INDEX.

[The names of court cases are designated by an asterisk (*).]

ABANDONMENT. See Interferences, 8; Prior Knowledge and Use, 1; Public Use; Prac-
tice in Patent Office, 4; Trade-marks, 19, 20.

1. A rejected application for letters patent is no bar to a patent, there being no
evidence to show that the alleged prior invention which it discloses was ever
perfected or brought to practical use, or that it was not abandoned and never
revived by the original inventor. *Rubber Slep Manufacturing Company v. Metro-
politan Railroad Company et al., 218.

2. An application abandoned because of failure to prosecute within two years next
after the last Office action will not be revived if the neglect or default of the
party himself has caused the loss in status. Ex parte Mayor, 60.

3. A machine temporarily disused under circumstances connected with the demand
and supply of its product, and independent of the efficiency of the mechanism,
is not an abandoned experiment. *Snow v. Tapley, 216.

4. Abandonment of the use of a machine is no evidence that it was a mere abandoned
experiment. * Pickering et al. v. McCullough, Dalzell & Co., 247.

5. Abandonment of the use of a mechanical structure which has been brought to
such a degree of maturity, and whose operative merit has been demonstrated by
trial, will inure to the benefit of the public, and not to that of even an original
but subsequent inventor. * Id.

6. No period of delay per se is sufficient to deprive an inventor of his patent.
v. Haworth, 84.

Bering
7. After invention perfected, long delay in applying for patent will not defeat the
inventor's rights, it being clear from the attendant circumstances that there
was no intention to abandon and no abandonment in fact of the invention.
# Sprague et al. v. Adriance et al., 319.

8. Nor is it material to the right of protection that in the interval of delay other
inventors have devised and patented the same thing, this being wholly without
the knowledge or acquiescence of the first inventor. * Id.

9. Even if it were otherwise, and his conduct operated as an estoppel, whether his
assignees, without notice, could be likewise concluded, Quære? *Id.
10. The case distinguished from Fruit Jar Company v. Wright (4 Otto, 96), wherein
the inventor was silent, although cognizant of the use of the invention by others,
the further distinction being that in the former case there was public use and
sale for more than two years prior to the filing of the application to affect the
validity of the patent.
* Id.

11. Mere delay in applying for patent after invention made works no forfeiture of
right. Kelleher et al. v. Darling, 381.

12. After final rejection upon the merits and no appeal taken, unimportant amend-
ments or mere requests for reconsideration will not save the case from abandon-
ment under the statute. Ex parte Jenks, 112.

13. Simpson filed application papers for patent, but without model or the payment
of the fee, in January and February, 1848, the invention involving the coating
of a metallic wire with gutta-percha for electrical insulation. Thereafter an-

ABANDONMENT-Continued.

other application for the invention was filed by him, in all respects complete
(June, 1849), which was rejected by the Examiner in October, 1849. January
21, 1851, Simpson, upon request made, received a refund of twenty dollars, bal-
ance of fee, as allowed by law if a case be withdrawn after first rejection. In
December, 1858, a new application was filed by Simpson, which was refused
by the Commissioner, on appeal, February, 1859, and still another application,
filed October 8, 1859, was finally rejected upon appeal to the Circuit Court for
the District of Columbia, April 9, 1861. May 4, 1866, Simpson filed the appli-
cation upon which the patent issued. Held, upon the proofs, that, in spite of
poverty and wrongful Office action, Simpson had exercised exemplary diligence
in seeking his patent; that in the long interval he had neither actually nor
constructively abandoned the invention, and that, as against adverse public
use and priority claimants, he was entitled to be treated as a continuing appli-
cant since January, 1848. *Colgate v. Western Union Telegraph Company, 440.
14. Where the law allowed the refund of the balance of a fee, upon condition of the
withdrawal of a case at a certain stage, Simpson, who received such balance
upon request, but without expressly withdrawing the case, or otherwise man-
ifesting such intention, declared not to be prejudiced by the mistaken Office
action.
* Id.
AGGREGATION. See Combination, 4–7; Patentability, 1; Invention, 9–14.

