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§ 506. The Claim: its Effect, as an Abandonment or otherwise, upon the Matter not Claimed.

As a consequence of this limitation of the patent to the matter claimed, all matters not claimed are considered as excluded from the particular invention which forms the subject of the application. It has been sometimes stated that a failure to claim an art or device admits it to be old; or, if it is really new, that the omission to protect it abandons it to the public. These statements need qualification. From the nature of the invention itself all that is essential to it must be new, and it can properly be claimed only by excluding all that is old. But it does not follow that other features, described in the specification and omitted from the Claim, are already known to the public; for it may often happen that each one of several new inventions can be understood only by describing it in connection with the others. Nor is it true that by thus describing and not claiming any one of them, the inventor, ipso facto, dedicates it to the public use. He is at liberty to patent each of them, if he desires to do so, either in separate patents, or in the same patent when their joinder would be consistent with the rules relating to that subject; and the patenting of one before he makes an application for the others cannot be regarded as abandoning the rest unless this be his intention, as shown by all the circumstances of

§ 506. That to describe and not claim admits the unclaimed matter to be old, see Rowell v. Lindsay (1881), 19 O. G. 1565; 10 Bissell, 217; 6 Fed. Rep. 290; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392; Kirby v. Dodge & Stevenson Mfg. Co. (1872), 10 Blatch. 307; 6 Fisher, 156; 3 O. G. 181; Conover v. Roach (1857), 4 Fisher, 12; Winans v. N. Y. & Erie R. R. Co. (1856), 1 Fisher, 213.

That failure to claim described matter dedicates it to the public, see Swift v. Jenks (1884), 19 Fed. Rep. 641; 27 O. G. 621; Miller v. Brass Co. (1881), 104 U. S. 350; 21 O. G. 201; Giant Powder Co. v. California Vigorit Powder Co. (1880), 18 O. G. 1339; 6

Sawyer, 508; 4 Fed. Rep. 720; Batten v. Taggert (1851), 2 Wall. Jr. 101.

That the claiming of one specific device, and the omission to claim others which are apparent on the face of the specification, is an abandonment of the latter, see Hill v. Commissioner (1885), 33 0. G. 757; 4 Mackay, 266.

That the claiming of a specific device, and an omission to claim other devices apparent on the face of the Description, is a dedication of the latter, unless the patentee surrenders, proves inadvert ence, etc., and re-issues with due diligence, see Combined Patents Can Co. v. Lloyd (1882), 15 Phila. 481; 21 O. G. 713; 11 Fed. Rep. 149; Miller v. Brass Co. (1881), 104 U. S. 350; 21 O. G. 201.

the case or by that public use or sale from which the law presumes such an abandonment. To describe and not to claim is a proper method of admitting that to be old which really is old. It is also a proper method of abandoning new inventions to the public, when such is the evident intention of the inventor. It is also a proper method of distinguishing the new invention, which forms the subject-matter of the present application, from other new inventions which are to be the subjectsmatter of future applications. The sole inevitable conclusion from the omission is that the omitted features do not enter into the essence of the present invention, and are not claimed as protected by the present patent. What further conclusions may be drawn from it depends on other considerations, relating either to the novelty of the omitted feature in itself, or to its actual or presumed abandonment by its inventor.

§ 507. The Claim: its Form and Contents Governed by Strict

Rules.

The paramount importance of the Claim, and the necessity for such exactness and completeness in its statements as will precisely define the invention to be protected by the patent, have led to the establishment of numerous rules for framing it, some of which are common to all classes of inventions, while others have reference to particular classes. These

3 That to describe and not claim is a method of postponing the unclaimed matter for a future patent, see Ex parte Emerson (1880), 17 O. G. 1451; Giant Powder Co. v. California Vigorit Powder Co. (1880), 18 O. G. 1339; 6 Sawyer, 508; 4 Fed. Rep. 720; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G.

392.

