In the case of Shaw v. Cooper (7 Peters, 292) the Supreme Court say: No matter by what means an invention may be communicated to the public before a patent is obtained, any acquiescence in the public use by the inventor will be an abandonment of his right. If the right were asserted by him who fraudulently obtained it, perhaps no lapse of time could give it validity. But the public stand in an entirely different relation to the inventor. The invention passes into the possession of innocent persons who have no knowledge of the fraud, and, at a considerable expense, perhaps, they appropriate it to their own use. The inventor or his agent has full knowledge of these facts, but fails to assert his right. Shall he afterward be permitted to assert it with effect? Is not this such evidence of acquiescence in the public use on his part as justly forfeits his right?

If an individual witness a sale and transfer of real estate under certain circumstances, in which he has an equitable lien or interest, and does not make known this interest, he shall not afterward be permitted to assert it. On this principle it is that a discoverer abandons his right if before the attainment of his patent his discovery goes into public use. His right would be secured by giving public notice that he was the inventor of the thing used, and that he should apply for a patent.

And further on in the same decision the following language is em ployed:

Whatever may be the intention of the inventor, if he suffers his invention to go into public use through any means whatsoever, 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.

In this decision, rendered more than fifty years ago, in the infancy of the patent system of this country, we find a clear and accurate exposition of the principle underlying the doctrine of constructive abandonment.

In whatever manner the public gains a knowledge of the invention, the right to the use of this knowledge becomes absolute, unless the inventor immediately assert his right. The manner pointed out in the decision for asserting his right is "by giving public notice that he was the inventor of the thing used, and that he should apply for a patent." The facts before the court in Shaw v. Cooper were that the invention had been publicly used, and thereby the public had gained a knowledge of it; but the language of the court and the principle upon which the decision rests cover a case where information of the invention was communicated to the public through the medium of a patent.

In The Suffolk Company v. Hayden (3 Wall., 315) the point was raised that a description of au invention in a patent and omission to claim it therein operated as an abandonment or dedication of it to the public, and for that reasou a subsequent patent claiming the said invention was void. The court said:

But the answer to this ground of defense is that it appeared that Hayden, the patentee, had pending before the Commissioner of Patents an application for the same improvement at the time he described it in the specification of the 17th of March, which was doubtless the reason for not claiming it in this patent. The description in uo sense affected this application thus pending before the Commissioner, and while it remained before him repelled any inference of abandonment or dedication from the emission to again claim it.

Here the principle announced in Shaw v. Cooper, supra, is again recognized, and applied to the extent called for by the facts; for abandonment or dedication to the public was held not to result from a description of an invention in a patent, even though it was not claimed therein, in case another application claiming such invention was pending before the Commissioner at the time the patent was issued. In other words, the pending application negatived the idea of abandonment of the inventor's right to the invention which was described though not claimed in the patent.

In the case of O'Reilly v. Morse (15 How., 62) the court said:

It is said, however, that this alleged improvement is not new, and is embraced in his former specification, and that if some portion of it is new it is not so described as to distinguish the new from the old. * All that we think is useful or necessary

to say is that after a careful examination of the patents we think the objection on this ground is not tenable.

In this case, though the point now in controversy was raised, yet the decision seems to have turned on the correctness of the counsel's apprehension of the facts upon which the point was based, and as the court found an error in the statement of the facts, it was unnecessary to examine the legal proposition involved.

In the case of Campbell v. James (21 O. G., 337) the following language is used:

The same combination of post-marker and blotter was also exhibited in Norton's patent of August 9, 1859. As he did not then reserve the process of stamping letters with such an instrument, nor the combination of a post-marker and a blotter, and did not make any simultaneous application therefor, he could not afterward obtain a patent for such process and combination, but would be restricted to such particular combination or process as might be exhibited in a new device or apparatus.

The rule suggested by this decision is, that to secure protection for an invention exhibited, but not claimed in a patent, the inventor must at the time of the issuance of the patent signify in his disclaimer an intention to reserve it for a future application, or he must evidence such intention by filing an application claiming such device prior to the issuance of the patent in which it is shown. The decision of Campbell v. James is therefore perfectly consistent with the decisions of the Supreme Court before mentioned. Indeed, it referred to the several proceedings recounted in Shaw v. Cooper and Suffolk Company v. Hayden as disproving constructive abandonment, and determined the case before the court by reference thereto.

In Singer v. Braunsdorf (7 Blatchf., 521), Graham v. McCormick (21 O. G., 1533), McMillen v. Rees (17 O. G., 1357), Hatch v. Moffitt (15 Fed. Rep., 252), and other circuit court decisions, views are expressed which are even more liberal than those announced by the Supreme Court; but it is unnecessary to consider them in the present case.

It being determined that the inference of abandonment which might result from a description of an invention in a patent without a technical claim thereto would be repelled by an assertion of right by the inventor

to said invention, the question remains as to the extent of the effect of such assertion of right. The answer is that abandonment then becomes a question of fact to be determined by the circumstances of each particular case. A compliance with the requirements suggested in Shaw v. Cooper and other cases cited makes a prima facie case against the plea of abandonment, and this prima facie case can only be overcome by proof. Laches tend to establish abandonment, vigilance in the prosecution of the claim being required both by the letter and policy of the law.

