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 patented. In the same opinion it was held that the original patent, being invalid, could not be rendered valid by reissue. My attention has been called to several cases where the courts have held that because it did not affirmatively appear an oath had been filed such fact would not invalidate a patent. In one of these cases it was held that if, in fact, no oath had been filed, the patent would be valid. What the ruling would have been in the other cases had it been affirmatively shown that no oath had been filed it is, of course, impossible to state. In the case of Child v. Adams, above cited, Mr. Justice Grier remarks: Where a statute defines the extent of power given to one who acts ministerially, the courts cannot extend it or validate acts done without or beyond its authority. As above stated, the statute defines what an applicant must do in order to present such an application as will authorize the Commissioner of Patents,to grant him a patent. The statute also states when the Commissioner of Patents is authorized to examine his application. Not only must a proper application be filed and the fees required by law paid, but there must be au examination in accordance with the provisions o law to entitle a party to a valid patent. Such an application was not filed in this case according to applicant's own statement. He gave a letter of instruction and forwarded a model to his attorneys, together with a specification in blank signed. That is all he did to secure his patent, except to pay the proper fees. Because he did not know what his attorneys had put into his patent until he received it is the ground which he now alleges as the reason why he should be permitted to reissue it. On his own showing, therefore, I am compelled to arrive at the conclusion that the patent which he did receive was not issued upon such an application as the law requires, nor, in fact, upon any application whatever, although one in form may have been filed. Such being the case, I agree with the Examiner that the original patent was void, and that a reissue of it would not validate the same. The attorney presenting this appeal denies the authority of the Examiner to make any inquiry beyond that which is specified in the Rules of Practice, and inasmuch as the rules do not provide for cases of this kind he claims that the Examiner has no right to question the validity of the original patent. It is hardly to be presumed that rules would be provided for the consideration of void patents. On the contrary, rules are provided for the conduct of business having some legal standing. It was the duty of the Examiner to refuse to act in this case, because there was nothing on which he could act. Upon his oath of office, as a sworn officer of the Government, and not upon the rules, the Examiner is required to faithfully execute its laws, and not to allow cases to pass him which ought to be arrested. The decision of the Examiner is affirmed. EX PARTE LEE. Decided December 2, 1882. 23 O. G., 342. REISSUE-EXPANDED CLAIM-UNEXPLAIned Delay. An unexplained delay of more than five years in applying for a reissue patent is altogether unreasonable in a case where the reissue is for the purpose of expanding and enlarging the scope of the claim. APPEAL from the Primary Examiner. COMBINED STEREOSCOPE AND GRAPHOSCOPE. REISSUE application filed June 18, 1881. Mr. C. E. Foster for the appellant. MARBLE, Commissioner: The reason assigned for this appeal is that the Examiner holds that lapse of time has defeated the patentee's right to reissue. The patent sought to be reissued was granted May 16, 1876, and the application under consideration was filed June 18, 1881, more than five years after the grant of the original patent. The Examiner has refused certain claims which tend to expand the scope of the patent on the ground that the delay in asserting a right to said claims is unreasonable. In the case of Miller & Co. v. The Bridgeport Brass Company (21 O. G., 202) it was said that If a patentee who has no corrections to suggest in his specification, except to make his claim broader and more comprehensive, uses due diligence in returning to the Patent Office, and says "I omitted this," or "my solicitor did not nuderstand that," his application may be entertained, and on a proper showing correction may be made. Nothing but a clear mistake or inadvertence and a speedy application for its correction are admissible when it is sought merely to enlarge the claim. The granting for such a purpose after an unreasonable delay is cleary an abuse of the power to grant. reissues, and may justly be declared illegal and void. But in reference to reissues made for the purpose of enlarging the scope of the patent, the rule of laches should be strictly applied, and no one should be relieved who has slept upon his rights, and has thus led the public to rely on the implied disclaimer involved in the terms of the original patent. An unexplained delay of more than five years is altogether unreasonable in a case where the reissue is for the purpose of expanding and enlarging the scope of the claim. The statement, under Rule 86 of the Rules of Practice, is an inadequate excuse for the delay which has taken place, and fails to show such equitable right as would entitle the petitioner to relief in a court of chancery in a case within its ordinary jurisdiction. The decision of the Examiner must be affirmed. JACOBY ET AL. v. LOPEZ ET AL. Decided December 21, 1882. 23 O. G., 342. 1. TRADE-MARK-EVIDENCE OF TITLE-REGISTRATION UNDER LAW OF 1874. A registration of a trade-mark effected under the law of 1874 is evidence of the fact that the persons named therein at that time claimed the right, and were allowed to register the trade-mark, and depended for its legal effect upon the provisions of the law under which it was effected. 2. SAME-SAME. When introduced in evidence in a contested case to support an applicant's right to a registration under the new law, it should be accompanied evidence with identifying the applicant as the person therein named, and showing that the right has been maintained by the continued use of the trade-mark, and that it has not in the meantime passed by assignment or by changes in the composition of the firm to other persons. APPEAL from the Examiner of Interferences. TRADE-MARK-CIGARS. APPLICATION of S. Jacoby & Co. filed May 12, 1882. Trade-mark of Lopex, Fernandez y Ca. registered March 21, 1882. Messrs. Briesen & Betts for Jacoby & Co. Mr. G. H. Wilcor for Lopez, Fernandez y Ca. MARBLE, Commissioner: This is an interference instituted to try the question of right to the use of the word "Puck" as a trade-mark for cigars, cigarettes, &c., between Jacoby & Co., applicants for registration, and Lopez, Fernandez y Ca., registrants. The applications of the respective parties were pending at the same time, and it was clearly an inadvertence under the rules that the certificate of registration issued to one of the parties without notice to the other, and the applicants should not be prejudiced thereby in this proceeding. The case will be considered, therefore, as though both parties were still applicants for registration. Lopez, Fernandez y Ca. have submitted no evidence which is admis. sible under the rules of this Office. They filed in the case, without notice to the other side, a certificate of an officer of the general government of the Island of Cuba to the effect that the word "Puck" was registered at a certain office in Cuba, in 1876, in the name of Martin Bengoechea & Co., under the law then in force; that said trade-mark became the property of Lopez, Fernandez y Ca. on the 18th of July, 1881, and that said mark was registered on the 29th of May, 1882, in accordance with the new law, then in force, by said parties, Messrs. Lopez, Fernandez y Ca. The certificate caunot be considered as proper evidence in this case, for the reason that no notice was given to the other side of any intention to read and rely upon the same at the hearing, and the Office has, moreover, no means of ascertaining the conditions upon which registra |