forfeit his right to his perfected invention in favor of a more diligent and meritorious inventor. Erbe v. Hill, C. D., 1869, 29; Hosea Ball, C. D., 1870, 97; Gray v. Hale et al., C. D., 1871, 129; Farmer v. Brush, 17 O. G., 150. I do not consider the case as an authority for such a doctrine. A careful examination of the case shows that the only question was whether an inventor had forfeited to the public his right to a patent by secretly practicing his invention for a number of years, and there was no intimation in the case that a subsequent inventor had secured or might secure a monopoly of the same invention. The language of the court is:

*

That which is once given to or is invested in the public cannot be recalled nor taken from them. It is the unquestionable right of every inventor to confer gratuitously the benefits of his ingenuity upon the public, and this he may do either by express declaration or by conduct equally significant with language-such, for instance, as an acquiescence with full knowledge in the use of his invention by others or he may forfeit his rights as an inventor by a willful or negligent postponement of his claims or by an attempt to withhold the benefit of his improvement from the public until a similar or the same improvement should have been made and introduced by others.

Upon the whole case I find that Reese is the prior inventor. In the further treatment of the case the Examiner will determine whether the facts disclosed in the accompanying record show that Reese has lost his right to obtain a patent by reason of abandonment or public use. The decision of the Board of Examiners in Chief is affirmed:

EX PARTE ROWAN.

Decided May 16, 1882.

22 O. G., 1037.

1. APPLICATION FOR PATENT—OATH.

An applicant for a patent should make oath that his invention has not beeu in public use or on sale in this country for more than two years prior to the filing of his application.

2. SAME-SAME.

An applicant for a patent should make oath that he does not believe the subjectmatter of his application was ever known or used prior to his invention; but not that it was not so known prior to his application.

APPEAL from the Primary Examiner.

TREATING COAL FOR TRANSPORT AND STORAGE.

APPLICATION filed February 23, 1882.

Messrs. J. J. Halsted & Son for the applicant.

MARBLE, Commissioner:

Appeal is taken in this case from the action of the Examiner requir ing the oath to the petition to be amended in two particulars; first, so

that it shall show that the invention had not been in public use in this country for more than two years prior to the filing of the application; second, that the applicant shall swear that he does not believe that the same was ever known or used prior to his application, instead of prior to his invention thereof.

Applicant relies in his appeal upon the form of oath given, under date of November 15, 1881, in OFFICIAL GAZETTE of that date, volume 20, No. 20, page 1381, for a justification of the oath filed. The oath appears to be in substantial compliance with the form referred to. I think, how. ever, that the Examiner's first objection is well taken. The statute provides that any person who has invented or discovered any new or useful art, manufacture, or machine, &c., not known or used by others in this country, and not published or described in any printed publication in this or any foreign country, aud "not in public use or on sale for more than two years prior to his application," &c., may, upon payment of the proper fees, have a patent therefor. The conditions of the statute are that the applicant must not only be the first and original inventor, but the invention must not have been patented in any foreign country, nor described in any printed publication, nor have been on sale or in use for more than two years in this country before the filing of his application, not, as stated in the oath, before the time of his invention. Notwithstanding, therefore, the form of oath given, as above mentioned, I think that the Examiner was right in holding that the oath should be amended in this particular.

On the second point I think that the Examiner errs. An applicant may believe himself to be the first and original inventor. He may be willing to swear that the invention claimed by him has not been patented in any foreign country; that it has not been described in any printed publication in this or any foreign country before his invention or discovery thereof, and that it has not been in public use or on sale in this country for more than two years, and yet not be able to swear that it has not been known or used by any other person prior to the time of the filing of his application. The applicant may at the time he files his application know that another person is using and selling the invention claimed by him, but, believing himself to be the first inventor, may swear, in accordance with the form of the oath mentioned that he does not believe his invention was ever known or used prior to the time when he invented it. Cases of this kind not unfrequently occur. Parties file their applications for the express purpose of having them put in interference with a pending application or an unexpired patent in order to have the question determined as to who was the first inventor of the device. If every applicant were required to swear that the invention was never known or used prior to the time he filed his application, many persons would be deterred from filing applications or con. testing the right of invention because they could not swear that the in

vention claimed by themselves was not known or used by some other person prior to the time when they filed their applications.

The Examiner is therefore directed to advise the applicant that the oath must be amended in the first particular mentioned, but need not be in the second.

The term " useful" in the patent law is used in contradistinction to "mischievous." A design, if not mischievous, is useful if it is attractive, and the utility consists in such a shape or contiguration of a given article that persons needing it will purchase it because of such shape or configuration in preference to other articles for the same purpose, but different in shape and configuration. 2. SAME-MECHANICAL FUNCTION.

Matter descriptive of the mechanical functions of a device should be omitted from a design application.

APPEAL from the Board of Examiners-in-Chief.

SHINGLE-MACHINE FRAME AND JOINTER-CASING COMBINED.

APPLICATION filed October 2, 1880.

Mr. William F. Seavey for the applicant.

MARBLE, Commissioner:

Applicant claims, as a new article of manufacture-

The T-shaped shingle-machine frame consisting of the parts a and b, the part b being the jointer-casing and supporting the saw-arbor, substantially as set forth and illustrated.

