« iepriekšējāTurpināt »
early sewing machine patent, one of his claims was drawn to “a needle with the eye near the point” (19), which is an essential part of all sewing machines, although many different forms of mechanism have been employed to operate it. During the life of his patent Howe could prevent all persons from using such a needle in any kind of a sewing machine, whether other parts of the machine were similar to his or not.
Where some of the parts of a combination operate to impart movement to other parts, it is customary to refer to the former by such general terms as means, mechanism, or devices, for imparting such movement. These terms will not be construed to cover all possible means, mechan ism, and devices, but will include all such as are the mechanical equivalents (20) of those described.
Where the description and drawings of a machine or device show alternative forms, one or more general claims can be drawn, which, in terms, cover all the alternative forms shown; but only one of such forms can be claimed specifically. The reason for this rule is that only one invention can be claimed in a single application, and all the claims must relate to the same invention. Two or more claims drawn specifically to different structures are an admission that there are two or more inventions; but, since the whole includes all of its parts, general claims covering all of such structures and specific claims covering only one of them, are not such an admission. It is
(19) Deering v. Winona Harvester Wks., 155 U. S. 302.
(20) Mechanical Equivalents. See § 15 above, and notes (24) and (25).
therefore advisable in such a case for the applicant to elect which one of the alternative forms he prefers, and to claim it specifically.
§ 29. Same (continued): Functionality. It is not proper to describe a combination of parts by its function or effect. The claims must be drawn to describe a structure, and the structure should be described positively, and not by inference (21). Thus a claim reading: “a valve which is adapted entirely to close communication between the steam chest and the tallow pipe when the engine is working steam,” was held objectionable on this ground, as it is evident that the words do not describe how the valve is constructed, but only tell what it does. And in a quite recent case it was said. “It is well settled law that a patent cannot issue for a result sought to be accomplished by the inventor of a machine, but only for the mechanical means or instrumentalities by which that result is to be obtained. One cannot describe a machine which will perform a certain function and then claim the function itself, and all other machines that may be invented by others to perform the same functions” (21a).
$ 29a. Execution. The specification and claims must be signed by the applicant, and attested by two witnesses (22).
§ 30. Drawings. In all cases where the nature of the case admits of drawings (23), the applicant must furnish
(21) In re Thomas, 15 Gourick's Wash. Dig. 38-16.
(23) Probably all cases of machines, manufactures and designs, and most cases of arts.
one copy, signed by him, or by his attorney in fact, and attested by two witnesses. The drawing must show every feature of the invention covered by the claims. When the invention consists of an improvement on an old machine the drawing must exhibit, in one or more views, the invention itself, disconnected from the old structure, and also in another view so much only of the old structure as will suffice to show the connection of the invention therewith. The drawings are photo-lithographically reproduced by the Patent Office and therefore it is required that the char- . acter of each drawing be brought as nearly as possible to a uniform standard of excellence, suited to the requirements of the process and calculated to give the best results. The Office has accordingly adopted a number of rules governing the size, thickness, and quality of paper used, the color and quality of ink, character of lines, etc., all of which must be rigidly observed (24).
When the invention or discovery is of a composition of matter, the applicant, if required by the Commissioner, must also furnish specimens of ingredients and of the composition, sufficient in quantity for the purpose of experiment (25). And in all cases which admit of representation by model, the applicant, if required by the Commissioner, must furnish a model of convenient size to exhibit advantageously the several parts of his invention or discovery (26). Models must conform to several requirements as to size, material, character of construction, and so forth, laid down by the rules (27).
(24) Rule 52.
Models are very seldom required, and when not called for by the Commissioner, are not admitted (27a).
§ 31. Oath. The applicant is also required to make an oath, or affirmation, as to the facts, hereinbefore considered, which entitle him to a patent (28). The Rules of Practice of the Patent Office suggest a form for this oath, which is universally followed (29).
& 32. Actions of examiners. Applications filed in the Patent Office are classified according to the various arts, and are taken up for examination by primary examiners in the Patent Office in regular order of filing. If the application is found in all respects proper, and none of the grounds upon which patentability is denied are found to exist, the patent is allowed and the letters issue in due course. Otherwise any one or more of such grounds may be raised, and the applicant notified thereof. As it is the ordinary practice for patent solicitors to endeavor to obtain as broad claims as possible, and as it is the duty of the Patent Office not to allow a claim broader than may be sustained under the prior art, the first action usually results in a rejection of one or more of the claims, on the ground of want of novelty. The reasons for such rejection are fully stated, and such information and references are given as may be useful in aiding the applicant to judge of the propriety of further prosecuting his application, either with or without amendment, or of abandoning the same. Ordinarily, such rejection of a claim on the ground of want of novelty, as above noted, will be upon
(27a) Rule 56.
a reference to a prior United States, or foreign, patent.
$ 33. Amendments. The applicant may amend his application, both as to matters of form and substance, either before or after the first rejection or action; and he may amend as often as the examiner presents new references or reasons for rejection. The period during which an amendment may be made after any official action is one year (30). When an application is filed on an invention which is so far in advance of the state of the art as to make the invention of comparatively little economic value at the time, it is often the practice of skilful solicitors to delay the issuing of the patent by “hanging up" the application in the Patent Office as it is called, since the seventeen year period of protection dates from a day not later than six months after the day the patent is allowed. Such delay is brought about by refraining from making such amendments as will put the application in condition for allowance, and by taking the full period of time allowed, for each amendment. The Selden patent on automobiles (30a) was granted in 1895, on an application filed in 1879.
$ 34. Interferences. Whenever two or more applicants, whose applications are pending in the Patent Office at the same time, claim substantially the same invention; whenever an applicant claims to be the prior inventor of an invention for which a patent has been granted within two years before the filing of his application; and in cer
(30) U. S. R. S., Sec. 4894, as amended March 3, 1897. The Act of 1870 allowed two years.
(30a) No. 549160. Nov. 5, 1895.