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This application has been pending for more than eleven years. On June 15, 1889, after various former actions, a letter was received from the applicant stating that the last action of the Office was not understood; that he had treated certain previous formal objections raised by the Office, and adding a few remarks as to the irrelevancy of his prior patent, which had been cited as a reference to his claims. The Office replied June 21, 1889, to the effect that it still regarded the applicant's prior patent a reference for the claims against which it was cited. On June 6, 1891, the applicant filed an argument on the irrelevancy of his prior patent as a reference, and asked that the case be further treated on its merits.
To this the Office replied June 11, 1891, as follows: Applicants whole contention lies in the second paragraph on the first page of the paper last filed in the case, to wit: “Said patent never contained claims or full descriptions of the collector, and no attempt was ever made to cover the construction in that patent." This is denied. The collector is described, shown, and claimed in said patent. The claims horein are therefore finally rejected on the references and for the reasons heretofore given, and are now subject to appeal to the Board of Examiners-in-Chiet.
On June 9, 1893, only three days before the two years had expired, a letter was received from the applicant stating that from the last action of the Examiner it would appear that the case stands rejected only on his prior patent; that if he was inistaken in this he wished it made very clear. Then followed an argument to show that the Exam. iner was in error in holding that “the collector is described, shown, and claimed in said patent." The applicant was then notified June 19, 1893, that his application was held to be abandoned.
From the above record of actions it will be seen that this case turns on the question whether or not the applicant's action of June 9, 1893, Fasof such nature as to save the application from abandonment under Rule 171, which states:
Prosecution of an application to save it from abandonment must include such proper action as the conditiou of the case may require. The admission of an amendment not responsive to the last official action, or refusal to admit the same, and any proceedings relative thereto, shall not operate to save the application from abandonment under section 4891 of the Revised Statutes.
Under the circumstances above detailed it is thought that the action of June 9, 1893, was not of such nature as to save the case from abandonment. (Ex parte Edison, C. D., 1888, 159; 45 0. G., 461; ex parte Hume, C. D., 1891, 168; 57 0. G., 123.)
The patent system is as much for the benefit of the public as for the individual inventor, and the Office will not scrutinize the record to find a way of saving an application from abandoument that has already been pending before the Office for more than eleven years, especially where the claimed invention belongs to an art which during such period has rapidly developed and where the grant of a patent upon the claims now in the case might be a menace to meritorious and more diligent inventors.
Moreover, there is ample evidence in the record of this case showing an intent on the part of the applicant to delay the issue of a patent or the final disposition of the case. On June 13, 1883, the application was rejected. On June 9, 1885, applicant, after waiting nearly two years, filed a letter stating:
Before making the changes suggested (by the Office) I wish to give the matter more thought, as it would greatly limit the scope and I do not feel that it is necessary. I am in no hurry to issue the patent, so that it might rest for the present.
The decision of the Examiner holding that the action taken by the applicant was not such proper action as the condition of the case required, and for such reason the application has become abandoned, is affirmed.
EX PARTE TURNER.
Decided January 12, 1894.
66 O. G., 1593.
1. AN ART WITHIN THE MEANING OF THE PATENT LAWS DEFINED.
An art within the meaning of the patent laws must accomplish some change in
the character or condition of material objects. 2. What is NOT AN ART in Patent Law.
When the practice of the alleged art will not produce any physical effect, but will merely carry out a plan or theory of action without the production of and physical results proceeding directly from the operation of the theory or plan
itself, it is not an art in the sense of the patent law. 3. ART OF ADVERTISING AS HEREIN CLAIMED IS NOT A PATENTABLE ART.
Where the art of advertising as claimed produces no physical effects, but only a state of mind in the purchaser of the newspaper amoupting to a predisposition to read the advertisements, and there ends unless the reader wills otherwise,
Held that such art of advertising is not a patentable art. 4. SAME-OMISSION OF A STEP NECESSARY TO ITS LAWFUL PRACTICE-GROUND FOR
REJECTION. Where the art as claimed omits a step necessary to its lawful practice, Held that such omission was a proper ground for the rejection of the claims. APPEAL from the Examiners-in-Chief.