That the description of a process in an application for a machine patent does not abandon the process to the public if the process patent be applied for within two years, see Eastern Paper Bag Co. v. Standard Paper Bag Co. (1887), 30 Fed. Rep. 63; 41 O. G. 231.

That where an applicant intends to obtain a future patent for the matter

described but not claimed in the present application, he must expressly reserve in this one the right to do so, and apply for the other within a reasonable time, see Ex parte Roberts (1887), 40 O. G. 573; Adams v. Bellaire Stamping Co. (1886), 28 Fed. Rep. 360; 36 O. G. 567; Ex parte Derby (1884), 26 O. G. 1208; James v. Campbell (1882), 104 U. S. 356; 21 O. G. 337.

That a failure to claim described matter simply excludes it from the patent, leaving it to be covered by a subsequent patent or not, at the option of the inventor without any previous reservation, see Corn Planter Patent (1874), 23 Wall. 181 ; 6 O. G. 392; and cases cited in the notes to §§ 465, 466, ante.

general rules relate to the contents, the form, the joinder, and the construction of Claims. Those which govern the contents of a Claim, prescribing what it must include, what it must omit, and what may be included or omitted at the option of the inventor, will be first discussed.

§ 508. The Claim must Claim a Practically Operative Means. Every Claim must set forth and claim a practically operative means.1 An inventor is not obliged to claim all that he may have invented. His idea of means may be susceptible of different stages of development, the more advanced of which it may not yet seem proper to him to disclose. Or his invention may embrace subordinate inventions, which he may determine either to surrender to the public or to reserve for the protection of future patents. But he must, at least, so far describe and claim what he has invented as to place before the public, and to ask protection for, some art or instrument capable of practical use. Nothing less than this is a patentable invention, and no Claim can be sustained unless

§ 508. That a Claim must be for an operative means, see Ex parte Cornell (1872), 1 O. G. 573; American Pin Co. v. Oakville Co. (1854), 3 Blatch. 190.

That a Claim for certain devices as the means for producing a certain result is proper, though under some circumstances they will not so operate, see Wheeler v. Clipper Mower & Reaper Co. (1872), 10 Blatch. 181; 6 Fisher, 1; 2 O. G. 442.

2 That the Claim may be as narrow as the patentee chooses, if it covers an operative means, see Ex parte Emerson (1880), 17 O. G. 1451; Russell & Erwin Mfg. Co. v. Mallory (1872), 2 O. G. 495; 5 Fisher, 632; 10 Blatch. 140.

That the inventor need not claim all he describes, though new, provided that which he claims will operate apart from the rest, though thereby he may secure the whole, see Ex parte Sturges (1872), 1 O. G. 204.

will be taken as covering all that is described as entering into the invention unless the Claim itself shows the contrary, see Evans v. Kelly (1880), 5 Bann. & A. 71; 9 Bissell, 251; 23 O. G. 192; 13 Fed. Rep. 903; Tetley v. Easton (1883), Macrory's P. C. 82.

8 That the Claim must be for matter so described that any one skilled in the art can use it, see Vogler v. Semple (1877), 11 O. G. 923; 7 Bissell, 382; 2 Bann. & A. 556.

That an article patentable only when used in certain connections must be claimed only as to such connections, see Stewart v. Mahoney (1879), 5 Fed. Rep. 302; 4 Bann. & A. 84.

That the occasional accidental operation of a device, varying from its usual operation, and inconsistent with its principle, is not a basis for a Claim for a device uniformly producing similar effects, see Voelker v. Gray (1885), 30

That a Claim for an entire invention O. G. 1091.

the exclusive privilege which it endeavors to define is one which can lawfully be granted.

§ 509. The Claim must Claim a Concrete Art or Instrument.

Again, every Claim must be for a concrete invention. Patents are not granted for the protection of abstract ideas or scientific theories, but for practical arts to be performed, or for physical instruments available for use on physical objects.1 Underlying every invention is the idea of means of which the operative art or instrument is the tangible embodiment; and ultimately this idea of means receives complete protection from the patent. But the thing patented is the concrete expression of this idea, the art or mechanism or product in which the idea is reduced to practice; and it is this which must be set forth in the Claim, in distinction from the discovery or conception which it embodies.

