text:
    In re DOHERTY.
    Patent Appeal No. 2694.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Edmund G. Borden, of New York City (K. I. White, of New York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the examiner, rejecting all of the claims of appellant’s application. Appellant has taken this appeal from the rejection of four claims, numbered 3, 7, 11, and 13. Claims 3 and 11 are illustrative of the claims in issue and read as follows:

“3. A method of developing an oil field as a unit comprising determining the location boundary of an underground oil body, maintaining the oil in its original position in the oil sand by holding a body of gas above the oil body under sufficient pressure to prevent oil from passing up into unwetted sand, extending oil wells into the oil body and forcing oil from that body out through the wells by. raising the level' of a body of water below the oil body and maintaining sufficient back pressure on the oil flowing through the wells to hold the oil body under substantially its natural pressure.”
“11. A method of developing new oil fields comprising determining the location boundary of an underground oil body, maintaining a body of gas above and in contact with the oil body under sufficient pressure to prevent oil from passing up into unwetted sand, extending oil wells into the oil body, and forcing oil from the oil body out through the wells by raising the level of a body of water below and in contact with the oil body.”

The references are:

Squires, 1,238,355, August 28, 1917.

Bacon et al., The American Petroleum Industry, McGraw Hill Company, New York, 1916. Article: More Efficient Extraction; pages 428 and 429.

The claimed invention is described by the examiner in his decision as follows:

“The invention relates to a process of development and exploitation of oil fields. In many fields the gas is entrapped above the oil at an upper part of a domé, spell dome at the upper part thereof being filled with very porous sand and gas, free of oil, constituting the region of the “unwetted sand” of this application. If a well is drilled in the region of the gas entrapped, the gas rushes out to the surface without performing the useful function of propelling the oil, dissolving therein and thereby lowering the specific gravity of the oil, as also forming bubbles in the body of oil in the process of commingling therewith and thereby assisting the further elevation of the oil to the surface in a manner well understood in the art. If an oil well should be drilled in the region of the oil; the gas pressure will be instrumental in elevating the oil through the well until the level of the oil will become sufficiently low and an open passage from the region of the gas to the mouth of the oil well will be formed, and the rest of the gas in the dome will rush out from the oil well without performing any useful function. The object of this invention is to remedy the phenomenon described above and it proposes to drill 3 wells or 3 series of wells. One .well, or a series of wells, will be located in the region of the gas at the apex of the dome and are designated with the reference character 10 on figures 2 and 3 showing different formations of the oil bearing sands; the second well, or series of wells will be located without the region of the gas and within the region of the oil and are designated on these views with the reference character 12; the 3d well, or a series of wells, will be drilled without the region of the oil and these last wells will be extended into the formation so as to reach the region below the oil and these wells are designated with the reference character 14. Water is introduced into the wells 14, oil under control is removed from the wells 12 and the wells 10 are utilized for introducing artificial gas pressure should the natural pressure in the dome become too low.
“The rate of removing the oil from the wells 12 and that of introducing water into the wells 14 is such that the oil in the'oil region remains above the level of the lower termination of the wells 12, the water introduced elevating the oil so as to keep the level of the oil above these lower terminations of the wells 12 so that the pressure existing in the region of the dome, or introduced therein, shall be operative in elevating the oil through wells 12 and thereby only the gas dissolved and commingled with the oil will find its way out of the wells 12 and on its way out will perform the useful function of elevating the oil to the surface, the free gas in the dome being sealed off by the oil which is kept at a sealing level by the water being introduced through the wells 14.”

Appellant in his brief concedes that the above quotation correctly describes the invention claimed, except that it fails to point out that his process contemplates displacing oil from the field by water while holding the upper level of the oil body substantially stationary so that oil will not enter the unwetted gas sand overlying the oil and be lost by absorption in and adsorption with the dry gas sand. We agree with appellant’s counsel that said feature is disclosed by appellant’s specification.

The Board of Appeals and the examiner concurred in their finding of the unpatentability of the claims in issue, and the rule applies that such finding will not be reversed by us unless shown to be manifestly wrong. Pengilly v. Copeland, 40 F.(2d) 995, 17 C. C. P. A. 1143.

The Board of Appeals in its decision said:

“It is of course a matter of common knowledge that preliminary surveys are very frequently made, notwithstanding the statements of counsel to the contrary, to determine the extent of an oil field or an oil body. It is also but the usual practice to sink as many wells as are deemed necessary and, as described in the publication cited, ‘it is advisable to equip all drilling holes where high pressure is expected with control easing heads.’ This is done to take care of the excessive gas pressure which may be found, and frequently is found, above the surface of the oil body. As the oil is forced to the surface by the gas pressure, in wells of this type, the lowering of the oil body and the escape of the gases result in gradual lowering of the pressure of the gas until it is insufficient to force the oil to the surface. Under these conditions, pumping is frequently resorted to, or, as seems to us obvious enough, the pressure of the gas above the oil body is restored. The publication makes it clear that this step of keeping the pressure of the gas above the oil body level constant by introducing compressed air is old since this method is referred to in the following terms:
“ ‘In Smith and Dunn’s method, the pressure gradient is further sustained by a like device of introducing compressed air into some abandoned wells.’
“It is apparent, in consequence, that applicant’s method, if it contains any novel step, must include something more than pumping compressed air above the level of the oil body, since in our opinion this step was not only an obvious one but is clearly shown by the above quotation to have been previously practiced. This publication further does state that where the production from the wells has reached an unprofitable point ‘water should be turned down the well situated at the lowest point of the sand. It can be obtained either from one of the shallow sands or else introduced from the surface.’ Since water possesses a relatively higher specific gravity it would, as is well understood by those skilled in this art, float the oil above it and raise the surface of the oil. It would seem there is here disclosed the broad conception of introducing compressed air above tbe oil body and water beneath it. If the pressure of water and air were sufficient the oil would be forced out of tbe well and it seems to us tbis is what the publication teaches.”

The board then proceeds to discuss the Squires reference and finds that the only essential difference in the process disclosed by it and that disclosed by appellant is that the Squires process was for recovering oil from depleted underground oil bodies, while appellant’s process is to be applied to new oil fields.

With respect to this distinction the board said:

“We see no merit in applying this old method to new oil fields, either in their entirety or to parts of them, over applying it to partly depleted oil wells. Its application is only of advantage in any event where tbe natural pressure of the gas is insufficient and this may be a condition existing in a new oil well or one which has become partly depleted. We think Squires teaches that the pressure of the water would be continued to keep the level of the oil body, if deemed desirable as is explained by the patentee, high enough to engage the lower end of the oil vent or venting 'well, and, in consequence, are not impressed by the statement of the applicant that Squires keeps ‘the top level of the oil body always below the bottom or inlet of the venting wells.’ The specification of the patent specifically negatives the contention of the applicant. The gas pressure and water pressure, when the oil is made to engage the lower end of the well vent as Squires explains, would operate to squeeze the oil body, as in applicant’s arrangement, and force it out of the venting well.
“We-regard all the claims as defining nothing patentable over the prior art of record. Whether the water is inserted at one place or another, or from one source or another, or whether a large area of an oil body is treated all at once or only a small portion is so treated is in our judgment merely a matter of experience or preference and involves nothing unobvious and inventive.”

The principal contention, of appellant is that the process of appellant and that of Squires are based upon entirely different principles; that appellant’s process involves the squeezing of the oil from gas or other pressure from above and water pressure from below, forcing the oil out from the wells by reason of this squeezing process, at the same time maintaining the body of oil at a substantially constant level until it has been practically exhausted; that the Squires method does not contemplate any squeezing process at all, but provides for the sending of a current of air flowing in a free course above the oil body, and out through the venting wells carrying with it particles of oil and gas; and, further, that whereas appellant prevents the oil from rising into the unwetted sand, Squires introduces water for the specific purpose of raising the body into the more open sand through which the air stream passes in. order to effect removal of the oil and gas by entrainment in the air stream.

Upon the point of whether Squires discloses a squeezing process applied to the oil body as does appellant, the board calls attention to the following statement found in the Squires specification:

“As described thus far, it is evident that the flotation method is effective no matter what the character of the streak may be. Its most effective application, however, will probably be in those sands where the roof e is of irregular formation so that the oil f is raised to a point where it actually engages the lowermost sections, as e1, e2, and air pockets are formed. These air pockets will increase the effectiveness of the air pressures since seals will be formed wherever the roof dips into the oil.”

The. board then states:

“As we view the disclosure of the patent it is deemed fully disclosed that the water introduced under pressure may raise the oil to the level where the latter engages the lower ends of the oil vents and that when this is done the method set forth in the appealed claims is fully carried out and the oil is caught between the pressure of the gas above it and the water below it and forced into the oil vent without the escape through such vent of the gas, the oil being, as stated by the patentee, ‘pushed along by the air to the venting well.’ ”

It seems to us that the contention of appellant is well founded in this respect, and that Squires’ method does not involve a squeezing process at all. The statement in the Squires specification, upon which the Patent Office tribunals rely, that the most effective application of his method will be where the roof of the oil sands engages the top of the body of oil, forming air pockets which will increase the effectiveness of the air pressures, since seals will be formed wherever the roof dips into the oil, does not, as we view it, result in a squeezing of the oil as occurs by appellant’s method. We think that Squires contemplated a stream of air flowing upon the surface of the oil, except where these air pockets were formed, and at these points the air will force the surface of the oil, where it comes in contact with the roof of the oil sands, to be blown in the direction of the oil wells, and after such point of contact is passed the air will again flow along the surface of the oil body, carrying with it gas and particles of oil.

