
    STEPHEN HULL vs. THE COMMISSIONER OF PATENTS.
    Mandamus.
    Powers and duties of the Commissioner of Patents.
    I. A favorable decision of an examiner or of the board of examiners-in-chief in the Patent-Office upon an application for a patent is not conclusive upon the Commissioner of Patents, and it does not follow thereupon that he has only the ministerial duty to perform of countersigning and sealing the patent.
    II. According to the organization of the Patent-Office, the question of patentability of an alleged invention is to be referred for examination first to one of the primary examiners. If his decision be unfavorable, the applicant has the right of appeal to the examiners-in-chief, and then, in case of unfavorable decisions, to the Commissioner, and to the supreme court of the District of Columbia.
    III. The statute nowhere prescribes the duties of examiners and their assistants. They are appointed upon nomination of the Commissioner, and their duties are such as he is authorized to prescribe under the 19th section of the patent act. (Sec. 483, Revised Statutes.)
    IV. The result of an examination is to be reported to the Commissioner, and if it should appear to him, upon inspection of the report, that the alleged invention is neither novel nor meritorious, he would be bound in duty, under section 31, not to issue the patent. (Sec. 4893, Revised Statutes.)
    V. If to decide that a claimant is justly entitled to a patent, and that his invention is sufficiently useful and important, be the office of examiners, then, by section 7 of the statute, it is made the duty of the Commissioner to superintend the performance of these duties by the examiners.
    VI. Under the 33d section of the act (sec. 4885, Revised Statutes) it is not the duty of examiners to pass and allow patents. It is the duty of the Commissioner alone, after the examination has been reported, to say whether the patent shall be allowed and passed.
    VII. The 52d section of the act contains an express recognition of power in the Commissioner to refuse patents, and an ex-parte bill in equity is given applicants as a remedy for such refusal. This section provides for a different class of cases from those which come before the Commissioner by appeal from the examiners under sections 47 and 48— cases in which the Commissioner may refuse patents after favorable decisions by his subordinates, by virtue of his general supervisory authority. (Secs. 4910, 4911, and 4915, Revised Statutes.)
    
      VIII. In that the 52d section supplies a remedy for a refusal of a patent by the Commissioner in such cases, it is decisive against the remedy by mandamus; for this writ will not issue where the .law furnishes any other adequate specific remedy.
    Cartter, Cb,. J., and MacArthur, J., dissenting.
    STATEMENT OP THE CASE.
    A motion is made in this matter for a mandamus, commanding the Commissioner of Patents to issue a patent to the relator, Stephen Hull. The facts upon which the application is based are stated in the petition and the return of the Commissioner to be that Stephen Hull, of Poughkeepsie, in the State of NewYorb, on or about the 1st day of March, 1869, filed in the United States Patent-Office an application for a patent for an improvement in harvesters, of which he believed himself the original and first inventor; that, said application having been twice rejected by the primary examiner, an appeal was taken to the board of examiners-in-chief, as provided by law. That, on or about the 28th of August following, notice having been received that the decision of the primary examiner had been overruled and the patent allowed, he paid into the Patent-Office the final fee of §20, which he considered was all that was necessary on his part to entitle him to the possession of the said patent; but the Commissioner of Patents directed the said patent to be withheld, and the case sent back to the board of examiners-in-chief for reconsideration, in view of certain decisions which had then been recently made by himself; that said board did proceed to reconsider their said .decision accordingly, but reaffirmed the same, and held that the patent should be allowed. Nevertheless, the said Commissioner still refused to allow the said patent to issue, and, on the 14th of April, 1870, made the following order: “ Further action in this case is suspended until the farther order of the Commissionerand no notice of the order was ever given to said Hull or his attorneys, nor was its existence known to either himself or them until within the past three months j and that the further order” here contemplated has never been made. He again applied to the present Commissioner of Patents, (Leggett,) requesting him to direct the patent to issue in accordance with the decision of the board of examiners in-chief above referred to. But the said Commissioner, after having fully considered said application, denied the request therein presented, mainly, as he (Hull) believes, on account of the length of time that had elapsed since the aforesaid order of April 14,1870, was made, and also on account of the rule that one Commissioner will not review and reverse the rulings of his predecessor, (Fisher,) the former incumbent.
    Believing that the facts above stated leave no discretion with the Commissioner of Patents; that under the circumstances of this case the law definitely prescribes this duty, which is the performance of a mere ministerial act, petitioner-asks that a writ of mandamus may issue, under the seal and authority of this honorable court, commanding the said Commissioner of Patents to issue said patent, or to show cause why he declines to do the same, or to do such other acts and things as his official duty shall require, and such as shall be in accordance with the general principles of jurisprudence that are applicable to such cases.
    The return of the Commissioner gives a history of the application of the petitioner from September 25,1856, when he filed his first application, down to April 14,1870, when the Commissioner (Fisher) placed the written order on file suspending further proceedings until his further order, but of which no notice was sent to Hull, although it is stated he had actual knowledge of such order. On February 11, 1874, relator moved Commissioner Leggett to issue the patent, which he declined to do, for the following reasons:
    “ First, my predecessor had evidently deliberately decided that a patent could not be granted, and under the practice in all the Departments, which, if not statutory, has the force of law, I am not at liberty to review his decision; and, second, the delay of nearly four years between the last action of my predecessor and the filing of the present request for reconsideration works abandonment under existing statutes.
    “Upon an examination of the merits of the case, I am inclined to the belief that there are no equities in the case that should lead to any forced construction of the statute in favor of the applicant.”
    
