text:
    DREYFUS v. LILIENFELD. LILIENFELD v. DREYFUS.
    Patent Appeal Nos. 2771, 2774.
    Court of Customs and Patent Appeals.
    June 5, 1931.
    See, also, 49 F.(2d) 1062, 1065. '
    Baldwin & Wight, of Washington, D. C. (Lloyd B. Wight, of Washington, D. C., and Chas. W. Levinson, of New York City, of counsel), for Dreyfus.
    Charles L. Sturtevant and Arthur B. Foster, both of Washington, D. C., Newton M. Perrins and Daniel I. Mayne, both of Rochester, N. Y., for Lilienfeld.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

In this appeal and cross-appeal are involved 41 counts of an interference, declared in the Patent Office, between a Lilienfeld patent and certain Lilienfeld applications on the one hand, and a Dreyfus application on the other. All are process eounts. Certain of them relate-to a method of producing alkali.cellulose; others to a method or methods of etherifying cellulose, or manufacturing cellulose ethers. Dreyfus is the senior party; his application having been filed in the United States Patent Office August 5, 1920. Lilienfeld’s applications were all subsequent to that date. The Lilienfeld patent, from which certain of the counts were taken, was issued February 12, 1924, upon an application filed January 10, 1921.

Dreyfus is, apparently, a citizen of Switzerland, doing business in England; Lilienfeld is a citizen of Poland. Both are stated to be prominent in the field of cellulose chemistry.

By the decision of the Examiner of Interferences, priority was awarded Dreyfus upon the subject-matter of eounts 1 to 14, inclusive, and to Lilienfeld upon the subject-matter of eounts 15 to 41, inclusive. Both parties appealed to the Board of Appeals of the United States Patent Office. The Board reversed the decision of the Examiner, in part, and awarded eounts 1 to 11, inclusive, to Lilienfeld. His decision as to eounts 12 to 41 was affirmed. This resulted in an award of priority to Dreyfus upon only eounts 12, 13, and 14. Upon all others Lilienfeld prevailed.

Incidentally, it may be here stated that the Board was of the opinion that the counts 12, 13, and 14, awarded to Dreyfus, and also certain of the counts awarded to Lilien-feld, were unpatentable. The Board said:

“If our ruling as to counts 1 to 11 is not reversed it is recommended that after the interference is terminated, the subject-matter of counts 12,13 and 14 be rejected as not involving invention- over Lilienfeld’s Austrian application A-2709-19.”

There was, however, an award of priority to Dreyfus as stated.

Both parties then took their respective appeals to this court, Dreyfus in case No. 2771 and Lilienfeld in case No. 2774, both appeals being in interference No. 50',553. The appeals involve only the decisions as to priority, and we shall not, in this proceeding, pass upon the issue of patentability suggested by the Board of Appeals as to certain counts.

Other interferences between these same parties are involved in eases 2772, 2773, and 2775, which are being decided concurrently herewith. The records in all the cases were consolidated by consent. 49 F.(2d) 1062, 18 C. C. P. A.-, and 49 F.(2d) 1065, 18 C. C. P. A. —.

The art to which the counts relate is a highly technical one, involving chemical problems with reference to cellulose ethers, or esters, a comparatively recent, or, at least, a quite modem, discovery. It is an art of which, undoubtedly, there remains much yet to be learned.

The earliest patent relating to the art of producing cellulose ethers, placed in this record, is one granted by the French government to Dreyfus November 19’, 1913, upon an application filed November 18, 1912. Lilienfeld has a United States patent of June 20, 1916, based upon an application filed June 26,1912, and, from statements in this record, it appears that Lilienfeld obtained a British patent as early as 1912. These early patents are not involved in the issues before us, except as reference is made to them to ascertain the state of the art prior to 1919.

Prom the decision of the Examiner of Interferences we quote the following-:

“Cellulose is the fundamental constituent of the cell-walls of plants and is probably elaborated from simpler carbohydrates secreted by the protoplasm of the cell. Chemically, it is a carbohydrate of the general formula (CGH10G5)n, but little is known as to its structure except that it is exceedingly complex. Certain of the hydrogen atoms in the cellulose molecule are hydroxyl hydro-gens and can be replaced by acid radicals such as the nitrate group and the acetate group, forming corresponding esters. If replaced by an alkyl or aryl radical, there is formed an ether, the ether being of a low or high degree of etherification depending on the number of hydroxyl hydrogens which have been replaced. In the preparation of these compounds, the usual procedure is to form an alkali cellulose by treating cellulose with caustic soda, subjecting the alkali cellulose thus produced to the action of the appropriate reagents.”

It should be clearly understood that neither party here claims that the1 counts in issue comprise what may be termed generic invention; both simply claim improvements in the art as it existed at the time of their respective filing dates in 1919, and these alleged improvements consist, largely, in a reduction of the amount of water used in making the completed products. The Board of Appeals says:

“The process involved is an improvement over prior processes of producing alkali cellulose by cutting down the amount of water employed especially toward the completion of the operation and it is unnecessary to explain the operation in detail.”

For convenience and clarity, it seems well, first, .to segregate the counts into four general groups. Such of them as appear to require individual treatment will be then discussed.

Counts 15 to 26, inclusive, are limited to the production of alkali cellulose per se, and do not include the advancement of the material to the cellulose ethers, or esters, stage. Hence they will be taken as comprising the first group.

Counts 27 to 41, inclusive, relate to the further etherification of cellulose substances which have been already partially etherified and will be referred to as the second group1.

Counts 1 to 11, inclusive, as stated by the Examiner of Interferences, “ * * * differentiate from the prior art in that they require the impregnation of cellulose with caustic alkali solution, the removal of part of the liquid, preferably by expression, the intimate admixture of concentrated caustic soda solution or solid eaustic soda, and etherification.”

We treat 1-11 as a third group'.

Counts 12 to 14, inclusive, are, generally speaking, in the same class as the third group, but are placed by us as a fourth, because of certain limitations which, the counts contain.

Of the first group, counts 15-26, No. 22, is quoted, as representative:

“Count 22. In making alkali cellulose, mixing alkali solution and cellulose, allowing to stand, separating the excess of solution, adding solid caustic alkali and then thoroughly mixing.”

Our first concern with reference to' this group relates to an application by Lilienfeld, filed August 1, 1919, at Vienna, Austria, seeking patent under the laws of Austria, and identified in the record as “Lilienfeld’s Austrian Application A-2709-19.” This application seems to have eventuated in an Austrian patent.

The filing date of this Austrian application is relied upon by Lilienfeld for concept tion and reduction to practice, of counts 15-26, under the provisions of what is commonly referred to as the “Nolan Act” of March 3, 1921, being chapter 126, 41 Stat. 1313 (35 TJSCA §§ 80-87).

Dreyfus relies upon September 1, 1919, that being the date of his filing an application in London, England, upon which a British patent subsequently issued. That Dreyfus is entitled to rely upon the disclosures of said British application is not seriously challenged.

Dreyfus attacks the Lilienfeld Austrian application of August 1, 1919, upon two grounds, viz: First, that it is not entitled to any weight on the question of priority, and, second, that it does not have a sufficient disclosure.

In arguing the first ground, the Dreyfus brief has considerable matter which relates also to the second ground.

The Lilienfeld Austrian application, A-2709-19, among other things, recites:

“Soda celluloses, which when completely homogeneous contain only small amounts of water and large excesses of caustic alkali, are used for various purposes, for example in carrying out chemical transformations such as alkylation or aralkylation or the like.”

Certain alleged disadvantages in the theretofore existing art are then recited, and the statement continues:

“The present process successfully overcomes all these disadvantages.
“It consists in impregnating cellulose or cellulosie materials with caustic alkali solution or water then pressing out as much as possible and incorporating the desired amount of eaustie alkali into the presscake in solid form or as, highly concentrated solutions.
“The alkali celluloses prepared according to the present process are very poor in-water and may be provided with any desired excess of alkali in a very simple manner. As experience shows they are adapted in a high degree for chemical transformation, for example alkylating or aralkylating cellulose.”

We have italicized the phrases which were emphasized by Lilienfeld’s counsel in the argument before us. It is understood that “alkylating” and “aralkylating” have the same meaning, in so far as here important, as “etherifying.”

The application proceeds to set out two examples as teaching the method upon which Lilienfeld bases claims to counts 15-26. The first of these examples we quote in full:

“I. 100 kg. cellulose are impregnated with 500 to 1000 kg. of an 18% eaustie soda solution and are allowed to stand for 1-3 days at room temperature.

After this period the mass is freed from the excess in a press, suction apparatus or centrifuge so that the presscake has a weight of 180-200 kg. The presscake is then com-minuted in a suitable device, for example a tearing machine, edge-runner or shredder, preferably with cooling, 200-300 kg. of solid caustic soda are then added preferably in powder form, either at once or in portions with continuous stirring, kneading, shredding or the like. If it is desired to prevent any depolymerization of the cellulose from the start cooling should be provided during the kneading in of the caustic soda also.

The end product is a fine fibrous or pulverulent entire — by homogeneous material.

Example II differs from example I in that it calls for initial materials in the proportion of 100 kg. cellulose, and 500 to 1000 kg. of 30% caustic material, the resulting product to be reduced to from 90 to 120 kg.

It will be noted that we have italicized the numerals relating to kilograms. The weight to which the mass is to be reduced, in both examples, constitutes the essential point of Dreyfus’ attack upon the sufficiency of Lilienfeld’s disclosure.

Dreyfus insists that example I is inoperative because, he alleges, the volume of the complete mass comprising 100 kg. of cellulose and 500 to 1,000 kg. of 18 per cent, caustic soda cannot, by the processes described, practicably, be reduced to a minimum weight of 180 kg., or even to the 200 kg. maximum called for, and that, a fortiori, the process of example II is inoperative.

Dreyfus further insists that Lilienfeld himself recognized this fact, and hence on September 26,1919, filed a new Austrian application in which he.changed the figures of “180-200” and “90-120” to “180-300.”

It appears that in Lilienfeld’s United States application, which, in part, resulted in the interference here involved, the first example fixed the weight of the product, after reduction, at 180 to 200 kilograms and the second example at 180 to 240 kilograms; the proportions of the original masses remaining the same as those given in the Austrian application. It is thus seen that, so far as his United States application is concerned, the relative proportions of the reduced product in the first example remain the sainé as in the Austrian example I, but are altered as compared with Austrian example II.

As for Lilienfeld’s Austrian example II, it seems to be tacitly conceded that it is inoperative, and we shall not further concern ourselves with it. This particular issue depends upon example I.

Practically the only argument, other than lack of sufficient disclosure, urged against the Lilienfeld Austrian application, seems to be based upon the fact of Lilienfeld filing the second Austrian application of September 26, 1919, making the changes alluded to above, and upon the showing of certain documents, which are exhibits in the ease, that were filed by Lilienfeld in the British Patent Office in connection with an application made by him for a British patent.

Even these matters, in the final analysis, if important at all, appear to us to be important only upon the question of disclosure.

