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He must state the best mode that he knows.1

11. Claim--(a) CLAIM AND SPECIFICATION.-Where the claims are not ambiguous, they are to be taken to show the extent of the patent; but where there is an ambiguity, reference to the specification may be made to remove the ambiguity.3

12. Drawing. Where a drawing is essential, the applicant shall furnish one copy thereof and another, furnished by the Patent Office, shall be attached to the patent as part of the specification.+

practical workmen of ordinary skill in the particular business. Page v. Ferry, I Fish. Pat. Cas. 298; Smith v. O'Connor, 6 Fish. Pat. Cas. 469; s. c., 4 Pat. Off. Gaz. 633; Mabie v. Hasken, 2 Cliff. (U. S.) 507; Lippincott v. Kelly, 1 West. L. J. 513; Brooks v. Bicknell, 3 McLean (U.S.) 250; s. c., 2 Robb Pat. Cas. 118; Many v. Sizer, 1 Fish. Pat. Cas. 17; Mowry v. Whitney, 3 Fish. Pat. Cas. 157; Forbes v. Bardow Store Co., 2 Cliff. (U. S.) 379.

Acquainted with the state of the art. Tompkins v. Gage, 2 Fish. Pat. Cas. 577: s. c., 5 Blatchf. (U. S.) 268; Treadwell . Parrott, 3 Fish. Pat. Cas. 124; s. c., 5 Blatchf. (U. S.) 370.

Defects of Clearness Which Have Been Held Insufficient to Invalidate a Patent. -Stating a fixed rule but stating that the rule can be departed from to some extent. Tilghman v. Werk, I Bond (U. S.) 511; s. c., 2 Fish. Pat. Cas. 229. Where the specification is referred to as embracing the substantial form of the invention. Brown. Guild, 23 Wall. (U. S.) 181; s. c., 6 Pat. Off. Gaz. 392; s. c., 7 Pat. Off. Gaz. 739. Exaggerated eulogies, where the device is correctly described. Aultman v. Holley, 11 Blatchf. (U. S.) 317; s. c., 6 Fish. Pat. Cas. 534; s. c., 5 Pat. Off. Gaz. 3; Eames v. Cook, 2 Fish. Pat. Cas. 146.

Or any remote and extreme defect. Blanchard Gun Stock etc. Factory v. Warner, 1 Blatchf. (U. S.) 258; Swift v. Whisen, 2 Bond (U. S.) 115; s. c., 3 Fish. Pat. Cas. 343.

Defects Which Have Been Stated to Invalidate.-Statements tending to deceive, in regard to the actual construction of the thing claimed. Aultman v. Holley, 6 Fish. Pat. Cas. 534; S. C., II Blatchf. (U. S.) 317; s. c., 5 Pat. Off.

Gaz. 3.

1. U. S. Rev. Stat., § 4888. Magic Ruffle Co. v. Douglas, 2 Fish, Pat. Cas. 330; Page v. Ferry, 1 Fish. Pat. Cas. 298.

He need not state all the modes of carrying out his invention, if he

states the best mode and adds that there are other modes which he considers protected by his patent. Carver v. Braintree Mfg. Co., 2 Story (U. S.) 432; s. c., 2 Robb Pat. Cas. 141; Dibble v. Augur, 7 Blatchf. (U. S.) 86; Blanchard v. Eldridge, 1 Wall. Jr. (C. C.) 337; 2 Robb Pat. Cas. 737; 2 Whart. Dig. 358.

Even if he does not describe the best way, his intention to do so is sufficient. Magic Ruffle Co. v. Douglas, 2 Fish. Pat. Cas. 330.

2. Hazelden v. Ogden, 3 Fish. Pat. Cas. 378; Blades v. Rand, 27 Fed. Rep. 93; Roemer v. Peddie, 27 Fed. Rep. 702.

A claim in letters patent cannot be enlarged beyond a fair construction of its terms., Haines v. McLaughlin, 135 U. S. 584; Day v. Fair Haven R. Co., 132 U. S. 98.

Peculiarities of construction will not be construed to be a distinctive portion of a claim in order to sustain their validity where neither the specifications nor claims suggest that such peculiarities are a distinctive feature of the invention. Bradley etc. Mfg. Co. v. Parker Co., 25 Fed. Rep. 907; Roemer v. Newmann, 26 Fed. Rep. 102; Western Electric Co. v. Ansonia Brass etc. Co., 114 U. S. 447.

