That provision of the rule directing the examination of cases in the order of their filing dates can not be considered as followed where in any examining division one examiner's work is allowed to fall behind that of others having substantially the same class of inventions; under such management the cases of some inventors become preferred without shadow of right.

The reason for the preferment of amended cases over new cases in the same class of inventions is obviously to save work on the part of the examiner; if an application is amended with reasonable promptness, it is more or less fresh in the examiner's mind and a complete rereading of the same is unnecessary. Further, prompt responses by the Office tend to encourage promptness on the part of inventors and attorneys.

The last part of paragraph (a) requires a brief explanation. It used to be common practice for other Government Departments to request that a case be given preference on representations made by the inventor and without much study by the Department officials. The requirements that a representative of the Department making the request be detailed to watch the proceedings in the Patent Office, although, of course, he could make no action in the case, was inserted as a sort of penalty for making the request. Very few of these requests are now made, probably because of the requirement.

The last part of paragraph (d) should be read in the light of the decision in ex parte Lux, C. D. 1905, p. 221, which decided that only where there is apparent foundation for the request will the same be granted. If the applicant clearly has no right to make the claims of a patent he copies, the request for preferment should be denied.

In addition to the preferred classes given in the rule, it is desired to call attention to Order 2210 (222 O. G. p. 1) providing that after Jan. 1, 1916, all applications which have been pending for more than three years or which have an effective filing date running more than three years, shall be made special, etc. This means, of course, that these cases shall be taken up out of their regular order and acted on immediately. It is the custom to ask for prompt response by the attorney in these special cases and obviously this request can not be made with

good grace if the Office has not been prompt with its action.

As to advancement of cases upon order of the Commissioner, this is a matter within the discretion of this official and not much has been printed on how this discretion' will be exercised. It has been decided, however, in ex parte Bischoff, C. D. 1902, p. 329, that the Office can not take up cases in the order of their importance to the applicants.

Rule 64. Where the specification and claims are such that the invention may be readily understood, the examination of a complete application and the action thereon will be directed throughout to the merits; but in each letter the examiner shall state or refer to all his objections.

Only in applications found by the examiner to present patentable subject matter and in applications on which appeal is taken to the examiners in chief will requirements in matters of form be insisted on. (See Rules 96 and 134)

Where the parts of an application have been inspected in the application division of the Office, assembled, given a serial number and filing date, and forwarded to an examining division, the same is deemed to be a "complete application" within the meaning of Rule 64. See in this connection decision in ex parte Becker, 1901 C. D., p. 198. The decisions on what constitutes a complete application need not be mentioned here; they serve as a guide to the chief of the application room.

In case an examiner receives an application he considers incomplete, his duty is, under the decision ex parte Meszaros, 13 Gour., p. 88, not to assume jurisdiction of the case but to return the same to the application division for correction.

The first part of this rule explicitly directs action on the merits where the invention may be readily understood. Of course where the showing and description are so confused or inadequate that the invention can not be understood, no action on the merits is possible, but even here it is advisable to cite patents, if available, showing what appear to be analogous inventions having a similar object. The necessity for additional drawings in a case where the invention can be understood does not warrant suspension of action on the merits; ex parte Clark, C. D. 1904, p. 127.

As stated in ex parte Lewis, C. D. 1904, p. 16, "All objections to the application, whether relating to form or merits, should be made as soon as possible, and it should be only in exceptional cases that an objection is made for the first time late in the case. The first action should be careful and complete and new requirements or references should not be necessary except where rendered so by the applicant's amendments."

It does not follow, however, that valid objections discovered late can be ignored. The same decision, ex parte Lewis, says further, "The Office must correct an error whenever it is discovered and will not issue informal or invalid patents merely because it failed to discover the defect or informality as soon as desirable." A similar ruling is made in ex parte Blakeman, 1902 C. D., p. 25, and ex parte Fritsch, 1911 C. D., p. 239.

