The numerous affidavits which have been filed relate to the treatment described in another application and have no bearing on the present case, and in any event affidavits of the patients would not demonstrate the operativeness of the apparatus as an electrical device.

On appeal to the Examiners-in-Chief this rejection was affirmed on March 27, 1888. On appeal to the Commissioner the decision of the Examiners-in-Chief was affirmed by the Assistant Commissioner on March 24, 1892. On February 27, 1893, a motion was made for a rehearing of the decision of the Assistant Commissioner, one of the grounds for the motion being

that certain affidavits in the case showing the invention to be operative appear to have been overlooked or not considered in determining the question on appeal.

Accompanying the motion was a proposed amendment canceling the appealed claims and substituting therefor two others, the first of which was for

the method of artificially producing beneficial influence in living organisms, etc.and the other for

the clinical instrument comprising a contact-plate, etc.

On March 1, 1893, the Commissioner granted the motion and reversed the decision of the Examiners-in-Chief, on condition that all the claims be canceled and that the second proposed claim be substituted therefor. On March 8, 1893, an amendment was filed to comply with this decision of the Commissioner. On March 18, 1893, the Examiner called the Commissioner's attention to certain patents and asked if he was at liberty to reject the claim upon these references. On March 22, 1893, the Commissioner instructed the Examiner that

the references cited herein have been examined and are held not to anticipate the claim heretofore approved by the Commissioner.

Thereupon the application was, on March 25, 1893, passed to issue on the claim, which reads as follows:

The clinical instrument comprising a contact plate or member adapted to be attached to the body to be treated, a second plate or member adapted to be placed in or under the influence of a temperature higher or lower than the body to which the other plate is attached, or under the influence of matter which is electropositive or electronegative to the body having said other plate or member attached to it, and a flexible conducting or transmitting medium connecting said two plates or members, said medium being of a relatively small size to said plates or members and of a length sufficient to permit said two plates or members to be placed at such distances apart that the body having one plate or member attached there to will be removed beyond the range or influence transmitted by direct radiation, conduction, or contact from said other plate or member, substantially as described.

On July 10, 1893, the Commissioner gave instructions that

this case is withdrawn from the issue and remanded to the Primary Examiner for further consideration and to enable him to cite to the applicant the references mentioned in his letter to the Commissioner of March 18, 1893. For this purpose the order of the Commissioner, dated March 22, 1893, is suspended.

15377-3

On December 12, 1893, the Assistant Commissioner rendered the following decision:

The above entitled case has been brought to my attention by the Primary Exam. iner, it having been rejected by him and allowed by the Commissioner.

At the hearing of this and kindred applications by the same inventor various affidavits were offered and much evidence adduced to show that this and similar devices had proved beneficial in cases of illness.

While I do not doubt the sincerity of the persons who made the affidavits, I feel that I could not conscientiously sign the patent, if it were allowed and offered for signature.

The Examiner is therefore directed to refuse to allow the application.

On February 2, 1895, the Assistant Commissioner rendered a decision on a petition for rehearing and rejected the claim on the ground of inoperativeness.

Again, on March 22, 1897, a decision was rendered on a request for a rehearing. The language of this decision is as follows:

After a careful reexamination and consideration of the arguments and evidence presented, my conclusion is unchanged; that is, that the invention is not "sufficiently useful and important" to warrant the grant of a patent. (Section 4892 of the Revised Statutes.)

The novelty of the apparatus is admitted, and the affidavits and testimonials presented, together with unsolicited reports that have come to me, leave no doubt in my mind that the use of the apparatus has in some way benefited some of the persons who have tried it. I am still of the opinion, however, that the favorable results obtained were due largely, if not wholly, to the imagination of the patient. It is a common practice among physicians to administer bread pills in certain cases, and the wearing of an iron ring upon the finger or the carrying of a potato in the pocket is regarded by hundreds of people as a certain cure for rheumatism. Scores of similar remedies could be referred to, all of which depend for their efficacy upon the power of the imagination. The present application, in my opinion, is of this description. I could not conscientiously sign a patent for the apparatus in question. The former decision is adhered to.

