ARMOR-PLATED GUN-CARRIAGES. Application of Hermann Gruson and Max Schumann, filed April 19, 1883. Messrs. Knight Brothers for the applicants. BUTTERWORTH, Commissioner: The question raised on this appeal is as to the sufficiency of the oath accompanying the application. Applicants are residents of Germany, and took and subscribed the oath to their application before a judge of the royal Prussian court at Buckau. The Examiner rejected the application as not being in compliance with the requirements of the Revised Statutes, section 4892, which provides that the oath may be made before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any minister, charge d'affaires, consul, or commercial agent holding commission under the Government of the United States, or before any notary public of the foreign country in which the applicant may be. The section just quoted is so clear and distinct that there is no necessity for resorting to rules of construction. That it is perfectly competent for Congress to designate the officers in this country or elsewhere before whom the oath shall be taken cannot be doubted. It has pleased Congress in the present instance to do precisely that thing. If the applicant resides in the United States, the oath may be administered by any officer authorized to administer an oath, the evidence of his authority being attested by the seal of his office, or a certificate from some competent authority declaratory of the fact. The statute does not say that when the applicant is a resident of some other country he may make and subscribe the oath before any officer authorized to administer an oath, but states with particularity before what officer the oath shall be taken; and those mentioned are ministers, chargé d'affaires, consuls, and commercial agents holding commissions under the Government of the United States, or any notary public of the foreign country in which the applicant may be. It is urged that this is merely directory, and that the oath may be administered by any officer in the foreign country who has authority under the laws of such country to administer oaths. The statute does not admit of any such construction. It is further urged that "the German Government does not permit consuls or other American officers to administer oaths to German subjects." This may be true, but if so, it could not change or modify the construction of a statute of the United States which is clear and explicit in its terms, even though such strict construction might greatly embarrass German subjects in the matter of procuring patents in the United States. It is urged also that a notary in Germany is not authorized to administer an oath-that he acts merely as a conveyancer. That may be so, but whether it is or not the statute has designated notaries, American consuls, ministers, commercial agents, and chargé d'affaires as per sons who may administer oaths to applicants for patents in this country. It has mentioned no others, either specifically or by implication. Such designated officials in administering the oath act by virtue of the authority conferred by the statutes of the United States, and not by vir tue of any power or authority conferred by the foreign government. It might, therefore, well be doubted whether the German Government has by law forbidden citizens or residents of that Empire from taking the oath required before the officials authorized by the law of the United States to administer the same. It is also urged that the judge of the royal Prussian court performs, in part at least, many of the functions which appertain to a notary public in the United States. If counsel is correct in this, that fact could not change or modify my ruling in this case. If the German Government for any reason declines to permit the officers mentioned in the statute of the United States to administer oaths to applicants who are citizens or residents of Germany, and thereby makes it difficult for them to comply with the requirements of our laws regulating applications for patents, such fact would offer no valid reason for a departure from the plain requirements of an act of Congress prescribing the mode of procedure in the matter of framing applications for patents by citizens or residents of foreign countries. The provisions of our law are liberal. If, however, hardship results from au observance of them, as is claimed in this case, relief must be sought by a modification of the law, and not by disregarding it. I am of opinion, however, that it is very exceptional for a foreign applicant to hesitate in the matter of taking the required oath before some one of the officials desiguated. If, as suggested, the Government of Germany forbids it, the remedy might very properly be sought in an appeal to that Government to modify the law or regulation to the extent of doing away with such prohibition. The Examiner's action is approved and affirmed. EX PARTE BUELL. Decided January 11, 1884. 26 O. G., 437. 1. PRACTICE IN PATENT OFFICE-DUTY OF EXAMINER IN DIVISIONAL APPLICATIONS. When an application is filed as a division of a former application, the first duty of the Examiner is to determine whether the one is a continuation of the other application under the law. 2. PRACTICE-FAVORABLE JUDGMENT OF EXAMINER EXPRESSED BY FORWARDING CASE TO ISSUE DIVISION. It is not until the Examiner signs the file-wrapper and forwards the application to the Issue Division that he can be considered as having rendered a favorable judgment upon it. He may have formed an opinion in its favor, or expressed an oral or even a written suggestion in the same direction; but these do not constitute his formal favorable judgment. 3. PRACTICE-EXAMINER NOT BOUND BY CONCLUSIONS OF HIS PREDECESSOR. An Examiner is not obliged to adhere to a favorable conclusion which his predecessor formed or expressed in regard to the admission of certain matter into a particular application, unless such expression took the form of a favorable judgment. 