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Full text of "Journal of the Patent Office Society"

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GEORGE WASHINGTON UNIVERSITY 
CO-EDUCATIONAL 

YEAR BEGINS SEPTEMBER 25, 1918. 



DEPARTMKNT OP ARTS AND SCIENCES 

Graduate School 
Columbian College 
College of Engineering 
Teachers College 
Both day and late afternoon courses in general and technical 
subjects. Apply to Recorder; 2023 G. Street. 

Law School. 
Member Association of American Law Schools. Instruction 
by most approved methods by professional teachers and lawyers 
in active practice. 

Late afternoon and optional early morning classes for employed 
students. 

Special courses in Patent Law. 

Apply: Secretary, Masonic Temple, Main 4540. 

Student Military Training Corps. 



STANDARD PATENT BLANKS 

Per 
Doz. 100 

601 Application for U. S. Letters Patent, with Speci- 
fication and Ooth, full sheet, legal fold 8%x28 .75 $5.50 

602 Power of Attorney, English, Half-cap, 8%xl4. . .40 2.75 
.603 License or Shop Right, half-cap, 81^x14 40 2.75 

604 Patent Deed, half-sheet, 8 %xl4 40 2.75 

605 Assignment before Issue, half-cap, 8^x14 40 2.75 

606 Assignment after Issue, half-cap, 8^x14 40 2.75 

607 Petition for a Caveat — Petition, Power, of At- 
torney, Specification and Oath, full cap, legal 

fold, 8%x28 75 5.50 

608 Application for Trade-mark — Petition, Power 
of Attorney, Specification and Oath, full cap, 

legal fold, 8%x28 75 5.50 

613 Application for Canadian Letters Patent, Peti- 
tion, Power of Attorney, Specification and Oath, 

full cap, legal fold, 8%x28 75 5.50 

Blank No. 601 with name, afUlre>ss, and registration number 
printed in on application and card printed on endorsement. 300, 
$12.00; 500, $16.00; 1,000, $25.00, f. o. b. Washington. 

No goods forwarded unless money is sent with order. We pay 
mail charges anywhere in the United States. 

Records in Patent cases printed at $1.25 per page for 50 copies. 

THE LAW REPORTER PRINTING COMPANY, 

PRANK B. CROWN, Manager, 

Printers, Stationers and Ijegal Blank Makers. 

518 5th Street, N. W., Washington, D. C. 

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THE RICHMOND CAPITOL JEFFERSON 

One of Six Celebrated Virginians Surrounding the Equestrian 
Statue of Washington in the Capitol Square, Richmond. 

Thomas Crawford and Randolph Rogers, Sculptors. 
See page 5. 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent OfQce Society 

Office of Publication 1315 Clifton St.. Washington, D. C. 
Sobscription $2.50 a year Single copy 25 cents 

EDITORIAIi BOARD. 

E. D. Sewall, Chairman, Publicity Committee. 
G. P. Tucker, Editor-in-Chief. 
J. Boyle. 
A. W. Davidson. 
W. I. Wyman. 

W. J.Wesseler, Bueiness Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washington, D. C. Phone Col. 290. 



Publication of sigrned articles in this journal Is not to be under- 
stood as an adoption by the Patent Offlce Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 

VOL. I. SEPTEMBER, 1918. No. 1 



EDITORIAL. 



On another page will be found an article on the Patent 
Office Society. It seems proper here to set forth the 
raison d'etre and the purposes of this publication, the 
.journal of the society. 

Of necessity some medium must be provided for the 
publication of the lectures given for the benefit of the 
assistant examiners, for, obviously, only a modicum of 
their value may be availed of by a mere attendance there- 
upon. 

It will be desirable to publish from time to time certain 
proceedings and actions of the society to record progress 
in the attainment of its objects and results accomplished 
by affiliated societies affecting the patent system: also 



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2 JoTJBNAIi OP THE PaTBNT OfFICB SoCIETY. 

advance programs of meetings, lectures, etc., given under 
the auspices of the MoeittJ. 

And, speaking -gftnerally, the need has been recognized 
for some agency of the society in which all the member- 
ship could take an interest and part to further the objects 
to be attained. With an associate membership, which, 
it is hoped, will be large and will, of course, be wixiely 
scatter^, af publication of some sort is the most natural 
means through which this membership may keep in touch 
and work with the active membership in Washington. 

Consequently, under the jurisdiction of the Publicity 
Oommittee of the society, and Editorial Board has been 
chosen to conduct and publish this journal. 

It is planned to publish technical articles from examin- 
ers within and technical men outside the office but it is not 
planned to invade generally fields covered by existing 
scientific publications. 

Contributions are already promised from leading mem- 
bers of patent bar association and this evidence of 
interest is deeply appreciated and very gratifying. 

It is hoped to make the journal a forum for the presen- 
tation and discussion of legal and technical subjects relat- 
ing to the useful arts: and further, a medium through 
which a wider knowledge of the workings and advan- 
tages of the patent system may be gained by inventors 
and m'anufacturers, and through which all interested in 
the improvement of the patent system may work to the 
common end. The Editorial Board invites cooperation 
of all the membership to make the journal a success. 



OUR COVER DESIGN. 



The structure pictured on the cover is the portico of 
the Patent Office at the center of its south front and 
forms its main entrance. As shown in the illustration, it 
represents the view of it as seen from' Eighth Street, the 
building on either side of that street providing a sort 
of frame work to limit the view to the portico. The por- 
tico, from this point of vantage, thus segregated from the 
rest of the building, has the appearance of a separate 
structure. It is a copy of the famous Parthenon, and its 
massive Doric columns rest upon a base, two stories in 



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JouBNAL OF THE Patent Offiob SoemrT. 3 

height, comprising a stairease coextensive with the en- 
tire width of its front, making a pedestal of grand jmto- 
portions, and giving the whole structure a decidedly 
monumental aspect. This portico is the most individual 
feature of the Patent Office building and is one of the most 
dignified and impressive architectural achievements in a 
city of splendid and monumental public structures. 



THE PATENT OFFICE SOGIETT. 



The object of the Patent Office Society, as set forth in 
its constitution, is *'to further the industrial development 
of the United States in so far as the patent system is a 
factor thereof, to promote and foster a true appreciation 
of the American patent system, to cultivate a high stand- 
ard of professional ethics among patent practitioners and 
examiners, and to promote the professional, intellectual 
and social welfare of the members of the society." 

The need for a society of this character arose from an 
appreciation of the fact that there was no organized effort 
of the interested and responsible agencies of this country 
to effect needed improvements in the patent system. 

Membership in the society is as set forth in Art. 3 of 
its Constitution which is as follows: 

ART. 3.— MEMBERSHIP. 

Sec. 1. — The membership of the society shall consist 
of honorary members, active members and associate mem- 
hers. 

Sec. 2. — ^Every employee of the Patent Office whose 
official title comprises the word *' Examiner", and also 
the Chief Clerk, the Librarian, the Draftsmen, and the 
chiefs of non-examining divisions and heads of rooms, 
shall be deemed eligible, on written application and pay- 
ment of sui3h dues as may be required, to active member- 
ship; and every active member shall be deemed eligible 
to hold any office hereunder. Others may become honor- 
ary or associate members. The requirements of asso- 
ciate membership shall be as the executive comimittee 
may determine. Proposals for election to honorary mem- 
bership shall be referred to the committee on memljership 
for report and upon favorable report the candidate 



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4 JOUBNAL OF THE PaTENT OfFICB SoCIETY. 

may be elected by vote of the society. Applications for 
associate membership shall be passed upon by the com- 
mittee on mem;bersliip, and, in case of adverse action by 
said committee, the application shall be referred to the 
executive committee for final action. 

Sec. 3. — ^Dues of active members shall be fixed by vote 
of the society and dues of associate members by vote of 
the executive committee. No dues shall be required of 
honorary members. 

Sec. 4.— Non-payment of dues for an unreasonable time 
after notice of arrearage has been given shall be con- 
sidered good cause for dropping a member [s name from 
the roll by a vote of the membership committee. 

While the members of the society as represented by its 
active membership is composed principally of examiners 
in the United States Patent Office, the provisions of asso- 
ciate membership are such as to permit representation by 
those having an interest in the objects of the society 
whether as attorney, engineer, inventor, manufacturer, 
or educator. Everyone so interested is' earnestly invited 
to enroll as an associate member. 

The society is now in its second year. In this short 
period considerable progress has been made toward the 
attainment of its objects. Numerous lectures of an edu- 
cational character have been given in the third-floor audi- 
torium of the office by technical men outside the office 
and in addition a series of lectures on the Rules of Prac- 
tice and the principles on which the patent procedure 
rest, have been given by officials of the Patent Office, 
primarily for the education of recently appointed assist- 
ant examiners. A very important step forward has been 
taken through its affiliation with the National Research 
Council. This council was organized in 1916, at the 
request of the President of the United States, by the 
National Academy of Sciences as a measure of national 
preparedness. 

In conformity with a request embodied in a resolution 
adopted by the society, and fully concurred in by the 
Commissioner of Patents, the council has appointed a 
committee for the study of Patent Office problems. The 
committee comprises some of the most noted American 
scientists, engineers, inventors, and authorities in patent 
law. It is also the intention of the society to become 



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JouBNAL OF the' Patbnt Officb Sooibty. 5 

affiliated with other technical societies for such mutual 
benefit as may under the circumstances be possible. 

The society is interested in the promoting of mutual 
acquaintance within the office and with those who have 
business before it; in the elevating of standards of prac- 
tice; in the dissemination of information; in the im- 
provement of working conditions, methods and equipment 
within the office, and in assisting efforts for patent re- 
form, to the end that better patents may thereby be 
granted. 

It is the vision and hope of the founders of the society 
that it may occupy the place in applied science, invention 
amd industrial progress that other scientific societies 
have attained in their respective fields. They hope by 
so doing to increase the service that the Patent Office and 
patent system is able to render the nation. As a means 
to this end they desire to do all that comports with a 
due sense of official propriety to better conditions in the 
CMfice both as to business methods and working condi- 
tions in complete cooperation with the Secretary of the 
Interior and the Commissioner of Patents. 

The possibilities in the field to which the society has 
committed itself aire large. The objects which it seeks 
to attain are worthy of the best efforts and the coopera- 
tion of those Who come in contact with the patent system. 

Tl^ officers of the society are as follows: President, 
M. H. Coulston, Vice President, B. N. Morris, Secretary, 
B. Bussell, Treasurer, A. W. Cowles, Members of the Ex- 
ecutive Committee, W. F. Avery, N. J. Jewett, J. H. 
Lightfoot, G; A. Lovett, T. L. Mead, Jr., M. E. Porter, 
E. D. Sewalli-and W. L. Thurber 



THOMAS JEFFERSON AND THE PATENT SYSTEM. 



By Wm. I. Wyman. 

The act of 1790 created the United States patent sys- 
tem. It provided for the filing of a specification and 
model with the Secretary of State. The patent was 
granted by a board composed of the Secretary of State, 
the Secretary of War and the Attorney General, who had 
discretionary power to aliow or refuse the application, 



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6' JouRiirAi* OP THE Patent Office Sooibtt. 

fiom which action there was no appeal. The act of 1793 
suspended the fii^t la^^ and provided a registration sys- 
tem, in which compliance with certain formalities was all 
that was necessary to obtain the grant. The Secretary 
of State received the petition therefor, the letters patent 
being first signed by the Presidctat and being approved 
as to form by the Attorney General. Jeflterson was 
Secretary of State during the entire, but brief, lifetime of 
the act of 1790. It was also said that he examined per- 
sonally every application filed during the existence of 
that act, and he may thus be credited with being the first 
Commissioner of Patents and the earliest patent examin- 
er. 

Jefferson was probably the most accomplished public 
man of his time. He had a thorough knowledge of the 
classics, was completely abreast of contemporaneous 
scholarship, was intensely interested in scientific thought^ 
and, of course, was an advanced thinker in political and 
social philosophy. His interests were extremely diverse, 
but in no department could it be said to be superficial. 
His grasp of scientific subjects was deep and no advance 
in the arts and invention escaped his intelligent scruti- 
ny. He was by birth and training an aristocrat, but 
through feeling and conviction became the world's lead- 
ing liberal. Without Washington and Franklin it may 
be questioned whether this country's independence could 
have been achieved or this government launched success- 
fully, but Jefferson is mostly responsible for the trend 
political thought has taken in this country; his, more 
than any other single influence, has given direction and 
quality to the streams of American public policy. While 
in France^ representing the interests of this country, 
between 1784 and 1789, he displayed a keen interest in. 
all the advances in the arts and sciences, and his cor- 
respondence shows that he was especially alive to tlie 
importance of the invention of the steam engine and the 
impending industrial era that was to follow in its wake. 
He was remarkably apt in the practical application of 
mechanical principles, as is shown by the fact that he 
was the fir&t discoverer of an exact formula for the con- 
struction of mould-boards of least resistance for plows. 
T%us Jefferson was thoroughly equipped, both from the 
economic and the technical sides, to appreciate and inau- 



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JOURNAI/ OF THE' PaTBNT OFFICB SoOIBTT. T 

gnrate the patent system. Yet, so saturated was be with 
the piiiwiples of i^pHblioanisra, so su^spicions was he of 
mosepofy ^id £»iy aggrandizemeiiit of power, that he 
was led initially and almost instin€tive«ly to oppose the 
introduction of any system of awards to inventore. But 
a mind so flexible as^ his, so receptive to new ideas and so 
responsive to the value of facts, coxrld not but help bear 
testimony to the beneficence of patent protection once its 
virtues were demonstrable. He gave to the duties of ei- 
aoofining applications all his knowledge, and all the 
thought and energy that could possibly be -spared from 
the arduous duties of piloting the ship of state. The 
effects of the act of 1790 came under his own direct ob- 
servation. Only a few months after the law was passed 
he was led to write : 

**An act of Congress authoriziug the issue of patents 
for new discoveries has given a spring to invention 
beyond my conception. Being an instrument in 
granting the patents, I am acquainted with their 
discoveries. Many of them indeed are trifling, but 
there are some of great consequence, whi6h have been 
proved of practice, and others which, if they stand 
the same proof, will produce great effect. ^^ 

While President, in 1807, he wrote to Oliver Bvansy 
famous as an early inventor, as follows: — 

'* Nobody wishes more than I do that ingenuity 
should receive a liberal encouragement: nobody esti- 
mates higher the ability which society has derived 
from that displayed by yourself: and I assure you 
with truth, that I shall always be ready to manifest 
it by every service I can render you.*' 

and in 1813 he wrote anent a patent of Evaos which was 
the subject of considerable controversy, ''My wish to see 
new inventions encouraged, and old ones brought again 
into useful notice, has made me re??ret the circumstances 
which have followed the expiration of his first patent.^' 

Jefferson was apparently the most active member of 
the first patent board. His correspondence discloses the 
growth of the practice and the' formulation of its princi- 
ples, and" gives a vivid appreciation of their details and 
effects. He enunciates while in a reminiscent mood cer- 



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8 JOUBNAL OF THE PaTENT OfFICE SoCIBTY. 

tain rules established by the board, such as that neither 
a mere change of material nqr change of form should give 
title to an invention, and that (to use his own language) 
*4t is the invention of the machine itself, which is to 
give a patent right, and not the application of it to any 
particular purpose, of which it is susceptible." These are 
now among the precepts of accepted practice and could 
only be uttered by one not m'erely learned in the law but 
vitally concerned in the progress of invention and in 
establishing a firm and philosophical basis for patent 
procedure. 

Jefferson's concern in patent matters is exhibited in 
much of his correspondence, a particularly interesting 
example of which is his discussion of the philosophy of 
patent protection in one of his letters, which almost a- 
mounts to a treatise. After laying down what he con- 
siders the contribution in a patent to Oliver Evans for 
an Elevator, Conveyer, etc., he presents among other 
reasons for the invalidity of the patent the following 
anticipations in literature: — ''Shaw's Travels'', ** Uni- 
versal History", ''Mortimer's Husbandry", "Ferguson's 
Mechanics", "Vitruvius" edition by Perrault, Bossuet's 
"Historie de Mathematiques", Wolf's "Cours de Mathe- 
matiques", Desagulier's "Experimental Philosophy" 
in Diderot's Encyclopedie, etc., "L 'Architecture Hidrau* 
lique de Belidor," and Prory's "Architecture Hidrau- 
lique." 

This formidable list of citations is a monument of re- 
search, a characteristic bit of work, and entitles the first 
examiner of patents to a place among the first of pat- 
ent examiners. 



THE RELATION OF THE EXAMINER TO THE IN- 
VENTOR AND HIS ATTORNEY. 



By F. W. H. Clay, Assistant Commissioner. 



(Delivered before the fourth assistant exainlners.) 



Let me first call your attention, gentlemen, to the fact 
that in yonr duties in this office yon are in^ a very pecu- 
liar position, a very unusual position, which makes it 



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Journal of the Patent Office Society. 9 

highly important that you have a correct conception of 
your proper mental attitude toward your work. In a 
word, you are in the anomalous position of being both 
the judge and the attorney for one of the parties in a 
controversy. You know that it is a fundamental prin- 
ciple of our system of government, that the judicial 
branch be entirely divorced from the legislative and the 
executive branches. It has from time immemorial been a 
settled principle that a judge should be uninterested in 
either of the parties to the contest. The face is that the 
patent law, by reason of the peculiar nature of the prop- 
erty with which it deals, is seemingly out of harmony with 
the democratic theory of government. And yet the con- 
dition is inevitable. What I wish most to impress upon 
you, is that the seeming inconsistent attitude of the ex- 
aminer is one of seeming only, and that when looked at 
from the right point of view the interests of the iuventor, 
his attorney, and the examiner are, or should be, substan- 
tially one and the same. 

Let me try to explain why this is so, and how it re- 
sults from" the nature of the property in inventions. The 
point will appear from a careful consideration of the 
reason for the patent law. 

The Constitutional provision for patents is one of those 
pieces of literature like Milton's Paradise Lost, which 
everybody talks about and nobody read^ with sufficient 
particularity. You will all remember that the Congress 
is given power to promote the progress of science and 
the useful arts; and that. the method by which this is to 
be done is set forth, not by saying directly that invention 
is to be encouraged, but by providing for it indirectly, 
saying that inventors are to be secured for a limited time 
in the exclusive right to their discoveries. A thing that 
is frequently overlooked is that the whole system has 
the single and sole object of promoting progress^ You 
must particularly ^ote the word '^ promote/' If I leave 
but one impression on your minds today I would like that 
impression to be the thought that promoting progress 
necessitates a prompt disclosure of the invention, not to 
the Patent Office, but to the public. 

To state it another way, it will not do to merely en- 
courage inventors by securing them in their rights; an- 
other thing quite as important — and I think this is the 



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10 Journal of the Patent Office Society. 

thing usually overlooked — is that the inventor must be 
Inquired to teach the public the use of his invention at 
the earliest possible time. I think we have never half 
realized the extent to which the publication of an inven- 
tion stimulate other inventions, brings about improve- 
ments in methods of manufacture, supplies manufacturers 
with forethought and extended vision, and cultivates in 
the public mind a taste and desire for new and better 
things. I dare say if the public generally knew how per- 
fectly feasible an automatic telephone exchange is in 
the light of present knowledge, the people would not 
longer put up with the cum'bersome methods that we now 
endure. Business is essentially conservative. It is the 
natural instinct of the business man to get along with 
what is good enough as long as it satisfies the public de- 
mand, and to take up new and improved things only 
when there is a public demand for them. This is perfectly 
natural, because the process of evolution in the industrial 
arts necessitates the waste of discarding the old and the 
obsolete. 

In a word the inventor is the evolutionary force, while 
the business instinct of the manufacturer who puts his 
invention to use is an element of inertia against which 
the inventor must continually struggle. It is therefore 
hardly less important to encourage inventors to make 
inventions than it is to encourage business men and the 
public to take up inventions and put them to use. As a 
single instance I remind you that the phonograph was 
invented in 1876, before many of you were bom; and yet 
doubtless every one of you can recall when the first ex- 
tended use w^as made of phonographs years thereafter. 
All that ten or fifteen years' delay was wasted, and pro- 
gress was held back, because of the mental inertia and 
business inertia of the people. 

To come then, to the nature of the inventor's right. 
In the first place it is important for you to understand 
clearly that the inventor does not come to the government 
seeking favors. I do not hesitate to say that the inven- 
tors' as a class are by all odds the most important class of 
people, and by all odds the best benefactors of the race. 
I do not even expect the noble profession of medicine; 
for it is certainly more important to create than it is to 
preserve. The inventor is the agency for evolution of 



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JOUBNAL OF THE PaTBNT OfFICE SoCIETY. 11 

the industrial arts. A great invention, in the language 
of Judge Buffington (Brislin v. Carnegie Steel Co., 118 
Fed. Rep., 589), **may arise to the dignity of the 
hnmane," when measured by its beneficent results. 

Lord Bacon said (Novum Organum, Book 1, Section 
129): 

"Now among aU the benefits that could be conferred upon 
mankind, I discovered none so great as the discovery of new 
arts for the bettering of human life. For I saw that among 
the rude people of early times, inventors and discoverers were 
reckoned as gods. It was seen that the works of founders of 
States, lawgivers, tyrant-destroyers, and heroes cover but nar- 
row spaces, and endure but for a time; while the work of. the 
inventor, though of less pomp. Is felt everywhere, and lasts 
forever." 

It is true that the motive and reward of the inventor 
is monetary; but it is nevertheless true, as Judge Q-ross- 
cup said in Westinghouse Air-Brake Co. v. Chicago 
Brake & Mfg. Co., (85 Fed. Rep., 794) that— 

"Inventive genius has given to mankind most of its present 
material civilization. The magnificent flower of civilization, 
everywhere surrounding us, has opened from germs that were 
fructified from the brains of inventors." 

Moreover, each invention is inevitably the seed of 
future inventions. Even though it is itself never used, 
its influence never ends. There is nether any possibility 
of stepping backward in the progress of knowleidge, no 
matter how small the improvement. 

Inventors being benefactors of the race, and coming, 
when they seek a patent, with something to offer the 
public and not something to ask, it is next important for 
you to keep ever in mind the nature of the thing the in- 
ventor seeks. I think it is very unfortunate that the word 
* 'monopoly" was ever applied in any way to the right an 
inventor has or to the right he gets by his patent. A 
monopoly is an exclusive enjoyment of something which 
otherwise would have been the property of the public. 
But it can never be said that the invention would other- 
wise have been the property of the public. The most pat- 
ent fact is that but for the inventor the public would not 
even know of the existence of the invention, much less 
have a right to it. And just here is where you should 
draw your line between the work of the inventor and the 



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12 JOUBNAL OF THE PaTENT OfFICE SoCIBTY. 

work of the mechanic. Of a new and an improved thing 
which a mechanic can produce we can neyer say that but 
for him the public would not have had it; but on the 
contrary it is altogether probable that whenever any de- 
sire for it is conceived, the improvement will be forth- 
coming. Therefore to patent anything which a mechanic 
could produce is indeed to grant a *' monopoly," and it 
is vicious in every way. It is vicious not only because it 
takes away from- the public something that belongs to 
the public, but it is vicious because it puts the inventor — 
the introducer of new things— on the same level with 
the mechanic, who is a mere applier of old knowledge. 

Early in the history of our law the courts recognized 
the true status of the inventor, very well described by 
Justice Clifford in Seymour v. Osborne, (11 Wallace, 
533): 

''Letters patent are not to be regarded as monopolies^ created 
by the executive authority at the expense and to the prejudice 
of all the community except the persons therein named as 
patentees, but as public franchises granted to inventors of 
new and useful improvements, for the purpose of securing to 
them, as such inventors, for the limited term therein mention- 
ed, the exclusive right and liberty to make and use, and vend 
to others to be used, their own inventions, as tending to pro- 
mote the progress of science and the useful arts, and as matter 
of compensation to the inventors, for their labor, toil and ex- 
pense in making the inventions, and reducing the same to 
practice for the public benefit, as contemplated by the Con- 
stitution and sanctioned by the laws of Congress." 

It is not strange that the general run of la3rmen still 
persist in the notion that a patent grants the patentee 
the right to use the invention ; for that was indeed literally 
the nature of the earliest English patents. In the thir- 
teenth century patents nearly always had two clauses, one 
of which granted the right, and another of which excluded 
the infringer. We still cling to the hollow form in our 
patents themselves, and I hope to see them reformed in 
this respect. The patent says that whereas John Doe has 
presented to the Commissioner a description of his in- 
vention and is adjudged entitled to a patent, therefore 
the patent ''grants unto said John Doe the exclusive 
right to make, use and vend, etc. ' ' The fact is the Gov- 
ernment does not grant John Doe anything at all. The 
right to protection in court is given indeed, but in a moral 
sense he even had the right of exclusion, and therefore 



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JOUBNAL OF THE PaTBNT OfFICE SoCIBTY. 13 

the remedy for it was his. What the patent really grants 
is the privilege of publicly didosing the invention with- 
out losing control over it. If I conceive a poem, it is 
mine by right of creation. Nobody has any conceivable 
right to it. Nobody but me has any power over it. It 
18 completely in my control. The moment, however, I 
write it on a piece of paper where others can see it, or 
stand on a street comer and recite it where others can 
hear, my control is gone and in the absence of the copy- 
right law my power, and in a legal sense, my right to 
control it is gone. What the copyright gives me is the 
power to substitute control by the court in place of my 
own personal control, which latter involved keeping the 
poem to myself. It is very much the same condition with 
an invention, for there was no provision in common law 
by which after I had allowed somebody ,to see my newly 
invented machine I could prevent him from proceeding 
to make and use one for himself. The patent simply em- 
powers me to substitute the control of the court for my 
own control, so that I may now publicly disclose the in- 
vention without losing my control of it. This is for the 
public benefit as much as my own. 

Let me point out here a radical difference between the 
copyright and the patent. An author does not create his 
work for any other purpose than to disclose it to others. 
He can make no possible use of it except by disclosure 
to others. An inventor, however, does not primarily make 
his invention for the purpose of disclosure to others, but 
for the purpose of using the invention, to get some result 
he is after. He is not without control when he uses his 
invention. He may very easily make full use of his in- 
vention for many years without disclosing it at all and 
without losing complete control over it. Now, it is just 
this possibility which makes it more important than is 
generally recognized, that the law should encourage the 
inventor to disclose. I think it is largely on account of 
this condition that the patent is truly said to be a con- 
tract. The disclosure is the consideration the inventor 
gives for his patent. There is luckily a case lately de- 
cided which clearly illustrates the point — the case of 
Macbeth Evans Glass Co. v. Gfeneral Electric Co., 231 
Fed. Rep., 183, lately affirmed by the Sixth Circuit Court 
of Appeals, November 6, 1917, but not yet published. 



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14 JOUBNAL OF THE PaTBNT OfFICE SodETY. 

The glass axt is one of those axts in which the ''secrecy 
habit*' has prevailed from the earliest times. GHass mixes 
were always mysteries, carefully guarded and handed 
down from father to son for generations. The principles 
of mixing glass are complicated and little understood; 
chemists have rarely dealt with it. We do not know 
even yet whether glass is a mechanical mixture or a 
chemical compound. It is probably both; but its laws 
are not definitely known. 

Macbeth invented in 1903, and completed and put into 
practice, a method of making what is called ''Alba'' 
glass. He proceeded thereafter to make and sell large 
quantities of the. glass at great profits He contributed 
very largely to the improved modem practice of indirect 
lighting of buildings, and mainly by this invention. For- 
tunes were made out of the sale of the glass. He kept 
the invention sebret for nearly ten years and then lost his 
secret only by the treachery of one of his employees. He 
succeeded, by suit in the State Court, in enjoining this 
employee and his associates from using the secret process, 
but afterward-s, in 1913, he applied for and obtained a 
patent, which the court has now rightly held to be invalid. 
The thing that interests us is the reason why. You will 
find Judge Clarke's reasoning in that case very illumina- 
tive, although the Court of Appeals does not seem to 
agree with him that the use of the invention was public, 
and both courts have by reason of the wording of the stat- 
utes been obliged to conclude that "the invention had 
been abandoned^ \ whereas it is clear that it was not the 
invention that was abandoned, but the claim of right 
Macbeth had to a patent. 

Judge Clarke points out that in order to promote the 
progress of the art of glass making, it was necessary for 
Macbeth to disclose his invention and give the public 
at large the right to, use it at as early a date as possible, 
without losing his own rights as an inventor. He quotes 
Justice Story, to the effect that bj his delay and holding 
back knowledge from the public he had refused to per- 
form his part of the contract; wherefore to grant him a 
patent would retard the progress of the art, and "give a 
premium to those who would be least prompt to com- 
municate their discoveries." In other words, if Mac- 
beth 's patent had stood, he would have had a monopoly 



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JoUBNAIi OF THE PaTBNT OfPICE SoCIETY. 15 

of his invention, not for seventeen years but for twenty- 
seven years, and would have thus retarded the art of 
glass making. It is also a constantly yecurring thought 
in the minds of our modem judges that in the natural 
course of the evolution of the arts it may be reasonably 
presumed that in time developments will gradually take 
place by the efforts of mechanics, or at least that if one 
inventor does not hit upon the next step in the progress, 
•some other will. In this particular case it happened that 
Macbeth 's invention was contemporaneous with the in- 
troductfon by architects and others of a new system of 
lighting which it may not be entirely unreasonable to 
presume would have inevitably led to the making of some 
kind of glass which had the general properties of the 
Alba glass of Macbeth 's invention. The natural evolution 
of the art would have almost compelled the invention of 
this kind of glass, and this probably within a period of 
twenty-seven years; so that even without Macbeth ^s in- 
T^ention it is not at all improbable that the invention would 
have been made within the period through which Macbeth 
undertook to monopolize his invention. 

The importance of keeping in mind a clear conception 
of the contract theory of the patent is that we may never 
lose sight of the primary object of the patent system to 
promote the evolution of the art. The real consideration 
the inventor gives the public for the privilege of using 
the public courts to keep infringers off his preserves for 
a limited time is the prompt disclosure of the invention, 
which is, as I said before, the sowing of the seed of 
further improvements. I think indeed this is quite as 
important as the advancing of the time when the inven- 
tion is to become public property. I am not sure that 
the majority of inventions are not superseded, before the 
termination of the seventeen year period of the patent, 
by other inventions which substantially displace thenu 
This, of course, is not true of pioneer inventions, but is 
true of many subsidiary inventions. 

With the greatest respect to the court I venture to 
say, nevertheless, that it was unfortunate that in this 
Macbeth case, which as the Court of Appeals said was 
^ui generis, the court did not boldly take a broader 
ground than saying that Macbeth abandoned his inven- 
tion, and say that promptness of disclosure is thie primary 



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16 Journal of the Patent Office Society. 

consideration the inventor gives for the patent, and that 
when he deliberately delays the disclosure for a selfish 
purpose he forfei4;s his right to the privileges the patent 
gives. Judge Clarke in the court; below well expressed 
it thus, speaking of Macbeth: '*To decide •••••• 

not to accept the benefit of the patent laws, but to rely 
upon the trade secret law for protection of an invention,, 
is as clear an abandonment by him of the privileges and 
obligations of the patent law as the abandonment of its 
.advantages in any other manner would be." Tlt,e reason 
why Macbeth was not entitled to a patent was not that 
he had abandoned his invention, but that he had refused 
to give to the people that thing which was the considera- 
tion for his patent. 

The British Courts often invalidate a patent for not 
stating definitely all the essentials to success in using the 
invention, as for example specifying an iron roller coated 
with clay and not pointing out the kind of clay which was 
proper when there was a kind that would not do. (Wey-^ 
man vs. Corcoran, L. R. 13 Ch. D. 66.) Frost, p. 175. And 
further, his patent will be bad if he merely suppresses or 
omits to state the best way to work the invention. (Frost, 
p. 183 ; Titly vs. Easton, Mac. P. G. 48 ; and Liardet vs. 
Johnson, 1 W. P. C. 53.) 

This brings me to the main point I wish to make, name- 
ly, that however it may be with the business man, it is 
of supreme importance to the inventor and to the public 
that patents be both applied for and granted promptly. 
Coming directly home to you, this means that one of your 
primary duties is to see that when applications are filed 
in this office they proceed without delay to patent. It is: 
quite possible that promptness in the work of this office 
is as important as thoroughness. In other words, if you 
have to choose between making a less thorough examina- 
tion and a general and material delay in getting the 
applications through, it is probably more to the public 
interest that the prosecution be prompt. At least I am 
justified in saying that if your examination is not suflB- 
ciently thorough, this is directly the fault of Congress, 
and is so provided in spite of the attention of Congress 
having been repeatedly called to the shortness of force 
and the necessity of an examination that is not sufficient- 
ly thorough. I have been an inventor, and I think myself^ 



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Journal of the Patent Office Society. 17 

(and believe it wise to say so) that the inventor at the 
present moment is not getting the examination he ac- 
tually pays for. I base this statement on the single fact 
that the Patent Office is a money-making institution, at 
the expense of the inventor. The inventor pays a certain 
number of dollars for an examination of his invention. 
He does not get that number of dollars' worth of exami- 
nation. On this point there can be no dispute, nor ca^ 
there be any. dispute that it is'because this office is under- 
manned. 

Accepting this condition, however, as we must, it is 
our duty to keep the work up to date and to constantly 
press for prompt prosecution and issue of patents. It 
seems to me an axiom that when we are engaged in the 
act of recording, measuring, and promoting industrial 
evolution, any delay on our part delays the evolution, 
which is the great object and end of the patent system. 

If you have agreed with me about the point of view 
you should take toward the patent law and the Patent 
Office, you will see that the general impression that the 
attorneys are arrayed on one side and examiners on the 
other of a never-ending series of controversies, is entirely 
erroneous, and that it is due to a wrong impression of 
what we are all trying to do. We are in fact all attorneys 
for a public benefactor. 

The examiner, the inventor, and his attorney should all 
be in perfect harmony and syrapathy, because they are 
all seeking the same object. It is not as if you were the 
attorney for the public, sitting down to draw up a 
contract between the public and the inventor by which 
each party must jealously guard lest his client give more 
than he receives, but you are rather in the position of an 
engineer who in conjunction with the inventor and his 
attorney is trying to correctly measure the height of a new 
step added to the flight of steps of progress in industry. 
It is to the mutual interest of all three that the measure- 
ment be .correct, and that the step be set solidly in place. 
If the inventor gets a claim which is too broad, he may 
lose all, and is more injured than anybody else ; and if he 
gets. a claim that is too narrow, everybody is injured. 
What all three parties are trying to do is to compare the 
new invention with what went before it and see that the 
difference, or the upward step in the progress, is acour^ 



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18 JOUBNAL. OF THE PaTENT OfFICE SoCIBTY. 

ately measured and clearly defined. The attorney ought 
not to resist the criticism of his specification or claims; 
for a criticism cannot possibly do harm and almost in- 
variably does good. On the other hand, the examiner 
ought not to resent criticism of his reasoning or his point 
of view, for the attorney by challenging the examiner's 
action will probably show in just what respect the ex- 
aminer's contention is weak and needs to be strengthened 
in order to properly fix the patent in its proper place in 
the art. 

Remember that every patent is a step in a flight of 
stairs. There are steps below it and there will inevitably 
be steps above it. And the steps above it will rest upon 
it. No flaws in it should go uncriticized; no measure ap- 
plied to it by the examiner should claim immunity from 
challenge. It is said that Lincoln never quarreled with 
anybody face to face; that it was not possible to quarrel 
with him, because if you criticized him justly he would 
be the first to exhibit a desire to correct the fault. To- 
answer back criticism in kind never improves matters. 
Acknowledging a fault almost invariably puts an end to- 
criticism. It is related of Dr. Johnson that a witty lady, 
a celebrated blue stocking, laid a careful plan to em- 
barrass him at a dinner at one time, having found a mis- 
spelled word in his dictionary. At the psychologiqal 
moment when everybody could hear she said: **Dr. John- 
son, why do you spell the word so-and-so in your diction- 
ary?" He instantly replied, ** Plain ignorance, madam. 
At that time I did not know any better." The discus- 
sion naturally ceased, at this point, much to the embar- 
rassment of the lady and much to the enjoyment of Dr. 
Johnson. 

It would be well for the examiners to remember just 
what experience the practicing attorney has. 

The good attorney will always, at one time or another, 
ask and get from his client a full answer to thejse three 
questions: 

1. What is it you are going to do? 

2. Just how, and in particular, do you do it? 

3. What advantage do you thus secure, over what 
others have done before you? 

These also are the questions the examiner must ask 
and answer. And he must see that they are answered 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 19 

fully and truthfully, as if the patentee were trying in 
/rood faith to instruct the ordinarily skilled how to use 
the invention. And then he must see that the claim de- 
fines the difference from the old art very clearly. Al- 
though the specification must inevitably describe some 
things which are old, the law makes it imperative that the 
patentee shall make clear just what is old and what new. 

Now in all this, it happens that the examiner as at- 
torney for the public insisting on the claim exactly meas- 
uring the extent of the step up — the im,provement — is 
doing exactly the same thing as the attorney for the in- 
ventor is doing, marking out the limits of the forbidden 
field covered by the patent. In setting the fence around 
the invention it is as much the interest of one as of the 
other to put it in the right place. The inventor comes 
in to the attorney full of enthusiasm and discloses to him 
an invention which he says is all new and very impor- 
tant The attorney says, ''Let us be sure just how new; 
let us make a preliminary examination." He makes a 
preliminary examination, which of course is very imper- 
fect, and then he proceeds on that basis to state in his 
specification first what the object of the invention is, 
then that heretofore that or like objects have been sought 
in a certain way but fell short in certain respects, and 
that the present applicant succeeds in accomplishing the 
improvement which is his object in the following way: 
whereupon h^ describes it. He then claims what he 
thinks is the measure of the improvement. Being aware 
that his search was uncertain, and with the object of 
bringing out a better search from the examiner, having 
regard to the invention in both its broad and narrow 
aspects, he writes usually some very broad claims and 
then some more specific ones. In view of the light he 
has at the time he writes his specification it is altogether 
likely that he will have too many claims, and that he will 
have some claims that are too broad. If he is a good 
attorney he will have done this deliberately, in order to 
get the advantage of the examiner's point of view. 

The examiner should reply in full consciousness of the 
mental attitude of the attorney and as near as possible 
in a sympathetic spirit. If he says claim 1 is too broad, 
he should show as fully as he can how much of the variety 
of previous devices his claim would cover; and among 



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20 JoUBNAIi OF THE PaTBNT OfFIOB SoCIETY, 

these references he should always attempt to have the 
one he considers his best reliance for rejecting the nar- 
rowest claim he will reject. If it occurs to him how it 
may be done, he should suggest what appear to him the 
principal novel points of the invention. But in the next 
action by the attorney he may expect to find a different 
view as to what is the most important point of the in- 
vention and he should not be irritated at being told that 
his own point of view is wrong. The examiner should 
constantly keep in mind that whereas he approaches the 
consideration of the invention from the point of view of 
the gradual development with which he is familiar and 
therefore unconsciously will look for the next step along 
the same known line of development, the majority of 
inventors probably are not those who have followed any 
such course, but have struck out in a direction unguided 
by knowledge of the previous course of development. 
As I once heard an inventor say, the examiner ought not 
to expect the inventor's mind to run on the track like 
other men's, for if his mind ran on the track he would 
get nowhere except where the track led. The attorney 
for the inventor also is liable to have a still third point 
of view, being more familiar with the business aspect of 
the invention. The great thing is to get a mutual accom- 
modation of the three points of view, and in order to do 
this it is necessary to constantly strive to maintain a 
sympathetic attitude. What the inventor does is to 
evolve and apply aa idea. So long as the main idea and 
its significance are uppermost in his mind, he is liable to 
be erratic in the choice of means of embodiment, nor is 
it necessary that he even choose the best means at hand. 
The examiner will be often surprised and perhaps net- 
tled at the inventor's peculiar method of expression, but 
he must not let this get his mind off the main thought 
of the invention. Most of the controversies arise between 
the attorney and the examiner oyer the pertinency of ref- 
erences, and this is due to the variant directions of ap- 
proach above mentioned. The examiner ought to be 
willing to listen to every contention the inventor's at- 
torney may. make, if for no other reason than to test the 
correctness of his own judgment. 

Another thing the examiner should guard against is 
confusion in the use of the terms in an argument Socra- 



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JOURNAX. OF THE PaTENT OfFICE SoCIETY. 21 

tes once said, ** Define your terms and all argument will 
cease/* Of course many arguments are carried on in 
an effort to arrive at a common understanding of the 
terms in use. The examiner will find many difficulties 
will disappear when he makes dne allowance for the fact 
that he is of necessity using the terms familiar in the 
art as it has heretofore developed, whereas the inventor 
in the nature of the case will not use the same terms in 
the same sense, because he is not as familiar with the 
development of the art. The examiner can be very help- 
ful by explaining the ambiguity and indefiniteness of 
terms used by the inventor, and it is his duty always to 
be a helper. 

On the other hand, there is one point of continual quar- 
rel between attorneys and examiners, upon which I think 
the examiner should stand firm and with respect to which 
I think his standing firm wijl be of the greatest aid to the 
inventor. This is the matter of definiteness of claim. It 
is perfectly natural, and is almost the universal custom, 
that an attorney will undertake to write a set of claims 
so as to anticipate now-unthought-of variations of the 
applicant's invention. He will try to write one claim in 
one set of terms and another claim, to the same thing, 
in another set of terms, just because he is conscious of 
the variant qualities of minds he will find in the courts. 
He will not be so much concerned with making a clear 
definition of the invention as in anticipating future in- 
fringements. That is, he will try to write a set of claims 
so that he can pick out one to fit the device of some one 
particular infringer and some other claim designed to fit 
the device of another infringer who has a different form 
of apparatus. Widespread as this custom is I am satis- 
fied that it is both unlawful and unwise from the stand- 
point of the patentees ' interests. If the statute says one 
thing more emphatically than any other it is that the in- 
ventor shall definitely point out what his invention is. 
It clearly contemplates that the inventor shall leave to 
the court to decide whether that invention is found in 
the defendant's device. The court will not, and it ought 
not, to merely try whether the terms of the claim define 
the defendant's device. The terms of the claim might 
do so when there is no infringement at all, and on the 
other hand, the terms of the claim might fail to do so 



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22 ' JOURNAI. OF THE PaTBNT OfFICE SoCIETY, 

when there is clearly an infringement. For example, the 
court will hold that a pyramidal car body is a conical 
ear body, if it is necessary to sustain a good patent 
Against a real infringer (Winans vs. Denmead, 15 How- 
ard, 330) ; and on the other hand, it is a very common ex- 
perience to find a claim literally reading on the defen- 
dant 'bl device and yet no infringement. The court ought 
not to be put in the position of saying that if this claim 
is construed so-and-so it is not valid, and if it is construed 
in another way it is not infringed. The claim ought al- 
ways to be construed on the disclosure of the patent and 
be capable of no other construction, leaving open a pure 
question of equivalency to decide. If this is kept in 
view by the examiner and the attorney it will inevitably 
result that the claims are definite and that they are few 
in number. Once given a distinct and properly definitive 
-claim, the presence of any other claim to the same sub- 
ject-matter will simply confuse the patent. The examin- 
er can bring about a great reform in this respect by 
firmly rejecting all claims that do not differ from other 
<?laims in a real and patentable feature; and he can very 
often state the matter to the attorney in such a way as 
to make it clear that the patent is stronger by having a 
set of claims which, taken together, are definite. 

Finally allow me to impress upon you the beautiful 
simplicity of our patent law when rightly understood. 
Judge Butterworth is credited with having said, ** Pat- 
ent law is the metaphysics of the law." I never liked 
that expression and I do not believe that it is just. Tlie 
word ** metaphysics" implies something complicated if 
not occult and mysterious. Some cynic said that ** Meta- 
physics is a blind man hunting in a dark closet for a* 
black hat which is not there." The patent law, on the 
other hand, is perfectly simple. The reasons for it are 
perfectly simple. Its methods are perfectly simple. 

The extremely fortunate point about our patent law, 
and the feature which gives it its great efficiency, is the 
arrangement by which the inventor's' reward depends 
directly upon how much good the invention does to the 
world. If the invention fills a want, the inventor grows 
rich. If it is not wanted, he gets nothing. His return, 
at least theoretically, is the measure of tlie demand for 
his invention, and you will notice that the demand for the 



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Jouenaij of the Patent Office Society, 23 

invention should be a measure of the need of protection 
for it and therefore of the value of the patent. It is the 
function of the Patent Office to simply measure the degree 
of novelty the inventor has found. The public will meas- 
ure the value of that degree of novelty. But the Pat- 
ent Office is also to see that the inventor actually gives 
the public a clear disclosure of his invention in such a 
way that it may not only use it but that it may know just 
what are its limits within which an imitator cannot en- 
ter. And his disclosure and delimitation of the invention 
is to be made promptly, if it is to fulfill the intended func- 
tion of the patent system. The examiner ought to exert 
every effort to get through with the matter of prosecut- 
ing an application. To this end the most important thing 
is that the examiner's first action shbuld be thorough, 
not arguing the case but deciding it, and giving briefly 
the best reasons. Bfis next best action is to insist that 
the inventor's attorney shall make a real response to the 
office action and avoid dilatory tactics. I think you 
ought to be reminded, and I think you ought to be con- 
stantly reminded, that you have the right under the law 
to express your opinion as a judgment, and often to base 
it on broad grounds. If you will keep in mind just the 
questions the court will hereafter have to decide in con- 
sidering and applying a patent, you will be able to make 
your rulings in such form that the attorney may either 
agree with them or be in condition to appeal without 
further argument. Above all, you should never relax the 
requirement that the patent must be plain and simple, 
the disclosure complete, and the delimitation of the step 
up accomplished by the invention, clear. You may easily 
write your letters so that the attorney will see that the 
criticisms are for the benefit of the applicant, and having 
done this once there ought not to be further argument 
about it, although you should be perfectly willing to with- 
draw a criticism when shown that it is unjust. 

Of course all I have said is based on the supposition 
that the attorney is honestly striving to protect the in- 
terests of the inventor. When it comes to the attorney 
who is not honest, what I have said about sympathy will 
plainly suggest to you that there ought not to be any 
sympathy between you and him, and here especially there 
should be a quick and decisive action taken and further 



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24 Journal, of the Patent Office Society. 

disposition of the case left to higher authorities on ap- 
peal. You can-do no greater favor to the great mass of 
inventors and to the majority of the attorneys who are 
well meaning than to call the Coimnissioner's attention 
to every instance you find of a breach of professional 
ethics. I think the time cannot be long delayed when the 
ranks of the patent profession will have to be purified 
in order to prevent serious injury to the public interests 
as well as to the inventors as a class. 




RULES 1 TO 16 INCLUSIVE. 



By A. D. Merritt, examiner. 



(Delivered before the fourth assistant examiners.) 



The subject of my lecture involves Rules 1 to 16 inclu- 
sive of the Rules of Practice in the Patent Office. And 
since it has fallen to my lot t6 deliver the first lecture on 
the Rules, it has occurred to me that it would be appro- 
priate to deviate from my text for a minute to mention 
the authority on which the Rules are based and the 
value of a clear conception of their import, 

I'he authority for the Rules of Practice is found in 
Section 483, of the Revised Statutes of the United States, 
and is as follows: 

"The Commissioner of Patents, subject to the approval of 
the Secretary of the Interior, may from time to time establish 
regulations, not inconsistent with law, for the conduct of pro- 
ceedings in the Patent Ofllce." 

The Rules are as nearly in conformity to the Statutes, 
the decisions of the several Commissioners, and the 
courts as it is possible to make them. As they now stand 
they are the work of competent revisors of long experi- 
ence and high standing in the Patent Office. A clear 
understanding of the Rules will greatly assist you to 
facilitate and do good work in the office and will be of 
much benefit to you should you ever desire to become suc- 
cessful practitioners before the oflBce. Hence, I can not 
urge upon you too strongly the necessity of a complete 
and intelligent understanding of them. 



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Journal of the Patent Office Society. 25 

1. All buBlnesB with the Office should be transacted in 
writing. UnleBS by the consent of all parties, the action of 
the Office will be based exclusively on the written record. No 
attention will be paid to any alleged oral promise, stipulation 
or understanding in relation to which there is a disagreement 
or doubt. 

It is a wise idea to keep the provisions of this rule in 
mind for one reason if nothing more. The courts in de- 
termining the scope and validity of claims as a rule take 
into consideration the record in the prosecution of the 
case in this office. Consequently you can readily under- 
stand the advantage for all parties concenied in having 
the written record complete. Even when agreements or 
understandings are reached at interviews, especially rela- 
tive to the allowance of claims, it is always advisable to 
insist upon the reasons advanced being placed in the 
written record of the case. 

2. All letters must be sent in the name of the ''Commissioner 
of Patents." All letters and other communications intended 
for the Office must be addressed to him; if addressed to any 
of the other officers, they will ordinarily be returned. 

The object of the rule is two-fold; first, the Commis- 
sioner is the responsible head of the office, consequently 
all office letters should be sent in his name; second, all 
letters and commtmications for the office should be ad- 
dressed to the Commissioner as the responsible head to 
avoid confusion. If this rule is followed communications 
and papers received in the office can be forwarded to the 
proper division promptly and without delay. 

3. Express charges, freight, postage, and all other charges 
on matter sent to the Patent Office must be prepaid in full; 
otherwise it will not be received. 

The office cannot take the responsibility of advancing 
money to pay such charges. If the office should follow 
this practice it soon would have a large number of bad 
debts on its hands. Furthermore, the office has no fund 
for this purpose. 

4. The personal attendance of applicants at the Patent 
Office i^ unnecessary. Their business can be transacted by 
correspondence. 

The main object of this rule is to save applicants the 
expense incurred by reason of journeys to Washington. 



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26 Journal of the Patent Office Society, 

Also the personal attendance of applicants at the Patent 
OflSce is apt to take a good deal of the examiner's time, 
consequently retarding the business of the oflSce. 

5. The assignee of the entire Interest of an invention is 
entitled to hold correspondence with the Office to the exclusion 
of the inventor. 

When an assignment of the entire interest of an inven- 
tion has been made, the entire invention involved belongs 
to the assignee, <;onsequently the assignee, by right of 
his ownership, should have the exclusive control of the 
prosecution of the application. However, to avail him- 
self of the benefit of this rule the assignee must assert 
his right to prosecute the application. This should be 
done in writing and should be made a part t)f the record 
in the case. Then the assignee stands in the shoes of the 
inventor relative to his rights in the prosecution of the 
application. If there is an attorney in the case who ob- 
tained his power from the inventor, the assignee after 
asserting his right should ratify that power or revoke 
that power and appoint an attorney, if he wishes to be 
represented by one, of his own selection as provided for 
in Rule 20. However, even should the assignee fail to 
ratify the power given by the inventor or appoint an 
attorney of his own selection, the office will presume that 
the power given by the inventor is satisfactory to the 
assignee and continue to recognize the attorney appointed 
by the inventor. 

6. When there has been an assignment of an undivided part 
of an invention, amendments and other actions requiring the 
signature of the inventor must also receive the written assent 
of the assignee; but official letters will only be sent to the 
post-office address of the inventor, unless he shall otherwise 
direct. 

The object of this rule is to protect the interest of the 
assignee. In other words to prevent the inventor from 
disposing of the interest of the assignee without the as- 
signee's consent. 

There are seven instances wherein the signature of the 
assignee of an undivided part of an invention is required ; 
they are: 

1. Petitions for the reissue of patents. Rule 86. 

2. Disclaimers of the subject-matter involved in interfer- 
ences. Rule 107. 



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JOUBNAL OP THB PaTBNT OpPIOB SoCIBTT. 27 

3. ConceiBionB of priority of invention to end interferences. 
I Rule 126. 

/ 4. The written declaration of abandonment of an applica- 

tion. Rule 171. 

I 6. Disclaimer embodied in original or reissue applications 

I as first filed or subsequently amended referring to matter shown 
or described, but to which the disclaimant does not choose to 
' claim title. Rule 182. 

6. The written declaration of abandonment of an invention 
I involved in an interference. Rule 126. 

I 7. Revocation of the power of attorney in which the assignee 

' has Joined in the original power of attorney. Ex parte Ander- 
son C. D. 1893, page 12. 

7. When an attorney shall have filed his power of attorney, 
duly executed, the correspondence will be held with him. 

A double correspondence with the inventor and an assignee, 
or with a principal and his attorney, or with two attorneys, 
can not generally be allowed. 

The first paragraph of this rule needs very little expla- 
nation. The function of the attorney is to prosecute the 
application before the oflSoe ; therefore all correspondence 
relative thereto by the examiners should be with the 
attorney. 

The second paragraph relating to double correspon- 
dence is quite important. The object sought to be accom- 
plished by this part of the rule is to prevent the record 
from becoming confused, unnecessarily prolix, and delay 
in reaching final determination of the question in issue, 
any one or all of whi-ch might occur if double correspon- 
dence were permitted. 

You can readily comprehend what the result would be 
if two parties who have no way of knowing what the 
other is doing, were permitted to amend an application. 
The result would probably be a confused and badly mix- 
ed record. Or suppose you have an application wherein 
two parties having entirely different views as to the 
patentable novelty involved and in amending each should 
try to undo what the other had done; this procedure 
would make it rather difficult for the office to briiig to a 
proper termination the prosecution of the application 
that would be just to all parties concerned. 

There is one decision bearing on this rule I desire to 
bring to your attention, as the necessity to use the prac- 
tice therein laid down is apt to occur at any time, and 
that is ex parte Jewett, C. D. 1887-, page 17, wherein prin- 



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28 Joubnaij of the Patent Office Society, 

oipal powers of attorney were given to two independent 
firms, but the applicant failed to designate with which firm 
he preferred the office to hold correspondence. The Com- 
missioner held that the applicant should have designated 
the firm with whom he wished the oflSce to hold corres- 
pondence. If no designation is made, and one of the 
firms resides in some other city than Washington, and 
the other one is located in Washington, which was the 
fact in this case, the office will hold correspondence with 
the local firm because it is more convenient. 

In connection witli this rule it is well to call your atten- 
tion to an order of Secretary Lane, dated Dec. 2, 1916, 
wherein he asked that all official correspondence be 
^* short, simple, and cordial.'* 

Also it is well to keep in mind Commissioner's order 
#2047 of Apr. 30, 1913. This order directs that in appli- 
cations where the -power of attorney is given to a party 
who i«s not registered, as required in Rule 17, the first 
official action on the application shall be mailed to said 
attorney, who at the same time shall be informed that no 
further correspondence will be had with him, nor will 
any communication he received from him, until he shall 
have been properly registered, 

I wish also to call to your attention the notice of Jan. 
30, 1918, of Commissioner Newton, relative to official let- 
ters in applications wherein perpetual motion is involved. 
For further information concerning this order I would 
suggest that you read the order. Copies of the same have 
been recently filed in each division of the office. 

8. A separate letter should in every case be written in rela- 
tion to each distinct subject of inquiry or application. Assign- 
ments for record, flmal fees, and orders for copies or abstracts 

' must be sent to the office in separate letters. 

Papers sent in violation of this rule will be returned. 

The object of this rule is to facilitate the work of the 
office and avoid confusion. Assignments are recorded in 
Division D; final fees go to Division B; orders for printed 
copies of patents to Division F; orders for abstract to 
Division E ; amendments for drawings to Division C; and 
amendments for applications to the various examining 
divisions. From this statement you can readily under- 
stand the delay and confusion that would arise if orders 
and amendments for two or more of these divisions were 
included in a single letter or paper. 



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JoUENAIi OF THE PaTBNT OfFIOE SoCIETY; 29 

9. When a letter concerns an application, It should state 
the name of the applicant, the title of the Inyention, the serial 
number of the application (See Rule 31), and the date of filing 
the same (See Rule 32). 

The reason for this rule is to enable the office to prompt- 
ly identify the application concerned. 

10.. When the letter concerns a patent, it should state the 
name of the patentee, the title of the invention, and the number 
and date of the patent. 

The same reasoning applies to this rule that was given 
in connection with rule 9. 

11. No attention will be paid to unverified ex parte state- 
ments or protests of persons concerning pending applications 
to which they are not parties, unless information of the pen- 
dency of these applications shall have been voluntarily com- 
municated by the applicants. 

The question of patentability is ex parte in character 
and is one between the applicant on the one side and the 
office on behalf of the public on the other side; and no 
one member of the public can be recognized as having 
such an interest in the grant of a patent as to entitle him 
to contest the matter any further than to call attention to 
the matter which he considers a bar. 

If in a protest, tangible matter is presented, as a pub- 
lication, which in the opinion of the examiner is a good 
reference for the invention involved, there is no good 
reason why the office should not use the same as a refer- 
ence against the invention. 

12. Mail reaching the post-oflSce at Washington, D. C, up 
to 4.30 p. m. on week-days, excepting holidays, and 1 p. m. 
bn half-holidays, is entered as received in the Patent Ofiice on 
the day it reaches the post-office. 

Special-delivery letters and other papers may be deposited 
in a box provided at the watchman's desk at the F street en- 
trance of the Patent Office up to midnight on week-days, in- 
cluding holidays, and all papers deposited therein are entered 
as received in the Patent Office on the day of deposit. 

Letters received at the office will be answered, and orders 
for printed copies filled, without unnecessary delay. Telegrams, 
if not received before 3 o'clock p. m., cannot ordinarily be 
answered until the following day. 

The several provisions of this rule are for the purpose 
of preventing applications from becoming abaudoned by 
reason of amendments not being filed in the office within 
the time allowed by law, or allowed applications. from be- 



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If 



30 Journal of the Patent Office Society. 

coming forfeited for lack of payment in the oflHjce of final 
fees within the six months allowed by the Statutes, which 
by oversight or some unavoidable delay could not reach 
the Patent Office during office hours. 

The rule as I have read it is as it should be and in- 
cludes an amendment not found in the printed copies. 
TlLe amendme^it was published June 20, 1916, 227 0. G. 
page 747, and is as follows: 

insertion of the words on week-cUpj/a, inducing holidays, after 
"midnight", in line 3, of the second paragraph. 

13'. Interviews with examiners concerning applications and 
other matters pending before the office must be had in the ex- 
aminers' rooms at such times, within office hours, as the respec- 
tive examiners may designate, in the absentee of the primary 
examiners, with the assistant in charge. Interviews will not 
be permitted at any other time or place without the written 
authority of the Commissioner. Interviews for the discussion 
of pending applications will not be had prior to the first official 
action thereon. 

You will observe that the rule designates no fixed time, 
other than during office hours, for interviews, and has 
very wisely left the designation of the specific time there- 
for within the discretion of each examiner. Under this 
arrangement examiners are enabled to fix the time to 
avoid interruption while hearing cases, looking over their 
letters and other routine work. 

14. The office cannot respond to inquiries as to the novelty 
of an alleged invention in advance of the filing of an applica- 
tion for a patent, nor to inquiries propounded with a view to 
ascertaining whether any alleged improvements have been 
patented, and, if so, to whom; nor can it act as an expounder 
of the patent law, nor as counsellor for individuals, except as 
to questions arising within the office. 

Of the propriety of •making an application for a patent, the 
inventor must Judge for himself. The office is Qpen to him, 
and its records and models pertaining to all patents granted 
may be inspected either by himself or by any attorney or ex- 
pert he may call to his aid, and its reports are widely distri- 
buted. (See Rule 196). Further than this the office can ren- 
der him no assistance until his case comes regularly before it 
in the manner prescribed by law. A copy of the rules, with 
this section marked, sent to the individual making an inquiry 
of the character referred to, Is intended as a respectful ans- 
wer by the office. 

Examiners' digests are not open to public inspection. 

The reason for the first paragraph is clear; the oflSce 
cannot take the time, nor has it suflScient force to look up 



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Journal of the Patent Office Society. 31 

the information necessary to answer such inquiries. How- 
ever, I wish particularly to call your attention to the last 
part of the nrst paragraph, namely, *'nor as counsellor 
for individuals, except as to questions arising within the 
oflSce.'' 

This part of the rule gives the examiner authority to 
make suggestions relative to novelty which occur to the 
examiner during the examination of applications. Sug- 
gestions of this nature can be made with propriety and 
would frequently result in facilitating the prosecution of 
applications. Ex parte Donovan, C. D. 1888, page 100. 

Further consideration of this rule is unnecessary other 
than a brief reference to the first sentence of the second 
])aragraph. The oflSce can not advise inventors to file or 
not to file applications for patents ; this practice would be 
highly improper, by reason of the official knowledge of 
pentling applications. Furtihermoire, should the office 
advise an inventor to file an application and finally re- 
ject the same for want of novelty, the office would soon 
be in hot water. 

15. Pending applications are preserved in secrecy. No in- 
formation win be given, without authority, respecting the filing 
by any particular person of an application for a patent or for 
the reissue of a patent, the pendency of any particular case 
before the office, or the subject matter of any particular appli- 
cation, unless it shall be necessary to the proper conduct of 
business before the office, as provided by Rules 97, 103 and 
108. 

The method of procuring a patent through the I^atent 
Office is a business transaction between the inventor on 
the one side and the public, represented by the Patent 
Office, on the other and a-s it is a wise rule to do business 
in confidence and secrecy the office has seen fit to follow 
this plan in dealing with applications for patents. If 
this course were not pursued and the files were open to 
the public I am of the opinion that the office would re- 
ceive numerous applications for the same invention filed 
by unscrupulous people. The exceptions referred to. 
Rules 97, 108 and 108, arise in interference contests and 
will be fully brought to your attention later in this course. 

16. After a patent has issued, the model, specification^ 
drawings, and all documents relating to the case are subject 
to general inspection, and copies, except of the model, will be 
furnished at the rates specified in Rule 191. 



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32 Journal of the Patent Office Society. 

Since a patent is a contract between the U. S. Govern- 
ment on the one side and the patentee on the other, the 
public has the right to know the full procedure of the 
prosecution of the application, from which the patent 
matured, before the Patent OflSce. Consequently, after a 
patent has issued, the record thereof is open to the pub- 
lic and copies of all or any part of the record may be ob^ 
tained for the usual consideration. 



RULES 17 TO 23 INCLUSIVE. 



By H. C. Armstrong, examiner. 



(Delivered before the fourth assistant examiners.) 



Rules 17 to 23 inclusive have to do with the relations 
of applicants and attorneys to the Patent Office and of 
attorneys to their clients, so far as these latter relation- 
ships affect the Patent Office. 

The appearance of patent attorneys in cases pending 
before the Patent Office is not based upon any patent 
statute but upon the general rules of agency in conformity 
with which the inventor, having appointed an attorney to 
represent him in his application for a patent, is bound by 
the acts of his agent so long as the latter acts within the 
law and without fraud. 

The power of attorney is usually enibodied in the peti- 
tion in the following form: — 

'^and he hereby appoints John Doe, of New York, State 
of New York, Ms attorney with full power of substitution 
and revocation, to prosecute this application, to make 
alterations and amendments therein, to receive the patent, 
and to transact all business in the Patent Office connected 
therewith.*' 

Under such a power he may prosecute the application 
in all lawful ways, substitute another principal iattomey 
for himself, appoint an associate attorney or attorneys, 
and evfen sign a petition for the renewal of the application, 
if' it become forfeited. {Ex parte Agee, 101 0. Q-. 1609 
and LeBrou vs. Nix, 177 0. G, 771)^ Such a power, Jiow- 



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Journal of the Patent Office Society. 33 

«ver does not authorize him to cancel all the claims, {Ex 
parte Lasseell, 28 Q. G. 1274). 

Rule 17. 

The first paragraph of Rule 17 is advisory in character, 
pointing out to tiie prospective applicant the desirability 
of obtaining the services of an attorney skilled in the pro- 
secution of applications for patent. It is recognized that 
certain inventors, by reason of previous special training 
or by experience acquired by actual prosecution of many 
cases before the Patent Office, have attained the skill 
requisite for safely prosecuting their own cases, but these 
are the exceptions, the general rule being that he who 
prosecutes his own case m ill served. 

When the examiner receives an application prepared 
by an applicant obviously not sufficiently skilled in Pat- 
ent Office practice to properly conduct his own case he 
should tactfully call attention to the first paragraph of 
Bule 17. It not infrequently occurs that an inventor, by 
reason of poverty, ie unable to employ the services of an 
attorney apd must, perforce, handle his own case as best 
he may. In such case the examiner should, to the extent 
permitted by his limited time, assist the applicant so 
circumstanced to obtain claims commensurate in scope 
with his invention, whatever that may be. 

The second paragraph of Bule 17 sets forth in detail 
what persons may be registered by the Patent Office to 
act as attorneys in prosecuting applications before it and 
the procedure for obtaining such registration. The para- 
graph is clear in its terms and need not be discussed save 
to point out, in addition to the persons excluded by im- 
plication from registry under paragraph (g) of this rule, 
certain persons who are by law specifically excluded from 
registration or from acting as attorney in specific cases. 

Section 1782 B. S. provides that ''no Senator, Bepresen- 
tative, or Delegate, after his election and during his 
continuation in office, and no head of a department or 
other officer or clerk in the employ of the Government 
shall receive or agree to receive any compensation what- 
ever, directly or indirectly, for any services rendered,, or 
to be rendered to any person, either by himself or an- 
other, in relation to any proceeding, contract, claim,. 



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34 Journaij of the Patent Office Society. 

controversy, charge, accusation, arrest or other matter 
or thing in which the United State® is a party, or direct- 
ly or indirectly interested, before any department, court 
martial, bureau officer, or any civil, military or naval 
commission whatever.'* 

The opinions of the Assistant Attorney General given 
in In re Bloch, 128 0. G. 457 and in re Eggan, 194 0. G. 
951, hold that the granting of a patent is a matter in 
which the United States is directly or indirectly inter- 
ested and that therefore the parties enumerated in the 
above statute are ineligible for registry as patent attor- 
neys or to prosecute any patent cause as attorney. 

Section 558 of the District of Columbia Code, published 
in 123 O. G. 659, provides that 

No notary pubUc shall be authorized to take acknowledg- 
ments, administer oaths, certify papers, or perform any official 
acts in connection with matters .in which he is employed as 
counsel, attorney or agent in which he may be in any way 
interested before any of the Departments aforesaid. 

This proviso was construed by the Attorney General 
127 0. G. 3642, to apply to all notaries who may practice 
before the Departments and not merely to notaries of 
the District of Columbia, and such construction was ap- 
proved by the D. C. Court of Appeals in Hall's Safe Co. 
vs. Herring-Hall-Marvin Safe Co., 135 0. G. 1804. 

In Rieger vs. Beierl, 150 0. G. 826, where the oath form- 
ing part Qf the application papers was held invalid and 
without legal effect because executed before the attor- 
ney in the case, the proper procedure upon receiving 
such an application is indicated. 

Applications so executed will not be forwarded to the ex- 
aminer but notice to file a proper oath will be given applicant 
and the application will not be given a date and serial number 
until the papers are so completed. 

It may be stated that the difficulty may be avoided 
either by filing a new oath executed before another 
notary, or filing a new power of attorney to a person 
other tlian the notary before whom the oath was taken. 

In case an application is received with a power of at- 
torney to a person not registered under Bule 17 the pro- 
cedure to be followed is stated under Order 2047 as fol- 
lows: — 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 35 

In all applications for patent, in which the power of attor- 
ney Is to a person who has not been registered under the pro- 
visions of Rule 17, the first office letter in the case will be sent 
to the attorney, who at the same time will be informed that 
until he has been registered, no further correspondence will 
be had with him, nor will any communication be received from 
him, in relation to the case. 

This order will not apply in particular cases in which spe- 
cial recognition has been extended to unregistered attorneys. 

Rule 18. 

A power of attorney, to be acceptable, must satisfy the 
following requirements: 

It must be — 

a. written. 

b. signed as a rule by the inventor or by the adminlstrar 
tor or guardian of the inyentor or by the joint inven- 
tors, if the invention be joint. 

c. name each and every person to whom the power of 
attorney is given. 

d. bear a canceled twenty-five cent war revenue stamp 
if dated on or after December 1, 1917. See Order 
2361, reading as follows: 

The revenue law of October 3, 1917, effective December 1, 
1917, as to operations in the Patent Office, requires a documen- 
tary revenue stamp to the value of 26 cents to be afilxed to 
each power of attorney (either original, associate, or substi- 
tute), and canceled. No power of attorney dated on or after 
December 1, 1917, will be recognized unless such revenue 
stamp has been so affixed and canceled. The application clerk 
has been provided with rubber stamps, and has been instructed 
as to the use of such rubber stamps in treating powers of 
attorney filed with applications for patent, and to which the 
necessary revenue stamps have not been affixed. 

When the revenue stamp has not been affixed to the power 
of attorney, the examiner will in his first action call the attor- 
ney's attention to the requirement for the stamp and notifsr 
him that no amendment will be entered until the stamp has 
been affixed. 

If an amendment is filed without supplying the revenue 
stamp, the clerk will not enter it but will call it to the examin- 
er's attention who will immediately notify the attorney that it 
cannot be entered. 

While the general rule is that joint inventors mnst 
each sign the power of attorney, certain exceptions have 
been, made on grounds of eqnity: 

Where one of two Joint applicants subsequently files a sole 
application for the same improvement, a power of .attorney 
executed by the other of the joint applicants and their assignee. 



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36 JOUBNAL OP THE PaTBNT OpFIOB SoOEBTY. 

the other Joint applicant refusing to Join therein, will be ac- 
cepted by the office as sirfflcient. 

The rule is familiar that where there are two men owning 
a patent and one of them desires to bring an equity suit for 
* infringement in which the other will not Join, the former may 
bring the suit, naming and making his co-owner a nominal 
defendant. The underlying principle of that equity practice 
warrants the approval of the power of attorney presented by 
Bailey and the assignee. (Ex parte Benjamin & Bailey, 59 
O. G. 298.) 

Where one of two Joint inventors seeks to cause abandonment 
of their application by preventing amendment thereof, permis- 
sion will be given the coinventor to prosecute the application 
throught an attorney of his own selection. 

In this case the attorneys for the joint inventors conld 
not amend becanse Barrett had all the papers and re- 
fused to allow them to give an associate pDwer to the 
attorney of the other joint inventor *s selection. Ex parte 
Barrett and Alter, 127 0. G. 847. 

It seems to be well settled that one of two Joint applicants 
cannot appoint an atorney without he concurrence of the co- 
applicant except upon a showing of inability to obtain such con- 
currence. 

The co-applicant may afterward concur and render tlfe power 
valid but such validity dates only from the concurrence and is 
not retroactive. Ex parte Deforest and Horton, 141 O. G. 566. 

Where the entire invention has been assigned prior to 
the filing of the application the power of attorney should 
be signed by the assignee as well as by the inventor. Ex 
parte Ackerman 17 0. G. 1036. 

Ex parte Hinkson, Hey & McConahy, 111 0. G. 2220. 
llinkson and Hey assigned their rights to McConahy and 
another, who then asserted their rights and appointed an 
attorney of their own. Hinkson and Hey then asserted 
that MeConahy was not a joint inventor, and filed a joint 
application and a power of attorney in the original joint 
application which McConahy would not sign. The two 
applications were placed in interference. The power of 
attorney by Hinkson and Hey was refused since it would 
permit the two applicants to conduct both sides of the 
interference to the exclusion of the third applicant. 

The rule says: — 

General powers given by a principal to an associate cannot 
be considered. In each application the written authorization 
must be filed. 

In this respect Patent Office practice differs from general 

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JouBNAii OP THE Patbnt Officb Socibty. 37 

practice where one may give a general power of attorney 
to handle all his business affairs, whatever they may be. 
Each patent application file must contain the power of 
attorney which applies to itself and to no other. For in- 
stance — 

Where the power of attorney given by one of the executors 
iB not signed in person but by one claiming to act as his gen- 
eral attorney, the power of attorney should not be recognized 
since the rule of the office which denies recognition to general 
powers of attorney is applicable. Ex parte Rogers, 125 O. G. 
2766. 

Rule 19. 

Rule 19 is self explanatory but there may be mentioned 
in connection with it a certain old decision, ex parte 
Banks, 38 0. G. 329, which held— • 

An "associate attorney" cannot be nominated by an appli* 
cant without the consent of the regular (or principal) attorney. 

The regular course would be for such principal attorney to 
nominate his associates upon the written authorization of his 
client. • 

I happen to know that a petition from the application 
of this rule was taken to Commissioner Ewing and grant- 
ed with the laconic indorsement ''Whether principal or 
associate, it makes no difference/' So far as published 
decisions go, ex parte Ranks still stands. 

Rule 20. 

The oflBce of a patent attorney is not permanent or con- 
tinuous, like that of an attorney in a court of law, but 
exists only by virtue of employment in particular cases. 

As between the applicant and his attorney, a notifica- 
tion of discharge, when received at the Patent Office, 
terminates the right of the attorney to act for the appli- 
cant before the office and also the right of the office to 
correspond with him as attorney. 

A reasonable notice of such discharge to the opposite 
party is an interference case terminates the right of such 
party to deal with the discharged attorney as the attor- 
ney of the applicant. Hoosier Drill Co. v, Ingels, 15 0. G. 
1013. 

The assignee of the entire interest in an invention has 
the right to intervene at any time, revoke all existing 



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38 JoURNAIi OF THE PaTBNT OfFICB SoCtETY. 

powers of attorney and either prosecute the application 
himself or appoint an attorney of his own selection, not 
only to the exclusion of the inventor but of his adminis- 
trator, if the inventor be dead. Ex parte Wick, 117 0. Q. 
902. 

Ex parte Hertford, 113 0. G. 851, construes the term 
entire interest as used in this rule as mean a legal and not 
an equitable interest. In this case the assignment was for 
the entire interest but lacked the request that the patent 
issue to the assignee (Rule 26) and the assignment was 
held to be for an equitable and not a legal interest. The 
assignee having filed a power of attorney, denominated 
by him an ** associate power", it was held that it should 
be entered on the file as a power to inspect only and not 
as an associate power of attorney. 

Where there are conflicting assignments of the entire 
interest, neither assignee will be recognized in appoint- 
ing an attorney. (Ex parte McTammany, 93 0. G. 751.) 

When an applicant alone makes a power of attorney he 
may revoke it and appoint anew to the exclusion* of every 
one except the assignee of the whole interest, but when an 
applicant joins with the assignee of less than the whole 
interest, or with the grantee or licencee in making a 
power, it will require the cooperation of both to revoke 
it. Ex parte Anderson, 62 0. G. 449. 

A power of attorney to prosecute an application for 
letters patent is irrevocable by the applicant without the 
consent of the attorney if it forms part of a contract en- 
tered into for a valuable consideration which creates a 
beneficial interest in the patent in favor of the attorney 
appointed by that power. {In re Harrison, 13 0. G. 
547.) 

An assignment of one-third interest to the attorney, 
existing at the time of filing the power, is such a con- 
tract and the power is irrevocable. {In re Edwards & 
Gregory, 110 0. G. 860.) 

Neglect to pay the attorney's fees does not confer such 
a beneficial interest on the attorney and the -power is 
revocable. {Ex parte Resell, 197 0. G. 535). 

A power of attorney coupled with a promise to pay to 
the attorney ten per cent, of all money received for the 
invention is an interest in futvro, an equitable and not 
a legal interest, and does not render the power of attorney 



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JotJRNAIi OF THE PaTENT OfFICE SoCIETY. 39 

irrevocable. {Ex parte Firsching, 80 0. G. 1272). 

As a rule the death of the inventor revokes a power of 
attorney given by him and a new power signed by his ad- 
ministrator or executor should be required. In Eagle- 
tonManufacturing Co. vs. West, Bradley & Carey Manu- 
facturing Co., 27 0. G. 1237, the court said: 

The authority giyen the attorney is only to amend the appU- 
cation and ceases at the death of the inventor. 

The only invention to which the oath and application of 
Eagleton were referable wcub that of merely japanning steel 
furniture springs; the authority given to his attorney was only 
to amend that application and ended at his death. The amend- 
ments made after the inventor's death were not mere ampli- 
fications of what had been in, the application before the patent 
was granted without any new oath by the administratrix. 

The court held this patent invalid but there is an im- 
plication in the decision that if the attorney had not ex- 
ceeded his powers by introducing new matter after the 
d-eath of the inventor, but had confined his amendments 
after that event to the original disclosure, the patent 
might not have been held to be invalid. 

This view was taken in a subsequent decision of the 
Supreme Court in DeLaVergne Refrigerating Machine 
Co. vs. Featherstone et al, 62 0. G. 741, in which it said : 

Where objection was made to the validity of a patent because 
of an amendment made by the attorneys after the applicant's 
death, no new power of attorney having been filed at the Pat- 
ent Office and no administrator having intervened and filed a 
new oath, Held (1) the amendment was within the scope of 
t^e original specification and required no new oath; (2) It 
appearing that the attorneys had power in fact to act and that 
their acts were subsequently ratified by both adminstratrix 
and assignee, the amendment did not invalidate the patent. 

The following excerpts from In re Mattulath, 179 0. G. 
853, are of interest in this connection as indicating the 
position of the D. C. Court of Appeals on this question: 

The inventor died and the office, acting on information not 
part of the record, refused to accept an amendment filed by the 
attorneys, and a letter was addressed to them notifying them 
of the revocation of their power by the death of the inventor. 
The application in due time became abandoned by failure to 
prosecute. After a lapse of seven years Mattulath's widow filed 
a petition to revive which, after refusal by the Commissioner, 
was granted by the D. C. Court of Appeals. In discussing the 
case the Court said: "Notwithstanding this express revocation 
(by the Office) no attempt was made by the Office to notify 
the widow, which it is said by the Commissioner it was under 



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40 JoUBNAIi OF THE PaTBNT OfPICB SoCIBTY. 

no obligation to do even if aware df her name and address. 
Rule 20 is the only Office rule regarding notice in case of the 
revocation of a power of attorney and this the Commissioner 
held did not require notice to the applicant. The rule, con- 
strued literally, does not seem to require notice to the appli- 
cant's representatives but such construction is within its spirit." 
And further: "The delay in revieving the application would, 
in reasonable probability, not have occurred. but for the strange 
action of the Office in acting upon some unexplained source 
of knowledge of the death of the applicant and holding that 
the death absolutely and at once revoked the power of attorney 
of his solicitors. The amendments proposed by them, presum- 
ably without knowledge of their client's death, were formal; 
they contained no amplification of the original application and 
required no additional oath. That the power to make such an 
amendment had not been revoked by death, and that action 
could have been taken upon it lawfully, had been declared by 
the Supreme Court in DeLaVergne Machine Co. vs. Feather- 
stone, 62 O. G. 741. This decision ought to have been well 
known in the Office." 

The notice of revocation from the Docket Clerk, refer- 
red to in Rule 20, applies only to principal attorneys. 
Notice of revocation is given to associate attorneys by 
the primary examiner under Order 2024, and does not 
require approval by the Commissioner. ' 

Order No. 2024. 

To Principal Examiners: 

It is hereby directed that associate attorneys whose powers 

have been revoked shall be formally notified of such revocation. 

Such notice, addressed to the associate attorney, will take the 

form of the usual letter from the Examiner, on blank 2-260, 

and will be in the following language: 

You are hereby informed that the associate power of at- 
torney to in the above-entitled case was re- 
voked on ■ 

by principal attorney. 

Examiner, Div. 111. 

Rule 21. 

Requires no discussion. 

Rule 22. 

Although not mentioned in the rule the converse of 
paragraph (a) is equally important. If courtesy is re- 
quired from applicants and attorneys, it is also due tliem. 
Those having business with the Patent Office should be 
given every courtesy and consid-eration possible and all 
official letters should be courteously worded, supply all 
necessary infonnation clearly and fully, and be entirely 



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JoUBNAIi OP THE PaTBNT OfPIOE SoCIBTY.. '41 

free from any hint of personal feeling or controversy. 
The examiner represents the Government and his official 
actions should not belittle the dignity of the relationship. 
The following decisions are qnoted to illustrate para- 
graph (b): 

Duryea & White v. Rice, 114 O. G. 761. A petition and brief 
filed In a case should not Include Irrelevant matter relating to 
the conduct of some officer of employe of the department. 
Charges against employes should be presented separately. 

Maynard, 137 O. G. 1940. The filing of petitions requesting 
that an application be transferred from one division to another, 
which are In the nature of complaints, condemned. 

Eggan, 172 O. G. 1091. The impropriety of filing a petition 
from the action of the examiner and at the same time filing a 
complaint against the examiner based upon the same state of 
facts is obvious and such a practice cannot be too severely con- 
demned. 

(c) and (d) 

The leading decisions upon these paragraphs are In re 
John Wedderbnm and John Wedderbum Co., 81 0. G. 
159, and TJ. S. ex rel, Wedderburn v. Bliss, Secretary of 
the Interior, 81 0. 6. 1783. Under their construction the 
hearing is before the Commissioner of Patents whose de- 
cision does not go into effect until after it has been ap- 
proved by the Secretary of the Interior. The hearing is 
Dot before the Secretary personally, nor it the decision 
appealable to him, the Commissioner acting in his ad- 
ministrative capacity only. 

Rule 23. 

The purpose and reasonableness of this rule are ob- 
vious. It only remains to call attention to the fact that 
the reference to possible powers of attorney given to 
Members of Congress is entirely superfluous, since we 
have seen; in discussion of Rule 17, that Members of Con- 
gress cannot be registered or act as attorneys in any 
patent cause pending before the office. 



ASSISTANT EXAHINEKS WANTED. 



A number of vacancies exist in the grade of fourth 
assistant examiner, carrying the salary of $1,500, to which 
the attention of technically trained persons is earnestly 
invited. 



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4&^ ' JatrB»Air oy tbb Pat»nt^ Otbucb SOoibty. 

PeiittaDdcrt appoi»tJ»ents will be secured by passing' 
the^ re^miPBd' Civil Service ExaminatiMi; iirf<yrmfati'<m 
wheWof nmy be had iipon application to the Civil SetTiee 
Commisffi'Oii, Washin^on, D. C. 

Temporary appointment may be given persons exhibit- 
ing the required trai<ning in mathematics, chemistry, 
physics, m^echanical drawing and Prench or German, 
pending their taking the Civil Service Examination and 
obtaining a rating therefrom. 

Persons not subject to the draft for military service and 
having the necessary education are invited to write to 
the CommissioBer of Patents relative to temporary ap- 
pointments. 

Promotion to the higher grades is reasonably rapid. 
The work commends itself to college and technical school 
graduates especially, is considered as interesting as any 
in the Government Service, and in many of its branches 
is held very important in the prosecution of the present 
war. 



OF PfiBaONAL INTCftfeSl!. 



Otir New Chief Olerk. 



On May 3, 1918, Law Examiner Melvin H. Coulston was 
appointed Chief Clerk. H^ joined the Examining Corps 
Feb. 17, 1902,. and was promoted through the grades to 
first assistant examiner, which position he attained July 
14, 1910. He was made law examiner Nov. 16, 1915, and 
given charge of the installation of interferences. For 
this work he was peculiarly equipped as he Jiad seen 
service in several divisions of the office, including the 
Interference Division, and for over five years' had been 
detailed to assist the board of examiners-in-chief . Mr. 
Coulston has the reputation around the office of being a 
*^ hustler'*; he was manager of the very successful cam- 
paign for subscriptions to the second Liberty Loan; he 
is President of the Patent Offijce Society and the society 
tAkee no little' pride im his selection f6r ttiis important 
poeition^ 

. ii >■« ■* I 111 

Primary Examiner L. D. Underwood has been lAUd^ 

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JoTTBOiiti/ or THPH Patwti OrFiOB Society. 4& 

law examainer, vice Mr. GJoulston and succeeds to Mr. 
Coulston's work. Mr. Underwood has been primary eci^ 
aminer since Juiy 1^.1909, coming up through the grades. 
While assistant examiner he was acting Law Clerk 
from Oct. 12, 1905 to July 1, 1909; he is the compiler of 
the well known Underwood Digest and is reckoned as 
having an unusual knowledge of decisions* 



Mr. Underwood having left Division 45 to assume the 
duties of law examiner, Mr. A. H. Giles, primary examin- 
er in charge of Division 21, was transferred to preside 
over Division 45, a change in work concerning which Mr. 
Giles has expressed himself as abundantly pleased. 



''Welcome the coming, speed the parting guest.'' 

We extend greetings to the following additions to the 

Examining Corps appointed since July 1, 1918, to the 

grade of fourth assistant examiner. 

Edw. C. Johnson of Col. 
Preston M. Nash of Md. 
Virgil C. Kline of Mo. 
Miss Jessica Dee, of Mass. 
Ernest F. Klinge of D. C. 
Don Carloss Ryan of Ky.. 
•Paul Kamper of Mich. 
Albert L. Cooper of Penn. 
Simon Saperstein of N. Y. 
Wm. W, Seals of Texas. 
Aubrey D. McFayden of N. C. 
Simon Bimbaum of N. Y. 
Wm. Katz of N. Y. 
Miss Alberta V. Haden of D. C. 
Bobt. V. Moss of N. C. 
Arthur A. Johnson, N. Y. 
Miss Mary B. Davidson of Tenn. 
Boswell A. Bryant of Md. 
Alfred T. Hyde of Va. 
Geo. E. Sartwell of D. C. 
Miss O^aee MacFarland of Cal. 



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44 JoXJBNAIi OF THE PaTBNT OfFICXB SoOIBTT. 

Within approximately the same time the Corps has 
sustained the following losses through resignations: 

H. E. Stauffer, Examiner of Interferences. 

Wm. F. Woolard Primary Examiner. 
*B. T. Bauber, Second Assistant Examiner. 
•H.F. Freeman " " " 

•H. C. Berm3n 
•Chas. Silver 
•Edw. C. Taylor " 
•CarlF, Kraft 
•C. H. Biesterfeld " " 

H. A. Whitehorn " " " 

•A. M. Pedersen Third Assistant Examiner. 
•Edw. A. Hampson " " " 

F. E. Haskell " " " 

•KF.Doweli " " 

•Towson Price " " " 

•M. J. Reynolds " " " 

•G. E. Douglas " " " 

•A. C. Nolte " " " 

•H. H. Jacobs " " " 

•W.S. Brown ** " " 

J. W. Morrison " " " 

•L.A.Maxson " " " 

•J. L. Fearing " " " 

•Jos. A. Kurz " " " 

•D. N. Halstead " " 

•John Flam " " " 

•Sol Shappirio " " " 

•Lee R. Grabill, Jr. " " " 

• Jas. T. Erwin, Jr. Fourth Assistant Examiner. 
•F. W. Dodson " " " 
•Chas. F. Blakely " " " 

JohnJ.Darbv.Jr." " " 

•Wm. L. PhilUps " " " 

•R. J. Gilcher " 'V " 

• Entered Army or Navy service. 



Mr. Henry E. Stauffer was appointed fourth assistant 
examiner Jan. 25, 1893, from Delaware. He was pro- 
moted through the several grades and made examiner of 



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JOUBNAL OF THE PaTBNT OfFICE SoOIETY. 45 

interferences May 6, 1910, which position he held till he 
resigned June 12, 1918. He served several years in each 
of Divisions 19, 30 and 37; he was for four years an 
assistant examiner in the Interference Division before his 
elevation to the head of this division. 

He is now associated with the National Cash Begister 
Company at Dayton, Ohio, in which new field we wish 
him success. 



Mr. Wm. F. Woolard was appointed fourth assistant 
examiner on July 1, 1891, from Elinois. He, too, was 
promoted through the grades to primary examiner, which 
position he attained May 8, 1906, being placed at the 
head of Division 21. On July 1, 1907, he was appointed 
Chief Clerk and occupied this position uiitil May 3, 1918, 
when he returned to Division 21 as primary examiner. 
As a member of the corps he was always connected with 
Division 21. He resigned July 10, 1918, to be associated 
with Erwin and Wheeler, Milwaukee, Wis., carrying 
with him the best wishes of an exceedingly large circle 
of friends and acquaintances. 



The new head of Division 21, Mr. Wm. F. Thurber, 
was appointed to the corps Dec. 21, 1903, from Massa- 
chusetts he has seized in all the grades as assistant ex- 
aminer. With the exception of four and a half years in 
Division 38 he has been engaged in the Classification 
Division and has reclassified many classes throug'hoiit 
the office. He brings to Division 21 a practical knowledge 
of textile manufacturing gained before he came to the 
office by courses of study at the New Bedford, Massa- 
chusetts, Textile School and several years ' work in textile 
mills in Massachusetts and Texas. 



Mr. Charles S. Grindle made examiner of interferences, 
June 17, 19i8, was transferred from Division 31 over 
which division he had charge since the death of Dr. Ely. 



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46 JoUBNAIi OF THE PaTBHT OfFICB ^OCIBTY. 

Mr. Orindle was appointed as fourth assistant examiner 
November 5, 1903 and made primary examiner August 
1, 1916, being then given charge of Division 14. For six 
years, as assistant examiner, he was in the Interference 
Division and thus is abundantly qualified to determine 
interference contests. 



Mr. Gfeorge A. Lovett took Mr. Grindle's place at the 
head of Division 31 on June 17, 1918, at which time he 
was promoted from first assistant to primary examiner. 
Mr. Lovett has been a member of the corps, since April 
1, 1905 and after serving something over three years in 
Division 12 was transferred to the Classification Division, 
where he remained till his recent promotion. Mr. Lovett 
has the degree of Ph. B. from Findlay College, and A. B. 
from Indiana University, wliere his major study was 
chemistry. 



In noting changes in the personnel of the corps it seems 
not inappropriate to remark on the recent addition of 
ladies thereto. While for some years the corps was 
graced by a sole representative of the sex, there are now 
no less than nine therein. Concerning their work one 
primary examiner has recently remarked, '*Send me some 
more if they are as good as those I have.^* 



Captain Burns, formerly of Division 5, and Captain 
Zacharias, formerly of Division 34, recently registered at 
the headquarters of the American Universities in Paris 
giving their addresses as 60th Begt. Art., A. P. 0. 702; 
we trust their many friends will fix up their address 
books accordingly. 



Captain Hodgkins is another of the Patent Office ex- 
aminers to get into the thick of it abroad, he having 



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sailed for FraAoein tbe middle of Aiiigiust. He is con- 
nected with the staflf of the 35th Brigade Coast Artillery, 
A. E. F. and this address should be kept in mind by his 
numerous friends. 



We note with regret the death of Ensign Delozier 
Davidson formeriy a member of the corps. He was killed 
in France August 17 in consequeurce of an accident whiles 
flying' in a seaplane. A graduate of Lehigh University 
he was appointed a fourth assistant examiner Dec. 21, 
1915, and was assigned to Division 24. In August, 1917, 
he was promoted to the position of third assistant ex- 
aminer and resigned soon afterwards to enter the avia- 
tion branch of the Navy. His father was for many years 
a member of the firm of Baldwin, Davidson and Wright 
of this city. ^ 



ROGERS om PATENTS 

BY 

WALTER F. ROGERS 

OP THE WASHINGTON BAR 

Condensed Table of Contents 

AmendlniTy Correetlns or Repemllas €lrlirla mad Nature of Patenta. 
Patcat. Patentability — What la Patentable. 

Title 0».t. I-heH..-c. A...... S^/p'Sfj; »S*«l^IUotS-...«.- 

^^ aad Pnaotlona. 

UeeBsea, Contracts and R«strlc- Applleatloaa— ProceedlaWi la tHe 



Patent Office. 

RearnlatloBB of Dealteiir» in Patent Appeals from ConMalMiioncr of 

Rlfphtn and Patent Articles. Patents. 

Coarts. Cannes, Parties and Trials. Designs. 

Actions at Law. Interferenc e s O rligln aad Proeeed- 

Snlts la ICqvlty. are la Patent Office. 

InJnnctloBS. Iictters Patcat and Their Coastmc- 

Accoantlnar, Profits and Daatascs. tloa aad Scope. 

CostSf Contempts and Fines. Infrlnirement. 

THE PRINOIPLES 

THE RULES 

THE STATUTES 

THE CASES 

Two Large Volumes 1900 Pages Bnckram Binding 
Price 916.00 Delivered. 

Tlie Bobbs-Merrill Company, Publishers 

INDIANAPOLIS, INDIANA. 



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48 Journal of the Patent Office Society. 

WALKER on PATENTS 

Fifth Edition 

By JOHN H. HILUARD and EUGENE EBLE 

The Standard Legal Authority 

Few publications appearing in the legal bibliography of this coun- 
try are so initmately associated by the profession with the particular 
matters upon which they are written as is Walker on Patents. It Is 
so generally recognized as the standard treatise on the Law of Pat- 
ents for Inventions, and has been quoted so extensively and approv- 
ingly by the United States Courts, that practitioners have come to 
rely upon it as the final authority on the subject. 

It is in one large octavo volume, more than 1275 pages, handsomely 

bound in bnckram. Price $12.00 delivered 



One of the Most Important Law Books Published in a Decade 

UNFAIR OOBfPETITION 

INCLUDING 

The Law of Trade Marks 

By HARRY D. NIMS 

SKCOND EDITION 

A new, revised and enlarged edition of the first book of its kind 
which deals with the equitable principles applicable to all sorts of 
unfair methods of competition in business. It is the standard treatise 
and contains nearly twice as much matter as any other work on the 
subject. 
One of the many New Chaptem dlncnasea 

Unfair Competition by VarloiM MUcellaneoaii Actii Held to be Unfair* 
as follows: 
Acts Contributory to Unfair Acts. Passing: off the Goods of a Third 
Disparasrment of a Competitor or Party. 

his Goods. Sale of Inferior Goods, or Seconds, 

Dlsparagrement, Not of the Goods of as Usual Quality. 

a Specific Competitor, but of the Use of Prices to Inflict Definite In- 

Article Sold by a Number of Com- jury on a Competitor. 

petltors. The Use of Prices for Advertiainsr • 

Obstruction of a Competitor's Cus- Purposes or as a Decoy. 

tomers. Unfair Use of Price as a Means of 

Misuse of Term "Sole Proprietor." Competition. 

Unfair Appropriation and Use of a Local Price Cutting. 

Competitor's Ideas and Methods. Where the Use of Cut Prices Ac- 
Use of False Advertisingr. companies Unfair or Inaccurate 
Advertising:, Appropriation of, by Descriptions of Goods. 

Competitor. * ^ * Competition by Unfair Comparison 

Unfair Solicitation of Customers. of Prices 

^*lemo^^^"'^ ""^ ^^""'^ ""' * ^''"" Corporate Stock. Acquiring for 

Bribery as a Means of Competition. Purpose of Unfair Competition. 

Injuring: a Rival by Pretended Inducingf Breach of Contract by 

Business Competition. Offers to Save Harmless. 

In one Large Volume, Bnckram, Price $10.00, Delivered 

BAKER, VOORfflS & COMPANY 

45 & 47 JOHN STREET NEW YORK, N. Y. 



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JAMES MADISON, Age 76 
Bust by Cardelli 



Made in 1827. In possession of the Virginia Historical Society 

at Richmond. 

Ileproduced by Courtesy of the Autlior from tlie 
"Life of James Madison", by Galllard Hunt, Es(i. 

(See 'Leprlslative BeginnlnKs of the Federal Patent System," pase ol.) 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Office Society 

Office of Publication 1315 Clifton St., Washington. D. C. 
Subscription $2.50 a year Single copy 25 cents 

EDITORIAL BOAKD. 

E. D. Sewall, Chairman, Publicity Committee. 
G. P. Tucker, Editor-in-Chief. 
J. Boyle. 
A. W. Davidson. 
W. I. Wyman, 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washingrton, D. C. Phone Col. 290. 

Entered as second class matter. September 17, 1916, at the post office 

at Washington, D. C, under the act of March 3, 1879. 

Copyright, 1918, by the Patent Office Society. 



Publication of signed articles in this Journal Is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 

VOL. I. OCTOBER, 1918. No. 2 



EDITORIAL. 



The modest advent of the Journal has elicited many- 
kindly messages of commendation. The editorial board 
appreciates and acknowledges with thanks the friendly 
interest expressed by subscribers, and trusts that future 
pages will grow in interest and merit with each succeed- 
ing number. The Journal can fill the vacancy in period- 
ical literature that was deemed to warrant its creation 
when all of its subscribers take a vital and active inter- 
est in its success. 

)m 

Beginning with the article on Jefferson, the first ad- 
ministrator and interpreter of the American patent law, 

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50 Journal of the Patent Office Society. 

which appeared in the September number, short articles 
will be printed from time to time on men whose efforts 
have aided in the development and fixation of the patent 
law and practice. 

Ii«— ^ 

The series of interpretative commentaries on the 
Eules of Practice begun in the September number will be 
continued from month to month, taking up each rule in 
numerical order until the series shall have been com- 
pleted. The Eules constitute an inexhaustible source of 
ideas which can be tapped only lightly in this series. 
The commentaries were prepared primarily for the in- 
struction of assistant examiners to aid them in their 
daily work; but they will, it is believed, be useful to all 
persons who have business before the Patent Office. 
They are, of course, authoritative only in so far as they 
are based on cited competent precedent. Doubtless many 
persons will differ with some of the deductions or inter- 
pretations to be found in them. It is hoped that disa- 
greement will evoke discussion. By careful and thor- 
ough discussion, defects (if any exist) in the law, the 
prevailing interpretation of it, its administration, the 
modes of procedure, or the organization of the courts or 
Patent Office, will be uncovered and the way to improve- 
ment cleared. 



The wise man of the parable digs deep and builds his 
house upon a rock. On what sort of a foundation does the 
manufacturer of a patented article erect his industry! 

The builder for the patentee is the solicitor of patents. 
Upon the intelligence and care with which the solicitor 
draws his description and claims depends the stability 
and effectiveness of the patent. In an oft-quoted sen- 
tence no less an authority than the United States Su- 
preme Court has recognized the high quality of skill re- 
quired in the drafting of patent claims. The ideal pat- 
ent solicitor should be artisan, engineer, scientist, law- 
yer, philosopher and prophet — nothing less. And yet, 
even officers of the executive departments have fallen 
into the error of classifying patent solicitors with claim 



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Journal of the Patent Office Society. 51 

agents, and with surprising frequency the inventor and 
investor choose to pinch on the foundation and spend 
in salvage. 

In England, a patent agent is obliged to qualify to 
rigid standards. In the United States, the standards 
admitting to registration are more easily attained. A 
high standard of requirements to practice before the Pat- 
ent Office would go far to eliminate the incalculable 
waste of wealth in litigation over imperfect patents. 
Soliciting of patents that are to form the basis of invest- 
ment of capital in industry should command as careful 
attention as litigation in the courts and be appraised as of 
equjal value. 

The wise manufacturer will take care that the patents 
upon which he risks his capital are sound and of proper 
scope. 



LEGISLATIVE BEOINNINGS OF THE FEDERAL 
PATENT SYSTEM. 



By Wm. I. Wyman. 



Of all the fathers of.the Eepublic, the three most proni- 
inently identified with the sponsorship of legislation ini- 
tiating the patent system are the three most readily asso- 
ciated with the constructive operations which led to the 
adoption of our Constitution and the beginning of our 
government. Madison is mainly responsible for the in- 
troduction into the Constitution of the provision which 
is the basis of patent protection, Washington urged upon 
Congress the importance of supporting it by appropriate 
legislation, and Hamilton supported the cause by argu- 
ment and fact. 

Madison has been called the ** father of the Constitu- 
tion *\ As was pronounced by one authority, **His influ- 
ence largely shaped the form of the final draft of the 
Constitution ^^ The parentage of the patent system may 
also be attributed to him, for not only was he active in 
the Constitutional convention in its behalf, but while he 
was a member of the Continental Congress he was a 
strong advocate of the idea. 



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52 Journal op the Patent Office Society. 

After the Committee of Detail of the Convention which 
was organized to draft a Constitution had reported, Mad- 
ison submitted several propositions providing that Con- 
gress have the power 'Ho secure to literary authors their 
copyright for a limited time" and ''to encourage, by 
premiums and provisions, the advancement of useful 
knowledge and discoveries '\ On the same day, Charles 
Pinckney, of South Carolina, also submitted among oth- 
ers the proposals "to grant patents for useful inven- 
tions" and "to secure to authors exclusive rights for a 
certain time". All of these propositions were referred 
to the Committee, of which Madison (but not Charles 
Pinckney) was a member, and they rejJorted and recom- 
mended that Congress have the power "to promote the 
progress of science and useful arts, by securing for lim- 
ited times to authors and inventors the exclusive right to 
their respective writings and discoveries", which provi- 
sion became incorporated in the Constitution, and con- 
stitutes the organic basis of the patent system. 

Of this power, Madison wrote. in the "Federalist" as 

follows : 

"The utility of this power wiU scarcely 'be* questioned. The 
copyright of authors has been solemnly adjudged in Great 
Britain to be a right at common law. The right to useful in- 
ventions seems with equal reason to belong to the inventors. 
The public good fully colncide>s in both cases with the claims 
of Individuals. The States cannot* sep&rately make effectual 
provision for either of the cases, and most of them have antici- 
pated the decision of this point by laws passed at the instance 
of Congress." 

Madison was always a serious student. Never was he 
mentally idle. He was intellectually alert* to the utmost 
of his powers. Neither of prepossessing appearance 
nor. of commanding presence, disdaining the arts of ora- 
tary and all meritricious aids to popularity, he gained his 
leadership among the most powerful leaders of his gener- 
ation by sheer intellectual processes. Deep and broad 
knowledge of the problems of government, the result of 
severe and long continued study, coupled with a logical 
mind, sound judgment and persuasive powers of the 
highest order, were the elements of his mastery. Neither 
were his interests confined to questions of statecraft. 
He did not disdain to experiment in problems in *' natural 
history'', and he became absorbed whenever the occasion 
was opportune in mechanical contrivances and inven- 
tions. .He knew James Rumsey and his experiments to 

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Journal of the Patent Office Society. 53 

devise a boat propelled by steam, and was acquainted 
with John Fitch 's efforts to build his first steamboat, and 
lent sympathetic encouragement to both projects. 

In conformity with his deep interest in applied science 
and legal means to promote industrial progress, he 
strongly presented while President, in a special message 
to Congress, the need of a separate Patent Ofl&oe as an 
independent bureau, it being then a minor appendage of 
the State Department. He also urged other constructive 
legislation to strengthen and justify the system. Al- 
ways, was he keen to initiate improvements and surround 
the system with proper safeguiards. 

This government is the result of compromise. The 
democratic idealisms of Jefferson blended with the 
strong, centralizing realisms of Hamilton to form a com- 
posite state which has become more democratic in basis 
and spirit than Jefferson ever dreamed of, and stronger 
in its centralization and more direct in its control than 
Hamilton ever had reason to hope for. Madison in a 
great measure embodied this compromising spirit, both 
in his close personal relations with these famous antago- 
nists and in his absorption of such of their ideas as could 
be reconciled. With Hamilton, he was the controlling 
agency in giving unity to our government and endowing 
it with practical means to express its sovereignty, to ex- 
ploit its common resources and to encourage and energize 
its national industries; while with Jefferson, he was 
the passionate exponent of democrstcy, advocating the 
enlargement of the people's powers and urging them to 
greater participation in the affairs of state. 
. The greatest of the constructive statesmen of that era, 
so rich in political ability, was the brilliant Hamilton. 
He was Madison's chief associate in the production of 
the Constitution, and with Madison, through the medium 
mainly of the '* Federalist'', was the almost indispensable 
agent in the adoption of our organic law. His natural 
tendency to strengthen the hands of the Federal govern- 
ment urged him to advocate laws encouraging invention 
as a national means to promote industry. In his famous 
** Report on Manufactures", while he was Secretary of 
the Treasury in Washington's first ^m^ijiistration, he 
remarked *'If the nation has genius for mechanical im- 
provement, as is so often stated, encourage it". And 
again he asserted '^The encouragement of new inven- 

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54 Journal of the Patent Office Society. 

tions and discoveries at home is among the most useful 
and exceptional acts which could govern a country**. No 
other statesman of his time had a clearer vision or a more 
comprehensive view of fiscal and economic affairs or a 
greater aptness for practical government. 

It follows that Washington, with his clear outlook and 
breadth of view, and with his readiness to listen to the 
counsels of Hamilton, would take similar action. After 
an abortive attempt to give life by legislative enactment 
to the constitutional provision in the first session of the 
first Ck)ngress, Washington, at the convening of the sec- 
ond session, was constrained to advise Congress that 

"The advancement of agriculture, commerce and manufac- 
ture» by all proper meane, will not I trust, need recommenda^ 
tlon; but I cannot forbear intimating; to you the expedienoey 
of giving effectual encouragement as well to the Introduction 
of new and useful inventions from abroad as to the skill and 
genius in producing them at home * * * Nor am I less per- 
suaded that you will agree with me in opinion that there is 
nothing which can better deserve your patronage than the pro- 
motion of science and literature." 

This led to the enactment of the law of 1790, which 
created the United States patent system.. 

Although there was not wanting evidence that the ba^ 
sis of an industrial society was existent in exhibitions 
here and there of mechanical skill and inventive ingenu- 
ity, the prevailing industries at that time were the gath- 
ering of the products of the soil and the sea. It took 
prescience of a high order to foresee, even in a small 
measure, the mighty contributions of, and the changed 
order due to invention, and it is a noteworthy fact that 
the most weighty influences favorable to the introduction 
of legal protection of property in ideas were those states- 
men who were most instrumental in launching the Con- 
stitution and most prolific, in devising constructive meas- 
ures to carry on the Government. 



SOME FACTS FROM OUR OFFICE POSTER. 

The subscription list now includes the names of most 
of the Patent Ofiice Corps, of many attorneys and others 
interested in patent matters located in Washington and 
in the larger diti^s of the United States and Canada ; and 
of a goodly number of foreign subscribers — in London, 
LiverpQol, Glasgow, Paris, and also in Buenos Aires and 
Tokyo. 

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Journal op the Patent Office Society. • 55 

PROPOSALS FOR SIMPUFTING PATENT 
APPEALS. 



By M. H. Coulston, Chief Clerk, U. 8. Patent Office. 
September 6, 1918. 



The scheme of appeals under which an application for 
patent may now be prosecuted to an ultimate allowance 
or refusal, is briefly, as follows : 

All appeals are taken in the first instance from rulings 
by primary examiners, law examiners, the examiner of 
trade-marks and designs and the examiner of interfer- 
ences. These appeals always involve questions of form 
or questions of merit. Questions of form embrace all 
questions of office policy. Questions of merit embrace 
all questions involving the validity of patent grants. 

Appeals from rulings on questions of form are provid- 
ed by the Patent Office Rules of Practice and lie directly 
to the Commissioner. They are conamonly called peti- 
tions to distinguish them from appeals proper. The 
proprietj' and necessity of vesting jurisdiction in the 
Commissioner to finally determine appeals or petitions 
involving questions of form has never been questioned. 

