any other question of fact, upon a preponderance of evidence. Clark v.
Broad, 217.
51. CONFLICT OF TESTIMONY.-Where parties to an interference flatly con-
tradict each other upon a material point, the preponderance of evidence
may be determined by reference to surrounding circumstances and the
natural probabilities. Ligowsky v. Peters v. Hisey, 220.
52. EXPERIMENTS IN ANOTHER COUNTRY.-When an inventor, during the
course of his experiments, goes abroad and pursues his work in a for-
eign country and successfully opposes a motion to take testimony abroad
with reference to his transactions there, evidence as to what occurred
there will not be considered on behalf of the applicant in deciding a sub-
sequent question of priority of invention. Id.
53. AMENDED CLAIMS.-Presenting at the Patent Office an inferior form of
invention while claiming to have a better form in possession, discussed
with reference to Campbell v. James (C. D., 1882, 67; 104 U. S., 356.) Id.
54. DISCLOSURE OF INVENTION.-To constitute a disclosure of an invention of
improvements of a known machine it is not necessary that sketches
made and shown by the inventor should have shown an organized ma-
chine. It is sufficient if the invention of the particular improvements
is clearly and intelligently shown. Ligowsky v. Peters v. Hisey, 225.
55. EVIDENCE-AMBIGUOUS TESTIMONY.-When a cross-examiner allows an
ambiguous answer of the witness to go unexplained, the mere uncer-
tainty in the witness's answer will not necessarily be construed against
him. His testimony will be considered with reference to the probabili-
ties and surrounding circumstances. Woodward v. Burton, 231.
56. MOTION TO DISSOLVE-APPEAL.-A party who moves to dissolve an in-
terference upon two grounds and has his motion granted upon one of
them has no right of appeal upon the other. Ries v. Thomson, 233.
57. AFFIDAVIT REQUIRED BY RULE 94.-The affidavit required by paragraph
2 of Rule 94 does not call for the showing of facts required by Rule 75
and is merely an ex parte matter. The right to call for such showing is
discretionary with the Office. Id.
58. PRELIMINARY STATEMENT-AMENDMENT.-When an interference has so
far advanced that the junior party has taken his testimony, the Patent
Office will not permit the other party to amend his preliminary state-
ment by the addition of facts presumably within his knowledge at the
time when the statement was originally filed. Washburn v. Hadfield, 234.
59. SAME. The nature and theory of a preliminary statement discussed and
commented on. Id.
60. MOTION TO DISSOLVE.-Patentability is not in question under a motion
to dissolve an interference on the ground that no interference in fact
exists. Forslund v. Matthews, 237.
61. PRIORITY OF INVENTION-EVIDENCE.-When an applicant for a patent
seeks to overcome a patent already granted he must make out a case
both as to conception and diligence in reduction to practice which does
not admit of a reasonable doubt. (Following Hunter v. Jenkin, ante, 157;
56 O. G., 1705.) Hunter v. Van Depoele, 238.
62. ORDER TO PRODUCE EXHIBITS UNDER A STIPULATION.-When parties
to an interference have entered into a written agreement to produce cer-
tain paper exhibits on file in the Patent Office at any session duly held
for the taking of testimony, the Commissioner will enforce the agree-
ment by proper order upon the refusal of a party so bound to produce
such papers. Brungger v. Smith, 241.
INTERFERENCE WITH PRIOR PATENT.-See Suits to Annul Patents.
INTERFERING PATENTS.-See Suits for Infringement 3, 4, 16.
