which to bring motions under the original declaration of interference had expired. The record shows that Townsend's application is assigned to Young, the date of this assignment being prior to the original declaration of the interference. The Examiner of Interferences refused to transmit the motion as to both grounds thereof, his reason for such action being as follows: Inspection of the records of the applications shows that Young is the assignee of Townsend's application in interference. Young is a new party to the interference. As the real party in interest, however, Young has already had an opportunity to urge the matters presented here when the interference involved merely the applications of Townsend and Thullen. The nature of the grounds for dissolution is such that they could have been urged just as well then as now. Young's time for bringing such a motion expired when he, as assignee, was involved with Thullen and Thullen. The only basis which he could have for urging such a motion now is upon a showing that it could not have been brought before. It is believed to be a technical application of the rule to allow Young to enter this interference with a new application in his own name and do that now which he neglected to do in his earlier position in the same interference as Townsend's assignee. Such practice is unreasonable and not to be indulged in. It is true, as pointed out by counsel for Young, that interferences are between applications and not between applicants and that often interferences are declared between applications which are assigned to the same party. In several cases such interferences have been contested for the avowed purpose of obtaining the decision of the Patent Office or the Court of Appeals of the District of Columbia as to who was the prior inventor; but this is not such a case, and it is believed that it would be inequitable and an extremely technical application of the rules to allow a party who had had an opportunity as assignee of one of the interfering applications to bring a motion to dissolve the interference to later, after having entered the interference with an application in his own name, bring a motion to dissolve on grounds which could as well have been urged at the former time as now. The addition of Young's application to the interference in no way affected the question of the patentability of the claims or Thullen and Thullen's right to make them, and Young has given no reason whatever why a motion based on the ground set up in this motion was not brought within the time originally set for bringing such motions. This case is thought to fall within the ruling of the Court of Appeals of the District of Columbia in the case of Drawbaugh v. Seymour, Commissioner of Patents, (C. D., 1896, 527; 77 O. G., 313; 9 App. D. C., 219,) where it was contended that the office had no authority to reject certain claims of Drawbaugh's application on the findings and authority of the Supreme Court of the United States in the case of The American Bell Telephone Company v. The People's Telephone Company, (C. D., 1888, 321; 43 O. G., 377; 126 U. S., 1,) for the reason that Drawbaugh was not a party to that proceeding. In that case the Court said: While Drawbaugh may not have been a technical party defendant to the case of the Bell Company against his assignees, he was a substantial party thereto. He was fully and completely represented by the corporation, his assignee, in which he was interested; and he was an active party in conducting the defense. He furnished the facts upon which the defense depended; and he was treated and referred to throughout as the substantial party concerned in maintaining the defense. To hold, after the proceedings and all that has occurred in that case, that Drawbaugh and his assignees are not bound by the findings and judgment therein, would be to sacrifice substance to mere technicality, and do that at which reason and common sense would revolt. It is not necessary that a person should appear upon the record as a technical party to the proceedings in order to be bound by the judgment. (1 Greenleaf Evidence, secs. 522, 523, 535, 536; 4 G. & J., 407, 408.) If he is represented in the proceedings, or is a party in fact, though not of record, he will be bound. We are therefore decidedly of opinion that Drawbaugh, and those claiming under him, are bound by the findings and decree of the Supreme Court in the case of The Bell Telephone Company v. The People's Telephone Company, reported in C. D., 1888, 321; 43 O. G., 377; and 126 U. S., 1, on the present applications to the Patent Office. The decision of the Examiner of Interferences is affirmed. EX PARTE EDWARDS. Decided November 27, 1908. 137 O. G., 1711. SPECIFICATION-STATEMENT OF INVENTION. A statement of invention forming a part of the specification which amounts practically to a mere repetition of the claims in different language is objectionable and should be canceled. ON PETITION. WINDOW. Mr. Henry F. Newbury and Messrs. Georgii & Massie for the applicant. BILLINGS, Assistant Commissioner: This is a petition from the action of the Examiner objecting to the statement of invention beginning with line 10 of page 1 and ending with the fourth line from the bottom of page 2. The ground of the Examiner's action was that the matter was objectionable as confusing the specification with the claims. He held that if the matter was stated in the claims it was unnecessary in the specification, and if it were not the specification was inconsistent with the claims. The action of the Examiner is thought to have been right. The matter objected to comprises a detailed statement of the invention and amounts to a mere repetition of the claims in different language. There can be no objection to a real statement of invention at the beginning of the specification, but no reason whatever is seen for permitting a statement such as the one which is objected to in the present case. If this matter were allowed to remain in the specification, it would require a detailed comparison with the claims, which is believed to be unnecessary and uncalled for. The petition is denied. 1. RULE 69-PRACTICE. EX PARTE REISS. Decided December 3, 1908. 137 O. G., 1712. A request that a rejection be made final was properly refused by the Examiner when the applicant made no attempt to show that there was any error in that rejection. 