The decision in the Eagle appeal proceeds, in substance, to say that whenever several distinct modifications or constructions are retained in one application, by reason of the test of a generic claim proving their substantial identity in invention, it is none the less incumbent upon the applicant to confine his claims, other than the generic ones, to some single species that he may elect.

This requirement is in strict consonance with the policy of the Office to refuse to examine several diverse constructions on the payment of a single fee, for otherwise the applicant would obtain the same benefit as if he had paid a separate fee for each construction, while the Office is in equal measure deprived of a portion of its legitimate revenues.

Applying these principles to the case in hand, I find that claims 1 and 2 are sufficiently broad to cover both the jack and the capstan (Figs. 16 and 17). So long as these claims are retained, or others equivalent in scope, the presence of Figs. 16 and 17 cannot be seriously objected to. Likewise, Fig. 15 comes within the terms of claim 5, as now presented, and should consequently be allowed to remain. How far the future status of the case may change all this it is not easy to foresee. The Examiner, though, is admonished to require a division and restriction if such generic claims as cover all the modifications are relinquished at any time hereafter, and to decline the consideration of all specific claims save those which relate to the jack, the device which applicant has evidently elected to retain in specie.

The objections of the Examiner are overruled.

PRACTICE IN INTERFERENCE CASES--REFERENCE.

[Decided November 7, 1877.]

O. G., vol. xii, p. 979.

A, the successful contestant in an interference proceeding between pending applications, suffered his case to be forfeited subsequently by the non-payment of the final fee. If other parties come into the Office thereafter who claim the subject-matter of the award, A can neither be notified nor joined in any new controversy that may arise.

His application is no longer "pending" in the sense of the law which permits pending applications to be placed in interference.

His former adversaries, however, although debarred by the award from making title in themselves, should, if their cases are still pending, be made parties to the new interference with the subsequent applicants, in order to fix the rights and status of the latter.

If such new contest results in favor of the subsequent applicants, a patent should issue, notwithstanding the date of completed invention is later than that found for A. In event A renews his forfeited application, as provided by law, he will be subject to contest with any new and successful party whose application has been filed in the interval.

DOOLITTLE, Acting Commissioner:

The following question of practice is submitted by an Examiner: A, B, C, and D filed applications for the same inventions, respectively, as follows: April 18, 1874, January 19, 1875, December 17, 1875, and December 20, 1875.

An interference was finally declared between these applicants March 13, 1876, and decided in favor of A, July 31, 1876. Accordingly a patent was allowed A; but failing to pay the final fee of $20 within six months after notice of allowance, his application became forfeited January 31, 1877, as provided by section 4885 R. S.

August 10, 1877, and September 1, 1877, E and F also filed applications for the same invention. Query: "What shall be done with the applications of E and F?”

The law requires that "whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent," he shall proceed to determine who is the prior inventor. The first thing to determine in the present case is, which are pending applications.

The application of A, to whom priority was awarded, cannot be considered as longer pending, in view of the language of sections 4885 and 4897 R. S. The former section provides that where the final fee is not paid within six months from the time at which the patent was passed and allowed, and notice thereof was sent to the applicant or his agent, the patent shall be withheld. Section 4897 authorizes in such cases the making of a second application "the same as in the case of an original application," by the same person, or his legal representatives, within two years after the allowance of the original application. Such second application is, to all intents and purposes, a new application, taking date from the date of its renewal, subject to a new examination as to form and merits, and also subject to inquiry as to the matter of abandonment, by public use, for more than two years prior to the date of its renewal, or as to other matters constituting an abandonment of the invention to the public.

A forfeited application stands on no better footing than an application abandoned under section 4894, by reason of non-prosecution of the same within two years after the last action thereon by the Office. It is dead, and cannot be used for purposes of reference, or as a basis for an interference, it no longer being a pending application.

It follows, then, that A's forfeited application must be left out of consideration in the determination of this question.

Although the previous judgment of priority against B, C, and D is good against them as to the subject-matter of the interference with A, yet their applications must be considered as pending for some purposes. It being within two years since the determination of that interference, the applications mentioned must be regarded as pending to allow any claim which can be based by the respective applicants on matters not

involved in said interference. Thus, being "pending" applications within the terms of the law, the respective dates of their filing must be regarded as making a prima facie case against the later applicants, E and F, and the latter parties must, at least, overcome this prima facie right, if they insist on the prosecution of their applications.

Although B, C, and D can in no event receive a patent for the inven tion for which another was declared to be the first and original inventor, they need not rest on the prima facie case, but, if they choose, may contest the claim to priority of E and F.

Should E or F succeed in establishing priority against B, C, and D, and at the same time fail to prove an earlier date of invention than A, nevertheless the successful party would be entitled to a patent as against A, as he was not a party to the former interference, and could not, therefore, be bound by the judgment therein. Should A, however, file a second application within the two years provided by law, he would be subject to an interference with this or any other new and successful party whose application may in the mean time have been filed.

A. D. ELBERS.

Interlocutory Appeal.

APPEAL FROM THE DECISION OF THE PRINCIPAL EXAMINER IN THE MATTER OF THE APPLICATION OF A. D. ELBERS FOR THE REISSUE OF LETTERS PATENT NO. 194,422, FILED SEPTEMBER 17, 1877, FOR "PROCESS OF TREATING MINERAL WOOL."-Decided November 24, 1877.

