Lapas attēli
PDF
ePub

In accordance with the above definition the Office rules in force at the time of the passage of said act held that a case was pending only until the decision of an appeal after a second rejection thereon, or until after the party bad withdrawn the case from tbe further consideration of the Office. (See Office Rules 45 and 123, of the August edition of 1869.)

It is well settled that, in the absence of any provision of law to the contrary, the Office Rules of Practice have the authority of law in all matters arising at the time in which they were in force.

The same proviso of section 35 also requires that, upon the hearing of such renewed applications, abandonment should be considered as a question of fact. The mischief which the requirements of that section were designed to remedy was quite apparent. Applications, after lying in the Office for years, were dug up and renewed, to greatly embarrass patentees and manufacturers who had reduced the invention to success. ful operation, and also to cover up other analogous inventions which had been freely used by the public years after the slothful applicant had ceased to prosecute his claims in the Office.

In regard to this mass of rejected applications which could be revived after the lapse of any number of years, an eminent judge of the supreme court of this District remarked, before the passage of the above act, that

[ocr errors]

Many, perhaps most, of this multitude of rejected cases, although falling short of invention, embody suggestions which, under the unscrupulous and ingenious manipulation of professional inventors, would reissue into patents to the utter confusion of existing rights. Abandonment, in fact, should be an estoppel at law, especially against exhuming this potter's field of the Patent Office. (Gates et al. vs. Benson, C. D., 1870, p. 76.)

In the recent case of the United States Rifle and Cartridge Company t al. vs. The Whitney Arms Company (11 OFFICIAL GAZETTE, p. 373), the same section of the law was construed by Judge Shipman as follows:

The thirty-fifth section of this act provided that when an application for a patent has been rejected or withdrawn prior to the passage of this act, the applicant shall have six months from the date of such passage to renew this application or to file a new one, and if he omit to do either, his application shall be held to have been abandoned. Upon the hearing of such renewed applications abandonment shall be considered as a question of fact. Prior to the passage of this act the practice of the Patent Office in regard to the granting of renewed applications for patents after the lapse of years from the date of their previous rejection or withdrawal was not uniform. It had been held that the withdrawal of an application and the neglect to prosecute it within a reasonable time was an abandonment of the invention. The contrary had been held both by the Patent Office and the courts. Inventors whose applications had been rejected were desirous of renowing them, and it was proper both that some limitation should be placed upon the time within which the new applications should be made, and that some stable principle should be adopted in regard to the question of abandonment. The section provided that this question should be regarded as a matter of fact, that lapse of time should not of itself be conclusive evidence of abandonment, but that the decision of such cases should depend upon peculiar circumstances as a question of fact and not of law.

In the case of A. Mills (7 OFFICIAL GAZETTE, 961), the Commissioner held that not only was an application abandoned which was not renewed within the six months prescribed by the section under consideration, but that by the terms of the section an applicant was barred from prosecuting a new application for the same invention at any time thereafter, the statute having fixed a limitation upon such right.

In the case of George Crompton (9 OFFICIAL GAZETTE, p. 5), the effect of that section was held to be, however, not to bar the applicant from filing a second application after the time mentioned, but only to sever all connection between the original and new application, so that the original application could not be relied upon to sustain the patent in the event of two years' public use. It was also held that the original application was dead absolutely.

In view of the law and practice thus established this application of Mygatt must be regarded as having been abandoned by virtue of section 35 of the act of 1870, and cannot now be revived.

So far as section 4894 Revised Statutes (section 32 of the act of 1870) is concerned, a new principle was there adopted ,applicable to cases pending at the time of the passage of the act of 1870, or filed thereafter, which required applicants, in order to avoid abandonment of their applications, to prosecute the same within two years after any action therein, or else show to the satisfaction of the Commissioner that such delay had been unavoidable.

Of course, baving found that the application in question was not pending at the time of the passage of the act of 1870, the provisions of the latter-mentioned section are not pertinent thereto. (W. H. Golding, 8 OFFICIAL GAZETTE, 141.)

It appears, too, that on June 26, 1876, applicant filed a new application for this same invention. The latter one, which is now pending, can alone be considered.

The motion is depied.

SARGENT vs. BURGE.

