these references he should always attempt to have the one he considers his best reliance for rejecting the narrowest claim he will reject. If it occurs to him how it may be done, he should suggest what appear to him the principal novel points of the invention. But in the next action by the attorney he may expect to find a different view as to what is the most important point of the invention and he should not be irritated at being told that his own point of view is wrong. The examiner should constantly keep in mind that whereas he approaches the consideration of the invention from the point of view of the gradual development with which he is familiar and therefore unconsciously will look for the next step along the same known line of development, the majority of inventors probably are not those who have followed any such course, but have struck out in a direction unguided by knowledge of the previous course of development. As I once heard an inventor say, the examiner ought not to expect the inventor's mind to run on the track like other men's, for if his mind ran on the track he would get nowhere except where the track led. The attorney for the inventor also is liable to have a still third point of view, being more familiar with the business aspect of the invention. The great thing is to get a mutual accommodation of the three points of view, and in order to do this it is necessary to constantly strive to maintain a sympathetic attitude. What the inventor does is to evolve and apply an idea. So long as the main idea and its significance are uppermost in his mind, he is liable to be erratic in the choice of means of embodiment, nor is it necessary that he even choose the best means at hand. The examiner will be often surprised and perhaps nettled at the inventor's peculiar method of expression, but he must not let this get his mind off the main thought of the invention. Most of the controversies arise between the attorney and the examiner over the pertinency of references, and this is due to the variant directions of approach above mentioned. The examiner ought to be willing to listen to every contention the inventor's attorney may make, if for no other reason than to test the correctness of his own judgment.

Another thing the examiner should guard against is confusion in the use of the terms in an argument. Socra

tes once said, "Define your terms and all argument will cease. Of course many arguments are carried on in an effort to arrive at a common understanding of the terms in use. The examiner will find many difficulties will disappear when he makes due allowance for the fact that he is of necessity using the terms familiar in the art as it has heretofore developed, whereas the inventor in the nature of the case will not use the same terms in the same sense, because he is not as familiar with the development of the art. The examiner can be very helpful by explaining the ambiguity and indefiniteness of terms used by the inventor, and it is his duty always to be a helper.

On the other hand, there is one point of continual quarrel between attorneys and examiners, upon which I think the examiner should stand firm and with respect to which I think his standing firm will be of the greatest aid to the inventor. This is the matter of definiteness of claim. It is perfectly natural, and is almost the universal custom, that an attorney will undertake to write a set of claims so as to anticipate now-unthought-of variations of the applicant's invention. He will try to write one claim in one set of terms and another claim, to the same thing, in another set of terms, just because he is conscious of the variant qualities of minds he will find in the courts. He will not be so much concerned with making a clear definition of the invention as in anticipating future infringements. That is, he will try to write a set of claims so that he can pick out one to fit the device of some one particular infringer and some other claim designed to fit the device of another infringer who has a different form of apparatus. Widespread as this custom is I am satisfied that it is both unlawful and unwise from the standpoint of the patentees' interests. If the statute says one thing more emphatically than any other it is that the inventor shall definitely point out what his invention is. It clearly contemplates that the inventor shall leave to the court to decide whether that invention is found in the defendant's device. The court will not, and it ought not, to merely try whether the terms of the claim define the defendant's device. The terms of the claim might do so when there is no infringement at all, and on the other hand, the terms of the claim might fail to do so

when there is clearly an infringement. For example, the court will hold that a pyramidal car body is a conical car body, if it is necessary to sustain a good patent against a real infringer (Winans vs. Denmead, 15 Howard, 330); and on the other hand, it is a very common experience to find a claim literally reading on the defendant's device and yet no infringement. The court ought not to be put in the position of saying that if this claim is construed so-and-so it is not valid, and if it is construed in another way it is not infringed. The claim ought always to be construed on the disclosure of the patent and be capable of no other construction, leaving open a pure question of equivalency to decide. If this is kept in view by the examiner and the attorney it will inevitably result that the claims are definite and that they are few in number. Once given a distinct and properly definitive claim, the presence of any other claim to the same subject-matter will simply confuse the patent. The examiner can bring about a great reform in this respect by firmly rejecting all claims that do not differ from other claims in a real and patentable feature; and he can very often state the matter to the attorney in such a way as to make it clear that the patent is stronger by having a set of claims which, taken together, are definite.

