Company of the words "Torrey's Old Mt. Vernon Rye, 24 So. Market St., Boston, Established 1826," as a trade-mark for whisky. The notice of opposition alleges that appellant has used the words "Mount Vernon " as a trade-mark for whisky continuously since 1860. Subsequent to the filing of this notice, a motion was made asking leave to amend the notice of opposition by carrying the date of use back to 1857. The motion also sought to amend the notice by adding the following grounds: 12. That if at any time prior to 1855 the applicant or its predecessors had ever applied the words " Mount Vernon " to whisky, they abandoned and discontinued the application of those words to whisky in the year 1855 and never resumed the use of such words in application to whisky until more than twenty years subsequently. 13. That during the years 1855 and 1875, both inclusive, the applicant's predecessors were not engaged in manufacturing or dealing in spirituous liquors of any kind. This motion was denied by the Examiner of Interferences, and his action was affirmed by the Commissioner. This point is assigned as error. It appears that the motion was made after the testimony had been taken and after the thirty days allowed by statute for filing a notice of opposition had expired. We think the Examiner of Interferences properly denied the motion upon the following statement: If the amendment does not contain matter constituting new grounds of opposition no advantage can result to the opponent from its admission and the amendment should be denied; if it does set out new grounds of opposition it is brought too late and cannot be allowed. The sole question before us is one of priority of use. Were the question of the registrability of this mark before us, we would find no difficulty in speedily terminating this controversy. On the question of priority of use, we think the evidence clearly establishes the use by appellee and its predecessor in business as early as 1847 or 1848. The Examiner of Interferences found that appellee had used the mark in question as early as 1847. The Commissioner disagreed with this finding, but found that the evidence established such use as early as 1852. It is unnecessary for us to consider the evidence relating to these dates, as either date establishes a use long prior to the use of the words "Mount Vernon " by the appellant. It is contended, however, that appellee abandoned the use of its mark for twenty years between 1855 and 1875. On this point the Commissioner held as follows: It appears that from 1855 to 1875, restrictions were placed on the sale of intoxicating liquors in Massachusetts, in view of which it is contended that under the law existing during this period applicant had no right to sell liquors and that applicant is therefore not entitled to a date of adoption and use prior to 1875. The ground upon which appellant bases this contention is not clearly stated, but as far as can be understood, it is that as applicant could not lawfully use the mark during the years 1855-1875 it became abandoned. It appears to me, however, that applicant acquired a property right in the mark prior to the passage of the act restricting the sale of liquors, and that even if the law required the suspension of the use of the mark during this period, such enforced suspension did not take away such property right. But even if it be assumed, as a matter of law, that a non-user of the mark for the period stated under a law prohibiting the sale of the product to which it was applied would amount to an abandonment, it would not be decisive in the present case because it has not been satisfactorily shown that applicant did not make lawful sales within the State, as the law did not prohibit all sales, and in any event no reason is seen why the use of the mark in lawful commerce with citizens of other States, would not be sufficient to save applicant's rights. We fully agree with the Commissioner on the proposition that if appellee had acquired a right to the use of this mark prior to 1855, which we find to be fully established by the evidence, that right could not be lost by any enforced restriction that might have been placed temporarily upon the sale of liquors in the State of Massachusetts. On the other hand, it clearly appears that appellee was engaged in interstate trade, and there was nothing in the restricting act to prevent it from manufacturing whisky bearing this mark in the State of Massachusetts and disposing of it in other States. Either of the above reasons is sufficient to dispose of the question of abandonment. We have carefully examined the record and the evidence as disclosed on behalf of both appellant and appellee, and find no reason to disturb the conclusion reached by both of the tribunals of the Patent Office. The decision of the Commissioner is therefore affirmed, and the clerk is directed to certify these proceedings as by law required. [Court of Appeals of the District of Columbia.] SYDEMAN ANd Meade v. THOMA. Decided January 5, 1909. 