Volume 1 — MacArthur's Patent Cases

<p>Appear from refusal of Commissioner to grant patent.</p>

Statement of the Case. This was an interference between the application of Heath, filed April 29th, 1840, and the patent to Hildreth, granted March 29th, 1840. The Commissioner of Patents awarded priority to the applicant Heath, upon the ground that he was the first to conceive of the invention and make an illustrative drawing and model, although it appeared that he had never put the invention into actual use.

Statement of the Case. ■ Upon the final hearing of this interference the Commissioner, the Hon. H. L. Ellsworth, made the following order: “The Commissioner, as at present advised, considers from the joint operations of Arnold, Bishop, and Aiken that neither can consistently claim the whole, and that, since they all advisedly aided and consulted together in the progress of the matter, justice will be promoted by suspending a patent to either separately, and informing them…

Statement of the Case. Subsequent to the preceding decision of the honoi'able judge he tx'ansmitted a second opinion to the office in the following words :

<p>Interference — patentee cannot appeal. — In an interference between an applicant and a patentee no appeal can be taken to the judge by the patentee from a decision of the Commissioner favorable to the applicant</p> <p>Proceedings before commissioner initiatory. — The proceedings before the. Commissioner and before the judge are all initiatory, and relate to the question whether a patent shall issue. They cannot affect a patent already granted.</p> <p>Object of appeal — error in refusing patent. — The general object of giving an appeal from the decision of the Commissioner is to correct liis errors in refusing to grant patents for which otherwise there would be no remedy. His error in granting a patent may be corrected by the ordinary tribunals of the country when it is made a subject of litigation and there is no need of a special tribunal for that purpose.</p> <p>Sm — Sm.—There is no section or clause of either of the acts relating to patents which gives a patentee a right of appeal from the decision of the Commissioner granting a patent to another person, unless that right be given by the eighth section of the act of 1836 relating to interferences. Jurisdiction of judge special and limited — section 8 of tee act of 1836.— The power and jurisdiction given by the patent laws to the Board of Examiners and to the judge are special and limited, and must be construed and exercised strictly. The judge can only decide such questions and render such judgment as he is expressly authorized by the statutes to decide and render. In the case stated in the eighth section of the act of 1836 the judge is only to determine “ which, or whether either, of the applicants is entitled to receive a patent as prayed for.”</p> <p>Sm — Sm.—These words qualify the general language of the first part of the section giving to either party the right to appeal, and restrict the right of appeal to the case where patents have been refused as prayed for.</p> <p>Patent granted. — jurisdiction of commissioner. — When a patent has issued, the jurisdiction of the Commissioner is exhausted. He has no further control over it, except in the case provided for in the thirteenth section of the act of 1836, when the patent is inoperative or invalid by reason of a defective or insufficient specification.</p>

<p>Ineormab depositions — commissioner mat inspect. — Where a deposition was not transmitted in due form, so that it could be considered at the day of hearing under the rules of the Patent Office, the Commissioner was, nevertheless, at liberty to inspect the deposition and to postpone the hearing, if he deemed it essential to the ends of justice to permit an informality to be corrected.</p> <p>Sm — Sm—not to be considered as evidence. — The prohibition contained in the rule is not to the Commissioner's looking into the deposition thus informally transmitted, or to his reading it and ascertaining its contents, but to his considering- it on the day of hearing as evidence touching- the matter at issue.</p> <p>Commissioner may postpone hearing upon his own motion. — There is nothing in the laws relating to the Patent Office, or in the rules adopted by the Commissioner, to prevent him from postponing, upon his own motion, the hearing of a cause, if in his opinion the justice of the case should require it, and especially for the correcting of irregularities in matters of form. To deny him this power would be to stifle justice in her own forms.</p> <p>Insufficiency of notice of taking testimony — not a ground of appeal.— The objection to the insufficiency of the notice of taking testimony must be made at the hearing; otherwise, it appears, it is no ground of appeal.</p> <p>Sufficient notice. — A notice of eleven days before taking testimony at a distance of'four hundred miles considered reasonable.</p>

Statement of the Case. A leading feature of the applicant’s alleged invention was the employment of an endless screw engaging with the teeth of a segmental cog-wheel on the rudder-head for readily controlling the movements of the rudder. It appeared that the quadrant or segmental cog-wheel was old, and that it had previously been actuated by band-wheels or engaging-pinions.

<p>Interference — question is whether applicant is entitled to a patent.— Iu an interference between an applicant and a patentee, the question is whether the applicant is the first inventor; for if he is not, it is immaterial to the cause who is.</p> <p>Invention — combination of old devices — new result. — When a certain particular combination of old instruments or devices produces a new and useful effect in the art — as the combination for the first time in a machin.e for making corrugated or shirred India-rubber goods of calenders, rollers, endless apron, and a stitching frame — that combination becomes the lawful subject of a patent.</p> <p>Inadmissible testimony may be stipulated in,- subject to credibility.— Testimony otherwise inadmissible may be admitted upon stipulation, but the interest of the witnesses in the matter in controversy may still go to their credit and have its duo. weight.</p> <p>Original inventor — -presumption in favor of one who made the machine —rebutted by circumstances- — estoppel.—The prima-facie evidence of inventorship, arising out of .the fact that the machine in controversy was made by one of the parties to the interference, is rebutted by evidence showing that such party was at the time in the employ of the other party as a machinist, and that he made the machine at his employer’s request and for his benefit, and made no claim to the invention until long after-wards, but, on the contrary, stood by and saw his employer apply for' and obtain a patent without objection.</p> <p>Sm — Sm.—Under such circumstances, the presumption is that the machine was made according to the directions of the party beneficially interested, and in pursuance of his invention.</p>

<p>Direct and circumstantial evidence. — Tlie positive testimony of a credible witness fixing the date of an invention outweighs circumstantial evidence merely raising a doubt as to the correctness of the witness’ recollections,</p>

Statement of the Case. The first reason of appeal in this case was disposed of as an interlocutory question during the progress of the case in the following opinion:

Statement of the Case. The facts are stated in the opinion. Cornell is not debarred from obtaining a patent by reason of the fact that he did not reduce the invention to practice until after the other parties had built their machines. It is sufficient for the present purpose to state the law as understood by the Office, and show its application to the facts presented in the testimony.

1. The Commissioner has no authority in deciding an interference to refer to caveats, letters alleged to have been filed in the Patent Office, or generally to the files and entries in the Patent Office which have not been introduced in evidence by the parties. 2. The fact that Boardman, in carrying out the invention of Atkinson, was the first to make a machine embodying the invention, does not place the burden of proof upon Atkinson.

1. There is and can be but one Commissioner of Patents, and the rule of action should bfe the same .whether an application is brought up for consideration under the same or a different incumbent of the office. 2. The Commissioner does not pretend to extend the rule stated by him to his final action in cases that have been presented since he filled the office, and in fact, some of those have been repeatedly-rejected and re-examined, as the records of the office will show. 3.

Statement of the Case. The applications in this case (afterwards patents to Morse 6420, May 1st, 1849, and to Bain 6328, April 17th, 1849) purported to disclose a new system of telegraphy, which consisted in producing marks or discolorations on paper “ chemically prepared” by the direct action of the galvanic current, and without the intervention of magnets or other intermediate devices.

