This would undoubtedly be true at law or equity as enforced in the courts; but I am not aware of any provision of the statute or of any decision recognizing the proposition that the fact of taking out a patent as a joint inventor and assigning the invention will debar a sole inventor who has made the mistake of entering into the joint application, from subsequently rectifying such error and applying for a patent in his own name. I do not see that it estops in any way the rights of either parties.

If it be true, as stated by counsel, that Kohler has assigned and transferred to these assignees all the right and title which he had in the invention which he described in the instrument of assignment, then they will become the assignees and owners of the sole invention and have all the benefit that can be derived therefrom. I am therefore constrained to think that the assignees of Kohler and Chambers have no right to ask for the dissolution of this interference upon such grounds. If the statement made by them be true that they, as assignees, are the owners of this invention by reason of the assignment, whether it be a joint invention by Kohler and Chambers or the sole invention of Kohler, then as such assignees they would have the right to apply to the Office to take charge of Kohler's application and control it, and if they see proper to do that and shall satisfy the Office as to their rights, such result will follow, and it would be in their power to prevent the issue of patent upon the sole application of Kohler, and they can allow the interference proceeding to fail by reason of the control which they would have over it in this manner.

I therefore think that the Examiner of Interferences was correct in refusing this motion, and sustain his action. In view of the fact that extended time has been given for the filing of preliminary statements, there is no occasion to consider the appeal taken from his action in refusing to suspend the order requiring such preliminary statements pending the determination of the first motion.

Two applications of La Dow are involved in this interference, in one of which he is the junior and in the other the senior applicant. In his preliminary statement he sets up public sale of the invention, which, if established, would bar all parties. Clark moves that La Dow be required to file drawings and descriptions of the invention alleged to have been sold and furnish other information. Held, That in view of the averments of public use it would be unjust and unnecessary to put Clark to the expense of taking his evidence first, so long as La Dow was attempting to destroy the necessity of an interference, and ordered that La Dow be required to proceed first and take such evidence as he desires which shall establish the facts set forth in his preliminary statement, and also in support of the question of priority. Clark may then follow with evidence rebutting that offered by La Dow.

DISK-HARROWS.

APPEAL from Examiner of Interferences.

APPLICATION of George M. Clark filed September 22, 1886, No. 214, 242. Applications of Charles La Dow filed January 2, 1886, and October 25, 1886, Nos. 187,421 and 217,133.

Mr. William O. Wood for Clark.

Messrs. Baldwin, Hopkins & Peyton for La Dow.

HALL, Commissioner :

It will be seen from the above dates of the filing of the applications involved in this interference that La Dow is junior to Clark as to one application and senior as to the other.

La Dow, in his preliminary statement, has set forth that he made and sold in the year 1876 thirteen machines embodying the invention in issue. This was ten years before the applications here involved were filed in this Office, and if true in all particulars, would, of course, bar both of the applicants. Thereupon Clark moves that La Dow shall be required to file drawings, accurately illustrating the invention which, in bis preliminary statement, he alleges to have been sold at such times as would bar the issue of a patent to either of these contestants, and that he accompany the same with a full and clear description, verified under oath, and that he also disclose the names of the parties, etc.

I am not aware of any rule of practice by which the Commissioner can require a party to an interference to furnish drawings, statements, and information under oath in the manner requested by this motion, and yet the case presents features which seem not so be provided for by the rules, viz., that La Dow, by the statements which he sets forth in his preliminary statement as to public use and sale, puts himself in the attitude of an affirmant of the proposition that all the applications in this interference are barred, and yet in the further progress of the interference, in cousequence of the fact that in one of the applications Clark is the junior he will be required to proceed and take evidence before La Dow can be called upon to take testimony in support of the proposition which, if established, would bar these applications. Of course it would be unjust as well as unnecessary to put Clark to the trouble and expense of taking evidence on the question of priority so long as there stands behind him this effort on the part of La Dow to destroy the necessity of an interference and the taking of such evidence. in support of priority.

I therefore direct that in this case La Dow shall proceed and take such evidence as he may desire to establish the facts set forth in his preliminary statement as to sales of the invention alleged to have been made more than two years prior to the filing of the application, and also in support of his issue as to priority, and that Clark shall then follow with evidence rebutting that of La Dow as to sales, etc., and in support of his issue as to priority. The Examiner of Interferences is instructed to arrange the dates in accordance with and to carry out this order.

I am aware that this order is not specially provided for in the rules of practice, but I feel justified in making it on account of the peculiar features of the case, and also because, as I understood when the motion was argued, it would not be objectionable to the parties themselves.

EX PARTE SMITH.

Decided April 4, 1888.

43 O. G., 505.

1. SECTION 4896, REVISED STATUTES, CONSTRUED.

Section 4896, Revised Statutes, construed in connection with the right of the executor or administrator to prosecute the application of a deceased inventor, or to file a new application for the invention of the decedent.

2. CONTINUOUS APPLICATION.

Should the executor elect to pay a new fee and file a new application for the invention of the decedent, instead of continuing the prosecution of the original application, the application so filed by the executor should be entitled to the same status and precedence in order of examination as the application of the decedent. Such application is merely a revival and continuation of the original application, and should receive the same action and consideration which belonged to the original application had death not intervened and arrested the progress of decedent's case.

