GRAHAM PAPER Co. v. NATIONAL BLANK BOOK Co.

TRADE-MARK INTERFERENCE.

Decided February 5, 1908.

133 O. G., 1187.

TRADE-MARKS—INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION REFUSED. The question of the right of an applicant for registration of a trade-mark to demand an interference with another party because of his failure for more than two years to file a notice of opposition to the registration of the mark of such party is a question for the determination of the Examiner of Interferences at final hearing after opportunity has been had for the presentation of testimony and is not a proper question for transmission to the Examiner of Trade-Marks on a motion to dissolve.

APPEAL ON MOTION.

PRINTING AND WRITING PAPER.

Messrs. Dyrenforth, Lee, Chritton & Wiles for Graham Paper Co. Mr. Nathan P. Avery and Mr. Walter D. Groesbeck for National Blank Book Co.

BILLINGS, Assistant Commissioner:

This is an appeal by the National Blank Book Company from a decision of the Examiner of Interferences refusing to transmit to the Examiner of Trade-Marks in part a motion for dissolution filed by said National Blank Book Co. The record shows that the Examiner of Interferences transmitted the motion as to the ground of noninterference in fact, but refused to transmit the same in so far as it related to the allegation of such laches on the part of the Graham Paper Co. as to establish an abandonment of his right to demand an interference because of its failure for more than two years to file a notice of opposition to the registration of the moving party. The question raised by the second ground of the motion which was refused transmission clearly relates to the right to registration to be determined by the Examiner of Interferences at the final hearing of the case after opportunity has been had for the presentation of the testimony, and it is not a matter which the Examiner of Trade-Marks has jurisdiction to decide.

The decision of the Examiner of Interferences is affirmed.

HAWKINS V. COLEMAN v. THULLEN.

PATENT INTERFERENCE.

Decided March 21, 1908.

133 O. G., 1187.

INTERFERENCE-MOTION TO DISSOLVE-FAVORABLE DECISION NON-APPEALABLE. A party to an interference has no right to a review by the Commissioner of a favorable decision by the Primary Examiner on a motion to dissolve

alleging non-patentability of the issue either on direct appeal or upon petition for the exercise of his supervisory authority. While section 4904, Revised Statutes, gives the Commissioner the right to determine when an interference exists, this authority is delegable, and when it is delegated to the Primary Examiner and he makes a favorable decision thereon such decision will be reviewed only in an extraordinary case.

ON PETITION.

BLOCK-SIGNAL SYSTEM.

Mr. Albert G. Davis for Hawkins. (Mr. Arthur A. Buck of counsel.)

Mr. Henry D. Williams for Coleman.

Mr. George E. Cruse and Messrs. Bakewell, Byrnes & Parmelee for Thullen.

MOORE, Commissioner:

Hawkins has filed an appeal from the decision of the Primary Examiner refusing to grant his motion for dissolution of the interference, also a petition that the Commissioner take jurisdiction of the interference and dissolve it under the exercise of his supervisory authority.

The reason of appeal given by Hawkins is

That there is no common patentable subject-matter between the application of Hawkins on the one hand and the applications of Coleman and Thullen on the other.

Hawkins admits that under Rule 124 there is no appeal from the decision of the Primary Examiner holding that there is common patentable subject-matter between the said applications; but he contends that he has a right to the personal opinion of the Commissioner upon the matter, under the provision of section 4904 of the Revised Statutes, which reads:

Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the Primary Examiner to proceed to determine the question of priority of invention.

A sufficient answer to this contention is found in the following excerpt from the decision of the Court of Appeals of the District of Columbia in the case of Allen v. United States, ex rel. Lowry, (C. D., 1905, 643; 116 O. G., 2253,) affirmed by the United States Supreme Court in United States, ex rel. Lowry, v. Allen, (C. D., 1906, 765; 125 O. G., 2365 :)

We cannot emphasize too strongly that, in our opinion, the statutes relating to interferences only provide that they shall be instituted for the sole purpose of determining priority of invention, and that it logically follows that appeals in such proceedings, so far as the statutes go, only provide for appeals from the decisions of priority. The Commissioner of Patents, under the authority

given to regulate the proceedings in the Patent Office, is clothed with power to regulate all interlocutory proceedings in interference cases by rules not inconsistent with law. If he deems it wise to provide, after the interference has once been declared, for remanding the interference to the Primary Examiner for the purpose of an interlocutory hearing and determination of a motion to dissolve it for any reason which he considers may be in the interest of the public or the parties, we take it that he has full power to do so, and that he may also provide that such motions may or may not in some or all respects be reviewed by the appellate tribunals of the Patent Office and in so doing he is not thereby depriving any party of any statutory right to have all questions passed upon at final hearing, and on appeals therefrom, which are necessary for a correct determination of the question of priority, which is the sole question for which interferences are declared.

