4. SUBSTANTIAL EVIDENCE SUPPORTING TRIAL COURT'S FINDING OF EXPERIMENTAL USE.-In view of the substantial evidence in support, the trial court's finding of experimental use is affirmed. Robert C. Watson, Commissioner of Patents v. Thomas J. Allen, 69. 5. WEIGHT GIVEN VIEWS OF U.S. COURT OF CUSTOMS AND PATENT APPEALS.-"Our holding with respect to public use cannot be reconciled with that of the Court of Customs and Patent Appeals. We recognize the special competence of that court to deal with matters relating to patents and as to technical or highly specialized patent matters, we would accord substantial weight to its views. However, the issues presently involved are not technical or in any sense within the areas of special expertise; hence, the views of the Court of Customs and Patent Appeals are those of a co-ordinate appellate court having, perhaps, approximately the standing of another circuit court of appeals; they are persuasive and entitled to deference, but are not authoritatively binding." Id. ?? 6. DISTRICT COURT'S ORDER CONDITIONALLY VACATED.-Where in the District Court the Patent Office relied solely on the doctrine of res judicata as to some of the claims involved in an action under 35 U.S.C. 145 and the District Court held, as to all the claims, that they were taught by the prior art, and that holding was made "notwithstanding the fact that counsel for the Patent Office advised the District Court at the outset that the issue of patentability vel non was not before the court," and no "issue of patentability vel non was argued to the District Court by the parties, nor was any evidence introduced on that issue,' Held, in the interest of justice, that the District Court's judgment dismissing the complaint should be vacated conditionally, and within sixty days appellant might apply to the District Court for a new trial based on a proffer of evidence on the issue of patentability and Held that denial by "the District Court of such an application, or that Court's action upon the record made at a new trial, if held, may be appealed *** by the losing party, and upon such new appeal all issues raised may be considered anew" unprejudiced by the former appeal or its disposition, and Held that should appellant not apply for a new trial as authorized the judgment of the District Court for appellee should be reinstated. Preformed Line Products Company v. Robert C. Watson, Commissioner of Patents, 91. Appeal From Dismissal by District Court 7. WHERE COMPLAINT HAS BECOME MOOT.-Where, upon appeal from an order of the District Court dismissing a complaint seeking review of a dismissal by appellee Commissioner of Patents of a trademark opposition, it appeared that the complaint was moot, that statements by the Commissioner complained of by appellant were dicta, unnecessary to the Commissioner's decision and of no binding effect, and that another suit by appellant pending in the District Court could and should be adjudicated without reliance on or prejudice from the statements, Ordered that the cause be remanded to the District Court with directions to vacate the order of dismissal and to dismiss the complaint as moot. Circus Foods, Inc. v. Robert C. Watson, Commissioner of Patents, Herfort Canning Co., Inc., et al., 44. Presumptive Correctness of District Court's Findings and Conclusion 8. FACT FINDINGS NOT CLEARLY ERRONEOUS, LAW OF PUBLIC USE CORRECTLY APPLIED. “* * * we are bound to treat the District Court's findings and conclusion in this matter as we would on any appeal, that is, as presumptively correct. While the result is by no means free from doubt, we think the fact findings of the trial court are not clearly erroneous, and that the District Court correctly applied the law of public use." Robert C. Watson, Commissioner of Patents v. Thomas J. Allen, 69. Question of Fact 9. INVENTION IN USE OF ESTERS OF NON-AROMATIC ACIDS IN PLACE OF ESTERS OF AROMATIC ACIDS.-The question whether appellant's particular use of esters of non-aromatic acids was invention over the previous use of esters of aromatic acids Held "peculiarly a question of fact dependent upon expert chemical knowledge, to be resolved in the first instance in the Patent Office and in the second instance by findings of the District Court upon expert testimony." Leon F. Shackell v. Robert C. Watson, Commissioner of Patents, 67. .. Trademarks 10. APPLICANT'S RIGHTS UPON RE-APPLYING FOR REGISTRATION AFTER REFUSAL BY COURT NOT DECIDED.