PRACTICE IN THE PATENT OFFICE-Continued.

disclaimer as to warrant the dissolution of an interference is binding in the
Patent Office until reversed or modified on rehearing. Ex parte Gardner et al.,
110.

21. Whether such decision is or is not erroneous, the official action which would
have followed a favorable decision cannot be had unless action shall first be
taken by the party interested to reverse or modify the decision or to secure the
desired relief, notwithstanding the decision. Id.

22. Where a party maintains throughout an interference such an attitude as, in legal
effect, to render his specific claim antagonistic to a generic claim by his op-
ponent, it is not incumbent on the Office, after an award of priority to his
opponent, to grant to him, without any action on his part, a specific claim sub-
ordinate to his opponent's generic claim. If two years shall elapse before such
action, the application will become abandoned. Id.

23. Inoperativeness of an invention is an objection that relates to the merits of an
application, and an appeal from such objection lies from the Examiner to the
Examiners-in-Chief. Ex parte Muhl, 117.

24. Where an appeal is taken from the action of an Examiner requiring a model, the
answer to such appeal must set forth reasons why a model is required in that
particular case, and not consist of the general statement that models in most
cases are necessary or useful. Ex parte Jové, 122.

25. In view of Rule 55 as amended February 24, 1880, the policy of the Office is to
require drawings to be made so full and clear that in all simple, easily-under-
stood cases models may be dispensed with, and not to demand a model unless
it is useful as an aid to the Office in the matter of examination into the state
of the art or in the construction of the specification and drawing. Id.
26. The rules require that Examiners shall furnish applicants with such information
as will assist them in overcoming or removing objections made to the sufficiency
of the specification, and until this is done they may properly insist that the
application as filed should be examined. Ex parte Templeton, 128.

27. The decisions of the courts afford no warrant for a practice which would require
an inventor, in order to secure protection, to claim in a single patent or in a
reissue of the same all the inventions which he may have there shown or de-
scribed. Ex parte Emerson, 143.

28. A distinction is to be made between subjects which are indicated in the specifi-
oation and those specifically pointed out in the claims of a patent as the inven-
tion for which protection is sought and such as are merely there described or
shown. The former and not the latter constitute the invention patented. The
intention upon the part of the applicant or patentee is to be observed. Id.
29. Where an inventor has pending at the same time two applications and a patent
is granted upon the one last filed, in which is shown or described, but not
claimed, an invention which is or may be claimed in the application first filed,
the first application will, in the absence of anything to the contrary, be the
proper one in which protection for such invention may be secured. Id.
30. Rule 91 of Office Practice cannot apply in such a case, for it is not to be pre-
sumed that an inventor filed a second application for the purpose of claiming,
and omitted to do so through inadvertence, accident, or mistake, what he
might have claimed in the first application. Id.

31. The proceedings of the Patent Office are presumed to be regular and founded
upon proper proceedings; but they must necessarily be founded upon the appli-
cations of living persons or their personal representatives, such as the law
recognizes, and not upon those of persons who are merely supposed to exist,
and should be founded upon the oath of the inventor or his personal repre-
sentative, in accordance with the statute. The Eagleton Manufacturing Com-
pany v. The West, Bradley & Cary Manufacturing Company et al., 532.

PRACTICE IN THE PATENT OFFICE-Continued.

32. The right of the sole applicant to a patent, where the testimony is conclusively
in his favor, will not be precluded by the mere denial by his copatentee of the
fact of sole invention. Lovrein v. Banister et al., 152.

33. Upon final hearing of the case by the Commissioner it was found that the testi-
mony was so evenly balanced that judgment would have to be given upon the
record should no more convincing testimony be adduced, and further time was
allowed the parties to produce additional evidence. The case coming up again
on appeal, it was found that there was nothing in such additional testimony
tending to turn the evenly-balanced scales of the former proofs, and the con-
ditional decision on the record was made permanent. Fulgham v. Westcott, 167.
34. The rule of law that the proof and pleadings of a cause must correspond in all
essentials is as applicable to contested cases in the Patent Office as in the courts.
Young v. Rogers, 178.