<p>Jurisdiction of judse. — -By the eleventh section of the act of 1839, in case of an appeal from the decision of the Commissioner rejecting an application for a patent, the revision of the judge is confined to “the points involved in the reasons of appeal ” filed in the office.</p> <p>Yasue and indefinite reasons of appeal. — Where an application is rejected for lack of novelty, assignments of error that the “ decision was in opposition to a clear apprehension of the merits of the case,” and “inconsistent with the precedents,”-are too vague and indefinite.</p> <p>Comparative merit immaterial — opinions of experts. — The opinion of experts respecting the practical merits of the applicant’s machine as compared with the reference cited does not affect the question of novelty.</p>

<p>Reasons of appeal — sufficiency of. — It is immaterial what reasons the Commissioner assigns for his decision. His reasons may be insufficient, and yet the decision may be correct. Such insufficient reasons are no ground for revising his decision.</p> <p>Anticipation — novelty—comparative utility. — Upon the sufficiency of references, the question is not whether the applicant’s invention is more useful than others, but whether it is new and sufficiently useful to justify a patent.</p> <p>Board of examiners — duties of the examiners. — The examiners in the Patent Office are the assistants of the Commissioner in the discharge of his duties, but the Commissioner cannot transfer to them, or any of them, his own power to decide. The examination of the alleged invention required by the seventh section of the law of 1836 may be made by the Commissioner alone, or with the aid of such examiners as he may assign for that purpose, but he cannot constitute them a 11 board of examiners,” known to the law as such.</p> <p>Ssi — section 12 op the act op 1839. — The provisions of the act of 1836 relating to a board of examiners were repealed by the twelfth section of the act of 1839.</p>

<p>Commissioner’s answer — reply thereto. — No reply to the grounds of the Commissioner’s decision can be admitted before the judge upon appeal, nor can such reply be filed in the Patent Office to be recorded with the proceedings.</p> <p>Sm — proceedings in the oeeioe suspended. — After the Commissioner has laid before the judge the papers and evidence in the case, together with the grounds of his decision, the case is no longer before the Commissioner. Nothing further can be done in the case in the Patent Office until the decision of the judge and his proceedings shall be certified to the Commissioner.</p> <p>Reasons of appeal — must assign error in decision. — The insufficiency of the Commissioner’s reasons is'not of itself evidence that his decision was wrong, and is not, therefore, a good “reason of appeal.”</p> <p>“Useful and important” — degree immaterial. — The degree of usefulness or importance to be exhibited by the alleged invention is not defined by the statute (act of 1836), nor is the degree material if the invention does not interfere with any prior right or claim, and is in itself innocent. If good may be the result of granting a patent, and evil cannot be, the patent should be allowed, especially as it is doubtful whether a rejected applicant has any means of having his right to a patent brought before a court of law to be tried by a jury.</p>

<p>New oath — not required on appeal. — An applicant is not required to filo a new oatli, after being finally rejected, to enable him to appeal.</p> <p>Bm — errors and mistakes .in specistoations. — The new oath referred to in the seventh section of the act of 1836 is to be taken only when the applicant persists iii his application, after having been informed by the Commissioner of the errors and defects of his specification. This happens before his claim is finally rejected.</p> <p>Reasons op appeal. — An objection to the opinion of the Commissioner in' regard to the sufficiency of a reference is not a good reason of appeal. Whatever may have been his opinion, his decision may have been correct.</p> <p>Error in judgment, not in reasoning. — The reasons of appeal must show that the decision of the Commissioner was wrong, and not merely that he was mistaken in his reasoning.</p>

<p>Reasons of appeal — decision confined thereto. — -The refusal of the Commissioner to receive as evidence certain certificates of manufacturers and others not having been assigned as error in the reasons of appeal, cannot be considered as such by the judge upon appeal.</p> <p>Evidence — certificate under oath. — Certificates not under oath in due form of law, cannot be received as evidence in an interference proceeding.</p> <p>Evidence — drawings without testimony no evidence. — A drawing in an account-book in the possession of one of the parties to the interference not of itself evidence that the invention therein shown was the invention of such party, and not taken as evidence of the existence of the invention at the date of the surrounding entries in the book, in the absence of corroborating circumstances or the positive testimony of witnesses.</p>

Statement-of the Case. Appeal from the decision, of the Commissioner awarding priority of invention to Moses M. Matthews in respect of the “application of and substitution of rosin for linseed and other oils in the manufacture of printing ink.” A previous interference between the same parties was decided by the then Commissioner, the Hon. Edmund Burke, in favor of Wade, upon the record, no evidence having been adduced by either party to support the issue.

<p>Interfere:íce — question at issue. — A question raised in connection with an application not in interference cannot be considered by the judge upon appeal.</p> <p>Sm — evidence.—Whether the decision of the Commissioner is correct or erroneous, must appear from the proofs and evidence which have been acted on in the trial before the Commissioner.</p> <p>Evidence — estoppel.—Where a person stands by and hears another person describe a certain invention or improvement as his own, without asserting any claim to the invention, and at the same time seeking further information of the same, the inference will be warranted that the principles of such invention were not at that time known to him.</p> <p>Printing-press — equivalents.—-In a printing-press, an eccentric shaft or pin, passing through or behind the platen, for the purpose of regulating the distance between the platen and the bed, is not the equivalent of an eccentric shaft which passes through the platen and crank arms,- having a handle on the extreme end, the effect of which is to lengthen or shorten the crank-arms, and so throw off or on the impression during the operation of the machine.</p>

Statement of the Case. Interference between an application and a patent of addition granted under the provisions of the act of 18-36.

<p>Limitation op right op appeal —-No apjieal from the decision of the Commissioner can be considered unless the reasons of appeal were filed within the specified time.</p> <p>Limit op appeal aissolute — motion to rehear does not extend. — After the expiration of the time set by the Commissioner, under authority of section 11, act of 1839, for filing the reasons of appeal, the right of appeal is gone, nor will the pendency of a motion to rehear the case of itself enlarge the time for filing- the reasons of appeal without a special order by the Commissioner to that effect.</p> <p>Petition por appeal — pounded on reasons op appeal. — The filing of the reasons of appeal is essentially the appeal itself. The judge cannot take cognizance of a case until the aggrieved party presents to him his petition for a revision on appeal, which petition, according to the law, must be predicated upon .the reasons of appeal filed with the Commissioner in due form..</p> <p>Notice op appeal — suspends proceedings. — On receiving notice from the party of his intention to appeal, it becomes the duty of the Commissioner, and his exclusively, to fix a reasonable time for filing the reasons; wjthin which time all further action upon the application within the Office is to be suspended, and within which time the reasons of appeal must be filed, unless for good cause shown the Commissioner directs the time to be enlarged.</p> <p>Time op appeal may he enlarged. — The power to enlarge the time for filing the reasons of appeal,, and to rehear the case, remains with the Commissioner not only until the patent issues, but until it is actually delivered; after which his power over the case is exhausted.</p> <p>Right op appeal lost. — The time for filing the reasons of appeal having expired, pending a motion before the Commissioner to rehear the case, the motion having- been denied and a patent issued to the successful party, the right of appeal is lost.</p>

Statement of the Case. Appeal from the decision of the Commissioner finally rejecting the application for lack of patentable novelty. The purported invention related to horse-power for cotton gins and other agricultural appliances; and the question was presented whether a change in the form and proportions of a machine is the proper subject of a patent.