Therefore, while the Squires process may be regarded as prior art for the introduction of air or gas to the top of the oil body, and of water below it, it does not convey the idea that the bottom of the oil wells should be below the surface of the oil, preventing the ingress of air or gas thereto apart from the body of the oil, so as to create the squeezing process of forcing the oil through the oil well, which is an essential part of appellant’s method.

With regard to the reference “Bacon et a!., The American Petroleum Industry,” we find two statements therein material to the question before us. The first reads as follows:

“It is desirable to tube a flowing well early with the perforations set low in the sand, for this does not seriously reduce the production, and it has the merit of keeping the pressure of the gas in the upper part of the sand in place, where it is valuable for its power of ■expulsion. But there is a small hole in the working barrel at the top of the sand to keep the top of the oil high and so not expose the sand face as long as the pressure is such that the oil is forced into the hole up to a point far above the top of the sand.”

It will be observed that there is here pointed out the desirability of keeping the pressure in the upper part of the sand in place, where it is valuable for its power of propulsion. It is also stated that “In Smith and Dunn’s method, the pressure gradient is further sustained by a like device of introducing compressed air into some abandoned wells.” It is clear that so long as the pressure is sustained, either by the gas originally above the oil body, or by air and gas introduced above it, the oil would be prevented from passing into unwetted sand, which is an element of all of the claims, either by direet statement or by implication.

The other material statement in said reference publication is as follows:

“When production has reached an unprofitable point, the well should not be abandoned, but held in reserve until the whole pool can be brought under the management of one great company or of several eo-operating companies. ■ Only by concerted action can the next effort by the water-flush method be used to extract the remaining oil. Water should be turned down the well situated at the lowest point of the sand. It can be obtained either from one of the shallow sands or else introduced from the surface. This should be run in fast enough to keep the hole filled up to the source of the water, in order to have a good head and correspondingly rapid penetration. Then an adjacent well should be given test pumpings, if not regularly pumped, until.the on-flow of this water increases its oil output of the second well. After a period of much improved oil production, it will 'yield more and 'more water in ever-increasing proportions. Then when the amount of oil is no longer in paying quantities, this well in turn, where feasible, should serve as a point of entrance for water. In this way, the oil is gradually flushed up to the pool to the highest wells. When only these highest are producing, discontinue introducing water at the lowest wells, so as to prevent the oil being washed by the water up to the dip past these wells.” (Italics ours.)

The above, we think, clearly discloses the principle involved in appellant’s method of introducing water below the body of the oil, and maintaining a pressure of a greater or less degree below the body of oil. Appellant, however, insists that the method thus disclosed is applied only to depleted wells; that no one before had ever thought of drilling wells for the sole purpose of introducing water below the body of oil before the natural pressure of the gas above the body of oil had been reduced or exhausted.

The Board of Appeals and the examiner have held that there is no invention in applying the methods disclosed by Squires and by the reference publication to new oil fields, either in their entirety or in part, over applying them to depleted wells. Upon such finding, the rule hereinbefore referred to, that we will not reverse such tribunals unless manifestly wrong, is applicable. We cannot say that such decision is manifestly wrong, but nevertheless, in order tó affirm the decision of the board, we must find that all of the elements found in appellant’s claims are found in the prior art, although applied to depleted oil wells in such prior art. We then come to a consideration of the elements of the claims in issue.

We think all of the elements of claims 11 and 13 are found in the prior art, and the decisión of the Board of Appeals that they should be rejected should be affirmed.

Claims 3 and 7, however, contain elements not found in the prior art, and in combination with the other elements in the respective claims, in our opinion, define invention. In claim 3 this element is expressed in the phrase “maintaining the oil in its original position” by the means therein stated, and by the phrase “maintaining sufficient back pressure on the oil flowing through the wells to hold the oil body under substantially its natural pressure.” In claim 7 the same element is expressed. A method is described by which the surface of the oil body is held in substantially its original level.

In other words, in claims 3 and 7, appellant has disclosed a method by which the level of the oil body remains constant, through securing such a ratio between the pressure of the water below and the gas or air pressure above the oil body as to secure practically the same rate of flow of oil from the wells until the oil body is practically exhausted. We cannot find that this particular element has been shown or suggested in the'prior art, and this element, combined with the other steps set out in the claims, in our opinion, constitutes invention. Claims 3 and 7 should be allowed.

The decision of the Board of Appeals is affirmed as to claims 11 and 13, and reversed as to claims 3 and 7.

Modified.


source: Caselaw Access Project

author: GARRETT, Associate Judge.

license: Public Domain

text:
    In re KOBSEFF.
    Patent Appeal No. 2724.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    Martin T. Fisher, of Washington, D. C. (George F. Scull and Daniel L. Morris, both of New York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

Appellant seeks patent upon alleged new and useful improvements in a process for preventing incrustation in steam boilers.

All of the claims, 10 to 18, inclusive, were rejected by an Examiner of the United States Patent Office, and his decision was affirmed by the Board of Appeals. From the latter decision appeal was taken to this court:

Claims 10 and 16 are typical:

“10. The method of producing an anti-incrustation substance for steam boilers, which includes treating vegetable seeds containing mucilaginous constituents and oil with wet steam under superatmospheric pressure and out of contact with air, to form a mucilaginous emulsion substantially free from oil.”
“16. The method of producing an anti-incrustation substance for steam boilers, which includes adding soda to vegetable seeds containing mucilaginous constituents, the soda being approximately one per cent, of the weight of-the seeds, and treating the mixture with wet steam under superatmospherie pressure and out of contact with air, to form a mucilaginous emulsion substantially free from oil.”

The references are: Brun, French, 369,-904, November 29, 1906; Brun, British, 20,-245, of 1909; Lowther, British, 21,075, of 1900.

In the decisions of the Examiner and of the Board of Appeals reference was also made to a British patent to Dine et al. It is insisted by appellant that this is not a proper reference because dated July 3, 1922. This was subsequent to appellant’s original filing date of October 17, 1921, and the insistence is that “a foreign patent becomes a reference only when it is issued or is open to the public as a publication.” Dine is not cited by the solicitor in his brief or oral argument. Under the view we take of the ease it is unnecessary to determine whether Dine was properly referred to by the tribunals of the Patent Office.

While all of appellant’s claims are process claims, he discloses drawings of an apparatus in which the method is carried out. It is appellant’s plan to treat vegetable seeds, such as flaxseed, hemp seed, etc., so as to form a mucilaginous emulsion, substantially free from oil, which emulsion when applied to inner boiler surfaces will prevent incrustation thereon, or will remove such incrustation when formed.

The method is conceded to be novel and useful, and to have had widespread commercial success, but the tribunals of the Patent Office held there was no invention involved, in view of the state of the prior art, it being also held that the claims in their final form included new matter — that is, matter not disclosed or claimed in the original application.

The drawings of the apparatus disclose a device consisting of a cylindrical vessel having a cover and a perforated inner cylinder in which latter the seeds -are placed, together with small quantities of soda and starch. Below the outer or condensing vessel is a boiler connected with said vessel by two pipes, one a steam pipe extending upward from the boiler at the side of and entering into the top of the vessel, and the other a pipe extending downward from the bottom of the vessel into the boiler. Each of the pipes is equipped with a valve to be operated by hand. There is also a pipe or tube running through the inner cylinder whose purpose, in part, is to cause a suction of steam from the valve in the steam pipe and promote circulation of the steam through the seeds in the perforated inner cylinder.

In operation, according to the specifications, the inner cylinder is first filled with the required quantities of seed, soda, and starch, the pipe valves being closed. The valve in the pipe leading from the bottom of the vessel to the boiler water is then opened to its fullest extent for about five minutes and hot water rises from the boiler into the seed-containing, inner cylinder whereby the seed are soaked. Then the valve in the steam pipe is opened and steam from the boiler fills the condensing vessel or outer cylinder. This condensing cylinder is equipped with fins whose radiating capacity causes a certain condensation of the steam. This condensed steam passes into the seed-containing cylinder, through the perforations, and contacts with the soaked vegetable seed, taking up the mucilaginous substance and producing the emulsion, which emulsion passes down into the boiler through means provided therefor and saturates the boiler water. The specification says that “the emulsion mixed with the boiler water envelopes the nascent saline deposits resulting from the evaporation of the boiler water and sinks with these deposits to the bottom of the boiler, whence it is an easy matter to remove them in any suitable known manner.”

It is not recited in the specification, but it is argued by appellant that, according to natural laws, when the valve in the steam pipe is opened, the pressure at the top and bottom of the condensing vessel is equalized, and that the hot water admitted for soaking the seed for the 5-minute period (if this soaking step be used at all) flows back into the boiler, and the soaked seed are thus left to be acted upon solely by the wet steam.

