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language of the claims and the specification different from those in the original application, it must be presumed that there were certain parts of the patent which did need correction.

The invention in question is an improvement in a combined hay raking and tedding machine. In the original patent the applicant stated that his invention consisted in "the construction, arrangement, and combination of the parts by which the horse-rake may be used for spreading and turning over hay with great facility in the most perfect manner, performing what is known and called among farmers, 'the tedding of hay,' as well as raking up the hay into windrows for loading and putting up and carrying off the field or meadow ;" or, as the improvement is described by the Examiners-in-Chief, it "essentially consisted in joining a hay rake and tedder or spreader in one machine, wherein two rows or gangs of spring-teeth were arranged, the front row being rigid for use as a simple rake, while the rear row was pivoted to turn up and be out of the way while the front was so used as a rake, and let down and rigidly secured when both were to be used together as a tedder or spreader of the hay."

The objections now under consideration relate to those expressions in the present reissue application which imply that this machine may be used for other purposes than for raking and stirring hay. It is stated in one sentence that the invention, speaking generally, "consists of a construction, arrangement, and combination by which the implement may be used for stirring and turning over the substance operated upon with great facility in the most perfect manner." Again, that when the machine is in its normal condition the formation of the teeth enables them "to drag over and scratch the surface over which they are drawn, and gather up any substance lying thereon." Also, that "as the machine advances the teeth scratch, stir, and turn over the material over which they are drawn, the driver lifting them whenever desired by means of the lever," &c.

The restriction of the operation of the machine to the matter of raking and spreading hay made in the patent is thus removed by these expres. sions, and it is objected to by the Examiner that by the aid of such expressions the reissue of the patent would now cover subsequent inventions in the class of harrows, cultivators, &c. There is no pretense that, so far as the structure itself is concerned, the claims are broader than the original patent, or that the present specification embraces a description which amounts to an enlargement of or variation from the machine originally claimed and described; so that the question simply is, can a patentee by reissue indicate additional uses to which his invention can be put? I regard the doctrine as set forth in the case of Putnam v. Yerrington (9 O. G., 691) as applicable here, especially so as the new uses to which the invention can, in the opinion of the Examiner, be put, are such as were accomplished by similar machines prior to the date of the patent on which this application is based-viz, harrowing, scratch

ing of earth, and raking other material than hay, as set forth in English Patents No. 9,474 of 1842, No. 1,582 of 1856, and No. 353 of 1859. If by this reissue applicant had in mind the putting of his apparatus to work in scratching or harrowing the ground, such use by rakes was not unknown long before the grant of the original patent. But there is no declaration of such specific use made in the present application. The court in the case cited held:

The section of the act which authorizes a reissue requires that it shall be for the same invention, and that it shall not containany new matter. It is not meant by this, as the counsel for the defendant seems to insist, that no new or different language should be employed. The very object of the reissue is to give an opportunity to an inventor to change, modify, and correct his specifications or claims to the extent necessary to cure defects and supply deficiencies arising from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention. By the introduction of new matter I understand such an enlargement of the original specifications or claims as to includo combinations or results which did not necessarily flow from the invention as originally stated and described.

I have carefully compared the complainant's patent as first obtained with his reissue. The statement of his invention and the figures used to illustrate it are the same in both cases. Not a device or instrumentality appears in the second that was not exhibited in the first. He states results in the reissue which were not stated in the original patent, and which were omitted, I presume, because he did not know until he was taught by experiment that such results would follow. But an inventor is allowed to do this in a reissue without subjecting himself to the imputation of incorporating new matter. He is entitled to all the uses to which his patent may be applied, and to all the beneficial results which legitimately follow the use of his instrumentalities.

The principal new effect which he sets forth in the reissue, and which he failed to note in his former specifications and claims, is the substance of the first claim, to wit: Such a formation of the new fastener over the cork that the pressure thereon may cause the fastener to hold more securely, as specified. No new device was needed to accomplish this result, and hence the claim falls within the objects and purposes of a reissue. There must be a decree against the defendant for infringing the first claim of the complainant's patent, and an order for an injunction and an account.

There the new effect was specficially stated, and it was not even known at the time of the grant of the original patent. Here the new effects at most are simply suggested, and they were old at the time of the grant of the patent.

The decision of the Examiners-in-Chief on this point is therefore reversed.

EX PARTE ACKERMAN.

Decided April 19, 1880.

1. Rule 6, as construed by circular of February 17, 1880, applies alone to personal signatures of inventors and assignees to amendments and other actions.

2. Where the entire invention is assigned before the application is filed, and the attorney receives his power from the inventor alone, the power should be adopted, ratified, or confirmed by the assignee, or he should appoint another to represent his interests.

APPEAL from Primary Examiner.

COMBINED OIL-RESERVOIR AND SHAFT-BEARINGS.

APPLICATION of Peter J. Ackerman filed February 11, 1880.

Messrs. Munn & Co. for appellant.

DOOLITTLE, Acting Commissioner :

In the above-entitled application the entire invention was assigned before the filing of the application, and the assignment was recorded the same day the application was filed. The attorneys, however, received their power from the inventor alone. They having submited an amendment, the Examiner requires the assignee to join in such amendment, in accordance with the provisions of Rule 6, which is as follows:

When there has been an assignment of an undivided part of an invention, the inventor and the assignee will both be recognized as the proper parties to hold correspondence with the Office, and all amendments and other actions in such cases must be signed by both parties; but official letters will be sent in such case to the post-office address of the inventor, unless he shall otherwise direct.

