capital, possessing the means, would take the patent. Such an interpretation of the teaching of the courts would make their decisions worse than nonsense.

In the cases of Johnson vs. Root, 1 Fish., 369, and Ransom vs. Mayor, 1 Fish., 272, which the board quote to sustain their decision, the question was who completed the invention first, not who completed the first machine; but the race was in each case such that completion of the invention could only be determined by inquiring who first embodied it in a working machine? This will be found true in nearly all the decisions where stress has been given to the time of the practical application of the invention in working machinery.

To invalidate a patent already granted, following the analogy of vested rights of other kinds, the courts have held, with great uniformity, that prior invention must be established by the highest possible class of testimony, viz., working machinery. In such cases the working machinery must anticipate, not the date of the patent merely, but the date of the patentee's invention.

If an inventor delays to put his invention into practical use for a time so long as to give evidence of a want of due diligence, and in the mean time another independent inventor invents the device and puts it into use, the original inventor may lose his rights; but the question of "due diligence" can scarcely find a foothold in the short space of four months between Morse's invention and the filing of his application. The evidence shows that he was an employé; that he was not entire master of his own time; that other inventions and applications necessarily engaged much of his attention; but, still, he was in the Office two weeks ahead of his competitor.

The remarks in both the majority and minority decisions of the board disparaging the character of the invention itself, are of doubtful propriety. The only question before the board was that of priority, and with their decisions on that point they should have left the case. They take occasion, however, to say that "it has heretofore been a well-established principle in the Office that the mere swaging out of well-known articles in dies, or the getting up of dies for such purposes, involves no invention and does not deserve a patent."

The records of the Office will not sustain this statement, but will show that a large number of such patents have been granted, and most of them properly, I think. Some of the most valuable inventions that have been patented may be found among swaging-dies, and I am at a loss to understand the sweeping criticism of the board. Whether this particular device or process was properly regarded by the examiner as patentable or not I have not inquired, nor do I desire to do so here. The man, however, who invents a new and useful mode of swaging the head of a pin is as justly and legally entitled to the protection of a patent as he who invents a mode of transportation that ignores time and distance. The amount of usefulness of an invention, or the measure

of genius required to devise. it, cannot properly be taken into account in deciding for or against an application. When novelty and usefulness are admitted, invention must be presumed, and the question of patentability is already decided.

The majority decision of the Board of Appeals is reversed, and priority of invention awarded to Morse.

HYMEN L. LIPMAN.

Extension.

IN THE MATTER OF THE APPLICATION OF HYMEN L. LIPMAN FOR AN EXTENSION OF LETTERS PATENT FOR LEAD-PENCIL AND ERASER; DATED MARCH 30, 1858, NO. 19,783.

(Decided March 25, 1872.)

The principle of the Lipman patent-a piece of erasive rubber inserted in the butt-end of a pencil, so that as the rubber wears the casing may be cut away from time to time-underlies the subsequent improvement, and being at the head of a class, the pioneer in its line is regarded with favor by the Office.

It has to break new ground and encounter prejudice; its eventual success incites com'petition, and it is but fair that subsequent improvers should pay tribute to the originator.

LEGGETT, Commissioner:

This invention consists in inserting in the upper end of a pencil, in the same manner that lead is inserted in the other part, a piece of erasive rubber, so that as the rubber wears the casing may be cut away from time to time, precisely as the wood is cut away at the other end.

The applicant claims to be the first ever to have made this combined pencil and eraser in this way. This claim is not contradicted by the records of the Office, nor is it denied by the remonstrauts. The exten sion is persistently opposed by the Goodyear Rubber-Head Pencil Company, and also by Eberhard Faber, an extensive manufacturer of leadpencils. The arguments against extension are based almost solely upon the allegation that applicant's pencil, as at first invented and patented, was not practical, and could not be sold until improved by subsequent inventors. In this allegation the remonstrants are only partially sustained by the testimony. Lipman's pencil, as first put upon the market, was undoubtedly very defective as compared with the same pencil with subsequent improvements added. In the original Lipman pencil the erasive rubber was regarded as too small, and the casing was so thin and frail as to split too easily; but even with these defects it was practical and useful, and would, no doubt, have continued in the market, except that improvements were made that obviated the effects named.

The principle involved in the construction of the Lipman pencil, how

ever, underlies all the subsequent improvements, and is the basis and foundation upon which they are built. The original trunk was Lipman's. The improvements of Reckendorfer and others were engrafted upon it. As patented, the Lipman pencil was capable of being used for the purpose intended, and hence had the requisite usefulness demanded by the law; and, being at the head of the class, the invention is one of those always regarded with favor in the Office.

The first sewing-machine patented would not be used to-day by any one, because it is worthless as compared with machines embracing subsequent improvements. The same may be said of mowers, reapers, cultivator, seeders, looms, fire-arms, &c.; but such facts do not, in the least degree, lessen the value or merit of the original inventions. The practice of the Office has been to regard with favor applications for extensions of such patents. The first inventor becomes the pioneer. He must overcome popular prejudice and create demand for the new article. Generally it is only after such demand is created, and after the thing patented becomes a source of profit, that others seek to take possession of the market by adding improvements. In such cases it is but equitable that subsequent patentees of improvements should pay tribute to the original inventor and pioneer.

