and the longer the course of appeal the fuller the disclosure of these pertinent facts, and finally when, after the patent has been granted litigation ensues, then, may be, for the first time all the real reasons substantiating validity that can be marshalled by the plaintiff are presented for the consideration of the court.

Besides the fact that both a disclosure of the alleged invention in such full, clear and exact terms as to enable those of ordinary skill in the art to practice the invention, and also a full presentation of facts as evidence substantiating patentability are essential to a full first consideration of an application by the examiner in accordance with fundamental principle, it seems clear that the public who permit the grant of patents and who are mainly interested and benefited by the grant of the patent should be advised of all facts bearing upon the matter of patentability, and these facts should be made a matter of record in each case whether they be presented before the first examination by the examiner or in response to official action. There is no place in the proper prosecution and examination of cases for the allowance of claims in view of mere oral interviews, or in view of any reasons not of record of which the people may not be informed. See ex parte Eckbo, 116 M.S. Dec., 60.

In the case of every judicial tribunal known to the writer, excepting the examiners of patents themselves, the trial judge has all attainable affirmative and negative evidence before him before he renders his first decision, and no reason is seen why the examiners should be made an exception to this well established general rule.

Fourthly, Examination of the Alleged Invention. (Rev. Stat. 4893.)

If patents are to be granted with due regard to the rights of inventors as well as the rights of the people and in harmony with constitutional provisions, it is essential that a full and complete examination of applications such as is contemplated by Revised Statute 4893 be

made. This examination should include not only a mature and critical reading and study of the specification and claims, and also drawings, if there be drawings, to determine whether the disclosure is as full, clear and exact as the statute (4888) requires, and to determine whether the matter as disclosed is operative or may lack utility, but the examination should also include a fair · search for patentable subject-matter in the disclosure as well as a full and complete search for references and other statutory bars, not only to the claimed subjectmatter, but also to the disclosed subject-matter upon which the claims may be based, thereby forestalling the common practice of solicitors of shifting from one claimed subject-matter to another within the attainable prior art.

Were it true that claims presented in applications always are directed to the patentable subject-matter disclosed therein, the practice of searching for and examining only the matter claimed would obviously be the proper practice, but it is a conservatively stated fact in a fair proportion of applications presented, that the claims drawn are not directed to the patentable matter that may be disclosed in the specification and drawing. To substantiate the view that the whole application should be examined with a view to ascertaining what is the real essence and scope of the invention, if any therein, your attention is invited to Revised Statute 4893 which provides that:

"On filing of any such application and the payment of the fees required by law, the Commissioner of Patents shall cause an examination to be made of the alleged new invention or discovery; and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor."

From a fair interpretation of this statute it would appear, it is thought, that not only the claims, but the

subject-matter upon which the claims are based and all allegations in the specification should be examined and considered with a view to ascertaining what is the real invention, if any, and it is to be noted that this provision is mandatory and not discretionary.

In this connection it appears to be contrary to a plain rule of reason that the word "examination" in Revised Statutes 4893 be given any peculiar, unusual or hyper- · technical meaning.

In every other line of work wherein analysis, diagnosis, examination or judicial determination may be involved, the matter considered is generally subjected to thorough investigation from all points of view. In all such cases, not merely one-sided statements or claims as to the matter under consideration, but the result of the investigation itself, determines the exact character of the matter being examined. Accordingly it is submitted that applications for letters patent should be subjected to such analysis and investigation as generally are all other kinds of work subject to investigation and analytical research.

In further support of the view that, under Revised Statutes 4893, a proper examination of an application should be directed to finding out what is the real invention disclosed therein in view of the prior art, your attention is invited to Vol. 1, page 155, Robinson on Patents, in which it is stated that:

"The claim is to define what the Patent Office, after due examination, has ascertained to be the real discovery of the inventor, and it must be amended or withdrawn according to the judgment of the officers to whom this duty is committed."

In still further support of the view that the proper examination of an application should extend through and beyond the claim made to the "alleged invention," to the real invention, if any, that may be disclosed, attention may be directed to the fact that there are clear

indications that judges of the Federal court, who are best grounded in fundamental patent law, are looking beyond the claims in suit, through mere "environments,' to the real essence of the invention made and, where the terms of the claims make it possible, are construing patented claims so as to give them the scope and meaning necessary to cover the real invention made by the patentee. In this connection see the very able decision recently rendered by Judge Dennison in the case of Davis Sewing Machine Co. vs. New Departure Manufacturing Co., 212 O. G., 1057.

(To be continued.)

EXAMINATION FOR PROMOTION OF JUNIOR PATENT EXAMINERS.

June 27, 1925.

Question 1. (a) When may affidavits properly be submitted under Rule 75 to overcome a reference, and what are the requirements of the rule as to the matters to be set forth in such affidavits?

(b) When should a supplemental oath be required under Rule 48, and what are the provisions of the rule as to the statements to be set out in the oath?

Question 2. Two applications filed by the same inventor for different species of the same invention were copending in the Patent Office, and the claims of the earlier application were specific to the species disclosed therein. Generic claims were not presented in the later application until long after the granting of a patent on the earlier application. Should the generic claims be allowed in the later application?

Question 3. (a) How long after the notice of allowance before a renewal may be filed?

(b) It is found that one of the claims in each of two

applications of the same inventor is the same. One of the applications is forfeited. The other is ready for issue. What should be done with the application which is ready for issue?

Question 4. Where an application has been allowed and renewed, is it ever proper for the examiner to finally reject any new claims on the first action after renewal?

Question 5. Give eight important grounds for rejecting an application from which when made final appeal may be taken to the examiner in chief?

Question 6. What essential requisites should a printed publication possess before it can be used to defeat the grant of a patent?

Question 7. From a final requirement for division between different groups of claims the applicant elects to prosecute one group of claims but retains the other group of claims. What should be the examiner's action?

Question 8. (a) Give the general rule as to when an examiner should suggest claims for an interference, and (b) State what requirements should be made when two or more of the applications containing conflicting claims belong to the same assignee.

Question 9. What action should the examiner take upon a claim which is for an old combination, only one element of which is new and patentable?

Question 10. (a) When, if ever, may independent inventions be claimed in one application?

(b) State the conditions under which the rule permits several distinct inventions to be claimed in one application.

EXAMINATION FOR PROMOTION OF ASSOCIATE AND ASSISTANT EXAMINERS.

June 27, 1925.

Question 1. Has the examiner the authority to withdraw his holding that an application is abandoned? If so, under what conditions?