Hisey v. Peters, post,—; 71 O. G., 892; recently decided should not be decided in this interference proceeding. It will be the duty of the Examiner to consider this point upon the return of Hunter's application to his jurisdiction. No different conclusion is reached upon this rehearing from that heretofore announced, and it is accordingly again adjudged that Hunter is the prior inventor, and the decision reversing that of the Examinersin-Chief is undisturbed. THOMSON v. PRIEST v. WETMORE. Decided March 16, 1896. 71 O. G., 1769. 1. INTERFERENCE-PRIORIty-ReductION TO PRACTICE. Where a large dynamo was provided with the brush-holders in issue and was run for a time successfully under conditions of use such as would represent actual practice, Held to constitute a reduction to practice. 2. SAME-SAME-SAME-FAILURE TO PRODUCE THE DEVICE. Where the brush-holder was used successfully on a dynamo, then laid aside, and could not be found when the testimony was taken, Held that the failure to produce the device had no effect on the question of reduction to practice, except that it suggests that the device did not work successfully; but on this point the direct evidence outweighs the suggestion. 3. SAME-SAME—ABANDONMENT OF THE INVENTION. Where T reduced the invention to practice in 1886, successfully tested it, then laid it aside, filed an application therefor in the same year, which application his attorney permitted to become abandoned without his consent, and in 1893, after learning that another party had an application pending for the same subjectmatter, filed another application therefor, Held not to constitute abandonment of the invention. APPEAL from Examiners-in-Chief. BRUSH-HOLDER. Application of Elihu Thomson filed February 20, 1893, No. 462,984. Application of Edward D. Priest filed August 25, 1892, No. 444,063. Application of Earl P. Wetmore filed February 26, 1892, No. 422,852. Messrs. Bentley & Blodgett and Mr. G. R. Blodgett for Thomson and Priest. Mr. William A. Rosenbaum for Wetmore. SEYMOUR, Commissioner: This is an appeal taken by Thomson from the decision of the Examiners-in-Chief awarding priority of invention to Wetmore on the following issue: The combination of a brush-clamp and support for the same, one swinging upon the other, and means for maintaining the clamp always parallel to a given plane. Early in the year 1886 Thomson had a complete mental conception of this invention. Under his direction working-drawings of one form of the device in question were made by W. O. Wakefield, draftsman for the Thomson-Houston Electric Company, and finished by February 10, 1886. The order to make patterns for it was issued in the factory February 12, 1886. The order for the brush-holder itself was issued March 17, 1886, and the brush-holder was completed about the 30th of the same month. Later a dynamo with a capacity of two or three hundred incandescent lights was provided with the brush-holders thus ordered and made, with which the machine was run for a time. This was on the testing-room floor. The brush-holders under this test worked successfully. The conditions of use were such as would represent actual practice with commutator-brushes, and the object of the apparatus was to prevent change of the angle of application to the commutator during Both the dynamo and the brush-holders were soon afterward laid aside because the brush-holders of a different construction then in use were cheaper and were well understood by the men in charge of the dynamo. wear. This device was sought for in order to make it an exhibit in this case as the time approached for taking testimony, but was not found. Nevertheless, its making and its use upon a dynamo were admitted orally by counsel for Wetmore in argument before me. The failure to produce this device cannot weigh heavily against Thomson upon the question of reduction to practice, except in the one aspect of that question, whether its working was successful as claimed. It is urged that, since if it failed in practice it would probably not be kept, its loss is evidence that it did fail in practice; but the direct evidence outweighs this suggestion and is thought to fully establish the complete reduction to practice of Thomson's construction and its successful working. Again, its loss is contended to be evidence that Thomson in fact abandoned the invention. The brush-holders in question, after the use herein before detailed, were not discarded or thrown away, nor was the invention embodied therein abandoned, unless the foregoing facts constitute abandonment, together with the circumstance that Thomson's application for a patent thereon was not filed until February 20, 1893. It is held that these facts do not of themselves constitute abandonment of the invention. Thomson