INVENTION SHOWN BUT NOT CLAIMED-Continued.

contained a disclaimer covering all features shown but not claimed therein, and also a clause reserving the right to claim such features in an application filed previously. During the pendency of the first application, and after the patent had issued on the second, a third application was filed, with claims covering the matter described in both the first application and the patent. Held that under the circumstances the third must be regarded as a division of the first application, and therefore the invention claimed in the latter cannot be deemed to have been abandoned by reason of its being described in the patent. Ex parte Clarke, 16.

2. Neither of the applications above referred to 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. Id.

3. 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. Ex parte Derby, 21.

4. The case of Campbell v. James must be construed to forbid the patenting of an invention by a party who has already patented the same invention, and not merely described it in a patent. The statute does not make prior description in a patent a bar, but being patented. (Sections 4886, 4887, and 4920.) *Vermont Farm Machine Company et al. v. Marble, Commissioner of Patents, 207. 5. Where four claims of an applicant have been rejected solely on the ground of their subject-matter being described in a patent granted to the same party before the date of filing of the application, Held that the rejection is erroneous, and the applicant is entitled to a patent embracing snch claims. *Id. 6. NON-CLAIM OF APPARENT DEVICE-ABANDONMENT.-The omission by an inventor to claim a combination or device apparent upon the face of his patent amounts to a dedication of the neglected contrivance to the uses of the public *Swift v. Jenks et al., 208.

7. A part which under certain conditions may be a serviceable addition to the machine, but is not indispensable, and is not inentioned in the claim, held not to be an element of the patented combination. Bradley et al. v. Dull et al., 219.

JOINDER OF INVENTION. See Division of Application, 3. JOINDER OF INVENTION-SEVERAL CLAIMS TO A "COMPOSITION" PERMISSIBLE.—If several claims to a "composition of matter," thongh distinct, cover associa.tions 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. Ex parte Hentz, 6.

JOINT INFRINGEKS. See Infringement, 25, 26, 27.

JUDGMENT BY DEFAULT. See Practice in the Courts, 5.

JUDGMENTF THE COMMISSIONER. See Reissues, 20.

JUDGMENT OF THE EXAMINER. See Practice in the Patent Office, 1, 2.
JURISDICTION. See Appeal from the Primary Examiner; Reissues, 10.

1. Where a bill in equity is brought to obtain a patent (under section 4915 Revised Statutes) in the district of Vermont, and the Commissioner of Patents accepts service, Held that by such acceptance the Commissioner consented to be found in said district, and his act in this respect is binding upon his successor. *Vermont Farm Machine Company et al. v. Marble, Commissioner of Patents, 211.

JURISDICTION-Continued.

2. When the sections of the statute are construed together, it is held that when there are two interfering patents the circuit court of the district whereof the defendant is an inhabitant, or where he may be found, is the court "having cognizance; " and where an original application for a patent has been refused and a remedy is sought in equity, and the process is to be served on the Commissioner of Patents, then the circuit court of the District of Columbia is the proper tribunal to entertain the suit. *Prentiss v. Ellsworth, the late Commissioner of Patents, 213.

3. Au objection to the jurisdiction of the circuit court in Pennsylvania is that it has no mode of enforcing obedience to its decree, since the circuit, courts outside of the District of Columbia have no authority to issue a writ of mandamus to an officer of the United States commanding him to do a ministerial act.* Id. JURISDICTION OF THE COMMISSIONER. See Reissues, 21; Trade-Marks, 26, 27, 28, 29.

JURISDICTION OF UNITED STATES COURTS. See Practice in the Courts, 10. JURY. See Damages and Profits, 15; Infringement, 24.

JURY TRIALS. See Damages and Profits, 15; Infringement, 25.

Where the evidence rested almost wholly in parol, and there was enough on either side to well warrant a finding that way if there had been none on the other, and the determination of the question depended upon the credibility of the witnesses, Held that that question was within the peculiar province of the jury, and, unless it appears that they did not consider the question fairly and decide it according to their best judgment, the court has no disposition or authority to review their work. Milligan v. Lalance & Grosjean Manufacturing Company, 410.