The applicant states in argument that the soaking process does not have to be used; that the seeds may be left in their dry state in the cylinder, and the wet steam applied to them in this state with the same result produced. It is further said that the production of the emulsion may require as much as 24 hours. The claims as they now read do not embrace the step of soaking by the admission of the hot water from the boiler, but are limited to treating by wet steam under superatmospherie pressure and out of contact with the air.

A reading of that part of the specification which describes the operation, however, does show that the valve in the hot water pipe is opened and remains open for about five minutes before the steam pipe valve is opened. As of course, when the former valve is opened, it is done to admit the hot water, and the specifications recite no process which does not include the opening of the hot watter valve.

The record does not contain the original claims made in the application filed October 17, 1921. It does disclose that on November 2, 1927, apparently after there had been some adverse action by the Patent Office, appellant moved to cancel all claims and add those now before us.

This was followed on May 3, 1928, by the Examiner’s rejection, and he said in his decision : “The matter in these claims relative to a treatment of the seeds with “wet steam” is clearly new matter not warranted by the original disclosure. Refer to page 5, lines 11 to 16 of the original specification, and the claims appended thereto, which discloses and claims a treatment with “condensed steam” (water) condensed by action of the fins on cylinder 1.”

Since one of the issues of this case is that the amended claims contain new matter, that is, matter not disclosed in the original application, it might have been helpful to the court, in construing the original specification, had the original claims been included in the record.

It may be here said that the Examiner seems to have held that-by omitting soda from all the claims, except No. Í6, appellant introduced new matter. The board did not pass upon this specifically, but the solicitor for the Patent Office concedes, in oral argument, that this omission does not constitute new matter, and that the claims are not vitiated-by it. Since this is not a matter of importance here, we deem it unnecessary further to discuss it.

The serious question relative to new matter grows, not out of the omission of the soda element, but in inserting into the new claims the element of “wet” steam.

The specification does not refer to “wet” steam, but to “condensed” steam.

In the arts in which steam,is used,- we understand different kinds of steam are well recognized and have well-understood meanings and uses, such as “Pure steam,” “Dry steam,” “High-pressure steam,” “Superheated steam,” etc.

In Knight’s American Mechanical Dictionary “Wet steam” is defined as steam “in which portions of water have passed off with the vapor, and are held in mechanical suspension.”

We have found no mechanical definition of the phrase “condensed steam,” but the definition given by Punk & Wagnalls New Standard Dictionary of “condense,” as á verb, is: “To change from the gaseous or vaporous to the solid or liquid state, as by cooling or compression.”

While it might be difficult to draw a line of demarcation so as arbitrarily to determine when wet steam, by reason of saturation with water, ceases to be wet steam and becomes something else, there is evidently a clear and well-understood distinction between wet steam and condensed steam, of which notice must be taken in patent proceedings such as the ease at bar.

In the description of the operation or process of appellant given by his learned counsel, arguing in the light of natural laws, a very plausible contention is maintained to the effeet that this method must be by means of wet steam, but the court is compelled to measure the issue, not by the argument, but by the claims themselves, and determine whether the specification supports them, or discloses matter upon which they may be based.

Because of the evident success and value of appellant’s contribution to the art, it is with some reluctance that we feel compelled to hold that the disclosures of the specification referring only to condensed steam, which is water, do not support claims for the wet steam process, and that, when “wet steam” was inserted, it brought new matter into the application, as held by the tribunals of the Patent Office.

Whether, if the disclosure of the specification did form a legal basis for the claims, they are anticipated by the prior art, need not be here considered.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: GRAHAM, Presiding Judge.

text:
    In re RUNDELL.
    Patent Appeal No. 2710.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    Sydney I. Prescott, of New York City (George S. Hastings, of New York City, of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, .GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

Appellant has invented an improvement in bunch concentrators used in the manufacture of cigars. In connection with his application he filed IT claims, the first 14 of whieh were allowed by the examiner. Claims 15,16, and 17 were rejected by the examiner, whieh decision was affirmed by the Board of Appeals of the United States Patent Office. These three claims are as follows:

“15. The combination with intermittently rotating cigar bunch concentrating means and automatic operating means therefor, of means for loading bunches into said concentrating means comprising a bunch carrier and an ejector therefor and means for moving both to and from loading position.
“16. The combination with intermittently rotating’ cigar bunch concentrating means and automatic operating means therefor, of means for loading bunches into said concentrating means comprising a yielding bunch carrier and an unyielding ejector therefor and means for moving both to and from loading position.
“17. The combination with intermittently rotating cigar bunch concentrating means and automatic operating means therefor, of means for loading bunches into said concentrating means comprising a bunch carrier and an ejector therefor and a gearing actuated mechanism for swinging both to and from loading position.”

The references relied on for rejection are Huttger, 1,263,673, April 23, 1918, and Elges, 375,616, December 27, 1887.

Appellant’s device is a complicated piece of automatic machinery. No beneficial result would follow a description of it in detail. It is sufficient for the purposes of this ease to state that it consists of a revolving turret containing female molds for receiving bunches of tobacco and whieh turret is rotated intermittently. The female portions of the molds in the turret are loaded by means of an arm which automatically places the bunches of tobacco in said molds as the respective molds come to the top of the mechanism. Another arm on the other side of the machine inserts a male portion of the mold after the bunch has been inserted, and the turret then revolves, bringing another female mold into position. The male portion of this mold is then removed by the arm provided for this purpose, the concentrated bunch in said mold is ejected, and it is, in turn, loaded, by the means aforesaid, with another bunch.

The arm which loads these molds is so arranged that the end portion thereof, which clasps the loading bunches, is yieldable when pressure is exerted thereon; this character of yieldability being furnished by a spring.

The reference Elges shows a revolving turret in a hand operated concentrator, with female molds and removable male molds.

The reference Huttger shows a cigar bunching and forming machine with a series of molds in an element with a plane surface. A transferring element is provided, whieh receives bunches of tobacco for concentration between a pair of yieldable jaws, provided for that purpose. By proper mechanism this transferring element, after receiving such bunch, swings into a horizontal position and the bunch of tobacco is pressed into the mold by means of an ejector, which is caused to be thrust forward between the said yield-able jaws to such a degree as to press the bunch of tobacco in place in its mold. This being done, the transferring element returns to its original position for another bunch and thereafter the process is repeated.

We are of opinion that the Board of Appeals committed no error in holding claims 15, 16, and 17 to be properly rejected on these' references. It will be observed the claims in question are very broad, and are not limited to the exact mechanism shown by the applicant, and whieh were fully covered by his allowed claims. As the board states, it must be evident that the device shown by Huttger must operate intermittently. Whether the molds are arranged in a plane surface or in a rotating turret can hardly be inventive in view of the disclosures in the references. The means for loading bunches into the concentrator means, comprising a bunch carrier and an ejector, is shown by Huttger.

Appellant argues that his rejected claims rest upon an automatic mechanism. The mere statement that a device is to be operated automatically instead of by hand, without a claim specifying any particular automatic mechanism, is not the statement of an invention. Marchand v. Emken, 132 U. S. 195,10 S. Ct. 65, 33 L. Ed. 332; In re Gill, 36 F.(2d) 128, 17 C. C. P. A. 700.

One other element is suggested by the Board of Appeals, namely, the “yielding bunch carrier,” in rejected claim 16. It would appear to be obvious to anyone who was constructing a mechanical device of this kind, if it was feared that injury would result from the contact of a moving arm with another surface, by means of which arm a certain function was to be performed, that-this danger might be avoided by the interposition of a spring or other yieldable means. We assume the appellant does not rely particularly upon this feature, as it was not referred to in his oral argument, or in his brief filed herein.

Much of the argument made here is directed to the various elements of appellant’s automatic mechanism. It is sufficient to say that, however inventive these elements may be, they' are not mentioned in the rejected claims, and hence can have no effect upon our conclusion thereon.

The decision of the Board of Appeals is affirmed. ’ /

Affirmed.


text:
    MOORE v. GREENE.
    Patent Appeal No. 2721.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    LENROOT, Associate Judge, dissenting in part.
    William L. Symons, of Washington, D. C., for appellant.
    Pennie, Davis, Marvin & Edmonds, of New York City (Merton W. Sage, of New York City, and Clarence M. Fisher, of Washington, D. C., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

This is an interference proceeding relating to four counts, Nos.' 1 and 4 being mechanical, and Nos. 8 and 9 being for the method.' We here quote Nos. 1 and 4:

“1. A polyphase are electric furnace comprising a plurality of arcing electrodes, and means for unbalancing the current or voltage of one or more of the polyphase arcs.”
“4. A polyphase' electric furnace, comprising a plurality of arcing electrodes, a polyphase circuit connected with said electrodes, and means for unbalancing the voltage supplied to one of said electrodes.”

