clusive as between the parties on all questions of ownership of the applications, that it was the duty of the Commissioner of Patents to recognize this right and permit B. to inspect and obtain copies of such applications, and that a mandamus to this effect should issue. The United States of America, ex rel. Boyer v. Moore, 253. 3. SAME-SAME-SAME.-Where in a suit in the supreme court of New York between the M. Co. and B. involving the title to certain inventions for which applications had been filed in the United States Patent Office it was held that B. was the owner of such inventions and it was ordered that such applications be assigned by the M. Co. to B., which order was finally complied with, Held that it was within the discretion of the Commissioner to suspend action upon such applications pending appeal from the decision of the court and to refuse B. access thereto or copies thereof until the final determination of the question of ownership of the inventions, although no stay of execution was granted, and that a mandamus requiring the Commissioner to permit B. to have access to such applications was improperly granted. *Moore, Commissioner of Patents, v. The United States of America, ex rel. Boyer, 276. 4. DIVISIONAL APPLICATION IN INTERFERENCE-ACCESS TO PARENT CASERULE 105.-Where a divisional application is involved in an interference and the applicant desires to secure the benefit of the date of the parent application without exposing the entire case, he is entitled to do so by filing under Rule 105 a certified copy of so much of the parent application as relates to the invention involved in the interference, withholding from the inspection of the opposing party the remaining portion thereof. Dilg and Fowler v. Shaver, 112.

5. Same—SAME OBJECTION TO SUFFICIENCY OF CERTIFIED COPY.-Where certified copies are filed under Rule 105 and timely objection is not made to the sufficiency thereof, objection thereto upon this ground is considered as waived. Id.

ACTION BY THE EXAMINER. See Amendments; Claims, 1, 2; Division of Applications; Examination of Applications; Examiner's Decision to be Respected by His Successors; Interference, 10, 11; Rejection of Claims; Reopening of Rejected Applications, 1; Suggested Claims, 2; Supervisory Authority of the Commissioner of Patents.

ACTION ON THE MERITS. See Division of Applications, 2, 3; Examination of Applications, 4.

ADMINISTRATOR. See Preliminary Statements, 1.

ADMISSION OF CLAIMS.

See Amendment, 6; Appeal.

ADMISSION OF EVIDENCE. See Interference, 26; Suits for Infringement, 2. AFFIDAVITS. See Motion to Amend Preliminary Statement, 1, 2; Motion to Dissolve Interference, 5, 22; Oath; Perjury; Trade-Marks, 58, 91.

AFFIDAVITS UNDER RULE 75. See Interference, 6.

1. TO OVERCOME REFERENCE-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 oach, 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. Ex parte McElroy, 52.

66

2. SAME INCOMPLETE APPLICATION NOT A "COMPLETION OF THE INVENTION."-The filing 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. Id. AGGREGATION.

See Patentability, 7.

ALTERATION OR SUBSTITUTION OF APPLICATIONS. See Authority of the Commissioner of Patents, 2, 3.

AMENDMENT. See Abandonment of Applications, 5, 6, 8, 9; Claims, 3, 4; Final Rejection of Claims; New Matter; Reopening of Rejected Applications. 1. RULES 66-68-PRACTICE.-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, applicant's right to further prosecution of the application before the Examiner is at an end, and the permission of further amendment is within the discretion of the office. Ex parte Miller, 23.

2. SAME-SAME.-Where the Examiner has held that certain claims are unpatentable and has fully advised the applicant of his reasons for such holding and the latter, after reasonable prosecution of the case, has failed to so amend the case as to necessitate the citation of new references and has been unable by argument to convince the Examiner that he was in error, an issue is reached, and the Examiner is justified in refusing to accept further amendment and in finally rejecting the claims then of record in the case. Id.

3. RULE 78-PRACTICE.-It is the well-settled practice that where amendments are presented under Rule 78 containing claims which the Examiner recommends are patentable such amendments will be entered, but that amendments presenting claims which the Primary Examiner holds are not patentable will not be entered. It is not necessary for the Examiner to give in detail his reasons for holding that the claims are unpatentable, and the rule does not provide for an indirect prosecution of the application. Ex parte Orndoff, 48.

4. APPLICATION-RIGHT TO AMEND-CITATION OF NEW REFERENCE AFTER APPEAL-TIME FOR OBJECTION.-Where an Examiner in his statement on appeal raises a new ground for rejection for the first time and offers applicant an opportunity to withdraw his appeal in view of that fact, which applicant declines to do, it is too late to raise an objection on appeal to the court of appeals that he was deprived of the opportunity to amend his claims after the citation of such reference. *In re Blackmore, 325.

