IN THE MATTER OF AN APPLICATION FOR A PATENT BY ARTHUR EICHENGRUN

435- Vol. XLIX.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [No. 11. In the Matter of an Application for a Patent by Philip Heber Hull and Others. might have lost nine months' priority, by reason of the postdating of the Application under Section 6 (Bb) to the date of filing of their Oomplete Specification. The Applicants could not foresee the circumstances in which an amendment of their Oomplete Specification purely by way of disclaimer might be called for, b which amendment would introduce disconformity as between the two documents. It would, I think, be an unwarrantably harsh procedure which forbade such an amendment at the opposition stage, although a Patent granted upon the' amended specification might, so far as any information in the Comptroller's possession was concerned, be a perfectly valid grant. 10 I recognize that this ruling cannot be reconciled with the judgment of the Law Officer in the case of Lancaster's Ap-plication. «1903)' 20 R.P.O. 366) to which Mr. Whitehead directed my attention, but in my view the introduction of Section 42 into the Acts necessitates a reconsideration of the early ruling on this point. 15 Before THE ASSISTANT-OOlMPT'ROLLER February 3rd, 1931. IN THE MATTER OF AN ApPLICATION FOR A PATENT BY ARTHUR EICHENGRUN. Opposition to the gra,nt of a Patent on grounds (b) (bb) and (c) of Section 11 (1) of the Patents and Designs .Ac!ts, 1'907 to 1928.-Applicant filed a very brief 20 Counter-Statement and then left the matter to Comptroller's decision.-Applicant was not represented at the Hearing.-Held, that in such circumetances an inference may w.ell be draum that the ,Applicant sees no effective answer to the case made against his application.-Grant of Patent. refused, On the 8th of February, 1928, Arth-ur Eichenorun. applied -for a Patent No. 25 317,408 for an invention entitled" Improvements in the production of filaments, "threads, hands, ribbons and the like from cellulose derivatives". The grant of a Patent was opposed by British. Celanese Limited on the grounds of prior publication, prior claiming, and insufficiency of description. At the Hearing; the Applicant was not represented: Mr. N eep appeared as 30 Oounsel for the Opponents. . The decision of the .Assistant-Colnptroller (Mr. H. C. Haycraft) is given below only in so far as is material for this report. The Assistant-Comptrol'ler.-In this case, the Applicant's Agents stated in a letter dated the 23rd of January, 1930, that the matter would he left in the 35 hands of the Com.ptroller to decide "on the basis of the documents filed in, these " proceedings". The Notice of Opposition was lodged on the 28th of October, 19'29, and was accompanied by a' statement filed under Rule 42, setting forth in some detail the 2 S 436 No. u.} REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES. [Vol. XLIX. In the Matter of an Application for a Patent by Arthur Eichengrun. nature of the Opponents' case and specifying the relief sought, namely refusal of the grant. Particulars were given of passages in the prior documents on which special reliance would be placed. , The Applicant filed on the 13th of February, 1930, aOounter-Statement under Rule 43. This statement denied prior publication, and also denied insufficiency 5 of description; an amendment of the Specification at lines 25-28 on page () was offered. This amendment is concerned with a very minor point in the case, namely the fact that ethylene chloride and ethylene acetate both have boiling points such that the examples of solvent mixtures containing them are examples that do not fall within the Applicant's claims. I do not regard the twenty-line '10 Counter-Statement as " fully setting out the grounds upon which the opposition H is contested", as is required by Rule 43. It is, however, not unusual for an Applicant to file a very brief CounterStatement, and to bring the real issues in the case into view by way of statutory declarations in which the relevance of the alleged prior publications or 15 prior grants is commented upon from the expert's or technician's point of view, and I should not attach much weight to the extreme brevity of the OounterStatement if the nature of the Applicant's defence, if I may so describe tit, were set forth clearly in subsequent Declarations. The next document filed in the case was a Statutory Declaration of some seven 20 pages in length, made by S1idney James Allen and filed under Rule 44 on behalf of the Opponents. To this Decla.ration, which is partly of an argumentative character as regards the relevance of the prior documents, but also contains statements of fact as to common knowledge in the industry, no reply was made by the Applicant. His twenty lines of Counter-Statement constitute all the 25 assistance that he has given to me in deciding this case. i In the Com-ptroller's Ruling 1927 (A) published in the Appendix to Volurne 44 of the Reports of Patent Oases, it was laid down th at, even where no Counter'Statement is lodged by the Appldcant, the Opponent will not necessarily obtain l the relief which he seeks, but the case should be decided upon its merits. I need 30 ! hardly say that this Ruling was not ,intended to encourage an Applicant to absent himself from the Com-ptroller'« Court, and to rely upon the hope that the arguments which he or his Oounsel might have presented there would be evolved by the Tribunal itself and he given full effect as against the arguments submitted on the other side, In this particular case, the true construction of 35 the Applicant's Oomplete Specification came most definitely into issue, and the absence of any argument or explanation on behalf of the Applicant was to the last degree inconvenient. I should like it to be clearly understood that, where an Opponents case lis presented so clea.rly and fully as it has been in the present instance i nvthe Statement under Rule 42 and in Mr. Allen's Declaration, an 40 [Applicant who makes no reply, and is not represented at the Hearing, must ; not 'be surpr.ised if the inference is drawn that he sees' no effective answer to the case made against his application, and that 'he thinks that its defence is not -worth powder and shot . _ (The contents of the Applicant's Specificabion and the prior documents were 45 then considered). It seems to me that the cumulative effect of the prior publications, together 'with the general obscurity and indefiniteness of the Applicant's Specification, 'renders it most undesirable for me to seal a Patent on the Application. I 'Should find it impossible to answer the question: For what novel manner of 50 manufacture is this Patent granted 1 I decide accordingly to refuse to grant a Patent to the Applicant.  (...truncated)