The difficulties both in examining claims for novelty and in appraising them for purposes of litigation have greatly increased as inventions have become more numerous and more complicated. Our practice permitting one patent to cover several interrelated inventions and numerous subsidiary inventions under each dominant invention, it is becoming more and more important to emphasize the requirement of the statute for that distinction of claim which consists in distinguishing between claims. The courts have for a long time severely criticized both the superfluous claim and the obscure claim, and on various grounds. In Brush Electric Co. v. The Electrical Accumulator Co., et al. (C. D., 1891, 477; 56 O. G., 1334; 47 Fed. Rep., 48) the court condemns proxli claims and says that making several claims to the same matter is "calculated to embarrass the inventor and mislead the public." In Carlton v. Bokee (2 O. G., 520; 17 Wall., 463) the Supreme Court condemns such indistinct claims and intimates that if they were intentionally made obscure they would invalidate the patent. It says:

Where a specification by ambiguity and a needless multiplication of nebulous claims is calculated to deceive and mislead the public, the patent is void.

In Benjamin v. Dale (141 Fed. Rep., 981) Judge Holt complains of supernumerary claims, saying they "simply make burdensome the investigation of the claims." In In re Perlman (C. D., 1913, 299; 186 O. G., 560; 39 App. D. C., 447) the claims were rejected because they were supernumerary, as well as because they were functional.

In Green Felt Shoe Co. v. Dolgeville Felt Shoe Co. (210 Fed. Rep., 164) Judge Lacombe intimates that claims which even by construction are duplicates of others "must be struck out as superfluous." The same in Weber Electric Co. v. National Gas & Electric Co., (212 Fed. Rep., 950.)

In Barber v. Spalckhaver (C. D., 1914, 165; 201 O. G., 268; 41 App. D. C., 576) it would appear that a form of claim failing to point out the essence of the invention had been responsible for the erroneous decision of an interference.

It appears to me clear that the crying abuse of superfluous and obscure claims is due to the failure on the part of both the Examiners and the attorneys to see to it that each claim has a definite point in view, is concise, and that the claims of a set are self-distinguishing and self-classifying. It is quite possible that the profession has made a fetish of form. Even the objections to a claim for incompleteness or for aggregation might be better stated as objections for indistinctness. Completeness of wording is very different from completeness in sense.

Something must always be assumed or deduced from the specification. During all the forty odd years of the custom of writing each claim "complete within itself " it has been the almost universal habit

for the claim to refer to the specification for further light by the clause "substantially as described." Why a reference to applicant's claim 1 is not sufficient to fix the relation of the cap-strip and brace to the roof and car-body in claim 2 I am unable to see. The claim is not addressed to anybody who has not read the specification nor addressed to any but those skilled in the art.

Attorneys in preparing a patent, Examiners in examining claims, and the court in construing claims always proceed on the principle of concentrating attention on one particular idea, which is the essence of the invention, and subordinating everything else. When a court analyzes and distinguishes a set of claims, I think it must always, either consciously or unconsciously, employ the method of analysis of which an example is found in Loggie v. Puget Sound Mills & Timber Co., (194 Fed. Rep., 158, p. 162.) If the court there found it convenient to say that claim 2 is the same as claim 1, "with the addition" of some other element which is the essence of claim 2, no reason appears to me why the patentee should not have been allowed to make exactly the same analysis and statement in writing his claim.

The form of claim proposed by the applicant is not such an innovation as might be supposed. It differs from the form of claim used by the Germans only in that it does not employ a preamble which fully sets forth all the essentials of the prior art. It does not greatly differ from the style of claim employed by the English. It is quite possible the proposed form of claim is in line with the now common requirement of the courts that a plaintiff specify precisely the ground of his charge for infringement, pointing out just which claim is infringed and which not. I can see no reason why the courts would not approve a form of claim which itself points out its distinctions from other claims.

It has been suggested that the proposed form of claim would inevitably make a clear distinction between the several inventions covered in one patent; that such a claim would be self-analyzing and self-classifying, and therefore make the examination of the claim easier, render it easier to detect aggregation, and greatly reduce the danger of the Examiner being misled into the supposition that he is dealing with a new combination merely because he finds a new element in the claim. I think it clear that at least it would reduce the number of claims and make division between independent inventions clear and easy.

There are doubtless many cases where claims could not be successfully written in dependent clauses; but it seems to be perfectly logical to allow an applicant who wishes to do so to write his claim in that form in a proper case, as this is. A too strict adherence to form may be responsible for the obsecurity and superfluity of claims

in many patents. There is nothing in the books to show how the courts may regard a claim in this form; but when the applicant claims that he can by this means make his claims self-analyzing and self-classifying it is worth while making the experiment.

I conclude that the form of claim proposed by the applicant meets the requirements of the law and in this case clearly points out the invention. To this extent the doctrine in ex parte Sexton is disapproved.

The petition is granted. The Examiner is instructed to withdraw his objection to the form of claims 2 and 3.

EX PARTE TASKER.

Decided October 13, 1916.

236 O. G., 889.

ABANDONMENT-UNAVOIDABLE DELAY-MISTAKE BY THE PATENT OFFICE.

