CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued. properly be limited to the description or effect of such mechanism. The clear meaning of a claim to "an excavator having inward delivery" or "with inward delivery through itself" is an excavator so constructed as to produce an inward delivery. * Id.

24. PIONEER INVENTION-Joinder of GENERIC AND SPECIFIC CLAIMS IN SAME PATENT-A pioneer inventor is entitled in his patent to a generic claim, under which will be included every species of the genus, and in addition thereto he is entitled in the same patent to make specific claims for one or more species of the genus. * Id.

25. INFRINGEMENT-DEFECT IN ORIGINAL MACHINE-The fact that the first machine built by a patentee whose patent is sued on was not sucessful in operation is unimportant and no reason for denying him relief, especially where his subsequent machines have proved sucessful in practice. * Id. 26. PROCESS-FUNCTION OF MACHINE--MANUAL OPERATION-Where, except for the described functions of a machine, there is nothing stated in a claim save the manual transposition or turning of the articles undergoing operation, so that a fresh part may be treated, such transposition, superadded to the function of the machine, does not make the process which the patent law contemplates. *Gindorff et al. v. Deering & Co. et al., 577.

27. Two PATENTS-EARLIER PATENT FOR IMPROVEMENTS-VALIDITY-Where a patent for mere improvements was granted during the pendency of an earlier application for the broad invention, Held that a patent subsequently granted on the earlier application is not invalid, though the elements covered by its claims were shown and described but not claimed in the earlier patent. (Cases of Suffolk v. Hayden, 3 Wall., 315, and Barbed Wire Patent, C. D., 1892, 299; 58 O. G., 1555; 143 U. S., 280, discussed.) * Thomson-Houston Electric Company v. Ohio Brass Company et al., 579.

28. SAME-SAME-EXTENSION OF MONOPOLY-INFRINGEMENT

DAMAGES-Where

a patent for an improvement issues while the application for the broad invention is pending in the Patent Office, Held that the monopoly in the broad invention is not extended. The patent for the improvement expires in seventeen years. After that any one may use the improvement without infringing the patent issued upon it. If he uses the improvement without a license to use the main invention, he is liable for the infringement not of the patent for the improvement, but of the patent for the main invention, and in estimating the damages for the same the value of the main invention, and not that of the improvement, would be the basis for estimating the damages. Id.

29. SAME-SAME-SAME-PATENTS ISSUING TO DIFFERENT OR SAME PARTIESIt can make no difference in considering this question whether the patent for the improvement issues to the patentee of the main invention or to another. The right of the public to use the improvement when the patent on it expires is exactly the same whether the patentees of the two inventions are the same or not, because in each case the improvement can only be used with the license of the patentee of the main invention. *Id. 30. PATENT CONSTRUED-Reissue Patent No. 11282, dated November 15, 1892, to George F. Russell, for an improvement in pulp-digesters, held to cover a digester having a structural lining composed of materials possessing plastic, adhesive, cohesive, and acid-resisting characteristics and not to be limited to a lining of hydraulic cement or any other particular cementitious ingredient. *American Sulphite Pulp Company v. Howland Falls Pulp Company, 559. 31. SAME-The law applicable to the patent distinguished from that in the Incandescent Lamp Patent (C. D., 1895, 675; 73 O. G., 1289; 159 U. S., 465.) In the latter Sawyer and Mann did not limit themselves to a particular mate

CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued.

rial, or even to a class; but the patentee limits himself to a class of material, and, still further, within that class to a material possessing the required acid-resisting qualities. *Id.

32. PIONEER INVENTOR-To What Entitled—A pioneer inventor is entitled to a patent covering his adaptation of the forces in matter which he has discovered and the compositions with which he has successfully experimented and such as would naturally develop in the growth of the art without invention, as well as those which he has described. *Id.

33. Two PATENTS FOR SAME INVENTION-SCOPE OF CLAIMS-SECOND PATENT VOID--Where two patents are intended to and do secure to the patentee the same general inventions, differing only in the scope of the claims, the second patent is inseparably involved in the matter embraced in the first patent and is void. (Citing Miller v. Mfg. Co., C. D., 1894, 147; 66 O. G., 845; 151 U.S., 198.) * Thomson-Houston Electric Company v. Hoosick Railway Company, 612. 34. INVENTION-CONGREGATION OF DEVICES-NEW LOCATION-DOUBLE USE— The circumstance that the same congregation of devices has never been assembled in a new location is not controlling and is often of little value in determining the question of patentable novelty. Their assemblage may be nothing but another instance of a double use, and when they require special adaptation to the new arrangement and occasion it still remains to inquire whether this has required invention. *Dunbar et al. v. Eastern Elevating Company et al., 620.

