The rejection of a claim for indefiniteness is appealable to the Examiners-in-Chief, where it fails to clearly distinguish between what is new and what is old, but where the indefiniteness renders it unintelligible and impossible to examine on its merits, the action of the Examiner is reviewable by the Commissioner on petition. Ex parte Reynolds, C. D., 1874, p. 119; Ex parte Petzold, C. D., 1892, p. 39; Ex parte Doten, C. D., 1877, p. 115. It was held in Ex parte Springer. C. D.. 1906. p. 85, and Ex parte Mygatt, C. D., 1912, p. 354, that a holding by the Primary Examiner that an application has become abandoned by failure to prosecute it within the statutory period, is to be distinguished from a rejection on the ground of abandonment of the invention, the former being reviewable by the Commissioner, and the latter on appeal to the Examiners-in-Chief. But in Ex parte Selden, C. D., 1911, p. 306, and In re Mattullath, C. D., 1912, p. 490, the Court of Appeals held that this was a question. of merits and took jurisdiction of an appeal from the Commissioner. This ruling was reversed in In re Carvalho, C. D., 1918, p. 165.

The appeal to the Examiners-in-Chief must set forth in writing the points of the decision upon which it is taken (Rule 133); Ex parte Callahan, C. D., 1890, p. 24; Ex parte Richardson, C. D., 1874, p. 140; Ex parte Young, C. D., 1875, p. 124. It must be accompanied by a fee of $10 for the first appeal, but this fee having been once paid need not be again paid if further appeals to the Examiners-in-Chief are necessary. (R. S. Secs. 4909 and 4934) Ex parte Thomson, C. D., 1891, p. 138; Ex parte Arms, C. D., 1898, p. 144. The payment of an appeal fee during the Ex parte prosecution of an application does not relieve a party from the payment of another fee upon an appeal to the Examiners-in-Chief from a finding of priority by the Examiner of Interferences. Cheney v. Venn, C. D., 1906, p. 492. The appeal must be signed by the applicant or his duly authorized attorney or agent. (Rule 133).

"Upon the filing of the appeal the same shall be submitted to the Primary Examiner who if he find it to be regular in form and to relate to an appealable action, shall within ten days from the filing thereof furnish the Examiners-in-Chief with a written statement of the grounds of his decision on all

the points involved in the appeal, with copies of the rejected claims and with the references applicable thereto, giving a concise explanation of the invention claimed and of the subject matter of the references so far as pertinent to the appealed claims. The Examiner shall at the time of making such statement furnish a copy of the same to the appellant".

(Rule 135) Ex parte Parker, C. D., 1886, p. 15; Ex parte Callahan, C. D., 1890, p. 24; and Ex parte Mevey, C. D., 1891, p. 115.

In making his statement the Primary Examiner should include a copy of all the rejected claims, as required by Rule 135, unless they are all to be found in a single paper to which he can refer or unless it is conceded by the appellant that all the claims must stand or fall together, in which case one claim may be taken as an example. In some cases Examiners fail to observe this requirement of the rule, and it has been necessary to ask the Commissioner to particularly call attention to the matter as it is very inconvenient and consumes much time to search the record for the separate claims. The statement should, where it is possible, contain a brief description of the applicant's device and of the references in so far as it is necessary to enable the Board to understand the grounds of the rejection; and it should point out just what portion of the matter claimed is disclosed by the references and where they fall short, and state why in the opinion of the Examiner these differences are insufficient to render the claims patentable. Where two references are combined to anticipate an alleged combination, the examiner should carefully consider whether there is anything in the art to suggest the combination, and whether such combination is attended by any new and unobvious result. Rejections are sometimes made by analyzing the applicant's invention and finding references for the several elements without considering whether they are so related as to be self-suggestive of conjunctive use or whether there is anything in the art to suggest it. Inventions are not made in this way, and the Examiner is led to make the rejection and to consider the combination obvious only by what he has learned from the applicant's invention.

If the Primary Examiner shall decide that the appeal is not regular in form, or does not relate to an appealable action, he may refuse to forward it to the Examiners-in

Chief. A petition from such decision may be taken directly to the Commissioner as provided in Rule 142. Where the Primary Examiner refuses to forward the appeal, it is generally because of the failure of the applicant to settle all preliminary matters not affecting the merits before the appeal is taken, or because the claims have not been twice rejected, as required by Rule 134, or because of his failure to clearly set forth the grounds. of appeal (Rule 133), or because the appellant has mistaken his remedy and should have taken the matter to the Commissioner under Rule 142. Ex parte Benjamin, C. D., 1903, p. 132; Ex parte Pillard, C. D., 1913, p. 127; Ex parte Warren, C. D., 1906, p. 87; Ex parte Fuller, C. D., 1891, p. 243; Ex parte Phillips, C. D., 1908, p. 195; Ex parte Scott, C. D., 1903, p. 28; Ex parte Durafort, C. D., 1904, p. 234; Ex parte Bach, C. D., 1905, p. 383.

"If the appellant desire to be heard orally, he will so indicate when he files his appeal; a day of hearing will then be fixed and due notice thereof given him." (Rule 137).