-After finding no error in the District Court's conclusion that evidence offered by appellant was insufficient to show the public had in fact come to accept a maroon oval by itself as a symbol of applicants' goods, Held that "We need not reach or decide what will be appellant's rights if he reapplies for registration and submits more persuasive evidence to overcome the presumption that a non-distinctive oval by itself is not a mark whereby appellant's 'goods. may be distinguished.' Marcalus Manufacturing Company, Inc. v. Robert C. Watson, Commissioner of Patents, 89. APPEAL TO U.S. COURT OF CUSTOMS AND PATENT APPEALS. 1. REMANDED.-Where it became apparent at the oral argument that a patent reference could not legally be used to show prior art, and it was evident that both the examiner and the Board of Appeals proceeded under a misunderstanding, Held that the decision of the Board should be reversed, without an expression of opinion on the merits, and the case remanded to the Patent Office with instructions to reexamine the application without regard to such patent. *In re Glaberson, 234 2. AMENDMENT OF REASONS OF APPEAL.-In regard to appellant's petition for permission to amend his appeal to include in the reasons of appeal a reference to patents not before mentioned therein, Held that the determination of the questions raised by the petition would require consideration of the entire record, which would involve a duplication of the consideration necessary at the hearing of the appeal, and that the petition accordingly should be denied without prejudice to its renewal at that time. *In re O'Brien, 318. 3. APPEAL REGARDED AS WITHDRAWN AS TO A CLAIM.-"While the notice of appeal also allegea error in the Board's decision affirming the Examiner's rejection of claim 96, that claim is not included in the record and is not mentioned in the statement of errors relied on in appellant's brief. Accordingly, the appeal as to claim 96 is regarded as having been withdrawn." *In re Michlin, 408. 4. MOTION TO VACATE DECISION RENDERED UPON REMAND OF CASE TO PATENT OFFICE.-Held that a motion in the United States Court of Customs and Patent Appeals to vacate the decision of the Assistant Commissioner, rendered after the court's remand of the case to the Patent Office for further proceedings not inconsistent with the court's opinion, should be denied, since the court found nothing in the decision inconsistent with their opinion. *Roger & Gallet v. Janmarie, Inc., 104. Decision 5. EFFECT OF REVERSAL-SUGGESTION MADE THAT SCOPE OF CLAIMS BE *In re 6. HOLDING A Claimed FEATURE OBVIOUS AFTER REJecting a REFERENCE RELIED ON BY THE BOARD OF APPEALS.-"Claim 11 is essentially drawn to the same device as is recited in claim 10 with the additional limitation that separate means close the ends of the channel member. This claim was rejected by the Board over the references cited against claim 10 in view of Attwood. We disagree with the Board that Attwood is a good reference to be combined with the others cited against this claim. * We feel, nevertheless, that it would be obvious to the skilled artisan, **, to provide an end closure to seal off the channel member * * For these reasons, we agree with the Board's rejection of claim 11." *In re Allwood, 204. 7. NO ANTICIPATION FOUND, NO CONTENTION OF LACK OF INVENTION OVER REFERENCE. "* * * claims 2, 3, and 21 are not anticipated by the Goddard patent. Since it has not been contended that, if not so anticipated, they do not define invention over the patent, it must be held, so far as the issues presented here are concerned, that those claims are drawn to patentable subject matter." *In re Chandler, 291. Diminution of Record 8. RULES 25 (3) (e) and 13.-Held that Rule 25 (3) (e) of the "Rules of the United States Court of Customs and Patent Appeals" is not authority "for the ex parte omission by appellant of parts of the record, for the purpose of reducing costs or otherwise, on the mere belief that they are unnecessary or irrelevant" and that, if appellant omits anything, the appellee has the right to move that it be included and that, in doing so, appellee is subject to the rules of the court and must comply with Rule 13, entitled "Diminution of Record." *Meyer Chemical Co. v. Anahist Co., Inc. (Warner-Lambert Pharmaceutical Co., Assignee, Substituted), 160. 9. ASSERTION THAT OMITTED PART IS RELEVANT IS REASON ENOUGH FOR ITS INCLUSION.- -"***. The shortening of records and the reduction of what must be printed is highly desirable and is perhaps best effected by agreement of counsel. ** On the other hand it is not for one party to say that testimony shall be left out because he thinks it is irrelevant or because he does not contest what it proves. It is reason enough to include it that the other party asserts that it is relevant. Otherwise the appellant could expurgate the record to suit his strategy." * Id. 10. TESTIMONY OMITTED ON THEORY IT IS IRRELEVANT.