DAMAGES AND PROFITS-Continued. testimony would result in mere estimates. The court will itself determine the profits. *Id. DEATH OF APPLICANT FOR PATENT. 1. DECEASED INVENTOR-STANDING OF APPLICATION—ABANDONMENT-The fact that an inventor is dead and that his executor has not asserted his rights does not deprive an application of standing before the Office. It cannot be considered abandoned until the expiration of the time allowed by law for amendments. Decker v. Loosley, 106. 2. SAME-INTERference-HeiRS-The Office, when it has reason to believe that an inventor is dead, should endeavor to ascertain the identity of his heirs before the declaration of an interference, and should send the interference notices to such heirs if no formal or authentic notice of the death of the inventor has been given. Id. DECREE. See Appeal to the Circuit Court of Appeals, 1, 2, 3, 5, 6, 8. EQUITY-BILI. CHARGING FRAUD-DECREE ON OTHER GROUNDS-A court of equity will not grant a decree on another ground where the bill charges actual fraud as the ground for relief and the fraud is not proven. (62 Fed. Rep., 584, reversed.) *Dashiell v. Grosvenor et al., 176. DEDICATION TO THE PUBLIC. See Trade-Marks, 8, 9, 10. DEFENSE. See Licenses, 2; Priority of Invention; Suits for Infringement, 3. DELAY IN FILING APPLICATION. See Interference, 31, 32, 33. DELAY IN PATENT OFFICE. See Subsequent Patents, 3. DELAY IN PROSECUTING SUITS FOR INFRINGEMENT. See Suits for Infringe ment, 2, 3, 5. DELAY IN TAKING APPEAL. See Appeal to the Circuit Court of Appeals, 8; Appeal to the Court of Appeals of the District of Columbia, 1, 2, 3, 4, 5. DEMURRER. See Designs, 8; Particular Patents, 26, 51; Validity of Patents. 1. INVALIDITY OF PATENT-Where a bill is demurred to on the ground that letters patent are void for want of patentable novelty, Held that while it is competent to raise the question of non-patentability by demurrer, yet a case should not be disposed of upon such a demurrer unless the invalidity of the patent be plain and the common knowledge relied upon to defeat it be of matters of which the court may properly take judicial notice. *Caldwell & Co. v. Powell, 382. 2. SUSTAINED-Lack of Patentable NovelTY-Demurrer was sustained where it appears from an inspection of the patent in suit and by the exercise of common knowledge that the device patented is destitute of patentable novelty. Chesterman v. Lindell Railway Company, 473. 3. Demurrer for Want of InVENTION-The cause should be considered upon the merits on demurrer to the bill whenever it appears upon the face of the patent that it lacks invention. (Risdon Iron and Locomotive Works v. Medart, C. D., 1895, 330; 71 O. G., 751; 15 Sup. Ct., 745; 158 U. S., 63, followed.) * Strom Manufacturing Company v. Weir Frog Company, 618. 4. EFFECT UPON BILL-The effect of a demurrer is to admit the truth of the charges in the bill when the latter are well pleaded. *Caldwell et al. v. Powell, 625. DESCRIPTION. See Construction of Claims, 2; Construction of Specifications and Patents, 20, 23, 26; Particular Patents, 2. DESIGNS. See Construction of Specifications and Patents, 10; Construction of Statutes; Particular Patents, 53, 85, 86, 89. 1. IDENTITY-Where two designs are in their prominent features identical and their sole difference lies in the fact that the protuberance of one has a small DESIGNS-Continued. nut on the end and the other has none, the difference is not of such material character as to afford ground for the grant of a design patent. * Welker v. Weller et al., 307. 2. SHADES OF COLOR ON OLD FORM OF FLAG-Originality was not displayed, invention was not exercised, and novelty was not introduced by placing different shades of color in divided stripes upon an old form of flag. *Caldwell & Co. v. Powell, 382. 3. MECHANICAL Patent no Bar-Since the subject-matter of an application for a design patent and of a mechanical patent is different, since the matter claimed in the design application could not have been claimed in the other, and since the grant of the design patent cannot extend the term of the other, Held that the mechanical patent is no bar to the grant of a design patent upon the same article. Ex parte Lunken, 22. 