or consisting in substantial variations in or improvements on the old, subsequently discovered attributes of the invention same invention which was described or indicated in the original." 19 O. G. 62 (64). That a re-issue cannot cover more than the original invention as determined by the state of the art at the date of the first patent, see Carlton v. Bokee (1873), 17 Wall. 463; 6 Fisher, 40; 2 O. G. 520. Rep. 99; 20 Blatch. 15; 20 O. G. 1162; Averill Chemical Paint Co. v. National Mixed Paint Co. (1881), 9 Fed. Rep. 462; 20 Blatch. 42; 22 O. G. 585; Putnam v. Tinkham (1880), 4 Fed. Rep. 411; Giant Powder Co. v. California Vigorit Powder Co. (1880), 4 Fed. Rep. 720; 6 Sawyer, 508; 18 O. G. 1339; American Middlings Purifier Co. v. Atlantic Milling Co. (1879), 5 Dillon, 127; 4 Bann. & A. 148; 15 O. G. 467; Curtis v. Branch (1879), 4 Bann. & A. 189; 15 O. G. 919; Kerosene Lamp Heater Co. v. Littell (1878), 3 Bann. & A. 312; 13 O. G. 1009; Powder Co. v. Powder Works (1878), 98 U. S. 126; 15 O. G. 289; Vogler v. Semple (1877), 11 O. G. 923; 2 Bann. & A. 556; 7 Bissell, 382; Manufacturing Co. v. Ladd (1877), 2 Bann. & A. 488; 11 O. G. 153; Russell v. Dodge (1876), 93 U. S. 460; 11 O. G. 151; Ex parte Aldrich (1876), 9 O. G. 407; Ex parte Baldwin (1876), 9 O. G. 639; Putnam v. Yerrington (1876), 9 O. G. 689; 2 Bann. & A. 237; Tucker v. Tucker Mfg. Co. (1876), 10 O. G. 464; 2 Bann. & A. 401; 4 Clifford, 397; Stevens v. Pritchard (1876), 10 O. G. 505; 4 Clifford, 417; 2 Bann. & A. 390; Giant Powder Co. v. California Powder Works (1875), 3 Sawyer, 448; 2 Bann. & A. 131; La Baw v. Hawkins (1874), 1 Bann. & A. 428; 6 O. G. 724; Ball v. Withington (1874), 1 Bann. & A. 549; 6 O. G. 933; Ex parte Wheeler (1873), 4 O. G. 5; Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387; Aultman v. Holley (1873), 6 Fisher, 534; 11 Blatch. 317; 5 O. G. 3; Wells v. Gill (1873), 6 Fisher, 574; 4 O. G. 669; Carew v. Boston Elastic Fabric Co. (1871), 1 O. G. 91; 5 Fisher, 90; 3 Clifford, 356; Brown v. Selby (1871), 4 Fisher, 363; 2 Bissell, 457; Parham v. American But That a re-issue cannot embrace any invention other than that which the patentee had fully invented and the government had endeavored to protect by the original patent, see Cornell v. Weidner (1888), 127 U. S. 261; 43 O. G. 985; Haines v. Peck (1886), 26 Fed. Rep. 625; 35 O. G. 1227; Hubel v. Dick (1886), 24 Blatch. 139; 28 Fed. Rep. 656; 37 O. G. 1480; Schillinger v. Cranford (1885), 4 Mackay, 450; 37 O. G. 1349; Farmers' Friend Mfg. Co. v. Challenge Corn Planter Co. (1885), 23 Fed. Rep. 42; 30 O. G. 661; Reed v. Chase (1885), 25 Fed. Rep. 94; 33 O. G. 996; Flower v. Detroit (1884), 22 Fed. Rep. 292; Dryfoos v. Wiese (1884), 19 Fed. Rep. 315; 26 O. G. 639; 22 Blatch. 19; Parker & Whipple Co. v. Yale Clock Co. (1883), 18 Fed. Rep. 43; 25 0. G. 290; 21 Blatch. 485; McKay v. Stowe (1883), 17 Fed. Rep. 516; Hoffheins v. Russell (1883), 107 U. S. 132; 23 O. G. 2030; Andrews v. Hovey (1883), 26 O. G. 1011; 5 McCrary, 181; 16 Fed. Rep. 387; Lorillard v. McAlpin (1882), 14 Fed. Rep. 112; Newton v. Furst & Bradley Mfg. Co. (1882), 14 Fed. Rep. 465; 11 Bissell, 405; Neacy v. Allis (1882), 13 Fed. Rep. 874; 22 O. G. 1621; Hayes v. Seton (1882), 20 Blatch. 484; 12 Fed. Rep. 120; Streit v. Lauter (1882), 11 Fed. Rep. 309; Hart v. Thayer (1882), 10 Fed. Rep. 746; 20 Blatch. 315; 21 O. G. 791; 22 O. G. 1787; Meyer v. Maxheimer (1881), 9 Fed. or of any of its parts, independent arts or instruments though tracing their origin to the same fundamental idea, and new matters of any kind, are equally beyond the scope of the original patent and of any correction or enlargement of its terms by a re-issue.2 tonhole, Overseaming, & Sewing Machine Co. (1871), 4 Fisher, 468; Hoffheins v. Brandt (1867), 3 Fisher, 218; Cahart v. Austin (1865), 2 Clifford, 528; 2 Fisher, 543; Whitely v. Swayne (1865), 4 Fisher, 117; Sickles v. Evans (1863), 2 Fisher, 417; 2 Clifford, 203; Poppenhusen v. Falke (1862), 5 Blatch. 