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In the case cited, where the counts against which the motion was directed were identical with the counts of prior interferences in which opportunity was afforded to urge the same grounds for dissolution, it is stated :
Thullen clearly had the right therefore to urge the non-patentability of claims corresponding to all the counts in the earlier interferences, and he is now estopped from moving dissolution upon this ground for the reasons stated in the decision in the case of Townsend v. Ehret v. Young v. Strubel, (C. D., 1908, 281; 137 O. G., 1484.) The motion therefore should not have been transmitted as to the first ground.
The practice set forth in this decision is believed to be correct and necessary to expedite the final disposition of cases in this Office. The same reasons exist for the application of the doctrine of res ad judicata in this Office as in the courts. Colburn and Washburn do not contend that these grounds of their motion might not have been included in their former motion to dissolve, nor do they attempt to offer any excuse for their failure to so include them.
The Examiner of Interferences also refused to transmit the ground of the motion to dissolve which alleges such irregularities in the declaration of the interference as will preclude a proper determination of the question of priority. The irregularity is stated in the motion to consistin an alleged redeclaration of an interference which has been finally determined by a decision dissolving the interference and from which decision neither party appealed.
The Examiner of Interferences properly refused to transmit this part of the motion, on the ground that the question raised relates to the merits and is not one of form. It is noted, moreover, that this question is urged as a ground why Hitchcock has no right to make the claims of the issue, which ground of the motion was transmitted by the Examiner of Interferences.
In their brief filed at the hearing Colburn and Washburn urged six additional grounds of irregularity. It is found upon examination, however, that these grounds allege irregularities in the prosecution of the Hitchcock application and not informalities in the declaration of interference. These grounds do not properly relate to irregularity in the declaration of the interference, but to the right of Hitchcock to make the claims, and most, if not all, of them were also urged under the latter ground of the motion. In any event these points alleged to constitute irregularity in the prosecution of the interference and raised for the first time in the brief filed at the hearing can receive no consideration in an appeal from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve, which motion alleges no such irregularity in declaring the interference.
The Examiner of Interferences transmitted the portion of the motion to dissolve which alleges that Hitchcock's reissue application is not for the same invention as his patent in so far as it urges that the reissue application as amended is for a different invention than said application as filed. He also transmitted ground 2 of the motion, which urges that the subject matter of the issue is res adjudicata by reason of the former dissolution, on the ground that Hitchcock's device was inoperative, and from which decision no appeal was taken. Hitchcock appeals from the transmission of these grounds of the motion to dissolve.
In the case of Pickard v. Ashton and Curtis (C. D., 1908, 241; 137 0. G., 977) it is stated :
the question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.
No such abuse of discretion is found to exist in the present case. The decision of the Examiner of Interferences is affirmed.
EX PARTE TILLMAN.
Decided July 10, 1909.
145 0. G., 1023.
OATH-DELAY IN FILING APPLICATION-AFFIDAVITS TO SHOW DATE OF EXECU
TION. Affidavits tending to show that the oath in an application was executed later than it purported to be executed Held insufficient to excuse filing a substitute oath under the practice laid down in ex parte Branna, (C. D., 1901, 232; 97 0. G., 2533,) but rather to constitute an additional reason for requiring a new oath.
Messrs. C. A. Snow & Co. for the applicant.
TENNANT, Assistant Commissioner:
This is a petition that the Examiner be directed to waive the requirement of a new oath. The record of this application shows that on May 16, 1908, the applicant was advised that the case was in condition for allowance, except for the requirement of a new oath made in the first Office action under the practice announced in ex parte Branna, (C. D., 1901, 232; 97 O. G., 2533.)
The oath accompanying the original application purports to have been executed March 17, 1906. The application was not filed until May 9, 1906. It is stated in certain affidavits presented at the hearing that the date of execution on the original oath was manifestly erroneous, for the reason that the application papers were not forwarded to the inventor until March 27, 1906, which is ten days after the date appearing upon the oath. It is stated that the application was presumably not executed until April 17, 1906, and it is urged that the application was filed with reasonable diligence thereafter. This argument instead of being effective as a reason for accepting the oath originally filed manifestly constitutes an additional reason for requiring a new oath.
The delay in filing the application after its execution was unduly long, even if the oath were executed April 17, 1906, as now contended, and for the reasons stated in ex parte Branna, supra, a new oath was properly required. Furthermore, there appears to be no sufficient reason why a new oath was not filed in compliance with the Examiner's requirement within the year following that action. The affidavit filed by counsel on May 14, 1909, not being properly responsive to the Examiner's action, it follows that the case is abandoned under the provisions of section 4894 of the Revised Statutes.
The petition is denied.
EX PARTE SIEBER & TRUSSELL MANUFACTURING COMPANY.
Decided June 26, 1909.
145 0. G., 1249.
A mark the distinguishing feature of which consists of the word “Government,” for loose-leaf binders, refused registration on the ground that, in association with the words“ Registered in the United States Patent Office" or an abbreviation thereof, which the law requires to be affixed to the mark to give notice of the registration, it would tend to mislead the public into the belief that the goods to which the mark is affixed have
received the approval of the United States Government. ON APPEAL.
