When Jurisdiction Ends.

The notice of allowance is the precise act which ends the jurisdiction of the examiner. Until notice that a patent has been passed and allowed has been sent to the applicant or his agent, it is not officially passed or allowed in the sense of the law or the rules. Starr, 15 O. G. 1053.

A mental determination of an examiner, whether communicated to an applicant or not, can not preclude a reconsideration and contrary decision unless his determination takes the official form prescribed by the law or rules. Starr, 15 O. G. 1053.

A reconsideration of the merits by an examiner on his own motion is permissible in all cases until the official notice of allowance is given. Starr, 15 0. G. 1053.

SEC. 4886. Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceedings had, obtain a patent therefor.

Statute Revised-July 8, 1870, ch. 230, § 24, 16 Stat. 201.

Prior Statutes-Feb. 21, 1793, ch. 11, § 1, 1 Stat. 318.-April 17, 1800, ch. 25, § 1, 2 Stat. 37.-July 4, 1836, ch. 357, § 6, 7, 5 Stat. 119.

Invention.

Discovery is synonymous with invention. A discovery which merely consists in bringing to light that which existed before, but was not known, is not the subject of a patent. No discovery will entitle the discoverer to a patent which does not in effect amount to the contrivance or production of something which did not exist before. Ex parte John F. Kemper, Cranch Pat. Dec. 89.

Invention in the sense of the patent law is the finding out, contriving, devising, or creating something new and useful, which did not exist before, by an operation of the intellect. New York v. Ransom, 1 Fish. 252; s. c. 23 How. 487; Conover v. Roach, 4 Fish. 12; Potter v. Whitney, 3 Fish. 77; s. c. 1 Lowell 87.

A subject-matter to be patentable must require invention, but is not necessarily the result of long and painful study, or embodied alone in complex mechanism. A single flash of thought may reveal to the mind of the inventor the new idea, and a frail and simple contrivance may

embody it. Some inventions are the result of long and weary years of study and labor pursued in the face of abortive experiments and baffled attempts, and finally reached after the severest struggles, while others are the fruit of a single happy thought. Magic Ruffle Co. v. Douglass, 2 Fish. 330; Matthews v. Skates, 1 Fish. 602; Many v. Sizer, 1 Fish. 17; Furbush v. Cook, 2 Fish. 668; Carstaedt v. U. S. Corset Co., 13 Blatch. 371; s. c. 10 O. G. 3; s. c. 2 Ban & Ard. 331; Earle v. Sawyer, 4 Mason 1; s. c. 1 Robb 491; Blake v. Stafford, 3 Fish. 294; s. c. 6 Blatch. 195; Carr v. Rice, 1 Fish. 198; Middletown Co. v. Judd, 3 Fish. 141.

