amendment was filed by the applicant which resulted in the presentation of twelve claims for consideration by the Examiner. Under date of September 27, 1909, the Examiner made the following action: Claims 1 to 10, inclusive, and 12 are rejected in view of a newly-discovered reference, Swedish patent to Christensen. * * Through inadvertence, this patent has been previously overlooked. It is not understood wherein new claim 11 is patentably distinguished from the patent to Warrington of record, and it is accordingly rejected. It is to be noted that the Swedish patent was not specifically applied to the claims presented and that it was cited in this letter for the first time. The applicant responded on September 21, 1910, by canceling all the claims in the case and substituting five new claims in lieu thereof. The amendment was not accompanied by any argument other than the statement that the Swedish patent had been translated and a careful examination of it had been made and that it was the belief of the counsel that * the claims now presented are drawn to a structure which is not shown in the Swedish patent nor in the Warrington patent of record, in view of which a reconsideration of the case and an allowance thereof are respectfully asked. The Examiner on September 30, 1910, responded by acknowledging the amendment, remarking that the applicant had failed to point out what patentable novelty the new claims presented and how they intended to avoid the references of record and holding the application to be abandoned for the reason that the amendment was not such action as the case required. The case of ex parte Copeland (C. D., 1909, 239; 149 O. G., 309) was cited in support of this holding. It is to be noted that the case of ex parte Copeland is to be distinguished from the present case in three important particulars: First: In the Copeland case substantially the same art had been cited throughout the prosecution, while in the present case there was a foreign patent cited for the first time as the principal reference— in fact, as the only reference against all the claims except one. Second: In the Copeland case the new claims contained in the last amendment were much broader than any before presented, while in the present case there is no suggestion of this fact. The Commissioner stated in ex parte Copeland, supra, that— As, however, these claims were broader than claims before presented which had been rejected, it was clearly the duty of the applicant to show why these claims were allowable. In the case of ex parte Richards, (C. D., 1906, 403; 124 O. G., 2534,) cited in ex parte Copeland, supra, the Commissioner said: In this case a broadened claim is presented in the twenty-eighth action on the case, taken more than eight years after the case was filed. * * The applicant's reasons for presenting the new claim and for regarding it as allowable were capable of clear and brief statement. Third: In ex parte Copeland the prosecution of that application had been greatly delayed by the applicant, while the application now under consideration has been promptly prosecuted. As to cases of that character where the prosecution has been long drawn out the Commissioner said in ex parte Copeland, supra: It is well settled that where an applicant relies upon his technical right to delay action as long as possible in each instance he is entitled to no leniency in the application of the rule which provides that prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require. For the reasons above stated, distinguishing this case from the cases cited, it is held that the prosecution of this application met the requirements of the rules. The petition is granted. EX PARTE CROFT & ALLEN COMPANY. Decided January 21, 1911. 163 O. G., 400. TRADE-MARKS-" CHOC HOME-SPUN," FOR CANDY-DESCRIPTIVE. The words "Choc Home-Spun Held properly refused registration as a trade-mark for candy, since such mark is descriptive of the goods to which it is applied. ON APPEAL. TRADE-MARK FOR CANDY. Messrs. Wiedersheim & Fairbanks for the applicant. MOORE, Commissioner: This is an appeal from the decision of the Examiner of TradeMarks refusing to register the mark "Choc Home-Spun" as a trademark for candy. The mark has been refused registration on the ground that it is descriptive and that "Home" alone is anticipated by the registration of Griggs, Cooper & Company, No. 56,132, showing this word applied to candy. The first meaning of the word "homespun " given in the Century Dictionary is spun or wrought at home, of domestic manufacture or origin, plain, familiar. The words "Choc Home-Spun" as applied to candy are therefore clearly indicative of chocolate candy of home manufacture or similar to that commonly made at home. If the mark is not deceptive, it is therefore clearly descriptive of the goods to which it is applied. As pointed out by the Examiner, the word "spun" may also properly be considered descriptive of candy, since certain candies have the appearance of having been spun or are made by a process to which this term may be applied. In this light, also, the mark is clearly an aggregation of unregistrable features and was properly refused registration. (In re Meyer Bros. Coffee and Spice Company, C. D., 1909, 312; 140 O. G., 756; 32 App. D. C., 277.) The decision of the Examiner of Trade-Marks is affirmed. PERRY & HUNTOON V. BUSSE. Decided January 30, 1911. 