goldsby and Bowling to take testimony. This motion was denied by the Commissioner, and, the appeal having come on for hearing, it was held that Ingoldsby and Bowling were entitled to make a claim corresponding to count 4 of the issue, but that they were not entitled to make claims corresponding to counts 1, 2, 3, and 5, and a decision of priority was rendered in accordance with this conclusion. Both parties have filed notices of appeal to the Court of Appeals of the District of Columbia. Consideration of this case before the tribunals of the Patent Office is closed, the case being now pending before the Court of Appeals of the District of Columbia. Whether a model purporting to comprise an embodiment and disclosure of an application will receive the inspection of the court of appeals at the hearing is clearly a matter for the determination of that court. Furthermore, it may be stated that the request filed by Ingoldsby and Bowling to introduce the exhibit model as part of the record of the application is, in effect, a request to reopen the case and add testimony to the record, notwithstanding the fact that the Commissioner denied the motion of Ingoldsby and Bowling asking that the case be reopened for the purpose of taking further testimony. I do not find in the record any facts which would justify such a procedure, even if it were permissible. The petition is dismissed. EX PARTE BREMAKER AND EGGERS. Decided January 3, 1910. 150 O. G. 825. RECOMMENDATION UNDER RULE 139-ACTION OF PRIMARY EXAMINER-PRACTICE. Where the Examiners-in-Chief reversed the action of the Primary Examiner holding that three claims were unpatentable, but suggested that these claims were not patentably different and that but one of them should be allowed, Held that the Examiner properly informed applicant that only one of these claims could be allowed. ON PETITION. TABLE-SLIDE. Messrs. Edson Brothers for the applicant. MOORE, Commissioner: This is a petition that an "appeal be reopened in order that the required authority may be secured for the allowance of both of the pending claims." It appears that an appeal to the Examiners-in-Chief was taken from the final rejection of five claims by the Primary Examiner. In a decision on this appeal, dated November 1, 1909, the Examiner was affirmed as to two claims and reversed as to the remaining three, subject, however, to a recommendation that the three differed only in immaterial details and that but one of them should be allowed. An amendment was then filed by applicant canceling the two claims whose rejection had been affirmed, and also one of the other three, and stating that notwithstanding the recommendation of the Examiners-in-Chief the two remaining claims were, in applicant's opinion, different in scope and both should be allowed. The Examiner replied as follows: Following the recommendation of the Examiners-in-Chief, one claim only can be allowed. The attention of the applicant is called to Rule 142, in which it is stated: "Cases which have been decided by either the Commissioner or the Examinersin-Chief will not be reopened by the Primary Examiner without like authority," (written authority.) The applicant may elect one claim. Under this state of facts it is not wholly clear what is meant by the request that the appeal be reopened in order that the required authority may be secured for the allowance of both of the pending claims. If it is desired to reopen the case for consideration before the Examiners-in-Chief under Rule 142 in order that applicant may urge the allowability of two of the claims instead of but one, as recommended by them, the petition must be denied, for that rule requires that cases to be reopened must present matter not already adjudicated and must be supported by a sufficient showing of reasons for reopening. In the present case neither of these conditions is fulfilled. In the brief filed on behalf of applicant, however, it is stated: The question for decision by your honor is, whether you will authorize the Examiner to pass upon the patentability of two of the three claims, or will refer the case to the Board to state whether it intends to give the Examiner such authority. From this it would seem the applicant merely desires to obtain a ruling that the decision of the Examiners-in-Chief as rendered was intended to give the Primary Examiner room for the exercise of discretion as to the number of claims to allow. The language used by the Examiners-in-Chief was as follows: We therefore consider them (claims 2, 4, and 5) allowable, but they differ from each other only in immaterial details and it is suggested that but one of them be allowed for this reason. The decision of the Examiner is affirmed as to claims 1 and 3 and reversed as to the remaining claims, subject to the above recommendation. It is believed that the intent to allow but one of the three claims is perfectly clear from this. Instead of themselves selecting which of 52746-11-3 the three should be retained they left this to the Examiner and the applicant. Such action was liberal toward the applicant and should not be made the basis of an attempt to avoid the effect of the decision. (Ex parte Myers, C. D., 1905, 489; 119 O. G., 962.) Having elected to abandon his appeal as to the two claims on which the Examiner was affirmed, as evidenced by his canceling them, his only course is to accept the Examiner's action, complying strictly with the recommendation as to the other three, subject, of course, to the right of appeal set forth in Rule 139 (b). In my opinion the terms used by the Examiners-in-Chief are not ambiguous and seem to have been properly interpreted by the Examiner. He was clearly bound by the recommendation, (ex parte Shaw, C. D., 1907, 222; 129 O. G., 2857,) and his action in pursuance thereof is believed to have been correct. In any light this petition amounts to a request for the exercise of supervisory authority in an instance where there is a clear remedy by appeal, as above indicated. The petition therefore does not properly lie, and is accordingly dismissed. RIEGGER V. BEIERL. Decided December 30, 1909. 150 O. G., 826. 1. APPLICATION-OATH-VALIDITY. Where the oath forming part of the application papers is executed before the attorney in the case as notary, the oath is invalid and without legal effect. 