suggested in the official letter.

Applicants therefore, intend to present a process claim or claims later on in the prosecution of this case at such time as they deem advisable.

The Examiner then insisted that if process claims were to be presented in addition to the article claims they should be presented at the outset and held that

should process claims not be inserted at the present time in order that the question of division may be settled immediately applicants will be presumed to elect the prosecution of the invention now claimed and should they attempt thereafter to insert claims for a process, such claims would be refused admission, not only as involving a different invention but as involving an invention which applicants have decided not to prosecute in the present case by reason of their failure to assert them at the present time and have their admissibility now determined.

It is stated in behalf of the applicants that inasmuch as the inventions are dependent on each other it is desired to prosecute the article claims to condition for allowance and with such, article claims as a guide as to the patentable subject-matter to draw process claims registering with the article claims. It is contended that applicants cannot be held to be estopped by the cancelation of the process claims at this time from inserting such claims later in the prosecution of the case and urged that it is the duty of the Examiner to pass upon the claims now before him and to examine the process claims when such claims may hereafter be presented. The petition accordingly requests that the Examiner be directed to proceed with an examination of the article claims without prejudice to the admission of process claims which may be presented later.

I am of the opinion that the action of the Examiner in this case is clearly right. Rule 42 provides, in part, that—

*

if several inventions, claimed in a single application, be of such a nature that a single patent may not be issued to cover them, the inventor will be required to limit the description, drawing, and claim of the pending application to whichever invention he may elect. If the independence of the inventions be clear, such limitation will be made before any action upon the merits; otherwise it may be made at any time before final action thereon, in the discretion of the Examiner.

It is obvious that if the article and the process of making such article to which the claims of this application were originally directed comprise a single invention or dependent inventions of such character that a single patent may be issued to cover them claims for both the article and process should be presented for consideration at the same time. It is contrary to the practice of this Office to act upon cases in a piecemeal manner. The requirement of division was made in this case in the first Office letter, and in accordance with the wellsettled practice of the Office a final determination of this question should be reached before action is had upon the merits of the inven

21895-H. Doc. 124. 61-2-13

tion. If the applicant by canceling the claims acquiesces in the requirement of division made by the Examiner, the latter has a right to consider his action upon the matter final and to refuse further consideration of claims based upon the matter covered by the claims canceled pursuant to his requirement for division.

In the present case it appears that there are no claims upon the process now pending before the Examiner, and he might have considered these claims upon the merits and have refused to enter any process claims which might subsequently be presented. Instead of taking this arbitrary course he has given the applicants an opportunity to again present process claims for the purpose of finally determining whether the matters included in the application comprise a unitary invention or divisible inventions. This course of the Examiner is eminently fair to the applicants, and I find no sufficient reason which will warrant the granting of the request of the applicants.

The petition is denied.

SINCLAIR v. ENGEL.

Decided June 12, 1909.

147 O. G., 769.

1. INTERFERENCE-PRIORITY-RIGHT TO MAKE CLAIMS-CONSTRUCTION OF ISSUE. In deciding whether a party to an interference has a right to make a claim involved therein such claim should be given the broadest meaning consistent with its terms; but it cannot be enlarged beyond the plain import thereof as set forth in the specification on which it is based.

2. SAME-SAME-SAME-SAME.

Where the invention in issue is a water-tube boiler and the counts which correspond to S.'s claims specify, respectively, "a plain drum having separate tube-landings formed therein " and "a plain drum having parallel rows of separate circular tube-landings," Held that these claims cannot be made by E., whose application discloses a drum having landings adapted to receive at least two tubes.

APPEAL from Examiners-in-Chief.

BOILER.

Messrs. Howson & Howson for Sinclair.

Mr. J. Nota McGill for Engel.

MOORE, Commissioner:

This case is before me on appeal by Sinclair from the decision of the Examiners-in-Chief awarding priority of invention as to count 1 to Engel and on appeal by Engel from their decision awarding priority of invention to Sinclair as to count 2 of the issue. The issue is as follows:

1. In a water-tube boiler, a plain drum having separate tube-landings formed herein, in parallel rows, and so arranged as to leave sufficient space between

the adjacent transverse rows for the insertion or withdrawal of the tubes from either side of a row without the use of manholes, as described.

2. In a water-tube boiler, a plain drum having parallel rows of separate circular tube-landings formed partially above and partially below the drum-face, and so arranged as to leave sufficient space between the adjacent transverse rows for the insertion or withdrawal of the tubes from either side of a row without the use of manholes, as described.

The invention in issue relates to improvements in water-tube boilers in which two cylindrical drums are connected by a series of watertubes, the heat from the furnace being caused to pass through the interstices between the tubes.

Sinclair is a patentee; but the application upon which his patent was granted was not filed until October 23, 1906, whereas the application of Engel was filed September 5, 1905. Neither party has taken testimony; but it is contended in behalf of Sinclair that Engel has no right to make the claims corresponding to the counts of the issue.

The structures of each party comprise a plurality of drums connected by tubes, the landings for the tubes upon the respective drums being parallel and formed—

partially above and partially below the surface of the drum-face.

In the Sinclair structure, as disclosed in his drawing and specification, each tube is provided with a separate landing substantially circular in form, and the rows of tubes are spaced sufficiently far apart to permit the withdrawal of the tubes from either side of a row. In the structure disclosed in the Engel drawings and specification each landing is adapted to receive at least two tubes, and the landings are so spaced apart as to permit the removal of the tubes between the adjacent landings.

