that the application must be confined to one of the two inventions presented in applicant's first amendment.

Messrs. Duncan, Curtis & Page for the applicant.

HALL, Commissioner :

This application involves a question of division. When originally filed it contained several distinct and separate inventions. As stated in Office letter of October 17, 1887, there were four forms of cartridges, illustrated by figures 1, 9, 10, and 15 of the drawings; two alleged methods of manufacturing cartridges, covered by claims 1 and 3; a projectile, covered by claim 4; dies or forging-plates, covered by claim 5; a method of tempering projectiles, covered by claim 6, and five or six other various inventions. Division of the application was required, and on the 9th of January, 1888, an amended specification was filed in which the applicant limited the application to two of the inventions, as follows: A cartridge, covered by claims 1 and 2, and a form of projectile, covered by claims 3 and 4. It is to be noted here that the cartridge covered by claims 1 and 2 was not claimed as a new article, but as an article which was new by reason of the manner or method of its construction. This amended specification was admitted, notwithstanding the fact that it covered two distinct inventions, and in an Office letter of January 14, 1888, division was again required, as between the two inventions thus embraced in the amended specification of January 9, 1888, and applicant was informed that he must limit the pending claims to one of those two inventions. In this same letter applicant's attention was called to the patents of Wood, No. 132,227, dated October 15, 1872, and Ganthey, No. 159,665, dated February 9, 1875, for cartridges, as disclosing in part the state of the art. This, the Examiner says, was done in order that applicant might with better understanding divide the case.

It is clear from an examination of the amended specification of Jan. uary 9, 1888, that the applicant did not contemplate specifically asking for a patent upon a process of making a cartridge or projectile, but limited his claim to a cartridge and a projectile made by the respective methods described. The Examiner again required division, and applicant presented another amended specification, dated January 27, 1888, substituting two claims for the former four, covering the method of making the cartridge. This amendment the Examiner refused to entertain, stating that action could not be taken upon the merits until the application had been confined to one of the two inventions above referred to in the four claims presented in the amendment of January 9, 1888. From this action petition is taken to the Commissioner.

When applicant was first called upon to make division, he saw proper to eliminate from his application everything which related to the figures of the drawings, except figures 1, 2, and 3, the latter two of which related to the cartridge and the former to the projectile; but the speci

fication still contained a description of the cartridge and the projectile as articles of manufacture, and also the process or method by which each, respectively, was made, and which gave to each its quality, if any; of novelty and patentability. When the amendment of January 9, 1888, came into the Office in response to the requirement of division, the Examiner, in my judgment, should have refused to admit it, for the reason that the original requirement was that the application should be reduced to a claim for a single invention, and to allow this ameudment left the case in no better condition than the original application, except that the number of inventions contained in it was not so great. Had this course been pursued, the Office would have been relieved of all the difficulty which now presents itself in the present case. Instead of doing that, however, the amendment was received, and its effect was to narrow or limit the right of the applicant to make his election, because it practically disposed of everything in the application except the four claims presented in the amendment. But it is claimed by the Examiner, and also by the majority of the Committee on Division, that when the applicant filed his amendment of January 27, 1888, he had himself previously elected to confine his application to either a cartridge-case or a projectile, as claimed in the four claims of the amend ment of January 9, and that, having so elected, he must now be lim. ited to them, and not be permitted by any amendment to claim the process or method by which the cartridge-case or projectile was constructed. This raises the question of what constitutes an election under such circumstances. There has been no examination of any claim in this case for the purpose of final actiou or rejection. It is stated by the Examiner himself that only a partial examination was made, and that not for the purpose of determining whether or not the claims should be rejected, but simply to enable applicant to act with greater intelligence in making the division. I am satisfied 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. (See Ex parte Heaton, 15 O. G., 1044; Preston, 17 O. G., 853.) I am strengthened in this conclusion by the fact that the Examiner was not called upon to furnish the references or make the partial examination which Le did, and that the proper course for him to have pursued was to have refused from the beginning to admit any amendment which contained claims for more than one invention. If that course had been pursued and the applicant had filed his amendment, limiting his application to a single invention, then there would have followed an examination which would have disposed of the case and been conclusive upon the applicant as an election, and it would not have been possible for him subsequently to amend, bring in another one of the original inventions, and ask a second examination upon that, for such a course would bring the application into the condition stated by the Examiner and the Committee on Divis

ion, enabling a party to get several examinations of different inventions for one fee.

An applicant ought not to be held to have made a final election, which places his action beyond recall, until he shall have complied with the requirement as to division and the Office approves and accepts his action. Such approval and acceptance can only be properly made where the applicant's election limits his application to a single invention and puts it in condition for examination, Prior to this no examination can be properly made, and consequently no election. I think, therefore, that applicant can not be deemed to have made an election to such an extent as to preclude his right to vacate and make an amendment such as is presented in this case. I reverse the action of the Examiner and direct that he shall entertain the amendment and proceed with its consideration. This order, however, directing the Examiner to admit the amendment of January 27, 1888, is predicated upon the supposition that the two process claims substituted for the four former claims are for the same invention or subinvention. If the Examiner is satisfied that the last amendment covers two distinct inventions, he shall refuse to admit the same, and repeat his requirement that applicant must present an application covering but a single invention, and until that is done proceed no further.