This question of disclosure is, of course, one of fact. The burden rested upon Lilienfeld, as the junior party in the United States Patent Office, to demonstrate that his August 1, 1919, Austrian application constituted a sufficient disclosure to support the counts. Proof was taken by both parties; the evidence presented naturally being in the nature of expert testimony. Upon the basis of this testimony, the tribunals of the Patent Office have concurred in awarding priority to Lilienfeld upon this group of counts.

We have carefully examined the testimony. The witnesses for Dreyfus are all gentlemen in the employ, at least part of the time, of the Dreyfus cellulose interests; the witnesses for Lilienfeld are in the employ of Eastman Kodak Company, a licensee of Lilienfeld. We find nothing in the record to indicate that their respective employments gave any bias to their testimony.

To review this testimony, with which the parties and their counsel are entirely familiar, would unnecessarily add to the length of this opinion. There is disagreement among the experts, as so frequently happens in cases involving chemical questions relating to a comparatively modem art, as well as in eases arising in nearly all other technical fields. The testimony of all of them cannot be fully reconciled. Certain of the testimony for Lilienfeld is positive and unequivocal to the effect that by his process in issue the product sought was produced. We would not be justified upon the record in reversing the Patent Office tribunals upon this group of claims. Beidler v. Caps, 36 F.(2d) 122, 17 C. C. P. A. 703.

Of the second group, counts 27 to 4L, inclusive, Nos. 27 and 33, are fairly typical :

“Count 27. A process of manufacturing ethers of cellulosie bodies by converting ethers of cellulose bodies of lower degrees of etherification into ethers of higher degrees of etherification, which process comprises conducting the further etherification of the ethers of lower degrees of etherification in the presence of an amount of water not substantially exceeding 6.83 times the weight of the cellulose under etherification.”
“Count 33. A process of manufacturing ethers of cellulosie bodies by converting such ethers of lower degrees of etherification into ethers of higher degrees of etherification, which process comprises first mixing a material containing a partially etkerified cellulosie body with an amount of alkali exceeding in weight the amount of water present in the mixture and then performing the further etherification.”

The counts of this group were copied by Dreyfus from the patent issued to Lilienfeld, No. 1,483,738, supra. For priority upon them Lilienfeld relies upon the disclosures contained in another Austrian application (A-1141 — 19), filed April 1,1919. Dreyfus relies upon bis same British application of September 1, 1919.

The tribunals of the Patent Office concurred in awarding priority to Lilienfeld upon the counts of this group also.

It is noted that certain of these counts (27-32 and 40-41) limit the amount of water present during the -further etherification proeess to a quantity which does not exceed 5 or 6.83 times the weight of the cellulose material under etherification, while the other counts (33-39) name no particular proportions.

It is urged before us by Dreyfus, and, from the decisions of the tribunals of the Patent Office, appears to have been urged before them, that the evidence in the case indicates a much lower proportion of water than 5 or 6.83 to 1; that one of the Dreyfus witnesses places it as low as 1.46 to 1; that one of Ldlienfeld’s witnesses (Donohue), called in rebuttal, placed it at 2.84 to 1, and modified' this upon cross-examination, while another (Clark) fixed upon 2.35 to 1 and 3.7 to 1, based upon new calculations.

Dreyfus further insists that all three of these witnesses testified that it was impossible “to evaporate the 500 parts given as the lower limit in line 130, page 5, of Lilienfeld U. S. patent 1,483,738,” and that therefore the ratios of 5 to 1 or 6.83 to 1 are not derivable from Lilienfeld said patent which states that “the figures 500 to 14001 parts [weight of reaction mixture] correspond to ratios respectively of about 5:1 and 6:83.1 of water to actual cellulose in the material being operated upon.”

Assuming, without deciding, that Dreyfus correctly construes the testimony alluded to, we yet fail to see wherein that is of consequence in this proceeding.

The counts in this group are taken from Lilienfeld’s already granted patent. Priority, not patentability, is the issue here. Even the counts which give specific figures for the ratios do not give them as mínimums, but, as will be observed from count 27, supra, say “not substantially exceeding. * 3 3 ” In count 32 even the word “substantially” is not used.

Error in the decisions of the Patent Office tribunals as to the counts of this group is not found.

The third group, comprised in counts' 1-11, presents an issue upon which the Examiner of Interferences and the Board of Appeals reached different conclusions.

Counts 1 and 8 are here quoted:

“Count 1. A process of producing cellulose ethers, which process comprises first impregnating a cellulosie body with an aqueous liquid, secondly removing part of the liquid, treating the residue with caustic alkali in the solid state and thereafter treating the product with an etherifying reagent.”
“Count 8. Proeess for the manufacture of an ether of a carbohydrate having the empirical formula n(C°H10O5) which comprises incorporating with the carbohydrates, in the first place only so much solid caustic alkali, optionally in the presence of an acqueous liquid in amount insufficient to completely dissolve the "said caustic alkali, that in the subsequent treatment with alkylating agents, only ethers of a lower degree of alkylation are produced, and converting the ethers so obtained into ethers of higher degree of alkylation, by adding, successively, more caustic alkali and alkylating agents, substantially as described.”

It will be observed that these counts differ from those in the first group (15-26), in that, in addition to the step of producing alkali cellulose, per se, they require also the production of cellulose ethers from this alkali cellulose. Count 8 and some of the others require individual discussion.

It having been held already (counts 15-26) that the first general step — producing alkali .cellulose — is disclosed in the Austrian application of Lilienfeld, we are concerned, as to this third group only with the question of whether he is also entitled to priority as to the second general step — the production of the ethers from the alkali cellulose, so produced. For this latter step Lilienfeld relies, not alone upon his Austrian application, A-2709 — 19, wherein it was. stated in the specification that the alkali cellulose produced by that proeess was “adapted in a high degree for chemical transformation, for example alkylating or aralkylating cellulose,” but also upon the contention that alkylation or etherification was old in the art, as illustrated in his United States patent, No. 1,188,376, granted June 20, 1916, entitled “Alkyl Ethers of Cellulose and Process of Making Same,” and the 1913 French patent to Dreyfus heretofore referred to by us as the oldest patent relating to this art which the record contains.

It may be taken as established that the prior art did disclose matter relating broadly to the production of cellulose ethers from alkali cellulose. But the Examiner of Interferences, for the reasons given quite fully in 3ns opinion, held that such prior art did not make sufficient disclosure to enable persons skilled in the art to produce the ethers from the particular alkali cellulose product resulting from Lilienfeld’s process as described in counts 15-26.

The Board of Appeals in reversing this part of the Examiner’s decision, referred to former adjudications by the Patent Office upon the subject-matter of alkali cellulose and cellulose ethers, in one of which it was held that Lilienfeld’s alkali cellulose was not patentably different from prior alkali cellulose, and in another of which it was held that the disclosure of the Dreyfus French patent anticipated counts similar to -count 1. The Board then referred, to the contradictory character of the evidence presented on behalf of the respective parties; stated that it had examined the applications of both partieá as originally filed generieally; and said:

“ * * * It is our opinion that there is nothing therein [the original applications as filed] to indicate that either party believed there would be any difficulty in etherifying the product produced by the new methods of preparing the alkali cellulose.”

No error is assigned by Dreyfus upon the action of the Board in considering the prior adjudications which were therein referred to, and which are mentioned by us above. We know of no reason why it might not properly take cognizance of such decisions as were relevant to the issue and follow the principle of stare decisis. This it evidently did. The Examiner of Interferences followed the same course in referring to prior holdings of patentable distinctions between certain alkali celluloses of the parties.

Having taken cognizance of these holdings, and having made them a factor in determining the ease, such holdings become a part of the record, to the extent expressed in the respective decisions of the tribunals of the Patent Office.

The board also took into consideration the language heretofore quoted by us from Lilienfeld’s, A-27091 — 19', Austrian applies tion, to the effect that the alkali celluloses produced by the process of counts 15-26 were adapted for 'etherification, and, upon the whole record in the ease, awarded priority upon counts 1-11 to Lilienfeld.

We, too, have examined the testimony and other pertinent matters of record in the ease, and do not feel justified in holding that the Board eiTed in awarding priority upon this group of claims to Lilienfeld.

The conflicts in the testimony relating to the attempts to practice the process have been observed and considered just as they were relative to the other counts, and the comments made upon it by us in passing upon those counts might, with equal propriety, be made here.

Dreyfus has stressed the contention that Lilienfeld’s witnesses, who testified to having produced ethers from the particular alkali cellulose involved, received information as to procedure from Lilienfeld apart from the written process itself, either directly or through intermediate parties, and therefore do not meet the test required by the patent laws to qualify as persons “skilled in the art.”

We do not regard the contention as good, considered in the light of all the evidence in the ease.

Count 8 differs from the other counts of this group, in that it is, as stated by the Board of Appeals, “specific to a two step method of etherification.” The Board held the disclosure of the Lilienfeld Patent, No. 1,188,376, sufficient to teach those skilled in the art how to etherify the product of the Austrian application, A-2709 — 19, in the manner called for in said count 8, following certain reasoning in interference No. 51,375, cases 2773 and 2775, supra, which latter, ease we have also reviewed and decided concurrently herewith. Lilienfeld, therefore, was given August 1,1919, by the Board for reduction to practice of count 8.

In so holding, the Board, we think, fell into error, because we are unable to find where Lilienfeld in his preliminary statement makes any claim to such date.

There were two declarations of interference No. 50,553; the first being declared February 13, 1924. Certain counts were dissolved out of this interference by the Law Examiner. This led to a renumbering of the counts in a second declaration of March 19, 1927.. In this second declaration a number of counts, not theretofore involved were added to those not dissolved out of the first.

Count 8 in the interference1, as it stands before us, was count 11 in the first interference declared.

Lilienfeld filed a preliminary statement relative to the first interference, in which he said: “Counts * * * 7 to 17 inclusive, * * * all cover subject matter disclosed in my U. S. application 464,357, filed April 25, 1921, * * * ” and referred for disclosure to an Austrian application filed May 5, 1920, No. 2182/20, and to several subsequent foreign applications. There is no reference in this preliminary statement relating count 8 to Lilienfeld’s Austrian applications of either April 1,19191, or August 1,1919.

On April 25', 1927, Lilienfeld filed a second preliminary statement relating wholly to the added counts of the second interference declaration. In this he stated that these added counts included claims taken from, his United States patent, No. 1,483,738, among them claim 11. For disclosure of these added counts he cited the Austrian application of April 1, 1919, A-1141 — 19. The claim 11 of the patent is not count 8 of this interference.

The brief for Lilienfeld asserts that “both of Lilienfeld’s preliminary statements * * * set up this Austrian application A 1141 — 19 as a basis for this count [8].” As a matter of fact, neither statement does so set it up, and this error of the brief occasioned the court unnecessary confusion.

Under this state of facts Lilienfeld must be restricted to May 5,1920, for reduction to practice of count 8; that being the earliest date claimed by him. “His preliminary statement is his pleading and he is bound by it.” Townsend v. Smith, 36 F.(2d) 292, 296, 17 C. C. P. A. 647, 652, and eases therein cited.