Appeals from final rulings involving questions of mer- 
it lie in the first instance to the Board of Examiners-in- 
Chief. From their decision, in patent cases, and ap- 
peal lies to the Commissioner in person. From his deci- 
sion an appeal lies to the Court of Appeals of the District 
of Columbia. This strictly speaking ends the line of ap- 
peals but an aggrieved party, who is an applicant for 
the grant of a patent, may, in effect, appeal still 
further. Section 4915 of the Revised Statutes provides 
that a party so situated may file a bill in equity and from 
the decision of the lower Federal Court having initial 
jurisdiction of that suit an appeal lies to an appropriate 
Federal Court of Appeals. 

All appeals involving questions of merit are provided 
for by the statute except appeals lying from the adverse 
interlocutory decisions of the law examiner having juris- 
diction of motions for dissolution or amendment of pat- 
ent interferences. These last mentioned appeals are 



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56 Journal, of the Patent Ofpick Society. 

provided by the Patent OfiBce Rules and lie, first to the 
Examiners-in-Chief and from them to the Conmiissioner 
in person, the Commissioner's decision being final in 
inter partes proceedings as to this class of cases. 

From the foregoing it ^all be seen that every appli- 
cant for patent whose application has been finally refused 
by a primary examiner upon a ground involving a ques- 
tion of merits has at least five chances to get a reversal 
of that ruling by appealing to as many different higher 
tribunals. The same line of appeals is also open to a 
party to a patent interference who has received an ad- 
verse decision in an interference contest instituted to 
establish priority of invention as between himself and 
another. 

Also, if registration is refused, a line of appeal lies 
open to an applicant for the registration of a trade-mark, 
print or label from the Examiner of Trade-Marks and 
Designs to the Commissioner in person. From an ad- 
verse decision by the latter on an application for regis- 
tration of a trade-mark an appeal lies to the Court of 
Appeals of the District of Columbia. 

Also a line of appeal lies open to a party seeking or 
holding a trade-mark registration and who has received 
an adverse decision in an interference, opposition or can- 
cellation proceeding, from the decision of the Examiner 
of Interferences to the Commissioner in person and from 
his decision to the Court of Appeals of the District of 
Columbia. 

The accompanying chart is a graphic representation 
of the various lines of appeal mentiond. 

It is quite possible for an applicant to run an entire 
line of appeals ex parte, and then be thrown into one or 
more interferences and run the same course of appeals 
over again one or more times. It is not often, to be sure, 
that an applicant has this experience but cases do arise 
that seem well nigh interminable. Multitudinous appeals 
are often the result of the inability of the OfiSce to raise 
all appealable questions at one time, and sometimes the 
result of the tactical strategy of counsel. 

As an illustration of the course of appeals which may 
be run I desire to refer to the history of an applJcation 
quite recently on my desk. This application was origin- 



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Journal of the Patent Office Society. 



57 



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58 Journal op the Patent Office Society. 

ally filed July 16, 1904. It was three times rejected and 
as often amended, whereupon it was placed in interfer- 
ence. This interference was dissolved by the Primary 
Examiner, who then had the jurisdiction of the questions 
to dissolve now vested in a law examiner. No appeal 
was taken. The application was thereafter again re- 
jected three times and amended and then finally rejected, 
ex parte, whereupon followed an appeal to the Board of 
Examiners-in-Chief, resulting in an allowance of the re- 
jected claims. A second interference, with the same op- 
ponent as the first, was then declared. This interference 
was decided in favor of this applicant by each af the ap- 
pellate tribunals of the Ofiice and the Court of Appeals 
of the District of Columbia. The losing party thereupon 
filed a bill in equity under Section 4915 of the Revised 
Statutes, and unsuccessfully prosecuted an appeal to the 
Circuit Court of Appeals. The applicant to whom I re- 
fer was made a party defendant in that suit. The appli- 
cation of the party to which I have referred was then in- 
volved for several years in a third interference which was 
twice before the Court of Appeal and on a third round of 
appeals was dissolved by the Commissioner on the ground 
that the issue was unpatentable. This decision threw 
open to the parties a line of appeals ex parte which was 
not availed of by any of them. 

A fourth interference had in the meantime been de- 
clared between this applicant and another party. This 
last mentioned party moved to dissolve the interference 
on the ground that the claim in contest was not patent- 
able over the very same reference upon which the appli- 
cation had been originally rejected. In support of his 
motion the moving party made tests of the reference, 
patented construction in the presence of both parties and 
the Primary Examiner. The Primary Examiner grant- 
ed the motion and dissolved the interference. This rul- 
ing was affirmed by the Examiners-in-Chief and the Com- 
missioner in turn. Thereupon the applicant returned to 
the Primary Examiner, made a slight amendment to his 
claim, and was again finally rejected. He then prose- 
cuted ex parte appeals to the Board, the Commissioner, 
the Court of Appeals, filed a bill in equity under Section 
4915, and is now on appeal to one of the Circuit Courts 



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Journal of the Patent Office Society. 59 

of Appeals. Had this application been promptly grant- 
ed when filed the patent would have expired in 1921. As 
it stands today the question of patentability raised in the 
first action is still to be determined. 

The excessive expense, delay and labor growing out of 
cases such as I have instanced aibove long ago gave rise 
to the suggestion that the number of appeals should be 
reduced. The records of the Patent Office show that at 
one time or another recommendations have been made 
for the abolition of almost every appeal now available. 
It is my present purpose to call attention to some of 
these proposals and with the reader's indulgence to ex- 
press a personal opinion as to certain of them. 

As R^^rds the Examiner of Interferences. 

In his Annual Report for the year 1892 Commissioner 
Simonds recommended that all interference work should 
be transferred from the Patent Office to the Courts. 
Commisssioner Duell substantially repeated this recom- 
mendation in his Annual Report for the year 1898. He 
had a bill (H.R. Bill No. 7083) introduced in Congress to 
give ei¥ect to that recommendation. 

Commissioners Simonds and Duell based their recom- 
mendations on the ground that the Office has not the re- 
quisite machinery to conduct interference trials effect- 
ively. I think that proposition refuted by the fact that 
the Office has managed to do so fairly well since 1836. 
"Their proposal in this regard I believe to be wholly im- 
practicable because it is necessary constantly to alter the 
status of interference proceedings after they are insti- 
tuted. New parties must be frequently added and it is 
imperative that the e:^aminers have ready access to the 
files and records of applications involved in interferences 
in order to determine whether these applications should 
be included in new interferences about to be declared. 
To attempt to transfer cases from the Office to the Courts 
and back again; to obtain the consent of the Courts to 
such suspensions ,and jurisdictional control as would be 
necessary to efficient prosecution of all pending applica- 
tions would be not only impractical but, I think, well nigh 
impossible. The delays we now suffer would be multi- 
plied and the chances for error and confusion greatly 
increased. 



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60 Journal of the Patent Office Society. 

In his Annual Report for the year 1893, Commissioner 
Seymonr recommended that the Examiner of Interfer- 
ences should merely be given authority to superintend 
preparation of the record and prepare a brief summary 
thereof to be transmitted therewith to the Board of Ex- 
aminers-in-Chief for the first decision. 

Mr. Otto B. Barn«tt, of the Chicago Patent Bar, in a 
letter written to the Paten Law Association of Washing- 
ton, D. C, April 23, 1910, recommended that final hear- 
ings before the Examiner of Interferences should be 
abolished and interferences heard on the merits in the 
first instance either by the Board or by an independent 
tribunal constituted for that purpose. 

I do not think that the proposal to eliminate the juris- 
diction of the Examiner of Interference to initially de- 
cide questions of priority should be adopted. His deci- 
sions have always been considered valuable .and they, iuid 
the briefs written ithe light thereof, serve well to sepa- 
rate what is material from what is immaterial and to 
sharply display to appellate tribunals the really import- 
ant points to be decided. 

As RegaxdB the ExaminersNin-Chief . 

In his Annual Report for the year 1899 Commissioner 
Duell again recommended the elimination of an appeal in 
the Patent Ofiice. This time he proposed to abolish the 
Board of Examiners-in-Chief and to appoint sufficient 
Assistant Commissioners to form, with the Commission- 
er, a tribunal which should hear and decide all appeals. 
This proposal deserves special consideration for it was 
later taken up and vigorously pushed by Commissioner 
Moore, who recommended its adoption in each of his An- 
nual Reports from 1907 to 1911. 

Commissioner Moore repeatedly had bills introduced 
at different sessions of Congress to carry this proposal 
into effect. Among these bills ho mentions in his 1908 
Report, H.R. Bill No. 15,838 and S. Bill No. 3,970; in his 
1909 Report, H.R. Bill No. 18,855 and S. Bill No. 5,636; 
and in his 1911 Report, H.R. Bill No. 7,609. One of these 
bills, S. Bill No. 3,970, passed the Senate in the 60th Con- 
gress, but no action was taken in the House. Extensive 
hearings w^ere had by the Patents Committee of the 



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JOUBNAL OF THE PaTENT OfFICE SoCIBTY. 61 

House upon H.R. Bill No. 18,885, and this bill was favor- 
ably reported (Report #810, 61st Congress, 2nd Ses- 
sion). This measure had the endorsement of such pat- 
ent lawyers as Mr. Bamett, of Chicago, Henry D. Wil- 
liams, Greely & Austin, Knight Brothers, Howson & 
Howson, of New York, and others, including the then 
Secretary of the Interior and President Taft. It was, 
however, bitterly opposed by the Board of Managers of 
the Patent Law Association of Washington, D. C, in 
the name of that large organization. This opposition 
was based on the ground that the bill proposed an im- 
stable Board of Appeals, whose membership would be 
subject to change with each change of administration and 
that the decisions of such a body would not be stable or 
uniform. Also it was opposed on the ground that to 
make the Commissioner q member of the sole appellate 
tribunal of the Office would deprive that tribunal of the 
independence which the present Board of Appeals en- 
joys and which its founders intended it to have. In this 
connection it is interesting to recal that the forerunner 
of the present Board of Appeals, which was itself created 
by the Patent Act of 1861, was a Board of three persons, 
provided by the Patent Act of 1836, appointed by the Sec- 
retary of State and clothed with jurisdiction to decide 
appeals from decisions of the Commissioner of Patents, 
— quite a different proposition from having its decisions 
reviewed by him as are the decisions of the present 
Board. 

While the debate was on upon H.R. Bill No. 18,885 I 
shared the opinion of others in the Office, that the posi- 
tion of the Washington Patent Law Association was not 
well founded, and that its objections were frivolous and 
visionary. A later experience of five years as an As- 
sistant to the Board of Appeals, where I had an oppor- 
tunity to observe the tension that may develop when 
opinions of coordinate judges sharply clash, and a subse- 
quent association of over two years with the Commis- 
sioner's Office, where I have learned that Commissioners 
are subject to substantially the same frailties as other 
men, leads me to a change of view. I do not believe 
that it would be wise to deprive the Commissioner, as the 
head of the Office, of the power of removing any subor- 



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62 Journal of the Patent Office Society. 

dinate oflScial, a power, which, as a practical matter now 
resides absolutely in his hands ; but neither do I believe 
it would be wise to make him a member of a judicial trib- 
unal and leave him vested with that power over his asso- 
ciates and that tribunal. Before such a power, however 
discreet its possessor, there would inevitably be a ten- 
dency toward a suppression of views and a coloring of 
judgments on the part of his associq^tes which ought not 
to exist or be tolerated. I have never heard of a court 
established to administer any branch of our law whereof 
the chief justice had power to remove from office the 
other members of that court. 

As Regards the Commissioner. 

The Patent Law Association of Washington offered a 
counter proposal to that of Commissioners Duell and 
Moore, whereby the present appeal to the Commissioner 
from the Board in ex parte cases should remain un- 
changed but the corresponding appeal to the Commis- 
sioner in interference cases should be eliminated. It 
proposed that the appeal from the Board in interference 
cases should lie direct to the Court of Appeals of the Dis- 
trict of Columbia. It wrote a brief in defence of its po- 
sition. It also gave its support to H.R. Bill No. 23,916, 
introduced for the purpose of giving effect to its recom- 
mendations. I think that the proposal thus made to eli- 
minate the interference appeal to the Commissioner was 
practical and* might have been adopted without adversely 
affecting the Commissioner's prestige or his powers to 
shape and control the policy of the Patent Office. If it 
had been adopted he would have had much more time to 
attend to the executive side of his duties, and, in my 
opinion, much more of his time could be profitably speiit 
in that direction. 

Mr. Barnett gave it as his judgment that the best plan 
would be to abolish all appeals now lying from the Board 
of Appeals to the Commissioner. He said: ''this plan 
is simpler, more logical, and in my judgment better be- 
cause it not only improves the present law by eliminating 
one appeal but it provides that all such appeals in the 
Patent Office, not relating to executive matters, shaH be 
taken to what is virtually a permanent tribunal.'' 



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Journal of the Patent Office Society. 63 

Mr. Jusice J. A. Van Orsdal, of the Court of Appeals 
of the District of Columbia, has recently expressed the 
same view. His idea appears to be that there shall be 
no appeal from the Board to the Commissioner but that 
the Commissioner should retain his present supervisory 
power to refuse a patent which the Board may have de- 
cided to allow. This the Commissioner might do, for ex- 
ample, by refusing to sign a patent in which event the ap- 
plicant could be allowed an appeal to a court. 

This plan of eliminating all appeals from the Exam- 
iners-in-Chief to the Commissioner of patents was also 
recommended by the President's Economy and Efficiency 
Commission in its report of its investigation of the Pat- 
ent Office. 

I have never heard of a Commissioner of Patents who 
was willing to surrenders the appeal now provided by 
law to him from the Board in ex 'parte cases. The reason 
is not far to seek. To take away this appeal would great- 
ly detract from the dignity of the Office of the Commis- 
sioner and it would take from the Commissioner his most 
powerful agency whereby to impress upon the Office his 
policies and standards. I doubt the wisdom of taking 
from him this appeal notwithstanding that from time to 
time policies may be enforced through it which are not 
wise and not right. Everybody knows that ultimate truth 
is generally discovered as the result of many trials and 
experiments and that when it is found it is almost cer- 
tain .to prevail thereafter upon its own merits. I believe 
that, in the long run, great good grows out of the varying 
views expressed in the decisions of different Commis- 
sioners in ex parte cases. 

As Regards the Courts. 

Commissioner Duell in his Annual Report of 1899 pro- 
posed the elimination of the Court of Appeals of the 
District of Columbia. He said : 

The reason why there should <be no appeal to the court is 
that under Section 4915 of the Reyl«ed ^atutes the applicant 
to whom a patent is refused can prosecute his application in 
another court and an aggrieved party in an interference pro- 
ceeding can renew his contest in another court. 

On the other hand, Mr. Bamett proposed to eliminate the 
equity suit under Section 4915 of the Eevised Statutes, 



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64 Journal op the Patent Office Society. 

which in eflfect is an appeal. He gave no other reason 
for this than the simplification of procedure and the sav- 
ing of expense. 

I am of the opinion that each of these courts offers ad- 
vantages under certain circumstances to a party who de- 
sires to appeal from a final adverse decision of the Pat- 
ent OflBce. If he desires a speedy determination of the 
merits of his case upon the exact record upon which it 
has been adjudged in the Patent Office, he can find it in 
the Court of Appeals of the District of Columbia ; if he 
wishes to correct or amplify his record before making 
his last appeal to obtain a patent he may resort to the 
equity suit provided by Section 4915 of th« Revised Stat- 
utes. It is possible, perhaps probable, that the advan- 
tages thus indicated justify retention of both lines of 
procedure, but the same appellant should not, I think, be 
permitted to pursue both lines upon the same question. 
Rather he should be required to elect which course be 
will pursue when he leaves the Patent Office and the de- 
cision he receives in the course elected should be final. 
A precedent for this proposal of alternative remedies 
open to an appellant from a final decision of the Patent 
Office is found in Section 11 of the Patent Act of 1839, 
which provided for an alternative appeal from a decision 
of the Commissioner of Patents, either to the Board of 
three Examiners provided by Section 7 of the Patent Act 
of 1836, or to the Chief Justice of the District Court of 
the United States for the District of Columbia. 

As Regards the Law Examiner. 

No one in authority seems as yet to have suggested the 
elimination of the appeals from decisions of the Law Ex- 
aminer denying motions to amend interferences and 
granting motions to dissolve interferences. The line of 
appeals which now lies from his decisions to the Board 
and the Commissioner terminates with the Conmiissioner. 
The Court of Appeals of the District of Columbia re- 
fuses to take appeals from the Commissioner in these 
cases on the ground that it has jurisdiction only of ap- 
peals from final decisions of the Patent Office either re- 
fusing a patent or deciding priority of invention, and 
that these motion cases bring up merely decisions on in- 



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Journal of the Patent Office Society. 65 

terlocuitory questions. The result is that when the Com- 
missioner affirms a decision of the Law Examiner the 
aggrieved party can obtain relief through a court only 
by proceeding ex parte, beginning over again with the 
Primary Examiner. It seems to me that an adverse de- 
cision of the Law Examiner should be sufficient to at once 
throw a party at this stage of an interference upon his 
ex parte remedy. This w^ould eliminate two appeals and 
the expense, labor and delay incident thereto. It is, more- 
over, a change which could be made by merely amending 
the rules as these appeals are not statutory. 

This paper should not leave an impression that the 
demand for a reduction in the number of appeals is 
unanimous. That is not the case, although, doubtless, 
a majority of persons interested prefer it. There is, 
in the Commissioner's files, a long letter from a well 
known member of the Patent Bar, forcibly defending the 
present arrangement. It is my understanding that the 
Patent Law Association of Washington has advanced 
its own suggestions for change only *4f a change is to 
be made," and apparently that organization has dis- 
played no particular interest in its own proposal except 
as a means of backfire for defeating the proposals of 
others. 

The frequently mentioned subject of establishing a 
Circuit Court of Appeals to pass finally upon all appeals 
in patent suits is one lying substantially outside the prov- 
ince of Patent Office procedure. I pass it with a mere 
mention as being a more suitable topic for discussion by 
those who had experiences in the courts. 

The three proposals of changes in patent appeals which 
I deem most practicable are : 

(1) The elimination of all inter partes appeals from 
decisions of the Law Examiner denying motions to amend 
and granting motions to dissolve interferences. 

(2) The elimination of appeals to the Commissioner 
of Patents from decisions of the Board of Examiners- 
in-Chief in patent interference cases. 

(3) The elimination of successive and substitution of 
alternative appeals from final .decisions of the Patent 
Office to the Court of Appeals of the District of Columbia 
and the Federal Courts having jurisdiction of equity 
suits under Section 4915 R. S. 



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66 Journal of the Patent Office Society. 

ABIENDED RULE 17. 



It may safely be assumed that no change in the Rules 
of Practice has excited more interest among Patent At- 
torneys than the recent one adding a section to Rule 17, 
by Order No. 2417, published in the Official Gazette, Vol. 
252, p. 967. This section reads — 

"(h) Every attorney registered to practice before the United 
State Patent Office shall submit to the Commissioner of Pat- 
ents for approval copies of all proposed advertising matter, 
circulars, letters, cards, etc., intended to solicit patent busi- 
ness, and If it be not disaprproved by him and the attorney bo 
notified within ten days after submission, it may be considered 
approved. 

Any registered attorney sending out or using any such mat- 
ter, a copy of which has not been submitted to the Oommle- 
sioner of Patents in accordance- with this rule, or which has 
•been disapproved by the Commissioner of Patents, shall be 
subject to suspension or disbarment." 

The position of the Commissioner relative to the ad- 
vertising matter used by registered attorneys is set 
forth as follows: 

Advertising matter of attorneys registered to prac- 
tice before the Patent Office must comply with the fol- 
lowing rules: 

(1) Advertising matter may contain clear, correct, 
and explicit statements of the law, instructions relat- 
ing to obtaining patents or registrations of trade- 
marks, the name and address of the attorney, and the 
information that he prosecutes applications for pat- 
ents and trade-marks. 

(2) It shall be regarded as gross misconduct to ad- 
vise applying for foreign patents under circumstances 
clearly indicating the purpose to secure fees from a 
client without consideration of his best interests, or 
without fully advising him of the incidents of foreign 
patents such as recurrent taxes, working, etc., and of 
the advantage of awaiting a favorable determination 
of the prosecution of an application for the invention 
in the United States Patent Office unless business rea- 
sons of the client require a different course; .to stimu- 
late the uninformed to applv for natents by enumerat- 
ing a list of «?uppo^o(1 inventions demanded by the pub- 
lic, or by citing instances of great profits made by in- 



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Journal of the Patent Office Society. 67 

ventors, to offer services for nothing for the purpose 
of securing a client; to induce, by advertising, the fil- 
ing of applications for patents by offering to publish 
the patent without specifying the medium of publica- 
tion or to sell the same without reservation, when ob- 
tained, or in any way to create a false or misleading 
impression in the mind of the reader. 

Attention is further directed to the following extract 
from the 27th Canon of Ethics of the American Bar 
Association : 

The most worthy and effective adyertisement possible, even 
for a young lawyer, and especially w!th his 'brother lawyers, is 
the establishment of a well-merited reputation for professional 
capacity and fidelity to trust. This cannot be forced, but must 
be the outcome of character and conduct. The puiblication or 
circulation of ordinary simple business cards* being a matter 
of personal taste or local custom, and sometimes of conveni- 
ence, is not per Be improper. But solicitation of business by 
circulars or advertisements, or by personal communications or 
Interriews, not warranted by personal relations, la unprofes- 
sional. 

It is interesting to note that communications received 
so far on the subject indicate an almost unanimous ap- 
proval among attorneys of this effort to elevate the 
standing of the profession. Many express wonder that 
the effort was not made by a similar order long ago. If 
the plan accomplishes the result aimed at, one crying 
need for reform in our Patent System will have been met. 

G. P. Tucker. 



EX PARTE THOMAS AND RULE 75. 



By J. D. Cox, aast. examiner. 



In view of the interest taken in the recent decision in 
Ex parte Thomas. 251 O. O. 839, and the discussion there- 
if indulged in by examiners and attorneys, the writer 
ventures to set down some conclusions he has reached 
concerning the application of the same in specific cases. 

In a carefully prepared decision, exhaustively review- 
ing the authorities, the Commissioner held that a copend- 
ing patent will not sustain the defense of anticipation 
but will, under certain circumstances, sustain the defense 
of priority. It is one of the purposes of this paper to 

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68 Journal of the Patent Office Society. 

consider those circumstances under which a copending 
patent may be cited. 

While in the opinions of some, the practice under Rule 
75 is changed with respect to the citation of copending 
patents, the new practice necessitates no change in the 
'wording of the rule. The rule states : 

'*When an original or reissue application is rejected on ref- 
erence to an exipired or unexpired domestic patent which sub- 
stantially shows or describes but does not claim the rejected 
Invention," etc. 

The framers of the rule were not so much concerned 
about when to cite the reference as they were about what 
the applicant must do to overcome one, '*when" it is 
cited. Prior to this decision the rule had its limitations. 
A copending patent with a later filing date, for instance, 
was not cited against an application, even though it sub- 
stantially showed or described, but did not claim the in- . 
vention claimed by the applicant. This decision merely 
places a further limitation on its application. 

Under this decision, a copending patent which shows 
or describes, but has no claim to the invention claimed 
by the applicant, can be cited only under the fourth de- 
fense of the statute. It, therefore, raises, the question 
of priority of invention. But priority is concerned with 
which one of two or more independent inventors was the 
first to make a certain invention. If the inventions are 
not the same, although not patentably different, the ques- 
tion of priority does not arise. The inventions must be 
identical. What then is the test for identity of inven- 
tion? The Commissioner gives us the test when he 
states : 

"I look upon the existing practice in declaring interferences 
as a convenient standard for comparison'' (Page 849). 

In other words, if the patent were an application and if 
it contained claims to that matter, would an interfer- 
ence be declared? 

Now, it is to be noted that this interference test is 
solely as to identity of invention. It is not a test as to 
whether the copending patent should be cited or not 
The matter shown or described but not claimed in the co- 
pending patent might be identical with the matter claimed 
in the application but not germane to the matter actu- 
ally claimed in the patent. The patent, for intsance, 
might claim the one specific form of a device and disclose 
but not claim a different specific form. While an inter- 

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Journal of the Patent Office Society. 69 

ference might be declared were the patent an applica- 
tion claiming both forms (ex parte Burk 184-288) yet it 
may not be cited as a reference because the matter not 
claimed in the patent is not germane to the matter actu- 
ally claimed in it. 

Since the citation of a copending patent raises an issue 
of priority it follows that there must be a party other 
than the applicant concerned. The other party is the 
public. But how came the public by the right! In the 
language of the decisioli: 

"If the prior inventor does not claim the invention, the pub- 
lic succeeds to his right at the date of the patent, ibut not until 
then" (Page 848). 

But how far does this right extend? The answer is 

found in the decision: 

"Subject-matter disclosed but nbt claimed ♦ ♦ ♦ the 
public is entitled to it tby virtue of the patentee's abandon- 
ment" (Page 849). 

Since the citation of a copending patent as a reference 
depends on the rights of the public and the rights of the 
public rest on the abandonment to it of the rights of the 
inventor, let us now consider what matter shown or de- 
scribed but not claimed in a copending patent is pre- 
sumed to be dedicated to the public when the patent 
issues. 

The following classification of matter shown or de- 
scribed but not claimed in a patent is a slight modifica- 
tion of that found in ex parte Mullen & Mullen 50 0. G. 
837: 

1st. Where the matter is indivisible from that claimed. 

2nd. Sub-combination divisible from the matter 
claimed but claimable in the same case with it. 

3rd. Sub-combination divisible from the matter 
claimed and not claimable in the same case with it. 

4th. Different species. 

5th. Indepent inventions. 

Class 1. In this class, the matter not claimed being in- 
divisible from the matter claimed, the applicant can get 
that matter only by reissue if he can get it at all. It is 
presumed that since the applicant cannot obtain an- 
other valid patent for the matter not claimed that he has 
dedicated it to the public. 

This persumption would, however, appear to be re- 
butted when the applicant files a reissue for that matter, 
provided he is entitled to claim it in the reissue. 

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70 Journal of the Patent Office Society. 

Copending patents in this class, then, may be cited as 
references under Rule 75 unless the applicant is entitled 
to a reissue to include that matter, and has actually filed 
an application for such a reissue. In case he has filed 
such application, an interference, at the discretion of the 
Law Examiner, might be declared. In case the patentee 
is not entitled to that matter in a reissue the presumption 
of abandonment becomes conclusive and the copending 
patent may be cited as a reference. 

This class corresponds to class 1 of Mullen & Mullen. 

Class 2. In this class of cases the matter might have 
been claimed in the same case. Division could not have 
been required but the applicant could have divided if he, 
so desired, provided he had filed his later application 
during the pendency of the former. It usually lacks the 
third of the following essential tests for a requirement 
for division : 

(a) It must be structuraUy separable. 

(b) Useful in other relations. 

(c) Recognized as having a distinct standing in the arts. 

The presumption appears to be that an applicant will 
obtain in a single patent just as much as he lawfully can, 
the patent office permitting. Since he did not claim the 
matter, it is presumed to be dedicated to the public. 
This presumption, however, is rebutted if he has a divi- 
sional application claiming the matter, or if he made a 
reservation in the patent. But since reservations are 
no longer permitted by this office, he is presumed to dedi- 
cate the matter not claimed to the public if he did not 
file a divisional application for that matter. 

This presumption would also appear to be rebutted if 
the applicant is entitled to a reissue including this mat- 
ter and has actually filed the reissue. 

In this classe of cases, then, it would appear that where 
the applicant has no copending or reissue application 
claiming the matter, the patent could be cited as a refer- 
ence. If, however, the patentee has a divisional appli- 
cation claiming it, there is no presumption of dedication 
to the public and the patent should not be cited, nor 
should it be cited if the patentee is legally asserting 
claims to this matter in a reissue application. In the 
above cases of divisional and reissue application, an in- 
terference, at the discretion of the Law Examiner, might 
be declared. 



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Journal of the Patent Office Society. 71 

This class corresponds to class 2 of Mullen & Mullen. 

Class 3. This is a class of cases that meets all three 
of the t^sts noted above for a requirement for division. 
The oflSce would not permit the matter to be claimed in 
the same case with the matter claimed. There is no pre- 
sumption of dedication to the public. The patent should, 
therefore, not be cited. 

If, however, at the end of two years after the issu- 
ance of the patent, the applicant has not filed an appli- 
cation for that matter, it becomes abandoned to the pub- 
lic. On the theory that the public succeeds to the aban- 
doned right of the patentee, it would appear that after 
two years such a copending patent could be cited. 

It could be argued, however, that since the inventor is 
barred by the statute from obtaining a patent after two 
years, the public, which succeeds to his rights, is also 
barred. The terms of the statute, however, merely bars 
the inventor from obtaining a patent but does not bar 
him from asserting his right to priority. If at the end 
of two years he has not asserted this right, he would, it 
appears, be precumed to have dedicated it to the public. 

This class corresponds to class 3 of Mullen & Mullen. 

Class 4. Since only one species may be allowed in a 
single case there is obviously no presumption of dedica- 
tion in this class of cases. Such a copending patent 
should therefore not be cited unless, as pointed out in 
discussing class 3, it is cited after two years. 

This is practically the same as class 5, below. 

Class 5. Since two or more independent inventions 
may not be claimed in one application, the remarks un- 
der class 4 apply to this class, also. 

In short, assuming that there is identity of invention, 
a copending patent under class 1 should be cited, except 
where the patentee is legally claiming the matter in a 
reissue. In this event, an interference, at the discretion 
of the Law Examiner, might be declared. 

Copending patents under class 2 should also be cited 
where there is no divisional application claiming the mat- 
ter, and no reissue application legally claiming it. 

•Copendng patents in classes 3, 4 and 5 should not be 
cited, at least, until after two years. 

What, then, is the test as to when to cite a copending 
patent! The Commissioner gives us the test: 



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72 Journal of the Pate^tt Office Society. 

"I consider that an aj^plication should be rejected on a co- 
pending patent, under Rule 75. if an interference in fact, based 
upon the claims In the application and the subject-matter dis- 
closed In the patent which is germane to the invention claimed 
therein, the counts of which might be broader than or other- 
wise different from the claims in the application, jprovided they 
did not omit a 'material and substantiar feature of those 
claims, would exist if both cases were applications, Irre&pectlye 
of the claims in the patent." (Page 849) 

According to this test there must be, 

1st. Identity of inventions. 

2nd. The matter not claimed in the copending patent must be 
germane to the matter claimed in it. 

As poiHted out in the decision, the interference test is 
a convenient test for identity of inventions. 

But when is the matter not claimed in a patent ger- 
mane to that claimed therein? 

**'He might have claimed any patentably novel subject-mat- 
ter clearly disclosed in the application upon which his patent 
was granted which is germane to what he did claim: 

That subject-matter is germane which is included in the 
tangible subject-matter upon which the claims are founded. 
Such germane subject-matter belongs to the public whether 
•patentably novel or not." (Page 849) 

From this it appears that matter not claimed but 
which could have been claimed in a patent is germane to 
that claimed therein, because this is the only matter that 
'* belongs to the public whether paten tably novel or not." 

The *' tangible subject-matter upon which the claims 
are founded" is evidently the structure actually claimed 
plus the structure that falls in classes 1 and 2, because 
this would constitute a structure, which from the office 
point of view, is an indivisible whole. 

It would appear, therefore, that the test of abandon- 
ment as discussed under classes 1 and 2 would be a con- 
venient test as to whether or not matter not claimed in a 
patent is germane to matter actually claimed therein. 

Since matter claimed in sub-combinations may fall in 
classes 2 or 3 depending on the state of the art, it follows 
that the development of the art also affects the question 
of when matter not claimed in a patent is germane to 
matter claimed therein. 

Before citing a copending patent as a reference, the 
first thing to decide is whether the matter not claimed 
in the patent is identical with that claimed by the appli- 
cant. In other words, apply, the interference test. If 

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Journal of the Patent Office Society. 73 

the inventions are not identical, there is no necessity of 
going further. If, however, the inventions are the same, 
then it is necessary to see whether the matter is germane 
or not The abandonment test under classes 1 and 2 is 
thought to be a practical test for this feature. 

The general rule is that the matter must be germane. 
And since it was not necessary to a decision in this case 
to pass on whether the matter not claimed was germane 
to that claimed or not, it is thought that the Commis- 
sioner intended to state only the general rule. The ex- 
ceptions and cases not thought to come within this rule, 
are believed to be noted under the classes stated above. 

Summary. 

A copending patent which shows or describes but does 
not claim certain matter should not be cited against an 
application claiming it unless the following facts appear : 

1. The copending patent muat have an earlier (filing date. 

2. The inventions must be identical. 

3. The matter must be abandoned or presumed to be aban- 
doned to the public, as noted In classes 1 to 5 above. 

It remains to be seen what efiFect this decision will have 
on the present interference practice. In interference 
decisions the judgment is one of priority and does not 
concern anticipation. 

Suppose A has two claims to two diferent inventions 
. but they are not patentably different. He loses an inter- 
ference to B on claim 2. B cannot make claim 1. Un- 
der this decision, should claim 1 be rejected, and if so 
on what ground! No satisfactory solution has been 
found. 

A rejection could hardly be based on the ground of res 
adjudicata, because neither the counts nor the parties 
are the same, the parties interested in an ex parte pro- 
ceeding being the public and the applicant. 

Claim 1 could be rejected on claim 2, even combining 
it with the prior art, under ex parte Whitelaw 219 0. G. 
1237. But when class 2 is canceled, which it necessarily 
must be, there is nothing left but the interference issue 
upon which to reject the claim, and under the reasoning 
in this case this cannot be done, because the inventions 
covered by the issue and claim 1 are not identical. 



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74 Journal op the Patent Office Society. 

RULE 24. 



By Chas. S. Grindle, Examiner of Interferences. 



(Delivered before the fourth assistant examiners.) 



24. A petant may be obtained by any person who has in- 
vented or discovered any new and useful art, machine, manu- 
fuctare, or composition of matter, or any new and useful im- 
provement thereof, not known or used by others in this country 
before his invention or discovery thereof, and not patented or 
described in any printed publication in this or any foreign 
country before his invention or discovery thereof, or more than 
* two years prior to bis application, and not patented in a coun- 
try foreign to the 'United States on an application filed by him 
or his legal representatives or assigns more than twelve months 
before his application, and not in puiblic use or on sale in the 
United States for more than two years prior to his application, 
unless the same is proved to have been abandoned, upon pay- 
ment of the fees required by law and other due proceedings 
had. (For designs, see Rule 79.) 

This rule covers a very extensive field. It includes 
most of the provisions of sees. 4886 and 4887 of the Re- 
vised Statutes, which form the basis of the major portion 
of the substantive law of patents. Obviously, in a paper 
of this character, it will not be possible to discuss at 
length all the various phases of the rule. A former pa- 
per of this series has considered in detail the character- 
istics and objects of a patent, and hence no attempt will 
be made to touch upon such questions ; and as other pro- 
visions of the rule, such as that relating to persons enti- 
tled to prosecute and obtain a patent, to the effect in this 
country of the grant of a patent to the inventor in a for- 
eign country and to the question of ** fees'* and ** oth- 
er proceedings", fall more properly within the scope of 
other rules, such provisions will be omitted from present 
consideration. 

The portions of the rule which it is proposed to b^efly 
consider are the expressions ** art", '^machine", **mlsinu- 
facture", *' composition of matter" and **any new and 
useful improvement thereof", the terms '* invented or 
discovered", *'new and useful" and the various provi- 
sions defining the condition which must exist before a 
valid patent can be obtained. 



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JouRNAi, OP THE Patent Officb Society. 75 

FIELD OF PATENTABLE INVENTION. 

This field is defined by the terms **art", *' machine", 
** manufacture", ** composition of matter" and *'any new 
and useful improvement thereof". 

Inventions and discoveries falling within this field may 
be made the subject matter of patents ; thosQ outside of it 
cannot. It is well to recall that, while the filed of patent- 
able invention is an extensive one, it embraces only a 
small part of the vast variety of objects to which human 
thought and intellect are directed. In discussing this 
point Robinson in his Law of Patents makes the following 
observation : 

* * * the ifield af patentable invention is comparatively nar- 
row. By far the greater and most useful portion of human 
discoveries lie outside the domain of these exclusive privileges. 
The general phenomena and laws of matter, the methods of 
agriculture and commerce, the metaphysical and moral truths 
and all other inventions which do not relate to the industrial 
arts, belong at once, upon their publication, to all mankind. 

Robinson, vol. 1, sec. 27. 

Inventions are frequently denied patentability, both by 
the office and the courts, on the ground that they fall out- 
side of the field of patent protection. Such holdings have 
been made in regard to a system for code messages (Ber- 
dardini v. Tocci, 200 Fed. 1022) to an arrangement for a 
room in a house, (American Disappearing Bed Co. v. Ar- 
naelsteen, 182 Fed. 324), and to various methods or ar- 
rangements for doing business, (In re Tallmadge, 174 0. 
G. 1219; In re Moeser, 1906, C. D. 685; ex parte Abraham, 
1869 C. D. 59). And, as pointed out in some detail here- 
after, a mere physical law or scientific principle cannot, 
even by its discoverer, be exclusively appropriated 
through the medium of a patent (Morton v. N. Y. Eye In- 
firmary, 2- Fisher ^s Patent Cases 320; American Bell Tel- 
ephone V. Dolbear, 16-Fed. 448, 23 0. G. 535; McComb v. 
Brodie, 2-0. G. 117, O^Reilly v. Morse, 15 How. 112). 

-Terms Defining Field of Patentable Invention. 

The scope and meaning of these terms have been dis- 
cussed in numerous decisions, and the various writers up- 
on the subject of patent law have formulated definitions 
of the same based on such decisions. For present pur- 
poses it is deemed advisable to adopt, in general, the defi- 
nitions given by Robinson in his Law of Patents. 



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76 Journal of the Patent Office Society. 

(1). Art. This writer defines an **arf as — 

* * * an act or series of acts performed by some physical 
agent upon some physical object, and producing in such object 
some change either in character or condition. 

It will be observed that this definition gives the word a 
somewhat limited significance. In fact, as employed in 
the Statutes and the Rule under consideration, it is re- 
garded as practically synonymous with the term ** process 
or method". (Walker on Patents, 5th edition, sec. 3; 
Cochrane v. Deener, 11 0. G. 687, 94 U. S. 780 ; Coming v. 
Burden, 15 How. 252). At this, point, therefore, it is 
thought advisable to briefly mention some of the general 
principles of the law relating to processes. 

In the first place, it is desired to direct attention to the 
decision of the Court of Appeals of the District of Colum- 
bia in the case of In re Weston, 94 0. O. 1786, C. D. 1901, 
290, where after considiering a large number of decisions 
relating to the law of processes, the court formulated the 
following rules: 

First: that processes involving chemical or other elemental 
action, if new and useful, are patentable; 

Second: that a process, which amounts to no more than the 
mere function of a machine. Is not patentable; 

Third: that a process or method of a mechanical nature not 
absolutely dependent upon a machine, although perhaps best 
illustrated by mechanism, may if new and ueeful, be the proper 
subject matter of a patent. 

The first of these propositions will be found supported 
by numerous decisions, (Risdon Iron and Locomotive 
Works V. Medart, 158 U. S. 68, C. D 1895, 33Q; Westing- 
house V. Boyden Co., 170 U. S. 537, C. D. 1898, 443; Ex 
parte Rogers and Winslow, 87 O. G. 699, C. D. 1899, 95). 

In regard to the second, it should be understood that 
the mode of operation of a machine may constitute a valid 
process, particularly if conceivable independented of such 
But, as stated by the Court of Appeals in the case of In 
re Tallmadge, C. D. 1912-434, where the process is sim- 
ply the function or mode of operation of a machine, it is 
not an invention but at most the result of one. 

In regard to the third class of cases above mentioned, 
the court pointed out that the criterion is. whether the 
process can* be performed by hand or by other mechanism 
than that exhibited. This class of cases has led to con- 
siderable diversity of opinion among the courts, but the 



I 



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Journal of the Patent Office Society. 77 

question was finally settled by the Supreme Court of the 
United States in the Expanded Metal Case, 214-U. S. 366, 
the holding there being that a process consisting of purely 
mechanical operations may be patentable. 

A process which amounts to nothing more than the ne- 
cessary and obvious manner of producing an article, is 
not patentable, (Ex parte Trevette, C. D. 1901, 170). But 
in cases where doubt exists as to whether the invention 
should be expressed as a process or an article, it is per- 
missible to allow both kinds of claims, (Ex parte Kil- 
boum et al., 221 0. G. 737). Also, it has been held, that 
where an apparatus and process are so closely related as 
to moke it diflScult to determine in which the invention 
lies, claims to the two should be prosecuted and patented 
concurreuntly, in order to avoid any question of antici- 
pation of one by the other, (Ex parte Edison, 220 0. G. 
1373). . 

There are also other well defined rules concerning the 
question of patentability of processes to some of which 
attention may be briefly directed. Thus, it is well settled 
that a mere principle or law of nature or scientific fact 
cannot be monopolized by means of a patent. In the case 
of Morton v. N. Y. Eye Irfirmary, supra, a patent for the 
use of ether to produce insensibility especially during sur- 
gical operations, was held invalid on the ground that it 
involved a mere discovery or use of a scientific fact and 
did not constitute a patentable invention. Also in the 
well know case of 'Reilly v. Morse, supra, a broad daim 
for the use of the electric current for producing charac- 
ters at a distance was held to be for the exclusive use of 
a principle of nature and declared void. 

A claim broadly to the use of a thing does not cover 
a valid process. Such a claim includes no steps of pro- 
cedure (Ex parte Mayall, 1873 C. D. 134; Morton v. N. 
Y. Eye Infirmary, supra). 

A mere process of nature cannot be monopolized but, 
of course ,a valid process may exist where forces of na^ 
ture are employed under conditions designed to produce 
a useful result. (Cameron Septic Tank Co. v. Village 
of Saratoga Springs, supra.) 

In the early history of patent law in England patents 
for processes were generally regarded with disfavor and 



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78 Journal of the Patent Office Society. 

were held invalid as coiistituting attempts to monopolize 
a principle or scientific fact The courts of this country 
have never refused to recognize the patentability of this 
class of inventions and where the validity of patents 
have been attacked on the ground that they cover a mere 
principle of nature, the courts have generally construed 
them as involving valid processes of means for utilizing 
such principles. (Tilghman v. Proctor, 102 U. S. 707; 
Telephone Cases, 126 U. S.; Le Roy v. Tatham, 14 How. 
156; Cameron Septic Tank Co. v. Village of Saratoga 
Springs, 159 Fed, 453). 

(2). Machine. A machine is defined by Robinson as — 

* * * an fnstrument composed of one or more of the me- 
chanical powers, and capable, when set in motion, of producing 
by its own operation, certain predetermined physical effects. 

Hobinspn, vol. 1, see. 178. 

Walker defines the term as — 

♦ * ♦ a combination of heterogeneous mechanical parts, 
adapted to receive energy, and apply it to the production of 
some energetic result. 

The function of a machine has been defined as that 
power or property of a machine of acting in the specific 
manner designed or intended by its combination, or in 
ather words, it is that which the machine is designed to 
do, as distinguished from the machine itself, (Deanning 
Wire and Fence Co. v. American Steel and Wire C, 169 
Fed. 193). 

(3). Manufacture. This term has a somewhat general 
significance and embraces a promiscuous class of inven- 
tions. The term is defined as — 

an instrument cdeated by the exercise of mechanical forces and 
designed for the production of mechanical effects, but not ca- 
pable when set in motion, of attaining by its own operation 
to any predetermined result. 

Certain decisions of the courts are to the effect that 
this term icnludes whatever is made by the hand of man 
that is neither an art. machine, composition of matter, 
or design, (International Mausaleum Co. v. Sievert et al., 
213 Fed. 225; Cincinnati Traction Co. v. Pope, 210 Fed. 
443). 

(4). Composition of Matter. Robinson definies this 
expression as — 



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JOUBNAL OF THE PaTENT OfFICE SoCIETY. 79 

* * * an instrument formed by the intermixture of two or 
more Ingredients, and possessing properties which belong to 
none of these ingredients in their separate state. 

Roiblnson, vol. 1, sec. 192. 

The law relating to this phafee of the rule is extensive 
and detailed and a discussion of it withinh the limits of 
this paper is impossible. Attention is directed to the 
clear and comprehensive treatise by Principal Examiner 
Lewers on the subject of composition of matter which 
was read before the examining corps on Oct. 29, 1914. 

(5). Improvement. This term is defined as — 

* * * an addition or alteration in some existing means, 
which increases its efficiency without destroying its identity. 

Robinson, vol. 1, sec. 210. 

The term necessarily implies the existence of something 
which is modified to increase its efficiency. The improve- 
ment must, of course, involve invention in order to be 
patentable. 

INVENTED OR DISCOVERED. 

While these words are used in the alternative in the 
rule and statute, they seem to possess practically the 
same significance. Writers like Robinson and Walker 
attempt to draw no distinction between them. (Robin- 
son, vol, 1, sec. 83; Walker, sees. 2, 25). The term '*in- 
vention^' as hereafter employed will, therefore, be con- 
sidered as equivalent to the expression ** invention or 
discovery.*^ 

The courts have attempted to lay down no fixed rule 
as to what constitutes invention. On this point the Su- 
preme Court of the United States has said : 

The truth is, the word cannot be defined in such manner as 
to afford any substantial aid in determining whether a particu- 
lar device involves an exercise of the inventlTe faculty or not. 
McClain v Ortmayer, 141 U. S. 427. 

Every invention, as pointed out in the decisions and text 
books, must consist of two elements, an idea conceived 
by the inventor and an application of that idea to. the 
production of practical results, (Robinson, vol. 1, sec. 77), 
but this generalization affords little or no aid in deciding 
whether invention is present in any given case. But, as 
stated by Walker, while no affirmative rule exists by 
which to determine the presence or absence of invention 
in any case, there are certain negative rules which oper- 



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80 Journal, of the Patent Office Society. 

ate by process of exclusion, (Walker, sec. 24). Brief 
refernce will now be made to same of these negative 
rules. 

The result accomplished by the mere exercise of me- 
chanical skill is not invention. (Atlantic Works v. Brady, 
107 U. S. 199; Lord et al. v. Payne, 190 Fed. 172; Wag- 
ner v. Meccano Limited, 246 Fed. 603). 

An assemblage of elements which does not cooperate 
to produce a new result, or an old result in a new and im- 
proved way, is not an invention. (Pickering v. McCul- 
lough, 104 U. S. 310, 21 0. Gt. 73; Reckerdorfer v. Faber, 
92 U. S. 357; Mead Morrison Mfg. Co. v. Exeter Mch. 
Work, 215 Fed. 731; In re Harris, 170 0. Q. 484). But 
where the elements act together either simultaneously or 
successivly to produce a new and useful result, invention 
is present. (Burdette-Rountree Mfg. Co. v| Standard 
Plunger Elevator Co., 196 Fed. 43; National Tube Co. v. 
Aiken, 163 Fed. 254; Railwav Supply Co. v. Hart Steel 
Co., 217 0. G. 699). The fact that an assemblage of ele- 
ments will not operate without the mediation of an opera- 
tor or the thing or operated upon, does not render it an 
unpatentable combination. (Krell Auto-Grand Piano Co^* 
V. Story & Clark, 206 0. G. 313 ; Oskosk Grass Matting 
Co. V. Wait Grass Casper Co., 207 Fed. 937). Where an 
improvement is made in one element of an old combina- 
tion, th^ invention lies is such improvement, and it should 
be claimed per se and not in combination. (In re Mc- 
Neil, 100 0. G. 2178, C. D. 1902, 563; Langan v. Warren 
Axe and Tool Co., 166 0. G. 986, 184 Fed. 720; In re Rati- 
can, 162 0. G. 540). But in such case if the improved ele- 
ment cooperates with the other elemtns to produce a new 
result, the invention is in effect a new combination and 
may be properly protected as such. (Ex parte Baker, 
183 O. G. 505; Ex parte Mumford, 206 O. G. 878). 

The application of an old machine or combination to a 
new use is not in itself an invention. If in such case, 
however, the new use is so remote from the old that the 
application to the new use would not occur to the ordinary 
mechanic, or if by such application a new and beneficial 
result is obtained, the conception of the new use for the 
old device amounts to an invention. (Warren Webster 
Co. V. C. A. Dunham Co., 161 0. G. 531 ; Hobbs v. Beach, 
180 U. S. 397. C. D. 1901, 311). 



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Journal. OF the Patent Office SociBry. 81 

It is not invention to modify an existing combination 
by substituting an equivalent for any of its parts. An 
equivalent is defined as *^a thing which performs the 
same function, and performs that function in substan- 
tially the same manner as the thing of which it is alleged 
to be an equivalent '\ (Walker, sec. 354). However, if 
the substitution results in a new mode of operation or 
new and improved results are obtained, the change may 
constitute invention. (National Regulator Co. v. Powers 
Regulator Co., 160 Fed. 460; Archer et al. v. Imperial 
Mch. Co., 202 Fed. 962). 

There are also numerous other well established rules. 

Thus, it has been held that the following modifications of 

a prior structure do not, in general, constitute invention : 

Change of material; change in form, size or location of 
parts, reversal of parts, or duplication, or multiplication or 
omission of parts. 

It is to be understood, however, that these rules are not 
rigid in character and the cases are numerous in which 
exceptions to them have been announced. In general it 
may be said, that where the modification of the old struc- 
ture results in a new mode of operation or produces new 
and useful results, invention is present. The following 
cases relate to the last mentioned rules, and in a number 
of them it will be found that exceptions to these rules 
were made and invention was held to be present : Archer 
et al. V. Imperial Mch. Co., 207 Fed. 81; Hogan v. West- 
moreland Co., 163 Fed. 289; In re Harbeck, 191 0. G. 586; 
Streit V. Harper et al., 143 Fed. 981; Ajax Metal Co. v. 
Brady Boss Co., 155 Fed. 409; Ex parte Cooper, 200 0. 
G. 583; United States Hoffman Co. v. Tosance, 202 Fed. 
923; Berry v. Schaefer, 205 Fed. 49; Lambert Hoisting 
Engine Co. v. Ledgerwood Mfg. Co., 154 Fed. 372; Ex 
parte Sears, 148 0. G. 279; Goss Printing Co. v. Scott, 108 
Fed. 2535 Potts v. Creager, 155 U. S. 608, C. D. 1895, 143; 
Edison Electric Light Co. v. U. S. Electric Lighting Co., 
52 Fed. 308. 

CONDITIONS PRECEDENT TO GRANT OF 

VALID PATENT. 

An inventor who has originated a patentable art or 
device in the field of patentable invention heretofore men- 

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82 Journal of the Patent Office Society. 

tioned, is entitled to the benefits of patent protection pro- 
vided certain conditions precedent exist. Thes conditions 
are set forth in the rule and will be considered in order. 

Novelty. 

In the first place an invention must be new. It is not 
sufiicient that it be new or original to l;he person seeking 
a patent ; it must be new to the public and first made ac- 
cessible to them by the efforts of such inventor. The rule 
under consideration specifies certain negative conditions 
necessary to the existence of novelty, which conditions 
will later be discussed. 

UtiUty. 

An invention to be patentable must also be useful ; i. e. 
it must be capable of beneficial emplojnoaent by the pub- 
lic. The degree of utility is immaterial, and it is also 
immaterial that the invention is capable of improvement 
or that similar inventions possess greater utility. (In- 
ternational Tooth Crown Co. v. Hanks Dental Associa- 
tion, 111 Fed. 916; Crown Cork and Seal Co. v. Alumi- 
num Stopper Co., 108 Fed. 845). Commercial success is 
also unnecessary. (Lovell-McConnell Co. v. Automatic 
Supply Co., 212 Fed. 192). But utility is not present if 
the invention is frivolous or worthless, or if it is detri- 
mental to the well being and injurious to the morality of 
the public, or of such a character as to mislead the public 
to its disadvantage. (Schultze v. Holtz, 82 Fed. 448; 
Fuller v. Berger, 120 Fed. 274; Heide v. Panoulias, 188 
Fed. 914). ' 

Prior Knowledge and Use. 

To be patentable an invention must not have been 
*^ known or used by others in this country '* before the 
same was originated by the person seeking a patent. 
This provision specifies one of the conditions necessary 
to the existence of novelty of an invention. 

It is to be noted that prior knowledge and use of an 
invention will defeat novelty only where such knowledge 
and use existed *4n this country ^\ Knowledge and use 
of an invention in a foreign country is immaterial un- 
less, of course, the person in this country was aware of 
the same before his own conception of the invention, in 



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Journal of the Patent Office Society. S3 

which case he would not be an inventor at all and a patent 
issued to him would would be invalid. The fact that an 
invention was used in a foreign country and persons in 
this country had knowledge of such use before its in- 
vention in this country, is not sufficient to defeat a patent 
to the bona fide inventor in this country. (De Kando v. 
Armstrong, 165 0. G. 1185; Doyle v. Spaulding, 19 Fed. 
75). And it has been held that where an inventor in this 
country after making an invention but before filing an 
application, obtained information that the invention had 
been known and used in a foreign country, this fact did 
not invalidate the patent on the ground of lack of novelty. 
(American Sulphite Pulp Co. v. Rowland Falls Pulp Co., 
80 Fed. 389). In short, the knowable thing must be in 
this country. 

The expression ^^ known or used'* has been made the 
subject of consideration in umerous decisions. It seems 
to be well established that the word ^^ known'' signifies 
more than a mere ^^ mental concept" of an invention. As 
stated by Robinson, (vol. 1, sec. 227), it means — 

such an acquaintance with the invention on the part of the 
public as renders it available to theih as a practical operative 
means. 

Where an invention has been in actual use in a foreign 
country and knowledge of the same is possessed by per- 
sons in this country, such knowledge does not meet the 
requirement sof the term ^* known", as interpreted by 
the decisions. (De Kando v. Armstrong, supra; Doyle v. 
Spaulding, supra). Furthermore, it has been held that 
knowledge of a prior conception of an invention, or of 
unpublished drawings and written descriptions does not 
render the invention ^^knowTi" within the meaning of the 
statutes. (Killeen v. Buffalo Furnace Co. et al., 140 Fed. 
43 ; Walker, sec. 61 ; Detroit Lubricator Mfg. Co. v. Ren- 
chard, 9 Fed. 293; Pennsylvania Diamond Drill Co. v. 
Simpson, 29 Fed. 291). On the other hand, in regard to 
the term **u8e", it has been held that where a device was 
actually in existence in this country, applied in a con- 
cealed position to a tea chest imported from Japan, but 
was not actually known to persons in this country, such 
existence was held to constitute no such prior use as to 
anticipate a patent covering the device. (Acme Flexible 



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84 JOURNAJ-. OF THE PaTENT OfFICE SoCIBTY. 

Clasp Co. V. Cary Co., 96 Fed. 344). Since, therefore, 
mere knowledge without us^ or use without knowledge, 
is not suflScient to make an invention ^* known or used" 
^ within the meaning of the rule, the expression ^* known 
^^ ^^jjkd^used'' would seem to be practically equivalent to 
^* known and used''. In this connection, attention is di- 
rected to the decision of former Commissioner Ewing in 
the case of Joliffe v. Waldo v. Vermer and Schovick, 234 
0. G. 671, in which it was held that prior knowledge to 
defeat a patent must be knowledge of the actual thing — 
a physical embodiment of the invention. 

There are certain well settled rules as to what consti- 
tutes prior knowledge and use of an invention, and brief 
reference may be made to some of these. 

Prior knowledge and use will defeat an invention only 
when such invention and the thing alleged to anticipate 
are identical from the inventive standpoint. This does 
not mean that there must be identity in mere physical 
embodiment, but that the functions performed and the 
means to perform them must be substantially the same. 
(Walker, sees. 62, 65). Prior use to be effective must 
have been so far understood and practiced or persisted 
in as to have become an established fact, accessible to the 
public and to have contributed definitely to the sum of 
human knowledge. (Diamond Patent Co. v. Carr Co., 
217 Fed. 400; Coffin v. Ogden, 18 Wall. 120). General 
use, however, is not necessary and a single well estab- 
lished example of prior use is sufficient to defeat a patent. 
(Daniel v. Restem & Co., 131 Fed. 469; Benthal Mch. Co. 
V. National Mch. Corporation, 222 Fed. 918). It is not 
necessary to constitute the bar of prior knowledge or use, 
that the invention be actually seen and understood by the 
public, if the use of the same were such that it was access- 
ible to the public and could have been seen by them. (Per- 
kins V. Paper Company, 17 O. G. 1285). If tiie prior use 
of the device was accidental or not understood, or was a 
mere abandoned experiment, it does not constitute an an- 
ticipation of a subsequent invention. (Anthracite Separ- 
rator Co. v. Pouuock et al., 175 Fed. 108 ; Warren Bros. 
V. City of Owassa, 166 Fed. 309). The device set up as a 
prior use must have constituted an actual and successful 
reduction to practice, the courts having held that the 



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JOUBNAL OF THE PaTBNT OfPICE SoCIETY. 85 

rules as to. what constitutes ** prior use'^ and what con- 
stitutes ** reduction to practice ^^ are the same. (Oilman 
& Brown v. Henson, 122 0. G. 731). This being true, 
knowledge of the actual existence of a device of such 
simple character that its practicability would be ap- 
parent without actual use, would constitute such knowl- 
edge and use as to defeat a subsequent patent for such 
device. (Conner v. Dean, 142 0. G. 856; Pool v. Dunn, 
1510. G..450). 

Mention may here be made of certain special cases 
which appear to fall within the provisions of the law re- 
lating to prior knowledge and use. In suits for infringe- 
ment, under the defense of lack of originality, (Rev. Stat. 
Sec. 4920), one patent is frequently held to anticipate an- 
ticipate another by reason of its earlier filing date in the 
Patent Oflfice ; and in the ordinary practice of the Patent 
Office, applications for patent are rejected in view of the 
earlier filing date of prior patents disclosing the inven- 
tion claimed. The practice in each of these cases is ap- 
parently based on the idea that the filing date of the an- 
ticipating patent constitutes prima facie evidence that 
the invention was ^* known or used" at that date. (Lem- 
ley V. Dobsoh-Evans Co., 243 Fed. 391; 246 0. G. 1203; 
Millet and Reed v. Duell, 96 0. G. 1241). 

It should be clearly understood that the length of time 
an invention is known and used before it was originated 
by the applicant for patent is inamaterial. It is a bar if 
it occurred any time ^* before" the invention by such ap- 
plicant. Prior knowledge and use should not be confused 
with the bar of public use, which will be considered later, 
and which has reference to whether an invention was 
known and used by the public for more than two years 
before an applicatipn for patent was filed. 

An examination of published decisions of the courts 
will show that patents are frequently held invalid on ac- 
count of the invention having been known and used be- 
fore it was invented by the patentee. This cannot be 
avoided, as the Office has no means of determining wheth- 
er or not an invention was known or used before it was 
originated by the person seeking a patent. In this con- 
nection, it may be noted that where an employee of the 
Office is aware of prior knowledge and use of invention. 



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86 Journal of the Patent Office Society. 

this fact may be made the basis for rejecting an applica- 
tion for patent covering such invention. . (Rules 66. 76). 

Prior Patenting and Publication. 

An inventor cannot obtain a valid patent if his inven- 
tion was ^^ patented or described in any printed publica- 
tion in this or any foreign country before his invention 
or discovery thereof, or more than two years prior to 
his application". This provision of the rule sets forth 
further conditions necessary to the existence of novelty. 

It should be clearly noted that the prior patenting or 
publication may be ^4n this or any foreign country". 
In this respect the bar of prior patenting or publica- 
tion differs from that of prior knowledge and use or 
prior public use, which must ^xist in this country. It 
should also be noted that the bar of prior patenting or 
publication is a bpr under two conditions ; first, if it oc- 
curred before the invention was made by the patentee 
or applicant for patent, and second, if it occurred more 
than two years before application for patent was filed. 
In the first case, the patentee or applicant would not be 
the first inventor and a patent to him woulde invalid ; in 
the second, the prior patent or publication is a bar even 
though the invention disclosed therein was made by such 
patentee or applicant for patent. (Wagner v. Meccano, 
Limited, 246 Fed. 603). 

An invention may be said to be patented when it is 
** protected to the inventor" by means of a patent. In 
order that such patent may bar other inventors it must 
possess certain requisite, i. e. it must be a public docu- 
ment accessible to the public and fully disclose the inven- 
tion. (Robinson, vol. 1, sec. 331). A printed publi- 
cation is anything which is printed, and, without injunc- 
tion of secrecy is distributed to any part of the public in 
any country. (Walker, sec. 56; Thatcher v. Inhabitants 
of Town of Falmouth, 235 Fed. 151). No actual distribu- 
tion is necessary if the printed matter is exposed for sale 
or deposited in a public library. Trade catalogs sent 
only to persons engaged or supposed to be engaged in a 
certain trade are not publications. (Graham v. Lang- 
haar, 1912 C. D. 92; Union Tool Co. v. Wilson et al., 237 
Fed. 837. 



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Journal op the Patent Office Society. 87 

Matter not covered by the claims of a patent is not 
patented, but as to such matter the patent is, of course, a 
publication from the date of its issue. As a refemce, a* 
United States patent takes date from the filing of the ap- 
plication both as to the invention claimed and as to the 
matter merely disclosed. This practice is well settled 
and as heretofore indicated is based upon the ida that 
the anticipating patent constitutes prima facie evidence 
of prior invention or prior knowledge from the date of 
the application. (Millet & Reed v. Duell, supra; Lemley 
V. Dobson-Evans Co., supra). 

Concerning the disclosure in prior patents or printed 
publications the decisions are numerous to the effect that 
this must be full enough and precise enough to enable 
any person skilled in the art to which it relates to con- 
struct and practice the invention. . (Generl Electric Co. 
V. Haskins Mfg. Co., 224.Fed. 464). It is not sufficient 
that in the light of the disclosure of the later inventor 
the germ of the same idea can be found hidden away in 
the writings of some one before him. (Snook Roentgen 
V. Stetson Hospital, 237 Fed. 204). The disclosure in 
the prior patent or publication must be more than a mere 
hint or suggestion and where invention would be required 
to embody these hints or suggestions in practical form, 
the prior patent or publication is no anticipation. (Mer- 
rell Soule Co. v. Powdered Milk Co., 215 Fed. 922; Wm. 
B. Scarf e Sons Co. v. Falls City Woolen Mills, 209 Fed. 
210). In fact, it has been held that the patent or pnibli- 
cation must actually describe the invention or where a 
drawing alone is relied on, it must be so clear as to leave 
no doubt. (Cauda v. Michigan Iron Co., 124 Fed. 486; 
U. S. Metallic Packing Co. v. Hewitt Co., 236 Fed. 739). 

An application for a process may be anticipated by a 
prior patent for a machine which fully discloses such 
process, (Model Bottling Co. v. Anheuser Busch Assn., 
190 Fed. 573), and a product by a patent for a machine, 
(In re Decker, 162 0. G. 999), or a composition by a prior 
process patent. (In re Griffith, 187 0. G. 517). A mere 
paper patent, if it fully aVid completely describes an in- 
vention, whether a machine, device or process, is just as 
effective to show anticipation as a patent which describes 
an invention which has gone into extensive use. (Hyde 



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88 Journal of the Patent Office Society. 

V. Minerals Separation, Ltd., 214 Fed. 100; Kings Coun- 
ty, etc., V. United States Consolidated, etc., Co., 182 Fed. 
59). Also a design patent may anticipate a subsequent 
application for the construction shown in the design. 
(President Suspender Co. v. McWilliams, 233 Fed. 433; 
Lein v. Myers, 105 Fed. 962). 

In concluding this phase of the subject, a few points 
relating particularly to foreign patents may be men- 
tioned. It has been held that a device is patented in a 
foreign country the moment it is sealed or enrolled, that 
whether or not it is printed is immaterial, and that it is 
enough that the officials have acted upon the application 
and granted the patent. It would also seem to be imma- 
terial in what form it is issued providing the specifica- 
tion and drawings are accessible to the public. (Safety 
Gas Light Co. v. Fischer Bros, et al., 236 Fed. 955; Sir- 
occo Engineering Co. v. B. F. Sturtevant, 213 0. G. 
1447). A secret patent is not a patent in the above sense. 
(Robin v. Miller et al., 1904.C. D. 569). However, it 
would appear that the German *^Gebranchmuster" con- 
stitutes a patent within the meaning of the rule. (Safety 
Gaslight Co. V. Fisher Bros, et al., supra). (The effec- 
tive dates of foreign patents are as follows : British pat- 
ent, as a publication the date of publication, as a patent 
the date when sealed; French patent, as a publication 
the publie date, as a patent the delivere date. German 
and Austrian patents; the Ausgegeben date is effective 
for all purposes. The Dutch patent date is the Dagtee- 
kening date, and the Danish is the Udstedt date.) 

Public Use and Sale. 

An invention is not patentable if it was in *^ public use 
or on sale in the United States for more than two years 
prior" to the date when application for patent on such 
invention was filed. A brief statement of some of the 
general principles of the law relating to public use and 
sale must suffice for present purposes. In the first place, 
the use must have been such as to place the invention 
within the knowledge and control, of the public. How- 
ever, it does not appear necessary that actual knowledge 
of the invention shall have been conveyed to the public. 



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Journal of the Patent Office Society. 89 

It is sufficient, if the use was such that the invention was 
accessible to at least one member of the public, other than 
the inventor. (Perkins v. Paper Co., 17 0. G. 1285). 
Use of an invention in complete secrecy would not consti- 
tute public use, but where an invention is of such a nature 
that it will be concealed from view during ordinary use, 
this fact does not prevent its employment in such con- 
cealed position by a member of the public from being 
public use with in the meaning of the law. (Hall v. Mac- 
neale t al-, 107 U. S. 90; Egbert v. Lippman, 104 U. S. 
333 ; International Tooth Crown Co. v. Gaylord, 140 U. S. 
58). In the first case cited, an invention relating to locks 
for safes was held to be in public use notmthstanding 
the fact that the locks were hidden from view and could 
not have been observed without destruction of the safe 
In the case of Egbert v. Lippman the Supreme Court o 
the United States held that the use by one person of cor 
set stays given her by the inventor constituted public usi 
of an invention included in such devices. That use of a 
single device by a single person is sufficient to constitute 
public use has also been held in numerous decisions. 
(Egbert v. Lippman, supra; Bradley v. Eccles, 138 Fed. 
911 ; Hentschel v. Carthage Sulphite Co. et al., 169 Fed. 
114; National Cash Register Co. v. American Cash Reg- 
ister Co., 178 Fed. 80). The use of an invention in the 
ordinary course of trade and primarily for profit, if ac- 
cessible to the public,, constitutes public use. However, 
in any case where the charge of public use arises against 
an invention, it may be overcome by showing that such 
use was under the control and surveillance of the invent- 
or and was intended for experimental purposes. Experi- 
mental use of an invention in public, especially where 
publicity is necessary to the experiment, is not public 
use within the meaning of the rule. An inventor may 
take reasonable time to test his invention and perfect the 
same before applying^ for patent and if he proceeds in 
good faith it is immaterial that such use took place more 
than two years before the dat^ of application for patent. 
In the well known case of |]ilzabeth v. Pavement Co., 
97 XJ. S. 126, the use on a public street of a section of 
block pavement for a period of six years before the date 
of . application for patent, was held not to constitute a 
public use of the invention. In this case the nature of 




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90 Journal of the Patent Office Society. 

the invention was such that it could not be satisfactorily 
tested except in actual use for a considerable time upon a 
highway and the evidence showed that the inventor kept 
the invention under observation and manifested no inten- 
tion to sell the same or allow it to get beyond his control. 
The experimental test of an investigation may be con- 
tinued for such time as is reasonably necessary to inves- 
tigate its utility, but when the same is completed the bar 
of two years begins to run and the application for patent 
should be filed within that time. (Eastman v. Mayor etc. 
of City of New York, 134 Fed. 844; International Tooth 
Crown Co. y. Gaylord, supra). Furthermore, it has been 
held that the doctrine of experimental use does not apply 
where an invention is employed publicly and commercially 
for more than two years before the application for pat- 
ent and where during such time experiments werQ made, 
not to test out the commercial practicability of the very 
thing invented, but merely for the purpose of strengthen- 
ing and improving the machine. (American Ballast Co. 
V. Davy Burnt Clay Ballast Co., 220 Fed. 887). The sale 
of products made during the experimental operation of 
a machine dies not constitute public use of the machine. 
(Daniel Green Felt Shoe Co. v. Dolgeville Felt Shoe Co., 
205 Fed. 745: Penn, Electrical Mfg. Co. v. Conroy, 159 
Fed. 493). The same would doubtless be true of a pro- 
cess and product produced thereby. In general it may 
be stated that where public use or sale of an invention is 
shown to have taken place more than two years before 
the date of application for patent, the burden is upon the 
patentee or applicant to show by full, clear and convinc- 
ing proof that such use or sale was intended for experi- 
mental purposes. (Swain v. Holyoke Mch. Co., 109 Fed. 
154.97-09,399). 

In regard to the expression ^*on sale" it appears that 
if a device is oflfered for sale though not actually sold, it 
is on sale within the meaning of the statute. (Plimpton 
V. Winslow, 14 Fed. 921 ; Wende v. Horine, 225 Fed. 501; 
Burke Electric Company v. Independent Tool Co., 234 
Fed. 93). But a mere contract to construct from plans 
and to deliver in the future a machine not previously 
bniJt is not sufficient to establish that an invention em- 
bodied in such machine was ^^on sale'^ at the time of such 



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Journal op the Patent Office Society. 91 

contract. (MoCreery E^ginee^ing Co. v. Massachusetts 
Fan Co. et al., 195 Fed. 498). A single unrestricted sale 
or oflFer to sell a single device involving an invention is 
suflBcient to constitute a placing of the invention on sale. 
(Covert V. Covert, 106 Fed. 183; Swain v. Holyoke Ma. 
chine Co., 109 Fed. 154; In re MiUs, 117 0. G. 904; Con- 
solidated Fruit Jar Co. v. Wright, 94 U. S. 94). But 
where the invention is sold for experimental purposes 
and with a view to test its utility, such sale does not come 
within the inhibition of the statute, and this is particu- 
larly true where the inventor is obliged to place the in- 
vention in other hands for the purpose of experiment. 
(In re Mills, supra, Graham v. Mfg. Co., 11 Fed. 142; 
Swain v. Holyoke Machine Co., 109 Fed. 154). 

In concluding this phase of the subject it should per- 
haps be emphasized that public use and sale constitutes 
a bar to the grant of a patent only where such use and 
sale takes place more than two years before the applica- 
tion for patent. Such use or sale occurring two years or 
less before that time is immaterial and does not prevent 
the issuance of a valid patent. It shoud also be clearly 
understood that more than two years public ufee of an in- 
vention bars a valid patent whether the invention so used 
was made by the patentee or applicant for a patent, or 
was made by some independent inventor. In other words, 
after two years public use of an invention, it becomes pub- 
lic property and no one is entited to monopolize the same 
regardless of its origin. Use and sale in a foreign coun- 
try is no bar to the grant of a patent in this country even 
though persons in this country had knowledge of such 
use and sale. In this connection it may also be noted that 
two years public use and sale of a device bars only such 
inventions as were present in such device. If the inven- 
tion patented or sought to be patented is inventively dif- 
ferent from the thing which was used or sold, the bar of 
public use or sale does not apply. 

Public Use Proceedings. 

The question of twe years public use or sale of an in- 
vention generally arises in connection with infringement 
suits but this question is also of some practical imp^rt- 
annce in connection with the examination of applications. 



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92 Journal of the Patent Office Societv. 

The practice of the Office permits under certain condi^ 
tions the institution of public use proceedings for the 
purpose of determining whether the bar of public use or 
sale exists against the grant of a patent. The authority 
of the Commissioner to institute such inquiry has been 
upheld by the court. (Ex parte von Heffner-Altneck, C. 
D. 1883, pg. 139). The proceedings may arise in ex parte 
cases or in connection with interferences. The general 
procedure in these cases will be briefly outlined. 

In ex parte cases the proceedings are originated by a 
petition or protest to the Commissioner from some mem- 
ber of the public opposing the grant of a patent to an ap- 
plicant. The petition should be accompanied by affida- 
vits setting forth the facts alleged to establish the bar of 
public use, and also by an oflfer to produce the witnesses 
and bear the expenses of the proceedings. Proof of ser- 
vice of the petition and affidavits upon the opposing party 
should also be filed. The papers are generally trans- 
mitted to the Primary Examiner for consideration. If 
in his opinion a prima facie case of public use is made 
out he so reports to the Commissioner, who thereupon 
may require the party whose application is concerned, to 
show cause why the proceedings should not be instituted. 
A preliminary hearing is generally had at which both 
the petitioner and applicant may be heard. After such 
hearing, if the Commissioner orders that the proceedings 
be instituted, times are set for the taking of testimony 
by the petitioner and applicant. When filed in the Office 
the testimony is first considered by the Primary Exam- 
iner. It is not the practice for the Primary Examiner to 
grant an inter partes hearing but briefs may be filed. 
The Primary Examiner should render a decision similar 
to the decision in an intef erence case, analyzing the testi- 
mony, and making a holding as to whether or not a bar of 
public use is made out. A copy of this decision should 
be furnished to both parties. In case the Primary Ex- 
aminer holds that a case of public use exists he should 
reject the application to which the bar applies and also 
take such further action as the condition of the case re- 
quires. From such action an ex parte appeal lies, as in 
the case of other rejections. If after consideration of 
the testimony the Examiner holds that the bar of public 



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Journal of the Patent Office Society. 93 

use has not been established, this concludes the proceed- 
ings as the petitioner has no right of appeal from such 
decision. (Ex parte Van Ausdal, C. D. 1900-74; Sie- 
bert V. Bloomberg, C. D. 06-325 ; Ex parte Booth Bros., 

C. D. 1907-140; Betts v. Qerson, C. D. 1913-83; Ex parte 
Hartley, C. D. 1908-224). 

Where the question of. public use arises in connection 
with interferences the procedure is somewhat varied but 
in general differs from that in ex parte cages. Where no 
testimony has been taken and a petition for public use 
proceedings is filed, suflSciently supported, it seems to be 
the practice to suspend the interference and investigate 
the question of public use. (Sarfert v. Meyer, 1902 C. 
D.-30, in re Wood Preserving Co. -1910 C. D. -47; San- 
ford Mills v. Aveyard, 1899 C. D. 129). The testimony 
on priority taken in interference cases not infrequently 
establish a prima facie case of public use of the inven- 
tion and in such cases petition is often made to suspend 
the interference and consider the bar of public use. The 
rule, however, appears to be well established that after 
the initial stages of an interference have been passed, it 
will not be suspended for the purpose of instituting pub- 
lic use proceedings, and this is particularly true where 
the bar if established would not apply to all parties. 
(Knisely'v. Kaislive, 1912 C. D. -13; Luellen v. Clausen 
and Claus, 1913, C. D. -97). Where both parties' to the 
interference are applicants and where the public use 
would act as a bar against both, the rule in regard to sus- 
pension does not appear to be rigidly followed and in the 
case of Niedringhaus v. Marquard v. McConnell, 1905, C. 

D. -405 and 1906-C. D. 91, involving this state of facts, 
the interference was suspended after the decision of the 
Examiners-in-Chief on th equestion of priority. Where 
an interference is suspended to consider the question of 
public use the parties concerned are given opportunity to 
take testimony on this question as in ex parte cases. (Ex 
parte Weber, 1902 C. D. 457). In the case of Ex parte 
Deere and Mausur Co., 105 M. S. D. 96, it was held that 
after the testimony is filed and printed, the Primary Ex- 
aminer should proceed under the provisions of Rul 128, 
set an inter partes hearing as to the parties involved in 
the interference, and that if in his opinion a case of pub- 



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94 Journal op the Patent Office Society. 

lie use is made he should dissolve the interference and 
fix the usual limit of appeal from his decision. As Rule 
128 has been changed since the date of this decision, the 
procedure above outlined would now presumably take 
place before the Law Examiner. Where an interference 
proceeds to final judgment of priority this fact does not 
prevent the losing party from raising the question of 
public use against the winning party. The two questions 
are different and the decision of one is not res adjudicata 
as to the other. (In re Pittsburgh Brake Shoe Co., 1912 
C. D. -78). 

Abandonment. 

The last clause of the rule to be considered relates to 
abandonment. If an invention meets the other require- 
ments of the rule it is patentable ** unless the same is 
proved to have been abandoned''. Abandonment of an 
invention such as will bar a valid patent may arise in var- 
ious ways. In the first place the inventor may by express 
declaration abandon his invention to the public or his 
conduct may be such as to justify the inference that he 
intended to relinquish his rights. (Kendall et all. v. Win- 
sor, 21 How. 322). When such abandonment takes place 
the act cannot be recalled and the invention becomes pub- 
lic proptrey. (Pennock and Sellers v. Dialogue, 2 Peters 
1; Crown Cork and Seal Co. v. Aluminum Stopper Co., 
108 Fed. 845; 1901, C. D. 450). Such abandonment by 
declaration or by conduct may take place at any time 
after the invention is made, and it may occur within two 
years prior to an application for patent on such invention. 
(Mast, Foos and Co. v. Dempster Mill Co., 82 Fed. 331; 
Warren Bros. v. City of Owosso, 166 Fed. 309). Long 
and unexcused delay between the actual reduction to prac- 
tice of an invention and the filing of an application for 
patent has also been frequently held to constitute aban- 
donment of the invention. This is true particularly 
where during the period of delay an independent inventor 
enters the field and exploits the invention. (Mason v. 
Hepburn, 85 0. G. 147; Comptograph Co. v. Adder Mar- 
chine Co., 200 0. G. 1391; Courson v. O'Connor, 227 Fed. 
890; Mower v. Duell, 88 0. G. 191). Another way in 
which an inventor may expressly abandon an invention 



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JOUBNAL OF THE PaTENT OfFICB SoCIETY. 95 

is by filing an application for patent and formally dedi- 
cating to the public the invention disclosed therein. A 
specific disclaimer of any invention disclosed in an appli- 
cation will also amount to an abandonment of such in- 
vention. Mere failure to claim an invention disclosed 
in a patent does not constitute abandonment of the same. 
But where the invention not claimed might have been 
claimed a presumption of dedication to the public exists 
which, however, may be overcome, if such invention is 
claimed in a contemporaneously pending application, or, 
under the proper circumstances, is later claimed in a re- 
issue of the original patent. Where the invention not 
claimed in a patent is separate and distinct from that 
claimed, an application for such independent invention 
may be filed at any time within two years from the date 
of the original patent, but if no such application is filed 
within that time the patent becomes a bar as a publica- 
tion and the invention is in effect abandoned to the pub- 
lic. '(Ex parte Mullen and Mullen, 50 0. G. 837). The 
law is well settled that claims deliberately canceled from 
an original application cannot be properly inserted in an 
application for reissue of the originsd patent. The can- 
cellation of the' claims in such case is in effect an aban- 
donment of the invention covered thereby. (Money- 
weight Scale Co. v. Toledo Computing Scale Co., 187 
Fed. 826, 170 0. G. 928). A party involved in an inter- 
ference may file a declaration of abandonment of the in- 
vention, in which case priority is awarded to his oppon- 
ent. (Rule 125). And it has been held that where a 
patentee involved in an interference obtains a reissue of 
his patent, omitting the claims of the issue, this act 
amounts to an abandonment of the invention by such 
party and that priority should be awarded to his oppon- 
ent. (Lattig and Goodrum v. Dean, 1905, C. D. pg. 79 
and 698). Ordinarily, delays by an inventor in. prose- 
cuting an application for patent where such prosecution 
complies with the law, cannot be successfully urged in 
support of a charge of abandonment of the invention. 
(Crown Cork and Seal Co. v Aluminum Sottper Co., su- 
pra ; Columbia Motor Car Co. et al. v. C. A. Duerr & Co. 
et al., 184 Fed. 893). But in the case of Barber v. Wood, 
207 O. G. 209, the Examiners-in-Chief held that a party, 



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96 Journal of the Patent Office Society. 

who with knowledge that his opponent was in the field, 
delibaretly withheld his own invention from the market 
and neglected to renew his forfeited application, was 
guilty of such action as constitued abandonment of the 
invention. And in two cases of recent date it was held 
that the failure of an applicant to insert claims to an in- 
vention in a pending application until long after the issu- 
ance of a patent to another party for such invention con- 
stituted an abandonment of the invention. (In re Fritts, 
227 O. G. 742; Rountree v. Sloan, 227 O. G. 744). By a 
still more recent decision the Court of Appeals has held 
that unexcused delay of more than one year by an appli- 
cant in copying claims from a patent estops him from 
asserting his right to such claims. By such delay the 
applicant in effect abandons the invention. (Wintroath 
V. Chapman and Chapman, 248 0. G. 1004). In conclu- 
sion, it should be understood that public use of an inven- 
tion, such as heretofore pointed out, for more than two 
years before application for patent is filed, constitutes an 
abandonment of the invention ; and the same is also true 
where the application is not filed within two years after 
the invention has been deliberately placed before the 
public in a printed publication. 



A limited number of tjopies of the September number 
of the Journal have been set aside so that those getting 
acquainted with the Journal for the first time through 
the October number may have an opportunity to com- 
plete their files. 



'A lecture on ** Motor Plow^" illustrated by numerous 
slides and motion pictures will be given by Primary Ex- 
aminer Frank C. Loeffler, in the Rotunda on the second 
floor of the Patent Office on Wednesday, October 30, 
1918, at 3.30 p. m. 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Office Society 

Office of Publication 1315 Clifton St., Washington, D* C. 
^ Subscription $2.50 a year Sing:le copy 25 cents 

EDITORIAL BOARD. 

E. D. Sewall, Chairman, Publicity Committee. 
G. P. Tucker, Editor-in-Chief. 
J. Boyle. 
A. W. Davidson. 
W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washington, D. C. Phone Col. 290. 

Entered as sec6nd class matter. September 17, 1918, at the post office 
at Washington, D. C, under the act of March 3. 1879. 
. Copyright, 1918, by the Patent Office Society., 



Publication of signed articles In this journal is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 

VOL. 1. NOVEMBER, 1918. No. 3 



EDITORIAL. 



MANUFACTURERS AND THE PATENT SYSTEM. 

The War Emergency and Reconstruction Conference 
of the War Service Committees of the nation's industries 
assembling at Atlantic City, N. J., on December 4, 5 and 
6, signals the beginning of the reconstruction period of 
this present war. About three hundred industries have 
war service committees and one of the problems to be 
considered at the conference is that of rendering assist- 



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98 Journal of the Patent Office Society. 

ance to govemmental agencies created to deal with re- 
construction. 

This journal beljeves the time opportune to call the 
attention of the conference and manufacturers generally 
to the connection of the United States patent system 
with the industries of this country, and the urgent need 
of cooperation between manufacturers and inventors on 
the one hand, and those engaged in the administration of 
the patent system, on the other. 

That the industries of this country are largely based 
on patent rights is a safe fundamental assertion; that 
the development of these industries depends on the sta- 
bility of these rights and their proper growth, is equally 
certain; that the stability of. these rights and their pro- 
per growth is not definitely assured in the present execu- 
tion of our patent system, must be conceded ; that the com- 
ing reconstruction period will be marked by great manu- 
facturing activity and diversity, is. generally accepted; 
consequently, the present seems a proper time to take up 
the consideration of our patent system and to plan for the 
improvement thereof, if any be necessary,, or improve- 
ment in the carrying out of the system. 

The manufacturer affected by paten^ rights needs not 
be told he has a vital interest therein; but it may be 
necessary to point out that he is just the one to take up 
the question of improvements in the patent system to 
the end that his business may rest on the sure founda- 
tion of an absolutely valid rather than a questionable 
patent. Manufacturers' associations, along with manu- 
facturers, should be vitally interested in the granting of 
patents, i. e., in the work of the Patent Office. They con- 
stitute a great power whicli should exercise great influ- 
ence in the betterment of the execution of the patent sys- 
tem. Organized with a proper committee or committees 
to study the subject, possibly with a similar committee 
from those administering the system, existing defects 
could be located and legislation framed to eliminate them. 
With the organized manufacturers urging such legisla- 
tion, its passage would be assured. 

The examiners in the Patent Office have already organ- 
ized into the Patent Office Society having for an object 
the formulation and execution of plans for the improve- 
ment of the patent system. It invites the cooperation of 



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JOUBNAL OF THE PaTBNT OfFIOB SoCIBTY. 99 

manufacturers. This journal is the official organ of the 
society. Its columns, are open to communications from 
manufacturers; it aims to be a meduim for the inter- 
<jhange of ideas on the subject and to bring together those 
with a common purpose. 

The Patent OflSce Society has advanced no plan of its 
own, as yet, for improvements in the patent system. Sug- 
gestions are made in papers appearing in this and the 
October number of the journal which we think are worthy 
of consideration. But before legislation is formulated, 
obviously very careful study must be put upon any plan 
suggested and by all parties affected or interested. Man- 
ufacturers will doubtless constitute one of these parties. 
Their cooperation is, therefore, asked in the suggestion 
of plans and framing of legislation. 

The needs of the Patent Office itself should engage first 
attention. Its facilities have long been held inadequate, 
its force of employees too small, and the salaries paid 
insufficient to secure and hold men with the qualifications 
necessary to do the work. With the increase in Patent 
Office work expected with the cessation of the war, the 
deficiencies in office equipment will become emphasized 
and conspicuous. We speak of this because it is before 
us constantly, because it has long been recognized and be- 
cause it results in an inability to give the inventor at ail 
times what he has a right to expect, viz., a valid patent. 



THE WAK AND THE BRITISH PATENT OFFICE. 



The report of the Comptroller-General of the British 
Patent Office, for 1917, shows that the war is having a 
marked effect on the business of that office. Applica- 
tions for patents which numbered 30,077 in 1913, dropped 
to 19,285 in 1917 ; patents sealed dropped from 16,599 to 
9,347 in the same period ; applications for designs drop- 
ped from 40,429 to 13,208; applications for registration 
of trade-marks dropped from 9,689 to 5,502. The de- 
pression, however, seems to have run its course as the 
figures for 1917 show a slight improvement over those of 
the preceding year. 

Of the 681 employees of the office, 183 were serving 
with the colors and 87 were on loan to other departments. 



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100 JOUBNAL OP THE PaTBNT OfFICB SoCIBTY. 

ABANDONMENT OF INVENTION BT SECRET 
PRACTICE. 



To THE Editor: 

Concerning the case of Macbeth-Evans Glass Com- 
pany against General Electric Company, 231 Fed. 183, 
which is discussed somewhat at length in the very inter- 
esting article by the Honorable Assistant Commissioner 
in the September issue of your publication, I would like 
the privilege of saying a few words since I had the rather 
dubious distinction of being one of the counsel in that 
case whose argument did not apparently meet the appro- 
val of the courts which decided the case against the pat- 
entee. 

As I look at it, the question involved, broadly stated, 
was, can an inventor obtain letters patent on a method 
of making glassware, which invention (the method) he 
practiced in secret, but not in public, for more than two 
years, but the product of which he has sold to the public 
for more than two years before he filed hi« application! 
Stated in other words, does the Patent Statute, as it 
stands, hold out to an inventor so circumstanced, an invi- 
tation to disclose his invention or secret process so that 
the public miay obtain the benefit thereof in return for a 
limited term patent monopoly; or does the invention (the 
secret process) under such circumstances become aban- 
doned, within the purview of the statute to a public which 
becomes possessed of knowledge of the invention only 
through the patent, as was .the case here! 

The case was absolutely sni generis as has been held by 
both the lower court and the upper court. 

His Honor, Judge (now Justice) Clarke in the District 
Court, stated in his opinion (record, page 40) : 

"The Indu&try.of counsel and of the court has failed to dis- 
cover any decision of these questions by any court, and there- 
fore they must be decided upon principle unaided by direct 
authority." 

The Court of Appeals in the opinion complained of 
held that under the facts stated, the invention, i. e., the 
secret process, has become abandoned to the public, a find- 
ing which it seems to me not only constitutes judicial 



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Journal, of the Patent Office Society. 101 

legislation but also repudiates the contractual obligation 
of the Government arising out of the grant of the patent 
in exchange for disclosure of the secret and destroys 
the validity of all other similarly issued patents, and this 
after it is too late to re-invest the patentee with the ex- 
clusive knowledge and enjoyment of his secret. 

Treating this as a matter of ''public policy'', it seems 
to me that the importance of leaving such questions to 
Congress is shown in this particular instance because 
Mr. Judge Clarke in the District Court in finding the 
patent invalid apparently favored the view that because 
the secret use of the process was accompanied by sale of 
the product therefore it constituted ''public use'' under 
the statute, while the Court of Appeals clearly did not 
favor this view but ruled that the patent was bad because 
of "abandonment". Still another view is expressed by 
the Honorable Assistant Commissioner who favors the 
conclusion of the court but apparently does not agree 
with the reason given for the conclusion by either of the 
two courts. Thus, we have a noteworthy example in this 
case of three different views of the law all from compe- 
tent authorities, which certainly would seem to raise a 
question as to the correctness of the conclusion. 

That the Court of Appeals for the Sixth Circuit was 
unwilling to follow the argument of the lower court as to 
public use, but instead reached the conclusion that the 
secret use of the process with sale of the product consti- 
tuted "abandonment" under the statutes is shown by the 
following quotations from the opinion of the Court of 
Appeals : 

"It is not necessary, we may abserve, to consider the portion 
of the decision below which deals with the question of public 
use. Our consideration will be limited to questions pei^lnent 
to abandonment/' 

And again, — 

" • • • there are some diflacuKles In the way of con- 
•eluding that secret use of the process resulting in public use 
and sale of the product constitutes the statutory public use of 
the invention." 

The conclusion as stated by the Court of Appeals was 
as follows : 



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102 JoUBNAIi OP THE PaTBNT OfFICJB SOdBTY. 

"We are thus led to conclude that whatever view may be 
taken of the conditions existing at the time the patent in sudt 
was applied for, the invention had tbeen abandoned. Accord- 
ingly upon -this ground the decree will be affirmed." 

In a decision of the Supreme Court (Bates vs. Coe, 
98U. S. 31),itissaid: 

"Inventors may, if they can, keep their inventions secret; 
and if they do for any length of time, they do not forfeit their 
right to apply for a patent, unless another in the meantime has 
made the invention, and 'secured by patent the exclusive right 
to make, use and vend the patented improvement. Within that 
rule and subject to that condition, Inventors may delay to apply 
for a -patent." 

In Parks vs. Booth, 102 U. S. 105, the court said : 

"Inventors may, if they can, keep their inventions secret; 
but if they do not, and suffer the same to go into public use for 
a period exceeding what is allowed by the Patent Act, they for- 
feit their right to a patent." 

While it is true that the above statements in these two 
cases were not necessary to their decision, these are the 
unmodified statements of the Supreme Court interpret- 
ing the law of 1836, which is practically the law as it now 
stands, and to which it was changed after the decision of 
the Supreme Court in Pennock vs. Dialogue, 2 Peters 1, 
evidently for the purpose of distinguishing between ** se- 
cret'' uses and ** public" uses to show that public uses 
only were intended as a bar to the grant. 

It would seem from the opinion of the Court of Ap- 
peals that if it should be held the conduct of the patentee 
referred to does not in fact under the law and authori- 
ties constitute '* abandonment'' under the statutes then 
the patent is in compliance with the requirements of the 
statute as existent at the time the application was filed, 
and the validity of the patent should have been sustained ; 
or to put this in other words, it would appear from the 
opinion of the court, that if the ruling as to '* abandon- 
ment" is in error, for the court now to hold the patent 
invalid would be to base a conclusion upon the court's 
idea as to some matter of public policy; yet determina- 
tion of questions of that character is properly for the 
Congress in the formulation of statutory enactments, and 
for any court to impose such a bar would constitute judi- 
cial legislation obnoxious to the rule laid down by the 
Supreme Court in the case of Henry vs. Dick (224 U. S» 
1). While the Court of Appeals in the decision in Mac- 



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JOUBNAL. OP THE PaTBNT OpFICE SoCIBTY. 103 

beth-Evans Glass Company vs. General Electric Com- 
pany refers to the fact that in a more recent case the Su- 
preme Court had, in terms, distinctly overruled the case 
of Henry vs. Dick with respect to the particular points 
there in controversy, it is nevertheless submitted that 
there is nothing in the present attitude of the court to 
show that it does not still adhere to the proposition ad- 
vanced in many cases, that determination of controversies 
on vague general grounds of public policy is unwise, and 
constitutes a judicial usurpation of the legislative func- 
tions of Congress. 

It is submitted that the law should concern itself but 
little with the question whether or not any particular in- 
ventor or patentee has made a profit or suffered a loss 
out of the practical operation of his invention. In the 
Macbeth case the courts have penalized the applicant 
Macbeth on the theory that the sale of the product was 
necessarily repugnant to the welfare of the public, be- 
cause the patentee had acquired some profit from such 
sale. If he had destroyed the glass made in secret, logi- 
cdlly according to the court's rulings he could still have 
secured a valid patent even after twenty years. Why 
then is he to be penalized for giving the public the bene- 
fit of use of the product? It may well be asked whether, 
if the operations and the placing of the product on the 
market had resulted in a financial loss to the patentee, 
the same rule would have applied. In other words, to 
make the determination of this matter turn upon the ques- 
tion whether or not, out of the secret use of the process, 
the inventor had incidentally made some profit, is ob- 
viously to class the question of either profit or loss on the 
part of the inventor as superior to the general question 
of public interest involved in the desirability of having 
the possessor or owner or discoverer of any valuable 
trade secret induced to surrender that and disclose it ful- 
ly to the public in an application, in exchange for a lim- 
, ited term of patent protection. 

With respect to the doctrine of abandonment, it is 
further to be observed that this should necessarily in- 
volve the idea of transferring to the public certain rights 
in the invention of which the public can not be thereafter 
divested by any action either of the particular inventor 
concerned or some other inventor. Thus for example, 



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104 Journal, of thb Patent Office Society. 

had Macbeth died without disclosure of his secret, it must 
be recognized that a later discoverer of the secret process 
could have gone in at any time on discovery of the secret 
and obtained a valid patent therefor. Thus, the assumed 
** abandonment" held by the court would have been ap- 
parently subject to revocation by subsequent application 
on the part of an independent discoverer. Study of the 
authorities plainly shows that to constitute real ** aban- 
donment", not only must there be found to have been an 
intent to abandon, but the actual act or acts constituting 
abandonment must have vested in the public free 
right to the enjoyment of the invention in a manner such 
that no subsequent occurrence or action, either on the 
part of the first inventor, or any other inventor or discov- 
erer, could have recalled from the public such right of en- 
joyment. 

That an abandonment is absolute and can not be re- 
called see Pennock vs. Dialogue, 2 Pet. 1, in whi'ch the 
court said: 

"where gifts are on-ce mAde to the pubUc in this way, they 
become absolute." 

The Court of Appeals says Macbeth abandoned to the 
public. But the record shows that until the application 
disclosed it to the public, the public did not have knowl- 
edge of the invention. 

Paragraph 5 of Section 4220 R. S. relates to the de- 
fense of public use and abandonment, and is as follows : 

''Fifth. That it had been in public use or on sale in this 
country for more than two years before his application for a 
patent, or had been abandoned to the public." 

In the above quotation from the statute regarding 
abandonment it is clear that it is specifically an abandon- 
ment **to the public'', and it is difficult to conceive how 
anything can be held to have become abandoned to the 
public where the public did not come into possession of 
the information on the strength of which any such aban- 
donment could be predicated, until the inventor in good 
faith filed his application. 

Admitting that the practical effect of a decree sus- 
taining the validity of this particular patent would have 
been to extend somewhat the profits of the patentee, it 
may still well be questioned whether or not the public in- 



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Journal, of the Patent Office Society. 105 

terest does not suffer more by a finding of invalidity, 
which is at least open to a charge of bad faith on the 
part of the Qovemment in obtaining the secret from the 
inventor in exchange for a promise of protection, and 
then destroying that protection at a time and under oon* 
ditions where it is impossible to restore the previous sta- 
tus. The opinion of the Court of Appeals itself recog- 
nizes that under the facts presented, this patentee in the 
enjoyment of his invention as a secret process was en- 
tirely within his rights ; and it must be assumed that un- 
der some circumstances at least such enjoyment of se- 
cret rights might continue for many years ; as it is known 
to have continued in connection with some secret pro- 
cesses even for generations, descending from father to 
son. Should it not, then, be accepted as a true rule of 
justice that any holder of such valuable trade secret was 
entitled to an interpretation of the statute law which 
should require as an element of good faith on the part 
of the Government, that any bar or prohibition or limita- 
tion to his right to obtain letters patent should be ex- 
pressly made clear in the statute, so that he might not 
be misled to his damage into surrendering up his secret 
process in an application containing full disclosure pub- 
lished at large in the Patent OflSce papers, only to suffer 
thereafter an entire destruction of his property! 

Furthermore, when Congress wrote into the Patent 
Act ** public use'' where before the act only read ^*use", 
it would seem to be clear, from the language employed, 
that Congress specifically distinguished between public 
use and secret use. If Congress did not intend to distin- 
guish between public and secret use (as the Court of Ap- 
peals has in effect found) then it is clear that the Con^ 
gress unfortunately adopted language decidedly indefi- 
nite and va^e. It is submitted that if Congress did not 
intend to distinguish between public and secret use, then 
it was the duty of Congress to employ language suflB- 
ciently plain to avoid leading any inventor who might 
seek the protection of a patent into such a pitfall as 
seems to have entrapped this patentee. 

Yours sincerely, 

Paul Synnestvedt. 



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106 . Journal op the Patent Office Society. 

(Note — Mr. Clay has read the foregoing letter of Mr. 
Synnestvedt and has made the appended comment.) 

I think Mr. Synnestvedt has overlooked the point that 
Macbeth in relying on secrecy rather than a patent, must 
take the risk of his secret being fomid out. It was found 
out before he applied for patent, and therefore it was not 
Macbeth, but others who first disclosed the invention to 
the public. 

P. W. H. Clay. 
October 9, 1918. 



THE NEED OF A SEGONDAKT PATENT CLASSIFI- 
CATION BASED ON INDUSTRIAL ARTS. 



By William L. Thurber, Examiner. 



There is probably nothing relating to the U. S. Patent 
Office of greater importance th^n its system of classifi- 
cation. Before any patent can be granted it is the dnty 
of the patent examiners to ascertain whether anything 
of substantially the same nature has been patented be- 
fore. The number of patents is increasing so rapidly 
that the time necessary to search those previously grant- 
ed is becoming a very serious matter. Much thought, 
time and money haVe been and are being devoted to pro- 
viding an arrangement which will limit the field of searcli 
as much as possible. 

Patents may be classified on two general lines. First, 
grouping them strictly under industrial art or trade 
names; for instance, Wood Working, Metal Working, 
Stone Working, Weaving, Printing, Book Binding, Steam 
Engines, Gas Engines, Water Pumps, Air and Gas 
Pumps, Water Meters, Gas Meters, Ships, Furniture, 
etc., titles with which people of average information are 
familiar. 

The second method is to group them according to those 
resemblances which are deemed to be of most importance 
in making searches for anticipating claims. Thus if it is 
found that in examining either wood-sawing, metal-saw- 



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JOXJBNAL. OF THE PaTBNT OfPICE SoCIETY. 107 

ing or stone-sawing machines it is more frequently ne- 
cessary to search the other ** sawing" groups than it is 
to search machines for working on the particular mate- 
rial mentioned, but in other ways than sawing, then the 
sawing machines should be brought together in on« class. 
When so collected they would probably be so arranged 
as to associate machines having the greatest structural 
resemblance regardless of the material upon which they 
might operate. Going a step further it may be found 
that certain parts of these sawing machines, for exam- 
ple, work-holding devices, carriage-reciprocating me- 
chanisms, automatic stop motions, etc., are indistinguish- 
able from those used in printing, punching, grinding, 
planing and other machines. This being the case, these 
parts would be assembled into their respective groups. 

Again, there is a strong resemblance either in whole 
or part between fluid motors, pumps and meters. Many 
times by omitting the titles and perhaps the disclosure of 
some very subsidiary mechanism, it would be impossible 
to tell whether the invention claimed related to a motor, 
a pump, or a meter, or whether it was to be employed 
with a liquid or gas. When this situation exists it would 
appear obvious that grouping under the trade titles is 
not suflBcient. Taking a second step with this group also, 
it may be found that,inany of the valves employed therein 
are not at all peculiar to either motors, pumps or meters 
but are similar to those used with ottier fluid-handling 
devices. Thus will be created a broad class of valves. 

One could continue almost indefinitely with illustra- 
tions of this nature. However, these examples are taken 
merely to distinguish the two systems without any sug- 
gestion as to whether it might be advisable to make the 
particular classes mentioned. 

The second system is the one which has been followed, 
for the most part, in reclassifying during the last few 
years. The industrial arrangement which in a crude 
way was the basis of most of the classes was found to be 
entirely inadequate for examination purposes. Gradu- 
ally parts have been taken from the old classes until in 
many instances only skeletons remain. Sometimes in- 
deed we have had the decencv to burv the skeleton. 



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108 Journal, of the Patent Office Socibtit. 

These alterations haVe not been made without creating 
considerable disturbance. Indeed sometimes it would 
appear that the many advantages gained are entirely 
lost sight of frequently because certain patents can no 
longer be found in places where experienced searchers 
have been accustomed to find them. There are, however, 
several very sound reasons why there should exist an in- 
dustrial art classification destinct from the one we have 
been preparing. Before presenting reasons for such a 
classification, it should be most emphatically stated that, 
for the specific purposes of the Patent Office, there is no 
intention of suggesting the superiority of such a system 
over that upon which the office has been engaged. It is 
believed that that undertaking was projected along the 
right lines, as far as a single system would permit. It 
has been hampered in many ways, many errors of judg- 
ment have been made, but those who seriously study the 
problem seem invariably to conclude that the plan of 
grouping things on their necessary functions, regardless 
of their ultimate industrial use, is logical and will endure. 

Passing now to the industrial basis : it should be borne 
in mind that the patent system was established for the 
purpose of providing the public with better ways of doing 
things. If one is engaged in a certain enterprise he 
should be able to find, conveniently arranged, in the U. S. 
Patent Office, those helps which inventors have been pro- 
viding for him. But if the material in which he is inter- 
ested has been broken up and the patents for various spe- 
cific devices scattered around in places convenient for 
office needs, he will probably obtain few suggestions un- 
less he makes a prolonged and painstaking search. If on 
the other hand the patents are somewhere arranged on in- 
dustrial lines, he will be able to locate his particular field 
and will have some idea of how to start his investigation. 
He will, probably have supposed that this special group 
is all he needs to look at, but when he discovers on each 
patent data indicating that it is classified elsewhere on an- 
other basis, if he is a person of intelligence he will con- 
tinue his investigation to the other fields. In this way, 
without any elaborate explanation he will discover not 
only those things which were intended for use in his par- 
ticular art but also those analogous things intended for 
use in other arts but which may be very well adapted for 



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JotTBHAL OF THE PaTBNT OfFICB SoCOTTY. 109 

bis. In the same way this second system will be helpful 
to those attorneys who complain that they cannot find 
anything in the new classes and they cannot understand 
the definitions. Using the industrial system with which 
they profess to be familiar as an introduction or index 
they could be led to the proper places in the more genu- 
inely scientific arrangement. It is probably too much to . 
expect that the attorneys generally will ever understand 
the latter system very well or be much in sympathy with 
it. In some ways it is quite intricate. The examiners, 
however, are not so much affected by this because it is 
necessary for each examiner to become expert on only a 
small portion of it, and when he is required to go beyond 
his particular field he relies on examiners expert in other 
lines to direct his search. The attorney, however, must, 
from time to time, search in all the classes, and it is quite 
an undertaking for him to keep informed on the various 
ramifications. One thing at least appears quite certain, 
that he will not attempt to master it while he believes 
that it is wrong. 

In addition to the searches above described there are 
others to which the oflSce system does not adapt itself no 
matter how familiar one may be with it. The search 
sometimes does not depend upon the particular structure 
employed but rather upon the question whether a certain 
thing has been accomplished in some particular indus- 
trial art, quite apart from the type of structure that 
might be employed in carrying it into effect. At other 
tiines an important advance may be accomplished by 
some subordinate element which perhaps even the inven- 
tor or his attorney did not appreciate and failed to claim. 
Every experienced classifier knows there are many de- 
tails which he deems subsidiary to the main types and 
for all of. which he is not able to provide by any arrange- 
ment of subdivisions which his ingenuity can devise. If 
these subordinate features are not claimed there is a 
chance that the classifier may not appreciate their im- 
portance from a particular industrial standpoint, and 
thus valuable advances may be hidden away, unless the 
patent can be in some way located from the industrial 
arrangement. 

Turning to a quite different aspect, if this additional 
system were provided it ought to expedite the work on 
the one at which the office is engaged. Take for example 

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110 Journal of the PaIent Office Society. 

the proposition above referred to of establishing a class 
of ** Sawing '\ Suppose that in working out such a class 
it is found that only a part of the patents for sawing 
wood, metal and stone were so related that it would be ad- 
!visable to bring them together, that in each of the three 
groups some of the machines were so peculiar to the ma- 
terial upon which they operated and so related to the oth- 
er machines in that class that it was perfectly clear noth- 
ing would be gained bj'^ such grouping. When this condi- 
tion arises there are sure to. be some machines that have 
features in common with both groups. Having only one 
system we would probably spend more time analyzing 
and considering the uncertain ones than we would in pro- 
viding for all the patents in both the other groups. If 
the two systems existed there would be no need to hesi- 
tate over these points for inasmuch as no patents were 
being withdrawn from the ** particular material" classes, 
all those patents could be placed in the sawing class that 
would be useful there, regardless of how peculiarly 
adapted they might be to the other group. This difficulty 
in deciding which way to throw the doubtful patents is 
the greatest time consumer of our present efforts. Fur- 
thermore, no matter how much time might be devoted to 
settling these troublesome problems individual judgments 
vary so much that there is no certainty but that one per- 
son after reading a definition would decide that a particu- 
lar patent was peculiar to an industry while another 
would conclude that it was not so limited and should fall 
in the broader group. 

