Chapter II: Part D: is intended to inform examiners reclassifying within examining (2)

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Definition is indispensable in any classification and is very difficult. Every class must be defined and all of the groups under it. After definitions have been made and printed, they are sometimes found inadequate and must be supplemented by the definitions of other classes. This is unavoidable while the complete material remains unexplored. Definition in the strict logical sense is not to be expected, nor is it necessary. It is commonly sufficient if an explanation or comparison be made sufficient to direct the mind to the character of the contents of the group and indicate its limitations. Hitherto four of the five predicables of ancient logic have been mentioned, to wit, genus, species, property, and accident. In connection with definition, the fifth predicable, difference, is useful. To define a class, it is sufficient, generally, for the purposes of office classification, to state a _peculiar property_ (not an accident) of the objects included in the class; and to define a species under the class it is sufficient to state the name of the class plus the difference--i. e., with the addition of the limitations that characterize the species.[11] This procedure in definition is susceptible of application from the highest genus to the lowest species. It is advisable to define the means included within a title without any introductory words, such as "this subclass includes inventions relating to," etc., treating the subclass for definition purposes as if it were a collection of concrete things, in the same manner as in a dictionary definition.

CROSS-REFERENCES AND SEARCH-NOTES.[12]

If patents were in all respects like material objects, cross-references and search-notes would not be necessary. Nails, screws, locks, hinges, and boxes are distinct things susceptible of definite separation and classification. Even though nails, screws, locks, and hinges form part of the box, the box is still a box, not a nail, screw, hinge, or lock. For the needs of the Patent Office classification, however, although a patent for a box must be classified with boxes, yet if a peculiar nail, screw, lock, or hinge is claimed in the same patent with the box, or even if any one of these customary accessories of boxes is illustrated, it may be necessary to provide copies of the patent for the box in each of the several classes provided for nails, screws, locks, or hinges.

Inasmuch as every relatively complex thing is made up of relatively simple things, it is obvious that all disclosures can not be cross-referenced. Any attempt to calculate the number of cross-references to be supplied if all disclosures of the subjects of invention were to be cross-referenced would show the number to be incalculable. It is necessary, therefore, to leave to the judgment of the classifier the propriety of cross-referencing unclaimed disclosures.

Should a patent contain a number of claims defining a number of differently classifiable inventions, complete cross-referencing from the class in which the classification is made original into the other appropriate classes or subclasses should be effected, _unless_ cross-search notes or arrangement of subclasses with appropriate titles may be substituted to advantage.

Cross-referencing or cross-search notes are made, as a rule, from combination class to element class, but never or very rarely from the element class to the combination class in which it may be used. Thus cross-referencing should normally be downward in a schedule of subclasses. Search notes indicate parallel or otherwise related classes and subclasses, and those classes and subclasses in which analogous structures having different purposes but adapted to answer broad claims may be found.

By arbitrary rules of arrangement such as have been referred to in the section dealing with division and arrangement, a search may ordinarily be definitely limited to a certain number of subclasses, even where cross-references are not made. In such arrangement any given patent, _if it be directed to one invention_, may be searched in the subclass within which the definition places it or subclasses indented under it, and in certain subclasses above, whose titles will indicate that the invention might be included as a part of the matter defined to belong therein, but it would never have to be searched in any subclass following and not indented thereunder.

DIAGNOSIS TO DETERMINE CLASSIFICATION.

Each patent and each application discloses one or more means of the useful arts (using the term "means" to cover both processes and instruments in the sense in which it is used by Prof. Robinson), almost always more than one, since most new means are combinations of mechanical elements or acts. In some patents and applications the disclosure is coextensive with that which is claimed; in others there is matter disclosed but not claimed. The unclaimed disclosure may be as valuable as the claimed disclosure for purposes of anticipation, and the classification must provide for both. If the claimed disclosure belongs in one class and the unclaimed in others, the classifier must choose between two or more classes that one in which the patent or application shall be classified and those into which it shall be cross-referenced.

