matter, we would be inclined to rule that the decision appealed from was a mere interlocutory decision from which no appeal lies to this court. In view, however, of the peculiar circumstances of this case, we will disregard matter of form, and proceed to a consideration of the merits of the question involved.

The Trade-Mark Act of February 20, 1905, (33 Stats. at L., 724, chap. 592; U. S. Comp. Stat. Supp., 1905, p. 667,) provided, inter alia

that the owner of a trade-mark * * may obtain registration for such trade-mark by complying with the following requirements: First, by filing in the Patent Office an application therefor in writing,

a description of the trade-mark itself.

specifying

By the act of May 4, 1906, (34 Stats. at L., 168, chap. 2081,) the provision for a description of the trade-mark was amended so as to read:

A description of the trade-mark itself, only when needed to express colors not shown in the drawing.

It is upon this amendment of 1906 that the Commissioner bases his decision. In it he says:

It is understood that the purpose of this amendment is to make the registration definite by limiting it to the disclosure in the drawing, leaving the question of what is an immaterial variation in the mark to the courts. It thus appears that the object of the amended statute is to prevent just such an apparently indefinite extension of the scope of the registered mark by a generic description as the petitioners contend for.

In other words, it is the opinion of the Commissioner that the law contemplates the registration of the mark actually used, and that the applicant's opinion as to the scope of the mark and his rights thereunder form no necessary part of the application.

This is a matter fairly within the discretion of the Commissioner. In such a case the court will not interfere unless there has been a gross abuse of discretion. No such abuse is here shown. No substantial right of appellant is involved, since the Commissioner has not denied him registration of his trade-mark, but has merely declined to permit him to encumber his application with unnecessary and ambiguous matter. There is no claim that the descriptive matter insisted upon by appellant is

needed to express colors not shown on the drawings.

The Commissioner insists that such matter is not only not needed at all, but that its inclusion in the petition would be misleading. We are not prepared to say that he is wrong.

The decision of the Commissioner of Patents is therefore affirmed, and the clerk of this court will certify this opinion to the Commissioner of Patents, according to law.

[Court of Appeals of the District of Columbia.]

CONNER. DEAN.

Decided January 5, 1909.

142 O. G., 856; 32 App. D. C., 375.

1. INTERFERENCE ACTUAL REDUCTION TO PRACTICE-MAKING OF DEVICE SUFFICIENT.

The making of a sample ringing-key for a four-party telephone-line Held to constitute a reduction to practice, as the operativeness of the device would be apparent to any one skilled in the art, there being little in the key that was new, and several witnesses who examined it carefully having pronounced the invention a success.

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2. SAME TESTIMONY-INCLUSION OF IRRELEVANT AND IMMATERIAL MATTER. Before proceeding to a consideration of the case we deem it proper to express our disapprobation of the conduct of counsel in filling the record with immaterial, irrelevant, and useless matter. This practice, which is altogether too general in patent cases, entails needless expense upon clients and much needless labor upon the tribunals of the Patent Office as well as this court, and should be discontinued. Objections can, and should, be stated in a few words and ‘vain repetition' of testimony avoided.” 3. SAME PRIORITY-ORIGINALITY.

The testimony reviewed and Held in view of all the circumstances of the case to show that C. was the original inventor of the invention in issue and that D. derived his knowledge thereof from him.

Mr. Lynn Williams, Mr. C. A. Brown, Mr. J. C. Pennie, and Mr. C. J. O'Neill for the appellant.

Mr. C. B. Camp and Mr. B. R. Johnson for the appellee.

ROBB, J.:

This is an appeal from three concurrent decisions of the Patent Office tribunals in an interference proceeding, in which priority of invention was awarded Dean, the nominal appellee.

The real parties in interest are the Stromberg-Carlson Telephone Manufacturing Company, Conner's assignee, and the Kellogg Switchboard and Supply Company, Dean's assignee.

