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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.  Interferences     Orligln  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. 


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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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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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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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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  0  '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 
0  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  0  .(}•,  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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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.)  ^  , 

Digitized  by  LjOOQ IC 


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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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,  0  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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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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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  SodETT. 


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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  April  28,  welcomed 
home  the  men  who  left  that  Office  to  enter  the  military 
and  naval  service  of  Uncle  Sam,  at  the  Patent  Office 
building.  The  large  rotunda  on  the  second  floor  was 
hardly  adequate  to  care  for  the  large  throng. 

A  large  service  flag  bearing  one  star  and  *^170'^  in 
large  numerals  hung  from  the  center  of  the  ceiling,  while 
another  flag  bore  nine  gold  stars  as  mute  evidence  of 
''the  men  who  will  not  return."  The  program  included 
an  entertainment,  dancing  and  refreshments. 

Sidney  F.  Smith,  principal  examiner  of  patents,  pre- 
sided. Speakers  were  Rear  Admiral  J.  S.  McKean,  U. 
S.  N.;  James  T.  Newton,  Conmiissioner  of  Patents;  Capt. 
Elmer  Stewart  and  Capt.  Howard  W.  Hodgkins,,  form- 
erly employed  in  the  Office.  Miss  Ada  L.  Townsend  gave 
a  patriotic  recitation  and  the  Department  of  the  Interior 
Orchestra  played. 

During  the  evening  the  male  chorus  of  the  Office  sang. 
Members  are  Charles  H.  Allen,  G.  C.  Callan,  Charles  H. 
Shaffer,  A.  J.  McFadyen,  Thomas  Mead,  Gt.  A.  Lovett, 
G.  P.  Tucker,  W.  B.  Magruder,  J.  H.  Giles  and  W.  J. 
Friess. 

Tlie  committee  in  charge  of  arrangements  included 
Sidney  F.  Smith,  chairman;  W.  J.  Rich,  J.  H.  Lightfoot, 
W.  B.  Magruder,  J.  J.  Darby,  Capt.  W.  W.  Burns,  Miss 
Mary  L.  Goddard,  Miss  Fannie  Moore,  Miss  Nellie  Ross 
and  Miss  Dorothy  Weeks. — The  Evening  Star^  April  29. 


WEEKLY  NEW  YORK  PATENT  ATTORNEY 
LUNCH. 

—im— 

Patent  attorneys  meet  each  Friday  for  lunch,  down 
stairs  at  Stewart's,  28  Park  Place  (near  the  Woolworth 
Building). 

Patent  Office  men  and  attorneys  are  invited  when  in 
New  York  to  have  lunch  and  meet  friends  there. 


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458         Journal  of  the  Patent  Office  Society. 

CAN  THE  PATENT  OFFICE  COMPETE  WITH  THIS? 

— l^a— 
The  United  States  Civil  Service  Commission  has  an- 
nounced an  open  competitive  examination  to  be  held  May 
20,  1919,  for  the  following  positions  in  the  Patents  Sec- 
tion, Purchase  Branch  of  the  Purchase,  Storage  and 
Traffic  Division,  War  Department,  at  the  salaries  indi- 
cated : 

Patent  Investigator,  $1200-11800 

Expert  Patent  Investigator,  $1800-12400 

Patent  Specification  Writer  and  Prosecutor.  $1500-$240O 

Technical  Patent  Expert,  $2400-13600 

Patent  Draftsman,  $1200-$180& 

The  competitors  will  be  rated  upon  their  sworn  state- 
ment in  their  application  and  upon  corroborative  evi- 
dence deduced  by  the  Commission.  The  qualifications  re- 
quired for  these  positions  are  in  substance  respectively 
as  follows : 

Patent  Investigator: — A  four  years  high-school  course 
and  one  year  of^a  technical  course  in  a  college  or  univer- 
sity of  recognized  standing,  or  have  been  employed  at 
least  a  year  in  which  they  acquired  a  knowledge  of  tech- 
nics ;  they  must  have  had  at  least  two  years  experience  in 
Patent  Office  ^  ^  searching. '  * 

Expert  Patent  Investigator: — A  four  years  high-school 
course,  two  years  of  a  technical  course  in  a  college  or 
university  or  two  years  technical  experience  in  a  me- 
chanical, electrical  or  chemical  industry;  they  must  also 
have  had  at  least  three  years  experience  in  preliminary 
examination  of  inventions  and  in  validity  and  infringe- 
ment searches  in  the  Patent  Office,  and  must  be  familiar 
with  the  laws  concerning  transfer  of  rights  under  pat- 
ents, recording  of  assignments,  and  with  Patent  Office 
records.  A  knowledge  of  French  and  German  is  desira- 
ble. 

Patent  Specification  Writer  and  Prosecutor: — Gradu- 
ate of  a  college,  univesrity  or  technics  school  and  one 
year's  experience  in  patent  specification  writing  and 
prosecuting  patent  applications. 

Technical  Patent  Expert : — Graduate  from  a  technical 
course  in  a  college  or  university  and  graduate  in  law  or 
have  been  admitted  to  the  bar;  they  must  have  had  at 
least  four  years  experience  in  patent  work  including  va- 


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Journal  of  the  Patent  Office  Society.         459 

lidity  and  infringement  searches,  preparation  and  prose- 
cution of  patent  applications,  conducting  of  interfer- 
ences and  general  patent  wort 

Patent  Office  Draftsman : — ^A  good  common  school  ed- 
ucation and  six  months'  work  in  a  school  of  drafting,  or 
two  years'  drafting  experience.  Applicants  must  sub- 
mit a  drawing  and 'a  tracing  thereof  complying  with  the 
requirements  of  the  Patent  OflSce  in  regard  to  style  and 
details. 

A  reading  of  these  requirements  shows  that  any  assist- 
ant examiner  who  has  been  in  the  Office  two  years,  is  qual- 
ified for  the  position  of  patent  investigator,  with  three 
years'  experience  would  be  qualified  for  the  position  of 
expert  patent  investigator,  and  with  four  years'  expe- 
rience in  the  Office,  except  possibly  for  the  required  ex- 
perience in  preparing  and  prosecuting  patent  applica- 
tions, would  be  qualified  for  the  position  of  technical  pat- 
ent expert.  The  Patent  Office  draftsmen  are  clearly 
qualified  for  the  position  of  patent  draftsman. 

A  comparison  of  the  salaries  offered  for  these  posi- 
tions w4th  the  salaries  the  assistant  examiners  and  Pat- 
ent Office  draftsmen  qualified  for  the  positions  are  now 
getting  is  distinctly  unfavorable  to  the  Patent  Office. 
Nearly  all  the  third  assistant  examiners  should  be  qual- 
ified for  the  position  of  expert  patent  investigator,  and 
all  the  second  assistants,  first  assistants,  principal  ex- 
aminers, law  examiners  arid  the  chief  clerk  have  had  a 
training,  qualifying  them  for  the  position  of  technical 
patent  expert,  except,  as  above  stated,  for  the  required 
experience  in  patent  application  preparation. 

If  the  War  Department  considers  the  technical  work 
specified  in  these  five  positions  to  be  worth  the  salaries 
they  propose  to  give,  the  only  conclusion  to  be  reached 
is  that  the  Patent  Office  examiners  are  recognized  by 
the  War  Department  as  being  underpaid.  Obviously 
the  Patent  Office  cannot  compete  with  the  War  Depart- 
ment in  the  search  for  men  equipped  to  do  patent  work, 
and  the  result  must  be  a  further  loss  of  assistant  exam- 
iners in  the  Office  to  the  War  Department  and  further 
difficulty  in  finding  men  from  the  outside  to  accept  the 
salaries  offered  in  the  Patent  Office. 

G.  P.  T, 


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460    Journal  of  the  Patent  Office  Society. 

RULE  41.    DISCUSSION  OONTINUED. 

— 1*— 

In/attempting  to  lay  down  any  rules  for  joinder  of  in^ 
ventions  in  an  application  one  is  at  onoe  confronted  by 
the  fact  that  no  invariable  rule  is  tenable  since,  as  held 
in  the  Steinmetz  case,  each  case  must  be  adjudged  by 
itself. (see  also  ex  parte  Young,  1885),  but  it  may  be  pos- 
sible to  review  the  several  classies  of  invention  and  point 
out  certain  of  the  more  common  conditions  and  in  a  gen- 
eral way  how  they  may  be  treated. 

The  Office  rule  classifies  inventions  as 

(1)  Independent.     These  must  be  divided. 

(2)  Distinct  Inventions  dependent  on  each  other  and  mutually 
contributing  to  produce  a  single  result.  These  may  be 
claimed  in  one  case  or  may  be  divided  according  to  the 
nature  and  character  of  the  relationship  and  the  nature 
of  the  result. 

As  hereinbefore  pointed  out  there  will  be  found  to 
exist  cases  where  the  inventions  (if  more  than  one  ex- 
ists) are  either  not  distinct  by  reason  of  their  nature  or 
are  not  distinctly  claimed.  The  former  may  arise  where 
the  claims  are  merely  different  statements  of  one  and  the 
same  idea,  in  product  and  process,  or  in  process  and  ma- 
chine, or  are  only  differing  breadths  of  the  same  stated 
invention  or  where  different  claims  based  on  the  same 
machine  or  process  are  so  interwoven  and  overlapping 
that  no  clear  line  of  cleavage  between  the  different  parts 
of  the  invention  can  be  discerned.  The  latter  may  arise 
where  claims  to  two  inventions  capable  of  severance  and 
of  distinct  statement  are  yet  so  drawn  that  no  dear  line 
may  be  made  between  them.  In  the  former  case  division 
may  not  be  made  but  in  the  latter  it  may  not  be  made  as 
the  claims  exist  but  may  arise  if  and  when  the  daims  are 
clearly  drawn.    Ex  parte  Lord,  1890. 

Independent  inventions  are  those  which  are  discon- 
nected in  design  and  operation. 

Inventions  in  the  four  statutory  dasses  of  Arts,  Ma- 
chines, Manufactures,  and  Compositions,  are  presumably 
independent  {in  re  Frasch,  C.  D.  1906),  but  not  inva- 
riably so, — since  they  may  be  dependent  (see  the  Stein- 
metz case,  1904)  and  even  inseparable  {ex  parte  Lord, 
above).  Each  case  must  be  tested  and  the  question  of 
actual  independence  decide^. 

Different  species  of  a  generic  invention  are  indepen- 


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Journal  of  the  Patent  Opfioe  Society.         461 

dent  where  they  are  alternative  and  inconsistent  in  use 
or  bear  a  substitutional  relation.  This  does  not  apply- 
where  all  parts  claimed,  although  not  shown  together 
or  necessarily  used  together,  may  be  regarded  or  shown 
as  parts  of  the  same  structure  and  are  adapted  for  sim- 
ultaneous or  concurrent  use.  Ex  parte  Welch,  C.  D. 
1900. 

Division  niust  also  be  required  between  different  de- 
signs, (Beattie,  C.  D.  1879;  Pope,  C.  D.  1883;  Gerard,  C. 
D.  1888),  but  not  between  claims  to  a  design  and  claims 
to  a  mechanical  invention — since  an  application  to  one 
of  these  may  not  be  founded  on  an  application  to  the 
other.    Proudfit,  C.  D.  1876;  Waterman,  C.  D.  1902. 

Improvements  on  inventions  in  the  different  statutory 
classes  are  independent  as  are  improvements  on  inde- 
pendent inventions  in  the  same  dass. 

Certain  other  cases  of  independence  will  be  considered 
later.  Where  the  independence  of  the  inventions  is  clear, 
the  requirement  of  division  must  be  made  under  the  Eule 
as  it  has  existed  for  many  years. 

For  the  further  consideration  it  will  perhaps  be  found 
best  to  consider  the  classes  of  invention  in  order  in  which 
they  are  stated  in  the  statute. 

PROCESSES. 

Bobinson  (473)  says  that  **arts  cannot  be  joined  mere- 
ly because  they  relate  to  the  same  subject  or  can  be  used 
for  the  promotion  of  a  single  ultimate  result.  Either 
must  be  in  its  own  nature  dependent  on  the  other,  or 
taken  together  they  must  constitute  a  combination  pro- 
^'ess  which  is  also  the  subject  matter  of  the  application.'' 

Many  materials  are  subject  to  more  than  one  process 
during  formation  and  these  processes  may  be  wholly  in- 
dependent, or  they  may  be  so  connected  in  the  operation 
and  effect  of  one  on  the  other  that  they  may  be  joined. 
Processes  of  making  dough,  of  forming  it,  and  of  baking 
it,  will  usually  be  unrelated  except  in  the  ultimate  end 
to  be  attained.  Nevertheless  it  may  well  happen  that 
particular  processes  of  forming,  for  example,  ice  cream 
cones  and  baking  them  may  be  so  related  as  to  form  a 
combination  process  and  claims  to  the  subcombinations 
of  forming  and  of  baking  be  so  designed  and  mutually 
adapted  in  the  relation  of  their  several  steps  as  to  be 
retainable  in  one  case. 


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462         Journal  op  the  Patent  Office  Society. 

Questions  of  division  in  process  cases  usually  arise 
between  claims  to  the  general  process  and  to  subcombina- 
tions thereof.  There  is  no  reason  of  which  I  am  aware 
why  the  general  tests  which  apply  in  machine  cases  da 
not  also  apply  here.  Is  the  subprocess  of  a  special  na- 
ture and  practically  useful  only  vnth  the  main  process, 
or  does  it  constitute  in  itself  a  process  capable  of  use 
in  other  relations!  If  the  answer  to  the  first  question  is 
yes,  division  should  not  be  made.  If  the  answer  to  the 
second  is  affirmative  and  if  it  is  further  true,  that  pro- 
cesses of  the  kind  to  which  this  subprocess  belongs  are 
known  as  the  subject  of  invention  and  patenting  so  that 
they  have  a  distinct  status  of  their  own  and  particularly 
if  a  separate  field  of  research  is  involved,  a  division 
should  ordinarily  be  required. 

The  treatment  of  so  called  branching  processes  comes 
under  this  head.  A  process  of  treating  oil  or  felspar 
may  involve  steps  A  B  C  D,  at  which  point  certain  sub- 
stances are  separated,  one  being  treated  by  steps  M  N  O 
and  the  other  by  X  Y  Z.  Either  of  these  groups  may  or 
may  not  be  replaceable  by  other  modes  of  treatment.  If 
M  N  0  is  capable  of  use  whether  the  substance  it  treats 
be  derived  by  A  B  C  D  or  in  another  way  and  if  it  an- 
swers the  other  tests  above  of  a  divisible  sub-process,  it 
should  be  divided  out.  It  may  be,  however,  that  some 
product  at  Y  passes  back  to  C  or  to  N  and  enters  there, 
so  that  the  functional  isolation  of  M  N  0  is  destroyed. 
Where  these  cross  relations  occur  between  the  branches 
it  will  usually  be  found  that  a  unitary  invention  is  pres- 
ent, not  severable,  by  reason  of  the  special  relation  of  the 
branches  of  the  process  to  each  other. 

A.process  and  product  may  be  so  related  that  the  pro- 
cess can  make  nothing  else  and  the  product  be  made  no 
other  way,  the  search  being  one.  These  should  never 
be  divided.  The  product  may  be  made  in  various  ways 
and  the  process  capable  of  producing  simdry  things. 
These  should  be  separated  ordinarily.  If  the  product 
can  be  made  in  no  other  practical  known  way,  it  is  by 
that  fact  entirely  dependent  on  the  process  and  should 
go  with  it  (Robinson,  473).  The  process  may  be  capable 
of  making  only  one  thing  which,  however,  may  be  made 
in  other  known  ways.  A  journal  block  may  be  made  by 
molding,  machining  or  forging  and  I  know  of  no  reason 
why  it  should  be  joined  with  either  of  these.    Where  the 


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Journal  op  the  Patent  Office  Society.         463 

process  can  only  produce  the  product  although  the  latter 
may  be  made  in  other  ways  and  the  field  of  search  is  the 
same,  it  has  been  held  that  division  should  not  be  re- 
quired— see  Adams,  C.  D.  1903,  and  Dallas,  C.  D.  1903. 
This,  however,  does  not  apply  where  the  Office  classifi- 
<^tion  and  search  are  not  the  same. 

Machine  and  Process  may  be  so  intimately  related  that 
the  so  called  process  is  nothing  but  the  functioij  of  the 
machine,  i.  e.,  not  an  invention  at  all  and  hence  not  di- 
visible. On  the  other  hand  the  process  may  be  a  mode 
of  treatment  clearly  distinct  from  the  particular  ma- 
"chine  or  even  from  any  machine  at  all  in  that  it  may  be 
carried  out  by  manipulation.  In  this  case  no  good  reas-  ' 
on  for  joinder  appears  to  exist  and  this  is  particularly 
true  if  the  fields  of  search  diverge  and  a  separate  state 
of  the  art  as  to  each  exists.  Where,  however,  a  depen- 
dence exists  by  reason  of  the  machine  being  the  only 
practically  available  and  known  means  of  practicing  the 
process  they  should  ordinarily  remain  together.  An- 
other means  of  working  the  process  may  appear  or  may 
not  and  the  development  of  the  arts  is  best  served  by 
having  them  in  one  case,  nor  will  their  joinder  burden  the 
•Office  since  the  search  is  the  same.  Robinson  also  states 
that  apparatus  may  be  joined  with  the  process,  the  per- 
formance of  which  is  its  only  use.  A  machine  may  be 
built  to  perform  a  certain  process  and  that  may  be  its 
only  use,  but  this  may  also  be  true  of  half  a  dozen  other 
machines.  Where  a  process  may  be  so  performed  by  sev- 
eral machines,  and  has  a  distinct  place  in  the  arts  and  a 
distinct  field  of  search,  reasons  for  joinder  seem  to  be 
lacking.  See,  however,  Robinson,  473,  and  ex  parte 
Tyne,  C.  D.  1880.  Where  process  and  product  are  de- 
fined in  terms  of  each  other  or  where  process  and  ma- 
<5hine  are  similarly  defined  no  division  ought  to  occur. 
If  that  mode  of  definition  is  proper  or  necessary  in  the 
case,  no  division  can  ever  properly  occur  in  the  case, 
«ince  the  claims  are  expressly  limited  to  a  mutual  de- 
pendence. Such  a  case  occurs  where  a  process  claim 
calls  for  its  performance  by  all  or  certain  elements  of 
the  machine.  Wherever  division  between  process,  pro- 
■duct  and  machine  is  required  the  full  reasons  should  be 
given.  If  the  question  is  important,  for  example,  wheth- 
-er  the  product  can  be  made  in  other  ways,  that  allegation 
should  be  made  and  the  other  ways  stated.    It  is  obvious 


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464        Journal  of  the  Patent  Office  Society. 

that  such  reasons  should  appear  of  record  prior  to  the 
answer  to  an  appeal. 

Process  and  Composition.  In  ex  parte  Tschimer,  C. 
D.  1901,  it  was  held  that  no  authority  warrants  the  re- 
tention in  one  case  of  a  dental  nerve-destroying  oom- 
position  and  the  process  of  using  it  This  was  approved 
in  ex  parte  Stocking,  C.  D.  1902,  in  relation  to  an  account 
book  and  the  method  of  entering.  Since  then  there  have 
been  several  decisions  by  the  Board  of  Examiners-in- 
Chief — see  ex  parte  Whitney,  Vol.  7,  p.  20,  and  ex  parte 
Beltzer,  Vol.6,  p.33 — in  wl^ich  it  was  held  that  if  the  re- 
lation of  a  process  of  using  a  composition  and  the  com- 
position is  this — that  the  composition  has  no  other  use 
than  in  the  process  and  the  process  cannot  be  carried  out 
otherwise,  the  two  should  be  joined.  This  would  accord 
with  the  rule  as  to  process  and  product,  but  if  the  com- 
position has  various  utilities  no  reason  for  joinder  of 
the  composition  with  one  of  its  uses  appears  to  exist  in 
their  nature.  They  should  be  divided  in  such  case  usu- 
ally and  always  if  the  fields  of  search  are  divergent. 

Machines.  Cases  of  division  between  complete  ma- 
chines are  not  frequent.  The  rule  of  the  courts  that 
machines,  kindred  and  auxiliary  in  that  they  are  capable 
of  use  with  one  another  to  effect  one  end,  may  remain 
together,  is  more  restricted  in  the  Office.  If  two  distinct 
machines,  while  contributing  in  common  to  an  ultimate 
end,  have  each  distinct  and  different  proximate  results, 
they  are  not  dependent.  Where,  however,  they  are  con- 
nected in  design  or  operation  or  one  cannot  be  contem- 
plated as  an  operative  instrument  without  the  other  or 
the  use  of  one  involves  the  concurrent  and  cooperating 
use  of  the  other,  they  are  dependent.  Cases  sometimes 
arise  of  systems  of  apparatus  or  machines  where  the  in- 
dividual apparatus  or  machine  bears  to  the  complete  set 
the  relation  of  an  element  or  subcombination  in  a  com- 
bination. In  general  the  principles  that  govern  joinder 
of  an  element  and  combination  may  be  applied  to  such 
cases  and  should  in  such  case  claims  to  a  machine  be  di- 
vided from  other  claims  if  it  is  capable  of  other  uses  and 
belongs  to  a  faiown  type  of  devices. 

Machine  and  Subcombinations,  Probably  more  than 
half  of  all  division  questions  relate  to  combination  and 
subcombination.  For  long  it  was  held  that  when  sub- 
combinations or  elements  were  the  invention  of  one  who 


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Journal  of  the  Patent  Office  Society.         465 

invented  the  principal  combination,  they  might  be  join- 
ed in  one  application  with  the  principal  combination — 
see  Robinson,  472.  This  had,  however,  come  to  be  mod- 
ified by  decisions  such  as  Mansfield  et  al.,  C.  D.  1902, 
Johnson,  C.  D.  1900,  and  Hall  &  Fraser,  C.  D.  1903,  and 
it  is  believed  to  be  the  more  modem  doctrine  and  prac- 
tice that  where  an  element  or  subcombination  which  is 
claimed  in  the  same  case  with  a  combination  of  which  it 
forms  a  part,  even  if  that  combination  be  new,  is  cleariy 
capable  of  use  apart  from  the  combination  and  in  other 
relations  and  not  restricted  in  its  design,  operation  and 
capabilities  to  use  therewith,  and  if  in  addition  there  is 
a  developed  state  of  the  art  in  relation  to  it,  constituting 
a  different  field  of  activity  and  search,  division  may  be 
required  without  awaiting  determination  of  the  novelty 
of  the  combination. 

Great  care,  however,  should  be  used  in  this  type  of 
cases  to  see  that  the  claims  divided  represent  differ- 
ent inventions  and  not  colorably  different  statements  of 
one  and  the  same  thing  and  wherever  any  doubt  exists 
the  requirement  should  be  withheld.  Mansfield's  case 
does  not,  I  take  it,  mean  that  division  must  be,  but  that 
it  may  be  required  before  the  question  of  combination  is 
settled. 

It  has  been  uniformly  held  since  ex  parte  Herr,  C.  D. 
1887,  that  separate  improvements  in  the  various  parts 
of  a  machine  or  process  where  the  general  combination 
is  old  and  the  improvements  contribute  solely  to  the 
betterment  of  the  individual  functions  of  the  parts,  are 
divisible,  if  they  belong  to  classes  of  devices  which  have 
attained  a  distinct  status  in  the  arts  as  evidenced  by  the 
classification  or  fields  of  search.  Ex  parte  Stearnes,  C. 
D.  1890,  Healey,  C.  D.  1898,  and  Pelton,  1901,  are  exam- 
ples of  decisions  on  this  point. 

A  machine  or  tool  may  have  common  parts,  such  as 
operating  means  or  a  holder,  which  serve  as  the  basis  of 
attachment  or  operation  of  any  one  of  several  groups  of 
additional  elements  which  are  substitutional  in  their  re- 
lation to  each  other.  It  is  possible  that  the  machine  or 
tool  may  be.  claimed  i)er  se  with  its  capabilities  .and  also 
in  combination  with  one  group,  if  in  their  own  nature  de- 
pendent, but  claims  to  combination  with  more  than  one 
group  should  not  ordinarily  be  allowed  in  one  case. 

Whenever  a  subcombination  claim  is  found  in  a  case 


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466         Journal  of  the  Patent  Office  Society, 

where  the  combination  in  which  it  occurs  is  also  claimed, 
the  first  question  to  consider  is  whether  the  design  and 
operation  of  the  subcombination  are  specially  limited  or 
adapted  to  use  in  that  combination  or  whether  they  are 
of  a  more  general  nature.  If  of  a  special  character  and 
not  of  general  utility  division  should  not  be  made.  If, 
however,  capable  of  use  in  other  classes  or  types  of  ma- 
.  chines,  the  question  occurs  whether  any  practical  reason 
from  the  Office  standpoint  exists,  in  the  shape  of  a  dif- 
ferent field  of  search  into  a  different  art.  Upon  these 
questions  division  of  a  subcombination  or  element  from 
the  main  combination  will  usually  turn. 

Ma-chine  and  Product.  In  Murray  et  al.,  C.  D.  1873, 
Leggett,  C,  held  that  a  machine  and  product  may  never 
be  claimed  together,  but  in  1874  he  limited  its  application 
in  Birun's  case,  which  claimed  a  die  and  article,  saying^: 

It  cannot  be  ignored  that  there  are  some  cases  where  two 
things  entirely  distinct  are  yet  so  intimately  connected  as  to 
have  been  not  only  one  in  Inception  in  the  mind  of  the  in- 
ventor but  to  be  inseparable  in  practical  use. 

The  discussion  there  exemplifies  well  a  case  of  mold  and 
product  which  recently  occurred.  See  also  ex  parte 
Winterlich,  C.  D.  1879  and  ex  parte  Tyne,  C.  D.  1880. 

Where  the  machine  in  operation  can  only  produce  the 
product  and  its  characteristics  are  directly  related  to 
the  product,  the  two  should  not  be  separated  if  the  pro- 
duct can  only  be  made  by  the  machine.  Cases  of  this 
kind  will  rarely  occur,  machine  and  product  being  in  all 
ordinary  cases  independent  inventions,  and  when  they 
do  occur  it  will  usually  be  found  that  one  claim  is  merely 
a  misstatement  of  the  invention  in  the  other. 

Compositions  and  Siibcomhinations.'  The  principles 
governing  the  inclusion  of  claims  to  the  combinations 
and  subcombinations  of  a  composition  in  one  case  are  not 
different  from  those  applied  to  processes  or  machines. 
Ex  parte  Hentz,  C.  D.  1884,  defined  them  and  overturn- 
ing prior  holdings  that  a  composition  needs  but  a  single 
claim  has  been  affirmed  since  in  several  cases.  The 
claims  were  to  a  curative  compound  per  se  and  associat- 
ed with  an  anodyne  and  it  was  held  that  if  the  claims 
though  distinct  cover  associations  of  elements  which  con- 
tribute to  the  production  of  a  single  beneficial  result 
and  do  not  fall  under  different  classes  **they  cover  but  a 
single  invention."    If  the  essential  elements  of  a  claim 


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Journal  of  the  Patent  Office  Society.         46^. 

are  omitted  in  another  claim  so  that  the  effect  and  oper- 
ation of  the  composition  is  changed,  the  invention  would 
be  a  different  one  and  divisible,  but  the  addition  of  ele- 
ments, as  an  anodyne,  to  the  cure,  or  of  coloring  matter, 
or  an  anitfreezing  element,  which  do  not  effect  the  op- 
erative nature  of  the  composition  ought  not  to  create 
*  opportunity  for  division. 

In  the  above  I  have  endeavored  to  recapitulate  what 
seems  to  me  to  b,e  the  proper  practice  in  certain  types 
of  cases  covering  the  great  majority  of  questions  of  di- 
vision. It  is  as  futile  to  attempt  to  lay  down  hard  and 
fast  rules  in  relation  to  this  subject  as  it  is  to  decide  by 
rule  what  is  an  invention.  In  the  nature  of  things  rules 
fitted  to  inventions  which  are  known  will  not  always 
apply  exactly  to  inventions  which  are  new.  This  has 
been  well  recognized  in  the  decision  of  the  Supreme 
Court  which  requires  the  application  of  the  judgment 
and  discretion  of  the  Commissioner  in  each  case,  instead 
of  the  application  of  a  dried  and  cut  rule.  In  the  appli- 
cation of  that  discretion  (which  is  entrusted  primarily 
to  the  examiner)  the  interest  of  the  inventor  is  a  pri- 
mary consideration,  and  it  would  seem  to  be  consonant 
with  his  interest  and  with  that  of  the  public  to  lay  down 
as  fundamental,  that  division  should  nfever  be  required 
except  where  there  is  more  than  one  real  invention — ^nor 
where  the  issuance  of  patents  along  the  line  laid  down 
would  or  might  raise  a  -serious  question  of  double  pat- 
enting or  between  things  of  such  a  light  nature  as  to 
make  the  requirement  trivial  and,  further,  that  where  a 
case  of  grave  injury  to  the  applicant  may  result  by  in- 
sistence on  division,  it  may  well  be  waived. 

It  is  to  the  public  interest  that  useful  inventions  be 
patented  and  published  but  it  is  not  to  the  public  inter- 
est that  indirect  extension  of  monopoly  occur  by  suc- 
cessive issuance  of  patents,  all  of  which  are  to  parts  of 
the  whole  invention,  and  necessary  to  the  use  of  the  in- 
vention,'and  consequent  hampering  of  the  right  to  use 
effectively  the  invention  of  the  expired  patent.  Such 
conditions  should  be  borne  in  mind  by  the  OflSce  and 
avoided  so  far  as  possible. 


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468         Journal  of  the  Patent  Office  Society/ 

RULE  42. 

This  rule  relates  to  questions  of  practice  under  di- 
vision and  the  decisions  relating  to  these  questions  have 
been  so  fully  collected  and  carefully  treated  by  Mr.  W. 
H.  Whitten  in  paper  55  of  Papers  read  before  the  Exam- 
ining Force  in  1©17  that  it  is  superfluous  to  go  over  the 
ground. 

One  comment  only  on  the  last  sentence  of  the  Rule, 
which  states  that  after  a  final  requirement  of  division 
the  applicant  may  elect  to  prosecute,  etc.  This  presup- 
poses that  applicant  either  complies  with  the  require- 
ment or  traverses  it,  giving  his  reasons  for  traversing 
as  in  other  cases  of  rejection.  The  examiner  may  then 
reconsider  with  a  knowledge  of  applicant's  position  and 
either  withdraw,  modify,  or  affirm  with  the  approval  of 
the  law  examiner.  After  such  affirmance  the  election 
may  be  made  and  become  effective  and  examination  on 
the  elected  branch  proceed. 

It  not  infrequently  happens  that  in  response  to  a  first 
requirement,  an  election  is  made  without  complying  with 
Rule  69  in  pointing  out  the  error  of  the  examiner.  Such 
action  is  not  responsive,  nor  of  a  kind  to  avoid  aban- 
donment. If  the  examiner  disregarding  the  incomplete- 
ness of  the  response,  proceeds,  without  knowing  the  ap- 
plicant's reasons  for  non  compliance,  to  make  the  re- 
quirement of  division  final  and  acts  on  the  elected  branch, 
it  may  well  happen  that,  if  appeal  be  subsequently  taken 
on  the  merits  and  on  division,  the  applicant's  reasons 
for  non  compliance  with  the  requirement  of  division  may 
never  be  of  record  except  in  the  appeal  brief.  No  good 
reason  is  seen  why  a  full  response  is  not  as  necessary  to  a 
rejection  for  improper  joinder  as  any  other  rejection 
and  why  a  failure  to  give  full  response  should  not  lead 
to  a  holding  of  abandonment. 

RULES  43  AND  44. 

In  the  edition  of  the  Rules  dated  December  1,  1879, 
Rule  42  reads  as  follows : 

When  an  applicant  makes  two  or  more  applications  relating 
to  the  same  subject  matter  of  invention,  all  showing,  but  only 
one  claiming,  the  same  thing,  those  not  claiming  it  must  con- 
tain disclaimers  thereof,  with  references  to  the  application 
claiming  it. 
In  the  edition  of  the  Rules  of  April  18,  1888,  Rule  42, 
above,  was  abolished,  the  rules  renumbered  and  present 


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Journal  of  the  Patent  Office  Society.         469 

Rules  43,  44  inserted  in  their  present  form. 

In  ex  parte  Long,  C.  D.  1883,  it  was  held  in  accordance 
with  long  standing  practice  that  "having  described, 
shown  and  claimed  his  invention  in  his  patent,  he  has  no 
right  to  thereafter  file  an  applicatioA  for  subject  matter 
shown  and  described  in  such  patent."  *'Nor  has  he  a 
right  to  reserve  a  portion  of  his  invention  and  after  the 
grant  of  a  patent  claim  in  a  separate  application  such 
reserved  portion."    See,  also,  ex  parte  Rohn,  C.  D.  1883. 

In  Derby,  C.  D.  1884,  it  was  ruled  that  for  matter 
shown  but  not  claimed  in  a  patent,  a  reservation  clause 
coupled  with  diligence  in  filing  a  subsequent  application, 
would  overcome  the  presumption  of  abandonment. 

In  ex  parte  Roberts,  C.  D.  1887,  it  is  pointed  out  that 
part  of  an  indivisible  invention  cannot  be  saved  for  fu- 
ture patenting  by  reservation,  but  that  it  is  otherwise 
with  reference  to  a  divisible  invention  if  a  copending  ap- 
plication therefor  be  made,  or  if  a  reservation  of  the 
divisible  matter  be  made  and  the  second  application  filed 
promptly. 

In  ex  parte  Blair,  March  24,  1888,  C.  D.  1888,  C.  Hall 
held  that  if  the  inventions  are  properly  divisible,  appli- 
cants rights  to  the  one  not  claimed  in  the  case  in  ques- 
tion were  safe  without  reservation  or  if  not  so  he  could 
in  any  case  have  a  concurrent  application,  and  expressed 
his  opinion  that  the  rule  should  forbid  reservations.  Fol- 
lowing this  in  the  Rules  of  April  18,  1888,  present  Rule 
44  was  inserted.  A  reservation  cannot  save  for  future 
application  a  thing  which  is  indivisible  from  that  patent- 
ed, nor  is  it  necessary  to  save  a  thing  which  is  clearly 
divisible.  It  therefore  becomes  useless  and  being  deter- 
rent and  confusing  to  the  public  and  having  no  relation 
to  the  thing  claimed  is  rightly  forbidden.  The  modern 
doctrine  in  respect  to  dedication  of  matter  disclosed  but 
not  claimed  in  an  application  is  found  in  ex  parte  Mullen 
and  Mullen,  C.  D.,  1890. 

Ex  parte  Blair  upholds  the  necessity  for  cross  refer- 
ence to  a  concurrent  application  claiming  matter  shown 
and  described  in  the  other  case  but  not  claimed.  Such  ref- 
erence should  be  explicit,  giving  date  and  number,  so  that 
persons  interested  in  the  patent  issued  may  ascertain  by 
inquiry  where  the  application  referred  to  is  and  what  it 
contains  and  claims.     Ex  parte  Finch,  C.  D.  1884.     A 


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470         Journal  of  the  Patent  Office  Society. 

mere  reference  to  the  number  and  date  of  the  applica- 
tion is,  however,  not  sufficient — the  reference  must  im- 
part a  more  or  less  definite  nature  of  the  scope  of  mat- 
ter in  the  application  referred  to.  Ex  parte  Everitt,  C. 
D.  1889. 

The  cross  reference  cannot  be  used  to  supplement  or 
take  the  place  of  a  fuU  description  of  the  machine  claim- 
ed in  the  case  embodying  the  reference.  Ex  parte  Borg- 
f eldt,  C.  D.  1889,  and  ex  parte  Chadwick,  C.  D.  1891. 

The  importance  of  cross  references  is  very  great  and 
Rule  43  should  be  invariably  and  rigidly  observed. 

The  provisions  of  Rule  45  are  for  the  most  part  self- 
explanatory.  The  requirement  as  to  the  interlineations 
and  erasures  is  necessary  in  order  that  it  may  be  clear 
that  the  application  as  filed,  including  all  changes,  has 
been  applied  for  by  the  inventor  and  been  declared 
to  be  his  invention,  and  the  prerequisite  oath  with  refer- 
ence to  the  disclosure  as  interlined  taken. 


OF  PERSONAL  Iin*EREST. 

— 1^— 

Resignations  of  the  following  assistant  examiners 
within  the  past  two  months  to  take  more  advantageous 
positions  indicate  revival  of  business  and  emphasize  the 
need  of  higher  salaries  to  keep  experienced  examiners 
in  the  corps. 

Nathan  Comstock,  Ist  Asst.  Examiner. 
Hadley  Freeman,  2nd  Asst.  Examiner. 
P.  C.  Smith,  Ist  Asst.  Examiner. 
A.  A.  Smith,  2nd  Asst.  Examiner. 
Donald  H.  Sweet,  3rd  Asst.  Examiner. 
W.  W.  Seals.  4th  Asst.  Examiner,  Temp. 
John  W.  G-arner,  4th  Asst.  Examiner,  Temp. 
Alfred  T.  Hyde,  4th  Asst.  Examiner,  Temp. 

Primary  Examiner  Lioren  A.  Sadler,  formerly  in 
charge  of  Div.  12,  resigned  on  March  12  on  account  of 
impaired  health.  In  this  the  Office  loses  a  very  capable 
Division  Chief,  universally  liked  and  respected. 

Primary  Examiner  Thurber  has  in  his  possession  two 
patents  of  particular  value  as  keepsakes  because  they 
were  granted  to  his  grandfather,  Hezekiah  Thurber,  bnt 
which  are  also  of  great  interest  because  of  the  notable 
signatures  they  bear.  The  earlier  grant  was  made  on 
May  22,  1828,  and  is  signed  by  President  ''J.  Q.  Adams" 


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JOUBKAL  OF  THE  PaTENT  OfFICB  SoCIETY.  471 

and  attested  by  ''H.  Clay"  as  Secretary  of  State.  ^  It 
was  certified  to  as  '* conformable  to  law"  by  **Wm. 
Wirt,"  Attorney  General  of  the  United  States.  The  pat- 
ent was  for  a  Machine  for  Cutting  Pegs.  The  second 
patent,  granted  on  April  22,  1830,  was  for  a  machine  for 
washing  clothes.  It  has  a  large  bold  signature  of  Presi- 
dent '* Andrew  Jackson,"  attested  by  ''M.  Van  Buren,*^ 
Secretary  of  State.  The  certificate  of  the  Attorney  Gen- 
eral is  over  the  carefully  written  signature  of  **John 
Macpherson  Berrien." 

The  patent  grants  are  in  manuscript  on  heavy  parch- 
ment. They  were  issued  under  the  old  laws  and  have  no 
concluding  claims.  The  first  patent  is  without  a  draw- 
ing, but  the  second  has  a  drawing  made  by  C.  M.  Keller, 
one  of  the  Patent  Office  draftsmen.  The  single  figure  of 
the  drawing  is  neatly  lettered  and  through  the  use  of  sev- 
eral tones  and  colors  of  water-color  wash  is  given  an  ar- 
tistic finish  not  found  in  the  drawings  of  the  present  day. 

An  endorsement  on  each  of  the  patents  is  reminiscent 
of  the  Patent  Office  fire  of  December  15,  1836,  it  setting 
forth  that  the  patent  was  * '  Received  5  August,  1837,  and 
recorded  anew  in  this  Office.  Henry  Ellsworth,  Commis- 
sioner *of  Patents." 

Former  First  Assistant  Examiner  Charles  W.  Powers 
resigned  from  the  Office  March  15th  and  his  death  from 
complications  following  influenza  occurred  a  few  days 
later.  Mr.  Powers  was  appointed  from  Vermont  Oct.  1, 
1908  and  was  promoted  through  the  grades,  reaching 
that  of  First  Assistant,  Oct.  16,  1917.  Except  for  some 
months  in  1914  when  he  was  in  the  Classification  Divi- 
sion, and  his  last  few  months'  service  in  Division  16,  he 
was  connected  with  Div.  4.  He  was  always  highly  es- 
teemed as  most  efficient  and  capable,  the  character  of  his 
work  exciting  attention  for  its  thoroughness  and  quality. 

A  SPECIFICATION  OF  APPRECIATION. 


To  all  Whom  It  May  Concern : — 

Be  it  known  that  I,  Phil  J.  Nawn,  a  citizen  of  the  Unit- 
ed States,  residing  at  Milwaukee,  in  the  County  of  Mil- 
waukee, and  State  of  Wisconsin,  have  discovered  a  new 


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472         Journal  of  the  Patent  Office  Society, 

and  valuable  element  intended  to  lend  desirable  aid  to 
all  who  are  professionally  interested  in  Patents  and  the 
procuring  of  the  same. 

My  discovery,  more  particularly,  refers  to  a  means 
whereby  a  minimizing  is  brought  about  of  that  friction 
which  sometimes  occurs  between  a  certain  element,  with- 
out the  Patent  Office,  and  a  body,  erroneously  considered 
antagonistic,  holding  forth  wdthin. 

Referring  to  the  drawings : — 

Figure  1.  is  a  P.  0.  order  for  $2.50  and  is  a  true  sec- 
tion taken  from  the  postmaster's  ''stub*'  and  Figure.  2 
is  a  properly  filled  out  subscription  blank  giving  iden- 
tifying and  locating  diagrams. 

Further  reference  to  the  drawings  discloses  in  Fig.  1 
a  means  whereby  applicant  hopes  to  receive,  each  month, 
the  ''Journal  of  the  Patent  Office  Society''  delivered  as 
indicated  on  the  said  diagrams  in  Fig.  2  and  prays  that 
his  surname,  along  with  such  prefixes  as  will  distinguish 
the  same  from  "Bill  Jones,"  be  emblazoned  across  the 
"tome  of  subscribers,"  there  to  remain  for  a  twelve 
month  or  longer,  providing,  of  course,  that  a  correspond- 
ing drawing  be  furnished  for  similar  filing  upon  due 
notice  of  such  requirement. 

Having  described  my  discovery,  what  I  wish  to  claim, 
is : — 

1.  The  pleasure  of  reading  during. the  month  some- 
thing about  which  I  am  daily  interested  in. 

2.  The  successful  issue  of  a  venture  which  will  aid 
in  bridging  a  gap  that  has  iDng  been  a  chasm  of  misun- 
derstanding. 

Tours  for  prosperity, 

[l.  s.]  Phil  J,  Nawn, 

Patent  Expert,  Bucyrus  Company. 
Milwaukee,  Wis.,  11-23,  1918. 

FOR  IMMEDIATE  SALE 

OFFICIAL  GAZETTES  AND  ANNUAL  INDEXES. 

I — Gazettes — 1891  through  1900  bound;  through  1907  unbound. 
II — Gazettes  and  Indexes — 1906  and  1907  unbound. 
Ill — Indexes — 1872  through  1911  bound. 

Address: 

O.  F.  DeWEIN,       Post  Box  1580,       MUwankee,  Wis. 


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Journal 

OF  THE 

Patent  Office   Society 


Pablished  monthij  by  the  Patent  Office  Societj 

Office  of  Pablication  1315  Clifton  St.,  Washington,  D.  C. 
zSnbeciipdon  $2010  a  year  Single  copy  86  oenfs 

BDrrORIAIi  BOARD. 

E.  D.  Sevall,  Chairman,  Publicity  Committee. 

'O.  P.  Tucker,  Bditor-ln-Chief. 

J.  Boyle. 

A.  W.  Dayidson. 

W.  I.  Wyman. 

W.  J.  Wesseler,  BueinesB  Manager,  (Room  212,  U.  S.  Patent  Office,) 

1315  Clifton  Street,  Washington,  D.  C.     Phone  Col.  290. 
.N.  E.  Ecdeston,  Circulation. 

Entered  as  second  class  matter.  September  17.  191S,  at  the  poet 
at  Washington,  D.  C,  under  the  act  of  March  S.  1S79. 
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. JUNE,  1919. No.  10. 

EDITORIAL. 


The  Patent  Office  Society  in  furtherance  of  its  desire 
to  support  in  every  way  that  comports  with  official  pro- 
priety the  measures  to  improve  the  Patent  Office  and 
patent  system,  proposed  by  the  Patent  Committee  of  the 
National  Eesearch  Council,  has  undertaken,  under  the 
•direction  of  a  sub-committee  of  its  Publicity  Committee, 
a  campaign  to  give  wide  publicity  to  the  needs  of  the 
Patent  Office  and  the  legislation  proposed. 

Letters  and  pamphlets  have  been  mailed  to  over  fifty 
thousand  persons  in  the  United  States  directly  interest- 
■ed  in  patents  and  the  patent  system.  Included  in  this 
number  are  over  eleven  hundred  heads  of  manufactur- 


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474         Journal  of  the  Patent  Office  Society. 

ing  concerns.  >These  pamphlets  comprise  the  speech  of 
former  Commissioner  Swing,  delivered  before  the  At- 
lantic City  War  Industries  and  Reconstruction  Confer- 
ence, Dec.  3,  1918 ;  a  pamphlet  setting  forth  the  needs  of 
the  Patent  Office  and  explaining  the  measures  proposed 
by  the  Patent  Committee,  and  a  pamphlet  giving  a  short 
account  of  the  historv  and  organization  of  thuB, Patent 
Office.  '  ' 

Letters  accompanied  the  pamphlets,  pointing  out  that 
if  the  average  member  of  Congress  were  aware  of  exist- 
ing conditions  in  the  Patent  Office,  there  is  not  the  least 
doubt  but  that  he  would  be  glad  to  aid  in  the  passage  of 
the  legislation  needed  for  its  relief. 

In  addition,  a  circular  letter  has  been  sent  to  nearly 
eleven  thousand  daily  or  weekly  newspapers  and  trade 
journals  throughout  the  country.  This  letter  epitomizes 
the  report  of  the  Patent  Committee,  emphasizes  the  lack 
of  adequate  appropriations  by  Congress  for  the  support 
and  growth  of  the  Office,  and  asks  the  support  of  the 
Press  in  the  campaign  of  education. 

That  this  campaign  of  the  Society  has  involved  con- 
siderable work,  is  obvious;  it  is  desired  to  state  that 
practically  all  members  of  the  Society  have  assisted  and 
cheerfully  devoted  their  evening  hours  to  the  prepara- 
tion of  mailing  lists  and  Ihe  other  necessary  clerical 
work. 

Note  is  made  at  this  time  of  these  activities  of  the 
Patent  Office  Society  that  it  may  be  shown  how  deeply 
and  personally  interested  the  members  of  the  Society 
are  in  the  well  being  of  the  Patent  System.  Further 
comment  seems  unnecessary. 


*' Section  440  specifies  the  salaries  of  these  officers 
(Patent  Office  officials).  Sec.  478  provided  a  seal.  Sec. 
486  creates  a  scientific  library.  Sees.  489  and  496  relate 
to  printing  and  disbursements.  While  there  are  num- 
erous other  provisions  for  the  conduct  of  the  Office,  they 
need  not  be  quoted  here. 

*'No  writer  on  the  subject  of  patents  would  do  his  full 
duty  who  did  not  raise  his  voice  in  solemn  protest  against 
the  present  inefficient  provision  made  by  Congress  for 
the  needs  of  the  Office." — Macomber's  Fixed  Law  of 
Patents :  2nd  Ed.,  1912,  p.  716. 


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Francis  W.  H.  Clay 

Assistant  Commissioner  of  Patents 

Born  Feb.  9, 1869 

Died  May  10, 191%igi,i,3dbyGoogIe 


JOUBNAL  OF  THE  PaTBNT  OfFIOB  SoOIBTY.  475 

FEANOIS  W.  H.  CLAY. 


Assistant  Commissioner  Francis  W.  H.  Clay  died  of 
pneumonia  May  10,  1919,  at  his  home  in  Cleveland  Park, 
Washington,  D.  C,  after  a  brief  illness.  His  death  came 
as  a'  distinct  shock,  as  very  few  of  his  friends  and  asso- 
ciates were  aware  of  the  critical  nature  of  his  sickness. 

Mr.  Clay  was  born  at  Richmond,  Madison  County,  Ken- 
tucky, Feb.  9,  1869,  and  was  a  grandson  of  Gen.  Cassius 
M.  Clay,  who  waB  a  nephew  of  Henry  Clay,  and  ambasso- 
dor  to  Russia  during  Lincoln  ^s  administration.  Mr.  Clay, 
after  receiving  his  early  education  in  Kentucky,  spent 
several  years  at  Ann  Arbor,  Michigan,  attending  the 
university  there,  and  later,  he  went  to  Cornell,  where  he 
graduated  as  an  electrical  engineer  in  1893.  He  fitted 
himself  further  for  his  future  career  by  pursuing  an 
extended  legal  course  of  study,  obtaining  the  degrees  of 
L.  L.  B.,  L.  L.  M.,  and  M.  P.  L. 

He  was  appointed  to  the  Patent  Office  as  an  assistant 
examiner  April  30,  1898  and  resigned  in  1900  to  enter 
upon  the  practice  of  patent  law  in  Cincinnati.  He  re- 
moved to  Pittsburgh  in  1902,  where  he  practiced  his  pro- 
fession until  he  was  appointed  Assistant  Conunissioner 
of  Patents,  July  19,  1916.  He  was  not  only  engaged  in 
highly  important  cases  as  an  attorney,  but  found  time 
and  occasion  to  create  and  patent  several  inventions, 
among  which  may  be  noted  a  very  unique  device  whereby 
a  pencil  of  reflected  light  is  guided  by  a  vibrating  dia- 
phragm over  a  sensitized  surface  to  produce  sound  rec- 
ords, the  object  being  to  produce  a  line  record  *' without 
the  use  of  any  tools  or  other  instrumentality  than  chem- 
ical agents." 

It  was  in  Pittsburgh  that  Mr.  Clay  met  Miss  Jane 
Watson  of  Frankfort,  Kentucky,  to  whom  he  was  later 
married.  He  leaves  a  bereaved  widow  and  five  children. 
Two  brothers  and  his  mother  survive,  the  latter  being  in 
her  eighty-fifth  year. 

The  most  noted  litigation  Mr.  Clay  was  connected  with  ' 
was  the  suit  involving  the  validity  of  the  reissue  of  the 
original  Marconi  wireless  patent.    With  F.  W.  Winter 
of  Pittsburgh  and  Melville  Church  of  Washington,  D. 
•C.,  he  was  of  counsel  for  the  defendant  in  the  famous 


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476  JOUBNAL  OF  THE  PaTBKT  OfFICB  SodBXlT. 

•case  of  Marconi  Wireless  Tel.  Co.  v.  National  Electric 
Signal  Co.  (213  F.  R.,  815)  where  there  were  spread  oa 
the  record  a  brilliant  and  remarkably  comprehensive  re- 
^ew  of  the  art  and  history  of  the  scientific  development 
of  the  ** Hertzian  wave''  theory. 

Assistant  Commissioner  Clay  created  an  indelible  im- 
pression upon  the  0£Sce  in  tiie  administration  of  his 
7)osition.  His  attitude  towards  the  inventor  was  liberal, 
but  always  with  an  eye  on  the  rights  of  the  public.  He 
knew  well  the  underlying  justification  of  the  patent  law, 
its  relation  to  industry  and  the  need  for  a  generous  but 
•careful  application  of  its  principles.  In  his  solicitation 
to  assist  the  inventor  in  obtaining  all  that  he  is  entitled 
to,  in  his  efforts  to  impress  the  principle  that  the  patent 
dshall  explicitly  delineate  the  invention,  and  in  his  desire 
to  emphasize  that  confusion  and  obscurity  shall  be  ex- 
cluded from  the  instrument,  he  let  not  the  dead  hand  of 
any  devitalized  precedent  stay  him  from  pursuing  the 
path  leading  to  an  equitable  goal.  Always  was  he  search- 
mg  for  the  fundamental  consideration,  and  resting  his 
reasons  on  the  ever-present,  living  basic  law.  This  atti- 
tude and  method  of  approach  is  amply  illustrated  in  his 
well-known  decisions — ex  parte  Brown,  235  O.  G.,  1355, 
and  ex  parte  Jepson,  243  0.  G.,  525.  In  both  of  these 
•decisions,  involving  a  delineation  of  the  claim,  there  is 
not  only  exhibited  an  exhaustive  history  of  the  laws  and 
decisions  governing  the  merits  of  the  question,  but  there 
is  considerable  breaking  of  new  ground  and  a  freshness 
of  treatment  that  is  unusually  stimulating.  He  was  not 
an  iconoclast,  his  attitude  was  always  constructive,  bnt 
to  arrive  at  a  sound  conclusion  he  never  feared  to  utilize 
unique  methods  nor  to  depart  from  time-honored,  con- 
ventional conclusions. 

In  his  two  addresses  before  the  Examining  Corps 
(published  respectively  in  the  Scientific  American  Sup- 
plement of  Feb.  9,  1918,  and  the  Journal  of  the  Patent 
Office  Society  of  Sept.  1918)  he  showed  similar  quali- 
ties of  mind.  His  searching  power  of  analysis,  his  abil- 
ity to  visualize  a  situation  in  happily  chosen  language, 
and  the  philosophical  character  of  his  outlook  were  here 
<5haracteristically  displayed  and  well  proclaimed  the  in- 
tellectual man. 

Mr.  Clay^s  relation  to  the  Examining  Corps'  was  of 


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Journal  of  the  Patbnt  Office  Sogiety.        477 

intimate  and  friendly  character,  and  based  upon  com- 
plete understanding  and  sympathy.  He  was  in  complete 
accord  with  th^ir  aspiraHioit)^  towards  establishing  a 
more  efficient  Patent  Office^  for  increasing  its  dignity,, 
and  making  association  therewith  the  opportunity  for  an. 
honorable  and  permanent  career.  In  the  death  of  Mr. 
Clay,  cut  off  in  the  prime  of  his  powers,  the  employees 
of  the  Patent  Office,  his  associates,  and  the  Patent  Office 
Society  feel  that  they  have  lost  a  friend  and  a  strong  in- 
fluence for  good.  W.  I.  W. 


RESOLUTIONS  OF  THE  PATENT  OITIOE  RELA- 
TIVE TO  THE  DEATH  OF  HONORABLE 
FRANCIS  W.  H.  CLAT. 

—Hi- 
lt is  with  keen  regret  aad  profound  sorrow  that  the 
Patent  Office  records  the  death  of  Hon.  Francis  W.  H. 
Clay,  Assistant  Commissioner  of  Patents,  which  occurred 
on  May  10,  1919. 

Mr.  Clay  was  born  in  Eichmond,  Kentucky  in  Febru- 
ary, 1869,  of  distinguished  lineage.  His  career  during 
his  fifty  years  of  life  was  one  which  reflects  honor  aad 
credit  to  him  and  is  remembered  by  his  friends  and  asso- 
ciates with  the  highest  regard  and  esteem,  and  as  an  in- 
spiration in  days  to  come. 

He  was  a  man  of  unusual  attainments,  of  charming 
personality  and  one  whose  companionship  was  not  only 
a  joy  but  uplifting  and  worthy.  He  was  a  man  of  up- 
right character  and  integrity,  true  to  himself  and  ta 
those  with  whom  he  came  in  contact,  proving  so  well  the 
worth  of  Polonius's  advice  to  his  son:  **This  above  all; 
to  thine  own  self  be  true,  and  it  must  follow,  as  the  night 
the  day,  thou  canst  not  then  be  false  to  any  man." 

Mr.  Clay's  service  in  the  Patent  Office  was  of  great 
value,  and  his  loss  is  mourned  by  all  officials  and  assod- 
atts.    Be  it,  therefore. 

Resolved,  That  in  the  death  of  Francis  W.  H.  Clay 
the  Patent  Office  has  lost  one  of  its  most  estimable  and 
able  officers,  and  all  those  who  knew  him  a  staunch  and 
valued  friend;  Be  it,  further, 

Resolved,  That  to  his  bereaved  widow  and  family 
the  Office  extends  its  profound  sympathy. 


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478"  JOUBNAL  OF  THE  PaTENT  OfFICB  SoCIETY. 

DEPARTMENTAL  EXHIBIT. 

— m—    ■ 

An  interesting  example  for  all  the  Government  De- 
partments to  follow  was  set  by  the  opening  on  May  19th 
by  the  Secretary  of  the  Interior  of  a  departmental  expo-^ 
sition  in  the  main  corridor  of  the  new  Department  of  the 
Interior  Building,  continuing  to  May  31st. 

The  exposition  was  designed  to  be  educational  in  na^ 
ture;  exhibits  from  each  Bureau  were  selected  or  pre- 
pared that  would  best  show  the  intimate  relations  be- 
tween the  work  of  the  several  Bureaus  and  the  daily  life 
and  progress  of  the  people  of  the  United  States.  WhUe 
the  exhibits  of  the  other  Bureaus  were  most  creditable 
and  interesting,  space  affords  opportunity  for  a  review 
only  of  the  Patent  Ofl&ce  display. 

This  OflSce  was  given  a  liberal  assignment  of  space  and 
under  the  eflScient  management  and  untiring  labors  of  a 
committee  headed  by  Chief  Clerk  Coulston  and  Dr.  E. 
A.  Hill,  a  showing  of  the  work  of  the  OflSce  and  its  im- 
portant bearing  on  the  industrial  life  of  the  nation  was 
made  that  can  not  fail  to  help  materially  in  the  adver- 
tisement of  the  vital  importance  of  maintaining  and  im- 
proving the  patent  system. 

The  work  of  the  OflSce  was  exemplified  by  samples  of 
applications,  amendments,  OflSce  actions,  etc.;  an  inter- 
esting showing  of  colored  drawings  formerly  used  with 
applications  and  a  specimen  of  the  modem  style  of 
drawing;  examples  of  the  patents  issued  by  twelve  for- 
eign nations ;  a  case  of  ancient  scientific  books  to  illus- 
trate, it  is  presumed,  the  search  work  through  publica- 
tions ;  a  copy  of  the  most  voluminous  patent  issued,  the 
Paige  Type  Handling  Machine  patent,  with  its  48  pages 
of  printed  description  and  its  471  figures,  and  by  its 
side,  for  comparison,  a  short  design  patent  where  the 
description  and  drawing  are  both  on  one  page;  samples 
of  all  OflSce  publications. 

The  attention  of  the  visitor  was  repeatedly  directed 
to  the  important  bearing  that  patented  inventions  have 
on  the  industrial  life  of  the  nation,  by  large  conspicuous 
sign  cards  carrying  pithy  slogans,  certainly  a  telling 
feature. 

But  the  most  interesting  part  of  the  exhibit  was  un- 
doubtedly the  collection  of  models  arranged  in  glass- 


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JouBNAii  OF  THE  Patbnt  Opficb  Sooibtt.         47^ 

cases.  Each  case  included  models  of  machines  in  a  par- 
ticular art  comprising  steam  engines,  fire  arms,  print- 
ing presses,  textile  machines,  electric  telegraphs,  and 
harvesting  machinery ;  the  models  in  the  last  group  were 
furnished  by  the  International  Harvester  Co.  There 
was  also  a  collection  of  coal  tar  products  in  a  separate 
case.  The  models,  excepting  the  harvesters,  and  cases 
have  been  stored  and  exhibited  during  recent  years  in 
the  National  Museum;  it  is  a  great  pity  that  they  can 
not  be  put  on  exhibit  in  the  Patent  Office  itself,  as  form- 
erly, but  lack  of  space  forbids.  They  exercise  a  potent 
stimulating  effect  on  invention  which  is  largely  lost  by 
their  separation  from  the  Patent  Office.  In  addition  to 
the  models  in  cases  there  were  full-sized  exhibits  of  a 
400  H.  P,  Liberty  Motor  from  Boiling  Field,  a  collection 
of  artificial  limbs  loaned  by  the  manufacturers,  a  Brown- 
ing machine  gun  and  a  working  example  of  the  auto- 
matic telephone  exchange  in  use  in  the  City  Post  Office 
in  Washington.  These,  of  course,  appealed  to  everyone 
and  contributed  largely  to  the  popularity  of  the  expo- 
sition. 

Demonstrators  from  the  Patent  Office  force  were  on 
hand  each  afternoon  and  evening  to  explain  the  exhibits 
and  their  help  should  not  be  overlooked. 

This  venture  of  the  Interior  Department  makes  very 
plain  the  desirability  of  establishing  in  Washington  a 
permanent  exposition  of  governmental  activities  which 
shall  serve  to  educate  the  people  as  to  what  the  Depart- 
ments are  doing  to  serve  the  best  interests  of  the  people 
at  large. 

RULES  46,  47  AND  48. 

— lii— 
By  T.  a.  Hostetler,  Law  Examiner. 
—m—  ■ 
Rule  46. 

The  applicant,  if  the  inventor,  must  make  oath  or  affirmation 
that  he  does  verily  believe  himself  to  be  the  original  and  first 
inventor  or  discoverer  of  the  art,  machine,  manufacture,  com- 
position, or  improvement  for  which  he  solicits  a  patent;  that 
hQ  does  not  know  and  does  not  believe  that  the  same  was  ever 
known  or  used  before  his  invention  or  discovery  thereof,  and 
shall  state  of  what  country  he  is  a  citizen  and  where  he  re- 


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480  JOXTBNAL  OP  THE  PaTBNT  OfFIOB  SoGIBTT. 

Sides,  and  whether  he  is  a  sole  or  joint  inyentor  of  the  inyea- 
tion  claimed  in  his  application.      In  every  original  application 
the  applicant  must  distinctly  state  under  oath  that  to  the  beat 
of  his  knowledge  and  belief  the  inyention  has  not  been   in. 
public  use  or  on  sale  in  the  United  States  for  more  than  two 
years  prior  to  his  application,  or  patented  or  described  in  any 
printed  publication  in  any  country  before  his  invention  or  more 
than  two  years  prior  to  his  application,  or  patented  in  any- 
foreign  country  on  an  application  filed  by  himself  or  his  legal 
representatives  or  assigns  more  than  twelve  months  prior  ta^ 
his  application  in  this  country.     If  any  application  for  patent. 
has  been  filed  in  any  foreign  country  by  the  applicant  in  this 
country,  or  by  his  legal  representatives  or  assigns,  prior  to  his- 
application  in  this  country,  he  shall  state  the  country  or  coun- 
tries in  which  such  application  has  been  filed,  giving  the  date 
of  such  application,  and  shall  also  state  that  no  application 
has  been  filed  in  any  other  country  or  countries  than  those 
mentioned,  and  if  no  application  for  patent  has  been  filed  in 
any  foreign  country,  he  shall  so  state.    This  oath  must  be  sub- 
scribed to  by  the  afllant. 