_Claimed or unclaimed disclosure._--The claims of a patent are the statutory indices of that which the applicant believes to be new, they define an invention that has been searched by the Patent Office and no anticipation discovered for it. Future action must be based on inductions from past experience; none knows what the future lines of search will be; the only guides for future searches are the searches of the past; the evidence of past searches is the claims of patents; they trace the course of invention. Furthermore, a presumption of novelty attaches to the claimed matter; no such presumption attaches to the unclaimed. The law requires every patent for improvement to show so much of the old as is necessary to explain the uses of the improvement. In practice much more than that is disclosed. Questions as to the proper placing of patents and cross-references would be diminished by the strict enforcement of Rule 36 of the Rules of Practice requiring that the description and the drawings, as well as the claims, be confined to the specific improvement and such parts as necessarily cooeperate with it. In any event both the claimed disclosure and that which is unclaimed must be taken care of, one by cross-reference, and the disclosure selected for cross-reference is that to which no presumption of novelty attaches.

This practice of placing patents by the claimed disclosure is sometimes misunderstood. Its chief application is in determining classification in case of disclosures involving a plurality of main classes. Furthermore, the mere letter of the rule is not to be applied in preference to its spirit. Subcombinations claimed may be placed with the combinations, and in subordinate type subclasses patents must be placed sometimes by claimed and sometimes by not-claimed disclosures.

_Diagnosis of pending applications._--What has been said relates to patents. The bearing of the practice of adopting the claimed disclosure as the basis of assignment of applications for examination has also to be considered.

Two pending applications claiming the same means very commonly differ in the kind and extent of disclosure. One application may disclose several inventions. Which of the several disclosures shall be selected as the mark by which to place the application? For instance, the typical wire-nail machine has a wire-feeding mechanism, a shearing mechanism, an upsetting (forging) mechanism, side-serrating mechanism, and pointing mechanism; it may also have a counting mechanism, a packaging mechanism, an electric motor on its frame for furnishing power; and, in addition, numerous power-transmitting and other machine parts, such as bearings, oil-cups, safety appliances, etc. The applicant may have made a complete new organization of nail-machine and may seek a patent for the total combination. He may have invented a new shearing mechanism and have chosen to show it thus elaborately in the place of use he had in mind, or he may have designed a new counter or a new oil-cup or a new power transmission, or even a new motor, and have given his invention this elaborate setting. The shears, the counter, the oil-cup, the power transmission, and the motor are separately classifiable in widely separated classes. How shall the application be diagnosed for determining its place in the office classification? When the 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. Suppose applicant No. 2 files an application for the same counter which he illustrates and describes in connection with a bottle-filling machine, and that, classifying on the totality of the showing, this goes to the division that has the class of packaging liquids. Now both the examiners in charge of bottle-filling and nail-making, knowing that counters are classified in registers, search the class of registers and also the pending applications in registers. After these examiners have made their searches, suppose applicant No. 3 files an application for the same counter, which he says may be used for counting small articles produced by automatic machines. Perhaps he shows the counter attached to a piece of conventional mechanism representing any manufacturing machine, mentioning, say, a cigarette or pill or cartridge-making machine. It has not occurred to either the the examiner of nail-making or the examiner of bottle-filling that the other might have any such application; nor does it occur to the examiner in charge of registers to search nail-making or bottle-filling. As the specification of the counter application mentions cigarette, pill, and cartridge-making machines to which the counter may be attached, the examiner in charge of registers may search those classes. Suppose that the counter proves to be new, and each of the three examiners allows a patent. Here now are three patents for the same thing. Of course, after allowance, the counter and all other disclosed inventions that give any suggestion of novelty are cross-referenced; but the primary purpose of a patent office classification (to aid in determining patentability) has failed in this instance.

In the imagined situation respecting pending applications, without doubt diagnosis and classification upon the invention claimed is necessary to effect the purpose of the office classification. Cross-referencing after issue can not undo that which has been done.

If no application save that of the nail-machine be pending, no duplication of patents occurs, but the labor of search is increased by reason of the unfamiliarity of the examiner with the inventions he has to search. After the patent is allowed he may find the entire combination of the nail-machine without the counter disclosed in a patent for a nail-making machine, so that as a nail-making machine this new patent is of no value as a reference. Very probably all of the other inventions illustrated (except the counter) are also old in their respective classes; but the examiner of nail-making can not tell this without extensive searches in those classes, so he notes cross-references for them all.