35. PAPER PATENT-PRESUMPTION OF OPERATIVENESS AND UTILITY—ANTICIPATION AND INFRINGEMENT-The grant of a patent raises a presumption of operativeness and of some utility, and if prior, even though it be a mere paper patent, it may anticipate, provided it sufficiently discloses the principle of the alleged invention. Such prior patent may be relevant also to show that another device is not an infringement of such alleged invention, but is merely an improvement upon the prior patent or an application thereof to a new purpose. (Pickering v. McCullough, C. D., 1882, 28; 21 O. G., 73; 104 U. S., 319; Dashiell v. Grosvenor, C. D., 1896, 329; 75 O. G., 507; 162 U. 8., 432.) * Universal Winding Company v. Willimantic Linen Company, 625. 36. CONSTRUCTION OF CLAIMS-MATERIAL ADVANCE IN THE ART-Where an invention consists of great merit and is a substantial advance over mechanical constructions heretofore used in the art to which it appertains, the claims of the patent should have such a construction as will give the patentee the full benefit of the mechanical advance which he has contributed to the mechanical arts and claimed. * Mitchell v. Ewart Manufacturing Company, 642.

37. PATENTABILITY-COMBINATION OF OLD ELEMENTS-AGGREGATION—A combination of old elements in order to be patentable all the parts must so act that each qualifies every other. It is not enough that these independent parts are conveniently associated in one machine if each performs the same function it did before they were united. They must be so connected that the new result is due to their coöperative action. (Bunching Machine Co. v. Williams, 44 Fed. Rep., 191, and cases there cited; Green v. American Soda Fountain Company, ante, 304; 78 O. G., 1105; 78 Fed. Rep., 119.) * Paul Boyton Company v. Morris Chute Company et al., 652.

38. REISSUE-DEFECTIVE CLAIM-OMITTING ELEMENTS-A claim which made that which was no part of the invention one of its elements, was defective, which defect was properly cured by omitting the improper element from the reissue. * Gaskill et al. v. Myers, 699.

39. DEFINITE DESCRIPTION IN PATENT-In a case like the present the patent should state and fully disclose the component parts of the composition claimed with clearness and precision and not leave a person attempting to

CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued.

use the discovery to find it out by experiment. If the description be so vague and uncertain that no one can tell with certainty, except by independent experiment, how to apply the discovery and what exact result may be expected therefrom, the patent is void. (Wood v. Underhill, 5 How., 1, 5; Tyler v. Boston, 7 Wall., 327, 330; The Incandescent Lamp Patent, C. D., 1895, 675; 73 O. G., 1289; 159 U. S., 465, 474-5.) * Stevens et al. v. Seher, 761. 40. INFRINGEMENT SUITS-PLEADING-DENIAL OF UTILITY-A statement in a verified answer that complainant's invention is used only for gambling purposes in saloons and barrooms and cannot be used for any other purpose is sufficient evidence of want of utility, in the absence of testimony supporting the patent, to overcome the prima facie case made by the patent itself. * Schultze v. Holtz et al., 781.

CONSTRUCTION OF STATUTES. See Abandoned Applications; Appeal to the Court of Appeals of the District of Columbia, 11, 12, 13, 15, 16, 17; Applications by Employees of the Patent Office; Attorneys, 47, 48, 49; Cancellation of Patents, 4; Court of Appeals of the District of Columbia; Injunction, 2.

LIMITATION OF TERM OF PATENT BY FOREIGN PATENT—IDENTITY OF INVENTION— The identity of invention patented required by the statute is of material substance and does not extend to minor details. (Siemens v. Sellers, C. D., 1887, 639; 41 O. G., 1165; 123 U. S., 276.) *J. L. Mott Iron Works v. Henry McShane Manufacturing Company, 410.

CONSULAR SEAL. See Interference, 48, 49, 50.

CONTRACTS. See Assignments, 1; Licenses, 4, 6; Patents.

