Counsel for defendant, therefore, strenuously contends that there was no patentable novelty in the claimed combination, or in the resultant operation. He contends that in the light of the prior art and of the disclaimer by the patentee, there is nothing more than an aggregation of the old and well-known push devices and the quick-pitch screw, illustrated by Hoerle and described by Rhind. He further contends that those prior patents which show the result of slow screw and quick thrust by means of a ratchet and pinion would, if later, infringe the patent in suit, and therefore anticipate it, under the familiar rule.

Complainant contends, as to these prior patents, that it does not appear they were anything more than mere paper patents; that there is no suggestion that they were capable of successful practical operation, and that in none of them is shown the conception of any combination in which an idler-screw tube is so constructed as to provide the advantages of the screw adjustment and direct thrust in one combination.

It has not been shown that the prior screw devices were commercially successful, or that they were intended to be so operated as to combine the screw adjustment and quick thrust; but I do not understand that the law necessarily imposes upon a defendant who relies upon the prior art to limit the scope of a patent the burden of proving that prior patents were useful, operative, or commercially successful, or that they stated all the undeveloped possibilities of the invention therein disclosed. It is not necessary that the patentee should have conceived the idea of all the uses of which his invention is capable. He is entitled to all the beneficial uses embraced within the scope of his invention. (Scovill Mfg. Co. v. Cary, 147 U. S., 635; Dixon Woods Co. v. Pfeiffer, 55 Fed. Rep., 390; Johns Mfg. Co. v. Robertson, 77 Fed. Rep., 985.) Nor is the mere fact that a patented device is limited in operation or application alone sufficient to destroy its relevancy in a consideration of the prior art. The development of new industries, the discovery of new products, the adaptation of old materials to new uses may suggest improvements upon devices of the prior art, the principles of which are already sufficiently disclosed, although not fully developed because not demanded by the prior existing conditions. In the application of this doctrine patents have been held void for improved stamps required by new internal revenue laws, for new adaptations of gate-guards for elevated railways, new forms of bicycle bells, pedals, and rubber tires.

It is well settled that mere paper patents may negative patentable novelty, provided they sufficiently disclose the principles of the alleged invention, or provided the alleged objections could be obviated by mere mechanical skill. (Pickering v. McCullough, C. D., 1882, 28; 21 O. G., 73; 104 U. S., 310.)

The very fact that a machine is patented is some evidence of its operativeness as well as of its utility. (Dashiell v. Grosvenor, C. D., 1896, 329; 75 O. G., 507; 162 U. S., 125, 432.)

When, therefore, a prior patent appears upon its face to be relevant to the consideration of the prior art, I think the later inventor should show either that such device was not useful or that it did not so disclose the principle of the later patent as to deprive it of its claim of patentable novelty.

Complainant has failed to show that these devices either lacked utility or were incapable of successful practical operation.

Two illustrative exhibits were produced upon final hearing, one by complainant, known as the "Rhind" lamp, the other by defendant, known as the "Hoerle-Davis" lamp. The Rhind lamp is constructed substantially in accordance with the specification of the Rhind patent. Its operation is practically identical with that of the patented apparatus as stated in the specification:

The wick may be raised and lowered with care and accuracy by simply turning the operating-nut, while when it is desired to lift the wick very quickly or push it down suddenly, the coupler is taken hold of and a direct upward or downward thrust given the draw-bar and stem, which will at once respond to such movement owing to the coarseness of the threads, etc.

The only material difference between the Hoerle-Davis patents and the Hoerle-Davis lamp is that the screw on the latter is a somewhat quicker pitch than that shown in the Davis patent.

I fail to find any inventive conception or patentable novelty in the patented construction or operation; but even if the patent, as limited to the precise construction described and claimed, could be sustained, it is not infringed by defendant.

