sion of Monce, and the rotary cutter with its shank being used by him as a model in the manufacture which he was carrying on under a patent for glass-cutters, issued to him in the month of June. There is no reason to suppose that he did anything further with the invention until after Adams had entered into negotiation with him and with his partner, Ives, for the sale to them of the invention as developed by Adams. The reason for this apparent negligence he frankly confesses to have been, to use his own phrase, "to run the original tool [manufactured under his patent for glass-cutters] until the market was filled up before introducing a new article;" though he avers that he never abandoned the intention of procuring a patent on the compound tool. His application, now pending, was filed on the first day of December, 1870.

There can be no doubt from the testimony that Monce was the first to conceive of the alleged invention, and to give it some form of embodiment. The only question is whether his laches and the superior character of the proofs offered by Adams are such as to entitle the latter to be regarded as the prior inventor.

Adams must be held to have used due diligence in perfecting his in vention, and in giving the public the benefit of it through the ample instructions for fabricating the article which are contained in his specification. Monce delays more than a year and a half after the alleged date of his invention before filing an application-delays for the avowed purpose of filling the market with an article which he expects will at once depreciate in public estimation when the new article is made known; and files his application at last only when he finds a rival inventor seeking to cover the same ground; and even then not until a month after his competitor has taken steps, by filing in the Patent Office a complete application for letters patent, to give the public a full description of the invention. This, under the well-settled practice of the Office, must be regarded as working a forfeiture of his rights, unless, as he contends, he had an indefeasible right to delay two years after perfecting his invention before making an application upon it.

His reasoning seems to proceed upon the ground that, under section 61 of the patent act of 1870, which continues in force one of the provis. ions of section 7 of the act of 1839, a patent cannot be invalidated by proof of public use or sale of the invention in this country for any period not exceeding two years prior to the filing of the application; and that, a fortiori, one's right to obtain a patent cannot be affected by the mere fact of a subsequent independent inventor auticipating the application, provided the interval between the application and the making of the invention on which it is based does not exceed two years. This is a non sequitur. The section named saves an existing patent as against a public use limited in point of time as specified; but neither in terms nor inferentially does it extend any guarantee to an inventor against the superior diligence of a competitor entering the field at a later date, un

less the first inventor not only reduces his conceptions to practical form, but proceeds to put the invention into public use or on sale. If he does this, he thereby destroys the right of a subsequent inventor to protection, no matter how diligent he may be; since no man is entitled to a patent for that which, prior to his own invention of it, has gone into public use. But if, uninfluenced by controlling circumstances, he fails to do this, he assumes the risk of incurring all the disabilities that attach to the man who comes out second in a race of diligence.

What constitutes a "race of diligence"-whether it is ended when the invention is once reduced to practice-is not clearly indicated in the law. The statute employs the phrase "reasonable diligence in adapting and perfecting" the invention. If this be not mere tautology, it must mean something more than merely reducing to practice; it must intend positive action looking to the introduction of the invention, or, at least, to giving the world knowledge of it. But, whatever be the significance of these particular words, there can be but little doubt that in fact an inventor is to be held to as strict accountability for the time suffered to elapse between the perfecting of his invention and its revelation to the public through the medium of the Patent Office as for the time consumed in reducing it to practice after the original conception. This question was discussed at length in Gray vs. Hale, Commissioner's Decisions, May 27, 1871; and the conclusion reached upon the strength of the authorities then cited, to the effect that a willful or negligent postponement of one's claims may, under some circumstances, work a forfeiture of his right to a patent, even in the actual absence of any intention to relinquish it, or of any public use of the invention known and assented to, has an important bearing upon the present case. The fact that the delay extends over a less period than two years is, in itself, considered an immaterial circumstance. Not even this limited period of exemption is accorded an inventor. The object of the patent law is to multiply inventions, with view, primarily, to the public advantage, and to secure their free use at the earliest date; and to this end its policy is to reward that man from whom the public actually derives the benefit received, unless, in fact, another, prior in making the invention, is proceeding to give it to the world with no further delay than what is imposed by circumstances beyond his control. If an inventor puts his invention into use or on sale, he causes that the public shall have the free use of it at the end of two years, unless he sooner makes an application for a patent; and in this last event, the free use of it devolves upon the public at the end of seventeen years from the date of any patent that may be granted. On the other hand, if an invention when perfected may be withheld from use and kept a secret without the risk of forfeiture by reason of its subsequent discovery by another party, such right, for aught of limitation imposed by statute, may continue indefinitely; can be terminated, in fact, only by the actual introduction of the invention by another for the space of two years.

Even the granting of a patent to the subsequent inventor would not defeat it; nothing less than a two years' actual or constructive public use under the patent could avail for this purpose. But such a doctrine would be obnoxious to the whole spirit of the patent law, and is contrary to a long line of well-established judicial decisions.

It is true, as often announced, that mere delay, no matter how long continued, cannot impair an inventor's right to a patent. It is only when, by reason of such delay, another party gains the opportunity to give the invention to the world, and actually becomes the first to do this, that the first inventor's rights pass away.

It is also true that the law looks with indulgence upon delays which arise from the circumstances of the party. Hence the requirement of reasonable diligence only; but in the present case there was no controlling necessity that compelled delay. It was an intelligent, deliberate act on the part of Monce, and done, not for the purpose of further improving the invention before entering upon the manufacture of it, so that the public might eventually reap the greater benefit, but for the less praiseworthy object of filling the market with inferior goods before the public should become aware of the existence of the improved article, which, when once known, was to terminate the demand for the others. However little the bearing of this species of dishonesty upon the legal aspects of the case, it is plain that Monce has no valid excuse for his delay.

Adams is adjudged entitled to the patent, and the decision of the Examiners-in-Chief is affirmed.

