As regards the merits of the case, this decision was, in so far, correct, as there was, actually, involved not a new process, but only an apparatus allowing those operations, part of which had heretofore been performed by hand, to be carried into effect automatically by means of the machine, namely by means of a central mechanism for regulating the means producing pressure. The action of the tub-filling device was carried out in the usual manner except that, owing to the regulating mechanism, it became possible to perform such action automatically and more perfectly. Therefore, the decision should have been rendered to the effect that the performance in question was known by itself, instead of declaring that said performance was dependent upon a certain apparatus.

In another case it is said in a decision of the primary examiner:

No valid proof has been brought to establish the fact that this case involves a new process which might be protected, inasmuch as the functions characterized in claim I are dependent solely upon the apparatus characterized in claims 2 and 3 and are subject to certain distinct forms of execution. This case was especially remarkable in so far that it had been shown by the primary examination that the aforesaid apparatus, which are, indeed, required for executing the new process, were almost entirely known, so that the claim for a patent would hardly have been justified, but for the fact that the process of causing the apparatus to become active in order to bring about the functions, had to be admitted as new and patentable. In fact, this was actually a typical case, and the primary examiner was fortunately induced to allow the process patent.

The German Patent Office stands not alone in reasoning thus; the same views have also to be opposed in the Patent Offices of other countries, for example in Austria and Denmark.

It is to be hoped that this view of the subject will undergo a radical change, if the applicants and, above all, their attorneys will assert again and again that it constitutes no characteristic point of a process invention whether the execution of the process depends upon a distinct apparatus or machine or whether the conception of an invention and of its rule may or may be not made the subject of a purely verbal definition, but that this question hinges solely on the single point whether the performances, the functions, in and with the apparatus differ, with regard to method and result, to such an extent from what has been hitherto practised as to confer patentability.

United States Practice.

Patents.

COURT OF APPEALS OF THE DISTRICT OF COLUMBIA.

IN RE DILG.

Decided February 7, 1905.

115 O. G. 1067.

1. AMENDMENT OF APPLICATION-NEW MATTER NOT PERMITTED.

An applicant in his endeavor to protect his invention may amend the specification and claims so long as he keeps within the requirements of the statutes and the rules of the Patent Office; but he cannot be permitted at any time to introduce new matter into his application and obtain therefor a date as of the date of the original application.

2. SAME-SAME-CLAIMS PROPERLY REJECTED.

Held that the Commissioner was right in rejecting the appellant's claims to a ball-retaining ring, because they do not correctly describe his invention, but include new matter borrowed from a patent granted to another party.

3. Same Same CLAIMS NOT CORRESPONDING WITH ORIGINAL DISCLOSURE.

Where the appellant originally disclosed standards springing from both edges of the annular base and according to the original disclosure both were necessary, Held that an amendment claiming a base having standards springing from one edge only involves new matter.

4. SAME-SAME-Same.

Where the original case disclosed the top pieces of the standards with straight sides, Held that an amendment stating that those top pieces are sector-shaped or flaring involves new matter.

5. USE OF AMBIGUOUS TERMS CONDEMNED SIMPLE INVENTION.

Since the appellant's ball-retaining ring is a simple invention, there is no warrant for introducing ambiguous terms, thereby failing to clearly and correctly describe it.

Mr. J. S. Barker for the appellant.

Mr. John M. Coit for the Commissioner of Patents.

DUELL, J.:

These two appeals from the decision of the Commissioner of Patents, presenting a similar question and based upon an original application and a division thereof, can be well considered together.

They do not present the question of patentability, but rather the right of appellant to make certain claims in the two applications, the former of which, as before stated, is divisional to the latter.

The records disclose that the appellant on October 18, 1897, filed the original application known as Serial No. 655,652, for an improvement in ball-bearings. While that application was in process of examination, and on February 16, 1900, he filed the second application as a division of the former, and it is known as Serial No. 5,434. Both applications were repeatedly rejected, in whole or in part, and as often amended. It was not until by, the amendment of August 27, 1903, that the claims in controversy of the parent application were submitted and an interference requested with Patent No. 686,617, issued November 12, 1901, upon an application filed December 23, 1897, by Henry B. Keiper.

