Rule 59. A working model may be required if necessary to enable the Office fully and readily to understand the precise operation of the machine.

Rule 60. In all applications which have become abandoned, the model, unless it be deemed necessary that it be preserved in the Office, may be returned to the applicant upon demand and at his expense; and the model in any pending case of less than one year's standing may be returned to the applicant upon the filing of a formal abandonment of the application, signed by the applicant in person and by any assignee. (See Rule 171.)

Models belonging to patented cases shall not be taken from the Office except in the custody of some sworn employee of the Office specially authorized by the Commissioner.

Rule 61. Models filed as exhibits in contested cases may be returned to the parties at their expense. If not claimed within a reasonable time, they may be disposed of at the discretion of the Commissioner.

R. S.-Sec. 4891. In all cases which admit of representation by model, the applicant, if required by the Commissioner, shall furnish a model of convenient size to exhibit advantageously the several parts of his invention or discovery.

R. S.-Sec. 485. The Commissioner of Patents may restore to the respective applicants such of the models belonging to rejected applications as he shall not think necessary to be preserved, or he may sell or otherwise dispose of them after the application has been finally rejected for one year, paying the proceeds into the Treasury, as other patent moneys are directed to be paid.

In taking up the group of Rules 56 to 61, on the subject of models, it may be well to ascertain what a model is. A model of an invention may be defined as a corporeal embodiment of the part or parts mutually arranged and assembled to exhibit and exemplify the invention. Technically, it is merely illustrative, like a drawing. It is distinguished from a working machine not merely by a difference in size, but rather in the purpose for which it is made. The purpose of a model is to exemplify the theories of an invention and not to carry these theories into effect. A model may be capable of use with, as in handling, small articles, but if not designed for commercial use, it is only a model.

A working model, referred to in Rule 59, is one capable of showing not only the construction of the device, but also the operation thereof. It may, therefore, have extra parts or mechanism to move or move with the invention. model, proper.

Models may be used in this Office for two purposes. First, to disclose an invention before the Primary Exam

iner where the description and drawing are vague and indefinite, and

Second, to establish conception of the invention in contested cases and in cases where affidavits are filed under Rule 75 to antedate a reference.

Under the second use it is especially necessary to understand that the making of a model or a working model does not establish reduction to practice or completion of the invention, but only conception. See decision of Commissioner Hall in Green v. Hall v. Siemens v. Field, 46 O. G., 1515; C. D. 1889, page 110, affirmed by Commissioner Mitchell, C. D. 1889, p. 161. While an invention may be exhibited in a model so as to lay the basis for a claim to priority (see Loom Co. v. Higgins, 195 U. S., 580) it is well settled law that a working model designed and intended as such is not a reduction to practice.

As to the use of a model in the examining division, Rule 56, which is based on Sec. 4891, R. S., says a model will be required or admitted as a part of the application only when on examination of the case, the primary examiner shall find it to be necessary or useful.

This language is broad and is intended to give the examiner abundant authority; but this authority may be easily or inadvertently abused. To guard against this abuse, it should be remembered that a model may be required with propriety only to supplement a deficient disclosure of the structure in the specification and drawing. Where the disclosure is so vague and indefinite that the construction can not be understood, and the examination can not, therefore, proceed, a model may properly be required. But as was said in ex parte Tuttle, 62 MS. D. Oct. 1897, the requirement may often be waived if better drawings and a full and clear description be furnished. See also ex parte Isenhart, C. D., 1899, 87 O. G., 179.

If, however, the construction is clearly disclosed but the examiner holds that it is inoperative, proper practice demands, not that a working model be filed, but that the claim be rejected for inoperativeness, leaving it to the applicant to decide whether he will attempt to overcome this rejection by a demonstration of the working of the invention by means of a model or by an appeal in the regular course. (Ex parte Stocker, 98 O. G., 1705; C. D. 1902, 53.)

It was formerly the practice to require a working model in all cases involving perpetual motion and suspend action until the same was furnished. This practice is now modified through Official Notice promulgated Jan. 30, 1918, by the present Commissioner, directing the principal examiner, immediately on receipt of such a case, to write to the applicant warning him that when his case should be examined a rejection on the ground of inoperativeness would follow, and suggesting a request for the return of the filing fee.

On the filing or admission of a model upon requirement by the Office, the same becomes a part of the application, the fact of its entry and the date being noted on the file wrapper, and it may not be withdrawn any more than any other part of the application. It may only be withdrawn upon the application becoming abandoned or by the applicant filing a formal abandonment of the application as provided by Rule 60. The Commissioner may return models belonging to rejected applications or dispose of them otherwise as provided for in Sec. 485 R. S.

