HALL, Commissioner :

In this case applicant claims a process, but in his specification and drawing he describes and shows an apparatus by which his process can be carried out. He asserts that this description is made with considerable particularity to enable the Office to have a clear understanding of the process claimed. Applicant makes no claim to the apparatus, but inserts a reservation clause relative to the same and expresses a purpose of filing a subsequent application for the apparatus.

The Examiner requires applicant to strike out the reservation clause, and applicant appeals from such requirement, to which the Examiner responds that he has followed the practice laid down in several decis ions of former Commissioners. Applicant states that he relies upon the decision in ex parte Roberts (40 O. G., 573), and insists that when he claims in a pending application a part of an invention, properly divisible, or an invention which is so nearly allied or related to another as a process and an apparatus, he has the right to introduce a reservation clause in such application, and within a reasonable time after the issuance of patent thereon to come back and file a second application for the subject-matter so reserved.

A careful examination of the case of ex parte Roberts will disclose the fact that the Commissioner at that time was considering a question of jurisdiction or power. The Examiner in that case had rejected the second application, holding that when two applications are pending, one showing but not claiming an invention claimed in the other, a failure to file cross-disclaimers operated to bar the issuance of a patent upon the latter. In discussing that question the Commissioner had occasion to arrange the authorities upon the propositions advanced, and held that the introduction of a reservation in the first application prevented the inference of dedication to the public which would otherwise arise; but it was distinctly stated that the practice of inserting reservation clauses was not intended thereby to be sanctioned or approved. I understand that it has uniformly been the practice of the Office to require the reservation clapses in applications to be stricken out in order to compel the applicant to file his second application and have it pending concurrently with the first, and when that has been done and the merits of the applications have been settled, to consider whether cross-references are necessary and whether the patents should issue at the same time. The purpose of such a practice is obvious, and it is consonant with public policy, for it has in view the preventing of the undue extension of a monopoly by first taking out a patent upon a part of an invention and subsequently upon another part, and so on, so long as it is within the power of the applicant to do so.

In the case before me the application shows a process and au apparatus by which the process can be carried out, although applicant claims the process alone. Under ex parte Herr (41 O. G., 463) there is no doubt that process and apparatus should be covered by separate applications, and

the applicant in this case has seen proper to pursue such course. He has filed a separate application for the process, but he has not yet filed an application for the apparatus, and he may never do so; but by introducing a reservation clause into the present application and carrying it into his patent, in case one were granted, he would thereby erect a warning by which the public would be deterred from entering upon this field of invention, and also would be prevented from knowing just what property it was purchasing in dealing with such patent. This would be the case to some extent if applicant should subsequently file the application as indicated; but the natural and necessary effect of such a course is to prolong to a greater or less extent the monopoly by securing a second patent at a later date.

Now if the applicant intends to patent both of these inventions—the process and the apparatus-he should either come into the office with both applications, and have them pending concurrently, or, if he sees proper, he may file them separately; but he must take the consequences of electing the latter course by accepting his first patent without any reservation clause in it with reference to the second application. This is the policy of the requirement, and it is the only power the Office possesses by which it can control to this extent the action of applicants, protect the public against the extension of the monopoly, and secure its rights to the unclaimed inventions shown in patents.

If, as matter of fact and law, the process and the apparatus in the present case are distinct and separate inventions and applicant desires to patent them, the office is open to him at all times. If they are separate and distinct inventions to such an extent that a disclosure of the apparatus in the patent for the process does not constitute a dedication of the former to the public, the applicant is safe without any reservation clause. If, on the other hand, such a disclosure of the apparatus operates to dedicate the invention to the public, then the applicant has ample protection by filing his application for the apparatus concurrently with that for the process, and if he chooses to omit both of these courses, in my opinion he has no right to insist upon retaining the reservation clause in his present application. There is a distinction between a reservation clause in such a case as this and cross-references such as would be required should a second concurrent application be filed for the apparatus. In the latter case, the inventions being so nearly related to each other, applicant would be required to file cross-references, the effect of which would simply be the announcement that the inven tion claimed in the one application was not the same as that claimed in the other..

To permit in a pending application a reservation of a claim for a future application would enable the applicant to have a patent issued includ. ing subject-matter for which no examination had been made to determine whether he had any right to a patent for the thing which he so reserved.

In my opinion, there should be a rule forbidding the introduction of

reservation clauses in applications; but I feel satisfied that, in the absence of the rule, the Commissioner has the power, and it is the proper practice, to discourage their employment and to require their cancellation.

As already intimated, upon filing a second application for the apparatus this reservation clause would have to be changed or modified so as to become a cross-reference, which, as said above, is not of the same effect as a reservation.

In my judgment, the action of the Examiner was correct, and is therefore affirmed.

KOHLER v. KOHLER AND CHAMBERS.

1. JOINT PATENTEES.

Decided March 29, 1888.

43 O. G., 247.

Motion overruled, and held that when a patent issues to joint inventors as such neither is the inventor, but the invention is made by an entity composed of both parties, and that joint patentees are not the same as the sole applicant claiming the invention.

2 INTERFERENCE DECLARED.

It is true that in an interference declared under such circumstances neither party could antedate the other as to the time the invention was conceived and embodied; but the question of priority would necessarily resolve itself into à determination as to whether the entity composed of the joint patentees had ever made the invention at all. If they never made the invention, then no date could be established for them, and the sole applicant would be entitled to the award as the real and true inventor. The interference will develop the truth and the facts. and if it shall appear that the invention was joint, patent will be denied the sole applicant. If, on the other hand, it shall appear that the joint application was prepared and executed through misapprehension or mistake, then the interference should be determined in favor of the sole applicant.

