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DEFENSES.

1. Public employment is no defense to the employé for having converted the private property of another to the public use without his consent and without just compensation.

[*Cammeyer and Lewis vs. Newton et al., 182.

2. Private property, the Constitution provides, shall not be taken for public use without just compensation, and it is clear that that provision is as applicable to the government as to individuals, except in cases of extreme necessity in time of war, and of imminent and impending public danger.

[*Ibid., 182.

3. All the defenses which the statute authorizes may be made as well in respect to patents granted upon applications renewed under the 35th section of the act of 1870 as in respect to those issued upon original applications. Lapse of time, per se, does not constitute abandonment.

[* The United States Rifle and Cartridge Company et al. vs. The Whitney Arms Company et al., 197.

(See Pleadings and Practice, 16, 17, 18, 20, 21, 22, 23, 24.)

DESIGNS.

1. In some prints the novelty of the design may consist in the form, outline, or grouping; in others, in the use, combination, arrangement, or harmony of colors; in others, in the combination of some or all of these attributes.

[*Richardson vs. Miller et al., 291.

2. Design patents are subject to the general principles of construction applicable to mechanical patents. A combination or aggregation of old designs producing no new appearance is not patentable.

[*Northrup et al. vs. Adams, 322.

3. When, in a design of a rectangular provision-safe, the only originality consisted in the use of two vertical panels in each wall and a familiar molding around the top and bottom, the patent was held invalid.

[* Ibid., 322.

4. Doubted whether it is a proper subject for a design patent to make sieves with a flare, so that they can be nested one within another; and, if so, the design lacks novelty.

[Adams & Westlake Manufacturing Company vs. Saint Louis Wire Goods Company, 379.

(See Infringement, 22, 23, 24.)

DILIGENCE.

1. The same degree of diligence is not required of an inventor who has completed his invention as of one whose invention has not been reduced to practice.

[Freund vs. King, 6.

2. The diligence required of the one first to conceive, in order to make out a superior title to the invention as against one first to reduce the same to practice, is an absolute and not a relative matter, and must be shown to be reasonable under the circumstances.

[Millward vs. Barnes and Barnes, 34.

3. It is a well-settled principle of law that diligence on the part of the party first to conceive the invention constitutes an essential element of the title of first and original inventor.

[Gross vs. Sargent, 37.

4. The theory of the patent law requires that an inventor should be diligent in giving his efforts to the public, and a private corporation cannot be substituted for the public as the recipient of the inventor's efforts.

(See Abandoned Application, 3; Priority of Invention, 1,

DISCLAIMERS.

[Ibid., 37.

2.)

1. A disclaimer, properly made, attested, and recorded, becomes a part of the specification to the extent of the interest of those who make it, but will not affect any action pending at the time of its being filed, except as to unseasonable neglect or delay in filing it.

[* Dunbar and Hopper vs. Myers, ex., et al., 140.

2. The disclaimer must be taken into account in construing the patent, except when its effect is to enlarge the nature of the invention and prejudice the rights of the respondent.

[* Ibid., 140.

3. Matters properly disclaimed cease to be part of the invention, and render the patent the same as if such matters had never been included.

[* Ibid., 140.

4. A disclaimer limiting the actual invention of the patentee, the result of an error or mistake on the part of the Office, may be omitted in a reissue.

[* The American Shoe Tip Company vs. The National Shoe Toe Protecto Company, 251.

(See Construction of Specifications and Patents, 14.)

DIVISION OF APPLICATIONS.

1. The mere fact that an article can be made upon an improved machine, capable of geueral use, and not specially adapted for the production of this particular article, is not sufficient to establish such unity of invention as to warrant their being included in the same application.

[Junker and Wolf, 10.

2. Separate and distinct inventions, that do not co-operate or depend upon each othe for their operation, cannot be included in one application.

[C. F. Dieterich, 14.

