The Law of Patents for Useful Inventions

the principal composition is a Claim for a different invention, and can be inserted in the same application only when so related to the former that a joinder is permitted.*

§ 533. The Claim for a Design: its General Requisites.

A Claim for a design must be as distinct and specific as a Claim for any other invention, if the nature of the design will permit. Nothing beyond the configuration or ornamentation, which constitutes the invention, must be mentioned in the Claim; neither the qualities of the substance upon which the design is imposed, nor the mechanical functions which the substance may thus be enabled to perform, being any part of the design itself.1 The Claim may consist either of a verbal description of the essential features of the design, or of such references to the drawings as indicate the lines and figures characterizing the invention.2 Different designs cannot be embraced in a single Claim; and Claims for distinct designs cannot be joined unless so dependent on each other as to come within the usual rules.8

§ 534. The Claim for an Improvement: its General Requisites. An improvement is an invention essentially distinct from the original art or instrument to which it pertains; and a Claim for an improvement must, therefore, not only define the improvement, like any other new invention, but also fully and accurately distinguish between it and the old invention. In order

4 That a second Claim for a composition of fewer or different ingredients is a Claim for a different invention, and is improper unless the two inventions may be joined in one patent, see Ex parte Loeser (1876), 9 O. G. 837.

See also § 477 and notes, ante.

§ 534. 1 That a Claim for an improvement must clearly state the exact improvement made, see Ex parte McMurray (1875), 8 O. G. 943; Whittemore v. Cutter (1813), 1 Gallison, 478; 1 Robb, 40; Hill v. Thompson (1818), 1 Web. 239; 1 Abb. P. C. 304.

That the Claim for an improvement

to accomplish this, such a Claim should confine itself entirely to the characteristics of the improvement made, embracing nothing which is not necessarily connected with or related to it, although the part or group of parts of which the improvement consists will not operate except in union with the original invention.2 If it is requisite to the precise definition of the improvement that mention should be made of any features of the original invention, it must be apparent from the language used that these features of the original are not claimed. Two or more distinct improvements cannot be joined in the same Claim, though Claims for distinct improve

must distinguish the new from the old, see Brown v. Selby (1871), 2 Bissell, 457; 4 Fisher, 363; Bray v. Hartshorn (1860), 1 Clifford, 538.

That an applicant for an improvement may be required to explicitly distinguish the old and the new, but not to acknowledge the old to be old or make any other admission, see Ex parte Massicks (1887), 38 O. G. 1489.

2 In Ex parte McMurray (1875), 8 O. G. 943, Spear, Act. Com.: (943) "It is always a very difficult and delicate question to determine how subordinate Claims for an improvement in a mechanism of any considerable number of parts, or in any respect complicated, should be limited, and no exact rule can be laid down for such cases. Unquestionably, an applicant having made an improvement upon a previously existing machine may lay claim to the specific part which he has improved, or to any reasonably well-defined group of parts thus improved, even although that part or that group of parts do not alone operate to produce any beneficial result. No one is misled by any such Claim, but understands readily, even if it be not specifically stated, that the improvement is upon a specified part of the machine to which it relates. To require the applicant to specify all the parts necessary to the complete opera

tion would be to defeat the very object for which he seeks a patent, and would be plainly against reason. But to how small a number of elements he shall reduce his Claim is not so easy to determine; but each case must be judged in a great measure by itself, care only being taken that the Claim do not mislead."

8 That a Claim to improvements must be limited to them by express terms or fair construction, see Troy Laundry Mach. Co. v. Bunnell (1886), 27 Fed. Rep. 810; 23 Blatch. 558.

That it is not sufficient that persons skilled in the art can distinguish the improvement from the original invention, but the Claim itself must show it, see Foxwell v. Bostock (1864), 10 L. T. Rep. N. s. 144.

That a Claim for an improvement must be limited to the new arrangement, and cannot embrace substitutes different in character and form, merely because they perform the same functions and effect the same results, see Dyer v. National Hod Elevating Co. (1885), 24 Fed. Rep. 182.

That a Claim for one of a series of improvements must be restricted to the precise form and arrangement described, see Bragg v. Fitch (1887), 121 U. S. 478; 39 O. G. 829.

ments may be joined in the same application. Where several parts of the original have been improved, and such improvements can be so far treated as but one invention as to be properly included in a single Claim, the entire Claim is void if either of the alleged improvements happens to be old. A Claim for the whole invention, when the advance is only an improvement, is invalid, though limited to the invention "as improved." In construing a Claim for an improvement the original is always kept in view, and such an interpretation given to the Claim, if possible, as will protect the actual improvement made."

$535. The Claim for a Generic Invention: its Scope.

Several distinct inventions often occupy toward some other invention the relation of species to a genus. A generic invention is one in which are represented the essential characteristics of a group of arts or instruments, each of which, in addition to the characteristics common to the group, possesses other specific characteristics which distinguish it from all the rest. The same invention may be generic to the individuals of its own genus, and specific in its relations to some wider invention representing the group to which itself belongs. Thus an invention consisting in the use of a class of substances for a certain purpose is generic as to an invention consisting in the use for the same purpose of some particular substance of that class; and the latter is, in its turn, generic toward an invention consisting in the use for the same purpose of some specific quality of that particular substance.1 A patent for

4 See § 478 and notes, ante.

5 That when the Claim covers several associated improvements it is void if either be old, see Heinrich v. Luther (1855), 6 McLean, 345; Moody v. Fiske (1820), 2 Mason, 112; 1 Robb, 312.