      The Commissioner, in his return, resists the application for the writ of mandamus upon the following grounds:
    “ The respondent denies that, upon the facts of the case, his predecessor was left nothing but a mere ministerial act to perform, viz, to deliver the patent; or that he, as successor, is left in that position; and he says that, inasmuch as a patent never was executed, there remains still a judicial discretion to be exercised by him, in determining whether or not all the conditions prescribed by law were complied with in every respect, so as to authorize him to lawfully execute and deliver the patent.
    “ He denies that the decision of the board of examiners-in-chief, upon the single point appealed to them from the primary examiner, concluded him upon that point, or upon other points which the law makes conditions precedent to the grant of patents, and charges him with the duty of determining.
    “ He denies that the writ of mandamus should issue from the honorable court, as petitioned for, to compel him to execute and deliver the patent sought by the relator previous to a regular appeal to the court and an adjudication in his-favor, as provided for in the forty-eighth and fiftieth sections of the patent act, and says that such a remedy, if ever available before the complete execution of a patent, is now barred in this case by the delay of the relator in invoking it.”
    The principal question to be determined upon this state of facts is, whether the court will require the Commissioner of Patents to issue a patent where the board of examiners-in-chief have twice decided in favor of the applicant.
    
      Charles Mason for the relator:
    A board of examiners-in-chief was created by the law of 1870, who were to be appointed by the President and Senate, and were “to be composed of persons of competent legal knowledge and scientific ability.” They were to review, on appeal, the decisions of the primary examiners, and all this “for the purpose of securing greater uniformity of action in the grant and refusal of letters-patent.” This wholly changed the relation of the Commissioner to the office in regard to the examiners. Instead of vesting all discretion on this subject in him, a series of tribunals were created, of which he formed one.
    Original jurisdiction was given to the primary examiner and not to the Commissioner, and all the other tribunals were appellate. All their acts were now judicial in form, as they had before been in substance, and the Commissioner could not interpose until the case came to him on appeal.
    This conclusion is fully justified by the decision of Judge Dunlop in the case of Snowden vs. Pierce. A judicial system was thus introduced into the Patent-Office, so far as related to its action upon the question of patentability or upon an issue of priority of invention, both of which are purely judicial subjects. On questions of administration the Commissioner is still the controlling head of the office. But in his judicial capacity he is one of a series of appellate tribunals, with no right to control those below him further than has been already stated. It would be simply rediculous to appeal to the Commissioner from his own decisions, expressed through bis own subordinates, who were implicitly bound to obey his instructions.
    An appeal implies an independent power superior to that appealed from. Would it not be worse than child’s play to require a party to pay twenty dollars for an appeal to the Commissioner from a decision that he himself had directed to be made t It would not even have the ground of an appeal from Philip drunk to Philip sober. In confirmation of the views now expressed, I refer the court to the 46th, 47th, and 48th sections of the act of July 8,1870.
    It should also be remembered that the board of examiners-in-chief was created to secure greater uniformity of action. How is this end to be accomplished, if they are merely instruments of the Commissioner, and subject to his will in all things. They are to be learned in the law, while he is not required to be so j and sometimes, as in the case of the present Commissioner, is not so in fact. Does ignorance tend to uniformity 1 Not through reason, certainly; if at all, it can only be through obstinacy, and not through principle.
    Another reason which shows that the examiners-in-chief were intended to be an independent tribunal, except through the medium of the appeal, as provided by law, is drawn from the fact that they are -not appointed by the Commissioner, nor even through his nomination. They derive their official existence through the same source from which he derives his. In practice, too, they are much more permanent than he. His is regarded as a political appointment, while theirs is not. There is no probability that a change in the administration of the Federal Government would work the same change, in regard to their condition, as it would in regard to his.
    It is true an appeal lies to him from their decision, but there is a superior judicial tribunal that can correct' any errors that he shall make. The system would be more congruous if he were left out, and if the appeal were made directly from the board to the supreme court; but though he may create inconvenience by his caprices or want of information, still there isa permanent judicial tribunal that can apply thé proper corrective to his eccentricities or his mistakes.
    But whatever may be thought of the system created by the act of 1861, there certainly can be none in regard to its modification through the act of 1870. The transactions which accompanied its adoption in the House of Representatives, where it originated, and where it received its entire constitution upon the point we are now considering, leaves no doubt on this subject. (See Congressional Globe for 1869-’70, part 4, page 2855.)
    But it may be said, on behalf of the respondent, that a law must be construed by its own language, and by that alone. This is the rule where no doubt is left as to its meaning. But we often have to resort to outside circumstances to ascertain that meaning. The great question to be settled is, what did the legislature intend by the terms used ? In order to arrive at a satisfactory conclusion in this respect, surrounding circumstances must often be consulted.
    It would not be competent to take the testimony of the members of the legislature itself. Though every one of their number were to swear that a meaning was intended different from the import of the terms used, it would not avail to change their meaning.
    
