tained therein are not controlling in the present case. The validity of the word "Instantaneous" as applied to tapioca was considered in the case of Bennett et al. v. McKinley et al. (65 Fed. Rep., 505) by the court of appeals for the second circuit. In that case the Court said:

Applying the rule to the facts of the present case, we think the word "Instantaneous," as applied to the kind of tapioca dealt in by the parties, is descriptive, and consequently not a valid trade-mark. It not only is aptly and truthfully descriptive of one of the properties of the article to which it is sought to be applied, but is especially appropriate to point out concisely and accurately the peculiar characteristic which distinguishes the particular tapioca from other varieties.

The same reasoning is clearly applicable to the present case. The word "Instantaneous as applied to a tape, when considered in connection with patents cited by the Examiner which indicate the desirability of a measure which may be accurately and rapidly read, is, in my opinion, clearly descriptive if used upon such merchandise. If the word "Instantaneous" should be applied to tape-measures which do not possess these qualities, it would manifestly be deceptively used and would therefore be prohibited registration. I find no error in the decision of the Examiner of Trade-Marks, and it is accordingly affirmed.

EX PARTE HANDEL.

Decided January 10, 1911.

162 O. G., 999.

PROSECUTION OF APPLICATION-FINAL REJECTION.

Where in response to the action of the Examiner rejecting a claim on a reference the applicant without amending the claim points out certain differences between the reference and the structure claimed, the invention being a simple one, and argues that in view of these differences the claim is allowable. Held that the final rejection of the claim was not premature.

ON PETITION.

LIGHT-FIXTURE.

Mr. Harrie E. Hart for the applicant.

MOORE, Commissioner:

This is a petition that the Examiner be directed to withdraw the final rejection of a claim and explain the interpretation of the patent upon which this claim was rejected and that applicant be given an opportunity to further prosecute his case before the Primary Examiner.

The application as filed contained seven claims. In his first action the Examiner rejected claims 1, 2, and 3 in view of references and rejected claim 4 on the patent to Baldwin. In response to this action applicant erased claims 1 and 2, amended claim 3, and filed an argument as to the patentability of claim 2 (original claim 4) over the patent cited. In applicant's argument he pointed out that the claim did not read in terms on the patent to Baldwin, since the supports for the shade shown in the Baldwin patent were not secured to the font on the lamp. In response to this action the Examiner finally rejected the claim.

The Examiner's action appears to have been correct. The invention is a simple one, and the Examiner's action in originally rejecting the claim on the Baldwin patent necessarily implied a holding that from the standpoint of patentability the differences between the structure defined by the claim and that shown in the Baldwin patent were immaterial. Applicant appears from his argument to have fully understood the reference, and in view of that argument the only course open to the Office was, as stated by the Examiner in his answer to this petition

to reconsider the claim upon its merits and allow it or finally reject it.

It is noted that in his brief applicant states that the differences between the structures of the application and the references are apparent, and in his reply to the Examiner's statement he says:

There was no room for an amendment to overcome the reference and the only thing left to do was to point out to the Examiner the differences in the two structures and the reasons why applicant considered these differences patentable.

It is evident, therefore, that a clear issue has been reached between the applicant and the Examiner. The petition seems to raise the question of the propriety of rejecting the claim at all rather than of entering a final rejection. This question is one which is reviewable in the first instance by the Examiners-in-Chief.

The petition is denied.

EX PARTE ATWOOD.

Decided January 20, 1911.

REOPENING CASE AFTER APPEAL.

162 O. G., 1183.

A case will not be reopened for amendment after a decision by the Examiners-in-Chief except for the consideration of matter not previously adjudicated, sufficient cause being shown. (Rule 142.)

ON PETITION.

VACUUM CLEANING APPARATUS.

Mr. Walter H. Pumphrey for the applicant.

MOORE, Commissioner:

This is a petition that applicant be allowed to amend this application by canceling the claims now in the case and presenting six in lieu thereof.

The claims in the case were finally rejected on October 9, 1909. An appeal was taken to the Examiners-in-Chief, who, on February 24, 1910, rendered a decision affirming the action of the Examiner. On November 2, 1910, applicant presented an amendment asking that six claims be entered in this case for the purposes of appeal

either as additional claims or as substitute claims for those now in the case.

This amendment the Examiner held he could not enter under the provisions of Rule 142.

The present petition was taken on December 30, 1910, and on January 10, 1911, a proposed amendment was filed, which asks the cancelation of the claims now in the case and the substitution therefor of six claims which are the same as those presented in the amendment of November 2, 1910. With the amendment as originally filed applicant presented an affidavit in which he states that it is his opinion that the claims as considered by the Examiners-in-Chief are clearly patentable over the references of record, but that in view of their adverse decision revision appears necessary to justify further appeal,

and that

the Examiner took the position that no invention was involved while the decision of the Board appears to admit that there is an invention disclosed but holds that it is not new, as now stated in the claims in the case.