-"Appellant's stated objections to the additions requested indicate that it is omitting appellee's testimony *** on the theory it is irrelevant. Without prejudging that evidentiary point, it is clear that if this testimony were deleted we would be considering the issue before the Patent Office on a record quite different from the record before it, yet we are to determine the appeal on the evidence produced before the Patent Office." *Id. 11. COST OF APPELLEE'S ADDITIONS TO BE ASSESSED ON FINAL DECISION.— "Appellee's motion to correct diminution of the record is granted, the cost of printing appellee's additions to be assessed on final decision." *Id. Jurisdiction 12. INTERFERENCES.- -""*** we find it unnecessary to consider whether Martin's application fairly discloses the use of a pH range from 9 to 10 or the use of any percentage of thioglycolic acid in excess of four, ***, since those matters relate only to the patentability of the count to Martin. The jurisdiction of this court in interference cases is limited to priority of invention and questions ancillary thereto." *Den Beste v. Martin, 178. 13. SAME REMAND TO CONSIDER PATENTABILITY OF INTERFERENCE COUNT REFUSED. "It is contended by Bac that the claim is unpatentable to Loomis in view of an Indian patent issued on Bac's invention more than two years prior to the filing date of the Loomis application, and that the case should be remanded to the Patent Office for appropriate action on that matter. It is well settled, however, that the jurisdiction of this court in patent interferences is limited to the determination of It is not priority of invention and matters ancillary thereto. ***. Matter Before Court 14. POINT OF LAW NOT RAISED BELOW, CONSIDERED BY BOARD OF APPEALS, OR MENTIONED IN REASONS OF APPEAL.- 'Appellant has argued in his brief and at the hearing a point of law with respect to the construction of 35 U.S.C. 102(e) but since this point does not appear to have been raised below, considered by the Board of Appeals or mentioned in appellant's reasons of appeal we cannot consider it." *In re Gray, 157. 15. TRADEMARKS-EX PARTE HOLDING IN INTER PARTES PROCEEDING. "Appellant alleges error in the holding of the Assistant Commissioner with respect to confusing similarity, but since that holding was expressly made ex parte and was favorable to the applicant, it cannot properly be reviewed on the instant inter partes appeal by the opposer.' *The Gillette Co. v. George P. Kempel, doing business as Shush Mfg. Co., 300. 16. CLAIMS TO NON-ELECTED SPECIES NOT CONSIDERED BY EXAMINER OR BOARD. "Claims 4, 5, 13, and 14 were held to be drawn to non-elected species. They were not considered on their merits by the Examiner or the Board and, accordingly, are not before us for such consideration." *In re Chandler, 291. 17. ASSIGNMENT OF ERROR LACKING.-"In the brief for appellants it is contended that the interference count is not supported by the disclosure of either of appellee's applications * * *. However, appellants' reasons of appeal do not assign error in the holdings of the Patent Office tribunals that those disclosures support the count and accordingly those holdings cannot be reviewed here.' *Tolle et al. v. Starkey, 359. 18. LACK OF SPECIFIC ASSIGNMENT of Error-MOTION FOR SUMMARY JUDGment of AffiRMANCE. In regard to a "Motion for Summary Judgment of Affirmance" based on a contention that, since there was no specific assignment of error with respect to certain reference patents (said by the Board of Appeals to be "cumulative only relative to" another reference), the court was bound to affirm a rejection so far as it was based on those patents, and the issues raised in the assignments of error were, therefore, moot, Held that neither the applicable statutes nor the rules of the court contain any provision for a "summary judgment of affirmance," and that, on the contrary, 35 U. S. C. 143" provides that, prior to a decision on the merits, the court shall afford a hearing and the Commissioner shall furnish the court with the grounds of the decision of the Patent Office in writing 'touching all points involved by the reasons of appeal,'" and Held that the motion accordingly should be dismissed. *In re O'Brien, 318. 19. POINT NOT RAISED BY EXAMINER OR BOARD.-On review of a rejection based on an equivalency allegedly established by a disclosure, in the application as filed, of the incorporation of either amino or mercapto compounds in a polyphosphate composition, and an original claiming of such compounds in a "Markush" group, and anticipation of the composition containing the amino compounds, Held that a point regarding "the existence of an actual art-recognizable 'structural' equivalence between the prior art amino compounds and the claimed mercapto compounds, over and above any implied admission of such equivalence due to inclusion in a Markush group or expressly admitted functional equivalence," could not be considered “for the reason that it was not raised either by the Examiner or the Board." *In re Ruff et al, 417. 