      Nor would any private information under which the legislators voted have the least effect in giving a construction to the language used by them; for if such was the case, one person would have an advantage in interpreting the law which another did not possess. It would be in principle imitating the tyranny of that Eoman emperor who posted his edicts so high that they could not be read, and then required obedience to their provisions.
    But public history, which all may equally understand, is always to be taken into account in giving a construction to public statutes. The transactions in Congress which are recorded in the pages of the Congressional Globe, and which, through that channel, and by means of the public journals, are spread broadcast all over the country, are more properly to be regarded as public history than anything found in the pages of Hildreth or Bancroft.
    It is finely spun out, to be sure, but still it is public history. These views have been practically adopted and expressed by the Supreme Court of the United States, as well as by many State tribunals. The debates in the convention which framed the Federal Constitution, as well as those in the State conventions by which it was adopted, have frequently been referred ■ to as a means of arriving at a sound construction of that instrument.
    The meaning of the act of 1870, for which I have been contending, is, therefore, no longer in doubt. The Commissioner of Patents had no legitimate authority to withhold the patent which had been allowed by the authority of the tribunal that was vested with jurisdiction over”this subject.
    There was another question raised by the respondent which should receive a passing notice. It was argued that although we might have been entitled to our patent at the proper time, still that we have forfeited our right by delay, which has worked abandonment under and by virtue of the 32d section of the act of 1870.
    This is not one of the cases contemplated by that section. We were entitled to our patent. We had obtained the proper decision in our favor, and had paid our final fee, as is shown by our petition, and virtually admitted in the answer ; and nothing remained but for the office to issue our patent. This was wrongfully withheld. Can the office now take advantage of its own wrong to injure us still more ?
    But waiving that point, we have another conclusive answer to this objection. The language of the section above referred to is as follows : “ or upon failure of the applicant to prosecute the same within two years after any action therein of which not,ice shall have been given to the applicant.” Now, even if this was a case contemplated in this section, the notice necessary to bring it within the rule of abandonment was never given, as is expressly stated in the petition, and will not be denied on the argument. There has, therefore, been no abandonment in the case.
    If the foregoing argument is held to be substantially correct, I trust the order of this court will direct the Commissioner of Patents to issue the patent without further delay. But if I have failed to convince the court of the soundness of my position in this respect, there is another remedy of a less decisive character to which we must certainly be entitled.
    The last recorded action of the Patent-Office in this case was dated April 14,1870, and is in these words :
    “ Further action in this case is suspended until the further order of the Commissioner.” That further order has never yet been made, except by failing to make it and verbally declining to issue the patent. I now ask that (unless ordered to issue the patent) he be directed to proceed and make this further order, or to make such a decision in the case as will enable us to take an appeal to this court. As yet the last regular official decision is in our favor. The Commissioner has arbitrarily interposed to prevent us from receiving our patent. This is not such a decision as is contemplated to the 48th section of the act of 1870, from which we can appeal, any more than though he had directed the messenger in retain the patent in his possession, instead of sending it to the patentee after it had been duly executed. We have resorted to the only remedy within our reach.
    One of your honors, during the argument, raised the question whether we had asked such relief in our petition as is just suggested. That petition asks that the respondent be required to show cause why he declines to issue the patent, “ or to do such other acts and things as his official duty shall require, and such as shall be in accordance with the general principles of jurisprudence that are applicable to-such cases.” I should be unable to frame a broader prayer for relief than is embraced in this language, if compelled by the action of thik court to commence proceedings anew in order to obtain the proper relief, and I have never understood that a petitioner is limited in such cases to the specific-relief set forth in his petition. -
    
