MITCHELL, Commissioner:

This is a petition complaining of the action of the Examiner in refus ing to permit certain claims to be entered in the case. The petition sets forth that the present application and a companion application were both filed February 23, 1889, one of the cases being for a method and the other for an apparatus; that the two cases were allowed July 1 and July 3, 1889, respectively; that the present application was shortly after withdrawn from issue in order to be placed in interference with an application filed by another party; that the interference having been decided in favor of the applicant, the present application was again allowed June 27, 1890; that meanwhile the six months within which to pay the final fee on the companion application covering the process had been allowed to expire, it not being deemed advisable to issue the method case at an earlier date than the apparatus case, in view of the "prevailing decisions regarding such matters," and that the practice of the Office having meanwhile been changed so that method and apparatus claims can be allowed in the same application, it is desired to place the method claims, formerly allowed in the forfeited application, in the application at present pending.

The Examiner objects to the granting of the request upon the ground that to do so would be to revive a forfeited case without requiring a new fee.

Whether the reason given by the Examiner is the only one or not, I think it must be regarded as sufficient. The present practice of the Patent Office recognizes the right of the inventor of an apparatus and of a process, both being dependent upon each other and mutually contributing to produce a single result, to secure protection for both inventions in one patent. But the present practice permits the inventor, if he so elects, to file separate applications for process and apparatus respectively. (Ex parte Lord, C. D., 1890, 16; 50 O. G., 987.) In the present case the applicant sought protection for the process in a sepa rate application. That application was duly allowed and subsequently became forfeited for non-payment of the final fee within the period prescribed by law. The relief to which an applicant under such circumstances is entitled is provided by section 4897 of the Revised Statutes, which section provides that in a case like the present the applicant should have a right to make application for such invention or discovery the same as in the case of an original application, provided such second or renewed application be made within two years after the allowance of the original application.

The law having provided a given remedy, the steps prescribed by the statute should be followed, not necessarily because otherwise the Patent Office would lose a fee, but because the statute having prescribed a method of relief seems to impliedly prohibit relief by other methods.

Intentionally refraining from deciding what action might be taken if both of the applications were still pending before the Office, I am compelled, under the circumstances of this case, to deny the petition.

EX PARTE MEYER ET AL.

Decided September 11, 1890.

54 O. G., 265.

I. WITHDRAWAL FROM ISSUE-ADDING AMENDED CLAIMS.

Where an application has been passed to issue, permitted to become forfeited by failure to pay the final fee, thereafter renewed and again allowed, a petition to withdraw such application from the issue to add amended claims, unaccompanied by any showing of "hardship or irreparable injury," was denied. 2. SAME.

The necessity of advancing the work of the Office compels conformity to the rule laid down in ex parte Myers, (C. D., 1889, 198; 49 O. G., 131.)

ON PETITION.

ROTARY STEAM-ENGINES.

Application of Frederick Meyer, Joseph S. Kiehl, and Alexander Grant filed April 6, 1889, renewed June 25, 1890, No. 356,715.

Messrs. Dayton, Poole & Brown for the applicants.

MITCHELL, Commissioner:

This is a petition for withdrawal from issue in order to add amended claims. The Examiner, to whom the matter was referred, reports that the petition ought not to be granted.

The application was first allowed June 7, 1889, and was permitted to become forfeited by failure to pay the final fee. About a year afterward it was renewed, and on the 5th of July, 1890, was again allowed. Nearly two months after the second allowance the applicants filed this petition. In support of the petition they urge that in their opinion the present claims are unnecessarily restricted to combinations containing radial slotted pistons. The Examiner states that the petition contains no suggestion that any other kind of piston is intended to be used in the described rotary engine, and adds that if there are any other well-known equivalent pistons it does not appear to be any reason why applicants would be restricted to those described and shown, because the claims cover in legal effect not only what is shown and described, but all known equivalents as well.

Whether the position of the Examiner is correct or not, no case of "hardship or irreparable injury" is presented by the petitioners, and no reason is known why this application should be withdrawn from the issue which would not apply to a vast number of cases whose equity is at least, equal to that of the present case. Besides, it is to be noted that this case does not present the equity which in some cases arises out of prompt action on the part of the applicant.

The necessity of advancing the work of the Office compels conformity to the rule laid down in ex parte Myers, (C. D., 1889, 198; 49 O. G., 131,) and the petition must be denied.

INVENTION-AGGREGATION.

EX PARTE WHITE.

Decided September 12, 1890.

54 O. G., 387.

There is no invention in aggregating in a single vendible commodity magnesium adapted to use for flash-light purposes and put up in a case or shell and a time-fuse attached to said case or shell for communicating fire to the magnesium. The improvement may possess commercial advantages, but it lacks the quality of invention.

APPEAL from Examiners-in-Chief.

LIGHTS FOR PHOTOGRAPHING.

Application of Norman White filed March 1, 1889, No. 301,681. Messrs. Gifford & Brown and Mr. E. H. Brown for the applicant. MITCHELL, Commissioner:

In this case the claims appealed are as follows:

1. The combination, with magnesium, of a case or shell and a fuse attached to the case or shell for communicating fire to the magnesium, substantially as specified. 2. The combination, with magnesium, of a case or shell, consisting of a pasteboard box, and of a fuse attached to the case or shell, for communicating fire to the magnesium, substantially as specified.

The references are patent to Fuller, July 31, 1888, No. 386,875, and Photographic News, vol. 27, p. 26, 1863; Photographic News, vol. 8, p. 575, 1864; British Journal of Photography, vol. 12, p. 87, 1865; British Journal of Photography, vol. 13, p. 417, 1866.

The only reference which bears with any considerable directness upon the matter claimed is Fuller's patent of 1888, which fully discloses the subject-matter of the present application, the claims being, however, limited to a combination in which a coating of collodion is employed as an essential feature. This patent has been anticipated by the applicant, who has complied with Rule 75 for that purpose. But the fact that the applicant can antedate Fuller does not clothe his improvement with patentable quality. He claims in effect the applica tion of a time-fuse to magnesium adapted to use for flash-light purposes and put up in a case or shell.

I agree with the Examiners-in-Chief and with the Primary Examiner that

there is nothing of patentable invention in using a time-fuse in connection with a flash-light, the same having been used in connection with time-signals as well as in all explosions previously where it was an object to gain time. Neither is there anything patentable in putting up a specified charge of an explosive in a case or cartridge.

It may be added that there can be no invention in aggregating both features in a single vendible commodity. The improvement may pos sess commercial advantages, but it lacks the quality of invention. The decision of the Examiners-in-Chief is affirmed.

Where it appeared that all that applicant professed to do was to take an old and well-known bolt and nut and to screw them together in the ordinary way, and then to take an old and well-known chisel and make an incision in the bolt lengthwise and nearest the upper surface of the nut in order to prevent the bolt from rotating, Held that applicant had only displayed the expected skill of the calling and accomplished what a skillful mechanic would do whenever required. APPEAL from the Examiners-in-Chief.

NUT-LOCKS.

Application of James H. Shields filed June 5, 1890, No. 354,353.

Mr. C. M. Alexander for the applicant.

MITCHELL, Commissioner:

The claims appealed are as follows:

1. The mode herein described of securing and holding a nut in place upon its threaded bolt, consisting in forcing a suitable tool into the body of the bolt tangentially to the longitudinal axis of said bolt in such manner as to lift or raise not only the metal of one or more of the threads of said bolt, but also a portion of the body below the depth or kerf of the thread, as and for the purpose specified.

2. The combination of a bolt and nut thereon, a portion of the threads of the bolt immediately next to the outer face of the nut being cut up or raised by a cut extending longitudinally of the bolt and inclining tangentially thereto, substantially as described.

The references are patents to Watson (reissue) June 2, 1874, No. 5,906; Withers, January 25, 1876, No. 172,815.

In an amendment to the specification filed July 30, 1890, it is stated as follows:

Applicant lays no claim to be the first inventor of the method of securing a nut upon a bolt by striking up a portion of the thread of the latter, but what he does claim as his invention is the peculiar manner of cutting up the threads immediately adjacent the nut. Briefly speaking, this invention consists in making a longitudinal cut and extending or inclining it tangentially to the bolt, the cut taking in one or more of the threads and extending down into the body of the bolt.

It is contended by applicant that nothing is found in the patents cited to approach or suggest this method of securing the nut.

In the patent to Withers the locking-lip is formed by raising the thread of the bolt by cutting. In the patent to Watson the locking-lip is formed by bending the thread on the bolt nearest the outer surface of the nut.

In view of the references, it must be held that there is nothing patentable in the claims.

It has been repeatedly held by the Supreme Court of the United States that

it is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful, but it must, under the Constitution and the statute, amount to an invention or discovery.

Hill v. Wooster (C. D., 1890, 230; 132 U. S., 693) and cases there cited.

Furthermore, applicant has but slightly modified the manner in which Withers accomplished substantially the same result; he simply cuts deeper into the body of the bolt than did Withers and does away with the lugs on the nut; but Watson also does away with the lugs and bends over the thread on the bolt nearest the outer surface of the nut. Applicant only accomplishes to a greater extent what has before been accomplished by those who have preceded him. In other words, he has displayed but the expected skill of the calling, which did not involve invention.

A mere carrying forward or new or more extended application of the original thought, a change only in form, proportions, or degree, doing substantially the same thing in the same way, by substantially the same means, with better resultsis not such invention as will sustain a patent. (Ex parte West, C. D., 1889, 167; 47 O. G., 1731; Smith v. Nichols, 21 Wall., 112; Roberts v. Dyer, C. D., 1876, 439; 91 U. S., 150.)

It may also be added that all that applicant professes to do is to take an old and well-known bolt and nut and screw them together in the ordinary way, and then to take an old and well-known chisel and make an incision in the bolt lengthwise of the bolt and nearest the upper surface of the nut, in order to prevent the bolt from rotating. This, apart from any references, does not amount to invention, for applicant has done only what a skillful mechanic would do whenever required. (Walker on Patents, section 25, and cases there cited.) The decision of the Examiners-in-Chief is affirmed.

ZEIDLER ET AL. v. LEECH ET AL.

Decided January 19, 1891.

54 O. G., 503.

1. MOTION TO DISSOLVE FOR WANT OF INTERFERENCE IN FACT-APPEAL. The appeal from a decision of the Primary Examiner denying a motion to dissolve on the ground that no interference in fact exists lies directly to the Commissioner and not to the Examiners-in-Chief. (Rule 124.)

2. SAME QUESTION RAISED BY SUCH MOTION.

The only question raised by a motion to dissolve for want of interference in fact is whether an interference in fact exists between allowable claims, and the only inquiry arising on such a motion is one which assumes that the claims are allowable.