in the statutes, been always connected with the word "and;" there would be ground for an argument that they were used synonymously. In fact, however, they have always been connected with the word "or;" thus indicating that they were not intended to signify the same thing. What they do respectively mean, is to be ascertained by considering other provisions of the statute; namely those provisions which indicate the causes from which either invalidity or inoperativeness must have sprung, in order to make patents reissuable. To have that effect, either of those faults must have resulted from a defective or insufficient specification, or from the patentee claiming more than he had a right to claim as new. This last cause of fault, was first mentioned in the statute of 1836. In the following year, Congress provided that patents should no longer be held to be invalid, on that ground, provided proper disclaimers were reasonably entered.' Ever since 1837, therefore, faults in patents, arising from patentees claiming more than they had a right to claim, have been as curable by disclaimers as by reissues; and, as the remedy by disclaimer is both cheaper and better than the other, the remedy by reissue has seldom or never been sought as a cure for a fault of that class. The case law on the subject of reissues, is therefore substantially confined to reissues which were granted because the surrendered patents were alleged to be invalid or inoperative, by reason of defective or insufficient specifications.

§ 217. The meaning of the word "specification" is that of the words "description and claim" when it is used, in the statutes, separately from both those words.' In the reissue section of the statute of 1836, the word "description" was used in connection with the word "specification" and thus limited the meaning of the latter to the signification of the word "claim." On the other hand, in the fourth sentence of Section 4916 of the Revised Statutes, the word

3

15 Statutes at Large, Ch. 45, Sections 7 and 9, p. 193.

Wilson v. Coon, 18 Blatch. 535,

1880.

3 Wilson v. Coon, 18 Blatch. 536, 1880.

"specification" is used in immediate connection with the word "claim," and is therefore limited, in that place, to the meaning of the word "description."

The word "defective" and the word "insufficient" are not synonymous in this statute, as at first thought they may appear to be. The former word means "bad," and the latter means "lacking." A description may be complete, while it is obscure in some of its parts. In such a case, it is defective. On the other hand, it may be perfectly clear, as far as it goes, while omitting all reference to some parts of the thing described. In such a case, it is insufficient. So also, a claim may mistily cover the whole invention described, but being liable to be misunderstood, it is defective. On the other hand it may be entirely clear, while it is narrower than the invention, and therefore insufficient to cover and secure the latter.

§ 218. From the foregoing it follows, that ever since 1836, those patents have been reissuable which were invalid or inoperative, by reason of defective or insufficient descriptions or claims; provided their faults arose from inadvertence, accident or mistake, and without any fraudulent or deceptive intention. This proviso is equally imperative in all cases. Assuming it to be satisfied in all, and disregarding the nugatory provisions relevant to reissues when the patentee has claimed too much, it appears that the faults which make patents reissuable are four in number. 1. Invalidity arising from defective description. 2. Invalidity arising from insufficient description. 3. Invalidity arising from defective claims. 4. Inoperativeness arising from insufficient claims.

The nature of the first three of these faults, is explained in the chapter on letters patent. Whether or not a particular patent was or is invalid for either of those reasons, may be determined, by the application thereto of the relevant rules and doctrines set forth in that chapter. Specifi

1 Coon v. Wilson, 113 U. S. 277, 1884; Parker & Whipple Co. v. Yale

Clock Co. 123 U. S. 103, 1887.

cations have, for many years, been generally written with such a degree of skill and care, that comparatively few letters patent have, in recent times, been characterized by either of the first two faults. Those which have possessed the third fault, have, in many cases, been made to possess it, in order to deceive or defraud the public, and not from inadvertence, accident or mistake. Defective claims are frequently nebulous claims, intended to mean much or to mean little, according to the exigencies of future events. To the public, they are intended to convey a signification so wide as to deter others than the patentee, from accomplishing the same result by other means than those which the patentee is entitled to claim. To the courts, they are intended to convey a meaning so narrow as to enable them to successfully run the gauntlet of litigation. For such purposes of duplicity, nebulously defective claims are more effective than clear and perfect ones would be. Those who secure such patents, therefore seldom surrender them for reissue, except in cases where the defect arose from the absence of verbal skill, in the writers of the claims, rather than from the presence of intent to deceive, in the owners of the patents. The considerations stated in this paragraph, account for the well-known fact, that most of our reissued patents were reissued because of alleged inoperativeness arising from alleged insufficiency of claims.

