EX PARTE MCHALE.

Decided July 15, 1908.

135 O. G., 1361.

DIVISION-APPEAL-RES ADJUDICATA,

Where a requirement for division between process, article, and apparatus claims, made by the Primary Examiner and affirmed by the Examinersin-Chief and Commissioner, has been complied with, the Examiner is not precluded from requiring division between the claims presented in one of the divisional applications relating to the article upon the ground that they cover different species. The question of division as between different species of the article is not res adjudicata in the divisional application, as it was not one of the questions passed upon by the Examiners-in-Chief.

ON PETITION.

ART OF FORGING SIDE FRAMES, ETC.

Mr. Joseph L. Levy for the applicant.

MOORE, Commissioner:

This is a petition that—

the Examiner be required to follow the instructions as to division as set forth in the decision of the Commissioner of Patents in the case of which this is a division, which parent case was filed September 9th, 1904, Serial No. 233,826.

It appears that in the parent application the Examiner required that the claims be divided into five groups-(1) the process of forg ing, set forth in claims 1 to 22, inclusive; (2) an article of manufacture, set forth in claims 23 to 30, inclusive; (3) a forging-machine, set forth in claims 31 to 37, inclusive, and claim 40; (4) a cutting and shaping means, set forth in claim 38; (5) a bending device, set forth in claim 39.

Appeal was taken from this requirement, and the Examiners-inChief affirmed the decision of the Examiner except as to claims 38 and 39, which they held could go with the other machine claims. On appeal this decision was affirmed by the Commissioner.

The present divisional application contained as filed the article claims which were contained in the parent application. The Examiner required division, holding that these claims covered different specific articles. It is from this requirement that the present petition is taken, the applicant urging that the matter is res adjudicata, since such division was not required in the decision of the Commissioner in the parent case. It is apparent, however, that this question was not before the Commissioner on the appeal, since the only question passed upon by him was the correctness of the division of the claims into process, article, and machine claims. That decision, therefore, in no way precludes the Examiner from making the present

holding that the claims in this application cover different specific articles. If applicant wishes to contest the propriety of this requirement for division, his remedy is by appeal to the Examinersin-Chief.

The petition is denied.

EX PARTE CENTRAL CONSUMERS COMPANY.

Decided July 17, 1908.

135 O. G., 1581.

TRADE-MARKS-REGISTRABILITY-DESCRIPTIVE MARK-" NEXTOBEER.”

A trade-mark consisting of the word Nextobeer" with a paraph thereunder for a "non-intoxicating malt beverage" Held merely descriptive and not registrable.

ON APPEAL.

TRADE-MARK FOR NON-INTOXICATING MALT BEVERAGES.

Mr. George R. Hamlin for the applicant.

MOORE, Commissioner:

This is an appeal from the action of the Examiner of Trade-Marks in refusing to register as a trade-mark for a "non-intoxicating malt beverage" the word "Nextobeer." The ground of this refusal was that the mark is descriptive of the character or quality of the goods upon which it is used.

In the labels filed as specimens the beverage upon which this mark is used is described as a "non-intoxicating beer" and as a "refreshing beer" and as "containing less than 2% alcohol." The words "next to" are defined in the Century Dictionary as meaning "immediately after," "almost," "within a little of being." Beer contains about four per cent. alcohol and is a malt preparation. The words "next to beer" give an apt description of a beverage which is "within a little of being" or "almost " beer. It is true that these words are written as one word with a paraph thereunder, but that does not make them the less descriptive nor the mark registrable.

Appellant contends that the statute prohibits the registration of only such marks as are merely descriptive-that is, that have no other significance than descriptiveness of the qualities, ingredients, or characteristics of the article on which they are used-that the mark here sought to be registered goes further and is but inferentially descriptive, its real object being to denote origin or ownership, and that it is therefore registrable.

The answer to this contention is found in a recent decision of the Court of Appeals of the District of Columbia in re the Crescent Typewriter Supply Company, post, 318; 133 O. G., 231.) where it was held that a mark consisting of a wreath inclosing the word "Orient" written in a peculiar manner with the word "Brand" thereunder was properly refused registration on the ground that it was geographical.

In that decision, after quoting the portion of section 5 of the Trade-Mark Act which prohibits the registration of names or terms that are merely geographical, the Court said:

The provision of the statute is broad enough to prohibit the use of any word which has an exclusive geographical significance or would suggest any particular geographical location.

Since the wording of section 5 is the same with respect to both classes of marks, it is believed that the statute should be construed as broadly with respect to descriptive marks as the court has construed it with respect to geographical marks, and it must be held, therefore, that registration of appellant's mark was properly refused. The decision of the Examiner of Trade-Marks is affirmed.

EX PARTE LAMBERT.

APPLICATION FOR PATENT.

Decided August 3, 1908.

135 O. G., 1581.

1. RENEWAL APPLICATIONS-SECOND RENEWAL VALID-SECTION 4897, REVISED STATUTES, CONSTRUED.

The provision of section 4897, Revised Statutes, relating to the renewal of forfeited applications that "such second application must be made within two years after the allowance of the original application" construed and Held not to prohibit the filing of a second renewal application within two years after the allowance of the original application.

2. SAME-SAME-NOT RETROACTIVE.

The practice which prevailed prior to 1894 of allowing more than one renewal of a forfeited application, providing it was made within two years following the date of allowance of the original application, is restored, but it is not to be construed as in any way retroactive.

ON PETITION.

SKIP OR LOAD-CARRIER.