2. SAME COMPLETION WITHIN THE YEAR-ABANDONMENT. Where an applicant failed to file a valid oath within a year from the date of the receipt of the other application papers, though twice notified, the application Held abandoned under Rules 30 and 31. 3. SAME INVALID OATH-FORWARDING TO EXAMINER. Applications in which the oath is executed before the attorney will not be forwarded to the Examiner, but notice to file a proper oath will be given applicant, and the application will not be given a date and serial number until the papers are so completed. APPEAL ON MOTION. SOAP-DISH. Mr. Harry R. Williams and Messrs. Sturtevant & Mason for Riegger. Mr. W. T. Miller for Beierl. BILLINGS, First Assistant Commissioner: This is an appeal by Riegger from the decision of the Examiner holding that there has been no such informality in the declaration of the above-entitled interference as to preclude the proper determination of the question of priority of invention. The following facts appear of record: Beierl filed an application on October 28, 1907. This application was accompanied by an oath executed before one W. T. Miller, notary public in and for Erie county, New York. On the date of the execution of the oath Beierl appointed said Miller his attorney. The application was forwarded to the Examiner for examination, with a formal notice of the fact that the notary before whom the oath was taken was also the attorney in the case. The Office in two successive actions, the first under date of February 10, 1908, and the second on June 30, 1908, required that a new oath be filed. Section 558 of the Code of Law of the District of Columbia provides in part as follows: No notary public shall be authorized to take acknowledgments, administer oaths, certify papers, or perform any official acts in connection with matters in which he is employed as counsel, attorney, or agent or in which he may be in any way interested before any of the departments aforesaid. The Attorney-General of the United States in a decision dated April 18, 1907, published in C. D., 1907, 437; 127 O. G., 3642, said that the law not only deals with notaries of the District, but also with the practice and management of the Executive Departments; and with the relations of notaries to that practice. and held that the proviso applies to all notaries who may practice before the Departments. The same question was presented to the Court of Appeals of the District of Columbia in the case of The Hall's Safe Company v. Herring-Hall-Marvin Safe Company, (C. D., 1908, 473; 135 O. G., 1804; 31 App. D. C., 498.) In that case the appellee filed on February 14, 1906, an application for the registration of "Hall's Standard Safe" as its trade-mark, which was passed to publication. On August 6, 1906, A. F. Herbsleb, as attorney for the appellant, forwarded a notice of opposition, which was received and filed August 8, 1906, two days before the expiration of the thirty days allowed for opposition to a published trade-mark. This opposition was sworn to by one H. H. Hall, treasurer of the Hall Safe Company, before A. F. Herbsleb, notary public in and for Hamilton county, Ohio, who certified thereto under seal. The Examiner of Interferences dismissed the opposition because the certificate thereof had been acknowledged before a notary who had been retained as counsel in its prosecution. This decision was affirmed by the Commissioner, and the decision of the Commissioner was affirmed by the Court of Appeals. The Court said: It clearly appears from the record that A. F. Herbsleb was the attorney for the appellant for the preparation and prosecution of the opposition, and that as a notary public in and for Hamilton county, Ohio, where the appellant resided, he certified to the oath made by its treasurer, Hall. We agree with the Commissioner that the proviso of section 558 is not confined in its application to notaries public of the District of Columbia. Its language is that "no notary" shall be authorized to take acknowledgments, administer oaths, certify papers, or perform any official acts in connection with matters in which he is employed as counsel, attorney, or agent, or in which he may be in any way interested before any of the departments of the United States Government. For these reasons the court held that the opposition in question was invalid and dismissed the same. The principles announced by the Court of Appeals of the District of Columbia apply to the facts in this case. Section 4892 of the Revised Statutes provides in part as follows: Such oaths may be made before any person within the United States authorized by law to administer oaths. * It follows, therefore, that as the alleged oath filed with the application of Beierl was not made before a person authorized by law to administer the oath it is invalid and has no legal effect. (Decision of Attorney-General, published C. D., 1892, 245; 60 O. G., 1481.) The application is in the same condition as though no oath were filed therewith, for Rule 30 provides in part as follows: A complete application comprises the first fee of $15, a petition, specification, and oath. Rule 31 in the last paragraph provides that— * * the application must be completed and prepared for examination within one year after the filing of the petition; and in default thereof the application will be regarded as abandoned, unless it shall be shown to the satisfaction of the Commissioner that such delay was unavoidable. Beierl was required by the Office to file a new oath, and he has paid no attention to this requirement. In view of the fact, therefore, that no valid oath was filed in this case when the petition was filed on October 28, 1907, and no oath executed in accordance with the law to complete the filing of the application has been filed since that date, the said application of Max G. Beierl is held to be abandoned. When an application is filed in this Office and the oath filed as a part thereof is executed before an officer who is also an attorney in the case, the application will not be forwarded to the Examiner, but notice will be promptly given to the applicant to file a new oath in accordance with the law, and informing him that the oath must be filed within one year from the date of the petition in order to pre |