EXAMINER DIRECTED TO REJECT COUNT, UNPATENTABLE OVER OTHERS, AFTER FINAL DECISION ON PRIORITY.

(Holt v. Rimailho, 343 O. G. 3.)

In an interference proceeding, where the proofs were such as entitled the junior party to an award of priority on all counts except one, as to which he had not proved conception prior to the senior party's filing date, but this count was not considered patentable over the others, judgment of priority as to such count was awarded to the senior party and as to all other counts to the junior party, but the primary examiner was directed to reject the claim corresponding to this count in the event that the decision was not reversed on appeal.

FINAL REJECTION IN SECOND OFFICE ACTION NOT

PREMATURE.

(Sutton, 343 O. G. 3.)

Where the examiner, in the first office action, rejected the claims of a reissue application on certain references which were specifically applied, and in response the applicant did not amend the claims, but traversed the examiner's action, referring to the references generally, it was proper for the examiner, in his next action, to finally reject the claims.

PATENT IS EVIDENCE OF INVENTION AT DATE OF
APPLICATION FOR ALL MATTER DISCLOSED.

(Alexander Milburn Co. v. Davis-Bournonville Co., O. G. 817.)

A patent containing a disclosure of an invention affords evidence of invention at the date of the application for patent whether such invention is claimed or not, such a description making it impossible for a later inventor to obtain a patent for that which was in the course of being given to the public.

EXCLUSIVE LICENSEE MAY SUE INFRINGER IN NAME
OF OWNER.

(Independent Wireless Telegraph Co. v. Radio Corporation of America, 344 O. G. 3.)

"The owner of a patent who grants to another the exclusive right to make, use or vend the invention, which does not constitute a statutory assignment, holds the title to the patent in trust for such a licensee, to the extent that he must allow the use of his name as plaintiff in any action brought at the instance of the licensee in law or in equity to obtain damages for the injury to his exclusive right by an infringer or to enjoin infringement of it," and this is true although the license may not contain an express covenant requiring the owner and licensor to sue infringers, the obligation being implied.

CLAIMS FOR COMPOSITION OF MATTER SHOULD STATE PROPORTIONS OF INGREDIENTS.

(Haynes Stellite Co. v. Chesterfield, 8 F. 765, 770.)

The Haynes patent No. 1,057,423, for an alloy of metal, claims 1, 2, 3 and 4, which merely specify the elements cobalt, chromium, and tungsten, without restriction as to proportions, use or method of manufacture, held void as too broad; claims 5, 6, 7, and 8, which specified proportions of the ingredients to some extent, held valid after resolving doubt in favor of validity.

SCOPE OF A PATENT COVERING A NEW AND NOVEL
COMBINATION.

(Myers v. Hadfield-Penfield Steel Co., 10 F. 56, 58.)

A patent covering a new and novel combination of old elements does not grant a monopoly on any of the elements included in the combination, and the inventor is entitled only to protection on the specific form and arrangement of such elements in their relation to each other, and to a fair range of equivalents within the scope and purposes of the invention.

RECENT TYPICAL AND LEADING DECISIONS
OF THE COURT OF CUSTOMS APPEALS.

Dyes Crystal Violet.

(T. D. 41054) Kuttroff, Pichardt & Co. (Inc.) v. United States
(No. 2495).

The case was tried before Judge Graham. Judge Hatfield delivered the opinion of the court.

This case was an appeal from the judgment of the Board of General Appraisers in a reappraisement of an imported dye known as “Crystal violet, extra." It was entered at a value of $3 per pound and was appraised at $3.75 per pound. The importer appealed to reappraisement, and after extensive hearing, the single general apraiser sustained the entered value. Upon appeal to the Board of General Appraisers found from the evidence that the true value of the merchandise, based upon the American selling price of a similar competitive article produced in the United States was $3.62 per pound, and the judgment of the single general appraiser was modified accordingly.

It was conceded by both parties to the appeal that the imported dye was competitive with a dye producer by an American firm known as "crystal violet, 6 B," which was freely offered for sale and sold at the time of exportation of the imported dye at $2.85 per pound, less 1 per cent for cash within 10 days from the date of sale.

In dyeing wool or cotton yarns, four units of the imported dye accemplished results substantially equal to those accomplished by five units of the competitive domestic dye. The Government claimed that the imported dye was therefore 125 per cent as strong as the domestic. The appellant claimed that neither the imported nor the domestic dye was used commercially in dyeing woolen or cotton yarns, but that its chief use was tinting of paper; that when used in tinting paper substantially equal results were secured with 100 units of the imported dye as were secured with 110 units of the domestic dye; and that therefore the imported dye was only 110 per cent as strong as the domestic. He further claimed that it was not the practice in the United States to sell dyes which were similar except for differences in strength "at prices varying with, dependent upon, or proportionate to such differences."

The questions raised were whether there was legal authority to increase the actual selling price of a domestic dye in finding the market value of a competitive imported dye because the imported dye had greater dyeing strength than the domestic dye. If so, was the addition for strength to be based upon the difference between the dyes when used for the purpose for which they were commercially used or the difference as found in a laboratory in dyeing of articles for which such dyes are not commercially used?

The court was of the opinion that par. 28 of the tariff act of 1922 and subdivision (f) of section 402, Title IV, of the tariff act of 1922 covered the questions involved; that it was the intention of Congress that imported dyes should be subject to duty at 45 per cent ad valorem based upon the American selling price of a similar competitive domestic article. In the absence of evidence of commercial practice to the contrary it was held proper to add, in direct proportion to tinctorial based upon the American selling price of a similar competitive domestic dye such sum as would equalize the obvious difference in value of the .competitive dyes.

In answer to the second question of law, the court decided that any domestic dye could be considered similar or competitive with any imported dye, if, when applied in substantially the same manner to articles or materials for which both dyes were commercially suitable, the imported dye accomplished results substantially equal to those accomplished by the domestic dye.

In the dissenting opinion Judge Smith stated that the principle thus established was that if the Government so elects the dutiable status of an imported dye may be determined by its minor and not its chief use, and that whether the imported dye accomplishes results substantially equal to those accomplished by the domestic product may be determined at the election of the Government by applying the imported and domestic dye to materials for which neither of them is chiefly used.

The Board of United States General Appraisers having fixed the appraised value erroneously, through an obvious error, clerical or other, its judgment was modified accordingly to $3.52. Reported by K. A. Parmelee.