In accordance with a decision of Commissioner Butterworth, rendered August 6, 1897, (C. D., 1897, 40; 80 O. G., 1123,) appellant's application, No. 594,189, was stricken from the files, because filed in violation of the statute. The present application was filed complete on September 10, 1897, and it appears that the original specification and petition were used, a new oath only being filed.

When the claims in issue were rejected on the Gillespie patent, appellant filed affidavits setting forth the facts above stated.

The Examiner held that the appellant had shown neither a reduction to practice of the invention before the filing of the Gillespie application nor a conception thereof followed by due diligence in reduction to practice, and that therefore the Gillespie patent was properly to be considered as part of the prior art and constituted a bar to the allowance of the present claims, and this view of the case was also taken by the Examiners-in-Chief.

Appellant contends that the incomplete application of May 27, 1895, shows such a completion of the invention as is required by Rule 75, but that if it does not it shows a conception of the invention and that he was reasonably diligent in reducing the invention to practice, since he completed the application by paying the filing fee within two years, which at that time was the period allowed by the statute to complete an application, so as to save it from abandonment.

As to the first of these contentions, it is not seen how the filing of an incomplete application, on which a patent could not be granted, can be considered as a completion of an invention. The statute requires, among other things, the payment of a fee as a prerequisite to the grant of a patent, and until such fee is paid there is no application pending on which a patent could be granted, and it is only such an application that is considered a constructive reduction to practice.

Appellant has cited several decisions to show that a completed invention can be based on drawings and disclosures alone; but the decisions, when carefully examined, are not susceptible of such an interpretation. In ex parte Gasser, (C. D., 1880, 94; 17 O. G., 507,) the earliest of the decisions with reference to the question of overcoming a reference by affidavits, Commissioner Paine says:

The applicant, therefore, must state on oath facts showing either that a reduction to practice had been made before the filing of the application on which the patent was granted, or that the invention had been conceived before that time and by due diligence connected with a subsequent reduction to practiceand this has been recognized ever since as the proper practice. (Ex parte Hunter, (C. D., 1889, 218; 49 O. G., 733.) In both ex parte Saunders (C. D., 1883, 23; 23 O. G., 1224) and ex parte Donovan (C. D., 1890, 109; 52 O. G., 309) the requirement that prior conception alone is not sufficient, but must be connected by diligence with a

subsequent reduction to practice, is recognized, although the question involved in each of these cases was the sufficiency of the affidavits as to certain alleged drawings. In the first of these decisions Commissioner Marble says:

The prior patent or the printed publication affords to the public an adequate knowledge of the invention, and dedicates it to the public use. If the invention is to be reclaimed for the private use of the applicant, he should show that he had before that time completed the invention and disclosed information of the same to others as full, accurate, and exact as that afforded by the patent or publication, and, also, that he has since preserved his right to a patent by a diligent prosecution of the same.

And in the second of these decisions the following statement occurs: The affidavit filed by the applicant states that he conceived the invention set forth in his application prior to a certain date named, and disclosed it to others prior to that date, and then goes on to set forth facts relied upon to establish the requisite diligence.

But even if in any case an incomplete application could be regarded as a completion of an invention it certainly could not in this case, where the application was filed in direct contravention of the spirit of the statute, if not of the actual letter thereof. The papers filed May 27, 1895, must be considered merely as papers left in the custody of the Office and can be given no other legal effect.

There can be no question that the papers filed May 27, 1895, are evidence of conception by the applicant as of that date; but the mere fact that he attempted to complete his application by paying the filing fee within the two years allowed by the statute does not show that he was sufficiently diligent in reducing his invention to practice to avoid the reference.

An inventor may take his own time in reducing his invention to practice; but he does so at the risk of losing the right to a patent in favor of some later but more diligent inventor who reduced the invention to practice before him or of being barred from receiving a patent by reason of the fact that his invention is disclosed but not claimed in the patent of such later inventor.

It is not necessary to decide whether appellant is entitled to June 3, 1896, the date when he paid the filing fee and his application was entered as complete, or September 10, 1897, when his application was refiled after having been stricken from the files by Commissioner Butterworth's order, as his date of constructive reduction to practice. He was diligent from the time when he resigned from the Office and paid the fee on June 3, 1896, in his efforts to complete his application; but such diligence did not commence until after Gillespie's application was filed, and according to appellant's affidavits he was incited. to such diligence by reason of having obtained information of this application through his official position.

The decision of the Examiners-in-Chief is affirmed.

21895-H. Doc. 124, 61-2-5

EARLL V. Love.

Decided January 28, 1909.

140 O. G., 1209.

1. INTERFERENCE-DISSOLUTION-FAILURE TO INCLUDE CLAIMS NOT PATENTABLE

OVER ISSUE.

The failure of an Examiner to include in the interference issue claims not patentably different from the issue furnishes no reason for the dissolution thereof on the ground of informality in the declaration.

2. SAME-APPLICATION AND PATENT-DECLARATION-PRACTICE.

When an interference is declared between an applicant and a patentee and the Examiner is of the opinion that the applicant has presented claims which do not differ materially from the issue of the interference, he should append to the declaration of the interference a statement that such claims, specifying them by number, will be held subject to the decision in the interference. If, in his opinion, there are no such claims, he should append to the declaration a statement to that effect.