The history of the case to date is as follows:

On January 3, 1913, appellee filed an application for a patent (serial No. 740,034) for improvements in electrical induction furnaces. There was a renewal application on December 19,1917 (serial No. 207,966), and patent was issued thereon August 16, 1927, being No. 1,639,340, entitled “Combination Induction Furnace.” On September 8, 1919, he filed another application for patent for “Electric Are Furnace Control and Apparatus Therefor,” in which he said: “This application is a continuation, in part of my application for patent, * * * ‘Serial No. 740,034, filed January 3, 1913. * * * ”

In the meantime appellant had, on August 9, 1918, filed an application which, on July 8, 1919, ripened into patent No. 1,309,045, for “Electric Furnace and Process of Operating Same.” This patent contained the claims which constitute the counts at issue.

Appellee copied these and other claims of the patent, seeking an interference which was declared. The Examiner of the United States Patent Office awarded priority to appellant, Moore, upon six of the counts, and to appellee, Greene, upon seven. The Board of Appeals reversed the Examiner as to three of the counts awarded Greene and awarded them to Moore, but affirmed as to the four in issue, and Moore appealed to this court.

It is the claim of the appellee, sustained by both tribunals of the Patent Office, that tbe disclosures of tbe Greene application of January 3, 1913, comprehended the subject-matter of the counts in issue, thereby entitling him to make same as a part of his application of September 8, 1919. Appellant denies that same was disclosed in the early application, and this constitutes the issue.

The mechanism of the Moore patent is one ■for melting and refining metal by means of heat generated by an electric current, or electric currents, being passed through the mass of material, including a current through the bottom of a polyphase are electric furnace.

It seems that prior to the Moore patent the system, as used in the art, supplied the electric current to all of the electrodes at substantially equal voltages. The Moore patent disclosed means for “unbalancing the current or voltage of one or more of the poly-phase arcs” (count 1), or (count 4), “means for unbalancing the voltage supplied to one of said electrodes.”

In the final analysis the question before us as to counts 1 and 4 is quite simple, and we have only to enquire whether Greene’s application of January 3, 1913, discloses such means as are recited in the Moore patent.

It is a general rule, frequently announced by the Court of Appeals of the District of Columbia and other courts, that the meaning of counts in an interference, if there be any ambiguity, is to be determined by the specification of the application or patent in which the claims originated. McIntyre v. Dodge, 58 App. D. C. 273, 29 F.(2d) 861; General Electric Co. v. Steinberger (C. C. A.) 214 E. 781. In Brogden v. Slater, 40 F. (2d) 988, 989, 17 C. C. P. A. 1240, 1241, 1242, this court said: “All of the counts in issue originated in appellee’s application, and it is well established that the meaning given to the counts, if there be any ambiguity, must be that disclosed in the specification of the party first to make the claim. Seymour v. Molyneux, 49 App. D. C. 216, 263 F. 468.”

It is also the well-established rule that in an interference proceeding the claims of a patent involved therein will be given the broadest interpretation which they reasonably will support. Stern et al. v. Schroeder et al., 36 F.(2d) 515,17 C. C. P. A. 670. But this rule does not warrant disregard of expressly defined limitations. In re Joseph Bijur, 40 F.(2d) 999, 17 C. C. P. A. 1134, citing Slattery v. Larner, 36 F. (2d) 298, 17 C. C. P. A. 725.

The instant case is to be considered in the light of these two general rules. .

In the Moore patent specification it is said: “A further object of my invention is to provide a novel process or method of varying the current and thereby regulating the heat, by unbalancing one or more of the poly-phase ares. As will be seen hereinafter, this may be done in a number of ways, the effect in each ease being to regulate the current flow through the bottom of the furnace and through the bath.”

There is then a description of operation which it is not deemed necessary to quote.

In the specification of Greene’s 1913 application, it is said: “ * * * Taps are shown as taken off the four lower turns which constitute the heavy portion of the primary winding and any number of these turns may be connected to the top electrode 5 by means of the switch 10. In this way it is possible to apply any desired voltage to the are furnace circuit between the bottom electrode 6 and the top electrode 5.”

The specification also contains the following: “In the use of 3 phase current, the primary windings may be connected in delta instead of star and the terminals from the heavy sections of the primary may be led to suitable electrodes for generating an are or other form of resistance heat. The several voltages may be controlled independently of each other as shown in Eig. 1.”

The Examiner in his decision, referring to Greene’s figure 2, says:

“The figure shows a three phase electric induction furnace including three star connected primary windings.. The neutral point of these windings is connected to an electrode in the bottom of the furnace. Three electrodes are provided in the top of the furnace, each of them being connected with one of the windings, at a point intermediate the ends thereof. The original specification states that these last named connections may be adjustable so that “the several voltages may be controlled independently.” It seems clear that, by changing the point at which one upper electrode is connected to its winding, while leaving the other two electrode connections unchanged, an unbalancing of the voltage of one of the ares would be effected. * * *
“Moore contends that, since said application does not expressly state that the voltage is to be unbalanced, the subject matter of the counts is not disclosed therein. However, since it is expressly stated that the several voltages may be varied independently, and since any variation of one independently of the others would produce an unbalancing, it is thought that there is a full disclosure of means for unbalancing the voltage of one or more ares.”

We also quote the following from the decision of the Board of Appeals:

“It is thought there is no real dispute as to the construction disclosed in Greene’s earlier case or that he shows a three-phase arc electric furnace in his figure 2 with which a switch such as shown at 10 and 11 in figure 1 may be connected to the separate phases of the polyphase auto-transformer of figure 2. With this construction we are unable to reach any other conclusion than that the presence of the independent switches was intended to result in independent adjustments, otherwise they would not have been independent of each other. Whenever one such switch is adjusted, the function described in these counts necessarily results. We agree with the examiner of interferences that the statement ‘the several voltages may be controlled independently’ in Greene’s application, means that by changing one of these switches only, or differently from the others, an unbalancing of the voltage of one or more of the ares would be affected.
“We are unable to accept the view of Moore that this statement of Greene concerning independently controlling the voltages • has relation to controlling the are voltages ‘independently of those of the inductive part of the furnace,’ as contended by Moore in his brief.”

Appellant has not convinced us that the holdings of the tribunals of the Patent Office as to counts 1 and 4 are erroneous. There does not appear to be any ambiguity in the counts, and they are sufficiently broad, it seems to us, for the disclosures of the Greene application to read upon them. There is no limitation in the counts themselves which confines them strictly to the disclosures of the patentee, Moore. Unbalancing seems inherent in controlling the voltages supplied the different electrodes independently of each other.

The method claims, Nos. 8 and 9, read as follows:

“8. The herein described process of controlling the current flow through the bottom of a polyphase are eleetrie furnace of the neutral star connected type, which consists in unbalancing the current or voltage of one or more of the polyphase ares.
“9. The herein described process of controlling the current flow through the bottom of a polyphase are electric furnace of the neutral star connected type, which consists in unbalancing the voltage in one or more of the arcs while maintaining the length of the arcs equal or balanced.”

It will be' observed that they differ only in the fact that No. 9 calls for controlling the current “while maintaining the length -of the arc equally balanced.”

It is noted that the Board of Appeals awarded priority to Moore on counts 2, 3, and 5 of the interference as it originally stood. These were article claims and called for a “conducting bottom.” The Board held that Greene’s application of January 3, 1913, did not disclose a bottom which was itself of conductive material, or conducting, but that his means consisted of an electrode inserted in the bottom. Moore had previously been awarded priority by the Examiner upon article claims, Nos. 6 and 7, and process claims, 10 to 13, inclusive, and Greene did not appeal.

Discussing the process claims here in issue, the Board says: “As to claims 8 and 9, we do not construe the terms “controlling the current flow through the bottom” as restricted to a furnace having a bottom which is conducting. These are method counts and are realized in Greene’s construction in which the current is conducted through the bottom by means of the electrodes which project therethrough.”

In so far as count 8 is concerned, we agree with the Board. It is a method count and the term “controlling the current flow through the bottom,” by the means recited, is the essential feature or element to be looked to, and it does not, as regards the method, appear to be important whether it is control of a current passing directly through a conductive bottom or control of one passing through an electrode inserted in the bottom. It is true that the Moore specification seems to limit his device to a conducting bottom, but this limitation of the specification when the count itself is expressed simply in the words “through the bottom,” without limiting it to a conducting bottom, does not seem'to us to make 'applicable the rule of interpreting the count in the light of the specification in which it originated. The broad rule of interpretation above stated applies.

This reasoning applies to the similar elements of count 9, and our holding would be the same relative thereto, but for the fact that the count calls for the feature of unbalancing the voltage in one or more of the arcs while maintaining the length of the arcs equal or balanced.

The Board makes no reference to this additional feature. The Examiner in his decision said: “While it is not specifically stated in the specification of [Greene’s] application No. 207,966 that the arcs are to be maintained of equal length, it is thought that such an arrangement may fairly be implied, this being the normal arrangement and the entire disclosure relative to the device shown by Figure 2 of said application being such as to lead to the conclusion that the arc structures are identical.” ,

It seems to us that, in view of the fact that this is a method claim, there should be, under the authorities, a clearer showing of anticipation than we áre able to discover in Greene’s disclosure. Greene presented no process claims in his original application, and we are loath to hold that the count is met by a mechanism application which, while it might carry out the process, yet contains nothing to indicate any understanding or appreciation of it by Greene in 1913, and gives no intimation of any directions for accomplishing it.

