of Appeals of the District of Columbia; Jurisdiction of the Court of Appeals of the District of Columbia Over Practice in the Patent Office; Mandamus, 2; Trade-Marks, 36, 87. CRIMINAL PROSECUTION. See Authority of the Commissioner of Patents, 3. CROSS-EXAMINATION. See Interference, 5; Testimony, 6, 7. DAMAGE. See Trade-Marks, 107, 108. DATE OF EXECUTION. See Oath. DATE OF FILING APPLICATION. See Construction of Statutes; Divisional DATE OF INVENTION. See Interfering Patents. See Appeal to the Court of Appeals of the District of Columbia; Interference, 7; Jurisdiction of the Court of Appeals of the District of Columbia; Jurisdiction of the Court of Appeals of the District of Columbia Over Practice in the Patent Office; Mandamus, 2. DECISIONS OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Suits for Infringement, 1; Trade-Marks, 50, 51. NOT FINAL IN INTERFERENCE CASES-NO APPEAL TO THE SUPREME COURT OF THE UNITED STATES.-The ruling in Frasch v. Moore (C. D., 1908, 609; 137 O. G., 230; 211 U. S., 1) followed to the effect that decisions of the Court of Appeals of the District of Columbia on appeals from the Commissioner of Patents are not appealable to the Supreme Court of the United States. **Johnson v. Mueser, 556. DECISIONS OF THE COURTS. See Trade-Marks, 21, 50, 51. DECISIONS OF THE EXAMINERS OF INTERFERENCES. Dissolve Interference, 10. See Motion to DECISIONS OF THE EXAMINERS-IN-CHIEF. See Amendment, 5; Jurisdiction of the Court of Appeals of the District of Columbia Over Practice in the Patent Office. DECISIONS OF THE PATENT OFFICE TRIBUNALS. See Interference, 27; Suits for Infringement, 1. DECLARATION. See Perjury, 1; Trade-Marks, 85, 86. DECLARATION OF INTERFERENCE. See Interference, 9, 10, 28; Motion to Dissolve Interference, 9, 10; Trade-Marks, 57. DECREE OF THE COURTS. See Trade-Marks, 58. DELAY. See Diligence; Trade-Marks, 90. DELAY IN APPLYING FOR REISSUE. See Appeal to the Court of Appeals of the District of Columbia. DELAY IN BRINGING MOTIONS. See Motion to Amend Preliminary Statement, 4; Motion to Dissolve Interference, 6. DELAY IN FILING APPLICATION. See Diligence; Oath; Priority of Invention, 4; Prior Patents. FACTS SHOWING LACK OF DILIGENCE.-Where an inventor on May 27, 1895, while an employee of the Patent Office, filed application papers without the filing fee, and on June 3, 1896, after his resignation, deposited such filing fee, but the application on August 6, 1897, was stricken from the files as having been filed contrary to the statutes, and a complete formal application was filed September 10, 1897, Held, that the inventor was not diligent in constructively reducing his invention to practice and that he was not entitled to a patent in view of the grant of a patent to another on February 9, 1897, on an application filed March 16, 1896. Ex parte McElroy, 52. DELAY IN PROSECUTING APPLICATION. See Abandonment of Applications, 3, 7, 9, 10. DELAY IN TAKING TESTIMONY. See Interference, 16, 17, 26. DEMURRER. See Trade-Marks, 8, 106, 107. DESCRIPTION. See Examination of Applications, 4; Interference, 16, 17, 20; Specifications, 2; Testimony, 3; Trade-Marks, 49. DESCRIPTIVE TERMS. See Trade-Marks, 1, 6, 11, 12, 13, 23, 29, 31, 32, 33, 46, 52, 65, 76, 83, 88, 93. DESIGNS. See Trade-Marks, 54. PATENTABILITY-MECHANICAL ADVANTAGES IMMATERIAL.-The possession of features having certain mechanical advantages Held to have no bearing upon the question of the patentability of a design. Ex parte Sherman, 170. DILIGENCE. See Affidavits under Rule 75, 1; Delay in Filing Application; Interference, 3, 4; Interfering Patents; Priority of Invention, 1. 1. INTERFERENCE-PRIORITY-GENERAL RULE.-"The question of diligence is one depending upon the facts in each case. What is reasonable time in one case may, under the circumstances, be unreasonable in another. The courts will grant great latitude when the inventor has been delayed by reason of circumstances over which he has no control; but where the delay is caused by the negligence of the inventor, or for a manifest ulterior purpose, no leniency whatever should be extended." *Nelson v. Faucette, 415. 2. SAME DELAY FOR PURPOSE OF DISPOSING OF PRIOR INVENTION.