CITE:  73 F.2d 982
CMON:  December 1934
PLAIN: In re Wait
DEFND: United States Patent and Trademark Office
COURT: Court of Customs and Patent Appeals
DATE:  December 24, 1934

Appeal from Board of Patent Appeals, Serial No. 434,693.  Application
for patent by Justin Wait.  The claims of the application were rejected
by the Examiner and by the Board of Appeals of the United States Patent
Office, and applicant appeals. Decision of Board of Appeals affirmed.

  Non-novel sale of stocks and commodities business method not patentable

JUDGE: GARRETT, Associate Judge
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT,
Associate Judges.


The application here involved is entitled "Improvements in Process of

The examiner rejected all the claims as being based upon an application
containing no disclosure of an operative system, and also upon the ground
of their being "drawn to a process of doing business which cannot form the
subject matter of process claims."

The Board of Appeals, in effect, overruled the Examiner as to the first
ground of rejection, but affirmed as to the second, and added:

"It is also our opinion that none of the claims is limited to a process
which require the exercise of invention."

From the Board's decision, appeal was taken to this court.

Seventeen process claims are presented.  All of them are variations, with
relatively minor limitations, of claim 1, which reads as follows:

"1. The process which comprises posting an offered figure for a commodity
causing the figure to be visible at a remote point, contacting the 
stations of a buyer and a seller through a central point, causing such
contact to be indicated at the point of posting and consummating a sale
through such connection and removing said posted figure."

No references were cited, the rejection being solely upon the grounds
already stated.

Before this court there has been filed an elaborate and, we may add, a
quite interesting brief in which a large number of authorities are cited
and analyzed.  There was also an oral argument on the appellant's behalf,
during the course of which it was suggested that an opportunity is here
afforded this court to render a decision which might possibly clarify
questions growing out of applications for patents relating to what is
called "methods of doing business".

However inviting this field may be, the court does not deem it proper to
deviate from its usual practice of determining only the relevant questions
presented by the application actually before it, avoiding dicta in so far
as possible.

From the recitals in the specification, we conclude that appellant expects
his process to be used chiefly in connection with the business of buying
and selling stocks and other commodities usually dealt upon stock and
commodity exchanges, and that through it there may be an elimination of
brokers and like agents as well as quickly made and accurately kept
records of the transactions which take place, together with other

It also appears with reasonable clearness that appellant expects his process
to be carried out by means of an electrical system, through the medium of
which, when prices at which stocks, commodities, and the like are offered
for sale, or at which offers of purchase are made, are posted upon suitable
devices at given points, such prices will be transmitted speedily to remote
points and there posted upon suitable devices where they may be visualized
by those interested.  Also through the medium of the system, acceptances by
those wishing to buy or sell may be speedily transmitted to the proper
point, and the system is to have the requisite means for accurately
recording all necessary elements of the transactions.

That a physical system contrived to enable the carrying out of transactions
such as those described might be patentable, in the absence of anticipatory
prior art, is quite conceivable, but we have no such question before us
here.  The claims upon appeal (except certain claims which appellant sought
to have inserted that are hereinafter dealt with) are process claims, and
we find ourselves in agreement with the board's view that no claim is
limited to a process which requires the exercise of invention.

The process, when analyzed carefully, appears to comprise, in its essence,
nothing more than the advertising of, or giving publicity to, offers of
purchase or sale by one party, the acceptance thereof by another, and
the making of a record of the transaction followed by a withdrawal of
the offer.  Surely these are, and always have been, essential steps in all
dealings of this nature, and even conceding, without holding, that some
methods of doing business might present patentable novelty, we think such
novelty is lacking here.

Concerning the process claims, we feel that the correct conclusion was
reached by the Board of Appeals.

A second phase of the case relates to a matter of amendment.

The final rejection of appellant's process claims by the Examiner was on
May 13, 1931, and appellant took no steps toward its further prosecution
within the six month period prescribed by the rules of the Patent Office.
Accordingly, the application became abandoned.

On June 13, 1932, however, appellant filed a petition for a revival of the
application, accompanying same with an affidavit showing that he had been
the victim of a severe accident which had prevented activity on his part.
On that same date he filed his appeal to the Board of Appeals, and also
filed a motion to amend his application so as to include a series of
apparatus claims.

On June 27, 1932, the Examiner made answer to the petition for revival in
which answer it was stated that a verified showing to account for lack of
prosecution accompanied same, and the petition was submitted without
recommendation.  As to the proposed amendment to include the apparatus
claims, it was held:

"The amendment cannot be entered for the reason that the newly submitted
claims are directed to an apparatus while the finally rejected claims
are directed to a process.  Under the provisions of Rule 68 of the Rules
of Practice amendments touching the merits of an application if presented
after the case is in condition for appeal may be admitted only upon a
showing, duly verified, of good and sufficient reasons why they were not
earlier presented."

On August 13, 1932, the petition for revival was granted by the Commissioner
of Patents and the appeal was prosecuted in due course.

On September 26, 1932, an acting Examiner, not the Examiner who rendered
the final decision of rejection, filed the usual statement elaborating the
reasons for rejection.  This statement inter alia recited the following:

"Applicant filed with his appeal an amendment adding claims 21 to 35 directed
to the apparatus.  These claims are refused entry for the reasons stated
in the examiner's answer to the petition to revive.  These claims are also
rejectable as being based on an inoperative disclosure and the decision of
this ground as to the appealed claim will also be applicable to these

When the matter was carried before the Board of Appeals, appellant there
sought considerations of the apparatus claims.  The Board said:

"Appellant has requested consideration of additional claims and amendments
but, following the practice set forth in Ex parte Moore, 1923 C.D 13, we
must decline to consider these matters."

In view of the fact that appellant did fail to comply with the provisions
of Rule 68 by showing any reasons why the claims were not earlier
presented, it is apparent that the tribunals of the Patent Office were
entirely justified in their actions upon them.

The decision of the Board of Appeals being, in our opinion, without error
is affirmed.