In Deppe et al. v. General Motors Corporation (D. C.) 15 F.(2d) 419, 428, it was said: “ * * * As most of the claims in issue are process claims, it follows, as álready said, that the showing of an earlier apparatus, which might carry out the process, cannot constitute anticipation, unless accompanied with directions in the patent for the same. .‘A process' patent can only be anticipated by a similar process. It is not sufficient to show a piece of mechanism by which the process might have been performed.’ Carnegie v. Cambria, 185 U. S. 424, 22 S. Ct. 707, 46 L. Ed. 968.”

The decision of the Board of Appeals is modified, being affirmed as to counts 1, 4, and 8, and reversed as to count 9, priority as to the latter being awarded to Moore.

Modified.

LENROOT, Associate Judge, dissents as to count 9.


author: BLAND, Associate Judge.

text:
    J. P. HEILBRONN CO. v. HAMMERMILL PAPER CO.
    Patent Appeal No. 2720.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    Warner I. Cubberley, of Washington, D. C., for appellant.
    Merrell E. Clark, of New York City, for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This appeal involves a petition for the cancellation of appellee’s trade-mark. The petition was dismissed by the Examiner of Interferences, and his decision, was affirmed by the Commissioner of Patents, and from the latter’s decision this appeal is taken.

The Hammermill Paper Company of Erie, Pa., hereafter called Hammermill, on March 31, 1925, registered the trade-mark “Luna” for bond writing paper. The date of the first use of this trade-mark of the registrant in interstate commerce was in February, 1924, and ever since that date Hammer-mill has shipped large and increasing quantities of bond writing paper bearing the trademark “Luna Bond, Made in H. S. A.,” into various states and into many different countries of the world.

In December, 1924, appellant, J. P. Heilbronn Company, hereafter known as Heilbronn, placed upon the market-in competition with Hammermill tits own bond writing paper bearing the trade-mark “Luna Bond”; the words being printed in the same style as that of Hammermill, and accompanied by a crescent or half-moon, with the outline of a face in the hollow of the crescent.

The Oregon Pulp & Paper Company, of the state of Oregon, was the manufacturer of the paper for Heilbronn. When Hammer-mill objected to the said paper company manufacturing the paper, Heilbronn gave the paper company an indemnity bond, and then proceeded to petition for cancellation.

Heilbronn’s first ground for cancellation is based upon the fact that, prior to the use of the word “Luna” by Hammermill, appellant had uséd, upon other kinds of paper such as pads, wrappers, booklets, etc., a trade-mark which was described by the Commissioner in his decision as:

“ * * * The representation of a crescent within the concave portion of which appears a representation of a man’s face, and a representation of a five-pointed star enclosing the letter “H” appears hung or suspended from the upper horn of the moon crescent. * * * ”

Heilbronn’s position is that, since that symbol includes1 the crescent, and since it claims that “Luna” is the Spanish word for moon, the use of the Hammermill trade-mark “Luna” will lead to confusion and to the damage of Heilbronn; that, since “Luna” means moon in Spanish, appellee’s mark “Lima” in Spanish countries will be Confused by the paper purchasing public with appellant’s so-called crescent mark.

'Appellant further contends that appellee has not shown “clean hands” as based upon facts which will be briefly stated: American Paper Exports, Inc., was the selling agency for Hammermill, and S. Allen Presby was the agent and customer of said American Paper Exports, Inc., in the Philippine Islands. In 1924, when a shipment of Hammermill’s “Luna” goods, shipped by American Paper Exports, Inc., arrived in the Philippines, Heilbronn brought suit against Presby and another for injunction and damages, basing its suit on Heilbronn’s Philippine registered trade-mark, which mark consisted of the crescent and the star inclosing the letter “H.” In settlement of the suit, it was agreed that Presby would not import paper bearing the “Luna” trade-mark into the Philippines, and that the mark “Luna” or “Luna Bond,” in the Philippines, was owned by Heilbronn.

This evidence was evidently offered bn the theory that it amounted to an admission by Hammermill that, by the1 use of its trademark “Luna,” it was infringing appellant’s mark. It is nowhere shown that the parties to the contract had any authority to contract with reference to appellee’s trade-mark rights, and we regard it of no importance in the determination of the issues before us.

The record shows that appellee sold its goods in Cuba prior to 'any sale of the same being made in the Philippines, and that the word “Luna” is the name of a party in Cuba v¿ho ordered some of appellee’s goods.

The word “Luna,” both in the English and Spanish languages, has reference to the moon. Appellant states that “Luna” means moon; that it means a moon goddess, and that “Lunar” is defined as “pertaining to or resembling the Moon, orbed or crescent.”

Appellant argues that, under a long line of decisions, which it cites, the use of a word has the same effect as the use of a picture, if the word means the same as the picture. One of the leading cases on this subject is In re Maclin-Zimmer-McGill Tobacco Co., Inc., 49 App. D. C. 181, 262 E. 635, where it was held that the right to employ a symbol necessarily included the right to employ the word. Another ease cited is G. Sindenberg and Co. v. W. H. Childs and Son, 146 M. D. 345, 15 T. M. Rep. 237, where the word “Capitol” was refused registration by reason of the registered trade-mark consisting of a picture of the Capitol.

The difficulty with appellant’s contention in this regard is that his trade-mark does not consist of a moon. It does not purport to be the representation of a moon. A portion of it may be said to be a crescent or part of a moon with a grotesque face, accompanied by a star hanging to the upper horn, in which star is the letter “H.” There is no evidence of consequence in the record that appellant ever used the word “moon” or the picture of a moon or the word “Luna” in connection with the sale of its goods prior to appellee’s use of the word “Luna.” Conceding that appellant had the right to the exclusive use of the trade-mark used by it prior to the date of appellee’s use of its “Luna” mark, appellee had the right to register its mark, and appellant’s cancellation proceeding must fail if it is not likely that confusion will result from the concurrent use of both marks on goods of the same descriptive properties.

Appellant’s mark, which was used prior to appellee’s use of its “Luna” mark, we think was used1 upon goods of the same descriptive properties as those of appellee, yet it is conceded that they were not exactly the same kind of goods. The marks being neither similar in appearance nor sound, we do not believe there is now, or was on the date appellee registered its mark, any likelihood of confusion arising from the concurrent use of both marks. The record as a whole shows no actual confusion or circumstances and facts which would indicate likelihood of eon-fusion. The right of appellee to use in connection with its mark a picture or a representation of a moon or any part of the same or to characterize its goods as moon goods either here or in Latin countries is not before us. Its registration is for the use of the word “Luna” on bond writing paper, and we are unable to see how appellant could be damaged in the use of its combination mark.

We agree with the decision of the Commissioner of Patents, and the same is affirmed.

Affirmed.


text:
    In re PERRIGO.
    Patent Appeal No. 2723.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GARRETT, Associate Judge.

The application in this ease relates to “Method and Apparatus for Accumulating and Transforming Ether Electric Energy,” and embraces 36 claims of which numbers 1, 15, 21, and 32 seem fairly representative:

“1. The production and generation of an electromotive force from the accumulation of the ether waves of an unknown potential, from the general field of ether wave electric medium.”
“15. The method and apparatus herein described for collecting and accumulating from the general ether field of electric medium of unknown polarity, of ether waves of electromotive force, consisting in conducting the lines of force of the ether electric waves through aerials and within groups of broken circuits, and breaking up the lines of force, then reversing the polarity of these potentials through ■ the medium of polarized resistances.”
“21. A collector and accumulator of the ether electric waves, consisting of wave inductive aerial plates, and terminal contacts in opposite wave transmitting positions.”
“32. An ether wave transformer of electromotive force, comprising an internal body of magnetic circuits, and an external body of increased magnetic intensity, to the internal body, and haying an air gap between, insulated means connecting the internal and external bodies of magnetic circuits, and conductors connecting the poles of the internal and external magnetic circuits in progressive degrees of electric induction, and polarizing and depolarizing circuits connecting the conductors from the poles of the. magnetic circuits in series, and series of polarizing and depolarizing circuits connecting said series of conductors in reverse order, and polarized resistance coils in the air gap insulated from the magnetic circuits and connecting electrically the series of reversed polarizing and depolarizing circuit from the magnetic circuits.”

There are no references, the claim having been rejected by the Board of Appeals of the United States Patent Office, who affirmed the decision of the Examiner, on the ground that the disclosed device is lacking in utility as'1 a result of inoperativeness.

Appellant’s structure is á very elaborate One, there being ten sheets of drawings. It would serve no good purpose to attempt a detailed description of it. There is a plate-like member carrying a' quite complicated system of wiring, which is referred, to as a “collector,” and a structure, called a “transformer,” which includes superimposed layers of conductors. There is also a rheostat and lead comprising a number of electric lamps.

The claims, as quoted, sufficiently indicate the purpose of the device.

Appellant-has made several assignments of '-'error,"’ as,' -f or example, that the Board eiTed"iftr'upholding'the rejection by the Ex-Srdíiier Ob' the !gfóuind (a) that the claimed invention “does not conform to any theory whdeh is consistent with known natural laws rating to radiated energy, electro-statics, el^qtjropilynamies or electro-magnetic phenpiggpg,”; (b) that it was implied that to supppirf-.-the application the discovery and development of “an entirely new world of qnlipown natural phenomena” would be an indispensable prerequisite; and (e) that it was implied that the same kind of development and public manifestations as characterized other fields of discovery (such as radio) was deemed to be an indispensable prerequisite.

