The patents to Elliott and to Butterfield show that it is old to secure a rubber sole to one side of a leather sole by vulcanization. The surface of the leather sole is roughened, india-rubber cement is applied thereto, and the rubber sole is then applied and subjected to heat and pressure. This combined leather and rubber sole is then applied to the upper and welt, as in Elliott, or the rubber sole is applied to the leather sole of an otherwise completely made shoe, as in the patent to Butterfield.

The invention covered by the appealed claims differs from these in that the outer sole is made completely of rubber and is vulcanized upon the inner sole as well as upon the welt and the edge of the upper. The English patent discloses a shoe which has an outer rubber sole secured to the upper and inner sole by the process of vulcanization. The shoe of the English patent has no welt.

As welts are old and well known, an instance of which is shown in the patent to West, it does not amount to invention to secure a welt to the upper and insole of the English patent, nor is it invention to secure the outer rubber sole to the inner leather sole of the English patent by the old way of securing rubber to leather, as disclosed by Elliott and Butterfield.

The alleged process of claim 3 is not a true process. It is but another way of stating the construction of the article. The various steps set forth are well known and their results are well known. This claim is anticipated by the English patent, taken in connection with either the patent to Elliott or Butterfield, for the reasons given above. Besides this, as stated by the Examiners-in-Chief—

the method claim is, on its face, nothing more than the necessary or obvious mode of making the shoe of the application, and is therefore not patentable. (Ex parte Trevette, C. D., 1901, 170; 97 O. G., 1173.)

The decision of the Examiners-in-Chief is affirmed.

EX PARTE MARCONI.

Decided December 2, 1903.

(108 O. G., 796.)

1. ABANDONED APPLICATION-DELAY NOT UNAVOIDABLE.

Where there was a delay of more than sixteen months in acting upon a case and it is said that for the first seven months the attorneys were waiting for an opportunity to consult the inventor and during the balance of the time were waiting for instructions from him and no reason appears why he did not give the instructions except that he was busy, Held that the delay was not unavoidable and the case is abandoned.

2. SAME-SAME-CONSULTATION BETWEEN ATTORNEY AND INVENTOR.

Where it is said that intelligent action could not be taken by the attorneys without consulting the inventor, but no attempt was made to consult him for several months, and after being consulted he did not furnish the information required or make a real effort to do so, Held that the delay was not unavoidable.

3. SAME-SAME-MEANING OF "UNAVOIDABLE."

The word unavoidable in the statute means more than that to act would have been inconvenient, and the mere plea that the inventor was busy upon other matters cannot be accepted as showing that the delay was unavoidable.

ON PETITION.

APPARATUS FOR WIRELESS TELEGRAPHY.

Messrs. Betts, Betts, Sheffield & Betts and Mr. T. E. Robertson for the applicant.

ALLEN, Commissioner:

This is a petition for a ruling that the above-entitled application is not abandoned notwithstanding the fact that no action was taken in prosecution thereof for more than one year. It is contended that the delay in prosecution was unavoidable.

The last Office action was taken June 3, 1902, and no reply was received until this petition was filed on October 12, 1903.

The facts relied upon as showing that the delay was unavoidable are set forth in two affidavits by one of the attorneys. It is said that the Examiner's letter raised certain technical questions which Marconi himself could best answer and that

it was decided to await his arrival in this country before submitting the questions raised by the Examiner's letter to him.

It is said, further, that Marconi did not, in fact, come to this country until January 27, 1903, at which time the papers in the case were submitted to him, and he then gave the attorneys some information, but not enough to enable them to make a completely responsive action in the case. It is said that Marconi found it necessary to consult

certain records in London before he could furnish all of the information necessary. Marconi then left this country for Europe, and thereafter the attorneys wrote two letters to his company asking for information and the papers. On April 11, 1903, they received a letter from the company saying that the "affidavits" had been despatched; but they were never received. Two more letters were written to the company, and on July 3 a cablegram was received saying that Marconi was ill and that the papers could not be forwarded On August 21 the papers were received, but were accompanied by no remarks or explanation by Marconi. Marconi was in New York from September 28 to October 3, and the information desired was then available.

at once.

This showing attempts to excuse the failure of the attorneys to act by the statement that it was necessary to consult the inventor; but no effort whatever was made to consult the inventor for seven months after the Office, action. He was consulted in January, 1903, however, and assuming that he was the one then called upon to act there is no satisfactory explanation why he did not furnish the information desired. The suggestion is made that he was very busy upon other matters which he seems to have regarded as more important; but this is not a sufficient excuse for inaction. It does not appear that he was any more busy then than at any other time. It appears merely that he was a busy man and by choice devoted his attention to other matters instead of this. The cablegram as to Marconi's illness was after the application was abandoned, and therefore it does not appear that the illness had anything to do with the failure to act within the year.

After the Examiner had answered this petition the attorney presented a supplemental affidavit, attempting to explain the inaction for the first seven months of the year fixed by law for action. It was there said:

Mr. Marconi was not, unless for very brief periods of time, in a position to take up the amendment of his application and could not be visited by his attorneys.