46; 2 Fisher, 213; Poppenhusen v. Falke (1861), 2 Fisher, 181; 4 Blatch. 493; French v. Rogers (1851), 1 Fisher, 133; Batten v. Taggert (1851), 2 Wall. Jr. 101; Knight v. Baltimore & Ohio R. R. Co. (1840), Taney, 106; 3 Fisher, 1. That the re-issue cannot introduce a different principle though it were known to the patentee when he obtained the original patent, see Dyson v. Danforth (1865), 4 Fisher, 133. That a re-issue cannot claim devices used with, but not part of, the original invention, see Ex parte Barker (1873), 4 O. G. 155. That where the original patent accurately defines the invention, a re-issue cannot embrace antecedent improvements not within the limits of the original patent, see Funck v. Doty (1877), 13 O. G. 322. That where the original patent covers but one form of an invention, it cannot re-issue to cover other forms, see Steam Gauge & Lantern Co. v. Miller (1882), 11 Fed. Rep. 718; N. Y. Bung & Bushing Co. v. Hoffman (1881), 9 Fed. Rep. 199; 20 Blatch. 3; 20 O. G. 1451; Washburn & Moen Mfg. Co. v. Haish (1880), 10 Bissell, 83; 7 Fed. Rep. 906; Manufacturing Co. v. Ladd (1877), 2 Bann. & A. 488; 11 O. G. 153; Wicks v. Stevens (1876), 2 Bann. & A. 318; 2 Woods, 310. That a patentee is not entitled to a re-issue covering any matter which, according to the records of the Patent Office, he was not the first to disclose, see Ex parte Platts (1879), 15 O. G. 827. That a re-issue will be sustained if the court can see that the patentee only seeks to cover his real invention, see Crandall v. Parker Carriage Goods Co. (1884), 28 O. G. 369; 20 Fed. Rep. 851. 2 In Ex parte Seibert (1879), 16 O. G. 262, Paine, Com. : (265) "Where, however, he makes no discovery of the art of lubricating by hydrostatic pressure at all, but devises and patents a particular mechanism for lubricating by steam pressure, never suspecting the operativeness of that particular mechanism by hydrostatic pressure until after his patent has been granted, he is not entitled on a re-issue to a broad Claim for an art or method of hydrostatic lubrication, for he had not invented or discovered any such art or method when he took out his patent. But he is entitled, on a re-issue, to a Claim for just what he invented, — that is to say, for a machine in a particular form, involving the use of hydrostatic pressure. His monopoly of the method is limited to the method used in the precise construction invented." In U. S. & Foreign Salamander Felting Co. v. Haven (1875), 9 O. G. 253, Treat, J.: (254) "The repeated decisions by the courts, and especially by the United States Supreme Court in the 1st, 17th, and 19th Wallace, indicate with sufficient distinctness that not only no new matter shall be introduced, § 662. Defects Amendable by Re-issue are Defects of Statement only, not of Subject-Matter. It thus appears that the sole office of a re-issue is to correct faults of statement in the description and claim of the origi but that an enlargement of the original Claim growing out of the subsequent advance of the art is not to be tolerated. The reason of the rule is obvious. Every patent as to novelty or utility depends on the state of the art at the time of the claim made or patent issued; and, therefore, if a party, after learning from a subsequent advance of the art the worthlessness of his original invention, is to be permitted to claim a re-issue incorporating what was not originally in his mind, and what had been afterward suggested to him only by advances in the art made by others, then he could, it may be, even without any new invention, override all the elements which would serve to test the validity of the new application. In other words, having procured a worthless patent, and having subsequently learned from the advancing art how, by changing the terms of his patent, it could be made of value, he would, if a re-issue including the new matter were permitted, have the re-issue not only relate back to the date of the original patent, but absorb within its privileges all subsequent matters wholly unknown to and unthought of by him originally." 