There is still another reason for establishing an indus- 
trial art system of a very different nature from those 
above mentioned. In a democracy the people will not 
support institutions indefinitely which do not meet with 
their approval, and it is becoming evident that the time 
has arrived when the public does not approve of our sys- 
tem of classification. The attorneys are discontented 
and they pass this discontent on to their clients. When 
they overlook references it has become the custom to 
throw the blame on the sdheme of classification, rather 
than on the backward condition of the work. This practice 
has become so common that it is feared that many give lit- 
tie thought as to how many errors they charge against the 
office of which it is entirely innocent. It makes little dif- 
ference, however, where the blame lies, it is a matter 



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JOUKNAL OF THE PaTBNT OfFICB SoCIETY. Ill 

of what the public believes. The people who come in con- 
tact with the office should feel reasonably satisfied that it 
is being conducted on proper lines. It is not suggested 
that the establishment of an industrial art system alone 
would put the office on good terms with the public, for the 
public is represented by the validity searcher as well as by 
the preliminary searcher and the industrial system will 
never satisfy the former. It is believed, however, that 
without this industrial arrangement no matter how much 
the office may be improved from an inside point of view 
the public will never appreciate it or obtain from it even 
approximately the total service of which its resources ar3 
capable. 

Of course this undertaking would cost something. 
More room and more force would be needed for its execu- 
tion. One thing in its favor is that the cost of prepara^ 
tion could perhaps be much reduced by carrying it on 
simultaneously with the system at which the office is now 
engaged. In many instances as above pointed out a pat- 
ent could be classified in two places quicker than it could 
be in one. In fact in almost every case, once the patent 
is read, it would require little more time to mark it for 
two systems instead of for one. 

This matter has been presented as something needed 
by the Patent Office. But there is another viewpoint 
which certainly should not be overlooked. It is under- 
stood that the establishment of an institution having to 
do with the history of science is under preliminary con- 
sideration. If this should become a reality and should 
include, as contemplated, applied science and engineer- 
ing, it is evident that an industrial arrangement of pat- 
ents would be an indispensable part of that institution. 

This paper has been intentiontally limited to outlines, 
The office, however, has a force of classifiers who have 
been studying for years the problem involved, from al- 
most every angle, and if desired they would doubtless 
supply details in abundance. 

In closing it is desired to again emphasize the fact that 
classification for office purposes differs in many ways 
from those in which the public at lar^e may desire to em- 
ploy it. The primary function of the office is to grant 
valid patents. These patents are intended to be a benefit 
to the public, but if they are not valid they will surely be 
a detriment instead. 



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112 Journal of the Patent Office Society. 
SEOREOT OF WAR INVENTION. 



By William D. Shoemaker. 



On October 6, 1917, were passed two enactments of 
Congress relating to the secrecy of inventions. One was 
a special law known as Public No. 80, conferring upon 
the Commissioner of Patents power to order secrecy of 
certain inventions and to withhold the patents therefor 
(see vol. 243, 0. G. p. 797). The second was section 10(i) 
of the Trading with the Enemy Act. 

These two enactments differ on this subject but slight- 
ly, and evidently have the same object in view. It is the 
writer's opinion that the passage of both acts instead of 
one was an oversight upon the part of the legislature 
due to the rush of the closing hours of the session. 

Under the Executive Order of October 12, 1917, the 
President vested in the Federal Trade Commission the 
power and authority (conferred upon him in section 10 (i) 
of the Trading with the Enemy Act), whenever in its 
opinion the publication of an invention or the granting 
of a patent may be detrimental to the public safety or de- 
fense or may assist the enemy, or endanger the successful 
prosecution of the war, to order that the invention be 
kept secret and the grant of letters patent withheld until 
the end of the war. 

A study of the two enactments and the Executive Or- 
der shows that there are two branches of the Government 
qualified to order that an invention be held secret and 
two branches of the Government qualified to withhold 
the grant of letters patent upon that invention. 

The only penalty provided for a violation of an order 
issued under Public 80 is the abandonment of the inven- 
tion, whereas section 10(i) of the Trading with the En- 
emy Act provides for the abandonment of the invention 
in the same manner but in addition there is the general 
penalty of the act, which is a fine of not more than Ten 
Thousand Dollars ($10,000) or imprisonment of not more 
than ten (10) years, or both. 

It is obvious, therefore, that the first problem present- 
ed was the evolving of some plan of cooi)eration between 



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JOTJBNAL OF THB PaTBNT OfFICB SoCIBTY. 113 

the Patent Office and the Federal Trade Commission, 
whereby the two enactments might be enforced without 
any real or apparent inconsistencies in the actions taken 
by different branches of the Government in the matter of 
ordering secrecy of invention. It is to the credit of the 
officials of both of these branches of the Government that 
such plan was finally evolved. 

At the Patent Office, a committee of primary examiners 
was appointed, consisting of Messrs. Smith (Chairman), 
Skinner, Colwell, Glasscock, Holt, Rich and Lowers, to 
whom the members of the examining corps of the Patent 
Office were directed to report applications for patents in- 
volving war inventions as they are filed or as they come 
up for action. This committee passes upon the question, 
of whether an order of secrecy should be issued in the ap- 
plication and the patent withheld thereon. 

There was also organized an Army and Navy Patent 
Board, whose duty, among others, is to peruse the appli- 
cations pending in the Patent Office to see if certain of 
them should not be called to the attention of the proper 
military authorities. This board has been asked to act 
as a representative of the Federal Trade Commission in 
the matter of securing secrecy of war inventions, and 
often calls the attention of the Committee of Primary Ex- 
aminers to applications in which it would appear desir- 
able to have orders of secrecy issued and the patents 
withheld. 

This board has also been given the work of furnishing 
all branches of the Army and Navy with copies of pat- 
ents and prints and any other documents in the Patent 
Office which may be desired, and also has access to all 
pending applications. 

The work of perusing all pending patent applications 
is considerable, and it is understood that reliance is 
placed largely upon the cooperation of the individual 
members of the examining corps to call attention to im- 
portant cases. It was to be expected that some applica- 
tions which should have been withheld have been over- 
looked entirely, or. only discovered after some delay, af- 
fording time and opportunity for disclosures to be made 
prior to the issuance of secrecy orders therein. By and 
large, however, there has been satisfactory cooperation 



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114 JOUBNAL OP THE PaTBNT OfPICB SodBTY. 

between the Committee of Primary Examiners^ the Army • 
and Navy Patent Board and the members of the examin- 
ing corps. 

In certain lines of invention practically all applications 
are withheld from patent; in other lines a large percent- 
age of the cases are selected from among many on file, 
while in still other lines an occasional application is with- 
held. The importance of inventions for military pur- 
poses is a matter in which good judgment is required. 
For instance, an application for a patent covering detail 
construction of a gun or its mount which is at present in 
use by the Army might not be withheld from issue, be- 
cause a number of such guns aad mounts had fallen into 
the hands of the enemy upon the battlefield ; whereas an 
application for a patent covering a new process for man- 
ufacturing a cloth for uniforms designed for the protec- 
tion of the soldier from gas attack, might be withheld. 

Upon the recommendation of the Conmiittee of Pri- 
mary Examiners, or upon the suggestion of the Army 
and Navy Patent Board, or upon his own initiative, the 
Commissioner of Patents issues an order of secrecy and 
withholds the application from patent under Public 80. 
Once a week the Commissioner furnishes the Federal 
Trade Commission with a schedule of the cases in which 
orders of secrecy have been issued by him, whereupon 
an order is issued under the Trading with the Enemy Act 
by the Federal Trade Commission in these cases. Certi- 
fied copies of this order are served upon all parties ap- 
pearing as inventors, attorneys or assignees upon the 
schedule, except those residing abroad. 

It is to be noted that the order issued by the Federal 
Trade Commission merely forbids the disclosure of the 
invention; that is, it enjoins the secrecy of invention 
only, without withholding the issuing of the patent, since 
the order of the Conmiissioner is suSflScient for that pur- 
pose. 

From time to time the Federal Trade Commission has 
issued special orders in the cases of individual inven- 
tions, where the circumstances are exceptional and where 
the effectiveness of the order depends upon the prompt 
imposing of the penalty of the Trading with the Enemy 
Act, as where the War or Navy Department has request- 



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JOUBNAL OP THE PaTBNT OpFIOB SoCIBTY, 115 

ed the issuance of the order, or where the parties sought 
to be enjoined are not the inventors, assignees or at- 
torneys. 

It is to be noted that the order issued by the Federal 
Trade Commission is general in its form, and is not lim- 
ited to parties interested in the invention, but applies to 
all who may have knowledge thereof. Actual knowledge, 
therefore, of the issuance of an order of secrecy in any 
given case, is sufficient to bind all who have knowledge of 
the invention. 

By the terms of the Federal Trade Commission's or- 
der no party is enjoined from disclosing an invention to 
the Secretary of War or the Secretary of the Navy, or to 
such other persons as they may officially designate in 
writing. By the terms of the Federal Trade Commis- 
sion's order a permit to disclose issued by the Commis- 
sioner of Patents is recognized as a modification of the 
order issued under the Trading with the Enemy Act, and 
a rescinding by the Commissioner of Patents of his order 
IS effective as a rescinding of the order of the Federal 
Trade Commission. 

It is not the intention of orders of secrecy of inven- 
tion to prevent or hinder the exploitation of inventions 
which may be of use to the United States or its allies in 
the war, and modification thereof is made whenever it 
becomes necessary to accomplish that result. 

Permits to disclose enjoined inventions are issued by 
the Commissioner of Patents, in his discretion, where ap- 
plicants apply therefor setting forth the names of the 
parties to whom disclosure is to be made and a valid ob- 
ject in making it. 



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116 Journal of the Patent Office Society. 

A PROPOSED DEPARTMENT OF INVENTION 
AND DISCOVERY. 



By James H. Lightf oot, Examiner. 



[This paper presents a development from the matter In- 
volving fundamental principles a^ treated In papers read 
before the examining corps September 28, 1916, and be- 
fore the Junior examiners ^February 7, 1918, and Is intend- 
ed to define a program or system 'by whi>ch those principles 
may be put into practical effect and without which the 
requirements of the constitutional provision may not be 
fairly complied with.] 



If we as individuals and as a nation are to be industri- 
ally and economically prepared and efficient to meet the 
necessities of war as well as to compete for industrial su- 
premacy in times of peace, it is essential that our condi- 
tion of industrial progress and preparedness be based 
upon certain and secure foundations. 

There can be no healthful growth or substantial per- 
manency in our national or private industries if they be 
founded upon unsettled, insecure, or defective rights. 

The problems involved in making America industri- 
ally sound, efficient and prepared are real, serious and 
most highly controlling. These problems cannot be 
solved except by the active application of fundamentally 
right principles of industrial progress, security and effi- 
ciency. 

During the past four years or more there have been 
sufficient evidences of the need and value of systems of 
industrial, economic and military preparedness and effi- 
ciency, and there have been sufficient evidences of disas- 
ter due to the want of such systems to convince even the 
most pronounced reactionary of the urgent need of a high- 
ly organized and efficient industrial system. 

Since it is right and essential in a most important sense 
that the inventive genius and forces of the nation have 
been marshaled, encouraged, fostered and systemized to 
win the war for freedom and for real civilization, it must 
be equally important and right that the inventive forces 
of the nation be encouraged, fostered, and made secure 



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Journal op the Patent Ofpicb Society. 117 

as to their rights, in order that we may win the industrial 
contest that will follow the termination of the present 
war. 

Our President has said that **The world must be made 
safe for democracy^'. However, in order that this de- 
sired object may be attained and permanently main- 
tained, it is essential that industrial rights be made safe 
and secure and that those men of original thought and ac- 
tion who have orginated all the devices that have 
made and will make victory possible in war and indus- 
trial supremacy possible in times of peace, be encour- 
aged and given due and certain reward for their import- 
ant achievements. 

In other words it is essential that the patent system be 
mude safe for inventors, and for all manufacturing and 
business interests based upon invented things. 

With true prophetic vision the framers of our Consti- 
tution have 'directed and constructed the safest and 
soundest foundation for the most eflScient system of in- 
dustrial progress and security. The words of the Consti- 
tution : ** Congress shall have power to promote the prog- 
ress of science and the usefvl arts by securmg for a lim- 
ited time to inventors * * the exclusive rights to 
their * * discoveries '^ constitute the source of in- 
spiration and the vital fundamental authority for the 
origination and establishment of all of our national, cor- 
porate and private industries upon firm and secure foun- 
dations, and it is essential to the proper promotion of in- 
dustrial progress and stable, safe and sound business 
conditions that the terms of this constutional provision 
be fully and strictly complied with in our laws and in our 
practices. 

However, although the Patent System has been estab- 
lished for more than one hundred years, and although 
our nation has prospered and progressed industrially un- 
der its provisions, inventors have not been made secure 
and exclusive in their rights in such full measure as the 
Constitution directs. 

And, notwithstanding the fact that there have been 
gradual improvements during the past century in some 
respects, although there have been some laudable re- 
forms in recent years, and although able Commissioners 



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138 Journal of the Patent Office Society. 

of Patents have endeavored to produce needed reforms 
tinder disconraging circumstances, the following condi- 
tions requiring remedial action still exist : 

(1) All patents granted are still merely prima facie 
evidence of the rights of inventors to their inventions, 
whereas the grant itself and the Constitution provide for 
the grant of unconditional, secure and exclusive rights. 

(2) Although the statute (4886) requires, as a condi- 
tion precedent to the grant, that the alleged invention 
sought to be patented must have been in fact invented, 
patents have been graated and are still granted for things 
not invented, because of insuflScient time and inadequate 
facilities for the proper consideration of this important 
question, and patents have been and are still refused be- 
cause of the want of a proper system requiring the pre- 
sentation of practical evidences indicating invention, for 
the consideration of the examiner. 

(3) Although the statute (4886) requires, as a condi- 
tion precedent to the grant, that the alleged invention 
sought to be patented must be new, patents have been 
granted and are still granted for things not new^ because 
of the want of proper facilities and sufficient time for full 
and fair searches in domestic and foreign patents and 
publications. 

(4) Although the statute (4886) requires 05 a condi- 
tion precedent to the grant, that the subject matter sought 
to be patented must be useful and under Statute 4893 
that it must be ^^sufficiently useful and importa/nf, pat- 
ents are still granted for theoretical and sometimes prac- 
tically useless alleged inventions, which have later consti- 
tuted bars to the grant of patents to inventors of real 
inventions that would have practically promoted the in- 
dustrial arts, this condition being due to the fact that no 
facilities have been afforded for' properly determining 
the question of utility or practicability so essential to the 
practical promotion of industrial progress. 

(5) Although the statute (4886) requires as conditions 
precedent to the grant, (a) that the alleged invention 
must not have been known or used by others in this 
country before the applicant's invention or discovery 
thereof; (b) that the alleged invention must not have 
been in public ude or on sale in this country for more 



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Journal of thb Patent Office Society. 119 

than two years prior to the application; (c) and that the 
alleged invention must not have become abandoned, pat- 
ents generally have been granted without any investiga- 
tion of these important questions affecting validity, be- 
cause no system for the general investigation of these 
questions before the patent is granted has ever been pro- 
vided. 

(6) Although Rev. Stat. 4903 plainly requires that 
helpful * information'' be furnished to applicants to aid 
them in obtaining . proper protection, patents are still 
grajited the claims of which are so limited in scope as to 
be valueless to the inventor or his assignee owing to tht? 
want of a uniform standardized system of examining ap- 
plications from the standpoint of the inventor as well as 
from the standpoint of the public. 

(7) Although the provisions of Eev. Stat. 4904 are 
broad, comprehensive and directory in providing for no- 
tice in all cases of interfering applications or interfering 
applications and patents, patents are still granted which 
are rendered practically valueless and the industries 
based therein practically ruined by the subsequent grant 
of interfering patents granted on copending applications 
of which the former patentees had no statutorj^ notice 
during the copendency of such applications. 

(8) And patent"^ are still litigated in courts which, 
with some few able exceptions, are not specially qualified 
promptly and properly to determine the technical ques- 
tions arising under the patent laws. 

These unfortunate actualities which have produced un- 
settled, unsafe and unsound business conditions would 
doubtless largely have been remedied had the people gen- 
erally been educated as to the true importance and real 
meaning of the Patent System ; had inventors and manu- 
facturers realized that it is essential to their own safe 
and secure interests that patent applications be examined 
from the standpoint of inventors as well as from the 
standpoint of the public, in a spirit of helpful cooperation 
with inventors and attorneys ; and had the Congress real- 
ized its constitutional responsibilities in providing men, 
means and all facilities for the proper, thorough and full 
consideration of all pending cases in the Patent OflSce 
and for the proper adjudication of all patent cases in the 
courts. 



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120 JOUBNAL OF THE PaTBNT OpPICB SoOIBTY. 

The bnsiness interests of the nation in general, the in- 
terests of the mannfacturer, the capitalist, the investing 
public and the highest interest of inventors who have ori- 
ginated and made all of our industries possible, all de- 
mand that reforms in the above-named particulars and 
others be effectively made in order that the foundations 
of industrial enterprise may be made safe, secure and 
free from the complexities and uncertainties of long liti- 
gation in the courts and of long prosecution in the Pat- 
ent Office. 

A system that may, if made uniform, remedy some at 
least of the defects noted above so far as the considera- 
tion of alleged inventions by the Patent Office is con- 
cerned, it is thought, should include the mature and thor- 
ough analysis and examination of the subject matter pre- 
sented in patent applications both from the standpoint of 
inventors and from the standpoint of the public in a 
spirit of helpful cooperation with inventors and attor- 
neys and with full consideration of the educational, con- 
tractual and constitutional characters of the patent grant. 
An attempt has been made to treat this kind of examina- 
tion and analysis of patent applications in a paper read 
before the corps of examiners on September 28, 1916, 
and, in a more elementary way in a paper read before the 
junior examiners on February 7, 1918. 

It is obvious that full, fair and complete examinations 
of ** alleged inventions" as required by statutory and 
constitutional provisions as above noted, may not be 
made by the present inadequate force of examiners, with 
inadequate time and inadequate facilities and equipment 
for such essential work. 

However, if full and complete provision in men, in 
equipment and in all facilities were made so as to enable 
the examiners to carry into practical effect the plain 
terms of the Constitution and of the statutes as noted 
above, in the examination of alleged inventions in patent 
applications, it is submitted that there still would remain 
much more that should be done, beyond the scope of the 
examiners' work, in relation to a broader field, clearly 
within the plain broad terms of the constitutional pro- 
vision for promoting industrial progress by making in- 
ventors secure in their inchoate rights before application 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 121 

is filed as well as in their rights after the patent is 
granted. 

In order to indicate comparatively the (Sharacter of 
such a system that should be established, in order to 
more fuliy comply witii constitutional and statutory re- 
quirements, attention is called to the remarkable system 
of promoting the progress ^nd efficiency of the agricul- 
tural arts that has been effected by the Department of 
Agriculture alone and by this Department in coopera- 
tion with State Agricultural Colleges. 

A few years ago, comparatively, the Department of 
Agriculture was a minor section of the Patent Office, tho 
principal function of which was to issue seed to farmers. 
Afterwards, in 1862, under Commissioner Isaac Newton, 
this agricultural section became an independent bureau, 
and in 1889 under Commissioner Coleman, it became an 
executive department of the highest rank with Cabinet 
representation. Today it stands as our most useful In- 
dustrial Department, with normally about fifteen thous- 
and employees engaged in promoting one general line of 
industry, while the Patent Office is provided with onlj- 
about four hundred examiners who are charged with the 
constitutional duty of promoting aU lines of industry^ by 
making inventors secure and exclusive in their rights. 

The Section Chiefs, the Bureau Commissioners and 
the Secretaries of Agriculture find their associates in 
work, with clear conceptions of the great possiblities of 
promoting sound scientific agricultural development, 
have establishes! an active systena of promoting the prog- 
ress of the agricultural industry* by educating the farm- 
er and farmer's boy, through bulletins and by per- 
sonal instruction and demonstration in every detail of 
agricultural knowledge essential to efficiency and success, 
so that today American farmers thus educated and or- 
ganized constitute the backbone and the body of a stand- 
ardized system that is furnishing food to all our allies 
and to neutrals and abundantly supplies our home mar- 
kets. 

This department has established a Bureau of Soils to 
teach the farmer how to prepare the soil to produce bet- 
ter crops and how to cure soil defects and insufficiencies. 

They have established a Bureau of Plant Industry to 



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122 JOURNAT. OF THE PaTENT OfFTCE SoCTETY. 

investigate and teacb seed selection, crop selection, bet- 
ter crop production, cultivation and utilization. 

They have established a Bureau of Entomology to car- 
ry into effect measures to eliminate loss of crops due to 
the enemies of plant life and growth. 

They have established a Bureau of Cheniistr^'^ to det(M' 
mine the food values of vegetable growths and to deter- 
mine the producing values of soil and fertilization needs 
for the same. 

They have established in many localities Government 
Experiment Stations and an efficient corps of field agents 
in practically every county in the country who take the 
spirit of progress and efficiency of the departmental sys- 
tem directly to the farmers, and, knowing full well that 
the efficient farmers of the future are best made by in- 
structing the farmers' boys of today, they have estab- 
lished modernized systems for teacliing and encouraging- 
the work of the boys on the farm. 

They have established a Bureau of Markets and Rural 
Organizations to teach the farmer the best marketing 
methods for the products of his farm, for his protection 
and to prevent loss and failure to acquire a proper return 
for his productive labor and skill. 

These are some only of the many up-to-date activitich 
of this most wonderfully systematized institution, yet 
great and wonderful as it has grown to be there wouiii 
probably have been little of agricultural progress and de- 
velopment and little need of an Agricultural Department 
were it not for the thousand and one agricultural imple- 
ments, machines, processes, fertilizing agents, the means 
of transportation for crops and the great factories, mills 
and plants for the treatment and production of agricul- 
tural products, that have been produced by inventors un- 
der the Patent System and through the medium of th«' 
Patent Bureau. 

Not only would there be little need for an Agricultural 
Department were it not for the fact that inventors hav- 
made modern agriculture possible, but it is also true thai 
there would be little need of a War Department were it 
not for all of the engines and devices for war originated 
by inventors under the encouragement and inducements 
offered by the Patent System, and there would likewise 
be little need of a Navy Department without the ironclad, 



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•Journal of the Patent Office Societv. 12:' 

the siibinarine, and the wireless, produced under the en- 
couragement of the Patent System by inventors and dis- 
coverers. 

The Department of Commerce and the Post OflBoe De- 
partment would be minor institutions without invented 
means of transportation and transmission of intelligence, 
and the Department of Labor would probably never have 
been, established were it not for the fact that invented 
machines, new arts, new industries, new implements of 
labor, have lifted labor from its low dependent state to 
the plane of the intelligent, skilled workman constituting 
a material factor in our industrial growth and life. 

Yet, notwithstanding the fact that the Patent System, 
the Patent Office, the inventor, have made possible not 
only practically every governmental industry and activ- 
ity, but also every individual and corporate industrial en- 
terprise, the people generally have been kept in ignor- 
ance of the true meaning and wise provisions of the Pat- 
ent System, and the functions of the Patent Office, its 
real importance and its urgent needs are little known and 
still less appreciated. 

It is maintained that to constitute a fairly full compli- 
ance with the constitutional requirements, and in order . 
that it may fairly measure up to the extent and import- 
ance of its constitutional foundation, the Patent Bureau 
should develop into an executive department of the high- 
est grade and through its bureaus and divisions should 
direct, encourage, foster and protect inventions and dis- 
coveries in all of the industrial arts, just as the Agricul- 
tural Section or Bureau of the Patent Office has devel- 
oped into the Department of Agriculture and has direct- 
ed, encouraged, fostered and protected new and im- 
proved means and processes of promoting the progress 
of tlie agricultural arts and industries. 

This greater and better institution should be our most 
liraportant national industrial department because its 
work would furnish the foundations for and would pro- 
mote the activities of all other departments. 

If the plain broad tenns of the constitutional provision* 
are to be practically applied in the activities of this new 
industrial department, it may be that its field of work 
should be systematized somewhat as follows : 



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124 Journal of the Patent Office Society. 

1. An Executive Bureau. 

This new department should be under the control of 
an executive officer of distinct ability, free from political 
bias, who should be an industrial and efficiency expert. 
Directly and through competent associates, this official 
should maintain systems of efficiency and standardization 
in the viarious bureaus in keeping with this greater pro- 
gram for promoting industrial progress and stability. 
Under the direct control of this Secretary of the Depart- 
ment of Invention and Discovery a system should be 
established for the promotion of a high standard of effi- 
ciency and ethical standing among practitioners and a 
spirit of progressive and constructive efficiency among 
officials of all classes in his department. 

2. The Bureau of Information and Education. 

This bureau should be equipped with men and full fa- 
cilities for promoting the dissemination of knowledge of 
the true meaning and provisions of the Patent System. 

Specially is this essential because in its most funda- 
mental sense the Patent System is an industrial educa- 
tional system and it constitutes one of our most glaring 
national errors that the public in whose interests the Pat- 
ent System was established has been kept in ignorance of 
its true meaning and intent. 

This Educational Bureau should be charged with the 
duty of establishing a system to instruct the inventing 
public as to how to prepare to make inventions, how to 
invent in the interest of the public, and with profit to 
themselves, what to invent, how to avoid losses through 
abandonment or want of knowledge as to how to proceed 
after conception or reduction to practice to avoid compli- 
cations, how to obtain patents of value, how to study the 
prior arts before inventing, how to select competent at- 
torneys, in fact everything connected with making and 
patenting and marketing inventions just as the Depart- 
ment of Agriculture has, through bulletins, publications 
and field agents, instructed the farmer in all respects 
how to prepare to produce crops, how to produce them, 
how to protect and conserve them when produced and 
how to market them in the most efficient wav. 



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JOUBNAIi OF THE PaTBNT OfFICB SoCIETY. 125 

The incalculable values in time, money and energy that 
have been wasted in inventing useless things, in reinvent- 
ing things that have been shown to be old, and the great 
values in inventions lost to the nation because the inven- 
tors have not known how properly to develop them to ma- 
terial form and how to have them properly disclosed and 
protected in letters patent, clearly indicate the great 
need of educational work along these lines. 

The workmen in the shops and factories, in the labora- 
tories and on the farms know little if anything of their 
rights or responsibilities in relation to invention, and 
manufacturers and their employees know little in rela- 
tion to the same. 

This condition has resulted in the grant of many pat- 
ents to employers for inventions made by employees and 
has resulted in granting some patents to employees that 
have been made by employers, all of which patents being 
thus rendered invalid, have produced complex business 
conditions. 

If it be true, as has been stated, that unscrupulous in- 
dustrial institutions have pirated inventions in various 
stages of their development and that an enemy propa- 
ganda has been extended even to pirating inventions 
in the making and before being patented, it is clear that 
inventors should be taught to protect their inventions in 
the making and when completed from these enemies and 
from others who would pirate them. 

And if the spirit of inventions is to be encouraged, fos- 
tered and promoted in the national interests, it is quite 
obvious that this Educational Bureau should seek to pro- 
mote the instruction and study in our educational insti- 
tutions of the philosophy of invention and the true mean- 
ing and importance of the Patent System. 

Included in this Educational Bureau may be a corps 
of Patent Field Agents, just as there are Agricultural, 
Land and Pension Field Agents, who in cooperation with 
inventors, attorneys, manufacturers and capitalists, 
should seek to aid, in every possible way, the interests of 
inventors and manufacturers, because in this way the 
public interests will best be subserved. 

The Division of Information of this bureau should be a 
well organized institution of well qualified experts who 



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126 JOUBNAL OF THE PaTENT OfFICB SOCIETY. 

should furnish full and accurate information to solicitors, 
inventors and industrial institutions, as to fields of va- 
lidity search, and as to all matters in relation to proced- 
ure and .practices involved in the activities of the de- 
partment. 

3. Bureau of Patents and Publicatioiis. 

This institution should have an able staff of men to 
establish and maintain an efficient classification of pat- 
ents and an efficient classified library of all statutory 
publications relating to the industrial arts. This staff 
of specialists should properly digest publications for 
quick and thorough search purposes. It should by a 
regular standardized system seek to procure industrial 
literature from manufacturers and from all other sources 
and should classify and systematize them for ready re- 
search purposes. This bureau should also cooperate with 
Patent Field Agents to procure evidence of prior knowl- 
edge and use, prior public use, and workshop and labora- 
tory expedients and practices, and classify them for 
ready reference by the examiners. Under the jurisdiction 
of this bureau there should be established in given indus- 
trial centers, complete classified sets of patents and pub- 
lications, just as they should be classified and arranged iu 
the Patent Office for official research work, it being ob- 
vious that the present system of requiring men from all 
parts of the country to make searches in one set of such 
patents located in Washington is distinctly inefficient and 
antiquated. 

4. A Bureau or Division of Utility. 

This bureau should be equipped with laboratories, and 
all necessary equipment and competent workmen who will 
cooperate with the examiners in accurately determining, 
before patents are granted, the practibalitiy and opera- 
tiveness of alleged inventions under consideration. It is 
submitted that it is contrary to public interests and to 
the interests of real inventors and of manufacturers, that 
patents be granted upon merely theoretical ideas and 
practically useless alleged inventions which may techni- 
cally constitute bars or improper limitations upon the 
grant of patents for later inventions of real merit, whicli 
being reduced to practical and efficient form would ma- 
terially promote industrial progress. 



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JOUBNAL OF THE PaTKNT OfFICB SoCIETY. 12:7 

5. A Bureau of Validity Examinations. 

This bureau should be fully equipped with well quali- 
fied men, including an additional ^rade of re-examiners 
to re-examine claims held allowable by other assistant 
examiners, this new grade ranking between the first as- 
sistant and principal examiner. 

The work of this corps of specialists should be so sys- 
tematized and arranged that each shbuld have full time 
and facilities to examine the subject-matter of each appli- 
cation under his consideration thoroughly, from the 
standpoint of the inventor as well as from the stand- 
point of the public, so that when granted patents may af- 
ford inventors full protection and be essentially valid, 
thus constituting a safe and sound basis for the estab- 
lishment of industries and safe and secure investments 
for the capitalists who may promote the establishment 
thereof. 

6. A Bureau of Priority of Invention. 

The present divisions of interference should be expand- 
ed into a Bureau of Priority for the full, complete and 
final determination of the question of priority between 
copending applications or applications and patents con 
taining common patentable subject-matter. It is essen- 
tial to the establishment of safe and secure rights that 
the question of priority be promptly, thoroughly and 
finally determined within the bureau, and that this ques- 
tion be not extended through various appeals in the Pat- 
ent Office and then further and indefinitely extended 
through various appeals in the courts. With a com- 
petent and efficient Bureau of Priority the questions at 
issue may be fairly and finally determined by judiciai 
officers within the bureau, it being a matter of much im- 
portance that the patents when granted be free from fur- 
ther interference complication if they are to constitute 
bases for the. establishment of industries, or if they be 
importantly involved in an industry already established. 

The injury to established industry and the discourage- 
ment to inventors, manufacturers and investors due to 
the subsequent grant of patents that dominate or invali- 
date patents formerly granted on copending interfering 
applications without notice, have created a condition so 



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128 JOUBNAL OP THE PaTBNT OfFICE SoCIETY. 

obviously violative of the grant of secure and exclusive 
rights that distinct reforms should be effected. As it is 
essential to a safe and sound industrial system that pat- 
ents be granted that are essentially valid in view of the 
prior published arts, so also it is equally if not more es- 
sential to such safe and sound industrial system that pat^ 
ents, when granted, be free from further interference by 
domination or invalidization by copending later granted 
patents of which the former patentees had no notice 
while their cases were pending. 

While being properly equipped with qualified men to 
properly determine the question of priority, this bureau 
should also include men who may sit as commissioners to 
take testimony and determine the admissibility thereof, 
so that when the testimony reaches the tribunal to deter- 
mine priority, only the proper legal evidence may be 
considered. 

In order that the question of priority may be finally 
determined within this bureau, there should be a Board 
of Interference Appeals consisting of specially qualified 
men who may properly hear and finally decide appeals 
from the decision of the examiners of interference. This 
appellate board of specially qualified men would be more 
apt to render fair and just final decisions than would tri- 
bunals that are not thus specially qualified. 

7. This greater and broader Department of Invention 
and Discovery may possibly also include a Bureau of Li- 
censes and Sales, just as the Department of Agriculture 
has a Bureau of Markets. 

Such a bureau as this may be found useful in prevent- 
ing impositions and frauds upon inventors by unscrupu- 
lous profiteers ; in bringing the buyer and seller together 
' in a way that would be for the best interests of the in- 
ventor and the capitalist; and in general by advising in- 
ventors and patentees how they may properly market 
their inventions if they be of marketable value. It is a 
well known fact that it has been too often the case that 
inventors who have produced by their own ingenuity new 
forms of property value to the public have derived little 
or no benefit from their important work, and a properly, 
conducted division or bureau of the character named may 
in due time work out some scheme by which the inventor 



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Journal of the Patent Office Society. 129 

may be assured of a just reward for the benefits he con- 
fers upon the public, 

8. And, as has been suggested by a very able patent 
lawyer representing important industrial interests, this 
g^reater industrial department should include among its 
activities, a competent Patents Court of specially quali- 
fied jurist, to promptly and finally determine the ques- 
tions of validity and infringement. 

The foregoing is a mere cursory and inadequate pre- 
sentation of a very important subject and it is hoped that 
others abler and more capable may appreciate the im- 
portance of properly presenting this matter in a way 
that may result in inaugurating an effective movement to 
establish a safe and sound industrial system under the 
constitutional provision to which attention has been in- 
vited. 

It is appreciated that there is no instantaneous pro- 
cess by which a bureau with fixed practices of long stand- 
ing can be enlarged or converted into an executive de- 
partment for greater and larger lines of work, but it is 
believed that just as some able men encouraged and sup- 
I)orted by the agricultural interests have in due time con- 
verted the small *' section'' of the Patent Bureau into 
the great Department of Agriculture, just so other able 
men, with clear conceptions of industrial needs, if en- 
couraged and supported by all industrial interests affect- 
ed by the Patent System, may in due time convert the 
Patent Office into a Department of Invention and Dis- 
covery, with full powers for promoting the progress of 
science and the useful arts under the Constitution in the 
interest of national and individual industrial efficiency 
and preparedness, aiid to promote and establish a safe 
and sound industrial system based upon secure and ex- 
clusive rights in letters patent. 

Should a program or system such as that referred to 
herein be put into practical effect the following results 
would doubtless accrue therefrom: 

1. The patent system would be popularized among the 
people just as the work of the Department of Agriculture 
has become popularized, and it would be made construc- 
tively efficient. 

2. The Patent System having been popularized and 



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130 Journal of the Patent Office Society. 

the people generally having been educated as to the true 
meaning and importance thereof, there would of necessity 
be a greater and more general development and exercise 
of the inventive faculty and the power of original thought 
in the public and individual interests. 

3. Inventors would be encouraged more actively to 
promote the progress of the useful arts by the produc- 
tion of new and useful things, knowing as they would 
that they would be better protected and made more se- 
cure in their rights. 

4. Manufacturers would feel more assured that their 
plants were established upon more secure and safe foun- 
dations and they would be encouraged more actively to 
engage in constructive industrial business. 

5. The capitalist and the promoter knowing that in- 
dustrial rights under letters patents were made more 
safe and secure, would more freely and actively invest in 
and encourage the establishment of manufacturing and 
industrial enterprises. 

6. Necessarily with this industrial growth and this in- 
creased activity of inventors, manufacturers and capi- 
tflliflti; HnA to thft Dromotion of safe and secure rights, the 
professional business and legitimate services of ethical 
attorneys and solicitors, whose able work for inventors 
and manufacturers has been a large contributing factor 
in our industrial growth, would be correspondingly in- 
creased and made of more importance and value. 

7. And more important still, the industrial interests of 
the nation, its governmental interests, individual inter- 
ests, general professional interests, corporation interests, 
all material interests and other interests dependent 
thereupon, would be vitalized and put in a safe, progress- 
sive, secure condition. 



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JOUBNAL OP THE PaTBNT OfFICE SoCIBTY. 131 

PARTIES IN GENERAL. 



By Chas. E. TuUar, Examiner. 



(Delivered before the fourth assistant examiners.) 



Before taking up the particular situations arising un- 
der Rules 25, 26 and 28, a brief consideration of the ques- 
tion who may obtain a patent is in order. The questions 
as to who may make the application and swear to the 
specification will be taken up in detail under the rules re- 
ferred to. The question as to who may be the grantee of 
a patent will be. taken up in connection with the subject 
of assignments under Rules 26 and 183 to 189, inclusive. 

Section 4886 upon which Rule 24 is based extends the 
right to obtain a patent to anp person who has made an 
invention within certain subjects matter of invention 
provided certain conditions are fulfilled and certain re- 
quirements complied with. 

In the United States a valid patent can be obtained when 
it is based upon the right of an original inventor only. 
Such inventor need not be the first to make the invention 
although at the time of making application he must be 
able to make oath that he believes himself to be the origi- 
nal and first inventor. (Sections 4892 and 4923, Revised 
Statutes.) It is only where there are rival claimants for 
the same invention that the question of priority of inven- 
tion arises and when it arises it is determined by an in- 
terference proceeding under Section 4904,. Revised Stat- 
utes. (Rules 93 to 132, inclusive.) Even where it has 
been clearly established in an interference proceeding 
that one party is not the first inventor, he may under the 
patent law receive a valid patent for his invention as is 
shown by the case of De Ferranti v. Lindmark," 134 0. 
G., 515; 1908 C. D., 353, 30 App. D. C, 417, where De 
Ferranti obtained priority over Lindmark although Lind- 
mark 's foreign and domestic filing dates, respectively, 
anticipated the foreign and domestic filing dates of De 
Ferranti. This resulted from the fact that the Act of 
March 3, 1903, gave De Ferranti the benefit of his foreign 
filing date, but, since it did not apply to pending applica- 
tions, gave Lindmark no such benefit. 



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132 JOUBNAL. OP THE PaTENT OfFICE SoCIETY. 

The ** person*' contemplated by Section 4886 must be 
a natural person as distinguished from a corporation. 

It has* been held that the invention of a slave can not 
be patented by him or his master. (9 Op. Atty. Gen., 
171.) Presumably this opinion was based upon the idea 
that a slave was a mere chattel and therefore not a ** per- 
son" in contemplation of the statute. 

The law gives the right to a patent to an inventor 
whether siii juris or under disability. A married woman, 
an infant or a person under guardianship may be an in- 
ventor or the assignee of an inventor. (Fetter v. New- 
hall, 25 0. G., 502; 1883 C. D., 429; 17 Fed., 841, C. C. S. 
D. N. Y.) 

A convict serving a term in the penitentiary may apply 
for and receive a patent for an invention made by him. 

The personality of the inventive act may reside in two 
or more individuals, in which case the application must 
be a joint application. The subjects of joint invention 
and joint application are treated in detail under Rule 28. 

Where the inventor dies or becomes insane after com- 
pleting his invention his legal representatives may make 
the application and receive the patent. (Section 4896, 
Revised Statutes.) 

Aliens : 

The original patent act of 1790 placed aliens on the 
same footing with citizens of the United States. The 
Act of 1793 limited the right of applying for a patent to 
citizens of the United States. The Act of 1800 extended 
the right to aliens who at the time of making application 
had resided for two years within the United States. The 
Act of 1832 gave the right to every alien who at the time 
of making application had declared his intention of be- 
coming a citizen. His patent was to be absolutely void, 
however,' if he did not become a citizen at the earliest 
time the law permitted. Furthermore, his patent was to 
be void if he did not introduce his invention into public 
use in the United States within a year from the granting 
of his patent, and also if at any time- after such introduc- 
tion he failed to continue such use for a period of six 
months. 

Since the Act of 1836 the United States has by law rec- 
ognized the right of a foreign inventor to a patent for his 



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JOUBNAL OF THE PaTENT OfFICE SoCIETY. 133 

invention. That law discriminated against the foreign 
inventor in the matter of fees. The fee for a British 
subject was five hundred dollars, for all other foreigners 
three hundred dollars, while for citizens or residents of 
the United States the fee was thirty dollars. This dis- 
crimination was done away with by the Act of 1861. 
Since that date the foreign inventor has been accorded 
the same rights as are accorded citizens of this country. 
Under the '^Trading with the Enemy Act" of Oct. 6, 
1917, 243 0. G., 1070, an enemy or ally of an enemy 
may file and prosecute applications in this country. 

Government Employees Generally: 

A person in the employ of the United States may apply 
for and receive a patent for an invention made by him 
during his employment. (Gill v. United States, 160 U. 
S., 426.) Where, however, a person is employed to de- 
vise or perfect a means to accomplish a prescribed result 
his invention belongs to his employer and there is no dif- 
ference between the Government and any other employer 
in this respect. (Solomons v. United States, 137 U. S., 
342.) 

Under the Act of March 3, 1883, Chapter 143 (U. S. 
Statutes XXII, page 625) a patent may be granted to 
any officer of the Government except officers and em- 
ployees of the Patent Office, without payment of fees, 
provided the applicant states in his application that the 
invention if patented may be used by the Government or 
any of its officers or employees in the prosecution of work 
for the Government, or by any other person in the United 
States, without the payment of any royalty, which stipu- 
lation shall be included in the patent. The preparation 
of an application under this statute is sometimes assigned 
to the examiner in whose class this invention would be 
classified. , 

The Act of June 25, 1910, (36 Stat., c. 423, p. 851; 
quoted in 1912 C. D., 637) giving the right to sue for rea- 
sonable compensation whenever the United States uses a 
patented invention without license from the owner, does 
not extend such right to any device invented by a Gov- 
ernment employee during his term of service. 



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134 JOUBNAL OF THE PaTBNT OfFICE SoCIETY. 

Patent Office Employees : 

Officers and employees are incapable during their em- 
ployment of acquiring except by inheritance or bequest, 
any interest in a patent issued by the office, Sec. 480, 
Rev. Stat The intent of Congress was to prevent per- 
sons from taking any undue advantage of the opportuni- 
ties they have, as a result of their connection with the 
office. Applications filed in contravention of the statute 
are returned together with the filing fee. (26 0, Q-., 637; 
1884 C. D., 12.) No steps can be taken to acquire an in- 
terest in a patent, and an application any of the parts of 
which are filed by an employee cannot be completed. 
{Ex parte McElrby, 80 0. G., 966; 1897 C. D., 40.) A 
person taking employment in the Patent Office does not 
forfeit or dedicate to the public any invention made by 
him before such employment. (Page v. Holmes Burglar 
Alarm Telegraph Co., 17 O. G., 737; 1880 C. D., 345; 1 
Fed., 304, C. C.) If, however, he has any applications 
on file at the time he accepts employment, the prosecu- 
tion of those applications for his interest can not continue. 
It is customary to assign all right, title and interest in 
Such applications before reporting for duty. 

An employee may obtain patents on his inventions, 
made during his employment, after he leaves the office, 
and any such invention mav be given its true date. 
(Foote V. Frost et al., 14 0. G., 860; 1878 C. D., 421; 3 
Ban & A. 607, Fed. Cas. No. 4910.) The disability is, 
however, self imposed and, in case of interference, dili- 
gence cannot conmaence before resignation from the of- 
fice. {Ex parte McElroy, 140 0. G., 1207 ; 1909 C. D. 52.) 

An applicant who is an ex-employee of the office will 
be regarded as having made his invention in the light of 
all applications pending at the time of his employment for 
the same reason that any applicant is conclusively pre- 
sumed to know, the* prior art. It would be impossible to 
prove whether or not he did in fact see any particular 
application, and therefore he must be presumed to have 
knowledge of them all. While the examiner was directed 
to reject on copending applications in ex parte McElroy, 
80 0. G., 1123, it would nevertheless appear that such 
procedure presents difficulties since the applicant cannot 
well be permitted access to pending applications to deter- 



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JOUBNAL OF THE PaTBNT OfFICE SOCIETY. 135 

mine whether or not suoh rejections are well founded. 
When attacking the validity of a patent granted to an 
ex-employee of the office for an invention made during 
his employinent it would seem that patents granted on 
prior copending applications might be pleaded under the 
third, rather than the fourth, defense set forth in Sec. 
4920 Bev. Stats. 

There is another aspect of the situation which tnust 
not be overlooked, and that is that an applicant has a 
right to keep his invention secret, under the present 
rules, until his patent issues. This right should not be 
violated by an employee of the office. If, however, an 
examiner makes an improvement on a pioneer invention 
disclosed only in a pending application it will probably 
be impossible to obtain a patent on the improvement 
without disclosing the subject matter of the pending ap- 
plication to the public. It will therefore' be seen that an 
ex-examiner who makes application for improvements on 
devices of which h^ has obtained confidential informa- 
tion through his employment must exercise the very 
highest type of good faith, if necessary jeopardizing his 
own rights, to safeguard the rights of others. 



DECISION OF THE SOLICITOR FOR THE DEPART- 
MENT OF THE INTERIOR. 



Under date of September 20, 1918, the Solicitor for the 
Department of the Interior rendered a decision on the 
question as to whether ''persons who have entered and 
are actually engaged in the military or naval service of 
the United States, whether as officials or privates, are in- 
eligible to practice as attorneys representing applicants 
for patent before the Patent Office *'. 

The dedsion, based on Sec. 113 of the Penal Code, Act 
of March 4, 1909 (35 Stat., 1088-1109), holds that com- 
missioned officers of the Army and Navy can not receive 
or agree to receive compensation for acting as such at- 
torney, but may so act without compensation. An en- 
listed man may act as such attorney and receive com- 
pensation. 



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136 JOUBNAL OF THE PaTBNT OmCE SOCIBTY. 

RULES 25, 26 AND 27. 



By Chas. E. TuUar, Examiner. 



(Delivered before the fourth assistant examiners.) 



Rnle25. 

25. In case of the death of the inyentor, the e4>plicatlon will 
be made by and patent will Issue to his executor or admlnistra- 
tor.i In that case the oath required by Rule 46 will be made 
by the executor or administrator. 2 In case af the death of the 
inventor during the time intervening between the filing of his 
application and the granting of a patent thereon, the letters 
patent will issue to the executor or administrator upon proper 
intervention by him.s The executor or administrator duly 
authorized under the law of any foreign country to administer 
upon the estate of the deceased inventor shall, in case the said 
Inventor was not domiciled in the United States at the time of 
his death, ha^e the right to apply for and obtain the patent. 
The authority of such foreign executor or administrator shall 
be proved by certificate of a diplomatic or consular officer of 
the United State6.4 

In case an inventor become insane, the application may ibe 
made by and the patent issued to his legally appointed guar- 
dian, conservator, or representative, who will make the oath 
required by Rule 46.5 

(1) and (3) Death Occurring Before or After Filing 
Application. 

Since the Act of April 17, 1800, the law has contained 
a provision permitting the personal representative of a 
deceased person to apply for a patent on an invention 
completed by the deceased before his death. The right 
of an inventor to a patent therefore vests in him at the 
moment the invention is complete and is not affected by 
his death. This right, like other personal property, up- 
on the death of the inventor vests in the executor or ad- 
ministrator of the estate. If the inventor has assigned 
the invention the beneficial interest is in the assignee. 

Section 4896 of the Revised Statues provides for two 
classes of cases, one in which the application is filed be- 
fore, and the other in which it is filed after the death of 
the inventor. In the first case only the right of obtaining 
the patent devolves upon the personal representative, 
while in the latter case the right of both applying for and 
obtaining the patent so devolves. In the former case the 



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JOUBNAL OF THE PaTBNT OfFICE SoCIETY. 137 

filing of a new application is not good practice, but is not 
illegal. {Ex parte Smith, 43 0. G., 506; 1888 C. D., 24; 
De La Vergne Machine Co. v. Featherstone, 62 O. G., 
741 ; 1893 C. D., 181 ; 147 U. S., 209.) Such new appUca- 
tion will not be permitted, however, to impair, the rights 
of afisignees and parties to an interference. (Rice v. 
Burt et al., 16 0. G., 1879; 1879 C. D., 291.) 

An application is a legally pending application until 
the time for action expires, although the inventor is dead 
and the executor has not asserted his rights. (Decker v. 
Loosley, 77 O. G., 2140; 1896 C. D., 106; Handly v. Brad- 
ley, 89 0. G., 522 ; 1899 C. D., 197.) 

An assignee of an inventor who died before making his 
application can not file an application even where the sub- 
ject matter is divided out of an application filed by the 
inventor. {Ex parte Stevens, 59 0. G., 299; 1892 C. 
D., 1887.) 

Where after signing the petition, specification, and 
oath and delivering them to the attorney for filing the 
inventor dies before the papers are deposited in. the Pat- 
ent Oflfice, it is not necessary for the personal representa- 
tive to prepare new papers to constitute the application. 
{Ex parte Jones, 103 O. G., 228; 1903 C. D., 81. 

The practice governing the prosecution of applications 
by legal representatives of deceased or insane persons is 
set forth in Order 1838, Jan. 13, 1910; 151 0. G., 453, as 
modified in Order 2076, Oct. 14, 1913; 195 0. G., 543. 

Under these orders applications which are filed by the 
personal representative of a deceased or insane person 
or in which such personal representative has intervened, 
as well as those in which the death of the inventor has 
been suggested,. shall be referred to the Assignment Divi- 
sion to ascertain whether proper authority is of record, 
and for suitable indorsement on the file. 
• To secure uniform practice and relieve examiners of 
work foreign to their usual duties, Order 1838 makes the 
Chief of the Assignment Division the judge of the suffi- 
ciency of the proof of authority. If this official reports 
that the authority is insufficient the examiner will require 
the recording in the Assignment Division of a certificate 
from a competent court or a certificate of the Register of 
Wills that the legal representative has been appointed 



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138 JOUBNAL OF THE PaTENT OfPICE SoCDETY. 

and that his appointment is in full force and effect, or, 
alternatively, the recording of a certified copy of letters, 
of administration. 

Whenever a personal representative intervenes in the 
prosecution of an application a new power of attorney 
should be filed and if any action has been taken by the 
deceased inventor's attorney there should be a ratifica-- 
tion of such action. The orders do not, however, pro- 
vide for the giving of legal notice to the executor br ad- 
ministrator in ea> parte cases. Hence the examiner can 
merely suggest to the attorney of record that he should 
secure a ratification of his acts and file a new power of 
attorney. If, however, the executor or administrator 
does not intervene and the inventor's attorney continues 
to prosecute the application the application will not be 
withheld from issue. (Order 2076.) 

The reason for the modification of the practice in re- 
gard to' the withholding from issue is probably that a pat- 
ent granted to a dead man is not invalid for want of a 
grantee where it is granted under the terms of Section 
4884, Revised Statutes, to the ** patentee, his heirs or as- . 
signs". (De La Vergne Machine Co. v. Featherstone, 
supra). In that case the applicant for a patent, Boyle, 
filed his application on the 24th day of November, 1875, 
and three days afterward died. The attorneys whom he 
had appointed amended the specification in December 
following, and the patent was granted on March 21, 1876, 
to ''James Boyle, his heirs or assigns". None of the 
beneficial owners of the patent repudiated the proceed- 
ings, but sold their interest for a valuable consideration. 
In addition to holding that the patent was not void for 
want of a grantee the Supreme Court held that the amend- 
ment filed by the attorneys did not render the patent void. 
It is noted, however, that the Court says : 

"The attorneys who have acted for Boyle continued to act 
under Rankin's (the administrator's) direction, and although 
it Is not shown that their authority was conferred in writing 
by a power of attorney executed and filed In accordance with 
the rules of the office, that is not a fatal oibjection, s.nce the 
attorneys had authority in fact» and their acts were subse- 
quently ratified by Rankin and by Mrs. Boyle." 

In the case of in re MattuUath, 179 0. G., 853; 1912 
C. D., 490; 38 App. D. C, 497; the office had made a re- 



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JOUBNAL. OF THE PaTENT OfFICE SoCIETY. 139 

jection on the ground of inoperativeness, on October 1, 
1902. The inventor died December 30, 1902. An amend- 
ment was filed September 18, 1903, by the attorneys of 
record. On September 29, 1903, the attorneys were in- 
formed that no action could be taken on the amendment 
because there was no one of record authorized to prose- 
cute the case, the power of attorney having been revoked 
by the death of the applicant. Neither the attorneys nor 
the office made any attempt to notify the heirs or legal 
representatives of the applicant of the revocation of the 
power of attorney, and ihey were in. fact ignorant of the 
fact of the existence of any such application. At the ex- 
piration of the year from the rejection of October 1, 1902, 
the case was entered in the office records as abandoned. 
In connection with a holding that the delay in amending 
was unavoidable the Court of Appeals (Shepard, 0. J.) 
pointed out the inconsistency on the part of the office in 
holding that notice to the attorney was notice to the rep- 
resentatives, and at the same time holding that the death 
of the applicant had revoked the power of attorney. The 
aourt said, ** Moreover, they were never the attorneys of 
the deceased applicant's representatives'*. The. court 
said further : 

"That the power to make such an amendment had not been 
revoked by death, and that the action could have been taken 
upon it lawfully, had been declared by the Supreme Court in a 
decision rendered In January, 1893. (De La Vergne Machine 
Co. V. Featherstone, 62 O. G., 741; 1893 C. D., 181; 147 U. &„ 
209.) This decision ought to have been well known in the 
office." 

Notwithstanding the De La Vergne Machine Co. decision, 
however, the same judge had said in Phillips v. Sense- 
nich, 134 0. G., 1906; 1908 C. D., 391; 31 App. D. C, 159: 
''Where an applicant dies pending his application the 
authority of. his solicitor ceases •••>>. 

As a matter of fact the authorities including the Su- 
preme Court seem to be unanimous to the effect that the 
death of the client revokes the power of attorney unless 
coupled with an interest. (Hunt v. Rousmaniere, 8 
Wheaton,174; Wylie v. Coxe, 56 U. S., 416; Cyc, Vol. 4, 
page 953 ; Am. and English Encyc. of Law, Vol. 3, page 
328; ex parte Woodworth, 84 0. G., 811; 1898 C. D., 127; 
ex parte Jones, 103 0. G., 228 ; 1903 C. D. 81.) Moreover, 



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140 Journal of the Patent Office Society. 

the general rule of law is also that the revocation of tli6 
authority of the agent by the death of the principal ap- 
plies to all acts which must be done in the name of the 
principal. 

It would seem, therefore, that the careful attorney 
would endeavor to act under the authority of the execu- 
tor or administrator. It is, for example, a grave question 
whether a ratification by mere acceptance of the beneficial 
interest under the patent granted to the deceafied invent- 
or can, after the time allowed by law for amendment has 
expired, ratify nunc pro tunc actions taken by the attor- 
ney after the death of the inventor but before the expira^ 
tion of the time allowed by law for amendment It was 
held in ex parte De Forest and Horton, 141 0. G., 566; 
1909 C. D., 64, that a ratification may not have a retroac- 
tive effect to defeat the express provisions of the statute 
(Section 4894) relating to the time within which a party 
must prosecute an application to save it from abandon- 
ment. 

In interference cases where the notices (Bule 103) have 
been sent to the attorneys of record and the attorney of 
one of the parties notifies the office of the death of the 
applicant, the Examiner of Interferences writes a letter 
in the interference to each of the parties stating that the 
office having been informed by the attorney of the death 

of the applicant the interference is suspended for 

days to permit the intervention of the executor or admin- 
istrator and further stating that if at the expiration of 
this period no response has been received the office will 
proceed by publication. The publication is for three suc- 
cessive weeks in the Official Gazette, the case being dock- 
eted about four days later than thirty full days after the 
first publication.. 

In ex parte Woodworth, 84 0. G., 811; 1898 C. D., 127, 
the inventor died soon after the filing of the application. 
A short time afterwards an interference was declared, 
the notices of declaration being sent to the attorney of 
record. The attorney notified the office of the inventor's 
death and at his suggestion proceedings were suspended 
to permit the filing of letters of administration. Such 
letters were filed without the knowledge of the legal rep- 
resentative. A decision on priority was set aside be- 



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JOUBNAL OF THE PaTENT OfFICE SoCIETY. 141 

cause the death of the applicant had revoked the power 
of attorney and the legal representative had had no legal 
notice of the proceedings. This holding is in accordance 
with the holding of the Court of Appeals in the Mattul- 
lath case, supra, that the attorneys of the inventor ^'were 
never the attorneys of the deceased applicant's represen- 
tatives' \ The point was directly involved in the Mattul- 
lath case since the holding of unavoidable delay was based 
on the fact that the representative had no notice of any 
application and was not put upon inquiry as to any ap- 
plication. 

In ex parte Deeter, 93 0. G., 190; 1900 C. D., 162, it is 
held that a notice to the inventor's attorney of the allow- 
ance of an application is binding upon the administrator. 
This decision is clearly inconsistent with both ex parte 
Woodworth, supra, and the MattuUath case, supra, which 
are based upon the general rule of law. 

Where after an assignment of the entire interest the 
inventor dies, the assignee may appoint an attorney of 
his own selection. There is no need for the legal repre- 
sentative to intervene, since the right of, an assignee of 
the entire interest to prosecute is not confined to cases 
where the inventor is alive. {Ex parte Wick, 117 O. G., 
902; 1905 C. D., 253.) While this decision might appear 
inconsistent with Section 4896, which provides that the 
right of obtaining the patent shall devolve on the legal 
representative, it is to be remembered that Section 4896 
must be construed together with Section 4895, which pro- 
vides that the patent may be granted to the assignee. 

(4) Foreign Executor or Administrator. 

Prior to the Act of J^arch 3, 1903, amending Section 
4896, Revised Statutes, the executor or administrator 
authorized under the laws of a foreign country was not 
permitted to file or intervene in the prosecution of an ap- 
plication in this country. Such representative was held 
to have only local jurisdiction of the assets of the de- 
ceased. Since an executor appointed in one State of the 
United States could not sue in the courts of another State 
without taking out. ancillary letters there, it was held 
that a fortiori a foreign representative had no extrater- 
ritorial jurisdiction. {Ex parte Ransome et al., 1870 C. 



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142 Journal, of the Patent Office Society. 

D., 143; tx 'parte Langen, 87 0. G., 697; 1899 0. D., 90.) 
The expense of taking out ancillary letters from some pro- 
bate court in this country was considerable and in prac- 
tically all cases the only estate in this country to be ad- 
ministered consisted of the right of applying for a pat- 
ent. Moreover, owing to the Act of March 3, 1897, re- 
quiring the filing of the application in this country within 
a limited time after the filing of a foreign application on 
which a patent has been granted, the delay incident to 
taking out ancillary letters in this country sometimes re- 
sulted in the right to a patent being lost. These consider- 
ations led to the amendment of .the statute referred to. 

The certificate of a diplomatic or consular officer of the 
United States referred to in Section 4896, Revised Stat- 
utes, is not necessarily all of the proof required as to the 
authority of a foreign executor or administrator. The 
requirements are no less rigid in the case of a foreign rep- 
resentative than they are in the case of a domestic repre- 
sentative. {In re Pilgrim Paper Co., 125 0. G., 993 ; 1906 
C. D., 464.) While this case held letters testamentary 
were- necessary the practice has been changed by Order 
1838, and at the present time any sufficient proof of au- 
thority from a source of competent jurisdiction is ac- 
cepted. Indeed prior to the issuance of Order 1&^8 
Eroof other than letters testamentary was held sufficient 
1 exc parte Niedenfuhr, 130 0. G., 981, 1907 C. D., 257, 
where it was shown that the German law makes no pro- 
vision for the grant of such letters. 

(5) Insanity of Inventor. 

Prior to the Act of February 28, 1899, amending Sec- 
tion 4896, Revised Statutes, the* law contained no provis- 
ion relative to the insanity of the inventor. An applica- 
tion filed by the legal representative of an inpane person 
would not bg received for examination. (Order 1204, 
May 20, 1898, 83 0. G., 1073.) Section 4896 as amended 
in 1899 places the legal representative of an insane per- 
son on the same footing with the personal representative 
of a deceased person. 

An adjudication of insanity appears to present the 
same situation as the death of an applicant. It must be 
remembered, however, that deeds and contracts made by 



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JOUBNAL. OF THE PaTE^^T OfFICE SoCIBTY. 143 

insane persons before they are adjudged insane, but 
within the period overreached by the find&ng of the jury, 
are not necessarily void. {Ex parte Wurte, 123 0. G., 
320; 1906 CD., 241.) 

The insanity of a client operates. to terminate the rela- 
tion of attorney and client. (Chase v. Chase, 71 N. E. 
485 Ind.) 

It was held in ex parte Hununel, 94 0. G., 583, 1901 C. 
D., 15, that the guardian appointed by a foreign court 
cannot intervene in the prosecution of an application and 
take out a patent for the reason that he is merely the 
guardian of the person and his estate within the foreign 
jurisdiction, his appointment having no extraterritorial 
effect. This we have seen is the reasoning of ex parte 
Ransome et al., supra. The Act of March 3, 1903, em- 
powering foreign executors and administrators to prose- 
cute applications does not mention foreign guardians not- 
withstanding the fact that the amending act was passed 
two years after ex parte Hummel, supra. The failure to 
include foreign guardians is quite obviously on over- 
sight. It is possible that the office might permit a for- 
eign guardian to prosecute an application if one should 
now be filed, especially where there was no time to take 
out ancillary letters of guardianship in this country, let- 
ting the applicant take his chances as to the validity of 
the patent. There is, however, no decision overruling 
ex parte Hummel, sv^ra. 

26. In case of an assignment of the whole interest in the 
invention, or of the whole interesit in the patent to be granted, 
the patent will, upon request of the applicant emhodied in the 
assignment, issue to the assignee ; and if the assignee hold an 
undivided part interest, the patent will, ui>on like request, 
issue jointly to the inventor and the assignee'; but the assign- 
ment in either case must first have been entered of record, and 
at a day not later than the date of the payment of the final fee 
(see Rule 188) ; and !f it be dated subsequently to the execution 
of the application, it must give the date of execution of the 
application, or the date of "filing, or the serial number, so that 
there can be no mistake as to the particular invention intended. 
The application and oath must be signed by the actual inventor, 
if alive, even if the patent is to issue to an assignee (see Rules 
30, 40); if the inventor be dead, the application may be made 
by the executor or administrator. 



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144 Journal of the Patent Office Society. 

RULE 26. 

Only the last clause of Rule 26 will be taken up here. 
The remainder of the rule will be discussed, in connection 
with Rules 183 to 189, inclusive, by Mr. W. B. Magruder, 
Chief of the Assignment Division. 

Section 4888 of the Revised Statutes requires an ap- 
plication to be executed by the inventor, if living, before 
a patent can be granted in this country. In case of the 
death or insanity of the inventor the application can be 
executed by the legal representative of the inventor. The 
subject of such applications by such legal representa- 
tives is treated in full under Rule 25. 

The patent law makes it essential to the validity of a 
patent that it shall be granted on the application, sup- 
ported by the oath, of an original inventor, or of his le- 
gal representative, whether tite patent is to be issued to 
him or his assignee. A patent which is applied for by 
one who is not the inventor is void. (Kerinedv v. Hazel- 
ton, 46 0. G., 973 ; 1889 C. D., 349 ; 128 U. S., 667.) 

An assignee can not file an application even where the 
subject matter is divided out of an application filed by 
the inventor. (Ex parte Stevens, 59 (). G., 299; 1892 C. 
D., 87.) 

It is only to prevent the arising under Section 4887 of 
the Revised Statutes of a statutory bar to the grant of a 
patent in this country that an effort is sometimes made 
to file an application upon the signature and oath of par- 
ties other than the inventor. 

In ex parte Tropenas, 90 0. G., 749; 1900 C. D., 14, it 
was held that application papers executed by the inven- 
tor could not.be substituted for application papers exe- 
cuted by the attorney in fact of the applicant for the pur- 
pose of giving a date to the application early enough to 
avoid the statutory bar under Section 4887 of the Re- 
vised Statutes. The same holding was made in ex parte 
Sassin, 122 0. G., 2064; 1906 C. D., 205, where the power 
of attorney to execute the application was filed with the 
application papers. 

In order to meet the emergency arising out of the war 
the Commissioner instituted the practice of accepting ap- 
plications executed by the attorney, leaving to the courts 
the question whether properly executed applications, sub- 
sequently filed, can operate by relation back to the date 



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Journal, of the Patent Office Society. 145 

of filing by the attorney. The practice was outlined in 
the Commissioner's letter of- September 15, 1914, 223 0. 
G., 1007. It is required, however, that legally executed 
papers be filed before the case is passed to issue. {Ex 
parte Kramer, 238 0. G., 986.) 

The last clause of Eule 26 does not apply to reissue 
applications, which, where the inventor is dead, may be 
made by an assignee and without the signature or oath 
of the personal representative. (Carew et al. v. Fabric 
Co., 1 Holmes 45; Fed. Cas. No. 2398.) The requirement 
of Section 4895 of the Revised Statutes, which first ap- 
peared in the act of July 8, f870, that the reissue applica- 
tion be made and the specification sworn to by the inven- 
tor, applies only *4f he is living". 

EULE 27. 

27. If it appear that the inventor at the time of m-aking his 
application, believed himself to be the first inventor or discov- 
erer, a patent will not be refused on account of the Invention 
or discovery, or any part thereof, having been known or used 
in any foreign country before his invention or discovery thereof, 
if It had not been before patented or described in any printed 
pu*bllcati-o(n. 

The pnrpose of the patent law is as stated in the Con- 
stitution. Art 1, Sec. 8, **to promote the progress of sci- 
ence and the usefnl arts*^ and this means progress in 
this conntry. Anything which does not give the inven- 
tion to the public of this country will not promote such 
progress and therefore Congress has enacted Section 
4923 of the Revised Statutes. {Ex parte Grosslin, 97 0. 
G., 2977; 1901 C. D., 248). The provision that use in a 
foreign country should not render a patent void if the 
applicant at the time of making his application believed 
himself to be the first inventor, first appeared in Act of 
1836, section 15. 

For the purpose of defeating a patent application a 
reduction to practice in a foreign country is a nullity un- 
less the invention is patented or described in a printed 
publication. It can never destroy a patent applied for 
here, however widely known such reduction to practice 
may be, either among foreigners or among persons living 
here. (De Kando v. Armstrong, 169 0. G., 1185; 1911 C. 
D., 413; 37 App. D. C, 314; Westinghouse Machine Co. 
et al. V. General Electric Co. et al., 196 0. G., 276; 1913 
C. D., 493; 207 Fed., 75, C. C. A. 2nd Cir.) 



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146 Journal of the Patent Office Society. 

Construing sections 4886, 4920 and 4923 together, it is 
only essential that the applicant here be ignorant of the 
existence of the invention or its use abroad. (Doyle v. 
Spaulding et al., 27 0. G., 300; 1884 C. D., 181; 19 Fed., 
744, C. C. N. J.) 

Mr. Walker in the 1904 edition of his book, Walker on 
Patents, states that, in view of the decision by the Cir- 
cuit Court of Appeals for the First Circuit, Aldrich, Dis- 
trict Judge, in the case of American Sulphite Pulp Co. 
V. Rowland Falls Pulp Co., 80 Fed., 395, it appears to be 
immaterial to an inventor's right to a patent whether or 
not, after completing his invention and before filing his 
application, he learns that the invention has been in pub- 
lic use in a foreign country since a time prior to his in- 
vention. It seems doubtful, however, whether the facts 
in that case, which are somewhat more fully set forth in 
the decision of the lower court (70 Fed., 986, C. C. Me., 
Putnam, Judge), warrant such a deduction. In that case 
the applicant, Russell, had completed his invention in 
this country before learning of the use in a foreign coun- 
try. Both courts say that it must be admitted that the 
invention was in use in the foreign country before Rus- 
; sell's conception here. It is also stated that a Mr. Spring- 
ier who had investigated the use abroad shared his knowl- 
edge with Russell before Russell filed his application. 
'The lower court says, however, that **he probably re- 
tained some portion of Springer's original doubts''. 
Moreover, an examination of the original oath on file in 
this ofiice shows Russell swearing that he/* verily be- 
lieves himself to be the original, first and sole inventor". 
While his information might ordinarily put him on in- 
quiry as to what was in use in a foreign country the pat- 
ent laws do not require that an original inventor in this 
country shall go to the expense of the complete investi- 
gation necessary to remove all doubt in his mind before 
filing hi«; application. If, however, he is absolutely con- 
vinced, before filing his application, of foreign public use 
prior to his invention he will be unable to make the oath 
required by Section 4892 of the Revised Statutes. The 
requirement for an oath is not waived by Section 4923. 
On the contrary the statute in express terms extends it? 
protection ** Whenever it appears that a patentee at the 



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JOUBKAL OF THE PaTENT OfFICE SoCIETY. 147 

time of making his application for the patent, believed 
himself to be the oripnal and first inventor or discoverer 
of the thing patented * * • >>^ 

The condition, appearing in the last two lines of Enle 
27, ^4f it had not been before patented or described in a 
printed publication", is similar in wording to Section 
4923, Revised Statutes. The reason for this provision of 
the statute is that where an invention has been made ac- 
cessible to the public, by a patent or a description pub- 
lished in any country, before the applicant's invention, 
it would not promote industrial progress to grant a pat- 
ent in this country. A patent under such circumstances 
is barred under the provisions of Section 4886, Bevised 
Statutes. 



(Mr. Tullar's paper on Rules 28 and 29 will appear In the Decem- 
ber number). 



A LETTER FROM THE ALIEN PROPERTY 
CUSTODIAN. 



The following letter has been sent for publication by 
A. Mitchell Palmer, Alien Property Custodian, under date 
of October 1, 1918. The circular to which reference is 
made may be obtained by writing to the Alien Property 
Custodian, Sixteenth and P Streets, N. W., Washington, 
D. C. 

I will greatly appreciate it if you will call the atten- 
tion of the readers of your publication to the provision 
of the ''Trading with the enemy Act" which provides 
that aU money or other property held by, for, or for the 
account of, or tke benefit of, an enemy or ally of en- 
emy, should be immediately reported to this office. 
This includes patents, trademarks, copyrights, prints, la 
bels, and designs. 

In connection with the last named, the following per- 
sons are required to make report to this office : 

All persons who are in any manner interested in the 
use or operation of any enemy owned patent, trademark, 
copyright, print, label, or design, including joint inven- 
tors, where one of the inventors is an enemy \\'ithin the 
provisions of the ''Trading with the enemy Act". 



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148 Journal of the Patent Office Society. 

Assignees of an undivided part or share of an inven- 
tion, or right to carrj^ on a process or operate under a 
trademark, copyright, print, label, or design within and 
throughout a specified portion of the United States, when 
such patent or process is enemy owned. 

Mortgagees and licensees of enemy owned patents, 
trademarks, copyrights, prints, labels, or licenses. 

The above includes guardians, executors, and adminis- 
trators. 

Any information regarding the enemy interests in any 
patents, trademarks, copyrights, prints, labels, or de- 
signs, should be forwarded immediately to Francis P. 
Garvan, Director of the Bureau of Investigation, Alien 
Property Custodian's Office, Washington, D. C, even if 
the information is only gossip or rumor. Oftentimes a 
clue to important enemy interests is obtained in this way. 
I feel sure that I can count upon your cooperation in the 
work of uncovering money and property of enemy charac- 
ter. The money thus obtained is invested in Liberty 
Bonds, and is made to fight for our country, instead of 
against it. . . 

I am enclosing a circular of information defining ** ene- 
mies'' within the provisions of the *^ Trading with the 
enemy Act''. 

Thanking you, I am, 

Very truly yours, 
, A. Mitchell Palmer. 



THE PATENT OPPKJE IN 1841. 

, *'The Reference Book of the United. States," a little 
volume of seventy-two pages, ** compiled from authentic 
sources by Edmund F. Brown" and published in Wash- 
ington in 1841 by Blair and Rives, Printers, which at that 
date served th^ purpose of the ''Blue Book" or Official 
Register of the present time, groups the employes of the 
Patent Office and National Gallery under the Depart- 
ment of State. The complete roster of the Patent Office 
included the Commissioner, Chief Clerk, four examiners, 
four draftsmen, one machinist, six clerks and one mes- 
senger. 



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DR. WILLIAM THORNTON. 



Reproduced from a painting hanging in the office of the 
Commissioner of Patents. 



A copy painted by Dr. Thornton after Gilbert Stuart. 
(See article on "The Firsl Chief of the Patent Office," page 152.) 



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Journal 

OF THE 

Patent Office Society 



Published moathiy by the Patent Office Society 

Office of Pttblicatlon 1315 Clifton St., Washington, D. C. 
Subscription $2.50 a year Single copy 25 cents 

Ea>ITORIAL BOARD. 

B. D. Sewall, Chairman, Publicity Committee. 
G. P. Tucker, Bdltor-in-Chief, 
J. Boyle. 
A. W. Davidson. 
W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washington, D. C. Phone Col. 290. 

Entered as second class matter. September 17, 1918, at the pQst office 

at Washington, D. C, 'under the act of March 3, 1879. 

Copyright, 1918, by the Patent Office Society. 



Publication of signed articles in this Journal is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted, 

VOL. 1. DBGEMBBR, 1918. No. 4 



EDITORIAL. 



We desire to extend to the men who entered the mili- 
tary and naval service from the Patent Office a word of 
Christmas Greeting. That all have done their full duty 
at home or abroad will go without saying. 

Those, fortunately few, who have been called upon to 
make the supreme sacrifice leave behind them a lasting 
.radiant memory, an example in patriotism in which we all 
take pride and which we must hold in reverence. 

Those still in the service we greet with congratulations 
and best wishes. When the need for them in the Army 



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150 Journal, of the Patent Office Society. 

or Navy is over, we shall weloome them. again to the Pat- 
ent Office force. We realize thai their response to the call 
of hazardous duty has imposed- obligations on us all to 
similarly hold ourselves in readiness to serve our country. 
May the coining Christmas season be oiie of joy to all 
mankind and especially to those Americans who have of- 
fered themselves in defense of Anierican principles. 



The well-known purpose of the patent system is to en- 
courage and stimulate invention. To this end a reward 
is offered in the shape of the exclusive right to make, use, 
and vend the invention. The public itself has agreed to 
grant this reward, but in return therefor it expects to re- 
ceive the knowledge of something which it never before 
possessed. It is quite in accord with human nature that ' 
there should always be attempts to secure something for 
nothing, and that in this case there should be attempts to 
secure the public reward without having rendered to the 
public the required service. Whose duty is it then to 
protect the public ii\terestst In order that full justice 
should be done to the inventor, the public has safeguard- 
ed his rights probably beyond that of any other species 
of property rights. If he is refused the grant of a pat- 
ent by the first tribunal he is entitled to have this deci- 
sion reviewed by five other tribunals. But suppose any 
one of these tribunals decides in favor of the rights of the 
inventor, who reviews its decision? No one. In some 
countries where the public interests are not generally so 
carefully guarded as here, a check is interposed in the 
nature of opposition proceedings. Such being the situa- 
tion, and remembering that every patent that is granted 
may exact a tribute from the public, it becomes incumbent 
on those charged with the duty of granting patents to 
scan carefully the claim of the inventor to determine if 
he is entitled to the public reward. Appreciating the sit- 
uation, the law has specifically placed the duty of safe- 
guarding the public interests on the shoulders of the 
examiner. 



The article in the November number on classification 
of patents is entitled to thorough consideration, because 
it represents the \aews of one who has an extended ex- 
perience in this most difficult branch of Patent Office 



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JOUBNAL OF THE PaTBNT OfPIOE SoOIBTY. 151 

work It attempts to cure present defects of classifica- 
tion by constructive criticism. 

In every branch of science where classification has 
been found necessary, controversies have always raged as 
to the propriety of the different schemes. 

It should be remembered, however, that the value of a 
criticism is coextensive with the knowledge that the critic 
may have of the subject under consideration. It is not 
an unconmion failing to criticise the work of those who, 
we well know, have been selected for the very purpose of, 
and are devoting all their time and energy in, the solu- 
tion of a problem. But how uninteresting a baaeball 
game would be if the man on the bleachers were not uble 
to criticise the decision of the umpire. 
1« 

It would be interesting, if it were possible, if some in- 
dustrious individual would take some unpatented article, 
for instance, a leather shoe, and figure out in its mamdae^ 
ture from raw material to the finished article how many 
times it has been taxed and its price enhanced by virtue 
of its contact with patented machines or processes. 



Eight million dollars in the Treasury of the United 
States to the credit of the United States Patent Office! 
This huge credit represents the accumulation of the sur- 
plus earnings of eighty years. Hardly a year has passed 
since 1838 when the receipts of the Office did not exceed 
its expenditures. In fact there are some years when the 
surplus earnings were nearly thirty per cent of the total 
receipts. Have we been following a wise policy in refus- 
ing to spend on the Patent Office the money that has been 
contributed by the inventors of the country for that pur- 
pose! Bureaus of the Government such as the Patent 
Office are not intended to be money-making institutions, 
for, if they were, it would be an inequitable form of taxa- 
tion. It is not too late, however, to effect a reform in this 
direction. Inventors and manufacturers should emphati- 
cally call the attention of Congress to the necessity of at 
least spending the income of the Patent Office in provid- 
ing adequate facilities for conducting its business. 



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152 JOUBNAI. OF THE PaXBNT OfFICE SoOIBTY. 

THE FIBST CHIEF OF THE PATENT OFFICE. 



By William L Wyman. 



Previous to 1802, the administration of the patent sys- 
tem was conducted as part of the general clerical busi- 
ness of the State Department. In that year the Patent 
Office, as a distinct unit, was created, and Dr. William 
Thornton was appointed as its first superintendent, at a 
salary of $1400, by Secretary of State Madison. The Of- 
fice was not established by law, but was instituted through 
Madison's action. It was the only personal appointment 
made by Madison upon his accession to the portfolio. 

Dr. Thornton was of English extraction, a graduate of 
medicine in Edinburgh, and had traveled extensively in 
Europe. He was the first designer of the Capitol, had a 
scientific turn of mind and was a man of varied accom- 
plishments. He was appointed by President Washington 
a member of the Board of Commissioners under the act 
to establish a seat of the Government. At his suggestion 
the first agricultural fair in this country was held, in 
1804, in Washington. He was a gentleman of culture, en- 
tered vigorously into the intellectual and social life of. 
the time, was on intimate terms with the prominent men 
of the day, and was a very close personal friend of Madi- 
son, who lived next door to him in Georgetown. In fact, 
he and Madison were partners in the possession of a race 
horse, although there is no record of any utilization of 
the animal for track performances during its distin- 
guished ownership. . . 

Dr. Thornton was a man of marked individuality, 
which he impressed upon the conduct of affairs during 
the long occupancy of his office. His official position did 
not deter him from granting patents to himself or other- 
wise acquiring property-rights thereto. In fact, while 
thus acting, he suggested to one applicant an improve- 
ment for his device, and thus became a joint patentee in 
the Invention. He performed his duties with a laxity, 
sometimes, and with a disregard for law on occasion that 
would have been reprehensible under other circum- 
stances. He exercised his own judgment about the pay- 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 153 

ment of fees, he failed to record the grants with any reg- 
ularity, and in general assumed arbitrary or discretion- 
ary i)owers that were either extralegal or contrary to 
law. But his deficiencies, such as they were, were due to 
enthusiasm overpowering discretion. His sense of per- 
sonal ownership in the Patent Office was the result not 
only of an intensive and absorbing interest in the promo- 
tion of its objects, but of the ne^ect of Congress, which 
left him to his own devices and which even in those early 
days made its peculiar indifference towards the Office 
very manifest. 

It also appeared from his numerous complaints to the 
various Secretaries of State who were his inmiediate su- 
periors during his long incumbency that he was consider- 
ably handicapped by insufficiency of clerical assistance, 
that the exacting character of his work occasioned by its 
peculiar technical requirements was unrecognized, and 
that the pecuniary reward of the position was not only 
beneath the dignity of his office, but was also inadequate 
to provide means for a proper standard of living. 

There can be no doubt that the promotion of the bene- 
fits of the patent system was the passion of the learned 
doctor. He was incessant in his devotion to the Office, 
and was extremely energetic and insistent in spreading 
the doctrine of its usefulness and in endeavoring to ad- 
minister the Office in accordance with justice to the in- 
ventor and the rights of the public. If these objects were 
pursued in his peculiar manner rather than in view of 
the limitations imposed by the mere verbiage of the stat- 
utes, it is to be remembered that many a substantial 
equity was thus preserved and some very beneficial prac- 
tices initiated. Among these was the procedure in grant- 
ing a new patent without fee for the unexpired term of 
the original patent in view of any defect in the latter, 
whether occasioned by the patentee or the Office. The 
legality of these acts was tested and confirmed in the 
case of Grant v. Raymond (Supreme Court, U. S., 1832). 
In the opinion of one authority. Dr. Thornton defined (in 
a communication to the Secretary of State, dated January 
6, 1818) the equities and limitations of a reissue as con- 
cisely and luminously as has ever been done by any court 
or text writer. From this practice of Thornton's the act 



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154 JOUBNAL. OF THE PaTBNT OfFICE SoGIETT. 

of 1832 developed, providing for the reissue of a defec- 
tive patent. 

. In 1810 Congress authorized ''the purchase of a build- 
ing for the accommodation of the general post-oflSce and 
of the office of the keeper of patents^'. The building pur- 
chased was known as Blodgett^s Hotel and in 1811 the 
business of the Patent Office was removed from* a house 
on Eighth Street, just below F Street, to the second floor 
of the new building, where it remained under the superin- 
tendence of Dr. Thornton until his death, which took 
place on March 27, 1828. 

Dr. Thornton was born on the island of Jost van Dyke, 
British W«st Indies (not in Tortola, as erroneously and 
customarily stated). He landed in this country in 1786- 
and took the oath of fealty in 1788. In response to an 
advertisement from the Commissioners of the Federal 
City instituting a prize competition for plans for the 
Capitol, Dr. Thornton submitted drawings. President 
Washington, who was much interested, singled out Dr. 
Thornton's contribution and wrote of it as follows: 
** Grandeur Simplicity and Convenience appear so well 
Combined in this plan of Dr. Thornton's, that I have no 
doubt of its meeting * * * approbation from you.'*^ 
He was awarded the prize of $500 and a lot valued about 
the same. His plan formed the nucleus of the present 
structure. 

Another notable building designed by the doctor is the 
Octagon House, at the comer of Eighteenth Street and 
New York Avenue, one of the noblest and most original 
examples of colonial architecture in the country. Presi- 
dent Madison occupied it as a residence after the White 
House was burned in 1814, and while resident there he 
signed the treaty of Ghent (which terminated the second 
war with England) in the circular room — now used as 
the Secretary's oflSce of the American Institute of Archi- 
tects. He also made designs for the buildings of the Uni- 
versity of Virginia at Jefferson's request. 

He co-experimented with John Fitch in the perfecting 
of a steamboat, and appeared at one time to be under the 
impression that he, rather than Fitch or Fulton, was the 
actual inventor. He also took out a number of patents, 
without being at all idle in other directions. His ''Treat- 



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JOUBNAL OP THE PaTBNT OfFICB SoCIBTY. 155 

ise on the Elements of Written Language" was a prize 
essay and yron him a gold medal from the American Phil- 
osophical Society. He also wrote on political economy 
and in fact practised every art except that in which he 
was educated and had intended to take up as his life 
work. He lived an intensely intellectual life and yet kept 
open house and entertained as lavishly as his resourees 
permitted. Distinguished visitors from abroad were fre- 
quently his guests, among whom may be mentioned Hum- 
boldt, the famous traveler, who recorded his gratitude 
for the quality of his entertainment. The doctor was ^'a 
Quaker by profession, a painter, a poet and a horse- 
racer''. His latter activity was by no means of a /dilet- 
tante order, either. With all these diverse concerns, he 
found time to interest himself in the development of the 
Capitol City, his interest being particularly intensive and 
his optimism as to its future unbounded. His prediction 
that it would attain eventually a population of 160,000 
was treated contemporaneously as an explosion of ultra- 
enthusiasm. In fact his ** partiality was such that in 
intervals of health he praised the salubrity of the Wash- 
ington climate''. 

His wife's estimate that '^His search after knowledge 
was perhaps too general, as it embraced almost every 
subject; * * * philosophy, politics, finance, astron- 
omy, medicine. Botany, Poetry, painting, religion, agri- 
culture ; in short all subjects by turns occupied his active 
and indefatigable mind" appears to be a correct judg- 
ment of his undue versatility of interests and talents. A 
restriction to a lesser number of activities would undoubt- 
edly have made his impress upon history of a more per- 
manent nature. 

His correspondence was voluminous, always vigorous, 
and international in scope when it came to patent and 
scientific subjects. His papers and writings he left as 
part of the archives of the Office **as a monument of his 
fidelity to and interest in the advancement of American 
Mechanics." His career is indeed a monument of those 
attributes, for his life was a sacrifice on the altar of duty, 
unappreciated and unrecompensed by the public he served 
so well. 

The energetic character and invincible ardor of the 
first Superintendent of the Patent Office is best illustrated 



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156 Journal, of the Patent Office Sooibty. 

in the following incident, vouched for by Robert W, Fen- 
wick, an authority on the early history of the Patent 
OflSce: ^'In connection with the History of the Old Pat- 
ent OflSce, it should never be forgotten that by the par 
triotism and scientific devotion of Dr. Wm. Thornton the 
germ of our grand patent system was saved from destruc- 
tion by the British soldiery. It was related to the writer 
by Mr. Seth A. Elliot, another son of William Elliot, that 
as the British commanding officer was about to have the 
torch applied to the Patent Office building. Dr. Thornton 
appeared on the portico and earnestly cried out, * This is 
the emporium of the Arts and Sciences of America; don't 
burn it \ To* the credit of the officer, be it remembered, 
he listened to the appeal, and gave orders to his soldiers 
to pass on without burning the building.'^ Of several ac- 
counts of this incident, no two of which agree in details, 
this one appears to be the most authentic. 



ASSISTANT EXAMINERS WANTED. 

A number of vacancies exist in the grade of fourth as- 
sistant examiner, carrying the salary of $1,500, to which 
the attention of technically trained jpersons is earnestly 
invited. 

Permanent appointmepts will be secured by passing 
the required Civil Service examination, information 
whereof may be had upon application to the Civil Service 
Commission, Washington, D. C. 

Temporary appointment may be given persons exhi- 
biting the required training in mathematics, chemistry, 
physics, mechanical drawing and French or German, ; 
pending their taking the Civil Service examination and 
obtaining a rating therefrom. | 

Persons having the necessary education are invited to | 
write to the Commissioner of Patents with regard to tem- i 
porary appointments. i 

Promotion to the higher grades is reasonably rapid. | 
The work commends itself to college and technical school | 
graduates especially, and is considered as interesting as \ 
any in the Government Service. j 



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JoTiBNAL or THE Patkn^ Ofpicb BocoffTi, 157 
COMBfENTS ON EX PARTE THOMAS. 



By E. S. Glascqci^, Examiner. 



The decision in ex parte Thomas, 251 0. G., has been 
studied and discussed very thoroughly by both attorneys 
and examiners, as also has that of Diamond Drill Co. vs. 
Kelly Brothers, 120 Fed. Rep., 282, 286, cited in the for- 
mer. 

To one feature of these decisions I should like to call 
close attention, namely, the drawing a distinction be- 
tween disclosure which is regarded as anticipation, and 
disclosure regarded as suflScient to sustain the defense of 
prior invention. 

There is no disposition to criticize the decisions as ap- 
plied to the conditions now existing, but merely a desire 
to point out that they are landmarks which show how far 
we have departed from a logical development of the pat- 
ent system as originally contemplated by the statutes. 

The ex parte Thomas decision comprises an analysis 
of a large number of court decisions, and the point most 
clearly brought to light by this analysis is that the de- 
cisions do not agree. On the contrary, while many may 
be warped into some sort of harmony, the view taken in 
one group of the decisions cited is so plainly contradic- 
tory of the view taken in some of the other decisions and 
adopted in ex parte Thomas, that the only re^^ourse is to 
pronounce that group heterodox and overcome l)y the 
greater weight of authority on the other side. 

However necessary or expedient appeal to precedent 
may be in all legal procedure I would, with all due respect 
to the courts, question the expediency of attempting to 
extract from the multitude of opposing rulings some com- 
plicated doctrine that will contravene as few precedents 
as may be. ♦ 

The peculiar nature of patent practice; the fact that 
questions of a scientific nature are involved in decisions 
made by those who avowedly are entirely devoid of scien- 
tific training, and whose experience may consist of one 
patent case in a life time; the fact that the courts deal 
with a fixed contract while the Oflfice deals with the for- 
mation of that contract, and the fact that when that con- 



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158 Journal of the Patent Office Socsiett, 

tract is faulty, there is an ever present temptation to up- 
hold justice in the individual case and fit the law to the 
conclusion already formed, in lieu of drawing the con- 
clusion from the law; — all these factors have acted and 
reacted on the Patent Office *and the courts until it seems 
that we have wandered from the clear light of the stat- 
utes themselves, and it»were well to hark back to that ori- 
ginal source instead of wandering through interminable 
labyrinths of incompatible decisions. 

I ask a view of this question in the broad light of the 
statutes and without the intervening mists in which a 
miass of conflicting decisions has enveloped it. 

What is meant by the words **art, machine, manufac- 
ture, or composition of matter*' in R. S. 4886! We know 
the object of the statute and must read it with that ob- 
ject in view. These words clearly cannot mean the actual 
physical machine or composition of matter for which a 
patent is issued, nor the exact and actual process. Such 
a reading of the statute would render it practically void. 
It may be taken as axiomatic that it is whatever consti- 
tutes the actual invention that is to be protected. Now 
what is the actual invention? This question is answered 
clearly by Robinson, who says, Book I, Par. 130, *' Fin- 
ally, it is to be remembered that although an idea of 
means not yet reduced to practice is not an invention, 
still it is the idea, and not the practical embodiment which 
constitutes the essence of the invention and to which the 
protection of the patent is awarded. ^^ Again in Par. 
141, he says, '' * * this principle (the idea of means) 
is the true subject matter of the patented invention. 
Whatever forms of tangible expression it receives 
through the varied skill and industry of the mechanic, 
this idea and essence still remain unchanged '\ 

The practical embodiment of the invention is not the 
invention, it is merely the expression of it and no more 
identical with it than is^ the sentence identical with the 
thought which it clothes. 

A patent is a contract and one absolutey essential 
characteristic of a contract is a clear setting forth of the 
considerations. The statutes therefore require that the 
inventor shall particularly point out and distinctly daim 
the part, improvement, or combination which he claims 
as his discovery. 



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JOUBKAL. OF THE PaTENT OfFICB SoCIBTY. 159 

It is thought our difficulties spring from the neglect of 
these two facts : 

I. The patent is granted for the essence of the inven- 
tion and not for its physical embodinaent, and, II. The es- 
sence of the invention must be distinctly set forth in the 
claim. 

Every invention is an idea of means embodied in a 
practical instrument or process. The accidents of the 
practical instrument or process are of no moment what- 
ever. All expression of them must be eliminated from 
any claim before it can be said to define the invention. 
Every foreign element must be deleted from a claim in 
order that it may set forth an invention correctly. And 
it must be remembered that a Qharacteristic of the physi- 
cal parts of the practical embodiment which does not 
have a vital bearing on the spirit of the invention is as 
truly a foreign element as is a physical element that is 
foreign to the real invention. 

The statutes provide that upon due proceedings had a 
patent shall be granted for an invention subject to two 
conditions only, viz., (I) It must be novel, (II) It must 
be useful. 

As long as t^iese statutes stand no power can take from 
or add to these conditions. 

The resemblance or lack of resemblance between the 
physical embodiments of a plurality of. inventions has 
absolutely no effect! And when we take this resemblance 
or lack of resemblance into account and make it a ruling 
factor in a decision as to whether or not a patent shall be 
granted we proceed without any basis in right or in law. 
Any two inventions are necessarily identical, or not iden- 
tical. If identical the law is plain; if not identical the 
law is equally plain. There are but two horns to the 
dilemma or rather there are but two equally plain paths 
to be pursued. There should be no dilemma. Yet there 
undoubtedly is one and a very serious one. Why? Be- 
cause we have not kept in view the essential nature of an 
invention and the manner in which it should be set forth 
in a claim. The confusion of an idea of means with the 
accidental, non-essential features of its physical embodi- 
ment and the inclusion of such features in the claims 
have led us into such illogical procedure as the rejection 
of a claim on a plurality of references, and a discussion 
of the degree of resemblance between inventions. 



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160 Journal of the Patent Office Society. 

The resemblance is necessarily between the accidental 
features of the physical embodiment. It is clearly im- 
possible that any resemblance can exist between two dis- 
tinct inventions that would in any way affect their pat- 
entability. And yet we have gone so far as not only to 
reason about this resemblance of distinct inventions as a 
bar, a thing never hinted at in the statutes/ but we have 
even made distinctions on the degrees of this resemblance 
which are to form bars to the grant of a patent, under 
different conditions. 

There is another point in the decision in ex parte 
Thomas to which I invite attention, viz., the holding that 
only that matter, shown and described but not claimed in 
a ^* co-pending patent,^' that is germane to the matter 
claimed, can be used as a valid reference against the co- 
pending application. 

It seems to me that the true position is the one stated 

by Mr. W. W. Dodge of the District of Columbia bar, in 

his pamphlet on Earlier Application and Later Patent 

vs. Later Application and Earlier Patent, P. 5, Par. 3, 

Such earlier applicatioii Ukeirise shows beyond controversy, 
unless and until overcome by proper proof, that such later ap- 
plicant but earlier patentee ''was not the first and original in- 
ventor or discoverer of any material and substantial part of 
the thing patented" (Par. 4920, <R. S., fourth defense), in so 
far as the earlier application discloses he patented invention; 
and that it was not "new". (Par. 4886, R. S.). 

After citing Kearney vs. Lehigh Valley Railway Com- 
pany, the decision {ex parte Thomas) procjeeds: '*TKis 
clearly decides, first, that an invention is not anticipated 
unless by an invention which was completed before it 
(the former) was complete<i; second, that the filing of an 
allowable application is completion of the invention; 
third, that where the question concerns the 'priority' of 
one of two or more patents over the other or others the 
invention of the prior patent can be carried back to the 
date of the application on which it was granted. ' ' 

Having established this much the decision goes on to 
introduce the factor of a distinction between the disclos- 
ure which would sustain the defense of *' prior inven- 
tion'' and one which would sustain the defense of '* antici- 
pation*'. With reference to this distinction the decision 
says: 

Upon the defense of anticipation the question concerns suffi- 
cient novelty to require invention. Under that of prior inven- 
tion the question concerns identity of invention. The patent 



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JOUBNAL OF THE PaTENT OfFICB SOCIETY. 161 

(to Maler) relied iiiK>n to defeat the patent in suit disclosed 
and presumably elatmed a 'bed-spFing, and the patent in suit 
(t6 Jackson) claimed a belt-fastener, the disclosure^ and prob- 
ably tihe daim in the former and the claim in the latter, in- 
cludlns common subject-matter which constituted the novelty 
in both articles. The decision held that Maler would not an- 
ticipate Jackson were the date of Maier's patent such that his 
disok>fture would be availa/ble for anticipation, but that even if 
that disclosure would be sufficient for anticipation it was in- 
fiuffieient for prior Invention because the inventions were not 
the same. It does not appear from the decision that what 
Maier claimed was considered material or would be material if 
the defense of prior invention were in issue. 

The following extract from Sundh Electric Co. vs. In- 

terborough Rapid Transit Co. (222 Fed. Rep., 334) is also 

quoted : 

In order to maintain this fourth defense it must, of course, 
appear that the invention of the patent in suit and the inven- 
tion of the prior application are the same. Thus in Diamond 
'Drill €o. V. Kelly, supr<i, the patent in suit dealt with a belt- 
fastener, the prior application with a bed-spring. That court 
held that even though it should be found that these were anala- 
gous arts and that the presence of either in a prior iflejd of art 
left no room for invention in the production of the other, it 
could not >be said that both had invented the same thing. But 
it does not follow that the two devices must be Chinese copies 
of each other to warrant the application of this particular de- 
fense. 

A group of 'decisions rendered by the Circuit Court of 
Appeals in the Sixth Circuit is then discussed. , 

This latter group fails to make the distinction between 

** anticipation '^ and ''priority^*, or at the least fails to 

apply it in the manner of the decisions previously cited, 

and in ex parte Thomas the following conclusions are 

drawn: 

I think that the group of decisions by the Circuit Court of 
Appeals of the Sixth Circuit, even with such sufpport as may be 
derived from the remark made 'by the Supreme Court in Pope 
V. Gormully Co. and from HiUard v. Fisl^er Co., are opposed to 
a greater weight of authority so far as they decide that the 
fourth defense of anticipation and that a patent not granted 
before the date of perfection of the invention in controversy 
is a part of the prior art and so far as they ignore the essential 
difference in the natures of the defenses of anticipation and 
priority and fail to recognize that the latter defense requires 
a degree of resemblance 'between the invention in controversy 
and the invention disclosed in the patent supposed to show 
prior invention which need not always subsist between the in- 
vention in controversy and an anticipating invention. In so 
deciding, these decisions neglect the element of publicity, con- 
sidering the subject as if it involved only one of the two ques- 
tions pointed out in the foregoing analysis — ^that which con- 
cerns the. evidence of a fact. The necessity of publicity of a 
previous invention before the establishment of the legal right 
to patent protection in order to defeat that right by anticipa- 



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162 JOUBNAL OF THB PaTEXT OfFICB SoCIBTY. 

tion is Bupported by a great . volume of authority. The deci- 
sloiiBu opposed, in the s^rticularg stated, to the decisions in thie 
group not only outnuomber those in the group, but admit of be- 
ing combined with nearly «11 other decilsions which are in any 
way related to the subject in the construction of a self-consie- 
tent and tenable theory. 

Furthermore, the logical conclusion of the reasoning in this 
group of the sixth circuit decisions is that applications Which 
have been forfeited and abandoned (about two hundred and 
fifty thousand in number) are available as references; but It 
was decided in the Corn-^Planter Patent Case (23 Sup. Ct. Rep. 
Wall., p. 1*81) that such applioations are not valid references: 

It (abandoned application) can only have a bearing on the 
question of prior Invention or discovery. If upon the whole 
of the evidence it appears that the alleged prior Invention or 
discovery was only an experiment and was never perfected or 
brought into actual use, but was aft>andoned and never revived 
by the alleged inventor, the mere fact of having unsuccessfully 
applied for a patent tiherefor, cannot take the case out of the 
category of unsuccessful experiments. 

. . . . Priority concerns identity of invention, while 

anticipation concerns the presence of patentable difference. 
Two practical effects of the distinction are, first, anticipation is 
not subject to abandonment; second, knowledge of the prior 
invention need not be accessible to the public at the date of 
comiJletion of the invention in controversy. The defense of 
prior invention proceeds upon the sup^sition that a legal right 
has been established and not abandoned which is antagonistic 
to the right of the inventor of the invention in controversy. 

And lastly, 

The dominating question is, to what is the 

public entitled upon all grounds, including the abandonment 
compacted toy the grant of the co-pending patent? Subject- 
matter disclosed but not claimed therein may or may not be, 
in fact, a part of the virtually known art anterior to the date 
of the application on which it was granted. If it is, the pub- 
lic is of course entitled to it. If it is not, the public is entitled 
to it by virtue oi; the patentee's abandonment, which occurs if 
he might have claimed it. He might have claimed any patent- 
ably novel subject-matter clearly disclosed in the application 
upon which his patent was granted which is germane to what 
he did claim. 

It would appear that a clear distinction may be drawn 
between the third and fourth defense without taking into 
consideration the question of whether the original in- 
ventor or the public has the legal right to the invention. 

The statute does not make the opposing right of any- 
one a factor in the fourth defense. 

The third defense hinges on publicity, that is the essen- 
tial fact to be established and that alone decides the 
question. 

The fourth defense hinges on originality and priority. 
It does not concern itself with any rights acquired by 



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Journal of the Patent Office Society. 163 

that priority, but with the effect of that priority on the 
patent in suit. 

To turn the argument on the rights acquired by that 
priority is to go too far afield and confuse instead of 
clarifying the issue. 

The logical conclusion from this is not that forfeited 
and abandoned applications are available for references, 
as may be seen by an examination of the statute, consid- 
ered with the broad object of all patent legisliUion kept 
in view. 

That object is the progress of the arts, and therefore 
the terms '* inventor '' and ** discoverer^* have been prop- 
erly construed to include only such inventora or discov- 
erers as have developed and given such form and made 
such record of their invention that it will inure to prog- 
ress in the arts. Discoveries or inventions locked up in 
abandoned and forfeited applications are not included in 
this category. It is not the abandonment of a right that 
voids these still-born devices but the fact that they will 
never aid the progress of the arts. 

It is denied that ''the defense of prior invention pro- 
ceeds upon the supposition thaf a legal right has been 
established and not abandoned.'' The defense of prior 
invention proceeds upon the supposition that the pat- 
entee of the patent in suit was not the original and first 
inventor. Ex parte Thomas shows that oases arise where 
procedure upon the former supposition leads us astray. 

The above decision must, on the theory on which it is 
based, consider the relation of the unclaimed disclosure 
of a co-pending patent to the matter claimed in order to 
ascertain the nature of these ''opposing rights''. 

If on the other hand we hold ourselves rigidly to the 
language and meaning of the statute it is clear that any 
novel invention disclosed in a patent was completed at 
the time of the filing of the application on which the pat- 
ent was granted and is prima facie evidence that a later 
applicant is not the first inventor. From the date of 
that application the invention was embodied in an instru- 
ment destined to reach the public and hence to aid in the 
progress of the arts. It was therefore in the sense of 
the statute an invention or discovery. It is a matter of 
utter indifference whether or not it is germane to the in- 
vention claimed in the patent which discloses it. 



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164 Journal, of the Paten^t Office SociBry. 
VALID PATENTS. 



By Walteb M. Fuller, Obicago* 



Within the last few years there has seemingly been in- 
augurated by the executive heads of the Patent Office a 
policy of bringing up the work of the examining corps 
into restricted time limits, necessarily shortening the 
prior art searches, in an apparent effort to overcome the 
burden of work resting on the examiners* shoulders. 
Surely, any attempt to expedite the maturing of applica- 
tions into patents is to be conimended, provided it is 
based upon a s^f e and sound foundation. The writer, for 
a number of years, was an assistant examiner and knows 
full well the various disadvantages under which the ex- 
aminers labor. 

In the September, 1918, number of the Journal of the 
Patent Office Society, page 16, the Assistant Commis- 
sioner, in addressing the fourth assistant examiners, ap- 
proved such a program in the following words : 

This 'brings me to the main point I wish to make, namely, 
that however It may be with the bualness man, it is of supreme 
importance to the inventor and to the public that patents be both 
applied for and granted promptly. Coming directly home to you, 
this means that one of your primary duties is to see that when 
applications are filed in this office they proceed without delay 
to patent. It is quite possible that promptness in the worl[ of 
this office is as important as thoroughnesB. In other words, if 
you have to choose 'between making a less thorough examina- 
tion and a general and material delay in getting the applica- 
tions through, it is irrobably more to the public interest that 
the prosecution be prompt. At least, I am justified in saying 
that if your examination is not sufficiently thorough, this is 
directly the fault of Oongress, and is so provided !n spite of 
the attention of Congress having been repeatedly called to the 
shortness of force and the necessity of an examination that is 
not sufficiently thorough. I have been an inventor, and I think 
myself (and I beflieve It wise to say so), that the inventor at 
the present time is not getting the ^xamina/tion he actually 
pays for. 

Of course, Congress for years has ill attended the 
pressing needs of tlie Patent Office and has never given 
it an examining force commensurate with either the 
amount or the importance of its work. However, the 
policy of subserving or subordinating careful, thorough, 
and painstaking prior art searches to the prompt isBU- 



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Journal of the Patent Office Society. 165 

ance of patents is, in the estimation of the writer, one not 
only f ranght with danger, tending to bring this oflSoe into 
general disrepute, but also not the most feasible course 
to lead to the correction of the indififerent and negligent 
attitude of Ck)ngress toward the OflSce. The fundamental 
purpose of the Patent OflSce should be to lend its. every 
effort to the granting of valid patents only and all other 
considerations should be secondary to this. Of course, 
100 per cent perfection in this respect is impossible, but 
it should be the aim and ideal nevertheless. A patent, 
invalid because of lack of adequate prior art search, de- 
ceives and injures both the public and the patentee. The 
former is threaitened and deluded from enjoying the ben- 
efits of that to which it is entitled and the latter is not 
infrequently lulled into a sense of false security and his 
backers into misleading and unsafe financial investments. 
The establishment of the invalidity of a patent in court 
is usually a rather expensive proceeding. 

It is asserted that so long as the examining work of 
the OflSce is maintained prompt at the expense of scrupu- 
lous, faithful, and ample prior art searches, no remedial 
action can be reasonably expected from Congress. Such 
a course of lax and superficial procedure, sanctioned by 
the responsible officials, is sure to lead to an undue per- 
centage of patents with invalid claims and to the estab- 
lishment of careless habits of work on the part of the 
assistant examiners detrimental to their future careers, 
and whidh, if once well inaugurated, will be exceedingly 
difficult to uproot. In time such a policy is almost cer- 
tain to throw the whole invaluable patent system into iU- 
repute,both with the public and courts, and, if this pro- 
gram is persisted in, I should not be surprised to find a 
sharp rebuke administered by some court which has been 
harassed by a succession of patent infringement suits 
based on invalid patents. 

The law charges the Oommissioner of Patents with 
making an examination of the novelty of the alleged in- 
vention of an application. It sets up no time barrier in 
this respect. Apparently, then, when an examiner is 
confronted with a dilemma of cursory examination on 
the one hand or a delayed issuance of the patent on the 
other, he really has no choice as to the course to pursue, 
if he is to observe the spirit and letter of the law. 



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166 JOUENAL OF THE PaTEXT OpFICB SoCIETT. 

When an inventor files his application and pays his 
filing fee he is entitled to have a reasonably complete 
prior art search by an examiner skilled in that industry 
and a patent issued on anything less than this is not only 
unworthy of the Government but is a deception prac- 
tised on the inventor and the public. The present policy 
of the Patent Office carried to an extreme would render 
it nothing more than a registration bureau, a condition 
certainly never contemplated by the law. 

I have read the above quotation to a number of inven- 
tors and without exception they have been surprised and 
alarmed that the Patent Office should lend its aid to a 
plan tending to deprive the inventor of that to which he 
is clearly entitled, namely, a valid patent. 

It is, therefore, respectfully submitted that when the 
Patent Office finds itself confronted with two diverging 
paths, one representing careful, .thorough, conscientious 
work, and the other speed, the former should be chosen 
because it is required by law, fairer to the public, more 
just to the inventor, and in the end more likely to lead to 
the provision of proper relief by Congress. 



A SINGLE SERIES OF PATENT REPORTS. 



A prominent member of the Washington patent bar, 
in a letter transmitting his subscription, hopes that ef- 
forts will be made to speed the time when we shall see 
**all judicial decisions, both in the Patent Office and in 
the courts, relating to Patents and Trade-Marks, pub- 
lished either in the Official Gazette, or better, in a weekly 
supplement thereto. 

