question of prior knowledge or use. The affidavits on cross-examination may be taken before any officer authorized by law to take affidavits. The order of the Acting Commissioner is modified accordingly. The motion for a rehearing is, in other respects, overruled.

STONE v. GREAVES.

Decided February 6, 1886.

17 O. G., 397.

1. By virtue of the provisions of sections 4909-4912 Revised Statutes the Commissioner of Patents acts in a judicial capacity only, and has only an appellate jurisdiction; but in view of the requirements of sections 481, 483, 4893, 4903, and 4904, he has jurisdiction as a ministerial officer over the entire matter of the examination of applications, the grant and issue of patents, and power, upon proper motion, to review the favorable decisions of the Examiners and Examiners-in-Chief, and stay the grant or issuance of a patent at any time before its delivery, if convinced that such issuance would be contrary to any requirements of law.

2. The practice of entertaining motions by the Commissioner to dissolve interferences upon the ground that the subject-matter involved was not patentable in view of the state of the art, after favorable decisions thereon by the Primary Examiner or Examiners-in-Chief, has so long been recognized by the rules, and the decisions on such cases are so numerous, that citations in support of this practice are entirely unnecessary. Such motions have been generally heard and determined before a decision of the question of priority is had, and when granted it obviates the necessity of determining the latter question.

3. Under the practice in force as described by the Rules of August, 1878, and by those previous to that time, ex parte affidavits were not received having regard solely to the construction to be given certain patents or publications urged as references by the Office.

4. The subject-matter of the issue was-"In a carding-engine, a condensing or rubber cylinder mounted on a polygonally-shaped horizontal shaft, in combination with a driving-gear having a sleeve-shaped bearing, said shaft and cylinder being adapted to be revolved by the drive-wheel and at the same time to be rapidly and continuously reciprocated by suitable mechanism, substantially as and for the purpose described"-the only novel feature in this combination being the squareshaped shaft, the same rejected in view of the drawing alone in English patent of Joseph Beaumont, No. 1,247, of 1863, construed in view of the state of the art at that time.

5. The interference dissolved and the applications rejected.

MOTION to dissolve interference.

CARDING-MACHINES.

APPLICATION of J. M. Stone filed March 13, 1865. Reissue application of J. Greaves filed September 30, 1872.

Mr. David H. Rice for Stone.
Mr. Geo. F. Buckley for Greaves.

DOOLITTLE, Acting Commissioner:

November 26, 1879, this interference was suspended by order of the Commissioner after hearing a motion to dissolve, in view of a certain newly-discovered reference, to permit the Primary Examiner to finally reject the applicants, in order that an ex parte appeal might be taken to the Examiners-in-Chief, and, if necessary, to the Commissioner and the courts, on the question of novelty. This course was followed so far as appealing to the Examiners-in-Chief. That tribunal reversed the decision of the Primary Examiner and sustained the patentability of the subject-matter as against the reference cited. Stone now renews the motion to dissolve on the same reference, notwithstanding the favorable decision of the Board on the question of novelty. Greaves opposes this motion on various grounds: First, because the motion of Stone has already been heard and dismissed by the Commissioner. To this it may be replied that the controlling reason inducing the Commissioner to dismiss the previous motion was to afford the applicant denying the pertinence of the reference his statutory remedy of appeal ex parte from the decision of the Primary Examiner. The Examiner had made no final rejection of the applications on the new reference, as required by law, preliminary to an appeal, and they were remanded to him for that

purpose.

Second, that the question of patentability is already settled in applicant's (Greaves') favor by a proper tribunal, and the law (Secs. 4909 to 4915, Rev. Stats.) directs that where the question of patentability is passed upon by a lawfully authorized tribunal of the Patent Office, the question can only be carried higher by an appeal of the applicant.

Section 4909 provides to every applicant any of whose claims have been twice rejected, and every party to an interference, an appeal from the Primary Examiner to the Board of Examiners-in-Chief; Sec. 4910 provides that, if such party is dissatisfied with the decision of the Examiners-in-Chief, he may appeal to the Commissioner in person; Sec. 4911 provides that such a party, except a party to an interference, may appeal to the Supreme Court of the District of Columbia, sitting in banc. Sections 4912, 4913, and 4914 provide for proceedings to be observed when an appeal is taken to the court. The last-mentioned section also provides that "after hearing the case the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office, and shall govern the further proceedings in the case." There is no provision in any of these sections as to what shall be done by the Commissioner on the rendition of a favorable decision by himself or by either of the other tribunals of the Office. Whether, after a favorable decision of the Primary Examiner or Examiners-in-Chief on the question of patentability, such decision can be questioned or reviewed by the Commissioner depends altogether on the powers and duties conferred upon him by other sections of the law than those mentioned. By virtue of those sections alone he acts in a

judicial capacity only, and has only an appellate jurisdiction. In this view of the matter, and confined to this portion. of the law, the point taken by Greaves is correct, that when the question is one of patentability the Commissioner has jurisdiction by appeal only.

But there are other sections of the statute which extend the jurisdiction of the Commissioner as a ministerial officer over the entire matter of the examination of applications and the grant and issue of patents. These are sections 481, 483, 4893, and 4903, which must be construed together, and are as follows:

Section 481. The Commissioner of Patents, under the direction of the Secretary of the Interior, shall superintend or perform all duties respecting the granting and issuing of patents directed by law; and he shall have charge of all books, records, papers, models, machines, and other things belonging to the Patent Office.

Section 483. The Commissioner of Patents, subject to the approval of the Secretary of the Interior, may, from time to time, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office.

Section 4893. On the 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.

Section 4903. Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification; and if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a re-examination of the case.

