the relator, Boyer; Boyer brought suit in the Supreme Court of the State of New York, for the county of New York, against the company in order to compel a reassignment of the applications from the company to himself; after a hearing the suit was decided in Boyer's favor, the company was ordered to make the assignment, refused so to do, contempt proceedings were instituted against it, and as an outcome of these proceedings the company executed the assignment and delivered it to the relator; the case was appealed to the appellate division where the order of the trial court was affirmed and from there an appeal was taken to the Court of Appeals of the State of New York; no supersedeas of the order of the trial court was ever had. Meanwhile, the relator duly filed the assignment so procured with the Commissioner of Patents and requested that he be permitted to inspect and obtain copies of the applications, which request the Commissioner of Patents, after due consideration, declined to grant.

The action here is in mandamus to determine the right of the relator to the inspection. The Commissioner of Patents has found himself of the opinion that his duty required him to refuse the request on the ground that the subject-matter of the applications was in litigation, and this seems to be the point of the case. If conflicting claims to the applications existed there could be no doubt of the correctness of the Commissioner's position, but it seems to me that a claim which has been adversely adjudicated by a court of full jurisdiction cannot longer be said to "exist" as an adverse claim. I cannot escape the conviction that the judgment of the Supreme Court of New York, until reversed or modified, or until superseded by appropriate proceedings, is conclusive as between the parties to that suit on all questions of ownership of the applications; that the "full faith and credit " clause of the Constitution reaches the case, and that the executive branch, as well as the judicial tribunals of the Government, are required to recognize the conclusive effect of that judgment.

It has been suggested by counsel for the Commissioner that irreparable damage might result to the Sewing Machine Company if the relator were permitted to inspect the applications; while this may be, yet the Sewing Machine Company has itself the remedy in hand by availing itself of the opportunity to supersede the judgment in accordance with the laws of New York and the terms prescribed by the New York court; if the matter is not regarded by them as of sufficient importance to require this step on their part, it is hardly to be expected that the Commissioner of Patents ought to be under the duty of guarding them. I have reflected a good deal over the point and am forced to the conclusion that the New York judgment must be reregarded as conclusive, that as a result the records of the Patent Office show the relator with a clear title and a right to inspection and copies. Motion for judgment is therefore granted.

[Supreme Court of the District of Columbia.]

DILG v. MOORE, (SUBSTITUTED FOR ALLEN,) COMMISSIONER OF PATENTS OF THE UNITED STATES.

Decided January 28, 1909.

149 O. G., 601.

PATENTABILITY-BILL UNDER SECTION 4915, REVISED STATUTES.

The evidence presented considered and Held insufficient to overcome the rulings of Patent Office and the Court of Appeals of the District of Columbia that the claims are unpatentable.

Messrs. Warfield & Duell for the complainant.

Mr. Fairfax Bayard for the Commissioner of Patents.

GOULD, J.:

This is a bill in equity filed under section 4915 Revised Statutes of the United States to compel the Commissioner of Patents to issue Letters Patent to the plaintiff, Dilg. The section under which the suit is brought reads as follows:

Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.

The plaintiff's application relates to rings for holding balls used in ball-bearings and keeping them properly spaced. The device specifically involved in the bill consists of a flat hollow ring, upon each of the two edges of which are projections or standards, and on the top of the outer edge triangular flaps projecting over to the top of the corresponding inner projections, thus forming what may be termed a pocket into which the balls are sprung. It will be noticed that plaintiff's claims show two series of retaining-standards, each series springing from opposite sides of the ring.

The original application of plaintiff for a patent was filed in 1897 and another in 1900. These applications disclose substantially the same subject-matter. In 1903, he inserted three claims, which are numbered fourteen, fifteen and sixteen, which were taken from a patent issued to another party. These claims read 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 of extensions, whereby suitable spaces are formed for receiving and confining the balls between adjacent standards.

The question involved is whether these claims describe anything disclosed in his original applications.

The law is well settled to the effect that patents must be restricted as to matter of substance to what was disclosed in the original application. (Railway Co. v. Sayles, C. D., 1879, 349; 15 O. G., 243; 97 U. S., 554; in re Dilg, C. D., 1905, 620; 115 O. G., 1067; 25 App. D. C., 9.)

So that the question here involved is whether Dilg's application for a retaining-ring having a series

of inner and outer flaps

to confine the balls

that is, one series of projections which arise from both the inner and outer edges of the base-ring, warrants an amendment which refers to a series of standards springing from one edge only.

It seems to me this is entirely a question for expert testimony. And in this conclusion I am sustained by the action of the plaintiff in this case. In the only testimony of any importance which he has added to the record heretofore made is that of an expert to the effect that plaintiff's original claims warranted the inclusion of the contested claims, Nos. 14, 15, and 16.

