It is significant that, as pointed out by the Examiner of Inter-
ferences, on the labels for the ends of the boxes the name of the ex-
change dees not appear in full, but has been abbreviated to '^O. K.
Fruit Exchange," and this name appears under the words " Selling
agents." The name of the association appears in full on the label
under the words "Grown and packed by," and the labels all bear
some further name as identifying the particular association by
which the goods were packed. While, as above stated, the labels
which are designed for the ends of the boxes bear the name " O. K.
Fruit Exchange," which is stated by one of the witnesses to be an
abbreviation for Ontario-Cucamonga Fruit Exchange, the wrappers
which are placed around the individual pieces of fruit do not bear
the name of the exchange at all, though they bear the trade-mark
in question and the name of the particidar association.
Each of the associations, therefore, having the right to use the
mark during its membership in the exchange and the latter being
merely a selling agent for these associations, it cannot be held that
the latter has such ownership in the mark as will entitle it to regis-
tration.
The decision of the Examiner of Interferences is affirmed.
Cross v. RrsBY.
Decided October 21, 1912.
184 O. G., 552.
Application — ^Amendment Filed Dubing the Interference.
Where an amendment is filed to an application in interference whick
purports to put this application in condition for another interference, the
Primary Examiner should give the amendment consideration sufl3cient to
determine whether such is the case, and if it is should request Jurisdic-
tion of the application in order to enter the proposed amendment: other-
wise the amendment should be refused entry untU the termination of the
Interference.
On Petition,
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DECISIONS OF THE COMMISSIONER OF PATENTS. 849
AFPAlKATtrS FOB USE IN THE MANUFACTUBE OT QAfil.
Messrs. Barthel <& Barthel for Cross.
Mr. A. B. Stoughton for Rusby.
BnxiNGS, First Assistant Commissioner:
This is a petition by Rusby that he be permitted to file the amend-
ment, accompanying his petition, consisting of two claims copied
from a patent to Cross to his application now involved in the above-
entitled interference and that the claims of said amendment be
added as issues to this interference, or that a new interference be
declared with said claims as counts of the issue in which the testi-
mony taken in the present interference may be used.
The patent to Cross, No. 974,555, mentioned above, issued Novem-
ber 1, 1910, upon an application filed July 6, 1909, and is not in-
volved in the present interference.
The applications involved in the present interference are those of
Rusby, filed October 12, 1909, and of Cross, filed March 12, 1910.
The petitioner contends that the said patent to Cross should not
have issued without an interference with the Rusby application in-
volved in the present interference; also that the claims of his amend-
ment are not patentably different from the issue of this interference.
The present interference is awaiting decision upon the question
of priority of invention on appeal from the decision of the Ex-
aminers-in-Chief, and the claims of the amendment cannot be added
as counts thereto. It may be possible, however, that petitioner is
entitled to an interference with the Cross patent. This is a matter
for consideration by the Primary Examiner in the first instance and
involves the questions of whether petitioner can make the claims in
his pending application and whether they are patentable to him.
The amendment presented is remanded to the Primary Examiner,
who is directed to consider the same to the extent of determining
whether petitioner is entitled to an interference with the Cross
patent Should he decide that petitioner is entitled to such inter-
ference, he will request jurisdiction of the Rusby application for the
purpose of entering the amendment and will declare the interference
without awaiting the determination of the present interference.
{Moore v. Hewitt v. Potter^ C. D., 1905, 89; 115 O. G., 509; ex parte
Neidich, C. D., 1911, 198; 172 O. G., 551.) If, on the other hand,
he holds that petitioner is not entitled to said interference, he will
so inform petitioner, but will not enter the amendment until the
determination of the present interference. (Rule 109.)
Should such interference be declared, the question of whether the
testimony taken in the present interference may be used therein is
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350 DECISIONS OF THE COMMISSIONEB OF PATENTS.
one for stipulation by the parties or for decision on a motion under
Rule 157.
The petition is granted to the extent indicated.
Ex PARTE Goldsmith and Whiting,
D€<Hd€d September SO, 19 1 2.
184 O. G., 553.
Petition — Amendment Under Rule 78.
