7. The term “unavoidable" as used in that statute means that the inventor was
prevented from prosecuting his case by circumstances over which he had no
control.
8. The proof requisite to satisfy the Commissioner that such a state of facts ex-
isted in any given case must be full, clear, and conclusive, and it is not so in
this case.
9. While the question as to whether the cancellation of all claims works an aban-
donment of the application is not free from doubt, in my judgment claims
are indispensable to the life of an application, and the cancellation of all of
them without substituting others signifies the intent of the inventor to aban-
don his application. Ex parte Lasscell, 66.
10. Whether he shall be required to put that abandonment in a set form of words
is a matter in the discretion of the Office, and as under Rule 165 the amend-
ment is defective in not expressly declaring the intent to abandon, the Ex-
aminer was right in refusing to enter it. Id.
ABANDONMENT OF MANUFACTURE. See Injunction.
ACCOUNT OF PROFITS. See Damages and Profits.
ACQUIESCENCE. See Delay, 1; Infringement, 3, 6, 19.
ACTION AT LAW. See Delay, 1; Infringement, 24; Jury Trials; Liability.
ACTION FOR DAMAGES. See Bill in Equity; Damages and Profits; Licenses; Notice
to the Public of Patented Articles; Practice in the Courts.
ADMINISTRATOR. See Assignments, 1; Parties to Suit; Title to Patent, 1, 2.
ADMISSIBILITY OF EVIDENCE. See Answer to Bill, 1; Bill in Equity; Damages
and Profits, 12; Evidence, 1, 2; Licenses, 7, 8; Practice in the Courts, 6.
ADVERSE RIGHTS. See Reissues, 39, 41.
AGENTS. See Liability; Service of Process.
AGGREGATION. See Anticipation, 2; Construction of Specifications and Patents, 7;
Non-Patentability, 2, 3; Particular Patents: 49, Nation and Little; Patentability, 4.
AGREEMENT. See Licenses, 3, 4, 7, 8.
AMBIGUITY. See Licenses, 4.
AMENDMENT TO BILL. See Practice in the Courts, 3, 7.
AMENDMENTS. See Abandonment, 10; Applications; Drawings; New Matter; Power
of Attorney to Amend; Reissues, 4.
ANALOGOUS DEVICES. See Anticipation, 1,3; Construction of Specifications and Pat-
ents, 9; Infringement, 8, 9, 10, 14, 16, 17, 18, 20, 21, 23, 32; Interfering Patents;
Machines; Particular l'atents: 3, Bing; 15, Burdett; 18, Bussey; 28, Green ;
66, Zwicki: Violation of Injunction.
ANNULMENT OF DECREE. See Practice in the Courts, 11; Reissues, 17.
ANNULMENT OF PATENT. See Invalid Patents, 1, 2.
ANSWER TO BILL. See Damages and Profits; Defense; Practice in the Courts, 2.
1. An answer in equity is required for discovery and evidence, as well as for
grounds of defense, and evidence cannot be given by attorney; therefore, an
answer so made is wholly irregular. * Wooster v. Muser et al., 296.
2. But as the orator did not move to have the answer taken off the file for the
irregularity, nor to have the bill taken pro confesso for want of an answer,
nor except to the answer for insufficiency, by replying to it he admitted it to
be sufficient, however imperfect it might be. Id.
ANTICIPATION. See Abandoned Experiments; Construction of Claims, 2; Particular
Patents: 15, Burdett; 19, Cherry; 25, Forncrook; 26, George; 28, Green; 36,
Jenkins; 48, Nation and Little; 54, Peters; 58, Robinson; 65, Weir; Priority of
Invention, 1,6; Public use; Subsequent Patents for Same Invention.
1. A device which could not be used as a substitute for the patentee's invention
without the exercise of invention is not an anticipation of it. *Crandal et
al. v. The Parker Carriage Goods Company, 303.
2. Where a claim does not cover a mere aggregation of separate elements, and
there is not shown a mere mechanical juxtaposition, but each one of the
elements of the claim contributes to the combined result which is due to the
joint and co-operating action of all of them, the claim is not anticipated by
showing that certain of its individual parts are old. *Sessions v. Romadka et
al., 340.