-Where N. conceived the invention of the issue on October 13, 1904, and reduced the same to practice on October 26, 1905, by the filing of his application, and F. conceived the invention on June 30, 1905, and reduced the same to actual practice on July 31, 1905, and it appears that N. did not disclose the invention to anyone, except a few of his friends confidentially, until after the filing of his application, and his excuse for failure to reduce the same to practice was that he had sold a prior invention of the same nature to his employers and was attempting also to sell the invention of the issue to them, that they would likely interfere should he attempt to do anything with it, and that he was waiting to see what claims would be allowed on his prior application, Held that the excuse for the delay is insufficient. *Id. DISCLAIMER. See Abandonment of Invention, 2; Suggested Claims, 2; TradeMarks, 77, 78. DISCLOSURE OF INVENTION. See Continuous Applications; Diligence, 2; Drawings, 2; Interference, 6, 9, 10, 20, 29, 30, 32, 33; Invention, 2; New Matter; Priority of Invention, 3, 5; Reduction to Practice, 6; Reissues, 3; Specifications, 1. INTERFERENCE-EVIDENCE-ALLEGED DISCLOSURE TO DRAFTSMAN-FAILURE TO EMBODY IN DRAWINGS.-Where an inventor alleges that he disclosed an invention to a draftsman for the purpose of having drawings made of the invention disclosed to him and neither the drawings produced by the draftsman nor the machines built therefrom contain the invention, it is evident that either the invention had not been conceived or that it had not been disclosed as claimed. *Peters v. Pike, Jr., 386. DISCRETION OF THE COMMISSIONER OF PATENTS. See Assignments, 2; Authority of the Commissioner of Patents, 1; Priority of Invention, 2; Trade-Marks, 49. DISCRETION OF THE EXAMINER OF INTERFERENCES. ence, 13; Motion to Dissolve Interference, 4, 21, 22. See Interfer DISCRETION OF THE EXAMINER OF TRADE-MARKS. See Trade-Marks, 55, 57, 62. DISMISSAL OF APPEAL. See Interference, 34; Trade-Marks, 90. DISSOLUTION OF INTERFERENCE. See Interference, 6, 9, 10. DIVISIONAL APPLICATIONS. See Access to Pending Applications, 4, 5. INTERFERENCE-PRIORITY-ENTITLED TO DATE OF ORIGINAL AS CONSTRUCTIVE REDUCTION TO PRACTICE.-Where an application involved in interference is a division of an earlier application which had not been abandoned or forfeited at the time such divisional application was filed, Held that the applicant is entitled to a constructive reduction to practice as of the date of the earlier application, even though this earlier application contained no claim to the invention in issue (citing McBerty v. Cook, C. D., 1900, 248; 90 O. G., 2295; Phillips v. Sensenich, C. D., 1908, 391; 134 O. G., 1806, and Lotz v. Kenny, C. D., 1908, 467; 135 O. G., 1801.) Von Recklinghausen v. Dempster, 194. DIVISION OF APPLICATIONS. See Claims, 1. 1. CONSTRUCTION OF CLAIM.-The nature of the claims considered and Held to warrant the Examiner's requirement for division. Ex parte Ramsey, 156. 2. REQUIREMENT AFTER ACTION ON MERITS.-Where the requirement for division was not made until after several actions on the merits, Held that this, being a benefit rather than detriment to the applicant, furnishes no grounds why such a requirement, which is permitted by the rules, should not be adhered to. Id. 3. PRACTICE-PROCESS AND PRODUCT.-Where in respect to a requirement for division between article and process claims an applicant canceled the process claims for the express purpose of obtaining action on the merits and with the statement that process claims would later be reasserted, Held that the Examiner was right in requiring that the process claims be resubmitted, if at all, before action on the merits, although under the circumstances he might have considered the cancelation of the process claims final and refused thereafter to consider any further process claims. Ex parte Scott and Deats, 182. DRAWINGS. See Abandonment of Applications, 1; Appeal to the Examiners-inChief; Disclosure of Invention; Interference, 12; Invention, 2; Motion to Amend Preliminary Statement, 2; Reduction to Practice, 6; Reissues, 3; Trade-Marks, 12. 1. INTERFERENCE-ACCESS TO APPLICATION-OBTAINING COPY OF DRAWING.The fact that claims have been rejected as not patentable over the issue of the interference which has been finally decided does not entitle an applicant to obtain a copy of the drawing of his opponent in the interference. Ex parte Sirl, 12. 2. DEVICE OF GENERAL APPLICATION-SUFFICIENCY.-Where an application fully discloses the construction of the alleged invention which is of general application, the illustration of the invention applied to a particular use should not be required. Ex parte Perkins, 85. DUPLICATION OF PARTS. See Patentability, 6. ELEMENTS. See Infringement, 1; Term of Patent, 2. EMPLOYEE OF THE PATENT OFFICE. See Delay in Filing Application. EMPLOYER AND EMPLOYEE. See Interference, 30. EQUIVALENTS. See Invention, 10, 11. ESSENTIAL FEATURE. See Trade-Marks, 12. ESTOPPEL. See Priority of Invention, 4. EVIDENCE. See Abandonment of Invention, 4; Bill in Equity Under Section 4915, Revised Statutes; Disclosure of Invention; Interference, 1, 2, 3, 5, 6, 12, 16, 17, 22, 24, 29; Invention, 1, 2, 5; Joint Applicants, 2; Motion to Reopen Interference to Take Testimony, 1; Public Use Proceedings, 2; Suits for Infringement, 2; Testimony, 1, 2, 3; TradeMarks, 48. EVIDENCE OF INVENTION. See Construction of Specifications and Patents, 3; Interference, 22, 29; Invention, 1, 2, 5. EXAMINATION OF APPLICATIONS. See Abandonment of Applications, 4; Amendment; Claims; Construction of Claims; Designs; Division of Applications; Drawings, 2; Examiner's Decisions to be Respected by his Successors; Final Rejection of Claims; Labels and Prints; Oath; Reissues; Rejection of Claims; Reopening of Rejected Applications; Specifications; Suggested Claims. 