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If the doctrine of the United States Supreme Court in the cases of Agawam Co. vs. Jordan (7 Wall., 583) and Seymour vs. Osborne (11 Wall., 516) should be applied strictly to the facts in this case, then Gross did not make this invention uutil 1875, for it is there beld as a settled rule of law, that he is the real inventor and entitled to the patent who first brings the machine to perfection and makes it capable of useful operation, although others may have previously bad the idea and made some experiment toward putting it in practice. Except in the single fact of the later conception of this invention by Sargent, the latter was first to reduce the invention to practice in a working form, and first to apply for a patent, while Gross was not reasonably diligent in any of these matters.

The decision of the Examiners-in-Chief is affirmed.

C. W. SIEMENS.

Interlocutory Appeal ; Reissue.

0. G., vol. xi, p. 1107.

APPEAL FROM THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF C. WILLIAM SIEMENS PILED DECEMBER 5, 1876, FOR REISSUE OF LETTERS PATENT NO. 89,441, GRANTED APRIL 27, 1869, FOR IMPROVEMENTS IN METALLURGICAL PROCESSES AND FURNACES."- Decided March 17, 1877.

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An inventor will not be permitted to claim in a reissue application matter for which

his original patent has expired by limitation from the date of a foreign patent

granted to him. Section 16 of the act of 1861 does not repeal section 6 of the act of 1839, but so modifies

it as to extend the life of a patent granted thereunder to seventeen instead of four

teen years.

A joint patent having been granted in England: Held, that the oath of single inventorship accompanying an application was sufficient to warrant the issue of a sole patent, in view of the different qualifications in that country and this with relation to joint patents. C. S. WHITMAN for applicant. SPEAR, Commissioner :

Two of applicant's claims, the third and sixth, have been rejected upon English patents, numbered respectively 167 of 1861 and 1320 of 1857, granted, the former to applicant and Frederick Siemens, and the latter to applicant alone.

It is not my purpose, upon an appeal of this kind, to discuss the pertinency of these references, but merely to consider the question which is presented as one of practice as to whether a patentee can be permitted to claim, in an application for reissue, matter shown in a prior foreign patent, wbich has since expired.

In construing the patent under consideration reference must be had to the laws in force at the time of its issue, which, as respects the grant, are the acts of 1836, 1839, and 1861. Under the act of 1839, which was

amendatory of the act of 1836, patents were limited to fourteen years from the date or publication of foreign patents previously obtained (O'Reilly vs. Morse, 15 How., 62 ); and section 16 of the act of 1861, which provided " that all patents hereafter granted shall remain in force for the term of seventeen years from the date of issue,” has been held not to repeal, but to so modify section 6 of the act of 1839 as to extend the term to seventeen instead of fourteen years, so that since the passage of said act, and previous to the act of 1870, patents granted in this country for inventions previously patented abroad are to be limited in duration to seventeen years from the date or publication of such foreign patents. (Weston vs. White, 90. G., 1196.)

It would appear, therefore, that in so far as the patent of 1857 is concerned, the matter there described has become public property, the protection given Siemeus by his patent having ceased, and his patent therefore expired.

Applicant thus asks the Office to reissue to him that which he has clearly no right to claim. It is neither the policy nor design of the law that this Office should give color to an invalid claim by granting a patent purporting to secure to the patentee a right which it is powerless to confer. Lex nil frustra facit is a maxim that is opposed to such an interpretation of the law.

Whenever it clearly appears, therefore, either upon the examination of a reissue or an original application, that the subject matter claimed could not be protected in the courts, the patent should be refused. No distinction should be made in such cases between reissue and original applications, and I do not apprehend that, in a case like the present, the Office is precluded from considering matters that may have arisen since the original grant which affect the patentee's title to the protection of the law.

It is distinctly provided in section 4916 R. S. that "upon the filing of a reissue application the specification and claim in every such case shall be subject to revision and restriction in the same manner as original applications are,” thus giving the Commissioner ample authority for applying the same tests as to patentability as he would if the application were for the first time presented.

The interests of the public are to be looked to as well in the graut of reissues as iu original applications, and it is the duty of the Office to prevent, as far as it is within its power, the issuing of invalid patents, which could be made instruments of oppression, " by furnishing means to impose upon the public by false pretenses, and with threats of expensive and ruinous litigation." (Burr vs. Duryee, 1 Wall., 531.)

The object of the reissue section was to provide a means for correcting invalid patents, not for granting them, and if the period for which the grant was originally made has expired, the right to claim the inven. tion in a reissue does not exist; nor could the terms of the law be complied with, for as regards this invention there is no "unexpired part of the term of the original patent" for which a reissue could be granted.

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An attempt bas been made to show that the decision in the case of Weston vs. White is unsound, and not in accordance with a proper construction of the statute there under consideration. I have considered the arguments presented by counsel, but fail to comprehend wherein the judge in that case has made such a palpable mistake in matter of law as to warrant this Office in disregarding the opinion there rendered ; on the contrary, I am disposed to consider his interpretation of the statute both just and reasonable, fully in accord with the intention of the law-makers, and as based upon sound principles of construction.

In view of the fact that the same rules as to joint invention do not prevail in England as are administered in this country, parties being permitted to take out patents jointly who would not be regarded as joint inventors under our laws, I am of the opinion that the present applicant's

I oath accompanying his application, to the effect that he is the first and original inventor of the matters therein claimed, must be regarded as sufficient to avoid the objection that the English patent of 1861 was taken out jointly by him and Frederick Siemens.