<p>Evidence — party to the record — status of applicant. — An applicant for a patent involved in interference is within the reason of the rule which makes a party an incompetent witness in a cause, although the interference proceedings do not, strictly speaking, constitute a record.</p> <p>Sm — Sat—party released. — Such a party to an interference cannot be released by an assignment of his invention so as to make him a competent witness.</p> <p>Sat — Sat—loss of original DOOuaiENT. — From a principle of necessity, however, the party is a competent witness to establish the loss of an original paper if lost out of his own custody, and not destroyed by fraud.</p> <p>Sat — statements of party at TiaiE — rbs gesta — The statements and declarations of the inventor made before the contest arose, describing orally or by dratvings a certain invention, are admissible in evidence as part of the res gesta to show that ho knew of or had made the invention at that time.</p> <p>Interference — jurisdiction of judge thereof. — The judge is not precluded by the action of the Commissioner from considering upon appeal in interference cases whether the thing in controversy is patentable. He is by laav directed to determine in all such cases avhich, or whether either, of the applicants is entitled to receive a patent as prayed for.</p> <p>Novelty — invention—ENGLisn and American cases contrasted. — The differences between the English and the American cases on the questions of novelty and invention relate rather to the kind and degree of evidence required. According to the English cases the result of the change alone may furnish a conclusive test of the invention and novelty, while the American authorities hold that it must appear by some other evidence than a mere inspection of the result that the effect was produced by some now process, device, contrivance, mode, maimer or means.</p> <p>Interference — subject of — now determined. — The nature of the invention in interference is to be determined by regarding the essential principles common to the conflicting inventions, and disregarding mere formal differences and the substitution of equivalents.</p> <p>Invention — glass furnace — double use. — The use of a'nthracite coal as a fuel with a blast to produce a diffused heat around the smelting pots in a glass furnace, held not to be a more analogous or double use of anthracite coal and a blast, as previously used to produce a concentrated heat for various purposes; but a specification which failed to particularly describe and point out the mode of thus regulating the diffusion of the heat, held to be too vague and indefinite.</p> <p>Inventor not a party — testimony of — The testimony of a witness to the effect that he was a joint inventor with one of the applicants is competent evidence as against that applicant, though it would not, it seems, be admissible in his own behalf if he were a party to the record.</p>

<p>Testimony — best evidence — machines themselves — parol evidence. — Upon an issue of priority of invention in an interference proceeding, it is not true that the machines themselves are the best evidence, and must be produced or their absence satisfactorily accounted for before parol testimony ' can be admitted to prove their character and construction, and that otherwise the parol testimony is inadmissible.</p> <p>Delay in piling arguments. — An argument not filed within the time limited, and for that reason objected to, may be received if a reasonable excuse is offered in explanation of the delay.</p> <p>Hearsay evidence. — Testimony to the effect that the witness had been informed that a machine had been made and used at some former time, is not evidence.</p> <p>Evidence — witnesses not called. — The fact that an inventor has not produced as witnesses in his behalf the workmen in the same shop, who might be supposed to be most familiar with his invention, does not raise a presumption against him in a case where by publicity he might have deprived himself of the benefit of his invention.</p> <p>Sm — witness to invention need not be an expert. — It is not necessary that a witness should qualify as an expert to testify to the fact and date of an invention, if his knowledge and' memory are sufficient to enable him to truly relate the facts on the subject which he had heard and seen.</p> <p>Witnesses —presumption op honesty — discrepancies upon immaterial points. — The presumption is that a witness under oath testifies honestly, until the contrary is'shown. Contradictions and inconsistencies upon immaterial points, not proceeding from corrupt motives, do not entirely destroy his testimony.</p> <p>Sm — Sm—testimony grossly improbable. — The rule of law is, that where a witness stands wholly unimpeaclied by extrinsic circumstances, credit ought to be given to his testimony, unless it is so grossly improbable as to show that he is not to be trusted.</p> <p>Philosophical speculation — reduction to practice. — Where the invention is not of a mere philosophical speculation, abstraction, or theory, but of something corporeal, something- to be manufactured, the applicant need not show that he has reduced his invention to practice otherwise than by filing his specification and furnishing drawings and a model, as required by the statute, where the nature of the case admits of drawings or of a representation by model.</p>

<p>Competency of witness — interest in tiie suit. — When a question is raised as to the competency of a witness on the ground of interest, the usual test is to consider whether the witness will be affected by the event of the suit; that is, whether he has an interest, legal or equitable, (if real,) which will be secured or continued to him in the event of success, or lost '■ in the event of the defeat, of the party in whose favor he is called as a witness.</p> <p>Sm — testimony of assignee or licensee inadmissible. — An assignee or licensee has an interest in the issuance of a patent to his assignor or licensor as against a rival claimant.</p> <p>Implied license sufficient to exclude witness. — Where a person took an assignment under an impression that a certain improvement upon the original invention was included in the patent, and he used such improvement with the consent and permission of the patentee: Held, That he had an implied license from the patentee to continue the use of said improvement, which ivould discontinue upon the issuance of a patent to another inventor, and that lie was an incompetent witness for his licensor in an interference proceeding.</p>

<p>Motion to extend'time — essentials thereto. — On a motion to extend the time of taking testimony in an interference proceeding in the Patent Office, the affidavits should state the names, competency, and materiality of the witnesses to bo examined.</p> <p>Sm — -decision op commissioner not Appbalable. — The decision of such a motion is wholly within the discretion of the Commissioner, and will not be reviewed upon appeal to the court.</p> <p>Evidence — testimony op party who has assigned his interest. — While the natural interest which an inventor may be supposed to retain in his 'invention,.after he has parted with all pecuniary interest in the same, will not render him an incompetent witness for his assignee in an interference with a rival inventor, the circumstance should be allowed due weight in considering the credit to be given to his testimony.</p> <p>Interference — bridge rails — difference of the devices. — Two inventions are not necessarily the same because they have a common purpose. So an interference held to have been improperly declared, it appearing that the common purpose of strengthening bridge rails at the joints was effected in one case by using a two-part rail and sliding the upper part upon the lower, the two parts thus reciprocally breaking joint and supporting each other throughout their length, while, in the other case, a short additional piece of splice-plate was fitted in a similar manner to and placed beneath the adjoining ends of the rails, which were otherwise unaltered, and extended a short distance only from the joint in either direction.</p>

<p>Priority of invention — first to conceive — reasonable diligence. — He who first conceives of ail invention, and uses reasonable diligence in perfecting tlie same, and does perfect it, is entitled to the patent as against an inventor who was later to conceive but first to reduce the invention to practice.</p> <p>Evidence — -credit of witness — immaterial mistake. — A mistake by a witness in an immaterial fact ought not to discredit him. The maxim falsus in uno falsus in omnibus only applies where there is a willful, corrupt falsehood in one particular amounting to perjury.</p> <p>Original inventor- — suggestions by another merely auxiliary. — Where an inventor has conceived of. the improvement and its principle, and is using reasonable diligence to perfect the mechanical details, he will not be deprived of his patent by the fact that another, during the construction of the machine, suggested a merely auxiliary and mechanical device to improve its operation, not requiring the exercise of invention, and capable of being made and applied by any skillful machinist.</p>

<p>Depositions taken in eormer oase — when may be used. — Depositions taken in a former interference may be read at the trial when the subject-matter at issue in the former case was the. same and the parties in interest, assignors of the entire right, were the same, so that the party against, whom the deposition is offered has had full opportunity to cross-examine the witnesses.</p> <p>Sm — Sit.—It would be unnecessarily oppressive to require the party, merely to gratify form, to take his testimony over again, as well as uselessly expensive.</p> <p>Principle — unsuccessful experiments- — reduction to practice. — A mere principle or idea, until it assumes a practical form, is not patentable; and a long course of mere fruitless experiments to reduce the principle to practice would not prevent a subsequent original inventor who had perfected his invention without knowledge of the prior invention from obtaining a patent.</p> <p>Reasonable diligence — effect of.— On the other hand, when a prior inventor has been using reasonable diligence to perfect and adapt the invention to practice, all his rights will be preserved and protected, although his success may not have been perfect.</p> <p>First inventor — before all others. — The expression in our statute means that the patentee must have been the inventor first in point of time before all others.</p> <p>Estoppel — failure to apply. — The fact that an alleged inventor neglected to apply for a patent, although he knew that other persons had filed applicacations for the same invention, brings him within the-reason of the rule that when a man has been silent when in conscience he ought to have spoken he will be debarred from speaking when conscience requires him to be silent.</p>

Statement of the Case. The application under consideration in this decision became patent No. 9736 May 17th, 1853. For diagram, see Patent Office Report 1853, vol. 1, page 203.

