APPEAL Continued. 1. LIE FROM A DECISION AND NOT FROM THE REASONS OF THE DECISION.It is well settled that an appeal is from the decision and not from the grounds or reasons upon which the decision is based, and where the Examiner of Trade-Marks granted a motion to dissolve, an appeal by the moving party alleging error in the reasons given by the Examiner for dissolving the interference will be dismissed. S. Galle & Company v. Western Grocer Company, 32. 2. MATTERS REVIEWABLE-RULINGS ON OBJECTION.-A ruling by the trial court upon objections to evidence in equity must be obtained or refused and exception taken, and these proceedings made of record, to warrant a consideration of the questions they suggest in an appellate court. d Ottumwa Box Car Loader Co. v. Christy Box Car Loader Co., 327. APPEAL FROM THE EXAMINERS-IN-CHIEF. See Priority of Invention, 18. APPEAL TO THE COMMISSIONER OF PATENTS. See Affidavits. NEW REFERENCE BY EXAMINERS-IN-CHIEF-PRACTICE. Where the Examinersin-Chief cite a new reference and recommend that certain of the appealed claims be rejected in view thereof, Held that the recommendaton will be considered on direct appeal to the Commissioner, if applicant so desires. Ex parte Dimm, 57. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. 1. FROM COMMISSIONER OF PATENTS-FAILURE TO FILE RECORD WITHIN FORTY DAYS-EXTENSION OF TIME.-Assuming, without deciding, that the Commissioner may have the power to grant an extension of the time for filing the record, that power, as is the case with the courts, can only be exercised before the expiration of the forty days provided by the rule. *Schmidt v. Tait, 214. 2. FURTHER PROCEEDINGS.-Where S. failed to file his record with the clerk of the court within the forty days allowed by the rule and thereafter T. filed a motion in the Patent Office requesting further proceedings, in accordance with the decision of the Commissioner, Held that it was the duty of the Commissioner to grant appellee's motion to take further proceedings necessary to dispose of his case, as though no notice of appeal had ever been given. *Id. APPEAL TO THE SUPREME COURT OF THE UNITED STATES. See APPLICANT AND PATENTEE. See Interference, 4, 5; Motion to Dissolve Interference. APPLICATION AND PATENT. See Priority of Invention, 17. APPLICATIONS. See Anticipation, 1; Construction of Claims, 22; Construction of Statutes, 2. ASSIGNEES. See Abandoned Experiments, 1, 2; Concealment of Invention, 1; Interference, 1, 12. ASSIGNEES' RIGHT TO PROSECUTE APPLICATION. RIGHT TO PROSECUTE-EQUITABLE ASSIGNEE.-Where the entire right, title, and interest in an application for patent is assigned, Held that the assignee should be allowed to prosecute the application to the exclusion of the inventor, even though the assignment does not contain a request that the patent be issued to the assignee. Ex parte Hill and Hill, 86. ATTORNEY. See Priority of Invention, 6; Reissues, 2. AUTHORITY OF THE COMMISSIONER OF PATENTS. See Appeal to the Court of Appeals of the District of Columbia, 1; Mandamus, 2, 3. BAR TO PATENT. See Abandonment of Invention; Construction of Claims, 11; Designs. BROAD AND NARROW CLAIMS. See Construction of Claims, 25. CANCELATION OF TRADE-MARK REGISTRATION. See Construction of Trade-Mark Statutes, 2, 12. NEW EQUITY RULES-INTERROGATORIES.-Held that the new equity rules apply to cancelation proceedings and that either party thereto may file interrogatories and that in the event of the failure to answer such interrogatories the party in default is liable to the penalty provided by Equity Rule 58. Whiting-Adams Co. v. Rubber and Celluloid Harness Trimming Co., 34. CERTIFIED QUESTION. See Court of Appeals. CERTIORARI. See Jurisdiction of the Supreme Court of the United States. CIRCUIT COURT OF APPEALS. See Jurisdiction of the Supreme Court of the United States. CITIZENSHIP. See Jurisdiction of Federal Courts. CLAIMS. Anticipation, 1, 2; Appeal to the Commissioner of Patents; Construction of Claims; Construction of Specifications and Patents, 4, 5. SCOPE FEATURES NOT CLAIMED.