If  the  application  be  made  by  an  executor  or  administrator 
of  a  deceased  person  or  the  guardian,  conservator,  or  repre- 
sentative of  an  insane  person,  the  oath  shall  allege  the  relation- 
ship of  the  affiant  to  the  inventor  and,  upon  information  and 
belief,  the  facts  which  the  inventor  is  required  by  this  rule  to 
make  oath  to. 

The  Commissioner  may  require  an  additional  oath  in  cases- 
where  the  applications  have  not  been  filed  in  the  Patent  Office 
within  a  reasonable  time  after  the  execution  of  the  original 
oath. 

The  foundation  for  Rules  46  and  47  are  found  in  Sec- 
tions 4892,  4888,  4887,  4896,  Revisted  Statutes,  in  the  or- 
der mentioned. 

The  first  statutory  requirement  is  that  **the  applicant 
shall  make  oath  that  he  does  verily  believe  himself  to  be 
the  original  and  first  inventor." 

Neither  the  Statutes  nor  Rules  make  any  provision  for 
the  filing  of  an  oath  to  an  application  by  any  party  other 
than  the  inventor  so  long  as  he  is  alive  and  sane  (ex  parte^ 
Stevens,  59  0.  G.,  229;  1892,  C.  D.,  87). 

Joint  applicants  may  execute  separate  oaths  (ex  parte- 
Wellman,  88  0.  G.,  2065;  1899  C.  D.,  176).  If  only  one^ 
signs,  the  application  is  incomplete,  but  it  is  no  estoppel, 
against  filing  a  correct  oath  ((Eohler  v.  Kohler  and 
Chambers,  43  0.  G.,  247;  1888  C.  D.,  19).    Erroneous  al- 


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JOUBKAL  OF  THE  PaTBNT  OpFICB  SoCIBTT.  481 

legation  as  to  sole  or  joint  invention  is  not  perjnry  (Pat- 
terson V.  U.  S.,  181  F.  R.,  970). 

K  an  inv^itor  dies  or  becomes  insane,  Sec.  4896,  R. 
S.,  provides  that  his  executor,  or  administrator,  or  his 
guardian  or  representative,  as  the  case  may  be,  may 
make  application  and  make  the  required  oath,  properly 
varied  in  form,  that  it  can  be  made  by  him. 

The  second  requirement  is  that  he  shall  make  oath 
^'that  he  does  not  know  and  does  not  believe  that  the 
same  was  ever  before  known  or  used/^  The  allegation 
^'that  he  does  not  know*'  without  the  allegation  as  to 
^'belief*'  is  insufficient  {ex  parte  Buddington,  84  0.  G., 
1728;  1898  C.  D.,  184),  and  vice  versa,  an  allegation  as  to 
** belief^'  without  an  allegation  as  to  '^knowledge''  is 
not  a  compliance  with  the  statutes  {ex  parte  Nicholson, 
96  0.  G.,  1035;  1901  C.  D.,  86). 

The  expression  **ever  before  known  or  used"  has  ref- 
erence to  the  time  of  invention  and  not  to  the  date  of 
filing  {ex  parte  Rowan,  22  0.  G.,  1037;  1882  C.  D.,  12), 
and  the  third  requirement  is  **  shall  state  of  what  coun- 
try he  is  a  citizen.'' 

Under  the  present  statutes  the  statement  as  to  citizen- 
ship is  of  no  particular  importance,  but  under  the  Patent 
Act  of  1836,  5  Stat  at  Large  117,  119,  the  patent  fee 
payable  by  a  citizen  or  a  person  who  had  declared  him- 
self to  become  a  citizen,  was  $30,  whereas  an  alien  was 
required  to  pay  at  least  $300,  and  if  a  British  subject, 
^00.  A  patent  obtained  by  a  fraudulent  statement  of 
citizenship  in  order  that  the  $30  fee  should  be  accepted, 
while  this  statute  was  in  force,  was  held  invalid  (Child 
T.  Adams,  I  Fisher,  189;  Fed.  Cas.  No.  2673). 

The  Patent  Act  of  1870  abolished  all  such  discrimina- 
tion against  aliens  in  respect  to  the  grant  of  letters  pat- 
ent and  therefore  the  same  necessity  for  correct  state- 
ment of  citizenship  no  longer  exists  as  is  evident  from 
the  decision  in  Tonduer  v.  Chambers,  37  Fed.  Rep.,  333 ; 
46  0.  G.,  110,  in  which  a  patent  was  held  valid  although 
the  applicant,  apparently  with  no  intent  to  deceive,  mis- 
stated his  citizenship. 

Where  the  oath  does  not  state  the  inventor  ^s  citizen- 
ship, but  states  that  he  has  declared  his  intention  of  be- 
-coming  a  citizen  of  the  United  States,  the  oath  is  defec- 
tive and  a  new  oath  is  required  {ex  parte  Rhodes,  105  O. 


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482-        Journal  of  the  Patent  Office  Society. 

a,  1261;  1903  C.  D.,  257).  Where  the  oath  states  that 
the  inventor  is  not  a  citizen  of  any  country,  it  was  held 
to  be  a  proper  compliance  with  the  requirements  of  Sec- 
tion 4892,  R.  S.,  as  the  section  should  not  be  construed 
as  requiring  citizenship  of  some  country  as  a  condition 
precedent  to  the  grant  of  a  patent  {ex  parte  Benecke, 
126  0.  G.,  3423;  1907  C.  D.,  66). 

The  provisions  of  Rule  46  should  be  strictly  followed. 
To  rule  otherwise  would  cause  endless  confusion  in  de- 
termining whether  or  not  the  language  chosen  by  the 
applicant  in  his  oath  was  sufficient  to  comply  with  the 
requirements  of  the  statutes  {ex  parte  Thorsten  von 
Zweibergk,  110  0.  G.,  859;  1904  C.  D.,  176). 

A  patent  which  is  not  supported  by  the  oath  of  the  in- 
ventor, is  unauthorized  by  law  and  void  and  whether 
taken  out  in  the  name  of  the  applicant  or  of  any  assi^ee 
of  his,  confers  no  rights  as  against  the  public  (Kennedy 
V.  Hazelton,  128  U.  S.,  667).  If  the  inventor  is  a  minor, 
the  oath  should  be  made  by  him  (Fetter  v.  Newhall,  25 
0.  G.,  502;  1883  C.  D.,  429;  17  F.  R.,  841). 

VENUE.  The  venue  should  agree  with  the  jurisdic- 
tion of  the  notary,  which  in  some  states  may  be  a  single 
county,  in  others,  several  counties,  or  even  the  entire 
state.  John's  American  Notaries  gives  the  jurisdiction 
and  other  data  regarding  notaries.  If  it  appears  that 
the  notary  acted  outside  his  jurisdiction  either  a  new 
oath  should  be  filed  or  an  affidavit  of  the  notary  who 
administered  the  original  oath  stating  where  the  original 
oath  was  administered  {ex  parte  Delavoye,  124  O.  G., 
626;  1906  C.  D.,  320). 

In  Prym  v.  Heilbruner,  81  0.  G.,  2245;  1897  C.  D.,  192, 
a  foreign  application  oath  in  which  no  venue  or  indica- 
tion of  the  place  where  such  affirmation  was  made  ap- 
peared, except  in  the  seal  of  the  consulate  impressed  on 
the  paper,  was  accepted  as  sufficient. 

In  order  to  obtain  a  patent  an  inventor  must  not  only 
invent  something,  but  he  must  take  proper  action  to  pre- 
serve his  rights  so  that  the  bar  of  public  use  and  other 
statutory  bars  to  the  grant  of  a  patent  mentioned  in 
Rule  46,  may  not  arise,  and  until  the  applicant  has  made 
an  oath  in  regard  to  the  statutory  bars  referred  to  in 
Sections  4886,  4887,  and  in  Rule  46,  he  has  not  made  out 
a  prima  facie  case  that  he  is  entitled  to  a  patent. 


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Journal  of  the  Patent  Office  Society.         483 

In  tiie  public  use  clause  **two  years  prior  to  his  appli- 
cation/' has  reference  to  the  filing  of  a  complete  appli- 
cation and  not  to  the  date  of  the  oath  (Miller  v.  Lam- 
bert, 72  0.  G.,  1903;  1895  C.  D.,  77).  Public  use  or  sale 
abandons  only  the  exact  invention  used  or  sold  (Gra- 
ham V.  McCormick,  21  0.  G.,  1533;  11  F.  R.,  859). 

Rule  47. 

The  oath  or  affirmation  may  be  made  before  any  person 
within  the  United  States  authorized  by  law  to  administer  oaths, 
or,  when  the  applicant  resides  in  a  foreign  country,  before 
any  minister,  charge  de'affaires,  consul,  or  commercial  agent 
holding  commission  under  the  Government  of  the  United  States, 
or  before  any  notary  public,  judge,  or  magistrate  having  an 
official  seal  and  authorized  to  administer  oaths  in  the  foreign 
country  in  which  the  applicant  may  be,  whose  authority  shall 
be  proved  by  a  certificate  of  a  diplomatic  or  consular  officer 
of  the  United  States,  the  oath  being  attested  in  all  cases  In  this 
and  other  countries,  by  the  proper  official  seal  of  the  officer 
before  whom  the  oath  or  affirraatioi\  is  made,  except  that  no 
oath  or  affirmation  may  be  administered  by  any  attorney  ap- 
pearing in  the  case.  When  the  person  before  whom  the  oath 
or  affirmation  is  made  in  this  country  is  not  provided  with  a 
seal,  his  official  character  shall  be  established  by  competent 
evidence,  as  by  a  certificate  from  a  clerk  of  a  court  of  record 
or  other  proper  officer  having  a  seal. 

When  the  oath  is  taken  before  an  officer  in  a  country  for- 
eign to  the  United  States,  all  the  application  papers  must  be 
attached  together  and  a  ribbon  passed  one  or  more  times 
through  all  the  sheets  of  the  application,  and  the  ends  of  said 
ribbon  brought  together  under  the  seal  before  the  latter  is 
affixed  and  Impressed,  or  each  sheet  must  be  impressed  with 
the  official  seal  of  the  officer  before  whom  the  oath  was  taken. 

BY  WHOM  ADMINISTERED.  An  applicant's  attor- 
ney  cannot  act  as  a  notary  (Opinion  of  Attorney  Gener- 
al, 127  0.  G.,  3642,  1907,  C.  D.,  437;  HaU's  Safe  Co.  v. 
Herring,  135  0.  G.,  1804,  1908,  C.  D.,  473;  31  App.  D.  C, 
498).  An  oath  executed  before  the  attorney  in  the  case 
is  invalid  and  application  is  incomplete  just  as  if  no  oath 
had  been  filed  (Riegger  v.  Beierl,  150  0.  G.,  826;  1910, 
C.  D.,  12). 

During  the  past  few  years  many  oaths  have  been  ex- 
-ecuted  by  persons  in  the  military  service  of  the  United 


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484        Journal  of  the  Patent  Office  Society. 

States  before  certain  military  officers  who,  when  in  this 
country,  have  jurisdiction  only  in  military  affairs  but 
when  in  a  foreign  country  have  also  jurisdiction  in  civil 
affairs  as  provided  in  Article  114,  Articles  of  War,  which 
reads  as  follows : 

Art.  114.  AUTHORITY  TO  ADMINISTER  OATHS. — Any 
judge  advocate  or  acting  Judge  advocate,  the  president  of  a 
general  or  special  court-martial,  any  summary  court-martial, 
the  Judge  advocate  or  any  assistant  Judge  advocate  of  a  gen- 
eral or  special  court-martial,  the  president  or  the  recorder  of 
a  court  of  inquiry  or  of  a  military  board,  any  officer  designated 
to  take  a  deposition,  any  officer  detailed  to  conduct  an  inves- 
tigation, and  the  adjutant  of  any  command  shall  have  power 
to  administer  oaths  for  the  purposes  of  the  administration  of 
military  Justice  and  for  other  purposes  of  military  adminis- 
tration; and  in  foreign  places  where  the  Army  may  be  serving 
shall  have  the  general  powers  of  a  notary  public  or  of  a  con- 
sul of  the  United  States  in  the  administration  of  oaths,  the 
execution  and  acknowledgment  of  legal  instruments,  the  attes- 
tation of  documents,  and  all  other  forms  of  notarial  acts  to  be 
executed  by  persons  subject  to  military  law.  (R.  S.  Sec.  1342, 
amended,  Aug.  29,  1916,  c.  418,  Sec.  3,  39  Stat.  669.)  See 
July  27,  1892,  c.  272,  Sec.  4,  27  Stat.  278. 

If  not  attested  by  the  proper  official  seal  of  the  officer 
a  proper  oath  will  be  necessary  before  the  patent  finally 
issues. 

RIBBON.  In  the  case  of  an  application  executed 
abroad  and  filed  with  the  ribbon  cut  and  tied  together 
again,  applicant  was  ordered  to  show  cause  why  his  ap- 
plication should  not  be  stricken  from  the  files  {ex  parte 
Johns,  15  Gour.,  71,  25,  decided  September  5,  ld03). 
Where  an  application  was  executed  before  a  U.  S.  con- 
sul and  the  papers  were  not  all  included  in  ribbons,  the 
application  was  stricken  from  the  files  {ex  parte  Altman, 
80  0.  G.,  1475,  1897,  C.  D.,  52).  Where  the  ribbon  was 
omitted  in  an  application  executed  abroad,  the  papers 
were  returned  {ex  parte  Bagot,  91  0.  G.,  1802;  1900  C. 
D.,  80).  The  present  practice,  however,  is  to  accept  the 
application  and  forward  it  to  the  examining  division 
with  instructions  to  require  substitute  papers  properly 
ribboned. 

The  State  Department  has  issued  instructions  to  the 
diplomatic  and  consular  officers  of  the  United  States  in 


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JOUBNAL  OF  THE  PaTBNT  OfFICB  SoCIBTT.  485 

administering  oaths  for  patent  applications  to  pass  a 
ribbon  through  all  the  sheets  and  bring  the  ends  of  the 
ribbon  together  under  the  seal  before  the  latter  is  af- 
fixed or  impressed  (79  0.  G.,  1525). 

The  Spanish  diplomatic  and  consular  officers  of  Spain 
in  charge  of  the  interests  of  the  United  States  in  the 
enemy  countries  do  not  hold  a  commission  under  the 
Government  of  the  United  States  within  the  terms  of 
Section  4892,  R.  S.,  and  are  not  vested  with  power  to  ad- 
minister oaths  or  to  prove  the  authority  of  a  foreign  of- 
ficial before  whom  the  oath  is  taken.  See  the  opinion  of 
the  Solicitor  of  the  Department  of  the  Interior,  250  0. 
G.,  513. 

OONSULAR  FEE  STAMP.  Order  2032  of  February 
13,  1913,  provides  that  in  all  applications  executed 
abroad,  from  which  the  required  consular  fee  stamp  has 
been  omitted,  the  first  requirement  in  the  case  will  be 
that  the  necessary  stamp  be  forwarded  to  this  Office,  to 
be  affixed  to  the  affidavit  and  canceled  by  the  Chief  Clerk 
of  the  Patent  Office. 

Rule  48. 

When  an  applicant  presents  a  claim  for  matter  originally 
shown  or  described  but  not  substantially  embraced  in  the 
statement  of  invention  or  claim  originally  presented,  he  shall 
file  a  supplemental  oath  to  the  effect  that  the  subject  matter 
of  the  proposed  amendment  was  part  of  his  invention,  was  in- 
vented before  he  filed  his  original  application,  was  not  known 
or  used  before  his  invention,  was  not  patented  or  described  in 
a  printed  publication  in  any  country  more  than  two  years  be- 
fore his  application,  was  not  patented  in  any  foreign  country 
on  an  application  filed  by  himself  or  his  legal  representatives 
or  assigns  more  than  twelve  months  prior  to  his  application, 
was  not  in  public  use  or  on  sale  in  this  country  for  more  than 
two  years  before  the  date  of  his  application,  and  has  not  been 
abandoned.  Such  supplemental  oath  must  be  attached  to  and 
properly  identify  the  proposed  amendment. 

In  proper  cases  the  oath  here  required  may  be  made  by  an 
executor  or  administrator  of  a  deceased  person  or  a  guardian, 
conservator,  or  representative  of  an  insane  person.  (See  Rule 
46.) 

When  a  patent  is  granted  all  the  claims  must  be  sup- 
ported either  by  the  original  oath  or  by  some  snpple- 


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486  JOUBNAL  OF  THE  PaTENT  OfFICE  SoCIETY. 

mental  oath  of  the  applicant  (53  0.  G.,  2041;  1890  C.  D., 
181).  The  original  oath  lapplies  to  what  is  described  and 
also  to  what  is  claimed  and  is  not  limited  merely  to  what 
is  both  described  and  claimed.  Walker  on  Patents,  Sec. 
123,  citing  Crompton  and  Knowles  Loom  Works  v.  Staf- 
ford Co.,  205  Fed.  Rep.,  925. 

It  is  only  necessary  that  the  subject-matter  shall  have 
been  covered  and  the  scope  of  the  claims  may  be  changed 
to  include  a  feature  shown,  but  not  previously  specifical- 
ly described  or  claimed,  if  the  original  statement  of  in- 
vention or  claims  were  broad  enough  to  cover  the  spe- 
cific feature  {ex  parte  Matthes,  101  0.  G.,  3108;  1902  C. 
D.,  484).  Mere  change  in  terminology  does  not  neces- 
sitate a  supplemental  oath.  The  question  of  supple- 
mental oath  should  be  disposed  of  before  forwarding  an 
appeal  {ex  parte  Teller,  113  0.  G.,  548;  1904  C.  D.,  468). 

Where  both  process  and  apparatus  could  be  joined  in 
one  application,  process  claims  could  be  added  without 
a  supplemental  oath  if  the  process  is  covered  by  the  state- 
ment of  invention  {ex  parte  Lillie,  53  O.  G.,  2041;  1890 
C.  D.,  181;  Williams  Co.  v.  Miller,  97  O.  G.,  2308;  1901 
C.  D.,  517).  But  a  supplemental  oath  is  required  if  the 
process  is  not  embraced  in  the  original  claims  or  state- 
ment of  invention  {ex  parte  Perkins,  55  0.  G.,  139;  1891 
C.  D.,  63;  ex  parte  Lillie,  53  0.  G.,  2041;  1890  C.  D.,  181). 

Article  claims  not  covered  by  original  statement  of 
invention  cannot  be  added  to  process  application  with- 
out a  supplemental  oath  {ex  parte  Kuckrich,  106  0.  G., 
765;  1903  C.  D.,  314).  When  claims  are  in  wrong  form, 
purporting  to  be  for  a  process,  when  the  real  invention 
is  in  the  article,  the  examiner  should  suggest  the  amend- 
ment and  no  supplemental  oath  is  required  {ex  parte 
Trevette,  101  0.  G.,  3108;  1901  C.  D.,  170).  Whether  a 
supplemental  oath  is  necessary  is  a  question  of  form 
and  does  not  furnish  a  ground  for  rejecting  the  claims 
{ex  parte  Weidemann,  81  0.  G.,  2245;  1897  C.  D.,  194; 
Phillips  V.  Sensenich,  134  0.  G.,  1806;  1908  C.  D.,  391; 
31  App.  D.  C.,  159). 

A  supplemental  oath  is  required  for  claims  in  a  di- 
visional application  if  it  would  have  been  required  for 
an  amendment  presenting  the  same  claims  in  the  orig- 
inal application,  and  the  allegations  required  by  Rule  48 


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Jot BNAii  OF  THE  Patent  Office  Socibty.         487 

may  be  incorporated  in  the  oath  of  the  divisional  applica- 
tion {ex  parfe  Henry,  64  0.  G.,  299;  1893  C.  D.,  88). 

Technically,  an  amendment  requiring  a  supplemental 
oath  will  not  be  entered  unless  accompanied  by  the  re- 
quired oath  unless  a  particular  hardship  is  thereby  im- 
posed upon  the  applicant  {ex  parte  Euckrich,  106  0.  G., 
765;  1903  C.  D.,  314) ;  but  it  will  be  entered  to  save  the 
case  from  abaridonment  {ex  parte  Yerdon,  101  0.  6., 
1830;  1902  C.  D.,  411;  ex  parte  Gaylord,  117  0.  G.,  2366; 
1905  C.  D.,  309). 

In  an  application  involved  in  an  interference  a  require- 
ment for  a  supplemental  oath  may  be  waived  until  the 
interference  is  terminated  {ex  parte  Richards,  95  0.  G., 
1853;  1901  C.  D.,  46;  ex  parte  Weidemann,  81  0.  G., 
2245;  1897  C.  D.,  194;  Phillips  v.  Sensenich,  134  0.  G., 
1806;  1908  C.  D.,  14;  31  App.  D.  C,  159).  The  supple- 
mental oath  should  identify  the  application  {ex  parte 
€ook,  61  0.  G.,  1480;  1892  C.  D.,  232),  and  this  applies 
to  all  papers  filed  in  an  application. 

A  supplemental  oath  is  not  a  response  to  a  rejection 
on  the  ground  of  new  matter  {ex  parte  Moore,  197  0.  G., 
533;  1913  C.  D.,  251).  The  office  of  a  supplemental  oath 
is  to  justify  the  introduction  by  amendment  of  a  claim 
not  substantially  embraced  in  the  statement  of  invention 
or  claim  originally  presented  and  affords  no  justification 
for  the  introduction  of  new  matter  (Steward  v;  Ellis  v. 
Lee  V.  Howe,  49  0.  G.,  1983;  1889  C.  D.,  243).  ' 


HUMOR  OF  THE  WITNESS  STAND. 
— lii— 
Q.    How  do  you  fix  the  time  as  some  time  in  June? 
A.    Well,  I  know  that  I  went  on  my  vacation  the  first 
of  August  and  that  is  the  last  vacation  that  I  have  had 
as  I  got  married  after  that,  and  I  haven't  had  any  vaca- 
tion since.    As  I  remember  it,  it  was  more  than  a  month 
before  I  went  on  my  vacation. 


Q.    Why  did  you  color  your  drink  with  caramel? 
A.    Well,  it  looks  good  that  way — and  you  can't  de- 
tect a  fly  or  bug  that  might  be  in  it, — one  good  reason. 


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488         Journal  of  the  Patent  Office  Society. 

EXCERPTS  FROM  A  RECENT  LETTER  OF  DR.  L.  H. 
BAEEELAND  TO  MR.  BERT  RUSSELL. 


Your  letter  dated  April  15th,  addressed  to  Dr.  Hale^ 
was  sent  to  me  after  some  delay,  accompanied  by  a  let- 
ter from  him  dated  April  18th.  I  should  have  received 
it  sooner  but  for  the  fact  that  I  am  snowed  under  in  some 
urgent  work  which  literally  requires  every  minute  of  the 
day  my  full  concentration  of  thought.  I  am  suing  one 
of  the  infringers  of  some  of  my  patents.  I  have  been  in 
court  now  for  several  weeks,  every  day,  and  it  looks  as 
if  I  shall  have  some  weeks  more  of  it.  Under  the  cir- 
cumstances, my  mail  is,  naturally,  neglected. 

This  litigation  not  only  costs  fearful  amounts  of  mon- 
ey and  time  to  the  litigants,  but  is  a  great  expense  to  the 
United  States  Government,  because  it  paralyzes  one  of 
its  courts  for  months  in  succession,  and  most  of  the  time 
is  taken  up  by  revising  and  criticizing  the  action  of  Pat- 
ent Examiners  of  our  United  States  Patent  Office.  This 
in  itself  is  significant,  because  it  means  considerable  ex- 
penses for  the  Government,  salaries  f dr  the  judges,  court 
attendants,  rent,  heat  and  fuel,  and  in  the  meantime, 
other  important  business  for  the  courts  has  to  be  post- 
poned. Whatever  money  is  spent  by  the  litigants  ulti- 
mately is  paid  by  the  public,  because  the  manufacturers 
charge  these  expenses  in  their  general  expenses,  so  that 
finally  the  public  pays  the  cost.  I  have  come  to  the  firm 
conviction  that  if  the  United  States  Government  in- 
creased the  salaries  of  the  Patent  Examiners  tenfold,  it 
would,  nevertheless,  be  a  great  economy  to  the  Govern- 
ment and  to  the  people  of  the  United  States,  if,  by  doing 
so,  the  United  States  Patent  Office  could  insure  special 
inducement  for  obtaining  the  most  competent  and  best 
quaUfied  men  as  Examiners  and  for  enabling  them  to 
work  under  better  conditions,  so  that  a  patent  allowed 
by  the  United  States  Patent  Office  should  acquire  there- 
by a  greater  prestige  before  our  courts  and  before  would- 
be  infringers  or  the  lawyers  wbo  represent  them. 


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Journal  op  the  Patent  Office  Society.         489 

A  LETTER  TO  THE  EDrTOR. 

— 1^— 

Worcester,  Mass.,  May  20, 1919. 
To  the  Editor  I 

In  his  article  **  Patents — A  Business  Barometer '*  Mr. 
John  Boyle,  Jr.  has  drawn  some  strange  conclusions 
from  the  curves  which  are  reproduced  in  your  May  num- 
ber. Practically  everyone  who  has  had  anything  to  do 
with  patents  knows  that  his  conclusions  are  diametrical- 
ly opposite  to  the  experience  of  the  past  two  years.  Dur- 
ing the  latter  part  of  the  war,  when  the  business  of  the 
country  was  rushed  as  it  had  never  been  before,  the 
work  of  the  patent  solicitors  and  Patent  OflSce  fell  off 
very  materially.  About  tljree  months  after  the  ariiiistice 
w^as  signed,  when  the  business  of  the  country  was  tak- 
ing a  rest,  the  patent  business  came  on  with  a  rush.  That 
has  been  my  personal  experience  ever  since  I  have  been 
in  this  line,  no  matter  what  the  curves  show.  I  remem- 
ber very  distinctly  how  I  was  swamped  with  new  busi- 
ness during  the  panic  of  1907. 

It  seems  strange  to  try  to  prove  any  theory  abojit  the 
relation  between  business  and  invention  by  a  **  patent 
curve."  I  realize  that  Mr.  Boyle  has  avoided  the  word 
invention  throughout  his  article  and  that  what  he  has 
to  say  about  the  paying  of  the  final  fees  is  undoubtedly 
true.  It  is  more  important  however  to  note  that  the 
^* application  curve"  is  what  shows  th^  relation  of  in- 
vention to  business  and  the  sensitiveness  to  business 
<;hanges  of  the  ** application  curve"  seems  to  me  greater 
than  that  of  the  ** patent  curve."  It  is  to  be  noted  that 
in  1873  the  number  of  applications  filed  was  on  the  in- 
<5rease.  The  same  was  true  in  1884,  and  much  more  clear- 
ly so  in  1903  and  1907,  while  in  1890  the  curve  was  sub- 
stantially horizontal  and  the  only  depression  that  re- 
sulted in  a  decrease  of  applications  was  that  of  1893. 
This  slight  decrease  lasted  for  only  one  year  and  then 
there  was  a  sharp  rise  but  as  we  all  remember  that  bus- 
iness depression  continued  for  several  years.  Even  in 
the  ** patent  curve"  high  points  were  reached  in  1890, 
1903  and  1907.  In  othei:  words,  half  of  the  six  periods 
Mr.  Boyle  selected  tend  to  disprove  his  theory  even  on 
the  patent  curve.    If  the  patent  curve  has  a  relation  to 


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490  JoUBNAIi  OF  THE  PaTENT  OfFICE  SoCIETY. 

business  it  must  lag  about  two  years  behind  the  business 
curve,  because  it  takes  on  an  average  that  length  of  time 
to  secure  a  patent. 

The  explanation  is,  it  seems  to  me,  that  necessity  is 
the  mother  of  invention.  It  is  when  men  are  out  of 
work,  or  on  short  time,  and  when  managers  are  trying  to 
get  new  business  that  they  are  willing  to  think  of  inven- 
tions. Undoubtedly  during  times  of  prosperity  there  is 
more  money  available  to  put  into  patents  and  a  larger 
proportion  of  the  filed  applications  are  patented.  But 
anyone  who  tried  to  get  a  manufacturer,  engaged  in  sup- 
plying the  government  during  the  war,  interested  in  im- 
provements knows  that  such  men  had  no  time  for  new 
things.  That  is  true  to  a  less  extent  during  all  periods 
of  business  prosperity,  at  least  when  prosperity  reaches 
the  extent  of  a  boom. 

Yours  very  truly, 

Albert  E.  Fay. 

{Note — Mr.  Boyle  makes  the  following  comment) : 

Mr.  Fay  has  fallen  into  the  error  of  generalizing  with 
only  a  few  facts  as  a  basis.  One  of  the  most  sensitive 
indexes  of  business  conditions  is  the  bank  clearings  of 
the  country. 

If  a  curve  representing  bank  clearings  is  placed  in 
juxtaposition  to  the  patent  curve,  the  similarity  is  strik- 
ing. No  such  similarity  will  be  found  in  the  application 
curve. 

J,  B.|  Jb. 


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Journal  of  the  Patent  Offic?  Society.         491 

SnOOESTED  CHANGES  IN  INTERFERENCE 

PRACTICE. 

— 1^— 

By  H.  E.  Stauffeb. 

— 1^— 

The  interference  practice  as  it  now  exists  is  admit- 
tedly both  involved  and  inconclusive.  It  is  involved,  be- 
<5ause  of  the  shifting  of  the  case  from  one  tribunal  to  an- 
other, and  because  of  the  number  of  questions  other  than 
strict  priority  which  are  decided  either  in  the  proceed- 
ing proper  or  as  collateral  thereto.  It  is  inconclusive, 
because  after  the  case  is  finally  decided,  further  pro- 
ceedings may  be  instituted  under  Section  4915,  R.  S.,  or 
the  same  questions  can  be  raised  in  infringement  pro- 
ceedings. 

Jurisdiction:  Under  the  present, practice  the  principal 
examiner  prepares  the  papers  for  the  contest.  The  in- 
stitution of  proceedings  is  to  a  limited  extent  super- 
vised by  a  law  examiner.  The  papers  then  come  to. the 
examiner  of  interferences,  who  sends  out  the  notices 
and  takes  charge  of  the  preliminary  procedure.  If  mo- 
tions to  dissolve  or  amend  are  presented,  the  case  is 
taken  by  the  Commissioner  in  person,  who  decides  wheth- 
er the  same  shall  be  entertained.  If  entertained,  the 
case  goes  to  another  law  examiner  to  hear  and  decide 
the  questions  presented.  He  may  dissolve  or  continue 
the  proceeding,  and  his  decision  is  binding  on  the  exam- 
iner of  interferences.  From  his  decision  appeal  may  be 
prosecuted  to  the  board  of  examiners-in-chief,  and  from 
their  decision  a  further  appeal  may  be  taken  to  the  Com- 
missioner in  person.  If  the  interference  is  not  dissolved, 
it  is  again  taken  up  by  the  examiner  of  interferences, 
who  controls  the  taking  of  testimony,  and  makes  his  de- 
cision on  the  question  of  priority.  From  this  decision 
another  line  of  three  appeals  is  set  up:  namely,  to  the 
board  of  examiners-in-chief,  the  Commissioner,  and  the 
Court  of  Appeals  of  the  District  of  Columbia. 

Incanclusivenesss  After  all  this,  the  question  of  prior- 
ity of  invention  only  is  decided  (and  this  is  not  conclu- 
sive, as  just  explained  above).  The  patentability  of  the 
issue,  public  use  or  sale,  and  similar  matters  are  not 
tried  out;  at  least,  not  as  a  part  of  the  principal  case. 


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492         Journal  of  the  Patent  Office  Society. 

They  may,  however,  be  taken  up  in  a  collateral  way  by 
motion  to  dissolve,  and  by  public  use  proceedings.  It  is 
these  collateral  proceedings,  and  the  number  of  appeals 
allowed,  that  make  interferences  so  involved  and  drawn 
-out. 

One  Proceeding :  All  this  is  unnecessary.  Collateral 
proceedings  should  be  avoided,  and  all  questions  shonld 
be  decided  in  the  principal  proceeding.  Motions  to  dis- 
solve should  be  abolished;  the  powers  of  the  examiner 
of  interferences  should  be  enlarged  to  enable  him  to  de- 
cide the  right  to  a  patent ;  and  at  least  one  of  the  ap- 
peals from  his  decision  should  be  eliminated.  Under 
such  a  procedure  when  jurisdiction  has  once  been  ac- 
-quired  by  the  examiner  of  interferences,  he  could  decide 
all  collateral  as  well  as  the  principal  questions  which 
the  case  might  present. 

Amendment  to  Statute :  The  most  direct  and  practical 
way  to  effecjt  such  a  change  would  be  to  amend  Sec 
4904  of  the  jRevised  Statutes  so  as  to  define  the  ques- 
tions to  be  determined  and  the  line  of  appeals  to  be  pro- 
vided. The  whole  matter  could  be  taken  care  of  by 
amending  the  statute  as  follows: 

Line  6,  erase  the  word  "primary."  In  line  9,  erase  the 
words  "the  prior  inventor;"  in  line  10,  erase  the  word  "pri- 
mary;" and  in  lines  10  and  11,  erase  the  expression  "or  of 
the  board  of  examiners-in-chief,  as  the  case  may  be,"  and  make 
amendments  as  follows: 

In  line  6,  after  the  word  "examiner"  insert  the  words  "in 
charge  of  interferences;"  at  the  end  of  line  6,  after  the  word 
"determine"  insert  the  words  "which  if  any  of  the  parties  is 
entitled  to  a  patent."  In  line  8,  insert  the  word  "any"  before 
"party;"  in  line  9,  insert  the  words  "to  be  entitled  thereto;" 
at  the  beginning  of  line  10,  insert  after  "examiner"  the  ex- 
pression "in  charge  of  interferences," 

iso  that  the  entire  section  will  read  as  follows: 

Whenever  an  application  is  made  for  a  patent  which,  in  the 
opinion  of  the  Commissioner,  would  interfere  with  any  pend- 
ing application,  or  with  any  unexpired  patent,  he  shall  give 
notice  thereof  to  the  applicants,  or  applicant  and  patentee,  as 
the  case  may  be,  and  shall  direct  the  examiner  in  charge  of 
interferences  to  proceed  to  determine  which  if  any  of  the  par- 
ties thereto  is  entitled  to  a  patent.  And  the  Commissioner 
may  issue  a  patent  to  any  party  who  is  adjudged  to  be  entitled 
thereto,  unless  the  adverse  party  appeals  from  the  decision  of 
the  examiner  in  charge  of  interferences  to  the  Commissioner 
in  person  within  such  time,  not  less  than  twenty  days,  as  the 
Commissioner  shall  prescribe. 


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Journal  of  the  Patent  Office  Society.         493" 

Effect :  Such  an  amendment  would  throw  upon  the  ex- 
aminer of  interferences  authority  to  determine  in  the 
first  instance  which  if  any  of  the  parties  is  entitied  to  a 
patent.  This  of  course  would  enable  any  of  the  contest- 
ants to  raise  the  question  of  the  patentability  of  the  is- 
sue, public  use  or  sale,  and  other  bars  to  the  grant  of  a 
patent.   • 

At  first  sight,  this  would  seem  to  be  revolutionary^ 
and  the  general  objection  to  such  change  is  that  it  would 
greatly  add  to  the  burdens  now  placed  upon  the  parties 
in  interference  proceedings.  This,  however,  is  by  no 
means  so  serious  as  it  at  first  appears.  Under  the  prac- 
tice as  it  now  stands,  theoretically  we  try  out  the  ques- 
tion of  priority  of  invention  only,  but  the  patentability  of 
the  issue,  the  right  of  the  parties  to  make  the  claims, 
and  public  use  and  sale  are  tried  as  collateral  matters^ 
In  fact,  the  question  of  the  right  of  a  party  to  make  the 
claim,  or  at  least  some  phases  of  this  question,  may  be 
tried  both  by  dissolution  and  as  a  priority  question. 
When  it  is  remembered  that  the  interference  proper  may 
under  the  present  practice  be  suspended,  and  is,  in  fact, 
very  often  suspended,  to  try  out  the  question  of  the  pat- 
entability of  the  issue,  or  of  the  right  of  one  of  the  par- 
ties to  make  the  claim,  in  a  collateral  proceeding,  which 
has  in  fact  nothing  at  all  to  do  with  the  question  of  pri- 
ority, it  will  be  apparent  that  the  proposed  change  is 
not  so  revolutionary  as  at  first  appears.  And  when  it 
is  remembered  that  the  interference  may  be,  and  some- 
times is,  suspended  to  try  out  in  a  collateral  way  the 
question  of  the  public  use  and  sale  against  one  and  some- 
times both  of  the  parties,  it  is  obvious  that  it  would  not 
add  greatly,  if  at  all,  to  the  burdens  of  the  proceedings 
to  let  these  questions  be  tried  out  as  a  part  of  the  main 
proceeding. 

Thus  we  now  suspend  the  main  proceeding  to  enter- 
tain a  motion  to  dissolve,  which  is  heard  by  another  of- 
ficial, with  the  right  to  appeal  to  the  examiners-in-chief, 
and  to  the  Commissioner  in  person.  If  it  be  held  that 
ttie  issue  is  patentable  and  that  the  parties  can  make 
the  claims,  the  interference  continues.  But  the  question 
of  right  to  make  the  claims,  although  urged  as  a  basis 
for  dissolution,  can  be  and  is  constantly  raised  at  final 
hearing,  so  that  the  motion  to  dissolve,  so  far  as  this 
question  is  concerned,  is  not  in  any  sense  conclusive. 


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494         Journal  of  the  Patent  QffIcb  Society. 

It  is  true  the  examiner  of  interferences  is  not  usually 
permitted  to  take  up  this  question,  except  in  the  li^ht 
of  additional  evidence ;  but  nevertheless  it  does  arise  in 
one  way  or  another  more  or  less  frequently. 

Sec.  4915,  R.  S.:  Of  course,  the  mere  change  of  Sec 
4904,  R.  S.  in  the  manner  proposed  would  not  prevent  re- 
trying the  questions  of  the  patentability  of  th.e  issue, 
public  use  and  sale,  etc.,  under  Section  4915.  Therefore 
it  would  seem  advisable  also  to  modify  this  section  so 
as  to  restrict  the  cases  which  may  be  prosecuted,  there- 
under to  ex  parte  applications. 

Priority:  As.  illustrating  the  fact  that  the  changes  pro- 
posed would  not  be  so  fundamental  as  at  first  appears, 
it  may  be  well  to  consider  what  matters  may  be  tried  out 
under  the  term  *  Apriority  of  invention."  Fundamental- 
ly this  of  course  means  which  of  two  parties  first  made 
the  invention,  but  practically  it  means  many  other 
things ;  for  instance,  we  may  determine : 

1.  Priority  of  invention  in  its  true  sense;  that  is,  which  of 
the  parties  to  the  proceeding  first  produced  the  invention. 

2.  Originality;  that  is,  which  of  two  or  more  parties  in 
fact  produced  the  invention.  This  is  not  in  its  strict  sense  a 
priority  question  at  aU.  And  the  examiner  is  permitted  to 
determine  only  which  of  the  parties  was  first  in  possession  of 
the  invention.  It  may  be  that  either  or  both  derived  the  in- 
vention from  some  third  party,  but  this  question  can  not  be 
considered. 

(Foster  v.  Antisdel,  88  O.  G.,  1527;   14  App.  D.  C,  552; 
Prindle  v.  Brown,  112  O.  G..  957;  24  App.  D.  C,  114.) 

3.  The  right  of  one  of  the  parties  to  make  the  claims.  Un- 
der this  heading  we  may  determine  numerous  questions,  such 
as: 

(a)  The  sufllciency  of  the  disclosure  of  the  application  to 
support  the  issue. 

(Podlesak  and  Podlesak  v.  Mclnnerney,  120  O.  G.,  2127; 
26  App.  D.  C.  399.) 

(b)  The   operativeness  of  the  structure  disclosed  in  the 
applications. 

(Cosper  V.  Gold,  168  O.  G.,  787;  36  App.  D.  C,  302.) 

(c)  New  matter  in  the  application. 

(d)  In  a  reissue  application  the  identity  of  the  invention 
in  the  reissue  with  that  claimed  in  the  original. 

(Nelson  v.  Felsing  and  Felsing  v.  Nelson,  142  O.  G.,.  289; 
32  App.  D.  C,  420.) 

(e)  The  validity  of  the  oath  accompanying  the  application. 
(Dalton  and  Magnus  v.  Wilson,  224  O.  G.,  741;   44  App. 

D.  C,  249.) 


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JOUBNAL  OF  THB  PaTBNX  QfFICB  SoCIETY.  495 

(f)   Whether  alterations  have  been  made  in  the  applica- 
tion after  the  same  was  sworn  to. 

(Lindstrom  v.  Ames,  168  O.  0.»  250;  37  App.  D.  C.  365.) 

4.  Estoppel:  Under  this  heading  the  parties  may  raise: 

(a)  Res  Ad  judicata. 

(b)  Delay  in  making  the  claims. 

(Rowntree  v.  Sloan.  227  O.  G.,  744;  45  App.  D.  C, 
207.) 

(c)  Concealment  after  reduction  to  practice. 

(Mason  v.  Hepburn,  84  O.  G.,  147;  13  App.  D.  C, 
86.) 

(d)  Election  to  use  the  invention  secretly  instead  of  ap- 
plying for  a  patent. 

(Macbeth-Evans  Glass  Co.  v.  General  Electric  Co., 
6th  Circuit,  decided  Nov.  6,  1917,  246  F.  R.,  695; 
248  O.  G..  601.) 

5.  Disclaimer  of  the  invention  (Rule  107). 

6.  Abandonment  of  the  invention  (Rule  125). 

7.  Concession  of  priority  to  the  other  party  (Rule  125). 

8.  Joint  Inventorship.      (Lemp  v.  Randall  and  Bates,  146 

O.  G.,  255;  33  App.  D.  C,  430.) 

When  we  consider  the  number  and  variety  of  questions 
which  may  be  and  are  continually  raised  under  the  term 
'* priority''  of  invention;  and  then  remember  that  non- 
patentability  is  considered  by  motion  to  dissolve,  with  a 
line  of  appeals  provided;  and  that  public  use  may  like- 
wise be  considered  under  certain  circumstances;  and» 
further,  that  any  of  these  various  matters  may  be  raised 
de  novo  by  bill  under  Sec.  4915,  R.  S.,  it  is  apparent  that 
it  would  not  be  so  long  a  step  after  all  simply  to  amend 
the  statute  so  as  to  give  the  examiner  of  interferences 
the  power  to  decide  all  of  these  questions  once  for  all, 
with  a  proper  appeal  to  some  superior  tribunal. 

It  may  be  urged  that  one  man  could  not  supervise  the 
work.  This  is  not  material;  for  if  one  can  not,  two  or 
more  should  be  provided.  In  fact,  as  the  situation  now 
is  two  law  examiners  are  constantly  engaged  on  pre- 
liminary interference  matters  in  addition  to  the  exam- 
iner of  interferences  himself.  The  question  of  force 
should  not  control.  It  is  a  simpler  and  more  direct  prac- 
tice that  is  needed,  and  this  the  proposed  change  would 
provide. 

Enlarged  Authority :  The  constant  shifting  of  the  case, 
and  the  number  of  appeals  allowed,  are  unnecessarily 
^wasteful  of  the  time  of  the  oflScials  of  the  Office.    In  a 


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496         Journal,  of  the  Patent  Office  Society. 

suit  brought  for  the  infringement  of  a  patent,  only  one 
appeal  is  allowed;  why  should  there  be  more  in  an  in- 
terference case?  While  the  changes  suggested  above 
would  greatly  simplify  the  procedure,  the  practice  would 
still  not  be  the  best  that  is  possible.  An  even  better 
way  would  be  for  the  examiner  of  interferences  to  have 
the  powers  of  an  assistant  commissioner;  that  is,  for 
the  Commissioner  himself  to  take  direct  charge  of  these 
cases,  and  conduct  them  with  the  aid  of  one  or  more  as- 
sistants. He  could  then  decide  all  questions  involved, 
both  direct  and  collateral,  with  an  appeal  on  the  whole 
case  to  the  Court  of  Appeals  of  the  District  of  Columbia. 
This  wouid^wquire  the  appointment  of  one  or  more  ad- 
ditional assistant  commissioners.  But  this  again  is 
largely  only  a  question  of  salaries.  As  it  is  now,  fully 
one-third,  and  perhaps  more,  of  the  time  of  the  Com- 
missioner and  his  assistants  is  devoted  to  interference 
cases.  This  work  would  then  be  applied  directly,  rather 
than  by  review.  All  decisions  on  preliminary  and  inter- 
locutory matters  would  be  final  and  conclusive,  and  the 
large  number  of  appeals,  with  the  necessary  suspensions, 
would  be  avoided.  In  other  words,  the  examiner.  Com- 
missioner, or  whatever  his  designation,  would  be  able  to 
decide  the  questions  presented  once  for  all  without  con- 
tinual review. 

Preliminary  Work:  The  preliminary  work  now  done 
by  one  of  the  law  examiners  is  well  worth  the  time  put 
upon  it.  But  this  work  could  be  extended  to  great  ad- 
vantage. The  patentability  of  the  issue  and  the  right 
of  the  parties  to  make  the  claims  should  both  be  very 
carefully  investigated  before  the  interference  is  declar- 
ed. Work  put  upon  the  cases  at  this  point,  would  save 
much  time,  labor,  and  expense  later. 


NOTICE  TO  SUBSCRIBERS. 

— 1^— 

The  May  issue  of  The  Journal  of  the  Patent  Offick 
Society  contained  some  defective  copies.  Subscribers 
who  received  such  copies  are  asked  to  write  to  the  Bus- 
iness Manager,  who  will  be  pleased  to  forward  properly 
assembled  copies  without  charge. 


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Journal  of  the  Patent  Office  Society.         497 

REPORT  OF  THE  ALIEN  PROPERTY  CUSTODIAN. 

— 1^— 

Note:  The  following  matter  extracted  from  the  recently  issued  re- 
port of  the  Alien  Property  Custodian,  Senate  Document  #436, 
and  relating  to  his  handling  of  foreign  owned  patents  and  alien 
controlled  corporations  owning  patent  rights,  it  is  thought  will 
prove  of  interest. 

— 1^— 

The  character  of  the  business  administered  is  matters 
relating  to  patents,  also  trademarks,  prints,  labels,  and 
copyrights,  all  of  which  are  to  be  understood  as  includ- 
ed under  the  general  term  ** patents''  wherever  that 
term  is  employed  herein. 

No  issue  has  b.een  raised  in  instances  where  American 
users  of  patents  are  operating  under  contracts  with  or 
from  enemy  owners  of  United  States  patents  as  to  wheth- 
er such  contracts  are  valid  or  were  suspended  or  abso- 
lutely terminated  or  lapsed  after  war  was  declared  by 
the  United  States.  The  policy  has  been  to  demand  all 
royalties  accumulated  and  accruing  from  time  to  time 
until  license  was  obtained  by  such  users  from  the  War 
Trade  Board  or  the  Federal  Trade  Commission.  As  to 
the  best  measure  of  the  value  of  the  use  of  the  patent 
there  has  been  taken  the  arrangements  made  before  the 
war  and  when  conditions  were  normal  between  the  user 
and  the  owner  as  to  royalties  or  consideration. 

Reports  monthly,  quarterly,  semiannually,  or  annual- 
ly, depending  upon  the  nature  of  the  case  and  the  con- 
venience of  the  user  of  the  patent  and  of  this  division, 
have  been  required  on  special  form  in  the  nature  of  a 
questionnaire  eliciting  the  source  of  the  royalty,  method 
of  its  measurement,  selling  price  of  the  commodity,  its 
general  character,  and  cost  of  production.  This  is  sub- 
scribed under  oath  and  is  comprehensive  in  character 
and  embraces  questions  bringing  out  full  information  in 
the  manner  desired  by  the  division. 

Prior  to  the  revocation  by  the  President,  on  April  11, 
3918,  of  the  power  enabling  persons  in  this  country  to 
communicate  with  enemies,  as  provided  for  in  the  act 
regarding  patents,  no  money  belonging  to  enemy  repre- 
sentatives or  correspondents  of  American  attorneys  in 
patent  matters  was  demanded.  Since  such  revocation, 
however,  such  money  has  been  demanded. 


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498         Journal  of  the  Patent  Office  Societt. 

No  demand  was  made  for  patent  rights  prior  to  the 
amendment  of  the  act  approved  November  4,  1918.  Since 
the  passage  of  this  amendment,  however,  the  Division  of 
Corporation  and  Individual  Property  has  made  demands 
for  patent  rights  where  such  were  among  the  assets  of 
cotarporations  whose  majoriliy  stock  was  enemy-owned 
and  has  been  demanded,  the  amendment  empowering  the 
Alien  Property  Custodian  to  demand  the  transfer  and 
assignment  of  enemy-owned  patents,  or  even  to  seize 
them  outright. 

The  Federal  Trade  Commission  is  vested  with  the  ex- 
ecutive administration  of  subsection  (c)  of  section  10  of 
the  act  and  may  grant  licenses,  either  exclusive  or  non- 
exclusive, as  they  deem  best,  provided  in  their  opinion 
to  grant  such  is  for  the  public  welfare  and  that  the  ap- 
plicant is  able  and  intends  to  manufacture,  etc.,  a  ma- 
chine, etc.,  the  patent  of  which  is  owned  by  an  enemy. 
Such  licenses  may  be  granted  to  any  citizen  of  the  Unit- 
ed States  or  any  corporation  organized  within  it.  Where 
the  public  welfare  is  involved,  the  Federal  Trade  Com- 
mission prescribes  the  condition  of  the  license,  includ- 
ing the  fixing  of  prices  of  productions  necessary  for  the 
health  of  the  military  or  naval  forces  of  the  United  States 
or  the  successful  prosecution  of  the  war,  and  fixes  the 
fees  to  be  charged  therefor.  The  licensee  is  required  to 
pay,  at  such  times  as  may  be  ordered,  to  the  Alien  Prop- 
erty Custodian  a  sum  not  to  exceed  5  per  cent,  of  the 
gross  sums  received  by  him  from  the  sale  or  use  of  the 
patent  or  5  per  cent,  of  the  value  of  the  invention.  This 
sum  must  be  deposited  by  the  Alien  Property  Custodian 
forthwith  in  the  Treasury  as  a  trust  fund  for  the  licensee 
and  for  the  owner  of  the  patent,  out  of  which  the  claims 
of  the  owner  may  be  wholly  or  partly  satisfied  under  ju- 
dicial proceedings,  as  provided  in  subsection  (/)  of  sec- 
tion 10  of  the  act.  The  commission  requires  the  licensee 
to  file  semiannually,  on  January  1  and  July  1  of  each 
year,  and  oftener  if  necessary,  a  full  statement  of  the 
extent  of  the  use  and  enjoyment  of  tfie  license  and  of 
the  prices  received  from  the  sale  or  use  of  the  subject 
matter  of  it,  and  that  within  30  days  thereafter  the  li- 
censee pay  to  the  Alien  Property  Custodian  the  sums  re- 
ferred to  above.  Usually  about  30  days  in  advance  of 
the  time  the  licensee  is  required  to  remit  the  commission 
advises  the  Alien  Property  Custodian  of  the  date  when 


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Journal  of  the  Patent  Office  Society.         499 

remittance  should  be  in  hand.  This  advice  is  treated  in 
the  same  respect  as  a  formal  report  and  given  a  trust 
number  and  administered  as  in  the  case  of  reports  con- 
cerning other  property  belonging  to  enemies. 

In  certain  cases  where  before  the  war  persons  were 
representing  foreign  owners  of  United  States  patents, 
later  defined  as  enemies  under  the  act,  such  persons,  how- 
ever, not  manufacturing  or  operating  under  the  patent, 
but  representing  the  owner  merely  as  agents,  and  sub- 
licensing American  users  of  the  patents,  the  Federal 
Trade  Commission,  and  or  the  War  Trade  Board,  for 
the  convenience  of  the  Alien  Property  Custodian,  grant- 
ed licenses  for  the  American  agent  to  continue  such  rep- 
resentation, generally  under  the  same  conditions  in  force 
before  the  war.  In  other  respects  such  licenses  were  on 
the  same  terms  and  conditions  as  to  the  Alien  Property 
Custodian  as  licenses  granted  in  other  instances  by  the 
Federal  Trade  Commission  or  the  War  Trade  Board. 
This  division  has  advised  persons  who  operated  under  a 
prewar  contract  to  obtain  a  license  from  the  Federal 
Trade  Commission  or  the  War  Trade  Board. 

In  all  cases  where  patents  were  producing  royalties 
the  division  has  systematically  collected  such  royalties, 
and  kept  a  careful  account  thereof.  The  public  has  been 
consistently  advised  against,  and  ^  discouraged  from, 
treating  enemy-owned  patents  as  legitimate  prey. 

The  following  is  in  agreement  between  the  Alien  Prop- 
erty Custodian  aiid  the  Federal  Trade  Commission — 
since  April  26,  1918: 

(1)  The  Federal  Trade  Commission  will  issue  no  licenses 
covering  patents  which  are  owned  or  controlled  by  a  citizen  of 
the  United  States  residing  in  the  United  States,  either  as  an 
individual,  partnership,  or  other  body  of  individuals. 

(2)  Before  proceeding  to  the  sale  of  any  patents,  control  of 
which  has  been  taken  by  the  Alien  Property  Custodian,  he  will 
notify  the  Federal  Trade  Commission  so  as  to  give  the  latter 
the  opportunity  of  expressing  its  views  as  to  the  desirability 
of  the  issuance  of  licenses. 

(3)  Should  it  be  determined  by  the  Federal  Trade  Commis- 
sion and  the  Alien  Property  Custodian  that  it  is  desirable  to 
issue  licenses,  such  licenses  shall  be  issued  by  the  Alien  Prop- 
erty Custodian  directly,  or  by  him  through  his  representatives 
in  charge  of  the  business  to  which  the  patents  belong. 

(4)  The  Federal  Trade  Commission  will  issue  licenses  cov- 
ering the  use  and  operation  of  enemy-owned  patents,  unless  it 
appears  upon  investigation  that  rights  under  such  patents  are 
vested  in  citizens  or  residents  of  the  United  States,  in  which 
case  the  matter  will  be  taken  up  in  conference  between  ther 


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500  JOUBNAL  OF  THE  PaTBNT  OfFICB  SoCTETY. 

Alien  Property  Custodian  and  the  Federal  Trade  Commission. 
(5)   That   the   Alien    Property   Custodian   and  the   Federal 
Trade  Commission  will  cooperate  by  exchanging  information 
in  relation  to  patents  and  licenses.  ^ 

It  is  believed  that  a  great  many  enemy-owned  patents 
bearing  royalties  have  not  been  reported  here.  Among 
licensees  under  prewar  contracts,  the  impression  seems 
more  or  less  current  that  they  are  not  required  by  the 
act  to  £Qe  reports  or  to  secure  licenses  from  the  Federal 
Trade  Commision  or  the  War  Trade  Board.  When  it  is 
borne  in  mind  that  there  are  granted  annually  by  the 
United  States,  approximately  35,000  patents,  and  that  a 
search  in  the  Patent  Office  for  undisclosed  enemy  patents 
would  require  going  back  a  period^  of  17  years,  and  that 
the  results  of  such  a  search,  even  if  made,  would  not  be 
conclusive,  since  a  patent  issued  in  the  name  of  a  person 
now  an  enemy  under  the  act,  may  have  been  heretofore 
and  previous  to  the  war  assigned  in  good  faith  to  an 
American  citizen  or  a  non-enemy;  and  that,  on  the  other 
hand,  a  patent  issued  in  the  name  of  a  citizen  of  the 
United  States  might,  by  like  subsequent  transfer,  have 
its  beneficial  interest  or  even  its  legal  title  now  in  an 
enemy,  the  difficulties  and  the  magnitude  of  the  task  of 
trying  to  get  in  complete  report  and  data  on  enemy-own- 
ed patents  can  be  appreciated. 

_  The  relation  of  this  division  to  other  divisions  and  the 
method  of  making  demands,  keeping  records,  and  gen- 
eral procedure,  is  the  same  as  that  obtaining  in  other 
divisions.  It  should  be  observed  that  demands,  previous 
to  the  amendment  of  November  4,  1918,  hereinafter  re- 
ferred to,  being  chiefly  for  royalties,  were  for  cash  items. 
The  activities  of  this  division  during  the  first  few 
months  of  its  existence  were  greatly  restricted  and  con- 
siderably hampered  by  the  very  narrow  powers  given  to 
the  Alien  Property  Custodian  under  the  act  as  it  stood 
prior  to  its  amendment.  The  custodian  was  by  the  act 
virtually  confined  to  the  collection  of  royalties  ajccruing 
under  licenses  granted  by  the  Federal  Trade  Commis- 
sion, or  existing  by  virtue  of  prewar  contracts,  and  to 
exercising  general  supervision  over  the  administration 
of  the  patent  and  similar" properties  owned  by  the  sev- 
eral companies  controlled  by  the  custodian  by  virtue  of 
his  stock  ownership  as  outlined  above.  In  pursuing  this 
Kne  of  activity  the  patent  division,  cooperating  with  the 


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JoUBNAli  OF  THE  PaTBNT  OfFICE  SoOIETY.  501 

Bureau  of  Investigation,  caused  a  large  number  of  ex- 
isting licenses  to  be  reported  and  has  collected  consider- 
able sums  of  money  as  royalties  under  existing  licenses 
and  under  licenses  issued  by  the  Federal  Trade  Conmiis- 
fiion.  The  royalties  collected  under  existing  licenses  es- 
tablished bj^  prewar  contracts  form  part  of  the  general 
fund  deposited  by  the  custodian  in  the  Treasury,  but  the 
sums  collected  under  licenses  issued  by  the  Federal  Trade 
Commission  are  subject  to  the  provisions  of  section  10 
of  the  act. 

When  the  policy  of  Americanizing  German-controlled 
industries  in  the  United  States  was  determined  upon, 
and  the  amendment  of  March  28,  1918,  permitting  the 
sale  of  enemy  property  in  the  United  States  to  American 
citizens  was  enacted,  it  became  apparent  that  in  the 
great  majority  of  cases  no  thorough  Americanization  of 
the  several  industries  could  be  eflFected  unless  the  custo- 
dian was  placed  in  the  position  of  being  able  to  seize  and 
sell  to  American  purchasers  the  patents  upon  which  the 
industries  in  this  country  were  based. 

The  great  majority  of  enemy-owned  industries  in  the 
United  States  are  chemical  or  manufacturing  industries 
producing  patented  products  under  United  States  let- 
ters patent  which  cover  inventions  originated  in  Ger- 
many. 

An  important  aid  to  the  success  of  German  export 
trade  in  dyes  and  phamaceuticals  was  the  advantage  tak- 
en of  the  patent  laws  of  the  several  countries.  Owing  to 
the  immensely  greater  number  of  research  chemists  en- 
gaged in  this  work  in  Germany  than  in  other  countries, 
far  more  patentable  inventions  in  organic  chemistry  were 
made  by  the  Germans  than  by  the  chemists  of  any  other 
nation.  In  the  United  States  alone  the^''  took  out  pat- 
ents by  the  thousand.  For  example,  Bayer  alone  accum- 
ulated in  the  neighborhood  of  1,200  such  patents  which 
were  placed  in  the  hands  of  one  of  its  subsidiary'-  com- 
panies. The  Badische  had  approximately  500  such  pat- 
ents, while  each  of  the  other  members  of  the  cartel  held 
patents  by  the  score.  As  there  was  substantially  no  ef- 
fort (with  small  exceptions)  bj''  any  of  the  German  con- 
cerns to  manufacture  in  the  United  States,  these  patents 
were  obviously  obtained  and  held  in  order  to  prevent  the 
formation  of  an  American  dye  industry  and  to  make  im- 
possible importation  from  other  countries.     The  latter 


r 


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502  JOUBNAL.  OF  THE  PaTENT  GfFICE  SoCIETY. 

of  these  two  purposes  seems  to  have  been  the  more  im- 
portant in  the  German  mind.  They  seem  to  have  had  no 
fear  that  any  American  industry  could  be  established  on 
a  competing  basis.  They  had,  however,  some  respect  for 
the  Swiss,  French,  and  English  industries,  though  at  the 
time  of  the  commencement  of  the  European  war  Ger- 
many was  supplying  approximately  nine-tenths  of  the 
world's  needs  in  dyes.  With  the  aid  of  the  patents,  es- 
pecially the  product  patents,  they  could  and  did  exclude 
all  importations  of  competing  dyes  in  the  most  important 
classes. 

It  may  be  stated  that  of  the  approximately  200  corpo- 
rations controlled  by  the  Alien  Property  Custodian,  at 
least  125  are  manufacturing  corporations,  manufactur- 
ing patented  articles,  and  that  of  these  125  at  least  75 
manufacture  under  patents  owned  or  controlled  by  enemy 
^iens.  Investigation  showed  that  the  usual  course  pur- 
sued by  an  enemy  in  establishing  a  business  in  this  coun- 
try was  to  incorporate  an  American  company,  the  stock 
of  which  the  enemy  controlled,  and  to  issue  a  license  to 
the  American  company  under  patents  owned  by  the  en- 
emy. In  this  way  the  enemy  was  enabled  to  control  the 
American  corporation,  not  only  through  his  stock  own- 
ership but  also  through  his  ownership  of  the  patents,  and 
was  enabled  to  collect  a  large  part  of  the  profits  of  the 
American  corporation  under  the  guise  of  royalties  for 
the  use  of  the  patents,  rather  than  as  dividends  upon  its 
stock.  This  dual  control  of  the  American  corporation 
,  had  the  advantage,  from  the  point  of  view  of  the  enemy, 
of  permitting  him  to  shut  down  the  business  of  the  Amer- 
ican corporation  in  the  event  of  his  losing  control  of 
stock  and  also  permitted  him  to  evade  payment  of  income 
taxes  by  taking  his  profits  under  the  guise  of  royalties, 
thus  largely  decreasing  the  apparent  earnings  of  the 
American  corporation. 

