T. C. HOOPER.

Appeal.

APPEAL FROM THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF THOMAS C. HOOPER FOR PATENT FOR WET GASMETER; FILED APRIL 19, 1871.

(Decided June 28, 1872.)

Practice under Rule 44—Form of claims.

The Office requires that a claim shall be in terms which cover directly the device presented.

It is not sufficient that in an equivocal form the devices be indirectly covered.

THACHER, Acting Commissioner :

The claim upon which this appeal is taken is, in substance, increasing the area of the water surface in one chamber, with relation to that in another chamber, by constructing the one chamber with the relative enlargement shown in Figs. 2 and 5, for certain described purposes. The gist of the invention is the construction of an enlargement in the inletchamber, having such a relation as to produce a useful result. By a careful analysis of the claim it is discoverable that it covers this invention, and the courts would undoubtedly so construe it. But this fact much more readily appears from an abstract of the claim, as above presented, than it does from the claim itself. The examiner, however, puts it a little too broadly when he says the claim is "indeterminate in substance." It is not altogether a functional claim, such as referred to in Ex parte Simonds, Decisions 1870, page 23. But neither is it in such “clear, concise, and exact terms," and in such unequivocal form, as are contemplated by the requirements of the law, and as should be insisted upon by the Office. Although the cases are not precisely parallel, the reasoning in the appeal of John M. Cornell, Gazette, vol. 1, No. 24, is in the main applicable here. The claim would certainly be much clearer if it were, and I see no reason why it should not be, drawn substantially in the following form:

The inlet-chamber A, provided with, &c.

The decision of the examiner is sustained.

HENRY H. PACKER.

Extension.

IN THE MATTER OF THE APPLICATION OF HENRY H. PACKER FOR THE EXTENSION OF LETTERS PATENT NO. 20,728, FOR AN IMPROVEMENT IN HAND-DRILLS, GRANTED TO HIM JUNE 24, 1858.

(Decided June 29, 1872.)

Original or reissued patent in extension.

Where a patent has been surrendered and reissued, the original can be extended only when it appears that the original patentee neither assented to nor has been interested in the reissue thereof.

In Potter vs. Braunsdorf, the extension of an original patent was held to be valid solely on the ground that it was the only patent which the inventor had ever adopted or assented to.

Where a patent had been surrendered and reissued by the patentee himself: Held, that the extension of the original patent must be refused on the ground that the application should have been for the extension of the patent as reissued.

THACHER, Acting Commissioner:

In this case it appears that, September 12, 1865, the patentee made application for the reissue of his original patent, which was granted, and a new patent issued January 2, 1866. It is understood that said. reissued patent has remained in his possession ever since it was granted. He now prays for an extension of the original patent.

In Potter vs. Braunsdorf, 7 Blatchford, 97, the extension of an original patent was held to be valid, notwithstanding it had been reissued; but the circumstances were different from those in the present case. The original patent was granted to Bachelder May 8, 1849. It was reissued to his assignee November 2, 1858, the specification of such reissue being signed by the assignee, and not by Bachelder, The reissue was not assigned to Bachelder. Upon the application of the original patentee, the first patent was extended to him by the Commissioner of Patents. In passing upon the question of validity, Judge Blatchford used the following language:

Where a patentee, having secured his invention by a patent with a specification in such form as he regards to be most proper, assigns the entire patent for the original term only, reserving his right, under the eighteenth section of the act of 1836, to apply for and obtain an extension, it ought not to be, and it is not in the power of the assignee, by surrendering the patent and obtaining a reissue of it on a specification not signed, assented to, or adopted by the patentee, and which perhaps the patentee may regard as rendering the reissued patent invalid, or as securing by new and different claims rights of little value, to affect, without his consent, the statutory right conferred on the patentee to apply for and obtain an extension of the only patent which he has ever adopted or assented to.

It will be seen that this decision contains no authority for the extension of an original patent when it has been reissued by the patentee himself, or if he has in any way assented to such reissue. Under such circumstances the application must necessarily be made for the extension of the reissued patent.

The extension in this case, therefore, must be refused.

W. H. MCLELLAN.

APPEAL FROM THE PRIMARY

Appeal.

EXAMINER IN THE MATTER OF THE

APPLICATION OF W. H. M'LELLAN FOR REISSUE OF REISSUED PATENT NO. 3,376, FILED MARCH 4, 1872, FOR FARE-BOXES FOR CARS.

(Decided June 29, 1872.)

Practice under Rule 44-Meaning of "equivalent."