3. The retort-charging mechanism, the coke-removing mechanism, and the coketransporting hopper, although capable of being employed together in the manufacture of gas, cannot for that reason alone, there being no patentable combination between them, be included in the same application

[Ibid., 14.

4. The requirement of a division of an application presupposes the existence of matters which might become the subject of separate patents.

[R. Pintsch, 43.

5. Where claim was made in the same application to a process of manufacture, the article produced, the mechanism employed, and also to certain additional steps in process treatment, together with the modified article thereby obtained, the application was held to be duplex, and the varied process and article required to be expunged. [A. D. Albers, 55.

6. Separate independent inventions, which are not necessarily connected with the apparatus described or article naturally produced thereby, but which may be used

with other apparatus and in connection with the article produced in other ways, cannot be included in the same application with them.

[Ibid., 55

7. A domestic application, made up from a number of foreign patents, will be divided, for the purpose of restricting the term, if the subjects-matter separated are not properly in combination.

[C. W. Siemens, 75.

8. A device for opening and closing window-blinds cannot be included in the same application with another for locking and unlocking the blinds, it appearing that there is no community or dependence of operation between the two.

[Henry Law, 119.

9. The fact that the two devices would probably be used together because of their convenience is no test of their right to be included in a single application.

[Ibid., 119. 10. There must be intercommunication of parts or mutual dependence of the distinct devices to entitle them to be thus incorporated.

[Ibid., 119. (See Joinder of Invention, Joint Invention, 1; Oaths, 1; Practice in Patent Office, 16.)

ENLARGED INVENTION.

1. Where the specification of the original patent suggested no invention save the one contained in the entire combination, the claim in the reissue for a lesser number of elements than it embraced was declared void.

[* Miller & Co. vs. Bridgeport Brass Company, 336.

(See Construction of Claims, 7; Construction of Specifiations and Patents, 34, 35, 36, 37; Novelty, 2; Reissue, 16, 17, 18, 21, 24.)

EQUIVALENTS.

1. Notches or 66 cutaways" being common in plain-edged paper bags to facilitate the opening of the mouth, it is mere double use to provide “jagged-edge” bags with the same feature.

[J. Arkell, 73.

2. A combination claim held to be met by the reference cited, where the elements in both were identical in arrangement and also in kind, with the exception of a single one, which, though differing in form, was the same in function and effect as the corresponding element of the reference.

[John D. Murray, 90.

3. An inventor is supposed to describe in his patent the best mode of practicing his invention, but is not necessarily limited to the precise construction shown, so as to exclude a method differing from it only in a single detail, but produciug the same result. [* Lorillard & Co. vs. McDowell & Co., 237.

4. The fact that there is an advantage in having the die stationary while the header moves toward it is not alone sufficient to show that the machine is not the equivalent of that patented, all the elements of combination existing alike in both, and operating the same in combination.

[* The Union Metallic Cartridge Company vs. The United States Metallic Cartridge Company, 289.

5. An inventor, without describing equivalents in his patent, is entitled to be protected in their use and to treat their use by others as an infringement.

[* Ibid., 289.

6. The fact that one patent is granted for a cuspadore and the other for a spittoon is of no importance, as the difference is merely of form, and the form itself is old. [* Ingersoll vs. Turner & Turner, 310.

7. Defendant having substituted broad bearing-surfaces for the cutting-edges of complainant's dies, the change held to be colorable as one simply arising from the difference in material upon which the dies were used without variation in result.

[* Albright vs. The Celluloid Harness Trimming Company, 311.

(See Infringement, 8, 9, 12, 13, 16, 18, 34, 35, 38; Invention, 5; Substitution, 5.)

ESTOPPEL.

1. In order that a former judgment of a court of competent jurisdiction obtained in an action between the same parties shall act as an estoppel in a subsequent suit, it must be certain that the consideration and determination of the particular matter sought to be concluded was necessarily involved in the verdict and judgment.

