Claims 1 and 3 of the patent are as follows:

1. The new article of manufacture, flexible sandpaper, which includes a backing, a grit or layer of abrasive particles, and a bond for uniting the grit to the backing including a synthetic resinous condensation product which is solidified to a flexible and waterproof state.

3. The new article of manufacture, flexible sandpaper, which includes a backing, a grit or layer of abrasive particles, and a bond for uniting the grit to the backing including a synthetic resinous condensation product which is solidified to a flexible and waterproof state by the application of heat thereto.

The applicant (appellant) insists that he has invented sandpaper characterized by inherent flexibility with infusibility or inertness to heat. He insists that he has produced this result "by turning to the field of flexible resins for a bonding agent." He does not contend that he taught the industry how to make a flexible resin or that his invention lies in the flexible resin as such,

because flexible resins were, per se, known. What he did discover and teach the abrasive industry (he insists) was that by combining the elements of a flexible base, abrasive grains and a flexible resin as a bonding agent (which latter could be set to the infusible state and remain flexible in that state), a flexible abrading paper or cloth could be obtained.

He prefers to use the process for making a flexible phenolic condensation product described in the patent to Byck, No. 1,590,079, June 22, 1926. As pointed out by the Patent Office, the Byck patent emphasizes the plasticizing effect of the tung oil employed in the composition.

Two expert witnesses produced by the applicant were of the opinion, based upon experiments, that the Carlton patent does not disclose a sandpaper having as a bonding agent a resinous body characterized by the combined properties of flexibility and infusibility. The expert tribunals of the Patent Office evidently were of a contrary opinion.

When the question is, whether a thing can be done or not, it is always easy to find persons ready to show how not to do it.

Webster Loom Co. v. Higgins, 105 U. S. 580, 586. Again, in A. B. Dick Co. v. Barnett (C. C. A. 2) 288 F. 799, 801, the court said:

We are of opinion that it is advisable to remember first how very easy it is not to do a thing, and how small is the step from not wanting to do a thing to declaring that it cannot be done.

See, also, Metropolitan Engineering Co. v. Coe, 78 F. (2d) 199, 64 App. D. C. 315.

[1] We agree with the Patent Office that the Carlton patent discloses the product described in claims 10 and 11.

[2] While the third claim is not properly before us (because not passed upon by the Board of Appeals and therefore may not be presented or considered in the bill in equity under section 4915, Lucke

v. Coe, 69 F. (2d) 379, 63 App. D. C. 61), everything we have said. concerning claims 10 and 11 applies with equal force to that claim. The decree is affirmed.

Affirmed.

INTERFERENCE

[U. S. Court of Appeals for the District of Columbia]

COE, v. U. S. EX REL. REMINGTON RAND, INC.

No. 6,607. Decided April 27, 1936

469 O. G. 763; 84 F. (2d) 240

REJECTION BY EXAMINER AFTER DISSOLUTION-RIGHT OF APPLICANT TO AMEND.

Where, after dissolution of an interference involving an application and a patent, on the ground that applicant had no right to make the claims, the Examiner rejected the claims and the applicant filed an amendment traversing that rejection and including matter taken from prior patents referred to in his application and additional claims Held that applicant had a statutory right to have the amendment entered and considered and mandamus would lie to compel its entry.

APPEAL from the Supreme Court of the District of Columbia. Affirmed.

Mr. R. F. Whitehead for Coe.

Mr. Charles M. Thomas and Mr. S. E. Darby, Jr., for Remington Rand, Inc. Before MARTIN, Chief Justice, and ROBB, VAN ORSDEL, GRONER, and STEPHENS, Associate Justices

VAN ORSDEL, A. J.:

The Commissioner of Patents appeals from an order of the Supreme Court of the District of Columbia granting appellee's petition for a writ of mandamus directing the Commissioner to enter and consider a certain amendment filed on September 20, 1934 to a pending application for patent of one Lasker, Serial No. 681,333, filed December 18, 1923 and assigned to the appellee, Remington Rand, Inc.

It appears that, during the period in which the Lasker application. was pending in the Patent Office, eight different official actions were had, in five of which new art was cited by the Primary Examiner. It may be assumed that the delay in the consideration of this case by the Patent Office was due to these numerous actions.

After his application was allowed, applicant copied claims from a patent which had been issued to Lake and Storey on September 9, 1930. The Primary Examiner held that Lasker's application supported certain of the claims and accordingly, by direction of the Commissioner, an interference was declared involving the Lake and Storey patent. Lake and Storey moved to dissolve the interference, urging the failure of Lasker's application to support the interference

issues. The Examiner of Interferences granted the motion to dissolve, thereby reversing the decision of the Primary Examiner. Lasker then appealed to the Board of Appeals, which affirmed the decision of the Examiner of Interferences, and dissolved the interference.

This operated to restore the Lasker application to the Primary Examiner, where its prosecution was resumed. Upon further hearing the Primary Examiner rejected all claims involved in the interference, including the claims which had been previously allowed to Lasker. Lasker promptly filed an amendment to his application, traversing the new ground of rejection. The amendment included not only matter taken from prior art patents, which had been used as cross-references in the Lasker application as filed, but also additional claims tending to avoid the new ground of rejection found by the Examiner.