_Difficulties due to varying ideas of claims._--Very troublesome questions are constantly arising as to whether an invention should be classified in a combination class or an element class. The point will be illustrated by example: A describes and illustrates an automobile having an internal-combustion motor and a friction-clutch in the motor transmission-gear. He states that the clutch is in the usual relationship to the motor and gearing, but claims a new clutch for whatever it may be adapted. B discloses an internal-combustion motor said to be for automobiles with transmission-gearing and a friction-clutch and claims "in an internal-combustion motor a friction-clutch," etc., specifying the form of the clutch. C makes the same disclosure, but claims "an internal-combustion motor having a specified clutch," while D, with the same disclosure, claims "the combination with the internal-combustion engine of an automobile" of a specified friction-clutch. E claims and illustrates only the friction-clutch. Should these be classified together? If so, in what class? Should a bearing composed of a specified alloy of copper, tin, and antimony, be classed as a bearing or as an alloy? Should a house painted with a mixture of linseed oil, lead oxid, and barium sulphate go to buildings or coating compositions? A lamp-filament of titanium and zirconium with electric lamps or with alloys? A building-block of cement, lime, sand, and carborundum, with building-blocks or plastic compositions? Whether these be diagnosed as combinations or as elements and compositions respectively, and classified accordingly, criticism will be aroused. The point in view is that although principles of patentability must be considered in a classification designed as an instrument to aid in determining patentability, convenience and accuracy of search and avoidance of voluminous cross-referencing may necessitate some arbitrary rule of classification to meet various and changing theories applied to the drafting and allowance of claims.

From the foregoing it will be evident that classification involves orderly logical processes of induction (supplemented by hypothesis), of definition and of deduction. After gathering a large number of facts generalizations are made from them and a hypothesis is found to be confirmed or modified by more extended research; the divisions are then defined; by correct diagnosis of other instances (as other patents) deductions may be drawn respecting the appropriate place for them in the classification.

[1] An "art," in the sense of a single unitary invention, is a synonym of process, method, and operation. The term "art" is ambiguous in popular usage. In the phrase "useful arts" in the Constitution, it denotes the area of endeavor to which the patent laws apply. When the word "art" is used to specify some fragment of the useful arts, it commonly raises different notions in different minds. It may be correctly used to designate _any_ division of the useful arts. It is as proper to speak of the art of grinding or the art of molding as of the art of metal-working or the art of brickmaking.

[2] A "use" is an application of a means to substance to produce an effect which may or may not be the necessary effect of the means in its normal operation. A catalytic may be used to ignite gas or to convert oleins into stearines. An ice pick may be used to hold a chalk line or prick holes in leather, etc.

[3] By "natural law" in the useful arts is meant that uniformity of action which is manifested whenever any particular substance in any particular condition is brought into such relation with any particular manifestation of energy that the force exerted modifies or prevents modification of the form, nature, condition, or locus of the substance or modifies the manifestation of energy or both.

[4] A "property" may be described as any quality common and essential to the whole of a class but not necessary to mark out that class from other classes. Thus, all wheel tires may be said to possess annularity; but washers and finger rings are also annular. A "peculiar property" is one that not only always belongs to a class of objects but belongs to that class alone; thus a circle has the peculiar property of containing the greatest space within a line of given length, and catalytic substances have the power of setting up chemical reaction without themselves being changed.

[5] An "accident" is any quality that may indifferently belong or not belong to a class without affecting the other qualities of the class. That a man's name is James is an accident telling nothing of the man's physique or character.

[6] "Effect" or "result" is the consequence of a process of the useful arts practiced with or without instruments. The effect of an instrument is the effect of its operation. Effects may be direct or indirect, proximate or remote, necessary or accidental.

"Product" is an effect consequent upon a process that changes the form, state, or ingredients of matter perceptibly and permanently, as distinguished from effects that are fleeting or involve no change in perceptible form, state, or ingredients of matter.

"Function" is the "action of means upon an object while producing the effect." (Robinson.) Functions may be direct or indirect, proximate or remote, necessary or accidental. The direct, proximate, or necessary function of the hammer in normal operation is impacting. Indirect, remote, or accidental functions of a hammer may be comminuting, forging, driving, etc.

[7] Classification of the Sciences.

[8] Logical division is the process by which the species of which a genus is composed are distinguished and set apart. Physical division or partition is the process by which the parts of any object are distinguished and set apart. Metaphysical division is the process by which the qualities of a thing are segregated and set apart in thought.

[9] 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.

A "species" is any class that is regarded as forming a part of the next larger class, "electric motors" being a species of "motors" and "motors" being a species of "energy transformers." A species is more intensive than the genus to which it belongs but less extensive.

Every species may be a genus to another species until no further subdivisions can be made. This last indivisible species is termed the _infima species_. Every genus may be a species to another genus until a point is reached where no further generalization may be made or the _summum genus_ is attained. In the Patent Office classification of the useful arts, the _summum genus_ is useful arts. The _summum genus_ of the plastic arts would be plastics. The _infima species_ in the useful arts evidently never can be attained.

