Adams & Gifford have not the receptacle I, or anything answering thereto; Fitzgerald's upright crib is not an equivalent of the receptacle I; Sylla & Adams have only the usual platform on which the grain falls as it is cut; Emmert has no independent receptacle whatever; and not one of them has an arrangement of devices similar to that shown and described by the Marshes, which is the gist of their invention.

If the second claim stood alone, so that it also could be construed in connection with the statement of invention quoted, I should hold that it is not anticipated. But the third claim is limited to the relative arrangement of the same parts designated in the second claim. If, then, the second claim be interpreted as also limited to the arrangement of the devices specified therein, the second and third become identical claims, and both should not have been allowed. The second claim, therefore, must be construed more broadly-that is, as being for the combination of the "binders' platform J," and "binders' tables M M," irrespective of any special arrangement. Such a combination of platform and tables is to be found substantially in the machine of Adams & Gifford, and therefore this reference must be regarded as an anticipation of the second claim.

The novelty of the arrangement set forth in the third claim is unimpeached, and, therefore, with the exception of the second claim, I find no objection to the novelty of the invention claimed which should prevent the grant of an extension.

The value and importance of the machine, as a whole, are fully established. The statement probably will not be challenged that the Marsh harvester was the first really successful machine put into the field, in which the grain was bound on the machine. Sylla & Adams made a few of their machines which went into use, but, if I remember rightly, when they were before the Office asking an extension of their patent, they proved the manufacture and sale of only four or five hundred machines, after which they disappeared from the market. There is no evidence that any of the other machines, cited by the opposition, ever went into public use.

The difference, then, between the Marsh machine and its predecessors is the difference between failure and success. The testimony proves beyond question that, since 1865, the manufacture of the machines has been gradually increasing, and that at the present time there are some 10,000 in actual use.

This evidence of increasing popularity, though competing with the many improved machines of the present day, should be conclusive of the practical utility and value of the "Marsh harvester." As a whole, then, the invention may be regarded as of sufficient value and importance to the public to warrant an extension of the patents. It appears, however, that the particular invention specified in the second claim of No. 2,014 has been practically abandoned within the last few years. In the manufacture of machines for sale and use the "steady-pins h h" have been

dispensed with, and other devices substituted, which do not, in my opinion, present the mechanical equivalents of the former.

The invention in this claim, therefore, is neither valuable nor important to the public, and, if the patent had no other claim, its extension would be refused on this ground. I see no reason for making an exception to the general rule, where a claim of this description is coupled with others, which are unobjectionable. The spirit of the law certainly demands that extended patents shall contain only such matter as has been proved to be valuable and important to the public. Claims to improvements which have been discarded by the inventors themselves ought not to be left as dead weight in the patents. The plea that they will probably harm no one has no force whatever. The inventor has no right to an extension of what has no value, and the possibility of such claims being invoked to harass and cripple subsequent inventors should be removed by striking them from the patent. I think, therefore, that the second claim of No. 2,014 should be disclaimed.

There is no case as to diligence. The evidence on this point is clear and decisive. The inventors appear to have put forth all efforts in their power to introduce their machine into public use; but, as usual in the class of harvesters, it was several years before they overcame public prejudice to such an extent as to make their invention at all remunerative.

It appears from the statement of applicants that they have received in net profits $59,128. The remonstrants insist that this should be carried up to the sum of $100,000. I cannot agree with them in this opinion; but, even if they are correct in their averments, I do not think the remonstrants have good grounds for objecting to the extension on this account.

According to their own showing the Marshes have obtained three additional patents for improvements on their harvester-one in 1864, another in 1865, and the last in 1867. The manufacture of the machines in any considerable numbers did not commence until about 1865, and the remonstrants urge, from this circumstance, that the success of the machines is largely due to the improvements covered by these subsequent patents.

Now, if this be so, it is only fair that the profits should be divided among all the patents, and, according to the statements of remonstrants, I should think about equally. This would give $25,000 as the sum to be charged to the patents now under consideration; or throwing out the patent obtained in 1867, the sum of $33,000. I do not think that either amount can be regarded as a reasonable remuneration to the inventors. If, as the applicants seem to think, the patents now sought to be extended are more important than the others, being in fact foundation patents, then they are entitled to a larger share of the profits. But if increased so as to reach the sum admitted by applicants in their statement to be justly chargeable to these patents, it would still fall far below the

amount which I think the inventors ought to receive for the time, ingenuity, and expense bestowed upon their invention and the introduction of so valuable a machine into public use.

The extension will be granted upon the filing of a disclaimer to the second claim in each patent.

W. W. LEGGETT.

Appeal.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF WELLS W. LEGGETT FOR PATENT FOR SHOW-CARD, FILED MAY 4, 1872.

(Decided August 12, 1872.)

Novelty-Obvious use.

The discovery of a peculiar situation in which to apply an old process, not necessarily obvious from the nature and ordinary use of such process, is something more than the mere application of an "old device to a new use," and consequently is patentable. But if the use is obvious from the nature of the process itself, the product, although new in the sense of never having been produced in this way before, is nevertheless destitute of "novelty" in the patentable sense.

Cards having one side blank or containing an advertisment, and the other having reduced engravings printed thereon, being old: Held, that the application of the wellknown process of photo-lithography to the production of similar advertising cards is an application altogether obvious, and consequently not patentable.

