the invention, and that he had reduced it to practice before the grant of the patent, or was following it up with reasonable diligence.

It is clear from the record that he had neither reduced it to practice, nor had exercised reasonable diligence. The single specimen filed as Exhibit A is manifestly only an experiment, and for more than ten years the experiment has been abandoned. It does not appear that it ever would have been revived had not Towers been stimulated by the efforts of more diligent inventors.

The decision of the Board of Examiners-in-Chief and the Examiner having both been in favor of Pease it was incumbent upon the appellant to show clearly error in their decisions; and in view of the patent, it was incumbent upon him to make out a clear case against the patentee Nothing of this has been done, and the decision of the Board of Examiners-in-Chief is affirmed.

STEPHEN v. BAILEY.

Decided September 18, 1877.

(O. G., vol. xiii, p. 45.)

In declaring an interference under Rule 53, Office Practice, the issue stated should contain a brief summary of the contested subject-matter, and should specify the conflicting claims. The omission of either is equally an error.

In the matter of the interference between Stephens and Bailey. Subject, "Barb-Fences."

DOOLITTLE, Assistant Commissioner:

In this case the Examiner of Interferences returned the interference papers to the Primary Examiner upon an examination of the preliminary declaration, for the reasons that the interfering subject-matter, in his opinion, was not briefly and concisely defined, and that the claims involved were not specified.

Rule 53 requires that the Primary Examiner "will briefly and concisely define the interfering subject-matter, and specify the claims embracing the same." The object of this rule was to obviate all uncertainty and misconstruction of the issue, which had previously often arisen, greatly to the annoyance and confusion of the tribunals before whom the issue was discussed, and also to the parties and attorneys.

It seldom occurs that interfering claims are couched in precisely the same language, and are not susceptible of different constructions, and it is often the case that the matter in interference is claimed by one party, while it is only shown or described by the other. It has become absolutely necessary, therefore, that a clearly defined and well-ascertained issue should be set forth by the Primary Examiner, which issue should consist of a description of the precise subject-matter in interference, apart from the specification by him of the claims which embrace it. To mention

the matter constituting the issue without specifying the claims is not a full compliance with the rule, nor is it to mention the claims without defining the matter. The requirements of the rule are not to be overlooked because the language of the claims of the respective contestants happens to be the same, or substantially the same, as in the present case. The tribunals before whom the matter of priority is to be argued should not be compelled to travel through the record and make up the issue for themselves. The Commissioner concurs in approving the action of the Examiner of Interferences.

BLACKMAN v. MORRAY et al.

Decided October 25, 1877.

(O. G., vol. xiii, p. 175.)

1. Coffins having top and bottom sections, with tongue-and-groove interlock joints, the sections being made wholly of cement, terra cotta, or glass, are old in the art. To make a coffin in like manner, with top sections of glass and bottom of cement, is without invention.

2. Both materials are old for the purpose they serve in the particular combination, and since there is no new resultant function or effect developed, but a simple summation of the separate results of the contributing elements, the coffin as thus constructed is without patentable merit.

3. An interference controversy involving such subject-matter was accordingly dissolved and the appiication rejected.

APPEAL from the decision of the Board of Examiners-in-Chief in the matter of the interference between the application of Josiah Blackman, filed October 7, 1876, and the patent of Joseph B. and Robert J. Morray, No. 177,741, May 23, 1876, for "Improvement in Burial Cases."

DOOLITTLE, Acting Commissioner:

The subject matter involved in this interference is fully set forth in the following paragraph contained in the patent of the Morrays:

The invention consists of a burial-case the entire top portion of which is formed of glass and the lower portion of cement, the two being hermetically joined by tongueand-groove and cement joints, also flanges and bolts. The case is particularly designed for use within a monumental cement case, which is set in the ground and provided with a reinovable top, by removing which the body of the deceased can be seen through the glass top of the inner case.

Blackman, the applicant, describes the lower part of his coffin as made of "cement, or glass and cement, or artificial stone, or other material which does not readily decompose."

The patent of J. R. Cannon of October 25, 1859, No. 25,883, is for a glass burial-case in two parts, upper and lower, which are hermetically joined "by tongue-and-groove and cement joints, also by flanges and bolts, and with an air-pump attached thereto, precisely as described by

the contestants. Mention may be found in nearly every cyclopedia of coffins made of cement, baked clay, &c. Patents for constructing coffius from hydraulic cement were granted as early as 1835, and subsequently patents have been granted for cement coffins, coffins made of asphaltum composition, and for peculiar cements for coating and sealing coffins. David Sholl, March 27, 1855, was granted a patent for "a coffin composed of terra cotta or pottery ware." This undoubtedly was several thousand years old. Glass lids to wooden coffins are notoriously old.

But it is said that by this combination there has been united for the first time in a coffin the element of strength or indestructibility and the element of transparency-a non-breakable coffin capable of wear and transportation, and at the same time having a transparent lid. But these materials were used for precisely the same purposes before. Neither of them possesses even the merit of being put to a new use, and now that they are employed in juxtaposition, each performs precisely the same functions as before. These results are not the product of the combination, but a "mere aggregate of several results, each the complete product of one of the combined elements." Hailes v. Van Wormer, 20 Wall., 353; Reckendorfer v. Faber, 10 O. G., 71.

Given the desire to unite the elements of strength and transparency in a coffin in the manner now claimed, and the materials and method are at once found in this very art. Compared, then, with what existed before, the present alleged invention consists in simply selecting proper and well-known materials for their proper and well-known uses, without the least exercise of the inventive faculty.