ART OF ADVERTISING AND MEANS THEREFOR. Application of George W. Turner filed September 27, 1892, No. 447,056.
Messrs. Philipp, Munson & Phelps for the applicant. SEYMOUR, Commissioner.
This is an appeal from the decision of the Examiners-in-Chief affirming the rejection by the Primary Examiner of the following claims :
1. The improvement in the art of advertising, which consists in issuing publications or supplements distinguished from each other and publishing a series of advertisements, some or all of which are accompanied by offers for certain publications or supplements, substantially as described.
2. The improvement in the art of advertising, which consists in issuing publications or supplements distinguished from each other and publishing a series of advertisemnents, some or all of which are accompanied by offers for the return of certain publications or supplements to the advertisers, substantially as described.
3. The improvement in the art of advertising, which consists in issuing with each bomber of the paper a supplement distinguished from the supplements issued with other nombers and publishing a series of advertisements, some or all of which are accompanied by offers for the return of certain supplements to the advertisers, substantially as described.
4 A newspaper or other publication containing a series of advertisements, sodie or all of which are accompanied by offers for certain copies of an issue of said newspaper or other publication, or of a supplement issued in connection therewith, substantially as described.
The appellant claims to have invented a process to secure the reading of advertisements in newspapers. A numbered picture is issued with each paper and the advertiser prints as a part of his advertise. ment an offer of some article of his stock in return for some one of the numbered pictures. The following is a sample of the proposed advertisement:
Bell's Homeopathic FAMILY MEDICINE CASE FREE. For yesterday's Recorder tintograph of the view of Union Square, numbered 349, we will exchange free our popular homeopathic family medicine case, containing twenty different standard remedies, sufficient for the treatment of the ordinary ailments in any family. Full directions for using accompany each caso.
BELL'S HOMEOPATHIC PHARMACY,
3 Vesey Street, New York. Send for “Bell's Free Family Guide to Homeopathy."
It is assumed that the advertisements will be read by a purchaser of the paper in order to see whether any advertiser makes an offer for the picture bearing the particular number issued to him with his paper.
Is this series of acts an art, such as is intended to be protected and its growth promoted by the patent law?
It should be observed that the process is not fully stated in any claim. In addition to issuing the numbered pictures and publishing an offer of an article from some advertiser's stock in return for the picture bearing a certain number, the plan implies a lawful method of choosing that number and fulfilling the offer; otherwise the reader is induced to scan the advertisements by a false pretense. In the newspaper filed in the case the offers are for a picture issued the day before and bearing a particular number, and it is to be noted that the selection is thus made after that picture had fallen into the hands of some one who may be known to the advertiser; but if this were not so, what method can be suggested consistent with fairness and good morals of choosing the number of the picture whose holder is to receive the gift? Somebody must choose it, either by favoritism or by caprice or by lot. This omitted step in the process savors of unlawfulness.
Again, if this process is practiced by ove taking the prescribed steps in the order mentioned, the process will not produce any physical effect. A patentable process must accomplish some change in the character or condition of material objects; hence a plan or theory of action which,
if carried into practice, could produce no physical results proceeding direct from the operation of the theory or plan itself is not an art within the meaning of the patent laws. (1 Rob. on Pats., 219.)
Several cases are cited by the appellant in support of his contention that a process producing no physical effect may nevertheless be patentable, among them the Telephone Cases, (C. D., 1888, 321; 43 O. G., 377; 126 U. S.,) where the method of producing a variable current and using it to reproduce sound waves at a distance was sustained; but the reproduction of sound-waves in air is just as truly a physical effect as the production of pig-iron.
In Curtis on Patents, section 10, referring to Kneas8 v. The Schuylkill Bank, (4 Waslı., 12,) cited by the appellant, it is said that the patent for new and useful improvements in printing bank-notes on both sides furnishes an illustration of an art as the subject of a patent; but the art produced physical effects—to wit, a note printed on both sides. In the Hotel Register Cases the patent was for a book, not for a process of producing the book.
