of celluloid. In 1878 a patent was granted to Hyatt for a comb made of celluloid. In 1881 a patent was granted to Lefferts and Carpenter for a head or other part of a doll made wholly or in part of celluloid; and so of a stay for corsets, a bottle-stopper, a collar, and for other articles.

But, on the other hand, in 1872 (ex parte Chatillon, C. D., 1872, 161; 20.G., 115) the substitution of malleable cast-iron for the ordinary sheetmetal material in the manufacture of shovels was held not to constitute invention. So in ex parte Chamblant (C. D., 1873, 119; 4 O. G., 106) it was held that spools having been previously made from paper it was not patentable to make bobbins from that material in the same form in which bobbins have been made from metal. And in later cases it has been held with almost unbroken uniformity that the claimed advantages of using one material for another did not involve invention. Thus, by Mr. Commissioner Hall in ex parte Krell, (C. D., 1888, 139; 44 O. G., 1505,) the substitution of Canadian fir for Swiss fir in sounding-boards for musical instruments was held not to confer patentability. To the same effect is Mr. Commissioner Mitchell in ex parte Odenheimer, (C.D., 1889, 240; 49 O. G. 1693,) involving the substitution of cotton for jute in the manufacture of bagging.

In 1884 the patent to Phillips came before the Supreme Court of the the United States, (Phillips v. Detroit, 111 U. S., 604,) and was declared invalid on the ground that bringing together three old and well-known elements-the wooden blocks, the foundation, the filling-did not involve invention. And in Brown v. District of Columbia (C. D., 1889, 398; 47 O. G., 398; 130 U. S., 87) the Supreme Court said of the Cowing patent of April 5, 1870, No. 101,590, for a new mode of constructing wooden pavements for streets, in which the claim was―

a wood pavement composed of blocks, each side having a single plane surface, and one or more of the sides being inclined, and the blocks being so laid on their larger ends as to form wedge-shaped grooves, or spaces to receive concrete or other suitable filling, substantially as set forth

that there was nothing more than the substitution of one material for another without involving a new mode of construction or developing anything substantially new in the resulting pavement. The patent was held invalid.

Another case in the Circuit Court for the Northern District of OhioThe Sandusky Seat Company et al. v. Comstock et al., not reported except in C. D., 1878, 182; 13 O. G., 230, and 13 Brodix's A. and E. Patent Cases, 222, seems at first glance to give some support to the applicant's contention here. The action was for infringement of Reissue Patent No. 4,780 to Comstock and others, assignees of Simon P. Graham, for improvement in carriage bodies and seats. Among the claims were: 1. A carriage-body of which the sides and back are made of one entire piece of sheet metal, for the purposes specified.

2. A carriage-body made of sheet metal, formed in parts or sections, substantially as and for the purposes specified.

Upon the trial in the circuit court the learned judge was in doubt whether the invention was not in substance only the substitution of one material for another-iron for wood-and whether there was not want of patentability, but said that those defenses were not set up in the answer, as they should have been. In view of Smith v. Goodyear the Court inclined to think that the objection ought to be overruled and the respondents left to raise the question in the Supreme Court by appeal, and the patent was not declared invalid. Whether the question of the substitution of one material for another was in reality passed upon by the Supreme Court does not appear, for no opinion was rendered in the case, and it may also be noted that the decree was affirmed by a divided court.

After an examination of all the reported cases where the substitution of one material for another was relied on to confer patentability upon an article it appears that no article on account of the substance of which it is made can support a patent unless the new use of the substance is based upon some newly discovered property or quality in the substance. The use of gutta-percha as a coating for electric conductors was accordingly sustained by Judge Blatchford in Colgate v. Western Union Telegraph Company, (C. D., 1878, 440; 14 O. G., 943; 15 Blatchf., 365,) on the ground that Simpson was the first to discover that guttapercha was a perfect insulator, anticipating Faraday's publication of the same discovery by some months, and although wire had been covered before with rubber and other substances for other purposes than electrical insulation. Thus, too, carbon filaments in electric lamps in substitution for platinum wire was adjudged a valid basis for the Edison patent-No. 223,898—in Edison Electric Light Company v. United States Electric Company, (C. D., 1892, 606; 61 O. G., 564; 52 Fed. Rep., 300,) although pencils of carbon, as well as platinum wire, had before that been used in lamps for obtaining subdivision of the electric light.

