3. The rules relative to the granting of rehearings in interference cases before this
Office are those which govern the granting of new trials in the courts, and to
motions for the same diligence is a prerequisite. Wicks v. McAvoy, 190.
See Abandonment, 5; Claims, 1; Infringement, 11; Particular Patents,
(Slemmon,) 70; Patents, 21; Rules of the Office, 3; Void Patents.
1. When the original patent described a certain form of mica chimney united to a
glass base, a reissue claiming such glass base in combination with any form of
chimney-top was regarded as greatly enlarging the scope of the invention by
dropping one element from the combination and putting in its place another
not its equivalent. * Blackman et al. v. Hibbler et al., 234.
2. The statutory provision for a reissue, to correct errors resulting from inadvert-
ence, accident, or mistake, affords a remedy, not for the case in which the
applicant selects for his specific claim the wrong specific invention, whether
described or not described in his application, but for the case in which he im-
perfectly describes or claims the right invention. The remedy for an error of
the former class is to be found, not in the substitution of a second specific
invention in the patent by a reissue, but in an original patent granted on a
new application. Er parte McClintock, 41.
3. It is doubtful whether a reissue patent can be sustained in any case where it con-
tains claims that have once been formally disclaimed by the patentee or rejected
with his acquiescence, and he has consented to such rejection in order to obtain
his patent. * Leggett et al. v. Avery et al., 283.
4. In such case the rejection (omission) of the claim can in no just sense be regarded
as a matter of inadvertence or mistake, and even if it were such the applicant
should seem to be estopped from setting it up on an application for a reissue. *Id.
5. The allowance of claims once formally abandoned by the applicant in order to
get his patent through is the occasion of immense frauds upon the public, and
is to be discountenanced. * Id.
6. Where two species are described and only one claimed in an application, and
subsequently by amendment the discription of the species not claimed is inad-
vertently stricken out, its absence occasions no defect or insufficiency in the
specification, and presents no case for correction on reissue under section 4916
of the Revised Statutes. Ex parte Ewart, 78.
7. Same reissue privilege pertains to a patentee taking under a special law as under
the general law. * Page, administratrix, &c., and the Western Union Telegraph
Company v. The Holmes Burglar Alarm Telegraph Company, 345.
8. The decision of the Commissioner of Patents in granting a reissue that by reason
of an insufficient or defective specification, the original patent is inoperative
or invalid, and that such error arose from inadvertence, accident, or mistake,
and without any fraudulent or deceptive intention, conclusively establishes
the fact. * Christman et al. v. Rumsey et al., 388.
9. When the specification and drawings of the original and reissued patents
illustrate and describe the same mechanical structure, with the same mode of
operation, the reissue may lawfully contain claims to combinations of fewer
elements than were contained in the combination claimed in the original
patent. Id.
10. The suggestion in a reissue application of new uses to which the invention may
be put not objectionable as new matter, if such uses of similar structures were
known at the time of the grant of the original patent and no attempt is made
to change the form of the structure itself. Putnam v. Yerrington (9 OFFICIAL
GAZETTE, 691) cited in support. Ex parte Palmer, 129.
11. When the reissue describes only what was described in the original patent, both
as to the devices and the nature of the invention, it cannot be said that the
invention in one is different from that in the other, although the claims have
been changed and enlarged. *Sharp v. Tifft, 483.
12. Where the invention embraced by a prior patent is held not to anticipate a later
patent upon which suit is brought, a reissue of such prior patent granted after
the date of the later patent can have no effect upon the same. *The United
States Stamping Company v. King et al., 507.
13. A reissued patent has the same effect and operation in law as though it had been
originally filed in the corrected form only on the trial of actions brought on it
for causes thereafter arising, and has no such effect in any other cause or for
any other purpose. * Id.
14. The Commissioner of Patents may issue a patent for one or more of the divisions
of a reissue application, and subsequently issue a patent to the applicant for the
remaining divisions, if it be held that otherwise he is entitled to them. Ex
parte Greaves, 213.
15. Until an application for reissue is ended in all its divisions the vitality of the
original patent continues so far as required to support that portion of the
application which remains undecided.
