Applicant has pointed out no reasons for reopening the case except that in the second rejection the Examiner did not insist upon the rejection upon both of the grounds stated in the first letter, and he urges that this constitutes a new ground of rejection, to which he should be given an opportunity to reply. This contention, however, is clearly in error. It is well settled that the abandonment of one of several correlative references does not give rise to a new ground of rejection. The constructions shown in the references are very simple, and their application to the claim is obvious and could not well be misunderstood. The Examiner and the applicant appear to have reached a clear issue, and no reason is found for reopening the case for further prosecution before the Examiner. The petition is denied. EX PARTE Kehrhahn. Decided November 23, 1910. 162 O. G., 537. PROSECUTION OF APPLICATION-NON-RESPONSIVE ACTION-ABANDONMENT. On August 3, 1909, applicant was required to revise his specification and claims. On May 13, 1910, an amendment was filed canceling the original specification and claims and substituting a new specification. On May 28, 1910, the applicant was informed that the new specification contained no claims and that action on the merits of the case was deferred. Held that the year in which applicant could take action ran from August 3, 1909, and that an amendment containing new claims not having been filed till October 21, 1910, the application was abandoned in the absence of a showing establishing that the delay was unavoidable within the meaning of section 4894 of the Revised Statutes. ON PETITION. MACHINE FOR TREATING HIDES. Messrs. Wright, Brown, Quinby & May for the applicant. BILLINGS, First Assistant Commissioner: This is a petition from the action of the Examiner holding the above-entitled application abandoned. The record shows that on August 3, 1909, applicant was notified that the specification should be carefully revised and rewritten, that the claims were informal and did not conform to the practice of the United States Patent Office, and certain patents were cited showing the state of the art. On May 13, 1910, an amendment was filed directing the cancelation of the specification and claims and the insertion of a substitute specification, which, however, contained no claims. On May 28, 1910, applicant was notified that no claims were filed in place of those canceled, and action on the merits of the case was deferred. On October 21, 1910, a new set of claims was filed, and on November 8, 1910, applicant was notified that the case was abandoned, since the claims were not filed within one year from August 3, 1909. The present petition was filed November 14, 1910. In excuse for the delay the attorneys state that when the substitute specification was prepared a new set of claims was also prepared and the amendment was submitted to the applicant; that it was returned to the attorneys and it was not noted that the claims were not also returned; that the substitute specification was filed, and the first knowledge that the attorneys had that the claims had not been presented was the receipt of the Examiner's letter of May 28, 1910. It is further stated that applicant was absent from "this State" for the greater part of the time from the first day of May, 1910, to the first day of October, 1910, that the Examiner's letter of May 28, 1910, did not indicate that the year allowed by law would run from August 3, 1909, and that the attorneys believed and understood that the period allowed for response to the letter of May 28, 1910, ran from that date. Rule 171 provides that an amendment in order to save a case from abandonment must be responsive, and since the substitute specification contained no claims it was clearly not a responsive amendment. Whether it was mentioned or not in the Office letter of May 28, 1910, the attorneys are chargeable with knowledge of the fact that the year ran from the date of the last Office letter, since the amendment of May 13, 1910, was clearly not responsive and no action was taken thereon other than to call attention to the fact that it contained no claims. The delay in prosecuting the case cannot be held to be unavoidable within the meaning of section 4894 of the Revised Statutes. The petition is denied. FEE-RETURN. CURTIS v. KLEINERT. Decided December 8, 1910. C. moved to dissolve the interference on the ground that the issue is not patentable, and K. moved to dissolve on the ground that C. had no right to make the claim. The Primary Examiner granted both motions, and his decisions were affirmed by the Examiners-in-Chief. C. appealed to the Commissioner from the decision holding that he had no right to make the claim, which was dismissed as raising a moot question, as K. did not appeal from the decision holding the issue unpatentable. Held that C.'s appeal fee was not paid by mistake and that he was not entitled to have it returned. ON PETITION. MACHINE FOR FASTENING HOOKS and EYES ON CARDS. Messrs. Southgate & Southgate for Curtis. TENNANT, Assistant Commissioner: This is a petition by Curtis for the return of the appeal fee of twenty dollars paid in this case. It appears that during the history of this case Curtis made a motion to dissolve the interference upon the ground that the issue was not patentable. Kleinert moved to dissolve the interference upon the ground that Curtis had no right to make certain claims forming the counts of the issue. Both motions were granted by the Primary Examiner, and both parties appealed to the Examiners-in-Chief. That tribunal affirmed the decision of the Examiner. Curtis filed an appeal from the decision of the Examiners-in-Chief holding that he had no right to make the claims; but in view of the failure of Kleinert to appeal from their decision holding that the issue was not patentable the appeal of Curtis raised a moot