PUBLIC APPRECIATION EVIDENCE OF INVENTION-Continued.

3. POPULARITY AND LARGE Sales of PATENTED ARTICLE NOT IMPORTANT WHEN IT IS WITHOUT Patentable NOVELTY-While the patented article may have been popular and met with large sales, Held those facts are not important when the alleged invention is without patentable novelty. (Citing Duer v. Lock Company, C. D., 1893, 334; 63 O. G., 1060; 149 U. S., 216.) *Olin et al. v. Timken, 645.

PUBLIC USE. See Answer to Bill; Construction of Specifications and Patents, 22; Defense, 2; Laches; Particular Patents, 25, 72.

1. EXPERIMENTAL USE-Where a manufacturer places an article upon the market, in the usual and accustomed line of business, more than two years before applying for a patent, to see what his customers think of it, it cannot be said that it was an experiment within the meaning of the statute. "It is a trader's and not an inventor's experiment." *Smith & Davis Manufacturing Company v. Mellon, 117.

2. IMMATERIAL CHANGE-Where a change has been made in an article within the two years of the filing of the application, and such change is referred to in the specification as a mere preferable form of construction, such change will not save the patent from the operation of the statute. *Id.

3. APPLICATion for a PatTENT-INVENTION IN PUBLIC USE OR ON SALE for MORE THAN TWO YEARS-SECTION 24, ACT OF JULY 8, 1870, (CH. 230, SEC. 4886, R. S.)-INTERPRETATION-The plain import of the words "not in public use or on sale for more than two years prior to his application" is the creation of a limitation of two years within which a patent for au invention must be applied for after it has gone into public use, either with or without the knowledge, consent, or allowance of the applicant for the patent. *Ex parte Drawbaugh, 297.

4. PRIOR PUBLIC USE-VALID-Where the device set up establishing prior publio use did not contain one of the features of the patented device, and which feature was useful and novel, Held that the public use was not established. *Costa et al. v. Drobaz, 545.

RECORD OF PROCEEDINGS IN THE PATENT OFFICE. See Appeal to the Court of Appeals of the District of Columbia, 4.

REDUCTION TO PRACTICE. See First and Original Inventor, 2; Priority of Invention, 2.

1. INTERFERENCE-REDUCTION TO PRACTICE-EXPERIMENTAL MACHINE IS NOT— Where one of the parties to an interference had first made a machine upon which the issue can be read, but which was inoperative and was dismantled and not assembled until and except for the purpose of the interference, and, furthermore, after such dismantling the party continued to experiment in that line with other devices and finally was only successful by substituting in his machine a device of another inventor, Held that the first machine was an experiment and not a reduction to practice. Glidden v. Busell, 48. 2. SAME-SAME-SAME-PRIORITY-Glidden constructed, in 1886, a heel-trimming machine in which the rand-knives were connected with the hollow heelcutter shaft by a flexible coil-shaft, and with it trimmed and randed a few heels. It was treated as an experimental machine, was dismantled, and never assembled until it became necessary for the purposes of this interference. He experimented with other devices for driving the rand cutter, and adopted finally the "Winter invention," a small shaft with a universal joint, by which the rand-cutter was driven. Held that the flexible-wire coil-shaft is not such a connection for the rand-cutter and the cutter-head as completes the invention, and that the 1886 machine was experimental and does not afford the basis of a judgment of priority in favor of Glidden as against Busell's patent. Id.

REDUCTION TO PRACTICE-Continued.

3. EXHIBIT REDUCTION TO PRACTICE-EXPERIMENT-Where the exhibit relied on to establish priority of invention has all the necessary parts to a fullsized working machine, and it fully accomplished at the date of its construction the purpose for which it was intended and its mode of operation and utility were understood and appreciated by those who saw it operate, Held that such exhibit was a reduction to practice, regardless of the question whether the various other mechanisms entering into the machine all worked with practical success or not. *National Cash Register Company et al. v. Lamson Consolidated Store Service Company, 283.

4. THE FIRST TO CONCEIVE NEGLIGENT-THE SECOND TO CONCEIVE AND FIRST TO REDUCE TO PRACTICE IS THE FIRST INVENTOR-Where the first to conceive is negligent in reducing to practice, and the second to conceive is so diligent as to put the invention into practice before the date of the reduction to practice by the first to conceive, Held, under such facts, that the second to conceive is the first inventor. Colhoun v. Hodgson, 66.

