upon which it is made 
 known to such other person or persons, hence this brings 
 us to the consideration of the question of disclosure, and, 
 later the corroboration of the inventor. 
 
 Disclosure. Disclosure in the sense of the patent law 
 must be made ordinarily to persons competent to under- 
 stand and appreciate the alleged invention. Merely 
 showing a device or drawing to witnesses who had no 
 understanding of the invention, can not be considered a 
 disclosure. It is therefore plain that in proving dis- 
 closure it should be shown clearly that the person to 
 whom the disclosure was made, understood the invention, 
 remembered it with sufficient accuracy to communicate 
 it to others, or could recognize the identical drawings or 
 device exhibited to him and explain their meaning, or 
 operation, or construction. Furthermore in order to 
 make such evidence available to establish a date of in- 
 vention, the witness or witnesses to whom the disclosure 
 was made must be able to in some manner fix the time of 
 
 58
 
 such disclosure with reasonable certainty, and, where 
 they are called upon to testify some years after the 
 event, great care should be exercised to establish, as near 
 as possible, a definite time of disclosure which will not 
 be dependent upon the uncertainties of memory as to 
 when such event took place. Eastman v. Houston, 95 0. 
 G. 20G4; 1902 C. D. 386, 18 App. D. C. 135-140; Henggi 
 V. Dallmeyer, 253 0. G. 514. A disclosure to one skilled 
 in the art to which the invention belongs, is sufficient. 
 Persons "skilled in the art" includes careful workmen 
 who are skilled in the particular line of business in 
 which they are engaged. Pupin v. Hut in i& Lehlanc v. 
 Stone, 100 0. G. 931 ; 1902 C. D. 269. Where the wit- 
 nesses make it appear that the inventor had in mind the 
 result to be accomplished, but not the means by which it 
 was to be done, conception and disclosure is not estab- 
 lished. CoU V. Goehel, 23 App. D. C. 75, 108 0. G. 1591 ; 
 Brooks V. Hillard, 106 0. G. 1237 (1903) ; Fenner v. 
 Blake, 30 App. D. C. 507, 134 0. G. 2244 (1908). The 
 disclosure must be full and clear as to all essential ele- 
 ments of the invention and such as was sufficient in it- 
 self to enable the party to whom the disclosure was made 
 to give the invention practical form and effect without 
 the exercise of invention on his part. Sendelhach v. 
 Gillette, 22 App. D. C. 168, 109 0. G. 276. Disclosing 
 matters which are old in the art, is not disclosing inven- 
 tion. French v. Holconih, 115 0. G. 506 (1905). Where 
 the inventor presents drawings witnessed and dated, it 
 should appear that the witnesses whose names are signed 
 thereto not only signed them on the date appearing on 
 the drawings, but that they understood the invention and 
 that the drawings at the time they are offered in evidence 
 are in the same condition that they were when they were 
 witnessed. Kirkcgaard cO Jchscn v. Ries, 125 0. G. 1700 
 (1906). Where the wife of an inventor is offered as a 
 witness to prove disclosure, it has been held that her tes- 
 timony should be corroborated. The soundness of this 
 
 59
 
 ruling may well be doubted. Hatter v. Barrett, 114 0. 
 G. 975. Where au original application is relied upon for 
 disclosure, it must appear that the invention in issue is 
 disclosed in that application as originally filed. Mc- 
 EmgJit V. Pohle, 30 App. D. C. 92, 130 0. 0.2069 (1907) ; 
 McMulkin v. Bollee, 126 0. G. 1356 (1906). (See Reduc- 
 tion to Practice and Dat€s. ) It is not necessary that an 
 apparatus used to carry out a process be disclosed in 
 order to constitute a disclosure of the process. Osborne 
 V. Armstrong, 19 Gour. 3-8 (Jan., 1907). Work done on 
 an invention in a foreign country is not available as evi- 
 dence to prove conception or reduction to practice in the 
 United States, R. S. Sec. 4923. DeKando v. Armstrong, 
 37 App. D. C. 314, 169 0. G. 1185. A disclosure to one 
 of two joint inventors is a disclosure to both. General 
 Electric Co. v. Steinlerger, 208 Fed. 699-714. Circum- 
 stances surrounding an alleged disclosure of invention 
 may be such as to discredit the evidence, as where Jenner 
 saw a notice of Dickinson's invention in 1900, and did 
 not file his own application for patent until he was in- 
 duced to do so by Hildreth in 1902, it was held that no 
 value can be attached to testimony on his behalf that he 
 made the invention in 1899. Jenner v. DicJiinson; Thi- 
 hodeau v. Dickinson, 117 0. G. 600 (1905). And where 
 for several years after the alleged conception, as ap- 
 peared from the evidence, manufacturers were demand- 
 ing a device of the kind in issue and the partj' made no 
 disclosure to such manufacturers nor any attempt to re- 
 duce to practice, but endeavored to sell patents upon 
 prior devices and failed on the express ground that they 
 did not possess the advantages found in the present in- 
 vention, it was held that his claims to early conception 
 and disclosure are not entitled to consideration. Hope, 
 Jr., V. Yoigt, 115 O. G. 1585 (1905), 25 App. D. C. 22. 
 
 103. Corroboration of Inventor. Corroborating evi- 
 dence means evidence which tends to support and render 
 more probable some other evidence — generally that al- 
 
 60
 
 ready produced — to the same point and like in character. 
 Encyclopedia of Evidence, Vol. 3, page 674. 
 
 The mere uncorroborated statements of an inventor are 
 not sufficient to show conception, disclosure or reduction 
 to practice. The same rule holds true as to joint inven- 
 tors because joint inventors constitute but a single party 
 and their minds and interests become one, hence they can 
 not corroborate each other. Freeman v. Garrels & Kim- 
 hall, 102 0. G. 1777 (1903) ; Mergenthaler v. Scuddcr, 
 11 App. D. C. 264, 81 0. G. 1477; Garrels, et al, v. 
 Freeman, 103 0. G. 1683, 21 App. D. C. 207; Paul v. 
 Hess, 113 0. G. 847 ; Podelsak & Podelsak v. Mclnner- 
 ney, 26 App. D. C. 399, 118 0. G. 835 (1905), 120 0. G. 
 2127. A witness may be able to corroborate the inventor 
 as to certain details of his invention, even though his 
 testimony does not corroborate him as to every detail 
 sought to be established. Dunhar v. Sckellengers, 125 0. 
 G. 348 (1906). Statements in an inventor's note book, 
 alleged to discloss the invention in issue, are insufficient 
 to prove conception, where it does not appear that the 
 entr}' was ever shown to anyone. French v. Holcomh, 
 26 App. D. C. 307, 120 0. G. 1824 (1905). Vague and 
 indefinite corroborating evidence of witnesses is insuffi- 
 cient to overcome a prior filing date of an opposing 
 party. McKnight v. Pohle & Croasdale, 105 0. G. 977 ; 
 Steinmetz v. Thomas, 31 App. D. C. 574, 137 0. G. 479 
 (1908) ; Smith v. Foley, et al, 136 0. G. 847 (1907) ; 
 Burson v. Vogel, 125 0. G. 2361 (1906). The evidence 
 should be clear and specific and not dependent upon in- 
 ferences. Robinson v. Thresher, 18 Gour. 21-21 (March, 
 1906) ; Lotz V. Kenny, 19 Gour. 51-10 (July 13, 1907). 
 The making of drawings on a specific date is not estab- 
 lished by witnesses who have not had possession of the 
 drawings since they were shown to them and who are 
 not able to testify that they are in the same condition at 
 the time their testimony is given as they were at the time 
 they were shown to them. Miller v. Blackhurn, 172 0. 
 
 61
 
 G. 549 (1911) ; Kirkegaard & Jebsen v. Ries, 125 0. G. 
 1700 (1906) ; Freeman v. Garrels & Kimball, 102 O. G. 
 1777. 
 
 104. Who May Be CoiToborating Witnesses. An as- 
 signee may testify as a corroborating witness, though his 
 testimonj^ woukl not be given the same weight as it would 
 if he were disinterested. Turnhull v. Curtis, 120 0. G. 
 2442 (1905). The wife of the inventor. Barter v. Bar- 
 rett, 114 0. G. 975. One joint inventor can not cor- 
 roborate another joint inventor. Freeman v. Garrels & 
 Kimhall, 102 0. G. 1777 (1903). 
 
 105. Importance of Date of Conception in Interference 
 Cases. In an interference case, the date of conception 
 and disclosure becomes important on the question of 
 priority, to the party who was last to file his application 
 or last to reduce to practice, so when he is the first to 
 conceive but the last to reduce to practice, he is entitled 
 to an award of priority where he has followed up his con- 
 ception and disclosure by due diligence, more particular- 
 ly diligence in reducing his invention to actual practice 
 than in filing his application for a patent or manufactur- 
 ing his device for public use. Oliver v. Felhel, 20 App. 
 D. C. 255, 100 0. G. 2384; 1902 C. D. 565; Cooke v. 
 Jones & Taylor, 116 0. G. 1181 (1904). 
 
 106. Diligence. Many interference cases turn on the 
 question as to which of the parties exercised diligence in 
 following up his invention and putting it into practical, 
 useful form. We have seen that invention is a mental 
 process, in the first instance, and that so long as it re- 
 mains in the mind of the inventor, undisclosed to any- 
 one else, it serves the world no purpose and does not 
 advance the arts or sciences. The inventor may refuse 
 to disclose his discoveries. The object of the public in 
 granting a patent is to obtain the benefit of the discovery 
 and therefore inventors are encouraged to put their dis- 
 coveries into practical useful form. Not only in patents, 
 but in many other affairs of life, the law rewards the 
 
 62
 
 diligent. An inventor may conceive an invention and 
 make drawings of it, but he will not be permitted to stop 
 at tliat point and through utter carelessness give it no 
 more consideration for a long period of time, if while he 
 is sitting idly by, another, more industrious, makes the 
 same discovery that he has made and proceeds with due 
 dispatch to put the discovery into form in which the 
 public can obtain the benefit thereof. There can be no 
 good reason for depriving this later, diligent, industrious 
 inventor of a reward in the form of a patent, merely to 
 accommodate the doless, idle inventor who has no excuse 
 for holding back his invention. 
 
 There are, however, many circumstances which may 
 contribute to prevent an inventor from putting his in- 
 vention into useful form, and for this reason we hear the 
 apparently delinquent as to what excuse he may have to 
 offer for not being more diligent in reducing his inven- 
 tion to actual practice or what excuse he may have for 
 not filing his application for a patent at an earlier date. 
 The excuses which have been offered cover a wide range, 
 and some have been found to be reasonable and legitimate 
 while others have been found to be insufficient as against 
 another inventor who has been diligent and has no need 
 to offer excuses. Diligence is therefore the essence of the 
 proper relation between conception and reduction to 
 practice, and must consist of the degree of effort that 
 can fairly be characterized as substantially one continu- 
 ous act. Tiventieth Century MacJmiery Co. v. Loew Mfg. 
 Co., 243 Fed. 373. There is no fixed rule of diligence ap- 
 plicable to all cases alike. Whether the delay shown 
 shall be regarded as excusable or inexcusable, must nec- 
 essarily depend upon the special circumstances surround- 
 ing the actions of the party in the particular case where- 
 in the application of the rule may be sought. Christen- 
 scn V. Ellis, 94 0. G. 2561 ; 1901 C. D. 326, 17 App. D. 
 C. 498. 
 
 Whoever first perfects a machine is entitled to the 
 
 63
 
 patent therefor and is the real inventor, although others 
 may have previously had the idea and made some experi- 
 ments toward putting it in practice, subject, however, to 
 this qualification, that if the party who conceives the in- 
 vention was at the time of a second invention by another 
 party using reasonable diligence in perfecting the same, 
 he is entitled to be recognized as the first inventor, al- 
 though the second to conceive may have been the first to 
 reduce to practice, either actually or constructively. In 
 other words, the inventor who starts work on an inven- 
 tion is required to keep working at it or show a good rea- 
 son for not working at it or applying for a patent. Funk 
 V. Matteson v. Haines, 20 App. D. C. 285, 100 0. G. 
 1764; 1902 C. D. 553; Agaivam Co. v. Jordan, 7 Wall. 
 583. 
 
 107. To What Diligence Relates. Diligence relates to 
 the efforts of a party to perfect his invention mechan- 
 ically and not to efforts to exploit the invention commer- 
 cially, so where a party is in straightened financial con- 
 dition, he should devote his attention to securing means 
 necessary to construct his machine, or, if unable to do 
 that, to securing assistance to apply for a patent. See- 
 herger v. Dodge, 113 0. G. 1415 ; Turnhull v. Curtis, 120 
 0. G. 2442 (1905). 
 
 108. Of Whom a Showing" of Diligence Is Required. 
 Diligence is required of the first to conceive but last to 
 reduce to practice. Under our patent system, he who 
 first arrives at a complete conception of an invention is 
 entitled to a patent therefor, unless the interest of the 
 public is compromised by his lack of diligence in dem- 
 onstrating that his invention is capable of useful opera- 
 tion. As between two inventors of the same thing, the 
 one who first reduces the discover}^ to practical operation 
 is deemed prima facie the true inve*itor without regard 
 to the date of his conception, but the earlier inventor 
 may overcome such presumption by satisfactory evidence 
 that he used due diligence to perfect and utilize the in- 
 
 64-
 
 vention, and actual reduction to practice is preferable 
 to that which is constructive merely. Laas, et al., v. 
 Scott, et al., 161 Fed. 122; Eastern Paper Bag Co. v. 
 Coniinental Paper Bag Co., 142 Fed. 479, 516; Conti- 
 nental Rubber Works v. Single Tube, etc., Co., 178 Fed. 
 452 ; Gaboivsky v. Gallaher, 191 0. G. 835. 
 
 109. When Not Applicable. A showing of diligence is 
 not required of the inventor who was the first to reduce 
 his invention to practice. Grabowsky v. Gallaher, 39 
 App. D. C. 548, 191 0. G. 835; Paul v. Johnson, 23 App. 
 i). C. 187, 109 0. G. 807 ; Thompson v. Storrie, 245 0. G. 
 845, 46 App. D. C. 324; Henderson v. Gilpin, 186 0. G. 
 289. 
 
 110. At What Time Diligence Is Required. One who 
 is the first to conceive but the last to reduce to practice, 
 must show due diligence from a time just previous to the 
 entry of his opponent into the field. Scott v. Laas (& 
 Spo7ienburg, 118 0. G. 1367 (1905) ; Braun v. Wahl, 
 45 App. D. C. 291, 228 0. G. 1458; Givens v. Warren, 
 216 0. G. 1013, 44 App. D. C. 10 ; Christie v. Seybold, 
 55 Fed. 69. 
 
 111. Comparative Diligence. Comparative diligence 
 of the parties is not material. Paul v. Johnson, 109 0. G. 
 807, 23 App. D. C. 187. 
 
 112. Work On Auxiliary Inventions. That the inven- 
 tor was engaged in work on an auxiliary invention is gen- 
 erally no excuse except where it is necessary to have the 
 auxiliary invention perfected in order to use the inven- 
 tion in issue. Stapleton v. Kinney, 18 App. D. C. 394, 
 96 0. G. 1432 ; 1901 C. D. 414 ; Lotterhand v. Hanson, 
 23 App. D. C. 372, 110 0. G. 861 ; Luby v. Taylor, 118 0. 
 G. 835 (1905) ; TuruhuU v. Curtis, 120 0. G. 2442 
 (1905). 
 
 113. Work on Other Forms of the Device. That the 
 inventor was at work on other forms of the device is or- 
 dinarily no valid excuse for doing nothing on the form 
 of device in issue. Clement v. Bichards, etc., 113 0. G. 
 
 y 65
 
 1143; Briggs v. Lillie, etc., 116 0. G. 871 (1904) ; Jones 
 V. Wolff, 17 Gour. 53-8 (July, 1905). 
 
 114. Work on Other Inventions. That the inventor 
 was engaged in perfecting other inventions is no valid 
 excuse for laying aside the invention in issue. Rohin- 
 son V. Copeland, 111 0. G. 579; Liherman v. Williams, 
 23 App. D. C. 223, 109 0. G. 1610 ; Tmjlor v. Westing- 
 Jiouse, 119 0. G. 1257 (1905) ; Kilhourn v. Hiner, 124 
 0. G. 1841 (1906) ; Tower v. Yost, 19 Gour. 66-3 (Jul}^ 
 1907). 
 
 115. Business Convenience. While the inventor is not 
 required to devote his entire time to the reduction of his 
 invention to practice under circumstances which would 
 ordinarily' deprive him of the means whereby he ob- 
 tains a livelihood, still he will not be permitted to offer 
 as a valid excuse that because of a certain contract he 
 had entered into he was prevented from perfecting his 
 invention, or applying for a patent, or that his personal 
 business commanded his time in another direction, or 
 that he delayed action for the purpose of interesting 
 some person of large capital for exploitation of the in- 
 vention. Watso7i V. TJiomas, 106 0. G. 1776 (1903) ; 
 Miehle v. Read, 18 App. D. C. 128, 96 0. G. 426 ; 1901 
 C. D. 396; Clement v. Richards, etc., 113 0. G. 1143; 
 RoUnson v. Copcland, 24 App. D. C. 68, 112 0. G. 501 ; 
 Taylor v. Westinghouse, 119 0. G. 1257 (1905) ; See- 
 herger v. Dodge, 114 0. G. 2382, 24 App. D. C. 476-485 ; 
 Wyman v. Donnelly, 21 App. D. C. 81, 87 ; Wilson & 
 Willard Mfg. Co. v. Bole, et al., 227 Fed. 607, 610. 
 
 116. Poverty. Where poverty is offered as an excuse 
 for inactivity the claim will be carefully scrutinized, in- 
 cluding the credit of the applicant, his expenditures in 
 other directions, his earnings, his efforts to obtain as- 
 sistance from others, and if too poor to construct his 
 machine it must also appear that he was too poor to 
 apply for a patent at an earlier date. Usually this ex- 
 cuse has not been established. Turnhull v. Curtis, 123 
 
 66
 
 0. G. 2312 (1906) ; Feinherg v. Cowan, 29 App. D. C. 
 80, 125 0. G. 667 (1906), 128 0. G. 889; Woods v. Poor, 
 126 0. G. 391 (1906) r I^onnelly v. Wymcm, 103 0. G. 
 657 (1903). Where poverty is the alleged excuse for 
 not filing' an application, it must be shown that the cir- 
 cumstances were of a compelling nature and not merely 
 a matter of business convenience, and the filing of other 
 applications in the meantime would rebut any such claim. 
 Paul V. Hess, 113 0. G. 847, 115 0. G. 251 ; Turnhull v. 
 Curtis, 120 0. G. 2442 (1905) ; 3IcNeal v. Macey, 106 0. 
 G. 2287 (1903) ; Gmons v. Peller, 124 0. G. 624 (1906). 
 
 117. Commercial Diligence Is of No Consequence. 
 Where the inventor spends his time and efforts to get 
 investors interested in exploiting his invention commer- 
 cially, or in trying to interest a corporation in adopting 
 his invention, and does nothing to perfect his invention 
 mechanically and test its efficiency, he is not diligent in 
 the direction which the law requires, Seeherger v. 
 Dodge, 113 0. G. 1415, 24 App. D. C. 476, 114 0. G. 
 2382; Gallagher v. Hein, 25 App. D. C. 77, 115 0. G. 
 1330 (1905) ; Turnhull v. Curtis, 120 0. G. 2442 (1905) ; 
 Laas & Siwnenhurg v. Scott, 122 0. G. 352 (1905). 
 
 118. Shifting Responsibility to Guardian or Assignee. 
 Since responsibility must rest upon someone, if a minor 
 attributes his lack of diligence to his guardian, then the 
 guardian must explain the reasons for delay. If through 
 the intervention of the guardian the minor was pre- 
 vented from perfecting his invention, then the minor 
 must show diligence after he became of age. Fuller v. 
 Jones, 115 0. G. 1066; Fuller v. Hewlett, 17 Gour. 3-6. 
 Nor can responsibility for lack of diligence be shifted to 
 an assignee. O'Connel v. Schmidt, 118 0. G. 588 (1905). 
 
 119. Making of Drawings and Blue Prints. The mak- 
 ing of drawings and blue prints is no evidence of dili- 
 gence unless it is followed promptly by construction and 
 testing of the device, or by application for a patent. 
 Watson V. Thomas, 108 0. G. 1590, 23 App. D. C. 65. 
 
 67
 
 Large Cost. The great cost of building and testing an 
 invention is no valid excuse, if within the means of the 
 inventor. Sceherger v. Bodge, 113 0. G. 1415. 
 
 Infringement Suit. Where a party relies upon the 
 existence of an infringement suit as the cause of his 
 delay, he must show what there was in that infringe- 
 ment suit to prevent his reducing to practice the inven- 
 tion in issue. Hammond v. Basch, 115 0. G. 804, 24 App. 
 D. C. 469. Belief that a prior patent covered the issue 
 is no excuse. Seebergcr v. Dodge, 114 0. G. 2382, 24 
 App. D. C. 476. 
 
 Sickness. Where one gives the excuse of sickness for 
 his inactivity, he must show that he was diligent up to 
 the time of his illness and subsequent thereto. Paul v. 
 Johnson, 106 0. G. 2013 (1903). 
 
 120. Time for Experimenting. Long delay in produc- 
 ing an invention will not be tolerated, especially where it 
 is shown that the inventor had, or could readily have ob- 
 tained facilities for speedy construction of his invention. 
 Coiirson v. O'Connor, 38 App. D. C. 484, 181 0. G. 544; 
 Slick V. Hansen, 39 App. D. C. 131, 181 0. G. 1076; 
 Bradley v. Miggett, 179 0. G. 1108 (1911). 
 
 121. Reasonable Diligence — What Is. Reasonable dil- 
 igence, like "reasonable doubt" is not capable of any 
 exact definition. What is a reasonable time in one case, 
 may under other circumstances be unreasonable. The 
 court will grant great latitude when the inventor is de- 
 layed by reason of circumstances over which he has no 
 control; but where the delay is caused by the negli- 
 gence of the inventor, or for a manifest ulterior purpose, 
 no leniency whatever should be extended. Nelson v. 
 Faueette, 143 0. G. 1348, 33 App. D. C. 217. 
 
 Reasonable Diligence Shown. For particular cases 
 where the parties have been held to have exercised rea- 
 sonable diligence under the circumstances shown, see 
 Rowe V. Brinkm^,n, 172 0. G. 1090 ; Cragg v. StricUand, 
 250 0. G. 255 ; Saner v. GroeUi, 239 0. G. 653 ; Oakes 
 
 68
 
 V. Young, 152 0. G. 1225; Davis v. Ilorton, 13G 0. G. 
 1768; Woods v. Poor, 130 0. G. 1313; Dunhar v. Schel- 
 lenhergcr, 125 0. G. 348 (1906) ; Davis v. Garrett, 123 
 0. G. 1991 (1906) ; Christcnscn v. Ellis, 94 0. G, 2561. 
 1901 C. D. 326; Roe v. Hanson, 99 0. G. 2550; 1902 C. 
 D. 546; Jones d- Taijlor v. ('ookr,!^ 0. G. 1493 (1905). 
 
 122. Diligence in Filing Application for Patent. After 
 reduction to practice of the invention, a mere delay of 
 the inventor in applying for a patent, in the absence of 
 concealment (see Title Concealment), abandonment (see 
 Title Abandonment), or suppression, will not prevent an 
 inventor from obtaining a patent based on priority of 
 invention. Rose v. Clifford, etc., 135 0. G. 1361 (1908) ; 
 Huh'bard v. Berg, 195 0. G. 818. So he is allowed a rea- 
 sonable time to perfect his invention before applying for 
 a patent. Mead v. Davis & Varney, 31 App. D. C. 590, 
 136 0. G. 2001 (1908)., Even a delay of six years was 
 permitted, where, notwithstanding the long delay, he was 
 the first to file his application. Kellogg, etc., Co. v. In- 
 ternational Telephone Mfg. Co., et al., 158 Fed. 104-108, 
 171 Fed. 651, 656. A delay of four years in filing an ap- 
 plication, in the absence of evidence showing actual 
 abandonment of the invention, was held not to estop the 
 applicant on the ground of concealment stated in {Mason 
 V. Heplurn, 13 App. D. C. 86, 84 0. G. 147). Rolfe v. 
 Kaisling v. Leeper, 143 0. G. 562; Walker v. Lederer, 
 179 0. G. 851. 
 
 123. Intervening Rights. Inventors striving, in 
 good faith, and with due diligence to perfect their in- 
 ventions, instead of engaging in a race of diligence to 
 reach the Patent Office with crude and probably inop- 
 erative devices, should be commended for their delay 
 rather than be charged with laches ; but there is some- 
 times a tendency to hold back applications for patents in 
 order to circumvent rival claimants and to prolong the 
 life of the monopolies granted, which tendency should be 
 rebuked w:henever it is possible to do so. Fefel v. Stock- 
 ed
 
 ct\ 17 App. D. C. 317, 94 0. G. 433; 1901 C. D. 269; 
 McXeal v. Macey, 106 0. G. 2287 (1903). Where during 
 a delay of six rears a rival had entered the field, widely 
 advertised the device and sold several thousand of them, 
 it was held that the first to reduce to practice but who 
 had secreted his invention, never made public use of it or 
 otherwise gave it to the public, had lost his rights. Davis, 
 etc., V. Xational Steam Specmlty Co., 164 Fed. 191. 
 One who conceives a broad invention but fails to claim 
 it broadly, leaves the field open to specific inventions 
 other than his own. He can not control all specific in- 
 ventions by procuring a broad patent on the broad inven- 
 tion, the claim to which he did not advance prior to the 
 making of a specific invention by a later inventor. Wood 
 V. Beckman, 89 0. G. 2459, 15 App. D. C. 4S4. 
 
 124. ITiiexplained Delay in Filing Application. Long 
 delay, unexplained, creates a presumption that what 
 was done amounted merely to an abandoned experiment 
 (See Abandoned Experiment). Smith v. Brooks, 24 
 App. D. C. 75, 112 0. G. 953 : Sendelhach v. Gillette, 22 
 App. D. C. 168, 109 0. G. 276; Warner v. Smith, 13 
 App. D. C. Ill, 94 0. G. 311 ; McDonald v. Edison, 105 
 0. G. 973 (1903) ; Winter v. Slick, etc., 107 0. G. 1659 
 (1903); Oliver v. Felhel, 100 0. G. 2384; 1902 C. D. 
 565, 20 App. D. C. 255. 
 
 125. Diligence of Attorney in Filing Application. 
 "Where the attorney was given the invention in February 
 to prepare an application, the Patent Office drawings 
 wore made in July and the specifications were prepared 
 in October, it was held that the party was not diligent, 
 and that a showing that his attorney was sick for six 
 weeks during that time, was not a .sufficient excuse. 
 Bri(j(js V. Lillie, etc., 116 0. G. 871 (1904). A delay of 
 three months by an attorney in filing an application was 
 lield not to constitute a lack of diligence. Poc v. Scharf, 
 130 0. G. 1309 (1907). 
 
 126. Diligence in Prosecuting Application. After a 
 
 70
 
 party has filed his application his rights become fixed 
 and he can not be charged with a lack of diligence be- 
 cause of delays in the prosecution of his application. 
 Mehle v. Read, 18 App. D. C. 128, 96 0. G. 426; 1901 C. 
 D. 396; McDujJee v. Hestonville, etc., Co., 181 Fed. 503- 
 512 ; Young v. Struble, 153 0. G. 1223 ; Shreeve v. Gris- 
 micjer,202 0. G. 951 (1914). 
 
 127. Documentary Evidence — Letters. Where letters 
 are offered in evidence accompanied by proof that they 
 were received in the ordinary course of business; that 
 the recipient was familiar with the signature of the party 
 who purports to have written them ; that they are in 
 his handwriting or signed by him, they are admissible. 
 Royce v. Kempshall, 125 0. G. 1347 (1906). Where let- 
 ters were introduced as collateral evidence relating to 
 the conduct of a party, and it was shown that they were 
 received in the due course of business and acted upon by 
 the writer and the person to whom they were sent, no 
 other proof of their genuineness was necessary. Jones 
 & Taylor v. Cooke, 25 App. D. C. 524, 117 0. G. 1493 
 (1905). A letter properly deposited in the United States 
 mail will be presumed to have reached its destination and 
 to have been received by the addressee in due course, but 
 such i)resumption may be rebutted by evidence. Ab- 
 bott's Proof of Facts, page 664. This presumption is 
 overcome by testimony of the addressee that he never 
 received it. Ault v. Interstate Sav. & Loan Ass'n, 15 
 Wash. 627, 47 Pac. 13. Letters from an agent are ad- 
 missible if the agency is established. Beaver v. Taylor, 
 1 Wall. 637, 17 Law Ed. 601. Where a party testified 
 that letters offered in evidence were received by him 
 through the mail in answer to letters written by him- 
 self, they will be presumed in the absence of any show- 
 ing to the contrary, to be the letters of the party whose 
 name is signed to them. Briggs v. Lillie, etc., 116 0. G. 
 871 (1904) ; Abbott's Proof of Facts, page 660. If one 
 party offers part of a connected correspondence, the 
 
 71
 
 other party may offer the remainder thereof. Abbott's 
 Proof of Facts, page 557. 
 
 Copies of Letters. Where the original letters are in 
 possession of an adverse party and it is desired to intro- 
 duce them in evidence, notice should be served on the 
 adverse party or his attorney to produce them at a cer- 
 tain time and place, or on failure to do so, letter press 
 or other copies thereof will be offered, but in such case 
 proof should be offered that the copies are correct copies 
 of the original. Boyce v. Kempshall, 125 0. Q. 1347, 
 The writer's execution of the letter must be shown be- 
 fore it is admissible in evidence, unless it is shown to 
 have been mailed at the writer's place of residence and 
 to be in answer to a letter previously written to him. 
 Abbott's Proof of Facts, page 659. 
 
 128. Refreshing Memory of Witness. Books, mem- 
 oranda, letters or documents of most any kind may be 
 used by the witness to refresh his memory as to the date 
 of the happening of an event, but such means of refresh- 
 ing the memory are not in themselves evidence proper to 
 be introduced in evidence by the partj^ who offers the 
 witness, for the contents of such instruments, etc., may 
 not in any manner bear upon the issue and may be 
 wholly foreign to the issues; but on cross-examination 
 opposing counsel may require the production of the 
 memoranda used hy the witness, in order that he may 
 cross-examine upon the same. Abbott's Proof of Facts, 
 pages 403 and 487. Laas & Sponenhurg v. Scott, 122 0. 
 G. 352; Lowrie v. Taylor & Taylor, 123 0. G. 1665 
 (1906), 27 App. D. C. 522. 
 
 129. Photographs — Secondary Evidence. In most 
 cases photographs are secondary evidence. The thing 
 photographed is the primary evidence unless the photo- 
 graph itself is the thing in dispute, but it would seem 
 that photographs of things which it is manifestly im- 
 possible to produce before the tribunal should be re- 
 ceived if they are accompanied b}- proper proof that 
 
 72
 
 they are correct representations of such things or are 
 offered as a part of the oral testimonj^ of a witness. 
 Abbott's Proof of Facts, pages 792, 793. 
 
 130. Blue Prints arc copies of some original, but they 
 may be introduced as a part of the testimony of a wit- 
 ness and as such are made a part of his oral testimony. 
 Fcssenden v. Pierce, 21 Gour. 21-11 (Mar., 1909). 
 
 131. Drawings. One relying upon drawings to fix 
 the time of conception or disclosure, must not only pro- 
 duce the drawings but he must also establish the fact 
 as to when the drawings were made or disclosed to 
 others, and the inventor's own statements, uncorrobor- 
 ated, are not sufficient to show when the drawings were 
 made or when the drawings were exhibited to another. 
 Freeman v. Gartels & Kimhall, 102 0. G. 1777 (1903). 
 
 132. Exhibits. Exhibits not properly marked, though 
 filed in the Patent Office, need not be considered. How- 
 ever the party was permitted to offer ex parte affidavits 
 as furnishing a foundation for proof that they are the 
 identical exhibits offered in evidence and the party was 
 permitted to take proofs to establish such fact. Hend- 
 ler V. Graf, 96 0. G. 2063 ; 1901 C. D. 130. 
 
 Exhibits, except by consent of the parties to the cause, 
 can not be taken from the Patent Office. They will, 
 however, be sent in charge of an employee of the office. 
 Seller v. Goldberg, 116 0. G. 595. 
 
 Identification of Exhibits. Where the witnesses iden- 
 tify an exhibit b}^ its general appearance and have no 
 knowledge of the invention embodied in it and it ap- 
 pears that the invention in controversy is a feature of 
 construction almost hidden from view and having no ef- 
 fect upon the general appearance, such testimony does 
 not prove the existence of the invention in controversy 
 at the date stated. Harris v. Stern & Lotz, 105 0. G. 259 
 (1903). 
 
 The claim has often been made that exhibits were 
 changed after being introduced in evidence, or after fil- 
 
 73
 
 iug. To avoid such controversies, the exhibit should be 
 carefully described at the time of its introduction. 
 
 133. Reduction to Practice — Actual. To constitute 
 actual reduction to practice it is necessary (except in 
 certain cases where actual test is manifestly unneces- 
 sary) to do more than make the device or machine. It 
 must be shown that the machine was capable of perform- 
 ing the work for which it was designed, at least to a 
 small degree of efficiency. Macdonald v. Edison, 105 0. 
 G. 973 (1903). Sale Commercially. So where the evi- 
 dence showed that the machine had been built, practical- 
 ly tested and sold commercially as an operative machine, 
 the facts were held to establish beyond a reasonable 
 doubt a reduction to practice. Otis Elevator Co., et al., 
 V. Interhorough, etc., Co., 222 Fed. 501. The machine 
 must embody the elements of the issue, be put to practical 
 use and operated successfully to perform the particular 
 work for which it was intended. The fact that the in- 
 ventor afterwards constructed one or more other ma- 
 chines with a view to greater mechanical perfection, or 
 where the inventor constructs a cheaper or lighter ma- 
 chine, or changes certain details to perfect it for the 
 trade, such subsequent constructions do not alter the fact 
 that the former construction was a reduction to prac- 
 tice. TJiomas v. Trissel, 107 0. G. 265 (1903) ; Trissel v. 
 Thomas, 109 0. G. 809, 23 App. D. C. 219; Hein v. Bu- 
 koup, 81 0. G. 2088; Blacl-ford v. Wilder, 104 0. G. 578 
 (1903),21 App. D. C. 1. 
 
 Mere progress to an end is not sufficient, however near 
 that progress may have been to the end in %dew. The 
 law requires certainty and the inventor must show that 
 his machine was actually capable of performing the work 
 for which it was intended. Funk v. Matteson v. Haines, 
 20 App. D. C. 285, 100 0. G. 1764; 1902 C. D. 553; 
 Macdonald v. Edison, 21 App. D. C. 527, 105 0. G. 1263 
 (1903). 
 
 The Mechanism Claimed Must Operate Successfully. 
 
 74
 
 Though it is not necessary that the machine be perfect 
 or that all parts of the macliine in which it is used shall 
 be mechanically perfect, still, as to that part of the ma- 
 chine which is in issue, there must be successful opera- 
 tion. A failure can not be excused by making the claim 
 that a skilled mechanic could have made it operate suc- 
 cessfully. Siveihart v. Mauldin, 99 0. G. 665 ; 1902 C. 
 D. 137. (See Tests.) 
 
 134. Imperfections. To constitute a reduction to 
 practice it is not necessary that a machine be perfect, but 
 it must appear that a structure embodying all the essen- 
 tial elements of the invention did accomplish the result 
 for which it was intended, in a reasonably practical way. 
 A machine may be even crude and not made with mate- 
 rials which would ordinarily and naturally be used by a 
 manufacturer and still be a reduction to practice, if in 
 such form it is practically operative and performs 
 the function for which it is intended. Cunimings v. 
 McKenzie, 110 0. G. 1167 ; American Co. v. Tool Co., 
 4 Fisher 299 ; Halwood v. Lalor v. Bockhoff, 21 App. D. 
 C. 61, 103 0. G. 887 (1903) ; Spaulding v. Norden, 24 
 App. D. C. 286, 112 0. G. 2091, 114 0. G. 1828; Smith 
 V. Brooks, 24 App. D. C. 75, 112 0. G. 953 ; Hope, Jr., 
 V. Voight, 25 App. D. C. 22, 115 0. G. 1585 (1905) ; 
 Loivrie v. Taylor & Taylor, 27 App. D. C. 522, 123 0. G. 
 1665 (1906) ; Burson v. Yogel, 29 App. D. C. 388, 131 
 0. G. 942 (1907). 
 
 135. Crude Structure. Where a structure was so crude 
 as to make it necessary to make further experiments be- 
 fore undertaking to build machines in accordance with 
 the exhibit and it appears that it is essentially an ex- 
 perimental device, it is not a reduction to practice. 
 Ocumpaugh v. Norton, 25 App. D. C. 90, 115 0. G. 1850; 
 Lmdemeyer v. Hoffman, et al., 18 App. D. C. 1, 95 0. G. 
 838 (1901). 
 
 136. Reduction to Practice in a Foreign Country. The 
 construction of a successful device in a foreign country 
 
 75
 
 is not a reduction to practice in this country, even when 
 the inventor conceives the invention here and goes abroad 
 to install the apparatus. Lorimer v. Erickson, 227 0. G. 
 1445, 44 App. D. C. 503 ; Bell v. Brooks, 1881 C. D. 8 ; 
 Tucker v. Davis, 2 0. G. 224; DeKando v. Armstrong, 
 169 0. G. 1185, 37 App. D. C. 314; Bradley v. MUjgett, 
 179 0. G. 1108 (1911). 
 
 137. Reduction to Practice by An Assignee. Where 
 an invention has been assigned, the assignee may reduce 
 it to practice and such reduction innures to the benefit of 
 such assignee, whether the inventor contributes to the 
 reduction or not, and even though the machine con- 
 structed may embody features patentably different from 
 the original. Thomas v. Steivart 202 0. G. 1259 (1913), 
 42 App. D. C. 222. 
 
 138. Agent Reducing to Practice. A reduction to 
 practice by an agent innures to the benefit of the prin- 
 cipal, but it is not enough to entitle an applicant to a 
 patent that someone else, not his agent, has shown the 
 practicability of the invention by reducing it to practice. 
 Himter v. Stikeman, 13 App. D. C. 214, 226; Kohinson 
 V. McCormick, 128 0. G. 3289, 29 App. D. C. 98, 111; 
 Shuman v. Beall, 123 0. G. 1664; Howell v. Hess, 30 
 App. D. C. 194, 132 0. G. 1074 (1907) ; Hathaiuay v. 
 Field, 261 0. G. 413 (1919). Where an invention is re- 
 duced to practice by one not authorized to do so, such 
 reduction to practice does not innure to the benefit of 
 the inventor. Howell v. Hess, 122 0. G. 2393 (1906). 
 
 139. Model. While a model, in the strict meaning of 
 that term, is not a reduction to practice, nevertheless, 
 where a device was called a model but was actually used 
 for the purpose intended and completely demonstrated 
 its practicability, even though but half size of a commer- 
 cial machine, it was held to be a reduction to practice. 
 Gallagher v. Hein, 25 App. D. C. 77, 115 0. G. 1330 
 (1905) ; Hammond v. Basch, 115 0. G. 804, 24 App. D. 
 C. 469; Hape, Jr., v. Voight, 25 App. D. C. 22; 115 0- 
 
 76
 
 G. 1585; Rohinsoii v. Thresher, 12.3 0. G. 2975, 28 App. 
 D. C. 22. 
 
 140. Machine Incomplete at the Time of Taking Testi- 
 mony. Though a machine may not be complete at the 
 time of taking testimony, if it is clearly established that 
 the missing parts were present at the time it was oper- 
 ated, and where it also appears that the test showed suc- 
 cessful operation, it would be a reduction to practice. 
 Baseh v. Hammond, 113 0. G. 551; Brooks v. Seelinger, 
 116 0. G. 1735 (1905) ; Wyman v. Donnelly, 104 0. G. 
 310 (1903), 21 App. D. C. 81. And where the device 
 only required the addition of a mechanical detail which 
 any mechanic skilled in the art would have supplied and 
 such detail itself is old in the art, it was held a reduction 
 to practice. Howard v. Bowes, 137 0. G. 733 (1908), 31 
 App. D. C. 619. 
 
 TESTS. 
 
 141. Tests Are Required as a General Rule. As a gen- 
 eral rule a machine must be tested to demonstrate its 
 fitness to accomplish the result for which it was designed. 
 Macdonald v. Edison, 105 0. G. 1263 (1903), 21 App. 
 D. C. 527 ; Paul v. Hess, 115 0. G. 251 ; Gallagher v. 
 Hein, 115 0. G. 1330; O'Connell v. Schmidt, 122 0. G. 
 2065 (1906) ; Wickers & Furlong v. McKee, 129 0. G. 
 869 (1907) ; Pool V. Dunn, 151 0. G. 450. The condition 
 of the prior art must be considered in determining neces- 
 sity of test. Sachs v. Haskins, 21 Gour. 17-1 (Mar., 
 1909). 
 
 When Tests Are N'ot Necessary. When a device is so 
 simple that it is apparent upon inspection that it will 
 perform the intended function, no test is necessary to 
 establish a reduction to practice. Meison v. Hephurn, 13 
 App. D. C. 86, 84 0. G. 147 ; 1898 C. D. 510 ; Linde- 
 meyer v. Hoffman, et al., 18 App. D. C. 1, 95 0. G. 838 ; 
 1901 C. D. 353 ; Loomis v. Hauser, 19 App. D. C. 401, 99 
 0. G. 1172; 1902 C. D. 530; Landa v. Kavle, 158 0. G. 
 228 (1910) ; Gaisman v. Gillette, 165 0. G. 244; Cham- 
 
 77
 
 hers d' King v. Frost, 170 0. G. 244, 246, 37 App. D. C. 
 332. 
 
 Particular Devices, Tests of Which Were Held Neces- 
 sary: 
 
 T^'pe-bars for typewriters. Paul v. Hess, 115 0. G. 
 251. 
 
 Graduated printing plate. Wickers <& Furlong v. Mc- 
 Kee, 129 0. G. 869. 
 
 Mechanism to be put in a telephone circuit. O'Connell 
 V. Schmidt, 122 0. G. 2065. 
 
 Bottle cap so crude as not to be capable of actual use. 
 Lindemeyer v. Hojfman, 95 0. G. 838. 
 
 A cloth cased horse-collar stuffed with cotton. Couch 
 V. Barnett, 110 0. G. 1431. 
 
 Ticket holder for theater tickets. Loom.is v. Hauser, 
 99 0. G. 1172. 
 
 Electrical circuit protector. Bolfe v. Hojfman, 121 0. 
 G. 1350. 
 
 Roller bearing. Winter v. Slick, etc., 107 0. G. 1659. 
 
 Typewriting machine. Paul v. Hess, 113 0. G. 847. 
 
 Garment hook, Loivrie v. Taylor & Taylor, 118 0. G. 
 1681. 
 
 Cover-strip for the ends of the blades of a turbine 
 wheel. Emmett v. Fullagar, 124 0. G. 2178. 
 
 Inverted gas-mantle. Daggett, Jr., v. Kaufman, 145 
 O. G. 1024. ' 
 
 Fuse for electric lighting circuit. Sachs v. Haskins, 
 21 Gour. 17-2 (March, 1909). 
 
 Casing for transmission gearing. Hujf v. Gulick, 177 
 0. G. 525. 
 
 Sound boxes for phonograpli. Rinehart v. Gihson, 185 
 0. G. 527. 
 
 Printing press. Miclile v. Scott & Scott, 190 0. G. 
 1030. 
 
 Rail-anchor. Laas, ct al., v. Scott, et al., 161 Fed. 122, 
 126. 
 
 78
 
 Linked bracelet. TIadley v. Ellis, 265 0. G. 458 (1919), 
 258 Fed. 984. 
 
 142. Kind of Test Required. The kind of test that is 
 required is a test which will show that the machine as 
 constructed did perform the work which it was intended 
 to perform, and though it is safer practice to show a 
 test under actual service conditions such showing may 
 not be necessary if its practicability can be established 
 by a test elsewhere. Eoe v. Hanson, 99 0. G. 2550; 
 1902 C. D. 546; Rolfe v. Hoffman, 121 0. G. 1350 
 (1905) Ehersole v. Durkin, 132 0. G. 842 (1907). 
 
 A shop test ma}^ in some cases be sufficient. Wyman 
 V. Donnelly, 21 App. D. C. 81, 104 0. G. 310. But it 
 was held that a shop test of a rail anchor was not suffi- 
 cient. Laas, et al. v. Scott, et al., 161 Fed. 122, 127. Nor 
 was a test of a garment stay not under actual service 
 conditions. Barclcy v. Schuler, 41 App. D. C. 250, 199 
 0. G. 309. Nor was a test of a tire-holding device by 
 merelj^ bouncing upon the floor a wheel having the de- 
 vice and a tire attached. Johski, etc. v. Johnson, 247 0. 
 G. 479. Nor a test of an electric lighting system for 
 railway cars not tested on railwaj^ cars. Bliss v. Thomp- 
 son, 20 Gour. 19-8 (March, 1908). But for contrary 
 view see decision of Court of xippeals, D. C. Creveling 
 V. Jepson, 226 0. G. 339, 44 App. D. C. 445. - Commercial 
 practicability not necessary if it be shown that the device 
 accomplished the end desired. Laas, et al. v. Scott, et al., 
 161 Fed. 122 ; Roe v. Hanson, 19 App. D. C. 559, 99 0. 
 G. 2550 ; 1902 C. D. 546 ; Emerson v. Sanderson, 174 0. 
 G. 831 (1911). 
 
 An experimental test may or may not establish a reduc- 
 tion to practice, depending upon the nature of the in- 
 vention and the results shown by the test. Mills v. 
 Torrance, 17 Gour. 67-6 (Oct., 1905) ; Dashiell v. Tasker, 
 21 App. D. C. 64, 103 0. G. 2147 (1903), 102 0. G. 1551. 
 
 Mechanical changes ma}^ be necessary and still con- 
 stitute a reduction to practice. It is only necessary that 
 
 79
 
 the device reasonably meet the requirements of the spec- 
 ification. Pool V. Dunn, 151 0. G. 450, 34 App. D. C. 
 132. 
 
 143. Parts Broken. The mere fact that some part was 
 broken during the test does not necessarily show an un- 
 successful operation, if it was ordinary breakage which 
 might be expected of similar machines under .similar con- 
 ditions. Doulle V. Mills, 112 0. G. 1747. But where, as 
 a result of breaking the materials had to be changed, as 
 well as the shape of the device, the test was held insuffi- 
 cient. Gilman tO Brown v. Hinson, 118 0. G. 1933 
 (1905). And where in the test the device was crushed to 
 fragments, it was held not a sufficient test. Gallagher v. 
 Heine, 114 0. G. 974. Where the device was embodied 
 in an automobile and after a run of eighty miles, certain 
 parts were broken, even though the injury did not ap- 
 pear to be to the novel parts, it was held an insufficient 
 test. Huff V. Gulick, 38 App. D. C. 334, 179 0. G. 579. 
 But where a machine had been used for sis montlLs and 
 the only broken part was a rivet supporting one of the 
 parts, the test was held sufficient. Foote v. Wenk, 118 
 0. G. 1366 (1905). 
 
 144. Must Include All the Elements of the Issue. The 
 test must generally include all the elements of the issue. 
 Henderson v. Gilpin, 186 0. G. 289 (1911), 39 App. D. 
 
 C. 428, 187 0. G. 231 ; Mielile v. Scott & Scott, 40 App. 
 
 D. C. 17, 190 0. G. 1030 ; Heft v. Swinnerton, 181 0. G. 
 542 (1911). But where some of the elements were old 
 and the nature of the invention was such that a test was 
 hardly necessarj-, it was held that the test established a 
 .successful reduction to practice even though lacking 
 some elements of the issue. Steicart v. Thomas, 202 0. 
 G. 1262, 42 App. D. C. 222. 
 
 145. When Test Must Be Made. To overcome a prior 
 filing date, the test must have been made prior to the 
 filing date of the opposing party. Miehle v. Scott & 
 Scott, 190 0. G. 1030, 40 App. D. C. 17. 
 
 80
 
 146. Chemical Compound Test. It is sufficient to show 
 that the compound had some apparent usefulness. Pot- 
 ter V. Tone, 163 0. G. 729 (1911); Silverman v. Ilen- 
 (hklison, 99 0. G. 445; 1902 C. D. 12.3. 
 
 147. Process Test. A process may be shown to have 
 been successfully reduced to practice even though the 
 product was defective, due to defective material and not 
 to the fact that the process was not successfully carried 
 out. Appert v. Brownsville Plate Glass Co., 144 Fed. 
 11,5, 118. 
 
 148. Two Forms of Machine — One Test. "Where after 
 making a successful test of one form of machine, the in- 
 ventor made an improved form and showed the second 
 form in his application, making broad claims, including 
 the first form, it was held a reduction to practice. Wy- 
 man v. Donnelly, 21 App. D. C. 81, 104 0. G. 310 (1903). 
 Affirming Commissioner, 103 0. G. 657. 
 
 149. Evidence of Success of Test. In proving success- 
 ful operation, care should be exercised to avoid intro- 
 ducing merely the conclusions or opinions of the wit- 
 nesses (unless they are persons skilled in the art) with- 
 out stating the facts upon which such opinions or con- 
 clusions are based, and it is not sufficient for the wit- 
 nesses to state that a machine was tested and found sat- 
 isfactor,y. While such evidence may be entitled to some 
 weight, it is plain that in most cases such evidence would 
 be merely the opinion or conclusions of the witnesses ar- 
 rived at from what they observed during the test. The 
 tribunal trying the case is the ultimate judge of whether 
 the tests were satisfactory, and therefore such tribunal 
 is entitled to know what was done at such tests and par- 
 ticularly what results were obtained. Bohinson v. 
 Thresher, 123 0. G. 2627, 28 App. D. C. 22, 123 0. G. 
 2976 (1906) ; Daggett v. Kaufmann, 33 App. D. C. 450, 
 145 0. G. 1024. Where the invention was a friction 
 spring and the evidence showed that it was put in a vice 
 and subjected to pressure, but there were no facts ap- 
 
 8 81
 
 pearing of record which showed what the pressure was, 
 nor any facts stated which would enable the court to de- 
 termine whether the statement of the inventor that the 
 test was satisfactory^ was justified, it was held insuffi- 
 cient to show a reduction to practice. Gallagher, Jr. v. 
 Hein, 25 App. D. C. 77, 115 0. G. 1330 (1905) ; Emmet 
 V. Fullager, 124 0. G. 2178 (1906). 
 
 150. Opinions of Witnesses Skilled in the Art. The 
 Court of Appeals, D. C, in the case of Seeherger v. Rus- 
 sell, 121 0. G. 2328, 26 App. D. C. 344, held that the 
 opinions of witnesses skilled in the art and who were 
 shown to have understood the invention or construction, 
 that the device operated successfully, was sufficient to 
 show reduction to practice though the facts upon which 
 such conclusionjs were based were not stated. Horton 
 V. Zimmer, 32 App. D. C. 217, 137 0. G. 2223 (1908) ; 
 Hopkins v. Peters & Dement, 199 0. G. 1243, 41 App. 
 D. C. 302; Ehersole v. Durkin, 132 0. G. 842 (1907). 
 
 151. Description of Invention Tested. It must of 
 course clearly- appear that the invention in issue is what 
 was tested, and the witnesses who testify to its success- 
 ful operation must be shown to have understood the in- 
 vention. Schmidt v. Clark, 138 0. G. 768, 32 App. D. 
 C. 290. 
 
 152. Tests Made at Time of Trial. Where a machine 
 is operated at the time of trial for the purpose of show- 
 ing that it will operate successfully, and witnesses are 
 produced who testify that the machine is in the same 
 condition as when it was first operated, and that the last 
 operation is the same as the first, such facts would estab- 
 lish a reduction to practice. Gordon v. Wentivorth, 130 
 0. G. 2065 (1907) ; Putnam v. Wctmore & Niemann, 
 181 0. G. 269, 39 App. D. C. 138. But where a party 
 has failed to prove successful operation, he can not at 
 the final hearing, operate an exhibit to show that it is 
 in operative condition and would have so operated when 
 first constructed. Taylor v. Gilman, 158 0. G. 883 
 
 82
 
 (1910) ; Fefel v. Stockcr, 91 0. G. 433; 1901 C. D. 269, 
 17 App. D. C. 317. 
 
 153. Organized Machine Successful — Presumption as to 
 Subsidiary Parts. If an organized machine was success- 
 fully operated, it will be presumed that its subsidiary 
 parts also operated successfully. United Shoe Machinery 
 Co. V. Grcenman, 153 Fed. 283, 286. 
 
 Adoption for Commercial Use. Where an invention had 
 been tested by the government and adopted as a model 
 for the production of others like it, it was held to show 
 a reduction to practice. Schneider v. Driggs, 162 0. G. 
 1000, 36 App. D. C. 116. Commissioner's decision, 162 
 0. G. 269. 
 
 154. Circumstances Discrediting Test. Where a wit- 
 ness after having used a tool, recommended the adoption 
 of another similar tool, it was held that such conduct 
 was stronger evidence that the test was unsatisfactory 
 than his testimony that it was satisfactory. Double v. 
 Mills, 112 0. G. 1747. The construction of another de- 
 vice to obviate defects in a prior device, tends to show 
 that the first device was unsatisfactory. Marconi v. 
 Shoemaker, 131 0. G. 1939 (1907). So work on a similar 
 device or devices tends to show that the first was un- 
 satisfactory. Johski, etc. v. Johnson, 247 0. G. 479, 47 
 App. D. C. 230. Where a machine was constructed and 
 tested for a short time but subsequently dismantled and 
 parts of the same were lost and the machine was never 
 again used or other similar machines made for several 
 years, a presumption arises that the machine was unsat- 
 isfactory. Gallagher v. Hien, 25 App. D. C. 77, 83 ; 
 1905 C. D. 624; Seeherger v. Russell, 117 0. G. 2086. 
 But on the facts in the latter case the Court of Appeals, 
 D. C, arrived at a different conclusion. 26 App. D. C. 
 344. But the mere fact that a machine was used but 
 little and was then dismantled, is not conclusive that it 
 was not successfully operated, for failure to use the ma- 
 chine may be satisfactorily explained. Stanhon v. Howe, 
 
 83
 
 etc., 153 0. G. 823, 34 App. D. C. 413 ; United Shoe Ma- 
 chinery Co. V. Greeneman, 153 Fed. 283, 286; Funk, et 
 al. V. Whitehj, 117 0. G. 280 (1905). 
 
 Long Delay in Puttinga Machine in Actual Use — Effect. 
 Long delay in putting a machine in actual use for the 
 purpo.ses intended, has always been regarded as a potent 
 circumstance in determining whether the test was suc- 
 cessful or only an abandoned experiment. Sydeman & 
 Meade v. Thoma, 141 0. G. 866, 32 App. D. C. 362; 
 Thomas v. Weston, 99 0. G. 864; 1902 C. D. 521; Green- 
 wood V. Dover, 1904 C. D. 66, 108 0. G. 2143; Quist v. 
 Ostrom, 106 0. G. 1501. 
 
 Weight of Evidence. Ex parte tests will not be given 
 as much weight as tests made in the presence of both 
 parties. Bethlehem Steel Co. v. Xiles, etc., 160 Fed. 880. 
 Affirmed, 173 Fed. 1019. 
 
 154a. Patentability of the Issue — Rule 130. One who 
 desires to question the patentability of the issue to his 
 opponent, should first make a motion to dissolve under 
 Eule 122, upon the ground that the claims are not pat- 
 entable to his opponent, or in other words, that his op- 
 ponent has no right to make the claims, and he may then 
 argue the question on final hearing. Eule 130 is intended 
 to pro^*ide for the contingency that one party may have 
 the right to make the claims and another party may not 
 have the right to make them. It can not be urged under 
 this rule that none of the parties, including the moving 
 party, have a right to make the claims, or that the counts 
 are not patentable, generally, over the prior art. But 
 where a motion to dissolve assails the right of one of the 
 parties for any reason to make the claims, the question 
 of priority is directly involved, since one who can not 
 make the claims would not in any event be entitled to an 
 award of priority. Elsom v. Bonner d- Golde, 246 0. G. 
 299, 46 App. D. C. 230. Rule 130 only gives a party the 
 right to argue at final hearing the unpatentability of the 
 clainLs to an opponent, and then only when it is material 
 
 84
 
 to the right of such joarty to a patent, and other questions 
 arising" on motion to dissolve, may not be presented on 
 final hearing, nor can a party argue the patentability of 
 the issue over the prior art. Molyneux v. Onderdonk, 
 191 0. G. 292 (1918) ; Ilavemcyer v. Coryell, 186 0. G. 
 558 (1912) ; Weis v. Mack, 185 0. G. 830 (1912) ; Smith 
 & Larsen v. Hill, 177 0. G. 523 (1912). The right of a 
 party to argue at final hearing the right of his opponent 
 to make the claims, is conditioned upon his having first 
 moved to dissolve upon that ground, or having presented 
 a sufficient reason for his failure to do so. Weis v. Mack, 
 185 0. G. 830 (1912) ; Broadivell v. Long, 164 0. G. 252, 
 36 App. D. C. 418. However, the office maj^ consider the 
 question upon its own motion, even though no motion to 
 dissolve has been made. Smith v. Foley, etc., 136 0. G. 
 847 (1907). A cause will not be set down for final hear- 
 ing under Rule 130 except upon motion, which motion 
 should be made before, but may be made after, entry of 
 judgment upon the record. Nohle v. Levine, 180 0. G. 
 602 (1912). Where a party moves to amend the issue 
 under Rule 109, and his opponent opposes the motion 
 upon the ground that the moving party has no right to 
 make the claims, such opponent may urge at final hearing 
 under Rule 130, the nonpatentability of the claims pre- 
 sented by such amendment. Leonard v. Pardee, 164 0. 
 G. 249 (1911). Since the operativeness of an opponent's 
 device goes to his right to make the claims, this question 
 may be presented on final hearing under Rule 130, where 
 the question has previously been presented on motion to 
 dissolve. Barher v. Wood, 127 0. G. 1991 (1907). 
 
