the necessary evidence and the procedure is the same as given to the Federal courts. The Commissioner has no power to subpoena witnesses, compel attendance, punish for contempt, etc. Such matters are expressly placed in the control of the Federal courts having jurisdiction where the depositions are being taken. But although the Patent Office is located at the seat of Government and is governed by the law applicable to the courts established in the District of Columbia as to the competency of witnesses and of their evidence, and as to who may be compelled to give evidence, yet that law accompanies the procedure to take depositions, and compels the attendance of witnesses, and determines what are and what are not privileged matters wherever the depositions may be taken. The jurisdiction which secures evidence to be used in the courts of the District of Columbia is, in this respect, co-extensive with the territorial jurisdiction of the United States; and what is true of the civil courts in this particular is equally true of the Patent Office. That is to say, if the rule of law as to the competency of witnesses be the common law, then the common law follows the procedure of the Patent Office into whatsoever State or Territory it may go for the purpose of taking depositions, and the local Federal court where the depositions are taken will enforce the common law, or whatever law is in force in the District of Columbia, where the evidence is to be used. It is necessary that this should be so in order that perfect uniformity may prevail in the administration of the Office and in the determination of interference cases. If the competency of the witness were to be determined by the State in which he or she lived, one of the parties to an interference might be able to obtain the testimony of his wife, she being competent in the State in which he lived, while the other party could not secure the testimony of his wife Jecause living in a State by whose laws the wife was not competent as a witness. This may, perhaps, be better illustrated by reference to the circuit courts of the United States. As already stated, under section 858 the laws of the respective States as to the competency of witnesses are made the law of the circuit court, so that in Iowa, in the circuit court of the United States, the testimony of the wife would be competent in behalf of her husband, because the Iowa laws make the wife a competent witness. Now, if a controversy were pending in that court between a citizen of West Virginia and a citizen of Iowa, it is apparent that unless the laws of Iowa thus incorporated into the Federal statutes shall extend all over the United States for the benefit of the circuit court in that particular case, the citizen of Iowa could obtain and use the evidence of his wife in support of his case, while the citizen of West Virginia, by whose laws the testimony of the wife is incompetent in her husband's behalf, could not procure that of his wife.

I am therefore of the opinion that the common law prevails in respect to the competency of husband and wife to testify for or against each other, and that the testimony of the wife is incompetent in this

case; also that this rule, so far as it applies to the Patent Office, is coextensive with the territorial jurisdiction of the United States, and is unaffected by any of the local statutes of the States.

I am compelled, therefore, to reverse the decision of the Examiner of Interferences, and to hold that the testimony of the wives of Rein and Ruppel must be stricken from the record.

EX PARTE PAGE AND KRAUSSE.

Decided June 7, 1888.

43 O. G., 1455.

1. ACCEPTANCE OF PATENT WITH Knowledge OF DEFECT A Bar to REISSUE. A party who voluntarily takes his patent with full knowledge at the time that the specification or claims are defective and fail to cover his entire invention, or that the patent in other respects is inoperative or invalid because of the omission of an amendment which he petitioned the Commissioner to admit, which petition was refused because of the insufficient showing, can not thereafter maintain an assertion of inadvertence, accident, or mistake, such as would justify the Office in granting him a reissue to correct the errors.

2. PETITIONS DENIED UNLESS WORKING IRREPARABLE INJURY.

An applicant who has had his day in the Office, and whose application has received full consideration and has been passed to issue, ought not to be permitted to withdraw his case from issue and submit amendments which should have been earlier proposed, and thus put the Office to the trouble of making a re-examination. Unless a showing of irreparable injury is made to appear, such petitions will be denied and applicant required to file a new application covering the subject of his proposed amendment, or he may abandon his original application, pay a new fee, and file another application in the form desired. 3. REISSUE-CONSTRUCTION of Statutes.

The inadvertence, accident, or mistake contemplated by the statute relates to the form and character of the specification and claims as they stand at the date of issue. (Ex parte Mahnken, 40 O. G., 915; 41 O. G., 1269.)

APPEAL from Examiners-in-Chief.

PROCESS OF AND APPARATUS FOR TREATING BARIUM SULPHATE.

REISSUE APPLICATION of William M. Page and Anna L. Krausse, executrix of Emil B. Krausse, deceased, filed June 29, 1887, No. 243,185.

Messrs. Knight Brothers for the applicants.

HALL, Commissioner:

This reissue application was rejected by the Primary Examiner for the reason that it did not appear that the alleged invalidity or inoperativeness of the patent heretofore issued was due to inadvertence, accident, or mistake, as contemplated by the statute. An appeal was taken by applicants to the Examiners-in-Chief, who, by a divided de

cision, affirmed the action of the Primary Examiner, and the case was brought before the Commissioner on appeal.