The Examiner refused to enter and consider the amendment, although the prosecution of the application was still pending, that is, the case had the status of a regularly pending application. Thereafter the Commissioner refused to enter the amendment, and it is urged that, since no appeal lies from his refusal, the remedy is by mandamus to compel him to order the Examiner to enter and consider the amendment.

It will be observed that the rejection by the Primary Examiner was the first rejection of the claims here involved. Under Rule 68 of the Rules of Practice, U. S. Patent Office,

The applicant has a right to amend before or after the first rejection or action, and he may amend as often as the Examiner presents new references or reasons for rejection.

In view of the fact that the Primary Examiner's rejection was the first rejection, the amendment amounted merely to a request for a re-examination of the case in the light of this rejection. It was the first opportunity which petitioner had to traverse this rejection.

We think that the right of petitioner to the writ depends upon sec. 4903, Revised Statutes (35 U. S. C. A. sec. 51), in connection with sec. 4909, Revised Statutes (35 U. S. C. A. sec. 57). Sec. 4903 provides:

Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a reexamination of the case.

[1] The dissolution of the interference by the Examiner of Interferences, and the affirmance of his decision by the Board of Appeals,

restored the petitioner to the status of an ex parte applicant for the patent which he was seeking. The case was in this condition when the claims involved were rejected by the Primary Examiner. We must therefore consider the rights of petitioner when this first rejection occurred. He had no right of appeal to the Board of Appeals on this single rejection. There must be a second rejection by the Primary Examiner before the right of appeal can be availed of. Sec. 4909, Revised Statutes (35 U. S. C. A. sec. 57) provides:

Every applicant for a patent or for the reissue of a patent, any of the claims of which may have been twice rejected, and every party to an interference, may appeal from the decision of the Primary Examiner, or of the Examiner in charge of interferences in such case, to the Board of Appeals; having once paid the fee for such appeal.

[2] It is quite apparent that, if the ground for a second rejection be denied, the applicant is deprived of any right of appeal. The action of the Commissioner in refusing to direct the entry of the amendment operated to stop all further proceedings in the Patent Office. It did not amount to a rejection of the application, from which appeal might be taken to the proper court, but blocked by this method the right of appeal to the Board of Appeals from a second rejection by the Primary Examiner, so that petitioner was deprived of any right of appeal whatever for the determination of his rights. In this view of the case, we think that the Commissioner of Patents exceeded his authority in refusing to direct the entry of the amendment and the further consideration of the case by the Primary Examiner.

[3] The duty of the Commissioner in the premises is a clear statutory requirement, and the performance of that duty is a plain, ministerial act, which cannot be avoided by any claim of discretionary power on his part.

The judgment of the court below is affirmed.

Mr. Justice ROBв took no part in the decision of this case.

[U. S. Court of Appeals for the District of Columbia]

MINNESOTA MINING AND MANUFACTURING COMPANY v. COE,
COMMISSIONER OF PATENTS

No. 6,584. Decided May 18, 1936

469 O. G. 764; 85 F. (2d) 235

1. PATENTABILITY-REJECTION AFTER CONCESSION OF PRIORITY.

Claims of application of L. Held unpatentable in view of patent to C., where L. in an interference between the two applications had conceded priority.

115363°-37--3

2. SAME INVENTION-OBVIOUSNESS.

"The rule of obviousness applied in patent cases is much stricter than the general idea of something which readily presents itself to the eye of everyone as obvious."

APPEAL from the Supreme Court of the District of Columbia. Affirmed.

Mr. H. H. Benjamin and Mr. J. T. Basseches for Minnesota Mining and Manufacturing Company.

Mr. R. F. Whitehead for the Commissioner of Patents.

Before MARTIN, Chief Justice, and VAN ORSDEL, GRONER, and STEPHENS, Associate Justices

VAN ORSDEL, A. J.:

Plaintiff below appeals from a decree of the Supreme Court of the District of Columbia dismissing its bill of complaint in an action brought under section 4915, Revised Statutes (35 U. S. C. A. sec. 63) to secure a patent.

Plaintiff company sought in the court below a decree requiring the Commissioner of Patents to issue a patent to its assignor, William Luxmore. The alleged invention consists of a flexible abrader and the process of making it. This article is commonly known as sand

paper.

The novelty in the various disclosures consists in using a binder for the attaching of the abradent material to the backing of paper. The process disclosed in the application of Luxmore consists in first impregnating the sheet of paper with a thin, flexible phenol-aldehyde resin varnish, and then applying a second coat to the sheet and distributing the abrasive matter on the latter coat. It is then hardened by baking.

The original Luxmore application was placed in interference with an application of one Carlton and an application of one Klingspor. Klingspor was eliminated because of the date of invention alleged by him, and Luxmore conceded priority to Carlton as to the invention covered by the claims in issue in the interference. Patents were subsequently issued to Klingspor and Carlton.

A number of the claims involved in the interference are embraced in the Carlton patent, of which claim 1 for the article, and claim 6 for the process, are illustrative:

1. The new article of manufacture, flexible sandpaper, which includes a backing, a grit or layer of abrasive particles, and a bond for uniting the grit to the backing including a synthetic resinous condensation product which is solidified to a flexible and waterproof state.

6. The process of forming a flexible waterproof abrasive article which comprises condensing an aldehyde and a phenol in the presence of a catalyst at low temperatures to produce an adhesive product, applying such products together with an abrasive grit to a suitable backing, and heating said product whereby to form an abrasive device which is flexible when solidified and insoluble in the presence of moisture and friction.