3. In considering anticipation size is not of the essence of the invention.
v. The Active Manufacturing Company, 378.
4. That which would infringe the patent if later anticipates if earlier. Id.
APPEAL FROM THE PRIMARY EXAMINER.
1. APPEALS-PERTINENCY OF A REFERENCE APPEALABLE TO EXAMINERS-IN-
CHIEF.-Whether or not a reference cited by the Examiner is entirely differ-
ent 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 Ex-
aminers-in-Chief, and not to the Commissioner direct. Ex parte Borden, 9.
2. The question whether an appeal from the decision of the Primary Examiner, re-
quiring a division of an application, should be heard by the Examiners-in-
Chief or by the Commissioner, is a matter of administrative discrimination,
and is not within the control or supervision of the court, but belongs to the
administrative part of the Government. *Gorton v. Butterworth, Commissioner
of Patents, 221.
3. 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. Ex parte Kerr, 27.
APPEALS TO THE SECRETARY OF THE INTERIOR.
1. When the Commissioner of Patents stands in this court upon the ground that
his decision in favor of an applicant's right to a patent is permanent, a legal
duty to proceed to the next step consequent upon such permanent decision
must arise, and a failure or refusal to so proceed presents the very evil which
the writ of mandamus is designed to cure. *United States ex. rel. R. Hoe &
Co. and George C. Gill v. Benjamin Butterworth, Commissioner of Patents, 194.
2. When it appears by the Commissioner's return that he refused to prepare a pat-
ent out of deference to the action of the Secretary of the Interior in enter-
taining an appeal from and reversing his decision, that act of deference does
not constitute an exercise by him of discretion as to his own executive func-
tions in such a sense as would cause the writ of mandamus to be an inter-
ference with executive discretion. Id.
3. In this proceeding for mandamus the inquiry is, whether the title of the peti-
tioner has been so adjudicated already that he is entitled to the fruit of that
adjudication by the performance of a merely ministerial duty. The remedy
provided by section 4915 Revised Statutes is not an adequate remedy in such
case. *Id.
4. The provisions of the statute giving the Secretary power of directing is general,
and the provisions relating to the duties and powers of the Commissioner
are specific. It is the latter which must control. When the sections of the
statutes are considered together, it must be held that the Commissioner must
perform his duties under the direction of the Secretary, except when he is
already directed by the superior directory power of the legislature. *Id.
5. Applying the above rule of construction to the Commissioner's decisions in cases
of interference, Held that they are not subject to the directory power of the
Secretary, either by contemporaneous dictation or by appeal and reversal
described as direction. Id.
APPEALS TO THE SECRETARY OF THE INTERIOR--Continued.
6. It appearing that what was intended to be a complete system of remedies by ap-
peal from the decisions of the Commissioner has been provided by the same
statute which provides for the directory power of the Secretary, Held that
in the absence of any express provision for appeal to the Secretary an infer-
ential right of appeal is excluded. *Id.
7. Upon the above considerations it is furthermore Held that the appellate proceed-
ings and reversal by the Secretary in the case at hand were unauthorized, and
therefore a nullity; and that consequently the Commissioner of Patents, hav.
ing finally adjudicated that the relators are entitled to a patent, improperly
refuses to issue the same, and Ordered that the writ of peremptory mandamus
shall issue. *Id.
8. In all matters in which the action of the Commissioner is judicial or quasi-ju-
dicial, the fact that no appeal is expressly given to the Secretary is conclusive
that none is to be implied, and this is equally true whether or not an appeal
is allowed to the courts. "Butterworth, Commissioner of Patents, v. The United
States ex rel. Hoe et al., 429.
9. The supervision conferred upon the Secretary by the statute does not author-
ize him to substitute his discretion and judgment for that of the Commissioner
when by law the latter is required to exercise his own, and when that judg-
ment, unless reversed in the special mode pointed out by judicial process, is
by law the condition on which the right of the claimant is declared to de-
pend. *Id.