In  the  case  of  the  Bayer  Co.  (Inc.)  and  the  Synthetic 
Patents  Co.  a  series  of  license  agreements  was  found  to 
exist  under  which  the  American  company  was  bound  to 
pay  upward  of  75  per  cent  of  its  net  earnings  to  the  en- 
emy by  way  of  royalties.  In  the  case  of  the  Heyden 
Chemical  Works  royalties  consumed  all  of  the  profits  of 
the  American  company,  except  sufficient  to  pay  a  divi- 
dend upon  its  preferred  stock.  In  the  case  of  the  Bosch 
Magneto  Co.  practically  the  entire  profits  of  the  Amer- 


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Journal  of  the  Patent  Office  Society.         503 

ican  company  were  taken  from  the  corporation  under 
the  guise  of  the  payment  for  the  purchase  of  enemy-own- 
ed United  States  patents. 

In  connection  with  the  sale  of  the  enemy  stock  in  this- 
company,  the  enemy-owned  American  patents,  important 
to,  and  used  with  the  business,  were  also  sold.  These 
patents,  of  which  there  was  a  considerable  number,  cov- 
er every  conceivable  phase  of  invention  and  improve- 
ment in  the  art  and  embody  the  ideas  of  the  best  and 
most  experienced  German  engineers  in  this  branch  of 
electrical  science.  By  their  seizure  and  sale  in  conjunc- 
tion with  the  producing  units — ^the  factories — the  Amer- 
ican purchasers  and  the  industry  generally  are  insured 
against  German  competition  within  the  field  covered  by 
the  patents. 

As  a  result  of  these  proceedings,  the  magneto  indus- 
try in  this  country  is  now  wholly  in  American  hands  and 
is  unfettered  by  patents  held  by  or  for  the  benefit  of 
enemies.  It  seems  reasonably  safe  to  predict  that  the 
business  will  remain  indefinitely  100  per  cent.  American. 

The  extent  of  this  control  may  be  further  illustrated 
by  the  case  of  the  C.  P.  Goerz  American  Optical  Co., 
which  operated  under  approximately  80  United  States 
patents,  all  of  which  were  owned  by  the  enemy  parent 
company,  and  under  which  the  American  company  held 
a  license  revocable  at  the  will  of  the  German  company. 
The  German  company  was  thus  placed  in  a  position  of 
being  able  to  at  any  time  revoke  the  license  and  shut 
down  the  American  manufacture  should  the  American 
company  get  out  of  control. 

It  was  thus  seen  that  in  the  great  majority  of  cases 
the  American  corporation  would  be  absolutely  unsalable 
under  the  provisions  of  section  12  of  the  act  as  amend- 
ed, unless  the  custodian  were  in  a  position  to  relieve  the 
American  company  from  the  burden  of  the  German-own- 
ed patent  monopoly.  It  was  obviously  impossible  to  sell 
the  Bayer  Co.  to  a  purchaser  burdened  with  the  obliga- 
tion of  paying  upward  of  75  per  cent,  of  its  earnings,  or 
to  sell  the  C.  P.  Goerz  American  Optical  Co.  to  an  Amer- 
ican purchaser  who  would  find  himself  operating  under 
a  license  which  might  be  revoked  at  any  moment.  The 
act  as  it  then  stood  seemed  to  offer  no  solution  to  the 
difficulty,  since  applying  to  the  Federal  Trade  Commis- 
sion for  a  license  under  the  provisions  of  section  10  of 


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504         Journal  op  the  Patent  Office  Society. 

the  act  would  not  relieve  the  American  company  from 
the  burden  of  prewar,  licenses,  and  would  in  any  event 
subject  the  purchaser  to  the  payment  of  a  royalty  to  the 
German  patent  owner,  which  royalty  would  be  under  the 
terms  of  the  act  reviewable  after  the  war.  It  was  rea- 
lized that  the  purchaser  of  an  American  business  must 
be  free  from  the  entanglements  that  the  enemy  created 
while  the  American  corporation  was  in  enemy  control, 
and  that  the  purchaser  must  in  any  event  be  certain  of 
the  extent  of  his  obligations  before  purchasing  a  busi- 
ness from  the  Alien  Property  Custodian. 

When  the  Custodian  came  to  carrying  out  his  selling 
program,  however,  he  met  with  two  very  serious  ob- 
stacles. He  found  that  'some  of  the  most  important  of 
the  German-owned  industries  in  this  country  were  oper- 
ating under  patents  issued  by  the  United  States  Govern- 
ment to  German  subjects,  which  patents  were  being  used 
and  enjoyed  by  the  American  corporations  owned  by  the 
enemy,  and  which  had  never  been  formally  assigned  and 
were  still  the  property  of  the  German  subjects.  He 
found,  further,  that  Germany  had  taken  out  thousands 
of  American  patents  upon  articles  produced  under  sim- 
ilar patents  in  Germany,  for  the  sole  purpose  of  prevent- 
ing the  manufacture  of  the  patented  article  in  this  coun- 
try, and  thereby  forcing  the  importation  of  the  German 
product  into  the  American  markets. 

The  prevailing  legal  opinion  was  that  patents  were  not 
included  within  the  enemy  property  which  under  the 
Trading  with  the  Enemy  act  as  it  was  ori^nally  enacted 
and  amended  on  March  28,  1918,  were  subject  to  seizure 
and  sale  by  the  Custodian.  That  opinion  prevailed  be- 
cause of  the  specific  treatment  given  to  patents,  copy- 
rights,* trade-marks,  and  other  similar  species  of  proper- 
ty by  section  10  of  the  act.  The  only  power  in  reference 
to  these  species  of  property  was  the  power  conferred 
upon  the  President  to  license  their  use  within  certain 
limits  that  were  defined,  and  those  licenses  might  be 
either  for  a  fixed  term  or  for  the  life  of  the  patent,  as 
the  Federal  Trade  Commission,  to  which  the  President 
delegated  the  powers  of  section  10,  might  decide.  But 
any  license  so  granted  became  subject  to  judicial  review 
after  the  end  of  the  war  as  to  the  license  fees  paid  there- 
under; and  the  section  went  further  to  the  extent  of  auth- 
orizing the  court,  if  it  thought  proper  so  to  do,  to  cancel 


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Journal  of  the  Patent  Office  Society.         505 

the  license  in  its  entirety.  Many  of  the  corporations 
whose  stock  was  entirely  controlled  by  enemies  dnring 
the  period  of  their  enemy  control  enjoyed  the  benefit^ 
not  merely  of  one  American  patent,  but  in  some  cases  of 
as  many  as  80  or  more  American  patents,  which,  how- 
ever, were  owned  by  enemies,  who  either  by  license  or 
otherwise  had  permitted  the  American  corporation  to* 
use  these  patents.  But  where  a  license  was  granted  it 
was  revocable  at  the  will  of  the  German  owner,  and  gave 
no  vested  or  enforceable  right  to  the  future  use  of  the 
patents.  Each  license  would  subject  the  licensee  to  a 
separate  suit  after  the  war  by  the  German  owners  for 
the  purpose  of  determining  the  value  of  that  license.  Such 
a  situation  was  intolerable,  and  limited  the  number  of 
persons  who  would  consider  becoming  the  purchasers  of 
the  stock  in  such  a  corporation,  and  therefore  made  it 
impossible  for  the  Custodian  to  obtain  the  real  value  of 
that  plant  Furthermore,  it  was  obviously  impossible 
for  any  prospective  American  purchaser  to  have  his  pat- 
ent attorney  examine  the  title  to  some  80  patents  and  de- 
termine what  the  outcome  of  such  a  litigation  might  be 
with  suflScient  assurance  for  the  prospective  purchaser 
to  determine  the  value  of  the  business  in  advance  of  a  de- 
cision in  the  after-the-war  litigation.  Consequently  im- 
der  the  provisions  of  the  original  act  the  Custodian  faced 
the  possibility  of  being  required  to  sell  American  cor- 
porations to  American  citizens,  divested  of  their  chief 
assets;  and  more  than  that,  of  subjecting  the  American 
purchaser  to  ruinous  competition  with  the  cartel-con- 
trolled industries  of  Germany  in  some  lines  where  Amer- 
ican markets  have  been  closed  to  American  producers  by 
German  patent  monopoly  here. 

The  other  obstacle  which  the  Custodian  encountered 
was  the  difficulty  in  making  title  to  American  purchaser^^ 
of  stock,  because  the  certificates  representing  the  enemy 
ownership  were  beyond  his  reach,  being  in  the  strong 
boxes  of  the  owners  in  the  enemy  countries. 

By  an  amendment  to  section  7  (c)  of  the  Trading  with 
the  Enemy  act,  contained  in  a  deficiency  appropriation 
act  approved  November  4,  1918,  both  these  obstades 
were  removed.  The  Alien  Property  Custodian  was  there- 
by empowered  to  demand  and  take  over  enemy-owned 
patents  and  to  require  corporations  to  issue  to  him  new 
certificates  of  stock  in  lieu  of  certificates  which  can  not 


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.506  JOUBNAL  OF  THE  PaTENT  OfFICE  SoOIETY. 

be  produced  for  transfer  by  reason  of  their  being  in  the 
enemy  country. 

The  amendment  of  November  4  to  the  Trading  with  the 
Enemy  act  presented  for  the  first  time  an  opportunity 
for  what  appears  to  me  to  be  the  most  important  piece 
of  constructive  work  which  has  been  possible  in  my  de- 
partment. Until  the  enactment  of  this  amendment  it 
had  not  been  possible  to  take  over  German  patents. 
These  patents,  as  had  been  already  indicated,  formed  a 
colossal  obstacle  to  the  development  of  the  American 
dyestuff  industry.  Evidently  they  had  not  been  taken 
out  with  any  intention  of  manufacturing  in  this  country 
or  from  any.  fear  of  American  manufacture,  which  the 
Germans  apparently  thought  could  not  be  successfully 
carried  on  under  conditions  prevailing  in  this  country  in 
regard  to  costs  and  to  the  supply  of  technicians  and  skill- 
ed labor.  Upon  consideration,  however,  it  seemed  that 
these  patents  offered  a  possible  solution  for  the  problem, 
hitherto  unsolvable,  of  protecting  the  new  American  dye 
industry  against  German  competition  after  the  war.  If 
they  were  not  taken  out  in  order  to  prevent  American 
competition  they  must  have  been  obtained  as  a  weapon 
against  competing  imports.  If  they  were  sufficient  to 
stop  importation  of  competing  Swiss,  French,  and  Eng- 
lish dyes,  they  would  presumably  serve,  in  American 
hands,  to  stop  the  importation  of  German  dyes.  This 
was  particularly  probable  in  the  case  of  the  product  pat- 
ents, since  most  of  the  coal-tar  dyestuffs  are  de&iite 
chemical  combinatiejis  to  which  a  product  patent  is  en- 
tirely applicable. 

The  idea  was  accordingly  conceived  that  if  the  Ger- 
man chemical  patents  could  be  placed  in  the  hands  of  any 
American  institution  strong  enough  to  protect  them,  a 
real  obstacle  might  be  opposed  to  German  importation 
after  the  war,  and  at  the  same  time  the  American  indus- 
try might  be  freed  from  the  prohibition  enforced  by  the 
patents  against  the  manufacture  of  the  most  valuable 
dyestuffs.  Accordingly,  these  considerations  were  laid 
before  various  associations  of  chemical  manufacturers, 
notably  the  Dye  Institute  and  the  American  Manufac- 
turing Chemists  Association.  The  suggestion  was  met 
with  an  instantaneous  and  enthusiastic  approval,  and  as 
a  result  a  corporation  has  been  organised  to  be  known 
as  the  Chemical  Foundation  (Iilc),  in  ^hich  practically 


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Journal  of  the  Patent  Office  Society.         507 

every  important  American  manufacturer  will  be  a  stock- 
holder, the  purpose  of  which  is  to  acquire  by  purchase 
these  German  patents  and  to  hold  them  as  a  trustee  for 
American  industry;  ^^for  the  Americanization  of  such 
institutions  as  may  be  affected  thereby,  for  the  exclusion 
or  elimination  of  alien  interests  hostile  or  detrimental 
to  the  said  industries  and  for  the  advancement  of  chem- 
ical and  allied  science  and  industry  in  the  United 
States. '^  The  voting  stock  is  to  be  placed  in  a  voting 
trust  of  which  the  trustees  are  to  be  the  five  gentlemen 
who  for  months  have  been  acting  as  the  sales  committee 
which  passes  upon  sales  made  by  my  department,  that 
is  to  say,  George  L.  Ingraham  (former  presiding  justice 
of  the  appellate  division,  first  department,  New  York 
Supreme  Court) ;  Otto  T.  Bannard  (president.  New  York 
Trust  Co.) ;  Cleveland  H.  Dodge;  Benjamin  H.  Griswold 
(senior  partner  of  Brown  Bros.'  bankers,  Philadelphia) ; 
Ralph  Stone  (president,  Detroit  Trust  Co.),  and  the 
charter  is  so  framed  that  under  tl^e  patents  nonexclusive 
licenses  only  can  be  granted  on  equal  terms  to  all  proper 
applicants,  and  must  be  granted  to  the  United  States  free 
of  cost.  The  company  is  capitalized  at  $500,000,  of  which 
$400,000  is  to  be  6  per  cent  cumulative  preferred  stock 
and  $100,000  common  stock  also  limited  to  6  p^r  cent 
dividends.  The  first  president  of  the  Chemical  Founda- 
tion (Inc.),  will  be  Francis  P.  Garvan,  of  the  New  York 
bar,  to  whose  clear  vision  and  indefatigable  industry  I 
am  chiefly  indebted  in  the  working  out  of  this  plan.  By 
Executive  order  obtained  under  the  provisions  of  the 
act,  I  have  sold  to  this  company  for  the  sum  of  $250,000 
approximately  4,500  patents,  the  remaining  $250,000  has 
been  provided  for  working  capital  so  that  the  company 
may  be  able  to  commence  immediately  and  prosecute 
with  the  utmost  vigor  infringement  proceedings  when- 
ever the  first  German  attempt  shall  hereafter  be  made  to 
import  into  this  country.  The  charter  of  the  corporation 
provides  that  surplus,  income  is  to  be  used  for  tlie  retire - 
meat  of  the  preferred  stock  and  thereafter  for  the  ad- 
vancement of  chemical  and  allied  science  and  industry. 
The  price  thus  paid  was  necessarily  determined  sorae- 
w^hat  arbitrarily;  the  great  majority  of  the  patents  were 
presumably  valueless. .  The  value  of  the  remainder  was 
entirely  problematical  and  impossible  to  estimate.  Sub- 
stantially the  entire  industrj^  having  combined  for  the 


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508        Journal  of  the  Patent  Office  Society^ 

purpose  of  this  purchase,  it  would  have  been  impossible 
on  public  sale  to  find  as  a  bidder  any  legitimate  manu- 
facturer. No  other  bidder  could,  therefore,  have  been 
found  on  public  sale  except  some  speculative  individual 
who  might  have  bought  them  for  purposes  practically 
amounting  to  commercial  blackmail.  The  combination 
was  not  objectionable  to  public  policy  since  it  was  so  or- 
ganized that  any  genuine  American,  whether  a  stock- 
holder of  the  company  or  not,  could  secure  the  benefits  of 
the  patents  on  fair  and  equal  terms. 

It  is  submitted  that  the  organization  of  this  institution 
constitutes  the  most  important  step  that  has  been  taken 
for  the  protection  of  the  new  industry.  Tariflp  protec- 
tion has  proved  utterly  unavailing  in  the  past  The 
German  industry  as  hitherto  organized,  and  still  more  as 
now  organized,  has  had  so  much  to  gain  by  extendinf?  its 
foreign  trade  and  by  destroying  the  industry  in  other 
countries  that  it  would  undoubtedly  give  away  its  goods 
in  this  country  for  nothing  in  order  to  recover  the  Amer- 
ican market.  The  Chemical  Foundation,  however,  should 
prove  a  power  suflScient  to  discourage  in  a  most  effective 
manner  any  German  attempts  in  this  direction.  If,  as 
their  newspapers  boast,  the  Germans  have  during  the 
war  worked  out  entirely  new  dyes  superior  to  their  past 
productions,  the  protection  afforded  by  it  will  be  inval- 
uable. It  has  been  the  uniform  experience  of  the  indus- 
try that  the  introduction  of  new  classes  of  dyestuffs  fol- 
lows only  several  years  after  the  patenting  of  the  orig- 
inal inventions  on  which  their  manufacture  depends.  Ac- 
cordingly, the  later  dyes  of  today  depend  largely  upon 
the  patents  of  three  or  four  years  ago.  The  patents 
transferred  to  the  Chemical  Foundation  include  many 
German  patents  of  1917  and  even  of  1918,  and  also  many 
applications  still  pending.  These  patents  undoubtedly 
include  the  results  of  the  research  upon  which  must  be 
based  the  manufacture  of  any  new  dyes  which  the  Ger- 
mans are  now  able  to  prodtice  and  market  Accordingly, 
at  the  very  least,  the  institution  will  be  able  to  protect 
the  American  industry  for  a  considerable  period,  and 
this  should  be  all  it  needs.  It  appears  to  be  the  universal 
view  of  the  more  competent  manufacturers  in  this  coun- 
try that  given  five  years  of  freedom  from  German  com- 
petition, the  American  industry  can  hold  its  own.  Prob- 
ably only  a  measure  such  as  the  embargo  which  appears 


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Journal  op  the  Patent  Office  Society.         509 

to  have  been  imposed  by  the  British  and  French  aj^ainst 
all  foreign  dye  importations  can  furnish  this  protection 
to  the  degree  necessary  to  insure  the  safety  of  the  Amer- 
ican industry;  but  short  of  such  an  embargo,  the  Chem* 
ical  Foundation  would  seem  to  furnish  all  the  aid  that 
possibly  can  be  given. 

At  the  same  time  the  new  institution  promises  an  in- 
calculable benefit  not  only  to  the  dye  and  chemical  in- 
dustries but  to  the  whole  American  manufacturing  world. 
The  opportunities  which  it  can  offer  and  the  rewards 
which  it  can  hold  out  to  competent  research  scientists 
should  far  exceed  those  of  any  institution  unconnected 
with  industry,  and  it  may  well,  therefore,  form  the  nu- 
cleus of  the  greatest  research  organization  in  the  country. 

Acting  under  the  provisions  of  the  amendment  of  No- 
vember 4,  1918,  the  Custodian  has  proceeded  to  Ameri- 
canize thoroughly  all  of  the  industries  sold  by  him,  by 
relieving  the  industries  of  the  burden  of  licenses  entered 
into  prior  to  the  war,  and  by  conveying  to  the  purchaser 
the  patents  through  which  the  enemy  companies  con- 
trolled their  American  subsidiaries.  This  procedure  has 
the  effect  not  only  of  cutting  off  the  payment  of  tribute 
to  the  enemy  companies  under  licenses,  but  also  places 
in  the  hands  of  the  American  purchasers  the  weapon  to 
protect  the  industries  from  enemy  invasion  after  the  war. 
The  purchaser  is  thus  placed  in  the  position  of  being 
able  to  use  against  the  enemy,  to  prevent  importation  by 
him  after  the  war,  the  very  means  that  the  enemy  was 
using  to  prevent  competition  by  the  American  manufac- 
turers with  his  American  subsidiary. 

It  may  be  stated,  by  way  of  example,  that  in  the  case 
of  the  Bayer  Co.  (Inc.),  approximately  550  enemy-owned 
patents  were  sold  with  the  stock  of  the  company  to  the 
American  purchaser;  in  the  case  of  the  Bosch  Magneto 
Co.  approximately  130  patents  were  sold;  and  in  the  case 
of  C.  P.  Goerz  American  Optical  Co.  about  80  patents 
will  be  sold  when  the  stock  of  this  corporation  is  disposed 
of  by  the  Custodian. 

Whenever  any  American  manufacturing  business 
which  is  likely  to  be  operating  under  patents  is  to  be  sold, 
an  investigation  is  conducted  to  determine  what,  if  any, 
license  agreements  exist  between  the  American  company 
and  its  enemy  parent,  whether  the  patents  standing  in 
the  name  of  the  corporation  are  fully  vested  in  it  atfd 


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510         Journal  of  the  Patent  Office  Society. 

what  enemy-owned  patents  exist  which  are  owned  or  con- 
trolled by  the  enemy  parent  corporation  or  by  its  prin- 
cipal owners  and  which  are  related  to  the  business  car- 
ried on  by  the  American  company.  Prior  to  the  sale  all 
of  the  rights  and  benefits  accruing  to  the  enemy  under 
such  license  agreements,  and  all  of  the  letters  patent  re- 
lating to  the  business  standing  in  the  names  of  enemies, 
are  seized  by  the  Custodian,  and  at  the  sale  of  the  busi- 
ness such  rights  and  patents  are  sold  to  the  purchaser  of 
the  Stock  of  the  American  company.  The  American  pur- 
<5haser  thus  in  effect  steps  into  the  enemy's  shoes,  and 
can  protect  the  American  company  against  the  patent 
monopoly  theretofore  exercised  by  the  enemy,  and  exer- 
cise the  former  rights  of  the  enemy  under  the  patents  to 
exclude  the  enemy  from  competition  by  importation. 

An  important  branch  of  the  work  of  the  Patent  Di- 
vision of  the  Alien  Property  Custodian's  office  Ivas  been 
the  transfer  of  enemy  patent  rights  to  the  Government 
of  the  United  States,  thus  enabling  the  carrying  on  of 
certain  governmental  activities  without  interference  from 
enemy  patent  owners  and  releasing  the  Government  from 
very  substantial  claims  for  damages  for  past  infringe- 
ment of  such  patents.  The  largest  single  transaction  of 
this  kind  was  the  sale  to  the  Navy  Department  of  the 
wireless  station  at  Sayville,  Long  Island,  formerly  own- 
ed by  the  Atlantic  Commimication  Co.,  the  American 
subsidiary  of  the  Gesellschaf t  fur  Drahtlose  Telegraphie, 
m.  b.  H.  (commonly  called  the  Telefunken  company), 
and  of  all  the  United  States  patents  covering  the  Tele- 
funken system  of  wireless  telegraph  in  this  country,  ag- 
gregating some  97  patents  and  10  applications  for  letters 
patent.  There  were  also  transferred  to  the  Navy  De- 
partment at  the  same  time  all  of  the  other  enemy-owned 
patents  relating  to  radiotelegraphy  found  in  a  search 
made  in  the  United  States  Patent  Office,  and  the  patent 
rights  of  the  New  York  Patents  Exploitation  Corpora- 
tion, an  enemy  controlled  company  which  was  found  to 
be  holding  certain  valuable  patent  rights  for  the  benefit 
of  the  Atlantic  and  Telefunken  companies. 

My  Bureau  of  Investigation  found  that  the  Telefun- 
ken interests  had  pursued  the  usual  German  course  in 
respect  to  the  wireless  patents.  The  ownership  of  the 
legal  title  remained  in  the  Germany  company.  The  At- 
lantic Communication  Co.  had  only  a  license  to  use  the 


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JoUBNAIi  OF  THE  PaTBNT  OpPICE  SoCIETY.  511 

devices  and  so  the  wireless  development  here  was  always 
under  German  control.  In  due  course,  I  seized  all  the 
German  interests  in  these  patents  and  disposed  of  them ' 
concurrently  with  the  rights  of  the  Atlantic  Conmiunica- 
tion  Co.  In  three  cases  the  legal  title  to  the  patent  or 
license  was  in  the  Atlantic  Conamunication  Co.  This 
was  due  to  the  fact  that  the  rights  had  been  acquired  af- 
ter the  plan  to  give  an  American  appearance  to  the  wire- 
less enterprise  had  been  some  time  in  operation.  Two 
of  these  three  rights  were  of  substantial  importance. 
One  (the  Seibt  patent)  covered  an  important  unit  of  a 
-wireless  transmitter;  another  (the  Vreeland  license)  a 
receiver  of  wireless  impulses.  The 'third  was  of  minor 
^alue,  but  of  interest  because  it  was  the  invention  of 
Beuthe,  a  Telefunken  engineer,  who  had  worked  it  out  at 
Sayville.  Keuthe  afterwards  went  to  Mexico  and  is  said 
to  have  been  in  charge  of  German  wireless  interests 
there. 

When  war  with  the  United  States  was  imminent,  some 
of  the  Telefunken  representatives  in  Atlantic  Communi- 
cation Co.  organized  a  new  company  under  the  laws  of 
New  York  and  called  it  the  New  York  Patent  Exploita- 
tion Corporation.  They  induced  a  number  of  persons  to 
become  stockholders,  and  thus  had  a  company  in  their 
control  which  was  one  step  further  from  Telefunken  and 
Germany.  To  this  new  company  there  were  transferred 
the  three  patent  rights  (and  none  other)  which  had  been 
described  as  being  in  legal  ownership  of  Atlantic  Com- 
munication Co.  The  inclusion  of  the  Reuthe  patent  with 
the  other  two  which  were  of  actual  use  indicated  that  the 
purpose  of  the  transfer  was  to  get  into  more  clearly 
American  hands  all  the  patent  rights  that  could  not  be 
<5ontrolled  by  reason  of  the  German  ownership  of  the  le- 
gal title.  The  purpose  was  not  ** exploitation^^  (as  the 
name  suggests)  but  protection.  This  seems  the  more 
clearly  shown  by  the  failure  of  this  new  company  to 
make  any  effort  to  acquire  other  devices  which  would 
permit  the  use  of  the  three  devices  it  owned. 

There  is  evidence  that  the  Telefunken  interests  had 
on  foot  a  comprehensive  scheme  of  consolidating  all  the 
wireless  patents.  They  were  dealing  with  De  Forest, 
with  Marconi,  and  with  the  National  Electric  Signaling 
Co.  The  consolidation  was  put  forward  as  a  means  of 
putting  an  end  to  ruinous  patent  litigation,  but  in  all 


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512         Journal  of  the  Patent  Office  Society. 

the  plans  the  Telefunken  interests  were  to  have  a  ma- 
jority of  the  stock  of  the  holding  company. 

After  consideration  of  the  facts  respecting  the  New 
York  Patent  Exploitation  Corporation,  an  offer  was 
made  to  the  stockholders  to  turn  ovet  their  stock  at  the 
amount  invested  in  it  with  6  per  cent  interest.  This  of- 
fer was  accepted.  The  New  York  Patents  Exploitation 
Corporation  then  entered  into  negotiations  with  the  Unit- 
ed States  Government  to  sell  to  it  the  three  patent  rights 
described.  I  had  learned  that  the  Navy  Department  had 
acquired  a  number  of  wireless  patents  and  properties 
and  was  contemplating  other  purchases.  The  instant 
need  of  Government  use  and  control  of  wireless  shore 
<5ommunication  seemed  to  have  been  demonstrated  by 
this  war  and  I  offered  the  rights  acquired  by  me  simul- 
taneously with  the  offer  of  the  New  York  Patent  Exploi- 
tation Corporation.  The  directors  of  the  Atlantic  Com- 
munication Co.  also  entered  into  the  negotiations  with 
the  result  that  there  was  conveyed  to  the  United  States 
of  America,  through  the  Navy  Department,  the  entire 
Sayville  plant  and  all  the  patent  rights  of  the  Telefun- 
ken (German)  company  and  also  of  the  two  American 
corporations. 

In  connection  with  the  sale  of  the  Locomotive  Super- 
heater Co.  to  stock  of  the  United  States  Railway  Ad- 
ministration the  Government  is  given  the  beneficial  use 
of  approximately  105  patents  of  great  value  relating  to 
superheaters,  valves,  steam  boilers,  and  other  apparatus 
relating  to  locomotive  construction  and  equipment. 

Minerals-Separation  Agency. 

The  history  of  Beer,  Sondheimer  &  Co.^s  activities  in 
the  United  States  would  not  be  complete  without  men- 
tioning its  connection  with  the  various  minerals-separa- 
tion companies. 

What  Minerals  Separation  Means — ^the  Patents. 

The  various  minerals-separation  companies  have  sue- 
<5essively  claimed  to  own  patents  covering  an  improved 
process  of  ore  concentration.  Ore  concentration  in  me- 
tallurgical operations  is  the  separation  of  the  mineral 
or  metallic  part  of  the  ore  from  the  nonmetallic  or  worth- 
less material  found  associated  with  it  in  nature,  in  order 


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JOUBNAL  OF  THE  PaTBNT  OrFIClS  SOCIBTT,  51? 

that  the  valuable  metallic  particles  may  be  in  proper  con- 
dition for  the  subsequent  process  of  smelting.  Hence 
the  name  '' minerals  separation.'' 

Expressed  in  language  which  laymen  can  understand, 
this  new  process  may  be  described  as  the  addition  of  a 
very  small  quantity  of  oil  to  the  ore  pulp  (which  is  ore 
finely  pulverized  floating  on  water)  followed  by  vigorous 
agitation  of  the  pulp,  and  the  introduction  of  air  currents 
into  the  mixture  resulting  in  the  development  and  dis- 
tribution throughout  the  mixture  of  small  bubbles  of 
air  which  attach  to  themselves  the  valuable  metallic  par- 
ticles and  with  them  rise  to  the  surface  forming  a  min- 
eral froth  of  such  coherency  as  to  afford  full  opportunity 
for  its  removal  from  the  surface  for  further  treatment 
of  the  metallic  particles,  while  the  worthless  material 
sinks  to  the  bottom. 

Prior  to  the  invention  of  this  new  process,  ore  con- 
centration, or  the  separation  of  the  mineral  from  the  use- 
less parts  in  ore,  was  effected  by  the  water  or  gravity 
process.  In  that  process  the  ore  was  mixed  with  water 
forming  the  ore  pulp;  the  pulp  was  shaken,  thereby  sep- 
arating the  metallic  particles  from  the  worthless  parts 
of  the  ore,  and  the  metallic  particles  being  heavier  than 
the  water,  sank  to  the  bottom,  while  the  worthless  par- 
ticles being  lighter  than  the  metallic  particles,  though 
heavier  than  the  water,  were  subjected  to  an  up  current 
of  water  which  carried  the  worthless  particles  to  the 
surface  and  over  the  container.  The  old  process  was 
commercially  unsuccessful  because  it  permitted  a  large 
percentage  of  the  metal  in  the  ore  to  be  carried  off  with 
the  worthless  particles.  The  material  thus  rejected  was 
called  slime.  For  years  dumps  consisting  of  millions  of 
tons  of  such  slime,  which  were  known  to  contain  a  large 
percentage  of  metal,  lay  useless  because  there  was  no 
known  process  by  which  they  could  be  treated  and  the 
metal  extracted. 

In  1906,  Henry  Livingstone  Sulman,  Hugh  Fitzalis, 
Earkpatrick  Picard,  and  John  Ballot,  all  of  London,  Eng- 
land, daiming  to  be  the  inventor  of  the  new  process,  ob- 
tained a  patent  thereon  in  the  United  States.  In  1910, 
Sulman  and  Henry  Howard  Greenway  and  Arthur  How- 
ard Higgins,  all  of  London,  obtained  another  patent  in 
the  United  States,  and  in  1914,  Greenway,  then  of  Mel- 
bourne, Australia,  obtained  a  third  patent  in  the  Unit^ 


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514         Journal  of  the  Patent  Office  Society. 

ed  States,  the  latter  two  patents  involving  the  same  pro- 
cess as  the  first  one,  but  including  improvements  there- 
on. These  patents  run  for  a  period  of  17  years  from 
their  respective  dates. 

In  1905,  and  before  the  first  United  States  patent  was 
obtained,  the  patentees  obtained  a  patent  in  England 
exactly  similar  to  the  first  United  States  patent.  The 
validity  of  the  English  patent  was  attacked  in  the  Eng- 
lish courts,  but  was  sustained  by  the  House  of  Lords. 
(Minerals  Separation  (Ltd.)  v.  British  Ore  Concentra- 
tion Syndicate  (Ltd.),  27  R.  P.  C,  33.) 

In  1903,  Minerals  Separation  (Ltd.),  which  will  be 
hereafter  designated  as  the  parent  company,  was  form- 
ed under  the  English  law.  The  three  United  States  pat- 
ents were  assigned  to  this  company. 

In  1910,  the  parent  company  having  acquired  the  Unit- 
ed States  patents,  and  similar  patents  obtained  in  Can- 
ada and  Mexico,  conveyed  these  patents  to  a  corporation 
called  Minerals  Separation  American  Syndicate  (Ltd.), 
for  the  purpose  of  enabling  the  American  syndicate  to 
exploit  these  patents  in  America.  This,  too,  was  an  Eng- 
lish corporation. 

In  1911  the  American  syndicate  made  a  contract  with 
Beer,  Sondheimer  &  Co.,  whereby  it  gave  to  that  firm 
the  exclusive  agency  to  represent  the  syndicate  in  Amer- 
ica. For  reasons  which  are  unimportant  to  the  present 
inquiry,  this  first  American  syndicate  was  soon  dissolved 
and  a  new  syndicate  was  formed,  called  Minerals  Sepa- 
ration American  Syndicate  (1913)  (Ltd.).  This,  too, 
was  a  British  company.  The  1913  syndicate  renewed 
the  agency  agreement  of  Beer,  Sondheimer  &  Co.,  and 
appointed  that  firm  sole  agents  to  conduct  all  of  the  syn- 
dicate's  commercial  affairs  in  the  United  States,  Canada, 
and  Mexico,  the  agency  to  continue  for  a  minimum  pe- 
riod of  10  years  with  a  provision  for  renewal  for  the 
rest  of  the  life  of  the  patents.  Beer,  Sondheimer  &  Co. 
were  to  receive  a  commission  of  10  per  cent  of  all  gross 
royalties  received  for  the  use  of  the  patents  and  10  per 
cent  on  all  profit-sharing  business  (the  syndicate  intend- 
ing not  only  to  give  licenses,  but  also  to  buy  up  and  treat 
ores),  and  also  a  percentage  as  a  commission  of  the  sale 
of  products  so  treated  by  the  syndicate. 

When  the  agency  agreement  was  made  Beer,  Sond- 
heimer &  Co.  had  an  American  branch  of  it^  business  in 


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Journal  of  the  Patent  Office  Society.         515 

New  York  City,  which  was  in  charge  of  Benno  Elkan 
and  Otto  Frohnknecht,  and  was  being  conducted  under 
the  name  of  Beer,  Sondheimer  &  Co.,  American  branch. 
The  parties  entered  into  the  performance  of  the  agree- 
ment, and  inasmuch  as  most  if  not  all  of  the  business 
was  done  in  the  United  States  the  agent's  end  of  the 
business  was  conducted  by  the  American  branch  of  Beer, 
Sondheimer  &  Co. 

In  addition  to  having  the  exclusive  agency.  Beer,  Sond- 
heimer &  Co.  w^ere  also  stockholders  of  the  1913  syndi- 
cate, owning  32,615  shares  of  said  stocfc  In  1916  the 
property  of  the  1913  syndicate  was  conveyed  to  an  Amer- 
ican corporation  called  Minerals  Separation  North  Amer- 
ican Corporation,  and  each  stockholder  became  entitled 
to  two  shares  of  the  American  corporation's  stock  for 
each  share  of  the  1913  syndicate  stock. 

The  importance  of  the  control  by  this  German-owned 
branch  of  Beer,  Sondheimer  &  Co.  of  the  minerals-sepa- 
ration process,  and  the  power  to  grant  or  withhold  from 
the  United  States  metal-industry  licenses  to  use  the  flo- 
tation process,  can  hardly  be  overestimated.  The  Cus- 
todian, as  will  be  pointed  out  later,  has  taken  over  all  of 
the  minerals-separation  stock  held  by  Beer,  Sondheimer 
&  Co.,  and  the  latter 's  control  of  the  minerals-separation 
process  in  the  United  States  has  broken. 

When  the  Bayer  company  was  sold,  the  Alien  Proper- 
ty Custodian  reserved  from  the  sale  four  patents  and 
three  applications  relating  to  a  composition  used  for 
airplane  **dope"  and  sold  the  property  subject  to  an 
agreement  on  the  part  of  the  purchaser  to  issue  to  the 
Bureau  of  Aircraft  Production  a  license  and  release  of 
all  claims  for  damages  for  past  infringement  under 
such  letters  patent  and  applications,  at  a  price  to  be 
agreed  on  between  the  Alien  Property  Custodian  and 
the  Aircraft  Production  Board.  The  Alien  Property 
Custodian  is  now  cooperating  with  the  Ordnance  Depart-* 
ment  and  other  departments  of  the  Government  to  effect 
the  conveyance  to  such  departments  of  all  enemy-owned 
patents  which  may  be  required  for  their  future  opera- 
tions, and  to  release  these  departments  from  claims,  for 
past  infringement  of  enemy-owned  patents.  As  soon  as 
these  departments  furnish  the  Alien  Property  Custodian 
with  the  necessary  information,  the  patents  desired  by 
the  departments  will  be  immediately  seized  and  convey- 


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516        Journal  of  the  Patent  Office  Socibtt. 

ed  to  them,  or  licenses  and  releases  will  be  issued,  as 
the  case  may  require.  It  is  hoped  that  all  of  the  depart- 
ments of  the  Qovemment  will  take  advantage  of  the  pos- 
sibility of  extinguishing  daims  for  infringement  and  se- 
curing immunily  for  further  manufacture  provided  by 
the  act 

It  is  hoped  that  other  industries  which  may  be  injur 
riously  anected  by  enemy-owned  patent  monopolies  in 
the  same  manner  as  the  dye  and  chemical  industries  will 
endeavor  to  take  similar  action,  and  in  this  way  assist ' 
in  the  Americanization  of  ilieir  industries  and  tiieir  re- 
lief from  enemy-owned  patent  monopoly. 

Other  classes  of  property  handle  by  the  Division  of 
Paints  have  als)D  considerable  importance  and  have 
produced  substantial  payments  by  way  of  royalties. 

The  trade-mark  property  of  enemies  in  this  country 
has  been  quite  extensive,  particularly  in  the  drug  indus- 
tries, and  the  sums  paid  by  Americans  for  the  use  of 
such  enemy  trade-marks  in  the  United  States  has  at- 
tained very  substantial  amounts*  A  notable  case  of  this 
character  is  the  trade-mark  **Pebeco,''  under  whicdi  roy- 
alties aggregating  $157,033.50  have  been  collected  up  to 
the  present  time. 

Copyrights,  particularly  pdays  and  musical  composi- 
tions, have  also  been  a  considerable  source  of  revenue. 

There  are  printed  in  the  appendix  certain  schedules 
showing  respectively  patents  conveyed  to  the  Govern- 
ment either  by  direct  sale  or  the  sale  of  the  stock  of  a 
corporation  controlling  such  patents,  and  patents  under 
which  the  Government  has  been  released  from  claims; 
patents  relating  to  businesses  which  have  been  sold  to  the 
American  purchasers  of  such  businesses;  patents  owned 
by  corporations,  the  stock  of  which  was  enemy  owned 
and  has  been  seized  by  the  Alien  Property  Custodian, 
but  not  yet  sold ;  and  license  fees  collected  under  prewar 
'licenses  given  by  owners  of  patents  and  under  licenses 
granted  by  the  Federal  Trade  Conunission  since  the  be- 
ginning of  the  war.  The  schedules  do  not,  however,  in- 
dude  upwards  of  4,000  patents  and  trade-marks  con- 
veyed to  The  Chemical  Foundation,  Inc.,  it  having  been 
impossible  to  complete  the  listing  of  these  patents  and 
trade-marks  up  to  the  present 


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JOUBNAL  OF  THE  PaTBKT  OfFICT  SoCIBTT.  517 

ANOTHER  PLAN. 

—m— 

The  following  interesting  plan  for  increasing  the  rev^ 
ennes  of  the  Patent  Office  has  been  suggested  by  one  of 
our  readers : 

■  According  to  the  latest  statistics  there  are  about 
40,000  patents  granted  every  year  by  the  U.  S.  Patent 
Office.  It  would  be  safe  to  consider  5%  of  them  as  suc- 
cessful ones,  which  means  that  about  2,000  patented  ar- 
ticles or  processes  are  brought  on  the  market  every  year 
which  bring  a  profit  to  the  inventor  or  his  assignee, 
either  in  royalties  or  through  protection  against  compe- 
tition. Let  us  assume  that  the  average  clear  profit, 
through  the  patent-granted  protection,  of  these  2,000 
successful  patents  would  only  bring  $2,000  a  year  each 
(in  reality  the  average  must  be  much  greater,  since 
there  are  individual  patents  bringing  to  their  owners 
more  than  a  million  yearly). 

My  suggestion  is  that  an  amendment  be  made  to  the 
present  laws  whereby  the  owner  of  the  patent  could  ob- 
tain an  extension  of  the  grant  for  one  year  on  condition 
that  he  divide  the  profits  accruing  directly  from  the 
patent  protection  with  the  Government.  Application 
would  be  made  before  the  expiration  of  the  original 
term,  setting  forth  under  oath  that  at  the  end  of  the 
yearns  extension,  a  true  record  and  statement  of  all  the 
profits  derived  directly  from  the  patent  protection  (not 
profits  of  the  regular  business  course)  would  be  furnish- 
ed. 

If  only  half  of  the  2,000  successful  patent  owners 
would  take  the  opportunity  of  this  option  of  extending 
the  term  and  file  for  an  extension,  and  if  their  average 
yearly  profit  from  the  patent  was  considered  at  $2,000, 
that  would  mean  a  yearly  income  to  the  Patent  Office  of 
1^1,000,000. 

You  can  see  how  simple  such  a  plan  will  be  and  how  a 
continuous  flow  of  money  will  come  in  to  the  Patent  Of- 
fice without  even  having  to  go  to  Congress  begging  for 
it. 

It  is  clear  that  where  royalties  are  paid  out  and  re- 
ceived on  patents,  the  50  per  cent,  or  whatever  it  may 
be,  could  easily  be  figured  out  and  collected  at  the  end 
of  the  extended  year.    But  certain  difficulties  will  arise 


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518  JotTBNAL  OF  THE  PaTBNT  OfPIOB  SoCDBTY, 

when  it  comes  to  ascertainihi?  how  much  is  the  profit  de- 
rived from  a  patent  due  only  to  the  protection  against 
competition  and  not  including  the  regular  business 
profits. 

What  I  have  outlined  here  are  only  hints  and  far  from 
a  concrete,  perfect  plan  of  how  the  amended  law  should 
be  framed  and  worked  to  the  best  advantage  of  all  con- 
cerned— Patent  Office,  patent  owner  and  the  public. 

It  might  be  necessary  to  extend  the  term  for  more 
than  one  year,  or  to  make  the  extension  obligatory  with 
a  fixed  small  per  cent,  of  the  gross  profits  derived  direct- 
ly  from  the  patented  article  during  the  extended  term, 
or  any  other  agreement  suitable  to  all  parties  and  the 
public.  Of  course,  I  do  not  mean  compulsory  working 
of  the  patent  in  the  extended  year.  The  United  States 
patent  law  should  be  kept,  as  it  is  now,  the  most  liberal 
system  in  the  world  in  this  respect. 

How  much  progress  and  improvement  the  Patent  Of- 
fice would  be  able  to  make,  if  plenty  of  money  for  it 
were  obtainable,  I  do  not  need  to  state.  You  faiow  best, 
and  in  publishing  the  above  suggestion,  you  will  have  a 
chance  to  dwell  more  fully  upon  this. 

One  more  thing  I  want  to  point  out  is — if  such  a  policy 
should  be  adopted,  indirectly  a  complete  record  of  suc- 
cessful patents  in  the  U.  S.  would  be^  available,  which 
would  be  of  great  service  to  industries  and  the  Govern- 
ment. 

Isaiah  N.  Zellbr. 


BOOK  REVIEW. 

The  Bobbs-Merrill  Company,  Indianapolis,  Indiana, 
has  just  published  Barnes'  Federal  Code,  a  complete 
compilation  of  all  U.  S.  Statutes  of  a  general  nature  in 
force  in  January,  1919,  a  handy  one  volume,  flexible, 
gilt  edge  edition,  edited  by  Uriah  Barnes,  and  printed 
on  opaque  Bible  paper,  in  clear  readable  type.  The  Re- 
vised Statutes,  Statutes  at  Large,  Session  Laws,  and 
Slip  Laws  necessarily  contain  many  acts  that  duplicate 
or  repeal  former  acts.  In  eliminating  such  laws  not  in 
force,  and  in  logically  classifying  the  laws  according  to 
subject-matter  on  the  basis  of  the  Revised  Statutes  and 
Statutes  at  Large,  the  editor,  together  with  his  able  as- 


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JotTBN'AL  OF  THE  PaTBNT  OpFICE  SoGIETY,  519 

sistants,  lias  given  a  valuable  compilation  to  the  busy 
lawyer  who  wants  to  know  the  law  and  where  to  find  it 
in  the  easiest  and  quickest  manner,  for  in  the  compre- 
hensive index  the  headings  are  arranged  in  a  manner  to 
aflford  ready  access  to  the  statutes. 
.  It  contains  the  Judicial  and  Criminal  Codes  and  the 
recent  war  legislation  and  tax  laws. 

Eeaders  of  the  Journal  will  be  particularly  interest- 
ed in  the  chapter  entitled  Patents,  Trade-Marks  and 
Copyrights,  and  in  the  index  of  laws  under  their  popular 
names  in  which  we  find  such  familiar  terms  as  the  Adam- 
son  Act,  Overman  Act,  Espionage  Act,  Federal  Reserve 
Act,  etc. 

The  historical  notes  on  the  Constitution  of  the  United 
States  present  a  choice  collection  of  interesting  and  valu- 
able items  of  information,  that  enable  the  reader  to  de- 
termine instantly  the  parts  of  the  Constitution  that  have 
been  modified  or  superseded  by  amendments. 

m : 

OF  PERSONAL  INTEREST. 

We  regret  to  record  the  death  of  Dr.  Loren  A.  Sadler 
which  occurred  May  8  after  an  illness  of  several  months. 
Dr.  Sadler  was  formerly  primary,  examiner  in  charge  of 
Div.  12  and  resigned  March  12  of  this  year.  He  was  ap- 
pointed July  1,  1898  from  Cleveland,  Ohio,  and  was  pro- 
moted through  the  several  grades  to  his  last  position, 
which  he  attained  Nov.  16,  1914.  He  had  been  in  Div.  12 
as  assistant  examiner  since  October,  1900  and  had  a  thor- 
ough knowledge  of  all  the  work  handled  therein,  which 
has  been  exceptionally  heavy  the  past  few  years.  He 
was  considered  a  most  excellent  chief  and  examiner  and 
his  death  is  counted  a  personal  loss  by  his  very  many 
friends  in  the  Ofiice. 

Further  recent  losses  to  the  Examining  Corps  may  be 
chronicled  as  follows : 

Mr.  Victor  Cobb,  second  assistant  examiner,  resigned 
May  1  to  enter  the  employ  of  the  United  Shoe  Machinery 
Co.,  at  Boston,  at  a  largely  increased  salary.  Mr.  Cobb 
was  appointed  fourth  assistant  examiner,  from  Massa- 
chusetts, on  Dec.  1,  1909,  and  made  second  assistant  Aug. 


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520        JousKAii  OF  THE  Patbnt  Offiob  Socibtt. 

24,  1916;  his  service  was  continuous  in  Div.  4  and  Ids 
place  will  be  difficult  to  fill. 

Mr.  A.  M.  Pederson,  third  assistant  examiner,  also  re- 
signed May  1 ;  he  has  entered  the  employ  of  Mr.  S.  B. 
Prentiss,  patent  attorney,  of  this  city,  yielding,  like  so 
many  others,  to  the  allurement  of  increased  salary.  Mr. 
Pedersen  was  a  native  of  Denmark;  appointed  to  the 
Examining  Corps  July  1,  1916  from  Connecticut,  and 
promoted  to  third  assistant  examiner  July  3,  1918.  He 
resigned  on  the  same  day  to  enter  the  military  service^ 
in  which  he  remained  until  reappointed  to  the  Office  on 
Dec.  12,  1918,  He  was  a  trained  chemist  and  served  in 
Div.  31. 

Mr.  George  G.  Hyde,  another  third  assistant  examin- 
er, resigned  May  10,  going  to  New  York  City  to  enter 
the  employ  of  Meyers,  Cushman  &  Rea,  of  course  at  an 
increased  salary,  and  with  excellent  prospects.  Mr.  Hyde 
is  a  member  of  the  New  York  bar.  He  was  appointed  to 
the  Office  May  14, 1917  and  promoted  Feb.  16, 1918.  With 
the  exception  of  about  three  months  spent  in  the  military 
service  last  fall,  he  has  been  in  Div.  24  since  appointment. 

Mr.  Merrill  M.  Blackburn,  a  second  assistant  examin- 
er, resigned  May  31  to  associate  himself  with  Parkm- 
son  &  Lane,  of  Chicago.  As  he  originally  came  from  the 
West  (Iowa),  this  is  going  back  home,  to  hinu  He  was 
appointed  Dec.  8,  1908  and  made  second  assistant  Nov. 
2,  1914.  He  served  in  Divs.  7,  27  and  3  and  was  well 
known  throughout  the  Corps. 

WANTED 

SITUATION  IN  OFFICE  OF  PATENT  LAWYER. 

QnaMflcatioins: 

Two  years  experience  in  patent  wort 

Thorough  scientific  training. 

Two  years,  George  Washington  University  Law  School 

Age,  twenty-seven  years. 

Address :  A.  B., 

Care,  Journal  of  the  Patent  Office  Society, 

1315  Clifton  St.,  Washington,  D.  C. 


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'    ^         jmm..mmwm~, 


'"'m 


Henry  L.  Ellsworth, 
llie  First  Commisfiioner  of  Patents, 


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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. 
Snbscription  $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.  DaTldson. 

W.  I.  Wyman. 

W.  J.  Wesseler,  Business  Manager,  (Room  212,  U.  S.  Patent  Office,) 

1315  Clifton  Street,  Washington,  D.  C.     Phone  Col.  290. 
N.  £.  Eccleston,  Circulation. 

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  slgrned  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.  JULY,   1919.  No.   11. 


EDITORIAL. 


OAMPAiaN   NOTES. 


It  is  with  great  pleasure  we  call  attention  to  the  report 
of  the  Committee  on  Patents  of  the  National  Association 
of  Manufacturers  presented  at  the  twenty-fourth  annual 
meeting  at  New  York  in  May. 

This  report  favorably  reviews  the  work  of  the  Patent 
Committee  of  the  National  Research  Council  and 
approves  with  emphasis  the  remedial  legislation  pro- 
posed by  the  Council  committee.  The  members  of  the 
Manufacturers'  committee,  Milton  Tibbetts,  chairman, 


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522         JouRNAii  OP  THE  Patbnt  Opfioe  Society. 

with  Arthur  C.  Fraser  and  Nathan  B.  Williams,  express 
their  belief  that  the  bills  creating  a  single  court  of  patent 
appeals,  making  the  Patent  Office  a  separate  institution, 
and  providing  for  increases  in*  the  force  and  salaries  of 
the  Patent  Office,  by  proper  presentation  to  Congress, 
can  be  placed  on  the  statute  books  at  this  next  session. 

The  report  is  printed  in  pamphlet  form  and  has 
appended  thereto  the  Council  Committee  report  and  the 
proposed  bills  to  carry  into  effect  the  recommendations 
in  said  report. 

Our  own  campaign,  the  inauguration  of  which  was 
sketched  in  the  editorial  column  of  the  June  number  of 
the  JouBNAL,  appears  to  be  making  its  impression.  At 
the  moment  of  writing,  about  fifty  replies  have  come  in 
from  engineers,  inventors  and  others,  voicing  approval 
of  the  campaign  and  giving  evidence  of  support.  Many 
letters  enclose  copies  of  communications  already  sent  to 
Congressmen,  and  a  few  favorable  replies  from  the  latter 
are  already  on  record. 

Among  those  manifesting  special  interest  may  be  men- 
tioned— 

Miller  Reese  Hutchison,  Asst.  to  the  Presi- 
dent, Naval  Consulting  Board. 
John  Hays  Hammond,  Jr.,  Inventor  and  En- 
gineer. 
W.  A.   DoBLE,   Pres.,   Doble   Laboratory,   San 

Francisco. 
William  J.  Kent,   Development  Dept.,  U.   S. 
Rubber  Co. 

Examiner  Giles,  who  has  taken  Mr.  TuUar's  place  at 
the  head  of  the  subcommittee  on  publicity,  reports 
encouragingly  on  the  progress  of  the  campaign,  citing 
specifically  the  example  of  an  attorney  at  the  head  of  the 
patent  department  of  one  of  the  largest  electrical  and 
manufacturing  industries  in  the  country,  who  has  brought 
this  matter  to  the  attention  of  the  Electrical  Manufac- 
turers' Club  at  a  recent  meeting  in  Hot  Springs,  Va. 

The  subcommittee  proposes  to  continue  the  distribu- 
tion of  literature  to  persons  likely  to  be  interested  or 
who  could  be  influential  with  members  of  Congress;  it 
asks  suggestions  from  readers  of  the  Joubnal,  identify- 
ing  such  persons. 


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Journal  of  the  Patent  Office  Society,         523 

The  campaign,  so  auspiciously  begun,  must  be  followed 
up  unremittingly;  especially  must  efforts  be  made  to 
acquaint  the  committees  on  Patents  and  on  Appropria- 
tions in  both  Houses  of  Congress  with  the  standing  and 
condition  of  the  patent  system  and  the  Patent  Office  and 
the  nature  and  necessity  of  the  proposed  legislation. 

In  the  September,  1918,  number  of  the  Journal  of  the 
American  Ceramic  Society^  published  at  Easton,  Pa., 
appeared  an  editorial  on  the  patent  situation,  reflecting 
rather  severely  on  the  work  of  the  Patent  Office,  alleging 
the  grant  of  many  invalid  patents  relating  to  the  cer- 
amic art. 

In  the  April,  1919,  number  of  the  same  journal  there 
is  printed  an  answer  to  the  editorial  by  Assistant  Exam- 
iner George  E.  Middleton,  who  is  a  trained  ceramic  engi- 
neer. The  answer  admits  the  need  of  some  reforms, 
explains  the  function  and  working  of  the  Patent  Office, 
and  improves  the  opportunity  to  set  forth  the  present 
plans  for  improving  the  system  and  helping  the  Office. 
Attention  is  called  to  this  work  by  Mr.  Middleton  in  the 
hope  that  others,  examiners  and  attorneys,  may  be 
prompted  to  meet  any  attack  on  the  patent  system  or 
Office  by  a  similar  reply.  Any  publication  printing  an 
** attack''  will  doubtless  be  willing  to  publish  an  ** an- 
swer." 


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524        JouBNAii  OF  THE  Patbnt  Officb  Society. 
HENRY  L.  ELLSWORTH, 

The  First  CommisBioiier  of  Patents. 

— m— 
By  William  I.  Wyman. 

— m— 

On  May  12,  1835,  Henry  L.  Ellsworth  of  Hartford, 
Connecticut,  was  appointed  Superintendent  of  Patents. 
He  was  the  last  incumbent  of  that  office.  The  Act  of 
1836  instituted  the  present  modern  examination  system, 
drastically  revised  the  organization  and  procedure,  and 
created  the  office  of  Commissioner  of  Patents.  Mr.  Ells- 
worth became  the  first  occupant  of  this  position  and  it 
devolved  upon  him  to  initiate  the  policy  under  the  new 
law  and  to  found  and  develop  an  entirely  new  organi- 
zation. 

It  is  doubtful  if  a  better  selection  for  the  position 
could  have  been  made.  He  had  successfully  filled  the 
office  which  the  Act  of  1836  abolished,  and  as  Superin- 
tendent had  substituted  order  for  chaos  in  a  department 
which,  while  frequently  administered  with  brilliancy  and 
considerable  effectiveness,  had  never  before  his  advent 
been  conducted  in  an  orderly,  scientific,  business-like 
manner.  His  previous  training,  interests  and  education 
particularly  fitted  him  for  the  assumption  of  his  new 
duties. 

Henry  L.  Ellsworth  was  born  in  Windsor,  Conn.,  No- 
vember 10,  1791.  His  father  was  Oliver  Ellsworth,  a 
member  of  the  Constitutional  Convention  and  proposer 
of  the  title  ** Government  of  the  United  States"  in  sub- 
stitution for  ^* National  Government"  in  the  Constitu- 
tion, the  leader  of  the  Federalist  party  in  the  national 
Senate,  and  a  Chief  Justice  of  the  United  States  Supreme 
Court  under  Washington.  Not  only  was  his  father  identi- 
fied with  the  early  history  of  the  country,  but  his  twin 
brother,  William  Wolcott  Ellsworth,  was  also  prominent 
politically,  having  been  Governor  of  Connecticut. 

It  was  natural,  then,  for  Henry  L.  Ellsworth  to  follow 
a  public  career.  After  graduating  from  Yale,  studying 
law,  practicing  the  profession,  engaging  in  farming,  and 
then  pursuing  a  commercial  occupation,  he  accepted  an 


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JouBNAi.  OF  THE  Patbnt  Officb  Sooibty.         525 

appointment  from  President  Jackson  as  Chief  Commis- 
sioner of  Indian  Tribes  in  1832.  He  made  several  jour- 
neys during  the  occupancy  of  this  office  to  the  Rocky 
Mountains,  being  accompanied  at  one  time  by  Washing- 
ton Irving,  who  found  then  material  for  his  ^*Tour  on  the 
Prairies.'^ 

Mr.  Ellsworth  was  notified  of  his  appointment  as  Com- 
missioner of  Patents  on  July  6,  1836,  and  immediately 
thereafter  entered  upon  his  new  duties.  The  Office  force 
consisted  of  one  examiner  and  six  other  subordinate 
clerks  and  employees.  But  the  business  grew  so  rapidly 
that  an  additional  examiner  had  to  be  taken  on  the  next 
year.  The  business  still  groMring,  it  was  necessary  in 
1839  to  enlarge  the  staff  by  the  creation  of  the  positions 
of  two  assistant  examiners. 

Before  the  new  Commissioner  had  opportunity  to 
adjust  himself  to  the  new  conditions  a  fire  destroyed  all 
the  records,  models  and  papers  of  the  Patent  Office  on 
December  14,  1836.  Congress  provided  for  the  restora- 
tion of  the  records,  and  through  the  cooperation  of  the 
clerks  of  the  United  States  courts  and  the  activity  of  a 
committee  appointed  to  provide  models  of  the  more 
important  inventions,  the  process  of  restoration  was 
completed,  although  not  in  Ellsworth's  administration. 

Fortunately,  Congress  had  previously  provided  for 
the  erection  of  a  new  Patent  Office  building.  This  struc- 
ture was  completed  in  1840  and  is  the  front  or  F  street 
wing  of  the  present  building.  In  connection  with  the 
display  of  models,  which  entailed  the  occupation  of  much 
space  in  the  building.  Congress  in  the  Act  of  1836  made 
mention  of  a  National  Gallery.  In  1842,  Commissioner 
Ellsworth  says  in  a  report  to  Congress  that  **The  build- 
ing can  also  afford  room  for  lectures  by  professors 
*  *  *  I  can  confidently  say  that  the  agricultural 
class  look  forward  *  *  *  to  the  time  when  the  sons 
of  agriculturalists,  after  years  of  toil  at  the  plough,  can 
attend  a  course  of  lectures  at  the  seat  of  Government 
and  there  ♦  ♦  •  acquire  such  knowledge  of  chemis- 
try and  the  arts  as  will  enable  them  to  analyze  the  dif- 
ferent soils  and  apply  agricultural  chemistry  to  the 
greatest  effect." 

This  concern  for  the  ''sons  of  agriculturalists '*  was  no 
adventitious  display.    By  law,  the  Commissioner  of  Pat- 


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526         JouENAii  OF  THE  Patent  Office  Society. 

ents  was  also  bound  to  report  such  agricultural  statis- 
tics as  he  may  collect.  In  conformity  with  this  require- 
ment, the  Commissioner  performed  many  of  the  duties 
now  exercised  by  the  Department  of  Agriculture,  and 
the  annual  reports  of  those  days  gave  much  more  space 
to  this  side  of  the  activities  of  the  Commissioner  of  Pat- 
ents than  to  the  titular  aspect  of  his  position. 

In  one  year  he  examined  the  crops  in  ten  States.  He 
traveled  extensively  in  pursuit  of  his  duties  and  he 
inspected  conditions  with  an  expert  eye.  He  was  inti- 
mately acquainted  with  every  angle  of  this  field,  and 
his  annual  reports  are  compendiums  of  useful  knowledge, 
reviews  of  conditions,  and  advice  in  every  branch  of  this 
large  subject.  The  statistical  presentation  consisted  of 
prices  of  staples  in  all  the  world's  markets,  estimates 
of  crops,  tables  of  customs  duties  and  a  mass  of  varied 
tabulated  information.  His  own  knowledge  was  exten- 
sive and  he  entered  into  a  vast  correspondence  upon 
every  subject  relating  to  agriculture  and  allied  activi- 
ties. He  reviewed  all  technical  advances  in  these  arts 
and  was  especially  interested  in  the  application  of  chem- 
ical processes  to  the  improvement  of  the  soil  and  for  the 
production  of  larger  and  more  varied  crops.  He  was 
thus  happily  fitted  to  ornament  this  particular  depart- 
ment of  his  duties,  so  incongruously  associated  by  law 
with  the  legal  and  technical  office  of  examining  and 
issuing  of  patents. 

Embodied  in  some  of  his  annual  reports  were  the  indi- 
vidual reports  of  the  two  examiners,  who,  with  the  two 
assistants,  comprised  the  examining  corps  at  that  time. 
One  dated  January  31,  1844,  and  signed  by  Examiner 
Charles  M.  Keller,  was  of  particular  merit  and  interest. 
The  arts  Keller  examined  comprised  the  following  fields  r 

1.  Metallurgy  and  Manufacture  of  Metals. 

2.  Manufacture  of  Fibrous  and  Textile  Substances. 

3.  steam  and  Gas  Engines. 