Under the first two sections quoted it will not be questioned that the Commissioner has power, with the approval of the Secretary of the Interior, to establish such regulations as will conduce most completely and thoroughly to the examination of all those steps necessary to the grant of valid letters patent, and, on the other hand, of those objections which constitute legal bars to such grant.

It has been inferred from the language of section 4893 that the Commissioner can simply direct an examination of an application, and that when by that examination it shall appear to the subordinate person or tribunal who has made the examination that the claimant is justly entitled to a patent under the law, the Commissioner, nolens volens, shall issue the patent. This is a strained construction of the section and one opposed to the language of the other sections cited. The power to direct an examination under the section in question is incidental to the general powers conferred upon the Commissioner by section 481 concerning "all duties respecting the granting and issuing of patents directed by law." The section does not state whom the Commissioner shall cause to make the examination, nor does it require that it shall be made to appear to the Examiner, or other person than the Commissioner, that the claimant is justly entitled to a patent; and in this absence of control or exercise

of final judgment expressly given any other officer of the question of patentability, it is both reasonable and necessary to conclude that such control and judgment should be exercised by the officer causing the examination to be made, who alone is permitted to issue the patent, and by whom or under whose direction "all the duties respecting the grant and issuing of patents directed by law" are to be performed, subject only to the right of an applicant to the intermediate appeals from adverse judgments provided for by sections 4909 and 4910. But in addition to the general power given him by sections 481 and 483 to grant and issue patents and to establish regulations for the conduct of proceedings in the Patent Office, subject to the direction and approval of the Secretary of the Interior, and the special power to cause examinations of applications to be made, there are the special powers given him by section 4903 to notify an applicant of the rejection of his application, and to give reasons therefor, and, upon demand, to order a re-examination of the case. To these may be added the special control he has over the subject of interferences conferred by section 4904 and the discretionary power he has to issue a patent upon the determination of the question of priority under the same section. Thus, with the single exception of a particular course to be observed when an application is rejected in the first place by the Primary Examiner, the Commissioner has full control of an application, and as it cannot be presumed, in the absence of express enactment having that effect, that the law would impose imperative duties upon an officer and at the same time remove from him the power to perform those duties, or to superintend and control the actions of others in their performance, it must be concluded that the Commissioner can and should stay the grant or issuance of a patent at any time before its delivery if convinced that such issuance would be contrary to any requirement of law.

It is quite apparent, from a review of the legislation in the matter of the work of this Office, that the corps of Examiners, the Board of Examiners-in-Chief, and the system of appeals were instituted to relieve the Commissioner of vast duties which any one man was incapable of performing, but not to relieve him of the power of superintending those duties, or of the power of passing upon ány question concerning the grant of a patent in a particular case whenever that question is properly called to his attention before the issuance of the same. The views here expressed as to the duties of the Commissioner have been substantially held at all times, with one or two exceptions, by every competent authority called to pass upon the question-by the Supreme Court of the District of Columbia, Hull v. Commissioner of Patents (7 O. G., 559); Ib. (80. G., 46); by the Attorney-General (5 Op., 220); by the Secretary of the Interior in re Hunt (13 O. G., 771); letter of Secretary (16 O. G., 955), and by the Commissioner in Ex parte Hull (C. D. 1869, p. 68); (S. C., 9 O. G., 1); Disston and Morse v. Trout (1 O. G., 305); Ex parte Neal (15 0. G., 511); Ex parte Hunt (15 O. G., 831). The objection of the opposing

applicant to the jurisdiction of the Commissioner of this question is therefore overruled.

The practice of entertaining motions by the Commissioner to dissolve interferences on the ground that the subject-matter involved was not patentable, in view of the state of the art, after favorable decisions thereon by the Primary Examiner or Examiners-in-Chief, has so long been recognized by the rules, and the decisions on such motions are so numerous, that citations in support of the practice are entirely unnecessary. Such motions have been generally heard and determined before a decision on the question of priority is had, and when granted it ob viates, of course, the necessity of determining the latter question.

This disposes of most of the objections to this motion. One other was made at the hearing to the receiving of certain ex parte affidavits filed in behalf of Stone setting forth the operation and description of the English patent and its force as a reference to those applications.

As to the reception of these affidavits, their admissibility is subject to the rules in force at the time the motion was made. Those were the rules of practice contained in the August edition of 1878. The only rule concerning affidavits was Rule 31, which provided that affidavits in support of applications would not be received at any stage of the examination unless the Office denied that the invention was operative or useful. Cases may be cited in which, under peculiar circumstances, ex parte affidavits have been received in regard to the matter of public use and other questions; but I can find no rule or decision then in force authorizing the reception of affidavits in a contested case in opposition to the grant of a patent, and having regard solely to the construction to be given to a certain patent or publication urged as a sufficient reference by the Office. In the absence of any such practice or authority at the time mentioned the affidavits submitted cannot be considered.

Another part of the motion to dissolve is that the matter now claimed by Greaves, as set forth in the issue, was not covered by his original application for letters patent, but was unlawfully introduced by a subsequent amendment. The essentially novel matter of the combination claimed is the polygonally-shaped horizontal shaft, and the use of this feature is substantially indicated in the original specification by the statement that the "spindle may be square, in which case the feather may be dispensed with." By amendment and new oath the discretionary use of the "square" shaft was made an essential part of the invention. A departure from the original claim was taken, but not from the original invention.

This brings us to the consideration of the particular matter set forth in the English patent cited as a reference to the subject-matter of the issue. The issue, as defined by the Primary Examiner, is as follows:

In a carding-engine, a condensing or rubber cylinder mounted on a polygonallyshaped horizontal shaft in combination with a driving-gear having a sleeve-shaped bearing, said shaft and cylinder being adapted to be revolved by the drive-wheel and