-If the mechanism described in a patent in itself discloses the principal advantageous feature of the invention, it is not necessary that it should be claimed in specific terms. Horton Mfg. Co. v. White Lily Mfg. Co., 285. COAT-OF-ARMS. See Construction of Trade- Mark Statutes, 5; Registration of TradeMarks, 2, 3. COLOR. See Similarity of Marks, 2. COMBINATION. See Anticipation, 3; Construction of Claims, 22; Division of Appli cations; Infringement, 1, 3, 4, 12, 14; Particular Patents, 7, 10, 11; Patentability, 3, 4; Pioneer Invention, 2; Rejection of Claims, 2; Right to Patent, 2. OLD ELEMENTS.-A new combination of old elements, whereby a new and useful result is produced or an old result is attained in a more facile, economical, and efficient way, may be as securely protected by a patent as a new machine or composition of matter. (Patentability of combinations of old elements as dependent on results attained, see note to National Tube Co. v. Aiken, 91 C. C. A., 123.) Ottumwa Box Car Loader Co. v. Christy Box Car Loader Co., 327. COMBINATION IN RESTRAINT OF TRADE. See Construction of Statutes, 1; Copyrights, 2. COMMERCE. See Construction of Trade-Mark Statutes, 8, 9; Copyrights, 2; Suits for Infringement, 1. COMMON KNOWLEDGE. See Validity of Patents. CONCEALMENT OF INVENTION. See Abandoned Experiments, 1, 2. 1. ABANDONED EXPERIMENT.-Where after a model of B.'s device was exhibited at a conference of the officials of the assignee company B. left the question of building such a device in the hands of the officials of this company, and it was not placed on the market or an application for patent therefor filed until C.'s device had been manufactured and B.'s attention called to a published account thereof, Held that the fact that B.'s work was disclosed to various workmen and officials of the assignee company does not take the case out of the ruling in Mason v. Hepburn, C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86. Brown v. Campbell, 37. 2. SAME. The man who secretes his invention makes easier and plainer the path of no one. He contributes nothing to the public. The law owes nothing to an inventor who hides away his invention, and to permit him to lie in wait for one who independently and in good faith proceeds to disclose the invention to the public would be against the policy of the patent laws. In the eyes of the law he is not the prior inventor. *Brown v. Campbell, 170. CONCEPTION OF INVENTION. See Abandoned Experiments, 1; Employer and Employee, 3; Interference, 2; Priority of Invention, 2, 3, 4, 6, 7, 9, 10, 11, 12. CONGRESSIONAL LEGISLATION. See Construction of Trade-Mark Statutes, 8; Jurisdiction of the Supreme Court of the United States, 2. CONSTRUCTION OF CLAIMS. See Construction of Specifications and Patents, 4, 5, 6, 7; Division of Applications; Infringement, 10; Motion to Dissolve Interference, 2; Particular Patents, 3, 7, 8. 1. PATENTABILITY-PROCESS OF PRODUCING GAS.-Claims for a process of producing gas, the essence of which consists in causing relative movement of parts of the incandescent mass, Held anticipated by the patent to Lackner, since the process claimed is performed by the apparatus of the patent. Ex parte Chapman, 11. 2. SAME-SAME.-Claims for a process of generating gas, Held unpatentable on the ground that the process is the same as that performed by the operation of the apparatus of the Lackner patent. *In re Chapman, 100. 3. PROCESS For Treating SemiSOLID MATERIAL IN THE CONTAINERS OF FILTERPRESSES.-Claims for a process of treating semisolid material in the containers of filter-presses, Held unpatentable in view of the prior art, since so far as the record shows the various steps of the process produce but a combination of known results. *In re Merrill, 113. 4. PATENTABILITY-TRACKER-BOx.-Claims for a pivotally-mounted tracker-box adapted to be swung into position in front of the keyboard when the piano is to be operated mechanically or to be swung below the keyboard, where it is out of the way, if it is desired to play the piano manually, Held unpatentable in view of the prior art. Ex parte Cooper, 26. 5. SAME-SAME.-Claims for a pivotally-mounted tracker-box for a piano-player, Held unpatentable in view of the prior art. *In re Cooper, 140. 6. SAME-BELT-LOOP.-A claim for a belt-loop, Held unpatentable where the article differed from that shown in a prior patent only in the manner in which it was sewed and the stitches used were shown in other patents. *In re McNeil, 141. 7. SAME-TRACK OF T-SECTION RAILROAD-RAIL BENT INTO CIRCULAR FORM.