These ¡.assignments of error are not well taken. Appellant’s specification is long and Complicate.fi, and such explanation of operation ’as.' S "given is expressed in language which, to us; as it appears to have been to the tribunals of the Patent Office, is not eomprehensitiie, although the physical structure itself .is capable of being understood. The specification does not conform to any scientific or engineering principles of which we ¿five "beefi'able to obtain any knowledge, ^hffiild we reverse the experts and grant the p.atfeiit sought, it would be a “leap in the 3^I’li;]>0kb'far as this court is concerned, and wwjikld.be entirely unable to say what the pfitkn'f’ik really for, or what measure of proteefion 'appellant is receiving. We have no Way of ascertaining whether the device possesses utility or whether it will do the things ¿Mined for it. There is nothing shown us fforntfie realm of science by which to measure it.

It is fundamental in patent law that an alleged invention, to be patentable, must be not only new but useful, and that it must appear capable of doing the things claimed in order to be a device of practical utility. Besser v. Merrilat Culvert Core Co. (C. C. A.) 243 P. 611; Coupe v. Boyer, 155 U. S. 565, 574,15 S. Ct. 199, 39 L. Ed. 263.

The rule of doubt may only be applied in favor of an applicant where the doubt is a reasonable one, that is, one founded in reason and engendered by testing the, alleged invention by known scientific laws and principles. Ex parte DeBausset, 1888 C. D. 66.

Neither the Patent Office tribunals nor the courts may properly grant patents upon a mere possibility that a device might do the things claimed for it, and be useful. There must be definiteness. Neither the Constitution nor the statutes contemplate the granting of patents upon theories, nor giving a monopoly upon1 intellectual speculations embodied in devices incapable of scientific analysis.

The question of patentable invention ordinarily must be determined by applied-science, as understood by those skilled in the art to which the invention relates, and, if one presents a device which cannot be tested by any known scientific principles, he must, at least, demonstrate its workability and utility and make clear the principles upon which it operates.

No such demonstration here appears from appellant’s application, or otherwise. Three affidavits are presented of parties who claim to have seen.appellant’s device in operation and who vouch for its working. These affidavits, however, are brief, general in character, and give no description of the device which affiants saw. Nor do they give any explanation which contains anything tending to clarify the terminology of the specification, or to render the device measurable by engineering principles or known natural laws. One of the affiants states that he is “a member in good standing in the American Society of Electrical Engineers,” but he does not attempt any scientific explanation of the device or its workings.

Appellant’s fourth assignment of error is: “The Board of Appeals erred in ignoring the applicant’s offers to demonstrate -the operativeness of his invention and apparatus, and/or upholding the decision of the Examiner on the ground of applicant’s failure to demonstrate his invention and apparatus.” It is noted that this assignment attributes to the Board of Appends an “ignoring” of appellant’s offer to demonstrate.

If it be meant by this that an offer was made to the Board of Appeals to make a demonstration of the device, it is sufficient to say that there is no disclosure in the record which even suggests that any such offer was ever made to that tribunal.

We do find that, while the matter was pending before the Examiner, and after his first rejection, an attorney for appellant, on April 25,1927, addressed a letter to the Commissioner of Patents in which it was said: “ * * * It is prayed that the Examiner point out more specifically the defects required to be corrected [in the specifications], and that an opportunity be afforded the applicant to demonstrate his invention, should such action be required by the Office.”

There is, in another letter of the attorney to the Commissioner, dated October 31,1927, a discussion of the affidavits above alluded to and a suggestion that a prima facie showing of facts had been made justifying a “more-exhaustive consideration of the merits of his alleged invention, and particularly in view of his offer to further demonstrate the invention to the Office, if an opportunity be afforded him for that purpose,” and the letter concludes with a prayer that “ * * * final action be not rendered without affording applicant a full and fair opportunity to demonstrate his invention to the Office to the fullest extent within his power.” (Italics ours.)

In the appeal to the Board there is no reference to the matter by assignment of error or otherwise, and the Board says: “No such demonstration has been offered.”

In the absence of any stronger showing than the record contains of a;bona fide earnest effort on áppellant’s part to secure a demonstration to or before the Patent Office tribunals, this court would not be justified in finding that the fourth assignment of error is good.

The decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re TOBOLD.
    No. 2689.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    Kwis, Hudson & Kent, of Cleveland, Ohio (A. J. Hudson and W. E. Williams, both of Cleveland, Ohio, and W. T. Estabrobk, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    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 Pat-' ent Office affirming the decision of the Primary Examiner denying all of the claims, 4 to 7, inclusive, in appellant’s application-‘for'a1 patent for an alleged invention relafing'”‘tba device adapted for use in connection11 with the storing of “valve insides for pneumatic1 tires,” and comprising a relatively thin'flat plate — “separator member” — provided with one or more reentrant slots of proper • dimensions to engage the enlargement on the' valve stem and the end of the casing, thus separating the valve proper from its seat:' "

Claim 4 is illustrative. It reads:

“4. The combination with a yalve insides comprising a easing, a stem within the casing, a valve proper carried by the stem and adapted to cooperate with the lower end of the easing as a seat, an enlargement of the valve stem on the valve proper, a spring within the casing and normally holding the valve proper to its seat, of a separator member having a portion adapted to engage the enlargement on the valve stem arid 'the' end of the casing to thereby separate the valve prop-i er and the seat, the separator being retained .under the spring action of the aforesaid spring.”

The reference is: Kingsbury, 1,558,484, October 27, 1925.

In the reference the separator member comprises a channel shaped member consisting of a base and sides, one of the sides having a series of slots so arranged therein as ..to be directly above pockets in a receptacle in which .the.separator member and the valves are to be placed.

In his specification the patentee stated that:

“Before such insertion, the several valves of .the set are mounted upon the support, first lifting the heads and inserting the stems in the cutouts. Under the force of the spring 19, the end of the body portion and the head clamp upon the support, as clearly indicated in Figs. 1 and 4.
“In this relation the support and the valves may be handled as a unit to be inserted in the receptacle. It should be noted that the length of the valve stem is such that in this position, the head end of the stem is spaced from the side portion 28, and the distance'from the said side portion to the other end of the stem is slightly greater than the interior transverse dimension of the receptacle. When inserted in the receptacle the stem must therefore be pressed inwardly, so that it engages the side of the receptacle, (Fig- 5) and moves the valve head from contact with the portion 27 of the support with the advantageous result that the valves are securely held under spring pressure against rattling or becoming loose, and the rubber gaskets 25 are retained out of contact with the surface of the support and the valve bodies. When removed from the container the rubber gasket, which is vital to the proper operation of the valve is undeteriorated, and free from distortion, and will therefore function perfectly.”

It is argued by counsel for appellant that the slots in the separator member, disclosed in the application, are of a/‘width greater than the diameter of the small end of the enlargement on the stem, but of a width less' than the diameter of the larger end of such enlargement”; and that this arrangement is not disclosed in the reference.

It may be observed that appellant’s claims do not specify the size of the slots in the separator member. They merely call for a. separator member having a portion- adapted to engage the enlargement on the valve stem and the end of the easing to maintain the “valve proper” out of contact with its seat.

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

“The claims distinguish from the disclosure of Fig. 4 of the patent only in specifying that the strap engages the enlargement on the stem. We fail to see that this is a material difference over the structure shown, in the reference as the strip shown there pre-
vents the valve casing from pressing upon the yielding material of the valve thus causing it to become indented and deformed. The spring will be under no greater tension when held in the.manner shown in Fig. 4 of the patent than in appellant’s structure.”

There is nothing in the reference to indicate that the separator member therein disclosed is not adapted to engage the enlargement on the valve stem and the end of the casing, and, in our opinion, the involved claims are sufficiently broad to read on the reference.

The Patent Office tribunals concurred in holding that the involved claims are not patentably distinguishable from the reference. We are in accord with this conclusion, and the decision of the Board of Appeals is affirmed.

Affirmed,


author: HATFIELD, Associate Judge.

text:
    In re WOOD.
    No. 2722.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    Southgate, Fay & Hawley, of New York City (Albert E. Fay, of New York City, and Chas. E. Riordon and C. Russell Riordon, both of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C. of counsel), for the Commissioner of Patents.
    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 primary examiner denying claims 3, 7, 8, and 13 in appellant’s application for a patent for an alleged invention relating to a method and an apparatus for accurately shaping printing plates. The object of the alleged invention, as stated in appellant’s specification, is to provide a method and a means for forcing low spots on the printing plate against an accurately shaped surface so that the printing surfaces of the plate will be uniform.

Claims 3, 8, and 13 are illustrative. They read:

3. The method of shaping printing plates which consists in applying pressure to the back of the plate at a series of points along it to force all thin areas of the plate against a surface on the front side and plowing through the backs of the thick parts of the plate so that the entire front surface of the plate will conform, accurately and uniformly to the desired shape.”