The question of insistance on matters of form covered by the second part of the rule deserves a little discussion. In ex parte Springborn, C. D. 1902, p. 142, the examiner had insisted upon his requirement for further illustration before acting on the merits of the case, because, first, the illustration was not sufficiently clear and distinct to enable him to make an intelligent action on the merits; and, second, that patentable subject matter was claimed, the applicant having been informed that certain of the claims (not specified) were allowable. The examiner's practice was held proper on the first ground and improper on the second. The decision said, "To merely state that there is patentable subject matter in the application is not sufficient under the last clause of Rule 64 to warrant the examiner in insisting upon formal requirements before the case receives action on the merits," and, further, "Requirements in matters of form will be insisted upon only in those cases in which the examination on the merits is completed. The case except for formal matters, must be ready for allowance or for appeal and said appeal must have been taken."

In ex parte Fritsch, supra, the examiner had twice acted on the merits of claims presented and some had been found allowable. Under these circumstances the decision states, "It is therefore seen that the application has been found to present patentable subject matter and consequently the examiner is justified, if the conditions

of the case so warrant, in insisting upon his requirements for amendment in matters of form."

The ruling on this point made in ex parte Springborn, supra, was modified and the decision in part overruled by the decision in ex parte Fox, C. D. 1915, p. 1, which cites with approval ex parte Fritsch, supra, and states that where the examiner has found any of the claims allowable, an amendment which does not comply with the examiner's requirements as to matters of form or point out wherein they were improperly made, is not completely responsive.

The practice to be followed under the second clause of Rule 64, therefore, may be summarized as follows:

The mere statement by the Office on record in a case that the case contains patentable subject matter is not sufficient to warrant suspension of action on the merits pending correction of matters of form, but where a claim or claims have been allowed, insistence on such correction is warranted and further an amendment following such allowance accompanied by requirements for formal corrections is incomplete unless it complies with the requirements or traverses them.

The question is raised in Rule 134 as to whether corrections in matters of form (preliminary and intermediate questions not affecting the merits of the invention) must be settled before a case can be appealed to the Examiners-in-Chief on the question of division. Requirements of cancellation of illustration or description, change of title, etc., based on a requirement for division should not be insisted on, nor can they be settled pending the settlement of the question of division. It is these matters of form that are excepted in this rule; other matters of form having no relation to the question of division must be attended to and settled before appeal to the Board can be taken.

Rule 65. Whenever, on examination, any claim of an application is rejected for any reason whatever, the applicant will be notified thereof. The reasons for the rejection will be fully and precisely stated, and such information and references will be given as may be useful in aiding the applicant to judge of the propriety of prosecuting his application or of altering his specification, and if, after receiving this notice, he shall persist in his claim, with or without altering his specification, the application will be reexamined. If upon reexamination the claim shall be again rejected, the reasons therefor will be fully and precisely stated.

This rule, except for the last sentence which does not appear in the statute, is substantially the same as Section 4903 R. S. Where the statute says the reason for the first rejection shall be briefly given, the rule says will be fully and precisely stated. Where the rule uses the word "prosecuting," the statute has "renewing." With these exceptions, the rule is a paraphrase of the statute. Rule 67, not necessary to cite here, directs the examiner's action on matters of form. Both rules require the examiner to state his reasons for rejection and objection "fully and precisely," and to do this in the first action.

Where the specification clearly describes the invention and the claims are readily understood the average examiner will try to make a proper and complete action. But where the description is incorrect, confused or inadequate, the drawing bad in details or incomplete, and the claims indefinite, vague or aggregative, there is a strong temptation to make the rejections and objections general in character and not to expend the time and effort to place on record the position of the examiner as to all defects in a full and precise way. Such general actions rarely advance the prosecution materially.

Perhaps one situation may excuse this kind of an Office letter. Where a foreign applicant files a case just within the year from filing an application for the same invention abroad, circumstances may compel him, or the U. S. attorney acting for him, to present the application in exactly the condition in which it was filed abroad; in other words, a copy of the foreign specification and claims. These may be decidedly informal from the view point of the U. S. law and an entire rewriting be necessary, especially to get the claims into the definite form our patent system requires. Here the examiner may criticize the specification and reject the claims as informal; he should also cite references for the invention generally, but, of course, he cannot apply the references satisfactorily, nor give so complete a response as he otherwise could. Therefore, a more general form of action will be all he can make.

An exception to the requirement that the examiner must explain and apply references is given in ex parte Inman, C. D. 1910, p. 217, and cases therein cited; here it it stated, "It is well settled by the decisions construing