3. Forbes v. Barstow Stove Co., 2 Cliff. (U. S.) 379; Morris v. Barrett. 1 Fish. Pat. Cas. 461; s. c., 1 Bond (U. S.) 254; Judson v. Moore, 1 Fish. Pat. Cas. 544; s. c., 1 Bond (U.S.) 285; Pitts v. Edmonds, 2 Fish. Pat. Cas. 52; s. C., I Biss. (U.S.) 168; Union Sugar Refinery v. Matthiesen, 3 Cliff. (U. S.) 639; s. c., 2 Fish. Pat. Cas. 600; Vogeley v. Noel, 18 Fed. Rep. 827.

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Especially to the immediately associated parts of the specification. La Rue Western Electric Co., 28 Fed. Rep. 88. But a claim repugnant to the specification, renders the patent void for ambiguity. Smith v. Murray, 27 Fed. Rep. 69.

4. U. S. Rev. Stats., § 4889.

The drawing is a portion of the patent.1

13. Examination. After the filing of an application and the payment of the fees,2 the Commissioner of Patents shall cause an examination to be made.3

14. Rejection and Amendment.-The Commissioner shall notify the applicant whenever any claim for a patent is rejected, and if, after such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a re-examination.5

15. Delay in Patent Office.-A delay of more than two years after filing an application before preparing it for examination, or a failure to prosecute the application within two years after any action therein, causes the application to be abandoned unless the delay be satisfactorily explained. The application must have the final fee paid within six months of the time it was passed and

Filing drawings is not a condition precedent. French v. Rogers, 1 Fish. Pat. Cas. 133.

The drawings need not be working drawings, nor is it necessary that a machine made in accordance with them would work. American Hide etc. Co. v. American Tool etc. Co., 1 Holmes (U. S.) 503; s. c., 4 Fish. Pat. Cas. 284. Nor need references be incorporated in the specification; if they are written on the drawings it is enough. Emerson v. Hogg, 2 Blatchf. (U. S.) 1; or even without references, where the nature of the machine can be understood without them. Brooks v. Bicknell, 3 McLean (U. S.) 250; s. c., 2 Robb Pat. Cas. 118; Washburne v. Gould, 3 Story (U. S.) 122; s. c., 2 Robb Pat. Cas. 206. 1. Emerson v. Hogg, 2 Blatchf. (U. S.) 1; Washburne v. Gould, 3 Story (U. S.)122; s. c., 2 Robb Pat. Cas. 206. 2. Each original application, except for design, $15. In design cases, application for three and one-half years, $10; seven years, $15; fourteen years, $30. Application for reissue, $30. U. S. Rev. Stats., 4934.

3. U. S. Rev. Stats., § 4893.

It is not incumbent upon the Commissioner to have the examination made by any particular officer. Hall v. Commissioner, 2 McArthur Pat. Cas. 90; s. c., 7 Pat. Off. Gaz. 559.

4. The specificaton is always open to amendment until the matter is finally disposed of by granting of patent or otherwise. Singer v. Brannsdorf, 7 Blatchf. (U. S.) 521; Godfrey v. Eames, I Wall. (U. S. 317.

Amendments can be made independently of the suggestion of the Commis

sioner. Godfrey v. Eames, 1 Wall. (U. S.) 317.

The question whether new matter can be introduced into the specification depends upon whether such matter can be found in any part of the application. Singer v. Brannsdorf, 7 Blatchf. (U. S.) 521; Chicago etc. R. Co. v. Sayles, 97 U. S. 554.

But a portion of the invention, if divisible, can be removed from the original to a separate application. Suffolk Mfg. Co. v. Hayden, 4 Fish. Pat. Cas. 86.

An inventor may enlarge his claims from time to time by amendment to embrace all that was specified at the start. Railway etc. Mfg. Co. v. North Hudson R. Co., 24 Fed. Rep. 793.

5. U. S. Rev. Stats., § 4903. He must give the applicant briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification. U. S. Rev. Stats., 4903.