[*Russell vs. Place & Place, 301.

2. If this does not clearly appear from the face of the record, extrinsic evidence consistent with the record may be admitted to establish the fact.

[* Ibid., 301.

3. Where several distinct matters may have been litigated, upon one or more of which the judgment may have passed, and it remains uncertain which of them was thus litigated, and upon which the judgment was rendered, the whole subject-matter of the action will be at large and open to a new contention.

[* Ibid., 301.

4. Complainant having made claim in his patent to an article and to a process in which that article was used, and it being uncertain whether judgment was rendered on one or both of these claims, the defendant in a subsequent suit was not estopped from setting up both the former and new defenses in his answer.

[* Ibid., 301.

5. An agreement with a complainant not to manufacture the device of a certain firm does not work an estoppel, it being a controverted fact as to the identity of such device with that alleged to be infringed.

[* Roemer vs. Simon et al., 368.

EVIDENCE.

1. Full credit must be accorded to the testimony of an unimpeached witness.

[Freund vs. King, 6.

2. Obtaining a patent for an invention is presumptive evidence that the party has not abandoned the same.

[Ibid., 11. 3. Testimony in a cause must be confined to the point in issue, and all not bearing directly or indirectly thereon is subject to be stricken out.

[Miller vs. Miles, 15.

4. Testimony as to public use taken in an interference in no manner connected with or ancillary to the matter at issue, but relating to the acts of parties not in interest, is not competent evidence, and cannot be received.

[Ibid., 15.

5. Sketches, drawings, models, oral and written descriptions, and experiments, all constitute evidence to be considered in determining the question of priority of invention. [Withington vs. Locke, 27.

6. The granting of a patent is prima facie but not conclusive evidence that the right to the invention has not been surrendered to the public, and the same is true in regard to abandonment upon renewed applications which were made under the 35th section of the act of 1870.

[*The United States Rifle and Cartridge Company et al. vs. The Whitney Arms Company et al., 197.

7. The filing of an application is conclusive evidence that at its date the inventor did not intend to give his invention to the public, but it is not conclusive evidence that he did not subsequently do so.

[* Ibid., 197.

8. In suits for infringement "the patent is prima facie evidence that the patentee was the original and first inventor, and any one who controverts this assumes the burden of proof and undertakes to show affirmatively that there was a prior knowledge and use of the invention, under such circumstances as to give to the public the right of its continued use against the patentee." (Crouch vs. Spear et al., 6 OFFICIAL GAZETTE, 187.)

[Crouch vs. Roemer, 288.

(See Abandoned Experiment, 1; Abandoned Invention, 3; Foreigu Use, 2.)

EXTENSIONS AND EXTENDED PATENTS.

1. In an application for extension sufficiency of remuneration is a matter of fact, and not one upon which the judgment of the Commissioner can be informed by expert testimony.

[Henry Voelter, 100.

2. Purchasers of patented machines are entitled to repair and perfect them, and use the same during the extended term of the patent.

[* The Union Metallic Cartridge Co. vs. The United States Metallic Cartridge Co., 289.

(See Infringement, 39; Jurisdiction, 2.)

FOREIGN PATENT.

1. An invention is not patented in England so as to anticipate an invention patented in this country, until the completed specification has been filed. The date of filing the provisional specification is not to be considered.

[*Smith vs. The Goodyear Dental Vulcanite Company et al., 171.

2. A foreign patent in order to invalidate an American patent must antedate the invention patented.

[Cochrane et al. vs. Deener et al., 242.

(See Division of Applications, 7.

FOREIGN USE.

1. Proof of prior use in a foreign country will not supersede a patent granted here unless the alleged invention was patented in some foreign country.

[* Roemer vs. Simon et al., 368.

2. Proof of such foreign manufacture and use, if known to the applicant for a patent, may be evidence tending to show that he is not the inventor of the alleged new improvement.

[* Ibid., 368.

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