Since this date is subsequent to September 1, 1919, the date of the British application of Dreyfus, it results that priority upon count 8 should be awarded the latter.

It may be said that the situation as to eount 8 of this ease differs from that as to the counts in companion eases 2773 and 2775> interference 51,375, in that, in the latter interference, Lilienfeld’s preliminary statement did expressly rely upon Austrian application A-1141 — 19 as a “basis for all six counts” of those cases. '

It is noted that the Board was led by “the very reasoning” which caused it to conclude that Lilienfeld was entitled to counts 1-11, to also “regard the subject matter of counts such as count 1 unpatentable,” and it is expressly stated that this is true as to count 8.

We are not now concerned, however, with the issue of patentability of these or any other of the counts, and neither party is here asking a ruling upon such issue.

We have referred to it only because of what is said by the Board, as quoted in the early part of this opinion, relative to counts 12,13, and 14, designated by us as the fourth and final group.

Priority upon this group was awarded to Dreyfus by both tribunals of the Patent Office, and the counts are those involved in the cross-appeal of Lilienfeld, ease 2774.

Counts 12 and 13 are here quoted:

“Count 12. Process for the manufacture of an ether of a carbohydrate having the empirical formula n(CeH10O6), which process consists in heating moist mixtures containing the ’ carbohydrate and undissolved caustic alkali, with an etherifying agent, without previously heating the carbohydrate in the presence of the alkali.
“Count 13. Process for the manufacture of an ether of a carbohydrate having the empirical formula n(C6H100B), which process comprises the step of submitting mixtures containing the carbohydrate and undissolved caustic alkali without previous evaporation of substantial amounts of water from such material to the action of an etherifying agent.”

The Examiner treated them as being similar to Nos. 1 to 11, which he awarded to Dreyfus, but the Board distinguished them from 1 — 11 in awarding the latter group to Lilienfeld, saying:

« * * * Dreyfus calls attention to certain limitations in counts 12,13 and 14 which do not appear in application A-27091 — 19, and as Lilienfeld does not advance reasons supporting his right to these counts we shall hold that he is not entitled to make them.”
While the Board does not state that the “certain limitations” are, it is assumed that it has reference to that feature of No. 12 comprised in the phrase “without previously heating the carbohydrate in the presence of the alkali,” and to the feature of Nos. 13 and 14 comprised in the phrase “without previous evaporation of substantial amounts of water from such material.”

Lilienfeld’s argument as to this group is to the effect that, first, although the Board stated its belief that the counts 12-14 were not patentable over counts 1-11, awarded by it to Lilienfeld, it nevertheless gave priority to Dreyfus upon 12-14 upon the sole ground that Lilienfeld failed to disclose the “certain limitations” alluded to, and, second, that counts 3, 9, and 11 are substantially the same as counts 12, 13, and 14. It is therefore argued that the Board has fallen into an inconsistency. " .

Obviously, if the meaning of the compared groups of counts is, in all respects, the same, there would be inconsistency in the Board’s holding, but, if limitations are present in counts 12,13, and 14, which are absent from the other counts, then there would be no inconsistency, because the law is well settled that, while in interference proceedings the counts are to be given the broadest construction which a rational and natural interpreta^ tion will admit, nevertheless, expressly defined limitations may not be ignored. Slattery v. Lamer, 36 F.(2d) 298, 17 C. C. P. A. 725; In re Joseph Bijur, 40 F.(2d) 999, 17 C. C. P. A. 1134.

We think the issue is befogged somewhat by the question of patentability to which the Board found it necessary to refer. Since we are not interested now in that question, our only concern is whether Lilienfe-ld’s application, taken in connection with prior art, discloses the “certain limitations.” If it does not, then the counts are not the same, and the apparent inconsistency in the Board’s holding disappears.

The burden rests upon Lilienfeld as the junior party to show that, in his application, taken in connection with the prior art, these limitations are disclosed. This he has failed to show. Accordingly, there is no error in the Board’s holding as to counts 12, 13, and 14.

The issues presented in the respective appeals are almost wholly questions of fact.1 Accordingly, we deem it unnecessary to review or refer to the many authorities cited by the parties to any further extent than has been already done.

Upon the hearing of these cases, counsel for Dreyfus presented a motion to strike out certain designated portions of the briefs-in behalf of Lilienfeld, largely upon the ground that the portions complained of referred to, and in many instances quoted from, proceedings had in the Patent Office upon interlocutory and other matters not a part of the record before us.

Consideration has been given to this motion and the answer thereto filed by Lilie-nfeld’s counsel. Considerable portions of the brief in eases 2171, 2172, and 2173 are justly subject to the criticism made. On May 9, 1931, after these cases had been set for hearing on May 15th, following, a motion was made on Lilienfeld’s behalf to bring all records relating to these interlocutory proceedings before us “for purposes of argument.” This motion we denied on May 11,19-31. The briefs for Lilienfeld were filed on that day, and contained the matter complained of in the motion to strike, as we learned when our study of the cases began. The record itself was filed May 19, 1930-, and printed November 8, 1930.

If counsel for Lilienfeld felt, after the original record had been printed, that matter, had been omitted which should have been included, it was their duty seasonably to have made a motion for diminution, and the action of counsel in including in the briefs quotations from, allusions to, and arguments based upon, matters not in the record, has added greatly to the labor of the court in determining the issues of these somewhat complicated eases. It is a practice condemned by all courts and one forbidden by our rules. We have wholly disregarded this objectionable matter and have considered nothing except what is properly in the record. Had the full extent of counsel’s offending in this regard been earlier known to us, we should have felt constrained to strike the entire briefs and require the filing of new ones properly limited.

It may be said -that two of the briefs for Dreyfus are subject to a like criticism, but the degree of their offending is not so great as in that of the Lilienfeld briefs.

The decision of the Board of Appeals is reversed as to count 8, and affirmed as to all other counts.

Modified.


source: Caselaw Access Project

author: LENROOT, Associate Judge.

license: Public Domain

text:
    DREYFUS v. LILIENFELD.
    Patent Appeal No. 2772.
    Court of Customs and Patent Appeals.
    June 5, 1931.
    See, also-, 49' F.(2d) 1055, 1065.
    Baldwin & Wight, of Washington, D. C. (Lloyd B. Wight, of Washington, D. C., and Chas. W. Levinson, of New York City, of counsel), for Dreyfus.
    Charles L. Sturtevant and Arthur S. Poster, both of Washington, D. C., and Daniel I. Mayne, of Rochester, N. Y., for Lilienfeld.

      Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal involving ten counts of an interference, No. 50554, declared in the United States Patent Office between an application for patent, No. 401,381, filed by appellant on August 5, 1920, an application for patent, No. 611,5Í6, filed by appellee on January 8, 1923 (which was a division of a prior copending application, No. 436,604, filed by appellee on January 11, 1921), and an application, No. 468,756, filed by certain other parties who are not parties to this appeal.

The subject-matter of the invention, broadly stated, relates to the process of making cellulose ethers. It appears that appellant is a citizen of Switzerland, doing business in England, and appellee is a citizen of Poland, residing in Austria.

Claims 1 and 10 are illustrative of the counts in issue, and read as follows:

“1. The process of making cellulose ethers, which comprises the steps of intimately mixing water in the liquid state ánd alkali with cellulose, said water and alkali being added separately to said cellulose to form substantially homogeneous alkali cellulose and thereafter etherifying said cellulose.”
“10. The process of making cellulose ethers, which comprises mixing cellulose with substantially the quantity of water in the liquid state for etherification, then intimately incorporating in said mixture the quantity of alkali required for the etherification reaction to form substantially homogeneous alkali cellulose, and thereafter etherifying said cellulose.”

By the decision of the Examiner of Interferences, priority was awarded, as to all of said counts, to appellant. Upon appeal to the Board of Appeals by appellee, the Board reversed the decision of the Examiner and awarded priority as to all of the counts to appellee, and from such decision appellant takes this appeal.

The Board, while awarding priority to -appellee, stated that it did not regard the counts here in issue as “drawn to a proper patentable combination, ip. view of the state of the art, in adding a broad step of etherification to a new method of preparing alkali cellulose.” With respect to this statement of the Board, it will be given no consideration by us, because the question of patentability of the counts is not before us; the only question for determination by us being that of priority.

Other interferences between these same parties are involved in eases Nos. 2771, 2774, and 2773, 2775; which are decided concurrently herewith. 49 F.(2d) 1055, 18 C. C. P. A. pages-; 49 F.(2d) pages 1065, 18 C. C. P. A.-. • The records in all of the cases were consolidated by consent.

The decision of this court in said eases 2771, 2774, dealing with interference No. 50553, involved to a very large extent the same questions as are presented upon this appeal. Reference is made to the opinion in said cases for a discussion of the general subject-matter of the invention and of other matters relevant, in a general way, to the issue here involved.

In the case at bar, appellee relies for priority upon an Austrian application for patent filed by him on August 1,1919. On July 6, 1923, by direction of the Commissioner of Patents, appellee was declared entitled to the benefits of section 1 of the Nolan Act of March 3, 1921, 41 Stat. 1313 (35 USCA § 80).

Appellant claims priority by reason of an application for a British patent filed by him on September 1, 1919. The record establishes, and it is conceded, that appellant is entitled to said date of September 1, 3 919, for conception and reduction to practice of the invention embodied in the counts here in issue.

There are two principal questions involved herein: (1) Whether said Austrian application of August 1, 1919 should be accorded any weight whatever; and (2) whether said Austrian application discloses, in connection with the prior art, the invention set forth in the counts here in issue.

For the reasons stated in the opinion of the court in said eases Nos. 2771, 2774, we are of the opinion that said Austrian application of August 1, 1919, in determining the question of priority, is entitled to be considered for whatever said application discloses relating to the counts here in issue.

For the purpose of determining whether or not said Austrian application discloses, in connection with the prior art, the invention here in issue, each of the counts involved herein may be divided into two principal steps: (1) The elements of the counts defining the process of forming substantially homogeneous alkali cellulose; and (2) etherifying said homogeneous alkali cellulose. We will first consider the second of these steps.

With regard to the etherifying of such cellulose, the question here presented is identical with the question presented in counts 1 to 11, inclusive, of said interference No. 50553, in case No. 2771, and for the reasons stated in the decision in said case with respect to said counts 1 to 11, inclusive, we hold that said Austrian application of August 1) 1919, considered in connection with the pri- or art, supports the etherification element of the counts here in issue.

With regard to those elements of the several counts here in issue relating to the process of forming homogeneous alkali cellulose, counts 1, 2, 3, 7, 8, and 9 clearly read upon said Austrian application of August 1, 1919.

For the reasons above stated, priority as to each of said six counts was properly awarded to appellee.

