view of these facts it is held that the delay was unavoidable within the meaning of section 4894 of the Revised Statutes.

The petition is granted to the extent indicated.

TOWNSEND V. THULLEN v. YOUNG.

Decided January 7, 1909.

138 O. G., 768.

1. INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.

A motion to dissolve should not be transmitted where it appears that the moving party had had an opportunity to bring a motion to dissolve on the same ground in a prior interference involving the same counts.

2. SAME-SAME-SAME.

A motion to dissolve on the ground of the non-patentability of the issue was refused transmission on the ground that the moving party had had an opportunity to bring such motion in a prior interference. Held that a subsequent motion alleging that a new party to the interference had no right to make the claims based on the same ground as the prior motion should not be transmitted.

APPEAL ON MOTION.

BAILWAY SIGNALING SYSTEM.

Mr. Geo. H. Benjamin and Mr. Eugene C. Brown for Townsend. Mr. William L. Pierce, Messrs. Bakewell, Byrnes & Parmelee, Mr. Geo. E. Cruse, and Messrs. Bakewell & Byrnes for Thullen.

Mr. Geo. H. Benjamin and Mr. Eugene C. Brown for Young. BILLINGS, A88sistant Commissioner:

This case is before me on an appeal by Young from a decision of the Examiner of Interferences, said decision granting a motion by Thullen to transmit a motion for dissolution of this interference.

The record shows that a prior motion to dissolve and a motion to transmit the same were filed October 1, 1908. That motion was based upon the grounds (1) that counts 7, 8, and 9 of the interference were not patentable to the parties in view of certain stated references; (2) "that the invention is not patentable to Young in view of his patents, Nos. 757,537 and 762,370," and (3) that there was irregularity in the declaration of the interference. This motion was denied transmission by the Examiner of Interferences as to ground (1) for the reason that counts 7, 8, and 9 referred to were counts of another interference between the party Townsend and appellant in which a motion for dissolution denying the patentability of these claims was presented and was decided, that under such circumstances the doctrine of res

adjudicata should be applied. The second ground was denied transmission for the reason that the grounds of the motion were not sufficiently specific. The third ground of the motion was also denied transmission for the reason that the matters presented therein could be considered only upon a motion to shift the burden of proof.

Within the limit of appeal from this decision an amended motion for dissolution was filed setting forth (1) that all the counts of the issue are unpatentable to the party Young in view of his Patents Nos. 757,537 and 762,370, and (2) that the party Young has no right to make claims corresponding to claims 7, 8, and 9 of this interference, because the device shown in Young's application lacks the features by reason of which such claims were considered patentable over the prior art shown in certain stated patents.

The Acting Examiner of Interferences granted appellant's motion to transmit as to both grounds.

The records of this Office show that counts 1, 2, 3, 4, 5, and 6 of this interference are identical with counts 3, 5, 1, 2, 4, and 6, respectively, of a companion interference No. 25,458 between the parties Young, Thullen, and Townsend; that claims 7, 8, and 9 are identical with claims which were counts 8, 14, and 15 of interference No. 26,944 between the parties Townsend and Thullen. 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. Struble, (C. D., 1908, 261; 137 O. G., 1484.) The motion therefore should not have been transmitted as to the first ground.

The second ground of the present motion, that counts 7, 8, and 9 of the issue are not patentable to Young, is based upon the same allegation as those upon which the non-patentability of these counts to any of the parties in this interference was predicated in the prior motion to dissolve. The shifting from the allegation of nonpatentability to all parties, after having been advised that this question is res adjudicata to one party only upon the same grounds, is not justifiable. To transmit such a motion can only result in delaying the final disposition of the case.

In view of the circumstances above stated it is believed that the Acting Examiner of Interferences was in error in transmitting the motion for dissolution.

The decision dated October 20, 1908, is accordingly reversed.

IN RE WERNER.

Decided January 21, 1909.

189 O. G., 197.

CLAIMS-SUGGESTION OF—Process and Apparatus.

Where an applicant, in compliance with the Examiner's requirement for division between process and apparatus, divides out the process and files a separate application therefor, the Examiner should not suggest the process claims to other applicants who disclose the process but claim only an apparatus for carrying out such process.

ON REQUEST.