PRELIMINARY STATEMENT. See Evidence, 1; Interference, 22; Practice in the Pat-
ent Office, 4, 5.

1. When a party files a preliminary statement it is to be presumed that he has fully
canvassed all the facts in the case and has correctly stated the same, and
unless a request to amend the statement is made before any testimony has been
taken all parties have a right to proceed on the issue as made in the respective
statements. Hopkins v. Le Roy, 188.

2. A party has no right to wait until his opponent has fully developed all the facts
in his case and then for the first time ask leave to correct errors in his state-
ment; but if through carelessness or negligence he has failed to have such
correction made he must suffer therefor. Id.

PRESUMPTIONS. See Abandonment, 14; Appeals, 7; Foreign Inventions, 1.

1. An affidavit made by an applicant, in compliance with the rules, showing that
he made the invention and had obtained foreign patents therefor, is presump-
tive proof that he is the original inventor and has obtained foreign patents for
the invention; but it is not conclusive evidence of such facts either to deter-
mine or to prevent an interference. Ex parte Nagel et al., 17.

2. Such proof may be overcome by showing that the patent mentioned in the affi-
davit was never in fact issued, or by showing that, if issued, it did not contain
the invention in question, or by showing that the applicant, although he was
the patentee, was not the inventor. Id.

3. A patentee is entitled to the presumption of priority which his patent affords,
and this presumption is only overcome by clear and satisfactory proof to the
contrary. * Rogers v. Beecher et al., 626.

#

PRIMA FACIE CASE. See Defenses, 7; Interference, 19, 22, 23; Patents, 14; Practice
in Courts, 15, 21; Priority of Invention, 9.

PRIMA FACIE EVIDENCE. See Patents, 14; Practice in the Courts, 21.

PRINTED PUBLICATIONS. See Defenses, 1; Foreign Laws and Publications, 1.
A printed publication, in order to defeat a patent, mast furnish such clear and
definite information as to enable a skilled person, beyond any reasonable doubt,
by following them, without aid from anything not known when they were
made, to construct an apparatus like that patented. Bignall v. Harvey et al.,
671.

*

PRIORITY OF INVENTION. See Abandoned Experiments; Bar to a Patent, 1; Con-
struction of Claims; Decree of the Supreme Court of the District of Columbia, 1; De-
fenses, 1, 2; Diligence; Equivalents; Estoppel, 1; Examiners-in-Chief, 1; Interfer-
ence, 21, 22, 23; Invention, 12; Joint Inventors, 1; Original Inventor; Patents, 18;
Practice in the Courts, 21; Practice in the Patent Office, 16, 19; Resumption, 3.
1. It may be that an affidavit setting forth, under the rules, that the inventor has
obtained for his invention a foreign patent therein designated will estop the

PRIORITY OF INVENTION-Continued.

applicant from claiming, as against the public, an earlier foreign patent, but
it cannot estop the office from referring to such earlier patent as a ground for
refusing an award of priority or the grant of a patent to another applicant.
Ex parte Nagel et al., 17.

2. Drawings made by an applicant which indicate the invention in controversy,
but do not show all its parts nor demonstrate its capability of use, not sufficient
to defeat a patentee who was subsequent to conceive the invention, but who
first made and successfully operated the same. Hunt v. King, 22.

3. Priority of invention, under Rule 107, is determined prima facie as between two
original applications by the dates of filing the respective applications; as be-
tween an original pending application and one or more patents by the dates
of filing the pending application and the applications on which the patents
were granted; as between a pending reissue application and one or more un-
expired patents by the dates of filing the original application for the patent of
which a reissue is asked and the applications on which the other patents were
granted. Booth v. Lyman et al., 62.

4. A prior patent or publication to anticipate a patent must appear in the descrip-
tion to embody substantially the same organized mechanism, operating sub-
stantially in the same manner, as that described in the patent claimed to have
been anticipated. *Gottfried et al. v. The Phillip Best Brewing Company et al., 319.
5. To justify the court in overthrowing a patent granted for what appears to be a
new and useful invention or improvement, on the ground that the device has
been anticipated by another and earlier invention, the court should be well
satisfied by clear and credible testimony that the alleged earlier invention ac-
tually existed; that it was a perfected device capable of practical use; that it
was embodied in distinct form and carried into operation as a complete thing,
and was not of such character as to entitle it only to be regarded as an unper-
fected or abandoned experiment. *Id.

