Yaeger Milling Company, Downton v Yale Clock Company et al., Parker & Whipple Company et al. v Zane et al. v. Peck Brothers & Co Zeun et al. v. Kaldenberg Z. DECISIONS OF STATE COURTS. G. Page. 196 232, 243 322 408 147 274 121 135 130 303 230 325 245 409 188 258 260 196 268 442 309 434 421 136 312 DECISIONS OF THE COMMISSIONER OF PATENTS FOR THE YEAR 1883. EX PARTE PFAUDLER. Decided December 27, 1882. 23 O. G., 269. 1. OPERATION OF DECISIONS-RULES. Decisions of the courts operate upon all cases alike from the time they are rendered, while rules of practice should only be applied to cases filed after their adoption. 2. RULE 86 NOT RETROACTIVE. It was not intended that Rule 86, requiring a certain statement to be filed with petitions for reissue, should apply to applications filed prior to its adoption, nor will the fact that the petition has been amended since the adoption of the rule bring the case within the rule. 3. STATEMENT SHOULD BE SPECIFIC. In cases where the statement referred to is required, it should point out the particular defects in the original patent and how and in what manner the patent was thereby rendered inoperative and invalid. The statement should present facts and not conclusions. APPEAL from the Primary Examiner. APPARATUS FOR REGULATING THE PRESSURE IN A SERIES OF FERMENTING-VESSELS. REISSUE application of John M. Pfaudler filed August 26, 1879. MARBLE, Commissioner: On August 26, 1879, applicant filed his petition for a reissue of his patent, dated July 2, 1878, No. 205,572. This petition was twice amended, the last amendment being on June 22, 1882. Subsequently to the filing of the last amendment the Examiner required applicant to file his state. ment in compliance with Rule 86 of the Rules of Practice. Such state 10452 c P-1 1 ment was thereafter filed, to the sufficiency of which the Examiner objects. From the Examiner's decision holding that the statement is insufficient appeal is taken to the Commissioner in person, and two questions are submitted: First, the right of the Examiner to require such statement, and, second, the sufficiency of the statement. At the time that the amended petition was filed-viz, on June 22, 1882-the present Rule 86 was in force, but it was not intended that such rule should apply to applications filed prior to its adoption. The application for reissue in this case was filed long prior to the adoption of said rule, and, as the amendments cannot be considered as new petitions, it follows that the Examiner should not have required a statement with said application. As to the sufficiency of the statement, I must sustain the decision of the Examiner. The statement contains conclusions, not facts. It states that the claims in the patent are too restricted, without pointing out wherein the restrictions exist. Section 4916 of the Revised Statutes provides that— Whenever any patent is inoperative or invalid by reason of a defective or insufficient specification or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the Commissioners shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee, &c. For the purpose of carrying out fully the provisions of this section Rule 86 was adopted. That rule requires First, a statement setting forth particularly the defects or insufficiencies in the specifications which render the patent inoperative or invalid, and in cases where more was claimed and allowed than the applicant was entitled to claim as new such part or parts must be distinctly pointed out. Second, in such statement the applicant must explain how such errors arose, in order that the question of inadvertence, accident, or mistake may be determined. The statement filed in this case does not point out particularly or otherwise the defects or insufficiencies of the specification, but states generally that defects exist, and that, by reason of such defects, the invention of the applicant is not fully protected. The statement should point out the particular defects, and how and in what manner the patent was thereby rendered inoperative and invalid. Statements of this character should never contain conclusions, but always facts. If facts are presented the tribunal to whom they are presented can draw a conclusion from them; but where only conclusions are presented nothing is left for the tribunal to do. The Examiners are instructed in each and every statement filed under this rule to require applicants to fully state what defects exist in the specification which render the patent inoperative and invalid, and how the errors arose. The Examiner was correct in requiring applicant to bring his claims within the rule established by the recent decisions of the Supreme Court of the United States, because such decisions operate upon all cases alike from the time they are rendered, while rules of practice should only be applied to cases filed after their adoption. Inasmuch as the statement in this case was improperly required by the Examiner, all proceedings taken thereafter and relating thereto are set aside, and the Examiner is instructed to proceed with the case without reference to such statement. EX PARTE BENTON. Decided December 27, 1882. 