4.  Navigation  and  Marine  Implements. 

5.  Ciyil  Engineering  and  Arohitecture. 

6.  Lfand  Conveyance. 

7.  Milling  and  all  Kinds  of  Mills. 

8.  Machines  for  Manufacturing  and  Working  Lumber. 

9.  Firearms  and  Implements  of  War. 
10.  Miscellaneous. 

That  Examiner  Keller's  concern  in  his  duties  was  not 
as  attenuated  as  his  arts  were  far-flung  and  diversified 


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JouBNAii  OF  THE  Patbnt  Office  Sooiety.         527 

is  at  once  demonstrated  in  the  sixty  solid  printed  pages 
of  substantially  presented  and  well-digested  facts  of  his 
report.  The  technique  of  each  art  is  well  explained,  its 
history  interestingly  told,  and  the  progress  and  present 
condition  thereof  for  the  period  of  the  report  placed  on 
the  record.  The  remainder  of  all  the  arts  is  similarly 
covered  in  the  report  of  Examiner  Page.  Together  they 
present  a  startling  commentary  of  the  extent  of  their 
duties  and  versatility  of  their  requirements.  The  pay 
of  an  examiner  was  then  $1500,  and  although  the  pur- 
chasing power  of  the  dollar  was  from  three  to  four  times 
what  it  is  today,  Commissioner  Ellsworth  was  obliged  to 
plead  with  one  of  these  examiners  not  to  resign  his  posi- 
tion in  order  to  enter  private  practice  to  increase  his 
income.  In  Ellsworth's  own  words — **Deep  study  and 
knowledge  of  different  languages,  a  minute  acquaint- 
ance with  the  arts  and  sciences,  are  all  required  to  fit 
an  individual  for  the  office  of  examiner,''  making  it 
appear  that  there  is  something  inherent  in  the  patent 
system  in  this  anomalous  association  of  large  require- 
ments and  low  rewards  for  this  position. 

During  Ellsworth's  administration  the  vulcanization 
of  rubber  and  the  electric  telegraph  were  invented  and 
patented.  The  latter  made  a  profound  impression  upon 
him,  and  in  two  of  his  reports  he  gave  a  detailed  and 
illustrated  account  of  Morse's  creation.  He  sensed  its 
importance  at  once  and  made  bold  to  say:  ** Among  the 
most  brilliant  discoveries  of  the  age,  the  electric  mag- 
netic telegraph  demands  a  conspicuous  place;  destined, 
as  it  is,  to  change  as  well  as  to  hasten  transmission  of 
intelligence  and  so  essentially  affect  the  welfare  of  soci- 
ety, and  all  that  concerns  its  further  developments  will  be 
hailed  with  joy. 

*^  Imagination  can  scarcely  conceive  what  is  now 
accomplished  by  the  electric  fluid,  when  confined  and 
tamed,  as  it  were,  to  the  purposes  of  life.  Thought  has 
found  a  competitor!  Nor  is  it  less  gratifying  that  this 
invention  is  American.  To  a  native  citizen  belongs  the 
merit  of  the  discovery  and  it  is  hoped  tliat  the  country 
of  his  birth  will  reward  him  accordingly." 

His  reports  show  that  he  desired  to  be  in  touch  with 
all  the  improvements  in  the  mechanical  arts,  often  travel- 
ing some  distance  to  see  a  demonstration  of  some  inven- 


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528         Journal  of  the  Patent  Office  Society. 

tion  or  the  operation  of  some  machine.  Whatever  prog- 
ress in  the  arts  comes  to  his  notice,  he  makes  it  public, 
as  the  information  he  obtained  about  '*  illuminating  the 
streets  of  Paris  by  means  of  the  Electric  Spark.''  Being 
of  a  reflective  turn  of  mind,  he  often  became  absorbed 
in  the  larger  aspects  of  his  interests,  which  led  him  into 
the  channels  of  speculative  thought  and  sometimes  into 
an  indulgence  of  prophesy.  The  juxtaposition  of  inter- 
ests in  things  mechanical  and  agricultural  asserted  itself 
when  he  predicted  the  cultivation  of  the  West  by  steam 
ploughs  and  machinery;  an  opinion  which  was  used  by 
contestants  of  his  will  in  an  attempt  to  prove  the  unsound- 
ness of  his  mind. 

That  Ellsworth  had  fairly  good  control  of  his  vision,, 
however,  and  that  he  could  demonstrate  that  his  imag- 
ination was  not  wholly  ungovernable,  was  indicated  in 
the  report  of  1844  when,  contemplating  the  astounding 
advances  made  in  the  mechanical  arts  during  his  life- 
time and  incumbency  of  office,  and  fearing  a  cessation 
of  all  endeavors  in  the  field  of  invention,  he  apprehend- 
ingly  said:  '^The  advancement  of  the  arts,  from  year  to 
year,  taxes  our  credulity  and  seems  to  presage  the  arri- 
val of  that  period  when  human  improvement  must  end."^ 
Which  shows  the  futility  of  endeavoring  to  visualize  the 
limits  of  man's  advance  into  the  fields  of  knowledge  and 
accomplishment. 

Since  that  time  a  new  world  has  arisen.  The  age  of 
steel  and  electricity  saw  its  beginnings  in  the  latter  half 
of  his  century,  and  the  internal  combustion  engine 
showed  its  possibilities  still  later.  The  telephone,  the 
aeroplane,  wireless  communication,  the  X-ray  machine, 
the  motion-picture,  the  phonograph,  are  things  that  Ells- 
worth, with  all  his  vision  and  interests,  could  no  more 
picture  than  he  could  with  certainty  visualize  the  prog- 
ress of  science  on  the  plant  Mars.  Whatever  fears  we 
may  have  of  the  consequence  of  the  new  social  orders 
which  follow  invention,  we  need  never  apprehend  the 
cessation  of  activity  in  the  field  of  applied  science. 

While  a  resident  of  Washington,  Ellsworth  was  a  mem- 
ber of  the  executive  committee  of  the  **  Colonization  So- 
ciety," organized  to  give  asylum  for  recaptured  Afri- 
cans and  to  provide  a  home  in  Liberia  for  emancipated 
slaves.     The  aim  of  the  society  was  not  political,  but 


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Journal  of  the  Patent  Office  Society.         529 

pnrely  philanthropical.  In  an  address  he  made  at  a  pub- 
lic meeting  to  further  the  purposes  of  this  society,  he 
showed  that  his  interests  were  not  exclusively  material. 
It  was  an  appeal  to  the  noblest  of  sentiments  and  was 
delivered  on  such  a  lofty  plane,  with  such  elevation  of 
tone,  and  with  such  charity  and  sympathy,  as  to  mark 
him  as  a  man  of  unusually  fine  character  and  deep  love 
for  humanity. 

In  1845  he  was  succeeded  as  Commissioner  by  Edmund 
Burke  and  became  Land  Commissioner  of  the  United 
States,  settling  at  Lafayette,  Indiana.  He  bought  exten- 
sive tracts  and  became  the  largest  landowner  and  farmer 
in  the  West.  Ill  health  caused  him  to  return  to  his  native 
state  in  1857,  where  he  died  on  December  27,  1858. 

The  first  of  his  line  graced  the  position  made  notable 
by  many  of  his  successors.  While  some  who  have  since 
occuped  the  ofiice  have  been  conspicuous  for  great  bril- 
liancy and  achivement,  none  can  dim  the  lustre  of  his 
reputation. 

In  the  ** Table  of  Important  Inventions,''  printed  on 
pages  445  to  447  of  the  May  number  of  the  Journal  of 
THE  Patent  Office  Society,  the  name  of  Carlton  Ellis, 
the  inventor  at  22  of  a  basic  discovery  for  a  varnish 
remover,  was  inadvertently  omitted  from  the  list  as  orig- 
inally published  in  the  Scientific  American  Supplement. 

It  has  also  come  to  our  attention  that  manganese  steel 
Avas  invented  by  Sir  Eobert  A.  Hadfield  at  the  age  of  22. 
While  the  table  above  noted  was  intended  to  be  illustra- 
tive of  certain  observations,  it  was  not  at  all  intended 
to  be  comprehensive.  But  inasmuch  as  Hadfield 's  inven- 
tion was  such  a  remarkable  discovery  in  the  field  of  fer- 
rous metallurgy,  exciting  the  admiration  of  the  whole 
technical  world,  and  is  so  strikingly  confirmatory  of  some 
of  the  conclusions  derived  from  this  table,  we  are  glad 
to  have  the  opportunity  of  making  this  interesting  addi- 
tion to  the  sum  of  knowledge  on  this  question. 


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530  JOUBNAL  OF  THE  PaTBNT  OfFICB  SoCIBTY. 

APPEALS  FROM   THE   COBnOSSIONER  TO   THE 

COURT  OF  APPEALS  IN  INTERFERENOES  ON 

QUESTIONS   OTHER  THAN  THE   ORDI- 

NART  QUESTIONS  OF  PRIORITY. 

(Data  Collected  by  Officials  of  the  Patent  Office.) 

—  in— 

Prior  to  the  creation  of  the  Court  of  Appeals  of  the 
District  of  Columbia  the  statute  provided  only  for 
appeals  from  a  decision  of  the  Commissioner  affirming 
a  decision  of  the  examiners-in-chief,  which  affirmed  a 
decision  of  the  primary  examiner  rejecting  the  claims  of 
an  application  (Sees.  4909,  4910,  4911).  The  act  creat- 
ing the  Court  of  Appeals  transferred  to  that  court  the 
appeals  which  were  formerly  heard  by  the  Supreme 
Court  of  the  District  of  Columbia  sitting  in  banc  and 
provided  also  that:  ^'Any  party  aggrieved  by  a  decision 
of  the  Commissioner  of  Patents  in  any  interference  case 
may  appeal  therefrom  to  said  Court  of  Appeals.'* 

The  question  soon  arose  whether  the  Court  of  Appeals 
would  consider  any  question  decided  by  the  Commis- 
sioner of  patents  in  an  interference  other  than  the  ordi- 
nary question  of  priority,  that  is,  the  question  who  made 
the  invention  first,  assuming  both  parties  to  have  made 
it  and  that  it  was  patentable. 

In  the  case  of  Westinghouse  v.  Duncan,  66  0.  G.,  1009 ; 

2  App.  D.  C.  131,  the  Court  of  Appeals  dismissed  an 

appeal  from  the  decision  of  the  Commissioner  denying 

a  motion  to  amend  the  issue.    In  the  case  of  Schupphaus 

V.  Stevens,  95  0.  G.,  1452;  17  App.  D.  C.  548,  the  ques- 

tion  was  raised  that  the  invention  was  not  disclosed  in 

Stevens's  application.     The  court  refused  to  consider 

this  question  and  in  its  decision  said: 

Under  all  these  circumstances,  we  do  not  consider  that  we 
are  authorized,  much  less  required,  on  this  appeal  to  review  this 
collateral  decision.  This  court  has  time  and  again  declared 
that  the  patentability  of  the  claims  of  the  contesting  parties,  in 
an  Interference  case,  is  not  involved;  the  question  for  deter- 
mination is  priority  of  invention. 

The  court  uniformly  refused  to  consider  the  question 
of  the  patentability  of  the  issue.  In  the  case  of  John- 
son V.  Mueser,  145  0.  G.,  764;  29  App.  D.  C,  61,  it  was 
argued  that  the  question  of  patentability  was  jurisdic- 
tional and  that  the  court  must  consider  it.     The  court 


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JouBNAii  OP  THE  Pat^nt  Offiob  Society.         531 

overruled  this  contention  and  a  writ  of  error  from  this 
decision  to  the  Supreme  Court  of  the  United  States  was 
dismissed  and  a  petition  for  a  writ  of  certiorari  denied. 

In  the  interference  of  Lowry  v.  Spoon  the  question 
arose  in  the  Office  whether  any  appeal  should  be  allowed 
from  a  favorable  decision  by  the  primary  examiner  on  a 
motion  to  dissolve  wherein  it  had  been  contended  that  the 
Lowry  device  was  inoperative.  The  Office  held  that  under 
the  rules  no  appeal  lay  and  a  petition  for  a  writ  of  man- 
damus to  compel  an  appeal  was  denied  by  the  Court  of 
Appeals  of  the  District  of  Columbia  (Allen  v.  U.  S.  ex  rel. 
Lowry,  116  0.  G.,  2253;  26  App.  D.  C,  8).  On  appeal 
this  decision  was  affirmed  by  the  Supreme  Court  of  the 
United  States. 

In  that  case  the  Court  of  Appeals  considered  at  length 
the  statutes  and  rules  of  the  Patent  Office  relating  to 
interferences  and  appeals  therein. 

The  court  in  its  discussion  said : 

From  the  foregoing  it  Is  apparent  that  interferences  were 
instituted  for  the  purpose  of  deciding  the  question  of  priority  of 
invention,  and  for  no  other  purpose,  and  It  logically  follows 
that  the  reviews  or  appeals  provided  were  to  be  from  the  decis- 
ions awarding  priority  by  the  officer  who  was  authorized  to 
decide  the  question  of  priority  in  the  first  instance. 

We  cannot  emphasize  too  strongly  that,  in  our  opinion,  the 
statutes  relating  to  interferences  only  provide  that  they  shall 
be  instituted  for  the  sole  purpose  of  determining  priority  of 
invention,  and  that  it  logically  follows  that  appeals  in  such 
proceedings,  so  far  as  the  statutes  go,  only  provide  for  appeals 
from  the  decision  of  priority. 

•      ••**• 

The  act  of  1893  which  created  this  court  provides,  that — 

Any  party  aggrieved  by  a  decision  of  the  Commis- 
sioner of  Patents  in  any  interference  case  may  appeal 
therefrom  to  said  court  of  appeals. 

We  have  construed  that  clause  to  refer  only  to  final  decisions 
by  the  Commissioner  in  interference  cases  and  have  refused  to 
take  Jurisdiction  and  decide  interlocutory  questions  sought  to 
be  brought  before  us  on  appeal  in  advance  of  an  appeal  taken 
in  such  cases  to  review  a  final  decision  awarding  priority  of 
invention.  As  we  said  in  Westinghouse  v.  Duncan  (C.  D.,  1894, 
170;  66  O.  G.,  1009;  2  App.  D.  C,  131),  in  referring  to  appeals 
allowed  by  the  statute: 

The  terms  of  the  statute  should  receive  a  reasonable 
interpretation  and  be  so  construed  as  to  avoid  multi- 
plying litigation  or  producing  unnecessary  delay  and 
expense  to  the  parties  concerned,  and  to  prevent,  as 
far  as  possible,  embarrassment  and  hindrance  to  the 
proceedings  in  the  Patent  Office. 

We  think  this  reasoning  applies  equally  to  appeals  in  ^he 
Patent  Office  in  interlocutory  proceedings  in  interferences. 


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•  •  •  whatever  right  a  party  to  an  interference  haa  to 
contest  the  right  of  his  adversary  to  make  the  interfering  claim, 
such  right  if  denied  is  reviewable,  if  at  all,  upon  the  final 
decision  of  the  question  of  priority,  and  such  right  of  appeal  as 
he  has  to  have  that  question  decided  is  to  be  considered  on  the 
hearing  of  the  statutory  appeals  allowed  from  the  decision  of 
the  question  of  priority  by  the  examiner  of  interferences. 

In  the  case  of  Pohle  v.  McKnight  the  examiner  of 
interferences  held  that  McKnight 's  application  as  filed 
contained  no  basis  for  the  claims  in  issue,  that  he  was 
not  the  inventor  of  the  process  in  issue  because  portions 
of  this  process  had  been  derived  by  McKnight  from  Pohle 
and  inserted  in  McKnight 's  application  by  unwarranted 
amendments.  The  examiners-in-chief  found  that  Pohle 
had  failed  to  overcome  the  filing  date  of  McKnight 's 
application  through  failure  to  establish  diligence.  They 
made  a  formal  award  of  priority  to  McKnight,  but  rec- 
ommended that  the  interf ertoce  be  dissolved  and  Pohle 's 
application  sent  to  patent  on  the  ground  that  McKnight 's 
application  as  filed  did  not  contain  a  proper  basis  for 
the  invention  in  issue.  The  Commissioner  in  a  decision 
rendered  October  31,  1905  (119  0.  G.,  2519)  reversed  the 
decision  of  the  examiners-in-chief  and  awarded  priority 
to  Pohle  on  the  ground  that  McKnight 's  application  as 
filed  did  not  disclose  the  invention. 

In  discussing  the  question  of  the  procedure  to  be  fol- 
lowed the  Commissioner,  after  referring  to  the  decision 
in  Allen  v.  U.  S.  ex  rel.  Lowry,  116  0.  G.,  2253;  26  App. 
D.  C.  8,  said: 

Whether  the  right  of  a  party  to  make  the  claim  in  inter- 
ference will  be  considered  by  the  court  on  appeals  from  the  final 
decisions  upon  priority  in  this  Ofl[ice  seems  to  be  an  open  ques- 
tion. Being  of  the  opinion  that  the  decision  of  priority  of 
invention  in  the  present  case  is  so  dependent  upon  McKnighf  s 
right  to  claim  the  invention  as  to  necessitate  consideration  of 
the  latter  in  the  proper  determination  of  the  former,  I  conclude 
that  my  finding  of  insufficiency  in  MoKnight's  patent  to  support 
an  award  of  priority  in  his  favor  will  be  best  carried  into  effect 
by  an  award  of  priority  of  invention  to  his  opponent. 

The  decision  of  the  examiners-in-chief  awarding  priority  of 
invention  to  McKnight  is  reversed  and  priority  of  invention  is 
awarded  to  Pohle. 

In  a  decision  rendered  June  4,  1907  (McKjiight  v. 
Pohle,  130  0.  G.,  2069;  30  App.  D.  C,  92),  the  Court  of 
Appeals  affirmed  the  decision  of  the  Commissioner,  with- 
out commenting  on  the  procedure. 

In  the  case  of  Podlesak  &  Podlesak  v.  Mclnnemey, 
120  0.  G.,  2127;  26  App.  D.  C,  399,  the  Court  of  Appeals, 


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Journal  of  the  Patbnt  Office  Society.         533 

after  referring  to  their  prior  holdings  that  they  would 
not  consider  the  question  of  the  right  to  make  the  daims 
in  interferences,  said: 

*  *  *  The  question  of  the  right  of  a  party  to  make  a  claim 
goes  to  the  very  foundation  of  an  interference,  for  if  the  party 
has  not  such  right  the  interference  falls.  If  it  be  incorrectly 
held  that  such  party  has  a  right  to  make  the  claim  priority 
may  be  awarded  to  him  and  his  adversary  be  deprived  of  a 
substantial  right  in  that  he  is  not  given  a  claim  where  he  neces- 
sarily is  the  prior  inventor,  his  adversary  never  having  made 
the  invention.  Manifestly  that  question  should  not  be  finally 
determined  by  the  primary  examiner  who  originally  declared 
the  interference.  We  therefore  take  Jurisdiction  to  determine 
that  question  in  this  case  as  an  ancillary  qustion  to  be  consid- 
ered in  awarding  priority  of  invention.     •     •     • 

The  decision  of  the  Commissioner  in  that  case  was 
neither  affirmed  nor  reversed,  but  the  case  was  remanded 
to  the  Commissioner  '^for  further  consideration  as  to 
the  identity  of  invention." 

In  the  case  of  Brown  v.  Hodgkinson  the  examiner  of 
interferences  had  recommended  to  the  Commissioner 
under  the  provisions  of  Rule  126  that  the  interference 
be  dissolved  on  the  ground  that  the  invention  in  issue 
was  not  disclosed  in  Hodgkinson 's  original  application. 
Commissioner  Allen,  in  a  decision  rendered  a  few  months 
after  the  decision  of  the  Podlesak  case  (123  0.  G.,  2973) 
held  that  if  an  interference  was  dissolved  on  the  ground 
of  no  right  to  make  the  claims  the  decision  could  be 
appealed  through  the  various  tribunals  of  the  Office,  but 
could  not  be  appealed  to  the  Court  of  Appeals,  whereas, 
if  priority  was  rendered  on  this  ground,  the  case  would, 
in  his  opinion,  be  appealable  to  the  court,  citing  as  his 
reasons  for  believing  that  such  an  appeal  would  be  enter- 
tained the  decision  in  the  Lowry  case,  supra,  and  the 
decision  in  the  Podlesak  case,  supra.  He  therefore  re- 
manded the  case  to  the  examiner  of  interferences,  with 
directions  to  enter  a  judgment  of  priority  **  according 
to  his  convictions  in  view  of  such  evidence  as  is  properly 
before  him,  including  the  applications  and  patents  of  both 
parties,"  but  stating  that  the  examiner  of  interferences 
would  not  consider  '' questions  affecting  Hodgkinson  ^s 
right  to  his  reissue  patent  which  do  not  affect  the  deter- 
mination of  priority  of  invention"  and  that  ^* considera- 
tion of  these  questions  is  reserved  until  the  question  of 
priority  has  been  fully  finally  determined." 

In  the  case  of  General  Railway  Signal  Co.  v.  Thullen, 


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534         Journal  of  the  Patent  Office  Society. 

142  0.  G.,  1116;  32  App.  D.  C,  575,  the  court  took  an 

appeal  from  a  decision  of  the  Commissioner  dissolving 

the  interference  as  to  certain  counts  on  the  ground  that 

the  invention  thereof  was  not  disclosed  in  the  application 

of  Townsend,  the  assignor  of  the  General  Railway  Signal 

Co.     In  this  case,  after  stating  that  the  Commissioner 

had  aflSrmed  the  decision  holding  that  Townsend  could 

not  make  the  claims,  the  sourt  said:    *^The  necessary 

result  is  an  award  of  priority  to  Thullen.'^ 

In  the  case  of  in  re  FuUagar,  138  0.  G.,  259;  32  App. 

D.  C,  222,  Fullagar  had  appealed  from  a  decision  of  the 

Commissioner  dissolving  the  interference  of  Fullagar  v. 

Emmet  on  the  ground  that  Fullagar  had  no  right  to  a 

reissue,  in  view  of  his  delay  and  his  lack  of  showing  of 

inadvertence,  accident  or  mistake.     Emmet  moved  to 

docket  the  appeal  as  Fullagar  v.  Emmet  and  allow  him 

to  be  recognized  as  a  party  and  to  dismiss  the  appeal. 

The  court  said: 

If  the  CommlBsioner  had  decided  that  Fullagar  was  not 
entitled  to  make  the  claim  under  his  application,  and  had,  in 
consequence,  awarded  priority  to  Emmet,  Fullagar  would  have 
the  right  to  appeal,  bringing  Emmet  up  for  a  final  adjudication 
of  the  question  of  priority  in  this  court.  Instead  of  so  deciding, 
the  effect  of  hie  decision  was  to  set  aside  the  allowance  of 
FuUagar's  application  as  an  entirety,  and  dissolve  the  inter- 
ference. 

But  we  cannot  recognize  the  right  of  the  Commissioner,  if 
he  so  intended,  to  convert  an  interference  case  into  an  ordinary 
proceeding  by  one  party  upon  an  application  for  a  patent,  which 
he  concludes  to  reject  without  an  award  of  priority  to  the  other 
party.  The  statute  prescribes  the  procedure  in  the  case  of  an 
application  for  a  patent  and  for  the  reissue  of  a  patent.  If 
the  application  be  rejected  by  the  primary  examiner,  he  must 
give  notice  of  the  same,  with  the  grounds  of  his  rejection,  to 
the  applicant,  who  has  the  right  to  answer  the  objections,  or 
obviate  them  if  poesible,  and  to  persist  in  his  application.  la 
that  event  he  is  entitled  to  a  re-examination  of  his  application. 
(R.  S.,  Section  4903.)  He  has  no  right  to  appeal  from  the  first 
rejection,  but  must  await  the  re-examination  and  a  second  rejec- 
tion thereafter.  Of  course,  no  interference  can  be  declared  in 
such  a  case  until  there  has  been  an  allowance. 

In  the  case  of  Gold  v.  Gold  v.  Cosper  the  Commissioner 
had  held  that  Cosper  had  no  right  to  make  the  claims, 
on  the  ground  that  the  invention  was  not  disclosed  in 
Cosper 's  application  as  originally  filed  and  that  the 
amendment  to  the  specification  and  drawing  constituted 
new  matter.  Appeal  was  taken  to  the  Court  of  Appeals 
from  this  decision,  which  appeal  was  dismissed  on  the 


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Journal  op  the  Patent  Office  Society.         535 

ground  that  there  had  been  no  final  award  of  priority 

(151  0.  G.,  194;  34  App.  D.  C,  194).    In  this  case  the 

court  said: 

We  have  had  occasion  heretofore  to  caU  attention  to  the  fact 
that  the  Jurisdiction  of  this  court  to  entertain  appeals  from 
the  Commissioner  of  Patents  is  limited  to  two  classes  of 
decisions,  namely,  a  final  rejection  of  an  application  for  a 
patent,  and  a  final  award  of  priority  to  one  of  the  parties  in 
an  interference  case.  (In  re  Fullagar,  C.  D.,  1909,  270;  138 
O.  O.,  259;  32  App.  D.  C,  222.)  It  has  been  settled  also  that 
the  question  of  the  right  of  a  party  in  an  interference  to  make 
the  claims  of  the  issue  is  one  that  may  be  raised,  decided,  and 
brought  up  as  an  ancillary  question  necessarily  involved  in 
that  of  priority.  (Podlesak  v.  Mclnnerney,  C.  D.,  1906,  568; 
120  O.  O.,  2127;  26  App.  D.  C,  399.)  The  order  dissolving 
the  interference  on  that  ground  is  itself  interlocutory  and 
cannot  be  appealed  from  independently  of  a  final  decision 
putting  an  end  to  the  litigation  through  an  award  of  priority 
to  the  rival  applicant.  When  that  final  award  has  been  made 
the  interlocutory  order  may  be  reviewed  in  an  appeal  there- 
from, but  not  otherwise.  (*See  Podlesak  v.  Mclnnerney,  8upra; 
in  re  Fullagar,  C.  D.,  1909,  270;  138  O.  G.,  259;  32  App. 
D.  C.  222.) 

When  this  case  was  returned  to  the  Patent  Office  the 
Commissioner  set  aside  his  order  dissolving  the  interf  er- 
-ence  and  entered  an  award  of  priority  to  E.  H.  Gold  in 
the  two-party  interference  and  an  award  in  the  three- 
party  interference  that  Cosper  was  not  the  first  inventor. 
A  second  appeal  was  taken  to  the  Court  of  Appeals,  which 
held  that  it  now  had  jurisdiction  of  the  case  and  reversed 
the  decision  of  the  Commissioner  as  to  Cosper 's  right 
to  make' the  claims  (168  0.  G.,  787;  36  App.  D.  C.  302). 
In  this  case  the  court  said: 

To  determine  what  the  decision  Is  from  which  an  appeal  is 
presented,  the  court  wiU  look  to  its  substance,  its  necessary 
legal  effect  and  operation,  rather  than  to  its  mere  form.  (Moore 
V.  Heany,  C.  D.,  1909,  488;  149  O.  G.,  831;  34  App.  D.  C,  31.) 

In  the  two-party  case  (No.  649)  the  necessary  effect  of  the 
order  declaring  that  Cooper  wag  not  the  prior  inventor,  was  to 
award  priority  to  his  opponent,  Egbert  H.  Gold.  In  that  case, 
if  Cosper  was  entitled  to  make  the  claims  he  was  entitled  to 
an  award  of  priority  on  the  record.  No  question  of  fact  was 
put  in  issue.  Hence,  it  haying  been  decided  that  he  was  not 
entitled  to  make  the  claims,  the  resulting  decision  that  he  was 
not  the  prior  inventor  was  in  substance  and  effect,  a  decision 
that  Egbert  H.  Gold  was  the  prior  inventor.  In  that  case  the 
decision  was  necessarily  final  and  appealable. 

The  three-party  case  presents  a  case  of  greater  difficulty. 
Three  separate  cases  were  involved  in  this  one  proceeding. 
There  was  a  case  between  the  applications  of  Cosper  and  Egbert 
H.  Oold;  another  between  Cosper  and  Edward  E.  Gold,  and 
another  between  Egbert  H.  Gold  and  Edward  E.  Gold.  These 
were  separate  cases  and  might  have  been  so  conducted;  but 
as  the  same  subject-matter  was  in  controversy  in  each  case. 


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536         Journal  of  the  Patent  Office  Society. 

they  Were  properly  consolidated,  in  accordance  with  the  practice 
of  the  Patent  Office,  for  hearing  and  determination  as  one. 
(2  Rob.  on  Pats.,  sec.  612;  Bell  v.  Gray,  C.  D.,  1879,  42;  15 
O.  G.,  776.) 

MEMORANDUM. 

If  held  that  the  claims  can  be  made,  and  the  question  of 
priority  is  determinable  on  the  record,  it  can  be  awarded  at 
the  same  time.  When  the  issue  of  priority  is  not  determinable 
on  the  record,  but  on  testimony,  that  has  not  been  taken  because 
of  the  first  decision  against  the  right  to  make  the  claims,  the 
parties  have  the  right  to  take  that  testimony  before  final 
hearing  on  that  issue.  (Lindmark  v.  de  Ferranti,  C.  D.  1910, 
355;  153  O.  >G.,  1082;  34  App.  D.  C,  445.)  The  appeal  from 
that  decision,  when  made,  will  bring  up  for  review,  also,  the 
decision  of  the  ancillary  question  of  the  right  to  make  the 
claims.  It  is  unfortunate  that  when  the  award  of  priority 
rests  solely,  from  first  to  last,  on  the  preliminary  decision 
against  the  right  of  a  party  to  make  the  claims,  the  reyersal 
of  that  decision  may  not,  in  the  majority  of  instances,  put  an 
end  to  the  litigation. 

The  difficulty  of  the  situation  arises  out  of  the  change  of 
the  practice  resulting  from  a  decision  in  Podlesak  v.  Mclnnerney, 
and  cannot  be  avoided.  It  is  one  that  constantly  arises  in 
proceedings  at  law  and  in  equity  as  pointed  out  in  Lindmark  v. 
de  Ferranti,  supra^ 

When  the  decision  is  against  the  right  of  fhe  party  to  make 
the  claims  and  the  award  of  priority  to  the  opponent  is  on 
that  ground  alone,  the  whole  oaae  is  brought  up  on  appeal  to 
the  Commissioner.  If  the  decision  is  held  erroneous,  and  the 
ri^t  to  priority  is  not  determinable  on  the  record  made  by  the 
preliminary  statement  of  the  other  party,  the  case  goes  back 
for  the  taking  of  the  necessary  testimony  on  the  issue  of  fact. 
(Bold-face  type  mine.) 

We  do  not  find  the  preliminary  statement  of  Edward  E.  Gold 
in  the  record.  If  it  is  such,  as  seems  to  be  conceded,  that 
Cosper  was  not  entitled  to  ask  an  award  of  priority  against 
him  on  the  record,  the  question  of  priority  in  fact  remains  to 
1)6  determined  between  them  on  testimony  taken  for  the 
purpose. 

The  court  referred  to  the  case  of  in  re  Fullagar,  supra, 

and  the  case  of  Podlesak  &  Podlesak  v.  Mclnnemey, 

supra,  and  said: 

As  was  held  in  the  former  appeal  (C.  D:,  1910,  282;  151 
O.  G.,  194;  34  App.  D.  C,  194),  the  decision  of  that  question 
without  a  final  award  also  of  priority  is  interlocutory  and, 
therefore,  not  appealable.  The  decision  in  these  cases  goes 
further  and  is  substantially  that  Egbert  H.  Gold  and  Edward  E. 
Gold,  in  their  respective  cases,  are  prior  inventors  to  Ckwper. 

In  the  case  of  United  States  ex  rel.  Newcomb  Motor 
Co.  V.  Moore,  133  0.  G.,  1680;  30  App.  D.  C,  464,  which 
arose  out  of  the  interferences,  Thomson  v.  Newcomb, 
and  Lemp  v.  Newcomb,  the  court  in  a  decision  rendered 
after  the  Podlesak  decision,  supra,  but  prior  to  the  decis- 


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JouENAii  OF  THE  Patbnt  Offiob  Sooibtt.         537 

ions  in  Cosper  v.  Gold,  supra,  had  held  that  since  Thom- 
son and  Lemp  had  failed  to  appeal,  inter  partes,  from  the 
decision  of  the  primary  examiner  dissolving  the  inter- 
ferences on  the  ground  that  they  had  no  right  to  make 
the  claims,  the  decision  on  that  question  was  final  and 
res  adjudicata  and  that  the  Commissioner  was  without 
authority  to  thereafter  reinstate  the  interference.  (Ap- 
peals were  taken,  ex  parte,  by  Thomson  and  Lemp  to  the 
examiners-in-chief,  who  reversed  the  decision  of  the  pri- 
mary examiner  as  to  their  right  to  make  the  claims.) 

There  have  been  a  number  of  decisions  in  which  the 
Court  of  Appeals  has  considered  the  question  of  right 
to  make  the  claims  in  connection  with  the  ordinary  ques- 
tions of  priority  and  also  where  this  was  the  only  ques- 
tion involved.  (See  Manly  v.  Williams,  168  0.  G.,  1034; 
37  App.  D.  C,  194.) 

The  court  has  uniformly  refused  to  consider  (with  the 
exception  of  the  case  of  Skinner  v.  Carpenter,  166  0.  G., 
1281;  36  App.  D.  C,  178)  the  question  of  a  bar  to  either 
or  both  of  the  parties. 

In  Skinner  v.  Carpenter  the  decision  of  the  Commis- 
sioner awarding  priority  to  Carpenter  was  reversed  on 
the  ground  that  Carpenter,  who  was  a  reissue  applicant, 
was  barred  from  obtaining  a  reissue  by  intervening 
rights,  but  in  the  subsequent  case  of  Norling  v.  Hayes, 
166  0.  G.,  1282;  37  App.  D.  C,  169,  the  court  stated  that 
in  Skinner  v.  Carpenter  it  did  not  decide  the  question 
of  priority. 

In  the  latter  case  (Norling  v.  Hayes)  the  court  again 
differentiated  between  an  appeal  from  a  decision  of  the 
Commissioner  holding  that  one  of  the  parties  has  no 
right  to  make  the  claims  and  a  case  of  a  statutory  bar 
to  a  grant  of  a  patent  to  one  of  the  parties,  saying: 

The  difitinction  between  the  situation  in  the  Podlesak  case 
and  that  in  the  present  CMe  is  apparent.  In  the  former,  if  one 
of  the  parties  had  no  right  to  make  the  claims  of  the  issue, 
that  is,  if  his  application  did  not  disclose  the  inyention,  and 
the  application  of  his  adversary  did  disclose  it,  the  finding  of 
that  fact  necessarily  resulted  in  an  award  of  priority.  In  the 
present  case,  a  finding  that  a  patent  ought  not  to  be  issued  to 
Hayes  notwithstanding  he  is  the  prior  inventor,  in  no  way  af- 
fects the  sole  question  involved  in  the  interference,  namely,  the 
question  of  priority;  in  other  words,  such  a  finding  would  not 
entitle  Norling  to  an  awardof  priority.  Had  the  Commissioner 
ruled  that  the  structure  of  each  applicant  contained  patentable 
features  and  that  there  was  no  interference  in  fact  and  we  had 
sustained  the  latter  ruling,  could  it  be  maintained  that  either 


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538         Journal  qf  the  Patent  Office  Society. 

party  would  have  the  right,  as  against  the  other,  to  urge  the 
bar  of  public  use?  Manifestly  not.  We  see  no  distinction  in 
principle  between  the  supposed  case  and  the  case  before  us. 
Again*  if  the  Commissioner  ultimately  decides  to  grant  the 
application  of  Hayes  for  the  reissue  of  his  patent,  no  appeal 
will  lie  to  this  court  from  that  decision;  and  yet  appellant  ask» 
us  to  decide  this  very  question  upon  the  ground  that  its  deter- 
mination is  necessary  to  a  decision  of  the  question  of  priority 
of  invention.  It  should  be  remembered  that  this  is  not  an 
infringement  suit,  but  a  proceeding  under  a  statute  which 
provides  for  the  determination  of  a  single  issue,  that  of  priority 
of  Invention. 

We  conclude,  therefore,  that  we  are  without  Jurisdiction  in 
this  proceeding  to  pass  upon  the  question  suggested. 

The  case  of  Mann  v.  ferown  involved  a  patent  to  Brown 
and  the  application  of  Mann.  Commissioner  Ewing  held 
thatMann's  right  to  a  patent  was  barred  by  certain  prior 
patents.  Appeal  was  taken,  but  was  dismissed  on  the 
authority  of  the  Fullagar  case  (Mann  v.  Brown,  214  0.  G., 
1026;  43  App.  D.  C,  457)  and  in  a  later  case  an  appeal 
from  a  decision  of  the  Commissioner  dissolving  the  inter- 
ference on  the  ground  that  the  issue  was  not  patentable 
over  the  prior  art  was  dismissed  (GriflSn  et  al.  v.  Young 
et  al.,  222  0.  G.,  1056;  44  App.  D.  C,  210). 

The  court  has  not  always  required  a  final  award  of 
priority  as  a  prerequisite  to  an  appeal.  As  noted  above^ 
the  appeal  was  considered  in  the  case  of  the  General 
Railway  Signal  Co.  v.  ThuUen  (Townsend  v.  Thullen) 
from  a  decision  dissolving  the  interference  on  the  ground 
that  Townsend  had  no  right  to  make  the  claims  and  in 
the  case  of  New  Departure  Mfg.  Co.  (assignee  of  Cope- 
land)  V.  Robinson,  188  0.  G.,  1055;  39  App.  D.  C,  504,  an 
appeal  was  considered,  although  Assistant  Commissioner 
Billings  had  refused  to  enter  an  award  of  priority.  In 
the  latter  case  the  interference  was  dissolved  on  the 
ground  that  the  question  of  priority  was  res  adjudicata 
in  view  of  a  prior  decision  in  an  interference  between 
Robinson  and  Copeland  involving  the  same  application 
of  Robinson  but  a  different  application  of  Copeland. 

In  connection  with  the  above  decisions  should  be  noted 
the  decision  in  Scott  v.  Moore,  180  0.  G.,  607 ;  39  App. 
D.  C,  39,  in  which  the  court  held  that  a  writ  of  man- 
damus directing  the  Commissioner  to  cause  the  interfer- 
ence to  be  set  down  for  hearing  before  the  examiner  of 
interferences  was  properly  refused,  and  the  decisions  in 
the  cases  of  Aufiero  v.  Ewing  (223  0.  G,  1718,  and  223 
O.  G,  1717;  44  App.  D.  C,  328). 


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Journal  op  the  Patent  Office  Society.         539 

In  Scott  V.  Moore  the  Commissioner  had  held  that  the 
invention  was  not  disclosed  in  an  early  application  of 
Scott,  which  was  relied  upon  to  show  priority  of  inven- 
tion over  Beckman,  Scott  ^s  later  application  having  been 
filed  more  than  two  years  after  the  grant  of  Becfanan^s 
patent.    In  this  case  the  court  said : 

Grant  that  petitioners  bad  no  appeal  to  this  court  from  the 
order  as  entered,  because  there  was  no  award  of  priority 
(Cosper  V.  Gold,  C.  D.,  1910,  282,  285;  151  O.  G.,  194,  195; 
34  App.  D.  C,  194,  198);  yet,  as  stated  in  the  Commissioner's 
decision  on  September  26,  1911,  had  the  petitioners  requested 
that  the  former  decision  be  extended  to  a  formal  award  of 
priority,  that  order  would  have  been  entered  as  had  been  done 
in  Cosper  v.  Gold,  8upra,  after  the  dismissal  of  the  appeal  from 
the  former  decision  holding  that  the  appellant  Cosper  had  no 
right  to  make  the  claims  of  the  interference.  Had  the  peti- 
tioners pursued  that  course  an  appeal  could  have  been  taken 
from  the  final  award  of  priority  bringing  up  for  review  all  the 
grounds  upon  which  the  award  was  founded.  (Cosper  y.  Gold, 
C.  D.,  1911,  387;  168  O.  G.,  .787;   36  App.  D.  C,  302.) 

In  Aufiero  v.  Ewing  an  injunction  was  sought  to 
compel  the  Commissioner  to  enter  an  award  of  priority 
in  favor  of  Aufiero 's  opponent.  The  Commissioner  had 
dissolved  the  interference  on  the  ground  that  the  issue 
was  not  patentable  to  Aufiero  in  view  of  the  prior  art, 
although  it  might  be  patentable  to  his  opponent,  Hutch- 
inson, since  certain  of  the  patents  referred  to  were  not 
prior  art  to  Hutchison.  The  lower  court  dismissed  the 
bill  and  in  its  opinion,  after  referring  to  the  cases  of 
in  re  FuUagar,  Cosper  v.  Gold,  Podlesak  v.  Mclnnemey 
and  U.  S.  ex  rel.  Scott  v.  Moore,  said : 

ABSuming  that  by  mandatory  injunction  the  Commiseioner 
of  Patents  might  be  compelled  to  enter  an  order  formally  as 
one  of  priority  on  proof  of  facts  like  those  in  the  cases  of 
Cosper  V.  Gold  for  the  reason  that  otherwise  a  party  would  be 
deprived  of  his  right  to  appeal  on  the  question  of  priority 
such  a  decree  cannot  be  made  here  in  view  of  the  numerous 
decisions  by  the  Court  of  Appeals  not  to  consider  questions  of 
patentability  until  they  are  finally  adjudicated  in  the  Patent 
Office  and  that  interference  proceedings  involve  only  the  ques- 
tion of  priority  and  not  that  of  patentability.  If  the  court 
had  ever  meant  to  determine  otherwise  it  would  have  said  in 
the  Fullagar  case  what  it  said  in  Cosper  v.  Gold  when  that 
case  was  first  before  it;  namely,  that  the  appellant  must — 

go  back  to  the  Patent  Office  there  to  await  a  final 
decision  of  the  Commissioner  of  the  question  of 
priority. 

The  Court  of  Appeals  in  affirming  the  decision  (223 

O.  a,  1717)  said: 

•  •  •  In  the  present  case.  It  was  the  deliberate  judg- 
ment of  the  Commissioner  that  his  ruling,  that  the  issue  in 


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540        JouENAii  OP  THE  Patent  Opfiob  Sooibty. 

the  interference  was  not  patentable  to  the  appellant  because 
he  had  shown  no  Invention  over  the  dieclosure^  of  his  prior 
patents,  did  not  amount  to  an  award  of  priority  to  Hutchleoii. 
the  other  party  to  the  interference.  Being  of  that  view,  the 
Commissioner  yery  naturally  declined  to  enter  a  decision 
awarding  priority  to  Hutchison.  The  <iuestion  wa«  one  calling 
for  Judgment  and  discretion,  and  the  decision  reached  was  a 
possible  one,  at  least,  and  hence  may  not  be  controlled  by 
mandamus.  (U.  S.,  ex  rel.  T.  O.  Steel  Co.  v.  Ewing,  42  App. 
D.  C,  179;  United  .States,  ex  i^l.  Ness  v.  BMaher.  223  U.  S.,  683). 
We  do  not  wish  to  be  understood  as  holding  that  the  appellant 
was  without  redress,  for,  having  requested  the  Commissioner 
to  enter  a  final  award  of  priority,  he  had  done  all  he  could, 
and  had  that  been  the  necessary  effect  of  the  Commissioner's 
decision  the  court  would  have  taken  Jurisdiction  of  the  case 
on  appeal,  since — 

to  determine  what  the  decision  is  from  which  an 
appeal  is  prosecuted,  the  court  will  look  to  its  sub- 
stance, its  necessary  legal  effect  and  operation,  rather 
than  to  its  mere  form.  (Cosper  v.  Oold,  36  App. 
D.  C,  302;  Moore  v.  Heany,  34  App.  D.  C,  31;  in  re 
Selden,  36  App.  D.  C,  42,8;  Mann  v.  Brown,  43  App. 
'D.  C,   457,   460.)  , 

In  the  case  of  Cariin  v.  Goldberg,  236  0.  G.,  1222,  45 
App.  D.  C,  540,  the  interference  had  been  dissolved  on 
the  ground  that  Cariin  had  no  right  to  make  the  claims 
and  the  disclosure  was  not  operative.  After  the  decision 
of  the  Commissioner  affirming  the  holding  of  the  exam- 
iners-in-chief on  this  ground  Cariin  petitioned  the  Com- 
missioner to  change  the  decision  to  an  award  of  priority. 
This  was  done  and  priority  \yas  awarded  Goldberg.  The 
Court  of  Appeals  in  its  decision,  after  quoting  from  the 
order  of  the  Commissioner  which  referred  to  the  decision 
in  Cosper  v.  Gold,  151  0.  G.,  194;  34  App.  D.  C,  194,  and 
168  0.  G.,  787;  36  App.  D.  C,  302,  said: 

The  difficulty  with  the  present  case  Is  that  no  basie  existed 
for  an  award  of  priority.  In  Cosper  v.  Gold,  cited  by  the  Com- 
missioner, the  appeal  before  the  Commissioner  was  on  the 
right  of  Cosper,  the  senior  party  of  record,  to  make  the  claime 
in  issue,  but  the  interference  had  been  tried  and  the  case  was 
in  that  condition  where  the  issue  of  priority  turned  solely  upon 
the  right  of  Gosper  to  make  the  claims.  Cosper  was  the  senior 
party,  both  by  the  filing  date  and  from  the  proofs;  hence,  if 
entitled  to  make  the  claims,  his  right  to  an  award  of  priority 
was  fully  established.  In  other  words  the  parties  had  had 
their  day  in  court  In  the  interference  proceeding.  But  here 
the  interference  has  never  been  tried.  Indeed,  the  question 
of  priority  of  invention  has  not  been  raised  in  any  of  the 
tribunals  of  the  Patent  Office  or  here,  except  in  the  petition  on 
which  the  Commissioner  changed  his  order. 

Let  us  consider  for  a  moment  where  this  appeal,  if  we  were 
to  take  Jurisdiction,  would  logically  lead.  If  we  should  reverse 
the  Commissioner  on  the  question  of  priority,  the  only  decision 


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JouBNAii  OP  THE  Paijbnt  Offioe  Socibty.         541 

from  which  an  appeal  will  lie  to  this  court  in  an  interference 
proceeding,  it  would  operate  as  a  grant  of  priority  to  Carlin, 
the  Junior  party,  without  giving  Goldberg,  the  senior  party, 
his  day  in  court  on  that  issue.  The  order  appealed  from  was 
not  made  at  Goldberg's  inetance,  but  at  the  instance  of  Carlin 
to  enable  him  to  prosecute  thia  appeal,  which,  if  successful, 
would  effectually  cut  the  senior  party  out  of  any  hearing  in  so 
far  as  producing  proofs  to  establish  hie  right  to  priority. 

'  A  motion  to  dissolve  is  interlocutory,  and  appeal  will  not 
lie  to  this  court  froni  an  order  thereon.  The  question  of  priority 
cannot  be  determined  in  proceedings  purely  upon  the  motion, 
for  the  elementary  reason  that,  if  the  motion  is  denied,  the 
«oundness  of  the  rulii^g  is  a  question  ancillary  to  the  final  judg- 
ment on  priority,  and  may  be  considered  on  an  appeal  from 
the  Anal  order  on  priority  (Podlesak  v.  liclnnerney,  C.  D., 
1906,  538;  120  O.  G.,  2127;  26  App.  D.  nC.,  399),  while,  if  the 
motion  be  sustained,  it  ends  the  interference  and  no  cause  of 
action  survives  or  exists  upon  which  an  order  of  priority  can 
be  based. 

The  appeal  was  dismissed. 

In  the  case  of  Vincent  v.  Landsiedel  (decided  March  3, 
1919)  Landsiedel  alleged  no  date  of  invention  prior  to 
Vincent's  filing  date.  He  moved  to  dissolve  on  the 
ground  that  Vincent  could  not  make  the  claims.  This 
motion  was  granted  by  the  law  examiner,  but  his  decision 
was  reversed  as  to  all  but  one  of  the  counts  by  the  exam- 
iners-in-chief. No  appeal  having  been  taken  by  Vincent 
as  to  that  count,  priority  as  to  the  other  counts  was 
awarded  to  Vincent  by  the  examiner  of  interferences  and 
his  decision  -was  affirmed  by  the  examiners-in-chief.  On 
appeal  to  the  Commissioner  it  was  held  that  Vincent 
could  not  make  these  claims.  The  decision  of  the  Com- 
missioner concluded  as  follows : 

None  of  these  claims  have  any  logical  support  in  Vincent's 
construction.  The  decision  of  the  examiners-in-chief  is  reversed 
and  the  interference  is  dissolved. 

From  this  decision  Landsiedel  appealed.  Motion  was 
.made  by  Vincent  to  dismiss  the  appeal,  but  this  motion 
was  denied  by  the  Court  of  Appeals.  It  was  held  that 
Vincent  could  make  the  claims.  The  decision  of  the 
Commissioner  was  reversed  and  priority  awarded  to 
Vincent. 

In  considering  the  motion  to  dismiss  the  court  said : 

If  in  addition  to  reversing  the  ezaminers-in-chlef  and  dis- 
solving the  interference  he  (the  Commissioner )  had  adjudged 
priority  to  Landsiedel,  it  would  be  clear  that  his  decision  would 
be  appealable;  but  that  in  effect,  abeit  not  In  form,  is  what  he 
did.  In  the  language  of  the  Fullagar  case,  there  was  for  him 
"nothing  else  to  do." 


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542         Journal  of  the  Patent  Office  Society. 

A  LETTER  TO  THE  EDITOR. 

— lift— 
To  the  Editor: 

That  portion  of  Examiner  TuUar^s  article  relating  to 
Eule  29,  in  the  December  issue  of  the  Jouknal,  was  very 
interesting.  However,  the  statement  in  the  last  three 
lines  of  page  195  might  well  have  been  amplified  or  more 
fully  developed  in  view  of  the  great  importance  of  divis- 
ional cases. 

Mr.  TuUar,  in  this  one  sentence,  lumps  all  divisional 
cases  together  without  a  distinction  which  is  not  only- 
important  to  United  States  applicants,  and  perhaps  little 
kno^vn,  but  which  under  certain  conditions  is  vital  to 
foreign  applicants  filing  in  this  country  under  the  Con- 
vention. 

To  illustrate,  if  an  English  applicant  files  in  his  home 
country  on  January  1,  1919,  he  has  until  January  1,  1920, 
in  which  to  file  here,  under  the  third  condition  stated  by 
Mr.  TuUar  on  page  192.  Now  suppose  that  the  English 
applicant  takes  the  full  year  benefit,  and  division  is 
required  in  his  United  States  case,  and  assume  that  he 
elects  to  file  his  divisional  application  in  this  country 
after  his  parent  United  States  case  has  gone  to  issue, 
then,  and  in  that  event,  his  United  States  divisional  case 
will  be  barred  from  maturing  into  a  valid  patent,  if  the 
parent  patent  disclosed  the  subject-matter  claimed  in 
the  divisional  case.  It  is  well  settled  that  a  divisional 
case,  filed  after  the  parent  case  goes  to  issue,  takes  no 
benefit  from  the  filing  date  of  the  parent  case.  In  other 
wards,  this  kind  of  divisional  case  does  not  ^  ^  relate  back 
to  the  parent  case.'^  In  in  re  Spitteler  and  Krische,  134 
0.  G.,  1301;  31  App.  D.  C,  271,  the  court  states: 

An  application  filed  within  one  year  after  the  grant  of  a 
patent  disclosing  the  subject-matter  of  such  application  ie  not 
a  continuation  of  the  application  on  which  such  patent  was 
granted  and  is  not  entitled  to  the  benefit  of  the  date  of  such 
prior  application.  Although  the  claims  of  the  second  applica- 
tion' were  made  in  the  prior  application,  on  which  the  patent 
was  granted,  and  could  have  been  divided  out  therefrom,  and 
the  date  of  the  prior  application  could  have  been  thus  secured, 
when  the  patent  was  granted  the  application  w&s  merged  in 
the  patent,  the  proceeding  was  closed,  and  there  was  nothing 
to  be  continued. 

The  rule  which  permits  a  divisional  application  to  relate  back 
to  the  filing  date  of  the  original,  which  also  discloses  its  subject- 
matter,  as  long  as  it  remains  open  in  the  Patent  OflSce  is  a 
very  liberal  one  that  sometimes  works  hardships  upon  inter- 


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Journal  of  the  Patent  Office  Socjibty.         543 

mediate  lnyentors»  and  it  ought  not  to  be  extended  to  cases  not 
clearly  within  it. 

Thus  it  would  seem  clair  that  if  a  foreign  applicant 
takes  his  full  year,  or,  in  any  event,  if  he  wishes  to  have 
his  United  States  divisional  case  relate  back  to  his  parent 
<;ase,  he  must  file  his  divisional  case  before  the  parent 
-case  goes  to  issue,  provided,  of  course,  that  his  divisional 
case  is  not  filed  within  one  year  from  the  date  of  filing  of 
the  earliest  foreign  case,  on  the  same  subject-matter.  If 
the  foreign  applicant  did  not  take  his  full  year,  and  even 
if  his  divisional  case  was  filed  after  the  issuance  of  his 
parent  case,  but  within  the  Convention  period,  he  would 
still  be  within  his  Convention  rights  even  though  his 
divisional  case  here  did  not  have  the  benefit  of,  or  ^^  re- 
late back,"  to  the  parent  case  from  which  it  was  carved 
out.  It  is  believed  this  is  a  matter  which  should  be  called 
to  the  attention  of  all  examiners,  as  I  have  frequently 
seen  Convention  divisional  cases  here  go  to  issue  when 
they  were  filed  after  the  parent  case  issued,  and  beyond 
the  Convention  period,  in  which  event  such  divisional 
case  was  clearly  barred. 

It  might  be  argued  that  having  once  filed  the  complete 
United  States  case  within  the  Convention  period,  the 
applicant  definitely  perfected  his  rights.  This  is  true, 
but  unfortunately  in  patent  matters  as  well  as  in  other 
things,  a  man  may  later  lose  what  he  formerly  acquired. 
After  the  case  is  once  filed  here,  then  it  is  subject  to  our 
own  internal  law  and  practice,  as  well  as  to  the  Conven- 
tion. Therefore,  taking  this  decision  as  it  stands,  in 
connection  with  the  clear  wording  of  the  statutes,  it  is 
the  business  of  a  foreign  applicant  to  file  all  of  his  United 
States  divisional  applications  within  the  Convention 
period.  This  is  especially  so  in  this  country,  because  a 
divisional  patent  does  not  expire  on  the  date  of  expira- 
tion of  the  patent  issuing  on  th^  parent  case,  from  which 
a  divisional  was  carved  out.  In  foreign  countries,  the 
duration  of  a  patent  runs  from  the  filing  date  of  its  appli- ' 
cation,  and  a  divisional  patent  expires  on  the  date  of 
expiration  of  the  parent  patent  from  which  the  divisional 
case  was  carved  out.  Therefore  the  monopoly  is  never 
extended  by  divisional  cases  as  in  this  country.  Mr. 
TuUar  does  not  cite  any  court  decision  supporting  the 
decision  of  the  Board  of  Examiners-in-Chief,  decided 


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544        JouENAL  OF  THE  Patent  Office  SocaoBTY. 

February  13, 1918,  Vol.  37,  page  113,  and  I  do  not  believe 
this  point  has  been  decided  by  any  court  with  the  statute 
as  it  now  stands.  Surely,  a  signatory  to  a  convention  or 
treaty  cannot,  by  the  operation  of  its  internal  laws^ 
extend  the  benefits  of  the  treaty  beyond  the  limits  speci- 
fied therein. 

Therefore,  in  any  event,  whether  the  divisional  case 
is  filed  during  the  pendency  of  its  parent  case  or  not,  it 
is  my  opinion  that  all  Convention  divisional  cases  in  this 
country  Inust  absolutely  be  filed  within  one  year  from  the 
date  of  filing  of  the  earliest  foreign  ca^e,  by  very  reason 
of  the  fact  that  otherwise  the  period  of  monopoly  is 
extended  beyond  that  which  the  Convention  contem- 
plates, as  the  '* similar  privilege  rule'*  is  binding. 

Thus  it  should  be  made  clear  that  there  are  two  kinds 
of  divisional  cases,  namely,  the  one  which  is  filed  by 
mere  sufferance  of  the  two-year  rule,  after  the  parent 
case  goes  to  issue,  and  which  is  not  a  continuing  case  at 
all,  and  the  one  which  is  filed  during  pendency  of  the 
parent  case  and  which  is  a  continuing-divisional  case. 
This  point  might  be  made  very  interesting  in  some  appli- 
cations in  interference, where  at  least  one  of  the  applica- 
tions is  a  Convention  divisional  case. 

It  would  be  very  informative  to  have  Mr.  Tullar's  com- 
ments on  this  phase  of  divisional  cases. 

The  writer  notes  the  four  conditions  defined  on  page 

192,  but  in  condition  2  there  seems  to  be  an  error,  or 
rather  a  want  of  amplification,  since  it  is  clearly  not 
necessary  that  the  foreign  and  domestic  applications 
must  be  filed  '*by  the  same  person/'  It  must  at  least 
be  filed  by  the  same  person  here  for  whose  benefit  or 
with  whose  knowledge  the  corresponding  foreign  appli- 
cation was  filed.  Of  course,  Mr.  TuUar  knows  this  fact 
as  he  clearly  deals  with  it  in  the  first  paragraph  of  page 

193,  but,  nevertheless,  condition  2,  in  both  places  on  page 
192,  might  well  be  amplified  as  indicated,  in  deference 
to  complete  accuracy. 

Condition  3  is  absolutely  clear.  The  marvel  is  that  in 
our  practice  nothing  is  required,  in  the  oath  given  in 
the  Eules  of  Practice,  other  than  mere  negative  reference 
to  what  has  been  filed  abroad,  after  the  words  **  except 
as  follows."  A  foreigner  filing  here  is  not  required  to 
affirmatively  aver  that  the  list  of  filing  dates  in  his  oath 


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Journal  of  the  Patent  Office  Society.         545 

is  complete.  He  could  leave  out  the  earliest  date  and 
to  all  appearances,  if  that  earlier  filing  were  in  Hungary, 
or  in  other  countries  where  applications  are  not  printed 
when  issued,  he  could  show  on  the  face  of  the  oath  that 
his  Jnited  States  case  was  filed  within  one  year  of  the 
earliest  date  given  in  his  United  States  oath.  As  a  matter 
of  fact,  for  foreigner's  use,  our  United  Stdtes  oath  should 
be  supplemented  in  considerable  amplification  so  that 
the  foreigner  filing  here  would  be  required  affirmatively 
to  aver  that  he  had  given  all,  including  the  earliest  date 
of  filing  abroad,  and  further,  he  should  swear  that  tjiose 
foreign  applications  not  filed  in  his  own  name  were  filed 
with  his  knowledge  and  consent,  or  for  his  benefit.  As 
a  matter  of  fact,  a  foreign  applicant  filing  here  should 
additionally  be  required  to  prove  to  the  examiner,  either 
by  supplying  a  certified  copy  of  his  foreign  patent,  or  a 
sworn  translated  certified  copy  of  his  foreign  application, 
that  he  actually  did  file  on  the  date  claimed.  Such  veri- 
fied proof  is  rigidly  insisted  upon  in  interference  pro- 
ceedings and  also  under  Rule  75,  but  this  proof  is  just 
as  necessary  when  the  application  is  filed  and  should  be 
required. 

It  should  be  particularly  necessary  for  the  foreign 
applicant  filing  here  to  comply  with  condition  4,  by  act- 
ually showing  what  he  filed  abroad.  Many  cases  slip 
through  without  much  regard  for  this  important  con- 
dition. 

When  our  Patent  Office  officials  so  clearly  understand 
every  phase  of  the  law  governing  the  matter,  it  is  more 
singular  that  the  practice  should  not  keep  pace  but 
should,  on  the  contrary,  lag  behind  in  loose  indifference. 

It  is  because  Mr.  TuUer  has  made  a  very  informative 
and  complete  compilation  of  the  law,  relating  to  Rule  29, 
that  I  have  been  prompted  to  call  attention  to  slight 
defects  in  what  is  an  otherwise  effective  and  laudable 
effort    Respectfully, 

C.  H.  Crawfobd. 

Spokane,  Wash.,  May  23,  1919. 


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546         Journal  of  the  Patent  Office  Society. 

MR.  TULLAR'S  REPLY. 

— I*— 

June  3,  1919. 
Mr.  Carl  H.  Crawforu,  322  Peyton  Building,  Spokane, 
Washington. 

Dear  Sir :  I  have  your  letter  of  the  23d  ultimo  endos- 
ing  a, copy  of  the  article  you  have  forwarded  to  the  editor 
of  the  Journal  relative  to  Rule  29.  I  do  not  know  what 
the  editors  of  the  Journal  intend  to  do  with  this  matter, 
as  they  have  not  consulted  me. 

Your  suggestion  that  my  remarks  in  regard  to  divis- 
ional applications  should  he.  ampfHfied  fias  been  consid- 
ered, and  if  I  am  called  upon,  to  rewrite  the  paper  for 
any  purpose  I  shall  probably  f ollow^  your  suggestion. 
Tliere  is  no  real  inconsistency  between  what  you  say  and 
the  statement  on  page  192  of  the  Journal,  since  I  used 
the  term  divisional  application  in  the  only  sense  in  which 
the  use  is  permitted  by  the  Patent  Office.  I  had  Spitteler 
and  Krische,  134  O.  G.,  1301,  in  mind  when  I  wrote  this 
paragrapli.  A  case  whicli  is  filed  after  the  so-called 
parent  case  has  been  patented  is  not  a  divisional  case 
and  applicants  are  not  permitted  to  term  such  cases 
divisional  cases. 

In  the  sentence  beginning  in  the  fourth  from  the  last 
line  of  page  2  of  your  article,  you  state  that  you  have  fre- 
quently seen  Convention  divisional  cases  go  to  issue  when 
they  were  filed  after  the  parent  case  issued  and  beyond 
the  Convention  period.  Thi-s  is  suprising,  if  true,  and 
1  called  the  matter  to  the  attention  of  P'lrst  Asii^tanl 
Commissioner  Whitehead,  who  states  that  he  believes 
you  must  be  in  error  as  to  this  matter  and  would  be 
pleased  to  have  you  refer  to  one  such  case  if  you  have 
it  in  mind. 

