In its brief and in a supplemental brief filed by permission of the court appellant has endeavored to distinguish the instant case from the Englander case, supra, and the several cases therein cited. It is true that the facts of this case differ from the facts of those cases, but this difference does not, in our opinion, affect the principle of law involved. In our decision in the Englander case, supra, after the citation of the many prior decisions, we said:

It was pointed out in our decisions in some of those cases that the Congress specially provided, in section 13 of the Trade-Mark Act, supra, for proceedings for the cancellation of a trade-mark registration by one who deemed himself injured by such registration, and that, if an interested party desired to question the validity of a trade-mark registration, he should proceed in accordance with the provisions of that section.

Certainly, no principle of the trade-mark registration law is better settled than that the validity of a registered mark may not be attacked in an opposition proceeding. Whether such an attack might be made in an interference proceeding need not be passed upon here because there was no such proceeding in this case. We think it obvious that in a case where, as here, the question becomes an ex parte one, the testimony taken in an opposition proceeding may not be relied upon to show the invalidity of a registered mark.

[4] We know of no reason why appellant (even after the case had been set for final hearing before the Examiner of Interferences) might not, upon learning of the issuance of the certificate, properly have requested a continuance and instituted a cancellation proceeding under section 13 (15 U. S. C. § 93) of the Trade-Mark Registration Act, and we apprehend that, under the particular facts appearing, such an application probably would have been granted and the opposition case suspended pending the outcome of a cancellation proceeding. This we say merely to indicate that appellant was not without opportunity for remedy if it had a grievance proper to be remedied.

Whatever the possibilities might have been in that regard in this case, however, it is clear to us that upon the facts appearing and the law applicable thereunder appellant may not prevail in this proceeding.

The decision of the commissioner is affirmed.

561 O. G. 3; 31 C. C. P. A. 824; 140 F. (2d) 161; 60 U. S. P. Q. 329

MANTZ V. JACKSON (No. 4782)

1. PATENTS APPEALS-WEIGHT GIVEN DECISIONS BELOW.

Where there are concurring Patent Office opinions relating to highly technical subject-matter (sufficiency of disclosure to make counts), appellant is under heavy burden to show error.

2. CONSTRUCTION OF SPECIFICATION AND CLAIMS-INTERFERENCE COUNTS-REFERENCE TO SOURCE SPECIFICATION.

If there is no ambiguity and no need for construction of counts copied from party's patent, and if counts broadly read on opponent's disclosure, there is no need to confuse issues by considering contentions which party makes as to what language means in patent; acceptance of his admission of no ambiguity is justified although, under other circumstances, ambiguity question might be determined.

3. CONSTRUCTION OF SPECIFICATION AND CLAIMS-INTERFERENCE COUNTS.

Counts must be interpreted broadly.

4. INTERFERENCE-INTERFERENCE IN FACT.

Element meets limitation in one broad copied count and also different limitation in another broad copied count, although both contain language somewhat inappropriate to describe copier's device.

5. APPEALS-ISSUES TO BE DETERMINED PATENT INTERFERENCES.

Court of Customs and Patent Appeals cannot consider whether invention of counts differs from invention claimed in reissue applicant's patent to show that it cannot make counts; questions of patentability are for ex parte consideration in Office and are not ancillary to priority; no reason of appeal brings question to Court, whose jurisdiction is limited by statute to questions raised by reasons of appeal; subject-matter was not considered below.

United States Court of Customs and Patent Appeals, January 3, 1944 APPEAL from Patent Office, Interference No. 79,299

[Affirmed.]

Brown, Jackson, Boettcher & Dienner (Charles V. Hildebrecht, Arthur H. Boettcher and Henry H. Babcock of counsel) for appellant.

Stebbins and Blenko and Smith, Michael & Gardiner (William H. Webb of counsel) for appellee.

[Oral argument November 2, 1943, by Mr. Boettcher and Mr. Webb]

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges

BLAND, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Interference Examiners of the United States Patent Office in an interference proceeding involving a patent, No. 2,213,844, to Harold A. Mantz, granted September 3, 1940, on an application filed November 10, 1938, and an application of Wilbur F. Jackson filed February 7, 1941, for reissue of his patent No. 2,201,399, granted May 21, 1940, on an application filed January 7, 1938. Jackson, therefore, is the senior party.

As originally declared, the interference comprised five counts corresponding to five claims in the Mantz patent, which Jackson copied into his application for reissue. Mantz, in response to an order to show cause why judgment on the record should not be entered against

him, moved to dissolve the interference as to counts 1, 2, and 5 on the ground that Jackson's disclosure did not support them. The Primary Examiner granted the motion as to count 5 but denied it as to counts 1 and 2.