3. IS THE SOLE INVENTOR ESTOPPED BY HIS FORMER OATH ↑

An applicant is not estopped by reason of his oath filed with a'joint application from asserting his rights as sole inventor; nor should he be denied a patent on account of having made an error or mistake in the matter of joint inventorship. 4. RIGHTS OF ASSIGNEES.

The rights of assignees under the joint patent are protected, for if the sole ap. plicant has assigned and transferred all the right and title which he had in the invention, then such assignees become the owners of the sole invention, and the Office, if satisfied on this point, would permit them to take charge of and control all proceedings had in and under the sole application.

APPEAL from Examiner of Interferences.

KILN DUMPING-FLOOR.

APPLICATION of Frank Kohler filed November 8, 1887, No. 254,623. Patent No. 362,893, granted Frank Kohler and William A. Chambers May 10, 1887; application filed January 3, 1887.

STATEMENT OF THE CASE.

One of two joint patentees tiles a sole application for the invention; an interference is declared between the patent of the joint patentees and the application of the sole applicant, and motion is made to dissolve, based on the ground that the Office has no power to declare the interference, and can not issue a patent to the sole applicant under these circumstances.

Mr. Schuyler Duryee for Kohler.

Mr. Paul Bakewell and Mr. F. W. Ritter, jr., for Kohler and Chambers.

HALL, Commissioner :

Kohler and Chambers filed joint application for a patent, and afterward assigned the entire invention covered by the natent which was issued to them to the Crown Metal Perforating Company and J. W. Clemens. Nine months after the patent was issued, viz., November 8, 1887, Kohler filed a sole application covering the same invention, assigning one-half interest therein to Schuyler Duryee. An interference was duly declared between these two applications. January 14, 1888, two motions were filed by the assignees of the patent, as follows:

First. To dissolve the interference, and attached to this motion is an affidavit made by Kohler on January 11, 1888, explaining the circum. stances under which he was induced to file his sole application, and stating:

I now wish to withdraw the application which I have filed in my own name, and it is my wish that the interference declared may be dissolved.

This motion was denied by the Examiner of Interferences on the 20th of February, 1888, for the reason that the question of priority must be determined.

Second. A motion was also filed for a suspension of the order requir ing preliminary statements pending the determination of the first motion. This motion was also denied, but the time was extended for the filing of such statements.

It is insisted by the assignees of the joint invention of Kohler and Chambers that the Office has no power or jurisdiction to declare an interference between such patentees and an application filed subsequently by one of the joint patentees as sole inventor, aud that patent can not issue to the sole applicant until after the original patent, which it is claimed was issued erroneously, has been surrendered to the Govern ment and vacated, and consequently that no patent can issue to Kohler under these circumstances. I think the difficulty with this view is that it fails to regard the inventors, Kohler and Chambers, as being one entity. If A and B are in fact joint inventors and a patent issues to them as such, neither A nor B is an inventor, but the invention is made by a third entity composed of A and B, so that Kohler aud Chambers as

patentees of a joint invention are not the same as Kohler the sole inventor of the same invention.

It is undoubtedly true that if an interference be declared, as has been done in this case, and is conducted to a conclusion, neither Kohler and Chambers on the one hand, nor Kohler on the other as a sole applicant, could antedate the other party as to the time when the invention was conceived and embodied. The question of priority would, however, remain, and in such a case would necessarily resolve itself into a question whether the entity composed of Kohler and Chambers jointly had ever made any invention at all, because if, as a fact, they never had made the invention, then it still is true that Kohler as sole inventor had made the invention first. This phase of this question is arising constantly in the Office in interference cases where one of the parties to the interference is attempting to pirate the invention of the other. Of course he fixes his dates in his preliminary statement and endeavors to antedate the real inventor, and his evidence is all directed to establishing the earlier date; but when the whole evidence is presented the Office becomes satisfied that such party was not an inventor at all and awards priority to the real inventor. In such case the defeated party has made no invention whatever to which a date could be given, aud it might be thought under such circumstances that instead of an award of priority there should be a dissolution of the interference; but such has never been the practice, and ought not to be, so that I have no doubt that in a case of this kind it is proper and right that an interference should be declared. The question then recurs whether Kohler, by reason of having joined in the oath filed with the application of Kohler and Chambers, stating that they were original and first in ventors, is estopped or in any manner denied the right to take out a patent for the invention as the sole inventor thereof. Attention has been called to some authorities upon this point, and it seems to be unit formly conceded that no such principle of estoppel applies, and that there is no reason why an applicant should be denied a patent on account of having made an error or mistake as to the matter of his joininventorship.

The interference will undoubtedly develop the truth and the factsand if it shall appear that there was a joint invention and no sole invention, Kohler will be denied the patent. If, on the other hand, it shall appear that the joint application of Kohler and Chambers was prepared and executed through misapprehension or mistake, which very often occurs in matters of this character, and that Kohler alone was the inventor, then the interference will be determined in his favor.

A more serious question occurred to me when the motion was presented, arising from the fact that Kohler and Chambers have assigned their patent to the Crown Metal Perforating Company and J. W. Clemens. The suggestion is that having done this Kohler ought not to be allowed now to institute any proceedings as an applicant for a sole patent by which the rights of his assignees may be impaired or clouded.