LABELS. See Trade-Marks, 26, 27, 28, 29.

1. While a person has the right to use his own name as a label on goods, he will not be permitted to use it in such a form or in such an arrangement with other words as to lead the public to suppose that the goods are those of another person who has the same name and has previously employed it in the same way to indentify his goods. *Landreth & Sons v. Landreth, 510.

2. If the defendant has the right to use the same words as those which constitute the complainant's label, he ought to accompany them with some clear indicia of the source of the goods. *Id.

In an action at law for infringement of a patent all parties who participate in the infringement are liable, although some are simply acting as officers of a corporation. All parties who participate in a tort or trespass are liable, and a man cannot retreat behind a corporation and escape liability for infringe. ments in which he actively participates. *National Car-Brake Shoe Company v. Terre Haute Car and Manufacturing Company et al., 367.

LICENSEES. See Practice in the Courts, 2.

LICENSES. See Assignments, 4, 5; Damayes and Profits, 3, 6, 7, 8, 11; Use of Patented Articles, 1, 2.

1. During the existence of a partnership between two persons one of them invented a machine upon which a patent was granted to him. The firm paid the fees and costs of procuring the patent and the expenses of an experimental trial of the invention, and also paid the expenses of some ligitation which ensued. It appeared, however, that all the outlay by the firm was more than repaid by the benefits arising from the use of the invention in the partnership busiHeld that upon these facts no implied license arises to the member of the firm not the inventor to make, vend, and use the patented machine after the dissolution of the partnership. *Keller et al. v. Stolzenbach et al., 174.

ness.

LICENSES-Continued.

2. If the complainant has refused to fulfill any of his obligatious in matters of substance under the license, a court of equity will not interfere to assist him by compelling the defendants to observe the obligations upon their part.

ter v. Goldschmidt et al., 358.

*Fos

3. A promise in the alternative puts the alternative in the election of the promisor, unless there is something to take it out of the general rule. *Id.

4. Where both parties have acted upon a certain construction of an ambiguous document, that construction, if in itself admissible, will be adopted by the court. *Id.

5. There is no question but that the amount of an established license-fee for the use of a patented invention is what the patentee loses by the use of the invention in violation of the patent without license and a proper measure of damages for such infringement. *Wooster v. Simonson et al., 366.

6. When on a first hearing of a case the master reported damages for a larger use of the patented invention than the defendants were guilty of, and the case was referred back to him, with liberty to the complainant to reopen his proofs, Held it was proper for the master to report that the orator's license-fee was for the privilege of using an invention precisely like that used by the defendants, for which this account of damages is being taken. *Id.

7. Such licenses are not required to be in writing, neither is the amount of the fee required to be shown by writing. The whole may be shown by parol. *Id. 8. The written contracts of license between the orator and others might be evidence between the orator and the defendauts, but as this suit is not brought upon these licenses and the defendants are not parties to them, they are not conclusive upon either the defendants or the orator, as they would be upon the parties to them in suits between those parties upon them. *Id.

9. PATENT LAW-INFRINGEMENT ON THE TERritorial Rights of a GRANTEE OF AN EXCLUSIVE RIGHT TO MANUFACTURE AND SELL Under the PATENT IN A SPECIFIED PART OF THE UNITED STATES.-A sale of patented articles in the ordinary course of trade outside the territorial limits to which the right of sale is restr cted by the patentee's grant is unwarranted. *Hatch v. Adams,

439.

LICENSE-FEE. See Licenses, 5, 6, 7, 8.

LIMITATION OF UNITED STATES PATENT BY FOREIGN PATENTS PREVIOUSLY GRANTED.