6. When the fact of the completion of an invention becomes the subject of a contest
to be established by proof, the Office cannot award priority in behalf of one
who has done nothing more than conceive the invention and file his application
for a patent as against one who before the date of such filing originated and
put the invention into successful practical use. Gardner v. Dudley, 123.
7. A description in a prior patent is no anticipation of a patent the application of
which was filed before the application of such prior patent. *Allen v. City of
New York, 481.

8. The decision of the Patent Office upon the question of priority of invention will be
binding upon a party and his privies where it appears that such party had filed
In the Patent Office an application which had been placed in interference with
the application of the original patent upon the reissue of which suit is brought,
and had received and acquiesced in an adverse judgment of priority of inven-
tion, and had disclaimed the invention at issue in the interference, which is
also that involved in the suit for infringement, and had taken out a more lim-
ited patent. *Peck, Stow & Wilcox Company v. Lindsay, Sterrett & Co., 554.
9. Such decision cannot bar the defense of prior invention by others, but the action
of the Office in granting the patent and the prima facie case made thereby should
have great weight where the matters set up in such defense were known to the
party under whose patent the defendants claim title at the time of making his
application, and that a claim was made by him notwithstanding to the inven-
tion for the infringemept of which suit is brought. *Id.

10. Although the efforts of prior unsuccessful experimenters may have suggested to
the patentee the construction which he finally adopted and perfected, and may
have been of profit to him as far as they went, his patent will not be invali-
dated thereby. *Whittlesey et al. v. Ames et al., 593.

PRIORITY OF INVENTION-Continued.

11. It is not necessary that an applicant, in order to defeat a patent, should show
that he conceived the invention and reduced the same to practice before the
time at which such invention was conceived by the patentee. McTammany, Jr,
v. Needham, 203.

PROCEEDINGS IN THE PATENT OFFICE. See Interference, 22, 23; Practice in the
Patent Office, 30; Rehearing, 3.

PROCESS. See Claims, 23; Joinder of Invention, 2.

1. Although each of the several "acts" of the "series of acts" constituting a pro-
cess may be capable of performing separately its own peculiar function, and
may be used independently of the others, yet if they all contribute in produc-
ing the final result they may be joined in a single application, and a claim
may be made to the entire process, and separate claims can also be made to
the sub-processes which go to make up the same. Ex parte McDougall, 147.
2. Where in several processes the order in which the several steps follow each is
different, as are also the final results attained, the processes cannot be said to
be modifications each of the other.

Id.

PROCESS AND PRODUCT. See Aggregation, 1, 2; Construction of Claims, 1, 2; De-
scription, 1; Infringements, 6; Joinder of Inventions, 1; Old Elements, 5.

1. Where the functions of a machine constitute a process it is as legitimate to claim
the process when performed by one as when performed by several machines;
but it is irregular to claim a process without formally describing it. Ex parte
Wintherlich, et al., 1.

2. To sustain a claim for a mechanical process the steps taken must be novel, and
some means must be described by which the process can be carried on. Ex
parte Tyne, 2.

3. The patent law protects simplicity and economy of construction as against prior
complex and expensive combinations; and although the general and abstract
effect may be analogous, if the two mechanisms produce their respective re-
sults by essentially different processes, the one being more simple and capable
of being operated with greater economy than the other, it is not anticipated
thereby. Gottfried et al. v. The Phillip Best Brewing Company et al., 319.
PROFITS. See Damages and Profits.

PROPERTY RIGHTS. See Practice in the Patent Office, 5.

1. The inchoate right of making an apparatus embodying the invention unexer-
cised at date of the grant is not property in such sense that to forbid its use by
the issue of a patent is in violation of constitutional security of property rights.
*Page, Administratrix, &c., and the Western Union Telegraph Company v. The
Holmes Burglar Alarm Telegraph Company, 345.

