[Decisions of U. S. courts designated by an asterisk (*), of the Secretary of the Interior by a dagger
(t), and of State courts by a double dagger (1).
ABANDONED APPLICATION NOT TO BE CONSIDERED IN FIXING THE BUrden of
PROOF.-After abandonment of an application by operation of law it cannot
be revived by the filing of a subsequent application for the same invention
The original application may be used to show that the invention was made at
that date, but for no other purpose. Henderson v. Reese, 67.
ABANDONED EXPERIMENTS. See Interference, 8, 9.
1. ABANDONED EXPERIMENT.-An abandoned experiment is not such a publication
as will render invalid a patent subsequently granted for an invention similar
to the thing experimentally produced. *Pickering v. Miller, 415.
2. INTERFERENCE-PRIORITY—ABANDONED AND FORGOTTEN EXPERIMENT.—A]-
though a party may be first to conceive and embody an invention in practical
form, where it appears that his invention was laid aside, lost sight of, for-
gotten and abandoned, and other means adopted for securing the same result,
he forfeits his right in favor of a subsequent and independent inventor. His
original efforts must be regarded as an abandoned experiment, and cannot be
revived after the subsequent invention of the same device by another. Sher-
idan v. Latus et al. 76.
ABANDONMENT. See Abandoned Applications; Abandoned Experiments, 1; Assignments,
4, 7, 8, 9, 10; Estoppel; Priority of Invention, 11.
1. ABANDONMENT-APPLICATION IN INTERFERENCE.-An application will not be
regarded as abandoned for the reason that it has been involved for many
years in an interference in which no action has been taken. Taylor v. Shreffler,
63.
2. ABANDONMENT BY ONE OF TWO JOINT INVENTORS AFTER COMPLETION IMMA-
TERIAL. After an invention has reached the solid ground of completion by
practical demonstration, it cannot, by word or act of one of the joint invent-
ors, and without the consent of the other, be abandoned. Sawyer and Man
v. Edison, 80.
3. INFRINGEMENT-ABANDONMENT OF PATENT.-In the absence of knowledge by
the patentee of the infringement there was no abandonment of his patent.
*New York Grape Sugar Company v. Buffalo Grape Sugar Company et al, 460.
ABANDONMENT OF RIGHT OF REISSUE. See Reissues, 6, 9.
ACCESS TO THE FILES AND RECORDS OF THE PATENT OFFICE.
Records of THE OFFICE-ACCESS TO.-After a thorough examination of an ap-
plication for the reissue of a patent by the proper officers in the Patent Office,
resulting in a decision favorable to the applicant, a stranger to the record can-
not be permitted to have access to the proceedings in the Patent Office rela-
tive thereto with a view of opposing the grant of the patent upon the sugges-
tion that he is adversely interested, and that the patent is about to issue un-
lawfully, to his damage and injury. Ex parte Pfaudler.
ACQUIESCENCE. See Construction of Specifications and Patents, 3; Disclaimers, 2;
Injunction, 11; Reissues, 9.
ACTION AT LAW. See Agreement to Assign, 3; Infringement, 15; Parties to Suit, 1, 2;
State Statutes, 1.
ACTION FOR DAMAGES. See Agreement to Assign; Damages and Profits, 5; Licenses, 1.
ADMINISTRATOR. See Licenses, 6; Title to Patent, 3.
ADMISSION OF TESTIMONY. See Evidence, 1; Interferences, 3; Motion to Reopen, 1;
Practice in the Patent Office, 5; Public Use, 1, 2; Reissues, 12.
AFFIDAVITS. See Interference, 8; Priority of Invention, 1; Public Use, 1, 2.
AGGREGATION. See Combinations, 2, 4; Non-Invention, 1; Particular Patents: 52 Miles,
84 Winchell; Patentability, 2.
OLD DEVICES.-A shoe containing the ordinary front lacing and the common elastic
web in its side presents a mere aggregation of old features, and not a patent-
able combination. Ex parte Marshall, 97.
AGREEMENT. See Contracts; Licenses, 7.
AGREEMENT TO ASSIGN. See Contracts, 4.
1. BILL IN EQUITY-SECTION 4915 Revised Statutes-EquiTBALE STANDIng of
PARTIES.-Upon a suit under section 4915 Revised Statutes a court of equity
will not aid an inventor to obtain a patent himself in direct violation of his
agreement transferring the property in his invention. *Runstetler et al. v. At-
kinson et al., 198.