MOORE, Commissioner:

I have been requested to permit that, in view of a probable interference, there be suggested to an applicant for an apparatus, whose application has been allowed, a claim for the process described in such application and carried out by the apparatus illustrated therein. It is stated that the process claim would have to be made in another application and that it would therefore not be necessary to withdraw the allowed case from issue.

It appears that three applications were filed by different parties showing specifically different devices which are capable of carrying out the same process. None of the applicants presented a claim broad enough to read on the devices of the other parties. One of them, however, presented both apparatus and process claims. Division was required, and a divisional application for the process was filed.

Rule 96 reads, in part, as follows:

Whenever the claims of two or more applications differ in phraseology, but cover substantially the same patentable subject-matter, the Examiner, when one of the applications is ready for allowance, will suggest to the parties such claims as are necessary to cover the common invention in substantially the same language.

Process and apparatus may be distinct inventions and have been so considered in this instance by the Primary Examiner, as is shown by his action in requiring division between the process and apparatus claims in one of the applications. It is well settled that what is not claimed in an application is disclaimed, at least so far as that application is concerned. The applicants to whom it is now proposed to suggest the process claim having presumptively disclaimed the process, it is not seen that the Office has authority to suggest to them a claim thereto.

As stated in the decision in Myers v. Brown, (C. D., 1904, 445; 112 O. G., 2093,) claims should not be suggested where the same inven

tion is merely disclosed, but not claimed. In this case the Commissioner said:

It is not believed that the Examiner erred in practice in suggesting the claims. Prior to the promulgation of amended Rule 96 it had become the practice to suggest claims to an applicant who had merely disclosed the invention either in his specification alone or in his drawing alone, or in both the specification and drawing, but had failed to file any claim at all based upon such disclosure. Experience had shown the desirability of discontinuing this practice, and amended Rule 96 was promulgated with that end in view.

In this case while the claim presented by Brown differs in some respects from those presented by Myers it is clear that both applicants presented their respective claims for the purpose of covering substantially the same subjectmatter of invention.

It is not seen, therefore, that the Office would be justified in suggesting the process claims, as proposed. If, however, the state of the art is such that a patentable apparatus claim can be drawn which will read on the devices shown in all of the applications, the Examiner should draft such a claim and suggest it to each of the applicants.

EX PARTE HAY.

Decided January 23, 1909.

139 O. G., 197.

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 successor, 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., 1897, 174; 81 O. G., 1787; ex parte Fowler, C. D., 1902, 420; 101 O. G., 1833.) ON PETITION.

MILK-JAR CAP.

Mr. S. W. Bates and Mr. L. S. Bacon for the applicant.

MOORE, Commissioner:

This is a petition that the Primary Examiner be instructed to withdraw his rejection of the claim of this application.

It appears from the statement in the petition and from the Examiner's answer to the petition that a previous application was made for a patent upon the same invention and that during the prosecution of that application certain references were cited, but a claim was eventually allowed over these references. The claim in the present application is directed to the same subject-matter as the claim which was allowed in the earlier application, but is slightly more specific.

It appears that the earlier application having been allowed became forfeited by the failure to pay the final fee and having subsequently been renewed was permitted to become abandoned. Thereafter the present application was filed.

The claim contained in the earlier application was allowed over the references cited therein by a different Primary Examiner from the one refusing the allowance of the present claim. No reasons or references have been cited by the present Examiner different from those advanced by his predecessor. It is therefore contended in behalf of the applicant that the action of the Primary Examiner rejecting the claim of this application should be set aside.

While it is well settled that favorable action upon claims by one Examiner is not binding on his successor, such action should be very persuasive upon the latter as to the patentability of such claims. (Ex parte Starr, C. D., 1879, 91; 15 O. G., 1053; ex parte Nealon, C. D., 1897, 174; 81 O. G., 1787; ex parte Fowler, C. D., 1902, 420; 101 O. G., 1833.) 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 successor, 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.

Substantially the same claim as that herein presented was found to be patentable in the earlier application. Upon renewal of that application after forfeiture it was subject to a new examination (Rule 176) and was again adjudged to be patentable. Under these circumstances any doubt as to the patentability of the claim in the new application should have been resolved, in the applicant's favor. The petition is granted.

EX PARTE MARSHALL.

Decided January 20, 1909.

139 O. G., 198.

REJECTION-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. ON PETITION.

BUTTER-COOLING CAN.

Mr. Albert H. Graves for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition that the Examiner in charge of the above-entitled case be directed to enter a final rejection.