6. U. S. Rev. Stats., § 4894.

It is the application, not the invention, that is abandoned, and the inventor may file a new application. Lindsay v. Steen, 10 Fed. Rep. 907; s. c., 21 Pat. Off. Gaz. 1613.

For abandonment of invention, see DEDICATION, vol. 5, p. 395.

7. U. S. Rev. Stats., § 4894. The judgment of the Commissioner on this question is conclusive. McMillan v. Barclay, 4 Brews. (Pa.) 275; s.c., 5 Fish. Pat. Cas. 189.

A mental disorder, incapacitating the inventor from business, is a sufficient ex

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allowed, in order to be issued; but upon failure to do so, a second application may be filed within two years from the allowance of the first application2 by any one interested.

16. Testimony for Use in Patent Office.-Affidavits and depositions are taken under the rules established by the Commissioner of Patents, and before any officer authorized by law to take depositions to be used in the United States or State courts.4 Subpoenas will be issued by the clerk of a United States court in the district to compel the attendance of witnesses,5 obedience to which and giving testimony can be enforced in the same manner as in case of a subpoena to testify at court.6

17. Interference (a) WHEN IT ARISES.-Whenever an application is made for a patent, which, in the opinion of the Commissioner, would interfere with any pending application,8 or with any unexpired patent, he shall direct the primary examiner to proceed to determine the priority of invention. 10

cuse for delay. Ballard v. Pittsburg, 12 Fed. Rep. 783.

1. U. S. Rev. Stats., § 4897. 2. U. S. Rev. Stats., § 4897. No person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the grant of a patent. And upon the hearing of a renewed applicaton preferred under this section, abandonment will be considered as a question of fact.

This does not prevent the defendants in a suit on a renewed patent, from setting up the defense of abandonment. United States etc. Rifle Co. v. Whitney Arms Co., 14 Blatchf. (U. S.) 94; 8. C., 2 Bann. & Ard. Pat. Cas. 493; Marsh v. Commissioners, 3 Biss. (U. S.) 321; Woodbury etc. Planing Mach. Co. v. Keith, 101 U. S. 479; s. c., 17 Pat. Off. Gaz. 1031.

The

3. U. S. Rev. Stat., § 4897. 4. U. S. Rev. Stats., § 4905. 5. U. S. Rev. Stats., § 4906. subpoena may direct the witness to be present at any time and at any place within forty miles of where it is served, and they are entitled to the same fees that are allowed witnesses at the United States courts. U. S. . Rev. Stats., § 4907.

6. U. S. Rev. Stats., § 4908. But to bring him into contempt, his fees for coming and going, and one day's attendance must have been paid or tendered, or be compelled to disclose a secret invention.

7. The Commissioner is free to exercise his discretion in obtaining informa

tion of the interfering patents. Potter v. Dixon, 5 Blatchf. (U. S.) 160; s. c., 2 Fish. Pat. Cas. 381.

8. An interference can only be declared where an applicant claims that for which a prior application has been filed; not where a prior application is generic to the second and does not claim the species of the second. Ex parte Platts, 15 Pat. Off. Gaz. 827. See Pentlarge v. New York Bung etc. Co., 20 Fed. Rep. 314.

9. An interference cannot be declared between a reissue broadening the application and a patent filed after the grant of the surrendered patent. Ex parte Mayall, 11 Pat. Off. Gaz. 1107.

10. U. S. Rev. Stats.. § 4904. Priority of invention is the only question that can be heard or determined on an interference. United States v. Thacher, 7 Pat. Off. Gaz. 603; Union Paper Bag Co. v. Crane, 1 Bann. & Ard. Pat. Cas. 494; s. c., 1 Holmes (U.S.) 429; s. c., 6 Pat. Off. Gaz. 801.

A decision in an interference case does not make the matter res adjudicata. Union Paper Bag Co. v. Crane, I Holmes (U. S.) 429; s. c., 1 Bann. & Ard. Pat. Cas. 494; s. c., 6 Pat. Off. Gaz. 801. Wire Book Sewing Mach. Co. v. Stevenson, 11 Fed. Rep. 155.

It has been held in a State court that so long as a decision remains unreversed it is such. Peck v. Collins, 70 N. Y. 376.