The testimony is clear that the invention is of very considerable value, and that the applicant has received for it a sum so trifling as scarcely to be worth considering at all. I am satisfied, also, that he has not shown such a want of due diligence as to deprive him of the right to extension.

The extension is granted.

H. J. BRUNNER.-EX PARTE.

APPEAL FROM THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF H. J. BRUNNER FOR LETTERS PATENT ON IMPROVEMENT IN METALLIC MOLD FOR CASTING PLOW-POINTS.

(Decided March 26, 1872.)

Practice under Rule 44 as to the jurisdiction of a primary examiner in cases passed upon by the Board of Appeals.

When a case is appealed to the board of Examiners-in-Chief, the jurisdiction of the primary examiner terminates. His remaining duty is to follow the decision of the board.

LEGGETT, Commissioner:

The applicant was twice rejected by the primary examiner, and took appeal to the Examiners-in-Chief. The Examiners-in-Chief, May 10th, 1871, gave decision affirming the examiner's decision as to the second

claim, and as to a single clause in the sixth claim, and reversed his decision as to the remainder. Applicant was willing to abide by the decision of the board, and May 15 filed an amendment, striking out the second claim and the offending clause in the sixth claim, and asked for his patent. But the examiner replied that "in order that there may be no mistake as to the scope of applicant's invention, he is required to still further amend his specification so as to limit himself explicitly to the construction of his mold."

This action of the examiner was without proper authority. When the case was appealed to the board the examiner lost jurisdiction over it, except to enter the amendment required by the decision of the board, and to pass the case for issue. All the proceedings subsequent to the filing of the amendment of May 15, 1871, have been irregular, and are hereby set aside, and will be canceled upon the records. The examiner will pass the case for issue upon the amendment of May 15, 1871, if the applicant so desires. No further amendment will be required or permitted, except upon the order in writing of the Commissioner.

BYRON BOARDMAN.

Extension.

IN THE MATTER OF THE APPLICATION OF BYRON BOARDMAN FOR AN EXTENSION OF HIS PATENT GRANTED MARCH 30, 1858, AND REISSUED MARCH 6, 1866, FOR IMPROVED WIRE-STAPLES.

(Decided March 27, 1872.)

LEGGETT, Commissioner:

The invention covered by this patent relates to staples used for connecting the rods to the slats of window-blinds; and consists in flattening, pointing, and corrugating the legs of the staple in such manner that they may be driven easily and hold firmly without clinching, thereby making a better article with less material than the one before in use.

The extension is opposed, and the remonstrants rely upon a barbed spike, patented by Wm. G. Ballard, July 17, 1841, and upon a staple made by one Benson, of Illinois, to defeat applicant's claim to being the first inventor of the improved staple.

Applicant's patent has been in the courts and fully sustained in the suit of Rogers vs. Sargent, 7 Blatch., 507. In that suit the Ballard spike was offered by the defense, but was held by the court not to be the same device.

The Benson spike was made several years before applicant claims to have invented his, and if it is substantially the same, must, of course, defeat the extension.

Applicant's invention, as described in his claim, is a staple with the legs flattened into a wedge-shape, pointed and serrated or corrugated

on both sides, the flattening, pointing, and corrugating all being done by a single compression of dies made and adjusted for the purpose. Benson's staple had cylindrical legs, with two or more barbs raised on one side of each leg, and the points sharpened only by cutting the wire diagonally across, thereby throwing the point from the center. The barbs were raised by the stroke of a piercing instrument.

It is in proof that Benson made these staples to a limited extent between 1856 and 1859, and then abandoned the business, his machine being out of order. The two inventors had one end in view, and that was to furnish a staple that would adhere to the wood without passing through and clinching. But the mode of preparing the staples to secure that end were radically different, and of course different results were attained. The Benson staple could not be driven straight except by first pricking holes to insert it; Boardman's can be. Boardman's, being corrugated on both sides, could be made shorter and would hold more firmly; and the evidence shows that the corrugated legs are stronger than the barbed legs made from the same sized wire. In short, the testimony shows that Benson's was an abandoned experiment, and Boardman's an accomplished success. Benson made a few gross in 1857, 1858, and 1859, and gave it up, evidently as a failure. Rogers & Co. are making annually, under Boardman's patent, about seventy tons of these staples.

Applicant has complied with the statute in setting forth his receipts and expenditures, and has clearly shown that, without fault of his, he has not received a reasonable consideration for the established value of the invention.

The extension is granted.

H. DISSTON AND J. MORSS vs. J. A. TRAUT.

APPEAL FROM THE EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE RESPECTIVE APPLICATIONS OF THE PARTIES FOR LETTERS PATENT FOR A TRY-SQUARE.

(Decided March 27, 1872.)

Power of the Commissioner to review the decisions of the Examiners-in-Chief. While the Commissioner has power, in virtue of his general authority under the law, to arrest the issue of a patent allowed by the Examiners-in-Chief, this power should not be exercised except in cases in which it is beyond question that the board has given an erroneous judgment or one opposed to the general policy of the Office. DUNCAN, Acting Commissioner:

Traut proves his invention to have been reduced to practice as early as June, 1869.

His competitors filed their application in January, 1870; but, instead