If with the knowledge that the public had at the time of the alleged discovery, it required no invention, but simply the ordinary skill and ingenuity of a mechanic to produce the invention-in other words, if the inventive faculty was not at work at all, and was not needed to produce the alleged invention, then the patent would be void because there would be no invention to be secured to the patentee. Carter v. Messinger, 11 Blatch. 34; New York v. Ransom, 1 Fish. 252; s. c. 23 How. 487; Kirby v. Beardsley, 3 Fish. 265; s. c. 5 Blatch. 438; Stimpson v. Woodman, 3 Fish. 98; s. c. 10 Wall. 117; Tucker v. Spaulding, 1 Deady 649; s. c. 13 Wall. 453; s. c. 1 O. G. 142; s. c. 5 Fish. 297; Larrabee v. Cortlan, 3 Fish. 5; s. c. Taney, 180; Knox v. Murtha, 5 Fish. 174; s. c. 9 Blatch. 205; Haselden v. Ogden, 3 Fish. 378; Day v. Telegraph Co., 5 Fish. 268; s. c. 9 Blatch. 345; 10 O. G. 551; Wood Paper Co. v Heft, 3 Fish. 316; s. c. 8 Wall. 333; Dane v. Chicago Manuf. Co., 3 Biss. 380; 2 O. G. 677; 7 O. G. 924; Dunbar v. Myers, 94 U. S., 187; s. c. 11 O. G. 35; Needham v. Washburn, 7 O. G. 648; s. c. 1 Ban & Ard. 537; Gardner v. Herz, 12 Fed. Rep. 491; s. c. 22 O. G. 683; Perry v. Co-operative Foundry Co., 12 Fed. Rep. 149; Wilson Packing Co. v. Chicago P. & P. Co., 21 O. G. 411; s. c. 9 Fed. Rep. 547; Ingersoll v. Turner. 12 O. G. 189; s. c. 2 Ban & Ard. 89; s. c. 7 Fed. Rep. 859; Gould v. Ballard, 13 O. G. 1081 ; s. c. 3 Ban & Ard. 324; Wilson Packing Co. v. Clapp, 8 Biss. 545; s. c. 4 Ban & Ard. 355; Couse v. Johnson, 16 O. G. 719; s. c. 4 Ban & Ard. 501; Root v. Welsh Manuf. Co., 17 O. G. 849; Tifft v. Sharp, 17 O. G. 1284; s. c. 18 Blatch. 138; s. c. 5 Ban & Ard. 416; s. c. 10 Fed. Rep. 673; Belt v. Crittenden, 2 Fed. Rep. 82; 1 McCrary 208; s. c. 18 O. G. 191; s. c. 5 Ban & Ard. 131; Perfection W. C. Co. v. Bosley, 2 Fed. Rep. 574; s. c. 9 Biss. 385; s. c. 5 Ban & Ard. 449; McMurray v. Miller, 16 Fed. Rep. 471; Pearce v. Mulford, 102 U. S. 112; s. c. 18 O. G. 1223; Slawson v. Railroad Co., 17 Blatch. 512; s. c. 24 O. G. 99; s. c. 5 Ban & Ard. 210; s. c. 4 Fed. Rep. 531; Atlantic Works v. Brady, 23 O. G. 1330; s. c. 10 O. G. 702; s. c. 4 Cliff. 408; s. c. 2 Ban & Ard. 436; Stephenson v. Brooklyn C. T. R. R. Co., 19 Blatch. 473; s. c. 14 Fed. Rep. 457; Ingersoll v. Turner, 12 O. G. 189; s. c. 2 Ban & Ard. 89; s. c. 7 Fed. Rep. 859; Griffiths v. Holmes, 20 O. G. 449; s. c. 8 Fed. Rep. 154; Boykin v. Baker, 4 Hughes 282; s. c. 9 Fed. Rep. 699; Guidet v. Brooklyn, 105 U. S. 550; s. c. 21 O. G. 1692; s. c. 13 0. G. 773; s. c. 3 Ban & Ard. 291; Searls v. Merriam, 22 O. G. 1040; Backus W. M. Co. v. Guirk, 17 Fed. Rep. 350.

It is exceedingly difficult to draw a line between what may be regarded by the eye as a small improvement or invention and one of magnitude. Oftentimes improvements and discoveries the most important in their consequences and in their beneficial effects on the business interests of the community are among the simplest ideas of the mind. On the other hand, improvements of less magnitude in their consequences and beneficial effects indicate a most laborious and complex action of the mind of the inventor. Seymour v. McCormick, 19 How. 96; s. c. 3 Blatch. 209. The difficulty is in drawing the line between invention and mere construction. There are some things that everybody knows. The common uses of common materials are supposed to be known. If a man merely makes a machine out of iron that has been made out of wood, that is no invention, because everybody knows that a constructor can make a machine of iron instead of wood. There may even be a discovery which is not an invention, as, for instance, the application of a machine to a new use. The man who made the first invention made it for all the uses to which it is applicable. Stimpson v. Woodman, 3 Fish. 98; s. c. 10 Wall. 117; Kirby v. Beardsley, 3 Fish. 265; s. c. 5 Blatch. 438.

