By these authorities and by all the authorities it is conceded that not every change or improvement is patentable invention and that the merit of the exercise of the inventive faculty must be refused to such things as are plainly within the scope of mechanical ingenuity.

In denying this petition for a rehearing it may be well to repeat what the court said in the case of Hien v. Pungs, (post,-; 78 O. G., 484,) which applies to petitions for rehearing in this Office:

Counsel in this court seem frequently to regard it as their duty to file motions for a rehearing, which the present motion virtually is, just as they file motions for a new trial in a nisi prius court. Counsel should not regard themselves under obligation to file such motions. While there are undoubtedly cases in which, from their great importance or the novel or doubtful character of the questions involved, rehearing may 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. The petition for rehearing is denied.

CASLER et al. v. EDISON.

Decided July 31, 1897.

80 O. G., 966.

PUBLIC USE-DATE OF CLAIM-NEW MATTER-APPEAL TO THE EXAMINERS-IN-CHIEF. The question as to whether a claim for a device different from that originally claimed may be introduced into a case more than two years after the device covered by the later claim has been in public use is a question of new matter which goes to the merits and is appealable in the first instance to the Examinersin-Chief.

PETITION TO INSTITUTE PUBLIC-USE PROCEEDINGS.

IN THE MATTER of the petition of H. N. Marvin to institute publicuse proceedings for the purpose of preventing the issue of a patent to Thomas A. Edison on an application, Serial No. 403,534, filed August 24, 1891, for an improvement in kinetoscopes.

Messrs. E. M. Marble & Sons for Casler et al.

Messrs. Dyer & Driscoll and Mr. Frank L. Dyer for Edison.

BUTTERWORTH, Commissioner:

This is a petition by H. N. Marvin, second vice-president of the Mutoscope Company, assignee of the invention set forth in an application of Herman Casler, filed February 26, 1896, Serial No. 580,811, praying that the Commissioner of Patents make an order authorizing the petitioner to take depositions of witnesses to prove that the apparatus described and claimed in the application of Thomas A. Edison, filed

August 24, 1891, Serial No. 403,534, was in public use for more than two years prior to the date of making any claim for said apparatus in this application.

The object of the public-use proceeding prayed for is to show that Edison has no right to make any claim based upon the apparatus described in said application by reason of public use of said apparatus for more than two years prior to the amendment embodying claims for the apparatus in this application.

On August 24, 1891, Edison filed in the Patent Office three applications relating to the subject of taking and exhibiting photographs. One of these applications, Serial No. 403,536, for a method and apparatus for reproducing pictures, became a patent. Another, Serial No. 403,535, for apparatus for taking photographs, became abandoned sometime in 1894 by failure to prosecute the same for more than two years after the last official action in 1892. The third case, and the one under consideration, Serial No. 403,534, was prosecuted to allowance, and on March 2, 1897, was put in interference with the application of Casler above referred to. The claims included in this interference are for an apparatus, and were entered in the case by amendment of December 28, 1896, the case having been amended April 18, 1896, by substitute specification describing and claiming the apparatus, prior to this date the case having been confined to a method. This interference was on March 26, 1897, decided in favor of Edison by reason of Casler's failure to overcome the prima facie case made against him by the date of filing of Edison's application. On April 15, 1897, Casler moved to dissolve the interference, and on May 21, 1897, the Primary Examiner granted the motion. The deci sion of March 26, 1897, was then vacated and set aside and the interference dissolved. On June 24, 1897, the petition under consideration was filed.

It is admitted on behalf of Edison that the apparatus shown, described, and now claimed in this application had been in public use for more than two years prior to making claim in this application for said apparatus, and the petition of Marvin might therefore be dismissed without further comment were it not for the fact that the petition has raised the question whether the claims now pending in this application of Edison's are not for an entirely different invention from that originally made in this application, and, as there has been more than two years' public use prior to the making of said claims, Edison has no right to a patent on said claims in this application. Several decisions have been cited by Marvin to support this contention, which decisions it is unnecessary to review here. Granting that Marvin's contention is correct and that the decisions bear him out in his contention, yet the question involved is one of new matter relating to the merits of the invention, which should be passed upon in the first instance by the Primary Examiner and the Examiners-in-Chief, and should not be taken up by the Commissioner until it comes regularly before him on appeal from the Examiners-in-Chief.

Furthermore, the interference between Edison and Casler has been dissolved on motion of Casler and Edison's case is now ex parte, and so far as the question as to whether or not Edison changed the invention after filing his application, whether or not the present claims constitute a departure from his original invention, or whether or not Edison has a right to make the claims is under the well-settled practice of the Office an ex parte question on which Edison alone has the right to be heard.

The petition presented by Marvin is denied.

EX PARTE MCELROY.

Decided August 6, 1897.

80 O. G., 1123.

1. APPLICATION BY AN EMPLOYEE OF THE PATENT OFFICE-CONSTRUCTION OF SECTION 480, REVISED STATUTES.

The obvious purpose and intent of Congress, as expressed by section 480, Revised Statutes, was and is to prevent persons employed in the Patent Office from improperly utilizing their knowledge of the inventions of others, acquired as a result of their official connection with the Patent Office, and from utilizing the opportunities they have, as a result of their employment, to become rivals or competitors of inventors whose applications they have before them for examination, or in any wise to take undue advantage of the knowledge they have acquired of pending applications in their capacity of Examiners or officials. 2. SAME-SAME.