Among other reasons given by the applicant for rehearing the former decisions are these:

First. The Assistant Commissioner erred in said decision in stating that after the examination and consideration of the arguments and evidence presented his opinion was unchanged; "that is, that the invention is not 'sufficiently useful and important' to warrant the grant of a patent," whereas in all previous decisions of the said Assistant Commissioner of Patents the ground of objection was not that the invention was not sufficiently useful and important, but, on the contrary, was on the ground that the invention was inoperative.

Fourth. The admissions of the Assistant Commissioner of Patents in his said decision of March 22, 1897, that the apparatus covered in this application is novel and undoubtedly useful and beneficial constitute in themselves the very best reason for an allowance of the application and the issuance of a patent thereon.

Fifth. The opinion of the Assistant Commissioner of Patents that the favorable results which he admits were obtained by the applicant's apparatus are due largely, if not wholly, to the imagination of the patient, are unfounded and are given no basis in the decision, either in reason or evidence, and, even if it had basis, it is immaterial.

From the history of this case I take it that there is no question about the novelty of the device claimed; that it has been useful to some extent, and that it has benefited at least some of the persons who have used it. The sole ground for withholding the case from the issue-files seems to be that the device is not sufficiently useful and important under the statute to warrant the granting of a patent.

It seems to be well settled by all the authorities that the degree of utility of a device is unimportant in determining whether the device be patentable. (Rob. on Pats., sec. 341, and cases cited in note thereto.) Judge Treat, in the case of Westlake v. Carter (4 O. G., 636, 637), said:

If the invention is not frivolous or prejudicial to the public, and has any degree of usefulness-no matter how slight the practical utility-then, within the meaning of the law, it is useful, and consequently not void for lack of utility.

The degree of utility is not a question for the Patent Office to arbitrarily determine. The mere assertion of theorists that they do not believe that a device possesses utility cannot prevail against the evidence of reliable witnesses who have by tests demonstrated that it does possess such utility as is claimed for it. Where there is doubt as to the utility of a device, the Office may resort to evidence to remove that doubt. There seems to be abundance of evidence in this case that the device here claimed is useful for the purpose set forth in the specification. Many affidavits of users who have been beneficially treated by the device under consideration and of reputable physicians setting forth that they know that the device in question is useful as a curative agent in different diseases are before me. In the face of this evidence to say that the device is worthless or not sufficiently useful as a curative agent is not defensible.

To the reason for refusing a patent on the ground that the results obtained are due largely, if not wholly, to the imagination of the patient reference may be made to what was said in the case of ex parte Kram (26 MS. Deo., 424, 428) where the same question was under consideration:

If some scientist will devise some way or means of working on the imagination so as to enre physical disease, he will be a public benefactor, and this Office will be prompt to issue a patent to protect him in the enjoyment of his invention or discovery, if it has the element of novelty. For we may be thus able to dispense, in part at least, with the nauseating decoctions that are now presented to our lips whenever we are ailing.

It is thought that this claimant is justly entitled to a patent under the law, and the decisions heretofore rendered denying him a patent are set aside.

EX PARTE ATWATER.

Decided July 31, 1897.

80 O. G., 965.

REHEARINGS-Petitions for, Condemned.

While there are undoubtedly cases in which, from their great importance or the novel or doubtful character of the questions involved, rehearing my well be had and may properly be sought, yet it should be understood that the court always seeks in the first instance to bring the best judgment which it possesses, aided by all the lights which counsel give it in their briefs and arguments, to bear upon the causes submitted to it for its determination. If in such determination it commits error, the mistake is one of judgment, to which all human action is liable; but it is expedient in the interests of justice that the determination when made should have the element of stability. (Quoting Hien v. Pungs, post,—; 78 O. G., 484.)

PETITION for rehearing.

PHOTOGRAPHIC CAMERA.

Application of John L. Atwater filed March 16, 1886, No. 583,391.

Messrs. Munday, Erarts & Adcock for the applicant.

BUTTERWORTH, Commissioner:

This is a petition for a rehearing of the decision of the Commissioner rendered June 26, 1897.

The alleged ground for this petition is that the decision was based upon an error of fact in that it admits that there is nowhere shown in the prior art the material used by appellant in the making of the changing-sleeve, yet the decision declares that what appellant has done was merely to select an old material and use it for his purpose.

