Judge Shiras in re McDonald, (101 F. R., 239,) and again by Judge Seaman in re Dann, (129 F. R., 495,) that a bankrupt's title to a pending application did not under the act above referred to pass to the trustee in bankruptcy. If a trustee cannot acquire a title to the application of a bankrupt, it is not seen that he can acquire a title to a license to make and use the article described in such application. It must be held, therefore, that the petitioner has not shown such title to the license referred to as will entitle him to be permitted to inspect these applications.

The petition is denied.

EX PARTE GALLY.

APPLICATION FOR PATENT.

Decided March 9, 1908.

133 O. G., 991.

1. ABANDONMENT OF APPLICATION-RESPONSIVENESS OF ACTION-REINSERTION OF CLAIMS AFTER ELECTION.

An amendment which is otherwise responsive to an action by the Office is not rendered unresponsive by reason of the fact that it includes a claim to an independent invention, claims for which were previously canceled upon requirement for division. In such cases the Examiner should require the cancelation of such claim on the ground that it covers an invention different from that originally elected, and the amendment should otherwise receive action as though such claim were not present.

2. PRACTICE AMENDMENT-REINSERTING CLAIMS TO AN INDEPENDENT INVENTION AFTER ELECTION.

Where an applicant cancels claims to an independent invention upon requirement for division and just within the year allowed by law for action responds to a rejection by amending the rejected claims and adding a series of new claims, one of which is drawn to the independent invention, the amendment should be entered and a requirement should be made that the reinserted claim be canceled on the ground that applicant was bound by his original election, and at the same time action should be given on the merits of the claims of the invention elected.

ON PETITION.

PNEUMATIC AND SELF-PLAYING MUSICAL APPARATUS.

Mr. Robert A. Gally pro se.

MOORE, Commissioner:

This is a petition seeking the reversal of the decision of the Primary Examiner holding an application to have become abandoned through lack of proper prosecution. The question at issue relates to

the sufficiency of the amendment filed within the year allowed by law for action.

The application relates to pneumatic self-playing musical apparatus and as originally filed contained claims to several different inventions. Division was required, and after considerable correspondence between applicant and the Examiner the requirement of division was avoided by the cancelation of claims to certain of the independent inventions and by the amendment of other claims. The application was then placed in interference, after the termination of which the prosecution of the case was resumed. On January 20, 1906, some of the claims in the case were rejected and certain inquiries made. Within a year following this rejection an unresponsive letter was filed, to which the Examiner replied, calling attention to the fact that such action was not responsive and would not operate to save the case from abandonment at the expiration of the year allowed for action, which began to run from January 20, 1906.

On January 19, 1907, an amendment was filed amending the rejected claims and adding sixty-one new claims, one of which was directed to one of the independent inventions the claims of which had been previously canceled in response to the requirement for division. The Examiner took the position that this action was not a proper response to the action of January 20, 1906, refused to enter the amendment, and held the application to have become abandoned. The Examiner regarded the action as unresponsive because—

as regards the possibility of action on the merits the case stands in exactly the same position as when it was originally filed.

Aside from the reintroduction of the claims previously canceled from the case the action by applicant of January 19, 1907, appears to be a responsive action, and it is not understood that the Examiner has held otherwise. Having otherwise made a responsive action, does the attempt to reinsert such claims to a different invention make the action as a whole unresponsive? It is now the practice where an applicant has complied with a requirement for division and subsequently attempts to reinsert the claims of the invention eliminated from the case to enter the amendment and require the cancelation of such claims. This practice is founded upon the decision of the Supreme Court in the case of Steinmetz v. Allen, (C. D., 1904, 703; 109 O. G., 549,) which makes the question of independence of inventions a question of merits to be considered on appeal by the Examiners-in-Chief in the first instance. It is believed that such practice should be followed in this case.

The Examiner's answer to this petition points out that the action of January 19, 1907, instead of advancing the prosecution of the case placed it in the same condition that it was when filed. No reason is

seen, however, why an action of this kind should stop the further prosecution of the case. Where the applicant has made his election upon requirement for division, he is bound thereby. For this reason where claims which have been canceled upon requirement for division are reinserted the fact that they relate to an invention different from that elected is a sufficient ground for refusing their allowance in such application. At the same time the claims to the invention elected may be treated as though they stood alone-rejected or allowed, as the state of the art seems to warrant. No action on the merits of the reinserted claims, however, need be given. In this way all questions as to the merits of the claims elected and as to the independence of the inventions covered by the original and reinserted claims may be determined by the Examiners-in-Chief upon one appeal. Such a practice will bring to a speedy conclusion all those cases in which the decision of the Primary Examiner upon the independence of the inventions is found by the Examiners-in-Chief to be correct and will not in the least prolong the prosecution of those cases in which the decision of the Examiner is reversed. In the latter event action on the merits of the reinserted claims will be given when the case is returned from the Examiners-in-Chief.