**At present there is no publication wherein all such 
decisions can be found, and every one who wants to keep 
fully informed must subscribe or have access to the OflS- 
cial Gazette, the Federal Reporter, Supreme Court Re- 
porter, Reports of C. A. D. C. and the Trade-Mark Re- 
porter, and even then fail to obtain all decisions promptly 
and accurately. Such a supplement to the Official Gazette 
would, I believe, have a large and popular demand, and 
would be highly useful both in and out of the Patent Of- 
fice and tend to harmonize and unify practice.'* 



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Journal, of the Patent Office Sooibtt. i&7 

A SUOOBSTiaN FOR IHPROVINO PATENT QFTIOE 

SEARCHES. 



By W. L. Thukbeb, Examiner. 



For years it has been a matter of regret that the Offiw 
search was not more reliable. 

In the opinion of the writer it is not believed that any 
very startling changes would be necessary to make inves- 
tigations which would compare favoraWy with the best 
validity searches made by attorneys. It would cost a 
little more at first but it is doubtful in the long run if the 
expense of examining an application would be any great- 
er. Certainly it would not be enough to be prohibitive. 

It is thought that all we need is specialization — the 
keystone of all modem business. 

At present an examiner's time is largely spent in read- 
ing cases and naaking searches, two quite distinct duties. 
The first requires intelligence, adaptability and industry 
—♦qualities which there was never great difficulty in ol>- 
taining prior to the war. To make a proper search, how- 
ever, experience is needed, and this is something rarely 
found on the market. To exhaustively investigate the 
prior inventions in any particular line, especially in the 
heavier arts, one must be thoroughly familiar with the 
field and it requires years of close application to that 
particular field to attain this. Eight here, as we all 
know, is where the great difficulty lies, for no sooner does 
a first-class examiner become somewhat familiar with an 
art than he is offered such inducements on the outside 
that he does not feel justified in remaining. 

Now here is the suggestion which is offered. Let us 
pay for experience enough to retain it — ^but let us use 
to best advantage this high-priced article. Since the 
search is the only part of the examination which cannot be 
carried on fairly well by those of little experience, let 
the experienced devote their entire time to this work. 

For illustration, take the art of printing. To handle 
this field in normal times would probably require about 
four examiners. Let us now select one of these men, of 



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168 JOUKNTAL OF THE PaTBNT OfFICB SoOIBTY. 

course one who is competent and industrious, preferably 
the one who is most familiar with the art, and if possible 
one who prefers work in the Office to that ouside — 'pro- 
vided the remuneration is sufficient. Let us pay this man 
four or five thousand dollars a year and let him devote 
his entire time to searching and to digesting and arrang- 
ing his art so as to have it as nearly as possible at his 
finger ends. Let the others read up the cases, analyze 
the claims and report to him the features on which search 
is required. At first this searcher will need some assist- 
ance, but in time he will attain such familiarity with his 
art that he will be able to make his searches not only 
much more thoroughly, but much more speedily than the 
average examiner. His work will cease to be drudgery 
and will become the pleasant occupation which mastery 
always brings. 

With this expert at his post, the art of printing will be 
well guarded, and it it not very material how often the 
personnel of the case readers changes. They will be 
bright, intelligent, young college graduates, perfectly ca^ 
pable of carrying on the routine work while they pursue 
their law courses and fit themselves to go out into prac- 
tice. 

If ths plan were adopted throughout the Office, in a 
few years we ought to have a force of experts that would 
be the admiration of the patent world, and when novelty 
had been reported favorably by this organization it prob- 
ably would be as near final as is humanly possible. 



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Journal op the Patent Office SocrBTY. 169 
NOTES ON PATENT SOLICITINO FROM THE 

soLiorroR's point op view. 



[Author's name withheld by request.] 



Preparation of Drawings. 

The drawtQg of a patent application should be thor- 
oughly accurate. Some Patent Office draftsmen are 
prone to make drawings which are more or less sketchy. 
Drawings should be made to scale. Draftsmen also are 
apt to omit little details and mechanical features, judg- 
ing them to be of no importance. Particularly when the 
drawing is made from a commercial article, the solicitor 
should require that the drawing be accurate. It is to be 
presumed that the manufacturer has a reason for the de- 
tails em'bodied in the device. When the application 
drawing is submitted to the manufacturer he is likely to 
notice departures from his construction and to consider 
that the work is somewhat below par. Moreover, for the 
educational effect upon the draftsman, accurate work 
should be insisted upon. 

A particular detail may at first appear of no conse- 
quence, but a more careful study may show that it has 
some function or utility. Even though it may not seem 
necessary to mention the detail or its function . in the 
specification, there is nothing to be lost and possibly 
sotnething to be gained by having the drawing accurate 
and complete. Some contingency may arise during the 
prosecution of the application, which will cause the at- 
torney to congratulate himself on having insisted on ac- 
curacy in the drawing. 

When an expert witness is testifying in regard to a 
patent, he often goes into greater detail in regard to the 
construction of the device, the manner in which the parts 
are supported, and the mode of operation, than the speci- 
fication does. For this reason, it is desirable that the 
drawings be correct and complete. A disclaimer also 
may render details desirable. Strause v. Crane, 235 Fed., 
126. 



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170 JOUBNAL OF THB PaTBNT OpFICE SoCIBTT. 

Sometimes the consideration of a detail which at first 
appears of no importance, will suggest or lead to an- 
other matter which i« of some consequenc*^. 

Preparation of Specifications. 

For the preparation of a clear specification, one that 
will be readily understood by courts or others unskiDed 
in the art, it is essential that the writer analyze the ma- 
chine or device and describe its parts in logical order. 
It is 'better to proceed along functional rather than con- 
stilictional lines. Ordinarily, parts should not be de- 
scribed until the time comes to set forth their functions. 

It is sometimes helpful, as an aid to analysis, to draw 
a general claim before writing the description. Such a 
claim should cover all the operations, reciting each group 
of- elements as means, and reciting the groups in the or- 
der in which they operate. 

Some solicitors in describing a machine *' begin with 
the power and end with the product"; i. e., they begin by 
describing the drive shaft and the parts mounted thereon, 
but this method is seldom the best one. It is often help- 
ful first to describe briefly the materials on which the 
machine operates, the product, and the various steps of 
the operation, and then proceed with a detailed descrip- 
tion of the parts of the machine in the order in which 
they operate on the maierials. 

The description should be quite full and detailed, 
whether the invention is broad or narrow. Of course, 
this does not necessarily mean that every bolt, screw hole 
and frame bar should be mentioned. If, however, the 
manner or means of supporting a given part is not per- 
fectly obvious from the drawing, it should be described 
in the specification. 

If the invention is narrow, it is usually well to recog- 
nize the prior art in the description, and point out speci- 
fically the advance which the inventor has made. 

Information as to the state of the art to which an ap- 
plicant's invention pertains may sometimes be had by 
reference to adjudicated patents. Various lists of adjudi- 
cated patents have been published. 

If the invention is a broad one, such language should 
be used as will indicate that the inventor understood that 
the details descri'bed are not essential. For instance, 



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JoUBNAIi OF THE PaTENT OpFIOB SoCIBTT. 171 

** suitable means may be employed, as for example, a 
lever '^ etc. When it is thought that certain parts are 
dispensable, that fact should be brought out by saying 
that **if desired*', such and such a device may be used. 

Unless the invention is very narrow, avoid the use of 
language which will indicate that the inventor considered 
a given part or arrangement as essential. 

Prepctration of Clai/ms. 

Before beginning to draw the claims formally, it is 
very helpful to make a list of all the functions, opera^- 
tions, features, and advantages of the machine or device, 
and then draw broad and narrow claims for each of such 
functions, operations, etc 

If the suggested list of features, etc., is prepared, it 
will prove to be an aid in drawing claims along as many 
different lines as possible. 

Draw claims on single elements of the structure when 
such elements seem to possess novelty. 

In drawing a claim for a particular function or fea^ 
ture, the devices or elements that cooperate with the 
parts being claimed should be included as broadly as 
possible. Nothing should be included in the claims which 
does not concern the feature which the claim is intended 
to cover; elements which are improperly included either 
make the claim unnecessarily limited, or render it invalid 
on the ground of aggregation. 

Present as large a number of claims as is reasonably 
possible when the case is filed. Draw as many detail and 
narrow claims is will probably be needed. Aim to pre- 
pare such a complete set of claims that an action on the 
merits of the whole invention may be had on the first 
official consideration, thus expediting the prosecution of 
the case and also formulating the claims when the sub- 
ject-matter is most clearly in mind. 

But claims should not be unduly multiplied; they 
should be distinctly different from one another, although 
the differences need not be so great as the differences be- 
tween claims in separate patents. 

Ordinarily avoid the method of drawing claims which 
consists in adding an element to the last preceding claim. 
The new element at least should coact with the old ones, 
and the relation should be apparent. 



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172 JOUBNAL OF THE PaTBNT OpFICB SoCIBTY. 

When it can be avoided, the daims should not be drawn 
so that there will be an element or part which is common 
to all the claims, because if an infringer omits such part 
he avoids all of the claims. 

Use broad verbs, adjectives and prepositions, for ex- 
ample, *^ connected to^^ ^^ associated with'', ** cooperating- 
with'', and ^^ having a driving (or driven) connection 
with" are broader than ** fixed to", ** mounted upon"^ 
^'geared to", etc 

Use broad nouns. ** Member" or *' support" is broad- 
er than * * rod ", ^ * bar "or * * shaft ". ' * Actuating means ' ', 
** actuator", ''driving means" and ''driver" are broader 
than a recital of "shaft", "pulley", "gearing", "crank", 
etc. 

When the breadth of a claim will not thereby be im- 
paired, it is better to use a descriptive noun, as, for ex- 
ample, "cutter", rather than such a term as "cutting^ 
means ", for the reason that some courts shy at the word 
"means". 

If any preamble is used in the claims, the preamble 
should ordinarily be broad. However, if the invention is 
narrow or doubtful, it sometimes is wise to make the 
preamble quite detailed, as for example, by reciting the 
conditions under which the device is used. 

The form of the pream:ble is sometimes of importance 
in construing a patent claim. For example, instead of 
using the form "In a lathe, in combination", the form 
"A lathe having, in combination" may sometimes be em- 
ployed to advantage. In case of a dispute as to the com- 
pleteness of the claim, the latter form will enable the ex- 
pert witness to say that the claimed structure is a lathe, 
and therefore the claim includes, at least by implication, 
whatever is necessary to a lathe. Of course it is not al- 
ways desirable to limit to a particular machine a sub- 
combination claim or other fragmentary claim. 

When the invention is quite narrow, great care should 
be taken that the claims clearly and accurately express 
the invention which they are intended to cover. The ex- 
act structure which accomplishes the desired result should 
be set forth, as well as the peculiar cooperation of ele- 
ments to produce such results. If the claim does not ex- 
press the real invention, no amount of arguing can be 
expected to bring an allowance over dose references. 



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Journal of the Patent Office Society. 173 

In cases where the general arrangement of parts is old 
and the invention resides in a novel subcombination or a 
special feature of the old general arrangement, it is well 
to consider using the British type, or German type of 
claim, or types such as were approved in ex parte Brown, 
235 (). 6., 1355, and in ex parte Jepson, 243 O. G., 525. 
Not all inventions readily lend themselves to this kind of 
claim, but where the invention is as above described, and 
in some other cases, such claims may be desirable because 
of the more favorable impression on the examiner by 
reason of gi-eater ease in finding the novel feature ; and of 
better recei)tion by the courts for the same reason. 

It is desirable to reduce renumbering of claims to a 
minimum, as renumbering often leads to confusion and 
error on the part of the attorney, the clerk in the exam- 
ining devision, and the Government printer. It is there- 
fore well to put the narrower claims first in the applica- 
tion, as these may be allowed and, if so, will never need 
to be renumbered. Claims that may be withdrawn if a 
requirement for division is made may be placed at the 
enfl of the series. When canceling claims and inserting 
new ones, the new claims may be given the numbers of 
the canceled claims, thus filling the gaps among the re- 
maining claims, and obviating the necessity of renumber- 
ing claims that follow the canceled claims. 

A solicitor of patents should have the ability to ana- 
lyze and draw distinctions, and ingenuity in expressing 
distinctions well. Broad distinctions should be broadly 
stated. However, even narrow or minor distinctions may 
be broadly stated, i. e., without including unnecessary 
or extraneous matter. 

AMENDMENTS, 
In canceling, amending and arguing, try to avoid un- 
necessary limiting admissions, such as may create estop- 
pels. When canceling claims, the statement may be made 
that they are withdrawn for presentation in better form^ 
or in view of the allowance of other claims covering the 
same feature ; or that they are withdrawn without acqui- 
escen<je in the examiner's holding or reasoning; or that 
in reducing the number of claims the applicant has riot 
intended to relinquish his claim to any feature thereto- 
fore claimed. 



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174 Journal of the Patent Office Society. 

All of the features specified in a claim should be de- 
scribed in the specification. If during the prosecution of 
a case, the claims are amended by inserting limitations, 
amend the specification, if necessary, by incorporating 
therein terminology or phraseology used in the amendecl 
claims. 

After references are cited, compare the references and 
the applicant's structure to discover the general and spe- 
cific differences — • 

(a) as to structure — 

having reference to — 
shape 

location of parts 
horizontal, vertical 

or inclined position 
cost of manufacture 
number of parts 
ease in machining 
portability, etc. 

(b) as to operation — 

having reference to — 
convenience 
rapidity 

quantity of output 
new functions 
new order of operations 
new product 
new raw materials, etc. 

(c) as to purpose — 

having regard to remoteness 

of references, and to the 
practical environment of 
applicant's invention. 

The primary object of such a comparison should be to 
insure that all claims of every nature to which the in- 
ventor is possibly entitled are presented. Tlie solicitor's 
duty is iiot performed until he has given the Office an 
opportunity to pass on all phases of the invention. 
Whether the claims sliould be insisted upon, if rejected, 
is another matter, and should not ordinarilv determine 



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Journal of the Patent Office Society. 175 

as to the presentation of the claims. Nor does it usually 
matter that ,the Office may require division if certain 
claims are presented. 

When preparing an amendment which it is supposed 
will lead to formal allowance of the application, the ap- 
plication should be reviewed to determine whether a sup- 
plemental oath is needed, whether the statement of ob- 
jects corresponds with the claims then standing in the 
case, and whether any portion of the description and 
drawings should be canceled in view of the relinquish- 
ment of claims to any features. If the application is not 
reviewed before allowance as above suggested, it should 
be reviewed as soon as notice of allowance is received, and 
any necessary amendment should be made under Rule 78. 

inasmuch as a certain percentage of patents are issued 
with errors traceable to the Government printer or the 
clerks in the examining divisions, in important cases it 
is advisable, before paying the final fee, to make sure 
that the clerk has correctly entered all amendments. The 
Office copy of the application may be sent to a Washing- 
ton associate for comparison with the Patent Office file. 
All patents should be compared with the application 
files, and errors of any consequence corrected by means 
of a certificate of correction or bv reissue. 



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176 Journal of the Patent Office Society. 

MUNITIONS PATENT BOARD SERVING TWO 
DEPARTMENTS. 



(Reprinted froim The Official V. 8. Bulletin of October 19, 1918.) 



The War Department authorizes the following : 

For the purpose of coordinating the policies of the 
War Department and the Navy Department in patent 
matters, the Secretary of War and the Secretary of the 
Navy have established the Munitions Patent Board. The 
membership of this board consists of the Hon. Thomas 
Ewing, who has been jointly selected by the Secretary of 
War and the Secretary of the Navy; Max Thelen, the 
representative of the War Department, and Pickens Nea- 
gle, representing the Navy Department. 

The Munitions Patent Board has been formed to con- 
sider clauses in contracts of the respective departments 
dealing with patents ; questions as to the validity or in- 
fringement of patents and the patentability of inventions ; 
questions as to the amount of compensation to be paid 
for patents or for the use of patents ; and all other mis- 
cellaneous questions as to patents which may arise in the 
two departments interested. The board is empowered to 
recommend, from time to time, to the Secretary of War 
and the Secretary of the Navy suitable action to be taken 
or policies to be adopted in regard to all patent matters 
which are brought before it for consideration. The ac- 
tion of the board in matters which come before it so far 
as they apply to the War Department is subject to the 
final approval of the Secretary of War, and in matters 
for the Navy is subject to the final approval of the Sec- 
retary of the Navy. 



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Journal, of the Patent Office Sooibtt. 177 
DECEPTIVE OHEinOAL PATENTS. 



New York, October 22d, 1918. 

To the Editor: 

A quotation from a book called '* Science and the Na- 
tion '' published by the Cambridge University Press, of 
1917, in reference to German patents, may be of timely 
and perhaps of future interest to your readers. The 
quotation is found on pages 17 and 18 of the book. 

The Bayer Ck>inpany, like aU the other German fine chemi- 
cal firms, holds many thousands of carefully drawn up patents; 
these constitute a valua'ble asset with which to fi^ht competi- 
tors and to conceal actual methods of working. For it must 
•be understood that many of these patents are bogus, that is to 
say, contain deliberate misstatements for the purpose of mifilead- 
ing enquiring minds as to the manner in whioh imporant pro- . 
ducts are manufactured by the firm. In fact, some German 
patents are drawn up for the purpose of discouraging investi- 
gation by more practical methods; thus, anyone who attempted 
to repeat the method for manufacturing a dye-stufT protected 
Salzmann and Kruger in the >German Patent No. 12,096 woiUd 
be pretty certain to kill himself during the operation. Com- 
mercial organizations which have reached such a stage of de- 
velopment as can produce adornments like the above will not 
suffer much from the kind of competition which we are at pres- 
ent preparing to offer. 

This is not an isolated complaint of this kind as the 
newspapers in the United States have from time to time 
contained references to the effect that the working formu- 
lae given in many of the United States chemical patents 
taken out by Germans were unworkable. If this is true 
of a large number of German chemical patents where is- 
sued in the United States, England, or elsewhere, would 
it not tend to weaken the force of such patents either as 
references or anticipations when cited against United 
States applications or against United States patents ? 

We should be glad to know how general complaints of 
this kind have been. 

Yours very truly, 

Mock & Blum. 



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178 Journal op the Patent Office. Society. 
RULES 28 AND 29. 



By Chas. E. Tullar, Examiner. 



(Delivered before the fourth assistant examiners.) 



RULE 28. 

Joint Inventora are entitled to a Joint patent; neither of 
them can obtain a patent for an invention jointly invented by 
them independent inventors of dletinot and independent im- 
provements in the same macliine can not obtain a Joint patent 
for their separate invention^. The fact that one person fur- 
nishes tbe capital and another makes the Invention does not 
entitle them to make an application as Joint inventors; but in 
such case they may become Joint patentees, upon the conditions 
pre8cril)ed in Rule 26. 

Only an original inventor is protected under the Con- 
stitution (Art 1, Sec. 8). A patent must be founded upon 
the right of the inventor and no concession on the part 
of the original inventor can make any one else an in- 
ventor. (Tyler v. Kelch, 98 0. G., 1282; 1902 C. D., 506, 
App. D. C.) Section 4888 of the Eevised Statutes requires 
the application to .be made by the personality of the 
source of the inventive act, whether that personality re- 
side in one or several individuals. A patent being a con- 
tract and mutual assent to its terms being of the essence 
of a contract, in the absence of such assent on the part of 
all joint inventors no valid patent can be issued. An ap- 
plication signed by one of the inventors alleging that he 
and another are joint inventors will therefore not be ac- 
cepted even for the purpose of an interference with a 
patent alleged to have been improperly obtained by the 
other on his application as a sole inventor. {Ex parte 
Schaeffer 76 0. G., 1118; 1896 C. D., 30; in re Crane, 106 
O. G., 999; 1903 C. D., 322.) 

There is one case holding that a patent granted to the 
assignee of two joint applicants therefor as joint inven- 
tors is valid although one was a sole inventor. (De Laski 
& Thropp C. W. T. Co. v. Wm. R. Thropp & Sons Co., 218 
Fed., 458, D. C. N. J.) The basis of the holding is that 
Section 4i395 of the Revised Statutes permits the grant- 
ing of a patent to the assignee of *Hhe inventor or dis- 



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JouBN^ OF THB Patbnt Opfioe Sooibty, 179 

coverer^' and the mere joining of the other assignor can- 
not invalidate the assignment. The Office, however, has 
always held that an application cannot be made by one 
joint inventor upon the assignment of the other, all con- 
cerned in the invention being required to join in the ap- 
plication. (Newton's Case 2 Op. Atty. Gen. 571; 1833.) 

It is not essential that both parties sign the same pam- 
pers. The law merely requires that the inventor shall 
sign and make oath to the application. Where joint in- 
ventors sign and file separate duplicate papers reciting 
that they are joint inventors, a single copy of the specifi- 
cation should be substituted by amendment for the con- 
venience of the Office. This amendment may be made by 
the attorney. {Ex parte Welhnan et al., 88 0. G., 2065; 
1899 C. D., 176.) 

Where in a joint application the parties allege that 
they ^* verily believe themselves to be the original, first 
and sole inventors'' a new oath should be required. If 
each made the invention separately, they are not entitled 
to a joint patent. {Ex parte Cole, 105 0. G., 744; 1903 
C. D., 237.) 

Even though the applicants agree that a joint applica- 
tion has been filed by mistake, the joint application can- 
not be changed to a sole application. {Ex parte Erne et 
d., 81 O. G., 2247 ; 1897 C. D., 197.) Joint inventors con- 
stitute a different entity from either of them alone and a 
joint application is not a constructive reduction to prac- 
tice by either inventor. {Ex parte Weil et al.^ 173 0. G., 
1081; 1911 CD., 249.) 

A fee forming part of a complete sole application can- 
not be transferred to a subsequent joint application upon 
the applicant discovering that in law he is not a sole but 
joint inventor. {Ex parte Olsen, 101 0. G., 2079; 1902 
C. D., 432.) Where, however, there is such inconsistency 
in the statements of the various papers of an application 
that it is impossible to determine who is the inventor it 
is not forwarded for examination and the fee may be 
transferred to a new application. {Ex parte Henze, 90 
0. G., 2507; 1900 C. D., 44.) 

- Where a joint application is filed and later one of the 
inventors finds that the invention was a sole invention he 
is not estopped by reason of his oath in the joint applica- 



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180 Journal of the Patent Oppicb Society. 

tion from filing a sole application. He may detennine his 
rights by an interference since if the invention was a sole 
invention the joint applicants never made it and the sole 
applicant is the prior inventor. (Kohler v. Kohler et dL.y 
43 0. G., 247 ; 1888 C. D., 19.) An interference may like- 
wise be declared between a patent issued to joint inven- 
tors and a sole application subsequently filed by one of 
them for the same invention. (Lovrien v. Banister et al., 
18 0. G., 299; 1880 C. D., 152.) The presumption is 
against the party filing the second application as a sole 
inventor and he must show clearly and conclusively to 
the Office that he was in error and misled when he made 
the oath to joint ownership. (Shaw v. Keith et al,, 9 0. 
G., 641; 1876 C. D., 69.) The right of the sole applicant 
to a patent, where the testimony is conclusively in his fa- 
vor, will not be precluded by the mere denial of his co- 
patentee of the fact of sole invention. (Lovrien v. Banis- 
ter et al., supra.) 

In an interference proceeding a sole applicant may rely 
upon a previously filed joint application for evidence of 
conception. (General Electric Co. et al. v. Steinberger, 
208 Fed., 699, D. C. E. D. N. Y.) 

Where joint inventors constitute the junior party to an 
interference they must establish that they jointiy con- 
ceived the invention sufficiently early to overcome the 
prima facie case of the senior party. (Mills et al. v. Dar- 
lington, 178 0. G., 321; 1912 C. D., 460.) Furthermore, 
being an entity in contemplation of law, their unsup^ 
ported testimony as to their joint acts of invention haa 
no more force and effect than the unsupported testimony 
of a sole inventor as to his sole acts of invention. (Gar- 
rels et al. v. Freeman, 103 O. G., 1683; 1903 C. D., 542, 
App. D. C.) 

One of two joint applicants will be permitted to prose- 
cute an application through an attorney of his own selec- 
tion where there is a proper showing of an endeavor of 
the co-applicant to cause abandonment of the application. 
{Ex parte Barrett et al., 127 0. G., 847 ; 1907 C. D., 76.) 

In considering whether an invention is joint or sole one 
must distinguish the idea of securing a desired result 
from the idea of means to secure it. Where, for example, 
P has merely an idea that a lifting jack might be adapted 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 181 

ta hoiizoutal operation to assist in unscrewing the pipe 
sections of oil well apparatus and goes to B, who works 
out means to adapt the jack to- the purpose, the invention 
is B^s and a patent granted to F is invalid. (Forgee v. 
Oil Well Supply Co., 58 Fed., 871, C. C. A. 3rd Cir.) 
Where, however, one person has a plan and preconceived 
design of a machine, another person may make a valu- 
able suggestion as to an auxiliary part that aids in the 
accomplishment of the desired result without being a 
joint inventor. (Agawam v. Jordan, 74 U. S., 583.) But 
where the other makes a suggestion of practical value in 
making a device operative, and that suggestion is the 
very thing needed to make the conception a success, the 
invention is joint. ( Consolidated Bunging Apparatus Co. 
V. Woerle, 38 0. G., 1015; 1887 C. D., 209; 29 Fed., 449, 
C. C. N. D. 111.) It is not required that the inventive con- 
ceptions of the two inventors shall develop simultane- 
ously. One may conceive a general or imperfect outline 
of an entirely novel thing, which, without the concep- 
tion of another supplementing and complementing the 
conception of the first, developing it and giving it body, 
might never amount to invention. (William R. Thropp 
& Sons Co. V. De Laski & Thropp Circular Woven Tire 
Co., 226 Fed., 941, C. C. A. 3rd Cir.) 

If a claim covered but a single idea, it would be diffi- 
cult to see how it could constitute a joint invention, but 
when a claim covers a series of steps or a number of ele- 
ments in combination the invention may be joint, though 
some of the steps or some of the elements may come as 
the thought of but one. (Quincey Mining Co. v. Krause, 
151 Fed., 1012, C. C. A. €th Cir.) This follows obviously 
from the fact that a combination of elements or a process 
comprising a series of ^cts may be new and unobvious 
even though the elements or separate acts are all old. 

As patents are founded solely upon statutes they are 
not valid unless complying substantially with the provi- 
sions of the statutes. By the terms of the statutes it is 
open to any one to show that the applicants were not the 
original and first inventors. A patent granted to parties as 
joint inventors where the invention is the sole invention 
of one of them is void. (De Laval Separator Co. v, Ver- 
mont Farm Machine Co., 126 Fed., 536, C. C. Vt.) It is, 



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182 JouBKAii OP THE Patbnt Ofpiob Socibty. 

however, always difficult to determiBe how much of the 
STiccessfnl result is due to each and the mere fact that 
two or more persons unite in an application for a patent 
as the product of their joint efforts creates a strong pre- 
sumption that the device is the result of their united in- 
genuity. (Consolidated Bunging Apparatus Company t;. 
Woerle, supra.) 

To destroy a patent granted for a joint invention, upon 
the ground that it was the invention of only one of the 
applicants, would require very clear evidence of a reliable 
character. (Quincey Mining Co. v. Krause et ai., siipra.) 
Such defenses are purely technical and not favored and 
the proof must be unquestioned and well founded. 
(Priestly v. Montague, 47 Fed., 650. C. C. E. D. Penn.) 

Where several independent inventions are claimed in a 
patent only the claims covering a joint invention are void 
in a patent issued to a sole inventor and vice versa. The 
remaining claims are valid. (Eastern Paper Bag Co. v. 
Continental Paper Bag Co., 142 Fed., 479 ; C. C. Me.) If, 
however, some of the claims of a joint patent covered one 
element of a machine and the other claims another element 
and these parts of the machine were independent in con- 
struction and operation, and invented by different inven- 
ters, the patent would be void. (Potter v. Wilson, 2 BHsh.,. 
102; Fed. Cas. No. 11, 342.) 

RULE 29. 

No person otherwise entitled thereto s*hall be debarred from 
receiving a :patent for his invention or discovery by reason of 
its haying been first patented or caused to be patented by the 
inventor or his legal rej^resentatives or assigns in a foreign 
country, unless the application for said foreign patent was filed 
more than twelve months prior to the filing of the apfplication 
in this country, in which case no patent sihall be granted in 
this country. 

An application for patent filed in this country by any person 
who has previously regulaily filed an application for a patent 
for the same invention or discovery in a foreign country which, 
by treaty, convention, or law, affords similar privileges to citi- 
zens of the United States shall have the same force and effect 
as the same application would have if filed in thig country on 
the date on which the a<pplication for patent for the same in- 
vention or discovery was first filed In such foreign country, pro- 
vided the application in this country is filed within twelve 
months from the earliest date on which any such foreign appU- 
cation was filed ; but no patent shall 'be granted upon such ap- 
plication if the invention or discovery has been patented or de- 



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JoUENAIi OF THE PaTENT OpFICB SoOIBTY. 183 

scribed in & printed publication in this or any foreign country* 
or has been in public uee or on sale in this country* for more 
than two years prior to the date of filing in this country. 

History of Section 4887 : 

The earliest legislation on the subject of foreign pat^ 
ents is found in Section 8 of the Act of 1836, which pro- 
vided that nothing in the act should be 

construed to deprive an original and true inventor of the right 
to a patent for his invention, by reason of his having previously 
taken out letters patent tehrefor In a foreign country, and the 
same having been pu'blished, at any time within six months 
next preceding the filing of his specifications and drawings. 

By Section 6 of the Act of 1839 two other conditions 

were made, as follows : 

Provided that the same shall not have been introduced into 
public and common use in the United States, prior to- the appli- 
cation for such patent; and provided also, that in all cases 
every such patent shall be limited to the term of fourteen 
years from the date or publication of such foreign letters pat- 
ent. 

This was the state of the law when the Act of 1870 was 

passed, the twenty-fifth section of which became Section 

4887, Revised Statutes, which prior to the Act of March 

3, 1897, read as follows :^ , 

N-o person shall be debarred from receiving a patent for 
his inyention or discovery, nor shall any patent be declared in- 
valid, by reason of its having been first patented or caused to 
be patented in a foreign country, unless the same has been in- 
troduced into public use in the United States for more than two 
years prior to the application. But every patent granted for 
an invention which has been previously patented in a foreign 
. country shall be so limited as to expire at the same time with 
the foreign patent, or, If there be more than one, at the same 
time with the one having the shortest term, and in no case 
shall it be in force more than seventeen years. 

The Act of March 3, 1897, which took effect January 1, 
1898, did away with the provision of Section 4887 limit- 
ing tiie term of the United States pafent by that of a for- 
eign patent, and provided instead that the granting of a 
foreign patent should bar a patent in this country if the 
foreign application therefor was filed more than seven 
months prior to the application in this country. This act 
amended Section 4886 also, providing that patenting the 
invention in any country more than two years prior to 
the application in this country should bar a patent in this 
country. 



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184 JOUBNAIi OF THE PaTENT OfFICE SoCIETY. 

Inasmuch as the Act of March 3, 1897, did not apply to 
applications filed prior to January 1, 1898, or patents to 
be granted thereon, old Section 4887, as it stood prior to 
that act, is still in force as to those applications and pat- 
ents. (Cameron Septic Tank Co. v. City of Knoxville, 
187 O. G., 232; 1913 C. D., 509; 227 U. S., 509.) 

The Act of March 3, 1903, which took effect at once, 
and produced Section 4887 in its present form, was 
passed for the purpose of putting into statutory form the 
agreements of certain international conventions. This 
act did not apply to applications filed in this country 
before the passage of the act, but did apply with full 
force and effect to all applications filed thereafter. (De 
Ferranti v. Lindmark, 134 0. G., 515; 1908 C. D., 353; 30 
App. D. C, 417.) 

International Conventions : 

The rapidly extending scope of international commer- 
cial relations and the great differences between the pat- 
ent laws of different countries made an international un- 
derstanding on the subject of patent protection necessary 
to the proper protection of industrial property. The In- 
ternational Convention for the Protection of Industrial 
Property, by which term patents and trade-marks are 
especially indicated, is the result of a series of conven- 
tions or treaties, of which the first was held at Vienna in 
1873. Conventions followed from time to time, the more 
important of which were the treaty of Paris, March 20, 
1883, proclaimed by the President of the United States 
on June 11, 1887, 39 0. G., 960, and the treaty of Brus- 
sels, Dec. 14, 1900, proclaimed by the President on Au- 
gust 25, 1902, 101 O. G., 1372. The convention was again 
revised at Washington, June 2, 1911, 204 0. G., 1011. 

The purpK)se of the Act of March 3, 1903, amending 
Section 4887 was particularly to give effect to the provi- 
sions of Article 4 of the Treaty of Brussels, which had 
been held not to be self executing. (Op. Atty. Gen. Mil- 
ler, 47 0. G., 398; 1889 C. D., 253; Rosseau v. Brown, 104 
0. G., 1120; 1903 C. D., 587; 21 App. D. C, 73; Cameron 
Septic Tank Co. v. Knoxville, 187 0. G., 232; 1913 C. D., 
509 ; 227 U. S., 39.) This article established a *' period of 
priority" of twelve months. The puri)ose of this period 



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JOUBNAL OF THE PaTENT OfPIGB SoCIBTY. 185 

is to give an opportunity to determine whether there is a 
foreign market for the invention before incurring the ex- 
pense of filing foreign applications. The provision is of 
great benefit to citizens of the United States for the rea- 
son that the laws of many foreign countries provide that 
the introduction of the invention before an application is 
filed will bar a patent. Moreover, in many foreign coun- 
tries, publishing a description of the invention in any 
country before filing the application will bar a patent. 
Under the provisions of the International Convention an 
application filed in this country, for example, on a certain 
day has, during the period of priority, the same saving 
effect as regards acts done in exploiting the invention, 
that it would have if filed on the same day in each of the 
countries adhering to the convention. 

The perio(} of priority established by the convention 
being twelve months made it necessary to change the sev- 
en months' bar established by the Act of March 3, 1897, 
fo twelve months and this also was accordingly done by 
the Act of March 3, 1^03. 

In addition to the International Convention, with a 
central bureau conducted by the Government of the Swiss 
Confederation, there is an International Congress of 
American States with a central bureau conducted by the 
Government of Argentine Republic. The ratification of 
the Fourth International Congress of American States, 
was proclaimed by the President July 29, 1914, 207 0. 
G., 935. 

Section ^87: 

It will be noted that Section 4887, and likewise Rule 29 
which is based thereupon, is composed of two paragraphs. 
The first paragraph has to do with the effect as a bar to 
a valid patent in this country of causing an invention to 
be patented in a foreign country before filing an applicfiU 
tion in this country for the same invention. The second 
paragraph has to do with the benefits to be derived from 
applicatioijs filed in foreign countries which by treaty, 
convention, or law afford similar privileges to citizens of 
the United States. 



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186 Journal of the Patent Office Society. 

Section 4887 as a bar: 

Considering first the effect of a foreign patent a^ a bar, 
and noting that it makes no difference what privileges 
the foreign country affords citizens of the United States, 
it is seen that to bar or render invalid a patent in this 
country four conditions must be fulfilled: 

1. The patent must have been granted in the foreigp 
country first, that is, before one is granted in this 
country. 

2. The patent must have been caused to be granted by 
the inventor, his legal representatives or assigns. 

3. The application therefor must have been filed more 
than twelve months before the date of fili/ng in this 
country. 

4. The patent must be for the same invention. 

These four conditions will be taken up in the order 
given before proceeding to the subject of the benefits to 
be derived from foreign applications. 

1. Meaning of the term ^'patented". 

The word '* patented '* does not have the same meaning 
in Section 4887 that it has in Section 4886. A foreign 
patent to one inventor to act as a bar to a patent to an- 
other inventor under Section 4886 must be a public pat- 
ent as distinguished from a secret patent, although it is 
not essential that the description and claims be printed. 
(Brooks v. Norcross, 2 Fish., 661; Fed. Cas. No, 1957; 
Roschach v. Walker, 88 0. G., 1333; 1899 C. D., 157; Sir- 
ocoo Engineering Co. v. B. F. Sturtevant Co., 213 0. G., 
1447; 1915 C. D., 194; 220 Fed., 137, C. C. A. 2nd ar.) 
Under Section 4887, however, the determining factor is 
not the date on which the invention was accessible to the 
public, but the date from which the inventor may have 
enjoyed the benefit of the foreign patent as a patent. 
(De Florez et al. v. Baynolds et al., 17 0. G., 503; 1880 C. 
D., 289; 8 Fed., 834, C. C.) The question of secrecy or 
publicity of a foreign patent granted prior to the patent 
here is therefore immaterial under Section 4887'. (Gram- 
me Electrical Co. v. The Amoux & Hochausen Electric 
Co. et al., 25 0. G., 193; 1883 C. D., 418; 17 Fed., 838, C. 
C.) The last two decisions were rendered under Section 
4887 as it stood prior to the Act of March 3, 1897, when it 
provided that the patent in this country should expire 



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Journal of th^ Patent Office Society. 187 

with the foreign patent, for the same invention, having 
the shortest term. The object of the old statute was 
to provide that when an inventor had secured a mono- 
poly in a foreign country by taking out a patent there- 
in, in addition to the monopoly he had secured here, and 
the monopoly terminated by expiration of the patent 
there, the invention should also be free' to the people of 
this country. (Leeds & Catlin Co. v. Victor Talking Ma- 
chine Co. et al., 144 0. G., 1089; 1909 C. D., 536; 213 U. 
S., 301.) The Board of Examiners-in- Chief has held in a 
case decided February 13, 1918, Vol. 37, page 113, that 
the same general object is intended to be accomplished by 
the statute as it now stands. 

The actual issuance of the patent under the seal of the 
Government, investing the patentee with the grant of a 
monopoly, rather than the preliminary proceedings, is 
contemplated by the term '* patented". (Telephone Co. 
V. Cushman et al., 65 0. G., 135; 1893 C. D., 546; 57 Fed., 
842, C. C.) The patent under consideration in this case 
was a British patent. 

The ''patented" date of a French patent is the **de- 
livre" date. (Sirocco Engineering Co. v. B. F. Sturtevant, 
supra.) 

The ''patented" date of a German patent is the "aus- 
gegeben" date. (Merrell-Soule Co. v. Powdered Milk 
Co. of America, 222 Fed., 911; C. C. A. 2nd Cir., Coxe, 
Judge.) 

A provisional Swiss patent which merely secures the 
applicant against the effects of a publication for three 
years and entitles him to no monopoly, but merely to a 
definitive patent upon the making of proof of the exist- 
ence of either the article itself or a model within that 
time is not a grant of a patent monopoly. (Societe Ano- 
nyme, etc., v. General Electric Co., 97 Fed., 604; C. C. S. 
D. N. Y.) 

When a foreign patent shows upon its face that it was 
issued at a certain date the burden iis upon the applicant 
to show that it is not in fact entitled to that date. (Hum- 
mel V. Tingley, 90 0. G., 959; 1900 C. D., 22.) 

Under Section 893, Revised Statutes, this office must 
take judicial notice of foreign patents where copies have 
been furnished it by foreign governments and they are 
among the records of the Office. (Robin v. MuUer et al., 
108 0. a, 292 ; 1904 C. D., 14.) 



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188 Journal of the Patent Office Society. 

2. By whom patented. 

Under the terms of the statute the granting of a for- 
eign patent on an application filed more than twelve j 
months before the application in this country will not bar i 
a patent in this country unless the foreign patent is pro- 
cured by the applicant in this country or by his legal rep- ; 
resentatives or assigns. 

While a sole application stands on its own ground, m- , 
dependent of and hostile to any previously filed joint ap- 
plication in this country, yet, if the invention has been 
patented to the joint applicants in a foreign country, it 
has been ''caused to be patented '* by the sole applicant, 
within the meaning of the statute, aiid a sole patent in 
this country is barred. (American Casting Mach. Co. v. 
Pittsburgh Coal Washer Co., 237 0. (J., 621; 1917 C. D.; 
237 Fed., 590.) 

Where an applicant in this country is rejected on a for- 
eign patent for the same invention issued to a different 
party, and the foreign patent bears evidence of having 
been filed on a certain date, the mere fact that the appli- 
cant in this country has referred in his oath to the filing 
of a foreign application on that date is not sufficient to 
identify the patent as his own. The reference will not be 
withdrawn until the applicant files an affidavit fully 
identifying the patent as his own or filed onr his behalf. 
{Ex parte Wlost, 165 0. G., 729; 1911 CD., 57.) 

3. On an application filed more than twelve months be- 
fore the application in this cov/niry. 

In computing the time under Section 4887 the date of 
filing the foreign application is excluded, so that if, for 
example, the foreign application was filed February 23, 
1903, the application in this country may be filed as late 
as February 23, 1904. (Hess-Bright Mfg. Co, et oL v. 
Standard Roller Bearing Co., 147 0. G., 521; 1909 C. D., 
256; 171 Fed., 114, C. C. E. D. Penn.) 

The bar of the statute begins to run from the filing of 
a British provisional specification which ripens into a 
patent. {In re Swinburne, 99 0. G., 1625; 1902 C. D., 
537 ; 19 App. D. C, 565.) Ths rule has been reaffirmed by 
the Court of Appeals in in re Bastian et al., 225 0. 6., 
1106; 1916 C. D., 160; 44 App. D. C, 425, without regard 



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JotJBNAL OF THE PaTBNT OfJ'ICB SoCIBTY. 189 

to a contention that the provisional application did not 
disclose the invention. Where, however, the British pro- 
visional specification has been cancelled under a provi- 
sion of the British law becanse for an invention not sub- 
stantially the same as that described in the complete spe- 
cification, and the patent bears the date of the complete 
specification, then the date of filing the complete specifica- 
tion must be accepted as the filing date under Section 
4887. (Ex parte Hayes, 209 0. G., 1317 ; 1914 C. D., 93.) 

Section 4894, Revised Statutes, applies only to applica- 
tions which already have a status in the Office and a show- 
ing of unavoidable delay cannot be made under that stat- 
ute to excuse a failure to file an application in this coun- 
try within the twelve months specified in Section 4887, 
Revised Statutes. {Ex parte Ravelli, 130 0. G., 982; 
1907 C. D., 260.) 

It was formerly held that application papers executed 
by the inventor could not be substituted for application 
papers executed by the attorney for the purpose of giv- 
ing a date to the application early enough to avoid the 
statutory bar under Section 4887. {Ex parte Tropenas, 
90 O. G., 749; 1900 C. D., 14; ex parte Sassin, 122 0. G., 
2064; 1906 C. D., 205.) In order to meet the emergency 
arising out of the war. the practice of accepting applica- 
tions executed by the attorney was instituted, leaving to 
the courts the question whether properly executed appli- 
cations, subsequently filed, can operate by relation back 
to the date of filing by the attorney. {Ex parte Kramer, 
238 O. G., 986, 1917 C. D.) 

Under Section 10a of the Trading with the Enemy Act 
of October 6, 1917 (243 0. G., 1070), an enemy or ally of 
enemy who is unable, during the war or within six months 
thereafter, on account of conditions arising out of the 
war, to file an application within the period prescribed by 
law, may be granted an extension of nine months, provid- 
ed the nation of which the applicant is a citizen or subject 
extends similar privileges to citizens of the United States. 

Under Rule 63(f), applications filed more than twelve 
months after the filing of an application for the same in- 
vention in a foreign country, are made special in an en- 
deavor to get the patents granted before a statutory bar 
arises by reason of the granting of the foreign patents. 



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190 JoUBNAIi OF THE PaTBN^T OfPIOE SoCIBTY. 

, 4. Meaning of same invention. 

Nothing is ** patented '^ unless it is not only described 
but actually covered by the claims. ( Westinghouse Elec- 
tric & Ufg. Co. V. Stanley Instrument Co., 138 Fed., 823, 
C. C. A., 1st Cir., Putnam, Judge.) The word patented 
means patented according to the laws and usages of the 
country provided a substantial monopoly is thereby 
granted. It is not essential that the foreign patent be 
the equivalent of a patent granted by the United States 
either as to length of term or the scope of the protection 
secured. (Atlas Glass Co. v. Simonds Mfg. Co. et al., 
102 Fed., 643, C. C. A., 3rd Cir., Gray, Judge.) 

Formal identity of claims is not necessary to consti- 
tute identity of a United States and a foreign patent un- 
der Section 4887. Substantial identity of the invention 
as covered by the claims is suflScient (United Shoe Ma- 
chinery Co. V. Duplessis Machinery Co., 148 Fed.j 31, C. 
C. Mass.) According to this case the test of identity of 
the subject matter patented is whether in either patent 
there is evidence of '^an essential, novel, and patentable 
improvement on what is claimed in the other''. On ap- 
peal this test was approved. (155 Fed., 842., C. C. A., 
1st Cir.) 

In Thomson-Houston Electric Co. v. McLean, 153 Fed., 
883, C. C. A., 1st Cir., Putnam, Judge, it is held that a 
patent is not exempted from the operation of Section 
4887, Revised Statutes, because there may be diflferences 
in detail between the devices of the two patents unless 
such diflferences affect the essence of the invention as cov- 
ered by the respective patents. The decision clearly in- 
dicates that the test is as to whether the diflferences are 
patentable diflferences. 

According to the Supreme Court the question of wheth- 
er an invention has been ^'patented'' within the meaning 
of Section 4887 is one of identity between the invention 
claimed in the United States and foreign patents and not 
whether one would anticipate or overlap the other. (Fire- 
ball Gas Tank & Illuminating Company et al. v. Commer- 
cial Acetylene Company et al, 221 0. (J., 1039; 1915 C. D., 
341 ; 239 U. S., 156.) The foreign patents were held to 
be for a monopoly of the method of storing or utilizing 
gas, while the patent in this country was held to be for a 



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JoiTBNAIi OF THE PaTBNT OfFICE SoCIBTY. 191 

different monopoly, namely, an apparatus by which the 
process was practiced. This difference between the 
claims being granted, it is dear that the holding was 
right. The apparatus comprised a pressure reducing 
valve whereby the pressure of the outflowing gas was 
kept constant, this reducing valve being claimed in the 
United States patent both broadly and specifically. Quite 
clearly other means might have been used to control the 
pressure. If it is not so easy to follow the court in its 
construction of some of the claims of the foreign patents, 
this is due to the indefinite character of those claims, 
when viewed as we should view such claims if urged in 
this country. 

In the case of Leeds & Catlin Co. v. Victor Talking 
Mach. Co, et ai., 144 O. G., 1089; 1909 C. D., 536; 213 U. 
S., 301, the Supreme Court held that a claim for a process 
and a claim for an apparatus by which the process is per- 
formed are distinct inventions. 

In the case last cited the Supreme Court held also that 
a combination and an element thereof are distinct inven- 
tions. 

Where a foreign patent contains no formal claims, it 
will be presumed that the law of the country does not re- 
quire them, and the specification and drawings will be 
looked to for the purpose of determining whatever is 
novel and whether it will sustain any of the claims in the 
application in this country. (Western Electric Co. v. 
Citizens Tel. Co. et al, 106 Fed., 215, C. C. W. D. Mich. 
S. D.) 

A German Gebrauchmuster, although not printed, the 
title and general description of the invention only being 
given in the official publication, is a foreign '* patent ^^ 
within the meaning of Section 4887. (Safety Gas Light- 
er Co. V. Fischer Bros. & Corwin, 236 Fed., 955.) . 

Some of the claims of an application in this country 
may be subject to rejection as being for the same inven- 
tion as is covered in the foreign patent without subject- 
ing the remaining claims to the same rejection. This may 
occur, for example, where the application in this country 
covers both a combination and an element thereof, while 
the foreign patent claims the element only. (Leeds & 
Catlin Co. v. Victor Talking Mach. Co. et al., supra.) 



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192 Journal op the Patent Office. SocamTY» 

Section 4887 as a benefit : 

Considering now the benefit that an applicant in thb 
country may obtain from a previously filed application 
in a foreign country one observes that the filing of the 
foreign application will have the same force and effect as 
the same application would have if filed in this country 
on the same day provided four conditions are fufilled. 

1. The foreign country must by treaty, convention, or 
law, afford similar privileges to citizens of the Unitr 
ed States. 

2. The foreign and domestic applications must be filed 
by the same person. 

3. The application in this country must have been filed 
within twelve months of the earliest date on which 
any such foreign application was filed. 

4. The two applications must be for the same inven- 
tion. 

These four conditions will be taken up in order. 

1. The foreign country must by treaty, convention, or 
law, afford the privileges required by Section 4887 
to citizens of the United States. 

The benefit of the filing date of a foreign application 
cannot be obtained where the foreign country does not 
adhere to the International Convention until after the 
filing of the application in this country. (Winter et al. r. 
Latour, 157 0. G., 209; 1910 C. D., 408; 35 App. D. C, 
415.) 

When the Interior Department is duly advised that a 
foreign country has adhered to the International Conven- 
tion the Office is warranted in assuming that '* similar 
privileges" are afforded United States citizens and the 
burden is upon anv one to show the contrary. (National 
Metallurgic Co. t'."^ Whitman et cd., 156 O. G., 1068; 1910 
C. D., 405; 35 App. D. C, 420; Winter et al v. Latour, 
supra.) 

Judicial notice will not be taken of the laws of a foreign 
country, (Winter et al. v, Latour, supra.) 

2. The foreign and domestic applications must have 
been filed by the same person. 



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Journal of the Patent Office Society. 193 

Where the laws of a foreign country do not require the 
application to be filed by the inventor in person it is suf- 
ficient to show that the foreign application was filed by 
others for his benefit. {Ex parte Barthels, 179 0. G., 574 ; 
1912 C. D., 171.) 

3. The application in this country must have been filed 
within twelve months of the earliest date on which 
any such foreign application was ifiled. 

When construing this statute as amended March 3, 
1903, one must remember that before the act of that date 
no benefit whatever could be derived from the filing date 
of a foreign application. Nothing back of the patented 
or published date was competent evidence on priority of 
invention. (Eousseau v. Brown, 104 0. G., 1120; 1903 
C. D., 587; 21 App. D. C, 73.) An applicant therefore 
receives the benefit of the date of his foreign application 
if he complies with the conditions of the statute and 
then only. 

Under the terms of the statute no benefit can be derived 
from the filing date of any foreign application filed more 
than twelve months before the application in this coun- 
try, and not only this, but if there be any such foreign 
application no benefit can accrue from the filing of other 
applications within the twelve months' period, for the 
reason that the application in this country would not then 
have been ^* filed within twelve months * * * from 
the earliest date on which any such foreign application 
was filed.'* (There appears to be no case on this point.) 

The fact that a foreign application filed within the re- 
quirements of Section 4887 becomes abandoned after the 
application is filed in this country does not lessen its ef- 
fect as a constructive reduction to practice, since if it had 
been filed in this country it would have entitled the appli- 
cant to a patent, and the foreign application must be giv- 
en the same force and effect. (National Metallurgic Com- 
pany V. Whitman et al., 156 0. a, 1068; 1910 C. D., 405; 
35 App. D. C, 420.) 

4. The foreign and domestic applications must be for 
the same invention. 

The test for identity of invention under the second 
paragraph of Section 4887 would appear to be whether 



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194 Journal of the Patent Office Socbbtt 

the foreign application discloses the idea of means claim- 
ed in the application in this country. The question of 
what is claimed in the foreign application does not ap- 
pear to have been considered ih any published decision. 
In the case of Bissell v, Fottinger, 212 O. G., 689; 1915 
C. D., 76 ; 42 App. D. C, 597, there was some question as 
whether the invention was sufficiently disclosed in the ori- 
ginal application filed by F. in Germany. An amended 
specification and drawings were filed fully disclosing the 
invention and a patent was granted by the German Pat- 
ent OflSce. The application in this country was filed with- 
in twelve months from the date of filing the original ap- 
plication in Germany, and the applicant was given the 
date of his amendment to the German application for a 
constructive reduction to practice. 

Proof of Foreign Application : 

The benefit of the date of a foreign application filed un- 
der the International Convention can only be secured by 
proving such foreign application. {Ex parte Pauling, 
115 0. G., 1848 ; 1905 C. D., 131.). 

Where the benefit of a foreign filing date is relied upon 
to overcome a reference, the affidavit under Rule 75 
''should be accompanied by a copy of the original for- 
eign application, certified to by the Patent Office of the 
country in which it was filed, and if it is not in the Eng- 
lish language, a sworn translation of the same or a trans- 
lation made by the official translator of this office. If the 
application was not made by the inventor himself, appli- 
cant's affidavit should also state that the application in 
the foreign country was filed for his benefit and that such 
procedure is in accordance with the procedure in the for- 
eign country/' {Ex parte Bartels, 179 0. G., 574; 1912 
C. D., 171.) 

Even where a party secures for his application here 
the benefit of the filing date of a foreign application the 
actual filing date in this country must appear and cannot 
be changed to the foreign filing date. {Ex parte Pauling, 
115 0. G., 1848; 1905 C. D., 131.) 

Where an application is involved 'in interference, the 
primary examiner prepares the notices of interferenise in 
accordance with the filing dates of the applications in this 



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Journal of the Patent Office Society. 195 

country. If the applicant has in his original oath ac- 
knowledged the filing of an application for the same in- 
vention in a foreign country, the Examiner of Interfer- 
ences upon the filing of a proper motion, accompanied by 
a certified copy of the foreign application, will give the 
party filing the same the benefit of the foreign applica- 
tion if in his opinion the invention in issue is disclosed 
therein. If, however, the original oath does not acknowl- 
edge the foreign application, but the allegation is made 
in a subsequent oath or in the preliminary statement, the 
applicant will, in view of th^ conflicting affidavits, be giv- 
en the benefit of the filing of the foreign application only 
upon a stipulation of the parties, or where it is estab^ 
lished by duly taken testimony that he was in fact the 
party who filed the foreign application or that it was filed 
with his knowledge and consent. (Steel et al. v. Myers, 
205 O. G., 1021 ; 1914 C. D., 74.) 

Last clause of Section 4887 : 

Section 4886, Eevised Statutes, provides that a valid 
patent can be obtained only where the invention is not 
patented or described in a printed publication in any 
country, or put into public use or on sale in this country, 
more than two years prior to the application in this coun- 
try. The last clause of Section 4887 is intended to pre- 
vent this section, as amended March 3, 1903, from being 
construed to extend the two year period permitted by 
Section 4886 prior to the filing in this country. 

In considering questions as to the time of filing in this 
country it must always be remembered that a divisional 
case relates back to the time of filing the parent case. 



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196 Journal, of the Patent Office Society. 

RULE 20. 



By H. C. Abmstrong, Examiner. 



In the commentary on Rule 20 published in the Septem- 
ber Journal reference is made on page 38 to two decisions, 
ex parte Hertford and ex parte McTammany, which have 
been modified in certain respects by later decisions to 
which it may be well to direct attention. 

In ex parte Hertford the question under consideration 
was the entry of an ** associate" power of attorney sign- 
ed by the equitable assignee who stated that he desired 
merely to inspect the application and had no intention of 
revoking the power of attorney given by the inventor. 
This was no attempt at intervention and the Comniis- 
sioner very properly ordered entry as a power of inspec- 
tion only, but went further and held that as tlie assign- 
ment was not accompanied by a request that the patent 
issue to the assignee, it was an equitable and not a legal 
assignment and therefore gave the assignee no power to 
intervene and appoint an attorney in any event. 

The basis for this latter holding has been overruled by 
ex parte Hill & Hill, 206 0. G., 1437, in which it was de- 
cided that either an equitable or a legal assignee may in- 
tervene and prosecute the case to the exclusion of the in- 
ventor and, of course, appoint an attorney for such prose- 
cution. The conclusion reached in Hertford was proper 
under either practice. 

In ex parte McTammany where there were two conflict- 
ing assignments and the assignees presented different 
powers of attorney the Commissioner declined to recog- 
nize either of such powers and held that only the inventor 
or his attorney could prosecute the application until de- 
termination by the court of the question of title. This 
practice was changed by two decisions. Sparks v. Small, 
113 .(}•, 1970, and ex parte Wurtz, 120 0. G., 2442, hold- 
ing that in all cases the earlier of two assignees should 
be allowed to intervene and prosecute until his assign- 
ment is set aside either by mutual consent or by a deci- 
sion of a competent court. 



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JOUENAL OF THE PaTENT OfFICB SoCIBTT. 197 

OF PERSONAL INTEREST. 

The following persons have recently been appointed 
fourth assistant examiners, U. S. Patent Office : 

William E. Baff, of the District of Columbia, 

Emerson Stringham, of the District of Columbia. 

Charles Cottingham,- of Illinois. 

Byron H. Carpenter, of Ohio. 

Miss Louise Schwrar, of South Carolina. 

Heman S. Ward, of the District of Columbia. 

Frank M. Dryzer, of New York. 

John J. Lynch, of New York. 

William K. Gahagan, of Louisiana. 

Chas. B. Hamilton, of the District of Columbia, 

Miss Myrtle Whitten, of Illinois. 

Lewis W. Craig, of Ikfassachusetts. 

Miss Phillis Richardson, of Michigan. 

John W. Garner, of Virginia. 
The following assistant examiners have recently re- 
signed : 

*S. H. Graves, first assistant. 

S. J. Boughton, First Assistant Examiner of 

Trade-Marks. 
•Charles A. Straw, second assistant 

Louis A. Bisson, second assistant 
•W. J. Eccleston, second assistant. 

Ealph W. Brown, second assistant 
*Karl Lesh, second assistant. 

Perley H. Plant, second assistant. 
*F. N. Stone, second assistant. 
•Harry A. Burgess, third assistant 
•Harold C. Thorn, third assistant. 
•J. S. Petrie, third assistant. 
•Clyde A. Norton, fourth assistant. 
•Edw^ard H. Lange, fourth assistant 

Simon Birnbaum, fourth assistant 
•Don Carlos Ryan, fourth assistant. 
•Jacob S. Scharf, fourth assistant. 
•Arthur Worischek, fourth assistant 

Henry K. King, fourth assistant. 
•Frederick C. Hamer, fourth assistant 
•George G. Hyde, fourth assistant. 
•A. J. Fihe, fourth assistant. 

Eric A. Binney, fourth assistant. 

•Entered the mllit-ary or naval service. 



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198 Journal of the Patent Office Society. 

First Lieutenant C A. Knudtson, formerly assistant 
examiner in Division 35, has recently died in France as 
the result of wounds received in action. 

James W. Geddes, clerk in the Application Division for 
several years, died of pneumonia in France, October 6; 
he was attached to the 112th En^neers. 

Vincent Cooley, a clerk in the Drafting Division, was 
killed in action in France the middle of October. At the 
time of his death he a non-commissioned oflScer. 

Lieutenant H. R. Frazier, son of former Assistant Com- 
missioner of Patents Robert T. Frazier, was instantly 
killed in action in France, October 17. 

Charles F. Huntemann, first lieutenant, 80th Division, 
319th Infantry, son of First Assistant Examiner H. C. 
Huntemann, was killed in action in France, October 10, 
1918. 

Mr. Sidney E. Prindle, private in the Marine Corps, 
was killed in action in France early in October. He was 
the son of Mr. Edwin J. Prindle, of New York, formerly 
an assistant examiner in the Patent OflSce. 

First Lieutenant Richard Clyde Cruit, in the same di- 
vision, regiment and company as Lieutenant Huntemann, 
was wounded, October 5, in the hip by shell fire. Before 
joining the Army, Lieutenant Cruit was a patent attor- 
ney with Pennie, Goldsborough and O'Neill. It is ex- 
pected that he will fully recover in the course of one or 
two months. 

The latest word received from Captain Howard W. 
Hodgkins, formerly of Division 41, tells of a detail' gath- 
ering side-cars and motorcycles which took him and his 
detachment a long distance through most interesting por- 
tions of France. 

E, B. THOMPSON 

PROJEiCTION BNOINEB-R. 

PROJECTION APPARATUS 
LANTERN SLIDES :: CAMERAS 

Dealer in Moving Picture and Stereopticon Apparatus. 
Phone Main 6350.. 741 11th St., N. W., Oor. H St., Washington, D. C. 

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JOHN RITOGLEiS 
Senator fram Maine, 183n to 1841 

From a portrait in oil in the State House, Augusta, Ma5ne 

Through the courtesy of H. E. Dunnack, Esq. 
Maine State Library 

(See article on "Patent Act of 1836," Page 203) 

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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Office Society 

Office of Publication 1315 Clifton St., Washington, D. C. 
Snbscriptloii $2.50 a year Single copy 25 cents 

EDITORIAIi BOARD. 

E. D. Sewull, Chairman, Publicity Committee. 
O. P. Tucker, Editor-in-Chief. 
J. Boyle. 
A. W. Dayidson. 
W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washington, D. C. Phone Col. 290. 

Entered as second class matter. September 17, 1918, at the post office 

at Washington, D. C, under the act of March 8, 1879. 

Copyright, 1919, by the Patent Office Society. 



Publication of signed articles in this journal is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
tnereln. The editors are glad to have pertinent articles submitted. 



VOL,. I. JANUARY, 1919. No. 5 



EDITORIAL. 



In his report for the year 1916 Commissioner Ewing 
said: ''The Congress by withholding adequate appropri- 
ations to this oflSce is, in effect, transferring our system 
into the old system of granting patents on registration, 
while at the same time the safeguards of a registration 
' system necessary to the public interest are not provided. '* 

On another page of this issue is an article dealing with 
the readoption of the examination system of patent 
grants by the enactment of 1836, after a forty-three 
years' trial of the registration system, that, in the opin- 



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200 Journal op the Patent Office Society. 

ion of Congress, revealed the unsuitability of that sys- 
tem to the needs of a free people. ^ The article discloses 
a deliberate purpose in the minds of the framers of the 
law of 1836 to have the validity of the grant reasonably 
guaranteed by a careful examination made by a body of 
experts prior to the grant, and a confident expectation of 
the fulfilment of that prpose ; to the end that the courts 
should be relieved of a great deal of labor, the public re- 
lieved of uncertainty with respect to their rights, and 
large sums of money previously expended in the impro- 
ductive labor of courts and lawyers saved for productive 
uses. 

In a registration system the burden of claiming more 
than he has a right to claim is borne by the patentee, and 
he must be on his guard ; if he claims too much the courts 
may invalidate his entire patent, so that all infringers of 
that which the patentee had a right to patent will be ex- 
cused because of the patentee 's greed in claiming more ; 
whereas, in an examination system, the people undertake 
in advance of the grant to determine how much an appli- 
C6int is entitled to, and the patentee takes no chance of loss 
by claiming too much, since the court will hold as infring- 
ers all who have made use of that which is defined by 
claims the patentee is entitled to, and merely invalidate 
the claims he is not justified in making. Any theory by 
which the Patent Office shifts onto the courts the bur- 
den of fletermining any questions of patentability is out 
of harmony with an examination system of patent grants. 
Whenever conditions are such that the Patent Office can- 
not determine patentability with reasonable efficiency it 
is time to inquire whether the nation shall not revert to 
the discredited registration method with the checks ap- 
propriate to it, rather than continue an ineffective exami- 
nation system. That the fundamental distinction be- 
tween the two systems, elemental as it is, is not always 
appreciated, is apparent from the frequently expressed 
advocacy of a practice whereby the Patent Office shall 
not refuse any claims insisted upon by an applicant, but 
merely print upon the patent the references thought by" 
the Patent Office to negative a right to the claim. This 
advocacy has never contemplated transferring the afore- 
said burden, however, from the public to the patentee un- 
der those circumstances. Even if the dutv of the Patent 



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JoimKAii OF THE Patbnt Offiob Socibty. 201 

Office were not made clear in the enacbnent of 1836 the 
Supreme Court has made it clear in Keystone Bridge Co. 
vs. Phoenix Iron Co; by this language. '* Since the act 
of 1836 the patent laws require that an applicant for a 
patent • * * < shall particularly specify and point out 
the part, improvement, or combination which he claims 
as his own invention or discovery \*' This provision 
was inserted in the law for the purpose of relieving the 
courts from the duty of ascertaining the exact invention 
of the patentee by inference and conjecture,, derived from 
a laborious examination of previous inventions, and a 
eomparison thereof with that claimed by him. The duty 
is now cast upon the Patent Office. Thus his claim is, or 
is supposed to be, examined, scrutinized, limited, and 
made to conform to what he is entitled to. 

Every person charged with the duty of granting pat- 
ents ought to bear in mind this elemental distinction be- 
tween a registration law and the examination law now in 
force, lest the application of the principles of the former 
to the latter prove so costly in proportion to the benefits 
derived as to wreck the system. 



The needs of the Patent Office, so ably presented in the 
speech of Ex-Commissioner Ewing before the Atlantic 
City Conference, reported elsewhere in these columns, is 
a subject of continuing interest. Discussion should go 
on, but should soon eventuate in action. Resolutions like 
those adopted at the conference are distinct and encour- 
aging signs of outside recognition of these needs, but un- 
less used as a basis for further effort, will amount to 
nothing. The presentation of these needs, begun at the 
Atlantic City Conference and continued at the Southern 
Conunercial Congress at Baltimore and the session of the 
American Economic Association at Richmond, will be ex- 
tended, it is expected, to future appropriate conventions 
and conferences. So far, so good — but the time seems 
ripe for the formulation of a definite plan on which need- 
ed legislation may be based. 

It is expected that a report will soon be made by tlie 
special committee of the National Research Council ap- 
pointed to deal with the subject. 



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202 JOUBNAL OF THE PaTBNT OfFIOB SoCIBTr. 

Possibly the plan, or a plan, should emanate from the 
Patent Office omcials. The Patent Office Society has for 
one of its objects *Ho further the industrial development 
of the United States in so far as the patent system is a 
factor thereof,'' and it would seem entirely proper for it 
to suggest improvements. 

To be comprehensive in its features and to possess the 
proper solidity of support, any plan formulated ought to 
be approved by manufacturers and patent-bar associa- 
tions. Why then should not these parties interest them- 
selves in the determination of the question? 

It is urged that all concerned do some immediate 
thinking on the subject to the end that something tangi- 
ble may soon materialize from which to start a forward 

movement 

mi 

In 1860 the number of new applications filed in the 
Patent Office was 7,653 ; in 1867, shortly after the close of 
the Civil Warj there were 21,276 new cases filed. If we 
are soon to experience a corresponding increase in work, 
obviously means must be provided to care for it 



The session of the American Economic Association 
held at the Hotel Jefferson in Eichmond, on December 28, 
1918, was attended by Bert Russell, Secretary of the Pat- 
ent Office Society, who found opportunity to interest 
some of the delegates in the improvement of the patent 
system and to distribute a number of copies of the No- 
vember number of the Journal. 



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JouBNAii OP THE Patbnt Oppicb Sooibty, 203 
THE PATENT AOT OF 1836. 



By William I. Wyman. 



The patent act of 1790, which created the United States 
patent system, also initiated the examination method of 
granting patents. The Secretary of State became the 
keeper of the records under this law, and with the Secre- 
tary of War and the Attorney General constituted a board 
for the examination and grant of patents. Thomas Jef- 
ferson, the then Secretary of State, whose views mainly 
controlled the policy of the board, had extremely high 
ideals as to the standard and dignity of the grant. The 
act was rigorously executed, the board exercising its full 
discretion to the utmost, and a failure to prove the inven- 
tion to be sufficiently important was ground for refusal. 
So vigilantly and drastically was this policy pursued that 
but three patents were granted the first year and only 
about three score for the entire life of the act. The deci- 
sion of the board being final (no appeal being permitted) 
and the percentage of cases escaping rejection being very 
small, the opposition of the inventors and the industrial 
classes was aroused to such a degree that the act was re- 
pealed and superseded by the law of 1793. 

The act of 1793 was a ** registration'' device, pure and 
simple. The act which it superseded was considered by 
the industrial classes to be inimical to their welfare, and 
the act of 1793 was passed at their instance. It copied 
the English system. As stated in the debate on the bill, 
'*it was an imitation of the patent system of Q-reat Brit- 
ain; that the provisions were such as would circumscribe 
the duties of the deciding officer within very narrow lim- 
its ''. Thomas Jefferson said of this law, ** Instead of re- 
fusing a patent in the first instance, as the board was 
formerly authorized to do, the patent now issues of 
course, subject to be declared void on such principles as 
should be established by the courts of law. * * * a 
previous refusal of a patent would better guard our citi- 
zens against harassment by law suits.'' The law of 1790 
required an examination and made the grant prima facie 
evidence of validity, while under the act of 1793, patents 



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204 JoUBNAi OF THE PaTBNT OpFICB SoOIBTY. 

were granted upon Compliance with .certain formalities- 
and the attributes of the patent ascertained only by ex- 
pensive litigation. 

The law of 1793 gave trouble from the start. Questions 
of originality, duplication of patents and grant of frivo- 
lous patents became insistent. Courts were overwhelmed 
with litigation, and determination of infringement suits 
became matters of perplexity and cJonfusion. Daniel Web- 
ster, in 1824, presented legislation to help relieve the bur- 
den of the patentees in tiie matter of costs in infringe- 
ment cases, declaring in the course of the debate that a 
patent was evidence of property — ^that invention was the 
fruit of a man's brain; that industries grew in propor- 
tion to invention; that therefore the Government must 
aid progress by fostering the inventive genius of its citi- ^ 
zens. As befits the largest figure of his time, he had the 
same views of the relation of invention to progress, the 
same prophetic vision, and the same desire to promote 
invention through perfecting the patent system, as had 
his notable predecessors, Franklin, Washington, Jeffer- 
son, Hamilton and Madison. 

The failure of the law of 1793 to work out its designed 
purpose became more and more evident as the evils which 
arose under its application became more and more pro- 
nounced. Investigations of the Patent Office and the sys- 
tem, by the Secretary of State, the President and Con- 
gress, follow in almost endless succession. Finally, John 
Buggies, who had recently been elected to the Senate 
from Maine, on December 31, 1835, moved that that body 
appoint a committee to take into consideraion the condi- 
tion of the Patent Office and the laws relating to the issu- 
ing of patents. Senator Buggies was appointed the chair- 
man of the committee, which made its report on April 28, 
1836, and at the same time submitted a bill for the reor- 
ganization of the Office. 

Senator Buggies, in making this report to the Senate, 
speaking of the practical operations of the law of 1793 
and its effect upon inventors and the public, said : 

^* Under the act referred to, the Department of State 
has been going on, for more than forty years, issuing 
patents on every application, without any examination 
into the merits or novelty of the invention. And the evils 
which necessarily rCvSult from the law as it now exists 



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Jou&NAii OF THE Patbnt 0?figb Socibtt. 205 

must contiime to increase and multiply daily until Con- 
gress shall put a stop to them. Some of them are as fol- 
lows: 

**1. A considerable portion of some of the patents 
granted are worthless and void, as conflicting and infring- 
ing upon one another, or upon public rights not sub- 
ject to patent privileges, arising from either a want of 
due attention to the specification of claim, or from the 
ignorance of the patentees of the state of the arts and 
manufacures, and of the inventions made in other coun- 
tries, and even in our own. 

**2. The country becomes flooded with patent monopo- 
lies, embarassing to bona fide patentees, whose rights 
are thus invaded from all sides ; and not less embarass- 
ing to the community generally, in the use of even the 
most common machinery and long known improvements 
in the arts and common manufactures of the country. 

**3. Out of this interference and collision of patents 
and privileges, a great number of law suits arise, which 
are daily increasing in an alarming degree, onerous to 
the courts, ruinous to the parties, and injurious to society. 

**4. It opens the door to frauds, which have already be- 
come extensive and serious. It is represented to the com- 
mittee that it is not uncommon for persons to copy patent- 
ed machines in the model room ; and, having made some 
shght immaterial alterations, they apply in the next room 
for patents. There being no power to refuse them, pat- 
ents are issued of course. Thus prepared, they go forth 
on a retailing expedition, selling out their patent rights 
for States, counties and townships, to those who have no 
means at hand of detecting the imposition, and who find, 
when it is too late, that they have purchased what the 
venders had no right to sell, and which they obtain there- 
by no right to use. This speculation in patent rights has 
become a regular business, and several hundred thous- 
and dollars, it is estimated, are paid annually for void 
patents, many of which are thus fraudulently obtained. 
^*In this collision and interference of patents, the ori- 
ginal and meritorious inventor sees his invention, to the 
perfection of which he has devoted much time and ex- 
pense, pirated from him, and he must forego the reward 
which the law was intended to secure to him in the ex- 
clusive right it grants, or he must become involved in nu- 



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206 JOUBNAL OF THE PaTBNT OfFIOB SoOIBTT. 

merons and expensive lawsuits in distant and variouB 
sections of the country to protect and confirm his rights* 
If he be wise he will generally avoid the latter and sub- 
mit to the former alternative of injustice, to which the 
Government, as the law now is, makes itself accessory. 
The practice is scarcely less reprehensible of taking out 
patents for what has long been in public use, and, what 
every one has, therefore, a right to use. The patentee in 
such cases being armed with the apparent authority of 
the Government, having the sanction of the highest offi- 
cers, the seal of the state, scours the country, and, by 
threats of prosecution, compels those who are found us- 
ing the thing patented to pay the patent price or commu- 
tation tribute. This exaction, unjust and iniquitous as it 
is, is usually submitted to. 

**The extent of the evils resulting from the unre- 
strained and promiscuous grants of patent privileges 
may be imagined when it is considered that they are now 
issued, since this year commenced, at the rate of more 
than a thousand a year; a considerable portion of which 
are doubtless void for want of originality in the inven- 
tions patented, either in whole or in some of the parts 
claimed as new. 

**A necessary consequence is that patents, even for 
new and meritorious inventions, are so much depreciated 
in general estimation that they are of but little value to 
the patentee, and the object of the patent laws, that of 
promoting the arts by encouragement, is in a great meas- 
ure defeated. 

**To prevent these evils in future is the first and most 
desirable object of a revision and alteration of the exist- 
ing laws on this subject. The most obvious, if not the 
oidy means of effecting it, appear^ te be te establish a 
check upon granting of patents, allowing them to issue 
only for such inventions as are in fact new and entitled, 
by the merit of originality and utility, to be protected by 
law. The diflSculty encountered in effecting this is in de- 
termining what that check shall be, in whom the power to 
judge of inventions before granting a patent can safely 
be reposed, and how its exercise can be regulated and 
guarded to prevent injustice, through mistake of judg- 
ment or otherwise, by which honest and meritorious in- 
ventors might suffer wrong. ' ' 



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Journal of the Patent Office Society. 207 

With this report before them, Congress took up and 
passed the bill which accompanied it, and the bill be- 
came a law on July 4, 1836. 

The law restored the examination method of granting 
patents, established the Patent OflSce as a distinct and 
separate bureau, placed it in charge of a chief to be called 
the Commissioner of Patents, and provided a complete 
organization to make effective the American plan of pre- 
determining the validity of the invention before the grant. 
Another law passed the same day provided for the erec- 
tion of the original section of the present Patent Office. 
This was also due in great measure to Senator Buggies' 
activities. 

John Ruggles was born in Westboro, Mass., on October 
8, 1789. He graudated from Brown University in 1813, 
read law in Worcester for the next tw^o years, and moved 
to Skowhegan, Maine, in 1815, where he began the prac- 
tice of law. In 1817, he removed to Thomaston, of that 
state. He became a member of the State Legislature, 
later was made a justice of the State Supreme Court, 
and finally became a member of the United States Senate, 
in the year 1835, serving out his term until 1841. He then 
resumed the practice of law in Thomaston, where he lived 
lintil his death, June 20, 1874. 

While John Buggies had a local reputation as a lawyer 
of marked ability and legal acumen, he failed apparently 
to impress his personality on a larger stage. His reputa- 
tion does not ever appear to have been national, and aside 
from his activities in patent matters he left no heritage 
had a decided taste for mechanics. This is the only 
reason that^ appears for his taking such an exceed- 
ingly great interest in patent affairs as soon as he 
came to Washington. Nothing in his previous history 
or associations gives any clue for his intensive con- 
cern in the patent system, but it is evident that as 
soon as he could look over the ground, he immediate- 
ly made that situation his closest study. Evidently, 
his sympathies and imagination w^ere aroused to an 
acute degree, for without any encouragement in the im- 
mediate environment he was cast in he envisaged the 
situation almost at once, saw with a comprehending eye 
the deficiencies, injustices and the illogic of existing con- 
ditions, and perceived the measures required to remedy 



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208 JOUENAX. OF THE PaTBNT OfFICE SoCIBTY. 

them in scientific perspective. He had the understand- 
ing and the enthusiasm of the pioneer and the discoverer. 
Offering a completely formulated and lucid plan to rem- 
edy a situation which was self-evidently intolerable, he 
broke down all opposing forces in marvellously short or- 
der, and in about six months after bringing in his report, 
the law radically changing the system was placed on the 
statute books. Thus, after two generations of tolerance 
of a bad system, and after repeated failures to remedy it, 
he succeeded not only in toppling over the unsightly struc- 
ture', but in erecting in its place one that is bound to en- 
dure indefinitely. Except as it was made more effective 
by minor changes, the act of 1836 remains in larger out- 
lines in the law of today ; and except for alterations which 
shall more effectively carry out its purpose and princi- 
ples, it will persist in the systems of the future. 

While the law did not fulfill the complete hopes of its 
creators, it was a pronounced step in the right direction 
and a decided jump in advance not only of anything that 
had previously existed, but that had ever been proposed. 
It was constructive legislation in the highest sense of 
that abused term. It provided an organization and a 
mode of procedure for whech there were no precedents 
and presented a positive and clear cut plan for determin- 
ing patent rights which was absolutely logical and com- 
plete and which in its larger outlines provided for every 
possible contingency. It sharply accentuated the advan- 
tages of a proper ** examination" system by its vivid 
contrast with the signal failures of the previously exist- 
ent ** registration'' regime. So marked was its success, 
so closely related to the progress of American industry, 
so intimately identified with and provocative of the gen- 
ius of invention, that the so-called American method of 
granting patents became the standard practice for the 
whole world to emulate or admire. The only notable ex- 
ception to this trend, the only highly progressive and 
powerful state which adheres in entirety to the old "reg- 
istration'' system, is France. And while there may be 
no necessary connection between her industrial position 
and her patent system, it is a fact that she has lost rela- 
tively in recent years in the international race for eco- 
nomic precedence. And this, in spite of the fact that no 
people are more ingenious, more original in conception 



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Journal of the Patent Office Society. 209 

or bolder in action. Even staid, conservative England 
has compromised and accepted partially the advantages 
of the examination system. The first country to be in- 
dustrialized, the first to feel the impulse due to invention, 
the country to whom the greatest fundamental inventions 
of modem times are due, England had every reason to 
remain content with her centuries-old patent system. But 
she was being passed in the race by the newer industrial 
nations and she was compelled to alter her system in ac- 
cordance with the methods which were conferring ascend- 
ency upon her competitors. 

For the first time in all history the means for ascer- 
taining and decreeing rights of property in ideas and pro- 
moting the objects of a system of patent protection was 
placed on an intelligent, scientific and adequate basis. 
Before this time, it was true that some measure of exami- 
nation prior to the grant was indulged in. In Massachu- 
setts and Connecticut, long before the revolutionary war, 
patents were granted by the legislative bodies after a 
conference with the inventor and a scrutiny of the inven- 
tion, while under the act of 1790 the Federal Grovemment 
did the best it could to ascertain utility and the state of 
the art, but the efforts in these various directions to give 
valid basis for the patent were spasmodic and fragmen- 
tary. No facilities, organization or body of adequate law 
was ever provided before this time to properly initiate 
and carry on the ** examination " system. This act pro- 
vided a means for collecting the art, a personnel suffi- 
ciently trained to examine the same intelligently, and the 
machinery and procedure for scientifically endeavoring 
to give effect to the purpose of the law. That purpose 
was to throw on the Office the burden which the courts 
had alone performed, to determine the utility, novelty 
and patentability of the invention when and where the 
patent is granted, and, as one writer puts it, — * * to elimi- 
nate litigation * before it begins.' " 

Whatever incentive the registration act of 1793 gave 
to industry was to an appreciable degree modified by the 
mass of worthless and conflicting patents granted, by ex- 
cessive litigation and many cases of fraud and extortion. 
Efforts were sometimes made to reduce the ineffective- 
ness of the act, to give it a semblance of strength by mod- 
ifying its operation. Dr. William Thornton administered 



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210 Journal of the Patent Office Society. 

this act for more than half of its lifetime. Except when 
he undertook to apply the rules inherent in an examina^ 
tion system in cases notoriously without merit, the act 
was carried out in accordance with its intent. In such 
exceptional instances where Dr. Thornton attempted to 
interfere with the prescribed course of procedure, as 
when he refused to include in a patent what he knew **to 
be a common public right ' ', he was summarily overruled 
upon appeal to the Secretary of State. The act of 1793 
was therefore in its administration as effective a demon- 
stration of the possibilities of the registration method as 
could be imagined. 

The law of 1836 provided a dignified procedure, gave 
the grant a prima facie standing of v^llidity, and if it did 
not start this country on its unprecedented industrial era, 
was at least the most powerful agent in stimulating in- 
ventive genius and conserving its fruits. Industrial civi- 
lization and invention are inseparable factors. One can 
not be comprehended without the other. The present law 
may be defective and the means to administer it may be 
inadequate, but the fundamental principles upon which 
it is based are sound. It only needs that it be improved 
in such detail as necessity indicates, to make it the effec- 
tive instrument that Senator Ruggles perceived it to be 
for the promotion of the comforts, well-being and prog- 
ress of a civilized state. 



A limited number of copies of the earlier numbers of 
the Journal have been set aside so that those getting ac- 
quainted with the Journal for the first time through the 
current number and wishing to have complete files, may 
begin their subscriptions with the September number. 



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Journal, op the Patent Office Society. 211 
THE ATLANTIC CITT GONFERENCE. 



On December 3d, 4th, 5th and 6th, 1918, the War Emer- 
gency Reconstruction Conference of War Service Com- 
mittees and the National Councillors of the Chamber of 
Commerce of the United States held a convention at At- 
lantic City. Four thousand delegates from various parts 
of the country attended. Directly or indirectly, a very 
considerable part of the industrial wealth and enterprise 
of the United States was represented. 

The program of the conference provided separate 
meetings for thirty-six, socalled, Related Groups, and ten 
Major Groups, made up of allied Related Groups. Also 
provision was made for general meetings of all groups. 

The general meetings were addressed by Harry A. 
Wheeler, President of the Chamber of Commerce of the 
United States of America, the presiding officer of the con- 
ference; Charles M. Schwab, then Director General of 
the United States Fleet Corporation; Honorable Wil- 
liam C. Redfield, Secretary of Commerce ; John D. Rocke- 
feller, Jr., and Honorable Paul Warburg, former mem- 
ber of the Federal Reserve Board. The various Major 
and Related Group meetings were addressed by men dis- 
tinguished in many different lines of enterprise. 

The readers of this publication will be interested in an 
address, printed elsewhere in full in this number, deliv- 
ered by Honorable Thomas Ewing, Ex-Commissioner of 
Patents, before Major Group No. 3, Iron and Steel. This 
Major Group was made up of Related Groups 7 to 14 in- 
clusive, which embraced delegates representing indus- 
trial arts in the following fields : Gas Motors, Automo- 
biles, Engines, and the like; Steel and Iron Production, 
Rolled, Drawn, Fabricated, Manufactured and Cast; Ma- 
chinery, Tools and Power Equipment ; Hardware ; Build- 
ing Materials and Farm Operating Equipment. About 
one-fourth of the entire number of delegates at the con- 
vention attended the meetings of this Major Group. 

The delegates adopted the following resolution : 

REJSOLViEJD: That it !« the sense of this Conference that 
OongresB should, at once, equip the Patent Office to render a 
more prompt and accurate public service, thereby further stim- 
ulating the inventive genius of our people and more firmly 
stabilizing the business interests of the nation founded on pat- 
ent rights; and, further 



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212 Journal op the Patent Office Society. 

RESOIiVED: That copies of this reeolutlon be forwarded 
to each member of the Patent and Appropriation Committees 
of the Senate and House of Representatives. 

A similar resolution was also passed by Major Group 
10, comprising Related Groups 33 and 35, representing 
Engineers, Architects, Accountants, Specialists, Trade 
Papers, Magazines and Newspapers. 

The Patent Office Society was represented at the Con- 
vention by M. H. Coulston, President; J. H. Lightfoot, 
member Executive Committee, and W. J. Wesseler, Busi- 
ness Manager, Journal of the Patent Office Society. 



THE SOUTHERN COBflMERGIAL CONGRESS AT 
BALTIMORE. 



The tenth annual convention of the Southern Commer- 
cial Congress held at Baltimore from December 8th tx) 
15th was addressed in large measure to the problems of 
readjustment following the war. The development of 
diversified industries in the South received particular 
attention, and with a view of showing a helpful spirit of 
cooperation on the part of existing governmental agen- 
cies, the Patent Office Society was represented at the con- 
vention on Wednesday, December 11, 1918, by three of 
its members, W. F. Avery and T. L. Mead of the Execu- 
tive Committee, and W. J. Wesseler of the Journal. This 
delegation first visited the Washington headquarters of 
the Congress and was most cordially received and as- 
sured it would be welcome at the convention. This prom- 
ise was more than fulfilled when the members of the dele- 
gation were admitted to the meetings at the Emerson and 
Southern Hotels in Baltimore. They appreciated the 
kindly feelings expressed toward the Patent Office by 
members of the Congress and the interest manifested in 
the improvement of the patent system. 

Eesolutions similar to those presented at the Atlantic 
City War Emergency and Reconstruction Conference 
were introduced for the consideration of the Congress 
or its proper committees. 

Among those addressing the Convention on Wednes- 
day were Senators Hoke Smith and E. D. Smith, Repre- 
sentatives Padgett and Heflin, John Barrett of tiie Pan- 
American Union, and John Hays Hammond. 



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Journal op the Patent Office Society. 213 

UR. EWINO'S SPEEGH AT THE ATLAimC GITY 
CONFERENCE. 



The Chairman introduced Mr. Ewing in the following 
language : Gentlemen, we are all more or less interested 
in patents, and it is well worth while to hear from head- 
quarters, from the headquarters of the Patent Oflfice ma- 
chinery; and while I do not know just how the subject 
will be treated today, I have pleasure in introducing to 
you a man who has had a large experience as Commis- 
sioner of the Patent Office, and will be personally greatly 
interested, and know you will, in his presentation of the 
subject from the inside. My knowledge of the subject 
has been acquired from the outside, and I have no doubt 
that is the experience of nearly all of you. We will have 
the pleasure of hearing from Mr. Thomas Ewing, for- 
merly Commissioner of Patents under the administration 
of President Wilson during his first term. (Applause.) 

Mr. Ewing responded as follows : Gentlemen, I believe 
that one result of this war is going to be that there must 
be new methods of business introduced, and that the com- 
petition for business all over the world will be keener 
than it has ever been. 

All great manufacturing establishments are keenly in- 
terested in original and novel developments in their par- 
ticular lines. I happen to know that the General Electric 
Company, as one of its activities, maintains a large and 
superbly kept laboratory of research, and the expenses 
which are incurred for it are not treated as strictly com- 
mercial, but are expected, in a large way, to pay for 
themselves many times over. I have no connection with 
the General Electric Company in any capacity. I once 
sold some patents to another great company, the Bell 
Telephone Company, with which also I have no connec- 
tion. They paid half a million dollars for them, and be- 
fore they had a single dollar, of return, they had spent 
one mUlion dollars more in determining the exact condi- 
tions of the economical use of the invention. But there 
has never been a time since they acquired it, when it could 
have been bought back from them for ten times what they 
paid for it. I think it is true of all great enterprises, 
that if they are not handled in a broad way, — I do not 



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214 Journal op the Patent Office Society. 

care how large the company may be, or how large its 
business may be — dry rot will set in, competitors with 
new ideas will enter the field, and they will find the 
ground cut from under them before they know it. There- 
fore, all great concerns are interested in original devel- 
opment, and that means that they are interested in pat- 
ents, or should be; and it also means that it should be a 
regularly recognized line of development which must be 
liberally treated, both in acquisition of inventions from 
the outside and in developments within the company. 

' I know that everybody who has anything to do with 
the patent system complains about it, and there is rea- 
son for complaint, but the complexity of the questions, 
and the vast field which the patent system covers, makes 
it impossible that all of the troubles should be either re- 
moved or immediately mitigated. 

There is one factor in our patent system which every- 
body should be interested in and should try to help, with- 
out any regard whatsoever to one 's general opinion about 
what the patent system should be, or what it is worth; 
and that factor is the Patent Ofiice. 

We could have a system of registration of patents such 
as we did have down to 1836, and such as a number of 
countries have today, but in 1836 this Government intro- 
duced the system of granting patents on examination, — 
examination not only of the form of the papers, but of 
the invention, as. to its novelty ; and from that period on, 
the Patent Office has been an important and constantly 
growing factor in our system. 

The theory of the Patent Office is that patents will be 
granted only when they ought to be granted, and that 
the claims that are allowed will be only such as ought to be 
allowed ; and in view of the fact that there are more than 
four hundred men engaged constantly in the examination 
of applications, the courts give great weight to what the 
Patent Office concludes. They are frequently saying, 
*^Why, there is a finding. by the Patent Office; here is 
something which the experts of the Patent Office have 
held to be novel, over the other patents which are being 
presented to us", and the courts will therefore, reject 
arguments for holding a patent invalid, or for limiting it. 
They rely upon what the Patent Office has decided, and 
seek to give effect to its conclusions. With such an atti- 



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Journal of the Patent Office Society. 215 

inde, which is perfectly proper in view of the theory of 
the Patent OflSce, it is the worst sort of business to have 
A Patent OflSce that is insuflSciently provided with men 
and facilities for making proper examinations. It be- 
comes dangerous, because weight is given to patents 
which is not deserved, not that the Patent Office is not in- 
dustrious, and not because its esprit de corps is not high, 
for the examiners are both industrious and of hi^h char- 
acter, but because the Office is inadequately supplied with 
means and with men to. make proper searches, and their 
conclusions are therefore, in many cases erroneous. 

I would like to impress upon you today that it is of the 
utmost importance to all of you, no matter whether you 
aTe interested in patenting inventions or are interested 
in going into new fields which are being developed by 
other people where you may have to meet hostile pat- 
ents, — it is to your interest, and it is to the interest of 
every inventor as well of course, — that the Office be effi- 
ciently and adequately provided with the means neces- 
sary to perform its great labor. 

I was in the Patent Office for four years as Commis- 
sioner, and previous to that thirty years ago as an assist- 
ant examiner; and I have practiced before it. I have left 
the Office, and therefore I have no personal interest in 
what may be done for it, or any personal pride of posi- 
tion in it ; but it is perfectly apparent to me, that the pro- 
visions for the Office are inadequate. And it became ap- 
parent to me whUe I was Commissioner, that the Office 
through the ordinary channels is not able to influence 
Congress to give it proper facilities. Only influence from 
the outside — I mean, of course, influence that is entirely 
proper and legitimate, of people who are interesccd in 
having the thing done right, — can bring eflfective pres- 
sure to bear upon Congress. Only in that way will the 
Office get what it needs. 

Let me give you an illustration of the difficulty. The last 
year I was there I made a recommendation to Congress, 
asking for an increase in the force which would have 
cost one hundred thousand dollars a year. I had studied 
the Office diligently for the three preceding years, and I 
presented the* reasons for the need as strongly as I pos- 
sibly could. At the end of the deliberations there was 
not one cent allowed for the things that I asked for. Sub- 



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216 Journal of the Patent Office Society. 

sequently we entered the war, and many people who had 
applications in the OflSce, which were not being reached 
for action because we were behind, were writing, asking 
to have their cases made special. I could not make one 
man's case special without being guilty of unfair treat- 
ment to the others whose cases were awaiting action, and 
I adopted the method of writing to each one who asked 
to have his case made special that I was unable to do so, 
because the facilities and means provided in the OflSce for 
acting upon the applications were insufl&cient, and that 
my appeal to Congress to increase these means, which I 
had based particularly upon the probability that we were 
going into a war, and a dangerous situation might arise, 
had been entirely fruitless. Some of the letters which "I 
wrote — and I wrote many — came back to the Congress- 
men, and the Congressmen went to the appropriation 
committee, and the committee finally sent for me and said 
that they would hear me over again; and, after a great 
deal of effort I succeeded in getting an increase of about 
forty thousand dollars where I had asked for one hun- 
dred thousand. 

What the Patent OflSce needs is not forty thousand dol- 
lars, or one hundred thousand dollars, but about one mil- 
lion dollars ; and it is utterly impossible for the OflSce to 
get any such increase of appropriation, unless some large 
influence is brought to bear to make Congress look into 
the matter and see what the situation really is. 

Six hundred thousand dollars a year more than is now 
spent ought to be spent in increasing the examination 
corps and the clerical force, — increasing the personnel. 
Three hundred thousand dollars more ought to be spent 
in increasing salaries. The salaries are ridiculously low. 
The primary examiners, of whom there are forty-five, 
have the authority to pass out patents, sometimes of enor- 
mous value. If one of these primary examiners signs a 
file wrapper, the patent goes out automatically. It is 
true that the Commissioner must sign it, but as he has to 
sign about seven or eight hundred a week, it is entirely 
impossible for him to examine them ; and therefore, these 
forty-five men have it in their power to pass out patents 
which may be worth millions of dollars. Men who are do- 
ing work of that sort should be properly paid. The pri- 
mary eaminers who have that authority receive twenty- 



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JOUBNAL OF THB PaTBNT OpFIOB SoOIBTT. 217 

seven hundred dollars a year. A very large percentage 
of them are men of college education or techincal school 
education. Most of them have gone through a law school ; 
they are highly educated men; they are, I am happy to 
say, men of character. It is one of the greatest reasons 
for pride that we may all have that the Patent Oflfice, the 
repository of seccrets of great value, immense value, is 
practically above suspicion as to improper dealing. (Ap- 
plause.) In the four years that I was there as Commis- 
sioner, my door was open to anybody who chose to come 
in and complain. I never refused to see a man who called 
upon me the whole time I was there. I saw everyone 
alone. I have never had a man come to me and say there 
had been any improper dealings in the Office. (Ap- 
plause.) I had letters, — a few letters saying that there 
was, and I investigated every instance carefully. I never 
found ground for belief that there was anything of the 
sort, and in the experience which I have had witii the 
Office, running now over thirty years, only two cases have 
ever arisen, so far as I have been able to find, where any 
man was seriously suspected; one man was sent to the 
penitentiary and the other man died just before the ques- 
tion was brought up for decision. No man who had any 
disposition to use the Office improperly could live in the 
atmosphere there. He would be driven out by the other 
members of the corps. Now, men of such character, men 
who are serving in the Office as primary examiners — on 
the average the primary examiners have been in the Of- 
fice for twenty-five years — devoting all their lives to that 
work, ought to be paid a salary which will enable them 
to bring up their families with the same educational ad- 
vantages that they had themselves; that their place de- 
mands of them. Yet this is not possible under present 
conditions. 

And what is true of the primary examiners is also true 
of the first assistant examiners, and the second assistant 
examiners. The lower grades of assistant examiners are 
not so important. Young fellows come in and stay a few 
years, go through the law sohoal, learn the ropes, and go 
out into practice. The third and fourth assistant exam- 
iners probably get enough, but if a man is willing to stay 
and make that a life work, becoming, as he does, more 
valuable every year, because of his knowledge of the arts 



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218 Journal of the Patent Office Society. 

that he is examining, these men ought to be paid a proper 
salary, not only as a matter of justice, but as a matter of 
wisdom. 

While there are some men of very fine ability in the 
Office, it is true that the work suffers seriously because of 
low salaries. And yet, if you go to Congress, as I went 
year after year, and ask for an increase of salaries for 
the primary examiners, and for the assistants, you will 
meet with this statement: **You are simply trying to 
get more money for a lot of men who are there now'\ 
Well, I was not. I was trying to build up a great office, 
or help to. It is a great office now, but I was trying to 
improve it, but that is the spirit that Congress displayed. 
They treated it exactly as if it were any clerks'hip that 
was under discussion; and the Office cannot get by it, 
but men like you can; if you will give the matter suffi- 
cient thought, and make up your minds that it is right, 
and bring influence to bear upon Congress, the matter 
can be rectified. 

The equipment is also insufficient. For example, there 
is a library of technical books, and technical literature. 
You gentlemen all know that the technical literature of 
the world is very large, and constantly increasing. Con- 
gress allows three thousand dollars a year for the Pat- 
ent Office to keep up with all the technical literature of all 
the arts. It ought to be fifty thousand dollars, and it 
ought to be whatever is necessary beyond that ; and yet 
it was absolutely impossible for me to get one dollar be- 
yond the three thousand dollars a year while I was there. 
There was a separate set of German patents, two hun- 
dred thousand in number, which we wanted bound up, 
classified according to German classification, so that 
searches might be made through them by the public who 
are interested. Instead of making a list of all the pat- 
ents that dealt with electrical matters, for example, and 
then going through twenty-one hundred volumes to get 
at them, we wanted to have four or five volumes with all 
electrical patents in them, and so with the other arts. It 
tok me three years to get an appropriation of twenty 
thousand dollars to bind them, and during that whole 
time they were tied in bundles, because we did not dare 
open the bundles for fear numbers would be lost. 



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Journal op the Patent Oppiob Society. 219 

There is another matter of great importance. These 
young men and these older men, the examiners, instead 
of being obliged to get knowledge from books only, ought 
to be able to go out aad see what the manufacturers are 
doing in their establishments. They ought to learn the 
arts as they are actually practiced, so that their judg- 
ment would be sound. I sent out as many as I could ; I 
would have sent all of them out from time to time to 
make investigations if I had been permitted to do so. I 
could have raised a fund of fifty thousand dollars easily 
by voluntary subscription from concerns that had appli- 
cations pending, but sending the young men out by the 
use of funds raised in that way would have put the Office 
Tinder obligations, and it would have placed tiie assistants 
in positions where they might be open to suspicion and 
criticism because they had a pleasant trip to Chicago, 
or St. Louis, or elsewhere; and Mr. Lane, I think prop- 
erly, said he would not permit it. But there was a fund 
which I used for that purpose. It was five hundred dol- 
lars. (Laughter.) There are now four hundred and 
nineteen in the corps; this sum was about $1.25 apiece 
for these m6n. (Laughter.) I tried my best to get Mr. 
Lane to agree to ask Congress for thirty thousand dol- 
lars for tliat purpose, and he said it was absolutely use- 
less ; he would not do it ; he knew it would not be granted. 
But an appropriation like that, properly presented to 
their Congressmen, by people who know the importance 
of it, might easily be accomplished. 

I wish to speak, also, of the position of the Office in the 
governmental system. The Patent Office is a bureau of 
the Interior Department. When I went into office I did 
not know Secretary Lane. He sent for me shortly before 
I was appointed and I then met him for the first time, I 
formed an intimate friendship with him, our relations 
were most cordial, and I regard him as a great man, and 
yet, in spite of that, I am obliged to say, after a four 
years' experience as Commissioner that the Office gains 
nothing by being a bureau of the Interior Department, 
and that it is seriously handicapped by the connection. 
It ought to be an independent office, answerable to no- 
body but the President and Congress, just as the Agri- 
cultural bureau was before the present Department of 
Agriculture was created. The reason is that it is one of 



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220 Journal, of the Patent Office Society. 

eight different bureaus, unrelated, the work in one not 
similar to the work in another, the needs of one not simi- 
lar to the needs of another. But, if an attempt is made 
to increase the salaries in the Patent Office, or to increase 
the personnel, immediately the question arises, **What 
about the Land Office? Won't the Commissioner of Pen- 
sions want salaries raised?". Thus a comparison is made 
between the Patent Office and its needs and the needs or 
demands of other offices having no relation to it what- 
soever. That comparison the Secretary could not fail to 
make, no matter how well he might understand the condi- 
tions in the offices, because he would arouse jealousy. 
And if he made up his mind that one office needs better 
salaries than the others, because it is engaged in a high- 
er class of work, and were to pass that recommendation 
on to Congress, the Congress itself would make the very 
same comparison, and he would not get anywhere. 

If the Office were an independent bureau it could fight 
its own battles without any such disadvantageous com- 
parisons, and I believe that if that change were made and 
gentlemen such as you are would interest yourselves, and 
get your local bureaus and your legal departments to in- 
terest themselves, in any way you may see fit, in the 
needs of the Office, we might get the necessary assistance 
from Congress, and we could build the, Office up to the 
point where it was in fact, as it should be, the most su- 
perb patent office in the world — and that its judgments 
would be far more certain and trustworthy. I think 
such action would save every year, in the relief of busi- 
ness from the uncertainty of wrongly-granted patents, 
millions of dollars over all that it would cost. 

It is constantly said, when the subject of increased ap- 
propriations for the Patent Office is raised, that the Of- 
fice pays its own way. In the last five years it has turned 
back into the Treasury about one million dollars over the 
entire appropriation for it, and the building which it oc- 
cupies was largely built out of surplus which had accumu- 
lated in the treasury from Patent Office fees. But there 
is no reason why public money should be wasted, no mat- 
ter where it is drawn from, and the income of the Office 
is not the measure of its needs, nor of the service it ren- 
ders to the public. If the Office must be kept self-sustain- 
ing, it is an easy matter to increase the fees for patents, 



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JOXJRNAIi OF THE PaTENT OfFICE SoCIBTY. 221 

and I think that the business interests of the country 
would stand it. I do not think that is important. The 
important thing is that the needs of the Office should be 
intelligently studied by Congress, and when ascertained 
they should be provided for, without any regard to wheth- 
er tiie Office costs one million dollars over what it receives 
in fees or not. 

As I have said, the Office is absolutely unable to help 
itself. Anybody who as Commissioner starts in to get 
something for the Office is immediately accused of trying 
' to get something for himself. But intelligent bodies, and 
influential bodies such as this, can influence and should 
influence Congress. Here is a field of constructive work, 
where the result will be to the interest and advantage of 
all of us. I trust that you will make it a matter of serious 
thought and conerted action. I thank you very much for 
the opportunity to bring the subject to your attention. 
(Great applause.) 



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222 JoUBNALr OF THE PaTBNT OfFICB SoOIBTY. 

INDEX OF OERHAN PATENTS. 



The Scientific Library announces that it has completed 
a translation of the 1914 Alphabetical Index to the classi- 
fication of all German patents. 

The various inventions, identified by title, or subject- 
matter as indicated elsewhere than in the title, are ar- 
ranged alphabetically and are indexed to the class or 
classes of the new German classification where inven- 
tions of the same character are found. 

This index contains over 75,000 items. A typewritten 
copy is now available in the Library, but it is expected to 
print a considerable edition for public distribution in the 
near future. In view of the fact that the German patents 
are now accessible in bound volumes arranged according 
to the German classification, the index is particularly 
valuable. 

[The appearance of the translation of the Alphabeti- 
cal Index to the classification of German patents offers a 
suitable opportunity of suggesting the establishment of a 
similar index in connection with United States patents* 
On account of the fact that the German classification is 
not subject to so many changes as ours, it is feasible to 
issue the index in book form. If a similar project were 
undertaken in connection with our classification, on ac- 
count of the many changes continually taking place, a 
card index would probably be the only feasible scheme. 
This index could be developed by each assistant exam- 
iner for his owTi class. Obviously, such an index would 
not be perfect, but would be of vast assistance to search- 
ers familiar only with trade names and practical appli- 
cations of inventions. If such an index is advisable for 
German patents, it would seem to be even more necessary 
for our far greater number of patents and classes. The 
scheme proposed by Mr. Teller in his letter elsewhere in 
this number is along the same lines as the German Index; 
but his proposed index being confined to trade names, 
lacks in completeness what an index covering all patents 
and classes would possess. — Editob.] 



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JOUBNAL OF THE PaTBNT OfFICE SoCIBTY. 223 

LETTERS ON CLASSIFICATION OF PATENTS. 



To the Editor: 

Mr. Thurber, in his most excellent article on the classi- 
fication system in your November issue, makes a state- 
ment which is worthy of the most careful attention. He 
says that there are searches *'to which the Office system 
cloes not adapt itself no matter how familiar one may be 
with it. The search sometimes does not depend upon 
the particular structure employed but rather upon the 
question whether a certain thing has been accomplished 
in some particular industrial art, quite apart from the 
type of structure that might be employed in carrying it 
into effect. '' In my opinion this is the usual, rather than 
the exceptional, case involving patentability; and it is 
precisely this fact that makes the present system, by it- 
self, so often unsatisfactory to attorneys who insist upon 
considering the fundamental or ultimate function of an 
invention rather than merely the superficial or incidental 
•details. 

Occasionally it is apparent from the outset that an in- 
vention is entirely specific or structural in character; 
that is, that it is limited to features whose functions are 
direct and obvious. But usually the invention appears 
to be primarily functional in character; that is, the in- 
ventor has conceived a new or supposedly new result to 
be accomplished in some particular practical or industrial 
art and has thereupon devised a specific device or mech- 
anism for accomplishing the result. If the inventor is an 
intelligent and thoughtful man, he realizes that his par- 
ticular details of structure are probably of little import- 
ance as many other different structures can be devised 
for the same purpose. He is therefore primarily inter- 
ested in devices of whatever type for accomplishing the 
same result that he accomplishes, and only secondarily 
interested in the particular mechanism which he himself 
has thought of. 

An attorney in making; a patentability search in con- 
nection with such an invention directs his attention pri- 
marily to the result to be accomplished in the given art 
and he endeavors to learn what devices or mechanisms 



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224 JouBNAL OF THE Patent Office Socibty. 

have been heretofore proposed for accomplishing this 
result. The conception that he has in mind is not limited 
to any definite structure, and in fact it is the purpose of 
the search to ascertain definite structures. He is working 
away from the indefinite toward the definite. The classi- 
fication system should be such that the searcher can start 
with a vague or indefinite functional conception and con- 
clude with a list of the patented devices or mechanisms of 
whatever character for performing the given function. 
In some cases the present system meets this requirement, 
but in the majority of cases it does not. It may be found 
as the search proceeds that the fundamental function is 
not new, as had been supposed, and that the novelty, if 
any, resides in the particular structure, which may ap- 
pear to have certain specific advantages ; and in this case 
it may be desirable to continue the search among struc- 
turally similar mechanisms in other arts. But whether 
the function turns out to be new or not, the attorney 
should be able to readily collect all of the pertinent ma- 
terial, including both functionally similar mechanisms in 
the same art and structuraly similar mechanisms in other 
arts, so that he may know exactly where the invention 
stands and thus be able to draw proper claims. Frequent- 
ly, the inventor, having been advised that the function or 
result is not new as he had supposed, and having further 
discovered that other proposed devices are just as good 
as his, would conclude that his supposed invention was 
not worth while and would drop it, thus avoiding expense 
to himself and relieving the Patent OflSce of the burden 
of handling an application for a trivial improvement. 

