§ 558. Examination of Application on its Merits: Two Ques

tions Involved: their Decision.

When an application is complete in form it is entitled to an examination on its merits. This examination consists in an inquiry into the legal right of the applicant to a patent for the invention described and claimed in the application. It involves two questions: (1) Whether the subject-matter of the application is, in itself, a patentable invention; (2) Whether the applicant or his decedent was its true and first inventor. In uncontested cases the latter question is answered affirmatively by the oath of the applicant, and requires no further investigation unless the examiner has some knowledge to the contrary. The former question is divisible into five subordinate ones: (1) Whether the subject-matter of the application is the result of a true and complete inventive act; (2) Whether it is embraced in either one of the six classes of inventions which are made patentable by the act of Congress; (3) Whether it is new, or, on the contrary, has been known or used in this country, or patented or published at home or abroad, before the date of the present application; (4) Whether it is useful; (5) Whether it has been abandoned to the public. In making this investigation the examiner is not compelled to observe the strict rules of evidence, but must ascertain, as best he can, from the publications, patents, and general knowledge at his command, whether the application. should be rejected or allowed.2 He is not bound by any conclusions of his predecessors, though he must follow the deci

§ 558. 1 That the application-oath is prima facie proof of the applicant's priority, see Ex parte Hill (1879), 16 O. G. 765.

See also § 457 and notes, ante.

2 That the rules of evidence do not apply to uncontested cases, see Hedges v. Daniels (1880), 17 O. G. 394.

That the examiner must ascertain, as best he can, whether the invention is patentable, see Hedges v. Daniels (1880), 17 O. G. 394.

That the identity of two designs must be decided from inspection by the

experts in the Office, see Ex parte Gerard (1888), 43 O. G. 1235.

That matters of public notoriety, affecting the right of the applicant to a patent will be taken notice of, see Anson v. Woodbury (1877), 12 O. G. 1.

That if the examiner sees that the invention is impracticable he should reject the application for want of utility, see Ex parte De Bausset (1888), 43 0. G. 1583.

That a patent should not be allowed merely because it can do no harm, see Ex parte Mixer (1872), 1 O. G. 48.

sions of the Commissioner both on matters of law and fact, whatever may be his own judgment concerning their propriety. He is also required to conform to the rules laid down by the courts for determining the patentability of inventions. If it appears to him, as the result of his investigation, that the subject-matter of the application is patentable and that the applicant or his decedent was its true and first inventor, it is his duty to allow the application; if the contrary appears, it is his duty to reject it. Where the investigation leaves him in doubt, it is still incumbent on him to decide either for or against the applicant, in order that the patent may be granted, or else an opportunity be given for further inquiry on a reconsideration or an appeal.

§ 559. Rejection of Application: Notice and References.

When an application, or one of the Claims in an application, is rejected upon any ground whatever the examiner is required to notify the applicant of such rejection, stating all his reasons therefor fully and precisely, and giving him such information and references as may assist him in judging of the advisability of prosecuting his application or of altering his specification.'. If the ground of the rejection be that the applicant is not the true and first inventor of the art or instrument described, the examiner must cite references establishing his assertion, or himself make oath to it, to overcome the presumption arising from the oath of the alleged inventor.2

That the conclusions of an examiner do not bind his successor, unless embodied in a formal judgment, see Ex parte Buell (1884), 26 O. G. 437; Ex parte Starr (1879), 15 O. G. 1053.

That the former erroneous decision of an examiner is to be departed from, see Ex parte Traitel (1883), 25 O. G. 783.

That the primary examiner when considering the merits of the application must look to the language of the application alone, see Faure v. Bradley (1888), 44 O. G. 945. § 559.

That an examiner, in re

jecting an application, should cite references, not give his own dictum, see Ex parte Fairbanks (1873), 3 O. G. 65.

That all the examiner's reasons for rejecting the application must be given at once, see Ex parte Proudfit (1876), 10 O. G. 585.

That all references and objections are to be cited and urged by the examiner on or before final rejection, though if he overlooks a reference he may urge it as soon after final rejection as he discovers it, as e. g. in his appeal-statement, see Ex parte Parker (1886), 36 O. G. 119.