“8. The method of shaping printing plates which consists in holding a plate against a surface of the desired shape, passing along the grooves in the rear surface of the plate a solid body having a longitudinally convex but laterally tapering edge for the purpose of forcing thin spots in the grooves on the plate back against the said surface and bringing the grooves to a uniform shape.”

“13. In an apparatus for shaping a stereotype plate, the combination of a surface of the shape which is desired for the printing surface of the plate, and a series of cutters extending across the plate under it and having tapering' edges engaging the rear of the plate and capable of forcing the plate back against said surface or of plowing through the plate ’where they encounter thick portions or projections on the plate.”

The references are:

Wood, 1,009,209', November 21, 1911.

Wood, 1,269,239’, June 11,1918.

Wood, 1,009,206, November 21, 1911.

It is claimed by appellant that the involved claims define patentable improvements over the references.

The primary examiner held that the “ears 525” of the reference No. 1,009,209 are used to force the printing plate “against backing arch and if a thick spot in plate presented itself, they would plow through it and still further force the plate against backing. The patent No. 1,269,239 states clearly that the knife in that construction forces plate to conform to arch backing and if such a knife with ears 525 attached were used, .it-is fair to assume that the action would be more complete and in case of a thick spot in the metal, these fingers would plow through -and force plate still more firmly against backing.” ■ •

With reference to the method of passing along the rear surface of the printing plate a solid body having a tapering edge of -a character that will not cut into a chilled plate, as defined in claim 7, the primary examiner said: “The patent #1,009,209 shows such solid body in ears 525 although not tapered, but it is considered that-these ears will act to force thin parts of the plate back against surface and plow through thick spots leaving marks on bottom of the grooves • the same distance from the front of plate as recited. The distinction over the reference seems structural and slight only.”

Claim 8 relates to a method of holding a printing plate ágainst a surface of1 the desired shape and passing a solid body having a longitudinally convex but laterally tapering edge along the grooves of the rear surface of the plate for the purpose of bringing the grooves to a uniform shape. With reference to this claim, the primary examiner held that the “ears 525” of patent No. 1,Q09,-209', although not having a tapered edge, conform substantially to the method set out in' claim 7, and that the method was not patentably distinguishable over the reference.

An apparatus for carrying out the alleged improved method, defined in claim Í3, was held by the primary examiner to be unpatentable over the reference No. 1,009,209.

The decision of the primary examiner holding the method and apparatus defined in the involved claims to be unpatentable over the references of record was affirmed by the Board of Appeals.

After careful consideration of the issues and the arguments of counsel for appellant, we have reached the conclusion that the tribunals of the Patent Office were'not in error in rejecting the involved claims.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: LENROOT, Associate Judge.

text:
    In re BACH.
    Patent Appeal No. 2707.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Watts T. Estabrook, of Washington, D. C., and Hazard & Miller, of Los Angeles, Cal., (for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel) for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Board; of: Appeals of the United States Patent Office, affirming a decision of the Examiner, rpjesting the claims of appellant’s application, .four in number, for failure to definp; invention,.oyer the .prior art.

Upon the oral argument, claims 6 and 10 were withdrawn, leaving claims 11 and 12 before us for consideration. Claim 11 is illustrative and reads as follows: _

"11. The method of making a confection which comprises employing an edible container fqyrqed of two complementary parts, each of ..yfhieh has outwardly inclined walls, placing a slab of edible material having vertical, sides .between the parts, which is of sufficient thickness to keep the parts temporarily , separated, and .pressing the parts toward each other until they engage, squeezing the edible material and causing it to enter the space between the outwardly inclined walls of said parts.”

The references are: Gategast, 1,036,092, August 20, 1912; Cressey, 1,382,601, June 21, 1921; Broun et al., 1,446,782, February 27, 1923; Belloeehio, 1,552,671, September 8, 1925; Papageorge, 1,524,367, January 27, 1925.

The alleged invention relates to an ice cream tartlet. It is sufficiently described in the claims above quoted.

The reference Gategast discloses a method of making patty shells. Two shells are used together to make an inclosure for edible filling.

The patent to Cressey relates to a confection having a filling inclosed in a container, having two half sections made of edible material, as dough, baked crisp, and united at their adjoining edges by a seal.

The reference Broun relates to a packaged food product comprising a pie or like article, a container portion surrounding the sides of the pie, another container portion contacting with the top edges of the pie, and means for holding the container portions together and in reactive relation to the pie. The container parts are not edible. -

The patent to Papageorge relates to a confection comprising an edible container-formed of separable sections adapted to be filled with an edible substance, such as ice cream, and associated with each other so that the viscosity of the substances- serves to secure the portions in container formation.

The questions here involved are questions upon which the tribunals of the Patent Office concurred. The rule is that in such cases we will not--reverse a decision of the Patent Office unless it is manifestly wrong. Pengilly v. Copeland, 40 F.(2d) 995, 17 C. C. P. A. 1143; Beidler v. Caps, 36 F.(2d) 122, 17 C. C. P. A. 703.

After carefully examining the references and considering the argument of counsel, we cannot, under the rule above cited, hold that the Board of Appeals erred in its decision, and it is affirmed.

Affirmed.


author: BOOTH, Chief Justice.

text:
    KNOLLWOOD CLUB v. UNITED STATES.
    No. L-303.
    Court of Claims.
    April 6, 1931.
    Clarence N. Goodwin, of Chicago, Ill., for plaintiff.
    Charles B. Rugg, Asst. Atty. Gen. (Ralph C. Williamson, of Washington, D. C., on the brief), for the United States.
    Argued before BOOTH, Chief Justice, and WHALEY, WILLIAMS, LITTLETON, and GREEN, Judges.
   BOOTH, Chief Justice.

The defendant demurs to plaintiff’s petition. The suit is one for the recovery of taxes alleged to have been illegally assessed and collected by the Commissioner of Internal Revenue. The facts are as follows:

The plaintiff, an Illinois corporation, was incorporated for the purpose of maintaining a country club. It is a nonprofitable organization and owns and possesses all the facilities essential for its purposes. The 'membership of the club is limited to 300 members and eligibility is dependent upon the individual ownership of certificates of membership, which it is alleged endow the owner with a beneficial interest in the property of the elub. Admission into the' club is in some eases brought about by a purchase and in- other cases by a gift of a certificate of membership-, but prior to becoming a member it is absolutely essential that title to a certificate of membership become vested in the applicant for membership, and upon the transfer of sueh a certificate from one person to another the transferee becomes a member of the club without the payment of any amount other than the purchase price of the certificate-tp the transferor. Prom June 28, 1928, to November 19, 1929, twenty-five sueh certificates were sold at the uniform price of $2,500 each to twenty-five persons, who thereby became members of the club, the plaintiff alleging that the club itself was not concerned about the price for which the same were sold.

The Commissioner of Internal Revenue, acting under section 413 of the Revenue Act of 1928, levied and collected from the plaintiff a tax equivalent to 10 per centum of the amount paid by the transferee for said certificates, a total of $6,250, and it is for the refund of this amount the suit is brought-. A refund claim was seasonably filed, and-m'o jurisdictional issue is involved. Section-413 of the Revenue Act of 1928, e. 852, 45 Stat. 791, 864 (26 USCA § 872, and § 872 note) provides as follows:

“Sec. 413. Club dues tax.
“(a) Section 501 of the Revenue:Act of 1926 is amended to read as follows:
“‘See. 501. (a) There shall be levied, assessed, collected, and paid a tax equivalent to 10 per centum of any amount paid—
“ ‘(1) As dues or membership fees to any social, athletic, or sporting club or organization, if the dues or fees of an active resident annual member are in excess- of, $25 per year; or
“ ‘(2) As initiation fees to sueh- a club or organization, if sueh fees amount, to more than $10, or if the dues or membership fees, not including initiation fees, of an active resident annual member are in excess of $25, per year.
“‘(b) Sueh taxes shall be paid by. the person paying such dues or fees.
“‘(e) There shall be exempted.from the provisions of this section all amounts paid as dues or fees to a fraternal society, order; or association, operating under the lodge system, or to any local fraternal organization among the students of a college or university. In the case of life memberships a life member shall pay annually, at the time for the payr ment of dues by active resident annual members, a tax equivalent to the. tax upon-the amount paid by such a member for dues.or membership fees other than assessments, but shall pay no tax upon .the amount -paid for life membership.. - . . ...
“‘(d) As used in this section, the term “dues” includes any assessment irrespective of the purpose for which made; and the term “initiation fees”, includes any payment, contribution, or loan required as a condition precedent to membership, whether or not any such payment, contribution, or loan is evidenced by a certificate of interest or indebtedness or share of stock, and irrespective of the person or organization to whom paid, contributed, or loaned.’
“(b) Subsection (a) of this section shall take effect on the expiration of thirty days after the enactment of this Act.”