<p>Analogous use — new use. — A mere analogous use is not patentable; but when a new or improved manufacture is produced by new contrivances, ' combinations, or arrangements, a new principle may be constituted, and the application or practice of old things will of course be new also.</p> <p>Article of manufacture — patentability.—In judging whether there is an improved result in an article of manufacture, the usual test is whether the production of the article is as good at a cheaper rate, or better in quality at the same rate, or with both of these consequences partially combined.</p> <p>Amount of invention. — It is no objection that a combination appears to be simple, and the invention not very great, if it be not frivolous and foolish.</p> <p>Letter file — case stated. — A blank book or letter file prepared for immediate use, by coating the margins of the. leaves with suitable adhesive preparations at the time of manufacture, is not anticipated by the practice of pasting scraps or letters in a blank book not previously prepared, nor by the use of adhesive paper.</p>

Statement of the Case. The application under consideration in this case afterwards issued as patent No. 9780, June 14th, 1852. (For diagram, see Patent Office Report, 1853, vol. T page 223.)

Statement of the Case. Tyson’s application in interference in this case subsequently issued as patent No. 9810, June 21st, 1853, antedated December 21st, 1852. (For diagram of the invention, see Patent Office Report, 1853, vol. 1, page 236.) The application of Beard subsequently issued as patent No. 10,124, October 18th, 1853. (See Patent Office Report, 1853, vol. 1, page 373.)

<p>Invention — metallic paints — made by old process prom repuse material.— A claim for a composition of matter — a metallic paint — possessing no new ingredient or quality in itself, and obtained by well-known methods of treatment from a refuse or waste material which was known to contain the elements of the composition in suitable proportions, is not rendered patentable by the fact that the applicant was the first to utilize the waste in that manner.</p>

<p>Evidence — statement taken as a whole. — When a part of an applicant’s statement in correspondence with the Office is used, the whole of the cotemporaneous statement should be received, the part which operates for him as well as that which makes against him.</p> <p>Combination oe old elements. — There may be a patent for a new combination of machines to produce a certain effect or effects, whether the machines constituting that combination be new or old. In such case the thing patented is not the separate machines, but the combination alone.</p> <p>Sm — in part old. — Under a patent for a combination, proof that the machine or any part of the structure existed before forms no objection to the patent, unless the combination had existed before, for the reason that the patent is limited to the combination.</p> <p>Principle on machine. — The true legal meaning of the principle of a machine with reference to the patent act is the peculiar structure or constituent parts of such machine. The principles of two machines may be very different, though their external structures may have great similarity.</p> <p>Weed cutter — new combination. — A combination may be new, although its elements, separately considered, are old. Thus, where the cutting-shear or blade of a weed-cutting plow was old, and the mechanism by which it was raised and lowered has been before used to perform the same office for cultivator teeth, and in other connections: Held, That a claim to the combination of the share and its controlling mechanism was patentable.</p>

<p>Filing a'second application after interference — status of. — The filing of a second application by the defeated party to an interference is in effect an effort to have the decision reviewed and reversed upon a rehearing or new trial of the first case; and from the refusal of the Commissioner to declare a new interference thereon between the same parties no appeal lies to the judge.</p> <p>Rehearing — new trials — not appealable. — Motions to rehear in chancery and for new trials at law are motions addressed to the discretion of the court, from the refusal to grant which there lies no appeal.</p> <p>Section 8, act oe 1836, construed. — There is nothing in section 8 of the act of 1836 which makes it imperative upon the Commissioner to declare as many interferences between the same parties as the defeated party may seek by filing successive applications. The words of the law are satisfied by giving one trial between the same parties upon the same subject-matter.</p> <p>One trial only- by law as a bight op cause. — One full, fair, and impartial trial between the same parties and for the same matter of controversy is all that any citizen can claim under this statute or any other law known or practiced by the courts of this country.</p> <p>Sm — new trial upon motion — discretion op tribunal. — If such a trial has . not been had, the remedy is by rehearing or new trial, or some equivalent proceeding in the tribunal when the first trial took place. The sound discretion of that tribunal must be invoked ; and from its refusal to interfere there is no appeal.</p> <p>Sm — power op commissioner. — The Commissioner of Patents, up to the moment of issuing the patent, has the discretion to rehear a case before decided by him, and ought to do so until his mind is convinced that the patent is to issue to the true inventor.</p> <p>Sm — Sm.—Iiis discretion ought to he governed by the rules of law; and I know no better guide for him than the rules and principles applicable in courts of justice in cases of rehearings and new trials.</p> <p>The present case distinguished from Matthews v. Wade (ante p. 143).</p>

<p>Interference — patentee—how restrioted in his proofs. — In an interference proceeding a patentee is not restricted in his proofs to the exact point of invention covered by his patent that is claimed therein. If he prove to be the prior inventor of anything claimed by the applicant, the Commissioner may act upon such information, and his decision thereon may be reviewed by the judge upon appeal. The question is not the same as in a suit for the infringement of the patent.</p> <p>Matter shown in prior patent- — effect of.- — A subsequent inventor may have a patent for matters included in a prior patent, but not particularly specified and claimed therein, if he be an independent inventor, and the invention was not perfected, but was abandoned by the patentee.</p> <p>Date of invention — drawinq.—An invention may date from the time a drawing was made disclosing the same.</p> <p>Interference — question stated. — In an interference the question is not whether one invention is better in some respects than the other, but whether there is a substantial interference in the principle of the two inventions.</p> <p>Sm — substantial identity — purpose.—Two inventions are the same in principle when they produce the same result by substantially the same mode of operation — as protecting the rear step of an omnibus by a shield moving with the door — notwithstanding the form of the devices and their mode of attachment may be different.</p> <p>Sm — testimony of experts. — The testimony of practical persons versed in the art to which the invention relates may be considered in judging of the substantial identity of the inventions.</p>

<p>Affidavit not properly filed. — An affidavit relating to the merits of a case not laid before the Commissioner cannot bo considered by the judge on appeal.</p> <p>Sm — collateral issue. — Where an affidavit was filed by counsel on a collateral matter, showing an informality in taking the testimony in the case, and where the facts concerning the alleged informality were stated by the magistrate in his return and noticed by the Commissioner: Held, That it should be considered.</p> <p>Testimony of wife inadmissible. — The wife of an applicant for a patent is an incompetent witness for him in an interference proceeding.</p> <p>Evidence — partial examination. — Where a witness had fixed the date of the invention by reference to a device of his own invention, it is competent for the other side, on cross-examination, to call out a full description of the device and when made, with a view of showing that the witness, was mistaken in his dates.</p> <p>.Sm — latitude on oross-examination. — Nor was it necessary for counsel to state that the purpose of the examination was to affect the credit of the witness, as that would defeat its very object. Much greater latitude is allowed on cross-examination than in direct.</p> <p>Sm — plea of disclosing private affairs.— Where a witness on direct examination has voluntarily referred to his own affairs in connection with the history of the invention, he cannot on cross-examination refuse to divulge the full particulars of the same on the ground that it will 'expose his private business.</p> <p>Regulations’ for taking testimony — 11 just and reasonable.” — By the twelfth section of the act of 1839 the Commissioner is authorized to establish such, regulations in respect to the taking of evidence as shall be just and reasonable; and to understand what the Legislature meant by just and reasonable in this connection it must be supposed that they had in mind the established principles and precedents in like cases.</p> <p>Sm — Sm—magistrate, of counsel.- — Neither upon principle nor authority is it just or reasonable that the evidence taken in a contested proceeding in the Patent Office should be taken before a magistrate who is of counsel for one of the parties; and depositions so taken held to bo legally incompetent and inadmissible evidence in the case.</p>