The issue is expressed in one count and is as follows:

In an operator's ringing-key, the combination with a suitable supportingframe, of a plurality of vertically-reciprocating plungers and a plurality of switch-springs carried by said frame, each of said plungers having three distinct positions, a normal position, an intermediate position, and an operative position, said plungers being adapted to actuate said springs when in the lastmentioned position to put ringing-current upon the line, and means for releasing any one of said plungers from the intermediate position when any other of said plungers is moved to the operative position.

We adopt the following description of the invention by the Examiners-in-Chief:

The invention which forms the subject-matter of this controversy is a fourparty-line key for telephone-switchboards. In instruments of this character

it has long been possible to call up any of the four parties without ringing up the remaining parties, distinct and separate plungers being provided for each party. But occasion frequently arises where the party called fails to respond and it is necessary for the operator to call him again. For this purpose it is desirable to have in a key of this character some indication of the party last called. The construction common to both parties is a framework in which is mounted a series of plungers corresponding to the number of parties on the line, which plungers are normally spring-pressed upward through an escutcheon-plate and provided with finger-pieces for depression individually. Each plunger is provided with a wedge which is adapted to enter between and spread apart a pair of springs, which springs are thereby forced into contact with other springs arranged outside thereof to complete the circuit and ring the bell of the corresponding subscriber. In order to effect the indication referred to above a catch is provided common to all the plungers and adapted to lock them in a position intermediate to that in which contact is had between the circuit-closing springs, hereinafter referred to as the ringing position, and the fully-raised position. It is thus seen that each plunger has three distinct positions, the normal position, the operative or ringing position, and the intermediate position in which the plunger is partially depressed but no contact is made in the circuit. In each case also the catch which holds the respective plungers in their depressed position is such that on depressing the plunger it releases that previously depressed so that but one plunger is held depressed at a time. The key of the issue is new only in certain particulars. Before this invention a so-called master-key had been employed for this purpose in which a series of plungers, such as those in issue, was employed, each plunger being adapted to operate a pair of springs on being depressed. A catch common to the series was provided to hold the plunger last operated in its depressed position until another plunger was operated. In this key the plungers were locked down by the catch with the springs in position to close the circuit, but the ringing-current was only sent when an additional switch was closed by the operation of a ringing-lever. It appears that in this master-key it was not essential that the plunger be locked in its lowermost position but only that it be locked sufficiently depressed to hold the springs in contact. In such a construction the position of the key last depressed gives an indication, just as does the key of this issue, but such a sigual is without importance since to ring again the last subscriber called it is only necessary to operate the ringing-lever. Such a master-key may also be said to have three positions, but functionally it has but two, since in the locked position as well as in the fully-depressed position the springs operated by the plunger are in contact. The gist of the present invention is a key in which the plungers have three positions in the intermediate of which the springs are out of contact with each other and in the fully-depressed position the plunger rings the subscriber without the necessity of the use of the ringing-lever. While in the master-key, as before pointed out, it was not necessary when the operator desired to call again the subscriber last rung to know which plunger had been depressed, it is apparent that in the key of the issue such knowledge is absolutely essential.

It will be observed that the essence of this invention consists in the indicating feature.

Before proceeding to a consideration of the case we deem it proper to express our disapprobation of the conduct of counsel in filling the record with immaterial, irrelevant, and useless matter. This practice, which is altogether too general in patent cases, entails needless

expense upon clients and much needless labor upon the tribunals of the Patent Office as well as this court, and should be discontinued. Objections can, and should, be stated in a few words and "vain repetition" of testimony avoided.

The record discloses that at the time the testimony was taken the Kellogg Company had been absorbed by the Bell Telephone Company, and that the Western Electric Company was the manufacturing department of the Bell Company. The interference originally contained a third party, one Manson, against whom judgment was entered because in his preliminary statement the date of March 17, 1904, was given as his date of invention. This date was subsequent to the filing date of either of the other parties.

