REJECTION OF CLAIMS. See Abandonment of Applications, 1, 4, 8; Construction of Claims, 1; Examination of Applications; Examiner's Decision to be Respected by His Successors; Final Rejection of Claims; Interference, 25; Reopening of Rejected Applications; Suggested Claims, 2.

1. CLAIMS-FUNCTIONAL-REMEDY BY APPEAL.-In all cases where the Examiner holds a claim otherwise clear and intelligible to be functionalthat is, for a function merely or because it fails to include sufficient mechanical elements to effect the function expressed in the claimthe action of the Examiner shall be a rejection of the claim upon the ground that the claim does not point out the invention with sufficient particularity and distinctness to meet the requirements of section 4888, Revised Statutes. The rejection shall at the same time include all of the grounds enumerated in Rule 133 that the Examiner thinks applicable. Applicant's remedy is by way of appeal successively to the Examiners-in-Chief, the Commissioner, and the Court of Appeals of the District of Columbia. Ex parte Bitner, 32.

2. RECOMMENDATION OF THE EXAMINERS-IN-CHIEF-ACTION BY PRIMARY EXAMINER-REOPENING OF THE CASE.-Where the Examiners-in-Chief stated that a claim was patentable over the references cited against it, but recommended that it be rejected upon another reference, and the Examiner rejected the claim on this reference, Held that while this action reopened the case such reopening was merely as to the subjectmatter of the rejected claim. Ex parte Dieterich, 82.

3. SAME-APPEAL.-Where on appeal from the rejection of certain claims the Examiners-in-Chief hold that the references cited are insufficient to anticipate the claims, but call attention to certain other references and suggest that the Examiner reject the claims thereon and the Examiner does so reject the claims, Held that appeal from this action lies to the Examiners-in-Chief in the first instance. Ex parte Motsinger, 101.

REMEDY. See Claims, 2; Jurisdiction of the Courts Over Practice in the Patent Office; Mandamus, 1; Rejection of Claims, 1; Trade-Marks, 77, 79.

RENEWAL OF FORFEITED APPLICATIONS. See Abandonment of Invention, 1.

RENEWED MOTIONS. See Motion to Dissolve Interference, 13, 14, 18.
REOPENING OF DECIDED CASES. See Trade-Marks, 87.

REOPENING CASE AFTER APPEAL.-An inventor is presumed to know the essence of his invention before it is filed, certainly before it has been prosecuted through an appeal, and the mere statement that a certain feature has been found to be important is not a showing of sufficient cause to justify reopening the case to admit new claims. Ex parte Wagner, 241.

REOPENING INTERFERENCE TO TAKE TESTIMONY. See Interference, 16, 17; Mandamus, 2; Motion to Reopen Interference to take Testimony; Trade-Marks, 89, 90, 94.

REOPENING OF REJECTED APPLICATIONS. See Rejection of Claims, 2. 1. PRACTICE-FINAL ACTION.-Where one petition for the entry of an amendment for the purposes of appeal or for reconsideration of the merits, at the discretion of the Examiner, has been granted and the Examiner in entering the amendment indicates that it is done for the purpose of appeal, Held that the applicant is not in a position to urge

that the case was reopened for the consideration of new claims and
that a further amendment containing such claims was properly refused
entry. Ex parte Wright, 134.

2. SHOWING INSUFFICIENT.-Where the claims in a case were properly
finally rejected and it was thereafter sought to amend and as a reason
for not amending earlier it was alleged that the applicant, who was a
foreigner, was not sufficiently familiar with the patent practice of the
United States to fully appreciate the scope of the claims originally
presented and that the attorney was not informed until after the final
rejection that the subject-matter of the proposed claims was an impor-
tant part of the invention, Held that the showing does not warrant
reopening the case for further prosecution before the Examiner. Ex
parte Seisser, 152.

REPAIR AND RECONSTRUCTION. See Infringement, 2.

RES ADJUDICATA. See Authority of the Commissioner of Patents, 3; Inter-
ference, 15; Trade-Marks, 36, 66.

RESPONSIVE ACTION BY APPLICANT.

Amendment, 1, 2, 4.