Counts 4, 5, 6, and 10 each contain that element set forth in count 10 as follows: “Mixing cellulose with substantially the quantity of water in the liquid state for etherification.” Appellant contends that the proper construction of this element in each of these counts is that only such quantity of water is mixed with the cellulose as is necessary for the reaction, and that, inasmuch as said Austrian application discloses the addition of water in excess of the quantity needed for etherification, and afterwards removing such excess before etherification, the element in said counts now being considered is not disclosed in said Austrian application.

Appellee, upon the other hand, contends that said counts should, pursuant to the general rule with respect to counts in interference eases, be given the broadest interpretation which they will reasonably pernfit, and that, when so construed, the disclosure iu said Austrian application fully supports said counts.

In its decision the Board of Appeals said (with respect to all of the counts here in issue) :

«* • • have eaT-gfuiiy considered both briefs as to the meaning of the counts and it is our view that if the counts read upon Lilienfeld’s application directly involved in this interference, they read upon his Austrian application A-2709-19. * * * ”

Although the phraseology of the disclosure of appellee’s United States application is not the same as in said Austrian application, the disclosures are, in so far as the questions here involved are concerned, substantially identical. If counts 4, 5, 6, and 10 should now receive the construction contended for by appellant, they would not be supported by either appellee’s United States application or by his Austrian application. So far as appears from the record, appellant has never claimed that said counts are not supported by appelleej’s United States applies tion; the record does not disclose that any motion was ever made by appellant to dissolve the interference as to said counts, and even if such motion had been made and denied, any claim that appellee’s United States application does not support said counts could not be considered by us, there being no assignment of error with respect to suoh question.

We must therefore assume as a fact that said counts are supported by appellee’s United States application, and that, upon the question of whether the specification of said application supports said counts, appellant is content that they should receive such a broad construction as to read upon said specification.

The counts are broad, and we think they may be reasonably construed as meaning that, so far as the quantity of water is concerned, the mixture shall contain only such water as is necessary for the etherification process when the process has reached the stage of having formed homogeneous alkali cellulose, and, so construed, this element is clearly disclosed by said Austrian application.

Assuming, for the purpose of discussion only, that there may be doubt as to whether said Austrian application supports said counts, it should be resolved against appellant because he has accepted a construction of the counts under which said counts are supported by appellee’s United States application, and, as already stated, the disclosures in said application and appellee’s Austrian application axe substantially identical.

For these reasons, we find no eixor in the Board’s decision awarding priority as to counts 4, 5-, 6, and 10 to appellee.

Appellant, on May 15,1931, filed a motion to strike out certain portions of appellee’s brief in this ease because .they related to matters not found in the record. A single brief was filed covering cases Nos. 2771, 2772, and 2773. What was said by the court iu its decision in cases Nos. 2771, 2774, with respect to the briefs of both appellee and appellant, is applicable to the ease at bar, and !n coming to our determination in this ease we have not considered any matters set forth in either of the briefs relating to matters not found in the record.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GRAHAM, Presiding Judge.

text:
    DREYFUS v. LILIENFELD. LILIENFELD v. DREYFUS.
    Patent Appeals Nos. 2773, 2775.
    Court of Customs and Patent Appeals.
    June 5, 1931.
    See, also, 49 F.(2d) 1055, 1062.
    Baldwin & Wight, of Washington, D. C. (Lloyd B. Wight, of Washington, D. C., and Chas. W. Levinson, of New York City, of counsel), for Dreyfus.
    Charles L. Sturtevant and Arthur B. Foster, both of Washington, D. C., Newton M. Perrins and Daniel I. Mayne, both of Rochester, N, Y., for Lilienfeld.
    Before GRAHAM, Presiding Judge, -and BLAND, HATFIELD, GARRETT, -and LENROOT, Associate Judges. .
   GRAHAM, Presiding Judge.

An interference was declared on August 19, 1924, by the ÍTnited States Patent Of-flee between a patent, No. 1,451,330, granted to Henry Dreyfus, on April 10, 1923, on an application filed August 5, 1920, and an application of the party Leon Lilienfeld, serial No. 695,854, which was filed February 28, 1924.

The subject-matter of said interference was set out in six counts, which are as follows:

“Count 1. Process for the manufacture of cellulose derivatives, being aralkyl ethers of cellulose, comprising treatment of a eellulosio body with an aralkylating agent in presence of a base.
“Count 2. Process for the manufacture of cellulosie derivatives, being aralkyl ethers of cellulose, comprising treatment of a eellulosio body not soluble in alkali, with an aralkylating agent in presence of alkali.
“Count 3. As new products aralkyl ethers of cellulose being cellulosie derivatives wherein hydroxylhydrogen of the cellulose is substituted by aralkyl.
“Count 4. As new, -products, aralkyl ethers of cellulose, wherein the hydroxyl hydrogens of the cellulosie body are partially substituted by aralkyl.
“Count 5. As new products, benzyl ethers of cellulose.
“Count 6. As new products, benzyl ethers of cellulose, wherein the hydroxyl hydrogens of the cellulosie body are partially substituted by benzyl.”

The Examiner of Interferences divided the counts into three groups, noting that counts 1 and 2 form one group, 3 and 5 a second, and 4 and 6 a third. He awarded priority of invention of the subject-matter of counts 1, 2, 4, and 6 to Dreyfus, and of counts 3 and 5 to Lilienfeld.

The Board of Appeals modified this decision, awarding priority of the subject-matter of count 2 to Dreyfus, and of the remaining counts to Lilienfeld. Both parties have appealed to this court.

The Examiner of Interferences, in his decision, made the following statement:

“Dreyfus relies for proof of priority on a provisional application filed in Great Britain on September 3,1919, and designated No-. 21,661. Lilienfeld has apparently accepted that application as sufficient to give Dreyfus the benefit of the date which is urged on his behalf and it is therefore unnecessary to discuss the same herein. Lilienfeld seeks to go back of September 1,1919, by mean's of three Austrian applications, namely, A-2703 — 19, filed on August 1, 1919; A-2709 — 19, filed on August 1, 1919; and A-1141 — 19, filed on April 1, 1919.”

These facts are properly stated, as we' view the record.

The subject-matter of this interference, as will be observed from the counts above quoted, relates to the production of ethers of cellulose, and is closely related to the issues involved in Dreyfus v. Lilienfeld, 49 F.(2d) 1055, 18 C. C. P. A.-, and Dreyfus v. Lilienfeld, 49 F.(2d) 1062, 18 C. C. P. A. -, decided concurrently herewith. A full and comprehensive statement of the incidental facts involved in the case may be found in' the opinion of this court filed in said first-cited ease, to which reference is hereby had. It is not thought necessary, for the purposes of this opinion, to set them forth here any more fully.

The Board of Appeals stated in its decision that in the eases just cited and referred to “the production of the ether of cellulose was of a general nature but the disclosures related more particularly to ethers that may be regarded broadly as the ethyl type. In this interference the subject matter of the counts is limited to benzyl ethers of cellulose.”

It is argued by Dreyfus that Lilienfeld is not entitled to priority on count 1, because of the fact that the Austrian application, A-2709 — 19, filed on August 1, 1919; does not disclose the sub ject-matter of said count. The principal point which is made in this respect is that Lilienfeld included in his said application two examples of how he proposed to make his particular product, and that it has been established by the testimony of experts shown in the record that these examples are inaccurate and inoperable. Arguing from these premises, Dreyfus contends that the disclosure is insufficient. The particular fault which Dreyfus finds in this respect is that the applicant in the Austrian patent, A-27091 — 19, in. his examples, proposes: First, to impregnate 100 kilograms of eellulose with 500 to 1,000 kilograms of 18 per cent, caustic soda solution and permit the same to stand for from one to three days, and to then press, centrifuge,' or suck the same to a- weight of 180 to 200 kilograms. Second, to impregnate 100 kilograms of cellulose with 500 to 1,000 kilograms of 30 per centum caustic soda solution, permit this to stand for from 6 to 48 hours, and then press, centrifuge, or suck the same to a weight of 90 to 120 kilograms.

Lilienfeld’s United States application here involved gives nine examples, the first one of which is exactly the same as example 1 of his Austrian application above referred to. The other examples vary somewhat in proportions.

Dreyfus contends that Lilienfeld after-wards, in his application of September 26, 1919, corrected these examples, thus admitting he was in error in giving them in the first instance. From this he argues that Lilienfeld should be held to be the junior inventor because of Dreyfus’ application of September 1,1919.

The evidence is somewhat conflicting as to the question of whether the mass of eellulose could be compressed as Lilienfeld described it in his said examples. We are of opinion, however, that a consideration of the evidence will lead to the conclusion that we are not justified in reversing the decisions of the Patent Office. The experts who have testified differ on this question, and we shall therefore not disturb the finding of the Board of Appeals on this issue. Example No. 1, at least, under the evidence, should be considered as operable.

Inasmuch as the party Dreyfus has challenged the right of the party Lilienfeld to priority upon said count 1, it becomes, important to ascertain what disclosure was made by said Austrian application, A-27091— 19. It is contended by Dreyfus j;hat Lilienfeld should not be entitled to the date of this Austrian application, as it makes no disclosure of the subject-matter of the count. It will be observed that all the counts of this interference are general in character, and give no specific proportions of. the respective chemical substances which are to be used in the process or products obtained. Therefore, if the Austrian application in question teaches the process in a general way, it is sufficient upon which Lilienfeld may base his contentions. We find, in said application, the following:

“A Process for Preparing Alkali Celluloses which Contain an Excess of 'Caustic Alkali and are Poor in Water.
“Soda celluloses, which when completely homeogeneous contain only small amounts of water and large excesses of caustic alkali, are used for various purposes, for example in carrying out chemical transformations such as alkylation or aralkylation or the like.
“The alkali celluloses prepared according to the present process are very poor in water and may be provided with any desired excess of alkali in a very simple manner. As experience shows they are adapted in a high degree for chemical transformation, for example alkylating or aralkylating cellulose.”

We are of opinion, in view of the quoted statements, that the party Lilienfeld sufficiently disclosed, for the purposes of said count 1, the process involved. We are well aware of the rule which requires the disclosure of a foreign patent to be so full and complete that no experimentation is required to follow it. However, this count of the interference, being so broadly drawn, reads upon this Lilienfeld disclosure.

We agree with the Board of Appeals that priority as to count 2 of the interference should be awarded to Dreyfus. We are unable to find anything in the various Austrian applications of Lilienfeld which amounts to a statement that he proposes the treatment of a cellulosie body “not soluble in alkali.” As it does not appear to be questioned that Dreyfus does show this, this count of the interference, as well as the other counts, being taken from Dreyfus’ American patent No. 1,451,330, granted April 10, 1923, on an application filed August 5, 1920, it follows that Dreyfus was properly awarded priority as to this count.

Counsel for Lilienfeld contend that their various Austrian patents may be so construed as to lead to the conclusion that the cellulosie material used by Lilienfeld was not soluble in alkali, but no part of the specification has been indicated to either the tribunals of the Patent Office or to this court, which is convincing in that regard. In an attempt to substantiate the claim of counsel in this respect, a statement is made in the brief that communication has been had with Lilienfeld since this material was submitted, and that he has stated that he used a cellulosie substance not soluble in alkali. Such a statement is not supported- by the record and is highly improper, and will not be considered by the court.

