DAMAGES AND PROFITS-Continued.

16. The real question now is, whether the fact of the invalidity is a good answer to
this action upon the contract. The defendant has had and enjoyed what
was contracted for, and it is no answer to say that the same might have been
had without the contract. The defendant could not both stand upon the
patent and repudiate it, nor upon the plaintiff's title and repudiate that.
*Milligan v. Lalance & Grosjean Manufacturing Company, 410.

DATE OF APPLICATION IN RENEWED CASES.

The original application was filed in the United States Patent Office October 17,
1877; allowed December 22, 1877, forfeited for non-payment of the final fee,
and renewed February 4, 1879. Held that the application made by the pat.
entee in February, 1879, must be considered as his first application, the former
application going for naught, and leaving him to stand upon the application
as made at the time he renewed it upon his old specifications and drawings.
*Weir v. Morden, 388.

DATE OF FILING APPLICATION. See Burden of Proof; Division of Application, 1,2.
DATE OF FOREIGN INVENTION. See Imported Inventions.

DATE OF INVENTION. See Priority of Invention, 5.
DATE OF PATENT. See Burden of Proof; Result.

DEATH OF PATENTEE. See Parties to Suit; Title to Patent.

DECEPTION. See Trade-Marks, 22, 23, 24, 25.

DECISION BY FORMER COMMISSIONER. See Rehearing, 3.

DECISION OF COMMISSIONER CONCLUSIVE. See Appeals to the Secretary of the
Interior, 7; Reissues, 10.

DECISIONS OF COMMISSIONER OF PATENTS AFFIRMED. See Reissues, 21.
DECISIONS OF THE COURTS. See Reissues, 26.

DECREE. See Costs of Suit; Infringement, 4; Particular Patents: 52, Odell; Practice
in the Courts, 2, 5, 6, 9, 10, 11; Reissues, 17.

DEDICATION TO THE PUBLIC. See Abandonment, 1, 2; Invention Shown but not
Claimed, 5, 6.

DEFECTIVE AMENDMENTS. See Abandonment, 10.

DEFECTIVE CLAIMS. See Construction of Specifications and Patents.

DEFECTIVE SPECIFICATIONS. See Reissues, 19, 20, 27, 28, 32, 33; Specifications, 2.
DEFECTS. See Answer to Bill; Construction of Specifications and Patents, 7, 8; Inven-
tion Shown but not Claimed, 3.

DEFENSE. See Delay, 2; Evidence; Infringement, 15; Priority of Invention.

It is doubtful whether a defense not set up in the answer can be made at the hear-
ing. Sessions v. Romadka et al., 721.

DELAY. See Abandonment, 2, 5, 6, 7, 8; Infringement, 3; Invention Shown but not
Claimed, 3; Reissues, 1, 2, 5, 6, 7, 8.

1. Where a patentee has for thirteen years acquiesced in infringement of his patent,
and in his bill shows no excuse for his delay, nor ignorance of the conduct of
the defendant, nor inability on the complainant's part to asser: his rights, Held
that, whatever action at law he may have for damages, his own laches prevent
a court of equity from interfering by injunction. *McLaughlin v. People's
Railway Company, 402.

2. The general principles of equity jurisprudence control in patent cases (Rev.
Stats., secs. 629 and 4921), and the question of laches can be raised by de-
nurrer, and is a good defense to a bill in equity. (Walker on Patents, sec.
597.) *Id.

DELAY IN APPLYING FOR REISSUE. See Reissues, 8, 22, 23, 26, 31, 33, 34, 35, 39, 40.
DELAY IN PROSECUTING AN APPLICATION.

When the statute and rule say that it must be shown to the satisfaction of the Com-
missioner that the delay in prosecuting an application is unavoidable, it is
meant that satisfactory evidence must be adduced that the delay could not
have been avoided. Ex parte Chapman, 72.

DEMURRER. See Delay, 2; Practice in the Courts, 2,7.

DESCENT OF TITLE TO PATENT. See Title to Patent.

DESCRIPTION. See Claims, 1, 2, 3, 4; Drawings; Priority of Invention, 4; Keissues, 19, 20, 25, 28, 29, 30.

DEVIATION. See Combinations; Infringement, 18, 20, 21; Inventions, 1,3.

DILIGENCE. See Abandonment, 2, 3, 4, 5, 6, 7,8; Bill in Equity; Invention Shown but not Claimed, 3; Priority of Invention, 6; Reissues, 2.