-Where the prior art shows endless tracks of T-shape made of cast-steel, Held that claims for a track consisting of a T-section railroad-rail bent into circular shape are not patentable, whatever invention applicant has made being confined to his apparatus and process. *In re Capron, 142. 8. SAME ROAD-PAVEMENTS.-Claims for a road-pavement consisting of a monolithic body of concrete and a semi-elastic wearing-surface of substantially pure bitumen, Held unpatentable in view of the prior art. *In re Groves, 144. 9. SAME APPLIANCE FOR SUPPLYING OXYGEN AND AIR TO DIVERS.-Claim for an appliance for supplying oxygen and air to divers, Held unpatentable in view of the prior art. *In re Fleuss and Davis, 149. 10. INTERFERENCE-USE OF TERM "MEANS."-Where the claim in issue includes "means for alternately conveying the cartons one at a time from said streams to the conveyer," Held that as there is no limitation that the means convey the cartons directly to the machine the claim should be construed broadly and includes a construction in which several elements are required to convey the cartons to the machine. *Johnson v. Martin, 162. 11. SAME QUESTION OF PATENTABILITY HAS NO BEARING THEREON.-Where it is contended that the issue should not be given a broad construction because the appellee's machine which was claimed as a reduction to practice is alleged to have been in public use more than two years before the filing of his application, Held that the question of priority is the only one before the court, and the question of a statutory bar to a patent containing the claims in interference is not in issue. *Id. CONSTRUCTION OF CLAIMS-Continued. 12. PATENTABILITY-LIQUID-MEASURING DEVICE.-Claims for a measuring device for aerated liquids under high pressure, Held unpatentable in view of the prior art. *In re Pein, 167. 13. SAME ORNAMENTAL ARTICLE.-Claims for an ornamental article comprising a botanic specimen embedded in a base, Held unpatentable in view of the prior art. *In re Heeren, 174. 14. SAME MACHINE for Wax-Treating Parts OF BOOTS AND SHOES.-The inclusion in a claim for a machine for wax-treating parts of boots and shoes as one of the elements "a working face of combustible fabric," Held not objectionable, since the limitation "combustible" excludes many materials which are inappropriate to applicant's purpose, and by excluding such fabrics applicant has more accurately defined his invention. Ex parte Pease, 48. 15. Same-Refrigerator-Car-DOOR PACKING.-Claims for a refrigerator-cardoor packing, Held unpatentable in view of the prior art. *In re O'Connor, 178. 16. SAME-INVENTION-SUBSTITUTION OF A BUTT-WELD FOR A CRIMP-SEAM.— Claims for a metal bed-pan formed of two parts, with the joining edges buttwelded, Held not patentable over the prior art, as the substitution of a buttweld for a crimp-seam does not constitute invention. *In re Hogan, 209. 17. READING LIMITATION INTO CLAIM.-Where a patentee has made an improvement entitled to protection and in the claim directed to that feature it is described in terms which are capable of a broad construction, rendering the claim invalid in view of the prior art, or of a narrower construction, which will preserve to it the validity which it should have had, the courts will give it that narrow construction and so sustain the patent; but where from the specification or history of the application or the language of the claim it is clear that the patentee intended to claim and the Patent Office to grant the broader monopoly, which turns out to be invalid, the courts will not, for the arbitrary purpose of saving the claim, read into it a limitation which it does not have. Wm. B. Scaife & Sons Co. v. Falls City Woolen Mills, 236. 18. DIFFERENTIATION OF CLAIMS.-The propriety of the rule that proper construction and effect can be given to each claim of a patent only by differentiating it from the other claims in a normal case, where it can be clearly applied, is not affected by the fact that in many cases it is difficult to make such differentiation because of repetition and confusion. Id. 19. SAME. When satisfied that a particular claim had for its dominant purpose to secure one particular feature, we should not construe it as specific also in its calls for other elements. Id. 20. AMBIGUOUS-LIMITATIONS.