idea of combination and in the case of pioneer inventions is, of course, entitled to a wide range of equivalents. (Telephone Cases, supra.)

An illustration of these principles is found in the use of the word "automatic" as applied to an element of a machine. A claim containing such a limitation broadly has been held by the Board of Examiners-in-Chief to be unpatentable because it covers all automatic machines capable of performing the same function and does not point out any novel feature of invention (Huber patent No. 857,283). Where, however, the element was stated by the claim to be automatic in response to or irrespective of certain specific conditions recited as a functional limitation, it was held by the First Assistant Commissioner (now Commissioner) Newton that rejection on this ground was not applicable (Caseo patent No. 1,160,857). The patentability in the latter case would, of course, depend upon the unobviousness of the relationship set up by the functional limitation.

Summary:

We may summarize the conclusions deduced from our consideration of claims, as follows:

(1) The mere substitution of an element or subcombination, whether it be new or old, for its equivalent, in an old combination is not patentable.

(2) If the elements or subcombinations bear a new and unobvious coöperative relationship to each other, or if the substitution of the new element produces a new and unobvious result in addition to the old result, the combination is patentable.

(3) Where the invention resides solely in the subcombination it should not be claimed in combination.

(4) Combination claims including as elements means or mechanism limited by function may be patentable or unpatentable, dependent upon the effect of such elements, as defined, in the combination, in accordance with the principles stated under (2).

(5) Claims to a principle of nature or to a result or to all means for producing a result are unpatentable.

While I have not viewed Rule 37 as applying to questions arising in connection with the rejection of claims

on prior art, the general rule for the rejection of combination claims on a combination of references is so closely related to the questions which we have been considering that I will quote the following statement of principles governing the same, from ex parte McCollum (1914 C. D., 70; 204 O. G., 1346):

When legitimate combination claims, such as those appealed, are rejected on two or more references, the trend of the best authorities indicates that at least one of the references ordinarily should show the general combination claimed.

Legitimate combination claims are for constructions or mechanisms for performing a function, and it is improper to reject them on ideas extracted from various references unless those ideas are accompanied by constructions that may be put together without so changing them as to require invention to adapt them to perform the desired result.

In determining the patentability of a claim over features found only in a plurality of references it is necessary to consider the structural differences specified in the claims, as well as their functional difference or result. If the structures of the several references can not be combined without the exercise of invention, even though the result is old, the claim should be allowed. If the structures of the references may be combined or substituted one for the other and the combined function or result is new, the claim should be allowed. It is only when both the structural features found in the references may be combined without invention to meet the structure called for by the claim and the function or result involves no invention that the claim should be rejected.

In our treatment of claims over and above all else is the principle that if one has done an unobvious thinghas made an invention-he is entitled to a patent therefor, and no strict application of rules should be allowed to deprive him of his rights. (Miehle Printing Press & Mfg. Co. v. Whitlock Printing Press Co., 223 F. R., 647; 1915 C. D., 284; 218 O. G., 1155; American Ball Bearing Co. v. Finch, 239 F. R., 885.)

Invention is a mental act, not a physical one. Usually the invention is in the idea of adaptation rather than in the physical changes necessary to carry it out, the latter being obvious after the suggestion is made. (Hobbs v. Beach, 180 U. S., 383; 1901 C. D., 311; 94 O. G., 2357;

Potts v. Creager, 15 Sup. Ct., 194; 155 U. S., 597; 70 O. G., 494; Topliff v. Topliff, 145 U. S., 156; 1892 C. D., 402; 59 O. G., 1257.) The test of invention should not be, could one skilled in the art, after seeing the invention, assemble the parts of specially selected references in the manner taught by the invention undergoing test, but, rather, would he, without knowledge of the invention, be led to make the selection of the particular references from the entire art and modify and combine them in the manner taught by the applicant, without the exercise of his inventive faculties. (Ideal Stopper Co., et al., v. Crown Cork & Seal Co., 131 F., 244; Faries v. Brown, 57 C. C. A., 609.) In the words of the court in the latter case: "The eye that sees a thing already embodied in mechanical form gives little credit to the eye that first saw it in the imagination. But the difference is just that between what is common observation and what constitutes an act of creation. The one is the eye of inventive genius; the other of a looker on after the fact."

ANNUAL MEETING OF THE PATENT OFFICE

SOCIETY.

The annual meeting of the Society was called to order by President Coulston at 4:30 P. M. in the south hall, third floor of the Patent Office building, January 23, 1919, a good representation of the Society's membership being present.

The President briefly reviewed the work done during the past year, mentioning specifically the purchase of a moving-picture machine and the use thereof in the public meetings held and lectures given; the series of papers read by primary examiners and other officials before and for the benefit of the new assistant examiners; the establishment of the JOURNAL OF THE PATENT OFFICE SOCIETY; the maintenance of relations with the Patent Committee of the National Research Council and the attendance of members of the Society upon conventions in Atlantic City, Baltimore and Richmond. All these activities were commended and renewed efforts along similar lines urged for the coming year.

The President announced receipt of copies of the report of the Patent Committee of the National Research Council, and it was voted to refer the report to the Executive Committee of the Patent Office Society for early consideration.

The report of the Treasurer of the Society showed a balance on hand of $701.72. 1

On motion of the chairman of the Membership Committee, Hon. Thomas Ewing was unanimously elected the first honorary member of the Society, and upon further motion by the same chairman, the following gentlemen, comprising the other members of the Patent Committee. of the National Research Council, were also unanimously elected honorary members: Dr. Wm. F. Durand, Dr. L. H. Baekeland, Dr. M. I. Pupin, Lt. Col. R. A. Milliken, Dr. S. W. Stratton, Dr. Reid Hunt, Mr. F. P. Fish, and Mr. E. J. Prindle.

The annual election of officers of the Society and members of the executive committee was held during the session with the following result:

President, M. H. Coulston; Vice President, J. H. Lightfoot; Secretary, Bert Russell; Treasurer, W. F. Avery. Members of the Executive Committee: A. W. Cowles; E. S. Glascock; G. A. Lovett; C. H. Pierce; M. E. Porter; E. D. Sewall; W. L. Thurber; W. J. Wesseler.