In re Davis

7 F. Cas. 53, 1 MacA. Pat. Cas. 628

• Court: District of Columbia Court of Appeals
• Decided: April 15, 1859
• Status: Published

Opinion

Merrick, J.

The applicant having in his specification described the improved machine in all its parts and the manner in which it should be operated, defines his claim of novelty as follows : 11 What I claim as my invention, and desire to secure by letters-patent, is the hulling and breaking cylinder B, provided with the serrated arms b b or their equivalents, and driven at the different speeds, as herein specified, in combination with the containing cylinder A, constructed and operating substantially as described.’ ’ The patent law makes especial requisition for clearness and definiteness of claim in the specifications for machines, by declaring that the applicant shall fully explain the principle and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions, and shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery. It would be difficult, with this rule prescribed by the statute, to conclude, from reading the specification and claim of the applicant in this case, that the only points of novelty asserted by him for his improved machine are the adjustment of the size of the holes of the outer cylinder so as to permit the due escape of the hominy, when in the progress of the operation the grains of corn are successively broken to the requisite size, and the change, by means of the requisite adjustment of parts of the machinery, of the velocity of movement of his cylinder from one certain rate of revolution to another certain rate of revolution, at proper stages in the process of manufacture. These points of novelty are not set forth and claimed particularly and specifically as the matter of his discovery, but his claim is for the whole combination of the machinery and manner of operating it at different degrees of velocity. The claim is therefore too broad, and was properly rejected by the Office as disclosing no novelty upon the references given to Hull’s machine and the barley-hulling machine of Andrews and Piper. Considering, therefore, that the second reason of appeal cannot be sustained, in view of the references given, and that the first and third do not present proper matter of inquiry upon a specification framed in such general terms, and not making claim of novelty for that’ upon which these supposed errors are assigned, and the fourth reason being identical with the. second, I am of opinion, and accordingly certify to the Hon. S. F. Shugert, Commissioner of Patents, that there is no error in the decision of the Office upon the claim in the shape in which it is now submitted. Whether it may be so amended as to present patentable novelty, is a question upon which I cannot pass judgment upon the present appeal; and I further, therefore, certify that the judgment of the Commissioner is affirmed, and the application for a patent must be denied.

J. S. Brown, for the appellant.