Nor does a statement made in any other proceeding in the Patent Office, estop an applicant. Crocker's Case, 2 A. L. T. 129; Union Paper Bag Co. v. Crane, 1 Holmes (U. S.) 429; s. c., 1 Bann.

(b) PRACTICE IN INTERFERENCE CASES.-The Commissioner shall give notice of an interference to the parties,1 and the proceedings are regulated by such rules as may be adopted.2

(c) EFFECT OF DECISION IN INTERFERENCE CASES.-As to the question of priority between the parties, the decision, if acquiesced in, is conclusive; 3 it is not an estoppel in any other circumstance.4

18. Appeal (a) IN PATENT OFFICE AND SUPREME COURT, DISTRICT OF COLUMBIA.-An applicant for a patent, any of whose claims have been twice rejected, and every party to an interference may appeal to the board of Examiners-in-Chief,5 from them to the Commissioner in person, and from them to the supreme court of the District of Columbia sitting in banc, except in interference cases.7

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(b) PRACTICE ON APPEAL.-An appellant must give notice to the Commissioner and file in the Patent Office his reasons for appeal. The appellant lays before the court certified copies of all the papers in the case, and the Commissioner furnishes the

& Ard. Pat. Cas. 494; s. c., 6 Pat. Off. by a claimant defeated in an interferGaz. 801.

1. U. S. Rev. Stats., § 4904.

2. The rules of the Patent Office, so long as they are not abrogated, are as binding as the law itself. Arnold v. Bishop, Cranch Pat. Dec. 103. Various decisions on minor points of practice are found in Perry v. Cornell, Cranch Pat. Dec. 132; Smith v. Flickinger, Cranch Pat. Dec. 116; Arnold v. Bishop, Cranch Pat. Dec. 103.

3. Shuter v. Davis, 16 Fed. Rep. 564; s. c., 24 Pat. Off. Gaz. 303; Holliday v. Pickhardt, 12 Fed. Rep. 147; s. c., 22 Pat. Off. Gaz. 420; Hanford v. Westcott, 16 Pat. Off. Gaz. 1181; Peck etc. Co. v. Lindsay, 2 Fed. Rep. 688; Greenwood v. Bracher, I Fed. Rep. 857.

This does not mean that the parties may not litigate the matter over again in the circuit court. Hubel v. Tucker, 24 Fed. Rep. 701; Celluloid Mfg. Co. v. Chrolithian Collar etc. Co., 24 Fed. Rep. 275.

4. To a party whose patent, after issue, was put into intererfence with an applicant who was declared the prior inventor. Perry v. Starrett, 5 Bann. & Ard. Pat. Cas. 485; s. c., 14 Pat. Off. Gaz. 599. To a purchaser of a machine from the defeated party from setting up a prior invention in another. Peck etc. Co. v. Lindsay, 5 Bann. & Ard. Pat. Cas. 390; s. c., 2 Fed. Rep.688; s. c., 18 Pat. Off. Gaz. 63. In an action against third parties they can defend by setting up an invention

ence proceeding. Perry v. Perry, 14 Pat. Off. Gaz. 599.

5. U. S. Rev. Stats., § 4909.

If, in an interference proceeding, the Examiners-in-Chief award priority to one party and remand his case to the primary examiner to determine whether he has abandoned his invention, the other party cannot appeal. Bigelow v. Thatcher, 2 McArthur (U. S.) 29. 6. U. S. Rev. Stats., § 4910. 7. U. S. Rev. Stats., § 4911. The appeal is from a refusal to grant a patent. Pomeroy v. Commissioner, Cranch Pat. Dec. 112.

The refusal may take the form of a decision that the applicant is not the original and first inventor. Commissioner v. Whitely, 4 Wall. (U. S.) 522.

Or that the applicant is not such a person as is entitled to the reissue for which he applies. Commissioner v. Whitely, 4 Wall. (U. S.) 522.

An applicant whose patent has been refused may appeal, in spite of being improperly put into interference by the Commissioner. Ex parte Platts, 15 Pat. Off. Gaz. 827.

No Appeal in Interference Case to Secretary of Interior.-The action of the Commissioner of Patents in granting or refusing a patent is a judicial act, and therefore is not reviewable by the Secretary of the Interior. Butterworth v. Hoe, 112 U. S. 50.