 155. Operation of Similar Devices. Proof may be made 
 that another device of substantially the same construc- 
 tion operated successfully. Laas, et al. v. Scott, et at., 
 161 Fed. 126. 
 
 156. Abandoned Experiment, The proofs tending to 
 establish a reduction to practice must be considered as 
 a whole with all the surrounding circumstances of the 
 
 85
 
 case and the action of tlie inventor with respect to his 
 invention, whether he made or attempted to make use 
 of it, or pursue his object to any final conclusion, wheth- 
 er he made any attempt to apply for a patent, whether he 
 gave up his original structure and proceeded to work on 
 some other or similar device for similar use, after testing 
 the original, or threw the original on the scrap heap, 
 jDermitting parts thereof to be lost, or delayed giving it 
 any further consideration until he learned of a rival in 
 the field. It would therefore be quite impossible to state 
 any general rule as to what is and what is not merely an 
 abandoned experiment, since each case must rest upon 
 the particular facts and circumstances shown. Ocum- 
 paugh V. Norton, 25 App. D. C. 90, 115 0. G. 1850 
 (1905). Where an inventor does not use his machine, 
 but permits it to slumber and does not apply for a pat- 
 ent, he can not resort to such invention as an anticipation 
 of a subsequent patent by another. Welshhach Light Co. 
 V. Colin, 181 Fed. 122, 125. And where an invention is 
 laid aside for six years until it is discovered that an- 
 other has entered the field with a similar device, such in- 
 action would strongly tend to show that the invention 
 was impractical, or if operative, had been abandoned. 
 Curtain Supply Co. v. National Loch Washer Co., 178 
 Fed. 95. 
 
 Discarding the Invention After Test. Where one 
 throws aside his invention after test and does nothing 
 more until he learns of others making a similar device, 
 such action would indicate that the alleged invention was 
 merely an experiment. Laurrence v. Voight, 147 0. G. 
 235 (1909) ; Lemp v. Mudge, 114 0. G. 763, 24 App. D. 
 C. 282; Oilman & Brown v. Hinson, 201 0. G. 1219 
 (1^13) ; Whipple v. Sharp, 112 0. G. 1749. 
 
 Another Device Put Upon the Market After Test. The 
 circumstance that another device was put upon the mar- 
 ket by the inventor, or those who were given charge 
 thereof, after test of the invention in question, would in- 
 
 86
 
 dieate that the test was unsatisi'actory and the invention 
 merely an experiment. Paul v. Hess, 24 App. D. C. 462, 
 115 0. G. 251 (1905) ; Quist v. Ostrom, 108 0. G. 2147; 
 inUiard V. Brooks, 111 0. G. 302, 23 App. D. C. 526; 
 Bliss V. McElroy, 122 0. G. 2687 (1906) ; Gordon v. 
 Wentivorth, 31 App. D. C. 150, 135 0. G. 1125 (1908) ; 
 Gillman & Broivn v. Hiiison, 122 0. G. 731, 26 App. D. 
 C. 409. Where the invention is laid aside for a long 
 period after alleged reduction to practice, while the in- 
 ventor works on other inventions, a presumption arises 
 that his first invention was merely an abandoned ex- 
 periment. Adams v. Murphy, 96 0. G. 845 ; 1901 C. D. 
 401. 
 
 Inaction in the Face of Demand for the Invention. 
 Total abandonment of effort in the face of a strong de- 
 mand for the invention is proof positive that the device 
 amounted only to an abandoned experiment. Lemp v. 
 Miidge, 24 App. D. C. 282, 114 0. G. 763 ; Beichenhach 
 V. Kelley, 94 0. G. 1185; 1901 C. D. 282. 
 
 Delay as Evidence of Abandoned Experiment. A long 
 delay after alleged reduction to practice, during which 
 time the inventor develops other inventions, is convinc- 
 ing evidence that the alleged reduction to practice was 
 merely an abandoned experiment. Moore v. Hewitt, 31 
 App. D. C. 577, 136 6. G. 1535 (1908). A delay of four 
 years in applying for a patent is strong evidence that 
 the device was not successful. Fefel v. Stocker, 94 0. G. 
 433 ; 1901 C. D. 269 ; Quist v. Ostrom, 108 0. G. 2147, 
 23 App. D. C. 69. 
 
 Refusal to Adopt After Test. Where those who were 
 relied upon to market tlie device abandoned the enter- 
 prise after test and refuse further assistance thereafter 
 and nothing further was done by the inventor for several 
 years, the invention was held to be an abandoned experi- 
 ment. Polile V. McKnight, 119 0. G. 2519 (1905). 
 
 Abandoned for Financial Reasons. Where a party can 
 make satisfactory proof showing that his inactivity was 
 
 87
 
 due to lack of finances and it is further shown that his 
 device was practically operated, such inactivity will not 
 be regarded as an abandonment of the invention, nor as 
 proof that his reduction to j)ractice was merely an aban- 
 doned experiment. Colmnbia Motor Car Co., et al. v. 
 C. A. Ducrr tO Co., et al., 184 Fed. 898, 900. 
 
 Work Done by Hand After Alleged Reduction to Prac- 
 tice. Where the invention is intended to dispense with 
 hand work and for three years after the alleged reduc- 
 tion to practice the inventor continued to do the work by 
 hand, such circumstance was held to show that the in- 
 vention was merely an abandoned experiment and not a 
 reduction to practice. Jenner v. Dickinson, etc.; 116 0. 
 G. 1181 (1904). 
 
 Making a Second Machine. Where the inventor makes 
 a second machine differing from the first merely in im- 
 provement in details, such fact does not show that the 
 first machine was not successful. Brooks v. Smith, 110 
 0. G. 2013. 
 
 157. Concealment. The man who secretes an inven- 
 tion contributes nothing to the public. The law owes 
 nothing to the inventor who hides away his invention, 
 and it is the settled doctrine of the Court of Appeals of 
 the District of Columbia, and of the Patent Office, that 
 when an inventor perfects and reduces to practice an 
 invention, and fails for an unreasonable period to take 
 steps to give it to the public, and until some one else has 
 independently invented and patented it, the earlier in- 
 ventor forfeits his right to a patent as against the later 
 and more diligent inventor. Brown v. Campbell, 201 0. 
 G. 905, 41 App. D. C. 499; Moiver v. Crisp, 83 0. G. 
 155 ; Mason v. Hepburn, 84 0. G. 147, 13 App. D. C. 86 ; 
 Davis V. Forsythe & Forsythe, 87 0. G. 516; Mower v. 
 Duell, Com'r., 88 0. G. 191; Thomas v. Weston, 94 0. 
 G. 985, 19 App. D. C. 373; Wriejht v. Lorenz, 101 0. G. 
 664; Macdonald v. Edison, 105 0. G. 973; Kendall v. 
 Wi>isor, 21 ITow. 322, 327, 328; Matthes v. Burt, 114 0.
 
 G. 764, 24 App. D. C. 265 ; Curtain Supply Co. v. Na- 
 iional Lock Washer Co., 174 Fed. 45, 47; Robinson on 
 Patents, Sec. 389. 
 
 The doctrine of concealment is however, a strict one 
 which will not be enforced except in cases which come 
 clearly within it. So where there is nothing to indicate 
 that a party was induced to file because of knowledge of 
 activity on the part of another, and there are no circum- 
 stances to impugn his good faith, or he can satisfactorily 
 explain his inaction and such explanation appears rea- 
 sonable and in accord with conduct which might be rea- 
 sonably expected of a person who was honestly seeking to 
 give the public the benefit of his invention, he can not be 
 charged with concealment. Brown v. Blood, 105 0. G. 
 976 (1903); Gaisman v. Gillette, 36 App. D. C. 440; 
 Hubbard v. Berg, 40 App. D. C. 577 ; Stewart v. Thomas, 
 42 App. D. C. 222; Piermann v. Chisholm, 44 App. D. 
 C. 460 ; Lederer v. Walker, 182 0. G. 511 ; Hathaway v. 
 Field, 261 0. G. 413, 1919 C. D. 460; Aufiero v. Mon- 
 not, 242 0. G. 750, 46 App. D. C. 297. 
 
 The fact that an inventor conceals and suppresses his 
 invention after reduction to practice and does nothing 
 more with it in the way of giving the public the benefit 
 of it, or applying for a patent, until he obtains some 
 definite knowledge that another party has made the same 
 invention and put it into use, or has applied for a pat- 
 ent, is usually sufficient to cause the first inventor to lose 
 any rights he may have originally had in such invention. 
 Matthes v. Burt, 24 App. D. C. 265, 114 0. G. 764; Gor- 
 don V. Wentworth, 31 App. D. C. 150, 135 0. G. 1125 
 (1908) ; Dreckschmidt v. Schaefer & Holmes, 246 0. G. 
 301 ; Whitney v. Brewer, 177 0. G. 1296. So where a 
 party after reducing his invention to practice, put it 
 aside for more than a year until he discovered that his 
 rival had put his invention upon the market, it was held 
 that he must be charged with concealment. Howard v. 
 Bowes, 31 App. D. C. 619, 137 0. G. 733 (1908). The 
 
 89
 
 question as to who was first to file his application is not 
 material as to one who is properly chargeable with con- 
 cealment. Whitney v. Brewer, 177 0. G. 1296. 
 
 Disclosing to Others as Affecting Concealment. Where 
 the inventor does not keep his invention secret but dis- 
 closes it to others, there is no abandonment of the inven- 
 tion by concealment. Chisholm v. Pierman, 225 0. G. 
 1105 (1915). Nor where the inventor showed his inven- 
 tion to his opponent. Meyer v. Sarfert, 102 0. G. 1555 
 (1903). 
 
 158. Originality. One of the questions which may 
 arise in an interference and which is pertinent to the 
 issue of priority, is that of originality. It is plain that 
 one who has derived his knowledge of the invention from 
 his opponent is not an inventor. Evidence that a third 
 party, who is not a party to the record, invented the de- 
 vice in issue, is not material, hence evidence as to orig- 
 inality will be confined to the parties to the interference. 
 Foster v. Antisdel, 88 0. G. 1527, 14 App. D. C. 552; 
 Pope V. McKenzie, 38 App. D. C. Ill, 176 0. G. 1072; 
 Thomas v. Weintrauh, 175 0. G. 1097 (1911) ; Herman 
 V. Fullman, 107 0. G. 1094; Bauer v. Crone, 118 0. G. 
 1071; DoUe V. Henry, 118 O. G. 2249 (1905). 
 
 159. Burden of Proof. The burden of proving lack of 
 originality is upon the one who asserts it, and the fact 
 must be established by clear evidence in any case, but 
 where the party against whom the charge is made has a 
 patent which was granted prior to applicant 's filing date, 
 then the applicant must prove beyond a reasonable 
 doubt, want of originality in such patentee. Kreag v. 
 Green, 124 0. G. 1208 (1906) ; Funk v. Matteson v. 
 Haines, 100 0. G. 1764 (1902), 20 App. D. C. 235, 100 
 O. G. 1563; 1902 C. D. 297; SivingleJiurst v. Ballard, 
 265 0. G. 459 (1919), 258 Fed. 973. 
 
 160. How Established. Lack of originality is a diffi- 
 cult fact to prove since direct evidence is not ordinarih'' 
 obtainable and resort must be had to circumstantial 
 
 90
 
 evidenco. As lias often been said in criminal cases, cir- 
 cumstantial evidence is as reliable as any other evidence, 
 provided the circunxstances pointing to the existence of 
 the fact in question are so complete in detail that no 
 other reasonable conclusion can be drawn from them 
 than that such fact exists. Beinhart v. Gibson, 185 0. 
 G. 1383, 39 App. D. C. 358. 
 
 161. Opportunity of Derivation. It is proper to show 
 that a party had an opportunity of deriving his knowl- 
 edge of the invention from his opponent, and the fact 
 that he had such opportunity- would be a strong circum- 
 stance tending to establish lack of originality, but the 
 mere existence of such opportunity would not of itself 
 be sufficient to establish lack of originality. Wood v. 
 Poor, 126 0. G. 391 (1906) ; Cutler v. Keeney, 17 Gour. 
 66-2 (Aug., 1905). Where two parties appear with the 
 same invention, identical in many novel details, there 
 would be a strong suspicion that one derived his knowl- 
 edge from the other, if it also be shown that he had an 
 opportunity to so derive such knowledge. Beal v. Shu- 
 man, 120 0. G. 655 (1905). 
 
 162. Failure to Rebut Evidence of Lack of Originality 
 — Effect. The failure of a party to rebut the sworn state- 
 ment of his adversary that he fully disclosed the inven- 
 tion to him, is conclusive evidence that the latter was 
 not the first inventor, and the oath filed with the appli- 
 cation of the party so charged, is not sufficient to over- 
 come the effect of such testimony. Winsloiu v. Austin, 
 14 App. D. C. 137 ; Hewlett v. Steiriberger, 40 App. D. 
 C. 287, 190 0. G. 270; Royce v. Kempshall, 125 0. G. 
 1347 (1906). 
 
 163. Sufficiency of Disclosure to Prove the Charge. 
 Where one alleged that he communicated the invention 
 to his opponent, he must show exactly what the nature of 
 the communication was and that is was full and clear as 
 to all essential elements of the invention, so as to enable 
 the party to whom such disclosure was made to give it 
 
 91
 
 practical form and effect without the exercise of inven- 
 tion on his part. Anderson v. Wells, 122 0. G. 3014 
 (1906) ; Podelsak v. Mchmerneij, 26 App. D. C. 399, 120 
 0. G. 2127 (1906). 
 
 Reduction to Practice by One Inures to the Benefit of 
 the Other. Where one who has derived his knowledge of 
 an invention from another reduces it to practice, such 
 reduction to practice inures to the benefit of the one 
 who made the disclosure. Shuniafi v. Beall, 123 0. G. 
 1664. 
 
 164. Employer and Employee. Where one employs 
 another to construct or improve a machine, the presump- 
 tion is that the resulting machine or improvement is the 
 invention of the employer, in the absence of satisfactory 
 proof to the contrary. Thihodeau v. Ilildreth, 117 0. G. 
 601, 25 App. D. C. 320. The burden of proof that the 
 invention is that of the employee rather than that of the 
 employer, is upon the employee in such cases, but the em- 
 ployer must show that he disclosed to the employee more 
 than the result desired and that he did not leaA^e it to the 
 employee to invent the means of accomplishing the re- 
 sult. He must show that his instructions not only em- 
 bodied the result to be attained but also the means of ac- 
 complishing the result. Corry, et al. v. McDermott, 117 
 0. G. 279, 25 App. D. C. 305 ; Rolinson v. McCormick, 
 128 0. G. 3289 (1907) ; McKeen v. Jerdone, 34 App. D. 
 C. 163, 153 0. G. 272; Ladoff v. Dempster, 166 0. G. 511, 
 36 App. D. C. 520 ; Eshelman v. Shantz, 189 0. G. 1282, 
 39 App. D. C. 434. 
 
 When the Rule Does Not Apply. The rule does not 
 apply unless the employee is engaged in perfecting the 
 device under the direction of the employer. Soley v. 
 IIeT)J)ard, 5 App. D. C. 99; Jameson & Yeserha v. Ells- 
 worth, 192 0. G. 218, 40 App. D. C. 164 ; Schroeder v. 
 Wageley & Stocke, 118 O. G. 268 (1905). Nor where 
 one is employed merely as a draughtsman. Miller v. 
 Blackburn, 172 0. G. 549 (1911). Nor where the mak- 
 
 92
 
 iiig- of the improvement is not within the line of the 
 duties of the employee. Peckham v. Price, 118 0. G. 
 1934 (1905). 
 
 Ancillary Features to the Main Invention Belong to the 
 Employer. Ore lift v. McDonald & McDonald, 118 0. G. 
 591 (1905), 27 App. D. C. 228, 123 0. G. 1287 (1906) ; 
 Moody V. Colby, 198 0. G. 899, 41 App. D. C. 248; 
 Lihhy v. Farmer & Turner, 18 Gour. 37-14 (May, 1906) ; 
 Kreag v. Green, 127 0. G. 1581 (1906) ; Ageivan v. Jor- 
 dan, 7 Wall. 583, 602; Gedye v. Cromwell, 19 App. D. 
 
 C. 198; Milton v. Kingsley, 7 App. D. C. 531; Larkin 
 V. RicJumhon, 127 0. G. 2394 (1906). 
 
 To What Improvements an Employee Is Entitled. The 
 employer is entitled to any improvements made by the 
 employee in the discharge of his duties in constructing 
 or improving a machine which are due to the exercise of 
 his mechanical skill, but if the employee goes farther 
 than mechanical skill enables him to do, and makes an 
 actual invention, he is entitled to the benefit thereof. 
 McKeen v. Jerdone, 153 0. G. 272, 34 App. D. C. 163 ; 
 Ladojf V. Dempster, 166 0. G. 511, 36 App. D. C. 520; 
 S'parkman v. Higgins, 1 Blatch. 206 ; Yoder v. Mills, 34 
 0. G. 1048 ; Huehel v. Bernard, 90 O. G. 751, 15 App. 
 
 D. C. 510; Neth cD Tamplin v. Ohmer, etc., 135 0. G. 
 662 (1908), 30 App. D. C. 478. 
 
 Fellow Employees — Principal and Assistant. The same 
 rule of law that applies to employer and employee, ap- 
 plies with like force to principal and assistant, though 
 they are fellow employees. Brannstein v. Holmes, 133 
 0. G. 1937 (1908). 
 
 165. Inoperativeness. Where a party to an interfer- 
 ence desires to present evidence that the structure of 
 his opponent is inoperative, and since the question of 
 the operativeness of the device goes to the question of the 
 right to make the claims, he should proceed in accord- 
 ance with Rule 130, first to prosecute a motion to dis- 
 solve before the Primary Examiner (Law Examiner), 
 
 08
 
 and subsequently, if necessary, bring a motion before the 
 Examiner of Interferences for leave to take testimony as 
 to the operativeness of his opponent's device. Pym v. 
 Hadaivay, 125 0. G. 1702; Lowry & Cowley v. Spoon, 
 122 0. G. 2687; Brown v. Stroud, 122 0. G. 2688. But 
 in Bitter v. Eralau, 104 0. G. 1897, it was held that a 
 party must anticipate ordinary attacks upon his evi- 
 dence and that testimony taken as to the operativeness 
 of a de^^ce offered in cA'idence by a senior party would 
 not be stricken out. 
 
 Character of Showing Required — Motion to Take. Testi- 
 mony as to Operativeness. As a prerequisite to the right 
 to take testimony as to the operativeness of an opponent 's 
 device it is not necessary that the mo^dng party make an 
 absolutely conclusive showing of inoperativeness, but if 
 he makes out a prima facie case of inoperativeness 
 thereof, which does not extend to his own, and it appears 
 that it would be a matter of great difficulty to decide 
 the question of operativeness from a mere inspection of 
 the application and it can not be determined that a de- 
 cision so arrived at would be the same as would be 
 reached in the light of information that might be derived 
 from witnesses expert in the art to which the invention 
 relates, a motion for' leave to take testimony should be 
 granted. Lowry tO Cowley v. Spoon, 12-1 0. G. 1846 
 (1906) : Brown v. Stroud, 122 0. G. 2688. 
 
 Counter Affidavits. While an opposing party may at- 
 tack the sufficiency of the motion, he should not present 
 counter affidavits. Clement v. Browne v. Stroud, 126 0. 
 G. 2589 (1907). 
 
 166. Public Use. It may not be possible to give any 
 accurate definition of the term "public use,'' but the 
 general principles by which we may determine whether 
 or not a certain use is a public use or otherwise, are 
 fairl}- well established by the decisions. 
 
 The use of an invention hy the inventor himself, or of 
 another person under his direction, by way of experi- 
 
 94
 
 merit, and in order to bring the invention to perfection, 
 has never been regarded as a public use. When the sub- 
 ject of the invention is a machine, it may be tested and 
 tried in a building either with or without closed doors, 
 in either case, such use is not a public use within the 
 meaning of the statute so long as the inventor is en- 
 gaged, in good faith, in testing its operation. He may 
 see cause to alter it or improve it or not. His experi- 
 ments wall reveal the fact whether any alterations may 
 be necessary, if durability is one of the qualities to be 
 attained, a long period, perhaps years, may be necessary 
 to enable the inventor to discover whether his purpose 
 is accomplished. And though during all that period he 
 may not find that any changes are necessary, yet he may 
 be justly said to be using the machine only by way of ex- 
 periment, and no one would say that Such use, pursued 
 with a bona fide intent of testing the quality of the ma- 
 chine, would be public use, within the meaning of the 
 statute. So long as he does not voluntarily^ allow others 
 to use it, and so long as it is not on sale for general use, 
 he keeps the invention under his own control and does 
 not lose his right to a patent. It would not be necessary 
 in such case that his machine be put up and used only in 
 the inventor's own shop or premises. He may have it 
 put up and used on the premises of another, and the use 
 may inure to the benefit of the owner of the establish- 
 ment. Still, if used under the surveillance of the inven- 
 tor, and for the purpose of enabling him to test the ma- 
 chine and ascertain whether it will answer the purpose 
 intended, and make such alterations and improvements 
 as experience demonstrates to be necessary, it will still 
 be an experimental use and not a public use, within the 
 meaning of the statute. But if the inventor allows his 
 machine to be used by other persons generallj^, either 
 with or without compensation, or if it is with his con- 
 sent, put on sale for such use, then it will be in public 
 use and on public sale within the meaning of the law. 
 
 95
 
 Elizabeth v. American Nicholson Paving Co., 97 U. S. 
 135, 24 L. Ed. 1004 ; Beedle v. Bennet, 122 U. S. 77, 30 
 L. Ed. 1074. 
 
 Whether the use of an invention is public or private, 
 does not necessarily depend upon the number of per- 
 sons to whom its use is known. If the inventor, having 
 made his device, gives or sells it to another, to be used 
 by the donee or vendee, without limitation or resftiction, 
 or injunction of secrecy, and it is so used, such use is 
 public, within the meaning of the statute, even though 
 the use and knowledge of the use may be confined to one 
 person. Egghert v. Lippman, 104 U. S. 333, 336; Root 
 V. Third Ave. R. Co., 146 U. S. 221, 36 L. Ed. 951. So 
 where one uses the invention himself for his own profit 
 and advantage, it is public use. International Tooth 
 Crown Co. v. Gaylord, 140 U. S. 63, 35 L. Ed. 347. 
 
 Where the invention is a machine designed to manu- 
 facture articles, the inventor maj^ make use of or sell 
 such product as he may make while so experimenting, 
 without bringing himself within the statute as to public 
 use. But if the invention is upon the article, the sale of 
 the article would be public use. Bryce Bros. Co. v. 
 Seneca Glass Co., 140 Fed. 161. 
 
 167. Character of Evidence as to Experimental Use. 
 Where use for more than two years prior to the appli- 
 cation for a patent is established, it is incumbent upon 
 the patentee to show by clear, unequivocal and convinc- 
 ing evidence that such use was experimental with a view 
 to perfecting the mechanism and improve its operation 
 or test its qualities. Smith rf- Griggs Mfg. Co. v. Sprague, 
 ]23 U. S. 264, 31 L. Ed. 146. 
 
 Public Use in Interference Cases. It seems that the ac- 
 tiou of the Patent Office relating to public use is not 
 coiiclusive against the parties and a review may be had 
 in an action in ('(juity under Section 4918, Revised St. 
 Ditigen v. liaciyie Paper Goods Co., et al., 181 Fed. 394. 
 
 The fact that a party to an interference proceeding 
 
 96
 
 has been awarded a jud<>iiie]it of priority does not nec- 
 essarily mean that he is entitled to a patent, for it may 
 appear in the course of tlie proceedings that there is a 
 statutory bar to a grant of a patent to him. Sohey v. 
 Holschlaw, 28 App. D. C. 65, 126 0. G. 3041 ; 1907 C. D. 
 465; Burson v. Vogcl, 29 App. D. C. 348, 131 0. G. 942; 
 United States ex rel., Dimkley v. Ewing, Com'r, 203 0. 
 G. 603, 42 App. D. C. 176. 
 
 168. Public Use Proceedings When and How Insti- 
 tuted. Since the institution of public use proceedings is 
 within the discretion of the Commissioner, after consid- 
 eration of the prima facie proofs presented, the peti- 
 tioner should present with his petition sufficient affi- 
 davits to make out a prima facie case of public use 
 against the applicant, serve the other party or parties 
 with due notice of the filing and hearing of the petition, 
 offer to produce the witnesses for examination and bear 
 the expense. And where such petition is filed before the 
 taking of testimony as to prioritj^, the public use pro- 
 ceeding will take precedence. In re United States Wood 
 Preserving Co., 153 0. G. 271 (1910) ; Schrum v. Baum- 
 garten, 104 0. G. 577. 
 
 Petition Presented Pending Motion to Dissolve. If a 
 motion to dissolve is pending at the time of the filing of 
 the petition to institute public use proceedings, such mo- 
 tion should be determined before proceeding to deter- 
 mine the question of public use. The reason for this is 
 that a ruling on the motion to dissolve may make it un- 
 necessary to incur the expense which might be involved 
 in the public use proceeding. Snyder v. Woodivard, 173 
 0. G. 863 (1911) ; In re United States Wood Preserving 
 Co., 153 0. G. 271. 
 
 After Testimony Has Been Taken as to Priority. After 
 the parties have taken their testimony as to priority, the 
 interference should not be suspended for the purpose of 
 instituting public use proceedings, since a ruling on the 
 question of priority may make it unnecessary to deter- 
 
 a 97
 
 mine the question of public use, unless the testimony 
 shows that the party against whom the public use pro- 
 ceeding is to be instituted, knew of the public use and his 
 application was therefore fraudulently filed. Luellen v. 
 Claussen & Clans, 190 0. G. 265 (1913) ; Kneisly v. 
 Kaisling, 174 0. G. 830 (1911); BoUe v. Henry, 118 
 0. G. 2249 ; Wert v. Borst, etc., 122 0. G. 2062 ; Bre7i- 
 izer V. RoUnson, 166 0. G. 1281 (1911). 
 
 As Between Applicants. In Sarfert v. Meyer, 98 0. G. 
 793; 1902 C. D. 80, Commissioner Moore said: "Where 
 the interference is between pending applications, the in- 
 stitution of public use proceedings prior to the final de- 
 termination of priority is uniformly refused, for the rea- 
 son that if the bar of public use or sale be established 
 against one of the parties, it might leave the road clear 
 to the grant of a patent to the other, who might perhaps 
 not be the prior inventor." 
 
 When Shown by the Evidence in an Interference — 
 Action Under Rule 126. The Examiner of Interferences, 
 or Board of Examiners in Chief, may either before or in 
 their decision on the question of priority, direct the at- 
 tention of the Commissioner to the fact that in their 
 opinion the issue is not patentable because of two years' 
 public use. In such case the Commissioner refers the 
 question to the Primary Examiner for a report thereon. 
 If the Primary Examiner reports that in his opinion the 
 issue is not patentable because the evidence shows more 
 than two years' public use prior to the filing of the 
 application, the office will not be justified in continuing 
 the interference without investigating and finally deter- 
 mining the question of public use. But the evidence 
 taken in the intorferciK'C can not be used as a basis for 
 final judgment as to that fiuestion without giving the 
 parties an opportunity to lake further testimony thereon. 
 The Commissioner will then notify the parties that the 
 testimony already taken will be used as prima facie case 
 in support of the allegation of public use and if any of 
 
 98
 
 them wishes to take testimony, to notify tlie Commis- 
 sioner within a specified time. If such notice is given 
 time will be given by the Commissioner in which the 
 parties may take their further proofs. Niedrmghaus v. 
 McConncll, 121 0. G. 338 (1905). Allegations as to pub- 
 lie use must apply to all the counts to warrant a suspen- 
 sion of proceedings. Moss v. Blaisdell, 113 0. G. 1703; 
 Patec V. Cook, 16 Gour. 2-1. 
 
 WITNESSES. 
 
 170. Subpoena for Witnesses. By the provisions of 
 Section 4906 R. S., the clerk of any court of the United 
 States for any district wherein testimony is taken for 
 use in a contested cause in the Patent Office, shall, upon 
 application of any part}- thereto, or of his agent or at- 
 torney, issue a subpoena for any witness residing or being 
 within such district, commanding him to appear and tes- 
 tify before any officer in such district authorized to take 
 depositions and affidavits, at any time and place in the 
 subpoena stated. But no witness shall be required to at- 
 tend at any place more than forty miles from the place 
 where the subpoena is served upon him. His fees and ex- 
 penses must be paid or tendered unless he waives them, 
 and his failure to demand them is not a waiver. Ln re 
 Boeshore, 125 Fed. 651. 
 
 The Patent Office has no power to compel the attend- 
 ance of witnesses, nor to compel a party to an interfer- 
 ence to submit himself for examination by subpoena or 
 .render a judgment against him for failure to do so. Hen- 
 derson c£- Cantley v. Kindervater, 192 0. G. 741; Lind- 
 strom V. Lipschuts, 120 0. G. 904; Kelly, et al. v. Park, 
 et al, 81 0. G. 1931 ; Bay State Belting Co. v. Kelfon- 
 Bruce Mfg. Co., 127 0. G. 1580. 
 
 171. Application to Force Obedience. The proper 
 form of application to enforce obedience to a subpoena 
 issued under this section is a petition to the court for an 
 
 99
 
 attachment for contempt. Brunggcr v. Smith, 49 Fed. 
 124. 
 
 Subpoena duces tecum. This section does not authorize 
 the issue of a subpoena duces tecum. Ex parte Moses, 
 53 Fed. 348 ; In re Outcalt, 149 Fed. 228. 
 
 Failure to attend or refusal to testify. Sec. 4908 K. S. 
 provides that one who has been served with a subpoena 
 and neglects or refuses to appear, or after appearing, 
 refuses to testify, may be punished by the judge of the 
 court whose clerk issued the subpoena. But a witness 
 shall not be required to disclose any secret invention or 
 discovery made or owned by himself. 
 
 172. Refusal to Testify — Suppression of Testimony. It 
 has been held that the testimony of a witness may be 
 suppressed on account of his refusal to furnish material 
 evidence. LincUtrom v. Lipscluitz, 120 0. G. 904 (1905). 
 
 173. Solicitor of Patents as a Witness. A solicitor of 
 patents who is not an attorney-at-law, is not privileged 
 from answering questions under this section, as he can ^ 
 not invoke the privilege of confidential communication xlA 
 between attorney and client. Brungger v. Smith, 59 
 
 Fed. 124. 
 
 174. Cross-Examination of Witnesses. There will be 
 no attempt here to discuss in detail matters pertaining 
 to the cross-examination of witnesses, but merely to state 
 some of the general rules. 
 
 Leading Questions. It is well settled that the cross- 
 examiner is entitled to ask leading questions. Hempton 
 V. State, 111 Wis. 127, 86 N. W. 596. 
 
 Assuming Facts Not Proved. Counsel in his cross- 
 questions should not assume that the witness has testified 
 to facts to which he has not testified. Rowland v. Oak- 
 land etc., R. R. Co., 115 Cal. 487, 47 Pac. 120. 
 
 Argumentative Questions. Questions should not be 
 argniiiciitiilivc. lUople v. Harlan, 133 Cal. 16, 65 Pac. 9. 
 
 Bringing Out New Matter. Where on cross-examina- 
 tion coun.sel goes outside the direct examination and in- 
 
 100
 
 quires about new matters, not related thereto, he makes 
 the witnesses his own as to such new matter and lie is not 
 entitled to ask leading questions in relation thereto, 
 though this is a matter within the discretion of the court, 
 according to tlie circumstances. Legg v. Drake, 1 Ohio 
 !St. 28(). 29 Ala. 5:)8. 
 
 Immaterial Matters. Wiiere on direct examination a 
 witness has been asked about immaterial matters, the 
 other part}' has a right to cross-examine with reference 
 thereto. L. & N.Ji. Co. v. Hill, 115 Ala. 334, 22 South. 
 163. 
 
 175. Acts and Conversations. Where an act or a 
 statement or a part of a conversation of a witness is put 
 in evidence, he may be cross-examined respecting every- 
 thing connected with that act, or all the circumstances 
 under which the statement was made, or the entire con- 
 versation ma}' be brought out, even though parts of it 
 may be immaterial. In other words, when the party call- 
 ing a witness opens up a subject, his opponent is entitled 
 to inqaire all about that subject. Vogel v. Harris, 112 
 Ind. 494, 14 N. E. 385 ; State v. Pancoast, 35 L. R. A. 
 518; Hartncss v. Goddard, 176 Mass. 326, 57 N. E. 677; 
 Gilmer v. Higleij, 110 U. S. 47. 
 
 176. Showing Hostility, Bias and Prejudice. Great 
 latitude is permitted in cross-examining a witness with a 
 view to showing hostility to a party; hence he may be 
 asked as to his interest in the case, his relations to the 
 party calling him, his feeling toward the opposing party, 
 or any facts or circumstances which would tend to reveal 
 his state of mind with reference to the parties. People v. 
 TJwmpson, 92 Cal. 506, 28 Pac. 589. 
 
 177. Impeachment of Witness. A wdtness may be im- 
 peached by showing that he made statements at some 
 other time and place which are contrary to those testi- 
 fied to, but it is necessary to ask the witness on cross- 
 examination whether he made such statements at a certain 
 time and place and to a certain person. If he denies liav- 
 
 101
 
 iug made the stateiiieiit, the person to whom he is alleged 
 to have made them, ma}^ be called to prove the facts as 
 laid in the impeaching question. Conrad v. Griffey, 16 
 How. (U. S.) 38; Aneals v. People, 134 111. 401; Mc- 
 Culloch V. Dohson, 133 N. Y. 114; Skclto?i v. Fenton 
 Electric Ligiit etc. Co., 100 Mich. 87. 
 
 Evidence Must Be Material. You cannot impeach a 
 witness upon an immaterial matter, that is, matter not 
 material to the issue on trial. U. 8. v. Dickinson, 2 Mc- 
 Lean (U. S.) 325; People v. Tipley, 84 Cal. 651; Elbert 
 V. Witman, 122 Ind. 538 ; Com. v. Jones, 155 Mass._ 170. 
 
 178. Surprise by Hostile Witness. It not infrequently 
 happens that a part}^ calling a witness is surprised by the 
 witness testifj'ing directly opposite to what he indicated 
 to the part}' calling him. In such case the party calling 
 him is usually permitted to cross-examine him to a lim- 
 ited extent, and, in some jurisdictions, to impeach him, 
 not for the purpose of showing that his original state- 
 ment to the party calling him was true, but for the pur- 
 pose of setting the party who called him right before the 
 court or jury. 
 
 179. Party as a Witness — Presumptions Arising From 
 Failure to Testify or Produce Evidence. Where a party 
 refuses to answer questions, it will be presumed that the 
 facts are against him. Perri v. Thoma, 188 0. G. 1053, 
 39 App. D. C. 460. 
 
 180. Failure to Call a Material Witness. AAHiere a 
 party fails to call a material witness and offers no ex- 
 planation for not calling him, the presumption is that his 
 testimony would have been unfavorable. McConnell v. 
 Wood, 250 0. 0. 7G7; Blackman v. Ale.rander, 113 0. G. 
 1703, 26 App. D. C. 541, 121 0. G. 1979; Turnhull v. 
 Curtis, 120 0. G. 2442 (1905) ; Schmidt v. Clark, 138 
 0. G. 768, 32 App. D. C. 290. But where the witness 
 might have been called by either party and sucli Avitness 
 was the only person, aside from the parties, who knew 
 certain facts, and it appeared that the witness was in the 
 
 102
 
 onii)I()y of one of llir parties, it was licld that llu- party 
 ill wliosc employ he was would have called hini, if his 
 testimony would have been favorable to such party. 
 Gallagher v. Hastings, 103 0. G. 1165, 21 App. D. C. 88. 
 Failure to Call a Hostile Witness. Where an assignee 
 failed to call the inventor and it was shown that the in- 
 ventor was hostile to such assignee, and it was within the 
 power of the opposing party to have called such appli- 
 cant, no unfavorable presumption arises against the as- 
 signee. Stoetzel V. Fordyce, 21 Gour. 2-4 (Jan., 1909) ; 
 Silverman v. Ileudrickson, 99 0. G. 445 ; 1902 C. D. 123. 
 
 181. Failure to Deny Charges of Lack of Originality. 
 When the facts are peculiarly within the knowledge of a 
 party and he fails to take the stand and testify thereto, 
 the presumption is that he could not deny the truth of 
 the e^ddence offered against him. Sleinherger v. Hew- 
 lett, 183 0. G. 1308 (1912) ; Winslow v. Austin, 86 0. 
 G. 2171; Royce v. Kempsliall, 125 0. G. 1347 (1906); 
 Rollfe V. Kaisling v. Leeper, 143 0. G. 562, 32 App. D. 
 
 C. 582. So also a failure to produce evidence clearly 
 within the control of a party, raises a presumption that 
 if produced, it would have been unfavorable. Huff v. 
 Gulic, 179 0. G. 579, 38 App. D. C. 334. And w^here the 
 circumstances are such that a party might easily dis- 
 prove the facts sought to be established by his opponent, 
 if untrue, and he fails to make any effort to disprove 
 them, the presumption is that they could not be dis- 
 proved. Schneider v. Briggs, 162 0. G. 1000, 36 App. 
 
 D. C. 116; ^yhitman v. King, 160 0. G. 260, 35 App. D. 
 C. 449. 
 
 182. Failure to Produce Sketches or Devices. Where 
 a party claims to have, produced certain sketches, draw- 
 ings, or to have completed a certain device, he should 
 produce the same or make a satisfactory explanation for 
 not doing so. In the absence of a showing of any reason 
 for not producing such evidence, an unfavorable pre- 
 sumption arises. Saunders v. Miller, 146 0. G. 505, 33 
 
 103
 
 App. D. C. 456; Turnhull v. Curtis, 120 0. G. 2442 
 (1905). 
 
 183. Failure to Rebut. Where the circuuLstances show 
 that the evidence produced by a party might readily be 
 disproved, if untrue, and his opponent maJ^es no effort 
 to disprove the facts, such failure raises an unfavorable 
 presumption against such opponent. So where the evi- 
 dence clearly showed that a certain machine embodying 
 every element of the issue was in existence and readily 
 accessible to the party who might be expected to dis- 
 prove its existence if he entertained any doubt -of the 
 truth of such evidence, but he offers no evidence upon 
 that subject, the existence of the machine will be re- 
 garded as established. Smith v. Kilgren, 215 0. G. 324, 
 43 App. D. C. 193. 
 
 Employee and Employer — Independent Inventorship. 
 The unexplained failure of an employer to take the 
 stand, necessitates an inference in favor of the em- 
 ployees' independent inventorship. Peckham v. Price, 
 118 0. G. 1934 (1905), 26 App. D. C. 556. 
 
 184. Conduct Inconsistent With Claims to Invention. 
 The conduct of a party, acts as well as words, is often 
 more potent in revealing the truth than the testimony 
 he renders after becoming involved in a controversy with 
 another. Hence it is important in weighing the testi- 
 mony to consider what happened prior to as well as after 
 the controversy arose, and where a party claimed to have 
 made an invention at a certain time, but continued there- 
 after to experiment upon other inventions for securing 
 the same ultimate results, and full records at the time do 
 not mention the invention in issue, and patents were 
 taken out on other inventions, but no application was 
 filed on the invention in issue, it was held that the con- 
 duct of the inventor at the time is stronger evidence 
 again.st his claim to invention than is the testimony of 
 him.self and witnesses in favor of the same. Sherwood v. 
 Drewsen, 124 0. G. 1205 (1906) ; Gibbons v. Poller, 124 
 
 104
 
 0. G. 624 (1906) ; Larkin v. Richardson, 122 0. G. 2390 
 (1906). 
 
 185. Failure to Assert Claim to Invention. Where a 
 party fails to assert nny claim to an invention under 
 circumstances which would indicate that another is 
 claiming it, and the former constructed no device em- 
 bodying the issue, the presumption is that he did not 
 invent it. Hansen v. Dean, 129 0. G. 483 (1907), 29 
 App. D. C. 112. Where a senior party informed a junior 
 party that he had applied for a patent on the invention 
 and the junior party made no protest and signified 
 neither by word nor act that the invention was his own, 
 it was held that then, if ever, he should have spoken. 
 Scott V. Scott, 96 0. G. 1650; 1901 C. D. 419. And 
 where a party testified in favor of another in an interfer- 
 ence, making no claim at the time to his own invention 
 of the issue, but afterward filed an application therefor, 
 it was held that it was his duty to have asserted his. claim 
 earlier. Lloyd v. Antisdel, 95 0. G. 1645; 1901 C. D. 
 371. 
 
 And where a party fails to assert his claim to an in- 
 vention after knowledge that others are claiming it, his 
 silence at a time when he should have spoken, discredits 
 his testimony. McKnight v. Pohl c& Croasdalc, 22 App. 
 D. C. 219, 105 0. G. 977 (1903) ; Barter v. Barrett, 114 
 0. G. 975, 24 App. D. C. 300. 
 
 Delay in Copying Claims of a Patent — Estoppel. In 
 ChapnuDi v. Wi)itroat]i, decided March 1, 1920 (not yet 
 reported ) , the United States Supreme Court held that an 
 applicant has two years from the date of filing of a di- 
 visional application, in which to copy the claims of an 
 issued patent for the purpose of interference. Up to 
 1916, it had been the practice to allow two years in which 
 to copy the claims of a published patent, but at that time 
 the Court of Appeals, D. C, in Rountree v. Sloan, 45 
 App. D. C. 207, held that one who delayed for more than 
 one year to copy the claims of a published patent, was 
 
 105
 
 •iuilty of laches and estopped from copying such claims 
 for the purpose of interference. This ruling- was fol- 
 lowed by the office until the reversal of the Court of Ap- 
 peals D. C. by the United States Supreme Court, in 
 Chapman v. Winttwath, March 1, 1920. 
 
 186. Failure to Disclose Invention. And where a 
 party fails to disclose the invention in issue under cir- 
 cumstances which would naturalh^ induce him to do so, 
 the presumption is that he did not have the invention. 
 Slaughter v. Halle, 102 0. G. 469 (1903) ; Hope, Jr. v. 
 Yoicjht, 115 0. G. 1585 (1905), 25 App. D. C. 22. - 
 
 187. Delay in Filing Application and Failure to Assert 
 Alleged Right. Where a party permitted a manufac- 
 turer to manufacture the device in issue for a period of 
 nearly two years, without claiming the invention, or mak- 
 ing protest, and did not file an application for. patent for 
 over four years after the alleged discovery and not until 
 after he had difficulties with such manufacturer, such 
 silence and failure to earlier file an application, was held 
 to discredit his claim to inventorship. Wilson & Wil- 
 lard Mfg. Co. v. Bole, et al., 227 Fed. 607, 610. 
 
 188. Testimony Impeached by Previous Declarations. 
 Where the testimony of an inventor is shown to be at 
 variance with his preliminary statement and with affi- 
 davits filed during the progress of his application, or in 
 conflict with the oath filed with the application, such 
 facts should weigh strongly against the credibility of the 
 witness, unless a satisfactory explanation is made of 
 such variance. Barnes v. Swartivout, 161 0. G. 1045 
 (1910) ; Tripler v. Linde, 102 0. G. 1297 (1903). 
 
 189. Presumption Arising From Knowledge and Ex- 
 perience of a Party. The knowledge and experience of a 
 party in general, and particularly his experience in and 
 familiarity with the subject in issue, will be considered 
 in weighing the testimony. Therefore, as between two 
 parties, each claiming a disclosure of an invention to the 
 other, where one of such parties is shown to have a prac- 
 
 106
 
 Ileal knowledge of tile art, and the other has not, a strong 
 presuniptioii arises that the one having such practical 
 knowledge would be the more likely to have conceived the 
 invention (See subject Originality). Alexander v. 
 Blachman, 26 App. D. C. 541, 121 0. G. 1979 (1906) ; 
 Flather v. Wehcr, 21 App. D. C. 179, 104 0. G. 312 
 (1903); Miller v. Kelley, 96 0. G. 1038; 1901 C. D. 
 405, 18 App. D. C. 163. 
 
 190. Presumption as to Originality — Following the 
 Line of Invention of Another. Where one is shown to 
 have gained his knowledge of the art from the invention 
 or series of inventions of the other party, and a dispute 
 as to the inventorship of a specific improvement arises, 
 both parties claiming it, a question of veracity is pre- 
 sented, and under such circumstances, to determine to 
 whom the greater weight should be given, the presump- 
 tion will be that the party experienced in the art is the 
 more likely inventor. French v. Ilolconil), 115 0. G. 
 506; Scott V. Scott, 96 0. G. 1650; 1901 C. D. 419. 
 
 And where there is an issue of originality, and all that 
 one of the parties did grew out of and was dependent 
 upon the disclosure of the other party, the presumption 
 is that the party making such disclosure was the in- 
 ventor of the issue. Granger v. Bichardson, 110 0. G. 
 722; Scott V. Scott, 96 0. G. 1650; 1901 C. D. 419, 18 
 xVpp. D. C. 420. 
 
 191. Irrelevant Testimony. Testimony is irrelevant 
 when it has no bearing on the matter in dispute, does 
 not affect the subject matter of the controversy, and can 
 in no way assist the court in deciding the case. The 
 Court' of Appeals D. C., has called attention to the fact 
 that the practice of encumbering the record in inter- 
 ference cases with irrelevant matters is general, and has 
 strongly condemned the practice. Connor v. Dean, 24 
 App. D. C. 277, 142 0. G. 856 ; Scott v. Scott, 96 0. G. 
 1650 ; 1901 C. D. 419, 18 App. D. C. 420. 
 
 Testimony to show non-patentability of the issue or the 
 
 107
 
 scope of the issue, is irrelevant. You Keller v. Hay den, 
 et al., 173 0. G. 285 (1911). That a stranger to the 
 record made the invention is immaterial. Steinmetz v. 
 Hewitt, 107 0. G. 3972 (1903). 
 
 191a. Expert Testimony. It is not the practice of the 
 office to permit expert testimony to explain what an aj)- 
 plication discloses, and it should be permitted only in 
 very exceptional eases, if at all. Cooper v. Downing, 222 
 0. G. 727 (1915). But in Hopkins v. Newman, 134 0. G. 
 2028, 30 App. D. C. 402, such testimony was considered. 
 In Cooper v. Downing. 230 0. G. 909, 45 App. D.-C. 345, 
 it was held that the Commissioner properly refused to 
 consider evidence of what was intended by the disclosure 
 of one of the parties, since it is the duty of the office ex- 
 perts to determine what an application discloses. 
 
 191b. Objections to Evidence. A party who desires 
 to oppose the admission of any evidence produced or of- 
 fered by his opponent, should make his objection and 
 state the grounds therefor at the time the evidence is of- 
 fered. If he fails to object he waives his right to have 
 the e^^dence excluded. He should also be considered to 
 have waived hisi right if he fails to state a legitimate 
 ground of objection, unless there is a stipulation in the 
 record that he may afterward state the grounds of ob- 
 jection. All objections, whether to the proceedings or 
 to specific evidence, should be timely made in order that 
 the opposing party may be placed on his guard. Badger 
 V. Morgan, 117 0. G. 598 (1905). In man}- instances 
 the answer of the witness is not responsive to the ques- 
 tion, in which case there is no opportunity to object to 
 the evidence by objecting to the question, since the ques- 
 tion may have been proper, but in that event the ag- 
 grieved party should move to strike out the answer, or 
 so much of it as is irresponsive to the question. 
 
 Form of Objection. An objection should be positive 
 and sliould state wliat principle of evidence the question, 
 or ail answer thereto, would violate. A general objec- 
 
 108
 
 tion, such as — that the evidence is inadmissible — ^would 
 hardly present any question unless the evidence is such 
 that it could not be admissible for any purpose what- 
 ever. If objection is made and no valid ground of ob- 
 jection is stated, it will not be available to exclude the 
 evidence because there was another and valid ground of 
 objection which might have been made but was not. It 
 would seem tluit objections to the materiality or rele- 
 vancy of evidence may be made at any time, for a party 
 is bound to know whether the evidence tends to prove or 
 disprove an,y issue in the cause. Furthermore the court 
 will not decide a cause upon immaterial or irrelevant 
 evidence, because if it is immaterial or irrelevant it does 
 not prove anything in relation to the issue. Wigmore's 
 Ev. Sec. 18. 
 
 192. Relevant Testimony — What Is. In an interfer- 
 ence the ultimate question to be determined is, who was 
 the prior inventor of the issue, and the evidence should 
 be confined to the question of priority. Brill & Adams 
 V. Uehelacher, 99 0. G. 2966; 1902 C. D. 220; Trufant 
 V. Brindle, etc., 101 0. G. 1608 ; 1902 C. D. 397. As to 
 what facts and circumstances have a tendency to prove 
 priority there has been much controversy. The Court 
 of Appeals D. C. has repeatedly declared that it would 
 not take into consideration, in interferences, questions 
 which do not relate to priority. Out of the numerous 
 questions which parties to interferences have attempted 
 to bring before that court on appeal, we have a number 
 of decisions defining what is regarded by the court as 
 material to the determination of the question of priority, 
 or what facts or circumstances may be introduced to es- 
 tablish the ultimate fact of who, as between the parties, 
 was the first inventor of the issue. 
 
 Laches. It has been held that the question of whether 
 a party has been guilty of laches is one proper to be 
 determined as relating to priority. Wintroath v. Chap- 
 man, 248 0. G. 1004, 47 App. D. C. 428. 
 
 109
 
 Originality. It would seem to be obvious that tlie ques- 
 tion of fact as to whether one party derived his knowl- 
 edge of the invention from the other party, is one which 
 relates to priority. 3Iilton v. Kingsley, 7 App. D. C. 
 531, 75 0. G. 2193. 
 
 Reduction to Practice. Whether a partj^ reduced an 
 invention to practice and the date of such reduction to 
 practice, relate to priority. Stevens v. Seller, 11 App. 
 D. C. 245, 81 0. G. 1932. 
 
 The court has also considered as relating to priority 
 the following questions: Whether the evidence shows a 
 lack of reasonable diligence on the part of one of the 
 parties. Paul v. Johnson, 23 App. D. C. 187, 109 0. G. 
 807 ; Wickers v. McKee, 29 App. D. C. 4, 129 0. G. 869. 
 Whether a party has concealed or suppressed his inven- 
 tion. Matthes v. Burt, 24 xVpp. D. C. 265, 111 0. G. 
 1363. Whether a party has exercised reasonable dili- 
 gence, where diligence is required of him. Yates v. 
 Huson, 8 App. D. C. 93, 74 0. G. 1732. AVhat effect the 
 filing dates of the applications shall have in determining 
 the question of priority. SJierivood v. Drewson, 29 App. 
 D. C. 161, 130 0. G. 657. Whether one party was acting 
 as the agent of another in what he did in relation to the 
 invention. Milton v. Kingsley, 7 App. D. C. 531, 75 0. 
 G. 2193 ; Huel)el v. Bernard, 15 App. D. C. 510, 90 0. G. 
 751. Whether a party has the right to make the claims. 
 Podelsack v. Mclnnerney, 26 App. D. C. 399, 120 0. G. 
 2127 ; Wickers v. McKee, 29 App. D. C. 4, 120 0. G. 869. 
 Whether one of the parties failed to disclose the inven- 
 tion. Manley v. Williams, 168 0. G. 1034, 37 App. D. C. 
 194. Whether the application of one of the parties, as 
 originally filed, disclosed the invention in issue. Mc- 
 Knight v. PoJil, 130 0. G. 2067 (1907), 30 App. D. C. 92. 
 Wliether a party is a joint or sole inventor. Lemp v. 
 Randall, 146 0. G. 255, 35 App. D. C. 430. Whether the 
 applications had been altered after execution. Lind- 
 strom V. Ames, 168 0. G. 250, 37 App. D. C. 365. The 
 
 110
 
 invalidity of an oath executed before a notary who was 
 the attorne}' for the applicant. Dalton v. Wilson, 224 0. 
 G. 741, 44 xVpp. D. C. 249, and whether an application 
 was abandoned during prosecution. Kinsman v. Strohm, 
 136 0. G. 1769, 31 App. D. C. 581. All of the foregoing 
 (|uest'ions being material to the determination of priority, 
 it is proper to introduce evidence thereon. 
 
 193. Rebuttal Testimony. The word rebutting has a 
 two-fold signification, both in common and legal par- 
 lance. It sometimes means contradictory evidence only. 
 At other times overcoming testimony. It maj^ be em- 
 ploj'ed as contravening, or opposing, as well as over- 
 coming proof. Fain v. Cornett, 25 Ga. 184; Words & 
 Phrases, Vol. 7, page 5987. 
 
 The part}^ on whom the burden of proof rests is re- 
 quired to produce sufficient evidence to sustain his case. 
 The defendant meets this proof hj evidence to explain 
 or disprove the evidence already put in. 10 Fed. Cases 
 No. 5452 ; AcUin v. McCalmont Oil Co., 201 Pa. St. 257, 
 50 Atl. 955. 
 
 Where a party anticipates a defense and puts in evi- 
 dence which he is not required to put in in chief, and 
 thereby undertakes to meet the evidence of the defendant 
 before it is produced, he can not thereafter introduce 
 cumulative evidence upon the same subject, as rebuttal. 
 York V. Pease, 2 Gray (Mass.) 282. Nor can a party 
 under the guise of rebuttal, put in cumulative evidence 
 which merely goes to sustain and support that which he 
 has introduced to sustain his original case, nor evidence 
 on an essential point which he failed to prove in his 
 original case. Sivinglehurst v. Ballard, 265 0. G. 459, 
 258 Fed. 973 ; KoJiler v. Wells-Fargo & Co., 26 Cal. 606, 
 613. The admission or rejection of evidence offered in 
 rebuttal, is however, a matter largely in the discretion 
 of the court, the circumstances under which it is offered 
 and the good faith of the party being taken into ac- 
 count. Enc. of Ev. Vol. 10, page 651. 
 
 Ill
 
 "Where a junior party filed interrogatories in rebuttal 
 by which it was sought to prove that the senior party 
 was not the original inventor, it was held that the testi- 
 mony should be suppressed because it constitutes a part 
 of the junior party's original case. GolclscJimidt & 
 Weher v. Von Schutz, 192 0. G. 743 (1913). Testimony 
 taken in rebuttal will not be suppressed on motion or ob- 
 jection of the defendant upon the ground that it was not 
 proper rebuttal after the defendant has, by leave of 
 court, taken surrebuttal testimony. American Bank 
 Protection Co. v. City Nat. Bank, 181 Fed. 375. ' 
 
 Where a senior party proved dates later than those set 
 up in his preliminary statement, it was held not proper 
 for the junior party to make out a different prima facie 
 case in his rebuttal testimony. Woodhridge v. Winship, 
 21 Gour. 19-7 (Feb., 1909). 
 
 Where one party fails to take testimony it is improper 
 for his opponent to put in additional testimony as re- 
 buttal. Kinsman v. StroJim, 125 0. G. 1699 (1906). 
 
 Kebuttal testimony relating to the patentability of the 
 issue will be stricken out on motion. Parker v. Leivis, 
 120 0. G. 323 (1905). 
 
 193a. Surrebuttal Evidence. In setting dates for the 
 taking of testimony, no provision is made for taking sur- 
 rebuttal testimony, and if the evidence previously pro- 
 duced warrants the taking of surrebuttal testimony, the 
 party desiring to take the same should file a motion for 
 permission to do so. Whether this motion shall be granted 
 or refused is a matter within the discretion of the Ex- 
 aminer of Interferences. The privilege of taking such 
 testimony will b(! extended to a party whenever he has 
 been surprised by evidence or a line of defense in rebut- 
 tal wliich he has had no reason to anticipate or an op- 
 portunity to prepare against. Donning v. Stackpole and 
 Lagankr, 106 0. G. 264; 1903 C. D. 298. Such motions 
 have been denied wherein it was not shown that the 
 rebuttal testimony constituted a surprise. Howard v. 
 
 n2
 
 Sparc, 21 Gour. 19-8 (Mar., 1909); Ruthven v. Christ- 
 ensen, 138 0. G. 257 (1908). 
 
 In Wigmore on Evidence, Sec. 1874, it is said: "P^or 
 the opponent's case in surrebuttal there remain properly 
 only two sorts of evidence, namely, evidence explaining 
 away the effect of new facts brought forward by the 
 proponent in rebuttal, and evidence impeaching the wit- 
 nesses testifying in rebuttal. All other evidence could 
 and should have been put in in reply. Evidence legiti- 
 mately receivable in surrebuttal would be evidence im- 
 peaching rebuttal witnesses." 
 
 SUPPRESSION OF TESTIMONY. 
 
 194. Motion to Suppress. Where a part}' desires to 
 suppress certain testimon}-, he may make a motion to 
 suppress, designating the parts that he desires to have 
 suppressed, giving the grounds for such suppression. 
 The motion should be made before final hearing and be- 
 fore printing of the record, but a ruling thereon may, 
 and will be reserved for final hearing in cases where a 
 reading of the record would be required for the Exam- 
 iner of Interferences to determine whether or not the 
 testimony should be suppressed. The motion should be 
 noted for hearing with proof of service upon the oppos- 
 ing party. Talhot v. Monell, 99 0. G. 2965; 1902 C. 
 D. 216; Hall V. Alvord, 101 0. G. 1833 ; 1902 C. D. 418 ; 
 Dyson V. Land, etc., 130 0. G. 1690 (1907) ; Anclrcivs 
 V. Nilson, 111 0. G. 1038; Keith v. EricJiSon, etc., 157 0. 
 G. 754 (1910). 
 