16. It appearing that the claim of the reissued patent sued upon if so construed as
to cover the defendants' machine would be invalid as a substantial departure
from the original patent and if limited to the invention contained in such
original would not be infringed, the bill was dismissed. *Corell v. Pratt et
al., 589.
17. If the reissues of an orginal patent are for any other or substantially different
invention from that described in such original patent they are unquestionably
void; but the fact that the specifications or claims are different, the invention
or discovery remaining the same, is of no consequence. *Campbell v. James,633.
18. If a form of a device embraced in a reissued patent had not been mentioned in
the original patent it might well be said not to have formed any part of the
conception of the inventor; but if described in such original patent, although
referred to as not being so useful or desirable in the combination as another
form of such device, it might nevertheless be properly embraced by the reissued
patent. Id.
19. It is doubtless true that a reissue of a patent to a person not the owner would
not affect the title of the owner. The reissue and title should go together to
make a good title to the reissue, or, at least, the reissue should be consented
to by the true owner. *Id.
20. A reissue can only be had when the original patent is inoperative or invalid from
one of two causes-either by reason of a defective or insufficient specification
or by reason of the patentee claiming as his own invention or discovery more
than he had a right to claim as new-and even then only where the error has
arisen from inadvertence, accident, or mistake, and without any fraudulent or
deceptive intention. "Giant Powder Compuny v. California Vigorit Powder Com-
pany et al., 620.
21. The power to accept a surrender and issue new letters patent vested exclu-
sively in the Commissioner of Patents. He must judge of the sufficiency of the
original specification, whether the same is defective in any particular, whether
such defect was the result of an unintentional error, and if so to what extent
a new or additional specification should be allowed to describe correctly the
invention claimed. Id.
22. But this does not preclude the examination by the court of the original and re
issued patents to see whether or not they disclose on their face a case in which
the Commissioner has no jurisdiction to act or a case in which, by his determina-
tion, he has exceeded his jurisdiction. If so, the reissued letters patent must
fall. *Id.
23. Whenever it appears, on a comparison of the two instruments, that the original
patent is valid it is clear that the Commissioner has exceeded his jurisdiction
and the reissue is without authority of law. *Id.
24. When it appears, upon comparison, that the specification of the reissue only
differs from the original in containing an invention of broader scope, it is clear
that the original patent must be valid if the reissue would be. *Id.
25. If the original patent is valid to the extent of its claim a reissue is without au-
thority of law. *Id.
26. The Commissioner of Patents is invested by law with authority to determine
whether surrendered patents are invalid by reason of defective or insufficient
specifications or by reason of the patentee's claiming as his own invention or
discovery more than he had a right to claim as new, and whether these errors
have arisen by inadvertence, accident, or mistake, and without fraudulent in-
tention. His decision as to the existence of these perquisites is conclusive, and
not subject to review by the courts. *Ball et al. v. Langles et al., 687.
27. The Commissioner, however, has no authority to grant a reissue embracing new
matter or a broader invention than what was revealed in the original specifi-
cations, drawings, or models. *Id.
28. The question of identity of invention is to be determined by an inspection of the
two instruments. *ld.
REJECTED APPLICATIONS. See Abandoned Applications.
RES ADJUDICATA. See Examiners-in-Chief, 3.
1. The extent to which a case decided by the Commissioner is to be accepted as res
adjudicata is not determined by the words used where they are narrower than
the substance of the decision. Ex parte Pennie, 56.
RESULTS. See Claims, 23; Combinations, 2; Old Elements, 1, 5; Patents, 8; Process
and Product, 3.
In view of the decision of the United States Supreme Court, in the case of Dunbar and
Harper v. Myers and Eunson (11 OFFICIAL GAZETTE, 35), no excuse is afforded
the Patent Office for the allowance of patents for the mere carrying forward
of original patented conceptions into other structures where they perform the
same functions and accomplish the same results. Lovejoy v. Hill, 59.
REVOCATION OF POWER OF ATTORNEY. See Attorneys, 1.
