United States. Patent Office

“ A zoological classification divides animals into vertebrate and not vertebrate. By continuing the process of division in the same manner, the division is obviously exhaustive of the subject, there being always a negative subdivision to receive any subsequently created or discovered species. Although bifurcate division has been ridiculed by some, it is agreed by highest authority that it is the only plan of division by which one can be sure to have a consistent place for everything, or by which one can be certain that the divisions are mutually exclusive. ”

“ Suppose there be marked out and defined as a genus all means whereby one form of energy is transformed into another form of energy and no more, and the genus be named energy-transformers. We may then name, as species, energy-transformers that are motors and energy-transformers that are not motors. Motors may be defined by merely naming the genus energy-transformers, and stating the difference, to wit, continuously transforming energy into cyclical mechanical motion. ”

“ But classifying a plow on its necessary function of plowing, a radiator on its necessary function of exchanging heat, a hammer on its necessary function of striking a blow, evidently results in getting very similar things together. Assuming for the moment that utility is a reasonable basis of division of the useful arts, it is deemed more logical to adopt as a basis some utility that must be effected by the means under consideration when put to its normal use rather than some utility that may be effected under some conditions. ”

“ Where, as in the case of patents that show and claim a combination that as matter of common knowledge is not new except in one of its elements, to classify a patent strictly in accordance with rule would result in placing the patent where it would serve no useful purpose as a reference and having to cross-reference it to a class where it would serve a useful purpose, it is best to classify the patent in the class to which the element would take it. ”

“ If a title has no number, it represents merely a subject-matter to be divided, a genus,—having no representatives except in the species under it. If a subclass having a generic title has a number, it not only represents a subject-matter to be divided into species but also all other species not falling within the titles indented. Although these relative positions might imply that only proximate species are indented one place, yet mechanical difficulties render it impracticable to so arrange that all species shall be indented under their proximate genera. ”

“ 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 classification. ”

“ The mere difference in complexity of mutually exclusive coordinate groups involves no relationship of superiority or inferiority. A subclass to receive a screw-cutting lathe is superior to a subclass to receive a lathe-headstock, a locomotive class is superior to a class to receive steam-engines, for the reason that the lathe is a whole of which the headstock is a part, and the locomotive is an organization of which the engine is an element. But the headstock subclass is not superior necessarily to the tailstock subclass simply because the headstock is commonly more complex than the tailstock. ”

“ Hence the functional basis is preferred in all cases in which it can be applied. A condenser for the fumes of zinc is much more like a condenser for the fumes of acid or the vapor of water than it is like the art of recovering zinc from its ores, and it employs only one principle, to wit, heat interchange. A water-jacket for cooling the walls of a gas-producer or glass-furnace is much more like a water-jacket for cooling the walls of a limekiln or steam-boiler furnace than it is like the art of gas-making or manufacture of glass articles. ”

“ INTRODUCTION. Classification lies at the foundation of the mental processes. Without the power of perceiving, recognizing resemblances, distinguishing differences in things, phenomena and notions, grouping them mentally according to those resemblances and differences, judgment is impossible, nor could reason be exercised in proceeding from the known to the unknown. ”

“ The first and most vital factor in any system of classification is the basis of division, that is, the kind of characteristics common to any number of objects selected to characterize groups, whereby the individuals of any group will resemble each other for the purpose in view more closely than any individual in any group will resemble any individual in any other group. ”

“ Forming the subdivisions of a class according to the total similarities of the inventions, rather than according to some selected more or less important characteristic, and arranging them in the correct order of superiority and inferiority, with care to maintain throughout the schedule the relative positional values of the several selected bases of division, will ordinarily in a closely bonded class limit the search for any single invention to the subclass particularly suited to receive it and some subclasses preceding that one, excluding from the necessity of search the subclasses succeeding. ”

“ As under the patent laws the people of the United States assume all the risks in granting a patent for any means of the "useful arts," a classification that will facilitate a judgment respecting the patentability of any means presented to the Patent Office is of peculiar moment. ”

“ Although a very large proportion of patents can be accurately classified as indicated by their titles and stated uses, the mere fact that in a patent found in a class the invention is called in the specification or claims by a name peculiar to the class is not of itself a reason for considering it peculiar to the class. 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. ”

“ Although it is evident that molding a button is more like molding a door-knob than it is like making buttons by the combined operations of sawing, grinding, turning, and drilling, wherefore the molding of buttons should be classified in a general plastic art rather than in a special button-making art, yet the making of buttons by a plurality of different kinds of operations can be placed only in a class based upon the product, to wit, button-making. ”

“ A purely 'structural' classification is almost impossible on account of the infinite variety of mechanical combinations, and to attempt it would probably result in utter confusion, for the classes could not be defined, and the classification would be a mere digest of mechanical elements having no community of function. ”

