exhibit is identified by Trested as having been made by them in the fall of 1870, and is presented as an exemplification of the completed invention. If it were in fact it would go far toward establishing their right to a patent. In argument they admit that the whole question now is: "Is Exhibit 3 the invention in dispute?" Upon this exhibit the board remark as follows:

"The hat, Exhibit 3, said by Trested to have been made in 1870, is referred to by Scrymgeour, in answers to Int. 44 and 45, who says that it may have been made in 1870, but not in its presentform; that the woven fabric must have been subsequently added. No notice is taken of this statement by Trested and Kendall, and it is corroborated by the appearance of the exhibit itself. It is that of an ordinary pulp hat lined with pieces of very thin buckram, imperfectly adhering to the pulp in some places. There are figures marked on the inside of the hat before the application of the buckram. This is not the invention in dispute. Trested and Kendall were manufacturing pulp hats in large quantities, and continued to do so; nor does it appear that they have ever made hats of pulp and buckram in the manner described in the patent of Scrymgeour. The latter alone has proceeded to manufacture this hat, having begun early in 1872."

It was urged at the hearing, while admitting the accuracy of the statement of the board as to the construction of "Exhibit 3,” that it is still within the limitations of the invention claimed. This view of the case I cannot take. The description of both parties has so restricted the invention that the claim is limited to paper pulp and fabric combined, so as to form an intimate union between the two, a construc. tion entirely wanting in "Exhibit 3."

I concur, therefore, with the board fully. The manifest insufficiency of this exhibit more than offsets the discrepancies in the testimony of Scrymgeour, and turns the scale decidedly in his favor. The decision of the board is affirmed.

J. G. AND J. S. ARMSTRONG.

Appeal.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF JOHN G. AND JACOB S. ARMSTRONG FOR PATENT FOR SPRING-SEATS FOR WAGONS, ETC., FILED August 17, 1872.

(Decided September 28, 1872.)

Invention as distinguished from mechanical skill.

That may be held to be the production of mechanical skill which a mechanic would be likely to hit upon as a modification of minor moment in the construction of a given thing.

Where parts are dispensed with and other devices employed in their places, rendering necessary certain additions to meet new aspects of the case: Held, that here is presumptive proof of invention, as distinguished from that form of skill which manifests itself in a mere change of expedients, such as the substitution of mechanical equivalents.

LEGGETT, Commissioner:

Applicant's wagon-seat, like the one shown in the patent of Steigmeyer and Reichert, granted July 16, 1872, rests on four coiled springs, one at each corner, which are supported on two cross-pieces connecting the lower ends of braces resting on the sides of the wagon-box, and are attached at their upper ends to the middle of the seat. As the seat is depressed the upper ends of the braces are borne down, and being secured at their lower ends to the sides of the wagon-box, some contrivance is necessary to prevent them from operating like a pair of toggle-levers to press out the box sides. In the patented seat this is accomplished by connecting the upper ends of the braces to a pair of links hinged to bearings on the middle of the seat bottom, which allow the braces lateral play. Applicant accomplished it by pivoting his braces direct to bearings in the same position, and terminating them below at their cross-pieces, and there forming a slide connection on the telescope prin. ciple, with end-pieces which rest on the box sides.

The construction of the spring-seat claimed is manifestly different from that shown in the patent cited, as is indicated by the claims themselves. But the two seats are constructed and operated upon the same general plan, and the examiner and a majority of the board hold that there is no patentable difference between them-in other words, that the differences which exist are such as a mechanic would naturally arrive at, through his skill and judgment as a constructor, without that sort of original contrivance which proceeds in the mind when inventions are evolved. Whether or not this position is correct is easily tested. Sup. pose a mechanic were set to work to make the patented seat. Would he be likely, as an indifferent matter, to hit upon the construction now claimed? Would he produce the applicant's rigid pivot-strip instead of the hinged links under the middle, and another device, in a different position, to dispense with them? If not, then the two constructions presented are not alternates or mechanical equivalents.

When the idea of employing the pivot-strip and dispensing with the hinged links is conceived, another modification becomes necessary, for the compensating rods or braces must have lateral play by reason of their oscillations. Some cheap and convenient construction must be devised to accommodate this necessity. But the patented seat does not suggest it, and it must be created anew, so far as this device is concerned.

Thus the points of difference of construction hardly appear to exhibit mechanical equivalents in this connection. When the completed seats are contemplated side by side, there are apparent distinctive character

istics that clearly commend the applicant's as an improvement, and I think such an improvement as mechanical expertism alone would not reach, by the light of the patent in question.

Applicant's construction is simpler and probably cheaper. It is just such simplifying modifications that cause steady progress in all the arts, and for the public good they should be recognized, encouraged, and rewarded through the Patent Office.

The claims presented are limited to the device as actually produced, and may be allowed.

The decision of the majority of the board is reversed.

W. W. LYMAN.

Extension.

IN THE MATTER OF THE APPLICATION OF W. W. LYMAN, FOR EXTENSION OF PATENT NO. 22,436, FOR IMPROVEMENT IN FRUIT-CANS, GRANTED DECEMBER 28, 1858.

REISSUED JUNE 16, 1868.

(Decided December 28, 1872.)

An extension will be refused when the claims under a reissue are palpably broader than the real scope of the invention.

The Commissioner, under an application for extension, is not concluded as to this point by the former action of the Office in the grant of the reissue.

The novelty of the original invention and the legality of the reissae come up for reconsideration, and may be traversed by the opponent in extension.

When a patentee slept upon his right to such an extent as to utterly disregard, for ten years, the general infringment of his claims: Held, that it constituted financial laxity. and want of due diligence.