In accordance with Rule 130, no consideration will be given in appeal cases to statements relating to alleged verbal agreements between attorneys and examiners. THACHER, Acting Commissioner:

In this appeal considerable stress is laid upon a verbal agreement said to have been made between the examiner and applicant relative to the disposition of the matter now in controversy, out of which agreement, as might have been expected, a misunderstanding has arisen. Attention to Section 130 of the rules by all concerned would obviate all difficulties of this kind. It does not appear from the record that any decision was reached by the Commissioner in the appeal taken in this case March 30, 1872, upon a similar question; and it is wholly immaterial, therefore, what is asserted or understood about it, on one side or the other. The question now is, whether the words "or their equiva lents" in the first claim, objected to by the examiner, should be required to be erased or not. This precise question was decided by the Acting Commissioner (Duncan) with reference to the third claim in the case of the Continental Windmill Company, appealed from the primary examiner. (Decisions 1870, p. 74.) That was an application for reissue like the present, and, so far as this issue is concerned, an exactly parallel case. The words "or equivalent" referred then to a definite device—a turntable-as the words "or their equivalents" do now to two well-defined devices-"the levers W and A." An issue upon the matter is no more "advisable" now than it was then, and the decision of the examiner must be overruled.

W. BUTTERFIELD.

Appeal.

APPEAL FROM THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF WM. BUTTERFIELD FOR PATENT FOR MOCK BUTTON AND BUTTON-HOLE FOR LEATHER WORK, FILED MAY 18, 1872.

(Decided July 1, 1872.)

Practice under rule 44-Article of manufacture-Useful-Ornamental.

A device which is cheaper and more durable, although its novel feature is for ornamentation, is patentable as an article of manufacture when intended as a substitute for an article both useful and ornamental.

There are two tests of the utility of an article of manufacture: the first referring to the advantage gained in its actual use, and the second to the saving effected in its

construction.

The test of novelty is that it must differ from other like articles "in essential points" comprehending the legal requisites of patentable novelty.

THACHER, Acting Commissioner :

This application is rejected by the examiner on the ground that it presents subject-matter for a design patent. The alleged invention consists in the formation of mock buttons and mock stitched button-holes upon boot and shoe uppers, &c., by stamping and embossing. Its object is to supply the place of the real buttons and button-hole stitches heretofore used. The advantages of its substitution for them are said to be, and undoubtedly are, that the mock buttons are more durable, not being liable to come off, and that the expense of providing the uppers with them is less, the use of a sewing-machine and real buttons being dispensed with. But the question arises, What is the object of the real buttons ordinarily used in such situations as that these mock buttons may be advantageously substituted for them? It is obvious that such real buttons must be used merely for ornamentation; for if they were required for the performance of their ordinary function, mock buttons would not do in their stead. The mock buttons and stitches, then, serve merely for ornamental purposes, and are brought forward by the inventor because they constitute a cheaper and more durable ornamentation than the things for which they are substituted. This is true of the mock buttons and stitches abstractly considered, and if the claim were presented broadly for them alone it might perhaps be a nice question to determine whether or not they would be proper subject-matter for a design patent; but that question is not necessarily involved in this case, for the reason that the claim presented reaches merely an improved upper, &c., having mock buttons and stitches, practically as an article of manufacture, although these words are not employed. The claim is as follows:

The improved boot and shoe uppers, or other leather work, having a series of mock buttons, formed as described, each button being provided with embossed stitches, as shown and described.

The real and only question, then, which this case now presents is, whether the upper provided with these devices, which upper is to be substituted for the ornamental one now employed having genuine buttons and stitches, is patentable as an article of manufacture.

Tested by the criterion laid down in Charles A. Moore, (Decisions, 1871, p. 249,) the answer is easy: First, it is, of itself, an article of trade. Second, it is useful. And in this connection it is to be observed that there are two recognized and reliable tests of the utility of an article of manufacture; the first referring to its function or operation, and the second to its cost of production; and it is immaterial whether an article of manufacture works a benefit in what it does when in use, or in what it saves, as a substitute, in cost of production. It is, in either case, endowed with that element of usefulness required to render it patentable. Judged by what it saves in cost of production over the ordinary uppers having genuine buttons, this upper is, as already stated, useful. Third, it is "so different in essential points from other articles of the class to which it belongs as to be easily distinguished in the market.” With reference to this point, in order that there may be no misunderstanding, the precise words of the Commissioner should be noted. He says, "so different in essential points," clearly referring to those prominent requirements of the law defining patentable subject-matter, and referring to the element of novelty which must attach to the article itself, and be apparent upon reasonable inspection by the public, or that portion of it for whom the article is intended.

As this case is now presented, I think it should be examined as to the novelty of the alleged invention, which is the only question 1 perceive as to its patentability.

J. D. DIFFENDERFER.

Appeal.

APPEAL FROM THE PRINCIPAL EXAMINER IN THE MATTER OF THE APPLICATION OF JOHN D. DIFFENDERFER FOR LETTERS PATENT FOR A DESIGN FOR DESK-STANDARD.

(Decided July 8, 1872.)

Practice under Rule 44-Design patents-Functional claims.

In an application for a design patent both the obverse and reverse of the design may be shown.

But the views should correspond, that is, illustrate like portions of the device claimed.

A patent for a design cannot be granted where the function of a device forms an element of the claim.