See Abandonment of Applications;

REVIVAL OF ABANDONED APPLICATIONS. See Abandonment of Appli-

cations, 7.

RIGHT OF APPEAL.

See Mandamus, 2; Motion to Dissolve Interference, 14,
18; Trade-Marks, 43.

RIGHT TO MAKE CLAIM. See Claims, 4, 5; Interference, 9, 10, 11, 14, 20, 21,
25, 28, 31, 32, 33, 38, 39; Motion to Dissolve Interference, 2, 16, 17;
Motion to Reopen Interference to Take Testimony, 3; Reissues, 2;
Supervisory Authority of the Commissioner of Patents.

RIGHT TO PATENT. See Concealment of Invention.

RULES OF PRACTICE OF THE UNITED STATES PATENT OFFICE.
FAILURE TO COMPLY-IGNORANCE NO EXCUSE.-That a party had not the
means to employ counsel and was ignorant of the rules of practice is
not a sufficient excuse for waiving the requirements thereof. Mattice
v. Langworthy, 38.

SIGNATURE TO AMENDMENTS.

See Abandonment of Applications, 5, 6.
SIMILARITY OF MARKS. See Trade-Marks, 7, 10, 27, 35, 41, 42, 59, 60, 67,

68, 73, 75, 76, 81, 98, 99, 102, 103, 105, 108.

SPECIFICATIONS. See Claims, 3, 4, 5; Examination of Applications, 4; In-
terference, 31; Reissues, 2, 3.

1. SUFFICIENCY OF DISCLOSURE.—In claiming a patent for the discovery of a
useful result in any art, machine, manufacture, or composition of
matter by the use of certain means the application must specify "the
means he uses in a manner so full and exact, that any one skilled in
the science to which it appertains, can, by using the means he specifies,
without any addition to, or subtraction from them, produce precisely
the result he describes." (O'Reilly v. Morse, 15 How., 62, 119.) * In
re Blackmore, 325.

2. SUFFICIENCY OF DESCRIPTION.-The specification of the Golding patent,
No. 527,242, for a process of making open metal-work Held sufficient to
enable one skilled in the art to practice the invention. **The Ex-
panded Metal Company et al. v. Bradford et al., and The General Fire-
proofing Company v. The Expanded Metal Company, 521.

3. DIFFERENCE IN TERMINOLOGY.-Where the interference involves a struc-
ture creating a "main" and a leakage" flux, it is immaterial for the
purposes of the interference that the flux described as the "main flux"

by one party is called the "leakage-flux" by the other, and vice versa,
in their respective specifications. Pratt v. de Ferranti and Hamilton,
202.

STATE OF THE ART. See Construction of Specifications and Patents, 2, 3;
Invention, 7, 8, 9, 10, 11; New Matter; Patentability, 4, 6, 7; Reduction
to Practice, 5, 6.

STATE STATUTES. See Trade-Marks, 39, 40.

STIPULATION. See Testimony, 7.

SUBSTITUTE OATH. See Oath.

SUCCESSORS TO REGISTRANT.

See Trade-Marks, 55, 56.

See Interference, 1.

SUFFICIENCY OF ACTION. See Abandonment of Applications, 1, 2, 4.
SUFFICIENCY OF EVIDENCE.

SUGGESTED CLAIMS. See Claims, 1.

1. UNDER RULE 96-EXTENSION OF TIME.-Where, in response to the sugges-
tion of claims under Rule 98, the applicant shows that it is practically
impossible for him to comply with the suggestion within the time
specified and requests a reasonable extension thereof, such request
should be granted. Ex parte Hellmund, 62.

2. REJECTION OF CLAIMS ON GROUND OF IMPLIED DISCLAIMER-APPEAL OB
PETITION.-Where an applicant makes claims suggested under Rule
96 after the time set and the Examiner rejects them on the ground of
implied disclaimer, ordinarily appeal from such rejection must be to
the Examiners-in-Chief; but where the Examiner sets such a short
period as to make it practically impossible for the applicant to file
the claims in time and he refuses to extend such time the action will
be reviewed by the Commissioner on petition.
SUITS FOR INFRINGEMENT.