Where aii ameDdment is filed under Rule 78 which the Examine reports
contains a claim broader in scope than those allowed and the entry of
which would necessitate a reopening of the case for further prosecution.
Held that the amendment will not be admitted.
On Petition.
STBOPPING-MACHINB.
Mr. Edgar S. Wheehr for the applicants.
Tennant, Assistant Commissioner:
This is a petition for rehearing of applicants' petition to amend
the case by the insertion of a claim under the provisions of Rule 78.
The Examiner made an adverse recommendation as to the entry of
this claim, stating that —
the claim is of broader scope than those allowed and the admission thereof
would necessitate a re^xa mi nation; therefore tJie case would have to be with-
drawn from issue and reopened for further prosecution.
The applicants contend that the only just ground on which the
Examiner can refuse to enter the proposed amendment is that the
claim is not patentable. Reference is made to the decision in ex
parte Fleming, (C. D., 1907, 51; 126 O. G., 2590,) and the following
is quoted therefrom as supporting this contention:
A petition for the entry of an amendment presented under Rule 78 after the
allowance of the application will be denied where the amendment includes
claims which the Examiner in his report upon the petition states are not
patentable.
Counsel for the applicants, however, failed to include in his quo-
tation the following statement from the same decision:
Entry of claims under Rule 78 Is not a matter of right, but a privilege ac-
corded ai>plicants where the claims are found allowable by the Examiner upon
such consideration of the case as he may deem proper. He should not be
forced to consider the question of patentability upoh a petition of this kind.
The time for amendment in this case as a matter of right has expired.
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DECISIONS OF THE COMMISSIONEB OF PATENTS. 351
Rule 68 requires that in amending an applicant must clearly point
out all the patentable novelty which he thinks the case presents in
view of the state of the art disclosed by the references cited or the
objections made, and where, as in this case, after amendment the
application is allowed by the Examiner the applicants have no reason
to assume that they are entitled as a matter of right to an examina^
tion of the patentability of claims broader than those to which they
have previously limited their case.
In view of these facts the petition mvst he denied.
In the report of the Examiner upon this petition he states that
the claim is not, in his opinion, patentable over the references of rec»
ord. This constitutes an additional reason for denying the petition^
Webber v. Wood.
Decided October 11, 191B.
184 O. G., 553.
IVTEBFERENCE — REOPENING.
An interference will not be reopened for the parpose of taking testimony
on tbe question of originality where it appears that the party whose testis
mony it is desired to take was available at the time the original testimony
was taken and his relation to the parties to the interference known to the
moving party.
On Motion.
CABLEWAT.
Messrs. Linthieum, Belt cf Fuller for Webber.
Messrs. Binney, Mastick ct Ogden for Wood.
Ten N A NT, Assistant Commissioner:
This is a motion by Webber that the interference be remanded to
the Examiner of Interferences for the purpose of reopening the case
to admit further testimony.
It is alleged that the testimony is newly discovered and would tend
to show that the party Wood was not the original inventor, but de-
rived his knowledge of the invention from one MacFarlin, to whom
Webber had disclosed the invention.
The record in this case shows that at the time Webber took his
testimony he knew of the relations between MacFarlin and Wood^
and he testified that he disclosed the invention to MacFarlin. It
further shows that the contention of derivation of the invention by
Wood from Webber through MacFarlin was made before the Ex-t
wniner of Interferences and again before the Examiners-in-Chief.
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S52 DECISIONS OF THE COMMISSIONER OF PATENTS.
Webber did not call MacFariin as a witness, although he was
available and was not called by Wood, and his desire to do so at
this time seems to arise from the conviction that he is less favorable
to Wood and more favorable to Webber than was supposed at the
time testimony was taken.
These circumstances are not such as to justify a reopening of the
â– case for further testimony. Webber has had his opportunity to
prove his case, and his knowledge of MacFarlin's relations to himself
and Wood was sufficient at that time at least to have put him upon
inquiry as to the additional facts which he contends he has sinoe
discovered.
The motion is denied.
McIntosh v. Riley,
Decided October 24, 1912.
184 O. G., 801.
tlttebfebbirce — motion fob dissolution — difference of meanings in thb
Claims.