1. To taper a lathe-chuck and to make it with a screw-thread on its face are both
well-known constructions in the art of spinning metal. It is without patent-
able merit to unite both these features in the same chuck, when no joint mod-
ified effect is obtained, but a simple aggregation of their individual functions.
Ex parte Mason, 31.

2. A claim cannot be sustained which, though in terms for a combination, seeks in
fact to protect the convenient relative arrangement of an old device, having
no coactive function with the other elements specified. *The Kerosene Lamp
Heater Company v. Littell, 280.

APPEALS.

It is incumbent upon an appellant to show clearly the error in the decisions of the
lower tribunals. Towers v. Pease, 6.

APPLICATIONS. See Joint Invention, 1, 2; Patents, 3; Practice in Patent Office, 3; Pri-
ority of Invention, 6.

1. There must be substantial correspondence between the description, drawing, and
model respecting all the essentials of an invention which it is sought to patent.
Ex parte Schoonmaker, 40.

2. So, too, the specification and drawing must fully and clearly reveal some practi-
cal means of carrying the invention into effect. Id.

3. Though an applicant may suggest or illustrate modifications of an invention, yet
he is required to disclose in entirety some one means of practising it. Id.
ARTICLES OF MANUFACTURE. See Infringement, 9; Claims, 8; Patents, 4.
1. When a thing is produced new, in and of itself, it is patentable as a new manu-
facture. *Anilin et al. v. Hamilton Manufacturing Company, 185.

2. The main and principal features of the art of preserving fruits, vegetables, and
meats in hermetically-sealed cans or packages being old, whether a patent for
each particular article of canned goods "as a new article of commerce" can be
sustained as a new invention, Quære? *Wilson Packing Company et al. v. Clapp,
203.

3. A passenger-ticket consisting, in addition to the usual matter, of a personal de-
scription of the purchaser and an executed contract, is simply a contract, or
method of doing business, and is not patentable. E. parte Sheldon, 44.

ASSIGNEES. See Assignment and License; Abandonment, 9.

?

ASSIGNMENT AND LICENSE.

See Trade-marks, 14–18.

1. There being conflicting claimants to ownership in an invention for which letters
patent were to issue, he was excluded from the grant whose assignment deed
did not certainly identify the invention in controversy with the one which the
deed conveyed. Ex parte Paine, 51.

2. It is a mere license, and not such an assignment as will include a party in the
grant of letters patent, which reserves to the assignor certain uses of the in-
vention the patent is intended to secure. Id.

3. Where an application is withheld from issue for the sole purpose of ascertaining
who is a legal assignee to be included in the grant, an assignment deed will be
considered, even though filed of record subsequently to the payment of the
final fee. Id.

4. A license to the defendants to manufacture the article described in a certain pat-
ent held by them will not relieve from the charge of infringement where the
device actually made differs somewhat from that set forth in the patent. *Mil-
ler's Falls Company v. Ives & Co., 309.

5. The grant of the full and exclusive right to use and sell the invention within a
limited territory, the grantor reserving a right (not the exclusive right) to
make: Held, under all the circumstances, to vest a right to make in the grant-
ees. * Hamilton v. Kingsbury et al., 339.

6. If the invention could not be made except at the will or after further arrange-
ment with the grantor, then the right to use and sell is valueless, and the con-
sideration paid is without return.
*Id.

7. So, too, if the exclusive right to make never left the grantor, the words of reserva-
tion retaining in himself a right to make are useless, and their presence in the
deed of conveyance without significance. * Id.

8. To give effect to every part of the instrument, it was ruled that the exclusive
right to make within the territory was enjoyed in common by grantor and
grantees. *Id.

9. "Legal representatives" includes assignees as well as executors and administra-
tors in its terms, under the particular circumstances. *Id.

The case of Murray and Wuterich (C. D. 1873, p. 96) considered. Ex parte Dailey, 3.
CLAIMS. See Aggregation, 2; Infringement, 32; Practice in Courts, 23; Reissues, 8, 14.
1. In stating claims no set expression or formula need be followed, but they must
come within the subject-matter disclosed by the specification, and must, more-
over, be clear, distinctive, well defined, and accurate, and not for mere ab-
stractions, generalizations, functions, or results. Ex parte Designolle, 10.