The claims in controversy of the divisional application first appeared in an amendment filed September 1, 1903. These claims were copied from Patent No. 686,617 and an interference therewith requested.

It appears, therefore, that nearly six years elapsed between the filing of the parent application and the presentation of the claims in controversy, and that the patent with which interferences were requested had been issued nearly two years prior to the request therefor.

Before proceeding to consider the question presented by the two appeals, it may be premised that while we do not question the right of an applicant, in his endeavor to protect his invention by apt claims, to amend the specification, including thereunder the claims, as long as he keeps within the requirements of the statutes and the rules of the Patent Office based thereon, he is not permitted at any time to introduce new matter into his application and obtain therefore a date as of the date

of the original application. The reasons for this are too obvious and well known to require enumeration. It is the duty of the Commissioner of Patents to reject all claims, a basis for which is not found in the application as originally filed.

In Railway Co. v. Sayles (97 U. S., 554), the Supreme Court, in referring to attempts to add to or vary the original application by amendment, said:

It will be observed that we have given particular attention to the original application, drawings and models filed in the Patent Office by Thompson and Bachelder. We have deemed it proper to do this, because, if the amended application and model, filed by Tanner five years later, embodied any material addition to or variance from the original-anything new that was not comprised in that--such addition or variance cannot be sustained on the original application. The law does not permit such enlargement of an original specification, which would interfere with other inventors who have entered the field in the meantime, any more than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed, or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has, in the meantime, gone into public use.

With this rule laid down for the guidance of the Patent Office and this Court, we are to consider in each case before us whether the Commissioner of Patents was right in rejecting the claims in question, because the applications as filed did not furnish a legal basis for their allowance, or, in other words, whether the claims in question embodied new matter.

In separately considering the two appeals we prefer to first take up Appeal No. 273, for the reason that the application to which it relates is the parent appplication, rather than in the order in which the appeals were taken.

The claims in appeal No. 273 are as follows:

6. A ball-retaining device for ball-bearings consisting of a ring-shaped portion or base having flaps with extensions which are laterally enlarged to produce pointed ends, the flaps being upwardly and the extensions outwardly bent, in combination with balls held on the base in the spaces created by said flaps and their extensions, substantially as set forth.

7. A ball-retaining device for ball-bearings consisting of a ring-shaped portion or base having flaps with top-retaining portions or extensions which are laterally enlarged to produce pointed ends, the said flaps extending upwardly from the base and the extensions extending outwardly, in combination with balls held on the base in the spaces created by the said flaps and the top-retaining extensions.

8. A sheet-metal ball-retaining device for ball-bearings consisting of a ring-shaped portion or base from which extend standards which in turn carry ball-retaining extensions, such extensions being laterally enlarged to produce pointed ends, the standards extending upward relative to the base and the extensions outward, in combination with balls held on the base in the spaces formed by the said standards and extensions.

9. A ball-retaining device for ball-bearings comprising a base portion, a series of top-retaining members for the balls arranged substantially parallel with the base and disposed so as to separate the recesses for the individual balls, the oppositely-disposed edges of which top retaining portions, bounding the recesses, are concave, and intermediate connecting parts between the said base and top ball-retaining portions, the whole being constructed and ar

ranged to retain the balls so they shall project from the bearing in the inner and outer and upper directions.

10. A ball-bearing device for ball-bearings comprising a corrugated ring having a series of base-supports for the balls and a series of top retaining portions located practically parallel with the said base-supports and connected therewith, the oppositely-disposed edges of which top retaining portions are concave, the whole being constructed and arranged to retain the balls so they shall project from the bearing in the inner and outer and upper directions. A careful examination of the specification and drawing as originally filed shows conclusively that there is no warrant found therein for these claims. By an amendment to the specification filed October 5, 1903, appellant attempted to insert matter upon which he could predicate his appealed claims. The terms set forth in this amendment do not correctly describe the appellant's invention and are borrowed from the Keiper patent. The invention is a simple one and there is no warrant for introducing ambiguous terms, thereby failing to clearly and correctly describe it. The Patent Office was justified in objecting to the use of terms such as "ringshaped base," "standards or flaps," and "flanges or extensions," as they do not correctly describe elements of construction found in the thing as first described and shown.

