Fifthly, Information in the Interest of Inventors and References in the Interest of the People Including Inventors (Rev. Stat. 4903.)

If patents are to be granted in accordance with fundamental law, and also with fair regard to the interests of the two real parties to the contract, it is submitted that after examinations have been made of applications in accordance with an interpretation of the meaning of the Revised Statutes 4893 that is in harmony with the fundamental principles that have been referred to at length, official decisions rendered as the result of such an examination should be made in accordance with such an interpretation of Revised Statutes 4903 as will be in harmony with the contractual and constitutional principles involved.

Revised Statutes 4903 provides:

"Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specification, the Commissioner shall order a re-examination of the case."

It is to be noted that this statute contains a mandatory provision to the effect that information as well as references shall be furnished to applicants, and it is submitted that this information should be such as to aid in determining the true scope of the real invention disclosed in order that claims may be presented that may make the inventor secure in the exclusive right to his invention. The term "references" doubtless applies to all matters of fact constituting, under the statute, evidence of want of novelty and also references to all matters of law

and fact constituting evidence of lack of invention under the statute.

And since such references to matters of facts and law under the statute are to be cited in official decisions in the interest of the people to prevent the granting of patents that invade the existing rights of the people, and in order that the people as well as inventors may not be deceived by the grant of inoperative or invalid patents, it would seem only fair and reasonable to assume that "information" under the statute should be given in official decisions both as to matters of fact and matters of law that will aid applicants in securing patents that will conform to the elementary principles involved in the contractual and constitutional character of the grant.

Some Applications of Elementary Principles.

It may now be of some little interest to apply, in a simple way, the elementary and fundamental principles to which reference has been made, to some familiar cases that frequently come before the examiner for consideration.

(1) Let us consider a case involving mill construction in which upon a thorough examination of the alleged invention as required by the statute the examiner finds that the claims for a crushing roll per se as presented are anticipated by the prior art, but upon search for patentable subject-matter finds a new and patentable invention disclosed in the relation that one crushing roll bears to another crushing roll. It is submitted that it is in accorddance with fundamental requirements involved in the educational, contractual and constitutional character of the instrument under consideration and in accordance with a fair interpretation of Revised Statutes 4903 in harmony with these fundamental principles that information be given to the applicant of this patentable matter in order that it may be published in a patent to instruct and educate the people.

(2) Let us now consider another case involving the

alleged combination of a grinding element having a new grinding dress with a new means of fastening the element upon its shaft. This claim may be patentable in so far as the prior art is concerned and it may be in the selfish interest of the people as one party to the contract that such a restricted claim be allowed. But the interests of the inventor are of equal weight and value with those of the people and viewed from the inventor's standpoint, such a claim should not be allowed, because it does not make the inventor secure in the exclusive right to what he has really invented and because the contract would not be fair in its terms to the inventor if granted for this subject-matter. It is submitted that in such a case as this the claim should be rejected for want of patentable combination between the grinding elements with its particular dress on one hand and the particular means of fastening the element to the shaft on the other, and in accordance with the provisions of Revised Statutes 4903 applicant should be informed that separate claims, some to the grinding element with its dress and others to the means of fastening the element to its shaft may be allowed and that it is a useless limitation to claim such features in combination. It is submitted that there is just as much warrant in fundamental law for the refusal of claims which by reason of unnecessary and unrelated limitations (whether they be new or old), may make inventors insecure and unexclusive in their rights, as there is for the refusal of claims which would deceive the public and be worthless to inventors, because invalid in view of the prior art.

(3) Let us consider a case for mill construction in which the claims for a crushing roll having a special crushing dress and made, say, of manganese steel, are found to be patentable in view of the prior art, but upo a thorough examination of the alleged invention the examiner ascertains that the claims contain useless limitations by reason of the needless restriction as to the material of which the roll is made. The examiner knows the fundamental principles involved in the contractual character of the grant in that the claim granted

should be commensurate in scope and character with the scope and character of the disclosure made in the interest of the public, and the examiner knows that the presence of useless limitations in these claims may prevent the inventor from being made secure in the exclusive right to the real invention (the roll provided with the crushing dress) covered thereby as provided by the constitution, and accordingly in order that the patent may be granted in accordance with the provisions of fundamental law it is submitted that under the provisions of Revised Statutes 4903 the applicant should be given this information which has been acquired by the examiner, and he should point out to the applicant the true scope of his invention and what are the useless limitations in his claims.

(4) A case for, say, a grain threshing mechanism is now considered in which is presented claims for alleged combinations of distinct and separate subject-matter, for instance, the feeder and the cylinder threshing mechanism. The examiner in examining this case finds that the combination broadly is old and that each element is old as claimed. Both from his own study of the law relating to patentable combination and from a careful study of the very able but conflicting opinions expressed in papers read by examiners during the past year, the examiner has a very clear conception of the law relating to the patentability of combinations of old devices. He therefore cites references to show that the combination claimed is old and that the separate devices are old and rejects the claims for want of invention in assembling the old devices in one structure, if no new relation or result appears to the examiner. However, in order that the decision of the examiner may be in conformity with the elementary principles referred to and comply with a fair interpretation of Revised Statutes 4903, it is submitted that the applicant should be given information as to the law points involved, to the effect that the rejection is made in the absence of evidence of patentable combination among the parts indicating the production of a new or improved result, the production

of an old result in a better way or in the absence of a showing that one or more of the parts are caused to operate differently in the alleged combination than it or they did before in their separate capacities; and as indicating what is meant by a "new result" under the law, it is suggested that the decision in the case of Deere & Co. vs. Rock Island Plow Co., 82 O. G., 1561, be studied. In this case the judge said:

"The new result of a patentable combination is a result which is new and distinguishable as compared with results produced by the elements in their separate state or as assembled in a mere aggregation without functional relations to each other. A combination is not unpatentable merely because its results may also have been accomplished by other combinations."

If, in searching for patentable matter, however, in the above noted case it appears from the disclosure that, for instance, there is a new relation of the feeder to the thresher in that the material is so fed and controlled by the feeder as to prevent choking the thresher cylinder, it is submitted that information as to the matter should be given under the statute.

(5) Another case involving mill construction may now be considered in which a thorough examination under Revised Statutes 4893 discloses the fact that the claims define a new and distinct subject-matter patentable in itself in view of the prior art, in the character of new grinding mechanism per se, in alleged combination with feed mechanism, screens, and discharge mechanism which, together with the grinding mechanism, constitute the whole machine.

In such a case as this, it is submitted, references should be cited to show that the general combination is old; that therefore the people need no further instruction as to how such devices should be combined and such claims should be rejected because it is shown that appli