"Proximate species" and "proximate genus" indicate, respectively, those species that are divided from a genus without intermediate genera, and those genera from which the species are directly divided. Motors, and not energy transformers, is the proximate genus to the species, fluid motors, electric motors, etc., while fluid motors, electric motors, etc., and not steam engines, alternating current motors, etc., are proximate species to motors.

[10] In the Manual of Classification of the U. S. Patent Office the arrangement of subclasses has always been alphabetical, although in the Supplement containing definitions of revised classes the arrangement is numerical. If the latter schedule of "Balls" in the text had been printed in alphabetical order, it is apparent that the species "Aluminum" and "Zinc" of the genus Metal would be as widely separated as possible. In the former schedule of "Balls," in which the genus Metal is printed, "Aluminum" and "Zinc" come together. It is apparent that in an alphabetical arrangement allied species can not be kept together without printing every proximate genus. This fact, among others, indicates the advisability of abandoning the alphabetical arrangement in the classification manual and adopting the idea arrangement in the schedules of revised classes, supplemented by a consolidated alphabetical index of all subclasses.

[11] A species contains all the qualities of the genus and more. These additional qualities form the "difference." The electric motor has the qualities that are common to motors and is differentiated by reason of the fact that electric energy is thereby converted to mechanical motion.

[12] Classification of a patent is said to be "original" in the class and subclass which receives the most intensive claimed disclosure, and in which the patent is indexed in the official classification indexes. "Original classification" is referred to as opposed to "classification by cross-reference."

A "cross-reference" is a copy of a patent placed in a subclass other than that in which the classification is made original, in order to make available for search inventions disclosed therein and additional to that by which the patent has been diagnosed and classified.

A "digest cross-reference" is a cross-reference formed from abstracts or extracts from a patent consisting of illustration and text cut from a photolithograph of a patent and mounted.

A "search-card" is a sheet of the size of a photolithograph of a patent placed with the photolithographs of patents forming a subclass in the examining division and public search room, and containing suggestions for further search, and on the copy for the search room, a definition of the subclass.

"Search notes" are addenda to class and subclass definitions comparing other classes and subclasses with the one defined and giving directions for search when necessary to prosecute search beyond the defined class or subclass.

BASIS OF CLASSIFICATION.

(1) The basis of subdivision and assemblage of the means of the "useful arts" in the Patent Office classification is "art" within the meaning of "art" in section 4886, Revised Statutes. The direct, proximate or necessary art, operation or effect, rather than some accidental and remote use or application, should be selected. In all cases qualities or characteristics that persist through all accidental uses and that can be identified as permanent are to be preferred.

(2) The operative, instrumental, or manipulative arts, including machines, tools, and manufacturing processes, should be classified according to whether a single operation of one kind applicable to various materials to be used for various purposes is carried out by the claimed means, or whether plural operations are performed, which, combined, produce a special effect or special product.

Example: An instrument performing a plurality of operations
peculiar to shoe-manufacture would be classified on the
basis of shoemaking, because that instrument would be
incapable of other use, while an instrument peculiarly
adapted to drive nails would be classified on the basis of
nailing, whether for nailing shoe-heels or other objects,
and a hammer would be classified on the basis of its
function as an impact tool even though described as for
driving nails, and even into shoe-heels.

(3) Structures (passive instruments) will, in general, be classified on the basis of structure, either of special or general application, the essential functions and effects of static structures being resistive or the maintaining of forces in equilibrium.

Example: A structure recognized as peculiar to barriers of
the kind known as fences would be classified in the special
class of Fences, but posts, joints, beams, etc., recognized
as having use in general building, even though described as
used in fences, would be classified in a more general
building class, such as Wooden Buildings or Metallic
Building Structures.

(4) Compositions of matter and manufactured or formed stock or materials will be classified in accordance with the inherent character of the substance or material where possible, otherwise according to special use.

Example: 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. Also a
bimetallic layered foil, plate, or wire would be expected
to be classified as metal stock even though designed for
use for dental filler, plowshare, or electric conductor,
and a woven textile fabric as a fabric even though
described as used for a filter or apron for a paper-making
machine.

DIVISION AND ARRANGEMENT.

(5) 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.

(6) A second rule respecting the subdivision of a class is: "The constituent species must exclude each other." That is, the divisions or subclasses must not overlap. (See exception in Rule 8.)