4. MEANING OF "USEFUL"-The word "useful" in the statute relating to designs has reference to mechanical rather than purely esthetic features in designs relating to machinery. The excellence of such a design depends upon its nice adaptation. The word "useful" may be applied to the shape or configuration of a patentable form with a signification much wider than "not harmful." Id. 5. VARIATIONS—An applicant may describe and claim variations in his patentable form within such limits as are consistent with unity of design and to the extent claimed. Id. 6. MECHANICAL TERMS-The use of mechanical terms in setting forth the relation of the parts of a design and their uses is not objectionable. Id. 7. INTERFERENCE-OIL-CAN-IDENTITY-The design of Fig. 2 differs from the design of Fig. 3 as clearly as either differs from the design of Fig. 1. Priority is according awarded to Lines. Cushman v. Lines, 62. 8. COLLEGE-BADGE-PATENTABILITY—A design for a college badge, consisting of a pin having the shape of a guidon flag, upon which the letters "U. P." are placed, is not so absolutely void of invention upon its face as to justify the court in sustaining a demurrer upon that ground. Caldwell et al. v. Powell, 625. DILIGENCE. See Bill of Review; Interference, 4, 5, 6, 7, 8, 10, 17, 18, 31, 32, 33. NO GENERAL RULE-ADVERSE CONDITIONS-There is no general rule of what constitutes due diligence. It is reasonable diligence, and that is to be determined by all the facts in the case. An inaction of eighteen months, in the absence of controlling adverse conditions, is not reasonable diligence in the case of an invention which required but one month for actual development. Croskey v. Atterbury, 437. DISCLAIMERS. See Construction of Rules; Particular Patents, 88. DISSENTING OPINION. DISSENTING OPINION-Mr. Justice Harlan did not concur in the disposition which was made of the case. * Belknap et al. v. Schild, 210. DIVISION OF APPLICATION. See Interference, 37. 1. CANCELLATION OF CLAIMS-SECOND APPLICATION-ABANDONMENT-When, upon a requirement of division, claims for a process were canceled and an application was limited to the claims for an article and a second application for the process was filed while the first application was pending, but not within two years from the cancellation of the process claims from the first application, Held that the process claims were not abandoned and that the second application was a division of the first. Richardson v. Leidgen, 63. 2. ORIGINAL Disclosure-DETAILS-In a divisional application the addition of mere details, such as braces for a frame, does not affect the status of such application as properly divisional, especially when such details were shown DIVISION OF APPLICATION-Continued. in other figures of the original not included in the divisional application. Phelps v. Hardy v. Gattman and Stern, 70. DOUBLE USE. See Invention, 18; Particular Patents, 6. DRAWINGS. See Construction of Specifications and Patents, 9; Interference, 12, 16, 34; New Matter; Reduction to Practice, 2. 1. AMENDMENT TO DRAWING-New Matter-If, in the opinion of the Examiner, the proposed amendment to the drawing involves new matter, the changes in the drawing should not be allowed until the question of new matter has been finally determined, but claims based on this matter should be considered and rejected on the ground of departure and for all other reasons that are applicable, so that all questions may be settled at once if appeal is taken to the Examiners-in-Chief. Ex parte Zuber, C. D., 1894, 47; 67 O. G., 529. Ex parte Ernest, 33. 2. PRACTICE UNDER RULE 64-Although an application may be considerably confused and informal, yet if the claims, taken in connection with the description and drawing, can be understood, action on the merits should be given, in accordance with Rule 64. Id. DUTY OF COMMISSIONER OF PATENTS. See Commissioner of Patents. EARLIER AND LATER PATENTS TO SAME INVENTOR. See Subsequent Patents, 1, 2. EMPLOYEE. See Parties to Suit, 1. ENLARGEMENT OF CLAIMS. See Amendments; Construction of Specifications and Patents, 7, 8, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29; Reissues. EQUITABLE TITLE. See Assignments, 5, 6. EQUIVALENTS. See Infringement, 4, 6, 11. 