ABANDONMENT OF INVENTION. See Priority of Invention, 4.

1. RENEWAL APPLICATION-QUESTION OF ABANDONMENT-LIMITED TO THE INVENTION CLAIMED.-While in the case of a renewal application the intention of the applicant in allowing the original application to become forfeited may be inquired into for the purpose of determining the question of abandonment, such inquiry must be directed to the abandonment of the invention claimed in the original application and not to some other invention which may be described incidentally therein and subsequently brought into interference when claimed in a later application. *Saunders v. Miller, 461.

2. STATEMENT IN PROCESS APPLICATION THAT APPARATUS IS NOT CLAIMED— NOT A DISCLAIMER NOR AN ABANDONMENT.-A statement in a process application which disclosed the apparatus used for carrying out such process that the apparatus formed no part of the invention is not a disclaimer nor an abandonment of the right to subsequently claim a patent for such apparatus. *Id.

3. INTERFERENCE-BURDEN OF PROOF ON PARTY CHARGING.-Abandonment is not to be presumed, and the burden is on the one charging it to establish it by clear and convincing proof. *Id.

4. SAME-PRESUMPTION MAY BE REBUTTED.-Where the evidence raises a presumption of abandonment, it may be rebutted by showing acts assertive of the inventor's right and his intention by experiment or improvement to perfect his discovery. *Id.

5. SAME PRIORITY.—In an interference between D. and B. & S. involving a species different from that involved in the present interference it was held that D. had forfeited his rights in favor of B. & S. Held that the testimony in the earlier interference has no bearing on the question of abandonment of the invention in issue in the present interference. Von Recklinghausen v. Dempster, 194.

ABANDONMENT OF TRADE-MARKS. See Trade-Marks, 39, 40, 91. ACCESS TO ABANDONED APPLICATIONS. See Abandoned Applications. PETITION GRANTED.-Where suit is brought on a patent the file-wrapper of which shows that all the claims thereof were the allowed claims of a prior application belonging to the same assignee, which were transferred to the patented application, the prior application at the same time being formally abandoned, and the only discussion of the merits of the claims was in the prior application, Held that the defendants are entitled to inspect and obtain copies of the prior application if it can be identified by the Office, although neither the patent itself nor the file-wrapper identifies it by the name of the applicant, the serial number, or the date of filing. In re Vacuum Specialty Company, 88.

ACCESS TO PENDING APPLICATIONS. See Bankruptcy; Drawings. 1. INTERFERENCE.-After an interference is finally decided the parties thereto are not entitled to further inspect each other's application. Ex parte Sirl, 12.

2. RIGHTS OF ASSIGNEE-JUDGMENT OF STATE COURT-MANDAMUS.-Where in 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, and an appeal was taken from such decision, but no supersedeas of the order of the trial court was ever had, Held that the judgment of the supreme court of New York, until reversed or modified, was con

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.
United States of America, ex rel. Boyer v. Moore, 253.

The 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 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. Ex parte McElroy, 52.

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.

the Commissioner of Patents, 2, 3.

See Authority of

ALTERNATIVES. See Trade-Marks, 71. 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.

5. 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. Er 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.

AMENDMENT TO PRELIMINARY STATEMENT.

tion to Amend Preliminary Statement.

See Interference, 12; Mo

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 Interfer

ence 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. Ex parte Proctor, 3.

APPEAL TO THE SUPREME COURT OF THE UNITED STATES. See Decisions of the Court of Appeals of the District of Columbia; Trade

Marks, 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.