8. U. S. Rev. Stats., § 4912. The rea

grounds of his decision, touching the reasons of appeal.1 The court, on petition, hears and determines the appeal, and revises the decision appealed from in a summary way on the evidence produced before the Commissioner. The revision shall be confined to the points set forth in the reasons for appeal. A certificate of the proceedings and decision shall be returned to the Patent Office and shall govern the further proceedings in the case.4

(c) BILL IN EQUITY TO COMPEL ISSUE OF PATENT.-The applicant for a patent, who has been refused by the Commissioner or the supreme court of the District of Columbia, may exhibit a bill in equity against any opposing party; or, where there is no opposing party, against the Commissioner. This proceeding is

sons for appeal must be in writing and filed within such time as the Commissioner may appoint.

1. U. S. Rev. Stats., § 4913. The court gives notice to the Commissioner of the time and place of hearing the appeal, and the Commissioner notifies the parties interested. The Commissioner and examiner can be examined under oath. See Perry v. Cornell, Cranch Pat. Dec. 132.

2. U. S. Rev. Stats., § 4914. 3. U. S. Rev. Stats., § 4914; Arnold v. Bishop, Cranch Pat. Dec. 103; Smith v. Flickinger, Cranch Pat. Dec. 116; Ex parte Conklin, 1 McArthur (U.S.) 375.

4. U. S. Rev. Stats., § 4914.

But no opinion or decision of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called into question.

5. Where the Commissioner withholds the patent by virtue of his supervisory authority, the remedy is by bill against the Commissioner, not by appeal to the supreme court of the District of Columbia, or by mandamus. Hull v. Commissioner, 2 McArthur (U. S.) 90; s. c., 7 Pat. Off. Gaz. 559; rehearing, 2 McArthur (U. S.) 125; s. c., 8 Pat. Off. Gaz. 46.

In Interference Cases.-A question of priority of invention between two parties to an interference can be tried by bill, by party defeated before the Commissioner, against the party prevailing before him. Union Paper Bag Mach. Co. v. Crane, Holmes (U. S.) 429; Whipple v. Miner, 15 Fed. Rep. 117; S. C., 23 Pat. Off. Gaz. 2236.

6. Whipple v. Miner, 15 Fed. Rep.

117; S. C., 23 Pat. Off. Gaz. 2236; Prentiss v. Ellsworth, 27 Pat. Off. Gaz. 623; 2 Whart. Dig. 365; Union Paper Bag Mach. Co. v. Crane, 1 Holmes (U. S.) 429.

Costs. Where there are opposing parties, the costs are taxed as in other cases. Butler v. Shaw, 21 Fed. Rep. 321.

Parties. Where there is an opposing party, the Commissioner is not a necessary party. Graham v. Teter, 25 Fed. Rep. 555 7. U. S. Rev. Stats., § 4915. А сору of the bill must be served on the Commissioner, and all expenses of both sides when the bill is brought against the Commissioner, paid by the applicant, whether the patent is granted or not.

The court will examine into the novelty of the alleged invention. Ex parte Greely, 1 Holmes (U. S.) 284; s. c., 6 Fish. Pat. Cas. 574; s. C., 4 Pat. Off. Gaz. 612; Ex parte Arkell, 4 Bann. & Ard. Pat. Cas. So; s. c., 15 Blatchf. (U. S.) 437

The applicant must have exhausted all his remedies by appeal before bringing the suit. Kirk v. Commissioner, 5 Mackey (U. S.) 229.

And the rejection must have been on the merits. Butterworth v. Hoe, 112 U. S. 50; s. c., 29 Pat. Off. Gaz. 618.

And must bring his action in the District of Columbia, which is the legal residence of the Commissioner of Patents. Butterworth v. Hill, 114 U. S. 133; s. c., 31 Pat. Off. Gaz. 1043; overruling Vermont etc. Mach. Co. v. Marble, 22 Blatchf. (U. S.) 128; s. c., 20 Fed. Rep. 117; s. c., 27 Pat. Off. Gaz. 622. Compare Prentiss v. Ellsworth, 27 Pat. Off. Gaz. 623.

The Secretary of the Interior is not a necessary party to a bill of this kind

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