Division B embraces the following claims:

1. The oblate hook formed in the end of the metallic band as a means of attaching the same to the slotted link or buckle, substantially as described.

2. The mode of securing the end of the metallic band by looping it around one of the bars of a slotted link or buckle and utilizing the expansive force of the bale to prevent it from unbending or rendering, substantially as described.

3. The improvement in baling cotton and other elastic material with metallic bands, which consists in looping the end of the bale-band around the bar of a slotted or mortised buckle and utilizing the expansive force of the bale to aid in preventing the loop from unbending or rendering by clamping the short member of it between the cotton and the overlying metal of the band.

Corresponding statements are made in the specification.

The Primary Examiner rejected this application for reissue on the following grounds:

First. That the invention is not susceptible of subdivision, the substance in both being the same.

Second. That the mode of connecting the band to the buckle is neither shown nor described in either the original patent or reissue above referred to, it being merely alluded to in the patent by reference to his rejected application September 22, 1858. Third. That the second claim in application A is anticipated by English patent No. 3,089, of 1807. Said second claim reads thus: "2. A metallic band having a wedge formed on one or both ends thereof, to operate in combination with a link or buckle, substantially as and for the purpose described."

The appellant insisted that the Supreme Court of the District of Columbia, in their judgment allowing the patent of 1871, declared that the application of 1869, on which that patent was granted, covered the same invention as that of 1858, and that in contemplation of law the reference contained in the patent of 1871 to the application of 1858 incorporated that application into the patent and made it a part of the same; and that under section 4916 of the Revised Statutes McClintock is entitled upon reissue to go back to the application of 1858.

The following is the language of the court:

The first question arising under these issues is, whether the present application as made is substantially identical with the application of 1857 and 1858? This question is to be determined by the record, and the record ascertained by inspection. The court, after patient examination, are compelled to the conclusion that they are the same-the same in specification, diagram, and model-with perhaps two features in the application of 1857 dispensed with in 1858 and 1869, and which in nowise affect the application as it stands.

As understood by the appellant, the court, when they said that the application of 1858 and the application of 1869 were "identical in diagram," meant that the figure of a solitary buckle was a representation of a bale of cotton, four bands and four buckles, each band fastened around the bale by passing its two ends through one buckle. And when they said that the applications of 1858 and 1869 were "identical in specification," they meant that the specification of 1869 contained all that was contained in the application of 1858.

On appeal the Examiners-in-Chief affirmed the decision of the Primary Examiner. They denied that the decision of the Supreme Court of the

District of Columbia, on the application of 1869, authorized the incorporation of the specification of 1858 into the reissue application now under consideration, or the use of the drawing of 1858 as a part of this application. They held that this constituted new matter, and that, inasmuch as neither the drawing nor the model of 1869 showed anything except the buckle, the use of the drawing of 1858 in this application was interdicted by the rule in which it is provided that neither the model nor the drawing shall "be amended, except each by the other."

Now the court, it is true, did say that the drawings and specifications of the two applications were identical. But to ascertain what they meant when they said this we are to inquire, not what their words might have meant if they had stood alone, but what they do mean standing where they

A method of interpretation which tears the words of a judgment away from their context and imputes to them a cast-iron meaning is neither sound in itself nor just to the tribunal which rendered the judgment.

In order to get at the meaning of this decision the first thing to be done is to ascertain what the question was which they had to decide. That question was whether the applicant could carry the date of his invention back to the application of 1858. It therefore did not involve the question whether these drawings were identical nor the question whether the specification of 1858 and 1869 were identical. In other words, it did not involve the question whether the drawing of 1858 and 1869 each contained all that the other contained, but only the question whether that of 1858 contained all that appeared in that of 1869. Whether the application of 1869 contained all that was found in that of 1858 was immaterial to the controversy before the court. If the specification of 1853 contained all that was found in that of 1869, and if the invention was patentable and had not been abandoned, the applicant was entitled to carry the date of his invention back to the application of 1858 over all intermediate obstacles of prior knowledge or use. If the court, having decided that, had gone further and decided not only that the specification of 1858 contained all that was found in that of 1869, but also that the specification of 1869 contained all that was found in that of 1858, they would have decided a question not in any way involved in the cause which they were adjudicating, and their decision would not be an authority for any other tribunal, nor would it present a case of res judicata for that court itself.

What is true respecting the specification is also true as to the drawing. The question was not whether the drawing of 1869 contained all that was contained in the drawing of 1858, but whether the drawing of 1858 contained all that was contained in the drawing of 1869.

The question was not whether the words "as for example, among others the mode described in our application of September 22, 1858," which are found in the application of 1869, imported into the application of 1869

more or less of the application of 1858; but it was whether all that was in fact found in the application of 1869 was also found in that of 1858. The declaration of the court that the drawing and specification of the two applications were identical must be received, then, not literally, but merely as a decision of the question actually before them-that is to say, a decision that the drawing and specification of 1858 contained all that was contained in the drawing and specification of 1869.

The decision of the court does not incorporate the specification and drawing of 1858 into the application of 1869; nor did the court decide that the specification and drawing of 1858 were incorporated into the application of 1869 by the reference to the former, which was made in the latter, in the words "as, for example, among others the mode described in our application of September 22, 1858."

Upon what principle could it be held that this reference had the effect claimed? If this modification of the invention could have been joined with the preferred form in the description, claim, and drawing, and if the reference had been made to a patent or statute, or other public record, it might have been plausibly urged that it would, at least indirectly, have furnished to those skilled in the art such information as would have enabled them to practice the invention.