THACHER, Acting Commissioner :

In this application the applicant claims, first, the show-card made as set forth, having reduced photo-lithographic or other diminished facsimiles of writing, printing, drawing, &c.; and, second, as an article of manufacture, blank business cards provided with similar fac-similes, the blank spaces to be filled by the purchaser with his advertisements. By disclaimer he distinctly limits himself to reduced fac-similes produced by the photo-lithographic or other like process.

The board say that if the process of photo-lithography "should be applied for any purpose which should require ingenuity, and more than ordinary skill to effect the adaptation," the discoverer of the means of adapting it would be entitled to a patent.

But more than this is true; the law goes a step further. If a manfinds out a peculiar situation not discovered before, and not necessarily obvious from the nature of the process and its ordinary use, in which to apply an old process to produce a useful result, he has made a discovery which is entitled to protection by a patent, because he has done some thing more than to merely apply "an old device to a new use."

The question is, has the applicant in this case discovered a peculiar adaptation for the process of photo-lithography, which is not necessarily

obvious from the nature of the process itself, and which is new in view of the references cited?

This question is answered by a consideration of what the process of reducing by photo-lithography is, and by the examination of the references. The steps in the process in question are as follows: First, a photographic negative of the object is taken, in which the reduction of the picture is accomplished; second, this picture is transferred to the printing-stone; and, third, it is printed on paper or other suitable substance in the ordinary way. The only difference between this and the ordinary process is that in one case the reduced picture to be produced is transferred to the stone from a reduced photographic negative, and in the other it is engraved on the stone or plate and reduced during that operation.

It is certainly as obvious that the one representation, as it is that the other, might be printed on a business card; and it requires no inventive faculty to ascertain this fact. A man might, then, with the same propriety, have a patent for printing reduced representations produced by engraving, as for printing those produced by transfer to the stone or plate of a press from a photographic negative.

It follows from this view that there is nothing in applicant's discovery which is not as obvious from the nature of the process to which he limits his claim as from the ordinary printing process; and that if reduced representations upon cards have been made of similar character and purposes in themselves, by ordinary printing processes, they are substantial anticipations of his device. Such the references produced by the examiner undoubtedly are. They are cards, one blank on one side and the other with an advertisement, and both having reduced engraved prints, substantially like applicant's.

I am, therefore, unable to discover any patentable difference between these references and the alleged invention of applicant.

The decision of the Examiners-in-Chief is affirmed.

MASON, IMLAY, AND THE OWNERS OF MASON'S PATENTS.

Motion.

IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION AND PATENTS OF J. L. MASON, THE APPLICATIONS OF C. G. IMLAY AND T. G. OTTERSON, AND THE PATENT OF S. B. ROWLEY FOR AN IMPROVEMENT IN FRUIT-JARS.

(Decided August 14, 1872.)

Practice in interferences.

A reasonable presumption lies against the reopening of an adjudicated case.

A case cannot be reopened to oblige a party who purchased an interest in an invention which was, unknown to said purchaser, in interference. In such a case the maxim caveat emptor applies.

THACHER, Acting Commissioner :

This is the third motion to reopen this case, and is based on certain affidavits, which are intended to supplement the last motion and overcome the objections to a rehearing stated in the decision of July 20, 1872. As a general rule great care should be exercised in granting rehearings. The interests of the successful party are put into jeopardy by the reopening of a case, and an unexpected burden is laid upon him in the shape of additional and, it may be, unnecessary expense. A rehearing, then, ought never to be granted except upon the clearest showing that the petitioner has suffered injury by reason of defects in his case, which were unavoidable, and for which he is not to blame. He should also be able to show that there is at least a strong probability that the injury which he supposes himself to have suffered may be remedied by granting his prayer.

Upon a careful consideration of this case I am satisfied that justice and equity do not demand the reopening of the interference. The motion is made in behalf of John L. Mason, C. G. Imlay, and the owners of Mason's patents.

1. Mason may be considered as out of the case, for no reasons are given for his neglect to introduce testimony to prove the date of his invention, except those which were filed in support of the first motion to reopen, aud which were then held by the Commissioner to be insufficient. This decision cannot be disturbed, and therefore there is no occasion for taking further notice of Mr. Mason.

2. Imlay has an application of much later date than the patent of Rowley, on which the decision of the Examiner of Interferences was based. If this motion should be granted, Imlay could take no testimony, and therefore there is no pretense of his being able to change the decision so that it will be in his favor.

3. The reason heretofore given by the "Consolidated Fruit-Jar Company," who are the owners of Mason's patents, why the case should be reopened is that they were not aware of the interference when they purchased these patents of Mason in February last, and therefore have bad no opportunity to take such steps as would protect their interests. This cannot be regarded as a sufficient reason for reopening the case. On the general principle of caveat emptor, it was their duty to inform themselves of the exact condition of the patents they proposed to pur. chase. They bought at their own risk, and ought not now to expect the Office to take action to relieve them from embarrassment which is the result of their own negligence.

4. This interference was occasioned by the application of Otterson. His claim is for the combination of certain devices which are shown in each of the other applications or patents; but the particular combination is claimed in none of them. The limit of appeal has expired, and as Otterson took no appeal from the decision of the examiner, he is out of the case and has no further interest therein. As already stated, the