1. INTERFERENCE-PLEADINGS.-Where a suit was instituted under Revised
Statutes, section 4918, to procure an adjudication of invalidity of a patent
on the ground of interference with plaintiff's prior patent, and where the
defendant filed an answer denying the validity of the prior patent and
affirming the validity of his own patent, and where proofs were taken by
both parties, Held that the defendant may obtain affirmative relief under
that provision of the statute that "the court, on notice to adverse parties,
may adjudge and declare either of the patents void," and Held,
further, that the court will refuse a motion to dismiss by the plaintiff if it
appears that the granting of such motion will prejudice the rights of the
defendant. *Electrical Accumulator Company v. Brush Electric Company,
2. SAME.-Allegations that plaintiff's assignor obtained a patent; that de-
fendant obtained patents of later date which interfere with plaintiff's
rights; that defendant is making and selling machines under his patent,
and that he has in other ways disturbed the plaintiff in the use and en-
joyment of the privileges conferred by his patent, sufficiently charge
interference. *Stonemetz Printers' Machinery Company v. Brown Folding
Machine Company, 446.
INVALID PATENTS. See Construction of Specifications and Patents, 6, 7, 8;
Particular Patents, 1, 15, 16, 20; Reissues, 3.
INVENTION. See Construction of Specifications and Patents, 6, 7, 8; Designs, 1,
2, 3; First and Original Inventor, 1, 2, 4; Patentability; Subsequent
Patents, 1, 2.
1. AGGREGATION.-There is no invention in aggregating in a single vendible
commodity magnesium adapted to use for flash-light purposes and put
up in a case or shell and a time-fuse attached to said case or shell for
communicating fire to the magnesium. The improvement may possess
commercial advantages, but it lacks the quality of invention. Ex parte
White, 7.
2. MECHANICAL SKILL.-Where it appeared that all that applicant professed
to do was to take an old and well-known bolt and nut and to screw them
together in the ordinary way, and then to take an old and well-known
chisel and make an incision in the bolt lengthwise and nearest the upper
surface of the nut in order to prevent the bolt from rotating, Held that
applicant had only displayed the expected skill of the calling and ac-
complished what a skillful mechanic would do whenever required. Ex
parte Shields, 8.
3. ANALOGOUS USE.-The application of an old process, machine, or device
to a like or analogous purpose, with no change in the mode of applica-
tion and no result substantially different in its nature, will not sustain a
patent, even if the new form of result has not before been contemplated.
*Consolidated Roller-Mill Company v. Walker, 310.
4. IMPROVEMENTS.-The mere carrying forward of an original conception, re-
sulting in an improvement in degree simply, is not invention. *Id.
5. AGGREGATION.-A combination of old elements, when no new function is
performed by the combination, is a mere aggregation, and hence not
patentable. *Union Edge Setter Company v. Keith, 340.
6. DOUBLE USE.-The promotion of an old device to a new sphere of action,
in which it performs a new function, involves invention, but the trans-
fer or adaptation of the same device to a similar sphere of action, where
it performs substantially the same function, does not involve invention.
*Western Electric Company v. La Rue, 368.
7. IMPROVEMENT IN SUPERIORITY OF WORKMANSHIP OR FINISH.-Where
the patent covered an improvement which was simply a slight advance
over the corresponding device which had been in public use for over two
years, covering a mere superiority in workmanship or finish over the
same, Held that something more was required to support a patent. *In-
ternational Tooth Crown Company v. Gaylord, et al., 390.
8. STATE OF THE ART.-It being old to bind the cut edges of cloth, either for
ornament or to prevent raveling and also old to make dress shirts by secur-
ing a linen bosom to the body of the shirt by a row of stitches passing
through the edge of the bosom, Held that attaching the bosom to the
shirt by a separate line of stitches through the binding involves nothing
which under a most liberal construction could be held to be an exercise
of the inventive faculty. *Cluett et al. v. Claflin et al., 397.
9. REDUCTION TO PRACTICE.-A conception of the mind is not an invention
until represented in some physical form, and unsuccessful experiments
or projects, abandoned by the inventor, are equally destitute of that
character. * Clark Thread Company v. Willimantic Linen Company et al.,
449.
10. CHANGE OF MATERIAL.-No valid claim can be founded upon the use of
an inferior article when it is shown that the use of the superior article
is old. * Brush Electric Company v. Electrical Accumulator Company et
al., 477.