Conner is a telephone engineer and at the time he claims to have made this invention was employed by the Western Electric Company. He was then, as now, highly skilled in the art. Some time in the fall of 1898 he was directed to design a four-party-line key and soon thereafter did design such a key. Thereupon a full-sized sample-key was manufactured in accordance with his design. The freehand drawing, from which the sample-key was made, was introduced in evidence. This drawing bears date of October 9, 1898, and is witnessed by Conner's superior, McQuarrie. It is entitled "Combined Listening & 4 party line Ringing Key," and contains the notation. "Pushing keys to notch does not ring." The sketch shows a key in longitudinal section and detailed views. The cam at the left of the device is marked "No. 6 Cam," and below the cam appears the words "All contacts on the key platinum." Conner testified that the sketch was complete in every particular before the original key was made. He also stated that the terms "No. 6 Cam" and "All contacts on the key platinum" show that the cam was a listening and not a ringing cam because the listening-cam of the Western Electric Company was known as "No. 6," and that platinum contacts were not used with ringing-cams. This latter testimony was given no weight by the tribunals of the Patent Office because not supplemented by other corroborating testimony notwithstanding that it was not disputed by the appellee who could easily have disproved it had it been untrue. Conner submitted the sample-key to McBerty who was in charge of the patent department. McBerty concluded that the key was not of sufficient merit to justify its being patented. Subsequently the key was sent to the New York factory of the company where it was redesigned. It is worthy of notice that the redesigned key contained an indicating feature, which, however, differed radically from that claimed by Conner to have been present in his key. Conner was asked why he did not himself apply for a patent when McBerty declined to do so, and he replied he believed it would jeopardize his

position with the company to make an application for himself. Being further pressed for reasons he stated:

Because in this particular instance, although Mr. McBerty was in charge of the patent department, any employee who made any attempt to carry on any kind of business operation outside of the company was questioned and brought to task by parties entirely different from Mr. McBerty, who would, in a case of this kind, have used their own judgment as to whether the key was of importance or not, rather than take the word of Mr. McBerty. As long as I remained with the Western Electric Company I was subject to Mr. McBerty's orders, and what I could have gotten out of this matter would hardly have been worth having any friction with him.

In March, 1900, Conner was sent by the company to Antwerp where he remained in charge of the company's office for two years and ten months, or until January, 1903, when he returned to this country and reëntered the home office at Chicago. On September 10, 1903, he left the Western Electric Company, and became the chief engineer of the Stromberg-Carlson Company. He testified that he was exceedingly busy for some time in organizing the engineering department of that company which caused him to delay the filing of the application in interference until May 19, 1904. He further testified that he had been careful to retain the original sketch from which the sample-key was made, and that he had no idea of abandoning his invention. After Conner became the chief engineer of the Stromberg-Carlson Company he designed a key for that company, which did not contain the indicating feature of the issue. In explanation of this apparent inconsistency he says the indicating-key is designed for equiping central offices in residence districts where practically all subscribers are on a party-line basis, and that the Stromberg-Carlson Company and its customers being on the directline basis, experience had demonstrated that a party-line ringingkey slowed down the traffic

on account of the fact that the operator had of necessity to select a specific button each time she rang, whether the call was for a party-line subscriber or a direct-line subscriber.

We will first determine the important question whether or not the sample-key made from Conner's design drawing embodied the issue, and in reviewing the testimony of the witnesses on that question two important facts must be kept in mind, namely, that the indicating feature claimed by Conner to have been present in the sample-key was new, and that the witnesses who saw the key and testified concerning it were highly skilled in the art and, therefore, likely to recognize and remember so novel a feature.

Charles W. Boet helt, who when he testified was employed by the Dean Company, was one of the mechanics who made the original. Conner key. This key he made from the Conner sketch which was handed him by his foreman Mr. Spies. He identified the sketch as