DISCLAIMERS. See Abandonment, 3, 4; Construction of Specifications and Patents, 7; Invention Shown but not Claimed, 1,2; Reissues, 15; Reservation for Subsequent Patent.

It is settled that a disclaimer need not be filed until the court has passed upon the contested claims. Stutz v. Armstrong & Son, 297.

DISCLAIMER UNDER RULE 42.

DISCLAIMER UNDER RULE 42-SPECIFIC REFERENCES REQUIRED.-Rale 42 contemplates such specific reference as will clearly identify the particular application referred to, and this would seem to be best accomplished by stating the date of filing and the serial number of the application. Ex parte Finch, 1. DISCRETIONARY POWER. See Commissioner of Patents.

DISCLOSURE OF INVENTION. See Abandonment, 1; Prior Publication.
DISPUTED TITLE. See Practice in the Courts, 7.

DIVISION OF APPLICATION. See Appeal from the Primary Examiner, 2; Applica tions; Interference; Invention Shown but not Claimed, 1, 2.3: Joinder of Inventions; Subsequent Patents for same Invention, 2.

1. PRACTICE IN PATENT OFFICE-DUTY OF EXAMINER IN DIVISIONAL APPLICA TIONS.-When an application is filed as a division of a former application, the first duty of the Examiner is to determine whether the one is a coutinuation of the other application under the law. Er parte Buell, 4.

2. PRACTICE-DIVISIONAL APPLICATION CANNOT BE BASED ON NEW MATTER.— An application based upon matter unwarrantably introduced into a former application cannot be considered as a division of the prior application. Id. 3. It is doubtful whether claims to the process and to the instrumentalities of the process constitute two subjects of patents. It would seem that the process is not patentable at all. *United States ex rel. James S. Gorton v. Benjamin Butterworth, Commissioner of Patents, 221.

4. Applications for letters patent are to be divided only upon lines drawn between separable and distinct parts of the thing invented. No invention can be divided upon an imaginary line, one determined by a mere difference in words,. as by the relative breadth of claims to identical subject-matter; that is, upon a distinction of scope, not of substance-of the mind, not of matter. Divisional applications which relate to the same machine or structure, and coutain claims to the constituent parts thereof which interweave with each other, or overlap one another, are improper. Er parte Holt, 43.

5. If properly divided out, it is permissible to claim in an application mafter which is shown and described but not claimed in a patent to the same applicant, provided the application upon which the patent was granted was concurrently pending, as pointed out in er parte Derby (26 O. G., 1208); but where the subject-matter is one, integral, and indivisible, the mere fact that the applications were simultaneously before the Office will not warrant the granting of more than one patent thereupon. Id.

6. The case here on appeal is one in which there could be no proper division; but even in cases where there can be proper division, if the divisions, when put together, constitute an organized machine, depending for its operation as such upon each of the distinct and separate divisious, it seems only proper that all the divisions should be pending concurrently, and should issue simultaneously,

DIVISION OF APPLICATION-Continued.

analogous to divisions of a reissue, in order that, through the interdepend-
ence of the parts, by withholding from patent until much later an essential
part, or a sub-aggroupment of parts, or by patenting the separate parts or
sub-aggroupments of parts, seriatim, at long intervals, the term of patent pro-
tection, of exclusivo right to the machine, may not be extended, or seem to
be extended, beyoud that limited by law, and deprive the public of right to
the machine, or be a menace against such right, after the first patent has ex-
pired. The same considerations obtain with respect to process and product,
machine and product, and machine and method. Of course, where the prod
uct can only be made by one process, the two are so linked together that the
invention is one, and there cau be no division; but where the product is ca-
pable of being effected by various methods, processes, or machines, and divis-
ion is thus possible, where the process or the machine would produce no other
product, the method, process, or machine should not be allowed to go to pat-
ent before the product, and the product be subsequently patented, as in such
case the public may seem to be barred from the use of the method or process,
or of the machine, even after the patent upon the same has expired, for the
reason that there cannot be such use without making the product. Proper
division between process and product, divisions between machine and product
and between machine and method, should issue simultaneously. If the patent
for the process, or for the machine, issue first, a subsequent patent upon the
product should be refused, and in the case of machine and method, if a pat-
ent on the machine issue first, a subsequent patent on the method should be
refused, all upon the ground that it would seem to extend the monopoly, and
is thus against public policy. Id.

DRAWINGS.

See Abandonment, 1; Prior Application; Priority of Invention, 4, 5, 6;

Reissues, 13.

