2.

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patent granted to the domestic patentee, and had filed an affidavit stating that he had made the invention before the foreign patent, without reciting the facts upon which he relied to prove that he antedated the foreign patent, it was held that the affidavit was not such as is required by Rule 75 to overcome the foreign reference and the request must be denied. Ex parte Boyer, C. D., 1889, 249; 49 O. G., 1985.

The examiner should not institute an interference on an issue which is not an allowed claim made by the parties. The applicants should make the issues by their claims. If the examiner for any reason desires the issues to be different, he should arrive at that result by requiring the claims to be amended by the applicants. Hammond v. Hart, C. D., 1898, p. 32; 83 O. G., 743; Ex parte Whitney, C. D., 1898, p. 82; 83 O. G., 1659.

An interference is not sufficiently clear and definite which requires that certain limitations in the claims of one party should be held to be immaterial and that other limitations should be read into the claims of either one or the other party to the proposed interference in order to make them the issue of the interference. Wolfenden v. Price, 83 O. G., 1801; C. D., 1898, p. 87.

No interference should be declared between the allowed claims of one application and the rejected claims of another. Hammond v. Hart, C. D., 1898, 52; 83 O. G., 743.

It

It is necessary to read Rules 95 and 96 together in order to arrive at a clear understanding of their provisions. Rule 96 contains a provision for the declaration of an interference even though the application is not in all respects in condition for allowance. follows, therefore, that Rule 95 relates only to the claims involved in the interference; otherwise the provisions of these two rules would be in direct conflict with one another. Ex parte Thurman, C. D., 1904, 317, 111 O. G., 1625. A patent which may become involved in an interference stands in the same position as an application which has been found ready for allowance, and whether other claims than

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the claims of the issue are patentable or not is immaterial to the declaration of an interference when the other claims, if held patentable, could not constitute part of the issue of the interference. Ex parte Mercer, 193 0. G., 1017; C. D., 1913, 195. To the same effect is ex parte Spoon, 97 O. G., 1376; C. D., 1901, 188.

The second paragraph of Rule 95 appears for the first time in the edition of January 1, 1916. So far as I am aware there are no written decisions construing this paragraph of the rule. In practice where such cases have arisen the examiner has generally first discussed the situation with one of the law examiners and thereafter if the conclusion was adverse as to patentability the case has been informally referred to the Commissioner. Where the lack of patentability was not debatable the Commissioner has refused to declare an interference and directed a rejection of the unpatentable claims in the application. In other cases he has ordered the interference to proceed. His policy has been to carry into effect the doctrine of ex parte Brinkman, 112 MS. Dec., 128; and Both v. Barr, 200 O. G., 582; C. D., 1914, 29.

A COMMUNICATION

CONCERNING THE STATEMENT OF INVENTION.

Editor, Journal of the Patent Office Society.

Sir:

I note the communication of Examiner Thurber in the December Journal relative to requiring a concise statement of the invention in the second paragraph of the specification. The idea seems to me to be feasible and certainly is desirable. With such a statement in bold print, it will aid the examiner, searcher, attorney, and court in reading the patent and determining the pertinency in any instance. I cannot see how such a requirement can work a hardship on anyone.

But I would not advise that the matter be made the subject of a rule of the Patent Office which is more or less rigid. Altho I have found that it is easier to pre

pare a specification by first stating the objects of the invention in the initial paragraph and making a concise statement of the invention in the second, I have also found that it cannot be done in all cases. Some inventions do not lend themselves to such a treatment.

Rather than amend the Rules of Practice I would suggest that the change in practice be made the subject of an order of the Commissioner, leaving it to the discretion of the Examiner as to whether this statement should be required in any case. The statement should be approved by the Examiner just before passing the case to issue so that it will cover the invention as finally claimed. From the decision of the Examiner a petition shall lie either to the Commissioner or some one, as a Law Examiner, designated by him.

Yours very truly,

H. A. BIERMAN.

THE SCIENTIFIC LIBRARY-A CORRECTION.

As corrections-add the following to list of "Official Patent Office Periodicals of Foreign Countries", printed on pages 317-318 of the February, 1920, issue of the Journal of the Patent Office Society:

(1) Japan

"Official Gazette of Utility Models"

(2) South Africa.

"Union of South Africa Government Gazette. Listing Patents and Trademarks.

OF GENERAL AND PERSONAL INTEREST.

The receipt of cases in the Office for the month of March, 1920 was extraordinary and broke all records for a similar period. It appears now that the receipts for the current year will materially advance the figures for 1919, which were unusually high, and that a new yearly record may be made. Below follows tabulation of the March receipts.

Automatic Telephone Installation.

There has recently been installed in the Interference Division of this Office an automatic telephone system. This system was furnished by the Automatic Electric Company of Chicago upon the suggestion of Mr. Charles M. Candy, the head of the Patent Department of that company. Mr. Candy's suggestion was readily approved by the Examiner of Interferences, and permission was granted by the Interior Department for the installation of the apparatus.

There are many interferences in this active and intricate art and it will be a great aid to the efficient handling of much of this work to have an illustrative apparatus always at hand.

The system, which constitutes a complete exchange, comprises a twenty-four cell (48 volt) storage battery and charging machine, a switchboard, power-board, and ten desk phone sets. The switchboard is equipped with line switches of both the Keith plunger type with master switch and the later rotary type. There are also selector switches and connector switches so that the system illustrates the organization and apparatus of a standard exchange to accommodate one thousand subscribers. A ringing and busy test machine is provided which is normally at rest but starts automatically whenever a call is made. The desk phones are of a late type with the dial attached to the base of the transmitter stand and are distributed for the use of the various members of the Interference Division.

The installation is much appreciated and will be of great service as an exhibit of this interesting art.

The Office continues to lose assistant examiners but the list to be noted here is considerably smaller than in the last issues of the Journal.

Mr. C. A. Rowley, first assistant examiner, has resigned to enter the patent department of the Libbey Owens Sheet Glass Co., at Toledo, Ohio. He was appointed to the Office July 2, 1906 and reached the grade of first assistant July 1, 1916: from June 12, 1917 to March 1, 1919, he was in the military service, holding commission as Captain and performing excellent service overseas. In the Office he served in Division 12, 40 and 4.

Mr. H. S. Morton, second assistant examiner, and Mr. J. L. Fearing, third assistant examiner, have resigned to be associated with Mr. Chester H. Braselton of New York and Toledo, patent counsel for the Industrial Research Corporation of Toledo. Both Mr. Morton and Mr. Fearing expect to be located in Washington for the present and later to go to Toledo. Mr. Morton entered the examining corps July 1, 1910 and with the exception of five months spent in Division 10, served continuously in Division 28. Mr. Fearing was appointed fourth assistant July 30, 1917 and promoted to third assistant July 23, 1918. He was continuously in Division 16 and possessed of unusual ability in electrical engineering.

Mr. B. V. Zillman, third assistant examiner, has resigned to go with Cook & McCauley of St. Louis. Mr. Zillman was appointed as temporary fourth assistant Dec. 1, 1917, made permanent July 23, 1918 and promoted to third assistant examiner August 9, 1919: he served continuously in Division 12.

Former assistant examiner L. B. Mann of Division 10, who it was hoped could be induced to return to the Office after his separation from military service, has declined the Office proposition and has located with the Parker Wheel Co., of Cleveland, Ohio.