Applicant's prior patents cover designs wherein the entire pitcher, including its top, is claimed, and the only bar to applicant's present claim is involved in the question whether after applicant has taken out these patents on the whole pitcher, including the top, he has a right to separately patent the top, which he alleges is made detachable from the pitcher and is sold separately therefrom.

Following the analogy in the well-established practice relating to mechanical patents set forth in ex parte Mullen and Mullen, (C. D., 1890, 9, 3d case,) if applicant could not include the pitcher-top alone and the pitcher including the top in one patent, which seems to be true in the present case, and he first patents the entire pitcher, including the top, then comes back without undue delay and elects. to patent the top per se separately from the pitcher including the top, which he has done in this case, no sufficient reason is seen why he should not be allowed to do so. This position is strengthened by the decision in Graff, Washbourne & Dunn v. Webster et al., (189 Fed. Kep., 902.)

I see no force in the contention that to be allowable this application for the pitcher-top should have been copending with the applications for applicant's design patents for the pitcher including the top. The statutes are silent as to copending applications, and the reason for copending applications is satisfied if the later application is filed with sufficient promptness to negative laches, which seems to have been done in the present case.

Nor is there any objection to a design simply because the respective features thereof are shaped for "utilitarian purposes," if these features also perform the function of ornamentation.

I see nothing, therefore, to bar the allowance of this application. The decision of the Board of Examiners-in-Chief is reversed.

EX PARTE MCCOLLUM.

Decided March 27, 1914.

204 O. G., 1346.

REJECTION-COMBINATION OF REFERENCES-WHEN APPLICABLE.

In determining the patentability of a claim over features found only in a plurality of references it is necessary to consider the structural differences specified in the claims, as well as their functional difference or result. If the structures of the several references cannot be combined without the exercise of invention, even though the result is old, the claim should be allowed. If the structures of the references may be combined or substituted one for the other and the combined function or result is new, the claim should be allowed. It is only when both the structural features found in the references may be combined without invention to meet the structure called for by the claim and the function or result involves no invention that the claim should be rejected.

APPEAL from Examiners-in-Chief.

INTERNAL-COMBUSTION ENGINE.

Messrs. Foster, Freeman, Watson & Coit and Mr. Herbert J. S. Dennison for the applicant.

NEWTON, Assistant Commissioner:

This is an appeal from a decision of the Board of Examiners-inChief affirming the Primary Examiner in his final rejection of the following claims:

27. In an internal combustion engine a fixed cylinder, a cylindrical slide valve rigid against internal pressure co-axial with and outside the cylinder, inlet and outlet ports both controlled by the slide valve, a piston in the fixed cylinder, and means whereby the valve is moved to close the cylinder ports during the compression and explosion cycles of the engine.

28. In an internal combustion engine, a fixed cylinder, a cylindrical slide valve rigid against internal pressure, co-axial with and outside the cylinder, inlet and outlet ports both controlled by the slide valve, means for cooling the fixed cylinder within the cylindrical valve, a piston in the fixed cylinder, and means whereby the valve is moved to close the cylinder ports during the compression and explosion cycles of the engine.

29. In an internal combustion engine, a fixed cylinder, a cylindrical slide valve rigid against internal pressure co-axial with and outside the cylinder, inlet and outlet ports both controlled by the slide valve, a cylindrical casing outside of the slide valve, means for cooling the fixed cylinder within the cylindrical valve and a piston in the fixed cylinder, and means whereby the valve is moved to close the cylinder ports during compression and explosion cycles of the engine. 30. In an internal combustion engine, a fixed cylinder, a cylindrical slide valve rigid against internal pressure co-axial with and outside the cylinder, inlet and outlet ports both controlled by the slide valve, a cylindrical casing outside the slide valve, means for cooling the fixed cylinder within the cylinder valve and the cylindrical casing outside the slide valve, a piston in the fixed cylinder, and means whereby the valve is moved to close the cylinder ports during the compression and explosion cycles of the engine.

The references relied upon are as follows: Herreshoff, 280,311, June 26, 1883; Nitcher, 561,603, January 9, 1896; Turcot et al., French, 396,558, April 15, 1909.

The invention in controversy is an internal-combustion engine in which a single cylindrical valve serves both to admit the gases at the proper time into the cylinder of the engine and also to permit their explosion therefrom at the proper time.

As understood, applicant is the first to do this in an internalcombustion engine with a single cylindrical valve. The Knight engine referred to by the Board of Examiners-in-Chief acted somewhat similarly; but that engine had two cylindrical valves, one within the other, and so does the device of the Turcot et al. French patent. In order to be able with his one valve to perform the functions of the two valves in the Turcot et al. construction, applicant not only has to move his single cylindrical valve endwise, but also gives it a twist or turning motion, and with this compound motion.

he has performed with one cylindrical valve in an internal-combustion engine what heretofore has required two. This seems to be invention of the first order. The only question is whether the appealed claims are specific enough to include a new characteristic feature of applicant's valve to distinguish it from the prior art.

These claims do not include the compound motion referred to; but just where invention in this case begins to split off from the prior art is exceedingly difficult to express. The claims call for a "cylindrical slide valve." The Turcot et al. French patent has two cylindrical slide-valves, and of course if it has two it has one; but neither of the Turcot et al. valves C or D controls both the inlet and outlet ports. One of the Turcot et al. valves controls the inlet and the other the outlet port; but the ground of rejection has been that in view of such valves as that shown in Herreshoff there would be no invention in closing both the inlet and outlet valves of the Turcot et al. patent with one cylindrical valve. This might be true if the cycles of opening and closing the valves in, say, a four-stroke-cycle type of internal-combustion engine were not so different from the steam-engine, say, of the Herreshoff or Nitcher type.