APPEAL ON MOTION.

TROLLEY-RETRIEVER.

Mr. Samuel E. Darby for Earll.
Messrs. Risley & Love for Love.

BILLINGS, Assistant Commissioner:

This is an appeal by Earll from a decision of the Examiner of Interferences refusing to transmit a motion to dissolve the aboveentitled interference as to ground one thereof and as to that portion of ground three which relates to marketing.

The refusal to transmit the portion of ground three was clearly right, since that referred to matters which could be established only by proofs, which could not therefore be presented on a motion for dissolution.

The refusal to transmit the first ground of the motion is based on the ground that the facts alleged thereunder are matters of merit, which cannot be considered under the head of informality, and matters of amendment to the issue, which must be presented by a motion to amend under Rule 109.

This ground of the motion includes an allegation that Love was allowed to amend his application to include claims taken from the Earll patent and expressed in terms not applicable to the Love structure and that the counts do not properly read on the Love structure and an allegation that other claims of the Love application besides those stated in the declaration should have been included and made subject to the result of the interference, because they are for substantially the same subject-matter of invention. It was properly refused transmission as to the first part thereof, because it relates to

Love's right to make the claims, which is a question of merits and cannot be considered under the head of informality, and as to the second part thereof for the reason that, although a motion to amend under Rule 109 could not have been filed, as the moving party is a patentee, the failure to include claims not patentably different from the issue furnishes no ground for dissolution of the interference.

While, as above stated, a motion to dissolve the interference on the ground that certain claims not patentably different from the issue were not included therein cannot be transmitted, it is clear that such claims should be held subject to the decision in the interference on the question of priority of invention. Where the interference is declared between pending applications, each of the applications may be so amended that the invention common between the two may be clearly defined in the issue. In those cases, however, where the interference is between a pending application and a patent, the patent, of course, not being subject to amendment, it may happen that the applicant after seeing the patent is enabled to submit claims which are not exactly like those in the patent, but which do not materially differ therefrom. In such cases it is only fair to the patentee that the Examiner in declaring an interference should take note of that fact.

It is therefore held that when an interference is declared between an applicant and a patentee and the Examiner is of the opinion that the applicant has presented claims which do not differ materially from the issue of the interference he should append to the declaration of the interference a statement that such claims, specifying them by number, will be held subject to the decision in the interference. If, in his opinion, there are no such claims, he should append to the declaration a statement to that effect.

This interference is therefore transmitted to the Primary Examiner with directions to amend the declaration in accordance with the practice announced in this decision and to thereupon return the files to the Examiner of Interferences for further proceedings in the case. The decision of the Examiner of Interferences is affirmed.

EX PARTE UNION FIBRE COMPANY.

Decided December 30, 1908.

141 O. G., 285.

1. TRADE-MARKS-DESCRIPTIVE-“ ANTIAQUA" FOR AN ASPHALTIC CEMENT. The word "Antiaqua" Held descriptive, and therefore not registrable as a trade-mark for an asphaltic cement, since the obvious meaning of the word is waterproof.

2. SAME-SAME-WORDS WRITTEN IN FOREIGN LANGUAGE.

It is well settled that descriptive words are not rendered less so by being written in a foreign language. (Grocers Specialty Mfg. Co., C. D., 1903, 10; 102 O. G., 465; Roncornoni v. Gross et al., 86 N. Y. Supp., 1112; 92 App. Div., 221.)

ON APPEAL.

TRADE-MARK FOR ASPHALT AND BINDER USED FOR HEAT AND COLD INSULATING

PURPOSES.

Mr. E. G. Siggers for the appellant.

MOORE, Commissioner:

This is an appeal from a decision of the Examiner of TradeMarks refusing to register the word "Antiaqua" as a trade-mark for an asphaltic cement used as a coating for walls.

The ground of this refusal is that the obvious meaning of the word "Antiaqua," which is composed of the prefix anti, meaning against, and the Latin word aqua, meaning water, is against water, or waterproof, and the word is therefore descriptive of the goods to which it is applied.

This holding is believed to be right. It is well settled that descriptive words are not rendered less so by being written in a foreign language. (Grocers Specialty Mfg. Co., C. D., 1903, 10; 102 O. G., 465; Roncornoni v. Gross et al., 86 N. Y. Supp., 1112; 92 App. Div. 221.) The cement in question is evidently intended for waterproofing walls, and the word "Antiaqua" is clearly equivalent to the word waterproof. This latter word being descriptive and not registrable, it follows that the word "Antiaqua " is no more so.

The decision of the Examiner of Trade-Marks is affirmed.

EX PARTE BINDLEY HARDWARE COMPANY.

Decided February 2, 1909.

141 O. G., 285.

1. TRADE-MARKS-CLASS OF GOODS.

Saws, tools, and files are goods of the same descriptive properties as hammers and hatchets.

2. SAME-SIMILARITY.

A mark consisting of the representation of a keystone with a diamondshaped figure placed horizontally across the same and a scroll beneath the keystone, the words "Albion" appearing upon the diamond, "Bindley's Ever Satisfactory Tools" upon the keystone, and Quality Counts" upon the scroll, is anticipated by the marks of a prior registrant containing the representation of a keystone.

ON APPEAL.

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