Counts 3 and 5 call for aralkyl ethers of cellulose and benzyl ethers of eellulose, respectively. The Examiner of Interferences held, and Lilienfeld contends, that his Austrian application, No. A-2703 — 19, filed August 1,1919, was a sufficient disclosure of the subjeet-máttér of these counts. In the specification of this application we find the following:

“Eor carrying out of the process, preferably alkyl or aralkyl ethers of eellulose or starch and the like (for example, ethyl ether of cellulose or benzyl ether of eellulose of higher stages of alkylation and the like) insoluble in water but soluble in organic solvents are dissolved in a volatile solvent (for example benzol, benzol-alcohol mixture, carbon tetrachloride, chloroform, chloroform-alcohol mixture acetone, aeetone-aleohol mixture and the like), mixed with the oils described in patent No. - and in known manner worked up into one of the preceding named products.”

The experts in the Patent Office have agreed that Lilienfeld’s said disclosure plainly reads upon said counts 3 and 5. We agree with that conclusion, and are of opinion that Lilienfeld was entitled to priority as to these counts.

Counts 4 and 6 relate to ethers of cellulose in which the hydroxyl hydrogens are partially, instead of wholly, substituted by aralkyl or benzyl, respectively.

The issue as to these counts is this: Lilienfeld relies particularly on his Austrian application, A-1141 — 19 of April 1,' 1919. The Examiner of Interferences held that he was not entitled to the benefit of this ap'plieation because of an intermission of sixteen days between the filing of his application in this interference and the date when patent No. 1,483,738 issued. Said patent 1,483,738 was issued on application No. 436,380, filed January 10, 1921. • The Austrian patent, based on said application No. A-1141 — -19, had been issued, according to the uneontested statement of the Examiner of Interferences, prior to the issuance of said American patent.

After the hearing before the Examiner of Interferences, and before the submission' of the same to the Board of Appeals, the party Lilienfeld called attention, by his brief filed in the Patent Office, to various applica- ■ tions, some of which had not been specifically called to the attention of the Examiner of Interferences, and which Lilienfeld claimed, and claims here, constitute a complete chain of disclosures of the subject-matter of counts 4 and 5-, extending from said Austrian ap>plication A-1141 — 19 to the time of the in-. terference. The Board of Appeals held that this showing was sufficient, and that Lilienfeld had not forfeited his right to rely upon said Austrian application.

We find that the party Lilienfeld relied upon and specifically named, in his preliminary statement in this interference, among others, two pending United States applications, namely, 436,604 and 464,357, both of which bridge the gap complained of. An examination of these applications convinces us that the subject-matter of counts 4 and 6 was disclosed in these applications, and that hence there was a continuity between the Austrian application A-1141 — 19, and the application of Lilienfeld in issue, in that respect. These bridging United States applications are in the record, and, although they may not have been specifically called to the attention of the Examiner, they were at all times within the judicial notice of the tribunals of the Patent Office. There was no motion to remand the matter to the Examiner for further hearing, but the issues were contested, as made, before the Board of Appeals. This being true, no error is perceptible in the action of the Board of Appeals in considering them.

Said Austrian application A-1141 — 19, in our opinion, disclosed the subject-matter of said counts 4 and 6, and Lilienfeld is therefore entitled to priority as ' to said counts.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GARRETT, Associate Judge.

text:
    TRUSTEES FOR ARCH PRESERVER SHOE PATENTS v. JAMES McCREERY & CO.
    Patent Appeal No. 2739.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    E. E. Murdoek, of New York City (Charles R. Allen, of New York City, of counsel), for appellant.
    Rudolph L. von Bemuth and James McKinley Rose, both of New York City (Morrell S. Lockhart, of New York City, of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATEIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents in a trade-mark registration opposition proceeding.

On September 20, 1927, appellee James McCreery & Co., filed an application in the United States Patent Office for registration, under the Trade-Mark Registration Act of February 20, 1905 (15 USCA §§ 81-109), of the words “Foot Preserver” for use as a trade-mark on “boots and shoes of leather, canvas or fabric, or combinations thereof.”

The proposed mark having been passed to publication and published in the official gazette, appellant, Trustees For Arch Preserver Shoe Patents, gave notice of intention to oppose the registration, stating:

“The grounds for Opposition are as follows :
“That the mark for which application for registration is made, so closely resembles the trade marks filed, and registered, in the United States Patent Office enumerated below:
“Charles H. Brown, Trade Mark Appln. Ser. No. 21*6,014, Filed June 19, 1925, Reg. March 6, 1928, No. 239,510.
“Berenice Brown, Trade Mark Reg. No. 113,556, Reg. O'ct. 24, 1916;
“Berenice Brown, Trade Mark Reg. No. 161.351, Reg. Nov. 7, 1922;
“Berenice Brown, Trade Mark Reg. No. 161.352, Reg. Nov. 7, 1922;
“The above trade marks have been acquired by the present opponent as of record. The resemblance is so close as to produce confusion in the minds of the people, which would operate to the detriment of your opponent.”

•The words of the marks relied upon by appellant are “Arch Preserver,” applied also to boots and shoes. The two last registrations of appellant were under the act of 1920 (15 USCA §§ 85, 121-128), and concededly may not, as registrations, be relied upon as a basis for opposition in this case.

Proof was taken by appellant. On behalf of appellee a stipulation as to certain facts was filed.

The Examiner of Interferences rendered a decision in which he dismissed the notice of opposition for reasons hereinafter set forth and discussed, but held, independently of the opposition, that appellee had no right to register the mark because it was deemed to be merely descriptive. Appellee thereupon petitioned for a rehearing, which was granted with the statement that same “is essentially ex parte in its nature.”

The decision upon the rehearing reaffirmed the former holding as to the descriptive character of appellee’s proposed mark, “Foot Preserver,” and again denied the registration.

Both parties thereupon appealed to the Commissioner of Patents, and the Commissioner rendered the decision here appealed from, in which he reversed both holdings of the Examiner of Interferences, and held that appellant-opposer was entitled to make the opposition, but that the mark was not descriptive, citing upon, the latter point In re Irving Drew Co., 54 App. D. C. 310, 297 F. 889; and further held that appellee was entitled to the registration, notwithstanding the opposition.

The appeal to this court was then taken.

In the course of the decision, the Commissioner says:

“ * * * The applicant calls attention to more than one hundred registrations by others of trade-marks of like import and which consist of the word ‘arch’ or the word ‘foot’ combined with some qualifying word, such as Saver, D-Fend-R, Protector, Gard, Ease, and Eazer, which form a part of the marks ‘Arch Saver,’ ‘Foot Saver,’ ‘Areh-D-Fend-R,’ ‘Arch Protector,’ ‘Foot Protector,’ ‘Arch Ease,’ ‘Foot Eazer,’ and ‘Foot Gard,’ respectively. (See trade-marks listed in applicant’s schedules A. and B.) Many of these trade-marks were registered before either of the parties to this proceeding entered the field. In view of the many trademarks which have been registered comprising like combinations of words with like suggestive meanings, it is evident that neither of the parties to this proceeding is entitled to such broad protection of its mark as to exclude from registration the mark of the other party. The status of the existing marks is such that the public must exercise unusual care in discriminating between them in its endeavor to ascertain the source of ownership of the goods to which the respective marks are appropriated.”

The rule which has been applied by us in quite a number of decisions rendered since the date of the'decision of the Commissioner in the instant ease is at variance with his foregoing reasoning.

In American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 17 C. C. P. A. 906, this court, speaking through Judge Hatfield, after reviewing a number of decisions of other courts, stated the rule which we think applicable. It is g^iven in the first syllabus as follows:

“In an opposition proceeding, where the goods of the parties possess the same' descriptive properties, applicant’s right to registration depends upon whether his mark will conflict with one previously adoptéd and used by opposer, and in the determination of this question prior registrations by others are not to be considered.”

This doctrine we have reiterated and followed in numerous decisions. Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; California Packing’ Corporation v. Tillman & Bendel, Inc., 40 F. (2d) 108, 17 C. C. P. A. 1048; Standard Oil Co. v. Epley, 40 F.(2d) 997, 17 C. C. P. A. 1224; MacEachen v. Tar Products Corporation, 41 F.(2d) 295, 17 C. C. P. A. 1264.

We believe this rule embodies the correct principle of law to be applied relative to the right of registration, which is purely statutory.

We are not unmindful of the fact that, in proceedings in courts of equity relating to unfair competition and trade-mark infringement cases, the courts take cognizance of the situations created by numerous uses of resembling marks on similar characters of merchandise and, in adjusting the equities, give consideration to such situations. But registration is controlled solely by the statute. Section 5 of the Tradé-Mark Registration Act of February 20, 1905 (15 USCA § 85), provides that marks “ * * * which so nearly resemble a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered;”

The fact that a proposed mark may sim-' ulate many marks does not lessen its resemblance to any one of these many, and, if it be similar to another, in the sense of the law, the fact that it is also similar to several does not render it registerable. One purpose of the Trade-Mark Registration Law being to aid legitimate interstate and foreign commerce, it seems to us that, both in letter and spirit, it requires a construction which will, to the fullest extent possible, prevent confusion, not add thereto. If by inadvertence, or acting under a mistaken construction of the statute, improper registrations have heretofore been granted, such errors are not remedied by supplementing them with still another error, and a mistake of yesterday should not constitute a precedent for the law of to-day and to-morrow.

There is presented in the instant case an issue which has not heretofore been before this court in an opposition proceeding. Appellee denies the right of appellant to appear as an opposer to appellee’s registration upon the ground that appellant is not the owner of, and is not entitled to the exclusive use .of, the words “Arch Preserver,” by reason of the fact, particularly, that in appellant’s registration certificate of October 24,1916, there was a disclaimer of the words “Arch Preserver,” the language of the certificate being, “No claim being made to the words ‘Arch Preserver,’ apart from the mark shown in the drawing.”

The holding by the Examiner of Interferences upon this point was, in effect, that, inasmuch as “the notice of opposition shows that damage is predicated on the ‘nature of the mark’ * * * registration shall be refused only on the grounds specified in section 5” of the Trade-Mark Registration Act; that the only statutory ground for refusing registration, applicable under the notice, is the “confusion-in-trade” clause of said section; and that, in order to prevent the registration of “Foot Preserver” on account of “Arch Preserver,” it must appear that the latter is a mark meeting the statutory requirement of being “owned and used by another.”

He further held that, by reason of the disclaimer in appellant’s registration above referred to, it was not the owner of “Arch Preserver,” and, having no exclusive trademark, rights in the words, is not in a position in this case to claim damage.