J. ARKELL AND B. AND A. SMITH.-EX PARTE.

APPEAL FROM THE EXAMINERS-IN-CHIEF.

Invention-Claims-Patentability.

The inventor who should be the first to devise a tool or a machine to assist in the manufacture of bags of a given description, which previously had been made by hand alone, and by the use of the particular tool or machine thus devised to demonstrate the advantage of discontinuing the old method of hand manipulation, would not be entitled to a broad claim for the use of tools or of machines in the manufacture of such bags.

The man who first invents a special mode of manipulation by which square-bottom paper bags can be made without the use of the "former" previously employed, is no more entitled to block the path by a broad claim against inventors who originate other methods of doing the same thing than would the inventor of the first machine for making a given article of manufacture be entitled to control all machines capable of producing the same article, no matter how widely different in their principle of operation.

Au inventor who demonstrates the practicability of dispensing with the "former" previously used in making square-bottom paper bags by substituting therefor a system of preliminary creases or guide-folds is entitled to a patent; but his claim should be restricted to his particular method.

DUNCAN, Acting Commissioner :

This application proceeds upon the supposition that prior to the invention described the only known mode of making "square-bottom" paper bags was to draw the open tube over a rectangular block or "former," and then fold the upper end down upon the angles of the same. In this way the folds would be formed with such regularity as to produce a merchantable article. The new process consists in dispensing with the forming-block, and folding the bag by hand upon a plane surface. In order to secure the requisite degree of regularity in the structure certain preliminary creases or folds, duly described, are made, which are to serve as "guide-marks" in forming the permanent folds; and by this means it is contended that bags can be made with far greater rapidity than by the old mode, and at a greatly reduced cost. The relation which these preliminary folds sustain to the things claimed is set forth in the following extract from the specification :

It will be seen that by our process of forming the bottom of the bag by folding, creasing, and then refolding by the fold-marks as guides, the material may be folded into shape for pasting, and the bag be completed with greater rapidity and less handling than is possible where the bottom is folded over a former; and it will also be seen that by our method the bottoms must necessarily be made with great regularity so long as the first folds are made with any tolerable degree of similarity or precision. We do not wish to be understood, however, as limiting ourselves, in the practice of our invention, to first making folds to form marks or creases for guidance in making the bottom, and then forming the bottom by such creases in the manner described, as the bottom may be folded over into the shape shown without such guide-marks; but, having shown and described our new method of making square-bottom bags, by which we are enabled to dispense with the use of formers and do all the folding on a table or plane surface, what we claim as our invention, and desire to secure by letters patent, is the within-described method of forming the rectangular bottoms of bags or sacks-that is to say, by folding the flattened tube or body on a table or plane surface, and without the use of any former or block, substantially as described.

Construing this claim by the context, it is susceptible of no narrower interpretation than that put upon it by the Board of Appeals; it is broadly for dispensing with the block or former, and performing the work entirely by hand.

In support of this broad claim, applicants contend that they have been the first to overcome a formidable difficulty that inevitably presented itself when the former was laid aside, viz., the irregularity in the folding, which seriously impaired the merchantable character of the goods; and that, having devised one mode, to wit., the preliminary folds which they describe, by which this difficulty can be overcome, they are entitled to such claim as will enable them to control all modes of folding in which the former is dispensed with, and hand manipulation substituted therefor.

If the case were reversed; if previously bags of this description had been made by hand alone, without the use of a former or other tool or of a machine, and the present applicants had been the first to devise a tool or a machine to assist in the manufacture, and the use of the particular tool or machine thus devised to demonstrate the advantage of discontinuing the old method of hand manipulation-this certainly would furnish no ground for a broad claim on their part to the use of

tools or of machines in the manufacture of paper bags; they would be limited to the particular tools and machines which they had invented.

It is not seen that a different rule can apply in the present case. Applicants show a special mode of manipulation which enables them to dispense with the "former" previously used. The characteristic of their method is the making of preliminary creases or guide-folds in the manner shown. For this method, the question of novelty aside, they clearly are entitled to a patent. To this, however, they should be restricted. They have no more right to block the path against inventors who originate other methods of doing the same thing than would the inventor of the first machine for making a given article of manufacture be entitled to control all machines capable of producing the same article, no matter how widely different in their principle of operation.

The decision of the Examiners-in-Chief, refusing the reissue asked for, is affirmed.

CHARLES P. MIXER.-EX PARTE.

APPEAL FROM THE EXAMINERS-IN-CHIEF ON AN APPLICATION FOR LETTERS-PATENT FOR AN IMPROVED SASH-HOLDER.

(Decided January 3, 1872.)

Practice-Change of form.

To allow a claim merely upon the ground that it cau do no harm to the public would not be a sound rule of practice.

When doubt exists as to au applicant's right to a patent, the consideration that the grant of it can do no harm to the public way properly have weight in determining the action of the Patent Office.

Where the friction-plate of a sash-holder has the middle part of its face depressed so as to present bearing-surfaces at its ends only, and is pressed outward by springs placed directly beneath such bearing-surfaces: Held, that because by this construction the pressure of the springs, when the strip encounters any inequality at the jamb, is differently distributed than if the strip had a plane or unbroken surface, the change is not one of form merely, but involves also the principle of operation.

DUNCAN, Acting Commissioner:

Applicant's friction-plate, as prepared for insertion in a recess in the side of the sash, has the middle part of its face depressed, so that it bears against the jamb or frame at the ends only, being pressed outward by spiral springs placed directly beneath these ends or bearingsurfaces. From this construction it follows that whatever the inequalities in the jamb, the strip will always be held in contact with it at two points, these two points being directly over the springs; and by reason of this distribution of the bearing-surface it is claimed that a measura. bly constant degree of pressure will be obtained at the two points of contact.