HENRY M. UNDERWOOD. Design. APPEAL FROM THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF HENRY UNDERWOOD FOR A DESIGN PATENT FOR BUSINESS CARDS. (Decided May 29, 1872.) Practice under Rule 44—In what cases an appeal lies direct to the Commissioner under this rule. In a case rejected on the merits, where there is no question as to form aud no refusal to act, the appeal lies to the board of Examiners-in-Chief and not to the Commissioner. LEGGETT, Commissioner: In this case the examiner's action was upon the merits of the case. Between the applicant and the examiner there is no question of form, but simply as to whether the application contains patentable subject-matter. Having been twice rejected upon the merits of the case, there being no refusal to act and no question of form, the appeal should have been to the board and not to the Commissioner. The appeal is dismissed. APPEAL FROM THE JOHN M. CORNELL. PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF JOHN M. CORNELL FOR LETTERS PATENT FOR IMPROVEMENT IN MACHINES FOR SHEARING THE ENDS OF IRON BEAMS. (Decided June 4, 1872.) Practice under Rule 44-Wording of claims-Ambiguity-Should a patent cover a means or an act? A claim should be to the means by which an operation is accomplished or effect produced, and not to the act of accomplishing or producing. The fact that courts may or will construe liberally and thus save loosely-drawn claims, does not justify this Office in allowing such. A function is not patentable. It is not a matter of indifference whether an applicant clearly ascertain the exact matter of novelty; the public has a right to know the exact limitations of a patentee's monopoly. By ambiguous descriptions the public may be deceived and defrauded; therefore the Office demands clearness and accuracy. LEGGETT, Commissioner: After describing his machine the applicant adds his claim in the following language: Preparing the end of the beam, as described, in a machine fitted with a web-cutter. », and flange-cutters h h, made substantially as described, and combined and operated with reference to each other to cut away the flanges and trim the end of the web, substantially as set forth. To this the examiner objects on the ground that the claim is for an act and not for the means of accomplishing a result. I have no doubt but that, if allowed, the courts would, by liberal construction, save this claim. The reference to the mechanism would enable a court in its efforts to save a patent to so construe the claim as to make it embrace the means by which the ends of beams are prepared, although in terms the claim is for preparing the ends of beams. The fact that the courts will construe loosely-drawn and ambiguous claims so as to save a patent, if possible, is no valid reason for allowing such claims, and is no justification of attorneys in pressing them upon the Office. The 26th section of the Patent Law provides that, in case of a machine, "the applicant shall particularly point out and distinctly claim the part, improvement, or combination which he claims." The claim in question "distinctly" claims only a function, and that is not patentable. If the patentee were the only person interested there would be some propriety in allowing his claim to pass without question as to its form. He might then have the largest liberty in using ambiguous and doubtful phraseology. But such is not the case. The public has a right to know the exact limitations of a patentee's monopoly, and for that reason the law requires distinct, exact, and sharply-defined claims. Ambiguous descriptions and loosely-drawn claims are often sought for the purpose of public deception, and, when obtained, have been unscrupulously used in swindling schemes. In this way the public has often been injured and the whole patent system brought into disrepute. While the Office should exercise the largest liberality toward inventors as to subjectmatter, yet justice to meritorious inventors and public policy alike demand great clearness and accuracy in specifications and claims, and upon this the Office must insist. The decision of the examiner is sustained. GEORGE W. MORSE. Extension. IN THE MATTER OF THE APPLICATION OF GEORGE W. MORSE FOR THE EXTENSION OF LETTERS PATENT NO. 20,503, GRANTED TO HIM JUNE 8, 1858, FOR IMPROVEMENT IN BREECH-LOADING FIRE-ARMS. (Decided June 7, 1872.) Novelty-Diligence-Value-Limitation by disclaimer in a point insuffi ciently determined. A combination, in a movable breech-piece, of a firing-pin and sliding-bolt, so that both are actuated by the lock in the act of firing: Held, not to be anticipated by a slidingbolt which fastens the breech-piece simultaneously with the explosion of the capand which is destitute of a firing-pin. A movable breech-piece, the front end of which is convexly globular: Held, not to be anticipated by one which is concave. The change in the conditions of the head of the breech-block and the base of the cartridge secures a different result, and is not a mere reversal of the forms of the respective parts at the point of contact. The nature of an invention must have an important influence in determining the question of diligence, especially if it be one in which success is alone to be secured by the adoption of it by the Government for its own uses, and as such is in competition with other devices backed by capital and having the advantage of pre-occupation of the field. THACHER, Acting Commissioner : This patent is one of a series of five granted to applicant, and to gether constituting his complete plan for changing muzzle-loading firearms to breech-loaders. The claims now under consideration embrace three features of construction: 1. The combination, in a movable breech-piece, of a firing pin with a sliding-bolt, so that the lock in the act of firing shall both lock the breech and fire the charge. 