I  note  your  belief,  stated  at  the  top  of  page  4  of  your 
article,  that  *'all  Convention  divisional  cases  in  thh  conn- 
fry  nmst  absolutely  be  filed  w'ithin  one  year  from  tiie 
date  of  filing  of  the  earliest  foreign  case,*'  I  do  not 
believe  you  are  justified  in  holding  this  opinion,  as  there 
is  no  authority  upon  the  point  and  such  a  construction 
of  the  statute  would  not  promote  the  progress  of  science 
and  the  useful  arts  to  the  full  extent,  since  it  would  bar 
many  patents  not  clearly  barred  by  the  terms  of  the  stai- 
iito.  '  Tlio  matter  of  the  necessitv  for  division  is  fre- 


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Journal  of  the  Patent  Office  Society.         547 

quently  uncertain  and  the  twelve  months'  period  of 
priority  does  not  allow  suflScient  time  for  an  applicant 
to  file  his  case  and  receive  a  requirement  for  division 
from  the  Office  and  respond  to  the  same  by  either  filing 
a  divisional  case  or  settling  the  propriety  of  the  require- 
ment for  division  by  appeal  and  then  filing  the  divisional 
case  if  the  requirement  is  stistained.  The  decision  of 
the  Board  of  Examiners-in-Chief  referred  to  on  page  187 
of  the  Journal  for  December,  1918,  is  the  only  authority 
I  liave  been  abl«  to  find  beaming  upon  the  proposition 
that  the  purpQpe  of  amended  Section  4887  was  to  termi- 
nate the  monopoly  ia  this  country  as  nearly  as  possible 
at  the  same  time  the  monopoly  terminated  abroad.  The 
decision  is  not  susceptible  of  extension  to  cover  the  prop- 
osition advanced  in  your  article.  As  I  recollect  the  facts 
in  the  case,  the  applicant  had  filed  an  application  and 
secured  a  patent  therefor  in  a  foreign  country,  which 
patent  was  held  under  the  ban  of  secrecy  by  the  authori- 
ties of  that  countrj'  for  war  reasons.  The  applicant  was 
prevented  by  the  authorities  from  communicating  the 
invention  to  the  United  States  Patent  Office  until  this 
ban  of  secrecy  was  lifted,  and  as  soon  as  it  was  lifted  he 
filed  the  application  in  this  country  within  twelve  months 
of  the  time  the  b^n  was  lifted.  The  applicant  contended 
that  this  procedure  was  a  sufficient  compliance  with  the 
requirements  of  Section  4887,  but  the  Board  held  other- 
wise. 

I  have  noted  your  remarki  on  page  5  of  your  article 
in  regard  to  the  alleged  inadequacy  of  the  oath  required 
by  the  rules  in  the  case  of  foreign  applicants.  I  am 
unable  to  follow  your  reasoning.  If  the  applicant  should 
**  leave  out  the  earliest  date  *  *  *  if  that  earlier 
filing  were  in  Ilungarj^,  or  any  other  countries  where 
applications  are  not  printed  when  issued''  and  make 
the  oath  required  by  the  Rules,  he  would  be  clearly  com- 
mitting perjury.  The  cases  that  arise  under  the  prac- 
tice of  Steel  efal.  v.  Myers,  1914  C.  D.,  74,  referred  to  on 
page  195  of  the  Journal  for  December,  1918,  are  cases 
ill  which  the  applicant  executes  the  oath  for  his  United 
States  application  and  then  files  his  foreign  application 
before  there  has  been  sufficient  time  for  the  application 
papers,  including  the  oath,  to  reach  the  United  States 
Patent  Office. 


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548         Journal  of  the  Patent  Office  Society. 

Near  the  bottom  of  page  5  of  your  article  you  state 
that  the  proof  of  the  filing  of  a  foreign  application  is 
just  as  necessary  when  the  application  is  filed  as  it  is  in 
the  case  of  interference  proceedings  or  cases  arising 
under  Rule  75.  Your  reasons  for  this  statement  are  not 
given  and  your  attention  is  called  to  the  fact  that  Arti- 
cle 4  of  the  International  Cfonvention,  as  revised  at  Wash- 
ington, June  2,  1911,  reads,  in  part,  as  follows : 

(d)  Whoever  shaH  wish  to  avaU  himself  of  the  priority  of 
the  anterior  filing,  shall  be  required  to  make  a  declaration 
showing  the  date  and  the  country  of  this  flUng.  Each  country 
shall  determine  at  what  moment,  at  the  latest,  thia  declaration 
must  be  executed. 

My  personal  opinion  is  that  it  would  be  desirable  to 
have  this  proof  made  and  placed  in  the  file  of  every  appli- 
cation entitled  to  a  benefit  under  Section  4887.  It  seems 
to  me  that  it  would  be  desirable  in  many  cases.  For 
example,  if  an  applicant  desired  to  swear  back  of  a  refer- 
ence under  Rule  75  and  the  ref erencewas  a  patent  granted 
on  an  application  filed  under  the  Convention,  its  effective 
filing  date  would  be  that  of  the  filing  of  the  foreign  appli- 
cation and  the  afiidavit  under  Rule  75  should  therefore 
antedate  the  foreign  filing  date  rather  than  merely  the 
domestic  filing  date.  Where,  however,  the  proof  of  the 
foreign  application  is  not  required  to  be  filed  by  the 
applicant  there  is  no  machinery  for  securing  such  proof 
by  any  other  party,  and  it  therefore  is  apparently  im- 
proper to  require  affidavits  under  Rule  75  to  antedate 
anything  more  than  the  domestic  filing  date.  To  require 
that  proof  of  the  foreign  application  be  filed  in  each  case 
would  necessitate  an  amendment  of  Section  4887,  since 
Article  4  of  the  Convention  has  been  held  not  to  be  self- 
executing. 

If  my  letter  is  not  a  full  answer  to  the  questions  you 
have  in  mind,  I  should  be  pleased  to  hear  from  you 
further.  I  have  been  exceedingly  busy  ever  since  the 
receipt  of  your  letter,  and  am  dictating  this  hurriedly 
and  without  notes. 

Very  truly  yours, 

C.    E.    TULUAK. 


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Journal  of  the  Patent  Officjb  Society.         549 

AN  INQUIRY. 

— m— 

May  9,  1919. 

To  the  Editor: 

One  of  our  clients  understands  that  the  War  Indus- 
tries Board,  or  some  other  department  of  the  United 
States  Government,  ruled  that  no  damages  would  accrue 
for  infringement  of  any  United  States  patent  in  connec- 
tion with  production  of  war  material  on  Government 
orders.  He  states  that  his  understanding  is  that  soon 
after  our  entrance  into  the  war  it  was  found  that  large 
sums  were  being  added  to  contract  prices  because  of  roy- 
alties and  that,  therefore,  this  ruling  as  a  war  measure. 

We  never  heard  of  it  before  and  are  desirous  of  know- 
ing the  facts.    Can  you  give  us  any  information? 

Thanking  you  in  advance,  we  are. 
Yours  very  truly, 

HosEA,  Knight  &  Phabes. 


LIEUTENANT   COLONEL   DELAFIELD'S   REPLY. 

— m— 

May  27,  1919. 
Messrs.  Hosea,  Knight  &  Phabes,  501-2  Gwynne  Build- 
ing, Cincinnati,  Ohio. 
Gentlemen:  Relative  to  your  request  in  letter  dated 
May  9,  1919,  relative  to  a  supposed  ruling  of  the  War 
Industries  Board  to  the  effect  that  no  damages  would 
accrue  for  infringement  of  any  United  States  patent  in 
connection  with  the  production  of  war  material  on  Gov- 
ernment orders,  I  submit  the  following : 

1.    Referring  to  a  recent  conversation     •     •     •     relative  to 

the  request  contained  in  a  letter  from  Messrs.  Hosea,  Knight  & 

Phares,  of  Cincinnati,  Ohio,  to  the  Journal  of  the  Patent  Officb 

Society,  Washington,  D.  C,  dated  May  9th,  1919,  the  foUowing 

is  submitted: 

Because  of  the  fact  that  the  Act  of  June  25,  1910, 
as  amended  by  the  Act  of  July  1,  1918,  provides  that 
a  patentee  shall  have  a  remedy  against  the  Govern- 
ment for  unauthorized  use  of  his  patent,  it  is  clear 
that  no  Board  or  Commission  could  make  a  ruling 
depriving  such  patentee  of  his  rights. 

The  amendment  to  this  Act  contained  in  the  Act 
of  July  1,  1918,  and  especially  that  part  contained 
in  the  first  proviso,  from  which  it  would  seem  that 
the  Court  of  Claims  may  not  entertain  suits  for  past 
infringements,  is  probably  responsible  for  the  idea 
expressed  in  the  letter  above  referred  to. 


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550        Journal  of  the  Patent  Office  Society. 

2.  There  has  been  no  ruling  of  any  Board  or  Commission 
which  has  attempted  to  deny  the  patentee  his  right  to  claim 
damages  for  infringement  of  his  patent. 

By  direction  of  the  Chief  of  Ordnance. 
Respectfully, 

John  Ross  DblafieltD, 
Lt.  Col.,  Ord.  Dept,  U.  S.  A. 
By  S.  H.  Graves,  Lieut.,  Ord.  Dept.,  U.  S.  A.,  Chief, 
Patents  Branch,  Advisory  Sec,  Adm.  Div. 

Hi 

COMPARATIVE  UTIUTY  AS  A  REQUISITE  OP 
PATENTABILITY. 

By  C.  0.  Marshall,  Second  Assistant  Examiner, 
(Delivered  Before  the  Examining  Corps.) 

Your  committee  originally  intended  to  stage  a  debate 
at  this  time,  the  question  being  based  upon  a  supposi- 
tious case,  which  I  will  state: 

Suppose  the  type  of  propeller  now  used  on  ocean  liners 
to  be  known  and  the  paddle-wheel:  to  be  unknown.  If 
now  an  application  were  filed  for  a  patent  for  a  paddle- 
wheel  to  be  used  on  oceaii-going  vessels,  no  suggestion 
being  made  by  the  applicant  that  the  paddle-wheel  might 
be  useful  on  vessels  of  other  kinds,  it  was  to  be  con- 
tended by  the  affirmative  that  a  patent  should  be  refused 
on  the  ground  that  the  paddle-wheel  was  not  sufficiently 
useful,  as  compared  with  the  propeller. 

The  man  who  was  to  have  upheld  the  affirmative  has, 
however,  gone  to  take  part  in  a  more  important  argu- 
ment and  your  committee  has  decided  to  have  the  subject 
impartially  discussed  in  a  single  paper. 

The  solution  of  the  question  which  is  before  us  will 
undoubtedly  be  simplified  if  we  first  lay  out  the  parts  of 
the  proposition  in  regard  to  which  there  is  and  can  be  no 
controversy.  We  must  all  agree,  I  believe,  that  the  pur- 
pose of  the  patent  system  is  **to  promote  the  progress 
of  science  and  the  useful  arts.^' 

In  order  to  clearly  understand  the  bearing  of  the  ques- 
tion of  comparative  utility  upon  the  furtherance  of  this 
purpose  we  must  keep  in  mind — 

First.    The  nature  of  the  progress  of  the  useful  arts. 

Second.    The  nature  of  the  patent  system. 

Third.    The  mode  of  operation  of  the  patent  system. 


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Journal  of  the  Patent  Office  Society.         551 

Natnre  of  the  Progress  of  the  Useful  Arts. 

It  is  incontrovertible  that  the  progress  of  the  useful 
arts  is  an  evolutionary  process,  characterized,  like  all 
evolutionary  processes,  by  a  great  ourpouring  of  speci- 
mens, only  a  few  of  which  survive. 

Nature  of  the  Patent  System. 

The  patent  system  is  a  part  of  the  great  system  of 
private  property,  and  as  the  law  of  private  property  in 
chattels  operates  to  increase  the  total  wealth  of  the  race 
by  establishing  private  rights,  so  the  patent  law  by  secur- 
ing certain  private  rights  in  new  items  of  knowledge 
operates  to  increase  the  sum  of  human  knowledge.  That 
is  to  say,  it  is  education.  This  primary  characteristic 
was  recognized  by  the  courts  long  before  the  day  of  pub- 
lished specifications,  even  long  before  the  enactment  of 
any  patent  statute. 

Operation  of  the  Patent  System. 

The  granting  of  patents  promotes  progress  by — 
First.    Stimulating  invention  by  holding  out  to  the' 
inventor  the  possibility  of  reward ; 

Second.    Establishing  a  reservoir  of  information,  and 
Third.    Encouraging  the  development  of  known  inven- 
tions. 

The  protection  thrown  about  the  inventor  is  not  to  be 
regarded  solely  as  a  reward  for  past  efforts.  It  is  a 
fence  which  keeps  the  cattle  out  of  the  field  until  the 
crop  has  miatured.  By  compelling  others  to  keep  hands 
off,  it  enables  the  inventor,  or  his  assignee,  to  devote 
himself  to  improvement  with  the  assurance  that  every 
increase  in  the  utility  of  the  device  to  the  public  will  be 
followed  by  an  increase  in  his  own  reward.  It  not  only 
encourages  inventors  to  invent,  but  it  encourages  manu- 
facturers to  manufacture  and  develop.  (See  Robinson, 
pages  51-52.) 

If  the  device  is  not  so  good  as  others  on  the  market, 
the  manufacturer  is  bound  to  try  to  better  it.  If  it 
approaches  the  old  device  in  utility,  those  who  are  com- 
mitted to  the  old  device  must  improve  that. 

The  Requisites^of  Patentability. 

Before  any  statutory  enactment,  novelty,  utility  and 
invention  were  requisite  to  the  validity  of  a  patent.    Nov- 


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652         Journal  of  the  Patent  Office  Society. 

elty,  utility  and  invention  were  requisite  under  our  stat- 
utes before  provision  was  made  for  examination  in  the 
Patent  Offik^e.  The  existence  of  these  elements  is  now 
primarily  determined  in  the  Office,  but  ultimately  deter- 
mined by  the  courts.  If  the  applicant  has  procured  a 
patent  on  an  instrument  which  is  not  novel,  the  patent 
is  void  because  he  has  not  added  anything  to  the  fund  of 
useful  knowledge.  If  the  device  is  not  the  result  of  inven- 
tion, the  patent  is  void  because  he  has  added  nothing  not 
already  potentially  in  the  fund.  In  either  case,  he  has 
given  no  quid  pro  quo.  The  monopoly  of  an  old  device, 
or  one  not  the  result  of  invention,  might  and  often  would 
be  of  great  value,  but  it  would  be  one  for  which  the  public 
had  received  nothing.  The  grant  would  be  taking  some^ 
thing  already  in  the  actual  or  potential  possession  of 
the  public  and  giving  it  to  a  private  party. 

Utility  is  requisite  for  quite  different  reasons.  If  the 
thing  is  devoid  of  utility  there  is  nothing  taken  from  the 
public  and  the  monopoly  is  of  no  value  to  the  patentee. 
The  patent  grant  in  such  a  case  might  in  the  hands  of  a 
dishonest  holder  become  an  aid  to  fraud,  but  this  might 
also  happen  in  the  case  of  a  valid  grant. 

One  sort  of  non-useful  machine  frequently  met  with  in 
examining  applications  is  that  in  which  the  inventor, 
starting  with  a  small  amount  of  power,  attempts  to  build 
it  up  by  passing  it  through  a  maze  of  transmitting  ele- 
ments. This  type  of  machine  was  discussed  in  ex  parte 
Ackert  (C.  D.,  1872,  47),  in  which  the  report  of  the  exam- 
iner on  a  case  was  adopted  in  toto  by  the  Commissioner 
in  his  decision.  The  subject  of  the  application  was  an 
operating  mechanism  for  a  churn  desig^ied  to  **gain 
power '*  and  '*get  velocity.'*  The  examiner  described 
it,  in  part,  as  follows : 

**  Having  secured  his  required  velocity  by  means  of  a 
lever  with  a  very  short-toothed  sector  power  arm,  he  next 
proposes  to  regain  his  lost  power  by  a  reverse  process, 
namely,  a  lever  with  a  long  power  arm  and  short- 
toothed  sector  velocity  arm  meshing  into  the  former 
sector  arm,  which  leaves  him  where  he  started  (minus 
friction).  It  is  then  gravely  proposed  to  regain  the  loss 
by  friction  by  still  further  extension  of  the  power  arm.'* 

The  machine  was  in  the  perpetual  motion  class  and 
therefore  clearly  inoperative  as  and  for  the  purpose 
described. 


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Journal  of  the  Patent  Office  Society.         553 

Discussing  the  requirement  that  the  invention  be  **  suf- 
ficiently useful  and  important, ''  the  examiner  said,  **This 
clause  was  expressly  designed  to  protect  the  prestige  of 
the  Office  against  frivolous  claims,  which  prestige  has  a 
distinct  and  immense  money  value  to  the  public  and 
which  that  public  largely  avails  itself  of  in  its  confidence 
in  dealing  in  patented  property  in  this  country  prior  to 
any  litigation.*' 

The  determination  of  utility  is  therefore  highly  impor- 
tant. Utility  itself  is  of  transcendent  importance.  It  is 
the  very  basis  of  the  useful  arts.  Many  things  that  have 
long  since  lost  their  novelty  and  the  discovery  of  which 
would  not  call  for  what  we  now  consider  invention,  still 
occupy  prominent  places  in  industry — because  of  their 
utility.  No  matter  how  great  the  inventive  effort 
required  to  bring  a  device  from  the  unknown,  no  matter 
how  remote  the  region  from  which  it  is  brought,  it  cannot 
become  a  part  of  the  industrial  arts  unless  it  be  useful. 
Of  the  three  requisites  that  must  abide  in  every  patent- 
able, device— novelty,  invention  and  utility — the  greatest 
of  these  is  utility. 

It  behooves  us,  then,  to  know  what  this  property  is 
and  by  what  standards  it  is  to  be  measured. 
The  Law  as  to  Utility. 

How,  then,  stands  the  lawf  The  case  of  Lowell  v. 
Lewis  (Fed.  Case  8568)  is  the  earliest  American  case 
on  the  subject  that  I  have  found.  It  was  decided  in  the 
May  term  of  the  Circuit  Court  of  the  District  of  Massa^ 
chusetts  in  1817  and  was  a  suit  for  infringement  of  a 
patent  for  a  pump. 

The  object  of  the  invention  was  to  make  the  area  of 
the  foot-valve  opening  more  nearly  equal  to  the  area  of 
the  plunger  and  thereby  to  increase  the  capacity  of  the 
pump. 

The  patentee  made  the  chamber  and  plunger  square 
and  pivoted  triangular  valve  leaves  to  the  sides  of  the 
square  chamber  so  that  the  leaves  could  turn  up  against 
the  sides  of  the  chamber  and  leave  it  practically  unob- 
structed on  the  upward  stroke. 

This  pump,  if  made  small  enough  for  one  man  to 
operate,  was  very  inefficient,  probably  because  of  leak- 
age around  the  square  plunger.     The  defendant  made 


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554        Journal  of  the  Patent  Office  Society. 

his  plunger  round  and  otherwise  improved  the  mechan- 
ism so  that  it  was  applicable  to  pumps  of  ordinary  size. 

The  defendant,  one  of  whose  attorneys  was  Daniel 
Webster,  contended  *'that  it  is  necessary  for  the  plain- 
tiff to  prove  that  his  invention  is  of  general  utility;  so 
that  in  fact  for  the  ordinary  purposes  of  life  it  must 
supersede  the  pumps  in  common  use.  In  short,  that  it 
must  be  for  the  public  a  better  pump  than  the  common 
pump.'* 

Judge  Story  said: 

I  do  not  so  understand  the  l&w.  *  *  *  aU  that  the  law 
requires  is  that  the  invention  should  not  be  frivolous  or 
injurious  to  the  wiell-being,  good  policy  or  sound  morals  of 
society.  The  word  useful  is  therefore  incorporated  into  the 
act  in  contradistinction  to  mischievous  or  immoral.  For 
instance,  a  new  invention  to  poison  people  or  to  promote 
debauchery  or  to  facilitate  private  assassination  is  not  a  patent- 
able invention.  But  if  the  invention  steers  wide  of  these  objec- 
tions, whether  It  be  more  or  less  useful,  is  a  circumstance,  very 
material  to  the  interests  of  the  patentee,  but  of  no  importance 
to  the  public. 

In  Bedford  v.  Hunt  (Fed.  Case  1217),  October  term 

of  the  same  year.  Judge  Story  again  stated  the  law  in 

this  language: 

The  law,  however,  does  not  look  to  the  degree  of  utility. 
It  simply  requires  that  it  shall  be  capable  of  use  and  that  the 
use  is  such  that  sound  morals  or  policy  do  not  discountenance 
or  prohibit. 

Che  law  as  to  comparative  utility  still  stands  as  it  waa 
when  these  cases  were  decided.  They  have  been  quoted 
in  scores  of  decisions  from  that  day  to  this  and  the  con- 
clusions of  the  text  writers  are  in  strict  accord. 

Curtis  states  (Par.  106) : 

What  is  not  injurious  or  mischievous  to  society  may  be  of 
some  beneficial  use;  and  when  this  is  the  case,  that  is  to  say 
when  the  invention  is  not  absolutely  frivolous  or  insiKUlflcant,. 
the  law  takes  no  notice  of  the  degree  of  its  utility  whether  it 
be  larger  or  smaller  as  compared  with  other  things  of  the 
same  class. 

Walker  states  (Par.  79) : 

If.  however,  a  device  performs  a  good  function,  though  but 
imperfectly,  the  utility  of  the  device  ia  not  negatived  by  the 
fact  that  ♦  »  •  some  prior  invention  performed  the  func- 
tion  quite  as  well,  or  performed  it  with  superior  excellence. 
♦  ♦  •  Inded,  patents  are  never  held  to  be  void  for  want 
of  utility  merely  because  the  things  covered  by  them  perform 
their  functions  but  poorly.  In  such  cases  no  harm  results  to 
the  public  from  the  exclusive  right  because  few  will  use  the 
invention. 


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Journal  of  tiJe  Patent  Office  Society.         555 

And  Eobinson's  statement  is   (Par.  342)   under  the 

caption,  ** Utility  Actual,  Not  Comparative": 

The  existence  of  utility  in  an  invention  is  not  determined 
by  cornering  it  with  other  arts  and  instruments.  It  is  not 
essential  to  its  patentability  that  an  invention  should  supersede 
or  be  superior  to  others  theretofore  employed  for  the  same 
purpose,  nor  it  is  inconsistent  with  its  usefulness  that  it  should 
in  its  turn  have  been  displaced  by  subsequent  inventions.  It 
must  be  useful  in  itself,  in  some  degree,  at  the  date  of  its 
bestowal  on  the  public.  This  being  true  it  is  sufficient  consid- 
eration for  the  grant  of  an  exclusive  right;  although  the  value 
of  that  right  to  the  inventor  may  depend  almost  entirely  upon 
the  relative  superiority  of  his  invention  when  compared  to 
others. 

In  ex  parte  Hall  and  Hall  (C.  D.,  1872,  196),  Mr.  Com- 
missioner Leggett  made  this  statement: 

I  cannot  entirely  disregard  Section  31  of  the  Patent  Act, 
which  requires  that,  on  examination,  the  alleged  new  invention 
shall  appear  "sufficiently  useful  and  important'' — not  regarding 
it  absolutely,  of  course,  but  with  reference  to  the  state  of  the 
art  to  which  it  pertains. 

The  subject-matter  of  the  application  was  a  sprinkler 

pipe  made  of  lead  with  smooth  perforations.    Perforated 

nxetal  pipps  were  old  and  the  Commissioner  said  that 

smooth  holes  had  been  known  **  since  the  day  of  Tubal 

Cain,'^  so  that  the  statement  as  to  relative  utility  was 

apparently  a  mere  dictum.    And  after  having  been  here 

a  year  longer  he  seems  to  have  changed  his  view,  for  in 

ex  parte  Smith  (C.  D.  1873,  139)  he  said: 

The  courts  have  construed  the  word  "useful"  so  as  to  include 
any  thing  that  is  not  hurtful  and  is  adapted  to  the  end  sought. 
In  this  case  there  is  entire  want  of  such  adaptation.  I  admit 
that  there  is  rarely  ground  for  invoking  this  clause  of  the 
statute  to  defeat  an  application  and  it  should  always  be  resorted 
to  with  great  caution.  The  mere  fact  that  the  device  is  small 
and  apparently  trifling  is  not  proper  ground  for  rejection. 

The  applicant  in  that  case  proposed  to  pump  water  by 
hand  from  below  a  water  wheel  to  operate  the  water 
wheel  and  drive  the  heavy  machinery  of  a  mill.  It  was 
one  of  the  not  uncommon  cases  in  which  the  inventor 
labors  under  the  delusion  '*that  nature  can  be  circum- 
vented^' and  power  gained  by  sufficiently  complicating 
the  parts. 

There  appears  to  be  no  authority  whatever  for  the 
proposition  that  a  patent  for  a  useful  device  should  be 
refused  on  the  ground  that  the  prior  art  contained 
devices  of  the  same  character  and  of  superior  utility. 
In  the  comparatively  recent  case  of  Besser  v.  Merrilot 


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556         Journal  of  thb  Patent  Office  Society. 

Culvert  Core  Co.,  243  F.  E.,  611,  Cir.  Ct.  A.  8th  Cir.,  thig 

statement  is  found: 

The  term  "useful/'  as  contained  in  the  patent  law,  when 
applied  to  a  machine,  means  that  the  machine  wiU  accomplish 
its  purpose  practically  when  applied  to  industry.  It  is  to  be 
given  a  practical  and  not  a  speculative  meaning.  It  means 
that  the  machine  will  work  and  accomplish  the  purposes  set 
forth  in  the  specifications.  Even  if  the  machine  can  be  made 
to  accomplish  the  purpoees  specified,  it  is  not  useful  within 
the  meaning  of  the  patent  law  if  from  its  inherent  nature  it 
{  will  accomplish  the  purpose  only  to  such  a  restricted  extent 
as  to  make  its  use  in  industry  prohibitive. 

It  is  clear  that  the  court  considered  the  culvert  core 
as  actually  worthless.  The  statement  of  the  law  goes 
further  than  other  cases,  but  the  opinion  nowhere  inti- 
mates that  a  patent  should  be  held  invalid  on  the  ground 
of  comparative  inutility.  On  the  contrary,  the  court  cites 
as  one  of  its  authorities.  Bliss  v.  Brooklin,  Fed.  Case 
1546,  in  which  the  court  said: 

The  law  upon  the  subject  of  utility  is  not  in  doubt.  No 
particular  amount  of  utility  is  required  to  render  an  invention 
patentable,  but  there  must  be  some.  When  an  invention  is 
shown  to  be  worthless  the  patent  must  fail.  Such  appears 
to  be  the  case  in  the  present  instance. 

The  device  in  that  case  was  inoperative.  It  was  a  hose 
coupling  that  literally  would  not  hold  water. 

Another  interesting  case  in  which  the  patent  was  held 
not  for  a  useful  invention  is  that  of  Twentieth  Century 
Motor  Car  and  Supply  Co.  v.  Holcomb  Co.,  220  F.  E., 
669,  C.  C.  A.,  2nd  Cir.,  Jan.  12,  1915.  The  patent  was  for 
a  rain-vision  wind  shield  of  the  type  in  which  the  upper 
glass  is  swung  forwardly  to  leave  an  opening  through 
which  the  driver  may  view  the  road. 

I  quote  from  the  opinion: 

•  *  •  when  the  upper  glass  is  swung  into  iK>sition  away 
from  the  lower  glass,  the  horizontal  distance  between  them 
cannot  exceed  three  inches.  What  the  perpendicular  distance, 
through  which  the  chauffeur  must  look  in  order  to  see  the  road, 
would  be,  is  not  stated,  but  manifestly  it  must  be  much  less 
than  three  inches.  To  rely  upon  such  a  narrow  opening  through 
which  to  view  the  road  ahead  seems  to  us  a  highly  dangerous 
expedient.  When  it  is  remembered  that  cars  moving  at  the  rate 
of  twenty-five  miles  an  hour,  which  is  not  generally  considered 
excessive,  are  approaching  each  other  at  the  rate  of  fifty  miles 
an  hour  It  seems  plain  that  If  the  drivers  relied  upon  these 
narrow  perpendicular  openings  they  would  be  In  the  Jaws  of 
collision  before  they  knew  of  each  other's  approach. 

There  may  be  some  doubt  as  to  whether  or  not  this 
finding  of  fact  was  right.    The  size  of  the  opening  that 


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JOUBNAL  OF  THE  PaTENT  OfFICE  SoCIBTY.  557 

is  necessary  for  adequate  vision  depends,  of  course,  upon 
its  distance  from  the  eye  of  the  driver.  We  know,  for 
illustration,  that  a  ball  game  may  be  viewed  through  a 
knot-hole  in  the  fence.  But  whatever  we  may  think  of 
the  finding  of  fact,  the  case  does  not  hold  the  patent  void 
because  the  shield  was  less  useful  than  other  similar 
shields,  but  because  the  court  believed  that  it  was  not 
useful  at  all. 

While  it  is  established  beyond  doubt  that  an  art  or 
instrument  need  not  be  more  efficient  than  prior  devices, 
to  render  it  patentable,  there  are  cases  in  which  resort 
is  properly  had  to  a  comparison  of  utility  in  order  to 
determine  whether  or  not  a  thing  is  patentable.  Rela- 
tive utility  is  considered  in  these  cases,  however,  not  to 
determine  whether  or  not  the  thing  is  useful,  but  in  order 
to  determine  whether  or  not  novelty  is  present.  I  quote 
from  Robinson  (Par.  344) : 

TJpon  the  question  of  novelty,  where  doubt  arises  concerning: 
the  identity  of  two  inventions,  and  whether  the  apparent  diver- 
sities between  them  are  formal  or  substantial,  the  superior 
utility  of  one  may  be  sufficient  to  remove  the  doubt.  For 
though  the  apparent  difference  be  small,  the  difference  in  the 
usefulness  of  their  results  may  be  great  enough  to  demonstrate 
that,  notwithstanding  all  external  similarities,  such  variations 
mu«t  exist  between  their  modes  of  operation  that  the  idea& 
which  they  embody  cannot  be  the  same. 

This  is  only  a  phase  of  the  well  known  rule  that 
novelty  is  determined  by  comparison  with  the  prior  art. 
Things  are  compared  by  comparing  their  properties, 
and  utility,  as  we  have  seen,  is  the  most  important  prop- 
erty of  every  instrument  that  falls  within  the  field  of 
the  useful  arts. 

Summary  of  Established  Premises. 

In  a  word,  the  patent  system  purposes  to  promote  the 
progress  of  the  useful  arts  by  stimulatng  invention, 
encouraging  the  mechanical  and  commercial  development 
of  known  inventions  and  creating  a  fund  of  available 
information  relating  thereto. 

The  elements  of  patentability  are  invention,  novelty 
and  utility. 

^*The  law  does  not  look  to  the  degree  of  utility.  It 
simply  requires  that  it  (the  invention)  shall  be  capable 
of  use  and  that  the  use  be  such  that  sound  morals  or  pol- 
icy do  not  prohibit." — Bedford  v.  Hunt,  supra. 


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558  JOUBNAL.  OF  THE  PaTBNT  OfFICB  SoOIBTY. 

What  the  Proposition  of  Refusal  for  Comparative 
Inutility  Involves. 

Recurring  now  to  our  suppositious  case  and  to  the 
proposition  that  a  patent  for  a  paddle-wheel  should  be 
refused  because  the  paddle-wheel,  though  new,  is  less 
efficient  than  the  old  propeller,  it  is  apparent  at  once  that 
this  procedure  would  involve  a  change  that  is  funda- 
mental. It  would  substitute  for  the  evolutionary  process 
of  natural  selection  the  Spartan  practice  of  infant 
exposure. 

Practicability. 

The  change,  even  if  it  were  desirable,  is  impracticable 
from  an  administrative  standpoint.  The  inventor  him- 
self can  seldom  judge  as  to  the  comparative  utility  of 
several  forms  of  the  same  broad  invention.  In  class 
21-69  (vehicle  wheels)  there  is  a  patent  to  the  great 
Edison  which  shows  five  modifications,  none  of  which, 
so  far  as  I  know,  has  gone  into  practical  use.  You  will 
all  recall  similar  examples  in  your  own  classes.  If  the 
inventor  cannot  judge  as  to  comparative  utility  in  such 
cases,  how  can  the  examiner  be  expected  to  do  sof  We 
all  know  that  we  are  daily  acting  on  cases  without  having 
seen  either  a  single  device  of  the  prior  art  or  the  device 
of  the  application  in  actual  operation. 

A  very  interesting  opinion  bearing  on  this  question 
is  found  in  ex  parte  Cheesebrough  (C.  D.,  1869,  18), 
decided  by  Commissioner  Fisher.  The  object  of  the 
invention  was  to  prevent  *' canals  and  other  water  courses 
from  being  closed  by  ice.''  The  means  used  was  a  series 
of  boilers  placed  at  stated  intervals  and  connected  by 
pipe  which  lay  along  the  bottom  of  the  canal  and  through 
which  superheated  steam  was  passed  under  the  water. 
The  application  had  been  rejected  on  the  ground  that 
the  device  was  not  sufficiently  useful,  the  examiner 
being  of  the  opinion  that  the  thing  would  be  too  expen- 
sive. vThe  Commissioner  said: 

utility,  In  the  eye  of  the  patent  law,  refers  rather  to  a  utility 
of  purpose  than  a  utility  of  means.  If  the  end  which  the 
inventor  proposes  to  accomplish  be  useless,  mischievous,  friv- 
olous, or  immoral,  he  can  obtain  no  patent,  although  the  means 
which  he  proposes  may  be  ingenious  and  for  his  purpose,  of 
great  utility  (as  a  burglar's  tool).  On  the  other  hand,  if  the 
purpose  be  a  good  or  useful  one  the  utility  of  the  means  need 
not  be  carefully  scanned.  If  the  means  are  inferior  to  the  old 
way  of  doing  the  same  thing,  or  inferior  to  other  new  ways, 
the  invention  sinks  Into  obscurity  and  is  soon  forgotten.  The 
best  test  of  utility  is  use;  and  in  the  busy  competition  of  trade 

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y  JoXJBNALi  OF  THE  PaTENT  OfFICE  SoCIBTY.  559 

this  test  is  soon  applied,  and  the  judgment  of  the  inventor  ia 
affirmed  or  reversed  by  an  inexorable  tribunal. 

This  Office  may  readily  apply  the  first  test.  It  may  deter- 
mine whether  the  purpose  of  the  invention  is  a  proper  one.  It 
has  no  means  of  applying  the  second.  It  cannot  enforce  the 
trial  of  the  invention  on  a  scale  sufficient  to  develop  its  useful- 
ness, nor  upon  any  scale.  It  is  furnished  with  a  drawing  and 
a  small  model.  From  these  it  would  be,  in  most  cases,  trifling, 
with  the  rights  of  inventors  to  attempt  to  pronounce^. 
ex  cathedra,  upon  the  value  of  their  inventions.  It  can  only 
see  that  the  purpose  proposed,  if  accomplished,  would  be  useful, 
or  that  the  plan  does  not  show  the  absence  of  some  part 
obviously  essential.  Beyond  this  it  can  only  oppose  the  opinion 
of  man  to  man — an  opinion  by  which  if  all  our  great  inventions 
had  been  tried  when  first  presented  to  the  Office  or  to  the 
public,  the  great  majority  of  them  would  have  been  strangled 
at  birth  by  the  unfriendly  hand  of  adverse  critcism.  Tried  by 
the  tests  which  I  think  ought  fairly  to  be  applied  to  it,  I  think 
this  Invention  proposes  to  accomplish  a  purpose  which  is 
eminently  useful.  The  feasibility  of  it,  in  point  of  expense,  I 
leave  to  those  who  may  hereafter  contract  with  the  applicant. 

Indeed,  the  brightest  minds  are  often  unable  to  judge 
€ven  as  to  the  absolute  utility  of  a  new  device.  This  is 
shown  by  patent  No.  6469  to  Abraham  Lincoln. 

Desirability  from  a  Theoretical  Standpoint. 

It  is,  however,  reasonably  arguable  that  whatever  the 
difficulties  the  change  may  involve,  if  it  is  desirable  from: 
a  theoretical  standpoint  the  right  men  and  machinery 
can  somehow  be  provided  to  carry  it  out  and  that  it  will 
at  least  furnish  an  ideal  toward  which  we  may  work. 

No  weightier  authorities  as  to  the  desirability  of  the 
change  can  be  found  than  the  opinions  of  the  courts  as 
to  what  the  law  on  the  subject  is,  because  those  opinions 
were  essentially,  at  least  in  the  beginning  before  prece- 
dents had  been  made,  statements  of  what  the  judges 
thought  the  law  ought  to  be.  The  question  seems  to  be 
substantially  disposed  of  in  the  reasoning  of  the  decis- 
ions that  were  cited  and  quoted  in  our  determination  of 
what  the  law  is.  We  need  not  therefore  burden  ourselves 
with  further  authorities,  but  may  complete  our  disposi- 
tion of  the  question  after  briefly  examining  it  as  though 
it  were  an  original  proposition. 

Devices  of  the  prior  art  are  often  highly  developed. 
When  new  inventions  come  into  the  Office  they  are  often 
crude  and  wobbly.  Many  of  them,  however,  which  are 
apparently  weaklings,  fit  only  for  exposure  to  the  harsh 
rigors  of  the  examiner's  judgment  as  to  their  comparative 
utility,  but  which  are  now  spared  this  treatment,  may, 
and  often  do,  gi'ow  into  giants  of  usefulness. 


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560        Journal  of  the  Patent  Office  Soodbty. 

In  1879,  when  Selden  filed  the  application  for  his  now 
famous  motor-vehicle  patent,  the  Brayton  internal  com- 
bustion engine  was  comparatively  highly  developed.  The 
Otto  type  of  engine  was  then  an  undeveloped  infant. 
Today  the  Otto  type  of  engine  drives  all  of  our  motor 
,  cars  and  propels  all  of  our  airplanes.  Yet  under  the 
practice  that  has  been  proposed  recognition  of  the  Otto 
engine  would  probably  have  been  withheld  on  the  ground 
of  inferior  utility.  (See  for  descriptions  of  these  engines 
and  the  historv  of  their  development,  Columbia  Motor 
Car  Co.  V.  C.  A.  Duerr  &  Co.  et  (d.,  184  Fed.  Rep.,  893.) 

The  progress  of  the  useful  arts  has  many  turnings. 
It  often  seemingly  turns  backward,  only  to  burst  forth 
into  new  and  unexpected  channels.  The  invention  of  a 
new  device  which  is  not  itself  more  useful  than  prior 
devices  may  be  a  step  to  a  vantage  ground  from  which 
further  progress  can  be  made.  But  suppose  it  is  not. 
Suppose  it  is  a  plain  step  sidewise,  with  little  possibility 
of  an  advance  beyond  the  eflSciency  of  the  known  device. 
•As  David  Harum  said,  ^*  There  is  no  harm  in  doin'  a 
little  supposin'."  Suppose",  then,  that  a  very  efficient 
safety  razor  has  been  invented  and  patented.  It  can 
be  made  for,  say,  fifty  cents.  The  manufacturer  is  in 
doubt  as  to  whether  more  money  may  be  made  by  selling 
it  for  one  dollar  or  for  three.  He  decides  to  sell  it  for 
three.  Another  inventor  conceives  of  a  safety  razor 
which  is  not  so  durable  or  so  efficient  and  which  cannot 
be  manufactured  so  cheaply.  It  can  be  made  for,  say, 
sixty  cents  and  sold  for  one  dollar,  while  the  patented 
razor  brings  three.  The  newer  razor  we  have  supposed 
is  inferior  from  every  mechanical  standpoint  and  costs 
more  to  make,  yet  thousands  may  be  sold  at  one  dollar. 
I  believe  it  should  be  patentable. 

It  is  admitted  that  a  patent  may  enable  the  patentee 
to  exact  tribute  from  later  inventors  who  have  improved 
his  device,  but  this  is  true  whether  the  first  device  is 
superior  or  inferior  to  those  in  the  prior  art.  In  either 
case  the  patentee  may  suppress  the  improved  infringing 
device.  He  may  prevent  the  manufacture  of  an  article 
which  is  better  than  his  own.  This  is  not  only  an  argu- 
ment against  granting  patents  for  things  of  inferior 
utility,  but  it  is  as  well  an  argument  against  granting^ 
any  patent  whatever.    Curtis  says  (Par.  54),  **It  is  now 


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Journal  op  the  Patent  Office  Society.         561 

too  late  in  the  history  of  civilization  to  question  the  policy 
of  this  protection,  which  forms  a  prominent  feature  in 
the  domestic  polity  of  every  nation  which  has  reached 
any  considerable  stage  of  progress  in  the  arts  of  civil- 
ized life/'  The  Hon.  Elisha  Foote,  in  an  argument 
before  the  Committee  on  Patents  in  1876,  said,  **It  is 
within  my  remembrance  when  most  of  the  women  were 
employed  in  spinning  and  weaving,  ju&t  as  they  were  in 
the  time  of  Homer.  ♦  *  ♦  Indeed,  since  the  prac- 
tical operation  of  the  patent  laws  there  has  been  more 
advance  in  all  the  practical  arts  of  life  than  was  made 
before  in  all  the  preceding  ages  of  the  world  taken 
together."  We  must  carefully  avoid  condemning  inven- 
tions of  lesser  utility  for  reasons  that  apply  to  all  other 
inventions  as  well. 

The  proposed  practice  of  refusing  patents  because  of 
inferior  utility  would  undoubtedly  result  in  delay  in 
filing  and  discouragement  both  of  invention  and  develop- 
ment. It  would  not  stimulate  invention  or  encourage 
the  development  of  know  instruments. 

There  could  exist,  then,  only  one  other  considerable 
reason  for  its  adoption,  which  would  be  that  it  improved 
the  fund  of  useful  knowledge  resulting  from  the  patent 
system  by  leaving  only  what  the  examiner  considered 
the  most  useful  arts  and  instruments  of  each  class.  The 
Annual  Eeport  of  the  Commissioner,  published  in  the 
first  Official  Gazette,  page  65,  says: 

In  any  one  of  the  useful  arts,  a  knowledge  of  the  present 
state  of  that  art — of  what  others  have  done  in  it — is  essential 
and  necessary  to  any  person  engaged  in  improving  it.  *  *  * 
without  such  knowledge  no  one  of  them  can  pursue  his  investi- 
gations intelligently  or  economically. 

A  short  time  ago  the  engineers  of  the  General  Electric 
Co.  began  work  on  an  automatic  lamp-making  machine. 
This  machine  required  the  automatic  performance  of 
many  functions.  They  instructed  their  representative 
here  to  send  them,  not  merely  patents  for  the  most  effi- 
cient machines  for  performing  those  functions,  but  all 
the  patents  for  machines  performing  those  functions. 

The  more  nearly  our  patent  system  crystallizes  and 
makes  available  the  totality  of  human  knowledge  of 
science  and  the  useful  arts  the  more  it  will  promote  prog- 
ress. Thert  is  no  kind  of  reference  work  that  is  so  disap- 
pointing and  exasperating  as  an  abridged  edition.    The 


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562         Journal  op  the  Patent  Office  Society. 

ideal  condition  of  the  published  art  is  not  abridgment, 
but  completeness. 

Our  conclusion  must  be,  then,  that  the  proposed  change 
would  neither  stimulate  invention,  encourage  develop- 
ment, nor  improve  the  store  of  useful  knowledge,  but 
that  by  allowing  the  public  to  judge  initially,  as  it  must 
finally,  the  comparative  utility  of  all  inventions,  we  best 
promote  the  progress  of  science  and  the  useful  arts, 
because  thus  and  thus  only  are  we  enabled  to  '*  prove  all 
things  and  hold  fast  to  that  which  is  good." 

RULES  49  TO  55,  INCLUSIVE. 

By  D.  W.  Edelin. 

— m— 

Rule  49. 

The  applicant  for  a  patent  is  required  by  law  to  furnish  a 
drawing  of  his  invention  whenever  the  nature  of  the  case 
admits  of  it. 

Every  application  for  a  patent  must  be  accompanied 
by  a  drawing  whenever  the  nature  of  the  invention  is  a 
subject  that  can  be  illustrated.  These  drawings  must 
conform  to  certain  rules  and  regulations  in  order  that 
uniformity  of  practice  may  be  secured. 

The  statute  requiring  a  drawing  means  a  drawing 
showing  what  is  described,  and  a  part  can  not  be  omitted 
any  more  than  the  whole  of  it.  The  question  is  not 
whether  the  construction  can  be  understood  without  a 
drawing,  but  whether  it  can  be  illustrated.  Ex  parte 
Edgerton,  101  O.  G.,  1131. 

When  possible,  a  drawing  should  be  so  complete  that 
the  purpose  and  operation  of  the  invention  may  be  read- 
ily understood  by  one  skilled  in  the  art  by  means  of  a 
mere  inspection  of  the  drawings.  Ex  parte  Hartley, 
57  O.  a,  2746. 

Rule  50. 

The  drawing  may  be  signed  by  the  inventor  or  one  of  the 
persons  indicated  in  Rule  25,  or  the  name  of  the  applicant  may 
be  signed  on  the  drawing  by  his  attornei^  in  fact.  The  drawing 
must  show  every  feature  of  the  invention  covered  by  the  claims, 
and  the  figures  should  be  consecutively  numbered,  if  possible. 
When  the  invention  consists  of  an  improvement  on  an  old 
machine  the  drawing  must  exhibit,  in  one  or  more  views,  the 
invention  Itself,  disconnected  from  the  old  structure,  and  also 
in  another  view,  so  much  only  of  the  old  structure  as  will 
suffice  to  show  the  connection  of  the  invention  therewith. 

This  rule  requires  that  the  drawing  must  be  signed  by 


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JouBNAL  OP  THE  Patbnt  Oppiob  Socibty.         563 

the  inventor  or  his  attorney,  or  as  provided  by  Rule  25. 
When  the  inventor  signs  the  drawing  it  is  not  necessary 
for  the  attorney  to  sign  it  and  he  will  not  be  permitted 
to  do  so. 

Printed  or  photolithographic  signatures  are  not 
acceptable,  but  if  filed  they  may  be  corrected  by  return- 
ing the  drawing  to  the  applicant  or  attorneys  for  cor- 
rection. 

If  the  inventor  dies  before  the  application  is  filed  the 
name  of  the  inventor  and  that  of  the  executor  or  admin- 
istrator, as  the  case  may  be,  must  be  placed  on  the  draw- 
ing. The  inventor's  name  must  always  be  placed  after 
or  under  the  word  inventor,  as,  for  example: 

Inventor, 

John  Dob,  Dec'd. 

BicHABD  Rob,  Executor 

By  John  Smith,  Atty. 

This  rule  further  provides  that  every  feature  that  is 
described  or  claimed  must  be  illustrated  in  the  drawing 
or  the  description  thereof  must  be  canceled  from  the 
specification  and  claims.  When  the  invention  relates  to 
an  improvement  on  an  old  machine  there  should  be  shown 
at  least  one  view,  or  so  much  thereof  of  the  old  structure 
as  will  serve  to  illustrate  the  connection  and  relation  of 
the  improvement  thereto.  A  few  inventors  illustrate  the 
old  structure  by  light  lines,  omitting  all  shading,  which, 
in  my  opinion,  makes  a  very  effective  showing,  and  when 
practicable  this  way  of  illustrating  the  old  feature  is 
recommended. 

Rule  51. 

Two  editions  of  patent  drawings  are  printed  and  published — 
one  for  Office  uee,  certified  copies,  etc.,  of  the  size  and  character 
of  those  attached  to  patents,  the  work  being  about  6  by  9^ 
inches;  and  one  reduction  of  a  selected  portion  of  each  drawlncr 
for  the  Official  Gazette. 

This  rule  relates  to  the  printing  of  two  editions  of  the 
patent  drawings — one  for  general  use,  which  is  reduced 
to  about  6  by  9%  inches,  and  from  these  copies  all  exam- 
inations for  references  are  made,  also  certified  copies 
for  courts,  etc.  The  other  edition  is  of  a  selected  figure 
or  figures  which  best  illustrate  the  invention,  to  be  used 
in  the  Official  Gazette.  As  the  figure  or  figures  selected 
will  be  greatly  reduced  for  printing,  care  should  be  exer- 
cised by  the  examiner  in  the  selection  to  insure  the  best 
and  complete  illustration  of  the  invention. 


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564        Journal  of  the  Patent  Office  Society. 

Rule  52. 

This  work  Is  done  by  the  photolithographic  process,  and 
therefore  the  character  of  each  original  drawing  must  be 
brought  as  nearly  as  possible  to  a  uniform  standard  of  excel- 
lence, suited  to  the  requirements  of  the  process,  to  give  the 
best  results,  in  the  Interests  of  inventors,  of  the  Office,  and  of 
the  public.  The  following  rules  will  therefore  be  rigidly 
enforced,  and  any  departure  from  them  will  be  certain  to  cause 
delay  in  the  examination  of  an  application  for  letters  patent: 

This  rule  provides  for  a  uniform  standard  of  draw- 
ings, and  it  might  be  well  at  this  time  to  relate  to  you 
the  first  step  taken  when  a  drawing  is  filed  in  this  Office. 

All  drawings  are  or  should  be  filed  in  the  mail  room, 
where  the  stamp  giving  the  date  of  receipt  is  placed  on 
the  back  of  each  sheet ;  they  are  then  sent  to  the  drafts- 
man's  division,  where  they  are  examined  and,  if  found 
to  be  of  the  correct  standard,  the  draftsman's  stamp 
will  be  put  on  the  back  at  the  upper  left-hand  comer  of 
«ach  sheet,  and  if  rejected  the  reasons  for  such  rejections 
will  be  noted  on  the  drawing,  and  in  your  first  action 
you  are  to  inform  the  applicant  of  the  rejection  and  the 
reason  for  such  rejections  as  noted. 

In  examining  these  drawings  the  draftsman  does  not 
undertake  to  examine  them  as  to  their  accuracy  or  as  to 
whether  there  are  too  many  sheets  or  useless  illustra- 
tions, but  only  as  to  their  standard  of  execution,  and 
you  are  required  to  note  after  reading  the  specification 
any  defect  which  you  may  find  in  the  drawing.  Fre- 
quently new  drawings  seem  necessary  and  at  times  are 
necessary,  but  you  are  not  at  liberty  to^  require  new  ones 
until  aflor  consultation  with  the  Chief  Draftsman  as  to 
whether  or  not  the  original  drawing  can  be  corrected. 

Paragraph  (a). 

(a)  Drawings  must  be  made  upon  pure  white  paper  of  a 
thickness  corresponding  to  two-sheet  or  three-sheet  Bristol 
board.  The  surface  of  the  paper  must  be  calendered  and 
•smooth.  India  ink  alone  must  be  used,  to  secure  perfectly 
black  and  solid  lines. 

The  standard  of  paper  must  be  white  and  correspond 
to  two  or  three  sheet  Bristol  board  in  thickness  and  the 
drawings  must  be  made  with  India  ink  only. 
Paragraph  (b). 

(b)  The  size  of  a  sheet  on  which  a  drawing  id  made  must 
be  exactly  10  by  15  inches.  One  inch  from  its  edges  a  single 
marginal  line  is  to  be  drawn,  leaving  the  "sight"  precisely 
8  by  13  inches.     Within  this  margin  all  work  and  signatures 


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Journal  of  the  Patent  Office  Society,         565 

must  be  included.  One  of  the  shorter  sides  of  the  sheet  is 
regarded  as  its  top,  and,  measurliig  downwardly  from  the 
marginal  line,  a  space  of  not  less  than  1  %  inches  Is  to  be  left 
blank  for  the  heading  of  title,  name,  number,  and  date. 

This  sheet  must  be  10  by  15  inches,  with  a  one  inch 
marginal  line  from  its  edges.  Within  this  marginal  line 
and  at  the  top  of  the  sheet  a  space  of  one  and  a  quarter 
(iVi)  inches  must  be  left  blank  for  the  printing  of  the 
title,  name,  number  and  dates,  leaving  the  rest  of  the 
space  for  the  drawing  and  signatures,  all  of  which  must 
come  within  the  marginal  line. 

Paragraph  (c). 

(c)  All  drawings  must  be  made  with  the  pen  only.  Every 
line  and  letter  (signatures  included)  must  be  absolutely  black. 
This  direction  applies  to  all  lines,  however  fine,  to  shading, 
and  to  lines  representing  cut  surfaces  in  sectional  views.  All 
lines  must  be  clean,  sharp,  and  solid,  and  they  must  not  be 
too  fine  or  crowded.  Surface  shsiding,  when  used,  should  be 
open.  Sectional  shading  should  be  made  by  oblique  parallel 
lines,  which  may  be  about  one-twentieth  of  an  inch  apart.  Solid 
black  should  not  be  used  for  sectional  or  surface  shading.  Free- 
hand work  should  be  avoided  wherever  it  is  possible  to  do  so. 

Provides  that  all  drawings  must  be  made  with  drawing 
instruments  only,  in  order  to  secure  clean,  clear  and 
sharp  lines,  which  are  absolutely  necessary  to  secure  a 
proper  reproduction  by  photolithographing.  All  lines, 
including  lettering  and  signatures,  must  be  absolutely 
black. 

Parts  in  section  must  be  indicated  by  oblique  parallel 
lines. 

Solid  black  should  only  be  used  to  indicate  insulating 
material  in  elevation,  but  may  be  used  to  denote  thin 
sheets  of  metal  in  section.  (Mellin  &  Eeid,  O.  G., 
1037,  1910.) 

Paragraph  (d). 

(d)  Drawings  should  be  made  with  the  fewest  lines  possible 
consistent  with  clearness.  By  the  observance  of  this  rule  the 
effectiveness  of  the  work  after  reduction  will  be  much  increased. 
Shading  (except  on  sectional  views)  should  be  used  only  on 
convex*and  concave  surfaces,  where  it  should  be  used  sparingly, 
and  may  even  there  be  dispensed  with  if  the  drawing  be  other- 
wise well  executed.  The  plane  upon  which  a  sectional  view  is 
taken  should  be  indicated  on  the  general  view  by  a  broken  or 
dotted  line,  which  should  be  designated  by  numerals  corre- 
sponding to  the  number  of  the  sectional  view.  Heavy  lines 
on  the  shade  sides  of  objects  should  be  used,  except  where  they 
tend  to  thicken  the  work  and  obscure  letters  of  reference.  The 
light  is  always  supposed  to  came  from  the  upper  left-hand 
corner  at  an  angle  of  45  degrees. 

Surface  shading,  when  properly  executed,  is  not  objec- 


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5G6         JouBNAL  OP  THE  Patent  Office  Society. 

tionable,  especially  when  it  seems  necessary  to  bring  out 
some  particular  surface  or  to  clearly  define  the  relations 
of  various  component  elements,  but  it  should  not  be 
allowed  to  be  used  merely  to  cover  up  or  obscure  the 
drawing  without  any  meaning.  The  shading  of  concave 
and  convex  surfaces  is  desirable  and  helpful  in  the  read- 
ing of  a  drawing.  Shade  lines  should  always  be  used 
and  in  many  cases  when  not  used  they  should  be  required 
when  it  is  difficult  to  read  the  drawing  without  them. 

The  lines  upon  which  a  sectional  view  is  taken  must 
be  indicated  by  the  same  numeral  as  that  indicating  such 
sectional  view,  as  for  example.  Fig.  3  is  a  vertical  sec- 
tion taken  on  line  3 — 3  of  Fig.  1. 

Paragraph  (e). 

(e)  The  scale  to  which  a  drawing  is  made  ought  to  be  large 
enough  to  show  the  mechanism  without  crowding,  and  two  or 
more  sheets  should  be  used  if  one  does  not  give  sufiQcient 
room  to  accomplish  this  end;  but  the  number  of  sheets  must 
never  be  more  than  is  absolutely  necessary. 

Drawings  should  be  made  on  a  sufficiently  large  scale 
to  clearly  illustrate  the  invention,  but  in  no  case  should 
drawings  be  allowed  where  the  scale  is  made  unneces- 
sarily large  and  spread  over  a  number  of  sheets  where 
it  is  possible  that  one  or  two  sheets  on  a  reduced  scale 
would  clearly  illustrate  the  invention. 

Paragraph  (f). 

(f)  The  different  views  shouW  be  consecutively  numbered. 
•Letters  and  figures  of  reference  must  be  carefully  formed.  They 
shouM,  if  possible,  measure  at  least  one-eighth  of  an  inch  in 
height,  so  that  they  may  bear  reduction  to  one  twenty-fourth 
of  an  inch ;  and  they  may  be  much  larger  when  there  is  sufficient 
room.  They  must  be  so  placed  In  the  close  and  complex  parts 
of  drawings  as  not  to  interfere  with  a  thorough  comprehension 
of  the  same,  and  therefore  should  rarely  cross  or  mingle  with 
the  lines.  When  necessarily  grouped  around  a  certain  part  they 
should  be  placed  at  a  little  distance,  where  there  is  available 
space,  and  connected  by  lines  with  the  parts  to  which  they  refer. 
They  should  not  be  placed  upon  shaded  surfaces,  but  when  it  is 
difficult  to  avoid  this,  a  blank  space  must  be  left  in  the  shading 
where  the  letter  occurs,  so  that  it  shall  appear  perfectly  distinct 
and  separate  form  the  work.  If  the  same  part  of  an  invention 
appear  in  more  than  one  view  of  the  drawing  it  must  always 
be  represented  by  the  same  character,  and  the  same  character 
must  never  be  used  to  designate  different  parts. 

The  different  views  should  be  consecutively  numbered, 
and  where  possible  the  views  should  be  consecutively 
placed  on  the  sheets.  Letters  should  not  be  used  to  des- 
ignate figures.    In  lettering  drawings  mistakes  are  often 


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Journal  of  the  Patent  Office  Society.         567 

made  by  using  the  same  letter  to /denote  different  parts, 
which  is  objectionable  and  must  be  corrected,  as  the  same 
part  throughout  the  different  views  must  be  designated 
by  the  same  reference  character.  While  it  is  required 
that  the  drawing  should  be  fully  described,  it  does  not 
seem  necessary  to  describe  in  detail  and  letter  such  parts, 
for  instance,  as  a  bolt,  the  nut  and  head  and  hole  into 
which  it  passes  or  fits,  thus  placing  so  many  reference 
characters  on  the  drawing  that  it  obscures  and  makes  it 
diflScult  to  read.  Lettering  should  be  neatly  and  care- 
fully formed  and  applied  and  must  always  read  the  same 
way  on  the  sheet  and  should  be  large  enough  to  bear 
reduction  and  still  be  read  with  ease. 

Paragraph  (g). 

(g)  The  signature  of  the  applicant  should  be  placed  at  the 
lower  right-hand  corner  of  each  sheet,  and  the  signature  of  the 
witnesses,  if  any,  at  the  lower  left-hand  comer,  all  within  the 
marginal  line,  but  in  no  instance  should  they  trespass  upon  the 
drawings.  (See  specimen  drawing,  sippendix.)  The  title  should 
be  written  with  pencil  on  the  back  of  the  sheet.  The  permanent 
names  and  title  constituting  the  heading  will  be  applied  subse- 
quently by  the  Office  in  uniform  style. 

There  should  be  enough  space  left  at  the  lower  right- 
hand  comer  of  the  sheet  for  the  signatures,  as  they  must 
not  encroach  upon  the  drawing. 

Paragraph  (h). 

(h)  All  views  on  the  same  sheet  must  stand  in  the'  same 
direction  and  must*  if  possible  stand  so  that  they  can  be  read 
with  the  sheet  held  in  an  upright  position.  If  views  longer 
than  the  width  of  the  sheet  are  necessary  for  the  proper  llluS'- 
tration  of  the  invention  the  sheet  may  be  turned  on  its  side. 
The  space  for  heading  must  then  be  reserved  at  the  right  and 
the  signatures  placed  at  the  left,  occupying  the  same  space  and 
position  as  in  the  upright  views  and  being  horizontal  when 
the  sheet  is  held  in  an  upright  position.  One  figure  must  not 
be  placed  upon  anotoer  or  within  the  outline  of  another. 

All  views  on  the  same  sheet  must  read  in  the  same 
direction,  and,  where  possible,  must  be  placed  on  the 
sheet  so  that  it  can  be  read  when  held  in  an  upright  posi- 
tion. This  last  requirement  has  never  been  insisted  upon, 
but  should  be,  and  I  believe  an  order  in  the  near  future 
will  be  issued  requiring  this  in  all  drawings  when  pos- 
sible.   You  can  not  too  strongly  encourage  this  practice. 

There  are  times,  however,  when  it  is  necessary  in  the 
preparation  of  complicated  drawings  to  turn  the  sheet 
and  put  the  views  lengthwise  in  order  to  make  them  on 
as  large  a  scale  as  possible.    All  views  must  be  clearly 


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568         Journal  or  the  Patent  Office  Society* 

defined  on  the  sheet  and  in  no  instance  should  they 
encroach  one  upon  the  other. 

Paragraph  (i). 

(i)  As  a  rule,  one  view  only  of  eeuch  invention  can  be  shown 
in  the  Gazette  illustrations.  The  selection  of  that  portion  of  a 
drawing  best  calculated  to  explain  the  nature  of  the  specific 
improvefhent  would  be  facilitated  and  the  final  result  improved 
by  the  Judicious  execution  of  a  figure  with  express  reference 
to  the  Gazette,  but  which  must  at  the  same  time  serve  as  one 
of  the  figures  referred  to  in  the  specification.  For  this  parpose 
the  figure  may  be  a  plan,  elevation,  or  perspective  view,  accord- 
ing to  the  judgment  of  the  draftsman.  All  its  parts  should  be 
especially  open  and  distinct,  with  very  little  or  no  shading, 
and  it  must  illustrate  the  invention  claimed  only,  to  the  exclu- 
sion of  all  other  details.  (See  specimen  drawing.)  When 
well  executed,  it  will  be  used  without  curtailment  or  change, 
but  any  excessive  fineness,  or  crowding,  or  unnecessary  elab- 
orateness of  detail  will  necessitate  its  exclusion  from  the 
Gazette. 

Paragraph  i,  which  relates  to  the  selection  of  a  figure 
or  figures  to  be  illustrated  in  the  Official  Gazette,  seems 
to  be  clearly  defined  and  I  have  only  one  comment  to 
make  and  that  is  that  the  selected  figure  should  not  be 
left  altogether  to  the  judgment  of  the  draftsman  who 
makes  the  drawing.  The  examiner  should  make  this 
selection  and  where  it  is  found  that  no  figures  on  the 
drawing  are  sufficient  for  this  purpose  one  should  be 
required,  otherwise  the  illustration  is  of  no  value  in  the 
Gazette. 

Paragraph  (j).     . 

(j)  Drawings  transmitted  to  the  Office  should  be  sent  flat, 
protected  by  a  sheet  of  heavy  binder's  board;  or  should  be 
rolled  for  transmission  in  a  suitable  mailing  tube,  but  should 
never  be  folded. 