11. SAME.-A mere change of material with no advantages except such as
were known in advance would be attained by the selection of the ma-
terial in question does not confer patentability. Ex parte Foss, 153.
12. PROCESS.-If one of the steps of a process is novel for the purposes in
hand, it gives novelty to the process considered as a whole. Ex parte
Kalteyer and Bartholomew, Jr., 202.
13. DOUBT RESOLVED IN INVENTOR'S FAVOR.-When clear differences of
construction between the device claimed and the references cited against
it are such that a doubt is raised as to whether they constitute a pat-
entable invention, the applicant should have the benefit of it. Ex parte
Fanshawe, 203.
14. CHANGE OF STRUCTURE.-A conceded difference of construction between
the device claimed and the references cited, together with a clear ad-
vantage as a result of it, constitutes patentable novelty. Ex parte
Scriven, 204.
15. TEST OF INVENTION.-The word "invention" cannot be defined in such
a manner as to afford any substantial aid in determining whether a
particular device involves an exercise of the inventive faculty or not.
* McClain v. Ortmayer, 532.
16. PUBLIC APPRECIATION-EVIDENCE OF UTILITY.-While in a doubtful
case the fact that a patented article has gone into general use is evi-
dence of its utility, it is not conclusive even of that, much less of its
patentable novelty. *Id.
17. CHANGE OF MATERIAL.-A claim for a patent for an inside slipper of
bladder or other thin animal tissue, which is met by the references
cited on every point except that of material, has not patentable novelty.
Ex parte Foss, 153.
18. COMBINATION.-An aggregation of old devices, each working out its own
effect, without securing some new and useful result as the joint product
of the combination, does not constitute a patentable invention. (Quoting
Hailes v. Van Wormer, 5 O. G., 89; 20 Wall., 353, and Pickering v.
McCullough, C. D., 1882, 28; 104 U. S., 310.) * Adams v. Bellaire Stamp-
ing Company et al., 546.
19. PUBLIC APPRECIATION-EVIDENCE OF INVENTION.-Where the question
is upon the patentable character of the invention, evidence that it had
practically superseded all other devices of its kind and tending to es-
tablish novelty is not material. Where there is no invention the
extent of use is not a matter of moment. *Id.
INVENTION BY EMPLOYE. See Employé; First and original inventor, 1, 2, 3, 4.
JOINDER OF INVENTION. See Division of Application, 1.
1. JOINT USE.-That two or more inventions capable of joint use, although
not always used conjointly, may be joined in the same patent is beyond
question. Ex parte Fefel, 176.
2. SAME.-It does not follow, however, that the Patent Office must or will per-
mit such inventions always to be thus joined. Such permission will be
given if no wider range of search is required for all than for one. Id.
JUDGMENT OF PRIORITY. See Interference, 4, 30.
JUDGMENT ON THE RECORD. See Interference, 7, 8, 9, 17, 18, 19.
JURISDICTION. See Contracts; Motion to Dissolve an Interference; Motion to
Reopen Interference, 1; Parties to Suit, 2; Suits for Infringement, 10.
1. FEDERAL JURISDICTION-WRIT OF ERROR.-In order to give the Supreme
Court jurisdiction by writ of error to a State court, it must appear af-
firmatively, not only that a Federal question was presented for decision
to the highest court of the State having jurisdiction, but that its deci
sion was necessary to the determination of the case, and that it was ac-
tually decided, or that the judgment as rendered could not have been
given without deciding it. *Walter A. Wood Mowing and Reaping Ma-
chine Company v. Skinner, 327.
2. SAME-SAME.-Where the action was upon an agreement by the defendant
that, in consideration of the right to the exclusive use of complainant's
patented device, it would use it upon all mowing and reaping machines
and would pay a reasonable value for such use, and the value of such use
was the only question of fact, and neither the construction nor the valid-
ity of the complainant's patent was regarded as material by the trial
court, and it did not appear upon what ground the highest court of the
State proceeded in affirming the judgment below, but it did appear that
the case might properly have been determined upon a ground broad
enough to support the judgment without resort to a Federal question,
Held that the Supreme Court had no jurisdiction. *Id.