2 That if the examiner denies the

If the ground of the rejection be the absence of novelty in the subject-matter of the application, the examiner must disclose to the applicant all his own information on the subject, citing the best references at his command. When these references are prior patents, each must be designated by its date and number, and by the name of the patentee and the class of the invention. When the reference is a prior publication, its title, date, page or plate, and place of publication or place where a copy may be procured, must be given. When the reference is a fact within the knowledge of the examiner or the Patent Office, the data mentioned must be as precise as the nature of the case admits, and the reference must be supported by the affidavit of the person to whom the fact is known. The pertinence of the reference cited, if not obvious on inspection, must be clearly explained and the anticipated Claim particularly specified; and where a reference shows or describes inventions other than that claimed by the applicant, the part relied on to defeat his Claim must be as accurately designated as possible. Devices cited as references need not have commercial value, nor be identical in form, material, or mode of use with that described in the application; substantial correspondence constituting them the same invention. An abandoned or rejected application is not a public document, and cannot be referred to as disclosing prior knowledge of the invention. In all cases, pertinent references only should be

priority of the applicant and cannot cite a reference, he must support his dental by an affidavit, see Ex parte Hill (1879), 16 O. G. 765.

That devices, cited as references, need not have commercial value, see Sargent v. Burge (1877), 11 O. G. 1055.

That the device, cited as a reference, need not be identical with the one claimed in the application, either in material, shape, or mode of use, see Ex parte Chatillon (1872), 2 O. G. 115.

That a drawing without printing may be cited as a reference, see Ex parte Borden (1884), 26 O. G. 439.

4 That an abandoned application

3

cannot be cited as a reference, see Webster v. Sanford (1888), 44 O. G. 567; Ex parte Borden (1884), 26 O. G. 439; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392.

That a rejected application cannot be cited as a reference, see Webster v. Sanford (1888), 44 O. G. 567; Blades v. Rand, McNally, & Co. (1886), 27 Fed. Rep. 93; 37 O. G. 99; Northwestern Fire Extinguisher Co. v. Philadelphia Fire Extinguisher Co. (1874), 6 O. G. 34.

That an abandoned or rejected appli cation can be cited as a reference, see Ex parte Gordon (1874), 6 O. G. 543.

mentioned, and the best references should be cited first.5 The examiner is under no obligation to embody in his notice any suggestions as to the proper Claims to be inserted in the application, - this being a matter for the applicant upon the information afforded to him by the Patent Office.

§ 560. Action of Applicant after Rejection: Insistence and Second Rejection.

On the receipt of this notice of rejection, the applicant may either insist on the allowance of his application as it stands, or he may amend it, or he may withdraw it altogether. If he insists, he may controvert by argument the position taken by the examiner upon matters of law or upon the identity of his invention with the references cited, or he may deny the existence of the facts contained in the reference itself. To facts stated and sworn to by the examiner as within his personal knowledge, he may oppose his own affidavit or those of other persons, and these may be met by counter-proofs on the part of the examiner. If the reference is a domestic patent, or if it is a foreign patent or a publication, the applicant may avoid the reference by an affidavit showing his completion of the invention before the filing of the application for the domestic patent, or before the date of the foreign patent or the publication, and averring that he does not know or believe that the invention has been in public use or on sale in this country for more than two years prior to his application, and that he has never abandoned the invention. A rejection upon such references

5 That pertinent references only should be cited, see Ex parte Brownlie (1873), 3 O. G. 212.

That the best references must be cited first, see Ex parte Sanders (1878), 13 O. G. 818.

6 That the examiner need not suggest proper Claims, this being the duty of the applicant, see Ex parte Evarts (1874), 5 O. G. 429.

§ 560. That the applicant need show only such facts as will carry the date of his invention back of the references cited, see Ex parte Lanfrey (1881),

20 O. G. 892; Ex parte Gasser (1880), 17 0. G. 507.

That in order to overcome a prior patent or publication the applicant must show by competent legal proof that he had disclosed the invention to others, as fully as the patent or publication does, before the patent was granted or the publication made, see Ex parte Saunders (1883), 23 O. G. 1224.

That an affidavit, under the rule requiring an affidavit of prior invention after rejection on a patent or publication, must set out the facts on which

to domestic patents showing but not claiming the invention, or to foreign patents, or to publications, or on the ground of public use or sale, or that the device referred to is capable of performing the same operation in the same manner, or that the invention is inoperative or frivolous or injurious to public health or morals, opens the whole question of fact to investigation upon affidavits or depositions, denying or supporting these objections.2 Upon the statement of the applicant that he insists on the allowance of his application in its original