5. INTERFERENCE-PRIORITY OF INVENTION-PERFECTED MACHINE-Where G was the first to conceive and the first to reduce to operation, although the machine was far from perfect and never operated continuously for work in a commercial sense, Held that such machine was something more than an unsuccessful experiment-that it was a reasonably successful reduction to practice. Coffee et al. v. Guerrant, 384.

REFERENCES. See Amendments, 1; Invention, 6, 7, 8; Reissues, 4.

REISSUES. See Construction of Specifications and Patents, 2; Particular Patents, 3, 17, 31, 69, 83, 93.

1. REISSUE No. 10,264 VOID AS TO CLAIMS IN SUIT-DELAY BY ADVICE OF SOLICITOR NOT EXCUSABLE-Where there was a period of eight years between the date of the original patent and the application for the reissue, Held that the delay was unreasonable and cannot be excused on the ground that the patentee would have seasonably applied for the reissue but for the advice of his solicitor to wait. (Dobson v. Lees, C. D., 1890, 569; 53 O. G., 1740; 137 U. S., 258.) * Wollensak v. Sargent & Company, 164.

2. REISSUE-MISTAKE OF FACT-MISTAKE OF JUDGMENT UPON FACTS-Where there was nothing in applicant's world of fact existing at the time he took his patent upon which the alleged errors of judgment could have been based, Held that there was no mistake of fact and no mistake of judgment upon facts that could be recognized in an application for a reissue of his patent. Ex parte Bowman, 25.

3. SAME-RESTORATION OF CANCELED CLAIM-ESTOPPEL-Where the claim songht to be reissued is similar to one that was presented in the original application and rejected by the Office and canceled by the applicant in order to obtain his patent, Held that under such circumstances the applicant is estopped from setting up such claim in an application for a reissue. Id.

4. SAME-RE-EXAMINATION-ANTICIPATION-Where the claim in the reissue application is a substantial reproduction of a claim in the original canceled upon a reference, Held, upon re-examination of it, that the applicant acted rightly in judging that the claim then presented was met by the reference. Id. 5. REISSUE TO CORRECT A MISTAKE IN THE DRAWINGS-PROPER-Where there was a mistake in the drawings, which, however, did not render the patent wholly inoperative and probably would have been discovered by a mechanic, but was of such a character that a machine constructed from the drawings would have been inoperative for some purposes which the patentee was entitled to cover by his claims, Held that a reissue to correct the drawings was proper and lawful. *Beach v. American Box Machine Company, Inman, et al., 618.

REISSUES-Continned.

6. AMENDMENT WITHIN THE SCOPE OF THE ORIGINAL INVENTION-EXPANSION OF CLAIMS NO NEW OATH-Where the amendment of the application as first filed is within the scope of the original invention, no charge of undue expansion can be sustained and no new oath is necessary because the amendment introduces no new invention. The rule of law in Railway Co. v. Sayles (C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554) that an amendment seeking to introduce a material variation in the original application cannot be allowed is not applicable where it introduces no new matter. *Id.

7. UNDUE EXPANSION BY THE WORD "PREFERABLY"-Where the original patent made no reference to an alternative construction of the device wherein one of the elements might be omitted, while the reissue merely retains the said element, "preferably," as another form of the device, Held that the effect of the insertion of the word "preferably" was to render this element nonessential and unduly to expand the original. *Olin et al. v. Timken, 645. REJECTED CASES. See Abandonment, 1; Amendments, 2, 3; Interference, 19. REJECTION FOR INDIVISIBILITY-APPEAL-A rejection may be given upon a patent granted to the same inventor upon an application which was pending concurrently with the application containing the rejected claim, and such rejection is, like all others, appealable to the Examiners-in-Chief. Ex parte Hulbert, 1.

REJECTED CLAIMS. See Construction of Specifications and Patents, 4, 16, 18; Invention, 2, 12; Reissues, 3, 4; Supreme Court of the District of Columbia, 1.

1. SECTION 4914, REVISED STATUTES OF THE UNITED STATES-THE REVISION OF THE COURT OF APPEALS CONFINED TO THE POINTS SET FORTH IN THE REASONS OF APPEAL-The action of the Commissioner of Patents in rejecting a claim for the striker plate in another application by the same inventor, but which rejection was acquiesced in by the applicant, Held not to be reviewable on appeal from a decision of the Commissioner rejecting a claim in this application for the combination of the striker-plate and door or casing. "In re Forg, 138.