141 O. G., 866; 32 App. D. C., 362. 1. INTERFERENCE-REDUCTION TO PRACTICE-WHAT CONSTITUTES. Decisions involving this often-litigated question of actual reduction to practice may be divided into three general classes. The first class includes devices so simple and of such obvious efficacy that the complete construction of one of a size and form intended for and capable of practical use is held sufficient without test in actual use. The second class consists of those where a machine embodying every essential element of the invention, having been tested and its practical utility for the intended purpose demonstrated to reasonable satisfaction, has been held to have been reduced to practice, notwithstanding it may not be a mechanically-perfect machine. The third class includes those where the machine is of such a character that the particular use for which it is intended must be given special consideration and requires satisfactory operation in the actual execution of the object. 2. SAME-SAME-CIRCUMSTANCES. In cases falling within the second and third classes described long delay in putting the machine in actual use for the intended purpose has always been regarded as a potent circumstance in determining whether the test was successful or only an abandoned experiment. 3. SAME-SAME. Where the object of an invention was "the production of apparatus for rapidly and efficiently treating textile fabric coated with a rubber or guttapercha compound or composition to the end that the coating may be temporarily softened or rendered ‘tacky' in order that the fabric may be readily applied to other objects, such as insoles for boots and shoes," Held that a machine which the witnesses stated "worked too slow to be put into a shoe-shop" and which was subsequently remodeled was not a reduction to practice thereof. Mr. Nathan Heard and Mr. C. H. Duell for the appellant. SHEPARD, C. J.: This is an interference proceeding involving priority of invention of a machine for treating duck, having a coating of adhesive material, so as to render the coating "tacky," or sticky. The issue is in the three following counts: 1. In apparatus of the class described means to support the coated fabric and cause it to travel longitudinally, means to apply moisture to said fabric, and means to subject simultaneously corresponding portions of the fabric to dry heat, to soften and render tacky the coating thereof. 2. A machine for applying inner sole-reinforcing fabric comprising means for delivering a continuous web of fabric previously coated with cement on one side only, moisture-applying means containing water or steam for application to said previously-cemented web, feed-pipes for supplying said water or steam, means for applying heat to said web for rendering the coated side thereof tacky in its progress through the machine and coöperating means combined with the aforesaid mechanism to maintain said coated side undisturbed and deliver the same to be cut in a moist and tacky condition. 3. A machine for applying inner sole-reinforcing fabric, comprising means for delivering a continuous web of fabric previously coated with cement on one side only, moisture-applying means containing water or steam, a feed-drum, and means coöperating therewith for rendering the coated side of said fabric tacky while being fed through the machine. The proceedings in the Patent Office may be briefly stated as follows: On March 13, 1905, Andrew Thoma made application for a patent for the method of making adhesive duck, as practiced on his machine. The machine was described, but not claimed therein. Process patent issued February 13, 1906. May 15, 1905, he filed the application of this interference for a patent on the machine or apparatus. June 9, 1905, Sydeman, Meade, and one Gallagher, filed a joint application for a machine to accomplish the same object. Interference was declared between these two applications. Preliminary statements were filed but the juniors took no evidence, and abandoned their application. April 13, 1906, Sydeman and Meade, omitting Gallagher, filed a new application, identical in description with the abandoned one, and interference with Thoma was declared thereon. A volume of testimony was taken relating to conception and reduction to practice, by the respective parties. The Examiner of Interferences found that Sydeman and Meade conceived the invention in January, 1903; that Thoma conceived it in January, 1905, and obtained constructive reduction to practice on March 13, 1905, by filing his method application on that date. He found that Sydeman and Meade's evidence relating to reduction to practice, in May, 1904, failed to establish the same, and that they were not exercising diligence when Thoma entered the field. He, consequently, awarded priority to Thoma. This decision was affirmed on successive appeals to the Examiners-in-Chief