The situation is similar in the case of a manufacturer 
who desires to collect the art relating to the line of 
his manufacture. He is not particularly interested in 
gathering together a lot of patents out of a variety of 
arts, but he does want to see just what the various inven- 
tors of the country have devised for the same specific pur- 
pose as the goods which he himself manufactures. From 
the expired patents he can expect to get suggestions 
which will assist him in improving his own product, and 
it is essential for him to know of the unexpired patents 
in order that he may avoid infringement. For instance, 
if a manufacturer is interested in gland packings for 



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Journal of the Patent Office Society. 225 

steam engines, hydraulic pumps, etc., it should be pos- 
sible for him to readily obtain a list of all patents cover- 
ing articles of this kind. But under the present system 
gland packings are classified in a number of different 
places according to the material used, according to the 
arrangement of the material — for example, whether 
twisted or braided, according to whether the packing is 
or is not impregnated with some compound, etc. The 
only way for a searcher to completely collect an art such 
as this one is for him to know in advance all of the dif- 
ferent kinds of the article or machine for which he is to 
search. If there is some kind which he unfortunately 
does not know about in advance, the probability is that 
he will not find it. 

A Patent Office examiner in making a patentability 
search is confronted with a condition exactly opposite to 
those described; and the same is true of an attorney in 
making a validity search or even in making a patentabil- 
ity search for an obviously structural invention. The ex- 
aminer or the attorney is provided with a complete dis- 
closure and a specific definition of a certain detailed struc- 
ture and his problem is to find structures as closely simi- 
lar as possible, frequently without much regard to the 
ultimate or fundamental function. 

A classification system along the lines of the present 
one is unquestionably necessary for making such searches 
by an examiner or an attorney, but it should not be the 
only system. Existing by itself, as it now does, it makes 
it doubly easy for both the attorney and the examiner to 
follow the path of least resistance and consider only the 
actual construction and its immediate function and to dis- 
regard the real functional or industrial improvement 
which the inventor had in mind. By way of example, 
suppose an inventor has devised a printing press control 
system, whereby electrical devices are used to start, stop, 
reverse and otherwise control a printing press in an en- 
tirely new manner. The attomejr^s natural tendency, 
fostered by the present classification system, is to con- 
sider only the immediate or proximate function of the 
mechanism and therefore to treat the invention as one in 
electric control systems only. • Searching in the electrical 
classes, he may find that as an electric control system it 



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226 JoURNALr OF THE PaTENT OfFIOB SoC5IBTY. 

is not particularly new and may thus conclude that the 
invention is unimportant, entirely overlooking the fact 
that as an improvement in prmting presses the invention 
is broad and basic. However, if the attorney is fully ap- 
preciative of the possible scope of the invention, from the 
standpoint of the fundamental functional improvement 
in printing presses, he will attempt to make a broader 
search, only to find, perhaps, that printing press control 
systems are variously located according to whether the 
control is effected electrically or mechanically or pneu- 
matically or hydraulically or in some other way. He will 
find nothing in the classification system to enable him to 
readily collect all printing press control systems. The 
examiner finds himself similarly handicapped when the 
application is filed, and if broad claims are presented 
without electrical limitations, he has no assistance from 
the classification system in determining the necessary 
field of search. The system is seriously defective in that 
it presumes the searcher to have quite specific and de- 
tailed knowledge of what he is looking for. Failing in 
this, the searcher is practically helpless. 

The classification system should be such that both the 
attorney and the examiner can consider an invention 
from two standpoints ; that is, they should be able to read- 
ily ascertain, first, whether the ultimate or fundamental 
function is new, and, second, whether the structure and 
immediate function are new. Very few inventions can be 
properly handled without full knowledge on both of these 
points. 

While an art classification is ideally desirable, it would 
undoubtedly present many practical diflSculties. One of 
the most troublesome difficulties that suggests itself is 
that of the disposition of the innumerable patents in 
which the inventors, either expressly or impliedly, dis- 
claim any limitation to a particular art. What would be 
done with a patent for a valve which the inventor says 
may be used for an internal combustion engine or for a 
hydraulic pump or for a petroleum pipe line system? 
These difficulties could probably be overcome, but the 
making of a second complete classification would be a 
laborious and expensive undertaking which could not be 
completed for years. 



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JOUBNAL OF THE PaTENT OpFIOE SoCIETY. 227 

By way of compromise, I venture to suggest that care- 
ful consideration be given to the question as to whether 
or not the imperative need for an art classification might 
not be largely or entirely met bj^ a proper and thorough- 
going index of the present classification. 

An index such as contemplated should contain the com- 
mon colloquial or trade or shop names of all devices or 
machines for which patents have been issued. Under 
each name there should be a list of the classes and sub- 
classes containing pertinent patents. In the case of ar- 
ticles or machines having definite well- recognized parts, 
each of these parts should be listed under the main ma- 
chine heading with proper references to the classes and 
subclasses where those parts may be found. In the case 
of the classification of a few patents covering a particu- 
lar type of machine with a large number of other patents 
covering other types of machines, the patents covering 
the machine in question should be specifically listed by 
number so that the searcher would not have to go over a 
large subclass to pick out the three or four patents that 
might be pertinent. An index of this sort would tell a 
searcher that some magazine mechanisms for metal work- 
ing machines are classified under Conveyors ; that some 
gas engine manifolds are classified under Water Distri- 
bution ; that some automatic stop mechanisms for phono- 
graphs are classified under Machine Elements ; that some 
oarpet-stretchers are classified under Pushing and Pull- 
ing Implements; that some com planters are classified 
under Dispensing. The present index in the back of the 
Manual of Classification is of but little assistance as in 
many cases it does not use the usual trade or shop terms, 
and as it does not purport to furnish a complete list of 
the classes where a given article may be found. 

With an index of this character, a person interested in 
automobiles, or in some of the component parts thereof, 
would have available a list reading in part somewhat as 
crudely indicated below. I do not mean by this outline 
to suggest specifically what any of the details of the in- 
dex should be, my only thought being to illustrate the 
basic principle in a most general way. (The class and 
subclass numbers are obviously fictitious.) 



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228 Journal of the Patent Office Socibtt. 

Classes. Subclasses. 

Automobile 310- All 

Air Cooling System — See Cooling System. 

Body 310 6-11 

449 18,19*24 

Door 310 11 

449 24 

390 40-45 

Change-Speed Mechanism — See Trans- 
mission System. 

Chassis 310 1-5 

Axle 310 5 

867 1-14 

319 38 

Pats. 1,846,897 
1,491.679 
1,498,994 
Clutch — See Transmission System. 

Cooling Sy«tem 310 20-29 

411 40-51 

Air 310 21-23 

411 41-46 

Water 310 24-29 

411 46-51 

Pump 411 51 

401 33-63 

Radiator 411 50 

399 10.12,14 

Cushion Tire — See Tire. 
Dirigible Headlight— See Headlight. 
Door — See Body. 
Electric Lighting System — See Lighting 

System. 
Electric Motor — See Motor. 
Electric Starter — See Starter. 

Pender 389 31-36 

Qas Lighting System — ^See Lighting Sys- 
tem. 
Gasolene Engine — See Motor. ) 
Gear Change-Speed Mechanism — See 
Transmission System, Ohange-Speed 
Mechanism. 
Hand Warmer 399 6 

Headlights 310 60,61 

487 19,40-47 

Dirigible 310 61 

487 44-47 

301 17-28 

Horns 377 16-24 

379 1-10 



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JouBNAL OF THB Patbnt Office Sooiety. 229 

Siidi an indexy in conjunction with the present classifi- 
eatum eystem, would enable both attorneys and examin- 
ers as well as the public at large to make searches from 
two -differing points of view, thus making it possible to 
oolleet everything that is pertinent in connection with a 
giv^i subject whether the pertinency arises from ^*arf 
or nltimate functional similarity or from structural or 
proximate functional similarity. In this way the classifi- 
cation system would enable the Patent Office to more ef- 
fectively '^promote the progress of Science and Useful 
Arts^'- 

Very respectfully, 

S. Jay TEUL.EB. 
November 30th, 1918. 
Ill Broadway, New York. 



To the Editor: 

Having had an opportunity to read the manuscript of 
Mr. Teller's able discussion on classification, I take the 
liberty of offering a few comments in regard to the trade 
index which he suggests. 

Such an index would be of great value and might be 
used at times as an excellent substitute for dual classifi- 
cation. In many instances, however, it is believed ^e re- 
sults of such substitution would be far from satisfactory. 

For illustration, when the class of ** Paper Making '^ 
was reclassified the mills for grinding up wood pulp were 
transferred to the class of *' Mills *\ ** Mills'' not having 
been reclassified, no attempt was made to arrange these 
machines with those used for other purposes but having 
structural resemblances. At present, therefore, this 
group is intact and it is a simple matter to refer those in- 
terested in paper-making machinery to the subclass of 
' ' Mills, Wood and Bark, ' ' in the class of ' ' Mills ' '. How- 
ever, when the class of ''Mills" is reclassified, this group 
may be scattered through the entire class so that even if 
every patent were indexed it would take considerable 
time to run them down. 

Also, in connection with the class of '''Paper Making", 
attention might be called to a group of machines known 
as "Save-alls", devices for extracting fibers from the 



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230 Journal of the Patent Office Society. 

waste water (jf paper-making machines. Save-alls were- 
transferred to the class of ** Water Purij&cation^', but 
unlike pulp mills were classified on a structural basis in 
various subclasses. Therefore, if one would find all the 
save-alls one must search the entire class or rely on an 
index of individual patents, if such an index were in ex- 
istence. 

An index of the individual patents which have been 
transferred out of some of the larger classes would be 
almost appalling, indeed in some instances it would ap- 
pear as though an attempt had been made to find a dif- 
ferent class or subclass for each patent thus transferred. 
It is thought, therefore, that only in those instances 
where certain groups are transferred bodily out of indus- 
trial art classes is it feasible to rely on an index. 

However, it is not intended by these remarks to op- 
pose the preparation of a trade index, but only to point 
out wherein it would be insuiScient as a substitute for 
classification. The index is needed and should be as com- 
plete as poss'ible, covering all the technical and popular 
terms by which things are known. These terms, it is sug- 
gested, should be arranged in the usual alphabetical or- 
der and the field of search for each should be indicated as 
far as possible. Of course, until reclassification has 
reached a more settled condition, continued revision of 
the in^ex would be necessary. Nevertheless the need is 
so great that it is thought the matter should be taken up 
as soon as it is possible to obtain people to do the work. 

Respectfully, 

W. L. Thurbee. 



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JOCTRNAL OF THE PaTENT OfFICE SOCIETY. 231 

RULES 30 TO 36 INGLUSIVE. 



By C. H. Lane, Examiner. 



(Delivered before the fourth assistant examiners.) 



RULE 30. 

Applications for letters patent of the United States must be 
made to the Commissioner of Patents, and must be signed by 
the inventor, or by one of the persons indicated in Rule 25. 
(See Rules 26, 33, 40, 46.) A complete application comprises 
the (first fee of |15, a petition, specification, and oath; and 
drawings, when required. (See Rule 49.) The petition, speci- 
tficatlon and oath must be in the English language. All papers 
which are to become a part of the permanent records of the 
ofl^ce must be legibly written or printed in permanent ink. 

Section 4888 R. S. requires the inventor to make appli- 
cation for his invention in writing, to the Commissioner 
of Patents. 

Signatures and Parties. 

Section 4888 R. S. also requires that the specification 
an(3 claims shall be signed by the inventor, and section 
4889 requires that the drawings shall be signed by the in- 
ventor or his attorney in fact. If the inventor has no at- 
torney, he signs the drawings himself. If he has an at- 
torney, he may still sign the drawings, or his name may 
be aflSxed to the drawings by the attorney, who adds his 
own signature, designating himself as attorney. If the 
drawing is signed by the inventor in person, the attorney 
should not write his name below that of the inventor, 
{Ex parte McDonald, C. D., 1902, pg. 408) and if the 
drawing is signed by one attorney, a new attorney should 
not erase the attorney's signature and substitute his own. 
(Order 480, 43 O. G., 1119.) The signature of the inven- 
tor or his attorney must in all cases be in his own charac- 
teristic handwriting. A fac simile signature made with 
type or a rubber stamp will not serve, but if it is made on 
a drawing the one whose name is thus printed may rem- 
edy the defect by tracing the printed or stamped signa- 
ture in ink. {Ex parte Krause, C. D., 1891, pg. 164.) 

If the inventor is alive and sane no other person can 
under ordinary circumstances sign the application pa- 
pers for him. (Kennedy v. Hazelton, C. D., 1889, pg. 349.) 



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232 Journal of the Patent Office Society. 

Papers executed by the attorney in fact can not be treat- 
ed as forming any part of a lawful application. {In re 
Tropenas, C. D., 1900, pg. 14.) This is true even if such 
action is authorized by a power of attorney. {Ex parte 
Sassin, C. D., 1906, pg. 205.) Since September, 1915, 
however, application papers executed and filed by attor- 
neys for inventors have been accepted, where on account 
of the war, it was impossible to comply with the statutory 
requirements, and the time of filing was about to expire 
under the International Convention reported in 205 0. G., 
1022. (Commissioner's Report for 1916, 236 0. G., 710.) 
Partially remedial legislation was provided bv the act 
of Aug. 17, 1916, 229 0. G., 1257, (See also ex parte Fer- 
oci, C. D., 1916, pg. 51) granting an extension of nine 
months beyond the period limited by the law, in which to 
file any application, pay any oflScial fee, or take any re- 
quired action. The privileges of this act were limited to 
citizens of those nations which granted reciprocal rights 
to citizens of the United States, and only to those citizens 
who were unable on account of the existing and continued 
state of war to take proper action. Commissioner Ewing 
held that citizens of the United States also were entitled 
to the benefits of the act of August, 1916. {Ex parte Rie- 
der, 243 0. G., 1309.) This act has expired. 

Citizens of enemy nations and their allies may still file 
and prosecute applications, and tlie privileges of the act 
of Aug. 17, 1916, are in effect extended to them by the 
Trading with the Enemy x\ct. Sec. 10(a), 243 0. G., 1070. 
Citizens of the nations allied with the United States are 
not thus favored by legislation. (Commissioner's Report 
for 1917, 249 0. G., 244.) They may still proceed as per- 
mitted by the Commissioner in his report for 1916. 

No patent can be granted on an application executed 
by the attorney for the applicant, until duplicate papers 
executed and signed by the inventor shall have been filed. 
(Sec. 4888, R.S.) 

An application requesting the grant of a patent to joint 
inventors, executed by only one of them, will not be ac- 
cepted as complete {In re Crane, C. D., 1903, pg. 322), 
and an application executed by two applicants as joint 
inventors cannot be changed to an application by one of 
them as sole inventor {Ex parte Erne and fridges, C. D. 
1897, pg. 197) ; also an application alleging that one party 



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Journal of the Patent Office Society. 233 

is the sole inventor and asking that a patent be granted to 
him cannot be changed to a joint application even though 
signed by two parties, if there is nothing except the sig- 
natures to show that they are joint inventors. {Ex parte 
Gordon, C. D., 1904, pg. 20.) 

The decisions just cited do not forbid corrections by a 
new oath where the only mistake consists in the accidental 
use of the word ^*sole" for '* joint'', or vice versa, in the 
original oath. 

If the statements in the different parts of the applica- 
tion and the signatures thereto are so contradictory or 
confusing that it is impossible to tell whether the inven- 
tion is joint or sole, the inconsistency can be cured only 
by a new application. (Ex parte Henze, C. D., 1900, pg. 
44.) 

When the inventor dies or becomes insane before mak- 
ing application for a patent the right of applying for and 
obtaining the patent devolves on his executor or admin- 
istrator in the one case, and on his legally appointed 
guardian, conservator, or representative in the other. 
(Section 4896, E. S.) An application filed by the widow 
or heir usually has no standing unless such party files the 
application as executor or in some other capacity per- 
mitted by the statute. In some countries, however, the 
law empowers the widow to administer the estate of her 
deceased husband without the order of a court (See ex 
parte Niedenfuhr, C. D., 1907, pg. 257.) In such a case 
she can make the application as the widow of the inven- 
tor and the patent will issue to her as such. The proofs 
that the person applying for a patent is the authorized 
legal representative of the deceased or insane inventor 
are not transmitted to the examiner, but are forwarded 
to the Assignment Division of the Patent OflSoe for rec- 
ord, and the examiner should not pass the case to issue 
unless the chief of the Assignment Division reports that 
the authority of such legal representative is suflBicient 
(Order No. 1838, Jan. 13, 1910, 151 0. G., 453.) 

When an application is made in behalf of a deceased or 
insane inventor the applicant should indicate in the pa- 
pers in what capacity he is making the application, and 
tor whom ; the petition should make reference to the ac- 
companying papers authorizing him to act for tiie de- 
ceased inventor; and he should sign his own name to the 



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234 Journal op the Patent Office Socjiety. 

various papers, adding the words ** administrator (or 
whatever the appropriate title my be) for** (naming the 
inventor). For convenience in indexing, the application 
will be made up and the patent will issue in the name of 
the deceased or insane inventor, followed by the name 
and proper designation of the person making the appli- 
cation. 

English Language. 

Rule 30 requires that the petition, specification, and 
oath shall be in the English language. This is not a stat- 
utory requirement, but Assistant Commissioner Greeley 
held that an application in the German language should 
be stricken from the files, although it was accompanied 
by a translation. {Ex parte Gentzsch, 62 M. S. Dec, 
Oct, 1897 ; Hart's Digest, pg. 33.) In this particular case 
the ribbon required by Rule 47 had been cut. 

Permanent Ink. 

The requirement that the papers shall be in perma- 
nent ink is not a statutory one, but decisions to the effect 
that papers filed in violation of this rule will be refused 
admission, have not been publicly overruled. There are 
standard tests used by the executive departments that 
examiners may apply. In all cases where carbon copies 
or papers written in pencil reach the examiner he shall 
require the applicant to furnish permanent copies. It 
has even been held that carbon copies do not entitle the 
applicant to a filing date. Anilin inks have also been 
condemned. {Ex parte Bitter, C. D., 1891, pg. 242; ex 
parte Webster, C. D., 1902, pg. 456; Order No. 37, May 
27, 1902 ; ex parte Blaubach, C. D., 1898, pg. 193 ; ex parte 
Gilmore, Jr., and Clark, C. D., 1916, pg. 34.) 

RULE 31. 

An applioation for a patent will not be placed upon the files 
for examination until all its parts as required by iRule 30 shaU 
have been received. 

'Every application signed or sworn to in blank, or without 
actual inspection by the applicant of the petition and specifica- 
tion, and every application altered or partly filled up after be- 
ing signed or sworn to, will ibe stricken from the files. 

Completed applications are numbered in regular order, the 
present series having been commenced on the 1st of January, 
1915. 

The applicant will be informed of the serial number of his 
amplication. 



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JOUBNAL OF THE PaTBNT OmCB SOCIBTY. 235 

The application must be completed and prepared for exami- 
nation within one year, as indicated above, and in default 
thereof, or upon failure of the applicant to prosecute the same 
within one year after any action thereon (Unle 77), of which 
notice shall have been duly mailed to him or his agent, the 
application will be regarded as a^bandoned, unless it shall be 
shown to the satisfaction of the Commissioner that euch delay 
was unavoidable. (See Rules 171 and 172.) 

When an Application is Ready for Exami/rMtion. 

An application has been held incomplete where a wrong 
specification had been filed with the petition and oath, 
both of which referred to the ^'annexed specification''. 
{Ex parte Page, C. D., 1901, pg. 156.) An application is 
also not complete if there is inconsistency in the state- 
ments as to who is the inventor. {Ex parte Henze, C. 
D., 1900, pg. 44.) An application claiming a process will 
be entered as complete without drawings, although the 
examiner may subsequently find them necessary or desir- 
able to show the means for carrying the procees into prac- 
tice. {Ex parte Russell, C. D., 1898, pg. 208; ex parte 
Schmidmer, C. D., 1905, pg. 74.) 

Applications have been held incomplete and a filing date 
refused when portions of the drawings referred to in the 
specifications were not received. {Ex parte Ehrendreich, 
C. D., 1904, pg. 75 ; ex parte Michaelis, C. D., 1906, pg. 
123.) In the latter case the Commissioner also decided 
that if the applicant is of the opinion that the omitted 
figures do not involve a substantial departure from the 
disclosure in the original copies, he may file a petition 
for the original filing date, accompanied by the omitted 
figures. 

Just how much is required by statute to place an appli- 
cation in condition for examination depends upon the 
meaning of the words ^*such application" in section 4893 
R. S. The determination of this matter rests primarily 
upon the chief of the Application Room, but if by over- 
sight he should forward to the examiner an application 
not ready for examination, the examiner should return 
the application to him. {Ex parte Becker, C. D., 1901, 
pg. 198.) 

What constitutes a complete application will first be 
considered from that point of view most favorable to the 
applicant. 



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236 JOUBNAL. OF THE PaTBNT OfPICB SoCIETY. 

Certainly no application is ready for examination with- 
out a specification, because there can be no examination 
in the absence of a disclosure of the invention. Besides 
this, payment of the fee in advance of examination is re- 
quired under section 4893 R. S., and this section also re- 
quires the filing of an ** application '\ It is thus clear 
that before a case can be forwarded there must be at 
least an ** application *^ a fee and a specification. What 
is meant by the *' application^' may be made clearer by 
reference to section 4888 R. S., which requires the inven- 
tor to make application for a patent, in writing, to the 
Commissioner of Patents ; and to section 892 E. S., which 
in very similar language provides that any person mak- 
ing application for copies of records, books, papers, etc, 
shall have certified copies thereof. It may be, therefore, 
that the ** application'' required by section 4893 R. S. is 
a mere request for a patent, made in writing, to the Com- 
missioner of Patents. Also, in ex parte Livingston, C. 
D., 1881, middle paragraph of pg. 47, the Commissioner 
gave this meaning to the word as it is used in section 
4897 R. S. A specification may, perhaps, even be for- 
warded for examination without a formal petition or re- 
quest, provided the filing of the specification and other 
papers accompanying it can be fairly construed as a re- 
quest for a patent. 

Of course aU the requirements of section 4888 to 4893 
R. S., regarding the oath, drawing, etc., must be met be- 
fore a patent is granted, but we are at present consider- 
ing only the prerequisites to an examination. 

Section 4892 R. S. does not say when the oath shall be 
filed (Dukesmith v. Corrington v. Turner, C. D., 1906, pg. 
426), and section 4889 R. S. does not say when the draw- 
ing shall be filed, but an application is incomplete without 
a drawing if the invention cannot be disclosed without it, 
or if the specification refers to it and is dependent upon 
the drawing for its meaning. {Ex parte Russell, C. D., 
1898, pg. 208.) 

In Marconi v. Shoemaker, C. D., 1907, pg. 392^ it was 
held that an applicant was entitled to his original filing 
date, although the drawings were signed by substitute 
attorneys who had not full power, the informality having 
been cured by subsequent ratification by the persons dele- 
gating the power. 



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JOUKNAL OF THE PaTENT OfFICE SOCIETY. 237 

Having considered the prerequisites of a complete ap- 
plication from the most liberal point of view, the other 
and stricter view will now be considered. This is that the 
words ''such application" of section 4893 R. S. have for 
their antecedent the complete application described in 
sections 4888 to 4892 R, S., so that at least all the require- 
ments of the statute as to the form of the petition, speci- 
fication, claims, drawing and oath must be met before the 
application is ready to be forwarded for examination. In 
view of the ambiguity of the statute, however, there 
seems to be room for the exercise of discretion by the 
Commissioner as to how much more or less than is re- 
quired by the statute (as prerequisite to the grant of a 
patent) he shall insist upon before allowing the case to 
be forwarded. 

In 1910 it was ruled that applications would not be 
given serial numbers and forwarded to the examiners un- 
less the petition, specification and claims, and drawings, 
had been properly signed, and unless the requirements 
of sections 4887 and 4892 R. S., the latter relating to the 
oath, were fulfilled. (Commissioner's Order, 155, 0. G., 
311, June 11, 1910.) All these requirements except that 
relating to the petition are statutory. In harmony with 
this order it has been held that an application is incom- 
plete if the specificatipn is not signed by the inventor 
(iJx parte Gilmore, Jr., and Clark, C. D., 1916, pg. 34), 
if the drawing is not properly signed by the inventor or 
his attorney in fact {Ex parte Amdt, C. D., 1900, pg. 
167), or if an unsigned tintype is filed instead of a draw- 
ing. (Palmer and Thompson v. Bailey, C. D., 1898, pg. 
66.) It has also been held that an application is incom- 
plete if the oath is administered by an officer who is also 
an attorney in the case. (Riegger v. Beierl, C. D., 1910, 
pg. 12.) This ruling is based on section 558 of the Code 
of Law of the District of Columbia, which applies to all 
attorneys, and not alone to those in the District of Colum- 
bia. (Hall's Safe Co. v. Herring, C. D., 1908, pg. 473.) 

The Commissioner, in the exercise of his discretion, 
has sometimes refused to forward applications to be ex- 
amined where important provisions of the Rules have 
been ignored, although such provisions are not expressly 
authorized by the statute. Where an oath was taken in a 
foreign co.untry without the ribbon and seal required by 



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238 Journal, of the Patent Office SociBTy. 

Rule 47, it was directed that the papers be returned. 
{In re Hosking, C. D., 1900, pg. 70.) In ex parte Brand, 
C. D., 1898, pg. 12, the applicant was refused the benefit 
of his filing date because the applicant's residence was 
not stated in the petition, specification or oath. This de- 
cision was later overruled. {Ex parte Becker, C. D., 1901, 
pg. 198.) 

In general it may be said that the Office is disposed to 
give the inventor the benefit gf the doubt when the suffi- 
ciency of an application is in question, in order to secure 
for him the earliest possible filing date. On the other 
hand, no careful inventor or attorney will needlessly jeo- 
pardize the inventor's interests through failure to com- 
ply in advance with all statutory and published Office re- 
quirements, since an application may be accepted for ex- 
amination and yet be held incomplete at a later and more 
critical time. (Palmer and Thompson v. Bailey, supra.) 

As to the practice when fatally defective applications 
are forwarded to the examiner : — if the defect is .due to 
omission, through oversight, to comply with some essen- 
tial provision of the Rules or statutes, the application 
should be returned to the application clerk; if the appli- 
cation is sufficient in form, but lacking in substance, as in 
the case of failure to disclose the invention, the case 
should be retained by the examiner and rejected on the 
ground that the provisions of section 4888 R. S. are not 
satisfied ; and if the defect is due to apparent fraud, the 
•case should be referred to the Commissioner. 

Papers Executed in Blank. 

An exception to the rule that such papers will be strick- 
en from the files is found in ex parte Shaver, C. D., 1907, 
pg. 428, in which it was held that an inventor who assigns 
his invention is estopped from afterward denying the va- 
lidity of the executed papers. 

Alteration or Substitution of Papers. 

This rule is not intended to prevent an attorney from 
making formal or immaterial changes in an application 
once sworn to, but precludes the insertion of new and ma- 
terial matter. (Lindstrom v. Ames, C. D., 1911, pg. 384.) 

The question of striking an application from the files 
because of alleged alteration therein after it has been 



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JoURNALr OF THE PaTENT OfFICB SoCIETY. 239 

sworn to is not a matter for the action of the primary 
examiner, but is exclusively within the jurisdiction of the 
Commissioner. (Hopkins v. Scott, C. D., 1903, pg. 261.) 

Where an application as filed appears to have been 
changed after having been executed, and the applicant 
makes no showing in reply to an order to show^ cause why 
it should not be stricken from the files, it will be stricken 
from the files under the provisions of Rule 31. {Ex parte 
Kupper, C. D., 1898, pg. 5.) 

An application wnll be stricken from the files if an 
omitted page of the specification is substitute<l by the at- 
torney before filing the application {Ex parte Raetzell, 
62 M. S. Dec, Oct., 1897), or, in case of an application ex- 
ecuted in a foreign country, if the ribbon secured by the 
seal is cut, and no explanation given {Ex parte Becker, 
M. S. Dec, June 28, 1898) , or if the sheets of the specifi- 
cation are removed from the ribbon, and another specifi- 
cation substituted {Ex parte Altmann, C. D., 1897, pg. 
52), or if a surreptitious alteration is made in the draw- 
ing after filing the application {Ex parte Merrill, 53 M. 
S. Dec, Nov., 1893), but it has been held that the mere 
inking of a drawing, after the application is sworn to, is 
not such an alteration as will warrant striking the appli- 
cation from the files. (Hopkins v. Scott, C. D., 1903, pg. 
261.) 

Whether an alteration is made by the attorney with 
the inventor's consent or not is immaterial. (Moore, 
Commissioner, v, Heany and the Heany Co., C. D., 1909, 
pg. 488.) 

Restoration of an application to its original condition 
can not be permitted after it has been mutilated and 
changed by fraudulent and deceptive intention. {In re 
Charges by Examiner A. F. Kinnan and Others, C. D., 
1911, pg. 139.) 

In Commissioner's Order No. 1455, July 26, 1904, it 
was directed that no erasures or any note, interlineation 
or other mark in pencil or otherwise except by formal 
amendment duly signed, shall be made in the body or 
written portions of the specification, or any other paper 
filed in an application for a patent. It is believed that 
this does not prohibit the making of examiners' notes in 
pencil on the margins of the pages, but examiners' notes 
should be erased before passing a case to issue. 

No change shall be made by any person in any record 



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240 JOUBNAL OP THE PaTBNT OpFICB SoCIBTY. 

of this office without the written approval of the Com- 
missioner of Patents (Order No. 1455), but the following 
corrections may be made in the drawing (by the Office 
draftsman upon request of the examiner without writing 
to the attorney and without filing a print: — 

A few reference characters may be added. 

The ordinals of figures may be changed. 

Names of inventors may be changed if written by at- 
torney. 

Section lines and their numerals may be changed. 

Time for Completing Applications. 

This paragraph of the Eule is based on section 4894 B. 
S., which requires that *^all applications for patents shall 
be completed within one year after the filing of the appli- 
cation ' % etc. It has been held that the words * * filing of the 
application'* in this section do not mean the filing of the 
completed application, but only the depositing of the ap- 
plication referred to in section 4893 R. S., which may or 
may not be accompanied by the fee. {Ex parte Fenno, C. 
D., 1890, pg. 138.) Further treatment of this subject 
properly belongs to the discussion of Rule 171. 

RULE 32. 

It is desirable that aU parts of the complete application be 
deposited in the office at the same time, and that all the papers 
embraced in the application be attached together; otherwise a 
letter must accompany each part, accurately and clearly con- 
necting it with the other parts of the application. (See Rule 
10.) 

Failure to deposit all the parts of an application in the 
Office at the same time or to properly identify parts filed 
after the filing of the first papers, has sometimes led to 
the placing of papers in other applications than those for 
which they were intended. It is important that this rule 
be strictly observed by those having business with the 
Office. 

RULE 33. 

The petition must >be addressed to the Commissioner of Pat- 
ents, and must state the name, residence, and post-office ad- 
dress of the petitioner requesting the grant of a patent, desig- 
nate by title the invention sought to be patented, contain a 
reference to the specification for a full disclosure of such inyen- 
tion, and must be signed by the inyentor or one of the persons 
indicated in (Rule 25. 



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JOUBNAL OF THE PaTBNT OfFICB SoOIBTY. 241 

As before stated, section 4888 E. S. requires the inven- 
tor to make an application for a patent to the Commis- 
sioner of Patents. Proper compliance with this sec- 
tion necessarily results in something in the nature of the 
petition described in Rule 33. 

The nature of the title is set forth in section 4884 E. S. 
It must be short and it must correctly indicate the nature 
and design of the invention. Within these limits it is the 
privilege of the inventor to choose the title, but it is for 
the examiner to determine whether the title satisfies the 
requirements of section 4884 E. S. {Ex parte Nikola, C- 
D., 1891, pg: 215 ; ex parte Mackintosh, C. D., 1911, pg. 
13.) If the title is not satisfactory objection should be 
made, but the examiner should not arbitrarily select the 
title. (Ex parte Becker, C. D., 1893, pg. 95.) 

Any part of the petition (by which is meant the peti- 
tion proper, and not the power of attorney) may be 
amended except the signature and the post-office address. 
Correction of the post-office address may be made by fil- 
ing a new petition, or by filing a letter signed by the ap- 
plicant in person and giving his actual post-office ad- 
dress. (Order No. 1994, July 11, 1912.) The object of 
having the post-office address is to enable the Patent Of- 
fice to communicate directly with the applicant; there- 
fore objection should be made to a post-office address 
which is identical with that of the attorney for the appli- 
cant, or of a disbarred attorney; or in care of either such 
attorney. (See Notice, 225 0. G., 375.) 

The petition does not itself disclose the invention and 
is therefore incomplete unless it refers to some paper 
(the specification) which does disclose it. {Ex parte Ma- 
son, C. D., 1888, pg. 33; ex parte Buddington, C. D., 1898, 
pg. 184.) In the latter case it was held that the particu- 
lar form of expression is immaterial and if the petition 
is not filed at the same time as the specification some 
other words may be used instead of **the accompanying 
specification '\ 

EULE 34. 

The specification is a, written description of the invention or 
discovery and ol the manner and process of making, construct- 
ing, compounding, and using the same, and is required to be 
in such full, clear, concise, and exact terms as to enable any 
person skilled in the art or science to which the invention or 
discovery appertains, or with which it is most nearly connected, 
to make, construct, compound, and use the same. 



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242 Journal, of the Patent Ofpicjs Society. 

It is one of the most important duties of an examiner 
to insist upon a strict compliance with the provisions of 
the statute, that the specification shall contain a full, 
clear, concise and exact description of the invention, and 
where the meaning of certain terms is obscure or ambigu- 
ous, the applicant shold be required to amend so as to 
remove that objection. {Ex parte Gould, C. D., 1876, pg. 
164.) 

Some of the decisions cited below seem to set up a low- 
er standard than that declared by the Commissioner in 
ex parte Gould, but it should be remembered that m near- 
ly every one of those cases the patent had been already 
granted, and the one thing to be considered by thlB court 
was the validity of the patent. An application pending 
before an examiner stands on a different footing. Objec- 
tionable matters may be cured by amendment and much 
litigation such as others have had to undergo in order to 
sustain their patents may perhaps be avoided. More- 
over, the application will probably become a publication, 
upon which the examiner must rely in the future as indi- 
cating in part the state of the art. For this purpose it is 
necessary that even those parts of the description which 
do not affect the claims should be clear and complete or 
eliminated altogether. A good examiner will endeavor 
to avoid vexatious and unnecessary requirements, but he, 
as well as the specification writer, will endeavor tb see 
that the requirements of <he statute are carefully ob- 
served. {Ex parte Cornell, C. D., 1872, pg. 120.) 

Necessary FuUness of Description. 

If the specification has to be supplemented by experi- 
ment and inventive skill, a patent based upon it is void. 
(Tyler v. Boston, 7 Wall., 327; The Tannage Patent Co. 
V. Zahn, C. D., 1895, pg. 367.) 

In determining whether as a document a patent is a suf- 
ficient description, the law implies a certain degree of in- 
telligence in the reader, and, if there is some indefinite- 
ness or ambiguity in the language, that he should read it 
in the light of his knowledge of the prior art. That the 
reader of the patent might be required to try more than 
once to get the result would not bring him within the doc- 
trine of those cases which hold a patent insufficient where. 



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/ 

JoUBNALr OF THE PaTENT OfFICB SoCIBTY. 243 

in addition to the information contained in the patent, 
extensive experiments are essential to success. (Malig- 
nani v. Jasper Marsh Consol. Electric Lamp Co., 180 F. 
R., 442.) 

It is not essential to the validity of a patent to insert 
in the drawings and specification a description of every 
detail. It is sufficient if the description is such as to en- 
able a mechanic skilled in the art to construct the device 
patented. (Am. Delinter Co. v. Construction Co., 128 F. 
R., 709.) 

A party should not be permitted to refer to another ap- 
plication for a disclosure of an invention or of a feature. 
Each application must be complete within itself, and the 
reference to the other case is permissible only in connec- 
tion with a statement sufficient in itself distinguishing 
between what is old and what is new in the matter dis- 
closed. {Ex parte Kellogg, C. D., 1906, pg. 84.) 

Where a clear understanding of the mode of operation 
of the invention claimed in a divisional application can- 
not be had without a knowledge of an attaichment to be 
used with it, the attachment should be shown and de- 
scribed in the application, and it is not sufficient to refer 
to another (parent) pending application for a disclosure 
of it, said (parent) pending application not being a part 
of the known art and not certain to become a patent. 
(Ex parte Scott, C. D., 1901, pg. 59.) 

A statement in the specification which simply makes 
reference to the fact that a co-pending application shows 
a complete system of the kind with which the present in- 
vention would* be used is not objectionable. {Ex parte 
Williams, C. D., 1912, pg. 288.) 

Note. See matter in this paper entitled ^*The Specifi- 
cation Must Distinguish", etc., under Rule 36, for the 
case of a reference in the specification to a prior patent 
for the disclosure of a machine on which the present ap- 
plication is an improvement 

Where the result specified will not be produced by fol- 
lowing the description the latter is insumcient.( Wolff v. 
DuPont de Nemours Co., 122 F. R., 944.) 

If the description does not point out how the parts are 
to be constructed, severally or in relation to each other, 
so that a desired result may be attained, a mere descrip- 
tion of the result is not sufficient. (Burrell v. Rumsey, 
C. D., 1878, pg. 170.) 



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244 JouBNAi* OF THE Patent Office Sooibty, 



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Doiibtful and ambiguous specifications can be aided 
and made plain by drawings; but the latter cannot sup- 
ply an entire absence of description of essential parts of 
the invention. (Gunn v. Savage, 30 F. E., 366.) 

In an application for a process the inventor must de- 
scribe some particular mode, or some particular appara- 
tus, by which the process can be applied with at least 
some beneficial result. (Tilghman v. Proctor, C. D., 1881, 
pg. 163.) 

The important thing is the method, not the particular 
means by which the method shall be practiced. If from 
the information found in the patent, those skilled in the 
art could execute the process by hand, or if enough is 
disclosed to indicate to them a mechanism, the specifica- 
tion is suflScient, even if no complete mechanism is point- 
ed out. (Expanded Metal Co. et al.^ v, Bradford et al., 
C. D., 1909, pg. 521.) 

When the specification of a new composition of matter 
gives only the names of the substances without stating 
any relative proportions, so that no one could use the' in- 
vention without first ascertaining the proportions by ex- 
periment, the patent is void. The same rule prevails 
where the proportions are stated ambiguously or vaguely. 
(Wood V. Underbill, 15 How., 1, 5; Tyler v. Boston, 7 
Wall., 327.) 

Where the novelty of an invention consists in the di- 
mensions or the material of the new thing devised, the 
patentee must specify the particular dimensions or the 
particular material his invention contemplates. (Bullock 
Electric Mfg. Co. v. General Electric Co., 149 F. R., 409), 
but in general it is not necessary to state exact dimen- 
sions and shape, even of essential elements. (Hallock et 
al. V. Davison et al., 107 F. R., 482.) 

A patent for a process is not void for failure to specify 
the proportion of materials if the proportion is not es- 
sential (Walnut Growers' Assoc, v. Mfg. Co., 166 F. R., 
443), but where the successful operation of a device de- 
pends upon the proportion of parts, the specification is 
insufficient if it fails to specify the proportion. (Steward 
V. Lava Co., C. D., 1909, pg. 557.) 

Where the maximum and minimum limits of quantity 
or degree are given in the specification it is sufficent if 
the result described is attained bv the use of the mate- 



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Journal of the Patent Off!icb Society. 245 

rials indiscriminately as to quantity or degree within 
such limits (Ajax Metal Co. v. Brass Co., 155 F. b., 409), 
but if the limits specified are so wide apart as to be mis- 
leading and impracticable the patent is void. (Eisen- 
stein V. Fibiger, 160 F. R., 686.) 

Clearness. 

If there is any doubt as to the propriety of using a par- 
ticular term to indicate a part, operation or condition 
which is susceptible of being expressed in clearer and less 
objectionable language, the latter should be employed. 
{Ex parte Gould, C. D., 1876, pg. 164.) 

A specification which fails in any material respect to 
make the invention fully known and accessible to the pub- 
lic is fataUy defective. (The Tannage Patent Co. v. Zahn, 
CD., 1895, pg. 367.) 

An applicant will not be permitted to use words in his 
specification that are likely to create an ambiguity in the 
strict construction of his claims. {Ex parte Petzold, C. 
D., 1892, pg. 39; in re Dilg, C. D., 1905, pg. 620.) 

If the use of a proper name to designate an invention is 
permitted in the sjpecification, it is only when the inven- 
tion referred to has become known in the prior art by the 
name of the inventor or maker. {Ex parte Forbes, 4 M. 
S. Dec, Oct, 1889, 1 G. W. D.) 

Conciseness — Proliodtiy, 

Statements that the applicant does not regard his in- 
vention as limited to the exact details of construction are 
not superfluous if the claims are not so limited. {Ex 
parte Jansson, C. D., 1906, pg. 62.) They are neverthe- 
less wholly unnecessary. (Crown Cork and Seal Co. v. 
Bottle Sealing Co., 217 F. E., 893.) 

The applicant should not be required to cancel state- 
ments when such cancellation may result in a more limit- 
ed construction of the claim than is necessary. {Ex parte 
Jansson, supra,) 

Mere statements of well known principles of law are 
objectionable. (Id.) 

Discussion of the theoretical result to be attained, while 
proper for advertising circulars, is not proper matter in 
a specification. A specification should be confined to a 



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246 JouRNAXr OF THE Patent Office Society. 

description of the structure of the device and the man- 
ner of its use. {Ex parte Wellington, C. D., 1904, pg. 
564.) 

Numerous examples illustrating the ingredients and 
proportions \Vhich may be used are unnecessary and ren- 
der the specification prolix. {Ex parte Blakeman, C. D., 
1902, pg. 25.) 

Unfavorable comments were made bj^ the court on pro- 
lixity in the specification in Victor Talking Machine Co. v. 
Hawthorne, C. D., 1910, pg. 435. 

In ex parte Krause, Mar. 25, 1915, the then Assistant 
Commissioner held that thirteen lines setting forth the. 
difficulties to be overcome and why the invention was 
made, legitimately pertained to the applicant's descrip- 
tion of his invention and did not take up so much of the 
specification as to render it objectionable. (The api>li- 
cation has now become Patent No. 1,198,039.) 

Accuracy. 

Accurate description is required: 1. That the Gov- 
ernment may know what is granted and what will become 
public property. 2. That licensed persons may know 
how to make, construct, and use the invention. 3. That 
other in\tentors may know what part of the field is unoc- 
cupied. (Bates V. Coe, 98 U. S., 31.) 

Absolute precision in the details is not required in the 
specification. It is sufficient if a mechanic skilled in the 
art, can from the specification and drawings, construct 
and use the invention described. (Dorsey Harvester 
Bake Co. v. Marsh, 6 Fish., 387.) 

Sufficiency of the Specification Judged by its Intelligi' 
hility to Those Skilled in the Art. 

The words ** skilled in the arf include careful work- 
men who are skillful in the particular line of business' in 
which they are engaged. The law does not warrant a 
construction of these words which includes only persons 
of high scientific attainments. (Pupin v. Hutin and La- 
blanc f. Stare, C. D., 1902, pg. 269.) 

If the character of a new substance is so complex and 
intricate that even- thing to be found in it can not be told, 
the description is sufficient if it sets forth an exact mode 



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Journal op the Patent Office Society. 247 

of production that will not produce anything else, and if 
those who are able to produce it and those who use it 
have no diflBculty in knowing or using it. ( Anilin v. Hig- 
gin, C. D., 1878, pg. 335.) 

A description was held suflBcient without disclosing the 
character of celluloid sheets employed, when there was 
only one kind of celluloid sheets at the date of the patent 
which could be used for the purpose, and the mechanic 
had no need of more definite instructions. (Celluloid 
Mfg. Co. V. Am. Zylonite Co., C. D., 1887, pg. 519.) 

Where only the case and a few minor features of one 
of the elements of a combination were shown in the draw- 
ing, and the specification merely stated that it was a *^ reg- 
istering accountant", expert testimony was admitted to 
show that ** registering accountants" were well known in 
the art and that only one machine was known by that 
name, and the disclosure was held to be sufficient. (Hop- 
kins V. Newman, C. D., 1908, pg. 395.) 

RULE 35. 

The specification must set forth the precise Invention for 
which a patent is solicited . and explain the principle thereof , 
and the best mode in which the applicant has contemplated ap- 
plying that principle, in such manner as to distinguish it from 
other inventions. 

The Specification Must Set Forth the Precise Invention 
For Which a Patent is Solicited. 

In describing the invention itself, each of the essential 
parts must be clearly and exactly delineated, and the re- 
lation of each to the others definitely portrayed. (Rob- 
inson on Patents, Vol. II, Sec. 484.) 

Where the invention consists entirely in a new combi- 
nation of old elements or devices whereby a new and use- 
ful result is obtained, such combination is suflSciently de- 
scribed if the elements or devices of which it is composed 
are all named, and their mode of operation given, and the 
new and useful result to be accomplished pointed out, so 
that those skilled in the art and the public my know the 
extent and nature of the claims, and what the parts are. 
(Bates V. Coe, 98 U. S., 31.) 



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248 JouBNAii OP THB Patbnt Oppiob Society. 

The Specification Must Explain the Principle of the 
Invention. 

This provision cannot mean that the inventor must in- 
fallibly explain the law of nature which makes his ma^ 
chine work; for, if it means that, neither Morse nor Bell 
complied with it when describing the telegraph or the 
telephone. The provision means that the essential dis- 
tinctive characteristic of the machine shall be explained, 
(Walker on Patents, Section 115.) 

In Section 4888 R. S. the requirement that the specifica- 
tion must explain the principle is limited to machines. 
The purpose of the requirement is to distinguish the new 
invention from other inventions. (Sec. 4888 R. S. ; Union 
Sugar R.efinery Co. v. Mathiessen, 2 Fisher, 600.) In An- 
drews V. Carman (C. D., 1876, pg. 373), where it was held 
that the claim might be construed as covering either a 
process or a manufacture, the term ** principle *' was 
treated as the mere unembodied idea or conception of the 
invention. 

It is sufficient if any person, by using the invention as 
directed in the specification, will put such new principle 
into practice, although the specification does not state 
what such new principle is. (Andrews v. Cross, C. D., 
1881, pg. 281.) 

Where a patentee has invented and described a success- 
fully operating machine, which accomplishes the results 
sought, it is immaterial whether or not his attempted de- 
scription of the principles by which such results were at- 
tained is correct. (Nat'l Meter Co. v. Thomson Meter 
Co., 106 F. R., 531.) 

When a patent contains a sufficient disclosure of the 
claimed invention, it will not be invalidated either by the 
failure of the patentee to state the causes which produce 
the operation or by a mistaken statement as to the rea- 
sons therefor. (Hemolin Co. v. Harway Dyewood & Ex- 
tract Co., 138 F. R., 54.) 

There must be no concealment of any power, or princi- 
ples or fixtures, within the knowledge of the patentee, by 
which the machine could be worked more perfectiy. (Page 
V. Terry, 1 Fisher, 298.) 

In Union Sugar Refining Co. v. Matthiessen the court, 
after recognizing the duty of the inventor to explain the 
principle of the machine in order to distinguish it from 



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JoUBNALr OF THB PaTBNT OfFIOB SoOIBTY. 249 

other inventions, afterward instructed the jury to look at 
the mode of operation or the way the parts work, and at 
the result as well as the means by which the result is at- 
tained. It would thus seem that the principle of a ma- 
chine may be deduced from a study of these phases of the 
invention. As to the mode of operation, they (the jury) 
were to inquire about and consider more particularly 
those portions of a given part or element which really do 
the work, so a^ not to attach too much importance to the 
other portions of the same part, which are only used as 
a convenient method of constructing the entire part or 
device. 

In Andrews v. Cross it was held that the scientific prin- 
ciple, which is *^only the why and the wherefore '^ may 
be omitted by accident or design without vitiating the 
patent. It may be omitted because the inventor does not 
know what it is. Substantially the same ruling was made 
in St, Louis Stamping Co. v, Quinby, C. D., 1879, pg. 502. 

The theory of the operation of a patented invention 
need not be stated in the specification. (Eames v. An- 
drews, C. D., 1887, pg. 378.) 

A patent need not describe in full all the beneficial func- 
tions to be performed by the parts of the machine if those 
functions are eWdent (McCormick Harvester Co. v. 
Aultman & Co., C. D., 1895, pg. 754.) 

The description is sufficient if the patent clearly de- 
scribes the construction of the invention, although the 
philosophical principles which cause the improved re- 
sult are not disclosed. (Dixon, Woods & Co. v. Pfeifer, 
C. D., 1893, pg. 411.) 

Statements setting forth the purpose and function of 
the construction claimed are not objectionable and should 
be distinguished from laudatory statements inserted for 
advertising purposes. {Ex parte Schoshusen, C. D., 1905, 
pg. 214.) 

The Specification Must Explain the Best Mode In Which 

the Applicant Has Contemplated Applying 

The Principle of the Invention. 

This provision cannot mean that every inventor must 
infallibly judge which of several forms of his machine 
will eventually be found to work the best, for if it means 



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250 JOUBNAL OF THE PaTENT OfFICB SoCIBTY. 

that, it requires what is often impossible. The provision 
means that the inventor shall state the mode which he 
contemplates to be the best. (Walker on Patents, Section 
115.) 

To conceal the best mode for the benefit of the inven- 
tor and his licensee avoids the patent. (Dyson v. Dan- 
forth, 4 Fish., 133.) 

This rule is closely related to Section 4920 E. S., which 
permits the defendant in an action for infringement to 
plead that for the purpose of deceiving the public the 
specification and description filed by the patentee was 
made to contain less than the whole truth relative to his 
invention or discovery, or more than is necessary to pro- 
duce the desired effect. 

If the patentee describes as essential a condition which 
will defeat the successful performance of the process, or 
omits an essential condition not implied by familiar 
knowledge of the art, this should not be overlooked in 
determining the suflSciency of the specification and the 
validity of the patent. (Malignani v. Jasper Marsh Con- 
sol. Electric Lamp Co., 180 F. R., 442.) 

If the inventor has named all the essential conditions 
he should not be prejudiced because of error in also nam- 
ing non-essential conditions. (Id.) 

Where the inventor believed that he had invented a 
new process, and, in order to emphasize the novelty of 
the process so as to avoid rejection on an old process in 
which the use of phosphorus was essential, did not men- 
tion phosphorus in his specification or claims, the patent 
was held valid, although phosphorus was admittedly 
more suitable for the purpose than the materials he did 
mention. In this case the presumption of fraud was neg- 
atived by public disclosures made by the patentee at 
about the same time as the taking out of the patent, de- 
scribing the process, including the use of phosphorus. 
(Id.) 

RULE 36. 

In case of a mere improTement, the 8l>eclfioation must par- 
ticularly point out the parts to which the Improvement relates, 
and must 'by explicit lanisruage di0tinguish between what is old 
and what I0 claimed as new; and the description and the draw- 
ings, as well as the claims, should be confined to the specific 
improvement and sudi parts as necessarily cooperate with it. 



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Journal of the Patent Office Society. 251 

Applicants should not be required to ** acknowledge *' 
the subject-matter shown to be old by the references^ nor, 
indeed to acknowledge anything else. If the examiner is 
of the opinion that the specification does not particularly 
point out the parts to wMch the improvement relates, or ii 
it does not by explicit language distinguish between what 
is old and what is claimed as new he should so inform the 
applicant and require correction. {Ex parte Massicks 
and Crooke, C. D., 1887, pg. 20.) 

Disclaimers in the specification of particular inven- 
tions or the subject-matter of particular patents are not 
required. {Ex parte Firm, C. D., 1887, pg. 27.) If made 
they must be explanatory of the claim and not contradic- 
tory to it. {Ex parte Hobson, C. D., 1872, pg. 20.) 

The Specification Must Distinguish Between What is 
Old and What is Claimed a^ New. Deroga- 
tory and Laudatory Statements. 

Where a patentee, after describing a machine, claims 
as his invention a certain combination of elements, or a 
certain device or part of the machine, this is an implied 
declaration as conclusive, so far as that patent is con- 
cerned, as if it were expressed, that the specific combina- 
tion or thing claimed is the only part which the patentee 
regards as new. (Brown v. G^uild, 6 0. G., 392.) 

The inventor may begin at the point where his inven- 
tion begins, and describe what he has made that is new, 
and what it replaces of the old. That which is common 
and well known is as if it were written out in the patent 
and delineated in the drawings. (Webster Loom Co. v. 
Higgins, C. D., 1882, pg. 285.) 

In the case of an improvement on a patented machine 
it may be sufficient to refer to the patent and specifica- 
tion for a description of the original machine, and then to 
state in what the improvements on such original machine 
consist — ^whereas in the case of an improvement on a ma- 
chine which is not patented it would be necessary to de- 
scribe the original machine and also the improvement. 
(Evans v. Eaton, 3 Wash., 443.) 

Note. See matter in this paper entitled *' Necessary 
Fullness of Description", under Rule 34, for decisions 



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252 JouBNAii OF THH^ Patbnt Offiob Socibty. 

concerning a reference in the specification to another 
pending application for further disclosure. 

An applicant should under no circumstances be allowed 
in his specification tQ make derogatory statements as to 
the inventions of others, but within reasonable limits he 
may in pointing out the ad^^antages of his invention indi- 
cate also what he regards as the defects or deficiencies 
common to structures representing the unimproved art, 
and in making this distinction he may state that his de- 
vice is superior to preceding forms in certain respects. 
{Ex parte Heylman, C. D., 1907, pg. 29.) 

Statements relative to the construction and operation 
of specific prior devices, made with the idea of pointing 
out the purpose and application of applicant's improve- 
ments, and mthout comparisons between those devices 
and applicant's to the disadvantage of the former, are 
not objectionable as being derogatory to the inventions 
of others. (Ex parte Ljungstrom, C. D., 1905, pg. 641.) 

The statement *Hhat the arrangement is an improve- 
ment over that of any prior construction" is obviously 
purely laudatory, and such statements have no place in 
the specification. {Ex parte Grieg, C. D., 1912, pg. 224. 
See also ex parte Blakeman, C. D., 1902, pg. 25.) 

Descriptive matter which sets forth alleged advantages 
of the construction over the prior art in language broad 
enough to apply to a prior patent or patents, as well as 
to applicant's construction, is objectionable and should 
be cancelled. Such statements amount to merely a com- 
parison of two old classes of machines. {Ex parte Ken- 
ney, C. D., 1905, pg. 546.) 



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COURT-YARD OF THE PATENT OFFICE 

(Photographed by T. L. Mead.) ^ , 

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Journal 

OF THE 

Patent Office Society 



-* Published monthly by the Patent Office Society 

Office of Publication 1315 Clifton St., Washington, D. C. 
SabscHption $2.50 a year Single copy 25 cents 

EDITORIAIi BOARD. 

fi]. D. Sewall, Chairman, Publicity Committee. 
G. P. Tucker, Editor-in-Chief. 
J. Boyle. 
A. W. Davidson. 
W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 
1315 Clifton Street, Washington, D. C. Phone Col. 290. 

Entered as second class matter. September 17, 1918, at the post office 

at Washington, D. C, under the act of March 8, 1878. 

Copyright, 1919, by the Patent Office Society. 



^ Publication of signed articles in this journal is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therejin. The editors are glad to have pertinent articles submitted. 

VOL. I. FEBRUARY, 1919. No. 6 

EDITORIAL. 



While awaiting with what patience we could command 
the announcement or appearance from some quarter of 
a formulated plan for the improvement of the patent 
system mentioned before in this department of the Jour- 
kaIj, we were cheered by the news that the Patent Com- 
mittee of the Rational Research Council had made its 
report and that the President of our Society had re- 
ceived a copy. We hope to print this report, or the maj- 
or portions, in our next issue. 

Upon examination the report shows a painstaking re- 
view of the patent situation and a real effort to improve 
the same; it marks a long step forward and the com- 



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I 
254 Journal of the Patent Office Socoety. 

mittee is certainly to be congratulated and commended 
for its labors. 

Naturally a si:sable section of the report deals with 
the needs of the Patent Office and recommendations are 
made for a very considerable numerical increase in the 
examining corps and material increases in salaries; it 
is this section that is of peculiar interest to the active 
membership of the Patent Office Society. 

At the annual meeting, reported elsewhere in these 
columns, the report was referred to the executive com- 
mittee for consideration and as we go to press, various 
sub-committees are discussing the various sections and 
recommendations of the report. It is planned to have 
the Society consider, in committee of the whole, what- 
ever action is recommended by these sub-committees. 

It appears very obvious that the action of the Society 
at this time should, in general, be in consonance with 
the report ; it should not adopt a plan radically different 
from that adopted by the National Research Council. It 
is always a mistake to divide the forces in favor of a 
reform. It is presumed the Council will gladly consider 
suggestions which voice the united opinion of the Com- 
missioner and the Society, especially if no radical change 
is made in the recommendations the committee of the 
Council has made. 

A reform plan unitedly urged by the officials of the 
Patent Office and the National Research Council can not 
faU to receive the support of manufacturers and, with 
the help of the latter, the approval of Congress. The 
Council has pointed the way and begun to move for- 
ward; the Patent Office Society should fall in line with 
promptness and efficient help. 

Attention is invited to the disclosure on another page 
of this issue of the fate of recommendations for an in- 
creased appropriation to improve the situation of clerks 
and draftsmen in the Patent Office. The article is pub- 
lished as interesting news and consists in the main of 
excerpts from the printed record of the hearing before 
the House Committee on Appropriations. 

Editorial comment is withheld pending final disposi- 
tion of the bill by action of Congress. 



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JOUBNAL OF THE PaTBNT OfPICB SodETY. 255 

THE PATENT OFFICE BUILDING. 



The present Patent Office was built in accordance with 
the plan of William Parker Elliot, whose design was ac- 
cepted by Congress July 4, 1836. Work was started on 
the main or south front July 12, 1836, and four years 
were taken to complete this portion of the building. Mr. 
Elliot was a mechanical draughtsman in the first Patent 
Office under the superintendency of Dr. William Thorn- 
ton, resigning in 1829. President Jackson approved the 
plan but directed that the Patent Office be built on one 
side of the reservation laid aside for that purpose in- 
stead of in the central location assigned for it, because 
the President, to use the words of the architect, **did 
not wish to disturb the log cabin of an old squatter on 
the public land.'' **I observed," continued the archi- 
tect, **that the plan covered the whole square, and that 
if his order was carried into effect it would destroy the 
plan. That rather than this should take place, I would 
give the old woman a residence as long as she lived. He 
said his order must be obeyed. The conversation as to 
the consequences of his order became rather angry. I 
left him in that mood, and myself disappointed.^' The 
construction of the building, however, was left to the 
judgment of the Commissioner of Patents and Conunis- 
sioner of Public Buildings, who ordered that it be erect- 
ed in accordance with the original plans. For once An- 
drew Jackson's will did not prevail, to* the great benefit 
of symmetry and utility. 

The main building of the Patent Office was occupied 
in the spring of 1840. Its cost was $422,000 and was 
provided for from the funds earned by the Office. The 
growth of the business was so rapid that on Mar. 3, 
1849 Congress authorized the construction of the east 
wing, the one fronting on Seventh St. It was completed 
and occupied in 1852 and cost $600,000, $250,000 of which 
was taken from the earnings of the Patent Office. 

On Aug. 31, 1852, Congress provided for the erection 
of the west wing, along Ninth St., which was completed 
and occupied in 1856, and cost $750,000. The north, or 



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256 Journal of the Patent Office Sooibty. 

G Street wing, was begun in 1856, and entirely finished 
in 1867, and cost $750,000, thus completing the quad- 
rangle. 

The completed building occupies two city squares, 403 
by 274 feet, with an open court of 264 feet long by about 
106 feet in width. The main or south front is buUt of 
sandstone and is provided for its whole height with a 
semicircular projection extending into the court which 
comprises the housing of a staircase and forms the prin- 
cipal architectural feature of this aspect of the structure. 
The remaining wings are built of granite and are in har- 
monious relation with the original wing. 

The architecture of the building as given by the archi- 
tect himself is related by Robert W. Fenwick, Esq., as 
follows : 

**The order of architecture adopted for the exterior 
was the Grecian Doric of the age of Pericles, when the 
fine arts in Greece, particularly architecture and sculp- 
ture, had reached the highest points of excellence. The 
details are modeled after the celebrated Parthenon, 
erected on the Acropolis at Athens, one of the finest spec- 
imens of Athenian architecture, and which was in 1827- 
*28, in part still standing, although more than 2,000 
years had passed since its erection; and before it, in his 
early manhood, the architect of the Patent Office stood, 
and by it had his genius so kindled into a living flame, 
that he was enabled, on his return to his native land, to 
reproduce some of its most striking parts in his design 
for our noble Patent Office structure. At that date the 
marble of the ancient building had indurated to such a 
degree from its long exposure to atmospheric influences, 
as to resist the action of a chisel. The principal front of 
the Patent Office on F street is graced with a portico of 
sixteen columns, octastyle arrangement, the columns, and 
entablature, and pediment being of the size and propor- 
tion of the Parthenon, each column being 18 feet in cir- 
cumference at the base. ***** The whole build- 
ing is surrounded with bold antae or pilasters let into 
the external walls, which produce nearly as rich an effect 
as the isolated frustum of cone columns, and are much 
stronger and serve also as buttresses to resist the thrust 



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* Journal of the Patent Office Sooibtt. 257 

of the arches. The entablature is continuous and sur- 
rounded by a blocking course, which finishes the super- 
structure. The windows are arranged between pilasters. 
The north front on G street is the same as the south 
front on F street, except that the inner columns of the 
portico are omitted. The east front on Seventh street 
is graced with a portico of six columns which tends to 
break the too great monotony of the extended facade. 
The west front is relieved by a similar portico. This 
portico, owing to the position of the ground on the west, 
rests upon a vaulted terrace from which it is approach- 
ed. The cellar story under this side of the building has, 
owing to the low grade of Ninth street, a greater height. 
A horizontal terrace or pavement surrounds the whole 
structure from the curb line. A handsome ornamental 
railing with gates encloses almost the entire building.^* 

In 1867, at the time the building was being completed, 
one of the Washington papers rose to the occasion in 
these words : 

'*The entire completion of the Patent Office building 
is now near at hand. Yesterday the portico on the North 
front was finished, and now there remains but the granite 
steps on the North front and the pavement on G street 
to be done, and this building, claimed to be the most 
handsome in the world, so far as architectural propor- 
tions are concerned, will be, when completed, a standing 
monument to the architectural talent and mechanical 
ability of the country. *' 

The frontispiece illustrates some of the beautiful and 
monumental details of the structure and the very 'im- 
pressive character of the court sides of the building, 
and gives a graphic indication of its beauty, symmetry 
and imposing architecture. While it is not necessary to 
go so far as to claim the building as the *'most handsome 
in the world," it is generally admitted to be one of the 
best proportioned, monumental and dignified structures 
in the national capital, an ornament to the city and a 
credit to the architect. 

W. I. W. 



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258 Journal of the Patent Office Society. • 
EX PARTE THOMAS. 



By Arthur W. Cowles, Exanuner. 



May not the following perhaps reasonable deduction 
be made from the able papers of Mr. Dodge, Mr. Cox 
and Mr. Glascock, and certain sections of the Patent 
J jaw? 

Apparently the Patent Law intends to give a patent in 
exchange for a patentable addition to the total sum of 
information possessed by the public, and its manipula- 
tive capacity within the art; an addition to the total of 
known things^, and ^ny arrangement of those things 
within the art. The refusal of a patent is apparentiy 
an attempt to protect the public in its possession of such 
information and manipulation; in its knowledge of such 
things and such arrangement. 

Various sections of the statute state the requirements 
for the proper preparation and prosecution of an appli- 
cation. Among these is the requirement of sufficient dis- 
closure of the new information involved, Sec. 48.88; and 
the requirement that an applicant ** shall make oath that 
he does verily believe himself to be the original and first 
inventor" of the matter embodying such information, 
Sec. 4892. 

An apparent deduction from these two requirements 
is that the law intends that u patent shall be given to 
the original and first inventor of the matter concerned 
if he shall properly disclose it to the Office, shall indicate 
by his petition, his intention to disclose it to the public, 
and shall fulfill the other statutory requirements. But 
the' original and first inventor may not show evident in- 
tention to disclose the matter to the public, or may not 
show that intention with the due diligence required un- 
der certain established interpretation of the law. There- 
fore apparently the law intends to give a patent to the 
earliest inventor* who with due diligence discloses the 
invention to the Office in an application for a patent and 
satisfies the other conditions concerned with an applica- 
tion, including a claim to the invention. The lack of 
sufficiently early invention, the lack of due diligence in 



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JouRNAi. OF THE Patbnt Officb Sooibty. 259 

appearing at the Office, or tl^e lack of a claim to the in- 
vention, the lack of presumptive evidence of intention to 
disclose the invention to the public, as by allowing the 
application to become forfeited or abandoned; any one 
of these conditions is sufficient to justify refusal of a 
patent while the condition exists. 

In the case under consideration, an applicant may 
have satisfied the two formal requirements above as to 
sufficient disclosure and as to his oath and all other con- 
ditions precedent to the granting of a patent, including 
the avoidance of published art, excepting that the Office 
may have prima facie unpublished evidence that the 
claiming applicant is not the original and first inventor. 
That evidence may be in a forfeited or abandoned ap- 
plication having an earlier filing date than that of the 
claiming application and disclosing the same or equiv- 
alent matter, or disclosing and also claiming it. But a 
forfeited or abandoned application lacks the presump- 
tion that its applicant intends to inform the public of the 
invention disclosed, or disclosed and claimed. 

There may be, however, a pending application which 
discloses the same or equivalent matter or which both 
discloses and claims such matter. If the matter is both 
disclosed and claimed there is consideration of an inter- 
ference proceeding to determine who is the earlier in- 
ventor, the results of such consideration varying accord- 
ing to the specific interference practice existing at the 
time. 

But the pending application may only disclose the in- 
vention of the claiming application. It is believed that 
under some former interference practice it was the cus- 
tom to suggest to such a disclosing applicant, regardless 
of his filing date, that he claim the disclosed matter if 
he wished to contest its ownership; a practice perhaps 
based on the theory that the disclosing applicant might 
be in fact the original and first inventor of the matter 
he merely disclosed, and might have decided to give the 
information of it to the public without reward; or that 
if he were not the original and first inventor of it, his 
knowledge of it might lead him to give the Office pub- 
lished information of it on which the Office could reject 
the claiming application. Thus the Office believed itself 



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260 JOUBNAL OF THE PaTENT OpFICE SoOIBTY. 

to be fulfilling the duty broadly incumbent on it to use 
all means reasonably at hand to avoid the grant of a 
possibly invalid patent. This practice does not now 
exist. 

(It may be said that the statutory requirement that 
the Commissioner shall institute interference proceed- 
ings when, *4n his opinion," an application ** would in- 
terfere" with another application or with a patent, al- 
lows such breadth of discretion to the Commissioner 
that the interference practice has varied within wide 
limits, all apparently properly bounded by the statute. 
So that perhaps the specific interference practice pre- 
vailing at a particular time ought not to be of much 
weight in determining the legality of any specific form 
of rejection under Rule 75.) 

But if the disclosing application has a filing date ear- 
lier than that of the claiming application the Ofl&ce has 
prima facie, though unpublished, evidence that the claim- 
ing applicant is not the original and first inventor, and 
also prima facie evidence that the disclosing applicant 
intends to give information of the matter concerned to 
the public. But under prevailing practice, if the claim- 
ing application is otherwise in condition for approval 
while the disclosing application is still only pendmg, the 
Office grants a perhaps invalid patent. 

But if th^ disclosing application matures into a pat- 
ent while the claiming application is still pending the 
new information has been given to the public and the 
Office now has prima facie evidence that the claiming' 
applicant is not the original and first inventor, and evi- 
dence in fact that the matter was disclosed to the Office 
at a date earlier than that of the claiming application 
by one who apparently intended to disclose it to the pub- 
lic, though without reward; and that the disclosure to 
the public has actually been made. 

To grant a patent to the claiming applicant would 
therefore be to allow him to demand royalty from one 
who apparently knew of the matter earlier than the 
claiming applicant, who disclosed it to the Office earlier 
than the claiming applicant, and who disclosed it to the 
public earlier than the claiming appliqant. And the dis- 
closing applicant apparently represents the public, in* 



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JOUBKAL OF THE PaTBNT OfFIOB SoCIBTY. 261 

deed is the public, just as fully as would be a hundred 
or a thousand applicants with applications having ear- 
lier filing dates than that of the claiming application, 
and disclosing but not claiming the matter or its equiv- 
alent. 

It is difficult to see what the claiming applicant has to 
give to the public in exchange for the monopoly he de- 
mands. 

Further, why does not the disclosing patentee stand in 
broadly the same relation to the claiming applicant, as 
the winning party to an interference does to a losing 
party in that interference! 

The concerned claims of the losing party to an inter- 
ference are rejected on the claimed embodiment of the 
winning party because the Office has evidence that the 
losing party is not the original and first inventor. And 
this rejection is given although the Office does not cer- 
tainly know that the winning party will give to the pub- 
lic the information furnished by his claimed embodiment, 
because it is possible that the winning party may not 
take out his patent. The Office merely presumes that 
he will because he has apparently prosecuted his appli- 
cation with that object in view. 

In the case at hand the disclosing patentee has in fact 
informed the public at the time the Office considers the 
propriety of rejecting the claiming application on that 
evidence. 

And is there not a still closer likeness between the 
winning party to an interference and a losing party to 
that interference? 

The winning party to an interference obviously has 
the legal right, as against a losing party to that inter- 
ference, to use his own claimed embodiment either in 
its specific form, or modified within the art, or in co- 
operation with anything else known in the art. The los- 
ing party in the interference was allowed* his claim ex 
parte because it patentably avoided the total sum of in- 
formation possessed by the public together with the 
manipulative capacity of that information within the art. 
The losing party is now confronted with that informa- 
tion and its manipulative capacity increased by the in- 
formation furnished by the claimed embodiment of the 



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262 Journal, of the Patent Office Sooibty. 

winning party ; that is, by a new and enlarged total sum 
of information and its manipulative capacity within the 
art ; and must patentably avoid it. Therefore the losing 
party's claimed matter involved in the ijiterference may 
be properly rejected, either on the winning party's 
claimed embodiment in its specific form, or modified with- 
in the art; or on that embodiment cited as primary art 
in connection with secondary art taken from known art; 
even on cited known art as primary art in connectioii 
with the winning party's claimed embodiment cited as 
secondary art. 

Only so can the Office obey the apparent intention and 
implication of the Patent Law that every patent granted 
shall be patentably distinct from every other patent 
granted. 

And, obviously, also, the disclosing patentee has the 
presumptive right, as against the claiming applicant, to 
use his disclosed embodiment in its specific form, or to 
use any modification of it within the art, or to use it in 
cooperation with anything known to the art There- 
fore, here again, the claiming applicant, whose claim 
may patentably avoid known art except that furnished 
by the disclosing patent, is confronted with a new, en- 
larged total sum of information possessed by the public 
and its manipulative capacity within the art. And the 
Office may properly reject the claiming application, eith- 
er on the specific embodiment disclosed in the patent; 
or on any modification of it within the art; or on the 
disclosed embodiment as primary art in combination with 
known art as secondary art; or. may use other known 
art as primary art in construction with the. disclosed 
embodiment as secondary art. Otherwise every patent 
granted might not be patentably distinct from every 
other patent granted. 



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JouBKAL OP THE Patent Ofpicb Society. 263 
SPECIAL PATENT LIBItABIES. 



By William D. Shoemaker. 



A 8peci«d library, so called for lack of a better title, is 
one devoted to a particular purpose or object, to a par- 
ticular line of thought or activity. Numerous individ- 
uals and corporations maintain special libraries, some in 
the nature of valuation libraries for brokers and bank- 
ing concerns, others technical, as the libraries of the 
Oeneral Electric Company and the Westinghouse Com- 
pany and the library which these two companies main- 
tain jointly. 

The librarians of these special libraries have a national 
organization and publish a journal and other papers. 
For a general discussion of the subject of special libraries 
reference might be had to a paper by Mr. R. H. Johnson 
of the Bureau of Railway Economics Library in this city. 

It is the purpose of this paper to point out in a general 
way only what has been done in the preparation and 
maintenance of libraries of this character devoted to 
patents. 

The records of the Patent Office constitute a special 
library of domestic and foreign patent information for 
all the industrial arts of the country, and the classifica- 
tion of patents as now practiced is the work of arranging 
this patent literature in a convenient and usable manner 
to satisfy the inquiries concerning patents propounded 
by all the industrial developments of the nation. It is 
not pursued with a view to satisfying the needs of a sin- 
gle corporation, as would be the case in a library devised 
specially for that corporation, nor to satisfying the needs 
of special groups of corporations. It is therefore not 
surprising that occasionally special interests do not find 
the records of the Patent Office suited to their every need. 
If they were, they w^ould probably fall far short of satisfy- 
ing the ordinary demands of many other special interests. 

Many of our large manufacturing concerns maintain 
patent departments, in which are gathered together the 
patent literature, foreign as well as domestic, of the arts 



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264 JoUBNAIi OF THE PaTENT OpFICE SoCIBTY; 

in which they are interested* This is not confined to 
single corporations, but special collections of patent lit- 
erature are now maintained by groups of corporations, 
as the Eastern Railway Association, the Western Bail- 
way Association, the Automobile Chamber of Commerce, 
etc. 

A special library of patent information best suited to 
a single industry or to the needs of a single corporation 
may be styled an art library, and the classification of 
patent literature to be found there would probably be 
based upon the particular industrial art involved. The 
need of such libraries is evident from the ever increasing 
number thereof, and the Government while not charge- 
able with the duty of organizing them might neverthe- 
less aid in a measure others who are engaged upon the 
work. Certain branches of the Government have from 
time to time compiled patent literature concerning spe- 
cial arts, as will be noted hereinafter. Each individual, 
corporation or industry must, however, be primarily 
chargeable with the compilation of tiie patent literature 
of special interest to it. 

While tlie Patent Office does not make a special point 
of collecting art patent literature, many individual mem- 
bers of the examining corps have supplemented the Office 
classification by collections of patents upon an art basis, 
which have served admirably the needs of special in- 
quiries besides being of considerable value for the nov- 
elty searches made by the particular examiner. The 
reason why these special collections are not more used 
are the inexperience of the examiner in work of this kind, 
the individual ideas incorporated in such work as is done, 
and the consequent lack of uniformity in the resultant 
product. That there is great need of some systematic 
effort in this line is felt by examiners, attorneys and 
manufacturers, as a supplement to the official classifica- 
tion. 

From time to time, various bureaus of the Govern- 
ment have compiled and published patent information 
concerning certain arts. Among such activities might be 
mentioned the compilations of the Census Bureau some 
years ago of patent literature concerning industrial 
chemistry. In the Second Annual Report of the National 



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JOUBNAL OF THE PaTBNT OfFIOB SoCIBTY, 265 

Advisory Committee for Aeronautics may be fomid a 
rather comprehensive collection of United States patents 
npon carburetors, comprising lists of the patents accord- 
ing to the Patent Office classification and a complete re- 
classification upon so-called art lines. There are other 
instances of work done by the Government in this line. 

Of the work now in progress might be mentioned that 
which is being done by the Bureau of Chemistry in com- 
piling an art classification of all patents upon dyes, 
wherein those patents will be arranged upon six different 
bases, and that which is contemplated by the Enemy 
Trade Division of the Federal Trade Commission, where- 
in a collection of unexpired United States patents issued 
to residents and corporations of Germany and Austria- 
Hungary will be arranged according to the official classifi- 
cation of the Patent Office. 

Occasionally individuals have invaded this field and 
published compilations of patent literature for profit. 
Noable among these might be mentioned the late James 
T. Alien, first assistant examiner in the Patent Office, 
who compiled several digests, a number of which were 
sold and are now in use. 

By far the greatest amount of work and the most valu- 
able has been done in the patent departments of manu- 
facturing concerns, where extensive art collections of 
both domestic and foreign patents are to be found, as 
well as periodicals, circulars, trade publications, etc., 
relating particularly to the lines of manufacturing of the 
factory. Such a department is usually presided over by 
a patent lawyer, who is assisted by an ample force of 
technical and clerical assistants, and is provided with a 
sufficient legal library. 'There is no place where special 
patent information is more readily obtainable, not even 
in the examiner's rooms at the Patent Office. The facili- 
ties for answering questions involving patents are all 
that money, time and effort could produce; in one in- 
stance, where the collection involved only about 5000 
United States patents, there were some 30,000 cross ref- 
erences, and the head of that department was able to ren- 
der an opinion ui>on the question of infringment in about 
an hour. The Board of Directors of that company could 
make a decision concerning a change in structure of its 



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266 J.OTCJBNAL OF THE PATENT OfFICB SoODBTY. 

patented product at the same meeting at whidh it was 
proposed. 

A rather complete discussion of the physical organiza- 
tion and the duties of a manufacturer's patent depart- 
ment is to be found in the Engineering Magazine for 
July, 1914. 

Many of the public libraries of the country have estab- 
lished patent branches, where much published patent lit- 
erature is kept in available form. In the well equipped 
patent room of the New York City Library may be found 
bound volumes of United States patents, many foreign 
patents, the British abridgements, etc. In charge of 
these branches are librarians who are somewhat familiar 
with the official publications relating to patents. It is 
not known that any of these libraries have made special 
collections of patents, however, not even to the extent of 
duplicating some portion of the classified arrangement 
of patents to be found in the Patent Office. 

The possiblities of special patent libraries or oolleo- 
tions are without limit; at least, the surface has only 
been scratched. Reference has already been made to the 
well equipped manufacturers' patent departments, but 
these have been buiK with a view to supplying the needs 
of the particular owner only. Libraries of this type, de- 
signed for public use, are practically limited to those 
facilities provided by the national Government, aild for 
the most part to those found at the Patent Office. There 
would appear room for others, perhaps located at a dis- 
tance from the National Capital, as for instance a spe- 
cial collection of automobile patents at a public library 
in the city of Detroit. 

There are manufacturing corporations w^hose unex- 
pired patents will aggregate a thousand or more, and in 
some few instances several thousand. A list of the pat- 
ents of such a company arranged according to the official 
classification of the Patent Office, would be of rather gen- 
eral interest, and of great value to the large number of 
manufacturers who are in competitive contact with such 
a concern. But such a collection of patent information 
is hardly of sufficient immediate value to any single com- 
petitor to warrant the expenditure of the cost of compi- 
lation. 



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JOUHNAL OF THE PATENT OfFIGB SoCJIBTT. 267 

Again, there are inventors Tdio have taken out a large 
number of patents. There are times when a list of their 
individual patents together with accurate information as 
to the present ownership of each thereof might be of 
great value. 

In view of the large annual increase in the number of 
patents, and of the increased number of unexpired pat- 
ents, necessitating an ever extending field of search, is it 
not evident that curtailment of the actual time and effort 
spent by examiners and attorneys in making searches is 
imperative! Cannot this be done by the more general 
use of special collections of art patent information so 
that the actual technical work involved shall be confined 
to the perusal of the fewest number of patents! Should 
not the records of the Patent Office be subjected to a 
study with such an object in mindf 

Might I not suggest that sometime in the near future 
there will exist a branch of the '* Special Librarians'* na^ 
tional organization devoted to the subject of special pat- 
ent collections, and that the heads of manufacturers' pat- 
tent departments and certain officials of the Patent Office 
and other branches of the Government will be members 
of that organization ; and further that a plan will be de- 
vised whereby the libraries of the country will take up 
the compiling of patent literature of particular and spe- 
cial interest to their section of the country? 



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268 JouBNAii OF THE Patbnt Officb Sooibty, 
INTERNATIONAL USE OF PATENT SEARCHES. 



By Scott H. Lilly, Assistant Examiner. 



The Director of the Canadian Patent Office, in an ad- 
dress before the employees of the United States Patent 
Office, expressed the wish that his office might have the 
benefit of searches as to novelty made in the United 
States. He stated that the great majority of applica- 
tions filed in Canada are filled in substantially the same 
form in the United States, and in these cases one search 
as to novelty should be sufficient, and that the one search 
could be more efficiently made in the United States, where 
the facilities for search are better. 

That wish might be realized if the Canadian OflSce 
would forward to the United States each application filed, 
for a report on its novelty. Where a corresponding ap- 
plication had been filed in the United States the report 
would require little but the copying of the citations made 
as a result of the previous search, and in other oases the 
report could be kept available for a subsequently filed 
application, so that in the majority of cases little extra 
work would be entailed in preparing such reports. , It 
should be easy to set a price for such reports, which 
would be much less than the cost to Canada of making 
searches as to novelty and still would more than cover 
the cost of the extra work of preparing tlie reports, so 
that the arrangement would be mutually advantageous. 

Making searches in two offices where they could be con- 
fined to one, not only duplicates the work of searching 
such applications as are presented in duplicate, but it du- 
plicates the cost of providing facilities for searching and 
lessens the efficient division of labor amongst searchers. 
Probably a greater proportion of the applications in the 
Canadian Patent Office than in any other are duplicated 
in the United States ; but it seems worthy of investiga- 
tion whether, considering both work and plant, it could 
not be made profitable for the United States to report as 
to novelty not only to Canada but to England and her 
other colonies having patent systems. 



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Journal op the Patent Ofwob Society. 269 

Now, when the full efficiency of every man is needed 
and cooperation in other lines between Great Britain and 
the United States is being extended, should be an auspi- 
cious time for inaugurating cooperative searches as to 
novelty. 

After returning from South America former Commis- 
sioner Moore related that a number of representatives of 
South American countries had expressed their apprecia- 
tion of the advantages of a patent system, indicating that 
their countries appreciated the difficulties arising from 
the grant of patents without search as to novelty and the 
great cost of a plant in which such searches could be made, 
with any reliability. If the opportunity were properly- 
presented, South American countries might gladly avail 
themselves of reports as to novelty made by the United 
States. 

The more countries use one office for novelty reports 
the cheaper can they be made. With many countries us- 
ing the reports of one office a report as to one invention 
may be used not only twi(ie but many times, so that the 
cost for each use of the report is reduced. 

Our facilities for searching are far from perfect. Mak- 
ing greater use of the facilities we have would make in- 
creased expenditures in perfecting them more reasonable 
to everyone, not excepting Congress, so that increased 
use should make it possible for the work to be done with 
less cost for each application and with greater reliability. 

The logical first step seems to be to learn as nearly as 
possible the proportions of Canadian applications dupli- 
cated in the United States and in what respects, if any, 
the information as to novelty desired by Canada differs 
from that required in our system. Then an estimate of 
cost could be made and a definite offer presented to Can- 
ada. The logical ultimate goal would seem to be, not 
only a pan-English speaking and pan- American office, but 
a highly perfected plant and force justly maintaining it- 
self as the authority on novelty for the whole world. 



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270 JouBKAX. OP THE Patbnt Opfiob Socibty. 

CHANGES SOUGHT IN APPROPRIATIONS FOR 
THE PATENT OFFICE FOR NEXT TEAR. 

The following statement was placed before the sub- 
committee of the Appropriations Committee of the 
House having in charge the legislative, executive and 
judicial appropriation bill : 

Increase in Salaries. 

Present Proposed Increase 
Patent Office. salary salary 

Assistant Commissioner $3,500 $4,000 | 600 

2 Chiefs of clerical divisions 2,000 4,000 

6 Assistant chiefs of divisions.... ' 1,800 9,000 

3 clerks of class 4 1,800 5,400 

3 clerks of class 3 1,600 4.800 

13 clerks of class 2 1,400 18,200 

1 skilled draftsman 1,200 1,600 400 

2 skilled draftsmen 1,200 1,400 400 

4 draftsmen 1,000 1,200 800 

14 copylffts 1,000 14.000 

Total 57,500 

Less 40 clerks at $720 28.800 

Net increase asked for 28.700 

The total number of employees provided for the Pat- 
ent Office by the legislative, executive and judicial ap- 
propriation bill for the fiscal year ending June 30, 1919, 
is 959. The estimates above submitted make no change 
in this total number of employees but propose a number 
of changes in grades and salaries. 

It will be observed that all the changes submitted, ex- 
cepting only the Assistant Commissioner's position, ap- 
pertain to clerical positions in the Patent Office. 

The duties of the Assistant Commissioner of Patents 
are very similar and substantially commensurate with 
those of the First Assistant Commissioner, who quite 
properly receives $4,500, An increase of $500 for the 
Assistant Commissioner would more equitably compen- 
sate him for the services he renders. 

In regard to the remaining proposals, touching cler- 
ical positions, it may be said frankly that they are made 
in view of a growing state of dissatisfaction and unrest 
in the Patent Office. The clerks in that office, almost 
without exception, believe that clerks in other depart- 
ments uniformly receive higher salaries for similar 



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JouitNAii OF ^HB Patent Office SooiBTy. 271 

work, and in many instances for work less exacting and 
requiring less training and sMll. They are told every 
day that wholly inexperienced young giris in large num- 
bers are called to this city and appointed at $1,000, 
$1,100, $1,200, and sometimes higher salaries, with prom- 
ises of promotion in from three to six months. It is not 
difficult to imagine the effect upon the minds of those 
who day after day hear of these instances and who are 
themselves able to verify a sufficient number to justify 
a belief that all rumors are true. 

In drafting the above-noted proposals for increases 
in salaries not only the cause of the clerks but also the 
general betterment of the Office has been kept in mind. 

The reason for asking for two additional chiefs of 
clerical divisions is that the application and docket 
clerks of the Patent Office are each in an administrative 
position, exercising immediate supervision over approx- 
imately 10 to 15 clerks. Each should be made the chief 
of a division, one to be known as the Application Di- 
vision and the other as the Docket Clerk Division. 

If the above suggestion be adopted the Patent Office 
will have eight clerical divisions and it should have an 
assistant chief for each of these divisions. It now has 
only three assistant chiefs of divisions for six clerical 
divisions.. It asks an increase of five assistant chiefs. 

At the present time, counting all possible places, there 
ftre only 45 clerical positions in the Patent Office to 
which a clerk receiving $1,200 can hope to aspire by pro- 
motion. In fact there are practically less from the point 
of view of a female clerk for it has never been the cus- 
tom to promote a woman to the position of chief or assis- 
tant chief of a division. To open up a prospect of pro- 
motion to those who are receiving $1,200 request has 
been made for three additional clerks of class 4, three of 
class 3, and 13 of class 2. These particular changes are 
regarded as especially desirable and all but indispen- 
sable to the future welfare of the Office. 

Also there is recommended an increase of 14 clerks 
at $1,000. The Patent Office has experienced great diffi- 
culty of late in getting suitable clerks who have passed 
the civil-service examination to accept appointment at 
$900 per annum, and this would be quite impossible but 
for the $120 additional compensation provided by the 
appropriation bill for the current year. 



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272 JouENAii OF THE Patent Offiob Sooibty. 

A more regrettable feature in the situation is the fact 
that the Civil Service Commission does not submit to 
the Patent Ofl&ce the names of the most competent clerks 
or typists who pass its examinations when called upon 
for certification to fill $900 positions. This is due to no 
fault of the commission but arises from the fact that the 
conamission certifies as a rule only the names of persons 
who state in their examination papers that they will ac- 
cept $900 or less. The better class of clerks and typists 
state in their papers that they will accept $1,000 to 
$1,200, and these are naturally certified to departments 
that pay corresponding salaries to new appointees. A 
very large number of those who accept $900 positions in 
the Patent Office seek releases shortly after beginning 
service, and several have presented resignations to ac- 
cept positions at higher pay outside the Government 
service. The only remedy seems to be to provide sal- 
aries for this office corresponding to those paid else- 
where. 

The above proposals call for 40 new places in grades 
paying more than $720 per annum. The Patent Office 
has a grade of coyists at $720 with 40 positions in that 
grade. It is desired that that grade be entirely discon- 
tinued. Only five of the bureaus in the Interior Depart- 
ment have such a grade and of these the Patent Office 
employs seven more copyists at $720 than the other four 
bureaus combined. 

The statement has been made that the Patent Office 
employs nearly one-half of all the $720 copyists serving 
in the entire departmental service. 

Dropping the $720 copyist grade in the Patent Office 
is recommended also for the reason that in that office 
for two years at least it has been filled, almost without 
exception, and is now entirely filled, by temporary em- 
ployees, possessed of the most indifferent qualifications. 
The Civil Service Commission makes no attempt to cer- 
tify names for this grade and it has been possible to fill 
or partially fill these positions only by accepting those 
who have but nicely begun, or at best have just finished 
an elementary course in typewriting. Several of the 
employees in this grade are too young to take the civil- 
service examination, and of all of them it may be said 



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JOUBNAL OF THE PaTENT OfFICB SoCIBTY. 



273 



that, taken on an average, it requires two and a half to 
three of them to do the work of one good typist. Drop- 
ping this grade will reduce by $28,800 tiie salary in- 
creases otherwise proposed, leaving a net increase of 
but $28,700. 

The estimate for special and temporary typewriters 
for which the current appropriation bill provides $5,000 
has been omitted this year in the belief that the better 
^^ade of help which the above recommendations would 
insure, justifies this change. 

Among the proposed increases of salaries are one of 
$400, and two of $200 each for three $1,200 draftsmen; 
and four of $200 each for four $1,000 draftsmen. A com- 
parison of the salaries paid draftsmen in any other 
branch of the Government service with the salaries paid 
in the Patent Office will show the basis of this recom- 
mendation. 

A table showing such a comparison prepared as far 
back as 1916 is here reproduced. 



Number 

Branch of service. draftsmen 

employed 

Coast and Geodetic Survey 22 

Office of Supervising Ar- 
chitect, Treasury Dept. 75 

Quartermaster General's 

Office, War Dept 15 

Bureau of Ordnance, Yards 
and Docks, Navy Dept.. 2 

Fourth Assistant Postmas- 
ter General 18 

Lighthouse Bureau, De- 
partment of Commerce 6 

XHvfision of Publications, 
Agriculture Department 13 

Chief of Ordnance, War 
Department 52 

Chief of Staff, Army War 
College 9 

Indian Office 2 

FV)restry 35 

Hydrographic Office, Navy 
Department 27 

Grand total 12 branches. 276 



Total 

salaries 

paid 



Average 



Highest 
salary 



Lowest 
salary 



137.600 


11,709 


12,400 


11,000 


126,900 


1,692 


2.400 


1,100 


24,000 


1,600 


1,800 


1,400 


3,200 


1,600 


1,800 


1,000 


26,200 


1,445 


1,800 


1,200 


8,600 


1,433 


1,800 


1,200 


17,500 


1,346 


1,600 


1.200 


69,600 


1.344 


2,200 


900 


11,800 

2,600 

44,020 


1,311 
1,300 
1,257 


1,800 
1,400 
2,000 


1.000 

1,200 

900 



34,000 1,250 1,800 



900 



405,320 1,472 



Patent Office: Seven men, average $1,085; two grades, $1,200 
and 11,000. 



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274 Journal of the Patent Office Society. 

The Patent Office has had two vacancies in the $1,000 
draftsman position for many months. One has been 
filled by a woman holding a temporary clerical position; 
the other has remained vacant and neither the Civil Ser- 
vice Commission nor the appointing officers of the Offilee 
have been able to find a sufficiently skilled person who 
would accept it. Those who at present are employed at 
this work are dissatisfied and some of them are asking 
to be released to take work elsewhere at higher pay. 

The appropriations committee of the House reported 
the legislative, executive and judicial bill (H. E. 14,078) 
on January 10, 1919. From tiie section thereof devoted 
to appropriations for the Patent Office it appears that 
the Committee allowed two additional chiefs of divisions 
at $2,000 each. All other proposed changes for increases 
in salaried positions were denied and ten copyists posi- 
tions at $720 per annum were dropped. Other changes 
noted include a reduction of $500 from the usual allot- 
ment for the Scientific Library; a reduction of $5,000 
from the appropriation for producing the current issne 
of patents and reproducing exhausted copies, and a re- 
duction of $5,000 for special, temporary typewriters. 

The bill provides for continuing the payment of the 
lump sum bonus of ten dollars per month allowed last 
year to all civilian employees receiving salaries up to 
twenty-five hundred dollars per annum. Also it pro- 
vides for a joint commission of five senators and five 
representatives of the Sixty-sixth Congress ''to investi- 
gate the rates of compensation paid to civilian employees 
by the municipal government and the various executive 
departments and other governmental establishments in 
the District of Columbia except the Navy Yard and post- 
al service, and report by bill or otherwise, as soon as 
practicable, what reclassification and readjustment of 
compensation should be made so as to provide uniform 
and equitable pay for the same character of employment 
throughout the District of Columbia in the services 
enumerated.'' 



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Journal of the Patent Office Society. 275 
THE TREATMENT OF DEFECTIVE CLAIMS. 



By LoYD H. Sutton. 



It has l3eeii my observation through a number of years 
of experience, both in examining claims within and in 
prosecuting claims before the Patent Office, that there is 
neither uniformity of practice, nor clear appreciation of 
principles on the part of many of the examining corps, 
as to the treatment of claims that are defective in re- 
spects generally called ** formal". It is my purpose to 
point out, by an analysis of decisions and underlying 
principles, considerations that, in my opinion, should 
govern the treatment of such claims. It is recognized 
at the outset, however, that no rules can be laid down 
which will be of universal application : the leven of com- 
mon sense must enter into the application to particular 
cases of any rules that may be derived. 

We sometimes hear it stated that the examiner, in 
dealing with claims, should devote his entire attention to 
matters of substance, and not consume time on matters 
of form, because the courts look only to matters of sub- 
stance and never invalidate claims because bad in formal 
respects. But such statements, however true in the main, 
afford no assistance in determining what relates to sub- 
stance and what relates only to form. On the other 
hand, while substance should never be sacrificed to form, 
and while the examiner should not be hypercritical or 
over- technical in dealing with form (because too much 
attention thereto is usually attended by too little atten- 
tion to substance), it is a mistake to disregard defects 
which we usually refer to as ** formal." Much time now 
consumed by the Courts in construing claims could be 
saved if closer attention were given to their maimer of 
expression, and a much clearer and more accurate con- 
cept of the scope of the monopolies granted could be ob- 
tained by the public were all claims properly drafted. 
Therefore, while a court in dealing with a defective 
claim may seek to save to the meritorious inventor the 
fruit of his genius and disregard an informality, it is 
none the less the duty of the Patent Office to see that 



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276 JOUBNAL OF THE PaTBNT OfPICE SoCIBTY. 

the patent issues with its claims in such form as to re- 
quire the minimum of construction on the part of the 
courts and the minimum of confusion on the part of the 
public. It is my purpose, then, not only to seek uniform- 
ity in dealing with defective claims, but also to urge a 
treatment of them that will tend to the issuance of bet- 
ter definitions of the inventions. 

Revised Statutes, Sec.4888, says that the applicant for 
a patent ** shall particularly point out and distinctly 
claim the part, improvement, or combination which he 
claims as his invention or discovery." It is the duty of 
the examiner to see that each applicant complies with 
this statute. Now, what is it to daim an invention ** dis- 
tinctly"? In the plain dictionary significance of the 
term, it is to claim the invention *'not confusedly, un- 
clearly or obscurely," not in a ** blurred or indeter- 
minate" manner, but '*so as not to be confounded with 
something else," so as to be ** clearly distinguishable"; 
in other words, to be '* well-defined" so that tiie inven- 
tion can be ** clearly perceived." 

The statute prescribes then, as one of the conditions 
precedent to the grant of a patent, that the invention 
described therein and to be protected thereby shall be 
defined distinctly. If an applicant does not comply with 
the statute in this respect, it is just as much the duty of 
the examiner to reject his claims as it is to reject for 
failure to comply with other statutory conditions prece- 
dent, as lack of invention, novelty or utility. On the 
other hand, when the statute has been complied with and 
a claim is defective only because it fails to measure up 
to qualifications prescribed by the Office in the exercise 
of its administrative functions, it should receive an ob- 
jection. This distinction should be kept well in mind 
because a claim which is said to lack a statutory pre- 
requisite is entitled to receive a judicial review which 
can be obtained only by appeal, while a claim which is 
said not to comply with the administrative policies of 
the Office should be disposed of by the Conmiissioner in 
the exercise of his supervisory authority. What is ap- 
pealable should be rejected and what is petitionable 
should receive an objection. 



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JOUBNAL OF THE PaTBNT OfFICB SoOIETY. 277 

BSiBdescriptive or Inaccurate Cboms. 

Assume a description of a squared shaft and a pinion 
having a square hole mounted on said shaft, together 
"with a daim which defines the pinion as keyed to the 
shaft. This is clearly inaccurate or misdescriptive. If 
such claim be first presented by amendment, it may be 
rejected as a departure from the invention originally 
shown and described. Such is the practice of some ex- 
aminers, which finds support in in re Duncan et al.^ 1907 
C. D., 460, and is suggested in ex parte Williams, 1912 
C. D., 288. Yet, as it presents a question **as to the 
meaning of language used to describe an undisputed 
structure and not whether the disclosure includes cer- 
tain elements clearly covered in the claims,*' the latter 
decision rules that the question is petitionable. On the 
other hand, inaccuracy of definition may properly be 
considered by the Examiners-in-Chief on appeal, as rec- 
ognized in ex parte Brasier, 1906 C. t)., 517. Now, sup- 
pose that this same claim were presented in the applica- 
tion as filed. It clearly could not be rejected for a de- 
parture from the invention originally disclosed, and yet 
the defect is the same as in the case first assumed. Un- 
der the latter circumstances, ex parte Mueller et al., 1905 
C. D., 336 and ex parte Taylor, 17 Gour., 39-18, rule that 
the claim is to be objected to. A claim, however, that is 
inaccurate or misdescriptive is not patentable {In re 
Creveling, 1905 C. D., 684) ; and while held objectionable 
T)y several decisions besides those already enumerated 
(see ex parte Conley, 1904 C. D., 13; ex parte Chapman, 
1906 C. D., 79 ; ex parte Reid, 13 Gour., 70-17 ; ex parte 
Scott, 15 Gour., 38-19), the defect is one that goes to 
the merits {ex parte Parkhurst, 1902 C. D., 343) because 
relating to particularity of definition {ex parte Iserman, 
1913 C. D., 61). 

A claim that does not accurately describe the invention 
does not distinctly point out the invention, at whatever 
stage of the prosecution of the application it is present- 
ed. The defect is statutory, and such a daim should ac- 
cordingly be rejected. 

Alternative Claims. 

It is the policy of the OflSce not ot permit a single 



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278 JouENAii po THE Patbnt Officb Society. 

«laiin to cover two inventioiLS, similarly as it is the policy 
of the Office not to permit a single application to claim 
two independent inventions in different claims. But 
this policy does not inhibit the use of the word **or'' in 
a claimy as appears to be the impression of some exam- 
iners. 
Alternative claims may be divided into four classes: 

(1) Where the altemativeness is of language and not 
of structure. 

Sometimes the character of a single element may be 
more clearly expressed by the use of alternative names. 
Strictly speaking, such may be unnecessary; but if a 
clearer idea is conveyed thereby, their use should not be 
held objectionable. Such is recognized in ex parte Leon, 
1911 C. D., 35 (button or handwheel) ; Phillips v. Sen- 
senich, 1908 C. D., 14 (slitted or prongl^e) ; and ex parte 
Holder, 1903 C. D., 442 (rods or wire) ; ex parte Cald- 
well et al., 1906 C. D., 58, in its dictum, being to the 
contrary. 

(2) Where the alternative expression relates to dup- 
licate elements. 

A claim that includes one of a plurality of duplicate 
elements is generally held to be infringed by a structure 
that comprises more than one of such elements. It may 
be argued then that, in the expression **one or more," 
the *'or more'' is purely superfluous. On the other 
hand, the use of this expression shows clearly that the 
number of these elements is not of the essence of the in- 
vention; it automatically eliminates the multiplication 
of claims by the addition of others differing only in the 
inclusion of a plurality of such elements; and it does 
not offend against the Office policy with respect to the 
inclusion of more than one invention in a single claim. 
No practical reason is then seen why such expressions 
as **one or more" should not be permitted (as was done, 
for example, in ex parte Thorsen, 1893 C. D., 75). 

(3) Where the alternative expression relates to equiv- 
alent structures. 

A claim is always entitled to a construction which em- 
braces equivalents. Therefore the use of such expres- 
sion as *'or its equivalent'' serves no useful purpose 
and is purely superfluous. While this reason by ex 



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Journal op the Patbkt Oppicb Society. 279 

parte Haasz, 1873 C. D., 170 is a suflScient ground for 
objection, there is a deeper reason why this type of 
claim offends the Office policy in question. An applicant 
is not entitled to separate claims to different modifica- 
tions of his inventions although they are equivalents. 
He should not, then, be allowed to claim in a single claim 
what he would not be allowed to claim in different claims 
(ex parte Cook, 1890 C. D., 81). Yet a claim for an ele- 
ment or its equivalent is an effort to have that claim 
embrace a plurality of structures which differ by the 
substitution for the element in question of other ele- 
ments which perform the same office in the combination. 
This type of claim should always be objected to ^ex parte 
Phillips, 1908 C. D., 195). While permitted in ex parte 
Continental Windmill Co., 1870 C. D., 74, ex parte Wal- 
ton, 1876 C. D., 162, and ex parte Dolph, 1887 C. D., 25, 
it has usually been held objectionable. As pointed out 
in ex parte Caldwell et al., 1906 C. D., 58 (or the like), a 
generic expression should be adopted which embraces 
the equivalent structures. 

■ (4) Where the alternative expression relates to non- 
-equivalent devices. 

Such claims clearly offend against the Office policy in 
question and should accordingly always be objected to 
{c^ parte Hulbert, 1893 C. D., 74; see also ex parte Leon, 
1911 C. D., 35). 

It is to be noted that some decisions find alternative 
<^laims defective for other reasons. Thus ex parte Mo- 
Dougall, 1880 C. D., 147, and ex parte Eeid et al., 1879 
C D. 70, find them bad for uncertainty, ex parte Haasz 
for equivocality, ex parte Fretwell, 20 Gour., 85-12 and 
ex parte Caldwell et al. for indefiniteness. If these rea- 
sons actually exist, the claims should be rejected on such 
pounds, but it is believed rare that alternative claims 
per se are open to such attack. 

Positive Inclusion of Elements. 

If the invention is to be distinctly defined, it must of 
necessity be clear from the claim what elements go to 
make up the invention, i. e., what part of the disclosure 
is staked off and embraced within the monopoly. If it 
is not clear what elements are embraced by the claim. 



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280 JoUBNAIi OF THE Pa^BNT OpFIO* SodBTT. 

SSL , - . ' ' ''^^ 

the latter does not distinctly define the invention and^ 
not complying with the statute, should be rejected. 

We have the rule that all elements of the invention 
must be positively included in the claim. ** Every instru- 
mentality or substance intended to be cm element or in- 
gredient of a claim must be directly brought in as such, 
not inferentially included, or <inly alluded to in naming 
some other'' {Ex parte Holt, 1884 C. D., 43). But this 
rule does not require that every structural element re- 
ferred to in a claim must be included positively. It is 
true that statements in ex parte Stimpson, 1910 C. D., 
223 and ex parte Dodge, 1906 C. D., 439 would seem to 
infer the contrary. But, in so far as ex parte Stimpson 
is capable of such interpretation, it is overruled by the 
well considered decision of ex parte Jepson, 243 0. &., 
525, while a decision that necessitates the inclusion of 
the pivotal support of a lever separately from the lever 
itself needs little discussion. 

Where the claims are clear as to what elements are 
included, there can be no objection to referring to other 
elements to define their purpose, location, function, etc. ; 
as such elements form no part of the invention, their 
positive inclusion would be aggregative and improper, 
(Ex parte Compos, 1912 CD., 255; ex parte Curtin, 16 
Gour., 39-20 ; ex parte Ames, 13 Gour., 86-21. In ex parte 
Vincke, 1901 C. D., 124, the element required to be in- 
cluded positively was a part of the invention). 

But, where the claims are not clear as to what elements 
are included therein, ttey do not distinctly point out the 
invention and, accordingly, should be rejected, instead 
of objected to as has been the practice heretofore. 

Duplication of Elements. 

If a claim calls for two elements and the combination^ 
as disclosed, embraces but one of such elements, the 
claim calls for something that has not, been invented. 
Therefore, it does not distinctly point out the invention 
and should accordingly- be rejected. That this is a ground 
of rejection is recognized by ex parte Jennings, 1912 C. 
D., 153, the reason therefor not appearing, and it was 
accepted as a ground of appeal in ex parte Duncan et (iL.y 
1906 C. D., 348 ; but, on the other hand, was accepted a& 



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Journal, of the Patent Office Society. 281 

a ground of objection in ex parte Forsyth, 16 Gonr., 21- 
17. 

While on this topic, it is to be noted that, where an 
element of a combination has two distinct functions, as 
when it is an element in each of two intersecting trains 
for transmitting motion, there are in the combination 
actual means for performing two distinct functions. In 
this case the above ground of rejection does not exist, 
and, so far as can be seen, there is no legitimate ground 
for objection. {Ex parte Duncan et al.) 

Negative Limitations. 

A claim that defines the invention by what it is not, 
and not by what it is, as a general rule does not point 
out the invention distinctly. Such a claim should be re- 
jected and not objected to, as is the usual practice, which 
is supported by ex parte Davis, 14 Qour., 22-19. 

Surplusage. 

A claim which merely contains more words than are 
necessary, which distinctly points out the invention and 
adds something more, cannot be said to fail in distinctly 
defining the invention unless, perchance, such surplus- 
age be so exaggerated as to tend to confusion. There- 
fore, surplusage without confusion should only be ob- 
jected to. {Ex parte Owen, 1913 C. D., 227.) 

Whether statements of purpose, result, operation or 
advantages are to be allowed in claims is ordinarily a 
question of surplusage. While sometimes tending to 
confusion, they chiefly offend against succinctness. If 
criticised, it should be by way of objection. {Ex parte 
Schweitzer, 1901 CD., 179.) But it is submitted that 
such statements which do not confuse the claim should 
rarely be objected to, and when they cause confusion 
the claims should be rejected for lack of distinctiveness. 

Indefinite, ambiguous, misleading, vague or obscure 
claims. 

Before discussing these types of claims, it is well to 
understand what we mean by some of these terms : 

An indefinite claim is one that is **not precise, '' i. e., 
a claim which does not amount to a definition. 



