DECISIONS OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1888 EX PARTE PASTOR PEREZ DE LA SALA. Decided December 27, 1887. 42 O. G., 95. APPLICATION FOR PROCESS AND ITS PRODUCT. The Examiner required division, and advised applicant that the product could be produced by other processes, but refused to state to applicant what those processes were. Held that the Examiner should furnish applicant with all the information upon which he bases his opinion that the product is not new, in order that applicant may act intelligently as to the requirement of division; that the Examiner ought not, when he has information which would bar the issue of patent, require an applicant to go to the trouble and expense of filing an application which must necessarily fail of success. ON PETITION. TREATMENT AND APPLICATION OF WOOD TO THE COVerings of surfaces. APPLICATION filed October 8, 1887, No. 251,849. Mr. Anthony Pollok for the applicant. HALL, Commissioner: The applicant in this case claims as a unitary invention a process and its product, and asserts that both process and product are new, and that each is absolutely dependent upon the other. The Office advised applicant that the product was not new, and could be produced by other processes, and required division of the application. The Examiner did not, however, state to applicant what those processes were. 3 This action being repeated, applicant appeals to the Commissioner and urges that he is entitled to be furnished the information or references showing that the product lacks patentable novelty, in order that he may act intelligently in the matter of filing a divisional application. The question involved is somewhat peculiar, owing to the fact that if division be required before action on the merits a case is presented in which the Office practically determines that the product is not new and patentable before the merits have been considered, and applicant is required to file a divisional application for a patent for the product which the Office adjudges is not patentable. My first impression was that, as a matter of necessity, the merits must be passed upon before a division should be required, and that the division contemplated in this case would be equivalent to a rejection. Upon reflection, however, I am of the opinion that the better practice is to require division; but at the same time the Examiner should turnish applicant with all the information upon which he bases his opinion that the product is not new. (See ex parte Rogers, MS. vol. 23, 146.) The justice of furnishing this information is apparent. The Examiner ought not, when he has information which would bar the issue of patent, to require an applicant to go to the trouble and expense of filing an application which must necessarily fail of success. I therefore reverse the action of the Examiner in so far as he refused to furnish full information to the applicant, and direct that such information be furnished him in order that he may act intelligently as to the requirement of division. EX PARTE SCHULZE-BERGE. Decided January 5, 1888. 1. DESIGNS-REJECTION-APPEAL. 42 O. G., 293. Objections by the Examiner that the alleged invention shown in an application for a mechanical patent should be made the subject of a design application Held to be a rejection of the application, the appeal from which must go to the Examiners-in-Chief. 2. SAME-TECHNICAL TERMS DEFINED. The word "useful," employed by Congress in legislation upon the subject of mechanical and design applications, defined and distinguished, and Held when applied to designs to relate to matters of decoration and æsthetic art which reach the senses through the eye, and so used in an entirely different sense from that in which it is applied to the subject of mechanical invention, where the usefulness contemplated by the statute relates to the employment of dynamic force, its modification or operation. 3. SAME-NOT BARRED BY MECHANICAL PATENT. An inventor of a mechanical invention is entitled to give to it such enhancement by way of ornamentation and decoration as it is capable of receiving, and this without any way modifying or detracting from his right to a patent. 4. SAME-SAME. Such inventor may also receive a design patent for the configuration, ornamentation, or decoration which the mechanical invention is capable of receiving. ON PETITION. PLATE-GLASS. APPLICATION of Herman Schulze-Berge filed May 7, 1887, No. 237,436. Messrs. Bakewell & Kerr for the applicant. HALL, Commissioner: This is an application for patent for an improvement in corrugated or ondoyant glass, the function of which is to permit the passage of light and yet obscure vision. On the 11th of July, 1887, applicant was informed as follows by Office letter : This application can not be considered in the class of mechanical inventions. The application should be for a design patent. On the 7th of October, 1887, applicant answered as follows: We request a reconsideration of the last action in this case, for the reason that applicant does not claim a design for plate-glass, but has made an improvement in corrugated or ondoyant glass, the function of which is to permit the