1. MECHANICAL EQUIVALENTS-DEFINITION-As a general definition, a mechanical equivalent that may be properly substituted for an omitted mechanical element, device, or agency in a patented machine is one that performs the same function by applying the same force to the same object through the same mode and means of application. As applied to a combination of old elements, it is special in its significance and materially narrower in its range than when applied to an invention consisting of a new device or an entirely new machine. *Carter Machine Company v. P. H. Hanes & Co., 228. 2. DOCTRINE OF EQUIVALENTS-SPECIFIC DEVICES-COMBINATIONS-In applying the doctrine of equivalents a distinction is made between inventions of specific devices and those of combinations. In a simple invention the range of equivalents is much wider than in a combination. In the former a change which would be held to be a substitution of equivalents may in the latter be considered to be an introduction of a new idea of means. *Erie Rubber Company v. American Dunlop Tire Company, 251. 3. FUNCTION-IDENTITY—It is an essential rule governing the application of the doctrine of equivalents that not only must there be an identity of function between the two things claimed to be equivalents, but that also that function must be performed in substantially the same way. *Engle Sanitary and Cremation Company v. City of Elwood, 405. ESTOPPEL. See Assignments, 3; Corporations; Interference, 29; Suits for Infringement, 4; Use and Sale of Patented Articles; Validity of Patent Denied by Patentee. LIMITATION OF CLAIMS-PROCEEDINGS IN THE OFFICE-It would be carrying the doctrine of estoppel to an extravagant length to hold that an unsound and unsuccessful argument made in the Patent Office by the applicant with ESTOPPEL-Continued. respect to a rejected claim should have the effect of imposing a destructive limitation upon allowed claims. An estoppel is not to be implied from circumstances of doubtful import. *Société Anonyme Usine J. Cléret v. Rehfuss et al., 459. EVIDENCE. See Abandoned Experiments; Certified Copies from the Patent Office as Evidence; Contracts, 2; Testimony, 1, 3. PROOF OF CARE IN SECURING EVIDENCE-Proof that respondent wrote to a firm of attorneys instructing them to send him copies of all patents relating to a certain subject does not amount to proof that such attorneys made a search to discover all such patents, though they sent a number, and presumption in favor of such search having been made is negatived by the discovery of the patents now urged in the place where prudence would have suggested a search. *Bennett & Shepherd v. Schooley, 646. EVIDENCE OF INVENTION. See Interference, 12. EVIDENCE OF PRIORITY OF INVENTION. See Interference, 16. EXAMINATION OF APPLICATIONS. See Amendments, 2; Drawings; Interference, 14; New Matter. EXAMINERS. See Amendments, 2; Commissioner of Patents; Drawings, 1; Interference, 14. EXAMINERS-IN-CHIEF. See Commissioner of Patents; Drawings, 1. EXAMINER OF INTERFERENCES. See Interference, 40, 43. EXCEPTIONS. See Trade-Marks, 19, 20. EXECUTORS. See Death of Applicant for Patent. EXPERIMENTS WITH OLD ELEMENTS. See Suits for Infringement, 3. FILING APPLICATIONS. See Reduction to Practice, 4, 5. FINAL DECISIONS. See Appeal to the Circuit Court of Appeals, 3. FIRST AND ORIGINAL INVENTOR. See Assignments, 4; Interference, 21, 22, 23, 24, 25, 26, 41, 42; Particular Patents, 34; Partnership. FOREIGN PATENTS. See Affidavits. FOREIGN PATENTS AS EVIDENCE OF PRIORITY OF INVENTION. See Interference, 1,4; Priority of Invention, 1. FORMER DECISIONS. See Infringement, 27, 28; Injunction, 4; Priority of Invention, 4. FORMER DECISIONS AFFIRMED. COMMISSIONER'S DECISION AFFIRMED-Upon a consideration of the merits of the case, Held that there was no sufficient reason to disturb the decision of the Commissioner of Patents. Bryant v. Seymour, Commissioner of Patents, 648. FORMER DECISIONS FOLLOWED. FORMER DECISIONS CITED-Winans v. Denmead (15 How., 343) cited, approved, and followed. Robbins et al. v. Dueber Watch Case Manufacturing Company