2. SAME-SAME-JOINT APPLICANTS-ASSIGNMENT BY ONE.-When one of the two
persons claiming as joint inventors had transferred his interest in the inven-
tion to the defendants, who also owned, by assignment from the rival invent-
or, the patent upon which the joint application is rejected, and when the
bill treats the defendants as wrongful and fraudulent holders of their patent,
and ignores wholly their rights to any interest in the patent, Held that the
patent should not be issued to the joint inventors. * Id.
3. AGREEMENT TO ASSIGN LETTERS PATENT-NON-FULFILLMENT-ACTION AT
LAW. Two parties enter into an agreement relating to letters patent, and
providing for the assignment of an interest in the patent from one to the
other, and the manufacture and sale of the patented machines by the latter,
the former to be employed on salary, Held that, after abandoning the manu-
facture and sale of machines, the latter cannot excuse his non-performance
by alleging misconduct on the part of the former, and then call for a specific
performance of the agreement as to the part providing for the assignment,
but that his remedy, if any, is by an action at law for damages. ‡ Werden et
ul. v. Graham, 485.
ALTERNATIVE TITLES. See Licenses, 2.
AMBIGUITY. See Limitation of United States Patents by Foreign Patents Previously
Obtained; Practice in the Patent Office, 7, 10.
AMENDMENTS. See Disclaimers, 2; Practice in the Patent Office, 12; Reissues, 18; Foid
Application.
1. AMENDMENTS AFTER DECISION OF APPELLATE TRIBUNALS.-Amendments of the
specification offered after the decision of an appellant tribunal will be for-
warded at once to the Primary Examiner, whose duty it is to determine in
the premises all questions relating to the admissibility and merits of such
amendments. Ex parte Reynolds, 56.
2. RIGHT OF AMENDMENT.-Regarding two years from the date of the last official
action as the natural life of an application, it is clear that an applicant is
entitled at any time within that period to take such action in his case,
whether by appeal or amendment, as shall be necessary to protect his right
to a patent, subject, however, to such regulations, not inconsistent with this
fundamental right, as the Commissioner and Secretary shall establish for the
conduct of business in the Office. Id.
3. SPECIAL AMENDMENTS ABOLISHED-RULE 67.-By the omission from Rule 67 of
the clause in old Rule 31, relating to the recommendation of amendments,
the whole distinction of special amendments, eo nomine, was abolished and
the Primary Examiner, by implication, is made the judge as well of the ad-
missibility as of the merits of all amendments. Id.
4. RESTORING CANCELED CLAIMS-SEPARATE AMENDMENT.-Where an applicant
desires to restore a claim which has been previously canceled, the claim must
be presented in a separate amendment. No erasures or marginal explanations
can be permitted. Ex parte Mumler, 62.
5. AMENDMENTS AFTER DECISION OF APPELLATE TRIBUNAL.-All amendments to
applications should be first considered by the Primary Examiner, notwith-
standing the case may have been on appeal to the Examiners-in-Chief or to
the Commissioner in person. The rule laid down in Ex parte Reynolds (24 0.
G., 993) cited and approved. Ex parte Hitt, 70.
6. Same-Mere Formal Changes after Final Rejection.—Applicants will not
be permitted, simply by a change in the form of their claims or in the title of
their inventions, to have amendments admitted and considered on the merits
after the subject-matter has been rejected either by the Examiner or by the
other tribunals of the Office. Id.
7. SAME-SAME.-From a decision of the Primary Examiner refusing to consider
such amendment on the merits appeal will lie to the Commissioner in person.
Id.
8. AMENDMENTs-Rule 69 CoNSTRUED.-Rule 69 is intended to provide against a
departure in essential particulars from the original invention disclosed, and
not to prohibit the admission of amendments which merely serve to explain
and illustrate the character and scope of the invention. Ex parte Howe, 102.
AMENDMENTS TO APPLICATION. See Applications, 2, 3; Practice in the Patent
Office, 2.
ANNULLMENT OF DECREE. See Decree.
ANALOGOUS DEVICES. See Similar Devices.
ANSWER TO BILL. See Priority of Invention, 2; Service of Process.
