Lapas attēli

The exact language of the law on this point is: “But such second application must be made within two years after the allowauce of the original application.” The language of the law is imperative, and leaves no discretion with the Commissioner. This section appears to relate to an entirely different class of applications than is provided for by section 4894. The latter section requires that the applications shall be completed and prepared for examination within two years after the filing of the application, or, in default or failure of applicant to prosecute the same, the application is to be regarded as abandoned, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.

The former-mentioned section relates to applications after they have been completed, allowed, and passed to issue. The origin of this section dates back as far as 1863.

In the act approved March 3, 1873, it was held that if the final fee for a patent allowed was nou paid within six months thereafter, the patent should be withheld, "and the invention therein described should become public property as against the applicant therefor.”

It would appear that this law was enacted upon the representation of the Commissioner in his annual report for 1861, dated February 13, 1862, tbat the Office was suffering disadvantageously by the postponement of the payment of a great many final fees.

This act was amended by the act of June 25, 1864, which extended the privilege of renewing the patent within six months to any person having an interest in the invention, whether as an inventor or assignee.

The act of 1863 was again specially amended by the act of March, 1865, which for the first time extended the privilege of renewing the application to two years after the date of the allowance of the original application, and the language of the section of that act relating to this matter was incorporated without change into the act of 1870. But in the act of 1870 that provision of the act of 1863 in force until 1870, enacting that the invention, as against the applicant, should become public property, was omitted.

It here may be stated that the requirement compelling applicants to prosecute their applications within two years, or else to show to the satisfaction of the Commissioner that such delay was unavoidable, was enacted March 2, 1861, two years prior to the act of 1863, and was in force contemporaneously therewith until 1870.

There is an injustice apparently resulting from this discrimination which the law makes between the applications which have not been prosecuted within two years after an action by the Office and applications which have been prosecuted with diligence and passed to issue. In the former case applicant may keep his case alive for a number of years; or, after the application has become abandoned by operation of law, he may renew it by showing that his delay was unavoidable; or he may discard the old application altogether and file a new one in its place, whereas the applicant or owner of the forfeited application-an application which bas passed the ordeal of examination and been deemed worthy of a patent—is debarred from renewing the same at all, or from showing unavoidable delay, after the expiration of two years subsequent to the allowance of the original application.

But this apparent uvjust discrimination has existed in the law for fourteen years. If it had been the design of the legislature to have put them all on the same footing, it certainly would not have passed a special act making the distinction.

But it is a maxim of interpretation that it is not to be presumed that the legislature intended any part of a statute to be without meaning. To regard these forfeited applications on the same footing as incomplete and abandoned applications, and allow a new application to be filed, or the delay explained by affidavits, however equitable the construction, would remove the distinction between the two classes of cases, and leave the imperative language of section 4897 without any meaning whatever.

The general rule of construction is, that all parts of an act in pari materia are to be construed together and so expounded as to support and give effect, if possible, to the whole; but where the language of a statute relates to different subjects, and is clear and unmistakable, no occasion can arise justifying the resort to any but the obvious meaning of the language employed. The rule to be followed, then, in this case is that prescribed by Dwarris on Statutes, Potter's edition, page 196: “ If the words of the statute are plain they must be strictly followed ; but if they are ambiguous the whole context must be looked to for their explanation. The correct rule is to construe acts of Parliament according to their grammatical and natural sense, unless the context shows clearly that a different sense was intended.”

Unjust discriminations or abuses, if any arise, must be corrected by the legislature itself, where the language of the law is plain. The plain language of the statute fixes a clear limitation to the time when a for. feited application can be renewed.

The request of applicant must therefore be denied.


0. G., vol. xii, p. —



an interference contestant, the first to conceive of the invention and to make a model

of the device, failed to reduce it to practice or to file his application for patent until after the grant of a patent to his adversary. There being nothing to excuse the lack of diligence, priority was decided against him.

It does not follow that because an applicant has proceeded so far in developing an in

vention as to be entitled to a patent, ex parte, he should also receive it as against a contesting patentee who was subsequent in conceiving of the invention. Adequate reduction to practice at the time the adverse patentee made the invention is essential to establish lack of novelty and to overthrow the patent in court. Proof of

this fact failing, a new grant was refused. SPEAR, Commissioner:

Of the two parties in this coutroversy, Paine appears by the record to be the prior applicant, having filed bis application on the 1st day of December, 1875, and received a patent on the 8th day of February, 1876. The application of his opponent, Hallidie, was filed on the 28th day of February, 1876.

The Board of Examiners-in-Chief affirm the decision of the Examiner awarding priority to Paine. They find that Paine was not the first to conceive of the invention, but tbat Hallidie never reduced it to practice, and had abandoned the idea for one deemed by him more practicable and valuable. The utmost that Hallidie was found by them to have done consisted in making a model of the invention, which was lost or destroyed.

