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COMMISSIONER OF PATENTS
THE YEAR 1894.
EX PARTE HULBERT.
Decided December 2, 1893.
66 0. G., 315. 1. REJECTION FOR INDIVISIBILITY-APPEAL.
A rejection may bo given upon a patent granted to the same inventor upon an application which was pending concurrently with the application containing the rejected claim, and such rejection is, like all others, appealable to the Exam
iners-in-Chief. 2. PETITION-APPEAL.
“There is no petition from the rejection of a claiin by the Primary Examiner upon anything which he may hold is a substantial disclosure and anticipation of a claim." The remedy is by appeal to the Examiners-in-Chief.
Application of Ralph D. W. Hulbert filed April 4, 1892, No. 497,619.
Messrs. C. & E. W. Bradforol for the applicant
FISHER, Assistant Commissioner:
This is a petition taken from the action of the Primary Examiner requesting that the Examiner be instructed that he may not reject a claim of an application upon a patent granted to the same inventor upon an application which was pending concurrently with the present application.
There cau be no question that he may so reject. In ex parte Feister (C. D., 1890, 167; 53 0.G., 1089) it was held that the practice established by er parte Langlois (C.D., 1878, 57; 110, G., 84) and ex parte Gaboury (C. D., 1886, 28; 37 (), G., 217) was correct; that a later application was no bar to the allowance of an earlier application by the same applicant for the same invention, and that after one had gone to issue or patent the other should not be allowed.
10693 PAT— 1
This rule carried with it, as a corollary, that the Examiner should reject in such a case, and the decision had as a companion ex parte Woodward, (C. D., 1890, 169; 53 O. G., 1090,) which was an approval of a rejection for indivisibility of invention.
It would naturally follow from these cases that the Examiner, if be refused it claim on such a ground, should reject, whether applicant aclmitted or denied identity or indivisibility, and that from such a rejec. tion appeal would lie to the Examiners-in-Chief, and this was expressly decided in ex parte Feister, (C.D., 1892, 203; 61 0.G., 152,) ex parte Cahill, (C. D., 1893, 78; 63 0. G., 1815,) ex parte UcDonald, (C. D., 1893, 99; 64 0.G., 857,) and ex parte Seymour, (C. D., 1893, 127; 650. G.,751.) These cases clearly and emphatically lold that there is no petition from the rejection of a claim by the Primary Examiner upon anything which he may bold is a substantial disclosure and anticipation of the claim, and that applicant's remedy is by appeal to the Board of Examiners-inChief.
The petition is therefore dismissed.
KINYON r. CARTER.
Decided December 21, 1893.
66 (), G., 513.
1. INTERFERENCE.-BROAD AND NARROW CLAIMS.
Where different specific forms are shown by two applicants, both capable of being covered by a broad claim, and one applicant makes such broad claim aud the other makes a more limited claim to tbe same structure, there is an interfer
ence, which may be avoided by the disclaimer provided for by Rule 107. 2. SAME-SAJE.
The rule of Reed v. Landman (C. D., 1891, 73; 55 0. G., 1275) does not apply where both parties are applicants. 3. SAME-SAME-DIFFERENCES xot PATENTABLE.
An additional reason for not dissolving is that the features of novelty on which the claims were allowed are the same in each case, and that the differences of the specific claim over the broad one are held by the Examiner immaterial in view of the prior state of the art.
APPEAL on motion.
Application of Frederick G. Kinyon filed May 9, 1892, No. 432,263. Application of William T. Carter filed September 15, 1891, No. 405,776.
Messrs. C. A. Snow & Co. for Kinyon.
FISIER, A88sistant Commissioner:
This is an appeal taken from the decision of the Primary Examiner refusing to dissolve the above-entitled interference.
The two applications cover an apparatus used in playing a game. The game is the same in both cases; but the apparatus is slightly different.
Applicant Kinyon has a broad claim, which covers not only the particular form shown in his application, but also the form shown in Carter's application. Carter's application has one claim, which is limited to the specific form shown. Kinyon, the applicant having the broad claim, is the one who seeks to have the interference dissolved.
