With reference to a "machine," the propriety of presenting several claims covering a general combination and various subcombinations too well established and recognized to require the citation of authority in its support.

It is manifest from the above that a single invention, whether it be an "art," "manufacture," or a "machine," may be covered by divers claims, even though each claim embraces, in a sense, a distinct thing capable of performing separately its own peculiar function, and is susceptible of a practical use independently of the others, provided the several things covered by said claims all contribute to produce the ultimate result, and do not, as suggested above, fall under different classes in the Office. When several claims cover inventions having different purposes or effecting the same end by different means they can no longer be considered as embracing a single invention.

No good reason is seen why the doctrine as to joinder of invention which is announced as governing the other classes is not equally applicable to "compositions of matter." A party may make a "composition" containing a certain number of ingredients, all of which enter into and form part of the complete compound, and aid in making its operation perfect for the purpose intended, and yet a substance containing a less number of ingredients may constitute the essence of the invention and contribute most largely in producing the desired result. It is manifest that to fully protect the interests of the inventor several claims would be required, and it would be a hardship to compel him to file separate applications to cover each claim of what is in reality a single complete invention. The statute does not require it, the decisions of the courts do not require it, the practice of the Office in regard to the other classes of invention does not afford a precedent for, nor does the convenience of the Office require it, so long as the several distinct things are not differently classified. It is true that in several decisions of the Office (notably Loeser and Lippincott) it was held that a "composition of matter' needs but a single claim. But the course of reasoning in those cases does not justify the conclusions reached. If they are correct, it is difficult to see why the principle announced would not include and apply to other classes of inventions, such as machines. But the cases last cited have On the contrary, in the case

not been approved and followed in all cases. of Hugh Burgess (MS. vol. 21, p. 562), my predecessor, in a well-considered opinion, held that several claims on a compound might be included in the same application.

It is said that the introduction of each additional ingredient forms a new composition. This is in a sense true, but palpably no more so with reference to a composition of matter than a machine. The addition of a feed or guide to a sewing machine to that extent changes the character of the machine, but it is still a sewing machine. So with the addition of the anodyne in the composition of matter under consideration. It is still a medicine for the cure or removal of callosities, and, as in the case

of the sewing-machine, it is rendered more complete by the addition of the element mentioned; and as under the subclassification of the Bu. reau there exists no obligation to divide, the composition with all the claims presented must be covered in one and the same application and be included in one Letters Patent.

It has been urged that the applicant might go on adding ingredients until he included the whole range of drugs. In case of a machine, it may with equal force be urged that new devices might be added ad libitum, and so they might so long as the character of the machine remains unchanged, and so with the composition of matter under consideration. After the addition of each new ingredieht the Examiner will determine whether the compound is in character the same, to wit, a medicine for removing or curing callosities. It will not be assumed that ingredients will be added without reference to their use or utility as a part of the curative agency employed. Certainly, devices will not be added to machines, or ingredients to compounds, simply because such addition can do no harm. If the claims, though distinct, cover associations of elements which contribute to the production of a single beneficial result, and do not fall under different classes, they, properly speaking, cover but a single invention, and hence may be included in the same application.

Viewed in the light of these suggestions, the case at bar does not require division. The third clain covers the compound in its perfect form, the others embrace combinations tending toward the same end, and not falling under different classes. All three of the claims are necessary in order to fully protect the invention.

The decision of the Examiner is reversed.

EX PARTE BORDEN.

Decided January 17, 1884.

26 O. G., 439.

1. PRIOR PUBLICATION-A DRAWING OF A PATENT A PUBLICATION.

Even without any description, if a published drawing fully and clearly exhibits and discloses an invention sought to be patented, it is an adequate and complete reference of itself alone. It is to be considered as a publication.

2. ABANDONMENT BY PUBLICATION INURES TO THE BENEFIT OF THE PUBLIC. A novel thing, the invention of a patentee, fully shown and published in the drawing of his patent, even though not belonging exclusively to him as not being included in his claims, and even if estopped from being set up in a claim upon reissure, may not be donated to an individual. If the patentee has lost it-if it is abandoned-it has gone to the public, and is the property of the public.

3. APPEALS-Pertinency of a REFERENCE APPEALABLE TO EXAMINERS-IN-CHIEF. Whether or not a reference cited by the Examiner is entirely different from the invention claimed by an applicant is a question affecting the merits of the case, and as such is appealable in the first instance to the Examiners-in-Chief, and not to the Commissioner direct.

MECHANICAL MUSICAL INSTRUMENTS.

APPLICATION of George E. Borden filed April 21, 1882.

Mr. J. McC. Perkins, for the applicant.

BUTTERWORTH, Commissioner :

This case comes up on objection of the attorney to the citation by the Examiner of certain matter in reference-that is, as constituting a bar to the grant of a patent. In refusing the applicant's claim, the Examiner directed attention to a certain United States patent, citing one figure of the drawing thereof as exhibiting precisely the invention for which a patent is now sought. Attention was also directed to another United States patent, but the question is not connected with the latter, this patent having been put into the record merely to show how the devices to which the improvement of the applicant is to be attached act, the applicant not having shown the device with full relation of the parts with which it is to operate.

The objection appears to be in the nature of a demurrer, it being admitted, it seems, that the figure of the drawing cited does show the invention of the applicant, but contended that the citation is not legal or proper, upon the ground that inasmuch as the description of what is illustrated by this figure of the drawing was erased from the specification as originally written and filed, the printed specification of the patent not containing it, the matter cited must be treated as if exhibited in a rejected and abandoned application.