RIGHT TO USE. See Construction of Statutes, 13; Licenses, 4, 5, 6, 7, 8, 9; Patents,
17.
ROYALTY. See Damages and Profits, 7.
1. Benefits derived by the defendant from the use of the plaintiff's patented inven.
tion constitute valid ground for a recovery by the plaintiff. *Sargent v. The
Yate Lock Manufacturing Company, 231.
2. The mere opinion and estimate of two witnesses may be insufficient to establish
the value of the use of the invention to the defendant. *Id.
3. The amount subsequently paid by the defendant to another patentee for the use
of a device which subserved the same purpose may afford a proper measure of
the value of the use of the plaintiff's invention to the defendant. *Id.
RULES OF THE OFFICE. See Construction of Statutes, 8; Division of Applica-
tions, 1; Examiners-in-Chief, 1, 4; Motions, 2; Practice in the Patent Office, 1, 2, 14.
1. The rules are, if possible, to be constrted as to be operative in subordination
to the statute. If incapable of such construction, they cannot be executed.
Stone v. Greaves, 23.
2. If the application of the new rules to a case which was in process of adjudication
on the 1st of January, 1880, will not place either party to an interference in a
worse attitude than he would have occupied under those rules if both applica-
tions had been filed after that date, the operation of the old rules will not be
extended to such case. Fowler et al. v. Benton, 39.
3. Rule 39 applies to reissue as well as to the original applications. Ex parte
Beck, 54.
RULES OF THE OFFICE-Continued.
4. Rule 6, as construed by circular of February 17, 1880, applies alone to personal
signatures of inventors and assignees to amendments and other actions. Ex
parte Ackerman, 131.
5. Where the rules of practice have been clearly indicated and determined there is
no reason why any officer of the bureau should fail to observe them. Brown v.
La Dow, 199.
SALE. See Injunction,7; Public Use and Sale.
SEPARATE PATENTS. See Claims, 9; Combinations, 3, 4; Practice in the Patent Office,
26; Reissues, 14, 15.
Separate patents for several parts of the same invention may be granted, al-
though the whole invention is fully described in each of them, to explain the
purpose and mode of operation of the parts covered by the claims of such pat-
ents. *McMillin et al. v. Rees et al., 476.
SERVICE OF PROCESS. See Chancery, 2.
SIGNATURES. See Rules of the Office, 4.
SOLE INVENTOR. See Original Inventor; Practice in the Patent Office,
SPECIFICATIONS. See Claims, 16, 22, 25, 26; Description, 1, 3; Infringements, 4;
Patents, 11; Practice in the Patent Office, 25, 28; Reissues, 8, 9, 24, 26, 27.
1. Where an invention was described in one portion of the specification as com-
pounded of the explosive substance nitro-glycerine and an inexplosive porous
substance, and in another portion of the specification a more detailed descrip-
tion of the porous substance was given without mentioning its inexplosive
character, Held, that the two passages are to be read together, and that the in-
vention is a compound of nitro-glycerine with an inexplosive porous substance
of the character described. * Giant Powde rCompany v. California Vigorit Pow-
SPECIFIC CLAIMS. See Claims, 1, 2, 3, 8, 9, 10, 11, 12, 15, 17, 23; Generic Claims;
Patents, 1; Practice in the Patent Office, 22; Process, 1; Reissues, 2.
STATE LAWS. See Injunction, 13; Liability, 1; Married Women, 1, 2.
STATUTES. See Construction of Statutes.
STATUTORY BAR. See Construction of Statutes, 2; Motions, 2.
1. Rule 120 provides that, upon the attention of the Commissioner being called by
the Examiner of Interferences or the Examiners-in-Chief to a statutory bar to
the grant of a patent to either party, he may suspend the interference and re-
mand the case to the Primary Examiner for the consideration of such objection.
Hedges v. Daniels, 9.
STAY OF PROCEEDINGS. See Motions, 3.
SUBSTITUTION OF MATERIAL.
