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PROCESS OF TREATING COFFEE
Mr. Max Georgii for the applicant. MOORE, Commissioner:
This is a petition thatthis application be reopened for the purpose of considering the above claims and that the Primary Examiner be directed to examine and act on these claims in the usual manner.
The record of this application shows that after a large number of actions applicant's claim 5 was allowed and claims 1 to 4 were finally rejected. On May 15, 1909, applicant appealed to the Examinersin-Chief and on the same day filed an amendment containing five additional claims. The Primary Examiner refused to enter this amendment on the ground that the prosecution of the case before him was closed. At the hearing before the Examiners-in-Chief on the appeal applicant requested them to recommend the admission of said claims. The Examiners-in-Chief declined to make any recommendation and affirmed the action of the Examiner on the appealed claims. Applicant now presents the above petition for the reopening of the case under Rule 142.
In a sworn statement counsel for petitioner states that so far as he is aware the inventor, who is a foreigner, is not sufficiently familiar with the patent law and practice of the United States to fully appreciate the scope and effect of the claims originally presented to him when he executed the application. Petitioner's attorney further states that he was not informed until after the final rejection that the subject matter of the claims, which he desires to insert, was an important part of the invention.
It is well settled that after a final rejection, and especially after a decision on appeal, an application will not be reopened for further prosecution before the Primary Examiner except under unusual circumstances, where a proper showing is made and where the interests of justice plainly demand it. (Ex parte Beckwith, C. D., 1901, 43; 95 0. G., 1451; ex parte Raymond, C. D., 1902, 170; 99 O. G., 1386; ex parte Harrison, C. D., 1902, 347; 100 O. G., 3013; ex parte Brown, C. D., 1903, 418; 107 O. G., 269; ex parte Bourne, C. D., 1904, 247; 110 O. G., 2510; ex parte Auer, C. D., 1905, 164; 116 0. G., 595; em parte Lesler, C. D., 1905, 309; 117 0. G., 2631; ex parte Marks, C. D., 1905, 439; 118 0. G., 2253.) The circumstances in this case are analogous to those in ex parte Beckwith, supra, where the Commissioner said:
The showing consists of an affidavit by the original attorney and one by the associate setting forth, in effect, that prior to the final rejection the value and Importance of certain features of the invention were not appreciated and that
it was only by information subsequently received that the possibility of obtaining proper protection and at the same time of avoiding the objections raised by the Examiner against the claims in the case was seen. This showing does not, in my opinion, warrant reopening the case for further prosecution before the Examiner. It is probable that in most cases which it is desired to reopen for the consideration of new claims it is regarded as a mistake to have insisted upon the original claims, for otherwise the parties would be content to rely upou the original claims. It is the duty of applicants to discover and properly present the real points of their inventions before the consideration of the case is closed by the Examiner, and in each case the question whether or not they have done so is a matter of judgment. If a party fails to appreciate and understand the important features of the invention and makes a supposed error in judgment as to the manner in which it should be claimed, he should bear the consequences, and this Office should not be forced to bear them by making a reěxamination of the case. (Ex parte Osborn, C. D., 1898, 15; 82 O. G., 894.) That would not be fair to other applicants having business before the Office.
No Irreparable injury results to an applicant from the enforcement of the rule that amendments should be made before the case is placed in condition for appeal, since the applicant may by Aling a new case as a continuation of the one rejected obtain a reëxamination. That, in my opinion, is the proper remedy in a case of this kind, where the Office has given a full and complete examination of the applications as presented.
The above reasons for refusing to reopen the case in ex parte Beckwith are believed to apply in the present case.
An additional reason why this case should not be reopened and the amendment entered is found in the statement of the Primary Examiner that two of the proposed claims are the same in scope as the original claims and would be rejected on the ground of res adjudicata. Concerning the remainder of the claims the Examiner states that they include features not previously considered, but he makes no statement as to their patentability. Apparently these claims would necessitate additional search and examination.
The petition is denied.
EX PARTE KONIGLICHES HOFBRAUAMT MUNCHEN.
Decided August 13, 1909.
146 O. G., 720.
1. TRADE-MARKS-FOREIGN APPLICANT-DECLARATION—FOREIGN REGISTRATION.
Where a foreigner applies for registration of a trade-mark, it is not sum• cient that he merely file a certified copy of the registration of such trademark in the country in which he resides or is located, but the declaration must set forth that the mark was registered in such country upon the date
shown in the certificate. 2 SAME-SAME-SAME-SECTION 2 OF TRADE-MARK Act CONSTRUED.
The word "statement" as used in the latter portion of section 2 of the Trade Mark Act refers to the matters of fact set forth by the applicant lo the declaration and not to the particular paper which is ordinarily referred to as the "statement" of the application,
TRADE-MARK FOR BEER.
Messrs. Mason, Fenwick & Lawrence for the applicant. TENNANT, Acting Commissioner:
This is a petition from the requirement of the Examiner that the applicant, a foreign corporation, file a declaration setting forth that the mark was registered in Germany upon the date shown in the foreign certificate of registration presented with the application for registration in this Office.
No reference to the foreign registration is found in the petition, statement, or declaration. There is, however, a letter in the file bear. ing the signature of the attorney, stating that
To accompany application for registration of trade-mark herewith submitted, certified copy of the registration of said trade mark in Germany is herewith submitted.