      Marcus S. Hopkins for the Commissioner of Patents:
    There is nothing in the law to indicate that‘the conclusion either of an examiner or of the board of examiners must govern the Commissioner. The practice has always been that it governs him if he approves it, and not otherwise; just as-the report of a master governs a court of equity when, in the opinion of the court, it is correct. This is indicated in the rules of practice of the office.
    Buie 43 provides that “the examiner-in-chief will consider the case as it was then last passed upon by the primary examiner merely, revising his decisions so far as they were adverse to the appellant. If, however, they discover any reason not given by the examiner why a patent should not issue, they should make a statement to that effect to the Commissioner.”
    But when an appeal is taken to this or any other United States court, the statute expressly specifies that the adjudication of the court shall control the Commissioner.
    Section 50 provides that “ the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent-Office and govern the further proceedings in the case.”
    If it was intended that the Commissioner should be governed absolutely by the findings of a subordinate tribunal in the Patent-Office, why was it not also specified in the law t The idea is sufficiently anomalous to require specification. Inference would seem clearly to point the other way; yet inference is the only basis for the relator’s interpretation of the law. But it will be asked what remedy had this applicant after receiving a favorable decision from the board, and, in compliance with the notice of the office, having paid his final fee of $20 in reasonable expectation of receiving his patent according to the regular course in ordinary cases where the Commissioner interposes no objection ? First, he had the remedy which he sought, viz, an appeal by way of a motion before the Commissioner in person to issue the patent. This motion brought up the whole record, and the facts in the case were presented and argued. The Commissioner then “ deliberately decided,” as held by the present Commissioner and as indicated in his decision, that the ■patent ought not to issue. From that decision, I submit, an appeal lay to 'this court; but, if there could be any doubt about that, the applicant could have asked the Commissioner to render his decision on the merits of the case in review of that of the board, which done, an appeal would unquestionably lie to this court. If the Commissioner had refused to make any decision, he would then have been compellable by mandamus to decide, unless the decision already made was deemed sufficient ground for appeal. But the applicant prefers to stand upon a legal point which he makes, and thereby avoid the presentation of the record.
    He does not even indicate what his invention is in his petition, nor state the date of his original application, but merely extracts a stated case, raising a question of law out of the history of the transaction in the matter, which runs back nearly a score of years, during which time the device he would have peremptorily ordered to patent has gone notoriously and generally into public use from one end of the land to the other.
    With respect to the fee of $20 which the relator has paid,, the 70th section of the present patent act provides for the refunding of the money. The old law had a similar provision ; section 1, act of August 29,1842. The amount is now ready for him in the office, and has been ever since the Commissioner refused to grant him a patent.
    A conclusive answer to this petition for mandamus against the Commissioner of Patents, as the case is presented by the record, would be that the Commissioner is not the issuing officer; that the Secretary of the Interior signs and authorizes the issue of patents, as was unanimously held by this court in the case of Whitely vs. Fisher, 4 Fisher, 248. See also the decision of the Supreme Court of the United States in the cases of The United States vs. The Commissioner of the Land Office, 5 Fisher, 585, and The Secretary of the Interior vs. McGarrahan, 9 Wall., 314.
    But the Commissioner prefers to meet the question made by the relator in such a way as to have the law defining the relative powers and duties of the Commissioner and examiners and the board of examiners-in-chief interpreted by a disinterested and competent tribunal, having the matter judicially before them.
    Passing from the main issue and assuming that the relator once had a remedy by a mandamus, there are two provisions of the act of July 8, 1870, which it is important to consider, in view of his delay in seeking this remedy. It has already been seen that the case, although the suspension of the issue of the patent complained of took place under the old law, is brought by section 111 under the provisions of. the new law. By this section of the act, which required that pending applications be proceeded with as if filed after the passage of the act, the applicant lost no remedy that he had under the old law. But the act contains certain provisions in the nature of statutes of limitation, looking to the enforcement of diligence in the prosecution of applications for patents.
    Great wrongs, upon which the courts had frequently animadverted in strong terms,, had grown out of the resuscitation of old neglected cases that had lain many years dormant in the office, until some sharp speculator purchased them for a song and brought them out under patents, to obstruct established business and levy heavy tribute upon men innocent of any suspicion that the wares they had been for half a generation manufacturing could be monopolized as new inventions.
    It was to remedy these evils, which rather obstructed than promoted the progress of useful arts for the public good, that the sections to which I now invite the attention of the court, and several other sections, were enacted. (See sections 23, 24, 32, 35, 42, and 50.)
    Section 32 provides: “That all applications for patents shall be completed and prepared for examination within two years after the filing of the petition, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties theréto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.”
    Since the passage of this act over three years were allowed by the relator to pass, during which time he took no steps whatever toward the prosecution of his application in the office. He had notice of the suspension of his case in 1869, and acknowledged such notice on the record by repeatedly protesting and arguing against the suspension, so that the plea setup in his petition, that no notice of the Commissioner’s order of July 14,1870, (which was a mere recording of his previous order,) was sent him, is a mere pretext.
    The fact appears that he had aeiualnotice of the suspension of his case, which notice he accepted and acted upon repeatedly, and whether or not he had formal notice of this particular order is immaterial. He had formal notice of the action of the board.
    The Commissioner’s decision of September 15, 1869, in part above quoted, was a denial of- a motion to relieve the case from this order suspending further proceedings for the issue of the patent. In that decision the Commissioner said :
    “This is a motion to allow a patent to issue upon an ap plication that is now suspended by order of the Commissioner.”
    It is submitted whether, under these circumstances, the delay of more than three years to prosecute this application, in the absence of any explanation, does not bar the issue of the patent, and is not sufficient ground for quashing these proceedings.
    Section 23 provides that “every patent shall date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent; and if the final fee shall not be paid within the period, the patent shall be withheld.”
    Now, the ground upon which this mandamus is sought is that the patent “was passed and allowed” in 1869, and that the Commissioner wrongfully neglected and refused to execute and deliver the patent. If the relator’s position is correct, then he had the remedy by mandamus to compel the Commissioner to execute and deliver him the patent. But he should have sought that remedy before the lapse of time interposed a statutory bar to the grant of the patent. The clause above quoted is mandatory. The patent must bear date within the time limited. Yet there is no authority now to antedate a patent.
    Section 8, of the act of 1836, which gave that power, within certain limits, and under certain conditions, was repealed by the act of 1870. How, then, , can the patent now lawfully issue by mandamus ? If issued under the order of the court in this proceeding, it must be because “passed and allowed” in 1869. More than six months have elapsed since that time, and the grant of the patent, upon the hypothesis here presented, even admitting that the Commissioner has wrongfully withheld it, is, I submit, now barred by. the statute.
   Mr. Justice Wylie