2. LACK OF INVENTION AND ANTICIPATION, DIFFERENCE BETWEEN-Complete anticipation is rare, and to reject a claim on the ground that it is substantially met by a reference is practically the same as to reject it on the ground of lack of invention in view of the reference, such differences as remain not involving invention. The two grounds of rejection, as applied to this case, are the same subject-matter of thought viewed from different points. Ex parte Fergusson, 6.

RENEWAL OF FORFEITED CASES.

RENEWAL OF FORFEITED APPLICATIONS-The right of an applicant to renew a forfeited application under section 4897 is exhausted when once exercised. Decisions of the Secretary of the Interior, 111.

RES ADJUDICATA. See Prior Adjudication; Suits for Infringement, 1.

RESULTS. See Infringement, 11; Particular Patents, 92.

SALE OF PATENTED ARTICLES. See Public Appreciation Evidence of Invention; Use and Sale of Patented Articles.

SECTION 4915, REVISED STATUTES. See Supreme Court of the District of Columbia. SERVICE OF PROCESS. See Assignments, 2, 3.

STIPULATION. See Suits for Infringement, 5.

SUBSEQUENT PATENTS. See Abandoned Applications; Abandoned Experiments, 2; Particular Patents, 6, 21, 76, 90.

1. EARLIER AND LATER PATENTS FOR THE SAME INVENTION TO THE SAME INVENTOR-Of two patents for the same invention issued to the same inventor the later is void. (Suffolk Company v. Hayden, 3 Wall., 315; James

SUBSEQUENT PATENTS-Continued.

v. Campbell, C. D., 1882, 67; 21 O. G., 337; 104 U. S., 382; Mosler Safe Co. v. Mosler, C. D., 1888, 420; 43 O. G., 1115; 127 U. S., 355; McCreary v. Pennsylvania Canal Co., C. D., 1891, 539; 57 O. G., 1131; 141 U. S., 467; Underwood v. Gerber, C. D., 1893, 340; 63 O. G., 1063; 49 U. S., 224. *Miller et al. v. Eagle Manufacturing Company, 147. 2. THE REASON FOR THE RULE ESTABLISHED BY THE ABOVE-CITED CASES-The reason for the rule established by the above-cited cases is that the power to create a grant is exhausted by the first patent, and for the further reason that a new and later patent for the same invention would operate to extend or prolong the monopoly beyond the period allowed by law. (Odiorne v. Amesbury Nail Factory, 1819, 2 Mason, 28; 1 Robb, 300.) *Id.

3. THE RESULT OF THE FOREGOING AND OTHER AUTHORITIES ON THIS POINT OF LAW-INDIVISIBLE VERSUS INDEPENDENT INVENTIONS-The result of the authorities on this point of law is that no later patent can be issued for an invention actually covered by an earlier patent, especially to the same patentee, although the terms of the claims in the two patents may differ and the later patent may contain the broader claims, but that where the later patent covers matter described in the earlier patent, which, however, is essentially distinct and separable from the invention covered by the earlier patent and claims made thereunder, its validity may be sustained. *Id. 4. SAME-MUST BE INDEPENDENT INVENTIONS, NOT MERE DIFFERENCE IN THE BREADTH OR SCOPE OF THE CLAIMS IN THE TWO PATENTS-In the last class of cases just mentioned it must distinctly appear that the invention covered by the later patent was a separable invention, distinctly different and independent from that covered by the first patent. It must consist in something more than a mere distinction of the breadth or scope of the claims of each patent. *Id.

5. THE MATTER OF DIVISION OF AN APPLICATION MAY INVOLVE THE VALIDITY OF THE PATENTS ISSUED ON THE DIVISIONS-Nor, in view of the aforecited authorities, can the proposition be sustained that, whether the invention shall be protected in part of its features by one patent, and as to the rest by another, or shall be completely protected by a single patent, is a matter which concerns solely the Patent Office and the inventor. *Id. 6. SAME AS TO THE RULE OF LAW THAT PRODUCT AND PROCESS, Apparatus AND PRODUCT, AND AN IMPROVEMENT OF A PATENTED DEVICE MAY BE SEPARATELY PATENTED-While it is settled law that a process and its product, an apparatus and its product, and an improvement on a patented invention each may be patented in separate later patents, yet in each case the invention must be clearly distinct from and independent of the one previously patented. (Sewall v. Jones, C. D., 1876, 256; 9 O. G., 47; 91 U. S., 190; Merrill v. Yeomans, C. D., 1877, 279; 11 O. G., 970; 94 U. S., 94.) *Id.

