In re Duncan

District of Columbia Court of Appeals
In re Duncan, 28 App. D.C. 457 (D.C. 1906)
1906 U.S. App. LEXIS 5266
Siiepard

In re Duncan

Opinion of the Court

Mr. Chief Justice SiiepaRd

delivered the opinion of the Court:

The settled limitation upon the amendment of applications in respect of claims is that there must be a basis for them in the *460description and specifications of the application as originally filed. Re Dilg, 25 App. D. C. 9, 19. The burden is upon the* appellants, therefore, to show that this claim 36, which is the only one now in issue, was within the description aforesaid. There was a difference between the decision of the Examiners-in-Chief and the Commissioner as regards the latch mechanism in the mold-board section. He sustained their decision denying the claim, however, maldng the following statement:

“I am not convinced, however, that the latch may be considered as being ‘mounted upon one mold-blade section,’ as stated in this claim. The latch or cross-pin is described by applicants as — ‘* * * movable in its bearings and caused to act upon the upper section 10, to advance and retract it as-desired. In the present embodiment the cross-pin 12 is longitudinally movable and is formed in cross-section with a straight-section 13 riding in a slot 14 in the lower mold-blade section 11.’
“It seems clear from the applicants’ disclosure that the bearings for the latch are formed in the arms of the slide 2, and the straight section 13 of the latch merely rides in the slot in the' mold blade. Manifestly, the latch is ‘mounted upon’ the slide,, and not on the mold blade, as required by this claim.”

The ambiguity in the description in the application as applied to this particular mechanism is apparently due to the'fact that this claim was not in mind when the application was prepared, and has been suggested by the claim of a conflicting application. Without going into the question at length, we think it sufficient to say that we are satisfied with the statement which has been quoted above from the Commissioner’s decision. The expression “mounted upon” seems to have an ordinary meaning in machine construction. The thing mounted upon another must be borne or supported by it. Mere riding in or over another in a slot for the purpose, although operating in connection therewith, is not equivalent to being mounted thereon.

• Finding no error in the decision rejecting claim 36, it will *461be affirmed. ■' It is ordered that the clerk certify this decision to the Commissioner of Patents, as required by law.

Affirmed.

Reference

Full Case Name
IN RE DUNCAN
Cited By
1 case
Status
Published
Syllabus
Patents; Amendments; Burden of Proof; Claims. 1. The settled limitation upon the amendment of applications in respect of claims is that there must be a basis for them in the description and specifications of the application as originally filed (following Re Dilg, 26 App. D. C. 9) ; and on an appeal from a decision of the Commissioner rejecting a claim which has been added by amendment, the burden is on the applicant to show that the claim is within the description of his original application. 2. In machine construction, the expression “mounted on” seems to have an ordinary meaning. The thing mounted upon another must be borne or supported by it. Mere riding in or over another in a slot. for the purpose, although operating in connection therewith, is not equivalent to being mounted thereon.