3 Dillon, 131 (134); 2 Bann. & A. 164 (166). That a re-issue must be for the same invention as the original patent, and cannot be expanded to cover intervening inventions, see Meyer v. Maxheimer (1881), 20 Blatch. 15; 20 O. G. 1162; 9 Fed. Rep. 99. That matter discovered by using the original invention cannot be embraced in the re-issue, see Andrews v. Hovey (1883), 5 McCrary, 181; 16 Fed. Rep. 387; 26 O. G. 1011. II. - 21 VOL That where the utility of an invention depends upon some property of matter which is not discovered until after the date of the original patent, no re-issue can claim and appropriate the property of matter as a feature in the invention, see Andrews v. Hovey (1883), 5 McCrary, 181; 16 Fed. Rep. 387; 26 O. G. 1011. That a re-issue cannot embrace later inventions, no matter how meritorious the original may be, see Manufacturing Co. v. Ladd (1877), 2 Bann. & A. 488 ; 11 0. G. 153. That to cover a new invention by suppressing certain features of the old is not allowable, see Matthews v. Iron Clad Mfg. Co. (1888), 124 U. S. 349; 42 O. G. 827; Matthews v. Boston Mach. Co. (1882), 105 U. S. 54; 21 O. G. 1349. That a patentee cannot expand his Claims in a re-issue so as to cover the patentable invention of another, and if he does so he is liable to lose his own, see Adjustable Window Screen Co. v. Boughton (1874), 10 Phila. 251; 1 Bann. & A. 327. That a re-issue cannot contain new matter, see Ives v. Sargent (1886), 119 U. S. 652; 38 O. G. 781; Hayes v. Seton (1882), 20 Blatch. 484; 12 Fed. Rep. 120; Kerosene Lamp Heater Co. v. Littell (1878), 3 Bann. & A. 312; 13 O. G. 1009; Gong Bell Mfg. Co. v. Clark (1878), 3 Bann. & A. 211; 13 O. G. 274; Thomas v. Shoe Mach. Mfg. Co. (1878), 3 Bann. & A. 557; 16 O. G. 541; Vogler v. Semple (1877), 11 O. G. 923; 2 Bann. & A. 556; 7 Bissell, 382; Union Paper Collar Co. v. Van Deusen (1874), 23 Wall. 530; 7 O. G. 919; La Baw v. Hawkins (1874), 1 Bann. & A. nal patent.1 It is a mere method of relieving the inventor from the disastrous consequences arising out of his want of skill in drawing his specification, and of preventing the public from taking an undue advantage of his errors. Mistakes in his choice or judgment as to what he shall attempt to cover by his patent, it does not undertake to remedy.2 His present rights are adequately secured' by the power conferred upon him to repeat his statements in varied forms by as many successive re-issues as he desires, until his language corresponds exactly with the actual invention which his patent was intended to protect. If he has other rights beyond the limits of this invention, he must ensure their preservation by an independent application and a separate patent. 428; 6 O. G. 724; Whitely v. Swayne (1865), 4 Fisher, 117. See also § 668, note 10, post. § 662. 1 That a re-issue is intended to cure the inevitable defects of statement, see Blake v. Stafford (1868), 6 Blatch. 195; 3 Fisher, 294; Burr v. Duryee (1862), 2 Fisher, 275. That it is the purpose of a re-issue to make the patent better, see Jordan v. Dobson (1870), 4 Fisher, 232; 2 Abbott, U. S. 398; 7 Phila. 533; Blake v. Stafford (1868), 6 Blatch. 195; 3 Fisher, 294. That a re-issue may correct, but cannot alter, see Doane & Wellington Mfg. Co. v. Smith (1882), 24 O. G. 302; 15 Fed. Rep. 459. 2 That an error in judgment as to what the patent shall cover, or in conclusions of fact, is no ground for a reissue, see Ex parte Mahnken (1887), 40 O. G. 915; Yale Lock Mfg. Co. v. James (1884), 28 O. G. 917; 20 Fed. Rep. 903; 22 Blatch. 294. That an error in judgment as to the nature of the invention cannot be corrected by re-issue, see Hubel v. Dick (1886), 28 Fed. Rep. 656; 37 O. G. 1480; 24 Blatch. 