The difficulty of drawing the line of distinction between invention and mere obvious manual changes following the beaten track of mechanical experience, has inclined courts to give a liberal construction to the law so as to protect every contrivance that can be called new, which proves at all useful. Care has been taken to give the benefit of doubt as to originality or creative thought to the inventor, so as to nourish inventive enterprise by lending encouragement to every degree of merit. Kirby v. Beardsley, 3 Fish. 265; s. c. 5 Blatch. 438; Tuck v. Bramhill, 3 Fish. 400; s. c. 6 Blatch. 95; Whipple v. Middlesex Co., 4 Fish. 41; McMillin v. Barclay, 5 Fish. 189; s. c. 4 Brews. 275; Stanley Works v. Sargent, 4 Fish. 443; s. c. 8 Blatch. 344; Penn Salt. Co. v. Thomas, 5 Fish. 148; s. c. 8 Phila. 144; Woodman M. Co. v. Guild, 4 Cliff. 185; Stewart v. Mahoney, 4 Ban & Ard. 84; s. c. 5 Fed. Rep. 302; Mallory Manuf. Co. v. Marks, 20 O. G. 1521; s. c. 11 Fed. Rep. 887.

With regard to the degree of mental labor and inventive skill required in the work of invention, the law has no nice or rigid standard. There must be some inventive skill exercised, but the degree of that skill is not material. It not unfrequently happens in the progress of the mechanic arts that the time arrives when the whole atmosphere of inventive thought is quickened with the life of an approaching discovery; that many lines of investigation and experiment converging for a long time toward the point, almost but not quite reach it, when at last some mind by a happy thought supplies some new element or instrument, or mode of organization, and instantly gives birth to the organized idea. Clark Patent Co. v. Copeland, 2 Fish. 221.

The simplicity of an invention, so far from being an objection to it, may constitute its great excellence and value. Indeed, to produce a great result by very simple means before unknown or unthought of, is not unfrequently the peculiar characteristic of the very highest class of minds.

Ryan v. Goodwin, 3 Sum. 514; s. c. 1 Robb 725; In re Pennock, 1 McArthur 531; s. c. 5 O. G. 668; Lorillard Co. v. McDowell, 11 O. G. 640; s. c. 2 Ban & Ard. 531; Brainard v. Palsifer, 7 Fed. Rep. 349.

Almost all inventions that become the subject of patents are the embodiment and adaptation of appliances that are old, and if the article so produced is new and useful it is patentable, although an old article could have been easily altered or adapted so as to form the new one. Crandal v. Walters, 21 O. G. 945; s. c. 9 Fed. Rep. 659.

If a novel and useful result has been obtained, neither the simplicity of the structure, nor the greater or less amount of invention or intellect employed as an element, is of importance in determining the validity of the patent. The distinction is that where there is a mere application of an old thing to a new use it is not patentable, but where there is exhibited an inventive faculty in the process it is. Teese v. Phelps, 1 McAl. 48;

Barnes v. Straus, 5 Fish. 531; s. c. 9 Blatch. 553; 2 O. G. 62.

Unless more skill and ingenuity are required in the discovery than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor. Hotchkiss v. Greenwood, 11 How. 248; s. c. 4 McLean 456; s. c. 2 Robb 730; Teese v. Phelps, 1 McAl. 48; Fisher v. Craig, 3 Saw. 69; s. c. 1 Ban & Ard. 365; Treadwell v. Parrott, 3 Fish. 124; s. c. 5 Blatch. 369; Reed v. Reed, 12 Blatch. 366; s. c. 8 O. G. 193; s. c. 1 Ban & Ard. 575.

If an article is new and useful, the fact that no mechanic ever made it is a sufficient answer to the suggestion that it did not require invention. Dederick v. Cassell, 20 O. G. 1233; s. c. 9 Fed. Rep. 306.

The fact that previous experimenters wanted to obtain the result and failed tends to show that the inventor was not merely contending with mechanical difficulties, but that he had a problem which required the skill of the inventor to solve. Terry Clock Co. v. New Haven Clock Co., 17 O. G. 909; s. c. 2 Ban & Ard. 332.

The accidental making of an article, without any knowledge on the part of the producer of how to accomplish it, with utter inability on his part to produce another like it, is not an invention. A single fortuitous success is not invention within the protection of the patent law. Pelton v. Waters, 21 I. R. R. 125; s. c. 7 O. G. 425; s. c. 1 Ban & Ard. 599; Monce v. Adams, 12 Blatch. 1; s. c. 7 O. G. 177; s. c. 1 Ban & Ard. 126. The degree of labor and thought may be sometimes evidence upon the question of invention. Many v. Sizer, 1 Fish. 17.