-In construing a claim in that respect ambiguous, a given element should be applied if its presence was necessary to distinguish from the prior art or from the other claims. Otherwise it should not operate as a limitation. Id. 21. EFFECT OF PATENT OFFICE PROCEEDINGS.-A statement by the solicitor that the claim was to be confined to the "exact form" Held not an estoppel, because imitation was not required, and not a persuasive admission because of the context. Id. 22. IMPLIED TERMS.-Elements in claims should be read with reference both to the structure and the function given in the description of the invention and interpreted to include such connections and relations of the several means of the combination which are named as are implied therewith to make them operative. Jones v. Evans, 262. CONSTRUCTION OF CLAIMS-Continued. 23. "SUBSTANTIALLY AS DESCRIBED."-At least in all recent patents, granted since the rule of the Patent Office established by the decision of the Commissioner in 1902 in ex parte Shepler (C. D., 1903, 17; 102 O. G., 468) has been in force, and save in exceptional instances, the presence or absence of the phrase "substantially as described" in a claim is of no interpretative importance, words of such import being implied if not expressed. Such words if present do not limit the patentee to the exact mechanism described nor deprive him of the benefit of the rule of equivalents to the same extent as if they were absent. National Tube Co. v. Mark et al., 310. 24. RULES OF PATENT OFFICE.-When the Patent Office has a settled rule of con struction under which a certain phrase in a patent grant has a fixed meaning, acquiesced in by the patentee, the courts cannot afterward rightfully say that the phrase means something more or something less. Id. 25. LIMITATION.—Where a patent contains both a broad and a narrow claim and suit is brought on the broad claim, the court cannot construe into it a limitation not therein expressed, but which is expressed in the narrower claim, and by which alone one is distinguished from the other. Id. 26. ESTOPPEL BY PROCEEDINGS IN PATENT OFFICE.-It is not necessarily important that when the Examiner rejects a claim in an application for a patent on a reference to an earlier patent the applicant thereupon amends the claim, but it is of importance and creates an estoppel against the patentee only when it additionally appears that the effect of the amendment was to narrow the claim. Id. CONSTRUCTION OF RULES. See Signature to Specification. CONSTRUCTION OF SPECIFICATIONS AND PATENTS. See Construction of Claims, 17, 23; Particular Patents; Pioneer Invention. 1. SUBJECTS OF PATENTS "MANUFACTURE"-Street-RAILROAD TRANSFERTICKET. A street-railroad transfer-ticket devised to keep a check on passengers and conductors with respect to the time when used, in part by means of a coupon, the body portion when the coupon is detached being receivable only during the forenoon hours, may properly be classed as an article to be used in a method of doing business and as such is a "manufacture" within the meaning of Revised Statutes section 4886, (U. S. Comp. St., 1901, p. 3382,) and a proper subject of a patent. Cincinnati Traction Co. v. Pope, 216. 2. SAME-SAME-SAME.-The term "manufacture" as used in the patent law has a very comprehensive sense, embracing whatever is made by the art or industry of man, not being a machine, a composition of matter, or a design. dId. 3. NATURE OF PATENT "CONTRACT."-A patent is a contract, and it must be interpreted by the same rules of construction as other contracts. Century Electric Co. v. Westinghouse Elecrtic & Mfg. Co., 267. 4. SPECIFICATION AND CLAIMS-CONSTRUCTION AS A WHOLE.-The intention of the parties shall be deduced from the entire contract, not from any part of it or without any part of it. The specification which is a part of the same application as are the claims must be read and interpreted with them, not for the purpose of contracting or of expanding the latter, but to ascertain from the entire agreement the actual intention of the parties, and that intention, when ascertained, should prevail. Id. 5. SCOPE. The scope of a patent must be ascertained from the entire instrument, and although a claim cannot be enlarged by the language of the specification it may be illustrated thereby. Horton Mfg. Co. v. White Lily Mfg. Co., 285. |