the time period suggested therefor in Section 1208, Manual of Patent Examining Procedure. While Rule 192, pertaining to the time for filing by appellant of the brief, uses the mandatory language "shall," and unequivocally prescribes a penalty for failure to file the brief in time, Rule 193 pertaining to the Examiner's answer, and the portion of said Section 1208 of the Manual referred to by appellant, in setting forth the duty of the Examiner, use the merely permissive language "may" and "should," respectively. This would clearly denote the time period mentioned in said Manual section as but suggestive in nature as a desideratum for administrative purposes within the press of work before the Examiner, rather than any unequivocal fixed cutoff period. Accordingly, there appears to be no proper reason why the Examiner's answer to the brief should not be before us for our consideration in connection with the instant adjudication, and appellant's request to strike is denied.

This application relates to the field of peeling off a strip of wood veneer from a rotating log by means of a lathe knife. Appellant states that it has heretofore been the practice, in the case of a veneer log having a defect such for example as a check or split therein, to bridge said defect at the end of the log by a heavy metal staple, to suitably hold said log together for the peeling operation. This practice, however, is said to be subject to the difficulty of removing the staple, or said staple together with the surrounding wood into which the same has been driven, in order to prevent the lathe knife coming into contact therewith and being so damaged when the log has been peeled down to its immediate vicinity.

To obviate this difficulty, and the wastage of time and wood incident thereto, appellant has developed a fastener made of a molded synthetic plastic material of a nature that may be sliced by the lathe knife without damaging the latter, so that said fastener need not be removed from the log during the veneer peeling process. Further, appellant provides a guide and ram means for supporting the fastener on and driving it into the end of the log.

Claims 3, 4 and 6 have been rejected as unpatentable over either of the Williams patents. For present purposes, we may consider that of these references the Williams Patent No. 1,201,008 is representative, and our specific treatment will be confined thereto, the other Williams patent being regarded as cumulative in this respect. Williams discloses a fastener or clip, made of metal, having an express intended purpose of bridging a split in a defective timber for preventing further splitting of the same.

[4] First considering claim 3, and the particular terminology used therein, a question which arises to mind concerns the extent of the actual coverage of said claim in respect to the various items mentioned therein. After an introductory clause which merely sets forth

the general environment involved, and an "adapted" clause describing the intended use and purpose of a positively recited fastener element, the claim characterizes a property of the material of said fastener in terms of a non-postitively recited component of the environment noted (the lathe knife). Appellant, in referring to "the new article of manufacture" at the third line from the bottom of page 7 of the main brief, seems to be asserting that the claim is directed merely to the fastener per se, but his argument for patentability as to said claim appears to be based upon the association or combination of said fastener with the log in the particular veneer peeling environment here involved. If the claim is intended to cover only the fastener, the definition of the same in a positive sense should be only in terms of said fastener itself and not be dependent upon factors extraneous thereto which are not positively recited, while if intended to cover those other associated components in the involved environment upon which appellant's arguments seem to be based, then the claim should positively recite such other components in order to lend patentable significance to said arguments.

[5] While in accordance with the above, claim 3 may be viewed as somewhat indefinite in character as to exactly what is intended to be covered thereby, it is nevertheless on this basis interpretable as drawn to a fastener per se, and it is in this light that we construe said claim, regarding in this connection the introductory clause and the "adapted" clause aforementioned to be without any essential patentable significance.

This brings us to the question of the fastener element which is in substance the only element positively embraced by the claim. As to the configurational aspect of said element as recited in the claim, Williams No. 1,201,008 discloses a fastener presenting a rectangular body when viewed in elevation as in Figure 2, having a small thickness as shown in Figures 1 and 4 compared to its width or length, and being sharp at the one longitudinal edge 2. Since the Williams fastener constitutes a length cut from a stock strip, and may have a straight bar-like form as denoted in Figure 5, we can give no significance to appellant's argument as to such fastener having the form of a section of a spiral or cylindrical body.

[6] With respect to the material of the fastener, which is defined in claim 3 as "shearable by the knife of the lathe without damage thereto," we attach no patentable import to such definition in the light of its character as noted above merely in terms of environment factors which are not themselves the subject of positive recitation in the claim, it being apparent in this connection that there exists language to define the desired hardness of the fastener material in positive terms, such as by reference to a value or range of values on the Brinell or other suitable hardness scales for example. More

over, viewing for purposes of argument the factor of hardness or shearability of the fastener as one open for consideration, it is clear that metal in general, and iron or steel such as the Williams fastener would presumably be made of, exists in varying degrees of hardness running throughout a considerable wide range, some of which would undoubtedly be suitable for appellant's purposes, and we think it fully within the contemplation of the patentee to utilize for his fastener any of such metals. Under the circumstances outlined, we are not impressed by appellant's arguments relating to asserted deficiencies of Williams in respect to purpose or material.

For the reasons given, we deem claim 3 to be unpatentable over the prior art, and the rejection of said claim will therefore be sustained.

Claim 4 adds to claim 3 that the opposing large faces of the fastener are not impressed by appellant's arguments relating to asserted deshown by the ribs 4 in Williams No. 1,201,008. We will sustain the rejection of claim 4.

Claim 6 adds to claim 3 that the fastener has a hole therethrough for the reception of bundling wire for assembling purposes. Insofar as the fastener per se is concerned, we consider the feature of a hole therein to be immaterial to its fastening purposes. As regards the capability afforded by such holes for bundling a plurality of the fasteners together, the patents to Lund and Scott each teach broadly the provision of a hole in an entity to enable a wire or cord to be passed therethrough for bundling a plurality of such entities together, and in view of this teaching we see nothing of patentability in the mere provision in the fastener of Williams of a hole for similar bundling capability purposes. The rejection of claim 6 will be

sustained.