Such a strained and unreasonable construction is not warranted by the decision. The decision plainly states that the patent to Pearce discloses that it is not new to coat fabric on both sides with rubber. This being so, to use such fabric for a changing-cloth of a camera in place of other material is not invention.

Appellant now argues that because he

actually made the invention before he knew the material was in existence, and, furthur, that before he could get the material it had to be made specially for him— he is entitled to a patent. As to this it is only necessary to quote the following from appellant's brief on appeal, filed June 22, 1897, where it is stated that

it is however immaterial to inquire whether it be an old fabric or not; because the only proper inquiry here is whether the changing-sleeve made of such fabric is or is not a mere selection, substitution or double use of the fabric.

Tested by this I was of the opinion when making the decision complained of, and am still of the opinion, that appellant had not made an invention. Whether or not appellant knew that the material was old

before he had the idea of using it for his particular purpose or whether or not he had to have the material made expressly for him is of no moment in deciding the question of patentability. Pearce disclosed enough to show that the cloth was old or that there would be no invention in making such cloth. The patents to Aldrich, No. 283,057, dated August 14, 1883, and Allerton, No. 52,124, dated January 23, 1866, are now called to appellant's attention to show that fabric coated on both sides with rubber was known and patented years before appellant thought of using it. Furthermore, on inquiring at a rubber-store near this Office I have been informed that thin flexible fabric coated on both sides with rubber is a stock article and can be readily obtained.

Appellant seems to have fallen into the error that every change is subject for a patent. The statute, however, requires that there must be the exercise of the inventive faculty before a patent may issue.

To grant a single party a monopoly of every slight advance made, except where the exercise of invention somewhat above ordinary mechanical or engineering skill is distinctly shown, is unjust in principle and injurious in its consequences. (Atlantic Works v. Brady, C. D., 1883, 214; 23 O. G., 1330; 107 U. S., 192, 199.)

It is not sufficient that the patentee may have produced a better and more merchantable article, but there must have been something novel in the means which were employed in its production. What constitutes patentability in this class of cases is clearly expressed by the Supreme Court in the recent case of Knapp v. Moras (C. D., 1893, 651; 65 O. G., 1593; 150 U. S., 221; 14 Sup. Ct. 81.) On page 657, C. D., 1893; 228, 150 U. S., and 81, 14 Sup. Ct. the Court says: "Tested by these authorities the validity of the patent in question must be ascertained, not from a consideration of the purposes sought to be accomplished, but of the means pointed out for the attainment thereof, and if such means, adapted to effect the desired results, do not involve invention, they can derive no aid or support from the end which was sought to be secured. All that Hall did was to adapt the application of old devices to a new use, and this involved hardly more than mechanical skill, as was ruled in Aron v. Railway Co., (C. D., 1889, 650; 49 O. G., 1365; 132 U. S., 85; 10 Sup. Ct., 24,) where it was said: 'The same device employed by him (the patentee) existed in earlier patents. All that he did was to adapt them to the special purpose to which he contemplated their application, by making modifications which did not require invention, but only the exercise of ordinary mechanical skill, and his rights to a patent must rest upon the novelty of the means he contrived to carry his idea into practical application.'" (Andrews et al. v. Thum et al., C. D., 1895, 507; 72 O. G., 899.)

It is not every improvement produced by the adaptation or substitution of one well-known material for another in manufactures that will entitle the party making the improvement to a patent. There must be an invention or discovery of that which is new and useful within the meaning of the patent law to entitle a party to a patent. Mere improvement is not all that is necessary. (Cheneau v. Commissioner of Patents, C. D., 1895, 188; 70 O. G., 924.)

Appellant's alleged improvement involves

only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice, and is in no sense the creative work of that inventive faculty which it is the purpose of the Constitution and the patent laws to encourage and reward. (Hollister v. Benedict Mfg. Co., 113 U. S., 59, 73; Thompson v. Boisselier, C. D., 1885, 224; 31 O. G., 377; 114 U. S., 1, 13; Burt v. Evory, C. D., 1890, 245; 50 O. G., 1294; 133 U. S., 349, 358.)