3. AFTER DECISION OF THE EXAMINERS-IN-CHIEF-RECOMMENDATION UNDER RULE 139.-A statement in a decision of the Examiners-in-Chief that certain differences exist between applicant's device and the references which do not appear in the appealed claims does not amount to a recommendation under Rule 139 and furnishes no ground for the entry of an amendment containing new claims. Ex parte Smart, 127. 6. ADMISSION OF CLAIMS AFTER FINAL REJECTION-RULE 68 CONSTRUED.Claims admitted after final rejection under that part of Rule 68 requiring a showing duly verified, of good and sufficient reasons why they were not earlier presented," are for consideration by the Primary Examiner and not for the purpose of appeal only. Ex parte Meyer, 228. AMENDMENT TO NOTICE OF OPPOSITION. See Trade-Marks, 38.

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AMENDMENT TO PRELIMINARY STATEMENT. See Interference, 12; Motion to Amend Preliminary Statement.

ANTICIPATION. See Trade-Marks, 35, 41, 42, 67, 73, 74.

APPARATUS. See Construction of Claims, 2; Patentability, 5.

APPEAL. See Amendment, 4, 6; Appeal to the Court of Appeals of the District of Columbia; Appeal to the Examiners-in-Chief; Congressional Legislation; Examination of Applications, 3; Interference, 27, 28, 35; Mandamus; Motion to Amend Preliminary Statement, 1; Motion to Dissolve Interference, 10, 13, 18; Rejection of Claims, 1, 3; Reopening of Decided Cases; Reopening of Rejected Applications, 1; Suggested Claims, 2; Trade-Marks, 21, 36, 43, 50, 51, 57, 79, 89, 90.

PRESENTATION OF NEW CLAIMS.-The practice of submitting new claims for the original consideration of the Commissioner on appeal not approved. Ex parte Sears, 198.

APPEAL FROM THE COMMISSIONER OF PATENTS.

See Appeal to the

Court of Appeals of the District of Columbia; Decisions of the Court of Appeals of the District of Columbia; Jurisdiction of the Court of Appeals of the District of Columbia; Trade-Marks, 50. APPEAL FROM THE EXAMINER OF INTERFERENCES.

Dissolve Interference, 10.

See Motion to

APPEAL TO THE COMMISSIONER OF PATENTS. See Rejection of Claims, 1; Trade-Marks, 36, 55, 57.

APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Amendment, 4; Decisions of the Court of Appeals of the District of Columbia; Interference, 28; Jurisdiction of the Court of Appeals of the District of Columbia; Rejection of Claims, 1.

1. DECISION ON MOTION TO DISSOLVE.-The Court of Appeals of the District of Columbia has no jurisdiction to entertain an appeal from a decision of the Commissioner of Patents on a motion to dissolve an interference between an applicant for reissue and an original application holding that appellant had no right to a reissue on the ground that his showing of inadvertence, accident, or mistake was insufficient and that he had failed to excuse the long delay of more than two years in filing the reissue application, as such judgment does not constitute an adjudication of the question of priority between the parties. *In re Fullagar, 270.

2. SAME PARTIES TO APPEAL.-A motion by E. that he be made a party to an appeal to the Court of Appeals of the District of Columbia taken by F. from a decision of the Commissioner of Patents on a motion to dissolve, holding that F. had no right to make the claims of the issue because of his delay in filing his reissue application involved in this interference denied on the ground that the Commissioner's decision did not result in an award of priority to E., and therefore F. could not bring him before the court by an appeal. For the same reason E.'s motions to have the docket entry changed and to dismiss F.'s appeal denied. Id.

APPEAL TO THE EXAMINERS-IN-CHIEF. See Motion to Reopen Interference to Take Testimony, 3; Rejection of Claims.

FORMAL OBJECTIONS TO DRAWINGS-Forwarding APPEAL.-The correction of the drawings which are lacking merely in artistic merit is not one of the formal matters contemplated by Rule 134 which must be settled before the case can be appealed to the Examiners-in-Chief. Ea porte Proctor, 3.

APPEAL TO THE SUPREME COURT OF THE UNITED STATES. See Decisions of the Court of Appeals of the District of Columbia; TradeMarks, 50, 51.

APPLICANTS. See Attorneys; Joint Applicants; Preliminary Statements, 1.
APPLICANT AND PATENTEE. See Interference, 11, 14, 15, 25.

APPLICANT AND REGISTRANT. See Trade-Marks, 2, 56, 79, 91.
APPLICATION FOR REGISTRATION. See Trade-Marks, 80.
APPLICATIONS.

See Abandoned Applications; Abandonment of Applications; Abandonment of Invention; Access to Abandoned Applications; Access to Pending Applications; Affidavits Under Rule 75, 2; Amendment; Authority of the Commissioner of Patents, 2, 3; Bankruptcy; Congressional Legislation; Construction of Statutes; Continuous Applications; Delay in Filing Applications; Designs; Divisional Applications; Division of Applications; Drawings; Examination of Applications; Interference, 11, 13, 39, 40; Joint Applicants; Labels and Prints; New Matter; Oath; Perjury; Power of Attorney; Reissues; Reopening of Rejected Applications; Specifications.

APPLICATIONS STRICKEN FROM THE FILES OF THE PATENT OFFICE. See Delay in Filing Application.

