It appears that the earlier application having been allowed became forfeited by the failure to pay the final fee and having subsequently been renewed was permitted to become abandoned. Thereafter the present application was filed. The claim contained in the earlier application was allowed over the references cited therein by a different Primary Examiner from the one refusing the allowance of the present claim. No reasons or references have been cited by the present Examiner different from those advanced by his predecessor. It is therefore contended in behalf of the applicant that the action of the Primary Examiner rejecting the claim of this application should be set aside. While it is well settled that favorable action upon claims by one Examiner is not binding on his successor, such action should be very persuasive upon the latter as to the patentability of such claims. (Ex parte Starr, C. D., 1879, 91; 15 O. G., 1053; ex parte Nealon, C. D., 1897, 174; 81 O. G., 1787; ex parte Fowler, C. D., 1902, 420; 101 O. G., 1833.) Where one Examiner after due consideration of the claims of an application has rendered a favorable decision as to the patentability of such claims, his action should not ordinarily be reversed by a successor, unless the rejection made by the latter is based upon different references or reasons from those which the record shows were advanced by his predecessor. Substantially the same claim as that herein presented was found to be patentable in the earlier application. Upon renewal of that application after forfeiture it was subject to a new examination (Rule 176) and was again adjudged to be patentable. Under these circumstances any doubt as to the patentability of the claim in the new application should have been resolved in the applicant's favor. The petition is granted. EX PARTE MARSHALL. Decided January 20, 1909. 139 O. G., 198. REJECTION AMENDMENT IN MATTERS OF FORM-FINAL REJECTION PROPER. Where after the rejection of a claim the applicant presents another claim differing therefrom only in that it is a more accurate statement of the invention, together with a full argument upon the merits and a request that final action be given, final rejection is in order and should be given. ON PETITION. BUTTER-COOLING CAN. Mr. Albert H. Graves for the applicant. BILLINGS, Assistant Commissioner: This is a petition that the Examiner in charge of the above-entitled case be directed to enter a final rejection. It appears that the Examiner rejected the only claim in this case on certain references for certain reasons. The applicant responded by rewriting this claim "in order to more accurately state applicant's invention." He then presented a long and careful argument why in his opinion the rejection should not be insisted upon. At the end of the argument he stated that if the Examiner still insisted upon rejecting the claim he desired final rejection to be entered. This request the Examiner refused, stating that the rules require further prosecution. It is evident from reading the claim that the new claim differs. from the old one merely in being a more accurate statement of the invention, as alleged by the petitioner. The record shows that the Examiner was of the opinion that the new claim is not patentable in view of the same references for substantially the same reasons as those previously given by him. The record also shows that the issue is clearly formed between the Examiner and the applicant. Had the applicant in submitting the new claim merely requested a final rejection without presenting an argument, the Examiner would have been right in refusing a final rejection; but in view of the fact that the new claim is substantially like the old one and the further fact that a careful argument was presented and the Examiner rested on his first decision, adding no new references, it is very clear that the prosecution of this case could have been made more expeditious by entry of a final rejection, as requested, without in any way violating the rules of practice as interpreted by the decisions in such cases. The petition is granted. STRUBLE. YOUNG AND Townsend v. Sawyer. Decided January 7, 1909. 139 O. G., 729. INTERFERENCE-REOPENING-FURTHER TESTIMONY. A motion to reopen an interference for the purpose of taking further testimony with respect to a blue-print which is in evidence as an exhibit was properly denied where it appeared that the moving party had had an opportunity during the taking of the testimony to adduce all the material evidence concerning the exhibit and it did not appear that the admission of the proposed testimony would in any way modify the decision. APPEAL ON MOTION. RAILWAY SIGNALING. Mr. George E. Cruse for Struble. Mr. George H. Benjamin and Mr. Eugene C. Brown for Young and Townsend. Messrs. Bakewell & Byrnes for Sawyer. BILLINGS, Assistant Commissioner: This is an appeal from the decision of the Examiner of Interferences denying the motion of Young and Townsend to reopen this interference for the purpose of retaking the testimony of the witness Corey. The record shows that after final decision of the Examiner of Interferences in this case it was reopened to permit the taking of the testimony of the witnesses Dodgson and Corey for the purpose of corroborating certain statements of Young and Townsend relative to the disclosure of the invention in issue. After this testimony was incorporated in the record the case was again decided by the Examiner of Interferences, and an appeal from his decision was taken to the Examiners-in-Chief by Young and Townsend. Subsequently Young and Townsend presented a motion that jurisdiction be given to the Examiner of Interferences to hear and determine a motion to reopen the case for the purpose of presenting certain newly-discovered evidence. This motion was transmitted to the Examiner of Interferences, who, after hearing duly had, rendered a decision denying said motion. The present appeal is from the latter decision of the Examiner of Interferences. It appears that Corey is in the employ of the General Electric Company and was subpoenaed to testify in this case. Upon his examination he was shown a blue-print, identified as Exhibit No. 5, and concerning which he testified as to a certain disclosure of the invention made to him by Young and Townsend. He was not positive at the time of his examination whether he had been shown a drawing corresponding to this blue-print and was unable to fix positively the date of the blue-print. In his affidavit filed in support of this motion