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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 inight 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 file 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 licKay v. Dibert, (C. D., 1881, 238; 19 0. 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.
66 0. G., 653. DIVISION-APPARATUS—THE MATTER OF SUB-CLASSES HAVING ACQUIRED A Dis
TINCT PLACE IN THE ARTS 18 IN ITSELF No GROUND FOR Division. Where the reqnirement for division between dependent inventions was made because 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.
APPARATCS FOR CHARGISG $LGAR-CANE 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 convey. ing and hoisting mechanisin.
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 RCLE 68.
Where claims are amended, the amendment may not be helil as not involv. ing a matter of substance merely becanse such amendment does not avoid the references.
Messrs. Crosby & Dorian for the applicant.
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 amend. 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 ex parte Griswold (C. D., 1890, 13; 50 O. G., 838) that The rule of slecision for the Commissioner is “ wliether as a matter of language the amended claim presents the same idea or invention as the old one.".
It was also said that, A fallacy is therefore necessarily involved in the inference * - * that all claims are to be regarded as not amenılei 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 1. 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, in interfer
ence in fact exists. 2. MOTIONS TO DISSOLVE AN INTERFERENCE-RULE 121.
In all motions to dissolve au interference both parties have the right to appear and be heard before the Primary Examiner, and if the motiou is appealabile to the Commissioner both parties are heard before him. No valiil renson appears to exist for making an exception wben the motion is appealable to the Examiners-in-('hief and in allowing only one party to the coutestell proceelings to
appear and be heari. 3. SECTION 481 OF THE REVISED STATUTES.
The supervisory anthority of the Commissioner should be exercised umier section 181 of the Revised Statutes only under extraordinary circumstances.
APPEAL ou motion.
ATTACHMENT TO HYDRAULIC MOTORS. Pateut granted Louis Duncan January 5, 1892, No. 466,661. App :cation of George Westingiiouse, Jr., tiled July 16, 1890, No. 358,971.
Messrs. Whitman & Wilkinson for Duncan.
Messrs. 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 inrolved in the interference being for different inventions and 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 file 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 June 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 Lapyre, No. 262,794, dateil August 15, 1882; to See, No. 280,247, dated June 26, 1883; to Huson, No. 398,512, (lateil 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 seventh 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 there. fore, in accordance with the decision in Reed v. Landman, (C. D., 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, le 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 Reed v. Landman, supra, and brings these two cases within the rule stated in that decision as follows:
Of course generic and specific claims, liaseul upon the same structure of invention, conflict because the invention is one and the same, whether generically or specitically stated.
(See also Edison v. Stanley, C. 1)., 1891, 173; 57 0. G., 273, and Zei. tinger 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 iuterference when Westinghouse discloses and claims a device which is the full equivalent of what is shown in Duncani'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 introduceil his seventh claim, which is as follows:
7. A variable-speed gear consistiug of a means for supplying fluid pressure, a rotary occentric hyalraulic motor supplied there from, aml a device or clevices for varying the eccentricity of said motor, substantially as described.
There was no expression in Westinghouse's application up to that tine 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 held that there was no insufficiency of disclosure” and allowed the claim.
Upon the declaration of the present interference Duncan moveil 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 Examiners-in-Chiet, and upon such appeals the party only whose claim is affected shall have the right to appear and be heard, unless the qnestion is inter portes.
Motions to dissolve au interference are argued before the Primary Examiner, both parties having the right to appear and be heard. If, from the decision of the Primary Examiner, an appeal is duly taken to the Commissioner both parties have the right to appear aud be heard.