Interference.

0. G., vol. xi, p. 1055.

APPEAL FROM THE BOARD OF EXAMINERS-IN-CHIEF IN THE MATTER OF THE INTERFERENCE BETWEEN THE

PATENT AND THE REISSUE APPLICATION OF JAMES SARGENT AND THE ORIGINAL AND REISSUE APPLICATIONS OF JOHN BURGE FOR “IMPROVEMENT IN TIME-LOCKS."-Decided May 27, 1877.

The faultinoss of claims which, for the purpose of securing an interference with an

adverse party, enumerate important elements of a combination only in the most gen

eral language, commented upon and deemed a sufficient warrant to dismiss an appeal. The mere fact that devices cited as references have little commercial value is of no sig

nificance in determining their pertinency. An applicant as against an interfering patentee must show that his invention was com

plete, not simply for experimental but for successful practical use, prior to the invention of his adversary.

Such successful use involves not only the successful mechanical operation of the inven

tion in the single instance, or in a number of instances, but its actual utility in

every other respect. Where devices in interference differ from each other in important particulars of con

struction, the successful use of one cannot be inferred from that of the other, which

is established. An applicant whose machine was tested experimentally only, then laid aside and not

revived until after the successful introduction of that of his contestant, is concluded

as to its lack of perfection and reduction to a useful practicable form. In order to defeat a patent, a prior machine must have some commercial value, be

worth manufacturing for public sale, and worth buying for practical use. A machine which is abandoned by its inventor, tested only experimentally by his

assignee, and declined by the public, is conclusively of no value.
JAMES L. NORRIS and J. J. COOMBS for Sargent.
MARCUS S. HOPKINS and E. L. STANTON for Burge.
SPEAR, Commissioner :

The interference is between the letters patent of Sargent, No. 165,370, granted July 3, 1875, and his application for reissue of letters patent No. 165,878, granted July 20, 1875, on the one hand, and on the other two applications of Burge, one an original application, filed the 21st day of August, 1876, and the other an application for a reissue of letters patent No. 166,155, granted August 3, 1875.

The Board of Examiners-in-Chief, in their decision in this matter, called my attention, under Rule 59, to the claims in the reissue application of the Burge patent, which was put in the interference, and expressed their opinion to the effect that the subject matter included in those claims was not sustained by the patent of Burge. Counsel for Sargent also raise an objection against the claims in interference in the original application of Barge (the 4th and 5th), on the ground, as they allege, that these claims do not embrace a practically operative combi. nation. I have, therefore, to consider, before proceeding to the discus. sion of the testimony, as bearing more particularly upon the issue and relating to the question of priority of the invention stated in the issue, the preliminary question whether the claims set up by Burge could properly be allowed him in these applications.

The problem which the inventor had to solve in constructing what may be called a time-lock—that is to say, a lock incapable of unlocking from the outside, and only self-unlocking from within-was first to provide some means for obstructing the bolt or bolts to prevent retraction, and to provide also means for removing such obstruction after a lapse of time measured by the internal clock-work; but this was not the solu. tion of the problem, for it was necessary to set the clock-mechanism for a given hour, and to arrange the obstruction for the bolt or bolts, under the conditions named above, with the door open. But the bolt-work being thrown forward and obstructed, the door could not be closed. It was necessary, therefore, in the second place, to provide some other expedient by which the clock-mechanism, together with the mechanism for obstructing the bolt-work, could be set for operation while the bolt

[ocr errors]

work was thrown back; so that, after the door was closed, the bolt. work could be thrown forward to lock the door and be blocked by the dogging mechanism automatically, not to be released except through the operation of the clock-mechanism after the determined lapse of time. It is clear, therefore, that simply a clock-mechanism, and what has been called the dogging.mechanism, by which the bolt-work is held in the locked position, do not constitute an operative combination. This has been recognized by the parties to this interference and by inventors long before them, and these parties, as well as the prior inventors, have, in their various forms of time-locks, shown both elements, namely, the self-locking and the time-unlocking mechanisins; but the distinctions have not always been kept in view in making the claims.

