DECREE OF SUPREME COURT OF DISTRICT OF COLUMBIA-Continued.
missioner of Patents from a decision of the Board of Examiners-in-Chief award-
ing priority of invention to J. J. and K. M. Strong. The Commissioner rejected
both applications for want of novelty, and J. J. and K. M. Strong appealed
from his decision to the Supreme Court of the District of Columbia, who enter-
tained the appeal and reversed the decision of the Commissioner. Er parte
Strong, 286.
DEFENSES. See Affidavits, 5; Damages and Profits, 15; Exhibits, 1; Practice in the
Courts, 9, 15; Title 1.
1. It is not necessary to allege or prove, in order to sustain the defense of prior
patent or printed publication, that such patent or publication was issued or
given two years earlier than the patentee's invention. *Parks et al. v. Booth,
2. The patent act allows the infringer to plead and prove that the invention of the
patentee had been in public use or on sale in this country for more than two
years before the inventor applied for a patent; but no question of priority is
open under that defense, nor will evidence sustain it that another had made or
patented the invention two years before the application without the knowledge
of the patentee whose invention is in question. *Id.
3. No reason is seen why any one should not be permitted, upon discovering his
mistake, to set up the defense of want of novelty against another party who
claims what in fact belongs to the public; but if with a knowledge of the state
of the art he attempts to appropriate what does not in fact belong to him, he
should be estopped, when his fraud is discovered, from interposing such de-
fense, especially against one whom the Patent Office has decided as against him
to be the original and first inventor. *Greenwood v. Bracher, 454.
4. Whether a patentee, who has lost his rights in consequence of proof that his
alleged invention was anticipated by another to whom a patent has issued,
will be allowed to continue the use of such invention by showing that neither
was the first inventor, must depend upon whether he has acted in good faith
in the matter. *Id.
5. "A patentee whose patent is assailed upon the ground of want of novelty may
show by sketches and drawings the date of his inceptive invention, and, if he
has exercised reasonable diligence in perfecting and adapting it and in apply-
ing for a patent, its protection will be carried back to such date." (Reeves v.
Keystone Bridge Company, 1 O. G., 466.) *Kneeland et al. v. Sheriff et al., 583.
6. The defense of public use for more than two years prior to the filing of the ap-
plication upon which the patent was granted must be clearly proven. A private
use for testing the invention and informing the inventor as to its perfection and
usefulness, with the design on his part all the while to procure a patent, will
not sustain such defense. *Campbell v. James, 633.
7. When the defense of want of novelty is made it is the duty of the tribunal,
whether court or jury, to give it effect; but such proof or testimony should be
weighed with care and never be allowed to prevail where it is unsatisfactory,
nor unless its probative force is sufficient to outweigh the prima facie pre-
sumption arising from the introduction of the patent. Miller et al. v. Smith
et al., 643.
DELAY. See Abandonment, 12, 13; Designo, 3.
In cases of long delay to prosecute the invention beyond mere description, either by
applying for a patent or by a reduction to practical form adapted to use, the
question of abandoned experiment or conception will arise and should be con-
sidered a factor in the case. Huntley et al. v. Smith, 182.
1. Demurrer will not be overruled on argumeut on the ground that an answer to
the whole bill was tiled simultaneously therewith, the plaintiff having waived
the benefit of that objection by going to argument upon the demurrer. *Hayes
v. Dayton, 690.
2. Under Equity Rule 37 of Supreme Court a demurrer will not be overruled on ar-
gument on the ground that an answer to the whole bill was filed simultanes
ously therewith. *Id.
DESCRIPTION. See Claims, 26; Infringement, 4; Process and Product, 2; Reissues, 18.
1. Where a process is substantially, though informally, shown in the description
of the operation of the machine the irregularity may be held by the Commis-
sioner not to be fatal to the application. Ex parte Wintherlich et al., 1.
