deed such a case is possible, that the rule is liberal enough toward any careful and diligent patentee, and no indulgence beyond this can be accorded to him without endangering the public interests and unjustly limiting the rights of subsequent inventors.4

§ 666. The Attempt of the Inventor to Describe and Claim the Invention may Appear either in the Original Specification, the Drawings, or the Model.

The attempt of the inventor to cover the invention by his original patent may appear either in the specification, the model, or the drawings. it were contained only in the

model, and the model has since been destroyed or lost, proper proof of its existence in the model may be offered, if consistent with the original drawings and Description." And in examining the latter for this purpose, the application for the original patent, with its various amendments and substitutions, may be consulted, as throwing light upon the actual subject-matter which the inventor did endeavor to describe.3

§ 667. How the Attempt of the Inventor to Describe and Claim

the Invention Embraced in the Re-issued Patent must
Appear in the Original Specification, Drawings, or
Model.

The attempt of the inventor to secure by his original patent the invention claimed in the re-issue is sufficiently indicated in his original specification, drawings, or model, whenever the Patent Office or the courts, by examining them in the light of the actual invention or the perfect re-issue specification, can perceive that if the original claims and descriptions had been free from substantive defects of statement the inventions. covered by the original and re-issued patents would have been identical. The Patent Office, in endeavoring to afford the inventor the widest protection to which he is entitled, may,

2 That it is sufficient if the attempt to cover alleged new matter were shown only in the model of the original, though the model is now lost, see Meyer v. Goodyear's India Rubber Glove Mfg. Co. (1881), 20 Blatch. 91; 22 O. G. 681; 11 Fed. Rep. 891.

That a re-issue cannot include an ele ment not found either in the drawings or specifications, simply on the ground that the model is imperfect and that this may be the missing element, see Stockwell v. Haines (1877), 12 O. G. 137; Ex parte Seibert (1877), 12 O. G. 268.

That a re-issue cannot wholly change the character of the original invention, from what it appears in the specification and drawings, on the strength of a feature shown in the model, see Parker & Whipple Co. v. Yale Clock Co. (1883),

21 Blatch. 485; 25 O. G. 290; 18 Fed.
Rep. 43.

That a re-issue will not be granted for
what is shown in the model, if it con-
tradicts the drawings and specifications,
see Ex parte Hunt (1879), 15 O. G.
831.

That the Office model alone is not sufficient basis for a new Claim in the re-issue, unless it also appears that the inventor originally intended to claim the feature in question, see Flower v. Detroit (1888), 127 U. S. 563; 43 0. G. 1348.

8 That where there have been successive applications for the original patent, these may be examined in order to ascertain what the inventor attempted to claim, see Ex parte Sexton (1876), 9 O. G. 251.

a

in certain cases, explore the history of the art to ascertain what the inventor might have claimed, and give effect to any phrases in the original description which can fairly be construed to cover it. But in the courts the original specification, model, and drawings must speak for themselves, — not, of course, with perfect clearness and completeness, for then no amendment would be needed, but yet so as to render it apparent to the judicial mind, when comparing the original with the re-issue, that the inventions intended to be set forth in each patent are the same. Thus matter mentioned in the Claims of the original but not consistent with the Description nor found either in the model or in the drawings, and matter merely alluded to as possible and useful but not sug. gested as a part of the invention to be patented, are alike outside the rule and cannot be embraced in the re-issue. But matter stated to belong to the claimed invention, or appearing

§ 667. See § 664, note 2, ante.

