and some structure, but not enough to support the function, stands on the same footing and should be rejected rather than objected to as defective in form. The fault with the claim in either case is a lack of substance and goes to the merits of the claim.

In claims of the character presented in this case the question is ordinarily whether the structure broadly indicated is set forth with sufficient particularity. It requires a consideration of the entire application and often a knowledge of the prior art, for, as stated in ex parte Knudsen, supra:

A broader construction should be given a claim if it covers a new departure in the art.

(See, also, ex parte Pacholder, C. D., 1890, 55; 51 O. G., 295; and ex parte Halfpenny, C. D., 1895, 91; 73 O. G., 1135.) Clearly the fault of such claims is not a mere matter of form that should be finally disposed of by petition. On the contrary, the matter is believed to be one relating to the merits, concerning which the applicant is entitled to an appeal from an adverse decision successively to the Examiners-in-Chief, the Commissioner of Patents, and the Court of Appeals of the District of Columbia. On account of the appeals provided by the statutes from a rejection of the claims it is unquestionably in the interest of the applicant to treat the matter as one of merits rather than form. While it may be urged that if he is obliged to seek his remedy by appeal and the action of the Examiner is affirmed the applicant is precluded from going back to the Examiner and further amending his claims, the obvious answer is that before appealing the claims and before they are finally rejected the applicant should introduce other claims having the structure stated with sufficient particularity to avoid this ground of the Examiner's rejection.

This case is but one of several now before me involving the question of the proper treatment of claims of this character. The criticism that a claim is indefinite or functional, as these terms have been used in the Office, may relate to the merits or the form of the claim, or to both. It is often a difficult matter to determine what action they should receive, with the result that there is a lack of uniformity in the various divisions of the Office, and it is the purpose in this decision to make a ruling that will result in a more uniform practice. Some Examiners reject claims of this character, while other Examiners object to them and notify applicants that their remedy is by petition to the Commissioner, and the matter is apt to be considered and passed upon by either one of the higher tribunals without. determining the question of jurisdiction. The published decisions show that the practice under different Commissioners has not been uniform and render it difficult for the Examiner to determine the course to pursue in a particular case. This difficulty is increased

by the fact that matters which have been held in previous decisions to relate to the merits are frequently considered and disposed of on petition in order to expedite the prosecution of the case, especially where the matter constitutes but one point of the petition, without considering whether the matter is one of merits or of form and probably without intending to overrule the practice established by previous decisions.

In ex parte Knudsen (C. D., 1895, 29; 72 O. G., 589) an attempt was made to settle the character of the Examiner's action. In the decision in that case functional claims were divided into four classes, and it was directed that in all of these classes, excepting class four and certain special cases under class three, the character of the Examiner's action should be a rejection. As to claims of the third class, which include those of the character recited in this petition, the following statement is made in that decision:

Claims of the third class, that are indefinite in that they define the construction sought to be covered by the use of such terms as "means," "mechanism," and "devices," for effecting certain results, as set forth in ex parte Pacholder, (C. D., 1890, 55; 51 O. G., 295,) or that recite the functions of certain named elements of a combination or of the device as a whole, to the exclusion of proper structural definition, are the claims which cause the most trouble, as frequently it is a matter of great difficulty to decide whether such claims are subject to objection or to rejection or to both. The difficulty, too, is often increased by the fact that a broader construction ought to be given the claim, if it covers a new departure in the art, (Morley Sewing Machine Co. et al. v. Lancaster, C. D., 1889, 380; 47 O. G., 267,) than if it is for an invention in an already developed art.

The use of the above-noted phraseology does not of necessity render a claim objectionable, for where the idea is clearly stated and the combination or relation of parts to produce a desired end is plainly expressed the breadth of the statement of the claim is no reason for objecting to it. It is only necessary that these expressions shall clearly distinguish what is new from what is old in the art or from fair equivalents thereof. If they do this, the question is then one of patentable novelty-that is to say, claims of this order are not objectionable in form on the ground that they are too broad, but only because they are vague or indefinite. (Ex parte Halfpenny, C. D., 1895, 91; 73 O. G., 1135.) The decision in ex parte Halfpenny (C. D., 1895, 91; 73 O. G., 1135) states:

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The objection of "indefiniteness" or vagueness commonly urged against claims, when such objection is based on the fact that the claims include as elements means" or "mechanism," limited only by the function which such means or mechanism performs, is inaccurate. Those terms do not, under such circumstances, render the claims indefinite or vague. It would be more accurate to say of those terms, when only limited in the manner above stated, that they render the claims too broad-an objection which goes to the merits of the claims and which calls for a rejection. (Ex parte Opdyke, C. D., 1890, 39; 50 O. G., 1293.)

The subsequent decision in the case of ex parte McMullen, (C. D., 1898, 119; 84 O. G., 507,) without stating whether it was the inten

tion to overrule the above decisions, contains a dictum to the effect that functional claims are open to objection, from which petition lies to the Commissioner. The recent decision in ex parte Plumb (C. D., 1907, 367; 131 O. G., 1165) merely followed the practice of ex parte McMullen. In the case of ex parte Bullock, (C. D., 1907, 93; 127 O. G., 1580,) where the only structure for accomplishing the function cited in the claim was expressed by the term means " and the claim was held to be "indefinite and functional," the matter was passed upon by the Commissioner on petition without expressly stating whether it was a matter of merits or of form.