1. Although it is known that both rubber and vulcanite become soft at the tem-
perature at which steam-packings are used, it does not follow that the employ-
ment of vulcanite for rubber as the skeleton of a packing is a mere substitution
of material, particularly in view of the different qualities presented by pack-
ings made by the two methods. *Clarke v. Johnson, 673.
2. In Jenkins v. Walker (1 O. G., 359) the excess of sulphur united with lead or lith-
arge to form refractory material, and in Jenkins v. Johnson the excess of sulphur
was taken up by the oxides of lead or iron in a similar manner. *Id.
SUITS FOR INFRINGEMENT. See Bill in Equity, 3, 4; Circuit Courts, 1; Construc-
tions of Statutes, 11, 12; Infringements, 9, 11; Title, 2.
TESTIMONY. See Interferences, 17 18; Practice in the Patent Office, 33.
The testimony of a witness cannot be impeached by showing his general character
founded upon particular facts rather than upon general repute and failing to
show his character for truth and veracity. Fulgham v. Westcott, 167.
TITLE. See Assignments, 8, 12, 13; Circuit Courts, 1; Patents, 19; Reissues, 19.
1. The defense that the plaintiffs' title fails because one of the parties through
whom such title is derived did not own the patent when it was surrendered by
and reissued to him was sought to be sustained by showing that a certain in
strument of writing was forged by such party by placing it before and attaching
it to the genuine execution of another and a different instrument. It appear-
ing that the parties whose assignment such instrument purported to be had
knowingly acted under the same, Held, that this ratified and confirmed the
instrument as good from the beginning. *Campbell v. James et al., 633.
2. It appearing that the conveyance was one expressly in trust, upon condition that
the plaintiff should have the sole management of the trust until a fair, just,
and reasonable settlement should be had with the United States for the use of
the invention in the postal service of the United States by the Post-Office De-
partment, Held, that as no such settlement had been made, the limitation in
the conveyance had not expired, and the right to bring suit for infringement
was in the plaintiff. Id.
1. Any person may adopt as a trade-mark and affix to a produce of his own man-
ufacture any symbol or device not previously appropriated which will distin-
guish it from articles of the same general nature manufactured or sold by
others, and thus secure to himself the benefits of increased sale by reason of
any peculiar excellence he may have given to it. The Amoskeag Manufacturing
Company v. Trainer et al., 464.
2. The symbol or device constituting the trade-mark thus becomes a sign to the
public of the origin of the goods to which it is attached and an assurance that
they are the genuine article of the original producer. * Id.
3. The object of a trade-mark is to indicate, either by its own meaning or by asso-
ciation, the origin or ownership of the article to which it is applied. * Id.
4. A right to the exclusive use of words, letters, or symbols, to indicate merely the
quality of the goods to which they are affixed, cannot be acquired. * Id.
5. Letters or figures which, by the custom of traders or the declarations of the
manufacturer of the goods to which they are attached, are only used to denote
quality are incapable of exclusive appropriation. *Id.
6. The letters A. C. A., as used by the Amoskeag Manufacturing Company, are
designed merely to indicate the quality of the goods, and do not constitute a
trade-mark.
* Id.
7. The defendants employed labels unlike the complainants, except as to the letters
A. C. A., and in consideration of such fact it was held that there was no such
imposition practiced upon the public and no such fraud perpetrated upon the
manufacturers in attempting to dispose of the goods of one as those of another
as to call for the interposition of a court of equity. *Id.
8. As a rule, geographical names cannot be allowed registration as trade-marks.
Ex parte Farnum & Co., 155.
9. Before any geographical name can be said to be registrable it must clearly appear
that the place of that name is such a one that the word will be understood by
the general purchasing public as primarily fanciful, and that manufacturers of
like goods at such place cannot so mark their wares and claim the protection
of our laws. Id.
10. The essential features of a trade-mark are those only which serve in whole or in
part to distinguish the goods of the party by whom such mark is adopted, and
it is not proper that anything should be described as essential which the courts
would hold otherwise. Id.
11. Words calculated to deceive the public as to the place of manufacture should
not be allowed registration. Id.
12. A person has no right to mark his goods with any words or terms indicating that
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