DEFECTIVE PATENTS. See Damages and Profits, 1; Patents, 2.

1. STATEMENT-Patent DEFECTIVE BY REASON OF THE OMISSION OF THE SIG-
Nature of THE SECRETARY OF THE INTerior-ProceEDINGS AGAINST.-
The patent had not at the date of the suit been signed by the Acting Secre-
tary of the Interior, but was subsequently signed by him. The circuit court
dismissed the bill. Complainant took an appeal in 1885 to this Court. In
1887 Congress passed an act for relief of patentees, making the patent legal,
valid, complete, and operative from its original date, December 28, 1880.
Held, while a patent of the United States can be attacked for defects upon
its face only by regular proceedings instituted for that purpose, and is not
open to collateral attack, except where specially provided by statute, this
rule applies only to such patents as have been in fact executed under proper
authority, and does not apply to any others. * Marsh et al. v. Nichols, Shep-
herd & Co., 263.

2. SAME-CERTAIN DEFECTS SPECIFIED.-Thus it may be shown that the patent
was never executed by the person whose name appears on it, or that it was
wrongly dated, or was never signed by the person who appeared to have
signed it, or was signed after the official was out of office.

Id.

3. DEFECTIVE GRANT MAY BE CORRECTED BY EXISTING OFFICERS OF THE DE-
PARTMENT.-Such grants, if defective from insufficient execution, may be
corrected subsequently, upon application to the proper Department; but the
correction must be made by the existing officers of the Department. *Id.
4. SAME BUT DATE OF CORRECTION BECOMES THE TRUE DATE OF PATENT. —
The correction by the same Acting Secretary of the Interior is sufficient, the
Commissioner of Patents remaining the same at the date of the correction,
which is the true date of the patent. Id.

-

5. DATE OF CORRECTION MAY BE ESTABLISHED BY PROOF.-In this instance the
actual date of correction, being more than six months after the date written
in the patent, may be shown by proof. *Id.

DEFECTIVE SPECIFICATION. See Particular Patents, 83.

DEFECTS. See Interference, 1, 2.

DEFENSE. See Citizenship; Joint Invention, 1; Practice in the Courts, 2; Suits for
Infringement, 2.

DELAY. See Abandoned Applications, 1; Amendments, 2, 3, 4; Appeal to the Commis-
sioner, 4; Priority of Invention, 2, 6; Reissues, 8; Rehearing, 2, 9, 11, 12.
DELAY IN BRINGING SUIT.

INFRINGEMENT-Delay in Bringing Suit.—While there was such delay in bring-
ing suit as to preclude recovery of damages for prior infringement, there was
neither conduct nor negligence which could be held to destroy the right to
prevention of further injury. Menendez et al. v. Holt et al., 344.

DEMURRER. See Assignments, 2; Copyrights, 5.

DESCRIPTION. See Claims, 1; Construction of Claims, 6; Construction of Specifica-
tions and Patents, 2,7; Motion to Dissolve Interference, 6; Particular Patents, 5;
Priority of Invention, 1; Reference to Another Pending Application.

1. LETTERS PATENT AS PRIMA FACIE EVIDENCE.-The rule is well settled that the
production of Letters Patent for a Design establishes a prima facie right in
the patentee which can only be defeated by proofs which are of convincing
force. Untermeyer v. Freund et al., 424.

2. DESIGN PATENTS AS DISTINGUISHED FROM PATENTS FOR INVENTIONS.-The、
validity of a patent for a Design does not depend upon the exercise of the
"inventive faculty of the mind" in the sense in which that expressiou is
used in connection with inventions which relate strictly to the useful arts.
*Id.

DESIGNS-Continued.

3. DESIGNS ANALOGOUS TO COPYRIGHTS.-The policy which protects a Design is
akin to that which protects the works of an artist by copyright. If the
Design produce a different impression upon the eye, even though it be simple,
and does not show wide departure from other designs, its use will be pro-
tected. *Id.

DEVICE SHOWN BUT NOT CLAIMED. See Invention Described but not Claimed.
DILIGENCE. See Abandoned Applications, 1; Interference, 14; Priority of Invention, 3.
DISCLAIMERS. See Construction of Specifications and Patents, 2, 3, 5, 6; Infringement,
7,22; Particular Patents, 70.

1. DISCLAIMER NO REMEDY.-To disclaim the skein except for use in the process of
dyeing would not chauge the patent into one for the process. The patent
for the skein would still be void and the process of using it be still free from
the patent. *Grant v. Walter, 476.