THACHER, Acting Commissioner:

In his original specification the patentee says:

My invention consists in the manner in which I form a tight joint between the cover and the jar, by the use of the rubber packing, but so that the metal is not required to slip on the rubber.

The "manner" referred to, as exhibited in the drawing and model, and set forth in the specification, is as follows: A groove is formed in the top of the jar-neck, into which, or on the top of either of the walls of which, a rubber gasket is placed. A flanged cover is then laid on, and an inner flanged collar, which is provided with cam-slots into which studs on the neck or on a neck-ring engage, is brought down over the neck and cover. As the collar is turned in the proper direction the rubber is clamped, by the operation of the studs and cam-slots, between the flange of the cover and the groove or upper edge of the jar-neck. Thus a tight joint is formed and the metal in turning does not slip on the rubber. But Lyman was not the first to achieve this result. It was accomplished, with the same object in view, by R. W. Lewis, as shown by his patent of February 12, 1856, and by George H. Myers, as shown

in his rejected application filed in 1856, and withdrawn in 1857. Their means were different, but their principle was the same. Lyman was not, therefore, a foundation inventor, nor does it appear from the evidence that the construction of his device, as actually shown and described in his original patent, has proved more of a practical success than that of Lewis. In this connection the scope of the reissued patent is a consideration of very great importance as bearing upon the propriety of granting the extension sought, the equitable rule of practice being, as laid down in H. L. Lipman, Extension, Official Gazette, April 22, 1872, the pioneer inventors are regarded with favor. In view of the fact that Lyman was not a pioneer, and that he merely modified, and perhaps improved, an existing device operating upon the same principle, if his reissued patent is of broader scope than his invention, it would be unjust to extend it.

The claim of that patent is as follows:

Compressing the cover and jar together against an intervening elastic packing-ring, located between the lower edge of the flange of the cover and a seat formed below the lower end or edge of the neck or body of the jar, substantially as described.

The statement of the nature of the invention, which is not in the original patent, divides it into two distinct features as follows:

The nature of this invention consists in providing a shoulder or seat to receive and support an elastic packing upon the neck or body of a jar below its upper end or edge. It further consists in providing a rim upon the outer edge of the shoulder or (stop) seat to form a groove or depression to receive an elastic packing-ring.

These clauses are still further amplified by the remainder of the spe cification. It is obvious that the whole, including the claim, is ingeniously drawn to sweep the field of invention wherever the "principle" here involved is sought to be applied. I cannot recall a more glaring instance of the perversion of the just and beneficent provision of the law providing for reissues. I have no hesitancy in saying that this reissued patent should never have been granted, and that it cannot properly be extended. The obstacles upon its face being insuperable, it is hardly necessary to go into a discussion of the other considerations affecting the grant of an extension, which have been so ably presented by the respective counsel. But the point has been made that the Commissioner is concluded as to the validity of the reissued patent by the action of the Office in granting it. Neither the law nor the es tablished practice of the Office concedes this. The statute expressly requires a reconsideration, in the nature of a new trial, by the Commissioner, of the whole case in every application for extension, and it opens the door to and invites all proper opposition by requiring publication of notice. He is required to "hear and decide upon the evidence produced, both for and against the extension ;" and only when "it shall appear to his satisfaction that it is just and proper" is he authorized to grant the petition. Nowhere is the decision of the Office absolutely final as to the validity of a reissue. It must always be reviewed in applications for extension, and it will be reviewed, and per

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haps reversed in some cases, by the courts when the original patent is wholly unimpeachable. As to the effect of the decision of the Commissioner, in granting a reissue, in the recent case of Wells vs. Gill et al., Official Gazette, vol. 2, p. 592, Mr. Justice Strong says: "It is settled that it is not re-examinable in the circuit court unless it is apparent upon the face of the patent that he has exceeded his authority, unless there is such a departure of the new from the old patent that it must be held as a matter of legal construction that the new is for a different invention." If the rule obtaining in the Office was precisely the same as before the courts, it would not avail in this case, for the departure from the original patent is apparent upon the most casual comparison with the reissue.

Upon the point of diligence in obtaining adequate remuneration, applicant's case is, by his own showing, fatally defective. For nearly ten years, without any reason sufficient for his purpose now, he has practically slept upon his alleged rights. It is true he continued in the fruitcan business, but it was in connection with other forms and patents which cannot be referred to this as their foundation. This form and this patent seem virtually to have been abandoned. While "millions" of infringements of his "principle" were going on he interposed no legal obstacle, and allowed other enterprises quite as difficult to absorb his attention. However commendable such forbearance may be from a moral stand-point, it constitutes such financial laxity as to vitiate any appeal for a longer term with a more secure opportunity to levy tribute from the public, as an extension would go far to strengthen the presumption of the validity of this reissued patent.

I see no sufficient ground to support the grant of the extension sought, and it is therefore refused.

JOHN E. WOOTEN.
Appeal.

APPEAL FROM THE PRINCIPAL EXAMINER IN THE MATTER OF THE APPLICATION OF JOHN E. WOOTEN, FOR THE REISSUE IN TWO DIVISIONS OF LETTERS PATENT NO. 67,624, FOR IMPROVEMENTS IN RIVETS.

(Decided December 28, 1872.)

A patent for a process may be reissued with a claim for a part only of the process, if the same result may be obtained without employing the steps which are omitted from the claim.

A patent for making tubular rivets by coiling a flat strip of iron, and welding it, may be reissued with a claim for coiling it alone, if the welding is found to be unnecessary.

A claim for making rivets by coiling a flat strip of iron is something more than à claim for "a coil of strip iron."

A mere suggestion in the specification that the article monopolized may be used in a certain way, does not warrant the insertion in a reissue of a claim for a combination of the article with the mechanisms in connection with which it is to be so used.