PETITION TO THE COMMISSIONER OF PATENTS—Continued.

errors in the Examiner's action, it is not incumbent upon the Examiner to point out wherein he has failed. Id.

4. RECOMMENDATION BY THE EXAMINERS-IN-CHIEF-CASE REFERRED TO THE PRIMARY EXAMINER.-Where the Examiners-in-Chief award priority to an applicant in interference, but state reasons why they do not regard the issue to be patentable, and the Primary Examiner agrees with the Examiners-in-Chief and rejects the claims, but after amendments and affidavits becomes convinced that the claims are allowable, Held that the case should not be referred to the Commissioner for decision. (Snider v. Bunnell, C. D., 1903, 117; 103 O. G., 890, distinguished.) Ex parte Allen, 92.

5. SAME SAME.-The Primary Examiner is a tribunal created by law to pass upon questions of patentability in the first instance, and his favorable decision will not generally be reviewed. The exception to this rule which is directed in the case of Snider v. Bunnell does not extend to a favorable conclusion of the Primary Examiner based on amendments and affidavits filed subsequent to an adverse recommendation of the Examiners-in-Chief. Id.

POWER OF ATTORNEY.

NOT AC

JOINT APPLICANTS-ALL NOT JOINING IN APPOINTMENT-WHEN CEPTED.-Where three joint applicants executed an application which was subsequently placed in interference with another joint application filed by two of the three joint applicants, Held that a power of attorney filed by the two applicants will not be accepted in the first application, for such action would permit the two applicants to conduct both sides of the controversy, to the exclusion of the third joint applicant. Er parte Hinkson, Hey, and McConahy, 342.

PRACTICE IN THE COURTS. See Mandamus, 3.

PRELIMINARY STATEMENTS. See Access to Pending Applications; Amendment to Preliminary Statements; Interference, 30, 68, 85, 86, 109, 110, 126, 159, 170, 171, 172, 173, 304, 333.

1. AMENDMENT-FAILURE ΤΟ

DISCOVER FACTS

SOONER-EXCUSE

INSUFFICIENT.- -Where in support of a motion to amend a preliminary statement it is said by F. that when preparing to take testimony he learned of an earlier disclosure than that alleged in his statement, but no good reason is shown for not discovering the fact sooner, Held that the amendment should not be permitted. Fowler v. Boyce v. Temple and Goodrum, 12.

2. SAME-NO NEWLY-DISCOVERED FACTS-MISTAKE OF LAW.-Where a party wishes to amend his preliminary statement, setting up an earlier reduction to practice, and it appears that he has discovered no new facts, but upon consultation with his attorney has obtained a better idea of what in law constitutes a reduction to practice, Held that the amendment should not be permitted. He should consult his attorney when preparing his statement. Id.

3. CARE NECESSARY IN PREPARATION.-Applicants should exercise the same care in preparing their preliminary statements that they exercise in discovering evidence after they learn the dates alleged by their opponents. Id.

4. AMENDMENT-FACTS KNOWN BY APPLICANT-LACK OF CARE.-Where a party wishes to amend his statement and include dates furnished to his attorney, but which were not included, and who deliberately two days after furnishing this information to his attorney swore to another

PRELIMINARY STATEMENTS-Continued

date, Held that either the party or his attorney was guilty of gross carelessness, and the amendment will not be permitted. Jones v. Linn, 203.

5. SAME-CArelessness-NO EXCUSE THAT ATTORNEY WAS ENGAGED ON OTHER WORK.-An affidavit of an attorney that he was engaged upon other pressing work which demanded his attention cannot excuse carelessness in preparing a preliminary statement. Id.

6. SAME. Where the invention is a highly-complicated mechanism, one of the elements of which is "item-wheels," and from the showing it appears that the preliminary statement was carefully drawn to include a machine made by C. having item-wheels of a peculiar construction, but later it is found that the term item-wheels" is not limited to the second structure made by C., but apparently covers an earlier machine made by him, Held that as no testimony has been taken C. should be permitted to amend his preliminary statement to include his earlier machine. Carroll v. Stahlberg, 331.