Trade-Marks, 45.

Id.

See Access to Abandoned Applications;

1. PRIORITY OF INVENTION-EFFECT OF DECISION IN INTERFERENCE PROCEED-
ING. Where in a suit for infringement of a patent which was granted
after an interference proceeding in the Patent Office the only defense
set up is that the other party to the interference was the prior in-
ventor, the decision of the Patent Office tribunals and the Court of
Appeals of the District of Columbia on the question of fact involved
is entitled to great weight, if it is not absolutely controlling. Auto-
matic Weighing Machine Company v. Pneumatic Scale Corporation,
Limited, 498.

2. EVIDENCE-FORMER SUIT-PRIVIES.-The mere fact that defendants in a
suit for infringement of a patent contributed to the defense in a prior
suit on the same patent against other parties, it not being shown that
the present defendants had the right to intermeddle in any way in
the conduct of that case, does not render them privies to such prior
suit, and the testimony of a witness therein, since deceased, is inad-
missible against them to establish infringement. **Rumford Chemical
Works v. Hygienic Chemical Company of New Jersey; Hygienic Chemi-
cal Company of New York et al. v. Rumford Chemical Works, 564.
SUITS UNDER SECTION 4915, REVISED STATUTES. See Trade-Marks, 106.
SUPERVISORY AUTHORITY OF THE COMMISSIONER OF PATENTS.
See Authority of the Commissioner of Patents, 1; Interference, 35, 40.
INTERFERENCE.-The supervisory authority of the Commissioner will not
be exercised to determine whether one of the parties to the interference
has a right to make the claims in issue where it appears that a motion
to dissolve on that ground has been transmitted to the Primary
Examiner and is awaiting action on his part. Thiem v. Bowen, 102.

SUPPRESSION OF TESTIMONY. See Interference, 5.
SUPREME COURT OF THE UNITED STATES.

of Appeals of the District of Columbia.

See Decisions of the Court

SURPRISE. See Motion to Dissolve Interference, 12; Testimony, 1.

SURREBUTTAL TESTIMONY. See Testimony, 1.

SUSPENSION OF PROCEEDINGS. See Trade-Marks, 45.

TECHNICAL MARK. See Trade-Marks, 75, 76, 92.

TEN-YEARS CLAUSE. See Trade-Marks, 2, 75, 102.

TERMINOLOGY. See Claims, 6; Motion to Dissolve Interference, 15. 17; Per-
jury, 2; Specifications, 3.

TERM OF PATENT.

1. DURATION OF PATENT-LIMITATION BY FOREIGN PATENT-PROCESS AND
APPARATUS.—A claim for a process and a claim for an apparatus by
which the process is performed are distinct inventions, and the United
States patent for one does not expire, under section 4887, Revised
Statutes, by reason of the expiration of a foreign patent for the other.
**Leeds & Catlin Company v. Victor Talking Machine Company and
United States Gramophone Company, 536.

2. SAME-SAME-COMBINATION AND ELEMENTS THEREOF.-A combination of
elements is an invention distinct from one of the elements thereof, and
a patent containing claims for both does not expire, as to the combina-
tion claim, by reason of the expiration of a foreign patent covering one
of the elements. **Id.

3. SAME-SAME-FAILURE TO PAY TAXES.-Under section 4887, Revised
Statutes, a United States patent is not limited in its term by reason of
the expiration of a prior Canadian patent before the end of the term
for which it was granted by failure to pay the annual taxes thereon.
(Pohl v. Anchor Brewing Co., C. D., 1890, 275; 51 O. G., 156; 134 U. S.
381.) **Id.

TESTIMONY. See Abandonment of Invention, 5; First and Original Inventor;
Interference, 1, 2, 3, 5, 6, 21, 26, 29, 36; Joint Applicants; Motion to
Dissolve Interference, 11; Motion to Reopen Interference to Take Testi-
mony; Priority of Invention 5; Public Use Proceedings; Reduction to
Practice, 8; Suits for Infringement, 2; Trade-Marks, 47, 48, 94.
1. INTERFERENCE-EVIDENCE-SUR-SURREBUTTAL.