To size sheets of mineral wool after the wool fibers have been protectively coated according to the invention is not a distinct process in the sense of necessitating a division of the application.

The sizing is resorted to as a simple expedient to fit the wool for certain of its uses. There is no departure from the essential invention in suggesting it.

A description that sets forth the general theory of a process invention, but fails to disclose some one method of carrying it into effect, is insufficient. So, likewise, is a claim that is not tangible or well defined.

A. v. BRIESON, for applicant.

DOOLITTLE, Acting Commissioner:

The essential subject-matter of the invention, as set forth in the original patent, lies in the treatment of mineral wool with bituminous, resinous, or gumming substances, in such manner that the fibers of the wool will be coated with these substances, or with the carbonized residue derivable therefrom, which will render the wool water-proof, and prevent the decomposing and disintegrating action of atmospheric gases, particularly carbonic acid gas.

It is this idea of coating the fiber which runs through the whole specification, entirely irrespective of the fact as to whether the fiber is to be used in a loose or compact state, whether it is to be sized or remain unsized.

The Examiner objects to so much of the case as refers to the sizing of the sheets, holding it to be an entirely independent process. I cannot agree with him as to this view. The sizing of the fiber is simply resorted to for the purpose of adapting it to some of its uses in the arts, just as in another part applicant proposes to leave it loose and uncom pressed when it is to be used as a filtering medium.

Thus, if an inventor had devised a new process of paper-making, the Office would hardly require him to confine his specification to the method of making unsized paper, when it is apparent that for some purposes a sized paper would be desirable, and that it could be prepared without the slightest departure from the underlying principles of the invention, and by the ordinary exercise of the well-known principles of the art.

The sizing of the fiber in the present instance seems to stand on the same level with.the sizing of the paper in the example, and is liable to as little objection. So far, however, as the amended specification and the claim presented by applicant, the question of the Examiner is unhesitatingly affirmed.

The law requires that the specification shall be full, clear, and exact, and that the claim shall be specific and well defined. A specification abounding in generalitiès, with not a single hint as to the preferable way of carrying the invention into effect, but simply stating the purposes to be attained and the general manner of their accomplishment, will not suffice. The original specification is much clearer, and should be substantially adhered to. From the claim it is uncertain whether the mineral wool or the bituminous substances are to be "in a vaporized condition."

So far, too, as the act of "exposing mineral wool" is concerned, there seems to be little on which to base a claim. The novelty lies in the improved result accomplished arising from the particular manner of treatment, and the claim should be for the well-defined order of procedure, whereby this result is attained.

The Office and the public alike have a right to require a clear and specific summary of invention-a requirement which the present clause of claim utterly fails to meet. The applicant must furnish a description that will tell how the invention is practiced, as distinguished from its general theory, and must accompany it with a clear and tangible form of claim.

The position of the Examiner with regard to this matter is therefore sustained.

HORATIO N. COOK.
Appeal.

APPEAL FROM THE DECISION OF THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE APPLICATION OF HORATIO N. COOK FOR LETTERS PATENT FOR " IMPROVEMENT IN BELT-LACING."-Decided December 18, 1877.

It requires no invention to wind belt-lacing on a spool, in the manner and for the purpose common to threads, yarns, &c.

SPEAR, Commissioner:

It may be admitted that the reference is not especially pertinent to this case, since it does not show, either precisely or with any reasonable nearness, the alleged invention as specified in the claim. The claim is, "as an improved article of commerce, belt lacing A, wound upon spools S, substantially as above specified." The spool is an ordinary spool, and the belt-lacing has no novelty in itself. It is wound upon the spool in the ordinary manner of winding such an article, and, indeed, in the only manner in which it could conveniently be wound.

The Examiners-in-Chief, very properly disregarding the reference, took into consideration the well-known and admitted state of the art relating to the "spooling of all kinds of threads, yarns," &c. I agree with them that this is substantially the same thing, and although it does not appear that what may be called this particular kind of tape was ever before wound upon a spool, the manner of winding is the same, the spool is the same, aud, for aught that I can see, the effect is precisely the same. All the interior layers are protected, and no part is exposed to the air, excepting the exterior layer, which is equally true of a spool of cotton or silk.

I agree, therefore, with the Examiners-in-Chief, that there is no substantial novelty or invention in the case, aud accordingly affirm their decision.

DECISION OF THE HONORABLE SECRETARY OF THE INTERIOR.

O. G., vol. xii, p. 475.

IN THE MATTER OF THE APPLICATION OF JAMES SARGENT FOR A REVOCATION OF THE ORDER MADE BY THE COMMISSIONER OF PATENTS JULY 24, 1877-SUSPENDING THE ISSUE OF LETTERS PATENT-SUBJECT-MAITER, IMPROVEMENT IN TIME-LOCKS."

DEPARTMENT OF THE INTERIOR,

OFFICE OF THE SECRETARY,
Washington, September 13, 1877.

SIR: On the 3d ultimo James Sargent filed an application in this department asking for a revocation of the order made by you July 24, 1877, suspending the issue to him of letters patent for an "improvement in time-locks," to which he had been adjudged entitled by your Office.

The facts upon which this application was based are as follows:

On the 12th of February, 1874, Mr. Sargent filed in your Office an application for letters patent for said invention. This application proving defective, on the 12th of March, 1875, a new application was substituted therefor. Pending the consideration of this application, and before its allowance, two interfering applications were filed, viz, those of Emery Stockwell and John Burge, and interferences were declared.