Frasch applied for a patent for an invention of a new and useful improvement in the art of making salt by evaporation of brine. He expressed his alleged invention in six claims, three of which were for the process of removing incrustation of calcium sulphate from brine-heating surfaces, and three of them were for an apparatus for use in the process.
At the time when the application was fired, rule 41 of the Patent Office did not permit the joinder of claims for process and claims for apparatus in one and the same application. The examiner required division between the process and apparatus claims, and refused to act upon the merits. An appeal was taken to the examiners in chief, but the examiner refused to forward it. A petition was then filed, asking the Commissioner of Patents to direct that the appeal be heard. The Commissioner held that the examiner was right in refusing to forward the appeal. From that decision appeal was taken to the court of appeals of the District, which held that it did not have jurisdiction to entertain it. Frasch then filed a petition in this court for a mandamus, directing the court of appeals to hear and determine the appeal, which petition was dismissed. Ex parte Frasch, 192 U.S. 566, 48 L. ed. 564, 24 Sup. Ct. Rep. 424.
But in United States ex rel. Steinmetz v. Allen, 192 U.S. 543, 48 L. ed. 555, 24 Sup. Ct. Rep. 416, it was held that rule 41, as applied by the Commissioner, was invalid, and that the remedy for his action was by mandamus in the supreme court of the District to compel the Commissioner to act. Accordingly the proceedings in the present case were resumed in the Patent Office, and the applicant asked the Commissioner to direct that the appeal theretofore taken to the examiners in chief be heard by them. The Commissioner granted this petition. The primary examiner furnished the required statement and a supplementary statement of the grounds of his decision requiring division. The examiners in chief affirmed the decision of the primary examiner, 'requiring a division of these claims for an art and for an independent machine used to perform the art;' one examiner in chief, dissenting, held that division should not be required. On appeal to the Commissioner, he affirmed the examiners in chief in part only; that is to say, he held that process claim No. 1 must be divided from the other process claims and the apparatus claims, but that process claims Nos. 2 and 3 and the apparatus claims Nos. 4, 5, and 6 might be joined in one application. Rehearing was denied, and an appeal was taken to the court of appeals for the District of Columbia, which affirmed the decision of the Commissioner of Patents, for reasons given at large in an opinion, and directed the clerk of the court to 'certify this opinion and proceedings in this court in the premises to the Commissioner of Patents, according to law.'
An appeal and a writ of error were allowed, the court stating through Mr. Chief Justice Shepard: 'We are inclined to the view that this case is not appealable to the Supreme Court of the United States, but, as the question has never been directly decided, so far as we are advised, we will grant the petition in order that the question of the right to appeal in such a case may be directly presented for the determination of the court of last resort.'
The record was filed January 25, 1907, and on February 4 a petition for certiorari.
Mr. Charles J. Hedrick for appellant and plaintiff in error:
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Solicitor General Hoyt for appellee and defendant in error.
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Mr. Chief Justice Fuller delivered the opinion of the court: