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Where a process and its product are claimed in one application, the Office will not concern itself with the inquiry whether the article might be made by any other process, or whether the process will necessarily result in the particular product, for the purpose of determining whether division should be ordered between process and product. The criterion would be no guide in the case where the process were new, as to which the Office could not say with certainty whether it must always result in the product.
Similarly, in the case of a new article such a rule would require the Office to solve the insoluble question whether the article might not be made by some other method not yet invented or discovered, or else, where a known process had produced the article, the order to divide would be followed by the rejection of the claim for the article as old.
It has been the practice to make these orders to divide upon an inspection of the prior art which is only cursory. Should the applicant follow the intimation of the Office thus made and cancel one aspect of his claimed invention, and further, acting upon the intimation, should forbear to file a new application for the elements canceled, he might lose, upon the suggestion of the Office, protection for a valuable invention when no true examination had been given him. If, on the other hand, he should tile a new and divisional application, and the cursory examination should turn out to be a correct disclosure of the prior art, and the process or its product, as the case might be, turn out to be old, that being the ground upon which division was ordered, the applicant would have been required to file a fruitless application.
Process and its product concern inventions which are so related that they may at the option of the applicant be placed in the same application, he taking all the risks of future difficulties in the courts, and it is generally thought to be the better practice to include them both in one application. Since division between process and product may produce confusion in the arts and conflicting interests, as intimated by the Court in IcKay v. Dibert, (C. D., 1881, 238; 19 O. G., 1351, 5 Fed. Rep., 587,) and since no patent has been declared void by reason of the joinder of such claims, while many have been held to be valid, and since manifest advantages would follow from one uniform rule as to division, and, more important than all else, since division or joinder approaches if it does not present a question of right in the applicant to choose between two courses, both of which are open to him, it is broadly announced that division in such cases should not be required.
The order to divide is set aside.
EX PARTE CARR.
Decided January 18, 1894.
66 O. G., 653. DIVISION-APPARATUS—THE MATTER OF SUB-CLASSES HAVING ACQUIRED A Dis
TIXCT PLACE IN THE ARTS 18 IN ITSELF No GROUND FOR DIVISION. Where the reqnirement for division between dependent inventions was made becanse the sub-classes in the Office classification have acquired a distinct place in the arts to which the several parts of this application would go, Held tbat this in itself presents no gronnd for a requirement to divide. ON PETITION.
APPARATUS FOR CHARGING SIGAR-CAXE CARRIERS.
Application of Oma Carr filed September 26, 1893, No. 486,554.
Messrs. Alexander & Davis for the applicant. SEYMOUR, Commissioner:
Petition is taken from the requirement of the Examiner that this application be divided between claims 1 to 9, inclusive, which are to a bundle-carrier, and claims 10 to 15, inclusive, which cover the conveying and hoisting mechanism.
While there are more inventions than one in this application, it does not appear that they are independent. The bundle-carrier does not act as a mere bundle-carrier, nor does the hoisting and conveying mechanism act merely as such. The two co-operate to charge the sugar-mill with uniformity. All the parts relate to the same subjectmatter and co-operate toward one end.
Again, there appears to be a likelihood that the consideration of the case on its merits may clear the application of the objection, as presented by the Examiner, that it is multiform. From this point of view the requirement to divide might be safely postponed.
I prefer, however, to dispose of the case upon the grounds presented by the Examiner, which appear to be that sub-classes have acquired a distinct place in the arts to which the several parts of this application would go. These correspond to the sub-classes in the Office and in the division from which this petition comes. This in itself presents no ground for a requirement to divide. It is therefore set aside.
EX PARTE PFEFFER.
Decided December 2, 1893.
66 (). G., 845. AMENDMENT UNDER Rưle 68.
Where claims are amended, the amendment may not be held as not involv. ing a matter of substauce merely becanse such amendment does not avoid the references. ON PETITION.
Application of Jacob Pfeffer filed May 23, 1893, No. 475,218.
Messrs. Crosby & Dorian for the applicant. FISHER, Assistant Commissioner:
This is a petition taken from the action of the Examiner in refusing to act upon the merits of the claim presented in the amendment of September 5, 1893.
The applicant's position is that there have not been two actions upon the first claim as originally filed and amended and that the ameud. ments affect the substance of the invention. The Examiner's position is that the amendments present no substantial change which avoid the references.
It was said in er parte Griswold (C. D., 1890, 13; 50 O. G., 838) that The rule of decision for the Commissioner is “whether as a matter of language the amended claim presents the same idea or inventiou as the old oue.".
It was also said that-
that all claims are to be regarded as not amendeel in matter of substance which do not in the opinion of the Examiner avoid the references.
As the Examiner apparently based his action upon the ground that the change made did not avoid' the references, and that, therefore, the change was not a matter of substance, it is obvious from the quotations given above that his position is incorrect.
The petition is grauted.
DUNCAN v. WESTINGHOUSE, JR.
Decided December 15, 1893.
.66 0. G., 1005.
1. INTERFERENCE IN FACT-GENUS AND SPECIES.
Where an unexpired patent shows and describes two species and contains a claim in an alternative form which includes both species, and an application shows and describes one of the species and contains a generic claim, un interter
ence in fact exists. 2. MOTIONS TO DISSOLVE AN INTERFERENCE-RULE 124.
In all motions to dissolve au interference both parties have the rigbt to appear and be he:ird before the Primary Examiner, and if the motiou is appealable to the Commissioner both parties are beard before him. No valid renson appears to exist for making an exception when the motion is appealable to the Examiners-in-('hief and in allowing only one party to the contesteil proceedlings to
appear and be hearı. 3. SECTION 481 OF THE REVISED STATUTES.