The question to be decided, therefore, is whether or not it is proper to declare an interference between two applications which show and claim different species and only one of which has a claim broad enough to cover both species. If each application contained this broad claim, it is unquestionable that an interference ought to be declared. (Searle v. Frumveller v. Sessions, C. D., 1892, 27; 58 O. G., 804; Dodd v. Reading, C. D., 1892, 49; 58 0.G., 1413.)
If one of the cases is a patent and the other an application and the patent contains narrow claims to one species and the application broad claims dominating those of the patent and specific claims directed to a different species, it is also unquestionable that an interference ought not to be declared. (Reed v. Landman, C. D., 1891, 73; 55 0.G., 1275; Zeitinger v. Reynolds v. McIntire, C. D., 1891, 212; 57 0. G., 1279.)
It becomes necessary, therefore, to consider whether the principle governing the present interference is the same as that governing the interference between a patent and an application.
It is obvious that the applicant Carter might have had a claim in his application as broad as the broad claim in the Kinyon application. In such case an interference would be proper. It is also obvious that the applicant having the narrow claim may not wish to contest the interference. In such case he might file a disclaimer, under Rule 107, and the interference would be dissolved as a matter of course. If, however, an interference had never been declared, both cases would have been passed to issue and the applicant having the single narrow claim would find his patent dominated by the patent having the broad claim with. out having had a chance to have decided by an interference which party was entitled to the broad claim as being the original inventor. His only remedy, as far as this Office is concerned, would be to file a reissue application and demand that it be put in interference with the patent containing the broad claim. If this should be done and he should suc. ceed in this interference, the reissued patent would contain the broad claim and the claim to the species shown in his application. There would then be extant two patents having an interfering claim. This would necessitate a suit in equity if either patentee wished to have the broad claim of the other patentee declared void. Necessarily this would result in an increase of litigation, and if interferences in this Office have any justification it is that they should in some measure prevent litigation by baving only one of the interfering applications mature into a patent.
I therefore think the action of the Examiner in declaring an interference was proper. If the applicant having the narrow claim does not choose to contest the interference, he can easily avoid such a proceed. ing by filing a disclaimer under Rule 107. For the applicant having the broad claim, as is the present case, to bring a motion for dissolution seems indefensible. He practically asks that the broad claim be allowed to him and refused to another applicant who has a right to make it.
In the present case there is an additional reason for not dissolving the interference, and it is that, according to the statement of the Examiner, there would be nothing patentable in Carter's application if Kinyon's claims were patented, for the reason that the features of novelty on which the claims in both applications were allowed are the same in both cases, and that the differences which Kinyon points out between the species shown in his application and that shown in Carter's application are immaterial in view of the prior state of the art.
The decision of the Examiner refusing to dissolve the interference is affirmed.
EX PARTE JEWETT.
66 0. G., 651. JEWETT-DAMPER-REGULATOR-BROAD CLAIM THEREFOR REJECTED—ANTICIPATION.
A claim for the combination in a temperature-regulator of a fluid-contain. ing chamber, a diaphragm arranged to be acted on by the expansion of the fluid in the chainber, and means for increasing and decreasing the quantity of the fluid in the chamber, Held to be anticipated by the patent to Jewett, No. 427,327, dlated May 6, 1890, for a damper-regulator, and patent to Atsatt, No. 406,018, dated July 2, 1889, covering a device for automatically regulating combustion in hot-water and hot-air heating apparatus, which discloses all else covered by the claiin except applicant's particular means (an air-pump) for increasing and decreasing the air in the chamber; but it is common to use an air-pump for such purpose.
APPEAL from the Examiners-in-Chief.
Application of Charles G. Jewett, No. 345,499, tiled March 27, 1890. Mr. Adolph Barthel and Ur. L. S. Bacon for the applicant.
Appeal is taken from the decision of the Examiners-in-Chief rejecting the following claim on the ground that it is indefinite:
2. In a temperature-regulator, the combination with the finid-containing chainber, a diaphragm arranged to be acted on by the expansion of said fluid, and means connecting with the fluidl-chamber for increasing or decreasing the quantity of fluid theroin, substantially as described.