<p>Right of appeal — patentee.—In an interference proceeding a patentee has no right of appeal from an adverse decision of the Commissioner.</p> <p>Sm — Sm—effect of new application. — Where a patentee involved in interference filed a new application for merely substitute or equivalent means for carrying the invention disclosed in his patent into effect, and this application was also included in the interference : Held, That he had no independent status as an applicant, and that an appeal by him from the adverse decision of the Commissioner was virtually an appeal by a patentee. Equivalents — new patent therefor. — A patent covers all equivalent modes of carrying- the invention into effect, although they are not specifically described in the specification, and the patentee is not entitled to a new patent for those equivalent modes.</p> <p>Composition of matter — equivalent ingredients — new application. — Where the patent was for a composition of matter consisting of gutta-percha, oxide of iron, and oxide of antimony in described proportions, which was shown by the testimony to be the preferred form of the invention : Held, That the patentee could not prosecute a new application for a composition in which the oxides of iron and antimony were replaced by a variety of substances which operated in the same manner, but with less success, and were at best but equivalents of the ingredients named in the patent.</p> <p>Case of Pomeroy v. Connison {ante, p. 40) cited and approved.</p>

<p>Statement of the Case.</p> <p>The patent issued to John E. Burrows, No. 13,416, August 14th, 1855. (For diagram, see Patent Office Report, 1855, vol. 2, page 101.)</p>

<p>Interference — appeal by patentee dismissed. — An appeal in an interference by a patentee from a decision of the Commissioner, not referring or rejecting, but granting, the application, dismissed for want of jurisdiction or authority.</p> <p>Pomeroy v. Connison [ante, p. 40) cited and approved.</p>

<p>Jurisdiction of judoe — appeal by patentee. — The judge has no jurisdiction in case of an appeal taken by a patentee from a decision of the Commissioner, not refusing or rejecting, but granting, the application for letters-patent.</p>

Statement of the Case. Testimony wa's introduced in behalf of Hicks to show, by his own conversations and declarations at the time, that he made the invention in controversy in 1845. A witness (Mitchell) testified that Hicks explained the invention in controversy to him in December, 1845, so that he thoroughly understood the same, and could have constructed the machine from such explanations.

<p>Operativeness op machine — testimony relating thereto. — The testimony of witnesses respecting the operiitiveness of a machine which they have tested will be largely affected by the particularity, with which they detail the circumstances connected with their experiments and the manner in which they were conducted.</p> <p>Sm — machine produced in court. — When the machine itself is produced in court, and visibly operates in the manner described, that fact will outweigh the evidence of witnesses who testify, without specifying the circumstances, that they tested the machine and found that it would not work.</p>

<p>Interference — priority of invention — first original inventor. — It is not sufficient to show as against a contending applicant that the invention was original, and that the inventor had no notice's!: the rival invention. The law requires that the patentee should not only be an original but the first original inventor.</p> <p>Mechanical equivalent — rod and endless chain. — A rod is the known equivalent of an endless chain in machinery when it can be used for the same purpose and to accomplish the same effect, and they are not, therefore, when so used substantially different.</p> <p>Interference — matter claimed. — When two applications are properly in interference upon their claims as made it is unnecessary to consider whether there are differences between the two machines which might entitle one or the other party to a patent if the claims had been presented in a different shape.</p>

<p>Jurisdiction — power op commissioner to grant new trial. — When the decision of the Commissioner was reversed by the judge upon the ground . that the depositions of the prevailing party were improperly taken, it is competent for the Commissioner to grant a new trial to afford the parties the opportunity of having their testimony fully and impartially taken.</p> <p>Invention — principle—equivalents.—The first and original inventor is entitled to protection against all other means of carrying the principle into effect.</p> <p>Identity of inventions — same in principle and result. — When two machines are substantially the same, and operate in the same manner to produce the same result, they must be in principle the same ; and it is to be understood that when the results are referred to as a test of the identity of the machines, the results must be the same in kind though they may differ in degree.</p>

<p>Jurisdiction of tiie commissioner. — The Commissioner of Patents is now vested with the whole and only original initiatory jurisdiction that exists up to the granting and delivering of the patent.</p> <p>Board of examiners — its jurisdiction distributed — power of commissioner. — When the board of examiners created by the act of 1836 was abolished by the act of 1839 its original jurisdiction was vested in the Commissioner and its appellate jurisdiction in the chief justice of the District of Columbia.</p> <p>Power of commissioner plenary within its limits. — It is true that the jurisdiction of the Commissioner of Patents is a limited one, but it is equally true that it is to be understood not only from what is expressly stated, but from what ought necessarily to be inferred, and is as absolute within its proper legal limits as a tribunal of general jurisdiction would be.</p> <p>Public use and abandonment — commissioner may investigate — due proceedings. — The Commissioner of Patents has jurisdiction to try and determine the questions of public use and abandonment arising in connection with an application by due proceedings suitable to the nature of the inquiry.</p> <p>Sm — Sm—sections 6 and 1, act of 1836, construed. — The negative prerequisites to a patent — that the invention has not been in public use or on sale, &c. — as mentioned, in the sixth section of the act of 1836, are equally binding upon the Commissioner with the others therein named, and are expressly submitted to his examination by the opening provisions of section J of ‘ the same act.</p> <p>Sm — Sm.—The object of the last part of the seventh section appears to be (on refusal to grant the patent) to direct a proceeding whereby the applicant will be allowed, under the particular circumstances stated, to withdraw or modify his specification; and if he persists in the latter, to give him the benefit of an appeal to a board of examiners. This construction is necessary, in order to make one part of the section consistent with the other.</p> <p>, Sm — Sm—-may compel attendance of witnesses. — It would seem that the Commissioner has power to compel the attendance of witnesses for the purpose of investigating the questions of public use and abandonment under the clause of section 12, act of 1839, providing that the Commissioner shall have power to make such regulations in respect of the taking of evidence to be used in contested cases before him as may be just and reasonable.</p> <p>Public use — secret use. — A public use, as meant by the statute, is a use in public. The invention need not be generally adopted by the public. Public is not equivalent to general use, but is distinguished from secret use — used in a public manner.</p> <p>Consent and allowance — presumed from conduct — When the machine of a rival inventor has been publicly used for years, with the knowledge of the applicant, or of which he might have had knowledge, he will he presumed to have acquiesced in and consented to such public use of the invention.</p> <p>Sm — Sm—sale—abandonment—repurchase.—An unconditional sale by the inventor himself of his invention, together with a machine embodying the invention, more than ten years before filing the application, and the public exhibition of the machine by the purchaser, is conclusive proof that the invention was in public use, with the consent and allowance of the inventor; and he cannot then resume his right to a patent by the repurchase of such invention and machine.</p>

<p>Jurisdiction of judqe — appeal by patentee. — The judge lias no jurisdiction to hoar and determine any appeal on behalf of a patentee from a decision of the Commissioner in.favor of an interfering applicant.</p>

Statement of the Case. The rules of the Office referred to in the decision were as follows (Rules of 1855): “what will prevent the grant of a patent. “ 5.

