1887-122. consideration of 128. If at any time during the pendency of an interferSuspension of interference for ence the primary examiner shall discover new or additional new references. references, he may request a suspension of the interference proceeding until the pertinency of such references shall be determined. Upon such determination being made, the files and papers will be returned to the examiner of interferences, and the interference dissolved or reinstated in accordance with such decision. The consideration of such references shall be ex parte. 1887-123. For addition of new parties. 1887-124. Amendments 129. If during the pendency of an interference an application be filed for the subject-matter in issue, the primary examiner shall request the suspension of the interference for the purpose of adding the new application; but new parties will not be added after the taking of testimony without the special order of the Commissioner, whose attention shall be promptly called to the matter by the examiner. 130. Amendments to the specification will not be received pending interfer- during the pendency of an interference, except as provided in Rules 106, 107, 109. ence. 1887-127. Prosecution or signee. 131. When, on motion duly made and upon satisfactory defense by as- proof, it shall be shown that, by reason of the inability or refusal of the inventor to prosecute or defend an interference, or from other cause, the ends of justice require that an assignee of an undivided interest in the invention should be permitted to prosecute or defend the same, the Commissioner may so order. Claims of defeated parties. 1887-128. Rev. Stat., sec. 4909. Appeal to ex 132. Whenever an award of priority has been rendered in an interference proceeding by any tribunal, and the limit of appeal from such decision has expired, and whenever an interference has been terminated by reason of the written concession, signed by the applicant in person, of priority of invention in favor of his opponent or opponents, the primary examiner shall advise the defeated or unsuccessful party or parties to the interference that their claim or claims which were so involved in the issue stand finally rejected. APPEALS. 133. Every applicant for a patent, any of the claims of whose application have been twice rejected for the same aminers-in-chief. reasons, upon grounds involving the merits of the invention, such as lack of invention, novelty, or utility, or on the ground of abandonment, public use or sale, inoperativeness of invention, aggregation of elements, incomplete combination of elements, or, when amended, for want of identity with the invention originally disclosed, or because the amendment involves a departure from the invention orig. inally presented; and every applicant for the reissue of a patent whose claims have been twice rejected for any of the reasons above enumerated, or on the ground that the original patent is not "inoperative or invalid," or if so inoperative or invalid that the errors which rendered it so did not arise from "inadvertence, accident, or mistake," may, upon payment of a fee of $10, appeal from the decision of the primary examiner to the examiners-in-chief. The appeal must set forth in writing the points of the decision upon which it is taken, and must be signed by the applicant or his duly authorized attorney or agent. 134. There must have been two rejections of the claims as originally filed, or, if amended in matter of substance, of the amended claims, and all the claims must have been passed upon, and all preliminary and intermediate questions relating to matters not affecting the merits of the invention settled, before the case can be appealed to the examinersin-chief. 1887-129. Prerequisites Examiner's grounds of de 135. Upon the filing of the appeal the same shall be sub- 1887-130. mitted to the primary examiner, who, if he find it to be statement of regular in form, shall furnish the examiners-in-chief with a cision. written statement of the grounds of his decision on all the points involved in the appeal, with copies of the rejected claims, and with the references applicable thereto. If the primary examiner shall decide that the appeal is not regular in form, a petition from such decision may be taken directly to the Commissioner as provided in Rule 145. 1887-131. 136. The appellant shall, before the day of hearing, file a brief of the authorities and arguments on which he will rely be filed. to maintain his appeal. 137. If the appellant desire to be heard orally before the examiners-in-chief, he will so indicate when he files his appeal; a day of hearing will then be fixed, and due notice of the same given him. 1887-132. before examin Oral hearing ers-in-chief. 1887-133. Right to open 138. In contested cases the appellant shall have the right to make the opening and closing arguments, unless it shall and close. be otherwise ordered by the tribunal having jurisdiction of the case. Rev. Stat., sec. 139. (a) The examiners-in-chief in their decision will 1887-134. Decision of exaffirm or reverse the decision of the primary examiner only aminers-in-chief. on the points on which appeal shall have been taken. (See 482. Rule 133.) Should they discover any apparent grounds not Discovery of involved in the appeal for granting or refusing letters pat- granting or reent in the form claimed, or any other form, they will annex involved in apto their decision a statement to that effect, with such recommendation as they shall deem proper. grounds for fusing patent not peal. primary exam iner. Appeal from (b) From an adverse judgment of the primary examiner on points embraced in the recommendation annexed to the decision, appeal may be taken on questions involving the merits to the board of examiners-in-chief and on other questions to the Commissioner as in other cases. Amendment referred to primary examiner. Amendment based on discov sioner referred to primary exam iner. (c) The Commissioner may, when an appeal from the decision of the examiners-in-chief is taken to him, remand the case to the primary examiner, either before or after final judgment, for consideration of any amendment or action which may be based on the recommendation annexed to the decision of the examiners-in-chief. (d) If the Commissioner, in reviewing the decision of ery of Commis- the examiners-in-chief, discovers any apparent grounds for granting or refusing letters patent not involved in the appeal, he will, before or after final judgment, and whenever in his opinion substantial justice shall require it, give reasonable notice thereof to the parties; and if any amendment or action based thereon be proposed, he will remand the case to the primary examiner for consideration. Appeals. 1887-136. Rev. Stat., sec. 4910. (e) From the decisions of the primary examiner, in cases remanded as herein provided, appeal will lie to the board of examiners-in-chief, or directly to the Commissioner, as in other cases. 