PUBLIC USE-Continued.

the question whether they establish a public use or sale under the statute. Ex parte Shettler, 142.

3. WHAT IS A PUBLIC USE-Where an inventor disclosed his invention to a company which adopted it and put it into complete and practical operation in and for the ordinary purposes of trade and commerce, and where it appears that the inventor regarded his invention as complete at the time of its adeption by such company, such use for more than two years before application for patent is a public use within section 4886, Revised Statutes, and not one of experiment. *Root v. Third Avenue Railway Company, 706.

4. CASES DISTINGUISHED-Elizabeth v. Pavement Co. (97 U. S., 126) distinguished and Smith & Griggs Mfg. Co. v. Sprague (C. D., 1887, 616; 41 O. G., 1037; 123 U. S., 249) and Hall v. Macneale (C. D., 1883, 191; 23 O. G., 937; 107 U. S., 90) cited and commented on. *Id.

RECORDS OF THE PATENT OFFICE. See Assignments, 1.

REDUCTION TO PRACTICE. See Abandonment, 4; Interference, 11, 13, 16, 23, 41; Priority of Invention, 3, 4, 8, 9.

REDUCTION TO PRACTICE-WHAT IS REASONABLE DILIGENCE IN-Where an applicant delays for more than two years after his conception of invention before reducing it to practice, and where it appears that he had abundant means and was busy meanwhile upon other inventions, and the actual reduction to practice was a simple matter and one not involving great time or expense, Held applicant was not reasonably diligent. Thomson v. Ries, 83. REFERENCES. See Rejected Cases, 2.

REFUNDMENT OF FEES. See Fees in Trade-Mark Cases; Trade-Marks, 7, 17.
REHEARING. See Reopening of Cases.

1. NEW DEFENSE-Where a party who, with full knowledge at the outset of the
other party's ground of contention, has underestimated the importance of
it and set up his defense on a different line, a motion for rehearing simply
to make a different defense will not be considered. Ex parte Spielman, 1.
2. MOTION FOR WILL NOT BE Entertained, WHEN-A motion for a rehearing
will not be entertained by the Commissioner for the purpose of enabling
an applicant to make a fuller presentation of his case when there is no
satisfactory showing that he might not have done so in the first instance.
Ex parte Utley, 38.

REISSUES. See Particular Patents, 1, 2, 13.

1. A REISSUE MAY BE HAD FOR AN ENLARGED CLAIM-It is the obvious intent of the statute that a reissue may be had for an enlarged claim, provided it is evident that there has been a mistake and that the applicant has been guilty of no want of reasonable diligence in discovering it and that no third persons have meanwhile acquired rights to manufacture or sell what he had failed to claim. Topliff v. Topliff et al., 402.

*

2. PRESUMPTION ARISING FROM TWO YEARS' DELAY IN APPLYING For ReisSUE-If a reissue be sought to enlarge a claim, a delay of two years from the original grant in applying therefor will ordinarily, though not always, be treated as evidence of abandonment of the new matter to the public. *Id. 3. REISSUES APPLIED FOR BY ASSIGNEE AS FOR PATENT GRANTED BEFORE 1870– Where an applicant for a patent in assigning his invention said that it was "fully described in the specification pertaining to said application, which I have signed under oath," and his assignee applied for a reissue at a time when the law did not require the inventor's oath to the reissue specification, non sequitur that the inventor himself would ever have asserted that the original application contained error arising from fraud, accident, or mistake, and this fact taken into consideration by the Court in determining that question. Freeman v. Asmus, 415.

REISSUES-Continued.

"

4. PRACTICE-ENLARGED CLAIM-Where an applicant has by "inadvertence claimed less than he was entitled to claim, he may have a reissue with enlarged claims. (Citing and quoting Topliff v. Topliff et al., ante, 402; 59 O. G., 1257.) Ex parte Stanley, 166.

REJECTED CASES. See Amendments, 1; Appeal to the Commissioner, 3.

1. REJECTED APPLICATION PENDING IN COURT ON APPEAL IS BEYOND THE JURISDICTION OF THE PATENT OFFICE-A rejected application for a patent, pending on appeal in the Supreme Court of the District of Columbia, is not open to review by the Commissioner of Patents. Ex parte Jerome, 29.