The validity of a patent does not depend on an opinion formed after the event, respecting the ease or difficulty of attaining it. Furbush v. Cook, 2 Fish. 668; Colgate v. West. Union Tel. Co., 14 O. G. 943; s. c. 15 Blatch. 365; s. c. 4 Ban & Ard. 37.

An invention in mechanics consists not in the discovery of new principles, but in new combinations of old principles. Tyler v. Devel, 1 A. L. J. 248; Stainthorp v. Elkinton, 1 Fish. 475.

When the patent is granted it becomes, to a certain extent, a contract upon the part of the Government, with the party named in the patent, that it will through its courts and in the ordinary course of the administration of justice, protect him in the exercise of the exclusive privilege which his patent gives to him. There would be no justice in granting to a party an exclusive privilege to use what he did not invent, because he would pay no consideration for the grant if he did not by his invention add to the stock of useful knowledge which may be applied for the benefit of the citizen. New York v. Ransom, 1 Fish. 252; s. c. 23 How. 487. A patentable invention is a mental result. Everything within the domain of the conception belongs to him who conceived it. Smith v. Nichols, 6 Fish. 61; s. c. 21 Wall. 112; 1 Holmes 172; 2 O. G. 649.

A mere carrying forward, or new or more extended application of the original thought, a change only in degree, doing substantially the same thing in the same way, by substantially the same means, with better results, is not such an invention as will sustain a patent. Smith v. Nichols, 6 Fish. 61; s. c. 21 Wall. 112; 1 Holmes 172; 2 O. G. 649; Sawyer v. Miller, 12 Fed. Rep. 725; Theberath v. Rubber & C. H. T. Co., 23 O. G. 1121; s. c. 15 Fed. Rep. 246.

If a new idea is engrafted upon an old invention, and is distinct from the conception that preceded it, it is patentable. Heald v. Rice, 104 U. S. 737; s. c. 21 O. G. 1443.

The questions of invention, novelty or prior use are all questions of official judgment, and are all settled by the judgment of the commissioner. His judgment goes to the same extent on each question. He determines and decides for the purpose of issuing or refusing a patent. When the patent is sought to be enforced, the questions, and each of them, are open to judicial examination. Reckendorfer v. Faber, 92 U. S. 347; s. c. 12 Blatch. 68; 5 O. G. 697; 10 O. G. 71; s. c. 1 Ban & Ard. 229; Grant v. Raymond, 6 Pet. 218; s. c. 1 Robb 604.

Result as Evidence of Invention.

The result which has been produced may be considered in connection with the change, because the result, if greatly more beneficial than it was with the old contrivance, reflects back and tends to characterize in some degree the importance of the change. Hall v. Wiles, 2 Blatch. 194; Locomotive Truck Co. v. R. R. Co., 6 O. G. 927; s. c. 1 Ban & Ard. 470 ; Stimpson v. Woodman, 3 Fish. 98; s. c. 10 Wall. 117.

The superiority of an invention in utility and effect over what preceded it is proof tending to establish the fact of novelty. Birdsell v. McDonald, 6 O. G. 682; s. c. 1 Ban & Ard. 165; Stillwell & Bierce Manuf. Co. v. Cincinnati Gas Co., 7 O. G. 829; s. c. 1 Ban & Ard. 610; Washburn & M. Manuf. Co. v. Haish, 19 O. G. 173; s. c. 4 Fed. Rep. 900; Dunbar v. Albert Field T. Co., 4 Ban & Ard. 518; s. c. 4 Fed. Rep. 543; Shannon v. Stationery Co., 9 Fed. Rep. 205; s. c. 14 C. L. N. 57; Shedd v. Washburn, 9 Fed. Rep. 904; Stockton v. Maddock, 10 Fed. Rep. 132; Miller v. Pickering, 14 Fed. Rep. 540; s. c. 40 Leg. Int. 182.