§ 510. The Claim must Claim a Single and Distinct Invention. Again, every Claim must be confined to some single and distinct invention. Two arts or instruments cannot be embraced in one Claim. Where a general invention is capable of modifications which differ substantially from each other, embodying different ideas of means or the same idea in different stages of development, each one of these is a distinct invention, and if claimed at all must be claimed separately

§ 509. 1 That the Claim must state a concrete invention, not an abstraction, see Ex parte Designolle (1877), 13 O. G. 227; Burr v. Duryee (1863), 1 Wall. 531.

That the Claim must not cover a principle, see Ex parte Fairbanks (1873), 3 0. G. 65; Burr v. Duryee (1863), 1 Wall. 531; Walton v. Bateman (1842), 1 Web. 613.

That a Claim for the use of a natural force for a special purpose is improper, the special method of using it for such purpose must alone be claimed, see O'Reilly v. Morse (1853), 15 How. 62.

to all men, and cannot be claimed, see
Opinion Atty. Gen. (1856), 8 Op. At.
Gen. 269; Detmold v. Reeves (1851), 1
Fisher, 127.

See §§ 133-143 and notes, ante.
§ 510. 1 That but one invention can
be embraced in a single Claim, see Ex
parte Bland (1879), 15 O. G. 775.

That a process and its product cannot be embraced in a single Claim, see Ex parte Bates (1879), 16 O. G. 266 ; Merrill v. Yeomans (1874), 1 Bann. & A. 47; 5 O. G. 267; Holmes, 331.

That a machine and its product, an art and its apparatus, etc., cannot be covered by one Claim, see Ex parte Bates

That general truths and forces belong (1879), 16 O. G. 266.

from the rest. When the parts of a device, as well as the device itself, are new inventions, the device as a whole and each subordinate part of it must be made the subject of as many separate Claims. Thus every Claim becomes complete within itself; exactly commensurate with the single invention it purports to cover, and capable of being allowed or disallowed in the Patent Office, and sustained or defeated in the courts, without prejudice to any other invention than the one therein specifically described.

§ 511. The Claim must Indicate the Class of Patentable Inventions to which the Claimed Invention Belongs.

Again, every Claim must define the invention it includes in such a manner as to indicate the class of inventions to which it belongs. While the Claim need not state in terms whether the invention claimed is an art, a machine, a manufacture, a composition of matter, a design, or an improvement, it must be apparent to which of these great classes the invention does pertain. Thus, if the real invention is an art or process, it must be claimed as such and not as the means by which the art is practised, nor as the product in which it results. If it is a machine, the mechanism, not the mode of operating it, is the true subject-matter of the Claim.8

512. The Claim must Precisely Define the Invention Claimed. Again, every Claim must precisely define the exact limits of the invention claimed. This may be done by the enumeration

§ 511. 1 That the Claims of a patent must clearly show whether the claimed invention is an art, machine, manufacture, composition, design, or improvement, see Ex parte Mayall (1873), 4 O. G. 210.

2 That an apparatus must be claimed as such, not as a means for practising the art, see Ex parte Bates (1879), 16 O. G. 266.

That the exact invention, not the art of using it, must be claimed, see Ex parte Cornell (1872), 1 O. G. 573.

That a machine must be claimed as

such, not as a "mode of operation,” see Hatch v. Moffitt (1883), 15 Fed. Rep. 252; Burr v. Duryee (1863), 1 Wall. 531.

That where an effect is produced by mechanical means, the means should ordinarily be claimed as a machine or manufacture, not as a process, see Piper v. Brown (1870), 4 Fisher, 175; Holmes, 20. See also § 529 and notes, post.

§ 512.1 That the claimed invention must be precisely and completely covered by the Claim, see Ex parte Thompson (1879), 16 O. G. 588; Ex parte

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