 Whether a ruling on the motion should be reserved for 
 final hearing is a matter within the discretion of the 
 Examiner of Interferences. Jiojjce v. Kempshall, 119 0. 
 G. 338 (1905). 
 
 Refusal to suppress is not reversible error. Kcnipshall 
 V. Boyce, 129 0. G. 3162. 
 
 194a. Retaking Testimony. A party may be per- 
 mitted to retake his testimony where an irregularity in 
 10 113
 
 taking the same arose through inadvertence and not 
 through any desire to delay the proceedings or take any 
 unfair advantage over the opposing party. Where a 
 party finds that he has not taken his testimony in ac- 
 cordance with the rules, it is incumbent on him, in sup- 
 port of a motion to retake the testimony, to show wh}- he 
 failed to comply with the rules in the first instance and 
 that the granting of the motion will result in no hard- 
 ship to his opponent. Jones v. Starr, 111 0. G. 2221; 
 Shaw cO Weltij Shirt Co. v. Qualcr City Shirt Co., 157 
 O. G. 1000 (1910) : Goodfellow v. Jolly, 111 O.'G. 1940. 
 (See Sec. 220.) 
 
 The granting or refusing of a motion to retake testi- 
 mony is a matter within the discretion of the Examiner 
 of Interferences, or the Commissioner on appeal, and the 
 Court of Appeals, D. C will not interfere with the ex- 
 ercise of that discretion. Jones v. Starr, 1905 C. D. 694, 
 25 App. D. C. 529. 
 
 Since the primary reason for refusing a motion to re- 
 take testimony is the expense, inconvenience or disad- 
 vantage it might impose upon the opposing party, it 
 would seem that the Examiner of Interferences or the 
 Commissioner might properly impose conditions upon 
 which the mo^'ing party would be permitted to retake 
 the testimony. The moving party .should act promptly 
 upon discovery of the necessity to retake his testimony, 
 to the end that his opponent be not delayed, incon- 
 venienced or put to a disadvantage other than such as 
 would necessarily result when the moving party is acting 
 in good faith and with as much promptitude as the cir- 
 cumstances will permit. 
 
 195. Grounds for Suppression. The following facts 
 and circum.stanres may be valid grounds for siippressing 
 testimony. That the interrogatories are not proper re- 
 buttal. Gohlschmidt d- Weber v. Von Schviz, 192 0. G. 
 743 (1913) ; that the testimony relates solely to the 
 patentability of the counts and the state of tlie prior art. 
 
 114
 
 Felbel v. Oliver, 13 Gour. 4-11 (Jan., 1901) ; Dixon & 
 Marsh v. Graces, etc., 127 0. G. 1993 (1907) ; that tlie 
 testimony was not taken in accordance with the rules. 
 Blackman v. Alexander, 98 0. G. 1281 ; 1902 C. D. 41 ; 
 that the notary's certificate is defective in that it does 
 not certify that the depositions were read by or to the 
 witnesses before signing and that the notary did not 
 seal the depositions and forward them to the office. 
 Blackman v. Alexander, 98 0. G. 1281 : 1902 C. D. 41 ; 
 or failure to certify the date on which the package was 
 sealed, or the name of the person who transcribed the 
 stenographer's notes, or that they were written out in 
 presence of the notary, or that the notary failed to for- 
 ward the exhibits to the office, in the absence of a stipu- 
 lation that they may be retained by counsel. Rolfe v. 
 Taylor, 111 0. G. 1938; that the depositions were taken 
 without proper notice. Potter ik Oclis, 95 0. G. 1049 ; 
 
 1901 C. D. 39 ; that a party served notice to take testi- 
 mony and failed to appear and subsequently served an- 
 other notice and took the testimon}-. Denton v. Burn- 
 ham, 18 Gour. 83-11 (Nov., 1906) ; that the cross-exam- 
 ination sought to be stricken out is not proper cross- 
 examination; Marconi v. Shoemaker, etc., 121 0. G. 
 2664 (1906) ; that the testimony is not proper rebuttal; 
 Kinsman v. Strohm, 125 0. G. 1699 (1906), 135 0. G. 
 1121 (1908) ; that a party was not given an opportunity 
 to cross-examine tlie witnesses; Mnnster v. Ainsivorth, 
 128 0. G. 2085 (1906), 128 0. G. 2088; Mattice v. Lang- 
 worthy, 140 0. G. 507 (1909) ; that the testimony relates 
 solely to public use ; Stroud v. Miller, 101 0. G. 2075 ; 
 
 1902 C. D. 423 ; that corrections and additions were 
 made long after tlie testimony was taken and without 
 notice to the moving party. Independent Baking Pow- 
 der Co. V. Fidelity Mfg. Co., 94 0. G. 222; 1901 C. D. 7. 
 
 196. Grounds Insufficient. The fact that the notary 
 did not write the names of tlie witnesses at the top of 
 each page, is not sufficient grounds for suppression of a 
 
 115
 
 deposition; Rolfe v. Taylor, 111 0. G. 1938; nor that 
 the notary delayed filing the testimony, where such delay 
 is properly explained ; Moss v. Blaisdell, 113 0. G. 2505 ; 
 nor that certain words in the printed record are itali- 
 cized ; Faller v. Lorimer, 16 Gour. 37-11 ; nor that the 
 testimony was adduced by leading questions, though tes- 
 timony adduced by leading questions will be critically 
 scanned; Smith v. Brooks, 112 0. G. 953; nor that the 
 notary acted out of his jurisdiction, no objection being 
 made at the time the testimonj^ was taken ; Badger v. 
 Morgan, etc., 117 0. G. 598 (1905) ; nor the fact that 
 the notary was in the employ of the attorney for the op- 
 posing party, where no objection was made on that 
 ground at the time the testimony was taken; Royce v. 
 Kempshall, 117 0. G. 2090 ; nor that the notary failed to 
 certif}^ whether one of the parties was present in person 
 or by attorney; Royce v. Kempshall, 117 0. G. 2090; 
 nor that a party refused to produce or introduce in evi- 
 dence certain books about which he testified for the pur- 
 pose of refreshing his recollection, where it appears that 
 he offered the same to opposing counsel for inspection 
 at the time he testified. Bay State Belting Co. v. Kclton 
 Bruce Mfg. Co., 127 0. C. 1580 (1907) ; nor that a cer- 
 tain witness was not named in the notice. Keith, etc. v. 
 Lundquist, etc., 156 0. G. 798 (1910). 
 
 197. Suppressed Testimony — How Retained in the Rec- 
 ord. When testimony is stricken out on motion in an 
 interference proceeding, that part which is cancelled 
 should be shown by red lines and proper marginal notes, 
 as when matter is cancelled in a specification of an ap- 
 plication for a patent. When the record is printed, that 
 portion which is stricken out should not be printed in 
 the body of the testimony, but notice should be inserted 
 in the printed record that certain questions and answers 
 or other evidence was stricken out, giving the date of the 
 decision or order striking it out. The party whose tes- 
 timony has been stricken out may print the parts stricken 
 
 116
 
 out as an appendix to his record. Marconi v. Shoemaker, 
 etc., 121 0. G. 2664 (1906). 
 
 In an infringement suit, a part}^ may move to strike 
 out or he may insist upon his objections at the hearing. 
 In either event the matter stricken out remains in the 
 record for the purposes of appeal. Blease v. Garlington, 
 92 U. S. 1; Nelsoji v. V. S., 201 U. S. 92, 114; Woljf 
 Truck Frame Co. v. American Steel Foundries, 195 Fed. 
 940, 946. However, it was held in Felbel v. Oliver, 100 
 0. G. 1975 ; 1902 C. D. 309, that where a party prints 
 in his record depositions which have been suppressed, 
 such depositions will be expugned upon motion. 
 
 198. Testimony Taken in Another Interference — As 
 Evidence. Rule 157 provides that testimony taken in an 
 interference proceeding may be used in any other or sub- 
 sequent interference proceeding, so far as relevant and 
 material, subject to the right of the contesting party to 
 recall the witnesses whose testimony has been taken and 
 to take other testimony in rebuttal of the same. 
 
 For "What Purpose Material or Relevant. Testimony 
 taken in another interference may be introduced for the 
 purpose of discrediting or impeaching the testimom' of 
 the witness in a later interference. This is upon the well 
 established principle of evidence that the testimony of a 
 witness may be discredited or impeached by showing 
 declarations made at other times and places by the same 
 witness relating to the same subject which are not con- 
 sistent with his later testimony or are contradictory 
 thereof. TalUtt v. Monell, 99 0. G. 2965 ; 1902 C. D. 
 217; Heivitt V. Weintrauh, 134 0. G. 1561 (1908). Such 
 testimony may also be introduced where the issues in 
 the interferences are substantially the same and the 
 parties are the same and the provisions of Rule 157 are 
 otherwise complied with and a proper showing made. 
 It is for the office to determine whether the circumstances 
 are such as to permit the use of such testimony. This 
 rule is similar to the rules of evidence in the trial of 
 
 117
 
 causes in court. In Clow v. Baker, ct al., 36 Fed. 692, 
 the court said: "To prevent a failure of justice that 
 might result, it is permissible for the court, when cause 
 is shown therefor, to permit the depositions taken in one' 
 case to be read on the trial of another, if it appears that 
 the parties to the later case were the parties or privies 
 with the parties to the former suit ; that the issues upon 
 which the testimony was taken are substantially the 
 same ; and that every opportunity for thorough exam- 
 ination and cross-examination was afforded both .parties 
 when the testimony was taken. Kenny & Thordarson v. 
 O'Connell, et al, 117 0. G. 1163 (1905) ; Beall v. Lyon, 
 127 0. G. 3215 (1907) ; StrauNe v. Young, 119 0. G. 
 338 (1905). 
 
 199. The Hearing. The extent to which the Exam- 
 iner of Interferences will grant a hearing or re-hearing 
 of a case, is a matter ordinarily within his discretion. 
 Dunlap V. Crcveling, etc., 160 0. G. 774 (1910). 
 
 200. Postponement of Final Hearing. It is within the 
 discretion of the Examiner of Interferences and the Com- 
 missioner to extend the time for final hearing. Dunkley 
 V. Beekhuis, 158 0. G. 886 (1910). But a postponement 
 will not be granted to permit a party to intervene. In 
 re ColumMan Carhide Co., 20 Gour. 17-1 (March 27, 
 1908). 
 
 201. Admissions Made by Counsel at Hearing. Ad- 
 missions made by counsel at or before final hearing are 
 binding upon his client. Horton v. Zimmer, 32 App. 
 D. C. 217, 137 0. G. 2233 (1908) ; Mortimer v. TJiomas, 
 etc., 192 0. G. 215 (1913). 
 
 No Hearing After Expiration of Limit of Appeal. Rule 
 126 does not i)rovide for a hearing before the Commis- 
 sioner, and no hearing will be granted after the expira- 
 tion of the limit of appeal to an applicant whose claims 
 are found unpatentable by the Board of Examiners in 
 Chief in consideration of the claim in connection with 
 the question of priority. Holtz v. Hewitt, 127 0. G. 1992 
 
 118
 
 .(1907). Tlie len^lli of lime wliieli will be granted for 
 a heariii"' is withiji the diseretioii of the Examiner of In- 
 terferences. Moore v. (Uirlis, 320 0. G. 324 (1905); 
 Cazin v. Yon Welsliharh, 119 O. (i. 650 (1905). 
 
 202. Petition to Restore Jurisdiction. A petition to 
 restore jiirisdictioi! to the Examiner of Interferences will 
 not be set down for hearing, bnt briefs may be filed. 
 Adams v. EaiidaU, 125 (). (i. 1700 (1906). 
 
 203. Judgment Without a Hearing — Disclaimer. 
 Where there is a disclaimer filed the Examiner of Inter- 
 ferences will render judgment of priority without setting 
 a date for hearing. Toivnscnd v. Corey, 119 0. G. 2237 
 (1905). 
 
 204. Questions Raised But Not Argued. Where a 
 l^arty moves to dissolve upon all grounds mentioned in 
 Rule 122, but only argues part of them, judgment will 
 be rendered against him on the grounds not argued. 
 Harnish v. Gueniffet, et al., 117 0. G. 1492 (1905). 
 
 205. Statements of Examiner of Interferences Made at 
 Hearing — When Not Reviewable on Appeal. Where the 
 Examiner of Interferences makes a statement as to ad- 
 missions and waivers of counsel at a hearing, error there- 
 in, if any, will not be reviewed on appeal unless there 
 was a motion for a re-hearing presented to the Examiner 
 of Interferences and ruled upon. Hansel v. Wardwell, 
 116 0. G. 2008 (1905). 
 
 206. Hearing on Motion to Dissolve — New Grounds and 
 Notice. Patents referred to by one of the parties which 
 are not of record and have not been served upon the op- 
 posing party at least five daj's before the hearing will 
 not be considered on motion to dissolve unless service is 
 waived by the opposing party. Young v. Eick, 113 0. G. 
 547; Lake v. Cahill, 110 0. G. 2235; Wells v. Packer, 
 1900 C. D. 35, 90 0. G. 1947; Whitlock & Hnson v. 
 Scott, 99 0. G. 1385 ; 1902 C. D. 166. 
 
 What Will Be Considered on Motion to Dissolve. Noth- 
 ing can be considered which is not contained in the 
 
 119
 
 record of the ease unless timely notice (five days before 
 the hearing) of such matter is served upon the opposing 
 party. Summers v. Hart, 98 0. G. 2585 ; 1902 C. D. 104. 
 
 207. Notice of New Matter — Postponement of Hearing 
 to Give. Upon a proper showing of facts that the new 
 matter could not have been earlier discovered, a post- 
 ponement of the hearing will be granted to enable a 
 party to give the proper notice. Summers v. Hart, 98 
 0. G. 2585; 1902 C. D. 104. 
 
 JURISDICTION. 
 
 208. Jurisdiction of Examiner of Interferences. The 
 Examiner of Interferences has jurisdiction to determine 
 questions of priority and all matters which relate to the 
 question of priority, but not to dissolve an interference. 
 Brodwell v. Long, 21 Gour. 2-5 (Dec, 1908). Where 
 jurisdiction by the Primary Examiner is desired, it can 
 only be obtained by the order of the Commissioner and 
 the Primary Examiner should make his request of the 
 Commissioner. Hildreth, 97 0. G. 1374; 1901 C. D. 186. 
 He has not jurisdiction to grant amendments to appli- 
 cations. Moore v. Heivitt, 115 0. G. 509. Nor to require 
 the filing of a new oath. Dukcsmith v. Carrington v. 
 Turner, 125 0. G. 348 (190C). 
 
 209. Jurisdiction of Examiners in Chief. The Exam- 
 iners in Chief have appellate jurisdiction in all matters 
 properly' brought before them on appeal, but have no 
 jurisdiction to extend the time within which such appeal 
 may be taken. Blackmail v. Alexander, 105 0. G. 2059 
 (HK)3). 
 
 210. Jurisdiction of Commissioner Pending Appeal to 
 Court of Appeals. The (lonnnissioner of Patents has jur- 
 isdiction pending an appeal to the Court of Appeals to 
 hear and determine a motion to reopen a case for the 
 purpose of taking additional testimony. Clement v. 
 i:ir hards. He, 111 0. G. 1627. 
 
 211. Jurisdiction of Courts Over Witnesses in Inter- 
 
 120
 
 ferences. When a witness goes upon the stand in an in- 
 terference ease he submits to the jurisdiction of the U, 
 S. District Court in the district in which he testifies 
 and remains under that jurisdiction until his cross- 
 examiiuitiou is couchided. Lohel v. Cossey, 157 Fed. 664, 
 666. 
 
 212. Restoring Jurisdiction — Petition For. When it 
 is desired to restoi'c jurisdiction of the Examiner of In- 
 terferences to consider certain motions, copies of the mo- 
 tions which the petitioner desires the Examiner of In- 
 terferences to consider and decide shoidd accompany the 
 petition, and service of the papers shouki be made on 
 the opposite party. The petition shouki be addressed 
 to the Commissioner, but the Commissioner will not pass 
 upon the merits of the motion but merely upon the form 
 of it. Adams v. Randall, 125 0. G. 1700 (1906). 
 
 Restoring Jurisdiction After Limit of Appeal. Even 
 after the limit of appeal has expired upon a judgment 
 against the moving party, a motion to restore the juris- 
 diction of the Examiner of Interferences to hear a mo- 
 tion to reopen the case, may be granted upon proper 
 showing. Upscomh v. Pfelffer, 122 Q. G. 351 (1906). 
 After time for appeal has expired the Commissioner has 
 sole power to restore jurisdiction. Hough v. Gordon, 
 108 0. G. 797. 
 
 Restoring Jurisdiction Pending Appeal. Though an ap- 
 peal is pending before the Examiners in Chief on the 
 question of priority, the jurisdiction of the Examiner 
 of Interferences may be restored to consider a motion to 
 reopen the case to offer newly discovered evidence. New- 
 ell V. Clifford V. Rose, 122 0. G. 730 (1905) ; Dimhar v. 
 Schdlengcr, 118 0. G. 2536 (1905). 
 
 Restoring Jurisdiction to Hear Motions to Dissolve. 
 Under the former rules motions to transmit motions to 
 dissolve were heard by the Examiner of Interferences, 
 but under the present practice such motions to trans- 
 mit are heard first by the Commissioner and if in his 
 
 121
 
 opinion sucli motion should be transmitted it is so or- 
 dered and the motion then goes to the Law Examiner in- 
 stead of the Primary Examiner. Under the present 
 rules the motions are heard by different officials than 
 formerly heard such motions, l)ut the time for making 
 such motions and the character of showing required are 
 not changed and the old decisions may therefore be im- 
 portant guides as to the practice. 
 
 Where a party fails to make a motion to dissolve under 
 Rule 122 within the time provided, but waits until- testi- 
 mony lias been taken and judgment has been rendered 
 on priority, the jurisdiction of the Examiner of Inter- 
 ferences will not be restored to consider a motion to 
 transmit a motion to dissolve. Fessenden v. Potter, 101 
 0. G. 2823; 1902 C. D. 466. While under the present 
 rules the Examiner of Interferences does not have jur- 
 isdiction of motions to transmit motions to dissolve, still 
 a similar question might arise under the present rules 
 where the motion to transmit is heard by the Commis- 
 sioner. 
 
 213. Rehearing's. The various tribunals of the Patent 
 Office stand upon the same footing respecting their judg- 
 ments and decisions as do the courts. In Donning v. 
 Fisher, 125 0. G. 2765 (1906), it was said: "A court 
 has control over its own judgments and decrees during 
 the term at which they were rendered and may at any 
 time before the expiration of the term, in the exercise 
 of its discretion, open, amend, correct, revise, vacate, or 
 supplement any judgment or decree rendered during 
 such term. The tribunals of the Patent Office have this 
 power over their judgments within the limits of appeal. 
 They also have the power in analogy to the practice of 
 the courts, of requesting a rehearing of any point upon 
 which they desire further light. The granting of a re- 
 hearing or refusal to grant the same arc matters within 
 the discretion of the tribunal having jurisdiction of the 
 case at the time. ' ' 
 
 122
 
 In Rohinsoii v. Townscnd v. Copeland, 106 0. G. 997, 
 a luotioji was filed before the Commissioner to suspend 
 proeeeding's in the interference and remand tlie same to 
 the Examiner of -interferences to hear and determine a 
 motion to reopen the interference for the purpose of in- 
 troducing newly discovered evidence. At the time the 
 motion was brought, decisions had been rendered by the 
 Examiner of Interferences and by the Examiners in 
 Chief on the question of priority' and at the time this 
 motion was brought one of the parties had appealed to 
 the Commissioner. It was therefore held that there was 
 no necessit.y of snspending proceedings, since there was 
 no limit of appeal running against any of the parties, 
 but the hearing on the appeal was continned until the 
 final determination of the motion. It was further held 
 that the motion to open the case for further testimony 
 should be heard in the first instance b}^ the Examiner of 
 Interferences and therefore the motion to transmit the 
 motion to reopen, to the Examiner of Interferences, was 
 granted. 
 
 214. When Motion May Be Brought. A motion for 
 rehearing maj^ be brovight at any time before the expira- 
 tion of the time fixed for appeal and the motion may be 
 heard and decided after the limit of appeal has expired. 
 The filing of the motion does not stay the running of 
 the limit of appeal and if a party desires to appeal he 
 must do so within the limit of appeal notwithstanding 
 his motion for a rehearing. Naulty v. Cutler, 126 0. G. 
 389 (1907). 
 
 215. Appeal. There is no appeal from a decision 
 denying a motion for a rehearing, though the right to a 
 rehearing maj" be considered on appeal on the entire 
 record. Macey v. Laning v. Casler, 101 0. G. 1608 ; 
 Cannichael v. Fox, 104 0. G. 1656; Cole v. Zarbock v. 
 Green, 116 0. G. 1451 ; Hewitt v. Thomas, etc., 122 0. G. 
 1045. Approved in Naulti/ v. Cutler, 126 0. G. 389. 
 
 216. Newly Discovered Evidence as Ground for Re- 
 
 123
 
 hearing. "Where the ground upon which a rehearing is 
 sought is newly discovered e\'idence, the motion miLst 
 show that the evidence sought to be introduced was not 
 known at the time the original testimony was taken and 
 could not have been discovered at that time by the exer- 
 cise of reasonable diligence. Mosher v. TuUif <£■ Clark, 
 99 0. G. 2968 ; 1902 C. D. 224 ; Dudley v. Blickinsder- 
 fer, etc., 99 0. G. 228: 1902 C. D. 119: Latshaw v. Duff 
 V. Kaplan, 130 0. G. 980 (1907). 
 
 The motion must also show what the newly discovered 
 evidence consists of ; that is, if it is the testimony of vrit- 
 nesses, what the witnesses will testify to: if exhibits, 
 what the exhibits are that will be introduced in evi- 
 dence; that the evidence is material, and that the mov- 
 ing party was diligent in bringing the motion. Robin- 
 son V. Townsend v. Copeland, 100 0. G. 683 : 1902 C. D. 
 263; Allis v. Stoicell, 85 Fed. 481; Parker v. Spoon, 14 
 Gout. 19-8 (AprU, 1902) ; Crescent Oil Co. v. W. C. Rob- 
 inson & Son Co., 142 0. G. 1113 (1909). 
 
 It must also be shown that the newly discovered evi- 
 dence is of such character that the establishment of the 
 facts alleged would likely result in a change or modifica- 
 tion of the decision. French v. Halcomb, 110 0. G. 1727; 
 Ball V. Flora, 117 0. G. 2088 (1905) ; St ruble v. Toung, 
 etc., 139 0. G. 729 (1909). 
 
 It must also appear that due diligence was exercised in 
 presenting the motion. Beckert v. Currier, 104 0. G. 
 2439 (1903) ; Xeivell v. Clifford v. Rose, 125 0. G. 665 
 (1906) ; Claussen v. Dunbar, etc.. 129 0. G. 2499 
 (1907); Townsend v. Thullen, 21 Gour. 37-12 ^May, 
 1909). A delay of two weeks held not unreasonable. 
 Robinson v. Townsend v. Copeland, 107 0. G. 1376. 
 
 217. By Whom the Motion Shall Be Heard. The mo- 
 tion mu.st be heard in the fir.st instance by the Examiner 
 of Interferences and where the cause has passed out of 
 his jurisdiction, there must be a motion to restore his 
 juri.sdiction. Bon-fn v. Bradley, 58 0. G. 386; Robinson 
 
 124
 
 V. ToivHseml v. Copeland, 106 0. G. 997 (1903) ; Cle- 
 ment V. Bichards, etc., Ill 0. G. 1626; Dunbar v. Schel- 
 lenger, 19 Goiir. 37-17 (April, 1907) ; liolfe v. Leepcr, 
 159 0. G. 991 (1910). Can not be granted by the Court 
 of Appeals D. C. DeFerranti v. Lindmark, 32 App. D. 
 C. 6, 137 0. G. 733 (1908). A motion to transmit a mo- 
 tion to take further testimony, made pending an appeal 
 to the Court of Appeals, will be granted upon a proper 
 showing. Clements v. Richards v. Meissner, 111 0. G. 
 1626. 
 
 Official Request for Rehearing. Where the request is 
 made by the tribunal before whom the case was previous- 
 ly heard, it will be granted jurisdiction. Bettendorf, 17 
 Gour. 41-22 (May, 1905). 
 
 218. Insufficient Grounds for Rehearing. There is no 
 sufficient ground for a rehearing where there is an ab- 
 sence of a showing why the evidence was not produced 
 when the testimony was originally taken. Mosler v. 
 Tully & Clark, 99* 0. G. 2968 ; 1902 C. D. 224. Or 
 where the evidence sought to be introduced is immate- 
 rial, or relates wholly to expert testimony. Robinson v. 
 Townsend v. Co^peland, 107 0. G. 1376 (1903). Or 
 where the showing is merely that a party failed to pro- 
 duce his best evidence, or the object is merely to strength- 
 en the testimony already in the record. Sutton v. Mc- 
 Donald, etc., 98 0. G. 1418 ; 1902 C. D. 47 ; Harris v. 
 Stern & Lotz, 101 0. G. 1132 ; 1902 C. D. 386. Or where 
 the purpose is to explain certain exhibits which are in 
 evidence. Blackman v. Alexander, 104 0. G. 2441 
 (1903). Or where it appears that the evidence is unim- 
 portant or could have been discovered by the exercise of 
 reasonable diligence. Shaffer v. Dolan, 100 0. G. 3012 ; 
 1902 C. D. 344. Or where a party failed to produce the 
 evidence because he did not regard it as material. Rob- 
 erts I'. Bachelle, 101 0. G. 1831; 1902 C. D. 415. Or 
 that a party did not recall certain facts at the time his 
 testimony was taken. French v. Halcomb, 110 0. G, 
 
 125
 
 1727. Or where it appears that a party knew of the 
 evidence but did not introduce it because of the expense 
 which he would have had to incur in securing it. Or enter 
 V. Mathieu, 111 0. G. 582. Or where the proposed evi- 
 dence relates solely to a statutory bar. Ritter v. Krakau 
 & Conner, 108 0. G. 1050. Or where the evidence relates 
 to the right of a party to make the claims and not to 
 priority. Oshorn v. Austin, 115 0. G. 1065. Or where 
 it is based on the fact that a party misjudged her ability 
 to prove her case and for that reason took no testimony. 
 Hidl V. McGill, 117 0. G. 597. Nor is the fact that one 
 of the witnesses of a party was sick, another was hostile 
 and another was out of town at the time the original 
 testimony was taken, sufficient ground for rehearing, 
 though such facts fnay have been sufficient to support a 
 motion or extension of time for taking testimony. Newell 
 V. Clifford V. Rose, 125 0. G. 665 (1906). Or where the 
 purpose is merely to introduce an earlier application. 
 Cutler V. Hall, 135 0. G. M9 (1908). Or where it ap- 
 pears that the testimony was improperly taken as rebut- 
 tal and thereafter stricken out. McNeil v. Stephenson, 
 192 0. G. 517 (1913). Or where the testimony was 
 known and available when the original testimony was 
 taken. Wehher v. Wood, 184 0. G. 553 (1912). 
 
 219. Stay of Proceeding's. A motion for rehearing 
 does not of itself operate as a stay of proceedings. Char- 
 michael v. Fox, 104 0. G. 1656 (1903). Nor stay the 
 running of time for appeal. Naulty v. Cutler, 126 0. G. 
 389 (1907). If future proceedings require that a party 
 take some action before his motion for rehearing can be 
 hoard, and the proceedings are such as may be suspended, 
 a motion to suspend proceedings should be made. Roh- 
 inson v. Towusend v. Copehind, 106 0. G. 997. 
 
 220. Suppression of Testimony — Rehearing. Where 
 testimony is suppressed because of irregularities in tak- 
 ing thereof due entirel.y to inadvertence and not inten- 
 tion to delay proceedings, the party should be given an 
 
 126
 
 opportunity to retake the testimony. Blackman v. Alex- 
 ander, 100 0. G. 2383 ; 1902 C. D. 323. But wliere testi- 
 mony is improperly taken as rebuttal and due notice is 
 given that a motion will be presented to suppress the 
 same, the case will not be reopened to take such testi- 
 mony. McNeil V. Stephenson, 192 0. G. 517 (1913). 
 
 221. Motion to Dissolve — Rehearnig. A party may 
 obtain a reconsideration of a motion to dissolve by show- 
 ing good cause which justifies a rehearing. Newcomh v. 
 Lemp, 110 0. G. 307. But where a party fails to cite all 
 the references which he might have cited on his motion 
 to dissolve, such failure does not entitle him to a re- 
 hearing. White V. Powell, 160 0. G. 776 (1910). Where 
 a motion to dissolve on the ground that a party has no 
 right to make the claims was not presented at the proper 
 time, but after all the testimony had been taken, the case 
 will not be reopened to consider such motion or a motion 
 for permission to take testimony as to the operativeness 
 of an opponent's device. Broadwell v. Long, 164 0. G. 
 252. 
 
 222. Second Interference Improperly Declared — Re- 
 hearing of First Interference. Where a second interfer- 
 ence was improperly declared, the first interference will 
 not be reheard for the purpose of including the issue in 
 the second interference. We7ide v. Horine, 130 0. G. 
 1311 (1907). 
 
 223. Stay of Proceedings — How Obtained. Motions 
 brought under Rules 309 and 122, when set for hearing, 
 stay proceedings pending the determination of the mo- 
 tions. Rule 123. In all other cases a motion to stay 
 proceedings must be brought under Rule 123, which mo- 
 tion should set forth with particularity the circumstances 
 of the case which make it necessary that the proceedings 
 be sta^^ed. Iloegh v. Gordon, 108 0. G. 797. Proceed- 
 ings may be suspended by stipulation. McKean v. Morse, 
 94 0. G. 1557 ; 1901 C. D. 33. 
 
 224. Insufficient Grounds. An interference proceed- 
 
 127
 
 ing will not be suspended to permit a party to take out a 
 patent upon a closely allied invention, merely because 
 through the interference the opposing party might learn 
 of such other application. Field, 130 0. G. 1687 (1906). 
 
 The taking of testimony on the question of priority 
 will not be suspended until the question of the right to 
 make the claims has been determined. Hewitt v. Wein- 
 traul. etc., 128 0. G. 1689 (1907). 
 
 Ex Parte Rights. Proceedings will not be stayed to 
 consider ex parte rights, since such rights should be con- 
 sidered after decision on priority. Dunhar v. Schellen- 
 ger, 121 0. G. 687 (1905) ; Marl: v. Gre'eneivalt, 118 0. 
 G. 1068 (1905). 
 
 The fact that one of the parties to an interference has 
 a patent and has an infringement suit pending against 
 the other party, is no ground for suspending the pro- 
 ceedings in the interference. McBride v. Kemp. 109 0. 
 G. 1069. Xor is the fact that it is alleged that joint ap- 
 plicants are not .joint inventors, since that is a question 
 which may be determined on final hearing. Eohinson v. 
 Muller d- Bonnet, 110 0. G. 1-129. 
 
 225. Interference Terminated as to Some Parties — Ef- 
 fect of Stay. A stay of proceedings after the termination 
 of an interference as to some of the parties, only operates 
 as to the remainder of such parties. Siraren i'. Sand^ge, 
 etc., 17 Gour. 34-1 r April. 1905\ 
 
 226. Resumption — Suspended to Hear Motion. "Wliere 
 proceedings are suspended to hear a motion, they are re- 
 .sumed on the date the motion is finally determined, and 
 no notice of resumption, other than notice of the deci- 
 sion, is necessary. Greuter v. Maihieu, 112 0. G. 253; 
 Blnckman v. Alcrauder, 105 0. G. 2059 (1903). But in 
 Hewitt V. Steinmctz, 122 0. G. 1396 (1906), it was held 
 that times fixed for taking testimony do not commence 
 to run after suspension of proceedings for consideration 
 of motions for dissolution, until the cases are returned to 
 
 128
 
 the Examiner of Interferences and formal notice of re- 
 snmption of proeeedinji's is noted. 
 
 227. Appeal — Effect of Stay. If a stay of proceedings 
 is obtained after a decision is made and the time for 
 appeal is fixed, such stay stops the running of time for 
 appeal, but the time for appeal begins to run again as 
 soon as the stay is ended and whatever time shall have 
 expired between the time the limit of appeal was fixed 
 and the granting of the stay, is lost to the party who ob- 
 tains the stay, and he has only the remainder of the time 
 originally fixed for appeal. Blackman v. Alexander, 105 
 0. G. 2059 (1903). 
 
 Order of Suspension Modified After Appeal. An order 
 suspending proceedings may be modified after appeal, 
 provided the questions presented on appeal are not af- 
 fected thereby. Herreshoff v. Knieise'li, 111 0. G. 1624. 
 
 After Appeal Stay Unnecessary. After a party has 
 appealed no stay of proceedings is necessary, but if the 
 circumstances make it necessary to have more time for 
 taking some action, the proper practice would be to ask 
 that the hearing on appeal be continued. Bohinson v. 
 Townsend v. Copeland, 106 0. G. 997 (1903). 
 
 Appeal to the Court of Appeals — Time For Not Stayed. 
 The oifice can not stay the running of time for appeal to 
 the Court of Appeals, D. C, because that is a matter con- 
 trolled by the rules of the court. Clement v. Richards v. 
 Weissner, 16 Gour. 52-10. J^ac OcnXut fff? ^^' 
 
 RES ADJUDICATA. y "^t^X^^ /<^ ><^ Cr ^ ■ 2^ / 
 
 228. Successive Interferences — Res Adjudicata. Where 
 after final decision in an interference, claims are pre- 
 sented hj the losing party which are such that they 
 would dominate the subject matter upon which the other 
 party prevailed, the decision in the interference would 
 be res adjudicata. In re Curtiss, 238 0. G. 650, 46 App. 
 D. C. 183. 
 
 As to claims involved in a second interference between 
 n 129
 
 the same parties which could have been made in the first 
 interference on the question of priority, the first deci- 
 sion is res adjudicata. Hoipkins v. Newman, 131 0. G. 
 1161 (1907). 
 
 229. What Questions Are Determined by Interference. 
 A final decision in an interference proceeding, as between 
 the parties thereto, is conclusive as to all questions which 
 were or could have been presented and determined by 
 that proceeding. Blackford v. Wilder, 28 App. D. C. 
 535, 127 0. G. 1255 (1907) ; Sarfert v. Meyer, 109 0. G. 
 1885; Cross v. Rushy, 42 App. D. C. 227, 204 0. G. 
 1347 ; Horine v. Wende, 29 App. D. C. 415 ; 1907 C. D. 
 615. 
 
 230. Second Interference — When Allowed. Second in- 
 terferences will be allowed only under exceptional cir- 
 cumstances and will not ordinarily be declared upon 
 claims to the same device differing from the first issue 
 merely in scope. Corey cO Baker v. Trout v. McDermoU, 
 110 0. G. 306. 
 
 Second Interference — Rule 109. The purpose of Kule 
 109 is to avoid second interferences, and where a party 
 fails to take advantage of that rule he loses the right to 
 contest the question of priority as to the claims made by 
 his opponent. Sution, Steele & Steele, 121 0. G. 1012 
 (1906). 
 
 231. Judgments in Interferences. There are two kinds 
 of judgments in interferences, interlocutory and final 
 judgments. 
 
 A final judgment is one which determines the rights of 
 the parties in the matter in controversy, or a definite 
 branch of it and reserves no further question for future 
 determination, but a judgment may be final though it 
 does not determine the rights of the parties if it ends the 
 suit. 
 
 All interlocutor}^ judgment is one which does not dis- 
 pose of the suit but reserves some further question for 
 future determination. 
 
 130
 
 An interference is for the purpose of determining 
 who, as between the parties to it, was the first in point of 
 time to invent the subject matter in issue. 
 
 In declaring the interference the Examiner settles to 
 his own satisfaction all preliminary questions which must 
 be determined in order that the question of priority may 
 be investigated and determined by final judgment. To 
 do this he determines that the issue is patentable ; that 
 it is properly declared so that there may be a proper 
 determination of the question of priority; that each of 
 the parties has the right to make the claims and who are 
 the senior and junior parties. If any party desires to 
 question the correctness of his conclusions he should do 
 so by appropriate motions provided by the rules of prac- 
 tice, as for instance, if he wishes to question the deci- 
 sion as to whether he is a junior or the senior party, he 
 should move to shift the burden of proof. A decision on 
 this motion would be an interlocutory judgment from 
 which there is no appeal, but which may be presented 
 again on appeal from the final decision on priority. If 
 a party believes the issue is not patentable he moves 
 to dissolve the interference for that reason and if upon 
 this motion the Law Examiner holds the issue is not 
 patentable, this is a final judgment and puts an end to 
 the interference unless one or more of the parties appeal 
 and obtain a reversal of the judgment. This though a 
 final judgment, is not a final judgment on priority, there 
 being no question of priority involved. The foregoing 
 are given as illustrations of interlocutory and final judg- 
 ments. 
 
 231a. What Questions Should Be Presented by Motions. 
 All questions, except those involving priority', should be 
 presented by appropriate motions as provided in the 
 rules. Some questions which should first be presented 
 by motion may also be urged at final hearing as involving 
 the question of priority, illustrations of which will be 
 
 131
 
 found ill Sec. 154a. Questions anciliary to the question 
 of priority are set forth in Sec. 192. 
 
 232. Res Adjudicata. When a second suit is upon the 
 same cause of action, and between the same parties as the 
 first, the judgment in the former is conclusive in the lat- 
 ter as to every question which was or might have been 
 presented and determined in the first action; but when 
 the second suit is upon a different cause of action, though 
 between the same parties, the judgment in the former 
 action operates as an estoppel only as to the point or 
 question actually litigated and determined, and not as 
 to other matters which might have been litigated and 
 determined. Neshit v. Riverside Independent District, 
 144 U. S. 610, 618; Neiv Orleans v. Citizen's Bank, 167 
 U. S. 371, 386; S. P. R. R. v. U. S., 168 U. S. 1, 48. It 
 was held that the doctrine as above stated is applicable 
 to decisions of the Patent Office. It was therefore held 
 in Blackford v. Wilder, 127 0. G. 1255 (1907), 28 App. 
 D. C. 535; Wende v. Horine, 129 0. G. 2858, 29 App. 
 D. C. 415, and In re Marconi, 179 0. G. 577, 38 App. D. 
 C. 286, that the losing party in an interference can not, 
 after the interference, present claims which will dom- 
 inate the issue involved in the interference. In other 
 words, the party who prevails in the interference is by 
 reason of the judgment of priority given the right to the 
 subject matter involved and it can not afterward be 
 given to another without taking it from him, and the 
 question of his right to it having been fairly tried, he 
 shoidd not and can not be forced to retry the question, 
 except upon appeal. See also Carroll v. Ilalwood, 135 
 0. G. 896, 31 App. D. C. 165. 
 
 The fact that a party has a right under the statute to 
 bring an action in equity to obtain a patent notwith- 
 standing such judgment of priority, does not lessen the 
 force of tho foregoing decisions, since this is a right 
 granted l)y statute to retry the issues and must be 
 
 132
 
 availed of in accordance with the pi"o\'isioiis of the stat- 
 ute. 
 
 In harmony also with the foregoing decisions is the 
 later case of Kushij /•. Cross, 204 0. G. 321, 42 App. D. C. 
 341. Rusby prevailed in the interference. He then pre- 
 sented claims dominating certain craims of a patent in- 
 advertently issued to Cross, the claims of which were not 
 involved in the interference. Because Cross could have 
 presented these claims but failed to do so, it was held 
 that the judgment of priority awarded Rusby was res 
 adjudicata as to those claims. Each party was demand- 
 ing a right to the claims which formed the subject mat- 
 ter of the interference and it was incumbent on each 
 party to present whatever facts he could to sustain his 
 right therto. A winning party in an interference should 
 not be disturbed in the full enjoyment of that which he 
 has won, nor should he be penalized by further litiga- 
 tion for which there is no excuse other than that his 
 opponent neglected to present all the facts which he 
 could have presented. 
 
 233. Broad Claims Presented After Termination of In- 
 terference — Res Adjudicata. Where after termination of 
 an interference involving only narrow claims, the win- 
 ning party takes out a patent on the narrow claims, not 
 claiming the invention broadly, and the losing party es- 
 tablishes by competent evidence that he made another 
 species of the invention patentably different from that 
 involved in the interference prior to the date of inven- 
 tion established by his opponent, he is entitled to a claim 
 broad enough to cover both forms of the invention not- 
 withstanding the adverse decision in the interference. 
 Such is the holding by the Board of Examiners in Chief. 
 In re Klahn, 241 0. G. 623; 1917 C. D. 7 (See Estoppel, 
 Sec. 242). 
 
 In Temple v. Goodrum, 176 O. G. 526, the losing party 
 in the interference, after judgment on priority, pre- 
 sented claims which read upon his ow^n case and the two 
 
 133
 
 other cases with which he liad been involved but which 
 could not have been added to that interference because of 
 a decision in another interference adverse to one of the 
 parties. These claims were held res adjudicata because 
 the applicant could have presented and contested them 
 with the other party who could have made them, concur- 
 rently with the other interfering subject matter. 
 
 In Frickeij v. Ogden, 199 0. G. 307, it was held that 
 where during the pendency of an interference between 
 Ogden and Cornwall, but too late to be added thereto, an 
 application was filed by Frickey which was assigned to 
 the same party as that of Cornwall and it appeared that 
 the assignee controlled both inventions and could have 
 filed the application of Frickey in time for it to have 
 been included in the interference between Ogden and 
 Cornwall, but neglected to do so, he was estopped to con- 
 test further with Ogden the subject matter thereof. 
 
 234. Motion to Dissolve — When Judgment is Res Ad- 
 judicata. When a motion to dissolve on the ground that 
 a party has no right to make the claims is sustained and 
 no appeal is taken, such judgment is final as to the right 
 of the losing party to a patent, or in other words, it is 
 res adjudicata in the further prosecution of his applica- 
 tion. U. 8. ex rel. Neivcomh Motor Co. v. Moore, 133 0. 
 G. 1680, 30 App. D. C. 464. 
 
 Motion to Dissolve — Unpatentability. Since every ap- 
 plicant is entitled to appeal to the Court of xVppeals on 
 the patentability of his claims and since motions to dis- 
 solve can be carried no farther than the Commissioner, 
 the dissolution on this ground is not conclusive against 
 the parties. Gold v. Gold, 150 0. G. 570, 34 App. D. C. 
 229. 
 
 Right of Prevailing Party to Patent — Not Res Adjudi- 
 cata. Tlie riglit of the prevailing party in. an interfer- 
 ence to a patent is not conclusively determined by a judg- 
 ment of priority because it may be tbat a statutory bar 
 exists such as ]Miblic use. After the interference is 
 
 134
 
 terminated public use proceedings may be instituted and 
 the issue in such ease is not one of priority, nor is it con- 
 fined to the structures or parties to tlie interference. 
 In re Pittsburgh Brake Shoe Co., 176 0. G. 750 (1912) ; 
 Gueniffet, etc. v. Wictorsohn, 134 0. G. 255, 134 0. G. 
 779, 30 App. D. C. 432. 
 
 235. Prior Motion — Res Adjudicata. Where a party 
 makes a motion he must set up all that he can offer in 
 support thereof as he is precluded from bringing an- 
 other motion upon the same ground. Toivtisend v. Ehret, 
 etc., 137 0. G. 1485 (1908) ; Townsend v. Thullen v. 
 Young, 137 0. G. 1710 (1908). 
 
 236. Judgment of Priority — Eifect. Under the rules 
 and practice of the Patent Office the decision of the Ex- 
 aminer of Interferences on a declared interference deter- 
 mines only the question of priority of invention in time 
 as between the parties, and the party against whom the 
 decision is rendered may still contend that the successful 
 party is not entitled to the claims made, and he is not 
 concluded upon the question of his right to a patent 
 until the expiration of the time allowed him by statute 
 for an appeal from the final order rejecting his applica- 
 tion. Westifighouse v. Hien, et al., 159 Fed. 936. 
 
 A judgment in an interference is to the effect that the 
 losing party is not the first inventor of the subject mat- 
 ter in issue and he is therefore not entitled to a patent 
 as to that issue. But such judgment is not conclusive 
 against the losing party under all circumstances, for, 
 it may appear that subsequent to the rendition of the 
 judgment the prevailing party abandoned his applica- 
 tion, never in any way gave his invention to the public 
 and never took out his patent. And where the judgment 
 was rendered upon the record because the losing party 
 failed to produce any testimony to support his prelim- 
 inary statement, the prevailing party was not required 
 to take testimony and the judgment was therefore based 
 upon the applications, there being no evidence of actual 
 
 185
 
 reduction to practice by either party. In such case, if 
 the prevailing party, after judgment, permits his appli- 
 cation to become abandoned and has in no way given his 
 invention to the public, he has not completed the act of 
 invention by in any manner giving the public the ben- 
 efit of his invention. Since an abandoned application is 
 not a bar to the granting of a patent to another, the los- 
 ing party in such interference, if he has kept his appli- 
 cation alive, is entitled to a patent on the issue notwith- 
 standing such judgment of priority. It was held in Ex 
 parte Phelps, 176 0. G. 525, that a judgment of priority 
 was a bar to the claims of the losing part}^ even though 
 the prevailing party had permitted his application to 
 become abandoned after judgment and there was no tes- 
 timony taken in the interference to show an actual reduc- 
 tion to practice by the prevailing party. But in Jolliffe 
 V. Waldo V. Vermer & Schorick, 234 0. G. 671 (1916), 
 Commissioner Ewing did not agree with the reasoning in 
 Ex parte Phelps, 176 0. G. 525, and held that the losing 
 party under such circumstances was entitled to a patent 
 notwithstanding the judgment of priority against him. 
 See also Fauslow v. Whitney, 266 0. G. 742 (1910). 
 
 237. Judgement on the Record — When Not Permissible. 
 Where a junior party to an interference alleges in his 
 preliminary statement a date of conception of the inven- 
 tion in issue prior to the senior party's filing date, but 
 the other dates alleged are subsequent thereto, an order 
 to show cause why judgment should not be rendered on 
 tlie record should not be granted, as, conception might be 
 proved as alleged. Peters v. Hopkins d: Dement, 150 0. 
 G. 1044, 34 App. D. C. 141. 
 
 238. Motion for Judgment on the Record — Question 
 Raised. A motioii for judgment on tlie record in an in- 
 terference does not present the case for final hearing on 
 the merits, but raises only tlie (piestion of the sufficiency 
 of the allegations of the preliminary statements of the 
 opposing parties, admitting their truth for the purposes 
 
 136
 
 of the motion only. Lindmark v. Dc Ferrnnii, 153 0. C 
 1082, .'U A])p. 1). ('. 445. But where the junior party 
 in his preliminary statement fails to allege a date of 
 conception earlier than tiie filing date of his opponent, 
 judgment of priority will he awarded to the senior party 
 on the record. Ncih tC- TanipJIn v. Ohmcr, 123 0. G. 998. 
 In response to a motion to show cause why judgment 
 should not he rendered upon the record, a party may 
 move to dissolve the interference. Field v. Colman, 131 
 0. G. 1686 (1907); Felhel v. Fox, 130 0. G. 2375 
 (1907); Jar vis v. de Focatiis, 20 Gour. 66-4 (Mar., 
 1908). 
 
 239. For Failure to File Preliminary Statement. 
 Where a part}' fails to file any preliminary statement 
 and his filing date is later than that of one of his op- 
 ponents, an order will be made to show cause why judg- 
 ment should not be entered against him. If he fails to 
 respond to this order judgment will be rendered that he 
 is not the first inventor, but where there are several 
 parties such judgment is not a holding that he was the 
 last of all the parties to make the invention. Dutcher v. 
 Matthew, etc., 118 0. G. 2538 (1905). 
 
 240. For Failure to Print Testimony. Judgment of 
 priority will be awarded against a junior party who fails 
 to print his testimony. Brown v. Gillett, 191 0. G. 832 
 (1913). 
 
 241. For Failure to Take Testimony. When the time 
 for taking testimony has expired and no testimony has 
 been taken or filed by either party, it is the duty of the 
 Examiner of Interferences to award priority to the 
 senior party under Rule 116. Brough v. Snyder, 94 0. 
 G. 221 ; 1901 C. D. 3. 
 
 ESTOPPEL. 
 
 242. By Judgment in Interference (See title Judg- 
 ment ) . 
 
 By Concealment (See title Concealment). 
 
 137
 
 To Deny Validity of Patent After Contesting an Inter- 
 ference. Where a party has made application for a pat- 
 ent on the invention and contested an interference in re- 
 gard to it, the contention against his successful rival 
 that the invention is not patentable does not come with 
 good grace. R. Thomas cC- Sons Co. v. The Electric 
 Porcelain cf- Mfg. Co., et ah, 111 Fed. 923, 97 0. G. 1838; 
 1901 C. D. 510. Nevertheless a defeated party in an in- 
 terference is not estopped to deny the validity of the 
 patent granted on his opponent's application. -Auto- 
 matic RacJiing Machine Co. v. ^Vhite RacJcer Co., 145 
 Fed. 643, 645. 
 
 To Make Claim After Rights or Third Parties Have In- 
 tervened. A party is not estopped from subsequently 
 making a claim to an invention unless there is a failure 
 of the specification to disclose it. The absence of a def- 
 inite and special claim for an invention when the appli- 
 cation was originally filed does not act as an estoppel to 
 the subsequent making of the claim. In Bechman v. 
 Wood, 89 0. G. 2462, and Miehle v. Read, 18 App. D. C. 
 128, 96 0. G. 426, it was held that where there are inter- 
 vening rights an applicant may not broaden his claims to 
 destroy those rights. Furman v. Dean, 114 0. G. 1552. 
 
 By Failure to Appeal. Where action is taken by the 
 office upon motion to dissolve an interference from which 
 an appeal may be taken in the interference and the op- 
 portunity for such appeal is neglected, an ex parte ap- 
 peal thereafter upon the same matter will not be enter- 
 tained except where the right of appeal is statutory. 
 Xewcomh v. Thompson, 122 0. G. 3012 (1906). 
 
 242a. By Failure to Make Claims Under Rule 109. 
 The purpose of Rule 109 is to avoid a second interfer- 
 ence, and where a party fails to take advantage of that 
 rule he loses his right to contest the question of priority 
 as to the claims made by his opponent. Sutton v. Steele 
 cC- Steele, 121 0. G. 1012 (1906). 
 
 By Admissions of Solicitor in Prosecution of Applica- 
 138
 
 tion. A party is estopped to deny admissions made by 
 his solicitor in the i)rosecution of his application. Weis- 
 senthanner v. Dodc/e Metallic Cap Co., 156 Fed. 365, 368, 
 
 243. Judicial Notice. Since the Commissioner of Pat- 
 ents may take judicial notice of facts adjudicated by the 
 Supreme Court of the United States in a cause passed 
 upon by that court, he maj" for a stronger reason act 
 upon knowledge deri^ed from a search of the records of 
 litigation and decisions made in his own department even 
 though such records have not been formally introduced 
 in evidence. In Ee Marconi, 179 0. G. 577, 38 App. D. 
 C. 286 ; 1912 C. D. 483 ; In re Drawhaugh, 1896 C. D. 
 527, 77 0. G. 313, 9 App. D. C. 219; McDermott, 15 
 Gour. 88-26 (Oct., 1903). 
 
 The Commissioner takes judicial notice of the deci- 
 sions of the Court of Appeals, D. C. Tournier, 108 0. G. 
 798. 
 
 Facts of which the tribunal before whom the cause is 
 tried, is bound to take judicial notice, need not be proven. 
 Ball V. Flora, 121 0. G. 2668 (1905). 
 
 Judicial notice will be taken of the contents of stand- 
 ard books of reference. Werk v. Parker, 264 0. G. 159, 
 249 U. S. 130. 
 
 While the court takes notice of its own records, it can 
 not travel for this purpose out of the records relating to 
 the particular case. Thus in one case the court can not 
 take notice of the proceedings in another case, unless 
 such proceedings are put in evidence. Wharton on Evi- 
 dence, Vol. 1, See. 326. 
 
 The court can not in one case take judicial notice of 
 the records in a different case, even though pending in 
 the same court. Nor will it take judicial notice in a given 
 case of the pendency of proceedings in other causes in 
 the same court, much less of those of other courts. Jones 
 on Evidence, Sec. 129. 
 
 Special Knowledge of the Judge. A judge has no right 
 to act upon his own personal or special knowledge of 
 
 • 139
 
 facts, as distinguished from that general knowledge 
 which might l)e important to other persons of intelli- 
 gence, since if the judge knows anything which would aid 
 one of the parties he should be called from his place as 
 judge and become a witness. Jones on Evidence, Sec. 
 133. 
 
 MOTIONS. 
 
 244. (See Forms, Dissolution, Preliminary State- 
 ment, Hearing, Burden of Proof, Stay of Proceedings.) 
 
 Interlocutory Motions — What Are Permitted. ' Inter- 
 locutory motions are not permitted upon matters which 
 can not be determined from a consideration of the appli- 
 cation and office records and which require the taking of 
 proofs. Cory, etc. v. Blakey, 115 0. G. 1328. 
 
 Piecemeal prosecution is against the policy of the of- 
 fice, and hence a party may not make a motion which 
 embodies but a part of his grounds for relief and after 
 that has been determined, file other motions for other 
 reasons which could have been and should have been in- 
 cluded in the first motion. Williams v. Wehster v. 
 Sprague, 148 0. G. 280 (1909) ; Egly v. Schultz, 117 0. 
 G. 276 (1905). 
 
 To Dissolve Interference. (See Dissolution.) 
 
 To Transmit Motions. Where a party desires to pre- 
 sent a question which can not be passed upon by the par- 
 ticular tribunal before whom the case is at the time 
 pending because of lack of jurisdiction to hear the mo- 
 tion, it is necessarj' to make a motion to transmit the mo- 
 tion to such tribunal. A motion to transmit should be 
 accompanied by the motion which is to be transmitted. 
 Under the present rules such motions are filed before and 
 passed ujion by the Commissioner. If in the opinion of 
 the Commissioner the motion be not in proper form, or 
 if it be not brought within th(> time specified and no 
 satisfactory reason be given for the delay, it will not be 
 tran.smitted. Kule 122. If the motion is transmitted, 
 
 140
 
 it is sent to the Law Examiner for his opinion thereon. 
 Under the former i)ractice and under which most of the 
 decisions elsewhere considered under the head of ''dis- 
 solution" were rendered, a motion to transmit a motion 
 to dissolve was filed before the Examiner of Interfer- 
 ences and if granted, the original motion then went to 
 the Primary Examiner for determination. Since the 
 change in the rules relate to the jurisdiction of the offi- 
 cial who is authorized to pass upon the same, it is be- 
 lieved that the decisions under the old rules will apply 
 under the new rules in so far as the form and merits of 
 such motions are concerned. 
 
 To Shift the Burden of Proof. Motions to shift the bur- 
 den of proof should be filed before and decided by the 
 Examiner of Interferences. Rule 122 (See Burden of 
 Proof). 
 
 To Amend Preliminary Statement. (See Preliminary 
 Statement — Amendment of. ) 
 
 To Postpone Time for Filing Preliminary Statement. 
 Rule 104. (See Preliminary Statement.) 
 
 To Postpone Hearing. (Rules 120-153. See Hearing.) 
 
 To Extend Time for Taking Testimony. The granting 
 or refusing of a motion to extend time for taking of tes- 
 timony is wholly within the discretion of the Examiner 
 of Interferences and no appeal lies from his decision 
 upon such motion, though in extreme cases where an 
 abuse of discretion is .shown, resulting in great hardship 
 to a party, the ruling may be reviewed on appeal. Good- 
 fellow V. Jolly, 115 0. G. 1064 ; 1905 C. D. 105 ; Chris- 
 tensen v. McKenzic, 117 0. G. 277; 1905 C. D. 238; 
 Dalton V. Hopkins, 321 0. G. 2666 (1906). 
 
 Delay in bringing the motion may result in its re- 
 fusal. Donning v. Anderson, 111 0. G. 582. And 
 where a party made no effort to take testimony as to 
 priority within the time set, but devoted his time to the 
 investigation of public use of the invention, it was held 
 
 141
 
 that au extension of time was properly refused. Per- 
 rault V. Pierce, 108 0. G. 2146. 
 
 The motion should clearly set forth the grounds upon 
 which the extension is asked and state why the testimony 
 could not be taken during the time originally allowed. 
 EeynoJds v. Bean, 101 0. G. 2821: 1902 C. D.461. The 
 motion should be brought before the time originally set 
 has expired. Turner v. Benzinger, 102 0. G. 1552 
 (1903): Byron v. Henry, 104 O. G. 1895 (1903). A 
 party may not voluntarily put himself in a position 
 where his testimony can not be taken and then ask to 
 be relieved of his own fault or negligence, as such action 
 wiU be regarded as a waiver of his right to take testi- 
 mony. Davis V. Cody, 101 0. G. 1369 ; 1902 C. D. 220. 
 
 Since the granting or refusing a motion to extend 
 time for taking testimony is a matter within the discre- 
 tion of the Examiner of Interferences, each motion pre- 
 sented must rest upon its own inherent merits. It would 
 seem that the rules of the courts in granting contin- 
 uances should be made applicable to motions of this 
 character, though it seems that the office has not thus 
 far applied such rules, as where an etxension is asked 
 because of the inability of a party to procure the testi- 
 mony of a certain witness, three elements should concur : 
 (1) Materiality and admissibility of the e^•idence; (2) 
 due diligence; (3) an affirmative showing that the ab- 
 .sent witness can and ^vill be produced at a future time. 
 
 To Suppress Testimony. (See Testimony — Suppres- 
 sion of.) 
 
 To Take Testimony in a Foreign Country. Rule 158. 
 
 To Amend Issue. Rule 109. (See Issue — Amend- 
 ment.) 
 