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282 Journal of the Patent Office Society. 

An ambiguous claim is one that has a doubtful mean- 
ing, one that is open to various interpretations. 

A misleading claim is one that is deceptive, that tends 
to a wrong interpretation. 

A vague claim is one that is indistinct, that is lacking 
in clear thought. 

An obscure claim is one in which the thought is con- 
cealed. 

This distinction should be kept in mind and defects 
called by their right names. 

Assistant Commissioner Billings in ex parte Bitner, 
140 0. G., 256, recognizing that there was uniformity in 
neither the practice nor the decisions treating claims of 
these types, laid down the rule that where ** claims are 
indefinite, in the sense that they are ambiguous, equivo- 
cal, lacking in clearness, or unintelligible'' the examin- 
ers action shall **be in the form of an objection.'' 

It is thought unnecessary to review thfi large number 
of decisions bearing on claims of these tyyes. It is suf- 
ficient to say an authority can be found to support any 
treatment of any claim falling into these groups. The 
decisions are uniform only in holding that claims must 
not be indefinite, ambiguous, misleading, va^e or ob- 
scure. 

Commissioner Allen, in Ex parte Shepler, 1903 C. D., 
17, said : — 

The law requires that the patentee 'distinctly claim' the 
features which he regards as his invention, and it 1| the 
duty of this Office to require that the claims be made defi- 
nite and certain. The fact that the courts in order to se- 
cure to a meritorious inventor the protection to which he 
is entitled sometimes sustain a vague and indefinite claim 
' by construing it as covering the particular thing invented 
is no reason for the allowance by this Office of vague 
claims. 

Again, the CJommissioner, in ex parte Paige, 1887 C. 
D., 71, said : — 

Whatever terms and phrases are used, the claim must be 
so framed as to clearly and distinctly express the inven- 
tion and be free from equivocation and ambiguity. 

These two quotations are a sufficient recognition of 
the duty of the Patent Office and the defect inherent in 



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JOUBNAL OF THE PaTBNT OfFICB SoCIBTY. 283 

any claim of this type. A claim that is not a definition^ 
that is open to various interpretations, that tends to de- 
ceive, that has no dear thought, or that effects a con- 
cealment of its thought does not distinctly point out the 
invention. It flies squarely in the teeth of the statute 
and, therefore, should be rejected, and not objected to 
as laid ddwn in ex parte Bitner. 

It is to be borne in mind, however, in treating claims 
of this type that they are not to be considered apart 
from their specifications. While claims are often de- 
fective in the respects noted when taken by themselves, 
they become perfectly clear and distinct when read to- 
gether with tiieir specifications. However desirable it 
may be to have ea6h claim a sharply defined word pic- 
ture of the invention standing on its own base, this is 
too frequently impractical to attempt to enforce any 
general requirement of this nature. It is well settled 
that claims that are distinct when read in the light of 
the specification are suflScient. A more frequent appli- 
cation, then, of ex parte Kotler, 1901 C. D,, 62, in requir- 
ing that the claims be homogeneous with the specifica- 
tion, and a less frequent application of dictionary tests 
to individual words, would remedy the defects in many 
claims of these types. It is emphatically urged that the 
examiners insist on clear, definite, distinct claims and it 
is believed that their work to this end will be made eas- 
ier by insisting that every expression in the claims have 
a clear antecedent in the specification. 

Article ClaimB Involving Process Limitations. 

As an article may be made by more than one process, 
it is natural that inventors should desire a claim to the 
product rather than to the process because of the great- 
er scope of protection afforded thereby. It is also easier 
to prove infringement of an article claim than of a pro- 
cess claim. But if an article claim is limited by the pro- 
cess of manufacture, it affords no wider protection than 
a process claim, since the particular process of produc- 
tion must be proved to establish infringement. There 
is, then, no hardship in denying to an inventor a claim 
directed to an article that distinguishes from the prior, 
art only in the process employed. 



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284 JouRNiij OF THE Patent Officb Society, 

If, ill order to distinguish from the prior art, it iB 
necessary to define the artide by the process of produc- 
tion, the novelty must reside in such process. That is, 
the invention must reside in such process. If the inven- 
tion is a process and it is defined as an article, the in- 
vention is not distinctly defined. The claim should ac- 
cordingly be rejected. 

As said by the Commissioner in ex parte Mayall, 1873 
C. D., 134:— 

It is a fallacy to suppose, as this claim seems to imply, 
that an article Is ever patentable merely because produted 
by a certain mode of proceeding. 

The actual defect in such a claim was recognized in 
ex parte Wangemann et ah, 15 Gour., 25-36, but this de- 
cision, like ex parte Bacon, 18 Gour., 6-11, seems to hold 
the claim objectionable rather than rejectable. Yet the 
Commissioner, in ex parte Warren, 1906 C. D., 87, held 
that such a defect was properly considered by the Ex- 
aminers-in-'Chief. But, if the defect is statutory and 
properly considered by the Examiners-in-Chief , the claim 
should be rejected. 

Before leaving this subject, it shonld be emphasized 
that the rule in question does not prohibit the use of par- 
ticiples in article claims. Where a mode of procedure 
produces distinctive physical characteristics and, owing 
to the paucity of language, these characteristics are 
known only by a participial derivative from the mode of 
procedure, a claim using such words of definition is en- 
tirely distinctive and defines the article by its physical 
cliaracteristics. Such type of claim is probably referred 
to in ex parte Painter, 1891 C. D., 200, and was approv- 
ed in ex parte Scheckner, 1903 C. D., 315 (etched plate). 

Process Claims Involving Apparatus Limitations. 

Apparatus limitations have no place in a process claim. 
(In re Fessenden, 226 0. G., 1081 ; ex parte Reynolds, 13 
Qour., 7-19.) If necessary to distinguish the process 
from the prior art, the novelty, and, accordingly, the in- 
vention, must reside in the apparatus. If an apparatus 
invention is defined as a process, it is not distinctly de- 
fined and the claims should then be rejected. 



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JouBNAii OF THE Patbnt Officb Socibty. 285 

Gonelnsion. 

I urge then : — 

(1) Uniformity of practice in dealing with claims of 
the types above discussed. 

If a form of expression is proper in one division of 
the Patent Office, it should not be held improper in an- 
other. To take an example, let it not be necessary for N 
an attorney to learn who is to examine an application 
before he can feel safe in using the expression **one or 
more.'^ 

Again, let not the same form of claim be held objec- 
tionable in one division and rejectable in another. To 
secure a review in the former case, a petition is proper, 
in the latter case, an appeal is necessary. Diversity of 
practice leaves the manner of seeking a remedy a mat- 
ter of uncertainty. While the Examiners-in-Chief are 
ready to look beyond the form of an action and examine 
into its effect, reviewing the decision if it relates to 
matters of substance, the difficulty may reside in getting 
the case before them. If the defect is properly objec- 
tionable, it must be cured before an appeal is taken. If 
the defect is improperly objected to, the examiner is 
none the less likely to insist on its being cured before 
forwarding an appeal, causing annoyance and delay, and 
perhaps necessitating a petition before the matter is dis- 
posed of or the case sent forward to the tribunal con- 
stituted by law to review decisions which go to the mer- 
its. 

I urge 

(2) Rejection of all claims that fail to meet the statu- 
tory requirement that the invention be distinctly defined. 

While the criticism of claims which include superflu- 
ous words should be by way of objection (though, if this 
be the sole defect, they should rarely be criticised), and 
while claims which seek to cover alternative modifica- 
tions, whether equivalent or non-equivalent, should be 
objected to (and other forms of alternative claims not 
criticised), claims which are misdescriptive, which are 
not positive definitions of the invention, which are in- 
definite, ambiguous, misleading, vague, obscure or con- 
fusing, or which seek to define the invention in a stat- 
utory class to which it does not belong, do not comply 
with the statutory prerequisite to validity and, as when 



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286 JOUBNAL. OF THE PaTENT OfFICB SodETY. 

failing to satisfy other statutory prerequisites, should 
be rejected. 

When defects of these types are taken out of the class 
of informalities and grouped with other questions going 
to the merits, they will receive more careful attention 
by both examiners and attorneys. It is but natural and 
proper to give matters of form only secondary consid- 
■eration. These defects, however, are not, when analyzed, 
matters of form but matters of substance. They should 
never have been treated as informalities, but having 
been treated from the standpoint of form for many 
years, they have come to receive but the secondary con- 
sideration usually given to matters of form. When class- 
ed, however, with the other statutory prerequisites and 
made a ground of rejection, they will assume their prop- 
er importance and the manner of defining an invention 
will receive the careful attention from both the attor- 
neys and the Patent Office it ought to receive. 

Again, as a failure to define an invention distinctly 
may affect the validity of the patent, any criticism which 
challenges distinctiveness of defiuaition is entitled to a 
jiidicial review by the Examiners-in-Chief and should be 
disposed of only in the same careful way as are other 
criticisms which affect the validity of claims. And the 
very fact that such criticisms will be subject to careful 
judicial review will tend to more earnest consideration 
of them by all concerned in the prosecution of claims 
and, additionally, tend to the adoption of more uniform 
practice. 

The object and aim of my contentions, then, is a more 
careful attention to the expression of claims. More care 
in defining inventions will better safeguard the interests 
of the public, as a distinct claim is one which clearly de- 
fines the boundaries of the monopoly; will save litigation 
and conserve the time and efforts of the courts, as a dis- 
tinct claifai is one requiring the minimum of construction; 
will tend to a reduction in the number of claims, as there 
are much fewer ways of defining a given combination 
distinctly then there are indistinctly ; and will make to a 
stronger patent, as a distinct claim stands out in relief 
against the background of the prior art and forms a 
fence of certainty around the ground forbidden to the 
competitor. 



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JOUBNAL OF THB PaTBNT OfPICB SoCIBTY. 287 

RULE 37. 



By Richard E. Marine, Examiner-in-Chief. 



Rule 36. * * * * the claims, should be con- 
fined to the specific improvement and such parts as nec- 
essarily cooperate with it. 

Rule 37. The specification must conclude with a spe- 
cific and distinct claim or claims of the part, improvement, 
or combination which the applicant regards as his inven- 
tion or discovery. 

Sec. 4888, Revised Statutes. ♦ • ♦ • and he 
shall particularly point out and distinctly claim the part, 
improvement, or combination which he claims as his in- 
vention or discovery. 

When an inventor comes into the field of the useful 
arts he finds certain territory occupied, he develops ad^ 
ditional territory, and leaves for others to develop the 
unknown territory beyond. It is the office of the patent 
claim to specifically and distinctly mark the boundaries 
of the territory to which the inventor is entitled, to dis- 
tinguish his rights from the rights of those who came 
before and of those who come after. It is as unfair to 
the inventor to locate these boundaries within his terri- 
tory as it is to others to locate them within their terri- 
tory or within the unknown territory. 

The original patent acts did not compel the filing of 
distinct claims, but the applicant was required, in his 
specification, to distinguish his invention from the prior 
art. Under this practice the onerous duty was imposed 
upon the courts of ascertaining the exact invention of 
the patentee by a laborious examination of the art. To 
relieve the courts of this burden the act of 1836 was 
enacted under which, for the first time, the applicant 
was required to *' particularly specify and point out the 
part, improvement or combination which he claims as 
his own invention or discovery.'^ This statement was 
amended by act of 1870 to read as above (R. S. 4888). 

Rule 37, which is based upon the statute provides: 
first, that every application contain a daim or claims; 
second, that the claims be ** specific and distinct''; and, 



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,288 JoUBNAli OF THE PATENT OfFIGB SOdBTY, 

third, that they be directed to ^Hhe part, improvement 
or combination which the applicant regards as his in- 
vention.'^ 

The first condition goes to the very life of the patent. 
In the words of Robinson, the thing patented is the thing 
claimed (See. 505). So true is this that it has been held 
that an applicant could not cancel all of the claims of his 
application without filing a formal declaration of aban- 
donment, since to do so would signify his intention to 
abandon it {Ex parte Lasscell, 1884 C. D., 66; 29 O. G., 
861). The second condition relates to the manner of 
pointing out the invention ; while the third relates to the 
substance or thing or things which must be pointed out. 

Specific and. Distinct. 

The words '* specific and distinct '*, as used in the rule, 
appear to have received no special treatment by the au- 
thorities. Their use, however, was evidently inspired 
by the increasing necessity of having each patent point 
out in clear, definite and unmistakable terms the exact 
monopoly sought to be covered. Thus arose the require- 
ment that claims be separate and distinct from the spec- 
ification, and thus also arose the rules, stated, for the 
most part in decisions of the commissioners and courts 
concerning the form of claims, intended to render them 
clear, definite and unambiguous. A brief consideration 
of these rules will now claim our attention, but no at- 
tempt will be made within the limits of this paper to dis- 
tinguish between those matters which are considered 
merely formal and subject to petition and those which 
go to the merits and are subject to appeal. 

Whenever an article of manufacture or composition of 
matter, or other product, such as motion, heat, light, etc., 
is produced, some method or way of producing it has 
been employed and possibly some machine for perform- 
ing the method. Patentable invention may reside in the 
article of manufacture, in the composition of matter, in 
the method or in the machme, or in two or more of these, 
the test for invention being the unobviousness of each, 
as the case may be, to one skilled in the art. 

It is essential to correctly determine the statutory 
class to which the invention belongs and to so word the 



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Journal of the Patent Office Society. 289 

daim as to unequivocably indicate it. (Robinson, Sees. 
511, 518.) There is no middle ground such as the use or 
employment of a thing. {Ex parte Mayall, 1873 C. D., 
134;4 0.G., 210.) 

An article should not he defined hy the process of ef- 
fecting it. {Ex parte Trevette, 1901 C. D., 170; 97 0. G., 
1173.) But where it can not be properly defined and 
differentiated from the prior art otherwise than by ref- 
erence to the process of producing it, a proper excep- 
tion to the rule arises. {Ex parte Painter, 1891 C. D., 
200.) The reason for this obviously lies in the fact that 
ordinarily it is immaterial to the product, as such, by 
what process it was produced, but where reference to 
the process is the only expedient way of defining the 
final characteristics imparted to the article, then it may 
be admissible. Where it is apparent what the applicant 
is attempting to claim, but he claims it in the wrong 
statutory class the Office may call attention to the error 
and permit the applican't to so change the phraseology 
of the claim as to bring it within the proper statutory 
class. {Ex parte Trevette, supra.) But it is otherwise 
where the invention claimable in one statutory class is 
distinct from that claimable in the other. {Ex parte Ab- 
erli, 1900 C. D., 95; 91 0. G., 2371.) 

No fixed form is prescribed for claims. (Corn Planter 
Patent, 23 Wall., 181; 6 0. G., 392.) 

In the contemplation of the law, ea^ch claim is a com- 
plete and independent invention. (Railroad Supply Co. 
V. Hart Steel Co., et al., 222 F., 261.) 

Formerly it was held that a claim should be complete 
in itself and should not refer to the specification or other 
claims for limitations thereof, but in ea? parte Brown 
(235 0. G., 1355), Assistant Commissioner Clay held that 
a daim might refer to the combination set up in a pre- 
ceding claim, with a statement of the structural feat- 
ures distinguishing it therefrom, as in the English prac- 
tice. The advantages of this form of claim, properly 
practiced, are that it clearly points out the respect in 
which the claim is distinguished from the others, thus 
tending to the elimination of unnecessary claims, and is 
self-analyzing and self-classifying, facilitating examina- 
tion and the determination of questions of division. 



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290 JOUBNAL OF THE PaTBNT OfPIOH SoOIBTT. 

The primary requisite of a daim is definiteness. The 
sin of granting a daim that is too broad may be forgiv- 
en but that of granting a daim in vague, indefinite, am- 
biguous or inaccurate form can not be. Members of the 
public are entitled to know exactly what the patentee 
meant to cover in his daims and should not unnecessar- 
ily be put to the exi)ense of a suit or suits in order to 
have a daim construed by the courts, perhaps in several 
different circuits, with the result tiiat the daim may 
mean one thing in one circuit and something different in 
the others. Much of the labor imposed upon the OflSce 
tribunals, particularly in i/nter partes cases, and upon 
the courts, results from the vague and ambiguous word- 
ing of claims. It is unfortunate that a large part of the 
Office force is never brought face to face with the evils 
resulting from the allowaace of such daims. 

The practice of imposing, by mere interpretation or 
construction, specific or definite meanings upon generic 
or indefinite claims can not be too severely criticised. 
(Briggs V. Lillie v. Cooke v. Jones v. Taylor, 1905 C. D., 
168; 116 0. G., 871.) In this office a claim which is 
broadly drawn will be broadly read. {Ex parte Cutler, 
1906 C. D., 247; 123 0. G., 655.) 

The requirement that a claim be definite, however, 
places no restrictions whatever upon its breadth. A 
broad claim is not to be objected to as indefinite, but is 
to be treated in the light of the prior art and applicant's 
contribution thereto. {Ex parte Weaver, 1897 C. D., 
165; 81 0. G., 967.) If the invention be a pioneer one, 
as in the telephone cases (126 U. S., 1; 1888 C. D., 321; 
43 O. G., 377), it may cover substantially a whole art. 
But it is essential that the language of the claim make 
dear exactly the breadth intended. Nor is the require- 
ment of the rule that the claim be ** specific and distinct'' 
intended to place restrictions upon its breadth but only 
to exadt that the part, impro^rement or combination 
which the applicant regards as his invention be dearly 
defined. This is more apparent from the wording of 
tlie statute, upon which the rule is based, and a consid- 
eration of the reasons which led to its enactment. 

Alternative expressions render claims indefinite and 
are not permissible even though the alternative elements 



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JoUBNAIi OF THE PaTBNT OfFICB SoCIETY. 291 

are equivalents. A term sufficiently broad to include 
both elements should be used. Such expressions as **e. 
g.^% *' brush or equivalent device*', ** brick or the like", 
are alternative and indefinite. {Ex parte Grundy, 63 
M. S., 219; ex parte Cook, 1890 C. D., 81; 51 0. G., 1620; 
ix parte Caldwell & Barr, 1906 C. D., 58; 120 0. G., 2125.) 
Parenthetical expressions are also not permissible. (J57ar 
parte Cahill, 1893 C. D., 78; 63 0. G., 1815.) Where the- 
alternative devices are mere duplicates, however, the* 
objection of altemativeness is more apparent than real 
and should not be urged. It has been held that the ex- 
pression ''one or more'' may be either proper or im- 
proper, depending upon whether it is employed to des- 
ignate duplicates or otherwise. {Ex parte Hulbert, 1893 
C. D., 75; 63 O. G., 1687; ex parte Thorsen, 1893 C. D.,, 
75; 63 0. G., 1688.) 

It is essential to definiteness that all elements referred' 
to in the claim as parts of the combination should be 
directly and positively included {Ex parte Holt, 1884 C. 
D., 43; 29 0. G., 807; ex parte Vincke, 1901 C. D., 124; 
96 O. G., 2061), and that the antecedents of terms be 
clearly indicated. {Ex parte Kuhlwind, 13 Gour., 37-17, 
18 and 19, May, 1901.) 

The sa/me element should not be twice included in a 
claim. {Ex parte Horton & Keen, 1912 C. D., 276; 183 
O. G., 217.) But in ex parte Duncan, Prichard & Mc- 
Cauly (1906 C. D., 348; 124 0. G., 1207) it was held that 
where an ''actuating connection" includes as one of its 
parts a cross pin which serves also as a latch, no valid 
reason exists why the ''actuating mechanism" and the 
'* latch" should not be independently recited in the claim. 

The term ^^ means'' followed by a statement of func- 
Hon is broad and is applicable either to a single element 
or to a plurality of elements. (Lacroix v. Tyberg, 33 
App. D. C, 586; 1910 CD., 263; 150 0. G., 267.) 

XTnder the recent decision in ex parte Jepson, 243 0. 
G., 525, it is held that the introductory phrase may be 
an actual limitation of the claim if the real invention 
can not exist apart from it, and that where an applicant 
presents a claim which particularly points out his exact 
invention, there is nothing in the law to interdict his do- 
ing it by including the old parts of the structure in a 



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292 JouBNAL OP THE Patent Office Society. 

preamble set apart from the structure which constitutes 
the real invention. 

Intangible features, such as openings and holes, should 
not be claimed as independent elements but should be 
included as features of construction of the elements in 
which thev are located. {Ex parte Davin, 1902, C. D., 
251; 100 6. G., 452.) 

The hand of the operator is not properly claimable as 
an element of the combination. (In re Lacroix, 30 App. 
D. C, 299; 1908 C. D., 345; 133 0. G., 2181.) 

Where the invention is such that it can only be de- 
scribed with clearness by referring to parts of the de- 
vice with which it is associated, the latter may he indi- 
rectly referred to in the claim. {Ex parte Compos, 1912 
C. D., 255; 182 0. G., 719.) Also, things or materials 
acted upon by a machine, or other device, should not or- 
dinarily be positively included. {Ex parte Ames, 13 
Gour., 86-21, November, 1901.) Nor is it necessary to 
include in claiftis parts which are well known features 
of the apparatus to which the claims relate. (Automatic 
Switch Co., et al, v. J. L. Schureman Co., 183. F. R., 776.) 

Negative li^nitations are often not permissible because 
they are indefinite. An invention should be defined by 
what it is rather than by what it is not. (Draper Co. v. 
Stofford Co., 196 F. R., 501.) The writer is of the 
opinion, however, that this rule should not be invoked 
where the so-called negative limitation is definite, for 
instance, in the expression **a core having a winding on 
a. part thereof, a part being unwound," reference to the 
unwound part emphasizes a construction which gives 
rise to a large leakage flux from that part, and the lan- 
guage indicated would appear to define the construction 
with clearness and definiteness. 

A claim should set forth the relative locations, piir- 
poses or functions of its elements whereby an operative 
device is effected. {Ex parte Hamilton, 1898 C. D., 273; 
85 0. G., 1742.) In order to render a claim to a combi- 
nation valid it is not sufl5cient that it be based upon the 
disclosure of a device whose parts cooperate, but it is 
necessary that this relationship be set forth in the claim 
itself. (Thatcher Mfg. Co., et al., v. Burtis, et al., 121 
U. S., 286; 1887 C. D., 320; 39 0. G., 587.) A claim 



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Journal of the Patent Office Society. 293 

which is a mere catalogue of parts is objectionable. It 
is as it were ai, storehouse into which one might go and 
from the elements that one finds there construct any 
one of a number of independent inventions. Such a 
claim does not *' particularly point out and distinctly 
claim '^ the invention of the applicant so as to distinguish 
it from other inventions that might involve different 
arrangements or functions of the same elements. Claims 
of this character frequently give rise to the declaration 
of interferences where no interference in fact exists. 
(Poddlesak & Poddlesak v. Mclnnerney, 26 App. D. C, 
399; 1906 C. D., 558; 120 0. G., 2127; ex parte Cutler, 
supra.) The many evils to which they give rise come 
to the attention of the Office to some extent in interfer- 
ence proceedings, but it is more difficult for the Office 
to appreciate the hardships they inflict upon the public 
and the burdens they impose upon the courts. 

A claim should further set forth all the essential ele- 
ments necessary to make a complete device operative 
for the purpose intended (Rule 133), or to effect any 
function alleged therein. A common failure to comply 
with this requirement is illustrated in the use of the 
'* whereby^* clause in a claim which does not include suf- 
ficient structure to accomplish the result stated. {Ex 
parte Kotler, 1901 C. D., 62; 95 0. G., 2684.) The latter 
case should be distinguished from fhat wherein the term 
** means,'' or similar comprehensive structural limita- 
tion, is limited by a function clause beginning **where- 
by.'^ 

Part, Improvement, or Combination. 

Little attention is given by the authorities to an indi- 
vidual treatment of the term **parf,'' possibly for the 
reason that this term is self-explanatory, but Eobinson 
(Sec. 210) defines an ^Hmprovement^' as: 

an addition or alteration in some existing means, which 
increases its efficiency without destroying its Identity, 

and he defines a ^^comhmation'^ as: 

a union of elemental means in a mode of cooperation, and, 
as such, it' necessarily performs functions into which all 
its elements enter as operative elements and produces 
results which depend upon the presence and action of 
every one of the elements combined. (Sec. 156, Note 2.) 



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294 Journal of the Patent Office Society. 

Closely associated with these terms in the analysis of 
daims is that of ^^ aggregation^' w'hich is defined by the 
Supreme Court in Hailes v. Van Wormer* (20 Wall., 
353; 5 0. G., 89) as: 

the grouping together devices, in which each produces its 
customary effect, unmodified by the others, and no more, 
and no result follows from the union which was not pre- 
viously produced by some of the elements, 

and the term ''equivalent which is defined by Robin- 
son (Sec. 247) as: 

an act or substance which is known in the arts as a prop- 
er substitute for some other act or substance employed 
already as an element in an invention, and whose substi- 
tution for that other act or substance does not in any 
manner vary the idea of means. 

E. S. 4888 requires that the applicant point out the 
part, improvement, or combination which he cUmns as 
his invention and Rule 37, in different language but evi- 
dently with the same meaning, requires that the applicant 
point out the part, improvement, or combination wMdi 
he regards as his invention. In other words, this sec- 
tion of the statutes and the rule place the primary re- 
sponsibility of locating the boundaries of his invention 
upon the applicant himself, where it properly belongs. 
The Office, however, is not relieved of the duty of re- 
quiring that the claifii be limited to the real invention 
present, irrespective of the applicant's opinion, for Sec- 
tion 4893 of the Revised Statutes provides that the Of- 
fice shall make an examination of the alleged invention 
and if it appear *Hhat the claimant is justly entitled to 
a patent under the law,'* it shall be granted. Now, un- 
der the law, it is for invention only that the grant of a 
patent monopoly is authorized (Const Art. 1, Sec. 8; R. 
S. 4886; Rule 24), and the last clause of Rule 36 requires 
that the claim '*be confined to the specific improvement 
and such parts as necessarily cooperate with if 

Bearing upon this question, the Supreme Court in 
Keystone Bridge Co. v. Phoenix Iron Co. (95 U- S-, 274; 



*(For other decisions on aggregation see Reckendorfer v. Pa- 
ber, 92 U. S., 347; 1876 C. D., 430; 10 O. G., 71. Pickering ▼. 
McCulIough, 104 U. S., 310; 1882 C. D., 28; 21 O. G., 73.) 



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Journal of the Patent Office Society. 295 

1877 C. D., 384; 12 0. G., 980), after noting that the stat- 
utory requirement for the filing of daims was for the 
purpose of relieving the courts of the task of ascertain- 
ing the invention, states that, it is the duty of the Office 
to examine, scrutinize and limit the claim and make it 
conform to what the applicant is entitled to, and Eob- 
inson (Sec. 538) adds: ''The claim is to define what the 
Patent Office, after due examination, has ascertained to 
be the real discovery of the inventor/' With reference 
to an improvement, he says: ''A claim for an improvo 
ment must » » » not only define the improvement, 
like any other new invention, but also fully and accu- 
rately distinguish between it and the old invention * * 
a claim (for an improvement) should confine itself en- 
tirely to the characteristics of the improvement made. 
* * * A claim to the whole invention, when the ad- 
vance is in the improvement, is invalid.'' (Robinson, 
Sec. 534, and decisions therein cited.) 

Since, therefore, it is the office of the claim to declare 
the real invention, the claim should be limited only i > 
such features as were essentially involved in the inven- 
tive act If the invention resides only in a part, the 
part only should be claimed, if only in the improvement, 
the improvement only should be claimed, and if in the 
combination, the combination should be claimed. In- 
ventions may, of course, simultaneously reside in a part, 
an improvement and the combination. 

WhUe, in the stating, these principles are compara- 
tively simple, their practical application is not. They 
are continually the source of much vexation to the Of- 
fice and the applicant alike. A simple example will as- 
sist in fixing ideas. 

Let us assume that structures made of parts secured 
together by fastening means are unknown and that one 
conceives the idea of a box having bottom, ends and 
sides made of flat wooden pieces, and some means, such 
as nails, for securing the parts together. He would be 
entitled to a claim commensurate in scope with his con- 
ception, as follows: 

1. A container comprising side members, end mem- 
bers, and bottom members and means holding the same 
together. 



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296 Journal of the Patent Office Society. 

Since the nails coact in a special maimer with each 
pair of adjacent parts to form rigid joints, and the ar- 
rangement was not obvious before the inventor suggest- 
ed it, he would also be entitled to the following claim: 

2. A structure comprising separate portions placed 
edge to edge and securing means passing through one 
iwrtion and embedded in the other. 

Likewise, if the nail was provided with a head, he 
would be entitled to a similar claim which specifies that 
*'the free end of the securing means ^^ was enlarged to 
engage the surface of one of the portions, to prevent it 
being drawn through the material. 

Now in all of these cases we have attempted to ex- 
press the elements of the combinations, and the combi- 
nations themselves, in as broad terms as was possible 
and at the same time bring out the essential idea of co- 
operative relationship existing between the parts of the 
combination. The reason for this is that the broad con- 
cept of cooperative relationship was the real invention 
so far as the combinations -were concerned and specific 
detail was immaterial thereto. For instance, the idea 
of cooperative relationship in claims 1 and 2 was not 
concerned with the specific characteristics of the nail 
employed. Further, the idea of cooperative relationr 
ship between the nail as a fastening means passing 
through one portion and embedded in another, as set out 
in claim 2, was not concerned with the entire box con- 
struction but only with two of its portions and the nail. 
Claim 2 was therefore limited to the latter subcombina- 
tion. {Ex parte Baker, 1912 C. D., 291; 183 0. G., 505.) 

Continuing our illustration, let us assume that later 
another (or even the same inventor) devises the cut nail 
or wire nail for use where the hand-forged naU was 
used before. Clearly it would not require the exercise 
of the inventive faculties to substitute the former for 
the latter in the box construction, since no new principle 
of cooperative relationship in box combinations is in- 
volved thereby. This would be the mere substitution of 
a new mechnical equivalent in an old combination. The 
new invention, .therefore, resides in the new form of nail, 
per se, rather than in the combination, and should be so 



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Journal, of the Patent Office SociBTr. 297 

claimed. It would appear, however, that the box as fas- 
tened together with cut or wire nails constitutes a com- 
bination satisfying the definition of ** combination/^ But 
it is not patentable over the prior box combination be- 
cause its production did not involve the exercise of the 
inventive faculties. It is an unpatentable combination 
and, under section 4888 of the Revised Statutes, a claim 
drawn thereto should be rejected on the ground that it 
does not /^particularly point out the part or improve- 
ment^' which constitutes the real invention, the latter 
residing in the element and npt in the combination as a 
whole. 

From these observations the principle is dear that 
the substitution for an element or group of elements in 
an old combination of a/nother element or group of ele- 
ments,, old or new, for performing the same fv/nction, 
does not render the combination patentable where it did 
not require invention to conceive the cha/nge or there is 
no new result produced thereby. This principle finds 
most ready application in cases where the substituted 
part or subcombination is a distinct article of manufac- 
ture of general utility. {In re McNeil, 20 App. D. C, 
294; 1902 C. D., 563; 100 0. G., 2178; Langan v. Warren 
Axe & Tool Co., 184 F. E., 720; 1911 C. D., 490; 166 0. 
G., 986; Underwood v. Gerber, 149 U. S., 224; 1893 C. 
D., 340; 63 0. G., 1063.) An applicant will not be per- 
mitted to include in his claims the real invention and in 
addition thereto elements which do not cooperate there- 
with to produce a new result. {Ex parte Griffith, 1898 
C. D., 233; 85 O. G., 936; ex parte Whitelaw, 1915 C. D., 
18; 219 O. G., 1237.) And this is true whether or not he 
has other claims covering only the real invention. {Ex 
parte Lahue, 1902 C. D., 357; 101 0. G., 448.) A claim 
should not be allowed merely because of a prolixity of 
elements. {Ex parte lagan, 1911 C. D., 10; 162 0. G., 
538.) 

Recurring to our illustration, it must not be inferred 
that a specific form of fastening means could never be 
specifically claimable in a box structure, for, assume that 
one conceives the idea of using bolts instead of nails, 
the end of the box being set within its sides and bottom, 
and a bolt being passed diagonally through each comer 



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298 Journal of the Patent Office Society. 

so that its head engages one side of the box and the nut 
engages the bottom, clamping the parts of the box be- 
tween them. This would produce an effective comer 
fastening, and since there is a new and previously unob- 
vious cooperative relationship of parts, the combination 
specifically defined would be patentable over the prior 
constructions. Thus, where a new element coacts with 
the other elements of the combination in a different man- 
ner from the corresponding elements of the old combi- 
nation, the decisions referred to (McNeil, etc., supra) 
do. not apply. {Ex parte Mumford, 1914 0. G., 84; 206 
O. G., 878; ex parte Baker, supra.) 

Pursuing our box illustration further, assume that 
castors are invented for attachment to the bottom of the 
box to permit it to be readily moved, and a lock for its 
lid is also invented to prevent others from tampering 
with its contents. A claim is asseiied for a box struc- 
ture provided on its bottom with castors and having a 
lock for the lid. Clearly here we have no cooperative 
relationship between the castors and the lock. But, 
rather, they constitute a mere assemblage of elements 
which do not cooperate to produce any unitary result. 
Such an assemblage is an aggregation. 

The decisions have been by no means uniform or con- 
sistent in their use of the term ** aggregation, *' it being 
frequently employed to designate what has been analyzed 
above as an unpatentable combination, but the distinc- 
tion sought to be drawn between the two in this paper is 
believed to be fundamental. {Ex parte Baker, supra; 
Krell Auto Grand Piano Co. v. Story & Clark et al, 207 
r. R., 946; 1914 C. D., 246, see particularly page 251, 11.) 

The principles governing the construction of claims, 
to which we have been directing our attention, are gen- 
erally applicable to the several statutory classes of in- 
vention. A frequent occasion for their application to 
method claims arises from the inclusion of structural 
limitations therein. Often — though it is believed, not 
always — it is immaterial so far as the steps of a method 
are concerned by what means they are performed and in 
such case the inclusion of such means is improper. Al- 
so, it is immaterial to a method that one or more of its 
steps are performed ** automatically" since the method 



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Journal op the Patent Opfiob Society. 299 

is the same whether the steps are performed »automati- 
oaJly or by hand. Where the invention involves a meth- 
od of operating mechanism the latter must, of course, be 
referred to in the claim. 

The practice outlined above, properly applied, is a 
most salutary one since it provides the maximum of pro- 
tection with a minimum number of claims, if no error is 
made in its application. It also greatly facilitates class- 
ification and search. There are few evils in our patent 
system greater that the unnecessary multiplication of 
claims brought about by the inclusion of unessential lim- 
itations and obscure distinctions which lead to ambigu- 
ity and deception of the public. Such claims fail to 
comply with the statute which requires that the inven- 
tion be pointed out particularly and distinctly. The in- 
ventor himself suffers by reason of this practice which 
has been repeatedly condemned by the OflBce and the 
courts, because the doctrine of equivalents is less liber- 
ally applied and the terms of the claims more strictly 
construed in such cases. {Ex parte Chapman, 1906 C. 
D., 79; 120 0. G., 2446; and decisions therein cited.) 

Frequently an applicant inadvertently restricts his 
monopoly by unnecessarily limiting his claims and is 
glad to have his attention called to the fact. He may 
even lose his entire monopoly by claiming his real inven- 
tion in combination with other elements, as in the case 
of Langan v. Warren Axe & Tool Co. and Underwood v. 
Gerber, supra. On the other hand, the element or sub- 
combination may be a matter of secondary considera- 
tion (or even be eventually determined to be old) and 
the value of the invention may lie in the combination, 
which, if unobvious, is clearly patentable, whether the 
parts be new or old. In analyzing claims, great care 
should therefore be exercised not to apply the doctrine 
of equivalents superficially. Eejections on the broad 
ground of aggregation, unpatentable combination, func- 
tionality and the like, should give place to a particular 
analysis of the claim and a statement of specific reasons 
why it is believed that the claim fails to point out an in- 
ventive act. Often the full equivalence of an old to a new 
element in a combination is more apparent than real 
and to deprive the inventor of the combination may be 



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300 Journal of the Patent Office, Society. 

to deprive him of an invention of intrinsic merit. To 
illustrate, in the light of our present knowledge, a screw 
would ordinarily be held the substantial equivalent of a 
nail. But it is not an exact equivalent because it pos- 
sesses the distinct advantage that two parts secured to- 
gether thereby are positively clamped between its head 
and threads, the latter acting as wedges to force the 
parts together as the screw is driven home, which action 
is absent in the case of the nail. Now suppose that the 
inventor who first suggested this combination had been 
rejected on the ground that his invention resided in the 
screw per se and had accordingly limited his claims to 
the latter and taken his patent. Subsequently it devel- 
oped that the screw had been previously employed as a 
peg on which to hang articles, it having the advantage 
that it would not pull out, but that its utility as a clamp- 
ing device to secure parts together had occurred to no 
one before the patentee suggested it. Since the mere 
use of a device is not patentable, in no case could claims 
of the patent limited to the screw per se be held valid 
even though it may be admitted that the use of the screw 
in the combination involved invention over its use as a 
peg. In view of the difficulty of foreseeing what light 
may be thrown on an invention by subsequently devel- 
oped art, in case of doubt it is better to allow both com- 
bination claims and claims to the subcombination, for if 
an error is made in allowing claims of doubtful patent- 
ability it can be corrected by the courts, whereas if a 
claim be improperly rejected irremediable injury may 
result to the applicant. 

An analogy is found in the case of the U. S. Repair & 
Guaranty Co. v. The Assyrian Asphalt Co. (U. S. Su- 
preme Court, 1902 C. D., 575; 98 0. G., 582), involving 
a method of repairing asphalt pavements by applying 
heat at the edges of the excavation. Here the applicant 
canceled a claim to the use of a ^' blast of heat,'* as one 
of the steps, in response to a criticism of the Office, re- 
taining a claim to the use of *^heat.'' Suit was brought 
on the patent which eventuated, and the use of heat 
broadly was shown to be old. It was thereupon urged by 
the patentee that the ^* blast of heat" was the important 
thing but it was held that he could not rely upon this 



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Journal op the Patent Oppiob Society. 301 

allegation to sustain his claims which were not so limit- 
ed. The possibility of such contingencies is contemplat- 
ed in ex parte Pease (1914 C. D., 48; 202 0. G., 631), 
wherein it is stated : 

The limitation "combustible fabric" excludes many ma- 
terials ♦ ♦ ♦ which are inappropriate for applicant's 
purposes, and by excluding such fabrics applicant has 
more accurately defined his invention than by including 
them. 

It is further stated in the last mentioned decision that 
*'it has always been the policy of the OflBce to allow 
some latitude to applicants in drawing their claims, since 
applicants and not the Office will be eventually held re- 
sponsible for what is expressed therein." Where the 
privilege is not abused, the Office is more liberal in con- 
struing differences between claims in one application 
than between 'claims in different applications, although 
strictly the tests of patentability are the same. {Ex 
parte Griffith, supra.) The reason for greater liberality 
in the former case is that if the claims are in fact not 
patentably different, nevertheless no extension of the 
monopoly can result if both are allowed in the one ap- 
plication, whereas it may be otherwise if they are al- 
lowed in different applications. 

The prpper analysis of claims in the effort to locate 
the invention calls for the exercise qf the keenest dis- 
cernment and mature judgment on the part of the ex- 
aminer in order that full justice may be meted out to 
the applicant and the public alike. 

Functional Limitations: 

Few questions arise, in the consideration of claims, 
about which there is a greatey divergence of views and 
practice than those concerning the propriety of combi- 
nation claims having one or more of their elements de- 
fined as meoMs limited by a function. The criticism is 
frequently made that such claims are * 'functional and 
indefinite," and they have sometimes been objected to 
and sometimes rejected on this ground. Only a general 
outline of the cases bearing on the question can be given 
here and for a more complete understanding of the man- 



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302 Journal of the Patent Office Society. 

ner in which the subject is treated by them recourse 
should be had to the decisions themselves. 

In Morley Sewing Machine Co. v. Lancaster (129 U. 
S., 263; 1889^0. D., 380; 47 0. G., 267) the Supreme Court 
held that where the patent involved a pioneer invention, 
a claim consisting of a series of means functionally lim- 
ited was valid. (See also Paper Bag Patent Case, 210 
U. S., 405; 1908 C. D., 594; 136 0. G., 1297.) 

It has generally been held that where the idea is clear- 
ly expressed the breadth of the statement in such claims 
is no reason for objecting to it. {Ex parte Halfpenny, 
1895 C. D., 91; 73 O. G., 1135; ex parte Knudsen, 1895 
C. D., 29; 72 0. G., 589; ex parte Bitner, 1909 C. D., 132; 
140 0. G. 256.) 

In in re Gardner (1909 C. D., 306; 140 0. G., 258; 32 
App. D. C, 249) claims of the following type were be- 
fore the court: 

In combination in a vapor-register, a dial upon which 
are marked pressures and heat characteristics and a de- 
vice for automatically indicating on said dial simultaneous 
pressures and heat characteristics. 

The court held that such a claim, while in the form of a 
combination, in effect covered all means for accomplish- 
ing the function or result stated, and was therefore un- 
patentable. 

It has frequently been held in leading decisions that 
the word *' means" or ''mechanism" may be properly 
used to designate the so-called ** adjunctive" or ''secon- 
dary" or "old" elements, but that to use them to desig- 
nate that portion of the claim in which the invention re- 
sides renders the claim functional and subject to rejec- 
tion. {Ex parte Paige, 1887 C. D., 71; 40 0. G., 807; ex 
parte Pacholder, 1890 C. D., 55; 51 O. G., 295; Westing- 
house V. Boyden, 170 U. S., 537; 1898 C. D., 443; 83 O. 
G., 1067; Davis Sewing Machine Co. v. New Departure 
Mfg. Co., 217 F. R., 775; 1915 C. D., 180; 212 0. G., 1057.) 
It appears to the writer, however, that the problem is 
not one of novelty or of invention residing in the func- 
tionally limited element, or of the importance of the 
element in the combination, and that to consider it as 
such departs from the fundamental principles underly- 



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Journal op the Patent Office Society. 303 

ing the theory of our claim structure. We have already 
seen in our box illustration (claims 1 and 2) that the 
purpose of a functionally limited element in a combina- 
tion claim is merely to cover the range of all equivalent 
elements which can be used to produce the same effect in 
the combination, thereby avoiding unessential limita- 
tions. For instance, in claim 2 of oyr illustration, if in- 
stead of the functionally limited element, '* means pass- 
ing through one portion and embedded in the other,*' 
one of the equivalents, say the nail, were specifically in- 
cluded, the combination, in so far as its ability to accom- 
plish its ultimate result is concerned, would be unaffect- 
ed. The claim would have the defect, however, that it 
was unduly limited since it would fail to cover other 
equivalents of the nail in the combination. The rule 
governing the propriety of functionally limited elements 
in combination claims, it would appear, therefore, should 
not be different from that governing the propriety of 
structurally limited elements. In each case the combina- 
tion would appear to be patentable to the extent that 
there exists a new and unobvious cooperative relation- 
ship between the several elements as defined. Moreov- 
er, it is well settled that a combination claim does not 
assert novelty or invention in any of its elements, but 
only in the cooperative relationship set up between them. 
(Ritter V. S. S. White Dental Mfg. Co., 228 F. R., 301; 
1915 C. D., 297; 220 0. G., 349; Underwood v. Gerber, 
supra.) Whether, then, an element or subcombination 
structurally or functionally limited is new or old, we 
may, for the purpose of the combination, treat it as old. 
To make functionally limited elements an exception to 
this rule would be to penalize an inventor because in in- 
venting the combination he found it necessary first to 
invent the subcombination or element, for had he found 
the latter old in the art the objection of functionality 
would not have been raised against him, although the 
invention expressed in the combination would remain 
unchanged. 

It would accordingly appear that the real question to 
be determined in the consideration of claims involving 
means or mechanism as elements, is not one of func- 
tionality but of the cooperative relationship of parts and 



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304 JOUBNAL OF THE PaTENT OfFICE SoCIETY. 

the obviousness of the combination, assuming for the 
purpose of determination that all the elements are old. 
Should it be held that there was a new cooperative re- 
lationship of parts and that the idea of combination ex- 
pressed in the claim was an unobvious one prior to its 
suggestion by applicant, then the claim would be a pat- 
entable combination; if, on the other hand, a new coop- 
erative relationship were lacking or the idea of combi- 
nation expressed in the claim was obvious, the claim 
would cover an unpatentable combination and should be 
rejected. This test, applied to the Gardner claim, supra, 
would result in the finding that since it was old to com- 
bine indicating dials with actuating elements of every 
description, there was no invention in the idea of com- 
bining an appropriate dial with an actuating device for 
automatically indicating thereon simultaneous pressures 
and heat characteristics, and the claim is therefore un- 
patentable. 

A claim which covers all devices or methods for ac- 
complishing a result or which attempts to monopolize a 
principle of nature, rather than set up a combination of 
means or steps of a method whereby the result may be 
accomplished or whereby the principle of nature may 
be utilized, is invalid since it is broader than the inven- 
tion. It states the problem but not its solution. (O^Beil- 
Iv V. Morse, 15 Howard, 62 ; Hildreth v. Lower, et al., 204 
F. E., 792; ex parte Bullock, 127 0. G., 1580; 1907 C. D., 
93; 127 0. G., 1580.) Also a claim to a combination of 
elements may be broader than the disclosure of inven- 
tion (Incandescent Lamp Patent, 159 U. S., 465; 1895 C. 
D., 675 ; 73 0. G., 1289 ; in re Dosselman, et al., 37 App. 
D. C, 211; 1911 C. D., 379; 167 0. G., 983), but the latter 
principle should be applied with discretion. {In re Ellis, 
37 App. D. C, 203; 1911 C. D., 374; 167 0. G., 981.) The 
theory of combination claims, as already set forth, is 
that an inventor is entitled to all fair equivalents of the 
elements or subcombinations of the combination disclos- 
ed by him, and it is for this reason that generic claims 
are permissible. Without them patents would be value- 
less, for infringement of a meritorious invention could 
be readily avoided by a substitution of equivalents. An 
inventor is therefore entitled to a claim as broad as his 



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JOUBNAL OF THE PaTBNT OfPIOB SoCIBTY. 305 

idea of combination and in the case of pioneer inven- 
tions is, of course, entitled to a wide range of equiva- 
lents. (Telephone Cases, supra.) 

An illustration of these principles is found in the use 
of the word ** automatic^' as applied to an element of a 
machine. A claim containing such a limitation broadly 
has been held by the Board of Examiners-in-Chie^ to be 
unpatentable because it covers all automatic machines 
capable of performing the same function and does not 
point out any novel feature of invention (Huber patent 
No. 857,283). Where, however, the element was stated 
by the claim to be automatic in response to or irrespec- 
tive of certain specific conditions recited as a functional 
limitation, it was held by the First Assistant Commis- 
sioner (now Commissioner) Newton that rejection on 
this ground was not applicable (Caseo patent No. 1,160,- 
857). The patentability in the latter case would, of 
course, depend upon the unobviousness of the relation- 
ship set up by the functional limitation. 

Summary : — 

We may summarize the conclusions deduced from our 
consideration of claims, as follows : 

(1) The mere substitution of an element or subcombi- 
nation, whether it be new or old, for its equivalent, in 
an old combination is not patentable. 

(2) If the elements or subcombinations bear a new 
and unobvious cooperative relationship to each other, or 
if the substitution of the new element produces a new 
and unobvious result in addition to the old result, the 
combination is patentable. 

(3) Where the invention resides solely in the subcom- 
bination it should not be claimed in combination. 

(4) Combination claims including as elements means 
or mechanism limited by function may be patentable or 
unpatentable, dependent upon the effect of such ele- 
ments, as defined, in the combination, in accordance with 
the p^nciples stated under (2). 

(5) Claims to a principle of nature or to a result or to 
all means for producing a result are unpatentable. 

While I have not viewed Rule 37 as applying to ques- 
tions arising in connection with the rejection of claims 



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306 Journal of the Patent Office Society. 

on prior art, the general rule for the rejection of com- 
bination claims on a combination of references is so 
closely related to the questions which we have been con- 
sidering that I will quote the following statement of 
principles governing the same, from ex parte McCoUum 
(1914 C. D., 70; 204 0. G., 1346) : 

When legitimate combination claims, such as those ap- 
pealed, are rejected on two or more references, the trend 
of the best authorities indicates that at least one of the 
references ordinarily should show the general combina- 
tion claimed. 



Legitimate combination claims are for constructions or 
mechanisms for performing a function, and it is improper 
to reject them on ideas extracted from various references 
unless those ideas are accompanied by constructions that 
may be put together without so changing them as to re- 
quire invention to adapt them to perform the desired re- 
sult. 

In determining the patentability of a claim over feat- 
ures found only in a plurality of references it Is necessary 
to consider the structural differences specified in the 
claims, as well as their functional difference or result. 
If the structures of the several references can not be com- 
bined without the exercise of invention, even thougii the 
result is old, the claim should be allowed. If the struc- 
tures of the references may be combined or substituted 
one for the other and the combined function or result is 
new, the claim should be allowed. It is only when both 
the structural features found in the references may be 
combined without invention to meet the structure called 
for by the claim and the function or result involves no 
invention that the claim should be rejected. 

In our treatment of claims over and above all else is 
the principle that if one has done an unobvious thing — 
has made an invention — he is entitled to a patent there- 
for, and no strict application of rules should be allowed 
to deprive him of his rights. (Miehle Printing Press & 
Mfg. Co. V. Whitlock Printing Press Co., 223 F. E., 647; 
1915 C. D., 284; 218 0. G., 1155; American Ball Bearing 
Co. V. Finch, 239 F. E., 885.) 

Invention is a mental act, not a physical one. Uisually 
the invention is in the idea of adaptation rather than in 
the physical changes necessary to carry it out, the latter 
being obvious after the suggestion is made. (Hobbs v. 
Beach, 180 U. S., 383; 1901 C. D., 311; 94 0. G., 2357; 



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Journal of the Patent Office Society. 307 

Potts V. Creamer, 15 Sup. Ct., 194; 155 U. S., 597; 70 0. 
G., 494; Topliff v. Topliff, 145 U. S., 156; 1892 C. D., 
402; 59 0. G., 1257.) The test of inventioxi should not 
be, could one skilled in the art, after seeing the inven- 
tion, assemble the parts of specially selected references 
in the manner taught by the invention undergoing test, 
but, rather, would he, without knowledge of the inven- 
tion, be led to make the selection of the particular refer- 
ences from the entire art and modify and combine them 
in the manner taught by the applicant, without the ex- 
ercise of his inventive faculties. (Ideal Stopper Co., 
et al.y V. Crown Cork & Se^l Co., 131 F., 244; Faries v. 
Brown, 57 C. C. A., 609.) In the words of the court in 
the latter case: **The eye that sees a thing already em- 
bodied in mechanical form gives little credit to the eye 
that first saw it ih the imagination. But the difference 
is just that between what is common observation and 
what constitutes an act of creation. The one is the eye 
of inventive genius; the other of a looker on after the 
fact.'^ 



ANNUAL MEETING OF THE PATENT OFFICE 
SOCIETY. 



The annual meeting of the Society was called to order 
by President Coulston at 4:30 P. M. in the south hall, 
third floor of the Patent Office building, January 23, 
1919, a good representation of the Society ^s member- 
ship being present. 

The President briefly reviewed the work done during 
the past year, mentioning specifically the purchase of 
a moving-picture machine and the use thereof in the 
public meetings held and lectures given; the series of 
papers read by primary examiners and other officials 
before and for the benefit of the new assistant exam- 
iners; the establishment of the Journal of the Patent 
Office Society; the maintenance of relations with the 
Patent Committee of the National Research Council and 
the attendance of members of the Society upon conven- 
tions in Atlantic City, Baltimore and Richmond. All 
these activities were commended and renewed efforts 
along similar lines urged for the coming year. 



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308 Journal op the Patent Office Society. 

The President announced receipt of copies of the re- 
port of the Patent Committee of the National Beseardi 
Council, and it was voted to refer the report to the Ex- 
ecutive Committee of the Patent Office Society for eariy 
consideration. 

The report of the Treasurer of the Society showed a 
balance on hand of $701.72. ' 

On motion of the chairman of the Membership Com- 
mittee, Hon. Thomas Ewing was unanimously elected the 
first honorary member of the Society, and upon further 
motion by the same chairman, the following gentlemen, 
comprising the other members of the Patent Committee 
of the National Eesearch Council, were also unanimous- 
ly elected honorary members: Dr. Wm. F. Durand, Dr. 
L. H. Baekeland, Dr. M. I. Pupin, Lt. Col. E. A. Milliken, 
Dr. S. W. Stratton, Dr. Eeid Hunt, Mr. F. P. Fish, and 
Mr. E. J. Prindle. 

The annual election of officers of the Society and mem- 
bers of the executive committee was held during the 
session with the following result : 

President, M. H. Coulston ; Vice President, J. H. Light- 
foot; Secretary, Bert Eussell; Treasurer, W. F. Avery. 

Members of the Executive Committee: A. W. Cowles; 
E. S. Glascock; G. A. Lovett; C. H. Pierce; M. E. Port- 
er; E. D. Sewall; W. L. Thurber; W. J. Wesseler. 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Ofllce Society 

Office of Publication 1315 Clifton St., Washington, D. C. 
Subscription $2.50 a year Single copy 25 cents 

EDITORIAL BOARD. 

£. D. Sewall, Chairman, Publicity Committee. 

G. P. Tucker, Editor-in-Chief. 

J. Boyle. 

A. W. Davidson. 

W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 

1315 Clifton Street, Washington, D. C. Phone Col. 290. 
N. E. Eccleston, Circulation. 

Entered as second class matter. September 17, 1918, at the poet oflloe 

at Washington, D. C, under the act of March 8, 1879. 

Copyright, 1919, by the Patent Office Society. 



Publication of signed articles in this journal Is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 

VOL. I. MARCH, 1919. No. 7. 

EDITORIAL. 



From various sources of late, charges have been made 
that the Patent Office has been granting patents for 
chemical inventions where the disclosure was insufficient 
to enable any one skilled in the art to carry out the pro- 
cess described therein and that such a situation exists 
particularly with respect to certain foreign-owned pat- 
ents. 

A careful inquiry on the part of some of the officials 
of the Office has failed to reveal any substantial ground 
for the complaint. Being interested in the weKare of 
the patent system, this Journal would welcome more 

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310 Journal of the Patent Office Society. 

specific information on this point in order that if the 
alleged evil amounts to or indicates an intentional prac- 
tice, initiated by certain inventors and carried on with 
the connivance of certain attom-eys, a proper investi- 
gation may be made. It is with the hope and in the 
spirit of the fullest cooperation that the invitation is ex^ 
tended to furnish more specific information on this 
point. 



It is a law of Nature that matter and energy tend to 
persist without change unless acted upon by a modify- 
ing energy; and that law extends to sentient beings. 
Habit and custom are within it. Eternally, however, 
modifying forces are at work tending to change condi- 
tions. Habits and customs beneficent at one period, 
may, owing to changed environment or association, be- 
come malefic, — still they tend to persist. There are no 
sterner adversaries of progress. Anachronistic laws 
and customs must yield, however, in good time to the 
thought of the thinker backed by the will of the worker, 
or, belated, fall under the revolutionary acts of the 
multitude. Many, heedless of the history of the growth 
of science, flout the reformer as academic or theoristic. 
Nevertheless, the theorist will continue his blessed theo- 
rizing and his disciples will furnish the energy to attain 
in time the goal of progress. 

There are customs and statutes affecting the patent 
system deemed by students of patent law to be archaic 
and imperfect. Suggestions of improvement have not 
been lacking, but their appeal has lacked the force to 
dislodge intrenched custom. The Journal reproduces 
herewith some notions of past days, because they are 
relevant to recent recommendations contained in a 
report of the Patent Committee of the National Re- 
search Council and to suggestions in articles by examin- 
ers of this Office, published in this number. Thoughtful 
consideration of the subjects discussed is invited. If 
the cooperative thought of those qualified to form a 
judgment on the matters presented leads to the conclu- 
sion that the suggestions or recommendations would, if 
put in practice, improve the administration or enforce- 
ment of the patent law, that same cooperative thought 
can doubtless supply the energy to overcome the inertia 
of the status quo. 



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Journal of the Patent Office Society. 311 

The suggestions and recommendations referred to re- 
late to the course of appeals in patent cases, the status 
of the Patent OflSce in the executive organization, and 
the internal organization of the Patent Ofl&ce. 

Since the passage of the act of 1836 the organization 
of courts having jurisdiction of rights under patents for 
inventions has not been improved in the interest of liti- 
gants and the general public. Conditions now are wide- 
ly different from what they were a quarter century ago. 
Patents are vastly more numerous, manufactures enor- 
mously increased, and industrial organization is widely 
changed. Under the law of 1836, the several circuit 
courts had cognizance of suits involving rights under 
patents and an appeal lay directly to the Supreme Court. 
IJnder this act, therefore, rights under a patent could be 
settled with certainty and reasonable speed. The act of 
1891, creating the circuit courts of appeal, gave original 
jurisdiction over suits involving a patent right to the 
several district courts and final appellate jurisdiction to 
the circuit court of appeals appropriate to the district 
in which the suit was brought. This act relieved the 
courts and facilitated ordinary litigation, but not patent 
litigation. Now a patent right may be brought in ques- 
tion in several jurisdictions and adjudicated differently ; 
wherefore the right may be uncertain unless and until 
the Supreme Court shall see fit to review the decisions 
below, and the uncertainty may extend over a major 
part of the life of the grant. 

The Patent Office was created as a bureau in 1836 and 
attached to the State Department. It still continues as 
a departmental bureau (although attached to another 
department) and retains substantially the original or- 
ganization and nominal relationships, notwithstanding 
the vastly changed conditions and the wide differences 
between its activities and the activities of the other bu- 
reaus associated with it in the same department. It 
has long been questioned whether this association is not 
distinctly detrimental to the efficiency and usefulness of 
the Patent Office. 

In 1836 the Patent Office was organized with a person- 
nel consisting of a Commissioner, a chief clerk, an ex- 
aminer, three clerks and one messenger. Throughout 
the progress of the intervening years this organization, 



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312 Journal, of the Patent Office Society. 

though enormously expanded, remains unchanged. Many 
more examiners, clerks and messengers have been add- 
ed; an appellate tribunal has been interposed between 
examiner and CSommissioner, and the Commissioner has 
been given the help of two assistant commissioners but 
with the same extent of jurisdiction as himself. As the 
number of examiners has increased the firmness of the 
Commissioner's grasp upon his duty to determine the 
patentability of every alleged invention presented to 
the Patent Office has necessarily relaxed. The parallel 
jurisdiction of the assistant commissioners has further 
divided responsibility on questions of patentability and 
practice. Although the Commissioner of Patents orig- 
inally commanded, as it were, a mere squad, he now 
commands an army, but has neither the emoluments of 
an army commander, nor a commander's aids to the 
efficient execution of his orders. A police force, (to draw 
a crude parallel) starting with such small beginnings, 
would have grown differently. As the constabulary 
force increased, between constable and chief, there would 
have been interposed roundsmen or sergeants, lieu- 
tenants, captains, inspectors and so on, of local juris- 
diction, through whom the reins of the organization 
would converge into the hands of the chief. Some have 
thought an improved organization of the Patent Office 
personnel, more in accord with the principles of organi- 
zation commonly found effective in large bodies of in- 
dividuals engaged in work of the same character, is 
essential to greater efficiency. 

It has been suggested that a commission having the 
dignity of a federal court, whose judgments would com- 
mand equal respect, ought to head the Patent Office. 
This suggestion is peculiarly in accord with the notion 
of the Patent Office as an independent office or commis- 
sion. Can the Iflunching of a patent be of less import- 
ance than the subsequent test of its force and validity? 
Are the duties and responsibilities of the officers em- 
powered to make the grant less valuable or important 
to the public than those of the federal judge who subse- 
quently passes upon that very grant, or would the peo- 
ple choose a cheaper or less able agent to build than to 
preserve, repair or wreck? 



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Journal, of the Patent Officob Society.. 313 

EXTRACTS FROM COMMISSIONER LEGOETT'S 
REPORT DATED FEB. 23, 1872. 



Reorganization. 

The theory of the American system is to grant only 
valid patents, and at a cost so small as to make them 
obtainable by inventors of very small income. Under 
the protection of these patents, manufacturing is open- 
ed to the inspection of the world; and when the patents 
expire, the public may understand the processes and 

make the devices. 

* * * * ft 

To give an inventor an instrument that shall afford 
him full protection for all he has invented, and yet re- 
strict him from invading the rights of the public or of 
other patentees, is, in theory, the duty of the Commis- 
sioner of Patents. To discharge this duty, however, re- 
quires such a combination of expert knowledge, legal 
attainments, judicial ability, and executive talent as is 
rarely, if ever, found in any one person. Hence, in the 
very infancy of the Patent OflSce, an examiner was ap- 
pointed to assist the Commissioner in his work. He ex- 
amined applications and reported to the Commissioner, 
and the Commissioner in person determined whether 
patents should or should not issue, and what amend- 
ments and alterations should previously be made. But 
for many years the number of applications has been so 
great as to make this personal attention of the Commis- 
sioner, except in special cases, an utter impossibility. 
* * * When an examiner decides to pass a case for 
issue tliere is no review of his decision, unless by acci- 
dent the Commissioner's attention is called to it, which 
very seldom happens, as the proceedings are secret and 
ex parte. The same is true in rejections, except when 
the applicant pays an extra fee and takes an appeal. 
The result is that many patents are issued that should 
never be granted ; others, on good inventions, are issued 
in improper form and with bad claims; and many appli- 
cations covering valuable inventions are rejected and 
lost to worthy inventors. 

With so many tribunals authorized to give final de- 
cisions there can be scarcely an approximation to uni- 



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314 Journal of the Patent Office Society. 

formity of practice on the very matter where accuracy 
and uniformity is most to be desired. This evil has be- 
come so great as to furnish to many persons an argu- 
ment against the entire system of preliminary examina- 
tions. The fault, however, I am fully convinced is in the 
organization of the examining system, and not in the 
system itself. The fault in the present organization is 
more serious and fundamental than the mere want of 

uniformity in decisions. 

• • # • # 

To briefly recapitulate: 

Our present system is defective in this: The appli- 
cants and their attorneys have direct access to the ex- 
aminers. The examiners determine all questions of fact 
and of law, and pass cases for issue or reject them^ Prac- 
tically there is no review of their decisions, except as 
appeals are taken in rejected cases. From their de- 
cisions passing cases for issue, the proceedings being 
ex parte, there is no appeal. The result is, many bad 
and interfering patents are issued, inventors and man- 
ufacturers too often are put to great and needless ex- 
pense to determine their rights, the public confidence in 
the office is diminished, and the validity of all patents 
issued is suspected. 

To remedy this, I suggest that all authority to pass 
for issue or reject be taken away from the examiners; 
that they be limited exclusively to the duty of making 
examinations; that the examiners be divided into nine 
groups; and that a competent man, educated in law, in 
science, and in mechanics, be appointed at the head of 
each group, under the designation of chief examiner, or 
such other title as may be given him by law; that the ex- 
aminers report the results of their examinations to these 
chiefs, and that chief, in his own group, determine the 
questions of passing to issue or rejection, after giving 
the party a full hearing; that appeals from these de- 
cisions be to a board of appeals, consisting of not less 
than three of these chiefs, to be selected by the Commis- 
sioner, and changed from time to time, as often as be 
may deem necessary and proper. Under this arrange- 
ment, the present board of examiners-in-chief would be 
unnecessary and could be dispensed with. The chiefs 
being familiar with patent law, each could be intrusted 



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Journal of the Patent Office Society. 315 

with the examination of interferences arising in his own 
group, and the office of examiner of interferences could 

be abolished. 

• * * * * 

Patent Office As An Independent Bureau. 

The business of the Patent OflSce is of such character 
that it is neither understood nor fully appreciated, ex- 
cept by those whose duties have brought them into close 
relations with the Office. The classification of the em- 
ployes, and the special qualifications they must possess 
to properly discharge their duties, are radically differ- 
ent from any other bureau or department. There is 
scarcely anything in the purpose for which the Patent 
Office was created, in the duties whi6h if has to perform, 
or in the plan of its organization, that is at all analo- 
gous to the bureaus with which it is associated. 

For these reasons, its connection with the Department 
has always been of the most nominal character. It has 
had all the disadvantages of such connection, with very 
few of its benefits. The duties and necessities of the 
Office are such that it seems to me they ought to stand 
out alone before the country and before Congress. I 
feel quite confident we should then get better legislation 
for the Office, and better work from it. The more rank 
and dignity that is given to an official position, the bet- 
ter men can be obtained to fill it, even at the same salary. 
A subordinate position in a bureau has so few aitrax^- 
tions, except salary, that I fear it will be difficult to ob- 
tain the services of men of the proper character, schol- 
arship, and legal attainments to fill the important and 
responsible positions suggested in a reorganization of 
the Patent Office. I would, therefore, respectfully invite 
your attention to the propriety of severing the Office from 
the Interior Department, and its establishment as a de- 
partment by itself. Until this is done it will be difficult 
ever to secure for it the legislation its importance de- 
mands, and still more difficult to retain in its subordinate 
positions the class of talent necessary to the proper dis- 
charge of its duties. 



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316 JoURNAIi OF THE PaTENT OfFICB SoCIETY. 

EXTRACTS FROM THE REPORT OF THE INVESTI* 

OATION OF THE UNITED STATES PATENT 

OFFICE MADE BY TBE PRESIDENT'S 

COMMISSION ON ECONOMY AND EFFI- 

CIENCY DECEMBER, 1912. 



. A Court of Patent Appeals. 

For several years members of the American Bar As- 
sociation and many other attorneys have oeen urging^ 
upon Congress the enactment of a law to create a court 
of patent appeals to have the jurisdiction on appeal from 
United States district courts that is now exercised by 
the circuit court of appeals of the nine circuits. Bills 
to create such a court have been introduced in Congress 
for several years and are pending at the present time. 
Patents are effective in all parts of the United States 
and its Territories. The extent of the patent, the ques- 
tion whether it is valid or has been infringed, and every 
question relating to it are subject to what is practically 
a final decision in each of the nine circuits if suits are 
brought therein. 

While this commission is not called upon to make a 
recommendation upon the subject, it invited those who 
practice before the Patent Office and others interested in 
patents, to submit their views on the question of the ad- 
visability of creating a court of patent appeals. The 
answers received indicate that the opinion is practical- 
ly unanimous that such a court should be established. 
The opinion is also expressed by some that when such a 
court shall be created, it should be charged with the 
duty now devolving upon the-Oourt of Appeals of the 
District of Columbia to hear appeals from the Patent 
Office. The one question submitted by the commission 
to the attorneys and others did not include a request 
for an opinion as to the manner in which the court 
should be constituted nor as to any details concerning 
its organization and jurisdiction. 

The commission submits no recommendation or sug- 
gestions upon the subject, as the resolution under which 
it is working does not require or contemplate that it 
shall do so. It merely states the almost unanimous view 
of the attorneys and inventors. 



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Journal of the Patent Office Society. 317 

Appeals from the Patent Office to Courts. 

There .appears to be an idea quite generally accepted 
in this countrj^ that a citizen is entitled to have any 
question of fact or of law finally decided by the judicial 
branch of the Government. So far as decisions in pat- 
ent matters are concerned, the policy of allowing every 
question decided in the Patent Office to be reviewed in a 
court, is one that has existed from the beginning of the 
patent system. It may be that the Patent Office has 
never been organized and equipped in a manner to jus- 
tify the making of its decisions on any points final and 
conclusive on the parties. It would seem that there are 
many questions which arise in or come before the ex- 
ecutive branch of the Government that could be finally 
settled by administrative officers and thus recognize them 
as administrative courts, as they really are in fact. This 
is peculiarly true of the questions arising in the Patent 
Office. They have no connection with the general bus- 
iness of the Government, and arise in the disposition of 
a class of work tliat is highly technical and requires the 
services of men peculiarly qualified and devoting their 
lives to the study of such questions. 

While the commission makes no recommendation upon 
the question of a change in the jurisdiction of the courts 
in patent matters it suggests that it would probably be 
advisable to modify section 4915 of the Revised Stat- 
utes providing the applicant with a remedy by bill in 
equity in any court having jurisdiction after his appli- 
cation is refused by the Patent Office or the Court of 
Appeals of the District of Columbia upon appeal from 
the Patent Office. It is also a serious question whether 
when parties have fought out an interference proceed- 
ing in the Patent Office and have carried it on appeal to 
the Court of Appeals of the District of Columbia, the 
final (fecision should not be binding upon all the parties 
to the interference, thus preventing the question of pri- 
ority being taken up de novo in another court. * * * 
• There is a general complaint, although the commis- 
sion is not advised as to the facts in the matter, that a 
grant of a patent is of no value to an inventor if it is to 
the interest of any person or corporation of financial 
strength to infringe it. The results after a patentee 
wins an infringement suit are often not of real benefit 



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318 Journal of the Patent Office Society. 

to him, for if he survives the suit the actual recovery of 
adequate damages is exceptional. 

It would seem that the remedy for many of the diffi- 
culties of the present situation regarding patents will 
be found in the development of the Patent Office as an 
administrative court in which all questions relating to 
patents, excepting the question of infringement, will be 
finally decided, subject only to a review by an appeal 
to a court of patent appeals, with possibly a provision 
for certain questions going to the Supreme Court. Giv- 
ing such jurisdiction to the Patent Office and to one 
court will tend to the development of a system of patent 
law that will be a benefit to the public and a protection 
to real inventors. 

The commission has been unable to see the benefit of 
the present system by which every question relating to 
a patent can be litigated in any part of the country. The 
establishment of a court of patent appeals may be a 
step in the right direction, but it is believed if that 
court is established and the Patent Office is developed 
as it ought to be as an administrative court of the high- 
est type the next change will be on the lines here sug- 
gested. This is a question, however, for consideration 
10 years or more from the present time, and the maimer 
in which it is settled wUl, of course depend upon the 
policy adopted with reference to the Patent Office, If 
that Office is to be, as in the past, the authority to grant 
a patent under an examination system which is in prac- 
tice about half examination system and half registration 
system, the. complaints concerning our patent system 
will continue, and it would not be possible to follow the 
plan here suggested. If, on the other hand, the Patent 
Office shall be built up to a high state of efficiency, the 
adoption of such a plan will be a natural and desirable 
result. 



Patent Office as an Independent Bureau. 

A question of very considerable importance in connec- 
tion with the administration of the Patent Office is that 
relating to the administrative authorities superior to 
the Commissioner of Patents. 



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Journal of the Patent Office Society. 319 

The Patent Office has been a bureau of the Depart- 
ment of the Interior since the creation of that depart- 
ment in 1849, covering the entire period of the great 
activity of the office. The nature of the business com- 
mitted to the Patent Office has no relation to other work 
carried on in the Department of the Interior nor, as a 
matter of fact, is there any particular connection be- 
tween the work of the several bureaus in that depart- 
ment. There is no good reason why the Patent Office 
should be transferred from the Department of the In- 
terior to any of the other executive departments. Its 
work is so independent of the other activities of the 
Government that it can be as well carried on under one 
department as another. 

The question has been raised many times as to the 
advisability of making, the Patent Office an independent 
bureau. In 1903, when the Department of Commerce 
and Labor was created, consideration was given to the 
subject of transferring the Patent Office to that new de- 
partment. The control of the Secretary t)f the Interior 
over the work of the Patent Office is merely nominal; 
no appeal lies to him, nor has he any authority to con- 
trol the decisions of the Patent Office. He is charged 
with the duty of appointing all employees of the Patent 
Office, but these appointments are subject by law to tlie 
nomination of the Commissioner of Patents. The Sec- 
retary has supervision of the disbursement of appropri- 
ations for salaries in the Patent Office and appropria- 
tions made for the repair and maintenance of the build- 
ing in which the Patent Office is located, and the appro- 
priations for furniture, equipment, and miscellaneous 
expenses of the Interior Department are expected to 
cover the needs of the Patent Office as well as of many 
other bureaus in the department. It is but natural in 
this department, as in other executive departments where 
one appropriation is made for the Secretary's office and 
numerous bureaus, that in the allotment of equipment 
and supplies, as well as in the repair of the building, 
the needs of the clerical force attached to the office of 
the head of the department will be given preference over 
the needs of clerks or officials of similar or higher rank 
in bureaus of the department * * * when the Pat- 
ent Office shall have been moved into a building espec- 



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320 Journal of the Patent Office Society. 

ially adapted to its needs, it is believed that every con- 
sideration of good administration and of the building 
up and improvement of the oflSce to the highest state of 
efficiency will demand that it be made in fact an inde- 
pendent bureau, subject to the supervision of the Pres- 
ident where any supervision is needed. 



Proposed Plan of Administration. 

The Commissioher of Patents should be charged with 
all the duties now required by law except those which 
relate to the decision of cases on the merits on appeal 
He should be assisted by one assistant commissioner 
who should act as commissioner in the absence or disa- 
bility of the commissioner. There should be provided 
a force of supervising examiners or inspectors who 
should be directly under the commissioner and perform 
such duties of inspection and supervision only as might 
be assigned to them by the commissioner, but without 
authority to direct the work of examiners. They should 
examine the character of work as well as the quantity 
being performed in the several examining divisions and 
by individual examiners, and should report their recom- 
mendations to the commissioner. It should be the duty 
of the commissioner to issue from time to time such in- 
structions in regard to the methods of examination and 
of performing the technical and clerical work of the Of- 
fice as he might deem necessary to keep the Office up to 
the proper standard of efficiency. 

Under such a plan it is believed that the commission- 
er and assistant commissioner could be informed at all 
times of what was being done in each division, and by 
means of instructions as to methods could make certain 
that there was uniformity in the character of work turn- 
ed out from all branches of the Office. 

Another duty of the commissioner under such a plan 
would be to order any case passed for allowance by a 
principal examiner to be reviewed summarily and with- 
out a hearing by the board of examiners in chief. 
Should the board on review decide that the application 
should be rejected, that action would be taken by the 
principal examiner, subject to an appeal by the appli- 
cant to the board as in other cases of rejection. 



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Journal of the Patent Office Society. 321 

It has been suggested that a force of about eight sup- 
ervising examiners be employed with the duty of super- 
vising five or six divisions each, and consulting with and 
correcting the work of the principal examiners in charge 
of such divisions. A similar plan was recommended by 
the Commissioner of Patents in 1877. He proposed nine 
chiefs to decide upon the examination work of the ex- 
aminers. The commission is of the opinion that such a 
plan would result only in establishing what is practical- 
ly another appeal between the principal examiner and 
the board of examiners in chief, or would result in the 
supervising examiner taking the responsibility for such 
a large number of cases that he could not give them 
proper attention. The duty of a principal examiner is 
now sufficient for one man and ought, in fact, to be re- 
duced if the best results are to be obtained. To make 
him in effect the subordinate of the supervising exam- 
iner would relieve him of responsibility and place that 
responsibility upon the supervising examiner whose 
judgment in passing on five times as many cases as the 
principal examiner, would not be of great value. 

The commission is of the opinion that no oflScer or 
tribunal between the principal examiner and the board 
of examiners in chief should be created. It is convinced, 
however, that there should be a closer supervision over 
the action of principal examiners, especially in the grant 
of patents, and that that supervision should be exer- 
cised by the Commissioner of Patents with the aid of 
seven supervising examiners acting under his direct in- 
structions and sitting together in considering and re- 
porting to the commissioner on questions of method and 
procedure. With such a force of competent men the 
commissioner would be able to perform many of the du- 
ties which it has been impossible for him to perform in 
the past. Such duties relate to the important subjects 
of difference of opinion as to what is patentable, varia- 
tion in methods of examining, and deciding the merits 
of applications for patents, and the issue of patents that 
ought not to issue. ♦ * ♦ The plan of regrouping 
must necessarily wait, however, upon the initial comple- 
tion of the entire plan of classification of United States 
patents. 



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322 Journal of the Patent Office Society. 
THE PATENT OFFICE FROM 1828 TO 1836. 



By Wm. I. Wyman. 



Dr. William Thornton, the first Superintendent of the 
Patent Office, died on March 27, 1828. His successor in 
office was Dr. Thomas P. Jones, who withdrew from the 
position the next year, after charges of maladministra- 
tion were filed against him by William Elliot. Dr. Jones 
was the editor of a scientific paper and a correspondent 
on technical matters, but his brief occupancy of the po- 
sition was unaccompanied by any noteworthy incidents. 

Dr. John D. Craig was appointed his immediate suc- 
cessor and signalized his admimstration through the 
display of an aggressive and strenuous personality. 
Early in his official career he took pains to point out to 
Congress, concerning an unexpended balance turned in- 
to the Treasury, that '*at present the Patent Office is a 
source of revenue ; which, it is presumed, the f ramers of 
its laws never intended; and the compensation received 
by those connected with it, is far less, in proportion to 
their labor and responsibility than in any other office 
of the Government within the District," which discloses 
how hoary with historical precedent is this complaint 
and what a charmed life this condition of legislative in- 
difference bears. 

As an indication of the vigorous methods by which he 
performed his official duties, the following characteristic 
protest to the Secretary of State (dated July 11, 1831) 
of an appointment of a candidate for clerkship is a fait 
example: — *'The man about three years ago, married a 
young lady with a large fortune, and in a short time 
spent the whole of it in dissipation, with abandoned as- 
sociates. I hope a public office will not, during the presr 
ent administration, be the reward of such conduct." No 
words minced here! With even less reticence but with 
equal eagerness to guard the sanctity and quality of 
official employment, he served the subjoined letter of ap- 
pointment on a successful candidate for office: — 



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Journal of the Patent Office Society. 323 

Patent Office, July 3, 1834. 
Sir, 

As you are now appointed a Clerk in this Office. I think 
it necessary, candidly to inform you of what character I 
understand you bear in Washington; and I have it from 
the President, that he has had similar information on the 
subject, though he is not inclined to believe it true, & I 
sincerely hope it is not. 

You are represented, as a man of disagreeable temper 
and constantly endeavouring, to undermine and supplant 
others in the offices in which you have been. You are also 
stated to be a very inferior Clerk. Such are the common 
reports in this City, and I have it in charge from the 
President to inform him minutely how far such character 
or any part of it, shall prove to be true, and he has as- 
sured me. that your stay in the Office will depend upon 
your conduct, contradicting said reports. 

With regard to the duties of the Office, they are both 
important and laborious, and require both talents and 
attention, the hours of attendance throughout the year 
are from 9 to 3 o'clock, and no encouragement to visitors 
except on the business of the Office, is to be given to any 
person, or any conversation permitted with visitors, ex- 
cept on subjects of the same kind, and it is an invariable 
rule, that no one belonging to the Office, shall absent 
himself or leave the Office, during Office hours, without 
permission. 

Thus with perfect candour & good feelings to avoid 
future misunderstanding, have I made this communica- 
tion. I am. 

Your humble servt. 
To Doer. Mayo. John D. Craig. 

Never was such a cordial invitation issued except that 
of a noted publicist who during a time of intense polit- 
ical controversy welcomed his antagonists with bloody 
hands to a hospitable grave. Needless to say that the 
'*Docr." refused to accept the implications accompany- 
ing the appointment, although he did accept the latter 
after a violent verbal altercation with his gentle but ad- 
monitory friend. With the exception of the filing of 
charges and countercharges by these two worthies m a 
subsequent oflRcial controversy, no further criminations 
and recriminations appear to be of record, and **Docr.'* 
Mayo continued to work under the candid eye of his so- 
licitous superior throughout the whole of the latter *s in- 
cumbency of office. 

Dr. Craig's career continued to be turbulent and rocky. 
He avoided smooth sailing if he could possibly chart his 
voyage in rough seas. Applicants before the Office took 
a hand in getting in his way, and finally one William P. 
Elliot (later famous as the architect of the Patent Of- 



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324 Journal of the Patent Office Society. 

fice) endeavored to oppose his will, with the result that 
the most serious and best sustained of all accusations 
were lodged against him. Dr. Craig was charged with 
ignorance of the law, destruction of public correspon- 
dence, rude conduct in his official relations and other mal- 
feasances. Apparently, the charges had some basis, as he 
was ordered by. the Secretary of State to correct the 
abuses. Later, the persistent Mr. Elliot presented fur- 
ther charges, such that Dr. Craig pronounced an order 
by the late Secretary of State ^'tyrannical and unjust," 
and upon this latter being sustained, he was dismissed 
from office on Jan. 31, 1835. 

He was succeeded by J. C. Pickett, whose appointment 
appears to have been of an emergency character, as he 
held office for but a few months. On May 12, 1835, Hen- 
ry L. Ellsworth, of Hartford, Avas appointed to the po- 
sition at a salary of $1500. He was its last occupant and 
was the first Superintendent of Patents who adminis- 
tered the Office efficiently. There was no laxity in the 
execution of the law, the j-ecords were kept up to date 
and the Office run smoothly, without that friction that 
seemed to characterize hitherto every administration un- 
der the Act of 1793. 

During the period under review, the Secretaries of 
State were the final arbiters of all questions arising in 
the Patent Office and exercised a constant supervisory 
authority over its acts. In those days, cases of doubt 
as to the grant of the patent were decided by the Secre- 
tary of State and legal questions were settled by the 
opinion of the Attorney General. Models were required 
to be filed in all apparatus cases. 

On July 4, 1836 the present system was inaugurated 
and Henry L. Ellsworth was immediately thereafter ap- 
pointed the first Commissioner of Patents. 



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JOUBNAL OF THE PaTENT OfFICE SoCIETY. 325 

MORE THORNTONIANA. 



In the article on ''The First Chief of' the Patent Of- 
fice/* which appeared in the December number of the 
JojjknaIj, reference was made to a communication by Dr. 
Thornton to the Secretary of State, defining the equi- 
ties and limitations of a reissued paj;ent. A copy of that 
communication, dated January 6, 1818, has been obtain- 
ed from the files of the State Department. The case in- 
volving this subject-matter was presented for Dr. Thorn- 
ton's consideration through the pronouncement of a 
United States Judge acting on the original patent, and 
the Doctor referred the matter to the Secretary of State, 
in the letter noted, which follows : — 

Department of State, 

Patent Office, 6th Jan. 1818. 
Sir: 

A patent was issued on the 16th of July 1806 to John 
Bedford of Phila. in the usual form, containing the spec- 
ification of his invention in his own words. After enjoy- 
ing the benefit of his patent for these 12 years past near- 
ly, Judge Story, one of the Supreme Judges, acting in this 
case as a Circuit Judge, pronounces that the specification is 
"not" sufflciently specific, and that there ought to be a 
new patent issued. This was made Icnown to me by 
George Sullivan, Esq.. of Boston, the counsel of Wm. Bed- 
ford. I sent to Wm. Bedford an answer, a copy of which 
is enclosed, marked No. 1, and have since received the 
letter No. 2, from Wm. Sullivan; who still urges a patent 
upon the general principle, which I must in duty decline 
to issue, upon this plea. — If a patent were really imper- 
fectly issued by an official irregularity, or for the want 
of legal forms, dependant on the office, even then the de- 
mand of the patent would be a doubtful one, provided the 
patent had run for some years, and the patentee had ob- 
tained the full benefit of the patent till arrested by a de- 
termination against him in law, from a want of validity 
in his patent; but it would be proper in this case to cor- 
rect the patent, from the time of such legal arrest, to 
give validity for the remainder of the term; which I am 
even willing to do in this case, without a new Treasury 
Fee, though the incorrectness was not the fault of the 
office, but of the Patentee himself. But to give a new 
Patent for the general principle, when the Patent has 
nearly expired, and the patentee has till now enjoyed the 
profit thereof, would be to rob the public of the benefit 
acquired by the fulfillment of the engagement virtually 
entered into by them and the patentee, which would open 
a door to increasing deception and fraud, and would real- 
ly be a stultltian premium. — If therefore Wm. Bedford 
wishes a patent upon the general principle of his inven- 
tion (which, however, I firmly believe Is not his, having 
been in use in Ireland for many years, and the army of 



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326 Journal of the Patent Office Society. 

England has long been furnished with boots and shoes 
on this principle) I will grant It till the expiration of the 
first term ot 14 years, without any additional fee. as a 
correction of his erroneous specification, though this is 
not an official duty nor could he of writing demand it; or, 
if he had a patent for any specific mode, as an Improvement 
in the general principle I will grant him a Patent for 14 
years, avoiding the 2nd Sect, of the Patent Law, in the 
several Forms, and on his paying the Treasury Fee as a 
mere Improvement, it)ut not on the general principle, un- 
less directed to do so. by the Hon. Secretary of State, 
who will please to decide on this, or submit It to the Hon- 
orable Attorney General; if it is a case that may be here- 
after considered as a precedent. 

I have the honor to be, with the highest respect, 

William Thornton. 
Hon. John Q. Adams, 

Secretary of State, U. S. 

Tn the same article on ''The First Chief of the Patent 
Office" there was related one of the most striking inci- 
dents in a career rich in dramatic features. It concern- 
ed the success of Dr. Thornton in preventing the destruc- 
tion of the Patent OflSce by the British troops during the 
War of 1812. Various historians have told this story 
with varied presentations, but it seems that the Doctor 
was himself a chronicler of capabilities, and his own 
account of the affair, while not as dramatic and colorful 
as those of his rival historians, has the possible merit 
of greater accuracy. 

The following account of the incident is an extract 
from a letter written by Dr. Thornton in the National 
Intellifjencer of Sept. 7, 1814, (published in this city) a 
photolithographic copy of which is preserved in the room 
of the Commissioner of Patents: — 

"Hearing the next morning, while at breakfast in Georgetown, 
that the British were preparing to burn the War Office and the 
public building containing the models of the arts, I was desirous 
not only of saving an instrument that had cost me great labor, but 
of preserving if possible the building and all the models — I there- 
fore left my breakfast and hastened forward, determining to re- 
quest the first known democrat I should meet to accompany me, 
lest the malevolent should insinuate that I had in any manner held 
an improper communication with the invaders of the country — I 
met with Charles Carroll. Esq., one of the most respectable gentle- 
men in the District, I begged him to accompany me for the reasons 
given; he very politely attended me. We arrived at the very mo- 
ment when the English Col. Jones and his men were proceeding 
to bum the War Office; Mr. Carroll had already accompanied the 
Mayor of Georgetown in a peace deputation and was therefore 
known to some of the officers; he informed Col. Jones that I had 
waited on him to request permission to take out of the Patent 
Office a musical instrument; the Colonel immediately replied, that 



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Journal of the Patent Oppicb Society. 327 

as it was not their intention to destroy any private property, I was 
perfectly at liberty to take it. After the War Office was burnt, I 
entreated Mr. Carroll to accompany me to the Patent Office, but 
he proceeded only to my own house and told me he must return. 
He did so; and I went to the residence of the Mayor to ask him to 
accompany me to the building, he was out of town; I next called 
en Mr. Nicholson, my model maker and messenger, and desired 
him to attend me, he did, and the British soldiers were then 
marching in two columns to burn the building. When we arrived 
there we found the Revd. Mr. Brown, Mr. Lyon, and Mr. Hatfield 
near the Patent Office. Major Waters, who was then on guard and 
waiting the command of Colonel Jones, informed me that the 
private property might be taken out, I told him that there was 
nothing but private property of any consequence, and that any 
public property to which he objected might be burnt in the street, 
provided the building might be preserved, which contained hun- 
dreds of models of the art, and that it would be impossible to re- 
move them, and to burn what would, be useful to all mankind, 
would be as barbarous as formerly to burn the Alexandrian Library 
for which the Turks have been ever since condemned by all en- 
lightened nations. The Major desired me to go again with him to 
Col. Jones, who was attending some of his men engaged in re- 
storing Mr. Gales's types and printing apparatus. I went to the 
Avenue and was kindly received by the Colonel; they took their 
men away and promised to spare the building. I then returned 
satisfied without seeing any other British officer, and went out of 
the District with my family. On Friday (26th) I returned to the 
city lest any Inferior officer, not knowing of this promise, should 
set fire to the building; but I found the British were gone, except 
a few sick and wounded men and their attendants. Finding the 
Mayor not yet in the city, I, as the only Justice of the Peace, ap- 
pointed a guard at the President's House and Offices, another at 
the Capitol to prevent plunderers who were carrying off articles to 
the amount of thousands of dollars." 

The copy of Dr. Thornton ^s communication of July 6, 
1818 and the Doctor's account of the saving of the Pat- 
ent Office were both made available for publication in the 
Journal through the eflforts and consideration of former 
Commissioner Thomas Ewing, to whom we are indebted 
for procuring the copy and calling attention to the loea^ 
tion of the record. W. I. W. 



It is understood that plans are being formulated for 
the outright sale by the Alien Property Custodian of a 
•onsiderable number of German-owned dye patents. 

A special agent attached to the American Peace Mis- 
sion is now abroad making an exhaustive study as to 
the status in enemy countries of American-owned pat- 
ents, trade-marks and copyrights. 



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328 Journal op the Patent Office SooraTt. 
A UNITED STATES PATENT COMMISSION. 



By John Boyle, Jr. 



The office of Commissioner of Patents was created in 
1836. The duties then assigned to the Commissioner 
have not since been materially changed notwithstanding 
that they have increased enormously, both in character 
and quantity. That the present organization of the Pat- 
ent Office is not satisfactory can be seen by the numer- 
ous suggestions continually arising for patent reform. 
Most of these suggestions, however, are based on a re- 
patching of the present organization. If at some time 
in the future Congress shall see fit to delve into this 
vital question, it is to be hoped that instead of attempt- 
ing to remodel a system never intended for present con- 
ditions, they will remake the whole organization from 
the ground up. -- 

One of the principal faults with the office of Commis- 
sioner of Patents is that it lacks stability. The work of 
the Patent Office is of a different type from that of the 
usual Government bureau. There are some bureaus 
where a change in the head of the bureau is effected for 
the very purpose of carrying out a different policy, one 
which the federal administration has sometimes pledged 
itself to carry out. But the Patent Office is somewhat 
similar to the courts when exercising its principal func- 
tions. Its policy should be a consistent one. For ex- 
ample, the Supreme Court of the United States in the 
past century has handed down many fundamental de- 
cisions on questions of patentability, so many in fact 
that it would seem as if there ought to be a stable policy 
on the part of the Office in the granting of patents. Yet 
anyone who has followed the affairs of the Patent Office 
knows that no two Commissioners have exactly the same 
ideas on this subject. As the attitude of a Commission- 
er changes, so must the point of view of the examiners 
change. Accordingly the Office policy may be such as to 
see invention in slight differences of construction; where- 
as at other times a much more conservative policy will 
prevail. It must be admitted tiiat a changing policy is 
detrimental to all concerned, and an organization that 



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Journal of the Patent Office Sooibty. 329 

^^11 tend to stabilize the policy of the Office will be to 
the ultimate benefit of the patent -Bystem. 

Another defect in the office of the Commissioner is 
that it is impossible to" record the wishes of the inter- 
ested public. To illustrate, the examining corps of the 
Patent Office was at one season addressed by two of the 
most distinguished patent attorneys of the country and 
by one of the most learned judges in patent law. All of 
these vigorously protested at the allowance by the Office 
of patents containing a multiplicity of claims to the nt- 
ter confusion of everyone subsequently involved. There 
was no official way of registering this protest, nor has 
there been any marked change in the policy of the Office 
in this respect. 

There are many other defects in the present organiza- 
tion which have been pointed out by othier writers and 
which will not be reiterated here. 

It is believed that the substitution of a patent com- 
mission, cooperating with a patent advisory council, 
would overcome many of the defects of the present of- 
fice of Commissioner of Patents. 

The Commission might consist of three members ap- 
pointed rotatively for six years by a new appointment 
every two years. One member should be skilled in pat- 
ent law, one in general law, and the third a technical ex- 
pert. The diversity of accomplishments presented by 
such a commission is well beyond that now presented by 
any tribunal which comes in contact with the patent sys- 
tem. The relative permanency of the Commission would 
provide stability in its decisions and any possible ten- 
dency to narrowness would be avoided by tiie gradual 
changing of its membership. To take charge of general 
administrative duties, there should be a secretary to the 
board. Having established such a commission, the ne- 
cessity of the Court of Appeals of the District of Colum- 
bia as an appellate tribunal would cease to exist, for 
appeals from the Board of Examiners-in-Chief would 
receive such a thorough consideration from such a va- 
ried and qualified standpoint that the court might well 
hesitate before reversing the holdings of the Commis- 
sion. 

In order that Congress and the Commission might 
keep in touch with and have the benefit of the advice of 



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330 Journal of the Patent Office Society. 

those most directly affected by the patent system, there 
should be established a patent advisorj'^ council com- 
posed of twelve to twenty representatives of industry 
and the patent and legal profession. It would be the 
province of this council to furnish a means of register- 
ing the will of the interested public. To some extent 
this function is now usurped by the patent bar associa- 
tions. 

The plan of organization here advocated is not gen- 
erally new and in various phases can be found in other 
Government bureaus. The point above all that it is de- 
sired to make is that if any changes are to be made it 
must not be merely a repatching of the old organization. 
It is with the object of avoiding this situation that the 
plan of a Patent Commission is put forth. 



FOREIGN PERIODICAL ACCESSIONS TO THE 
SCIENTIFIC LIBRARY. 



Tlie Scientific Library is again receiving the principal 
German periodicals that ceased coming during 1915 on 
account of the blockade of Germany by the Allies. 

The release of these publications from the blockade 
wa^ secured through the efforts of the American Library 
Association Committee on Importations acting throuj^ 
the State Department, and the Library files of the fol- 
lowing periodicals for 1918 are now nearly complete anJ 
are open to inspection: 

Annalen der Physik < 

Annalen der Physik, Beiblatter 

Berichte der Deutschen Chemischen GeseUschaft ' 

Berichte der Deutschen Physikalischen GeseUschaft , 

Die t)hemische Industrie { 

Chemisches Zentralblatt ■ 

Deutsche Bauzeitung I 

Dinglers polytechnisches Journal | 

Elektrotechnische Zeitschrlft | 

Gluckauf 

Jahrb. der drahtlosen Telegraphie und Telephonle i 

Journal fur praktische Chemie I 

KoUoid Zeitschrlft 

Kunst und Kunsthandwerk 

Physikalische Zeitschrlft 

Zeitschrlft fur Analytische Chemie 

Zeitschrlft fur Anorganlsche und allegemeine Chemie 

Zeitschrlft fur Architektur und Ingenleurwesen 

Zeitschrlft fur Instrumentenkunde 

Zeitschrlft fur Physikalische Chemie 

Zeitschrlft fur Transportwesen und Strassenbau 



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Journal of the Patent Office Society. 331 

A PROPOSED REORGANIZATION OF THE liXAM- 
INO CORPS/ 



(Considered in its Relation to Other Patent Reforms.) 



By Bert Russell. 



The purpose of this paper is to '^ break the ice*' in re- 
gard to two oft-repeated proposals of self-appointed re- 
formers: (1) to so reorganize the Commissionership and 
Assistant Commissionerships of Patents as to constitute 
a Patents Commission (with all the authority but not all 
the detailed duties of the present Commissioner) and 
(2) to give to an enlarged and strengthened Board, sub- 
ordinate to that Commission, a degree of supervisory 
authority corresponding to an intended expertness of 
its individual members in particular fields; also, (3) to 
consider the relationship of these to other proposed re- 
forms. 

Numerous troublesome problems, from contact with 
which even subordinates of the OflSce cannot wholly es- 
caj>e, certainly are very closely interconnected. Even 
the providing of a proper building (which is for the mo- 
ment rendered less urgent by the moving of the Secre- 
tary's offices) would seem to presuppose a determina- 
tion of the numbers, the organization and the equipment 
to be housed. But, in turn, the establishment of a suit- 
able organization does seem, in this case, to wait upon 
the subdivision of search materials, as perhaps the lat- 
ter must reflect in turn something of the standards of 
patentability that may be considered acceptable. 

The efforts of the present writer to judge what the 
Office organization ought to be have, as a matter of fact, 
arisen directly from his connection in a subordinate way 
with the work of reclassification— in which any genuine 
advance has seemed to require some comprehensiveness 
of view. Now, if one tenth of the work of the Office 



^This paper relates, in large part, to suggestions heretofore 
communicated, on the personal responsibility of the writer, to the 
Patent Committee of the National Research Council. 



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332 Journal of the Patent Office Society. 

shall (upon the completion of some general survey not 
known to be now even projected) be found to relate to 
chemical inventions (defined in terms of specified sub- 
stances associated for an indicated effect dependent on 
their specific properties), and if electrical inventions 
(defined with reference to currents, fields, capacities, po- 
tentials, reluctances, and so forth, and not including gen- 
erally organizations in which, for example, an electric 
motor or an electric heater may be a merely subsidiary 
part of an organization for a mechanical operation) form 
another tenth (or a twelfth, or an eighth) ; and if non^ 
electrical motors, engines and related inventions form 
another tenth, or other fraction, then this ascertained 
situation would seem to some of us (who hark back to a 
very ancient proposal) to argue for a corresponding 
grouping of divisions having work of like nature, with a 
view to numerous administrative advantages to be here- 
inafter referred to, even if in very general terms. 

The point is often made, as well by those within the 
Office as without it, that the Patent Office should be tak- 
en more completely out of politics. For altho it cer- 
tainly could not justly be implied that the grant of pat- 
ents has heretofore depended on ^'political pull,*' it 
seems to be generally agreed (see President's Commis- 
sion on Economy and Efficiency, p. 34) that appointment 
to the higher positions of the Office should not require 
concurrence of the Senate, and that tenure should be, as 
in other judicial offices of both higher and lower rank, 
independent of political changes. Without antagonizing 
the known views of anyone in authority, it may then be 
urged, altho with little originality, and with no slightest 
hope of an unqualified general concurrence as to every 
detail, that by 

(1) Substituting for the Commissioner and Assistant Commis- 
sioners of Patents a Patents Commission of (say) four mem- 
bers. 

(2) Enlarging and strengthening the Board of Examiners-ln- 
Chief, at the same time giving to the ten or more conse- 
quent members each a supervisory authority over a small 
group of divisions, — to constitute what is herein termed a. 
"department" — as to whose work each should be expert. 

(3) Adopting a parallel grouping of 

(a) related divisions, 

(b) patents in orderly arrangement, and 

(c) departmental libraries, and 



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JOUBNAE, OF X^E ^AT^NT Of?ICB SoOIBTy* 333 

(4) Providing each of the proposed expert Superyisory Exam- 
iners, collectively constituting the Board of Examiners-in- 
Chief, with (say) three special assistants — 

one expert in the literature and classification and ques- 
tions of "division" within his field, 

one to advise as to all questions of "interference" arising 
within that field, apd. 

one to advise in regard to the delayed cases and ihiscelli^ 
neous legal problems of that field — as perhaps* also as 
to the routine work and personnel therein, 

(the examining organization then becoming somewhat 
as in the diagram herewith), there might reasonably 
be expected to ensue notable reforms or advances in the 
following respects': 

(1) The dignity of the Commissionerships would be enhanced by 
a diminution of obligatory duties with no corresponding 
diminution of its powers — as no doubt also by a substantial 
increase in compensation. 

(2) The Commission being a permanent body, its policies would 
acquire a staMUty that appears impossible so long as each 
Commissioner may feel bound to reprove the party last tn 
power by some marked deviation from former policy. 

( 3 ) A growth in uniformity of practice would seem assured by 

(a) common supervision over related divisions constituting 
one Department, 

(b) enabling Board members to actually enforce, each with- 
in his own Department, Board decisions in subsequent 
analogous cases, 

(c) the participation by men who supervise within one field 
in the Judicial work arising in other fields, 

(4) Adequate literature eould with reasonable economy be placed 
within easy reach of each group of related divisions. 

(5) There should become possible the usual and well known ad- 
vantages of "division of labor," such as 

(a) gain in economy of effort and reliability of results by 
the mere limitation of the field of special responsibility 
of each, 

(b) gain in interest, by encouragement of specialization. 

(6) By a basing of the division of labor, in an organization deal- 
ing with mixed questions of fact and law, upon differences 
in the sorts of engineering or practical knowledge involved, a 
new and wholesome emphasis would seem to be placed upon 

. underlying scientific and technical problems, as distinguish- 
ed from mere technicalities of procedure. (It may be urged 
that for every day's special training upon legal considera-p 
tions necessary to a correct determination of a motion for, 
say, the dissolution of some chemical or electrical interfer- 
ence, a year's training along chemical or electrical lines 
might be appropriate; and that this fact challenges the 
economy and expediency of an assignment of, for example, 
all questions of declaration to one law examiner and all 
questions of dissolution to another.) 



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334 Journal of thb Patent Office Society. 









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Journal op the Patent Office Society. 335 

<7) The existence of well-paid positions of some distinction and 
responsibility and attaiiuible on a merit basis would encour- 
age able men to stay in the service. 

<8) If the Supervisors constituting the Board were sufficiently 
numerous to permit actual acquaintance by each supervisor 
with the work of all subordinates in his Department, promo- 
tions could be based upon either the quantity and quality of 
work done, or upon tests of scientific or practical informa- 
tion relating to a new position desired, rather than, as at 
present, upon the mastery of comparatively uncertain, ar- 
bitrary, unusual or unimportant technicalities of law. or of 
a fluctuating practice, for the ascertainment of which law 
and practice no suitable facilities have been provided. 

(9) Classification lines could be more easily maintained (if 
once established) in proportion as there would be some con- 
sistent and visible embodiment of a classification plan. 

<10) Experiments in method could be tried out within one de- 
partment, without the risk of a general catastrophe. Com- 
missioner Ewing long since suggested that in the case of 
process applications the requirements of the Office as to pre- 
liminary showing of operativeness might well be higher than 
is necessary in mechanical cases. 

(11) If the respective Commissioners could be appointed not only 
for overlapping periods of (say) eight years each, but also 
with such reference to their special qualifications that one 
of them would always be skilled in (say) matters of inter- 
ference, one in general equity practice and patent litigation, 
one in classification and general scientific literature, and 
one perhaps in his knowledge of the personnel of the corps 
and the field for its replenishment — ^all alike being keen to 
both the economic and the scientific bearings of the service 
— it would apparently become possible not only to introduce 
new threads of coordination thruout the entire system, and 
to provide to qualified men of proper ambition a more am- 
ple and stimulating menu of special opportunities for rare 
and genuine public service, but possible also in a relatively 
large number of cases (and perhaps most notably in mat- 
ters relating to the prompt and Just determination of inter- 
ferences) to substitute for the uncertain action of multiplied 
appeals the direct and final action of enlightened authority. 

(12) The Gazette could be published in sections corresponding to 
the respective Departments, and many patrons could thus 
be satisfied by a (more economical) subscription to a speci- 
fied part. 

The present proposal will be found to be essentially a 
revival and elaboration of certain conceptions advanced 
by Commissioner Leggett as early as 1872, and at that 
time supported, although without effect, by both Secre- 
tary Delano and President Grant. (Report of Presi- 
dent's Commission, p. 238.) It bears similarity also to 
those separate recommendations of the President's Com- 
mission which favor (although as independent proposi- 



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sate JOURNAX. OF THE PaTENT OfFIOIB SoOIBTY. 

tions) (1) the regrouping of tte corps (p, 65) and (2) 
the appointment of '* seven supervisory examiners^* as 
personal aids to the Commissioner of Patents (p. 13). 

Having tackled a problem before which his betters 
hesitate, the present writer would beg tolerance in a 
specific opposition to one proposal of the last-named 
body, to wit, the proposal that the Supervisory Exam- 
iners should have neither authority nor appellate juris- 
diction. He would advocate clothing them with both; 
increasing their number* accordingly, although provid- 
ing (as in the plan of Commissioner Leggett) that no 
man be relied upon to pass a reviewing judgment upon 
his own prior acts. 

As to supporting sentiment already known to exist 
relative to the proposed strengthening of the Board, the 
present suggestions, altho widely advocated, suffer the 
disadvantage of hardly having become the subject of 
general discussion. One oflScial high in authority — ^for 
whom the present writer must testify his very high re- 
spect — has suggested that he did not know as it would 
be of any advantage ^*to have a lot of highbrow profes- 
sors around"; and it may no doubt be confidently as- 
serted that in practical grasp the '* scrubs '* — if such they 
are — who are now ^^on the job'' need fear nothing from 
a comparison, in point of general information, with any 
^thoroughbreds" that could be imported. It is the posi- 
tion of the Board, with reference to the permanence of 
its standards, its means of information, and the en- 
forcement of its views, that is not strong; and the nor- 
mal field for replenishment of the Board will no doubt 
presently again be the subordinate corps. 

Comment has also been made that, under party rule, 
even the most urgent of calls for highbrows may some- 
times result in an incursion of low-brows; but this is 
perhaps a slander upon democracy, or else a mere gen- 
eral defense of the staMis quo. A more serious objec- 
tion is no doubt the actual, practical diflSculty of th^ 
problem of suitable subdivisiofij in that the advantageous 
grouping of divisions does seem to imply a prior solu- 
tion of some of the most difficult questions of classifica- 
tion. 

Surely it would be superfluous to remark, in closing, 
that, so' far as known, no one from the Office would ad- 



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Journal of the Patent Office Society. 337 

vocate anything like an interposition on the part of a 
National Research Council Cbiriinittfee, either moin^n- 
tarily or as a continuing collateral authority, in the pure- 
ly admimstrative affairs of the OflSce. In so far as the 
underlying and primary purpose of the Office is educa- 
tioTial, it is however, urged that any disposition to re- 
gard the classification of patents as a purely internal 
problem, or a problem whose solution must conform to 
the views of attorneys interested in the multiplication 
of grants (or to the views of those schoolboys upon 
whose searches, in patent matters, some attorneys seem 
to rely) is to be deprecated ; and is to be corrected, if it 
can be corrected, only by those who can contribute not 
only information but a great. deal of patient personal at- 
tention to its solution. 

The present Examiner of Classification is remembered 
to have invited the attention of the National Research 
Council to the problems of reclassification. Assistant 
Commissioner Clay is among those who have still more 
recently emphasized the view that, as to this particular 
problem, the scientists upon the. present Committee or 
within its reach undoubtedly can, whenever pressure of 
other duties will permit, give direct assistance of the 
highest value* And the President's Commission on 
Economy and Efficiency found (p. 65) that an effective 
regrouping of the examining corps must await the '^in- 
itial jcoiupletion of the entire plan of classification. '^ 

Patent classification is then a standing riddle whose 
solution seems prerequisite to a great number of other 
reforms, among which the improvement of the Office 
organization holds a prominent "place. Reclassification 
is, moreover, .a work. for which the conditions of the Of- 
fice are peculiarly unfavorable. That it is a problem of 
real inherent difficulty will further appear from the pa- 
per in this issue by Mr. Geo. A. Lovett, whose responsi- 
bility in the Classification Division has been next to that 
of its chief. Having participated for years (and with 
results the most, meager) in this particular work, the 
present writer feels free to estimate that, under Office 
conditions, of equipment, atmosphere and interruption, 
average efficiency in reclassification work has not risen 
and does not rise above perhaps five per cent, of what 
I it might well be under reasonably favorable conditions. 