delivered the opinion of the court:

The petitioner, having made application for a patent in the usual manner, his application was referred, in the first instance, to one of the primary examiners, who made an adverse decision. It was then carried by appeal to the board of examiners-in-chief, by whom a favorable decision was made.

The Commissioner himself, however, was not convinced by the favorable decision and for reasons satisfactory to himself has heretofore withheld the patent.

The first question for the court to determine in the present case is this: Whether, in an ex parte application for a patent-the Commissioner possesses any authority, under the law, to withhold a patent, in opposition to the report of a primary examiner, or the report of the board of examiners-in-chief in its favor j in other words, whether, in such a case, the decision of the primary examiner, if favorable to the patent, is conclusive upon the office, and if unfavorable, and the applicant has carried his case by appeal before the board of ex. aminers-in-chief, and there obtained a favorable decision, this latter decision is conclusive, so that nothing is left to the Commissioner except the ministerial act of countersigning and affixing the seal of the office to the parchment.

The petitioner for this writ claims that, according to the organization of the Patent-Office, the question of the patent-ability of an alleged invention is to be referred for examination first to one of the primary or assistant examiners. If his decision be unfavorable, the applicant has the right to appeal to the examiners-in-chief. If their decision should also be unfavorable, he has the right of appeal to the Commissioner. And, should the Commissioner’s decision be unfavorable, the right of still further appeal to this court. •

In all this the petitioner’s views of the law are correct; but he also claims that, because his application is ex parte, and no one can take the appeal but himself, and nobody will ever 'appeal from a decision in his own favor, the first favorable decision he obtains at any stage of the proceedings must be-conclusive on the office, since the case can go no furthei except by appeal. This view of the law we think is not correct.

The only act of Congress now in force on this subject is the act approved July 8, 1870, entitled “An act to revise, consolidate, and amend the statutes relating to patents and copyrights.”

The first step to be taken by an applicant for a patent is, of course, to file his application.

By the 31st section of the act it is provided—

“That, on the filing of any such application and the payment of the duty required by law, the Commissioner shall cause an examination to be made of the alleged new invention or discovery; and if, on such examination, it shall appear that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important, the Commissioner shall issue a patent therefor.”

By this section it is made the duty of the Commissioner tc cause an examination to be made of the alleged new invention or discovery; but neither in this section nor in any other of the act is he specifically told by what particular officers he is to have the examination made. It is true that he is furnished under the law with a large number of officers, among whom are twenty-two principal examiners, twenty-two first assistant examiners, and twenty-two second assistant examiners, all of whom are appointed by the Secretary of the Interior upon the Commissioner’s nomination.

The duties to be performed by these officers are nowhere defined in the law, but are such only as the Commissioner himself is authorized to prescribe in pursuance of the 19th section, which is in these words:

“That the Commissioner, subject to the approval of the Secretary of the Interior, may, from time to time, establish rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent-Office.”

All these “principal examiners,” “first assistant examiners,” and “second assistant examiners,” sixty-six in number,, have no functions to perform in the office except only such as may be assigned to them by the Commissioner..