4. PRACTICE-DIVISIONAL APPLICATION Cannot be Based on NEW MATTER. An application based upon matter unwarrantably introduced into a former application cannot be considered as a division of the prior application. APPEAL from the Primary Examiner. TRANSMITTING AND SIGNAL TELEGRAPHS. APPLICATION of Charles E. Buell, filed June 26, 1883. Messrs. Church & Church for the applicant. BUTTERWORTHI, Commissioner: In 1876 Buell filed an application for transmitting and signal telegraphs, in which he showed and described a certain system. In the same year the Examiner called upon him to amend the drawings so as to show "the system as applied to the uses to which it is particularly adapted." Thereafter Figure 5 was added to the drawings, which illustrated a clock-dial, and a simultaneous amendment was made to the specification, which gave a brief description of such figure. No claim was made to the invention shown in the added figure until 1882 or 1883, when not only claims were made thereto, but a separate application was filed, claiming to be a division of the 1876 application, and therefore to relate back to it, so as to get the benefit of the earlier date of filing. The 1883 application belongs to a different division of the Office from the 1876 application, and is within the jurisdiction of another Examiner. The first duty of the latter officer was to determine whether the 1883 application was a proper division of the old application, and was entitled to be regarded as a continuation thereof. In the performance of this duty he found that the new application was based upon matter introduced into the old application after the latter was filed, and held that this could not be done under the practice of the Office and decis ions of the courts, and consequently the new application must stand alone, and could derive no aid from the old application. To this holding the applicant takes exception, because he thinks the admission of the matter into the old application had been decided to be proper by another Examiner, and was therefore res adjudicata. Under the rules of the Office now and at the time of the filing of the 1876 application, an Examiner had jurisdiction of a case until it was passed and allowed. It is not until the examiner signs the file-wrapper and forwards the case to the Issue Division that he can be considered as having rendered a favorable judgment upon it. He may have formed an opinion in its favor, or expressed an oral or even a written suggestion in the same direction; but these do not constitute his formal favor able decision. (See ex parte Starr, C. D., 1879, page 91.) If the case shall at any time be transferred to another Examiner, the latter must be regarded as standing in the shoes of his predecessor in respect to that particular case, and entitled to pass upon and determine the ques tion absolutely. So it must be held that the present Examiner is not obliged to adhere to the favorable conclusion which the former Examiner formed or expressed in respect to the propriety of admitting Fig. 5 and the description thereof. In reality, the former Examiner's attention was not drawn to the precise point now under discussion, for the amendment was called for and admitted by way of illustration and explanation, and no claim was then founded thereon. Amendments explanatory in their nature are not viewed with the same strictness as those the purpose of which is to serve as a basis for a new claim. (See ex parte Snyder, 22 O. G., 1975, and ex parte Howe, 25 O. G., 1189.) I think the Examiner is correct in holding that Fig. 5 and the descriptive matter referring thereto is new matter, and should not have been introduced in the old application. This being so, then a patent granted claiming such matter and based upon said old application would be invalid, in view of the doctrine announced in Sayles v. Chicago & Northwestern Railroad Company (16 O. G., 349) and Eagleton Manufacturing Company v. The West Bradley & Carey Manufacturing Company (18 Blatch., 218). The Examiner is sustained. EX PARTE HENTZ. Decided January 23, 1884. JOINDER OF INVENTION-SEVERAL CLAIMS TO A "COMPOSITION" PERMISsible. If several claims to a "composition of matter," 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. APPEAL from the Primany Examiner. COMPOUND FOR REMOVING CORNS AND WARTS. APPLICATION of Albert Heutz filed September 14, 1881. Mr. A. M. Tanner for the applicant. BUTTERWORTH, Commissioner: The application presents three claims for a compound for removing corns and other callosities. The first claim enumerates two elements, the purpose of which is to effect a cure of the disease. The second claim enumerates the elements embraced in the first claim and a third element, the office of which is to alleviate the pain incident to the application of the curative agent, and the third claim includes the same elements as the second, but is somewhat more specific in its terms. The question to be determined is, whether these claims may all be included in one, or shall each form the subject-matter of a separate application. The statute provides that Any person who has invented or discovered any new and useful art, machine, mauufacture, or composition of matter, may obtain a patent the refor. * It will be observed that the statute does not in terms prescribe nor in any wise limit the number of claims that may be included in a single patent. But it has been urged that, as only the singular number is used, the statute by implication prohibits the inclusion of more than one invention in a patent. The courts hold that the matter is left largely to the discretion of the Commissioner. In view, therefore, of the ruling and practice of the Office, I will consider the proposition that a patent should include only a single invention. On that hypothesis a patent may not contain two or more "arts," two or more "machines," two or more "manufactures," or two or more "compositions of matter." But does it follow that an "art," or a "machine," or a "manufacture," or a "composition of matter" which requires more than one claim in order to effectually cover the whole invention, may not be included in one patent! In regard to an "article of manufacture," this precise question was under discussion in the cases of E. R. Sumner (C. D. 1169, p. 180) and Augustus Adams (ibid., 1873, p. 18), and in deciding the question in the former case the language of the Commissioner is: While in the present case the various improvements are not so related to each other that the functions of the one cannot be broguht into full play without the co-operation of the other, yet there is no such classification of inventions in the Office as woukl bring the several improvements under different subclasses. Inasmuch, therefore, as their union in a single application does not impose upon the Office any extra labor of examination, this course may properly be permitted, and the application now pending will be proceeded with. In one sense each claim in the Sumner case covered a distinct invention (and, indeed, every claim must do so in order to be patentable), for the function of each of the several combinations could be brought into full play without the co-operation of its fellows, but they united in contributing to a single result, and did not fall under different classes in the Office. The case of Adams is of the same tenor and effect, and since these decisions the practice of the Office has on this point been uniformly in accord with them. In regard to an "art," in the cases Smith (16 O. G., 630) and Me Dougall (18 O. G., 130) the following doctrine is announced: Although each of the several "acts" of the "series of acts" constituting a process may be capable of performing separately its own peculiar function, and may be used independently of the others, yet if they all contribute in producing the final result they may be joined in a single application, and a claim may be made to the entire process, and separate claims can also be made to the subprocesses which go to make |