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THE NEW MEMBER OF THE BOARD OF

EXAMINERS-IN-CHIEF.

The selection of Mr. George R. Ide to take the place on the Board made vacant by the resignation of Mr. Samuel E. Fouts, apparently has met with universal approval. It adheres to the rule of giving these places to experienced men within the Office and offers encouragement for members of the Examining Corps to remain in the Office with the knowledge that their advancement is not limited to the position of Principal Examiner.

It has evoked no criticism, so far as known, from attorneys. They understand that the questions carried to the Board on appeal can best be settled by men experienced in Office practice and of ripe and practised judgment.

Mr. Ide has been a principal examiner and in charge of Div. 38 since January 3, 1909. He came into the Office August 27, 1886, as Fourth Assistant Examiner, and saw service in Div. 7. and the Classification Division prior to going to Div. 38 as ranking assistant in 1902.

He is a native of Vermont and lived for a while in St. Johnsburg where he graduated from the academy for which that town was famous. Removing to Philadelphia, he worked for a year in a machine shop and had a further year's experience as student in an engineer and architect's office. He then entered the junior clss of the University of Pennsylvania and carried to completion a special course in civil engineering.

Two years' service in the Philadelphia Survey Department, followed by a brief employment on railroad location in southern Kansas, preceded his appointment in the Patent Office.

Mr. Ide is a graduate of the National University Law School with the degree of LL.B. and LL.M., and has been admitted to practice in the D. C. Supreme Court and Court of Appeals.

WILLIAM J. RICH..

Notwithstanding their knowledge that Principal Examiner William J. Rich had been seriously ill for some time, the Office force was surprised and depressed to learn on January 25 that he had died early that morning.

Of indomitable will, Mr. Rich had practically arisen from a sick bed and assumed his duties in the office for a day or two only two weeks previously.

He was a native of Maine and was a graduate of Maine State College. He also graduated from the Massachusetts Institute of Technology and held a law degree from the old Columbia College, now George Washington University.

Mr. Rich was employed in the Patent Office since June 4, 1889, when he was appointed fourth assistant examiner. Promoted from grade to grade he was made principal examiner January 8, 1903 and placed in charge of Div. 1. In April 1907, he was transferred to Div. 3 where he remained as chief until his death. While assistant examiner he served for several years in Div. 21 and several more in Div. 23.

He was prominent in Odd Fellow and Masonic circles and had held high positions in lodges of each organization.

He leaves a widow, two sons and a daughter, the wife of Mr. W. C. Fielder of the Examining Corps.

Host of friends both in the Office and among attorneys will long mourn his passing.

JAY F. BANCROFT.

Mr. Jay F. Bancroft, recently Principal Examiner in this office, died in a local hospital January 17 after a long illness involving near the end almost total blindness.

He was retired from the Government service March 12, 1925 for disability.

Mr. Bancroft was first employed in the Patent Office as a clerk in 1881. He entered the examining Corps May

27, 1885, and was advanced through the several grades, attaining the position of Principal Examiner June 1, 1897. He was first placed in charge of Div. 11 and afterwards, on July 1, 1902, transferred to Div. 32, in which division he remained until retirement.

In 1900 he served as a member of the international board for awarding prizes to exhibitors at the Paris Exposition.

Mr. Bancroft was born in Mantorville, Minnesota, in 1855. In this town he at one time published the local paper, "The Mantorville Gazette".

He leaves his widow, Mrs. Nettie Bancroft, a sister at Mantorville, and a nephew in Tulsa, Oklahoma.

DISCLOSURE.

By V. I. RICHARD,
Associate Examiner Div. 50.

(Note. The part of this article appearing in this issue deals with the effect of disclosures as anticipations. Subsequent parts to appear in later issues will present other aspects of the disclosure, such as proper disclosure in an application, amendments, and significance of terms.)

Of all the questions with which the Patent Office must deal while an application is pending, one of the most important concerns the character of the disclosure of the application itself and of any references which may be offered as anticipations. While an application is pending attention is directed primarily to the disclosure forming the basis of the monopoly sought by the claims; but since the patent, when granted, becomes a documentary contribution of the highest order to the literature on the art, importance also attaches to the disclosure of features not embraced by the claims. The Office has a duty to see that from either aspect the disclosure is so full and clear

that there can be no doubt of its meaning and that it will be effective as an anticipation of any later invention of the same subject matter. This article deals primarily with the subject of disclosure but incidentally makes reference to the practice of the Office in weighing this disclosure of the application and in construing the disclosure of the references.

Source of the Law.

The duty of examining an application in accordance with R. S. 4893 and 4909 involves determining whether the applicant is "justly entitled to a patent under the law." This implies that a valid patent is meant, and the practice is to refuse a patent which would not have a reasonable chance of being held valid by the courts. The "law" referred to includes of course, the specific statutory provisions, principally R. S. 4886 to 4889, 4909, 4916, 4920 and 4923, and the judicial interpretations thereof. These latter can be grouped into two divisions. First, those by the Federal Courts in actions arising on granted patents; and, second, decisions of the Commissioner of Patents and Court of Appeals of the District of Columbia in proceedings involving pending applications.

Different Functions of Office and Courts.

While comity requires that weight be given by the Office to the first division of law above, it is only the second division which is binding as precedent upon the Office. This distinction is clearly pointed out in Carr 323 O. G. 4. It is based on the duty of the Courts, after a patent has issued and the patentee can no longer control its phraseology, to so construe it as to protect him, if possible; also on the duty of the Office, as representing the public, to require the applicant (in drawing up the contract, i. e. the application) to provide a proper considera

tion, in the form of a full and accurate disclosure of his contribution to the art, in return for the monopoly granted to him, and to accurately define such monopoly in the claims. The presumption of novelty arising from the grant of a patent is greatest when it has been subjected to critical analysis in the Office rather than a perfunctory examination. Imperial v. Crown 139 Fed. 312 (320). An older decision states another aspect. "That a claim may be saved by construction is no reason for sending doubtful claims to the courts. The law makes the Commissioner the first judge, and he has no right to turn out his work-botched and blundering in hope that some court will patch it up." Thorne 1869 C. D. 76.

This distinction is also based upon other reasons. While an application is pending it has seldom reached the stage of commercial importance which obtains when an infringement suit is instituted, and as a consequence the Office is not confronted with all the factors bearing on patentability which are before the Court in a suit. Practically all inventions look equally "wonderful” on paper, and meritorious inventions can not be distinguished from so-called "paper-patents." Both have an equal standing before the law. The Office is therefore concerned only in determining whether a patent would have a prima-facie validity. The proceedings might be compared with indictment proceedings before a grand jury, while a suit in the Courts to test validity of the patent compares to a trial of the 'indicted one.

I. Anticipation.

Among the statutory bars, any one of which will cause the refusal of a patent by the Office or a holding of invalidity by the Courts, is the bar of anticipation, or lack of novelty under R. S. 4886. Five aspects are recognized: (a) Prior knowledge in the U. S., (b) Prior use in the U. S., (c) Prior patenting to others, (d) Prior publication, and (e) Prior invention. Of these, only (a), (c) and (d)

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