The construction of the defendant's device is best shown by a reference to the Davis patent already considered and by a comparison of its construction with that of the patent in suit. Each of these constructions has the wick-band, the draw-bar attached thereto, the operating-sleeve by which the screw-tube is suspended in the lamp-fount, and the tube with the central perforated operating-nut located at its upper end. As already stated, the screw of the Davis patent does not have a quick pitch, such as is described and shown in the Rhiud specification and drawing. While the defendant's device does have such a quick-pitch screw, it does not have a stem "provided at its lower end with coarse screw-threads" and a tube

constructed with internal screw-threads corresponding in pitch to the threads of the stem aforesaid.

Nor does it have any coupling connecting the upper end of the stem to the upper end of the draw-bar for communicating movement from the operating-stem to the draw-bar. That the patentee in the claim in suit used the word "connected," in the ordinary sense of fastening by means of an intervening coupler, appears from the associated wordsa stem connected at its upper end with the upper end of said draw-baras well as from the specification, drawings, and other claims of said patent describing, illustrating, and specifically covering said coupler,

and is further shown by another patent taken out on the same day by this patentee wherein he described, illustrated, and claimed an integral draw-bar and stem. In the defendant's device such a single piece of wire fulfils the functions of draw-bar and stem. Defendant's screwtube device is like that shown in the Rhind and illustrated in the Davis patents. An arm extends laterally from the wick-holder and is provided with a non-rotatable collar or sleeve so threaded as to operate in the external threads of the screw-tube.

In this connection I have not overlooked the contention of complainant for the application of the well-settled principle that a mere reversal or immaterial change of parts will not avoid a charge of infringement. (Cléret v. Rehfuss, C. D., 1896, 459; 76 O. G., 336; 75 Fed. Rep., 657; Devlin v. Paynter, C. D., 1894, 656; 69 O. G., 1365; 64 Fed. Rep., 390.)

If this patent covered a primary invention, the broad range permitted to equivalents would embrace the device of defendant. But the only consideration for its grant was a modification of old devices. The patentee chose to confine himself to a claim for a stem connected at its upper end with said bar and provided at its lower end with coarse screw-threads. The defendant does not use such a stem, connected at its upper end with said bar, but a solid bar. In its lamp it has availed itself, as it had a right to do, of a construction well known in the prior art. The Rhind patent and the illustrative exhibit of the Rhind lamp show substantially the defendant's construction, except the old and well-known draw-bar. When Homan, in differentiating his improvement from Rhind, Davis, and Hoerle, secured a patent therefor, the state of the art was such that he could only claim the exact construction which he selected as the embodiment of his improvement or its ordinary equivalent. While I do not consider the evidence afforded by dismembering elements of a combination as relevant generally, yet in this case I think it may be material upon the contention of mere immaterial transportation of parts. If the complainant's stem and draw-bar be disconnected at the upper end, the device is inoperative, while if thus disconnected in defendant's device it continues to operate as before.

In view of the fact that complainant insisted that one of the essentials to his patent was this connection at the upper end, with which the defendant may dispense, and which at best he uses, not as essential to its construction, but as a convenient guide to its operation, I think infringement is not shown.

Let a decree be entered dismissing the bill.

[Court of Appeals of the District of Columbia.]

SEYMOUR, COMMISSIONER OF PATENTS, v. NELSON.

Decided April 30, 1897.

79 O. G., 1522.

1. MANDAMUS-Abatement—Retirement of Public Officer.

A petition for a writ of mandamus to a public officer of the United States abates by reason of his retirement from office as well after judgment and pending an appeal therefrom as before.

2. SAME-CAUSE ON APPEAL-REVERSAL OF JUDGMENT BELOW-DISMISSAL OF APPEAL FOR WANT OF PROPER PARTIES.

Where pending an appeal on a petition for a writ of mandamus against a public officer the officer retires, Held that the appeal will not be dismissed; but the judgment of the court below will be reversed and the cause remanded to said court with directions to dismiss the suit for want of proper parties. The result is the same whether the judgment appealed from is in favor of or against the officer.

Mr. W. A. Megrath for the appellant.