A motion to dissolve on the ground that the claims have different mean-
ings in the application of the respective parties. Held properly refuspd
transmission where the only statement in support of the ground of this
motion is that the counts will not read upon the device of the moving party.
Appeal on Motion.
INTEBNAL-COMBUSTION ENGINE,
Messrs. Calver & Calmer for Mcintosh.
Messrs. Baldwin <& Wight for Riley.
^ooRE, Commissioner:
This is an appeal by Mcintosh from the decision of the Examiner
t)f Interferences denying the transmission of his motion to dissolve
the interference as to the third ground thereof, which alleges that
counts 2 and 4 of the issue have different meanings as applied to the
applications of the respective parties.
Transmission of the motion as to this ground was denied by the
Examiner of Interferences for the reason that it is indefinite in not
pointing out wherein the alleged differences in meaning exist.
An examination of the motion paper shows that the only state-
liient in support of this ground of the motion is that the counts will
not read upon the device of the moving party. It is well settled that
to justify transmission of a motion brought upon this ground facts
«nust be alleged indicating something more than a possible lack of
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DECISIONS OF THE COMMISSIONER OF PATENTS. 868
ri^t of one of the parties to make the claims. This case is similar
to those of Lizotte v. Neuherth, C. D., 1906, 370; 124 O. G., 1842,
and of Cushman v. Edwards^ C. D., 1907, 129; 128 O. G., 456. The
decision in the latter case states :
The present motion was denied transmission on the ^ronnd that it is not
accompanied by a sufficient statement of facts supporting the allegations of dif-
ferences in the meanings of the claims in the different cases. The provision in
Rule 122 for dissolution upon the ground of differ^ce in the meaning of claims
was placed there to cover a clean-cut class of cases which theoretical considera-
tions show may arise, but which, in fact, are of very rare occurrence. To
justify transmission of a motion brought upon this ground, facts must be alleged
indicating something more than a possible lack of right upon the part of one
or the other of the parties to use the language of the claim in issue. The lack
of right to make claims, so far as this question is properly reviewable on mo>
tion, may be raised by a motion entitled in appropriate terms. To permit the
same question to be raised in a motion entitled as one upon another ground
would result in useless multiplication of records and in confusion of issues.
No error is found in the decision of the Examiner of Interferences^
and it is accordingly affirmed.
Ex PARTE BeTTENDORF.
Decided October 29, 1912.
184 O. a, 801.
Designs — ^Appucation — Pbosecution.
The rules relating to applications for mechanical patents apply to appli-
cations for patents for designs, and an amendment presented after a proper
final rejection which did not fall within the provisions of Kule 68 wan
properly refused admission.
On Petition.
SIDE FRAME OF CAB-TBUCKB.
Mr. Frank D. Thomason for the applicant
MooRE, Commissioner:
This is a petition that the Examiner be directed to enter an
amendment.
In the first Office action the Examiner held the design to be not
patentable for certain reasons stated. After an argument this action
was repeated, and after further argument the appliication was finally
rejected on September 6, 1910. The application at that time con-
tained the conventional claim " For an ornamental design, as shown.'*
On September 5, 1911, applicant presented an amendment erasing
that claim and presenting a claim describing the design. On Sep-
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354 DECISIONS OF THE COMMISSIONER OF PATENTS.
tember 30, 1911, the Examiner refused to enter this amendment, since
the ease was under final rejection and no good reason had been
presented for reopening the same. The present petition was filed
September 28, 1912.
The final rejection was not premature, since the Examiner's posi-
tion had been fuUy stated. The rules relating to other applicatfons
for patent apply to applications for patents for designs. The
amendment proposed does not fall within the provisions of Kule 6S,
and no reason whatever is seen for reopening the case.
The petition is denied.
Ex PARTE MyOATT.
Decided November i, 1912.
1S4 O. G., SOI.
1. Application— Prosecution — Holding op Abandonment— Reviewable on
Petition.
Where the Examiner holds that an appHcation is abandoned for lack
of responsive prosecutioa. Held that his action is reviewable on petition
to the Commissibner and not on appeal to the Examiners-in-Ohief.