The counts of the issue call, respectively, for

a plain drum having separate tube-landings formed therein

and

a plain drum having parallel rows of separate circular tube-landings.

It is contended in behalf of Sinclair that these expressions should be construed to mean separate landings for each tube and separate circular landings for each tube, whereas Engel contends that the claim was intended to mean separate landings adapted to receive tubes, and that when given the latter construction the claims read upon the Engel structure.

The record shows that after the declaraton of this interference a motion to dissolve was brought by Sinclair, and the Primary Examiner in passing upon this motion held that Engel has

separate tube-landings in the same sense that Sinclair has, although two landings are merged into one to afford room for two tubes instead of one.

In respect to count 2 the Examiner stated:

Count 2 differs from count 1 in that the landings are said to be "circular," and that they are "formed partially above and partially below the drum-face." The Engel device clearly shows the latter feature and so far as the "circular" form of the landings is concerned, this is regarded as a wholly inconsequential limitation; they might just as well be square, hexagonal, octagonal, or of any other outline, but for convenience they are made circular, this being the best and most obvious manner of stamping them and producing the least strain on the drum.

Engel shows two circular landings merged into one.

The Examiner of Interferences held, upon final hearing of the case, that the counts were not limited by their terms to a separate tubelanding for each tube or to an arrangement by which each of the tubes may be withdrawn from each side of a row, and in support of his decision cited various decisions of this Office and the court to the effect that a claim should be construed as broadly as its terms will warrant. The majority of the Examiners-in-Chief agreed with the Examiner of Interferences in respect to the construction of claim 1, but disagreed with him with respect to claim 2, stating in respect to the latter that-

count 2 differs from count 1 in the particular that the tube-landings are not only separate but are circular. Engel clearly cannot prevail as to this count since the tube-landings revealed by him in his application are non-circular.

The claims that form the counts of this interference are the claims of Sinclair's patent, and these claims were embodied in Engel's application after the issue of Sinclair's patent for the purpose of interference. It is well settled that where a party copies the claim of a patent for the purposes of interference such claim must be read in the light of the disclosure of the patent. (Cherney v. Clauss, C. D., 1905, 635; 116 O. G., 597; 25 App. D. C., 15; Bourn v. Hill, C. D., 1906, 699; 123 O. G., 1284; 27 App. D. C., 291; Sobey v. Holsclaw, C. D., 1907, 465; 126 O. G., 3041; 28 App. D. C., 65.) While it is true that a claim will be given the broadest meaning consistent with its terms, it cannot be enlarged beyond the plain import thereof as set forth in the specification on which the claim is based.

The object of the invention, as stated in the Sinclair patent, isto produce a water-tube boiler of the type aforesaid, so that the tubes may be readily assembled or removed therefrom for repair.

In discussing the prior art the patentee acknowledges that it was old to provide a corrugated stepped drum, each step being adapted to receive a pair of a double row of tubes, there being no tubes in the space opposite the corrugation formed in the surface of the cylinders between the double row of tubes, so that the device could be readily withdrawn. This construction is shown in a patent to Garbe, No.

688,993, and Sinclair, in distinguishing his invention from this patent and from other structures of the prior art, states thatthe opposing surfaces of the upper and lower drums, have formed in them rows of separate circular landings for each water-tube. The landings are parallel with each other and at right angles to the axis of the tubes. A space at least equal to the diameter of the tubes is left between each transverse row. By providing a separate landing for each tube and leaving a space between each transverse row it is possible to dispense with the necessity of forming corrugations in the drum to permit of the insertion or withdrawal from the side of the boiler of the tubes in adjacent rows.

He again states in his specific description of the device shown in the drawing:

A space at least equal to the diameter of the tubes, H, is left between each transverse row so as to permit of the easy insertion or withdrawal of a tube in any row when necessary without disturbing the other tubes. By providing a separate landing for each tube and leaving a space between each transverse row it is possible to dispense with the necessity of forming corrugations in the drum to permit of the insertion or withdrawal from the side of the boiler of the tubes in adjacent rows.

In the claims forming part of the original specification it was clearly pointed out that the landings were—

so spaced that there is space between each transverse row for the insertion or withdrawal of tubes in the adjacent rows

and the distinction which the applicant sought to point out, in his argument before the Examiner, between his device and the patent to Garbe, which was cited as a reference, is that in Sinclair's device means is provided for the insertion or removal of the water-tubes without corrugating the drumheads, which is accomplished

by providing additional space room between each row of tubes

whereby a tube may be withdrawn from "either side " of its landing, as pointed out in the claims. No such specific structure is suggested in the specification of Engel. On pages 9-10 of his specification it is stated:

In practice I customarily arrange the tubes of each bank in a plurality of groups, each group comprising a plurality of rows of tubes (two rows, in the construction shown,) each group separated from the adjacent groups by spaces somewhat wider than the distance between the rows comprising each group.

The primary reason why I prefer to arrange the tubes of banks 4 and 5 in groups, as shown, is to facilitate tubing and retubing of the boiler, and to permit the ready removal of any tube when desired. In this connection I commonly employ drums 1, 2 and 3 having tube-sheets of peculiar construction, so that to remove any tube, when it has been freed at one end from the upper drum, for example, its end so freed may be moved slightly to one side, into one of the spaces between groups of tubes, and then the tube may be lifted slightly, so as to unstep it at the bottom, after which it may be removed through one of the spaces 18 between groups of tubes.