The circumstances of this case are similar to those of ex parte Scott, (C. D., 1902, 258; 100 O. G., 681,) which was rendered prior to the decision of the United States Supreme Court in the case of Steinmetz v. Allen, supra, changing the practice on the question of division. The practice laid down in the case of ex parte Scott, supra, is believed to be proper, and it has been followed in this case except in so far as it was necessary to modify it to meet the views expressed by the Supreme Court in the decision to which reference is above made. The petition is granted.

Where a party in preparing a preliminary statement recollects having had a conversation in which the invention in issue was discussed and writes a letter addressed to the party with whom the conversation was had to find out whether the invention was disclosed to him at that time, but gets no reply, and does nothing further with respect thereto, and it does not appear whether the letter was returned or whether it even had a return

card on it or that applicant endeavored to find out through mutual friends of such party's whereabouts, Held that such party was negligent and that he was not entitled to amend his preliminary statement after testimony was taken carrying his date of disclosure back to the date of such conversation on the plea of poverty, applicant having failed to take the steps within his means to secure the information sought.

2. SAME-MOTION TO AMEND PRELIMINARY STATEMENT-DELAY IN BRINGING. A motion to amend a preliminary statement should be brought promptly after the discovery of the facts on which the motion is based, and delay in bringing the motion is a sufficient ground for denying it.

3. SAME-SAME-BASED ON TESTIMONY-DEFINITENESS.

Where a motion to amend a preliminary statement is based upon testimony taken in the case, it is indefinite if it fails to point out the particular parts of the testimony upon which reliance is placed.

4. SAME PRELIMINARY STATEMENT AMENDMENT TO CARRY BACK DATE OF DISCLOSURE.

Since the rule regarding the allegations of preliminary statements requires a specific statement as to disclosure as well as to conception of the invention, a party may not amend his statement by carrying back the date alleged for disclosure to the date alleged for conception on the theory that disclosure is merely evidence of conception.

APPEAL ON MOTION.

BAILWAY-TRUCK.

Messrs. Offield, Towle, & Linthicum and Messrs. Bacon & Milans for Floyd.

Messrs. Sheridan & Wilkinson for Rohlfing.

MOORE, Commissioner:

This is an appeal by Rohlfing from a decision of the Examiner of Interferences denying a motion by appellant to amend his preliminary statement.

The original preliminary statement alleged June 15, 1905, as the date of conception, and June 15, 1906, as the date of disclosure of the invention to others. The proposed preliminary statement carries back the date of disclosure to June 15, 1905.

The moving party, Rohlfing, is the senior party. During the taking of his testimony one of the witnesses, one Kirby Whitman, testified that appellant disclosed the invention to him more than a year prior to the date of disclosure alleged in the original preliminary statement. Thereupon appellant gave notice on the record that either before or at final hearing he would bring a motion to amend his preliminary statement.

The reasons for failure to allege the earlier date in the original statement appear alone from the testimony taken on behalf of appel

lant in the interference proceeding. Appellant states in his testimony that:

I remembered of having spoken about the idea to Mr. Kirby Whitman while in Alliance, and wrote to him asking whether he remembered our conversation at the time. I received no reply, and it left me with the idea that probably I had not said anything to him about it, although I distinctly remember a conversation with Mr. Whitman about

the invention in issue. (Rohlfing, Q. 23.)

Since appellant at the time of making the original preliminary statement remembered having had a conversation with witness Whitman with respect to the invention, the well-established doctrine of diligence in the preparation of preliminary statements requires that he should have ascertained from Whitman what was disclosed to him, and before his failure to determine this matter prior to the execution of the original statement can be excused a very satisfactory explanation of his inability to communicate with the witness at that time must be given.

The only excuse offered is that of poverty. It is urged that in sending a letter to the witness appellant did all that should be expected of him under the circumstances and that he was financially unable to make a trip from St. Louis to Alliance, where the witness lived, to secure the information sought. On this point it appears from the testimony that appellant was not in good financial circumstances at the time his statement was prepared; but it is believed that he did not take the steps which were then within his means. There is no evidence that anything whatever was done except to send the letter to Whitman referred to in the above answer, no response to which appears to have been received. It does not appear that the letter was returned to appellant or that he even took the precaution to place his return card upon the letter to insure its return to him in case of non-delivery. Appellant, had he been exercising proper diligence, could have sent a registered letter, by means of which he would have been advised whether his inquiry had reached its proper destination. Moreover, it appears that appellant had friends in the city where the witness resided, and it does not appear that he tried to locate the witness through such channels. In view of these facts the conduct of appellant in the preparation of his preliminary statement indicates carelessness and lack of diligence, and it is believed that the Examiner of Interferences properly refused to permit him to change the dates alleged therein.

Moreover, the claim of poverty has not been satisfactorily established. Some one is furnishing means to prosecute this interference at this time, and it has not been shown that the parties who are interested in the interference now were not interested at the time the original statement was prepared. Appellant testifies that the in