The abstract principle involved was known, at least it had been stated by Edison himself in his French patent of May 28, 1879. The ratio of the resistance of the burner to the resistance of the circuit and the relation of the resistance of the burner to its radiating-surface were known, and it was recognized that an electric incandescent lamp must have a burner of small cross-section and small radiating-surface. Platinum wire had been used for a burner; but because it fused at a temperature only slightly higher than that at which it became incandescent its use for the purposes of a lamp was impracticable. Carbon rods had been used; but oxidation soon destroyed them in any vacua then obtainable, and when the attempt was made to substitute an inert gas-such as nitrogen-for the air in a lamp-bulb the carbon rods were disintegrated by air washing. So no burner had stability to a degree exceeding mere experimental uses prior to the Edison invention and no material had been discovered for a burner in incandescent lamps which could sustain itself in the conditions which could then be provided.

The learned Judge in that case aptly says:

The literature of the art fully sustains the statement of Mr. Schwendler, quoted in Telegraph Journal in 1879, that "we can scarcely expect that the principle of incandescence will be made use of for practical illumination," unless there be discovered a conductor without the defects of platinum and "which does not combine at high temperature with oxygen."

So far from being a mere substitution of materials, the successful use of a carbon filament in a burner was based upon the newly discovered principle that in a sealed glass bulb exhausted to one-millionth of an atmosphere it offers a high resistance to the passage of the current and is stable at high temperatures.

On the other hand, in Kilbourne v. Bingham Company, (C. D., 1892, 477; 60 O. G., 577,) Circuit Court of Appeals, Sixth District, the complainants claimed the exclusive right of making sinks swaged or struck up from a single sheet of wrought steel or iron, without joint, seam, or interior angle. Swan, Judge, said, in substance, that it was not enough that the new manufacture, because of the fitness of the material, had obviated innumerable objections inherent in prior manufactures and had superseded them in the trade, and, therefore, with acknowledged superiority, in the manufacture. Wrought-steel in lieu of cast metal in this article was held to be the mere substitution of materials and the article not patentable.

It is apparent that the practice of the Office and the findings of the courts have in the past twenty years grown more strict respecting the substitution of one material for another, and even yet there may be discovered some fluctuations in the application of the principle; but whatever the difficulties in the application of the doctrine, as illustrated in Hotchkiss v. Greenwood, on the one hand, and Smith v. Dental Vulcanite Co., on the other hand, it is considered that the claims of the applicants clearly fall with those presenting no patentable subject matter. The extended use of aluminum and its alloys naturally follows from its reduction in price from $90.00 a pound for pure aluminum in 1856 to $2.00 a pound in 1889 and for the ten per cent. bronze from $1.64 per pound in 1878 to thirty cents a pound in 1888. The extraction of aluminum'in commercial amounts, beginning about the year 1874, and rapidly increasing from then to the present time, together with the decreasing ing price, has made aluminum and its alloys available in the making of a larger variety of articles, and doubtless many articles made of this substance will entirely supersede those made of any other. This change is not more significant than that following the cheap production of steel. The use of it in railroad-rails has revolutionized transportation and made the enormous traffic of to-day possible, and yet as an article of manufacture steel rails have never been patented and are thought not to be patentable. In the English patent to Henry Bessemer, No. 2,319, dated October 17, 1855, for improvements in the manufacture of railway-bars, the claims were drawn to processes merely.