It appears from the record that appellant, or one Chas. H. Brown, who subsequently assigned the mark to appellant, did, on March 6, 1928, cause a mark containing the words “Arch Preserver” to be registered in the Patent Office without any disclaimer of the words; this registration, apparently, being based on an application filed June 19, 1925, and referred to in the notice of opposition as application Ser. No. 216,014. The number of the registration itself is 239,510. This registration was under the Act of February 20, 1905 (15 USCA §§ 81-109).

It is the contention of appellee that appellant may not rely upon the registration last noted (No. 239,510) to establish ownership of the words “Arch Preserver,” because of its disclaimer in the original registration of October 24, 1916 (No. 113,556).

In support of this contention, appellee cites Holzapfel’s Co. v. Rahtjen’s Co., 183 U. S. 1, 12, 22 S. Ct. 6, 46 L. Ed. 49; Beckwith v. Commissioner of Patents, 252 U. S. 538, 545, 40 S. Ct. 414, 64 L. Ed. 705; L. P. Larson, Jr., Co. v. Lamont, Corliss & Co. (C. C. A.) 257 F. 270, 272; and Warner-Patterson Co. v. Malcomb, 39 F.(2d) 274, 17 C. C. P. A. 984. This contention is not. seriously contested by appellant. We think it is correct. j_

The Warner-Patterson Case, supra, was’ an interference proceeding, and we there held, following the rule stated by the Supreme Court of the United States in the Beckwith Case, supra, that an applicant having once disclaimed a part of a mark in a registration application filed by him could not thereafter set up any exclusive right to the part so disclaimed. In that case we reversed the decision of the Commissioner of Patents, and expressed our disagreement with a former decision of his, therein cited, viz. Standard Water System Co. v. Tripure Water Systems Co., 124 Ms. Dee. 42, in so far as he held that a “disclaimer may not be urged, by subsequent users of the mark disclaimed, as an estoppel.”

The Standard Water System Co. Case, as decided by the Commissioner, is cited by him, in his decision of the instant case.

Under the rule stated in the Wamer-Patterson Case, supra, it must therefore be held that appellant has not, by its 1925 registration, acquired any rights to oppose which it did not possess 'under its registration of October 24, 1916.

However, it must be borne in mind that the Wamer-Patterson Case was an interference proceeding, whereas the instant ease is one of opposition, and the law is well settled that the right to oppose a registration is not limited by the statute to one who possesses a registered mark. Section 6 of the Trade-Mark Registration Act of February 20, 1905 (15 USCA § 86), provides that:

“Any person who believes he would be damaged by the registration of a mark may oppose the same. * + * ” (Italics ours.)

In Rose Nerenstone Bookman, etc., v. Oakland Chemical Co., 40 F.(2d) 1006, 17 C. C. P. A. 1213, following California Cyanide Co. v. American Cyanamid Co., 40 F. (2d) 1013; 17 C. C. P. A. 1146, we held, as stated in the syllabus of the last-mentioned case :

“It is not necessary that one claiming the use of a mark shall have that mark registered in order to oppose registration of another mark alleged to be unregistrable under the statute.”

See, also, California Cyanide Co. v. American Cyanamid Co., 40 F.(2d) 1003, 17 C. C. P. A. 1198; and Model Brassiere Co., Inc., v. Bromley-Shepard Co., Inc., 49 F. (2d) 482, 18 C. C. P. A.-.

We therefore agree with the Commissioner that appellant in the instant case, by reason of the use shown of “Arch Preserver,” and without reference to whether “Arch Preserver” is or is not descriptive as used, has the right to oppose the registration sought, notwithstanding its disclaimer in the certificate of October 24, 1916.

The question then is whether there is such a resemblance between “Arch Preserver” and “Foot Preserver” as that confusion would likely result from their application to boots and shoes.

Í We are not in agreement with appellant’s contention that the dominant feature of the mark used by it is the disclaimed word “Preserver,” or that the mark should be construed largely by that commonly used English word. The issue must be treated by considering the words “Arch” and “Foot,” taken in connection with “Preserver.”

When applied to footwear, we cannoteseape the conviction that confusion would likely result. “Arch,” when so applied, carries with it a direct suggestion relating to a portion of the human foot. “Foot” is a term which embraces the arch. It is possible that there are terms relating to other parts of the foot which might not be confusing with “Arch,” but, if the positions of the respective parties hereto were reversed, and one were seeking to register “Arch Preserver” over the opposition of a prior user of “Foot Preserver,” we apprehend the registration would be denied upon the issue of confusion.

The evidence introduced by appellant in the effort to show actual confusion is not strongly impressive. In a proceeding in equity involving an issue of unfair competition inter partes, probably most of it, as presented, would be held inadmissible. Generally speaking, we think the usual rules relating to admissibility of evidence should be applied in these statutory proceedings. Where proofs are attempted, they should be made with regard to these rules. But a definite ruling here upon the testimony objected to, at the time of its taking, by counsel for appellee, is not necessary — indeed not proper, since there is no specific assignment of error upon that feature. • °

There is some evidence indicating actual confusion on the part of a newspaper in the preparation and issuance of advertising matter, when, intending to advertise “Foot Preserver” shoes, it caused the advertisement to be inserted for “Arch. Preserver” shoes, and then, in subsequently attempting to correct the error, made the advertisement read simply “Preserver” shoes. '

Independent of the testimony, however, we have the words themselves before us to be considered in the light of the statute and of numerous decisions of this and other courts.

The first paragraph of section 5 of the Trade-Mark Registration Act reads (15 US CA § 85) in part:

“That no mark by which the goods of the owners of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark.”

It is required, therefore, that a mark to be registerable shall have the quality o'f distinguishing the goods upon which it is applied by its owner from other goods of the same class. Obviously, “Foot Preserver,” on account of its resemblance to “Arch Preserver,” will, not serve to distinguish the goods labelled “Foot Preserver” from those labelled “Arch Preserver,” and is not, therefore, a mark, registration of which is proper undpr the statute.

We think the registration sought must be denied upon the ground of likelihood of confusion. This being our view, it is not necessary to discuss the question of deseriptiveness.

For the reasons stated, the decision of the Commissioner is reversed and the registration denied.

The costs incident to records furnished in response to preeeipe of appellee are adjudged against appellee.

Reversed.


author: HATFIELD, Associate Judge.

text:
    FIELD v. STOW.
    Patent Appeal No. 2785.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    See, also, 49 F.(2d) 840.
    Frederick H. Gibbs, of Washington, D„ C. (Donald U. Rich,.of New York City, and Jacobi & Jacobi, of Washington, D. C., of counsel), for appellant.
    Cyrus Kehr, of Washington, D. C., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and: LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an- appeal in an interference proceeding from the decision of the Board of Appeals of the United States Patent Office-affirming the decision of the Examiner of Interferences awarding priority of invention toappellee.

The count in issue was taken from appellant’s patent, No. 1,649,396, issued November-15, 1927. It reads: “In a mine oar, wheel axles, still plates having bottom flanges thereon below the wheel axles, a floor supported on said sill flanges, and axle housihgs mounted on said floor and connected to- said sills, said housings having a gradual slope on one-side thereof.”

The invention relates to improvements in-mine cars.

Counsel for appellant moved to dissolve-the interference on the ground that ap-pelleehad no right to make the claims constituting the counts in issue. The motion was denied' by the Law Examiner.

Due to the fact that the date alleged in appellant’s preliminary statement for conception of the invention -was subsequent to-the filing date of appellee, and, it having-been held by the Law Examiner that appellee could make the claim constituting the-count in issue, the Examiner of Interferences-awarded priority of invention to appellee.

\ In its decision, the Board of Appeals, among other things, said:

“It is unnecessary to describe the structure in detail. It is sufficient to state that the-question involved relates to a car floor which is supported by flanges at the lower edges of sills, the floor being below the ear axles. In Field the floor rests upon the top of the flanges and in Stow it is riveted to the bottoms of the flanges. The count reads: ‘A floor supported on said sill flanges.’ The party Meld contends that the word ‘on’ must necessarily be construed as on top of the flanges. The party Stow urges that the word ‘on’ used in this connection is synonymous with by. * * * It is unnecessary, in our opinion, to enter into a discussion of this matter generally as it is our view that there was nothing that barred the party Stow from inserting a generic claim in his application.
“* * * The only question left for our determination is the meaning of the count. There appears to be no question but that the word ‘on’ under certain conditions clearly indicates a position above something but when the word is coupled with ‘supported,’ as in this instance, it is our view that engineers and mechanics generally would not regard the use of the word as so limited. We feel confident that a statement that a floor is supported on sills would not necessarily mean that the floor is above the sills. This language, we believe, merely indicates that the floor is supported by sills rather than by something else. If this is the correct interpretation of the meaning of the word, we consider that it should be applicable to flanges carried by the sills also, and we consider that the count properly reads upon the disclosure of the party Stow.”

Counsel for appellant contends that appellee cannot make the count in issue because it is expressly limited to “a floor supported on said sill flanges,” in accordance with the disclosure in appellant’s patent, whereas, appellee discloses in his application a floor riveted to the bottom of, and supported by, but not on, the sill flanges. (Italics ours.)

Counsel for appellee, on the contrary, contends that the words “supported on” contained in the involved count are synonymous with the words “supported by”; and that, as the floor disclosed in his application is supported by, although underneath, the sill flanges, appellee has a right to make the count.

We are unable to agree with the conclusion reached by the Patent Office tribunals.

Appellant had the right to expressly limit his patent claim, as he did, to a floor supported on sill flanges.

The language “a floor supported on sill flanges,” in our opinion, means a floor in contact with the upper surfaces of the sill flanges. Had the count defined a floor supported by sill flanges, it would have been sufficiently comprehensive to cover a floor in contact with either the upper or the lower surfaces of the, flanges.

In view of the fact that appellee disclosed a floor riveted to the bottom of the flanges, his floor is supported by, but certainly not on, the flanges.

For the reason stated, we are of opinion. that appellee cannot make the claim constituting the count in issue. The decision of the Board of Appeals is therefore reversed.

Reversed.


author: PER CURIAM.

text:
    MAYFLOWER HOTEL COMPANY, a Corporation, Appellant, v. George R. ELLIS, Ernest C. Mulvey, John D. Colgan, Franklin F. Noyes, and G. Wallace Tibbetts.
    No. 5411.
    Court of Appeals of District of Columbia.
    Argued on Motion to Dismiss and Merits June 2, 1931.
    Decided June 3, 1931.
    Wm. E. Leahy, E. M. Toland, and W. J. Hughes, Jr., all of Washington, D. C., for appellant.
    M. W. Willebrandt, of Washington, D. C., for appellees.
   PER CURIAM.

On the 2d day of June, 1931, this appeal was heard by the court upon the record and the arguments of counsel.

Upon consideration whereof, the court finds and holds that the order of the lower court appointing receivers in this cause without notice to the defendants below was improvidently granted, and the said order is reversed and set aside with costs, and this cause is remanded for such further proceedings to be had upon due notice to the defendants, with opportunity for them to plead and be heard therein, as the lower court may find" proper. It is ordered nevertheless that the vouchers, account books, records, minute books, and similar books now in the hands of the receivers, the custody whereof is held subject to the orders of the lower court, shall be placed in the custody of the United States marshal for the District of Columbia, to be retained by him at such convenient place as he may select, for the period of twenty days next hereafter, with reasonable right of access by the respective parties and their agents and attorneys, and that at the end of such period they shall be returned to the parties from whom received by the receivers, unless otherwise ordered by the lower court for good cause shown.

