its bobbin, in the manner set forth, between the needle and the thread which it carries, under a combination and arrangement of parts substantially the same with that described." This was con

strued to be in words a claim for the result, but in reality for the means or mechanism by which that result was to be attained; also, that too much stress should not be laid upon the distinction between a machine and a combination; also, that the patentee's claim was for a general combination, consisting of several subcombinations, viz., a mechanism for forming the stitch, a mechanism for holding the cloth to be sewed, and a mechanism for feeding the cloth, and that all these general elements in combination and arrangement were set forth in the specification.

Winans' patent for an "improvement in the construction of cars or carriages intended to run on railroads" claimed "the beforedescribed manner of arranging and connecting the eight wheels, which constitute the two bearing carriages, with a railroad car, so as to accomplish the end proposed by the means set forth, or by any others which are analogous and dependent upon the same principles." This claim was construed to be one for the car itself, constructed and arranged as in the patent; consequently, the novelty of the invention was not impeached by evidence showing that parts of the invention had been in use previously.2

The case of Burr v. Duryee,3 decided in the United States Supreme Court, on appeal from the Circuit Court of New Jersey, presents an exhaustive discussion of the principles distinguishing an invention for a machine from one for a process. Burr, the complainant, was assignee of the Wells patent for hat-making; the original patent therefor was granted in 1846, but in 1856 it was surrendered and a reissue obtained. In the spring of 1860 an extension was granted. In January, 1860, a patent was granted to Boyden for improved machinery in hat-making, of which Duryee and others became the assignees. This machinery the complainants, by permission of the defendants, examined. Afterwards, in December, 1860, they surrendered their extended patent and obtained a second reissue, upon the construction of which the decision of the matter in controversy turned. It was held to be an attempt to convert an improved machine into an abstraction, a principle, or

1 Howe v. Morton et al.; Howe v. Williams, per Sprague, J., MS. Ross Winans v. Schenectady & Troy R. R. 2 Blatch. 279.

Burr v. Duryee, 1 Wallace, 531,

mode of operation; a use of general and abstract terms, by which the specification was made so elastic that it might be construed to claim only the machine, or to exclude all previous and future inventions for the same purpose.

Wells, in his original specification, says: "What I claim, &c., is the arrangement of the two feeding belts (bb') with their planes. inclined to each other, and passing around the lips (dd) formed substantially as described, the better to prevent the fibres to the action of the rotating brush (F), as described in combination with the rotating brush and tunnel or chamber (M), which conducts the fibres to the perforated cone or other former' placed in front of the aperture or mouth thereof, substantially as herein described. I claim the chamber (M) into which the fibres are thrown by the brush, in combination with the perforated cone or other former, placed in front of the delivery aperture thereof for the purpose and in the manner substantially as herein described, the said chamber being provided with an aperture (N) below and back of the brush, for the admission of a current of air to aid in throwing and directing the fibres on to the cone or other former, as described. I also claim the employment of the hinged hood (s) to regulate the distribution of the fibres on the perforated cone or other former as described. And I also claim providing the lower part or delivery aperture of the tunnel or chamber with a hinged flap (9), for the purpose of regulating the delivery of the fibres to increase the thickness of the hat where more strength is required, as herein described, in combination with the hood as herein described." This claim was decided to be a valid one for an im

proved machine. The reissue of 1860 ran thus: "The mode of operation of the said invention of the said Henry Wells is such, that the fur fibres are directed and controlled so as to travel from the picking and disintegrating brush (F) towards the surface of the previous cone, &c., that they may be deposited thereon to the thickness required to make a hat of uniform thickness all the way around, and of the required varying thickness from brim to top; and this mode of operation results from combining with a rotary picking and disintegrating brush and a pervious cone or equivalent former, connected with an exhausting apparatus, suitable means for directing and controlling the fur-bearing currents. The said mode of operation invented by the said Henry A. Wells is embodied in the fol

lowing description of the mode of application, reference being had to the accompanying drawings, &c. . . . . What I claim as the invention of the said Henry A. Wells, &c., is the mode of operation substantially as herein described, &c., which mode of operation results from the combination of the rotating picking mechanism or the equivalent thereof, the pervious former and its exhausting mechanism or the equivalent thereof, and the means for directing the fur-bearing current or the equivalent thereof, as set forth."

