its use in the wide range of musical instruments. It might not be long before some one else would discover a wood perhaps quite as valuable as the Canada fir. Such person, without any more invention than that displayed by the applicant, would also be entitled to obtain a monopoly upon the use of that wood in the construction of musical instruments. In my judgment the action of the Examiners-in-Chief should be and the same hereby is affirmed.

An objection holding that claims are functional is not a rejection, and therefore not appealable to the Examiners-in-Chief.

2. SAME.

A functional claim is vague, uncertain, and indefinite, and may be incapable of being understood. When the Office objects to such a claim it simply says to the applicant, put your claim in intelligible form and it will receive examination on its merits.

3. CLAIMS MUST BE CERTAin and DefINITE.

The objection that a claim is functional is one of indefiniteness. No one can tell with any certainty what invention is actually covered by a claim which is functional in form until it has received a judicial interpretation. It may be so absolutely functional, and therefore incapable of construction, as to be void, and the court would adjudge it so. In their desire, however, to save a patent the courts might construe and hold it to be a claim for the members or elements set out, if set out with sufficient certainty, which does not seem to be the case in the present claim. Hence the Office in insi ting upon its rights to require claims to be framed with sufficient certainty and definiteness acts not only in protection of the public, but as a friend and adviser of the applicant.

ON PETITION.

CONSTRUCTION OF ELECTRIC CIRCUITS.

APPLICATION of John A. Barrett filed May 9, 1888, No. 273,303.

Mr. Anthony Pollok for the applicant.

HALL, Commissioner :

Applicant petitions the Commissioner to direct the examiner to make final action upon claim 2, in order that applicant may be free to exercise his right of appeal.

The application contains several claims. When the case was first examined, no objection was made to claim 1; claim 2 was rejected, and in the same action claim 3 was held to be functional and indefinite. The objection as to the form of claim 3 was thereafter repeated; but the examiner, under ex parte Mill (40 O. G., 918), declined to give farther ac

tion on the merits until the formal objection to claim 3 was obviated. Hence the present petition.

The claim is as follows:

3. The interposition between two parallel metallic electric circuits, reciprocally inductive upon each other, of one or more metallic electric circuits inductively neutral to them, and if more than one to each other.

Petitioner does not controvert the assertion of the examiner that the claim is objectionable in the particulars stated, although he does not concede that it is; but he insists that such an objection is in effect a rejection relating to the merits; that whenever the office "refuses" a claim, for any reason, it is a "rejection," even though that expression is not used by the examiner, and that, this being so, he has the right of appeal to the Examiners-in-Chief. It is in this view that applicant requests the examiner to be required to take final action on claim 2, so that an appeal, will bring both claims before the Examiners in Chief for hearing. In ex parte Paige (40 O. G., 807) the Commissioner discussed the matter of the appeals from formal actions of the examiners. There the objection was indefiniteness of the claims. The objection that a claim is functional is one of indefiniteness. No one can tell with any certainty what invention is actually covered by a claim which is functional in form until it has received a judicial interpretation. It may be so absolutely functional, and therefore incapable of construction, as to be void, and the court would adjudge it sq. In their desire, however, to save a patent the courts might construe and hold it to be a claim for the members or elements set out, if set out with sufficient certainty, which does not seem to be the case in the present claim. Hence the Office in insisting upon its rights to require claims to be framed with sufficient certainty and definiteness acts not only in protection of the public, but as a friend and adviser of the applicant. Why, then, must an appeal from such an objection come to the Commissioner and not go to the Examiners-in-Chief? The answer is evident. By the statute as well as rules appeals from action on the merits must go to the Examiners-inChief; but a functional claim is incapable of receiving action on the merits. Such a claim is vague, uncertain, and indefinite, in that it does not state or define the invention, or anything capable of being claimed. The objection of formality means simply, "put your claim in intelligi. ble form and it will receive examination on its merits." No doubt the practice could be changed and the examiner directed to "reject" all claims which were functional. Yet it is apparent that such a rejection would not be upon the actual merits. The applicant might still, and in good faith, be striving to cover a patentable invention. Appeals to the Examiners-in-Chief, with the attending delay and expense, would follow, and after final rejection the applicant would return and too late seek by amendment to have his case opened up in order to reach a status which but for the appeal was all the time open to him. The pres ent practice, which requires such objections to be regarded as formal, is

undoubtedly in the interest of the applicants and of the public. It is settled, also, by the decisions of Commissioners. (See ex parte Keith, C. D., 1876, 93, and ex parte Cornell, C. D., 1872, 120.)

