§ 524. The Claim for a Combination: Combinations not Covered by Claims for their Elements.

By the application of these general rules to Claims for different classes of inventions many special rules have been developed, to which from time to time new rules are added as new cases are presented for determination. In examining these attention must be first directed to the rules concerning combinations. A combination is the union of several elements under one co-operative law. It is an invention distinct both from the elements of which it is composed and from the law by which their co-operation is controlled. It must, therefore, be claimed as an invention by itself, not being covered by a Claim for each of the elements separately, nor by a Claim for all of them collectively, nor by a Claim for all of them co-operatively under a different co-operative law.1

§ 525. The Claim for a Combination: its General Requisites.

A Claim for a combination must include all its essential characteristics, and embrace enough to produce a distinct and useful result, but must, at the same time, be confined to that union of one element with another which the inventor has created and described. It must distinguish clearly between

the Description, is good, see Wells v. Jacques (1874), 1 Bann. & A. 60; 5 O. G. 364.

That where the specification describes several ways of applying a substance to new uses, the Claim will be so construed as to cover all, see Ex parte Floyd (1874),6 O. G. 541.

§ 524. 1 That a Claim for the elements alone does not cover the combination, see Delaware Coal & Ice Co. v. Packer (1880), 5 Bann. & A. 296; 1 Fed. Rep. 851; 24 O. G. 1273. See also § 527 and notes, post.

§ 525. That a Claim including an element not co-acting as part of the combination is invalid, see Van Camp v. Maryland Pavement Co. (1888), 43 O. G. 884; Kerosene Lamp Heater Co. v.

Littell (1878), 13 O. G. 1009; 3 Bann. & A. 312.

That a patent for a combination of old elements cannot claim any other union of the elements than the one invented and described, see Larabee v. Cortlan (1851), 3 Fisher, 5; Taney, 180.

That a patent cannot claim alternative combinations unless both are operative means, see Brown v. Whittemore (1872), 5 Fisher, 524; 2 O. G. 248.

That where a Claim for a combination attributes to it a certain motion, it is the means by which the motion is produced and not the motion that forms the subject of the patent, see Royer v. Schultz Belting Co. (1886), 28 Fed. Rep. 850; 38 O. G. 898.

2

the new and the old, either by expressly disclaiming the latter or by totally omitting it; and if the real invention consists only in the new arrangement of an existing combination, improving its operation or effect, the Claim must point out the new arrangement as the limit of its request for protection, or the Claim will be too broad. Features not essen

tial to the combination should not be introduced into the Claim. If the new combination forms merely a part of some art or instrument of wider scope, the other portions of the art or instrument should not be mentioned, where the new combination can be adequately set forth without them; and when their statement becomes necessary they should be disclaimed. Nor should the Claim embrace the connecting mechanism by which the new combination is united to the principal invention, except under the same necessity and coupled with a similar disclaimer.5

2 In The Corn Planter Patent (1874), 23 Wall. 181, Bradley, J.: (224) "Where a patentee, after describing a machine, claims as his invention a certain combination of elements, or a certain device, or part of the machine, this is an implied declaration, as conclusive, so far as that patent is concerned, as if it were expressed, that the specific combination or thing claimed is the only part which the patentee regards

as new.

True, he or some other person may have a distinct patent for the portions not covered by this; but that will speak for itself. So far as the patent in question is concerned, the remaining parts are old, or common and public." 6 O. G. 392 (400).

That all unclaimed elements of the described combination are thereby conceded to be old, see Rowell v. Lindsay (1881), 10 Bissell, 217; 19 O. G. 1565; 6 Fed. Rep. 290; Conover v. Roach (1857), 4 Fisher, 12; Batten v. Taggert (1851), 2 Wall. Jr. 101. This concession relates only to the patent in question; the unclaimed matter in itself may really be new and reserved for a future patent. See § 506 and notes, ante.

3 That where the Claim covers a combination which in its general character is old, the special construction in which the novelty consists must be pointed out or it will be too broad, see Terry Clock Co. v. New Haven Clock Co. (1878), 17 0. G. 908 ; 3 Bann. & A. 332.

4 That a Claim for a combination should not cover non-essential elements, see Rapid Service Store R. R. Co. v. Taylor (1887), 42 O. G. 721; Royer v. Schultz Belting Co. (1886), 28 Fed. Rep. 850; 38 O. G. 898; Hancock Inspirator Co. v. Jenks (1884), 21 Fed. Rep. 911; Ex parte Kitson (1881), 20 O. G. 1750; Furbush v. Cook (1857), 2 Fisher, 668.

That an unessential part is not an element unless claimed as such, see Bradley v. Dull (1884), 27 O. G. 625; 19 Fed. Rep. 913. See also § 278 and notes, ante.

5 That a Claim for a combination should not include the connecting mechanism unless it is an element in the combination or is essential to the comprehension of what is claimed, see Ex parte Skinner (1881), 19 O. G. 662.

§ 526. The Claim for a Combination may be Stated in any Intelligible Form.