The provision of the statutes that a United States patent for an invention previously patented abroad shall be so limited as to expire at the same time with the foreign patent seems to mean that the term of the patent here shall be as long as the remainder of the term for which the patent was granted there, without reference to incidents occurring after the graut. It refers to fixing the term, not to keeping the foreign patent in force. *Holmes Electric Protective Company v. Metropolitan Burglar Alarm Company, 387.

LIMITED PATENT. See Reissues, 4.

MACHINE AND METHOD. See Division of Applications, 6.

MACHINE AND PROCESS. See Construction of Specifications and Patents; Infringement 30; Non-Patentability.

MACHINE AND ITS PRODUCT. See Combinations; Division of Applications, 6; Infringement, 30.

MACHINES. See Combinations.

The manner of using it does not characterize a machine. This is effected by its structure and capabilities. "Sewing Machine Company v. Frame, 281. MANDAMUS. See Appeal to the Secretary of the Interior, 1, 2, 3, 7, 10; Rehearing, 2. Mandamus will not lie to compel a public officer to do a particular thing which his

superior in authority has lawfully ordered him not to do. Butterworth, Commissioner of Patents, v. The United States ex rel. Hoe et al., 429.

MANUFACTURE OF PATENTED ARTICLES. See Damages and Profits. 13; Infringement, 25, 26, 27; Stamping Patented Articles.

MASTER'S REPORT. See Licenses, 6; Practice in the Courts, 10.

MEASURE OF DAMAGES. See Damages and Profits, 5, 6, 7, 11, 13; Licenses, 5, 6, 7, 8; Trade-Marks, 15.

MECHANICAL CHANGE. See Change of Structure; Construction of Specifications and Patents, 10; Infringement, 2, 5, 14, 16, 17; Non-Invention; Particular Patents: 3, Bing: Reissues, 7.

MECHANICAL CONSTRUCTION. See Anticipation, 2, 3; Combinations; Inventions, 3. MECHANICAL SKILL. See Non-Invention; Non-Patentability; Particular Patents : 16, Burdett; 49, Nation and Little.

MECHANICAL SUBSTITUTE. See Invention.
MERITS OF THE CASE. See Appeals.
MISTAKES. See Reissues, 4, 23, 26, 27, 28, 29.
MISUNDERSTANDINGS. See Reissues, 21.

MODEL. See Priority of Invention, 5.

MODIFICATIONS. See Drawings; Non-Patentability, 3.

MODE OF OPERATION. See Infringement, 21; Non-Patentability.

MODIFICATIONS. See Anticipation; Claims, 2; Infringement, 20, 21; Interfering

Patents.

MOTION TO AMEND ANSWER. See Answer to Bill, 2.

MOTION TO DISCONTINUE. See Practice in the Courts, 6.

MULTIFARIOUSNESS. See Bill in Equity.

MULTIPLICATION OF CLAIMS. See Construction of Specification and Patents, 7. NEGLIGENCE. See Abandonment; Delay.

NEW APPLICATIONS. See Invention Shown but not Claimed.

NEW CLAIMS. See Abandonment, 1; Elimination of Claims, 1; Invention Shown but not claimed, 3; Reissues, 21, 24, 25, 31.

NEW ELEMENTS. See Infringement, 20; Interfering Patents.

NEW MATTER. See Reissues, 34.

In an original application, matter not warranted by the case, as first filed, should not be designated by the term "new matter." The term "new uatter" is employed in the statute and in the Rules of Practice only with reference to reissues. Ex parte Holt, 43.

NEW RESULT. See Construction of Specifications and Patents, 2.

NEW TRIALS. See Rehearing, 1.

NEW USE. See Construction of Specifications and Patents, 2; Non-Invention, 1, 2; NonPatentability, 1, 2.

NOMINAL DAMAGES. See Damages and Profits, 3, 4, 10.

NON-INVENTION. See Particular Patents: 16, Burdett; 41, Matthews; 43, McMillan;

44, Milligan; 46, 47, 48, 49, Nation and Little; 57,52, Robinson.