163 O. G., 400. INTERFERENCE-NON-PATENTABILITY RAISED UNDER RULE 130. OF ISSUE TO ALL PARTIES-CANNOT BE A party has no right under the provisions of Rule 130 to urge at final hearing the non-patentability of the issue. ON PETITION. BRAKE-HEAD. Mr. A. H. Graves and Mr. C. A. Neale for Perry & Huntoon. BILLINGS, First Assistant Commissioner: This is a petition by Perry & Huntoon that the Examiner of Interferences be directed to set this case down for final hearing to argue the question of non-patenability of the counts and to set aside his judgment granting priority to applicant Busse. When the preliminary statements were opened, it was found that the statement of Perry & Huntoon had not overcome the prima facie case made out by the filing of Busse's application, and on August 20, 1910, an order was issued against Perry & Huntoon to show cause why judgment should not be rendered against them. In response to this order a motion was filed by Perry & Huntoon to dissolve the interference on the ground that the issue was not patentable in view of the prior art. This motion was denied by the Primary Examiner on November 17, 1910. On November 22, 1910, the Examiner of Interferences, in view of the decision of the Primary Examiner, awarded priority to Edwin G. Busse, the senior party. The limit of appeal from this decision. was December 12, 1910. On December 1, 1910, Perry & Huntoon filed a request that the case be set down for final hearing under provisions of Rule 130 in order that they might argue before the Examiner of Interferences the question of non-patentability of the claims. This motion was denied by the Examiner of Interferences on December 2, 1910, and the present petition was filed December 10, 1910. That a party has, under the provisions of Rule 130, no right to urge the non-patentability of the issue at final hearing is well settled, and the distinction between the non-patentability of the issue, broadly, which does not involve the question of priority of invention, and the non-patentability of the claims to the opposing party, where such non-patentability is material to the moving party's right to a patent, which is ancillary to the question of priority of invention, was fully and carefully pointed out in the following decisions of the Commissioner: Dixon and Marsh v. Graves and Whittemore, (C. D., 1907, 101; 127 O. G., 1993;) Pym v. Hadaway, (C. D., 1907, 209; 129 O. G., 2073;) Pym v. Hadaway, (C. D., 1907, 344; 131 O. G., 692.) In the case of Johnson v. Mueser (C. D., 1909, 437; 145 O. G., 764; 29 App. D. C., 61) the Court of Appeals of the District of Columbia held that on appeal from a final decision in an interference it would not review the action of the Patent Office holding the issue patentable, and the Supreme Court of the United States dismissed a writ of error in this case and denied a petition for a writ of certiorari. (C. D., 1909, 556; 145 O. G., 767; 212 U. S., 283.) The petition is denied. EX PARTE LANGE. Decided January 20, 1911. 163 O. G., 727. PROSECUTION OF APPLICATION AMENDMENT AFTER FINAL REJECTION. An amendment presenting new claims filed after final rejection Held properly refused admission where applicant had had ample opportunity to present such claims and the only excuse given for failure to do so was that it did not appear to be desirable until he was convinced that the broader claims presented were unpatentable in view of the references cited. CN PETITION. SHOW-CASE FOR CIGARS. Mr. A. B. Stoughton for the applicant. MOORE, Commissioner: This is a petition from the action of the Examiner refusing to enter an amendment under the provisions of Rule 68. The case as originally filed contained two claims. Claim 1 was rejected, and claim 2 was allowed. Applicant then canceled claim 1, presenting two claims in lieu thereof, both of which were rejected, the Examiner fully pointing out why the claims were held to be unpatentable. Applicant amended the claims, and they were again rejected, with full explanation of the Examiner's position. An affidavit was then filed to overcome one of the references, and two claims were again rejected on two of the references previously cited. Applicant then canceled the claims and presented two claims in place thereof, which claims were again rejected, and upon applicant's request for reconsideration this rejection was made final. Applicant thereupon presented an amendment canceling these claims and substituting one claim in lieu thereof. This claim the Examiner refused to enter, citing Rule 68. Applicant asked reconsideration of this action and filed an affidavit, making the following statement of reasons why the claim was not earlier presented: It was believed that the show-case was broadly new and had that belief been confirmed there was no reason for urging a multiplicity of claims involving the lock feature. The fact is that the Office has found and the applicant is satisfied that the show-case broadly is not patentable. As a result of that conclusion it, for the first time, became necessary or desirable to enlarge upon the lock feature; hence claims for the lock feature were not submitted until now. The statement of the record above given shows that applicant has had every opportunity to present claims covering this device. The showing made is clearly insufficient to justify reopening the case. The petition is denied. WHITELAW 2. ECKHARDT v. KоCн. Decided January 12, 1911. 163 O. G., 727. INTERFERENCE-MOTION TO DISSOLVE-HEARING THEREON SUPERSEDED BY NOTICE FOR ADDITION OF PARTIES. Where, after giving notice of a hearing on a motion to dissolve an interference, the Primary Examiner acquired jurisdiction of the case for the purpose of adding new parties, Held that the notice that the case had been transmitted to the Primary Examiner for this purpose superseded the hearing and that the hearing on the motion should have been postponed until it had been determined whether such new parties would be added and whether any further motions would be brought in view thereof. ON PETITION. SUCTION-CLEANER. Mr. I. S. Prenner for Whitelaw. Messrs. Mauro, Cameron, Lewis & Massie for Eckhardt. |