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ing a distinction between the case of an applicant and that of an assignee. If, as held in these decisions, the interest in a pending application does not under the terms of the Bankruptcy Act pass to the trustee, this is true whether the bankrupt was the owner of such pending application as the applicant or as an assignee.
It must therefore be held that the trustee in bankruptcy, Howard R. Ives, has no such title to the Cantelo applications as would justify granting his request for access to and copies thereof.
Whether he has such an interest in these applications as would justify his being allowed to inspect them can only be decided after a hearing upon a petition duly filed, with proof of service upon the owner of these applications, in accordance with the practice set out in the decisions in the cases of in re Commercial Mica Company (C. D., 1907, 186; 129 O. G., 479) and in re Bullock Electric Manufacturing Company, (C. D., 1907, 207; 129 O. G., 1611.)
The petition is denied.
EX PARTE COPELAND.
Decided October 25, 1909.
149 0. G., 309.
1. ABANDONMENT-FAILURE TO TAKE PROPER ACTION.
Where the Examiner rejected eight claims and just before the expiration of the year the applicant canceled four of these, amended one, pointed out wherein the other three avoided the references, and added two new claims without pointing out how these two were believed to distinguish over the
prior art, Held that the application is abandoned. 2. SAME-SAME-LONG DELAYS.
Where an applicant relies upon his technical right to delay action as long as possible in each instance, he is entitled to no leniency in the application of the rule which provides that prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require.
Mr. Gales P. Moore for the applicant.
BILLINGS, Acting Commissioner:
This is a petition from the action of the Examiner holding this case abandoned for lack of sufficient prosecution.
On December 4, 1906, the Examiner rejected eight claims, stating that the remaining claims appeared to be allowable. On November 18, 1907, applicant presented an amendment directing the cancelation of four of these claims, amending one, pointing out wherein the three remaining claims were believed to be patentable over the references cited, and adding two new claims. On March 3, 1908, the Examiner held that as no effort had been made to point out what patentable novelty the new claims were supposed to possess or how they avoided the references cited the communication of November 18, 1907, was not such action as the condition of the case required and that the application was therefore abandoned. The action of the Examiner appears to have been an entirely proper
He states in his letter of March 3, 1908, that the proposed new claims are much broader than any before presented, and the fact that these claims are broad claims is admitted by the applicant in his brief on this petition. Applicant now argues that he was not to be
. expected to present affidavits and sketches showing why he was entitled to these claims prior to their rejection by the Office. As, however, these claims were broader than claims before presented which had been rejected, it was clearly the duty of the applicant to show why these claims were allowable.
The facts in this case are almost identical with the case of ex parte Richards, (C. D., 1906, 403; 124 0. G., 2534.) In that case, after repeated actions on the part of the Office and the applicant, a claim was rejected for want of identity with the original invention. A few days before the expiration of the year within which the applicant could take action he presented an amendment directing the cancelation of the previously-rejected claim and substituting a claim therefor; but this claim was accompanied by no showing of why it was considered patentable further than the mere statement that, applicant has amended claim 1 to cure the faults alluded to by the Examiner.
There, as here, the applicant argued that there were certain reasons why he was entitled to present this claim at that stage in the prosecution of the case. In answer to that contention the Commissioner said:
In this case a broadened claim is presented in the twenty-eighth action on the case, taken more than eight years after the case was filed. The invention is a simple one, the progress of the case has not been delayed by interference proceedings, and no new references have been cited for more than three years prior to the action in question. The applicant's reasons for presenting the new claim and for regarding it as allowable were capable of clear and brief statement, as is shown by the statement thereof in his brief upon this petition, and they would undoubtedly have been of considerable assistance to the Office in acting upon the case. But the applicant thinks that for the reasons given above he was exempt from the requirement of the rule for ordinary cases, and entitled to withhold his reasons for believing the new claim to be allowable until the Office had acted, and to extend the prosecution of the case another year before furnishing them, if he so desired. Clearly his position is without merit.
This statement is clearly applicable to the present case.
This application was filed in 1901, and its prosecution has apparently been delayed as much as possible, as the following statement of the dates of the rejections and amendments will show: Application filed February 4, 1901, rejected February 25, 1901; amended February 12, 1902, rejected March 11, 1902; amended February 28, 1903, rejected April 7, 1903; amended April 1, 1904, rejected May 20, 1904; amended May 20, 1905, rejected October 12, 1905; amended October 4, 1906, rejected December 4, 1906; proposed amendment filed November 18, 1907; letter holding the case abandoned March 3, 1908; letter requesting reconsideration of that holding March 1, 1909; holding of abandonment repeated April 13, 1909; petition to the Commissioner taken September 7, 1909. It is well settled that where an applicant relies upon his technical right to delay action as long as possible in each instance he is entitled to no leniency in the application of the rule which provides that prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require. (Ex parte Rico, C. D., 1904, 501; 113 O. G., 1147; ex parte Naef, C. D., 1905, 137; 115 O. G., 2135.)
