The Classification of Patents Part 5

(30) Where a patent contains claims for a process and for an apparatus susceptible of use as an instrument in carrying out the process, but not peculiar to that use, or for an apparatus adapted to carry out but one step or only a part of the process, the process claim, being in this instance the more intensive, would control the cla.s.sification. (See Rule 28.)

Example: In a patent containing a claim for a process of roasting ore and then collecting the fumes, and another claim for a roasting furnace that is a mere material-heating furnace, the process claim would control; whereas, if one claim were for a method of roasting ores consisting of stirring the ore, applying heat to the same, and collecting the solids from the fumes, and the other claim, were for a heating furnace having a stirrer and a fume arrester, the apparatus claim would control. And if a patent contained claims for a process of roasting ores, and other claims for a furnace susceptible of use in carrying out the process but equally useful in annealing gla.s.s or steel articles, the process claim would control.

(31) Where a patent claims a specified article of manufacture or other product, and also an instrument for making a part only of that specified article or other product, the product claim, being more intensive, should control the cla.s.sification; so also in case of a claim for a product and a claim for an instrument performing any minor act with respect thereto. (See Rule 28.)

Example: Where a patent claims a particular construction of a riveted joint, and also a tool for calking the rivet, and where a patent claims a particular construction of shoe, and also a b.u.t.tonhook for b.u.t.toning said shoe, the article and not the tool claims control.

(32) Where a patent contains claims to a process and a product, the process claims govern the cla.s.sification in those cases where search among machines for making the product would have to be made, and such processes would be cla.s.sifiable on the basis of the mode of operation, usually in the same cla.s.s with machines for practicing such processes.

(See Rule 28.)

Example: A patent having a claim for a process of making bifocal lenses, consisting in grinding the surface of one piece of gla.s.s to form a convex lens, heating another piece of gla.s.s until it is plastic, then forcing the ground surface of the first-named piece into the body of the latter and gradually cooling the lens-blank thus formed; and also a claim for a bifocal lens composed of two pieces of gla.s.s weld-united, would be cla.s.sified in Gla.s.s-manufacture and cross-referenced into lenses. Or a patent having a claim to a process of making a metal plate with elongated perforations, consisting in forming round perforations in the plate and subsequently rolling the plate, thereby thinning and elongating the plate and elongating the openings, and also a claim to a metallic plate having relatively long and narrow perforations, would be cla.s.sified on the basis of the process claim.

(33) Where a patent claims both process and product, and the alleged process is disclosed in the product, so that search would have to be made in the appropriate cla.s.s of products, the product will be adopted as the basis of cla.s.sification, and cla.s.sification will be in the appropriate product cla.s.s. (See Rule 28.)

Example: A claim for a process of making a pencil consisting in a.s.sembling a core of graphite with a sheathing of wood, and attaching a cap of rubber-composition to one end, would be cla.s.sified as a pencil rather than as a process, became conception of the article is inseparable from the process and search must be made in the article cla.s.s.

(34) Where a patent claims a process of making a composition of matter, and also the composition of matter, the claims will be cla.s.sified in general in accordance with the cla.s.sification of the composition of matter in all cases where the process is peculiarly adapted to produce the composition, as by setting forth the introduction or a.s.semblage of particular ingredients, since those processes that include the selection of particular ingredients necessitate search among compositions having such ingredients. (See Rule 28.)

Example: A patent having a claim for a composition consisting of a mixture of caoutchouc and casein, and a claim for the process of preparing a rubberlike substance which consists in adding undissolved raw caoutchouc to casein and thoroughly mixing and kneading the ma.s.s, would be cla.s.sified according to the composition.

(35) Where a patent claims a product such as a specific article of manufacture, or a specific composition of matter, and also claims a process of general application for making one of the parts of the article or one of the ingredients of the composition, the product claim should control the cla.s.sification. (See Rule 28.)

Example: If a patent claimed a woven textile fabric having the yarns interlaced in a defined relation, and a process of spinning a yarn utilized in the fabric; or if a patent claimed a varnish composed of sh.e.l.lac, dissolved in wood alcohol, and a pigment, and also contained a claim for distilling wood to obtain the alcohol, the product claim would control the cla.s.sification in each instance, and the process would be cross-referenced.