Referring specifically to claim 6, it may fairly be said that the following elements of the claim are not disclosed in the application as filed, i. e. "ring-shaped portion or base," "flaps with extensions which are laterally enlarged to produce pointed ends."

The Examiners-in-Chief, in their opinion, fully and fairly state what appellant discloses in his application and analyze the claims, demonstrating conclusively that they are unwarranted and inapplicable to the construction disclosed by him. In view of the fact that appellant cannot now file a new application and make the claims in controversy, we might be inclined, if we had any doubt as to his right to make the claims in the present application, to resolve such doubts in his favor, but there is no room for doubt. The action of the Patent Office was correct and the reasons are so fully disclosed by the opinions of the various tribunals that there is no necessity for us to elaborate our views.

The claims appealed in No. 272, which appeal relates to the divisional application Serial No. 5,434, are as follows:

14. A ball-retaining device for ball-bearings consisting of a ring-shaped portion or base having a series of standards springing from one edge thereof only and provided with sector-shaped or flaring angularly-arranged extensions, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

15. A ball-retainer consisting of an annular base portion and a series of integral parts extending from one edge only of said base and having flaring portions arranged at an angle thereto, whereby suitable spaces are formed for receiving balls which are sprung into said spaces and confined between said parts.

16. A ball-retaining device for ball-bearings, consisting of a ring-shaped portion or base having a series of standards springing axially from one edge thereof only and terminating in sector-shaped or flaring angularly-arranged flanges or extensions, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

The ground of rejection of these claims is, as before stated, that they are un

warranted by the drawing or description as originally filed and consequently embody

new mattter.

Has appellant the right to make these claims, or, as asserted in the Patent Office, is he debarred from making the claims because the various elements are neither shown nor described in the application as filed? After an examination of the record, our conclusion is that he has no right to make these claims in the present application.

The original application disclosed "standards" springing from both edges of an annular base, and we fail to find the slightest intimation that appellant contemplated the omission of either series of standards. The construction disclosed required the employment of both series of standards in order to retain the balls. All the claims in controversy have as an element a series of standards or integral parts extending from one edge of the annular base portion only. This is such a radical departure from the invention as originally shown and described that it is clearly unwarranted and, standing by itself, would have been sufficient ground for the adverse action of the Office. There is, however, another fatal departure from the original disclosure. In the amendment of October 5, 1903, the appellant injects into the specification a statement, in substance, that these standards have extensions or top pieces which are "sector-shaped or flaring." He originally disclosed only straight-sided extensions, and the change is clearly not warranted by anything found in the drawing.

For the reason that appellant's device, as filed, failed to disclose the "sectorshaped" top pieces and standards on one side only of the ring-shaped base, he is not justified in amending his specification in the respect stated, nor in presenting the claims in controversy.

The decisions of the Commissioner of Patents in both appeals are correct and we must affirm them.

The opinion and the proceedings in the two causes in this court will be certified to the Commissioner for record in his office, according to law.

COMMISSIONER'S DECISIONS.

EX PARTE WILLITS.

Decided March 16, 1905.

115 O. G., 1064.

I. AMENDMENTS-NEW MATTER-INOPERATIVE DEVICE.

New matter cannot be inserted in a case by amendment simply because the invention originally shown is inoperative and the amendment will make it operative. (Ex parte Snyder, 22 O. G., 1975, construed.)

2. SAME-SAME-SAME-PATENT LIMITED TO ORIGINAL DISCLOSURE.

The patent cannot include new matter, but must be limited to the disclosure in the original application. Other improvements cannot be included, whether they are intended to make the device operative or merely to make it perform its functions better.

3. SAME-SAME-CLERICAL ERRORS.

Mere clerical or draftsman's errors may be corrected where the errors are clear from the application itself; but changes cannot be made in the application based upon allegations of fact not shown by the record.

ON PETITION.