66

When, however, the applicant seeks to include in the same grant independent improvements in the individual machines composing the combination, which improvements have nothing to do with the combination, but are of general application, it is manifest that he is entitled to no more favor than if he attempted to patent improvements upon two independent and uncombined machines under one grant. To permit this would be a fraud upon the Government, and would utterly destroy all attempts at classification. This matter is fully discussed in Linus Yale's Case. (Commissioners' Decisions, 1869, p. 110.)"

193. EXAMINER MAY REQUIRE CORRECTION AND REVISION OF SPECIFICATION.-The specification, especially if the claim be amended, must be amended and revised, if required by the examiner, for the purpose of correcting inaccuracies of language or unnecessary prolixity, and of securing correspondence between the description of the invention and the claim. (Patent Office Rules, July, 1870.)

But the decision of the examiner upon such preliminary or intermediate questions, or refusals to act, twice repeated, or the determination of the questions of title, the number of amendments, the structure of the specification, the correspondence of the drawing with the model or the written description, and the accuracy and completeness of the description, will be re-examined, upon application, by the Commissioner in person, under the rule of the Patent Office which provides that "decisions of examiners upon preliminary or intermediate questions, or refusals to act, twice repeated, will be reexamined, upon application, by the Commissioner in person." (Patent Office Rules, July, 1870; Krake ex parte,

Commissioners' Decisions, 1869, p. 100;
Commissioners' Decisions, July 23, 1870;
Ib., July 23, 1870; Nichols ex parte, Ib.)

Smyth ex parte, Lehman ex parte,

194. SPECIFICATIONS WILL NOT BE RETURNED FOR AMENDMENT.-The office will not return specifications for amendment; and in no case will any person be allowed to take any papers, drawings, models, or samples from the office. If applicants have not preserved copies of such papers as they wish to amend, the office will furnish them on the usual terms. (Patent Office Rules, July, 1870.)

195. ATTENDANCE OF APPLICANT NOT REQUIRED.-The personal attendance of the applicant at the Patent Office is unnecessary. The business can be done by correspondence or by attorney. (Ib.)

196. EXAMINER CANNOT DECLINE TO TAKE JURISDICTION ON THE GROUND THAT A CASE IS RES ADJUDICATA.-In the case of D. M. Nichols ex parte, the Commissioner says: "If the claims in the new application had differed from those previously considered by the board, there would be no doubt of the jurisdiction of the examiner. They were properly before him for some consideration. In the course of his examination he found them to be substantially the same as claims previously rejected by the appellate tribunal. They were not the same claims, but claims in effect the same. The examiner was, therefore, right in saying that the question of their patentability was res adjudicata. He should, therefore, have rejected the claims for lack of patentability on the authority of the former decision of the board. The question would then have been appealable to the board, to determine whether, in fact, their objections to the former claims

applied equally to these. I do not think the examiner could properly decline to take jurisdiction." (Commissioners' Decisions, July 23, 1870.)

197. EXECUTIVE, MINISTERIAL, AND JUDICIAL FUNCTIONS OF PRIMARY EXAMINERS.-The examiners and the Commissioner act continually in a double capacity. They are executive officers, having certain duties to perform, in relation to every application, of a purely executive character. Some of these duties are purely ministerial, and others, while strictly executive, require the exercise of discretion. Thus, the reception of the application and of the fee, the act of examination, the record of the patent, and the signing and the sealing, are ministerial; while the determination of the question of title, the number of amendments, the structure of the specification, the correspondence of the drawings with the model or the written description, and the accuracy or completeness of the description, are executive acts, although discretion is exercised in their performance. The judgments of the examiner, or of the Commissioner, upon what may be called the merits, the questions of patentability, of novelty, and utility, are judicial acts; and it is when sitting to determine these and questions of like character that these officers become quasi judges. The board of examiners-in-chief, on the other hand, act only in an appellate and judicial capacity. They are not, by law, vested with any executive duties, except as they may be included in "such other duties as may be assigned to them by the Commissioner." From the judicial acts of the examiner an appeal lies to the board; from his executive acts the appeal is to the Commissioner, An appeal from his decision upon the merits does not

carry with it his action upon executive matters. (John A. Krake ex parte, Commissioners' Decisions, 1869, p. 100.) 198. FORM OF AMENDMENT.

To the Commissioner of Patents:

WASHINGTON, D. C., July 20, 1869.

In the matter of my application for letters patent for an improvement in wagon brakes, I hereby amend my specification, by striking out all between the ninth and twentieth lines, inclusive, on page 3, by inserting the words "connected with" after the word "and," in the first line of the second claim, and by striking out the third claim and substituting therefor the following:

3. The combination of the self-acting brake C, pin A, and slotted flanges D, substantially as described and for the purposes set forth.

HENRY RICHARDS,
By MILTON MEADOWS,
His attorney in fact.

X. Renewal of an Application upon which the Final Fee has not been Paid.

199. CONSEQUENCE OF NEGLECTING TO PAY THE FINAL FEE WITHIN SIX MONTHS FROM NOTIFICATION OF ALLOWANCE.-Every patent shall date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent; and if the final fee shall not be paid within that time the patent shall be withheld. (Act of July 8, 1870, § 23.)

The final fee on issuing a patent must be paid within

six months after the time at which the patent was allowed and notice thereof sent to the applicant or his agent. And if the final fee for such patent be not paid within that time, the patent will be forfeited, and the invention therein described become public property, as against the applicant therefor, unless he shall make a new application therefor within two years from the date of the original allowance. (Patent Office Rules, July, 1870.)

200. WHO MAY PETITION For Renewal oF THE APPLICATION. Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who has failed to make payment thereof within six months from the time at which it was passed and allowed and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discovery, the same as in the case of an original application. (Act of July 8, 1870, § 35.)

201. RENEWED APPLICATION TO BE MADE WITHIN Two YEARS FROM NOTIFICATION OF ALLOWANCE.-The second application must be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent, as aforesaid, was ordered to issue prior to the issue thereof. (Ib.)

202. NEW SPECIFICATION, &C., NOT REQUIRED.-It is not necessary for the applicant to file a new specification, oath, model, or drawing, on petitioning for the renewal of an application upon which the final fee has not been paid. The proper course will be to file a petition, stating