The mandate to issue forthwith.


text:
    David BURNET, Commissioner of Internal Revenue, Petitioner, v. William J. HYNES.
    No. 8852.
    Circuit Court of Appeals, Eighth Circuit.
    March 3, 1931.
    G. A. Youngquist, Asst. Atty. Gen., and C. M. Charest, Gen. Counsel, Bureau of Internal Revenue, and S. Suydam, Sp. Atty., Bureau of Internal Revenue, both of Washington, D. C., for petitioner.
    Edward P. Smith and Prank E. Sheehan, both of Omaha, Neb., for respondent.
   PER CURIAM.

Petition to review decision of United States Board of Tax Appeals dismissed without costs to either party in this court, on motion of petitioner.


text:
    Louis CANIGLIA, Appellant, v. UNITED STATES of America.
    No. 9164.
    Circuit Court of Appeals, Eighth Circuit.
    March 11, 1931.
    William N. Jamieson, of Omaha, Neb., for appellant.
    Charles E. Sandall, U. S. Atty., of Ornadla, Neb.
   PER CURIAM.

Appeal. doeketed and dismissed without costs to either party in this court, on motion of appellee, under Rule 16.


text:
    CHRYSLER SALES CORPORATION et al., Appellants, v. DETROIT MOTOR APPLIANCE COMPANY.
    No. 9069.
    Circuit Court of Appeals, Eighth Circuit.
    Feb. 2, 1931.
    J. King Harness, of Detroit,. Mich., for appellant.
    C. B. Belknap, of Detroit, Mich., and M. M. Moore, Richard Paul, and A. C. Paul, all of Minneapolis, Minn., for appellee.
   PER CURIAM.

Appeal dismissed without costs to either party in this court, per stipulation of parties.


text:
    COLUMBIAN TITLE AND TRUST COMPANY, Trustee, v. SENECA FIRST STATE SAVINGS BANK OF SENECA, KANSAS, et al.
    No. 410.
    Circuit Court of Appeals Tenth Circuit.
    March 9, 1931.
    Wheeler, Brewster & Hunt, of Topeka, Kan., for appellant.
    R. M. Emery, Jr., of Seneca, Kan., and J. Arthur Myers, of Topeka, Kan., for appellees.
    Before LEWIS and PHILLIPS, Circuit Judges.
   PER CURIAM.

Appeal dismissed March 9,1931, per stipulation, at costs of appellant.


text:
    CONWAY BROS., Inc., Owner of THE Covered Barge VIF, Libelant-Appellee, v. THE Steamship MONTE OSSERO, Navigazione Generale Gerolimich, Claimant-Appellant, and Elevators International and Oswego & International Elevating Company, Respondent-Impleaded-Appellee. James T. O’DONNELL, Owner of THE Boat FRED JUENGER, Libelant-Appellee, v. THE Steamship MONTE OSSERO, Navigazione Generale Gerolimich, Claimant-Appellant, and Elevators International and Oswego & International Elevating Company, Respondent Impleaded Appellee.
    Nos. 349, 350.
    Circuit Court of Appeals, Second Circuit
    May 4, 1931.
    Loomis & Ruebush, of New York City (Homer L. Loomis and Philip A. Donahue, both of New York City, of counsel), for appellant.
    Maeklin, Brown, Lenahan & Speer, of New York City (Gerald J. McKeman, of New York City, of counsel), for Conway Bros., Inc.
    William F. Purdy, of New York City (John E. Purdy, of New York City, of counsel), for libelant-appellee.
    Carter &,Phillips, of New York City (Robert Phillips, of New York City, of counsel), for respondent-appellee International Elevating Co. and Elevators International and Oswego.
    Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
   PER CURIAM.

Decrees affirmed.


text:
    Noak CROOKS, Collector, etc., Appellant, v. J. R. VANSANT.
    No. 9105.
    Circuit Court of Appeals, Eighth Circuit.
    Jan. 15, 1931.
    For opinion below, see 43 F.(2d) 166.
    William L. Vandeventer, U. S. Atty., of Kansas City, Mo., for appellant.
    Albert F. Hillix, Edward L. Scheufler, and Sam B. Sebree, all of Kansas City, Mo., for appellee.
   PER CURIAM.

Appeal docketed and dismissed without costs to either party in this eourt, on motion of appellant and consent of appellee.


text:
    Harry A. CURRIE, as Owner of THE Gas Hoister ROVER, Libelant-Appellee, v. ATLANTIC LIGHTERAGE CORPORATION, Respondent-Appellee, and Erie Railroad Company, Respondent-Impleaded-Appellant.
    No. 390.
    Circuit Court of Appeals, Second Circuit.
    May 18, 1931.
    Park, Mattison & Lynch, of New York City (Anthony Y. Lynch, Jr., and John K. Hartley, both of New York City, of counsel), for respondent-impleaded-appellant.
    Single & Single, of New York City (Thomas H. Middleton, of New York City, of counsel), for respondent-appellee.
    William F. Purdy, of New York City (John E. Purdy, of New York City, of counsel), for libelant-appellee.
    Before MANTON, SWAN, and CHASE, Circuit Judges.
   PER CURIAM.

Decree affirmed.


text:
    DE FOREST, Appellant, v. VOGT, MASSOLLE AND ENGL, Appellee.
    Patent Appeal No. 2749.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    Darby & Darby, of New York City (Charles M. Thomas and Francis D. Thomas, both of Washington, D. C., and Samuel E. Darby, Jr., and Louis D. Fletcher, both of New York City, of counsel), for appellant.
    _ Kenneth S. Neal, of New York City (S. Mortimer Ward, Jr., of New York City, of counsel), for appellee.

      Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Ex-' aminer of Interferences awarding priority of invention to appellee.

The invention relates to a method of producing talking moving pictures, and is sufficiently defined in count 1, which reads:

“Count 1. The method of producing talking moving pictures on the same film which comprises photographing simultaneously upon separate films the picture and the sound, and photographing the sound record on an unexposed portion of the picture film.”

At the time of oral argument in this court, counsel for appellant stated that there were two methods of producing talking moving pictures on the same film, one of which did not comprise photographing simultane'ously the picture and the sound upon separate films; that the counts in issue were limited to a method comprising photographing simultaneously the picture and the sound upon separate films; that, as the evidence produced by appellant was not directed precisely to the method of photographing simultaneously the picture and the sound upon separate films, he could not conscientiously ask the court to consider appellant’s evidence as so limited; and that, under the circumstances, he would formally suggest that the decision of the Board of Appeals be affirmed.

Accordingly, it is unnecessary for the -court to give consideration to appellant’s assignment of error.

The decision is affirmed.

Affirmed.


text:
    ED S. VAIL BUTTERINE CO. v. Mabel G. REINECKE, Collector of Internal Revenue.
    No. 4442.
    Circuit Court of Appeals, Seventh Circuit.
    May 23, 1931.
    George N. Murdock, of Chicago, HI., for appellant.
    John Potts Barnes and George E. Q. Johnson, both of Chicago, 111., for appellee.
    Before EVANS and SPARKS, Circuit Judges, and LINDLEY, District Judge.
   PER CURIAM.

This appeal involves the constitutionality of the present oleomargarine law, being Act Aug. 2, 1886, 24 Stat. 209, as amended by Act May 9, 1902, 32 Stat. 193. The question is presented by the court’s ruling in sustaining appellee’s demurrer to appellant’s declaration. Appellant admits that to sustain its appeal it will be necessary for this court to rule contrary to the law as announced in McCray v. United States, 195 U. S. 27, 24 S. Ct. 769, 49 L. Ed. 78,1 Ann. Cas. 561. This we decline to do.

The judgment of the District Court sustaining appellee’s demurrer to appellant’s declaration is affirmed.


text:
    W. W. (Bill) FORTNER, Appellant, v. UNITED STATES of America.
    No. 9072.
    Circuit Court of Appeals, Eighth Circuit.
    March 18, 1931.
    Charles S. Harley, of Little Rock, Ark., for appellant.
    Wallace Townsend, U. S. Atty., of Little Rock, Ark.
   PER CURIAM.

Appeal dismissed without costs to either party in this court, on motion of appellee, etc.


text:
    FRANKLIN CO-OPERATIVE CREAMERY ASSOCIATION, Appellant, v. L. M. WILLCUTS, Collector, etc.
    No. 9167.
    Circuit Court of Appeals, Eighth Circuit.
    March 12, 1931.
    Robert M. Works, of Minneapolis, Minn., for appellant.

      Lewis L. Drill, U. S. Atty., of St. Paul, Minn., and Martin W. Goldsworthy, Sp. Atty., Bureau of Internal Revenue, of Washington, D. C., for appellee.
   PER CURIAM.

Record ordered filed and appeal docketed ■and dismissed without costs to either party in this court, on motion of appellee.


text:
    Theodore GESELLE v. UNITED STATES.
    No. 448.
    Circuit Court of Appeals, Tenth Circuit.
    March 19, 1931.
    Ayres, Cowan, McCorkle & Fair and Dempster 0. Potts, all of Wichita, Kan., for appellant.
    Dan B. Cowie, Asst. U. S. Atty., of Tope- ' ka, Kan., for appellee.
    Before LEWIS and McDERMOTT, Circuit Judges.
   PER CURIAM.

Appeal dismissed March 19, 1931, per stipulation, at costs of appellant.


text:
    Griffin GILDEN, Plaintiff-Appellee, v. KEANSBURG STEAMBOAT COMPANY, Defendant-Appellant.
    No. 371.
    Circuit Court of Appeals, Second Circuit.
    May 18, 1931.
    Alexander, Ash & Jones, of New York City (Lawson R. Jones, Edward Ash, and Max Taylor, all of New York City, of counsel), for appellant.
    Paul C. Matthews, of New York City (William S. Butler, of Brooklyn, N. Y., and Paul C. Matthews and Archibald P. Mc-Grath, both of New York City, of counsel), for appellee.
    _ Before MANTON, SWAN, and CHASE, Circuit Judges.
   PER CURIAM.

Judgment affirmed.


text:
    Benjamin GITLOW, as President of Revolutionary Age, an Unincorporated Corporation Consisting of Seven Persons, Complainant-Appellant, v. John J. KIELY, Postmaster of the City of New York, Defendant-Appellee.
    No. 370.
    Circuit Court of Appeals, Second Circuit.
    May 4, 1931.
    Arthur Garfield Hays, of New York City (Oscar Stabiner, of New York City, of counsel), for complainant-appellant.
    George Z. Medalie, U. S. Atty., of New York City (Samuel C. Coleman and Prank W. Pord, Asst. U. S. Attys., both of New York City, of counsel), for defendant-appellee.
    Before MANTON, L. HAND, and CHASE. Circuit Judges.
   PER CURIAM.