passage of light and yet obscure vision. This applicant's invention does more perfectly than the former devices, in that while it more perfectly obstructs vision it obstructs the passage of light to a much less extent. On the 13th of October, 1887, the Office replied in the following language: The argument filed in this case October 8 has been considered, and applicant is advised that the Office still entertains the views expressed in the official action of July 11, 1887. The fact that applicant's design serves a useful purpose does not change its classification as a subject of invention. This case comes under the clause of section 4929, Revised Statutes, which says that "any new, useful, and original shape or configuration of any article of manufacture" is the subject of a design patent. The official action of July 11, 1887, is reiterated. Thereupon the applicant appeals to the Commissioner, and prays that the action of the Examiner may be reversed, and that he may be directed to entertain the application and act upon the merits thereof, for the reasons, first, that the invention involves the functions of or result produced by the article claimed as a new article of manufacture; second, that the action of the Examiner is contrary to the views held by the Office, etc. In view of the decisions in ex parte Proudfit, (10 O. G., 585); ex parte Pressprich (11 O. G., 195), and ex parte Bailey (C. D., 1886, 39), I am of opinion that the action of the Examiner in this case must be held to be & rejection of the application, and that the appeal must go to the Examiner-in-Chief. It is true the Examiner has simply advised applicant that the invention described and shown in his application must be covered by a design patent, and not by a mechanical patent; but the applicant asks for the latter kind of patent, and the Office has no right or power to insist upon his filing an application for a design patent or any other patent than that which he wishes. This application is pending in the Office and must be disposed of. I know of no way of disposing of it except by allowing or rejecting it; and when the Examiner has twice advised applicant, after a discussion of the merits of the question, that be must pursue another course and file an application for a design patent, he, in fact, refuses to allow the present application, for the reason that it is not for an invention upon which a patent, as now asked, can be based. But in view of the fact that the case must go back to the Examiner for further consideration, and will be within his jurisdiction until applicant sees proper to take an appeal to the Examiners-in-Chief, I feel justified in offering some suggestions to the Examiner. I have examined very carefully the answer of the Examiner to this petition and the authorities cited by him, and I am disposed to think that the invention shown and described in this case, if new, contains patentable merit as claimed by the applicant. Up to 1842 there was no provision of law authorizing the issue of design patents. The field of art in which invention could proceed and for which patents might issue was limited to the four classes specified-viz. "any new and useful art, machine, manufacture, or composition of matter;" but in that year Congress saw proper to recognize and establish another and different field of art. It is difficult to define this new field other than by the language Congress has employed: Any new and original design for a manufacture, whether of metal or of other material or materials, or any new and original design for the printing of woolen, silk, cotton, or other fabrics, or any new and original design for a bust, statue, or bas-relief, or composition in alto or basso relievo, or any new and original impression or ornament to be placed on any article of manufacture, the same being formed of marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted or cast, or otherwise fixed, on any article of manufacture, or any new and original shape or configuration of any article of manufacture, not known or used by others before his or their invention or production thereof, etc. It will be noticed in this extract from the statute that the only instance in which the word "useful" is employed is with reference to 66 pattern, or print, or picture, to be either worked into or worked on,” etc., any article of manufacture, etc. The statute has since been modified until we find in section 4929 of the Revised Statutes that the only employment of the word "useful" is in this clause: "Or any new, useful, and original shape or configuration of any article of manufacture." Under the former statute there seems to have been some contrariety of opinion as to the dividing-line between inventions which might be the subject of "design patents," and attention has been called to the decisions in ex parte Crane (C. D., 1869, 7); ex parte Bartholomew (C. D., 1869, 103); ex parte Fenno (C. D., 1871, 52), and Wooster v. Crane (2 Fisher, 583). In some instances the Commissioner has been of opinion that the word "useful" justified the issue of a mechanical patent for any form, shape, or configuration, provided the thing whose shape or |