2. A movable breech-piece, the front end of which is globular, in combination with a cylindrical cartridge-case. 3. A bell-crank lever for retracting the cartridge-case. The examiner has cited a number of references, but only, as it is understood, for the purpose of showing the state of the art, with a view to a more intelligent judgment as to the importance of the invention. The devices claimed are not found in the references, and, in fact, the examiner affirms the novelty of the invention claimed limited to these devices, substantially as shown. With the exception of the third, the claims are sufficiently limited to the construction shown to avoid all objection on this score. The third claim covers the "construction and use of the lever, when arranged substantially as described, for the purpose of retracting the cartridge case." The phraseology leaves it uncertain what other parts are to be considered in the arrangement. The French patent of Gastinne shows what must be regarded as a similar lever, similarly located, but operated by the lock, and acting on a sliding carrier which supports the cartridge-case. If the third claim refers to the arrangement of the lever with reference to the gun-barrel, this French patent is an answer, but it does not anticipate the arrangement of said lever with reference to the cartridge-case, or its manner of acting directly thereon. A disclaimer limiting it to this latter arrangement and operation would remove all objection to this claim. The difference between the devices shown and some of the cases cited is apparently slight, and the value and importance of Morse's invention appear correspondingly insignificant. Mont Storm has a sliding-bolt, which fastens the breech-piece simultaneously with the explosion of the cap. But Mont Storm lacks the firing-pin-an important element in the first claim of Morse; and it is not readily perceived how his invention could be adapted to this method of exploding the cartridge. Delabourse shows a breech-piece with its forward end concave, and a cartridge the head of which is correspondingly convex. Reversing the construction of Delabourse seems at first a matter of small importance, but a more careful inspection shows that a different result is obtained. The mathematical center of the globular surface at the front end of the breech-piece is in line with the axis of the bore of the gun. By this arrangement the shock is received in such a manner that there is no warping of the breech-piece and no loosening of the joint so as to permit the escape of gases. It is readily seen that the action upon the end of the cartridge-case, if a plane surface, is also different. In Morse's case the recoil would produce a slight indentation, but without danger of bursting the case. If the concave end of the Delabourse breech-piece be used with the same kind of case, the inevitable result must be the bursting of the end of the case and consequent escape of gases into the chamber. These considerations show that theoretically the changes effected by Morse were really valuable and important. The reports of Major Bell, superintendent of the Washington Arsenal, in 1858, and of a board of Army officers, convened at West Point the same year, for the purpose of practically testing various plans for altering the old-style muskets to breech-loaders, are conclusive on the point of practical utility. After repeated trials Morse's plan was recommended as superior to all others presented. Applicant has suffered a net loss of nine thousand dollars upon his five patents. He does not attempt to distribute this loss among the several patents. This is not necessary. It is sufficient for all practical purposes that the Commissioner should be informed of the fact that the inventor has received absolutely no remuneration. The question of diligence is the same in this case as in a former ap The lication by Morse, decided May 11, 1872, (Official Gazette, No. 21.) decision in that case was favorable to applicant on the question of diligence. It is true a doubt was expressed as to the period before and since the late war; but it is not understood that this would have prevented the grant of the extension had other circumstances been favora ble. The nature of the invention must have an important influence in determining the question of due diligence. In this instance the invention is of such a nature that its introduction into use depended almost entirely upon the action of the Government. Before the war, Morse seems to have used all possible efforts to secure the adoption of his plan for altering arms by the United States Government, and finally succeeded in obtaining a contract for changing two thousand old muskets and constructing one thousand new carbines in accordance with his specifications. This was all he could do. If the guns were not made it was not his fault, but that of the Government. Since the war his poverty has prevented his successful competition with others in a field entered by them during his absence in the war, and still held with all the strength that capital and combination can command. The failure of the opposition to appear at the hearing of this case may be accepted as a tacit admission that no public interest would be affected unfavorably by the extension of this patent, and, in fact that, no valid objection exists to such extension. All other questions arising in this case were decided, in the previous application, favorably to applicant. Upon the filing of the disclaimer called for, the extension will be granted. WILLIAM FRICK. Motion. IN THE MATTER OF THE APPLICATION OF WILLIAM FRICK FOR LET. TERS PATENT FOR IMPROVEMENT IN THE MODE OF CONNECTING AND STEERING BOATS. (Decided June 10, 1872.) Under what circumstances a second patent may be granted for the same invention-Amending application after the decision in interference. In a case where it is claimed by an applicant (though not admitted by the Office) that a patent to another party has been granted, overlooking the rights of said applicant, the Office cannot grant a patent to the said applicant until after proof of priority of invention in an interference with the existing patent, The action in the case must now have reference to the existing conditions of the respective cases. |