Two of the Examiners-in-Chief unite in holding that the decision of the Primary Examiner should be affirmed, but on different grounds.

The statute provides that design patents, among other things, may be granted for "any new, useful, and original shape or configuration of any article of manufacture." It is not denied that what is claimed here is an article of manufacture, and that it is new, but its utility seems to be questioned. An examination of the representation of the article shows that for its functional or mechanical use it is useful, being strong and compact, and in such shape as to recommend it to those engaged in the business for which it is intended. Such being the case, the queston arish as to whether it is useful as a design for a shingle-machine frame. "Useful' in the patent law, is in contradistinction to 'mischievous.' The invention should be of some benefit." Cox v. Briggs, 2 Fish., 174. A design, if not "mischievous," is useful if it attracts persons to it or to articles made like it. It may not be of great artistic excellence, but if it be attractive it is useful.

So, I think, in articles of manufacture like the one under consideration, if the applicant has by his industry, genius, and efforts made a design of an article of manufacture-viz, the frame of a shingle-machine-which, because of its design and not because of its mechanical structure (by which I mean its strength and durability), commends itself to persons desiring to purchase such articles, it is useful, and the applicant should be protected in its manufacture and sale. It is not necessary that it should be ornamental, although it may be, to entitle the applicant to a patent therefor. The utility in an article of this kind consists in having a shape or configuration of such a character that persons needing it will purchase it because of its shape or configuration iu preference to other articles for the same purpose but different in shape and configuration. Applicant, however, must strike out of his application everything descriptive of the mechanical functions of the device.

The decision of the Board of Examiners-in-Chief is overruled, and the patent will be allowed.

EX PARTE SCHUMACHER & ETTLINGER.

Decided October 2, 1882.

22 O. G., 1291.

1. REGISTRY OF LABELS-POWER OF COMMISSIONER.

The statute which charges the Commissioner of Patents with the supervision and control of the entry or registry of prints and labels confers upon him the right to determine whether the subject-matter of an application is properly registrable as a label.

2. SAME-MERELY FANCIFUL DESIGNS.

A fanciful and arbitrarily-selected design which is not descriptive of the contents or ownership of the articles to which it is to be applied is not entitled to registry as a label. Ex parte Schumacher & Ettlinger (19 O. G., 791) approved.

APPEAL from the Primary Examiner.

CIGARS.

APPLICATIONS for registration of five labels filed June 8 and 10,

1882.

Messrs. Briesen & Betts for the appellants.

MARBLE, Commissioner:

The alleged labels are fanciful designs, printed upon slips of paper, and intended to be used in connection with cigars and cigar-boxes. The Examiner refuses to register them on the ground that they do not properly constitute labels.

The applicants assert that the only power conferred by the statute upon the Patent Office is that of receiving and receipting for applica tions for labels and forwarding a copy of the record. In other words,

upon the receipt of such an application the duty of the Office is purely ministerial, and the statute gives no authority for questioning whether the so-called label is a label, trade-mark, or something else.

The statute provides that the Commissioner of Patents shall be "charged with the supervision and control of the entry or registry of such prints or labels." What kind of supervision and control does it refer to The words are general. In this country the patent system is organized so as to protect the inventor and the public. The statute directs the Commissioner to examine into the subject-matter of applications for patents and determine whether they exhibit such invention as should be protected. Inventions are of more value than labels, yet the latter are equally entitled to protection. It is not unreasonable to presume that Congress, being fully aware of the equity in the patent system, in conferring upon the Commissioner the "supervision and control" of the registry of labels, intended this power to be administered so as to protect the public. If trade-marks are registered as labels, a prima facie case is made out, and a moral protection obtained injurions to the multitude. Though the label is invalid, yet the public is misled. The Patent Office assists in the injury, and the innocent individual will find the remedy expensive.

Again, the statute says that only prints and labels, not trade-marks, may be registered in the Patent Office upon payment of six dollars. The fee for registering trade-marks is twenty-five dollars. The law, by implication, prohibits the registry of a trade-mark upon payment of only six dollars. The Patent Office receives both the applications and the fees. Who, then, should decide whether a trade-mark or a label is embraced? How fruitless to await the action of a court on a trade-mark so registered as a label. The difference made in the matter of fees shows it to be clearly the intent of the statute for the Commissioner at the outset to distinguish between a label and a trade-mark. The appellants, however, urge that their applications embrace proper labels and not trade-marks.

The definition of the word "label" as given by Webster's Dictionary, and which has been adopted by this Office in the matter of their registration, is as follows:

A narrow slip of silk, paper parchment, &c., affixed to anything, denoting its contents, ownership, and the like; as, the label of a bottle, or a package.

An examination of the prints shows them to be peculiar designs, fanciful, and arbitrarily selected, with nothing about them descriptive or suggestive of the contents or ownership of the packages to which they are to be applied. The case of Schumacher & Ettlinger (19 O. G., 791) is directly in point, and should have warned the applicants against filing these applications.

I must hold that it is within the authority of the Patent Office to refuse to register trade-marks under the guise of labels, and that in the present instance the applications do not present labels for registration. The decision of the Examiner is therefore affirmed.