1. CITATION AND COMBINATION OF REFERENCES.-In many cases a mere statement that the claims are rejected on specified references is sufficient, in view of the character of the invention; but in all cases where references are grouped together it should be clearly stated whether the claims are anticipated by each of the references separately or in what manner the references are to be combined. Ex parte Harris, 45. 2. FINAL REJECTION.-Where the claims of an application have been rejected in view of references and the applicant, having had ample opportunity to differentiate his alleged invention from the references of record, if possible, and having failed to do so and also having been unable to convince the Examiner by argument of the patentability of any claim presented and having been advised that the invention disclosed in the application is unpatentable, there is no reason for further continuing the prosecution of the case before the Examiner, and final rejection should be entered, notwithstanding the fact that the claim presented may differ in terms from those previously considered. Ex parte Perry, 49. 3. SECOND REJECTION-RIGHT OF APPEAL.-Where after a thorough discussion of the references the claims have been twice rejected upon the same references, the applicant has a right of appeal from such rejection even though the Examiner did not designate his second rejection a "final rejection." Ex parte McPhail, 72. 4. DESCRIPTION CLEAR-DEVICE THOUGHT TO BE 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 ground that they cover an inoperative device and on all other grounds set forth in Rule 133 which may be applicable. Ex parte Viniello, 111. EXAMINER OF INTERFERENCES. See Interferences, 13, 16; Motion to Amend Preliminary Statement, 1; Motion to Dissolve Interference, 4, 10, 11, 21, 22; Motion to Reopen Interference to Take Testimony, 2, 3; Trade-Marks, 43, 55, 77, 78, 79, 89, 94, 103, 105. EXAMINER OF TRADE-MARKS. See Trade-Marks, 36, 55, 57, 78, 79, 103. EXAMINER'S DECISION TO BE RESPECTED BY HIS SUCCESSORS. PRACTICE-PETITION-PRIOR JUDGMENT OF PRIMARY EXAMINER'S PREDECESSOR.-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 suc cessor 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. (Ex parte Starr, C. D., 1879, 91; 15 O. G., 1053; ex parte Nealon, C. D., 1887, 174; 81 O. G., 1787; ex parte Fowler, C. D., 1902, 420; 101 O. G., 1833.) Ex parte Hay, 18. EXAMINERS-IN-CHIEF. See Rejection of Claims, 2, 3; Suggested Claims, 2. EXPERT TESTIMONY. See Interference, 21; Reduction to Practice, 7. FINAL HEARING. See Interference, 39; Motion to Dissolve Interference, 11. 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. Ex parte Marshall, 19. FIRST AND ORIGINAL INVENTOR. See Interference, 30, 36, 37. PRIORITY TESTIMONY.-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. *Conner v. Dean, 370. FIRST FEE. See Delay in Filing Application. FOREIGN APPLICANT. See Reopening of Rejected Applications, 2; TradeMarks, 85. FOREIGN APPLICATIONS. See Construction of Statutes; Trade-Marks, 72. FOREIGN LANGUAGE. See Trade-Marks, 33. FOREIGN PATENTS. See Motion to Dissolve Interference, 6; Term of Patent, 1. FOREIGN REGISTRATION OF TRADE-MARKS. See Trade-Marks, 72, 85, 86. FORFEITED APPLICATIONS. See Abandonment of Invention, 1. FORMER DECISIONS APPROVED. See Motion to Dissolve Interferences, 11. FORMER DECISIONS CITED. See Affidavits Under Rule 75, 1; Brief, 1; Con cealment of Invention; Continuous Applications; Divisional Applica tions; Examiner's Decisions to be Respected by his Successors; Interference, 3, 20, 21, 38; Invention, 4; Jurisdiction of the Court of Appeals of the District of Columbia; Labels and Prints, 2; Motion to Amend Preliminary Statement, 1; Motion to Dissolve Interference, 3, 11; Motion to Reopen Interference to Take Testimony, 2; Oath; Power of Attorney, 1; Priority of Invention, 4; Reissues, 1, 3; Specifications, 1; Term of Patent, 3; Trade-Marks, 21, 33, 53, 56, 61, 72, 89, 92, 93, 95, 100. FORMER DECISIONS CONSTRUED. See Motion to Dissolve Interference, 3. FORMER DECISIONS DISTINGUISHED. See Continuous Applications; Reissues, 3; Trade-Marks, 95. FORMER DECISIONS FOLLOWED. of the District of Columbia. See Decisions of the Court of Appeals FORMER DECISIONS MODIFIED. See Trade-Marks, 72. 21895-H. Doc. 124, 61-2-38 |