EX PARTE JOHNSON.

Decided April 5, 1888.

43 O. G., 507.

1. REFUSAL OF EXAMINER TO RECEIVE AMENDMENT WHICH DOES Not Cure DeFECT IN ORIGINAL SPECIFICATION.

The proposed amendment did not cure any defect in the original specification, for the invention therein described was complete and operative. It added nothing which had been omitted, nor omitted anything which ought not to have been originally inserted.

2. SAME.

The proposed amendment did not explain any matters set forth originally. It simply described in detail devices not originally disclosed, and broadened the scope of the claims which contained the parts of the newly-described devices which are said to be the equivalents of those originally set forth, but from which they differ in construction.

3. SAME-NEw Matter.

The proposed amendment involved new matter, and would compel the Office to pass upon the merits of each newly introduced device in order to determine the question of equivalency.

4. SAME-GENUS AND SPECIES.

The proposed amendment would have the effect of permitting applicant to add new and different species-would be analogous to permitting an applicant who originally claimed a genus and one species to amend by adding other species which he did not claim or show, although they might to some extent illustrate the nature and character of the invention.

5. SAME.

The admission of such amendments would permit an applicant to make a pict ure gallery of his application by introducing all the known forms of what might be equivalents, and thus secure an examination of each device.

ON PETITION.

PRINTING-PRESSES.

APPLICATION of Henry Johnson filed August 10, 1886, No. 210,508.

Mr. James A. Skilton for the applicant.

HALL, Commissioner :

This application relates to an ink-distributing fountain for printingpresses, and after deseriting certain features of the invention in his original-specification applicant employs the words "or equivalents" in some of the claims. The Examiner required these words to be erased, and upon appeal to the Commissioner the decision of the Examiner was affirmed. Applicant now presents an amendment striking out the words "or its equivalents" from claims 19, 29, and 30 and inserting a description of a differently-constructed device which, it is asserted, is the equivalent of the device which was originally described' and shown in the specification and drawings. The Examiner has refused to enter this amendment, and petition is taken to the Commissioner. It is to be noted that the proposed amendment does not cure any of the defects in the original specification, for a complete and operative invention is therein described. Neither does the amendment explain any matters set forth originally; but it simply describes in detail devices which were not originally disclosed, and tends to broaden the scope of those claims which contain the parts of the newly-described devices which are said to be the equivalents of those originally set forth, but from which they differ in construction. It is very clear to my mind that this amendment can not be permitted. It constitutes a clear departure, because it introduces new.matter. It is well known that an applicant may present one claim for a genus and another for a species, and he may illustrate any number of other species, but his specific claim will be limited to one species; but after he has come into the Office with a specification and drawing illustrating unclaimed species it would be a departure from the original invention to permit him to add new and different species not originally described. If he were to claim originally a genus and single species and illustrate but that one, he would not be permitted to amend by adding other species which he did not claim, although the addition of those other species might be said to illustrate to some extent the nature and character of the invention. Much less can this be permitted in the matter of equivalents. Such action would not only constitute a departure in this sense, but would compel the Office to pass upon the merits of each newly-introduced device claimed 38 an equivalent. The first question would be, Is it an equivalent?

and the answer involves an examination of the new device upon its merits, and that, too, without any compensation from the applicant, It in effect involves a question of interference, because if the two devices are not equivalent, of course the second one should not be admitted at all, and au applicant might be permitted in this way to introduce an innumerable variety of devices which he regarded as equivalents, and the Office would be compelled to pass upon their merits as such, and allow them to remain if equivalent and refuse them if they were not, for the applicant himself does not contend that they ought to be admitted if they are not equivalents. Not only this, but an applicant could make a picture gallery of his application by introducing all the known forms. of what might be equivalents.

The applicant says:

Nothing in the language of the Commissioner's decision in ex parte Snyder (22′ O.. G., 1975) or in ex parte Crandall (35 O. G., 625) can be considered as interpreting Rule 69 as preventing the filing of these amendments, since they contain descriptions of equivalents. In neither one of those cases was the proposed amendment a description of equivalent devices or methods of operation. On the contrary, in each the applicant attempted to change the construction and operation of an invention which had been fully described.

This is a clear coneession that the attempt to introduce new equivalent forms of construction is not an amendment. No defect is cured;: nothing is added which had been omitted, nor omitted which ought to have been originally inserted: It introduces new matter, not in respect. to the original device or construction, for that is already perfect and complete, but new matter in the direction of new and different inventions in the same field of art. It is none the less new matter becauseit may be in fact an equivalent of that originally shown, for, as just stated, it was not present originally, and to admit it would compel the Office to examine the case in respect to determining the question of equivalency. This the Office can not be required to do. An applicant can take a patent for the precise invention shown and claimed; but the question of equivalency can only arise in matters of interference or infringement, and must be determined in such proceedings..

I think the action of the Examiner was correct in refusing to accept this amendment, and it is affirmed.