and the Commissioner, and further appeal has been prosecuted to this court by Sydeman and Meade. In the consideration of the foregoing questions it is immaterial whether Thoma be accorded the date of his method application, or of this one as constructive reduction to practice; and there seems to be no question but that he conceived the invention early in January, 1905. Before proceeding to the consideration of the question of reduction to practice by Sydeman and Meade in 1904, it is deemed advisable to give a brief history of the state of the conditions at the time, and the purposes of the invention, as an aid to the elucidation of the questions to be determined. Cloths of various kinds had long been coated with combinations of gutta-percha and other things for rendering them waterproof, and many persons were engaged in the manufacture; among them the Plymouth Co., owners of the Sydeman and Meade application, and the Clifton Co., owner of Thoma's. Some of this material consisting of thin domestics and drills, and called "plumping-cloth," had been used for lining the "uppers" of shoes, among other uses. As the price of leather increased, canvas began to be substituted therefor in making innersoles of cheap shoes. The "sleeper" innersole was first invented. In this the innersole was made up of a lower layer of canvas, having a rib molded thereon, a center layer, and an upper layer all cemented together and trimmed. This was followed by the invention of the "Gem" innersole. In this a low-grade light leather was used and a rib formed on it, which was reinforced with canvas or duck cemented so as to adhere thereto. The method first used was, substantially, this: The leather innersole was cut in the desired form, a rib formed on it, and then covered on the rib side with rubber cement. The reinforcing-canvas, cut in strips of requisite width, was coated with rubber cement. Both these, and the leather innersoles were allowed to dry sufficiently to become "tacky." The canvas was then pressed on the innersole aforesaid, their cemented sides in contact, and formed in and around the rib thereof. The innersole thus made was then passed through a machine, known as the "Gem," which pressed the canvas firmly to the leather and formed or tacked it around the rib, and at the same time trimmed the edge of the canvas even with the edge of the leather. This process was a slow one as the cement had to dry for a time before the canvas was applied to the leather, and was expensive. The object of the new invention is to overcome these defects by using duck coated with a suitable preparation, passing the same, when cut in suitable strips, through water or steam, in order to make it pliable and easily fitted to the leather innersole, and then heating it, drying out some of the water, and rendering it "tacky," so that it can be pressed into firm adhesion with the leather. It was readily ascertainable that this could be effected in a satisfactory manner, by simply taking a piece of the material in the hand, wetting it and then heating it upon anything hot enough, applying it to the leather innersole and pressing into adhesion. This process would necessarily be slow, and expensive. The desirable object was to make a machine, by passing through which both the moistening and heating would be accomplished, and the material delivered to the operator for cutting the required length and placing on the innersole to be pressed by the "Gem " machine. The parties to this interference were not manufacturing either machinery or shoes, and apparently had no idea of becoming engaged therein. They had like interests and were actuated by the same motive. Being manufacturers of coated duck, they reasonably expected to greatly increase their sales by discovering a machine that would simultaneously and effectually moisten and heat the passing material, with requisite speed, so that it could be continuously used by the operator, who pulled it upon the table, cut it in proper lengths, and applied it to the innersole for pressure and trimming by the "Gem" machine. Both parties have since been furnishing their completed machines to shoe manufacturers, free of charge, for the purpose of making a market for their coated duck goods. No part of the invention is in the discovery that the coated duck, when moistened and heated, is capable of use as a cheap and suitable reinforcement for a leather sole. It consists in a machine that will moisten and heat the material in such a manner as to meet the necessary requirements of shoe manufacturers. Failing this, the machine. would be of no practical value to them and would not be adopted by them; and without their adoption it would be of no value to the inventor. Assuming, for the present, the general truthfulness of the testimony relating to the alleged reduction to practice by Sydeman and Meade in 1904, and the accuracy of the dates assigned thereto, we 21895-H. Doc. 124, 61-2-23 |