a coinventor through inadvertence and mistake and without fraudulent intent. How may A protect his rights as sole inventor, unimpaired? Ans. He may file an amendment eliminating B, or he may file a new sole application which will be entitled to the benefit of the filing date of the joint application. In re Roberts 1920-158.

Question 4. An application is filed October 1, 1921. The oath states that a German patent has issued on an application for the same invention filed Sept. 1, 1920. In response to a rejection on such patent the applicant requests reconsideration, asking the benefit of the Nolan Act and stating that, although the German patent has been granted, publication of the patent has been withheld by the German Patent Office. What action should be taken? Ans. Reject the application on the German patent. A German patent granted on an application filed more than 12 months prior to the domestic filing date is a bar to the grant of an American patent, although not printed, if it is open to the public. Safety Gas Lighter Co. v. Fischer Bros. & Corwin. 236 Fed. 955. See also Sirocco Engineering Co. v. Sturtevant Co., 220 Fed. 137.

Ex parte Rockham, 1923 C. D. 4, is to the effect that a British secret patent, not published and not open to the public is not a bar to an American patent.

The applicant in this case was not entitled to the benefit of the Nolan Act because he did not file his case within 6 months of the date of the act which was March 3, 1921. Question 5. An application filed Sept. 5, 1921, recites

two foreign applications for the same invention, made by the same inventor as the U. S. application, one 15 months prior to the U. S. application and one 9 months prior thereto. Neither of the foreign applications has resulted in a patent. In response to a rejection on a reference which has an effective date 6 months prior to the application

in this country he requests the benefit of the filing dates of the application. Treat the case.

Ans. Repeat the rejection and advise applicant that he is not entitled to the benefits of the filing dates of either of the foreign applications since one of said applications was filed in a foreign country more than 12 months prior to the filing on the U. S. application. Rule 29. Sec. 4887 R. S. Question 6 (a) A files an application January 1, 1923. His claims are rejected on a U. S. Patent which was granted on an application filed March 1, 1921. He refers to his oath which states that he filed an application for the same invention in France Jan. 2, 1921, and requests that the reference be withdrawn. What should the examiner do?

(b) An application is filed in this country April 1, 1922. It is rejected on a publication dated Sept. 3, 1921. The applicant then calls attention to his oath, which recites a Canadian patent dated July 1, 1921, on an application filed April 2, 1921, and requests the benefit of the date of his foreign application. What action shall the examiner take? Ans. (a) Advise applicant that he can overcome the U. S. patent as a reference only by filing affidavit under Rule 75, which should be accompanied by a translation of the French application as originally filed, certified to by the French patent office. Ex parte Barthels 1912-C. D. 171.

(b) Advise applicant that he cannot obtain the benefit of the filing date of his Canadian application,Canada not being a member of the International Convention,-in the absence of proof that Canada grants similar privileges to U. S. citizens. lovitz v. Rosenberg 1921-47.

Kis

Canada is now a member of the convention. 315 O. G. 395. U. S. applications filed subsequent to the time Canada became a member could obtain benefit of filing date of Canadian applications.

Question 7. State the grounds of rejection from which

an appeal may be taken to the Board of Examiners in Chief in an application for the reissue of a patent.

Ans. Any of the claims of the reissue application which have been twice rejected for the same reasons upon grounds involving the merits of the invention, novelty or utility, or on the ground of abandonment, public use or sale, inoperativeness of invention, aggregation of elements, incomplete combination of elements, or when amended for want of identity with the invention originally disclosed, or because the amendment involves a departure from the invention originally presented, or on the ground that the original patent is not inoperative or invalid, or if so inoperative or invalid, that the errors which rendered it so did not arise from inadvertence, accident or mistake, are appealable to the Board of Examiners in Chief. Rule 133. Question 8. State what should be the examiner's action in each of the following cases, appeal having been filed:

(a) Final rejection required correction of the drawing, which was not responded to.

(b) Final rejection on question of division required additional description of one of the inventions, which was not furnished.

(c) Following an amendment amending the claims in substance, examiner rejects same on the references and reasons of record.

Ans. (a) If the correction of the drawing be a formal one, not affecting the merits of the appealed claims, the appeal should be forwarded and the correction made after determination of appeal, but if the correction affects the merits of the claims correction must be made before appeal is forwarded so that the Board may have the drawing in proper condition when considering the claims. Ex parte Belden, 1924 C. D.

(b) If the additional description was not necessary to pass on the requirement of division, examiner should forward the appeal, because the additional description might not even be necessary if the Board of Examiners in Chief sustains the requirement, and applicant elects to prosecute the invention which has been completely described. Order 2749 and Ex parte Belden 1924 C. D.

(c) The claims having been amended in substance, they have apparently not been considered and rejected twice on the same grounds in their amended form as required by Rule 134. The appeal was therefore premature and the examiner should refuse to forward the appeal for that reason. Question 9. What basis in the statutes, if any, is there on which claims may be rejected for multiplicity? What should be the examiner's action on a new application presenting an unreasonable number of claims?

Ans. Section 4888 of the Revised Stats. provides that the inventor, "shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." An invention claimed in a multiplicity of claims is not a compliance with that part of the statutes above quoted.

Examiner should advise applicant that the claims are needlessly multiplied, that they are patentably indistinct from one another, and point out certain sets of claims as examples which he considers to be patentably indistinct. Also advise applicant that the claims should be reduced to a reasonable number, naming the number, and should he controvert the requirement he must point out wherein the claims differ from each other in patentable substance. Pertinent art should also be cited. Ex parte Duncan 1920-36; Ex Parte Oswald 333 O. G. 3.

Question 10. (a) An applicant, A copies a claim from the

patent to B and asks for an interference therewith. The interference is declared and, after the preliminary statements have been received, A files a paper calling the attention of the primary examiner to a prior patent, stating that it anticipates the issue of the interference between A and B. What course shall the examiner pursue?

(b) Two applications are in interference. After the preliminary statements are approved the attorney for one of the applicants informally calls the examiner's attention to a prior patent which seems to anticipate the issue. What shall the examiner do?

Ans. (a) The examiner shall accept A's statement, and ask the Commissioner to dissolve the interference so that the claim may be rejected as to A without considering whether the reference meets the claims of the patent. Slivinski v. Lane 1922-4.

Ans. 10. (b) Whenever a reference is called to the attention of the Primary Examiner, either formally or informally, by an interested party or his attorney, the Examiner should include in the letter calling the reference to the attention of the Law Examiner a statement that the reference was called to his attention by such party. Slivinski v. Lane 1922 C. D. 4.

CURRENT COURT DECISIONS.

COLUMBIA LENS CO. et al, vs. L. E. SMITH CO., C. C. A. 3; Davis, Circuit J., 6 F. (2d) 97.

In the brief of the above named decision appearing in the Journal of the Patent Office Society, of December, 1925, pages 189 to 191, it was stated that the question of the validity of the Clark patent was not before the Court on appeal. It has been found that this statement is in The decree of the lower Court was for defendant