But the application of 1858 was not a public document; and if the reference to it removed from it the seal of secrecy in the Patent Office it did not make it accessible to the public, and was not such a description as is required by section 4888 of the Revised Statutes. The appellant, however, seems to be of the opinion that this section, which requires the applicant to make his application in form and substance as prescribed, is a law not for the applicant but for the Commissioner. He thinks that it was the duty of the Commissioner to exact from him "a description of the invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same," by compelling him to incorporate his specification and drawing of 1858, bale, buckles, bands, and all, into the application of 1869, instead of exhibiting the solitary buckle in the drawing, and merely referring in the specification to a mode of bending the ends of the band described in the application of 1858. Now, the provisions of section 4888 seem to be unambiguous; and yet, if it be true, as a rule, that an applicant has no duties to perform himself, but is at liberty to stand silent until bis application is extorted from him, as a confession from a criminal, by persistent interrogation, it is none the less true that in this case the Commissioner made no mistake in failing to compel the applicant to. draw into the application of 1869 the modification of the invention shown in the application of 1858. On the contrary, if he had permitted, not to say exacted, such a course, he would have violated the rule which interdicts the joinder of several distinct inventions in the same patent. Even if the specification of 1858 had been inserted bodily into the application of 1869, and if the drawing of 1858 had been exactly repre

sented in the patent of 1869, it would have been incumbent on the Examiner to enforce the exclusion of this modification of the invention from the application of 1869.

For in the patent of 1871, granted on the application of 1869, the applicant, as we have seen, secured the following claim:

The buckle A, provided with a central opening or slot, B, when the same is used for fastening the ends of metallic bands together around cotton-bales, in the manner substantially as herein described.

This is for the present assumed to be a specific claim for the buckle when used in fastening the bands in one way. He might possibly have secured also a generic claim for the use of the buckle for fastening bands in all modes, to which all specific claims for its use in particular modes would have been subordinate, and in that case might have joined one specific claim in the same patent with such generic claim. Now, the buckle when used with a band having both ends bent into "oblate hooks," and the buckle when used with a band having one end formed into a "wedge," or having both ends formed into "wedges," constitute distinct species of one genus. While they are so related to each other as to be capable of being covered by one generic claim, they present patentable specific differences capable of sustaining distinct specific claims. They are distinct inventions; they are not mere mechanical equivalents. What is true in other like cases is true in this. The generic claim may be joined in one patent with a claim for either one of the species embraced in the genus. So either of the specific claims may stand alone in the patent. But the generic claim cannot be joined with both of the specific claims, nor can the two specific claims be joined together in one patent.

It was impossible, then, for the applicant to secure more than one specific claim in the patent of 1871, or in any one patent. A specific claim for the use of the buckle in the mode described in the application of 1858 was incapable of joinder in the same application with the specific claim actually granted in the patent of 1871. It was in the power of the applicant to select his specific claim. He did select as his specific claim the use of the buckle in that mode in which the ends of the bands are bent "downwardly into the form of two oblate hooks, so that when the bale is withdrawn from the compressing-machine the expansive force developed by the elasticity of the cotton within it will act upon the points of the same and push them up against the band, and thus effectually secure the fastening." It was not possible for the applicant to join thesetwo specific claims in the original patent of 1871 even if the subjectmatter of each had been fully and accurately described in the specification and illustrated in the drawings. As it was impossible for him to secure an additional specific claim in that patent, so has it been impossible for him, since the issue of that patent, to secure any other valid specific claims by reissue.

This not only excludes the amendment of the drawing as the support

of such an amended claim, but also excludes the incorporation of the application of 1858 into the application of 1879, which the applicant demands on the ground that the patent of 1869 contains the words "as, for example, among others, the mode described in our application of September 22, 1858." That clause refers to a mode which could not have beeu embraced in the patent of 1869, and cannot be patented now on reissue. Of course, if it cannot itself come into this application, it cannot draw in the application of 1858, for which it is supposed to stand.

These considerations are fatal to the reissue application. If, therefore, the court, deciding a question involved in the case, had in the clearest language declared that the whole of the specification and drawing of 1858 had reappeared in the specification and drawing of 1869, on which was granted the patent of 1871, it would not aid the applicant for this reissue. The claims which he now asks could not have been embraced in the patent of 1871. They cannot be embraced in the reissue of that patent. And the court, if they had said that the species now claimed was described in the application of 1869, would not have said, as they certainly could not lawfully have said, that it was entitled to be joined in that application with the claim which was, in fact, allowed.

There is still another difficulty in the case. The Supreme Court of the District of Columbia decided, in 1870, that the invention covered by the application then pending, on which the patent of 1871 was finally granted, had not at that time been abandoned; but they did not decide that the claims now sought had not been abandoned. Still less did they in 1870 decide that these claims or any other would not be abandoned before 1879. If, therefore, the applicant were now to make this specific claim in the only legitimate form of a new and independent application, and should for any purpose seek to carry the date of the specific invention back to 1858 or to 1869, I do not see how I could escape the conclusion that he had long ago abandoned the device now claimed. For although reference was made in the patent of 1871 and in the reissue of 1873 to a mode of operation described in the application of 1858, yet no such reference was made in the reissue application or patent of 1874, which contains no allusion whatever, direct or indirect, to the specific mode of fastening now claimed.

All this is predicated upon the assumption that the claim made in the original patent of 1871, and repeated in the reissues of 1873 and 1874, is a specific claim. But suppose that claim to be interpreted as a generic claim, covering not only the species described in the patent of 1871 and in the application on which that patent was granted, but also all other species generally connected therewith. In that case the applicant might, in his application and patent, have joined with this generic claim one specfic claim and only one. Claims for other species could only have been made in separate applications. That species, in order to be claimed in the same patent, must have been described in the same application with the genus. As I have said, I think only one species was described. I do not think