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U.S. Supreme Court

United States ex Rel. Steinmetz v. Allen, 192 U.S. 543 (1904)

United States ex Rel. Steinmetz v. Allen

No. 383

Argued January 12-13, 1901

Decided February 23, 1904

192 U.S. 543


A rule of practice in the Patent Office, when established by the Commissioner of Patents under § 483, Rev.Stat., constitutes, in part, the powers of the primary examiner and the Commissioner, and becomes to those officers an authority under the United States, and this Court has jurisdiction under § 8 of the Act of February 9, 1893, to review a final judgment of the Court of Appeals of the District of Columbia where the plaintiff in error assails the validity of such a rule.

Section 4886, Rev.Stat., gives a right, which is a substantial one, to join inventions which are related to each other in one patent, and this right cannot be denied by a hard and fixed rule which prevents such joinder in all cases. Such a rule is not the exercise of discretion, but a determination not to hear.

Rule 41 of Practice in the Patent Office, insofar as it requires a division between claims for a process and claims for an apparatus if they are related and dependent inventions, is invalid.

Mandamus is the proper remedy where the Commissioner of Patents has refused to require the primary examiner to forward an appeal to the board of examiners in chief to review the ruling of the primary examiner requiring the petitioner to cancel certain of the claims in his application.

This is a petition in mandamus filed in the Supreme Court of the District of Columbia to compel the Commissioner of

Page 192 U. S. 544

Patents to require the primary examiner to forward an appeal, prayed by the petitioner, to the board of examiners-in-chief, to review the ruling of the primary examiner requiring petitioner to cancel certain of his claims in his application for motor meters.

The supreme court dismissed the petition, and its action was affirmed by the court of appeals. This writ of error was then sued out.

The decision of the primary examiner was based upon Rule 41 of practice in the Patent Office, and the case involves the validity of the rule under the patent laws.

The petitioner filed an application in the Patent Office, November 21, 1896, for a patent for "certain new and useful improvements in motor meters." He expressed his invention in thirteen claims. They are inserted in the margin. *

Page 192 U. S. 545

The first six were held by the primary examiner to be claims for a process; the balance of the claims to be for an apparatus, and on the fifteenth of May, 1900, ordered that the latter, that is, claims 7, 8, 9, 10, 11, 12, and 13, be cancelled from the application. In other words, he required a division between the process claims and the apparatus claims, in accordance with Rule 41. That rule is as follows:

Page 192 U. S. 546

"41. Two or more independent inventions cannot be claimed in one application; but where several distinct inventions are dependent upon each other and mutually contribute to produce a single result, they may be claimed in one application."

"Claims for a machine and its product must be presented in separate applications."

"Claims for a machine and the process in the performance of

Page 192 U. S. 547

which the machine is used must be presented in separate applications."

"Claims for a process and its product may be presented in the same application."

Petitioner persisted in his application as filed, and the primary examiner repeated his order for a division of the claims. Petitioner regarded such order as "a second final rejection" of his claims to the apparatus, and appealed therefrom to the board of examiners-in-chief. The primary examiner refused to answer the appeal and to forward the same with his answer thereto and the statements required by the rules of the Patent Office. Thereafter, on the twentieth of August, 1900, petitioner petitioned the Commissioner of Patents to direct the primary examiner to forward said appeal, which petition was denied. It was repeated to the present Commissioner, defendant in error, and by him denied on the seventh of February, 1902.

These facts constitute petitioner's claim to relief.

The answer of the respondent asserts the validity of Rule 41, justifies the action of the Patent Office, alleges that petitioner is estopped from contesting the orders of the primary examiner, and also alleges that those orders "did not involve the rejection of any claim or an action upon the merits of any claim made by the relator," as provided in Rule 13, and that

"the statutes and Rule 133 of the rules of practice do not provide for an appeal to the examiners-in-chief from an examiner's requirement for division, and the examiners-in-chief have no jurisdiction to pass upon the question whether or not division should be required."

The answer presents also the following facts: prior to making the order of May 15, 1900, to-wit, on October 9, 1899, the primary examiner wrote a letter to petitioner regarding the division of the process claims and the apparatus claims, in accordance with Rule 41, before further action would be given upon the merits of the case.

Petitioner replied December 15, 1899, requesting "that the

Page 192 U. S. 548

requirement for division be waived for the present," in order that his process claims be placed in interference with the claims of a patent to one Duncan. To this request the examiner answered:

"Pending the determination of the interference, applicant may retain the method and apparatus claims in this case, but the acceptance of an interference on one of the method claims will be held by the office to be an election of the prosecution of the method claims, and the further prosecution of the apparatus claims in this application will not be permitted."

Petitioner replied January 19, 1900, urging that the interference be declared, and on February 7, 1900, it was declared and decided in favor of petitioner. After the decision, the examiner wrote the letter of May 15, 1900. These proceedings, respondent contends, constitute an estoppel.

The first ruling of the Commissioner of Patents upon the petition to require the primary examiner to respond to petitioner's appeal was as follows:

"Where applicant does not care to comply with the examiner's requirements in a matter of division such as is here involved, it has been the practice for the past thirty years to treat the question not as one of merits, and appealable to the examiners-in-chief, but as a proper matter for petition to the Commissioner. I see no reason for overturning this practice. This petition is denied."

The second order of the Commissioner, respondent, after reciting certain of the facts, concluded as follows:

"The requirement for division is purely a matter of form, not involving the merits of the claims, since the claims may be, and in the present case are, regarded as allowable. The examiner has not refused to grant a patent to this applicant upon any of the claims presented, but has merely required that they be included in two patents instead of one. It is a question of procedure, or of the manner of securing the protection, which is in controversy, and not the right of the applicant to a patent upon any of the claims presented. "

Page 192 U. S. 549

"The examiner was right in taking the position that the question involved is not appealable to the examiners-in-chief, and although it is a general rule of law that the appellate tribunal is the one to determine whether or not it has jurisdiction when an appeal is taken to it, it is not considered necessary in the office practice to follow that practice strictly, since the Commissioner is the head of the office, and has the final decision upon all questions arising within it and may settle questions of this kind upon direct petition. The examiner's decision upon the question whether or not an appeal to the examiners-in-chief is regular and proper is not final, since it may be reviewed by the Commissioner upon petition, but he has authority to pass upon that question in the first instance."

"The petition is denied. "

Page 192 U. S. 555

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