The reason of the statute which prohibits an officer or an employee of the Patent Office from acquiring either directly or indirectly any interest in a patent issued would seem by fair intendment to prohibit him from filing an application for the interest he is not permitted to acquire. The application is the evidence of an inchoate right to a patent, and the ownership becomes complete when the patent is issued.

3. SAME-SAME.

To construe the statute to allow an employee of the Patent Office to file an application would obviously permit, if in fact it did not encourage, the very mischief the statute was clearly intended to prevent, as Examiners might make some slight improvement or modification in inventions covered by applications pending before them for examination, and file an application, change or modify it from time to time, negotiate the sale of the whole or a part interest in the invention or application, or the patent to be predicated thereon, and resign and prosecute the case and take a patent whenever such course seemed to offer greater pecuniary advantages than to remain in the Office, and thus the Office might become freighted with applications filed by Examiners or other employees in contravention of the spirit if not the strict better of the statute, and thus become a prolific source of scandal.

4. SAME-SAME-STRIKING APPLICATION from the FILES-RETURNING FEE.

An application filed by an employee of the Patent Office ordered to be stricken from the files and the fee returned, as under section 480, Revised Statutes, it is not competent for an inventor to file an application for a patent while he is such an employee. He may file his application, however, after he has severed his connection with the Office.

REFERENCE for instructions by Examiner.

VOTING-MACHINE.

Application of John Howard McElroy, No. 594,187, filed without fee February 15, 1895. Fee paid June 3, 1896.

BUTTERWORTH, Commissioner:

This case comes before me by reference of the Examiner for instructions, who reports the following facts:

The applicant, John H. McElroy, while an Assistant Examiner in this Office examining in the class of voting-machines, filed this application complete in all its parts on February 15, 1895. On June 2, 1896, he resigned his position, and on the day following paid the Government fee of $15 to secure the examination of his application, which application presents an invention claimed to be an improvement on a votingmachine for which other joint applicants had filed an application which was before Mr. McElroy for examination and action while he had charge of that class in this Office. This earlier application is still pending.

Acting under instructions, the Examiner states that on August 5, 1896, and on December 23, 1896, he rejected the claims on reference to the pending applications of other applicants, and also in view of the provisions of section 480 of the Revised Statutes, which is as follows:

All officers and employees of the Patent Office shall be incapable, during the period for which they hold their appointments, to acquire or take, directly or indireetly, except by inheritance or bequest, any right or interest in any patent issued by the Office.

A case on all fours with this was before me on February 5, 1884, (C. D., 1884, 12; 26 O. G., 637,) in which I held that in view of the statute above quoted it was not competent for an employee of the Office to file an application for a patent while he was employed in the Patent Office.

The reason for not permitting this to be done has special force in the case of an Examiner who seeks to file an application covering an improvement on an invention disclosed in some pending application of which he, as such Examiner, has charge or may have charge, and the objection derives additional force from the fact that his application, if filed, would or might be referred to the division in which he is employed as an Examiner.

In the case mentioned I directed that the application then under consideration be stricken from the files and returned to the applicant and that the fee be returned to him.

Notwithstanding this decision it seems that it is not wholly exceptional in the Office for Examiners to file applications which are properly referable for examination to the division in which they are employed. But whether an application so filed is properly referable to the division where the applicant is employed as an Examiner makes no dif ference in the conclusion I reach.

Whether the former decision was right depends upon the proper construction of section 480 of the Revised Statutes hereinbefore quoted. The question is whether the spirit and intent of the statute is intended to reach and embrace only an interest in a patent that has actually been issued.

I do not so construe the statute. To so construe it would be to defeat in a large measure, if not wholly, the obvious purpose and intention of Congress, which was and is to prevent persons employed in the Patent Office from improperly utilizing their knowledge of the inventions of others, acquired as a result of their official connection with the Patent Office, and from utilizing the opportunities they have, as a result of their employment, to become rivals or competitors of inventors whose applications they have before them for examination, or in any wise to take undue advantage of the knowledge they have acquired of pending applications in their capacity of Examiners or officials.

The statute provides what steps shall be taken in order to entitle an applicant to a patent. In a nut-shell, the application must disclose what the invention is and the mode of its operation; that the applicant believes himself to be the first inventor; that the invention has not to the best of his knowledge been in public use during a certain period, and he must clearly point out what he claims as new and patentable, etc., and if the allegations of the application are found to be true and the invention is deemed to be sufficiently useful a patent shall issue to the applicant.

The application when so filed may be said to have established for the applicant an inchoate right to a patent for the invention, and the applicant from the date of filing said application certainly has an interest in any patent that may be predicated on said application. The issuance of the patent is but the assertion or confirming of that right by formal Letters Patent.

The reason of the statute which prohibits an officer or an employee of the Patent Office from acquiring either directly or indirectly any interest in a patent issued would seem by fair intendment to prohibit him from filing an application for the interest he is not permitted to acquire. The application is the evidence of an inchoate right to a patent, and the ownership becomes complete when the patent is issued. Any other construction would obviously permit, if in fact it did not encourage, the very mischief the statute was clearly intended to prevent, as Examiners might make some slight improvement or modification in inventions covered by applications pending before them for examination and file an application, change or modify it from time to time, negotiate the sale of the whole or a part interest in the invention or application or the patent to be predicated thereon, and resign and prosecute the case and take a patent whenever such course seemed to offer greater pecuniary advantages than to remain in the Office, and thus the Office might become freighted with applications filed by