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338 Journal of the Patent Office Society. 

There is no controversr as to the fact that some of the 
work of reclassification has been badly done; none as 
to the fact that a bad classification, formally adopted, 
becomes a distinct new obstacle to a good one. But ev- 
en men who, at least in a quantitative sense, have failed 
at this work do seems to feel that they coiUd succeed un- 
der fairer conditions. If, in any way, suitable environ- 
ment, force, and counsel, for the work of reclassification 
can at an early date be provided, the consequent debt of 
the Office and the public to those who may provide such 
aid will certainly be very great indeed. 



''ART" CLASSIFICATION FOR OFlPICE PURPOSES 



By Geo. A. Lovett. 



A classification of search material for the use of the 
Patent Office examiner and for such of the public as 
make searches with like aims may vary widely from a 
classification for other investigators. 

It may be noted that the existing classification of pat- 
ents, dating, in part, into the ancient history of the art, 
and being the product of many men of many minds, 
exhibits almost every variety of classification; and one 
familiar with the field can draw therefrom illustrations 
of both the defects and the advantages of any of the pro- 
posed schemes. 

Classification on the basis of industrial arts is fre- 
quently urged ; but it seems totally impracticable in view 
both of the difficulties involved and the defects of the 
scheme as a searchable system. In the first place, there 
is the difficulty of selecting the arts to be embodied in 
classes. Industrial arts may be viewed from many dif- 
ferent standpoints and in varied relationships. The 
types of instruments usually assembled for purposes of 
sale might form the groundwork of the scheme, — ^as 16, 
Builders Hardware, or 120, Stationery. Again, the as- 
semblage might be on the basis of the place in which the 
instruments are used, — as 65, Kitchen and Table Arti- 



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Journal of the Patent Office Society. 339 

cles, or 211, Store Furniture. The basis of association 
might be a general use, — ^as 132, Toilet, or 46, Gaines 
and Toys ; or it might follow the lines of the various vo- 
cations or professions, — as 17,, Butchering, 31, Dairy, 32, 
Dentistry, 68, Laundry, 128, Surgery, and so on. Again 
the **art^' might include everything relating to the man- 
ufacture, sale, and use of certain materials, — as 131, To- 
bacco; or it might be limited to the manufactures deal- 
ing with a specified material, — as 93, Paper Manufac- 
tures, or 125 Stone-working. All of these groupings, in- 
consistent as they are, have been embodied in existing 
classes, and others might be proposed. 

A second difficulty arises from the fact that, no mat- 
ter on what basis these arts are selected, they will nec- 
essarily intermingle and overlap. There is an indus- 
trial art relating to the manufacture of the automobile; 
but there are many subsidiary arts, as the art of tires, 
that of engines, that of speedometers, that of cushions, 
and so on, even down to roller bearings and spark plugs. 
The tire maker may also make machine belting and fire 
hose, and possibly rubber shoes, the cushion manufac- 
turer is also engaged in the furniture business. Under 
such circumstances it would seem hopeless to attempt a 
comprehensive scheme of classification based merely up- 
on the supposed industrial arts. 

A further difficulty is the impossibility of locating pat- 
ents with any certainty, or by any logical process, in 
these industrial art classes. This results both from the 
overlapping of th^ classes, and from the generic char- 
acter of many of the patents. One patent may be for an 
alleged meat slicer, another for a device for slicing bread, 
another for a device used for '^slicing cheese, meat, 
bread, and the like." Granting that all three are adapt- 
ed equally for slicing any of the materials mentioned, 
should they be placed in the three different classes, 31, 
Dairy, including cheese cutters, 17, Butchering, includ- 
ing meat slicers, and 146, Vegetable Cutters and Crush- 
ers! And then what shall be done with a fourth to slice 
cork, and with a fifth so phrased as to make no refer- 
ence to any specific material? Illustrations could be 
multiplied. 

Furthermore, the purely industrial art classes com- 
prise heterogeneous collections of material of little real 



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340 JoyENAli OF THE PArTENT OfFICB SoCIBTYa 

similarity for ref^reiiipiB purposes.. What logical basis 
exists for associatiiig in the same class Tnilking maohiiies. 
and milking stools! Is a plant stand so similar to a 
seed tape or to a turpentine cup that they should he in 
one class? Or of what utility is it to have clothes lines, 
wash tubs and ironing tables grouped together! 

Industrial use titles dp not suggest either the func- 
tion or the structure of the devices which may be found 
classified thereunder, and unless additional generic use 
classes are provided, generic patents, and those setting 
forth new uses of old types of structure, must necessarily 
be placed in classes. not suggestive of the use, 

A quotation from Professor Robinson is extremely 
pertinent. *^It i6 moreover evident that the true place 
of meeting between the end and the means is in the prox- 
imate result or function of the means, and that the point 
from which the examiner must contemplate the means in 
order to discover its essential character is its function^, 
not its ultimate effect." **The first duty, therefore, of 
one who examines the invention for the purpose of de- 
termining its essential character is to discover the real 
character of the function performed. * * He must 
discern the actual change wrought by the invention on 
its object. '' Robinson I. 315^317. (See also Rob. L, 230). 

The enunciation of this idea of proximate fimction, 
i. e., the act which the invented instrument directly and 
necessarily performs, as a basis for dassification is 
thought to mark one of the really important advances 
in the theory of patent classification. Attention should 
be called in this connection to the discussion of the sub- 
ject in Mr. SewalPs booklet on ** Classification of Pat- 
ents," pp. 4-9. 

It would seem clear that **art" in this sense is the 
logical basis for grouping the patents fOr Oj(f ice purpos- 
es. • . 

We sometimes hear the objection that classification on 
the basis of proximate ftmction ^* scatters the art, 'V or 
brings together ^* non-analogous arts/* The objector 
apparently has in mind the industrial arts; for, if the 
devices grouped together perform a common function by 
similar means, the **art" in the other sense cannot be 
other than analogous. As was said by the Supreme 
Court in Howe Mach. Co. v. Nat 'I Needle Co., 1890 CD. 



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Journal op the Patent Office Society. 341 

281: **The art of turning is the art of turning, whether 
applied to wood or to metal." In that legal classic, the 
Steams v. Russell decision, Judge Taft points out that 
a pneumatic holding device performs the same function 
when used in a pill-dipping machine for holding pellets 
that it does in a printing press when used for holding 
sheets of paper. Such a decision suggests at once to 
the classifier that pneumatic holding devices should be 
classified in one place, no matter for what machine or 
for what industrial application they were designed. 

It is possible that some industrial or trade classes are 
useful to the extent that they provide a dumping place 
for certain patents of such anomalous character that 
they have no analogy, in the function performed, to de- 
vices employed in any other trade. It seems proper, 
however, to classify (for searches upon novelty) on such 
basis only as a last resort, rather tlian as a rule. 



RJBPORT OF THE PATENT COMMITTEE TO THE 
NATIONAL RESEARCH COUNCIL. 



The Commissioner of Patents in 1917, with the ap- 
proval of th€ Secretary of the Interior, requested the 
National Research Council to appoint a committee to 
investigate the Patent Ofl5ce and patent system, with a 
view to increasing their effectiveness, and to consider 
what might be done to make the Patent Ofiice more of a 
national institution and more vitally useful to the in- 
dustrial life of the country. 

Mr. Thomas Ewing, who is a member of your Patent 
Committee, was the Commissioner of Patents who took 
that action. 

The National Research Council, complying with the 
request, appointed a Patent Committee, consisting of: 
Dr. William F. Durand, Chairman; Drs. Leo H. Baeke- 
land and M. I. Pupin, scientists and inventors; Drs. R. 
A. Millikan and S.* W. Stratton, scientists; Dr. Reid 
Hunt, physician; and Messrs. Frederick P. Fish, Thom- 
*as Ewing and Edwin J. Prindle, patent lawyers. On 
the departure of Dr. Durand for Europe, Dr. Baeke- 



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342 Journal of the Patent Office Society. 

land was appointed Acting Chairman of the Committee. 

Your Committee has approached its work in the be- 
lief that the American Patent 'System has been one of 
the most potent factors in the development of the pros- 
perity of our country. Americans, being descendants 
of the European races, are not naturally more inventive 
than are Europeans, but under the incentive of the Amer- 
ican Patent System they have produced many more in- \ 
ventions and been able to pay higher wages and live on 
a better scale than Europeans. ! 

American inventions have played a vital part iu the I 
war. There is hardly any implement or explosive that | 
our Army and Navy has used which is not more or less 
the result of American invention. The Patent Office is 
keeping secret and withholding from publication many 
inventions made since the beginning of the" war and 
w^hich are useful in war. After the war, it will be im- 
perative that American inventors continuously improve 
American products and the manufacture of them and 
make basically new inventions to meet and keep ahead 
of the strenuous efforts which Germany and other na- 
tions will make to attain supremacy by these methods. 

Your Committee has, therefore, carefully investigated 
the Patent OflSce and the patent system, with a view to 
increasing their effectiveness, and, based on its investi- 
gation and the experience of its members, makes the 
foUowin recommendations: j 

The Committee has concluded to propose a program 
consisting of but four features, because it believes those ; 
features are of such fundamental importance that their | 
enactment into law would strengthen the entire system 
and directly and indirectly establish it upon a new and 
much more advantageous footing before Congress and | 
the public; and because with a simple program, pre- \ 
senting comparatively little opportunity for difference \ 
of opinion as to the desirability of the changes propos- 
ed, there would be an unanimity of opinion in support 
of it which could not be obtained if the program were 
more extended. ^ 

A Single Caurt af Patent Appeals. 

The first proposal which your Committee recommends 
is the establishment of a single Court of Patent Appeals 



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Journal of the Patent Office Society. 343 

that will have jurisdiction of appeals in patent cases 
from all the United States District Courts throughout 
the Country, in place of the nine independent Circuit 
Courts of Appeals in which appellate jurisdiction is now 
vested. 

Until 1891 the Supreme Court of the United States 
was the appellate court in patent cases for all the lower 
courts. At that time the right of appeal to the Supreme 
Court in patent cases was taken away, and that Court 
now hears patent cases only upon writs of certiorari, 
which are never granted unless certain very unusual con- 
ditions exist. 

The existence of nine appellate courts of concurrent 
jurisdiction in patent cases works serious hardships. 
While, theoretically, the law is the same in all of these 
courts, there has been an irresistible tendency to drift 
apart in the application of the law. It has even happen- 
ed in a substantial number of cases that two of the ap- 
pellate courts have taken a different view of one and the 
same patent. It is, of course, very important that the 
questions which always exist as to the validity and scope 
of a patent should be settled once and for all at the ear- 
liest possible date in the life of the patent, for, as a prac- 
tical matter, seventeen years (the term of a patent) is a 
comparatively short time in which to reduce the inven- 
tion to a thoroughly commercial form, to prepare for its 
manufacture, and to introduce it upon the market, and 
it is usually necessary to determine the validity and 
scope of the patent in order to determine the amount of 
money which it is safe to invest in exploiting the inven- 
tion. As things are now, whichever party succeeds in 
the first suit that is tried on the patent, the other party 
is ver\' likely to feel that in a second trial before anoth- 
er court he might have better luck. He, therefore, is in- 
clined to insist upon a second litigation. Meantime, he 
advertises that the questions involved were not settled 
in the first case. This means uncertainty on the part of 
the owners of the patent as to their rights and uncer- 
tainty on the part of the public as to its rights to use 
the invention or to determine what it must avoid in 
working in the same field, — a really intolerable situa- 
tion. 

Moreover, we shall never have a uniform and definite 



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344 JOUBNAL OF THE PaTENT OfFICE SoOIBTY. 

patent law, consistently applied, until we have a single 
Court of Patent Appeals independent of local sentiment, 
realizing a responsibility to fix the principles of the law 
and enforcing an harmonious application of these prin- 
ciples on the lower courts. It would be of the uhnosl 
value to those in the United States who are engaged in 
industry if the present confused condition could be cor- 
rected and a single tribunal devote itself to crystallimng 
the fundamentals of the patent law and to educating the 
courts throughout the land to uniformity in applying 
these principles in special cases. 

Attached hereto is a copy of a bill for the establish- 
ment of such a court, which has been advocated for many 
yeai*s by the American Bar Association, and is No. 5011 
of the House of Representatives, 65th Congress, Ist 
Sess. It provides for a court of seven members, which 
would sit in Washington, with a Chief Justice appoint- 
ed for life by the President. The appointment of the 
Chief Justice for life is in order that there may be an 
element of continuity in the court. The other judges are 
to be selected by the Chief Justice of the United States 
Supreme Court from the various District and Circuit 
Judges throughout the land, and each is to sit on the 
Court of Patent Appeals for a period of six years, or 
longer, if reappointed. 

Tliere are many advantages in this plan. Among 
them are the following: 

The judges would not be men who were appointed as 
judges primarily to deal with patent matters. There 
could be no charge that special interests had a hand in 
their selection or that they were chosen to promote 
special views as to the patent law and its application. 
They would be men who had been primarily selected by 
the President as fit to be Federal Judges in the locali- 
ties where they live. Federal Judges are men of a high 
type, and many of them are broad-minded men, much 
respected in the conamunities which they serve. They 
would take up the work of the Court of Patent Appeals 
with a breadth coming from the performance of their 
general duties of judges in their own circuits or districts 
and would, therefore, escape the narrowing which so 
often comes from continuous work in a specialized field. 

The Chief Justice of the United States Supreme Court 



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Journal of the Patent Office Society. 345 

would select from the District and Circuit Judges 
throughout the land men whom he thought most compe- 
tent to serve for a term of the Court of Patent Appeals. 
He would seldom, if ever, take more than one judge at 
a time from any one circuit. The court, therefore, would 
be made up of men who were primarily judges and who 
would be recognized as bringing to the Court of Patent 
Appeals the instincts and feelings, on the subject of the 
interpretation of the patent law, of the courts and of the 
people in the communities in which they live. 

Undoubtedly many of them would only be on the ap- 
pellate court for one term and after that they would go 
back to their circuits or districts with A training as pat- 
ent judges such as could only be obtained by sitting for 
a period of years in such an appellate court. They would 
not only be qualified as patent judges, but they would 
reflect the atmosphere of the appellate court and cause 
that atmosphere to pervade their own neighborhood. 
They would thereafter undoubtedly be selected to hear 
patent cases in the lower courts in preference to judges 
who had not had training in the Court of Patent Ap- 
peals. The courts throughout the country would, in 
time, become educated to the high and definite standards 
established by the Court of Patent Appeals, not only by 
study of the decisions of that court, but by the presence 
in the lower courts of men who had had this spedal 
training in the upper court. 

It is of the utmost importance that these judges in 
the Court of Patent Appeals should be well paid. Oth- 
erwise they might not be willing to break up their homes 
and move to Washington for a limited term. We think 
that their salaries should be higher than those of the 
judges of any court in the United States except the Unit- 
ed States Supreme Court. 

The increased expense due to such a court would be 
•small. The aggregate amount of work to be done by the 
Judges of the United States Courts as a whole would 
not be changed to any substantial extent, because all 
appeals must now be heard by the present courts and 
judges and, if there were a single Court of Patent Ap- 
peals, the Courts of Appeal in the nine circuits would 
be relieved of just as many appeals as were heard by it. 
The judges in some of the circuits are much overworked. 



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346 Journal of the Patent Office Society. 

but this is not true of many of the circuits. The Chief 
Justice of the United States Supreme Court, in select- 
ing these judges, could, if he chose, take into account the 
work of the different circuits and whether one circuit or 
another could best spare a judge. 

As the law now stands, judges from one circuit may be 
called upon, and not infrequently are called upon, to |?o 
into other circuits which are short-handed. In this way, 
any undue pressure upon the judges in any particular 
circuit, by reason of the loss of any single judge who 
went to the Court of Patent Appeals for six years, could 
be relieved. 

Moreover, it is'uo hardship to increase the number of 
judges where necessary. The whole judicial system of 
the United States is said not to cost as much as it does 
to run one first-class battleship, and the addition of a 
few judges would be a negligible burden upon the Treas- 
ury. 

A further advantage of a single Court of Patent Ap- 
peals would be that it would see clearly where there 
were defects in the statute and in the conditions and 
practice in the Patent OflSce, and could speak with au- 
thority on all matters which affect the theory and prac- 
tical working of the patent system. 

The Patent OflBce a Separate Instituticm, aoid Independent 
of the Department of the Interior. 

The second proposal which your Committee recom- 
mends is that the Patent Office be made a separate in- 
stitution, independent of the Interior or any other de- 
partment. 

The Patent Office was originally in the State Depart- 
ment, but, on the formation of the Interior Department 
in 1849, it was made a bureau of that department and 
has been so ever since. 

The only matters connected with the Patent Office 
with which the Secretary of the Interior has anything to 
do are the following: The Secretary of the Interior must 
submit to Congress all estimates for appropriations. All 
appointments, excepting those of the Commissioner, two 
Assistant-Commissioners, and five Examiners-in-Chief, 
are made by the Secretary but only on the recommenda- 



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Journal of the Patent Office Society. 347 

tion of the Commissi'oner. The eight places named are 
Presidential appointments, but the Secretary makes rec- 
ommendantions to the President. All matters of disbar- 
ment or reinstatement after disbarment of attorneys are 
passed upon finally by the Secretary. All matters of 
discipline are under the Secretary's jurisdiction. The 
Secretary of the Interior must approve all changes in 
the Rules of Practice of the Patent OflSce, but he cannot 
compel the Commissioner to make any change whatso- 
ever. 

No appeal lies to the Secretary from any decision of 
the Commissioner/ either in matters of merit or prac- 
tice. All such matters, as far as they are reviewable, 
rest with the courts of the District of Columbia. 

The Secretary of the Interior no longer signs the pat- 
ents, and has no jurisdiction to grant or refuse them. 

Thus, it will be seen that the Secretary of the Interior 
is not required to know anything about patents or patent 
law. He is not selected because of any qualifications for 
the granting of patents or supervision over the Patent 
Office. The Secretary of the Interior has less influence 
over the Patent Office than over any other bureau of the 
Interior Department, because there are appeals to him 
from all the other bureaus. Nor is the Patent Office re- 
lated to any other bureau of the Interior Department. 

The Secretary of the Interior has recently moved out 
of the Patent Office building, thus severing physical con- 
tact with the Patent Office, which is but a type of the 
lack of mental contact between the office of the Secre- 
tary of the Interior and the Patent Office. 

The experience of many Commissioners over a period 
of several generations has shown that, no matter how 
pleasant the personal relations may be, the Commission- 
er of Patents cannot expect any real benefit to the Pat- 
ent Office to flow from its connections with the Interior 
Department. There is nothing in common between the 
interests of the Interior Department and those of the 
Patent Office, and, consequently, nothing to produce any 
advantage from the amalgamation of the Patent Office 
into the Interior Department. 

Your Committee believe that to make the Patent Of- 
fice an independent bureau would greatly increase the 
respect of the public and Congress and the courts for it. 



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348 Journal of the Patent Office Society. 

and would make it easier to procure enlarged appropri- 
ations and better salaries than under present conditions* 

As to appropriations, under present conditions the de- 
mands of the Patent Office, for equipment, personnel and 
salaries are necessarily subjected to comparison both 
by the Secretary of the Interior and by Congress with 
those of several other unrelated bureaus, each pressing 
its own demands and criticising any apparent prefer- 
ence. In the opinion of your Committee, this operates 
as a severe handicap. In estimating the needs of the 
Patent Office, there should be no discussion of the de- 
mands, for example, of the Pension Office or the Gener- 
al Land Office. As an independent institution, the needs 
of the Patent Office would be judged on their necessity 
and the appropriations be determined by consideration 
of general policy. 

x\s to personnel: The enhanced dignity and indepen- 
dence of the Patent Office would render all positions of 
importance in it more attractive, and particidarly would 
make it easier to secure and retain in office men of the 
necessaW qualifications to fill the difficult office of Com- 
missioner. 

A copy of a proposed bill for making the Patent Office 
an independent bureau is annexed to this report and its 
enactment is recommended by your Committee. 

Increases in Force and Salaries of the Patent Office. 

The third proposal which your Committee recommends 
is a substantial increase in the force and salaries of the 
Patent Office. The patents granted by the United States 
Patent Office are of less average probable validity than 
formerly, because the number of applications for patent 
and tlie field of search are constantly increasing, whUe 
tlie examining force for many years has been insuffi- 
ciently large and has not been increased proportionate- 
ly. The inducements are so unattractive that twenty- 
five per cent, of the examining force has resigned within 
the past three years. Your Committee finds that the 
Patent Office is suffering both from lack of examiners 
and from inadequate compensation. 

The salaries of the Patent Office examiners have been 
nicreasod only ten per cent, since they were fixed in 1848, 



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Journal, of the Patent Office Societv. 349 

when they were approximately the same as those of 
members of Congress. At the time the salaries of the 
Examiner-in-Chief were fixed, they were the same as 
those of Federal District Judges. During the past sev- 
enty years, the compensation for technical service in al- 
most all other directions has been increased very large- 
ly. Congress, in creating new positions, is willing to 
pay technical men salaries more nearly approximating 
the usual compensation of such men in private service, 
but, having started a position at a given salary, is very 
loth to increase the salary. A Principal Examiner, to 
pass the entrance examination for the Patent Office, must 
himself have an education equivalent to that of a college 
graduate, and yet his salarj^ is so low ($2700 a year) that 
it is practically impossible for him to give his own sons 
a college education. 

Your Committee believes that salaries should be paid 
to the examiners i)roportionate to those paid for equally 
high technical work in other departments created recent- 
ly; such, for example, as are paid in the Army and Navy 
and in the oflSce of the Attorney General. The exam- 
iners are passing upon questions often involving millions 
of dollars, and they cannot be at their best in this vitally 
important work unless their salaries are large enough 
for them to live comfortably and without strain. The 
chances of making mistakes in the granting of patents 
are great enough even under the most favorable circum- 
stances, and they should not be increased by compelling 
the examiners to work for inadequate salaries. The in- 
flnceraents should be such as to present compensation 
and a career which would attract and hold men of the 
highest ability. The payment of adequate salaries and 
the creation of provisions tending to hold out attractive 
prospects to the examiners would also tend to raise the 
dignitj^ of the Patent Office and to increase its standing 
in the estimation of the public and of Congress and the 
courts, and so would tend to enhance the value to the 
public of the patent system. 

The work of the Patent Office has grown so much more 
rapidly than has the examining force that the examina- 
tion to determine whether or not the invention claimed 
in an application for patent is novel is imperatively xe- 
stricted to the field of search where it is most likelv that 



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350 JOUKNAL OF THE PaTENT OfFICE SoCIETY. 

the invention will be found. Many patents are granted 
which would not be granted if the examiner had time to 
make a thorough search. One of the Assistant Commis- 
sioners of Patents is compelled to devote a large amount 
of his time to speeding the work of the examiners in or- 
der to prevent further falling behind in the number of 
unexamined cases. Money is often invested on the 
strength of patents, only to find later that the patent is 
upset in the courts, because the Patent Office search did 
not go far enough to discover that the invention had al- 
ready been disclosed in some earlier patent or publica- 
tion. The granting of a patent with invalid claim or 
claims which are too broad or which are nebulous is a 
menace to the art to which it relates, and until such a 
patent has been adjudicated and its effect judicially de- 
termined, it tends to prevent manufacturing and com- 
merce in that art. Such a patent may, in this way, cost 
the public many millions of dollars besides the cost of 
establishing its invalidity or its true breadth or mean- 
ing by litigation, and the prevention of the granting of 
such patents by any reasonable increase in the examin- 
ing force of the Patent Office would, in many cases, be a 
very large saving. The inducement to inventors and in- 
vestors in patents is consequently lessened, the standing 
of patents before the courts and the public is impaired, 
and the production of inventions discouraged. 

Your CJommittee accordingly recommends a substan- 
tial increase in the sal^aries of the Patent Office officials, 
and in the number and salaries of the examiners, as pro- 
vided in the draft of the bill for that purpose which is 
attached hereto. 

While your Committee believes the Patent Office so 
fully justifies its existence that it would be an exceed- 
ingly profitable investment, even though all expenses 
were paid from the public income, the Patent Office has 
always been self-supporting and the increase in salaries 
and examining force which the Committee recommends 
can easily be entirely taken care of by the Patent Office 
income, if necessary. 

Compensation for Infringement of Patents. 

While an injunction can ordinarily be obtained against 
an infringer in a case where a patent is adjudged valid, 



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Journal op thr Patent Office Society. 351 

except where it would interfere with Government work, 
a money recovery has not heretofore been generally pos- 
sible except under most favorable circumstances. In a 
case where it cannot be said that the entire salability 
of the article depends upon the invention, it has been 
necessary to show just how much of the price of the ar- 
ticle is attributable to the invention, and as it is ordi- 
narily impossible to make such a separation, and as 
most patent cases are ones in which it cannot be said 
that the whole salability of the article depended upon 
the invention, it has resulted that recovery of money is 
seldom obtained in a patent suit. 

Recently there have been tw^o or three decisions in 
which the courts have taken a more liberal attitude, 
holding in effect that where an invention has been used 
by an infringer a reasonable royalty may be awarded to 
the patentee based on a mere estimation or on opinion 
evidence, even though no exact computation can be made. 
This is analogous to the attitude of the courts in personal 
injury cases and is entirely just and reasonable. While, 
as stated, there have been two or three decisions to this 
effect, it may take a generation to induce United States 
courts generally to adopt this position, if at all, and the 
Committee therefore proposes that the law be amended 
to provide, that as damages to the complainant, the court, 
on due proceedings had, may adjudge and decree to the 
owTier payment of a reasonable royalty or other form 
of general damages. Such an amendment has been pro- 
vided in the attached bill amending Section 4921, the 
Revised Statutes of the United States, and reading as 
follows : 

"If proof is not offered or. in the absence of adequate 
proof of the amount that should be awarded as damages 
or profits, the court, on due proceedings had, may adjudge 
and decree to the owner payment of a reasonable royalty 
or other form of general damages." 

This proposed amen<lment would enable the patentee in 
all suits where tlie ])atent has been found valid and in- 
fringed to recover at least a reasonable royalty, and 
would provide a money recovery in the great majority 
of patent suits where no recovery w^ould otherwise be 
possible. The Committee believes that the comparative 
certainty of financial return would answer one of the 



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352 Journal of the Patent Office Society. 

most common and strongest reproaxjhes against the pat- 
ent system, namely, — that a patent does not ordinarily 
pay the inventor any money, and it believes that the in- 
centive to invent would accordingly be greatly increased. 
There are some cases in which it seems to many who 
are^ familiar with such matters as though the courts were 
inclined to go to the other extreme and award damages 
out of all proportion. Where a complainant has shown 
that profits have been made by the use of an article pat- 
ented as an entirety, the infringer is liable for all the 
profits unless he can show, — and the burden of proof is 
on him to show — that a portion of them is a result of 
some other invention used by him. If the infringer can- 
not show what proportion of the profits is due to such 
other invention, then all his profits must go to the com- 
plainant. Any rule by which the entire profits are giv- 
en to a patentee in the absence of proof that they are 
all due to the invention of the patent sued upon, is un- 
fortunate and sometimes very unjust. The proposed 
amendment to the statue would permit a court under 
these circumstances to do substantial justice even though 
it could not be mathematically exact. In other words, 
the amendment to the statute would enable a court to 
avoid awarding either too much or too little. 

Conclusian. 

Your Committee, believing that the American Patent 
System is vitally useful in our system of Government, 
therefore recommends that the reforms herein discussed 
be enacted into law. 

Your Committee also recommends that this report be 
approved by the National Research Council and that the 
Committee be continued for the purpose of arousing and 
coordinating interest in and support for the necessary 
legislation of various national societies, manufacturing 
interests, bar associations and other elements of the pub- 
lic. 

Respectfully submitted, 
(Signed) 

(L. H. Baekeland) Acting Chairman 

William F. Durand, Chairman (absent in France) 

M. I. PUPIN 

R. A. Millikan 



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Journal of the Patent Office Society. 353 

S. W. Stratton (see reservation below) 
Reid Hunt 

Frederick P. Fish (see reservation below) 
Thomas Ewing 
Edwin J. Prindle 

Approved : except the separation of the Patent Of- 
fice from the Interior Dept., 

James T. Newton, Commissioner of Patents. 

Reservation by Dr. Stratton. 

I agree to the terms of the report with the exception 
of that portion which refers to the establishment of the 
Patent OflBce as a separate Government institution. It 
is not quite clear in my mind that this would be the best 
thing to do since in general it is best for all Government 
establishments to be represented in the Cabinet. 

^ S. W. Stratton. 

Reservation by Mr. Fish. • 

I entirely concur in the substance of the conclusions 
set out in the above report. 

I think, however, that the words **if proof is not of- 
fered, or" in that portion of proposed Section 4921 
which deals with damages and profits, should be omitted 
so that the sentence in which those words appear should 
read : 

"In the absence of adequate proof of the amount that 
should be awarded as damages or profits the Court, on 
due proceedings had, may adjudge and decree to the own- 
er payment of a reasonable royalty or other form of gen- 
eral damages." 

I do not think that a statute should directly or indi- 
rectly contemplate a condition in litigation in which 
** proof is not offered." I believe that the clause which 
I suggest would accomplish the desired purpose and that 
the Courts in applying the clause would be embarrassed 
if the phrase *'if proof is not offered'^ were in the stat- 
ute. 

I think also that general damages by way of a reason- 
able royalty or otherwise should not be awarded unless 
it appeared that actual damages or actual profits due to 
the unlawful use of the invention could not be determined 
and that there should not be any language in the^ Statute 
which implied that no effort be made to determine such 
actual damages and profits. 

Fbedebick p. Fish^ 

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354 Journal of the Patent Office Society. 

ON THE COST OF AN UNPATENTED ARTICLE BY 

VIRTUE OF ITS CONTACT WITH PATENTED 

MACHINES OR PROCESSES. 



By Dudley T. Fisher, Columbus, Ohio. 



Tlie Editorial paragraph on page 151 of the Decem- 
ber number of The Journal of the Patent Office So- 
ciety raises two quite distinct questions both of which 
are extremely interesting. First, in its manufacture 
from raw material to the finished article, how many 
times is an unpatented article, such as a leather shoe, 
taxed by virtue of its contact with patented machines or 
processes ; and second, is the price of such an article en- 
hanced by virtue of such taxation. Starting at the ulti- 
mate raw material, that is, the living animal whose skin 
is used for manufacturing a shoe, the cotton plant from 
which the thread for stitching and linings are produced, 
tlie ore from which the steel nails and brass eyelets are 
derived, etc., it is well known that every step in the man- 
ufacture of a leather shoe is more or less directly taxed 
by contact with patented machines and processes. The 
ramifications of these processes by which the various 
materials are prepared before they are assembled by 
the shoemaker, and even the processes within the shoe 
factory itself, are so complicated that it would be almost 
an impossibility to trace, with any degree of -accuracy, 
the exact amount which each tax levies upon a single 
pair of shoes. Only a casual glance at the subject, how- 
ever, is necessary to see that there are thousands of 
taxes levied by patented machines and processes upon 
the material in its various stages of preparation and 
upon the parts of the shoe after they arrive at the shoe 
factory. When hastily viewed it seems only reasonable 
to suppose that tlie levying of such innumerable taxes 
upon the raw material and partly finished products 
should enormously enhance the price of the finished ar- 
ticle. 

While 1 have no data at hand to support my opinion, 
I believe that it is only reasonable to state that if con- 
tact with a patented machine raised the price of an un- 



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Journal of the Patent Office Society. 



363 



Of the seventy-five examiners holding a permanent 
appointment who entered the military or naval service, 
a considerable number have already been discharged 
therefrom and others expect an early discharge. Pres- 
ent information indicates that four former examiners 
will not reenter the Office; the following have already 
been reinstated and are now at work, mostly in their old 
divisions : 



C. P. Kraft, 
K. R. Lesh, 
W. J. Eccleston, 
C. H. Blesterfeld, 
H. P. Freeman, 
W. W. Burns, 
Jos. Kurz, 
J. L. Fearing, 
E. P. DoweU, 
W. S. Brown, 
G. C. Hyde, 



J. S. Petrie, 
S. Shappirio, 
A. M. Pedersen, 
M. R. White, 
L. R. GraWll, 
C. Crews, 
O. I. Levy, 
Otto Ratz. 
Towson Price, 
Clair Johnson, 
R. H. Chilton. 



H. R. Johns, • 
C. S. Janes, 
John Flam, 
A. J. Fihe, 
H. Berman, 
M. J. Salomon, 
W. A. Strauch, 
C. A. Norton. 
M. W. McConkey, 
L. A. Maxson, 



We regret to record the sudden death of First Assist- 
ant Examiner Isaac H. Bryant of Division 32; he was 
struck by a car on the W., B. & A. Electric By. on the 
afternoon of Feb. 2 and instantly killed. 

Mr. Bryant had been a member of the examining corps 
since Sept., 1898, rising through the grades to the posi- 
tion of first assistant examiner and holding his last po- 
sition since Dec, 1907. 



Thurston B. Miller, formerly a clerk in the Issue and 
Gazette Division and now with the army of occupation, 
has sent to the chief of that division, Mr. Mortimer, an 
interesting souvenir in the form of a leaflet copy in Ger- 
man of President Wilson's note of Oct. 23, 1918, con- 
cerning peace, guarantees and an armistice. The leaf- 
lets were printed, it is stated, by the German govern- 
ment and circulated among their soldiers. The one sent 
Mr. Mortimer was found in a captured German dugout 
near Stenay and a translation of the leaflet proves that 
the original text of the note was closely followed. 

Lieutenant D. A. Howard, formerly of Division 21, is 
now at Camp Humphries. His first experience in the 



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364 Journal of the Patent Office Society. 

Anuy was gained at Camp Holabird, Maryland, where 
he conducted tests in rapid sand filtration on the new 
w^ater trucks. Subsequently he was transferred to the 
Engineer Officers' Training Camp at Camp Humphries, 
Virginia, where he graduated on October first. He had 
reached a port of embarkation when the armistice was 
signed. 

Major A. M. Holcombe, formerly an assistant exam- 
iner in the Patent Office, has been substituted by the 
War Department in place of Max Thelen as its repre- 
sentative on the Munitions Patent Board, of which ex- 
Commissioner Ewing is the president. 

The firm of Kerr, Page, Cooper & Hayward announc- 
es the entry into their firm of Mr. Sturges S. Dunham. 
Mr. Dunham was formerly an assistant examiner and 
located in Division 30 and in the Classification Division. 



FISHER & SMART ON PATENTS 

CANADIAN PATENT LAW and 
PRACTICE 

By HAROLD FISHER, B.A., LL. B.. of the Ontario Bar, OtUwa, and 
RUSSEL 8. SMART, B.A., M.E., of the Ontario and Quebec Bare, Ottowa 

Appendix on Patent Office Practice 

By WILLIAM J. LYNCH, I.S.O., Chief of the Canadian Patent Office 

i^This book, published in 1914 with half calf binding at $7.50 in Caoadi 
kSt and $8.50 in the United States, has met with a widespread sale, not 
only in Canada, but among the patent lawyers of the United States, 
whose clients have business in Canada. The work is the only modem text 
book on Patent L^w in Canada, and is referred to as an authority in all 
patent suits isee Concrete Appliance Co. v. Rourke 8 W. W. R. 6; Bitulitb- 
ic & Constructions Limited v. Canadian Mineral Rubber Co. 8 W. W. E. 
207). Price $6.00 per copy. 

SMART ON TRADE-MARKS 

By RUSSEL S. SMART, B.A., M.E., of the Ottawa Bar 

The only book published in Canada on the law of Trade-Marks and Prac- 
tice before the Registrar and in Courts. Price $4.00. 

Crain Printers, Limited "* ^"^^r^^* canada 



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H 
Z 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Office Society 

Office of Publication 1815 Clifton St., Washington, D. C. 
Svibscrlptton 92.00 a year Single copy 2S cents 

SDITORIAL BOABD. 

B. D. Sewall, Chairman, Publicity Committee. 

G. P. Tucker, Editor-in-Chief. 

J. Boyle. 

A. W. Davidson. 

W. I. Wyman. 

W. J. Weeseler, Business Manager, (Room 212, U. S. Patent Office,) 

1315 Clifton Street, Washington, D. C. Phone Col. 290. 
N. E. Eccleston, Circulation. 

Entered as second claas matter, September 17. ISlt, at the post office 

at Washington, D. C, under the act of Ifareh S. 1879. 

Copyright, 1919, by the Patent Office Society. 



Publication of signed articles in this Journal is not to be under- 
stood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 

VOL. I. APRIL, 1919. No. 8. 



EDITORIAL. 



While it is perhaps a little early to forecast the amount 
of work likely to come into the Office this year, figures 
available at date of writing are thought interesting. 

The receipt of cases in the year 1918 was unusually 
low, but for the first five months was substantially nor- 
mal. 

Receipt of new cases, exclusive of Trade-Marks, De- 
signs, Labels and Reissues, from Jan. 1 to March 19, in- 
clusive, may be tabulated for comparison as follows : 



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366 Journal of the Patent Office Society. 

1918 1919 

January 4776 , 5009 

February '. . 4826 ' 5378 

To Mar. 19 35-79 3635 

13181 14022 Increase 841 cases. 

Taking full receipts for March, 1918, and computing 
receipts for March, 1919, on the basis of the first 19 
daySj the tkble is - , .- 

1918 1919 

January 4776 5009 

February 4826 5378 

March 5900 5930 

15502 16|'i7 Increase $15 c^es. 

The most significant point fti^ffife^S^Bove perhaps is the 
regular rise in receipts month by month- this year. If 
this continues to the summer, and the receipts in the fall 
months are as heavy as customary for that time of year, 
the total receipts for the year should be equal to or 
above the normal, viz. 65,000 to 70,000. This would show 
a quick recovery of Patent Office business indicating a 
similar recovery in industry. 

But it is confidently expected that these figures will be 
largely increased. While a few foreign applications are 
coming in, the full tide anticipated has not yet set in. 

To handle the expected increase, no provision has 
been made by Congress ; the current appropriations cov- 
er no numerical increase in the examining corps and as 
regards the clerical force, progress is made in the oppo- 
site direction. After July 1, the Office must dispense 
with ten lower grade clerks. It looks, then, as if the 
Office will be unusually undermanned the present year, 
a situation inventors and manufacturers, as well as Pat- 
ent Officials, should seriously consider. 



s 



APPEALED CASES. 



Of the patent and trade-mark cases adjudicated by 
the Court of Appeals of the District of Columbia, dur- 
ing the year 1918, the Commissioner's decision was af- 
firmed in 38 cases ; affirmed in part in one case ; reversed 
in 16 cases ; and 14 cases were dismissed. 



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JOUBNAL. OF THE PaTBNT OpFIOE SoClETY. 367 

T9E EXECUTIVE COMMITTEE'S LETTER TO 
THE NATIONAL RESEARCH COUNCIL. 



(The following is an abridgment of the letter sent by the Ex- 
ecutive Committee of the Patent Office Society to Dr. George E. 
Hale, Chairman of the National Research Council.) 



The Patent Office Society at a recent meeting passed a 
resolution asking permission to lay before the National 
Research Council certain minor modifications in, and ad- 
ditions to, the recommendations in the Report of the 
Patent Committee to the National Research Council. The 
general aim of the Society is to lend all possible aid to 
your Committee. A brief statement of its conclusions 
follows. 

. Independence of the Patent Office. 

The following motion was carried: That the Patent 
Office Society approve, and support by all proper means, 
both as an organization and as individuals, that National 
Research Council bill which provides for the establish- 
ment of the Patent Office as a separate institution inde- 
pendent of the Interior Department and of everj^ other 
existing department of the Government. 

Compensation for Infringement. 

Although the proposed change in Section 4921 relates 
to a matter in which the examining corps of the Patent 
Office pretends to no special expertness, a judgment was 
expressed in favor of the omission from, the section 
amended as proposed the words, *'If proof is not offer- 
ed or'' — as advocated by Mr. Fish. 

Court of Patent Appeals. 

The Society approved of the establishment of a single 
court of patent appeals, but suggested that in place of 
the provision limiting the choice of judges to the circuit 
and district judges of the United States, the following 
be substituted : Not less than three of the associate judges 
of the said court shall at all times he appointees from 
among the eirctiit and district judges of the United 
JStates. 



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368 JOUBNAL OF THE PaTBNT OfFICB SoCBBTY. 

Office Force and Salaries. 

The Eooamining Corps and Officers. 

The Society desires to make no specific recommenda- 
tions respecting salaries for the examining corps. It 
earnestly invites attention, however, to the findings of 
the President's Commission on Economy and Eflficiency 
in its Report of the Investigation of the United States 
Patent Office, December, 1912, (62d Cong., 3d Session, 
House Document No. 1110, page 129). This report, 
made at a time when the cost of living was much lower 
than at present, recommends $3600 for principal exam- 
iners,— $600 more than that proposed by the Patent 
Committee of the Research Council. Concerning the as- 
sistant examiners, the Society suggests that the salaries 
proposed by the Patent Committee if increased by the 
bonuses approved by the 65th Congress, 3d Session, are ' 
not more than adequate to accomplish to a minimum ex- 
tent, the objects apparently held in view by the Patent 
Committee. 

AuQcMiary Force and Salaries Therefor. 

Those having supervision of the clerical force of the 
Patent Office feel that the number of employees and the 
salaries of the different grades now provided by the ap- 
propriation are inadequate and not on a par with the 
salaries provided for other bureaus. Consequently, they 
feel it their duty to recommend that certain increases in 
pay and certain additional places be provided. With 
the contemplated increase in the number of employees 
of the examining corps the volume of work will be in- 
creased for the clerical force, and additional employees 
will be required. 

The Patent Office clerical force has for many years 
hoen laboring under a disadvantage in having the en- 
trance salary fixed $720 per annum for copyists and typ- 
ists, so that efficient copyists and typists eligible for 
appointment and certified by the Civil Service Commis- 
sion have declined acceptance in view of the fact that 
the other offices of the Government offer $900 to $1200 
as an entrance salary. 

The present appropriation provides only thirty-five 
places above $1200 and below assistant chief of division 



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JOUBNAL OF THE PaTBNT OfMCB SoCBBTY. 369 

to which promotion may be n^ade in the clerical force, 
causing stagnation of promotion, which causes discon- 
tent. 

The following changes are therefore recommended : 

Financial Clerk, from $2250 to $2500 an increase of $ 250 

Librarian, from $2000 to $2700 " " 700 

Chiefs of Division, 8 instead of 6, from 

$2000 to $2500 " " 8,000 

Assistant Chiefs, 8 instead of 3, from $1800 

to $2100 " " 11,400 

Translator, from $1800 to $2000 " " 200 

Asst. Translator (additional) at $1600 " " 1,600 

Private Secretary, from $1800 to $2000 .. " " - 200 

Clerks, Class 4, 22 instead of 9 " " 23,400 

3, 33 instead of 9 " " 38,400 

2, 100 instead of 17 " " 116,200 

1, 125 Instead of 135 a decrease of 12,000 

Clerks $1000, 100 instead of 91 an increase of 9,000 

Draftsmen, 1 at $1800 and 3 at $1600 in- 
stead of 3 at $1200 " " 3,000 

Draftsmen, 3 at $1400 instead of 4 at $1000 " '* 200 

Copyists at $900, 40 instead of 90 a decrease of 45,000 

$720, 40 eliminated entirely. . . " " 28,800 

Messengers, no change. 

Asst. Messengers, no change. 

Laborers, 13 at $660 instead of $600 an increase of 780 

Examiner's Aids, no change. 

Copy Pullers, 24 at $600 instead of $480. . " " 2,880 

making a net increase of $130,410 and 37 additional em- 
ployees. 

In conclusion action was taken by the Society as fol- 
lows : 

Whereas, The Patent Office Society is keenly appreciative of 
the earnest work undertaken by the National Research Council 
in behalf of the patent system; of the time and effort thus far 
so generously expended; and of the great value of what has 
been already accomplished; now, therefore, be it resolved that 
the thanks of the Patent Office Society be, and the same are^ 
hereby extended to the National Research Council. 



FINANCIAL DEFICIT. 



For the first time since 1861 the Patent OflSce has to 
report a deficit covering its business operations for the 
year 1918. The deficit of $73,419 was not caused, how- 
ever, by any increase in expenditures, but by a falling 
off of receipts of $280,859. As a natural result of war 
conditions, applications for patents for inventions drop- 
ped from 67,590 in 1917, to 57,180 in 1918; patents is- 
sued dropped from 41,067 to 38,569. 



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370 JOUBNAL OF THE PaTENT OfFICB SoOIBTY. 

THE PATENT SITUATION IN ENENT COUNTRIES. 



Since the beginning of the war, the policy followed by 
Germany in respect to the patent rights of alien ene- 
mies, so far as can be learned, has been to issue restric- 
tive orders only in retaliation for similar orders against 
her citizens. In accordance with this policy, Germany- 
has been granting licenses to her citizens under Amer- 
ican-owned patents. The power to grant these licenses 
has been vested in an official called the ** Imperial Com- 
missaryf'' who has absolute discretion in the matter. He 
is authorized, but not required, to publish notices of the 
applications for licenses and to have full hearings of all 
parties concerned. The licenses granted have no fixed 
term of duration, but are subject to modification or can- 
cellation at any time within the discretion of this official. 
It is reported that comparatively few such licenses have 
been granted under American-owned patents. 

With respect to the situation in Austria and Hungary, 
it is reported that no licenses or other restrictions of 
American-owned industrial property rights have been 
issued, nor have any restrictions been issued against ap- 
plications for patents by our citizens. 



REQUIREMENTS FOR DIVISION. 



A further extension of the present practice of review- 
ing with the examiner proposed requirements for di- 
vision in doubtful cases, is desirable in order to avoid 
the delay caused by requirements made, but subsequent- 
ly disapproved. This is now being done as far as pos- 
sible and as far as the time of the law examiner in charge 
of division permits. The purpose steadily held in mind 
has been to make the practice uniform throughout the 
Office and to avoid annoyance to inventors by trivial 
requirements and danger to their real interests by re- 
quirements which might raise questions of double pat- 
enting. When distinct inventions are disclosed and 
claimed, capable of use apart from each other, the pos- 
sibility of division arises and should always be enforced 
if the inventions relate to recognized branches of the 
art having different fields of search as evidenced by the 
Office classification or otherwise. 



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Journal of the Patent Office Society. 371 
SCOPE OF UNITED STATES PATENTPROTECTION 



By George Ramsey 
of New York City. 



The point from which a subject is viewed has much to 
do with the conception of the scope and attributes of the 
subject. The blind men of Indostan went to study the 
elephant. One grasped the trunk, **The elephant is very 
like a snake"; another encountered the elephant's leg, 
**The elephant is very like a tree"; the third, striking 
the elephant's broad side, said, **The elephant is very 
like a wall." 

"And so these men of Indostan 

Disputed loud and long, 
Each in his opinion 

Exceeding stiff and strong, 
Though each was partly in the right 

And all were in the wrong." 

Patent property and the laws of the United States re- 
specting patent property have come to be viewed from the 
narrow viewpoint of the specialist. As a narrow base 
cannot well support a wide, broad shaft, so there is a ten- 
dency of the patent system to be dwarfed and restricted 
through a narrow understanding of the subject. 

A United States patent has been held by both eminent , 
scholars and jurists to be a ** contract" between the 
Government and the inventor, the Government offering 
a privilege and the inventor accepting the offer ; the con- 
sideration on the part of the Government being the grant 
for a limited time of the right to exclude others from 
making, using, or selling the patented invention, and the 
consideration by the inventor being the full disclosure of 
a new and useful invention of a specified character. 
This contract theory of patents upon inventions orig- 
inated in England, and is set forth in early English de- 
cisions. The judges of the United States Courts adopted 
the wording of those decisions and the word '* contract" 
in this manner crept into the American jurisprudence 
and because there seems to have been no substantial 
analysis of the term, nor objection to it, the term has 
stuck. 



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372 JoUBNALi OF THE PaTBNT OfFIOB SoCIBTY, 

British Patents. 

The early English laws gave substantially no protec- 
tion to the inventor. He might avail himself of such 
authority as a master exercised over his apprentices; or 
he might use his powers to persuade his workmen to 
keep his secret for him. If a competitor discovered his 
secret by fair means or foul, the English Courts, at 
early Common Law, gave the inventor no redress. It 
was not until 1820 that the English Courts decided that 
one who obtained a trade secret by unfair means should 
be enjoined from using it. 

Under these conditions, the growth of the arts was 
slow and almost entirely within the arts themselves. If 
some outsider — one who had not been regularly initiated 
into a craft by way of long apprenticeship — ^made au 
invention, he had neither the means of protecting his 
rights nor facilities for practicing his invention aud 
therefore in most cases his discovery was lost. Where 
some bold craftsman broke away from the teachings of 
his master and made an invention, he either kept it to 
himself or disclosed it to his fellow workmen and it was 
then kept as a secret of the craft. This procedure re- 
tarded development. 

The secret of soft porcelain was controlled by the 
famous Medici family and was so carefully guarded that 
when Francisco de Medici died in 1587, the secret died 
with him. Efforts were made all over Europe to redis- 
cover the secret and it was almost a hundred years there- 
after, namely, in 1673, when a Frenchman, Louis Pete- 
rat, was successful. 

The British Sovereign had, as an attribute of the 
Crown, the right to issue exclusive grants, usually in the 
form of either **Literae Patentes,'' (letters open) or 
**Literae Clausae'* (letters closed), the first being a type 
of grant under the seal of the Crown and being in th^ 
nature of a proclamation to the public directing atten- 
tion to the privileges granted; the latter were usually 
commissions directed to an individual. Since the Corpus 
Juris afforded no protection to the inventor, he turned to 
the sovereign and sought protection under the royal pre- 
rogative of the monarch. This was sometimes done di- 
rectly and sometimes indirectly through the offices of a 
favored courtier, preferably a patron of the arts and 
sciences. 



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Journal of the Patent Office Society. 373 

Patents upon inventions were iisually "Literae Pat- 
entes*' and in most cases the grants were both inclusive 
and exclusive, i. e., the patentee was granted the inclu- 
sive right to practice certain inventions in the realm 
and the public were excluded from practicing these same 
inventions under certain penalties of fines, imprison- 
ments, seizures, etc. The transaction for obtaining these 
patents was really a contract, in that a proposition was 
presented to the sovereign by the inventor, or his patron, 
and the proposition was accepted or refused as the 
Crown saw fit. There was a meeting of the minds, and 
there was an agreement which included the payment of 
certain money considerations by the patentee, either 
yearly or at other stated periods ; the consideration from 
the Crown being the grant of the inclusive and exclusive 
privileges. In these ancient patents, disclosure was not 
required; that is, the patentee was not required to dis- 
close his invention to the public. He no doubt was re- 
quired to satisfy the Crown that his invention was meri- 
torious. (England today requires taxes under penalty 
of forfeiture of the patent. This is really but a continu- 
ation of the money consideration. The modem British 
patent also includes the provision that the patent shall 
be **revokable if the said patentee shall not supply or 
cause to be supplied for our (the King^s) service all 
such articles of the said invention as may be required 
by the officers or commissioners administering any de- 
partment of our service in such manner, at such times, 
and at and upon such reasonable prices and terms as 
shall be settled in manner for the time being by law 
provided.'') In reference to this kind of a transaction, 
Lord Eldon, (Harmer vs. Plane — Chancery 1807) said, 
*' Where the Crown on behalf of the public grants letters 
patent, the grantee, entering into a contract with the 
Crown, the benefit of which contract the public is to 
have,'^ etc. This is the first use of the word *' contract" 
in defining a patent. 

The first record in history of a patent upon an inven- 
tion is in 1316, when a .petition was presented to Edward 
in for a patent upon the method of compounding the 
'* philosopher's stone," that magic tablet which the own- 
er might use to invoke good spirits to make wishes into 
realities. The King appointed a commission of three 



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374 JouBNAL OP THE Patbnt Officb Sooibty. 

members to investigate. Upon the commission report- 
ing that the invention was both new and useful, a patent 
was granted for a limited time. 

Patent grants in England were not limited to inven- 
tions, but included monopolies upon many necessities of 
life, and such commodities of trade as the Monarch de- 
cided might bring profit to a favorite and to the Crown. 
Certain sovereigns, particularly Queen Elizabeth, util- 
ized these sales of patent rights or ** sales of monopo- 
lies '* as a means of raising funds without direct taxa- 
tion of the people. The wrath of the people, because of 
the increased costs, was directed against the patentee 
and not against the Crown, so that while the Crown 
shared in the profits, it attempted to, and for a time did, 
dodge the responsibility. Finally substantially all the 
commodities of life were controlled by these monopolistic 
grants and the burdens of the people became so great 
that a revolt was prevented by timely legislation. So in 
1623, in the reign of James I, the parliament passed the 
Statute of Monopolies where it was declared that all 
monopolies granted by **Literae Patentes'' or other- 
wise were odious and unlawful, with the exception of 
patents upon inventions and manufactures new in the 
realm, and specified that such patents might be granted 
to the inventor or introducer for a period of fourteen 
years. This prohibitive legislation is not a direct legis- 
lation in favor of patents or inventions, but merely 
makes such patents exceptions and is merely declarative 
of the Common Law as it has already been interpreted 
by the courts. The fact that such patents were specifi- 
cally excepted when monopolies were being stricken down 
as odious and harmful shows that the legislators must 
have considered patents upon inventions of great merit. 
The patent laws of England today are founded upon this 
exception in the Statue of Monopolies. 

In Queen Anne's reign (1702-1714) a statute was pass- 
ed requiring patents to include a specification. This 
specification was required not so much as a considera- 
tion for the patent, but as a safeguard against fraud. 
The applicant was required in his specification to clearly 
set forth the invention and the patentee could not there- 
after either restrict or enlarge the scope of his grant. 
All matters in the specification were held strictly against 



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Journal of the Patent Office Society. 375 

the patentee and many English patents have been held 
void and invalid because of some trifling error either in 
the mere wording of the statement of the invention or 
the title of the petition, on the ground that the grantee 
had not bargained fairly. 

United States Patents. 

The difficulties between the colonists and the mother 
country w^ere over the question of rights, both civil and 
property. England refused to recognize rights which 
the colonists held to be inherent, and the colonies re- 
volted. It may have been the reclaiming of the wilder- 
ness where man relied upon himself and in a certain 
sense went back to the primitive to make his livelihood 
and shelter with the labors of his own hands and mus- 
cles of his back, that led him to believe that that which 
he made was his own, — not by right of gift of some man- 
made king, — ^but by right inherent in Nature ; or it may 
have been that broad-minded men found life under the 
monarchy restrictive and therefore turned to the New 
World to realize the freedom which their ideals and 
thoughts demanded. At any rate it is clear that these 
men were thoroughly convinced that each individual was 
endowed with certain * Unalienable rights'^ in life, lib- 
erty and the pursuit of happiness; that the individual 
had the inherent right of protection to his property and 
to his person; that the lawful property he produced by 
his own hands from his own materials, or by his own 
mind labor, was his own; and that it was the duty of 
the State to afford him means to protect it. 

The statesmen and lawyers of the colonists' days were 
well acquainted with the laws of the mother country and 
in many cases used the teachings of the laws of that 
country as guides, but in laying the comer-stones of the 
republic the ** privileges'' bestowed under the monarchy 
by the prerogative of the sovereign were now set forth 
'as the ^'inherent rights" of the individual. With this 
in mind, the proceedings relating to protection for in- 
ventions in the Constitutional Convention are of interest. 
On August 18, 1789, Mr. James Madison, of Virginia, 
submitted a resolution to the Constitutional Convention 
that Congress *^ shall have power'': — 

"To secure to literary authors their copyrights for a limited 
time/' Italics mine) 



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376 JOTJBNAL OF THE PaTENT OpFIOE 5oCIBTY. 

'To encourage by premiums and provisionB the advancement 
of useful knowledge and discoveries." 

.On the same day, Mr. Charles Pickney, of South Car- 
olina, submitted the following resolution: 
That Congress ^* shall have power^': 

"To grant patents for useful inventions/' 

"To secure to authors exclusive rights for a certain time." 
(Italics mine) 

In both cases these resolutions include the word *^ se- 
cure'' relative to copyrights, that type of property which 
the Common Law of England already recognized. On 
September 5, 1787, David Brearly, of New Jersey, from 
the Committer of Detail, reported to the Convention the 
recommendation: 

That the powers of Congress shall include the power 
to *^ promote the progress of science aiid useful arts, by 
securing, for limited times, to authors and inventors the 
exclusive right to their relative writings and discover- 
ies.'' This recommendation was unanimously adopted 
without debate and was incorporated in the final draft 
of the Constitution. This is the first law in the history 
of the World which aflBrmatively recognizes property 
rights in the result of the type of mind work productive 
of inventions. It is notable that in this clause neither 
the word ** patent" nor ** grant" occurs. 

It will be remembered that patents in England are 
granted by the Crown, — the Executive branch of the 
Government, which by royal prerogative could create 
** privileges." In the United States patents have their 
foundation under the Constitution in the powers of Con- 
gress, — the Legislative branch of the Government, that 
department of the Government which passes laws for 
the protection of existing *^ rights." In other words, in 
the United States the patent becomes an enabling in- 
strument and not a creative instrument. 

The official writings and statements of colonial days* 
indicate that the words ^^by securing'' were used ad- 
visedly as indicating the protection of a '* right," not 
the mere granting of a ** privilege. " Madison, writing 
in the Federalist, states, **The copyright of authors has 
been solemnly adjudicated in Great Britain to be a right 
at Common Law. The right to useful inventions seems, 
with equal reason to belong to the inventors." 



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Journal of the Patent Office Society 

The Declaratioii of Independence states: "' 
these truths to be self-evident, that all men ar€ 
equal; that they are endowed by their Creator ^ 
tain inalienable rights. Among these are life, 
and the pursuit of happiness ; that to secure thei 
Governments are instituted among men * * * 
ics mine) 

The Preamble of the Constitution states, ^* 
people of the United States, in order to form 
perfect union, establish justice, insure domesi 
quillity, provide for the common defense, proi 
general welfare, and secure the blessings of li 
ourselves and our posterity, do ordain and estal 
Constitution for the United States of America.' 
ics mine) 

General Washington, in a letter dated Septei 
1787, submitting the Constitution to the Ameri( 
lie stated : 

It is obviously impractical in the Federal Governmei] 
States to secure all rights of independent sovereigrnt 
and yet provide for the interest and safety of all. 
mine) 

The word ^^ secure'' was used very frequently 
ison in his public writings and speeches, partici 
his debates in the first Congress, and in subs 
all cases Madison uses the word ^^ secure" in co 
with the word ''rights." It therefore follows 
that when this clause in the Constitution is read 
just what it says, that is, Congress shall have i 
secure to authors and inventors, their rights foi 
times. 

The spirit of the patent clause in the Constitu 
clearly understood by the statesmen and law-m 
that early period. Mr. William V. Murray, o 
land, on Wednesday, January 30, 1793, speakinj 
patent bill then pending before the House of B 
tatives in his debate said : 

♦ ♦ * The law ought to facilitate the granting o 
and, as the right of exclusive enjoyment, at least fc 
ed term, was inherent in all equally, in every part • 
tion, BO all should, as far as possible, have facility 
their pretensions known and effectual. A country 
(Great Britain) had afforded, it was true, much exp< 



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378 Journal of the Patent Office Society. 

the subject; but regulations adopted there would not exactly 
comport in all respects either with the situation of this coun- 
try, or with the rights of the citizens here. The minds of 
some members had taken a wrong direction, he conceived, from 
the view in which they had taken up the subject under its 
analogy with the doctrine of patents in England. There is 
this strong feature which distinguishes that doctrine in that 
country from the principles on which we must settle it in this. 
These patents are derived from the grace of the Monarch, and 
the exclusive enjoyments of the profits of a discovery is not 
so much a right inherent as it is a privilege bestowed and an 
emanation of prerogative. Here, on the contrary, the citizen 
has a right in the inventions he may make, and considers the 
law but as the mode by which he is to enjoy their fruits. ♦*•♦ 
He thought it was of consequence that no invention, however 
small, or irrelative it might at first appear, should be lost; 
and, where he saw the idea of a patent ridiculed by some, 
and unattended to by others, he believed they were accus- 
tomed to take things in their appearances, and had not exert- 
ed their reflection. A little reflection should teach us that 
whatever is great and astonishing in the works of art was 
humble in its origin, had been opposed by ignorance or cramp- 
ed by poverty, and had become important but by gradual ac- 
cumulation and a very slow progression; and that the wisdom 
of Government should be exerted in forming a repository, 
where nothing that might eventually be of service should be 
suffered to perish. ♦ * * * 

As above pointed out, the rights of an inventor to his 
invention at Common Law were his just as long as he 
could control them and that was just as long as he could 
keep his secret or prevail upon his workmen to keep it 
for him. His rights were far from *' secure''; — they 
were very insecure. 

The rights of a citizen of the United States and the 
rights of a subject of a king of England to their respec- 
tive inventions are today substantially the same where 
the invention is practiced in secret; i. e., they are rela- 
tively unsecured against anything but theft and fraud; 
but there is a great diflFerence in the laws of these coun- 
tries for '* securing'' these rights. In the United States, 
Congress is empowered to provide laws for '* securing" 
rights to inventions and the inventor has the same in- 
herent right to demand a patent on his patentable inven- 
tions that he has to demand and invoke the protection 
of the law for any other inherent right. In England an 
inventor today makes a bargain with the Crown and ob- 
tains a patent from his king as a favor under the exer- 
cise of the royal prerogative. The legality of such Brit- 
ish patent rests on an exception in the general law that 
struck down the abuses of this same royal prerogative 



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Journal op the Patent Office Society. 379 

which the inventor mnst invoke to secure his favor. In 
the United States (providing his patent will promote the 
progress of science and useful arts, and comes within the 
requirements of patent laws) he may demand his patent 
and while the form of his application is that of a peti- 
tion, he does not present it as a beggar, — an object of 
-charitable reward by a paternally disposed Government. 
He comes to have his invention clothed in that *^ secur- 
ity'^ which the law clearly sets forth to be his *' right.'' 
The result of the proceeding which clothes his invention 
in this legal armor against piracy is not a contract, it is 
not a meeting of the minds, it is not a bargain compris- 
ing the offer of a disclosure and the holding out of a 
^ grant. 

The proceedings leading to the grant of a patent, are 
an investigation, of necessity requiring disclosure, to de- 
termine what has been invented and. whether the invent- 
or has complied with the law of the land. He must dis- 
close fully and fairly in order that the investigation may 
be full and fair. When his invention has been defined, 
its dimensions in the art measured, and no legal barrier 
is found, the patent is his by legal as well as inherent 
.right. In order that the world may know just what has 
been found to be the boundaries of his '* secured" prop- 
erty, the instrument evidencing the grant sets forth the 
precisely defined limits, that is, it defines what the Gov- 
ernment is willing to concede and seal as being the iuT 
vention he is entitled to ''claim," i. e., control. When 
an inventor has complied with the laws provided, the 
Government is no longer a free agent, — the patent must 
issue. As the elephant has some of the characteristics 
defined by the blind men, so a United States patent has 
some of the attributes of a contract, but to so define a 
United States patent is to overlook the foundation upon 
which our patent system stands. 

A United States patent therefore is an investiture, 
securing for a limited time, to one complying with the 
laws provided, the right to exclude others by due pro- 
cess of law from making, selling, or using a specified 
invention within the United States and territories there- 
of, and is evidenced by an instrument under Government 
seal defining the metes and bounds of the invention as 
determined by a governmental survey. 



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380 Journal op the Patent Office Socibtt. 
INVENTION. 



Probably one of the most difficult questions that the 
members of the profession — ^whether in or out of the 
Patent Office — are called upon to deal with is this ques- 
tion of what constitutes invention, how is its presence 
determined, and how can it be measured. It confronts 
one continuously, and I presume that more study has 
been had of this question than upon any other which 
comes before the members of the profession. And yet 
when we look about us we find that it is as much of a 
**will-of-the-wisp^' to us as it has been throughout the 
many years in which our patent system has been in ser- 
vice. 

There appear to be almost as many view-points as 
there are practitioners and people called on to deal with 
the subject. Each .attorney and examiner seems to have 
l^is individual ideas on it. The judges of the courts call- 
ed on to deal with patent cases have their individual 
views, and our text-book ** sharps'' — taking the cue from 
the latter apparently — ^more or less side-step the ques- 
tion, simply pointing out various instances showing dif- 
ferent ways in which it has been interpreted. So tha.t 
at the present time it is possible to obtain so many va- 
ried views and diverse opinions as to what the answer 
may be, that it. is practically a matter of guess-work to 
determine in advance the possible decision that might 
be made in any case where the question is involved ; one 
man's guess is as good as another's and it is probably 
because of this that the matter is left to the decision of a 
court through the medium of a law-suit. 

Being of a retiring nature I don't like to intrude, but 
for the purpose of starting an interesting discussion I 
am presenting this article with a view to submitting a 
formula of my ovyn as a subject for discussion. It is 
based on a series of factors which I have personally em- 
ployed for a number of years when called on to test the 
questions of invention; I have used them ih the prepara- 
tion and prosecution of applications, determining ques- 
tions of validity, etc., and in experting suits, and, so far 
as I remember, the factors have never failed me. I had 
never attempted to incorporate them into a fonriula — 
never having any need for its use — but in a recent matter 



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Journal of the Patent Office Society. 381 

the contrast between what seems to be the general trend 
of thought in the matter and these simple factors was 
so clear that I thought it advisable to make the direct 
contrast and to do this I hurriedly sketched a formula 
• of these factors. I tried to frame one which would fit 
the opposite side of the question, but when I came to 
study the wide divergence in view-points it seemed im- 
possible to produce a frame-work that would support 
the different factors which have heretofore been em- 
ployed. 

The particular wording of the formula as used is in- 
cluded in the following — I have extended it slightly for 
the purpose of the present paper. The formula proposed 
— subject to revision in the light of the discussion which 
this paper is designed to bring about — is as follows : 

INVENTION consists, fundamentaUy, in the isolation and 
solution of problems. The presence of invention is made evi- 
dent by the failure of the prior art to present the complete 
solution of the totality of problems involved. The measure of 
the invention is provided by the character and extent of the 
problems and the manner of solution. 

Isolation of the problems is a prerequisite to the formula- 
tion of the solution or solutions. If the art carries no sugges- 
tion of the problems, it carries no solution, and the invention 
is of basic scope. If it carries a partial solution, the missing 
problems must be isolated from those solved by the known 
solution antecedent to development of a solution; and, basical- 
ly, such solution must deal with both the known and the iso- 
lated problems in their relations one to the other, rather than 
individually. 

If the art fails to suggest any solution — even broadly — of 
the problems solved, the invention Is of basic scope. 

As will be understood, the test of invention is made on 
the basis of the problems solved rather than on the 
means employed in the solution. 

Personally, I have for years considered that tests of 
invention should be made on the basis of the solution of 
problems, since it is evident that in any invention the 
inventor must first have a more or less definite idea of 
the final end to be accomplished, and in reaching the 
final solution must have followed — ^knowingly or unfaiow- 
ingly — the course pointed out in the formula basis. It 
is possible for the attorney, through analysis, to devel- 
op the particular problems solved, by examination of 
the complete invention, and when this is done thoroughly 
I have found that the problems which form the real test 
in the comparison with the art can be readily isolated, 



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382 JOUKNAL OP THE pATENT OfFICB SoCIBTY. 

using the solution as the guide in the isolating analysis. 

Where the solution itself forms the guiding test one 
inevitably finds that what seems to be the logical course 
of development of an invention is reversed. We say 
that ** there is no invention in adding this to that" or 
*4n substituting that for th^ other'' — we are thinking 
and speaking in terms of the physical means of the solu- 
tion. Each time I hear or read a statement of this kind 
I am reminded of a general example I have used per- 
sonally in attempting to demonstrate the mental pro- 
cesses of an inventor who would logically follow the 
course which such statements seem to provide : 

A (the inventor) happened to have a lot of loose ele- 
ments at hand and which were not being put to use ; they 
may have been a number of gears, shafts, cams, levers, 
etc, — possibly a unitary mechanism or two — a frame, 
etc. He does not like to see them idle, so he starts in to 
assemble them in various ways — much on the order of 
solving one of our old-time cut-up-picture puzzles. He 
finally gets a certain small combination which seems to 
be a good mechanical movement, so he continues adding 
to the combination, putting a part here, shifting the po- 
sition of another, making substitutions, etc., until final- 
ly he builds up a large machine in which the parts seem 
to work in synchronism, etc., and then finds he has pro- 
duced a machine capable of operation as a work-per- 
forming apparatus in a certain art, thus completing tlie 
invention through finding a use to which the combination 
can be put, the invention being made up of certain com- 
binations of parts which he laboriously assembled to see 
if they could be put to sonle useful purpose. 

Of course, this is a fanciful statement, for we all know 
that no inventor did or ever could work on any such 
basis. And yet when we try to analyze the generally ac- 
cepted view-point as to the meaning of ** invention, " we 
find that this fanciful statement is really expressive of 
the assumed mental processes. When we attempt, un- 
der present conditions, to shift from this general view- 
point and rest an individual case on the basis of the so- 
lution of problems — and attempt to protect the inven- 
tion on such basis — we are confronted by the fact that 
the determining factor considered is the particular ele- 
ment or elements specified in the claim and not the func- 



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Journal of the Patent Office Society. 383 

tion which that element performs — we find that the clAim 
is considered functional. It seems to me that this con- 
dition is due to the erroneous attempt to base the ques- 
tion of ^ invention" on the specific means of the solu- 
tion instead of on the inherently correct basis of the 
problems solved. 

Of course I have had my troubles in using these fac- 
tors in the presence of the prevailing opposite thought. 
And in presenting the matter for discussion I may be 
trying to ease my own pathway through the sea of trou- 
bles of a practitioner, but I would be greatly interested 
in reading the view-points of others as to the use of a 
formula of this type. 

Horace G. Sbitz. 
New York Citv, 
March 1, 1919.^ 



CLASSIFICATION OF PATENTS. 



During the past year the Office lias been following a 
new plan in the reclassification of patents. Heretofore 
it was the custom for the revisfon to be carried on by a 
group of assistant examiners under the direct super- 
vision of an examiner of classification; by the present 
plan the work is being done in the examining divisions. 
Each principal examiner, with the aid of his assistant 
examiners, is required to revise the classes of his owti 
division, with the patents of which he is presumed to 
be familiar, the work of all divisions being under the 
general supervision of the Examiner of Classification. 
This plan has resulted in greatly expediting the work, 
and but for lack of clerical force it is believed the re- 
classification of domestic patents could be completed in 
two more years. During the past year, over 125,000 
patents have been reclassified. There remain, roughly, 
half a million patents yet to be reclassified. 



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384 JouBNAii OP THE Patbnt Ofpicb Society. 

INTERNATIONAL TRADE-MABKS— THE PRESENT 
AND THE FUTURE. 



By Lawrence Langneb, 



Member of Patents and Trade-Marks Committee of the American 
Manufacturers Export Association. 



(Excerpts from an address delivered at the Annual Convention of 

the American Manufacturers Export Association, New York, 

October 30-31. 1918.) 



The dangers to which an exporter is exposed, if he 
does not register his trade-mark in foreign countries, 
are now generally recognized in this country. Only re- 
cently, our Department of Commerce issued a report to 
the effect that the registration of trade-marks in the 
various foreign countries may be regarded as one of the 
fundamental steps of preparation for trade after the 
war; that foreign trade-mark registration is perhaps of 
even greater importance now than under normal condi- 
tions, in view of the reported activity of enemy agents 
and others in appropriating American trade-marks ; and 
that any article worth advertising abroad is worth pror 
tecting by means of trade-mark registration. 

I understand that the International High Concmaission 
and State Department are now making a special inves- 
tigation of the international trade-mark situation with 
a view to ascertaining what remedy, if any, is possible 
to alleviate these unfair conditions in regard to interna- 
tional trade-mark protection to which I have referred. 

I think it is apparent to all of us that we are at the 
door of a new era in export conditions — the export tr&de 
of the United States, the development of the last five 
years—is going to be put to the test. In these times, all 
of us have to venture on prophecy, and for this reason 
T shall deal first with the situation as it is today, and I 
will then venture to put before you an outline of those 
policies which, if followed by our Government in the 
wonderful opportunities for international cooperation 
now afforded, will procure fairer dealings for our trad- 
ers in the various foreign countries. 



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JouBNAii OF THE Patbnt Officb Sooiety. 385 

So prevalent has the appropriation of trade-marks be- 
come- in the Argentine Eepublic, that attorneys who 
make a practice of representmg domestic concerns in the 
Argentine, such as firms of importers, have actually 
evolved an ethical reason for appropriating the trade- 
marks of American manufacturers. This ettiical reason 
is that if the Argentine concern representing the Amer- 
ican concern does not steal the trade-mark, it will be 
stolen by some one else. These ethics are preposterous 
from the standpoint of the American manufacturer, and 
yet from the standpoint of the Argentine importer, it is 
better for the American to have his mark stolen by a 
friend, than by some less disinterested party. Experi- 
ence has shown that when these ** friends'^ have been 
requested to assign the Argentine marks to the Ameri- 
can concern, excuses are made which lead us to believe 
that, after all, our Argentine friends wished to have a 
hold on us which would forever preclude us from deal- 
ing with any other concern in the Argentine in goods 
bearing the trade-mark in question. Under these cir- 
cumstances, unfair as the expense seems to be in the 
case where the possibility of doing business has not been 
tested out, yet it appears to be necessary to lay down 
the rule that no dealings should be had with parties in 
the Latin American countries until the trade-mark ap- 
plication has actually been filed in the Trade-Marks Of- 
fice. Any exporter who fails to take this precaution 
cannot complain that he has not been adequately warn- 
ed. For the past two years a great deal has been writ- 
ten on this subject and circulated throughout the coun- 
try, and even the most conservative of our manufactur- 
ers, who have thought that where ignorance is bliss 'tis 
folly to be wise, have awakened to the realization that 
their ignorance and blissfulness has cost them their 
trade-m^^rk rights in countries in which they might oth- 
erwise have built up a successful business. Nor does 
the loss of a trade-mark, pirated in this way in a coun- 
try such as Argentina, extend only to the country in 
which it is pirated. A great many of the advertising 
periodicals are circulated throughout all of the countries 
of Latin America, and it is not an easy .matter to use 
one trade-mark in business in one Latin American coun- 
try, and an entirely different trade-mark in another Lat- 



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386 Journal of the Patent Office Society. 

in American country, since it precludes advertising the 
articles by a single advertisement in th« international 
periodicals. Moreover, it is not usually convenient for 
manufacturers in this country to use different labels and 
trade-marks on the different goods according as they 
are shipped to one country or another, as confusion in- 
evitably results from this course. In many instances, 
the trade-mark itself is actually cast on the goods in the 
process of manufacture, and in one case I remember 
that where a mark had been appropriated in Cuba, in 
connection with a well-known cash register, it became 
necessary to make special plates for such cash registers 
as were manufactured in this country and shipped to 
Cuba. These are merely inconveniences, serious enough, 
and after all, it is possible to overcome them, but the 
loss of the good will in a valuable trade-mark, upon 
which millions of dollars have been spent in internation- 
al advertising, is a far more serious consideration, and 
no amount of inconvenience will compensate for this I6ss, 
Many manufacturers are alive to the simple fact that 
industrial property, such as trade-marks and patents, 
represent the insurance policy on the good will of their 
business. The fees which are paid for trade-mark reg- 
istrations represent the premiums which are paid on the 
insurance policy. Just as no up-to-date machinery man- 
ufacturer can afford to be without a development depart- 
ment, unless he is willing to be outstripped by his com- 
petitors, and must, therefore, install such a department 
and protect the inventions developed by him under the 
Patent Laws of this and other countries, thereby insur- 
ing the capital invested in his business — so by register- 
ing trade-marks in the various foreign countries, the ex- 
porter thereby insures the good will of his business and 
the money and effort which he has spent in advertising 
liis goods and developing his trade in those countries. 
I have made an estimate of the costs in annual payments 
of insuring the good will of an export business, no mat- 
ter whether it be great or small, whether it be a one 
hundred thousand dollar corporation or a ten million 
dollar corporation, and I find that the average cost per 
annum of insurance by trade-mark registrations in the 
Latin American countries amounts to less than $5.00 per 
country per annum. No doubt all of you have seen, in 



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Journal of the Patent Office SbciBXY. 387 

the prospectuses of corporations, items such as **good 
will and trade-marks^' estimated at many millions of 
dollars. Taking the figure of $5.00 per avmwm per coun- 
try as the cost of insurance of the good will of a busi- 
ness, it does not seem to me that this cost is inordinate- 
ly high as compared with the cost of insurance of other 
forms of property which are not nearly so liable to be 
stolen or appropriated as trade-mark property. 

It is not generally known that in Austria, Bulgaria, 
Cuba, Denmark, Finland, Germany, Greece, Guatemala, 
Haiti, Honduras, Hungary, Norway, Panama, Portugal, 
Russia, Servia, Spain, Sweden, Switzerland and other 
countries, it is absolutely impossible for an American 
exporter to register his trade-mark unless he has al- 
ready registered it in the United States Patent OflSce. 
Registration of a trade-mark in the United States Pat- 
ent Office is the door through which we must pass in or- 
der that we may register our trade-mark in the coun- 
tries which I have just mentioned. One of the reasons 
why many of us are unable to register our trade-marks 
in such foreign countries is because that door is closed 
to us. Someone has remarked that the function of the 
United States Patent Office is to prevent the registra- 
tion of trade-marks. It cannot be said that its practice 
is in entire alignment with the domestic business inter- 
ests of this country nor does it in any way assist us in 
our international trade-mark difficulties. This cannot 
be blamed upon the Patent Office. The Patent Office is 
merely an instrument to carry out the laws in this coun- 
try, and is itself hampered in adopting a broader-mind- 
ed attitude by the Court of Appeals of the District of 
Columbia, a body which seems to be completely out of 
touch with the commercial activities of this country, and 
yet is in a position to review the practice of the Patent 
Office and to impose conditions for the registration of 
marks which make it almost impossible to secure the 
registration of certain popular types of trade-marks in 
this country. In particular, I have reference to the prac- 
tice of mutilating marks which now forms a new instru- 
ment for preventing the proper registration of trade- 
marks in this country, as a result of a recent decision of 
the Court of Appeals of the District of Columbia. Un- 
der the practice resulting from this decision, every part 



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388 JouBKAL OP THE Patent Office Socibty. 

of the mark which is not the exclusive property of the 
owner, whether it be his name, or a picture, or some kind 
of device for which he does not attempt to claim exclu- 
sive monopoly, must be removed from the drawing, so 
that the owner of the trade-mark ultimately succeeds in 
securing the registration, not of his trade-mark, but of 
particles of it. He then has to register these particles 
in the various foreign countries, and to rely upon these 
particles for the protection of his good wilL (I under- 
stand that the Commissioner of Patents has recently 
modified this practice.) In my opinion, one of the most 
important questions before this Convention, so far as 
trade-marks are concerned, is the bringing of our domes- 
tic trade-mark situation into line with our export needs 
to such an extent that our system does not hamper us 
from securing trade-mark protection abroad. The fact 
that the larger proportion of trade-marks used in this 
country are not registered in Washington is a clear in- 
dication that registration in Washington is a luxury 
rather than a necessity. It is an expensive luxury in so 
far as the inability to secure such registration prevents 
us from securing trade-mark registration in many for- 
eign countries. I have in mind, in particular, the ques- 
tion of Cuba, where American traders are absolutely de- 
barred from securing Cuban trade-mark protection, 
whenever the trade-mark does not fit in with the minute 
requirements of the gentlemen in Washington. In par- 
ticular, our domestic situation will prevent many of us 
from obtaining the full benefits of the Pan-American 
Trade-Marks Union when this Union comes Into opera- 
tion. 

The Pan-American Convention is an ambiguous docu- 
ment, permitting of various interpretations, but it is 
clear that whatever the rights may be which are grant- 
ed to American traders under same, they are obtained 
only if the American trader is able to register his trade- 
mark in the United States Patent Office. Here again, 
the United States Patent Office is the door through which 
we must pass before we can secure the benefits of this 
Union, when it comes into full force and effect. 

I have sometimes thought that the question we are up 
against today is whether we shall attempt to change our 
own laws, or attempt to change the laws of the rest of 



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Journal of the Patent Office Society. 389 

the world. I believe that our domestic law should be 
changed, not only in order to give full effect to the Pan- 
American Union, but also to permit the registration of 
well-known trade-marks in this country which do not 
measure up to the standards and conditions now pre- 
scribed by the United States Patent Office, so that any 
trade-mark which has been well established in commerce 
in this country can be registered. When the present 
trade-mark law came into effect in the year 1905, it con- 
tained a clause to the effect that any mark which had 
been used in commerce for ten years prior to that date 
could be registered in the United States Patent Office. 
Many such marks have been registered under the pro- 
visions of this clause, known as the Ten Year Clause, 
and so far as I am aware, it has never caused the slight- 
est amount of inconvenience. Perhaps an immediate 
step to alleviate our difficulties would be the extension 
of this ten year clause, so that any mark which had been 
in use in this country for a certain period of time before 
the filing of the mark, could be registered at Washing- 
ton without having to measure up with the minute and 
detailed requirements of the United States Patent Office. 
We must also bear in mind that we always require a 
foreigner who tries to register his mark in this country, 
to produce a certificate showing that his mark has been 
registered in his own country. This is often very un- 
fair to the foreigner, because British merchants very 
often fail to register their trade-marks in the British 
Patent Office for the same reason that Americans fail 
to register their trade-marks in Washington, namely, 
because the value of such trade-mark registration is 
limited so far as the British field is concerned. When 
the Britisher tries to register his trade-mark in this 
country in such circumstances, he is unable to do so. Nor 
must it be assumed that our own laws are such that no 
piracy can be committed. I have run across cases where 
a well-known trade-mark used on the Continent was stol- 
en by an American concern which simply proceeded to 
use the trade-mark in this country before the foreign 
concern established business connections over here, and 
thus obtained possession of the mark and registered it. 
Under the laws of this country, such a practice is not 
only possible, but is perfectly legal, so long as no fraud 
takes place. 



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390 JouENAii OP THE Patbnt Oppiob Socibtt. 

If our own trade-mark laws are not amended to per- 
mit of easier registration, then we should surely make 
reciprocal arrangements, by treaties or otherwise, with 
countries such as Cuba, in order to enable us to register 
our trade-marks in Cuba without showing that the mark 
has been registered in the United States Patent Office. 
It ought to be sufficient, in my opinion, for any Ameri- 
can trader who can produce documentary evidence to 
show that he has a manufacturing establishment in the 
United States, and has used his trade-mark in this coun- 
try, to register his trade-mark in any foreign country 
without having to show that the mark has been register- 
ed in the United States Patent Office. If the State De- 
partment is actively interesting itself in endeavoring to 
eliminate the piracy of. trade-marks, this particular ques- 
tion is one of considerable importance, and should be 
given consideration without delay. 

It is also urgently necessary, for the development of 
our export trade, and in order to give full effect to the 
Webb Act permitting the combination of concerns in this 
country for export trade, and to assist concerns that are 
handling a great number of different classes of merchan- 
dise, to permit them to register their trade-mark in this 
country by a single registration in the United States Pat- 
ent Office covering all classes of goods, as is possible un- 
der the Canadian law. This would enable such concerns 
to secure registration in a number of foreign countries 
by the filing of a single trade-mark application, and the 
payment of a single fee in each country, whereas at the 
present time they are sometimes required to file as many 
applications as there are applications in the United 
States Patent Office. 

The United States trade-mark practice, as at present 
conducted, requires the naming of the actual goods reg- 
istered, and the registration is strictly limited to the 
goods on which the mark has been used. As a result, it 
is often impossible to cover a number of goods of the 
same class by one certificate of registration, especially 
if the manufacturer in this country gradually keeps add- 
ing to his line of goods in the course of the development 
of his business. In such circumstances he has to keep 
multiplying his trade-mark registration in the United 
States Patent Office, thereby often necessitating his mul- 



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Journal of the Patent Office Society. 391 

tiplying the registrations in the various foreign coun- 
tries. In most foreign countries, a trader is permitted 
to register his trade-mark in an entire class of goods, 
even though he may only be using it on certain of the 
goods. This practice of the United States Patent OflBice, 
calling for the multiplying of registrations, also impedes 
the registration of trade-marks in foreign countries, and 
particularly in connection with the trade-marks of asso- 
ciations for export trade, where a large number of dif- 
ferent classes of goods are involved. 

The British Law also provides for the registration of 
association trade-marks, where a number of manufac- 
turers form an association employing a common mark, 
and an amendment of our law permitting such registra- 
tions in* this country would be of value both to the do- 
mestic situation, and to the foreign situation. 

International action must be taken to stamp our trade- 
mark piracy. I believe we should urge the proposal that 
a treaty be negotiated with foreign countries throughout 
the world whereby valid registration of a trade-mark 
shall not be granted in any of the signatory countries 
where the trade-mark is already the well-known proper- 
ty, either by registration or by use, of a concern located 
in another signatory country. An International Trade- 
marks Union establishing this high moral principle 
would go a long way to solve the problems of interna- 
tional trade-mark protection. 



FOREIGN PATENTS AVAILABLE IN A NEW 
ARRANGEMENT. 



The work of binding the published patents of Austria, 
Denmark, France, Norway, Sweden, and Switzerland in 
classified order is about complete and it is expected that 
they will be soon available to the public. The German 
patents which have been available in this form for some 
time have proved to be ' of inestimable value in patent 
research. 



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392 JOUBNAL OF THE PaTENT OfFICE SoOIBTY. 

EXAMINERS' SALARIES. 



By Wm. I. Wyman. 



One of the most serious situations that confronts the 
Office is the constant disruption of its technical corps 
occasioned by the continuous flow of resignations pro- 
ceeding from the junior grades. The corps as a whole 
is in a permanent state of disturbance, with its ambi- 
tious members separating themselves therefrom as soon 
as they receive the necessary amount of training, and 
with newcomers arriving, expecting in most cases to 
benefit by the same procedure. It must be evident at 
once that this process of separating a man iFrom his 
work as soon as he knows it to provide a place for a be- 
ginner to learn it all over again is one highly disorgan- 
izing to the patent system and one productive of highly 
injurious results to the public. The Patent Office can 
not remain an organization to determine property rights 
and an eleemosynary institution to train patent attor- 
neys at the same time and continue such existence. It 
can not continue to be half Patent Office and half school 
and live most eflfectively. 

The remedies proposed have been in every case an 
increase in salary in the highest grades with proportion- 
ate increases for every grade above that of fourth as- 
sistant examiners. But these proposed remedies do not 
strike at the root of the problem. Comparatively few 
first assistant examiners resign (most of those leaving 
the Office being from the grades of second and third as- 
sistant examiners), while much fewer separations take 
place from the grades of primary examiners and above. 
With the salaries of seconds increased to equal or ex- 
ceed the present salaries of firsts and primaries, the res- 
ignations from the former grade will tend to diminish, 
with consequent reduction of opportunity for promotion 
from the two lowest grades and therefore with constant 
pressure to separate from the service. The situation is 
so serious that it is thought evident that any proposed 
solution which appears to oflfer a fairly adequate rem- 
edy should be welcomed and earnestly considered. It is 
from that point of view that the writer makes his pro- 



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JouBNAL. OP THB Patent Officb Socibty. 393 

posal, which is based upon a study of every factor thus 
considered, and the contribution ip offered with the hope 
that a solution of this puzzling problem may be ad- 
vanced, or at least that discussion may be evoked which 
may lead to such a solution. 

The proposal which follows distinctly avoids the ob- 
jections of the situation now existing and the remedies 
hitherto suggested, by permitting every capable man to 
receive an adequate compensation^ comparable to the 
awards given for like service in private practice, within 
a few years after his entrance into the corps and 
upon a showing of the necessary equipment and expe- 
rience. Thus the inducement to separate from the ser- 
vice by the pressure of disproportionately great differ- 
ences in salaries paid in and out of the Office for the 
same work becomes in substantial measure obviated. 

Salaries should be graded in view of similar positions 
in private practice, in view of the responsibilities, train- 
ing and character of the work of the employee, and with 
a view of rapid attainment to standard and sufficient 
compensation. Assistant examiners have in recent years 
resigned to accept positions in private practice at initial 
salaries ranging from $3000 to $3600, with annual in- 
comes in sight of from $4000 to $5000. It is thought 
therefore that every assistant examiner should after 
several years experience in the Office and upon proof of 
capacity, energy and faithfulness, be assured of a salary 
of $3000. It is considered a logical compensation both 
with respect to the initial salaries offered by private em- 
ployers and as a standard salary to which every highly 
trained, experienced man has a legitimate right to as- 
pire. 

On the basis of income received by the private practi- 
tioner of equal experience, knowledge, judgment and re- 
sponsibility, it is thought that the salary of the primary 
examiner, very conservatively estimated, should be 
placed at $4000. The primary examiner's salary was 
not raised substantially when the compensation of the 
corps as a whole was advanced in 1908, and his compen- 
sation, if it were increased to $3000, as some propose, or 
even $3600, with the present lowered purchasing power 
of the dollar, would not be equivalant to the old salary 
of $2500 received before that date. 



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394 Journal of the Patent Office Society. 

It ia accordingly proposed that there be created two 
first assistant examiners for each division of the Office 
who should receive $3600. 

The proposition in brief is as follows : 

Assistant examiners: entrance salary $1500 

annual increase of 300 to a maximum of 3000 

which should be received by every assistant in course of 
a limited time upon proper proofs of capacity. 

First assistant examiners: (two to a Division) to be 
selected by strict test and scrutiny of record, and who 
should have the qualifications of a primary examiner. . 3600 

Primary examiners: to be selected from the corps of 
first assistants 4000 

This arrangement provides for three grades, whose 
duties and responsibilities are distinct: primary, first 
assistant, and assistant examiners. The knowledge that 
every assistant within a reasonable time will obtain a 
salary of $3000 will tend strongly to retain most of the 
men who now resign to enter private practice. The fact 
that every inan showing unusual capacity and energy is 
eligible for the $3600 and $4000 grades will be a strong 
inducement to those of such calibre to stay in the ser- 
vice, and thus prevent the state of flux of tiie personnel 
and preserve its quality. 

It is thought that this scheme has the merit of sim- 
plicity, and is logical and satisfying. It is just to the 
public, as the salaries proposed are based on private 
standards ; it is equitable to the employees, as their prop- 
er aspirations are in fair measure met and rapidity of 
promotion reasonably assured ; and it is good policy for 
the Ofiice, as proper morale, quality and tendency to 
permanency are also reasonably well assured. 

A qualifying proposal, based upon the same scheme, 
less just but perhaps more likely to receive a favorable 
hearing, is submitted as follows : 

(9,) Assistant examiners, $1600, advancing every year 
by $200 increments until the maximum is reach- 
ed of $2800 

(b) First assistant examiners 3200 

(c) Pi-imary examiners 3600 

Under the first plan, the assistants would normally 
reach the maximum compensation in 5 years, while un- 
der the secon<3, it would be attained in 6 years. 

The theory upon which both of these plans is based is 



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Journal of the Patent Office Society. 395 

that after a member of the examining corps has had a 
certain amount of Office experience and is doing effec- 
tive and responsible work, he should receive the maxi- 
mum salary of his grade, which should be adequate and 
correspond to the market value of similar effort; that 
such salary should be attained with surety and reason- 
able expedition ; that the different grades be representa- 
tive of distinctly different duties and responsibilities; 
and finally, that the salaries should correspond in some 
measure at least to the importance and dignity of the 
grade to which it is attached. 



LEGISLATION. 



The following bills were introduced in both houses of 
Congress during the last session. 

First. Authorizing the Federal Trade Commission to 
accept and administer for the benefit of the public, pat- 
ents the proceeds from which may be used as a fund to 
encourage scientific research, etc. 

Second. An act amending Chapter 143 of the act of 
March 3, 1883, providing for granting to persons with- 
out payment of fees patents for inventions that are use- 
ful in the public service, when the applicants will stipu- 
late that the inventions may be used without payment of- 
royalty by the Government or any one contracting with 
the Government of the United States. 

Third. To allow inventors to prove the date of their 
inventions in a foreign country and to get the benefit of 
the same in interference proceedings. 

Fourth. An act to extend temporarily the time for 
filing an application by a citizen of an ally country that 
grants similar privileges to our citizens, from twelve to 
twenty-one months after the application for the sain6 in- 
vention has been filed in a foreign country. 

Fifth. An act to give effect to the provisions of the 
Buenos Aires Convention of August 10, 1910, for the 
registration of trade-marks, the trade-mark bureau in 
Havana having been established under the provisions of 
that Convention. 

These bills had all been favorably reported and sever- 
al had passed one or the other House of Congress. 



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396 Jqubnal of the Patent Office Society. 

PROBLEMS OF THE PATENT OFFICE— A 
SOLUTION. 



By Elonzo T. Morgan> Second Assistant Examiner, 



The reason for the public policy of granting patents 
is to encourage inventors to disclose their inventions to 
the public view that society may be benefited thereby. 
It is stating the obvious to say that our great advance- 
ment in industrial development in this country iil the last 
twenty-five years has been due very largely to inventions 
of labor-saving devices and processes which have en- 
abled a few men to do the work of multitudes. Every 
person who has a new method or mechanism which he 
thinks would be of value commercially is encouraged by 
the prospect of reward to submit his solution of a prob- 
lem to the Patent Office and try for patent protection 
therefor. The result is that new and useful inventions 
after a brief period of personal monopoly sufficient to 
suitably reward the inventor for his disclosure, become 
free contributions to the sum of public knowledge. By 
this process the most economical methods of production 
and distribution are made available to mankind. Work- 
ers are more and more thereby changed from mere 
drudges to skilled workmen, enabling each worker to 
accomplish infinitely more, and to earn more in shorter 
time and thereby reserve to the individual members of 
society more time for personal education, recreation and 
enjoyment, more money with which to pay for these 
things and the ultimate higher civilization and enlight- 
enment of mankind. 

Having concluded that it is enlightened public policy 
to encourage the practice of taking out patents for in- 
ventions, it is vitally important to provide a Patent Of- 
fice for the examination of applications and the allow- 
ance of patents that will function as efficiently and 
promptly as possible. That the Patent Office is not 
functioning as promptly and efficiently as it should will 
be admitted, I believe, by most people who are familiar 
with the present conditions. 

The problem confronting the management of the OflSce 
is two fold, consisting of a lack of a sufficient force of 
examiners and a lack of sufficient funds with which to 



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JOITBNAL OF THE PaTBNT OfFIOB SoCIBTY. 397 

procure prompt, efficient and adequate public service. As 
to funds, the existing public policy is to require the ap- 
plicants for patents to pay for the carrying on of this 
branch of the public service by charging them fees for 
the examination of their applications and the allowance 
of their patents, so that this service is not conducted at 
the public expense. It is believed that as a body the in- 
ventors and business men of this country are entirely 
willing to bear this incidental expense to any amount 
found necessary or desirable to furnish them with the 
most efficient service, yet with all this acknowledged 
public benefit and the available means to defray the 
reasonable expenses thereof eliminated from the public 
tax, it seems impossible to modernize the Patent Office. 
For some unknown reason Congress does not see fit to 
authorize the necessary expenditure that the business 
world would, I believe, gladly make if it were merely 
asked or permitted. The usual retort about voting an 
increased public expenditure for the benefit of private 
individuals is not available here. The particular indi- 
viduals who constitute the Examining Corps are in no 
especial need 'of the benevolence of a salary increase 
smacking of a public charity to furnish them a living or 
to quiet their dissatisfied mutterings. While the Govern- 
ment as a model for other employers undoubtedly owes 
some consideration to its employees the problem that 
confronts the Government in the matter of the Patent 
Office is a far more compelling one. The personnel of 
the Corps are a body of highly qualified and technically 
trained individuals whose services are in demand in the 
business world at remunerative compensation and it is 
simply not worth while to waste time in considering their 
fortunes as individuals. They are entirely qualified to 
look after their own personal fortunes and are doing so 
in ever increasing numbers. The question they have to 
answer is not whether they can get pay commensurate 
with their qualifications but merely from what source it 
will come. Since the Government will not provide it 
they enter private employment after a few months or 
years of training in the Patent Office at much higher pay. 
Everyone who is familiar with the history of the Corps 
for the last few years knows that the Patent Office has 
become to a large extent a mere training school for 



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398 Journal of the Patent Office Socibty. 

young men who after acquiring a little experience are 
recruited into the employ of private concerns who are 
willing to pay an adequate compensation for their ser- 
vices. That all this is rapidly reducing to a dangerous 
degree the percentage of experienced men in the Corps 
is well known. That the Government must meet this 
competition or allow our patent system to sink to the 
level of a second rate or registration system is inevit- 
able. This cannot be answered by saying that if these 
employees do not want the positions there are others 
who do. The experience of the Office in begging com- 
petent men to take the entrance examinations in the last 
few years disposes of that argument. I am told that 
men who have taken the examination, on being notified 
of the entrance salary of $1500 have deliberately turned 
down the appointment because they had been under the 
impression that the entrance salary was $2000 and they 
could get that much elsewhere. It is believed that it 
will be necessary to lower the standard of entrance qual- 
ifications and the consequent standard of efficiency if 
adequate compensation is not authorized in the near fu- 
ture. 

In view of the existing conditions any attempt to rem- 
edy the evil by granting an increase of two or three hun- 
dred dollars in salary would indicate an utter failure to 
grasp the problem. Let me repeat, it is not a case of 
appeasing dissatisfied employees, but of retaining men 
of training and experience in the service. 

One may be hard to convince that he who is connected 
with the Patent Office does not offer his suggestions 
from the standpoint of selfish interest when such propos- 
als as are here made are set forth. Yet, it is from no 
such motives that this article proceeds. This discussion 
is based on the theory that the one sound argument for 
changes in the Government management is greater effi- 
ciency for- the public service. Neither does this article 
presume to criticise any person or body but to suggest 
what is believed to be desirable changes which are con-. 
sidered to be the minimum that will secure efficient ser- 
vice. I am endeavoring to prescribe for the public ills 
here rather than for the fortunes of individuals. It is in 
this spirit that the following suggestions are made. 

I believe that the Patent Office should be detached 



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JOUBNAL OF THE PaTENT OfFICB SoCIETT. 399 

from the Interior Department and instead of being con- 
ducted by a Commissioner and two Assistant Commis- 
sioners, that it should be administered by a Conunission 
of three and that their terms of office should be about 
six years, with one expiring every fwo years and that 
they should be subject to reappointment. They should 
be paid a salary of $7500 each. The reason for the sal- 
ary is that the Office may be able to obtain and retain 
the services of men with high qualifications and ade- 
quate experience. By having their terms expire at in- 
tervals of two years, it would prevent any one new man 
from coming into the Office and making radical changes 
in the procedure before he became experienced in the 
detailed practice of the Office. In other words, changes 
in the Office procedure would be made only as the result 
of experience and the possibility of one man overturning 
the existing practice and demoralizing the same would 
be largely eliminated. 

The next and fundament^ need is a^n increase in the 
number of examiners and the salary schedule to bring 
the neglected matter of personnel and pay abreast of 
modern demands for men of their training and profes- 
sion. We should have a Corps of at least fifty primary 
examiners at a salary of $4000 each, and 450 assistant 
examiners consisting of first assistant examiners at a 
salary of $3500; second assistant examiners at a salary 
of $3000 each ; third assistant examiners at a salary of 
$2500 each; and fourth assistant examiners at a salary 
of $2000 each. Provision should be made to promote 
fourth assistants if considered properly qualified by the 
Commission after service of three years ; third assistants 
should be promoted after service in their grade of four 
years ; and second assistants after service in their grade 
of five years. This plan of jadvancement would put be- 
fore men who enter the service what they can absolutely 
depend on if they are diligent, faithful and competent 
and above all it would produce a body of experienced ex- 
aminers which is the thing desired. It would provide 
for the advancement of men as they become experienced 
instead of having to wait for some one to die or resign 
to give them the compensation for which they are qual- 
ified. If a man is not qualified after twelve years of ex- 1 
perience to become a first assistant examiner it seems 
safe to say that he never will be qualified. 



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400 Journal of the Patent Office Society. 



^ 



Some one may say what is the use of proposing such 
changes when it seems that Congress will ilot grant 
them. I will answer by saying that you do not know 
what Congress will do if the case is properly presented 
to them. Besides, it is my purpose to set down here 
what I consider necessary and adequate to produce re- 
sults needed rather than to state how much I think Con- 
gress would grant. It is my belief that Congress does 
not view this matter in the proper light. The problem 
from the public standpoint is to provide a salary sched- 
ule which will keep men whom the Government is train- 
ing in its service and get the benefit of their training 
and experience' instead of wasting it or dissipating it to 
the benefit of private business. I believe that nothing 
short of the salary schedule here proposed will hold the 
men in the service. If the Government is going to try 
to remedy this matter it might as well try something 
that is not foredoomed to failure. The theory that pub- 
lic positions and the salaries therefor are to be doled 
out as a charity to deserving appointees is a false one, 
although it seems to be entertained by a high percent- 
age of people both in and out of public life. The pay of 
the position should be what will procure efficient public 
service and the question of charity and pauperism should 
be relegated to its proper sphere. 

Business men and organizations do not expect to get 
efficient men of the training, qualifications and responsi- 
bilities required of Patent Office examiners for any less 
pay than is named in this schedule and the Government 
cannot hope to do so and maintain the integrity and dig- 
nity of our patent system. 

In the early history of the patent system the salary of 
the officials corresponding to the primary examiner com- 
pared favorably with the salaries of federal district 
judges and even members of Congress. 

In 1836 when the examination system relating to pat- 
ents went into effect, the relative salaries were 

Members of Congress $8.00 per day of attendance 

District Judges $1000 to $1800 per year 

"Examining Clerk" Patent Office $1500 per year 

In 1870 when the office of primary examiner was es- 
tablished the respective salaries were 

Members of Congress $5000 per year 

District Judges 3500 

Primary Examiners 2500 " 



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Journal of the Patent Office Society. 401 

Present Salaries : 

Members of CongreBS $7500 per year 

District Judges * 6000 

Primary Examiners 2700 " 

The questions passed upon by the district judges and 
primary examiners are quite comparable and the pres- 
ent difference in their salaries makes clear the fact that 
the compensation of the one has kept pace with the 
growth in importance and complexity of the duties of his 
position, while the other is held at substantially the 
same salary notwithstanding his duties have similarly 
grown in importance and responsibility. 



KEDUCTION OF NUMBER OF PENDING OASES. 



In conformity with the policy of the Office to hasten 
the prosecution of applications, a further and encourag- 
ing reduction of the total number of pending cases was 
recorded. On December 31, 1914, the total number pend- 
ing, not including those in issue or forfeited, was 109,846. 
On December 31, 1918, this number had been reduced to 
92,156. 



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402 Journal, of the Patent Office Society. 

GENERAL DISCUSSION OF THE SUBJECT OF 
DIVISION— RULE 41. 



By C. H. Pierce, Law Examiner. 



The Courts in considering the question of joinder of 
two or more inventions in one patent have been much 
more liberal in upholding joinder than has the Office in 
permitting it. The question early came before them in 
Barrett & Hall, 1 Mason, Moody & Fiske, 2 Mason, and 
other cases reviewed by Story, J., in Wyeth vs. Stone, 
1 Story-273. Wyeth 's patent covered two machines, a 
cutter and a saw, successively used in cutting ice, the 
one following and completing the work of the other. Re- 
viewing the attitude of the courts in previous cases 
Judge Story said : 

I agree that under the general patent acts, if two machines 
are patented, which are whoUy independent of each other, and 
distinct Inventions for unconnected objects, that the objection 
win lie in full force, and be fatal. The same rule would ap- 
ply to a patent for several distinct improvements upon differ- 
ent machines having no common object or connected operation. 

In the case on trial, however, he says : 

Construing then the present patent to be a patent for each 
machine as a distinct and independent inventioii but for the 
same common purpose and auxiliary to the same common end, 
I do not perceive any just foundation for the objection made 
to it. If one patent may be taken for different and distinct 
improvements made in a single machine, which cannot well be 
doubted or denied, how is the case distinguishable from the 
present? Here are two machines, each of which is or may be 
justly auxiliary to produce the same general result, and each 
is applied to the same common purpose. Why then may not 
each be deemed a part or improvement of the same invention? 
Suppose the patentee had invented two distinct and different 
machines, each of which would accomplish the same end, why 
may he not unite both, in one patent, and say, I deem each 
equally useful and equally new, but, under certain circum- 
stances the one may, in a given case be preferable to the 
other? There is a claim in the Patent Acts which requires 
that the inventor, in his specification or description of his in- 
vention, should "fully explain the principle and the several, 
modes in which he has contemplated the application of that 
principle or character by which it may be distinguished from 
other inventions." Now this would seem clearly to show that 
he might lawfully unite in one patent all the modes, in which 
he contemplated the application of his invention, and all the 
different forms of machinery, or modifications of machinery. 



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Journal of the Patent Ofi 

by which. or to which it might be ai 
new, there would seem to be no Just 
reaching them all. A fortiori this rul 
plicable where each of the machines is 
Invention conducing to the accomplit 
same general end. 

The decision also discusses the m< 
patented" as it occurred in the stat 

This decision is quoted to show 1 
time the courts took a very liberal ^ 
of joinder jof inventions when direct 
pose and auxiliary to a common ei 
as to the joinder of the various mo< 
of an invention are remindful of t 
case of Benjamin vs. Dale, 158 F. 
modern development of the Patent 
gard to specific improvements. 

In Hogg vs. Emerson (6 Howard] 

There seems to have been no good 
be a fiscal one on the part of the G 
patents, why more than one in favo 
should not be embraced in one instrui 
tract of land in one deed, or patent 
Patents, 217.) 

But to obtain more revenue, the i 
erally declined to issue letters for m 
scribed in them. (Renonard, 293; P 

The courts have been disposed to t 
as conducive to clearness and certain 
inadvertently otherwise, to hold them, 
But it is a well established exceptic 
united, if two or more, Included in c 

to a like subject or are in their nature or operation coupled 
together. (Authorities cited.) Those here are of that char- 
acter, being all connected with the use of the improvements in 
the steam engine, as applied to propel carriages or vessels and 
may therefore be united in one instrument. 