Example: If a number of balls of several different
materials, several different conformations, or
constructions, several different colors, were to be divided
into glass balls, hollow balls, and red balls, this rule
would be violated, because some balls would be glass,
hollow, and red.

(7) A third rule respecting subdivision is: "The divisions must be founded on one principle or basis." The application of this rule will generally form divisions that do not overlap. (See exception in Rule 8.)

Example: If a number of balls of several different
constructions, several different materials, and several
different colors were to be classified so as to provide a
place for each kind of characteristic, they should be
divided first, for example, according to construction into
hollow balls and solid balls, each of these according to
materials into glass balls, rubber balls, metal balls,
wooden balls, etc., and each of the latter into red balls,
blue balls, green balls, etc.

(8) When it is found that division into overlapping subclasses and on different characteristics is a lesser evil than an unwieldy number of subclasses that would otherwise result, then those subclasses based on characteristics deemed more important for purposes of search should precede in the list of subclasses those based upon characteristics deemed less important. (See Rule 6.)

(9) In arrangement of subclasses or subdivisions the miscellaneous groups containing material not falling within any of the specifically entitled subclasses, should stand first; those subclasses defined by effect or special use should precede those defined by function or general use; those containing matter that is related to the matter of other subclasses as whole to part should precede those subclasses that contain the part; and those defined by a characteristic deemed more important or significant for search purposes should precede those defined by characteristics deemed less important.

_Whenever superior rank has been assigned to any selected characteristic_ by placing divisions based upon it in advance of divisions based upon other characteristics, _this superiority should be maintained throughout_.

Example: A partial schedule of Class 80 follows to
illustrate the arrangement of subclasses:

Class 80.--METAL ROLLING.

In this schedule the miscellaneous subclass is numbered 1,
then follow three subclasses (2-4) of rolling plus another
function, then four major subclasses (5-16) of rolling,
merely, but applied to blanks of special form producing
special products, then one special subclass (17) based upon
a special class of material treated, then five subclasses
(18-31) specialized in type and mode of operation, then
general types of rolling mills (32-40), then various parts
and accessories (41-59), then processes (60-66). This is
the usual arrangement and is an exhaustive division for the
art of metal rolling. Had there been miscellaneous
subclasses for all combined operations of rolling plus some
other function, a miscellaneous subclass for all mere
rolling machines, either special or general, and a
miscellaneous subclass for all parts and accessories, the
requirements of exhaustive division would have been also
satisfied.

In the illustrative schedule, there being no miscellaneous
subclass for means having combined functions of rolling and
another, any patent having claims for the combination of a
means for rolling and a means for cooling would fall in
subclass 1, Miscellaneous. In that subclass would also fall
all "Mills," such as for rolling spiral conveyer-flights,
the same not falling under any of the subclasses 32-40, no
miscellaneous subclass of "Mills" and no special
article-rolling subclass having been provided; also all
parts or accessories, such as a water-cooled screen,
peculiarly adapted to rolling-mills, there being no
existing subclass of screens therein and no miscellaneous
subclass of parts. The arrangement of subclasses in Class
80 requires that the combination of a furnace and a
rolling-mill shall be placed in subclass 2, even if the
combination be designed and adapted for rolling annular
bodies (subclass 5) or tubes (subclass 11). Means special
to rolling a tube between a concave and roll must be placed
in subclass 13 rather than in subclass 18. A work-reversing
mill must be placed in subclass 33 rather than in subclass
34 even though it have three or more coacting rolls.

The rolling of "Screw-threads" having been given higher
rank than a "Concave and roll" mechanism, any concave and
roll mechanism limited for use in rolling screw-threads
should be formed into a subclass indented under
"Screw-threads" and not into a subclass "Screw-threads"
indented under "Concave and roll."

(10) Class schedules are arranged with certain subclasses appropriately indented according to a commonly understood expedient. In a properly indented schedule subclasses in column at the extreme left are the main species (the proximate species) of the class. The titles and definitions of all subclasses proximate to the class (at extreme left) must be read with the title and definition of the class, as if indented under the class title one space to the right; so also with the titles and definitions of subclasses indented under other subclasses. If a title has no number (as in Class 80, "Mills"), it represents merely a subject-matter to be divided, assumed to have no representatives other than those in the species indented under it. If a title having indented species under it has a number, it not only represents a subject to be divided but also a subclass including all other species not falling within the indented titles. Indention does not indicate superiority or inferiority, but merely that the title and the definition of the indented subclass must be read with the title and definition of the subclass under which it is indented. A title selected in a scheme of subdivision to be of first importance and placed, therefore, in advance, should not thereafter be indented under a title selected to be of secondary importance and, therefore, having a lower position. (See Rule 8.)

