DECISIONS

OF THE

COMMISSIONER OF PATENTS

FOR

THE YEAR 1877.

TIEMAN, SIMPSON, AND COLLINS.

Design.

O. G., vol. xi, p. 1.

APPEAL FROM THE DECISION OF THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF JOHN W. TIEMAN, WILLIAM SIMPSON, AND JOHN COLLINS, FOR A DESIGN PATENT FOR "ORNAMENTING HARDWARE."-Decided November 24, 1876.

A separate oath is required when a new application is filed as a division of an original application made and sworn to by joint inventors.

While in an application by a sole inventor the oath referring to separate and distinct inventions there included may suffice to cover a division consisting of the part eliminated from the original, it is not so with joint applicants, whose oath goes to the invention considered as a whole and not to separate parts.

DOOLITTLE, Assistant Commissioner:

This application, as originally filed, contained two claims, which the Examiner asserted embraced two distinct inventions or separate designs, and he therefore suggested that applicants "make one claim broad and generic to include both forms, and then claim one species definitely." The applicants concluded to divide their case and make the subjects of two patents what they had formerly included in one application. Accordingly, they amended their first application, striking out a portion of the subject matter thereof, and filed a new application therefor. This second application was not sworn to, although the other formalities attendant on an original application were observed. So far the second application has not been allowed to go forward for examination, on the ground that the additional oath should be furnished. This action is based upon the doctrine laid down in the decision of the Commissioner in the case of Heginbotham (S OFFICIAL GAZETTE, 237). There the subject was a division in the case of a reissue applied for. It was held that there was no substantial difference between reissue applications in which a division was called for and that of original applications, and that, in both cases, each division constituting a separate and distinct

invention, being the subject of a separate and distinct patent, should possess all the characteristics of an independent application in matters of form as well as in matters of substance. Especially was it held to be vital in cases where the original patent was for a combination of elements and the division made the separate features the subject of separate applications, for an inventor might properly take oath that he was the inventor of the combination when he could not make oath to the invention of any of the features of the combination regarded separately. Admitting, as counsel contends in this case, that the sole purpose of the oath required is to satisfy the Commissioner that the applicant was the first inventor in such a case as we have mentioned, the original oath to the combination would not be satisfactory evidence as to the invention by the applicants of the separate features of that combination.

Now, in this case, three inventors join in an application for a patent for a design, which, in their petition, they represent as "our design," "our invention," and make their claims and their arguments in support of the idea that the invention is substantially a unit.

In view of the proposition that the oath is required by law to satisfy the Commissioner that the applicant is the first inventor, the oath of joint applicants to an invention, regarded as an entirety, does not satisfy my mind as to the originality, by the joint inventors, of the sepa rate portions of that invention. In short, the presumption is entirely the other way. Joint invention rarely consists in the joint conception of each particular device, but of the combination of devices separately conceived by the individual inventors.

The oath of the joint inventors in this case goes to the invention considered as a whole.

If this were a case wherein a single inventor had embraced two separate and distinct inventions, admitted on all hands to be entirely independent, in one application, and had then, when required, simply incorporated into a new application the description of one of those inventions, after eliminating the same from his first application, and having made no additional description or subtraction, it might, perhaps, be proper to consider the second application without requiring an additional oath. But here the question is not yet settled whether the origi nal application filed by these joint inventors included more than one invention. In fact, it is contended by counsel that the view of the Examiner on this subject is erroneous; and it is, in my opinion, certainly inconsistent with the original intention of the parties, as expressed in their petition, their specification, and their oath. This, however, is a matter that can be determined by an interlocutory appeal from the action of the Examiner.

As the case now stands, the joint oath made to the entire invention cannot be regarded as satisfactory when applied to but part of that invention.

HENRY GROSS.

Motion for Rehearing.

O. G., vol. xi, p. 739.

"

IN THE MATTER OF THE APPLICATION OF HENRY GROSS, FILED AUGUST 9, 1873, FOR IMPROVEMENT IN PERMUTATION-LOCKS."-Decided December 18, 1876.

An improvement of an existing device rendering its parts more adjustable in a manner well known, and by the exercise of mechanical skill and judgment alone, is not patentable.

The change of location of an element in a combination, where that change produces in substance no new combination nor a new operation, is not patentable.

W. C. DODGE & SON, for applicant.

DOOLITTLE, Assistant Commissioner:

This application was rejected by the Examiners-in-Chief and the Commissioner in 1874. A reconsideration of the case has recently been requested and the request granted by the Commissioner.

The claim made by applicant is as follows:

In combination with the notched disk or tumbler K, the yoke A, having the fly B attached thereto, and the pin E arranged to project through holes in the disk K, and serve the twofold purposes of a transfer aud of changing the combination, as set forth.

This claim was regarded by the Office as being substantially answered by the patent of W. B. Dodd, No. 46,858, of March 14, 1865, that of MacNeale, of July 5, 1874, and that of L. Yale, of September 15, 1868. The Board of Examiners-in-Chief in their decision state the case clearly, as follows:

It is admitted on the part of applicant that a yoke adjustably attached to the main part of the tumbler with the connecting-pins projecting through the tumbler, and arranged to strike the adjacent tumbler, is shown in the patent of Dodd. It is also clear that the fly adapted to serve exactly the same office as that contemplated by applicant, and in all essential respects the same in construction, is shown in the patent of MacNeale and in that of Yale. The two forms of adjustable tumblers being thus shown to be old, the position of the Examiner is that applicant has done no more than transfer the fly from one old form of tumbler to another without new result.