Leave to take sur-surre-
buttal testimony will not be granted where it appears that the testi-
mony in surrebuttal was not in the nature of a surprise and was such
as might have been guarded against in the taking of rebuttal testi-
mony. Ruthven v. Christensen, 1.

2. SAME-SAME-TESTS.-G. built a furnace and made certain tests thereof
to show that the furnace described in M.'s application was inoperative.
M. was not present or represented at the tests, and the furnace was
dismantled before he had an opportunity to inspect it. While this did
not render the testimony incompetent, it is of great importance in de-
termining the weight to be given to the evidence relating to the tests.
*Mark v. Greenawalt, 288.

3. SAME-SAME-SAME.-A party deeply interested in showing that his
rival's device will not operate or accomplish the object claimed for it
who secretly tests the same with the aid of an expert who had pre-
viously testified to the opinion that it would not operate must neces-
sarily rest under the burden of showing, with great certainty, that they
conformed strictly with all the requirements of the description and in
good faith and with great care took all the steps necessary and im-
portant to obtain fair and accurate results. *Id.

4. INCLUSION OF IRRELEVANT AND IMMATERIAL MATTER.-"Before proceeding to a consideration of the case we deem it proper to express our disapprobation of the conduct of counsel in filling the record with immaterial, irrelevant, and useless matter. This practice, which is altogether too general in patent cases, entails needless expense upon clients and much needless labor upon the tribunals of the Patent Office as well as this court, and should be discontinued. Objections can, and should, be stated in a few words and vain repetition' of testimony avoided." *Conner v. Dean, 370.

5. INTERFERENCE-PRINTING TESTIMONY-INABILITY

TO PRINT MUST BE

SHOWN. A Corporation will not be relieved from the necessity of printing its testimony in an interference because of a showing that it is financially unable to do so where it is not shown that the parties interested who would be the real beneficiaries of any decision dispensing with printing are also unable to furnish the requisite amount of money. McManus v. Hammer, 97.

6. SAME-SAME-IRRELEVANT AND IMMATERIAL TESTIMONY.-A motion to dispense with the printing of part of the record is not the proper way to take advantage of the objection that certain parts thereof are irrelevant and immaterial and that the record was unduly enlarged by improper cross-examination. Id.

7. STIPULATION IN LIEU OF TESTIMONY.-The filing of stipulations in uncertain and indefinite language which require construing by the Office instead of an undisputed statement of facts or testimony duly taken with opportunity for cross-examination cannot be too strongly condemned. Shiner v. Edison, 174.

TESTS. See Interference, 1; Public Use and Sale; Reduction to Practice, 2, 5, 7, 8; Testimony, 2. 3.

1. "CELERY ADE" FOR BEVERAGES-DESCRIPTIVE.-The words Celery Ade" as a trade-mark for beverages and sirups therefor Held to be merely descriptive in the sense contemplated by section 5 of the Trade-Mark Act of 1905, and therefore not registrable. Ex parte Shannon, Ward & Company, 2.

2. INTERFERENCE--APPLICANT AND REGISTRANT-" TEN-YEARS" CLAUSE.-The registration of a trade-mark is prima facie evidence of ownership, and the presumption is that the use of such mark has continued. In an interference between an applicant and a registrant involving a mark registrable only under the "ten-years" clause of the Trade-Mark Act of 1905 applicant was properly Held not entitled to registration in the absence of testimony showing that the registrant had not used the mark during the ten years next preceding the passage of that act. Hezel Milling Company v. Weidler, 5.

3. UNITED STATES STANDARD FOR FLOUR-DECEPTIVE-NOT REGISTRABLE.— The words" United States Standard" Held not entitled to registration, as such registration would tend to indicate that the United States Government was guaranteeing that the flour on which the mark was placed was up to the standard required by the Pure Food and Drugs Act. Id.

4. PICTURE AND FACSIMILE-SIGNATURE OF GROVER CLEVELAND FOR CIGARS.The picture and facsimilie-signature of Grover Cleveland Held not registrable as a trade-mark for cigars. Ex parte The Banner Cigar Manufacturing Company, 9.