question, and upon petition by Kleinert was dismissed for that reason. It is now contended that, in view of the fact that the interference stood dissolved upon the failure of Kleinert to appeal, so that there was nothing from which the party Curtis could appeal, the appeal fee was paid by mistake and that it should be returned under the provisions of Rule 208. Rule 208 reads as follows: 208. Money paid by actual mistake, such as payment in excess, or when not required by law, or by neglect or misinformation on the part of the Office, will be refunded; but a mere change of purpose after the payment of money, as when a party desires to withdraw his application for a patent or for the registration of a trade-mark, or to withdraw an appeal, will not entitle a party to demand such a return. The meaning of the term "mistake" as used in this rule must be construed to be the ordinary meaning-that is to say, actual mistake of fact. In the present case no such mistake exists. The party Curtis manifestly filed this appeal with full knowledge of the circumstances of the case in order to protect his rights in the event that Kleinert should appeal. The fact that Kleinert's failure to appeal rendered his appeal abortive does not change the situation. The petition is denied. EX PARTE IAgan. Decided December 10, 1910. 162 O. G., 538. 1. CLAIMS-PROLIXITY. A claim inay be so prolix as not to comply with the requirements of the statute that an applicant "shall particularly point out and distinctly claim the particular improvement or combination which he claims as his invention or discovery." 2. SAME-SAME. Claims should not be allowed merely because they represent a multitude of elements all of which do not appear in one or two or even more refer ences. ON PETITION. HOSE-WRENCH. Messrs. Woodward & Chandlee for the applicant. TENNANT, Assistant Commissioner: This is a petition that the action of the Examiner finally rejecting the claim presented in this application be set aside as being prema ture. I have carefully considered the record of the case and find no error in the action of the Examiner. The finally-rejected claim is twentythree typewritten lines in length and appears to be a complete inventory of all the elements contained in applicant's device. The applicant's device is simple in character, and it does not appear that there was any necessity for applying the references more specifically than was done in the Office letters of February 12 and April 5, 1910. Objection is made by the Examiner to the prolixity of the claim. Claims of the character presented herein do not comply with the provisions of section 4888, Revised Statutes, which requires that an applicant shall particularly point out and distinctly claim the particular improvement or combination which he claims as his invention or discovery. If an applicant has made an invention, the claim for such invention should comply with the requirements of the statutes and should not be encumbered by unessential elements. Claims should not be allowed merely because they represent a multitude of elements all of which do not appear in one or two or even more references. A claim similar to that under consideration, which was presented in the early history of the Patent Office, was criticised by Commissioner Fisher in the following term: This is a remarkable claim. It is for a combination consisting of no less than fifteen essential elements, the absence of any one of which would destroy it, and any fourteen of which might be used with impunity. It contains an inventory of every minute detail of the apparatus. It is difficult to see how it could have been made more specific, unless it had included, as an additional element, the solder by which the parts are put together. It is scarcely necessary to say that no combination precisely similar is to be found in the Office. The fifteen elements here united were never united before, and probably never will be again. The applicant himself, in the next machine which he constructs, will doubtless omit one or more of them, and so destroy his. combination and avoid his own patent. (Ex parte Lawrence. C. D., 1869, 83.) The petition is denied. CALIFORNIA FRUIT CANNERS ASSOCIATION v. FOSTER, CALDARERA & COMPANY. Decided December 29, 1910. 162 O. G., 539. 1. TRADE-MARKS-INTERFERENCE "ARKOMA "-"ABMONA." Held that an interference in fact exists between the words "Arkoma " and "Armona" used as trade-marks for goods of the same descriptive properties. 2. SAME-SAME-MOTION TO DISSOLVE-Particular DESCRIPTION OF GOODS. The fact that in C.'s application for registration of a trade-mark the particular description of the goods is given as "canned fruits and canned vegetables." Held to constitute no ground for dissolving an interference between this application and an application for the registration of a trademark for "flavoring extracts and canned tomatoes," especially as the labels filed by C. show that the mark was used on "canned tomatoes." 3. SAME-SAME-SAME-QUESTION OF GEOGRAPHICAL CHARACTER OF MARK IMWHERE REGISTRATION IS SOUGHT UNDER "TEN-YEARS" MATERIAL Where one of the applications involved in an interference is presented under the " ten-years" clause of the Trade-Mark Act, the question of whether it is geographical in significance is immaterial to the proper determination of a motion to dissolve the interference. ON APPEAL. TRADE-MARK FOR CANNED FRUITS AND VEGETABLES. Mr. W. R. Stone for California Fruit Canners Association. TENNANT, Assistant Commissioner: This is an appeal by Foster, Caldarera & Company from the decision of the Examiner of Trade-Marks denying a motion by them for the dissolution of the above-entitled interference. The trade-marks involved in this interference include the application of the California Fruit Canners Association for registration of the word "Armona " as a trade-mark for canned fruits and canned 2097°-12-3 |