The sole advantages, so far as I can ascertain, claimed by applicant over the devices of Yale and MacNeale, are thus stated by his attorney:

In both Yale's and MacNeale's the fly is mounted on a hub surrounding the center of the tumbler and the bearing surface is so large and the friction so great that quite frequently the fly does not move separately at all; but instead, when struck by the pin of the adjoining tumbler the fly and tumbler are both moved together, thus destroying or preventing entirely the effect which the fly is designed to accomplish.

On the contrary, applicant's fly, being made light and small, and being pivoted on a small pin near the extremity of the yoke away out near the edge of the disk, cannot possibly act in this manner. The slightest touch of the pin of the adjoining tumbler moves the fly its full distance before the disk is stirred at all. Here, then, is an important difference in results-due entirely to the difference in construction and arrangements of parts.

It will be seen by these remarks that a combination new in principle does not constitute the distinction between the cases, but that applicant has simply rendered a device more adjustable; has, in short, improved its operations by the exercise of mechanical skill and judgment.

The change of location of an element in a combination, where that change in location produces in substance a new combination and a new operation, is patentable; but here the combination is not changed, but the operation of the mechanism is simply perfected. (Gallahue et al. vs. Butterfield, 6 Fish., 203.)

Admitting this to be such a combination as comes within the definition laid down in the case of Birdsell vs. McDonald et al., 6 OFFICIAL GAZETTE, 683, on which applicant relies, still the doctrine there inculcated relating to the colorable changes made by the defendant as against the patentee is applicable here. The court held:

Any change merely colorable, involving no new idea, requiring not invention, but only mechanical skill, to make it, a change which retains the idea of the patentee and the substance of his invention, notwithstanding the different drapery in which that substance is clothed, cannot avail to protect a party charged with infringement.

In view of the thorough manner in which this case was discussed by the Board of Appeals and the Commissioner, I deem it unnecessary to say anything more at this time.

The former action of the Office in rejecting this claim is, therefore, affirmed.

ANSON vs. WOODBURY.

Interlocutory Appeal.

O. G., vol. xi, p. 243.

APPEAL FROM THE DECISION OF THE EXAMINER OF INTERFERENCES IN THE MATTER OF THE INTERFERENCE BETWEEN THE APPLICATION OF ALFRED ANSON, FILED SEPTEMBER 13, 1876, AND THE PATENT OF JOSEPH P. WOODBURY, DATED APRIL 29, 1873, FOR "IMPROVEMENT IN PLANING-MACHINES."-Decided December 23, 1876.

In an interference all questions affecting the patentability of the subject-matter, the propriety of the interference, and the form of the declaration must be disposed of before the expiration of the time for filing preliminary statements, and all such matters are within the jurisdiction of the Primary Examiner. Failure to make objections before the expiration of the time for filing preliminary statements will be considered as a waiver thereof and consent to the interference. During an interference the Primary Examiner may request its suspension for the purpose of considering new references.

The Examiner of Interferences may, in his decision upon the merits, notice any matters affecting the patentability of the subject in dispute, and the Primary Examiner is authorized to consider the same after the interference has been finally disposed of. It being intimated at the hearing of the motion that there were other patents showing the subject-matter at issue, the case was suspended and returned to the Primary Examiner for report upon that point.

NEWTON CRAWFORD, attorney for Anson.
SAMUEL A. DUNCAN, attorney for Woodbury.

DUELL, Commissioner:

This is an appeal from the decision of the Examiner of Interferences denying a motion made on the part of Woodbury to dissolve the interference on the ground that the matter involved has been in public use for more than two years prior to the filing of Anson's application.

The Examiner denies jurisdiction of the motion, and refuses to consider the affidavits filed in support thereof.

The second clause of Rule 59 provides that

After the declaration of the interference proper it will not be determined without judgment of priority founded upon the testimony or the written concession of one of the parties.

The rule further provides that matters arising during the interference proceeding which may affect the patentability of the invention may be noticed in the decision of the question of priority, and authorizes the Primary Examiner to consider the same. The jurisdiction of the Examiner of Interferences over the matter of patentability is thus limited to the making of a report in his decision on the merits. The parties are not, however, left without an opportunity to contest the propriety of the proceeding, and the first clause of Rule 59 provides for the determination of questions affecting the patentability of the subject-matter, the propriety of the interference, and the form of the declaration. It is made a condition, however, that these objections be made before the time for filing the preliminary statement has expired, and they are to be considered by the Primary Examiner, from whose decision, except where the subject-matter is decided not to be patentable, an appeal may be taken to the Commissioner in person.

If the parties fail to make objections during this time they must be considered as having waived them and as consenting to the interference. Diligence and care are therefore required at this stage of the proceeding to see that it is proper, in order that expense and fruitless litigation may be avoided.

The rule does not, however, preclude the determination of the interference after it is once declared, if the Examiner is convinced that the subject-matter is not patentable, and requests a suspension of the interference for the consideration of new references.

The motion made before the Examiner was not, therefore, such as he could, under the rule, take cognizance of. It should have been made before the filing of the preliminary statements and have been addressed to the Primary Examiner. The decision of the Examiner is therefore sustained.

At the hearing of this appeal it was intimated that there were other patents besides Woodbury's containing the feature in dispute. If such is the case they should be included, and the interference is hereby sus pended and the case returned to the Primary Examiner to investigate and report as to this fact.