If this article were now to be held patentable—a bicycle-frame in usual form-merely because cast in one piece of aluminum alloy, it is difficult to see why a wagon-reach in light vehicles, serving, as it does, the same uses in wagons that a bicycle-frame does in bicycles, must not for the same reason be patentable if made of aluminum alloy by casting in one piece; and yet to hold so would be in contravention of the conclusion of the court in Hicks v. Kelsey, supra, upon analogous facts. The applicants have discovered no new property in aluminum or its alloys, and in their structure they make use of no new property in its substance. Their case exhibits, therefore, the mere choice of materials with which to make articles of manufacture, and this, alike from the decided cases and from the policy of the law, should be free to those skilled in the art.

Finally, whether the state of the art is taken to be that bicycleframes have ever been cast of iron or not, since other articles approaching it in complexity have been cast of iron and other articles have been cast of aluminum alloys, and by substantially the same processes, it must be held that a bicycle-frame cast of aluminum, in one piece, is not patentable as an article of manufacture, and accordingly the order withdrawing this case from issue is made permanent and the patent refused.

EX PARTE BARK.

Decided August 29, 1894.

69 O. G., 369.

DESIGNS-MODIFICATIONS-FORMER DECISIONS OVERRULED.

In a Design application showing more than one modification applicant is permitted to show, describe, and claim modifications generically. Ex parte Hess and Hess (C. D., 1891, 142; 56 O. G., 1334) and ex parte Finck (C. D., 1892, 139; 60 O. G., 157) overruled.

ON PETITION..

DESIGN FOR BILLIARD-TABLES.

Application of Birger Bark filed August 25, 1893, No. 484,067.

Mr. J. N. McIntire for the applicant.

FISHER, Acting Commissioner:

This is a petition in the nature of a request that the Examiner be instructed

that those parts of my case to which the Examiner objects are material to a proper interpretation of the single claim I have made, and therefore go to the merits of the

case.

The Examiner's objection is that two designs are illustrated, and he requires applicant to

point out which one of the two designs illustrated in this case is made the subject of claim. The description should be amended to conform to the design retained.

The Examiner holds that until applicant does this it is not clear what his design is, and until he makes it clear action cannot be given on the merits.

It appears to me that the question raised is a mere matter of form. Under the practice as established by amended Rule 64 questions of form are always subordinated to those of merits, and generally formal questions should be postponed until a final determination of the merits has been reached. The Examiner therefore should have considered the case on its merits.

To obviate the necessity of another petition, however, it may be indicated at this time what practice is thought to be proper in Design applications which show more than one modification.

In the decision of December 5, 1893, the practice laid down in ex parte Hess and Hess (C. D., 1891, 142; 56 O. G., 1334) and in ex parte Finck (C. D., 1892, 139; 60 O. G., 157) was followed. On reconsideration, however, I am unable to see why one rule should be adopted in Design cases showing modifications and a different rule in application for mechanical patents which show modifications. In all cases the questions which naturally arise from the fact that the application may show more than one modification should be disposed of in the first instance by the Examiner; but, however this may be, it seems clear that in this particular case applicant should be permitted to show, describe, and claim generically his two modifications.

The Examiner should therefore pass upon the merits of the case, and if there is no objection to the generic claim on the ground of novelty it should be allowed by the Examiner, leaving the question of validity to be passed upon by the courts.

To the extent above indicated the petition is granted.

EX PARTE FOWLER et al.

Decided September 18, 1894.

69 O. G., 1641.

JOINT INVENTORS—ASSIGNMENT BY ONE OF THEM, WITH REQUEST THAT PATENT ISSUE TO ASSIGNEE, WILL BE OBSERVED.

Where an assignment from one of several joint inventors contains a request that the patent shall issue to his assignee, Held that the request will be observed and the patent be issued jointly to the remaining inventors and the assignee. REQUEST by two of three joint inventors that a request by the third concerning an assignment be ignored. Denied.

FARE-REGISTER.

Application of John W. Fowler, William J. England, and Anton E. Nielsen filed April 6, 1894, No. 506,581. Patent dated Oct. 9, 1894, No. 527,387.

Mr. Charles G. Coe and Mr. William H. Finckel for the applicants.