“ In the absence of settled rules defining permissible joinder of inventions, there may be in one patent claims for one or more or all of the classes of invention named in the statute, to wit, machine, art, manufacture, and composition of matter. There may also be claims to several more or less related inventions in the same statutory class of invention but each belonging to a different industrial art. ”

“ The divisions or subclasses of a class should be made exhaustive, i. e., they should be susceptible of receiving any future invention that may fall within the scope of the class. The rule as usually phrased is: "The constituent species must be equal, when added together, to the genus." Exhaustive division may be secured by maintaining always a residual or miscellaneous subclass. The miscellaneous subclass represents the remainder of the original undivided material undefined except as the class is defined and may be accurately treated as if it had the class title. ”

“ There is no property of objects which may not be taken, if we please, as the foundation for a classification or mental grouping of those objects, and in our first attempts we are likely to select for that purpose properties which are simple, easily conceived, and perceptible in a first view without any previous process of thought—but these classifications are seldom much adapted to the ends of that classification which is the subject of our present remarks. ”

“ 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 classification purposes should be made between comparable qualities. ”

“ A pure chemical is expected to be classified on the basis of its chemical structure and constituents, even though useful as a food, medicine, dyestuff, explosive, etc., and alloys on the basis of metallic composition, even though used for bearings, coins, tools, etc.; whereas a physical composition having no reason for existence except to function as a cleansing composition or a paint might have to be classified on the basis of its function as a detergent or a coating composition, respectively. ”

“ Where a patent contains claims to a process and a product, the process claims govern the classification in those cases where search among machines for making the product would have to be made, and such processes would be classifiable on the basis of the mode of operation, usually in the same class with machines for practicing such processes. ”

“ When one considers merely the number of forms of energy, the number of known substances and known mechanical elements, and attempts to figure possible combinations and permutations, it becomes apparent that the size of the numbers resulting is incomprehensible. Consider the possibilities of combination also of the enormously varied disclosures of patents. ”

“ In order to meet the situation respecting the classification of those patents that indiscriminately claim an article of manufacture defined only by the material of which it is made and those patents that claim those materials, leaving to the specification information regarding the designed uses, patents for articles defined only by their ingredients specifically set forth may be placed in the composition of matter or material class. ”

“ In a finely divided classification, printing of titles for all genera is not practicable; hence great care ought to be directed toward grouping species according to the principles of arrangement herein outlined, noting that whenever a change of basis is made, a new genus is implied, and that subclasses for all other species of the same genus under whatever name, must be brought into juxtaposition as if indented under the implied genus. ”

“ A patent having a claim for a cutter made of an alloy of iron, tungsten, and manganese would be classified with Alloys; a patent claiming a box made of paper composed of two layers united by a solution of asphaltum should go to the class of Laminated Fabric and Analogous Manufactures, rather than to paper boxes; and a patent for a house having its exterior coated with equal quantities by volume of carbonate of lead and oxid of barium suspended in a vehicle of linseed-oil would be classified as a paint rather than as a house. ”

“ Any class of objects may be called a "genus" if it be regarded as made up of two or more different kinds of objects or of two or more species. "Motors" is a genus when the class "Motors" is considered as divided into electric motors and nonelectric motors, or electric motors, spring motors, weight motors, current motors fluid pressure motors, etc. A genus is more extensive than any of its species but less intensive. ”

“ When thep. 24 specification and drawing disclose (as most of them do) several subjects matter of invention, though claiming only one, which of those several subjects matter shall control the classification?
The most natural procedure, at first thought, would be to classify on the totality of the showing, in which case the application for the nail-machine, supposed above, would be assigned to nail-making. But imagine the invention claimed by an applicant to be the counter. Then the examiner in charge of nail-making would have to search the class of registers with which he is not familiar. ”

“ Corresponding to the foregoing analysis the theory of Patent Office classification may be treated in five parts: (1) The principles on which the arts shall be divided (basis of classification) ; (2) subdivision and mechanical arrangement of groups; (3) definition; (4) cross-referencing and search-notes; (5) the choice of features by which a patent shall be assigned in the classification (diagnosis) . ”

“ It may be well to insert here an authoritative definition: "A scientific classification is a series of divisions so arranged as best to facilitate the complete and separate study of the several groups which are the result of the divisions as well as of the entire subject under investigation." ”

“ Where a patent discloses but does not claim a combination of proper scope to be classified in a combination subclass and claims merely a detail classified in a subclass lower in the schedule, both in the same class, if the subclasses are so related that the combination always involves the detail so that a search for the detail must necessarily be made in the combination subclass, the patent may be placed in the combination subclass. ”

“ A claim for a process of making a pencil consisting in assembling a core of graphite with a sheathing of wood, and attaching a cap of rubber-composition to one end, would be classified 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 class. ”