But if the question is one for experts, I should feel that I stood on more solid ground if I accepted the disinterested views of the Primary Examiner, the Examiners-in-Chief, the Commissioner of Patents, and the court of appeals (Mr. Justice Duell writing the opinion) all of whom held that the contested claims were not covered by either of plaintiff's original claims, rather than the unsupported views of Mr. Day, who was the plaintiff's expert, and the sole witness upon this crucial point in the case.

All these disinterested experts hold that plaintiff's original application gave him no right to include the claims of Keiper's patent. I will therefore sign a decree dismissing plaintiff's bill.

[U. S. District Court-District of Oregon.]

UNITED STATES OF AMERICA v. PATTERSON.

June 4, 1909.

144 O. G., 563.

PERJURY-AFFIDAVIT TO SUPPORT APPLICATION FOR LETTERS PATENT.

The offense of perjury as defined by section 5392, Revised Statutes of the United States, may be predicated upon the oath, declaration, or affidavit subscribed in support of an application for Letters Patent if the party making the oath or making the declaration or affidavit swore falsely with relation thereto or if at the time of making said oath he did not believe the matter or facts set forth therein to be true.

Mr. Walter H. Evans and Mr. J. Russell Wyatt, Assistant United States Attorneys.

Mr. Allen R. Joy, Mr. H. H. Riddell, and Mr. W. H. Fowler for the defendant.

WOLVERTON, Dis. J., (charging jury :)

GENTLEMEN OF THE JURY: You have heard the testimony in this case and you have listened to the argument of counsel, and it becomes my duty at this time to advise you touching the law of the case as applied to the facts which have been narrated in your hearing.

The defendant is charged by the indictment herein with having sworn falsely, under an oath administered to him by C. W. Hodson, a notary public for Oregon, in a matter material to an inquiry before the Commissioner of Patents of the United States. The indictment is drawn under section 5392 of the Revised Statutes of the United States, which provides that every person who, having taken an oath before a competent tribunal, officer, or person in any case in which the law of the United States authorizes an oath to be administered, that he will testify, declare, depose, or certify truly, or that any written testimony, declaration, deposition, or certificate by him subscribed is true, wilfully and contrary to such oath states or subscribes any material matter which he does not believe to be true, is guilty of perjury.

A copy of the oath alleged to have been taken and subscribed is set forth in the indictment, whereby the defendant Charles A. Patter

son swears

that he verily believes himself to be the original, first, and sole inventor of the improvement in buckles described and claimed in the annexed specificationswhereas it is alleged by the indictment that he, at the time of taking said oath, namely, the 14th day of March, 1907, well knew that he was not the original, first, and sole inventor of said improvement in buckles, as described and claimed in said specifications.

Under the law of Congress relating to patents, it is requisite for one desiring to obtain a patent-right upon a new invention, or any novel improvement on an old invention, to make application therefor in writing to the Commissioner of Patents, and file the same in the Patent Office, specifying in certain manner and particulars the invention desired to have patented. The law further requires that the petitioner shall make an oath that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, or improvement for which he solicits a patent. Such an oath, declaration, or affidavit constitutes in part the proof upon which the Commissioner of Patents acts in determining whether or not the invention claimed is new and useful, and is such a one as to entitle the claimant to a patent thereon. Thus it is that the claim for the patent forms the basis upon which this inquiry proceeds, and the oath, declaration, or affidavit subscribed in support of the application is therefore touching a matter material to the inquiry before the Commissioner of Patents, and is such a one upon which perjury may be predicated under said section 5392, if the party taking the oath or making the declaration or affidavit swore falsely with relation thereto, or if at the time of taking said oath, he did not believe the matter or facts set forth therein to be true.

The plea of not guilty puts in issue all the material allegations of the indictment, and this casts upon the Government the burden of proving or substantiating all of such allegations, to your satisfaction, beyond a reasonable doubt.

The law presumes the accused to be innocent until he is proven guilty. This is not a presumption to be regarded lightly, but is real and substantial and attends the accused until it is overcome by evidence satisfying your minds of his guilt.

The real issue in this case is reduced to very narrow limits. The oath or declaration alleged to have been subscribed and verified by the defendant, I instruct you was touching a matter material to an inquiry before the Commissioner of Patents, which disposes of that element in the case. Furthermore, the proofs touching the defendant's subscription and verification of the oath, declaration, or affidavit set forth in the indictment before C. W. Hodson, a notary public for Oregon, is very persuasive, so that there can scarcely be any question about that. Indeed, neither the defendant nor his counsel make any special question upon the subject. But, however that may be, I leave it for you to determine whether or not the defendant so subscribed and verified such oath or declaration.

The pivotal controversy is touching the alleged improvement upon the buckle which has been exhibited to you. The first question with reference to this is, who was the original, first and sole inventor of the improvement claimed? I refer to the invention which consists