PLOW.

Messrs. C. A. Snow & Co. for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition that the Examiner be instructed to reopen this application and give action upon the merits of a claim presented by amendment August 4, 1908, and that such action be treated as the first action of the claim.

The record shows that upon examination of this application the Examiner in his first action cited six references. The claims which were presented thereafter by amendment were rejected upon the same references. Amendment was made in view of this action limiting the claim to set forth that a certain spring-actuated bolt. which was said to be mounted in a box was "completely housed therein." The Examiner thereupon cited three additional references, stating that

In the patents of record are found springs partially noused, with all the other elements of the claim. Clearly a fully-housed spring in place of those shown involves no patentability and in view of this patent fact, this action to save time, can be taken as final.

Thereafter the applicant by repeated amendments to the claim has caused the Office to make nine actions, and during this period the Office has cited but one additional reference, which appears to be merely cumulative. In the action dated May 19, 1908, the Examiner requested the applicant to place his claim in condition for final action, stating that

It is futile to present claim after claim for rejection but never venturing a second rejection.

In the next action, dated August 7, 1908, the Examiner finally rejected the claim, notwithstanding the fact that the claim had been rewritten. Thereafter the applicant requested reconsideration of this action, and the Examiner, in a letter dated September 29, 1908, refused to set aside his final rejection of the claim and stated:

The Examiner does not believe that a patentable claim can be drawn in view of the references of record.

The petitioner now requests that the Examiner's action dated September 29 be set aside and the action of August 8 be treated as a first rejection of the claim, thus causing the case to be reopened for the further amendment.

It is clear from the history of this case, above recited, that an issue has been reached between the Examiner and applicant as to the patentability of the invention disclosed in this application. The applicant has had ample opportunity to differentiate his alleged invention from that disclosed in the references of record. Having failed

to do so, and also having been unable to convince the Examiner by argument of the patentability of any claim presented or, indeed, of the patentability of the invention disclosed in this application, there appears to be no reason for further continuing the prosecution of the application before the Examiner. It is unreasonable that in an application covering an invention susceptible of but a single claim, as appears to be the case in this instance, since but one claim has been before the Office at any one time since the first rejection, twelve actions upon the part of the Examiner and an equal. number by the applicant are necessary to bring the case to an issue, and I fail to perceive any good reason why the applicant should insist that even after such consideration he is entitled to further delay final action upon the case. The practice of repeatedly filing amendments which can serve no purpose except to prolong the life of the case or which are presented in the hope of wearying the Examiner into allowing a claim upon the ground that because of its specific character it can do no harm cannot be too strongly condemned. The following statement in a decision of the Commissioner in a recent case in ex parte Miller (ante, 23; 139 O. G., 730) is clearly applicable to this case:

It is to be observed that Rule 68 requires that in amending the applicant must clearly point out all the patentable novelty which he thinks the case presents in view of the art disclosed by the references cited or the objections made, and under the terms of these rules he has the right to present further amendment only when “the Examiner presents new references or reasons for rejection." It is therefore believed that where the amendments or reasons presented by an applicant in response to an action by the Office do not necessitate the citation by the Examiner of additional references or reasons the applicant's right to further prosecution of the application is at an end, and the permission of further amendment is within the discretion of the Office.

The petition is denied.

EX PARTE COPELAND.

Decided March 13, 1909.

140 O. G., 1207.

ABANDONMENT OF APPLICATION-REJECTION OF CLAIMS-INSUFFICIENT RESPONSE. Where in response to the rejection of ten claims by the Examiner the applicant filed an amendment only two days before the expiration of the year allowed for action in which eight of the rejected claims were canceled, one left unchanged, one amended, and a new claim added, without mentioning the claim which was left intact and without attempting to point out how the amended claim or the new claim differed from the references cited, Held that the amendment was not a proper response and that the application was abandoned, particularly in view of the fact that the record disclosed that after each rejection of the claims since the filing of the

application in 1901 applicant had taken the full period allowed by law for amendment and that he also delayed action on the case for one year after he was notified by the Primary Examiner that the application was abandoned.

ON PETITION.

DRIVE AND BRAKE MECHANISM FOR BICYCLES.

Mr. Gales P. Moore for the applicant.

MOORE, Commissioner:

This is a petition from the decision of the Examiner holding the application to have become abandoned because of insufficient prosecution and requesting that the Examiner be instructed that applicant's response to the last Office action was sufficient.

Since the filing of the application in February, 1901, the application has been amended six times, and in each case the amendment was filed just within the year allowed by the statute for taking action. In the action of November 17, 1906, the Examiner rejected ten claims. In response to this action an amendment was filed on November 15, 1907, only two days before the expiration of the year, canceling eight of the rejected claims, amending one, and adding a new claim. Applicant did not attempt to point out how the amended claim and the new claim were distinguished from the references cited. One of the rejected claims was not mentioned in any way. It is stated that the failure to refer to this claim was an inadvertence; but, however this may be, the response is otherwise insufficient. After a prosecution of nearly seven years, during which applicant took advantage of the full time allowed by the statute, the case was left in condition where no decisive action could be taken. It is noted, furthermore, that after the Examiner notified applicant that the case was abandoned there was another delay of one year before any response whatever was made. The record seems to show a deliberate attempt to prolong the prosecution of the case, and under the circumstances, having taken advantage of a technical application of the rules, applicant is not in a position to complain of a like application by the Office. The petition is denied.

