to run a gristmill, the accident of its use as a part of a
gristmill would hardly warrant the definition of a
steam-engine as a means to grind corn. Nor would a hammer
be properly defined as an instrument to drive nails or to
crack nuts or to forge horseshoes, even though a patent
should not mention any use other than one of these and
should lay heavy emphasis on the special value of the
hammer as a nut cracker, nail driver, etc.
(15) In those cases where the title is so obvious that definition is
superfluous, explanatory notes may be substituted and will usually be
found helpful.
CROSS-REFERENCES AND SEARCH-NOTES.
(16) Inasmuch as nearly every patent discloses unclaimed matter that is
classifiable separately from the claimed matter, it is clearly
impossible to cross-reference every disclosure of every means in every
patent. Many things must be taken as conventional, obvious, or well
known, and the good judgment of the classifier is bound to be exercised
in cross-referencing matter disclosed but not claimed to be the
invention of the patentee.
(17) A mere part or element should rarely be cross-referenced from an
element class to a superior combination class. An element forming part
of a combination in a superior class should, if claimed, be
cross-referenced to the element class and also if not claimed if it
seems to be not merely a conventional form, and patents having claims
for more than one differently classifiable invention should always be
cross-referenced unless such an arrangement of subclasses with
search-notes is substituted as will guide the searcher to all places
where the material may be found. Claimed matter additional to that which
controls the classification, if belonging in the same class, should be
cross-referenced into a _succeeding_ subclass. Cross-references of
unclaimed disclosure may be in either direction.
(18) To supplement or take the place of cross-referencing, more or less
elaborate search-notes are needed, giving directions and suggestions for
further search, setting out the relationship between classes and
subclasses, and drawing distinctions by example. Search-notes should
indicate other classes or subclasses in which the subject-matter of the
group to which the search-notes are appended is likely to form a part of
a more intensive combination, also analogous matter that might serve as
a reference for a broad claim. They need not, in general, indicate where
parts or elements of the subject-matter which are common also to other
classes can be found, because the index of classes contains the
necessary information. For example, it is not necessary in every
machine-class to indicate by search-notes where machine-elements and
static parts may be found, nor in a class of wooden boxes to point out
where the nails, screws, hinges, or locks that may form a part of the
box are classified.
DIAGNOSIS TO DETERMINE CLASSIFICATION.
(19) Inasmuch as nearly every patent contains disclosure that is
claimed and also disclosure that is not claimed, it has been deemed
advisable to establish the general rule that where the claimed and
unclaimed disclosures are classified in different classes or subclasses
the invention both disclosed and claimed shall determine the placing of
a patent (or a pending application) rather than any selected invention
that may be disclosed but not claimed. "Not claimed" covers means that
may form an element only of a claim as well as means not referred to in
any claim. (See exceptions in Rules 21 to 22 inclusive.)
Example: A patent discloses and claims a dash-pot but
illustrates it in such relation to a metal-planing machine
as to utilize it for checking the movement of the bed at
one end of its path, or in connection with an electric
generator to aid in effecting the brush adjustment; the
patent should be classified in the subclass of Dash-pots.
If the classifier finds the disclosed organization of
dash-pots and planer or dash-pot and generator more than a
conventional illustration of an obvious use, he should note
a cross-reference to Planers or Electricity, Generation. A
patent discloses an internal-combustion engine associated
with a specific form of carbureter; the claims relate to
the engine parts only; the class of Internal-Combustion
Engines should receive the patent, and a cross-reference
should be placed in Carbureters. A patent discloses and
specifically claims the combination of a rail-joint
comprising abutting rails, fishplates, and specific bolts;
the patent goes to an appropriate class of rail-joints, and
if the bolt is more than a mere obvious conventional bolt,
a cross-reference should be noted for the appropriate
subclass of Bolts.
(20) The totality of the claimed invention should be selected when
possible to determine the appropriate class in which to place a patent.
The entire expression of the invention will usually be set forth in the
most relatively intensive claim.[1] In a properly drawn patent there is
at least one claim that will serve as a mark to indicate the
classification of that patent.
(21) 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. This avoids the need of a cross reference into the
combination subclass, and a lack of a copy in the detail subclass is
immaterial, as it is seen in the completion of the search through the
combination subclass. (See Rule 19.)
Example: A patent for a saw-making machine discloses
dressing, jointing, and gaging mechanisms; it claims
dressing and jointing only. There is a subclass for
dressing, jointing, and gaging, and a subclass for dressing
and jointing. In this case the patent may be placed in the
first-mentioned subclass, as that must be searched always
when the second-mentioned one is searched, cross
referencing in this situation being of little value.
(22) Where a subclass with a generic title has indented thereunder a
species type-subclass bearing the title of the generic subclass
qualified by a difference, any patent which claims an invention falling
within the genus subclass and discloses the qualification of the species
type-subclass should be classified in the latter whether or not the
entire disclosure is claimed. (See Rule 19.)
Example:
Class 29.--METAL WORKING.
Machine chucks and tool sockets--
Cam closing--
126. Scroll--
127. Bevel pinion or ring.
If a patent claimed only the scroll of a scroll-chuck, but
disclosed it in connection with a bevel pinion and ring, it
should be classified in subclass 127, Bevel pinion and
ring, and not in subclass 126, Scroll, although if there
were no disclosure of the bevel pinion and ring it would go
in subclass 126. Any search for scrolls must be prosecuted
through all subclasses that include "Scroll" in the title.
(23) 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. (See Rule 19.)
Example: A patent claiming a wheeled vehicle, broadly, in
combination with an internal-combustion engine comprising a
cylinder, a crank-case, a piston and suitably-connected
crank, a valve opening into the crank-case, and a valve in
the piston opening into the cylinder, may be advantageously
classified as an internal-combustion engine notwithstanding
the alleged invention is for a motor vehicle.