The Court of Appeals of the District of Columbia also said in the recent case of United States, ex rel. The Newcomb Motor Company, v. Moore, (post, 332; 133 O. G., 1683; Washington Law Reporter, vol. 36, No. 10, p. 150:)

It is further contended that because section 4904, Revised Statutes, provides that whenever "in the opinion of the Commissioner' an interference exists, notice shall be given the parties, etc., a non-delegable duty is imposed upon the Commissioner. This question was considered in Allen v. Lowry, supra, and it was there held that the Commissioner "for any reason which he considers may be in the interest of the public or the parties" may delegate to the Primary Examiner the duty of determining primarily whether an interference in fact exists, and that "in so doing, he is not thereby depriving any party of any statutory right to have all questions passed upon a final hearing, and on appeals therefrom, which are necessary for a correct-determination of the question of priority, which is the sole question for which interferences are declared."

To adopt the view of the appellee would reverse a practice which has prevailed in the Patent Office since the statute was enacted in 1870, and would in effect render the statute nugatory since it would be a physical impossibility for the Commissioner personally to pass upon all these preliminary questions. He was given assistants for that purpose.

In view of Rule 124 and of the above decisions interpreting section 4904, Revised Statutes, it clearly follows that Hawkins is not entitled as a matter of right to the appeal prayed for.

Hawkins petitions that in case it is held an appeal will not lie that the matter be considered under the supervisory authority of the Commissioner.

Hawkins contends that there is no interference in fact, that the counts are unpatentable, and that Thullen's device is inoperative, and that he therefore cannot make the claims of the issue.

The Primary Examiner held counts 1 to 10 unpatentable to Thullen; but his decision was reversed on appeal to the Examiners-inChief, who held that the question of the operativeness of Thullen's device could be better determined at final hearing after the taking of testimony.

It is well settled that the supervisory authority of the Commissioner will be exercised only in case of manifest error. (Sobey v. Holsclaw, C. D., 1905, 523; 119 O. G., 1922; Locke v. Crebbin, C. D.,

1906, 298; 124 O. G., 317; Daggett v. Kaufmann, C. D., 1907, 121; 127 O. G., 3641; Dixon and Marsh v. Graves and Whittemore, C. D., 1907, 311; 130 O. G., 2374; Hess v. Joerissen v. Felbel, C. D., 1907, 369; 131 O. G., 1419.)

In the present case I find no such extraordinary circumstances or manifest error as will warrant the exercise of supervisory authority. The appeal is dismissed and the petition denied.

EX PARTE SAMstag.

APPLICATION FOR PATENT.

Decided March 13, 1908.

133 O. G., 1188.

1. REJECTION-EXPLANATION OF REFERENCES.

The statement by the Examiner that the first three claims were clearly met in either one of three references cited and that the last three claims were met in the same in view of either of the last two references cited Held in view of the character of the invention to be a sufficient compliance with applicant's request for a specific application of the references. 2 SAME RECONSIDERATION.

After the Examiner has properly applied the references the applicant is not entitled to further reconsideration unless he points out why the references did not meet the claims.

ON PETITION.

DOUBLE TOP FOR GAMES,

Mr. Joseph L. Levy for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition that the Examiner "be advised that the claims be separately considered and acted upon in accordance with Rules 65, 66, and 67."

It appears that in the first Office action on November 1, 1907, certain formal objections were noted and the claims were rejected on five references. On December 5, 1907, an amendment was filed making the formal corrections and requesting that the Examiner apply the references to the claims, but no attempt was made to show why the references did not meet the claims. The Examiner replied to this amendment on January 15, 1908, and applied the references as follows:

The first three claims are clearly and obviously met in either one of the first three references; the last three claims are clearly met in the same in view

of either one of the last two references, both of which show cones having heads and elastic buffers secured in a manner equivalent to applicant's, that is, by interlocking flanges and grooves—

and again rejected the claims. He also cited four more references, and with respect thereto made the following statement:

Any one of the first three of these meets claim 1. There is no invention in the washers of claims 2 and 3, but they are shown in substantially the same relation in Figure 2 of Hendrick, which with either of the others meets these claims.

The applicant responded to this letter on January 27, 1908, and again made no attempt to show why the references did not meet the claims, but insisted that the Examiner consider each claim separately, apply the references separately, and state the pertinency of the references fully.

The Examiner replied to this letter on February 4, 1908, stating that in view of the character of the invention and the references his statement that the claims were obviously met in the references was a sufficient application of them, and again rejected the claims. It is from this action that the present petition is taken.

In view of the character of the invention and the references the action of the Examiner of January 15, 1908, was a sufficient compliance with applicant's request for a specific application of the references. Thereafter it was incumbent upon the applicant to point out, as required by Rule 69, why the references did not meet the claims in order to be entitled to further reconsideration. As he made no effort to do this, the Examiner's action was clearly sufficient. The petition is denied.

Hermsdorf v. DRIGGS V. SCHNEIDER.

PATENT INTERFERENCE.

Decided March 18, 1908.

133 O. G., 1189.

INTERFERENCE-MOTION TO DISSOLVE-PARTY'S RIGHT TO QUESTION HIS OWN RIGHT TO MAKE CLAIMS.

Where an applicant adopted claims suggested under Rule 96 from another application, a motion to dissolve filed by him alleging that he has no right to make such claims is proper, and the same should be transmitted to the Primary Examiner. (Miller v. Perham, C. D., 1906, 157; 121 O. G., 2667, and Martin v. Mullin, C. D., 1907, 119; 127 O. G., 3216, modified; doctrine of Eichelberger and Hibner v. Dillon, C. D., 1907, 230; 129 O. G., 3161, extended.)