2. A reference in the descriptive part of the specification to several species is ad-
missible by way of illustration; but a description of one species is as perfect
basis for a generic claim as a description of several. Ex parte Ewart, 78.
3. Effect must be given to the whole of the description contained in the specifica-
tion and drawings of a patent. Hence, if it can be ascertained that a patentee
intended to divide his invention into two parts and to describe and claim them
as separate improvements, the patent must be construed according to this in-
tention, so as to give full effect to each part of the invention. *National Car
Brake Shoe Company v. Lake Shore and Michigan Southern Railway Company.
Same v. Illinois Central Railroad Company, 664.
DESIGNS. See Patents, 15.
1. A design patent is invalid if the device embraced thereby was in public use or
on sale more than two years before the date of the filing of the application on
which such patent was granted. *Burton v. Town of Greenville, 602.
2. Regulations and provisions applicable to the obtaining or prohibition of patents
for inventions or discoveries not inconsistent with the existing patent act ap-
ply to patents for designs, without modification or variation. *Miller et al. v.
Smith et al., 643.
3. In the case of a design as well as a mechanical patent mere delay in applying
for a patent will not forfeit the inventor's right to the same or present any bar
to a subsequent application, providing the invention had not been in public
use or on sale two years before the filing of the application. *Id.
4. A patent for a design consisting of letters of the alphabet having a described
ornamentation is not bad because it embraces more than one letter. *Id.
5. While it is true that the test of infringement in respect to the claim in a design
patent is the same as in respect to a mechanical patent, it is not essential to
the identity of the design that it should be the same to the eye of an ex-
pert. *Id.
DILIGENCE. See New Trial, 6; Reduction to Practice, 1; Rehearing, 3.
1. The race of diligence commences with the second conception and ends with the
reduction to practice by the inventor first to conceive the device. Neither
public use nor an application for a patent is necessary to the completion of the
invention. Farmer v. Brush, 5.
2. If the inventor first to conceive effects his reduction to practice before he files
his application or introduces the invention to public use, the interval between
the reduction to practice and the filing of the application or the introduction
of the device to public use is not embraced in the period covered by the so-
called race of diligence. Id.
3. While lack of diligence in filing an application for a patent or in communicat-
ing the completed invention to the public may enter as a vital element into the
question whether the completed invention has been abandoned or forgotten,
it cannot operate ex post facto to undo the consummated work of completing the
invention. Id.
4. The race of diligence between two inventors, of whom one conceives the inven-
tion before, but reduces it to practice after, the other, cominences with the lat-
ter conception. Etches et al. v. Prescott, 40.
5. The law requires and favors diligence in prosecuting the claims to an exclusive
right, and an inventor cannot, without cause, hold his application pending dur-
ing a long period of years, leaving the public uncertain whether he intends
ever to prosecute it, and keeping the field of his invention closed against other
inventors. * Woodbury Patent Planing Machine Company v. Keith, 428.
6. Diligence in perfecting an invention is a relative matter, and the law does not
require that an inventor who is engaged in developing a number of improve.
ments at the same time should devote all his time and energy to any one at the
expense of others. McTammany, jr., v. Needham, 203.
7. When an applicant has once reduced an invention to practice the question of
diligence in applying for a patent is one between him and the public, and can
only enter as an element in the question whether the completed invention was
abandoned by him to the public. Id.
DISCLAIMERS. See Inventions, 5; Practice in the Patent Office, 20; Priority of Inven-
tion, 8; Reissues, 3, 4, 5.
1. A reference in a disclaimer to a particular form of the device not so limited in
the claim is merely descriptive of that form without taking away or adding
anything thereto. *Sharp v. Tifft, 483.
2. A disclamer filed after the suit was brought ordinarily deprives the plaintiff of
costs in the suit; but where the disclaimer was not necessary to sustain the
patent to the extent it is held valid, was inoperative, in the view taken of it,
upon the patent, and has no effect in maintaining the suit, cost may be allow.
ed the plaintiff as though no disclaimer had been filed. *Id.
