The conduct of a person when intent is to be ascertained, both before and after the act which is to be accomplished by it, may be gone into to determine what was his intent at the time of the act. Nichols v. Newell, 1 Fish. 647.

A man is to be held to intend that which is the necessary consequence of his acts, or what he infers will be the consequence of his acts. Nichols v. Newell, 1 Fish. 647.

The burden of proof is upon the plaintiff to establish beyond a reasonable doubt such facts as are necessary to constitute the offense. Nichols v. Newell, 1 Fish. 647.

The question of fraud or deceit, as a matter of fact presented in a case, involves an inquiry of much latitude and scope on the trial, and must generally be directed by the good sense of the judge in respect to the bearing of the facts and circumstances relied on, and concerning which it is oftentimes difficult to apply any fixed rules. Very considerable indulgence is therefore allowed by the appellate court in revising these questions. The error must not only be striking, but must necessarily have been calculated to mislead the minds of the jury, before the verdict will be interfered with. Walker v. Hawxhurst, 5 Blatch. 494.

If the word "patent" is put on in any way, it answers the description. Nicholls v. Newell, 1 Fish. 647.

The marks are just as much upon the article when put upon one part of it as upon another. Nicholls v. Newell, 1 Fish. 647.

The action can not be prosecuted in the name of the United States alone. It should be prosecuted by an informer; or if the name of the United States can be properly used, it must be in connection with a person to be named as informer, who shall be responsible, in case the action is not sustained, for costs or other consequences resulting from its failure. U. S. v. Morris, 3 Fish. 72; s. c. 2 Bond 23.

The section authorizes the infliction of a penalty of just one hundred dollars, and such penalty may be recovered in an action of debt. Stimpson v. Pond, 2 Curt. 502.

The action may be brought at any time within five years after the commission of the offence. Stimpson v. Pond, 2 Curt. 502.

SEC. 4902. Any citizen of the United States who makes any new invention or discovery, and desires further time to mature the same, may, on payment of the fees required by law, file in the patent office a caveat setting forth the design thereof, and of its distinguishing characteristics, and praying protection of his right until he shall have matured his invention. Such caveat shall be filed in the confidential archives of the office and preserved in secrecy, and shall be operative for the term of one year from the

filing thereof; and if application is made within the year by any other person for a patent with which such caveat would in any manner interfere, the commissioner shall deposit the description, specifications, drawings, and model of such application in like manner in the confidential archives of the office, and give notice thereof, by mail, to the person by whom the caveat was filed. If such person desires to avail himself of his caveat, he shall file his description, specifications, drawings, and model within three months from the time of placing the notice in the post office in Washington, with the usual time required for transmitting it to the caveator added thereto; which time shall be indorsed on the notice. An alien shall have the privilege herein granted, if he has resided in the United States one year next preceding the filing of his caveat, and has made oath of his intention to become a citizen.

Statute Revised-July 8, 1870, ch. 230, § 40, 16 Stat. 203.

Prior Statutes-July 4, 1836, ch. 357, § 12, 5 Stat. 121.-March 2, 1861, ch. 88, § 9, 12 Stat. 247.

A caveat is intended to answer a double purpose; 1st, to give notice of the caveator's claim as inventor; 2d, to prevent a patent issuing to another for the same thing. Allen v. Hunter, 6 McLean 303; American Pavement Co. v. Elizabeth, 6 Fish. 424; s. c. 3 O. G. 522.

This section was introduced for the benefit of the inventor, but is not necessary to the preservation of his right. It only enables him to have notice of any interfering application. Heath v. Hildreth, Cranch Pat. Dec. 96.

The effect of the caveat is to protect the claim of an inventor from all interfering applications made within one year after its filing, by requiring the office to notify him of such application, that he may resist the interference, if he chooses. Bell v. Daniels, 1 Fish. 372; s. c. 1 Bond 212.