Models may be filed as exhibits to aid the examiner or to illustrate an argument of the applicant, but the examiner is not bound to receive or retain them. They are frequently very useful, however, and should receive proper attention.

Models and exhibits are properly in the care of the Custodian of Models, who keeps a record of all such that are received through the mails and charges each Division with those removed thereto. Return of exhibits should be made through this official. Models for use in interference proceedings are in the custody of the Docket Clerk.

Rule 56 says when a model is required, the examination may be suspended until it shall have been filed; the rule formerly read "will be suspended." It is the duty of the examiner to do everything possible to expedite the prosecution of a case and in many instances, although a model may be necessary, pertinent art may be cited in the letter requiring the model and even provisionally applied to claims if their import be generally understood. This is good practice and should be followed whenever possible.

The rules relating specifically to models, 56 to 61, are generally clear in meaning and it is thought the above remarks will suffice for any explanation required.

Rule 62. When the invention or discovery is a composition of matter, the applicant, if required by the Commissioner, shall furnish specimens of the composition, and of its ingredients, sufficient in quantity for the purpose of experiment. In all cases where the article is not perishable, a specimen of the composition claimed, put up in proper form to be preserved by the Office, must be furnished. (Rules 56, 60 and 61 apply

to specimens also.)

R. S.-Sec. 4890. When the invention or discovery is of a composition of matter, the applicant, if required by the Commissioner, shall furnish specimens of ingredients and of the composition, sufficient in quantity for the purpose of experiment.

Rule 62 authorizing the requirement of a sample of a composition of matter on which a patent is solicited is obviously intended to cover those cases where the description sets forth properties or results questioned by the Examiner.

The Patent Office, at present, has no facilities for making tests or experiments on samples furnished but other governmental agencies, the Bureau of Mines and the Bureau of Chemistry, for instance, have well equipped laboratories where such work can be done. When it is borne in mind that the term "composition of matter" includes both mechanical mixtures and chemical compounds, it is clear that even a small laboratory in this Office, fitted with simple physical apparatus including a microscope, and chemical reagents and apparatus, would be of great help in handling these cases.

An inadequate description in a composition of matter case hardly requires the submission of a sample, as this can be cured by supplemental description; where additional descriptive matter is presented, especial care has to be taken that no new matter is introduced. I shall not enter upon a discussion of the nature of a composition of matter to be patentable, the manner in which it should be claimed or the Office practice in handling this class of cases; Rule 52 does not deal with this phase of the subject; for information along this line reference should be had to Examiner Lewers' paper on "Composition of Matter" read before the Examining Corps Oct. 29, 1914, a printed copy of which may be found in the Office Law Library.

Rule 63. Applications filed in the Patent Office are classified according to the various arts, and are taken up for examination in regular order of filing, those in the same class of invention being examined and disposed of, so far as practicable, in the order in which the respective applications have been completed.

Applications which have been put into condition for further action by the examiner shall be entitled to precedence over new applications in the same class of invention.

The following cases have preference over all other cases at every period of their examination in the order enumerated:

(a) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service, and when for that reason the head of some department of the Government requests immediate action and the Commissioner so orders; but in this case it shall be the duty of the head of that department to be represented before the Commissioner in order to prevent the improper issue of a patent.

(b) Applications for reissues.

(c)

Cases remanded by an appellate tribunal for further action, and statements of grounds of decisions provided for in Rules 135 and 142.

(d) Applications which appear to interfere with other applications previously considered and found to be allowable, or which it is demanded shall be placed in interference with an unexpired patent or patents.

(e) Applications which have been renewed or revived, but the subject matter not changed.

(f) Applications filed more than twelve months after the filing of an application for the same invention in a foreign country.

Applications will not be advanced for examination excepting upon order of the Commissioner either to expedite the business of the Office or upon a verified showing that delay will probably cause the applicant serious and irreparable injury.

This rule, which marks out privileged cases, is an important one. It is not often an examiner will have cases in all classes (a) to (f) on his desk at the same time and therefore the respective order of examination of these classes give little trouble. Too often, however, the privileged character of these classes is overlooked by the Examiner, frequently to the disadvantage of the applicant. For example, if action is not made promptly on an application filed in this country more than twelve months after an application for the same invention is filed in a foreign country, the inventor may lose his right to a U. S. patent by the compulsory issue of the foreign patent.

It should be remembered that privileged applications are privileged in all stages of their prosecution.