The failure of the Office to notify an applicant whose claims were under rejection of the allowance of claims for the same invention to a rival inventor, so that an interference might be had, before passing the rival case to issue, does not excuse the applicant's failure to reply to the rejection within the year allowed by law or justify a holding that the applicant's delay in acting upon the case was unavoidable. (Ex parte McKee, C. D., 1907, 255;

130 O. G., 980, affirmed.)

ON PETITION.

BRASSIÈRE-BUCKLE.

Messrs. Banning & Banning and Mr. William P. Bond for the applicant.

EWING, Commissioner:

The applicant complains that after rejecting her claims upon a very simple invention the Office has granted a patent upon the same invention to a rival inventor, who filed ten months later.

An examination of the record shows that this is true. The only thing that can be said by way of extenuation is that the Examiner before whom these cases came has to pass upon over two thousand applications every year; that the two applications in question were assigned for examination to different assistants, and that the last action upon the application here involved preceded the final action. upon the application of the rival inventor by almost exactly one year.

There can be no doubt that the Examiner was charged by the statute with the duty of notifying applicant of the presence of the rival application before passing it to issue; but instances of failure to perform this duty necessarily occur in the handling of nearly seventy thousand applications a year by a corps of nearly four hun

dred men, and any applicant who fails to exhaust his rights in demanding consideration by the Examiner or in prosecuting appeals from adverse final actions does so at the risk that some more insistent applicant may secure more favorable treatment.

The fact that an officer of the Government has failed to perform a duty to a claimant imposed by statute cannot relieve the claimant of any duty imposed upon him by statute.

The only question here presented is therefore whether the failure of the applicant to respond to the rejection of May 15, 1915, within one year thereof was unavoidable.

The record presented would seem to indicate that it was deliberate, the applicant being satisfied that the Examiner's rejection was sound and that no useful purpose could be served by a further prosecution of the application.

In ex parte McKee (C. D., 1907, 255; 130 O. G., 980) an exactly parallel situation was presented. McKee's application was rejected. February 5, 1906, and became abandoned one year thereafter. On August 25, 1906, an application for similar subject-matter was filed by one De Remer, which was allowed October 30, 1906, and patented May 14, 1907. McKee's petition to revive was filed June 20, 1907. The petition was three times considered and denied on the ground that the delay in prosecuting the application was not shown to have been unavoidable.

The petition is denied.

EX PARTE NORTHWOOD.

Decided August 1, 1916.

236 O. G., 889.

DESIGNS-FLOWER-PEDESTAL-COMPLETE ARTICLE MUST BE SHOWN.

Where the applicant showed his design for a flower-stand pedestal rising from the center of a bowl, but the bowl was merely indicated in dotted lines and there was nothing to indicate where it merged into the pedestal, Held that he should be required to show some complete article, including a base for the pedestal, but that he might be permitted to indicate in the specification that he regards the pedestal as the invention and contemplates placing it on other articles.

ON PETITION.

TUBE-RECEIVING PEDESTAL FOR FLOWER-STANDS.

Mr. H. E. Dunlap for the applicant.

CLAY, Assistant Commissioner:

The applicant petitions that the Examiner be directed to withdraw his requirement that the structure shown in the drawing shall be shown in full lines. Although the specific action of the Examiner

is in terms a rejection on the ground that the applicant does not disclose a complete article of manufacture, the matter is believed to be properly one brought directly to the Commissioner, because it raises questions of form and practice rather than merits.

The claim in this case covers the design as a whole, and not any part of it as a part; and it is to be tested as a whole, as to novelty and infringement, as the Supreme Court said in the case of Dobson v. Dornan et al., (C. D., 1886, 202; 35 O. G., 750; 118 U. S., 10,) and it is for just this reason, apparently, that the applicant objects to making such a drawing (the sole description) of his design for a flower-stand pedestal as might constitute the bowl an essential part of his design. He says he invented a design for a pedestal and not a design for a therefore wishes to show the bowl in dotted lines.

bowl, and

Applicant ought to be enabled in some way to show that his design resides in the pedestal itself; but, on the other hand, he may not do so in the manner here attempted, because his drawing does not show a design for a pedestal, but rather a figure which fades away at the bottom into a twilight zone and finally nothing. There cannot be a pedestal without a base. It is not at all obvious how his design should be applied to any article, as was the case in the surface design in ex parte Fulda, (C. D., 1913, 206; 194 O. G., 549.)

There is no reason now apparent in this case why the applicant might not be permitted to state in his specification that he does not claim the bowl as part of his design and contemplates placing the pedestal on other articles.

The Examiner is sustained in his action requiring that there be shown in full lines some complete article, including a base for the pedestal; but he should allow some change in the specification of the import above suggested.

EX PARTE HABENICHT AND BECKE.

Decided March 15, 1917.

236 O. G., 1219.

1. EXTENSION OF TIME, ACT OF AUGUST 17, 1916-RECIPROCAL PRIVILEGES-TIME OF FILING.

It is assumed that in view of the act of August 17, 1916, extending the time for filing an application where the failure to file it within twelve months was due to a state of war, a similar extension will be granted by the German Government to citizens of this country under the proclamation of May 7, 1915. (215 O. G., 979.)

2. SAME-SAME-SAME-DELAY DUE TO WAR.

The showing made Held sufficient to establish that the failure to file the application in this country within twelve months of the filing of the ap