LABELS. See Trade-Marks, 7, 20.
1. CONSTITUTIONAL PROVISIONS.-The clause of the Constitution under which
Congress is authorized to legislate for the protection of authors and in-
ventors has reference only to such writings and discoveries as are the
result of intellectual labor. It does not have reference to labels which
simply designate or describe the articles to which they are attached, and
which have no value separated from the articles, and no possible in-
fluence upon science or the useful arts. * Higgins et al. v. Keuffel et al.,
2. COPYRIGHT.-To be entitled to a copyright the article must have by itself
some value as a composition, at least to the extent of serving some pur-
pose other than as a mere advertisement or designation of the subject to
which it is attached. *Id.
3. CONSTRUCTION OF STATUTES OF 1831.-Scoville v. Toland (6 Western
Law Journal, 84) quoted with approval in holding that the law of 1831
could not bear a construction admitting an ordinary label for merchan-
dise within its protection. That law was as broad as the law now in
force, and the rule applied in that case is applicable now. *Id.
4. TRADE-MARK.—A trade-mark may, in form, serve as a label, but it differs
from a mere label in that it is not confined to a designation of the article
to which it is attached, but is a symbol or device which, affixed to a
product of one's manufacture, distinguishes it from articles of the same
general nature manufactured or sold by others, thus securing to the
producer the benefits of any increased sale by reason of any peculiar
excellence he may have given to it. A mere label is not intended to
accomplish any such purpose, but only to indicate the article contained
in the bottle, package, o. box to which it is affixed. *Id.
5. COPYRIGHT.-The Revised Statutes secure protection to the author of any
subject of copyright on his compliance with certain provisions which
are specifically set forth. They provide that in order to maintain an
action for infringement of his copyright he shall have given notice
thereof by a certain formula of words inscribed upon a certain desig-
nated part of the book, print, or other article. The formula allowed by
the act of 1874 includes the simple word "copyright," with the addition
of the year it was entered and the name of the party by whom it was
taken out. *Id.
6. INFRINGEMENT-SUIT.-Assuming that the Constitution authorizes legis-
lation for the protection of mere descriptive labels as properly the sub-
ject of copyright, and that the statute relating to subjects of copyright
includes such labels, the proceedings taken to secure protection in this
case were insufficient and ineffectual, and no action can be maintained
for infringement, and no suit in equity to restrain future use of the
label, because the form of words prescribed by the law has not been
followed in giving notice of the copyright. *Id.
7. WHAT MAY NOT BE REGISTERED.-A label consisting of the name of the
article contained in the bottle or package to which it is applied, a state-
ment of the uses of the article, directions for applying it, the price at
which it is sold, and the name and address of the firm by which it is
prepared, and exhibiting no attempt at art or literary merit, is not en-
titled to registration under the recent decision of the Supreme Court as
announced in the recent case of Higgins et al. v. Keuffel et al. (ante, 403;
55 O. G., 1139). Ex parte Eldredge & Co., 81.
8. LABEL-TRADE-MARK.-It is the settled practice of the Office to consider
the words "not a trade-mark," in the statute referring to the registra-
tion of labels, as applying to anything appearing on a label susceptible
of appropriation as a trade-mark and not already registered as such.
Ex parte Ruckstuhl, 117.
LICENSES. See Assignments, 1, 3, 7, 9; Infringement, 6; Parties to Suit, 3, 4;
Suits for Infringement, 10.
1. LICENSE TO MANUFACTURE AND SELL.-A grant, by the owner of a pat-
ent, of the sole and exclusive right and license to manufacture and sell
the patented article throughout the United States does not include the
right to use such patented article, at least if manufactured by third
persons, and is therefore a mere license. *Waterman v. Mackenzie et al.,
320.
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