Finally allow me to impress upon you the beautiful simplicity of our patent law when rightly understood. Judge Butterworth is credited with having said, "Patent law is the metaphysics of the law." I never liked that expression and I do not believe that it is just. The word "metaphysics" implies something complicated if not occult and mysterious. Some cynic said that "Metaphysics is a blind man hunting in a dark closet for a black hat which is not there.' The patent law, on the other hand, is perfectly simple. The reasons for it are perfectly simple. Its methods are perfectly simple.

The extremely fortunate point about our patent law, and the feature which gives it its great efficiency, is the arrangement by which the inventor's' reward depends directly upon how much good the invention does to the world. If the invention fills a want, the inventor grows rich. If it is not wanted, he gets nothing. His return, at least theoretically, is the measure of the demand for his invention, and you will notice that the demand for the

invention should be a measure of the need of protection for it and therefore of the value of the patent. It is the function of the Patent Office to simply measure the degree of novelty the inventor has found. The public will measure the value of that degree of novelty. But the Patent Office is also to see that the inventor actually gives the public a clear disclosure of his invention in such a way that it may not only use it but that it may know just what are its limits within which an imitator cannot enter. And his disclosure and delimitation of the invention is to be made promptly, if it is to fulfill the intended function of the patent system. The examiner ought to exert every effort to get through with the matter of prosecuting an application. To this end the most important thing is that the examiner's first action should be thorough, not arguing the case but deciding it, and giving briefly the best reasons. His next best action is to insist that the inventor's attorney shall make a real response to the office action and avoid dilatory tactics. I think you ought to be reminded, and I think you ought to be constantly reminded, that you have the right under the law to express your opinion as a judgment, and often to base it on broad grounds. If you will keep in mind just the questions the court will hereafter have to decide in considering and applying a patent, you will be able to make your rulings in such form that the attorney may either agree with them or be in condition to appeal without further argument. Above all, you should never relax the requirement that the patent must be plain and simple, the disclosure complete, and the delimitation of the step up accomplished by the invention, clear. You may easily write your letters so that the attorney will see that the criticisms are for the benefit of the applicant, and having done this once there ought not to be further argument about it, although you should be perfectly willing to withdraw a criticism when shown that it is unjust.

Of course all I have said is based on the supposition that the attorney is honestly striving to protect the interests of the inventor. When it comes to the attorney who is not honest, what I have said about sympathy will plainly suggest to you that there ought not to be any sympathy between you and him, and here especially there should be a quick and decisive action taken and further

disposition of the case left to higher authorities on appeal. You can-do no greater favor to the great mass of inventors and to the majority of the attorneys who are well meaning than to call the Commissioner's attention to every instance you find of a breach of professional ethics. I think the time cannot be long delayed when the ranks of the patent profession will have to be purified in order to prevent serious injury to the public interests as well as to the inventors as a class.

RULES 1 TO 16 INCLUSIVE.

By A. D. Merritt, examiner.

(Delivered before the fourth assistant examiners.)

The subject of my lecture involves Rules 1 to 16 inclusive of the Rules of Practice in the Patent Office. And since it has fallen to my lot to deliver the first lecture on the Rules, it has occurred to me that it would be appropriate to deviate from my text for a minute to mention the authority on which the Rules are based and the value of a clear conception of their import.

The authority for the Rules of Practice is found in Section 483, of the Revised Statutes of the United States, and is as follows:

"The Commissioner of Patents, subject to the approval of the Secretary of the Interior, may from time to time establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office."

The Rules are as nearly in conformity to the Statutes, the decisions of the several Commissioners, and the courts as it is possible to make them. As they now stand they are the work of competent revisors of long experience and high standing in the Patent Office. A clear understanding of the Rules will greatly assist you to facilitate and do good work in the office and will be of much benefit to you should you ever desire to become successful practitioners before the office. Hence, I can not urge upon you too strongly the necessity of a complete and intelligent understanding of them.