It is clear that applicant cannot be permitted to rest in supine inaction upon the notice that he has an invention as yet formally unclaimed, but which he intends in the future to claim. Every day's delay is at his peril. A similar doctrine is announced by the courts in regard to the prosecution of applications already filed, and, indeed, the statute limits a time within which they must be prosecuted. The first claim in the application under consideration is in terms identical with the subject-matter mentioned and described in the disclaimer, notice, and reservation which appear in the patent granted to applicant. In pursuance of said notice and reservation applicant did, in twenty-two days after the issuance of said patent, file his application, in which he makes claim to the device which is a part of the subject-matter of this controversy. While in my judgment the better practice would have been to file an application before the issuance of the patent, nevertheless I cannot find that the right to file the application and prosecute the claim has been lost by laches, or that there is what I can regard as actual or constructive abandonment. There appears to be no statutory bar to the grant of a patent embracing the first claim. I am of the opinion that the grant can properly be predicated upon the application presented.

It is not intended by this decision 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 sustained in exceptional cases and on consideration not discussed herein.

I come now to consider whether the second claim in the present application can be sustained. It is substantially shown and described in the patent, but is not included in the reservation clause thereof. As presented, it operates to enlarge and broaden the second claim of said patent. The effect of permitting the issuance of a patent covering said claim as it appears in the application would be practically to extend the life of the original patent in derogation of the rights of the general public, and possibly embrace those who have acquired rights in the premises without notice.

As before stated, since no reservation clause or equivalent notice in regard to such broad claim is contained in the patent already granted, it may be doubted whether an independent valid patent can be grauted for such claim; but it is not necessary to decide this point. If the ap

plicant is justly entitled to such broad claim,'and has inadvertently omitted to insert it in his patent, the appropriate remedy is a reissue. Rule 91 presents this course, and it is authorized and sustained, not only by the decisions of this Office, but by the courts, provided application is made without unreasonable delay.

The decision of the Examiner is affirmed as to the second claim and overruled as to the first.

EX PARTE UPTON.

Decided March 21, 1884.

27 O. G., 99.

1. PARAGRAPH 1 OF RULE 93 and the BEGINNING OF RULE 94 CONSTRUED-CONFLICT IN CLAIMS Defined.

The spirit of the rule of interference is not that claims must conflict in terms in order to constitute an interference, but that the subject-matter claimed must conflict.

It is not essential that the claims should be so alike that the claim in any one case will apply just to the matter or device of the other or others.

If the claim of one party will include that of another, there is an interference in fact.

It should be settled in the Patent Office who is entitled to the broad claim, and this should appear as the result of an interference proceeding.

2. SUBSEQUENT PATENTS with Broader CLAIMS.

Neither the spirit of the law nor public policy sanctions the granting of patents with specific claims while applications with generic claims are still pending, the objection being that, whether the application with the generic claim belongs to the same party who has a specific claim under the genus, or is an application of a different party, a patent covering by a generic claim if a subsequent patent, improperly extends the monopoly.

APPEAL from the Primary Examiner.

LIGHTNING-CONDUCTORS.

APPLICATION filed June 25, 1883.

Messrs. Dyer & Seely for the applicant.

BUTTERWORTH, Commissioner:

The Examiner says:

This appeal is taken from the action of the Primary Examiner refusing a patent to the applicant, in view of Patent No. 282.449 to T. H. Dodge, July 31, 1883, and involves a question of practice as to the right of the Examiner to cite as a reference patent granted on an application pending at the same time with the application under consideration.

The facts are as follows:

The application at issue was filed June 25, 1883. That of the patentee, Dodge, was filed December 15, 1879, and a patent accordingly issued as above July 31, 1883. No question is here raised as to the pertinency of the reference from lack of identity of subject-matter. In fact, it is acknowledged to be generically the same in both. Dodge, the patentee, made one very limited claim to the construction shown and described. The applicant makes broad claims to the genus, and denies the right of the Examiner

to cite said patent, holding that under the rules either an interference should be declared or both patents allowed to issue, and cites Rule 74 as sustaining his views. No interference exists nor has at any time existed.

The Examiner is in error as to there being no interference. An interference does and did exist. The spirit of the interference rule is not that claims must conflict in terms in order to constitute an interference, but that the subject-matter claimed must conflict. It is not necessary that the claims should be so alike that the claim in either case will apply just to the matter or device of the other. If the claim of one party will include that of the other, there in an interference in fact. The Dodge case having got to issue, the Examiner was right in citing the patent to the applicant. It should be settled in the Patent Office who is entitled to the broad claim, and this should appear as the result of an interference proceeding.

Neither the spirit of the law nor public policy sanctions the granting of patents with specific claims while applications with generic claims which include the specific claim allowed, are still pending, the objection being that whether the application with the generic claim pending belongs to the same party who has a specific claim under the genus, or is an application of a different party, a patent covering by a generic claim, if a subsequent patent, improperly extends the monopoly.

The applicant in the present case will either stand rejected on the patent of Dodge or make the affidavit required by the Examiner and request an interference.

The Examiner will be guided in other cases by the construction of the rule herein announced.

EX PARTE KERR.

Decided February 26, 1884.

28 O. G., 95.

1. By the words "persons skilled in the art," as used in the statute, is not meant persons who excel their fellows in particular arts or sciences, but merely men who have ordinary or fair information in that particular line.

2. The capacity of the inventor or attorney to understand the invention described should not be the standard by which to measure the ability of others skilled in the art to comprehend the specification.

3. Where the gist of the invention lies in the construction and arrangement of certain parts, it is not permissible in the claim to mention the parts in a general manner and then add words of reference to the specification as a definition of such construction and arrangement.

4. From a decision of the Examiner as to the pertinency of a patent cited against a claim an appeal lies in the first instance to the Examiners-in-Chief, and not to the Commissioner.

APPEAL from the Primary Examiner.

APPLICATION of David B. Kerr filed May 28, 1883.

Mr. John Shinn for the appellant.