W. B. LE VAN.-EX PARTE.

APPEAL FROM THE PRIMARY EXAMINER ON AN APPLICATION FOR LETTERS PATENT FOR AN ENGINE-GOVERNOR.

(Decided March 2, 1872.)

Practice in substitute applications.

Where a new application is filed as a substitute for one previously rejected by the Examiners-in-Chief, it should be examined upon its merits. It is not enough for the primary examiner to refer to the adverse decision of the Board of Appeals in the former case.

DUNCAN, Acting Commissioner:

The present application is filed as a substitute for one previously appealed to the Examiners-in-Chief, and by them rejected upon substantially the same grounds as had been assumed in the premises by the primary examiner.

Although the new application relates to the same invention, yet the applicant professes to have drawn the specification and claims in such language as to exempt it from the objections which constituted the basis of the former adverse decision. In this view, however, the primary examiner does not coincide. His statement is that the present case is substantially the same as the former one, and he notifies the applicant that the case is "rejected for want of patentability," assigning as the ground of this action that "the same invention has been heretofore denied a patent by the board of Examiners-in-Chief in an appeal taken to them by the same applicant in another and prior case, in which the invention was shown and claimed substantially in the same form as it is here shown and claimed."

In form this is a "rejection;" in substance it is a refusal to act, on the ground that the question of patentability, so far as the examiner is concerned, is res judicata. The applicant appeals, under Rule 44, and asks for an order upon the examiner directing him to take up the case and give it the usual examination.

I think the order should be granted. If the order be refused, and the party be thus compelled to appeal to the board from the "rejection" of the examiner, the only question that would be presented to the board for its consideration would be, not whether the invention is patentable, but whether there is substantial identity between the present application and the former one. If upon this question the board should pronounce in the negative, it would then become necessary to remand the case to the examiner for the examination which every person is entitled under the law to receive when for the first time he presents to the Patent Office an application upon a given invention; and upon such ex

amination he might find himself completely anticipated by the references that would be cited.

It would thus happen that an applicant to whom the law guarantees a judgment on the question of novelty, upon the payment of the desig nated fee of fifteen dollars, would be forced to pay a second fee of ten dollars before being accorded the examination contemplated by the law, and this, too, notwithstanding he had at the first presented his application in the very form in which, after the payment of this second fee, the examination would be given him.

If, again, the board should pronounce affirmatively upon the question of identity between the two applications, an appeal to the Commissioner would carry up this single question only, and upon such an appeal, if the Commissioner should entertain the same view of the question as the board, the applicant would have no right to ask his judgment upon the sufficiency of the references cited in the former application. Before the Commissioner's judgment upon this latter point could properly be obtained, it would become necessary to have those references put into the record in the pending case; but this could only be done by sending the applicant back to the primary examiner, when he would again be compelled to work his way up by the slow course of appeal to the Commissioner. For these reasons it would appear to be the correct practice that the examiner, instead of pronouncing the two applications to be identical, and "rejecting" the latter one because the Examiners-in-Chief have rejected the former one, should name in the present case the references which in his judgment anticipate the invention. This will entail upon him no labored examination, since with his views, as already announced, it will only call for the transcribing of the references cited in the former case; and it will relieve the matter from all embarrassment, so that the applicant can, in the usual course of appeal, obtain the judgment of the board and of the Commissioner upon the patentability of the invention in the form in which it is now presented.

It is accordingly so ordered.

It should be stated in conclusion that so far as this decision modifies the practice established by the decision in ex parte D. M. Nichols, Commissioner's Decisions, 1870, p. 71, the modification relates to a matter which in that case, it is fair to presume, did not receive the Commissioner's special attention. The question then at issue was not so much how the examiner should proceed in making his rejection as whether he should take jurisdiction of the case so as to reject at all. On the latter question the Commissioner undoubtedly decided correctly; but as to the grounds on which the examiner's rejection should be based, it is believed that a more careful consideration of the matter would have led to substantially the same conclusion as that adopted in the present

case.

S. HOWES AND G. E. THROOP.

Extension.

APPLICATION FOR THE EXTENSION OF LETTERS PATENT NO. 19637, FOR GRAIN-SEPARATOR AND CLEANER, GRANTED MARCH 16, 1858.

(Decided March 4, 1872.)

Abandonment by withdrawal-Public use prior to application.

Where the invention was put into public use in 1854, and the application for a patent made in January, 1855; was withdrawn in June, 1856, and a subsequent application was filed within two years thereafter: Held, that the second application might properly be regarded as establishing a continuity with the first one, and that there was no such public use as to constitute a bar to the grant of a patent.

DUNCAN, Acting Commissioner :

The only point calling for special consideration in connection with this application is the public use of the invention before the filing of the application upon which the patent was granted.

It appears from the statement filed by the inventors in support of their present petition, that one machine was built by them jointly, and sold in the spring of 1854; that in the same year Howes built and sold, on his own account, six of the machines; and that Throop entered actively upon the manufacture in 1855. A joint application for a patent was filed January 27, 1855, which was rejected March 8 of the same year, and was withdrawn June 4, 1856. The patent was finally granted upon a new application filed February 26, 1858.