After an interference has been declared, and has passed through its various stages of appeal, too much caution cannot be exercised in deciding that the subject-matter involved is unpatentable. But this question is the first one to be considered and determined by the Office when an application is to be examined on its merits, and if overlooked or a mistake is made in respect thereto at the beginning, it remains a matter that should be corrected subsequently.

As held by the United States Supreme Court in Dunbar v. Myers, (11 O. G., 35-)

invention or discovery is the requirement which constitutes the foundation of the right to obtain a patent, and it was decided by this court, more than a quarter of a century ago, that unless more ingenuity and skill were required in making or applying the said improvement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention. Hotchkiss v. Greenwood, 11 How.,

25..

The Supreme Court in this case cites seven of its own decisions, and several circuit court decisions, in support of this doctrine, in which the devices declared to be unpatentable for want of invention evince as great exercise of that faculty in their construction as in that of the one now in controversy. The court adds, also, that conclusive support to the propo

sition that an applicant for a patent is not entitled to the public protection unless the supposed improvement involves actual invention or discovery is found in the oft-repeated decisions of the English courts having jurisdiction in such cases, and a large number of such cases are cited.

It is opposed to the true interests of inventors and of the public for this Office to adopt a lower standard of invention than that recognized by the courts. In applying this rule great care, of course, should be taken, as Judge Shipman remarks in Kirby v. Beardsley (3 Fisher, 265), to give to the inventor the benefit of doubt as to originality or creative thought

so as to nourish inventive enterprise, by lending encouragement to every degree of merit. This is the more important, as simple contrivances—the offspring of simple, even involuntary thoughts-often produce great and beneficial results, while complex and elaborate ones-the product of long and profound cogitation-not unfrequently prove comparatively or wholly abortive. But it is obvious that there is a limit beyond which mere changes cannot and ought not to receive protection.

It seems a hardship in this particular case to refuse a patent to the applicant, as the evidence shows clearly, to my mind, that the patentee (his application having been made by his executors) did not have the idea in mind at all which constitutes the alleged novelty in the subjectmatter in issue-viz, a burial-case composed of a glass top and a cement bottom. There is not a word of testimony nor a scrap of evidence of any kind showing that he actually proposed to make the bottom part of cement. On the other hand, it appears to have been first hit upou by Blackman, the applicant, after the death of the patentee. Blackman had been engaged by the patentee to embody his invention in models, and, so far as an entire glass burial-case is concerned, I have no doubt the patentee was the first to propose the plan, but the cement bottom was an afterthought, and originated with Blackman, pending negotiations between himself and the executors of the patentee in regard to filing a joint application for a patent. But, nevertheless, a patent to Blackman must be refused, as the duty of the Office is clear, and it does not follow that because a bad patent has been granted to the patentee, one equally so should be granted the applicant.

EX PARTE DESIGNOLLE.

Decided November 10, 1877.

(O. G., vol. xiii, p. 227.)

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, moreover, be clear, distinctive, well defined, and accurate, and not for mere abstractions, generalizations, functions, or results.

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

In the matter of the application of Paul G. L. G. Designolle for patent for "Improvement in the Production of Artificial Animal-Black."

DOOLITTLE, Acting Commissioner:

Objection is taken to the action of the Examiner, who requires that certain changes shall be made in the clauses of claim submitted by applicant before they can be considered upon their merits. The applicant disputes the force of the criticisms and declines to make the suggested changes, insisting, with much earnestness, that he should not be circumscribed as to the language he may employ in the statement of his claims, or as to the form in which the claims shall be presented.

Section 4888 R. S. makes it incumbent upon an inventor, when he files his application for patent, to "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery," and it is as clearly the duty of the Commissioner to see that this requirement is complied with as to ascertain whether the written description is full, clear, and exact, or, indeed, as to pass upon any one of the prerequisites made conditional by law to the issuance of the grant.

In carrying this provision into effect, the Office is little disposed to interfere with an applicant, either in the choice of his words or in the form in which they are stated. Its policy is rather to permit the greatest latitude of expression consistent with the subject-matter of invention, only demanding that the claims shall be clear, distinctive, well-defined, and accurate, as opposed to mere abstractions, generalizations, functions, or results. The invalidity of these latter forms has been so frequently pronounced upon that it is not deemed necessary to discuss their permissibility. After such uniform condemnation, because of their lack of definiteness or of tangible matter, it is evident that the Commissioner must decline to entertain them, for the public have rights to be guarded as well as the applicant, and it needs to be informed in more distinctive terms than such forms of claim ever convey exactly what has been invented and protected.

It results, then, that if the Office, upon examination, is satisfied of the clearness and correctness of the claim in specifying the scope of the invention, there is nothing to hinder an immediate adjudication upon the merits.

That the claim is not formulated in certain set expressions, which may haye had judicial sanction, or been usual in Office practice, is quite im material. These have their advantages, and serve as a general guide; but they are not in any sense exclusive, and should not be permitted to hamper an applicant in the free exercise of his judgment as to the method of presenting his summary of invention, so long, of course, as he keeps within the limits of the rule respecting distinctiveness and accuracy just alluded to. Bearing this in mind, we are prepared to consider the sufficiency of the claims upon which the present appeal has been taken. Clause 1 is for

The process herein described of disintegrating, by means of caustic soda and under pressure, clippings or wastes of leather or other analogous substances, as one of the steps in the manufacture of artificial bone-black.