 To Add Further Counts. (See Issue.) 
 
 For Rehearing. See Hearing.) 
 
 244a. To Amend a Motion. "Where a party makes a 
 motion which if found to be not in proper form, he may 
 cure the defect by a motion to amend the motion, pro- 
 
 142
 
 vided it appears thai he is acting in good faith and that 
 the same was brought within the time for appeal from 
 the decision upon the former motion. Gold v. Gold, 131 
 0. G. 1422 (1907) ; Rochstroh v. Warnock, 132 0. G. 
 234; McQuarrie r. Manson. 142 0. G. 288 (1909). 
 
 For Judgment of the Record. Rule 119. (See Judg- 
 ment. ) 
 
 To Take Testimony as to Operativeness. (See Inopera- 
 tiveness.) Lowry cC Cowley v. Spoon, 122 0. G. 2687; 
 Barber v. Wood, 132 0. G. 1588. 
 
 APPEALS. 
 
 245. To the Examiners in Chief. Sec. 4909 E. S. 
 "Every party to an interference may appeal from the 
 decision of the Primary Examiner, or of the Examiner 
 in charge of interferences in such case, to the Board of 
 Examiners in Chief." Rules 143, 144, 145 and 146. 
 
 Sec. 4910 R. S. "If sucTi party is dissatisfied with the 
 decision of the Examiners in Chief, he may appeal to the 
 Commissioner in person." 
 
 Extent of Right to Appeal. The right to appeal to the 
 Examiners in Chief in interference cases created by stat- 
 ute was to review the question of priority and such an- 
 cillary questions as the Examiner had passed uJ)on in 
 deciding the question of priority for which the inter- 
 ference is instituted. Allen Comr. v. U. S. ex rel. Loivry, 
 et al., 116 0. G. 2253 (1905). 
 
 Ancillary questions which go to the question of prior- 
 ity and which have been passed upon by the various 
 tribunals of the Patent Office and Court of Appeals, D. 
 C, are set forth in this work under title of Relevant 
 Testimony, Sec. 192. 
 
 Judgment on the Record. Appeal lies to Examiners- 
 in-Chief. McHarg v. Sclunidt & Mayland, 106 0. G. 
 1780 (1903) ; Brow a v. Lindmark, 109 0. G. 1071. 
 
 246. To the Court of Appeals, D. C. In interference 
 cases the Court of Appeals has jurisdiction to review the 
 
 143
 
 decision of the Commissioner in but one class of deci- 
 sions, viz., final awards of priority. Decisions on mo- 
 tions are interlocutor}^ judgments on which no appeal 
 lies to the Court of Appeals. No award of priority may 
 be made on motion to dissolve and before proofs are 
 taken, not even in a case where the motion is based upon 
 the ground that a party has no right to make the claims. 
 If the motion is denied, the soundness of the ruling is a 
 question ancillary to the final judgment of priority, as 
 in Podelsak v. Mclnnerney, 26 App. D. C. 399. -If the 
 motion is sustained, it ends the interference and no 
 cause of action survives or exists upon which an order of 
 priorit}^ can be based. Since the statute imposes on the 
 Commissioner the power to declare in interference with- 
 out right of appeal, he may also dissolve it without right 
 of appeal. In Cosper v. Gold, 34 App. D. C. 194, the 
 Commissioner dissoh'ed the interference on the ground 
 that Cosper had no right to make the claims. On the 
 first appeal the Court of Appeals declined jurisdiction 
 because there had been no judgment of priority rendered. 
 Thereupon the Commissioner entered a judgment of 
 priority upon the ground that Cosper had no right to 
 make the claims, and the question of priority hinged 
 upon the question as to whether Cosper had a right to 
 make the claims. Where there has been no hearing upon 
 the question of priority no award of priority can be 
 made on motion to dissolve. Carlin v. Goldberg, 43 App. 
 D. C. 540, 23(i 0. G. 1222; 1917 C. D. 128. 
 
 Questions Which May Be Presented on Appeal on Pri- 
 ority as Ancillary Thereto. (See Sec. 192.) 
 
 247. Questions Not Considered. As we have already 
 seen, no question will be considered on appeal except 
 that of priority and such questions as are ancillary there- 
 to. The court has declined to consider : that a showing 
 made is not sufficient to establish that the delay in prose- 
 cution of the application was unavoidable. In re Car- 
 valho, 250 0. G. 514, 47 App. D. C. 584. Patentability 
 
 144
 
 of the issue. Hathaway & Lea v. Colman, 245 0. G. 
 1025, 46 App. D. C. 40 ; Lautenschlager v. Glass, 249 0. 
 G. 1223, 47 App. D. C. 443 ; Elsom v. Bonner & Golcle, 
 246 0. G. 299 (1917) ; Slingluff v. Sweet, et al., 230 0. 
 G. 659 ; 1916 C. D. 224, 45 App. D. C. 302 ; Sohcy v. 
 Holschlaw, 1907 C. D. 465, 126 0. G. 3041, 28 App. D. 
 
 C. 65 ; Mell v. Mkhjley, 1908 C. D. 512, 136 0. G. 1534, 
 31 App. D. C. 534. Whether a statiitorj^ bar existed to 
 the granting of a patent to the successful party. Burson 
 V. Vogel, 1907 C. D. 669, 131 0. G. 942, 29 App. D. C. 
 388 ; Lacroix v. Tyherg, 150 0. G. 267, 33 App. D. C. 586 ; 
 Norling v. Hayes, 1911 C. D. 347, 166 0. G. 1282, 37 App. 
 
 D. C. 169. Whether either party will have a right to a 
 patent. Guenifett v. Wictorsohn, 1908 C. D. 367, 134 0. 
 G. 779, 30 App. D. C. 432. The refusal of the Commis- 
 sioner to exercise his supervisory authority or of the Ex- 
 aminers in Chief to act under Rule 126. Elsom v. Bonner 
 & Golcle, 246 0. G. 299 (1917) . The court has frequently 
 refused to consider the identity of the inventions claimed 
 or the right of a party to make the claims, except in ex- 
 treme cases where it has been held that the right to make 
 the claims is a question ancillary to the question of 
 priority. Podelsak v. Mclnnerney, 120 0. G. 1689, 26 
 App. D. C. 405 ; U. S. ex rel. Newcomh Motor Co. v. 
 Moore, 133 0. G. 16S0 (1908), 30 App. D. C. 464; See- 
 herger v. Dodge, 24 App. D. C. 481; Bechman v. South- 
 gate, 127 0. G. 1254 (1906), 28 App. D. C. 405; Swihdrt 
 V. Mauldin, 99 0. G. 2332, 19 App. D. C. 570; Schup- 
 phaus V. Stevens, 95 0. G. 1452, 17 App. D. C. 548; Her- 
 man V. FuUman, 109 0. G. 1888, 23 App. D. C. 259; 
 Casper v. Gold, 151 0. G. 194, 34 App. D. C. 194. The 
 question of operativeness. Lotterhand v. Hanson, 110 
 0. G. 861, 23 App. D. C. 372; Duryea v. Rice, 126 0. G. 
 1357 (1906), 28 App. D. C. 423. An order dissolving an 
 interference. The V nion Distilling Co. v. Schneider, 129 
 0. G. 2503 (1907), 29 App. D. C. 1 ; Brooks v. Hillard, 
 111 0. G. 302, 23 App. D. C. 526. Granting or refusing 
 
 12 145
 
 a rehearing. Greenwood v. Dover, 109 0. G. 2172, 23 
 App. D. C. 251 ; Richards v. Meissner, 114 0. G. 1831. 
 Or any interlocutory motion except in extreme cases 
 where it is plain that there has been an abuse of discre- 
 tion exercised by the lower tribunals. Bitter v. Krakau 
 & Conner, 114 6. G. 1553, 24 App. D. C. 271 ; Parker v. 
 Craft & Reynolds, 265 0. G. 309, 258 Fed. 988; Dunhar 
 V. Schellenger, 128 0. G. 2837 (1907), 29 App. D. C. 
 129; Kinsman v. Strohm, 136 0. G. 1769 (1508), 31 
 App. D. C. 581 ; Universal Motor Truck Co. v. Universal 
 Motor Car Co., 197 0. G. 535, 41 App. D. C. 261. Ke- 
 fusal to extend the time within which a preliminary 
 statement may be filed, except where it clearly appears 
 that there was an abuse of discretion. Chnrchill v. 
 Goodivin, 141 0. G. 568, 32 App. D. C. 428. 
 
 The right to take expert testimony. Weintrauh v. 
 Hewitt, 154 0. G. 254, 34 App. D. "c. 487. Whether 
 there was sulScient reason for delay in presenting a mo- 
 tion to dissolve. Broadwell v. Long, 164 0. G. 252, 36 
 App. D. C. 418. 
 
 247a. Questions Presented for the First Time on Ap- 
 peal. Only questions presented below will be considered 
 on appeal. McFarland v. Watson, 146 0. G. 257, 33 
 App. D. C. 445 ; Lacroix v. Tylerg, 150 0. G. 267, 33 
 App. D. C. 586; Field v. Coleman, 193 0. G. 221, 40 
 App. D. C. 598 ; Lnckett v. Strauh, 250 0. G. 999 (1918). 
 
 248. Assignment of Errors — Scope of. On an appeal 
 to the Examiners in Chief from a decision of the Exam- 
 iner of Interferences, an assignment of error which as- 
 sails the decision of the Examiner of Interferences in 
 awarding priority on the whole case to the opposing 
 party is sufficient to preserve the appellant's right to 
 argue the question of res adjudicata by reason of a judg- 
 ment in a prior interference. Carroll v. Halwood, 135 
 O. G. 896 (1908), 31 App. J). C. 165. 
 
 Amendment of Assignment of Errors. No provision is 
 made in either the Court Rules or the Rules of the Pat- 
 
 146
 
 ent Office for Mraendment of assignment of errors, but 
 amendment may be permitted upon a proper showing, 
 where no injury eoukl be done the opposing party. 
 Horine v. Wende, 129 0. G. 2858 (1907), 29 App. D. C. 
 415. 
 
 249. Reversal on Question of Fact. Where the con- 
 current decisions of the Patent Office are the same on a 
 question of fact, it is necessary for the appellant to make 
 out a clear case of error to obtain a reversal. If it be 
 left in doubt whether the ruling below is correct, the de- 
 cision will be affirmed. Ries v. Jehsen, 132 0. G. 845 
 (1907), 30 App. D. C. 199; Hotvard v. Hey, 95 0. G. 
 1647, 18 App. D. C. 142 ; Swihart v. Mauldin, 99 0. G. 
 2332, 19 App. D. C. 570; Flora v. Poivrie, 109 0. G. 
 2443, 23 App. D. C. 195. The court is not bound to af- 
 firm a case because the decisions below have been uni- 
 form. 0' Council v.-Schm,tdt, 122 0. G. 2065 (1906), 27 
 App. D. C. 77 ; Woodlridge v. Winship, 145 0. G. 1250, 
 33 App. D. C. 490 ; Gold v. Gold, 150 0. G. 570, 34 App. 
 D. C. 229 ; Derr v. Gleason, 264 0. G. 864, 258 Fed. 969. 
 
 250. Reversal on Questions of Law. While the deci- 
 sions of the Patent Office on questions of fact will ordi- 
 narily be followed, such is not the rule where matters of 
 law are involved. Orcutt v. McDonald, Jr., 123 0. G. 
 1287 (1906), 27 App. D. C. 228 ; Bourn v. Hill, 123 0. G. 
 1284 (1906), 27 App. D. C. 291. 
 
 251. The Record on Appeal. The court will not con- 
 sider affidavits filed either in the court or in the Patent 
 Office, relating to changes that may have occurred, in 
 drawings, models, or exhibits and the like, after the 
 same have been introduced in evidence, and has pointed 
 out that to guard against such possibility parties should 
 describe exhibits at the time they are introduced in evi- 
 dence. If any corrections are to be made in the record 
 they should be made in the Patent Office before the rec- 
 ord is certified to the Court of Appeals. Blackford v. 
 Wilder, 104 0. G. 580 (1903), 21 App. D. C. 1; Green- 
 
 147
 
 wood V. Dover, 109 0. G. 2172, 23 App. D. C. 251. "Where 
 the decision of the Patent Office is based on testimony 
 not in the record on appeal, it must be assumed that the 
 decision below was correct. Goldberg v. Halle, 151 0. 6. 
 452, 34 App. D. C. 183. The record made by a party not 
 appealing will not be considered on appeal.. Bichards v. 
 Meissner, 114 0. G. 1831. 
 
 Where error in suppressing testimony is alleged, the 
 suppressed testimom- must be made a part of the record. 
 Jones V. Sfarr. 117 6. G. 1495. 26 App. D. C. 64. ' 
 
 252. Extending Time for Filing Record. The Com- 
 missioner may not extend time for giAing notice of ap- 
 peal, but he may extend the time for filing the transcript 
 of the record. In Clements v. Richards, 111 0. G. 1626, 
 it was held that the Commissioner has no authority to 
 extend the limit of appeal to the Court of Appeals, as 
 that is fixed by the rules of the court. 
 
 253. Appeals to the Commissioner. Appeals to the 
 Commissioner in Interferences are permissible under 
 Rules 124, 139 and 143. Regulations respecting the pres- 
 entation of .such appeals are provided in Rules 141. 145 
 and 146. In general a party may appeal from a judg- 
 ment against him on priority of invention. Certain ques- 
 tions have arisen in interferences and which have been 
 designated in various decisions as questions ancillary to 
 that of priority. The questions which have been con- 
 sidered by the Court of Appeals. D. C. as ancillary to 
 priority, are r-'ferred to elsewhere under Relevant Testi- 
 mony, Sec. 192. Such questions having been taken into 
 consideration by the court as properly relating to pri- 
 ority of invention, they may be presented to the various 
 tribunals of the Patent Office and appeal taken to the 
 Commissioner from adverse rulings thereon by the Ex- 
 aminers in Chief. But the jurisdiction of the Commis- 
 sioner being more extensive than that of the Court of 
 Appeals, D. C, he may take into con.sideration on ap- 
 l)eal matters which will not be considered by the court. 
 
 148
 
 J^'ur tlio sake of orderly procedure tlie CoDimissioiier, 
 with tlie ai)pr()val ot" Ihe Secretary of the Interior, lias 
 promulgated the Rules of Practice in which provision is 
 made for appeals on certain (juestions and the right of 
 appeal denied as to others. The rules are designed to be 
 in strict accordance with the Revised Statutes relating 
 to the grant of patents. Questions which are appealable 
 under the rules should be presented by appeal in con- 
 formity with such rules, but where a party desires to 
 present to the Commissioner a question on which the 
 rules do not provide for appeal, he must do so by peti- 
 tion. (See Petitions.) 
 
 254. Patentability of the Issue. On appeals on prior- 
 ity, the patentability^ of the issue will be considered only 
 under extraordinary circumstances which will warrant 
 the exercise of the ^ipervisory authority of the Commis- 
 sioner to' correct a manifest error. Lacroix v. Tyherg, 
 148 0. G. 831 fl908) ; Dixon (& Marsh v. Graves, 130 0. 
 G. 2374 (1907) ; Sorrell v. Donnelly, 129 0. G. 2501 
 (1907) ; Potter v. Mcintosh, 122 0. G. 1721 (1906) ; 
 SoUy V. Holschlaw, 119 0. G. 1922 (1905). 
 
 Where the Examiners in Chief recommend under Rule 
 126, that the issue is not patentable, the Commissioner 
 will not pass upon the patentability of the issue at this 
 stage of the proceedings, but may suspend the interfer- 
 ence and remand the question to the Primary Examiner, 
 from whose decision an appeal may be taken as in other 
 eases. Rule 126. Sorrell v. Donnelly, 129 0. G. 2501 
 (1907). Where the Examiner of Interferences or the 
 Examiners in Chief refuse to make any recommendation 
 under Rule 126, such refusal will not be reviewed on 
 appeal. Wert v. Borst, 122 0. G. 2062 (1906). 
 
 255. Petitions in Interferences. It is well settled that 
 a matter will not be considered on petition if the rules 
 provide adequate remedies b}^ appeal. An aggrieved 
 party must follow the regular course of procedure pro- 
 vided by the rules and should only invoke the supervi- 
 
 149
 
 sory authority of the Commissioner under circumstances 
 where he has no other remedy and in a clear case. Brown 
 V. Gammctcr, 132 0. G. 679 (1908) ; Cazi7i, 20 Gour. 
 86-15 (Dec, 1908) ; Niiman v. Ashley, 175 0. G. 1098 
 (1912). 
 
 256. Right of Appeal Denied — In What Cases. No ap- 
 peal lies where the rules specifically provide that a ques- 
 tion is not appealable. And it has been held that where 
 a motion to amend the issue is denied because the op- 
 posing party can not make the claim, no appeal lies to 
 the Commissioner. Stronach v. Shaw, 192 0." G. 989 
 (1913) ; Mortimer v. Thomas, 192 0. G. 215 (1913) ; or 
 from a decision which would not constitute a ground for 
 rejecting the claims in the application of the moving 
 party after the termination of the interference. 3Iorti- 
 mer v. Thomas, 192 0. G. 215 (1913^). Or where a mo- 
 tion to dissolve an interference is based on the ground 
 of irregularity in declaring the same because of the al- 
 leged inoperativeness of the opposing party's structure. 
 8eacoml)e v. Burks, 182 0. G. 973 (1912). Or the grant- 
 ing of a motion to add counts under Rule 109. Leonard 
 V. Pardee, 164 0. G. 249 (1911). Degen v. Pfadt, 133 
 0. G. 514 (1908). Or from a decision of the Primary 
 Examiner as to the sufficiency of a notice as to matters 
 not of record which are to be presented at the hearing 
 on motion to dissolve, except in cases of abuse of discre- 
 tion. Thieme v. Bowen, 21 Gour. 70-13 (Aug., 1909). 
 Or upon the admissibility of affidavits filed with a mo- 
 tion to dissolve, if no appeal lies from the decision on 
 the motion to dissolve. Brown v. Inwood, 131 0. G. 
 1423 (1907). Or from a decision of the Examiner of 
 Interferences extending time for taking testimony, nor 
 will the question be considered on y)ctition, except in a 
 clear case of abuse of discretion. WiT^kers v. Weiniuiirm, 
 ]29 0. G. 2501 (.1907). Or the granting of a motion to 
 lake testimony nbroad. Krith v. Lundquist, 128 0. G. 
 2835 (1907). Or from a decision denying a motion to 
 
 150
 
 take testimony as to the operativeiiess of an opponent's 
 device, pending a motion to dissolve the interference. 
 Barber v. Wood, 127 O. G. 1991 (1907). Or from a 
 decision of the Examiner of Interferences on a motion 
 to shift the burden of proof, though the question will be 
 considered on final hearing on priority. Dukesmith v. 
 Corrington, 125 0. G. 348 ; Hewitt v. Thomas, et al., 122 
 0. G. 1045 (1906) ; McGill v. Adams, 119 0. G. 1924 
 (1905); Loivrij v. Spoon, 14 Gour. 52-7 (July, 1902). 
 Or from a decision of the Examiner of Interferences re- 
 fusing to require a party to file a supplemental oath. 
 Dukesmith v. Corrington, 125 0. G. 348 (1906). Or the 
 refusal of the Examiner of Interferences to grant a re- 
 hearing, thougli the right to a rehearing may be con- 
 sidered on appeal on the entire record. Hewitt v. 
 Thomas, et al., 122 0. G. 1045 (1906) ; Dinibar v. Schel- 
 lenger, 121 0. G. 2663 (1906). Or from the granting or 
 denying of a motion to extend time for filing a prelim- 
 inary statement except where there is an abuse of dis- 
 cretion. Ohmer v. Neth, 118 0. G. 1686 (1905). Or 
 from a decision of the Examiners in Chief reversing a 
 decision of the Primary Examiner rejecting a count of 
 the issue and refusing to dissolve the interference as to 
 that count. Coleman v. Bullard v. StrnMe, 114 0. G. 
 973. Or from a favorable decision of the Examiner ren- 
 dered on a motion to dissolve as to the sufficiency of an 
 affidavit filed under Rule 75. McChesley v. Kruger, 101 
 0. G. 219 ; 1902 C. D. 349 ; Bijron v. Maxwell, 105 0. G. 
 499 (1903). Or from a refusal of the Examiner to re- 
 hear a motion to dissolve. Macy v. Laning, 101 0. G. 
 1608 ; 1902 C. D. 399. Or from a decision of the Exam- 
 iner denying a motion to amend under Rule 109, since 
 appeal in such case is to the Board. Hillard v. Eckert, 
 101 0. G. 1831; 1902 C. D. 413. 
 
 257. Right to Make the Claims and Patentability of 
 the Issue. No appeal lies to the Commissioner, inter 
 partes, from a favorable decision of the Law Examiner 
 
 151
 
 on the patentability of the issue or the right to make 
 the claims. The Commissioner will interfere in such 
 cases only to correct an error which is-elear and evident. 
 Medermciicr v. M^aliou, 98 0. G. 1707; 1902 C. D. 56; 
 MiskoJczij V. GlehsattcU 13 Gour. 19-6 (Apr., 1901) ; 
 Kcmpshall v. SeiherUufj, 104 O. G. 1395 (1903) ; Fallcr 
 V. Lorimer, 14 Gour. 50-2 and 3 (July, 1902) ; Whipple 
 V. Sharp, 14 Gour. 66-2 (Sept., 1902); Lammers v. 
 Weinwurm, 15 Gour. 66-2 (Sept., 1903). Notwithstand- 
 ing numerous decision to the same effect, parties have 
 persisted in many cases covering a period of years in 
 such attempted appeals to the Commissioner. If upon 
 motion to dissolve on the ground that a party has no 
 right to make the claims, it is held that he has a right to 
 make the claims, the party who is defeated on the mo- 
 tion need not appeal from such interlocutory judgment, 
 but he may present the same question for review before 
 the Examiner of Interferences, before the Examiners in 
 Chief, before the Commissioner, and the Court of Ap- 
 peals, D. C, as a question ancillary to that of priority. 
 If the motion is sustained and the interference dissolved, 
 there is then no question of priority to be determined be- 
 cause it has already been held that one of the parties has 
 no right to make the claims and this holding is equiva- 
 lent to saying that he never invented the issue and is 
 therefore not entitled to a patent. Under the present 
 Eule 124 he may appeal inter partes to the Examiners in 
 Chief and from the Board he may appeal to the Com- 
 missioner. If the Commissioner holds that he has no 
 right to make the claims, he can appeal no farther inter 
 partes, but he has a right to further prosecute his appli- 
 cation and if his claims are rejected and patent refused, 
 lie has a statutory right to appeal through the various 
 tribunals of the Patent Office to the Court of Appeals, 
 D. C. If he finally sustains his right to make the claims, 
 the question of priority will again become an issue. 
 Where a motion to dissolve on the ground tliat the 
 152
 
 issue is not ])al('ntal)l(' is denied, lut appeal lies because, 
 first, Rule 124 provides that no appeal lies from such de- 
 cision, and, second, because; whether the issue is patent- 
 al)le is a matter between tiie applicants and the office and 
 is not a matter of controversy between the parties. If 
 tiie interference is dissolved upon this ground, the party 
 who makes the motion confesses thereby that he is not 
 entitled to a patent, but the other party may appeal inter 
 partes to the Examiners in Chief, and from them to the 
 Commissioner. It may seem that there is no valid reason 
 for inter partes appeals in such cases, as provided in 
 Rule 324, but it may be deemed advisable that the mov- 
 ing party be heard for the assistance of the office, as was 
 held in Grimh r. Dodgson, 116 0, G. 1731 (1905) ; Lipe 
 V. Miller, 109 0. G. 1608; Eohhins v. Titus, 111 0. G. 
 584; Patterson v. Neher, 192 0. G. 215 (1913). What- 
 ever may be the reason for the provision, it is sufficient 
 that the rule now in force so provides. It should be re- 
 membered that interlocutory motions, such as motions to 
 dissolve, are creatures of the Rules of Practice of the 
 Patent Office, ami the rights of parties thereunder are 
 not statutory rights, and where on such motions, which 
 can be carried no farther than the Commissioner, the 
 issue is held not patentable, the party has still the right 
 to insist in the further ex parte prosecution of his ap- 
 plication that the claims are patentable, and if his appli- 
 cation is rejected for the reason that the claims are not 
 patentable he has a statutory right of appeal to the 
 various tribunals of the Patent Office and finally to the 
 Court of Appeals, D. C, and thus he has had two series 
 of appeals within the office on the patentability of the 
 issue and finally a decision of the Court of Appeals there- 
 on. As a practical matter it might be assumed that in 
 the ex parte appeals, the decisions in the interference 
 would be followed, but by this means he would finally 
 secure a decision of the Court of Appeals on this ques- 
 tion. 
 
 153
 
 FORMS 
 
 IN THE UNITED STATES PATENT OFFICE. 
 
 Kobert A. Jones, 
 Counterbalanced Crank Shaft, 
 Filed March 6, 1918, 
 Serial No. 120,256. 
 Commissioner of Patents, 
 Sm: 
 
 Affidavit of Priority. 
 State of Michigan, 
 
 •^] 
 
 ss . 
 County of Wayne, 
 
 Now comes Robert A. Jones, the above-named appli- 
 cant, and states that prior to January 5, 1917, the date 
 of the filing of the application which matured into U. S. 
 
 Patent No , issued February 5, 1918, to George 
 
 A. Allen, the said applicant disclosed to others the in- 
 vention described and claimed in his pending applica- 
 tion, and had made working drawings thereof; that 
 thereafter and long prior to the said filing date of Janu- 
 ary 5, 1917, the said applicant had a motor constructed 
 including a counterbalanced crank shaft which was made 
 in accordance with the drawings of the application herein 
 involved ; that in said counterbalanced crank shaft there 
 were counterweights fixed securely thereto, each in sub- 
 stantial opposition to the off-center parts of the crank 
 shaft which the counterweights were to counterbalance, 
 said counterweights and crank shaft being formed with 
 shoulders which engaged and opposed that movement of 
 the coimterweights relative to the crank shaft which 
 centrifugal force tends to produce; that in said crank 
 shaft a counterweight was fixedly secured between the 
 crank arms of said crank shaft by two arms which strad- 
 
 154
 
 died tlie inner end oL' tlie crank arm and were formed 
 with inwardly projecting lugs, the said crank arm hav- 
 ing outwardly projecting lugs whicli respectively en- 
 gaged the lugs on the two arms of the counterweight and 
 opposed that movement of the counterweight relative to 
 the crank shaft which centrifugal force tends to produce ; 
 that said shaft in addition to these inter engaging shoul- 
 ders of the counterweight and shaft also was welded to 
 the counterweight at the crank arm. 
 
 Deponent further states that said motor was put into 
 actual use after a test and has been sold and is now in 
 use commercially; that said test and actual use of the 
 motor took place prior to the filing date of the Allen 
 
 Patent, No , constituting a reference against 
 
 the applicant's claims. 
 
 Subscribed and sworn to before me, a Notary Public, 
 this daj^ of 
 
 Notary Public. 
 My Commission Expires. 
 
 IN THE UNITED STATES PATENT OFFICE. 
 
 John Fitch "^ 
 
 vs. > Interference No 
 
 Egbert Fulton. J 
 
 Motion to Amend the Issue. 
 Now comes Robert Fulton, by his attorney, and moves 
 
 to amend his application, serial No , involved 
 
 in the above entitled interference, by adding thereto the 
 following j)roposed claims : 
 (Here insert the claims it is desired to have entered.) 
 The foregoing claims are believed to be patentable, 
 properly to describe the means disclosed by all parties 
 and are deemed necessary to be counts of the interference 
 in order that the question of priority respecting all pat- 
 
 155
 
 entable means coninion to the parties may l)e adjudicated. 
 
 An amendment entitled in said ap])lieation and eoii- 
 taining: the said proposed claims is filed lierewith. 
 
 ( If the proposed claims are copied from the applica- 
 tion of another party, so state and identify them by their 
 ordinals in that application.) 
 
 (If the proposed amendment is for the purpose of pro- 
 curing another interference, as with a divisional appli- 
 cation of one of the opposing parties, adjust the phrase- 
 ology accordingly.) 
 
 Attorney for Robert Fulton. 
 
 IN THE UNITED STATES PATENT OFFICE. 
 
 John Fitch, ^ 
 
 vs. y Interference No 
 
 Robert Fulton. J 
 
 Motion to Substitute an Application. 
 
 Now comes John Fitch, by his attorney, and moves that 
 
 his application, Serial No be substituted for 
 
 application, Serial No. . , now included in the 
 
 above entitled interference. It is believed that the counts 
 of the issue properly describe the means disclosed in the 
 said application it is desired to substitute. 
 
 (If the moving party is an assignee and the applica- 
 tion desired to be substituted is one of an inventor other 
 than he whose application is already included, corre- 
 sponding changes in the phraseology should be made.) 
 
 Attorney for John Fitch. 
 
 IN THE UNITED STATES PATENT OFFICE. 
 John Doe "^ 
 
 vs. y Intci'ference No 
 
 Peter Smith. J 
 
 Ticforc the Examiner of Interferences. 
 156
 
 Motion to Extend Time for Filing Preliminary Statement. 
 Now comes Jolm Doe, one of the parties to the above 
 entitled interference, by his attorney, and moves that his 
 time for filing his preliminary statement herein be ex- 
 tended for a period of twenty days from Jan, 10, 1919. 
 The reasons for asking said extension are set forth in the 
 attached affidavit of John Doe, and are as follows : (Here 
 state the reasons.) (See Rule 104.) 
 
 Attorney for John Doe. 
 
 Note : One postponement of time for filing prelim- 
 inary .statements can ordinarily be secured b}' simple ex 
 parte request. 
 
 Further postponements must usually be had by motion 
 or stipulation. 
 
 A copy of the motion and notice of hearing .should be 
 served on opposing counsel, and proof of service filed. 
 
 (Title of case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 Motion to Amend Preliminary Statement. 
 
 And now comes the party, John Doe, by his attorney, 
 and moves that he be permitted to amend his prelim- 
 inary statement, now on file, in accordance with the pre- 
 liminary statement submitted herewith, and in support 
 
 of this motion files the attached affidavit of , 
 
 setting forth the reasons for asking said permission to 
 amend, which are as follows : (Set out the reasons.) 
 
 It is further moved that all other proceeding in this 
 interference be stayed pending the determination of this 
 motion. 
 
 Attorney for John Doe. 
 
 Note : As to the character of showing required in the 
 atfidavit to accompany this motion, see Sec. 47. 
 
 157
 
 A copy of the motion (including the affidavit) and 
 notice of hearing, should be served on the other parties. 
 
 Proof of service and notice of hearing should accom- 
 pany the motion. 
 
 IN THE UNITED STATES PATENT OFFICE. 
 John Fitch "^ 
 
 vs. > Interference No 
 
 Egbert Fulton, j 
 
 Motion to Dissolve Tinder Rule 122. 
 
 Now comes John Fitch, by his attorney, and moves to 
 dissolve the above-entitled interference for the reasons : 
 
 1. That there has been such informality in declaring 
 the interference as will preclude the proper determina- 
 tion of the question of priority of invention. 
 
 2. That the means defined in the several (or specified) 
 counts of the issue is not patentable. 
 
 3. That the party Fulton has no right to make the 
 claims corresponding to the several (or specified) counts 
 of the issue. 
 
 In support of the foregoing motion and with respect 
 to reason 1, it will be shown (Here state what the infor- 
 mality is that will be relied on, which must be a fact or 
 facts independent of those relied on to support reasons 
 2 and 3). 
 
 With respect to reason 2 it will be contended that all 
 of the counts (or certain specified counts) define means 
 that are (here state the facts that are deemed to establish 
 want of patentability; citing by name, date and num- 
 ber any patent deemed to be an anticipation or, if the 
 several counts or any of them are deemed to cover aggre- 
 gations, or mere substitutions or equivalents in old com- 
 binations, si)ocifying the aggregated or substituted parts, 
 and citing prior patent or publications to show that the 
 parts or equivalent elements were known in the prior 
 art. The facts relied on must be set forth with sufficient 
 
 158
 
 particularity to enable the opposing party to prepare a 
 defense and they must be different from facts relied on 
 to support grounds 1 and 3. See Sec. 66). 
 
 With respect to reason 3, it will be contended that 
 (Here set forth the facts relied on, as that the specifica- 
 tion and drawing of the opposing party does not disclose 
 a specified element of one or all of the counts, or that the 
 disclosure is incomplete, or the means are inoperative 
 and why ; or that the patent is barred by a specified for- 
 eign patent to the same party, filed more than twelve 
 months prior to the filing of the U. S. application. The 
 facts to support ground 3 must be different from those 
 given in support of grounds 1 and 2). 
 
 Attorney for John Fitch. 
 
 Proof of service must be filed with all motions under 
 Rules 109 and 122. 
 
 (Title of Case.) 
 Motion to Extend Time for Taking Testimony. 
 
 And now comes John Doe, by his attorney, and moves 
 that the time for taking his testimony in chief be extend- 
 ed thirty days, and that the remaining dates and final 
 hearing be correspondingly extended. 
 
 The reasons for requesting said extension are set forth 
 
 in the accompanying affidavit of , and are 
 
 as follows : (Here state the reasons.) 
 
 It is further moved that all other proceedings be 
 stayed pending the determination of this motion. (This 
 paragraph may be omitted if there are no other proceed- 
 ings to be stayed.) 
 
 Attorney for John Doe. 
 
 Note : Hearings can also be postponed and sometimes 
 advanced b}' similar motion. 
 
 159.
 
 Limit of appeal can be extended by similar motion if 
 made before limit expires. 
 
 A copy of the motion (including affidavit) and notice 
 of hearing- should be served on all other parties. 
 
 Proof of service and notice of hearing should accom- 
 pany the motion when filed. 
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Use Testimony Taken in Another Interference. 
 
 And now comes John Doe, by his attornej", and moves 
 that he be permitted to use as a part of the evidence in 
 the above-entitled interference the testimony taken in 
 
 interference No. , Brown v. Evans (or if not 
 
 all the testimony is to be used, specify the witnesses 
 whose testimony is desired), subject to the right of the 
 other parties herein to recall said witnesses, or to take 
 other testimony in rebuttal thereof. 
 
 The reason for using said testimony is set forth in the 
 
 accompanying affidavit of , and is as 
 
 follows: (Here state the reasons.) 
 
 It is further moved that all other proceedings be stayed 
 pending the determination of this motion. 
 
 Attorneri for John Doe. 
 
 Note : It should be stated in the affidavit how the tes- 
 timony sought to be used is relevant and material. 
 
 A copy of the motion and notice of hearing should be 
 served on all other parties. 
 
 Proof of service and notice of hearing should be filed 
 with the motion. 
 
 160
 
 (Title of Case.) 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Take Special Testimony. 
 And now eoincs John Doc, by his attorney, and moves 
 that he be permitted to take testimony to prove that the 
 device disclosed in the application of Peter Smith, is in- 
 operative, and is not such a disclosure as is re(iuired by 
 the statute. 
 
 The reason i'or asking permission to take said testi- 
 mony is set fortii in the accompanying' affidavit of 
 
 , and is as follows : (Here set out the reason.) 
 
 It is further moved that all other proceedings herein 
 be stayed pending the determination of this motion. 
 
 Attorney for John Doe. 
 
 Note : Inoperativeness goes to the right to make the 
 claims and a motion to dissolve on that ground should 
 first be made. As to character of showing required, see 
 Sec. 165. 
 
 A cop3^ of the motion and notice of hearing should be 
 served on all other parties. 
 
 Proof of service and notice of hearing should be filed 
 with the motion. 
 
 (Title of Case.) 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Shift the Burden of Proof. 
 And now comes John Doe, by his attorney, and moves 
 that the burden of proof in this interference be shifted 
 to the senior party, Smith. 
 
 The reason the burden of proof should be so shifted is 
 as follows : 
 
 (Here set forth the reasons relied upon.) 
 
 Attorney for John Doe. 
 13 161
 
 A copy of the motion and notice of hearing shouhl be 
 served on the opposing parties. 
 
 Proof of service and notice of hearing should accom- 
 pany the motion when filed. 
 
 IN THE UNITED STATES PATENT OFFICE. 
 
 Doe ^ 
 
 vs. > Interference No 
 
 Smith. J 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 Motion to Take Testimony Abroad. 
 
 Now comes the party Doe, by his attorney, and moves 
 that in accordance with Rule 158, a commission be issued 
 to the United States Consul at Manchester, England, to 
 take the depositions of John Brown, of Number 27 Wood- 
 ley Street, Manchester, England, and of , 
 
 in behalf of John Doe, under interrogatories and cross- 
 interrogatories to be filed by the attorneys for the parties 
 Doe and Smith, respectively. 
 
 The particular facts to which it is expected the said 
 
 Brown and will testify are : (Here set 
 
 out the facts.) The affidavit of John Doe is filed here- 
 with in support of this motion. 
 
 It is further moved that all other proceedings in this 
 case be stayed pending the determination of this motion. 
 
 Atiorney for Doe. 
 
 Motion papers and notice of hearing should be served 
 on other parties. 
 
 Proof of service and notice of hearing should accom- 
 pany motion papers. 
 
 Note : To have this motion granted proof must be sub- 
 mitted that th' amount of $100.00 has been deposited 
 with the State Department, through which department 
 tlx' ])ap<'rs arc forwarded. 
 
 ]fJ2
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 Motion for Judgment on the Record. 
 
 Comes now liobert A. Joues, the senior party to the 
 above-entitled interference, and shows to the Examiner 
 of Interferences that he is entitled to judgment on the 
 record herein for the following reasons : 
 
 1. That by the provisions of j^our order of November 
 10, 1918, the junior party, Peter Smith, was given until 
 February 15, 1919, within which to take his testimony in 
 chief herein; that said time has never been extended by 
 stipulation or otherwise and that said junior party has 
 failed and refused to take testimony herein prior to Feb. 
 15, 1919, or at all. 
 
 Wherefore the said senior party moves for judgment 
 on the record for the reasons hereinbefore stated. 
 
 Attorncu for Robert A. Jones. 
 State of Michigan, 
 
 AN, I 
 NE, J 
 
 ss 
 County of Wayni 
 
 James Bradford, being duly sworn, deposes and says 
 that he is attorney for Kobert A. Jones, the senior party 
 to the above-entitled interference, and that the facts set 
 forth in the foregoing motion are true, as he is informed 
 and believes. 
 
 Subscribed and sworn to before me, a Notary Public, 
 this day of 
 
 Notary PuMic. 
 
 My Commission Expires 
 
 Note : A copy of the motion and notice of hearing 
 should be served on the other party. 
 
 Proof of service and notice of hearing should be tiled 
 with the motion. 
 
 163
 
 For decisions on motions of this character, see Sees. 
 237 to 241. 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Notice of Hearing. 
 
 To Messrs. Bradford (0 Bradford, Attorneys for Peter 
 Smith, St. Paul, Bldg., Louisville, Ky.: 
 
 Please take notice that on Monday, November 3, 1919, 
 at 10 o'clock a. m., or as soon thereafter as counsel can 
 be heard, I shall present to the Honorable Examiner of 
 Interferences the accompanying motion to 
 
 Attorney for John Doe. 
 Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 Proof of Service. 
 State of Michiga 
 
 IAN, I 
 NE, j 
 
 SS , 
 
 County of Wayni 
 
 James Bradford, being duly sworn, deposes and says ; 
 that he is the attorney for John Doe in the above inter- 
 ference ; that on the 21st day of November, 1919, he sent 
 to Messrs. Thomas & Miller, 35 Williams- Street, New 
 York City, attorneys for Peter Smith, a true copy of the 
 annexed notice of taking testimony by depositing the said 
 copy in the registry mail department of the general post 
 office in the city of Detroit, State of Michigan, in a sealed 
 envelope, postage prepaid, and addressed to the said 
 Thomas & Miller, at the address aforesaid, registry re- 
 ceij^t for which is hereto attached. 
 
 Siil)sci'il)('(l and swoi'ii to before me, a Notary Public, 
 
 this day of 
 
 My Commission Expires on the day 
 
 164
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Stipulation. 
 
 It is hereby stipulated and agreed by the attorneys for 
 the respective parties to the above entitled interference, 
 the Examiner of Interferences consenting thereto, that 
 the several dates heretofore set for the taking of testi- 
 mony, and final hearing, may be extended for thirty 
 davs. 
 
 Aiioruf}) for Joint Doc. 
 New York, N. Y., Jan. 10, 1910. 
 
 Attorney for Peter Smith. 
 Boston, Mass., Jan. 12, 1910. 
 
 Note : Time for filing preliminary statements, final 
 hearing, interlocutory hearings and limit of appeal can 
 be postponed by similar stipulation. 
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Dispense With Printing. 
 
 And now comes John Doe, one of the parties to the 
 above-entitled interference, by his attorney, and moves 
 that the printing of his testimony in this interference be 
 dispensed with in accordance with Rule 162, for the fol- 
 lowing reasons: (Here set out the reasons) and he 
 files herewith his verified statement setting forth the rea- 
 sons for dispensing with such printing of the record. 
 
 (The affidavit in support of the motion should .set 
 forth the financial condition of the moving pavty with 
 such particularity as to show that he is umible to defray 
 the expense of printing the record.) 
 
 165
 
 It is fiirtlier luovod tliat ;ill otlier procoediiif>-s in tliis 
 interference be stayed i)endiii<i' tlie determination of this 
 motion. 
 
 Attorney for JoJm Doe. 
 
 Note : A copy of the motion and notice of liearing 
 should be served on all other parties. 
 
 Proof of service and notice of hearing- should be filed 
 with the motion. 
 
 Printing of the record may be dispensed with by 
 stipulation, if approved by the Commissioner. 
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Consolidate. 
 
 And now comes John Doe, one of the parties to the 
 above entitled interference, by his attorney, and moves 
 that this interference be consolidated with interference 
 
 No , vs , 
 
 and No , vs , 
 
 and that said interferences be tried and determined as 
 one interference, and that the times for taking testimony 
 and the date of final hearing be set accordingly. 
 
 The reasons for consolidating said interferences are as 
 follows : 
 
 (Here state clearly why the interferences should be 
 consolidated.) 
 
 It is further moved that all other proceedings in said 
 interfei'cnces be stayed ])ending the determiiuition of this 
 motion. 
 
 Atiorne\i for Joint Doe. 
 
 Note : A copy of the motion and notice of hearing 
 should be served on all other parties. 
 
 KiG
 
 Proof of service and notice of iicarino' should be filed 
 with the motion. 
 
 The otifiee aims to consolidate interferences when pos- 
 sible on its own motion. 
 
 Only interferences havinji' the same parties, in the same 
 order, and with closely related subject matter can be 
 consolidated. 
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Motion to Suppress Testimony, 
 
 And now comes John Doe, by his attorney, and moves 
 that certain parts of the testimom^ taken by Peter Smith 
 or in his behalf on the 10th day of Januarj^ 1910, at 
 , be suppressed and not considered in de- 
 termining this interference. The testimony sought to 
 be suppressed is as follows : 
 
 (Here set out or identify particularly the testimony 
 to be suppressed.) 
 
 The following reasons are assigned for suppressing 
 said testimony, to wit : 
 
 (Here set out the reasons for suppressing the testi- 
 mony. ) 
 
 It is further moved that all other proceedings in this 
 interference be stayed pending the determination of this 
 motion. 
 
 Attorney for John Doe. 
 
 Note : A copy of the motion and notice of hearing 
 should be served on all other parties. 
 
 Proof of service and notice of hearing should be filed 
 with the motion. 
 
 167
 
 (Title of Case.) 
 
 BEFORE THE EXAMINER OF INTERFERENCES. 
 
 Petition for Rehearing. 
 
 And now comes John Doe, one of the parties to the 
 above entitled interference, and prays that the Exam- 
 iner of Interferences reconsider his decision of the 
 
 day of in so far as said decision 
 
 related to (Set out the part of the decision to which ex- 
 ception is taken). 
 
 The grounds upon which a rehearing is asked are as 
 follows: (Set out the various points to be considered, 
 and if any point is based on matters not in the record, 
 an affidavit in support of such facts should accompany 
 the motion.) 
 
 (If the rehearing is on an interlocutory decision, add :) 
 
 It is further moved that all other proceedings herein 
 be stayed pending the determination of this motion. 
 
 Aiiorney for John Doe. 
 
 This is an ex parte matter. No notice other parties 
 is necessary. If granted the office will set a date for 
 hearing and notify the parties. 
 
 108
 
 RULES OF PRACTICE 
 
 IN THE 
 
 UNITED STATES PATENT OFFICE. 
 
 REVISED JANUARY 1, 19J6. 
 
 Since January 1, 1916, the Rules have been amended as 
 
 follows : 
 Rule 12, June 9, 1916. 
 Rule 93, June 5, 1917. 
 Rule 77, June 19, 1917. 
 Rule 17, July 31, 1918, part (h) added. 
 Court Rule XXI, paragraph 4. 
 
 CORRESPONDENCE AND INTERVIEWS. 
 
 1. All business with the office should be transacted in 
 writing. Unless by the consent of all parties, the action 
 of the office will be based exclusively on the written 
 record. No attention will be paid to any alleged oral 
 promise, stipulation, or understanding in relatioji to 
 which there is a disagreement or doubt. 
 
 2. All office letters must be sent in the name of the 
 ' ' Commissioner of Patents. ' ' All letters and other com- 
 munications intended for the office must be addressed to 
 him; if addressed to any of the other officers, they will 
 ordinaril}' be returned. 
 
 3. Express charges, freight, postage, and all other 
 charges on matter sent to the Patent Office must be pre- 
 paid in full ; otherwise it will not be received. 
 
 4. The personal attendance of applicants at the Patent 
 
 169
 
 Office is unnecessar3\ Their business can ])e transacted 
 by correspondence. 
 
 5. The assignee of the entire interest of an invention 
 is entitled to hold correspondence with the office to the 
 exclusion of the inventor. (See Rule 20.) 
 
 6. When there has been an assignment of an undivided 
 part of an invention, amendments and other actions re- 
 quiring the signature of the inventor must also receive 
 the written assent of the assignee ; but official letters will 
 only be sent to the post-office address of the inventor, un- 
 less he shall otherwise direct. 
 
 7. When an attorney shall have filed his power of 
 attorney, duly executed, the correspondence will be held 
 with him. 
 
 A double correspondence with the inventor and an as- 
 signee, or with a principal and his attorney, or with two 
 attorneys, can not generally be allowed. 
 
 8. A separate letter should in every case be written in 
 relation to each distinct subject of intpiir^- or applica- 
 tion. Assignments for record, final fees, and orders for 
 copies or abstracts must be seiit to the office in separate 
 letters. 
 
 Papers sent in violation of this rule will be returned. 
 
 9. When a letter concerns an application, it should 
 state the name of 1;he applicant, the title of the invention, 
 the serial number of the application (see Rule 31), and 
 the date of filing the same (see Rule 32). 
 
 10. When the letter concerns a patent, it should state 
 the nam(> of the patentee, the title of the invention, and 
 the number and date of the patent. 
 
 11. No attention will be paid to unverified ex parte 
 statements or protests of persons concerning pending ap- 
 plications to which they are not parties, unless informa- 
 tion of tjhe pendency of these applications shall have been 
 voluntary communicated by the applicants. 
 
 12. Mail reaching the post office at Washington, D. C, 
 up to 4.30 p. m., on week days, excepting holidays, and 
 
 170
 
 1 |). 111. on hall" liolidays, is entered as received in llie 
 Patent Office on the day it reaches the post office. 
 
 Special-delivery letters and other papers may be de- 
 posited in a box provided at the watchman's desk at the 
 F Street entrance of the Patent Office up to midniglit on 
 week-days, includin<j holidays, and all papers deposited 
 therein are entered as received in the Patent Office on the 
 day of deposit. 
 
 Letters received at the office v^^ill be answered, and 
 orders for printed copies filled, without unnecessary de- 
 lay. Telegrams, if not received before 3 o'clock p. m., 
 can not ordinarily be answered until the following day. 
 
 13. Interviews with examiners concerning applications 
 and other matters pending before the office must be had 
 in the examiners' rooms at such times, within office 
 hours, as the respective examiners may designate, in the 
 absence of the primary examiners, with the assistant in 
 charge. Interviews will not be permitted at any other 
 time or place without the written authority of the Com- 
 missioner. Interviews for the discussion of pending ap- 
 plications will not be had prior to the first official action 
 thereon. 
 
 INFORMATION TO COERESPONDENTS. 
 
 14. The office can not respond to inquiries as to the 
 novelty of an alleged invention in advance of the filing 
 of an application for a patent, nor to inquiries pro- 
 pounded with a view to ascertaining whether any al- 
 leged improvements have been patented, and, if so, to 
 whom ; nor can it act as an expounder of the patent law, 
 nor as counsellor for individuals, except as to questions 
 arising within the office. 
 
 Of the propriety of making an application for a pat- 
 ent, the inventor must judge for himself. The office is 
 open to him, and its records and models pertaining to all 
 patents granted may be inspected either by himself or by 
 an}^ attorney or expert he may call to his aid, and its re- 
 
 171
 
 ports are widely distributed. (See Rule 196.) Further 
 than this the office can render him no assistance until his 
 case comes regularly before it in the manner prescribed 
 by law. A copy of the rules, with this section marked, 
 sent to the individual making an inquiry of the character 
 referred to, is intended as a respectful answer by the of- 
 fice. 
 
 Examiners' digests are not open to public inspection. 
 
 15. Pending applications are preserved in secrecy. No 
 information will be given, without authority, respecting 
 the filing by any particular person of an application for 
 a patent or for the reissue of a patent, the pendency of 
 any particular case before the office, or the subject matter 
 of any particular application, unless it shall be necessary 
 to the proper conduct of business before the office, as 
 pro^ided by Rules 97, 103, and 108, except that author- 
 ized officers of the Army and Xavif icill he allowed dur- 
 ing the tear to inspect cases u-hich in the opinion of the 
 Commissioner disclose inventions that might he of value 
 in the prosecution of the tear, after having filed a duly 
 executed oath icith the Commissioner that no contents of 
 any application will he divulged except as it may hecome 
 necessary in the prosecution of the icar. 
 
 16. After a patent has issued, the model, specification, 
 drawings, and all documents relating to the case are sub- 
 ject to general inspection, and copies, except of the 
 model, will be furnished at the rates specified in Rule 
 191. 
 
 ATTORNEYS. 
 
 17. An applicant or an assignee of the entire interest 
 ma\- prosecute his own case, but he is advised, unless 
 familiar with such matters, to employ a competent patent 
 attorney, as the value of patents depends largely upon 
 the skillful preparation of the specification and claims. 
 The office can not aid in the selection of an attorney. 
 
 A register of attorneys will be kept in this office, on 
 which will be entered the names of all persons entitled to 
 
 172
 
 represent api)li('ants before the Patent Office in the pre- 
 sentation and i)rosecution of applications for patent. 
 The names of persons in tlie i'ollowing- classes will, npon 
 their written re(|nest, be entered npon this register : 
 
 (a) Any attorney at law who is in good standing in 
 any court of record in the United States or any of the 
 States or Territories thereof and who shall furnish a cer- 
 tificate of the clerk of such United States, State, or Ter- 
 ritorial court, duly authenticated under the seal of the 
 court, that he is an attorney in good standing. 
 
 {!)) An}' person not an attorney' at law who is a citizen 
 or resident of the United States and who shall file proof 
 to the satisfaction of the Commissioner that he is of good 
 moral character and of good repute and possessed of the 
 necessarj^ legal and tec,hnical qualifications to enable him 
 to render applicants for patents valuable service and is 
 otherwise competent to advise and assist them in the pre- 
 sentation and prosecution of their applications before the 
 Patent Office. 
 
 {c) Any foreign patent attorney not a resident of the 
 United States, who shall file proof to the satisfaction of 
 the Commissioner that he is registered and in good stand- 
 ing before the patent office of the country of which he is 
 a citizen or subject, and is possessed of the qualifications 
 stated in paragraph (&). 
 
 (rf) Any firm will be registered which shall show that 
 the individual members composing the firm are each and 
 all registered under the provisions of the preceding sec- 
 tions. 
 
 (> ) The Commissioner may require proof of qualifica- 
 tions other than those specified in paragraph (a) and 
 reserves the right to decline to recognize any attorney, 
 agent, or other person applying for registration under 
 this rule. 
 
 (/) Any person or firm not registered and not entitled 
 to be recognized under this rule as an attorney or agent 
 to represent applicants generally may, upon a showing 
 
 173
 
 of cireumstaiicps wliicli render it necessary- or justifiable, 
 be recognized by the Commissioner to prosecute as attor- 
 ney or agent certain specified application or applica- 
 tions, but this limited recognition shall not extend fur- 
 ther than the application or applications named. 
 
 (g) No person not registered or entitled to recognition 
 as above provided will be permitted to prosecute appli- 
 cations before the Patent Office. 
 
 (h) Every attorney registered to practice before the 
 United States Patent Office shall submit to the Commis- 
 sioner of Patents for approval copies of all proposed ad- 
 vertising matter, circulars, letters, cards, etc., intended 
 to solicit patent business, and if it be not disapproved 
 by him and the attornej' so notified within 10 days after 
 submission, it may be considered approved. 
 
 Any registered attorney sending out or using any such 
 matter, a copy of which has not been submitted to the 
 Commissioner of Patents in accordance with this rule, 
 or which has been disapproved by the Commissioner of 
 Patents, shall be subject to suspension or disbarment, so 
 that the rule as amended will read as follows : 
 
 18. Before any attorney, original or associate, will be 
 allowed to inspect papers or take action of any kind, his 
 power of attornej^ must be filed. But general powers 
 given b}- a principal to an associate can not be considered. 
 In each application t)ie written authorization must be 
 filed. A power of attorney purporting to have been given 
 to a firm or copartnership will not be recognized, either 
 in favor of the firm or of any of its members, unless all 
 its members be named in such power of attorney. 
 
 19. Substitution or association can be made by an at- 
 torney upon the written autliorization of his principal; 
 l)ut such authorization will not enipowoi- the second agent 
 to appoint a third. 
 
 20. PowM'rs of attorney may be revoked at any stage in 
 the proceedings of a case upon ap])lication to and aj)- 
 ])i'oval b\' the Commissioner; and when so revoked the 
 
 174
 
 office will c*oiiiinuiii(!ate diret'tly with the applicant, or 
 another attorney a])p()inte(I by liiiu. An attorney will be 
 promptly notified by the docket clerk of the revocation 
 of his power of attorney. An assignment will not oper- 
 ate as a revocation of the power previously given, bnt the 
 assignee of the entire interest may be represented by an 
 attorney of his own selection. 
 
 21. Parties or their attorneys will be permitted to ex- 
 amine their eases in the attorneys' room, but not in the 
 rooms of the examiners. Personal interviews with ex- 
 aminers will be permitted only as hereinbefore provided. 
 (See Rule 13.) 
 
 22. (a) Applicants and attorneys will be required to 
 conduct their business with the office with decorum and 
 courtesy. Papers presented in violation of this require- 
 ment will be submitted to the Commissioner, and re- 
 turned by his direct order. 
 
 (h) Complaints against examiners and other officers 
 must be made in communications separate from other 
 papers, and will be promptly investigated. 
 
 (c) For gross misconduct the Commissioner may re- 
 fuse to recognize any person as a patent agent, either 
 generally or in any particular case ; but the reasons for 
 the refusal will be duly recorded and be subject to the 
 approval of the Secretary of the Interior. 
 
 (d) The Secretary of the Interior may, after notice 
 and opportunity for a hearing, suspend or exclude from 
 further practice before the Patent Office any person, 
 firm, corporation, or association shown to be incompetent, 
 disreputable, or refusing to comply with the rules and 
 regulations thereof, or with intent to defraud, in any 
 manner deceiving, misleading, or threatening any claim- 
 ant or prospective claimant, by word, circular, letter, or 
 by advertisement, or guaranteeing the successful prose- 
 cution of any application for patent or the procurement 
 of any patent, or by word, circular, letter, or advertise- 
 
 175
 
 ment making any false promise or misleading representa- 
 tion (Sec. 5, act approved July 4, 1884.) 
 
 23. Inasmuch as applications can not be examined out 
 of their regular order, except in accordance with the 
 provisions of Rule 63, and Members of Congress can 
 neither examine nor act in patent cases without written 
 powers of attorney, applicants are advised not to impose 
 upon Senators or Eepresentatives labor which will con- 
 sume their time without any advantageous results. 
 
 APPLICANTS. 
 
 24. A patent may be obtained by any person who has 
 invented or discovered any new and useful art, machine, 
 manufacture, or composition of matter, or any new and 
 useful improvement thereof, not known or used by others 
 in this country before his invention or discovery thereof, 
 and not patented or described in am- printed publication 
 in this or any foreign country before his invention or 
 discovery thereof, or more than two years prior to his ap- 
 plication, and not patented in a country foreign to the 
 United States on an application filed by him or his legal 
 representatiA'es or assigns more than twelve months be- 
 fore his application, and not in public use or on sale in 
 the United States for more than two years prior to his 
 application, unless the same is proved to have been aban- 
 doned, upon payment of the fees required by law and 
 other due proceedings had. (For designs, see Rule 79.) 
 
 25. In case of the death of the inventor, the applica- 
 tion will be made by and the patent will issue to his ex- 
 ecutor or administrator. In that case the oath required 
 by Rule 46 will ])e made by tlie executor or administrator. 
 In case of the death of the inventor during the time in- 
 tervening between the filing of his application and the 
 granting of a patent thereon, the letters patent will issue 
 to the executor or administrator upon proper interven- 
 tion by him. The executor or administrator duly author- 
 ized under the law of any foreign country to admin- 
 
 176
 
 ister upon the estate of the deceased inventor shall, in 
 case the said inventor was not domiciled in the United 
 States at the time of his death, have the right to apply 
 for and obtain the patent. The authority of such for- 
 eign executor or administrator shall be proved by cer- 
 tificate of a diplomatic or consular officer of the United 
 States. 
 