If, during the time which elapses between the filing of his caveat and his application, the inventor allows his invention to go into public use, his caveat will not protect him. Bell v. Daniels, 1 Fish. 372; s. c. 1 Bond 212.

The purpose of the caveat is to save the discoverer from the effect of the rule of law which gives to the inventor that first adapts his invention to practical use the right to the grant of the patent. Phelps v. Brown, 1 Fish. 479; s. c. 4 Blatch. 362.

If the inventor has not perfected his invention, and does not use due diligence to carry it into effect, and, in the meantime, before he gets his patent, somebody else invents and uses the invention, and incorporates it into a practical, useful machine, then he can not, by a subsequent patent, appropriate to himself what has thus been embraced in a machine between his caveat and the obtaining of his patent. Johnson v. Root, 1 Fish. 351.

In considering the question of reasonable diligence, it is not sufficient to answer that the patentee used diligence in relation to some other invention or machine. The question is, Did he use diligence in perfecting the invention mentioned in the caveat? Johnson v. Root, 1 Fish. 351.

The question of diligence is not an absolute but relative one, and must be considered in reference to the subject-matter of the experiments. American Pavement Co. v. Elizabeth, 6 Fish. 424; s. c. 3 O. G. 522.

The granting of a patent while a caveat is pending and in force does not render the patent void. Cochrane v. Waterman, Cranch Pat. Dec. 121.

If the commissioner accidentally overlooks a caveat filed before the application by another party, he may issue a patent to the caveator even after the granting of a patent to such other party, in order to give him an opportunity to correct the error. He should not be prejudiced by the accidental omission to give him notice. Phelps v. Brown, 1 Fish. 479; s. c. 4 Blatch. 362.

A caveat is not conclusive evidence that the invention was not perfected, for it may happen that a person may choose to file a caveat while he is going on and making improvements upon an invention which he has already completed, so as to be of practical utility. Johnson v. Root, 1 Fish. 351.

If an applicant on the rejection of his application, files an amendment limiting or restricting the claim, he is bound by this restriction. New York B. & P. Co. v. Sibley, 23 O. G. 1444; s. c. 15 Fed. Rep. 386.

Although an inventor takes out a caveat in his own name alone, yet if the invention is in fact joint, it may be carried back to the filing of the caveat. Hoe v. Kahler, 12 Fed. Rep. 111.

A caveat may be received and filed on the oath and signature of one only of joint inventors. G. A. Gray, 12 O. G. 396.

The granting of a patent being a public act, the caveator is bound to take notice of it, and to file his application within a reasonable time thereafter. Lewis Hillebrand, 2 Dec. Com. 145.

No inference can be drawn from a caveat as to the date of an invention, unless the caveat describes it. Wheeler v. Peters, 2 Dec. Com. 141.

If a caveat and an application for a patent are filed upon the same day, and for the same invention, it will be presumed they were filed simultaneously, and the caveator will be notified. J. Essex, 9 O. G. 497.

If a conflicting caveat is in force when an application is filed, though the application is rejected, and the rejection is not set aside until after the caveat has expired, yet the caveator is then entitled to be notified. J. Kenny, Sr., 1 Dec. Com. 97.

A caveator who has been notified of an application claiming the same invention, is entitled to no special indulgence on that account, if he neglects to apply for a patent for ten months after one has issued to the other party. Wheeler v. Rank 2 Dec. Com. 119.

SEC. 4903. Whenever, on examination, any claim for a patent is rejected, the commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the commissioner shall order a re-examination of the case. Statute Revised-July 8, 1870, ch. 230, § 41, 16 Stat. 204. Prior Statute-July 4, 1836, ch. 357, § 7, 5 Stat. 119.

The specification is always open to amendment of its description and claims, and to the addition of new matters of description and new claims, where the drawings and model exhibit the matters involved in the amendments and additions, and this privilege continues until the matter of the application is finally disposed of by the granting of a patent or otherwise. Singer v. Braunsdorf, 7 Blatch. 521.