The supervisory anthority of the Commissioner should be exercised under section 181 of the Revised Statutos ouly under extraordinary circumstances. APPEAL on motion.
ATTACHMENT TO HYDRAULIC MOTORS.
Patent granted Louis Duncau January 5, 1892, No. 466,661. Appcation of George Westingiouse, Jr., filed July 16, 1890, No. 358,971.
Messrs. Whitman & Wilkinson for Duncan.
Vessrs. Terry & Mackaye for Westinghouse. FISHER, Assistant Commissioner:
This is an appeal from the action of the Primary Examiner refusing to dissolve the above-entitled interference on the three following counts:
First. Because no interference in fact exists, the patent and the application involved in the interference being for different inventions anıl the interference being in words rather than in fact.
Second. Because the prior applicant had no right to make the claim involved in the above interference, it being unsupported by any matter contained in the specification as originally filed or inserted by amendment prior to the issuance of the patent alleged to interfere.
Third. Because the snbject matter covered by the applicant's claim was not patentable at the date of filing his application, it being anticipated by certain iuventions shown in the British patents to Todd, No. 8,552, dated Juno 3, 1884, and to Rigg, No. 6,047, dated May 16, 1885, and also by certain Uniteil States patents-to wit, the patent to Thayer, No. 183,081, dated October 10, 1876; to Simmons, No. 191,258, dated May 29, 1877; to Lapgre, No. 262,794, dateil August 15, 1882; to See, No. 280,247, dated June 26, 1883; to Huson, No. 398,512, dateil February 26, 1889, and to Pickles, No. 433,184, dated July 29, 1890; and also by certain printeil publications—to wit, Engineering, January 20, 1888, pages 59-61, which will, if it be possible to do so, be produced at the hearing.
The issue is in the words of Westinghouse's serenth claim and includes Duncan's eighth claim. Duncan's attorney insists that while the issue would dominate his claim such claim covers a device specifically different from anything disclosed by Westinghouse, and therefore, in accordance with the decision in Reed v. Landman, (C. 1)., 1891, 73; 55 (). G., 1275,) no interference in fact exists.
Analyzing Duncan's claim 8, I find it consists of (1) a plurality of extensory paddles, (2) an exterior ring limiting the extension of said paddles, (3) an interior ring attached to and driving said paddles, (4) means for altering the eccentricity of either one of said rings.
Undoubtedly the full equivalent of the first three elements of this claim are found in the Westinghouse device. The last element is set forth in an alternative form. Duncan shows two species of his device. In Figure 1 the variation in the eccentricity is effected by moving the outside ring limiting the extensions of the paddles; in Fig. 2, by moving the inside ring carrying the extensory paddles. Westinghouse shows a device in which, like Duncan's species first above referred to, he varies the eccentricity by moving the outside ring. He discloses substantially the same specific device as is shown in Duncan's Fig. 1.
Under these circumstances this case is distinguished from that of Reeil v. Landman, supra, and brings these two cases within the rule stated in that decision as follows:
Of course generic and specific claims, lageil upon the same structure of invention, conflict because the invention is one and the same, wlietber generically or specitically stated.
See also Edison v. Stanley, C. D., 1891, 173; 57 0. G., 273, and Zeitinger v. Reynolds v. McIntire, C. D., 1891, 212; 57 O. G., 1279.)
The fact that Duncan's claim covers either the device shown in Fig. 1 or the device shown in Fig. 2 presents no valid reason for dissolving the interference when Westinghouse discloses and claims a device which is the full equivalent of wliat is shown in Duncan's Fig. 2.
Westinghouse in his original application and up to the time of the issue of the patent to Duncan had confined his claims to a pump (or motor) of such construction that the eccentricity of the axis of the piston-carrier to the casing might be varied, thus varying the amount of the surface of the padilles exposed to the water. After Duncan's patent had issued Westinghouse introducel his seventh claim, which is as follows:
7. A variable-speed gear consistiug of a means for supplying fluid pressnre, a rotary eccentric hydraulic motor supplied therefrom, im a vlovice or devices for varying the eccentricity of said motor, substantially is described.
There was no expression in Westinghouse's application up to that time leading up to the use of the term “variable-speed gear" in this claim. The Primary Examiner therefore rejected the claim as covering new matter; but the Board of Examiners-in-Chief on appeal lield that there was no insufficiency of disclosure” and allowed the claim.
Upon the declaration of the present interference Duncan moved to dissolve on the ground that Westinghouse had no right to make the claim; but the Primary Examiner held that the question presented by this motion was res adjudicata, inasmuch as that question bad been passed upon by the Board of Examiners-in-Chief in their decision hold. ing that there was a sufficiency of disclosure in Westinghouse's application to warrant the claim. Duncan contends that this action of the Examiner las practically cut off his privilege under Rule 122 to bring up on proper motion Westinghouse's right to make this claim, and asks that the supervisory powers of the Commissioner under section 181, Revised Statutes, giving him the authority to perform all duties respecting the granting and issuing of patents directed by law," be exercised to give him relief under the peculiar circumstances of this case.
Rule 124 contains the following provision: Decisions on these motions, when appealable, go to the Esaminers-in-Chiet, and upon such appeals the party only whose claim is affected shall have the right to appear and be heard, unless the question is inter pertes.
Motions to dissolve an interference are argued before the Primary Examiner, both parties having the right to appear and be leard. If, from the decision of the Primary Examiner, an appeal is duly taken to the Commissioner both parties have the right to appear and be heard.