or shape of the stove-with such variations thereof as will preserve its identity to the eye of the ordinary observer of both. He can not in the same patent secure claims for distinct and separate parts independent of the whole design. (Ex.parte Neil, MS. Dec., vol. 24, 236; ex parte Hill, MS. Dec., vol. 28, 124.) Undoubtedly in cases like the present, where the design consists of a combination of shape and ornamentation, claims covering greater variation may be allowed, based upon distinctive and segregable parts, than where shape alone or ornamentation alone is the subject of the design. Thus the shape of the dish in the case under consideration, with some slightly distinctive features of ornamentation, might more easily deceive or mislead the eye of the ordinary observer than such distinctive feature of the ornamentation applied to a dish of wholly different shape and contour. As the subject of identity or sameness of design is addressed to the judgment of the eye of the ordinary observer, so the questions of the extent and character of claims in patents for distinctive and segregable parts must be determined largely by the skill and judgment of the experts of the Office. Whenever the claim is to such distinctive and predominant parts as when used and applied to an article of manufacture would induce the ordinary observer to accept them as the whole design, the claim should be allowed; but when the segregation goes so far that the identity of the whole design ceases, and the ordinary observer would not be likely to recognize the sameness or resemblance between the segregated parts and the whole design, they should not be allowed. The ordinary observer-the public-is not learned in patent law nor the nice distinctions in matters of claims. The public is not required to be skilled in matters of art. In dealing with designs, patented or unpatented, ordinary observers judge of the design as a whole, and are not called upon to dissect and analyze it with accuracy. To permit claims for parts that belong to details which possess no distinct and visible resemblance to and create in the mind no impression of the whole design would be to set traps for the unskilled and unwary. This is against public interest and will not be tolerated. Claims for distinctive and segregable parts of a design indicate the skilled judgment of the Office as to what parts and features of the design, if segregated from the whole and applied to an article of manufacture, would accord with the eye of the ordinary observer and preserve the identity of the original and entire design. Evidently such claims should be carefully scrutinized, otherwise the applicant may in the same patent cover a multiplicity of designs. The courts would probably not interfere to defeat such patents nor to limit them to the one original design, but, regarding each distinct design as an original, would rest the validity of the patent upon the discretion vested in the Commissioner as to such matters. In the present case there is no claim presented for the design of the form of the dish and its ornamentation as a whole, unless the preamble and nine paragraphs can be regarded as one claim. I do not see how claims can be allowed for distinctive and segregable parts of a design when there is no claim for the whole design. If patented, is the completed design to be free and its distinctive parts subject to patent? Or is the entire and finished design to be protected because the eye of the ordinary observer is required to recognize its identity with some of the segregated parts? Evidently, if variation in designs is to be recognized by allowing claims for distinctive parts, they must be formulated with reference to the whole design. The interests of the public require this. In the case under consideration claim 1 is for the rectangular rim of the dish with reference to the central bowl or any ornamentation whatever. Claim 2 is for the shape of the bowl with circular outline and the rim, without reference to the ornamentation. These two claims together would cover simply the shape of the dish, "as shown and described," but without such words or the implication of the law would embrace the rim with any kind of a central part, and the bowl with any kind of a rim, and the whole shape without any ornamentation. In effect, as was stated in ex parte Hill, the claims would cover two designs, in which case applicant should be required to take out two patents. Claim 3 covers the corners of the dish with their surface ornamentation. Claim 4 is for the surface ornamentation of the corners. Claim 5 is for the ornamentation of the corners and panels, composing the entire rim of the dish. Claim 6 covers the ornamentation of the panels of the rim. Claims 8 and 9 relate alone to the ornamentation; but these claims for ornamentation do not appear to be limited to a dish of the form and shape shown, but, as already stated, this is essential where a design consisting of both form and surface ornamentation is to be embraced in a single patent. The Examiner calls attention to the fact that under ex parte Harris (38 O. G., 104) objections to claims for non-segregable parts relate to the merits rather than to form, and an appeal from such rejection should go to the Examiners-in-Chief. I concur in this view and follow that decision; but as the present appeal is taken as to matters of form as well as merits, I have felt justified in giving more consideration to the case than I otherwise would. The decision is affirmed as to the requirement that the words "as shown and described " be used in the claims, and the case is remanded to the Primary Examiner to take such further action on the claims as he may see proper, in view of the principles expressed herein. If applicaut desires to appeal from such action, his appeal from rejection of claims covering distinct and segregable parts must be taken to the Examiners-in-Chief. 1. GENUS AND SPECIES. EX PARTE GÉRARD. Decided May 22, 1888. 43 O. G., 1240. The relation of genus and species does not exist in designs. The question involved in designs is one of identity. 