mark under the act of 1881 or under the provisions of the present act, which has already been in force for three years, the burden should not be placed upon another applicant for registration of the same mark or one resembling the same to present evidence to overcome a mark registered under the invalid act of 1870 as a prerequisite to registration of his mark.

As above stated, registrants under the act of 1870 are, by the publication of the mark sought to be registered, given notice of the applicant's claim, and ample remedies are provided for contesting the right of ownership of such mark. In view of these facts I am of the opinion that registrations under the invalid act of 1870 should no longer be held a bar to the registration of a trade-mark presented under the provisions of the act of 1905. The decisions in ex parte Star Distillery Company and in Schneider v. The Union Distilling Co., supra, are overruled to the extent indicated.

The decision of the Examiner of Trade-Marks is reversed.

EX PARTE KRUSE.

APPLICATION FOR PATENT.

Decided February 7, 1908.

133 O. G., 229.

AMENDMENT TO APPLICATION-RIGHT to Withdraw.

Where an applicant filed an amendment directing the cancelation of the finally-rejected claims of his application and requesting that the case be passed to issue, but on the same day filed an appeal from the Examiner's final rejection, in which appeal papers he asked that the amendment be withdrawn, although the request for the withdrawal of the amendment was informal, in that it was embodied in the appeal papers instead of in a separate paper, the Examiner should not have entered the amendment and passed the case to issue without giving the applicant an opportunity to elect the course he desired to pursue.

ON PETITION.

METALLIC BARREL

Mr. Obed C. Billman for the applicant.

MOORE, Commissioner:

This is a petition that this case be withdrawn from issue and that the claims canceled by the amendment of January 8, 1908, be reinserted and that the appeal filed January 8, 1908, be forwarded.

On January 9, 1907, claims 1 to 9 were finally rejected. On January 8, 1908, applicant filed an amendment, dated January 6, 1908, directing that these claims be canceled and requesting that the case

be passed to issue at an early date. On the same day there was filed an appeal to the Examiners-in-Chief as to these claims, also dated January 6, 1908, and in this appeal paper the following statement was made: "The amendment this day mailed is hereby withdrawn."

The appeal and the amendment reached the examining division on January 10, 1908; but when the Examiner took the case up for action on January 16, 1908, the amendment had been entered, and he refused to forward the appeal on the ground that the rejected claims had been canceled and that if the statement above quoted from the appeal was intended as a direction to reinsert the claims canceled by the amendment of January 8, 1908, it was too indefinite to warrant the reinsertion of the rejected claims. He thereupon passed the case to issue.

The error in this action arose from overlooking the fact that the amendment directing the cancelation of the claims should not have been entered, having been withdrawn by the appeal paper. Undoubtedly if the withdrawal of the amendment had been embodied in a paper separate from the appeal paper and had reached the examining division on the same day as the amendment the Examiner would not have entered the latter.

Although the withdrawal was in the appeal paper, the Examiner should not have passed the case to issue without first notifying the applicant of the informality and giving him an opportunity to elect the course he desired to pursue. It is not the policy of the Office to take advantage of technical points of procedure to the detriment of applicants who are prosecuting their cases in good faith. If applicant will file an amendment reinserting the claims the cancelation of which was directed by the amendment of January 8, 1908, the appeal will be forwarded.

The petition is granted to the extent indicated.

Permission to file a preliminary statement will not be granted when filed nearly four months after the expiration of the period allowed for such action and after the granting of two extensions of time for the taking of testimony where it appears that applicant's counsel notified the assignee

of an undivided half interest of the interference and asked him to secure from the applicant the information necessary to make a preliminary statement and that said counsel addressed a letter to applicant advising him about the preliminary statement, which presumably was delivered, as it was not returned. Whether applicant had actual notice or not, the failure to obtain the necessary data by counsel or by the assignee was negligence with which applicant is chargeable.

APPEAL ON MOTION.

CARRIER.

Mr. Charles S. Cairns and Messrs. Mason, Fenwick & Lawrence for Anderson.

Messrs. Paul & Paul for Peck.

BILLINGS, Assistant Commissioner:

This is an appeal from the decision of the Examiner of Interferences denying a motion by Peck for leave to file a preliminary statement.

The record shows that the time to file preliminary statements was originally set to expire August 26, 1907. Within that time a statement was filed by Anderson, but no statement was filed by Peck. Times for the taking of testimony were set on August 30, 1907, and two extensions of time have since been granted by the Examiner of Interferences. On December 24, 1907, Peck filed his motion for leave to file a preliminary statement in the case.

The showing in support of this motion consists in the affidavits of Peck, his assignee, Hewson, and his counsel, Richard Paul. It appears from these affidavits that Paul notified Hewson of the pendency of the interference and requested him to obtain certain information from Peck which could be used in the preparation of a preliminary statement; that Hewson spoke to Peck concerning the same, but while talking with him was interrupted by a telephone message and failed thereafter to call Peck's attention to this matter again. Peck states in his affidavit that until he was notified by Paul that notice had been given for the taking of testimony by Anderson he had no knowledge that the interference was pending and that when notified of that proceeding he at once signified his desire to actively contest the same.