ANTICIPATION. See Designs, 2; Particular Patents: 20 Downton, 26 Hall, 37 Hol-
ingsworth, 40 Hyde, 67 Siemens, 81 White.
ANTICIPATION.-The accomplishment of the same result is not anticipation unless
it is done by the same means in substantially the same way. *Hall et al. v.
Stern et al., 326.
APPARATUS. See Patentability, 3, 4.
APPEALS. See Amendments, 5, 7; Decision of Commissioner of Patents Affirmed, 1; Inter-
ference, 6; Jurisdiction to Grant a Patent, 1.
1. REMEDY BY APPEAL.-If an applicant considers a case important enough, he
may refuse to take a limited patent, and being then rejected, may apply to
the supreme court of the District of Columbia, and if still dissatisfied, he has
his remedy in equity by section 4515 Revised Statutes. Here remedies are
ample, and they are exclusive under the decisions. New York Belting and
Packing Company et al. v. Sibley, 227.
2. LIMIT OF APPEAL-NOTICE UNCERTAIN.-A letter to a party in interference in-
forming him of an adverse decision and specifying the limit of appeal in the
following words, "Limit of appeal ten days," may be regarded as fixing the
limit of appeal ten days from the receipt of the notice by the party, and is
for that reason uncertain. Pierson v. Reixach, 119.
APPEALS TO THE SECRETARY.
LEGALITY OF AN APPLICATION-APPEAL.-In a matter in which the Commissioner
has exercised all the means at his disposal to ascertain the legality of an ap-
plication, the Secretary is not disposed to interfere except for fraud or pal-
pable error. Ex parte Pfaudler, 109.
APPLICANTS FOR PATENTS. See Validity of Patents, 1.
APPLICATION FOR REISSUE. See Reissues, 19, 20.
APPLICATIONS. See Abandoned Applications; Abandonment, 1,2; Designs, 3, 6, 7, 8;
Divisional Application, 1, 2; First and Original Inventor; Interference, 5; Oath
of Inventor; Practice in the Patent Office, 9; Priority of Invention, 4, 5, 6, 7; Speci-
fication; Validity of Patents, 1; Void Application.
1. REISSUE-ORIGINAL PATENT INVALID.-Where, on application for a reissue, it
affirmatively appears from the applicant's own statement that the original
application upon which the patent was granted was not made and executed
in accordance with the provisions of law, the original patent must be held to
be invalid (Child v. Adams), and no reissue thereof can be granted. Ex parte
Benton, 3.
2. RULE 125-SEPARATE APPLICATION-CONSTRUCTION OF RULE.-The sole pur-
pose and effect of Rule 125 is to permit a party to an interference to remove
from his application those inventions and devices peculiar to himself which
would otherwise have to await the result of a contest which can in no way
affect the question of their novelty and utility. Ex parte Wheeler, 12.
3. SAME-COMPARED WITH RULE 94.-Whether the rule is considered by itself or
in connection with Rule 94, the same conclusion is reached, that an applicant
can only be allowed such claims in a separate application under Rule 125 as
could not be included in the interference by the other party under Rule 94; that
is, claims to matter not shown or described in the conflicting application. Id.
4. APPLICATION-JOINDER OF INVENTION.-Distinct and independent inventions
which are differently classified may not be embraced in one application. Ex
parte Mefford, 95.
5. SAME-SAME.-In cases where distinct inventions are dependent upon each
other and mutually contribute toward the production of a single result, the
Office classification, when it obstructs, must give way. ld.
6. APPLICATION.-An applicant is entitled to fully describe, show, and claim his
invention in his patent, but having done this he has no right to thereafter file
an application for subject-matter shown and described in such patent. If he
has a remedy, it is by reissue. Ex parte Long, 104.
7. SAME RESERVATION CLAUSE.-Nor has he a right to reserve a portion of his
invention, and, after the grant of a patent, claim in a separate application
such reserved portion. Id.
8. PRACTICE-SPECIFIC RESERVATION CLAUSE IN A PATENT NOT A BASIS FOR AN
APPLICATION FILED AFTERWARD.-A clause in a patent giving notice that
the patentee reserves the right to constitute features shown in certain figures
of the drawing the subject of a second application is sufficiently specific, but
said second application should have been filed before the patent issued. Er
parte Rohn, 106.
