#### UNITED STATES EX REL. LANG *v.*MOORE.

Mandamus; Patents; Amendment.

1. Mandamus on the relation of an applicant for patent who had three times unsuccessfully attempted to amend his claims, against the Commissioner of Patents, to compel the latter to re-examine the application after a final rejection, on the ground that the last claim *494rejected differed in substance from the last preceding one so as to* constitute a new claim upon which the applicant was entitled to a. re-examination after rejection,—will not lie where the claims in question are so nearly alike in their phraseology as to call for the-exercise of judicial discretion on the part of the Commissioner in acting upon them. (Citing See. 4903, U. S. Rev. Stat., U. S. Comp. Stat. 1901, p. 3389.)

2. After two amendments of his claims rejected on certain references, an. applicant for a patent amended the third time, and his claim as so amended was rejected on some of the references previously cited, two ■ of which, although stated on the first rejection, were not stated on the second rejection; and the last rejection was made final. In a mandamus proceeding by the applicant to compel the Commissioner tore-examine his application, it was *held*that whether, under rule 68 of the Patent Office, giving an applicant the right to amend as often as the Examiner presents new references or reasons for theirrejeetion, the applicant had a further right to amend, was a-question-of practice exclusively within the jurisdiction of the Commissioner to • determine.

3. A writ of mandamus cannot be made to take the place of an appeal.

No. 2329.

Submitted October 12, 1911.

Decided November 6, 1911.

Hearing on an appeal by the relator from a judgment of the-Supreme Court of the District of Columbia dismissing a petition for the writ of mandamus to compel the Commissioner • of Patents to order a re-examination of his application for a-patent.

*Affirmed.*

The Court in the opinion stated the facts as follows:

This is an appeal from a judgment of the supreme court of' the District of Columbia denying appellant’s petition for a writ. of mandamus directing the Commissioner of Patents to order a. re-examination of his application for patent.

It appears from the record that appellant filed an application in the Patent Office on November 23, 1908, setting forth his-invention in nine claims. These claims were all rejected by the-primary Examiner, on the ground that they defined nothing' patentable over certain references, among which were patents to ■ Berry, Dickinson, and Tates. On February 15, 1909, ap*495pellant filed an amendment striking out the original claims and. inserting three others in lieu thereof. Claims 1 and 2 were-rejected on reference to patents to Hood or to Tates, and claim 3 on patents to Berry or to Van Stone. Appellant then, on. April 3, 1909, amended his application by presenting his invention in one new claim, which was rejected for the following reasons: “The claim fails to define anything patentable-over the patent to Hood, of record, and is therefore rejected. This patent to Hood disclosed a structure similar to applicant’s, device and having the same action, with the addition of a seperate radiator, but it would require no invention to dispense with this second radiator, that is, it does not require invention to dispense with certain elements of a device when there is no. new action obtained thereby.” On July 13, 1909, another claim was inserted in place of that presented in the previous amendment, which also was rejected, the examiner stating: “The-claim is rejected on the patents to Hood, Dickinson, and Tates, of record. It is held it would not require invention to form the radiator in Hood device entirely separate-from the combustion chamber in view of Tates and Dickinson. Nor would it require invention to place the fuel opening to the-combustion chamber in the Tates device in line with the passage L leading from the combustion chamber to the radiator in view of Hood.” This rejection was made final. Appellant thereafter attempted to present another amendment, which the-primary Examiner refused to enter upon the ground that the case stood finally rejected. Upon petition to the Commissioner, of patents this decision was affirmed. The present action was. then instituted.

*Mr. W. H. Grichton-Olarhe*for the appellant.

*Mr. R. F. Whitehead*for the Commissioner of Patents.

Mr. Justice Van Obsdel

delivered the opinion of the Court :•

It is contended by counsel for appellant that the claim pre*496sented in the amendment of July 13, 1909, substantially •differed from that of April 3d amendment, and that therefore the Commissioner failed to perform a mere ministerial duty in not ordering a re-examination of appellant’s application. Sec. 4903, U. S. Rev. Stat., U. S. Comp. Stat. 1901, p. 3389, provides as follows: Whenever, on examination, any claim for .a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of .altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a reexamination of the case.”

Whether or not the claim last rejected differed in substance 'from the one acted upon immediately previous, so as to constitute a new claim upon which the appellant was entitled to a reexamination after rejection, was a question manifestly for the determination of the Patent Office, unless there be such a •dissimilarity as would show on its face an abuse of discretion. That, however, is not the case here. The claims under consideration are so-nearly alike in their phraseology as to call for the exercise of the judicial discretion intrusted to the Commissioner. It is highly proper that a question of this nature -should be left to the judgment of those whose training has rendered them peculiarly fitted for its decision. Hence, it is -not within the province of this court to- interfere by writ of mandamus.

But it is contended by appellant that his application was finally rejected, not upon the ground that the claim of July 13th did not substantially differ from that of April 3d, but because it presented no patentable distinction over certain references, two of which had not been cited against the earlier claim. Sec. 68 of the rules of practice provides: “The applicant has a •right to amend before or after the first rejection or action; and he may amend as often as the Examiner presents new references .or reasons for rejection. In so amending, the applicant must *497clearly point ont all the patentable novelty which he thinks the case presents, in view of the state of the art disclosed by the references cited or the objections made. He must also show how the amendments avoid such references or objections.”

It will therefore be seen that appellant was only entitled to amend his application as long as the Examiner presented “new references or reasons for rejection.” Appellant amended his application three times. Each time the rejection was on the general ground that the claims failed to disclose a patentable invention over certain references. Against the claims contained in the amendments of April 3d and July 13th were cited only such patents as had been used as references in previous rejections. The question whether or not the difference in the phraseology of the rejections, coupled with the fact that two more references were cited against the claim of July 13th than against that of April 3d, although all had previously been made of record, constituted “new references or reasons for rejections,” within the meaning of the rules, was purely a question relating to practice, exclusively within the jurisdiction of the Commissioner. With his ruling thereon, this court has no power to interfere in a proceeding like the present. A writ of mandamus cannot take the place of an appeal.

The judgment of the court below is affirmed, with costs, and it is so ordered. *Affirmed.*