 In case an inventor become insane, the application may 
 be made by and the patent issued to his legally appointed 
 guardian, conservator, or representative, who will make 
 the oath required by Rule 46. 
 
 26. In case of an assignment of the whole interest in 
 the invention, or of the whole interest in the patent to 
 be granted, the patent will, upon request of the applicant 
 embodied in the assignment, issue to the assignee ; and if 
 the assignee hold an undivided part interest, the patent 
 will, upon like request, issue jointly to the inventor and 
 the assignee ; but the assignment in either case must first 
 have been entered of record, and at a day not later than 
 the date of the payment of the final fee (see Rule 188) ; 
 and if it be dated subsequently to the execution of the 
 application, it must give the date of execution of the ap- 
 plication, or the date of filing, or the serial number, so 
 that there can be no mistake as to the particular inven- 
 tion intended. The application and oath must be signed 
 by the actual inventor, if alive, even if tjie patent is to 
 issue to an assignee (see Rules 30, 40) ; if the inventor be 
 dead, the application may be made by the executor or ad- 
 ministrator. 
 
 27. If it appear that the inventor, at the time of mak- 
 ing his application, believed himself to be the first in- 
 ventor or discoverer, a patent will not be refused on ac- 
 count of the invention or discovery, or anj' part thereof, 
 having been known or used in any foreign countr}^ before 
 his invention or discovery thereof, if it had not been be- 
 fore patented or described in any printed publication. 
 
 28. Joint inventors are entitled to a joint patent ; 
 
 14 177
 
 neither of them can obtain a patent for an invention 
 jointly invented by them. Independent inventors of 
 distinct and independent improvements in the same ma- 
 chine can not obtain a joint patent for their separate in- 
 ventions. The fact that one person furnishes the capital 
 and another makes the invention does not entitle them 
 to make an application as joint inventors ; but in such 
 case they may become joint patentees, upon the condi- 
 tions prescribed in Rule 26. 
 
 29. No person otherwise entitled thereto shall be de- 
 barred from receiving a patent for his invention or dis- 
 covery by reason of its having been tirst patented or 
 caused to be patented by the inventor or his legal repre- 
 sentatives or assigns in a foreign country, unless the ap- 
 plication for said foreign patent was filed more than 
 twelve months prior to the filing of the application in this 
 country, in, which case no patent shall be granted in this 
 country. 
 
 An application for patent filed in this country by any 
 person who has previously regularly filed an application 
 for a patent for the same invention or discovery in a for- 
 eign country- which, by treaty, convention, or law, affords 
 similar privileges to citizens of the United States shall 
 have the same force and effect as the same application 
 would have if filed in this country on the date on which 
 the application for patent for the same invention or dis- 
 covery was first filed in such foreign country, provided 
 the application in this country is filed within twelve 
 months from the earliest date on which any such foreign 
 application was filed ; but no patent shall be granted 
 upon such application if the invention or discovery has 
 been patented or described in a printed publication in 
 this or any foreign country, or has been in public use or 
 on sale in this country, for more tliau two years prior to 
 the (late of filing: in this countrv. 
 
 178
 
 THE APPLICATION. 
 
 30. Api)lieatioiis for letters patent of the United States 
 must be nuule to the Commissioner of Patents, and must 
 be sip'ned by the inventor, or by one of the persons indi- 
 cated in Rule 2.'). (See Rules 26, 33, 40, 46.) A com- 
 plete application comprises the first fee of $15, a petition, 
 specification, and oath; and drawings, when required. 
 (See Rule 49.) The petition, specification, and oath 
 must be in the English language. All papers which are 
 to become a part of the permanent records of the otfice 
 must be legibly written or printed in permanent ink. 
 
 31. An application for a patent will not be placed 
 upon the files for examination until all its parts as re- 
 quired by Rule 30 shall have been receiA^ed. 
 
 Every application signed or sworn to in blank, or with- 
 out actual inspection by the applicant of the petition and 
 specification, and every application altered or partly 
 filled up after being signed or sworn to, will be stricken 
 from the files. 
 
 Completed applications are numbered in regular order, 
 the present series having been commenced on the 1st of 
 January, 1915. 
 
 The applicant will be informed of the serial number of 
 his application. 
 
 The application must be completed and prepared for 
 examination within one year, as indicated above, and in 
 default thereof, or upon failure of the applicant to prose- 
 cute the same within one year after any action thereon 
 (Rule 77), of which notice shall have been duly mailed 
 to him or his agent, the application will be regarded as 
 abandoned, unless it shall be shown to the satisfaction of 
 the Commissioner that such delay was unavoidable. (See 
 Rules 171 and 172.) 
 
 32. It is desirable tjiat all parts of the complete ap- 
 plication be deposited in the otfice at the same time, and 
 that all the papers embraced in the application be at- 
 tached together ; otherwise a letter must accompany each 
 
 179
 
 part, accurately and clearly connecting it with the other 
 parts of the application. (See Rule 10.) 
 
 THE PETITION. 
 
 33. The petition must be addressed to the Commis- 
 sioner of Patents, and must state the name, residence, 
 and post-office address of the petitioner requesting the 
 grant of a patent, designate by title the invention sought 
 to be patented, contain a reference to the specification 
 for a full disclosure of such invention, and must be 
 signed by the inventor or one of the persons indicated 
 in Rule 25. 
 
 THE SPECIFICATION. 
 
 34. The specification is a written description of the in- 
 vention or discovery and of the manner and process of 
 making, constructing, compounding, and using the same, 
 and is required to be in such full, clear, concise, and exact 
 terms as to enable any person skilled in the art or science 
 to which the invention or discover}^ appertains, or with 
 which it is most nearly connected, to make, construct, 
 compound, and use the same. 
 
 35. The specification must set forth the precise inven- 
 tion for which a patent is solicited, and explain the prin- 
 ciple thereof, and the best mode in which the applicant 
 has contemplated applying that principle, in such man- 
 ner as to distinguish it from other inventions. 
 
 36. In case of a mere improvement, the specification 
 must particularly point out the parts to which the im- 
 provement relates, and must by explicit language dis- 
 tinguisli ])etween what is old and what is claimed as new; 
 and the description and the drawings, as well as the 
 chiims, should be confined to the specific improvement 
 and such parts as necessarily cooperate with it. 
 
 37. The specification must conclude with a specific and 
 {jistiiicf chiiiii or claims of the part, improvement, or 
 comhiuatioii which t^he applicant regards as his invention 
 or discovery. 
 
 180
 
 .'j8. WIicii llici'c jirc (li-a\viii<is llie description shall 
 refer to the diOVrciil xicws by figures and lo the different 
 parts by letters or nnnierals ( })ret'erably jlie latter). 
 
 39. The followin<i' oi-dcr of arrangement should be 
 observed in framin<>' the specification: 
 
 (a) Preamble stating the name and residence of the 
 applicant and the title of the invention. 
 
 (h) General statement of the object and nature of the 
 invention. 
 
 (c) Brief description of the several views of the 
 drawings (if the invention admit of such illustration). 
 
 (d) Detailed description. 
 
 (e) Claim or claims. 
 
 (/) Signature of applicant. 
 
 40. The specification must be signed by the inventor 
 or one of the persons indicated in Rule 25. Full names 
 must be given, and all names must be legibly written. 
 
 41. Two or more independent inventions can not be 
 claimed in one application ; but where several distinct 
 inventions are dependent upon each otlier and mutually 
 contribute to produce a single result they may be claimed 
 in one application. 
 
 42. If several inventions, claimed in a single applica- 
 tion, be of such a nature that a single patent ma.y not be 
 issued to cover them, the inventor will be required to 
 limit the description, drawing, and claim of the pending 
 application to whichever invention he may elect. The 
 other inventions may be made the subjects of separate 
 applications, which must conform to the rules applicable 
 to original applications. If the independence of the in- 
 ventions be clear, such limitation will be made before any 
 action upon the merits ; otherwise it may be made at any 
 time before final action thereon, in the discretion of the 
 examiner. A requirement of division will not be re- 
 peated without the written approval of a law examiner. 
 After a final requirement of division, the applicant may 
 elect to prosecute one group of claims, retaining the re- 
 
 181
 
 maining claims iu the case with the privilege of appeal- 
 ing from the requiremeut of division after final action by 
 the examiner on the group of claims prosecuted. 
 
 43. When an applicant files two or more applications 
 relating to the same subject matter of invention, all show- 
 ing but only one claiming the same thing, the applica- 
 tions not claiming it must contain references to the ap- 
 plication claiming it. 
 
 44. A reservation for a future application of subject 
 matter disclosed but not claimed in a pending applica- 
 tion will not be permitted in the pending application. 
 
 45. The specification and claims must be plainly writ- 
 ten or printed on but one .side of the paper. All inter- 
 lineations and erasures must be clearly referred to in 
 marginal or foot notes on the same sheet of paper. Legal- 
 cap paper with the lines numbered is deemed preferable, 
 and a wide margin must always be reserved upon the 
 left-hand side of the page. 
 
 THE OATH. 
 
 46. The applicant, if the inventor, must make oath or 
 affirmation that he does verily believe himself to be the 
 original and first inventor or discoverer of the art, ma- 
 chine, manufacture, composition, or improvement for 
 which he solicits a patent ; that he does not know and 
 does not believe that the same was ever known or used 
 before his invention or discovery thereof, and shall state 
 of what country he is a citizen and where he resides, and 
 whether he is a sole or joint inventor of the invention 
 claimed in his application. In every original application 
 the applicant must distinctly state under oath that to the 
 best of his knowledge and belief the invention has not 
 been in public use or on .sale in the United States for 
 more than two years prior to his application, or patented 
 or described in any printed publication in any country 
 before his invention or more than two years prior to his 
 application, or patented in any foreign country on an 
 
 182
 
 ap])li('ati()ii filed by himself or his legal representatives 
 or assigns more than twelve months prior to his appli- 
 cation in this country. If any application for patent has 
 been filed in any foreign country by the applicant in this 
 country, or by his legal representatives or assigns, prior 
 to his application in this country, he shall state the coun- 
 try or countries in which such application has been filed, 
 giving the date of such application, and shall also state 
 that no application has been filed in any other country 
 or countries than those mentioned, and if no application 
 for patent has been filed in any foreign country, he shall 
 so state. This oath must be subscribed to by the affiant. 
 
 If the application be made by an executor or adminis- 
 trator of a deceased person or the guardian, conservator, 
 or representative of an insane person, the oath shall 
 allege the relationship of the affiant to the inventor and, 
 upon information and belief, the facts which the inventor 
 is required by this rule to make oath to. 
 
 The Conniiissioner may require an additional oath in 
 cases where the applications have not been filed in the 
 Patent Office within a reasonable time after the execution 
 of the original oath. 
 
 47. The oath or affirmation may be made before any 
 person within the Uuited States authorized by law to 
 administer oaths, or, when the applicant resides in a for- 
 eign country, before any minister, charge d 'af5l'aires, con- 
 sul, or connuercial agent holding commission under the 
 Government of the United States, or before any notary 
 public, judge, or magistrate having an official seal and 
 authorized to administer oaths in the foreign country in 
 which the applicant may be, whose authority shall be 
 proved by a certificate of a diplomatic or consular officer 
 of the T'^nited States, the oath being attested in all cases 
 in this and other countries, by the proper official seal of 
 the officer before whom the oath or affirmation is made, 
 except that no oath or affirmation may be administered 
 by any attorney appearing in the case. "When the person 
 
 183
 
 before whom the oath or affirmation is made in this coun- 
 try is not provided with a seal, his official character shall 
 be established by competent evidence, as by a certificate 
 from a clerk of a court of record or other proper officer 
 having- a seal. 
 
 When the oath is taken before an officer in a country 
 foreign to the United States, all the application papers 
 must be attached together and a ribbon passed one or 
 more times through all the sheets of the application, and 
 the ends of said ribbon brought together under the seal 
 before the latter is affixed and impressed, or each sheet 
 must be impressed with the official seal of the officer be- 
 fore whom the oath was taken. 
 
 48. When an applicant presents a claim for matter 
 originally shown or described but not substantially em- 
 braced in the statement of invention or claim originally 
 presented, he shall file a supplemental oath to the effect' 
 that the subject matter of the proposed amendment was 
 part of his invention, was invented before he filed his 
 original application, was not known or used before his 
 invention, was not patented or described in a printed 
 publication in any country more than two years before 
 his application, was not patented in any foreign country 
 on an application filed by himself or his legal representa- 
 tives or assigns more than twelve months prior to his 
 application, was not in public use or on sale in this coun- 
 try for more than two years before the date of his appli- 
 cation, and lias not been abandoned. Such supplemental 
 oath must be attached to and pro])erly identify the pro- 
 posed amendment. 
 
 Ill proper cases the oath here required may be made 
 by ;iii executor or administrator of a deceased person or 
 a guardian, conservator, or representative of an insane 
 person. (See Rule 46.) 
 
 184
 
 THE DRAWINGS. 
 
 4!). The applicjiiif for <i pjitoiit is r('({uired by law to 
 furnish a drawiiij^ of his iiiNciition whenever the nature 
 of the case admits of it. 
 
 50. The drawing may he sioiied by tlie inventor or one 
 of the persons indicated in Rule 25, or the name of the 
 applicant may be signed on the drawing by his attorney 
 in fact. The drawing must show every feature of the 
 invention covered by the claims, and the figures should 
 be consecutively numbered, if possible. When the inven- 
 tion consists of an improvement of an old machine the 
 drawing must exhibit, in one or more views, the inven- 
 tion itself, disconnected from the old structure, and also 
 in another view, so much only of the old structure as will 
 sutfico to show the connection of the invention therewith. 
 
 51. Two editions of patent drawings are printed and 
 published — one for office use, certified copies, etc., of 
 the size and character of those attached to patents, the 
 work being about 6 by 9I/2 inches; and one reduction of 
 a selected portion of each drawing for the Official Ga- 
 zette. 
 
 52. This work is done by the photolithographic proc- 
 ess, and therefore the character of each original drawing 
 must be brought as nearly as possible to a uniform stand- 
 ard of excellence, suited to the requirements of the proc- 
 ess, to give the best results, in the interests of inventors, 
 of the office, and of the public. The following rules will 
 therefore be rigidly enforced, and any departure from 
 them will be certain to cause delay in the examination of 
 an application for letters patent : 
 
 (a) Drawings must be made upon pure white paper 
 of a thickness corresponding to two-sheet or three-sheet 
 Bristol board. The surface of the paper must be calen- 
 dered and smooth. India ink alone must be used, to 
 secure perfectly black and solid lines. 
 
 (b) The size of a sheet on which a drawing is made 
 must be exactly 10 by 15 inches. One inch from its edges 
 
 185
 
 a single marginal line is to be drawn, leaving the "sight" 
 precisely 8 by 13 inches. "Within this margin all work 
 and signatures must be included. One of the shorter 
 sides of the sheet is regarded as its top, and measuring 
 downwardly from the marginal line, a space of not less 
 than 11/4 inches is to be left blank for tbe heading of 
 title, name, number, and date. 
 
 (c) All drawings must be made with the pen only. 
 Every line and letter (signatures included; must be ab- 
 solutely black. This direction applies to all lines, how- 
 ever fine, to shading, and to lines representing cut sur- 
 faces in sectional views. All lines must be clean, sharp, 
 and solid, and they must not be too fine or crowded. Sur- 
 face shading, when used, should be open. Sectional 
 shading should be made by oblique parallel lines, which 
 may be about one-twentieth of an inch apart. Solid 
 black should not be used for sectional or surface shading. 
 Free-hand work should be avoided wherever it is possible 
 to do so. 
 
 (d) Drawings should be made with the fewest lines 
 possible consistent with clearness. By the observance of 
 this rule the effectiveness of the work after reduction will 
 be much increased. Shading (except on sectional views) 
 should be used only on convex and concave surfaces, 
 where it should be used sparingly, and may even there 
 be dispensed with if the drawing be otherwise well exe- 
 cuted. The plane upon which a sectional ^-iew is taken 
 should be indicated on the general view by a broken or 
 dotted line, which should be designated by numerals cor- 
 responding to the number of the sectional view. Heavy 
 lines on the shade sides of objects should be used, except 
 where they tend to thicken the work and obscure letters 
 of reference. The light is always supposed to come from 
 the upper left-hand corner at an angle of 4o degrees. 
 
 (e) The scale to whicli a drawing is made ought to be 
 large enough to sliow the mechanism without crowding, 
 and two or more sheets should be used if one does not 
 
 186
 
 give sufficient rooni to accomplish tiiis end ; but the num- 
 ber of sheets nuist lu'ver be more tlian is absolutely neces- 
 sary. 
 
 (/) The different views shoidd be consecutively num- 
 bered. Letters and figures of reference must be carefully 
 formed. They should, if possible, measure at least one- 
 eighth of an inch in height, so that they may bear reduc- 
 tion to one twenty-fourth of an inch; and they may be 
 much larger when there is sufficient room. They must be 
 so placed in the close and complex parts of drawings as 
 not to interfere with a thorough comprehension of the 
 same, and therefore, should rarely cross or mingle with 
 the lines. When necessarily grouped around a certain 
 part they should be placed at a little distance, where 
 there is available space, and connected by lines with the 
 parts to which they refer. They should not be placed 
 upon shaded surfaces, but when it is difficult to avoid 
 this, a blank space must be left in the shading where the 
 letter occurs, so that it shall appear perfectly distinct 
 and separate from the work. If the same part of an in- 
 vention appear in more than one view of the drawing it 
 must always be represented by the same character, and 
 the same character must never be used to designate dif- 
 ferent parts. 
 
 (g) The signature of the applicant should be placed at 
 the lower right-hand corner of each sheet, and the signa- 
 tures of the witnesses, if any, at the lower left-hand 
 corner, all within the marginal line, but in no instance 
 should they trespass upon the drawings. (See specimen 
 drawing, appendix.) The title should be written with 
 pencil on the back of the sheet. The permanent names 
 and title constituting the heading will be applied subse- 
 quently by the office in uniform style. 
 
 (h) All view^s on the same sheet must stand in the 
 same direction and must if possible stand so that they 
 can be read with the sheet held in an upright position. 
 If views longer than the width of the sheet are necessary 
 
 187
 
 for the proper illustration of the invention the sheet 
 may be turned on its side. The space for lieading must 
 then he reserved at the right and the signatures placed at 
 the left, occupying the same space and position as in the 
 upright views and being horizontal when the sheet is 
 held in an upright position. One figure must not be 
 placed upon another or within the outline of another. 
 
 (?') As a rule, one view only of each invention can be 
 show^n in the Gazette illustrations. The selection of that 
 portion of a drawing best calculated to explain the na- 
 ture of the specific improvement would be facilitated 
 and the final result improved by the judicious execution 
 of a figure with express reference to the Gazette, but 
 which must at the same time serve as one of the figures 
 referred to in the specification. For this purpose the 
 figure ma}' be a plan, elevation, section, or perspective 
 view, according to the judgment of the draftsman. All 
 its parts should be especially open and distinct, with very 
 little or no shading, and it must illustrate the invention 
 claimed only, to the exclusion of all other details. (See 
 specimen drawing.) When well executed, it will be used 
 without curtailment or change, but any excessive fine- 
 ness, or crowding, or unnecessary elaborateness of detail 
 will necessitate its exclusion from the Gazette. 
 
 (j) Drawings transmitted to the office should be sent 
 fiat, protected by a sheet of heavy binder's board; or 
 should be rolled for transmission in a suitable mailing 
 tube, but should never be folded. 
 
 (k) An agent's or attorney's stamp, or advertisement, 
 or written address will not be permitted upon the face 
 of a drawing, within or without the marginal line. 
 
 r)3. All reissue applications must be accompanied by 
 new drawings, of the character required in original ap- 
 plications, and the inventor's name nnist appear upon 
 the same in all cases; and such drawings shall be made 
 upon the same scale as the original drawing, or upon a 
 
 ]88
 
 larger scale, unless a reduction of scale shall be author- 
 ized by the ( 'Ommissioner. 
 
 54. The foregoing ruU^s relating to drawings will be 
 rigidly enforced. A drawing not executed in conformity 
 thereto may be admitted for purposes of examination if 
 it sufficiently illustrate the invention, but in such case 
 the drawing nuist be corrected or a new one furnished 
 before the ai)plication will be allowed. The necessary 
 corrections will be made by the office, upon applicant's 
 request and at his expense. (See Rule 72.) 
 
 55. Applicants are advised to employ competent 
 draftsmen to make their drawings. 
 
 The otifice will furnish the drawings at cost, as prompt- 
 ly as its draftsmen can mal^e them, for applicants who 
 can not otherwise conveniently procure them. 
 
 THE MODEL. 
 
 56. A model will be required or admitted as a part of 
 the application onl,y when on examination of the case in 
 its regular order the primary examiner shall find it to 
 be necessary or useful. In such case, if a model has not 
 been furnished, the examiner shall notify the applicant 
 of such requirement, which will constitute an official ac- 
 tion in the case. AVhen a model has been received in com- 
 pliance with the official requirement, the date of its filing 
 shall be entered on the file wrapper. Models not re- 
 (juired nor admitted will be returned to the applicants. 
 When a model is retpiired, the examination may be sus- 
 pended until it shall have been filed. 
 
 57. The model must clearlj- exhibit ever\^ feature of 
 the machine which forms the subject of a claim of inven- 
 tion, but should not include other matter than that cov- 
 ered by the actual invention or improvement, unless it 
 be necessary to the exhibition of the invention in a work- 
 ing model. 
 
 58. The model must be neatly and substantially made 
 of durable material, metal being deemed preferable ; but 
 
 189
 
 when the material forms an essential feature of the in- 
 vention, the model should be constructed of that mate- 
 rial. 
 
 59. A working model ma.y be required if necessary to 
 enable the office fully and readily to understand the 
 precise operation of the machine. 
 
 60. In all applications which have become abandoned, 
 the model, unless it be deemed necessary that it be pre- 
 served in the office, may be returned to the applicant 
 upon demand and at his expense ; and the model in any 
 pending case of less than one year's standing may be 
 returned to the applicant upon the filing of a formal 
 abandonment of the application, signed by the applicant 
 in person and any assignee. (See Rule 171.) 
 
 Models belonging to patented cases shall not be taken 
 from the office except in the custody of some sworn em- 
 ployee of the office specially aut;horized bj" the Commis- 
 sioner. 
 
 61. Models filed as exhibits in contested cases may be 
 returned to the parties at their expense. If not claimed 
 within a reasonable time, they may be disposed of at the 
 discretion of the Commissioner, 
 
 SPECIMENS. 
 
 62. When the invention or discovery is a composition 
 of matter, the applicant, if required by the Commis- 
 sioner, shall furnish specimens of the composition, and 
 of its ingrodients, sufficient in quantity for the purpose 
 of experiment. In all cases where the article is not per- 
 ishable, a specimen of the composition claimed, put up in 
 projior form to be preserved by the office, must be fur- 
 )iished. (Rules 56, 60, and 61 n])i)ly to specimens also.) 
 
 THE EXAMINATION. 
 
 (>:{. Applications tih'd in tlie Patent Office are classi- 
 fied accoi'ding lo llie various arts, and are taken up for 
 cxaiiiiiialion in regular order of filing, those in the same 
 
 1f)0
 
 class of invention bein^f examined and disposed of, so far 
 as practicable, in the order in which the respective appli- 
 cations have been completed. 
 
 Applications which liave been put into condition for 
 furthei' action hy the examiner sliall be entitled to pre- 
 cedence over ]iew applications in the same class of inven- 
 tion. 
 
 The following- cases have preference over all other 
 cases at every period of their examination in the order 
 enumerated : 
 
 (a) Applications wherein the inventions are deemed 
 of peculiar importance to some branch of the public serv- 
 ice, and when for that reason the head of some depart- 
 ment of the Government requests immediate action and 
 the Commissioner so orders ; but in this case it shall be 
 the duty of the head of that department to be represented 
 before the Commissioner in order to prevent the im- 
 proper issue of a patent. 
 
 (6) Applications for reissues. 
 
 (c) Cases remanded by an appellate tribunal for fur- 
 ther action, and statements of gTounds of decisions pro- 
 vided for in Rules 135 and 142. 
 
 (d) Applications which appear to interfere with other 
 applications previously considered and found to be al- 
 lowable, or which it is demanded shall be placed in inter- 
 ference with an unexpired patent or patents. 
 
 (e) Applications wdiich have been renewed or revived, 
 but the subject matter not changed. 
 
 (/) Applications filed more than twelve months after 
 the filing of an application for the same invention in a 
 foreign country. 
 
 Applications will not be advanced for examination ex- 
 cepting upon order of the Commissioner either to expe- 
 dite the business of the office or upon a verified showing 
 that delay will probably cause the applicant serious and 
 irreparable injury. 
 
 64. Where the specification and claims are such that 
 
 191
 
 the invention may be readily understood, the examina- 
 tion of a complete application and the action thereon 
 will be directed throughout to the merits; but in each 
 letter the examiner shall state or refer to all his objec- 
 tions. 
 
 Only in applications found by the examiner to present 
 patentable subject matter and in applications on which 
 appeal is taken to the examiners in chief will require- 
 ments in matters of form be insisted on. (See Rules 95 
 and 134.) 
 
 REJECTIONS AND REFERENCES. 
 
 65. "Whenever, on examination, any claim of an appli- 
 cation is rejected for any reason whatever, the applicant 
 will be notified thereof. The reasons for the rejection 
 will be fully and precisely stated, and such information 
 and references will be given as may be useful in aiding 
 the applicant to judge of the propriety of prosecuting 
 his application or of altering his specification, and if, 
 after receiving this notice, he shall persist in his claim, 
 with or without altering his specification, the application 
 will be reexamined. If upon reexamination the claim 
 shall be again rejected, the reasons therefor will be fully 
 and precisely stated. 
 
 66. Upon taking up an application for action on the 
 merits the examiner shall make a thorough investigation 
 of the prior art with respect to the invention sought to 
 be protected in the application. Upon the rejection of 
 an application for want of novelty, the examiner must 
 cite the best references at his command. When the ref- 
 erence shows or describes inventions other than that 
 claimed by the applicant, the particular part relied on 
 must be designated as nearly as practicable. The perti- 
 nence of the reference, if not obvious, must be clearly 
 explained and the anticipated claiiii specified. 
 
 If domestic patents be cited, their dates and numbers, 
 the luanes of the patentees, and the classes of invention 
 
 192
 
 must be stated. If foreiji'ii patents be cited, tlieir dates 
 and numbers, the names of the i)atentees, and the cUisses 
 of inventions nuist be stated, and such other data must 
 be furnished as nuiy be necessary to enable the ai)i)licant 
 to identify the patents cited. Tn citing- foreign patents 
 the number of sheets of drawing involving tlu> i)arts re- 
 lied upon for auticipalion nnist be specified, and in case 
 part onh' of the patent be involved, the ])articular sheets 
 of the drawing- containing the parts relied upon nnist be 
 identified by number, or by stating the numbers of the 
 fig'ures involved. Tf ))rinted ])ublications be cited, the 
 title, date, pag-e or plate, author, and place of publica- 
 tion, or place where a copy can be found, shall be given. 
 When reference is made to facts within the personal 
 knowledge of an employee of the office, the data shall be 
 as specific as possible, and the reference must be sup- 
 ported, when called for, by the affidavit of such employee 
 (Rule 76) ; such affidavit shall be subject to contradic- 
 tion, explanation, or corroboration by the affidavits of 
 the applicant and other persons. If the patent, printed 
 matter, plates, or drawings so referred to are in the pos- 
 session of the office, copies will be furnished at the rate 
 specified in Rule 191, upon the order of the applicant. 
 
 67. Whenever, in the treatment of an ex parte applica- 
 tion, an adverse decision is made upon any preliminary 
 or intermediate question, without the rejection of an.y 
 claim, notice thereof, together wdth the reasons therefor, 
 will be given to the applicant, in order that he may judge 
 of the propriety of the action. If, after receiving this 
 notice, he traverse the propriety of the action, the mat- 
 ter will be reconsidered. 
 
 AMENDMENTS AND ACTIONS BY APPLICANTS. 
 
 68. The applicant has a right to amend before or after 
 the first rejection or action ; and he may amend as often 
 as the examiner presents new references or reasons for 
 rejection. In so amending the applicant must clearly 
 
 15 193
 
 point out all the patentable novelty which he thinks the 
 ease presents in view of the state of the art disclosed by 
 the references citeid or the objections made. He must 
 also show how the amendments avoid such references or 
 objections. 
 
 After such action upon an application as will entitle 
 the applicant to an appeal to the examiners in chief 
 (Rule 134), or after appeal has been taken, amendments 
 canceling claims or presenting those rejected in better 
 form for consideration on appeal may be admitted; but 
 the admission of such an amendment or its refusal, and 
 any proceedings relative thereto, shall not operate to re- 
 lieve the application from its condition as subject to ap- 
 peal, or to save it from abandonment under Rule 171. 
 If amendments touching the merits of the application be 
 presented after the case is in condition for appeal, or 
 after appeal has been taken, they may be admitted upon 
 a showing, dul.y verified, of good and sufficient reasons 
 why they were not earlier presented. From the refusal 
 of the primary examiner to admit an amendment a peti- 
 tion will lie to the Commissioner under Rule 142. No 
 amendment can be made in appealed cases between the 
 filing of the examiner's statement of the grounds of his 
 decision (Rule 135) "and the decision of the appellate 
 tribunal. After decision on appeal amendments can only 
 be made as provided in Rule 140, or to carry into effect 
 a recommendation under Rule 139. 
 
 69. In order to be entitled to the reexamination or re- 
 consideration provided for in Rules 65 and 67 the appli- 
 cant must make request therefor in writing, and he must 
 distinctly and specifically point out the supposed errors 
 in the examiner's action; the applicant must respond to 
 every ground of objection and rejection of the prior of- 
 fice action except as provided in Rule 64, and the appli- 
 cant 's action must appear throughout to be a bona fide 
 attempt to advance the case to final action. The mere al- 
 legation Ili;it the exciminer has erred will not be received 
 
 194
 
 as a proper reason for such reexamination or reconsider- 
 ation. 
 
 70. In original applications all amendments of the 
 drawings or specifications, and all additions thereto, must 
 conform to at least one of them as it was at the time of 
 the filing of the application. Matter not found in either, 
 involving a departure from the original invention, can 
 not be added to the application even though supported 
 by a supplemental oath, and can be shown or claimed 
 only in a separate application. 
 
 71. The specification and drawing must be amended 
 and revised when required, to correct inaccuracies of de- 
 scription or unnecessary prolixitj^, and to secure corre- 
 spondence between the claim, the specification, and the 
 drawing. But no change in the drawing may be made 
 except by written permission of the office and after a 
 photographic copy of the drawing as originally presented 
 has been filed. 
 
 72. After the completion of the application the office 
 will not return the specification for any purpose what- 
 ever. If applicants have not preserved copies of the 
 papers which they wish to amend, the office will furnish 
 them on the usual terms. 
 
 The drawing may be withdrawn only for such correc- 
 tions as can not be made by the office ; but a drawing can 
 not be withdrawn unless a photographic copy has been 
 filed and accepted by the examiner as a part of the ap- 
 plication. Permissible changes in the construction shown 
 in any drawing ma}" be made only by the office and after 
 an approved photographic copy has been filed. Substi- 
 tute drawings will not be admitted in any case unless re- 
 quired by the office. 
 
 73. In every amendment the exact word or words to be 
 stricken out or inserted in the application must be speci- 
 fied and the precise point indicated where the erasure or 
 insertion is to be made. All such amendments must be 
 on sheets of paper separate from the papers previously 
 
 195
 
 filed, and written on but one side of the paper. Erasures, 
 additions, insertions, or mutilations of the papers and 
 records must not be made by the applicant. 
 
 Amendments and papers requiring the signature of the 
 applicant must also, in case of assignment of an undi- 
 vided part of the inyention, be signed by the assignee. 
 (Rules 6, 107.) 
 
 74. When an amendatory clause is amended it must be 
 wholly rewritten, so that no interlineation or erasure 
 shall appear in the clause as finally amended, when the 
 application is passed to issue. If the number or nature 
 of the amendments shall render it otherwise difficult to 
 consider the case, or to arrange the papers for printing 
 or copying, the examiner may require the entire specifi- 
 cation to be rewritten. 
 
 75. "When an original or reissue application is rejected 
 on reference to an expired or unexpired domestic patent 
 which substantially shows or describes but does not claim 
 the rejected iuTention, or on reference to a foreign patent 
 or to a printed publication, and the applicant shall make 
 oath to facts sho-^ing a completion of the invention in 
 this country before the filing of the application on which 
 the domestic patent issued, or before the date of the for- 
 eign patent, or before the date of the printed publication, 
 and .shall also make oath that he does not know and does 
 not believe that the invention has been in public use or 
 on sale in this country, or patented or described in a 
 printed publication in this or any foreign country for 
 more than two years prior to his application, and that he 
 has never abandoned the invention, then the patent or 
 publication cited shall not bar the grant of a patent to 
 the applicant, unless the date of such patent or printed 
 publication be more than two years prior to the date on 
 which application was filed in this country. 
 
 76. When an application is rejected on reference to an 
 expired or unexpired domestic patent which .shows or de- 
 scribes but does not claim the invention, or on reference 
 
 196
 
 to a foreign jiatont, or to a printed publication, or to 
 facts within the personal knowledge of an employee of 
 the office, set forth in an affidavit (when requested) of 
 such emploj'ee (Rule 66), or when rejected on the ground 
 of public use or sale, or upon a mode or capability of op- 
 eration attributed to a reference or because the alleged 
 invention is held to be inoperative or frivolous or injur- 
 ious to public health or morals, affidavits or depositions 
 supporting or traversing these references or objections 
 may be received, but affidavits will not be received in 
 other cases without special permission of the Commis- 
 sioner. (See Rule 138.) 
 
 77. If an applicant neglect to prosecute his application 
 for one year after the date when the last official notice of 
 any action by the office was mailed to him, the applica- 
 tion will be held to be abandoned, as set forth in Rule 
 171. 
 
 Suspensions will only be granted for good and suffi- 
 cient cause, and for a reasonable time specified. Only 
 one suspension may be granted by the primary examiner ; 
 any further suspension must be approved by the Com- 
 missioner. 
 
 Whenever action upon. an application is suspended 
 upon request of an applicant, and whenever an applicant 
 has been called upon to put his application in condition 
 for interference, the period of one year running against 
 the application shall be considered as beginning at the 
 date of the last official action preceding such actions. 
 
 Whenever, during a time when the United States is at 
 ivar, publication of an invention hy the granting of a 
 patent might, in the opinion of the Commissioner, he 
 detrimental to the public safety or defense or might assist 
 the enemy or endanger the successful prosecution of the 
 war, he may suspend action on the application therefor. 
 
 78. Amendments after the notice of allowance of an 
 application will not be permitted as a matter of right, 
 but may be made, if the specification has not been print- 
 
 197
 
 ed, on the recommendation of the primary examiner, ap- 
 proved by the Commissioner, without withdrawing the 
 ease from issue. (See Rule 165.) 
 
 DESIGNS. 
 
 79. A design patent maj' be obtained by any person 
 who has invented any new, original, and ornamental de- 
 sign for an article of manufacture, not known or used by 
 others in this country before his invention thereof, and 
 not patented or described in any printed publication in 
 this or any foreign country before his invention thereof, 
 or more than two years prior to his application, and not 
 caused to be patented by him in a foreign country on an 
 application filed more than four months before his appli- 
 cation in this country, and not in public use or sale in 
 this country for more than two years prior to his applica- 
 tion, unless the same is proved to have been abandoned, 
 upon pajanent of the fees required by law and other due 
 proceedings had, the same as in cases of inventions or 
 discoveries. 
 
 80. Patents for designs are granted for the term of 
 three and one-half years, or for seven years, or for four- 
 teen years, as the applicant may, in liis application, elect. 
 
 Where the applicant requests that the patent issue for 
 one of the shorter terms, he may, at any time before the 
 allowance of the application, upon the payment of the 
 additional fee, amend his application by requesting that 
 the patent be issued for a longer term. 
 
 81. The proceedings in applications for patents for de- 
 signs are substantially the same as in applications for 
 oilier palciils. Since a design patent gives to the pat- 
 entee the exclusive right to make, use, and vend articles 
 havi)ig tiie appearance of that disclosed, and since the 
 appejii'jiiice e;in be disclosed only by a ])ieture of the 
 article, llie claim shonld be in llie broadest form for the 
 article as shown. 
 
 198
 
 82. The following order oi' arrangement should be ob- 
 served in framing design speeifieations : 
 
 (a) Preamble, stating name and residence of the ap- 
 plicant, title of the design, and the name of the article 
 for which the design has been invented. 
 
 (h) Description of the figure or figures of the draw- 
 ing. 
 
 (c) Claim. 
 
 (d) Signature of applicant. 
 
 83. When the design can be sufficiently represented by 
 drawings a model will not be required. 
 
 84. The design must be represented by a drawing made 
 to conform to the rules laid down for drawings of me- 
 chanical inventions. 
 
 (For forms to be used in applications for design pat- 
 ents, see appendix.) 
 
 REISSUES. 
 
 85. A reissue is granted when the original patent is in- 
 operative or invalid by reason of a defective or insuffi- 
 cient specification, or by reason of the patentee claiming 
 as his invention or discovery more than he had a right to 
 claim as new, provided the error has arisen through in- 
 advertence, accident, or mistake, and without any fraud- 
 ulent or deceptive intention. 
 
 Reissue applications must be made and the specifica- 
 tions sworn to by the inventors if they be living. 
 
 86. The petition for a reissue must be accompanied by 
 an order for a certified copy of the abstract of title, to be 
 placed in the file, giving the names of all assignees own- 
 ing any undivided interest in the patent. In case the ap- 
 plication be made by the inventor it must be accom- 
 panied by the written assent of such assignees. 
 
 A reissue will be granted to the original patentee, his 
 legal representatives or assigns, as the interest may ap- 
 pear. 
 
 87. Applicants for reissue, in addition to the require- 
 
 199
 
 ments of the first sentence of Rule 46, must also file with 
 their petitions a statement on oath as follows : 
 
 ((/) That applicant verily believes the original patent 
 to be inoperative or invalid, and the reason why. 
 
 ( h ) When it is claimed that such patent is so inopera- 
 tive or invalid "by reason of a defective or insufiicient 
 specification," particularly specifying such defects or in- 
 sufficiencies. 
 
 (c) When it is claimed that such patent is inoperative 
 or invalid ' ' by reason of the patentee claiming as his own 
 invention or discovery more than he had a right to claim 
 as new," distinctly specifying the part or parts so al- 
 leged to have been improperly claimed as new. 
 
 (d) Particularly specifying the errors which it is 
 claimed constitute the inadvertence, accident, or mistake 
 relied upon, and how they arose or occurred. 
 
 (e) That said errors arose "without any fraudulent 
 or deceptive intention ' ' on the part of the applicant. 
 
 88. New matter shall not be allowed to be introduced 
 into the reissue specification, nor in the case of a machine 
 shall the model or drawings be amended except each by 
 the other. 
 
 89. The Commissioner may, in his discretion, cause 
 several patents to be issued for distinct and separate 
 parts of the thing patented, upon demand of the appli- 
 cant, and upon payment of the required fee for each 
 division of such reissued letters patent. Each division 
 of a reissue constitutes the subject of a separate specifica- 
 tion descriptive of the part or parts of the invention 
 claimed in such division; and the drawing may repre- 
 sent only such part or ])arts, subject to the provisions of 
 Rule 50. Tin less otherwise ordered by the Commissioner, 
 all the divisions of a reissue will issue simultaneously ; if 
 thero be any controversy as to one division, the others 
 will !)(' withheld from issue until the controversy is 
 ended, iiiih'ss tlie Commissioner shall otherwise order. 
 
 !)(). All original claim, if reproduced in the reissue 
 200
 
 specification, is subject to reexamination, and the entire 
 application will be revised and restricted in the same 
 manner as original applications, excepting that division 
 will not be required. 
 
 91. The application for a reissue must be accompanied 
 by the original patent and an offer to surrender the 
 same, or, if the original be lost, by an affidavit to that ef- 
 fect, and a certified copy of the patent. If a reissue be 
 refused, the original patent will be returned to applicant 
 upon his request. 
 
 92. Matter shown and described in an unexpired pat- 
 ent which is an indivisible part of the invention claimed 
 therein, but which was not claimed by reason of a de- 
 fect or insufficiency in the specification, arising from in- 
 advertence, accident, or mistake, and without fraud or 
 deceptive intent, can not be subsequently claimed by the 
 patentee in a separate patent, but only in a reissue of the 
 original patent. 
 
 INTERFERENCES. 
 
 93. An interference is a proceeding instituted for the 
 purpose of determining the question of priority of in- 
 vention between two or more parties claiming substan- 
 tially the same patentable invention. In order to ascer- 
 tain tvhcther any question of priority arises the Commis- 
 sioner may call upon any junior applicant to state in 
 ivriting the date when he conceived the invention under 
 consideration. All statements filed in compliance with 
 this rule will he returned to the parties filing them. In 
 case the applicant malxes no reply within the time speci- 
 fied, not less than ten days, the Commissioner will pro- 
 ceed upon the assumption that the said date is the date 
 of the oath attached to the application. The fact that 
 one of the parties has already obtained a patent will not 
 prevent an interference, for, although the Commissioner 
 has no power to cancel a patent, he may grant another 
 
 201
 
 patent for the same invention to a person who proves to 
 be the prior inventor. 
 
 94. Interferences will be declared between applications 
 by different parties for patent or for reissue when such 
 applications contain claims for substantially' the same 
 invention which are allowable in the application of each 
 party, and interferences will also be declared between 
 applications for patent, or for reissue, and unexpired 
 original or reissued patents, of different parties, when 
 such applications and patents contain claims for substan- 
 tially the same invention which are allowable in all of the 
 applications involved : Provided, That where the filing 
 date of any applicant is subsequent to the filing date of 
 any patentee, the applicant shall file an affidavit that he 
 made the invention before the filing date of the patentee. 
 
 Parties owning applications or patents which contain 
 conflicting claims will be required before an interference 
 is declared to show cause why these claims shall not be 
 eliminated from all but one of the applications or patents 
 of common ownership. 
 
 95. Before the declaration of interference all prelim- 
 inary questions must be settled by the primary exam- 
 iner, and the issue must be clearly defined ; the inven- 
 tion which is to form the subject of the controversy must 
 have been patented to one of the parties or have been de- 
 cided to be patentable, and the claims of the respective 
 parties must be put in such condition that they will not 
 re(iuire alteration after the interference shall have been 
 finally decided, unless the evidence adduced upon the 
 trial shall necessitate or justify such change. 
 
 In case the subject matter in controversy has been pat- 
 ented to one of the parties but is deemed by the examiner 
 not to be patentable, he shall call the ease to the attention 
 of the Commissioner, who may direct the declaration of 
 the interference. 
 
 9(j. Whenever the claims of two or more applications 
 differ in phraseology, but relate to substantially the 
 
 202
 
 same patentable subject matter, the examiner, when one 
 of the applications is ready for allowance, shall suggest 
 to the parties such claims as are necessary to cover the 
 common invention in substantially the same language. 
 The examiner shall send copies of the letter suggesting 
 claims to the applicant and to the assignees, as well as 
 to the attorney of record in each case. The parties to 
 whom the claims are suggested will be required to make 
 those claims and put the applications in condition for 
 allowance within a specified time in order that an inter- 
 ence may be declared. Upon the failure of any appli- 
 cant to make the claim suggested within the time speci- 
 fied, such failure or refusal shall be taken without fur- 
 ther 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 unless the time for making the claim and put- 
 ting the application in condition for allowance be ex- 
 tended upon a proper showing. If a part}^ make the 
 claim without putting his application in condition for 
 allowance, the declaration of the interference will not be 
 delayed, but after judgment of priority the application 
 of that party will be held for revision and restriction, 
 subject to interference with other applications. 
 
 Whenever it shall be found that two or more parties 
 whose interests are in conflict are represented by the 
 same attorney, the examiner shall notify each of said 
 principal parties and also the attorney of this fact. 
 
 97. When an interference is found to exist and the 
 applications are prepared therefor, the primary exam- 
 iner shall forward to the examiner of interferences the 
 files and drawings ; notices of interference for all the 
 parties (as specified in Rule 103) disclosing the name 
 and residence of each party and those of his attorney, 
 and of any assignee, and, if anj^ part}" be a patentee, the 
 date and number of the patent ; the ordinals of the con- 
 flicting claims and the title of the invention claimed ; and 
 
 203
 
 the issue, which shall be clearly and concisely defined in 
 so many counts or branches as may be necessary in order 
 to include all interfering claims. Where the issue is 
 stated in more than one count the respective claims in- 
 volved in each count shall be specified. The primary 
 examiner shall also forward to the examiner of interfer- 
 ences for his use a statement disclosing the applications 
 involved in interference, fully identified, arranged in 
 the inverse chronological order of the filing of the com- 
 pleted applications, and also disclosing the issue or issues 
 and the ordinals of the conflicting claims, the name and 
 residence of any assignee, and the names and residences 
 of all attorneys, both principal and associate. 
 
 98. ITpon receipt of the notices of interference, the ex- 
 aminer of interferences shall make an examination 
 thereof, in order to ascertain whether the issues between 
 the parties have been clearly defined, and whether they 
 are otherwise correct. If he be of the opinion that the 
 notices are ambiguous or are defective in any material 
 point, he shall transmit his objections to the primary ex- 
 aminer, who shall promptly notify the examiner of in- 
 terferences of his decision to amend or not to amend 
 them. 
 
 99. In ease of a material disagreement between the ex- 
 aminer of interferences and the primary examiner, the 
 points of dift'erence shall be referred to the Commissioner 
 for decision. 
 
 100. The primary examiner will retain jurisdiction of 
 the case until the declaration of interference is made. 
 
 101. Upon the institution and declaration of the inter- 
 ference, as provided in Rule 102, the examiner of inter- 
 ferences will take jurisdiction of the same, which will 
 then become a contested case ; but the law examiner will 
 determine the motions mciitioiKMl in Rule 122, as therein 
 provided. 
 
 102. Wlicn the notices of interference are in proper 
 form, tlie examiner of interferences sluill add thereto a 
 
 204
 
 designation of the time within which the preliminaiy 
 statements reciuired by Rule 110 must be filed, and shall, 
 pro forma, institute and declare the interference by for- 
 warding the notices to the several parties to tlie proceed- 
 ing. 
 
 103. The notices of interference shall be forwarded by 
 the examiner of interferences to all the parties, in care 
 of their attorneys, if they have attorneys, and, if the ap- 
 plication or patent in interference has been assigned, to 
 the assignee. When one of the parties has received a 
 patent, a notice shall be sent to the patentee and to his 
 attorney of record. 
 
 When the notices sent in the interest of a patent are 
 returned to the office undelivered, or when one of the par- 
 ties resides abroad and his agent in the United States is 
 unknown, additional notice may be given by publication 
 in the Official Gazette for such period of time as the 
 Commissioner may direct. 
 
 104. If eitlier party require a postponement of the 
 time for filing his preliminary statement, he shall pre- 
 sent his motion, duly served on the other parties, with 
 his reasons therefor, supported by affidavit, and such mo- 
 tion should be made, if possible, prior to the day previ- 
 ously set. But the examiner of interferences may, in his 
 discretion, extend the time on e.r parte request or upon 
 his own motion. 
 
 103. When an application is involved in an interfer- 
 ence in which a part only of the invention is included in 
 the issue, the applicant may file certified copies of the 
 part or parts of the specification, claims, and drawings 
 which cover the interfering matter, and such copies may 
 be used in the proceeding in place of the original appli- 
 cation. 
 
 106. When a part only of an application is involved in 
 an interference, the applicant may withdraw from .his 
 application the subject matter adjudged not to interfere, 
 and file a new application therefor, or he may file a divi- 
 
 205
 
 sioiial application for the subject matter involved, if the 
 invention can be legitimately divided: Provided, That 
 no claim shall be made in the application not involved 
 in the interference broad enough to include matter 
 claimed in the application involved therein. 
 
 107. An applicant involved in an interference may, 
 with the written consent of the assignee, when there has 
 been an assignment, before the date fixed for the filing of 
 his preliminary statement (see Rule 110), in order to 
 avoid the continuance of the interference, disclaim under 
 his own signature the invention of the particular matter 
 in issue, and upon such disclaimer judgment shall be 
 rendered against him. 
 
 108. When applications are declared to be in interfer- 
 ence, the interfering parties will be permitted to see or 
 obtain copies of each other's file wrappers, and so much 
 of their contents as relates to the interference, after the 
 preliminary statements referred to in Rule 110 have been 
 received and approved; but information of an applica- 
 tion will not be furnished by the office to an opposing 
 party, except as provided in Rules 97 and 103, until after 
 the approval of such statements. 
 
 109. An applicant involved in an interference may, at 
 any time within thirty days after the preliminary .state- 
 ments (referred to in Rule 110) of the parties have been 
 received and approved, on motion duly made, as pro- 
 vided by Rule 153, file an amendment to his application 
 containing any claims Avhich in his opinion should be 
 made the basis of interference between himself and any 
 of the other parties. Such motion must be accompanied 
 by tlie proposed amendment, and wlion in proper form 
 will be set for hearing before the law examiner. AYliere 
 a party opposes the admission of such an amendment in 
 view of i)i-i()r ])atents or publications, full notice of such 
 patents or publications nnist be given at least five days 
 prior to the date of hearing. On the admission of such 
 amendment, and the adoption of the claims by the other 
 
 20G
 
 parties within a time specified by the hiw examiner, the 
 ])riniar3' examiner shall redeclare the interference, or 
 shall declare such other interferences as may be neces- 
 sary to include the said claims. New preliminary state- 
 ments will be received as to the added claims, but motions 
 for dissolution with regard thereto will not be consid- 
 ered where the questions raised could have been disposed 
 of in connection with the admission of the* claims. 
 Amendments to the s))ecification will not be received 
 during the pendency of the interference, without the 
 consent of the Commissioner, except as provided herein, 
 and in Rule 106. 
 
 Any party to an interference may bring a motion to 
 put in interference any claims already in his application 
 or patent, which in his opinion should be made the basis 
 of interference between himself and any of the other 
 parties. Such motions are subject to the same condi- 
 tioiLS, and the procedure in connection therewith is the 
 same, so far as applicable, as hereinabove set forth for 
 motions to amend. 
 
 110. Each party to the interference will be required to 
 file a concise preliminary statement, under oath, on or 
 before a date to be fixed by the otfice, showing the fol- 
 lowing facts : 
 
 {a) The date of original conception of the invention 
 set forth in the declaration of interference. 
 
 (&) The date upon which the first drawing of the in- 
 vention and the date upon w^hich the first written de- 
 scription of the invention were made. 
 
 (c) The date upon which the invention was first dis- 
 closed to others. 
 
 (d) The date of tiie reduction to practice of the inven- 
 tion. 
 
 (e) A statement showing the extent of use of the in- 
 vention. 
 
 (/) The applicant shall state the date and number of 
 any application for the same invention filed within twelve 
 
 207
 
 months before the filing date in the United States, in 
 any foreign country adhering to the International Con- 
 vention for the Protection of Industrial Property or 
 having similar treaty relations with the United States. 
 
 If a drawing has not been made, or if a written de- 
 scription of the invention has not been made, or if the 
 invention has not been reduced to practice or disclosed 
 to others or used to any extent, the statement must spe- 
 cificallj' disclose these facts. 
 
 When the invention was made abroad the statement 
 should set forth : 
 
 (a) That the applicant made the invention set forth 
 in the declaration of interference. 
 
 (?)) Whether or not the invention Avas ever patented; 
 if so, when and where, giving the date and number of 
 each patent, the date of publication, and the date of seal- 
 ing thereof. 
 
 (c) Whether or not the invention was ever described 
 in a printed publication ; if so, when and where, giving 
 the title, place, and date of such publication. 
 
 (d) When the invention was introduced into this 
 country, giving the circumstances wdth the dates con- 
 nected therewith which are relied upon to establish the 
 fact. 
 
 The preliminary statements should be carefully pre- 
 pared, as the parties will be strictly held in their proofs 
 to the dates set up therein. 
 
 If a part}' prove any date earlier than alleged in his 
 preliminary statement, such proof will be held to estab- 
 lish the date alleged and none other. 
 
 The statement must be sealed up before filing (to be 
 opened only by the examiner of interferences ; see Rule 
 111), and the name of the party filing it, the title of the 
 case, and the subject of the invention indicated on the 
 envelop. The envelop should contain nothing but this 
 statement. 
 
 (Few forms, see 86 and 37, appendix.) 
 
 208
 
 111. The preliminary statements .shall not be opened 
 to the inspection of the opposing parties until each one 
 shall have been filed, or the time for such filing, with any 
 extension thereof, shall have expired, and not then un- 
 less they have been examined by the proper officer and 
 found to be satisfactory. 
 
 Any party in default in filing his preliminary state- 
 ment shall not have access to the preliminary state- 
 ment or statements of his opponent or opponents until he 
 has either filed his statement or waived his right thereto, 
 and agreed to stand upon his record date. 
 
 A party who alleges no date in his preliminar}' state- 
 ment earlier than the filing date of the application or 
 applications of the other party or parties shall not have 
 access to the preliminary statement of said party or 
 parties. 
 
 112. If, on examination, a statement is found to be de- 
 fective in any particular, the party shall be notified of 
 the defect and wherein it consists, and a time assigned 
 within which he must cure the same by an amended 
 statement; but in no case will the original or amended 
 statement be returned to the party after it has been filed. 
 Unopened statements will be removed from interference 
 files and preserved by the office, and in no case will such 
 statements be open to the inspection of the opposing 
 party without authority from the Commissioner. If a 
 party shall refuse to file an amended statement he may 
 be restricted to his record date in the further proceed- 
 ings in the interference. 
 
 113. In case of material error arising through inad- 
 vertence or mistake, the statement may be corrected on 
 motion (see Rule 153), upon a satisfactory showing that 
 the correction is essential to the ends of justice. The 
 motion to correct the statement must be made, if pos- 
 sible, before the taking of any testimony, and as soon as 
 practicable after the discovery of the error. 
 
 114. If the junior party to an interference, or if any 
 
 i6 209
 
 party thereto other than the senior party, fail to file a 
 statement, or if his statement fail to overcome the prima 
 facie case made by the respective dates of application, 
 such party shall be notified by the examiner of inter- 
 ferences that judgment upon the record will be rendered 
 against him at the expiration of thirty days, unless cause 
 be shown why such action should not be taken. Within 
 this period an}' of the motions permitted by the rules may 
 be brought. Motions brought after judgment on the 
 record has been rendered will not be entertained unless 
 sufficient reasons appear for the delay. 
 
 115. If a party to an interference fail to file a state- 
 ment, testimony will not be received subsequently from 
 him to prove that he made the invention at a date prior 
 to his application. 
 
 116. The parties to an interference will be presumed 
 to have made the invention in the chronological order in 
 which the,y filed their completed applications for patents 
 clearly disclosing the invention ; and the burden of 
 proof will rest upon the party who shall seek to establish 
 a different state of facts. 
 
 117. The preliminary statement can in no case be used 
 as evidence in behalf of the party making it. 
 
 118. Times will be assigned in which the junior appli- 
 cant shall complete his testimony in chief, and in which 
 the other party shall complete the testimony on his side, 
 and a further time in which the junior applicant may 
 take rebutting testimony ; but he shall take no other 
 testimony. If there be more than two parties to the in- 
 terference, the times for taking testimony will be so ar- 
 ranged that each shall have an opportunity to prove his 
 case against prior applicants and to rebut their evidence, 
 and also to meet the evidence of junior applicants. 
 
 ]]f). Upon the filing of an affidavit by any senior party 
 to an interference that the time for taking testimony on 
 bchjilf of any junior party has expired and that no testi- 
 mony has been taken by him, an order shall be entered 
 
 210
 
 that the junior party sliow cause within a time set there- 
 in, not less than ten days, why judgment should not be 
 rendered against him, and in the absence of a showing 
 of good and sufficient cause judgment shall be so ren- 
 dered. If any showing be made in response to the order, 
 it must be served upon the opposing party and noticed 
 for hearing by the party filing it. 
 
 120. If either party desire to have the hearing con- 
 tinued, he shall make application for such postponement 
 by motion (see Rule 153), and shall show sufficient rea- 
 son therefor by affidavit. 
 
 121. If either party desire an extension of the time as- 
 signed to him for taking testimony, he shall make appli- 
 cation therefor, as provided in Rule 154 (d). 
 
 122. Motions to dissolve an interference (1) alleging 
 that there has been such informality in declaring the 
 same as will preclude the proper determination of the 
 question of priority of invention, or (2) denying the 
 patentability of an applicant's claim, or (3) denying his 
 right to make the claim, should contain a full statement 
 of the grounds relied upon and should, if possible, be 
 made not later than the thirtieth day after the state- 
 ments of the parties have been received and approved. 
 Such motions and all motions of a similar character, if 
 in the opinion of the Commissioner they be in proper 
 form, will be heard and determined by the law examiner, 
 due notice of the day of hearing being given by the of- 
 fice to all parties. If in the opinion of the Commissioner 
 the motion be not in proper form, or if it be not brought 
 within the time specified and no satisfactory reason be 
 given for the delay, it will not be considered and the 
 parties will be so notified. 
 
 When the motion has been decided by the law examiner 
 the files and papers, with his decision, will be sent at 
 once to the docket clerk. 
 
 Motions to shift the burden of proof should be made 
 before, and will be determined by, the examiner of in- 
 
 211
 
 lerferences. No appeal from the decision on such mo- 
 tions will be entertained, but the matter may be reviewed 
 on appeal from the final decision upon the question of 
 priority of invention. 
 