Paragraph  j,  relating  to  the  transmission  of  drawings, 
is  of  no  special  interest  to  you  in  connection  with  your 
duties,  but  perhaps  you  might  be  interested  to  know  that 
a  great  many  drawings  are  mutilated  in  the  mails,  which 
could  be  avoided  if  properly  protected  as  indicated.  The 
cost  of  reproducing  these  mutilated  drawings,  during  the 
year,  will  amount  to  thousands  of  dollars,  and  the  Office 
is  burdened  with  the  perpetual  preservation  and  care  of 
these  drawings,  which  have  to  be  canceled  after  new  ones 
are  substituted. 

Paragraph  (k). 

(k)  An  agent's  or  attorney's  stamp,  or  advertisement,  or 
written  address  will  not  be  permitted  upon  the  face^of  a  draw- 
ing, within  or  without  the  marginal  line. 


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JouBNAii  OF  THE  Patbnt  Officb  Socibty.         569 

Paragraph  k  means  than  anything  printed,  stamped 
or  written  on  either  the  face  or  margin  of  the  drawing 
which  is  in  the  nature  of  an  advertisement  of  the  agent 
or  attorney  is  objectionable  and  must  be  removed. 

Rule  53. 

All  reissue  applications  must  be  aooompanied  by  new  draw- 
ingSp  of  the  character  required  in  original  applications,  and 
the  inventor's  name  must  appear  upon  the  same  in  all  cases; 
and  such  drawings  shaU  be  made  upon  the  same  scale  as  the 
original  drawing,  or  upon  a  larger  scale,  unless  a  reduction  of 
scale  shall  be  authorized  by  the  Commissioner. 

This  rule  relating  to  drawings  for  reissue  applications 
requires  new  drawings  of  the  same  general  character  as 
the  original  drawing  and  they  must  not  be  made  on  a 
smaller  scale,  unless  the  Commissioner  otherwise  directs, 
but  may  be  enlarged,  if  desired.  The  same  rules  relating 
to  drawings  in  original  applications  must  be  applied  in 
reissue  drawings. 

Rule  54. 

The  foregoing  rules  relating  to  drawings  will  be  rigidly 
enforced.  A  drawihg  not  executed  in  conformity  thereto  may 
be  admitted  for  purposes  of  examination  if  it  sufficiently  illus- 
trates the  invention,  but  in  such  case  the  drawing  must  be 
corrected  or  a  new  one  furnished  before  the  application  will 
be  allowed.  The  necessary  corrections  will  be  made  by  the 
Office,  upon  applicant's  request  and  at  his  expense.  (See 
Rule  72.) 

Permits  the  chief  draftsman  to  admit  for  the  purpose 
■oi  examination  only  a  certain  kind  of  drawing,  if  it  suffi- 
ciently illustrates  the  invention,  but  which  does  not  come 
up  to  the  required  standard  of  execution.  These  informal 
drawings  may  be  rough  and  pale,  lithographs  on  Bristol 
board,  lithographs  pasted  on  Bristol  board,  or  sketches 
securely  attached  to  Bristol  board  10  by  15  inches.  As 
these  drawings  form  a  part  of  the  original  application, 
they  must  be  suitable  for  permanent  records.  Whenever 
the  original  drawings  can  be  corrected  they  must  be,  as 
substitute  drawings  will  not  be  accepted.  The  chief 
draftsman  will  give  the  cost  of  corrections  or  of  new 
drawings  if  required.  All  corrections  must  be  made  only 
by  the  Office  draftsmen.  This  applies  to  other  employees 
of  the  Office  as  well  as  attorneys  or  inventors.  Draw- 
ings will  not  be  returned  for  any  correction  whatever 
when  the  correction  can  be  made  by  the  Office.  When  a 
signature  has  been  omitted  or  needs  correction  the  draw- 
ing may  be  returned  to  applicant  or  his  attorney  for  this 


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570         Journal  of  the  Patent  Office  Society. 

correction  after  a  photo  print  of  the  sheet  or  sheets  lo 
be  corrected  as  originally  filed  shall  have  been  placed  in 
the  file  for  record.  Or  such  signatures  may  be  supplied 
or  corrected  by  the  applicant  or  his  attorney  within  the 
Draftsman's  Division,  in  which  case  a  print  will  not  be 
required. 

Rule  55. 

Applicants  are  advised  to  employ  competent  draftsmen  to 
make  their  drawings. 

The  Office  will  furnish  the  drawings  at  cost,  as  promptly  as 
its  draftsmen  can  make  them,  for  applicants  who  can  not  other- 
wise conveniently  procure  them. 

Advises  the  employment  of  competent  draftsmen  to 
make  drawings.  This  is  good  advice,  but,  unfortunately, 
competent  draftsmen  are  scarce,  owing  principally  to 
the  small  remuneration  which  they  receive  for  this  class 
of  work.  The  Office  will  furnish  drawings  at  cost  if 
applicant  can  not  otherwise  conveniently  have  them 
made. 

These  are  all  of  the  rules  relating  to  drawings,  but 
before  closing  I  should  like  to  go  over  with  you  the  pres- 
ent practice  and  some  of  the  orders  issued  from  time  to 
time  relating  to  this  subject. 

The  proper  procedure  for  amending  a  drawing  is  to 
require  the  applicant  to  furnish  a  print  of  the  drawings 
as  filed,  having  indicated  thereon,  preferably  in  red  ink, 
the  changes  he  desires  to  make,  or  he  may  file  a  sketch 
showing  such  change,  which  must  be  accompanied  by  a 
written  request  for  permission  to  make  the  corrections. 

Drawings  must  not  be  amended  until  after  a  written 
permission  has  been  given  by  the  examiner.  (See  eo? 
parte  Zuribel,  0.  G.,  May  31,  1904.) 

Before  a  correction  can  be  made  in  the  construction  of 
the  drawing  or  the  addition  of  a  new  figure,  a  photo- 
graphic print  of  the  sheet  or  sheets  to  be  corrected  as 
originally  filed  must  be  placed  in  the  file  to  preserve  the 
1  ecord.  A  print,  however,  is  not  required  for  purposes 
of  adding  or  changing  reference  characters  on  the  draw- 
ing, or  for  changing  the  inventor's  name,  or  for  trans- 
ferring an  original  figure  to  another  sheet  in  the  appli- 
cation, which  is  often  required,  owing  to  cancellation  or 
to  reduce  the  number  of  sheets  in  the  case. 

When,  after  cancellation  of  one  or  more  figures  from 
a  sheet  of  drawing  the  remaining  figures  on  the  sheet  can 


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JOUBNAL  OF  THE  PaTBNT  OfFICB  SoCIBTY.  571 

be  transferred  to  another  sheet,  it  must  be  required.    See 

Order  1862,  which  reads  as  follows: 

To  prevent  the  accumulation  of  canceled  sheets  of  drawings 
the  examiner  will  not  accept  or  admit  additional  or  substitute 
drawings  unless  such  drawings  shall  have  been  required,  nor 
will  the  examiner  require  substitute  drawings  in  any  case  unless 
the  chief  draftsman  shall  first  indicate  that  the  original  draw- 
ing can  not  be  made  serviceable.  The  examiner  will  Judge  as 
to  the  sufficiency  of  the  showing  of  the  drawings  and  the  chief 
draftsman  will  judge  as  to  the  execution  and  the  arrangement 
•of  the  views,  etc.,  on  the  sheet. 

When  an  additional  sheet  is  filed  and  it  is  found  that 
this  illustration  can  be  placed  on  the  original  drawing, 
it  must  be  required,  and  this  additional  drawing,  after  a 
print  of  it  has  been  placed  in  the  file  to  be  used  as  a 
sketch,  must  be  returned  to  applicant  after  the  transfer 
of  the  drawing  to  the  original  sheet  or  sheets  has  been 
made. 

In  cases  where  slight  corrections  are  required  and  there 
can  be  no  doubt  about  the  application  of  them,  such  as 
the  placing  of  a  few  reference  characters  or  lead  lines, 
or  the  changing  of  the  numbers  of  figures  of  the  drawing, 
do  not  require  the  applicant  to  make  these  corrections, 
but  send  or  bring  the  case  to  the  draftsman,  who  will 
make  them,  thereby  saving  not  only  time,  but,  in  most 
cases,  at  least  three  letters — one  by  you,  one  by  the  attor- 
ney and  one  by  the  draftsman.  We  have  about  100  cases 
of  this  kind  every  week  to  correct. 

The  Eules  require  that  all  records  must  be  made  in 
permanent  ink.  You  will,  therefore,  return  all  pencil 
sketches  to  be  inked  in  before  making  them  of  record  in 
this  Office.  It  is  objectionable  to  show  a  modified  form 
in  a  general  view  or  principal  construction  by  either 
dotted  or  full  lines,  and  if  shown  at  all  it  must  be  illus- 
trated by  a  separate  figure.  {Ex  parte  Badger,  97  0.  G., 
1596.) 

Abandoned  and  rejected  drawings  can  be  transferred 
to  a  new  application  by  placing  a  photographic  copy  of 
them  in  the  abandoned  or  rejected  file,  as  the  case  may 
be.     (Rule  173.) 

Patent  Office  drawings  are  not  supposed  nor  are  they 
required  to  be  working  drawings.  The  only  object  is  to 
aid  in  conveving  to  one  skilled  in  the  art  the  idea  of  the 
inventor.    (Gold  v.  Gold,  152  O.  G.,  731.) 


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572        Journal  op  the  Patent  Office  Society. 
set  of  patent  office  official  gazettes  for  sale, 

Covering  the  last  70  years. 

An  unusual  opportunity  to  acquire  a  complete  set  over  an  extended 

period  of  time.     Installment  payments. 

Address  1634  Marquette  Building,  Chicago,  111. 

A  thoroughly  equipped  consenrative  Patent  Law  ofBce 
of  twenty-jfive  years  standing  in  New  York  City,  with  but 
one  active  member  of  firm  remaining,  wants  energetic 
capable  man  with  Patent  Office  and  some  litigation  expe- 
rience. Initial  salary  $1800  to  $2500  yearly,  with  per- 
centage of  his  own  business  and  prospects  of  future  part- 
nership arrangement.  Might  consider  immediate  part- 
nership with  suitable  attorney  practicing  alone  whose 
past  five  years  business  sufficiently  extensive  to  warrant 
consideration.  Give,  in  confidence,  age,  experience,  past 
and  present  connections,  education,  religion,  etc.,  etc. 
R,  c/o  Journal  of  the  Patent  Office  Society,  1315  Clifton 
Street,  Washington,  D.  C. 


Exceptional  Partnership  Opportunity 
for  Practising  Patent  Attorney 

Wishing  to  combine  work  offered  by  practising  patent 
attorney  of  extended  experience,  able  to  devote  only  part 
time  at  present  to  firm,  but  whose  other  business  connec- 
tion affords  him  high  standng  and  intimate  entree  to  all 
concerns  in  locality.  Springfield  is  the  center  of  large 
and  diversified  manufacturing  district  and  offers  excep- 
tional possibilities  for  quickly  furnishing  attractive  prac- 
tice. Living  conditions  are  excellent.  Prefer  attorney 
between  30  and  40,  married  or  single,  who  has  conducted 
office  and  handled  clients.  State  fully  past  affiliations 
and  work.    Eeferences  exchanged. 

L.  W.,  R.,  Springfield,  Massachusetts. 
Brightwood  P.  0.  Box  22. 


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EDMUND  BURKE, 

Commissioner  of  Patents. 

3845  to  1849. 


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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. 
Sabscriptton  $2.50  a  year  Sin^rle  copy  25  cents 

EDrrOBIAIi  BOARD. 

E.  D.  Sewall,  Chairman,  Publicity  Committee. 

G.  P.  Tucker,  EditoMn-Chief. 

J.  Boyle. 

A.  W.  Davidson. 

W.  L.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  offlee 

at  Washington.  D.  C,  under  the  act  or  March  8.  1879. 

Copyright.  1919,  by  the  Patent  Office  Society. 


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

VOL.  I.  AUGUST.  1919.  No.   12. 


EDITORIAL. 


CAMPAiaN  NOTES. 


The  recent  visit  to  this  Office  of  Mr.  J.  A.  de  Marval, 
Commissioner  of  the  Argentine  Government,  brings  into 
prominence  the  respect  with  which  the  American  patent 
system  and  the  Patent  Office  is  viewed  by  other  govern- 
ments. Mr.  de  Marval  visited  Washington  especially  to 
study  our  system  of  granting  patents  with  a  view  to  mak- 
ing a  report  and  recommendations  on  which  improve- 
ments in  the  Patent  Office  of  Buenos  Aires  may  be  based. 

That  he  was  given  every  facility  goes  without  saying. 


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574        JouBNAii  OP  THE  Patbnt  Offiob  Socibty. 

Information  of  the  construction  of  the  building,  history 
of  the  Patent  Office  and  system,  copies  of  all  official 
forms  and  publications,  including  copies  of  this  Joubnal, 
appeared  especially  interesting  and  are  to  be  used  in 
making  his  official  report. 


Attention  is  directed  to  the  column  headed  **0f  Per- 
sonal Interest"  in  this  issue.  The  disclosure  of  the  resig- 
nation within  six  weeks  of  one  principal  examiner,  two 
first  assistants,  six  second  assistants,  two  third  assist- 
ants, one  fourth  assistant  and  one  assistant  examiner  of 
trade-marks  and  designs,  makes  a  rather  startling  record. 
The  causes  of  the  resignations  are  uniform — ^more  money 
offered  on  the  outside.  As  to  the  amount  of  salary 
increase,  it  is  desired  to  state,  from  actual  figures  given, 
that  the  average  increase  over  the  Government  salaries, 
with  this  year's  bonus  of  $240  added,  is  almost  exactly 
30  per  cent.  It  may  be  stated  further  that  in  the  case  of 
all  assistant  examiners  who  have  resigned  since  May  1, 
1919,  their  initial  salaries  closely  approximate  those  set 
down  for  the  respective  grades  in  the  bill  now  before 
Congress  to  increase  the  force  and  salaries  in  the  Patent 
Office.  The  proposed  salaries  are,  therefore,  only  what 
outside  firms  are  willing  to  pay  for  the  services  of 
these  men. 

Should  the  present  rate  of  retirement  from  the  Office 
continue  a  serious  impairment  of  the  efficiency  of  the 
Corps  must  result. 

As  an  offset  to  these  resignations,  the  Civil  Service 
Commission  made  certifications,  from  the  May  entrance 
examination,  of  eight  eligibles,  five  of  whom  were  already 
in  the  Office  as  temporary  fourth  assistants,  leaving  only 
three  to  fill  the  vacancies  created. 


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JouENAL  OP  THE  Patbnt  Oppiot  Soodbty.         575 

THE   LEGISLATIVE   SITUATION. 

— m— 

In  the  report  of  the  Patent  Committee  of  the  National 
Research  Council,  printed'  in  the  March  number  of  this 
JouBNAL,  reference  is  made  to  three  bills  to  be  presented 
to  Congress  to  carry  into  effect  the  recommendations  of 
that  committee.  As  these  bills  have  now  been  introduced 
and  hearings  before  the  Patents  Conmaittee  of  the  House 
had  thereon,  it  seems  proper  to  give  a  synopsis  of  the 
bills  and  to  report  upon  the  hearings.  H.  R.  Bills  Nos. 
5011,  5012  and  7010  (substituted'  for  H.  R.  Bill  6913)  were 
introduced,  the  first  two  June  5  and  the  third  July  8,  by 
Hon.  John  I.  Nolan,  of  California,  chairman  of  the  House 
Committee  on  Patents,  and  they  were  referred  to  his 
committee. 

In  addition,  Senate  Bill  No.  818  was  introduced'  May  26, 
by  Hon.  Robert  L.  Owen,  of  Oklahoma,  and  referred  to 
the  Senate  Committee  on  Patents. 

H.  R.  Bill  No.  5011  is  to  establish  a  Patent  and  Trade- 
Mark  Office  independent  of  any  other  department  and 
to  provide  for  compensation  and  infringement  of  patents 
in  the  form  of  general  damages,  and  for  other  purposes. 
The  bill  amends  the  following  sections  of  the  Revised 
Statutes:  Sees.  440,  441,  475,  476,  479,  481,  483,  484,  486, 
487,  496,  4898,  4906,  4921,  4934,  4935  and  4936;  also  the 
act  of  January  12,  1895  (chapter  23,  section  73,  twenty- 
eighth  Statutes  at  Large,  page  619).  This  bill  creates  an 
office  known  by  its  short  title  as  the  Patent  Office,  in 
which  the  Commissioner  of  Patents,  the  first  and  second 
assistant  commissioners,  and  five  examiners-in-chief, 
shall  be  appointed  by  the  President.  The  Commissioner 
shall  make  all  other  appointments  to  positions  in  the 
Office. 

By  Section  481,  the  Commissioner  shall  also  sign  all 
requisitions  for  the  advance  or  payment  of  money  out  of 
the  Treasury  upon  estimates  for  expenditures  for  business 
assigned  by  law  to  his  Office;  and  shall  generally  perform 
all  acts  heretofore  performed  by  the  Secretary  of  the  In- 
terior with  relation  to  the  Patent  Office. 

By  Section  487,  the  Commissioner  has  full  control  in 
the  matter  of  prescribing  regulations  governing  the  rec- 
ognition of  agents,  attorneys  or  other  persons  represent- 
ing applicants  or  other  parties  before  the  Office,  and  also 


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576        Journal  of  the  Patent  Office  Society. 

the  disbarment  of  attorneys  from  practice  before  the 
Office. 

By  Section  496,  all  disbursements  for  the  Patent  and 
Trade-Mark  Office  shall  be  mad^  by  the  disbursing  clerk 
thereof,  or,  in  his  absence,  by  the  chief  clerk,  upon  express 
order  by  the  Commissioner. 

By  Section  4934  the  rates  for  patent  fees  are  made  as 
follows: 

On  filing  each  original  application  for  a  patent,  except 
in  design  cases,  $20.    (Heretofore  $15.) 

On  issuing  each  original  patent,  except  in  design  cases, 
$15.    (Heretofore  $20.) 

Other  fees  remain  substantially  the  same. 

H.  E.  Bill  5012  is  to  establish  a  United  States  Court 
of  Patent  Appeals,  and  for  other  purposes. 

The  bill  creates  said  court,  consisting  of  seven  judges, 
and  prescribes  that  a  term  of  said  court  shall  be  held 
annually  in  the  city  of  Washington,  beginning  on  the  sec- 
,  ond  Monday  in  October  in  each  year. 

The  chief  justice  of  this  court  shall  be  appointed  by 
the  President,  by  and  with  the  advice  and'  consent  of 
the  Senate.  The  salary  attached  to  this  office  shall  be 
$12,000  a  year. 

The  Chief  Justice  of  the  Supreme  Court  of  the  United 
States  shall  designate  from  among  the  circuit  and  district 
judges  of  the  United  States  six  jud'ges  to  sit  as  associate 
justices  of  the  United  States  Court  of  Patent  Appeals, 
three  to  sit  for  three  years  from  the  first  day  of  the  first 
term  and  three  to  sit  for  six  years  from  the  first  day  of 
the  first  term.  After  that,  appointments  of  associate 
judges  shall  be  for  six  years.  A  salary  of  $11,500  per  year 
is  attached  to  this  office. 

This  court  shall  have  jurisdiction  to  hear  and  deter- 
mine appeals  in  all  cases  from  decisions  rendered  by  any 
other  court  having  jurisdiction  in  the  first  instance,  in  all 
cases  arising  under  the  patent  laws  of  the  United  States. 
It  shall  have  no  jurisdiction  over  cases  arising  in  the 
Court  of  Claims. 

Any  case  under  the  jurisdiction  of  this  court  can  be 
certified  to  the  Supreme  Court  of  the  United  States  for 
review  or  determination  by  writ  of  certiorari  or  other- 
wise. 

After  taking  effect  of  this  act,  no  appeal  or  writ  of 


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Journal  op  the  Patent  Office  Society.         577 

error  shall  be  taken  from  any  district  court  to  any  circuit 
court  of  appeals  or  any  other  court  heretofore  having 
jurisdiction  on  appeal  of  patent  cases. 

From  the  taking  effect  of  this  act  all  appeals  and  writs 
of  error  within  the  jurisdiction  of  this  court  which  shall 
have  been  pending  without  hearing  in  other  appellate 
jurisdictions  for  less  than  three  months  shall  be  trans- 
ferred' to  this  court  without  further  payment  of  fees.  All 
other  appeals  and  writs  of  error  which  shall  be  pending 
in  appellate  jurisdictions  shall  remain  and  be  heard  and 
determined  by  the  courts  in  which  they  may  be  pending. 

Senate  Bill  818  is  for  the  same  purpose  as  H.  R.  Bill 
5012  and  is  precisely  like  the  latter,  except  that  it  pro- 
vides that  the  court  shall  be  made  up  of  five  judges  in- 
stead of  seven. 

H.  R.  Bill  7010  is  to  increase  the  force  and  salaries  in 
the  Patent  Office.  The  proposed  changes  are  best  set 
forth,  perhaps,  by  means  of  the  following  table,  giving 
present  and  proposed  force  and  salaries,  with  totals  of 
appropriations. 


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578 


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i 


Journal  of  the  Patent  Office  Society.         579 

In  addition  to  the  above,  the  folowing  appropriations 
are  proposed: 

For  special  and  temporary  services  of  typewriters  for 
furnishing  manuscript  copies  of  records,  $7,500. 

For  purchase  of  law,  professional  and*  scientific  books 
and  for  transporting  copies  of  United  States  patents  to 
foreign  governments,  $10,000. 

For  producing  weekly  issues  of  patents,  reproduction 
of  exhausted  copies,  etc.,  $140,000. 

For  investigating  questions  of  public  use  or  sale  and 
such  other  questions  arising  in  connection  with  applica- 
tions for  patents  as  may  be  deemed  necessary  by  the  Com- 
missioner, $2,500. 

Hearings  on  the  three  House  bills  were  granted  and 
held  during  several  days  beginning  July  9,  before  the 
House  Committee  on  Patents. 

The  members  of  this  committee  are  as  follows: 

John  I.  Nolan  of  California,  Chairman. 
Florian  Lamport  of  Wisconsin. 
Loren  E.  Wheeler  of  Illinois. 
Albert  H.  Vestal  of  Indiana. 
William  J.  Burke  of  Pennsylvania. 
Albert  W.  Jefteris  of  Nebraska. 
Jo'hn  MacGrate  of  New  York. 
Ouy  E.  Campbell  of  Pennsylvania. 
John  B.  Johnston  of  New  York. 
John  J.  Babka  of  Ohio. 
Edwin  L.  Davis  of  Tennessee. 
John  McDuffie  of  Alabama. 

As  Secretary  of  the  National  Research  Council's  com- 
mittee, Mr.  E.  J.  Prindle  had  made  the  arrangements  for 
these  hearings  and  he  introduced  the  several  speakers. 
It  is  not  proposed  here  to  give  the  arguments  presented 
•by  the  speakers,  but  it  is  hoped  in  future  issues  of  this 
JouBNAL.  to  print  in  full,  or  in  substance,  the  admirable 
presentations  of  views  advanced  by  as  many  of  these  dis- 
tinguished gentlemen  as  space  will  permit. 

Mr.  Prindle  opened  the  discussion  by  a  clear  statement 
of  the  objects  of  our  patent  system  and  the  important  part 
it  has  played  in  the  upbuilding  of  the  industrial  enter- 
prise and  prosperity  of  the  nation.  Admitting  certain 
weaknesses  in  the  system,  Mr.  Prindle  briefly  explained 
how  the  pending  bills  were  designed  to  correct  them.  He 
gave  way  to  Digitized  by  LjOOgle 


580  JOUBNAL  OP  THE  PaTBNT  OfFIOB  SodBTT. 

llr.  Frederick  P.  Fish,  dean  of  the  American  patent  bar 
and  member  of  the  Patent  Committee  of  the  National  Re- 
search Conncil. 

Mr.  Fish  spoke  in  favor  of  all  the  bills,  but  laid  espe- 
cial emphasis  on  the  need  of  a  single  court  of  patent 
appeals.  His  experience  of  a  lifetime,  spent  largely  in 
the  handling  in  court  of  patent  causes,  gave  his  addjress 
a  grasp  and  profoundess  which  evidently  impressed  the 
committee.  When  Mr.  Fish  had  finished  Mr.  Prindle 
resumed  with  his  general  exposition  of  the  bills,  and'  then 
introduced 

Dr.  Leo  H.  Baekeland^  member  of  the  National  Research 
Council  and  of  its  Patent  Committee,  inventor  of  Velox 
photographic  paper,  Bakelite  and  other  well-known 
inventions. 

Dr.  Baekeland  spoke  from  long  experience  in  taking 
out  patents  and  in  litigating  them  in  the  courts.  He 
complimented  the  Office  and  courts  on  their  evident  inten- 
tions and  efforts  to  give  the  inventor  full  justice.  He 
made  no  complaint.  He  did,  however,  criticise  the  con- 
ditions that  led  to  hurried  Offibe  actions  on  pending  cases 
and'  the  indeterminateness  of  litigation  in  the  courts. 
He  approved  heartily  the  bill  for  increase  of  force  and 
salaries  in  the  Office  and  emphasized  the  dignity  and 
responsibility  of  the  position  of  examiner.  He  hoped 
these  places  would  be  made  the  equal,  if  not  the  superior, 
of  similar  places  in  the  patent  offices  of  England  and 
Germany. 

Dr.  Baekeland  interrupted  himself  to  allow  the  intro- 
duction of 

Hon.  Thomas  Ewing,  late  Commissioner  of  Patents  and 
member  of  the  Patent  Committee,  National  Research 
Council.  Mr.  Ewing  developed  in  his  remarks  the  essen- 
tial difference  between  a  registration  system  and  an 
examination  system  and  the  advantages  of  the  latter 
when  adequately  carried  out.  He  dwelt  upon  the  danger 
of  the  examination  system  degenerating  into  little  more 
than  a  registration  system  unless  conditions  in  the  Patent 
Office  be  improved.  Based  on  his  experience  while  Com- 
missioner, he  deplored'  the  ill-success  attending  previous 
efforts  to  get  adequate  increases  in  force  and  salaries 
for  the  Office.  Upon  request  by  the  committee,  he  prom- 
ised to  submit  his  opinions  on  the  bill  for  the  Court  of 
Patent  Appeals. 


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JOUBNAL  OF  THE  PaTENT  OfFICE  SoCIETY,  581 

Dr.  Baekeland  then  concluded  his  remarks  and  was  fol- 
lowed by 

Mr.  William  J.  Kent,  Inventor,  Development  Depart- 
ment of  the  United  States  Eubber  Co.,  who  dwelt  particu- 
larly on  the  force  and  salaries  bill.  He  illustrated  the 
inadequacy  of  Government  salaries  by  comparing  the  sal- 
ary of  Patent  Office  draftsmen  with  that  paid  by  his  com- 
pany. 

The  next  speaker  was 

Mr.  Elmer  A.  Sperry,  member  of  the  Naval  Consulting 
Board,  inventor  of  the  gyroscopic  compass,  gyroscopic 
stabilizer  for  ships  and  aeroplanes,  etc. 

Mr.  Sperry  explained  the  intricate  principles  of  his 
inventions  to  the  committee  and  used  the  same  to  bring 
out  the  need  of  men  trained  in  science  to  treat  applica- 
tions in  the  Office  covering  these  and  similar  inventions. 
He  favored  unqualifiedly  the  three  bills  under  consid- 
eration. 

Bir.  Milton  Tibbetts,  chairman  of  the  Patent  Commit- 
tee of  the  National  Association  of  Manufacturers  and 
representing  the  Packard  Motor  Car  Co.,  then  took  the 
floor.  He  spoke  in  favor  of  all  three  bills,  paying  especial 
attention  to  the  force  and  salaries  bill.  He  said  both  his 
company  and  the  Manufacturers*  Association  were  be- 
hind the  bills  and  proposed  to  exert  all  proper  influence 
they  could  with  members  of  Congress  in  favor  of  the 
passage  of  the  bills. 

On  Friday,  July  11,  Hon.  Judge  Learned  Hand,  of  the 
Southern  district  of  New  York,  spoke  interestingly  in 
favor  of  all  the  proposed  measures.  His  long  experience 
on  the  bench  and  his  eminence  in  the  profession  com- 
manded the  close  attention  of  the  committee.  His  em- 
phatic commendation  of  H.  R.  Bill  7010  was  greatly 
appreciated  by  interested  listeners  from  the  Office.  He 
was  followed  by 

Mr.  Frank  J.  Sprague,  member  of  the  Naval  Consult- 
ing Board,  designer  and  builder  of  the  first  electric  trol- 
ley system  in  America  (Richmond),  inventor  of  the  com- 
mercial electric  elevator  and  of  the  multiple  unit  control 
system  of  electric  railways. 

Mr.  Sprague  was  able  to  speak  from  his  great  experi- 
ence and  gave  a  most  interesting  exposition  of  the  diffi- 
culties and  enormous  expense  attendant  upon  the  com- 
mercial introduction  of  new  inventions.    He  spoke  of  the 


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582  JoUBNAIi  OF  THE  PaTENT  OpFICB  ^OOIBTY. 

diflSculties  he  had  had  with  inexperienced  and  partially 
qualified  examiners  and  approved  higher  salaries  for 
them  as  a  means  to  secure  better  trained  men.  He  was  in 
favor  of  a  single  Court  of  Patent  Appeals  and  argued 
that  at  would  do  away  with  the  present  discouraging 
prolongation  of  patent  suits. 

Mr.  Wesley  G.  Oarr,  representing  the  Westinghouse 
Electric  and  Manufacturing  Co.,  and  chairman  of  the  Pat- 
ent Committee  of  the  Electrical  Manufacturers'  Club, 
and  Mr.  Delos  Holden,  representing  Thomas  A.  Edison, 
both  former  members  of  the  Examining  Corps,  spoke  the 
same  day,  advocating  all  three  bills.  Both  were  ques- 
tioned by  the  chairman  and  members  of  the  committee 
on  the  suppression  of  inventions  by  large  manufacturers 
and  Mr.  Holden  particularly  on  the  proposal  of  Mr.  Edi- 
son to  protect  the  inventor  by  forbidding  the  complete 
alienation  of  his  rights. 

Mr.  (Jharlea  L.  Sturtevant,  chairman  of  the  Committee 
on  Bules  and  Laws,  American  Patent  Law  Association, 
was  the  first  speaker  July  12.  His  remarks  were  largely 
directed  to  Bill  No.  5011,  and  he  presented  some  specific 
amendments  to  the  bill  relating  to  the  registration  of 
attorneys,  separations,  disbarments,  etc.,  and  spoke 
mostly  on  their  subject-matter. 

Hon.  James  T.  Newton,  Commissioner  of  Patents,  fol- 
lowed Mr.  Sturtevant  and  addressed  the  committee  at 
length  on  the  wonderful  effects  of  our  patent  system  and 
the  necessity  for  its  retention  in  substantially  its  present 
form,  as  being  eminently  favorable  to  the  inventor. 

He  strongly  favored  the  Court  of  Patent  Appeals  bill 
and  the  bill  for  increase  of  force  and  salaries.  He  sub- 
mitted much  important  and  interesting  data  and  many 
statistics  on  existing  conditions  in  the  Patent  Ofiice  and 
filed  numerous  record  exhibits  in  support  of  the  points 
he  made. 

Mr.  M.  H.  Ooulston,  Chief  Clerk  of  the  Patent  Office, 
did  not  speak  before  the  committee  for  lack  of  time,  but, 
on  permission  granted,  has  filed  a  full  statement  of  exist- 
ing conditions  among  the  clerks  and  examiners  of  the 
Office  and  reasons  why  the  Patent  Office  Society  and  offi- 
cials are  urging  the  passage  of  H.  R.  Bill  7010. 

On  July  17  hearings  were  resumed  and 


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Journal  of  the  Patent  Office  Society.         583 

Mr.  Thomas  Robertson,  President  of  the  American  Pat- 
ent Law  Association,  was  heard  in  a  review  of  the  situa- 
tion. An  interesting  feature  was  his  demonstration  of 
the  work  of  a  member  of  the  Examining  Corps. 

Mr.  Bert  Russell,  a  member  of  the  Examining  Corps 
and  Secretary  of  the  Patent  Office  Society,  was  heard 
•briefly  in  defense  of  a  compromise  proposal  regarding 
the  personnel  of  the  Court  of  Patent  Appeals  and  in 
regard  to  specific  features  of  Bill  5011,  regarded  by  him 
as  important  incidents  of  the  proposed  legislation. 

Besides  those  who  spoke  at  the  hearings,  others,  includ- 
ing Itfr.  R.  A.  Brannigan,  of  the  National  Automobile 
Chamber  of  Commerce,  were  permitted  to  present  views 
and  arguments  by  letters  and  briefs. 

The  hearings,  as  a  whole,  developed  an  encouraging 
unanimity  of  feeling  between  the  speakers  and  the  mem- 
bers of  the  House  Committee.  Only  on  some  details 
did  there  seem  to  be  a  variance.  Particularly  there  ap- 
peared no  substantial  objection  to  Bill  7010. 

Mr.  Nolan  stated  July  9,  on  the  floor  of  the  House,  that 
it  is  the  intention  of  the  Patents  Committee  to  make  the 
same  a  working  committee  of  the  House,  and  to  try  dur- 
ing this  Congress  to  enact  some  legislation  that  will  be 
of  real  benefit  to  the  inventors  ajd  manufacturers  of 
this  country. 

It  is  felt  that  the  hearings  reported  above  have  given 
the  committee  information  and  inspiration  to  go  forward 
promptly  in  Mr.  Nolan  *s  announced  plan. 


IMPORTANT 


SUBSCRIPTION    RENEWALS 


With  the  current  issue  many  subscriptions  now  on  our 
mailing  list  terminate.  Attention  is  directed  to  the  re- 
newal blank  at  the  end  of  this  number,  which  subscribers 
are  urged  to  use  promptly  in  order  to  keep  their  files 
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584         Journal  of  the  Patent  Office  Society. 

EDMUND   BUBEE, 
Commissioner  of  Patents,  1845  to  1849. 

— m— 
By  N.  J.  Brumbaugh. 

— *•— 

The  second  Commissioner  of  Patents  was  bom  at  West- 
minster, Vermont,  January  23,  1809.  He  studied  law  and 
was  admitted  to  the  bar  in  1829,  practicing  at  Newport, 
New  Hampshire.  He  established  the  New  Hampshire 
Argus  and  edited  it  for  several  years.  He  was  elected  as 
a  democrat  to  the  26th,  27th  and  28th  Congresses,  1839 
to  1845.  Appointed  Commissioner  of  Patents  by  Presi- 
dent Polk  May  5,  1845,  he  served  ably  and  faithfully  in 
this  office  until  May  9,  1849,  after  which  he  became  for  a 
brief  period  associate  editor  of  the  Union  in  Washington, 
D.  C,  and  later  resumed  the  practice  of  law  at  Newport, 
New  Hampshire,  and  Boston,  Massachusetts.  His  death 
occurred  at  Newport,  New  Hampshire,  in  1882. 

At  the  beginning  of  his  adininistration  the  examining 
force  consisted  of  two  principal  and  two  assistant  exam- 
iners, the  principals  being  Charles  G.  Page  and  W.  P.  N. 
Fitzgerald,  and  the  classes  of  invention  were  twenty-two 
in  number. 

In  his  first  report  to  Congress,  February  24,  1846,  he 
urged  legislation  authorizing  the  Chief  Clerk  to  act  as 
Commissioner  of  Patents  in  the  absence  of  the  Commis- 
sioner, giving  the  Commissioner  power  to  ''enlarge  the 
claim  ofHhe  patentee"  in  a  reissue,  and  reducing  the  fees 
required  of  foreign  inventors.  The  Republic  of  Texas 
having  become  part  of  the  United  States,  he  urged  Con- 
gress to  provide  for  the  transfer  of  the  records  of  the 
Patent  Office  of  Texas  to  this  Office.  This  allusion  to 
Texas  is  interesting  as  bhowing  the  wisdom  of  the  found- 
ers of  that  great  state  in  their  appreciation  of  inventions 
and  inventors. 

In  the  report  for  1846,  the  Commissioner  says:  ''The 
operations  of  this  Office  during  the  past  year  prove,  as 
the  circle  of  every  year  proves,  that  the  inventor  is  ever 
the  benefactor  of  his  race.  His  genius  bestows  its  favors 
on  all.  The  manufacturer,  the  mechanic,  the  agricultur- 
ist, the  merchant,  all  are  the  recipients  of  the  benefits 
which  are  ever  flowing  from  his  toik,  energies,  and  some- 


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JOTJBNAL  OF  THE  PaTBNT  OfFICB  SoCIBTY.  585 

times  his  great  and  sublime  conceptions.  No  theme  is 
more  interesting  for  contemplation  than  this  and  there 
is  none  which  more  deeply  impresses  the  mind  with  a 
sense  of  the  continued  and  onward  progress  of  society  in 
the  grand  career  of  civilization.'' 

This  early  Commissioner  had  occasion  to  criticise  Con- 
gress in  failing  to  provide  for  the  necessary  help  to  get 
off  the  work.  '*The  Office  is  seven  or  eight  months  in 
arrear  of  its  business  and  i^  daily  becoming  more  and 
more  embarrassed.  Thus  have  I  in  five  separate  commu- 
nications to  Congress  and  its  appropriate  committees 
within  the  last  two  years  made  full  expositions  of  the 
embarrassed  condition  of  this  Office  growing  out  of  its 
greatly  increased  and  increasing  business  and  the  inad- 
equacy of  its  force  to  perform  its  duties.'' 

On  May  27,  1848,  the  salary  of  the  principal  examiners 
was  raised  from  $1500  to  $2500  and  that  of  the  assistants 
from  $1250  to  $1500.  Referring  to  the  standard  of  the 
work  performed  by  the  examiners,  he  says:  '*The  rigid 
examinations  now  made  in  the  Patent  Office  with  regard 
to  originality  and  patentability  of  new  discoveries  and 
improvements  result  in  the  rejection  of  a  much  larger 
proportion  of  the  applications  than  formerly  when  a  less 
scrutinizing  system  of  examination  was  pursued.  The 
proportion  of  applications  patented  to  those  rejected  is 
now  about  two  to  three,  whereas  formerly  about  half  were 
patented." 

One  of  the  defects  in  the  patent  laws  regretted  by  the 
Commissioner  was  the  inadequacy^  of  the  protection  to 
the  patentee  from  *^  wilful  infringers  who  are  as  bad  as 
common  thieves."  *'If  his  invention  were  not  required 
to  undergo  a  severe  and  critical  examination  in  refer- 
ence particularly  to  its  novelty  and  originality  at  the 
Patent  Office,  there  would  be  some  propriety  in  making 
his  patent  merely  prima  facie  evidence  of  title  in  suits  for 
infringement.  But  after  it  has  passed  such  an  ordeal, 
one  trial  at  least  in  a  court  of  justice  had  in  good  faith 
upon  the  merits  of  the  invention  should  be  sufficient  to 
establish  its  validity  and  secure  to  the  patentee  an  undis- 
turbed enjoyment  of  his  property  until  the  end  of  the 
term  of  his  exclusive  privilege." 

Commissioner  Burke  had  to  dispose  of  the  notable 
interference  of  S.  F.  B.  Morse  and  Alexander  Bain  for 


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586        JouBNAL  OP  THE  Patbnt  Office  Sooiety. 

certain  improvements  in  electric  telegraphs.  The  his- 
tory of  the  beginning  of  this  interference  is  related  as 
follows  in  the  report  of  1848:  '*It  appears  from  the  rec- 
ords of  the  OflSce  that  the  application  of  said  Alexander 
Bain  was  made  April  18,  1848;  and  upon  examination  of 
his  claim  it  was  found  that  the  before-mentioned  claims 
could  be  admitted'  to  patent,  no  invention  of  like  char- 
acter appearing  in  the  public  records  of  this  Office,  nor 
in  any  printed  publication/'.  Before  sending  the  appli- 
cation to  patent,  however,  the  '*  secret  archives '*  were 
consulted  and  another  interfering  application  was  found. 

Under  appointment  from  President  Polk,  Chief  Clerk 
Henry  H.  Sylvester  was  empowered'  to  act  as  Commis- 
sioner of  Patents  in  the  absence  of  the  Commissioner. 

During  his  service  in  Congress  Mr.  Burke  was  an  inde- 
fatigable worker  in  committee,  but  seldom  spoke  upon 
the  floor  of  the  House.  He  favored  direct  taxation  and 
was  an  advocate  of  free  trade.  The  only  speeches  he 
ever  made  in  Congress  were  called  forth  by  tariflf  mat- 
ters. His  first  speech  was  in  defense  of  New  Hampshire; 
it  was  instigated  by  a  speech  of  Representative  Arnold, 
a  Whig  member  from  East  Tennessee,  who,  in  the  course 
of  debate  on  the  tariff,  made  slighting  and  contemptuous 
utterances  regarding  that  ''sterile  piece  of  earth.''  In 
a  curious  introductory  apology  for  burdening  the  House 
with  his  remarks,  Mr.  Burke  disclosed  the  small  value 
he  placed  upon  oratory  and  the  high  value  he  set  upon 
work  in  committee,  then  launched  into  a  truly  eloquent 
tribute  to  the  state  he  represented,  and  then  marshalled 
an  effective  array  of  statistics  comparing  New  Hamp- 
shire with  Tennessee,  and  especially  East  Tennessee,  to 
the  disadvantage  of  the  latter.  At  the  close  of  his  re- 
marks Mr.  Burke  sent  up  to  the  Clerk's  desk  a  story 
involving  a  one-time  associate  of  Mr.  Arnold  in  the  Ten- 
nessee Legislature.  The  story  described  a  speech,  eulo- 
gistic of  President  Tyler  and  the  State  of  Virginia,  in 
which  the  orator  placed  Plymouth  Eock  and  the  Pilgrim 
Fathers  in  the  ''Old  Dominion,  the  Mother  of  Presi- 
dents,'' and  Burke  insinuated  that  the  incident  was  illus- 
trative of  the  knowledge  of  historical  facts  to  be  expected 
from  Tennessee  legislators.  This  defense  of  New  Hamp- 
shire aroused  Mr.  Arnold  to  such  a  degree  that  he  in- 
dulged in  a  bitter  and  insulting  personal  attack  upon  Mr. 


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Journal  op  the  Patent  Office  Society.         587 

Burke,  in  which  the  House  interfered  and  the  debate  was 
stopped  only  by  a  motion  to  adjourn.  Mr.  Burke's  most 
important  speech  was  upon  the  tariff,  and  exhibited  pains- 
taking care  and  an  array  of  statistics  gathered  at  great 
labor.  He  was  also  the  author  of  a  resolution  admitting 
the  Republic  of  Texas  into  the  Union. 

While  Commissioner  of  Patents  Mr.  Burke  made  an 
able  technical  report  on  ** Steam  Boiler  Explosions,'* 
published  December  30, 1848,  Senate  Ex.  Doc.  No.  18.  In 
1846  he  published  a  series  of  twelve  important  essays  on 
**The  Protective  System  Considered  in  Connection  with 
the  Present  Tariff." 

The  agricultural  reports  begun  by  the  Patent  OflSce 
during  Commissioner  Ellsworth's  administration  grew 
to  such  popularity  in  Commissioner  Burke's  administra- 
tion as  to  create  demands  for  reprinting  and  excite  the 
comment  of  Congress  on  the  enormous  number  of  requests 
for  them.  It  was  said  on  the  floor  of  the  House  by  Mr. 
Badger:  **A11  I  know  upon  the  subject  is  that  there  is 
no  book  published  which  is  more  generally  sought  for 
by  plain  men,  unconnected  with  politics,  and  from  which, 
if  we  may  suppose  and  presume  they  are  adequate  judges, 
they  derive  material  assistance  in  the  prosecution  of  their 
agricultural  pursuits."  Many  other  comments  of  a  simi- 
lar character  were  made  in  debate  upon  the  proposition 
to  reprint  these  reports  in  1849. 

The  following  tribute  to  the  great  work  of  the  inventor 
shows  Commissioner  Burke  to  have  been  a  worthy  pio- 
neer in  a  long  line  of  able  men  who  have  honored  this 
great  office: 

Many  valuable  and  profitable  discoveries  in  the  arts  are 
the  result  of  a  sudden  and  lucky  conception  in  a  happy  mo- 
ment ;  but  most  of  them  are  the  fruits  of  days  and '  years  of 
incessant  toil,  anxious  and  harassing  thought  and  great  pecu- 
niary sacrifice.  This  toil,  this  mental  eftort  and  these  pecu- 
niary sacrifices  establish  a  title  to  the  patent  which  is  their 
offspring,  as  sacred  and  irrefragable  in  the  eye  of  Justice  as 
the  title  to  his  farm,  his  workshop  or  his  mercbandise,  which 
a  man  has  acquired  by  his  labor,  skill  and  economy.  Some  of 
the  inventions  of  the  last  few  centuries  have  burst  upon  the 
world  with  the  brilliancy  of  the  morning  sun,  changing  the 
whole  aspect  of  society  and  conferring  incalculable  benefits 
upon  the  human  race. 


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588         Journal,  of  the  Patent  Office  Society. 

DEBATE  ON  A  BILL  TO  INCREASE  FORCE  AND 
SALARIES  IN  THE  PATENT  OFFICE. 

— m— 

Thirtieth  Congress,  First  Session. 

— m— 

(Extracts  from  the  Congressional  Globe.) 

December  29,  1847. 

Senate. 

Mr.  Westcott  (Florida),  from  the  Committee  on  Pat- 
ents and  Patent  OflSce,  reported  a  bill  to  provide  for  addi- 
tional examining  clerks  in  the  Patent  Office. 

January  4,  1848. 

House. 

Mr.  Farrelly  (Pennsylvania)  reported  bills  to  provide 
for  additional  examiners  in  the  Patent  Office. 

February  1,  1848. 

Senate. 

The  Senate  proceeded  to  consider  the  bill  to  provide 
additional  examining  clerks  in  the  Patent  Office,  etc.  Mr. 
Westcott  explained  that  the  amendment  was  simply  a 
substitution  of  the  bill  introduced  in  the  House  of  Repre- 
sentatives, which  was  considered  as  more  satisfactory 
than  the  bill  which  had  originated  in  the  Senate.  *  •  • 
The  amendment  was  agreed  to  and  the  bill  was  reported 
to  the  Senate  as  amended.  The  amendinent  having  been 
concurred  in,  the  bill  was  read  a  third  time  aad  passed.^ 

February  8,  1848. 

House. 

Mr.  Farrelly  stated  it  was  important  that  this  bill 
should  pass  immediately. 
Mr.  Henley  (Indiana)  urged  immediate  action  on  the 


1  This  bill,  among  other  provisions,  provided  for  two  additional 
examiners  at  $2500.00  and  two  additional  assistant  examiners 
at  $1500.00.  At  that  time  the  salary  of  eizaminers  was  $1500 
and  of  assistants  $1250. 


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JouBNAii  OP  THE  Patbnt  Oppiob,  Sooibty.         589 

bill  as  indispensably  necessary  to  give  a  speedy  examina- 
tion to  applications  for  patents.  There  was  now  a  defi- 
ciency in  the  number  of  examiners  •  •  •  Competent 
examiners  must  be  men  of  science  and  commanded  larger 
salaries  in  other  places  than  they  were  receiving  in  the 
Patent  Office.  The  proposed'  increase  of  salaries  was  nec- 
essary and  involved  no  expenditure  of  money  from  the 
treasury,  as  it  came  from  the  Patent  Office  fund.^ 

Mr.  A.  Johnson  of  Tennessee  questioned  whether  there 
was  a  patent  fund.  There  might  be  nominally,  but  had 
certain  expenses  been  deducted  the  Office  would'  be  found 
largely  in  debt. 

Mr.  Farrelly,  in  explanation  of  the  bill  •  •  •  said 
the  bill  proposed  to  fix  the  salaries  of  the  principal  exam- 
iners at  $2500  and  of  the  assistant  examiners  at  $1500. 
The  office  of  principal  examiner  was  one  which  required 
scientific  attainments  and  partook  of  the  nature  of  a  judi- 
cial office.  *  *  *  Compared'  to  the  salaries  of  other 
scientific  officers  of  a  like  grade,  $2500  was  a  small  sal- 
ary. *  *  *  The  petitioners — the  inventors — ^asked 
that  the  salary  of  a  principal  examiner  should  be  made 
$3000,  but  the  committee,  with  a  view  to  economizing  as 
far  as  possible,  fixed  it  at  $2500. 

Mr.  A.  Johnson  of  Tennessee  moved  to  amend  the  bill 
by  reducing  the  amount  of  salaries  as  provided  by  the  bill 
from  $2500  to  $2000.  *  *  *  He  saw  no  necessity  for 
the  increase  of  salary;  he  thought  competent  men  could' 
be  obtained  to  perform  these  duties  for  the  compensation 
proposed. 

Mr.  Toombs  of  Georgia  concurred  in  the  view  of  Mr. 
Johnson  and  wished  the  gentleman  would  carry  his 
amendment  further  and  bring  down  the  salary  to  $1500. 
He  held  it  was  totally  unnecessary  to  pay  a  salary  of 
$2500  to  these  examiners.  It  was  as  much  as  the  judges 
and  the  most  honorable  state  officers  received,  *  *  * 
The  increase  proposed  was  unnecessary  and  profligate 


2  The  Act  of  July  4,  1836,  Section  9,  pi'ovlded  "And  the  moneys 
received  Into  the  Treasury  under  this  act  shall  constitute  a 
fund  for  the  payment  of  salaries  of  the  officers  and  clerks 
herein  provided  for,  and  all  other  expenses  of  the  Patent 
Office,  and  to  be  called  the  patent  fund."  By  Act  of  July  20, 
1868.  the  ''patent  fund"  was  abolished  and  all  moneys  received 
by  the  Patent  Office  were  required  to  be  paid  into  the  public 
funds  in  the  Treasury.  The  cost  of  the  agricultural  reports 
was  paid  from  the  patent  fund. 


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590         Journal  of  the  Patent  Office  Society. 

expenditure  of  the  public  money  and  he  wished  the  atten- 
tion of  Congress  could  be  brought  to  it.  As  to  the  justi- 
fication that  had  been  brought  forward  that  there  was  a 
patent  fund  out  of  which  these  salaries  and  other  ex- 
penses were  paid,  sa  as  not  to  become  a  charge  upon  the 
treasury,  it  was  all  ideal;  the  department  was  indebted 
to  the  Government  hundreds  of  thousand's  of  dollars.' 

To  be  sure,  a  fund  could  be  kept  on  hand  by  the  Gov- 
ernment paying  all  expenses  of  the  Office,  and  its  retain- 
ing all  its-  receipts.  But,  in  fact,  the  Office  was  largely 
in  debt  and  the  salaries  were  paid  out  of  the  public  treas- 
ury, and  he  held  they  were  sufficient. 

Mr.  King  of  Massachusetts  obtained  the  floor,  but 
yielded  to  give  Mr.  A.  Johnson  aii  opportunity  to  modify 
his  amendment  in  compliance  with  the  suggestion  of  Mr. 
Toombs.  He  reduced  the  salary  as  proposed  by  it  to 
$1500. 

Mr.  King,  resuming  tlie  floor,  opposed  the  amendlnent 
and  advocated  the  bill  as  presented  by  the  committee. 
There  was  on  hand,  he  said,  a  large  reserved  patent  fund 
which  had.  resulted  from  the  payments  by  inventors;  and 
every  man  who  had  contributed  to  this  fund  was  entitled 
to  speedy  justice  in  having  his  application  for  patent 
passed  upon  without  unreasonable  delay.  At  the  time 
when  this  salary  of  $1500  was  fitted  by  law  there  were 
something  like  seven  hundred  applications  pending  an- 
nually; now  there  were  more  than  fifteen  hundred. 
*  *  *  But  the  business  of  the  Office  had  accumulated 
in  greater  proportion  than  the  increase  of  the  number 
of  cases. 

The  duties  of  the  examiners  of  the  Patent  Office  were 
much  more  important  and  required  a  greater  amount  of 


8  The  additional  appropriation  act,  approved  July  4,  1836,  pro- 
vided for  the  erection  of  a  fireproof  building  with  suitable 
accommodations  for  the  Patent  Office,  appropriating  $108,000, 
to  be  paid  out  of  the  patent  fund.  The  building  erected  in 
accordance  with  this  act  was  what  is  now  the  south  wing  of 
the  Patent  Office.  The  total  cost  proved  to  be  $442,011.65,  of 
which  $108,000  was  paid  out  of  the  patent  fund;  the  balance 
of  $334,011.65  was  paid  out  of  the  general  funds  in  the 
Treasury.  This  sum -of  $334,011.65  was  the  indebtedness 
referred  to  by  Mr.  Toombs.  This  building  was  never  occupied 
by  the  Patent  Office  exclusively  until  the  autumn  of  1917, 
the  Patent  Office  having  always  shared  it  with  other  bureaus. 
After  the  creation  of  the  Interior  Department  it  was  occupied 
by  the  Secretary  of  the  Interior  chiefly. 


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Journal  of  the  Patent  Office  Sooibtt.         591 

experience  and  scientific  attainments  for  their  proper  dis- 
charge than  those  of  any  clerkship  umdter  the  Govern- 
ment. They  might  compare  favorably  with  the  duties 
of  the  judges  of  our  highest  courts.  There  was  not  in 
any  department  of  the  Government  an  officer  of  whom  so 
much  was  required  nor  who  was  so  poorly  paid.    *    ^    * 

The  very  money  paid  to  the  examiners  of  the  Patent 
Office  was  placed  there  by  the  inventors  who  came  and 
asked  their  applications  to  be  examined,  who  asked' 
speedy  justice.  *  *  *  The  officers  placed  there  should 
be  competent  men,  and  salaries  adequate  to  procure  the 
services  of  such  men  should  be  paid.  *  *  *  We  could 
not  expect  to  procure  the  services  of  any  man  of  requisite 
qualifications  for  $1500.  Justice  to  this  department  of 
the  Government,  justice  to  the  men  employed  in  it,  and, 
more  than  all,  justice  to  the  inventors  who  were  doing 
so  much  in  scientific  investigation  for  the  character  of 
this  country  required  that  the  proposed  increase  should 
be  made.     *     *     * 

Mr.  IngersoU  (Pennsylvania)  proceeded  to  speak  of 
this  highly  interesting  property,  this  intellectual  prop- 
erty, which  for  the  first  time  in  the  United  States  of 
America  had'  been  put  on  something  like  a  respectable 
footing.  *  *  *  He  knew  that  this  was  a  subject  that 
required  the  greatest  public  attention,  and  he  must  totally 
dissent  from  the  view  expressed  by  the  gentleman  from 
Georgia.  *  *  *  He  denied  that  the  standard  which 
the  gentleman  had  assumed  of  state  salaries  was  any 
eriterion  of  what  salaries  should  be.     *     *     * 

He  voted  for  the  highest  compensation  here  on  the 
principle  that  he  believed  it  was  the  cheapest,  that  it 
was  true  economy.  *  *  *  He  was  an  economist  on 
large  occasions;  and  he  thought  a  great  deal  of  public 
money  might  be  saved;  but  the  cutting  down  of  a  salary 
from  $2500  to  $2000  did  not  answer  the  purpose — did  not 
result  in  any  good'.  He  recurred  to  the  importance  and 
interest  of  this  kind  of  property — the  property  of  the 
intellect  and  genius — that  which  shed  lustre  upon  the 
American  name  in  distant  climes,  and  to  the  necessity  of 
having  it  fully  protected.  To  this  end  competent  exam- 
iners were  necessary  and  they  should  be  paid  an  adequate 
salary.     *     *     ♦ 

Mr.  Henley  remarked  tliat  he  rarely  if  ever  differed 


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592        Journal  of  the  Patent  Office  Society. 

from  his  friend  from  Tennessee  on  a  question  of  retrench- 
ment, but  was  compelled  to  do  so  at  this  time.  *  •  • 
Fifteen  hundred-  dollars,  it  was  said,  was  a  compensation 
large  enough  for  these  examiners  of  the  Patent  Office. 
As  had  properly  been  said,  he  had  to  pass  upon  the  appli- 
cations for  *  *  *  patents,  an  error  in  the  decision 
upon  which  gave  rise  to  long  and  expensive  I9.W  suits, 
as  a  consequence  curtailing  the  advance  of  scientific 
inventions  in  the  community.  Was  it  not  better  in  every 
view — ^more  economical,  more  just  both  to  the  inventors 
and  to  the  public — to  give  sufficient  salaries  to  have  the 
duties  correctly  performed  in  the  first  instance!  *  ♦  * 
The  gentleman  from  Tennessee  had  told  them  that  the 
Patent  Office  building  had  cost  the  Government  three  or 
four  hundred  thousand  dollars.  *  *  *  Would  the 
gentleman  from  Georgia  or  the  gentleman  from  Tennessee 
attempt  to  estimate  the  incalculable  benefits  derived  from 
the  great  inventions  of  Whitney,  and  Fulton,  and  Morse  f 
Would  they  speak  about  the  Patent  Office  and  the  Patent 
System,  which  had  encouraged  these  and  other  stupen- 
dous achievements  of  science  and  inventive  genius  which 
went  so  far  to  distinguish  our  age  from  all  that  had  pre- 
ceded it,  being  in  debt  to  the  Government! 

There  were  reasons  why  in  this  case  he  voted  for  what 
was  called  a  high  salary;  but  unjustly  so,  he  thought.  The 
compensation  proposed  was  necessary  to  procure  the 
services  of  competent  men,  and  it  was  paid  out  of  the 
patent  fund,  which  was  received  from  inventors,  whose 
claims  public  justice,  as  well  as  justice  to  themselves  indi- 
vidually, demanded  should  be  passed  upon  with  as  little 
delay  and  upon  as  enlightened  and  correct  principles 
as  possible. 

March  1,  1848. 

The  Speaker  announced  as  the  business  first  in  order 
the  bill  of  the  Senate  '*  providing  additional  examiners 
for  the  Patent  Office"  *  ♦  *  ^j^^  question  being  on 
the  amendment  of  Mr.  Johnson  of  Tennessee,  viz.,  to 
strike  out  the  sum  of  $2500  as  salaries  to  the  examiners 
and  insert  $1500,  on  which  the  previous  question  was 
moved  and  seconded  and  the  main  question  ordered.  The 
question  now  was  on  the  main  question,  viz.,  to  strike  out 


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JOXJBNAL  OF  THE  PaTBNT  OfFICB  SoOIBTY.  593 

$2500  and  insert  $1500;  and  it  was  decided'  in  Jhe  negative, 
yeas  79,  nays  105.    So  tlie  amendment  was  rejected. 

Mr.  Johnson  of  Tennessee  was  desirous  to  move  an 
amendment  to  reduce  the  salary  of  the  Commissioner  of 
Patents  five  hundred'  dollars,*  and  as  that  oflScer  agreed 
with  him  in  politics  he  should  not  expose  himself  to  the 
charge  of  being  actuated  by  party  feelings.  *  *  • 
Mr.  J.  then  defended-  himself  from  the  charge  that  he  was 
opposed  to  the  arts  and  sciences.  He  examined  the 
nature  of  the  duties  of  the  examiners  of  patents  and*  con- 
trasted their  labors  with  those  of  their  fellow  citizens 
of  all  ranks  and  professions,  contended  that  they  did  not 
labor  six  hours  a  day,*^  while  they  were  paid  better  than 
state  officers. 

Blarch  2,  1848. 

Mr.  McClelland  (Michigan)  moved  to  amend  the  bill 
by  striking  out  $25()0  as  the  salaries  of  examiners  *  *  * 
and  inserting  $2000  anA  moved  the  previous  question. 
Th^  amendment  was  agreed  to,  bill  read  a  third  time  and 
returned  to  the  Senate. 

March  20,1848. 

Senate. 

Mr.  Westcott,  from  the  Committee  on  Patents  and  the 
Patent  Office,  to  whom  was  referred  the  amendments  of 
the  House  to  the  bill  of  the  Senate  to  provide  additional 
examiners  in  the  Patent  Office  and  for  other  purposes, 
reported  thereon,  with  a  recommendation  that  the  Senate 
disagreed  to  the  amendments  of  the  House. 

Mr.  Tumey  (Tennessee)  said  *  *  *  he  believed 
that  the  salary  of  an  examiner  of  patents  was  now  some 
fifteen  or  eighteen  hundred  dollars  and  he  knew  of  no 
good  reason  why  it  should  be  raised'  to  twen(;y-five  hun- 
dredi.  He  thought  this  was  hardly  an  appropriate  time 
for  an  increase  of  salaries,  when  the  country  was  involved 
in  war,  and  had  no  superabundance  of  revenue  to  dis- 
pose of.    *     *     * 

Mr.  Westcott  remarked  that  all  the  members  of  the 


4  The  salary  of  Commissioner  Burke  was  $3000. 

5  The  hours  of  labor  In  the  Patent  Office  were  from  8:30  A.  M. 
to  3:30  P.  M.,  without  Intermission. 


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594  JOUBNAL  OF  THE  PaTBNT  OfFIOB  SoCIETY. 

committee  were  unanimous  in  disagreeing  with  the 
amendments  of  the  House.  *  *  *  The  bill  as  it  orig- 
inally passed  the  Senate,  he  said,  gave  to  each  of  the 
examiners  in  the  Patent  OflSce  a  salary  of  twenty-five 
hundred  dollars.  The  House  amendment  proposed  to 
reduce  it  to  two  thousand'  *  *  *  those  having  busi- 
ness with  the  Patent  Office  considered  it  as  a  matter  of 
the  very  first  importance,  as  we  are  obliged  to  have  men 
of  the  highest  scientific  attainments.  *  *  *  The  Sen- 
ate will  perceive  the  necessity  for  an  increase  of  salary 
when  I  state  the  fact  that  within  the  last  five  years  exam- 
iners who  have  received  eighteen  hundred  dollars  a  year, 
finding  that  the  salary  was  not  adequate  to  the  service 
required'  and  that  they  could  make  twice  as  much  money 
by  acting  as  agents,  have  resigned  their  offices.  I  think 
the  salary  proposed  is  not  too  large;  and  I  will  mention 
the  fact  that  the  money  does  not  come  out  of  the  treasury. 
The  law  provides  that  it  shall  be  taken  from  the  receipts 
of  the  Patent  Office,  and  that  Office  has  already  a  fund  of 
gome  seventy  thousand  dollars.  I  hope  the  Senate  will 
concur  with  the  recommendation  of  the  committee.  *  *  • 

Mr.  Dickinson  (New  York) :  This  is  simply  a  question 
of  demand  and  supply.  In  my  judgment  a  salary  of 
twenty-five  hundred  is  necessary,  for  the  reason  that  you 
cannot  get  competent  men  for  a  smaller  salary.  The  office 
cannot  be  filled  by  mere  politicians  or  mere  clerks.  The 
gentleman  filling  that  office  must  be  an  encyclopedia  of 
science  *  *  *  in  short,  he  must  be  qualified  for  one  of 
the  learned  professorships  in  our  institutions  of  learning. 
Now,  you  cannot  get  men  possessing  these  qualifications 
for  less  than  twenty-five  hundred  dollars  a  year.  The 
number  of  such  men  is  comparatively  small;  the  demand 
is  greater  than  the  supply.  You  can  get  men  to  take  thaf 
office  for  one  thousand  dollars  a  year,  but  you  cannot  get 
men  who  are  qualified  to  discharge  the  duties  for  that 
sum.  I  am  not  for  high  salaries  generally,  but  this  is  one 
of  those  cases  which  require  liberal  salaries.    *    *    *     . 

