This application was allowed December 24, 1907. The present petition was filed March 27, 1911. It alleges that there were seven errors in the specification and drawing which were not pointed out by the Examiner; that applicant was unable at the time of allowance or for six months thereafter to pay the fee; that he knew that he had somewhere ample proof to sustain his affidavit of November 7, 1905, carrying his date of invention back of January 20, 1902; that he could not find the roll of drawings which he remembered to have made; that he put off action in the Patent Office until he could find these drawings, and that "yesterday" he came across them by accident.

This application became forfeited on June 24, 1908, and became abandoned on December 24, 1909. The Commissioner has therefore no authority to grant the present petition. Section 4894, Revised Statutes, gives the Commissioner authority to hold that an application is not abandoned for failure to take action within one year from the date of the last Office action, provided it is shown to his satisfaction that the failure to so act was unavoidable. Applications which have been allowed and forfeited stand upon a different footing. They are governed by the provisions of section 4897, Revised Statutes, and can be renewed at any time within two years from the date of the notice of allowance, but not after the expiration of that time. For a discussion of this question see ex parte Hardy, (C. D., 1877, 110; 12 O. G., 1075,) the decision of the Commissioner on reference, (C. D., 1877, 121; 12 O. G., 979,) ex parte Livingston, (C. D., 1881, 42; 20 O. G., 1747,) and ex parte Barnitz, (C. D., 1887, 130; 41 O. G., 575.) In the latter case Commissioner Hall said:

Under the other section (section 4894) the Commissioner of Patents has some discretion, founded upon a judicial determination of the question whether the delay has been unavoidable; but under this section (section 4897) he has no discretion whatever, but if the application is not filed within two years from the date of the allowance of the original application the right of applicant to renew it is gone.

But even if it could be held that the case fell under the provisions of section 4894, Revised Statutes, no showing has been made which would justify granting the petition. The application was filed on July 15, 1902. It was allowed on December 24, 1907. In these five years applicant certainly had every opportunity to cure any mistakes which he may have made in the specification and drawings. Even if the Examiner made an oversight in not calling his attention to these it was clearly applicant's duty to have discovered them for himself, and, moreover, after the notice of allowance he could, under the provisions of rule 78, have filed an amendment curing these mistakes, if such there be. Furthermore, the fact that applicant was looking for some drawings constitutes no excuse for the failure to earlier present

this petition. The drawings filed with the petition are returned under separate cover as requested.

The petition is denied.

EX PARTE RUSSELL.

Decided April 22, 1911.

166 O. G., 511.

APPLICATION-PROSECUTION-REOPENING AFTER FINAL ADVERSE DECISION. It is well settled that a party is not entitled to conduct his case experimentally to a final adverse decision; also that after an appeal to the Court of Appeals of the District of Columbia the case will not be reopened for the consideration of additional claims except under unusual circumstances. (Ex parte Starkey, C. D., 1903, 239; 105 O. G., 745, and ex parte Milans, C. D., 1908, 179; 135 O. G., 1122.)

ON PETITION.

CAN.

Mr. James Negley Cooke and Mr. W. B. Corwin for the applicant.

MOORE, Commissioner:

This is a petition requesting a reopening of the case, under Rule 142, for the admission of additional claims after a decision by the Court of Appeals of the District of Columbia affirming the rejection. of certain claims by the Commissioner. (Post, 322; 165 O. G., 474; 36 App. D. C., 444.)

The record shows that all the petitioner's claims were rejected by the Primary Examiner. On appeal the Examiners-in-Chief allowed claims 5 to 8, inclusive, which call for a thicker coating at the portions of the plate which form the joints, so as to insure a tight connection. The rejection of the remaining claims was affirmed by the Examiners-in-Chief, the Commissioner, and the Court of Appeals of the District of Columbia in succession.

Upon return of the case to the Primary Examiner petitioner filed an amendment proposing four additional claims. The Primary Examiner reports that, in his opinion, these claims are unpatentable. The only showing in support of the proposed amendment is the following statement:

As the invention of this application has been adjudged by the appellate tribunals not to depend upon both the inner and outer surfaces of the can being coated with enamel it is respectfully requested that the above claims calling for the inner surface only to be so coated be entered and the case passed to issue.

This meager statement as to why the claims were not presented before appeal was taken does not excuse the delay in their presentation.

It is well settled that a party is not entitled to conduct his case experimentally to a final adverse decision, also that after an appeal to the Court of Appeals of the District of Columbia the case will not be reopened for the consideration of additional claims except under unusual circumstances. (Ex parte Starkey, C. D., 1903, 239; 105 O. G., 745, and ex parte Milans, C. D., 1908, 179; 135 O. G., 1122.) It further appears that the claims allowed petitioner are commensurate with his invention. The original specification describes petitioner's can as coated on both sides, and no mention is made of a modified form in which the coating is omitted upon the outer surface. Moreover, all of the original claims specify a can having the faces, or the inner and outer faces, provided with the coating of enamel. Irrespective of whether there is any patentable distinction in coating one or both surfaces of the can the construction of a can having the coating only upon the inner surface does not appear to have been contemplated by petitioner or to come within his invention as set forth in his original specification.