7. SAME-SAME-THE RULE OF NO APPLICATION TO THE PATENTS IN THIS SUITThe invention covered by the first patent (No. 222,767) consists in a spring which serves the double purpose of lifting or holding down the plows at will, the patent thus embracing both the lifting and depressing operations, and the latter patent (No. 242,497) consists in the identical spring used for the single purpose of the lifting operation. The subject-matter being the same, no patentable distinction can be drawn between the two patents, and the rule above announced can have no application to the case. *Id.

8. SAME-SAME-PATENTEE ENTITLED TO ALL THE USES OF PATENTED Device— The invention in the earlier patent covered the means by which the results sought by the later patent were to be accomplished, aud, as it is settled law that the patentee of a device is entitled to all its uses whether described or not, (Roberts v. Ryer, C. D., 1876, 439; 10 O. G., 204; 91 U. S., 105; Stow v. Chicago, C. D., 1882, 131; 21 O. G., 790; 104 U. S., 547,) the increased lifting

SUBSEQUENT PATENTS-Continued.

effect of the spring sought to be covered in the later patent being clearly shown and described and claimed in the earlier patent, it follows that it was not the subject of a later patent. Id.

9. SAME

EFFECT OF A RESERVATION CLAUSE IN A PATENT This conclusion is in no way affected by the reservation attempted to be made in the earlier patent of the "broad idea of a lifting-spring which acts with increased force as the beam rises," for the reason that the broad idea sought to be reserved is embodied in identically the same mechanical device constituting the invention and covered by the first patent, which completely occupies all the ground that was reserved.

*Id.

10. SAME THE CLAIMS IN BOTH PATENTS MIGHT HAVE BEEN MADE IN EITHERThe claims in both patents might have been made in either patent, as they covered one and the same invention, and to hold that the second patent, which was for one part of the invention or in its function, after such part or its action had been covered by a prior patent, presents distinct invention, or that both are valid for the same invention, would involve the drawing of distinctions too refined for the practical administration of the patent law. *Id. 11. EARLIER AND LATER PATENTS FOR SAME INVENTION-MILLER v. EAGLE MANUFACTURING COMPANY CONSTRUED-The decision of the Supreme Court in the case of Miller v. Eagle Manufacturing Company (ante, 147; 66 O. G., 845) interpreted and Held that it did not change the law. It simply declared a second patent void on the plain ground that it was for the same invention as the first, and the effect of it, if sustained, would be to prolong the mouopoly beyond the period intended by the patent law. "Fenton Metallic Mannfacturing Company v. Office Specialty Manufacturing Company, 474.

SUITS FOR INFRINGEMENT. See Acquiescence; Affidavits; Answer to Bill; Assignments; Demurrer; Injunction; Inspection of Defendant's Machine; Public Appreciation Evidence of Invention; Witnesses.

1. JUDGMENT-RES JUDICATA-PATENTS FOR INVENTIONS-Where a suit for infringement of a patent is brought against a firm that is a branch of the company that manufactures the infringing device and such company conducts the defense, raising the question of validity of the patent, a decree for complainant is conclusive as to the validity of the patent as against the company conducting the defense, even in regard to alleged anticipations not referred to in the suit, since under the issues all anticipatory inventions might have been shown in defense. (50 Fed. Rep., 193, affirmed.) *David Bradley Manufacturing Company v. Eagle Manufacturing Company, 121. 2. SAME-Such decree is none the less conclusive because it was merely interlocutory at the bringing of the suit in which it is set up as a bar and subse quently ripened into a final decree. *Id.

3. SAME-PLEADING AND PROOF-Where such interlocutory decree in the first suit was alleged in the second bill, a final decree in the first suit, rendered pending the second suit, may be shown in evidence therein without supplemental pleading, where defendant took no exceptions to the bill, consented to the introduction of the final decree in evidence so far as the same was material, and only objected thereto on the ground that in rendering such decree the court erred through failure to understand the operation of an alleged anticipatory invention. *Id.

4. SAME-WAIVER-Taking testimony in the second suit as to the validity of the patent is not a waiver of the bar of the final decree in the former suit where such testimony was taken before said final decree was rendered, since until rendition of the final decree the proceedings in the first suit were no bar. *Id. 5. SAME DECREE ON STIPULATION-In a suit to restrain infringement of a patent and to obtain an accounting, an interlocutory decree was rendered, granting a temporary injunction, and afterward a final decree, making the