2. Certain claims wanting in these requisites criticised and rejected. Id.

3. Where claims are clear and explicit, their scope cannot be restricted or enlarged
by reference to features or operations not therein expressly mentioned or neces-
sarily implied from the language therein employed. Funck v. Doty, 77.

4. The retention of old elements in a claim for a combination, when there is nothing
in common between them and the new ones added by the applicant, is a mis-
statement of his invention. Ex parte Funck, 89.

5. Such claims, therefore rejected on references showing the old elements. Id.
6. The office of a claim is to clearly and distinctly set forth what an applicant regards
to be peculiarly his own invention. Id.

7. A claim which exceeded in its terms the invention actually made, and anticipated
possible future improvements yet undevised, was disallowed. Scott v. Ford et
al., 106.

8. The patent being for a new dye product, the article is protected without regard
to any one method of manufacture. Hence, the claim, which included not only
the particular processes practiced by the inventors, but "any other method

CLAIMS-Continued.

which will produce a like result," is no broader than the actual invention.
* Anilin et al. v. Higgin et al., 335.

9. Nor does it in effect monopolize a result. The term "result," as used in the claim,
taken in connection with the other words, simply means to include any other
method than that of the patent, which will obtain a like product resulting.
It is something tangible, and not a mere idea. * Id.

10. A functional claim is inadmissible; and a claim fairly susceptible of an interpre.
tation which renders it functional is inadmissible. Ex parte Ives, 134.
11. The courts, in upholding claims functional in form as claims for the devices per-
forming the functions, have not legalized the admission of functional claims by
the Patent Office, but have only relieved patentees from the injurious effects
of the irregular admission of claims in such forms by the Patent Office. Id.
12. A claim for the operation, or "operating," of the register by the striker, in a
grain-measuring device, irrespective of the mechanism by which the operation
is effected, is functional and inadmissible. Id.

13. A claim for an improvement in the art of making paper dishes by a certain pro-
cess distinguished from old processes only by the use of newly-contrived dies,
which dies were not described nor claimed, disallowed. Ex parte Ingersoll, 145.
14. Thin sheet-metal dishes with sides having regular corrugations increasing in depth
from the bottom toward the top, being old, a claim for a paper dish of the same
style refused.

Id.

COMBINATIONS. See Aggregation, 2; Claims, 4; Reissues, 8; Inventions, 14, 15, 19;
Particular Patents, 7, 9, 17, 50.

1. A new and useful combination is patentable, though its elements are old, if the
result of the combination is the product of the co-operative action of its ele-
ments, and not a mere aggregation of several results, each the separate product
of one of the elements or groups of elements. It is immaterial whether the co-
operative parts act simultaneously or successively. Waring v. Wilkerson, 120.
2. The patentability of a combination is not affected by the circumstance that the
elements combined produce distinct subsidiary results if, while producing
those subsidiary results, they also co-operate to produce an ultimate result
which is either different from or the resultant of the several particular results
produced by the subordinate combinations. Id.

3. In order to place the parts to be operated upon in positions convenient for the
eye and hand of the dentist, it is necessary to give the dental chair a vertical
movement, rotation in a horizontal plane, and a rotatory or tilting movement
in a vertical plane, or the resultant of these three movements; and the devices
which effect these movements, whether acting simultaneously or successively,
co-operate in the production of one definite result, and their combination is
therefore patentable. Id.

4. If the elements united only contributed to form a good dental chair without co-
operating in the production of any more definite result, the aggregation of
these elements would not constitute a patentable combination. Id.

4. Absolute novelty in the result produced by a combination is not essential to its
patentability. It is sufficient if the result, being vo: ful, is new as the product
of the combination, or, in other words, if the combination is new and the product
useful. Id.

6. A combination of identical or equivalent elements previously combined which
presents the same or analogous uses of those elements is not patentable. Id.
7. The combination of a corn-planter including a hopper and a drive-wheel having
a valve on one of its faces, with a cotton-seed planter including a hopper and
the same drive-wheel having teeth on its opposite face, is not a patentable com-
bination. The connection of these two devices by a common driving wheel is
like the connection of a hoe and rake by a common handle, a mere aggregation
of distinct machines. Ex parte Cardwell, 124.