tains no reference whatever to the present application. It does not give notice to the public that an application was filed or intended to be filed for matter shown and described but not claimed in said patent. The claims in the patent and those presented in the present application differ only in scope, and are not for distinct and divisible inventions. They could be and were made in one application as the present claims are substantially the same as those presented in the application on which the patent was granted, and were canceled in view of the references cited against them. * A patent on this application must be refused. The point first to be considered is whether this petition presents a question which can be brought before the Commissioner directly by an interlocutory appeal. An answer is afforded by the fact that if the Commissioner entertains the appeal and affirms the action of the Primary Examiner this application for patent is finally rejected so far as this Office is concerned. It is then a matter of course that the question attempted to be presented by this petition is not one of form, but involves the merits, and under Rule 133 the appeal lies to the Examiners-in-Chief. For that reason the petition is dismissed. If the Examiner has any other reasons why a patent should not be granted, he will state them prior to an appeal to the Examiners-inChief, so that the whole case may be brought up on appeal. EX PARTE HARVEY. Decided December 16, 1891. AMENDMENTS-NEW MATTER. 58 O. G., 1257. Where a proposed amendment embodied a substitute claim and descriptive matter relating to the subject-matter of such claim, Held that the amendment should be entered, and if, in the opinion of the Examiner, it included matter not disclosed by the application as originally filed the claim should be rejected. ON PETITION. METHOD OF AND APPARATUS FOR SUPERCARBURIZING STEEL. Application of Hayward A. Harvey filed July 25, 1891, No. 400,672. Mr. Edward E. Quimby for the applicant. FROTHINGHAM, Assistant Commissioner: This is a petition taken from the action of the Primary Examiner refusing to admit into the case the amendment filed November 18, 1891, npon the ground that said amendment "presents matter involving a departure from the invention originally set forth." The proposed amendment consists of two parts-to wit, an addition to the descriptive part of the specification and a new claim designed to be substituted for the single claim remaining in the case. It is clear from the Examiner's letter that in his opinion the proposed amendment to the descriptive portion of the specification comprises the only matter which is objectionable, because involving a departure from the invention originally set forth. In other words, if the proposed amendment comprised only the new claim it would not be objectionable to the Examiner, since it could be predicated upon the original illustration, description, and statement of invention. The amendment to the descriptive part of the specification and the new claim being presented together, however, the entire amendment was refused admission. In view of the fact that the proposed amendment to the descriptive part of the specification relates to the subject-matter claimed, it is apparent that the meaning of the proposed claim might not be the same when based upon the original descriptive matter as it would be if based upon the descriptive matter amended as proposed. Furthermore, it is contended on behalf of applicant that the entire amendment could be fairly predicated upon the original statement of the invention. Such being the case, it is clear that the question raised is one relating to the merits, and that it must therefore first be passed upon by the Examiners-in-Chief upon appeal. (See ex parte Gübel, C. D. 1891, 65; 55 O. G., S63.) I am therefore of the opinion that the amendment should be entered, and if the Examiner is still of the opinion that it presents new matter he should reject upon that ground, from which rejection, when final, an appeal will lie to the Examiners-in-Chief. The case is remanded to the Examiner for action in conformity herewith. INTERFERENCE. BUCKINGHAM . JONES. Decided September 16, 1891. 58 0. G., 1413. Where neither party made an actual reduction to practice before filing his application and neither makes out a satisfactory ease, decision will follow the . preponderance of evidence, however slight it may be. APPEAL from Examiners-in-Chief. DUPLEX AND QUADRUPLES TELEGRAPH. Application of Charles L. Buckingham filed November 27, 1885, No. 184,029. Application of Francis W. Jones filed November 11, 1885, No. 182.402. Mr. Charles N. Judson for Buckingham, SIMONDS, Commissioner: This is an interference case. There is no testimony for either side that is strongly decisive, and the decision practically goes upon the ground of giving it to that side which has the least weakness. Neither party to the interference made an actual reduction to practice before his application was filed. Buckingham's date of conception is practieally May 30, 1885. Jones testifies positively to a conception and disclosure occurring earlier in the same month, and there is some testimony tending to corroborate his statement in this regard. Buckingham filed his application November 27, 1885, and Jones filed his November 11, 1885. The Examiner of Interferences and the Examiners-in-Chief have both awarded priority to Jones. Jones has not a strong case: but that of Buckingham is certainly less strong, and the decision of the Examiners-in-Chief is affirmed. DODD r. READING. Decided September 18, 1891. 