 123. Settings a motion brought under the provisions of 
 Rule 109 or of Rule 122 for hearing by the law examiner 
 will act as a stay of proceedings pending the determina- 
 tion of the motion. To effect a stay of proceedings in 
 other cases, motion should be made before the tribunal 
 having- jurisdiction of the interference, who will, suffi- 
 cient grounds appearing therefor, order a suspension of 
 the interference pending the determination of such mo- 
 tion. 
 
 124. Where, on motion for dissolution, the law ex- 
 aminer renders an adverse decision upon the merits of a 
 party's case, as when he holds that the issue is not pat- 
 entable or that a party has no right to make a claim, he 
 shall fix a limit of appeal not less than twenty days from 
 the date of his decision. Appeal lies to the examiners in 
 chief in the first instance and will be heard inter partes. 
 If the appeal be not taken within the time fixed, it will 
 not be entertained except by permission of the Commis- 
 sioner. 
 
 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. 
 
 Ap])eals may be taken directly to the Commissioner, 
 except in the cases provided for in the preceding por- 
 tions of tliis rule, from decisions on such motions as, in 
 his judgment, should be appealable. 
 
 125. After an interference is finally declared it Avill 
 not, except as hereiii otherwise provided, be determined 
 willioiit judgment of priority founded either upon the 
 evidence, ov upon a wi-i1teu concession of priority, or 
 upon a wriltcu dischiimci- of llie invention, or upon a 
 writtru (Icclaraliou of al)aii(l()nnu'nt of the invention, 
 
 212
 
 signed by tlio inventor himself (and by the assignee, if 
 any). 
 
 126. The examiner of interferences or the examiners in 
 chief may, either before or in their decision on the ques- 
 tion of priority, direct the attention of the Commissioner 
 to any matter not relating to priority which may have 
 come to their notice, and which, in their opinion, estab- 
 lishes 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 suspend the inter- 
 ference and remand the case to the primary examiner for 
 his consideration of the matters to M^hich 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 party 
 to a patent which may have been called to his attention, 
 unless the same shall have been previously disposed of by 
 the Commissioner. 
 
 127. A second interference will not be declared upon a 
 new application for the same invention filed by either 
 party. 
 
 128. If, during the pendency of an interference, a ref- 
 erence be found, the primary examiner shall call the at- 
 tention of the law examiner thereto, and the latter may 
 request the suspension of the interference until the final 
 determination of the pertinency and effect of the refer- 
 ence, and the interference shall then be dissolved or 
 continued as the result of such determination. The con- 
 sideration of such reference shall be inter partes and be- 
 fore the law examiner. 
 
 129. If, during the pendency of an interference, an- 
 other case appear, claiming substantially the subject 
 matter in issue, the primary examiner shall request the 
 suspension of the interference for the purpose of adding 
 
 213
 
 said case. Such suspension will be granted as a matter 
 of course by the examiner of interferences if no testi- 
 mony has been taken. If, however, any testimony has 
 been taken, a notice for the proposed new party, disclos- 
 ing the issue in interference and the names and addresses 
 of the interferants and of their attorneys, and notices for 
 the interferants disclosing the name and address of the 
 said party and his attorney, shall be prepared by the 
 primary examiner and forwarded to the examiner of in- 
 terferences, who shall mail said notices and set a time 
 of hearing on the question of the admission of the new 
 party. If the examiner of interferences be of the opin- 
 ion that the interference should be suspended and the 
 new party added, he shall prescribe the terms for such 
 suspension. The decision of the examiner of interfer- 
 ences as to the addition of a party shall be final. 
 
 130. Where the patentability of a claim to an op- 
 ponent is material to the right of a party to a patent, 
 said party may urge the noni)atentability of the claim to 
 his opponent as a basis for the decision upon priority of 
 invention. A party shall not be entitled to raise this 
 question, however, unless he has duly presented and 
 prosecuted a motion under Rule 122 for dissolution upon 
 this ground or shows good reason why such a motion was 
 not presented and prosecuted. When the law examiner 
 has denied such a motion for dissolution the question 
 shall not be reinvestigated by the examiner of interfer- 
 ences except in view of evidence which was not before the 
 law examiner, but it may be raised before the appellate 
 tribunals on appear from award of priority by the ex- 
 aminer of interferences. 
 
 1:51. When, on motion duly made and upon satisfac- 
 1(ir\- ])r()()r, it sliall Ix- shown that, by reason of the in- 
 al)ility oi" refusal of the inventor to prosecute or defend 
 an intei-ference, or from other cause, the ends of justice 
 r('(|uire lliat an assignee ol" an undivided interest in the 
 
 214
 
 iiivontion l)e pcniiittcd to prosecute or dct'oid llic sJiiiic, 
 it, may be so ordered. 
 
 132. Whenever an awai'd ol" priority lias been ren- 
 dci-ed in an interference proceeding by any tribunal and 
 the limit of appeal from such d(>cision lias expired, and 
 wlienever an interference luis been terminated by reason 
 of the written concession, signed by the applicant in 
 person, of priority of invention in favor of his opponent 
 or opponents, the primary examiner shall advise the de- 
 feated or unsuccessful party or parties to tlie interfer- 
 ence that their claim or claims which were so involved 
 in the issue stand finally rejected. 
 
 APPEALS TO THE EXAMINERS IN CHIEF AND TO 
 THE COMMISSIONER AND PETITIONS TO THE 
 COMMISSIONER IN THE EX PARTE PROSECU- 
 TION OF APPLICATIONS. 
 
 133. Every applicant for a patent, any of the claims of 
 whose application have been twice rejected for the same 
 reasons, upon grounds involving the merits of the inven- 
 tion, such as lack of invention, novelty, or utility, or on 
 the ground of abandonment, public use or sale, inopera- 
 tiveness of invention, aggregation of elements, incom- 
 plete combination of elements, or, when amended, for 
 want of identity with the invention originally disclosed, 
 or because the amendment involves a departure from the 
 invention originally presented ; and every applicant who 
 has been twice required to divide his application, and 
 every applicant for the reissue of a patent wdiose claims 
 have been twice rejected for any of the reasons above 
 enumerated, or on the ground that the original patent is 
 not inoperative or invalid, or if so inoperative or invalid 
 that the errors which rendered it so did not arise from 
 inadvertence, accident, or mistake, may, upon payment 
 of a fee of $10, appeal from the decision of the primary 
 examiner to the examiners in chief. The appeal must 
 set forth in writing the points of the decision upon which 
 
 215
 
 it is taken, and must be signed by the applicant or his 
 duly authorized attorne}' or agent. 
 
 134. There must have been two rejectioiLs of the claims 
 as originally filed, or, if amended in matter of substance, 
 of the amended claims, and all the claims must have been 
 passed upon, and except in cases of division all prelim- 
 inary and intermediate questions relating to matters not 
 affecting the merits of the invention settled, before the 
 case can be appealed to the examiners in chief. 
 
 135. Upon the filing of the appeal the same shall be 
 submitted to the primary examiner, who, if he find it to 
 be regular in form, and to relate to an appealable action, 
 shall within ten days from the filing thereof furnish the 
 examiners in chief with a written statement of the 
 grounds of his decision on all the points involved in the 
 appeal, with copies of the rejected claims and with the 
 references applicable thereto, giving a concise explana- 
 tion of the invention claimed and of the subject matter 
 of the references so far as pertinent to the appealed 
 claims. The examiner shall at the time of making .such 
 statement furnish a copy of the same to the appellant. 
 If the primary examiner shall decide that the appeal is 
 not regular in form or does not relate to an appealable 
 action, a petition from such decision may be taken di- 
 rectly to the Commissioner, as provided in Eule 142. 
 
 136 From the adverse decision of the board of exam- 
 iners in chief appeal may be taken to the Commissioner 
 in person, upon payment of the fee of $20 required by 
 law. 
 
 137. The appellant shall on or before the day of hear- 
 ing file a brief of the authorities and arguments on which 
 he will rely to maintain his appeal. 
 
 If the appellant desire to be heard orally, he will so 
 indicate when he files his appeal ; a day of hearing will 
 then be fixed, and due notice thereof given him. 
 
 138. Affidavits received after the case has been ap- 
 pealed will not be admitted without remanding the ap- 
 
 216
 
 plication to the primary examiner for reconsideration; 
 but the appellate ti'lhuuals may in their discretion refuse 
 to remand the case and proceed with the same without 
 consideration of the alYidavits. 
 
 139. The examiners in chief in their decision shall af- 
 firm or i-everse the decision of the primary examiner only 
 on the ])oints on which appeal shall have been taken. 
 (See Rule 133.) Should th(\y discover any apparent 
 grounds not involved in the appeal for granting or re- 
 fusing letters patent in the form claimed, or any other 
 form, they shall annex to their decision a statement to 
 that effect with such recommendation as they shall deem 
 proper. 
 
 Should the examiners in chief recommend the refusal 
 of letters patent in the form claimed, their recommenda- 
 tion will stand as a rejection and will reopen the case for 
 amendment or showing of fact, or both, before the pri- 
 mary examiner, responsive to that rejection. The recom- 
 mendation of the examiners in chief is binding upon the 
 primary examiner unless an amendment or showing of 
 facts not previousl}^ of record be made which, in the 
 opinion of the primary examiner, overcomes the recom- 
 mendation. The applicant may waive the right to pros- 
 ecution before the primary examiner and have the case 
 reconsidered by the examiners in chief upon the same 
 record, and from an adverse decision of the examiners 
 in chief on reconsideration, appeal will lie to the Com- 
 missioner, as in other cases. The applicant may also 
 waive reconsideration by the examiners in chief and ap- 
 peal directly to the Commissioner. 
 
 Should the examiners in chief recommend the grant- 
 ing of letters patent in an amended form, the applicant 
 shall have the right to amend in conformity with such 
 recommendation, which shall be binding upon the pri- 
 mar}^ examiner in the absence of new references or 
 grounds for rejection. 
 
 If the Commissioner, in reviewing the decision of the 
 
 217
 
 exaniinors in cliief, discovers any apparent grounds for 
 refusing letters patent not involved in the appeal, he 
 will, before or after decision on the appeal, give reason- 
 able notice thereof to the applicant ; and if any amend- 
 ment or action based thereon be proposed, he will remand 
 the case to the primary examiner for consideration. 
 
 140. Cases which have been heard and decided b}' the 
 Commissioner on appeal will not be reopened except by 
 his order; cases which have been decided by the exam- 
 iners in chief w^ill not be reheard by them, when no 
 longer pending before them, without the written author- 
 ity of the Commissioner ; and cases which have been de- 
 cided by either the Commissioner or the examiners in 
 chief will not be reopened by the primary examiner with- 
 out like authority, and then only for the consideration of 
 matters not already adjudicated upon, sufficient cause 
 being shown. (See Rule 68.) 
 
 141. After decision by an appellate tribunal the case 
 shall be remanded at once to the primary examiner, sub- 
 ject to the applicant's right of appeal, for such action as 
 will carry into effect the decision, or for such further 
 action as the applicant is entitled to demand. 
 
 142. Upon receiving a petition stating concisely and 
 clearly any proper questoin which has been twice acted 
 upon by the examiner, and which does not involve the 
 merits of the invention claimed, the rejection of a claim 
 or a requirement for division, and also stating the facts 
 involved and the point or points to be reviewed, an order 
 will be made directing the examiner to furnish a written 
 statement of the grounds of his decision upon the mat- 
 ters averred within five days. The examiner shall at the 
 time of making such statement furnish a copy thereof to 
 the petitioner. No fee is required for such a petition. 
 Hearing will be grantcnl in the discretion of the Com- 
 missioner. 
 
 218
 
 APPEALS TO THE EXAMINERS IN CHIEF AND TO 
 THE COMMISSIONER IN CONTESTED CASES. 
 14o. Ill interference cases parties have the same rem- 
 edy by appeal to the examiners in chief and to the Com- 
 missioner as in ex parte cases. 
 
 144. Appeals in interference cases mnst be accom- 
 panied by brief statements of the reasons therefor. Par- 
 ties will be required to file six copies of printed briefs of 
 their arguments, the appellant ten days before the hear- 
 ing and the appellee three days. (See Rule 163.) 
 
 145. The appellant shall have the right to make the 
 opening and closing arguments, unless it shall be other- 
 wise ordered by the tribunal having jurisdiction of the 
 case. 
 
 146. Contested cases will be regarded as pending be- 
 fore a tribunal until the limit of appeal, which must be 
 fixed, has expired, or until some action has been had 
 which waives the appeal or carries into effect the decision 
 from which appeal might have been taken. 
 
 RECONSIDERATION OF CASES DECIDED BY FORMER 
 COMMISSIONER. 
 
 147. Cases which have been decided by one Commis- 
 sioner will not be reconsidered by his successor except in 
 accordance with the principles which govern the grant- 
 ing of new trials. 
 
 APPEALS TO THE COURT OF APPEALS OF THE DIS- 
 TRICT OF COLUMBIA. 
 
 148. From the adverse decision of the Commissioner 
 upon the claims of an application and in interference 
 cases, an appeal may be taken to the Court of Appeals 
 of the District of Columbia in the manner prescribed by 
 the rules of that court. (See Appendix, pp. 95-102.) 
 
 149. When an appeal is taken to the Court of Appeals 
 of the District of Columbia, the appellant shall give no- 
 tice thereof to the Commissioner, and file in the Patent 
 
 219
 
 Office, within forty days, exclusive of Sundays and holi- 
 days but including Saturday half holidays, from the date 
 of the decision appealed from, his reasons of appeal spe- 
 cifically set forth in writing. 
 
 150. Pro forma proceedings will not be had in the 
 Patent Office for the purpose of securing to applicants 
 an appeal to the Court of Appeals of the District of Co- 
 lumbia. 
 
 (For forms of appeals and rules of the Court of Ap- 
 peals of the District of Columbia respecting appeals, see 
 Appendix, pp. 95-102.) 
 
 HEARINGS. 
 
 151. Hearings will be had by the Commissioner at 10 
 o'clock a. m., and by the board of examiners in chief at 1 
 o'clock p. m., and by the examiner of interferences upon 
 interlocutory matters at 10 o'clock a. m., and upon final 
 hearings at 11 o'clock a. m., on the day appointed unless 
 some other hour be specifically designated. If either 
 party in a contested case, or the appellant in an ex parte 
 case, appear at the proper time, he will be heard. After 
 the day of hearing, a contested case will not be taken up 
 for oral argument except by consent of all parties. If 
 the engagements of the tribunal having jurisdiction be 
 such as to prevent the case 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. Un- 
 less it shall be otherwise ordered before the hearing be- 
 gins, oral arguments will be limited to one hour for each 
 party in contested cases, and to one-half hour in other 
 cases. After a contested ease has been argued, nothing 
 further relating thereto will be heard unless upon re- 
 quest of the tribunal having jurisdiction of the case : and 
 all interviews for this purpose with parties in interest or 
 their attorneys will be invariably denied. 
 
 152. Hearings in ex parte and contested cases will, as 
 far as is convenient and ]iropor, bo set. advanced, and 
 
 220
 
 adjourned to meet the wishes of the parties and tlieir at- 
 torneys. 
 
 MOTIONS. 
 
 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 (&). Proof of such 
 service must be made before the motion will be enter- 
 tained 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 wdiom the particular case may 
 be pending-. 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 are not applicable shall con- 
 form as nearly as possible, to that of the United States 
 courts in equity proceedings. 
 
 TESTIMONY IN INTERFERENCES AND OTHER CON- 
 TESTED CASES. 
 
 154. The following rules have been established for 
 taking and transmitting testimony in interferences and 
 other contested cases : 
 
 (a) Before the depositions of witnesses shall be taken 
 by either party due notice shall be given to the opposing 
 party, as hereinafter provided, of the time when and 
 place where the depositions will be taken, of the cause or 
 matter in which they are to be used, and of the names 
 and residences of the witnesses to be examined, and the 
 opposing party shall have full opportunity, either in per- 
 son or by attorney, to cross-examine the witnesses. If 
 the opposing party shall attend the examination of wit- 
 nesses not named in the notice, and shall either cross- 
 examine such witnesses or fail to object to their examina- 
 tion, he shall be deemed to have waived his right to object 
 to such examination for want of notice. Neither party 
 shall take testimony in more than one place at the same 
 
 221
 
 time, nor so nearly at the same time that reasonable op- 
 portunity for travel from one place of examination to the 
 other can not be had. 
 
 (b) The notice for taking testimony or for motions 
 must be served (unless otherwise stipulated in an instru- 
 ment in writing filed in the case) upon the attorney of 
 record, if there be one, or, if there be no attorney of rec- 
 ord, upon the adverse party. Reasonable time must be 
 given therein for such adverse party to reach the place 
 of examination. Service of such notice may be made in 
 either of the following ways: (1) By delivering a copy 
 of the notice to the adverse party or his attorney; (2) 
 by leaving a copy at the usual place of business of the 
 adverse party or his attorney with some one in his em- 
 ployment; (3) when such adverse party or his attorney 
 has no usual place of business, by leaving a copy at his 
 residence, with a member of his family over 14 years of 
 age and of discretion; (4) transmission by registered 
 letter; (5) b}" express. "Whenever it shall be satisfactor- 
 ily shown to the Commissioner that neither of the above 
 modes of obtaining or reserving notice is practicable, the 
 notice maj^ be published in the Official Gazette. Such 
 notice shall, with sworn proof of the fact, time, and 
 mode of service thereof, be attached to the deposition or 
 depositions, whether the opposing party shall have cross- 
 examined or not. 
 
 (c) Each witness before testifying shall be duly sworn 
 according to law by the officer before whom his deposi- 
 tion shall be taken. The deposition shall be carefully 
 read o^'er hy the witness, or by the officer to him, and 
 shall then be subscribed by the witness in the presence of 
 the officer. Tlie officer shall annex to the deposition his 
 certificate showing (1) the due administration of the 
 oath by the officer to the witness before the commence- 
 ment of Ills testimony; (2) the name of the person by 
 whom tiie testimony was written out, and the fact that, 
 if not written by the officer, it was written in his prcs- 
 
 222
 
 ence; (3) tlie presence or absence of the adverse party; 
 (4) the phice, day, and hour of commencing and taking 
 the deposition; (5) the reading by, or to, each witness of 
 his deposition before he signs the same ; and (6) the fact 
 tliat the officer was not connected by blood or marriage 
 with either of the parties, nor interested, directly or indi- 
 rectly, in the matter in controversy. The officer shall 
 sign the certificate and affix thereto his seal of office, if 
 he have such seal. He shall then, without delay, securely 
 seal up all the evidence, notices, and paper exhibits, in- 
 scribe upon the envelop a certificate giving the title of 
 the case, the name of each witness, and the date of seal- 
 ing, address the package, and forward the same to the 
 Commissioner of Patents. If the weight or bulk of an 
 exhibit shall exclude it from the envelop, it shall be au- 
 thenticated by the officer and transmitted in a separate 
 package, marked and addressed as above provided. 
 
 (d) If a party shall be unable to take any testimony 
 within the time limited, and desire an extension for such 
 purpose, he must file a motion, accompanied by a state- 
 ment under oath setting forth specifically the reason why 
 such testimony has not been taken, and distinctly aver- 
 ring that such motion is made in good faith, and not for 
 the purpose of delay. If either party shall be unable to 
 procure the testimony of a witness or witnesses within 
 the time limited, and desire an extension for such pur- 
 pose, he must file a motion, accompanied bj^ a statement 
 under oath setting forth the cause of such inability, the 
 name or names of such witness or witnesses, the facts 
 expected to be proved by such witness or witnesses, the 
 steps which have beeji taken to procure such testimony, 
 and the dates on which efforts have been made to procure 
 it. (See Rule 153.) 
 
 (e) Upon notice given to the opposite party before the 
 closing of the testimony, any official record, and any spe- 
 cial matter contained in a printed publication, if com- 
 
 223
 
 petent evidence and pertinent to the issue, may be used 
 as evidence at the hearing. 
 
 (/) All depositions which are taken must be duly filed 
 in the Patent Office. On refusal to file, the otfice at its 
 discretion will not further hear or consider the contest- 
 ant with whom the refusal lies ; and the office may, at 
 its discretion, receive and consider a copy of the withheld 
 deposition, attested by such evidence as is procurable. 
 
 155. The pages of each deposition must be numbered 
 consecutiveh', and the name of the witness plainly and 
 conspicuously written at the top of each page. The testi- 
 mony must be written upon legal cap or foolscap paper, 
 with a wide margin on the left-hand side of the page, 
 and with the writing on one side onlj' of the sheet. 
 
 156. The testimony will be taken in answer to inter- 
 rogatories, with the questions and answers committed to 
 writing in their regular order" by the officer, or, in his 
 presence, b}^ some person not interestecl in the case either 
 as a party thereto or as attorney. But with the written 
 consent of the parties the testimony ma.y be taken sten- 
 ographically, and the deposition may be written out by 
 other persons in the presence of the officer. 
 
 Where testimony is taken stenographically, a long- 
 hand or typewritten cop.y shall be read to the witness, or 
 read over by him, as soon as it can be made, and shall be 
 signed by him as provided in paragraph 3 of Rule 154. 
 No officer who is connected by blood or marriage with 
 either of the parties, or interested, directly or indirectly, 
 in the matter in controversy, either as counsel, attorney, 
 agent, or otherwise, is comjietent to take depositions, un- 
 less with tlie written consent of all the parties. 
 
 157. Upon motion duly made and granted (see Rule 
 153) testimony taken in an interference proceeding may 
 bo used in any otlier or subse((uent interference proceed- 
 ing, so far as relevant and material, subject, however, to 
 the right of any contesting party to recall witnesses 
 
 224
 
 whose depositions have been taken, and to take other tes- 
 timony in rebuttal of the depositions. 
 
 158. Upon motion duly made and granted (see Rule 
 153) testimony may be taken in foreign countries, upon 
 complying with the following requirements : 
 
 {a) The motion must designate a place for the exam- 
 ination of the witnesses at which an officer duly (Qualified 
 to take testimony under the laws of the United States in 
 a foreign country shall reside, and it must be accom- 
 panied by a statement under oath that the motion is 
 made in good faith, and not for purposes of delay or of 
 vexing or harassing any party to the case; it must also 
 set forth the names of the witnesses, the particular facts 
 to which it is expected each will testify, and the grounds 
 on which is based the belief that each will so testify. 
 
 (&) It must appear that the testimony desired is ma- 
 terial and competent, and that it can not be taken in this 
 country at all, or can not be taken here without hardship 
 and injury to the moving party greatly exceeding that to 
 which the opposite party will be exposed by the taking of 
 such testimony'' abroad. 
 
 (c) Upon the granting of such motion, a time will be 
 set within which the moving party shall file in duplicate 
 the interrogatories to be propounded to each witness, and 
 serve a copy of the same upon each adverse party, who 
 may, within a designated time, file, in duplicate, cross- 
 interrogatories. Objections to any of the interrogatories 
 or cross-interrogatories may be filed at any time before 
 the depositions are taken, and such objections will be 
 considered and determined upon the hearing of the case. 
 
 {d) As soon as the interrogatories and cross-interroga- 
 tories are decided to be in proper form, the Commis- 
 sioner will cause them to be forwarded to the proper of- 
 ficer, with the request that, upon payment of, or satis- 
 factory security for, his official fees, he notify the wit- 
 nesses named to appear before him within a designated 
 time and make answer thereto under oath; and that he 
 17 225
 
 reduce their answers to writing, aud transmit the same, 
 under his official seal and signature, to the Commis- 
 sioner of Patents, with the certificate prescribed in Rule 
 154 (c). 
 
 (e) By stipulation of the parties the requirements of 
 paragraph (c) as to written interrogatories and cross- 
 interrogatories may be dispensed with, and the testimony 
 may be taken before the proper officer upon oral inter- 
 rogatories by the parties or their agents. 
 
 (/) Unless false swearing in the gi^'ing of such testi- 
 mony before the officer taking it shall be punishable as 
 perjury under the laws of the foreign state where it shall 
 be taken, it will not stand on the same footing in the 
 Patent Office as testimony duly taken in the United 
 States ; but its weight in each case will be determined by 
 the tribunal having jurisdiction of such case. 
 
 159. E^'idence touching the matter at issue will not be 
 considered on the hearing which shall not have been 
 taken and filed in compliance with these rules. But no- 
 tice will not be taken of merely formal or technical ob- 
 jections which shall not appear to have wrought a sub- 
 stantial injury to the party raising them ; and in case of 
 such injury it must be made to appear that, as soon as 
 the party became aware of the ground of objection, he 
 gave notice thereof to the office, and also to the opposite 
 party, informing him at the same time that, unless it be 
 removed, he (the objector) will urge his objection at the 
 hearing. This rule is not to be so construed as to modify 
 established rules of evidence, which will be applied strict- 
 ly in all practice before the office. 
 
 160. The law requires the clerks of the various courts 
 of the United States to issue subpoenas to secure the at- 
 tendance of witnesses whose depositions are desired as 
 evidence in contested ca.ses in the Patent Office. 
 
 101. After testimony is filed in the office it may be 
 inspected by any party to the case, but it can not be 
 witlidrawn for the purpo.se of printing. It may be print- 
 
 22C)
 
 ed by some one speeially desif^iiated by the office for that 
 purpose, under proper restrictions. 
 
 162. Thirty-one or more printed copies of the testi- 
 mony must be furnished — five for the use of the office, 
 one for each of the opposing parties, and twenty -five for 
 the Court of Appeals of the District of Columbia, should 
 appeal be taken. If no appeal be taken, the twenty -five 
 copies will be returned to the party filing them. The 
 preliminary statement required by Rule 110 must be 
 printed as a part of the record. These copies of the rec- 
 ord of the junior party's testimony must be filed not 
 less than forty daj s before the day of final hearing, and 
 in the case of the senior party not less than twenty days. 
 The}'' will be of the same size, both page and print, as the 
 Rules of Practice, with the names of the witnesses at the 
 top of the pages over their testimony, and will contain 
 indexes with the names of all witnesses and reference 
 to the pages where copies of papers and documents in- 
 troduced as exhibits are shown. 
 
 When it shall appear, on motion duly made and by 
 satisfactory proof, that a party, by reason of poverty, is 
 unable to print his testimony, the printing may be dis- 
 pensed with; but in such case typewritten copies must 
 be furnished — one for the office and one for each adverse 
 party. Printing of the testimony can not be dispensed 
 with upon the stipulation of the parties without the ap- 
 proval of the Commissioner. 
 
 BRIEFS. 
 
 163. Briefs at final hearing and on appeals from final 
 decisions in contested cases shall be submitted in printed 
 form and shall be of the same size and the same as to 
 page and print as the printed copies of testimony. But 
 in case satisfactory reason therefor is shown, typewritten 
 briefs may be submitted. Six copies of the briefs at final 
 hearing shall be filed three days before the hearing. 
 Briefs on appeals shall be filed as provided in Rule 144. 
 
 227
 
 At interlocutory hearings and on appeal from interloc- 
 utory decisions typewritten briefs may be used, and such 
 briefs may be filed at or before the hearing. By stipula- 
 tion of the parties or by order of the tribunal before 
 whom the hearing is had briefs may be filed otherwise 
 than as here prescribed. 
 
 ISSUE. 
 
 164. If, on examination, it shall appear that the appli- 
 cant is justly entitled to a jDateut under the law, a notice 
 of allowance will be sent him or his attorney, calling for 
 the payment of the final fee within six months from the 
 date of such notice of allowance, upon the receipt of 
 which within the time fixed by law the patent will be 
 prepared for issue. (See Rules 167, 194.) 
 
 165. After notice of the allowance of an application is 
 given, the case will not be withdrawn from issue except 
 by approval of the Commissioner, and if withdrawn for 
 further action on the part of the office a new notice of 
 allowance will be given. When the final fee has been 
 paid upon an application for letters patent, and the case 
 has received its date and number, it will not be with- 
 drawn from issue on account of any mistake or change 
 of purpose of the applicant or his attorney, nor for the 
 purpose of enabling the inventor to procure a foreign 
 patent, nor for any other reasons except mistake on the 
 part of the office, or because of fraud, or illegality in the 
 application, or for interference. (See Rule 78.) 
 
 166. Whenever the Commissioner shall direct the with- 
 drawal of an application from issue on request of an ap- 
 plicant for reasons not prohibited by Rule 165, this with- 
 drawal will not operate to stay the period of one year 
 running against the application, which begins to attach 
 fi-din the date of the notice of allowance. 
 
 DATE, DURATION, AND FORM OF PATENTS. 
 
 167. Every j)atent sliall issue within a period of three 
 months from the date of the payment of the final fee, 
 
 228
 
 which fee shall he paid not later than six months from 
 the time a1 wiiieh the application was passed and allowed 
 and notice thereof was sent to the applicant or his agent; 
 and if the final fee be not paid within that period the 
 patent shall be withlield. (See Rule 175.) In the ab- 
 sence of request to suspend issue the patent will issue in 
 regular course. The issue closes weekly on Thursday, 
 and the patents bear date as of the fourtli Tuesday there- 
 after. 
 
 A patent will not be antedated. 
 
 168. Every patent will contain a short title of the in- 
 vention or discovery indicating its nature and object, and 
 a grant to the patentee, his heirs and assigns, for the 
 term of seventeen years, of the exclusive right to make, 
 use, and vend the invention or discovery throughout the 
 United States and the Territories thereof. The duration 
 of a design patent may be for the term of three and one- 
 half, seven, or fourteen years, as provided in Rule 80. 
 A copy of the specifications and drawings will be an- 
 nexed to the patent and form part thereof. 
 
 DELIVERY. 
 
 169. The patent will be delivered or mailed on the day 
 of its date to the attorney of record, if there be one ; or, 
 if the attorney so request, to the patentee or assignee of 
 an interest therein; or, if there be no attorney, to the 
 patentee or to the assignee of the entire interest, if he so 
 request. 
 
 CORRECTION OF ERRORS IN LETTERS PATENT. 
 
 170. Whenever a mistake, incurred through the fault 
 of the office, is clearly disclosed by the records or files of 
 the office, a certificate, stating the fact and nature of such 
 mistake, signed by the Commissioner of Patents, and 
 sealed with the seal of the Patent OlSce, will, at the re- 
 quest of the patentee or his assignee, be indorsed without 
 charge upon the letters patent, and recorded in the rec- 
 
 229
 
 ords of patents, and a printed copy thereof attached to 
 each printed copy of the specification and drawing. 
 
 Whenever a mistake, incurred through the fault of 
 the office, constitutes a sufficient legal ground for a re- 
 issue, the reissue will be made, for the correction of such 
 mistake only, without charge of office fees, at the request 
 of the patentee. 
 
 Mistakes not incurred through the fault of the office, 
 and not affording legal grounds for reissues, will not be 
 corrected after the delivery of the letters patent to the 
 patentee or his agent. 
 
 Changes or corrections will not be made in letters pat- 
 ent after the delivery thereof to the patentee or his at- 
 torney, except as above provided. 
 
 ABANDONED, FORFEITED, REVIVED, AND RENEWED 
 APPLICATIONS. 
 
 171. An abandoned application is one in which all the 
 essential parts have not been filed so that it is completed 
 and prepared for examination within a period of one 
 year, or which the applicant has failed to prosecute with- 
 in one year after any action therein of which notice has 
 been duly given (see Rules 31 and 77), or which the ap- 
 plicant has expressly abandoned by filing in the office a 
 written declaration of abandonment, signed by himself 
 and assignee, if any, identifying his application by title 
 of invention, serial number, and date of filing. (See 
 Rule 60.) 
 
 Prosecution of an application to save it from abandon- 
 ment must include such proper action as the condition 
 of the case may require. The admission of an amend- 
 ment not responsive to the last official action, or refusal 
 to admit the same, and any proceedings relative thereto, 
 sluill not operate to save tiie application from abandon- 
 iiiciil under section 4894 of the Revised Statutes. 
 
 172. Jiefore an ai)])lication abandoned by failure to 
 complete or prosecute can be revived as a pending appli- 
 
 230
 
 cation it must be shown to the satisfaction of the Com- 
 missioner that the dehiy was nnavoidahle. 
 
 173. Wlien a new application is fihMl in place of an 
 abandoned or rejected application, a new petition, speci- 
 fication, oath, and fee will be required ; but the old draw- 
 ing, if suitable, may be used upon the filing of suitable 
 permanent photographic copies thereof. 
 
 174. A forfeited application is one upon which a pat- 
 ent has been withheld for failure to pay the final fee 
 within the prescribed time. (See Rule 167.) 
 
 175. When the patent has been withheld by reason of 
 nonpayment of the final fee, any person, whether in- 
 ventor or assignee, who has an interest in the invention 
 for which the patent was ordered to issue may file a 
 renewal of the application for the same invention ; but 
 any renewal application must be made within two years 
 after the allowance of the original application. Upon 
 the hearing of the new application abandonment will be 
 considered as a question of fact. 
 
 176. In a renewal the oath, petition, specification, 
 drawing, and model of the original application may be 
 used ; but a new fee will be required. The renewal ap- 
 plication will not be regarded for all purposes as a con- 
 tinuation of the original one, but must bear date from 
 the time of renewal and be subject to examination like 
 an original application. 
 
 ' 177. Forfeited and abandoned applications will not be 
 cited as references. 
 
 178. Notice of the filing of subsequent applications will 
 not be given to applicants while their cases remain for- 
 feited. 
 
 179. Copies of the files of forfeited and abandoned ap- 
 plications may be furnished when ordered by the Com- 
 missioner. The requests for such copies must be pre- 
 sented in the form of a petition properly verified as to 
 all matters not appearing of record in the Patent Office. 
 (See Form 35.) 
 
 231
 
 EXTENSIONS. 
 
 180. Patents can not be extended except by act of 
 Congress. 
 
 DISCLAIMERS. 
 
 181. Whenever, through inadvertence, accident, or 
 mistake, and without any fraudulent or deceptive inten- 
 tion, a patentee has claimed as his invention or discovery 
 more than he had a right to claim as new, his patent will 
 be valid for all that part which is truly and justly his 
 own, provided the same is a material or substantial part 
 of the thing patented ; and any such patentee, his heirs 
 or assigns, whether of the w^hole or any sectional interest 
 therein, may, on payment of the fee required by law 
 ($10), make disclaimer of such parts of the thing pat- 
 ented as he or they shall not choose to claim or to hold 
 by virtue of the patent or assignment, stating therein the 
 extent of his interest in such patent. Such disclaimer 
 shall be in writing, attested by one or more witnesses, 
 and recorded in the Patent Office ; and it shall thereafter 
 be considered as part of the original specification to the 
 extent of the interest possessed by the claimant and by 
 those claiming under him after the record thereof. But 
 no such disclaimer shall affect any action pending at the 
 time of filing the same, except as to the question of un- 
 reasonable neglect or delaj' in filing it. 
 
 182. The statutory disclaimers treated of in Rule 181 
 are to be distinguished from those which are embodied 
 in original or reissue applications, as first filed or subse- 
 (iuentl\- amended, referring to matter shown or described, 
 but to wliicli the dischiiniant does not choose to claim 
 title, and also from those made to avoid the continuance 
 of an interference. The disehiimers falling within this 
 present rub' must be signed by the applicant in person 
 and refpiire no fee. (See Rule 107. For forms of dis- 
 claimers see Appendix, Forms 28 and 29.) 
 
 232
 
 ASSIGNMENTS. 
 
 183. Every i)aten1 or ;iiiy interest thei'eiii is assignable 
 in law by an iiistrinnent in vvritiiifi'; and the patentee or 
 his assigns or legal representatives may, in like manner, 
 grant and convey an exclusive right under the patent to 
 the whole or any specified part of the United States. 
 
 184. Interest in patents may be vested in assignees, in 
 grantees of exclusive territorial rights, in mortgagees, 
 and in licensees. 
 
 (a) An assignee is a transferee of the whole interest 
 of the original patent or of an undivided part of such 
 whole interest, extending to every portion of the United 
 States. The assignment must be written or printed and 
 duly signed. 
 
 (6) A grantee acquires by the grant the exclusive 
 right, under the patent, to make, use, and vend, and to 
 grant to others the right to make, use, and vend, the thing- 
 patented within and throughout some specified part of 
 the United States, excluding the patentee therefrom. 
 The grant must be written or printed and be duly signed. 
 
 (c) A mortgage must be written or printed and be 
 duly signed. 
 
 (d) A licensee takes an interest less than or dififerent 
 from either of the others. A license may be oral, writ- 
 ten, or printed, and if written or printed, must be duly 
 signed. 
 
 185. An assignment, grant, or conveyance of a patent 
 will be void as against any subsequent purchaser or 
 mortgagee for a valuable consideration without notice 
 unless recorded in the Patent Office within three months 
 from the date thereof. 
 
 If any assignment, grant, or conveyance of any patent 
 shall be acknowledged before any notary public of the 
 several States or Territories or the District of Columbia, 
 or any commissioner of the United States circuit court, 
 or before any secretary of legation or consular officer au- 
 thorized to administer oaths or perform notarial acts 
 
 233
 
 under section 1750 of the Revised Statutes, the certificate 
 of such acknowledgment, under the hand and official seal 
 of such notary or other officer, shall be prima facie evi- 
 dence of the execution of such assignment or convej'ance. 
 
 186. No instrument will be recorded which is not in 
 the English language and which does not, in the judg- 
 ment of the Commissioner, amount to an assignment, 
 grant, mortgage, lien, incumbrance, or license, or which 
 does not affect the title of the patent or invention to 
 which it relates. Such instrument should identify the 
 patent by date and number ; or, if the invention be un- 
 patented, the name of the inventor, the serial number, 
 and date of the application should be stated. 
 
 187. Assignments M^hich are made conditional on the 
 performance of certain stipulations, as the payment of 
 money, if recorded in the office are regarded as absolute 
 assignments until canceled with the written consent of 
 both parties or by the decree of a competent court. The 
 office has no means for determining whether such condi- 
 tions have been fulfilled. 
 
 188. In every case where it is desired that the patent 
 issue to an assignee, the assignment must be recorded in 
 the Patent Office at a date not later than the day on 
 which the final fee is paid. (See Rule 26.) The date of 
 the record is the date of the receipt of the assignment at 
 the office. 
 
 189. The receipt of assignments is generally acknowl- 
 edged by the office. They are recorded in regular order 
 as promptly as possible, and then transmitted to the per- 
 sons entitled to them. (For form of assignment, see Ap- 
 pendix, forms 38-43.) 
 
 OFFICE FEES. 
 
 190. Nearly all the fees payable to the Patent Office 
 are positively required by law to be paid in advance — 
 that is, upon making application for any action by the 
 office fof wliicli a fee is payable. For the sake of uni- 
 
 234
 
 formity and eonvenience, the remaining fees will be re- 
 ({uired to be paid in tlie same manner. 
 
 191. The following is the schedule of fees and of prices 
 of publications of the Patent Office : 
 
 On filiiif^ eacli origiiuil ajiiilic-atioii for a [lateiii, cxeei)! in 
 
 (leHijiii cases $1;").00 
 
 On issning ea^-li original patent, except in design cases .... 20.00 
 In design cases: 
 
 For 3 years and (i inontlis 10 . 00 
 
 For 7 years 15 . 00 
 
 For 14 years 30 . 00 
 
 On every application for the reissue of a })atent 30.00 
 
 On filing each disclaimer 10.00 
 
 On an appeal for the first time from the Primary Exam- 
 iner to the Examiners in Chief 10.00 
 
 On ever}' appeal from the Examiners in Chief to the Com- 
 missioner 20.00 
 
 For certified copies of patents if in print : 
 
 For specification and dra\Ying, per copy 05 
 
 For the certificate 25 
 
 For the grant 50 
 
 For certifying to a duplicate of a model 50 
 
 For manuscript copies of records, for everj' 100 words or 
 
 fraction thereof 10 
 
 If certified, for the certificate additional 25 
 
 For 20-coupon orders, each coupon good for one cojiy of a 
 printed specification and drawing, and receivable in pay- 
 ment for photographic prints 1 . 00 
 
 For 100 coupons in stub book 5 . 00 
 
 For uncertified copies of the specifications and accompany- 
 ing dr.awings of patents, if in print, each, 10 
 
 For the drawings, if in print 05 
 
 For copies of drawings not in print, the I'casonable cost of 
 
 making them. 
 For photo prints of drawings, for each sheet of drawings: 
 
 Size 10 by 15 inches, per copy 25 
 
 Size S by 12i/o inches, per copy 15 
 
 For recording every assignment, agreement, power of attor- 
 ney, or other paper, of 300 words or under 1.00 
 
 Of over 300 and under 1,000 words 2.00 
 
 For each additional 1,000 words or fraction thereof ... 1.00 
 For abstracts of title to patents or inventions: 
 
 For the search, one hour or less, and certificate 1 . 00 
 
 235
 
 Each additional hour or fraction thereof 50 
 
 For each brief from the digest of assignments, of 20U 
 
 words or less 20 
 
 Each additional 100 words or fraction therpof 10 
 
 For searching titles or records, one hour or less 50 
 
 Each additional hour or fraction thereof 50 
 
 For assistance to attorneys in the examination of publica- 
 tions in the Scientific Library, one hour or less 1 . 00 
 
 Each additional hour or fraction thereof 1.00 
 
 For copies of matter in any foreign language, for every 100 
 
 words or a fraction thereof 10 
 
 For translation, for every 100 words or fraction thereof . . .50 
 The Official Gazette: 
 
 Annual subscriptions .$5 . 00 
 
 For postage upon foreign subscriptions, except those 
 from Canada and Mexico, $5 or more as required. 
 Moneys received from foreign subscribers in ex- 
 cess of the subscription price of $5 will be depos- 
 ited to the credit of the subscriber and applied to 
 postage upon the subscription as incurred. All 
 communications respecting the Gazette and all sub- 
 scriptions should be addressed to the Superintend- 
 ent of Documents. Government Printing Office. 
 
 Single numbers 10 
 
 Decision leaflets 05 
 
 Trade-mark supplements 05 
 
 For bound volumes of the Official Gazette: 
 
 Semi-annual volumes, from Jan. 1, 1872, to June 30, 
 
 1883, full sheep binding, per volume 4 . 00 
 
 In half sheep binding, per volume 3 . 50 
 
 Quarterly volumes, from July 1, 1883, to Dec. 31. 1902, 
 
 full sheep binding, per volume 2 . 75 
 
 Bi-monthly volumes, from Jan. 1, 1903, to Mar. 1, 1906, 
 
 full sheep binding, per volume 2. 50 
 
 Bi-monthly volumes, from Mar. 1. ia06, to Jan. 1, 1909, 
 
 tan duck binding 2 . 50 
 
 Monthly volumes, from Jan 1. 1909. tan duck binding, 
 
 per volume 2 . 50 
 
 >fonthly volumes, unbound, with title page, digest, and 
 
 index, per volume 50 
 
 For the annual index, from Jan.. 1872, to Jan. 1, 1906, full 
 
 law binding, per volume 2 . 00 
 
 In paper covers, per volume 1.00 
 
 For the annual index from Jan. 1, 1906, buckram binding . 2.00 
 In paper covers, per volume 1 . 00 
 
 236
 
 For the ficnoral index — n list of inventions jiatented from 
 
 1790 to 1873 — tiiree volumes, full law binding, per set 10.00 
 Tor the index from 1790 to 1836 — one volume, full law bind- 
 ing 5.00 
 
 For the lilirarv edition, monthly volumes to Jan. 1, 1906, 
 containing the spoi'ifications and photolithographed copies 
 of the drawings of all patents issued during the month, 
 
 certified, bound in full sheep, per volume 5.00 
 
 In half sheet, to Jan. 1, 190G, per volume 3.00 
 
 For the library edition, monthly volumes from Jan. 1, 1906, 
 
 to June 30, 1912, tan duck binding 5. 00 
 
 For the index to patents relating to electricity, granted by 
 the United States prior to June 30, 1882, one volume, 250 
 
 pages, bound 5 . 00 
 
 ill paper covers 3 . 00 
 
 Annual appendixes for each fiscal year subsequent to June 
 
 30, 1882, paper covers 1.50 
 
 For Commissioner's decisions: 
 
 For 1869, 1870, and 1871, one volume, full law binding. 2.00 
 For 1872, 1873, and 1874, one volume, full law binding. 2.00 
 For 1S75 and 1876, one volume, with decisions of United 
 
 States courts in patent eases, full law binding 2.00 
 
 In paper covers 1.00 
 
 Annual volumes with decisions of United States courts, for 
 
 1877 to 1906, full law binding, per volume 2.00 
 
 In paper covers 1 . 00 
 
 Subsequent annual volumes, buckram binding 2.00 
 
 In paper covers 1 . 00 
 
 192. An order for a copy of an assignment must give 
 the liber and page of the record, as well as the name of 
 the inventor ; otherwise an extra charge will be made 
 for the time consumed in making any search for such as- 
 signment. 
 
 193. Persons will not be allowed to make copies or 
 tracings from the files or records of the office. Such 
 copies will be furnished, when ordered, at the rates al- 
 ready specified. 
 
 194. All payments of money required for office fees 
 must be made in specie, Treasury notes, national-bank 
 notes, certificates of deposit, post-office money orders, or 
 certified checks. Mone}- orders and checks should be 
 
 237
 
 made payable to the ' ' Commissioner of Patents. ' ' Pay- 
 ment may also be made to the Treasurer, or to any of the 
 assistant treasurers of the United States, or to any of the 
 depositaries, national banks, or receivers of public 
 money, designated by the Secretary of the Treasury for 
 that purpose, who will issue a certifieate of deposit in 
 triplicate and will forward the original and the duplicate 
 certificates to the Secretar^^ of the Treasury and the Com- 
 missioner of Patents, respectively, and will give the trip- 
 licate certificate to the depositor. Money sent by mail to 
 the Patent Office will be at the risk of the sender. Let- 
 ters containing money should be registered. In no case 
 should money be sent with models. 
 
 REPAYMENT OF MONEY. 
 
 195. Money paid by actual mistake, such as a payment 
 in excess, or when not required by law, or by neglect or 
 misinformation on the part of the office, will be refund- 
 ed; but a mere change of purpose after the payment of 
 money, as when a party desires to withdraw his applica- 
 tion for a patent or for the registration of a trade-mark, 
 or to withdraw an appeal, will not entitle a party to de- 
 mand such a return. 
 
 PUBLICATIONS. 
 
 196. The Official Gazette, a weekly publication which 
 has been issued since 1872, takes the place of the old 
 Patent Office Report. It contains claims of all patents 
 issued, including reissues and designs, with portions of 
 the drawings selected to illustrate the inventions claimed, 
 illustrations of trade-marks published, and lists of trade- 
 marks, prints, and labels registered. It also contains de- 
 cisions rendered by the courts in patent cases and by the 
 Commissioner of Patents, and other special matters of 
 interest to inventors. 
 
 The Gazette is furnished to subscribers at the rate of 
 $5 per annum. When sent abroad, an additional charge 
 
 238
 
 is made for the pa^inent of postage. Single copies are 
 furnished for ten cents. All orders and remittances for 
 the Gazette should be sent to the Superintendent of Doc- 
 uments, Government Printing Office, Washington, D. C. 
 The Gazette is issued in monthly volumes, with a title 
 page and index to each volume. An index is published 
 annually, which is sent to all subscribers without addi- 
 tional cost. 
 
 On June 30, 1912, the publication of the monthly li- 
 brary edition, issued since 1872, containing the full spec- 
 ifications and drawings of all i^atents granted during the 
 previous month, was suspended. 
 
 LIBRARY REGULATIONS. 
 
 197. OiBcers of the bureau and members of the exam- 
 ining corps only are allowed to enter the alcoves or take 
 books from the scientific library. 
 
 Books taken from this library must be entered in a 
 register kept for the purpose, and returned on the call 
 of the librarian. They must not be taken from the build- 
 ing except by permission of the Commissioner. 
 
 An}' book lost or defaced must be replaced by a new 
 copy. 
 
 Patentees and others doing business with the office can 
 examine the books only in the library hall. 
 
 Translations will be made only for official use. 
 
 Copies or tracings from works in the library will be 
 furnished by the office at the usual rates. 
 
 AMENDMENTS OF THE RULES. 
 
 198. All amendments of the foregoing rules will be 
 published in the Official Gazette. 
 
 QUESTIONS NOT SPECIFICALLY PROVIDED FOR. 
 
 199. All cases not specifically defined and provided for 
 in these rules will be decided in accordance with the 
 merits of each case under the authority of the Commis- 
 
 239
 
 siouer, and such decision will be communicated to the 
 interested parties in writing. 
 
 200. Questions arising in applications filed prior to 
 January 1, 1898, where these rules do not apply, shall be 
 governed by the rules of June 18, 1897. 
 
 Thomas Ewing, 
 Commissioner of Patents. 
 
 Department of the Interior, 
 
 December 22, 1915. 
 
 Approved to take effect January 1, 1916. 
 
 Bo SW'EENEY, 
 
 Assistant Secretary. 
 
 240
 
 APPENDIX OF FORMS. 
 
 PETITIONS. 
 1. By a Sole Inventor. 
 
 To the Conimissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , prays that letters patent may be 
 
 granted to him for the improvement in , set forth 
 
 in the annexed specification. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 2. By Joint Inventors. 
 
 To the Co)}imissio)ier of Patents: 
 
 Your petitioners, and , 
 
 citizens of the United States and residents, respectively, 
 
 of , in the county of and State of , 
 
 and of , in the county of and State of 
 
 (or subjects, etc.), whose post otfice addresses 
 
 are, respectively, and , pray that letters 
 
 patent may be granted to them, as joint inventors, for 
 
 the improvement in •., set forth in the annexed 
 
 specification. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 241
 
 3. By An Inventor, for Himself and Assignee. 
 
 To the Commissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , prays that letters patent may be 
 
 granted to himself and , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of , whose post office address is , 
 
 as his assignee, for the improvement in , set forth 
 
 in the annexed specification. 
 
 Signed at , in the coiuity of and State 
 
 of , this .... day of , 19 . . 
 
 4. Petition With Power of Attorney. 
 To the Comniissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , prays that letters patent may be 
 
 granted to him for tlie improvement in , set forth 
 
 in the annexed specification ; and he hereby appoints 
 
 , of , State of , his attorney, with 
 
 full power of substitution and revocation, to prosecute 
 this application, to make alterations and amendments 
 therein, to receive the patent, and to transact all busi- 
 ness in the Patent Office connected therewith. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 5. By An Administrator. 
 
 7V^ the Comnilssloner of Pate)its: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the eount.y of 
 
 and State of (or subject, etc.), whose post office 
 
 242
 
 address is administrator of the estate of , 
 
 late a citizen of , deceased (as by reference to the 
 
 duly certified copy of letters of administration, hereto 
 annexed, will more fully appear), prays that letters pat- 
 ent may be granted to him for the invention of the said 
 (improvement, in ), set forth in the an- 
 nexed specification. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 Administrator, etc. 
 
 6. By An Executor. 
 
 To the Commissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , executor of the last will and testament 
 
 of , late a citizen of , deceased ( as by ref- 
 erence to the duly certified copy of letters testamentary, 
 hereto annexed, will more fully appear), prays that let- 
 ters patent may be granted to him for the invention of 
 
 the said (improvement in ), set forth in 
 
 the annexed specification. 
 
 Signed at , in the county of and State 
 
 of this .... dav of 19 . . 
 
 Executor, etc. 
 
 7. By a Guardian of An Insane Person. 
 
 To the Connnissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the count}^ of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , and who has been appointed guard- 
 ian (or conservator or representative) of (as by 
 
 reference to the duly certified copy of the order of court, 
 
 243
 
 hereto annexed, will more fully appear), prays that let- 
 ters patent may be granted to him for the invention of 
 
 the said (improvement in ), set forth in 
 
 the annexed specification. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 J 
 
 Guardian, etc. 
 
 8. For a Reissue (By the Inventor) . 
 
 To the Commissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , prays that he may be allowed to 
 
 surrender the letters patent for an improvement in , 
 
 granted to him , 19.., whereof he is now sole 
 
 owner (or whereof , on whose behalf and with 
 
 whose assent this application is made, is now sole owner, 
 by assignment), and that letters patent may be reissued 
 
 to him (or the said ) for the same invention upon 
 
 the annexed amended specification. With this petition 
 is filed an abstract of title, duly certified, as required in 
 such cases. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 [Assent of assignee to reissue.] 
 
 The undersigned, assignee of the entire (or of an undi- 
 vided) interest in tlie above-mentioned letters patent, 
 hereby assents to the accompanying application. 
 
 244
 
 9. For a Reissue (By the Assignee). 
 
 I To !)(' iis(>(l only wlicii llic imt'iiior is dead.] 
 
 To the Com niissioHcr of /'dicvls: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , pra.ys that he may be allowed to sur- 
 render the letters patent for an improvement in , 
 
 No , g-ranted , 1 9 . . , to , now de- 
 ceased, whereof he is now owner, by assignment of the en- 
 tire interest, and that the letters patent may be reissued 
 to him for the same invention, upon the annexed amend- 
 ed specification. With this petition is filed an abstract 
 of title (or an order for making and filing the same, 
 etc.). 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 10. For Letters Patent for a Design. 
 
 To the Coniniissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States and a resident of , in the county of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , praj^s that letters patent may be 
 
 granted to him for the term of three and one-half years 
 (or seven years or fourteen years) for the new and orig- 
 inal design for , set forth in the annexed specifica- 
 tion. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 11. For a Caveat. 
 
 This form is obsolete ; law relating to caveats repealed 
 by the Act of July 1, 1910. 
 
 245
 
 12. For the Renewal of a Forfeited Application. 
 To the Coniniissioitrr of Paffnts: 
 
 Your petitioner, a citizen of the United 
 
 States and a resident of , in the count}- of 
 
 and State of (or subject, etc.), whose post office 
 
 address is , represents that on , 19 . . , he 
 
 filed an application for letters patent for an improve- 
 ment in , serial number , which application 
 
 was allowed , 19 • • , but that he failed to make pay- 
 ment of the final fee within the time allowed b}' law. 
 He now makes renewed application for letters patent for 
 said invention, and prays that the original specification, 
 oath, drawings, and model may be used as a part of this 
 application. 
 
 Signed at , in the county of and State 
 
 of , this .... day of , 19 . . 
 
 SPECIFICATIONS. 
 13. For an Art or Process. 
 
 To all whom it may concern: 
 
 Be it kno^vn that I, , a citizen of the 
 
 United States, residing at , in the county of 
 
 and State of (or subject, etc.), have invented new 
 
 and useful improvements in processes of extracting gold 
 from its ores, of which the following is a specification : 
 
 This invention relates to the process of extracting gold 
 from its ores by means of a solution of cyanide of an 
 alkali or alkaline earth, and has for its object to render 
 the process more expeditious and considerably cheaper. 
 
 In extracting gold from its ores by means of a solution 
 of cyanide of potassium, sodium, barium, etc., the simul- 
 taneous oxidation of the gold is necessary, and this has 
 hitherto been effected by the action of the air. upon the 
 gokl which is rendered oxidizable thereby by the action 
 f)f tlu' cyanide solution. 
 
 246
 
 Iiislciul of (l('i)('n(liii<i' solely upon llic a<:'(MK-y of the a'w 
 for the <)xi(liziii<>' aetion I eiiii)loy, to assist the oxitUitioii 
 of the p'okl, I'errieyauide of i)otassiuin or another feri-i- 
 (•yaiio<>'eii salt of an alkali or of an eartli alkali in an 
 alkaline solution, liy this means the oxidation, heiiiii' 
 rendered very mueh nior(> enero'etic, is effected with a 
 considerably smaller (jnantity of the solvent. Thus, by 
 the addition of ferricyanide of |)()ta,ssium or other fer-ri- 
 cyanides to the cyanide of potassium solution, as much 
 as eighty per cent, of potassium cyanide may be saved. 
 
 It may be remarked that the ferricyanide of potassium 
 alone M'ill not dissolve the gold and does not therefore 
 come under the category of a solvent hitherto emploj-ed 
 in processes of extraction. It does not therefore render 
 unnecessary the emplo.yment of the simple cyanide as a 
 solvent, but only reduces the amount re(|uired owing to 
 the capacity of the ferricyanide to assist the air to rap- 
 idly oxidize the gold in the presence of the simple salt. 
 Consequently the cyanogen of the latter is not used to 
 form the gold cyanide compound. 
 
 I claim : 
 
 The process of extracting gold from its ores consisting 
 in subjecting the ores to the dissolving aetion of cyanide 
 of potassium in the presence of ferricyanide of potas- 
 sium, substantially as herein described. 
 
 14. For a Machine. 
 
 To all wJiom it may concern: 
 
 Be it known that I, , a citizen of the 
 
 United States, residing at , in the county of 
 
 and State of (or subject, etc.), have invented a 
 
 new and useful meat-chopping machine, of which the fol- 
 lowing is a specification : 
 
 My Invention relates to improvements in meat-chop- 
 ping machines in which vertically reciprocating knives 
 operate in conjunction with a rotating chopping block; 
 
 247
 
 and the objects o£ my improvement are, first, to provide 
 a continuously lubricated bearing for the block; second, 
 to afford facilities for the proper adjustment of the 
 knives independently of each other in respect to the face 
 of the block; and, third, to reduce the friction of the 
 reciprocating- rod which carries the knives. 
 
 I attain these objects by the mechanism illustrated in 
 the accompanying drawing, in which — 
 
 Figure 1 is a vertical section of the entire machine; 
 Fig. 2, a plan view of the machine as it appears after the 
 removal of the chopping block and knives; Fig. 3, a ver- 
 tical section of a part of the machine on the line 3 3, Fig. 
 2; and Fig. 4, a detailed view in perspective of the re- 
 ciprocating crosshead and its knives. 
 
 Similar numerals refer to similar parts throughout the 
 several views. 
 
 The table or plate 1, its legs or standards 2 2, and the 
 hanger 3, secured to the underside of the table, consti- 
 tute the framework of the machine. In the hanger 3 
 turns the shaft 4, carrying a fly-wheel 5, to the hub of 
 which is attached a crank 6, and a crank-pin 7, connected 
 by a link 8, to a pin passing through a crosshead 9, and to 
 the latter is secured a rod 10, having at its upper end a 
 crosshead 11, carrying the adjustable chopping knives, 
 12 12, referred to hereinafter. 
 