1. NON-INVENTION. --In trucks already in use on railroad-cars the king-bolt which held the car to each truck passed through a bolster supporting the weight of the car, and through an elongated opening in the plate below, so as to allow the swiveling of the truck upon the bolt and lateral motion in the truck, and the bolster was suspended by divergent pendent links from brackets on the frame, whereby the weight of the car tended to counteract any tendency to depart from the line of the track. Held that a patent for employing such a truck as the forward truck of a locomotive-engine with fixed driving-wheels was void for want of novelty. "Pennsylvania Railroad Company v. LocomotiveEngine Safety-Truck Company, 168.

2. The application to a device of a feature which had already been in use for the same purpose in another form of tool lacks the invention requisite to support a patent within the decisions of the Supreme Court. *Collins Company v. Coes et al., 374.

NON-INVENTION-Continued.

3. Any skilled mechanic could have adapted the comb-machine to vehicle-dashes without the exercise of invention. *Peters v. The Active Manufacturing Company, 378.

4. Where the claim was for a blank from which an old article had been made, and the only improvement suggested was a more convenient form of handling and packing for transportation, the purchaser to form the article from the blank in the old way, Held that this could not be regarded by the statute as an improvement in an art or manufacture. Forncrook v. Root, 456.

5. The only field of invention left for the patent to cover was the application by the old and familiar arrangements of shafts and cog-wheels of the power of an auxiliary engine to a capstan instead of a windlass. It is plain that no such ingenuity as merited the issue of a patent was required for this improvement, but only the ordinary judgment and skill of a trained mechanic. *Morris et al. v. McMillin et al., 472.

NON-PATENTABILITY. See Division of Application; Invention Shown but not Claimed, 6; Non-Invention, 2; Patentability, 2.

1. PROCESS-FUNCTION OR MODE OF OPERATION OF A MACHINE NOT PATENTABLE.— A function or mode of operation of a machine is not patentable apart from the machinery. *Reay v. Raynor et al., 153.

2. A louver consisting of slanting slats and a reticulated screen, both being old as window-coverings, there would not appear to be any patentable invention in putting the two to uses together for which each was before well known separately. Neither operates any differently or accomplishes any result in connection with the other different from what it would if the other were not there. They appear to form a mere aggregation and not a patentable combination. Hayes v. Bickelhoupt, 412.

3. The addition of flanges to the gutters for stiffening them were merely such additions as would be supplied by good workmanship when needed. They were not new for that purpose, and the use of the flange shape for attaching the reticulated covering would appear to be very obvious. Id.

NOTARY PUBLIC. See Oath of Inventor, 1.

NOTICE TO THE PUBLIC OF PATENTED ARTICLES.

Every one is bound to take notice of the existence of a patent and of the rights of parties under it. Like the record of a deed to real estate, the record of a patent at Washington is notice thereof to all the world. *National CarBrake Shoe Company v. Terre Haute Car and Manufacturing Company et al., 367.

NOVELTY. See Non-Invention.

OATH OF INVENTOR.

1. OATH-SECTION 4892 REVISED STATUTES CONSTRUED.-Section 4892 Revised Statutes does not authorize an applicant who is a resident of a foreign country to make oath to his application before any officer other than those designated in said section. They are "any minister, chargé d'affaires, consul, or commercial agent holding commission under the Government of the United States, or any notary public of the foreign country in which the applicant may be." Ex partes Gruson and Schumann, 2.

2. SAME-AUTHORITY TO ADMINISTER OATHS DERIVED FROM United StatES STATUTE ALONE.—Such designated officials, in administering the oath, act by virtue of the authority conferred by the statute of the United States, and not by virtue of any power or authority conferred by the foreign Government. Id. 3. SAME-OFFICER NOT AUTHORIZED.-An oath taken before a judge of the royal Prussian court is not sufficient. Id.

OBJECTIONS. See Bill in Equity; Construction of Specifications and Patents, 8.
OFFICE OF THE CLAIMS. See Claims, 4; Specifications.