Would it not be a very anomalous condition of things if the Commissioner, under these circumstances, were to have no authority to review and set aside the acts of any of these-subordinate officers ? We shall look into this question a little-more fully after we have examined the law in regard to the examiners-in-chief.

The duties of examiners-in-chief are, in general terms, prescribed in the 10th section, which is in these words—

“Sec. 10. And be it further enacted, That the examiners-in-chief shall be persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written petition of the appellant, to revise and determine upon the validity of the adverse decisions of examiners upon applications for patents, and for re-issues of patents, and in interference cases;, and, when required by the Commissioner, they shall hear and. report upon claims for extensions, and perform such other like duties as he may assign them.”

Upon this section especially is it that the relator in the present proceeding relies in his application for a mandamus against the Commissioner. By it the examiners-in-chief are required to be persons of competent legal knowledge and scientific ability, qualifications nowhere expressly required for the Commissioner himself. These officers also, as requii ed by section 2, are appointed by the President, by and with the advice and consent of the Senate. One of their duties is. to “revise and determine upon the validity of the adverse decisions” of the subordinate examiners which may be brought before them by appeal.

Undoubtedly the decision of this board, when in favor of the applicant for a patent, must be conclusive, unless a superior supervisory authority is vested by law in the Commissioner. The same may be said with equal force, also, in respect to the decisions of the inferior examiners in like circumstances; for none but adverse decisions can be appealed at any stage of the examination.

It is provided, also, by the 31st section, that “if, on such examination, it shall appear that theclaimant is justly entitled to a patent under the law, and that the same is sufficiently useful aDd important, the Commissioner shall issue a patent therefor.”

But by the same section it is declared that it is the Commissioner who is to cause the examination to be made. The examination, when made, with its results, is then to be reported to the Commissioner, and if, “ on such examination”— that is, on the face of the examination — “it shall appear,” &c., the Commissioner shall issue the patent. But suppose it should “appear” to the Commissioner, on his own inspection of the report, that the alleged invention is neither novel nor meritorious; he would be bound, in duty, under this section, not to issue the patent. Certainly there is nothing in this section which excludes this superintending authority of the Commissioner.

Had Congress intended that the decision of the examiners, when favorable to the applicant, should be final and conclusive, we would suppose so great an anomaly in executive administration would have been introduced into the law by the use of terms of the clearest import. A certified copy of the decision would have been a mandate to the Commissioner, requiring him to issue the patent by authority, it might be, of a second assistant examiner, who had been appointed at his instance, and subject to removal in the like manner.

By the 7th section it is declared: “That it shall be the duty of the Commissioner, under the direction of the Secretary of the Interior, to perform all the duties respecting the "granting and, issuing of patents, which herein are, or may hereafter he, hy lam directed to be done; and he shall have charge of all books, records, papers, models, machines, and other things belonging to said office.”

If to decide “that the claimant is justly entitled to a patent under the law, and that the same is sufficiently useful and important,” be the office of the examiners, then by this section it is made the duty of the Commissioner to superintend the performance of these duties by the examiners. It is impossible to escape from this conclusion except by denying that these duties are such as respect the issuing and granting of patents. If the decisions of the examiners, when favorable to applicants, leave nothing to be done by the Commissioner but the ministerial act of writing his name at the left-hand corner of the parchments and directing the seal to be affixed, how vain are the words of the law which declare that it shall be his duty “to superintend or perform all the duties respecting the granting and issuing of patents which herein are, or hereafter may be, by law directed to be done.”

By the 23d section it is provided—

“That every patent shall date as of a day not later than six months from the time at which it was passed and allowed.”

By whose authority are patents to be “passed and allowed 1” If they are to be passed by the Commissioner, they are also to be allowed by him. This language is not appropriate to the duties of examiners. These officers neither pass nor allow patents. They examine claims for inventions or discoveries. It is the duty of the Commissioner alone, after the examination has been reported, to say whether the patent shall be allowed and passed.

By the 52d section it is provided as follows:

“That whenever a patent on application is refused, for any reason whatever, either by the Commissioner, or by the supreme court of the District of Columbia upon appeal from the Com - missioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear; and such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent, on the applicant filing in the Patent-Office a copy of the adjudication and otherwise complying with the requisitions of law. And, in all cases where there is no opposing party, a copy of the bill shall be served on the Commissioner, and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not.”

Here is an express recognition of power in the Commissioner to refuse the patent, and an ex parte bill in equity given to the applicant as a remedy for such refusal. On the trial, the court is to investigate the merits of the applicant’s claim de novo, and determine the right. What need to provide this mode of investigation if the Commissioner is bound by law in all cases to issue the patent where a favorable decision has been made by the examiners ? Should the decision be against the applicant, he can get no patent, although he may have previously secured favorable decisions from all the examiners in the Patent-Office. On the trial, such decisions would not be received as even prima facie evidence in support of his claim. This section provides for a different class of cases from those which come before the Commissioner by appeal from the examiners under the 47th and 48th sections of the act. In these cases the Commissioner is obliged by law to make his decision, and, if such decision be adverse to the applicant, the latter may appeal to this court, as provided in the 49th and 50th sections of the act.