139. That if the invention is really broader than the patentee supposes, but he describes and claims it in the orig. inal as he understands it, there is no inadvertence, accident, or mistake, and no room for a re-issue, see American Diamond Drill Co. v. Sullivan Mach. Co. (1884), 22 Blatch. 298; 21 Fed. Rep. 74; 28 O. G. 811. That an error in fixing the term of a patent, so that it fails to conform to that of a foreign patent previously granted, may be corrected by re-issue, see Buerk v. Valentine (1872), 9 Blatch. 479; 2 O. G. 295; 5 Fisher, 366. That where an American patent claimed several devices covered by sepa. rate foreign patents, of which some were expired, the devices covered by the expired patents can be excluded from the American patent by re-issue, and the patent be valid for the rest, see Ex parte Pulvermacher (1876), 10 O. G. 2. That a re-issue cannot claim matters for which the original has expired by reason of its limitation by a foreign patent, see Ex parte Siemens (1877), 11 O. G. 1107. § 663. Second Proposition: Re-issued Patent must be Confined to the Invention which the Patentee Attempted to Describe and Claim in his Original Patent. - - The second proposition, that a re-issue, being the amendment of an existing patent as distinguished from the grant of a new patent for an amendment in the invention, must be confined to the invention which the patentee attempted to describe and claim in the original patent, is equally indisputable. The fundamental theory of Patent Law that the complete and exact disclosure of the invention to the public is the consideration paid by the inventor for the monopoly created by the patent, as well as the express provisions of the statutes, require that the invention to be covered by the patent should be entirely and precisely described and claimed by the inventor in his specification; and as the patent could not lawfully have been issued, so it cannot be amended by re-issue, to embrace any subject-matter which the patentee did not endeavor at the outset to describe and claim.1 Hence, before any amendment of the patent can be § 663. 1 As the principal difficulties his application a specification in which which have arisen under the law of re- he makes an honest effort to describe issues relate to this second proposition, and to claim the invention, or separable it seems necessary, at the risk of some part, which his expected patent is inrepetition, to examine more fully the tended to protect. Until an inventor foundation on which it rests, and the has taken these four steps he is not exact truth which it expresses. In entitled to any patent whatever; and order to obtain the grant of a monop- if they have been taken he is entioly the inventor must, in the first tled to a patent only for the subjectplace, have conceived an idea of means matter which he has endeavored to and reduced it to practice in some oper- describe and claim. Now if, in the ative art or instrument. In the second first step, the idea of means which he place, he must have perceived the es- has conceived has possibilities of desential character of his invention with velopment beyond the point to which such clearness and completeness as to be he has carried it, these lie wholly outable to reproduce it, and to confer it on side of his invention, whether they are the public, in such a form as to make ever thereafter realized or not, and it available for practical use without whether, if realized, their realization the further exercise of inventive skill. is due to his own or to another's invenIn the third place, he must determine tive act. Obviously, therefore, none to patent either the entire invention of these can enter into the subjector some separable part thereof, and must matter of his patent, although when apply for a patent for that which he has the inventive act as to them becomes thus concluded to secure. In the complete they may be covered by a subfourth place, he must incorporate in sequent and independent patent. Again |