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made and that it was not clear just what evidence Ricketts proposed to introduce or that the evidence, if presented, would be of such a character as to be admissible.
In support of the motion were filed the affidavits of two experts, Keilholtz and Wagner. It is not alleged that Ambruster and Beck's device would not operate according to the description in their specification. On page 3 of the Wagner affidavit is the following statement:
The Examiner continues :
“There is nothing inconsistent or impossible in the operation of Ambruster & Beck's apparatus as described by them, nor is there anything in the record to prove that such operation is impossible.”
This statement agrees perfectly with my understanding of the Ambruster & Beck specification. I understand that there 18 no contention that the system of Ambruster & Beck is not an operative system, as and for the purposes described, and aside from the counts at issue in this interference. But if the Ambruster & Beck device is operated so as to perform the purposes and functions described in the specification, it will not operate to perform the purposes and functions of the terms of the issue.
In his brief appellant states:
From this admission it is clear that the controversy bas narrowed itself down to a question of whether the words “reversing the generating means," as used in the issue, can be correctly applied in a true electrical sense to the structure of Ambruster & Beck.
It thus appears that the contention is not that the Ambruster and Beck device is inoperative, but rather that it will not operate as called for in the issue when said issue is construed as Ricketts contends it should be construed. It appears that the proposed testimony would be largely that of experts as to the meaning of the issue. As stated in the case of Pym v. Hadaway, (C. D., 1907, 189; 129 O. G., 480 :)
The Office cannot delegate the interpretation of the legal character of the claims of an application to experts employed by the opposing parties.
Moreover, the nature of the testimony and what it is proposed to prove thereby is not set forth with sufficient particularity. In his affidavit Keilholtz states that he constructed certain apparatus and tested it; but he does not describe the apparatus in detail nor the result of the tests.
It is believed that such a case is not made out as will warrant the taking of testimony.
The decision of the Examiner of Interferences is affirmed,
EX PARTE VINIELLO.
Decided June 25, 1909.
144 0. G., 276.
1. EXAMINATION OF APPLICATION_DESCRIPTION CLEAR-DEVICE THOUGHT TO BE
INOPERATIVE-ACTION ON MERITS. Where the specification of an application clearly describes the device sought to be patented and the Examiner is of the opinion that the device disclosed is inoperative, he should not refuse action on the merits until its inoperativeness 18 demonstrated, but he should reject the claims on the grounds that they cover an Inoperative device and on all other grounds
set forth in Rule 133 which may be applicable. 2. ABANDONMENT OF APPLICATION-DEVICE HELD TO BE INOPERATIVE-SUFFICIENCY
OF AMENDMENT. Where the Examiner rejects the claims of an application on the ground that they cover an inoperative device and requires a demonstration of the utility thereof and within the year allowed by law for responsive action appHicant files an argument attempting to show that the device would operate as set forth in the specification, Held that the application is not
abandoned for lack of proper prosecution. ON PETITION.
Mr. T. F. Bourne for the applicant.
This is a petition from the action of the Primary Examiner holding the application to have become abandoned. It is prayed that said decision be set aside and that the Examiner be instructed to consider the case fully upon its merits.
In the first action in this case the Examiner rejected the claims on the ground that the device was inoperative—that is, that it would not effect the purpose or result set out in the specification-and required that applicant demonstrate the utility of his device before any action would be given on the merits of the claims. In response thereto applicant filed an argument attempting to show that the device would operate as set forth. The Examiner considered this to be an insufficient response and held the application abandoned for lack of proper prosecution.
It is believed that the Examiner's action was not in accordance with the practice of the Office. It is not claimed that the specification was in any sense obscure, and in view of this fact, in accordance with the decision of ex parte Stocker, (C. D., 1902, 53; 98 O. G., 1705) the Examiner should not have suspended action on the merits, but should have rejected the claims. While the Examiner's first action is stated to be a rejection for lack of utility, it is noted that in the next action, in response to the applicant's argument endeavoring to
show the operativeness of the device, the Examiner did not again reject the claims, but held that the arguments filed were not a sufficient response, virtually refusing any action whatever on the merits until the requirement for a demonstration of the operativeness of the device had been complied with.
Such a refusal to act upon the merits of the case and forcing a review of the question at issue between applicant and the Examiner by petition to the Commissioner places the Commissioner in the position of passing final judgment upon the merits of the applicant's case, as no right of appeal to the Court of Appeals of the District of Columbia exists in a case of this kind, except as provided by sections 4909, 4910, and 4911, Revised Statutes. (In re Fullagar, post, 270; 138 0. G., 259.) Upon the question of applicant's right to a patent he has, under these statutes, the right of appeal to the Examiners-in-Chief, to the Commissioner, and to the Court of Appeals of the District of Columbia. The Examiner being of the opin. ion that the device was inoperative, he should have rejected the claims for this reason and for any other of the reasons stated in Rule 133 which were applicable. (Ex parte Smith, 60 MS. D., 425; ex parte Payne, C. D., 1904, 42; 108 0. G., 1049.) A review of the Examiner's decision upon the question of the inoperativeness of the device might then have been had upon appeals from such decision, as provided by the statutes.