140. From the adverse decision of the board of examinersin-chief appeal may be taken to the Commissioner in perAppeal from examiners-in- son, upon payment of the fee of $20 required by law. chief to Commis sioner. 1887-135. 141. If affidavits be received after the case has been apApplication re- pealed, the application will be remanded to the primary exmanded for re- aminer for reconsideration. consideration on affidavits filed. 1887-137. Rehearings. 1887-138. Jurisdiction. 142. Cases which have been heard and decided by the Commissioner on appeal will not be reopened except by his order; cases which have been decided by the examiners-inchief will not be reheard by them, when no longer pending before them, without the written authority of the Commissioner ; and cases which have been decided by either the Commissioner or the examiners-in-chief will not be reopened by the primary examiner without like authority, and then only for the consideration of matters not already adjudicated upon, sufficient cause being shown. (See Rule 68.) 143. Contested cases will be regarded as pending before a tribunal until the limit of appeal, which must be fixed, has expired, or until some action has been had which waives the appeal or carries into effect the decision from which appeal might have been taken. Ex parte cases decided by an appellate tribunal will, after decision, be remanded at once to the primary examiner, sub ject to the applicant's right of appeal, or such action as will carry into effect the decision, or for such further action as the applicant is entitled to demand. 1887-139. Reconsidera 144. Cases which have been deliberately decided by one Commissioner will not be reconsidered by his successor ex- tion of cases decided by former cept in accordance with the principles which govern the Commissioner. granting of new trials. Petition to without fee. 145. Upon receiving a petition stating concisely and 1887-140. clearly any proper question, which has been twice acted Commissioner, upon by the examiner, and which does not involve the mer its of the invention claimed, or the rejection of a claim, and also stating the facts involved and the point or points to be reviewed, an order will be made fixing a time for hearing such petition by the Commissioner, and directing the examiner to furnish a written statement of the grounds of his decision upon the matters averred in such petition at least, Report of exfive days before such day of hearing. No fee is required for such a petition. aminer. 4911. Rev. Stat., secs. 4911, 4915. 146. In interference cases parties have the same remedy 1887-141. Rev. Stat., secs. by appeal to the examiners-in-chief and to the Commissioner 4904, 4909, 4910, as in ex parte cases; but no appeal lies in such cases from the decision of the Commissioner. Defeated contestants in interferences may, however, have remedy by bill in equity. 147. Appeals in interference cases must be accompanied by brief statements of the reasons therefor; and parties will terference cases. be required to file briefs of their arguments before the day peal. of hearing. Printed briefs are required in all cases. 1887-142. Appeals in in- Printed briefs. 1887-143. Appeal to su District of Co 148. From the adverse decision of the Commissioner upon the claims of an application an appeal may be taken to the 4911. supreme court of the District of Columbia sitting in banc. preme court of On taking such appeal, the applicant is required, under the lumbia. rules of the court, to pay to the clerk of the court a docketfee of $10, and he is also required by law to lay before the court certified copies of all the original papers and evidence in the case. The petition should be filed and the fee paid at least ten days before the commencement of the term of court at which the appeal is to be heard. Rev. Stat., sec. 149. Immediately upon taking an appeal the appellant 1887-144. must give notice thereof to the Commissioner of Patents, 4912. and file in the Patent Office his reasons of appeal specifically appellant. set forth in writing. 150. Pro forma proceedings will not be had in the Patent Office for the purpose of securing to applicants an appeal to the supreme court of the District of Columbia. Proceedings by 1887-145. ceedings in Pat Pro forma pro ent Office. 1887-146. Hour of hearing. 1887-147. Interviews with examiners. 1887-148. 1887-149. Notice. Ice. (For forms of appeals and rules of the supreme court of the District of Columbia respecting appeals, see Appendix, Forms 34, 36.) HEARINGS AND INTERVIEWS. 151. Hearings will be had by the Commissioner at 10 o'clock a. m., and by the board of examiners-in-chief and the examiner of interferences at 1 o'clock p. m., on the day appointed, unless some other hour be specially designated. If either party in a contested case, or the appellant in an ex parte case, appear at the proper time, he will be heard. After the day of hearing a contested case will not be taken up for oral argument except by consent of all parties. If the engagements of the tribunal having jurisdiction are such as to prevent the case from being taken up on the day of hearing, a new assignment will be made, or the case will be continued from day to day until heard. Unless it shall be otherwise ordered before the hearing begins, oral arguments will be limited to one hour for each party in contested cases, and to one-half hour in other cases. After a contested case has been argued, nothing further relating thereto will be heard unless upon request of the tribunal having jurisdiction of the case; and all interviews for this purpose with parties in interest or their attorneys will be invariably denied. 152. Interviews with examiners concerning applications and other matters pending before the office must be had in the examiners' rooms at such times, within office hours, as the respective examiners may designate; in the absence of the primary examiners, with the assistant in charge. Interviews will not be permitted at any other time or place without the written authority of the Commissioner. Interviews for the discussion of pending applications will not be had prior to the first official action thereon. MOTIONS. 153. In contested cases reasonable notice of all motions, and copies of motion-papers and affidavits, must be served, Proof of serv-as provided in Rule 154 (2). Proof of such service must be made before the motion will be entertained by the office. Motions will not be heard in the absence of either party except upon default after due notice. Motions will be heard in the first instance by the officer or tribunal before whom the particular case may be pending; but an appeal from the decision rendered may be taken on questions involving the merits of the case to the board of examiners-in-chief; on Jurisdiction. |