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For the reasons above stated I am of the opinion that the trademark of the application so nearly resembles the registered mark of Theobald & Oppenheimer Company as to be likely to cause confusion in the mind of the public and that these marks are used on goods of the same descriptive properties. It is therefore held that the mark of the applicant is not entitled to registration.

The decision of the Examiner of Trade-Marks is affirmed.


Decidcd May 13, 1909.

143 0. G., 276.


A motion to take testimony to establish that the opposing party has no right to make the claims corresponding to the issue was properly denied where it appears that the proposed testimony would be largely that of experts as to the meaning of the issue, (citing Pym v. Hadaway, C. D., 1907, 189; 129 0. G., 480.)



Messrs. Steuart & Steuart for Ricketts.

Mr. Augustus B. Stoughton and Mr. James A. Richmond for Ambruster and Beck.

BILLINGS, Assistant Commissioner:

This is an appeal by Ricketts from the decision of the Examiner of Interferences denying his motion for permission to take testimony 'to show that the apparatus described in the application of Ambruster and Beck is incapable of carrying out the functions set forth in the issue.

Ricketts is under an order to show cause why judgment on the record should not be rendered against him. A motion to dissolve, on the ground that the apparatus of Ambruster and Beck is incapable of performing all the functions specified in the claims, was denied by the Primary Examiner. A motion by Ricketts to have the case set down for final hearing under Rule 130 was granted by the Examiner of Interferences. At this hearing Ricketts evidently intends to urge that his opponents have no right to make claims corresponding to the issue and wishes to take testimony in support of his contention. The Examiner of Interferences denied the motion to take testimony, on the ground that a satisfactory showing had not been made and that it was not clear just what evidence Ricketts proposed to introduce or that the evidence, if presented, would be of such a character as to be admissible.

In support of the motion were filed the affidavits of two experts, Keilholtz and Wagner. It is not alleged that Ambruster and Beck's device would not operate according to the description in their specification. On page 3 of the Wagner affidavit is the following statement:

The Examiner continues :

“There is nothing inconsistent or impossible in the operation of Ambruster & Beck's apparatus as described by them, nor is there anything in the record to prove that such operation is impossible.”

This statement agrees perfectly with my understanding of the Ambruster & Beck specification. I understand that there is no contention that the system of Ambruster & Beck is not an operative system, as and for the purposes described, and aside from the counts at issue in this interference. But if the Ambruster & Beck device is operated so as to perform the purposes and functions described in the specification, it will not operate to perform the purposes and functions of the terms of the issue.

In his brief appellant states:

From this admission it is clear that the controversy has narrowed itself down to a question of whether the words


reversing the generating means," as used in the issue, can be correctly applied in a true electrical sense to the structure of Ambruster & Beck.

It thus appears that the contention is not that the Ambruster and Beck device is inoperative, but rather that it will not operate as called for in the issue when said issue is construed as Ricketts contends it should be construed. It appears that the proposed testimony would be largely that of experts as to the meaning of the issue. As stated in the case of Pym v. Hadaway, (C. D., 1907, 189; 129 O. G., 480 :)

The Office cannot delegate the interpretation of the legal character of the claims of an application to experts employed by the opposing parties.

Moreover, the nature of the testimony and what it is proposed to prove thereby is not set forth with sufficient particularity. In his affidavit Keilholtz states that he constructed certain apparatus and tested it; but he does not describe the apparatus in detail nor the result of the tests.

It is believed that such a case is not made out as will warrant the taking of testimony.

The decision of the Examiner of Interferences is affirmed.


Decided June 25, 1909.

144 0. G., 276.


INOPERATIVE-ACTION ON MERITS. Where the specification of an application clearly describes the device sought to be patented and the Examiner is of the opinion that the device disclosed is inoperative, he should not refuse action on the merits until its inoperativeness is demonstrated, but he should reject the claims on the grounds that they cover an inoperative device and on all other grounds


OF AMENDMENT. Where the Examiner rejects the claims of an application on the ground that they cover an inoperative device and requires a demonstration of the utility thereof and within the year allowed by law for responsive action applicant files an argument attempting to show that the device would operate as set forth in the specification, Held that the application is not

abandoned for lack of proper prosecution. ON PETITION.


Mr. T. F. Bourne for the applicant.

MOORE, Commissioner:

This is a petition from the action of the Primary Examiner holding the application to have become abandoned. It is prayed that said decision be set aside and that the Examiner be instructed to consider the case fully upon its merits.

In the first action in this case the Examiner rejected the claims on the ground that the device was inoperative—that is, that it would not effect the purpose or result set out in the specification—and required that applicant demonstrate the utility of his device before any action would be given on the merits of the claims. In response thereto applicant filed an argument attempting to show that the device would operate as set forth. The Examiner considered this to be an insufficient response and held the application abandoned for lack of proper prosecution.