Statement of the Case. Carter and Rees’ application for reissue. The original patent was granted August 26th, 1851, No. 8322. The reissue application became subsequently reissue patent No. 313, June 19th, 1855- Haigh, Hartupee, and Morrow, assignees of John Kenyon, application for reissue. Original patent was granted to William Kenyon, assignor to Joseph P. Haigh, Andrew Hartupee, and Joseph Morrow, No. 8427, October 14th, 1851. Henry Carter, assignee of Isaac H. Steer.

<p>Sufficiency of invention — accident—utility of change. — Where tlie utility of the change and the consequences resulting therefrom (in case of a mar chine) are such as to show that the inventive faculty has been exercised, though in point of fact the change was the result of accident, the requisite test of a sufficient amount of invention may exist.</p> <p>Sm — colorable alterations — double use. — Where the change consists merely in the employment of an obvious substitute, the discovery and application of which could not have involved the exercise of the inventive faculty in any considerable degree, the change will then be treated as merely an unsubstantial colorable variation, or a double use.</p> <p>Sm — -Sm—incidental changes. — Incidental changes in the arrangement of the parts of a structure, arising out of an obvious application of the same to a new use, and effected by the means of well-known devices, are not patentable.</p>

<p>Interference — patentability—jurisdiction.—Construing tlie sixth, seventh, and eighth sections of the act of 1836 together, it is clear that the interference referred to in the eighth section is an interference between patent-able inventions. ' That is a preliminary question necessarily involved in the Commissioner’s decision upon priority of invention, and may be considered by the judge upon appeal.</p> <p>Process — patented machinery. — It seems that the use of a new process, involving patented machinery, must be by the license or permission of the patentee or his assigns.</p> <p>Sm — test of novelty — improved result. — In support of a claim for a new method' or process, it must appear that the result produced is an improvement in the trade — using those words in a commercial sense, as meaning the manufacture of the article as good in quality and at a cheaper rate, or better iu quality at the same rate, or with both of these consequences partially combined.</p> <p>Sm — Sm.—In this class of cases the result is considered all-important. There must, however, be thereby evolved a principle such as will regularly, and not merely occasionally, in the use thereof, produce a like effect.</p> <p>Evidence — caveat—-effect of. — A caveat is admissible in evidence as part of . the res gestee- in proof of the invention so far as it contains a description of the invention and the machinery which was then constructed.</p> <p>Unsuccessful experiments — process.—Where the proofs offered by an inventor in support of his claim to have invented and discovered a new process— as of manufacturing white oxide of zinc — indicate that he did not in his experiments observe the proper chemical conditions — as the proper admixture of the ore and fuel, the depth of the charge, the regulation of the blast, &c. — and that as a matter of fact he failed to obtain successful results: Held, That his efforts amounted to no more than an unsuccessful experiment, and did not entitle him to a patent as against an independent inventor.</p> <p>Copies op memorandums and letters — effect of. — Records of memorandums and copies of letters cannot be considered as evidence per se. The originals might have been used to refresh the memory of the witness; but where it does not appear that this has been done, the copies cannot be used as confirmatory of the testimony of the witness.</p> <p>Sm — incomplete records. — Where the party presents copies of his memoranda, which are incomplete in important respects, it affords grounds for an unfavorable inference.</p>

Statement of the-Case. Reissue application by Rugg filed February 22d, 1855 ; original patent No. 9,005, June 8th, 1852. Reissue application by Haines; original patent No. 6,254, March 27th, 1849. The application subsequently issued as reissue patent No. 331, November 6th, 1855.

Statement of the Case. The invention in controversy related to illuminating vault covers, in which panels of glass are set in a metallic framing; and it consisted in so securing the panes or panels of glass as to bring their upper faces flush.with or a little above the upper faces of the bars of the metallic frame, and forming grooves or gutters in these bars around the glass, so that the water and dirt deposited on the glass might easily flow off.

Statement of the Case. The patent issued to George Wellman, No. 14,481, March 18th, 1856. (For diagram, see Patent Office Reports, 1856, vol. 3, p. 125.) The rules of practice' referred to in the decision were as follows : ‘ ‘ 43. If either party wishes a postponement of either the day for closing the testimony or the day of hearing, he must, before the day he thus seeks to postpone is past, show by affidavit a sufficient reason for such postponement.” ‘ ‘ 97.

<p>Statement of the Case.</p> <p>The patent issued to James T. King, No. 14,818, May 6th, 1856.</p>

Statement of the Case. The decision will be readily understood from the subjoined cut, showing one form of the applicant’s apparatus, in which E represents the boiler of the steam-engine, G a chamber in communication therewith, and P the coiled indicator pipe within the chamber. The devices for controlling the feed by means of the expansion and contraction of the liquid contained in this pipe are not necessary to' an understanding of the decision, and are not shown.

Statement of the case. The applicant’s invention will be readily understood from the subjoined cut taken from the patent subsequently issued to him in accordance with this decision, No. 15; 292, July 8th, 1856; a represents the priming-tube for conducting the flash of the cap to the forward part of :c the charge c, and so firing the same at that point and just behind the ball B. In the Prussian needle-gun, cited as reference, of which an illustration is taken from patent to…

<p>Answer to reasons of appeal — ex-parte and contested oases. — Under the eleventh section of the act of 1839, the Commissioner is bound to furnish to the court upon appeal his ans'wer to the reasons of appeal in ex-parte as well as in contested cases.</p> <p>Specification — drawings.—The patent law requires every specification of a claim for machinery to be accompanied by drawings signed by the inventor and attested by two witnesses.</p> <p>Process — novelty of devices immaterial. — Upon a claim for a process, it is unnecessary to inquire as to the novelty or utility of the arrangement of machinery described in the specification; for however novel or useful the arrangement or combination may be, if it be not the ground of claim, and relied on as such, no patent will be issued for it upon such a claim. Principle — practical application thereof — subsequent inventions of machinery. — A well-known principle or truth of natural science, as well as a newly-discovered one, is patentable to the one who first applies it to the useful arts; but having been once made known and applied, any subsequent application of it, even though more perfect, must, to insure a patent, rest upon the new machinery or combination of machinery, and not upon the principle the novelty of which has been exhausted.</p> <p>Manufacture of cotton — ginning, carding, and spinning continuously.— A claim for a new principle or process of manufacturing cotton, by carding and spinning the cotton in its fleecy state as it comes from the gin in a continuous operation, and before the fibres are disturbed by baling, and the other treatment before used in the process of manufacture to restore it to its original state: Held, To be anticipated as a process by Bryant’s improvement on the Columbian spinner.</p>

<p>Admissions of the party. — The admissions of a party to an interference, made before the controversy arose, to the effect that his opponent was the inventor, taken as conclusive evidence against his right to the patent.</p>

