This is a petition in mandamus filed in the supreme court of the District of Columbia to compel the Commissioner of 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.
1. The herein-described method of measuring alternating electric currents, which consists in setting up or establishing a shifting field of magnetism from three intersecting lines or axes of magnetism and adapted to actuate a rotatable armature in a motor meter arranged within the energizing coils producing said lines of magnetization.
2. The herein-described method of actuating an alternating-current motor meter, which consists in setting up or establishing a shifting field of magnetism from three intersecting lines or axes of magnetization, and adapted to actuate a rotatable armature arranged within the energizing coils producing said lines of magnetization.
3. The herein-described method of actuating a single-phase alternating-current motor meter, which consists in setting up or establishing a shifting field of magnetism from three intersecting lines or axes of magnetization and adapted to actuate a rotatable armature arranged within the energizing coils producing said lines of magnetization.
4. The herein-described method of actuating an alternating-current motor meter, which consists in setting up or establishing a shifting field of magnetism by means of magneto-motive forces acting along three intersecting lines and subjecting an armature to the inductive action of said field.
5. The herein-described method of actuating an alternating-current motor meter, which consists in setting up or establishing a shifting field of magnetism by means of magneto-motive forces being proportional to the current and the other two to the electro-motive force, and subjecting an armature to the inductive action of said field.
6. The herein-described method of actuating an alternating-current motor meter which consists in setting up or establishing a shifting field of magThe 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 15th of May, 1900, ordered that the latter, that is, claims 7, 8, 9, 10, 11, 12, and 13, be canceled 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: '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 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 20th 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 7th of February, 1902.
These facts constitute petitioner's claim to relief.