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 *109state 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.

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 decis*110ion 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, *111“ 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 *112it 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, *113it 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.

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 *103Commissioner 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 *104examiners, 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. *105to “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 *106directed 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, *107shall 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.

*108In 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.