2 In Thomas v. Shoe Mach. Mfg. Co. (1878), 16 O. G. 541, Clifford, J.: (542) "Inquiries in such a case are restricted to a comparison of the terms and import of the two patents in view of the drawings and Patent Office model. If from these it results that the invention claimed in the re-issue is not substantially different from the one described, suggested, or indicated in the specification or drawings of the original patent or Patent Office model, the reissued patent must be held valid, as all other alterations and amendments plainly fall within the intent and purpose of the provision in the act of Congress which allows a surrender and reissue; or, in other words, if the reissued patent does not, upon the face of the instrument, embrace anything not substantially described, suggested, or indicated in the specifications, drawings, or model of the original, the defence that the re-issued patent is not for the same invention as the original must be overruled." 3 Bann. & A. 557 (561). See also Heald v. Rice (1882), 104 U. S. 737; 21 O. G. 1443; Glue

Co. v. Upton (1874), 6 O. G. 837; 4 Clifford, 237; 1 Bann. & A. 497; and § 664, note 2, ante.

That the courts will not explore the history of the art to ascertain what the inventor might have claimed and may have attempted to patent, see James v. Campbell (1881), 104 U. S. 356; 21 O. G. 337; Keystone Bridge Co. v. Phoenix Iron Works (1877), 95 U. S. 274; 12 O. G. 980.

That the original and re-issued patents are construed according to the state of the art at the date of the application for the original, see Eachus v. Broomall (1885), 115 U. S. 429; 33 O. G. 1265; Garneau v. Dozier (1880), 102 U. S. 230; 19 O. G. 61.

8 That matter appearing only in the Claim of the original patent, and not consistent with the description, cannot be regarded as belonging to the inven tion, see Ex parte Warren (1876), 10 O. G. 1.

That a re-issue cannot claim what is merely alluded to in the original as a possibility, but is not described therein as part of the invention, see Ex parte Evans (1873), 3 O. G. 180.

as a part thereof in the model or the drawings, although as thus described the invention is impracticable, and matter necessarily implied by what is actually described though not itself expressed in any form, are so contained in the original that an amendment by re-issue may include them. When the original patent has already been before the courts, and it has been judicially determined that its description relates to but a single form of the invention, its model, drawings, and specification must be thenceforth regarded as attempting to describe only that form of the invention, and the re-issue must be limited in a corresponding manner.5

§ 668. Variations between the Descriptions and Claims of the

Original and Re-issued Patents not Inconsistent with
Identity of Subject-Matter.

The restriction of a re-issue to the subject-matter attempted to be covered by the original patent does not require an exact correspondence between the specifications, drawings, and models of the original and re-issued patents, except in machine-patents where the model and drawings can be amended only by each other. The specification of the re-issue may

That matter which as described is impracticable, may be redescribed and claimed in a practically operative form, see Wheeler v. McCormick (1873), 6 Fisher, 551; 11 Blatch. 334; 4 O. G. 692; Wheeler v. Clipper Mower & Reaper Co. (1872), 10 Blatch. 181; 6 Fisher, 1; 2 O. G. 442.

That a re-issue may include matters not described or claimed in the original patent if they were really parts of the original invention, and are necessarily implied by what was described, see Eames v. Andrews (1887), 122 U. S. 40; 39 O. G. 1319; Ex parte Siemens (1877), 12 O. G. 626.

5 That a re-issue, after the specification of the patent has been construed by the courts, cannot claim a different form of the invention from that held to have been described in the original, see Cammeyer v. Newton (1879), 4 Bann. & A. 159; 16 O. G. 720.

That a re-issue may extend the patent beyond the judicial interpretation of the original Claims, see Poppenhusen v. Falke (1862), 5 Blatch. 46; 2 Fisher, 213.

§ 668. 1 In Stevens v. Pritchard (1876), 4 Clifford, 417, Clifford, J.: (422) "Corrections may be made in such cases by the specifications, drawings, or Patent Office model, and if the alterations do not exceed what was well described before, and what is substan tially suggested or indicated in the surrendered specifications, drawings, and Patent Office model, the re-issued patent cannot be held invalid upon the ground that it embodies and secures a different invention from the original." 10 0. G. 505 (507); 2 Bann. & A. 390 (395).

In French v. Rogers (1851), 1 Fisher, 133, Kane, J. (138) "It is not the meaning of the law that the paten

vary from that of the original in its language,2 in its general