frame and driven by said motor, enclosing chambers in said main frame disposed on opposite sides of said motor and communicating with said enclosure, a controller for said motor in one of said chambers, a resistance for the motor in another of said chambers, and conductors for said controller, resistance and motor.

10. A flame proof electric mining machine comprising an electric motor, control means therefor, cutting and feeding mechanism including transmission mechanism connected to said motor, said elements being so disposed and enclosed as to produce a substantially smooth surfaced machine body of substantially the cross section of the motor casing. and means for rendering said motor and said control means flame proof located substantially within the cross-sectional limits of said body.

The history of this application reveals an unusual delay in its progress through this Office since it has been pending over thirteen years. It is thought the applicant should seek to promptly bring its prosecution to a close.

The disclosure of the application relates to a flame-proof mining machine. It is to be observed that claim 7 and the other claims in the first group, although mentioning a mining machine in the preamble, recite as elements only motor structure of general application and those features of construction which are provided to prevent sparks produced by the motor from igniting gas which may surround the motor in the place where it is used, whereas claim 10 and the other claims of the second group recite not only the motor and its protective means, but also include the cutting and feeding mechanism of the mining machine and recite frame structure which is of special use only in a mining machine where it is desirable to confine the limits of the frame structure within the cross-sectional area bounded by the coal cutting mechanism.

Appellant admits that the second group of claims contains limitations which might limit the field of search of these claims more narrowly than the first group, and that in such case a requirement for division so as to make it more convenient for the Office in searching such claims is quite proper where no injury may come to the applicant as a result thereof. However, appellant contends that in the present case the two groups of claims are so closely related that there is grave danger of a holding of double patenting should two applications be submitted and two patents issue.

Nevertheless, the additions of the elements and features of the second group of claims to those covered by the first group either do or do not involve invention. If they do involve invention that invention is sufficient to support a second patent; and if they do not, applicant is not entitled to claims therefor over the allowable claims of the first group either in a separate application or in the present application. The patentability of the two groups of claims should accordingly be determined in separate applications more particularly as the structures claimed are separately classified in the Office and may well be said to have attained a distinct status in the art. It seems obvious the manufacturer of electric motors would not be likely to manufacture mining machines and the manufacturer of the latter would be quite likely to obtain the electric motors to be used with the mining machines from a separate manufacturer. It is fair to hold, therefore, the subject matter of the two groups of claims are structures of separate manufacture and sale.

The decision of the Examiners in Chief is affirmed.

Where an application presents claims for more than one species and claims generic thereto the Examiner, if in his first action he rejects all of the generic claims, should require the applicant to elect which group of specific claims he desires to prosecute. The response to that action, in order to be complete, must include such an election.

2. SAME SAME SAME.

Where after response to a rejection of the generic claims and a requirement for election the Examiner, if he is not convinced by the response that some of the generic claims are patentable, should include in his next action an action upon the claims of the elected group.

ON PETITION.

Mr. Joel B. Liberman for the applicant.

ROBERTSON, Commissioner:

Applicant petitions that the Examiner be instructed in the proper procedure to be followed in this case.

Inasmuch as the applicant in connection with the petition has stated that he elects to prosecute claims for the species shown in Fig. 1 of the drawings, and it was because of the failure to make such an election that the Examiner held the amendment of July 17, 1931, insufficient, the case is now in condition for action by the Examiner and the petition might well be dismissed.

However, in view of the question which has arisen as to the proper action to be taken where the Examiner rejects generic claims and requires division between claims directed respectively to the species covered by such generic claims, it is thought proper to state what practice should be followed.

Rule 41 was amended so as to provide that where an application discloses two or three species of an invention, claims specific to each specie might be allowed if generic claims are found allowable. An order was subsequently issued (396 O. G. 1) in which it is stated that where, in a case such as above referred to, the Examiner holds the generic claims unpatentable, he should also require the applicant to elect which group of the specific claims he desires to prosecute.

After such an action, the following situations may arise: (a) The applicant contests the holding of the Examiner as to the claims being directed to two or more species or argues that the requirement for division is for some other reason improper, or (b) he insists upon the patentability of the generic claims as presented, or (c) he amends or rewrites them and argues that, as so amended or rewritten, they are patentable and generic to all his species.

[1] In case (a), if the Examiner is still of the opinion that division was properly required, the application should, in accordance with the usual practice, be referred to the Examiner of Classification. If the requirement for division is approved, it will then be incumbent upon the applicant to make his election. In cases (b) and (c), the amendment, in order to be complete, must include an election of the species it is desired to retain in the event that generic claims are not finally found to be allowable.

[2] If the foregoing procedure is followed, the Examiner's next action, if he is not convinced of the patentability of one or more of the generic claims, will include not only an action on the generic claims, but also an action on the claims of the elected group.

If the Examiner holds some or all of the claims to the elected species are not patentable, the applicant of course, on appeal, can carry up that question as well as the patentability of the generic claims. Furthermore, if the applicant decides to drop the generic claims, he can then appeal as to the specific claims which have been rejected. If on appeal the generic claims are found to be patentable, then, under the order above referred to, the question of the patentability of all the claims, subject to possible formal corrections, will have been determined. On the other hand, if the generic claims are found not to be patentable, the decision as to the specific claims will conclude the case so far as action by this Office is concerned.

If the applicant is not required to elect until the patentability of the generic claims is determined, then, unless the generic claims are held to be patentable, the final determination of the question of the patentability of the specific claims will be unnecessarily postponed.

In view of the election, which as above noted the applicant has made, the Examiner should proceed with further consideration of the case in the manner above outlined.

