JULIUS KING.

Appeal.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF JULIUS KING FOR PATENT FOR IMPROVED

SPECTACLES, FILED APRIL 3, 1871.

(Dated June 21, 1872.)

An improved result following a novel combination of parts indicates invention and warrants the grant of a patent.

LEGGETT, Commissioner:

Applicant proposes to improve ordinary steel spectacle-frames by making the bridge or nose-piece of solid silver instead of steel or steel silver-plated, as they have heretofore been made. The advantage alleged is that while oxidation is prevented, as in plated bridges, the solid silver bridge can be united to the steel rims by the autogenous process of soldering, which is said to be employed at a lower temperature than a steel bridge can, and thereby the danger of burning the steel and rendering it brittle at the point of union is obviated and a better frame is produced.

The decision of the examiner, which is affirmed by the board, proceeds upon a denial of the allegation that a more ready and safe application of the soldering process is practicable where a silver bridge is used than where the spectacle-frame is made wholly of steel, and upon the assertion that no invention is exhibited.

I am satisfied, however, that it is true a silver bridge can be united to the rims at a lower degree of temperature than a steel one, and that thereby the danger of burning the rim and rendering it brittle is obviated. If the common method of soldering by the use of an alloy were employed, as seems to have been represented to the examiner and board, this would not be the case. But to secure a silver bridge no solder is required, as the silver itself (which is not perfectly pure) is a solder; and it can be united to the rims by such a degree of heat as will fuse it. That there is invention exhibited-not in any single step or feature taken alone, but in what is claimed, (viz., the novel combination of the parts presented)-cannot be successfully denied, in view of the improved result obtained.

The decision of the board is therefore overruled.

WILLIAM F. WEST.

Appeal.

APPEAL FROM THE PRINCIPAL EXAMINER IN THE MATTER OF THE AP. PLICATION OF WILLIAM F. WEST FOR LETTERS PATENT FOR IMPROVEMEN'T IN SEED DRILLS AND PLANTERS.

(Decided June 24, 1872.)

Practice under Rule 44.

In an appeal from the principal examiner to the Commissioner in person, the pertinency of references cited as anticipating the novelty of the invention cannot be called in question.

The introduction of mere dead elements into a claim does not change the real nature of the combination; but, if a new element in any way modifies the operation of the former combination, the new claim cannot be held to be identical with the first. Where a combination of devices possesses no utility except when used in connection with one or more devices not mentioned, the latter being shown, will be understood as inferentially included in the combination, and the addition of said necessary devices in the claim does not change the character of the claim.

THACHER, Acting Commissioner :

As this case was originally presented it contained seven claims. These were all rejected by the examiner on specific references cited for each claim. Applicant then amended by striking out the entire claim and substituting therefor a single clause, which was also rejected by the examiner, his action being affirmed on appeal by the Examiners-inChief and Commissioner. After the decision of the Commissioner, West abandoned this claim, and filed another amendment containing four claims, which were also rejected by the examiner for reasons stated in official letter of June 6, 1872, as follows:

The claims, as amended, are the same as originally presented, and are held to be fully anticipated by the references before given.

To this action of the examiner applicant takes exception, and appeals directly to the Commissioner. The pertinency of the references cannot here be called in question. That is a matter appealable to the Examiners-in-Chief; but so much of the examiner's decision as relates to the identity of the present claims and those originally filed may be properly reviewed by the Commissioner under the provisions of Rule 44. Applicant is entitled, under this appeal, to a decision on this point, and this alone.

The new claims bear a close resemblance to the original first, second,. third, and seventh. It appears, however, that new elements have been introduced into each combination. The question is, then, are these mere dead elements in the several combinations in which they appear, or are they really effective, so that in each case an operation is secured different from that produced by the devices as originally combined? In the

first claim the new elements introduced are the rock-shaft and handlever. The cam, acting on the spring-lever to engage or disengage the clutch, by which the wheel is made fast or loose on the axle, is attached to the end of the rock-shaft, so that by means of the hand-lever the operation of the dropping-mechanism is put under the control of the attendant. The clutch-coupling, axle, spring-lever, and cam were combined in the original first claim. Now, it is evident that the cam can be operated in various ways. Therefore, originally the devices for throwing the dropping-mechanism in and out of gear were claimed without regard to the means for operating them. The introduction of the specific operating devices here used constitutes, in my opinion, a material change. It limits the claim and presents a substantially new combination.

In the second claim the only new element is the valve-plate. The combination of devices in the original second claim, however, possesses no utility whatever in the machine, except in connection with this valveplate, which said devices are intended to operate. Where a combination has no function except in connection with some element not mentioned, the latter is inferentially included. In this case the combination of the axle, cams, valve-lever, and pins has no function except to operate the valve-plate. The latter is not claimed to possess novelty in itself, which might make the combination new. Its introduction into the claim by name, therefore, produces no real change, as it must be there, whether mentioned or not.

