§ 529. The Claim for an Art: its General Requisites.

A Claim for an art should enumerate the acts in which its essential character resides, and set them forth in such a manner as to identify them with the acts delineated in the Description. The mode of doing this is left to the discretion of the inventor, and to the peculiar nature of the process he attempts to claim. But in claiming this class of inventions there is especial danger of a departure from the terms of the Description. A Description relating to the production of an effect by the use of mechanism should conclude with a Claim for the machine only, not for the art of using it, unless its use for the purpose named is a distinct invention and has been so described. On the other hand, a Description setting forth a new process, and referring to the apparatus employed in practising it merely as illustrating and explaining the new art, should be followed by a Claim for the art only, not for the apparatus so employed.2 Where an effect is produced by new chemical forces, or by the new application of some natural force, the effect though new is not the proper subject of a Claim; the use of the new forces and the new use of the natural force are arts and must be so claimed. A Claim for

(1881), 22 O. G. 173; 9 Fed. Rep. 821; machines will perform it, see Ex parte 10 Bissell, 377. Wintherlich (1879), 17 O. G. 55. See also § 172 and notes, ante.

That each Claim must cover a complete and operative combination in the general direction of the invention, see Ex parte Holt (1884), 29 O. G. 171.

$529. 1 That a Claim for a mechanical process, which is a mere function of the described machine, is not proper, see Ex parte Simonds (1888), 44 O. G. 445; Case v. Hastings (1875), 7 0. G. 557; Piper v. Brown (1870), 4 Fisher, 175; Holmes, 20.

That a Claim for a combination of mechanical elements cannot be construed to cover a process, but must be limited to the mechanical parts and equivalents, see Grier v. Wilt (1887), 120 U. S. 412; 38 O. G. 1365.

That when the functions of a machine constitute a new process, the process may be claimed though no other

That a Claim for a process, consisting in the operation of a machine, is only a Claim for the machine, see Dederick v. Cassell (1881), 20 O. G. 1233; 9 Fed. Rep. 306; 14 Phila. 503.

See also §§ 466, 473, 474, and notes,

ante.

2 That where a new process is described but the Claim is limited to the apparatus which performs it, the patent is void unless the apparatus is also new and patentable, see Boston Elastic Fabrics Co. v. East Hampton Rubber Thread Co. (1874), 5 O. G. 696; Holmes, 372; 1 Bann. & A. 222.

8 That where the effect is obtained by the new use of natural forces, the new use should be claimed as an art, see Piper v. Brown (1870), 4 Fisher,

an art covers all ways of practising it, and if its elements possess equivalents, a general Claim may cover it under every form; and a specific Claim, following the particular method of performing it laid down in the Description, will cover it under the method thus described. But the Claim for a process does not embrace the product, although no other mode of producing it is yet discovered; nor does a Claim for several arts in combination protect these arts except as thus co-operating to a common end.5 A Claim for each step of an art may be joined with the Claim for the art itself whenever such steps are true sub-processes and are complete inventions in themselves, but not where they are incapable of use as operative means when severed from each other.6

§ 530. The Claim for a Machine: its General Requisites.

A machine must be claimed as a specific piece of mechanism, not as a mode of operation, a principle, an idea, a means of producing an effect, or an effect produced.1 If the inven

175; Holmes, 20; O'Reilly v. Morse (1853), 15 How. 62.

That where an effect is produced by chemical action the Claim should be for a process, see Piper v. Brown (1870), 4 Fisher, 175; Holmes, 20.

That a Claim for the "process of constructing" by doing certain acts is a Claim for a process, see Andrews v. Cross (1881), 8 Fed. Rep. 269; 19 Blatch. 294; 19 O. G. 1705.

That a general Claim for a process covers all ways of performing it, see Tilghman v. Proctor (1880), 102 U. S. 707; 19 O. G. 859; Bridge v. Brown (1871), Holmes, 53.

That a Claim for a process to whatever substance, known or unknown, it may be applied is too broad, see Bailey Washing & Wringing Mach. Co. v. Lincoln (1871), 4 Fisher, 379.

That a Claim for the process does not necessarily cover the product, see Goodyear v. Wait (1867), 5 Blatch. 468; 3 Fisher, 242.

That a Claim for a process does not
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protect the product if the product can be made in any other way, see Goodyear v. Railroad (1853), 1 Fisher, 626; 2 Wall. Jr. 356.

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

6 That each stage of a process, if a true sub-process, may be also covered by a separate Claim, see Ex parte Wilson (1879), 16 O. G. 95; Ex parte Smith (1879), 16 O. G. 630.

That different steps of an entirety process cannot be covered by separate Claims, see Ex parte Wheat (1879), 16 O. G. 360.

That a Claim for a process does not cover either the separate steps or the materials used unless they are clearly pointed out and described in the specification, see Western Electric Co. v. Ansonia Co. (1885), 114 U. S. 447; 31 O. G. 1305.

§ 530. 1 That a machine must be

tion does not embrace an entire machine, the parts invented must be clearly pointed out and claimed, and the parts not invented must not be mentioned, or if mentioned must be disclaimed.2 The function of the machine must not be claimed, nor its mode of operation; though if this function constitutes a new process it is patentable as an art, and a Claim for it may be joined with those for the machine unless the general rules regarding the joinder of inventions would be thereby infringed. Claims for each subordinate piece of mechanism may be joined with those for the principal machine, though not capable of use in any other known connection.*

§ 531. The Claim for a Manufacture: its General Requisites. A manufacture must be claimed as a new product, apart from any Claim for the process of making it or for the pur

operation of a machine, the Claim must be for the machine, not the process, see Dederick v. Cassell (1881), 20 O. G. 1233; 9 Fed. Rep. 306; 14 Phila. 503; Piper v. Brown (1870), 4 Fisher, 175; Holmes, 20.

