invention claimed in the third application has been dedicated to the public. The Examiner is instructed, however, that neither application should be allowed until amended so as to disclaim the invention shown but not claimed therein, with proper cross-reference to the application in which such claim is made.

EX PARTE DEMMING.

Decided March 12, 1884.

26 O. G., 1207.

No matter whether an inventor is a pioneer in his line or not, he cannot make a valid claim the scope of which is so extensive as to include means substantially dif ferent from those described, even though the same result may be produced by such different means.

An inventor may, however, employ language sufficiently comprehensive to include colorable variations of his invention, mechanical equivalents thereof, and (if the state of the art will justify it) modifications differing in form but embodying the same principles.

Claims which depend upon such words as "means" and "mechanism" to express their patentable difference over the prior state of the art are too broad. And it is not sufficient that the claims contain words of reference to the specification where the invention is described, for under the statute it is the office of the claims to set forth specifically and definitely the actual invention covered by the patent.

APPEAL from the Primary Examiner.

LOCKS.

APPLICATION of Bernard Demming filed June 22, 1883.

Messrs. Baldwin, Hopkins & Peyton for the applicant.

BUTTERWORTH, Commissioner:

Three claims are presented in this case, which are as follows:

1. The combination, substantially as set forth, of a lock, bolt, tumbler or tumblers, a dog or dogs for locking one or more of the tumblers in an abnormal position when it has been moved past the proper point to permit the movement of the bolt, and means for acting directly on the dog or dogs with the key to restore the lock to its normal position.

2. The combination, substantially as set forth, of the bolt, the pivoted tumbler or tumblers notched on their rear ends, and detents or dogs which engage with one or more of the tumblers when they are moved past the proper point to permit the passage of the bolt, and the extended ends of the dogs by which the dogs may be thrown out of engagement with the tumblers as described.

3. The combination, substantially as set forth, of a lock, bolt, tumbler or tumblers, a detent or detents for locking one or more of the tumblers in an abnormal position when it has been moved past the proper point to permit the movement of the bolt, and mechanism by which the detents may be acted directly upon and tripped by the proper key only.

Of these claims only the first and third are involved in this appeal. The first claim depends upon the words "and means for acting directly

on the dog or dogs with the key to restore the lock to its normal position" to express its patentable difference over the prior state of the

Were it not for such words said claim would be substantially answered by a British patent cited in reference. The words "mechanism by which the detents may be acted directly upon and tripped by the proper key only" are employed to distinguish between the combination covered by the third claim and said British patent.

An examination of the description and the drawings of the application shows a certain specific mechanism which acts directly in conjunction with the proper key (and can act with no other form of key) for tripping the dogs or detents and permitting the tumblers to return to their normal position. A portion of such mechanism is definitely expressed in the second claim by the words "extended ends of the dogs"; but the first and third claims, as we have seen, use such vague and in definite terms as "means" and "mechanism," with no limitation except the function or result intended to be performed or accomplished.

If construed literally, the portions of the first and third claims upon which they depend for novelty embrace all construction or arrangements whereby a certain desired result can be attained, and if allowed and upheld would involve a departure from the settled practice, which very properly restricts a claim to the particular device mentioned and described or its palpable equivalent.

The limit to the scope of a patent which may be obtained by an inventor is clearly prescribed by the Supreme Court in O'Reilly v. Morse (15 Howard, 62). They say:

Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter by the use of certain means is entitled to a patent for it. *** The patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more, and it makes no difference in this respect whether the effect is produced by chemical agency or combination, or by the application of discoveries or principles in natural philosophy kuown or unknown before his invention, or by machinery acting altogether apon mechanical principles. In either case he must describe the manner and process as above mentioned and the end it accomplishes; and any one may lawfully ac complish the same end without infringing the patent if he uses means substantially different from those described.

And in Tilghman v. Proctor (19 O. G., 859) the same court quote the language used in O'Reilly v. Morse above recited, and then say:

It seems to us that this clear and exact summary of the law affords the key to almost every case that can arise.

This latter case was decided so recently as in 1881, and therefore is the more valuable.

It follows from these decisions that, no matter whether an inventor is a pioneer in his line or not, he cannot make a valid claim the scope of which is so extensive as to include "means substantially different from those described," even though the same result may be produced by such "different" means. He is not entitled to cover every means

for effecting the exact purpose his invention is designed to accomplish. (See Burr v. Duryee, 1 Wall., 531; Case v. Brown, 2 Wall., 230; Marsh v. Dodge, Fisher, 502, and others.) By the foregoing, however, it is not meant that an inventor may not employ language sufficiently comprehensive to include colorable variations of his invention, mechanical equivalents thereof, and (if the state of the art will justify it) modifications differing in form, but embodying the same principles, for this he may properly do without coming in conflict with the rule announced by the courts.

In the first and third claims of the present application the terms employed to define the gist of the invention are too broad. They cover not only variations, equivalents, and modifications of the invention described, but also "means substantially different" therefrom, if such should in the future be invented. Indeed, the claims, having specified the desired result, indicate a purpose to monopolize everything that can accomplish such result. It may be urged because the specification clearly describes a particular mechanism for effecting the result, and the claims specify "means" and "mechanism," and contain words of reference to the specification, that the courts would construe them by the specification and sustain them. It is true the courts have been very liberal in this respect, and have in some instances upheld patents containng claims of a similar character, but even then they have commented unfavorably upon the form of the claims.