As far as the Examiner's action went applicant's response thereto was clearly sufficient, as it was an argument traversing the Examiner's position, and in any event he was entitled to a final rejection, with the right of appeal; but inasmuch as appeals should not be taken piecemeal an examination of the art should have been made at the same time and the claims should have been rejected thereon, if such rejection was justified.
The decision of the Examiner holding the application to have become abandoned by failure to properly respond to the Office action of January 13, 1908, is set aside, and the Examiner is directed to yive a full action upon the merits of the case.
DILG AND FOWLER v. SHAVER.
Decided May 14, 1909.
144 0. G., 561.
1. ACCESS TO PENDING APPLICATIONS-DIVISIONAL APPLICATION IN INTERFER
ENCE-ACCESS TO PARENT Case-RULE 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, be is entitled to do so by Aling 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 in
spection of the opposing party the remaining portion thereof. 2. SAME-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.
CAKE OF SOAP.
Mr.J. Odell Fowler for Dilg and Fowler.
This case comes up on a rehearing of Shaver's petition for permişsion to have access to and copies of the application of Dilg and Fowler, No. 260,435, of which the application of Dilg and Fowler involved in this interference is alleged to be a division, which petition was denied by me on April 16, 1909. .
This interference was declared July 23, 1907. In the preliminary statement of Dilg and Fowler they alleged that the application involved in this interference was a division of their application No. 260,435, and on August 21, 1907, they made a motion to shift the burden of proof, for the reason that the filing date of application No. 260,435 was prior to the filing date of Shaver's application. On August 28, 1907, a stipulation was made between the attorney for Dilg and Fowler and the attorney for Shaver that the attorney for Shaver might inspect and obtain copies of that portion of application No. 260,435 which related to the cake of soap disclosed in Dilg and Fowler's application No. 350,065, which is involved in this interference. Before a hearing was had on the motion to shift the burden of proof Shaver filed a motion that he be granted access to and permission to obtain copies of Dilg and Fowler's parent application. This motion was granted by me on September 28, 1907, and in my. decision it was stated that had the applicants promptly filed certified copies under Rule 105 of that part of the parent case relating to the cake of soap access would have been denied, following the practice set forth in Reece v. Fenwick, (C. D., 1901, 73; 96 0. G., 643.) On October 5, 1907, a rehearing asked for by Dilg and Fowler was denied, for the reason that no proper ground therefor was alleged; but it was stated that as the record showed that Dilg and Fowler were attempting to comply with Rule 105 and with the practice outlined in Reece v. Fenwick the order of October 2, 1907, was suspended pending the final determination of the sufficiency of the copies, and upon such determination the order granting access should be considered to be vacated. Later on a certified copy of that part of the parent
application relating to the cake of soap was filed. No further steps were taken by Shaver toward obtaining access to the parent application until the filing of the petition of April 10, 1909, which petition, as above stated, was denied on April 16, 1909.
It is contended on behalf of Shaver that he is entitled to a complete copy of the parent application of Dilg and Fowler, first, because Rule 105 does not apply to the state of facts disclosed in this case, since Dilg and, Fowler's earlier application is not “involved in interference;” second, on the broader ground that Dilg and Fowler are relying on this earlier application as a piece of evidence to establish a date of conception and constructive reduction to practice of the invention, and that Shaver, under the well-known rules of evidence, is entitled to see and examine this piece of evidence.
It is true that application No. 260,435 is not " involved” in the interference in the sense that the claims corresponding to the counts of the issue are claims of that application; but the facts of the case are identical with those in the case of Reece v. Fenwick, supra, in which it was held that access to a parent application would not be granted where a certified copy of all parts of the parent application except those which relate to a separate and independent invention had been filed. In that case it was pointed out that, under the decisions of in re Swihart (C. D., 1900, 10; 90 O. G., 601) and in re Gillespie, (C. D., 1900, 149; 92 0. G., 2159,) Reece would be entitled to inspect and obtain copies of Fenwick's parent application, upon which the latter relied to establish conception and constructive reduction to practice, if Fenwick had not taken further steps after the filing of his divisional application and had caused to be filed a certified copy of so much of the original application as was involved in interference, in accordance with Rule 105. The decision, furthermore, pointed out that Rule 105 did not contemplate the withholding by one party of any portion of his original or parent application from the other which would preclude the latter from intelligently making any motion he was entitled to make under the rules, and stated that, where a certified copy of so much of the application as related to the
a application in interference was filed, the opposing party was given all the information to which he was entitled.
As stated above, the facts in this case are identical with the facts in Reece v. Fenwick, and having been given a certified copy of all that portion of the original application which relates to the disclosure here in interference Shaver is in a position to intelligently make any of the motions which he is entitled to make under the rules.
It is well settled that where certain evidence is offered and no objection is made thereto this objection is waived. If at the time the certified copy of the earlier application of Dilg and Fowler was filed counsel for Shaver had not been satisfied that he had obtained all of