The petition is denied.

LASHER V. Barratt.

Decided April 4, 1911.

166 O. G., 751.

INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.

Where a motion to dissolve alleged informality in the declaration of the interference based on the allegation that certain additions to the disclosure of the opposing party were unwarranted, Held that the motion was properly refused transmission as to this ground, since the allegation relates to the right to make the claims.

ON APPEAL.

CIRCULAR-KNITTING MACHINE.

Mr. Franklin Scott and Messrs. Bacon & Milans for Lasher. Mr. Chas. S. Gooding and Messrs. Meyers, Cushman & Rea for Barratt.

MOORE, Commissioner:

This is an appeal by Barratt from the decision of the Examiner of Interferences refusing to transmit his motion to dissolve in so far as it alleges informality in the declaration of the interference.

This branch of the motion is founded upon the contention that certain additions to the disclosure in the application of Lasher were unwarranted and were improperly introduced under suggestion from the Examiner. This allegation clearly raises a question of merits.

relating to Lasher's right to make the claims, and not to informality in the declaration of the interference within the meaning of Rule 122. The Examiner of Interferences has transmitted a motion to dissolve by Barratt based upon the contention that Lasher has no right to make the claims. His refusal to transmit the motion so far as it related to informality in the declaration was clearly right, and his decision is affirmed.

EX PARTE SCOTT.

Decided March 28, 1911.

166 O. G., 985.

PROSECUTION OF APPLICATION-APPEAL-NEW GROUNDS OF REJECTION.

Where in his answer to an appeal the Examiner after giving his reasons for his rejection refers to an argument of applicant and states that even if the claim contained the limitation referred to therein it would not be patentable in view of a certain patent of record, Held that this does not constitute the citation of a new reference against the claim.

ON PETITION.

SYSTEM OF REMOTE CONTROL.

Mr. C. D. Ehret for the applicant.

MOORE, Commissioner:

This is a petition that the Primary Examiner be directed to cancel all reference to the patent to Button, in his statement to the Examiners-in-Chief, with reference to appealed claim 14, or that the appeal be withdrawn and claim 14 be rejected upon the patent to Button in view of any other references which have hitherto been cited against that claim.

It is well settled that where, after a case is in condition for appeal or after an appeal has been taken, the Primary Examiner discovers a new reference applicant's attention should be called to the same. and he should be allowed to continue the appeal in view of this reference or to withdraw the appeal and further prosecute the application. (Ex parte Mevey, C. D., 1891, 115; 56 O. G., 805.)

On June 2, 1908, claim 14 was rejected in view of the patent to Hopkinson. The claim was thereinafter amended and the Examiner repeated the objection in the following language:

Claim 14 is again rejected on the patent to Hopkinson, of record, for the reason that the limitation of a crank-and-rod connection between the motor and the switch is not thought to render it patentable over said patent. There would be no difficulty in utilizing such a connection in the mechanism illustrated in Figs. 1 to 4 of the Hopkinson patent.

The applicant filed an argument as to the patentability of this claim, and on June 8, 1910, this claim and claim 13 were finally rejected. On February 7, 1911, an amendment was filed presenting claim 14" in better form for purpose of appeal." In the argument accompanying this claim it was said:

In applicant's rod-and-crank-connection arrangement the motor and all the operating parts are placed directly below the main switch, this making an arrangement which is compact and which greatly economizes space laterally on a switchboard.

In response to this action the Examiner stated that the new claim was found to present nothing patentable over the art of record for the reason given in connection with former claim 14 and that therefore the amendment had been entered and the appeal could go forward.

The applicant appealed from the final rejection of the two claims and in his answer to this appeal the Examiner fully pointed out why the patent to Hopkinson was held to be an anticipation of claim 14. He referred to applicant's argument that the use of the crank and rod instead of the crank alone enabled him to mount the motor below the switch, and after pointing out that the claim did not state that the motor was so mounted said:

Furthermore, a mechanic would find no difficulty in transmitting motion from the motor to the switch no matter what their relative position might be. Even if the claim positively stated that the motor was mounted below the switch, it would not be considered allowable, in view of the art of record and of which the patent to Button is an example. This patent shows (Fig. 1) that it is common to operate switches by a motor-driven crank-and-rod connection and with the motor mounted below the switch.

*

It is to this latter statement that applicant takes exception. It is very clear, however, that the Examiner has not cited a new reference against this claim. He has fully pointed out that the claim does not include the limitation in question and has added the statement that if it did that limitation would not make it allowable in view of the patent to Button, of record. This was clearly proper and did not constitute the citation of a new reference against the claim. The petition is denied.

BRENIZER V. ROBINSON.

Decided May 3, 1911.

166 O. G., 1281.

INTERFERENCE-ALLEGED STATUTORY BAR-SUSPENSION.

It is the well-established practice of the Office not to suspend action in an interference proceeding where testimony has been taken and the case is ready for final hearing in order to institute a public-use proceeding. Doble v. Henry, C. D., 1905, 429; 118 O. G., 2249; Wert v. Borst and Groscop, C. D., 1906, 198; 122 O. G., 2062.)