others of the same character are questions involving the merits of the application, from an adverse decision upon which an appeal lies to the examiners-in-chief.

§ 567. Appeal, on Matters of Form, to Commissioner.

An appeal to the Commissioner from an adverse decision of an examiner upon a matter of form, once repeated, is taken by a written petition, setting up the decision complained of and the reasons for the appeal, and signed by the applicant or his attorney. The examiner is then required to file a written statement disclosing the grounds of his decision; 2 and upon hearing had, either orally or by written argument, the Commissioner affirms or reverses or modifies the action of the examiner as his judgment may direct. This decision is final, and can be reviewed or reconsidered only by the Commissioner himself.3

question of substance, see Ex parte Schulze-Berge (1888), 42 O. G. 293.

That whether the invention is new is a question of substance, see Ex parte Nagel (1880), 17 O. G. 198; Ex parte Buchanan (1879), 16 O. G. 1049; Ex parte Proudfit (1876), 10 O. G. 585.

That whether a cited reference is pertinent is a question of substance, see Ex parte Kerr (1884), 28 O. G. 95; Ex parte Borden (1884), 26 O. G. 439.

That whether an invention is useful is a question of substance, see Ex parte Buchanan (1879), 16 O. G. 1049.

That whether the invention has been abandoned is a question of substance, see Jenkins v. Barney (1873), 3 O. G. 119.

That whether an amendment departs from the original by inserting new mat. ter is a question of substance, see Ex parte Lanstrom (1880), 17 O. G.744.

That where a feature is struck out of one Claim and inserted in another, the question whether the latter Claim now shows a true combination is one of substance, see Ex parte Wenzel (1880), 17 O. G. 512.

ings are sufficient is one of substance, see Ex parte Kitson (1881), 20 O. G. 1750.

That whether a Claim distinguishes the new from the old is a question of substance, see Ex parte Reynolds (1874), 6 O. G. 641.

That objections to the insertion of distinct Claims for non-separable parts go to the merits and appeal lies to the examiners-in-chief, see Ex parte Gerard (1888), 43 O. G. 1235.

That whether a re-issue application covers new matter is a question of substance, see Ex parte Keith (1876), 9 O. G. 744.

§ 567. That under the rule concerning interlocutory appeals, the prin cipal examiner must act twice before review by the Commissioner, see Ex parte Bennett (1886), 35 O. G. 1003.

2 That where the examiner requires a model and an appeal is taken, the examiner must show in his answer why a model is needed, see Ex parte Jove (1880), 17 O. G. 801.

8 That examiners must abide by the decisions of the Commissioner, see Ex

That the question whether the draw- parte Kitson (1881), 20 O. G. 1750.

§ 568. Appeal, on Matter of Substance, to Examiners-in-Chief.

An appeal to the examiners-in-chief from an adverse decision of an examiner upon a matter of substance can be taken only after an original or amended Claim in the application has been twice rejected by the examiner, and after all the Claims have been passed upon and all questions of form conclusively settled in the manner before stated.1 This appeal is instituted by a written petition, signed by the applicant or his authorized attorney, setting forth the points of the decision from which the appeal is taken and reciting the reasons for the appeal. The petition, having been duly filed, is submitted to the examiner, who, if he finds it to be regular in form, must thereupon furnish to the examiners-in-chief a written statement of the grounds of his decision on all the points involved in the appeal, with copies of the rejected Claims and the references applicable thereto. If he finds the petition irregular in form, the appellant may amend it, or may appeal from this finding to the Commissioner as upon any other question of form. The appellant, previous to the day of hearing before the examiners-in-chief, must file a brief of the authorities and arguments on which he will rely to maintain his appeal; and if he wishes to be heard orally, he must indicate it at the time of filing his petition, when a day of hearing will be fixed and proper notice given him; otherwise the case will be considered and decided by the examinersin-chief upon the brief presented. The examiners-in-chief can affirm or reverse the decision of the examiner only upon the

§ 568. 1 That appeals on matters of substance must be taken to the examiners-in-chief, see Ex parte Baker (1886), 36 O. G. 1149.

That the right of appeal from a second rejection is absolute, whatever be the cause of rejection, see Ex parte Bennett (1886), 35 O. G. 1003.

That an applicant having an option of two or more modes of procedure, must elect one and abide by it, as where he can appeal or amend and chooses the latter, see Ex parte Williams (1887), 40 O. G. 1337.

That an application must be perfect in form before an appeal can be allowed on its merits, see Ex parte Mewes (1872), 2 O. G. 617.

That the jurisdiction of the examiner ceases on appeal, see Ex parte Brunner (1872), 1 O. G. 303.

That ex parte cases appealed to the examiners-in-chief are within the jurisdiction of the primary examiner as soon as the appeal is decided, see Ex parte Pearson (1887), 40 O. G. 244.

points on which the appeal is taken; but if they discover any apparent grounds, not involved in the appeal, for granting or refusing letters-patent in the form claimed or in any other form, they must annex to their decision a written statement of these grounds, with such recommendations to the examiner in regard to his future action as they may deem proper.3 These new grounds must then be considered by the examiner; and from his adverse decision, upon any question of substance therein presented, another appeal lies to the examiners-in-chief, or on questions of form to the Commissioner, as in other cases.4

§ 569. Appeal from Examiners-in-Chief to Commissioner.