2. WHEN MAY DISCLAIMER BE FILED IN COURT AFTER HEARING AND DECISION ON
THE MERITS.-Where a case had been heard and decided upon its merits,
Held the plaintiff could not file a disclaimer in court or introduce new evi-
dence upon that or any other subject, except at a rehearing granted by
the court, upon such terms as it thought fit to impose. Roemer v. Neumann
et al., 654.

3. SAME

EFFECT ON DISCLAIMER FILED AFTER DECISION ON THE MERITS OF NOT
COMPLYING WITH TERMS IMPOSED AS CONDITION PRECEDENT TO REHEAR-
ING.—Where a formal petition for rehearing had been filed to enable plaintiff
to avail himself of a disclaimer filed after decision on the merits and the peti-
tion had been granted conditionally, Held that the terms imposed as a coudi-
tion precedent to the rehearing not having been complied with the disclaimer
was not in the case. *Id.

DIVISION OF APPLICATION. See Appeal to the Commissioner, 1; Joinder of In-
vention; Process; Separate Patents.

1. JURISDICTION OF EXAMINERS-IN-CHIEF IN CASES INVOLVING MERITS.-One of
the claims in an application has been rejected because it covered an illegiti-
mate combination or an aggregation of elements. Applicaut appealed from
such rejection to the Examiners-in-Chief. The Board refused to take juris-
diction of the appeal and remanded the case to the Primary Examiner for re-
consideration and such action as would dispose of the merits of all the claims
The Examiner referred the case to the Commissioner for instructions. When-
ever a claim for an illegitimate combination is presented in an applicatiou
which also contains claims for different elements constituting distinct and
separate inventions which ought not to be claimed in the same application,
a vital objection as to form is presented, and the claim may be rejected for
the purpose of enabling the Office to require division. Such a rejection,
though relating to form, involves merits, and an appeal therefrom should lie
to the Examiners-in-Chief. Ex parte Carter, 100.

2. REASONS FOR REQUIRING DIVISION.-Division must be required for two rea-
sous: first, because the distinct subjects of invention ought not to be em-
braced in one application; second, because the applicant has not the right by
aggregating claims to any number of distinct inventions under a false claim
to a combination to force the Office to examine and act upon his several in-
ventions. Id.

3. DIVISION-PROCESS and Product-RE-EXAMINATION OF EX PARTE Blythe,
(C. D., 1885, 85.)-While there is no express provision of the statute limit-
ing or ontrolling the discretion of the Commissioner in embracing more than
one invention in the same Letters Patent, and the courts would not for that
reason declare such a patent void, the statute does prohibit the introduction
into reissue patents of new matter or other invention than that covered by

DIVISION OF APPLICATION-Continued.

the original patent. The Supreme Court has held that under this prohibi-
tion no new matter could be introduced; that. process and apparatus are
separate and distinct inventions, and that when a patent for one has issued,
although the other was distinctly shown, & reissue for both could not be
maintained. (Burr v. Duryee, 1 Wall., 531; James v. Campbell, 104 U. S., 356;
Powder Co. v. Powder Works, 98 U. S., 126; Heald v. Rice, 104 U. S., 737.) Ex
parte Tainter, 133.

4. SAME.-The opposite conclusion has been reached in regard to process and prod-
uct when both were new and the process could produce no other product
and the product could be made by no other process. This conclusion is based
upon the premise that such process and product contribute one single inven-
tion. It must be deemed settled by the highest authority that such processes
and products are not separate and distinct but unitary inventions, and that
the process and product may be regarded and claimed as parts of such in-
vention, much as different elements in a combination may be separately
claimed. This conclusion finds satisfactory support in the nature of the in-
vention itself, as well as in the character of legal property residing in it. Id.
5. SAME. This conclusion excludes all other cases of process and product, such as
when either process or product is not new, or when the product can be made
by some other process or the process will produce some other product. Id.
6. SAME. The novelty of the table in the present case doubted, but not determined;
but the novelty and patentability of the process denied. The question of
division in such case, being a preliminary one, must be settled first, and con-
sequently the action of the Examiner in requiring division is affirmed for this
reason, and not upon the general proposition. Id.

