BOULTON v. ILLINGWORTH. Decided April 3, 1888. 43 O. G., 508. 1. REDUCTION TO PRACTICE IN A FOREIGN Country, It is well settled that what an inventor did in a foreign country while a citizen of such country can not in any way be used to antedate an invention made in the United States, and evidence tending to establish such facts would be wholly incompetent. Consequently a motion to amend a preliminary statement to set back the dates of invention and to allege disclosure and reduction to practice in such foreign country should have been denied. 2. SAME. A party to an interference may have the right to prove what he did as an inventor, although living in a foreign country, for the purpose of showing his knowledge, but not for the purpose of establishing facts of invention as such. Such evidence is competent and admissible without the facts being set up in the preliminary statement. APPEAL from Examiner of Interferences. METHOD OF AND MEANS FOR CASTING INGOTS. APPLICATION of James B. D. Boulton filed March 25, 1887, No. 232,362. Application of John Illingworth filed June 10, 1887, No. 240,875. Messrs. Orane & Miller for Boulton. Messrs. Drake & Co. for Illingworth. HALL, Commissioner : This appeal is taken by Illingworth from the action of the Examiner of Interferences permitting Boulton to amend his preliminary statement. In this motion, which was filed on the 11th of January, 1888, Boulton seeks to set back the date of his invention and disclosure from the month of March, 1880, to November, 1868, and to set forth a disclosure of the same to one Arthur Williams and others, and also to allege that applicant immediately put the invention into practical and successful operation, etc. Boulton's preliminary statement shows very distinctly that he was a citizen or resident of Great Britain at and prior to the 1st of June, 1881, and that everything contained in this amendment, which he seeks to put into his statement, in the way of conception, disclosure, or reduction to practice, occurred in Great Britain while he was a citizen or resident of that country. It is well settled that such acts of invention in a foreign country can not in any way be used to antedate au invention made in the United States, and that the evidence to establish such facts would be wholly incompetent. Consequently, it was improper, in my judgment, for the Examiner of Interferences to permit such an amendment to be made. This view of the case is sup ported by the decision of Mr. Commissioner Marble in Bell v. Brooks (1881, C. D., 4; 19 O. G., 290), in which the authorities are collated and the subject is fully considered. It sometimes happens that an applicant who is a party to an interference may have the right to prove what he did as an inventor, although living in a foreign country, for the purpose of showing his knowledge, but not for the purpose of establishing facts of invention as such. This I recently held in the case of Thomas v. Murray (MS. vol. 35, 480). But such evidence will be entirely competent and admissible for such purpose without any statement of the facts being set up in the preliminary statement. 'I therefore reverse the action of the Examiner of Interferences, and direct that the proposed amendment be not admitted. 1. DEFECTIVE PETITION. EX PARTE MASON. Decided February 23, 1888. 43 O. G., 627. Held that the petition was defective, and must be amended to contain a reference to the specification for a full disclosure of the alleged invention. 2. OATH WITH REGARD TO FOREIGN PATENTS. The oath filed by applicant is indefinite, and may be construed to mean that the invention has not been patented to applicant in any country, or to himself in any foreign country, or with his knowledge or consent in any foreign country. 3. MATERIAL Departures FROM THE RULES NOT PERMITTED. If the rules are violated or departed from in one material particular, the prac tice would soon become lax in other particulars. The several requirements of the rule with regard to the oath must be enforced. REFERENCE by Examiner. ACOUSTIC TELEPHONE. APPLICATION of Peter, L. Mason filed 'October 7, 1887, No. 251,677. STATEMENT OF THE CASE. The petition failed to refer to or identify the specification, and the oath accompanying the application contained the statement that the invention had not been patented to the applicant, "nor with his knowledge or consent in any foreign country," the words "to others" being omitted, and the word "foreign" inserted before country. Mr. W. H. Burridge for the applicant. HALL, Commissioner : This case is referred to the Commissioner on request of applicant by the Examiner, who objects to the petition because it does not refer to 884 PAT or identify the specification as contemplated by the rules, and also because the oath forming part of the application does not conform to the requirements of the rules of the Office. The petition omits any reference to the specification for a full disclosure of the alleged invention. It is evident that without such reference it is defective. No reason is shown why the omission may not be cured by the attorney without any trouble or delay, and I think the requirement should be insisted upon. In regard to the oath, it will be seen that the rules require an applicant to state whether the invention has or has not been patented to himself or to others with his consent or knowledge in any country, and if it has been, the country or countries in which it has been so patented, and that it has not been patented in any other country or countries than these mentioned, etc. Instead of the phraseology required by the rules, applicant avers that the invention has not been patented to him nor with his knowledge or consent in any foreign country, the words "to others" being omitted, and the word "foreign" being introduced before "country," the effect of which is to omit from his