7. MOTION TO AMEND REASONS SHOWN IN TESTIMONY-CONSIDERATION, OF MOTION DEFERRED UNTIL FINAL HEARING.-Where a motion is made to amend a preliminary statement after testimony is taken and it is considered that the testimony shows that a bona fide mistake was made in the date set up and that the testimony also sufficiently excuses the presumptive inadvertence and neglect, Held that as a consideration of the testimony is necessary in order to rightly determine whether or not the amended preliminary statement should be received this consideration should be postponed until final hearing. Bauer v. Crone, 336.

8. FILED AFTER EXPIRATION OF TIME-REASONABLE Diligence SHOWN-STATEMENT ACCEPTED.-Where it appears that an applicant was reasonably diligent in his endeavors to obtain the data necessary to make a complete preliminary statement and that it was not possible to file a complete statement until nine days after the time set had expired, Held that the statement, though filed late, should be accepted. Charlton v. Sheldon, 362.

9. MOTION TO AMEND AFTER OPPONENT'S TESTIMONY HAS BEEN TAKENNOT GRANTED EXCEPT UPON CLEAR SHOWING.-Held that after the testimony of one of the parties to an interference has been taken, relying upon the dates alleged by the other party, an amendment to the preliminary statement changing those dates will not be permitted without a most clear and satisfactory showing. Bliss v. Creveling, 381. 10. INTERFERENCE-APPARENTLY INCONSISTENT ALLEGATIONS OBJECTIONABLE— EXPLANATION REQUIRED.-A preliminary statement is inconsistent and misleading which alleges that drawings and a device were made before the date assigned for actual conception, and such statement should not have been made without some explanation. *Robinson v. Copeland, 664.

PRIOR APPLICATIONS. See Interference, 282.

PRIOR PATENTS. See Interference, 239.

PRIORITY OF INVENTION. See Appeal to the Commissioner of Patents, 2;

Delay in Filing Application; Interference, 14, 15, 18, 19, 21, 22, 23, 25, 27, 28, 33, 36, 41, 43, 44, 47, 52, 53, 54, 55, 56, 73, 74, 76, 78, 79, 80, 81, 82, 83, 84, 87, 95, 99, 100, 101, 102, 103, 104, 105, 112, 114, 131, 134, 137, 138, 151, 152, 153, 156, 160, 166, 176, 179, 180, 181, 182, 190, 195, 196, 197, 204,

PRIORITY OF INVENTION-Continued.

205, 209, 217, 218, 238, 242, 244, 248, 252, 254, 255, 256, 260, 261, 268, 271, 272. 278, 274, 275, 276, 277, 278, 279, 280, 285, 286, 289, 290, 291, 301, 302, 306, 312, 315, 316, 317, 321, 322, 323, 324, 331, 338, 340; Testimony, 13. DECISION AFFIRMED.-Where R. is the first to conceive and the last to reduce to practice and is lacking in diligence and C. during R.'s inactivity enters the field and reduces to practice, Held that C. is the first inventor and entitled to the award of priority of invention. Decision of Commissioner of Patents affirmed. (Ante, 257; 111 O. G., 579.) son v. Copeland, 664.

PRIVILEGED STATEMENTS. See Argument.

PROCESS.

See Interference, 166, 339; Invention, 6, 22, 23, 24.

*Robin

PROCESS AND APPARATUS. See Construction of Rules; Division of Applications, 15, 16, 17, 18, 36; Withdrawal of Allowed Cases from Issue. PROCESS AND PRODUCT. See Amendments, 14; Division of Application, 5; Interference, 166, 339.

PROCESS CLAIMS. See Claims, 3.

PROSECUTION OF AN APPLICATION.

See Assignees, 5, 6, 7.

PROTECTION OF PATENTS IN CANAL ZONE. See Panama Canal Zone. PUBLIC USE AND SALE.

1. DECISION OF COURT-REJECTION.-Where in considering an application for patent the court has ruled that the evidence in possession of the Office showed public use of the invention for more than two years before the filing date, Held that the Office is justified in rejecting a subsequent application by the same party claiming the same device on the ground of public use. Ex parte Tournier, 36.

