DECISION OF THE COMMISSIONER
IN THE MATTER OF a request for a review by
the Commissioner of Patents of the Examiner's
Final Action under Section 46 of the Patent
Rules (Prior to the Amendment by Order-in-
Council P.C. 1970 - 728 effective June 1, 1970).
AND
IN THE MATTER OF a patent application serial number
030,373 filed September 19, 1968 for an invention
entitled:
SPORT SHOE
Patent Agent for Applicant:
Messrs. Marks & Clerk
Ottawa, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiner's Final Action rejecting
application 030,373. The request was made in accordance with
Section 46 of the Patent Rules (prior to amendment by Order-
In-Council P.C. 1970-728).
The Patent Appeal Board conducted a Hearing on December
3, 1970. Mr. George Seaby of Marks & Clerk represented the
Applicant.
Subsequent to the Hearing the Patent Appeal Board made
a study of the prosecution of the application and the following
observations are noted:
(a) The examiner rejected the application for the
first time in the Final Action report. In previous
reports only the claims were rejected.
(b) The United States patents cited in the Final
Action were not previously cited by the Canadian
Patent Office.
(c) The amendment which was accepted and entered as a
result of the Final Action was not officially
considered by the examiner in that no report was
made to the applicant on the merits of the
amendment, and which action the application was
entitled to receive under the old Final Refection
procedure which applied to this application.
The agent did not object to these points at the Hearing,
however in all fairness to the applicant, I find they should
not be overlooked.
In the circumstance, therefore, I recommend that the
application should be returned to the examiner for a second
action under Section 46 of the Patent Rules.
R.E. Thomas,
Chairman,
Patent Appeal Board.
I concur with the findings of the Patent Appeal Board
and I am therefore returning the application to the examiner
for resumption of prosecution.
Decision accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa,
Ontario, this 15th
day of December, 1970.