The petition is denied.
EX PARTE WAGNER.
Decided November 22, 1909.
149 0. G., 831.
REOPENING CASE AFTER APPEAL.
An inventor is presumed to know the essence of his invention before it is filed, certainly before it has been prosecuted through an appeal, and the mere statement that a certain feature has been found to be important is not a showing of sufficient cause to justify reopening the case to admit new claims.
Mr. Fred B. Fetherstonhaugh and Mr. Ellis Spear for the applicant. MOORE, Commissioner:
This is a petition requesting the admission and consideration of an amendment canceling the three claims now in the case and presenting one claim in lieu thereof.
The three claims were rejected by the Primary Examiner on May 7, 1909. An appeal was taken from this action to the Examiners-inChief, who rendered a decision affirming the action of the Primary Examiner. No appeal from the latter decision has been taken.
Rule 142 provides that cases which have been decided by the Examiners-in-Chief will not be reopened by the Primary Examiner except upon the written authority of the Commissionerand then only for the consideration of matters not already adjudicated upon, sufficient cause being shown.
As pointed out by the Primary Examiner in his statement responding to this petition, the subject matter of the proposed claim is substantially embraced in the pending claims, particularly claim 2. It is at best but a colorable variation of the appealed claims and could in no sense be considered as matter “not adjudicated ” within the meaning of Rule 142.
The rule also requires that a showing of sufficient cause for reopening the case be made. In this instance the only showing made is that
the applicant has found, since the appeal, that the important feature of the invention is in having the bulb or lower portion of the thermometer in. ca sed within a shell of a particular size. Why he did not find this out earlier does not appear. An inventor is presumed to know the essence of his invention before the case is filed, certainly before it has been prosecuted through an appeal.
Inasmuch as neither of the conditions necessary for the reopening of a case under the provisions of the rule quoted is found to be present, the petition must be denied.
KNIGHT v. CUTLER.
Decided November 22, 1909.
149 0. G., 1119.
1. INTERFERENCE-MOTION TO DISSOLVE-TRANSMI88I0N.
It is well settled that the transmission of motions to dissolve is left largely to the discretion of the Examiner of Interferences and that where he grants a motion to transmit his decision will be disturbed only upon a
showing of abuse of discretion. 2. SAME-SAME-SAME.
Within the time set for bringing motions K. iled a motion to dissolve, which was denied on the ground of indefiniteness. Four days later he filed an amended motion seeking to overcome the indefiniteness of the original motion. On the day of hearing he filed an affidavit in support of the motion, and upon objection by C. the hearing was postponed one week. Held that these facts do not show any abuse of discretion upon the part of the Examiner of Interferences in transmitting the amended motion.
Mr. A. G. Davis for Knight. (Mr. Frank J. Seabolt of counsel.)
Messrs. Jones, Addington & Ames and Mr. Edwin B. H. Tower for Cutler.
This is a petition by Cutler that this case be remanded to the Examiner of Interferences, with instructions to rescind his order of October 9, 1909, transmitting Knight's motion to dissolve, to refuse transmission thereof, and to enter judgment against Knight.
The record shows that after the opening of the preliminary statements an order was issued against Knight to show cause why judgment should not be rendered against him on the record. Within the time allowed he filed a motion to dissolve, which was denied transmission on the ground of indefiniteness. Four days after the decision refusing transmission of this motion an amended motion was filed whereby it was sought to overcome the indefiniteness of the original motion. On the day the motion to transmit this amended motion was noticed for hearing Knight filed an affidavit of his attorney in support thereof. Upon objection by Cutler to the delay in filing the affidavit the hearing was postponed one week. On October 9 the Examiner of Interferences rendered a decision transmitting the amended motion to the Primary Examiner and suspending judgment.
It is well settled that the transmission of motions to dissolve will be left largely to the discretion of the Examiner of Interferences. In Pickard v. Ashton and Curtis (C. D., 1908, 241; 137 O. G., 977) it was said:
For the same reasons which apply to motions to amend preliminary statements (Smith and Wickes v. Emerson v. Sanders, C. D., 1908, 97; 133 0. G., 1433) and to motions with respect to the taking of testimony (Goodfellov v. Jolly, C. D., 1905, 105; 115 0. G., 1064) 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.
To the same effect is the decision in Thiem v. Bowen, (ante, 102; 143 O. G., 1345,) which cites with approval Pickard v. Ashton and Curtis, supra, and earlier cases in point.
In the present case the circumstances show no abuse of discretion upon the part of the Examiner of Interferences in transmitting the amended motion to dissolve.
The petition is denied.