ASSIGNEES. See Abandoned Applications; Access to Abandoned Applications; Access to Pending Applications, 2, 3; Assignments, 1, 2; Attorneys; Bankruptcy; Copyright, 1, 2; Power of Attorney, 2; Preliminary Statements.

ASSIGNMENTS.

See Copyright, 1, 2; Trade-Marks, 56.

1. NO REQUEST THAT THE PATENT ISSUE TO THE ASSIGNEE-EQUITABLE TITLE-An assignment in which there is no request that the patent issue to the assignee conveys only an equitable title. Ex parte Stanford, 7.

2. COMMISSIONER NOT BOUND TO RECOGNIZE-ISSUANCE OF PATENT.-There is no law compelling the Commissioner of Patents to recognize an assignment. It is no part of his duty to pass upon the validity or invalidity of assignments filed in his office, and it is a matter within his discretion whether he shall issue the patent to the assignee or the inventor. *Moore, Commissioner of Patents, v. The United States of America, ex rel Boyer, 276.

3. CONFLICTING PATENT ISSUED TO INVENTOR.-Where an inventor 'assigns his entire rights in an application for patent to different parties, Held that the patent should issue to the inventor. In re Chicago Hook and Eye Company, 148.

4. AUTHORITY OF THE COMMISSIONER.-In case of conflicting assignments it is well settled that the Commissioner has authority to ignore those assignments and issue the patent to the inventor. Id.

ATTORNEYS. Abandonment of Applications, 3, 5, 6; Authority of the Commissioner of Patents, 2, 3; Brief; Power of Attorney; Supervisory Authority of the Commissioner of Patents; Testimony, 4.

OWNER OF EQUITABLE INTEREST MAY NOT CONTROL APPOINTMENT TO EXCLUSION OF APPLICANT.-The assignee of an entire interest in the invention may not revoke a power of attorney given by the applicant and appoint one of his own selection where the assignment does not request that the patent shall issue to said assignee. Such an assignment conveys merely an equitable and not a legal title. Ex parte Stanford, 7.

AUTHORITY OF THE COMMISSIONER OF PATENTS. See Assignments, 4; Congressional Legislation.

1. COMMISSIONER OF PATENTS-POWER TO INVESTIGATE THE CONDUCT OF HIS OFFICE.-The Commissioner of Patents is the official head of a great and important public office, and has the power to institute investigations into the conduct of his office generally, with a view to the efficiency of the service and the eradication of corrupt practice, if such are found to exist. The manner in which such investigation shall be conducted is a matter within his discretion, and no court is vested with supervisory authority over him. Moore, Commissioner of Patents, v. Heany, The Heany Company, and the Heany Lamp Co., 488.

*

2. SAME SAME.-The Commissioner has the power, either in an ex parte or an interference case, to inquire and determine whether an application has been altered or substituted without authority. Whether such alteration shall have been made by the attorney of the applicant with the latter's connivance or consent is immaterial. The efficacy of the application would be destroyed by such alteration. * Id. 3. ALTERATION OF APPLICATIONS-CRIMINAL PROCEEDING-RES ADJUDICATA.-The power of the Commissioner to declare as a result of investigation that an application has been destroyed by the reason of alteration is not affected by the fact that in a criminal prosecution against the applicant, his attorney, and another for conspiracy in the matter of such alterations the applicant was acquitted. The question adjudicated in the criminal proceedings was not whether the application had been altered, but whether the applicant was a guilty party thereto. The fact of alteration is not res adjudicata. * Id. BANKRUPTCY. ASSIGNEE OF APPLICATION-TITLE OF TRUSTEE-Where an application for patent is assigned and prior to the issuance of a patent thereon the assignee is declared a bankrupt, Held that the trustee in bankruptcy acquires no title to such application. In re Ives, 238.

BILL IN EQUITY UNDER SECTION 4915, REVISED STATUTES. See Trade-Marks, 51

PATENTABILITY.

a

The evidence presented considered and Held insufficient to overcome the rulings of the Patent Office and the Court of Appeals of the District of Columbia that the claims are unpatentable. Dilg v. Moore (substituted for Allen,) Commissioner of Patents of the United States, 255.

BLUEPRINTS.

See Interference, 1; Motion to Reopen Interference to Take

Testimony, 1. BRIEF. See Motion to Dissolve Interference, 10; Public-Use Proceedings, 1. 1. INTERLOCUTory Hearings.—Where at a hearing on a motion for dissolution a brief was filed after the attorney had made his argument and near the close of the hearing, Held that this brief was filed in compliance with the ruling in Royce v. Kempshall. (C. D., 1905, 292; 116 O. G., 2011.) Stevens v. Patterson, 80.

2. SAME. The question of allowing reply briefs to be filed is one within the discretion of the tribunal before whom the hearing is had. Id. BURDEN OF PROOF. See Abandonment of Invention, 3; Interference, 27; Motion to Amend Preliminary Statement, 2; Testimony, 3.

CANCELATION OF TRADE-MARK REGISTRATION. See Trade-Marks, 18. 19, 45, 107, 108.