The action of the examiner is affirmed.

EX PARTE WILLCOX AND BORTON.

Decided October 9, 1888.

45 O. G., 455.

1. WHAT IMPROVEMENTS WHICH DO NOT CHANGE THE IDENTITY OF THE ORIGINAL MACHINE MAY BE COMPREHENDED IN SINGLE LETTERS PATENT.

The determination of the present case must depend upon whether the invention consists of a new sewing-machine originally new in all its parts and elements, or only new in its combination of old or new elements or parts of each, or whether the invention consists simply of "improvements" upon parts of an old organism, but which do not disturb its original organism or identity as such.

2. CLASSIFICATION IN THE PATENT OFFICE: TO DETERMINE THE ABOVE QUESTIONS RESORT MUST BE HAD TO THE CLASSIFICATION OF THE ARTS.

The classification in the Patent Office is not founded upon names and titles, but upon the actual subjects of art. The nomenclature given to the classes constitutes but the guide by which the separate subjects may be found in their appropriate places in the repositories of human knowledge and experience. When found, each subject must disclose and define itself, its structure, use, and function. Classification is the great Aula Regis which contains the state of art, and every new invention, like a newly arrived alien, must come before this august assembly of classification and submit to the test of naturalization by a sort of comparative anatomy-by a comparison of construction, function, and utility with all the subjects before it. Classification determines what is or is not a machine, a tool, or implement; whether it is generically new and original, or is composite, made of two recognized old machines, tools, or implements, or whether it presents mere additions to or improvements upon what already exists and is known. 3. PRACTICE OF ALLOWING AN APPLICANT TO CLAIM IN THE SAME APPLICATION HIS COMBINATION AND ANY NEW ELEMENT WHICH CONSTITUTES PART OF THE COMBINATION.

There has been a general practice in the Office to permit an applicant to claim in the same application and secure in one letters patent his combination and any new element which constitutes part of the combination, even though they are separate inventions. This has been allowed under a general proposition that the applicant may claim his invention as an entirety, and also everything that goes to make up his invention-much as a grant for land in fee covers all the improvements, hereditaments, and appurtenances to the soil itself. But this general proposition has been and must be modified by the important necessity and usefulness of classification in the arts. The examination required by statute renders it necessary that some regulation and classification shall be adopted by which such examination shall be complete and satisfactory in order to prevent the duplication of patents for the same thing. It follows that there should not be a commingling of different subjects in different classes of art in the same patent, for if this be allowed not only will examination by those expert in a specific art be rendered practically impossible, but the patent when issued can find no appropriate place in classification for reference when future applications are to be examined.

4. IMPROVEMENTS UPON AN OLD ELEMENT IN A COMBINATION.

Mere improvements upon an old element in a combination, which improvements do not change the identity of that element, will not render the element patentable in the same application with the combination. As corollary to this, several improvements upon parts of a distinct organism, which tend to improve the proximate result of the whole, but do not disturb its identity, may be claimed in the same application. The "improvements" here contemplated do not embrace or relate to mere additions, adaptations of new parts, or attachments which are not incorporated in the old organism and do not assist in improving the specifio function of the whole organism.

5. MECHANISMS OR PARTS WHICH ARE NOT RECOGNIZED BY MANUFACTURERS AND VENDERS AS SEPARATE ARTICLES OF MERCHANDISE.

Sub-mechanisms and parts of a machine which have not acquired a distinct place in the arts and the industries and are not capable of use in other relations, but are manufactured and sold to take the place of corresponding parts in the general organism which have been broken or worn out, are not required to be separately applied for and patented.