2. RULE 66-WHEN PETITION UNDER, WILL NOT LIE-There is no basis for action under Rule 66 where the rejection by the Examiner clearly rejects all tho claims upon certain patents cited, and a petition to the Commissioner asking that the Examiner be directed to withdraw the references or treat each claim specifically in its relation to the references will not lie. Ex parte McGarrell, 45.

3. RULE 65-PRACTICE-Rule 65 provides that when a case is rejected by an Examiner "the reasons for such rejection will be fully and precisely stated and such information and references will be given as may be useful in aiding the applicant to judge of the propriety of prosecuting his application or of altering his specification," and when an applicant receives an Office letter stating objections to his application and he, without demanding action under said rule, proceeds to ask for a reconsideration, which ultimately results in a second rejection, he has waived any right he may have had under the rule. Ex parte Mahlecke, 206.

4. FUNCTIONAL Claim—COURSE OF APPEAL—The question whether or not a claim for a so-called "process" is a claim for the function of a particular machine is one relating to the merits. The Examiner's action in such a case should take the form of a rejection, and appeal therefrom will lie to the Examinersin-Chief. (Citing ex parte McClellan, ante, 125; 59 O. G., 1763.) Ex parte Williams, 213.

5. THE MCDONOUGH TELEPHONE APPLICATION HELD FINALLY REJECTED BY DECISION IN MCDONOUGH V. GRAY V. BELL V. EDISON, (C. D., 1889, 9; 46 O. G., 1245) The decision of the Commissioner of Patents in McDonough v. Gray v. Bell v. Edison (C. D., 1889, 9; 46 O. G., 1245;) was a final rejection of the McDonough application, and the Examiner was upheld in refusing to consider an amendment thereon subsequently offered by the applicant. Ex parte McDonough, 228.

REJECTED CLAIMS. See Construclion of Claims; Division of Application, 14. PRACTICE-RULE 68.-After final rejection claims substantially different from those finally rejected cannot be admitted without the showing required by Rule 68. Ex parte Houston, 193.

RENEWAL OF ABANDONED APPLICATIONS. See Abandoned Applications, 2, 3. RENEWAL OF FORFEITED CASES. See Abandonment, 5; Interference, 51. REOPENING OF CASES. See Rehearing.

RULE 142-REOPENING OF CASE BEFORE PRIMARY EXAMINER-The Commissioner will not authorize the reopening of a case by a Primary Examiner, under Rule 142, in the absence of good and sufficient reason for long delay on the part of the applicant in presenting his reasons therefor, or of a showing of great hardship or irreparable injury. Ex parte Goldsmith, 41.

RES ADJUDICATA. See Construction of Specifications and Patents, 8; Priority of Invention, 10.

RESERVATION CLAUSE. See Abandonment, 1.

RESULTS. See Construction of Specifications and Patents, 18, 22; Invention, 14, 17. 12692 PAT -49

RIGHTS OF PATENTEES.

NATURE OF A PATENT-RIGHT-The rights secured to a patentee under his grant from the Government are a form of property in the enjoyment of which he is entitled to protection against all trespassers, including the Government. *Head v. Porter, 502.

RULES OF PRACTICE.

FORMS FOR APPLICATIONS, OATHS, ETC., FURNISHED BY The Patent OFFICE-The forms given in the Rules of Practice are merely suggestive and not mandatory. Ex parte Cook, 232.

SCOPE OF PATENT. See Assignment, 3.

CAPABILITY OF USE OF INVENTION-KNOWLedge of CarbILITY—The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not. (Roberts v. Ryer C. D., 1876, 439; 10 O. G., 204; 91 U. S., 150.) Challoner v. Perkins, 151. SECRETARY OF THE INTERIOR. See Interference, 43.

SENIORITY OF PATENTS ISSUED ON SAME DAY. See Patents.
SERVICE OF PROCESS. See Jurisdiction.

SKILLED WORKMEN. See First and Original Inventor, 1.

SPECIFICATIONS. See Construction of Specifications and Patents, 22.

1. AMBIGUOUS TERMS-WORDS MUST BE OF DEFINITE IMPORT.-An applicant will not be permitted to use words in his specifiation that are likely to create an ambiguity in the strict construction of his claims, and an objection by the Primary Examiner in such a case is properly taken. Ex parte Petzold, 39. 2. ARGUMENTATIVE SPECIFICATION-An applicant is entitled to state as specifically and categorically as he chooses the difficulties and troubles which are cured or ameliorated by his improvement, but he is not entitled to state such matters in a way that amounts to a recital of the history of the art as he understands it, combined with an argument as to the importance of the improvement. Ex parte Johnston, 150.

