applicant appealed therefrom June 1, 1869, to the Board of Examinersin-Chief.

August 27, 1869, the Examiners-in-Chief reversed the action of the Primary Examiner, holding substantially that under the law the fact of abandonment of an invention by public use, or otherwise, was a question of fact, and that, in view of the persistent efforts of Hull to obtain a patent from the time of the filing of his original application in 1856, and in the absence of any direct evidence of abandonment on his part, the fact was not proved.

The attention of the Commissioner having been called to the decision of the Examiners-in-Chief, he made the following reference to the chairman of the Board, September 4, 1869:

The opinion of the Board of Examiners-in-Chief is referred to S. H. Hodges, esq., for report as to whether the same is in conformity with the decision of the Commissioner in the case of John W. Cochran, ex parte, dated June 9, 1869.

Mr. Hodges, who had dissented from the opinion delivered by a majority of the board, reported that, with the exceptions of the length of time intervening between their respective applications, the number of patents that had been granted embodying Cochran's invention between his first and second application, and the fact that Cochran had taken no steps with his invention during the interval, while Hull had filed two other applications, the cases were closely parallel, and should have met with the same determination. Whereupon the Commissioner referred the case back to the Examiners-in-Chief for re-examination, "in the light of the decisions of the Commissioner in John W. Cochran, ex parte, and John W. Orr, ex parte." (See Commissioner's Decisions for June and July, 1869.)

The Board adhered to their former decision.

The application then went forward to issue, the title to letters patent were made out, giving the number of the patent, No. 94,826, containing the name of the grantee, the terms of the grant, the date of the same, (September 14, 1869,) and was signed by W. T. Otto, Acting Secretary of the Interior, and Samuel S. Fisher, Commissioner of Patents. All that remained to be done was to affix the seal of the Office thereto, annex the title to the specification and drawing, and formally deliver the same to the grantee.

In the mean time a motion had been made and argued before the Commissioner, to grant the patent on the first decision rendered by the Examiners-in-Chief. This was denied September 15, 1869, and the case suspended until the decision of the board, on their re-examination, should be rendered.

The decision of Commissioner Fisher denying the motion is contained in Commissioner's Decisions for 1869, p. 68. This motion was afterward renewed September 20, 1869. April 14, 1870, the Commissioner placed the following written order on file:

Further action in this case is suspended until the further order of the Commissioner.

The motion to issue was renewed September 2, 1870, December 14, 1870, and December 23, 1870. The prosecution of the application within the Office then ceased, until February 11, 1874, when a reconsideration of it by Commissioner Leggett was asked for. He declined for two reasons, as follows:

First, my predecessor had evidently deliberately decided that a patent could not be granted, and, under the practice in all the departments, which, if not statutory, has the force of law, I am not at liberty to review his decision; and, second, the delay of nearly four years between the last action of my predecessor and the filing of the present request for reconsideration works abandonment under existing statutes.

Upon an examination of the merits of the case, I am inclined to the belief that there are no equities in the case that should lead to any forced construction of the statute in favor of the applicant, for I believe the decision of the Examiner was correct, and that the Board ought to have decided differently.

April 2, 1874, applicant filed a petition for a writ of mandamus against the Commissioner, and an order was granted to show cause. The majority of the court held, upon the hearing, that a mandamus would not lie to compel the Commissioner of Patents, against his judgment, to issue a patent in' a case where the Board of Examiners-in-Chief had rendered a decision in favor of the applicant. It was also stated that the proper remedy was by a bill in equity, as provided by the statute. At the succeeding term the case was reheard, and the former decision was affirmed. These decisions are recorded in 7 OFFICIAL Gazette, 559, and 8 OFFICIAL GAZETTE, 46.

The present motion was filed October 29, 1875, and referred to the Examiners-in-Chief for a report of the facts and their opinion. They have submitted their report, which concludes by saying, “we know of no good reason or excuse for not delivering the patent." This completes the history of the case up to the present time.