10. When the Commissioner of Patents decided that the relators were entitled to a
pater t, he had fully exercised his judgment and discretion, and the minister-
ial duty that remained could not be avoided merely out of deference to the
claim of the Secretary to reverse and set aside the decision; therefore, a man-
damus was properly directed to the Commissioner to compel him to perform
his duty, to wit, to prepare the patent, to lay it before the Secretary for his
signature, and to himself countersign it. *ld.
11. In such a case the remedy by bill in equity, under section 4915, is not appropriate,
because it applies only when the Commissioner decides to reject an applica-
tion for a patent on the ground that the applicant is not on the merits enti-
tled to it. *Id.
APPEALS. See Jurisdiction; Rehearing, 1.
APPLICATIONS. See Abandonment; Division of Application, 1, 2, 4; Elimination of
Claims; Employé of the Patent Office, 1, 2, 3; Interference; New Matter; Priority
of Invention; Specifications.
When an application is once filed, be it a divisional or other original application,
it presents a certain state of facts, and when examined on that state of facts
the Patent Office has done all that is required, the applicant having received
all that a single fee will cover. He may not shift from one state of facts to
another and draw in extraneous matter, whether it be from an entirely in-
dependent source or from a divisional application. Ex parte Holt, 43.
APPLICATIONS CONCURRENTLY PENDING. See Division of Application, 5, 6.
APPLICATIONS FOR REISSUE. See Reissues, 22.
ASSETS. See Trade-Marks, 2.
ASSIGNMENTS. See Trade- Marks, 1, 2, 14.
1. An assignment of a patent by an administrator is valid under the act of July 8,
1870. The decision in the case of The Shaw Relief-Valve Company v. The City
of New Bedford approved on this point. *Bradley et al. v. Dull et al., 219.
2. Where a patentee, after selling all his rights under the patent, subsequently pur-
chases an older patent to defeat his assignee's rights, Held that such proceed-
ing is manifestly unjust and inequitable, even if the older patent clearly antici-
pates the patent for the device sold. Curran et al. v. Burdsall, 270.
3. Where a patentee has sold all his right, title, and interest in, to, and under his
patents, and subsequently purchases an older patent, Held that by such sub-
sequent purchase an assignee cannot be dispossessed of the full benefit of what
has been acquired from the patentee.
4. Where others are associated with the patentee in the purchase of a prior patent
subsequent to a sale by the patentee of all his right, title, and interest in, to,
and under his own patents, Held that the prior sale operates as a license as
against all of the purchasers. *Id.
5. If others join with the seller in the purchase of the prior patent, such owners
must look to the original seller for their compensation. *Id.
6. The answer admitting the validity of the patents sued on, and one of the defend-
ants being the original patentee, their validity cannot be disputed on a suit
for infringement brought by an assignee of the patents. *Burdeall v. Curran
et al.,
273.
7. The entire title for the State of Wisconsin being in complainant for Reissue Pat-
ents Nos. 8,840 and 8,846, defendants are estopped from denying their valid-
ity. Id.
ATTORNEYS. See Elimination of Claims, 2; Power of Attorney to Amend; Reissues,
21.
BAR TO A PATENT. See Invention Shown but not Claimed, 4.
BILL IN EQUITY. See Appeal to the Secretary of the Interior, 11; Delay, 2; Invalid
Patents, 1,2; Practice in the Courts, 3.
1. Even though several patents cover inventions which are capable of being used
conjointly, and which are made and sold as parts of the same electric-lighting
system, yet if the inventions may be used separately and operate independ-
ently with respect to each other, and any of them may be infringed without
infringing the others, the bill must be adjudged to be open to the objection
of multifariousness. Consolidated Electric Light Company v. Brush-Swan
Electric Light Company, 323.
2. A petition to file a supplemental bill introducing new evidence in a case, after
a decision therein, dismissed, because it failed to show that the petitioner
could not with reasonable diligence have obtained prior to the former hear-
ing the testimony which he seeks to adduce, and also because such new mat-
ter is immaterial. *Spill v. The Celluloid Manufacturing Company, 452.
BILL OF SALE. See Trade-Marks, 2.