EX PARTE MCELROY.

140 O. G., 1207.

1. AFFIDAVIT TO OVERCOME REFERENCE-RULE 75-REDUCTION TO PRACTICE— DILIGENCE.

In order to overcome by affidavit, under Rule 75, a patent which shows but does not claim the invention covered by the applicant, the applicant must state, on oath, facts showing either that a reduction to practice had been made before the filing of the application on which the patent was

granted or that the invention had been conceived before that time and by due diligence connected with a subsequent reduction to practice. (Ex parte Gasser, C. D., 1880, 94; 17 O. G., 507; ex parte Saunders, C. D., 1883, 23; 23 O. G., 1224; ex parte Donovan, C. D., 1890, 109; 52 O. G., 309; ex parte Hunter C. D., 1889, 218; 49 O. G., 733.)

66

2. SAME-SAME-INCOMPLETE APPLICATION NOT A COMPLETION OF THE INVEN

TION."

66

The filling of an incomplete application does not constitute a completion of the invention" within the meaning of Rule 75, as no patent can be granted on an application until it is completed.

3. SAME-SAME-FACTS SHOWING LACK OF DILIGENCE.

Where an inventor on May 27, 1895, while an employee of the Patent Office, filed application papers without the filing fee and on June 3, 1896, after his resignation, deposited such filing fee, but the application on August 6, 1897, was stricken from the files as having been filed contrary to the statutes, and a complete formal application was filed September 10, 1897, Held that the inventor was not diligent in constructively reducing his invention to practice and that he was not entitled to a patent in view of the grant of a patent to another on February 9, 1897, on an application filed March 16, 1896.

APPEAL from Examiners-in-Chief.

VOTING-MACHINE.

Mr. John H. McElroy pro se.

MOORE, Commissioner:

This is an appeal from a decision of the Examiners-in-Chief affirming the action of the Primary Examiner rejecting twenty-nine claims. Appellant has waived his appeal as to all of the claims except eight— namely, 32, 33, 48, 49, 52, 55, 56, and 57-and the decision of the Examiners-in-Chief is therefore final as to the remaining claims.

The eight claims in question were rejected on the patent to Gillespie, No. 576,570, granted February 9, 1897, and appellant admits that if the Gillespie patent can properly be considered as part of the prior art these claims are anticipated.

The question presented involves a peculiar state of facts. The record shows that on May 27, 1895, appellant, who was at that time an Assistant Examiner in the Patent Office, filed an application for patent upon the present invention, which was complete except for the filing fee of fifteen dollars. On March 16, 1896, Gillespie filed his application, and a patent was issued thereon on February 9, 1897. On June 3, 1896, appellant, who in the meantime had resigned from the Patent Office, paid the filing fee of fifteen dollars, and the application was entered as complete and numbered 594,189.

While the two applications disclosed a common invention, they contained no conflicting claims on which an interference could be declared, and the patent to Gillespie was properly issued.

In accordance with a decision of Commissioner Butterworth, rendered August 6, 1897, (C. D., 1897, 40; 80 O. G., 1123,) appellant's application, No. 594,189, was stricken from the files, because filed in violation of the statute. The present application was filed complete on September 10, 1897, and it appears that the original specification and petition were used, a new oath only being filed.

When the claims in issue were rejected on the Gillespie patent, appellant filed affidavits setting forth the facts above stated.

The Examiner held that the appellant had shown neither a reduction to practice of the invention before the filing of the Gillespie application nor a conception thereof followed by due diligence in reduction to practice, and that therefore the Gillespie patent was properly to be considered as part of the prior art and constituted a bar to the allowance of the present claims, and this view of the case was also taken by the Examiners-in-Chief.

Appellant contends that the incomplete application of May 27, 1895, shows such a completion of the invention as is required by Rule 75, but that if it does not it shows a conception of the invention and that he was reasonably diligent in reducing the invention to practice, since he completed the application by paying the filing fee within two years, which at that time was the period allowed by the statute to complete an application, so as to save it from abandonment.

As to the first of these contentions, it is not seen how the filing of an incomplete application, on which a patent could not be granted, can be considered as a completion of an invention. The statute requires, among other things, the payment of a fee as a prerequisite to the grant of a patent, and until such fee is paid there is no application pending on which a patent could be granted, and it is only such an application that is considered a constructive reduction to practice.

Appellant has cited several decisions to show that a completed invention can be based on drawings and disclosures alone; but the decisions, when carefully examined, are not susceptible of such an interpretation. In ex parte Gasser, (C. D., 1880, 94; 17 O. G., 507,) the earliest of the decisions with reference to the question of overcoming a reference by affidavits, Commissioner Paine says:

The applicant, therefore, must state on oath facts showing either that a reduction to practice had been made before the filing of the application on which the patent was granted, or that the invention had been conceived before that time and by due diligence connected with a subsequent reduction to practiceand this has been recognized ever since as the proper practice. (Ex parte Hunter, (C. D., 1889, 218; 49 O. G., 733.) In both ex parte Saunders (C. D., 1883, 23; 23 O. G., 1224) and ex parte Donovan (C. D., 1890, 109; 52 O. G., 309) the requirement that prior conception alone is not sufficient, but must be connected by diligence with a