(The inventions were an engine, a propeller, and a 
capstan.) This case was reviewed and affirmed (11 How- 
ard, 587, Dec. 1850) and it was stated with regard to the 
objection that **one set of letters patent for more than 
one invention is not tolerated by law": 

But grant that such is the result when two or more inven- 
tions are entirely separate and independent — ^though this is 
doubtful on principle — yet it is well settled in the cases form- 
erly cited that a patent for more than one invention is not void, 

if they are connected in design and operation * * *. 



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404 JOUBNAL OF THE PaTENT OfFICB SodBTY. 

In Wyeth vs. Stone (1 Story) in order to render dif- 
ferent letters patents necessary, it is said : 

♦ ♦ ♦ the inventions must be "wholly independent of each 
other and distinct inventions for unconnected objects"; as 
one to spin cotton and another to make paper. 

Again, if one set of letters patent is permissible for one 
combination of many parts, as is the daily practice, surely one 
will amply suffice for two or three portions of that comblna-^ 
tion. 

See also Gill vs. Wells, 22 Wall. Bates vs. Coe, 98 U. S. 
In Sessions vs. Romadke, 21 F. R., where the inven- 
tions granted in one patent were for various disconnect- 
ed improvements in a trunk, it is held that : 

In fact, there is no connection, either in purpose, desist or 
operation between the several inventions. They are not like a 
combination of various devices or improvements, all of which 
make one operative mechanism — one concrete organization. 

♦ ♦ ♦ ♦ At best it is a matter of serious doubt whether 
all the claims of the patentee should have been joined in one 
patent. 

The court made the filing of a disclaimer limiting the 
patent to one of the inventions a condition precedent to 
the grant of the relief sought. So far as I am able to 
find this decision stands as almost, if not the only, mod- 
ern case holding a patent bad for plural patenting and 
there the court, seemingly not without doubt, made its 
decision for lack of connection either in purpose, de- 
sign, or operation between the several inventions. 

In many instances patents have been held bad as be- 
ing double patenting or repatenting to the same invent- 
or, of the same or substantially the same Jnv^ntion 
where no divisible subject-matter existed, but cases 
where patents are void for including too many subject 
matters in the grant are almost non-existent. 

On the other hand the courts have repeatedly held that 
the grant of a patent to an inventor exhausts his daim 
and no subsequent patent to him (except by way of cor- 
rection) may be upheld. To sustain a second patent it 
must be something substantially different from that 
comprehended in the first patent. It must consist of 
something more than a mere distinction in breadth or 
scope. It is not intended to enter here into the question 
of double patenting, which has already been fully and 



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JOUBKAJL OF THE PaTBNT OfFICB SoCIBTY. 406 

ably discussed in these papers, except so far as to point 
out that in case there is no substantial difference in the 
invention set forth in claims, the issue of more than one 
patent thereon puts all or a part of the invention in jeop- 
ardy. Such claims should never be required by the Of- 
fice to be divided, or if voluntarily divided, different 
patents should not be issued thereon, but consolidation of 
claims of this character should be required or one re- 
jected on the other when allowed, as circumstances may 
dictate. 

Attention is called to Underwood vs. Gerber, 149 TJ. 
S.; Miller vs. Eagle, 151 U. S.; Suffolk vs. Hayden, 3 
Wallace ; Plummer vs. Sargent, 120 U. S., 442. See also 
in re Creveling, 25 App. D. C, 530 ; Palmar Tire Co. vs. 
Lozier, 90 F. B. ; and ex parte Edison, C. D. 1914. 

This principle has long been recognized in the OflScte 
and was extensively discussed in ex parte Holt, C. D. 
1884, page 55 et seq., and is the foundation of the prac- 
tice which requires the rejection of a pending claim when 
a claim to the same indivisible invention has been passed 
to issue. Ex parte Osborne, C. D., 1900; ex parte Csx- 
penter, 110 0. G. 

So far then as held by the courts it may be said that 
the presence and claiming in a single patent of inven- 
tions entirely distinct and independent, and unconnected 
in purpose, design or operation, would probably be held 
to render the patent void, but not so if the inventions re- 
lated to a like subject or were in their nature or opera- 
tion coupled together or were for the same common pur- 
pose and auxiliary to the same conamon end. 

Within the wide discretion permitted the Commission- 
er it would be possible to adopt a policy in which no 
division or separation would be required of inventions 
which would be upheld by the courts if patented togeth- 
er. This is one limit to that discretion. 

The other limit is marked by the question of double 
patenting and the wider questions of public policy. It 
is probable that within his discretion the Conmiissioner 
might exercise his jurisdiction to require division ex- 
cept where and to the point that double patenting would 
be held as to the patents resulting from the division re- 
quired. Beween these polar positions, the attitude of 
the Office has at different periods oscillated in a wide 



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406 Journal of the Patent Office Society. 

zone. The discretion in respect to division is review- 
able on appeal and must be exercised with reference to 
the particular case and not by rule. In the Steinmetz 
case (C. D. 1904) the Supreme Court held Rule 41 to 
be invalid. This rule at that time stated that ** Claims 
for a machine and a process in the performance of which 
the machine is used must be presented in separate ap- 
plications." There were separate statutory classes but 
as the court stated : 

I* I* I* to estabUsh a rule applicable to all cases is not to 

exercise discretion. Such a rule ignores the differences which 

invoke discretion and which alone can Justify its exercise, and 

we are of the opinion therefore that Rule 41 is an invalid 

regulation. 
« 

Following this decision the Rule was restored to its 
older and its present form. 

The effect of this case has been to make it necessary 
to consider each case individually and in the exercise of 
discretion thereon determine whether the inventions 
therein should issue in one or more patents and from a 
requirement of division, an appeal may be taken. 

The discretion in the Commissioner to require division 
recognized in Bennet vs. Fowler, 8 Wallace, is again rec- 
ognized in the Steinmetz case with the limitation of the 
right of review imposed. In ex parte Herr, C. D. 1887, 
pp. 112, 113, Commissioner Hall stated: 

In every particular in which the Commissioner possesses any 
discretion it should be exercised in the direction of public 
policy, in the proper and due administration of the office, in 
subserving the great purpose of the patent system for the 
encouragement and development of the arts, and in securing 
to patentees just and valid patents without unreasonable 
trouble or expense in obtaining them. That the Commissioner 
is vested with greater or less discretion relative to the admin- 
istration of his office is unquestionable. He may prepare and 
establish, with the approval of the Secretary of the Interior, 
regulations for the conduct of proceedings in his office. Un- 
der this provision of the statute he has, from the beginning, 
exercised authority to establish rules until there now exists 
a code of practice. The statute has always been regarded as 
authorizing a rule directing when more than one invention 
may be comprehended in one patent (Rules 40, 41). That a 
discretion in this particular is vested with the Commissioner 
is recognized and settled in numerous decisions of the Courts: 
Pennoyl Salt Mnfg. Co. vs. Gugenheim (3 Fisher, 423); Same 
vs. Thomas, (5 Fisher, 148); Goodyear vs. Central R. R., (2 
WaU. Jr., 356); Goodyear vs. Wait (3 Fisher, 242); Rubber 
Co. vs. Goodyear (9 Wallace, 788); Bennett vs. Fowler (8 
Wan., 445); McKay vs. Dibert (C. D. 1881. 238); and Jones 
vs. SewaH (3 O. G., 630). 



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Journal of the Pai^nt < 

In ex parte Blythe, C. D. 1885, 
worth had held to the statutory c 
age, between patents, saying: 

I am compeUed to hold that t 
statute, as weU as the weight of ji 
tates of what seems to me commc 
machines, manufactures and compc 
made the subject of separate and 
as above indicated. 

The exceptions were a new proci 
and processes and products mut 
was overruled by Uommissioner 
revived and reaffirmed by Hall, C 
particularly with reference to pr 

This theory is no longier tena 
Court has declared invalid (in S 
intended to enforce in all cases tl 
machine and process. A necessai 
opinion is that the Commissioner 
ment in each case and cannot h 
rule of division even if that rule 
utory classes. 

The policy of the Office in the 
tion, as to division, intrusted to 
influenced by fiscal consideration 
the necessities of search and exan 
statute. 

The fiscal reasons referred to 
above, and in Phillips on Patent 
reviewed and their application 
Fisher, Commissioner, in ex par 
which it ivas said that. 

In b.oth of the cases quoted, it : 
of many inventions in one patent 

ment of its proper fees. This is a legitimate consideration. 
A fee of $15 is now charged for examination into the novelty, 
utility and patentability of an invention. This is a very reas- 
onable charge, and is much less than it would cost to make 
the examination in any other way. Indeed the fees for all 
services in the Patent Office are less than are charged in any 
other country, while the service performed for the applicant 
is much greater. 

It would be unjust to the Government, to the public at large, 
and to other inventors to permit one of their number to pre- 
sent a batch of inventions for examination under a single fee, 
for he would receive more of the time of the examiner than 
he has paid for. 



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408 Journal of the Patent Office Society, 

This case sets forth perhaps more fully than any oth- 
er the question of fees as bearing upon division. Among 
subsequent cases bearing on the same subject may be 
cited ex parte Rioe, C. D. 1874, and ex parte Carter, C. 
D. 1889. The Yale application was ordered divided be- 
cause it embodied two distinct inventions, having no 
community of operation, belonging to different classes 
and involving a double labor of examination. The ques- 
tion of separate fees was apparently an influential con- 
sideration but not controlling, nor have I been able to 
find that anywhere in the modem practice of the Office, 
the question of fees has been treated as the controlling 
thing. The duties imposed by law must be collected, 
but the increase of those duties, as a reason for division, 
has been treated as wholly subordinate to other consid- 
erations. Perhaps one reason is the manifest impossi- 
bility of equalizing the work done for a fee under a sys- 
tem where an automatic telephone system, if unitary, 
and a belt buckle, are by law examined for the same fees. 

The main considerations which have controlled the 
policy of the Office in regard to division and joinder are 
the necessities of search and examination imposed by the 
law. The requirement to make a search and the author- 
ity to establish rules, and regulations for the conduct of 
proceedings in the Office are directed to the Commis- 
sioner and the statute has always been construed as au- 
thorizing the establishment of rules in relation to join- 
der. The rule may not supersede discretion but it may 
direct and guide its application. 

The distinctive feature of the American patent sys- 
tem, as contrasted with most other systems, is the idea 
of a careful, complete and rigid examination into novel- 
ty. Such a system is absolutely dependent upon an or- 
ganization of the existing arts, so far as published, that 
they may be accessible. The widespread field of Qrts is 
too extensive and too constantly changing and subdivid- 
ing to allow of any one mastering it. Hence here as in 
other branches of human activity specialization enters. 
This specialization in an art develops first — not in the 
Office — but with workers in the art itself, and in his en- 
deavors to keep the field of search abreast of the active 
art it becomes necessary for the examiner to arrange the 
published art in classes and subclasses which are direct- 



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Journal of the Patent Office Society. 409 

ed solely to the purpose of making the existing state of 
the art accessible. All of this is vital to the existence of 
a search system and without it the system could neither 
exist nor the direction of the law be carried out. The 
necessity for this division and classification so as to 
make accessible the existing state or condition in any 
branch of the arts, has been recognized as a determining 
factor from the beginning of the search system. In the 
case of ex parte Yale, C. D. 1869, above cited, Fisher, 
Commissioner, gave it controlling weight In ex parte 
Herr, C. D. 1887, Commissioner Hall recognizes the con- 
stantly changing and advancing state of the arts and 
says : 

In thlB connection is must be repeated that classification is 
not effected arbitrarily by the Office. It is the natural work of 
those who create and develop the arts by invention and others 
wise. The Office simply recognizes those relations and classes 
which exist in the nature of things. Why shall they not be 
thus recognized? It is impossible to conduct a great estab- 
lishment like the Patent Office, examine the inventions of sixty 
millions of people, survey the wide and extended field of art 
of the whole world, to determine their novelty and utility, 
and accomplish this speedily and satisfactorily, except by such 
arrangement and classification of subjects; and this classifica- 
tion must be modified and multiplied from time to time to 
meet the progress and advance in industry. 

It is unnecessary to multiply decisions on this line — 
a casual inspection of the decisions of Commissioners 
for fifty years past will make it evident, I believe, that 
in the exercise of the discretion imposed on them with 
reference to what may be patented in one patent, they 
have constantly held in mind as the controlling factor, 
the existing state of the arts. If such a state of art ex- 
isted as called for division of a case, the rule has been 
to follow the existing state of the art so far as possible. 
If no state of the art called for or justified division and 
the inventions were not wholly independent in their na- 
ture, but were connected in design and operation or were 
for a common purpose and auxiliary to the same com- 
mon end, division was not called for. 

The classification was created for the purpose of en- 
abling the state of the art to be found and the patents 
and publications come to be organized into arts and 
classes, with a specialist in charge of examination in 
each, and they are subdivided according to what is 



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410 Journal op the Patent Office Society. 

found to be the tendencies of development and each 
group and subgroup is assigned to someone who is a 
specialist in that group or subgroup. 

In this way particular cases receive the attention of 
one specially trained to knowledge of that kind, aud the 
metes and bounds of novelty may be surveyed by one 
acquainted with the field and the terms and descriptions 
criticised by one familiar with them. This tends to in- 
sure validity in the patent and protection to the public. 

The object of the patent system is the promotion and 
development of the useful arts, and this object is always 
to be borne in mind, and Patent Office practice in all its 
branches should always be directed so as to encourage 
and stimulate the progress of invention. 

No more unwelcome objection can be made to an appli- 
cation than that of improper joinder and the objection 
should not be made unless the foundation for it is clear 
in the clear distinction between the things directed to be 
divided, and in case of related inventions, such as the 
parts of a machine, or process, machine and product, 
there should exist in the state of the art a condition of 
development in which the several distinct inventions are 
capable of use in other relations and call for investiga- 
tion in different or divergent fields. If this condition 
exists the interests of the inventor whose application is 
being considered, as well as of subsequent inventors 
and the public at large may be subserved by dividing 
between the distinct inventions, so that each may receive 
its expert examination and if patented be filed with oth- 
ers of like character for future searches. Such require- 
ment should be made as early in the case as possible and 
if clear, before action on the merits is given. It should 
be made complete and if some of the inventions go to a 
different division, where additional division may subse- 
quently be called for, the case should be referred to that 
division at once, so that the requirement may be fully 
made, and the inventor having once complied with a re- 
quirement may not be subsequently met by other and 
successive requirements in one or another of his cases. 
Furthermore, the lines between the inventions should be 
clearly laid down and explained, if necessary, and the 
claims to be separated designated. The requirements 
should not be based on trivial differences. It is true that 



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JOUBNAL OF THE PaTENT OfFIOB SoorBTY. 411 

a requirement of division does not necessarily mean that 
both inventions are patentable. The Court of Appeals 
in the Isherwood case, 245 0. G., 847, reiterated former 
practice in upholding the rejection of one species on an- 
other previously patented. Neither this case, however, 
nor others of a like nature are to be taken as preventing 
an examiner from rejecting one claim on another as be- 
ing to the same substantial invention with differences 
which are immaterial or wholly unpatentable or the mere 
substitution of a well known expedient. 

In requirements, with relation to species, under ex 
parte Eagle, perhaps more often than with other kinds, 
it may and does occur that so-called species differ from 
one another by the substitution of a known equivalent 
or other trivial or unpatentable variation merely, and if 
the applicant be required to divide without further in- 
formation, does so, and is met by a rejection on his al- 
lowed species, it is not good practice. The OflSce is an 
office of experts primarily and no good reason is seen 
why in such cases the Office should not act upon its ex- 
pert knowledge and reject such claims, or at the very 
least clearly and explicitly notify the applicant that the 
one is not patentable over the other. It does not reflect 
credit on the Office to notify an applicant that he must 
divide because he has distinct inventions and when he 
does so, reject the one on the other because they are the 
same, or substantially the same. The ex parte Eagle 
rule is a necessarj^ one, but one which may be applied in 
a very harsh and inequitable way, if too strictiy con- 
strued and applied under circumstances above stated. 
In the wise exercise of discretion, bearing in mind al- 
ways the encouragement of invention, division in such 
cases will only be called for peremptorily where there 
are two real inventions presented. A too rigid, techni- 
cal and analytical dissection of applications often proves 
harassing and discouraging to the inventor, does not in 
the end save any work in the Office, and tends to prevent 
instead of furthering the purpose of the law, nor has it 
any value to the public, and it has been repeatedly con- 
demned by the courts. 

Rule 41 reads as follows : 



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412 JoURNAli OF THE PaTENT OfFICB SoCIBTY. 

TwQ ar more independent inventions cannot be claimed in 
one application; but where several distinct inventions are d^ 
pendent upon each other and mutually contritmte to produce 
a single result they may be claimed in one application. 

This rule has been changed several times but has af- 
ter short periods been restored to its present form and 
has with such intervals existed for nearly fifty years. 

Inventions are classified as beiug dependent or inde- 
pendent. The latter may not be joined — ^the former may 
perhaps be. 

Independent inventions are such as **are not connect- 
ed in design or operation and which do not mutually 
contribute to produce a single result within the meaning 
of the other branch of Rule 41.'* See ex parte Lord, C. 
D. 1890, and references therein found. 

Separate machines, of a series of machines, where 
each performs only its own function and its use and re- 
sult is unmodified by the use or result of the other and 
where each would operate in the same way, were the 
other not present, or improvements in such machines, 
are wholly independent. Different specific devices, even 
if embraced within a genus, where they bear a substitu- 
tional or alternative- relation, have been held uniformly 
to be independent. **But improvements in the same art 
or machine, although as improvements merely they may 
be wholly independent of each other, are so connected 
through the original invention that they are capable of 
serving a common end and hence according to the doc- 
trine of the courts may be covered by the same patent 
and joined in the same case/* Robinson, section 476. 
Division in such case falls back for support on the sec- 
ond part of the Rule as interpreted in Steames, C. D. 
1890; Wilcox & Borton, C. D. 1888, and other cases. 

The words ** several distinct inventions'' occur in the 
Rule. Primarily there must be more than one invention 
presented in a case before a question of division can 
arise. Many double patenting cases probably arise from 
a disregard or misinterpretation of this elementary pro- 
viso — as, for example, those cases where a patent is held 
void as being based on a difference in breadth of state- 
ment of a previously patented invention. It is proper 
here to refer also to cases where an element is claimed 
and a combination notoriously old and broadly stated. 



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JOUBNAL OF THE PaTBNT OfPIOB SoCIBTY. 413 

An inventor devises a pressure gage and claims it spe- 
cifically, illustrating it with a conventional boiler. A 
claim embodying the specific gage combined with a boil- 
er is technically a combination claim and classifiable in a 
different dass from the gage, but it is obvious to an ex- 
pert that there is either only one invention, or if possibly 
a new result is effected in connection with a boiler by 
reason of the particular gage construction, it is a combi- 
nation whose result is entirely dependent on the pres- 
ence of a gage of that character. In citing this illustra- 
tion I am not unmindful of cases like ex parte Mumf ord, 
C. D. 1914, and other previous cases where it is clearly 
laid down that an element in a combination may not be 
ignored. Neither this, however, nor other previous cas- 
es, prevents the exercise of discretion in requiring di- 
vision in cases where there is apparently only one real 
invention in a case and the question is one of the form in 
which the invention should be claimed. Where in the 
examiner's opinion, as an expert, there is only one in- 
vention, division should not be required. Most diflScul- 
ties that arise in connection with cases like the above, 
and they are not infrequent, would be resolved by the 
simple process of examining the gage and acting on the 
claims as to form and merits. It is possible that in the 
development of such a case, it may become apparent 
that there are two distinct matters of research into di- 
vergent fields, one, that of the element, the other, that of 
the combination. In such case the question of joinder 
may be taken up then. 

The difficulties arising from divisions which rest on 
the same substantial invention are illustrated in Porter 
vs. Louden, 7 App. D. C, 64, as well as in the numerous 
double patenting cases in the records. A consideration 
of the subject-matter in sections 460 to 467, Robinson on 
Patents, is profitable. 

In this connection reference is made to the Gaboury 
case (37 0. G.) and it is noted that where identity is 
found to exist between one of two inventions to be di- 
vided, and subject-matter claimed in an allowed case, 
the action is rejected on the allowed case and not di- 
vision. 

The next requirement as to divisible inventions is that 
they must he distinct^ as claimed, since it is between 



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414 JoT^RKALr OF THE pATENT OfFICE SoCIBTY. 

claims that division is required. Ex parte Holt, C. D. 
1884, gives a good example of claims between which no 
clear Tine can be drawn because they overlap and are 
inextricably interwoven in the subject-matter claimed. 
See also ex parte Ransom, C. D. 1887, and Railway Reg- 
ister Co. vs. Broadway & Seventh Avenue R, R., 26 F. B. 

Cases of this character, where the inventions may or 
may not be distinct, if properly claimed, but are certain- 
ly not distinct as claimed, arise also when a product is 
defined wholly or in part by a particular process of mak- 
ing, or a process by the elements of a particular machine 
which carries it out. 

The product may be makable many ways and the pro- 
cess may possibly be practiced by various mechanisms, 
but when claimed as stated they are tied rightly or 
wrongly to the particular process and particular ma- 
chine. Division may arise later but not when the claims 
are in that condition. The inventions claimed are not 
distinct. 

If there are present two real inventions, and they are 
distinct and distinctly claimed, the question arises 
whether they are dependent on each other and mutually 
contribute to produce a single result and what the nature 
of that dependence may be and the character of the con- 
tribution and result. 

Inventions may be said to be dependent within the 
meaning of Rule 41 when they are connected in their 
design or operation, have a distinct relation to each oth- 
er, a direct coordination and coaction so as to produce a 
result which two independent inventions acting sepa- 
rately could not produce. 

Robinson, section 741, says : 

That the inventions pertain to the same subject or belong to 
the same genus or are by nature adapted to a common use 
should any one desire so to employ them does not constitute 
such dependence as to justify joinder. But where the ulti- 
mate end for which one was created cannot be reached with- 
out the employment of the other or where the operation of 
one results in the production of the other or where the use of 
one involves the concurrent or cooperating use of aU the rest, 
or where one is generic and the other a particular species of 
that genus this dependence exists and the Inventions may be 
joined. 

Improvements in the several parts of a machine are 
connected in design and operation, are dependent upon 



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Journal of the Patent Office SociBTy, 41 

each other in the sense of the Rule, for they axe parts o 
a specific organization and mutually contribute to pre 
duce a single result, which is the single function of th 
whole.— Robinson, section 478; Herr, C. D. 1887; an 
ex parte Lord, C. D. 1890. 

In the discussion in the latter case, Mitchell, C, hel 
that the coaction need not involve such intimacy of ii 
terconnection and cooperation as to result in a combine 
tion — a third invention — to amount to interdependenc 
under the Rule, 

The particular case was one of process and apparatu 
and it was held that the design of both was to work on 
a given result and that this was sufficient to bring thei 
under the term interdependence as used. 

The contribution must be the proximate immediat 
direct act of the inventions, respectively, not a remot 
one. It must not be like that of the seeder, the harvesi 
er, and the mill, all of which contribute remotely to th 
production of flour, although in proper instances th 
contribution of the plow and seeder might come unde 
the rule. 

Nor is the result contemplated a remote one or on 
existing in the mind of the user but the direct proximat 
effect of the design and operation of the invention 
themselves. 

The plow and seeder may have such a result, but th 
seeder and cultivator can only be connected in the min 
of the farmer. 

In ex parte Lord (C. D. 1890), it is said that where th 
several distinct inventions are thus dependent upon eac 
other and do mutually contribute to produce a singl 
result they may be claimed in one application and tha 
it is equally clear that they may be separated into a 
many patents as there are distinct inventions. He class 
ifies them all as ** cases of optional division." This cas 
follows in the Commissioner's Decisions the well know 
case of Mullen & Mullen. Mullen & Mullen illustrates 
as compared with Robinson, section 478, above, and e 
parte Herr, a very confusing use of ** independent." I 
Mullen & Mullen there were presented two improve 
ments in a seeder, one in a feed regulator, and one in 
drill tooth. These are there denominated independen 
inventions, and perhaps rightly so, since their contribii 



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416 JOUENAL OF THE- PaTENT OfPIOB SoCIETY. 

tions are not joint but several and in disconnected ways 
they, improve the machine without changing its organi- 
zation. Whether they be denominated independent and 
divided as such' or be classified as Robinson, section 478, 
states, as dependent through their connection together 
in the machine and then divided because of their capa- 
bility of separate use and their acquired status in the 
arts, seems immaterial since in Mullen's case it was 
clearly intimated that the case presented would be en- 
tirely different if the machine were a new one. 

Other cases on the question of isolated improvements 
in the parts of an old machine are ex parte Steames, 
1890; Wilcox & Borton, 1888; Healey, 1898; Speckbaugh, 
1891; Wilkerson, 1899; and Pelton, 1901. See also Rob- 
inson, section 472. 

,It is also desirable to define what is meant by ** capa- 
ble of use in other relations," and ** status in the arts.'' 

If in a machine class M there are claims to a subcom- 
biniation or an element B along with other claims to the 
organization of the machine or to other elements, or 
both, and it is found that B may also be used in ma- 
chines of the type or class N, and P to perform there 
its functions, it answers the term '^capable of use" etc. 
If, however, it must be transformed from the thing claim- 
ed in order to be so used in N, 0, P, by the exercise of 
invention or by extensive transformation and changes 
so that its nature is considerably changed, the term does 
not apply and the term is not to be used too elasticallr. 
It is very easy to say, '*This is an elevator," or **This 
is a conveyor or a gearing organization capable of gen- 
eral use," where in fact its whole arrangement and con- 
struction are special and not general. Of course when a 
subcombination or element has modifications specially 
devised for the particular purpose of a machine or for 
coaction with other parts similarly modified there is no 
division possible because its structure is special and not 
such as is adapted to general use. 

It was held in ex parte Herr, 1887, Wilcox & Borton, 
1888, and Learned, 1893, that the use in other relations 
must be in other classes or arts and not merely in other 
and sundry types of machines in one art (as the sewing- 
machine art). I do not believe that this restriction is 
warranted by more recent practice. In Mullen & Mul- 



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JOUBNAL OF THE PaTBNT OfFIGB SgGIBTY. 417 

leu (supra) it is certainly true that the use of the drill 
tooth is restricted to the various types of drills in the 
drilling art and in many cases since ex parte Learned 
was given, such as ex parte Healey, 1896 (bicycles) ; 
Pelton, 1901 (seeders); Wilkerson, 1899 (chair); Stear- 
nes, 1890 (cooking range), improvements have been held 
divisible although of no utility except in the particular 
arts in question. 

** Status in the Arts'' has been determined in various 
ways. If a thing, the subject of invention, has acquired 
a place as the subject of separate manufacture and sale 
(other than as mere replacement of a lost or broken 
part) in trade and commerce, it is sufficient. This in- 
formation may be drawn from any ordinary source of 
trade information. The Office, however, in following art 
development has been compelled to rely on the acts of 
inventors to show that development and this is to be 
found in the published patents largely. The necessity 
for this reliance is ably set forth in the Herr and Wil- 
cox & Borton cases. The status in the arts is determined 
not only by trade but by the acts of inventors themselves, 
and when inventors have made inventions similar to the 
one under consideration the subject of separate patents 
and applications in considerable numbers, it may be 
safely regarded as having attained a distinct status, so 
that subsequent inventors claiming inventions of the sort 
should be required to present them in separate applica- 
tions. Not one or two patents only establish a status 
and probably no exact definition of the term is possible 
since it is the sum of all the evidence collected which de- 
termines. This evidence is usually best found in a sep- 
arate classification and ordinarily it may be assumed, 
that where a number of patents directed solely to a spe- 
cific part or subcombination of a machine or art have 
been collected and are evidenced by the Office classifica- 
tion, it is strong evidence of the existing state of the art 
and is to be regarded as such. If such a state is found 
and the device in question is capable of use in other arts 
or in other types of machines in the art in which it is 
presented, and is separately and distinctly claimed, it 
should be divided. The evidence of the existing state 
of the art, unless well known, should be presented as a 
reason for division, in addition to the citation of the 



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418 Journal of the Patent Office Society. 

cursory art in all branches of the proposed division to 
enable applicant to make an intelligent election. See 
ex parte de la Sala, C. D. 1888, Harris, C. D. 1890, and 
Steames, C. D. 1890. 

Strong effect has uniformly been given to the exist- 
ence of different and divergent fields of search. 

The mere fact of separate classification must be re- 
garded as strong evidence but not as of itself suflScient 
reason for division, since it is impracticable to keep it 
in exact step with the progress of the arts. It may be 
coincident or before or behind. A separate series of pat- 
ents whether classified or unclassified, showing the stat- 
us of art actually reached, should dominate this phase 
of the question, unless actual knowledge of the condi- 
tion in trade and manufacture is available. 

In a continuation of this paper I shall endeavor to 
point out briefly the application of the general princi- 
ples to certain cases. 



WITHHOLDING PATENTS ON INVENTIONS USE- 
FUL TO THE ENEMY. 



Up to the signing of the armistice the committee of 
primary examiners having in charge the secrecy of war 
inventions, acting on its own initiative or in cooperation 
with the Army and Navy Patent Board had recommend- 
ed and with the approval of the Commissioner had ap- 
plied orders preventing disclosure and publication in 
about 2100 applications of which 1040 were either with- 
drawn or withheld from issue upon being found allow- 
able and upwards of a thousand (1000) were still pend- 
ing and being prosecuted to determine their patenta- 
bility. 

Since the signing of the armistice. Rescinding Orders 
have been applied to nearly all cases to which the orij?- 
inal orders preventing disclosures, etc., were aipplied, re- 
leasing the applicants from maintaining secrecy. 

This committee has also examined and considered ap- 
proximately two thousand ideas, suggestions, devices, 
etc., submitted by sketch or description, that it was be- 



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J 



Journal of the Patent Office Society. 

lieved might be of service to the cause of the allie 
the United States Government. These were indepen 
of applications for patents and were received fron 
<juarters of the globe. 

Wherever proposed plans or devices were found i 
tieal and of possible or probable value, the attentio 
that department of the Government most intere 
therein was directed thereto, or the writers place 
correspondence therewith. 

Of these suggestions some two hundred involved 
closure of suflScient merit and importance to be forw 
ed, and it is believed many of them were approve 
adopted by some department or branch of the Go\ 
ment. 



OF PERSONAL INTEREST. 



Mr. John C. Pennie, senior partner of the firm of 
nie, Davis, Marvin and Edmonds of New York, has 
summoned to Paris to act as legal adviser of the A 
ican Peace Commission in connection with matters 
lating to patents and trade-marks. He sailed from 
York on the evening of Sunday, March 9th, for I 
and will proceed at once to Paris where he will rei 
until the work of the Commission is terminated, 
will be associated in this work with Mr. Bernard Ba 
of the War Industries Board, Mr. Charles H. MacI 
ell, who has been in charge of the production of ch 
cal and explosive materials for the War Indus 
Board, Dr. Taussig of the'Tanff Commission, and 
ers. 



Mr. Frank E. Barrows has become a member of 
firm of Pennie, Davis, Marvin and Edmonds, of 
York. 



The firm of Brown, Hanson and Boettcher was 
solved Dec. 31, 1918. 

Chas. A. Brown, Arthur H. Boettcher and John a. 
Dienner continue the practice of patent law at 1550 Mon- 
adnock Block, Chicago, under the firm name of Brown, 
Boettcher and Dienner; the same firm continue the Mil- 
waukee office at 1136 Wells Bldg. 



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420 Journal of the Patent Oppioe Society. 

Announoement is made of the formation of a new firm 
of attorneys comprising Messrs. Harry Prease, Arthur 
W. Bond, Arthur E. Merkel and George W. Saywell, with 
offices at Cleveland and Canton, Ohio. 

The firm of patent attorneys Fenton & Blonnt, Phila- 
delphia, Pa., have announced that Alston B. Moulton has 
become a member of the firm. 



Mr. John F. Bobb, of the firm of Bobb & Bobb, has left 
Washington to assume charge of the firm^s new office in 
Cleveland, Ohio. 



PABKINS' D. C. APPEALS PATENT CASE CITATOS 

With page reference also to Official Gazette and Commissioner's Decisions 

Complete, eoverins volnmes 1 to 46» Appeal Cases D. C, 93 delirercd 

Compiled and Published by 

MISSES A. M. and E. H. PARKINS 

•14-618 Washington Loan A Tniat Buildins, Washiavtoa, D. C. 

Testimony and Patent Work Examiner In Chancery 

Typewriter in attorneys* room, U. S, Patent Office, Notaries Public 

FISHER & SMART ON PATENTS 



CANADIAN PATENT LAW and 
PRACTICE 

By HAROLD FISBER, B.A., LL. B., of the Ontorio Bar, Ottawa, and 
RT7SSEL S. SMART, B.A., M.E., of the Ontario and Quebec Ban, Ottewa 

Appendix on Patent Office Practice 

By WILLIAM J. LYNCH, I.S.O., Chief of the Canadian Patent Office 

/SThis book, published in 1014 with half calf binding at $7.60 in Canada 
\3S and $8.50 in the United States, has met with a widespread sale, not 
only in Canada, but among the patent lawyers of the United States, 
whose clients have business in Canada. The work is the only modern text 
book on Patent Law in Canada, and is referred to as ah authority in all 
patent suits (see Concrete Appliance Co. v. Rourke 8 W. W. R. 6; Bitulith- 
ic & Constructions Limited ▼. Canadian Mineral Rubber Co. 8 W. W. E. 
207). Price $5.00 per copy. 

SMART ON TRADE-MARKS 

|By RUSSEL 8. SMART, B.A., M.E., of the Ottawa Bar 

The only book published in Canada on the law of Trade-Marks and JPrac> 
tice before the Registrar and in Courts. Price $4.00. 

Grain Printers, Limited "» ^^'^^^i^l canada 



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Sir William Henry Perkin 

(Cut supplied througrli courtesy of National Aniline 
& Chemical Company.) 

INVENTED THE FIRST ANILINE DYE AT 18 
YEARS OF AGE. 

(See Age of Production in Invention, etc., page 439.) 



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Journal 

OF THE 

Patent Office Society 



Published monthly by the Patent Office Society 

Office of Publication 1315 Clifton St., Washington, D. C. 
Subscription $2.50 a year Single copy 26 cents 

EDITORIAL BOARD. 

E. D. Sewall, Chairman, Publicity Committee. 

O. P. Tucker, Editor-in-Chief. 

J. Boyle. 

A. W. Dayidaon. 

W. I. Wyman. 

W. J. Wesseler, Business Manager, (Room 212, U. S. Patent Office,) 

1315 Clifton Street, Washington, D. C. Phone Col. 290. 
N. E. Eccleston, Circulation. 

Entered as second class matter. September 17, 1918, at the post office 

at Washington, D. C, under the act of March 3, 1879. 

Copyright, 1919, by the Patent Office Society. 



Publication of signed articles In this journal is not to be under- 
wood as an adoption by the Patent Office Society of the views expressed 
therein. The editors are glad to have pertinent articles submitted. 



VOL. L MAY, 1919. No. 9. 



EDITORIAL. 



Henry IV of France, considered by historians to be 
one of the greatest sovereigns the French ever had, en- 
couraged his people to develop those arts in which they 
seemed to have the greatest aptitude. He recognized the 
artistic ingenuity of his people and encouraged them in 
the production of things requiring those faculties. To 
this end he was responsible for the introduction, of the 
silk industry in that country and also of the manufac- 
ture of expensive fabrics, >rugs, glassware, etc., for wfiich 
that nation has become famous. His aim was expressed 



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422 JOUBNAL. OF THE PaTENT OfFICE SoCIETY. 

in one of his historic phrases — *4a poule au pot le di- 
manche," which when Americanized might be expressed 
as *Hhe full dinner pail." By his foresight in concen- 
trating on the proper industries, he virtually attained 
his ideaL 

Success is not always to the pioneers ; perhaps it comes 
oftener to the imitators. Why iiot ourselves profit by 
the successful examples of the past and follow up and 
develop those lines in which we excel! We are recog- 
nized to-day as the most practical inventive people of the 
world. Why not then devote our efforts to devising 
cheaper, quicker and better modes of doing things rather 
than spending time in developing those businesses where 
we must ultimately compete with European and Asiatic 
low- wage labor! But if we are to concentrate on this 
line of endeavor, the best stimulus which can be given to 
it is the securing of a modem and efficient patent system. 
Many of us who are very close to the scene do not appre- 
ciate that the whole country is not behind the present 
patent system. It was somewhat of a surprise a few 
years ago in an address delivered by one of the mem- 
bers of the Patent Committee of Congress, to hear that 
a great part of his effort, and he was in sympathy with 
the purposes of the patent system, was to prevent the 
wrecking of the patent system by those who were not in 
favor of it. In view of the disappointing experiences 
of some of our inventors, it is not surprising that mem- 
bers of Congress from some sections of the country re- 
flect a distrust of and lack of interest in the whole sys- 
tem. What must have been the* state of mind of the in- 
ventor who filed an application for patent on a farm 
wagon and tried to sue an infringer, only to be met by 
the answer that his patent did not cover the whole wag- 
on, but only the hinge on the tail board! **And that,** 
says he, **I never invented at all. I bought that at the 
county store.'* 

Although patents granted in this country are prima 
fade valid, one has but to look at the decisions of the 
courts, collated each week in the Of idol Gazette, in or- 
der to appreciate the fact that this is now pra<5tically 
only a legal fiction. 

One of our latter day comedians says that when the 
audience does not laugh at your jokes, the trouble lies 
with you, not the audience. The Congress but reflects 



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Journal of the Patent 

the attitude of the people. If th< 
pathy with the patent system i 
don't blame the people — change i 

For years this country did bus 
archaic banking system, apprec 
insufficiencies, but still unable tc 
due to custom. Experience now 
of the old system occurred none t 
federal reserve system, all will i 
finance this war with the leai 
iness would have been virtually 1 
too long before modernizing the 

Everything seems to indicate 
enter upon an age where supren 
tion which excels in inventive th 
for it ; let us concentrate upon it 
emize our patent system to tak< 
the country a system which will 
Congress will nev^r hesitate to s 



That the Patent Office should 
ceive information as to the var: 
tinually occurring in the industrif 
be about the last place to rece 
arising therefrom, sounds some\^ 

Such modem improvements a 
taphones, ventilating systems a 
accessories of a modern office b 
the Patent Office building. The 
ing, not so long ago, quiU peng 
library tables in the British Pai 
have been because of the great 
people for custom. At one of t] 
in that country, the boys still 
ers. An American who venture 
not eat off plates was met by th 
no respect for custom f The A 
however, so deeply entrenched ii 
housing the Patent Office as it 
modem office building in the country. 



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424 Journal of the Patent Office Society. 

COMMISSION ON RECLASSIFICATION OF 
SALARIES. 

— liii— 
The Legislative, Executive, and Judicial Appropria- 
tion Bill for the fiscal year beginning July 1, 1919, eon- 
tains a provision for the creation of a ''Joint Commis- 
sion on Reclassification of Salaries,^' of which the fol- 
lowing is an excerpt : 

Sec. 9. That a joint commissioii is created to be known as 
the ''Joint Commission on Reclassification of Salaries/' which 
shall consist of three Senators, who are now Members of the 
Congress, to be appointed by the President of the Senate, and 
three Representatives, who are now Members of the Congress, 
to be appointed by the Speaker. Said commission shall submit 
Its report and recommendations as early as possible, and, in 
any event, by the second Monday in January, 1920, • * *. 

It shall be the duty of the commission to investigate the 
rates of compensation paid to civilian employees by the muni- 
cipal government and the various executive departments and 
other governmental establishments in the District of Columbia, 
except the navy'^yard and the Postal Service, and report by bill 
or otherwise, as soon as practicable, what reclassification and 
readjustment of compensation should be made so as to provide 
uniform and equitable pay for the same character of employ- 
ment throughout the District of Columbia in the services 
- enumerated. 

At the close of th« last session of Congress the mem- 
bers for the Commission representing the different 
houses were designated, and shortly after adjournment 
began holding preliminary sessions for the purpose of 
studying the task assigned them for execution. One of 
the first things decided upon was the submission to all 
of the individual employees involved, falling within the 
scope of the field to be covered, of a questionnaire. In 
order to insure the accurate and uniform filling out of 
these questionnaires it became necessary for the. Com- 
mission to provide for representation in the various de- 
partments and bureaus in which the several employees 
perform their duties. Accordingly it was decided to 
call upon the head of each department to designate a 
representative of his department, and also to hold elec- 
tions for representatives of the employees themselves. 
The plan also involves the selection in each bureau or 
branch of each department of chosen representatives of 
such branch or bureau who will have immediate charge 
of questionnaires and other data emanating from the 
branch or bureau they represent. 



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Journal of the Patent Office Society. 425 

In the Interior Department Chief Clerk Ayres has 
been designated by the Secretary as the Department's 
representative, and Mr. W. Carson Ryan of the Bureau 
of Education has been elected by the employees as their 
representative. The representatives in the several bu- 
reaus have not yet been oflScially designated but they 
will be selected shortly. 

At a meeting held on Wednesday evening, April 16, 
1919, in the auditorium of the Department of the Inte- 
rior Building, Senator Henderson, of Nevada, who is a 
member of the Commission, addressed a good sized audi- 
ence of employees of the Interior Department on the 
aims of the Commission and the methods of procedure 
contemplated by it. Senator Henderson began his ad- 
dress by urging upon all persons concerned the need of 
earnest cooperation with the Commission and its assist- 
ants to the end that its final work shall be of indisput- 
able value not only to those immediately concerned but 
to the country at large as well, for it is anticipated that 
the work of the Commission will be sjccepted as a model 
to be followed by many large employers of labor, the 
country over, in their dealings with wage scales and 
other labor problems. 

Special emphasis was laid upon the need of the care- 
fully filling out of questionnaires by the individual em- 
ployees, since upon the statements made therein the Com- 
mission 's conclusions must be reached, and it is neces- 
sary that these statements shall be. true if the conclu- 
sions based thereupon are to be just and right. 

Senator Henderson emphatically stated that it was 
the idea of the Commission that the amount of salary 
paid to each employee should be a fair and just com- 
pensation for the services rendered by that employee, 
and that his promotions should depend upon the kind 
and quantity of services rendered by him. He distinct- 
ly said that it was not the idea to discriminate between 
classes of employees on any such lines as distinction of 
sex in the matter of salaries to be paid, but rather that 
the work to be done and the fitness of the employee to 
do it should be the test. 

One of the contemplated features of the work of the 
Commission which the Senator mentioned is the intro- 
duction of a provision for a number of advances in sal- 
ary in each grade without forcing the employee to wait 



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426 Journal of the Patent Office Society. 

/ 

for promotion to a higher grade. This plan, he pointed 
out, would continually hold before the employee a hope of 
bettering his condition and would act as a constant in- 
ducement to him to do more and better work. This state- 
ment was made upon the supposition, of course, that 
the advancement within a grade, like a promotion, would 
only follow as a consequence of faithful and satisfactory 
service. ' 

Another matter especially mentioned by the Senator 
was the adoption of the so-called * living wage^' as the 
minimum of the scale of salaries to be fixed upon. He 
expressed the view that if by the expression a ^ living 
wage'' was meant merely a wage sufficient to enable the 
employee to live without being able to lay anything by 
for the protection of sickness or old age, it was not his 
idea that a salary representing such a wage was ade- 
quate or the one contemplated by the Commission. He 
stated it to be his view that no person anywhere should 
be expected to work merely that he might live without 
any hope of laying by a reasonable profit on his labor. 

The Senator stated that it was'^the plan of the Com- 
mission to meet with the representatives of the various 
departments and bureaus and to give them the fullest 
instruction in advance about the work they were expect- 
ed to perform. He stated that the Commission pro- 
posed to adopt the attitude of welcoming suggestions 
and of open-mindedness toward any and every plan that 
might be offered for its consideration, and emphatically 
asserted that ever^ member of the Commissfion was 
firmly resolved that its work should be fair and just both 
to the, Government and to the employees. 

Senator Henderson's remarks were followed by ad- 
dresses by a representative Qf the Federal Employees' 
Union, an employee from the Department of Labor, and 
Mr. Eyan, the representative of the employees of the 
Interior Department. All of these speakers were enthu- 
siastic about the prospect of the success of the work con- 
templated by the Commission, and urged the fullest co- 
operation and aid by all employees to the end that when 
the work is completed both the Government and its work- 
ers shall be satisfied. 



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Journal of the Patent Office Society. 427 

THE APPLICATION OF CERTAIN RULES OP IN- 
TERPRETATION AND CONSTRUCTION DETERM- 
INING THE MEANING AND SCOPE OF CLAIMS 
MADE THE ISSUE OF AN INTERFERENCE PRO- 
CEEDING IN THE UNITED STATES PATENT 
OFFICE. 

— Hii— 

By Louis E. Giles, 

Formerly an Assistant Examiner in the United States Patent Office. 

— 1*— 
The invention at issue in an interference proceeding 
in the United States Patent Office is defined in one or 
more counts, each of which, under the existing practice, 
is almost invariably identical in terms with a correspond- 
ing claim in the application or patent, as the case may- 
be, of each of the respective parties involved. A clear 
and definite comprehension of the invention which con- 
stitutes the subject-matter at issue, as so expressed, is 
frequently dependent upon certain rules of interpreta- 
tion for determining the meaning of doubtful terms and 
upon certain rules of construction for determining the 
sc^pe of the claim, or claims, in which the issue is de- 
fined. 

As to the Meaning of the Terms in which the Issue 
is Expressed. 

If a claim which defines an issue in an interference 
proceeding in the Patent Office is expressed in terms of 
doubtful or uncertain meaning, it should, if possible, be 
amended to avoid the objection. If the interference in- 
volves applications only, such a claim may usually be 
put to test and corrected, if faulty, as a result of a mo- 
tion to dissolve. A claim, how'ever, is not ambiguous or 
indefinite merely because it is expressed in broad terms 
' which include forms of the invention other than the spe- 
cific form described in the application in which it is made. 
If, because of the limitations and imperfections of lan- 
guage, the doubtful and uncertain character of the terms 
•of a claim which defines the issue in an interference pro- 
<jeeding is such that it cannot be obviated by amendment, 
or if the interference involves a patent, thus rendering 
correction by amendment impossible or impracticable, it 
lias been stated in the decisions that a meaning should 



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428 Journal of the Patent Office Society. 

be adopted which is consistent with the disclosure of in- 
vention as made in the application in which the doubtful 
claim was first presented. In the case of Curtis v. de 
Ferranti v. Lindmark (171 0. G., 215; 1911 C. D., 115 r 
affirmed by Court of Appeals, D. C, 171 0. G., 484; 1911 
C. D., 433; 37 App. D. C., 311), this rule was expressed 
by the Commissioner in the following words : 

The claims in issue were taken from the patent of Lindmark,. 
and must therefore be construed in the light of the specifica- 
tion of that patent if their meaning is at all uncertain. 

That this rule for determining the meaning of doubt- 
ful and uncertain terms should have no application if the 
issue is defined in clear and definite language is obvious. 
In some of the decisions, however, the rule is stated in 
such broad terms as to indicate that the meaning of a 
claim which defines an interference issue is always to be 
derived from a study of the disclosure in the application 
in which it was first presented. 

* ♦ * The meaning given to the counts of an interference 
must be that intended by the party to the interference first 
making the claim. (Podlesak and Podlesak v. Mclnnerney^ 
120 O. G., 2127; 1906 C. D... 558; 26 App. D. C. 399.) 

It is true, as stated by the Commissioner, that where a party 

copies a claim of a patent for the purpose of interference it 

must be read in the light of the disclosure of the patent. 

(Engel V. Sinclair et al., 152 O. G., 489; 1910 C. D., 310; 34 

■ App. D. C, 212.) •• 

* * * it is the rule in interference cases to determine the 
scope of the invention in issue and the true meaning of the 
claim constituting the count thereof from the disclosure of the 
party first making the claim. (Slingluff v. Bolin, 182 O. G., 
720; 1912 C. D., 257; affirmed by Court of Appeals, D. C.» 182 
O. G., 975; 1912 C. D., 570; 39 App. D. C, 134.) 

That this rule is more properly intended to apply only 
when the meaning of the claim defining the issue is doubt- 
ful and uncertain is, however, indicated in some of the 
more recent decisions of the Commissioner and of the 
Court of Appeals of the District of Columbia from which 
the following quotations have been taken : 

While it is true that the issue will not be strained to cover 
an invention to which it does not naturally apply and that in 
case of doubt or ambiguity the issue will be read in the light 
of the specification in which it first appeared, real and not 
artificial distinctions must be found in the involved applica- 
tions or, obviously, there will be no room for the application 
of the familiar rule. (Western Electric Co., Assignee of Mc- 
Quarrie and BuUard. v. Martin, 182 O. G., 723; 1912 C. D.^ 
567; 39 App. D. C, 147.) 



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JOUBNAL OF THE PaTENT OFFIOE SoOIBTY, 429 

If there were any ambiguity in the claims which needed in- 
terpretation, they would, in accordance with the wellH9ettled 
rul^, be construed in the light of the Wood specification, in 
which they were first made. It does not seem, however, that 
there is any uncertainty in their meaning. (Wood v. Duncan, 
183 O. G., 1033; 1912 C. D., 314.) 

The Scope of the Issue. 

The meaning of a claim which defines the issue of an 
interference proceeding having been determined, the 
scope of the issue, as thus defined, is more or less de- 
pendent upon certain rules of construction which have 
been frequently expressed in the decisions of the Com- 
missioner and of the Court of Appeals of the District of 
Columbia. From an analysis of the decisions it seems 
to be pretty well established that the rule which controls 
the construction of the issue in an interference involv- 
ing patent applications only, is somewhat different from 
that which should be observed in an interference in which 
a patent is involved and in which the claim which de- 
fines the issue was first made in the application which 
resulted in said patent. 

Rules of Construction Applicable when Applications 
only are Involved. 

In an interference involving patent applications only, 
the claim which defines the issue should be given the 
broadest construction which is consistent with a fair in- 
terpretation of the terms in which it is expressed. What 
is a fair interpretation of its terms should be determined 
in accordance with the generally recognized rules of con- 
struction. Ordinary words should be given their usual 
meaning. Terms which have acquired a recognized tech- 
nical significance should be interpreted in accordance 
therewith. Limitations which are not expressed in the 
claim should not be interpolated therein by construction. 
If the claim is of greater scope than the invention which 
it represents it should be amended. That such is tlie 
rule of construction which should be applied by the Pat- 
ent Office, when determining the scope of a claim which 
defines the issue in an interference involving applica- 
tions only, has been clearly announced in many decisions 
of the Commissioner and of the Court of Appeals of the 
District of Columbia. 



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430 Journal of the Patent Office Society. 

No better method of construing claims is perceiyed than to 
give them in each case the broadest interpretation which they 
will support without straining the language in which they are 
couched. This method would seemingly give more uniform 
and satisfactory results than are obtained by methods largely 
in vogue — such, for example, as that of importing limitations 
from the specification according to the exigencies of the par- 
ticular situation in which the claim may stand at a given mo- 
ment. The method suggested also seems to have the advan- 
tage of according in its results with the probable intentions of 
the inventor at the time when the claim is drawn. In present- 
ing claims to the Office the object constantly sought is breadth. 
Where a limited meaning is intended when a claim is drawn, 
what possible objection can there be to imposing that meaning 
unmistakably upon the claim by its express terms? That a 
claim which does not carry its true meaning upon its face mis- 
leads those affected by the patent instead of guiding them as 
to its true scope is alone sufficient reason why the Patent Of- 
fice should refuse to recognize proposed limitations of claims 
which have not been clearly expressed therein. (Podlesak 
and Podlesak v. Mclnnerney, 123 O. G., 1989; 1906 C. D., 
265.) 

In general while applications are pending in this Office the 
claims thereof will be construed as broadly as the ordinary 
meaning of the language employed will permit. (Junge v. 
Harrington. 131 O. G.. 691; 1907 C. D., 340.) 

It is well settled that claims forming the issue of an interfer- 
ence will be given the broadest interpretation consistent with 
the plain language of the claims. (Burden v. Manson, 185 0. 
G., 529; 1912 C. D., 393.) 

In an interference proceeding we must give to claims the 
broadest interpretation which they will reasonably support, 
and we are not at liberty to import limitations therein to meet 
the exigencies of a particular situation. (Miel v. Young, C 
D.. 1907, 561; 128 O. G., 2532; 29 App. D. C, 481; Lind- 
mark v. Hodgkinson. C. D., 1908, 540; 137 O. G., 228; 31 
App. D. C, 612.) The reasonable presumption is that an in- 
ventor intended to protect his invention broadly and, conse- 
quently, the scope of a claim in an interference proceeding 
should not be restricted beyond the fair and ordinary meaning 
of the words. The issue here is that of priority under the 
claims as drawn, and not of priority under other and different 
claims. (Kirby v. Clements, 216 O. G., 1319; 1915 C. D., 163; 
44 App. D. C, 12.) 

In the case from which the last quoted excerpt is tak- 
en, the Court of Appeals of the District of Columbia re- 
versed the decisions of the Board of Examiners-in-Chief 
and Assistant Commissioner, which were based upon a 
construction of the issue limited to avoid the prior art. 

In the case of Monte v. Dunkley (245 0, G-, 278; 1917 
C. D., 208; 46 App. D. C, 70) the same court affirmed 
decisions of the three tribunals of the Patent Office re- 
fusing to narrow the counts of an interference issue by 



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Journal of the Patbbtt Office Society. 431 

construction. Justice Robb, speaking for the court, 
said: 

It is a familiar rule that a party will not be permitted to 
narrow a claim to meet the exigencies of a particular situa- 
tion. (Kirby v. Clements. C. D., 1916, 163; 216 O. G., 1319; 
44 App. D. C, 12; Geltz v. Crozier, C. D., 1909, 313; 140 O. 
G.. 757; 32 App. D. C. 324.) 

Tlie decision in the case of Gammeter v. Lister (253 
0. G., 259), affirmed by the Court of Appeals, D. C, 
(253 O. G., 261), furnishes no exception to this rule. In 
that case no real question of construction was involved 
as will be apparent from the following words quoted 
from the Assistant Commissioner's decision: 

But in the case at bar I agree with the contention of Gam- 
meter that these claims cannot be read to cover the device of 
Lister at all. The only limitations in the claims which give 
them life are totally meaningless if it be attempted to read 
them on Lister's structure. 

The rule, as set forth in Kirby v. Clements, supra^ was 
recognized, that decision being cited, and the case to be 
decided clearly differentiated therefrom. The rule, as 
to interferences involving patent applications only, may 
therefore be said to be clearly established. 

It is recognized that a claim in a patent which is broad 
in terms is sometimes given a limited construction by 
the Federal Courts in view of the prior art and the in- 
tent of the inventor as expressed in his patent specifi- 
cation. The rule of construction thus resorted to for the 
purpose of sustaining a patent which would be other- 
wise invalid is not, however, now followed by the Office 
in determining the scope of a claim which defines the 
issue in an interference proceeding involving patent ap- 
plications only; although, as late as January 5, 1909, 
the Court of Appeals of the District of Columbia, affirm- 
ed a decision of the Commissiojier of Patents, in a case 
in which both the court and the Patent Office tribunals 
applied the usual rules of construction resorted to by 
the Federal Courts in patent infringement proceedings. 
(Geltz and Hosack v. Crozier, 140 0. G., 757; 1909 C. D., 
313;32 App. D. C, 324.) 

If a claim in an application involved in an interfer- 
ence proceeding is broader in terms than the invention 
sought to be protected it can be amended. The rules of 
construction applied by the Federal Courts relate to 



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432 JOUENAL OP THE PaTBNT OpPICB SodBTY. 

•cases in which a patentee is bound by his claim at a time 
when it is too late to amend. They appear to have no 
present application to the practice in the Patent Office 
with respect to cases which do not involve a patent. 

Rules of Construction Applicable When a Patent is 

Involved. 

Mfteh might be said in favor of a general applieation 
•of the rale that claims should be given the broadest con- 
struction which they will support, without straining the 
language in which they are couched, to all interference 
proceedings, including those in which a patent may be 
involved. . Such general application of tiie ride would . 
be in accordance with some of the relatively recent de- 
cisions. In the case of ex parte Cutler (123 0. G., 655; 
1906 C. D., 247), the Commissioner held that unexpressed 
limitations should not be read into a claim in an applica- 
tion to avoid the declaration of an interference between 
said application and a patent containing a claim ex- 
pressed in the same words. The following paragraph is 
quoted from his decision : 

I have had occasion in a previous case to condemn the prac- 
tice of imposing upon claims by construction meanings which 
are not clearly set forth by their terms. (Briggs y. LilUe T. 
Cooke V. Jones and Taylor, C. D., 1905, 168; 116 O. G., 871.) 
In this Office a claim which is broadly drawn will be broadly 
read. If a narrow meaning is desired, it must be secured by 
limitations expressed in the claims. No better method is 
known for securing the benefits of uniformity and certainty in 
the construction of claims and at the same time giving effect 
to the undoubted intention of the parties drawing them than 
to give invariably to each claim the broadest meaning which 
can be imposed upon it without violence to the language used 
therein. 

Referring to a claim defining the issue in an interference 
between an application and a patent, finally decided by 
the Court of Appeals of the District of Columbia, it was 
said : 

This claim should be given the broadest interpretation which 
it will support and we should not strive to import limitations 
from the specification to meet the exigencies of the particular 
situation in which the claim may stand at a given time. Al- 
though Miel is a patentee, if the terms of his claim do not in 
their ordinary and natural meaning define his invention accord- 
ing to his intent he may apply for a reissue. (Miel v. Young, 
128 O. G., 2532; 1907 C. D., 561; 29 App, D. C, 481.) 



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JOUBNAL OF THB PaTBNT OfFICE SoCIBTY. 435f 

Prior to the decision in the case of Miel v. Youngs 
supra, it had been held, in interferences in which a pat- 
ent was involved, and in which the issne was defined by 
a claim which had first been presented in the application 
which resulted in said patent, that the claim, thongh 
broad in terms, should be ^ven a limited construction,, 
if necessary, to avoid the prior art, provided such limited 
construction were consistent with the intent expressed 
by the patentee in his specification. In the case of Lat- 
ham V. Force and Parenteau (82 O. G., 1690; 1898 C. D., 
32), the Commissioner expressed this rule in the follow- 
ing words : 

The issues are the claims of Force and Parenteau's patent. 
Their meaning must be determined by consideration of the de- 
scription on which they are based. Latham, having n^ade these 
claims after he had seen Force and Parenteau's patent and 
having drawn them for the purpose of an interference with 
the patent, must be held to have intended them to have the 
same meaning which they have in the patent. In other words, 
Latham must meet Force and Parenteau on their own ground. 
He is not entitled to put upon the claims of the patent a con- 
struction which would render them invalid by reason of what 
he had done in 1891 if by any reasonable construction they 
could be held valid as restricted to a specific process not in- 
vented by him prior to the filing of the apiHication on which 
their patent was granted. 

The rule, as thus expressed by the Commissioner, in his 
decision in the case of Latham v. Force and Parenteau, 
svpraf was quoted and followed by the Court of Appeals 
of the District of Columbia in its decision in the case of 
Tracy et al. v. Leslie (87 O. G., 891; 1899 C. D., 306; 14 
App. D. C, 126.) It was again followed by the same 
court in the case of Buete v. Elwell (87 0. G., 2119; 1899 
C. D., 379; 15 App. D. C, 21), in which it was said: 

The fact that Ruete's specification harmonizes with his in- 
terpretation of the issue adds no weight to his contention. The 
Elwell patent was issued nearly four months before he filed his 
application. With that before him he prepared it and adopted 
Elwell's first claim for the apparent purpose of an interfer- 
ence. Having done this, he is not entitled to demand a con- 
struction of the claim of the patentee that would render it in- 
valid by reason of that which he himself had accomplished if 
it can be upheld by any other reasonable interpretation not 
necessarily inconsistent with the statement of the patentee. 

The following quotation is taken f):om the decision of 
the same court in the case of Andrews v. NUson (123 0. 
G., 1667 ; 1906 C. D., 717 ; 27 App. D. C, 451) : 

In his decision awarding priority the Examiner of Interfer- 
ences, however, invoking the rule that the issue must be con- 



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434 Journal of the Patent Office Society. 

strued in the light of Nilson's specification, because that issue 
is a claim copied from his irregularly-issued patent, holds that 
the element — "a vibratory strip" — must be limited to one of 
non-magnetic material, although the claim is for a combina- 
tion where the vibratory strip has no such expressed limitation. 

While we do not question that rule which has often received 
our approval, we do question the correctness of its application 
to the case at bar. A claim is, as has been said, "not a nose 
of wax." While the courts are inclined to liberality in refer- 
ring back to the specifications for limitations to be placed upon 
elements of a claim in order to save the claim from invalidity 
by* reason of the prior art, they are not so inclined when the 
prior art does not require it, nor where an infringer insists^ 
that such limitations should be imposed in order to escape a 
charge of infringement, and this is especially so where the 
element sought to be limited is claimed broadly in one or more^ 
claims, and narrowly, and with such limitations in others. 
The reasonable presumption is that an inventor intends to pro- 
tect his invention broadly, and consequently the courts have^ 
often said that the scope of a claim should not be restricted 
beyond the fair and ordinary meaning of the words, save for 
the purpose of saving it. In reading a claim for the purpose 
of construing it, heed must not only be paid to the specifica- 
tion proper, and to the drawings, but also to the other claims 
of the patent. (Ryder v. Schlichter, 126 F. R., 487.) * • ♦ 
The senior party who has a patent may not be heard to ask 
that his claim be rewritten so that he may prevail in an in- 
terference. He would be in somewhat better position had his 
patent not been issued, or had he surrendered it for reissue. 

In our opinion the claim must be construed as broadly as 
Nilson made it, and as broadly as the state of the art apparent- 
ly warrants. 

Although the case of Andrews v. Nilson, supra, ap- 
pears to have been relied upon by the Court of Appeals 
when deciding the case of Miel v. Young, supra, the de- 
cision in the latter case seemed to clearly indorse the 
rule that a claim which defines the issue in an interfer- 
ence, even though a patent be involved, should be given 
the broadest interpretation which it will support. . Be 
that as it may, the recent decisions of the Court of Ap- 
peals of the District of Columbia in the cases of Rice v. 
Schutte (180 O. G., 604; 1912 C. D., 506; 38 App. D. C. 
175), Benners v. Richards (189 0. G., 781; 1913 C. D., 
347; 39 App. D. C, 553), Leonard v. Horton (189 O. G.. 
781; 1913 C. D., 348; 39 App. D. C, 458), and Clulee v. 
Adt (224 0. G., 742; 1916 C. D., 144; 44 App. D. C, 300), 
clearly revive and re-establish the rule, as announced in 
the earlier decisions, that a broad claim, which defines 
the issue in an interference in which a patent is involved, 
and in which said claim was first presented in the appli- 
cation which resulted in the patent, will be given a limit- 
ed construction when necessary to avoid the prior art. 



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Journal of the Patent Office Society. 43& 

provided such construction is consistent with the dis- 
closure of invention as set forth in the patent specifica- 
tion. In Rice v. Schutte, supra, it was said : 

♦ ♦ ♦ Courts win narrow the construction of a claim where 
it is necessary to preserve its validity — and in this proceedingr 
we must assume that the issue is patentable — but limitations 
not called for cannot be read into a claim to save it from de- 
struction. Although the devices of the respective parties are 
specifically diifferent, they are generically the same. The lan- 
guage of the issue, while broad, we think can be applied spe- 
cifically. 

In the case of Richards v. Benners (187 O. G., 513; 
1913 C. D., 36), the Commissioner cited and followed 
Rice V. Schutte, supra, in a decision in which he narrow- 
ed an issue first made in a patent for the purpose of 
avoiding the prior art. This decision was affirmed by a 
decision of the Court of Appeals of the District of Co- 
lumbia (Benners v. Richards, supra), in which the court 
said: 

The invention of the improvement in the present invention 
over the prior art as illustrated by the former patent to Ben- 
ners, and one to Green, is a narrow one. 

Although the Court of Appeals of the District of Co- 
lumbia, in the case of Leonard v. Horton (189 0. G., 
781; 1913 C. D., 348; 39 App. D. C, 458), reversed a de- 
cision of the Commissioner (Horton v. Leonard, decided 
February 27, 1912, not published) based upon a narrow- 
ed construction of the issue, under Rice v. Schutte, supra j 
for the purpose of avoiding the prior art, the court did 
not, thereby, overrule the doctrine announced in its own 
prior decision. After recognizing the general rule of 
construction applicable to interferences in which appli- 
cations only are involved, as follows : 

Where the inventor of a particular device chooses to make 
claims broader than necessary to cover the same, he cannot, 
when thrown in interference with another inventor in the 
same general field, ask that they be limited to correspond 
with his own particular structure. 

the court proceeded to analyze the prior art and ruled 
that the limitation to avoid the same was unnecessary. 
In other words, it was the opinion of the court, in that 
case, that the application of the special rule of Rice v. 
Schutte, supra, relating to interferences in which a pat- 
ent is involved, was not called for. This statement is 



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436 JOUKNAL OF THE PaTENT OfFICE SoCIBTT. 

based upon the following excerpt quoted from the de- 
cision of the court : 

The patent to Ash is referred to by the Commissioner as 
showing the prior art, and it is argued that the claims as con* 
strued by the lower tribunals are not patentable over the prior 
art, but to make them patentable must be given the meanlng^ 
contended for by Horton. Ash antedates both Leonard and 
Horton; but he shows one resistance only. He has two levera 
or arms acting upon the same resistance, while they have two 
separate resistances of different character. A thing which 
they undertook to accomplish was to avoid using the same re- 
sistance for starting the motor and varying its speed; and 
each count of the issue specifically recites these two distinct 
resistances. 

Hewlett V. Steinberger (190 0. G., 270; 1913 C. D., 
368; 40 App. D. C, 287) is another case invoiviniaf the 
construction of the issue of an interference in which a 
patent was involved. In this Q^se the Court of Appeals- 
of the District of Columbia aflSrmed a decision of the 
Commissioner, based upon a broad construction, the de- 
cision in the case of Miel v. Young, supra, being cited 
among others as authority. Subsequently, under Sec- 
tion 4915, Revised Statutes, the U. S. Circuit Court of 
Appeals, Second Circuit (General Electric Co. et al. v. 
Steinberger, 206 0. G., 1161; 1914 C. D., 255; 214 F. R, 
781) was called upon to decide this case on appeal from 
the District Court, Eastern District of New York. The 
appellate court found that the description in Steinber- 
ger 's patent was such as to preclude him from takings 
advantage of the broad construction relied upon by the 
Court of Appeals of the District of Columbia. The 
Circuit Court of Appeals also found that the prior art 
was undoubtedly such as to require a narrower con- 
struction. In other words, the Circuit Court of Appeals 
appears to have decided this case in accordance with the 
usual rules of construction relied upon by the Federal 
Courts generally in cases such as suits for infringement. 
Nothing is found in the decision to indicate that Rice v. 
Schutte, supra, was considered. 

As in the case of Leonard v. Horton, supra, the Court 
of Appeals of the District of Columbia, in its decision in 
Clulee V. Adt (224 0. G., 742; 1916 C. D., 144; 44 App. 
D. C, 300) followed its prior decision in Rice v. Schutte,. 
supra, by construing the issue of an interference in which 
a patent was involved, so as to avoid the prior art, but 
again clearly indicated that the issue must not be so* 



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JOUBNAL OF THE PaTBNT OfPIOB SoOIBTY. 437 

narrowed, by construction, further than may be neces- 
sary to save it from destruction. After indicating that 
construction under Rice v. Schutte, supra, was necessary 
in the following words : 

It is conceded that if the language of count 1 of the issue 
be given the broad construction of which it is. naturally sus- 
ceptible, it will read not only upon the exhibit, but upon other 
devices disclosed in the prior art. 

and had been applied by the various tribunals of the 
Patent OflSce : 

the tribunals of the Patent Office, in order to sustain the 
validity of the counts of the issue, have construed the word 
"loop" as including this novel feature, defined by them as a 
return-bend. They, as well as counsel for appellee, rely upon 
the case of Rice v. Schutte, (C. D., 1912. 506; 180 O. G., 
604; 38 App. D. C, 175). 

the Court, after discussing the prior decision thus relied 
upon, ruled: 

But here the first count of the issue is easily readable upon 
the exhibit of appellant, as well as upon the devices disclosed 
in the applications of the respective parties, unless the word 
"loop" be construed as including the limitation that its end be 
bent either upwardly or downwardly. This additional bend 
forms no part of the loop, especially in appellee's device, and 
hence to insert it into the claim would not be the mere con- 
struing of it, but the reading into the claim of a limitation not 
called for to save it from destruction. We are, therefore, of 
the opinion that appellant's exhibit answers the requirements' 
of the issue as defined in count 1, and that appellant is en- 
titled to an award of priority on this count. 

Conclusion. 

From the foregoing analysis of the decisions it ap- 
pears that the following rules of interpretation and con- 
struction, for determining the meaning and scope of 
claims which define the issue of an interference proceed- 
ing in the United States Patent OflSce, have been estab- 
lished: 

If a claim which defines the issue of an interference 
proceeding in the Patent OflSce is expressed in doubtful 
and uncertain terms, and the defect cannot be cured by 
amendment, either because of the limitations of the lan- 
guage in which it must be expressed, or because one of 
the parties to the interference is a patentee, a meaning 
should be adopted in its interpretation which is consist- 
ent with the disclosure of invention in the application 
in which the claim was first made. 



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438 Journal of the Patent Officob Society. 

If an interference proceeding in the Patent Office in- 
volves applications for patents only, as distinguished 
from such a proceeding in which a patent is involved, 
the claim which defines the invention in issue should be 
given the broadest construction possible without vio- 
lence to the language in which it is expressed. 

When an interference proceeding in the Patent Office 
involves a patent, and the claim which defines the issue 
was first presented in the application which resulted in 
said patent, the claim, though expressed in broad terms, 
should be given a limited construction, when necessary 
to avoid the prior art, provided such limited construc- 
tion is consistent with the intent of the inventor as ex- 
pressed in the patent specification. 

The foregoing discussion is not submitted as an ex- 
haustive treatment of the decisions bearing upon the 
subject involved. Nor is the same intended as in any 
manner exhaustive as to all phases of construction of 
the issue of a patent interference. For example, the 
rule that no material element of the issue may be disre- 
garded has not been touched upon. An attempt has 
merely been made to show that the meaning of the terms 
in which an issue is expressed and the construction of 
the issue are not one and the same thing; that the con- 
struction of the issue of an interference in which a pat- 
ent is involved is determined by somewhat different 
rules from those which control when the interference 
involves applications only; that the construction of the 
issue of a patent interference is subject to rules which 
differ from those applied by the Federal Courts in de- 
ciding suits for infringement; and that there appears 
to be a logical reason for such differences. A statement 
that the decisions bearing upon these several points ar<* 
entirely uniform and consistent would not be warranted. 
Their general trend, however, is believed to be in ac- 
cordance with the conclusions herein expressed. 



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Journal of the Patent Office Society. 439 

AGE OF PRODUCTION IN INVENTION AND OTHER 

FIELDS.* 

— 1^— 
By Wm. I. Wyman. 

— 1^— 
Genius has been defined as the ability to take j<reat 
pains, while the common conception of this quality is 
facility of accomplishment without undue excess of ef- 
fort. Probably the truth is an aggregate of these appar- 
ently contradictorj^ ideas. In examining the achieve- 
ments of men of transcendent note it is to be observed 
that in most cases, especially in scientific and artistic 
endeavors, they gave very early in life decided manifes- 
tations of unusual brilliancy. The consciousness of su- 
perior powers is naturally accompanied by a driving de- 
sire to give them expression, and thus we often see in 
the same individual powers of acutest imagination and 
-quickest comprehension coupled with tireless energy and 
master}^ of endless detail. Napoleon was quick to see 
and almost as quick to act, but he worked longer and 
more intensely than any of his compeers. Mozart and 
Raphael, highly precocious, whose arts came to them 
with excessive ease, left a prodigious heritage of their 
drudgery in the very short time they lived, while the 
enormous output of super-men like Newton, the scien- 
tist, Shakespeare, the dramatist, Balzac, the novelist, 
Rubens, the painter, and Wagner, the composer, and 
Leonardi de Vinci, Michael Angelo and Goethe, univer- 
sal geniuses, testified to their absorption in their work 
as well as to their brilliancy of accomplishment. 

In reviewing the careers of the more brilliant invent- 
-ors we find that they gave evidence early in life of a de- 
cided bent toAvards mechanics or applied science and 
that their capacity for drudgerous detail and extended, 
intense effort was the common hall-mark of their tribe. 
IVe do not find here such unusual outbursts of precocity 
as frequently distinguish the tender age of the mathe- 
matical or musical genius. Almost always the great 
masters of music or pure science have been youthful 
prodigies. Mozart composed at 5, Handel at 11, while 



^Reprinted (with slight additions and alterations), by permission, 
from the "Scientific American Supplement." 



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440 JOXJRKAL OF THE PaTENT OmCE SodBTYi 

Beethoven was second court organist at 14. Pascal at 
16 wrote an original treatise on conic sections, Lagrange 
at 19 wrote a paper which would have immortalized the 
maturest mathematician, and Laplace established his 
primacy in the scientific world before he was 21, Henry 
Smith, the great English mathematician, taught himself 
Greek as a child of four, while Clerk Maxwell intelli- 
gently ( !) investigated the mysteries of bell- wiring at 
the somewhat less mature age of three. 

Gauss and Euler established an international reputa- 
tion in pioneer mathematical endeavor in their teens, 
while the youth of Sir Wm. R. Hamilton, the inventor 
of quaternions, was one brilliant accomplishment after 
another, his career being a vivid illustration of genius 
let loose. At 13 he had a good knowledge of a dozen 
languages; at 15 mastered all the mathematics the uni- 
versities had to offer, and at 22 he published his abstruse 
^* Theory of Systems of Rays.'' Arago, before he was 
25 was a professor of mathematics, a profound delver 
into physical problems and a brilliant lecturer of Euro- 
pean renown; Davy's scientific contributions were so 
weighty when he was a boy that he was appointed when 
he was but 22 a lecturer 'to the Royal Institution, and 
while still in his twenties made the most valuable con- 
tributions up to that time ever offered in physical chem- 
istry; and Galileo, while onlj^ 18, discovered the laws of 
the pendulum, and, while yet at the age when boys now 
pursue their professional courses, discovered and dem- 
onstrated one of the fundamental laws of physics — the 
relation between space and time in a falling body. And 
most striking of all, the theory of fluxions or calculus, 
much the greatest advance in mathematics in modem 
times, and the law of gravitation, unquestionably the 
profoundest of all scientific generalizations, were dis- 
covered by Newton, the supreme intellect of the ages, 
before he was 25. 

But serviceable invention calls for some exercise of 
the maturer faculties. Imagination and inspiration may 
ripen exceedingly early jn life, but invention, while de- 
pending in great measure upon these qualities, has also 
close relation to the practical, to things which require 
experience and passage of years to absorb and appre- 
ciate. So it is entirely natural that many of the great- 



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Journal of the Patbnt Office Soceety. 441 

est inventions were introduced when their authors were 
fairly well along in years, but what is more remarkable 
was the youthfulness of the creators of a great many of 
the most important and revolutionary inventions at the 
time of introduction. Perkin invented the first aniline 
dye at 18— thus a mere boy laid the foundations of the 
immense coal-tar industry; McCormick was a youth of 
22 when he made his first reaper, whose importance as 
an industrial factor is scarcely overshadowed by any 
other invention since the steam-engine; Westinghouse 
and Marconi about reached their majority when their 
original creations were first published to the world, and 
what wireless is or the air-brake has done is to record 
the high-water mark in inventive progress; the thermo- 
electrolytic reduction of aluminum was simultaneously 
discovered by Hall in this country and Heroult in France, 
both at the age of 23, and these two young men, just one 
remove from boyhood, gave to industry a new useful 
metal, which bids fair to rank next to copper in commer- 
cial importance; and only two years later, at 25, Her- 
oult perfected the first serviceable commercial electric- 
furnace, whose transcendent importance as a factor in 
fundamental industrial operations we are only beginning 
to realize. 

If we were to take an excursion into the realms of the 
disputable and risk making up a list of the twenty great- 
est primary inventions of modem times, we would pre- 
sent the following table: (chronologically arranged). 

Age of Inyentor Age of Inventor 
time time 

Title. of introduction Title. of Introduction 

Steam Engine 29 Dynamo 44 

Cotton Gin 27 Air Brake 22 

Photography 40 Telephone 29 

Reaper 22 Incandescent Lamp 32 

Telegraph 46 Gas Engine 87 

Vulcanization (Rubber) 39 Steam Turbine 29 

Sewing Machine 26 Aluminum (Hall-Heroult) ... 23 

Bessemer Process 42 Induction Motor 31 

First Coal-tar product 18 Wireless Telegraphy 22 

RegeneratlTe Furnace ... .80-84 Aeroplane (Wright Bros.) .84-88 
(Fred. &. W. Siemens) 

There can be no question that all of these inventions 
are pioneer and invested with historical inaportance, and 
whether or not a better list can be prepared, it is safe to 



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442 Journal of the Patent Office Society. 

draw conclusions from the table presented. We find the 
average age of production about 32, at an age when ex- 
tremely few men, by and large, have made their mark. 
Half of these contributions, all of epoch-making charac- 
ter, having a revolutionary or unusually stimulating ef- 
fect on some industry or creating some new and import 
ant art, were made before their progenitors reached 30, 
while only four, or 20%, were contributed by men over 
40. 

If we enlarge the list and include inventions of infe- 
rior importance only to what has already been listed by 
adding the spinning-jenney (at 25), ether as an anas- 
thetic (27), first synthetic product (28) the phonograph 
(30), carbon-zinc electric cell (30), linotype (30), steam 
hammer (30), opthalmoscope (30), electric-welding (33), 
first modem locomotive (33), dynamite (34), electric- 
steel (35), cotton-spinning machine (36), hot-air blast 
for metallurgical furnaces (36), safety lamp (37), Pul- 
ton's Clermont (42), Bunsen burner (44), kinetoseope 
(46), X-ray (50), and the Jacquard loom (51), the aver- 
age age is advanced to about 33.5. If the list is still fur- 
tlier enlarged to include about 40 additional but slightly 
less prominent inventions, the average age of produc- 
tion moves up almost two years to 35.3. Allowing every 
reasonable latitude of choice and confining our list of 
greatest inventions to twenty-five as data for judgment, 
we have no reason to alter the conclusion derived from 
a study of the first table. Of achievements in applied 
science of the very first order, those of historical and 
vital importance, more were invented before 33 than af- 
ter, and exceptionally few were created after their spon- 
sors had reached their prime. From 27 to 36 appears 
to be the most active and most ingenious years of the 
greatest inventors, the lower thirties showing the peak 
of inventive effort. The young man came into his own 
at this time of life with the acceleration of electrical de- 
velopment from 1880 to 1890. Edison, Brush and Thom- 
son were about 30 when they undertook the pioneer task 
of utilizing electricity in generation, transmission and 
lighting, and Sprague was scarcely that age when he in- 
stalled the first modem trolley system in Bichmond, 
while Wm. Stanley was considerably younger than that 
when he first wrestled with the problems connected with 
utilizing alternating current and Tesla just over the line 



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Journal of the Patent Office Society. 443 

when his induction motor made practical the generation 
and transmission of high tension and polyphase cur- 
rents. 

Atrophy of the creative powers by no means exerts 
its baneful touch after the Oslerian forty years have ar- 
rived. Some mighty big advances were made in the in- 
dustrial arts by men in the forties — notaWy the Besse- 
mer process, the telegraph, gasoline engine, the kineto- 
scope, electroplating, voltaic pile, siphon recorder and 
the Daniell call. But the half -century mark seems to de- 
fine the limit of inspirational endeavor. Bunsen invent- 
ed a vapor calorimeter at 76, and M. Q-. Farmer was ac- 
tive beyond 60 as is Edison today, but Harvey's process 
of hardening armor plate, when he was 67, is the only in- 
stance the writer has been able to find of a primary in- 
vention of large industrial or social importance that was 
given to the world beyond touching distance of that age. 
Inventive genius, while flickering out the^, does so with 
a strong dying gasp, for at 50 or 51 were invented the 
gasoline engine, the X-ray machine, the Jacquard loom, 
and the modem mariner's compass. 

It is interesting to compare the age of achievement of 
inventors with those of men made famous in other walks 
of life. As already noted, the genius of great mathema- 
ticians and musicians almost universally breaks out at an 
extremely tender age. Child wonders are by no means 
scarce among the notabilities in other vocations. Jona- 
than Edwards at 10 wrote a paper on the immateriality 
of the soul; Goethe at eight knew something of Latin, 
Greek, French and Italian and presumably was master 
of his own diflScult tongue ; Milton at 15 composed excel- 
lent Latin verse ; and Alexander Hamilton at 13 wrote 
letters creditable to one of matured mind ; while before 
he arrived* at 17 RaphaePs work was indistinguishable 
in quality from the leading exponent of the greatest art 
school of the time. Of the great conquers of history 
four stand out in startlingly splendid isolation. Alex- 
ander was master of the world at 25, Hannibal at 26 
was commander-in-chief of the Carthaginian army and 
Napoleon proved himself the greatest general of modem 
times at 27. Caesar was forty before he was permitted 
to find opportunity to display his terrible aptness for 
war and was the only one of the quartette who was be- 
yond the influence of boyhood when he made his mili- 



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4r44 Journal of the Patent Office Society. 

tary mark. And yet Moltke^ the greatest military strat- 
egist of our time, remained in comparative obscurity 
until he was 66 and did not take his place among the 
great historical figures until the Franco-Prussian war 
at a time when the psalmists allotment of three score 
and ten had expired. As a rule, however, men of action 
and men of affairs do not come to years most fruitful of 
fame until they are well above 40 because the time spent 
in apprenticeship and service and step-by-step progress 
through a number of competitive grades are such large 
factors in determining their position. Statesmen, finan- 
ciers and captains-of-industry are frequently men who 
may be called old and often great military and naval 
engagements have been conducted by men some distance 
beyond their prime. In fact it is an exception when a 
statesman or financier has acquired fame in his early 
manhood. The highest flights of the imagination, the 
acutest insights into scientific truths and the most daz- 
zling of military operations have often been the products 
of comparative immaturity, but the more humdrum ac- 
tivities in the affairs of state or in the conduct of trade 
and finance require leadership of tested experience. It 
is this fact which makes the records of Wm. Pitt and 
Alexander Hamilton (one in becoming prime-minister 
of England at 24 and the other in being the colonies lead- 
ing financial authority at the same age) so extraordinary 
— not in the inherent brilliancy of their performances, 
but in the extreme rarity of instances of that kind. 

Even in the realm of speculative thought do we often 
find examples of early productiveness. We do not nat- 
urally look for youthful leadership in the domain of 
those intellectual exercises which we usually find de- 
pendent upon the extended observation, experiences and 
ruminations of a matured existence. And yet before 
Berkeley or Hume reached 27, they had developed their 
respective philosophies, became the founders of distinct 
schools of metaphysics, and exercised a tremendous in- 
fluence on subsequent abstruse thought. While he was 
yet a boy, John JRuskin wrote his revolutionary ** Mod- 
em Painters'^ and before he passed 30 years gave to the 
world his ''Seven Lamps of Architecture, '^ the greatest 
classic in its field. Before 30, Spinoza had evolved and 
published some of his profound speculations, and Kant, 



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Journal of the Patent Office Society. 445 

John Stuart Mill, and Adam Smith were active in lines 
involving the highest intellectual flights. 

Inventors, being partly men of science, partly men of 
imagination and to a great extent men of affairs do not 
leave a record of precocity of the first class or mature so 
late as the last. Their records are comparable to a great 
degree to those of rioted writers, men of the creative typo 
and of artistic perception. Thus Milton wrote Comus 
at 26 and completed Paradise Lost, his last great work, 
at 57. Shakespeare wrote his first great poem at 29 anil 
died at 52. Thackeray published his ** Vanity Fair" at 
35 and reached the height of his powers with his-* ^New- 
comes" at 43, and Dickens acquired fame at 24 by his 
** Pickwick Papers," reached his high- water mark at 38 
with his ** David Copperfield," and exhausted his genius 
not long after 50. Examples like this could be multiplied 
ad libitum, although it is curious to note a rare depart- 
ure in DuMaurier and DeMorgan, both of whom took 
their first fling at novel writing when they were past 
their prime — one at 57 and the other at 67 — and achieved 
success and fame in the attempt. Our most famous in- 
ventor, Edison, invented the stock-tick6r at 24, the pho- 
nograph at 30, incandescent lamp at 32, devised the firs* 
central station system at 35, and invented the kineto- 
scope at 46 — a record of achievement comparable to the 
activity of the most noted authors in the parallel field 
of literature. 

A Table of Important Inventions. 







Date Patented, 


Oper- 


Inventor 


Age 


Invention. 


ated or Disclosed. 


Perkin 


18 


Aniline dye 




1856 


Siemens, Wm. 


20 


Steam Engine Governor 




1843 


Bessemer 


21 


Electroplating lead with Copper 


1813 


Colt 


21 


Revolver 




1835 


Marconi 


21 


Wireless (first patent) 




1896 


Westinghouse 


22 


Air-brake 




1868 


McCormick 


22 


First Reaper built 




1831 


Han 


23 


Aluminum Reduction 




1886 


Heroult 


23 


Aluminum Reduction 




1886 


Edison 


24 


Stock Ticker 




1871 


Crompton 


25 


Spinning Jenney 




1778 


McCormick 


25 


Reaper, (first patented) 




1834 


Marconi 


25 


Wireless (successful operation) 


1900 


Howe 


26 


Sewing Machine 




1845 


Whitney 


27 


Cotton Gin 




1792 



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446 



Journal of the Patent Office Society. 



Date Patented, Oper- 



Inventor 


Ape 


Invention. ated or Disc 


aosed. 


Davy 


27 


Voltaic Arc 


1805 


Ericson 


27 


Steam Fire Engine 


1830 


Dr. Morton 


27 


Ether as Anasthetic 


1846 


Edison 


27 


Quadruples Telegraph 


1874 


Brush 


27 


Dynamo and Arc Lamp 


1876 


Wellsbach 


27 


Gas Burner 


1885 


Wohler 


28 


Synthetic Organic Compound 


1828 


Watt 


29 


Steam Engine (successful operation) 


1765 


Whitworth 


29 


Planer 


1832 


Farmer 


29 


Electric Cooker 


1849 


Bell .00 


29 


Telephone 


1876 


Parsons f\fr 
Nasmyth \* 
Bunsen * i- 


[?)29 


First Steam Turbine Produced 


1884 


30 


Steam Hammer 


1838 


30 


Carbon Zinc Cell 


1841 


Siemens. Fred. 


30 


First Regenerative Furnace Patent 


1856 


Edison 


30 


Phonograph 


1877 


Helmholtz 


30 


Opthalmoscope 




Mergenthaler 


30 


First Lynotype 


1884 


Farmer 


31 


Electric Fire Alarm Telegraph 


]S-i 


Tesla 


31 


Polyphase Current Motor 


18S8 


Edison 


32 


Carbon Filament 


1879 


Stephenson 


33 


His First Locomotive 


1814 


Thomson, Elihu 


33 


Electric Welding 


1886 


Siemens, Wm. 


34 


First Regenerative Furnace Patent 


1857 


Otto 


34 


First Successful Gas Engine 


1860 


Nobel 


3i 


Dynamite 


1867 


Eastman 


34 


Kodak Camera 


1888 


Wright, 0. 


34 


Aeroplane 


1905 


Edison 


35 


Central Station Distribution 


1882 


Heroult 


35 


Electric Steel 


1898 


Acheson 


35 


Carborundum 


1891 


Arkwright 


36 


Cotton Spinning Machine 


1768 


Fulton 


36 


Submarine 


1801 


Neilson 


36 


Hot Air Blast 


1828 


Mergenthaler 


36 


First Successful Linotype 


1890 


Davy 


37 


Safety Lamp 


1815 


Wright, W. 


38 


Aeroplane 


1905 


Watt 


38 


Steam Engine Perfected 


1774 


Siemens, Wm. 


38 


Regenerative Furnace Perfected 


1861 


McKay 


39 


Shoe Sewing Machine 


1860 


Goodyear 


39 


Vulcanization of Rubber 


1839 


Gayley 


39 


Hot Air Dry Blast 


1894 


Diesel 


39 


Internal Combustion Motor 


1897 


Daguerre 


40 


Photography 


1829 


Westinghouse 


40 


Quick Acting Brake 


1886 


Acheson 


40 


Artificial Graphite 


1896 


Bessemer 


42 


Convertor 


1855 


Fulton 


42 


Steamboat 


1807 


Cort 


44 


Reverbatory Puddling Furnace 


1784 


Brugnatelli 


44 


Electroplating 


1805 


Bunsen 


44 


Burner 


1855 


Siemens, Wm. 


44 


Dynamo (With Werner Siemens) 


1867 


Siemens, Wm. 


44 


Open Hearth Process 


1867 


Otto 


44 


Finished Gas Engine 


1876 


Taylor 


44 


High Speed Steel 


1900 


Stephenson 


45 


First Successful Locomotive Operated 1826 



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Journal of the Patent Office Society. 447 







Date Patented, Oper- 


Inventor 


Age 


Invention. ated or Disclosed. 


Daniell 


46 


Battery Cell 1836 


Morse 


46 


Telegraph 1887 


Edison 


46 


Kinetoscope 1893 


Volta 


47 


Voltaic Pile 1792 


Kelvin. Lord 


50 


Mariners Compass, Modern about 1874 


Daimler 


50 


Gasolene Engine 1884 


Roentgen 


50 


X-Ray Machine 1895 


Siemens^ Werner 


51 


Dynamo (with Wm. Siemens) *1867 


Jacquard 


51 


Loom 1801 


Ericson 


52 


Hot Air Engine 1865 


Daimler 


52 


GasoliBne Vehicle 1886 


Morse 


53 


Telegraphy Publicly Demonstrated 1844 


Eric9on 


60 


Monitor 1863 


Harvey 


67 


Harveyized Steel 1891 






^ 



PATENTS— A BUSINESS BAROMETER. 

—^— 

John Boyle, Jb. 

— **— 

It is a well recognized principle among students of 
trade conditions, that business moves in cycles ; that eras 
of prosperity and depression succeed each other. These 
cycles are of two kinds; first, major cycles, broad and 
irregular, taking a period of about twenty years to com- 
plete; second, minor cycles, which constitute the irregu- 
larities of the major cycle and taking only a few years 
to complete. Graphically, these cycles would be repre- 
sented by an undulatory curve having smaller undula- 
tions, the main undulations representing the major cy- 
cles and the small undulations, the minor cycles. The 
high points of a cycle represent times of great industrial 
activity; the low points represent periods of business 
depression. 

Jevons, the English economist, pointed out the occur- 
rence of these business cycles in England since the be- 
ginning of the 18th century and attempted to show a con- 
nection between them and the periodicity of sun spots. 

These changes in the conditions of business are reflect- 
ed in certain related factors such as railway earnings, 
immigration, bank clearings, stock prices, etc., some of 
which are more sensitive or responsive to changing con- 
ditions than others. Recognizing the general principles 
of the business cycle, some students attempt to predict 



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Journal of the Patent Office Society. 449 

the probable changes in business and the corresponding? 
changes in the related factors. 

That there is a close relationship between business 
activity and activity in patents, and that patents tend to 
follow the business cycle is not fully recognized, and the 
proof of it may be interesting. Curiously enough, too, 
it is patents granted and not applications for patents 
which are the most sensitive to changing business condi- 
tions and which follow the business cycle most closely. 

The accompanying chart shows a plot for applications 
for patents and for patents j^ranted since 1865. The 
figures are taken from the annual report of the Conmiis- 
sioner of Patents to Congress. The upper curve repre- 
sents applications for patents and reissues and the low- 
er one represents patents granted excluding reissues. 
The dotted lines represent what might be called the lines 
of normal increase. It will be obvious from an inspect 
tion of these curves that the curve representing patents 
is more symmetrical than the curve representing appli- 
cations. Particular attention will, therefore, be directed 
to the patent curve. The following points should be 
noted about this curve. It crosses the dotted line about 
every ten years, viz. : 1872, 1882, 1892, and 1902. The 
highest point in the last half of the first cycle is 1869; 
in the last half of the second cycle is 1890, twenty-one 
years thereafter; in the last half of the third cycle is. 
1909, nineteen years thereafter. In each of these years, 
was granted a greater number of patents than had ever 
been granted before in any one year. The lowest point 
in the first half of the second cycle is 1873; the lowest: 
point in the first half of the third cycle is 1894, twenty- . 
one years thereafter. The crosses on the plot indicate 
the high and low points. This would seem to show that 
patents granted move in about a twenty year cycle. 

A review of the industrial history of this country will 
show that there were very serious business depressions 
in 1873 and in 1893; and that in 1884, 1890, 1903 and 
1907, business was at a low ebb, although these crises 
were not so Jar reaching in their effects as the first two. 
As shown by the patent curve, the effect on the issue of 
patents during these periods was proportional to the 
intensity of the business crisis. 

It would seem to be clear, then, that not only is there 
a patent cycle, but that it is practically the same as the 



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450 Journal of the Patent Office Socebty. 

business cycle. Many different causes operate to pro- 
duce this similarity. Every line of human endeavor is 
represented in patents. During prosperous times, the 
tendency is to take up new ideas and to enter new fields 
of business. Inventors and corporations interested in 
inventions rush to a conclusion, applications which may 
have been pending for some time in the Patent Office. 
They immediately pay the final fee and take the patent 
out. During a period of depression, the opposite ten- 
dency manifests itself. Applications that are already 
filed are kept alive in the Office by taking advantage of 
the technical procedure and are kept there until such 
time as they are most valuable, which, of course, would 
be in an era of prosperity. This probably would serve 
to explain why the patent curve is so much more sensi- 
tive to business changes than is the application curve. 

Turning now to the application curve, it will be noticed 
that the crises of 73 and '93 produced an appreciable 
effect on the same, whereas those of '84, ^90, '03 and '07 
produced hardly any. The explanation of this peculiar- 
ity requires the introduction of a new factor into the 
case, the patent solicitor. During a period of prosper- 
ity, on account of the great number of new inventions 
demanding their attention, attorneys will probably be 
unable to keep their work current. When a reaction sets 
in and their business begins to slow down, they take ad- 
vantage of the situation to bring their work up to date. 
If the reaction is short lived, no appreciable decrease 
will be shown in the number of applications filed. When 
the reaction covers a long period, this equalizing feature 
disappears in time and the number of applications filed 
becomes truly indicative of the condition of business. 
Many other causes might be suggested to explain the 
variations in these curves. 

At the time of the discovery in 1913* of this close re- 
lationship existing between the granting of patents and 
business activity, we were then approaching the end of 
one of the business cycles. It was confidently predicted 
at that time by students of fundamental conditions that 
we were due for a period of business depression, in which 
case the patent curve would have been expected to drop 



•See The Magazine of WaU Street, Vol. 12, No. 2. 



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Journal of the Patent Office Society. 451 

below the dotted line. But just as the war produced an 
unparalleled and artificial activity in business, so t6o 
did it produce a similar condition in the issuing of pat- 
ents. As might have been expected, however, in the 
light of previous experience, the immediate effect on the 
filing of applications has not been very marked. 

It should be remembered that inasmuch as patents are 
the creatures of statute, any radical revision of the pat- 
ent laws or any radical change in the rules of practice in 
the Patent Office, might produce changes in the curves 
that could not be foretold. In fact, perhaps some of the 
unexplained variations in the curves could be attributed 
to* some change of policy on the part of the Patent Office. 



INVENTIONS IN FRANCE. 

— l^a— 

In an article in Les Annates, commenting on the ten- 
dency of the French to become victims of routine and 
not disposed to undertake new ventures, Paul faultier. 
Professor of Economics at the Sorbonne, and one of the 
leading French writers on current topics, voices the fol- 
lowing interesting sentiments on the status of inven- 
tions in that country : 

** France is indeed not a paradise for inventors. Not 
that France itself does not invent; it invents more than 
any other country in the world. But it makes no use of 
its own inventions. It does not use them because of the 
stubbornness of the people. In order that an invention 
should have any chance of being adopted by us, it must 
come back to us from abroad. The list would be a long 
one of all the discoveries which, born in France, came 
back to us after a long detour. We only begin to exploit 
an invention after we have become accustoi^ed to it. 
There is no inventor of consequence, who in the begin- 
ning has not found everybody at home combined against 
him. That there should still be any inventors among us 
is an indication of how powerful French genius must be. 
If any one should discover a way of changing stones in- 
to gold, no one would even consider it. Manufacturers 
and financiers would turn down the proposition and the 
newspapers would ridicule it. And if the inventor 



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452 Journal of the Patent Office Society. 

should start to make a little noise about it, the ^ardians 
of our traditions would unite in condemning him. Re- 
pulsed everywhere, scorned and baffled, the inventor re- 
ceives only injuries and misery, to such an extent are 
new things taboo among us. 

**Just think of it! The extent to which some new thing 
might derange our habits and established customs.'* - 



To the Editor: 

I have been intensely interested in the appearance 
each month of the Journal of the Patent Office So- 
ciety and I find it a most profitable procedure to care- 
fully digest each page. It appears to me that it is a per- 
fect God-send to the Industrial activities of the country, 
making for a clear understanding of the patent provis- 
ion of the Constitution. 

The article in the November number of the Journal 
by Examiner Lightfoot has impelled me to get my file, 
labeled '* PATENT OFFICE EXPANSION,'* into shape 
so as to formulate a few ideas along that line. These I 
have embodied in a brief ^^ paper'* which I ani enclosing 
for the use of the Society, in 4|iy way that may be deem- 
ed desirable. 

I am convinced, in view of the correspondence that I 
have had with different Congressmen and the interviews 
I have had with the Chairmen of the Patent Conamittees 
of both Houses, and the interview with Vice President 
Marshall, relating to the needs of the Patent Office, that 
outside pressure must be brought to bear on the mem- 
bers of Congress from the ^' folks back home'* to induce 
them to in some way atone for the awful neglect of which 
they are guilty. 

The suggestions I have volunteered to make are also 
based on a personal survey I made of the Patent Office 
Building on May 15 and 16, 1918. I do not claim orig- 
inality for all of the suggestions. Some of them must 
necessarily overlap just as important conceptions made 
by others. 

With best wishes for the Society and kindest personal 
regards, I beg to remain. 

Very truly yours, 

N. S. Amsttjtz, 
Valparaiso, Ind. Eesearch Engineer. 



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Journal of the Patent Office Society. 453 

NEEDS OF THE PATENT OFFICE. 

Some of the urgent needs of the Patent Office appear 
to be as follows : 

1st. An increase of staff to meet the increase of bus- 
iness submitted to the Office and combat the expanding 
area of search that such increase of business inevitably 
produces. 

2d. An increase of equipment commensurate with the 
ever expanding activities of the Office. 

3d. A radical increase of compensation for the staff, 
at least as large as that found necessary in carrying 
forward the Industries of the country, through skilled 
assistants of the same order of qualification as is de- 
manded by the Patent System. 

4th. An annual study period, of at least one month, 
preferably three months, for each principal Examiner 
and Assistant Examiner, under full pay and reasonable 
expenses, while directed by the Commissioner as to avail- 
able periods, etc., conditioned on a full time study of the 
practical phases of the Industries of the same subjects 
allotted to them in their official capacity as Examiners. 
That a formal report of such observations be made and 
filed in the Division archives for reference. 

5th. The establishing of a complete fire-proof labora- 
tory in the Patent Office building, for making physical, 
chemical, mechanical and electrical qualitative tests. The 
laboratory to be supplied with a full complement of ac- 
cessories, self-recording devices, etc., in charge of a staff 
of assistants, comprising a physicist in each branch, a 
general mechanician, etc. So that any questions arising 
in the course of prosecutions as to the actual perform- 
ance of processes or mechanisms could *be answered by 
authoritative tests made without going outside of the 
Office. In this way definite results would be secured un- 
der the proper surroundings, as to privacy, conformable 
to the secrecy of the Office Archives, The findings in ev- 
ery case to be made the subject of a formal report to be- 
come a part of the file to which it relates. 

6th.- The installation of an automatic system of ven- 
tilation to insure the proper amount of air for each oc- 
cupant, adequately humidified and cleaned. 

7th. The inauguration of a more thorough system of 
hygiene and sanitation, cooperative with item 6. 



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454 Journal of the Patent Office Society. 

8th. An arrangement of quarters, probably impos- 
sible in the present building, giving each principal Ex- 
aminer and each first and second assistant a priv^e 
room with a stenographer's room entirely separate, so 
as to surround these highly skilled men with the same 
kind of environment as is supplied as a matter of course 
in the Industries and the Professions. 

9th. Arrange a plan for a carefully coordinated study 
department, in the law, physics, mathematics, the prac- 
tical sciences, equivalent structures, etc., etc., for all un- 
der assistants. This feature to be made obligatory so 
as to form a standard system of instruction within the 
Office from which to develop qualifications on which staff 
can depend for recruits. 

10th. Form a Board on Standards of Practice so as 
to secure uniformity of procedure among the different 
Divisions and the Attorneys practicing before the Office. 



THE ''PATENT SYSTEM." 

— l^a— 

In Its Relation to the Ethics of Industrial Service. 

— l^a— 

Does it reflect a general business obloquy or merely handicapped 

professional ethics? As a factor of social activity is it any 

more deserving of harsh criticism than the etiiical 

system of other vocations? 

— l^a— 

The patent profession should be considered as an ac- 
tivity of specific public service, differing as to the letter 
but not as to the spirit from the medical and theological 
professions or any other branches of service now desir- 
ing the appellat'on of ' * prof ession. ' ' Patent practition- 
ers are but a part of a social system according to which 
some people desire the grant of a governmental monop- 
oly to their individual advantage. These people wish 
to have a special benefit emanate from their inventive 
judgment. The patent lawyer is obligated to serve them 
to the end of procuring, in cases where justly entitled, 
such legalized monopoly of broadest proper scope. 

A physician is obligated to mitigate pain and cure, if 
possible. None wishes his immediate consideration to 
be *^why have you this pain?" or *^do you think it is a 
good thing to have?" He simply gives you credit for 



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Journal of the Patent Office Societt. 455 

the reasonableness of your conclusions and proceeds to 
prescribe accordingly. 

A theologian is obligated to soothe with a revivifica- 
tion of faith. He is so gratified at the knowledge of your 
signifying the need of it that he does .not presume to ask 
vhy you think you need it He, on his part, simply as- 
sumes you should or actually do need it, and ministers 
Accordingly. 

It is not for the patent lawyer even conscientiously to 
disparage and condemn. To do both of these at times, 
when absolutely certain of being well informed by data 
furnished through previous experience, may be justifi- 
able. When this is done it reduces the income. It is 
well known how many shysters there are in the legal pro- 
fession. It may be less often realized that there is an 
•equal percentage of ** unprincipled persons** in other 
professions. It is true that some persons prey upon the 
<jupidity or inferior judgment of others. How to exclude 
this class from professional practice is truly a problem. 
Perhaps a fixed scale of charges or standardized fees 
for specific service would lessen the evil. 

Every business presents, however, a similar problem. 
The manufacturing business in which any reader of this 
article chances to be engaged also involves sharp prac- 
tices, discreditable dealing and all too often a heartless 
inconsiderateness of labor — of the daily wage-earner 
who, if he is not the sole producer, is certainly a big pro- 
-ducer with a soul. 

With specific reference to the manufacturing business, 
or code of business ethics, I ask: 

Does the manufacturer inquire into the commercial 
merits (salability) of articles submitted to him for pro- 
duction? NO! This is so not merely because he cannot 
afford to do so, but also because he ought not to presume 
to be all-knowing in this regard. It may be true that he 
•could judge aright in the great majority of cases and as 
often magnanimously disparage and discourage. It is, 
however, convincingly not his duty to do so. It is not 
even proper, for in doing so he foists his judgment upon 
an individual likely to place reliance thereon. His judg- 
ment must occasionally be incorrect and irreparable dam- 
age, however small, ensue in consequence. Quite inci- 
dentally, such procedure would be woefully poor busi- 
ness and insure the family of him who practiced it few 



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.456 Journal of the Patent Office Society. 

worldly goods and comforts. The majority of competi- 
tors will never follow suit. 

Now this last : 

Let us assume that a patent solicitor today procured 
a patent upon an. article which in a certain manufac- 
turer 's disinterested opinion should be pronounced a 
worthless idea, a useless contribution to inventive and 
industrial progress. Tomorrow this patentee just chanc- 
es to come to this same manufacturer with the request 
that he manufacture the same article. Is not the manu- 
facturer's disinterested opinion at once a nullity! Does 
he tell the patentee what he would have had the solicitor 
tell him? INDEED NOT, nor does anyone else. The 
manufacturer would be right in saying: **That*s none of 
my business'' — and there you are. 

It just simmers down to this : 

A manufacturer is not a benign industrial expert in 
the service of a suspicious and ungrateful public. A 
patent lawyer is not a general industrial adviser. 

All of us should concentrate, specialize and strive in- 
tensively to know a little of everything and everything 
of one thing, and then advise others only in respect to 
that about which they seek advice of us in our individual 
capacity as experts, not in respect to extraneous phases. 
Indulgently submitted for earnest reflection, 

Curt B. Mueller. 



CHAMBER OF COMMERCE, STATE OF NEW YORK. 

Mr. E. J. Prindle, who is Secretary of the Patent Office 
Committee of the National Research Council and who has 
recently been elected (^hairman of the Patent Committee 
of the American Chemical Society, reports that, throuprh 
the efficient efforts of Mr. Welding Ring, Chairman of 
the Executive Committee of the New York State Cham- 
ber of Commerce, the chamber referred to adopted, at 
its meeting on May 1, the following resolution: 

"RESOLVED, That the Chamber of Commerce of the State 
of New York favors the enactment of legislation by Congress, 
in line with the report of the National Research Council, that 
will increase the efficiency of the Patent Office in the handling 
of all matters pertaining to inventions and patents, facilitating 
quick and more thorough research, prompt determination of 
the rights of inventors, and avoidance of unnecessaiy litiga- 
tion in the courts." 



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JOUBNAL OF THE PaTBNT OfFICK SoCIBTY. 457 

PATENT OFFICE GREETS ITS RETURNED 
FIGHTERS. 



More than 1,000 officials and employees of the Patent 
Office and friends on the evening of A