20. 35 U. S. C. 144-POINTING OUT AN APPARENT ERROR.-"Since the only rejection before us is the one on failure to satisfy the requirements of the first paragraph of 35 U. S. C. 112, we have no choice but to reverse the Board as to all three claims on appeal. It has come to our attention, however, that claim 15 is dependent upon claim 12, which claim was rejected as unpatentable over the prior art. This rejection was not appealed from. Since all that claim 15 adds to claim 12 is a drying step, a limitation which would clearly not render claim 15 patentable over the reference applied against claim 12, it is obvious that the Board (as well as the Solicitor and the applicants) committed an oversight 489957-59-31 when it grouped claim 15 with claims 13 and 14. Since our jurisdiction is limited by statute, 35 U. S. C. 144, we can do no more than to point out what appears to be a patent error. *In re Franck et al, 355. 21. REJECTION AFFIRMED BY BOARD OF APPEALS CONSIDERED.-"While the Examiner rejected the appealed claims on several grounds, his decision was affirmed by the Board only so far as it was based on the Ferrant patent. Accordingly, no other ground of rejection will be considered here." *In re Michlin, 408. 22. Assignment of Error.—Where appellee contended that the Board of Patent Interferences had ruled that interference counts contained two express limitations preventing them from reading on appellant's parent application and serving as "grounds" for "rejection" by the Board, the first limitation and "ground" involving the word "effectively," and also contended that appellant had assigned as error and discussed in his brief only the first "ground," Held that, in view of the fact that "effectively" broadened the counts as a whole, including the phrases and words included in the second express limitation, appellant was not estopped to present any argument he had presented as to the Board's comments on the second limitation, and Held that, in view of the interrelation between the first and second limitations, appellant's assignment of error of the Board's failure to properly define "effectively" puts in issue the Board's entire "rejection" on the ground that the parent application did not support the counts. *Liebscher v. Boothroyd, 23. POSITION AS TO CONFUSING SIMILARITY NOT TAKEN IN PATENT OFFICE AND HOLDING THEREON NOT ASSIGNED AS ERROR.-Where appellant urged in its brief that shampoo and home permanent waving kits are not goods of the same descriptive properties and that the use of the same or similar trademarks on such goods would not be likely to lead to confusion, but apparently had not taken that position in the Patent Office, and appellant's reasons of appeal did not assign error in the holding of the Assistant Commissioner on confusing similarity, Held that the question as to confusing similarity was not properly before the court. *Erlen Products Co. v. The Toni Co. (The Gillette Co., Assignee, Substituted), 149. 437. Motion to Strike Portions of Brief Deferred 24. MOTION MOOT AFTER DECISION.-"Before oral argument of this case, appellants filed a motion to strike portions of the brief for the Commissioner on the ground that they contained arguments relating to grounds of rejection and references not considered by either the Board or the Examiner. We deferred decision on this motion due to the fact that it would have required consideration of many of the same matters which would have had to be considered to reach a decision on the merits of the case. Since we have found it unnecessary to rely upon any of the matter to which the motion is directed, the questions presented by the motion are moot and do not require our consideration." *In re Rubin et al., 366. Presumption Lower Tribunals Correct 25. Abbott v. Coe QUOTED.-""The presumption that the Patent Office is right is reenforced, in the present case, by the presumption that the trial court is right.' Abbott v. Coe, 71 App. D. C. 195, 197, 109 F. 2d 4 and 9, 451." C. H. Boehringer Sohn v. Robert C. Watson, Commissioner of Patents, 77. Public Access to Judicial Records 26. PERSON HAVING NO INTEREST IN APPEAL MAY OBTAIN COPY OF DECISION OF BOARD OF APPEALS FROM TRANSCRIPT OF RECORD.-Held that a motion, by a petitioner not alleging any special interest in a patent appeal pending before the court, for an order directing the clerk of the court to provide copies of the decision or decisions of the Patent Office Board of Appeals, as set forth in the Transcript of Record that was filed in the appeal, must be granted. *In re Motion of Ellsworth H. Mosher, 99. |