Rule 68 provides for the entry of additional claims after a final rejection, upon good and sufficient cause being shown, or that claims. may be entered merely for the purpose of appeal in the place of those finally rejected. Rule 142, however, makes no such provisions. It provides merely for the opening of a case after decision by the Examiners-in-Chief in order to consider matters not already adjudicated

upon.

If the claims now presented are held to be the same as those which were before the Examiners-in-Chief except as a matter of languagein other words, if they are presented merely for "the purpose of appeal "—there is no provision in the rule for entering such claims. On the other hand, if these claims cover subject-matter not previously adjudicated the showing made is clearly insufficient to justify their entry. Applicant had ample opportunity to present any claim which he desired prior to the final rejection of the case. If the Examinersin-Chief had thought that applicant had really disclosed a patentable invention, but had so worded the claims that they did not define that invention over the references cited, they would presumably have made a recommendation to that effect. The following statement in

ex parte Bourne (C. D., 1904, 247; 110 O. G., 2510) seems to be clearly applicable to this case:

It is to be noted that no tribunal of the office has suggested that the proposed claims are patentable. If cases were reopened merely because the applicant urges that the proposed claims are patentable, it would be impossible to bring the prosecution of any application to a conclusion.

See also the decisions in ex parte Merrill, (C. D., 1905, 193; 116 O. G., 1186;) ex parte Lesler, (C. D., 1905, 309; 117 O. G., 2631;) ex parte Marks, (C. D., 1905, 439; 118 O. G., 2253,) and ex parte Wagner, (C. D., 1909, 241; 149 O. G., 831.)

The petition is denied.

EX PARTE ATSATT BROS.

Decided January 24, 1911.

163 O. G., 231.

TRADE-MARKS-MARK SHOWN IN TWO FORMS-REQUIREMENT THAT ONE BE CANCELED PROper.

The trade-mark sought to be registered, which consists of the word "Acme," was shown in the drawing in two different forms. Held that the requirement that one of these forms be canceled was proper.

ON PETITION.

TRADE-MARK FOR PEANUT-ROASTERS.

Messrs. Crosby & Gregory for the applicant.

MOORE, Commissioner:

This is a petition from the action of the Examiner of Trade-Marks requiring that either Figure 1 or Fig. 2 be canceled from the drawing, so that the mark shall appear thereon in but one form.

The trade-mark which applicant seeks to register is the word "Acme" as applied to peanut-roasters. It appears that the mark is actually displayed on the roasters in two somewhat different types of letters, which are represented, respectively, by Figs. 1 and 2 of the drawing. In one case the word is stenciled in large letters upon a plain surface, and in the other it is applied to a brass plate attached to the body of the roaster. Applicant contends that there is nothing in the law prohibiting the showing of the mark in two forms, as presented by him, and that the Examiner's requirement is therefore unwarranted.

It is clear, however, that an applicant is not justified in embodying in his application all matter not actually prohibited by the law, since such a practice would obviously lead to confusion in many cases. There are good reasons for the practice which has become established

in the Office of permitting an applicant to show the mark in but one form. These are clearly set forth in the decision in ex parte Kimball, (C. D., 1877, 54; 11 O. G., 1109,) in which it was said:

If the law required an applicant to show the different modes in which he had used or intended to use his trade-mark, there would be good grounds for the present appeal, but I cannot believe it to be the intention of the law that the Office should register as many different modes of applying the same trade-mark as the fancy of an applicant might dictate. If that were so, a third party might use the same trade-mark with impunity, if he could still devise a different mode of applying it. This would be giving to the shadow great value, and to the substance none at all.

If applicants were permitted to show in their drawings the various modes of printing or producing their marks which are used in actually applying the mark to the goods, it would often result, as pointed out by the Examiner of Trade-Marks, in the filing of a large number of sheets of drawing, which would merely serve to encumber the Office records and to confuse the public as to the nature of the mark actually registered.

The petition is denied.

EX PARTE WATTERS.

Decided January 7, 1911.

163 O. G., 231.

PROSECUTION OF APPLICATION-RESPONSIVE ACTION.

The Examiner after some prosecution of an application cited for the first time a Swedish patent and rejected certain claims thereon without specifically applying it to the claims. At the end of the year from this action applicant presented an amendment canceling the rejected claims and substituting five new claims, stating that the Swedish patent had been translated and that the new claims were believed to clearly distinguish therefrom. Held that the application is not abandoned. (Ex parte Copeland. C. D., 1909, 239; 149 O. G., 309, distinguished.)

ON PETITION.

GOVERNOR FOR ROTARY SIEVES AND THE LIKE.

Mr. Clarence E. Humphrey for the applicant.

BILLINGS, First Assistant Commissioner:

This is a petition from the action of the Examiner holding the above-entitled application to be abandoned for lack of proper prosecution within the year following September 27, 1909, the date of the last rejection.

The application was filed November 13, 1908, and the record shows that it has been properly prosecuted and that on August 21, 1909, an