1. It is proper to disclaim one figure of a drawing and retain another figure which
illustrates a distinct device all of whose features are clearly described, al-
though the distinctive principle of the invention is neither known nor stated.
.*Brush et al. v. Condit et al., 306.

2. Modifications of an invention described in a specification must also be illustrated
in the drawing. Ex parte Witty and Caffrey, 68.

DURATION OF PATENT. See Limitation of United States Patent by Foreign Patents
Previously Granted.

DUTY OF EXAMINERS. See Division of Application, 1.

ELIMINATION OF CLAIMS.

1. The elimination of all claims from an application is in effect an abandonment of
it. Ex parte Lasscell, 42.

2. A power of attorney, which gives au agent full power to prosecute the applica-
tiou, to make alterations and amendments therein, and to transact all busi-
ness in the Patent Office connected therewith, does not authorize him to
eliminate all claims from the application. Id.

EMPLOYÉ OF THE PATENT OFFICE.

1. SECTION 480 REVISED STATUTES CONSTRUED.-Under section 480 Revised Stat-
utes officers and employés of the Patent Office are prohibited from acquiring,
directly or indirectly, any interest whatever in a patent, and are also pro-
hibited from filing an application for a patent.

2. SAME-APPLICATION EVIDENCE OF A PARTY'S TITLE.-An application is the
evidence of an applicant's title to the exclusive right or privilege sought,
and since he can acquire no interest in the thing itself, to say that he might
nevertheless take steps to establish his title thereto would be to pronounce
an absurdity.

EMPLOYE OF THE PATENT OFFICE-Continued.

3. SAME-APPLICATION AND FEE to be RETURNED.—Applications filed in contravention of the statute as construed by this decision will be returned to the party filing the same, and the fee will also be returned. Opinion Touching the Right of Employés of the Patent Office to File an Application for a Patent, 12.

ENLARGEMENT IN REISSUE OF COMBINATION CLAIMS TO COVER THE SEVERAL PARTS. See Reissues, 37.

ENLARGEMENT OF CLAIMS IN REISSUE TO EXTENT OF ORIGINAL INVENTION PERMISSIBLE. See Reissues, 38.

ENLARGEMENT OF ORIGINAL CLAÍMS IN REISSUES. See Particular Patents: 13, Bull; 22, Eagleton; 23, Earle; 27, Green; 39, Matthews; Reissues, 1, 7, 12, 14, 16, 17, 18, 21, 24, 25, 26, 27, 28. 29, 31, 34, 35, 41.

ENTRIES ON FILE-WRAPPERS. See Practice with Patent Office, 1, 2.

EQUITY. See Answer to Bill; Invalidity of Patents; Licenses, 2,3,4; Practice in the
Courts.

EQUIVALENTS. See Anticipation, 1; Claims, 2; Infringement, 1, 8, 15, 22, 28.
ERROR. See Reissues, 26, 27, 28, 30.

ESTOPPEL. See Assignments, 6,7; Injunction; Rehearing, 2.

EVIDENCE. See Bill in Equity; Damages and Profits, 5, 11, 12, 15; Delay in Prosecuting an Application; Infringement, 15; Jury Trials; Licenses, 7, 8; Priority of Invention, 4; Testimony; Witnesses.

1. INFRINGEment-Compelling DefenDANT TO GIVE NAME OF CUSTOMER.-In a suit for the infringement of a patent, where the validity of the patent and the infringement are denied, the complainant cannot, as part of his preliminary proof, compel the defendant to disclose the names of his confidential customers to whom he has furnished articles alleged to be covered by the patent, but he may be required to give the name of one person to whom he has furnished such articles. "Roberts v. Walley, 77.

2. CONTEMPTS-POWER OF EXAMINER TO RULE ON EVIDENCE.-The Examiner has no power to rule on the admissibility of evidence, and defendant, when a witness before him, has a right, upon a question not free from doubt, to take the opinion of the court; and when he refuses to answer under advice of counsel and apparently in good faith, he should not be punished for contempt of court, even though he acted mistakenly. *Id.

3. EVIDENCE-INCONSISTENT CONDUCT OF RESPONDENT.-That the respondent offered a large sum of money for a patent, and subsequently took out patents for similar devices, are facts to be considered as being inconsistent with his subsequent contention of want of novelty in the patent. *Bostock v. Goodrich, 404.

EVIDENCE OF INVENTION. See Abandoned Experiments; Inventions, 4; Priority of Invention.

