
    IN RE MANSON.
    Patents; Applications; Amendments.
    1. A pending application may not be amended by the insertion of new matter not embraced in the original disclosure, with a view of having it relate back to the original filing date. (Following Re Dilg, 25 App. D. C. 9; Re Scott, 25 App. D. C. 307; and Re Mraz, 36 App. D. C. 435.)
    
      2. Where an applicant for a patent for a push button for electric automobile horns, which will enable the operator to give low or loud signals at will by simply varying the pressure upon the button, seeks by way of amendment to bring into his application certain claims having nothing to do with the production of signals of varying intensity, but relating wholly to the production of a single signal by a tilting motion of the button, and it is not apparent that the tilting action is inherent in the structure as originally disclosed, or that those skilled in the art would, in making the article from such disclosure, naturally so construct it that it would have the capability claimed for it in the new claims, — the amendment will not be allowed.
    No. 1068.
    Patent Appeals.
    Submitted November 17, 1916.
    Decided January 2, 1917.
    Hearing on an appeal from a decision of tbe Commissioner of Patents rejecting certain claims in an application for a patent.
    
      Affirmed.
    
    Tbe facts are stated in tbe opinion:
    
      Mr. F. O. Richey for tbe appellant.
    
      Mr. William R. Ballard for the Commissioner of Patents.
   Mr. Justice Van Orsdel

delivered tbe opinion of tbe Court:

Tbis is an ex parte appeal from tbe decision of tbe Commissioner of Patents affirming tbe decision of tbe Board of Examiner in Chief wbicb, in turn, affirmed tbe decision of the Primary Examiner rejecting claims 11 to 21, inclusive, for an invention relating to circuit closers of tbe push-button type for use with electric horns.

Claims 11 and 21 of tbe rejected claims sufficiently describe tbe features of applicant’s invention here involved:

“11. In a device of tbe class described, tbe combination of a casing, electrical contacts mounted therein, a push button concentric with said casing and of large horizontal area, catch means'mounted on the casing and companion catch means on tbe button, said catch means normally engaging each other at a plurality of points, spring means normally pressing said members together and a device for placing said contacts in electrical connection when the push button is tilted.”
“21. In a circuit controller, the combination of a stationary member and a movable member, means for creating a loose pivotal engagement between said members at a plurality of points, and an electric switch operated when said movable member is operated about any of the said points of pivotal engagement.”

In the original application of appellant, Ray II. Manson, into which he now seeks to bring these claims by way of amendment, the object of the invention is stated as follows: “My invention relates to devices for controlling electrical circuits, and while I contemplate its use in a number of situations, a description of its use in connection with automobile horns will aptly illustrate the functions. Where it is desired to operate a horn to give a loud or a low signal by varying the strength of the current, it is desired that the controlling means should be easily operated and accessible to the driver. The circuit controller which I have produced may be operated to condition the horn to produce different signals by varying the pressure upon the button, and it may be placed upon the steering wheel or, if desired, on the top of the steering post.”

The claims before us were rejected by each of the tribunals below on the ground that they relate to new matter not disclosed in the original application. Applicant’s claims 1 to 10, inclusive, covering the invention disclosed in the original application, were allowed. The application as filed was for a push button for electric automobile horns, which would enable the operator to give low or loud signals at will by simply varying the pressure upon the button. The supply of current is so regulated by the degree of pressure from the operator as to produce low or loud signals at will.

The present claims of the amendment have nothing to do with the production of signals of varying intensity. They relate wholly to the production of a single signal by a tilting motion of the button. It is conceded that the original application contained no reference whatever to the operation of the button in a tilted position, but applicant now contends that the structure originally disclosed can be operated as well in a tilted position by a pressure on the edge as by a straight depression. But to reach this conclusion, we must read into his original disclosure something not there to be found, namely, that the button operates so loosely in its socket that, when pressed on the edge and thus tilted in the socket, the points of contact will produce an electrical connection. This introduces a new method, of operating the button, as well as means for producing the electrical connection, a case well within the rule forbidding the insertion of new matter by way of amendment to an original application. It is well settled that a pending application may not be amended by the insertion of new matter not embraced in the original disclosure, with a view of having it relate back to the original filing date. Re Dilg, 25 App. D. C. 9; Re Scott, 25 App. D. C. 307; Re Mraz, 36 App. D. C. 435.

The test of applicant’s right to make the claims of the amendment is well stated in the opinion of the Board of Examiners in Chief as follows: “Did the appellant’s application as filed present this inventive idea ? The specification made no mention of any tilting action. The only ground upon which it might be held that the application as filed disclosed the tilting action is that this action is inherent in the structure as the same was originally disclosed. If those skilled in the art, making the article from the information furnished in the original application, would naturally so construct it that it would have the capability here in question, this capability must be regarded as inherent in the applicant’s disclosure and, a necessary characteristic of his invention whether originally known to or appreciated by him or not. But if those skilled in the art making a device in accordance with the application as filed would, as likely as not, produce an article which would not have the capability here in question, this capability cannot well be said to be inherent in the applicant’s original disclosure. If a device might naturally be constructed from the applicant’s specification and drawing as filed which would have every mode of operation and fulfil every purpose suggested in the specification as filed, and not be capable of closing the circuit by a mere tilting of the button, we-cannot see how the applicant can have originally disclosed an invention which has this capability for its distinguishing characteristic.

Clearly the decision of the Commissioner of Patents is right. It, therefore, is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed.

Mr. Justice McCoy, of the Supremo Court of the District of Columbia, sat with the court in the hearing and determination of this appeal in the place of Mr. Chief Justice Shepard.  