The right to change the specification exists, and may be exercised independently of the suggestions of the commissioner at any time before the commissioner has given his formal judgment upon the application. Godfrey v. Eames, 1 Wall. 317.

If an application is pending for a patent for several improvements, a new application may be made for a patent for one of them, for it simplifies the application and disembarrasses it from its connection with other improvements claimed. Suffolk Co. v. Hayden, 4 Fish. 86; s. c. 3 Wall. 315.

If an amended application embodies any material addition to or variance from the original, anything new that was not comprised in that, such addition or variation can not be sustained on the original application. Railroad Co. v. Sayles, 97 U. S. 554; s. c. 15 O. G. 243; s. c. 3 Biss. 52; S. c. 4 Fish. 584.

Practice.

An examiner should not reject an application without expressing an opinion. Coleman, 18 O. G. 1051.

If an examiner rejects a claim for want of novelty, he should give specific references. Hill, 16 O. G. 765; Fairbanks & Robinson, 3 O. G. 65; Albert D. Davis, 6 O. G. 297.

If the examiner objects to a claim as indefinite, he must point out or indicate in what respects it is indefinite. Templeton, 17 O. G. 910.

Upon a decision and notice that all formal objections have been removed, followed by a consideration of the case upon its merits, neither the same formal objections nor any other ought to be insisted on by the examiner without the authority of the commissioner. Starr, 15 O. G. 1053.

If an application is rejected on an unexpired patent, it is not sufficient for the applicant to make oath that he made the invention before the filing of the patented application, but the affidavit must set forth the facts that show a prior invention. Gasser, 17 O. G. 507.

After a first rejection the applicant may insist upon his claim as presented. If the examiner reaffirms his former decision, without supporting it with fresh references, the rejection is final, and there is no remedy but appeal. But if the examiner gives new references, the applicant has a right to reply to them, or to amend his specifications. Alice Appleton, 1 Dec. Com. 8.

The rejection of an application having been affirmed upon a former occasion in consequence of misapprehending the construction of the machine under consideration, the case was reconsidered upon the error being corrected. Powers & Stevens, 1 Dec. Com. 81.

The notice should state the defects in the application distinctly and definitely. A mere reference to pencil marks on the specifications is not sufficient. Wilkins, 24 O. G. 1271.

If an inventor files an application as a substitute for one previously appealed to the examiners in chief, and by them rejected, the primary examiner should examine it on its merits, and not reject it merely because he deems it identical with the one rejected by the examiners in chief. W. H. Le Van, 1 O. G. 226.

If an application is rejected on a reference to prior publications, an affidavit of a prior discovery must state the facts. Saunders, 23 O. G. 1224 ; Graydon, 25 O. G. 192.

Amendment.

An applicant may be allowed to amend his application so as to introduce new matter, if he makes oath that it was a part of his original invention. McDougall, 21 O. G. 1783.

If the application admitted of illustration by drawings, it can not be amended by the introduction of new matter, unless the applicant makes oath that it was a part of his original invention. Snyder, 22 O. G. 1975; Jesse H. Temple, 12 O. G. 795; Coleman, 18 O. G. 1051; Lamb, 16 O. G. 405; Huck, 16 O. G. 1052; Wm. C. Dodge, 3 O. G. 179.

When the invention does not admit of illustration by a drawing, the claim may be amended upon proof that the amendment was a part of the original invention. Shalters, 15 O. G. 970.

A party who desires to amend his application should state the reason why he desires to amend. Winchester, 17 O. G. 453.

It is only those changes that affect the substance or materiality of an invention that are objectionable as new matter. William B. Carlock, 80. G. 191.

In amending original applications it will not be considered as the introduction of new matter, if the subject is embraced either in the model, drawing or specification. J. F. W. Dorman, 9 O. G. 1061.

After an application has been filed it can not be amended by inserting the description of a modification of the combination claimed which is not shown in the original model or drawings. L. J. Knowles, 2 Dec. Com. 161.