The third claim has the additional element of the changing plate, which is really nothing more than the bottom of the hopper, and demands no further attention; but there is the additional limitation to the arrangement shown. I doubt whether this limitation can make any essential difference; but, giving applicant the benefit of the doubt, it must be held to constitute a distinctive difference between the two claims. The fourth claim must be treated the same as the second. It is the same as the original seventh, with the addition of the detent-pin; but the shoe and trunk cannot be lifted together, as described in the seventh claim, without the pin be present. The said seventh claim must, therefore, be interpreted as including the pin, although it is not mentioned, and is, therefore, essentially the same as the new fourth.

On the question of identity the decision of the examiner is affirmed as to the second and fourth claims, and reversed as to the first and third.

SPRINGER & AMBRUSTER vs. STANTON & PEDRICK.

Interference.

IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF SPRINGER & AMBRUSTER AND STANTON & PEDRICK FOR A PATENT FOR A TRANSPLANTER.

(Decided June 25, 1872.)

Patentable invention.

A transplanter having a pair of spades and a pair of compressors, operated in pairs. The spades and the compressors, respectively, having been patented to one party, (Fuller,) another party might be entitled to a claim on a single presser and a single spade connected so as to operate simultaneously.

A still further modification, in which a pair of spades and a pair of compressors are operated simultaneously—that is, the compressors forced down as the spades aro withdrawn-and by the same impulse, has patentable merit.

LEGGETT, Commissioner :

The invention consists of a pair of spades or openers, which make the hole for the plant; a guide or tube, through which the plant is guided into the earth; a pair of pressers to press the earth against the plant; and mechanism for operating these spades and pressers simultaneously.

A patent granted to J. C. Fuller in 1869 shows a pair of spades and a pair of compressors, but operated in pairs, each pair independently of the other, so that the broadest claim either party to this controversy can maintain is the combination of a pair of spades and a pair of compessors,.constructed so as to be all operated simultaneously—that is, the compressors forced down as the spades are withdrawn-and by the same impulse.

The testimony shows that Stanton & Pedrick began and completed their invention May 23, 1871, having made a machine and tested it on that day. An effort is made to prove that Springer & Ambruster iuvented a similar machine in the early part of 1870; but the model commenced about that time seems never to have been completed. There is evidence, however, to show that early in May, 1871, they got up a transplanter having a single presser and one sliding spade connected so as to operate simultaneously. Several of these implements were used by farmers in the vicinity, and their operation found to be defective, especially in wet ground. Had Springer & Ambruster applied and obtained a patent on their single machine before the application of Stanton & Pedrick, it is hardly probable the Office would have hesitated to grant a patent to the latter for their particular construction. Several of the parts are changed in construction, and there is a general reorganization of the whole. The differences are by no means mere colorable variations from the construction of Springer & Ambruster, but they are

something more than a mere duplication of the single machine; it requires reorganization and new adaptation, and a different construction of some of the parts. Pedrick's examination of Springer & Ambruster's single machine may have directed a train of thought that resulted in the production of the invention in question, but that is all; while, on the other hand, it seems hardly probable from the evidence that Springer & Ambruster had any idea of the particular construction they now claim until it was obtained from the completed machine of Stanton & Pedrick.

The decision of the majority of the Examiners-in-Chief is affirmed, and priority of invention awarded to Stanton & Pedrick.

GEORGE RICHARDSON.

Appeal.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF GEORGE RICHARDSON FOR PATENT FOR IMPROVEMENT IN BOBBINS, FILED MAY 23, 1872.

(Decided July 24, 1872.).

Amount of novelty conferring patentability.

Where a device, though simple, saves time and labor and is not anticipated, the grant of a patent is warranted.

LEGGETT, Commissioner:

The invention consists in providing a bobbin with a hole or holes near its center, on one or both sides, to enable the spindle to be oiled without removing the bobbin therefrom. It is designed specially to apply to the bobbin patented to J. H. Sawyer, to permit the oil to be applied to the bolster-head inclosing the spindle within the bobbin. The claims are, first, the bobbin with the oiling-hole or holes, arranged as described; second, the combination of the hole or holes with the bolster and spindle. The examiner rejected these claims on the ground, first, that there is no utility in the alleged invention; and second, that it is substantially met by the withdrawn application of C. E. Atherton, showing an oilinghole, it being common to provide holes to apply oil in otherwise inaccessible places in machinery..

The board affirm the examiner's rejection on the ground of want of utility, and say the bolster can only be oiled when the bobbin is empty, and it may just as well be done while the bolster is exposed, during the exchange of a filled for an empty bobbin. Besides, the disadvantage suggested by the examiner, that the holes allow the oil to be thrown off by the spindle and injure the yarn, is obvious.

Against this decision the substance of applicant's arguments is the