7. PATENTS UPON DIVIDED APPLICATIONS--VOID PROCESS.-Under Rule 41, Rules
of Practice of the Patent Office, as interpreted by ex parte Blythe (30 O. G.,
1321; C. D. 1885, 82), and ex parte Herr (41 O. G., 463; C. D. 1887, 105), two
patents in which the description was substantially the same, No. 348,072 for
a composition for transfer surfaces for producing copies of type-writing, and
No. 348,073, for a process of reproducing surfaces for type-writing and mani-
folding, were obtained with a single claim on each, instead of one patent
with two different claims, each embodying one of the above inventions.
Suit for infringement was instituted upon Patent No. 348,073 alone. Held
that the claim of this patent covering the mere taking of a coloring-sub-
stance already known and applying it to paper did not involve invention,
and in view of the state of the art the patent is void. * Underwood et al. v. Ger-
ber et al., 519.

8. DIVISION-PROCESS AND APPARATUS.-Division of an application should not
be demanded unless there is in the given case such a total want of interde-
pendence between the two matters claimed as would render them absolutely
independent and distinct inventions. Ex parte McMahan, 169.

9. SAME.-When the apparatus cannot operate for any other purpose than to carry
out the process, and the process can be carried out only by a machine oper-
ated substantially upon the principle of that shown by the applicant, divis-
ion should not be required. Id.

10. SAME.-In such case there is no reason for requiring a division upon the ground
that the examination of the Office would be facilitated, because the field of
search is precisely the same whether the application is divided or not. Id.
DRAWINGS. See Combinations, 2; Construction of Claims, 4; Motion to Dissolve Inter-
ference, 6; Priority of Invention, 3, 8; Reissues, 6.

1. ALTERATIONS OF DRAWINGS.-When a figure is added to an original drawing on
file in the Office, without direction or permission of the Office, it must be
erased or canceled, even though it has been added in good faith.
Ex parte

Condrou 11

DRAWINGS-Continued.

2. CORRESPONDENCE BETWEEN LETTERING of DRAWINGS AND Reference THERE-
TO IN DESCRIPTION.-It cannot be recognized as good practice to refer in
the description of a process for which a patent is sought to a very few of the
letters upon the drawings which illustrate a complicated machine for carry-
ing out that process. The lettering of the drawings should correspond to the
references contained in the descriptive portion of the specification. Ex parte
Borgfeldt, 199.

3. ADDITION OF FIGURES TO DRAWINGS-NEW MATTER-The unauthorized addi-
tion of new figures to the drawings is a violation of the rules. The question
of new matter involves the merits and is appealable to the Examiners-in-
Chief. Ex parte Burt, 251.

DUTY OF COMMISSIONER OF PATENTS. See Commissioner of Patents.
DUTY OF EXAMINERS. See Examination of Application, 2.

ENLARGEMENT OF CLAIMS. See Particular Patents, 41, 46, 54, 59; Reissue.
EMPLOYER AND EMPLOYÉ.

EMPLOYER AND EMPLOYÉ.-The relation of employer and employé cannot be estab-
lished where it appears that one party received no pay whatever for his serv-
ices, and that it was not pretended there was any promise of payment on
the part of the other or expectation of payment on the part of the former,
although it appears that there were frequent interchanges of courtesies be-
tween the parties and “in this interchange of courtesies that honors were
easy." Wherry v. Heck, 901.

EQUITABLE RIGHTS. See Rehearing, 6.

EQUIVALENTS. See Construction of Specifications and Patents, 2; Infringement, 2,4
6,7,8; Particular Patents, 15, 73.

ERROR. See Priority of Invention, 3, 4, 5.

ESTOPPEL. See Suits for Infringement, 2.

EVIDENCE. See Certified Copies as Evidence; Damages and Profits, 2; Designs, 1;
Infringement, 15; Testimony before Examiner.

EVIDENCE-TESTS.-An ex parte test made by the defendant and a defective test

made by the complainant Held to be entitled to no weight in evidence. *Fer-
noline Chemical Company v. Carolina Oil and Creosote Company, 352.
EVIDENCE OF INVENTION ABROAD. See Invention, 11; Priority of Invention, 7.
EVIDENCE OF INVENTION IN FOREIGN COUNTRY.-Evidence of invention in a for-

eign country cannot be received in an interference proceeding unless such
evidence is in the form of a publication or patent, or is for the purpose of
showing that some one of the contestants is not an original inventor. Green
v. Hall et al., 110.

EXAMINATION OF APPLICATION. See Amendments; Appeal to the Examiners-in-
chief, 1; Attorneys, 1; Caveats; Claims; Construction of Specifications and Pat-
ents, 2; Cross-References; Division of Applications; Joinder of Invention ;
Oath; Priorty of Invention, 9; Rejected Applications.