Judge Grier, in giving the decision of the Supreme Court, said: "The surrender of valid patents and the granting of reissued patents thereon, with expanded or equivocal claims, where the original was clearly neither inoperative nor invalid,' and whose specification is neither defective nor insufficient,' is a great abuse of the privilege granted by the statute, and productive of great injury to the public. We concur, therefore, in the decision of the Circuit Court, that the machine of Boyden is not an infringement of the invention of Wells, and if it be an infringement of the reissued patent, that patent is void." (p. 577.)

Many v. Jagger et al.1 was a suit brought for infringement of the Wolf patent for improvement in cast-iron wheels for railroads and other purposes. The specification was in these words: "We give to the rim of our wheels the same form in all respects as is now given to the rims of car-wheels; but instead of arms, we cast our wheels with two parallel or nearly parallel plates, which plates are convex on one side and concave on the other. The hub, or nave, which is to receive the axle, is cast in the centre of these plates, extending from one to the other. We are aware that

car-wheels have been made with plates as a substitute for arms, but such plates have been made separate from the wheels and united together by screwed bolts, embracing the hub in a distinct piece between them. The difference between such wheels and those constructed by us is so obvious as not to need pointing out. What we claim as our invention, &c., is the manner of constructing wheels for railroad cars, or for other purposes to which they may be applied, with double convex plates, one convex outwards and the other inwards, and an undivided hub, the whole cast in one piece as herein fully set forth."

In construing this patent, the court held that the claim was not for the mode of constructing the wheel as distinct from the wheel

1 Many v. Jagger, 1 Blatch. 372.

itself, but was for the car-wheel after it was constructed. Also, that the claim was not for any separate part of the wheel, but for the entire wheel, and that it sufficiently distinguished between the new and the old.

In Buck v. Hermance,1 the words of the claim for a patent in cooking-stoves, "the extending of the oven under the apron or open hearth of the stove, and in combination with the flues constructed as above specified," were held to be a claim for a combination of the extension of the oven under the hearth of the stove with the flues, as described.

Booth v. Garelly.2 Here, a patent for a new and ornamental design for figured silk buttons, under act, August 29, 1842, where the specification claimed the radially formed ornaments on the face of the mould of the button, combined with the mode of winding the covering of the same, substantially as set forth, and described the configuration of the mould and the winding it with various colored threads, but did not describe the process of winding the silk, was construed not to cover that process, but merely the arrangement of the different colored threads in the process, so as to produce the described ornaments.

In Oxley v. Holden, the words of the claim for the second part of the invention were: "I claim the metal fixings and the mode of applying the same, described herein as the second part of my invention." The claim was construed not to apply to the metal fixings (which were notoriously old and well known) apart from their application.*

CHAPTER VII.

PROCEEDINGS AT THE PATENT OFFICE.

I. Caveat for incomplete Invention.

II. The Petition, Oath, Payment of Fees.

III. Signatures of the Secretary of the Interior and Commissioner.

IV. Interfering Applications.

V. Reissue and Amendment of Patents.

CAVEAT FOR INCOMPLETE INVENTION.

§ 270. THE twelfth section of the act of July 4, 1836, provides that any citizen of the United States, or alien who shall have been resident in the United States one year next preceding, and who shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on payment of the sum of twenty dollars, file in the Patent Office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right till he shall have matured his invention; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein mentioned, shall be considered a part of the sum required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such a caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the commissioner to deposit the description, specifications, drawings, and model in the confidential archives of the office, and to give notice, by mail, to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings, and model; and if, in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are provided in the case of interfering applications.

These provisions have been somewhat modified by the Patent