From an adverse decision of the examiners-in-chief the applicant may appeal to the Commissioner in person. This

8 That the examiners-in-chief must suggest anything they deem important either to the Office or the applicant, see Ex parte Dodge (1872), 3 O. G. 179.

That the examiners-in-chief can make no recommendation as to points not within their jurisdiction, see Ex parte Gillette (1888), 44 O. G. 819.

That if the examiners-in-chief are of opinion that a different form of Claim from that rejected should be allowed they should annex to their decision a statement to that effect, with such recommendation as they think best, but the examiner is not bound by such recommendation, see Ex parte Dysart (1886), 34 O. G. 1390.

That the examiners-in-chief are not required to absolutely determine any form of Claim to be passed on by the examiner, see Ex parte Dysart (1886), 34 O. G. 1390.

That a mere suggestion of the exam.

iners-in-chief is not a recommendation, see Ex parte Holt (1886), 38 O. G.

229.

4 That primary examiners may refuse to act on the recommendation of the examiners-in-chief, but an appeal lies from the refusal, see Ex parte Pearson (1887), 40 O. G. 244.

That where the examiners-in-chief make a 66 recommendation," the party may propose the recommended matter to the primary examiner, and if he refuses, the commissioner may order it or the party may, after acceptance of the matter and a new rejection of the application, appeal, see Ex parte Holt (1887), 38 0. G. 229.

That if new references are cited by an examiner after appeal to the examiners-in-chief, the applicant may again appeal without a new fee, unless the new references are based on his amendment, see Ex parte Dysart (1886), 34 0. G. 1390.

That a mandamus will not lie to compel the Commissioner to allow an appeal from a decision of the examiner to the examiners-in-chief on a question of abandonment, pending an interference, it being a matter of his discretion,

appeal, like the former, is taken by written petition, setting up the judgment complained of and the reasons of appeal. If the Commissioner, in revising the decision of the examiners-in-chief, discovers any apparent grounds for granting or withholding a patent which are not presented by the appeal, he may at any time, either before or after final judgment, when in his opinion substantial justice requires it, give reasonable notice to the applicant, and if any amendment or other action based thereon shall be proposed, he will remand the case to the examiner for his consideration. He may also at any time return the case to the examiner for further inquiry when any amendment is filed, or other action taken, in pursuance of the recommendation of the examiners-in-chief. From the decision of the examiner in remanded cases appeal lies to the examiners-in-chief upon matters of substance and to the Commissioner upon matters of form, according to the usual rule.2

§ 570. Appeal from Commissioner to Supreme Court of the

District of Columbia.

From an adverse decision of the Commissioner on an appeal from the examiners-in-chief in ex parte cases, a further appeal may be had to the Supreme Court of the District of Columbia.1 This appeal is taken by a written petition, duly signed and filed with the clerk of the court, accompanied by certified copies from the Patent Office of all the original papers and evidence in the case. On taking this appeal the appellant

see Ex rel. Bigelow v. Thacher (1875), 2 MacArthur, 24; 7 O. G. 603.

§ 569. That the Commissioner must take notice of an objection to patentability, however it may be brought to his notice, see Ex parte Smoot (1877), 11 O. G. 1010.

2 That the primary examiner may refuse to act on, the recommendation of the Commissioner and an appeal will lie from such refusal, see Ex parte Pearson (1887), 40 O. G. 244.

§ 570. That in ex parte cases an appeal lies from the Commissioner to

the Supreme Court of the District, see Kirk v. Commissioner (1886), 37 O. G. 451; 5 Mackay, 229.

That the power to hear appeals, formerly vested in the Circuit Court of the District, now resides in the Supreme Court, see Opinion Atty. Gen. (1869), 13 Op. At. Gen. 79.

That an appeal lies from the Commissioner to the Supreme Court of the District of Columbia before suit brought in equity, except in interference cases, see Butler v. Shaw (1884), 21 Fed. Rep. 321.

must give immediate notice thereof to the Commissioner in writing, and file in the Patent Office a written statement of his reasons of appeal, which should be full and explicit and constitute a brief of the appellant's argument in support of his claims. The Commissioner must also furnish to the court the grounds of his decision, fully set forth in writing, touching all points embraced in the reasons of appeal. Notice of the time and place of hearing will be given by the court to the Commissioner and by him to the parties in interest, and upon the hearing the Commissioner or the examiner may be called upon to testify concerning the principles of the invention for which a patent is demanded. In reviewing the action of the Commissioner, the court must confine itself to the points set forth in the reasons of appeal,2 and after judgment must return to the Commissioner a certificate of its proceedings and decision, which will be entered of record in the Patent Office, and will govern its further conduct of the case. This decision does not, however, preclude any person from contesting the validity of the patent thus awarded, in any court wherein it may be called in question.

§ 571. Remedy of Applicant in Equity after Final Rejection of his Application in the Patent Office.

Where the Supreme Court of the District of Columbia decides against the applicant on this appeal, he may pursue his remedy by bill in equity in the Circuit Court of the District.1 A copy of the bill must be served on the Commis

2 That in other cases than interference cases the Supreme Court of the District is a mere court of appeal, and is confined to the issues raised in the reasons of appeal and to the evidence produced before the Commissioner, see Butler v. Shaw (1884), 21 Fed. Rep. 321; In re Conklin (1874), 5 O. G. 235; 1 MacArthur, 375.

That an appeal to the Supreme Court of the District from a decision on a Claim for apparatus is not affected by the intermediate issue of a patent for the process in which the apparatus is