1. IN WHAT SHOULD REJECTION UNDER RULE 133 CONSIST.-An action by the Ex-
aminer, which, if incorrec, would entitle the applicant to an appeal upon
the merits, should consist in a full rejection, and not merely in noting that
the claims are objectionable. Ex parte Baker, 232.

2. DUTY OF EXAMINER TO GIVE INFORMATION AS TO OBJECTIONS.-It should never
be considered a work of supererogation on the part of an Examiner to give
to an applicant such full and complete information as to objections as will
enable him to judge of the propriety of complying with the demands of the
Examiner or of taking a petition or appeal. Ex parte Burt, 251.

3. ALL QUESTIONS RELATING TO PATENTABILITY SHOULD BE ACTED UPON BEFORE
APPEAL.-The Examiner should act with reference to all questions which
may be raised in rejection of any or all of the claims, so that the case may

EXAMINATION OF APPLICATION-Continued.

go forward to the Examiners-in-Chief as a whole, and all matters relating to
patentability may be determined by that tribunal in one proceeding. Id.
EXAMINERS. See Appeal to the Commissioner, 5; Appeal to the Examiners-in-Chief,
2; 3 Claims; Examination of Applications; Interference, 7, 8; Motion to Dis-
solve Interference, 8; Rejected Applications.

EXAMINERS.-Complaints against Examiners. Ex parte Anderson, 167.

EXAMINERS-IN-CHIEF. See Appeal to the Examiners-in-Chief; Drawings, 3; Exam-
ination of Application, 3.

EXAMINER OF INTERFERENCES. See Appeal to the Commissioner, 5; Motion to
Dissolre Interference, 5.

EX PARTE TESTS. See Evidence.

EXPIRATION OF PATENTS. See Suits for Infringement, 1.

FOREIGN INVENTION. See Evidence of Invention Abroad.

FOREIGN PATENT.

See Evidence of Invention Abroad; Limitation of United States

Patents by Foreign Patents Previously Granted; Particular Patents, 4.
FOREIGN PUBLICATION. See Evidence of Invention Abroad; Rehearing, 16.
FORMER DECISIONS AFFIRMED. See Invention, 10; Particular Patents, 35; Re-
hearing, 4, 5, 6.

FORMER DECISIONS CONSTRUED. See Division of Application, 3, 4, 5, 6; Priority
of Invention, 4, 5.

FORMER DECISIONS CONSTRUED.--Smith & Griggs Manufacturing Co. v. Sprague and
City of Elizabeth v. Pavement Co. applied and explained.
* Root V. Third

Avenue Railroad Company, 371.

FRAUD. See Rehearing, 2.

FRAUDULENT INTENT. See Trade-Marks, 25.

FUNCTION. See Change of Structure; Process, 2.

GRANT OF PATENT. See Defective Patents; Patents.

IMPROPERLY MARKING GOODS "PATENTED." See Copyrights, 3. Marking
goods "Patent applied for."

IMPROVEMENTS. See Infringement, 3.

INFRINGEMENT. See Assignments, 3; Change of Structure; Construction of Claims, 6;
Construction of Specifications and Patents; Damages and Profits; Decree; In-
junction, 1, 4; Licenses; Measure of Damages; Particular Patents, 2, 7, 12, 17,
20, 22, 27, 30, 33, 37, 38, 39, 48, 50, 54, 73, 74, 75; Rehearing, 20; Suits for
Infringement; Suits in Equity to obtain Patent under Section 4915, Revised
Statutes; Trade-Marks, 14, 17; Use of Patented Inventions.

1. SHOREY-MACHINE FOR FORMING STAPLE SEAMS IN LEATHHR-INFRINGE-
MENT. The infringement of the third claim of Letters Patent No. 136,340,
granted February 25, 1873, to Samuel W. Shorey, for an improvement in ma-
chines for forming staple-seams in leather by the use of defendant's rest or
supporter, which has no incline or bevel, doubtful. Motion for injunction
denied. *Thompson et al. v. Rand-Avery Supply Company, 370.

2. EQUIVALENTS.-The mechanical devices used by the defendant are known sub-
stitutes or equivalents for those employed in the Morley machine to effect the
same results, and this is the proper meaning of the term "known equiva-
lents" in reference to a pioneer machine, such as that of Morley. "Morley
Sewing Machine Company et al. v. Lancaster, 380.

3. IMPROVEMENT ON PIONEER MACHINES.-Where an invention is one of a primary
character and the mechanical functions performed by the machines are as a
whole entirely new all subsequent machines which employ substantially the
same means to accomplish the same results are infringements, although the
subsequent machines may contain improvements in the separate mechanisms
which go to make up the machine. *Id.