[1] All terms have a meaning in extension and in intension. The meaning of a term in extension consists of the objects to which the term may be applied; its meaning in intension consists of the qualities necessarily possessed by objects bearing that name. The term "motors" in extension means all motors--electric, gas, water, spring, weight, etc. "Motors" in intension means instruments to convert some form or manifestation of energy into periodical or cyclical motion of a body. As the intension increases the extension decreases, and vice versa. There must be more motors than there are electric motors, and electric motors have more qualifications than are common to all motors. Comparison of arts and instruments with respect to their extension and intension for cla.s.sification purposes should be made between comparable qualities. A claim for a steam-engine may be very specific while a claim for a reaper may be very broad; here there is no comparable relations.h.i.+p, and the terms intensive and extensive do not have the relative significance most useful in cla.s.sification. But when a patent or application contains claims for mechanism peculiar to electric motors and other claims for mechanism common to electric motors and other kinds of motors, the claims for the electric motor would control the cla.s.sification.

(D) PROCEDURE IN RECLa.s.sIFYING WITHIN EXAMINING DIVISIONS.

(1) Do not start to make a new cla.s.s or revise an old one with preconceived fixed notions respecting its scope and the particular subdivisions required. Wait until all patents pertinent to the subject have been seen and adequate knowledge of them acquired. In other words, make no _a priori_ cla.s.sification but discover and a.s.semble all the facts and from them make your inductions. Then the common characteristics of the subject-matter of the cla.s.s may be intelligently defined, the limitations of the cla.s.s marked out, and its relation to other cla.s.ses set forth. Bear in mind that the Patent Office cla.s.sification deals with the subject-matter of the useful arts rather than merely with existing cla.s.ses, and that it is not therefore essential to retain cla.s.ses that are found to be composed of unrelated or too distantly related units.

a.s.suming that the work of recla.s.sification is undertaken by examiners who are already experienced in the subject-matter to be cla.s.sified, procedure as follows is recommended:

(2) Utilizing your previously acquired knowledge of the patents in the cla.s.s you are about to revise, subdivide the existing subcla.s.ses into bundles, so as to a.s.semble in each bundle those patents deemed to have the closest resemblance to each other. For the purpose of this a.s.semblage, consider each patent as an entirety and not with reference to various more or less important parts of that entirety.

Example: An apparatus comprising in alleged combination a means for decanting water, a means for electrolytically depositing impurities, and a means for filtering the water, should not be cla.s.sified either as a decanter, an electrolytic apparatus, or a filter, but should be cla.s.sified as a combination apparatus (taking it to the general art of liquid purification). So also the combination of a rotary printing-press with a folding mechanism, and a wrapping mechanism, should not be cla.s.sified merely as a rotary printing-press, a folding machine, or a wrapping machine, but should be cla.s.sified as a combination of the several mechanisms as an entirety whose functions carried out in proper order produce a printed and wrapped newspaper.

(3) Write an approximate or tentative definition of the matter thus a.s.sembled in each bundle and attach it to its appropriate bundle.

(4) Where it appears that the subject matter of any bundle formed from the patents of any subcla.s.s is a.n.a.logous to matter in other subcla.s.ses of the same cla.s.s or in other cla.s.ses, a note should be added to that effect so that this matter may be given special consideration.

(5) When the same examiner or different examiners are working on different subcla.s.ses containing a.n.a.logous matter, parallel lines of subdivision should be followed wherever possible, in order to effect an arrangement that will facilitate comparisons.

(6) When subdividing a group of more or less complex organized structures or mechanisms, note should be taken of subcombinations that form or it is thought should form the basis of other subcla.s.ses, either in the same or different cla.s.ses, into which those details may be collected, either cla.s.sified therein originally or by cross-reference.

Example: a.s.suming that the combination of press, folder, and wrapping mechanism, referred to in a preceding paragraph is to be cla.s.sified in a cla.s.s of Printing, on the entirety as a combination having the function of printing, plus other functions, and that folding and also wrapping are separately cla.s.sified, then the particular type of press should be selected to be cross-referenced into a press-type subcla.s.s of the cla.s.s of Printing, such as "Presses, rotary," while the folding mechanism and the wrapping mechanism would be noted for cross-reference to other appropriate cla.s.ses. Also, any part of the printing press, such as the inking mechanism, specifically described, should be noted for cross-reference into a subcla.s.s of Printing designed to receive the inking mechanism as a part of the printing press.

(7) After a knowledge of the material of the cla.s.s has been obtained by estimating the resemblances between the individual patents that have been a.s.sembled in the several groups, comparison of these groups, represented by the bundles of photolithographs, by the aid of the approximate definitions and notes attached can be made. It can then be decided whether all of these groups are to be retained in the proposed cla.s.s, and the retained groups can be organized into a cla.s.s with the subcla.s.ses arranged so as to bring those subcla.s.ses having the strongest resemblances in closest relation, and in such order as to comply with the conventions adopted in the official cla.s.sification. It will probably be necessary to have one subcla.s.s or group as broad as the definition of the cla.s.s, to take uncla.s.sifiable matter and to provide for possible future inventions.