That where the invention is an improvement it alone can be patented, and a Claim for the whole art or instrument is void, see Johnston Ruffler Co. v. Avery Mach. Co. (1886), 28 Fed. Rep. 193; Phillips v. Page (1860), 24 How. 164; Woodcock v. Parker (1813),

1 Gallison, 438; 1 Robb, 37; contra, Goodyear v. Matthews (1814), 1 Paine, 300; 1 Robb, 50. See also §§ 513 and notes, ante, and 537 and notes, post.

7 That if a fair interpretation shows that only the improvement is claimed the patent is valid, see McAlpine v. Mangnall (1846), 3 C. B. 496.

§ 535. 1 That a patent for the use of a substance in a process is generic in relation to a patent for the use of that substance when of a certain quality, see Slade v. Blair (1880), 17 O. G. 261.

the genus always covers the species, and hence every subsequent inventor of a specific invention, though entitled to protection for what he has himself conceived, holds his exclusive privilege subject to the general rights of the inventor of the generic invention.2 As the creation of each one of the specific inventions includes the creation of all the characteristics common to the group, the inventor of any of the species may obtain a patent covering the genus, unless some other inventor has previously conceived the same fundamental idea, and is using due diligence in reducing it to practice. These relations between inventions and the rights which grow out of them require attention when the Claims of patents are to be stated or construed.

§ 536. The Claim for a Generic Invention may be Joined with a Claim for One Species.

Where an invention possesses only the characteristics common to the group, it represents the genus as distinguished from the species, and its description will support only a generic Claim. If in addition to these common characteristics it has special qualities of its own, it represents one species as well as the genus, and its description will support a specific as well as a generic Claim. In this case a generic Claim alone would leave the peculiar characteristics of the species unprotected; while a specific Claim alone would limit the patent to an invention having both the common qualities of

2 That a patent claiming the genus covers all subsequent patents claiming only the species, see Ex parte Ewart (1880), 17 O. G. 448.

That a specific Claim is always subject to the generic, see Walsh v. Shinn (1879), 16 O. G. 1006.

That generic Claims do not cover functions and results, see Ex parte Beavis (1879), 16 O. G. 1233.

8 That an inventor of a species before any one else invents the genus, or any other species, may claim the genus also, see Ex parte Gardner (1880),

17 O. G. 626; Ex parte Ewart (1880), 17 O. G. 448.

That no patent with generic Claims can be granted after one with a Claim for the species, see Ex parte Upton (1884), 27 O. G. 99.

That a generic patent must describe one or more species, see Ex parte Wilson (1879), 16 O. G. 95.

§ 536. 1 That a generic Description will support only a generic Claim, see Ex parte McClintock (1880), 17 O. G. 267.

That generic Claims do not cover effects, see Ex parte Beavis (1879), 16 0. G. 1233.

the genus and the particular qualities of the species, the genus being thus left open to the public.2 The description of both genus and species will not prevent this result in the absence of a proper Claim for each; and where the description is either generic alone or specific alone the phrase "substantially as described" in the Claim confines the Claim to the generic or specific invention thus described. Where the com

mon characteristics of the genus constitute an operative means the genus and each one of its species are distinct inventions, and every member of the group is also an invention by itself, apart from and independent of the others. The joinder of

Claims for two or more of these must depend on their connection with each other under the usual rules upon that subject; though where the same invention represents the genus and one species, both a generic and a specific Claim may be inserted. That several species are described as embraced under the genus does not extend this power of joinder, nor does the statement in the Description that one of two described species is the best deprive the inventor of the right to claim the other and leave that unclaimed.5

2 That no specific Claim can be made unless the species is described, see Ex parte McClintock (1880), 17 O. G. 267.

That a Claim for a species limits the patent to that species, though the Description covers a generic invention, see Hawes v. Gage (1871), 5 O. G. 494.

3 That when the Description is specific the Claim for the invention "substantially as described" covers the species only, see Ex parte Ewart (1880), 17 O. G. 448.

That a genus and each of its species are distinct inventions, see Ex parte McClintock (1880), 17 O. G. 267.

In Ex parte Ewart (1880), 17 O. G. 448, Paine, Com. : (449) "While two species can be set forth by way of illustration in one Description, they cannot both be set forth either in separate specific Claims in one patent or in one specific Claim; nor can both or either

of them be set forth in a generic Claim. Both cannot appear in separate specific Claims in one patent, for that would admit two distinct and independent inventions into one patent. Both can. not appear in one Claim, for that would make the Claim as well as the patent double. One cannot be so shown in a generic Claim, for that would transform it into a specific Claim. Both cannot appear in a generic Claim, for they would make the Claim double as well as specific. A Claim cannot be framed to cover generically several specific inventions by merely aggregating specific Claims for those inventions. Its terms must be broad enough to cover both without specifically claiming either, and yet not broad enough to trench upon any distinct genus."

See also Ex parte McClintock (1880), 17 0. G. 267; Ex parte Morrison 1879), 16 O. G. 359.

That when the steps of an entirety

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