Mr.  Johnson  (Louisiana) :  Well,  I  hope  the  Senate  will 
disagree  to  the  amendment.  A  salary  of  twenty-five  hun- 
dred dollars  is  quite  a  low  one.  The  duties  are  laborious, 
and  they  require  men  of  the  highest  attainments. 

Senate  disagreed  with  amendment  made  by  the  House 
reducing  salary  of  examiners  to  $2000. 


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JOUBNAL  OF  THE  PaTBNT  OfFIOB  SoCIETY.  595 

May  A,  1848. 

Houfle. 

Bill  returned  from  the  Senate  with  a  disagreement  in 
amen<iments. 

May  17,  1848. 

Mr.  Farrelly,  from  the  committee  of  conferees  on  part 
of  the  House  *  *  *  made  a  report  which  recommended 
that  *  *  *  the  House  recede  from  its  amendment  strik- 
ing out  the  words  *Hwenty-five  hundred'  dollars  and 
inserting  two  thousand  dollars.'' 

Mr.  McClelland  explained  the  action  of  the  committee 
of  conference  and  the  result  of  their  declarations,  in 
which  he  concurred,  except  in  relation  to  the  salaries  of 
examiners  of  patents.  The  House,  after  full  discussion, 
had'  decided  that  $2000  was  ample  remuneration  for  the 
services  rendered.  The  Senate  had  so  amended  the  bill 
as  to  make  the  sum  $2500.  But  he  felt  bound  to  resist 
the  Senate  amendment,  as  the  will  of  the  House  had  been 
expressed  after  mature  deliberation  so  unequivocally.  Jt 
had  been  said  that  the  sum  of  $2000  was  an  insufficient 
remuneration  and  that  these  examiners  could  make  a 
larger  sum  by  leaving  the  Office  and  becoming  patent 
agents.  He  admitted  that  science  commanded  more  when 
it  was  free  and  independent  than  when  it  was  employed 
by  the  Government.  A  member  of  the  bar  could  make 
more  than  $3000  or  $5000,  and  yet  no  State  gave  its  judges 
more  than  $1500  or  $2000,  and  for  such  salaries  good 
judges  were  obtained.  It  was  not  the  policy  of  the  Gov- 
ernment to  give  extravagant  salaries,  and'  whenever  an 
officer  found  he  could  make  more  out  of  the  office  than  in 
he  could  go  out.  He  thought  if  any  change  were  requisite 
it  was  in  the  number  of  examiners.  He  was  of  the  opinion 
the  number  was  too  small.  *  *  ♦  The  salary  fixed  by 
the  House,  with  the  increase  of  the  number  of  examiners, 
would  be  sufficient  and  proper.  Why,  the  heads  of  bu- 
reaus, the  engineers  of  the  military  service,  topographical 
and  artillery  officers  and  officers  in  the  military  and  naval 
service,  where  science  and  extensive  information  and 
much  talent  were  required,  received  no  more  than  the 
Senate  proposed  to  give  these  examiners  of  patents. 

May  17,  1848. 


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596  JOUBNAL  OF  THE  PaTENT  OfFICB  SoCIETY. 

Report  of  committee  on  conference  agreed  to,  yeas  92> 
nays  69  (salary  of  examiners  $2500,  assistants  $1500). 

May  18,  1848. 

Senate. 

On  motion  of  Mr.  Westcott  the  Senate  took  up  the 
report  of  the  committee  of  conference  on  the  disagreeing 
vote  of  the  two  houses  on  the  bill  to  provide  ^ditional 
examiners  in  the  Patent  OflSce  and  other  purposes  and 
agreed'  to  the  same. 

Act  approved  May  27, 1848. 

Note: — ^Patent  office  salaries,  Commissioner's  office  and 
examiners: 

1836,  Commissioner,  $3000;  examiners,  $1500.  1839, 
assistant  examiner,  $1250.  1848,  Commissioner,  $3000; 
examiners,  $2500;  assistant  examiners,  $1500.  1855,  Com- 
missioner, $3000;  examiners,  $2500;  first  assist,  examiners, 
$1800;  second  assistant  examiners,  $1500.  1870,  Conrntiis- 
sioner,  $4500;  assistant  commissioner,  $3000;  examiners 
in  chief,  $3000;  examiners,  $2500;  first  assistant  exam- 
iners, $1800;  second  assistant  examiners,  $1600.  1875, 
grade  of  third  assistant  examiner  added,  salary  $1400. 
1882,  grade  of  fourth  assistant  examiner  added,  salary 
$1200.  1884,  salary  of  Commissioner  increased  to  $5000. 
1908,  salary  of  Assistant  Commissioner  increased  to 
$3500;  examiners  increased  to  $2700;  first  assistants, 
$2400;  second  assistants,  $2100;  third  assistants,  $1800; 
fourth  assistants,  $1500.  1909,  office  of  First  Assistant 
Commissioner  created,  salary  $4500;  examiners  in  chief, 
$3500. 

In  1848  the  compensation  of  Senators  and  Representa- 
tives was  $8.00  a  day  while  Congress  was  in  session  and 
$8.00  for  every  20  miles  of  travel  to  and  from  the  Capital. 
The  salary  of  the  Chief  Justice  was  $5000;  of  the  Asso- 
ciate Justices,  $4500.  United  States  district  judges  re- 
ceived from  $1000  (New  Hampshire)  to  $3500  (Southern 
district  of  New  York).  Chief  Justice  Cranch  of  the  Dis- 
trict of  Columbia  received  $2700  and  $100  additional  from 
the  patent  fund. 


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JouBNAii  OF  THE  Patent  Office  Sooiety.         597 
THE   PEACE   TREATY. 


The  following  portions  of  the  Treaty  of  Peace,  sub- 
stantially covering  the  disposition  of  industrial  property 
rights,  are  deemed  of  sufficient  interest  to  readers  of  this 
Journal  to  warrant  publication  in  full. 

Editor. 

Conditions  of  Peace. 

The  United  States  of  America,  the  British  Empire, 
France,  Italy  and  Japan, 

These  Powers  being  described  in  the  present  treaty  as 
the  Principal  Allied  and  Associated  Powers, 

Belgium,  Bolivia,  Brazil,  China,  Cuba,  Ecuador,  Greece, 
Guatemala,  Haiti,  the  Hedjas,  Honduras,  Liberia,  Nica- 
ragua, Panama,  Peru,  Poland,  Portugal,  Bioumania,  the 
Serb-Croat  and  Slovene  State,  Siam,  Tchecko-Slovakia 
and  Uruguay, 

These  Powers  constituting,  with  the  Principal  Powers 
mentioned  above,  the  Allied  and  Associated  Powers,  of 
the  one  part; 

And  Germany,  of  the  other  part;    *     *     * 

Chapter  V,  Gkneral  Articles, 

Section  II,  Treaties, 

Article  286. 

The  International  Convention  of  Paris  of  the  20th 
March,  1883,  for  the  protection  of  industrial  property, 
revised  at  Washington  on  the  2nd  June,  1911;  the  agree- 
ment of  the  14th  April,  1891,  regarding  the  suppression 
of  false  indications  of  origin  of  goods;  the  agreement  of 
the  14th  April,  1891,  concerning  the  international  regis- 
tration of  trade-marks,  and  the  International  Convention 
of  Berne  of  the  9th  September,  1886,  for  the  protection  of 
literary  and  artistic  works,  revised  at  Berlin  on  the  13th 
November,  1908,  and  completed  by  the  additional  Pro- 
tocol signed  at  Berne  on  the  20th  March,  1914,  will  again 
come  into  effect  as  from  the  coming  into  force  of  the  pres- 
ent Treaty,  in  so  far  as  they  are  not  affected  or  modified 
by  the  exceptions  and  restrictions  resulting  therefrom. 


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598         Journal  of  the  Patent  Office  Society. 

Section  IV,  Property,  Rights  and  Interests, 
Article  297  (b). 

Subject  to  any  contrary  stipulations  which  may  be  pro- 
vided for  in  the  present  Treaty,  the  Allied  and  Associ- 
ated Powers  reserve  the  right  to  retain  and  liquidate  all 
property,  rights  and  interests  of  German  nationals,  or 
companies  controlled  by  them,  within  their  territories, 
colonies,  possessions  and  protectorates,  including  terri- 
tories ceded  to  them  by  the  present  Treaty. 

The  liquidation  shall  be  carried  out  in  accordance  with 
the  laws  of  the  Allied  or  Associated  State  concerned,  and 
the  German  owner  shall  not  be  able  to  dispose  of  such 
property,  rights  or  interests  nolr  to  subject  them  to  any 
charge  without  the  consent  of  that  State. 

German  nationals  who  acquire  ipso  facto  the  nationality 
of  an  Allied  or  Associated  Power  in  accordance  with  the 
provisions  of  the  present  Treaty  will  not  be  considered  as 
German  nationals  within  the  meaning  of  this  paragraph. 

Article  297  (d). 

As  between  the  Allied  and  Associated  Powers  or  their 
nationals  on  the  one  hand  and  Germany  or  her  nationals 
on  the  other  hand,  all  the  exceptional  war  measures,  or 
measures  of  transfer,  or  acts  done  or  to  be  done  in  execu- 
tion of  such  measures  as  defined  in  paragraphs  1  and  3  of 
the  Annex  hereto  shall  be  considered  as  final  and  binding 
upon  all  persons  except  as  regards  the  reservations  laid 
down  the  present  Treaty. 

Annex  5  to  Article  298,  Sec.  4,  Property,  Rights  and 

Industries. 

Notwithstanding  the  provisions  of  Article  297,  where 
immediately  before  the  outbreak  of  war  a  company  incor- 
porated in  an  Allied  or  Associated  State  had  rights  in 
common  with  a  company  controlled  by  it  and  incorporated 
in  Germany  to  the  use  of  trade-marks  in  third  countries, 
or  enjoyed  the  use  in  common  with  such  company  of 
unique  means  of  reproduction  of  goods  or  articles  for  sale 
in  third  countries,  the  former  company  shall  alone  have 
the  right  to  use  these  trade-marks  in  third  countries  to 
the  exclusion  of  the  German  company,  and  these  unique 
means  of  reproduction  shall  be  handed  over  to  the  former 


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Journal,  of  the  Patent  Office  Society.         599 

company,  notwithstanding  any  action  taken  under  Ger- 
man war  legislation  with  regard  to  the  latter  company 
or  its  business,  industrial  property  or  shares.  Never- 
theless, the  former  company,  if  requested,  shall  deliver 
to  the  latter  company  derivative  copies  permitting  the 
continuation  of  reproduction  of  articles  for  use  within 
German  territory. 

Annex  to  Article  298  (15). 

The  provisions  of  Article  297  and  this  Annex  apply  to 
industrial,  literary  and  artistic  property  which  has  been 
or  will  be  dealt  with  in  the  liquidation  of  property,  rights, 
interests,  companies  or  businesses  under  war  legislation 
by  the  Allied  or  Associated  Powers,  or  in  accordance 
with  the  stipulations  of  Article  297,  paragraph  (b). 

Section  V,  Contracts,  Prescriptions,  Judgments, 
Article  303. 
For  the  purpose  of  Sections  III,  IV,  V  and  VII,  the 
expression  '* during  the  war''  means  for  each  Allied  or 
Associated  Power  the  period  between  the  state  of  war 
between  that  Power  and  Germany  and  the  coming  into 
force  of  the  present  Treaty. 

Section  VII,  Industrial  Property. 
Article  306. 

Subject  to  the  stipulations  of  the  present  Treaty,  rights 
of  industrial,  literary  and  artistic  property,  as  such  prop- 
erty is  defined  by  the  International  Conventions  of  Paris 
and  of  Berne,  mentioned  in  Article  286,  shall  be  re-estab- 
lished or  restored,  as  from  the  coming  into  force  of  the 
present  Treaty,  in  the  territories  of  the  High  Contracting 
Parties,  in  favor  of  the  persons  entitled  to  the  benefit  of 
them  at  the  moment  when  the  state  of  war  commenced 
or  their  legal  representatives.  Equally,  rights  which, 
except  for  the  war,  would  have  been  acquired  during  the 
war  in  consequence  of  an  application  made  for  the  pro- 
tection of  industrial  property,  or  the  publication  of  a  lit- 
erary or  artistic  work,  shall  be  recognized  and  established 
in  favor  of  those  persons  who  would  have  been  entitled 
thereto,  from  the  coming  into  force  of  the  present  Treaty. 

Nevertheless,  all  acts  done  by  virtue  of  the  special 
measures  taken  during  the  war  under  legislative,  execu- 
tive or  administrative  authority  of  any  Allied  or  Asso- 
ciated Power  in  regard  to  the  rights  of  German  nationals 
in  industrial,  literary  or  artistic  property  shall  remain 

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600  JOUBNAL  OF  THE  PaTENT  OfFICE  SoOIETY. 

in  force  and  shall  continue  to  maintain  their  full  effect. 

No  claim  shall  be  made  or  action  brought  by  Germany 
or  German  nationals  in  respect  of  the  use  during  the  war 
by  the  Government  of  any  Allied  or  Associated  Power,  or 
by  any  persons  acting  on  behalf  or  with  the  assent  of 
such  Government,  of  any  rights  in  industrial,  literary  or 
artistic  property,  nor  in  respect  of  the  sale,  offering  for 
sale,  or  use  of  any  products,  articles  or  apparatus  what- 
soever to  which  such  rights  applied. 

Unless  the  legislation  of  any  one  of  the  Allied  or  Asso- 
ciated Powers  otherwise  directs,  sums  due  or  paid  in 
virtue  of  any  act  or  operation  resulting  from  the  execu- 
tion of  the  special  measures  mentioned  in  paragraph  I 
of  this  article  shall  be  dealt  with  in  the  same  way  as 
other  sums  due  to  German  nationals  are  directed  to  be 
dealt  with  by  the  present  Treaty;  and  sums  produced  by 
any  special  measures  taken  by  the  German  Government 
in  respect  of  rights  in  industrial,  literary  or  artistic  prop- 
erty belonging  to  the  nationals  of  the  Allied  or  Asso- 
ciated Powers  shall  be  considered  and  treated  in  the  same 
way  as  other  debts  due  from  German  nationals. 

Each  of  the  Allied  and  Associated  Powers  reserves  to 
itself  the  right  to  impose  such  limitations,  conditions  or 
restrictions  on  rights  of  industrial,  literary  or  artistic 
property  (with  the  exception  of  trade-marks)  acquired 
before  or  during  the  war,  or  which  may  be  subsequently 
acquired  in  accordance  with  its  legislation,  by  German 
nationals,  whether  by  granting  licenses,  or  by  the  work- 
ing, or  by  preserving  control  over  their  exploitation,  or 
in  any  other  way,  as  may  be  considered  necessary  for 
national  defense,  or  in  the  public  interest,  or  for  assuring 
the  fair  treatment  by  Germany  of  the  rights  of  industrial, 
literary  and  artistic  property  held  in  German  territory 
by  its  nationals,  or  for  securing  due  fulfilment  of  all 
the  obligations  undertaken  by  Germany  in  the  present 
Treaty. 

Each  of  the  Allied  or  Associated  Powers  reserves  the 
right  to  treat  as  void  and  of  no  effect  any  transfer  in 
whole  or  in  part  of  or  other  dealing  with  rights  of  or  in 
respect  of  industrial,  literary  or  artistic  property  effected 
after  August  1,  1914,  or  in  the  future,  which  would  have 
the  result  of  defeating  the  objects  of  the  provisions^  of 
this  article. 


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JOUKNAL  OF  THE  PaTBNT  OfFICE  SoCIBTY.  601 

The  provisions  of  this  article  shall  not  apply  to  rights 
in  industrial,  literary  or  artistic  property  which  have 
been  dealt  with  in  the  liquidation  of  businesses  or  com- 
panies under  war  legislation  by  the  Allied  or  Associated 
Powers,  or  which  may  be  so  dealt  with  by  virtue  of  Ar- 
ticle 297,  paragraph  (b). 

Article  307. 

A  minimum  of  one  year  after  the  coming  into  force  of 
the  present  Treaty  shall  be  accorded  to  the  nationals  of 
the  High  Contracting  Parties,  without  extension  fees  or 
other  penalty,  in  order  to  enable  such  persons  to  accom- 
plish any  act,  fulfil  any  formality,  pay  any  fees,  and'  gen- 
erally satisfy  any  obligation  prescribed  by  the  laws  or 
xegulations  of  the  respective  States  relating  to  the  ob- 
taining, preserving  or  opposing  rights  to,  or  in  respect 
of,  industrial  property  either  acquired  before  the  1st  Au- 
gust, 1914,  or  which,  except  for  the  war,  might  have 
been  acquired  since  that  date  as  a  result  of  an  application 
made  before  the  war  or  during  its  continuance,  but  noth- 
ing in  this  article  shall  give  any  right  to  reopen  inter- 
ference proceedings  in  the  United  States  of  America 
where  a  final  hearing  has  taken  place. 

All  rights  in,  or  in  respect  of,  such  property  which 
may  have  lapsed  by  reason  of  any  failure  to  accomplish 
any  act,  fulfil  any  formality,  or  make  any  payment,  shall 
revive,  but  subject  in  the  case  of  patents  and  designs  to 
the  imposition  of  such  conditions  as  each  Allied  or  Asso- 
ciated Power  may  deem  reasonably  necessary  for  the 
protection  of  persons  who  have  manufactured  or  made 
use  of  the  subject-matter  of  such  property  while  the 
rights  had  lapsed.  Further,  where  rights  to  patents  or 
design^  belonging  to  German  nationals  are  revived  under 
this  article  they  shall  be  subject  to  the  same  provisions  as 
would  have  been  applicable  to  them  during  the  war,  as 
well  as  to  all  the  provisions  of  the  present  Treaty. 

The  period  from  the  1st  August,  1914,  until  the  coming 
into  force  of  the  present  Treaty  shall  be  excluded  in  con- 
sidering the  time  within  which  a  patent  should  be  worked 
or  a  trade-mark  or  design  used,  and  it  is  further  agreed 
that  no  patent,  registered  trade-mark  or  design  in  force 
on  the  1st  August,  1914,  shall  be  subject  to  revocation  or 
cancellation  by  reason  only  of  the  failure  to  work  such 


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602         Journal  of  the  Patent  Office  Society. 

patent  or  use  such  trade-mark  or  design  for  two  years 
after  the  coming  into  force  of  the  present  Treaty, 

Article  308. 

The  rights  of  priority,  provided  by  Article  IV  of  the 
International  Convention  for  the  Protection  of  Industrial 
Property  of  Paris,  of  the  20th  March,  1883,  revised  at 
Washington  in  1911  or  by  any  other  Convention  or  Stat- 
ute, for  the  filing  or  registration  of  applications  for  pat- 
ents or  models  of  utility,  and  for  the  registration  of 
trade-marks,  designs  and  models  which  had  not  expired 
on  the  1st  August,  1914,  and  those  which  have  arisen 
during  the  war,  or  would  have  arisen  but  for  the  war, 
sh611  be  extended  by  each  of  the  High  Contracting  Par- 
ties in  favor  of  all  nationals  of  the  other  High  Contract- 
ing Parties  for  a  period  of  six  months  after  the  coming 
into  force  of  the  present  Treaty. 

Nevertheless,  such  extension  shall  in  no  way  affect  the 
right  of  any  of  the  High  Contracting  Parties  or  of  any 
person  who  before  the  coming  into  force  of  the  present 
Treaty  was  bona  fide  in  possession  of  any  rights  of  indus- 
trial property  conflicting  with  rights  applied  for  by 
another  who  claims  rights,  of  priority  in  respect  of  them, 
to  exercise  such  rights  by  itself  or  himself  personally,  or 
by  such  agents  or  licensees  as  derived  their  rights  from 
it  or  him  before  the  coming  into  force  of  the  present 
Treaty;  and  such  persons  shall  not  be  amenable  to  any 
action  or  other  process  of  law  in  respect  of  infringement. 

Article  309. 

No  action  shall  be  brought  and  no  claim  made  by  per- 
sons residing  or  carrying  on  business  within  the  terri- 
tories of  Germany  on  the  one  part  and  of  the  Allied  or 
Associated  Powers  on  the  other,  or  persons  who  are 
nationals  of  such  Powers  respectively,  or  by  any  one 
/deriving  title  during  the  war  from  such  persons,  by 
reason  of  any  action  which  has  taken  place  within  the 
territory  of  the  other  party  between  the  date  of  the  dec- 
laration of  war  and  that  of  the  coming  into  force  of  the 
present  Treaty,  which  might  constitute  an  infringement 
of  the  rights  of  industrial  property  or  rights  of  literary 
and  artistic  property,  either  existing  at  any  time  during 
the  war  or  revived  under  the  provisions  of  Articles  307 
and  308. 


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Journal  of  the  Patent  Office  Society.         603 

Equally,  no  action  for  infringement  of  industrial,  lit- 
erary or  artistic  property  rights  by  such  persons  shall 
at  any  time  be  permissible  in  respect  of  the  sale  or  offer- 
ing for  sale  for  a  period  of  one  year  after  the  signature 
of  the  present  Treaty  in  the  territories  of  the  Allied  or 
Associated  Powers  on  the  one  hand  or  Germany  on  the 
other,  of  pro<Jucts  or  articles  manufactured,  or  of  liter- 
ary or  artistic  works  published,  during  the  period'  be- 
tween the  declaration  of  war  and  the  signature  of  the 
present  Treaty,  or  against  those  who  have  acquired  and 
continue  to  use  them.  It  is  understood,  nevertheless,  that 
this  provision  shall  not  apply  when  the  possessor  of  the 
rights  was  domiciled  or  had  an  industrial  or  commercial 
establishment  in  the  districts  occupied  by  Germany 
during  the  war.  ' 

This  article  shall  not  apply  as  between  the  United 
States  of  America  on  the  one  hand  and  Germany  on  the 
other. 

Article  310. 

Licenses  in  respect  of  industrial,  literary  or  artistic 
property  concluded  before  the  war  between  nationals  of 
the  Allied  or  Associated  Powers  or  persons  residing  in 
their  territory  or  carrying  on  business  therein,  on  the 
one  part,  and  German  nationals,  on  the  other  part,  shall 
be  considered  as  canceled  as  from  the  date  of  the  declara- 
tion of  war  between  Germany  and'  the  Allied  or  Asso- 
ciated Powers.  But,  in  any  case,  the  former  beneficiary 
of  a  contract  of  this  kind  shall  have  the  right,  within  a 
period  of  six  months  after  the  coming  into  force  of  the 
present  Treaty,  to  demand  from  the  proprietor  of  the 
rights  the  grant  of  a  new  license,  the  conditions  of 
which,  in  default  of  agreement  between  the  parties,  shall 
be  fixed  by  the  duly  qualified  tribunal  in  the  country 
under  whose  legislation  the  rights  had  been  acquired, 
except  in  the  case  of  licenses  held  in  respect  of  rights 
acquired  under  German  law.  In  such  cases  the  condi- 
tions shall  be  fixed  by  the  Mixed  Arbitral  Tribunal  re- 
ferred to  in  Section  VI  of  this  part.  The  Tribunal  may,  if 
necessary,  fix  also  the  amount  which  it  may  deem  just 
should  be  paid  by  reason  of  the  use  of  the  rights  during 
the  war. 

No  license  in  respect  of  industrial,  literary  or  artistic 
property,  granted'  under  the  special  war  legislation  of 


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604  JOUBNAL  OP  THE  PaTENT  OfFICB  SoCTBTY. 

any  Allied  or  Associated  Power,  shall  be  affected  by  the 
continued  existence  of  any  license  entered  into  before 
the  war,  bnt  shall  remain  valid  and  of  full  effect,  and  a 
license  so  granted  to  the  former  beneficiary  of  a  license 
entered  into  before  the  war  shall  be  considered  as  substi- 
tuted for  such  license. 

Where  sums  have  been  paid  during  the  war  by  virtue 
of  a  license  or  agreement  concluded  before  the  war  in 
respect  of  rights  of  industrial  property  or  for  the  repro- 
duction or  the  representation  of  literary,  dramatic  or 
artistic  works,  these  sums  shall  be  dealt  with  in  the  same 
manner  as  other  debts  or  credits  of  German  nationals,  as 
provided  by  the  present  Treaty. 

This  article  shall  not  apply  as  between  the  United 
States  of  America  on  the  one  hand  and  Germany  on  the 
other. 

Article  311. 

The  inhabitants  of  territories  separated  from  Germany 
by  virtue  of  the  present  Treaty  shall,  notwithstanding 
this  separation  and'  the  change  of  nationality  consequent 
thereon,  continue  to  enjoy  in  Germany  all  the  rights  in 
industrial,  literary  and  artistic  property  to  which  they 
were  entitled  under  German  legislation  at  the  time  of 
the  separaton. 

Part  XV,  MiscellaneouB  Provisioiis, 
Article  440. 

A  first  proces-verbal  of  the  deposit  of  ratifications  will 
be  drawn  up  as  soon  as  the  Treaty  has  been  ratified  by 
Germany  on  the  one  hand,  and  by  three  of  the  Principal 
Allied  and  Associated  Powers  on  the  other  hand. 

From  the  date  of  this  first  proces-verbal  the  Treaty  will 
come  into  force  between  the  High  Contracting  Parties 
who  have  ratified  it.  For  the  determination  of  all  periods 
of  time  provided  for  in  the  present  Treaty  this  date  will 
be  the  date  of  the  coming  into  force  of  the  Treaty. 

In  all  other  respects  the  Treaty  will  enter  into  force 
for  each  Power  at  the  date  of  the  deposit  of  its  ratifi- 
cation. 


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Journal  op  the  Patent  Office  Society.         605 

CAN  DIVISION  PRACTICE  BE  MADE  LESS 
COMPLICATED  AND  EXPENSIVE? 

—m— 

By  Arthur  W.  Cowles,  Examiner. 


This  paper  is  suggestive  only  and  is  written  with  the 
idea  that  it  may  initiate  or  stimulate  discussion  as  to 
most  desirable  division  practice.  ' 

The  subject  is  certainly  a  surprisingly  confused  and 
confusing  one.  It  appears  superiSxjially  to  be.  as  simple 
as  the  word  *' Division,**  but  even  a  brief  study  of  it  dis- 
closes a  good  deal  of  apparent  or  real  complexity.  It  has 
the  innocent  appearance  of  a  live  wire  under  high  volt- 
age; and  an  attempt  to  handle  it  ordinarily  results  in 
contortions,  and  a  disposition  to  let  go,  the  single  defi- 
nite conclusion  being  that  you  didn't  know  it  was  loaded. 
This  paper  will  show  how  uncertain  are  the  writer's 
ideas  about  division,  although  he  has  used  the  term 
unhesitatingly  for  years. 

But  at  any  rate,  if  requirements  for  division  are  funda- 
mentally proper,  there  must  be  some  fundamental  reason 
or  reasons  for  the  propriety,  and  if  it  can  be  definitely 
determined  what  the  precise  grounds  for  division  are  or 
ought  to  be,  there  may  be  established  a  correct  foundation 
on  which  to  erect  some  logical  and  definite  structure 
agreed  upon  by  the  different  divisions  and  approved  by 
the  higher  Office  authorities,  and  which  may  be  looked 
to  in  case  of  doubt;  and  whenever  equity  advises  a  mod- 
ification of  technical  practice,  we  may  know  more  cer- 
tainly why  there  should  be  modification,  and  how  far  it 
'Should  go.  A  natural  result  would  be  more  uniformity 
of  practice,  with  a  resultant  advantage  to  applicants,  to 
the  public  and  to  the  Office. 

The  patent  statutes  have  not  contained  the  word  ''di- 
vision." Division  practice  appears  to  be  based  on  the 
implication  of  the  statute  that  each  invention  should  be 
protected  in  a  separate  patent;  that  the  law  has  never 
contemplated  that  one  patent  should  protect  two  or  more 
inventions. 


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606         Journal,  of  the  Patent  Office  Society. 

Eobinson  has  treated  this  question  in  his  usually 
exhaustive  way  under  the  title,  Joinder  of  Inventions,  in 
Vol,  2,  Sections  468  to  479. 

It  appears  from  Eobinson 's  discussion  that  division 
was  a  natural  result  of  the  institution  of  a  search  system, 
i.  e.,  a  system  of  examination  of  certain  material  to  deter- 
mine whether  a  claimed  invention  avoids  known  art; 
because  the  search  system  necessarily  requires  a  specific 
and  reasonably  minute  distribution  of  the  material  to  be 
searched.  This  distribution  is,  of  course,  most  easily 
and  eflfectually  made  by  following  the  actual  develop- 
ments in  those  arts  and  instruments  that  are  the  subject 
of  patents  and  patent  applications,  and  separating  the 
I'esulting  art  into  appropriate  classes. 

Such  a  distribution  of  the  search  material  having  been 
made,  it  was  natural  to  sometimes  consider  the  propriety 
of  requiring  division  of  material  while  the  material  was 
in  an  application,  in  order  to  provide  separate  applica- 
tion papers  to  be  sent  to  those  in  charge  of  the  respective 
fields  of  search,  and  to  anticipate  the  ultimate  patent 
classification  of  the  material  which  the  searches  might 
find  to  be  patentable. 

The  direct  legal  basis  for  the  requirement  was  appar- 
ently, as  has  been  stated,  the  implication  that  the  United 
States  patent  law  contemplates  broadly  that  a  separate 
patent  shall  issue  for  each  patenta!ble  invention,  and  the 
deduction,  in  view  of  the  distinct  fields  of  search  neces- 
sary to  be  investigated  to  determine  patentability  of  the 
various  inventions  in  the  application,  that  the  statute 
could  not  be  as  loosely  construed  as  before  the  search 
system  was  established. 

But,  on  the  other  hand,  it  has  been  recognized  that  the 
constitutional  provision  on  which  the  patent  statutes 
have  all  been  based  implies  clearly  that  the  exclusive 
rights  shall  be  given  to  inventors  for  the  encouragement 
of  invention.  Eobinson  shows  that  before  the  law  of  1836 
very  different  inventions  were  allowed  protection  in  a 
single  patent,  in  order  to  encourage  invention. 

Of  course,  the  same  purpose,  the  encouragement  of 
invention,  underlies  the  later  statutes.  One  means  of 
encouragement  is  a  reasonable  minimum  expense  to  the 
inventor;  and  in  actual  practice  each  additioijal  applica- 


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Journal  op  the  Patent  Office  Society.         607 

tion  means  additional  OflSce  fees  and  usually  additional 
attorney's  fees.  Perhaps  for  this  reason,  even  after  a 
search  system  had  been  established,  where  cursory  in- 
spection of  an  application  showed  that  the  fields  of  search 
for  art  as  to  the  respective  inventions  claimed  in  the 
application  were  the  same,  or  overlapped  a  good  deal, 
or  were  not  widely  diflFerent,  it  was  thought  a  hardship 
on  the  inventor  to  compel  him  to  pay  for  one  or  more 
additional  applications.  Thus  apparently  the  waiver  of 
the  strict  construction  of  the  statute  of  1836  was  carried 
over  to  the  later  statues,  and  division  became  a  question 
of  fact  and  not  of  law. 

The  question  has  been  further  and  decidedly  compli- 
cated by  the  fact  that  although  one  or  more  inventions 
may  be  separately  patentable  they  may  be  so  inter- 
related that  the  grant  of  separate  patents  for  the  respect- 
ive inventions  would  be  Double  Patenting,  and  Double 
Patenting  is  to  be  guarded  against  more  than  the  joinder 
of  inventions,  because  it  rests  on  a  fundamental  deeper 
than  the  fundamental  that  separate  inventions  should  be 
protected  in  separate  patents;  namely,  that  the  Patent 
Law  intends  every  patent  to  be  patentably  distinct  from 
every  other  patent  regardless  of  the  copendency  of  inven- 
tions or  the  identity  of  applicants.  For  this  reason  the 
Office  and  the  courts  allow  joinder  of  inventions  if  Double 
Patenting  would  result  from  the  separation  in  patents, 
the  courts  very  seldom  criticising  the  joinder  of  inven- 
tions, but  very  frequently  declaring  patents  invalid  for 
Double  Patenting. 

And  Double  Patenting  results,  whenever  separate  pat- 
ents are  granted  for  a  thing  conceived  and  for  a  second 
thing  which  it  was  necessary  that  the  inventor  should 
conceive  and  reduce  in  order  to  produce  the  thing  first 
conceived,  and  only  one  such  second  thing  exists,  or  when- 
ever two  or  more  things  conceived  and  produced  are  what 
is  known  in  patent  language  as  equivalent;  i.e.,  a  plu- 
rality of  equivalent  species  embodying  a  single  genus. 
This  condition  need  not  be  elaborated  here,  because  it 
was  discussed  in  a  paper  published  among  the  Patent 
Office  papers,  and  entitled  *'A  Phase  of  Double  Patent- 
ing.'^ 

Thus  we  have  the  fundamental,  that  under  strict  con- 
struction of  the  patent  statute  each  invention  should  be 


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608         Journal  of  the  Patent  Office  Society. 

protected  in  a  separate  patent,  and  the  fact  that  the  nec- 
essary classification  of  search  material  may  require  sep- 
arate searches  on  separate  inventions;  the  more  impor- 
tant fundamental,  that  Double  Patenting  must  not  occur; 
and  the  most  important  fundamental,  that  invention  must 
be  encouraged  as  far  as  is  consistent  with  the  grant  of 
valid  patents  and  with  the  most  efficient  condition  of 
the  Office. 

Due  to  this  variety  of  fundamentals  and  perhaps  to 
others  here  overlooked,  the  line  between  division  and  non- 
division  has  never  been  wholly  definite  either  as  to  loca- 
tion or  shape.  The  line  is  now  so  hazy  in  both  these  par- 
ticulars that  the  services  of  an  expert  law  examiner  are 
required  to  reconcile  the  differences  between  applicants 
and  the  Office. 

At  the  risk  of  monotony  in  repeating  what  has  been 
said  in  various  ways  in  previous  Office  papers  concerned 
with  division,  it  may  be  well  to  indicate  briefly  the  dif- 
ferent forms  under  which  a  plurality  of  inventions  may 
be  claimed  in  a  single  application. 

A  single  application  may  present  a  plurality  of  inven- 
tions in  the  same  statutory  class  or  in  different  statutory 
classes. 

Such  inventions  in  the  same  statutory  class  may  be: 
1:  one  or  more  organization  products  and  one  or  more 
subcombination  products.  2:  one  or  more  organization 
products  and  one  or  more  element  products.  3:  a  com- 
bination of  1  and  2.  Since  every  product  is  only  an 
instrument,  every  so-called  ''apparatus''  considered  as 
a  product  falls  under  these  classes.  4:  one  or  more  pro- 
cesses and  one  or  more  subcombination  processes.  5 :  one 
or  more  processes  and  one  or  more  single  process  steps. 
6:  the  combination  of  4  and  5.  7:  one  or  more  products 
or  processes  embodying  a  generic  idea  or  ideas  and  two 
or  more  specific  embodiments  of  the  idea.  This  is  the 
familiar  genus  and  species  condition. 

When  the  respective  inventions  presented  in  a  single 
application  are  in  different  statutory  classes  they;  may  be, 
1:  one  or  more  products  and  one  or  more  processes  or 
parts  of  processes  for  making  the  product  or  products. 
2:  One  or  more  processes  and  one  or  more  forms  of  ap- 
paratus or  parts  of  apparatus  for  performing  the  pro- 
cesses.   3 :  combinations  of  1  and  2.    Also,  of  course,  one 


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Journal  of  the  Patent  Office  Society.         609 

application  may  present  inventions  in  the  same  statu- 
tory class  as  well  as  inventions  in  different  statutory 
classes  taken  from  the  classes  just  enumerated. 

These  various  inventions  and  subinventions  seem  to 
have  their  origin  and  their  appearance  in  a  single  appli- 
•  cation  in  the  following  way: 

A  product  is  a  thing  produced  by  a  process;  a  process 
is  a  step  or  series  of  steps  performed  on  material  to  pro- 
duce a  product;  and  a  process  is  performed  by  apparatus, 
animal  or  mechanical,  or  both;  an  apparatus  is  means  for 
performing  a  process. 

Assume  that  an  inventor  has  conceived  a  product.  This 
conception  is  of  no  use  to  the  world  until  it  is  embodied 
as  an  instrument  capable  of  predetermined  use  under  pre- 
determined conditions.  In  patent  language  this  embodi- 
juent  of  the  conceived  thing  is  of  course  known  as  the 
•* reduction  to  practice"  of  the  conception.  The  process 
of  making  this  product  is  always  a  step  or  steps  per- 
formed on  certain  material  by  certain  apparatus.  There- 
fore the  existence  of  the  product  as  a  thing  embodied  de- 
ponds  upon  the  existence  and  availability  of  the  proper 
procops  and. the  proper  apparatus. 

In  practice  these  processes^  and  forms  of  apparatus 
ordinarily  exist  at  the  time  of  the  conception  of  the  con- 
ception of  the  product,  so  that  the  product  can  b^  pro- 
duced by  those  skilled  in  the  art  concerned.  It  follows 
from  this  condition  that  if  the  conceiver  of  the  product 
wants  a  patent  for  the  product,  his  application  need  not 
describe  the  process  of  making  the  product  or  the  appar- 
atus needed  to  perform  the  process.  By  far  the  greatest 
number  of  patent  applications  are  of  this  sort.  The  ordi- 
nary application  discloses  and  claims  a  product  which 
needs  only  conception  on  the  part  of  the  inventor,  The 
production  of  it  by  mechanical  skill,  i.  e.,  by  the  skill 
of  those  acquainted  with  the  art,  is  do  obvious  that  usually 
neither  the  necessary  process  nor  the  necessary  apparatus 
is  referred  to. 

But  suppose  the  required  process  is  apparently  not 
available.  Obviously  under  such  a  condition  the  primary 
conception,  i.  e.,  the  conception  of  the  product,  is  not 
sufficient.  There  must  be  a  second  or  subconception, 
that  of  the  process  for  making  the  product.  But  there 
must  be  a  reduction  to  practice  of  this  subconception. 


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610  JoURNAIi  OF  THE  PaTBNT  OfFICE  SoCIETY. 

else  the  process  itself  does  not  become  available,  and  the 
product  is  still  unmakable.  Ordinarily,  again,  the  pro- 
cess having  been  so  conceived,  the  necessary  apparatus  is 
available,  and  inasmuch  as  the  process  can  thus  be  re- 
duced to  practice  by  mechanical  skill,  the  product  can  be 
produced,  and  so  made  available  to  the  public. 

But  it  may  further  happen  that  the  inventor,  having 
conceived  a  product,  and  knowing  of  no  available  pro- 
cess, may  conceive  the  necessary  process  an<i  yet  find  no 
apparatus  available  for  reducing  the  process  to  practice- 
Obviously  the  inventor  is  then  confronted  with  the  neces- 
sity of  conceiving  and  reducing  to  practice  the  necessary 
apparatus.  Having  performed  that  act  the  necessary 
apparatus  becomes  available,  its  applicatibn  to  the  con- 
ceived process  makes  the  necessary  process  available,  and 
the  application  of  the  process  to  the  conceived  product 
produces  that  product.  Thus  the  product  which  was  the 
primary  conception  becomes  available  to  the  public. 

This  condition  is  of  course  unusual,  biit  it  is  by  no 
means  fanciful.  Oue  might  conceive  of  a  new  rail  for  car 
tracks,  based  on  a  discovery  that  a  superior  rail  would 
probably  be  produced  if  a  certain  specific  molecular  con- 
dition could  be  brought  about  in  the  manufacture  of  the 
rail.  The  conception  of  the  product  would  be  clear.  But 
possibly  no  complete  process  for  reducing  to  practice  this 
conception,  i.  e.,  for  making  the  conceived  rail,  would  be 
available.  There  must  be  a  subconception,  that  of  all 
or  a  part  of  the  process  for  so  manipulating  the  ingot  as 
to  produce  the  rail.  But  again  there  might  be  no  com- 
plete apparatus  available  for  performing  the  conceived 
process,  such  apparatus  being  naturally  powerful  ma- 
chinery; and  all  or  a  part  of  such  proper  apparatus  must 
first  be  conceived  and  reduced.  So  that  to  make  the 
product  available  to  the  public,  there  must  be  a  primary 
conception,  a  second  conception  and  a  third  conception, 
and  a  reduction  to  practice  of  the  third  conception. 

Since  a  patent  is  granted  only  for  a  thing  made  avail- 
able to  the  public,  if  such  an  inventor  wants  a  patent, 
his  application  must  disclose  not  only  the  rail,  but  the 
process  of  making  the  rail  and  the  apparatus  for  perform- 
ing the  process.  Only  so  does  he  satisfy  the  statutory 
requirement  to  describe  the  process  of  making  the  product 
in  such  full,  clear,  concise  and  exact  terms  as  to  enable 
one  skilled  in  the  art  to  produce  it. 


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JOUBNAL  OF  THE  PaTBNT  OfFICE  SoCIETY.  611 

Or  it  may  happen  that  a  product  being  old,  an  inventor 
conceives  of  a  new  process  by  which  the  old  product  may 
be  made  more  economically  and  may  know  of  no  appar- 
atus to  perform  the  process.  We  may  imagine  an  old 
form  of  steel  rail  made  by  a  certain  process,  and  that  the 
inventor  conceives  of  a  new  process  of  manipulating  the 
ingot  so  as  to  produce  the  same  rail  in  onehalf  the  known 
time.  Again  this  conceived  process  is  without  value 
unless  reduced  to  practice,  and  the  inventor  may  have 
to  conceive  and  reduce  all  or  a  part  of  the  apparatus  capa- 
ble of  performing  the  process.  Only  so  can  he  benefit  the 
public  or  receive  a  patent. 

Also,  there  is  a  kind  of  product  which  can  be  called  a 
product  only  if  that  term  is  used  in  a  broad  sense,  per- 
haps broader  than  in  the  patent  sense.  A  process  is,  as 
has  been  seen,  a  series  of  steps  performed  on  material  to 
produce  a  product.  The  physical  embodiment  of  this 
product  may  be  anything  which  results  from  a  process. 
One  example  is  a  street  improved  by  a  cleaning  process. 
Such  a  street  is  a  product,  even  if  a  temporary  one,  and 
regardless  of  whether  it  comes  within  the  term  **  prod- 
uct" as  used  in  the  Patent  Law.  It  is  a  part  of  apparatus 
used  in  street  transportation. 

Suppose  an  inventor  conceives  a  method  of  cleaning  a 
street  so  as  to  produce  this  new  product.  There  may  be 
no  apparatus  available  to  perform  the  process,  i.  e.,  to 
reduce  the  process  to  practice,  the  known  apparatus  being 
inadequate  to  perform  it. 

The  apparatus  ordinarily  used  in  street  cleaning  is  a 
cart  on  which  are  mounted  a  water-tank,  a  pump,  and 
supply  pipes  and  nozzles  to  convey  the  water  from  the 
tank  to  the  street  surface.  It  might  easily  happen  that 
the  inventor  could  only  produce  apparatus  efficient  to 
apply  the  water  in  the  way  conceived,  by  conceiving  and 
reducing  a  new  form  of  tank,  a  new  form  of  cart-body  to 
support  the  new  tank,  a  new  form  of  pump,  a  new  form 
of  distributing  pipes,  and  a  new  form  of  nozzle,  aU  co- 
operating to  perform  the  newly  conceived  process. 

Or,  it  might  happen  that  the  specific  product,  that 
particular  form  of  cleaned  street,  is  old,  and  the  primary 
conception  may  be  now  of  a  new  process  which  will  pro- 
duce the  same  cleaned  street  at  less  expense  of  time  and 


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612  JOUBNAL  OF  THE  PaTBNT  OfFICB  SoCIETT. 

water,  and  the  same  problem  of  reduction  to  practice 
of  the  process  as  above  stated  might  present  itself.  Or 
the  cleaned  street  and  the  process  might  be  old,  and  the 
primary  conception  might  be  of  improved  apparatus  for 
performing  the  old  process  with  a  less  expenditure  of 
energy,  the  problem  then  being  the  reduction  to  practice 
of  the  conceived  apparatus. 

Thus  we  may  have  as  a  primary  conception  a  product, 
and  as  necessary  to  reduce  this  primary  conception  to 
practice,  the  subconception  of  a  process  to  be  maxle  avail- 
able, and  a  second  subconception,  that  of  apparatus 
available  to  perform  the  process  and  so  reduce  the  pro- 
cess to  practice,  and  this  second  subconception,  that  of 
the  apparatus,  may  need  reduction  to  practice.  If  such 
apparatus  is  produced,  the  process  is  reduced  to  practice 
and  is  available  to  produce  the  •  conceived  product,  and 
the  apparatus  is  available  to  perform  the  process  neces- 
sary to  produce  the  primary  product. 

Or  we  may  have  an  old  product  and  as  a  primary  con- 
ception a  new  process  for  producing  the  product,  and  the 
same  necessity  of  reducing  this  process  to  practice  by 
conceiving  and  reducing  to  practice  the  conceived  appar- 
atus. As  to  conception  and  reduction  this  new  apparatus 
is  itself  a  product,  and  may  in  turn  require  subconcep- 
tions  and  reductions. 

Or  we  may  have  an  old  process,  and  a  conceived  appar- 
atus to  lessen  the  cost  of  performing  the  process,  some 
or  all  of  the  constituent  parts  of  the  conceived  apparatus 
needing  reduction  to  practice. 

Of  course,  the  inventions  which  have  the  relation  of 
genus  and  species  fall  directly  in  line  with  these  condi- 
tions, the  genus  being  a  product,  a  process,  or  an  appar- 
atus resulting  from  a  primary  conception  or  a  subcon- 
ception, and  being  reduced  to  practice,  i.  e.,  embodied, 
in  one  or  more  species. 

Now,  although  these  subconceptions  and  reductions 
are  created  only  to  reduce  to  practice  some  primary  con- 
<jeption,  when  the  things  resulting  from  these  subconcep- 
tions and  reductions  have  been  produced,  they  are  as 
truly  means  available  to  the  public  as  if  each  of  them 
were  the  embodiment  of  a  primary  conception.  The  pro- 
cess of  making  the  steel  rail  referred  to  above,  the  appar- 
atus for  performing  that  process,  the  process  of  cleaning 


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Journal  of  the  Patent  Office  Society.         613 

the  street  referred  to,  the  apparatus  for  performing  that 
process,  and  the  tank,  cart-body,  pump,  distributing  pipes 
and  nozzles  invented  to  produce  the  sprinkling  apparatus; 
each  of  these  is  means  as  truly  as  is  the  steel  rail  or  the 
cleaned  street. 

The  inventor,  recognizing  'this  availability,  may  see 
that  the  process  or  the  apparatus  which  he  created  to 
produce  his  rail  may  operate  on  some  other  material  and 
produce  some  other  article,  a  roof-girder,  for  example. 
The  process  and  apparatus  created  to  produce  a  partic- 
ular type  of  cleaned  street  may  be  perhaps  useful  in 
spreading  a  liquid  fertilizer. 

The  tank,  pump,  cart-body,  pipes  and  nozzles  created 
to  produce  a  street-sprinkler  may  be  capable  of  use  indi- 
vidually in  many  other  cooperative  relations. 

It  may  indeed  easily  happen  that  the  inventor  will 
instantly  recognize  that  one  of  the  instruments  produced 
by  a  subconception  and  reduction  is  a  good  deal  more 
valuable  commercially  than  the  instrument  which  was 
the  object  of  the  primary  conception. 

Given  this  condition,  an  inventor  looking  for  patent 
protection  may  conclude  to  protect  these  embodiments 
of  his  inventive  activity  in  addition  to  the  embodiment 
of  his  primary  conception. 

And  the  evolution  of  these  subinventions  in  the  mind 
of  the  inventor  naturally  leads  him  to  see,  perhaps  to 
emphasize,  an  intimacy  of  relation  between  them  and  the 
primary  invention,  and  between  themselves;  i.  e.,  a  de- 
pendence of  the  primary  invention  upon  the  specific  sub- 
inventions; of  the  subinventions  upon  each  other;  or  a 
dependence  of  the  subinventions  upon  some  or  all  of  its 
specific  constituent  parts. 

The  natural  result  of  this  condition  is  the  presentation 
of  claims  to  the  primary  invention  and  to  the  subinven- 
tions all  in  a  single  application;  and  the  Office  has  before 
it  the  problem  of  deciding  how  many  of  these  inventions, 
in  justice  to  the  inventor,  to  the  public  and  to  the  Office, 
should  be  given  a  full  examination  in  the  application 
which  presents  them,  and  how  many  should  be  presented 
in  separate  applications;  and  a  problem  in  division  re- 
sults. 

A  patent  claim,  if  allowed,  theoretically  protects  the 
invention  defined  bv  it  as  to  all  the  uses  of  that  inven- 


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614        Journal,  of  the  Patent  Office  Societt. 

tion.  When  separate  claims  are  made  to  separate  inven- 
tions, each  claim,  if  found  patentable,  is  intended  to  give 
the  inventor  the  same  monopoly  and  rights  whether  the 
claims  are  presented  in  the  same  application  or  in  dif- 
ferent applications.  It  follows  from  this  condition  that 
the  search  must  be  as  exhaustive  in  one  case  as  in  the 
other.  Whether  ten  claims  are  presented  in  one  applica- 
tion or  in  any  number  of  applications  up  to  ten,  the  Office 
duty  toward  each  claim  which  it  accepts  for  a  complete 
search  is  the  same. 

As  has  been  said  above,  the  total  field  of  search  for  one 
given  plurality  of  inventions  may  vary  hx  area  very  much 
from  the  total  fi^ld  of  search  on  some  other  plurality  of 
inventions.  Or  total  field  may  be  made  up  of  fields  of 
search  which  overlap  a  good  deal,  or  are  even  substan- 
tially the  same,  so  that,  in  a  search  as  to  the  patentability 
of  one  of  the  inventions,  the  art  to  one,  or  more,  of  the 
others  may  come  to  light,  with  the  result  that  the  pre- 
sumable number  of  searches  which  make  up  the  total 
search  may  be  small.  On  the  other  hand,  the  total  field 
of  search  may  be  made  up  of  fields  so  widely  distinct  in 
their  relation  to  the  arts  that  a  search  on  all  the  claimed 
inventions  can  be  made  only  by  making  wholly  separate 
searches,  the  art  which  comes  to  light  from  the  search 
on  one  invention  furnishing  no  information  as  to  the  pat- 
entability of  another. 

As  has  been  stated  earlier,  when  the  respective  fields 
of  search  for  the  separate  inventions  claimed  have  been 
the  same,  or  nearly  the  same,  or  even  have  not  been  quite 
different,  the  equity  .demanded  by  the  importance  of 
encouraging  invention  has  often  led  the  Office  to  waive 
the  strict  construction  of  the  implication  of  the  Patent 
Law  that  each  invention  should  have  a  patent  of  its  own, 
and  thus  the  Office  frequently  makes  searches  as  to  the 
patentability  of  a  plurality  of  inventions  presented  in  a 
single  application  without  requiring  division. 

Such  closely  related  and  overlapping  fields  exist  in  any 
classification  based  on  the  <Jevelopment  of  the  arts,  when 
a  plurality  of  inventions  in  a  given  art  have  not  been 
developed  industrially  to  such  a  degree  as  to  be  separ- 
ately made  and  sold  for  use  with  standard  things. 

The  liberal  construction  of  the  statute  encourages  in- 
vention by  lessening  the  expense  to  the  applicant,  siijce 


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Journal  or  the  Patent  Ofpicb  Society.         615 

each  additional  application  required  means  additional 
Office  fees,  and  ordinarily  additional  attorney's  fees. 

The  fact  that  the  waiver  of  the  strict  construction  of 
the  law  is  already  in  practice  in  various  forms  is  of  im- 
portance in  the  consideration  of  change  in  division 
practice. 

It  is  possible  that  the  ** first"  or  so-called  ** prelim- 
inary" fee  of  fifteen  dollars  should  have  more  considera- 
tion in  division  practice  than  is  usually  given  to  it. 

This  ** preliminary"  fifteen-dollar  fee  is  necessary  to 
the  completion  of  every  application  for  a  mechanical  pat- 
ent, that  is,  every  application  presented  under  4886.  No 
examination  will  be  given  as  to  the  patentability  of  inven- 
tion claimed  in  such  an  application,  although  the  appli- 
cation may  be  complete  in  every  other  way,  unless  this 
preliminary  fee  has  been  paid.  The  final  fee  of  twenty 
dollars  need  not  be  paid  until  after  patentability  has  been 
assured  and  not  then  unless  applicant  chooses  to  taie 
out  his  patent. 

On  the  other  hand,  if  the  preliminary  fee  has  been 
paid,  many  other  formalities  are  waived  pending  the  de- 
termination of  patentability  of  the  claimed  invention, 
and  the  same  full  search  is  made  on  patenfebility  as  if 
all  other  parts  of  the  application  complied  fully  with  the 
statute  and  the  rules,  the  apparent  idea  again  being  to 
lessen  to  the  applicant  the  expense  of  learning  whether 
his  invention  is  patentable.  May  not  the  preliminary  fee 
have  been  made  less  than  the  final  fee  for  the  same  reason, 
the  larger  fee  being  demanded  only  after  the  invention 
has  been  found  patentable? 

Further,  if  the  search  which  the  statute  directs  shows 
that  the  invention  is  not  patentable  the  statute  makes  no 
provision  for  the  return  of  the  preliminary  fee.  If  search 
determines  that  the  invention  is  patentable  and  the  appli- 
cant then  abandons  his  application  or  invention  by  action 
or  by  direct  statement,  there  is  still  no  provision  for  the 
return  of  that  fee.  Indeed,  after  the  complete  application 
has  been  filed,  and  even  before  any  examination  has  been 
made,  there  is,  ordinarily,  no  provision  for  returning  this 
fee;  the  Office  apparently  contracting  to  determine  the 
patentability  of  the  claimed  invention. 

Occasionally  also  two  applications  are  filed  by  the  same 
applicant  which  applications  claim  respective  inventions 


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616        Journal  of  the  Patent  Office  Society. 

so  vitally  related  that  Double  Patenting  would  result 
from  the  issue  of  separate  patents,  as  for  example,  when 
the  respective  inventions  claimed  are  a  product  and  a 
process.  Under  this  condition  merger  of  the  two  appli- 
cations into  one  application  on  which  one  patent  shall 
issue  is  required.  Only  one  final  fee  is  required,  but  there 
is  no  provision  for  the  return  of  the  extra  preliminary 
fee  inadvertently  paid.  A  search  has  been  made  on  the 
patentability  of  each  invention,  which  search  has  been 
as  complete  as  to  the  patentability  of  each  invention  as  if 
the  other  invention  had  not  been  claimed. 

In  view  of  these  conditions  would  it  be  illegal  or  illog- 
ical, or  in  any  way  unjust  to  the  applicant,  to  the  public 
or  to  the  Office,  to  consider  this  preliminary  fee  of  fifteen 
dollars  as  a  true  '* search '^  fee!  If  it  may  be  properly  so 
considered,  the  problem  of  division  is  apparently  of  rela- 
tively easy  solution. 

Because  every  invention  is  a  different  thing  from  every 
other  invention.  A  product  invention  is  not  a  process 
invention,  a  process  invention  is  not  an  apparatus  inven- 
tion. An  organization  product  invention  is  a  different 
thing  from  every  other  invention  having  more  or  less 
parts.  Elaborating  this  difference  as  to  organization 
products,  because  it  is  by  far  the  commonest  condition 
arising  in  division  practice,  the  organization  abed 
is  not  the  same  thing  as  a,  or  b,  or  ab,  or  abc,  or  bed,  or 
abode.  It  is  not  the  same  thing  as  any  other  thing.  It 
is  not  the  same  thing  as  a  thing  having  more  or  less  parts. 

On  the  other  hand,  a  product,  a  process,  an  apparatus, 
an  organization,  a  subcombination,  an  element — each  of 
these  things  remains  the  same  thing  no  matter  how 
broadly  or  narrowly  it  may  be  claimed,  whether  as 
*' means,  ^*  or  most  specifically.  Just  as  a  given  suit  of 
clothes  remains  the  same  thing  whether  the  coat,  vest, 
trousers  and  shoes  are  recited  in  broad  element  and  com- 
bination form,  or  whether  the  specific  shape  and  color  of 
each  member  and  its  specific  cooperative  relation  to  an- 
other member  is  recited.  If  the  vest  is  taien  from  the 
combination  the  remaining  parts  are  a  different  combina- 
tion. If  a  hat  is  added  to  the  suit  there  is  again  a  dif- 
ferent combination.  However  vital  the  relationship  that 
may  exist  between  the  different  things,  between  the  prod- 


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Journal  of  the  Patent  Office  SoopiTY.        617 

net  and  a  process,  a  process  and  an  apparatus,  and  so  on, 
the  fact  that  they  are  different  thinjfs  is  not  changed. 

And,  of  course,  division  is  required  between  things; 
not  between  claims  as  embodiments  of  language,  but 
between  the  disclosed  things  on  which  the  claims  are 
based.  The  expressed  requirement  between  claims  is  only 
a  convenient  manner  of  identifying  the  respective  things. 
And  division  practice  based  on  relative  breadth  of  claims 
drawn  on  the  same  disclosed  embodiment  could  not  be 
sound.  This  fact  is  transparent  in  the  case  of  a  single 
species  disclosed  alone  in  an  application  and  on  which 
generic  and  specific  claims  are  drawn.  In  such  a  case 
the  Office  not  only  does  not  require  division,  but  will  not 
Allow  it.  But  every  product,  process,  apparatus,  subcon- 
bination  or  element  is  just  such  a  species.  Merely  be- 
cause it  is  disclosed  with  various  other  species  and  in  co- 
operation with  them  does  not  change  its  per  se  identity  or 
its  capacity  to  form  a  basis  for  generic  and  specific 
claims. 

Thus,  when  claims  are  presented,  respectively,  to  a  pro- 
duct and  a  process;  to  a  product  and  an  apparatus;  to  a 
process  and  an  apparatus;  to  an  organization,  as  abed, 
a  subcombination  ab,  and  an  element  a;  the  only  question 
under  the  suggested  practice  would  be:  do  the  disclosed 
things  on  which  the  respective  claims  or  sets  of  claims 
are  based  belong  to  types  of  things  which  are  placed  in 
respective  fields  of  search  so  different  that  division  should 
be  required! 

Given  a  plurality  of  inventions  claimed  in  a  single 
application,  no  matter  whether  these  inventions  are  in 
different  statutory  classes  or  in  the  same  statutory  class, 
certain  conditions  are  clearly  definite.  First,  they  are 
different  things.  Second,  a  search  made  to  determine 
the  patentability  of  each  of  the  inventions  must  be  ex- 
haustive; theoretically  at  least  it  must  be  just  as  com- 
plete as  if  no  other  invention  were  claimed. 

Third,  the  total  search  field  may  be  made  up  of  en- 
tirely separate  fields,  or  fields  overlapping  a  little,  or 
of  fields  overlapping  a  good  deal,  or  of  fields  overlapping 
entirely,  i.  e.,  precisely  the  same. 

The  first  two  conditions  are  fixed.  Only  the  third  con- 
dition, the  make-up  of  the  total  field  of  search,  is  a  varia- 
ble condition.    But  this  variable  condition  is  wholly  vis- 


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618         Journal  of  the  Patent  Office  Society. 

ible.  It  depends  wholly  on  the  distribution  of  the  par- 
tienlar  search  material  in  the  Office;  that  is,  on  clas- 
sification. 

Regardless  of  the  accuracy  or  sufficiency  or  availability 
of  any  system  of  classification,  theoretically  it  is  that  dis- 
position of  search  material  which  the  Office  believes  will 
allow  an  exhaustive  search  in  a  minimum  of  time. 

If  the  preliminary  fee  of  fifteen  dollars  may  be  prop- 
erly regarded  as  a  search  fee,  the  question  whether  a 
plurality  of  inventions  claimed  in  a  single  application 
should  be  searched  in  that  application,  only  one  search 
fee  having  been  paid;  or  whether  a  plurality  of  fees 
should  be  paid,  each  fee  being  accompanied  by  the  other 
appropriate  parts  of  an  application,  would  be  determined 
by  the  simple  procedure  of  determining  whether  the  va- 
rious fields  of  search  which  make  up  a  given  total  field 
are  Dresumptively  so  nearly  the  same  that  division  need 
not  De  required,  or  are  presumptively  so  diflferent  that 
one  or  more  divisions  should  be  required.  An  inspection 
of  the  Office  classification  would  determine  this. 

Of  course,  there  could  he  the  usual  cursory  search  in 
each  class,  and  if  it  were  reasonably  certain  that  the  field 
of  search  for  one  type  was  sufficiently  limited,  division 
as  to  that  type  could  be  waived. 

Such  a  variation  from  the  established  practice  would 
not  seem  tabe  radical.  Under  our  present  system  equity 
often  allows  the  presentation  and  examination  in  a  single 
application  of  claims  to  respectively  different  things  if 
the  respective  fields  of  search  are  the  same,  or  partly 
overlie  one  another,  or  approach  one  another  sufficiently; 
the  strict  construction  of  the  general  implication  of  the 
statute  that  every  invention  should  be  protected  in  a  sep- 
arate patent  yielding  to  the  specific  constitutional  impli- 
cation that  invention  should  be  encouraged. 