The case of the present relator was not one of this class. It was not brought before the Commissioner by appeal from any adverse decision of the examiners. It was not brought before him at all, except with the report made by the examiners-in-chief, and he exercised no authority in respect to it, save such as belongs to him in virtue of his general supervisory authority in such a case. He simply withholds the patent for reasons which he does not give, but makes no decision. It is not a case, therefore, which could be brought into this court by appeal; but it is a case for which the applicant may have the remedy given by the 52d section, and that is alone sufficient, without respect to any other question, why the application for a mandamus in this case should be denied.

In that this section recognizes the authority of the Commisióner to withhold a patent in any case, for any reason satisfactory to himself, it shows that the decisions of the ex-aminors are in no case obligatory as to his action. In that it supplies a remedy under which his judgment in withholding' the patent may be revised, it is decisive against the remedy by mandamus applied for in the present instance; for this writ will not lie where the law furnishes the party with any other adequate specific remedy. See Kendell vs. The United States, 12 Peters, 614.

Mr. Justice Olin:

I fully concur with the views expressed by Mr. Justice Wylie as to the true interpretation of this patent law. The interpretation contended for would turn the head of the office into the tail.

It will be noticed that the law provides for the appointment of primary examiners upon the nomination of the Commissioner, but gives no appeal from their favorable action upon án application for a patent. Now, upon the principle contended for here by the relator, the decision of the primary examiner would be final, and would couclude and bind the Commissioner, whose nominee he is.

The relator’s counsel has dwelt upon the fact that the law does not expressly give the Commissioner the right of appeal from the decision of the examiners-in-chief, and has urged this as proof that such action is final. This does not seem to me to be the proper inference. I think the right of appeal was omitted because it was unnecessary to confer it; for the Commissioner’s supervisory power over acts of the subordinates in the office is such as to preclude any necessity of his “ appealing ” from the examiners-in-chief. He can refuse to grant the patent.

As to the remedy: Nothing is clearer than that where the law has pointed out a particular remedy the writ of mandamus does not lie. Moreover, the Commissioner does not issue the patent. It is signed by the Secretary of the Interior and countersigned by the Commissioner. The former really controls the issuing.

I had intended to write out an opinion, but in the feeble state of my health I have not completed it. In fact, I found I was going further in the statement of principles governing the case than my brethren might feel inclined to follow me.

Mr. Justice MacArthur:

I suppose the officers in charge of the Patent-Office desire to ascertain the grounds on which the mandamus was refused, so as to regulate their future actions in matters affected by the decision.

The views of the minority will not be of much importance in this respect, as the judgment of the court and not the dissenting opinions will determine the course to be followed hereafter. On a subject of so much consequence, however, I desire to state some of the reasons for the dissent which I indicated one week ago, and I am authorized by the chief-justice to say that he agrees with me in opinion.

I will premise by observing that the Patent-Office has become a conspicuous feature in our Government. This branch of business had accumulated so enormously, that in 1870 Congress revised and reduced the whole system to order by the law of that year. The officers were classified, and their duties, to some extent, defined, so that the work might go on efficiently and harmoniously. In conformity with this idea the second section provides for three examiners-in-chief to be appointed by the President, by and with the consent of the Senate, and their duties are prescribed in the tenth section, which reads as follows :

“ That the examiners-in-chief shall be persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written petition of the appellant, to revise and determine upon the validity of the adverse decisions of examiners upon applications for patents, and for re-issues of patents, and in interference cases; and, when required by the Commissioner, shall hear and report upon claims for extensions, and perform such other like duties as he may assign them.”

The forty-sixth section enacts—

“That every applicant for a patent, or the re-issue of a patent, any of the claims of which have been twice rejected, and every party to an interference, may appeal from the decision of the primary examiner, or of the examiner in charge of interferences, in such case, to the board of examiners-in-chief, having once paid the fee for such appeal provided by law.”

