others were present, this being the first meeting of the directors since Tremain's return from the Albany Milling and Mining Company's works at which Tremain was present, Tremain exhibited drawings showing the invention in all its parts, which Curtiss recognized as embodying all that he claims in this interference issue. Curtiss laid no claim to the invention at that meeting, although without the knowledge of Tremain his application for a patent upon it had been signed and sworn to and was on its way to the Patent Office. It is clear that Tremain had a definite conception of the invention by the 22d of September, and that by reason of his disclosure to McMaster he could avail himself of a date of conception as early as September 15. Curtiss made sketches embodying this complete invention on or before October 4, 1890, which are made part of this record as Exhibits E', E', and E3. On that date copies of these drawings were inclosed in a letter to his attorney in Washington. The sketches and letter sent to his attorney are not made parts of the record; but the manu script first draft of the letter, unsigned, and sketches, not dated, were annexed to Curtiss's deposition, which was taken without the presence of counsel on either side. The sketches in the record do not appear to have been shown to any one until they were produced in evidence. The letter actually sent to the attorney and the sketches inclosed to him are not introduced and no reference was made to them in the record or in the briefs. If priority could be awarded to Curtiss on this record it must be solely upon the strength of these sketches and Curtiss's statement that he made them in June or July, 1890. On this point there is no corroboration. Turning to the sketches themselves, it appears that one of them is made upon a piece of paper from which two pieces have been cut, either before or after the making of the sketch upon it. I am inclined to think that the drawing was put upon the paper first and the cuttings made afterward, since the paper conforms somewhat to the shape of the drawing put upon it. Exhibit E3 has also been cut after something was put upon it, for two words which occur in the record as descriptive of this device are cut in two, as well as erased. The construction to be given to mutilated papers in the absence of explanation would bear heavily against the party offering them without explanation; but if Curtiss had these papers in his possession and had recently made the sketches when he exhibited a chalk drawing on a board to George Rae it is singular that Curtiss made no reference to such completed sketches on that occasion. It is equally singular that with this full conception of the improvement and with the drawings. complete Curtiss continued, as he certainly did continue, through August and the early part of September his efforts to solve a useless problem and to experiment with the mechanical device for moving the valves without making disclosures to any person of the contents of 10693 PAT-3 those sketches, for the language used in the Rae and Marlitt conversations cannot be considered in any sense a disclosure of definite means for accomplishing any result. By a rule of practice Curtiss is entitled to December 11, 1890, as the date of constructive reduction to practice. He never actually reduced his invention to practice and is in conflict with an inventor who did. The attempt is made to carry back the date of constructive reduction to practice to the date of the application and to the date of the disclosure of the invention to the attorney in such definite form that the application and drawings were prepared from it; but these transactions are nevertheless mere disclosures; nothing more. None of them anticipates the actual machine in successful operation on the 2d of October under Tremain's personal direction. There is nothing on Curtiss's part but his own allegation to show that sketches were in existence earlier than this, and he is without the corroboration on this point of a single witness or a single circumstance. The conduct of Curtiss is against this hypothesis. The combination, all the elements being old, must be considered as a whole. There is no such thing as joint invention here by reason of the suggestion to make use of the walking-beam, for the obvious reason that the walking-beam is old. Under all the circumstances of this case I cannot give Curtiss the benefit of an earlier date of conception than that when the undated sketches were mailed to his attorney, October 4, 1890. The decision of the Examiners-in-Chief is reversed and judgment of priority is awarded to Tremain. EX PARTE HUNTER. Decided January 24, 1894. ABANDONMENT-Proper ACTION-RULE 171. Where, after final rejection, the applicant replies that the last action of the Office is not understood, Held, that such response is not such as the condition of the case requires. The Office will not scrutinize the record to find a way of saving an application from abandonment that has already been pending for more than eleven years, especially where the art during that 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. ON PETITION. APPARATUS FOR TELEGRAPHING INTO MOVING RAILWAY TRAINS. Application of Rudolph M. Hunter filed October 16, 1882, No. 74,364. Mr. R. M. Hunter, pro se. SEYMOUR, Commissioner: This is a petition for relief from the action of the Primary Examiner holding this case to have been abandoned by reason of failure to prosete within the prescribed time. 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: Applicant's 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 herein 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-Chief. 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 mistaken in this he wished it made very clear. Then followed an argument to show that the Examiner 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, was of 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 condition 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 4894 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 O. G., 461; ex parte Hume, C. D., 1891, 168; 57 O. 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 abandonment 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. 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 amounting 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 advertisements, 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 number of the paper a supplement distinguished from the supplements issued with other numbers 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, some 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 advertisement 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 homœopathic 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 case. BELL'S HOMEOPATHIC PHARMACY, Send for "Bell's Free Family Guide to Homœopathy." 3 Vesey Street, New York. 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 one 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, |