58 0. G., 1413. TEST OF INTERFERENCE IS IN CLAIMS, Applications interfere only when they claim in whole or in part the same invention. (Citing Gold and Silver Ore Separating Co. v. U. S. Disintegrating Co., 6 Blatchf., 307.) APPEAL on motion. DISPLAY RACK. Application of Charles E. Dodd tiled July 9, 1890, No. 358,183, Application of John Reading filed May 26, 1890, No. 353,164. Mr. H. A. Seymour for Dodd. Mr. C. P. Humphrey for Reading. SIMONDS, Commissioner: This is an appeal by Dodd from the decision of the Primary Examiner refusing to dissolve an interference in which the testimony has been taken. The issue is: In a display-rack, the combination, with telescoping sections, of a telescoping trough or roll-holder on the rack, adapted to receive and hold a roll of paper or similar material, substantially as set forth, This issue is in the very words of a claim made by Dodd. Therefore no question arises as to identity of claim in his case. The claims made by Reading are: 1. The combination, with the trough or box A and swinging rack C, of the trough E and frame F, hinged thereto, arranged to telescope with the box A and rack C, respectively, substantially as shown, and for the purpose spectied. 12692 PAT——1 2. The combination, with the trough or box A and swinging rack C, of the trough E and frame F, hinged thereto, arranged to telescope with the box A and rack C, respectively, and a device, as a ratchet, to sustain said rack and frame when swang outward. 3. In a wall-paper exhibitor, the combination, with the supported telescoping troughs to hold the rolls of paper, of telescoping racks connected by troughs and grooved slats, arranged to move in unison with said troughs, substantially as shown and described. The first and second claims fail to be identical with the issue because of the presence therein of the words frame F, hinged thereto." The third of Reading's claims fails to be identical with the issue because of the presence therein of the words "connected by troughs and grooved slats." Two patents interfere within the meaning of the sixteenth section (referring to the act of July 4, 1836) only when they claim in whole or in part the same invention. (Gold and Silver Ore Separating Co. v. U. S. Disintegrating Co., 6 Blatchf., 307.) The interference is dissolved. An application will not be included in an intereference unless it falls within the requirements of the issue. APPEAL from Examiners-in-Chief. LAMP. Application of Leonard Henkle filed August 25, 1887, No. 247,860. Application of W. A. Hull filed May 12, 1887, No. 237,953. Messrs. Knight Brothers for Henkle. SIMONDS, Commissioner: This case comes before the Commissioner on appeal from the decision of the Board of Examiners-in-Chief awarding priority of invention to Hull on the following issue: The combination, in a central-draft lamp, of a wick-raising ring surrounding the central-draft tube, a rod provided with a hand-piece above the reservoir, and a bearing in the reservoir, said ring and rod being provided the one with a tongue and the other with a loop. The decision of the case turns upon the question whether the lamp known as "Henkle Exhibit X" embodies the invention in controversy, for it is substantially the only thing which is proven on the part of Henkle. If it does not embody the invention in controversy, the deci sion must be for Hull. One of the requirenients of the issue is "a bearing in the reservoir" for the rod." Henkle's Exhibit X has a bearing in the reservoir for only one side of the rod. Perhaps it might be called "half a bearing;" but it is not such a bearing as is showm and described in his application for patent, nor is it the bearing intended by the issue. This finding eliminates Henkle's Exhibit X from further consideration, and with it eliminated the decision must be for Hull. The decision of the Examiners-in-Chief is affirmed. DOANE 7. JOHNSON, JR. Decided October 9, 1891. 58 0. G., 1411. Interference--Testimony AS TO CONCEPTION, Where actual rednetion to practice is wanting and testimony adduced by the parties to show date of conception is of the same character and quality, the earlier date will prevail, though the evidence to sustain it is meager and unsat isfactory. APPEAL from Examiners-in-Chief, PLANT AND MATCHER. Application of William H. Doane filed January 14, 1889, No. 296,256. Application of Greenleaf Johnson, Jr., filed January 11, 1889, No. 296,069. Mr. L. M. Hosea and Mr. J. L. Norris for Doane. Messrs. G. H. &: W. T. Howard for Johnson, Jr. SIMONDS, Commissioner: This an interference between two applications for patent--that of Johnson filed January 11, 1889, and that of Doane filed January 14, 1889. No actual reduction to practice took place before the filing of these applications; but Doane at that time had a machine containing the invention in controversy under way, which was completed January 26. 1889. The testimony for both sides as to conception is meager and unsatisfactory. Johnson says as to his conception: When I first thought of this was from the middle of September and the first of November, 1888. |