2. TESTIMONY NOT OVERCOME BY AFFIDAVITS.-Where public use is shown by testimony regularly taken, Held that its effect cannot be overcome by

ex parte affidavits, but only by evidence taken in the regular way. Id. PUBLIC-USE PROCEEDINGS. See Interference, 26, 27, 127, 330. RECORD OF ASSIGNMENT. See Assignments, 6, 7.

RECORDS OF THE PATENT OFFICE. See Foreign Patents, 1; Interference, 270.

REDUCTION TO PRACTICE.

See Designs, 10, 11; Interference, 12, 13, 14, 18,

19, 20, 24, 32, 38, 52, 53, 55, 56, 74, 78, 83, 84, 85, 92, 96, 134, 136, 139, 140, 141, 149, 150, 151, 152, 153, 156, 157, 178, 179, 182, 195, 197, 199, 206, 207, 208, 209, 240, 243, 248, 249, 250, 252, 253, 254, 268, 272, 274, 275, 276, 278, 279, 280, 281, 284, 285, 303, 304, 306, 307, 308, 309, 310, 311, 315, 316, 317, 338, 339; Preliminary Statements, 2; Priority of Invention.

1. UNEXPLAINED DELAY.-Where there is doubt whether a device made operated successfully and constituted a reduction to practice, Held that long and unexplained delay in manufacturing the device or applying for a patent warrants resolving the doubt against the maker of the device. Greenwood v. Dover, 66.

2. SIMPLE DEVICE-TEST UNNECESSARY.-A common cloth-cased horse-collar stuffed with cotton is one of those devices which are so simple and their purpose and efficiency so obvious that the complete construction of one of a size and form intended for and capable of practical use is to be regarded as a sufficient reduction to practice without actual use or test. *Couch v. Barnett, 650.

3. PRIORITY-MODEL-NOT REDUCTION TO PRACTICE.-Held that a mere model, though complete in detail and illustrative of an operative construction. has the effect of establishing only a conception of the invention and is not a reduction to practice. Ocumpaugh v. Norton, 207.

REDUCTION TO PRACTICE-Continued.

4. INTERFERENCE-NEGLECT OR CONCEALMENT-UNSATISFACTORY EXPERIMENT.— Where a machine embodying the invention of the issue was constructed and found to be operative to perform the function for which it was intended, but it appears that the machine was subsequently changed by another inventor, who had been placed in charge of the machine, by substituting a device of his own for a device originally placed on the machine, and it appears that the original device was never again restored to that machine or placed upon any other machine for practical use, and no machine with the original device has ever been manufactured for actual use or sale, and a period of nearly two years was allowed to elapse after the alleged reduction to practice before the application for a patent was filed, and in the meantime the inventor, so far as the record shows, seemed to have done nothing toward the practical development of the alleged invention, Held that all this, whether it be regarded as neglect or concealment, would tend to show that what was done by the inventor originally was rather an unsatisfactory experiment than a successful reduction to practice. *Hillard v. Brooks, 658.

5. SAME EVIDENCE OF OPERATION.-The uncorroborated testimony of a party that he operated the machine and satisfied himself of its practical mechanism is not sufficient to establish reduction to practice. Paul v. Hess, 478.

6. SAME SAME.-The testimony of a party that a machine was submitted to the officers of the company by which he was employed is not evidence of successful operation and does not afford corroboration of his own testimony that the machine had been successfully operated. Id. REFERENCES. See Abandoned Applications, 8; Interference, 70, 71, 168; Rejection of Cases, 1, 2, 5, 7, 10, 11; Rejection of Claims, 1, 2. EXPLANATION-RULE 66-PRACTICE.-Rule 66 merely requires that an Examiner in citing references shall, if the pertinence of the same is not obvious, clearly explain the grounds upon which he has rejected the claims. It is necessary only that the Examiner's position be made plain on the record, so that the applicant may intelligently amend his claim or present his case on appeal. The rule does not require that the Examiner shall "meet" every argument advanced by an applicant. Ex parte Stier, 156.