It appears from the affidavit of Cairns, counsel for Anderson, that in November, 1907, he communicated with Paul relative to this interference and that Paul stated that he had written to Peck about the preliminary statement, but that he had received no response from Peck. Peck avers that he never received a letter from Paul; but the fact is not denied that Paul addressed a letter to him regarding this matter, and it is not shown that this letter miscarried, and, as stated by the Examiner of Interferences, the record shows that Peck was well known in the place to which the letter was addressed,

and it seems likely that he either should have received the letter or that the same would have been returned to the attorneys before this time.

The record shows that on May 23, 1907, the Examiner suggested to Peck a claim taken from Anderson's application, which claim was made by amendment on May 29, 1907. It was incumbent upon counsel for Peck to have notified his principal of this suggested claim in order that he might be advised whether Peck asserted his right to the invention stated therein. Such action is now required by Rule 96, which provides that when claims are suggested a copy of the same shall be sent to the applicant as well as to the attorney of record.

After the declaration of the interference, as appears from the affidavits above referred to, Hewson, the assignee of one-half interest, was notified of the pendency of the interference and was advised by his counsel that certain data was needed for the preparation of a preliminary statement. The failure to obtain this data on the part of counsel or of the interested party, Hewson, and of Peck to furnish the data is not excused by the averments of their affidavits. No motion was made for additional time within which to file a preliminary statement. More than three months elapsed after the date for which time was set for taking testimony before the proposed preliminary statement was filed, and during this time the statement of Anderson was open to inspection of the other party, although both counsel and the applicant averred that they have not had access to the statement. During this time stipulations entered into between counsel for the respective parties for extending time for taking testimony and the fact that the interference was to be contested by Anderson was thus brought to the attention of Peck's counsel; but there is no indication that Peck or his counsel intended to contest the interference at that time.

It is well settled that the applicant is chargeable with such acts of negligence on the part of counsel. (Jones v. Linn, C. D., 1904, 203; 110 O. G., 1430; Heinitsh and Moriarty v. Congdon v. Kelsea, C. D., 1903, 302; 106 O. G., 542.) Furthermore, in the present case the assignee of a half interest was notified of the pendency of the interference and advised that a statement of the inventor should be secured. The failure of Hewson, the assignee, to communicate this information to Peck or to obtain data for the statement for counsel clearly shows such negligence on the part of the parties interested as should preclude the granting of their request for relief. (Fowler v. Boyce et al., C. D., 1903, 432; 107 O. G., 543; White v. Hewitt and Nolan, C. D., 1905, 130; 115 O. G., 1846; Dutcher v. Matthew et al. C. D., 1905, 455; 118 O. G., 2538.)

In view of the circumstances above stated it must be held that the excuse for the delay in filing a preliminary statement is insufficient and that the decision of the Examiner of Interferences refusing to accept the preliminary statement at this time was right. It is accordingly affirmed.

WHEELER V. PALMROS.

PATENT INTERFERENCE.

Decided February 21, 1908.

133 O. G., 230.

1. INTERFERENCE-MOTION TO AMEND SPECIFICATION-TRANSMISSION.

A motion to amend the specification of an application involved in an interference for the purpose of curing an alleged error therein should not be transmitted.

2. SAME-MOTION TO AMEND ISSUE UNDER RULE 109-TRANSMISSION.

A motion to amend the issue of an interference under Rule 109 was properly refused transmission where it contained a proviso that the claims shall be added "without prejudice to the right to contest such claims under the provisions of Rule 122."

APPEAL ON MOTION.

PNEUMATIC TOOL.

Mr. Joseph M. Nesbit and Mr. Hubert E. Peck for Wheeler.
Messrs. Knight Brothers for Palmros.

BILLINGS, Assistant Commissioner:

This case is before me on an appeal by Wheeler from the decision of the Examiner of Interferences refusing to transmit a proposed amendment curing an alleged error in Wheeler's specification and refusing also to transmit a motion to add certain claims to the issue under Rule 109.

The record shows that on December 11, 1907, Wheeler filed the above-mentioned motion to amend and also a motion to dissolve upon the ground, among others, that there was such informality in the declaration of interference as would preclude the proper determination of the question of priority of invention. It appears from the brief that the question raised by this ground of the motion relates to the same matter as that which is proposed to be cured by the amendments submitted.

It is contended that if this amendment is transmitted the matter can be considered in toto inter partes in connection with the motion for dissolution which has been transmitted. This contention is not well founded. If there has been such irregularity in the declaration as would preclude the proper determination of the question of priority, the interference should be dissolved. The question whether 69025-H. Doc. 1349, 60-2