The plaintiff contends that, inasmuch as the purchase price for transferred certificates of membership was paid to the vendee and not the club, the transaction may not be construed, under the applicable sections of the Revenue Act, as the payment of initiation fees. This, it seems to us, ignores the fact that the adopted course of procedure to gain admission into the club exacted as an original proposition the payment into the club of the full issue price of certificates of membership. True, the club recognized the right of transfer, but the transferee did no more, in so far as facts alleged in the petition are involved, than substitute himself in the place of the previous owner, and while the club neither gained nor lost by the transaction, in so far as funds were concerned, the vendee did gain admission into a limited and exclusive club, for which he paid in this ease the sum of $2,500. It is not contended that he might have been admitted under any other conditions. Clearly the acquisition of the above certificates was for no other purpose than a prerequisite to membership in the club.

The applicable regulations of the commissioner are regulations 43, article 41, as amended by Treasury Decision 4290, April 28,1930, and provide as follows:

Article 41. Initiation fees. Any amount paid as initiation fees to a club or organization coming within the provisions of section 413 of the Revenue Act of 1928 is subject to the 10 per cent, tax imposed thereunder (a) if such fees amount to more than $10, or (b) if the dues or membership fees (not including initiation fees) of an active resident annual member are in excess of $25 per year.
“Under the act the term ‘initiation fees’ includes any payment, contribution, or loan required as a condition precedent to membership, whether or not any such payment, cohtribution, or loan is evidenced by a certificate of interest or indebtedness or share of stock, and irrespective of the person or organization to whom paid, contributed, or loaned. It is not material whether the applicant has any hope or expectation of a return of his payment upon resignation, death, or other circumstances, nor is it material to whom he pays the money. For instance, if a golf club requires incoming members as a condition precedent to membership to purchase either from it or from retiring members a share of stock, the tax attaches to any such payment for the stock after June 28, 1928, regardless of the fact that it represents a property interest in the assets of the club, likewise, if the purchase of a share of stock in a landholding corporation is a necessary precedent to membership in the club, the amount paid for such share of stock is taxable. In the ease of a transfer of stock from a retiring member the club' should collect the tax on the amount paid by the new member for the stock as well as tax on any transfer fee required from the new member.
“If the ‘initiation fees’ amount to more than $10, the tax attaches regardless of the amount of dues or membership fees paid by an active resident annual member. On the other hand, if the initiation fees amount to less thán $10, the tax does not apply unless the dues or membership fees, exclusive of initiation fees, of an active resident annual member are in excess of $25 per year. If such dues or membership fees are in excess of $25 per year, any amount paid as an initiation fee is taxable whether the payment is more than $10 or less.
“Where the application of the tax to initiation fees depends upon the amount paid as dues or membership fees by an active resident annual member all assessments are to be included in ascertaining whether such dues or membership fees are in excess of $25 per year.”

The Circuit Court of Appeals for the Second Circuit in the ease of Munn v. Bowers, Collector, 47 F.(2d) 204, decided January 5, 1931, Prentice-Hall 1931, vol. 1, § 402, p. 561, had before it this precise issue, and decided adversely to plaintiff’s contention. The opinion discusses all the points raised by the plaintiff in the present case. Wo think the Court of Appeals was right.

The demurrer will be sustained and the petition dismissed.


author: LITTLETON, Judge.

text:
    SUGAR LAND RY. CO. v. UNITED STATES.
    No. H-394.
    Court of Claims.
    April 6, 1931.

      Newton K. Fox, of Washington, D. C. (Adrian C. Humphreys and Humphreys & Gwinn, all of Washington, D. C., on the brief), for plaintiff.
    George H. Foster, of Washington, D. C., and Charles B. Rugg, Asst. Atty. Gen., for the United States.
    Before BOOTH, Chief Justice, and GREEN, LITTLETON, WILLIAMS, and WHALEY, Judges.
   LITTLETON, Judge.

Plaintiff’s return for the calendar year 1918 was due under the statute March 15, 1919. Its return was filed June 15, 1919. The original return showed a tax of $9,-740.19, which was paid in four installments throughout 1919. Later an additional assessment of $1,798.77 was paid July 8,1921, and an additional tax of $368 shown .on the amended return filed by plaintiff was paid February 9,1922.

March 8 plaintiff filed a claim for refund which stated no basis or grounds for the alleged overpayment but .contained the statement that it was filed to protect plaintiff against the statute of limitations.' This claim was considered by the commissioner and denied and rejected April 16,1924. This claim was filed within five years after, the return for 1918 was due, as permitted by section 252 of the Revenue Act of 1921 (42 Stat. 268). It was rejected by the commissioner after the time for filing a claim for- refund had expired. Thereafter, on June 6, 1924, plaintiff filed the claim for refund referred to in finding 4 for the same amount which had been specified in the earlier rejected claim. This claim gave as the ground and reason for the allowance thereof that plaintiff was entitled to have its profits tax computed under the provisions of section 328, special assessment provision, of the Revenue Act of 1918 (49 Stat. 1093). Subsequent to the filing of this claim, plaintiff duly filed an application for assessment of its profits tax under the special assessment provisions. The application for special assessment was allowed by the commissioner, as a result of which, on October 7, 1925, he determined that there had been an overpayment of $4,-492.56 for 1918. The Comptroller General directed that payment of the overpayment allowed by the commissioner be withheld, and when he subsequently certified to the commissioner, in August, 1928, that there was no longer any reason to withhold payment, the Commissioner of Internal Revenue decided that since the claim for refund filed March 8,1924, stated no grounds and had been considered and rejected upon thé record before him, the claim filed by the plaintiff Juné 6, 1924, was governed by the provisions of section 281 (b) of the. Revenue Act of 1924 (26 USCA § 1065 note) and of section 1912 of that act amending section 3228 of the Revised Statutes (26 USCA § 157), and such claim having been filed more than four years • after a portion of the tax going to make up the total overpayment determined had been paid, only a portion of. the overpayment could be refunded.. Accordingly, the commissioner issued a new certificate of overassessment and refunded to the plaintiff only $2,-.166.77 of the total overpayment representing the amount of the last two payments above mentioned on July 8,1921, and February 9,1922, these two payments falling within a period of four years prior to the filing of the claim of June 6, 1924. The commissioner refused .to. refund the balance of the overpayment, amounting to $2,417.79, with Interest.

This suit is 'to recover the above-mentioned amount, with interest on $2,189.31 from September 19, 1919, and on $228.48 from December 18, 1919, and the question is whether the plaintiff made and maintains this suit upon the claim for refund filed.

Plaintiff contends that the original claim of March 8, 1924, was filed within five years after the return was due and, therefore, in time, and that it was enlarged hy a “supplemental” elaim for refund filed June 6, 1924, based upon special assessment, and under the provisions of section 281 (a) 'of the Revenue Act of 1924 (26 USCA § 1065 note), the commissioner allowed the elaim on the ground of special assessment and determined an overpayment of $4,492.56.

On the other hand, the defendant contends that since the refund elaim filed Mareh 8, 1924, was rejected on. April 16, 1924, which was prior to the enactment of the Revenue Act of 1924, the saving clause of section 281 (b) (f) of that act is not applicable; that the claim of June 6, 1924, must be considered an original claim subject to the four-year period of limitation provided by the Revenue' Act of 1924.

Unless the refund claim filed June 6, 1924, can be- treated as a part of and an amendment of the first claim filed Mareh 8, 1924, the plaintiff cannot maintain this suit, for the last-mentioned elaim was filed after the expiration of the period for the filing of claims in respect of the overpayment in controversy. We are of opinion from the facts that the claim of June 6, 1924, was not an amendment or supplement to the claim of Mareh 8,1924. Although counsel in the stipulation of facts stipulate that “On June 6, 1924, the claimant filed a supplemental claim for .refund of income and profits taxes paid for the year 1918 in the sum of $11,906.96, as follows,” the fact is that the claim of March 8,1924, was not in existence and could not be amended nor supplemented. It had been considered and rejected by the Commissioner of Internal Revenue, and it could not subsequently, after the statute of limitations had expired, be enlarged or supplemented so as to give the taxpayer any greater right than existed under an original elaim filed at such time. The facts definitely establish that the claim of March 8, 1924, had been duly considered and rejected by the Commissioner of Internal Revenue before the claim of June 6, 1924, was filed. We, therefore, decline to follow the stipulation and to find as a fact that the last-mentioned claim was supplemental to the first. (See Rinding 4.) ■ The elaim for refund of June 6, 1924, was therefore an original elaim and subject to the limitation provisions of the Revenue Act of 1924, approved June 2, 1924. Cf. Altman & Co. v. United States, 40 R.(2d) 781, 69 Ct. Cl. 721.

We need not here consider whether the Commissioner of Internal Revenue, having considered a timely elaim for refund and duly rejected it after the expiration of the statute of limitation for filing a claim, might legally reconsider his action and vacate his decision rejecting the claim so as legally to permit an amendment or supplement to such 'claim. There are no facts in the record to show that the commissioner ever reconsidered or vacated his decision of April 16, 1924, denying and rejecting the claim for refund theretofore filed by the" plaintiff March 8, 1924. The claim of June 6, 1924, was governed by the provisions of section 281 (b) of the Revenue Act of 1924 (26 USCA § 1065 note). The commissioner correctly declined to make a refund to the plaintiff of that portion of the overpayment of tax which had been paid more than four years prior to the filing of the refund claim of June 6. 1924.

The petition must be dismissed, and it is so ordered.