2. SAME-NOT INCONSISTENT WITH SECTION 4903, REVISED STATUTES. Rule 69, which provides that an applicant in order to be entitled to reconsideration of his claims after they have been rejected must distinctly point out the supposed errors of the Examiner's action, is not inconsistent with section 4903 of the Revised Statutes, which provides for a reëxamination of an application. ON PETITION. TOOL-HOLDER. Mr. J. W. See and Messrs. Brock, Boeken & Smith for the applicant. BILLINGS, Assistant Commissioner: This is a petition from the action of the Examiner requiring that the applicant specifically point out the supposed errors in the Examiner's action as a prerequisite to reconsideration of the case. The record shows that the claims originally presented were rejected by the Examiner and the reasons therefor specifically stated in the first Office action. The applicant thereupon filed the following request: Responding to Examiner's communication dated June 2, 1908, Paper No. 1, a final action is respectfully requested, subject to appeal. In response to this request the Examiner stated: The above communication asks for final action. It is the duty and desire of the Examiner to do justice, in so far as he is able, to both the applicant and the public. Certain claims were rejected by the Office for reasons that were stated. In order that the Examiner may be able to do justice to the applicant, it is proper that the applicant should state why the rejection is erroneous, in order that the error, if any, may be corrected. If he had thought the rejection proper, of course he would have canceled the claims. Before final action, Rule 69 should be complied with. The year within which this application must be amended to avoid abandonment dates from June 2, 1908, as the last communication is not such an action as the condition of the case requires. Upon receipt of this communication of the Examiner the applicant again requested final action without pointing out any supposed errors in the Examiner's action, and in view of the insistence of the Examiner upon compliance with the provisions of Rule 69 before giving further action upon the merits of the case brought this petition. The petition reads as follows: In the above-entitled case petition is hereby taken to the Commissioner for the reason that the Examiner desires a compliance with Rule 69 before giving further action upon the merits of the case. This petition is taken for the purpose of testing the validity of Rule 69. It is contended in behalf of the applicant that section 4903 of the Revised Statutes makes it mandatory on the part of the Commissioner in rejecting any claim to give briefly the reasons for such rejection, together with such information and references as may be useful in judging of its propriety, but that the applicant is not, like the Commissioner, obliged by the statute to give any reason or to point out specifically the supposed errors in the Commissioner's action; that, on the other hand, the Commissioner is required to order a reëxamination of the case if the applicant "persists" in his claims, and that the provision of Rule 69 which requires that the applicant point out the supposed errors in the Examiner's action is not provided for by statute and is consequently invalid. Section 4903 reads as follows: Sec. 4903. Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a reëxamination of the case. Rules 65 to 69 of the Rules of Practice of the United States Patent Office, which were promulgated by the Commissioner of Patents with the approval of the Secretary of the Interior, provide for the procedure to be followed in the examination of applications for patent. In Rules 65 and 66 it is provided that whenever upon examination any claim for any application is rejected for any reason whatever the applicant will be notified thereof, and the reasons for such rejection will be fully and precisely stated; that the applicant shall be given such information as will be useful in aiding him to judge of the propriety of prosecuting his application or of altering his specification, and that the pertinency of the references to the rejected claims, if not obvious, shall be clearly explained. Rule 68 prescribes that in amending the applicant must point out the patentable novelty he thinks the case presents and must also show how the amendments avoid such references or objections. Rule 69 provides for reconsideration of the claims without amendment and is in terms as follows: 69. In order to be entitled to the reconsideration provided for in Rules 65 and 67, the applicant must make request therefor in writing, and he must distinctly and specifically point out the supposed errors in the Examiner's action. The mere allegation that the Examiner has erred will not be received as a proper reason for such reconsideration. Section 483 of the Revised Statutes provides that— Sec. 483. The Commissioner of Patents, subject to the approval of the Secretary of the Interior, may from time to time establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. It is well settled that rules of procedure in the Patent Office when not in conflict with any provision of law have the force and effect of statutes. (Allen, Commissioner of Patents v. The United States of America, ex rel. Lowry and Planters Compress Co., C. D., 1905, 643; 116 O. G., 2253; 26 App. D. C., 8; Mell v. Midgley, post, 512; 136 O. G., 1534; 31 App. D. C., 534.) Rule 69, therefore, if not contrary to the provisions of section 4903, is valid, and the requirements of this rule should in proper cases be insisted upon. Section 4903 provides for reconsideration of an applicant's case "if the applicant persists in his claim for a patent." Rule 69 merely prescribes the procedure to be followed by the applicant if he persists in his claim. The applicant is not deprived of the statutory right to reconsideration, nor is his right to such consideration in any manner curtailed by the provisions of this rule. Its requirements are salutary and are necessary to the proper procedure in the examination of applications. As stated in the case of ex parte Linde, (C. D., 1905, 118; 115 O. G., 1329:) This rule is believed to be in strict accordance with section 4903, which provides for reëxamination of an application. This statute is not believed to have been enacted for the purpose of providing for a merely formal procedure. The reëxamination provided for by the statute is for the purpose of enabling an applicant to traverse a rejection by this Office and to show by argument that the rejection is erroneous, if such be the case. The Examiner in the first action treats the case in the light of the facts which are then before him. If no reasons are given why the original action should |