In the case of Case v. Brown, supra, the Supreme Court says:

We have had occasion to remark in a late case (Burr v. Duryee, 1 Wall., 535; see also McCormick v. Talcott, 20 How., 405) on this new art of expanding machines into patents for a mode of operation, a function, a principle, an effect, or result, so that By an equivocal use of the term " equivalent" a patentee of an improved machine may suppress all further improvemeuts. It is not necessary again to expose the fal lacy of the arguments by which these attempts are sought to be supported, though we cannot hinder their repetition.

In Merrill v. Yeomans (11 O. G., 972) the same.court says.

The developed and improved condition of the patent law and of the principles which govern the exclusive rights conferred by it leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it without being clearly told what it is that limits these rights. The genius of the inventor constantly making improvements in existing patents, a process which gives to the patent system its greatest value, should not be restrained by rague and indefinite descriptions of claims in existing patents from the salutary and necessary rights of improving on that which has already been invented:

Without citing other cases in which the court used similar language, I may add that it is clear the allowance of claims of the character under consideration finds no favor whatever with the Supreme Court, and is in terms condemned, which indicates the purpose of the court to require that the claims shall be so framed as to point out distinctly and unequivocally the actual invention, and not resort to the specification to limit or extend the scope of the claims. I am confirmed in this view by observing the course of the decisions of the Supreme Court in

the last few years in regard to reissues, and also by their ruling in the case of Lehigh Valley Railroad Company v. Mellon (20 O. G., 1881). At any rate, this should be the practice of the Patent Office. It is not sufficient under the statute to merely set forth an invention in the description, but it must be supplemented by a specific and well-defined claim to the part, improvement, or combination which the inventor regards as his property. The purpose of the description is to describe the manner of making, constructing, and using the invention, while the office of the claim is to define and accurately describe it.

The Examiner will be governed in this and similar cases by the suggestions contained herein.

EX PARTE DERBY.

Decided March 13, 1884.

26 O. G., 1208.

Abandonment of an invention is not to be presumed from the fact that it is shown and described, though not technically claimed, in a patent, if there is coupled with such description and disclaimer a notice and reservation of the right and declaration of the purpose to claim such invention in a subsequent application, which is in fact filed with reasonable diligence.

Ex parte Rohn (O. G., vol. 25, p. 113) overruled.

The notice and reservation mentioned above must be followed by diligence in filing an application for such invention. Each day's delay tends to prove abandonment, and is at the peril of the applicant. Both the law and public policy demand vigilance.

It is not intended to sanction the practice of incorporating in patents declarations of reservation of particular inventions not claimed therein. Such practice is of doubtful propriety, and ought only to be permitted in exceptional cases and on considerations not discussed in this decision.

Where an invention is described, but not claimed, in a patent, and no notice of an intention to claim it in a subsequent application is contained therein, if the inventor is justly entitled to claim such invention, and has inadvertently omitted to insert it in his patent, the appropriate remedy is a reissue, and not a subsequent application. Rule 91 authorizes this course, and it is sustained by the decisions of the Office and the courts in cases where application is made without unreasonable delay.

APPEAL from Primary Examiner.

ROCK-DRILLS.

APPLICATION of George McC. Derby, filed June 20, 1883.

Messrs. Po e, Edgecomb & Butler and Mr. F. Jannus for the applicant. BUTTERWORTH, Commissioner:

On May 29, 1883, there was granted to applicant Patent No. 278,517. The specification of said patent contains the following paragraph.

I do not herein broadly claim a tubular rock-drill attached to a tubular shank, in combination with mechanism for communicating a positive to and fro motion thereto, and for forcing a stream of air os water therethrough, as I contemplate embodying the same in an application to be hereafter filed by me.

Twenty-two days after the grant of the patent above mentioned the present application was filed. It contains two claims covering the invention shown and described in said patent, but not claimed therein. The first of these claims is in substance identical with the disclaimer, which is coupled with notice and reservation contained in said patent; but the second is for a different invention, and more nearly resembles the second claim of said patent, but is much broader. The Examiner, following the case of ex parte Rohn (O. G., vol. 22, p. 113), rejected both the claims, because their subject-matter "was shown in a patent previously granted to applicant." Undoubtedly applicant had shown the subject-matter of both these claims in the patent granted to him as aforesaid without making technical claim thereto; but there is indicated a purpose to do so in a subsequent application, which has now been filed and is before me, and the question presented is whether applicant is debarred from having his claim allowed by reason of the facts hereinbefore recited. In other words, what effect does the description and showing of the device, the disclaimer, reservation, and notice contained in the patent granted have upon his right to prosecute an ap plication containing claims to said device so as aforesaid in said patent mentioned, shown, described, and disclaimed in connection with reservation of right and notice of purpose to claim said invention in subsequent application?

Section 4886 Revised Statutes provides that

Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is found to have been abandoned, may, upon payment of the fees required by law and other due proceedings had, obtain a patent therefor.

The applicant has invented, so far as appears, a new and useful im provement in machines for drilling rocks. It is not shown that his invention was "known or used by others in this country," or "patented or described in any printed publication in this or any foreign country before his invention or discovery thereof;" nor is it shown that such invention was in "public use or on sale for more than two years prior to his application."

He has, therefore, satisfied the conditions prescribed by the statute, unless it is shown that said invention has been abandoned. Has that been shown; and if so, how?

It is a well-settled principle that abandonment is not to be presumed. It must be affirmatively established by satisfactory proof. An inventor, if he so elects, may, by express declaration, abandon or dedicate his invention to the public. But in the case at bar there is no evidence that the invention has been abandoned by the expressed intention of the inventor. On the contrary, the reverse appears in the very evidence relied upon to prove abandonment. Has the invention been abandoned by the acts of the inventor?