But this rule is construed by the circular of the Commissioner, dated February 17, 1880, as follows:

While the rules provide that upon an assignment of an undivided interest in an invention the inventor and assignee shall both be recognized as proper parties to hold correspondence with the Office, and that after such assignment all amendments and other actions which require the signature of the parties themselves shall be signed by both the applicant and the assignee, &c.

From this circular it would appear that the rules apply to personal signatures, and that only such amendments or actions need be signed by the assignees or their attorneys which require the personal signature of the inventor, such as supplementary oaths, disclaimers, conces sions of priority, &c., and that until such action is made the attorney for the inventor alone, or for the assignee of the entire interest, can sign the amendment.

But Rule 5 provides that "the assignee of the entire interest of an in. vention is entitled to hold correspondence with the Office to the exclusion of the inventor." It would seem to be within the spirit of this rule and of Rule 6 that where the entire invention is assigned before the application is filed, and the attorney receives his power alone from the inventor, that such power should be adopted, ratified, or confirmed by the assignee in order to protect his interest under such assignment; otherwise the inventor, having parted with all interest in the invention, and the attorneys not being responsible to its owners and not acting under their directions, the entire value of the invention might in some cases be frittered away by the unauthorized acts of the irresponsible agents. I think it highly important, therefore, that the Office should require the assignees of the entire interest in such a case to join in the power granted to the attorneys by the inventor or to appoint some attorney to represent their interests.

This the assignee of the present application will be called upon by the Office to do before other proceedings are taken therein.

EX PARTE FREESE.

Decided April 14, 1880.

17 O. G., 1095.

1. Doubted whether the doctrine of genus and species as affecting articles of manufacture can properly be applied to combinations and subcombinations growing out of the general structure.

2. It is not the policy of the Office to require divisions where the several parts composing the device are intimately connected and co-operate in the accomplishment of a specified result.

APPEAL from the Primary Examiner.

WORSTED-SHUTTLES FOR SPINDLES.

APPLICATION of Francis J. Freese filed October 24, 1879.

Mr. M. Bailey for appellant.

DOOLITTLE, Acting Commissioner:

Three claims are presented in this application, the first of which the Examiner holds covers a genus, and the second and third each distinct species. They are as follows:

1. The combination, with the shuttle-body and the spindle-holding spring, of the spindle consisting of two prongs connected together and to the shuttle-body by one and the same pivot-pin, the lower prong being provided with a heel which is obliquely slotted for the passage of said spindle-holding spring, substantially as herein before shown and described.

2. In combination with the shuttle-body and spindle-holding spring, the spring composed of lower prong, b, formed with an obliquely-slotted heel and an upper prong, a, with its heel let into a slot or mortise in the heel of the lower prong, the two being connected together and to the shuttle-body by one and the same pivot-pin F, as herein before shown and set forth.

3. In combination with the shuttle-body and the spindle-holding spring, the spindle consisting of two prongs connected together and to the shuttle-body by a single pivot pin passing through the oblique slot in the lower prong, said prongs being provided on their contiguous faces, at or near their front ends, with inclined planes for causing said ends to follow the movements of their heels, substantially as set forth.

The first claim has reference to the construction of the heel of the spindle broadly, and the second to the specified construction, and the third to the combination of the subject-matter of the first with a device for spreading apart the other end of the divided spindle.

I doubt very much whether the doctrine of genus and species as affecting articles of manufacture can properly be applied to combinations and subcombinations growing out of the general structure. Such claims are recognized by the courts as valid and admissible; and it would seem to be a useless and unnecessarily burdensome requirement to insist that each subcombination included in a concrete and patentable combination should be made the subject-matter of a separate ap plication.

The third claim presented may be regarded as covering the general combination, and the first and second subcombinations involved in the structure taken as a whole. It frequently happens that a limited claim may properly be presented to a combination of parts, and separate and broader claims to special divisions or parts of the device when all the elements co-operate and form a legitimate combination.

It is not the policy of the Office to require divisions where the several parts composing the device are intimately connected and co-operate in the accomplishment of a specified result. It would appear that the particular means for spreading apart the toe of the divided spindle were old as used in connection with other devices for spreading the heel. If such is the case it is not clear how there can be any special co-operation between the devices described for spreading apart the heel and the incline of the toe. If, however, there is any special co-operation between these parts, the applicant would seem to be entitled to cover them in this application.

No good reason appearing why a division should be insisted upon, and the relations of the parts being so intimate as to render their separation disadvantageous not only to the inventor, but to the public, the decision of the Examiner is reversed.

BARNEY V. KELLOGG ET AL.

Decided April 16, 1880.

17 O. G., 1096.

1. Rule 116 prescribes what course shall be followed on a motion to dissolve an interference on the ground of lack of patentability of the subject-matter. No provision is made for an appeal from the Examiners-in-Chief affirming patentability, and this, no doubt, for the reason that the law makes no provision for an appeal from the favorable decisions of that tribunal.

2. Rule 118 also substantially provides that appeals upon motions denying the patentability of the subject-matter cannot be taken to the Commissioner.

3. Rule 117 provides for motions to dissolve on the ground of non-interference or other irregularity in declaring the same.

4. Rule 120 provides for the making of motions before the Examiner of Interferences or the Examiners-in-Chief in regard to any fact not relating to priority, but which may constitute a statutory bar to the grant of a patent. The provisions of said rule, however, must not be construed to provide an alternate remedy, but can only be availed of when motions relating to statutory bars cannot be made as prescribed by the other rules.

MOTION to dissolve interference.

APPLICATION of E. H. Barney filed April 29, 1876. Patent granted J. Dwight R. Kellogg, April 13, 1875, No. 161,883. Reissue patent granted Oliver Edwards, February 20, 1877, No. 7,524.

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