2. PATENT FOR A DESIGN LIMITED TO A SINGLE INVENTION. A patent for a design must be limited to a single invention; but such patent may cover any variation or modification, provided the distinct and predominant features so far remain as to preserve the identity of the original completed design. ON APPEAL. DESIGN FOR PLATES AND OTHER DISHES. APPLICATION of Emile Gérard, filed April 20, 1887, No. 235,564. HALL, Commissioner : In this case applicant seeks to patent designs consisting of both shape and surface ornamentation. Six dishes are shown in the drawings, all differing in shape and contour. Each dish is ornamented with its own surface ornamentation; but the entire surface ornamentation of each dish is unlike that of any of the other five. In the shape of each is some slight feature, such as a notch or indentation at a corner, and in the surface ornamentation of each is also found some features which are common to all. These features the applicant chooses 'to call distinct and segregable parts of his design, and upon them attempts to found a genus of design and its subordinate species. There is, and in the nature of the case can be, no entire and complete design-no one single design. Consequently, there is no claim for a single design as a whole, with other claims for distinct and segregable parts; but an attempt is made to apply the principles of generic and specific claims, which obtain in applications for mechanical patents. Applicant devises certain rather unimportant forms relating to shape, and certain surface ornamentation; then exercising his skill and ingenuity in producing dishes of various shapes, he introduces his specific features of surface ornamentation. He claims, broadly, his specific features, and also incorporates claims for as many various and different forms of dishes, with their varied and different ornamentation, as his imagination can produce. He has presented nineteen claims, one of which covers the shape of the dish and the remaining eighteen cover the surface ornamentation of eighteen different dishes. Claim 19 is as follows: The design for the shape of a plate or similar dish, consisting of straight sides, rounded ends, indentations a a at the approximate junction of the sides and ends, and radial ribs ƒ ƒ, extending from said indentations across the rim. With this broad claim for the shape or form applicant presents, as just stated, eighteen claims for as many different designs, based upon the fact that they possess some one or more features of form common to the parent design, or in common with each other. On July 22, 1887, the Examiner advised applicant as follows: The statute of designs (section 4929, R. S.) provides for a new and original shape for an article of manufacture, or a new and original ornamentation thereof. A new and original shape may also have a new and original ornamentation; but a generic claim must be made for applicant's invention in accordance with the doctrine in ex parte R. N. Eagle (C. D. 1870, 137). A claim may also be made for one of the species belonging to applicant's invention, but not for all the species which may exist under the generic invention. (Ibidem.) On renewed consideration of the application above entitled, it appears that there is no generic claim covering applicant's invention as disclosed, while there are many claims for various species and fragments thereof, contrary to the practice as above indicated. The objections noted in previous Office letter are therefore withdrawn, and will not be insisted on at the present time, being dominated by the above-noted objection. This action, as I understand, was not a rejection nor an objection to any specific claim, but was simply a declaration that the Examiner could not proceed to a consideration of the case until applicant had presented a claim for one entire completed design. He required a ge neric claim to be made. This action being repeated, the applicant appeals to the Commissioner. In another appeal by this applicant I have had occasion to discuss the nature and character of claims for distinctive and segregable parts, and my remarks in that case are equally applicable to this. I think the Examiner was correct in requiring applicant to submit a claim for the one entire completed design invented by him, for from that alone can it be determined what is and what is not distinct and segregable. As explained in ex parte Gérard, above referred to, this depends upon identity as determined by the eye of an ordinary observer. Without the original entire design it is impossible to make comparison or define the segregable parts. The Examiner was unfortunate, I am disposed to think, in acting upon this supposed analogy of mechanical patents and requiring a generic claim for applicant's invention in accordance with the doctrine in ex parte Eagle (C. D., 1870, 137). The relation of genus and species, in my opinion, does not exist in designs. As explained in the other case of applicant, the question is one of identity. A patent for a design must be limited to a single invention; but such patent will cover any variation or modication, provided the distinct and predominant features so far remain as to preserve the identity of the original completed design. The decision of the Examiner was correct, and is affirmed; but the case is remanded, and the Examiner is at liberty to modify his statement of the requirement or take such other action as he may see proper, n accordance with this decision. USE OF TECHNICAL TERMS. EX PARTE STOUGHTON. Decided May 28, 1888. 43 O. G., 1345. The words "means," "mechanism," and "connections" are proper terms when applied to devices forming no part of the invention, but which are in common use in various kinds of machinery-for instance, when the operation of rollers is governed by gearing, belting, cranks, or other appliances which in themselves are simple and have little or nothing to do with the real invention. Or, as in the present case, the term "means," when applied to the operation or shaking of certain movable screens, is proper, because evidently the same movement of the screens can be effected by an infinite variety of mechanism which would produce the same result and be simply the equivalent of that employed by applicant. ÓN PETITION. ORE-PULVERIZING MACHINE. APPLICATION of Eli T. Stoughton, filed March 7, 1887, No. 230,052. Messrs. Munn & Co. for the applicant. HALL, Commissioner: This application comes before the Commissioner on appeal from the action of the Primary Examiner making formal objections to the claims. In his answer to the appeal the Examiner says: Wishing, however, to have the terms "meaus," "mechanism," "connections," etc., eliminated from the claims, or to have your honor decide whether they were or were not objectionable, the Examiner, in the letter of January 13, refused to give further action until this question had been settled, under ex parte Mill (40 O. G., 919). In ex parte Paige (40 O. G., 807) the Commissioner attempted to point out as clearly as possible the instances in which these terms were admissible and when they were inadmissible. It was there stated that such terms might be employed to refer to mere adjunctive devices which connect or give co-operation to the various elements or features of the invention, but are in themselves no actual or controlling part of it. It is because any means or mechanism may be used to carry out such adjunctive functions, and need not be defined, that those terms can be thus employed. With that explauation it seems that the matter must necessarily rest largely with the Examiner. In the case of a combination between two elements, A and B, there may be connections or mechanism by means of which the two elements co-operate or unite in their operation, such connection or mechanism being really no part of the invention and being in common use in many other relations and with many other kinds of machinery or apparatus. An invention may consist in the co-operation of two rollers held together by certain devices; but the movements of the two rollers may be governed by gearing, belting, cranks, or other devices which in themselves are simple and common and have little or |