<p>Evidence — party as witness — effect of assignment. — A party named on the record cannot be released by an assignment of his invention so as to constitute him a competent witness.</p> <p>Re-examination as to new matter. — After a witness has been examined in chief and cross-examined, he cannot be recalled and re-examined as to new matter. The re-examination must be confined to a reaffirmance of the facts already stated and in explanation of the facts stated upon cross-examination. A second deposition, taken in violation of this rule, suppressed.</p> <p>Disclaimer in specification — effect of.- — -The general sense of a disclaimer embodied in the specification must be restrained to the purpose for which it was used in connection with that specification, and will not estop the inventor from subsequently maintaining a claim for the invention so disclaimed in another proceeding.</p> <p>Presumption from patent — decisions in infringement suits. — The presumption of invention arising out of the grant of the letters-patent, and against which the defendant in an infringement suit must contend, does not exist as between contending applicants for patents; and the application of the decisions of the courts to interference cases is modified by that circumstance.</p> <p>Reduction to practice. — For the purpose of obtaining a pafent, it is not necessary to show that the invention has been reduced to practice if it appear that the invention was devised and explained to others, and was not subsequently abandoned.</p> <p>Sm — bearing of decisions in infringement suits. — The dicta of the judges in infringement suits, to the effect that the person who reduces the invention to practice, and he only, is entitled to a patent, are not applicable to all cases of interference, but they may well apply to those cases where, from a long and unreasonable delay and unsuccessful experiments or an acquiescence in the inventions becoming public,, evidence is furnished of an abandonment by the person claiming to be the first and original inventor, so that his prior right is forfeited and lost.</p> <p>Prior inventor — first to conceive and disclose to others. —An invention being an intellectual process or conception, for the purpose of showing who, in point of time, is the prior inventor, he who first makes it known sufficiently by describing it in words or drawings will be considered to be the first discoverer, and vested with an inchoate right to its exclusive use, which he may embody, perfect, and make absolute by proceeding to mature it in the manner which the law requires.</p> <p>Laches — poverty.—Poverty of the inventor and inability to engage in the manufacture of the invention considered as excuses for delay.</p>

<p>Affidavits not properly filed. — -Affidavits not taken by the authority of the Commissioner, nor acted upon by him in forming his decision, cannot be considered by the court upon appeal.</p> <p>Invention — change of form — effect of change unknown. — It being impossible to determine upon principle what would be the final result of substituting polygonal glasses of an inverted pyramidal form for the lens-shaped glasses previously used in illuminated vault covers, and the applicant having offered no evidence of the actual results in practice: Held, That the change appeared to be one of form merely, and not patentable.</p> <p>Sm — change and its consequences. — Whenever the change and its consequences, taken together and viewed as a sum, are considerable, there must be a sufficiency of invention to support a patent. (Webster on Subject-Matter, p. 29.)</p> <p>Sit. — effect of change- — -burden of proof. — When it is impossible to predict what the result of the change proposed by the applicant will be, the burden of proof rests on him to show what the actual results are.</p>

Statement of the Case. The question of the patentability of Chandler’s device was reopened by the Commissioner in his reply to the reasons of appeal.

Statement of the case. The alleged invention of the applicant was an improved brick machine for making tubular or perforated brick. The claim of invention will be readily understood by reference to the original Wagner brick machine, patented April 8th, 1851, No. 8021, cited as a reference by the Commissioner.

<p>Question on appeal. — Features of novelty and utility not embraced in the claims, and brought out for the first time upon the argument before the judge, can have little influence in the determination of the questions before him.</p> <p>Invention — identity—immaterial changes. — When two devices perform the .same function in substantially the same way, mere details of mechanical construction — as size, position, and mode of attachment — regarded as immaterial to the question of identity.</p>

,. Statement of the Case. At the hearing before the judge, Examiner Gate was sworn and was asked a single question, as follows : Question. ‘ ‘ Please examine the proportions of the ingredients as set forth in the specifications, and state whether or not the product thereof is cheaper than honey.

Statement of the Case. The point decided in this case will be readily understood by inspection of the subjoined cuts representing the devices in question. Iii the applicant’s burner, which is designed to retard the flow of gas to the jet, the gas passes through two hollow cylinders or pillars d and g, situated one over the other within the burner.

<p>Invention — change oe material — metallic cartridge. — The mere selection of a superior material, which is so by reason of its well-known qualities — as substituting steel or case-hardened iron for sheet metal in constructing the firing end of a cartridge — is not invention.</p> <p>Sm — Sm—better article. — Within the range of materials known to possess the proper qualities for the purpose, it is not invention to select that one which exhibits these qualities in a more marked degree, and thereby make a better article than had before been made.</p>

Statement of ti-ie Case. The invention claimed by the appellant in this case is an improved machine for making metallic nuts, the essential features of which consist of a pair of compressing jaws arranged in line with and immediately in front of the mouth of the die box.

<p>Statement of the Case.</p> <p>The patent issued to Hebbard, in accordance with this decision, November 3d, 1857, No. 18,546.</p>

Statement of the Case. The alleged invention in this case consisted in providing a portable steam-engine with a hollow bed-plate, substantially in the form of an eight-inch pipe about eight feet in length, which was attached by feet or saddles to the side of the boiler.

<p>Public use or sale — Jurisdiction oe the Commissioner. — Under the seventh section of the act of 1836, directing the Commissioner to cause an examination to be made of the alleged new invention, and to issue a patent if it shall not appear, inter alia, that the invention had been in public use or on sale with the applicant’s consent or allowance prior to the application, the Commissioner has authority to investigate and determine the question of public use arising in connection with an application for a patent.</p> <p>Withdrawal of application — effect of.— The withdrawal of an application and the return of the fee under the seventh section of the act of . 1839 is a final abandonment of the application, and effects an entire extinction of all protection, saving, and privilege thereunder. Such an application cannot be revived by filing a new application for the same invention. Such new application will not relate back to, or be considered as a revival of, the withdrawn application for the purpose of avoiding the objection of intervening public use.</p> <p>Public use or sale — testimony in interference. — When it appeared from the testimony taken in an interference proceeding that the invention claimed by the applicant had been in public use and on sale for more than two years prior to filing his application: Held, That the Commissioner ■was authorized to reject his application for that reason.</p> <p>Kefusal of application — delivery of the patent. — The jurisdiction of the Commissioner to refuse a patent continues after interference is declared and until the patent is delivered.</p>

<p>Patentability — 11 sufficiently useful and important.” — Under the seventh section of the act of 1836, one of the conditions necessary to the granting of the patent is that upon the examination thereby directed, “ the Commissioner shall deem it [the invention] to be sufficiently useful and important.”</p> <p>Sm — lightning! rods. — When an alleged invention —which in this case consisted in surrounding the part of a lightning-rod embedded in the earth with a galvanic battery to facilitate the discharge of the electricity — . appears to be on principle wholly incapable of effecting the desired result: Held, That the application should be rejected as not sufficiently useful and important.</p>

<p>Novelty — affidavits as to. — The alleged invention examined in connection with affidavits offered to show that the consequences of the proposed change are of great practical importance and found to be devoid of patentable novelty.</p> <p>Decision oe former commissioner. — The practice of reviving cases decided by a former Commissioner upon frivolous grounds commented upon and disapproved.</p>

Statement of the Case. A patent was granted to the appellant on January i6th, 1845, for a term of fourteen years, antedated to July 16th, 1844. This antedate was made in accordance, as was supposed, with the provisions of the act of 1836, section 8, upon the written request of the patentee to that effect. The patent was then- granted, to expire July 16th, 1858.

<p>Estoppel — acquiescence in another’s right. — Where it appears that before the interference arose one of the parties was aware that the other party claimed the invention as his own, and had obtained a patent for the same, and he further acted as the patentee’s agent in introducing and selling the patented machines, distributing circulars, recommending the machines, &c., without asserting any claim to the invention, but constantly repeating upon inquiry that he was not interested: He Id, That he was estopped from subsequently asserting a claim to the invention.</p> <p>Sm — Ssr—ground of estoppel. — In a case where admissions are made to induce others to act upon them, such admissions do not operate merely as presumptive evidence of the actual truth of the facts, which must give way to positive proof of the contrary, but precludes and, as it were, estops the party on grounds of policy.</p> <p>Abandonment — section Y, act op 1839. — It seems that such conduct and the acquiescence in the sale of the machines is a bar also upon the principles of patent law upon the ground of abandonment. The case does not fall within the exception of section Y of the act of 1839, since the sales were not made by the applicant nor by those claiming under him.</p>

Statement of the Case. Subsequently to the final determination of this interference, the applicant and appellant, Ellithorp, filed a bill in equity in the southern district of New York under the sixteenth section of the act of 1836 against the owners of the Robertson patent, asking that the Robertson patent be declared void, and that a patent issue to the complainant upon his application then on file in the Patent Office.