Any form of words may be employed in a Claim for a combination provided it accurately describes the real invention. To enumerate the elements, and to state explicitly the method of their combination and the law of their co-operation, constitutes a perfect Claim; but such a statement is not always possible. The inventor is not obliged to understand, sufficiently to formulate in words, the mode in which these elements unite and act upon each other or upon their common object. It is enough that he has actually combined them and thereby produced a new and useful operative means; and any language in which he can make his invention so far intelligible to the public that they can practise it themselves, and can perceive the limits of the exclusive privilege he claims, answers the requirements of the law. Thus a Claim for the described elements in such a combination as will achieve a certain result, or a Claim for such an arrangement of the elements as will produce a given effect, or a Claim for so much of the mechanism described as accomplishes a particular purpose,- have been allowed, where the Description indicated to those skilled in the art such combinations, arrangements, or portions of the mechanism as gave clearness and precision to the Claim.2 No such Claim can be con

§ 526. 1 That a Claim for a combination must embrace enough to produce a distinct, definable, and unitary result, though not necessarily enough to produce the entire result aimed at, see Ex parte Rheutan (1874), 5 O. G. 521; Ex parte Farrow (1872), 2 O. G. 57.

That a Claim for an inoperative combination is void, see Torrant v. Duluth Lumber Co. (1887), 39 O. G. 1425; 30 Fed. Rep. 830.

2 In Renwick v. Pond (1872), 10 Blatch. 39, Blatchford, J.: (49) "Claiming the arrangement of a combination, when the arrangement is such as to produce a given mechanical result of the combination, is not a Claim to a function. The result is not claimed ir

respective of the means producing it. The means alone are claimed, and claimed only when specially arranged to produce a given result. This is very far from claiming a function." 20. G. 392 (395); 5 Fisher, 569 (579).

In Silsby v. Foote (1852), 14 How. 218, Curtis, J.: (226) "When a Claim does not point out and designate the particular elements which compose a combination, but only declares, as it properly may, that the combination is made up of so much of the described machinery as effects a particular result, it is a question of fact which of the described parts are essential to produce that result; and to this extent, not the construction of the Claim, strictly speak

strued to extend beyond the matter previously described. Whether it contains the phrase "substantially as described" or not, it must be limited to the elements and mode of union already set forth at length in the Description.3

§ 527. The Claim for a Combination Covers only the Precise

A Claim for a combination covers the exact combination claimed and nothing more. It does not protect the elements of the combination, nor their mode of union, nor their cooperative law, separately considered. It does not embrace any other union of the same elements with each other, or with additional elements, nor a combination of a portion of these elements among themselves.2 Where it omits certain ing, but the application of the Claim sufficiently certain, see Babcock & should be left to the jury." Wilcox Co. v. Pioneer Iron Works (1888), 43 O. G. 756.

elements it excludes them from the combination, though they are in fact essential to it as an operative means; and where it treats certain elements as necessary they cannot afterwards be declared by the inventor to be unnecessary, although his real invention was complete without them.8

§ 528. The Claim for a Combination may be Joined with

Claims for its Elements and Sub-combinations.

The specification of a combination may contain several different Claims. Besides the Claim for the combination as a whole, each of its elements and sub-combinations, if new and patentable inventions, may be also claimed, even where they are useless except as portions of the principal invention.1 But Claims for the same element or sub-combination, as performing functions not relating to the combination as a whole, and Claims for different combinations though composed of the same elements, cannot be inserted, unless they come within the general rules concerning the joinder of inventions.2

see Tate v. Thomas (1885), 30 O. G. 345; Ex parte Marsh (1872), 2 O. G. 197.

That elements omitted from the Claim are thereby excluded from the combination, see § 156, note 2, and §§ 278, 282 and notes, ante.

That when devices are described as useful only in combination with other devices a Claim for the former as a combination includes the latter also, see Ex parte West (1872), 2 O. G. 30.

That a Claim including non-essential elements makes them essential, and the patentee cannot afterwards assert that they are unnecessary, see Van Camp v. Maryland Pavement Co. (1888), 43 O. G. 884; Royer v. Schultz Belting Co. (1886), 28 Fed. Rep. 850; 38 O. G. 898; Fay v. Cordesman (1883), 109 U. S. 408; 25 O. G. 1277; Le Fever v. Remington (1882), 22 O. G. 1537; 13 Fed. Rep. 86; 21 Blatch. 80; Coolidge . McCone (1874), 2 Sawyer, 571; 5 0. G. 458.

That a Claim for a combination makes essential all parts which are named as, or must be necessarily inferred to be, elements, but not parts used as connecting or moving factors alone, see Thompson v. Gildersleeve (1888), 43 0. G. 886.

§ 528. 1 That the elements, if new, may be separately claimed, see Stevens v. Pritchard (1876), 2 Bann. & A. 390; 4 Clifford, 417; 10 O. G. 505. See also § 472 and notes, ante.

That the elements may be claimed, though useless out of the combination, see Henderson v. Cleveland Co-operative Stove Co. (1877), 12 O. G. 4; 2 Bann. & A. 604.

2 That different combinations of the same elements cannot be covered by one patent, see Ex parte Shepard (1872), 3 O. G. 522.

That different combinations of the same elements as performing different functions, cannot be claimed in one patent, see Pattee v. Moline Plow Co.