§ 219. Claims are the only operative parts of specifications. If an inventor has produced two or more inventions, so allied that they may properly be secured to him in one letters patent; and if he fully describes all of those inventions in the descriptive part of his specification, but covers only one of them by his claims; then his patent is operative as to one of those inventions, and inoperative, as to the others. Inoperativeness of that kind, is sufficient to lay the foundation of a right to a reissue.' And where an inventor

'Thompson v. Wooster, 114 U. S. 115, 1884; Anilin v. Higgin, 15 Blatch. 291, 1878; Wilson v. Coon,

18 Blatch. 535, 1880; Giant Powder Co. v. Nitro Powder Co. 19 Fed. Rep. 510, 1884.

claims his invention only in combination with something else, his patent is inoperative as to that invention alone.' Reissues granted in these classes of cases are called broadened reissues. Though the statute does not, under that name, authorize reissues of that kind, they are authorized by the general terms of the law;' and have been upheld by the Supreme Court in many cases."

The

$ 220. Inadvertence, accident or mistake must have been the source of the fault in letters patent, in order to make them reissuable. Such inadvertence or accident may have been suffered, or such mistake may have been committed, by the patentee, or by the Commissioner of Patents. statute is satisfied on this point, where the patent was inoperative by reason of insufficient claims, if those claims were made too few or too narrow because the patentee was mistaken about the state of the art," or because the patentee or his solicitor, when concerting the claims, inadvertently failed to make them as extensive as the invention. So also, the statute is satisfied, where the patent was inoperative by reason of insufficient claims, if those claims were made too narrow because the Commissioner, on account of an erroneous opinion entertained by him, refused to allow them to be made as broad as they ought to have been,* or because of an erroneous decision made by him in an interference proceeding." But the statute is not satisfied where the applicant or his attorney cancels a rejected claim and afterward seeks to reclaim it by a reissue."

§ 221. The Supreme Court has recognized the fact, that patents have been reissued by the Commissioner, in some cases where there was no statutory ground therefor;' that is to say, in some cases where the patents surrendered were neither invalid nor inoperative; or if invalid or inoperative, were not so by reason of a defective or insufficient specification; or if invalid or inoperative by reason of a defective or insufficient specification, were not so because of inadvertence, accident, or mistake. It is, however, still an unsettled question whether any of these matters can be investigated in courts. The point is so important, and involves so many cases and considerations, that it deserves and must receive an extensive explanation in this book. To that explanation it is now convenient to proceed.

§ 222. It has several times been said by divers justices of the Supreme Court, that the Commissioner, when granting a reissue, is presumed to have decided that some statutory ground for a reissue existed; and that his decision, on that point, is not subject to review, in any suit for infringement.'

In the first of these cases, the point was not before the court for decision. The question at bar was whether the reissued patent needed to contain any recital of the particular statutory faults on account of which it was granted. The decision on that point was in the negative. In stating the grounds upon which that decision was based, Justice STORY overstepped the issue, and, when speaking of the evidence of reissuability laid before the Commissioner, remarked: "No other tribunal is at liberty to examine or controvert the sufficiency of such proof, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency."

1 Burr v. Duryee, 1 Wallace, 531, 1863; Leggett v. Avery, 101 U. S. 259, 1879.

2

Story, J., in Philadelphia and Trenton Railroad Co. v. Stimpson, 14 Peters, 448, 1840; McLean, J., in Stimpson v. Railroad Co. 4 Howard,

404, 1846; Clifford, J., in Seymour v. Osborne, 11 Wallace, 516, 1870; and in Collar Co. v. Van Dusen, 23 Wallace, 558, 1874; and Strong, J., in Ball v. Langles, 102 U. S. 129, 1880.