It is urged on behalf of the applicant that the statute does not require reference to the foreign registration to be set forth in the declaration forming a part of the application for registration, and it is pointed out in section 2 that
If the applicant resides or is located in a foreign country, the statement required shall, in addition to the foregoing, set forth that the trade-mark has been registered by the applicant, or that an application for the registration thereof has been filled by him in the foreign country in which he resides or is located, and shall give the date of such registration, or the application therefor, as the case may be, except that in the application in such cases it shall not be necessary to state that the mark has been used in commerce with the United States or among the States thereof.
It is argued that under the terms of this section of the statute it is sufficient that reference be made by amendment to the part of the application which is ordinarily referred to as the “statement." This contention is believed to be untenable. Section 2, above quoted, in its preamble sets forth:
That the application prescribed in the foregoing section, in order to create any right whatever in favor of the party Aling it, must be accompanied by a written declaration verified by the applicant, or by a member of the firm or an officer of the corporation or association applying, to the effect that the appli. cant believes himself or the firm, corporation, or association in whose behalt he makes the application to be the owner of the trade-mark sought to be registered, and that no other person, firm, corporation, or association, to the best of the applicant's knowledge and belief, has the right to such use, either in the identical form or in such near resemblance thereto as might be calculated to deceive; that such trade-mark is used in commerce among the several States, or with foreign nations, or with Indian tribes, and that the description and drawing presented truly represent the trade-mark sought to be registered.
There then follows the further proviso previously quoted that, if the applicant resides or is located in a foreign country, the statement required shall, in addition to the foregoingset forth the additional facts regarding foreign registration. It is obvious from the language of this section that the “ statement” refers to the matters of fact set forth by the applicant in the declaration and not to the particular paper which is ordinarily referred to as the “ statement ” of the application.
Furthermore, Rule 33, which is promulgated by the Commissioner of Patents with the approval of the Secretary of the Interior under the authority of section 26 of the act of 1905, provides explicitly that if the applicant resides or is located in a foreign country the declaration of a foreign applicant shall set forth that the trade-mark has been registered by the applicant or that an application for the registration thereof has been filed by him in the foreign country in which he resides or is located and shall give the date of such application or registration thereof, as the case may be. For the reasons above stated it is obvious that this rule is not in conflict with the provisions of the law, and it follows that in so far as the application for registration of trade-marks is concerned it has the force of law. (U. S., ex rel. Steinmetz v. Allen, Commissioner of Patents, C. D., 1903, 578; 104 O. G., 853; 22 App. D. C., 56; Mell v. Midgley, C. D., 1908, 512; 136 O. G., 1534; 31 App. D. C., 534.
It is held that the Examiner's requirement that a new declaration be furnished setting forth the required facts concerning the foreign registration is right, and it is affirmed.
EX PARTE RAMSEY.
Decided August 30, 1909.
146 0. G., 721. 1. DIVISION-PARTS OF A MACHINE FOR PLACER-MINING.
The nature of the claims considered and Held to warrant the Exam
iner's requirement for division. 2. SAME-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. APPEAL from the Examiners-in-Chief.
APPARATUS FOR THE RECOVERY OF PRECIOUS METALS FROM METALLIFEROUS EABTHS.
Messrs. Phillipp, Sawyer, Rice & Kennedy for the appellant. TENNANT, Assistant Commissioner:
This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Primary Examiner requiring division between several groups of claims. The invention is a complete machine for placer-mining. The application contains one hundred and ninety claims. These claims are divided into seven groups by the Examiner, as follows:
Group 1, embracing claims 1 to 13, inclusive, and 115 to 130, inclusive, consists of the combination claims covering the assemblage of washer, amalgamators, screens, and conveyers. Group 2, embracing claims 14 to 81, inclusive, and 131 to 165, inclusive, is for a rotaryscreen washer, intended to screen and agitate ore with water to thoroughly separate the fine from the coarse material and deliver them separately. Such devices have been used in the art for a long time in connection with all kinds of ore. Group 3, embracing claims 82 to 94, inclusive, and 166 to 177, inclusive, is for a plate-amalgamator. Plate-amalgamators constitute one of the subclasses under the class of Mills. Group 4, including claims 95 to 110, inclusive, and claims 178 to 188, inclusive, is for a rocking-washer amalgamator. Devices of this character are classified in Mills, amalgamators, mercury, or in Mills, ore and coal, washers, according to which is the dominant function. Group 5, embracing claims 111, 112, 189, and 190, is for a screen and its receiving-pan, and is classified in the subclass of Mills, ore and coal, sifters and screens. Group 6, involving claim 113, is for a different species of screen from that forming the invention of group 5. Group 7, involving claim 114, is for an endless conveyer and a receptacle receiving therefrom. Devices of this character are classified in Class 193, Conveyers.
Division was required between each of these sets of claims, with the exception that the Examiner states that group 1, which covers an alleged combination of the devices of several of the groups, may be joined with group 2 or group 3, at the election of the applicant.
Although forming parts of applicant's complete machine, the inventions of groups 2 to 7, inclusive, are specific devices and have become the basis of separate invention, manufacture, and sale, and are separately classified in this Office. Futhermore, groups 3 and 4 are for different species of amalgamators, while groups 5 and 6 cover separate species of screens. For these reasons it is held that the requirement of the Examiner was right.
Appellant contends that, inasmuch as the application was filed in 1897 and received several actions on the merits before a definite requirement of division was made, the main work on the application has been done, and division at this stage of the case will involve much additional work on the part of both the Patent Office and the attorney. This contention is believed to be without force. Under the rules of practice of this Office division may be required at any stage of the application, although it is usually required before action is taken on the merits of the claims. The fact that the requirement of division