et al., 202. FRAUD. See Assignments, 3; Decree; Interference, 21, 22, 23. FRAUDULENT ASSIGNMENT. See Assignments, 9. FRAUDULENT REPRESENTATIONS TO INDUCE A CONTRACT. See Contract Attacked for Fraudulent Representations. FUNCTIONS. See Construction of Specifications and Patents, 27, 28, 29; Equivalents; Subsequent Patents, 1. GENERIC CLAIMS. See Subsequent Patents, 3. GRANT OF PATENT. See Assignments, 4; Interference, 24; Title to Patent. IDENTITY OF INVENTION. See Construction of Specifications and Patents, 5, 6; Infringement, 7, 8. IMPLEMENTS OF WARFARE REQUIRED BY THE GOVERNMENT. See Suite for Infringement Against the United States, 1; Use of Patented Articles by the United States, 1. IMPROVEMENT. See Assignments, 4; Construction of Specifications and Patents, 3; Infringement, 2, 4, 9; Particular Patents, 10; Subsequent Patents, 1, 3. INADVERTENCE. See Reissues, 4. INDULGENCE. See Interference, 32. INFRINGEMENT. See Appeal to the Circuit Court of Appeals, 8; Construction of Specifications and Patents, 4, 7, 9; Damages and Profits; Equivalents, 2; Injunction, 1, 4; Invention, 3; New Trial; Particular Patents, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 15, 16, 17, 18, 19, 20, 22, 23, 24, 25, 28, 29, 31, 35, 37, 39, 40, 43, 44, 46, 50, 52, 54, 55, 56, 58, 59, 61, 63, 66, 67, 68, 72, 74, 75, 78, 80, 81, 83, 84, 91, 92; Parties to Suit, 1; Reissues, 2; Subsequent Patents, 2; Suits for Infringement, 4, 5; Use and Sale of Patented Articles; Use of Patented Articles by the United States, 2. 1. PURCHASER-Vendor-OwNER-INFRINGER-ESTOPPEL-One who purchases a patented machine from an infringer and operates it unlawfully for a term of years can not acquire a right to its use because the vendor and owner of the patent subsequently enter into partnership, and the owner is not estopped from charging infringement when no act calculated to deceive or mislead the defendant can be shown. *Thomson-Houston Electric Company ▼. Elmira and Horseheads Railway Company, 122. 2. INFRINGEMENT BY IMPROVED DEVICE-A device is none the less an infringement because it contains an improvement upon the patented invention. * Robbins et al. v. Dueber Watch Case Manufacturing Company et al., 202. 3. RULE OF INFRINGEMENT-Claim 1 of Letters Patent to A. A. Whitely, No. 418,257, for an elastic-cord exercising apparatus, issued December 31, 1889, Held infringed. "The function, utility, or result of defendant's apparatus is contained in that of complainant. An infringement is not avoided because the infringing device is better, more useful, and more acceptable to the public than that of the patent infringed, nor, on the other hand, because the infringing device by some colorable variation or expedient merely impairs or narrows the function and usefulness of the device infringed." Whitely v. Fadner et al., 208. * 4. ABANDONMEnt of One Device—SubstituTING ANOTHER-An inventor of a machine consisting of a new combination of old elements, which is shown by experiment to be valueless and impracticable for the purpose intended, cannot, after obtaining a patent therefor, abandon his specifically described novel invention and substitute as a mechanical equivalent the methods of old machines which he claimed to have improved upon and sue as infringers persons who employed the old device in the old way. * Carter Machine Company v. P. H. Hanes & Co., 228. 5. MACHINE-COMBINATION OF ELEMENTS-OMITTING ELEMENT—A machine is a concrete thing, being an entirety of coöperating elements and agencies. When it consists of a combination of old elements and devices, the leaving out of one of the essential elements of the combination destroys the identity of the combination, and a person cannot be sued as an infringer who uses a machine in which a material part of the combination patent is omitted. *Id. 6. COMBINATION-USE OF ELEMENTS-EQUIVALENTS-Where a patent is for a combination, to support a charge of infringement it must be shown that the infringer has used substantially the same combination, including every one of the elements thereof or a mechanical equivalent for any one that has been omitted. *Erie Rubber Company v. American Dunlop Tire Company, 251. |