 The crosshead 9, reciprocated by the shaft 4, is pro- 
 vided with anti-friction rollers 13 13, adapted to guides 
 14 14, secured to the underside of the table 1, so that the 
 reciprocation of this crosshead may be accompanied with 
 as little friction as possible. 
 
 To the underside of a wooden chopping block 15 is se- 
 cured an annular rib 16, adapted to and bearing in an 
 iiiiiiiilar groove 17 in the table 1. (See Figs. 1 and 2.) 
 This annular groove or channel is not of the same deptl 
 throughout, but connnunicates at one or more points 
 (two in the present instance) with pockets or receptacles 
 ]H, 18 wider tluin the groove and containing supplies of 
 
 248
 
 THIS SPACE MUST BE EIGHT INCHES" 
 
 ^doTTxcy: 
 
 249
 
 oil, in eoiitaet with which the rib 16 rotates, so that th( 
 continuous lubrication of the groove and rib is assured. 
 The rod 10 passes through and is guided by a central 
 stand 10, secured to the ta])le 1, and projecting through 
 a central opening in the chopping block without being in 
 contact therewith, the upper portion of the said stand 
 being contained within a cover 20, which is secured to 
 the block, and which prevents particles of meat from es- 
 caping through the central opening of the same. 
 
 The crosshead 11, previously referred to, and shown in 
 perspective in Fig. 4, is vertically adjustable on the rod 
 10, and can be retained after adjustment by a set-screw 
 21, the upper end of the rod being threaded for the re- 
 ception of nuts 22. which resist the shocks imparted to 
 the crosshead when the knives are brought into ^^olent 
 contact with the meat or the chopping block. 
 
 The knives 12, 12 are adjustable independently of 
 each other and of the said crosshead, so that the coinci- 
 dence of the cutting-edge of each knife with the face of 
 the chopping-block may always be assured. 
 
 I prefer to carry out this feature of my invention in 
 the manner shown in Fig. 4, where it will be seen that two 
 screw-rods 23, 23 rise vertically from the back of each 
 knife and pass through lugs 24, 24 on the cross-head, each 
 rod being furnished with two nuts, one above and the 
 other below the lug through which it passes. The most 
 accurate adjustment of the knives can be effected by the 
 manipulation of these nuts. 
 
 A circular casing 25 is secured to the choppiug-block, 
 so as to form on the same a trough 26 for keeping the 
 meat within proper bounds; and on the edge of the 
 annular rib 16, secured to the bottom of the block, are 
 teeth 27, for receiving those of a pinion 28, which may 
 ])e driven Ijy tlie shaft 4 through the medium of any suit- 
 able system of gearing, that shown in the drawing form- 
 ing no part of my present invention. 
 
 This shaft 4 ma\" be driven by a belt passing round the 
 2r)0
 
 l)ulleys 2!), oi- it may l)e driven by hand from a shaft 30, 
 furnished at one end witli a handle 31, and at the other 
 with a cog-wheel 32, gearing into a pinion on the said 
 shaft 4. 
 
 A phitform 33 may be hinged, as at 34, to one edge of 
 the table 1, to support a vessel in which the chopped meat 
 can be deposited. The means by which it may be sup- 
 ported are shown in full lines, and the most convenient 
 method of disposing of it when not in use is shown in 
 dotted lines, in Fig. 1. 
 
 I am aware that prior to my invention meat-chopping 
 machines have been made with vertically-reciprocating 
 knives operating in conjunction with rotating chopping- 
 blocks. I therefore do not claim such a combination 
 broadly ; but 
 
 I claim : 
 
 1. The combination, in a meat-chopping machine, of a 
 rotary chopping-block having an annular rib, with a 
 table having an annular recess to receive said rib, and 
 a pocket communicating with the said recess, all substan- 
 tially as set forth. 
 
 2. In a meat-chopping machine, the combination of a 
 rotary chopping-block with a reciprocating cross-head 
 carrying knives, each of which is vertically adjustable on 
 the said cross-head independently of the other, substan- 
 tially as described. 
 
 8. A chopping knife having two screw rods projecting 
 perpendicularly from its back and parallel with the sides 
 of the knife. 
 
 4. A meat chopping machine provided with a rod car- 
 rying chopping knives and adapted to be reciprocated, 
 a cross-head secured to said rod, anti-friction rollers 
 mounted on the cross-head, and guides with which the 
 rollers cooperate, substantialh^ as described. 
 
 — 251
 
 15. For a Composition of Matter. 
 
 To all ivhoin it inaij concern: 
 
 Be it known that I, , a citizen of 
 
 I Full name of appHtant.] 
 
 , residing at , in tlie county of 
 
 and State of (or subject of, 
 
 etc.), have invented a new and useful Non-Conducting 
 Plastic Composition, of which the following is a specifica- 
 tion. 
 
 The object of my invention is the production of a plas- 
 tic non-conducting composition or cement to be applied 
 to the surfaces of steam-boilers and steam-pipes and 
 other receptacles and conduits as a lagging for prevent- 
 ing radiation of heat and the permeation of water, and 
 rendering them fireproof. 
 
 My composition consists of a mixture of paper-pulp 
 or other vegetable fibrous material, a powdered mineral 
 filler, such as soapstone or Portland cement, a mineral 
 fibrous material, such as asbestos, and a mineral cement- 
 ing material, such as silicate of sodium or jDotassium 
 (soluble glass). 
 
 In preparing the composition I prefer to use the in- 
 gredients in about the following proportions, viz. fifty 
 pounds of paper-pulp, fifty pounds of soapstone, twenty- 
 five pounds of asbestos, and three quarts of a 33° Baume 
 solution of soluble glass. Good results may be obtained, 
 however, when the ingredients are varied within the fol- 
 lowing limits : vegetable fibrous material, forty to sixty 
 pounds; powdered mineral filler, forty -five to fifty-five 
 pounds; mineral fibrous material, twenty to thirty 
 pounds; soluble glass, two to four (piarts of a 30° Baume 
 to 30° Baume solution. 
 
 The asbestos may in some cases be omitted when a 
 cheaper product is desired, though the composition is not 
 then so efficient for the lagging of surfaces subjected to 
 high temperatures. 
 
 'i'hcsc ingredients are mixed with a (|UJintity of watei 
 252
 
 sufficient to form a paste or mortar of such consistency 
 as to enable it to be plastered over the surface to be pro- 
 tected. It may be applied in one or more coats or layers, 
 in the ordinary manner, according to the nature of the 
 article and the amount of protection required. 
 
 My composition is light, is fireproof, is a very efficient 
 non-conductor of heat, is impervious to water, adheres 
 without cracking when it dries to the surface to which it 
 is applied, and, as a whole, possesses in a high degree all 
 the desired properties of a lagging for steam heated 
 surfaces. 
 
 I claim : 
 
 1. A plastic composition adapted to form a light 
 weight, fireproof, and waterproof lagging for steam 
 heated surfaces, comprising a vegetable fibrous material, 
 a mineral filler in powdered form and a mineral cement- 
 ing substance. 
 
 2. A plastic composition adapted to form a lagging 
 for steam pipes and the like comprising forty to sixty 
 pounds of paper-pulp, forty-five to fifty-five pounds of 
 powdered soapstone, and two to four quarts of a 30° 
 Baume to 35° Baume solution of soluble glass. 
 
 3. A plastic composition consisting of a vegetable fi- 
 brous material, a powdered mineral filler, a mineral 
 fibrous material and a mineral cementing substance sub- 
 stantially as described. 
 
 4. A plastic composition consisting of fifty pounds of 
 paper pulp, fifty pounds of powdered soapstone, twenty- 
 five pounds of asbestos fiber and three quarts of a 33° 
 Baume solution of soluble glass. 
 
 16. For a Design. 
 
 To all ivhoni it may concern: 
 
 Be it known that I, , a citizen of the United 
 
 States, residing at , in the county of , 
 
 and State of (or subject, etc.), have invented 
 
 a new, original, and ornamental Design for Watch- 
 
 253
 
 Cases, of which the following is a specification, reference 
 being had to the accompanying drawing, forming part 
 thereof. 
 
 The figure is a plan view of a watch case, showing my 
 new design. 
 
 I claim: 
 
 The ornamental design for a watch case, as shown. 
 
 17. For a Caveat. 
 
 This form is obsolete ; law relating to caveats repealed 
 by Act of July 1, 1910. 
 
 OATHS. 
 
 18. Oath to Accompany an Application for United States 
 
 Patent. 
 
 ss: 
 
 ,^ the above-named petitioner . . , being 
 
 sworn (or aifirmed), depose. . and say. . that 
 
 citizen . . of ^ and resident . . of ^ , 
 
 that verily believe to be the orig- 
 inal, first, and* inventor . . of the improvement 
 
 in^ described and claimed in the annexed spec- 
 ification ; that do . . not know and do . . not be- 
 lieve that the same was ever known or used before 
 
 invention or discovery thereof, or patented or described 
 
 in any printed publication in any country before 
 
 invention or discovery thereof, or more than two years 
 
 ilf the invi'iUor be dead, the oath will be made by the administrator; 
 if insane, by the guardian, conservator, or legal representative. In 
 cither ease the afliant will declare his belief that the party named as 
 Inventor was the original and first inventor. 
 
 2If the applicant be an alien, state of what foreign country he is a 
 citizen or subject. 
 
 :!Givo residence address in full; as "a resident of in the 
 
 county of and State of " or "of No 
 
 Street, in the city of county of , and State (King- 
 dom, Republic, or Empire) of " 
 
 4"Solc" or "joint." 
 
 cinsert title of invention. 
 
 254
 
 I 
 
 w 
 
 
 Jtcr 
 
 K^^tor-rt 
 
 ^J/- I 
 
 ^ ^'^'^ space must be e(^/it, i/cc/c&s. 
 
 255
 
 prior to this application, or in public use or on sale in 
 the United States for more than two years prior to this 
 application ; that said invention has not been patented in 
 any country foreign to the United States on an applica- 
 tion filed by or legal representatives or as- 
 signs more than twelve months prior to this application ; 
 and that no application for patent on said improvement 
 has been filed by or representatives or as- 
 signs in any country foreign to the United States, ex- 
 cept as follows r*' 
 
 Inventor's full name 
 
 { 
 
 Sworn to and subscribed before me this day of 
 
 ,19.. 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 8 
 
 [Official character.] 
 
 19. Oath to Accompany an Application for United States 
 Patent for Design. 
 
 '- ss: 
 
 / the above-named petitioner . , , being 
 
 sworn (or affirmed), depose. . and say. . that 
 
 citizen . . of- and resident . . of ^ , 
 
 iJName each country in wliich an application has been filed, and in 
 each case give date of filing the same. If no application has been filed, 
 erase the words "except as follows." 
 
 7A11 oaths must bear the signature of the affiant. 
 
 8* * * "When the person before whom the oath or affirmation is 
 made is not provided with a seal, his official character shall be estab- 
 lished by competent evidence, as by a certificate from a clerk of a court 
 of record or other proper officer having a seal." 
 
 A certificate of the official character of a magistrate, stating date of 
 appointment and term of office, may be filed in the Patent Office, which 
 will obviate the necessity of separate certificates in individual cases. 
 
 When the oath is taken abroad before a notary i)ublic. judge, or mag- 
 istrate, his authority should in each instance be proved by a certificate 
 of a diplomatic or consular officer of the I'nitod States. 
 
 ilf the inventor be dead, the oath will be made by the administrator; 
 if insane, by the guardian, conservator, or legal representative. In 
 either case the affiant will declare his belief that the party named as 
 inventor was the original and first inventor. 
 
 2lf the ajiplicant be an alien, slate of what foreign country he is a 
 citizen or subject. 
 
 sGive residence address in full: as "a resident of , in the 
 
 256
 
 that verily believe to be tiie orig- 
 inal, first, and * inventor of the design for '' 
 
 described and claimed in the annexed specifica- 
 tion ; that do . . not know and do . . not believe 
 
 that the same was ever known or used before in- 
 vention thereof, of patented or described in any printed 
 publication in any country before invention there- 
 of, or more than two years prior to this application, or 
 in public use or on sale in the United States for more 
 than two years prior to this application ; that said de- 
 sign has not been patented in any country foreign to the 
 
 United States on an application filed by or 
 
 legal representatives or assigns more than four months 
 prior to this application ; and that no application for 
 
 patent on said design has been filed by or 
 
 representatives or assigns in any country foreign to the 
 United States, except as follows :'' 
 
 Inventor 's full name 
 
 Sworn to and subscribed before me this day of 
 
 ,19.. 
 
 [SEAIi.] ^ 
 
 [Signature of justice or notary.] 
 
 [Offlpial character.] 
 
 county of , and State of " or "of No 
 
 Street, in the city of county of and State (King- 
 dom, Republic, or Empire) of " 
 
 4"Sole" or "joint." 
 
 5Insert title of invention. 
 
 SName each country in which an application has been filed, and in 
 each case give date of filing the same. If no application has been filed, 
 erase the words "except as follows." 
 
 7A11 oaths must bear the signature of the affiant. 
 
 8* * * -'When the person before whom the oath or affirmation is 
 made is not provided with a seal, his official character shall be estab- 
 lished by competent evidence, as by a certificate from a clerk of a court 
 of record or other proper officer having a seal." 
 
 A certificate of the official character of a magistrate, stating date of 
 appointment and term of office, may be filed in the Patent Office, which 
 will obviate the necessity of separate certificates in individual cases. 
 
 When the oath is taken abroad before a notary public, judge, or mag- 
 istrate, his authority should in each instance be proved by a certificate 
 of a diplomatic or consular officer of the United States. - 
 
 19 
 
 257
 
 20. By an Applicant for a Reissue (Inventor). 
 
 [When the original patent is claimed to be inoperative or invalid "by- 
 reason of the patentee claiming as his own invention or discovery more 
 than he had a right to claim as new," this form can be modilied ac- 
 cordingly.] 
 
 SS. 
 
 , the above-named petitioner, being duly 
 
 sworn (or affirmed), deposes and says that he does verily 
 believe himself to be the original, first, and^ in- 
 ventor of the improvement set forth and claimed in the 
 foregoing specification and for which improvement he 
 solicits a patent ; that deponent does not know and does 
 not believe that said improvement was ever before known 
 or used; that deponent is a citizen of the United States 
 
 of America, and resides at , in the county of 
 
 and State of ;- that deponent verily be- 
 lieves that the letters patent referred to in the foregoing 
 petition and specification and herewith surrendered are 
 inoperative (or invalid), for the reason that the specifi- 
 cation thereof is defective ( or insufficient ) , and that such 
 
 defect (or insufficiency) consists particularly in^ 
 
 ; and deponent further says that the errors 
 
 which render such patent so inoperative (or invalid) 
 arose from inadvertence (or accident, or mistake), and 
 without any fraudulent or deceptive intention on the 
 part of deponent ;* that the following is a true specifica- 
 tion of the errors which it is claimed constitute such in- 
 advertence (or accident, or mistake) relied upon:^ 
 
 ; that such errors so particularl}^ 
 
 specified arose (or occurred) as follows :•'" 
 
 Inventor's full name 
 
 ^i 
 
 Subscribed and sworn to before me this day of 
 
 , 19.. 
 
 [seal. J 
 
 [Signature of justice or notary.] 
 [Official character.] 
 
 i"Sole" or "joint." 2UuIo 'Ki. ;;UuIc 87. 4Rule 87 (5). 
 
 258
 
 21. By an Applicant for a Reissue (Assignee). 
 
 [To be used only when the inventor is dead.] 
 
 SS . 
 
 , the above-named petitioner, bei]i<? dnly 
 
 sworn (or atBrmed), deposes and says that he verily be- 
 lieves that the aforesaid letters patent granted to 
 
 are (here follows Form 20, the necessary changes 
 
 being made) ; that the entire title to said letters patent 
 is vested in him ; and that he verily believes the said 
 
 to be the first and original inventor of the 
 
 invention set forth and claimed in the foregoing amended 
 
 specification ; and that the said is now 
 
 deceased. 
 
 Sworn to and subscribed before me this day of 
 
 ,19.. 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 22. Supplemental Oath to Accompany a Claim for Matter 
 Disclosed But Not Claimed in an Original Application. 
 
 SS. 
 
 , whose application for letters patent 
 
 for an improvement in , serial No , was 
 
 filed in the United States Patent Office on or about the 
 day of , 19. ., being duly sworn (or af- 
 firmed), deposes and says that the subject matter of the 
 foregoing amendment was part of his invention, was in- 
 vented before he filed his original application, above 
 identified, for such invention, was not known or used be- 
 fore his invention, was not patented or described in a 
 printed publication in any country more than two years 
 before his application, was not patented in a foreign 
 
 259
 
 country on an application filed by himself or his legal 
 representatives or assigns more than twelve mouths be- 
 fore his application, was not in public use or on sale in 
 this country for more than two years before the date of 
 his application, and has not been abandoned. 
 
 Sworn to and subscribed before me this day of 
 
 ,19.. 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 23. Oath as to the Loss of Letters Patent. 
 
 ss. 
 
 , being duly sworn (or affirmed), de- 
 pose . . and say . . that the letters patent No , 
 
 granted to him, and bearing date on the day of 
 
 , 19. ., have been either lost or destroyed; that 
 
 he has made diligent search for the said letters patent in 
 all places where the same would probably be found, if 
 existing, and that he has not been abfe to find them. 
 
 Subscribed and sworn to before me this day of 
 
 .....-.,19.. 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 24. Oath of Adminsitartor as to the Loss of Letters Patent. 
 
 ss: 
 
 , being duly sworn, depose . . and say . . 
 
 that he is administrator of the estate of , 
 
 deceased, late of , in said county: that the letters 
 
 patent No , granted to said , and 
 
 260
 
 bearing tlate of tlie day of , 1!). ., liavc been 
 
 lost or destroyed, as he verily believes; that he has made 
 diligent search for the said letters patent in all places 
 where the same would probably be found, if existing, and 
 especially among the papt^rs of the decedent, and that he 
 has not been able to find said letters patent. 
 
 Administrator, etc. 
 
 Subscribed and sworn to before me this day of 
 
 19.. 
 
 [Signature of justice or notary.] 
 [Official character.] 
 
 25. Power of Attorney After Application Filed. 
 
 [If the power of attorney be given at any time other than that of 
 making application for letters patent, it will be in substantially the fol- 
 lowing form :] 
 
 To the Commissioner of Patents: 
 
 The undersigned having, on or about the day 
 
 of , 19 — , made application for letters patent for 
 
 an improvement in (serial number ), 
 
 hereby appoints ,^ of , in the county 
 
 of and State of , his attorney, with full 
 
 power of substitution and revocation, to prosecute said 
 application, to make alterations and amendments there- 
 in, to receive the patent, and to transact all business in 
 the Patent Office connected therewith. 
 
 Signed at , in the county of , State of 
 
 , this day of , 19 . . 
 
 26. Revocation of Power of Attorney. 
 
 To the Commissioner of Patents: 
 
 The undersigned having, on or about the day 
 
 of , 19 . . , appointed , of , in 
 
 the count}' of and State of , his attorney to 
 
 ilf the power of attorney be to a firm, the name of each member of 
 the firm must be given in full. 
 
 2G1
 
 prosecute an application for letters patent, which appli- 
 cation was filed on or about the day of , 
 
 19. ., for an improvement in (serial number . . .), 
 
 hereby revokes the poM^er of attorney then given. 
 
 Signed at , in the count}' of and State 
 
 of , this day of , 19 . . 
 
 27. Amendment.^ 
 
 To the Comynissio)icr of Patents: 
 
 In the nuitter of my application for letters patent for 
 
 an improvement in , filed , 19. . (serial 
 
 number ) , I hereby amend my specification as 
 
 follows : 
 
 By striking out all between the and lines, 
 
 inclusive, of page . . ; 
 
 By inserting the words " , " after the 
 
 word " , " in the ..... line of the claim ; 
 
 and 
 
 By striking out the claim and substituting there- 
 for the following : 
 
 Signed at , in the county of , and State 
 
 of 
 
 By ...., 
 
 His Attorney in Fact. 
 
 DISCLAIMERS. 
 28. Disclaimer After Patent. 
 
 To the Commissioner of Patents: 
 
 Your petitioner, , a citizen of the United 
 
 States, residing at , in the county of and 
 
 State of (or subject, etc.), represents that in the 
 
 iln tlu" ijri'paratioii of all animdnicnts a separate paragraph should 
 be- devoted to each distinct erasure or insertion, in order to aid the of- 
 llee in making tlie entry of the amendment into the case to which it 
 pertains. 
 
 262
 
 matter of a certain iiii])r()voinent in , for wliieli 
 
 letters ])atent of the United States No were granted 
 
 to , on the day of , 19 . . , he is 
 
 (here state the exact interest of the disclaimant ; if as- 
 signee, set out liber and page where assignment is re- 
 corded), and that he has reason to believe that through 
 inadvertence (accident or mistake) the specification and 
 claim of said letters patent are too broad, including that 
 of which said patentee was not the first inventor. Your 
 petitioner, therefore, hereby enters this disclaimer to that 
 part of the claim in said specification which is in the fol- 
 lowing words, to wit : 
 
 Signed at , in the county of , and State 
 
 of , this day of , 19 . . 
 
 Witnesses 
 
 29. Disclaimer During" Interference. 
 
 Interference. 
 
 Before the examiner of interfer- 
 
 vs. 
 
 I ences. 
 
 Subject matter : 
 
 To the Commissioner of Patents: 
 
 Sir: In the matter of the interference above noted, 
 under the provisions of and for the purpose set forth 
 in Rule 107, I disclaim (set forth the matter as given in 
 declaration of interference), as I am not the first inven- 
 tor thereof. 
 
 Signed at , in the county of , and State 
 
 of , this dav of , 19 . , 
 
 Witnesses ; 
 
 263
 
 APPEALS AND PETITIONS. 
 30. From a Principal Examiner to the Examiners in Chief. 
 
 To the ConuvissioHcr of Vatcvts: 
 
 Sir: I hereby appeal to the Examiners in Chief from 
 the decision of the Principal Examiner in the matter of 
 my application for letters patent for an improvement in 
 
 , filed , 19 . . , serial number , 
 
 which on the day of , 19. ., was rejected 
 
 the second time. The following' are the points of the de- 
 cision on which the appeal is taken: (Here follows a 
 statement of the points on which the appeal is taken.) 
 
 Signed at , in the county of , and State 
 
 of ....... this day of , 19 . . 
 
 31. From the Examiner in Charge of Interferences to the 
 
 Examiners in Chief. 
 
 To the Commissioner of Patents: 
 
 Sir : I hereb}' appeal to the Examiners in Chief from 
 the decision of the Examiner of Interferences in the mat- 
 ter of the interference between my applications for let- 
 ters patent for improvement in and the letters 
 
 patent of , in which priority of invention was 
 
 awarded to said The following are assigned 
 
 as reasons of appeal: (Here should follow an explicit 
 statement of alleged errors in the decision of the Exam- 
 iner of Interferences.) 
 
 Signed at , in the county of , and State 
 
 of , this day of , 19 . . 
 
 32. From the Examiners in Chief to the Commissioner in 
 
 Ex Parte Cases. 
 To the ('ommissio)i<r of Patents: 
 
 Sir: I hereby appeal to the Commissioner in person 
 from the decision of the Examiners in Chief in the mat- 
 tei- of my applicuition for letters patent for an improve 
 
 264
 
 ineiit ill , filed , 19. ., serial num- 
 ber The f()ll()\viii<i' are assio-ned as reasons of 
 
 appeal: (Here follow the reason as in Form 80.) 
 
 Signed at , in the county of , and State 
 
 of , this day of , 19 . . 
 
 33. From the Examiners in Chief to the Commissioner in 
 
 Interference Cases. 
 To the Commissioner of Patents: 
 
 Sir : T hereby appeal to you in person from the deci- 
 sion of the Examiners in Chief, made , 19. ., in the 
 
 interference between my application for letters patent for 
 
 improvement in and the letters patent of 
 
 , in which priorit.y of invention was award- 
 ed to said The following are assigned 
 
 as reasons of appeal: (Here should follow an explicit 
 statement of the alleged errors in the decision of the 
 Examiners in Chief.) 
 
 Signed at , in the county of , and State 
 
 of , this day of , 19 . . 
 
 34. Petition From a Principal Examiner to the Commis- 
 sioner. 
 
 Application of 
 
 Serial number 
 
 Subject of invention 
 
 To the Commissioner of Patents: 
 
 Your petitioner avers — 
 
 First. That he is the applicant above named. 
 
 Second. That said application was filed on the 
 
 day of , 19 . . . 
 
 Third. That when so filed said application contained. 
 claims. 
 
 Fourth. That ^-our petitioner was informed by office 
 
 265
 
 letter of the , 19. ., (1) that his 
 
 claim was rendered vague and indefinite bj- the emplo}'- 
 
 ment of the words " , " which words should 
 
 be erased; (2) that his claim was met by certain 
 
 references which were given; and (3) that the 
 
 claim was mere surplusage and should be eliminated. 
 
 Fifth. That on the / day of your peti- 
 tioner filed an amendment so eliminating his 
 
 claim, and accompanied such amendment with a com- 
 munication in which he declined to amend such 
 
 claim, and asked for another action thereon. 
 
 Sixth. That your petitioner was then informed by of- 
 fice letter of the day of that the former 
 
 requirement relating to claim would be adhered 
 
 to, and that no action would be had on the merits of 
 either claim until said amendment so required had been 
 made. 
 
 Wherefore your petitioner requests that the Examiner 
 in charge of such application be advised that such amend- 
 ment so required by him to said claim be not in- 
 sisted upon and directed to proceed to examine both said 
 remaining claims upon their merits. 
 
 A hearing of this petition is desired on the day 
 
 of ,19... 
 
 Applicant. 
 , 1 . . . . , 
 
 Attorney for Applicant. 
 
 35. Petition for Copies of Rejected and Abandoned Appli- 
 cations. 
 
 To the Commissioner of Patents: 
 
 The petition of , a resident of , in 
 
 the county of and State of , respectfully 
 
 shows : 
 
 First. That on the day of , 19. ., pat- 
 ent No , issued to one 
 
 266
 
 Second. That noui- petitioner is informed and believes 
 
 that on tlie day of , 19. ., said patentee 
 
 filed in the United States Patent Otfice an application for 
 patent for im])rovement in 
 
 Third. That yonr petitioner verily believes that said 
 application has not been prosecuted during the past two 
 years and upward ; and he also verily believes that the 
 
 last action had therein was on or about the day 
 
 of , 19... 
 
 Fourth. That said application has therefore become 
 and now stands abandoned. 
 
 Fifth. That on the day of , 19 . . , said 
 
 patentee began suit, in the Circuit Court of the United 
 
 States for the district of , against your 
 
 petitioner, which suit is based upon said patent, and the 
 same is now pending and undetermined. 
 
 Sixth. Your petitioner is informed and believes that 
 to enable him to prepare and conduct his defense in such 
 suit it is material and necessary that he be allowed ac- 
 cess to and copies of the files of such abandoned case. 
 
 Seventh. Your petitioner therefore requests that he 
 
 or , in his behalf and as his attorney, be permitted 
 
 to inspect and be furnished copies of all or any portion 
 of such case. 
 
 ! 
 
 Petitioner. 
 
 By , 
 
 His Attorney. 
 
 ss: 
 
 On this day of , 19. ., before me, a no- 
 tary public in and for said county and State, personally 
 
 appeared , the above-named attorney, who, being 
 
 b.y me dul}^ sworn, deposes and says that he has read the 
 foregoing petition and knows its contents, and that the 
 same is true, except as to the matters therein stated on in- 
 
 267
 
 formation or belief, and as to those matters he believes 
 it to be true. 
 
 Notary Puhlic. 
 Note. — A copy of this petition must be served upon the appli- 
 cant named in the abandoned application or upon his attorney of 
 record. 
 
 36. Preliminary Statement of Domestic Inventor. 
 
 [Interference in the United States 
 
 Patent Office. 
 Preliminary statement of 
 
 vs. 
 
 < 
 
 , of , in the county of , and 
 
 State of , being duly sworn (or affirmed), doth 
 
 depose and say that he is a party to the interference de- 
 clared by the Commissioner of Patents , 19. ., be- 
 tween 's application for letters patent, 
 
 filed , 19 . . , serial number , and the patent 
 
 to , granted , 19 • • , numbered , 
 
 for a ; that he conceived the invention set forth 
 
 in the declaration of interference^ on or about the 
 
 da}^ of , 19 . . ; that on or about the day of 
 
 , 19. ., he first made drawings of the invention (if 
 
 he has not made a drawing, then he should say that no 
 drawing of the invention in issue has been made) ; that 
 on the daj^ of , 19 . . , he made the first writ- 
 ten description of the invention (if he has not made a 
 written description of the invention, he should so state) ; 
 
 that on or about the day of , 19 . . , he first 
 
 explained the invention to others ; that he first embodied 
 his invention in a full-size machine, which was completed 
 about the day of , 19. ., and that on the 
 
 Uf tlif i)arty has (lout)ts as to wlietli(>r the matter of his application 
 is projiciiy involved in the issue as declared, then in lieu of the term 
 "the invention set forth in the declaration of interference," he may say 
 "the invention contained in the claims of my application (or patent) 
 declared to be involved in this interference," and should specify such 
 claims hy number. 
 
 268
 
 day of , 19. ., the said machine was first 
 
 successfully operated, in the town of , county of 
 
 , and State of , and that he has since con- 
 tinued to use the same, and that he has manufactured 
 others for use and sale to the following extent, viz (if he 
 has not embodied the invention in a full-size machine, he 
 should so state; and if he has embodied it but has not 
 used it, he should so state). 
 
 [Signature of inventor.] 
 
 Subscribed and sworn to before me this day of 
 
 ,19-.. 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 37. Preliminary Statement of Foreign Inventor. 
 
 , [Interference in United States 
 
 vs. J Patent Office. 
 Preliminarv statement of ... . 
 
 , of London, in the county of Middlesex, 
 
 England, being duly sworn, doth depose and say that he 
 is a party to the interference declared by the Commis- 
 sioner of Patents, , 19. ., between his application 
 
 for patent, filed , 19 . . , serial number ...'..., and 
 
 the patent of , granted , 19 . . , No. 
 
 , for an improvement in ; that he made the 
 
 invention set forth in the declaration of interference,^ 
 being at that time in England ; that patents for such in- 
 vention were applied for and obtained as follows : 
 
 Application filed in Great Britain, , 19. ., pat- 
 ent dated , 19 • • , No ; published the 
 
 day of , 19 . . , and sealed the day of , 
 
 ilf the party has doubts as to whether the matter of his application is 
 properly involved in the issue as declared, then in lieu of the terms "the 
 invention set forth in the declaration of interference," he may say "the 
 invention contained in the claims of my application (or patent) declared 
 to be involved in this interference," and should specify such claims by 
 number. 
 
 269
 
 19. . ; application filed in France , 19. ., patent 
 
 dated , 19 . . , No ; published the 
 
 day of , 19 . . , and sealed the day of , 
 
 19. .. (If a patent has not been obtained in any coun- 
 tiy it should be so stated.) 
 
 That such invention was fully described in a maga- 
 zine published at , on the daj- of , 
 
 19 . . , by , entitled (see page 
 
 ... of such magazine), and in the following newspapers : 
 , of , 19 . . ; , pub- 
 lished at , on , 19 . . . (If the invention w^as 
 
 never described in a printed publication it should be so 
 stated.) 
 
 The knowledge of such invention was introduced into 
 the United States under the following circumstances: 
 
 On , 19 . . , the said wrote a letter to 
 
 , residing at , State of , de- 
 scribing such invention and soliciting his services in pro- 
 curing a patent therefor in the United States. This let- 
 ter, he is informed and believes, was received by the said 
 
 on , 19 . . . Also on 
 
 19. ., he wrote a letter to the firm of , of 
 
 , State of , describing such iiivention and 
 
 requesting their assistance in manufacturing and putting 
 it on the market, which letter, he is informed and be- 
 lieves, was received by them on , 19. .. Such in- 
 vention was manufactured b}' such firm and described in 
 their trade circulars, as he is informed and verily be- 
 lieves, on or about the - day of , 19. .. (If 
 
 the invention has not been introduced into the United 
 States otherwise than by the application papers, it should 
 be so stated, and the date at which such papers were re- 
 ceived in the United States alleged.) 
 
 [Signature ot inventor.] 
 
 270
 
 Subscribed and sworn to before me this day of 
 
 ,19... 
 
 [Signature of justice or notary.] 
 [Official character.] 
 
 ASSIGNMENTS. 
 
 38. Of an Entire Interest in an Invention Before the Issue 
 of Letters Patent. 
 
 Whereas I, , of , county of 
 
 and State of , have invented a certain improve- 
 ment in , for which I am about to make applica- 
 tion for letters patent of the United States ; and whereas 
 
 , of , county of , and State 
 
 of , is desirous of acquiring an interest therein : 
 
 Now, therefore, in consideration of dollars, the 
 
 receipt of which is hereby acknowledged, I, 
 
 , by these presents do sell, assign, and transfer 
 
 unto tlie full and exclusive right to the 
 
 said invention, as described in the specification executed 
 
 b3' me on the day of , 19 . • , preparatory to 
 
 obtaining letters patent of the United States therefor; 
 and I hereby request the Commissioner of Patents to 
 
 issue said letters patent to as the assignee, 
 
 for his interest, for the sole use and behoof of said 
 and his legal representatives. 
 
 Executed day of , 19 . . . 
 
 [seal.] 
 
 In presence of — 
 
 (If assignment, grant, or conveyance be acknowledged as provided for 
 by Rule 185, the certificate will be prima facie evidence of tlie execution 
 of such assignment, grant, or conveyance.) 
 
 271
 
 39. Of the Entire Interest in Letters Patent. 
 
 Whereas I, , of , county of , 
 
 State "of , did obtain letters patent of the United 
 
 States for an improvement in , which letters pat- 
 ent are numbered , and bear date the day 
 
 of , 19. . ; and whereas I am now the sole owner 
 
 of said patent ; and whereas , of , county 
 
 of , and State of , is desirous of acquiring 
 
 the entire interest in the same : 
 
 Now, therefore, in consideration of the sum of 
 
 dollars, the receipt of which is hereby acknowledged, I, 
 
 , by these presents do sell, assign, and 
 
 transfer unto the said , the whole right, 
 
 title, and interest in and to the said letters patent there- 
 for aforesaid ; the same to be held and enjoyed by the 
 
 said , for his own use and behoof, and for 
 
 his legal representatives, to the full end of the term for 
 which said letters patent are granted, as fully and en- 
 tirely as the same would have been held by me had this 
 assignment and sale not been made. 
 
 Executed dav of , 19. .. 
 
 [l. s.] 
 
 In presence of 
 
 (See note under Form 38.) 
 
 40. Of an Undivided Interest in Letters Patent. 
 
 Whereas 1, , of , county of 
 
 , State of , did obtain letters patent of the 
 
 United States for an improvement in , which let- 
 ters patent are numbered , and bear date the 
 
 day of , . . . . ; and whereas , 
 
 of , county of , State of , is desirous 
 
 of acquiring an interest in the same: 
 
 Now, therefore, in consideration of the sum of 
 
 dolhirs, the receipt of which is hei'eby acknowledged, I 
 
 272
 
 , by these presents do sell, assign, and 
 
 transfer unto the said , the undivided one- 
 half part of the whole right, title, and interest in and to 
 the said invention and in and to the letters patent there- 
 for aforesaid ; the said undivided one-half part to be 
 
 held b}^ , for his own use and behoof, and 
 
 his legal representatives, to the full end of the term for 
 which said letters patent are granted, as fully and en- 
 tirely as the same would have been held by me had this 
 assignment and sale not been made. 
 Executed daj^ of , 19 . . . 
 
 [L. S.] 
 
 In presence of — 
 
 (See note under Form 38.) 
 
 41. Territorial Interest After Grant of Patent. 
 
 Whereas I, , of , county of , 
 
 State of , did obtain letters patent of the United 
 
 States for an improvement in , which letters 
 
 patent are numbered , and bear date the 
 
 day of ...,.., in the year 19 . . ; and whereas I am now 
 the sole owner of the said patent and of all rights under 
 the same in the below-recited territory ; and whereas 
 
 , of , county of , State of 
 
 , is desirous of acquiring an interest in the same : 
 
 Now, therefore, for and in consideration of the sum 
 
 of dollars to me in hand paid, the receipt of which 
 
 is hereby acknowledged, I , by these pres- 
 ents do sell, assign, and transfer unto the said 
 
 all the right, title, and interest in and to the said 
 
 invention, as secured to me by said letters patent, for, 
 
 to, and in the State of , and for, to, or in no other 
 
 place or places ; the same to be held by 
 
 within and throughout the above-specified territory, but 
 not elsewhere, for his own use and behoof, and of his 
 20 273
 
 legal representatives, to the full end of the term for 
 which said letters patent are granted, as fully and en- 
 tirely as the same would have been held by me had this 
 assignment and sale not been made. 
 Executed day of , 19 . . . 
 
 [l. s. 
 
 In presence of — 
 
 (See note under Form 38.) 
 
 42. License — Shop-Right. 
 
 In consideration of the sum of dollars, to be 
 
 paid by the firm of , of , in the county 
 
 of , State of , I do hereby license and em- 
 power the said to manufacture in said 
 
 (or other place agreed upon) the improvement in 
 
 , for which letters patent of the United States No. 
 
 were granted to me the day of , in 
 
 the 3^ear 19 . . , and to sell the machines so manufactured 
 throughout the United States to the full end of the term 
 for which said letters patent are granted. 
 
 Signed at , in the county of and 
 
 State of , this day of , 
 
 19... 
 
 In presence of- 
 
 43. License — Not Exclusive — With Royalty. 
 
 This agreement, made this day of , 19 . . , 
 
 between , of , in the county of 
 
 and State of , party of the first part, and 
 
 , of , in the county of and 
 
 State of , party of the second part, witnesseth, 
 
 tliat whereas letters patent of the United States No. 
 
 , for improvement in , were granted 
 
 ^74
 
 to tlie party of the first part in the day of , 
 
 19. . ; and whereas the party of the second part is de- 
 sirous of manufacturing • . . . containing said pat- 
 ented improvements : Now, therefore, the parties have 
 agreed as follows : 
 
 I. The party of the first part hereby licenses and 
 empowers the party of the second part to manufacture,, 
 subject to the conditions liereinafter named, at their fac- 
 tory in , and in no other place or places, to the 
 
 end of the term for which said letters patent were grant- 
 ed, containing the patented improvements, 
 
 and to sell the same within the United States. 
 
 II. The part}^ of the second part agrees to make full 
 and true returns to the party of the first part, under 
 
 oath, upon the first days of and in each 
 
 year, of all containing the patented improve- 
 ments manufactured by them. 
 
 III. The party of the second part agrees to pay to 
 
 the part}^ of the first part dollars as a license fee 
 
 upon every manufactured by said party of the 
 
 second part containing the patented improvements; 
 provided, that if the said fee be paid upon the days pro- 
 vided herein for semi-annual returns, or within 
 
 days thereafter, a discount of per cent, shall be 
 
 made from said fee for prompt payment. 
 
 IV. Upon a failure of the party of the second part to 
 make returns or to make payment of license fees, as 
 
 herein provided, for claj^s after the days herein 
 
 named, the party to the first part may terminate this li- 
 cense by serving a written notice upon the party of the 
 second part ; but the party of the second part shall not 
 thereby be discharged from any liability to the party of 
 the first part for any license fees due at the time of the 
 service of said notice. 
 
 In witness whereof the parties above named have here- 
 
 275
 
 unto set their hands the day and year first above written 
 at , in the county of and State of 
 
 In the presence of — 
 
 DEPOSITIONS. 
 
 44. Notice of Taking* Testimony. 
 
 , , ,19.. 
 
 In the matter of the interference between the application 
 
 of for a machine and the patent 
 
 No , granted , 19 . . , to , 
 
 now pending before the Commissioner of Patents. 
 SiE : You are hereby notified that on Wednesday, 
 
 , 19 . . , at the office of , Esq., No. 
 
 Street, , at o 'clock in the 
 
 forenoon, I shall proceed to take the testimony of 
 
 , residing at , and , resid- 
 ing at , all of , as witnesses in my be- 
 half. 
 
 The examination will continue from day to day until 
 completed. You are invited to attend and cross-examine. 
 
 By , 
 
 His Attorney. 
 
 Signed at , in the county of and State 
 
 of , this day of , 19 . . . 
 
 Witnesses : 
 
 Proof of Service. 
 
 ss: 
 
 276
 
 Personally appeared before me, a (or other 
 
 officer), the above-iiained , who, being duly 
 
 sworn, deposes and says that he served tlie above notice 
 
 upon , the attorney of the said 
 
 , at . . o 'clock of the day of , 
 
 19. ,, b}' leaving a copy at his office in , in the 
 
 county of and State of , in charge of 
 
 Sworn to and subscribed before me at , in the 
 
 county of and State of , this day 
 
 of ,19... 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 (Service may be acknowdedged by the party upon 
 whom it is made as follows : 
 
 Service of the above notice acknowledged this 
 
 of ,19... 
 
 By , 
 
 His Attornei}. 
 
 45. Form of Deposition. 
 
 Before the Commissioner of Patents, in the matter of the 
 
 interference between the application of 
 
 for a and Letters Patent No 
 
 granted , 19 . . , to 
 
 Depositions of witnesses examined on behalf of 
 
 , pursuant to the annexed notice, at the office 
 
 of , No Street, , , 
 
 on , , 19 . . . Present, 
 
 , Esq., on behalf of , and 
 
 , Esq., on behalf of 
 
 , being duly sworn (or affirmed), doth de- 
 pose and say, in answer to interrogatories proposed to 
 
 277
 
 him by , Esq., counsel for , 
 
 as follows, to wit : 
 
 Question 1. What is your name, age, occupation, and 
 residence ? 
 
 Answer 1. My name is ; I am . . . years 
 
 of age ; I am a manufacturer of and reside at 
 
 , in the State of 
 
 Question 2, etc 
 
 And in answer to cross-interrogatories proposed to him 
 
 by , Esq., counsel for , he 
 
 saith : 
 
 Cross-question 1. How long have you known 
 
 Answer 1. 
 
 48. Certificate of Officer. 
 
 [To follow deposition.] 
 SS : 
 
 I, , a notary public within and for the 
 
 county of and State of (or other officer, 
 
 as the case may be), do hereby certify that the foregoing 
 
 de])osition of was taken on behalf of 
 
 in pursuance of the notice hereto an- 
 nexed, before me, at , in the city of , in 
 
 said county, on the day (or days) of , 
 
 19. . ; that said witness was by me dul}^ sworn before the 
 commencement of his testimony; that the testimony of 
 
 Sill (I witness was written out by myself (or b^^ 
 
 in my presence) ; that the opposing party, 
 
 , wns i)res('nt (or absent or represented by coun- 
 sel) (luring llie taking of said testimony; that said testi- 
 mony was taken at , and was commenced at . . . 
 
 'clock on the of > 19 • • , was con- 
 tinued pursuant to adjournment on the , 
 
 278
 
 (etc.), and was concluded on the of said montli ; 
 
 that the deposition was read by, or to, each witness, be- 
 fore the witness signed the same ; that I am not con- 
 nected by bk)0(l or marriage with either of said parties, 
 nor interested directly or indirectly in the matter in con- 
 troversy. 
 
 In testimony whereof I have hereunto set my hand and 
 
 affixed by seal of office at , in said county, this 
 
 day of ,19... 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 (The magistrate will then append to the deposition 
 the notice under which it was taken, and will seal up 
 the testimony and direct it to the Commissioner of 
 Patents, placing upon the envelope a certificate in sub- 
 stance as follows : ) 
 
 I hereby certify that the within deposition of 
 
 (if the package contains more than one deposition 
 
 give all the names), relating to the matter of interfer- 
 ence between and , was 
 
 taken, sealed up, and addressed to the Commissioner of 
 Patents by me this day of , 19 . . . 
 
 [seal.] 
 
 [Signature of justice or notary.] 
 
 [Official character.] 
 
 279
 
 APPEALS FROM THE COMMISSIONER OF PATENTS 
 
 TO THE COURT OF APPEALS OF THE 
 
 DISTRICT OF COLUMBIA. 
 
 Court Rules. 
 No. XXI. 
 
 APPEALS FROM THE COMMISSIONER OF PATENTS. 
 
 1. All certified copies of papers and evidence on ap- 
 peal from the decision of the Commissioner of Patents, 
 authorized by Section 9 of the Act of Congress approved 
 February 9, 1893, shall be received by the clerk of this 
 court, and the cases, by titling and number as they ap- 
 pear on the record in the Patent Office, shall be placed on 
 a separate docket from the docket of the cases brought 
 into this court by appeal from the Supreme Court of the 
 District of Columbia, to be designated as the ''Patent 
 Appeal Docket ' ' ; and upon filing such copies the party 
 appellant shall deposit with the clerk, or secure to be 
 paid as demanded, an amount of money sufficient to 
 cover all legal costs and expenses of said appeal; and 
 upon failure to do so his appeal shall be dismissed. The 
 clerk shall, under this titling of the case on the docket, 
 make brief entries of all papers filed and of all proceed- 
 ings had in the case. 
 
 2. The appellant, upon complying with the preceding 
 section of this rule, shall file in the case a petition ad- 
 dressed to the court, in which he shall briefly set forth 
 ami show that he has complied with the requirements of 
 .sections 4912 and 4913 of the Revised Statutes of the 
 riiited States to entitle him to an appeal, and praying 
 that Ills ai)poal may be heard ui)()ii and for the reasons 
 
 280
 
 assigned therefor to the Commissioner; and said appeal 
 shall he taken witiiiii forty (hiys from the date of the rul- 
 ing' or order appealed from and not afterwards. 
 
 If the petition for an appeal and the certified copies 
 of papers and evidence on appeal mentioned in this and 
 the preceding section of this rule shall not be filed and 
 the case duly docketed in this court within fort}' days 
 (exclusive of Sundays and legal holidays) from the day 
 upon which notice of appeal is given to the Commis- 
 sioner of Patents, the commissioner, upon such facts 
 being brought to his attention by motion of the appellee, 
 duly served upon the appellant or his attorne.y, may take 
 such further proceedings in the case as may be neces- 
 sary to dispose of the same, as though no notice of appeal 
 had ever been given. 
 
 3. The clerks shall provide a minute book of his office, 
 in which he shall record every order, rule, judgment, or 
 decree of the court in each case, in the order of time in 
 which said proceedings shall occur ; and of this book the 
 index shall be so kept as to show the name of the party 
 applying for the patent, the invention by subject matter 
 or name, and, in the cases of interference, the name of 
 the party with whose pending application or unexpired 
 patent the subsequent application is supposed to inter- 
 fere. 
 
 4. The cases on this docket shall be called for argu- 
 ment on the second Monday of January, March, May, 
 and November in each year, and the cases shall be called 
 in regular order as they may stand on the docket. A 
 copy of these rules shall be furnished to the Commis- 
 sioner of Patents ; and it shall be the duty of the clerk 
 of this court to give special notice to the said Commis- 
 sioner at least fifteen days immediately preceding the 
 times thus respectively fixed for the hearing of said 
 cases ; the said notice to name the place of the sitting of 
 the court, the titling of the cases on the docket of this 
 court, the respective numbers thereof, and the number 
 
 281
 
 of each case as it appears of record in the Patent Office ; 
 and thereupon the Commissioner shall give notice to the 
 parties interested or concerned by notice addressed to 
 them severally by mail. 
 
 5. The clerk shall furnish to any applicant a copy of 
 any paper in any of said appeals on payment of the legal 
 fees therefor. 
 
 6. The appeals from the Commissioner of Patents shall 
 be subject to all the rules of this court provided for other 
 cases therein, except where such rules, from the nature 
 of the case, or by reason of special provisions inconsistent 
 therewith, are not applicable. 
 
 7. Models, diagrams, and exhihits of material forming 
 part of the evidence taken in the court helow or m the 
 Patent Office in any case pending in this court on writ of 
 error or appeal shall he placed in the custody of the clerk 
 of this court at least three days hefore the case is heard 
 or submitted. 
 
 8. All models, diagrams, and exhibits of material 
 placed in the custody of the clerk for the inspection of 
 the court on the hearing of the case must be taken away 
 by the parties within twenty days after the case is de- 
 cided. When this is not done, it shall be the duty of the 
 clerk to notify the counsel in the case and the Commis- 
 sioner of Patents, by mail or otherivise, of the require- 
 ments of this rule; and if the articles are not removed 
 ivithin ten days after the notice is given, he shall destroy 
 them or make such other disposition of them as to him 
 may seem best. 
 
 No. XXII. 
 
 OPINIONS OF LOWER COURT AND COMMISSIONER OF PATENTS 
 MADE PART OP RECORD. 
 
 Whenever the judgment, decree, or order appealed 
 from is based upon or has reference to a written opinion 
 fiksd in the case by the court below, such opinion shall 
 constitute a ])ai-t of Iho transcrii)t to be sent to this court; 
 
 282
 
 and such opinion, and also the written reasons or grounds 
 
 assigned by the Connnissioner of Patenst in appeals from 
 
 the Patent Office, shall be printed as part of the record 
 
 to be printed under Rule 6. 
 
 ***** 
 
 No. XXVII. 
 
 SUNDAYS AND LEGAL HOLIDAYS. 
 
 That wherever days are mentioned in the foregoing 
 rules as limitations of time, they shall be construed to 
 exclude Sundays and legal holidays, hut to include Sat- 
 urday half holidays. 
 
 Instructions to Appellants. 
 
 The Act of Congress creating the Court of Appeals of 
 the District of Columbia, approved February 9, 1893, 
 gives to that court jurisdiction of appeals from final de- 
 cisions of the Commissioner of Patents both in ex parte 
 cases and in interference cases. 
 
 Where an appeal of either class is to be prosecuted to 
 the Court of Appeals of the District of Columbia, the 
 first step is to file with the Commissioner of Patents a 
 notice of appeal, together with an assignment of reasons 
 of appeal. This step must be taken within forty days, 
 exclusive of Sundays and legal holida^ys, hut including 
 Saturday half holidays, from the date of the decision of 
 the Commissioner of Patents sought to be reviewed. 
 
 The next step in the prosecution of such an appeal is 
 to file with the clerk of the Court of Appeals of the Dis- 
 trict of Columbia a certified transcript of the record and 
 proceedings in the Patent Office relating to the ease in 
 question, together with a petition for appeal, addressed 
 to the Court of Appeals of the District of Columbia, make 
 a deposit of $15, and have the appearance of a member of 
 the bar of that court entered for the appellant. 
 
 The notice of appeal and reasons of appeal required to 
 be served upon the Commissioner of Patents may be 
 
 283
 
 sig-neil by the appellant or by his attorney of record in 
 the Patent Office, but the petition for an appeal that is 
 filed in the Court of Appeals of the District of Columbia 
 must be signed by a member of the bar of the Court of 
 Appeals of the District of Columbia, who should enter a 
 regular appearance in the case in the clerk's office. 
 
 After the petition for the appeal, the certified tran- 
 script, and the docket fee of $15 have been lodged in the 
 office of the clerk of the Court of Appeals of the District 
 of Columbia, the clerk will send to the solicitor of record 
 an estimate of the cost of printing the petition, tran- 
 script, etc. 
 
 When the amount called for is deposited, the clerk 
 will cause the printing to be done under his supervision, 
 and when the printing is completed the case will be put 
 on the calendar for hearing at the next term at which 
 patent appeals are heard. 
 
 In interference cases the clerk is authorized to receive 
 printed copies of the evidence, such as have been used in 
 the Patent Office, thus saving to the appellant the cost 
 of reprinting such evidence. When such printed copies 
 are supplied, twenty -five copies must be furnished. 
 
 As above stated, the notice of appeal and the reasons 
 of appeal are required to be filed with the Commissioner 
 of Patents within forty days, exclusive of Sundays and 
 legal holidays, hut including Saturday half holidays, of 
 the date of the decision appealed from, but the petition 
 for appeal and the certified transcript which are to be 
 filed in the Court of Appeals of the District of Columbia 
 are reciuired to be filed in that court within forty days, 
 exclusive of Sundays and legal holidays, hut including 
 Snturdaif half holidays, from the time of the giving of 
 tlic notice of appeal; that is to say, if the decision com- 
 plained of was rendered, for instance, on tlie 1st day of 
 July, 190(5, the party aggrieved might file his notice of 
 appeal, with the reasons of appeal, at any time within 
 foi'ly (hiys, exclusive of Suiulays and legal holidays, hut 
 
 284
 
 including Saturday half Jwlidaj/s, thereafter; but if he 
 filed his notice of appeal and reasons therefor on the 
 10th day of July, 1906, he would be required to file his 
 petition for appeal and the certified transcript in the 
 Court of Appeals of the District of Columbia within 
 forty days, exclusive of Sundays and legal holidays, hut 
 including Saturday h(df liolidajis, of the 10th day of 
 July, 1906. 
 
 For convenience of appellants and to secure uniform- 
 ity in practice the following forms are suggested as 
 guides in the prosecution of patent appeals : 
 
 Forms. 
 
 1. FORM OF NOTICE OF APPEAL TO THE COURT OF APPEALS OF 
 THE DISTRICT OF COLUMBIA IN AN EX PARTE CASE, 
 WITH REASONS OF APPEAL AND REQUEST FOR TRAN- 
 SCRIPT. 
 
 In the United States Patent Office. 
 In re application of 
 
 Serial No 
 
 Filed 
 
 Improvements in 
 
 To the Commissioner of Patents: 
 
 Sir : You are hereby notified of n\y appeal to the 
 Court of Appeals of the District of Columbia from your 
 
 decision, rendered on or about the day of , 
 
 19 . . , rejecting my above-entitled application and refus- 
 ing me a patent for the invention set forth therein. 
 
 The following are assigned as reasons of appeal : 
 
 [Here insert in separate counts the specific errors complained of.l 
 
 By , 
 
 His Attorney. 
 
 285
 
 2. FORM OF PETITION FOR AN APPEAL TO THE COURT OF AP- 
 PEALS OF THE DISTRICT OF COLUMBIA IN AN EX PARTE 
 CASE. 
 
 In the Court of Appeals of the District of Columbia. 
 In re application of 
 
 Serial No 
 
 Filed 
 
 Improvements in 
 
 To the Court of Appeals of the District of Columhia: 
 
 Your petitioner, , of , in the 
 
 county of , and State of , respectfully rep- 
 resents : 
 
 That he is the original and first inventor of certain 
 new and useful improvements in 
 
 That on the day of , 19 . . , in the manner 
 
 prescribed by law, he presented his application to the 
 Patent Office, praying that a patent be issued to him for 
 the said invention. 
 
 That such proceedings were had in said office upon 
 
 said application ; that on the day of , 19 • • j 
 
 it was rejected by the Commissioner of Patents and a pat- 
 ent for said invention was refused him. 
 
 That on the day of , 19. ., your peti- 
 tioner, pursuant to Sections 4912 and 4913, Revised 
 Statutes, United States, gave notice to the Commissioner 
 of Patents of his appeal to this honorable court from his 
 refusal to issue a patent to him for said invention upon 
 said application as aforesaid, and filed with liiiii, in writ- 
 ing, the following reasons of appeal : 
 
 [Here recite the reasons of appeal assigned in tlie notice to the Com- 
 missioner.] 
 
 286
 
 That the Commissioner of Patents has furnished him 
 a certified transcript of the record and proceedings re- 
 lating to said application for patent, which transcript is 
 filed herewith and is to he deemed and taken as a part 
 hereof. 
 
 Wherefore your petitioner prays that his said appeal 
 may be heard upon and for the reasons assigned there- 
 for to the Commissioner as aforesaid, and that said ap- 
 peal may be determined and the decision of the Commis- 
 sioner be revised and reversed, that justice may be done 
 in the premises. 
 
 By 
 
 His Attorney. 
 
 [To be signed here by a member of the bar of 
 the Court of Appeals of D. C] 
 
 Solicitor and of Counsel. 
 
 3. FORM OF NOTICE OF APPEAL TO THE COURT OF APPEALS 
 OF THE DISTRICT OF COLUMBIA IN AN INTERFERENCE 
 CASE, WITH REASONS OF APPEAL AND REQUEST FOR 
 TRANSCRIPT. 
 
 In the United States Patent Office. 
 Before the Commissioner of Patents. 
 
 Interference No Subject-matter 
 
 vs. )^ 
 
 Improvements iu 
 
 And now^ comes , by , his 
 
 attorney, and gives notice to the Commissioner of Pat- 
 ents of his appeal to the Court of Appeals of the District 
 of Columbia from the decision of the said Commissioner, 
 
 rendered on or about the day of , 19. ., 
 
 awarding priority of invention to iu the 
 
 287
 
 above-entitled case, and assigns as liis reasons of appeal 
 the following : 
 
 [Here set out in separate counts the specific errors in the Commissioner's 
 decision complained of.] 
 
 By , ^ 
 
 His Attorney. 
 
 4. FORM OF PETITION FOR AN APPEAL TO THE COURT OF AP- 
 PEALS OF THE DISTRICT OF COLUMBIA IN AN INTERFER- 
 ENCE CASE. 
 
 In the Court of Appeals of the District of Colmnhia. 
 In re Interference No 
 
 '] 
 
 Appellant,! 
 
 vs. 
 
 To the Court of Appeals of the District of Columbia: 
 
 Your petitioner, , of , in the 
 
 county of , and State of , respectfully^ rep- 
 resents : 
 
 That he is the original and first inventor of certain 
 new and useful improvements in 
 
 That on the day of , 19 . . , in the manner 
 
 prescribed by law, he presented his application to the 
 Patent Office, praying that a patent be issued to him for 
 the said invention. 
 
 That thereafter, to wit, on the day of , 
 
 19 . . , an interference proceeding was instituted and de- 
 clared between his said application, and a pending ap- 
 plication of one , serial No , filed 
 
 , for a similar invention. 
 