oath the statement whether or not a patent for the same invention has been issued to others in this country. Applicant's statement that it has not been patented to himself may be held to mean to himself in any country; but another construction of this language would authorize a meaning that it has not been patented to himself in any foreign country, nor with his knowledge or consent in any foreign country. It is evident that this language is far from a compliance with the rules. It may possibly put the applicant to some trouble or delay to file a proper oath, but the requirement is one which should be insisted upon. If a material variation, or, rather, violation, of the rule can be permitted in one particular, the practice would soon become very lax in others. Indeed, attention has already been called to the fact that applicauts do not strictly conform to the rule with regard to the several requirements of the oath, and it is time that objections of this character were enforced. I therefore affirm the action of the Examiner. An applicant who in his application has elected, through mistake or ignorance to prosecute claims for one invention must exercise diligence in presenting his amendment correcting such error, and this before the application has been examined and rejected. 2. SAME SEPARATE INVENTION. The Examiner was right in refusing to admit an amendment covering a distinct and separate invention from that originally retained and prosecuted to rejection. To enter and consider such an amendment would be to permit the applicant to secure examination of two distinct inventions for one fee. ON PETITION. MANIFOLD-COPYING PROCESS. APPLICATION of Franz A. C. Zabel filed May 1, 1885, No. 164,990. Mr. E. A. Brydges and Mr. C. J. Gooch for the applicant. HALL, Commissioner: The application in this case showed originally an apparatus and a process, and upon requirement applicant limited his claims to the apparatus. The application received consideration and rejection. Applicant thereafter sought to amend his application by striking out his claims. for the apparatus and introducing claims for the process. As said by the Examiner, up to the date of this last amendment, viz., November 4, 1887, the record shows that claims had been prosecuted for an ap paratus by which the said process might be carried out, although no intimate connection existed between the said process and the said apparatus. The Examiner held that the two inventions were not interdependent and refused to enter the amendment for the reason that it constituted a departure and was, in fact, an attempt to introduce claims for a different invention from that originally prosecuted. From this refusal of the Examiuer the applicant has appealed to the Commis. sioner and insists that the retention of the claims for the apparatus originally was in the nature of a mistake, and he urges that the Office should be considerate of the rights of an applicant and allow him to correct errors and mistakes of that character by presenting claims to the invention he desires to patent. It is well settled under the present practice in the Office that an applicant will not be allowed to claim two separate and distinct inventious in the same application, a practice which applies to applications for apparatus and process. I am not prepared to say, in case of an application showing process and apparatus, should it be made to clearly appear that the applicant had made an actual mistake in claiming one invention instead of the other, through his own ignorance or the lack of information on the part of his attorney, and should he present an amendment changing the claims from the apparatus to the process, accompanied by proper evidence, that such amendment and correction might not be allowed, if presented diligently and before the case had been examined by the Office; but to allow such a change to be made after the application has received examination would result in permitting a party to secure examination for two inventions for the one fee. Of course this can not be allowed. It follows from these considerations that the applicant must be compelled to stand by his original election. The action of the Examiner is affirmed. WELLS v. BOYLE. Decided April 2, 1888. FILING OF BILL IN EQUITY by Defeated Party wilL NOT STAY ISSUE OF PATENT TO SUCCESSFUL PARTY TO INTERFERENCE. The filing of a bill in equity in the circuit court of the United States by the defeated party to an interference will not operate to stay the issue of patent to the successful contestant, nor will it justify the Commissioner of Patents in delaying or withholding it until such proceeding in equity is terminated. ON PETITION. WATER-CLOSETS. APPLICATION of Frank A. Wells filed October 15, 1885, No. 179,931. Application of James E. Boyle filed December 20, 1884, No. 150,822. Mr. Charles S. Burton for Wells. Messrs. A. C. Fraser & Co. for Eoyle. HALL, Commissioner: This case comes up on a petition filed by Boyle to withhold the issue of patent to Wells. These applicants have been in interference, and award of priority was made to Wells, whose application is now in condition to be passed to issue. Boyle has filed a bill in equity in the circuit court of the United States to obtain, if possible, the judgment of that court that he is the party entitled to the patent, and he now comes to the Commissioner of Patents and requests that he will exercise his authority and direct that no patent issue to Wells until the suit thus instituted shall be decided. I am compelled to refuse this request. There is nothing in the patent law which suggests anything in the nature of a supersedeas upon the filing of a bill in equity by the defeated party in interference, in the circuit court of the United States. The fact that there is no such provision in the statute and nothing relating thereto in any of the |