The sections following this provide for an appeal where the party is dissatisfied with the decisions of the examiners-in-chief to the Commissioner in person, and then for an appeal to the supreme court of this District from the decision of the Commissioner, if it is adverse to the applicant. Here we have a system judicial in form and substance for the express purpose of deciding upon the rights of applicants for patents, and there is nowhere throughout the entire law any power given to the Commissioner to set aside or disregard the rights of an applicant thus settled and pronounced, except in the cases which come to him by way of appeal from the adverse decisions of the board. It appears to have been the design of Congress to furnish in the Patent-Office itself a judicial method of determining when a patent ought to issue, giving to the Commissioner only an appellate power of revision, and it is simply in these cases that he is to exercise the right of refusing a patent. The examiners-in-chief are to be selected with reference to their fitness to perform the special duties assigned them. The law directs that they shall be persons of competent legal knowledge and scientific ability, and, therefore, specially qualified to pass upon the legal and scientific questions that are in most cases involved in deciding upon the validity of a claim for a patent. No such requirement is made in selecting the Commissioner. His position is undoubtedly one of high trust and great responsibility; but he is appointed on account of his general character and administrative capacity. The special duty of deciding upon the propriety of a patent is, therefore, confided to the examiners designated by the law for that purpose, and no appeal is given except upon an adverse decision. In no other case and in no other way does the law provide for a revision of their action. If their decison is favorable to the inventor, there is no authority given the Commissioner to defeat his rights by suspending the proceedings, or refusing to prepare and countersign the patent. On the contrary, the thirty-first section expressly makes it his duty, if upon the examination it shall appear that the claimant is justly entitled to a patent, the Commisioner shall issue a patent therefor.” The law is mandatory upon him in case the applicant procures a favorable decision, and he cannot evade it without dispensing with the law itself. He ,has no right to take up cases except by appeal, overrule decisions, suspend proceedings, and refuse patents at his own will and pleasure. Congress never designed to confer a power so dangerous to the hands of any Commissioner, and one so inimical to the interests of inventors. They have provided how the merits of an application for a patent are to be examined and determined, and the result is called a “ decision.” The case is heard before the examiners upon testimony and argument. The inventor is heard by himself or counsel, and a decision is then made in his favor upon the merits of his application. Is it possible that where there is no regular appeal given, and without notice, or any of the forms prescribed by the law, the Commissioner can take this case up on his own arbitrary motion, and defeat or reverse the whole proceedings? We are not at liberty to infer that Congress intended an act so inconsistent with the judicial system they have ordained in tie law of 1870.

Where any new fact is developed, raising new grounds of objection, or where fraud is discovered, or where any gross irregularity appears, then it is competent, no doubt, for the Commissioner, by virtue of his supervisory power, to direct a re-examination of the case. In this very case there was a re-examination by order of the Commissioner, and the board affirmed their previous decision in favor of Hull. But when a case has been regularly presented and duly examined, and decided favorably to the applicant on its merits, it is the duty of the Commissioner to prepare the patent, and the law, as we have seen, expressly makes it mandatory upon him in all cases.

It has been suggested that the remedy of the relator is under the 52d section, which provides “ that whenever a patent is refused for any reason whatever, either by the Commissioner or by the supreme court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; aud that, therefore, mandamus will not lie in this case, as the applicant has a remedy. But it is to be noticed that this proceeding in equity is given only in case the Commissioner refuses to issue the patent. It is clear to my mind that the refusal of the Commissioner can only occur in cases which regularly come before him on an appeal from an adverse decision of the examiners-in-chief. These are the only cases he can examine and decide, and it is not until his refusal to issue the patent in a case upon such an appeal that the remedy prescribed by the 52d section can be invoked. We have seen that, by the 31st section, it is the duty of the Commissioner, where an application is filed, to cause an examination to be made, and if such examination shows that the applicant is entitled to a patent, the Commissioner shall issue one to him. He can refuse to issue a patent when he himself makes the examination, and this he can only do upon an appeal regularly taken from the action of the board. It is only an adverse decision that can be reviewed by a bill in equity, while here the last regular decision was in favor of Hull. The Commissioner clearly understood that he could not absolutely refuse to issue a patent, for on the 14th of April, 1870, he simply placed a written order on file “ suspending further proceedings until his further order,” and no farther order has ever been made. The proceedings are still suspended, and the further order, when made, may or may not be a refusal. The contingency, therefore, upon which the remedy in equity depends has not occurred, and cannot be urged as an objection to the mandamus.

T,he Commissioner has, in fact, decided nothing and examined nothing respecting the merits of Hull’s application. In his return he sets forth certain circumstances in the history of the case that have no relation to the rights acquired by Hull in the favorable decision of the board. He has simply interdicted all further proceedings until he shall make a further order. It is impossible for Hull to resort to equity before this final action shall have taken place. If the Commissioner should make an adverse decision, the statute provides for an appeal to this court,- but in the present anomalous condition of the record I can see no remedy, unless it may be asserted in this form.

As to the objection that Hull is barred in this case by the delay of more than two years in prosecuting his application, it is sufficient to say that the time limited in the 32d section does not begin to run until notice shall have been given of the action taken by the office, and no such notice of the order suspending the proceedings has been served in this case.

I have thus given my construction of the patent law of 1870, as far as the same is involved in this case, and I think the writ ought to issue in such form a,s will compel the Commissioner to perform the ministerial work necessary in issuing a patent.  