It is believed that the Examiner's action was not in accordance with the practice of the Office. It is not claimed that the specification was in any sense obscure, and in view of this fact, in accordance with the decision of ex parte Stocker, (C. D., 1902, 53; 98 0. G., 1705) the Examiner should not have suspended action on the merits, but should have rejected the claims. While the Examiner's first action is stated to be a rejection for lack of utility, it is noted that in the next action, in response to the applicant's argument endeavoring to show the operativeness of the device, the Examiner did not again reject the claims, but held that the arguments filed were not a sufficient response, virtually refusing any action whatever on the merits until the requirement for a demonstration of the operativeness of the device had been complied with.

Such a refusal to act upon the merits of the case and forcing a review of the question at issue between applicant and the Examiner by petition to the Commissioner places the Commissioner in the position of passing final judgment upon the merits of the applicant's case, as no right of appeal to the Court of Appeals of the District of Columbia exists in a case of this kind, except as provided by sections 4909, 4910, and 4911, Revised Statutes. (In re Fullagar, post, 270; 138 0. G., 259.) Upon the question of applicant's right to a patent he has, under these statutes, the right of appeal to the Examiners-in-Chief, to the Commissioner, and to the Court of Appeals of the District of Columbia. The Examiner being of the opinion that the device was inoperative, he should have rejected the claims for this reason and for any other of the reasons stated in Rule 133 which were applicable. (Ex parte Smith, 60 MS. D., 425; ex parte Payne, C. D., 1904, 42; 108 0. G., 1049.) A review of the Examiner's decision upon the question of the inoperativeness of the device might then have been had upon appeals from such decision, as provided by the statutes.

As far as the Examiner's action went applicant's response thereto was clearly sufficient, as it was an argument traversing the Examiner's position, and in any event he was entitled to a final rejection, with the right of appeal; but inasmuch as appeals should not be taken piecemeal an examination of the art should have been made at the same time and the claims should have been rejected thereon, if such rejection was justified.

The decision of the Examiner holding the application to have become abandoned by failure to properly respond to the Office action of January 13, 1908, is set aside, and the Examiner is directed to give a full action upon the merits of the case.



Decided May 14, 1909.

144 0. G., 561.


ENCE-ACCESS TO PARENT CASE-RULE 105. Where a divisional application is involved in an interference and the applicant desires to secure the benefit of the date of the parent application without exposing the entire ca se, he is entitled to do so by filing under

Rule 105 a certified copy of so much of the parent application as relates to the invention involved in the interference, withholding from the in:

spection of the opposing party the remaining portion thereof. 2. SAME-SAME-SAME-OBJECTION TO SUFFICIENCY OF CERTIFIED COPY.

Where certified copies are filed under Rule 105 and timely objection is not made to the sufficiency thereof, objection thereto upon this ground is considered as waived.



Mr. J. Odell Fowler for Dilg and Fowler.
Mr. Lewis J. Doolittle for Shaver.

MOORE, Commissioner:

This case comes up on a rehearing of Shaver's petition for permission to have access to and copies of the application of Dilg and Fowler, No. 260,435, of which the application of Dilg and Fowler involved in this interference is alleged to be a division, which petition was denied by me on April 16, 1909.

This interference was declared July 23, 1907. In the preliminary statement of Dilg and Fowler they alleged that the application involved in this interference was a division of their application No. 260,435, and on August 21, 1907, they made a motion to shift the burden of proof, for the reason that the filing date of application No. 260,435 was prior to the filing date of Shaver's application. On August 28, 1907, a stipulation was made between the attorney for Dilg and Fowler and the attorney for Shaver that the attorney for Shaver might inspect and obtain copies of that portion of application No. 260,435 which related to the cake of soap disclosed in Dilg and Fowler's application No. 350,065, which is involved in this interference. Before a hearing was had on the motion to shift the burden of proof Shaver filed a motion that he be granted access to and permission to obtain copies of Dilg and Fowler's parent application. This motion was granted by me on September 28, 1907, and in my decision it was stated that had the applicants promptly filed certified copies under Rule 105 of that part of the parent case relating to the cake of soap access would have been denied, following the practice set forth in Reece v. Fenwick, (C. D., 1901, 73; 96 O. G., 643.) OnOctober 5, 1907, a rehearing asked for by Dilg and Fowler was denied, for the reason that no proper ground therefor was alleged; but it was stated that as the record showed that Dilg and Fowler were attempting to comply with Rule 105 and with the practice outlined in Reece v. Fenwick the order of October 2, 1907, was suspended pending the final determination of the sufficiency of the copies, and upon such determination the order granting access should be considered to be vacated. Later on a certified copy of that part of the parent

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