Mr. Chester Bradford and Mr. E. W. Bradford for the appellee.

SHEPARD, J.:

This is an appeal taken by John S. Seymour from a judgment of the Supreme Court of the District of Columbia awarding a writ of mandamus to compel the performance of an official act by him as Commissioner of Patents. Pending this appeal his term of office has expired and he has been succeeded by the Hon. Benjamin Butterworth.

The appellee brings these facts to the notice of the court and moves that the appeal be dismissed at the appellant's cost. The doctrine of the Supreme Court of the United States established by a uniform series of decisions is that a petition for a writ of mandamus to a public officer of the United States abates by reason of his retirement from office as well after judgment and pending an appeal therefrom as before. (Warner Valley Stock Co. v. Hoke Smith, Secy., &c., 165 U. S., 28.) And the uniform rule of that Court has been not to dismiss the appeal in such cases, but to reverse the judgment and remand the cause to the court in which it originated, with direction to dismiss the suit for the want of proper parties. The result is the same whether the judgment (or the decree in event the proceeding be by injunction instead of mandamus) that has been appealed from was in favor of or against the officer. (Warner Valley Stock Co. v. Smith, supra; Hoke Smith, Secy., dc., v. Reynolds, present term Supreme Court U. S.)

In obedience to the rule established by the foregoing cases we cannot grant the motion to dismiss the appeal, but are compelled to reverse the judgment and remand the cause, with direction to dismiss the petition, with costs, for the want of proper parties. It is so ordered. Reversed and remanded.

[Supreme Court of the United States.]

ALLEN v. Culp.

Decided April 19, 1897

79 O. G., 1523.

1. REISSUE-SURRENDER OF ORIGINAL PATENT-CONSTRUCTION OF STATUTE. When an application for a reissue of a patent is made, the original patent continues to be a valid patent until it is reissued, when it becomes inoperative; if a reissue be refused, the surrender never takes effect, and the patent stands as if no application had ever been made for a reissue.

2. SAME-SAME—Inoperative and Invalid, NOT NECESSARILY FOR ALL PURPOSES. While it is true that in making his surrender the patentee declares that his patent is inoperative and invalid, yet this is not necessarily so for all purposes, but for the purpose for which he desires to have it reissued. Such a patent might be inoperative and invalid as against certain persons who had pirated the underlying principle of the patent and avoided infringing the exact language of the claims and yet be perfectly valid as against others who were making machines clearly covered by their language.

3. SAME

REJECTION-STANDING OF ORIGINAL PATENT.

If the application for a reissue be rejected, the original patent stands precisely as though a reissue had never been applied for, unless, at least, the reissue be refused upon some ground equally affecting the original patent.

IN ERROR to the Court of Common Pleas No. 4 for the County of Philadelphia, State of Pennsylvania.

Mr. Hector T. Fenton for the plaintiff in error.

Mr. Geo. Bradford Carr for the defendant in error.

STATEMENT OF THE CASE.

This was an action originally instituted in the Court of Common Pleas for the County of Philadelphia by the defendant in error, Andrew J. Culp, against Alonzo W. Allen, to recover half of the profits made by the defendant from a certain patent for a cop and bobbin winding machine, granted jointly to Culp and Allen, and subsequently assigned to the defendant, Allen.

The alleged consideration for the transfer of plaintiff's half interest was a promise on the part of the defendant that he would divide with him the profits made by the sale of the device, of which they were the joint owners, and also all damages which might be recovered against infringers of the patent; the principal object of the transfer being to enable the defendant to have title thereto for the purpose of prosecuting these infringers. It seems that in November, 1892, the defendant was advised by his counsel to apply for a reissue, in order to more fully protect the invention; and he thereupon obtained the signature of the plaintiff, his co-inventor, to the application, by renewing the promises he had already made. Both parties joined in the surrender of their patents, and in the application for a reissue, which, however, was rejected on the ground of unreasonable delay, and also upon the fur