Question was raised by counsel for Paine whether this early model of Hallidie's involved the invention in controversy, and there appears to be some doubt in respect to the matter, but I do not regard it material to the case. Assuming that the model of 1872 illustrated the invention in controversy, and admitting that the invention was not reduced to practice prior to the date of the patent of Paine, counsel for Hallidie nrges, first, that the applicant and patentee should have the same standing before the Office in respect to the proofs; second, that the inventor should have put his invention into practice in order to be entitled to a patent; and, third, that the first inventor, if he has proceeded so far as to entitle him to a patent in an ex parte case, is also entitled to a patent as against a patentee who had subsequently conceived of the invention. The first and third propositions are contrary to what is now the wellestablished practice of the Office, laid down distinctly by Commissioner Fisher in Richardson vs. Denza, C. D., 1870, p. 856. The same doctrine is reiterated in many subsequent decisions, and is based upon the decis. ions of the courts, which concur in the doctrine that he who would prove that a patented invention is wanting in novelty must show that the invention upon which he relies has been reduced to practice prior to the invention of the patentee.

I do not find in any of the arguments urged by counsel for Hallidie any good reason for changing this well-settled practice. The discussion, on the contrary, confirmed me in the opivion as to the justice and propriety of it. The authorities cited were clearly shown not to go to the extent asserted. I need not, therefore, enter into any discussion of the question whether or not the model of Hallidie made in 1872 included the invention in controversy. It is not denied that he did not reduce this

invention to practice prior to the patent granted to Paine. It is useless to discuss any question relating to the validity of Paine's patent, so that I need not inquire whether or not Paine has reduced the invention to practice. The only other question which could arise would be as to the diligence of Hallidie. His long delay is not satisfactorily accounted for. On the other hand, it appears from his own statement that he did not recognize the value of the invention, and preferred another device, and there is some evidence tending to show that his activity in the matter, after so long a delay, arose from competition with another party, and that he was spurred to new effort by the appearance of avother inventor claiming to have made this invention.

I see no good reason, therefore, to disturb the finding of the Board of Examiners-in-Chief, and accordingly affirm their decision.

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An application primarily for a process invention, but containing matter capable of

illustration, was subsequently amended to include such matter instead, a drawing being filed and a description inserted relative thereto. Both were much more minute in detail and feature than was warranted by the language originally employed : Held, first, that the amendment was rightly objected to as new matter,' it conforming to no part of the case as it existed at the time of its filing, (Rule 32, Office Practice ;) second, that the clause of Rule 32, Office Practice, permitting the admission of an amendment on satisfactory proof that it is part of the original invention, does not apply, because the matter is one capable of illustration by draw

ing and model. The prohibition in Rule 32 against the introduction of "new matter” is not a mere

question of Office fees, but is to limit the power of amendment, so that it is possible to determine when an application is completed.

SPEAR, Commissioner:

Applicant in this case was clearly precluded from the enlargement which he seeks to make of the original application by the terms of the rule. Rule 32 requires that all amendments of the model, drawings, or specification, in case of original applications, which are capable of illustration by drawing or model, must conform to at least one of them as they were at the time of the filing of the application. Farther changes than this can only be made by filing a new application. Now, in the original application no drawing or model was submitted. The only reference which I find to anything which can be represented by drawing or model is in the clause quoted by the Examiner. The applicant says, in the original specification, “ to do this I use a pad of peculiar coustruction, with one side porous and absorbent.” Further on le mentions that this pad, or the porous portions of it, may be made of flannel. It appears, upon inspectiou of the papers, that it is not tbat description simply which he now illustrates by the drawing and model, but a new description.

In the first specification there is a lack of many elements included in the claim now submitted, which elements appear to be an essential part of the invention. I do not find in the original specification the non-porous layer B B, the flexible layer A A, straps D D, or their fasteners, or the straps E and F F. In respect to all these elements the amendments do not conform to the original application.

The last clause of Rule 32, relating to the amendment of the specification upon proof satisfactory to the Commissioner that the proposed amendment is a part of the original invention, in case the invention does not admit of illustration by drawing, plainly does not refer to such as the present application.

It is assumed that this case originally admitted of illustration by drawing, and it is on this assumption that the amendment is offered. The clause referred to contemplates application for processes and the like which are not capable of illustration by drawing or model, and in which some element of the process or compound had been omitted.

In the case before me the applicant does not seek to introduce any omitted element in the process. In such event the amendment might be admitted under the last clause of the rule. He relinquishes the

. claim for the process, and introduces another invention, necessary, it may be, or certainly useful, in carrying out the process, but still another invention, for the exclusion of which, as an amendment to the original application, the rule is especially intended.

It is not a mere question of fees in such a case as this, although that is not to be left out of consideration, but a necessary adherence to a well-defined order of business.

If an application once rejected may be amended by the addition of any new matter whatever, then no limit can be placed upon such amend. ment, and it would be impossible to determine when an application is filed or completed.

The Examiner is clearly within the rule, and his action is sustained.


0. G., vol. xii, p. 841.



4, 1877.-Decided September 19, 1877. That a claim is unintelligible is an objection from which interlocutory appeal lies to

the Commissioner

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