The validity of the objection would be manifest if an applicant should have come to the Office omitting from his invention, as well as from his claim, the provision for automatic locking, so that the time-lock shown by him could not be set for use. But although the mechanism is, in all these cases, provided for successful operation in this respect, it is not the less necessary to keep iu view the distinction, for the reason that the mechanisms are so widely different that, while it is possible to predicate claims on one lock in respect to the automatic unlocking which should cover all the mechanisms, it might not be possible to make such a broad claim as would include all the mechanisms necessary to the successful operation of the lock.

These criticisms refer iu part to the first, second, and third claims in the original application of Burge, but I do not discuss them inore particularly here since they are not in interference, and the consideration of them would be an ex parte matter. The fourth and fifth claims, however, are in the interference, and are as follows:

4. In a time-lock, the combination by means of suitable connecting mechanism, substantially as set forth, of the notched curvilinear revolving bolt isolated from the timemechanism, and stationary except during the brief intervals when locking or unlocking is being effected, the connecting-link for controlling the saine, and the timo-mechanism for determining the time when said bolt shall be turned on its pivot to unlook.

5. In a time-lock for application on a safe or vault door, the combination by means of suitable connecting devices of the time-mechanism, and a notched curvilinear bolt or dog, isolated, substantially as described, from the time-mechanism, and stationary except during the brief intervals when either locking or unlocking is being effected, and adapted to be turned on its pivot for unlocking at a time determined by the timemechanism.

In relation to these claims it may be said, first, that the combinations claimed are manifestly inoperative. Putting only the elements named in the claims into a time-lock, the apparatus could be set only with the door open, and after it was set the door could not be closed. Further than this, in the fourth claim the statement is incorrect. The connecting-liuk is there represented as controlling the revolving-bolt, whereas in the lock itself and in the specification it plainly appears that the revolving-bolt is controlled in every part of its movement by independent

a

clock-mechanism, and the connecting.link is simply a part of means of communication between the springs of the clock-mechanism and the revolving bolt.

In the fifth claim all this important matter of moving the revolving. bolt consisting of the same elaborate independent clock-mechanism, and which, as we shall see when considering in this connection the state of the art, constitutes the most essential part of Burge's improvement in

, this application, is covered under the phrase "by means of suitable connecting devices," so that the main elements of the combination are made to appear to be the time-mechanism, and the notched curvilinear bolt” isolated from the time.mechanism. This phraseology makes the claim more plainly applicable to Sargent's invention than to that of Burge.

What are called suitable connecting devices are, in fact, not connect. ing devices, but operating devices. The time-lock on which these claims are based acts directly upon a secondary clock-mechanism, and this secondary clock-nechanism acts upon the rotating-dog. The secondary clock-mechanism must be wound up and set in proper position in order properly to operate the circular-dog. When thus wound up and set ready for operation, it is held by the primary clock-mechanism through suitable connection, and, at the appointed moment, the primary clockmechanism releases the secondary, which immediately operates the dog to unlock the door. Now, in the patent of Sargent there is no such intermediate clock-mechanism, and if a claim cannot be based on this lock of Burge that will cover the Sargent lock without the oinission of an element so vital as this, then the two inventions are generically distinct, and alike only in result, and, if patentable at all, are patentable separately and independently of each otber.

The case of Gill vs. Wells, 22 Wall., p. 1, cited by counsel for Sargent, is exactly in point here.

I am aware that it may be said, I think it was urged at the hearingthat the lock shown in the original application of Burge may be used in connection with the tongue-piece shown by Sargent, which tongue-piece is so connected to the bolt-work that the bolt-work may slip back on the tongue piece in order to close the door, and that, if used in this connection, that part of its mechanism which provides for the first movement of the revolving bolt, namely, that which is to dog the bolt.work, may be dispensed with. This may be true, and yet it appears to me not just, even if we leave out of consideration the state of the art, to allow Burge to make such claims upon this lock as necessarily require a part of Sargent's invention, and require also a reorganization of his own. For it would not be necessary simply to leave out some part of this mechan. ism called the secondary clock-work which operates the revolving-bolt, but to reorganize it.

I dismiss these claims for the present, but shall have occasion to refer to them hereafter in considering the state of the art in connection with the claims in the reissue application of Burge.

« iepriekšējāTurpināt »