23 O. G., 341. 1. REISSUE-ORIGINAL PATENT INVALID. Where, on application for a reissue, it affirmatively appears from the applicant's own statement that the original application, upon which the patent was granted, was not made and executed in accordance with the provisions of law, the original patent must be held to be invalid (Child v. Adams), and no reissue thereof can be granted. 2. RULES OF PRACTICE-SCOPE OF. It is the duty of the Examiner to refuse to act when there is nothing before him under the law upon which he is authorized to act, whether or not a rule has been formulated for the particular case. APPEAL from the Primary Examiner. HARVESTERS. REISSUE application filed September 20, 1882. Mr. R. D. O. Smith for the appellant. MARBLE, Commissioner: On September 20 last applicant filed a petition for the reissue of his patent, dated January 19, 1875, No. 158,825. With said petition he filed the statement required by Rule 86 of the Rules of Practice, for the purpose of showing why he was entitled to a reissue. In said statement the following occurs: The model, with an accompanying letter of instructions and power of attorney, and blank specifications, properly signed, were forwarded to my attorneys at Washington, and I received no further information about the same till I received the patent, my attorneys giving me no chance to examine specifications or claims. Immediately after receiving the patent I commenced a correspondence for the reissue of the same, and kept a file of such correspondence until the breaking up of the firm of Chipman, Hosmer & Co., my attorneys at that time. I was never satisfied with the patent, thinking the claims vague and indefinite and not actually covering the invention. On this statement the Examiner holds that a reissue cannot be granted because the original patent. was void ab initio. Section 4888 of the Revised Statutes provides that an inventor shall not receive a patent for his invention until he has filed an application in writing therefor with the Commissioner of Patents, giving a full and complete description of the same. In case of a machine, explaining the principle thereof and the best mode in which that principle can be applied, and Shall particularly point ont and distinctly claim the part, improvement, or combination which he claims as his invention and discovery. The specification and claim shall be signed by the inventor and attested by two witnesses. Section 4892 provides The applicant shall make oath that he does verily believe himself to be the orig inal and first inventor or discoverer of the art, machine, manufacture, composition, or improvement for which he solicits a patent; that he does not know and does not believe that the same was ever before known or used, and shall state of what country he is a citizen. Section 4893 provides that On the filing of any such application and the payment of the fees required by law the Commissioner of Patents shall cause an examination to be made of the alleged new invention or discovery, &c. If the statement of the applicant be true, and I have no right to presume otherwise, he never made and executed an application describing his invention. He simply signed a blank specification, and, if a blank oath were furnished him, signed and swore to it, not knowing how his invention was described nor what the claims covered until he received his letters patent. The sections of law above quoted show that it was his duty before receiving a patent to make an application in proper form, pointing out and describing particularly the matters invented by him and making claim for that which he had invented. Such an application, according to the requirements of said sections, should have been signed by the inventor, his signature attested by two witnesses, and sworn to before some officer authorized to administer oaths. Only on the presentation of such an application was the Commissioner of Patents authorized to cause examination to be made thereof. The applicant, however, in this case did receive his patent, although, according to his own statement, he did not comply with the statutory requirements. In the case of Child v. Adams (1 Fisher, 189) it was held that a patent was void where the applicant, who was a citizen of France, swore that he was a citizen of the United States; and the reissue of said patent was held also void because a valid reissue patent could not be based upon a void original patent. The court in that case did not impute any guilt to the applicant because of the false statement of his citizenship; but it being then, as it is now, a statutory requirement that an applicant shall state of what country he is a citizen, and the statement made being not in accordance with the fact, the condition was not complied with, and therefore the patent was invalid. Being invalid a valid reissue could not be based thereon. The patent issued to Barsoloux, James, and Lyon as joint inventors May 11, 1872, was held to be void by the Attorney-General (14 O. G., 233), it appearing that Barsoloux was the sole inventor of the invention |