Statement of the Case. The patent issued to Charles H. Davidson November 9th, 1858, No. 22,018, upon the following claim: I claim constructing the article known and worn as a breast shell, and made of any size, form, or material suitable for the performance of the well-known functions or uses proper of such a device, with a transfer pipe, branch, or tube forming an integral part of the shell when said tube is arranged as described, and serves for the ready and advantageous…

Statement of the Case. The patent issued to Frederick O. Degener January nth, 1859, No. 22,611. The part of the Commissioner’s report relating to .the question of jurisdiction is given in full; Commissioner’s Report.

<p>Inventor not awake of the value of his intention. — An inventor may not be aware of tbe full value of bis invention, but under tbe patent laws tbe fact of invention, and not a knowledge of tbe degree of its utility, is tbe proper subject of inquiry. If an inventor omits to test the value of his invention, and fails to bring it into use, and remains ignorant of tbe extent of its value, he is yet entitled to a patent as against a subsequent discoverer.</p> <p>Prior invention — perfected invention, what — how manifested. — To constitute a perfected invention which will entitle a party to a patent, it is not necessary that be should have actually constructed tbe machine which is the subject of his invention. If, having conceived a valuable idea, he has manifested it before the world, in any form which evidences the com-1 pleteness of the idea, and which is sufficient, when communicated to others, to enable those skilled in the particular art to reproduce his invention, he has done enough to entitle himself to a patent, and this whether such evidence consist of written description, drawings, models, or a complete machine.</p> <p>Sm — STBAM-PEESSURE GAUGES — PART OP MACHINE ONiY CONSTRUCTED. — Where the invention consisted in merely substituting a volute spring of a described character for the springs before used in steam-pressure gauges, and the inventor had actually constructed such a spring with the surrounding parts, and had declared that the apparatus was designed as an improvement in steam-pressure gauges: Held, That he had sufficiently manifested his invention to those skilled in the art, and that it was not necessary to the completeness of the invention that he should have actually put the device upon an engine.</p>

<p>Reasons of appeal — form of — vague and indefinite. — A reason of appeal “ that the decision rejecting the application was against the evidence and the weight of evidence ” is entirely too vague and indefinite to be considered within the provisions of the eleventh section of the act of 1839 as a substantive reason of appeal, “ specifically set forth in writing.”</p> <p>Sm — Sm.—No assignment of error can be regarded as sufficiently specific which does not point out the precise matter of alleged error with reasonable certainty.</p> <p>Limit of appeal — may be enlarged. — When the appeal in other respects had pursued its regular course, but it appeared that the “reasons of appeal” were filed a few days after the expiration of the limit of appeal, it was assumed by the judge that the Commissioner, in the exercise of his discretion, had enlarged the limit of appeal.</p> <p>Public use or sale — corsets—testimony in interference. — When it appeared from the testimony submitted in an interference that the applicant in the case — the other party being a patentee — had permitted several persons to make, for their own personal use and wear, corsets embracing his invention, without restriction or reservation, for more than two years before his application was filed: Held, That his application was barred under the law by reason of public use, and that it was unnecessary under such circumstances to determine the question of priority of invention.</p>

Statement of the Case. The alleged invention of the appellant will be readily understood from the cut below, taken from the drawing of a patent afterwards granted to him for the same invention (No. 24,104, Máy 24th, 1859). The machine is designed to reduce the shelled corn to the form of hominy or hulled corn, by first removing the outer cuticle or hullj and. then breaking up-, the grain into particles of a predetermined size.

Statement of the Case. This was an interference between the application of D. D. Jones, assignee of Edmund Morris, for a patent for an improved slate frame, and a patent granted to Edwin Young, April 8th, 1856, No. 14,624, upon the following claim : “As a new article of manufacture, a slate frame, made of a single piece of wood, ‘B,’ provided with a groove to receive the edge of the slate, and bent so as to fit it with the ends fastened together. ” Subsequent to the decision…

Statement of the Case. The patent issued to Chambers, July 12th, 1859, No. 24,720, with the following claim: ‘ ‘ Combining with and securing to a corset band extending in the rear, or in the rear and front downwards from the waist, to clasp the body around the hips of the wearer, the frame-work of a skirt or bustle, when said frame-work is composed of hoops disconnected and fastened in front, or thereabouts, substantially as described and for the purposes set forth.

filed the following brief: The grounds upon which the decision of the Acting Commissioner is rested are— 1. That he has jurisdiction to inquire, not merely whether the thing was in public use or on sale with the consent and allowance of the applicant, but whether the applicant had abandoned his invention to the public. 2.

<p>Secret intention — susbequent inventor’s public use and sale. — Where an inventor keeps his invention secret for years, and suffers a subsequent and independent inventor to engage extensively in the manufacture and sale of the same invention without protest or notice of his prior claim, he thereby forfeits his right to a patent. Under such circumstances, his delay will not be excused by the fact that his application was filed before the patent issued to the rival inventor.</p> <p>Acquiescence in public use presumed from circumstances. — A knowledge of, and acquiescence in, the public use and sale of the invention by another may be presumed from the circumstances of the case, as where the application of the subsequent inventor for a patent and his commercial use of that invention were matters of notoriety in the locality where the first inventor resided.</p> <p>Sm. — Whatever maybe the intention of the inventor, if he suffers his invention to go into public use through any means whatever, without an immediate assertion of his right, he is not entitled to a patent; nor will a patent obtained under such circumstances protect his right. (Shaw v. Oooper, 1 Peters, 29.)</p> <p>Case stated.t — S. perfected his invention, in 1854, and kept it secret until August, 1858, when he filed his application, and in the meantime, in June, 1858, L. independently made the invention, introduced it into public use with the knowledge of S., and filed an application for a patent March, 1858: Held, That S. was debarred from receiving a patent.</p>

Statement of the Case. The patent issued to Stearns July 5th, 1859, No. 25,534, with the following claim: ‘1 The twisting rollers, constructed as described, in combination with the corrugated roller, for producing the corrugated twisted lightning-rod.”

<p>Secret invention — petition and sale. — The statutory bar in section 1 of the act of 1839 to the inventor who sells his invention more than two years before his application, would seem by analogy properly applicable to the inventor who secretes his invention more than two years, and thereby injures the public.</p> <p>Sai — delay in applying eor A patent. — An inventor who seeks the monopoly afforded by a patent must present his perfected invention to the Patent • Office at once. He cannot privately use the invention for his own gain during several years, and then claim and expect protection for fourteen years longer.</p> <p>Sm — -Sm.-—The right of the first and original discoverer to a patent cannot be defeated by a subsequent patentee unless the latter shows that the former has been guilty of culpable neglect and laches.</p> <p>Case stated. — B. invented and perfected and privately used the invention in 1853. In 1858 his neighbor S. independently invented and patented the same thing, and put it into public use with the full knowledge of B., who applied for a patent one year later: Meld, That B. had shown gross and culpable negligence, and had forfeited his right to a patent.</p>

The reasons of appeal were as follows : First. For that the Commissioner decided that “the testimony-on Gibbs’ part, and particularly his own,” showed that until July, 1857, the design, which is in contest, “was vague, but an idea, and unreduced to a tangible form;” whereas the testimony, together with the exhibit by which it is illustrated and sustained, fully and clearly give evidence that the design claimed by Gibbs had, long before the period at which the Office dates…