3. SPECIFICATION-PROLIXITY OF DESCRIPTIVE MATTER-A specification comprising two separate descriptions of the same subject-matter of invention that are substantially alike, except that one contains references to the drawings, is unnecessarily prolix. Ex parte Kinney, 172.

4. SUFFICIENCY OF SPECIFICATION-The word “filament" used as descriptive of the size of the burner, is sufficiently definite in view of illustrations in the specification, and it is not necessary that its maximum and minimum dimensions should be specified, especially since defendant's burners indisputably lie wholly on one side of the dividing line between rods and filaments. *Edison Electric Light Company v. United States Electric Lighting Company, 606. STATE OF THE ART. See Combinations; Construction of Specifications and Patents, 22; Interference, 12; Invention, 5.

STATE STATUTES.

1. INFRINGEMENT-STATE STATUTES OF LIMITATIONS NOT PLEADable in Bar of AN ACTION AT LAW FOR-A State statute of limitations has no effect upon suits in the Federal courts for the infringement of patent-rights, and is not pleadable in bar of an action at law for such infringement. *Brickill et al. v. City of Hartford et al., 295.

2. A STATE STATUTE OF LIMITATIONS NO BAR TO AN ACTION FOR INFRINGEMENT-A State statute of limitations is not pleadable in bar of an action at law for infringement of a patent. (Following McGinnis v. Erie Co., C. D., 1891, 389; 55 O. G., 718; 45 Fed. Rep., 91.) *California Artificial Stone Paving Company v. Starr et al., 283.

3. INFRINGEMENT-STATE STATUTES OF LIMITATION-Defendant in an action at law for infringement of patent pleaded State statutes of limitation, to which

STATE STATUTES-Continued.

plaintiff demurred. Demurrer sustained for the purposes of this particular
case; but the applicability of such statutes to actions for infringement under
the patent laws discussed and upheld. *Brickill et al. v. Mayor, etc., of
Baltimore, 698.

STATUTE OF LIMITATION. See Assignees in Bankruptcy; State Statutes.
STIPULATION. See Interference, 42; Testimony.

SUBPOENAS. See Evidence, 2.

SUBSEQUENT PATENTS. See Assignments, 3.

SUITS FOR INFRINGEMENT. Sce Assignees in Bankruptcy; Bill in Equity; Bond; Construction of Specifications and Patents, 10; Damages and Profits, 5, 13, 14; Demurrer; Designs, 5; Disclaimers, 2; Experts; Infringement, 1, 4, 5, 6, 7, 8, 9, 10, 11, 14; Infringement by Government Officials; Injunction,6; Parties to Suit; Priority of Invention, 10; State Statutes, 3.

1. EVIDENCE-Burden of PROOF IN CERTAIN CASES-Where an alleged infringer's defense relies upon unpatented devices claimed to be anticipations of the patent, and the use and existence of which are proven only by oral testimony, the courts not only impose the burden of proving such devices upon the defendant, but they demand proof that shall be clear, satisfactory, and beyond a reasonable doubt; and they will subject such evidence to the closest scrutiny. *Washburn & Moen Manufacturing Company et al. v. Beat 'Em All Barbed Wire Company et al., 299.

2. NOTICE TO THE PUBLIC-SECTION 4900, REVISED STATUTES-PRESUMPTION— Where there is any question under section 4900 of sufficiency of notice to the public that the device sued upon was a patented article, the presump. tion against the public arising from the record of the Letters Patent in the United States Patent Office requires the averment of want of knowledge on the part of the defendant in his answer to the bill. *Sessions v. Romadka et al., 382.

3. JURISDICTION OF FEDERAL COURTS-CONTRACT-Where a plaintiff's bill in equity is purely a bill for the infringement of patent-rights, asking for the usual relief in the usual form, and containing no suggestion of contract relations between plaintiff and defendant, the mere fact that the defendant's answer sets up an alleged contract gives the Court no warrant to dismiss the case for want of jurisdiction on the ground that the rights of the parties are governed by contract. White v. Rankin et al., 427.

4. TEST OF JURISDICTION—In such a case the question is upon the infringement of the patent, and the subject-matter of the action is disclosed in the bill, the defendant's answer being in effect a mere denial of infringement, and raising an issue clearly within the jurisdiction of the court. *Id.