BREACH OF CONTRACT. See Licenses, 2, 3, 4.
BURDEN OF PROOF. See Damages and Profits, 10; Infringement, 15; Priority of
Invention, 7.
Where the complainant's patent was granted before the date at which the defend-
ants' application was filed, it is incumbent upon the latter to prove beyond
a reasonable doubt that theirs was the prior invention, and this being done,
the burden is transferred to the complainant to satisfy the court, by proof as
convincing as that required of the defendants, that his invention preceded
theirs. *Thayer v. Hart, jr., et al., 319.
BUSINESS CIRCULARS. See Prior Publications.
CANADIAN PATENTS.
1. MANUFACTURE and ConstrUCTION WITHIN TWO YEARS.-The Canadian pat-
ent law requiring "construction or manufacture of the invention or discov-
ery patented within two years of the date of the patent" does not contem-
plate forcing, ou penalty of forfeiture, the patentee to actually fabricate his
invention with his own capital, within specific establishments, with his own
tools, and to keep stock for every moment of the existence of his privilege
throughout the Dominion. § Barter v. Smith, 537.
CANADIAN PATENTS-Continued.
2. SAME.-The real meaning of the law is that the patentee must be ready either
to furnish the article himself or to give license of using on reasonable terms
to any person desiring to use it. The words "carry on in Canada the con-
struction or manufacture," with their context, mean that any citizen of the
Dominion has a right to exact from the patentee a license for using the inven-
tion patented, or obtain the article patented for its use at the expiration of
the two years' delay, on condition of applying to the owner for it and on pay-
ment of a fair royalty. (197.
3. IMPORTATION.-The words "imports or causes to be imported into Canada,” sec-
tion 28 of the patent act of 1872, mean the importation of patented inventions
to the injury of home labor, and do not cover the actual importation of a few
machines as models or for the purpose of bringing the usefulness of the in-
vention before the Canadian public. $197.
CANCELLATION OF CLAIMS. See Abandonment, 9; Elimination of Claims; Re-
issues, 21.
CHANGE OF FORM. See Combinations; Infringement, 18, 21.
CHANGE OF INVENTION. See Anticipation, 1; Interfering Patents.
CHANGE OF MATERIAL. See Infringement, 1.
CHANGE OF PROCESS. See Construction of Specifications and Patents, 2; Infringe-
ment, 1, 2, 21, 31.
CHANGE OF STRUCTURE. See Combinations; Infringement, 5, 8, 14, 17, 18, 20,
21, 32; Inventions, 2, 3, 4; Non-Patentability, 3; Particular Patents: 3, Bing; 13,
Bull; 15, 16, Burdett; 58, Robinson; Patentability, 2.
CHEMICAL EQUIVALENTS. See Infringement, 22.
CIRCUIT COURTS. See Practice in the Courts.
CLAIMS. See Abandonment, 9; Construction of Specifications and Patents, 2, 5, 7; Draw-
ings; Elimination of Claims, 1,2; Interference, 1,2; Reissues; Specifications;
Technical Terms.
1. 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 substan-
tially different from those described, even though the same result may be
produced by such different means. Ex parte Demming, 18.
2. An inventor may, however, employ language sufficiently comprehensive to in-
clude 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. Id.
3. Claims which depend upon such words as "means" and "mechanism" to ex-
press their patentable difference over the prior state of the art are too broad
Id.
4. And it is not sufficient that the claims contain words of reference to the specifi-
cation 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. Id.
5. Where a claim in a patent is for a certain arrangement of elements which per-
form a distinct and independent result in a machine, a change of these parts
changes the patented arrangement, and the machine becomes pro tanto a new
machine, and is out of the reach of the patent. * Reay v. Berlin & Jones En-
velope Company, 305.
6. Every instrumentality or substance intended to be an element or ingredient of a
claim must be directly brought in as such, not inferentially included, or only
alluded to in naming some other. Ex parte Holt, 43.
7. It is to be observed that claims forming part of one case cannot be to alternative
constructions--that is, alternative with other claims to constructions; in
other words, which are modifications of constructions set up in other claims;
nor may claims be in themselves alternative. Id.
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