The question arises whether in this there was such a public use as should have operated as a bar to the grant of the patent. Under the statute then in force, which in this respect coincides with the present law, this public use must have been for more than two years prior to the application for the patent. To save the patent, then, it is necessary that the second application should be held to relate back to the first in such sense as to constitute a continuing application with it.

In the case of John W. Cochran, Commissioner's Decisions, 1869, and in Gray vs. Hale, Ibid., 1871, it was decided that the withdrawal of an application did not necessarily imply an abandonment of the invention; and in the former of these cases the rule was laid down that, if the renewed application were filed within two years of the date of the withdrawal, this would be a reasonable time, and a renewal thus made might properly be regarded as establishing a continuity of application, which would make it necessary that a public use, such as would operate as a bar to the grant of a patent, should have taken place two years before the filing of the first application. Upon the strength of this rule it is decided that the patent of Howes and Throop was properly granted originally; and, accordingly, no objection thereto appearing on other grounds, the extension asked for will be granted.

LEVI STEVENS.-EX PARTE.

APPEAL FROM THE EXAMINERS-IN-CHIEF ON AN APPLICATION FOR LETTERS PATENT FOR AN IMPROVEMENT IN THE PROCESS OF BURNING ASPHALTUM.

(Decided March 5, 1872.)

Invention distinguished from double use.

Merely to apply a device to another use than the one for which it was originally intended involves no invention, and is simply double use; but when adaptation is required to secure the new result, invention is presumed, and the new organization may be patentable.

Machinery for superheating steam and using it when thus superheated for liquefying asphaltum for use as a fuel, and for atomizing it in the furnace: Held to be patentable, notwithstanding machinery, in many respects identical, and yet requiring modifications to adapt it to the new purpose, had previously been used for spraying liquid petroleum in a furnace by means of steam at the ordinary temperature. LEGGETT, Commissioner:

The alleged invention in this case is a device for using asphaltum as fuel in producing steam. It is well known that similar, and, in many respects, identical mechanism, has heretofore been devised for burning fluid petroleum and other liquid hydrocarbons; but the applicant seems to be the first to successfully adapt this machinery to the burning of asphaltum. Liquid petroleum can be atomized or sprayed in the furnace by wet steam, or steam at ordinary temperature; but asphaltum can be rendered fluid only by a high temperature, and then must be atomized by a jet of superheated steam. Hence, to burn asphaltum, applicant needed to add to existing machinery an arrangement for superheating the steam, and for using this superheated steam in liquefying the asphaltum, and in atomizing it when it reached the furnace. With this arrangement he has secured a new and useful result. He can economically use asphaltum as fuel in the production of steam-an end not before attained.

Clark Fisher's device for burning the common liquid petroleum, patented July 23, 1867, is not capable of burning solid petroleum or asphaltum, and hence is not a sufficient answer for applicant's device, which will do it.

To merely apply a device to another use than the one for which it was originally intended involves no invention, and is simply double use and not patentable; but when adaptation is required to secure the new result, invention is presumed and the new organization may be patentable. In this case the applicant has certainly done more than to merely apply Fisher's furnace to a new use. He has adapted it to superheating the steam, to liquefying asphaltum, and to spraying it in the furnace with steam superheated to a temperature that will unite with the atomized asphaltum and burn.

The decision of the Board of Appeals must therefore be reversed.

The applicant, however, has failed to describe in his specification the true state of the art, as he has entirely ignored all that Fisher has done. When he amends his application so far as to disclaim the invention described in Fisher's patent of July 23, 1867, his patent will be granted.

J. B. SLAWSON.-EX PARTE.

Reissue.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF AN APPLICATION FOR REISSUE OF LETTERS PATENT GRANTED TO HIM AUGUST 7, 1866, FOR AN IMPROVEMENT IN FARE-BOXES.

In a combination of

(Decided March 9, 1872.)

1. An opening for receiving money or tickets;

2. Alternately sloping shelves in a downward series;

3. A platform for the fare, with glazed openings for its inspection;

4. A lever to trip the platform;

5. A locked box to secure the collected fares:

Held, That the parts co-operate to produce a new and useful result.

Such a combination is new and patentable, even though each of the separate parts may have been used before for analogous purposes.

Such a collocation requires in its selection and adaptation an exercise of inventive and mechanical skill. It completely answers the purpose designed, and no part could be dispensed with without impairing its value.

LEGGETT, Commissioner :

The device in question is the fare-box quite commonly used in streetcars for collecting and safely keeping passenger-fares without the aid of conductors. It consists of several parts:

1. The opening or orifice for receiving the money or ticket.

2. Several shelves arranged alternately on the opposite sides of the box, and sloping downward so as to permit coin, fractional currency, and tickets to readily pass downward, yet furnish certain protection against any effort to extract money by inserting a wire at the orifice.

3. A platform, upon which the fare falls, having two walls of the box at this point made of glass, so that the driver from the outside of the car and the passengers on the inside may inspect the fare and see that the correct amount has been paid.

4. A lever by which the inspection-platform may be tilted by the driver so as to deposit the fare into the safe beneath.

5. The safe at bottom of the box, where the fare may remain securely until removed by the person intrusted with the key for such purpose.

The examiner finds that the first of these elements is common for anal