Claims 5, 7, 18, and 19 have been rejected as unpatentable over either of the Williams patents in view of Drypolcher, it being the basic position of the Examiner that there would be no invention involved in making the Williams fastener of a synthetic plastic as shown for the staple disclosed in Drypolcher.

We are in agreement with the Examiner as to this rejection. The molded synthetic plastic staple of Drypolcher is expressly disclosed as for use in wood. Claims 5, 18, and 19 are of the same general character as to their mode of definition as claim 3, differing therefrom in additionally characterizing the material of the fastener as a synthetic plastic. Thus, they are similarly interpretable as directed merely to the fastener per se, and on this basis we see nothing of invention to be involved in selecting a plastic material such as disclosed in Drypolcher, capable of being driven into wood, as the material of the fastener shown in Williams No. 1,201,008 having an

analogous usage in wood. To do so would in our estimation merely constitute, insofar as the fastener per se is concerned, an obvious selection of a known alternative material for such an element, and in this sense, we see nothing of significant import in appellant's contentions that Drypolcher is concerned only with light tacking, particularly since there is nothing positively recited in the claims to denote other usage. With respect to the limitations in claim 19 as to the grooves and their spacing apart, we regard Williams No. 1,201,008, for example, as satisfying such limitations in the grooves defined in the fastener of this reference by the ribs 4, it being clear that the "full thickness" mentioned in the claim may reasonably be taken as the thickness represented at the center of the Williams fastener by the transverse dimension of the bar 1 plus the rib 4 thereat, such thickness being present in said fastener over substantially its entire width (except for the sharpened section) in the same sense as in appellant's device.

Claim 7, which is couched in language referring only to the fastener and does not bring in any environmental aspects, is met in our opinion by the references taken as we have noted above in connection with claims 5, 18, and 19, it being noted further that as to the "hole" referred to in claim 7, the same finds suggestion in Lund and Scott as we have pointed out above in connection with our treatment of claim 6.

The rejection of claims 5, 7, 18, and 19 will be sustained.

Claim 8 has been rejected upon a combination of the MacChesney and Lund patents. We are of the opinion that this claim defines nothing patentable over MacChesney alone. This patent, as denoted by the Examiner, concerns a bundle of fasteners held together by malleable wire means for insertion into a magazine type "driver," the wire being removed from said bundle after the insertion. MacChesney, in our opinion, satisfies the requirements of the claim as to the form of the wire, since the bent over portion of the wire 22 of the reference where it turns at the top of the stack of fasteners may be taken as the recited "terminal means too large to pass said holes." In the reference, the other or lower end of the wire 22 is bent over against the end fastener as claimed.

Thus, MacChesney meets claim 8 except for the particular form of the fasteners, and in this respect, as to the combination embraced by the claim, we deem the particular form of the fastener element of that combination to be immaterial. The coaction between the elements of the combination in MacChesney appears to be the same. as that between the elements embraced by the claim, and we see no difference in combinational results to be produced merely by a change in the form of the fastener element. We will sustain the rejection of claim 8.

Claim 20 has been rejected as "unpatentable over applicant's own discussion of the prior art." We do not agree with this rejection. Appellant appears to admit as prior art only the use of a heavy steel fastener such as would produce the difficulties mentioned above, and it appears that the Examiner's reasoning therefrom as to the use of softer materials would follow only from a knowledge of the instant disclosure, and could in no sense be taken as representative of an admission of prior practices. Claim 20 clearly includes the combination of a fastener with the log into which the same is driven, to constitute the prepared log which appellant urges as a material item of his concept, the characterization of the material of the fastener in this claim in terms of the environment involved having significance because of the inclusion of the combination as noted. We do not find in the art of record before us any such combination as embraced in claim 20 in the particular terms defined therein, and since this combination would inherently provide the capabilities and advantages ascribed thereto by appellant, which likewise we do not find in the references, we regard claim 20 as patentable thereover. We will not sustain the rejection of claim 20.

Claims 3 to 7, 18 and 19 have also been rejected as unpatentable over claims 11 to 15 of appellant's aforementioned copending application Serial No. 349,731.

Upon careful consideration of the issues involved, including an analysis and comparison of the noted claims of the two cases, we are inclined to the view that this rejection should be sustained. Appellant's copending application also relates to a fastener, of the same general type as the fastener of the instant application, and for similar usage and purpose in a similar veneer peeling environment. While there are structural differences between the respective fasteners of the two applications as disclosed, in the way of different configurations therefor, the claims involved in the instant rejection, taken as a whole, do not maintain such distinction, it being noted in this. respect that claims 11 to 15 of the copending application define the fastener as to its material primarily in terms of the intended use instead of in terms of its own structure, as in the instant application.

[7] Upon analysis, we find, as appears to be conceded by appellant in his attempt to submit the same claims herein, that each of claims. 11 through 15 of the copending application are clearly readable upon the fastener disclosed in the present case, and are thus generic to the two species of fasteners respectively disclosed by appellant in the two applications. Likewise, claims 3, 4, 5, 18 and 19 of the instant application are similarly readable upon and thus generic to said two disclosed species of fasteners. It is fundamental that generic claims may not be maintained in each of two cases of the same applicant,