1. CONSTRUCTION OF-A court is always bound in construing a contract to look at the entire instrument, even though a conclusion derived therefrom may seem to antagonize the meaning of a particular paragraph of the instrument. * Fox Solid Pressed Steel Company v. Schoen et al., 242.

2. SECONDARY CLAUSE-A clause in an agreement regulating the manufacture of center plates in general which prohibits the manufacture of sheet-metal frames during the life of the agreement is secondary and incidental to the main agreement. * Id.

3. CONSTRUCTION OF-The fact that complainants are engaged in making frames of one species and defendants in making frames of another and that those of the species made by the defendants are those sought to be restrained, as well as the fact that complainants knew of such manufacture long before they objected, should be taken into consideration in interpreting the contract. Id.

4. RESTRAINT of Trade-A clause which finally interdicts the manufacture of a portion of a patented article which may be needed in the repair of such article is in undue restraint of trade and will not be enforced.

*Id.

5. SPECIFIC PERFORMANCE-MERGER OF INTEREST-TITLE-When there is a decree for specific performance of two contracts, one for a transfer of part interest of all inventions relating to a particular subject and the other for a transfer of part interest of certain specified patents relating to that subject, the assignee's rights are merged in the decree and he has no title or claim under his contracts to any other patents of the assignor or to any improvements thereon. Independent Electric Company v. Jeffrey Manufacturing Company et al., 287.

#

6. RESTRAINT OF TRADE-While it is true that all contracts in restraint of trade are not prohibited, and it is sometimes difficult to determine whether a particular one is, there is no room for doubt that a contract between patentees and manufacturers of patented articles to prevent competition in business and enhance prices is unlawful. National Harrow Company v. Hench et al., 743.

CONTRACTS-Continued.

7. PROPERTY COVERED BY LETTERS PATENT-The fact that property involved is covered by Letters Patent cannot be urged as a justification of a contract which enhances prices and restrains trade. Patents confer a monopoly as respects property covered by them, but they confer no right upon the owners of several distinct patents to combine for the purpose of restraining competition and trade. Patent property does not differ in this respect from any other. *Id.

8. PATENT PRIVILEGES-COMBINATION BY DISTINCT OWNERS OF PATENTS— MONOPOLY-Restraint of TRADE-The fact that one patentee may possess himself of several patents and thus increase his monopoly affords no support for an argument in favor of a combination by several distinct owners of such property to restrain manufacture, control sales, and enhance prices. Such combinations are conspiracies against the public interest and abuses of patent privileges. The object of these privileges is to promote the public benefit, as well as to reward inventors. 9. SAME-AVOIDING LITIGATION-A contract based on patent rights which restrains trade is not justified by the situation of the parties. Their exposure to litigation is entitled to no greater weight. Patentees may compose their differences, as the owners of other property may, but they cannot make the occasion an excuse or cloak for the creation of monopolies to the public disadvantage. *Id.

*Id.

COPIES OF PAPERS IN THE PATENT OFFICE. See Abandoned Applications. COPIES OF PENDING APPLICATIONS.

COPIES OF RECORD-OFFICE PRACTICE-It is the practice of the Office to refuse to give to strangers to the record copies of pending applications without the consent of the applicants or assignees. Ex parte Stockton, 24.

COPYRIGHT. See Demurrer, 1, 2.

1. MUTUAL ADVERTISING COMPANY-ADVERTISING-PAMPHLET-NON-INFRINGEMENT-Advertising-pamphlet copyrighted by Mutual Advertising Company Held not infringed. *Mutual Advertising Company v. Refo et al., 355.

2. INFRINGEMENT ADVERTISING FEATURES-When in a suit for infringement of an advertising-pamphlet the defendant's pamphlet resembles the complainant's in its advertising features merely, there is no infringement, since such features are not the subject of copyright. *Id.

3. INDEX-PROPER SUBJECT-MATTER-AUTHOR-BOOK-A mechanism or device for the storage and indexing of letters is not proper subject-matter for copyright, inasmuch as it is not a medium for information or intelligence. The creator of this is not an author within the meaning of the word in the Constitution, nor is what he has produced a book. *Amberg File and Index Company v. Shea, Smith & Co., 382.

CORPORATIONS. See Attorneys, 4, 9, 10; Defense, 4; Practice in the Courts, 1; TradeMarks, 13.