With reference to that portion of the invention which was patented in England in 1861, it is obvious that the applicant's patent therefor bas not expired by the limitatiou of seventeen years from the date of said patent. He may consequently retain in this application claims thereto, but should be required to state in his application the fact that such matters have been patented in England, giving the date and the number of the patent. This is in accordance with the requirements of Rule 91, which applies as well to reissue as to original applications, and, also, when only a portion of the invention claimed is included in such foreign patent. This is necessary in order that the public may know the limits of the monopoly granted.

The decision of the Examiner, in refusing to admit claims for inventions shown in foreign patents, and for which the original patent has expired, is affirmed; and the requirement that the dates of other foreign patents obtained by applicant, and operating to limit the term of the patent, should be stated, is approved; but the decision of the Examiner rejecting the third claim is reversed.

RICHARD PINTSCH.

Division of application.

0. G., vol. xi, p. 597. APPEAL FROM THE DECISION OF THE PRIMARY EXAMINER IN THE MATTER OF THE APPLICATION OF RICHARD

PINTSCH FOR "IMPROVEMENTS IN FLOATING LIGHTS," FILED JANUARY 23, 1877.-Decided March 23, 1877. The requirement of a division of an application presupposes the existence of matters

which might become the subjects of separate patents. The rejection of an application on the ground that there is no legitimate combination

between the devices representéd, or that they are deficient in novelty or invention,

is appealable to the Board of Examiners-in-Chief. BAKEWELL & KERR for applicant.

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DOOLITTLE, Assistant Commissioner :

Applicant claims a buoy to serve as a recipient for compressed illuminating gas to supply burners in combination with a lamp carried thereby. The Examiner requires the application to be divided ; at the saine time there is no claim made for the buoy, per se. The requirement of a divis. ion of an application presupposes that matter exists which might con. stitute the subjects of two or more patents.

The only ralid objection, then, that can be urged against such a case as this, wherein it is alleged that if there is anything novel, it consists in the construction of a lantern to be attached to the buoy and not in the buoy itself, is that there is no new combination, and not that there are separate or independent inventions.

The Examiner, in one of his letters of rejection, states that signallights having heretofore been attached to buoys, "there appears to be no novelty in attaching the particular mechanism described to the buoy, any more than attaching it to any other detached or portable receiver.”' " Whatever novelty, therefore," he adds, "the device contains, would seem to lie in the construction of the reflector and the lamp, and not in the application of the device to the buoy."

It will thus be seen that the Examiner attacks the legitimacy of the combination, regarding it, it would appear, in the light of a mere aggre. gation. This, then, is an objection to the merits of the case, and is proper matter for appeal to the Board of Examiners-in-Chief. (F. L. Ellis, 9 OFFICIAL GAZETTE, 1110, and J. H. Keith, Ib., 744.)

If the appeal is taken the Examiner should not only urge his objec. tions to the validity of the combination, but also cite all references he may have affecting the questions of novelty, whether relating to the alleged combination or to other matters claimed in the application.

The appeal is dismissed.

G. A. GRAY.

Caveat.

0. G., vol. xii., p. 396.

IN THE MATTER OF THE PETITION OF GEORGE A. GRAY, JR., ACCOMPANYING HIS CAVEAT.-Decided March

26, 1877.

It is sufficient if a caveat is signed by only one of two or more joint inventors. As

the only object in filing a caveat is to obtain notice of interferiag applications, the right of one joint inventor to this notice should not be subject to the control of his

co-inventors. JAMES W. SEE for applicant.

SPEAR, Commissioner:

The petitioner sends to the Office a drawing and specification relating to an invention, and requests that they may be filed in the secret archives as a caveat. He represents himself to be, not the sole, but a joint, inventor with another party of the invention represented in the papers.

The question is raised by the officer receiving these applications as to the propriety of putting on the record a caveat relating to a joint invention without the signature and oath of both inventors.

Caveat papers are simply preliminary papers filed in the Office for the purpose of securing notice in case of interfering applications while the caveator is experimenting or maturing his invention. This caveat can. not be merged into a patent, and is no foundation in itself for any such issue. Its simple object is, as before remarked, that the caveator may obtain notice. To this end it is only necessary to know what the invention is, and who is the proper party to potify.

The law does not even require an oath of invention. I see no reason why one of the parties to a joint inventiou should not file a caveat and be entitled to notice, whether others desire such notice or not. One of the parties inight be an alien who had not made oath of his intention to become a citizen and did not desire to. In such case a citizen would be deprived of his legal right by a refusal to receive the caveat without the signatures of both.

The officer having charge of these papers will receive this caveat and place it upon record, and be guided by this decision in like cases.

JOHN D. PARK.

Label.

0. G., vol. xii, p. 2.

APPEAL FROM THE EXAMINER OF TRADE-MARKS IN THE MATTER OF THE APPLICATION OF JOHN D. PARK

FOR THE REGISTRATION OF LABELS," FILED DECEMBER 28, 1876.-Decided March 26, 1877.

Arbitrary matter properly constituting a trade-mark must be registered as such before

it can be included in a label. His legal right to use it as a trade-mark must be first established by the applicant be

fore it can be registered in a label. ALEXANDER & Mason for applicant. SPEAR, Commissioner :

In this case applicant sought to register as a trade mark the picture of a “swan” in connection with the name of the firm applied to gin. Two references were cited-one consisting of a figure of a swan, with some other arbitrary matter, and the other of the word “swan," both applied to this article. Applicant now files three applications for regis. tration of labels, each embracing this trade-mark.

It was held in the case of W. Simpson & Son (10 OFFICIAL GAZETTE, 333) that, if applicant wished to include in his label arbitrary and fanciful words and figures constituting a proper trade-mark in addition

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