5. DAMAGES FOR INFRINGEMENT-In an action to recover a balance alleged to be due on written contract whereby plaintiff' agreed to furnish and set up certain machinery for defendant the latter sets up, among other defenses, that he had been served with notice by a certain patentee of a claim for damages for infringing Letters Patent by the use of the machinery furnished by plaintiff. Held that a purchaser of machinery who has had the full use and enjoyment and undisturbed possession of it cannot, in the absence of fraud, withhold the purchase-price because of an alleged liability on his part to a patentee for infringement in the use of the property. *Consumer's Gas Company of Danville v. American Electric Construction Company, Limited,

488.

6. INFRINGEMENT—ACCOUNTING-Where infringement is admitted, damage is presumed, and the owner of the patent is entitled to a reference for accounting without giving specific evidence of damage. *Campbell Printing-Press & Manufacturing Company v. Manhattan Railway Company, 492.

SUITS FOR INFRINGEMENT-Continued.

7. SAME-PLEADING-Where there are joint defendants to a bill for infringement, it is sufficient if the bill contains a general allegation of infringement, and it need not in terms allege a joint infringement. *Indurated Fibre Industries Company et al. v. Grace et al., 498.

8. SAME-SAME-Under Revised Statutes, section 4886, providing for the issuing of a patent where, inter alia, the invention has not been patented or described in any foreign country before the date of the invention, a bill for infringement of a patent is demurrable which does not allege such facts. * Overman Wheel Company v. Elliott Hickory Cycle Company, 537.

9. SAME-SAME-BILL WITH DOUBLE ASPECT-Where a complainant's bill asks for the specific performance of a contract set out, and also contains expressions looking to relief, as on a bill for infringement, Held impossible to sustain the bill as one for a double aspect, because in a bill for infringement the determination who are necessary parties must be made from a standpoint different from that in a bill for specific performance, and the title to relief is not the same in each event. *American Box Machine Company v. Crosman, et al., 558.

10. ABATEMENT BY DISSOLUTION OF COMPLAINANT-Notwithstanding the merger of the complainant with another company into a new corporation, the law of the State of New York providing that pending suits shall not be deemed to have been abated or discontinued by reason of any such consolidation is effective to accomplish that end. *Edison Electric Light Company v. United States Electric Lighting Company, 606.

SUITS FOR PENALTIES UNDER SECTION 4901, REVISED STATUTES. See Marking Unpatented Articles "Patented."

SUPPLEMENTAL OATH. See Oath, 1.

SUPREME COURT OF THE UNITED STATES. See Master's Report; Practice in the Patent Office.

TECHNICAL TERMS. See Construction of Specifications and Patents, 11, 20; Infringement, 5; Particular Patents, 21; Process; Specifications, 4.

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

TESTIMONY. See Deposition, 2; Evidence; Interference, 16, 19, 20, 54; Wife and Husband; Witnesses, 2.

TESTIMONY TAKEN BEFORE MAGISTRATE-CANNOT Be Withheld AT THE INSTANCE of the Party In WHOSE BEHALF IT WAS TAKEN-Testimony taken under a stipulation by the parties before an officer qualified, but without special appointment by the court, as an examiner, is beyond the control of the party in whose behalf it was taken, and cannot be withheld if the opposing party insists upon its introduction. *J. L. Mott Iron Works v. Standard Manufacturing Company, 256.

TESTIMONY TAKEN IN FOREIGN COUNTRIES. See Interference, 42.
PRACTICE-TESTIMONY TAKEN ABROAD-RULE 158-Where a party seeks to take

testimony abroad under the provisions of Rule 158, a mere formal allegation
in his affidavit that the testimony cannot be taken in this country without
"injury to the moving party greatly exceeding that to which the opposite
party will be exposed by the taking of such testimony abroad" is not suf-
ficient to satisfy the requirements of the rule in that particular. Hall v.
Latta, 169.

TITLE TO PATENT. See Employé of the Government as an Inventor, 1; Protest against Issuance of Patent.

TRADE-MARKS. See Fees in Trade-Mark Cases.

1. AUTHORITIES-The Trade-Mark Cases (C. D., 1879, 619; 100 U. S., 82) and Higgins v. Keuffel (C. D., 1890, 403; 55 O. G., 1139; 140 U. S., 428) quoted and discussed; Ex parte l'almer, 6.