The fact that a patented article immediately on its introduction was successful in the trade is evidence of invention. *Hicks v. Otto et al., 405. EVIDENCE OF VALIDITY OF A PATENT. See Burden of Proof; Construction of Specifications and Patents, 6; Invalidity of Patents.

EXAMINATION OF WITNESSES. See Evidence, 1, 2.

EXAMINER NOT BOUND BY OPINION EXPRESSED BY HIS PREDECESSOR. See Practice in the Patent Office, 1, 2.

EXAMINERS. See Abandonment, 10; Appeals; Division of Application, 1, 2; Practice in the Patent Office, 1, 2; Trade- Marks, 20, 29.

EXAMINERS-IN-CHIEF. See Appeal from the Primary Examiner; Appeals.
EXECUTORS. See Title to Patent.

EXPERIMENTAL USE. See Public Use.

The law permits an inventor to construct a machine which he is engaged in study-
ing upon and developing, and place it in friendly hands for the purpose of
testing it and ascertaining whether it will perform the functions claimed for
it, and if these machines are strictly experiments, made solely with a view
to perfect the device, the right of the inventor remains unimpaired; but
when an inventor puts his incomplete or experimental device upon the mar-
ket, and sells it as a manufacturer more than two years before he applies for
his patent, he gives to the public the device in the condition or stage of de-
velopment in which he sells it. In such case his patent cannot be allowed
to relate back and cover forms which he gave to the public more than two
years before he applied for a patent. *Lyman v. Maypole et al., 352.
EXPIRATION OF PATENT DURING PENDING OF SUIT. See Infringement, 4;
Practice in the Courts, 3.

FALSE TESTIMONY. See Witnesses.

FEES. See Employé of the Patent Office, 3.

FILING OF APPLICATION. See Burden of Proof.

FIRST AND ORIGINAL INVENTOR. See Construction of Specifications and Patents,
4; Priority of Invention.

FOREIGN INVENTION. See Imported Inventions.

FOREIGN PATENTS.

See Canadian Patents; Limitation of United States Patent by

Foreign Patents Previously Granted; Public Use.
FORMER DECISIONS AFFIRMED. See Assignments, 1; Damages and Profits, 1;
Practice in the Courts, 8; Reissues, 3, 34, 35.

1. FORMER DECISION AFFIRMED. -Decision of the Commissioner of Patents in er
parte Hatchman (reported in 25 O. G., 979) affirmed. *In re Hatchman, 116.
2. FORMER DECISIONS AFFIRMED.-Cause upheld for the same reasons and patent
sustained to the same extent as in the case of Oratriz v. Raynor et al. *Reay
v. Berlin & Jones Envelope Company, 157.

3. The decision made in Wooster v. Handy, dismissing the bill on account of the
invalidity of certain claims, is also made in the suits against the defendants
enumerated in the decision in Wooster v. Howe Machine Company. * Wooster
v. Howe Machine Company, 339.

FORMER DECISIONS COMMENTED UPON. See Reissues, 39.

FORMER DECISIONS CONSTRUED. See Invention Shown but not Claimed, 4.
FORMER DECISIONS REVERSED. See Abandonment, 3; Reissues, 17.

FRAUD. See Invalid Patents; Reissues, 10, 41; Trade-Marks, 12.

FRAUDULENT PATENTS. See Invalid Patents.

FUNCTION. See Experimental Use; Non-Patentability; Reissues, 7.

GENERIC CLAIMS. See Construction of Specifications and Patents, 4; Interference, 2;
Subsequent Patents for Same Invention.

GOVERNMENT RIGHT TO VACATE A PATENT. See Invalid Patents.

GUARANTEE. See Trade Marks, 21.

HEIRS OF PATENTEE. See Parties to Suit; Title to Patent.

IDENTITY OF INVENTION. See Anticipation; Infringement.
IMITATION OF TRADE-MARKS.

See Trade- Marks, 22, 23, 24, 25.

IMMATERIAL EVIDENCE. See Bill in Equity.

IMMATERIAL VARIATIONS. See Infringement, 1, 16, 17; Particular Patents : 3, Bing;
16, Burdett; 48, Nation and Little.

IMPERFECT CLAIMS. Sex Claims, 10.

IMPERFECT DESCRIPTION. See Priority of Invention, 4.

IMPLIED CONTRACTS. See Licenses, 7.

IMPORTATION OF PATENTED ARTICLES INTO CANADA. See Canadian Pat-

ents.