It is said that in July, 1902, Marconi went to Italy, and a few weeks later to Russia, and expected to return to England and then go to Canada in September, 1902. He did not, in fact, reach Canada until December, 1902, and arrived in this country on January 27, 1903. The attorneys were awaiting his arrival in this country, and say:

It was always, however, represented to us that he was coming to this country

soon.

The movements of Marconi before coming to this country might be pertinent if they were what prevented the attorneys from communicating with him; but that does not appear to have been the case. No effort seems to have been made to communicate with him. It seems clear that the consultation might have been conducted by correspondence, and that, in fact, seems to have been the intention after the interview of January 27, 1903.

The year allowed by law for action is ample, and it is only under very exceptional circumstances that a delay for a longer period is justified. The mere plea that the inventor was busy upon other matters and did not have time to devote to the case under consideration cannot be accepted as a showing that the delay for such a long time was unavoidable. The word "unavoidable" in the statute means more than that to act would have been inconvenient.

HI. Doc. 426, 58-3- -3

Since the delay in this case is attempted to be explained on the ground that Marconi did not furnish the necessary information, it cannot be held that the delay was unavoidable in the absence of a showing by him of good reasons why he did not furnish the information.

The petition is denied.

HOEGH v. GORDON.

Decided December 3, 1903.

(108 O. G., 797.)

1. INTERFERENCE-STAY OF PROCEEDINGS-SEPARATE MOTION NECESSARY. Where after judgment by the Examiner of Interferences certain motions are made and appeal taken thereon within the limit of appeal from the judgment, Held that neither the motions nor the appeal operated as a stay, since Rule 123 specifically requires a separate motion for a stay of proceedings.

2. JURISDICTION OF EXAMINER OF INTERFERENCES-MOTION TO RESTORE JURIS

DICTION.

Where the limit of appeal from his judgment has expired, the jurisdiction of the Examiner of Interferences to reconsider the matter can be restored only by a motion before the Commissioner for that purpose.

APPEAL ON MOTION.

TOOL-SUPPORT.

Application of Hans J. Hoegh. Application of Charles Gordon.

Messrs. Brown & Seward for Hoegh.

Messrs. Benedict & Morsell for Gordon.

ALLEN, Commissioner:

This is an appeal by Gordon from a decision of the Examiner of Interferences granting a motion by Hoegh to vacate a record judgment rendered in favor of Gordon and to set new times for taking testimony.

In behalf of Gordon it is contended that the Examiner of Interferences did not have jurisdiction to determine the motion and also that due service of notice of the motion was not made.

The records show that Hoegh failed to take his testimony within the time set for that purpose. At the expiration of the time for taking testimony, on motion by Gordon under Rule 119 an order was issued that judgment should be rendered against Hoegh unless good and sufficient cause should be shown within a certain time specified why such action should not be taken.

No showing was made, and on August 10, 1903, judgment of priority of invention was rendered in favor of Gordon, limit of appeal

being set to expire August 31, 1903. On August 15 a motion to set aside the judgment and set new times for taking testimony was filed by Hoegh, which motion was denied on August 22, 1903, on the ground that sufficient cause for such action had not been shown. The limit of appeal from this decision was set to expire August 28, 1903. This motion was not accompanied either by a motion to extend the limit of appeal from the decision of August 10, 1903, awarding priority of invention in favor of Gordon, or to suspend proceedings pending determination of the motion.

Rule 123 provides in part as follows:

The filing of motions will not operate as a stay of proceedings in any case. To effect this, motion should be made before the tribunal having jurisdiction of the interference, who will, sufficient grounds appearing therefor, order a suspension of the interference pending the determination of such motion.

The provisions of this rule are explicit and clear. No motion to suspend proceedings having been made, the time within which to appeal continued to run.

On August 27, 1903, an appeal was taken from the decision of August 22. It thus appears that the decision on the motion was rendered and appeal taken within the limit set for appeal from the decision awarding priority of invention.

A motion was made on August 29, 1903, before the Examiner of Interferences for rehearing of his decision rendered August 22, 1903, which was dismissed because due notice had not been served. Gordon filed proof of service on September 9, 1903, and renewed his motion for rehearing. The Examiner of Interferences granted this motion and set the case down for hearing and rendered his decision on September 16, from which decision this appeal was taken. The Examiner of Interferences having assumed jurisdiction, Hoegh, on September 14, 1903, withdrew the appeal which he had taken to the Commissioner.

As stated above, Rule 123 provides that the mere "filing of motions will not operate as a stay of proceedings in any case." It was evidently assumed by the Examiner of Interferences that the appeal from his decision of August 22, which was filed August 27, four days before the expiration of the limit of appeal on the question of priority, operated as a stay. In this he was mistaken, for so to hold would make one rule for such cases as this and another rule for cases which because of the condition of work before the Examiner of Interferences would prevent the rendering of a decision and appeal being taken therefrom within the time originally set for appeal.

It is deemed better in the interest of uniform practice to require that motions be filed as provided in Rules 122 and 123 should a suspension of proceedings be desired pending the determination of any lawful motion.