2. SAME-SAME-FURTHER PROCEEDINGS.

Where S. failed to file his record with the clerk of the court within the forty days allowed by the rule and thereafter T. filed a motion in the Patent Office requesting further proceedings in accordance with the decision of the Commissioner, Held that it was the duty of the Commissioner to grant appellee's motion to take further proceedings necessary to dispose of his case, as though no notice of appeal had ever been given.

Mr. Frank E. Barrows for the appellee.

SHEPARD, C. J.:

The appellee Tait has filed a motion to docket and dismiss the appeal in this case which was taken by Schmidt from a decision of the Commissioner of Patents in an interference case.

The decision of the First Assistant Commissioner awarding priority to Tait was rendered December 3, 1913. A motion for rehearing was denied by the Assistant Commissioner and notice of appeal was entered January 8, 1914. The record was not filed with the clerk of this court within the forty days allowed therefor by the rule, which expired February 28th. March 16th, Tait filed a motion in the Patent Office requesting the further proceedings necessary to the final disposition of his application in accordance with the decision awarding him priority. (See Rule XXI, sec. 2.) This motion was denied by the Assistant Commissioner on March 26, and an order was entered by him extending the time for filing the record to April 7. The record has not been filed; but it appears that a second motion for rehearing was filed by Schmidt on March 30, and the same is depending.

Rule XV, section 1, relating to docketing and dismissing appeals when the transcript shall not have been filed within forty days from the perfection of appeal was devised to apply to causes tried in the supreme court of the District, and undertaken to be appealed therefrom. Section 6 of Rule XXI, relating to appeals from the Commissioner of Patents reads as follows:

The appeals from the Commissioner of Patents shall be subject to all the rules of this court provided for other cases therein, except where such rules, from the nature of the case, or by reason of special provisions inconsistent therewith, are not applicable.

On an ex parte motion, and without the benefit of argument, we prefer not to determine whether, under the foregoing section, the Commissioner of Patents has the power to grant an extension of the time for filing the record; or whether a party to a cause decided by the Commissioner in his favor that has been appealed therefrom, is entitled to the right to docket and dismiss the appeal as provided in Rule XV; for the determination of neither point is essential.

The exhibits attached to the appellee's motion show that the extension of time was granted after the forty-day period had expired, and presumably, upon an application for extension filed thereafter also. Assuming, without deciding, that the Commissioner may have the power to grant an extension of the time for filing the record, that power, as is the case with the courts, could only be exercised before the expiration of the forty days provided by the rule. The appellant having failed to file his record within the forty days from notice of his appeal, it was the duty of the Commissioner to grant appellee's motion to take further proceedings necessary to dispose of his case, as though no notice of appeal had ever been given." (Rule XXI, sec. 2.)

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Doubtless, the motion for further proceedings will now be granted. For this reason, and also because of the depending motion for rehearing, it is not necessary to determine whether the rule relating to docketing and dismissing appeals applies to decisions of the Commissioner of Patents; and the motion to that end will be dismissed without prejudice. By referring to the pending motion for rehearing we are not to be construed as intimating that after the expiration of the forty days from the entry of notice of appeal, the Commissioner has the power to grant a rehearing. That question is not before us. The motion is dismissed without prejudice.

A street-railroad transfer-ticket devised to keep a check on passengers and conductors with respect to the time when used, in part by means of a coupon, the body portion when the coupon is detached being receivable only during the forenoon hours, may properly be classed as an article to be used in a method of doing business and as such is a "manufacture" within the meaning of Revised Statutes section 4886, (U. S. Comp. St., 1901, p. 3382,) and a proper subject of a patent.

2. SAME-SAME-SAME.

The term "manufacture" as used in the patent law has a very comprehensive sense, embracing whatever is made by the art or industry of man, not being a machine, a composition of matter, or a design.

3. SAME-VALIDITY AND INFRINGEMENT-TRANSFER-TICKET.

The Pope patent, No. 805,153, for a time-limit transfer-ticket for use by street-railroads, etc., was not anticipated and discloses patentable invention; also Held infringed.

APPEAL from the District Court of the United States for the Southern District of Ohio; Howard C. Hollister, Judge.

Suit in equity by William C. Pope against the Cincinnati Traction Company. Decree for complainant, and defendant appeals. Affirmed.

Messrs. Wood, Wood & Nathan (Mr. William R. Wood and Mr. Charles C. Linthicum of counsel) for the appellant.

Messrs. Hosea & Knight (Mr. Marcellus Bailey and Mr. James L. Norris of counsel) for the appellee.

Before KNAPPEN and DENISON, Circuit Judges, and SATER, District Judge.

KNAPPEN, Cir. J.:

This is a suit for the infringement of claims 1, 3, 4, 7, and 8 of United States patent to Pope, No. 805,153, November 21, 1905. The defenses are: (a) non-patentable subject-matter; (b) anticipation; (c) lack of invention; and (d) non-infringement. The district court held the patent valid and infringed, and made the usual decree for injunction and accounting, from which this appeal is taken.