EX PARTE CLARKE AND MALM

Decided January 31, 1930

412 O. G. 3

1. CLAIMS-COINED EXPRESSIONS-EX PARTE MARKUSH, 340 O. G. 839.

In Er parte Markush, 340 O. G. 839, it was pointed out that there are circumstances under which the prior art precludes the adoption of a broad generic term and there is no subgeneric term, and that under such circumstances the applicant should be permitted to employ a generic term limited by explanatory terms.

2. SAME-SAME-SAME.

In claims for process of making organic esters of cellulose, Held that the term "monocarboxylic" used as defining the acid claimed is not too broad and that the applicant should be granted a claim of a scope commensurate with the scope of the invention disclosed.

[NOTE-This application has resulted in Patent No. 1,800,860, dated April 14, 1931.]

ON PETITION.

Mr. Newton M. Perrins and Mr. D. I. Mayne for the applicants.

KINNAN, First Assistant Commissioner:

The applicants have petitioned that the Examiner be required to withdraw his objection that some eight claims are alternative and do not fall under the ruling in the case of Ex parte Markush, 340 O. G. 839.

The claims are directed to a process for making mixed fatty esters of cellulose which are soluble in acetone which comprises treating

cellulosic material with an acid under certain specified conditions and the clause in the claims to which the Examiner objects is—

an acid selected from the group which consists of the unsubstituted aliphatic monocarboxylic acid including the cycloparaffinic, the aromatic monocarboxylic acids and the aralkylmonocarboxylic acids.

The Examiner has held the Markush decision does not support the petitioners' view as to this type of claim. He notes that if a process including the use of one of these compounds of the instant application is embraced in a patent it would not anticipate a second and later patent which included the use of the other, such compounds not being regarded as equivalents but rather as involving different inven. tions or discoveries when used in this process.

The Examiner held practically this same view in the Markush case, since he there urged that he "doubted that a chemist would recognize that a chlorine substitution product of aniline could replace aniline in the reaction." This point was not deemed controlling in that case and it is not here. It is but usual, also, to allow in a patent for a mechanical structure, a claim generic to several species notwithstanding such species may constitute independent inventions which would support separate patents.

[1] While there is usually no great difficulty in the case of mechanical inventions in selecting suitable terms to cover what an applicant has invented and exclude what he has not, yet in cases relating to chemical processes some difficulty has been experienced by reason of lack of a suitable term or terms which will properly define the true scope of an applicant's invention. In Ex parte Markush it was noted that—

There are many instances in which a generic term covering a number of substances can not properly be employed in a claim, because many of the sub stances included under the broad generic term can not be used in the combination stated.

It may also be noted that frequently the prior art precludes the adoption of such a generic term. Under such conditions it was held in the above-noted decision that, where a generic term was too broad and there was no known subgeneric term, an applicant should be permitted to employ a generic term limited by explanatory terms, in the absence of anticipating art. It was there noted that

Where the validity of the claim is not involved, the paucity of the language may necessitate a waiver of technical rules of this Office, to the end that an applicant may properly protect his real invention.

The Examiner has suggested that the holding in the above-decided case is restricted to those conditions wherein the various substances, any one of which may be used in the process, belong to some recognized group or class and has referred to a decision [Ex parte Palmer and Fulton, 398 O. G. 707], in which it was held that neutral salts and cane sugar belong to such dissimilar groups that no subgeneric or general term could properly be used to embrace both such substances. In that case the fact was noted that different patents could and should be obtained. It is believed these two rulings, that in the Markush case and that in the unpublished decision quoted at length by the Examiner, mark somewhat roughly limits within which an applicant may and may not properly frame his claims when the conditions are as set forth in the Markush, the unpublished, and the present cases.

It is stated by petitioners that they are quite willing to adopt the following clause or expression in place of that objected to by the Examiner:

an acid selected from the group which consists of, first, the unsubstituted aliphatic monocarboxylic acids including the cycloparaffinic; second, the aromatic monocarboxylic acids; and third, the aralkyl monocarboxylic acids.

The Examiner states as to this proposed substitute expression: It conforms to the Markush decision and is chemically accurate.

I do not find any substantial difference in meaning between these respective clauses. Since, however, this substitute expression is proposed by the petitioners and is acceptable as to form by the Examiner, it may as well be adopted if the petitioners are satisfied.

[2] The Examiner regards the claims under objection as alternative in form and as including different substances not falling within any known genus or group. The petitioners note that these compounds included in the expression objected to "first, belong to the genus of acids; second, to the genus of organic acids; third, to the genus of carboxylic acids; fourth, to the genus of monocarboxylic acids;" that is, the petitioners contend that all of the acids are monocarboxylic acids and that this brings the terms of the claims. within the doctrine of the Markush case. The Examiner does not dispute this statement, but merely holds that the terms "monocarboxylic acids" include groups, such as the aliphatic series, aromatic compounds, and aralkyl compounds, which are so distinct, as were the neutral salts and cane sugar, as not to be properly embraced in a single claim or application. With this view I am unable to agree. The Examiner construes the Markush case too narrowly. The applicants have carefully explained how all these different acids falling under the generic term "monocarboxylic" function in connection with the process claimed and have thereby made them equivalents to the extent of their use in the process. It is thought in consequence that, if the prior art does not preclude, the petitioners should be granted a scope of claim commensurate with what they disclose as their invention and their contribution to the prior art and, as noted in the previously-adjudicated Markush case, they should not be deprived of a proper claim merely because of the paucity of the language of the art. Whether the proposed change in the form of expression is made or not, it is held the Examiner should withdraw his objections.

To the extent indicated the petition is granted.