(24) 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. (See Rule 19.)
Example: 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.
(25) An alleged process of utilizing a specifically-defined composition
or material which consists in merely applying it to the use it was
designed for may be classified as a composition or material rather than
as a process. (See Rule 19.)
Example: A process of painting the bottom of a marine
vessel which consists in applying thereto a composition
consisting of sulphate of copper, powdered metallic zinc,
chlorid of antimony, and hyposulphite of soda, in a vehicle
of linseed oil, would be more usefully classified as an
antifouling paint than as a ship, as the invention would
hardly be distinguishable from a paint claimed as such and
described for use on submarine surfaces.
(26) An alleged process consisting merely in the use of a
particularly-defined machine or similar instrument operating according
to its law of action will ordinarily be classified in the class or
subclass where the machine belongs. But if in addition to defining the
operation of a particular machine the claim also specifies acts not
performed by the machine, the classification should be in the class or
subclass in which the process belongs. (See Rule 19.)
Example: Thus a claim for a method of rolling an iron plate
which consists in passing an iron blank between a pair of
rolls arranged horizontally in juxtaposition one above the
other and geared together so as to rotate in opposite
directions, and causing an idle roll supported in bearings
on the roll-housings to bear against the central portion of
the surface of one of the first pair of rolls on the upper
side thereof, should be classified as a rolling-mill, while
if to that claim were added the steps of doubling the sheet
after one passage between the rolls, again passing between
the rolls, again doubling, and then passing the now
four-ply pack between the rolls sidewise or turned 90 per
cent to the direction in which it had previously been fed,
the classification should be with processes of sheet-metal
manufacture.
(27) 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. (1) Where
different main classes are involved, the patent will be classified by
the most intensive invention, without regard to the statutory class to
which it belongs. (2) Where different subclasses of the same class are
involved, the patent will be classified in that one of the several
subclasses defined to receive the several inventions which stands
highest in the schedule of subclasses.
(28) Where a patent contains claims for all or a plurality less than all
of the statutory classes, the general rule of preference or superiority
of the several classes of subclasses is that represented by the
following order, to wit: (1) Machine (or other operative instrument);
(2) Art; (3) Manufacture; (4) Composition of matter. This order is, in a
general way, the order of intensiveness of the several kinds of
invention. (See Rules 29-35.)
Example: An automatic screw-machine, peculiarly adapted to
carry out a process of making a novel form of machine-screw
out of a new iron alloy, and having a claim to the machine,
to the process, to the screw, and to the alloy, would be
assigned to Metal-Working, Combined machines, and, if all
claims were allowed, cross-referenced to Bolt and
rivet-making processes, to Bolts, and to Alloys. If the
claim to any one or two of the subjects were eliminated,
the order of preference or superiority and the order of
cross-referencing would remain the same.
(29) Patents containing a plurality of claims for several different
statutory kinds of invention that are classifiable in different main
classes, and wherein the rule of relative intensiveness varies from the
order Machine, Art, Manufacture, and Composition of matter, may be
diagnosed and classified as directed in the following paragraphs (30 to
35).
(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 classification. (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 glass 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 classification; 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 buttonhook for buttoning 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 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.
(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 glass to form a convex lens, heating another piece
of glass 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 glass weld-united, would be classified in
Glass-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 classified 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 class of products, the product will be adopted
as the basis of classification, and classification will be in the
appropriate product class. (See Rule 28.)
Example: 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.
(34) Where a patent claims a process of making a composition of matter,
and also the composition of matter, the claims will be classified in
general in accordance with the classification 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 assemblage 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 mass, would
be classified 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 classification. (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 shellac, 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 classification 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
classification 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 relationship, and the
terms intensive and extensive do not have the relative significance most
useful in classification. 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 classification.
(D) PROCEDURE IN RECLASSIFYING WITHIN EXAMINING DIVISIONS.
(1) Do not start to make a new class 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_ classification but discover and assemble all the
facts and from them make your inductions. Then the common
characteristics of the subject-matter of the class may be intelligently
defined, the limitations of the class marked out, and its relation to
other classes set forth. Bear in mind that the Patent Office
classification deals with the subject-matter of the useful arts rather
than merely with existing classes, and that it is not therefore
essential to retain classes that are found to be composed of unrelated
or too distantly related units.
Assuming that the work of reclassification is undertaken by examiners
who are already experienced in the subject-matter to be classified,
procedure as follows is recommended:
(2) Utilizing your previously acquired knowledge of the patents in the
class you are about to revise, subdivide the existing subclasses into
bundles, so as to assemble in each bundle those patents deemed to have
the closest resemblance to each other. For the purpose of this
assemblage, 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 classified either as a decanter, an
electrolytic apparatus, or a filter, but should be
classified 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
classified merely as a rotary printing-press, a folding
machine, or a wrapping machine, but should be classified 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
assembled 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 subclass is analogous to matter in other subclasses
of the same class or in other classes, 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 subclasses containing analogous 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 subclasses, either in the same
or different classes, into which those details may be collected, either
classified therein originally or by cross-reference.
Example: Assuming that the combination of press, folder,
and wrapping mechanism, referred to in a preceding
paragraph is to be classified in a class of Printing, on
the entirety as a combination having the function of
printing, plus other functions, and that folding and also
wrapping are separately classified, then the particular
type of press should be selected to be cross-referenced
into a press-type subclass of the class of Printing, such
as "Presses, rotary," while the folding mechanism and the
wrapping mechanism would be noted for cross-reference to
other appropriate classes. Also, any part of the printing
press, such as the inking mechanism, specifically
described, should be noted for cross-reference into a
subclass of Printing designed to receive the inking
mechanism as a part of the printing press.