Orders, 44 F.(2d) 227, affirmed on the authority of Gitlow v. People of New York, 268 U. S. 652, 45 S. Ct. 625, 69 L. Ed. 1138.


text:
    Pat HARRIS v. UNITED STATES.
    No. 424.
    Circuit Court of Appeals, Tenth Circuit
    Jan. 19, 1931.
    W. P. Rampendahl, U. S. Atty., of Muskogee, Okl.
    Before COTTERAL, PHILLIPS, and McDERMOTT, Circuit Judges.
   PER CURIAM.

Appeal dismissed January 19, 1931, on motion of appellee, for failure to prosecute.


text:
    E. J. HELM v. UNITED STATES.
    No. 436.
    Circuit Court of Appeals, Tenth Circuit.
    Feb. 12, 1931.
    Roy St. Lewis, U. S. Atty., of Oklahoma City, Okl.
    Before LEWIS, PHILLIPS, and Mc-DERMOTT, Circuit Judges.
   PER CURIAM.

Appeal dismissed February 12, 1931, for failure to prosecute.


text:
    Frank HITCHCOCK, Appellant, v. COMMISSIONER OF INTERNAL REVENUE, Appellee.
    No. 5550.
    Circuit Court of Appeals, Sixth Circuit.
    June 9, 1931.
    For former opinion, see 44 F.(2d) 756.
    John W. Ford, of Youngstown, Ohio (Kennedy, Manchester, Ford, Bennett & Powers, of Youngstown, Ohio, on the brief), for petitioner.
    John Y. Groner, of Washington, D. C. (G. A. Youngquist, Asst. Atty. Gen., and J. Louis Monarch, C. M. Charest, and Allin H. Pierce, all of Washington, D. C., on the brief), for respondent.
    Before MOORMAN, HICKS, and HICKENLOOPER, Circuit Judges.
   PER CURIAM.

The petition for rehearing in this ease is granted, and the order of the Board of Tax Appeals reversed, upon authority of the decision of the Supreme Court in Burnet v. Logan, 51 S. Ct. 550, 75 L. Ed.-, decided May 18, 1931.


text:
    Joe HOCHDERFER v. UNITED STATES.
    No. 449.
    Circuit Court of Appeals, Tenth Circuit.
    March 19, 1931.
    Ayres, Cowan, McCorkle & Fair, and Clement F. Clark, all of Wichita, Kan., for appellant'.
    Dan B. Cowie, Asst. U. S. Atty., of Topeka, Kan.
    Before LEWIS and McDERMOTT, Circuit Judges.
   PER CURIAM.

Appeal dismissed March 19, 1931, per stipulation, at costs of appellant.


text:
    JAMES TREGARTHEN & SONS CO., Libelant-Appellee, v. Coal Hoister GOLD DIGGER, Her Tackle, Apparel, etc. Charles E. Forsythe and James A. Forsythe, Copartners, Doing Business as Forsythe Brothers, Claimants-Appellant.
    No. 359.
    Circuit Court of Appeals, Second Circuit.
    May 18, 1931.
    George W. Tucker, of New York City (Chauncey E. Treadwell, of New York City, of counsel), for claimants.
    Alexander, Ash & Jones, of New York City (Edward Ash and Lawson R. Jones, both of New York City, of counsel), for appellee.
    Before MANTON, SWAN, and CHASE, Circuit Judges.
   PER CURIAM.

Decree [44 F. (2d) 660] affirmed.


text:
    JAMES McWILLIAMS BLUE LINE, Inc., Appellant, v. THE Steam Tug N. Y. C. NO. 15, The New York Central Railroad Company, Appellee.
    No. 342.
    Circuit Court of Appeals, Second Circuit.
    May 4, 1931.
    Leo J. Curren, of New York City, for appellant.

      Bigham, Englar, Jones & Houston, of New York City (C. W. Hagen, of New York City, of counsel), for appellee.
    Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
   PER CURIAM.

Decree affirmed.


text:
    J. B. BLADES LUMBER COMPANY, Libelant-Appellee, v. THE Steamship EASTERN GLEN, Her Engines, etc., American South African Line, Inc., Claimant-Appellant. THE Steam Tug T. J. HOOPER, Her Engines, etc., Eastern Transportation Company, Claimant-Appellee, THE Barge NORTHERN NO. 16, Her Tackle, etc., Robert B. Wathem, Claimant-Appellee. Robert B. WATHEM, Libelant-Appellee, v. THE Steamship EASTERN GLEN, Her Engines, etc., American South African Line, Inc., Claimant-Appellant, The Steam Tug T. J. Hooper, Her Engines, etc., Eastern Transportation Company, Claimant-Appellee.
    Nos. 365, 366.
    Circuit Court of Appeals, Second Circuit.
    May 4, 1931.
    Barry, Wainwright, Thacher & Symmers, of New York City, for the steamship Eastern Glen.
    Foley & Martin, of New York City, for the tug T. J. Hooper.
    Bigham, Englar, Jones & Houston, of New York City (Charles W. Hagen, of New York City, of counsel), for Robert S. Wathem.
    Single & Single, of New York City (Thomas H. Middleton, of New York City, of counsel), for J. B. Blades Lumber Co.
    Before MANTON, ' L. HAND, and CHASE, Circuit Judges.
   PER CURIAM.

Decree affirmed.


text:
    ESTATE of Robert JILL and Another, Petitioners, v. COMMISSIONER OF INTERNAL REVENUE, Respondent.
    No. 424.
    Circuit Court of Appeals, Second Circuit.
    May 21, 1931.
    Wingate & Cullen, of New York City (Frank S. Easby-Smith, of Washington, D. C., and Cyrus S. Jullien, of Brooklyn, N. Y., of counsel), for petitioner.
    G. A. Youngquist, Atty. Gen., and Sewall Key and John H. McEvers, Sp. Assts. to Atty. Gen., for respondent.
    Before, L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
   PER CURIAM.

Order affirmed in open court.


text:
    George JOHNSON, Appellant, v. UNITED STATES of America.
    No. 9132.
    Circuit Court of Appeals, Eighth Circuit.
    Feb. 17, 1931.
    E. D. O’Sullivan and C. J. Southard, both of Omaha, Neb., for appellant.
    Charles E. Sandall, U. S. Atty., and Ed-son Smith, Asst. U. S. Atty., both of Omaha, Neb.
   PER CURIAM.

Appeal docketed and dismissed without costs to either party in this court, on motion of appellee under Rule 16.


text:
    J. W. JENKINS SONS’ MUSIC COMPANY v. Nona MATHEW.
    No. 396.
    Circuit Court of Appeals, Tenth Circuit.
    Jan. 13, 1931.
    Vermilion, Evans, Carey & Lilleston, of Wichita, Kan., for appellant.
    Payne H. Ratner, of Parsons, Kan., Harold Medill, of Independence, Kan., and A. M. Etchen, of Kansas City, Kan., for appellee.
    Before LEWIS and MeDERMOTT, Circuit Judges, and KENNEDY, District Judge.
   PER CURIAM.

Appeal dismissed January 13, 1931, per stipulation, at costs of appellant.


text:
    George KUBIK, Appellant, v. UNITED STATES of America.
    No. 9133.
    Circuit Court of Appeals, Eighth Circuit

      Feb. 17, 1931.
    E. D. O’Sullivan and C. J. Southard, both of Omaha, Neb., for appellant.
    Charles E. Sandall, U. S. Atty., and Ed-son Smith, Asst. U. S. Atty., both of Omaha, Neb.
   PER CURIAM.

Appeal docketed and dismissed without costs to either party in this court, on motion of appellee under Rule 16.


text:
    LANE CONSTRUCTION CORPORATION, Petitioner, v. COMMISSIONER OF INTERNAL REVENUE, Respondent.
    No. 43.
    Circuit Court of Appeals, Second Circuit.
    May 18, 1931.
    Boardman & Grout, of Bridgeport, Conn., for petitioner.
    G. A. Youngquist, Asst. Atty. Gen., and Sewall Key and A. H. Conner, Sp. Assts. to Atty. Gen. (C. M. Charest, Gen. Counsel,. Bureau of Internal Revenue, and De Witt M. Evans, Sp. Atty., Bureau of Internal' Revenue, both of Washington, D. C., of counsel) , for respondent.
    Before MANTON, SWAN, and CHASE, Circuit Judges.
   PER CURIAM.

Decision affirmed.


text:
    Rose LEVITON, Administratrix, etc., Appellant, v. C. W. PUGSLEY.
    No. 9110.
    Circuit Court of Appeals, Eighth Circuit.
    Jan. 23, 1931.
    L. B. Schwartz and S. P. Halpem, both of Minneapolis, Minn., for appellant.
    Charles S. Kidder, William H. Freeman,. Charles N. Orr, and Herman F. Stark, all of St. Paul, Minn., for appellee.
   PER CURIAM.

Appeal docketed and dismissed at costs of appellant, on motion of appellee under-Rule 16.


text:
    MADDEN BROTHERS, Incorporated, Appellant, v. RAILROAD AND WAREHOUSE COMMISSION of the State of Minnesota et al.
    No. 9037.
    Circuit Court of Appeals, Eighth Circuit
    March 31, 1931.
    For opinion below, see 43 F.(2d) 236.
    H. A. Dancer, of Duluth, Minn., and Donald 0. Wright and A. W. Bowen, both of Minneapolis, Minn., for appellant.
    Henry N. Benson, Charles E. Phillips,, and John F. Bonner, all of St. Paul, Minn.,, for appellees.
   PER CURIAM.

Appeal dismissed without prejudice and without taxation of costs in favor of either-party in this court, per stipulation.


text:
    MAGNOLIA PETROLEUM COMPANY v. Fred E. SUITS et al.
    No. 338.
    Circuit Court of Appeals, Tenth Circuit
    Jan. 19, 1931.
    See, also (D. C.) 31 F.(2d) 205; (C. C. A.) 40 F.(2d) 161; (C. C. A.) 43 F.(2d) 280.
    B. B. Blakeney, of Oklahoma City, Okl., for appellant.
    Suits & Disney, Allen & Jarman, and Everest, Dudley & Brewer, all of Oklahoma City, Okl., and Wilbur J. Holleman, of Tulsa, Okl., for. appellees.
    Before COTTERAL, PHILLIPS, and McDERMOTT, Circuit Judges.
   PER CURIAM.

Appeal dismissed January 19, 1931, per stipulation, at costs of appellant.


text:
    MALJAMAR OIL and GAS CORPORATION v. Tom SMITH.
    No. 330.
    Circuit Court of Appeals, Tenth Circuit.
    March 9, 1931.
    J. D. Atwood, of Roswell, N. M., for appellant.
    Caswell S. Neal,"of Carlsbad, N. M., for appellee.
    Before LEWIS and PHILLIPS, Circuit Judges.
   PER CURIAM.

Appeal dismissed March 9,1931, per stipulation, at costs of appellant.