ON REQUEST.

APPLICATION of Edward L. Smith, administrator of the estate of Luther L. Smith, deceased, filed March 3, 1888, Serial No. 266,039.

Mr. W. W. Swan for the applicant.

HALL, Commissioner :

Edward L. Smith, administrator of the estate of Luther L. Smith, deceased, requests the Office to give the same precedence or priority in the order of examination to an application filed by him as administrator that belonged to the original application made for the same invention by Luther L. Smith in his lifetime.

It seems that Luther L. Smith, claiming to be the original inventor of an invention, filed an application therefor in the Office and subse quently died. Action was had upon his application, however, before his death. Thereafter, Edward L. Smith, his administrator, came into the Office and filed an application, as such administrator, for the same invention. The examiner, taking the view that this second application was to be treated in the order of examination as any other original application, declined to take it up for consideration until it was reached in its regular order. Petitioner presents the question whether this is the strict and proper practice. Section 4896 of the Revised Statutes is as follows:

1

When any person, having made any new invention or discovery for which a patent might have been granted dies before a patent is granted, the right of applying for and obtaining the patent shall devolve on his executor or administrator in case he shall have died intestate, or, if he shall have left a will disposing of the same, then

in trust for his devis 38 in as full manner and on the same terms and conditions as the same Lighteen claimed or enjoyed by him in his lifetime; and when the application is made by such legal representatives, the oath or affirmation required to be made sua aried in form that it can be made by them.

This statute does not provide specifically for the revival of the application of the decedent by his executor or administrator in any other way than by the filing of an original application; at least, that is a fair infer ence from the phraseology employed. The language is—

to right of applying for and obtaining the patent shall devolve on his executor or administrator, etc.

It might seem on first consideration that this applied only to a case where the decedent had died without having first made application for a patent himself; but that construction could scarcely prevail, for otherwise there would be no provision of law authorizing patent to issue to an executor when the application had been made by the decedent, so I have no doubt but that the statute is broad enough to cover both cases. Rule 25 provides:

In case of the death of the inventor, the application may be made by, and the patent will issue to, his executor or administrator. In such case the oath will be made by the executor or administrator.

It seems to be a well-settled practice in the Office that when a decedent has filed his application and his death has occurred before a patent issues, the executor may appear, file his letters of administration or executorship, and proceed with the case without filing a new application and paying a new fee. In such case, of course, the application retains its original status in the Office, and is disposed of precisely as if the applicant had not died; but the statutes, the rule, and the practice recognize the other method of continuing the application; that is, of filing a new original application for the same invention and in continuation of the original application.

Both methods are simply revivals of the original application, and I see no reason in the statute, the rule, or the practice why a new appli cation filed under these circumstances should not receive action and consideration in the same order that belonged to the original application, for it is, in fact, a revival and continuation thereof.

Attention is called to the fact that under section 4897, which provides for the renewal of applications, the practice has been to treat such renewal application as an original, and to give it no precedence whatever; but the statute, in express language, provides a limitation in declaring that the applicant shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application. There is no reason that I am aware of why an applicant who has allowed his case to forfeit after the Office has examined and passed it to issue should be entitled to any special precedence

or consideration. In the case of an executor, however, it is different; death has intervened and arrested the progress of the decedent's appli. cation; the executor is his representative and is acting in continuation of the original application. If he sees proper to come into the Office and pay a new fee for the purpose of reviving the old application, I think he should be entitled to the same consideration as if he had pur. sued the other course, and that his new application should be placed in the same status in the Office as the application of decedent.

Action, therefore, having been had upon the original application before the decedent's death, I direct that the application of the adminis trator shall receive consideration in the same order which belonged to the original.

EX PARTE MAXIM.

Decided April 3, 1888.

43 O. G., 506.

1. Refusal of Examiner to Receive AmenDMENT WHICH DOES NOT Cure DEFECT IN ORIGINAL SPECIFICATION.

When division of an application has been required and an amendment is presented which does not relieve the application from the objection raised, but simply reduces the number of the inventions, the Examiner should refuse to admit it. 2. SAME.

The only effect of such amendment, when admitted, is to narrow or limit the right of applicant in making election of the invention he desires to prosecute in his pending application.

3. FINAL ELECTION.

The objection that applicant has elected and can not be permitted to further amend his case raises the question of what constitutes an election under these circumstances. Held that such action does not put the applicant in the status of having made a final election from which he may not be allowed to recede, and applicant can not be considered to have made a final election until he shall have complied with the requirement as to division and the Office approves and accepts his action.

ON PETITION.

CARTRIDGES.

APPLICATION of Hiram S. Maxim filed October 11, 1887, No. 252,079

STATEMENT OF THE CASE.

The application when filed covered several distinct and separate inventions. Applicant was permitted to enter an amendment which limited the number of the inventions to two, viz., a cartridge and a projectile. The requirement for division was repeated, and applicant presented an amendment containing a claim for the method of making the cartridge. The Examiner refused to enter this amendment, holding