9. SAME-INTERREGNUM OF EIGHTEEN DAYS TOO GREAT.-The interregnum be-
tween the date of the patent and the filing of the second application was only
eighteen days; but if a party has the right to withhold his application for
that time, he has for two years, and such a practice cannot be permitted to
obtain. Id.
APPLICATIONS EXECUTED IN BLANK. See Applications, 1.
APPLICATIONS STRICKEN FROM THE FILES. See Void Application.
ARBITRATION. See Contracts, 5.
ASSIGNEES. See Assignments; Bill in Equity, 1; Damages and Profits, 6; Title to
Patent, 1, 2, 4.
ASSIGNMENTS. See Agreement to Assign; Contracts, 4; Licenses, 4, 5, 6; Title to
Patent, 1, 2, 4; Trade-Marks, 1, 2, 5.
1. CONVEYANCE OF RIGHT.-A conveyance of "all my right, title, and interest in
and to" a patent, though properly recorded, does not include the right for
two counties covered by a prior conveyance, although the prior conveyance
was not recorded in the Patent Office. *Turnbull et al. v. Weir Plow Company
2. CONVEYANCE of Patent-WHAT INCLUDES.-A conveyance of the right to make
and sell a patent includes the right to the use of the thing patented. *Id.
3. ASSIGNMENTS-EXECUTION OF UNDER NEW YORK STATUTES.-Under the statutes
of New York assignments of patents duly acknowledged before a notary are
sufficiently proved, and it is not incumbent upon the complainant to prove
the signature of the assignors. *New York Pharmicul Association v. Tilden
et al., 145.
4. APPLICATION OF WILLIAM A. GRAHAM-FIRE-EXTINGUISHER- HISTORY OF THE
APPLICATION-SPECIAL ACT FOR BENEFIT OF HEIRS ALONE.-Dr. William A.
Graham filed his application for a patent in November, 1837, which was re-
jected a second time December 13, 1837. December 29, 1837, he filed an
amended specification, which was not acted upon by the Patent Office. De-
cember 13, 1851, he attempted to revive the application, but was not permitted
to do so. January 13, 1852, he conveyed an undivided one-fourth interest in
the invention to one A. W. Burton. The Patent Office refused to consider an
application January 19, 1852, and nothing more was done. Graham died in
1857. By a special act of Congress, approved June 11, 1878, the heirs of Gra-
ham were permitted, through his administrator, to revive the application,
and a patent was issued July 9, 1878, to A. Graham, administrator. January
27, 1879, Julia L. Burton, as administratrix of A. W. Burton, sold and as-
signed to the Fire Extinguisher Manufacturing Company an undivided one-
fourth interest in said patent. Held, that the title in the Graham heirs was
not affected by this assignment. *Fire Extinguishing Manufacturing Company
v. Graham, administrator, &c.. 368.
5. PATENTS ONLY ASSIGNABLE BY WRITTEN INSTRUMENTS-ABILITY OF PERSONS
UNDER THE COMMON LAW NON SUI JURIS TO MAKE SUCH INSTRUMENT REG-
ULATED BY THE LAWS OF THE STATES.-Section 4898 Revised Statutes re-
quires that the assignment of a patent be by an instrument in writing. The
ability to make the instrument, however, or the aids to a disability must be
found in the laws of the States, where all such rights are regulated. *Fetter
et al. v. Newhall, 429.
6. SAME-RIGHTS OF MARRIED WOMEN UNDER THE LAWS OF THE STATE OF NEW
YORK.-The laws of New York free married women from disability to make
an assignment by an instrument in writing, and make their property dis-
tinctively their own. Where a married woman by her sole deed assigns an
interest in a patent, the assignment is valid, and she may join with such as-
signee in an action involving their joint rights. *Id.
7. SPECIAL ACT OF CONGRESS-RIGHTS OF ASSIGNEES THEREUNDER.-Where all
rights to apply for and obtain letters patent under the general acts have
lapsed by reason of failure to prosecute the application, and a special act has
removed the disabilities of a particular class of persons-to wit, the heirs of
the inventor-in the way of applying for and obtaining a patent, and at the
same time expressly saves to owners of machines the right to the continued
use of such machines during the life-time of the patent, Held that the rights
of those claiming under the original inventor by assignment are not thereby
revived. Fire Extinguishing Mfg. Co. v. Graham, 368.
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