The objection is bad, and the reasoning, or rather the ground, is mani. festly fallacious. Because the Examiner alludes to language which was in the original specification, the attorney insists that the rejection is on the erased description. This is not so. The rejection is on the graphic representation of the invention as exhibited by the drawing, and if language which was originally in the specification describes the drawing as the Examiner sees it, it is only the more certain that his eye is not deceived. But even without any description, if a published drawing fully and clearly exhibits and discloses au invention sought to be patented, it is an adequate and complete reference of itself alone. It is to be considered a publication. A good, clear, and distinct drawing of an invention is a higher order of evidence of the existence of the invention than any mere description thereof in words. Language is elastic and may mislead. The most carefully-considered language, in the light of subsequent experience, is often found to be ambiguous. But the graphic representation or embodiment of a thing, whether as a drawing or picture, or in tangible form, is unmistakable. As to the attorney's reasoning, it is not perceived how the Examiner's citation can be likened to the citation of a rejected and abandoned application. It is true that in the Supreme Court case of Brown v. Guild (6 O. G., 392), as interpreted by the Commissioner's decision in Rouse v. Stoddard (7 O. G., 169),

which may be the cases to which the attorney refers, it is held that a mere application of one party, as a rejected and abandoned application for a patent, is not a bar to the grant of a patent to another, and some allusion is made in the case of Brown v. Guild to a certain rejected and withdrawn application being merely part of an abandoned experiment; but there is great difference between the abandonment of a mere appli cation (both as regards the inventor himself and as regards others) and the abandonment of something in a patent-between a mere abandoned experiment and the abandonment of an invention. An abandoned ap plication is hidden in the secret archives of the Patent Office, and another application for the same thing may at any time be made by the same inventor or by another inventor. Something abandoned in a patent is published, (a patent in all its parts being open to public inspection), and hence goes to the public. An experiment when abandoned may be picked up and carried to completion and to the reward of a patent by any individual. The public cannot be said to have acquired anything, for there was no certain achievement, no result, or production to take. An invention when published and abandoned is abandoned to the public, and becomes the property of the public, and no individual has the right to monopolize it.

The attorney argues that because in the patent the description of the figure of the drawing cited in reference is erased, and, under existing interpretations of the law in numerous decisions of the courts, the patentee would be estopped from claiming on reissue the matter erased, his client should be allowed his claim to the invention. It need not be considered whether the patentee would or would not be entitled to a reissue describing and claiming the matter shown. A novel thing, the invention of a patentee fully shown and published in the drawing of his patent, even though not belonging exclusively to him as not being included in his claims, and even if estopped from being set up in a claim upon reissue, may not be donated to an individual. If the patentee has lost it-if it is abandoned-it has gone to the public, and is the property of the public. It is not easy to understand how it can be seriously argued that although an invention is shown in a patent, because a description thereof has been canceled and the patentee is estopped from reissue, it should be presented to some one else.

I have refrained from considering the question whether or not the figure or the drawing cited (although, as said above, it seems to be admitted that it does) really does or does not fully show the invention of the applicant, or show it at all, since this is a question going to the merits of the case, and as such is properly appealable in the first instance to the Examiners-in-Chief, and not directly to the Commissioner. I only decide that whether there be or be not language in the specification descriptive of the figure; whether there has been such language and it has been canceled, or there has never been any language bear

ing upon the figure, if the figure of the drawing cited adequately discloses the applicant's invention, it is a good and sufficient reference in and of itself alone. Upon this point the decision of the Examiner is affirmed.

OPINION TOUCHING THE RIGHT OF EMPLOYÉS OF THE PATENT OFFICE TO FILE AN APPLICATION FOR A PATENT.

1. SECTION 480 R. S. CONSTRUED.

26 O. G., 637.

Under Section 480 R. S. officers and employés of the Patent Office are prohibited from acquiring, directly or indirectly, any interest whatever in a patent, and are also prohibited from filing an application for a patent.

2. SAME-APPLICATION EVIDENCE OF A PARTY'S TITLE.

An application is the evidence of an applicant's title to the exclusive right or privilege sought, and since he can acquire no interest in the thing itself, to say that he might nevertheless take steps to establish his title thereto would be to pronounce an absurdity.

3. SAME-APPLICATION AND FEE TO BE RETURNED.

Applications filed in contravention of the statuto as construed by this decision will be returned to the party filing the same, and the fee will also be returned.

DEPARTMENT OF THE INTERIOR,
UNITED STATES PATENT OFFICE,

Washington, February 5, 1884.

I am called upon to decide whether an officer or employé of this Bureau may file and prosecute an application for a patent. Section 480 of the Revised Statutes provides that

All officers and employés of the Paten' Office shall be incapable, during the period for which they hold their appointments, to acquire or take, directly or indirectly, except by inheritance or bequest, any right or interest in any patent issued by the Office.

That the section just quoted renders all officers and employés of the Bureau incapable of acquiring, directly or indirectly, any interest whatever in a patent is clear. I am equally clear that they are alike prohibited from filing or prosecuting an application for a patent. It would seem on its face absurd to hold that a party may file and prosecute a claim to obtain a right or privilege in which he is by express provision of statute made incapable of acquiring any interest whatever.

An application is the basis upon which the right to at patent rests. It is the evidence of applicant's title to the exclusive right or privilege sought. But since he can acquire no interest in the thing itself, to say that he might nevertheless take steps to establish his title thereto would be to pronounce an absurdity. The reason upon which the section rests is clear. The proceedings of the Bureau in the matter of considering the claims of applicants are secret, and for obvious reasons. It would be palpably unjust to allow those who, by virtue of their employment, learn the nature, character, and scope of an applicant's in