2. The proviso of the special act by which apparatus in existence at date of patent
grant and involving the invention might be used and sold withont liability to
patentee fully protects and preserves all that was property in the constitutional
sense at that date. *Id.

PROTEST. See Practice in the Patent Office, 3.

PUBLIC USE. See Defenses, 6; Designs, 1.

PUBLIC USE AND SALE. See Abandonment, 12; Bill of Review, 1; Defenses, 6; De-
signs, 1; Patents, 9; Practice in the Patent Office, 2.

1. Sales in the usual course of business, whether absolute or conditional, if they
are sales of the patented thing, work a forfeiture of the invention if occurring
more than two years prior to the filing of an application. A single sale is as
effectual for the purpose as a hundred sales. *Henry v. The Francestown Soap-
stone Company, 308.

2. The mere fact that some of the sales were conditional-i. e., that the articles
were to be returned if they were not satisfactory to the buyers-does not,

PUBLIC USE AND SALE-Continued.

without further explanation, prove that the articles were experimental. It
may show that the purchaser had doubts, but does not prove that the seller
had any.

*Id.

3. The thing sold, to defeat the patent, need not have been perfect in the mechani-
cal sense; it is sufficient if it embodied the completed invention in a form which
would be operative. *Id.

4. Neither filing the model nor writing the paper commonly called an "applica-
cation" gives the date of the application from which the two years is to be
reckoned. *Id.

5. As the law seeks to encourage inventors to make known their inventions and
to discourage an extension of the monopoly beyond the statutory period and
because of the difficulty in determining the amount of knowledge derived from
the exhibition, publication, and use of an invention, it has always been held
that where the public have had means of knowledge of an invention they have
had knowledge of the same. *Perkins v. Nashua Card and Glazed Paper Com-
pany, 491.

6. To establish the fact of public use actual knowledge of the invention need not
have been derived by any one interested to practice it, but it is enough that
any one or more persons, not under pledge of secrecy saw the invention, or
even might have seen it if they had used their opportunities, provided it was
in fact practiced in the ordinary way after being completed. *Id.

7. Where there has been no pledge to secrecy the visitors and workmen at a factory
must be held to be either part of the public or persons from whom the public
may acquire the art without breach of trust. *Id.

8. Doubted, whether a pledge of secrecy exacted of a number of workmen who had
nothing to do with the machine in question and had an opportunity to ex-
amine it would make the use a secret one. '*Id.

9. By the provision of the act of 1836, section 15, it was only public use or sale
with the consent and allowance of a patentee before the application for a pat-
ent that would defeat the patent. The act of 1839, section 7, did not change
the character of the public use or sale that would defeat a patent, but provided
that no patent should be held invalid by reason of them unless "such pur-
chase, sale, or prior use has been for more than two years prior to such appli-
cation for patent." *Campbell v. James, 633.

REDUCTION TO PRACTICE. See Affidavits, 2; Conception of an Invention, 1, 2;

Diligence, 7; Evidence, 2; Invention, 1, 2, 6; Priority of Invention, 2.

1. Applications diligently prosecuted evince a faith on the part of the inventor in
the practicability of the invention equal to that which would follow from a
reduction of the same to practical form, and the latter is not a condition called
for in the statute. Huntley et al. v. Smith, 182.

2. The right of the party subsequent to reduce the invention to practice is depend-
ent upon the fact that he was first to conceive the invention and was using
reasonable diligence. Dickson v. Kinsman, 211.

REFERENCES. See Practice in the Patent Office, 14, 16.

REHEARING. See Motions, 1; Practice in the Courts, 7.

1. An application to reopen case for further hearing and to amend answer, the
petition thereof appearing defective in the particulars enumerated, denied ;
but conditional leave granted, for reasons stated, to amend defective petition
and to use certain of the affidavits and exhibits accompanying the same.
*Allis et al. v. Stowell, 611.

2. On a motion for rehearing the question of fact to be inquired into is whether
the findings of fact in the former decision are either wholly unsupported by
or clearly in conflict with the evidence. Gardner v. Dudley, 177.