Messrs. Gillson & Gillson for the applicant. MOORE, Commissioner:
This is an appeal from the action of the Examiner refusing to register as a trade-mark for loose-leaf binders a mark the distinguishing feature of which consists of the word “Government."
The Examiner of Trade-Marks refused to register the mark on the ground that it would be liable to cause the public to assume that the goods had received the approval of the Government or were up to a standard adopted by the Government and that to register such a mark is against public policy.
This holding is thought to be correct, for reasons similar to those stated in the decisions in the following cases: Ex parte Alart and McGuire, (C. D., 1907, 409; 131 0.G., 2145;) ex parte Tennessee Brewing Company, (C. D., 1908, 227; 136 O. G., 1999;) U. S. Sanitary Mfg. Co., (C. D., 1908; 137 O. G., 227;) Hezel Milling Co. v. Weidler, (ante, 5; 138 O. G., 258;) ex parte R. M. Rose Co., (ante, 38; 140 O. G., 507;) ex parte Ruppert, (ante, 43; 140 O. G., 755.) Loose-leaf binders, the goods upon which applicant's mark is used, are purchased and used to some extent by the Government. Section 28 of the Trade-Mark Act requires that notice be given to the public that a trade-mark is registered either by affixing thereon the words “ Registered in U. S. Patent Office" or an abbreviation thereof. The association of the words constituting this notice, together with the word “Government,” on the mark would be apt to mislead the public into the belief that not only is the mark registered in the United States Patent Office, but that the goods have received the approval. of the Government. The mark is therefore open to similar objections to those noted in ex parte Alart and McGuire and ex parte Ten nessee Brewing Company, supra, concerning the clause“ Guaranteed under the Food and Drugs Act of June 30, 1906,” and in ex parte R. M. Rose Co., supra, of the words “Ask the revenue officer.”
The decision of the Examiner of Trade-Marks is affirmed.
GIBSON V. KITSEE.
Decided July 13, 1909.
145 O. G., 1249.
1. INTERFERENCE-MOTION TO DISSOLVE-INOPERATIVENESS-TESTIMONY.
A motion to take testimony before the Primary Examiner on the question of inoperativeness of an opponent's device, Held properly refused transmission, since such testimony should be taken, if at all, in accordance with the practice outlined in Pym v. Hadaway (C. D., 1906, 488; 125 0. G., 1702)
and presented before the Examiner of Interferences at inal hearing. 2. SAME-SAME-COUNTS ADDED UNDER RULE 109.
Rule 109 does not permit the transmission of a motion to dissolve relating to counts added under its provisions merely because a party alleges
surprise that the claims were held patentable to his opponent. APPEAL ON MOTION.
METHOD OF PRODUCING SOUND-RECORDS.
Mr. Rudolph M. Hunter for Gibson.
This case is before me on appeal by Gibson from the decision of Che Examiner of Interferences denying the transmission to the
Primary Examiner of two motions for dissolution. One of these motions is based upon the ground that Kitsee has no right to make the claims, for the reason that his device is inoperative, and in this motion Gibson requests permission to take testimony to substantiate this allegation. The other motion is based upon the ground that Kitsee has no right to make claims corresponding to counts 4 and 5 of the issue, which were inserted in his application under the provisions of Rule 109.
It is urged in behalf of Gibson that because of a statement in the decision of the Primary Examiner on a previous motion for dissolution, based in part on the inoperativeness of Kitsee's device, too many unknown factors enter into this question to decide it without testimony, Gibson should be permitted to present testimony before the Examiner upon this question, and the decisions in Browne v. Stroud, (C. D., 1906, 226; 122 O. G., 2688,) Clement v. Browne v. Stroud, (C. D., 1906, 461; 125 O. G., 992,) Lowry and Cowley v. Spoon, (C. D., 1906, 224; 122 O. G., 2687,) and Lowry and Cowley v. Spoon (C. D., 1906, 381; 124 O. G., 1846) are relied upon in support of this position. In each of these cases the question of the right to offer testimony as to the operativeness of opponent's device at the final hearing of the case was under consideration. It is well settled that the question of the right of an opponent to make the claims in issue is ancillary to the question of priority of invention and may be considered at the final hearing of the case. (Podlesak and Podlesak v. McInnerney, C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399; McKnight v. Pohle, C. D., 1907, 666; 130 O. G., 2069; Neuberth v. Lizotte, post, 350; 141 O. G., 1162.) Rule 130 specifically provides that a party may urge the non-patentability of the claims of his opponent at final hearing before the Examiner of Interferences as a basis for the decision on priority of invention, but requires as a prerequisite to such right that the party shall have presented and prosecuted a motion for dissolution under Rule 122 upon the ground in question or show good reason why such motion was not presented and prosecuted.
In the present case it would appear that the prior proceedings would give Gibson the right to urge the non-patentability of the claims in issue to his opponent at the final hearing and, if allowed by the Examiner of Interferences upon motion duly made, to present testimony in support of this contention.
The argument of Gibson that testimony should be taken before the Primary Examiner in respect to this matter is not tenable. In the case of Pym v. Hadaway (C. D., 1906, 488; 125 0. G., 1702) the same question as that here presented was considered, and it was held thatIf Pym desires to take testimony relative to the matter above referred to, he should proceed in accordance with Rule 130 and the decisions above referred to, Arst prosecuting bls motion to dissolve before the Primary Examiner and