Further,  the  present  division  practice  as  to  all  but 
''species'*  claims  operates  broadly  by  the  test  as  to 
whether  when  a  thing  has  been  conceived,  and  the  con- 
ception cannot  be  reduced  to  practice  until  a  second  thing 
has  been  conceived  and  reduced  in  order  to  serve  as  a 
means  for  reducing  the  first  conception,  the  second  thing 
so  conceived  and  reduced  belongs  to  a  known  type  of 
things  used  to  cooperate  with  other  known  things.  That 
is,  when  a  product  and  the  process  of  making  that  product 


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JOTJBNAL  OP  THE  PaTBNT  OfFICB  SoCIETY.  619 

are  separately  claimed  in  one  application,  the  require- 
ment for  division  is  dependent  largely  on  whether  the 
process  which  was  conceived  and  reduced  in  order  to 
reduce  to  practice  the  conception  of  the  product,  belongs 
to  a  known  type  of  processes  used  to  make  known  prod- 
ucts; or  when  a  product  and  the  apparatus  for  making 
the  product  are  separately  claimed  in  a  single  applica- 
tion, whether  the  apparatus  conceived  and  reduc^  in 
order  to  reduce  the  conception  of  the  product  belongs  to 
a  known  type  of  apparatus  used  to  make  known  products. 
The  same  test  holds  as  to  process  and  apparatus,  and  as 
to  an  organization  product,  or  organization  process  and  a 
subcombination  or  element  which  forms  a  part  of  the 
organization.  This  last  condition,  an  organization  prod- 
uct or  process,  as  A  B  C  D,  and  a  subcombination  or 
element  of  the  organization,  as  AB  or  A,  is  probably  the 
commonest  in  division  practice. 

But  when  such  known  types  do  exist  they,  of  course, 
exist  because  a  certain  industry  or  industries  have  devel- 
oped sufficiently  to  produce  the  collections  ol  members 
which  form  the  types  concerned.  And  as  every  patent 
classification  is  naturally  based  on  and,  theoretically  at 
loast,  follows  the  industrial  development,  such  separate 
types  naturally  gather  in  separate  fields  of  searcli. 

So  that  the  present  division  practice  is  very  largely 
based  on  whether  the  respective  fields  of  search  are  sep- 
arate. To  go  further  and  to  make  the  test  wholly  de- 
pendent on  the  respective  fields  of  search  is  apparently 
only  an  extension  of  the  present  practice,  is  apparently 
legal,  and  may  be  logical. 

This  change,  however,  would  probably  alter  consid- 
erably the  present  practice  as  to  the  requirement  of  divis- 
ion between  a  plurality  of  species  which  embody  the 
same  genus.  Perhaps  such  requirement  for  search  pur- 
poses would  cease.  Such  species  are  usually  so  intimately 
related  to  each  other  by  nature  that  they  would  seldom, 
perhaps  never,  belong  to  types  so  distinct  as  to  lie  in 
separate  fields  of  searcli.  Indeed,  usually,  perhaps  uni- 
formly, the  fields  of  search  would  be  substantially  the 
same,  if  not  exactly  so.  But  it  may  be  said:  **A  plural- 
ity of  such  species  must  inherently  be  such  distinct  inven- 
tions that  one  patent  could  not  validly  be  granted  for 
them.  They  do  not  cooperate  in  any  sense,  but  are  substi- 

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620  JoUBNAIi  OP  THE  PaTBNT  OfFICB  SodETY. 

tutes  for  one  another."  Their  distinctness  is  clear,  and 
perhaps  if  the  complete  search  should  show  that  each  spe- 
cies is  patentable,  and  is  patentably  distinct  from  every 
other  species  claimed,  plus  known  art,  so  that  Double  Pat- 
enting would  not  occur  through  separate  patents,  the 
applicant  could  then  be  required  to  file  separate  papers, 
including  a  fee,  for  each  of  the  species  except  that  one 
chosen  to  be  claimed  in  the  original  application.  But  by 
this  procedure  the  applicant  would  know  that  as  advised 
a  patent  would  issue  on  each  application.  This  would  be 
much  cheaper  to  the  applicant  than  to  insist  on  division 
prior  to  the  search,  since  the  applicant  might  thus  avoid 
the  expense  of  filing  and  prosecuting  additional  applica- 
tions for  unpatentable  matter. 

Further,  this  suggested  modification  introduces  the 
interesting  and  apparently  sometimes  serious  question  as 
to  what  practice  would  be  the  most  just  when  two  or 
more  species  separately  claimed  in  one  application  prove, 
on  complete  search,  to  avoid  known  art,  but  not  to  be 
patentably  distinct  from  one  another. 

Such  a  condition  produced  ex  parte  Isherwood,  231 
0.  G.,  page  1211,  in  which  the  Commissioner  stated  that 
division  was  properly  required  between  two  species  sep- 
arately claimed,  such  practice,  of  course,  being  based  on 
the  well-known  ex  parte  Eagle,  C.  D.,  1870,  page  137;  and 
that  the  subsequent  rejection  of  a  claim  to  the  species  so 
divided  on  the  patent  granted  for  the  generic  idea  and 
for  the  species  retained  in  the  original  case,  was  also 
proper.  For  certain  commercial  reasons  the  prosecution 
of  the  divided  species  was  carried  to  the  Court  of  Appeals 
of  the  District  of  Columbia,  where  the  divided  application 
was  again  rejected. 

It  may  be  added  that  the  generic  invention  involves 
the  shipbuilding  art,  and  its  principle  is  considered  so 
valuable  that  the  statement  was  recently  made  that  it  has 
been  adopted  by  some  ship  construction  authorities  of 
the  United  States.  Under  the  practice  suggested  above 
division  would  probably,  perhaps  certainly,  not  have  been 
required,  since  presumably  the  respective  fields  of  search 
involving  the  two  species  would  be  identical,  or  nearly 
so.  The  species  would  each  have  been  found  to  avoid 
known  art,  but  not  to  avoid  each  other  plus  known  art. 
Would  Isherwood  then  be  told  that  he  could  have  a  spe- 


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Journal  op  the  Patent  Office  Society.         621 

cific  claim  to  one  species  only,  or  could  the  Office,  properly 
allow  in  the  same  patent  separate  claims  to  these  distinct 
species?  Apparently  under  the  practice  established,  or 
crystallized  by  ex  parte  Eagle,  the  Office  could  not  allow 
such  separate  claims  in  the  same  patent;  ex  parte  Isher- 
wood  also  implies  against  allowing  such  claims  in  one 
patent. 

But  we  have  seen  that  equity  very  frequently  prevails 
over  a  strict  construction  of  the  statute  implication  of 
a  separate  patent  for  each  invention,  and  allows  one  pat- 
ent to  claim  separately  a  plurality  of  inventions.  And 
often,  perhaps  usually,  the  respective  claims*  are  not  pat- 
entably  distinct.  It  is  true  that  in  many  such  instances 
the  various  inventions  separately  claimed  are  not  substi- 
tutes for  one  another  as  in  the  species  conditions;  but, 
on  the  other  hand,  these  inventions  do  not  cooperate  to 
produce  another  thing.  For  instance,  a  product  does  not 
cooperate  with  the  process  of  making  the  product  to  pro- 
duce a  third  thing;  and  often  the  product  and  process 
as  claimed  are  not  patentably  distinct.  The  respective 
claims  are  allowed  and  are  valid  in  one  patent  when  they 
would  not  be  valid  in  separate  patents.  So  an  invention 
AB  does  not  cooperate  with  ABC  or  with  ABCD  to  pro- 
duce a  third  thing;  and  separate  patents  to  the  respective 
inventions  would  often  be  invalid.  It  is  true,  of  course, 
as  stated  in  ex  parte  Isherwood  above,  that  the  generic 
claim  allowed  protects  all  species  under  it;  but  the  prod- 
uct claims  protect  it  as  to  all  processes  for  making  it;  a 
claim  AB  allows  dominance  over  ABC  and  ABCD.  Also 
a  claim  to  a  genus  embodied  in  a  single  species  only 
assuredly  protects  against  infringement  of  that  species, 
since  making,  using  or  selling  the  species  necessarily  in- 
fringes the*  generic  claim ;  yet  the  Office  uniformly  allows 
a  claim  to  the  species  in  addition  to  the  generic  claim. 
This  last  condition,  allowance  of  genus  and  species  claims, 
may  be  based  on  a  perhaps  subconscious  recognition  of 
the  fact  that  a  genus  is  an  intangible  thing  and  a  claim 
should  be  allowed  to  its  tangible  embodiment,  but  the  fact 
of  complete  protection  by  the  generic  claims  is  not 
altered. 

Related  to  the  Isherwood  condition  is  the  following  con- 
xJition  which  occurred  recently,  and  which  is  probably 
common:  An  inventor  had  a  plurality  of  copending  ap- 
plications, each  for  a  separate  species.    No  generic  claim 

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622  JOUBNAL  OF  THE  PaTBNT  OfFIC5B  SoCJIBTY. 

was  allowable,  but  the  various  species  each  avoided 
known  art.  A  patent  was  jfranted  for  one  of  the  species, 
and  an  applic«^,tion  for  another  species  was  rejected  on 
that  patent  plus  known  art.  This  action  was  legally 
sound.  But  another  party,  noting  the  value  of  the  spe- 
cies in  the  patent  and  wanting  to  avoid  infringement, 
devised  and  used  another  species.  This  latter  species 
was  that  under  rejection.  Now  the  inventor  in  question 
had  originated  the  infringed  species,  it  was  patentable 
per  se,  and  a  patent  would  have  been  granted  for  it 
excepting  for  the  patented  species.  It  might  be  that  the 
infringed  species  would  prove  more  valuable  commer- 
cially than  the  patented  species.  Yet  in  a  suit  for  in- 
fringement the  inventor  must  prove  that  the  patented 
species  was  the  equivalent  per  se  of  the  infringed  species. 
The  inventor  had  not  Isherwood^s  recourse  to  a  generic 
claim. 

Why  should  not  the  practice  already  established,  of 
allowing  unpatentably  distinct  claims  to  appear  in  the 
same  patent  be  extended  to  unpatentably  distinct  species! 
The  same  patent  is  now  very  properly  allowed  to  protect 
a  product  claim  and  a  process  claim,  a  product  claim  and 
and  apparatus  claim,  a  process  claim  and  an  apparatus 
claim,  an  organization  claim  and  a  subcombination  or 
element  claim,  because  the  embodiment  on  which  each 
claim  is  drawn  is  the  basis  of  a  specific  monopoly  differ- 
ent from  the  specific  monopoly  of  the  other  embodiment; 
so  that  the  inventor  may  sue  on  specific  infringements, 
on  infringement  of  each  monopoly  per  se. 

To  include  within  this  established  practice  unpatent- 
ably distinct  species  would  apparently  be  wholly  within 
the  generic  idea  of  this  type  of  protection.  And  invention 
would  be  further  encouraged  by  this  additional  protection 
given  to  the  inventor. 

It  might  be  said  that  inventors  could  abuse  this  priv- 
ilege by  disclosing  and  claiming  a  good  many  unpatent- 
ably distinct  species  in  the  same  application.  But  this 
abuse,  like  the  abuse  of  too  many  claims  in  one  applica- 
tion and  other  abuses,  can  easily  be  held  in  check  by 
applying  a  strict  construction  to  the  letter  of  the  law 
when  necessary. 

Of  course,  ex  parte  Eagle,  above  referred  to,  would  need 
modification. 


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Journal  of  the  Patent  Office  Society,         623 

Also,  practice  so  far  suggested  would  reqiwre  change 
of  the  language  of  Exile  41.  ''Several  distinct  inventions 
which  are  dependent  on  each  other  and  mutually  con- 
tribute to  produce  a  single  result/'  might  belong  to  types 
of  things  in  widely  different  fields  of  search. 

But  it  may  be  said  that  it  would  be  a  hardship  to  the 
inventor  to  require  division  between  a  plurality  of  inven- 
tions merely  'because  of  the  widely  different  fields  of 
search  necessary  to  be  investigated,  when  the  respective 
inventions  might  appear  in  advance  to  be  so  vitally  re- 
lated that  only  one  putent  could  properly  be  granted  for 
all  of  them,  as  a  product  and  a  process,  a  praduct  and  an 
apparatus,  a  process  and  apparatus,  an  organization  and 
a  subcombination  or  element  of  that  organization;  or 
when  the  search  might  disclose  that  intimate  relation,  so 
that  after  the  expense  of  dividing  the  applicant  would 
be  required  to  remerge  the  inventions.  But  this  hard- 
ship would  apparently  occur  but  seldom  and  might  be 
overbalanced  by  the  greater  general  benefit  to  applicants. 
Even  under  present  practice  when  separate  applications 
are  filed  originally  and  this  vital  conflict  is  found  to  exist, 
as,  e.  g.,  between  a  product  and  a  process,  merger  is  re- 
quired. And  even  this  relatively  rare  hardsliip  might  be 
avoided,  and  other  advantages  important  to  the  appli- 
cant might  follow  if  the  following  suggestion  could  ad- 
visedly be  adopted,  though  it  may  seem  rather  radical. 

It  happens  only  too  often  that  after  one  or  more  addi- 
tional applications  are  filed  for  the  matter  ''divided  out'* 
of  the  original  application  in  response  to  a  requirement 
of  division,  a  complete  search  on  all  the  inventions  shows 
one  or  more  of  them  to  be  unpatentable ;  and  the  expense 
to  the  applicant  of  filing  additional  applications  and 
prosecuting  them,  the  latter  expense  being  often  greater 
than  the  expense  of  filing,  is  partly  or  wholly  without 
return  to  the  applicant  in  the  form  of  a  patent. 

Of  course,  it  is  tyue  that  when  the  divided  matter  is 
found  on  examination  to  be  unpatentable,  the  dividing 
applicant  merely  meets  the  fate  of  an  original  applicant 
whose  application  is  found  on  examination  to  be  unpat- 
entable; the  |Office  has  given  in  each  case  the  customary 
search  due  to  every  complete  application,  and  division 
was  required  only  because  the  dividing  applicant  claimed 
more  than  one  invention  in  a  single  application.     But 


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624        JouKNAii  OF  THE  Patbnt  Omioe  Socibty. 

the  expense  involved  in  the  preparation  of  the  papers 
and  the  subsequent  prosecution  of  a  divisional  applica- 
tion, like  the  expense  of  an  original  application,  is  often 
much  greater  than  the  preliminary  fee  of  fifteen  dollars 
which  accompanies  the  papers,  that  fee  being  only  a 
small  part  of  the  total  cost.  Very  many  inventors,  it  is 
to  be  feared,  have  difficulty  in  meeting  the  cost  of  filing 
and  prosecuting  the  original  application.  The  cost  of 
additional  applications  might  easily  be  pnohibitory.  If 
any  expedient  which  would  be  legal,  and  would  be  just 
to  the  inventor,  to  the  public  and  to  the  Office,  could  dis- 
pense with  the  preliminary  cost  of  additional  papers  in 
divisional  cases,  invention  would  be  encouraged.  And 
encouragement  of  invention  is  the  reason  for  the  Pat- 
ent Law. 

The  original  application,  the  application  which  dis- 
closes the  total  subject-matter,  from  which  the  divisional 
matter  is  taken  if  a  requirement  for  division  is  followed 
by  the  filing  of  a  divisional  application  or  applications,  is 
often  called  the  ** parent'*  application.  TKis  ''parent" 
application,  if  properly  prepared,  contains  the  usual  peti- 
tion, description,  claims  and  oath,  and  each  of  these  parts 
is  completely  inclusive  of  all  the  matter.  The  petition 
is  a  petition  to  grant  a  patent  on  all  of  the  disclosed  and 
claimed  matter,  for  the  matter  '  *  set  forth  in  the  annexed 
specification *';  the  description  is  a  description  of  all  the 
inventions  to  be  claimed;  the  claims  as  a  whole  claim  all 
the  inventions  on  which  a  patent  is  desired;  and  the  oath 
makes  each  of  its  assertions  as  to  all  the  inventions  *  *  de- 
scribed and  claimed  in  the  annexed  specification.'* 

An  application  properly  divided  from  the  parent  case 
and  confined  to  the  divided  matter  has  only  matter  which, 
as  was  felicitously  stated  in  ex  parte  Henry,  64  0.  Q-., 
page  299,  is  ** carved  out  of  the  parent  case."  The  divis- 
ional application  or  applications  add  nothing  to  the  dis- 
closure. They  merely  repeat  in  separate  papers  parts 
of  the  original  application,  so  that  the  respective  divis- 
ional applications  may  go  to  those  in  charge  of  the  re- 
spective fields  of  search  involved  in  the  divided  matter, 
and  so  that  such  papers  as  disclose  matter  ultimately  de- 
cided to  be  patentable  may  be  used  in  the  preparation 
of  the  appropriate  patent  or  patents. 

If  the  preliminary  fee  of  fifteen  dollars  may  properly 
be  called  a  ** search  fee,"  would  it  be  illegal,  or  unjust  to 


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Journal  of  the  Patent  Office  Society.         625 

the  public,  or  to  the  OflSce,  to  allow  an  applicant  to  whom 
a  requirement  of  division  had  been  made  to  merely  pay 
an  additional  search  fee  or  fees  of  fifteen  dollars  each, 
the  Office  then  making  the  additional  search  or  searches 
with  the  original  papers?  The  parent  application  could 
then  be  consixiered  as  two  or  more  applications,  the  addi- 
tional fee  or  fees  could  be  applied  to  the  original  appli- 
cation, which  could  retain  its  original  serial  nxunber, 
repeating  that  number  with  an  added  appropriate  fraction 
or  other  sign.  Application  200,162  would  then  have  addi- 
tional serial  numbers  200,162y2,  200,162%,  etc.  Usually 
the  respective  fields  of  search  are  in  different  divisions, 
and  the  application  would  have  to  be  transferred  between 
the  divisions  concerned  with  the  searches  as  amendment 
and  other  condition  required.  But  would  this  be  really 
a  hardship  to  the  examiner,  or  really  inexpedient!  And 
would  not  the  possible  inconvenience  be  much  overbal- 
anced by  the  benefit  to  inventors! 

Each  examiner  would  be  just  as  free  to  act  on  the 
subject-matter  under  his  jurisdiction  as  if  it  were  in  a 
separate  application;  his  decision  both  as  to  matters  of 
form  and  merits  could  be  just  as  full  and  independent. 
When  all  the  matters  relating  to  the  case  as  a  whole  had 
been  settled  the  examiner  who  required  division  could 
then  resume  charge  of  the  application,  and  decide  whether 
justice  to  the  inventor,  to  the  public  and  to  the  Office 
would  be  best  served  by  issuing  all  the  patentable  matter 
in  one  patent  or  in  a  plurality  of  patents.  If  the  latter 
procedure  seemed  best,  the  applicant  could  then  be  re- 
quired to  furnish  the  additional  application  or  applica- 
tions, except  of  course  as  to  the  preliminary  fee,  which 
had  already  been  paid.  The  applicant  would  know  at  the 
time  of  this  requirement  that,  as  advised,  a  patent  would 
issue  on  each  application. 

If  Double  Patenting  would  result  from  the  separation 
of  the  allowed  invention,  of  course  only  one  patent  could 
issue  and  applicant  would  have  been  saved  the  expense 
of  having  furnished  additional  papers  only  to  have  them 
remerged  in  the  parent  case,  as  was  mentioned  earlier 
herein. 

Apparently  the  machinery  ^of  the  Office  need  not  be 
much  disturbed  by  such  procedure.  Of  course,  as  just 
stated,  the  single  application  would  have  to  be  transferred 


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626  JOUBNAL  OF  THE  PaTENT  OfFICE  SoCIETY. 

to  the  different  divisions  of  the  OflSce  having  the  respect- 
ive fields  of  search  if  those  fields  were  in  different  (^vis- 
ions. The  work  of  examination  would  probably  be  facili- 
tated if  the  respective  amendments  were  made  on  sep- 
arate papers. 

If  this  general  procedure  sounds  a  little  too  compli- 
cated it  is  believed  that  it  would  not  prove  so  in  prac- 
tice. It  actually  involves  hardly  more  than  the  physical 
transfer  of  the  file  from  one  division  to  another  as  re- 
quired. The  bookkeeping  would,  of  course,  be  a  little 
more  complex,  but  it  is  understood  that  the  clerical  work 
in  the  examining  divisions  exists  to  facilitate  examining 
work. 

Perhaps  the  Office  fees  would  diminish  somewhat. 
There  would  probably  be  fewer  requirements  for  division, 
but  probably  a  larger  proportion  of  disputed  require- 
ments would  be  sustained,  since  the  debatable  line  would 
be  narrower  and  clearer.  It  is  assumed,  too,  that  it  is 
not  an  object  of  the  Office  to  demand  fees  unneccessary  to 
its  efficient  work. 

Radical  as  may  seem  the  suggestion  to  dispense  with 
new  papers  when  division  is  required,  it  is  believed  to  be 
doubtful  whether  any  modification  other  than  of  the  Rules 
is  necessary.  Very  wide  discretion  appears  to  be  allowed 
to  the  Commissioner  in  the  making  of  Rules  which  tend 
to  lessen  the  expense  to  the  applicant.  For  example,  the 
law  says  as  to  renewals,  Sec.  4897,  that  "any  person," 
etc.,  **  shall  have  a  right  to  make  an  application  for  a 
patent  for  such  invention  or  discovery  the  same  as  in  the 
case  of  an  original  application."  But  Sees.  4888  to  4892 
say  that  an  original  application  shall  have  a  petition, 
specification,  drawing,  if  necessary,  and  oath.  To  pre- 
pare and  file  these  papers  would  involve  expense.  There- 
fore Rule  176,  based  on  Sec.  4897,  says:  *'In  a  renewal 
the  oath,  petition,  specification,  drawing  and  model  of 
the  original  application  may  be  used;  but  a  new  fee  will 
be  required."  That  is,  the  same  papers  are  allowed  to 
form  two  different  applications  complete,  except  as  to 
the  fee.  Also,  Rule  173,  relative  to  new  applications  filed 
in  place  of  abandoned  applications,  says  that  the  draw- 
ing of  the  original  application  may  be  transferred  to  the 
new  application.  Further,  ex  parte  King,  190  0.  G.,  page 
548,  established  the  practice  which   allows  claims  re- 


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JOUBNAL  OP  THE  PATENT  OfPIOB  SoCIBTY.  627 

quired  to  be  divided  from  an  application  to  remain  phys- 
ically in  the  case,  to  be  temporarily  in  it  but  not  of  it. 

All  these  privileges  are  apparently  allowed  under  the 
equitable  idea  that  the  applicant  thus  saves  expense. 

These  various  suggestions  may  be  both  legal  and  logi- 
cal, or  legal  but  not  logical — among  those  things  which 
are  lawful  but  not  expedient,  or  may  be  neither  legal  nor 
logical;  but  hardly  any  one  in  or  out  of  the  Office  likes 
the  present  division  practice  in  spite  of  its  many  years 
of  operation,  and  any  suggested  change  may  merit  consid- 
eration. The  apparent  letter  and  spirit  of  the  constitu- 
tional provision  and  the  patent  laws  that  have  been 
founded  on  it  is  that  encouragement  of  invention  is  to  be 
positive,  and  any  expedient  to  that  end  not  contradictory 
to  the  letter  or  spirit  of  the  law,  and  just  to  the  inventor, 
to  the  public  and  to  the  Office  should  be  proposed. 

It  is  believed  that  some  attorney  who  has  had  working 
experience  both  in  the  Office  and  out  of  the  Office  may, 
perhaps  easily,  formulate  a  division  practice  at  once  com- 
prehensive, simple  and  just.  If  so,  the  result  would  seem 
clearly  to  warrant  the  time  and  effort. 


THE   COPY  DIVISION   OF   THE   OFFICE. 

The  present  condition  of  the  Copy  Division  in  this 
Office  is  worthy  of  note.  As  is  well  known,  this  division 
handles  the  work  of  furnishing  libraries,  attorneys  and 
others  with  printed  copies  of  patents,  which  constitutes  a 
very  considerable  amount  of  business.  Before  the  war, 
the  average  receipts  of  orders  for  copies  amounted  to 
something  like  45,000  per  week.  Since  the  signing  of  the 
armistice  these  orders  have  increased  enormously  and  at 
present  they  are  being  received  at  the  rate  of  60^000  to 
75,000  a  week. 

Manufacturers  giving  up  war  work  are  branching  out 
in  new  lines  and  are  ordering  whole  classes  of  patents  to 
find  the  newest  and  best  ways  of  doing  things,  and  also 
to  see  if  they  are  infringing  the  patents  of  others,  and  this 
has  been  the  probable  cause  of  this  large  increase  in  the 
number  of  copies  ordered. 


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628         Journal  of  the  Patent  Office  SocamTY. 

There  are  on  hand  unfilled  class  and  subclass  orders 
of  this  character  aggregating"  150,000  copies  of  patents. 
Some  of  these  orders  are  between  two  and'  three  months 
old.  There  are  also  on  hand  large  numbers  of  unfilled 
orders  from  libraries  in  this  and  foreign  countries.  The 
Office  is  between  one  and  two  weeks  behind  in  filling  small 
orders  for  patent  copies  received  by  mail. 

Orders  from  nine  of  the  libraries  in  this  country  and 
one  library  in  Australia  for  complete  copies  of  1914-15 
issues  are  on  hand.  To  fill  these  back  orders  would  re- 
quire at  least  the  continuous  services  of  two  mailing 
clerks  and  two  copy  pullers  for  a  full  year. 

Owing  to  the  very  great  import^ce  to  inventors  and 
the  public  of  having  particular  copies  promptly  supplied 
in  order  that  pending*  applications  may  be  amended,  suits 
filed'  and  defended,  etc.,  the  class  and  subclass  orders 
and  library  orders  have  had  to  give  way  to  current  cash 
and  coupon  orders  for  copies.  The  work  of  the  Copy  Di- 
vision has  now  fallen  behind  until  ordinarily  an  order  for 
a  copy  which  should  be  furnished  on  the  day  of  the  receipt 
of  the  order  is  not  reached'  by  the  clerks  who  enter  the 
order  and  give  the  necessary  directions  for  the  selection 
of  the  copy  for  fully  a  week  after  the  order  is  received. 

Frequently  the  copy  ordered  is  exhausted  and  consid- 
erable delay  results  before  the  same  can  be  reproduced. 
The  appropriation  for  reproducing  these  copies  during 
the  fiscal  year  ended  June  30,  1919,  was  insufficient  to 
the  amount  of  $10,000  to  pay  for  the  required  reproduc- 
tion, and  this  amount  was,  therefore,  carried  over  to  the 
appropriation  for  the  current  year.  The  Appropriations 
Committee  has  cut  the  appropriations  out  of  which  the 
cost  of  this  work  is  paid  from  $140,000  heretofore  uni- 
formly allowed  to  $135,000,  for  the  current  year,  and  also 
placed  upon  this  appropriation  the  new  item  of  expense 
of  transportation  of  copies  of  United  States  patents  to 
foreign  countries.  To  make  matters  worse,  under  the 
best  contract  that  could  be  entered  into  for  the  current 
year,  the  cost  of  reproducing  these  patents  has  increased 
about  11  per  cent. 

To  fill  accumulated  orders  and  provide  for  the  large 
increase  of  this  work,  the  Commissioner  has  requested  a 
further  appropriation  for  ten  clerks  and  fifteen  copy 
pullers  and  an  addition  of  $25,000  to  supplement  the 
4135,000  appropriated. 


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JOTJBNAL  OF  THE  PATBNT  OfFIOB  SoCIBTY.  629 

ABSTRACT  FROM  LA  PROPRIETE  INDUSTRIELLE, 
APRIL  30,  1919. 

— 1^— 

For  German  Austria  a  decree  of  the  Provisional  Na- 
tional Assembly,  dated  October  30,  1918,  has  established 
that  the  laws  and  institutions  in  force  in  old  Austria 
will  still  be  applicable  to  the  new  order,  so  that  all  laws 
relating  to  industrial  property  will  remain  in  force  with- 
out any  modification. 

The  Patent  OflSce  of  the  Czecho-Slovak  republic  was 
established  January  1,  1919.  The  proposed  patent  law, 
now  under  consideration,  will  be  based  on  the  Austrian 
law  of  1897,  and  will  retain  the  examination  system, 
coupled  with  opposition. 

The  new  Polish  state  has  established  a  patent  office  at 
Varsovia,  but  nothing  is  known  at  present  as  to  its  atti- 
tude with  respect  to  patent  rights  acquired  in  Austria. 

The  same  situation  exists  with  respect  to  the  Jugo- 
slavs. 

A  review  of  the  statistics  of  the  Austrian  Patent 
Office  for  1918  shows  the  influence  of  the  war  on  the  char- 
acter of  inventions  for  which  applications  were  filed. 
Material  increases  are  noted  in  classed  dealing  with  war 
material  and  in  those  classes  where  attempts  have  been 
made  to  provide  substitutes,  as  in  textile  fibres  and  food- 
stuffs. Other  classes  show  a  diminution  from  war  fig- 
ures, but  an  increase  over  those  of  peace  times.  This 
was  the  case  with  the  class  relating  to  greases,  soap,  wax 
and  mineral  oils,  where  the  number  of  applications 
reached  its  high  point  in  1917,  an  evident  indication  that 
these  were  from  the  beginning  the  most  sought-for  sub- 
stitutes. 


OF  PERSONAL  INTEREST. 

— 1^— 

Mr.  Charles  E.  Tullar,  primary  examiner  of  Division 
26,  has  resigned  to  enter  the  employ  of  the  General  Elec- 
tric Company.  He  entered  the  Office  July  1,  1905,  and 
after  being  promoted  through  the  various  grades  became 
primary  examiner  October  16,  1917.  When  the  Publicity 
Committee  of  the  Patent  Office  Society  appointed  a  sub- 
committee to  communicate  with  the  press,  manufacturers 
and  inventors  to  interest  them  in  legislation  designed  to 
benefit  the  Patent  Office,  Mr.  Tullar  was  made  chairman 
of  the  subcommittee.    In  this  activity  he  dispjajjg(|  i^i^Jogle 


630  JOUBNAL  OP  THE  PaTBNT  OfFIC3B  SoCIBTY. 

ity,  initiative  and  energy,  so  that  a  large  and  ambitious 
program  was  completely  and  successfully  carried  out. 
This  work  brought  him  into  intimate  contact  with  the 
members  of  the  corps,  who  in  several  ways  showed  their 
appreciation  of  his  efforts,  and  who  wish  him  every  suc- 
cess in  his  new  field. 

— 1^— 

Mr.  Charles  0.  Marshall,  second  assistant  examiner, 
has  resigned  to  take  a  position  with  the  Toledo  Scale 
Company.  He  was  appointed  a  fourth  assistant  exam- 
iner  December  8, 1913,  and  was  promoted  to  the  position 
of  second  assistant  examiner  February  16,  1918.  Mr. 
Marshall  has  been  in  Division  10  during  the  entire  period 
of  his  service  in  the  Office.  He  is  considered  a  capable 
examiner  by  his  associates,  who  wish  him  success. 

.Mr.  Victor  L.  Lassagne,  second  assistant  examiner, 
resigned  June  7th  to  enter  the  employ  of  the  Interna- 
tional Harvester  Co.,  Chicago,  at  a  very  substantial 
increase  in  salary.  Mr.  Lassagne  has  been  in  the  Office 
since  October  1,  1908,  and  continuously  in  Division  1. 
Always  an  efficient  examiner,  his  departure  results  in 
another  place  difficult  to  fill. 

Mr.  H.  C.  Bierman,  formerly  an  assistant  examiner  in 
the  Patent  Office,  has  associated  himself  with  Mr.  E.  W. 
Bradford,  a  well  known  patent  attorney,  practicing  in 
Washington  and  Indianapolis,  forming  the  firm  of  Brad- 
ford, Morrill  &  Bierman.  Mr.  Bierman  was  in  Divis- 
ion 31,  resigning  a  year  ago  to  enter  the  military  service, 
where  he  was  given  the  rank  of  master  engineer.  Upon 
being  discharged  from  the  Army  recently  he  was,  for  a 
short  time,  engaged  in  prosecuting  patent  applications 
for  the  War  Department  as  a  civilian,  but  resigned  his 
position  with  the  War  Department  on  June  1st  to  enter 

the  new  firm. 

— 1^— 

Mr.  William  S.  Gluck,  ranking  assistant  examiner  in 
Division  45,  has  resigned  to  open  his  own  office  in  this 
city  as  a  patent  attorney.  He  states  that  he  has  done  this 
realizing  that  he  is  taking  some  chances,  but  feeling  confi- 
dent that  he  can  better  his  position  pecuniarily.  Many, 
probably,  feel  the  same  way,  but  hesitate  to  take  the 
pdunge.  Mr.  Gluck  has  been  in  the  Office  since  June  8, 
1906,  and  was  promoted  to  first  assistant  on  October 
16,  1917. 


Journal  of  the  Patent  Office  SaciBTY.         631 

Mr.  M.  W.  Davis,  first  assistant  examiner  in  Division 
19,  has  resigned  to  enter  the  patent  department  of  the 
Singer  Manufacturing  Company  at  Elizabeth,  N.  J,  The 
fact  that  Mr.  Davis  was  not  an  expert  in  sewing  machines 
apparently  did  not  figure  in  the  transaction.  His  repu- 
tation in  the  Office  was  basis  enough  for  the  offer  of  the 
position.  He  entered  the  Examing  Corps  July  1,  1908, 
and  served  continuously  in  Division  19. 


Mr.  M.  D.  Farmer,  second  assistant  examiner,  resigned 
July  22  to  enter  the  employ  of  Eosenbaum,  Stockbridge 
and  Borst,  New  York  City,  patent  attorneys.  Originally 
appointed  August  1, 1912,  Mr.  Farmer  was  for  many  years 
in  Division  23  and  reached  the  grade  of  second  assistant 
October  16,  1917. 


Mr.  C.  A.  Hellmann  has  resigned  from  the  Office  and 
associated  himself  with  the  firm  of  Prentice,  Stone  and 
Boyden,  patent  attorneys  of  this-  city.  Mr.  Hellmann  was 
appointed  July  1,  1908,  and  reached  the  grade  of  second 
assistant  July  1,  1916;  he  was  continuously  in  Division 
36  and  especially  valuable  because  of  his  electrical  train- 
ing and  his  knowledge  of  German. 


Mr.  C.  C.  Baxter,  one  of  the  younger  second  assistant 
examiners,  has  resigned  to  go  with  the  Victor  Talking 
Machine  Co.,  of  Camden,  N.  J.  He  entered  the  corps 
May  16, 1914,  and  was  made  second  assistant  October  22, 
1918,  showing  what  may  be  done  along  the  line  of  rapid 
Office  advancement. 


Mr.  E.  C.  Sanborn,  of  Division  22,  another  young  second 
assistant,  has  gone  with  the  Sperry  Gyroscope  Co.,  of 
Brooklyn,  N.  Y.  His  record  deserves  mention.  Appointed 
March  4,  1915,  he  was  promoted  to  third  assistant  Jan- 
uary 1,  1917,  and  to  second  assistant  October  12,  1918. 
The  outside  firms  evidently  know  how  to  pick  good  men. 

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632  JOUBNAL  OF  THE  PaTENtOpFICB  SoCIBTY. 

Mr.  John  Flam,  an  exceptionally  valuable  assistant  in 
Division  26,  has  resigned  to  go  with  the  General  Electric 
Co.  While  only  a  third  assistant,  his  worth  to  that  com^ 
pany  was  quickly  recognized.  He  has  been  in  the  Office 
since  July  1,  1916,  except  for  five  months  when  he  was 
in  the  military  service. 

— 1^— 

Mr.  H.  G.  Manning,  another  third  assistant,  has  gone 
with  Williams  and  Pritchard,  patent  attorneys,  in  New 
York.  While  Mr.  Manning  was  originally  appointed'  No- 
vember 8,  1915,  he  was  away  and  in  the  military  service 
about  a  year  and  three  months.  He  served  in  Divisions 
5  and  3,  and  most  acceptably. 


Mr.  Arthur  M.  Hahn,  a  fourth  assistant,  has  resigned 
to  enter  the  employ  of  Hull,  Smith,  Brock  and  West,  of 
Cleveland,  Ohio.  He  was  originally  appointed  as  a  tem- 
porary assistant  examiner;  he  recently  passed  the  Civil 
Service  examination  and  secured  permanent  appointment. 
He  was  activelv  in  the  naval  service  from  May  10,  1918, 
to  February  17^!  1919. 

Mr.  C.  R.  Allen,  assistant  examiner  of  trade-marks  and 
designs,  has  resigned  to  take  charge  of  the  trade-mark, 
design  and  copyright  work  of  Mason,  Fenwick  and  Law- 
rence, of  this  cuy.  Mr.  Allen  has  recently  completed  his 
law  course  and  been  admitted  to  the  bar,  and  this,  added 
to  his  experience  in  the  Trade-Mark  Division  of  the  Office, 
admirably  equips  him  for  his  new  work. 

— 1^— 

Mr.  F.  D.  Hardesty,  a  former  member  of  the  Examining 
Corps,  announces  his  association  with  Mr.  George  C.  Shoe- 
maker, patent  attorney,  McGill  Building,  this  city. 

I   — ^— 

It  is  with  regret  that  we  record  the  death  on  July  20, 
by  his  own  hand,  of  Mr.  Joseph  Becker,  formerly  an 
examiner  in  this  Office.  Since  leaving  the  Corps  he  had 
practiced  before  the  Office,  handling  mostly  his  own  cases, 
as  he  was  an  assiduous  inventor  in  photography  and  other 
lines.    His  act  is  attributed  to  continued  ill-health. 


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JoUBNAIi  OF  THE  PaTBNT  OpFICOS  SOCIETY.  633 

THE  PROTOTYPE  OF  THE  OARABED. 

— 1^— 

March  25,  1822,  House  of  Representatives,  Proceedings,  page  1362. 

Flying  Machine. 

Among  the  petitions  this  day  presented  was  the  follow- 
ing by  Mr.  Milnorr 

James  Bennett,  a  mathematician  of  the  city  of  Philadelphia, 
to  the  honorable  the  Senate  and  House  of  Representatives  of 
the  United  States  of  America  in  Congress  assembled,  most  re- 
spectfully showeth: 

That  your  petitioner  having  invented  a  machine  by  which  a 
man  can  fly  through  the  air — can  soar  to  any  height — steer 
in  any  direction — can  start  from  any  place,  and  alight  without 
risk  of  injury;  and  whereas  a  like  machine  has  never  been 
invented  in  any  country  or  age  of  the  world,  so  as  to  be  applied 
to  purposes  of  practical  utility,  and  It  is  more  than  probable 
that  artificial  flying  would  not,  for  a  thousand  years  to  come, 
be  brought  to  the  same  degree  of  perfection,  had  not  your 
petitioner,  under  Providence,  accomplished  it;  and,  as  it  must 
be  evident  to  all  that  Ijetters  Patent  would  be  of  little  use  to 
The  inventor  in  consequence  of  various  modifications  or  im- 
provements which  might  be  made,  and  which  never  would  have 
been  thought  of,  had  not  the  way  first  been  opened  by  your 
petitioner:  He  therefore  solicits  a  special  act  of  the  Congress 
of  the  United  States,  to  secure  to  him  and  his  heirs  for  the 
term  of  forty  years,  or  for  such  other  term  as  in  their  wisdom 
may  be  deemed  just,  the  right  of  steering  flying  machines 
through  that  portion  of  earth's  atmosphere  which  presses  on 
the  United  States,  or  so  far  as  their  jurisdicition  may  extend. 

By  grating  your  petitioner's  request,  the  honor  of  the  inven- 
tion shalrbe  conferred  on  the  United  States. 

J.  BENNETT,  A.  and  M. 
PHILADELPHIA,  PeK   13,   1822. 

Mr.  Milnor  moved  to  refer  the  petition  to  the  Com- 
mittee on  the  Judiciary. 

Mr.  Sergeant  opposed  the  motion.  He  said  that  that 
committee  did  not  undertake  to  soar  into  regions  so  high. 
Their  duties  were  nearer  the  earth.  He  moved  to  lay  it 
on  the  table. — Negatived. 

Mr.  Walworth  moved  to  refer  it  to  the  Committee  on 
Eoads  and  Canals.— Negatived. 

The  question  then  recurred  upon  referring  it  to  the 
Committee  on  the  Judiciary,  which  was  resisted  by  Mr. 
Sergeant,  on  the  ground  not  only  that  it  was  above  their 
reach,  but  also  that  they  had  so  much  business  before 
them  of  a  terrestrial  character  that  they  could  not  devote 
their  time  to  philosophical  and  aerial  investigation. 

The  motion  was  lost;  when  Mr.  Little  renewed  the 
motion  to  lay  it  on  the  table. — Carried. 


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634        Journal  of  the  Patent  Office  Society. 

.  set  of  patent  office  official  gazettes  for  sale, 

Covering  the  last  70  years. 

An  unusual  opportunity  to  acquire  a  complete  set  over  an  extended 

period  of  time.     Installment  payments. 

Address  1534  Marquette  Buildins,  Chicago,  111. 

PARTNEESHIP  OPPORTUNITY. 

A  patent  lai^  office  in  Pittsburgh  desires,  at  once,  a  young  man 
between  30  and  40  years,  single  preferred,  to  enter  into  a  third  to 
one-half  partnership  arrangement  (or  a  guarantee  with  a  working 
interest)  in  an  established  practice  extending  over  a  period  of 
25  years.  Applicant  must  be  of  good  address  and  appearance,  a 
member  of  the  bar  and  have  had  some  experience  in  litigation  and 
soliciting.  Address  in  confidence,  giving  age,  experience,  past  and 
present  connections,  education,  religion,  etc.,  and  if  possessed  of  any 
practice  for  consideration,  to  X,  Journal  of  the  Patent /Office  Sodetyt 
1815  Clifton  Street,  Washingtcm,  I>.  C. 


PATENT  LAWYER   OF   TEN   YEARS   STANDING, 

Member  American  Patent  Law  Association,  as  well  as  the  District 
of  Columbia  Bar,  and  formerly  associated  with  one  of  the  best  known 
of  the  Patent  Bar,  is  desirous  after  several  years'  military  service 
of  resuming  law  work  in  Washington  or  New  York  and  would 
consider  giving  part  or  all  of  his  time  to  a  law  firm  which  would 
appreciate  thorough  work.  The  nature  of  the  work  required  is 
more  important  than  the  initial  compensation  offered. 

Address  L,  care  Journal  af  the  Patent  Office  Society, 

1815  Clifton  Street,  Washington,  D.  C. 

NOTICE 
SINGLE    BACK    NUMBERS. 


Subscribers  who  wish  to  obtain  any  particular  back 
number  of  the  JOURNAL  will  'be  supplied  through  the 
Business  Manager  at  the  regular  single  copy  rate. 


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INDEX    OF    VOLUME    ONE 

OF  TUB 

JOURNAL   OF   THE    PATENT    OFFICE 

SOCIETY. 

(Entered   as   second-class   matter,   Sept.    17,   1918,   at   the   post  office   at 
Washington,  D.  C,  under  the  act  of  March  3.  1879.) 

Abandonment  by  Secret  Practice  14,  100 

Act  of  1790  6.  7 

Act  of  1793  6 

Act  of  1836  203 

Act  of  1873  204 

Administrators  and  Executors  136 

Age  of  Production  in  Invention  and  Other  Fields  (Wyman)  439 

Alien  Property  Custodian,  letter  from,  147 

Allen,  C.  R.,  resignation  of  632 

Alternative  claims  276 

Amending  applications  173 

Amendments  requiring  assignee's  signature  26 

Amstutz,  N.  S.  ("Needs  of  the  Patent  Office")  463 

Anticipation  and  Priority  (Cox)  67 

(Glascock)  157 

(Cowles)  258 

Appealed  cases  during  1918  366 

Appeals,  Court  of  Patent  316,  342 

Appeals,  Proposals  for  Simplifying  (Coulston)  55 

Appeals  to  court  in  Interference  Cases  530 

Applicants,  Rules  as  to  (Tullar)  131,  136,  178 

Applications  received  1918  365 

Applications,  Rules  as  to  (Lane)  231 

Appropriations,  changes  sought  270 

Armstrong,  H.  C.  "Rules  17  to  23"  32,  196 

Article  claims  involving  Process  283 

Assignees  26,  37,  144 

Atlantic  City  Conference  (Ewing)  201,  211,  213 

Attorneys,  Rules  as  to  (Tucker)  66 

Attorneys,  Rules  as  to   (Armstrong)  32,  196 

Attorneys,  in  naval  or  military  service  135 

Attorney,  Relation  of  Examiners  to  (Clay)  8 

Baekeland,  Excerpts  from  Letter  from  488 

Bar,  foreign  patents  (see  also  "ex  p  Thomas")  182 

Barometer,  Patents  as  Business   (Boyle)  447 

Barometer,  Patents  as  Business   (Fay)  489 

Barrows,  F.  E.  419 

Baxter,  C.  C,  resignation  of  631 

Becker,  Joseph,  death  of  632 

Benefits  from  inventions  11 

Blerman,  H.  C,  resignation  of  630 

Blackburn,  Merrill  M.,  resignation  of  520 

Boyle,  John,  "U.  S.  Patent  Commission"  328 

Boyle,  John,  Patents — A  business  Barometer  447 


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British  Patent  Office,  Wat  and  90 

Broad  terms  172 

Brown,  Boettcher  and  Dienner  410 

Brumbaugh,  N.  J.  "Edmund  Burke"  584 

Bryant,  L  H.,  death  of  368 

Burke,  Edmund,  Second  Com.  of  Pata.  (Brumbaugh)  684 

Bums,  Capt.  W.  W.  46 
Campaign  for  Publicity                                                             521,  578 

Canadian  Patent  Office,  searches  268 

Chamber  of  Commerce  of  N.  T.,  Resolutit>n  456 

Car  body,  pyramid  and  cone  the  same  22 

Chemical  patents,  deceptire  177 

Chemical  patents,  (Editorial)  809 

Chemical  Foundation  507 

Circularizing  Inventors  (Editorial)  473 

Claims,  deflniteness  of  21 

Claims  Preparation  of  171 

Claims,  Rule  37  (Marine)  287 

Claims,  Treatment  of  Defective  (Sutton)  275 

CaassiflcaUon,  "Art"  (Lovett)  338 
Classification  of  Patents  (Teller)                                              223,  388 

Classification  Based  on  Industrial  Arts  (Thurber)  106 

Classified  Foreign  Patents  391 

Clay  F.  W.  H.  "Relation  of  Exr.  to  Inventor  and  Atty."  8 

Clay  "Secret  use,  Macbeth  glass  case"  106 

Clay,  Sketch  of  Life  of  476 

Cobb,  Victor,  resignation  of  510 
Commission  on  Economy  Report  (extract  in  re  Court  of  Patent 

Appeals)  816 

Commissioner,  appeal  to  62 

Ck)mmi8Bioner  Leggett's  Report  313 

Commissioner  of  Patents,  first  524 

Committee  of  Exrs.  for  secret  inventions  118 

Committee  Report,  Patent,  to  Research  Council  341 

Comstock,  Nathan,  resignation  of  470 

Construing  claims  in  Interferences  (Giles)  427 

Copyright  and  patent  13 

Correspondence  and  Interviews,  Rules  (Merritt)  24 

"Cost  of  Unpatented  Article"  (Fisher)  354 

Cowles,  A.  W.  "Ez  p  Thomas"  258 

"Division  Practice"  605 

Copy  Division  of  Pat.  Oft.  627 

Coulston,  Melvin  H.,  Chief  Clerk  42 

Coulston,  "Proposals  for  Simplifying  Appeals"  55 

Cover  Design,  Patent  Office  Journal  2 

Cox,  J.  D.  "Ez.  p  Thomas  and  Rule  75"  67 

Craig,  Supt.  of  Patent  Office  322 

Criticism  of  Application  18 

Custodian,  Report  of  Alien  Property  497 

Davis,  M.  W.,  resignation  of  681 

Defective  Claims  276 

Deficit  in  1918  869 
Department  of  Invention  and  Discovery,  Proposed  (Lightfoot)       116 

Dienner,  J.  A.  419 

DisclOBure,  prompt  16 

Division,  General  Discussion  (Pierce)  402 

Division  Practice,  suggestions  as  to  (Cowles)  605 

Division  review  of  proposed  requirement  for  By  Law  Exr.  370 

Drawings,  Preparation  of  169 

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Drawings,  Preparation  of  (Bdelin)  662 

Dunham,  S.  S.  364 

Duplication  of  Elements  in  Claims  280 

Eccleston,  Lieut.  H.  R.  362 

Edelln,  D.  W.  "llules  49  to  66'  662 
Editorials: 

Amount  of  work  in  1919  366 

Campaign  notes  622,  673 

Changing  the  patent  system  421 

Chemical  inventions,  insufficient  disclosure  309 

Circularizing  inventors,  campaign  of  473 

Classiflcation  of  patents  160 

Clerks  and  draftsmen  264 

Cover  design,  Pat.  Off.  Building  2 

Examiner's  duty  160 

Income  of  Pat.  Off.  161 

Invalid  patents  623 

Manufacturer  and  patent  system  97 

Needs  of  Pat.  Off.  201 

Patent  Office  Society  1,  8 

Patent  Solicitors  60 

Registration  and  examination  systems  199 

Report  of  Nat.  Research  Counsel  263 

Resignations  674 

Rules  of  Practice  60 

Suggestions  for  Improving  Pat.  Off.  810,  421,  473 

War  and  British  Pat.  Off.  99 

Word  to  men  in  service  149 

Elements,  Postive  Inclusion  in  claims  279 

Ellsworth,  Henry  L.  First  Com.  of  Pats.  (Wyman)  624 

Enemy  Countries  Patent  Situation  870 

Ethics  in  the  Patent  Profession  (Mueller)  464 

Evans  patent  7 

Ewing,  speech  at  Atlantic  City  Conference  201,  213 

Examination  of  Application  (Clay)  19 

Examination  of  Application   (Fuller)  164 

Examiners,  Assistant,  wanted  166 

Examiners-in-Chief  60 

Examiner,  Relation  to  Inventor  and  Attorney  (Clay)  8 

Examining  Corps,  Reorganization  of  (Russell)  331 

Exhibit,  Departmental  478 

Farmer,  M.  D.,  resignation  of  631 

Fay,  Albert  E.  (Letter  in  re  Patents  as  Business  Barometer)       489 

Federal  Trade  Commission,  inventions  kept  secret  by  112 

Fenton,  Blount  and  Moulton  41^9 

Fish,  Frederick  P.  863 

First  Chief  of  Patent  Office   (Wyman)  162 

Fisher,  Dudley  T.  ("Cost  of  Unpatented  Article")  364 

Flam.  John,  resignation  of  682 

Flying  Machine  in  1822  633 

Foreign  Patents  Classified  391 

France,  Inventions  in  461 

Frejsse,  Bond,  Merkel  and  Saywell  420 

Freeman,  Hadley,  resignation  of  470 

Fuller,  Walter  M.  "Valid  Patents"  164 

Oamer,  J.  W.,  resignation  of  470 

German  Patents,  Index  of  222 

Oerman  Periodicals  in  Library  830 


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Giles,  A.  H.  4S 

Giles,  Louis  E.  "Scope  of  Claims  in  Interference"  427 

Glascock,  "Ex  p  Thomas"  157 

Glass  case  (Macbeth)  13,  100 

Gluck,  W.  S.,  resignation  of  630 

Government  mployees,  inventions  by  133 

Grindle,  C.  S.  45 

"Rule  24"  74 

Hahn,  A.  M.,  resignation  of  632 

Hardesty,  F.  D.  632 

Hellman,  C.  A.,  resignation  of  631 

Hodgkins,  Capt.  H.  W.  46 

Holcomb,  Maor  A.  M.  364 

Hostetler,  T.  A.  ("Rules  46,  47  and  48")  479 

Howard,  Lieut.  D.  A.  363 

Hyde,  A.  T.,  resignation  of  470 

Hyde,  George  G.,  resignation  of  520 

Inaccurate  Claims  276 

Increase  in  applications  1860  to  1867  202 

Indefinite,  ambiguous,  vague,  etc.  claims  281 

Industrial  Arts,  Classification  Based  on  (Thurber)  106 

Infringement,  (Compensation  for  350 

Interference  Appeals  to  Court  530 

Interference,  Construing  Claims  in  (Giles)  427 

Interference  Practice,   Suggested   Changes  (Stauffer)                   491 

Invention  and  Discovery,  Department  Proposed  (Lightfoot)  116 

Inventions  kept  secret  from  enemy  418 

Invention,  proposed  formula  for  (Seitz)  380 

Inventions,  Primary,  Age  of  Inventors  439 

Inventions,  Table  of  Important  529 

Inventors  as  benefactors  11 

Inventor,  Relation  of  Examiner  to  (Clay)  8 

Jarboe,  C.  G.  862 

Jefferson,  Thomas,  and  the  Patent  System  (Wyman)  5,  53 

Johnson,  Dr.,  acknowledged  error  18 

Joint  inventors  178 

Lane.  C.  H.  "Rules  30  to  36"  231 

"Rules  38,  39,  40"  356 

Langner,  Lawrence  "International  Trade-Marks"  384 

Lassagne,  V.  L.,  resignation  of  630 

Law  Examiner,  appeal  from  64 

Leggett,  Report  of  Commissioner  313 

Legislation,  bills  introduced  395 

Legislative  Situation  575 

Libraries,  Special  Patent  (Shoemaker)  263 
Lightfoot,  J.  H.  "Proposed  Dept.  of  Invention  and  Discovery        116 

Lilly,  Scott  H.  "International  Use  of  Searches"  268 

Lovett,  G.  A.  46 

"Art  Classification  for  Office  Purposes"  838 

Lunch,  N.  Y.  Patent  Attorneys  457 

Macbeth  glass  "Alba"  14.  100 

Madison,  James  51 

Manufacturers  and  the  Patent  System  97 

Manning,  H.  G.,  resignation  of  632 

Marine,  R.  E.  "Rule  37"  287 

Marshall,  C.  O.  "Utility  as  Requisite  of  Patentability"  550 

resignation  of  630 

Merritt,  A.  D.  "Rules  1  to  16"  24 

Minerals  Separation   Patents  513 

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Monopolies,  patents  as  12 
Morgan,  Elonzo  T.  "Problems  of  the  Patent  Office.  A  solution"     396 

Mueller,  Curt  B.  (Ethics  in  patent  profession)  454 

Munitions  Patent  Board  176 

National  Research  Council,  ExecutlYe  Committee  Letter  367 

Needs  of  the  Patent  Office  (Amstuts)  458 

Negative  Limitations  in  Claims  281 

Notaries  483 

Oath,  Rules  as  to  (Mostetler)  473 

Parties  in  General  (Tullar)  131 

Patent  Act  of  1836   (Wyman)  203 

Patent  Board,  Army  and  Navy  113 

Patent  Commission,  U.  S.  (Boyle)  328 
Patent  as  a  contract                                                                           13,  15 

Patent  law,  simplicity  of  22 

Patent  Office  as  registration  system  199 
Patent  Office  as  Separate  Bureau                  116,  310,  315,  318,  346 

Patent  Office  Building  (Wyman)  256 

Patent  Office  Force  and  Salaries  in  1848  588 

Patent  Office  in  1841  148 
Patent  Office  needs  (Swing's  speech  at  Atlantic  City)         201,  213 

Patent  Office  needs  473 

Patent  Office  Society  1,  8 

Annual  Meeting  307 

Patent  Office,  Austria,  Czecho-Slovak,  Polaad  629 

Patent  Situation  in  Enemy  Countries  370 

Patent  System,  Legislative  Beginnings  (Wyman)  51 

Patent  System,  Reform  of  (Editorial)  421 
Patent  System  in  Relation  to  Ethics  of  Industrial  Service 

(Mueller)  454 
Patents — A  business  Barometer  (Boyle)                                  447,  490 

Patents  for  war  materials  549 

Peace  Treaty,  portions  in  re  industry  property  597 

Pederson,  A.  M.  resignation  of  520 

Pending  cases,  Reduction  of  number  401 

Pennie,  John  C,  Legal  Adviser  of  Amer.  Peace  Com.  419 

Periodicals,  German  in  Library  330 
Personal  Notes              42.  47,  197,  307,  362,  419,  470,  519,  580,   629 

Pierce,  C.  H.  General  Discussion  of  Subject  of  Division  402 

Powers,  Charles  W.,  death  of  471 

Preamble  to  claims  172 

Preparation  of  applications  169 
Prindle,  E.  J.  Sect.  Pat.  OCT.  Soc.                                                 456,  579 

Problems  of  the  Patent  Office — A  Solution  (Morgan)  396 

Process  Claims  involving  apparatus  284 

Progress,  promoting  0 
Promptness  in  granting  patents                                            16,  164,  199 

Propriete  Industrielle,  abstract  629 

Public  interest,  examiners  safeguard  150 

Public  use  101 

Ramsey,  George  "Scope  of  U.  S.  Patent  Protection"  371 

Receipt  of  new  applications  366 

Registration  v.  examination  system  for  patents  (Editorial)  199 

Report  of  Alien  Property  Custodian  497 

Reports,  Single  Series  of  Patent,  desired  166 

Research  Council,  Patent  Committee  Report  to  341 
Resignations  of  examiners                 43,  197,  363,  419,  470,  519,  630 

Revenues,  Plan  for  increasing  Patent  Office  (Zeller)  517 

Robb,  J.  F.  419 

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Boyaltles  on  patentB  used  by  Government  54^ 

Bules  1  to  16  (Merritt)  U 

17            (Tucker  66 

17  to  23  (Armstrong)  S2,  196 

24   (Grindle)  74 

24,  26,  26,  28  (TuUar)  111 

25,  26,  27,  38  (TuUar)  136 
"       28,  29  (TuUar)                                                                   178,  646 

29   (Crawford)  542 

''       ZO  to  36  (Lane)  281 

37   (Marine)  287 

38,  39,  40  (Lane)  856 

41   (Pierce)  402,  460 

42,  43,  44   (Pierce)  468 

46,  47,  48  (HoBtetler)  479 

"       49  to  65  (Edelin)  562 

"       75  and  ez  p  Thomas  (Coz)  67 

"       75  and  ez  p  Thomafi  (Glascock)  157 

"       75  and  ez  p  Thomas  (Cowles)  258 

Russell,  Bert  "Reorganization  ot  Ezamining  Corps"  381 

Sadler,  Loren  A.,  Resignation  of  470 

Death  of  519 

Salaries  in  Patent  Section,  War  Department  468 

Salaries  of  Ezaminers  (Wyman)  392 

Salaries,  need  for  increase  in  Patent  Oflice 

348,  368,  899,  424,  684,  588 

Sanborn,  E.  C,  resignation  of  681 

Sasnett,  E.  C,  resignation  362 

Scope  of  claims  in  Interferences  (Giles)  427 

Scdpe  of  U.  S.  Patent  Protection  (Ramsey)  371 

Searches,  International  Use  of  (Lilly)  268 
Searches,  Patent  Offlce,  suggestion  for  improTing  (Thnrber)       167 

Secrecy  of  War  Invention  (Shoemaker)  112 

Secret  Inventions,  withheld  from  Enemy  418 
Secret  Practice,  Abandonment  by  14,  190 
Secret  process  14,  100 
Seitz  "Invention*'  '  380 
Section  4886                                                                                      118,181 

Section  4887  185 

Section  4915  65 

Service  Men,  Greeting  to  Returned  467 

Shoemaker,  Wm.  D.  "Secrecy  of  War  Invention"  112 

"Special  Patent  Libraries"  263 

Smith,  A.  A.,  resignation  of  470 

Smith,  P.  C,  resignation  of  470 

Soliciting  Patents  169 

Southern  Commercial  Congress  at  Baltimore  212 

Surplus  in  Patent  OflElce  151 

Specifications,  Preparation  of  170 

Specifications,  Rules  as  to  (Lane)  356 

StaufCer,  H.  E.  44 
Stauffer  H.  E.  "Suggested  Changes  in  Interference  Praotiee"        491 

Stratton,  Dr.  853 

Supplemental  Oath  486 

Surplusage  in  claims  281 

Sutton,  L.  H.  "Treatment  of  DefecUve  Claims"  275 

Sweet,  D.  H.,  resignation  of  470 

Synnestvedt,  Paul,  "Macbeth  Glass  Case"  100 

Table  of  Important  Inventions  (Wyman)  445 

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Teller  "ClasBlflcatlon  of  Patento"  228 

TliomaB,  ex  p,  and  Rule  75  (Coz)  67 

(Qlaieoek)  167 

(Cowlee)  25S 

Tbornton,  Dr.  First  Chief  of  Pat.  Off.  152,  8 2& 

Thurber,  Wm.  P.  46 

"Classiflcatlon  Baaed  on  Industrial  Arts"  106 

"Suggestion  for  Improving  Searches"  167 

"Comments  on  Teller's  discussion"  229 

Trade-Marks,  International  (Langner)  384 

Trading  with  the  Enemy  Act  112 

Treatment  of  Defective  Claims  (Sutton)  276 

TuUar,  C.  E.  "Parties  In,  General"  131 

"Rules  26  to  27  136 

"Rules  28  and  29  178 

Reply  to  Crawford  546 

Resignation  of  629 

Types  of  Claims  178 

Underwood,  L.  D.,  Law  Examiner  42 

Use  in  foreign  country  146 

Utility  as  Requisite  to  Patentability  (C.  O.  Marshall)  550 

Valid  Patents  (Fuller)  164 

War  Invention,  Secrecy  of  (Shoemaker)  112 

Woolard,  Win.  F.  46 

Wyman,  Wm.  I.  "Thomas  Jefferson"  6 

"Legislative  Beginnings  of  Fed.  Pat.  System"     61 

"First  Chief  of  the  Pat.  Off."  162,  326 

"Patent  Act  of  1836"  203 

"Patent  Office  Building"  255 

"Patent  Office  from  1826  to  1836"  322 

"More  Thorntonlana"  325 

"Examiners'  Salaries"  392 

"Age  of  Production  in  Inventions,  etc."  439 

Francis  W.  H.  Clay  475 

Ellsworth,  First  Com.  of  Pats."  524 

Zacharlas,  Capt.  R.  M.  46 

Zeller,  Isaiah  N.  (Plan  for  Increasing  Pat.  Off.  Revenues)  517 


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