2. Same — Same — Final Rejection.
Where the Examiner rejected certain claims in view of references, in-
eluding a prior patent of the applicant's, but did not explain the grounds
of his rejection and in response to an amendment stated that the claims
of the application cover the same Invention as that covered by applicant's
prior patent, and therefore the allowance of the application would lend
to double patenting, Held that a final rejection in this action was pre-
mature.
On Petition.
pressed-olass inclostjbb.
Messrs. Brocl'j Beeken and Smith for the applicant*
Moore, Commissioner:
This is a petition that the Examiner be directed to answer an
appeal by applicant to the Examiners-in-Chief, which was filed
October 1. 1912, that the final rejection given be held to be an action
on the merits, raising a new ground of rejection, and that the case be
held not abandoned for non-responsive action.
The Examiner finally rejected the claims on September 9, 1911.
On August 9, 1912. applicant filed an argument traversing the pro-
priety of the final rejection and attempting to point out why the
claims were patentable over the references cited. No other action
was taken within the year, and on September 11, 1912, the Examiner
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MOIBIOKS OF THE COdOOSSIOirBR OF PATENTS. 855
held th« application abandoned for lack of proper response to the
final rejection. The holding that the application was abandoned
was repeated on September -20, 1912, and again on September 2T,
1&12, in response to communications from the applicant traversing
the Examiner's action. An appeal to the Examiners-in-Chief from
the holding of abandonment was filed on October 2, 1912. It is thii
appeal which the applicant wants answered and forwarded.
It is pointed out that Rule 133 specifies " the ground of abandon-
ment " as one of the grounds of rejection from which appeal lies to
the Examiners-in-Chief, and it is also argued that since the decision
of the court of appeals in the case of in re SeMen (C. D., 1911, 806;
164 O. G., 741; 36 App. D. C, 428) appeals from such a holding
should go in the first instance to the Bxaminers-in-Chief.
In the Seldfen case the court did not state that appeals from the
holding that the application is abandoned should go to the
Examiners-in-Chief, and it has been the uniform practice for the
Commissioner to consider this question in person. In the absence of
a ruling by the court that it is erroneous I find no reason for depart-
ing from it. Rule 133 in mentioning abandonment as a ground of
rejection has reference to abandonment of the invention, no* aban-
donment of the application. The distinction is a clear one and well
established. The request that the Examiner be instructed to forward
the appeal on the question of abandonment will therefore be denied.
Applicant traverses the propriety of the final rejection on the
ground that the letter in which it was given raised a new ground of
rejection. The first action in the case was a requirement for division.
The second rejected the remaining claims on references, three being
cited, one of which was applicant's prior Patent No. 939,062. It was
merely stated that " these references meet the claims fully and com-
pletely.'' The next rejection was the final rejection and was based
upon two of the three patents first cited, including again applicant's
prior Patent No. 939,062. The Examiner then stated, " applicant's
remarks are not understood," and proceeded to explain that the
ground of his rejection on the Mygatt patent was that the claims
of the two cases covered the same invention, that the allowance of
this case would therefore lead to double patenting, and that the
relation of the filing dates of the two cases was consequently imma-
terial.
It is true, as pointed out by the Examiner, that in entering a final
rejection there is no impropriety in arguing the applicability of the
references of record anew, providing no new grounds of rejection
are cited. In this instance, however, I am of the opinion that the
additional stat«nents made by the Examiner in connection with the
final rejection set forth for the first time the exact ground upon
which the claims were held unpatentable. In using an applicant's
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856 DECISIONS OF THB COMMISSIOKEB OF PATENTS.
prior patent as a reference against him a rejection may or may not
be based upon the ground of double pat^iting. It must be held,
therefore, that the final rejection was premature, and this conclusion
is strengthened by the fact that the final rejection was given on the
second action on the merits and then only under the practice out-
lined in ex parte MiUer^ (C. D., 1909, 23; 139 O. G.^ 730,) applicant
having in the meantime amended one of the two clamis by inserting
the word " cylindrical " to describe the form of the skirt.
In view of the finding that final rejection in this case was pre-
mature it is unnecessary to decide whether the Examiner was correct
in holding the case abandoned for lack of proper response thereto.
The response made to the final rejection was clearly a sufficient
response to a rejection upon new grounds. The Examiner is there-
fore directed to consider the application on its merits in view of
the argument filed August 10, 1912.