6. REQUIREMEnt of Division in Combination CLAIMS-AGGREGATION.

An applicant has the right to present claims to combinations, and he can not be deprived of those claims by the requirement of division. If there be no combination, but only aggregation, the claims must be rejected and the applicant allowed his right of appeal before division can be required.

ON PETITION.

SEWING MACHINES.

APPLICATION of Charles H. Willcox and Stockton Borton filed July 23, 1887, No. 245,079.

Mr. B. F. Thurston and Mr. James L. Norris for the applicants. HALL, Commissioner:

The invention shown and claimed in the present application is an improved sewing machine for over-stitching the trimmed edges of hosiery. It is a distinct and well-recognized type of sewing-machines, classified in the arts and known in the industries.

The application contains 23 claims. Claim 1 covers the improved machine as such, depending upon the improvements of its several parts. Claims 2 and 3 cover the "looper" alone-a looper with two jaws inclined to the plane in which the needle reciprocates. With two or three exceptions, the other claims are for combinations between two or more of the specific parts.

The Examiner required division and called upon applicants to restrict their application to one invention. From this requirement applicants petition the Commissioner in person.

The decision of the present petition is to be determined in accordance with the principles announced in ex parte Herr (41 O. G., 463), which involved a case of machines. In that case the Commissioner attempted to construe Rule 40 and definitely settle what was meant by the expres sions "dependent upon each other," "connection in design and operation," and "contribution to a single result," and also to establish some 884 PAT-10

principle by which it may be determined when two or more inventions may be secured in single letters patent.

In a later case, ex parte Simonds (44 Ọ. G., 445), the same question of division was considered with reference to process and apparatus, and the general principles of ex parte Herr applied.

In ex parte Herr the Commissioner discussed the subjects of connection in design, contribution to a single result, and the effect of classifi cation as established and recognized under the system established by Congress. Probably no better statement of the subject can be made than may be found in extracts from that decision.

Connection in design and operation:

On the other hand, there are numberless decisions, both of the courts, beginning with Wyeth v. Stone and Hogg v. Emerson, and of the Commissioners, holding that two or more inventions may be comprehended in one set of letters Patent. But it has uniformly been held that to justify such joining of different inventions they must bear some clear and distinct relation to each other. They must be "connected in design and operation." (Pages 466 and 467.)

The decisions of the courts, beginning with Wyeth v. Stone and Hogg v. Emerson, have never been followed to their full extent in the Patent Office, except in isolated cases and for very limited periods. I think it is safe to say that the more general practice and the preponderance of Commissioners' rulings have been to require direct and visible co-ordination and coaction or co-operation between distiuct and separate inventions, so as to produce a result which two machines or inventions acting sepa rately and successively could not produce. (Page 472.)

Contribution to a single result:

(Rule 40.) (1) Two or more independent inventions can not be claimed in one application. (2) But where several distinct inventions are dependent upon each other and mutually contribute to produce a single result they may be claimed in one application. (Page 468.)

Having declared, broadly, that two or more independent inventions can not be clained in one application, but exceptionally that distinct inventions may be, if they mutually contribute to a single result, the character of the contribution and the nature of the result must be determined. The contribution must not be like that of the steam-plow and the steam-car, and the result must not be remote, like the manufacture of flour or furnishing food to the human family. The contribution must be the proximate, immediate, direct act of the inventions, respectively, so that their com bined operation is a resultant operation, just as two bodies moving in different lines, impinging upon each other, move in a new direction. The result must be the proximate and direct result and not a remote one. They must be "connected in design and operation." If machines, it must be the design existing in their construction and not in the mind of the man who uses them. The plow and the cultivator are connected in design and operation, if we look into the mind of the farmer who employs them to raise his crop, but in themselves, their construction or operation, there is no connection of design or operation.

The "mutual contribution," the "connection in design or operation," the "result" must be such as would be manifest to one skilled in the art who should be called upon to construct or operate them. Both the design and the result must be ascertained from the inventions as described and defined. (Pages 468 and 469.)

Classification in the statute and in the Patent Office:

It is impossible to consider the question of uniting inventions in one patent without having regard to the divisions of art to which they belong. In defining the inven