Recognizing the force of the decision of the court, as above referred to, I am still of the opinion that it is only with great caution that the Commissioner should exercise the authority, which the court decided he possesses, of withholding a patent after a decision of the Board of Examiners-in-Chief in favor of the applicant.

The Board is a tribunal composed of persons appointed by the President and confirmed by the Senate, whom the law requires to be of competent legal knowledge and scientific ability, whose duties the law also prescribes, the nature of which are chiefly, if not entirely, judicial.

It is well known that the purpose of the creation of such a tribunal was to relieve the Commissioner from the determination of a vast number of questions, which, although vital to the rights of the parties, it was impossible, by reason of their multiplicity, and his other numerous duties, for him to consider. To facilitate this purpose, a course of appeals was provided for, from the Primary Examiner to the Board, and then from the Board to the Commissioner. This revisory power, on the part of the Commissioner, is limited to the adverse decisions of the other tribunals, except so far as it may be necessary to exercise it under

that section of the law prescribing that "the Commissioner of Patents, under the direction of the Secretary of the Interior, shall superintend or perform all duties respecting the granting and issuing of patents directed by law."

The act of 1861, in operation at the date of the order of suspension of this application, required "that the said Examiners-in-Chief shall be governed in their action by the rules to be prescribed by the Commissioner of Patents." This, and the further requirement that they should perform "such other duties as may be assigned them by the Commissioner," were construed by Commissioner Fisher as giving to the Commissioner full power of revision over all actions and decisions of the Board-favorable and unfavorable.

These particular provisions were omitted from the act of July, 1870, and the Revised Statutes, and it is quite clear to me, by such omission, that it was the intention of Congress that the general ministerial power of the Commissioner should no longer be used to arbitrarily control the judicial actions of the Examiners-in-Chief. Independent of the Commissioner in their office, and constituting a separate judicial tribunal created by law, they appear to me to be vested with the right of exercise of an independent judgment.

The law prescribes that their duty "shall be, on the written petition of the appellant, to revise and determine upon the validity of the adverse decisions of Examiners upon applications for patents, and for reissues of patents, and in interference cases."

In these matters they are not simply to "hear and report," as the law requires them to do upon claims for extensions, but the language used is such as is usually employed in speaking of a final adjudication ; and this view is strengthened by the fact that an express provision is made for an appeal from their adverse decisions to the Commissioner in person.

There may, at times, arise matters affecting the issue of a patent in a ministerial sense, such as a failure on the part of an applicant to perform some of the many prerequisites to the grant of a patent, which the law prescribes, or some act of fraud on the part of the applicant, or some official within the Office, which may come to the knowledge of the Commissioner, even after a favorable decision of the Board, or at any other time before delivery of the same to the grantee; or facts may arise essential to the validity of a patent that were not before the Board at the time of their consideration of the case, or which they inad vertently overlooked. In all such cases, it is clearly the duty of the Commissioner to withhold the patent altogether, or until the matter is satisfactorily determined.

But as to matters of fact constituting the subject of appeal to them, of which they have full knowledge, and concerning which there is no question as to their jurisdiction, it must be, as already intimated, a very grave mistake, in fact or law, that will justify the Commissioner in interposing his executive authority to impugn their action.

The relation which the Board bears to the Commissioner, and the extent of their duty in consideration of that relation, are well stated in the following paragraphs, in their review of the matter upon the reference of Commissioner Fisher:

The Board fully recognize, as they ever designed to do, that the decision of the Commissioner, on all points properly and legitimately before him, are controlling and binding in the individual cases wherein they are made, and are to be treated as deservedly high authority in all other cases where the facts are so nearly analogous as to make such decisions applicable and pertinent.

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But the law also contemplates that each member of the Board shall exercise private judgment within the scope of the jurisdiction conferred, not only in the light of the decisions of the Commissioner, but in the enjoyment of whatever other light they may be able to obtain from other sources, including the laws of the land and the decisions of the courts. Nevertheless, should the Board make any mistake of fact or law, which should lead to an erroneous decision, in a case not cognizable by the Commissioner on appeal, it should be their grateful duty to correct the same at any time before it has gone beyond their control, no matter from what source the suggestion of error may come.

