
    JOHN C. WALKER v. CONWAY P. COE, Commissioner of Patents
    Equity No. 54858
    May 25, 1934
    Edmund G. Borden and J. Austin Stone for plaintiff.
    T. A. Hostetler for defendant.
   MEMORANDUM

ADKINS, J.

Plaintiff’s application involves six claims.

1. Three of these claims, 6, 7 and 12, were rejected on the ground that the invention was disclosed in the Barnickel Patent, No. 1,467,831 and the Rogers Patent No. 1,299,385. I am unable to distinguish these claims from the disclosures in the patents cited and other citations. Therefore I think the decision must be affirmed as to these claims.

2. The remaining claims, 9, 1.0 and 11, were rejected on the ground that the applicant was estopped as to them because he did not make them when his application was in interference with patents to De Groote, No. 1,596,589, and to Keiser, No. 1,659,998.

Defendant relies upon Patent Office Rule No. 109 and In Re Henderson, 284 O. G. 182, 50 App. D. C. 191.

It seems to me the facts of this case distinguish it from the Henderson case. Here the disclosure of plaintiff’s application was such as to put De Groote and Keiser upon notice that plaintiff might at any time decide to make the claims which are now involved; therefore it 'was incumbent on them to elect, while they yet had the right to reissue, whether they would present any other claims for allowance. The question would seem to be whether plaintiff’s claims may be made upon his disclosures; if so, he would seem to have the right to present them. See Ex parte Cloyes, 328 O. G. 3; 1924 C. D. 64.

Therefore the petition should be granted as to claims 9, 10 and 11.  