In such an internal-combustion engine a downward stroke of the piston acts to draw in a charge of gas. Then the inlet-opening must be open and the exhaust-opening closed. On an upward or compression stroke of the piston both inlet and exhaust openings must be closed. On the second downward stroke of the piston following an explosion both inlet and exhaust openings must be closed, and, finally, on the second upward stroke of the piston, when the gases are rejected, the exhaust-openings must be open and the inlet-openings must be closed.

No such opening and closing of the valves in the Herreshoff or Nitcher engines could be so timed, and certainly these engine-valves do not suggest how to convert the Turcot et al. double cylindrical valves into a single cylindrical valve.

When legitimate combination claims, such as those appealed, are rejected on two or more references, the trend of the best authorities. indicates that at least one of the references ordinarily should show the general combination claimed. This the Turcot et al. patent does. Then if the specific features claimed and shown by the other reference or references may be substituted without such changes as require invention and perform the function intended the two references may be legitimately combined against the claim; otherwise not. If the Herreshoff or Nitcher valve were substituted for the Turcot et al. valve structure, a device would result which could not perform the function of an internal-combustion engine.

Legitimate combination claims are for constructions or mechanisms for performing a function, and it is improper to reject them on ideas

extracted from various references unless those ideas are accompanied by constructions that may be put together without so changing them as to require invention to adapt them to perform the desired result. In determining the patentability of a claim over features found only in a plurality of references it is necessary to consider the structural differences specified in the claims, as well as their functional difference or result. If the structures of the several references cannot be combined without the exercise of invention, even though the result is old, the claim should be allowed. If the structures of the references may be combined or substituted one for the other and the combined function or result is new, the claim should be allowed. It is only when both the structural features found in the references may be combined without invention to meet the structure called for by the claim and the function or result involves no invention that the claim should be rejected.

Applying these rules to claim 27, the broadest of the appealed claims, it is not legitimately anticipated by the references and may be allowed.

Claim 28 is drawn on the same general lines as claim 27, with the addition of means for cooling the fixed cylinder, and is regarded patentable over claim 27 and the references.

Claims 29 and 30, besides specifying the features of claim 27, call for means for cooling the cylindrical casing outside the slide-valve. Applicant does not seem to show any such means and certainly does not describe any such means. The history of these claims is that they were suggested from another application which clearly shows and describes such means. Possibly the inlet 7 of applicant might be called

means for cooling the cylindrical casing outside of the slide valve,

but it is not so described and is ordinarily not regarded as a cooling

means.

It must be held, therefore, that applicant is not entitled to make claims 29 and 30. Applicant has presented four claims covering very much the same construction as his appealed claims, but somewhat more limited. He should be allowed to substitute his claims numbered 27 and 28 for present claims 27 and 28 or add said claims to his present claims, if he so desires.

The decision of the Board of Examiners-in-Chief denying patentability to claims 27 and 28 is reversed. Their decision denying claims 29 and 30 is affirmed.

STEEL AND STEEL v. MYERS.

Decided July 22, 1914.

205 O. G., 1021.

1. INTERFERENCE-PROOF OF FOREIGN APPLICATIONS.

If an applicant who is involved in interference has stated in the oath to his original application that he filed the application in a foreign country, that should be taken, in my opinion, as establishing prima facie that the foreign application was filed by him or with his knowledge and consent. If, however, the original oath does not state that the foreign application had been filed, but the allegation is made in a subsequent oath or in the preliminary statement, the applicant should, in view of conflicting affidavits, be given the benefit of the filing of the foreign application only upon a stipulation of the parties or where it is established by duly taken testimony that he was in fact the party who filed the foreign application or that it was filed with his knowledge and consent.

2. SAME-SAME-BENEFIT OF FOREIGN APPLICATION.

The Examiner of Interferences upon the filing of a proper motion, accompanied by a certified copy of the foreign application, shall in cases falling within the above ruling give the party filing the same the benefit of the foreign application if in his opinion the invention in issue is disclosed therein.

ON REFERENCE.

BLOWPIPE OUTFIT.

Messrs. Wilkinson, Fisher, Witherspoon & Mackaye and Messrs. Wilkinson, Giusta & Mackaye for Steel and Steel.

Mr. E. G. Siggers for Myers.

EWING, Commissioner:

The Examiner of Interferences has referred this case, with a request for instructions as to the practice to be followed in fixing the burden of proof where the benefit of a foreign application is claimed by one or more of the parties under the provisions of section 4887 of the Revised Statutes.

It appears that it has been the practice to disregard the foreign application in fixing the burden of proof and to require the applicant, in order to obtain the benefit of such foreign application, to establish either by testimony or by stipulation that he is the same person that filed the foreign application, and, if such foreign application was filed in the name of another, that it was done with his knowledge and consent.

The Examiner of Interferences points out that this practice occasions considerable cost and delay, since if the parties will not stipulate these facts it is necessary, if the applicant resides in a foreign country, to take testimony abroad, which requires the filing of interrogatories and a deposit with the State Department and the suspension of the taking of testimony in this country. It does not appear that in any case it has been established that ar applicant was not entitled to the