couraging attitude of the Supreme Court of the United States toward sufficiently important inventions, my own firm conviction is that when the next patented pioneer invention of great commercial value is presented to that august tribunal, if the validity of the patent is considered, and is dependent on the validity of a functional claim of the "means" type, the honorable court will declare the functional claim valid. "The world do move". A Problem In Practice. The following condition arose in Division 39. A claim was presented to the combination A'-B'; that is, to the combination of a specific A with a specific B. The resulting search showed the broad combination A-B, that is, the combination of a generic A with a generic B to be apparently new. "What to do?" Other Examiners were consulted, with the unexpected result that each of the only three possible solutions was chosen, to the exclusion of the other two solutions. One said: "Pass the case to issue as it is"; another, "Allow the specific. claim and suggest the broader claim A-B"; a third, "Reject A-B' as not defining the actual invention." And the Examiners consulted were seasoned veterans. This practical problem is submitted without comment. "What is truth?" or less classically, "Where are we at?" In the language of the present Hashimura Togo, one "asks to know." A. W. COWLES, I have been accorded the privilege of seeing, before publication, the comments made by Mr. Cowles on my article on Functional Claims in the October Journal. There are two points raised by Mr. Cowles upon which I would like the opportunity of expressing my views. The first is purely a matter of self defense, for "A machine which comminutes a supply of tobacco, places a predetermined portion of the tobacco in proper relation to a piece of paper, encloses said portion in the paper, and fastens the paper in its enclosing position." That claim is as clearly functional as any which was ever written, and it was far from my intention to suggest any such thing. The machine is there defined by the result of its action on the product, not by the way it produces that result; by the function or effect of the mechanism, rather than by the law of operation. The same criticism will not hold, however, with respect to the claim which Mr. Cowles says is equally objectionable. That claim is a combination claim in the form approved by the Supreme Court in Morley Sewing Machine Company v. Lancaster, and is entirely free from the Heidbrink v. McKesson doctrine. The claims held invalid in the latter decision, although expressed in the form of a combination of two "means" clauses, was in reality a claim for a function of one of those means, the other clause reciting merely the necessary environment common to the invention and the prior art. An example of the type of claim considered in my earlier article can be drawn if some assumptions be made concerning the structure of the cigarette machine referred to. The novelty of the machine being assumed to reside in forming a tube from a flat paper strip by drawing it through a folding chute, the following claim could be drawn: "A cigarette machine which presents a guiding passage having a constantly decreasing effective guiding area of a shape varying progressively from flat to spiral, whereby a paper strip when drawn through the machine will be shaped first into a trough to receive tobacco, and then into a tube around the tobacco filler with the edges of the strip overlapping." If this is the underlying principle of the machine it is thoroughly protected irrespective of the mechanical embodiment. To claim in the usual form, a paper supply, a folding chute of a certain form, and means for drawing the paper through the chute, would not cover the case where the paper was pulled through by hand or where no supply was present. The whole invention in the assumed case is in the chute. It is not in a combination. The sole purpose of the type of claim under consideration is to focus attention upon the feature of novelty and to avoid loss of protection by a change in the mechanical details; and my thought in the previous article was not to create a new type of claim, for it is not new, but to call attention to a rather neglected field. If authority is needed, no better example can be found than the first claim of the Eibel patent, upheld as being a true machine claim in 261 U. S. 45. "A Fourdrinier machine, having the breast roll end of the paper-making wire maintained at a substantial elevation above the level, whereby the stock is caused to travel by gravity, rapidly in the direction of movement of the wire and at a speed approximately equal to the speed of the wire, substantially as described." It will be noted that there is no element "positively included", as so often required without warrant by the Patent Office. The second point that calls for comment is Mr. Cowles' championship of purely functional claims. They have been condemned so universally, from the supreme court down, and it has been demonstrated so conclusively by Robinson and court decisions that a function is not an inventive creation at all, that it seems strange to hear that they are suggested, even if only as an easy way of being sure that the patent claims are broad enough. If we are to adopt a registration system, leaving the entire burden of definition to the court, functional claims may be well enough; but if the purpose of the Patent Office is to supervise the grant of a patent to the end that the real invention may be secured, the deliberate grant of claims which extend far beyond that invention can hardly be justified. EDWARD C. TAYLOR. AN INDUSTRIAL ARTS COURSE FOR THE EXAMINING CORPS. It has long been urged that a visit to the factory or plant where the art which he examines is actually practiced would be a great aid to the examiner. Due to the heavy load of accumulated work in the Office it has not seemed possible for many years past to spare the time necessary to make such visits. Moreover funds for defraying the expenses of the examiners in visiting the plants of their special industries have not been available in sufficient amount to permit any general practice of thus making the examiner acquainted with the actual operation of those processes and machines with which he constantly deals at his desk. The Patent Office Society has undertaken now to bring the various industries to the examining corps through the use of motion pictures. The Society possesses the necessary equipment and the special Motion Picture Committee consisting of R. E. Adams, chairman, M. Hertz, and A. R. Tracey collaborating with F. W. Swanton, chairman of the Educational Committee, have made arrangements to secure and exhibit pictures illustrating the operation of the most important manufacturing processes and plants. Permission has been given by the Commissioner to show industrial films each Friday afternoon from 4:00 to 4:30 P. M. This recalls the custom that prevailed dur ing the administration of former Commissioner Ewing, who assembled the corps on Friday afternoons to hear the reading of papers on Patent Office Practice, or lectures on industrial arts by inventors or experts in the arts. It is believed that the use of motion pictures as above indicated can be made very helpful in bringing the examiners in closer touch with the practical working of the technical arts. OF GENERAL AND PERSONAL INTEREST. Joseph Dugan, ranking first Assistant Examiner in Div. 36 at the time of his resignation, left the Service July 1, 1924 to establish himself in the practice of Patent and Trade Mark Law in California. Mr. Dugan entered the Office Nov. 15, 1910 and except for a short period of "Flying Squad" detail in Div. 48, his whole service was in Div. 36 where he became expert on the gyroscope, the aerometer and the bomb dropping art. He is a member of the District of Columbia bar and of the bar of the U. S. Supreme Court. His was one of the many brilliant minds that have served the Office and it is confidently predicted that he will be highly successful in the profession. He is located in the I. W. Hellman Building, Los Angeles, California. It is regretted that due to the absence of ye Personal Editor on vacation about the time of Mr. Dugan's separation from the Office, an account of this event has not appeared in an earlier number. Edward S. Morrison, associate examiner in Div. 26, resigned Oct. 20, 1924, after more than 10 years in the Office, he having been appointed Jan. 24, 1914 from Pa. He is a graduate in Electrical Engineering from the Mass. Institute of Technology, holds the degrees of LL.B. and M. P. L. from the National University, and |