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My predecessor, Commissioner Leggett, declined to review the action. of Commissioner Fisher in this matter, for the reason, first, that it was opposed to the established practice of all the departments for a succeeding officer to review the decisions of his predecessor. I acknowledge the force of the rule in those cases where a final adjudication upon all the facts has been had. An order, however, suspending the case until further orders, is not a final adjudication, but is directly the reverse, and necessarily implies that further action is to be had. This is the condi tion of this application. Nothing has been done by the Office since the order of suspension of April 14, 1870, but a refusal to disturb it.

The second reason assigned for refusal to take up the matter was, that nearly four years had passed from the date of the order of suspension until the request for reconsideration was filed.

This objection, no doubt, was based upon section 32 of the act of 1870, which requires that all applications shall be prosecuted within two years after the last action thereon of which the applicant has been notified, or be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.

Now, it has been shown, in this case, that applicant, from April to December, 1870, made repeated attempts to have his application again taken up by the Office, and that, failing therein, he immediately sought the aid of Congress and prosecuted the matter there, with partial suc cess, for two succeeding sessions, before returning to the Office. This, in my opinion, amounted to a prosecution of the application within the two years prescribed by law; but, if not so, was satisfactory proof of non-abandonment of his application.

After the action of Commissioner Leggett, in the early part of 1874, applicant sought the aid of the courts, and, by his pertinacity, succeeded in obtaining two hearings, at successive terms, upon his suit. What

erer, then, may have been the delay prior to 1870, I think no lack of diligence can be imputed to him since that date.

In view of all the circumstances of the case, then, I feel myself at liberty to inquire into the justness of the order of April 14, 1870, by bich this matter remains suspended.

Prior to the act of 1870, there was no law requiring that an application should be prosecuted within a certain time after an action thereon by the Office, or else be regarded as abandoned. The act of 1861 re. quired that an application should be completed and prepared for examination within two years after the filing of the petition, &c.; but there was nothing to prevent the renewing of an old application, no matter how many years it had been filed, if, in the mean time, patents had not been granted for the same invention, or it had not been abandoned to the public by the inventor.

As has already been stated, the application of Hull, now under consideration, filed in March, 1869, was rejected by the Primary Examiner on the ground that the patents granted to Hull himself, December 2, 1862, and August 4, 1863, exhibiting some of the features now claimed," and the patent of L. G. Kniffen, of April, 1864, were, in themselves, evidence that the invention had been in public use for more than two years prior to the filing of his present application, with his knowledge and consent.

Hall had been compelled to cancel and erase from his applications of 1862 and 1863 the precise subject matter of his application of 1856 and of the present one, and Kniffen had been put in interference with Hull on other matter than this particular device; but so far as that matter was concerned, and so far as it related to the device in question, priority was declared for Hull. The matter of these references then, in. stead of showing abandonment on the part of Hull of his invention to the public, was the very best eridence of his intention to protect him. self in bis rights. His application of 1869 was, at least, the fifth time he bad come to the Office within thirteen years, and the time covered by the various actions of the Office upon each of those efforts to sue out bis patent, the rejections, the renewals, the appeals, the withdrawals, and their continuous repetition left but comparatively short intervals of rest. Finally, the Office, by ceasing to urge the objection of want of novelty, tacitly acknowledged that all these delays had been its fault and not the fault of the applicant. To say that the applicant should have carried the matter to the courts does not excuse the fault of the Office; nor was it at that time any omission of a prescribed duty on the part of the applicant, as it has already been shown that no time in which to prosecute an application bad been required by law.

This was the state of facts found by the Board in their first decision. In addition thereto they had the sworn statement of Hull setting forth his intention not to abandon bis invention to the public, his struggles to obtain a patent against the obstacles of poverty, and the greater ones thrown in his path by the Office.