1. The object of Rule 41 in requiring, as a preliminary act, a division of an appli-
cation when independent inventions are included therein is to make clear and
certain the work of the Office as to examination; and the rule would be ab-
surd if, after electing the invention to be withdrawn and eliminating it, an
applicant could be permitted to reinstate the same after a rejection of the one
retained. Ex parte Preston, 125.
2. Where an applicant had combined in one machine for manufacturing articles
from old rails the operations and functions of four different machines, which
rendered it possible to operate on the rail at a single heating and prevented
the injury and waste occasioned by reheating and the use of separate mechan-
ism, Held that, as the machine was indivisible and the dies upon the rolls in
the machine were necessary to produce the particular article, a division of
the application should not be required. Ex parte Holub et al., 127.
3. It is not the policy of the Office to require divisions where the several parts com-
posing the device are intimately connected and co-operate in the accom-
plishment of a specified result. Ex parte Freese, 133.
DIVISION OF INVENTION. See Description.
DIVISION OF PATENT. See Description, 3; Reissues, 14, 15.
DOUBLE USE. See Claims, 4.
DRAWINGS. See Claims, 22; Defenses, 5; Practice in the Patent Office, 24, 25; Priority of
Invention, 2; Reissues, 9.
The invention covered by the patent upon which suit was brought and by that
set up in defense being dependent upon certain peculiarities of form and posi-
tion of parts in a structure, it was found necessary to consider the drawings
in connection with the specifications, and to rely upon the drawings alone to
some extent to ascertain the exact form and position of some of the parts.
*Banker v. Bostwick et al., 549.
DURATION OF A PATENT. See Construction of Statutes 6, 7; Reissues 15; Limitation
The term or duration of a patent must be determined by the statute and all the
facts of the case, and not merely by the terms of the grant in the patent. * De
Florez et al. v. Raynolds et al., 289.
EMPLOYÉ. See Inventor, 1.
EMPLOYES IN THE PATENT OFFICE.
The second section of the patent act of 1836 does not declare that a person tak-
ing employment in the Patent Office shall be held to have forfeited or dedicated
to the public thereby any invention before made by him. It simply prevents
him from acquiring an interest in a patent while he remains such employé
The disability ceases with the employment. Page, Administratrix, §c., and
the Western Union Telegraph Company v. The Holmes Burglar Alarm Telegraph
Company, 345.
ENGLISH SPECIFICATIONS AND PATENTS.
1. An English patent is not granted, in the sense of sections 4886 and 4887 of the
Revised Statutes, until the completed specification is enrolled.
Ex parte
Mann, 57.
2. The oath of an aplicant accompanying his application that letters patent for
the same invention for the United Kingdom of Great Britain and Ireland
had been granted to another as a communication from abroad must be re-
garded as conclusive in showing that the applicant is the sole and original in-
ventor of the matter in controversy, as set forth in the English patent, unless
the fact can be disproved by testimony taken in the interference proceeding
then pending. Von Alteneck v. Thomson and Houston et al., 109.
EQUITY. See Bill in Equity; Bill of Exceptions, 1; Chancery, 3; Damages and Profits,
11; Demurrer; Married Women, 1, 2; Practice in the Courts, 22.
EQUIVALENTS. See Inventions, 4; Non-patentability, 6; Practice in the Patent Office, 17.
1. Equivalents may be claimed by a patentee of an invention consisting of a com-
bination of old elements or ingredients, as well as of any other valid patented
improvement, provided the arrangement of the parts composing the invention
is new and will produce a new and useful result. *Inhdeuser v. Buerk, 362.
2. The term "equivalent," as applied to a combination of old elements, is special
in its signification and somewhat different from what is meant when the term
is applied to an invention consisting of a new device or an entirely new ma-
chine. * Id.
3. In the former case it means that the patent in respect to each of the respective
ingredients comprising the invention covers every other ingredient which in
the same arrangement of the parts will perform the same function, providing
it was well known as a proper substitute for the one described in the specifica-
tion at the date of the patent. * Id.