Corey states that he has since discovered in the files of the General Electric Company, by accident, a blue-print, a copy of which is attached to his affidavit, which he immediately recognized as the original or a substantial copy of a drawing shown to him by S. Marsh Young and Fitzhugh Townsend during the month of May, 1903. He further states that— The aforesaid drawing was shown to me by Young and Townsend in the presence of Mr. F. L. Dodgson, of Rochester, N. Y. He also states that he remembers that— This blue-print is substantially identical with Young and Townsend's exhibit which was introduced into evidence in this interference, which exhibit at the time of my testifying in this interference I was unable to positively identify, either as to date or as to disclosure by Young and Townsend. He says he is now able and willing to supplement his testimony in this interference to positively identify the Young and Townsend Exhibit No. 5 in this interference, which is substantially identical with the blue-print attached to this deposition, as being a substantial reproduction of the drawing shown to him in May, 1903. Exhibit No. 5 referred to is a diagrammatical representation of an electric block system. The Examiner of Interferences states in respect to this exhibit that the operation of the device is not apparent from an inspection of Exhibit No. 5; that it fails to show the generator for the propulsion-current and the manner of connecting the trackway and this generator, as called for by the issue. He further points out the fact that Corey fails to describe the various elements and the manner of operation shown in this exhibit, and that it does not now appear that if called upon to testify his testimony would substantially agree with that given by Young. He also states that, even if Corey's testimony did corroborate the testimony of Young, such testimony would not be sufficient to warrant the award of priority of invention to Young and Townsend. The affidavit of Corey in support of the motion does not show how he will be able to supplement his former testimony or the nature of the supplemental testimony concerning the Young and Townsend disclosure other than by the identification of the blue-print, Exhibit No. 5, referred to, which clearly does not in itself embody all the elements of the issue of this interference. It appears from the affidavit of Young that the drawing alleged to have been made by him and Townsend during the month of April, 1903, was shown to F. B. Corey and others on or about May 22, 1903; but it does not appear from his affidavit to what other persons this drawing was disclosed. Corey, however, states that the drawing was disclosed to Dodgson, who, as before stated, has been called as a witness in this case. It would therefore appear that all material evidence concerning this drawing might have been adduced during the taking of the testimony of Corey and Dodgson. The record of this interference shows that Young and Townsend have been given ample opportunity to present their testimony in this case, and the lack of sufficient excuse upon their part for failure to adduce sufficient evidence concerning the disclosure in connection with Exhibit No. 5 is clearly pointed out in the decision of the Examiner of Interferences and does not need further discussion. In view of these facts since it does not appear that the admission of this testimony would in any way modify the decision now rendered there appears to be no reason for reopening the interference. As stated in French v. Halcomb, (C. D., 1904, 218; 110 O. G., 1727:) Whether or not this evidence now sought to be introduced would affect in any manner the decision of priority previously rendered is extremely doubtful. To reopen a decided case, it must clearly appear that the alleged newly-discovered evidence, if produced, would change or modify the decision, and this does not appear to be true in this case. The decision of the Examiner of Interferences is affirmed. 1. RULES 66-68-PRACTICE. EX PARTE MILLER. Decided January 30, 1909. 139 O. G., 730. Where the amendments or reasons presented by an applicant in response to an action by the Office do not necessitate the citation by the Examiner of additional references or reasons, applicant's right to further prosecution of the application before the Examiner is at an end, and the permission of further amendment is within the discretion of the Office. 2. SAME-SAME. Where the Examiner has held that certain claims are unpatentable and has fully advised the applicant of his reasons for such holding and the latter, after reasonable prosecution of the case, has failed to so amend the case as to necessitate the citation of new references and has been unable by argument to convince the Examiner that he was in error, an issue is reached, and the Examiner is justified in refusing to accept further amendment and in finally rejecting the claims then of record in the case. ON PETITION. ROTARY SAW. Messrs. Jones & Addington and Messrs. Jones, Addington & Ames for the applicant. MOORE, Commissioner: This is a petition from the action of the Primary Examiner, dated July 3, 1908, refusing to enter an amendment containing seven claims, presented April 25, 1908, and finally rejecting the claims at that time of record in the case. The Examiner refused the entry of these claims upon the ground that, in view of the repeated rejections of the claims presented in this case upon the same references and without the presentation of new references or reasons for rejection, the applicant was not entitled, under the provisions of Rule 66, to further amend or prosecute the case before him. The record shows that upon examination of the case the Examiner rejected the claims, in view of certain references. The applicant then amended, limiting the claims and pointing out how the amendments were supposed to avoid the references of record. Thereupon the Examiner cited two additional references, which, in his opinion, anticipated the amended claims. Thereafter the applicant three times amended his claims or substituted new claims, each time pointing out how such amendments, in his opinion, avoided the references, and the Examiner each time rejected all of the claims, in view of the references relied upon in the first and second actions in the case. Subsequently new and broader claims were submitted, which were rejected upon the same references, and a German patent was cited which, in the Examiner's opinion, also anticipated the terms of these 21895-H. Doc. 124, 61-2—3 |