(11) A group of material may be divided on several different bases. "Use" or "purpose" or "object treated" may be adopted only when the "use" or "purpose" or "object treated" stamps upon the invention such peculiarities of operation or construction as to limit the applicability of the invention to the use or purpose named. (See Basis of Classification, Rule 1.) A group based upon mode of operation also may be divided into subclasses (1) with a "functional" title, usually participial in form, and adapted therefore to receive machines, processes, and tools; (2) with special use, purpose, or object-treated title containing the name of the use, purpose, or object; (3) with "type" title, usually a name or a name with a qualifying adjective; (4) with a title of a part or subcombination, also a name.

Example: In Class 90, Gear-Cutting, Milling, and Planing,
are to be found subclasses entitled "Gear-cutting," certain
machines being peculiar to that use; also other subclasses
with the general functional title "Planing," subordinate to
which are the special use subclass "Planing, Soft metal,"
and the type subclass "Planers" divided into two coordinate
subclasses, "Reciprocating bed" and "Reciprocating cutter,"
and several subordinate "part" subclasses, including
"Tool-feeds" and "Tool-heads." The adjective form of the
title "Planers, Reciprocating bed," indicates a type
subclass. If the title had been Planers, Reciprocating
beds, the indication would be that the subclass was a part
subclass to receive planer beds only. In the class referred
to for illustration, "Tool-feeds" and "Tool-heads" indicate
subclasses for parts and not for types of planers having
tool feeds.

(12) In arranging the divisions of a class, such arrangement should be sought as will minimize the need of cross-references. Search for any particular matter can not always be limited to one group without such extensive cross-referencing as would in some cases defeat the purpose of classification. 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.

Example: In Class 80, Metal-Rolling, it would not be
expected to find any tube-rolling mill lower in the
schedule than the tube-rolling subclasses, but a tube-mill
might be found higher up in "Heating and rolling," "Drawing
and rolling," etc. No concave and roll combination should
be found succeeding the subclass of "Concave and roll," but
it may be found under subclasses above, such as "Tubes,
Screw-threads," etc. No rolls should be found lower than
the subclass of "Rolls," but they may be found in many
subclasses above.

DEFINITION.

(13) Having some knowledge of the nature of the materials about to be classified, a tentative definition of a class to be formed may be framed, which may be either written down or merely carried in mind, to serve as a tentative guide. This tentative definition must be considered as subject to change to any extent by the fuller knowledge obtained by careful consideration of the material. After a full knowledge of the materials to be classified has been acquired, it will be necessary to frame a careful definition of the class, and also of each subclass whose title does not unequivocally indicate what is contained in it.

(14) A definition of any class should state the "qualities and circumstances possessed by all the objects that are intended to be included in the class and not possessed completely by any other objects." A proper definition should not ordinarily contain the name of the thing defined. "Definitions in a circle" are, of course, worthless. A definition should be exactly equivalent to the species defined and should not be expressed in obscure or ambiguous language, but should employ terms already defined or perfectly understood. It should not be in negative form where it can be affirmative. If the class of objects has a peculiar property, the naming of that may serve as a definition. If no peculiar property can be detected, the definition should name more than one quality or property. Several different classes may have one or more properties alike, but as the number is increased the likelihood of there being others having the same properties is decreased. The briefest possible statement of such properties or qualities as are possessed by all the objects of a class and not completely possessed by any other objects, which will suffice to distinguish the class from other classes and determine its position in the general classification, will be most satisfactory. To define any species, the genus having been defined, the genus should be named and the difference added. Of course, no generic definition should contain any limitation not characteristic of every species of the defined genus. In seeking qualities by which to describe a genus or species, no accident should be selected.

Example: 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. Then the definition will be:
Energy-transformers that are adapted to continuously
transform energy into cyclical mechanical motion. The
non-motor division will retain the genus definition.

It would not be illuminating for a searcher having little
familiarity with the textile arts to look under the title
"Carding" and find that carding is defined as a means for
carding fiber.

Even though the first steam-engine invented had been used
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.

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The Classification of PatentsChapter II: Part D: is intended to inform examiners reclassifying within examining (2)

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