in 1886 employed an attorney to solicit and obtain a patent for this invention, and on July 26, 1886, application Serial No. 209,142 was filed therefor. Action thereon was had by the Office October 9, 1886, and no response was afterward received by the Office from the attorney. Accordingly the application became abandoned on October 9, 1888, by operation of law. Thomson was not informed of this by his attorney, nor did he know what the attorney had done in the case, and it appears that the application became abandoned without Thomson's consent. In 1893 Thomson heard that one of the draftsmen in the employment of his company was a party in an interference, as to which he was informed that the subject-matter was the same as that of his own earlier application. Upon investigation it was found that Thomson's case had become abandoned. Thereupon, on February 20, 1893, he filed the application in this interference, and for the same subjectmatter as that of his earlier application. I do not find in these facts sufficient to justify a conclusion that Thomson had thereby abandoned the invention. As Thomson had conceived this device, constructed it in full size, and operated it upon a dynamo in 1886, and had thus fully reduced it to practice, and since Wetmore did not conceive the invention earlier than September 1, 1891, it is considered that Thomson was the prior inventor. Priority is accordingly awarded to him, and the decision of the Examiners-in-Chief is reversed. EX PARTE KNUDSEN. Decided January 28, 1895. 72 O. G., 1. FUNCTIONAL CLAIMS-DEFINITION. 589. Functional claims are, first, those covering a function, result, or effect not a product or composition of matter; second, those covering the function of a machine or apparatus; third, those reciting the functions of elements and not their structure, and, fourth, those defining sets of mechanism by statements of the results produced. 2. SAME-PRACTICE. Claims of the first class are usually participial in form. Held not to be patentable and should be rejected. (Ex parte Simonds, C. D., 1870, 23; ex parte Hahn, C.D., 1875, 107; Rob. on Pats., Vol. 2, sec. 518, notes.) 3. SAME-SAME. Claims of the second class are in the form of methods or processes or equivalent expressions. Held should be rejected. (Corning v. Burden, 15 How., 252; Rob. on Pats., Vol. 2, sec. 529, notes.) 4. SAME-SAME. Claims of the third class define the construction as “means,” “mechanism,” or "devices" for effecting certain results or define certain named elements or the device by statements of function instead of structure. Held should be objected to if vague or indefinite or rejected on references disclosing the combination and the functional qualifications, or both. (Ex parte Pacholder,C. D., 1890, 55; 51 O. G., 295; Morley Sewing Machine Co. et al. v. Lancaster, C. D., 1889, 380; 47 O. G., 267; ex parte Halfpenny, post, 91; 73 O. G., 1135.) 5. SAME-SAME. Claims of the fourth class define sets of mechanism by the results produced. Held should be objected to and receive action on their merits. (Smith & Egge Mfg. Co. v. Bridgeport Chain Co., C. D., 1891, 486; 56 O. G., 1449.) ON PETITION. VALVE-CONTROLLING MECHANISM. Application of Jacob B. Knudsen filed November 20, 1893, No. 491,489. Messrs. Pierce & Fisher for the applicant. FISHER, Acting Commissioner: This is a petition "that the Examiner in charge of said application be advised that the said claim is in proper form for consideration on its merits and directed to proceed to examine said application upon its merits." The claim in question is as follows: 1. The combination, with a suitable valve for controlling passage of fluid under pressure, of differential spring mechanism for said valve, said spring mechanism being arranged to exert a materially greater pressure in resisting the initial movement of said valve from its normal position than said spring mechanism exerts in the initial return movement of said valve toward its normal position after it has been forced to a considerable distance from said normal position, whereby when said valve has been moved to a considerable distance from its normal position by fluid pressure it will remain in the position to which it has been so moved until said fluid pressure has materially decreased below the amount of pressure necessary to effect the initial movement from its normal position, substantially as described. On May 8, 1894, this claim was rejected by the Examiner on the ground that it set forth "merely the function or mode of operation of applicant's device," and on May 23, 1894, it was again rejected as covering "merely the function of the device." In the Examiner's statement ex parte McClellan (O. D., 1892, 125; 59 O. G., 1763) is cited as authority for this rejection. Strictly speaking, the Examiner's action being a rejection ought not to be reviewed at the present time by me; but on account of the many petitions that have recently been brought involving functional claims and those indefinite through functional phraseology it is deemed desirable to consider such claims somewhat in detail, and the present case offers an opportunity for such a discussion. Claims of this character may be divided into four classes: first, those covering a function or a result or effect, (excepting when such result is a product or composition of matter,) and nothing more; second, those covering the function of a machine or apparatus; third, those which are indefinite, in that they recite the functions of certain elements named in the claim to the exclusion of proper structural definition, and, fourth, those which cover sets of mechanism by setting forth the results which such sets of mechanism severally produce. Claims of the first class are usually participial in form. They are not for substantive mechanism, but for the result which such mechanism produces. Examples of this class are given in ex parte Simonds, (C. D., 1870, 23,) where the claim was— producing in cutting presses a successive change in the point of contact of the cutting block with the cutting die and in ex parte Hahn, (C. D., 1875, 107.) These, with many other decisions, both of the Patent Office and courts, (see the cases cited in connection with section 518 of Robinson on Patents, vol. 2,) have held such claims to be invalid. As the ground of these decisions is that the claims are for a function or for an effect, and that they are therefore not patentable, the action pertains to the merits, and the Examiner's action should be a rejection. Claims of the second class, for the function of a machine, are expressed in the form of a method or process or else in such terms that they may be construed to cover a method or process. These claims are also invalid. (See Corning v. Burden, 15 How., 252, and the cases cited in connection with section 529, Robinson on Patents, vol. 2.) As the action in this class goes to the merits, these claims should be rejected. Claims of the third class, that are indefinite in that they define the construction sought to be covered by the use of such terms as "meaus," "mechanism," and "devices," for effecting certain results, as set forth in ex parte Pacholder, (C. D., 1890, 55; 51 O. G., 295,) or that recite the functions of certain named elements of a combination or of the device as a whole, to the exclusion of proper structural definition, are the claims which cause the most trouble, as frequently it is a matter of great difficulty to decide whether such claims are subject to objection or to rejection or to both. The difficulty, too, is often increased by the fact that a broader construction ought to be given the claim, if it cov. ers a new departure in the art, (Morley Sewing Machine Oo. et al v. Lancaster, C. D., 1889, 380; 47 O. G., 267,) than if it is for an invention in an already developed art. The use of the above-noted phraseology does not of necessity render a claim objectionable, for where the idea is clearly stated and the combination or relation of parts to produce a desired end is plainly expressed the breadth of the statement of the claim is no reason for objecting to it. It is only necessary that these expressions shall clearly distinguish what is new from what is old in the art or from fair equivalents thereof. If they do this, the question is then one of patentable novelty-that is to say, claims of this order are not objectionable in form on the ground that they are too broad, but only because they are vague or indefinite. (Ex parte Halfpenny, post 91; 73 O. G., 1135.) When indefinite, they should be objected to; but they can only be rejected on references when these disclose both the complete combination and the functional qualifications covered by the claim. In the present case the Examiner states that the invention covered is in a highly developed art, and that while he has at his command ref erences which show the combination he is unable to find a reference which shows the combination having the functional qualifications mentioned in the claim under consideration. Such being the case he was wrong in rejecting the claim, since breadth is not, generally speaking, a proper ground for rejection in the absence of references except in unusual cases-as, for instance, when a claim is broader than the invention, as was the claim considered in ex parte Opdyke, (C. D., 1890, 39; 50 O. G., 1293.) Furthermore, the reason given by the Examiner-that the claim covers the "function of the machine”—is not thought to be correct. The claim is not a process claim, nor can it be fairly construed |