"On or before the day of hearing he shall file a brief of the authorities and arguments on which he will rely to maintain his appeal." (Rule 137).

This rule is not always strictly enforced, but where no brief is filed and no one appears for the hearing, the Examiners-in-Chief may, if they think best, dismiss the appeal. Ex parte Booth, C. D., 1913, p. 7.

Affidavits are sometimes filed after the case has been appealed, and Rule 138 forbids their admission without remanding the application to the Primary Examiner for reconsideration. The appellate tribunal may however refuse to remand the case and proceed with the same without consideration of the affidavits. Ex parte Bachrach, C. D., 1913, p. 56; Ex parte Richmond, C. D., 1906, p. 41; Ex parte Peirce, C. D., 1906, p. 117. In a recent case, an affidavit was filed under Rule 75, for the purpose of antedating the principal reference after the decision of the Board had been rendered, and the case returned to the Primary Examiner. The Examiner held that he had no jurisdiction of the case, and returned it to the Board for their action. It was held by the Board that Rule 138 applies only to affidavits received before the decision was rendered, and even then the Rule re

quires that the application must be remanded to the Primary Examiner if the affidavits are to be considered, so that it is useless for the Board to take any action after they have rendered their decision. The proper course would probably be for the applicant to petition the Commissioner to restore the jurisdiction of the Primary Examiner for the purpose of considering the affidavit, and for the citation of other references if possible, to replace the original reference, if this affidavit were found sufficient to antedate it. Ex parte Parrish, C. D., 1905, p. 113. In case of a holding that the affidavit was insufficient, or the rejection on other references, a second appeal could be taken to the Examiners-in-Chief.

In rendering their decision, the Examiners-in-Chief should affirm or reverse the decision of the Primary Examiner only on the points on which appeal shall have been taken (See Rule 133) Rule 139. The Board may consider references listed by the Examiner in his statement though not relied upon by him in his discussion of the claims. Ex parte Sparr, 20 Gourick, 23-16, ar. 21, 1908.

"Should they discover any apparent grounds not involved in the appeal for granting or refusing letters patent in the form claimed, or any other form, they shall annex to their decision a statement to that effect with such recommendation as they shall deem proper." (Rule 139).

Formerly it was held that the recommendations of the Examiners-in-Chief were not binding upon the Primary Examiner. Ex parte Williamson, C. D., 1891, p. 128; Ex parte Dodge, C. D., 1872, p. 202; but it was held otherwise in Ex parte Letellier, C. D., 1907, p. 171, and the rule has since been amended in accordance with the latter ruling. When a recommendation for further rejection was made by the Examiners-in-Chief, it was formerly necessary for the case to be returned to the Primary Examiner to make a rejection in accordance with the recommendation, and to then take a second appeal to the Board before the case could be taken to the Commissioner on appeal; Ex parte Motsinger, C. D., 1909, p. 101. But in Ex parte Dimm, C. D., 1914, p. 57, a direct appeal to the Commissioner was permitted and the rule has since been amended to allow such appeals. Under the present rule, the applicant has the options: (1) to

waive his right to further prosecution before the Primary Examiner, and have the case reconsidered on the same record by the Examiners-in-Chief, and in case their decision is adverse to him, to appeal directly to the Commissioner; or (2) to waive reconsideration by the Examiners-in-Chief, and take a direct appeal to the Commissioner.

"Should the Examiners-in-Chief recommend the granting of letters patent in an amended form the applicant has the right to amend in conformity with such recommendation which is binding upon the Primary Examiner in the absence of new references or grounds of rejection." (Rule 139).

"From the adverse decision of the Board of Examiners-inChief appeal may be taken to the Commissioner in person upon payment of the fee of $20 required by law." (Rule 136).

In case of a second appeal to the Commissioner a second fee is required, although a single fee only is necessary on second appeals to the Examiners-in-Chief. Ex parte Arms, C. D., 1898, p. 144.

"If the Commissioner in reviewing the decision of the Examiners-in-Chief, discovers any apparent grounds for refusing letters patent not involved in the appeal, he will before or after decision on that appeal, give reasonable notice thereof to the applicant; and if any amendment or action based thereon be proposed, he will remand the case to the Primary Examiner for consideration." (Rule 139).

Ex parte Prindle, 19 Gourick, 72-18, July 16, 1907.

"After decision by an appellate tribunal the case shall be remanded at once to the Primary Examiner, subject to the applicant's right of appeal, for such action as the applicant is entitled to demand." (Rule 141).

"Cases which have been heard and decided by the Commissioner on appeal will not be reopened except by his order." (Rule 140).

A petition for a rehearing of a case decided by the As sistant Commissioner, merely because a decision by the Commissioner was desired, was denied. Ex parte Hughes, C. D., 1891, p. 148; Scott v. Goss, 17 Gourick, 25-21, March, 1905; Hisey v. Peters, C. D., 1895, p. 22. Rehearings are not favored and are allowed only under special circumstances. They must be applied for within the limit of appeal. Ex parte Messinger, C. D., 1897, p. 1. A motion for rehearing ought to be governed as far as practicable by rules which in courts govern new trials.