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In the case of Gardner, decided by the Court of Appeals of the District of Columbia (post, 306; 140 O. G., 258,) certain claims similar in character to those of ex parte Bullock, supra, were rejected by the Primary Examiner on the ground that they were claims for functions or results. This rejection was affirmed on appeal by the Examiners-in-Chief, the Commissioner, and the Court of Appeals. Although no references were cited against any of the appealed claims, the court did not intimate that the matter was one concerning the form of the claims nor hesitate to entertain the appeal and pass upon the merits of the claims. The same court in re Blackmore, post, 325; 140 O. G., 1209, also passed upon claims that had been rejected on the ground that

they were not warranted by the description in the application, and are too indefinite.

In view of the fact that said appeals were entertained by the court and in view of the further fact that the practice in the various divisions of this Office is not uniform and the decisions of different Commissioners have not always been harmonious, and since it would obviously be to the advantage both of applicants and of the Office to have these vexatious questions settled and subject to the doctrine of stare decisis, it is held as follows:

First, that in all cases where the Examiner holds a claim otherwise clear and intelligible to be functional-that is, for a function merely or because it fails to include sufficient mechanical elements to effect the function expressed in the claim-the action of the Examiner shall be a rejection of the claim upon the ground that the claim does not point out the invention with sufficient particularity and distinctness to meet the requirements of section 4888, Revised Statutes, which provides:

Before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly

connected, to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.

The rejection shall at the same time include all of the grounds enumerated in Rule 133 that the Examiner thinks applicable. Applicant's remedy from such action is by way of appeal successively to the Examiners-in-Chief, the Commissioner, and the Court of Appeals of the District of Columbia.

Second, that only where claims are indefinite, in the sense that they are ambiguous, equivocal, lacking in clearness, or unintelligible, shall the Examiner's action be in the form of an objection. The remedy from this action is by petition to the Commissioner in person.

The Examiner also objected to the claims on the ground that it is not clear what is meant by the phrase "the active length of the lever" in claim 1 and the corresponding expressions in the other claims. The definition of this expression in the specification, however, is believed to make the meaning clear. The Examiner's criticism that the language in lines 3 and 4 of claim 5 is not clear is well taken. The statement in line 3 that the connection is pivoted to the lever appears inconsistent with the statement in the following line that there are engaging devices between the connection and the lever. The wording in lines 5 to 7 of claim 6, also criticised, appears to be perfectly clear. The suggestion of the Examiner that "being constructed" in line 6, claim 2, be changed to "extend forward" and that "upon" be substituted for "against" in line 3 of claim 3 goes to the breadth of the claim, and therefore relates to the merits.

Concerning applicant's statement that his claims are similar in form to claims allowed in another case by the Examiners-in-Chief and his complaint that the Examiner refused to be guided by said decision, it is sufficient to call attention to the decision of the Commissioner in the case of ex parte Konold, (C. D., 1908, 107; 133 O. G., 2189,) which states:

It is self-evident that the Examiner should follow the decisions of the higher tribunals whether he agrees with those decisions or not. It would not be proper, however, for the Commissioner to instruct the Examiner that the claims of a particular application should be allowed in view of a prior decision. For the reasons stated the petition, except as otherwise indicated above, is dismissed.

EX PARTE R. M. ROSE COMPANY.

Decided December 30, 1908.

140 O. G., 507.

TRADE-MARKS" ASK THE REVENUE. OFFICER FOR WHISKY-DECEPTIVE.

The words "Ask the Revenue Officer" as a trade-mark for whisky Held to be deceptive, and therefore not registerable, since the registration of this mark would tend to indicate that the Government had guaranteed the quality of the goods upon which the mark was placed.

ON APPEAL.

TRADE-MARK FOR WHISKY.

Messrs. Mason, Fenwick & Lawrence for the applicant. MOORE, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing to register as a trade-mark for whisky the words "Ask the Revenue Officer."

The refusal to register the mark was based on the ground that the public, seeing it upon the goods, would be led to believe that the Government approved of the quality of the goods upon which the mark is used through some officer of the Internal Revenue Office.

This holding is believed to be right. For reasons similar to those stated in the decisions ex parte Alart and McGuire (C. D., 1907, 409; 131 O. G., 2145) and ex parte The United States Sanitary Manufacturing Company, (C. D., 1908, 230; 137 O. G., 227,) the registration was properly refused. The only meaning to be attached to the phrase which constitutes the mark would be that the revenue officer, if asked about the goods, would state that they were up to the standard required by the Government. Should the mark be registered and the words "Registered in the U. S. Patent Office" or their equivalent be placed on the label bearing the mark, as required by section 28 of the act of February 20, 1905, it would clearly tend to indicate that the Government guaranteed that the goods were up to this standard. As the Government makes no such guarantee, the mark is deceptive in its nature, and therefore not registrable.

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

MATTICE V. LANGWORTHY.

Decided February 11, 1909.

140 O. G., 507.

1. INTERFERENCE-EVIDENCE-SUPPRESSION-TESTIMONY TAKEN OUT OF TIME

AND NO OPPORTUNITY ALLOWED FOR CROSS-EXAMINATION.

Where a party to an interference begins the taking of his testimony just two days prior to the expiration of the time set and occupies all of such time in the direct examination and offers the opposing party no