REFERENCE TO THE COMMISSIONER OF PATENTS. See Interference, 191, 193.

REFERENCE TO THE EXAMINERS-IN-CHIEF. See Interference, 192.
REFUNDMENT OF APPEAL FEES. See Appeal Fees.
REFUNDMENT OF FEES.

1. DUPLICATE TRADE-MARK APPLICATION-MISTAKE.-Where a party after securing registration of a trade-mark files a second application for the registration of the same thing and the Office refuses registration, Held that he is not entitled to the return of the fee in the second case on the ground of mistake. Ex parte Colchester, 490.

2. MISTAKE IN FILING APPLICATION.-The mistake which will warrant the return of the fee in a trade-mark application is not a mistake in concluding to file the application, but only a mistake in paying too much or when not required by law. Id.

REHEARING. See Appeal to the Court of Appeals of the District of Colum bia, 1; Interference, 117, 124;

REISSUE APPLICATIONS. See Certificate of Correction; Interference, 174,

175.

1. REJECTION—APPEAL TO EXAMINERS-IN-CHIEF.-Where the Examiner rejects the claims of a reissue application on the ground that the application for reissue was not filed within two years after the grant of the patent, Held that the remedy is by appeal to the Examiners-in-Chief and not by petition. Ex parte Powers, 53.

2. APPLICATION COMPLETE—ABSTRACT OF TITLE.-A reissue application cannot be entered as a complete application until the certified abstract of title called for in Rule 86 is furnished.

Id.

3. NO NEW EXAMINATION NECESSARY-REPORT OF EXAMINER ACCEPTED.— Where in preparing a reissue application the original claims of the patent were not included through inadvertence, Held they may, upon a satisfactory showing, be inserted after decision by the Examiners-inChief if no new examination is rendered necessary. Ex parte Gilmer, 102.

REJECTED CASES. See Abandoned Applications, 15; Abandonment, 4, 5; Amendments, 10, 14, 15, 18; Appeal to the Examiners-in-Chief, 3, 8, 9, 10 ; Claims, 3, 4; Examination of Applications, 3, 4, 5, 6; Reopening of Rejected Cases.

1. REOPENING FINALLY-REJECTED CASES-SHOWING OF GOOD REASONS.-Final rejection of the claims is intended to close the consideration of the case upon the merits, and the applicant is not entitled to demand that it be reopened thereafter to consider amendments except upon a verified showing of good and sufficient reasons why the amendment was not sooner presented. Ex parte Novotny, 57.

2. FINAL REJECTION-FORMAL OBJECTIONS-AMENDMENTS.-Where certain formal objections are made and the claims are finally rejected, Held that the applicant may amend to avoid the formal objections, but cannot make amendments presenting new claims or affecting the merits. Ex parte Paige, 59.

REJECTION OF CASES. See Abandoned Applications, 3; Designs, 7, 8, 25; Division of Application, 13, 20, 21, 22, 23; Public Use and Sale, 1. 1. FINAL-EXPLANATION OF REFERENCES.-Where the Examiner rejects the claims upon references and the applicant twice asks him to explain why the device shown in one of those references is operative and the Examiner has fully and carefully explained the reference and his position in regard to it, Held that he was justified in finally rejecting the claims. Ex parte Leilich, 21.

2. EXAMINATION-PRACTICE-PERPETUAL-MOTION MACHINE-CITATION OF REFENCES.-Where claim is made to a perpetual-motion machine, Held that the Examiner may properly reject the claim on the ground of inoperativeness without making a search through and citing the prior art. Ex parte Payne, 42.

3. SAME-SAME-SAME-NOT NECESSARY TO MAKE SEARCH.-As an ordinary rule all reasons for rejection should be given; but an exception may be made properly where the alleged invention is based on principles in direct conflict with the fundamental laws of science and mechanics. Id. 4. SAME-SAME-SAME—I NOPERATIVENESS.--The objection of inoperativeness on the ground that the machine is a perpetual-motion machine does not stand upon the same footing as an objection of inoperativeness based upon some mechanical defect in the device. Id.