On petition for rehearing
January 27, 1948
Garrett, Presiding Judge:Following our decision in this case, rendered November 29,1947, appellants filed a petition for rehearing which has been considered. The reasoning and argument accompanying the petition for rehearing are substantially the same as those presented originally, but, in view of the fact that our decision seems to be of interest and of probable importance upon a question of procedure, some further observations on our part are deemed appropriate.
Appellants reiterate the contention originally made to the effect that it was incumbent upon appellees to make response to the examiner’s action on December 14,1943, rejecting all the claims then in appellees’ application. It will be observed that we held it was necessary if they desired to further prosecute the application. The persistent argument by counsel for appellants on this point, might justify the conclusion that counsel thought appellees were charged by the statute with the duty of responding whether or not they desired to prosecute the cáse further. Such is not our view. All that the statute says is that where there is a failure to respond within six months, or less if a shorter time is fixed by the commissioner, the application “shall be regarded as abandoned,” unless the commissioner finds that the delay was unavoidable.
*818The gravamen of appellants’ position, it seems to us, is actually to be found in the contention that the suggestion to appellees of the claim, which became the count in issue, by the examiner, on April 22, 1944, did not constitute an office action within the meaning of the word “action” as used in Sec. 4894 R. S. (35 U. S. C. § 37) as amended, the pertinent part of which is quoted in our original decision of November 29,1947. Counsel for appellants made that contention originally and reiterate it quite emphatically in the petition for rehearing, citing Ex parte Hess, 1907 C. D. 58, 126 O. G. 3041, and Ex parte Larner, 1929 C. D. 18, 381 O. G. 743.
In the statement accompanying the petition for rehearing we find the following:
The Coulson v. Collender et al. and Kohn et al. cases hold a letter suggesting claims is an action. The Hess and Lamer cases hold that a letter suggesting claims is not an action.
The immediately foregoing assertion is largely responsible for our action in writing this statement supplementing our original decision.
Appellants obviously have misunderstood those decisions. Neither the Hess case, supra, nor the Larner case, supra, holds that a letter of an examiner suggesting claims for interference purposes (the occasion of the suggestion in both those cases and in the instant case) is not an action.
On the contrary, it is clear that in both instances the commissioner held the suggestions to be actions. In the Hess case, supra, the applicant failed because he did not make timely response to what was an action. In the Larner case, supra, while the applicant did not make timely response, it appeared that his failure to do so was occasioned by an omission of final action by the examiner which led the commissioner to hold that the delay was unavoidable within the sense of the statutory language of Sec. 4894 R. S., “unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable.”
Appellees here had until approximately June 14, 1944, to make response to the examiner’s rejection of December 14, 1943, no shorter time having been fixed by the commissioner. The claim which became the count here involved was suggested to them by the examiner, in conformity with his official duty, April 22, 1944, and copied by them May 24,1944. Their application was alive and pending on. the latter date and their failure to make any response to the rejection of December 14,1943, had no effect with respect to the interference count.
The petition for rehearing is denied.