On final hearing, the Board of Interference Examiners reviewed the question as to Jackson's right to make counts 1 and 2 and, holding that these counts were supported by Jackson's disclosure, awarded priority to Jackson. Jackson's record date being earlier than that of Mantz, judgment of priority was entered in favor of Jackson as to counts 1 to 4, inclusive.

The only issue before this court is with respect to Jackson's right to make counts 1 and 2, although appellant has advanced another contention to which we shall refer hereinafter.

Counts 1 and 2 read as follows:

1. In a device of the character described, in combination, a control device having an electromagnet provided with an armature connected to a controlling member and adapted when energized to hold said member in operating position and when deenergized to release said member for movement to a safety position, a shutoff cock, reset means for resetting said armature to attracted position and said controlling member to operating position, and means for preventing the resetting operation of said reset means except when said shutoff cock is closed.

2. In a device of the class described, a shutoff valve, a reset stem mounted for reciprocatory movement, means adapted to be reset by reciprocatory movement of said stem and means cooperable with said stem and movable laterally thereof when the valve is closed to permit operation of said reset means, said last means being held against lateral movement to prevent operation of said reset means when said valve is open. [Italics not quoted.]

Broadly speaking, the invention of the counts relates to a safety device for controlling the flow of fuel to the burners of gas appliances and the like, for example, a gas water heater. The object is to provide a device including a thermoelectrically controlled valve responsive to the heat generated by a pilot burner (or rather to the current generated by a thermocouple placed adjacent the pilot flame), a shut-off cock, and means for resetting the thermoelectrically controlled valve when closed, as well as means for preventing the resetting of said valve except when the shut-off cock is closed. This arrangement prevents the flow of gas to the main burner of the gas appliance on which the device is used while the pilot burner is extinguished. It is stated in appellant's brief:

It is particularly important that no gas flow to the main burner until after the pilot burner has been lit. There are two obvious reasons for that. The flow of gas to the main burner is in considerable volume and would result in quickly filling the compartment enclosing that burner with a highly explosive gas-air mixture, causing a serious and often disastrous explosion when it is attempted to reignite the pilot burner. Secondly, if gas is supplied to the main burner at the same time it is supplied to the pilot burner, and the pilot burner is immediately lighted, the gas from the main burner will also be lighted with the risk of

serious burning of the user's hand or of setting the user's clothing afire. Those things can happen and have happened, in using defective so-called safety devices of this general type and, profiting by experience, the requirements of the American Gas Association that devices of this type be safe in fact have become increasingly stringent.

The devices of both parties, as described in their respective patents, are quite complicated and comprise many parts. This makes it difficult to describe the devices so that the real crux of the controversy may be easily understood. We think, therefore, that it will promote clarity to reproduce here one of the drawings of each of the parties. [See pp. 828, 829.]

The questions here raised by appellant (except one question appellant seeks to present which we will discuss later herein) are, judging from the decisions of the tribunals below, the same as those which were presented there. The board's statement of appellant's contentions would therefore seem to be sufficient for the most part for our purposes here, and we quote the following from the board's decision:

Mantz contends that Jackson has no right to make count 1 for the reason that Jackson does not disclose an armature connected to the controlling member and, further, that Jackson does not disclose structure wherein the resetting means resets the armature to attracted position and said controlling member to operating position.

As to the first contention, it appears in the structure as disclosed by Jackson that the stem 46 may properly be read as the controlling member as set forth in this count. The armature 47 is mounted on this member and abuts against the shoulder thereon and at all times is maintained in this abutting relationship by the spring 48. It therefore appears that the armature is connected to the controlling member at least as much as that of Mantz who describes a loose connection between the armature 55 and stem 57. The mere statement of connection in the count is not deemed to require a rigid connection and, in fact, such rigid connection is not disclosed by either party.

As to the second ground, Mantz contends that the resetting means consisting of Jackson's bell crank 41 and the actuating cam 43 does not reset Jackson's controlling member to operating position but that instead the spring 48 is the actuating means which causes the armature to move to attracted position. It is to be noted, however, that the spring 48 cannot act to move the armature 47 and the controlling member 46 until the bell crank 41 is moved to reset position by the cam 43. Accordingly it is believed that Jackson fully discloses reset means for resetting the armature to attracted position and the controlling member to operative position.

With respect to count 2 Mantz contends that Jackson does not disclose reset means which moves laterally of the reset stem or that the means is held against lateral movement. In the device of Jackson it is deemed proper to refer to the member 46 of the reset stem. We further deem that the statement "lateral movement" can only be interpreted as movement in a direction generally perpendicular to the axis of the stem. Under such an interpretation the end of bell crank 41 moves laterally of the stem 46 as does also the cam member 43 when the control means 9 is turned and either of these members could be termed resetting means as defined in the count and, since we deem that both members move laterally of the reset stem, Jackson fully supports the first mentioned limitation of count 2.