The petition is granted to the extent indicated*
Ex PARTE Myers.
Decided Octoher 18, 1912.
184 O. O., 802.
1, Application — Prosbcution — Pinal Rejection.
Where, after repeated consideration of the application, claims were pre-
sented substantially the same as those previously presented, Held that a
final rejection was not premature.
2. Same — Same — ^Amendment (Containing New Matteb.
The fact that an amendment contains new matter is no ground for refus-
ing to enter it. It should be entered, a requirement made to eliminate the
new matter, and any claims based thereon rejected.
On Petition,
FLTING-MACHINB.
Mr. George Francis Myers pro se.
Billings, First Assistant Commissioner:
This is a petition that the Examiner be directed to set aside his
iSnal rejection and enter and act on the proposed amendments filed
June 22 and July 30, 1912.
On March 26, 1912, the Examiner made a very full action in the
case, to which the proposed amendment of June 22, 1912, was the
reply. The Examiner held that this amendment so far as the claims
submitted were concerned did not present new subject-matter or
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DECISI0H8 OF THB COMMISSIOl^B OF PATENTS. • 357
require the citation of any new reference. He accordingly refuse<i
its admission and finally rejected the claims of record, following the
practice set forth in ex parte Miller ^ (C. D., 1909, 23 ; 139 O. G., 730.)
The proposed amendment of July 30, 1912, merely related to minor
features of the amendment of June 22, 1912.
It appears from the Examiner's statement and from statements
made by the applicant at the hearing that the Examiner's objection
to the claims in the proposed amendment is that they have no basia
in the disclosure of the application as filed and that this same ground
of rejection has been urged against a number of claims already in the
case, and it appears, further, that the substance of the proposed claima
is present in certain of the claims now on file and under final reject
tion, of which claim 41 may be cited as an example. It appears^
therefore, that the Examiner was right in holding that the proposed
amendment, so far as the claims are concerned, did not present any
new subject-matter and that the final rejection was therefore properly
entered. Applicant's remedy is by appeal to the Examiners-in-Chiet
on such of the claims as he is convinced are properly based on the
structure which he had disclosed and are patentable over the refer-^
ences cited.
The amendment so far as the change in the specification is con-^
oemed appears to be unobjectionable, since it is intended to over-^
come certain formal objections made by the Examiner. The fact
that an amendment to the specification contains new matter does not
justify the refusal to enter it. It should be entered and a require^
ment made to eliminate the new matter and a rejection entered
against any claims based thereon. If applicant will present a sepa-^
rate amendment containing only the proposed changes in the specie
fication intended to overcome the Examiner's objections thereto, it
will be entered. Ordinarily substitute specifications should not be
filed except when required by the Office. The one submitted in this
case, however, covers only about three pages and cannot involve any
extended reexamination to determine its sufficiency.
The petition is denied.
Fowler v. Uptborapf,
Decided Octoher 29, 1912.
184 O. G., 803.
Iktebfebencb — Motion to Dissolve — Right to Make the Culius and Diffeb^
BNCE IN Meanings— Not Dependent Upon Pbiob Art.
The fact that a motion to dissolve an interference on the ground that
one of the parties has no right to make the claims and that the counts have
different meanings in the applications of the respective parties has been
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B58 • inK)ISIO]fB OF THE OOMMISSIOITEB OF PATBKTS.
transmitted to the Primary Examiner constitntes no reason for trans-
mitting the motion on the ground that the issue is not patentable, where
this ground of the motion is indefinite, since the question of the right to
malce the claims and of difference of meanings of the counts is not
dependent upon the prior art.
Appeal on Motion.
8AFETT-TBEA0.
Mr. Jonathan O. Fowler pro se,
Mr, George Cooper Dean for Uptegraff.
Billings, First Assistant Commissioner:
This is an appeal by Fowler from the refusal of the Examiner of
Interferences to transmit a motion to dissolve in so far as it alleges
the non-patentability of the issue in view of the prior art.
Fowler moved to dissolve the interference on the grounds that
there had been informality in declaring the interference, that the
issue is not patentable, that Uptegraff has no right to make claims