1. Is the subject-matter patentable? The invention relates particularly to "time-limit" transfer-tickets for use by street-railways, traction companies, etc. The stated objects of the invention are, in substance, to enable the railroad company to make the transfer as quickly as possible, and to keep check on conductors and passengers; and thereby be able to determine whether a given transfer has been correctly issued and whether lawfully presented by the passenger; as well as to provide a transfer-ticket which when used can prove with certainty the correctness of the passenger's claim, thereby preventing litigation in case a transfer issued for forenoon use is presented for afternoon-fare, and for this reason refused by the conductor.

The specifications disclose a ticket consisting of a strip of suitable material (presumably paper) divided into a body portion and a single afternoon-coupon, the latter being separated, on the one side from the body portion and on the other from the stub, by lines of perforations or indentations, enabling the ready separation of the body from the coupon, as well as of the latter from the stub. In the "preferred embodiment" of the invention (Figure 1) the body portion is provided with a column of abbreviations indicating the months of the year and with columns of numerals for the days of the month; also with an inscription containing the name of the issuing railroad and suitable instructions to the passengers, as to the limitations under which the transfer is usable. It bears also inscriptions indicating the transfer points, the conductor's number, and "conventional indications" showing the hour and fractions thereof. The body portions are consecutively numbered, correspondingly with the coupons, and

contain the legend, "If no coupon attached hour punched is a. m. hour." The coupon contains the abbreviated name of the railroad and notice "Not good if detached." This coupon denotes that the hour punched on body of (number) transfer is p. m. hour. In a modified form suggested the ticket and legends are somewhat different in details of inscription, but the net result of the information given is the same. In this modified form (Fig. 2) the coupon and body each. contain a table of hours, the former on a dark ground, the latter on a light field. The drawings of the "preferred" and "modified" forms (Figs. 1 and 2, respectively) follows:

It results that when the time limit on the body is punched and issued unaccompanied by the coupon, the transfer is for forenoon use only, but when issued with the coupon it shows on its face that it is only for afternoon use; and, as suggested in the specifications, in case of dispute reference to the conductor's number and to the pad containing the stubs and unissued coupons will readily disclose for what portion of the day the transfer was in fact issued.

Claim 1 reads:

1. A transfer ticket comprising a body portion and a coupon, said body portion and coupon bearing conventional indications to constitute an antemeridian transfer ticket when said body portion is used separately and a postmeridian transfer ticket when used together.

Claims 3, 4, and 7 do not differ from claim 1 in respects material here.

Claim 8 reads:

8. A transfer ticket comprising a body portion and a coupon and further provided with conventional indications to constitute a complete transfer ticket for one part of the day when said body portion is used separately and a complete transfer ticket for another part of the day when said body portion and coupon are used together.

(1) The patent is assailed as relating merely to

a method of transacting business, a form of contract, a mode of procedure, a rule of conduct, a principle or idea, or a permissive function, predicated upon a thing involving no structural law;

and counsel say that the ticket in question

has no physical characteristics which enable it to be distinguished from any other transfer ticket or from any other printed slip of paper.

If this criticism is well taken, the subject-matter is not within the patent statute.1

(2) But while the case is perhaps near the border line, we think the device should be classed as an article to be used in a method of doing business, and thus a "manufacture" within the statute. (Rev. St., sec. 4886; U. S. Comp. St., 1901, p. 3382.) Broadly stated

the term "manufacture," as used in the patent law, has a very comprehensive sense, embracing whatever is made by the art or industry of man, not being a machine, a composition of matter, or a design.'

The device of the patent clearly involves physical structure. The claims themselves are, in a proper sense, limited to such structure. The specifications describe a distinctive physical structure, viz., a given combination and general arrangement of body and coupon (with the suggestion that the two parts may be printed in different colors,) accompanied by "conventional indications" and instructions for the use and interpretation of the ticket. But the alleged patentable novelty does not reside in the arrangement of the printed text, nor does such text constitute merely a printed agreement. The argument to that effect overlooks the important consideration that the body alone is good at one time, and that the body and coupon are required for the other portion of the day; and that the ticket bears on its face, whether the body is used alone or with the coupon, the distinguishing indications. Nor is there merely an attempt to patent a form of a contract. The specifications do not confine the construction to either the style, or printed arrangement or language of the legends. The essential thing is that the required information

1 In re Moeser, (Ct. of App. D. C.; C. D., 1906, 685; 123 O. G., 655; 27 App. D. C., 307;) Hotel, etc., Co. v. Lorraine, (C. C. A. 2; 160 Fed. Rep., 467; 87 C. C. A., 451;) United States Credit System Co. v. American Credit Indemnity Co., (D. C.; C. D., 1892, 664; 61 O. G., 1169; 53 Fed. Rep., 818; s. c., C. D., 1893, 292; 63 O. G., 318; 59 Fed. Rep.; C. C. A. 2, 139; 8 C. C. A., 49.)

2 Language of Judge Acheson in Johnson v. Johnston, (C. C.; 60 Fed. Rep., 618;) see also Riter-Conley Mfg. Co. v. Aiken, (C. C. A. 3; 203 Fed. Rep., 699; 121 C. C. A., 655, and cases there cited.)