Since the process it carried out produces no physical effect, but only a state of mind in the purchaser of the newspaper amounting to a predisposition to read the advertisements and there ends, unless the reader wills otherwise, and since the process is not specified to include any fair and legal method of selecting the number of the picture of which the holder is to be rewarded, it is considered that claims 1, 2, and 3 cannot be allowed.
Claim 4 is for a newspaper or other publication containing advertisements of this character. A newspaper, as such, is not patentable as an article on account of its contents, whatever the effect of reading the contents may be.
The decision of the Examiners-in-Chief is affirmed.
REYNOLDS v. WELLS, JR.
66 O. G., 1594. 1. INTERFERENCE-ArrlicANT VERSUS PATENTEE-FACTS TIIAT PROVE THE APPLI
CANT TO HAVE BEEN TO INVENTOR. Where the applicant wins the mechanical engineer and the patentee the general superintendent and manager for the same employer, and where at an interview between then the applicant made sketches of the invention, from which drawings were made and signed by him as inventor and by the pater tee as a witness, and whero it was thought it the time that the conception of the invention was complete, and where the lattor had the custody of the sketches and failed upon requost to produce them or account for their loss, and also failed to produce sketches allegoil by him to havo been made by him prior to those of the applicant, and whero, in addition to those facts, the patentee's candor as a witness is considorod, his defectivo reoollection of the contents of the applicant's sketches, and the general terms in which he describes his own sketclı *, Held that these facts ostablish that the applicaut was the originator of the invention in issue in the interforouco.
2. SAME-SAME-DILIGENCE OF APPLICANT.
Where under the above facts, and considering that the patentee was the appli. cant's superior officer, was adverse to him in interest in this question, had already obtained his patents, and told him, upon the latter complaining of this, that " that was all right," and had persuaded him not to apply for a patent, the applicant did not file his application until nine months after the date of his conception and more than five months after he knew of the patentee's patents, Held it must be considered, under these somewhat adverse circumstances, that the appli
cant had not incurred the penalties of negligence. 3. SAME—THE QUESTION OF THE PATENTABILITY OF THE INVENTION REFERRED
TO THE EXAMINER FOR RECONSIDERATION, NOTWITHSTANDING THE
DEFEATED PARTY HAS A PATENT THEREFOR. Where the applicant has the fundamental patent upon which the invention in issue is based, and where the question of the patentability of the invention in issue over the fundamental patent was discussed at the reqnest of the Commissioner, although the invention was patented, Held that the question of the pateptability of the invention in the issne would now be referred to the Exiininer for his reconsideration, APPEAL from the Examiners-in-Chief.
ELEVATOR APPARATUS. Application of George H. Reynolds filed Febrnary 6, 1892, No. 420,304. Patents granted to William H. Wells, Jr., August 18, 1891, Nos. 457,844 and 457,845.
Messrs. Foster & Freeman and Messrs. Raymond & Veeder for Rey. nolds.
Vr. Frank T. Brown for Wells, Jr.
The issue in controversy is as follows: 1. The combination, with the cago, traveling cables, and an operating device, of sheaves arranged within the bights of the cables, and a carrier for said sheaves, supported to reciprocate liorizontally under the contracting and relaxing of the bights and connected with the stopping and starting device of the engine.
2. The combination, with a traveling carriage, of two cords or cables connected with an operating device on the car, horizontally-movable sheaves near the bottom of the elevator-shaft, around which the cables pass in opposite directions, and guiding-sheaves at the top and bottoin of the elevator-shaft, aronnd which the cables pass, said cables being then attached to the car.
3. The combination, in an elevator, with a traveling carriage, of two ropes or cables, each baving one of its ends connected with it coutrolling device on the carriage and its other end sccnrod to the car, horizontally-movable sheaves around which the two cables respe, uvely pass in opposite directions, a guiiling-sheave near eacb siile of such pair of movable sheaves, and an adjustable support near the top of the well for the loops of the cables.
During the time covered by the origin of this device both parties in interference were in the employment of the Standard Elevator Com. pany, of Chicago-Reynolds as mechanical engineer and Wells as superintendent and general manager. This company desired to manu. facture elevators that would not infringe a prior patent granted to