The facts are as follows: After the original application of William M. Page and Emil B. Krausse had passed to issue a petition was presented to the Commissioner requesting that the case be withdrawn from issue in order to enable applicants to file an amendment. The Commissioner's decision was rendered on the 18th of May, 1887, refusing the request and denying the petition. The decision was based upon the fact that the petition which requested the withdrawal of the case from the issue showed no valid reason why it should be granted. It is the well-settled practice in the Office that such petitions will not be granted unless they show that applicant will sustain some irrepara ble loss or damage if the amendment be not permitted. An applicant who has had his day in the Office, and whose case has received full consideration and has been passed to issue, ought not to be allowed to withdraw his application from issue and submit amendments which should have been previously submitted, and thus put the Office to the trouble of a re-examination. The practice just alluded to has become settled, and in such case an applicant is required to file a new application embracing the subject of the proposed amendment, pay the Office the fees contemplated, and he is then entitled to a new and original examination. But it sometimes occurs that public use has intervened, or some other circumstances which render it practically impossible for an applicant to successfully prosecute a new application, and whenever this fact appears the Office with equal uniformity allows the appli'cation to be withdrawn from issue and amended. In the present case there was no such showing, and the Commissioner had nothing before him which would justify a departure from the well-established practice. Applicants failing to secure the introduction of their proposed amendment, and fully aware of the fact that the patent which would issue would not contain such amendment, saw proper to pay the final fee and take out the patent. This was done by the applicants presumably with a view of obtaining a remedy by reissue, for on the day after the issuance of the patent they prepared and executed the present reissue application and filed the same on June 29, 1887.

It is apparent from this statement of the case that the patent which issued on the 21st day of June, 1887, was not invalid or inoperative in respect to the proposed amendment by reason of any inadvertence, accident, or mistake existing in the minds of the applicants as to the form of the specification or as to what the application contained at the date the patent issued, for they were well advised that it was defective in the very particulars referred to, and notwithstanding that knowledge they saw proper to take the patent in that form.

If the omission to have the amendment, or matter covered by it, introduced into the application or incorporated in the patent had resulted from a mistake on the part of the Office, without any fault on the part

of applicants, the mistake would undoubtedly have been corrected, either by an additional certificate or by breaking the seal of the old patent and issuing a new one, in accordance with the practice of the Office. If the omission is to be termed an inadvertence, accident, or mistake, the error occurred long anterior to the issuance of the patent, and, as just stated, was discovered and was capable of rectification by the applicants before the patent was issued to them; there was a clear remedy before them.

If, as suggested hereinbefore, when the petition to be allowed to withdraw the original case from issue for the purposes of amendment was presented to the Commissioner, a showing had been made that irreparable injury would result from a refusal, or that a new application could not be successfully prosecuted in consequence of the existence of public use or other circumstances, then such petition would have been allowed and the amendment would have been incorporated. If, however, no such conditions existed, as was unquestionably true in this case, applicants should have abandoned their original application, paid a new fee, filed a new application in the form desired, and taken their patent on such application. Instead of doing this they chose the other alternative and took out the patent in the objectionable form stated. It is true that in doing this applicants may have misconceived the proper remedy and the proper method to pursue; but it remains true, nevertheless, that at that time there was no inadvertence, accident, or mistake in their minds with reference to the character of the specification and claims embraced in their application, and it can not be said of the patent that it is invalid or inoperative in consequence of such inadvertence, accident, or mistake as is contemplated by the statute.

In ex parte Mahnken (40 O. G., 915) I carefully considered the character of inadvertence, accident, or mistake which would justify a reis sue, and reconsidered the subject in the same case (41 O. G., 1269). I adhere to the conclusions reached in those decisions, that the inadvertence, accident, or mistake contemplated by the statute is one which relates to the form and character of the specification and claims as they exist at the time the patent issues, and if a party voluntarily causes his patent to issue with a full knowledge at the time that such specification and claims are imperfect and fail to cover his invention, or that the patent in other respects is inoperative or invalid, the right to a reis sue will not arise. Certainly such will be the case if before the patent issue there is any remedy furnished by the law or in the practice of the Office for the rectification of such imperfections or defects in the application of which applicaut does not avail himself.

The decision of the Examiners-in-Chief is affirmed.

884 PAT-5

1. UTILITY.

EX PARTE DE BAUSSET.

Decided June 16, 1888.

43 O. G., 1583.

The Office is bound to raise the question of utility of an alleged invention in cases where natural laws and established principles are disregarded, for the reason that the law does not authorize the grant of letters patent except for novel and useful inventions. In such cases, even if novelty were admitted, a patent would be withheld until applicant should demonstrate the operativeness of his device. Ex parte statements or theoretical arguments are not sufficient; applicant must prove by practical demonstration his assertions.

2. SAME.

The patent system was not designed to protect the chimerical schemes of visionaries or closet theorists. Invention consists in more than the work of the imagination. To conceive of a scheme of vast dimensions is the work of a dreamer; to make the mathematical computations requires the ordinary knowledge of the student; to face the difficulties of construction and devise means to overcome them is the true work of the inventor.

APPEAL from Examiners-in-Chief.

AIR-SHIPS.

APPLICATION of Arthur de Bausset, filed March 11, 1886, No. 194,910.

Messrs. Dyrenforth & Dyrenforth for the applicant.

HALL, Commissioner:

This application was formally rejected by the Primary Examiner for want of operativeness, that being the only question involved in such action of the Office. Upon appeal the decision of the Examiner was affirmed by the Examiners-in-Chief. Thereupona pplicant appealed to the Commissioner. The case was referred to and heard by the Assistant Commissioner, who reversed the action of the Examiners-in-Chief upon the record as it then stood. The attention of the Commissioner having been called to the matter, and it having been suggested that other questions of merit were present in the case which had not been involved in the previous action of the Examiner, the application was remanded to the Primary Examiner with direction "to examine the application on its merits and allow or reject the case as his judgment may determine." The Examiner, regarding this direction as an authority to treat the case de novo, went more at length into the question of operativeness, and also based the rejection, which he again made, upon certain references which had been before cited. The case was again appealed to the Examiners-in-Chief, who affirmed the decision of the Primary Examiner, and it is now before the Commissioner on appeal from the decision of the Examiners-in-Chief.

The references are the following patents: Abruzzo, July 21, 1868, No.