Messrs. Kenyon & Kenyon for the applicant. (Mr. William Houston Kenyon and Mr. Walter F. Rogers of counsel.)

MOORE, Commissioner:

This is a petition that a renewal petition and fee filed May 15, 1908, for the second renewal of the above-entitled application be accepted and the application again renewed as of that date.

The record discloses the following facts: On May 3, 1906, Asher Lambert filed in the United States Patent Office an application for patent which was given Serial No. 314,929. After due examination this application was allowed on September 13, 1906, and became forfeited by non-payment of the final fee, under section 4885 of the Revised Statutes, six months thereafter-March 13, 1907. A renewal application was filed March 14, 1907, under the provisions of section 4897 and was allowed October 29, 1907. This renewal application became forfeited by non-payment of the final fee on April 29, 1908. On May 15, 1908, a petition for renewal, together with a fee of fifteen dollars, was presented for the second renewal of this application. The fee was returned on May 21, 1908, by the Chief Clerk of the Patent Office with the statement that applications cannot be renewed a second time. On May 26, 1908, a request for reconsideration was presented by counsel for the applicant, together with a tender of the petition and fee above referred to. The petition and fee were again returned by the Chief Clerk, who directed attention to ex parte Weil (C. D., 1906, 160; 122 O. G., 352) as his authority for such action in the case. Subsequently on June 16, 1908, the renewal petition and fee were filed in the Patent Office, and a petition that they be accepted was denied by the Assistant Commissioner on July 1, 1908, who held that in view of the opinions of the Assistant Attorney-General (C. D., 1894, 111; 69 O. G., 639; and C. D., 1895, 95; 70 O. G., 493) rendered upon this question he was without authority to renew the application.

On July 2, 1908, the applicant filed an appeal and petition with the Secretary of the Interior, the petition praying that the opinions of the Assistant Attorney-General referred to and the decision and rule or regulation of the Secretary of the Interior founded thereon be withdrawn as contrary to the plain import and purpose of section 4897 of the Revised Statutes. On July 28, 1908, the First Assistant Secretary of the Interior rendered a decision (post, 303; 135 O. G., 1584) in which he dismissed this appeal for want of jurisdiction, but at the same time granted the prayer of the petition and remanded the case

for such further proceedings as the Commissioner of Patents may in his discretion feel should be had.

In his decision the Assistant Secretary said:

It may well be doubted if the Secretary of the Interior has appellate jurisdiction of the question presented. Its consideration by the Commissioner of Patents was more than ministerial. It involved the exercise of judgment and

discretion, and its determination would seem to be a judicial, or quasi-judicial act. The appellant's remedy by appeal, if there be one, is committed to the courts, and the Secretary of the Interior has no authority to review the Commissioner's action. (Butterworth, Commissioner of Patents, v. United States, ex rel. Hoe and others, C. D., 1884, 429; 29 O. G., 615; 112 U. S., 501; Poole v. Avery, C. D., 1899, 255; 87 O. G., 357; 14 Asst. Atty. General's Opinions, 501.) The petition, however, points out that the present practice is not in keeping with the intent of the statute, that it is based on the aforesaid approved opinions of the Assistant Attorney-General of this Department, that these decisions are erroneous and should be withdrawn so that the Commissioner may not feel bound by them, and it is intimated if this be done that the Commissioner's views, being in harmony with the views of the petitioner, he would at once correct the abuse that has resulted therefrom and return to a practice which had subsisted for thirty years prior to the promulgation of said opinions. Thus presented, the Secretary of the Interior may consider and act upon the prayer of the petitioner.

The rulings complained of were not made in any attempted exercise of appellate or supervisory authority but were advisory and upon request of the then Commissioner of Patents. He might have properly disregarded the advice and have adhered to the long-continued and well-settled construction of the act, contemporaneously given it by a Commissioner whose duty it was to administer it; a construction which at no time Congress attempted to revise but during all these years acquiesced in. It had become a fixed rule of practice to receive more than one renewal application. Undoubtedly many patents were issued under that interpretation. The act, not being free from ambiguity required construction; and I am inclined to think that a court, for that reason alone, might have refused to disturb the Commissioner's construction, so long obtaining, even though as an original proposition the most narrow interpretation might have been all that the court could have deduced from the bare phraseology of the act. The opinions, which may have embarrassed the Commissioner of Patents since 1895, are in no sense controlling and you need not consider them of binding force, either advisory or otherwise. This will leave you free to exercise your own discretion in the matter; for the determination of the rights of this petitioner must be your judicial act-not that of the Secretary of the Interior who is not vested with supervisory or appellate control of your conduct in a judicial or quasi-judicial capacity. Congress has authorized the Commissioner of Patents to decide the patentability of inventions, subject to the right of appeal, not to this Department, but to the court. In the first instance at least, it is the duty of the Commissioner to construe the substantive law of patents, and that construction may be disturbed only by the courts. If you conclude to revert to the earlier practice, under the construction obtaining for nearly a generation, you have an unquestionable right so to do without the slightest reference to the two opinions of the Assistant Attorney-General.

Whether or not these opinions are correct, and the first was certainly wrong in one respect-I need not decide; and I volunteer no expression of opinion because you should be left entirely untrammeled by any presentation of views which, in legal effect, would be at the most mere advice. Again, I must say, it is wholly within your province to determine the issue, the responsibility resting solely upon your conscience and discretion; and that in no event should you regard the two opinions as in anywise controlling your conclusion.

Apparently the practice of allowing subsequent renewals, provided they were made within two years after the allowance of the original