(8) Up to this point, more or less cursory attention may be given individual patents; but when an arrangement of subcla.s.ses shall have been tentatively adopted it will be necessary to consider each patent carefully to ascertain whether it is properly placed.

(9) Patents that, considered as an entirety, cover means not peculiar to the cla.s.s or subject-matter being revised, should, in general, when a.s.sembled in groups as indicated, have a note attached indicating not only want of limitation to the subject-matter of the cla.s.s but also a more appropriate cla.s.s to receive them if such there be. Although a very large proportion of patents can be accurately cla.s.sified as indicated by their t.i.tles and stated uses, the mere fact that in a patent found in a cla.s.s the invention is called in the specification or claims by a name peculiar to the cla.s.s is not of itself a reason for considering it peculiar to the cla.s.s. A gas and liquid contact apparatus may be called a heater, a cooler, a gas-washer, a water-carbonator, a condenser, a disinfecter, an air-moistener, and so on, depending upon accident of use. If there are not elements in some claim to confine the means described distinctively to what it is called, or if there are no functions necessarily implied in the means claimed peculiar to the named use, the patent should not be kept in the cla.s.s unless there is no other cla.s.s in the office that can receive it.

Example: Where the matter claimed is a metal beam of peculiar cross-section, it should be cla.s.sified with other metal beams, as in Cla.s.s 189, Metallic Building Structures, even if it is named in the application as a beam of particular use, as a railroad-tie, car-sill, bridge-tie, etc. Should a mere dash-pot be found cla.s.sified in Cla.s.s 171, Electricity, Generation, a note should be attached indicating that it belongs in the appropriate element cla.s.s.

(10) In giving this final careful attention to the patents, each should also be scanned to see whether it contains matter that should be cross-referenced. A few lines obscurely located in a specification may contain a disclosure of a most valuable invention. No cla.s.s can be deemed complete until the disclosures appropriate to it found as parts of more complex inventions in other cla.s.ses, or disclosures of a.n.a.logous matter in other cla.s.ses, are either cross-referenced into it or cross search-notes made.

(11) To indicate cross-references, from one subcla.s.s to another within the cla.s.s or from the cla.s.s under consideration into another cla.s.s, attach a small slip of paper to the patent and mark on the slip the subcla.s.s number in which the cross-reference shall be mounted. If the matter to be cross-referenced relates only to a portion of a voluminous patent, the portion of the specification and drawing to be cross-referenced should be indicated. If the cross-reference falls outside the cla.s.s, the cla.s.s number should be noted in addition to the subcla.s.s number.

(12) Should it be found that the handling of copies in making examinations detaches the cross-reference slips, it may be advisable to mark lightly but legibly in pencil on the lower right-hand corner of the examiner's photolithograph the number of the subcla.s.s or subcla.s.ses into which it is to be cross-referenced, or the number of the cla.s.s and subcla.s.s in case it is to be cross-referenced to another cla.s.s.

(13) Whether cross-reference notations are written on a separate slip or on the photolithograph, the number of the cla.s.s and subcla.s.s into which a patent is to be cross-referenced should always be preceded by X (thus X 101-23) in order to distinguish the original cla.s.sification notation from the cross-reference notation and enable sorting and indexing to be done without confusion.

(14) To indicate cross-references from other cla.s.ses into the one being recla.s.sified, set down the number of the patent in a notebook, placing after the number (1) the cla.s.s and subcla.s.s in which it is cla.s.sified; and (2) the number of the cla.s.s and subcla.s.s in which it is to be cross-referenced.

(15) Should new subcla.s.ses be formed or transfers of patents be determined on, and lists of the patents, instead of copies thereof, be furnished clerks for the purpose of making such subcla.s.ses and transfers and correcting the official indexes and other records, each patent should be listed by number in column to the left of a sheet of paper or notebook, and opposite each patent number on the same sheet should be written (1) the number of the cla.s.s and subcla.s.s in which it is officially cla.s.sified; (2) the number of the cla.s.s and subcla.s.s to which it is intended to transfer it; and (3) the numbers of the cla.s.ses and subcla.s.ses, preceded by X, into which it is intended to cross-reference it.

Note: Even though examiners engaged in recla.s.sifying are confident of their ability to cla.s.sify and arrange on better principles than those that have been applied thus far in the cla.s.sification, they ought, nevertheless, to follow those principles under which one-half of the patents have been cla.s.sified. Until the Commissioner of Patents orders examiners to cla.s.sify on other principles, it is expected they will follow those now established.