COSTS. See Appeal; Appeal to the Court of Appeals of the District of Columbia, 22; Suits for Infringement, 2, 3.

COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Appeal to the Court of Appeals of the District of Columbia; Circuit Courts of the United States; Mandamus, 1, 3, 4.

APPEALS INTERFERENCE CASES-REMEDY BY BILL IN EQUITY IN CIRCUIT COURT NOT REPEALED-The bill establishing the Court of Appeals of the District of Columbia and permitting appeals thereto from the decision of the Commissioner of Patents in interference cases did not by implication repeal the statute providing remedy by bill in equity in a circuit court. *Bernardin v. Northall, and Seymour, Commissioner of Patents, 327.

CUSTOMS DUTIES. See Parties to Suit, 2.

DATE OF FILING APPLICATION. See Conception of Invention, 4, 5.

DECISIONS OF THE COMMISSIONER OF PATENTS. See Appeal to the Court of Appeals of the District of Columbia, 1, 2, 3, 6, 7, 8, 9, 12, 16, 21; Cancellation of Patents, 5; Interference, 3, 4, 8, 9, 16.

DECISIONS OF THE COURTS. See Division of Application, 2.

DECISIONS OF THE EXAMINERS-IN-CHIEF. See Interference, 3, 4, 5, 24, 25, 26, 27; Reopening of Rejected Cases.

1. RECOMMENDATION OF EXAMINERS-IN-CHIEF-EFFECT ON PRIMARY EXAMINER-The Rules of Practice of the Patent Office provide that the Examinersin-Chief may annex to their decision a statement of apparent grounds for granting Letters Patent in the form claimed or any other form, and may make such recommendation as they deem proper. Such statement and recommendation cannot be ignored or pleaded as of no effect. It is binding upon the Examiner and can not be disregarded. Ex parte Letellier, 171. 2. SAME-QUEstions Considered by the EXAMINERS-IN-CHIEF-It is to be presumed that the Examiners-in-Chief consider fully all matters bearing upon the question of patentability of claims as to which they make favorable recommendations, the question of new matter, as well as other questions. Unless a state of the art not before the Examiners-in-Chief when their recommendation is made is found to exist by the Examiner, such as precludes the allowance of claims recommended by them, the Examiner should accept the recommendation. Id.

3. Right of APPLICANT TO ACCEPT DECISION-The Examiner's action holding that an applicant cannot appeal from the decision of the Examiners-in-Chief and at the same time take advantage of so much of their decision as is favorable to him-cannot "split up their decision and accept a part of their suggestion and appeal from the rest of their decision"-overruled, as this is precisely what an applicant is entitled to do. It is the purpose of the patent law to grant to an applicant all that he is entitled to claim as new. Id. DECISIONS OF THE LOWER COURTS. See Injunction, 7.

DECISIONS OF THE PATENT OFFICE IN INTERFERENCE CASES. See Burden of Proof, 1; Priority of Invention, 2, 3.

DECISIONS OF THE SUPREME COURT OF THE UNITED STATES. See Mandamus, 1; Supreme Court of the United States.

DECREE. See Former Decisions Reversed; Infringement, 6; Suits for Infringement, 1, 3; Supreme Court of the United States, 1; Trade-Marks, 16. INFRINGEMENT-EFFECT OF DECREE IN ANOTHER CIRCUIT-A decree of a circuit court in one circuit enjoining infringement and unfair competition is not conclusive in a suit by the same party in another circuit against an agent of the principal where such decree is merely interlocutory and still subject to the control or modification of the court. Walter Baker & Company, Limited, v. Sanders et al., 820.

DECREE FOR SPECIFIC PERFORMANCE. See Contracts, 5.

DEDICATION TO THE PUBLIC. See Invention Described but not Claimed.
DEFENSE. See Cancellation of Patents, 4; Injunction, 9.

1. INOPERATIVENESS-A contention that a patent built on the lines of the patent in suit was a failure will not avail defendants where it appears that there was no defect of principle. *Independent Electric Company v. Jeffrey Manufacturing Company et al., 287.

2. INTERFERING PATENTS-ANTICIPATION-TIME OF-The defense of anticipation, to be successful, must be established as of a date anterior to the patented invention, not merely prior to the application for or date of the patent. *Von Schmidt v. Bowers, 529.