4. The application of a blast in a bore-hole sunk in an ordinary well is not an an-
ticipation of a process by which a torpedo may be exploded many hundred
feet below the surface of the ground and below the top of the rock through
which an Artesian well has been sunk, and at the exact point in the well
where the effect of such explosion is desired, with a water-tamping sufficient
to confine the effect to the vicinity of its location. * Roberts et al. v. Schreiber,
5. Two devices are substantially the same in the sense of the law of patents when
they perform the same functions in substantially the same way to accomplish
the same result, and, except when form is of the essence of the invention, it
should not be regarded in the question of infringement. *Holly v. Vergenner
Machine Company, 659.
ESTOPPEL. See Assignees, 1; Licenses, 11; Practice in the Courts, 12; Priority of In
vention, 1; Reissues, 4.
An estoppel in pais is not operative in the Patent Office to change the facts, so as
to transform into a first and original inventor a claimant who is not in fact
the first and original inventor. Its utmost effect is to divert the patent from
the inventor to a legal or equitable, actual or constructive, assignee, or to
defeat it altogether. It cannot enter as an element into a judgment on the
question of priority. Swift v. Rochow, 83.
EVIDENCE. See Affidavits, 1; Exhibits, 1; 'Interferences, 19, 20; Invention, 3; Pat-
ents, 14; Practice in the Patent Office, 8, 9; Presumptions, 1, 2; Prima facie Evi-
dence.
1. An affidavit made in support of a preliminary statement before a consul of the
United States in a foreign country cannot be used as evidence in favor of the
affiant against another party to an interference; for the express provision of
the rule authorizing such preliminary statement is that it can in no case be
used as evidence in behalf of the party making it. Warnant v. Warnant et al.,
36.
2. The file-wrapper, contents, and drawings of a patent set up in defense in an
action for infringement are not competent to show that the invention de-
scribed in such patent was made at the date of the oath; nor is it the proper
way to show reduction to practice and use of the invention, so as to invalidate
the patent sued upon. *Howes et al. v. McNeal, 372.
3. When patents are cited as anticipating the plaintiff's patent they speak only as
public grants, and nothing from the Patent Office can be admitted in evidence
of earlier dates than the patents themselves. *ld.
4. The preliminary papers filed in the Patent Office are merely the declaration of
third persons, not parties to the suit or connected with them in interest or
title, and are incompetent as hearsay and secondary. *Id.
5. The judgment of the Commissioner of Patents disbarring a solicitor for surrep-
titiously placing a copy of a caveat in the official files extends only to the
exclusion of the solicitor, and not to the effect of the paper as evidence in pais,
although its effect upon the instrument as a caveat of record might be greater.
Campbell v. James et al., 633.
6. Where a document is introduced in evidence by a defendant to prove admissions
by the inventor inconsistent with his claim, such document is legitimate evi-
dence according to what should appear its just weight, as well as to those
facts in favor of the inventor as to such as are against him. *Id.
EXAMINERS. See Appeals, 5; Commissioner of Patents; Interferences, 6; Practice in
the Patent Office, 2, 3, 26.
An application for reissue was rejected for want of novelty and new matter. The
Board on appeal affirmed the Examiner as to new matter, but did not consider
the references. The case was then amended as to such new matter, and again
rejected for want of novelty, and the Examiner expressed a doubt as to the
existence of new matter and referred that question to the Board for its con-
sideration, which affirmed the Examiner's rejection without considering the
references. The action of the Examiner in submitting a question to the Board
without first determining it was irregular and erroneous. An Examiner must
determine for himself his doubts relative to the rejection of an application, and
cannot shift the responsibility upon the Board, whose only function is that of
a tribunal of appellate and not of original jurisdiction. Only two of the three
claims appealed involved new matter, and the other was referred back to the
Primary Examiner for specific action. Ex parte Coleman, 205.
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