 That the subject-matter of said interference as set 
 forth in the official declaration was as follows : 
 
 I Hero state the issues ol' the iiiterrorcnie. J 
 
 288
 
 That thereafter, to wit, on tlie day of , 
 
 19. ., the case having been submitted upon the prelim- 
 inary statements and evidence presented by the parties 
 thereto, tlie Examiner of Interferences rendered a de- 
 cision awarding priority of invention to 
 
 That, pursuant to the statutes and the rules of practice 
 in the Patent Oiifice in such case made and i)rovide(l, 
 
 appealed from the said adverse decision 
 
 of the Examiner of Interferences to the Board of Exam- 
 iners in Chief, and the case having been argued and sub- 
 mitted to said board, a decision was rendered by said 
 
 board on the day of , 19- •, affirming (or 
 
 reversing) the decision of the Examiner of Interferences. 
 
 That thereafter, pursuant to said statutes and rules, 
 
 appealed from the said adverse decision 
 
 of the Board of Examiners in Chief to the Commissioner 
 of Patents, and the same coming on to be heard and hav- 
 ing been argued and submitted, a decision was, on the 
 day of , 19 . . , rendered by the Commis- 
 sioner adverse to your petitioner, affirming (or revers- 
 ing) the decision of the Board of Examiners in Chief and 
 awarding priority of invention to the said 
 
 That on the day of , 19 • . , your peti- 
 tioner, pursuant to Sections 4912 and 4913, Revised Stat- 
 utes, United States, gave notice to the Commissioner of 
 Patents of his appeal to this honorable court from his 
 
 decision awarding priority of invention to said 
 
 , as aforesaid, and filed with him, in writing, the 
 
 following reasons of appeal : 
 
 [Here insert reasons of appeal assigned in notice to Commissioner.] 
 
 That the Commissioner of Patents has furnished your 
 petitioner a certified transcript of the record and pro- 
 ceedings relating to said interference case, which tran- 
 script is filed herewith and is to be deemed and taken as 
 a part hereof. 
 
 Wherefore your petitioner prays that his said appeal 
 
 21 289
 
 may be heard upon and for the reasons assigned therefor 
 to the Commissioner, as aforesaid, and that said appeal 
 may be determined and the decision of the commissioner 
 be revised and reversed, that justice may be done in the 
 premises. 
 
 By , 
 
 His Attorney. 
 
 [To be signed here by a member of the bar of 
 the Court of Appeals of D. C] 
 
 Solicitor and of Counsel. 
 
 290
 
 INDEX TO RULES. 
 
 Kul? 
 
 Abandoned, forfeited, revived, and renewed applications. 
 (See Abandonment, Forfeiture, and Eenewal.) 
 
 Abandonment, 
 
 of application by failure to complete 31, 171 
 
 by failure to prosecute 31, 77, 171 
 
 by intent of applicant 171 
 
 considered, ujion renewal of application 175 
 
 Administrators and Executors, 
 
 may make apjjlication 25, 26 
 
 will make oath 25, 26 
 
 patent may issue to 25, 26 
 
 Adverse decision, 
 
 upon jireliminary questions 65, 67, 69 
 
 Affidavits, 
 
 to overcome references on rejection 66, 75 
 
 in support of application for reissue 87 
 
 to establish priority of invention 94, 110 
 
 after appeal 141 
 
 Amendments, 
 
 right to amend 68 
 
 requisites of 68, 73, 74 
 
 to be signed both )iy inventor and assignee of undivided 
 
 interest 6, 73 
 
 must be written legibly on but one side of the paper ... 45 
 
 on sheets of paper separate from the original 73 
 
 erasures and insertions 73 
 
 to correspond to original model, drawing, or specifica- 
 tion 70 
 
 involving a departure from original invention not per- 
 mitted 70 
 
 not covered by original oath 48 
 
 of specification, if no model or drawing 48, 70 
 
 to correct inaccuracies or prolixity 71 
 
 after claims are ready for appeal 68 
 
 after decision on appeal, based on discovery of Commis- 
 sioner 139 
 
 after notice of allowance 78, 165, 166 
 
 291
 
 Eule 
 
 Amendments — Continued. 
 
 to applications in interference 106, 107, 109 
 
 to drawings 71 
 
 to preliminary statements 112, 113 
 
 to save from abandonment 171 
 
 to reissues 88 
 
 to Rules of Practice, to be published in Official Gazette 198 
 Appeals, 
 
 from requirement of model 56 
 
 to Examiners in Chief from Primary Examiner on 
 
 merits of invention 133 
 
 to be in writing 133 
 
 prerequisites to 13-4 
 
 Examiner to furnish a statement of the grounds of re- 
 
 j eetion 135 
 
 appellant to furnish a brief of reasons of appeal 137 
 
 oral hearing before Examiners-in-Ohief, how obtained . . 137 
 
 how conducted . 138 
 decision of Examiners in Chief to be confined to points 
 
 appealed 139 
 
 but upon discovery of grounds for granting or refusing 
 
 a patent not involved in appeal, action 139 
 
 to Examiners in Chief from Examiner, interference 
 
 cases, patentability of claims 124, 143 
 
 to Commissioner ujiou refusal of examiner to admit 
 
 amendment 68 
 
 upon objection that the appeal is informal 135 
 
 on preliminary or intermediate questions for Examiner . 142 
 
 to Commissioner in interference cases 124, 143 
 
 upon adverse decisions by Examiners 
 
 in Chief 139 
 
 rehearings 140 
 
 jurisdiction 140 
 
 reconsideration of cases decided by a former Commis- 
 sioner 147 
 
 to the Court of Appeals of the District of Columbia . . 
 
 148, 149, 150 
 
 Appijc'ants. (See Applications.) 
 
 who may ])0 24 
 
 sliouid transact their business in writing 4 
 
 jiersoiuil attendance unnecessary 4 
 
 required to conduct business with decorum and courtesy 22 
 
 will lie iiifriirncd of sciini niimlier of thoii' application . 31 
 
 2!)L>
 
 Eule 
 Applications, 
 
 what ponstitutes a cnmiilf^e a|i]ilic!iti(>ii oil 
 
 to wlioni made 3(J 
 
 may be made by guardian of insane person 2-3 
 
 must be made by actual inventor, if alive 26 
 
 if dead, by executor or administrator . . . 25,26 
 
 nuist be written in tlie English language 30 
 
 must be fded within twelve months after foi'eign ai)pli- 
 
 cation 24 
 
 how signed and witnessed 40 
 
 office can not advise or assist in preparation of 14 
 
 all parts should be filed at the same time o2 
 
 incomplete applications will not be filed 31 
 
 acknowledgment of filing 77 
 
 will be stricken from the files for irregularities 31 
 
 will be numbered in regular series, commencing .Tanuary 
 
 1, 1900 31 
 
 to contain but one'invention unless connected 41, 42 
 
 when applicant makes two or more, covering same in- 
 vention, cross references required 43 
 
 reservation for future application not permitted 44 
 
 data required in letters concerning 10 
 
 oath to, by applicant 46 
 
 by applicant for reissue 87 
 
 by executor or administrator 47 
 
 by guardian of insane person 47 
 
 supplemental to amendment 48 
 
 before whom taken 47 
 
 kept secret while pending 1~> 
 
 when patented are open for inspection 16 
 
 examination of, order of 63 
 
 privileged eases taking precedence in . 63 
 
 delayed, if model is condemned 58 
 
 suspended by request 77 
 
 in reissue cases, by whom signed 85 
 
 what must accompany 86 
 
 no new matter to be introduced 88 
 
 division of 89 
 
 original will be reviewed 90 
 
 abandonment of, by failure to complete 31, 171 
 
 by failure to prosecute 31, 77, 171 
 
 by filing a formal abandonment 60, 171 
 
 293
 
 Rule 
 
 Applications — Continued. 
 
 abandoned and forfeited, not cited as references 177 
 
 copies, to whom furnished ... 179 
 
 prosecution of, defined 77, 171 
 
 renewal of, after abandonment 172 
 
 after forfeiture 1 75, 176 
 
 new, after abandonment may be accompanied by old 
 
 model 173 
 
 after forfeiture may be made by any party in in- 
 terest 175 
 
 but within two years 175 
 
 old papers may be used in renewal after forfeiture .... 176 
 
 new, may be made for claims not in interference 106 
 
 rejected, certified copies of, to whom furnished 179 
 
 rejected, may be appealed to Examiners in Chief after 
 
 two rejections 133 
 
 rules governing, filed prior to January, 1898 200 
 
 Arguments, 
 
 oral, hours of hearing 151 
 
 limitation of 151 
 
 right to open and close in contested cases 153 
 
 brief of, to be made in appeal cases, to be previously 
 
 filed 137 
 
 interference cases, to be previ- 
 ously filed 144 
 
 in contested cases should be printed 163 
 
 Assignee, 
 
 if of entire interest, is entitled to hold correspondence 
 
 with the office exclusively 5, 20 
 
 and patent may issue to him 26 
 
 if of undivided part interest, correspondence will be 
 
 held with inventor 6 
 
 and patent may issue jointly . 26 
 
 may make application for reissue of patent 85 
 
 may prosecute or defend in interference 131 
 
 may file application for renewal after forfeiture ... 175 
 patent will issue to, if assignment is recorded before 
 
 payment of final fee 188 
 
 Assignments, 
 
 assignability of j intents 183 
 
 grant of territorial rights 183 
 
 in whom may be vested 1S4 
 
 assignees ('0 ■ • l^^ 
 
 294
 
 ■Rule 
 AsSUiNMENTS — Coiitini((:(P. 
 
 grantees (b) . . 184 
 
 mortgages (c) . . 184 
 
 licenses ' (d) . . 184 
 
 must be recorded in United States Patent Office to se- 
 cure against subsequent conveyance 185 
 
 acknowledgment before notary, prima facie evidence . . 185 
 
 what will be accepted for record 18G 
 
 should identify the patent 186 
 
 conditional assignments 187 
 
 if recorded before payment of final fee patent will issue 
 
 to assignee 26, 188 
 
 date of receipt is date of record 188 
 
 receipt of, acknowledged 189 
 
 recorded in regular order and returned 1 89 
 
 fees for recording ^ 190 
 
 copies of 190 
 
 orders for copies of, must give liber and page 192 
 
 Attorneys 17 
 
 who may act as 17 
 
 advised to employ 17 
 
 office can not aid in selection 17 
 
 correspondence to be with them only 7 
 
 power of attorney must be filed before any recognition 
 
 or privileges are extended 18 
 
 given to a firm not recognized unless all its members 
 
 are named therein 18 
 
 general powers not recognized 18 
 
 substitution or association of, wljen authorized by prin- 
 cipal 19 
 
 if not satisfactory, power may be revoked 20 
 
 assignments do not operate as a revocation 20 
 
 may examine cases in attorneys' rooms, but not in rooms 
 
 of the examiners 21 
 
 personal interviews with examiners 13, 21, 152 
 
 required to conduct business with decorum and courtesy 22 
 
 may be refused recognition for misconduct 22 
 
 as members of Congress can not act as, or be given in- 
 formation without a power of attorney, their services 
 
 should not be solicited 23 
 
 Bar, 
 
 foreign patents a 29 
 
 295
 
 Eule 
 
 Bar — Colli i lined. 
 
 use will not bar patent liere, if not patented Ijy 
 
 another or deseriberl in printed publications 27 
 inventions shown but not claimed in other applications 
 
 may not be a 75 
 
 Briefs, 
 
 of authorities and arguments upon which appeal will be 
 
 maintained to be filed before day of hearing 137 
 
 same, interference cases 144 
 
 sam.^, interference cases appealed 144 
 
 should be submitted in printed form 144, 163 
 
 Certificates, 
 
 of otficial character of notary to be filed 47 
 
 Claims, 
 
 in specific and distinct form must follow specification . 37 
 
 not in conflict in interference, may be withdrawn and 
 
 new application Iherefor filed 106 
 
 must be twice rejected before appeal 134 
 
 copies of rejected claims must accompany examiner's 
 
 statement on appeal 135 
 
 Commissioner, 
 
 appeals to, from examiner 68, 136, 142, 143 
 
 in interference cases 124, 143 
 
 from Examiners in Chief 136 
 
 from, to the Court of Appeals of the District 
 
 of Columbia 148 
 
 reconsideration of eases decided by former 147 
 
 cases decided by, reopened only by himself 140 
 
 Examiners in Chief reheard only by 
 
 written authority of 140 
 
 Complaints, 
 
 against examiners, how presented 22 
 
 Composition of Matter, 
 
 specimens, when required 62 
 
 Copies, 
 
 of specifications, drawings, and patents will be fur- 
 nished at s-pecified rates 16, 191 
 
 coufjons receivable for 191 
 
 from works in the library 197 
 
 but no translations furnished 197 
 
 of iinteiits, etc., referred to in references will be fur- 
 
 nislicd 66 
 
 of ]pa]iers in j)cnding cases to iip|ilicaiits for amendment 72 
 
 296
 
 Kule 
 
 Copies — Cunliniutl. 
 
 of claims may ln' obtained hy ()|)iiosinj^- ]iarti<'s in inter- 
 ference 108 
 
 of motion papers and affidavits to be served 153 
 
 of forfeited and abandoned files 179 
 
 of files, records, etc., made only by the office 197 
 
 orders for, of assignments must contain liber and page 192 
 
 Correction of errors in letters patent 170 
 
 Correspondence, 
 
 rules for conducting 1-13 
 
 all business with the office should be transacted by . . . 1,4 
 all letters and communications to the office to be ad- 
 dressed to the Commissioner of Patents 2 
 
 all letters from the office to be sent in his name 2 
 
 postage, etc., must be prepaid 3 
 
 to be held exclusively with assignee of entire interest . 5 
 
 with inventor in case of undivided interest 6 
 
 with attorney after power is filed 7 
 
 double, with different parties in interest not alloweil . . 8 
 
 separate letter for each subject of inquiry required ... 9 
 
 letters relating to application should state 10 
 
 letters relating to patents should state 11 
 
 answered promptly 13 
 
 copy of rules marked sent as respectful answer to cer- 
 tain inquiries 14 
 
 resumed with principal, if power is revoked 20 
 
 discourteous communications returned to writers 22 
 
 Coupons, 
 
 sold by the office and receivable for all printed copies 
 
 of specifications and drawings 191 
 
 Court of Appeals op the District of Columbia, 
 
 appeals to 148-150 
 
 Date, duration, and form of patents, 
 
 date of 167 
 
 never antedated 167 
 
 duration of 168 
 
 duration of design 168 
 
 what is granted in a patent 168 
 
 Depositions. (See Testimony.) 
 
 formalities to be observed in preparing 155, 156 
 
 certificate of magistrate to accompany (3) . . 154 
 
 stenographically taken 156 
 
 297
 
 Rule 
 
 Depositions — Coniinucd. 
 
 to be sealed up, addressed, and forwarded to the Com- 
 missioner of Patents (3).. 154 
 
 when taken must be filed Ci)-- 154 
 
 official, relatives of interested party not competent to 
 
 take 156 
 
 foreign 158 
 
 rules of evidence apply to the taking of 159 
 
 subpoenas to secure attendance of witnesses 160 
 
 printing of 162 
 
 Delivery, 
 
 of patents 169 
 
 Design patents, 
 
 to whom granted 24, 79 
 
 for what term of years 80 
 
 arrangement of specification 82 
 
 proceedings on applications 81 
 
 models, when not required 83 
 
 drawings 84 
 
 Disbarment, 
 
 of attorneys from practice 22 
 
 Disclaimers, 
 
 who may make 181 
 
 grounds, form, and effect 181 
 
 different kinds of 182 
 
 fee required by law 181 
 
 Division, 
 
 of applications 41-42 
 
 Draw^ings, 
 
 required by law when the nature of ease admits 49 
 
 must show every feature of the invention 50 
 
 must be signed and attested 50 
 
 if of an improvement, must show connection with old 
 
 structure 50 
 
 three editions to be printed and published by the of- 
 fice when patented 51 
 
 for this purpose uniform standard of excellence re- 
 quired 52 
 
 papers and ink to be used in preparation of (a) . . 52 
 
 size, marginal lines, and heading (b) . . 52 
 
 character and color of lines (c) . . 52 
 
 fewest lines possible to be used and little shading (d) . . 52 
 
 Hciilc of tlic ili'avving ;iiid innnbcr of slieets (c) . . 52 
 
 298
 
 Kulo 
 
 iJRAWJNG.s — Continued. 
 
 size, formation, and placing of letters and fignres of 
 
 reference (f ) • • 52 
 
 like letters and figures must reftresent like parts 
 
 throughout the drawing (f ) . . 52 
 
 signatures to be placed in corners (g) . . 52 
 
 title, in pencil, upon back (g) . . 52 
 
 large views, how arranged (g) . . 52 
 
 preparation of figures specially for publication in Of- 
 ficial Gazette (h) . . 52 
 
 should not be folded for transmission to the office (i) . . 52 
 no stamp, advertisement, or address permitted on face 
 
 of (i).. 52 
 
 new, required with application for reissue 53 
 
 signature to, and size of drawings for reissue of pat- 
 ents 53 
 
 specific rules relating to preparation of drawing will be 
 
 enforced 54 
 
 inferior or defective drawings will be rejected 54 
 
 competent artist only should be employed 55 
 
 office will furnish or amend drawings if requested .... 54, 55 
 
 amendments to, must conform to model or specification 70, 88 
 
 may be withdrawn for correction 72 
 
 mutilations 73 
 
 new, not required in application for renewal after aban- 
 donment 173 
 
 original, may be used with renewal application after 
 
 forfeiture 176 
 
 Evidence. (See Testimony.) 
 
 established rules of evidence will be api)lied strictly in 
 
 all practice before the office 159 
 
 official records and special matter used as (e) . . 154 
 
 none will be considered on hearing not taken and filed 
 
 in compliance with rules 159 
 
 monthly volumes of specifications and drawings are au- 
 thenticated and admissible in courts as 209 
 
 Examination, 
 
 of applications, order of 63 
 
 privileged cases taking precedence in 63 
 
 as to form first made 64 
 
 delayed if model is condemned 58 
 
 reexamination after rejection if requested 65 
 
 suspended 77 
 
 299
 
 Rule 
 
 ExAMiXATiox — Continued. 
 
 reexamination of original upon reissue 90 
 
 of papers by attorney not permitted without a power . 18 
 
 Examiners, 
 
 appeals from 68, 135, 139, 142 
 
 complaints against 22 
 
 personal interviews with 13. 21, 152 
 
 digests 1-1 
 
 Exceptions, 
 
 to testimony 159 
 
 notice of, to be given to office and adverse party 159 
 
 ExECCTCRS. (See Administrators.) 
 
 Exhibits, 
 
 accompanying depositions in contested cases, how trans- 
 mitted (c) . . loi 
 
 if not withdrawn after use, how disposed of 61 
 
 Express charges, freight, etc., 
 
 must be prepaid in full 3 
 
 Extensions, 
 
 only by Act of Congress 180 
 
 Fees, 
 
 final, will be called for on allowance of patent 164 
 
 if not paid on or before Thursday, too late for 
 
 the weekly issue 167 
 
 if not paid within six months, patent forfeited . 167, 17-t 
 
 to whom it may be paid 167, 194 
 
 new, required upon renewal after forfeiture 176 
 
 on appeal to Examiners in Chief, $10 133 
 
 on appeal to Commissioner from Examiners in Chief. $20 136 
 
 on interlocutory appeals (no fee) 142 
 
 on appeal to the Court of Appeals of the District of 
 
 Columbia, $15 148 
 
 to be paid in advance 190 
 
 schedule of 191 
 
 mode of payment 194 
 
 registered letters 106, 194 
 
 postal money orders 206, 194 
 
 money by mail at risk of sender 206, 194 
 
 funds receivable 206, 194 
 
 money paid by mistake refunded 208, 195 
 
 Foreign countries, 
 
 taking testimony in 158 
 
 300
 
 Eule 
 
 Foreign patents, 
 
 a bar to United States patent unless application filed 
 
 within twelve months 29 
 
 Foreign use, 
 
 will not bar a patent here if not patented by another 
 
 or described in printed publication 27 
 
 Forfeiture, 
 
 of patent by noiipaynieut of final fee 174 
 
 Gazette. (See Official Gazette.) 
 
 Guardian, 
 
 of insane person 25 
 
 Hearings 151, 152 
 
 postponement of interference cases 120 
 
 oral, before Examiners in Chief on appeal 137 
 
 hours of, by the Commissioner 151 
 
 Examiners in Chief 151 
 
 Examiner of Interferences 151 
 
 Examiners 13, 152 
 
 before the Court of Appeals of the District of Columbia 150 
 
 Isane person, 
 
 application by guardian of 25 
 
 Interviews. (See Hearings.) 
 
 Interferences, 
 
 defined 93 
 
 in what cases declared 9-4 
 
 preparation for 95 
 
 failure to prepare for 96 
 
 notice of, from Examiner to Examiner of Interferences 97 
 
 revision of notice by Examiner of Interferences 98 
 
 points of difference to be referred to Commissioner . . . 99 
 
 jurisdiction in cases of 100, 101 
 
 by whom and how declared 102 
 
 notice to parties ' 1 03 
 
 motion for postponement of time of filing istatements . 104 
 
 certified copies used in place of original papers 105 
 
 claims not in conflict may be withdrawn 106 
 
 distdaimer to avoid interference 107 
 
 amendment during 106, 107, 101) 
 
 inspection of claims of opposing parties lOS 
 
 inventors showing, but not claiming 109 
 
 preliminary statement, how prepared, filed, oi)ened .... 110 
 
 when opened to inspection. Ill 
 
 if defective, may be amended 112, 113 
 
 301
 
 Eule 
 
 Interferences — Continued. 
 
 failing to file, judgment may be rendered on the record 114 
 
 subsequent testimony alleging prior dates excluded .... 115 
 
 presumption as to order of invention 116 
 
 preliminary statement not evidence 117 
 
 time for taking testimony 118 
 
 failure to take testimony 119 
 
 enlargement of time 121 
 
 motion to dissolve 122 
 
 non-patentability argued at final bearing 130 
 
 motion to stay proceedings 123 
 
 appeals to Commissioner and Examiners in Chief .... 124 
 appeals to Court of Appeals of District of Columbia . . 148-150 
 
 concessions of priority 125 
 
 action in statutory bar appears 126 
 
 second interference 127 
 
 suspension of interference for consideration of new ref- 
 erences 128 
 
 addition of parties .... 129 
 
 prosecution or defense by assignee 131 
 
 claims of defeated parties shall stand rejected 132 
 
 appeals in 143, 146 
 
 Invention, 
 
 shown but not claimed may not bar other patents 75 
 
 Issue, 
 
 a patent will issue upon payment of final fee 164 
 
 applications when withdrawn from 78, 165, 166 
 
 weekly, will close on Thursday of each week 167 
 
 will bear date fourth Tuesday thereafter 167 
 
 Joint inventors, 
 
 defined 28 
 
 entitled to joint patent only 28 
 
 Joint patents, 
 
 to joint inventors 28 
 
 to inventor and assignee 26 
 
 Jurisdiction 140, 153 
 
 after notice of allowance, Examiner has none over case 78 
 
 Examiner has jurisdiction till interference is declared . 100 
 resumed by Examiner on reference from Examiner of 
 
 Interferences to determine patentability 122 
 
 Letters to the offick. (See Correspondence.) 
 
 Library, 
 
 regulations of 197 
 
 copies will be furnished by the ottice at usual rates . . . 197 
 
 302
 
 Eule 
 License, 
 
 may be oral or writteu (d) . . 184 
 
 Model, 
 
 not rcujuirod to be filed wit li ai)plieatiou OG 
 
 if on examination one be found necessary request there- 
 for will be made 56 
 
 requisites of 57 
 
 material and dimensions 58 
 
 how made 58 
 
 name of inventor should be permanently fixed thereon . 58 
 
 if not strong and substantial, will be condemned 58 
 
 working model, when desirable 59 
 
 when returned or withdrawn 56, 60, 61, 72 
 
 when patented, open to inspection 14-16 
 
 not to be taken from the office except in custody of 
 
 sworn employee 60 
 
 filed as exhibits in contested eases, may be withdrawn . 61 
 if not claimed within reasonable time, may be disjjosed 
 
 of by Commissioner 61 
 
 amendments to, must conform to drawings or specifica- 
 tions 70 
 
 when not required for designs 83 
 
 old, may be used with a new application 173 
 
 may be amended on reissue by drawings only 88 
 
 Moneys. (See Fees.) 
 
 Motions 153 
 
 to amend preliminary statement 112 
 
 for postponement of time of filing statement 104 
 
 to dissolve interference 122, 123 
 
 for postponement of hearing 120 
 
 in contested cases 153 
 
 notice of 153 
 
 proof of service 153 
 
 will not be heard in absence of either party 153 
 
 will be heard by 153 
 
 right to open and close 153 
 
 equity practice in eases to which rules do not apply . . . 153 
 
 to extend time for taking testimony (d) . . 154 
 
 to take testimony in foreign countries (a) . . 158 
 
 Notice, 
 
 of all motions in contested cases 153 
 
 of taking testimony in all eases (a)-- 154 
 
 303
 
 Eule 
 Notice — Continued. 
 Interference cases, 
 
 to applicants who may become parties 10!» 
 
 to patentees who may become parties OH 
 
 to Examiner of Interferences 97 
 
 to parties to 103 
 
 of defective statement in 112 
 
 Appeal cases, 
 
 of oral hearings before Examiners in Chief 137 
 
 Miscellaneous, 
 
 of use of official records as evidence (e) . . 154 
 
 of exceptions to evidence 159 
 
 of appeal to Court of Appeals of District of Columbia . 149 
 
 of allowance of patent 164 
 
 new, to be given if case has been withdrawn from the 
 
 issue 165 
 
 of adverse decision upon preliminary question without 
 
 rejecting claim to be given to applicant 67 
 
 none given parties to forfeited cases of filing of subse- 
 quent applications 178 
 
 to conflicting parties who have the same attorney .... 97 
 
 Oath to applicatiox 46 
 
 must be made by inventor if alive 26 
 
 when made by administrator or executor 25. 47 
 
 in reissue cases 46, 87 
 
 additional, as to foreign patents 46 
 
 supplemental, to amendment 48 
 
 officers authorized to administer 47 
 
 certificates of officers administering 47 
 
 new, required in renewal application after abandon- 
 ment 173 
 
 original, may be used in application for renewal after 
 
 forfeiture 176 
 
 Official action, 
 
 will be based exclusively upon the written record 1 
 
 office can not act as adviser 14 
 
 Official business, 
 
 should be transacted in writing 1 
 
 Official Gazette 196 
 
 subscription price 196 
 
 of single copies 196 
 
 furnished to public libraries free 196 
 
 annual index 196 
 
 304
 
 Rule 
 
 Official Gazette — Continued. 
 
 aniendnicnts to rules published in 198 
 
 one edition of drawings published in 51 
 
 one view only, as a rule, shown in (h) • • ^- 
 
 rules for preparing a figure for publication in . . . (h) . . 52 
 
 notice of taking testimony, contested cases, published 
 
 in (b).. 154 
 
 in interference cases .... 103 
 Office fees. (See Fees.) 
 Oral statement, 
 
 no attention will be paid to, if there is any disagree- 
 ment or doubt 1 
 
 Patents, 
 
 who may obtain 24 
 
 in ease the inventor dies 25, 2(i 
 
 to assignee and inventor 26 
 
 to joint inventors 28 
 
 for what causes granted or refused 24 
 
 for designs. (See Designs.) 
 
 showing but not claiming invention 75 
 
 Issue 1 64 
 
 if not paid on or before Thursday, too late for the 
 
 weekly issue 167 
 
 final fee must be paid or patent will be withheld 167 
 
 weekly issue of, will close on Thursday 167 
 
 will bear date fourth Tuesday thereafter 167 
 
 will issue upon payment of final fee 164 
 
 will not be withdrawn from issue without apj)roval of 
 
 Commissioner 78, 165,166 
 
 Date, duration and form, 
 
 will bear date not later than si.\ montlis from allow- 
 ance 167 
 
 not antedated 167 
 
 will contain title and grant for seventeen years 168 
 
 design patents, for three and a half, seven, and fourteen 
 
 years 80, 168 
 
 printed copy of specification and drawings will he at- 
 tached 168 
 
 Delivery, 
 
 delivered on the day of its date to 160 
 
 Correction of errors in, 
 
 mistakes in, incurr^nl through fault of the office, will be 
 
 corrected by certificate attached or by reissue 170 
 
 22 305
 
 Rule 
 
 I 'ATEXTS — Con t in ued. 
 
 not iiK-urred throui>h fault of the oflfice will not be cor- 
 rected 170 
 
 Petition, 
 
 form and substance of 33, 86 
 
 on formal questions 142 
 
 Personal interviews. (See Hearing and Interviews.) 
 
 personal attendance unnecessary 4 
 
 Postage, etc., 
 
 must be paid in full 3 
 
 Powers of attorney. (See Attorneys.) 
 
 Preliminary statement, 
 
 how prepared, filed, and opened 110 
 
 may be amended if defective 112, 113 
 
 failure to file 114, 115 
 
 motion to postpone filing of 104 
 
 not evidence 117 
 
 Priority of invention, 
 
 judgment of, interference cases 125 
 
 protests against issue of patents 12 
 
 Publications, 
 
 Official Gazette 198 
 
 annual index 198 
 
 monthly volumes of specifications and drawings 198 
 
 photolithographic copies of drawings 52 
 
 Records, etc., 
 
 of office and models of patented inventions open to in- 
 spection 14, 16 
 
 mutilation of 73 
 
 may be used as evidence (e) . . 154 
 
 notice of intent to use them to be given (e) . . 154 
 
 Reconsideration, 
 
 of cases decided by a former Commissioner 147 
 
 of atlverse decision upon a preliminary question upon re- 
 quest of applicant 65, 67, 69 
 
 Reexamination, 
 
 of application will be made if insisted upon 65 
 
 References, 
 
 will he given upon rejection 65 
 
 upon rejection for want of novelty, best will be cited . 66 
 
 to be specifically stated 66 
 
 copies of patents, etc., referred to in, will })e furnished 
 
 if in possession of office *i^ 
 
 30G
 
 Bule 
 
 Eeferexce letters, 
 
 in drawings, directions (f, g) . . 52 
 
 Kefundment, 
 
 of money paid by mistake 195 
 
 Eehearings, 
 
 on appeal 140 
 
 Eeissues, 
 
 to whom granted and in what cases 85 
 
 when the inventor or assignee must sign application . . . 53, 85 
 
 what must accompany the petition 86 
 
 prerequisites 87 
 
 affidavits in support of application 87 
 
 new matter not to be introduced 88 
 
 amendments may be made 88 
 
 separate patents for distinct parts may be issued 89 
 
 the original patent must be surrendered 91 
 
 loss of original patent must be shown and a copy fur- 
 nished 91 
 
 what may be embraced 92 
 
 drawings and model to be amended only by each other 88 
 
 drawings must be new 53 
 
 take precedence in order of examination 03 
 
 original claims subject to reexamination 90 
 
 when in interference 94 
 
 to correct patent 170 
 
 Rejections and References. (See References, Adverse De- 
 cision.) 
 
 formal objections 04, 67 
 
 applicant will be notified of rejection, with reasons and 
 
 references 65 
 
 on rejection for want of novelty best references will he 
 
 cited 00 
 
 requisites of notice 06 
 
 on account of invention shown by others but not 
 
 claimed, how overcome 75, 76 
 
 after two rejections apjieal may be taken from Exam- 
 iner to Examiners in Chief 133 
 
 Renewal, 
 
 of application abaudoncil by failui'e to complete or pros- 
 ecute 172 
 
 of application forfeited by nonpayment of final fee . . 175, 176 
 
 Reservation clauses not permitted 44 
 
 307
 
 Bule 
 
 Service of notices, 
 
 in interference cases 97, 103 
 
 of appeal to Court of Appeals of District of Columbia 149 
 
 in contested cases 153 
 
 proof of service 1 53 
 
 for taking testimony (b) . . 154 
 
 of discovery upon appeal of grounds for granting or re- 
 fusing letters patent not involved in the appeal .... 139 
 
 Signatures, 
 
 to applications 26, 30, 85 
 
 to abandonments 60, 171 
 
 to specifications 40 
 
 to drawings (g) . . 50, 52 
 
 to models 58 
 
 what amendments require signature of applicant . .60, 107, 182 
 
 to disclaimers 107, 182 
 
 to concessions of priority 125 
 
 Specification, 
 
 requirements of 34-37 
 
 must set forth the precise invention 35 
 
 must point out new improvements specially 36 
 
 must refer by letters or figures to drawings 38 
 
 must conclude with specific and distinct claims 37 
 
 order of an-angement in framing 39 
 
 how and by whom signed 40 
 
 must be legibly written on but one side of the paper ... 45 
 
 amendments to, must conform to drawings or model, if 
 
 any 70 
 
 must be on separate sheets of paper . . 73 
 
 not to be returned after completion 72 
 
 erasures and insertions to be clearly specified 45, 73 
 
 not to be made by applicant . . 73 
 
 to be rewritten, if necessary 74 
 
 new, required in renewal application after abandonment 173 
 original, may be used in renewal application after for- 
 feiture 176 
 
 Specimens, 
 
 of composition of matter to be furnished when required 62 
 
 Subpoenas, 
 
 for witnesses to he issued liy clerks of ITnited States 
 
 courts 160 
 
 Substitution of attorney, 
 
 by attorney only when he has power of substitution ... 19 
 
 308
 
 Bule 
 
 Telegrams, 
 
 not received before 3 p. in. answered the following day 13 
 Testimony, 
 
 rules for taking and transmitting, in extensions, inter- 
 ferences, and other contested cases 154 
 
 notice-waiver, reasonable time to travel (a) . . 154 
 
 service of notice (b) . . 154 
 
 officer 's certificate (c) • • 154 
 
 time for taking, in interference cases 118 
 
 failure to take . 119 
 enlargement of 
 
 time for taking 121 
 
 motion to extend time for taking (d) , . 154 
 
 ofiicial records, printed publications, etc., used as evi- 
 dence (e) . . 154 
 
 formalities in preparing dei^ositions 155, 156 
 
 relatives of interested parties not competent as of- 
 ficials to take 156 
 
 may be used in other interferences when relevant 157 
 
 evidence on hearing must comply with rules 159 
 
 formal objections to 159 
 
 copies of testimony to be filed in the office twenty days 
 
 before hearing 162 
 
 how prepared 162 
 
 to be inspected by parties to the case only 161 
 
 can not be withdrawn ; printing of 161, 162 
 
 subpoenas for witnesses 160 
 
 In foreign countries, 
 
 by leave of the Commissioner, granted only upon motion 
 
 duly made (a) . . 158 
 
 interrogations (c) . . 158 
 
 papers completed, Commissioner will send them to for- 
 eign official (d) . . 158 
 
 who will return depositions to him under seal . . . (d) . . 158 
 
 stipulations as to written interrogations (e) . . 158 
 
 weight given to testimony in foreign country . . . . (f ) . . 158 
 Translations, 
 
 only made for official use 197 
 
 WiTHDRAAVAL, 
 
 cases withdrawn from issue, how and when 78, 165, 166 
 
 309
 
 INDEX TO FORMS. 
 
 Form 
 
 Petition by sole inventor 1 
 
 by joint inventors 2 
 
 by an inventor for himself and an assignee 3 
 
 with power of attorney 4 
 
 by an administrator 5 
 
 by an exeoutor 6 
 
 by a guardian of an insane person 7 
 
 for a reissue (by an inventor, with assent of assignee) 8 
 
 for a reissue (by assignee) 9 
 
 for a patent for a design 10 
 
 for the renewal of an application 12 
 
 Specification for an art or process IB 
 
 for a machine (with drawings) H 
 
 for a composition of matter 15 
 
 for a design (with drawings) 17 
 
 Oath, by a sole inventor (citizen of the United States or 
 
 alien) 18 
 
 by an applicant for a patent for a design 19 
 
 by an applicant for reissue (inventor) 20 
 
 by an applicant for reissue (assignee) 21 
 
 supplemental 22 
 
 as to loss of letters patent 23 
 
 by an administrator as to loss of letters patent 24 
 
 Power of attorney after application filed 25 
 
 revocation of 26 
 
 Amendment 27 
 
 Disclaimer after patent 28 
 
 during interference 29 
 
 A])peals from Principal Examiner to Examiners in Chief . . 30 
 Examiner of Interferences to Examiners in 
 
 Chief 31 
 
 Examiners in Chief to Commissioner 32 
 
 Examiners in Cliicf to Commissioner (inter- 
 ference) 33 
 
 Petition from Principal Examiner to the Commissioner .... 34 
 
 310
 
 Eule 
 
 Petition for copies of rejected and aliamldned apidicutiniis . 35 
 
 Preliminary statements of domestic inventor 36 
 
 foreign inventor 37 
 
 Assignments, 
 
 of entire interest before issue of jiatcnt 38 
 
 in letters patent 39 
 
 of undivided interest in letters patent 40 
 
 of territorial interest after grant of jjatent 41 
 
 License, shop-right 42 
 
 License— not exclusive — with royalty 43 
 
 Depositions, notice of taking testimony 44 
 
 form of 45 
 
 certificate of officer . 46 
 
 INDEX TO RULES, INSTRUCTIONS, AND FORMS IN AP- 
 PEALS TO COURT OF APPEALS OF TTTE 
 DISTRICT OF COLUMBIA. 
 
 Page 
 Rules : 
 
 Appeals from the Commissioner 95 
 
 Opinions of lower court and Commissioner made part of 
 
 record 96 
 
 Sundays and legal holidays excluded 97 
 
 INSTRUCTIONS TO APPELLANTS 97 
 
 Forms : 
 
 Appeals, notice of, to Court of Appeals of District of 
 
 Columbia {ex parte) 98 
 
 petition for, to Court of Appeals of District 
 
 of Columbia {ex parte) 99 
 
 notice of, to Court of Aj^peals of District of 
 
 Columbia (interference) 100 
 
 peMtion for, to Court of Appeals of Distrii-t 
 
 of Columbia (interference) 1 U 
 
 311
 
 GENERAL INDEX. 
 
 Section 
 ABANDONMENT, 
 
 of application — ground for dissolution 77 
 
 ABANDONED EXPERIMENT 156 
 
 ADMISSIONS, 
 
 of counsel 201 
 
 AMENDMENT, 
 
 of issue (See Issues) 52-64 
 
 of preliminary statement 46-49 
 
 of motions 244a 
 
 of assignment of errors 248 
 
 AGENT, 
 
 reduction to practice by 138 
 
 ANTICIPATION, 
 
 anticipating patents on motion to dissolve 84 
 
 APPLICATION, 
 
 continuous — filing date 95 
 
 divisional — filing date 8-93 
 
 sole and joint 16 
 
 earlier application as evidence 92-94: 
 
 diligence in filing 122-125 
 
 delay in filing — discrediting invention 187 
 
 diligence in prosecuting 1 26 
 
 foreign as evidence 99 
 
 Al'i'EAL, 
 
 oil iiiotiiiii to anuMid issue 53 
 
 effect of stay as to time for appeal 227 
 
 estoppel by failure to 242 
 
 to KxamiuerH in Chief 245 
 
 to Court of Appeals, D. C 246 
 
 312
 
 Section 
 AI'PE AL — Cu)i 1 in ued. 
 
 wliat questions may be prcsente<l on 192 
 
 wliat not eonsidcioil 217 
 
 assignment of errors 248 
 
 reversal on (luestions of fact 249 
 
 reversal on questions of law 2o0 
 
 reco rd on appeal 251 
 
 extending time for filing record 252 
 
 only questions raised below considered 247a 
 
 to the Commissioner 253 
 
 patentability of the issue 85-254 
 
 by petition 255 
 
 right of appeal when denied 256 
 
 on right to make the claims 257 
 
 on motion to amend statement 53 
 
 ASSIGNMENT OF ERROES 248 
 
 ASSIGNEE, 
 
 reduction to practice by 137 
 
 ATTORNEY, 
 
 diligence in filing application 125 
 
 admissions of at hearing 201-242a 
 
 BURDEN OF PROOF 91 
 
 as between applicant and patentee 96 
 
 beyond a reasonable doubt 97-159 
 
 as to originality 159 
 
 motion to shift 98 
 
 on foreign application 99 
 
 CLAIMS. (See Counts — Issues), 
 
 right to make 87 
 
 appeal on 257 
 
 construction of (See Issues). 
 
 suggested by Examiner — when 13 
 
 presented after termination of interference 233 
 
 effect of putting claim in interference 12 
 
 Delay in copying claims of a patent 185 
 
 CONCEPTION, 
 
 evidence of • 101 
 
 how proven 102 
 
 importance of 105 
 
 313
 
 Section 
 
 CONCEALMENT 157 
 
 COEEOBORATION, 
 
 what is 1U3 
 
 who may be corroborating; witnesses 104 
 
 COUNTS. (See Issues— Amendment), 
 
 what should be made 6 
 
 not forming a part of the controversy 11 
 
 rejected claims excluded as 7 
 
 construction of 27-39 
 
 adding new 52-64 
 
 new preliminary statement — when 42 
 
 must be such that all parties can make 62 
 
 vague and indefinite 76 
 
 COMMISSIONER, 
 
 supervisory authority of 255 
 
 appeal to 253 
 
 petitions to 255 
 
 jurisdiction of pending appeal 210 
 
 CROSS-EXAMINATION 174 
 
 DATE, 
 
 of filing — what is 92 
 
 of earlier application 92 
 
 of divisional aiiplicatiou 93 
 
 of invention 102 
 
 DECLARATION. (See Interference), 
 
 preliminaries to 9 
 
 DELAY (See Diligence), 
 
 in lednction to practice 115 
 
 ]ioverty as excuse for 116 
 
 shifting res])onsibility for IIS 
 
 time to exj)eriment 120 
 
 unexplained — effect 124 
 
 in filing discredits iiivcntorsliip 187 
 
 in coj)ying claims of a patent — esto|)])i'l 1S5 
 
 sickness as excuse for 119 
 
 314
 
 Section 
 
 DILIGENCE— GENERALLY 1U6 
 
 to what relates 107 
 
 of whom required 108 
 
 when not applicable 109 
 
 at what time required 110 
 
 comparative Ill 
 
 work on auxiliary inventions — effect 112 
 
 work on other forms of the invention — effec-t 113 
 
 work on other inventions — effect 114 
 
 delay for business convenience — effect 115 
 
 commercial diligence 117 
 
 poverty as affecting 116 
 
 shifting responsibility for lack of 118 
 
 sickness as excuse for lack of 119 
 
 Kinds of Diligence, 
 
 reasonable diligence 121 
 
 in filing application 122 
 
 of attorney 125 
 
 in prosecuting application 126 
 
 in reduction to practice 133 
 
 DISCLAIMER 88 
 
 judgment under 203 
 
 DISCLOSURE (See Conception— Originality) 102 
 
 failure to disclose 186 
 
 DISSOLUTION 65 
 
 motion to dissolve 66-68 
 
 extending time for filing 69 
 
 rehearing on 221 
 
 amendment of motion 70 
 
 failure to argue questions raised — effect 204 
 
 references on 67 
 
 grounds for, 
 
 inoperativeness 71 
 
 informality in declaring 72 
 
 what is not 78 
 
 defects in oath as 73-75 
 
 vague and indefinite issue 76 
 
 on abandoned application 77 
 
 non-patentability of the issue 79-154a 
 
 by whom determined 80 
 
 315
 
 Section 
 DISSOLUTIOX— Co/i<i«we(7. 
 
 nature of right to question 81 
 
 effect on moving party 82 
 
 when motion should be made 83 
 
 character of showing required 84 
 
 appeal on 85-254 
 
 wlien considered by Commissioner 8G 
 
 no right to make the claims 87-154a 
 
 appeal on 257 
 
 miscellaneous motions to dissolve 89 
 
 DIVISIONAL APPLICATION— EVIDENCE 93 
 
 DOCUMENTABY EVIDENCE (See Evidence) 127 
 
 DRAWINGS 131 
 
 EMPLOYEE AND EMPLOYER— RIGHT TO INVEN- 
 TION 164 
 
 failure to testify 183 
 
 EVIDENCE 90 
 
 confined to what questions 100 
 
 burden of proof (See Burden of Proof) 91 
 
 as between applicant and patentee 96 
 
 beyond a reasonable doubt 97-159 
 
 earlier application as 92-94 
 
 divisional application as 93 
 
 continuous apjilieation as 95 
 
 disclosure 102 
 
 corroboration of inventor 103-104 
 
 conception (See Conception). 
 
 diligence evidence as to (See Diligence). 
 
 judicial notice 243 
 
 documentary 127 
 
 official record 94 
 
 letters 127 
 
 photographs 129 
 
 blue prints 130 
 
 drawings 131 
 
 exhibits 132-251 
 
 of reduction to practice 133-140 
 
 of tests (See Tests). 
 
 316
 
 Section 
 EVIDENCE— CoHif/iHctZ. 
 
 abandoned oxpcrimtMit 156 
 
 concealment . . ■ • 1 57 
 
 originality (See Originality) 158 
 
 employer and emj)loyee — right to invention 164 
 
 inoperativeness — evidence as to 165 
 
 public use 166-168 
 
 witnesses (See Witnesses). 
 
 examination of witnesses 174 
 
 failure to produce sketches — effect 182 
 
 failure to rebut 183 
 
 rebuttal evidence 183-193 
 
 sur-rebuttal 193a 
 
 relevant to the issue — what is 192 
 
 irrelevant 191 
 
 testimony taken in other interferences 198 
 
 admissions of counsel 201-242a 
 
 newly-discovered evidence 216 
 
 objections to 191b 
 
 ESTOPPEL 242 
 
 by motion to dissolve 82 
 
 by laches in copying claims of a patent 185 
 
 by failure to make claim under Eule 109 242a 
 
 EXHIBITS— MARKING OF 132-251 
 
 failure to produce — effect 182 
 
 EXPERIMENT— ABANDONED 156 
 
 experimenting as excuse for delay 120 
 
 EXPERT TESTIMONY 191a 
 
 EXPERIMENTAL USE 167 
 
 FORMS, References are to pages 
 (For other forms, see Rules of Practice.) 
 
 Affidavit of priority 154 
 
 Motion to amend issue 155 
 
 to substitute an application 156 
 
 to extend time for filing preliminary statement ... 157 
 
 to amend preliminary statement 157 
 
 to dissolve interference 158 
 
 to extend time for taking testimony 159 
 
 to use testimony taken in another interference .... 160 
 
 317
 
 Sectiou 
 FOBMS—Coininued. 
 
 to take special testimony 161 
 
 to shift burden of proof 161 
 
 to take testimony abroad 162 
 
 for judgment on the record 163 
 
 notice of hearing 164 
 
 proof of service 164 
 
 stipulation 165 
 
 to dispense with printing record 165 
 
 to consolidate interferences 166 
 
 to suppress testimony 167 
 
 petition for rehearing 16S 
 
 HEAEING 199-207 
 
 postponement of 200-207 
 
 judgment without 203 
 
 statement of Examiner at — review 205 
 
 questions considered at 206 
 
 re-hearing (See Ee-hearing) 213 
 
 on motion to dissolve 206 
 
 IMPEACHMENT, 
 
 of witness 177 
 
 by previous declarations 188 
 
 IMPEEFECTIONS, 
 
 in mechanism 134 
 
 INOPEEATIVENESS, 
 
 as ground for dissolution 71 
 
 evidence of — how presented 165 
 
 INTEEVENING EIGHTS 123 
 
 INTEEFEEENCE, 
 
 origin of 1 
 
 statute 2 
 
 summary of proceedings 3 
 
 by whom declared 4 
 
 what applications included 5 
 
 counts — what should be made 6 
 
 parties to — arrangcnient of (See Parties). 
 
 no interference wIhmi 7 
 
 declaration — prior ajiplication 8 
 
 318
 
 Section 
 INTERFEEENCE— Cojitivi HCfZ. 
 
 effect of putting claim in 12 
 
 sug^gestion of claims under Rule 96 13 
 
 adding counts under Eulc 109 52-64 
 
 dissolution (See Dissolution). 
 
 successive interferences 228-230 
 
 when allowed 230 
 
 what is determined by 229 
 
 judgment in 231 
 
 effect of judgment 236 
 
 INVENTION— EIGHT TO (See Employee and Employer) 164 
 
 date of 102 
 
 disclaimer of 88 
 
 test of (See Test). 
 
 conception of (See Conception). 
 
 conduct inconsistent with claim to 184 
 
 failure to assert claim to 185 
 
 failure to disclose 186 
 
 ISSUE (See Counts, Claims), 
 
 what are 23 
 
 construction of 24 
 
 broadly construed 25 
 
 exception to broad construction 35 
 
 limitations upon 26-35 
 
 should not be given forced meaning 27 
 
 where applicant copies claims of patent 28 
 
 in the light of what application 29 
 
 what elements are material 30 
 
 different meanings of claims 31 
 
 in new art 32 
 
 prior art when considered 33 
 
 vague — amendment of 34-76 
 
 amendment of issue, Eule 109 52 
 
 after motion to dissolve 64 
 
 when motion to amend must be made 54 
 
 questions considered 63 
 
 appeal 53 
 
 re-opening to amend 55 
 
 after thirty day limit 56 
 
 after motion to dissolve 57 
 
 after taking testimony 58 
 
 319
 
 Section 
 iSSVE—Contitiued. 
 
 substitution of patentable for unpatentable 59-61 
 
 must be such that all parties can make 62 
 
 substitution by stipulation 60 
 
 JUEISDICTION, 
 
 over patentability of the issue 80 
 
 petition to restore 202-212 
 
 of Examiner of Interferences 208 
 
 of Examiners in Chief 209 
 
 of Commissioner pending appeal 210 
 
 of courts over Avitnesses in interferences 211 
 
 JUDGMENT, 
 
 on the record when 237-241 
 
 in interferences 229-231 
 
 when res adjudicata (See Ees Adjudicata). 
 
 effect of 236 
 
 on the record when not permitted 237 
 
 what questions are raised by motion 238 
 
 for failure to file statement 239 
 
 for failure to print testimony 240 
 
 for failure to take testimony 241 
 
 JUDICIAL NOTICE 243 
 
 LACHES (See Diligence). 
 
 in copying the claims of a patent 185 
 
 LETTERS, 
 
 as evidence 127 
 
 copies of 127 
 
 MACHINE, 
 
 incomplete — reduction to jiractice 140 
 
 MECHANICAL EQUIVALENT 5 
 
 MODEL, 
 
 as reduction to j>racti(e 139 
 
 MOTIONS 244 
 
 forms of (See Forms). 
 
 .']20
 
 Section 
 MOTIONS— Continiior. 
 
 what questions may l)e presented by 231a 
 
 to amend motion 244a 
 
 NOTICE, 
 
 to parties 17 
 
 service of — how made 19-20 
 
 of petition 21 
 
 sufficiency of 22 
 
 of taking testimony 18 
 
 of motions 21 
 
 OATH, 
 
 defects in as ground for dissolution 73 
 
 supplemental oath 75 
 
 OPEEATIVENESS (See Inoperativeness) 71 
 
 OEIGINALITY 158 
 
 burden of proof as to 159 
 
 lack of — how established 160 
 
 opportunity of derivation 161 
 
 failure to rebut lack of — effect 162 
 
 proof of charge of lack of 163 
 
 presumption from failure to deny charge 181 
 
 as between employer and employee 164 
 
 presumption from following invention of another . 190 
 
 PATENTABILITY (See Dissolution— Appeal), 
 
 claims must be patentable 7 
 
 substitution of patentable for unpatentable 59-61 
 
 appeal on patentability 85-254 
 
 PARTIES, 
 
 arrangement of 14 
 
 who are proper 14 
 
 new parties 15 
 
 sole and joint applicants 16 
 
 notice to (See Notice) 17 
 
 service of — how made 19-20 
 
 as witnesses 179 
 
 conduct of, inconsistent with claim to invention 184 
 
 failure to assert claim to invention 185 
 
 23 321
 
 Section 
 PETITION, 
 
 notice of 21 
 
 to restore jurisdiction 202-212 
 
 what questions presented by 255 
 
 PHOTOGEAPH, 
 
 as evidence 129 
 
 POVERTY, 
 
 as excuse for delay 116 
 
 PROCESS, 
 
 test of 147 
 
 PRELIMINARY STATEMENT 36 
 
 motion to extend time for filing 39-40 
 
 ■when extension is permissible 41 
 
 notice of motion 17 
 
 who may sign . 38 
 
 new statement when 42 
 
 as substitute for affidavit under Rule 75 43 
 
 inspection of 45 
 
 allegations in 37-44 
 
 amendment of _• 46 
 
 motion to amend — shoAving required 47 
 
 review of 51 
 
 insufficient showing 48 
 
 when permitted 49 
 
 after taking testimony 50 
 
 appeal on motion 53 
 
 PRESUMPTIONS ARISING, 
 
 from failure to call witness 180 
 
 from failure to deny charge — lack of originality 181 
 
 from failure to produce sketches 182 
 
 from failure to rebut 188 
 
 from failure to disclose invention 186 
 
 from experience and knowledge 189 
 
 as to originality 190 
 
 from failure to assert claim to invention 185 
 
 PRIORITY (See Evidence, Reduction to Practice, Tests, 
 Appeal), 
 
 322
 
 Section 
 PRIORITY— C'ovi t inued. 
 
 Kvidencc as to 100 
 
 ahiiiuloiied experiment 156 
 
 right to make claims^ — practice 87, 257 
 
 judgment of — effect 236 
 
 PUBLIC USE, 
 
 wliat is 166 
 
 experimental 167 
 
 proceedings to establish 168 
 
 REASONABLE DOUBT— PROOF 97-159 
 
 RECORD, 
 
 suppressed testimony how retained in 197 
 
 on appeal 251 
 
 extending time for tiling 252 
 
 REBUTTAL, 
 
 evidence in 193 
 
 failure to rebut 183 
 
 sur-rebuttal 193a 
 
 REDUCTION TO PRACTICE, 
 diligence in (See Diligence) 
 
 what is actual 133 
 
 imperfect mechanism 134 
 
 crude mechanism 135 
 
 in foreign country 136 
 
 by assignee 137 
 
 model as 139 
 
 incomplete machine 140 
 
 test of device (see Tests), 
 
 abandoned experiment 156 
 
 concealment 157 
 
 by employee or employer 164 
 
 RES JUDICATA, 
 
 What judgments are 228-232 
 
 claims presented after interference 233 
 
 motion to dissolve res judicata 234 
 
 when prior motion is 235 
 
 323
 
 Section 
 
 RE-HEARING 213 
 
 when motion for may be brought 214 
 
 appeal on 215 
 
 newly discovered evidence as ground for 216 
 
 insufficient grounds for 218 
 
 stay of proceedings 219 
 
 on account of suppressing testimony 220 
 
 on motion to dissolve 221 
 
 when second interference is improperly declared 222 
 
 REOPENING, 
 
 to amend issue 55 
 
 RIGHT TO MAKE CLAIMS (See Dissolution, Appeal) . . 257 
 
 broad construction on 35 
 
 RULES, 
 
 75 affidavit under 43 
 
 96 decisions under 13 
 
 107 Disclaimer 88 
 
 109 amendment of issue 52 
 
 estoppel by failure to make claims 242a 
 
 110 preliminary statement 36 
 
 113 amendment of preliminary statement 46 
 
 122 dissolution 65-87 
 
 124 decisions under 53 
 
 130 decisions under 154a 
 
 154 introduction of official records 94 
 
 157 testimony in another interference 198 
 
 SICKNESS, 
 
 as excuse for delay 119 
 
 STAY OF PROCEEDINGS, 
 
 generally 223 
 
 insufficient grounds for 224 
 
 to whom it applies 225 
 
 resumption after stay 226 
 
 effect of stay as to appeal 227 
 
 when to consider reference 83 
 
 STIPULATION, 
 
 amending issue 60 
 
 324
 
 Section 
 TESTIMONY (See Witnesses), 
 
 notice of taking of 18 
 
 relevant to issue — what is 192 
 
 irrelevant 191 
 
 impeachment of witness 177-188 
 
 suppression of 194 
 
 grounds for 195 
 
 insufficient grounds 196 
 
 how retained in record 197 
 
 retaking of 194a 
 
 of experts 191a 
 
 objections to 191b 
 
 rebuttal 193 
 
 sur-rebuttal 193a 
 
 taken in another interference — use of 198 
 
 official records as evidence 94 
 
 TESTS 141 
 
 kind of test required 142 
 
 parts broken in — effect 143 
 
 what must include 144 
 
 when must be made 145 
 
 of chemical compound 146 
 
 of process 147 
 
 two forms of machine — one test 148 
 
 evidence of success of 149 
 
 opinions as to 150 
 
 description of invention tested 151 
 
 made at time of trial 152 
 
 presumption as to subsidiary parts 153 
 
 discrediting test 154 
 
 operation of similar devices 155 
 
 abandoned experiment 156 
 
 WAIVER, 
 
 by failure to argue questions raised 204 
 
 WITNESSES, 
 
 jurisdiction of courts over in interferences 211 
 
 corroborating 104 
 
 subpoena for 170 
 
 forcing attendance 171 
 
 refusal to testify . . • • 172 
 
 325
 
 Section 
 
 WITNESSES— Co/iiim/PfZ. 
 
 solicitor of patents as 173 
 
 cross-examination of 174 
 
 acts and conversations of 175 
 
 showing hostility, bias, prejudice, etc 176 
 
 impeachment of 177 
 
 by previous declarations 188 
 
 surprise by hostile 178 
 
 failure to call— effect 180 
 
 party as 1 79 
 
 conduct inconsistent with claim to invention 185 
 
 failure to assert claim to invention 185 
 
 326
 
 UC SOUTHERN REGIONAL LIBRARY FACILITY 
 
 AA 000 857 041 8 
 
 \