That where the Description covers a process and the Claim covers only a machine, unless the machine is new the patent is void, see Boston Elastic Fabrics Co. v. East Hampton Rubber Thread Co. (1874), 5 O. G. 696; Holmes, 372; 1 Bann. & A. 222.

That when the functions of a machine are a new process the latter may be claimed as a process, though no other machine will perform it, see Ex parte Wintherlich (1879), 17 O. G. 55. also §§ 473, 474, and notes, ante.

See

That several Claims for the same device, as accomplishing several results, may be made in the same patent, see Ex parte Smith (1880), 17 O. G. 271.

That each subordinate mechanism may be separately claimed, though not useful by itself, see Wells v. Jacques (1874), 5 O. G. 364; 1 Bann. & A. 60.

pose for which it is employed.1 If the product is new in itself, it should be set forth in the Claim by a simple enumeration of its essential qualities, without reference to the mode in which it is produced; but where such a statement is impossible it may be defined as the product resulting from a described process, or in any other sufficient manner.2 When the character of the product depends upon its method of production, it must be claimed only as produced by that specific process, and the same form of Claim must be employed when the process and the product are inseparable. The words "article of manufacture" have no particular significance in a Claim, and do not aid nor impair its validity. The name of the product claimed refers to it as it is delineated in the Description, not as it is in itself or may become known in the arts.5 A Claim for a new product resulting from the use of substances having certain described qualities does not cover a product resulting from the use of subsequently discovered substances having the

§ 531. That a new product may be claimed by itself, see Glue Co. v. Upton (1874), 4 Clifford, 237; 6 O. G. 837; 1 Bann. & A. 497.

That the manufacture must be claimed independently of the process, see Ex parte Mayall (1873), 4 O. G.

210.

That a Claim for the manufacture should not explain nor set forth the process by which it is made, see Ex parte Shalters (1879), 15 O. G. 970; Ex parte Cobb (1874), 5 O. G. 751; Ex parte Mayall (1873), 4 O. G. 210.

2 That a product may be claimed by enumerating its qualities, and setting forth the mode of its production, in the Description and referring to these in the Claim, see Ex parte Tweddle (1876), 10 O. G. 747.

are inseparable the product may be claimed as the result of employing the process, see Glue Co. v. Upton (1874), 4 Clifford, 237; 6 O. G. 837; 1 Bann. & A. 497.

That the Claim may be for the product however made, or as the result of a given process, see Merrill v. Yeomans (1874), 1 Bann. & A. 47; Holmes, 331; 5 O. G. 267.

That a Claim for a product as produced by any process which will produce a like result covers it only when made by equivalent processes, see Pickhardt v. Packard (1884), 22 Fed. Rep. 530; 23 Blatch. 23; 30 O. G. 179.

4 That the phrase "article of manufacture" has no special significance in a Claim, see Ex parte Adams (1873), 3 O. G. 150; Ex parte Wattles (1873), 3 O. G. 291.

That a product may be claimed by describing it, and the mode of making 5 That the name of the product it, and stating it to be new, see United claimed refers to it as described, not as Nickel Co. v. Pendleton (1883), 15 it actually exists, see Anilin v. CumFed. Rep. 739; 24 O. G. 704; 21 mins (1879), 4 Bann. & A. 489; AniBlatch. 226. lin v. Hamilton Mfg. Co. (1878), 3 That where product and process Bann. & A. 235; 13 O. G. 273.

same qualities; nor is any product so embraced in the process which produces it that a Claim for the process will protect the product when produced in any other manner. Claims for a new manufacture and the means of making it, whether the means be an art or a machine, may be joined subject to the limitations of the general rules already stated.8

§ 532. The Claim for a Composition of Matter: its General Requisites.

A single composition of matter requires only a single Claim, in which the invention is set forth, like any other combination, by enumerating its elements, and stating the mode of their union, and the essential qualities of the resulting composition. If such a Claim cannot be framed, whatever defines and distinguishes the composition from all others will suffice,

as where it describes the compound as the result of mixing certain ingredients in a certain manner. A Claim for a composition formed of specific known ingredients should mention each of them, and if it states no definite proportions, or mode of intermixture, those named in the Description are presumed to be referred to in the Claim.2 A Claim for a chemical composition covers only the same use of the same or equivalent chemical ingredients.3 A Claim for any union of less than the whole group of ingredients employed in the production of

6 That a Claim for a product formed of certain described substances having certain qualities does not cover products formed of subsequently discovered substances having the same qualities, see Goodyear v. Berry (1868), 2 Bond, 189; 3 Fisher, 439.

7 That a Claim for the process does not cover the product, if it can be made in any other manner, see Goodyear v. Wait (1867), 5 Blatch. 468; 3 Fisher, 242; Goodyear v. Railroad (1853), 1 Fisher, 626; 2 Wall. Jr. 356.

8 That the article and the means of producing it may be separately claimed, see Merrill v. Yeomans (1877), 94 U. S. 568; 11 O. G. 970.

See also § 475 and notes, ante.

§ 532. That a composition of matter requires but a single Claim, see Ex parte Wheat (1879), 16 O. G. 360; Ex parte Loeser, (1876), 9 O. G. 837.

2 That if the composition consists of well-known ingredients the Claim must enumerate them, see Ex parte Williams (1876), 10 O. G. 748.

That a general Claim for a composition of certain ingredients is a Claim for them in the proportions previously described, see Loutrel v. Mellor (1871), 10. G. 48; 5 Fisher, 153.

3 That a Claim for a chemical composition covers only the same use of the same or equivalent ingredients, see Goodyear v. Berry (1868), 2 Bond, 189; 3 Fisher, 439.