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material steps may be abandoned, or equivalents introduced, and such variations in their order be directed as are not inconsistent with the original specification. When the art as set forth in the original patent is a combination, its sub-processes and elements may be claimed in the re-issue, if they were first devised by the inventor of the art, were indicated in the original specification, and have not lost their patentable character by his disclaimer or abandonment. Besides the art itself, the re-issue may in certain cases cover the apparatus it employs or the product in which it results. Where these have been invented by the same inventor, have been sufficiently described in the original specification, and have neither been abandoned nor disclaimed, the right to cover them by the re-issue depends on their relation to the art, and the propriety of joining them therewith in the original patent. Thus where the process cannot be performed without the apparatus mentioned, or the product uniformly follows the employment of the process, the inventions are inseparably connected with each other, and the product or the apparatus may be covered by a re-issue of the patent for the art.3

5 O. G. 585; Holmes, 354; 1 Bann. & where the process is not the mere funcA. 201. tion of the apparatus, see § 473, and notes, ante.

That a re-issue of a patent for a process cannot add a new step, see American Middlings Purifier Co. v. Atlantic Milling Co. (1879), 4 Bann. & A. 148; 15 O. G. 467; 5 Dillon, 127.

2 That the re-issue of a patent for a process may omit some of the steps described in the original, if the process remains substantially the same, see Ex parte Wooten (1872), 3 O. G. 521.

That where an original, in describing a process, mentioned one material which does not answer the purpose, the re-issue may describe another material of the same class which will serve the same desired end, if it had been used by the inventor before his original application for a patent, see Ex parte Mayall (1873), 4 O. G. 582.

8 That a process and its apparatus may be claimed in the same patent

That an original for a "method of doing" a thing may re-issue for the thing done, the inventions being the same, see Washburn & Moen Mfg. Co. v. Haish (1880), 19 O. G. 173; 4 Fed. Rep. 900; 10 Bissell, 65.

That where the original describes both process and product, but claims the process only, it may re-issue to cover the product also, see Tucker v. Dana (1881), 7 Fed. Rep. 213; Anilin v. Hamilton Mfg. Co. (1878), 13 O. G. 273; 3 Bann. & A. 235; Goodyear v. Wait (1867), 5 Blatch. 468; 3 Fisher, 242.

That a re-issue for a product is void, where the original was for the process, unless the use of the process always results in the product, and thus both are but one invention, see Powder Co. v.

§ 675. Re-issued Patent for a Machine may Embrace the Same

Machine, and sometimes the Product, but not the
Process.

The re-issue of a patent for a machine, if the machine be not a combination, must be limited to the same parts or their equivalents associated under the same structural law.1 The re-issue may vary from the original in matters of mechanical adaptation, and may cover any mode of using the machine which has been properly indicated in the former specification. When the machine is a combination, the re-issue may embrace such of its elements and sub-combinations as are suggested in the original description, if not abandoned or disclaimed, and if due to the inventive genius of the same inventor. A machine-patent cannot, however, be re-issued to include a process which consists in the mere use of the machine, nor a process in which the patented machine performs a necessary though subordinate part. The former is the function of the machine, and though protected by the patent for the machine is not itself a patentable subject-matter. The latter is an invention far broader than the mechanical devices it employs, and though not independent of them, lies outside the scope of any patent which has been originally confined to them. Thus while an original patent for an art

Powder Works (1878), 98 U. S. 126; 15 its product or apparatus, see §§ 472, O. G. 289. 529, and notes, ante.

That a re-issue cannot cover a product and a process unless both have been substantially described in the original, see Penn. Salt Mfg. Co. v. Thomas (1871), 8 Phila. 144; 5 Fisher, 148.

That an original patent confined to a product produced by one process only cannot re-issue to cover the product, however produced, see Vacuum Oil Co. v. Buffalo Lubricating Oil Co. (1884), 20 Fed. Rep. 850; 22 Blatch. 266; 28 O. G. 1101.

That a patent for a process cannot re-issue after four years to cover the product also, see Union Tubing Co. v. Patterson Co. (1885), 23 Fed. Rep. 79.

As to the joinder of a process with

§ 675. 1 That a re-issue can substitute a device for one employed in the original where they are equivalents, and not otherwise, see Tucker v. Tucker Mfg. Co. (1876), 10 0. G. 464; 2 Bann. & A. 401; 4 Clifford, 397; National Spring Co. v. Union Car Spring Mfg. Co. (1874), 6 O. G. 224; 12 Blatch. 80; Decker v. Grote (1873), 3 O. G. 65; 10 Blatch. 331; 6 Fisher, 143.

2 That a re-issue may claim modes of constructing or operating a machine, where such modes were described, though not claimed, in the original, see Morris v. Royer (1867), 3 Fisher, 176; 2 Bond, 66.

might be re-issued to embrace any machine which it may use without enlarging the original invention, no patent for a machine could be re-issued to include the process without extending the protection of the patent to new matter which the original patent neither intended nor attempted to secure.3 new process produces a new substance, the invention of the process is the same as the invention of the substance, and a patent for the one may be re-issued so as to include both, as was done in the case of Goodyear's vulcanized-rubber patent. But a process and a machine for applying the process are not necessarily one and the same invention. They are generally distinct and different. process or act of making a postmark and cancelling a postage-stamp by a single blow or operation, as a subject of invention, is a totally different thing in the Patent Law from a stamp constructed for performing that process." 21 O. G. 337 (343).

3 In Wing v. Anthony (1882), 106 U. S. 142, Woods, J.: (145) "It is quite clear that the original patent covers a mechanism to accomplish a specific result, and that the re-issued patent covers the process by which that result is attained, without regard to the mechanism used to accomplish it. The re-issue is, therefore, much broader than the original patent, and covers every mechanism which can be contrived to carry on the process. In the case of Powder Company v. Powder Works, 98 U. S. 126, it was held by this court that when original letters-patent were taken out for a process, the re-issued patent would not cover a composition unless it were the result of the process, and the invention of one involved the invention of the other. The converse of this proposition was decided by this court in James v. Campbell, 104 Id. 356. In that case the court said that a patent for a process and a patent for an implement or a machine are very different things, and decided, in substance, that letters-patent for a machine or implement cannot be re-issued for the purpose of claiming the process of operating that class of machines, because, if the claim for the process is anything more than for the use of the particular machine patented, it is for a different in vention. To the same effect precisely is the case of Heald v. Rice, Id. 737. The present case falls within the rule laid down in the authorities cited."

In James v. Campbell (1881), 104 U. S. 356, Bradley, J.: (376) "A patent for a process and a patent for an implement or a machine are very different things. (Powder Company v. Powder Works, 98 U. S. 126.) Where a

The

That where the original is for a machine and the re-issue for a process, there is prima facie a departure, see Eachus v. Broomall (1885), 115 U. S. 429; 33 O. G. 1265.

That where the original patent is for a machine, it cannot re-issue to cover the process performed by the machine, though the process were described in the original, see Ex parte Pfaudler (1882), 22 O. G. 1881; Brainard v. Cramme (1882), 20 Blatch. 530; 22 O. G. 769; 12 Fed. Rep. 621; Heald v. Rice (1882), 104 U. S. 737; 21 O. G. 1443; New v. Warren (1882), 22 O. G. 587; Ex parte Hicks (1879), 16 O. G. 546.

That a re-issue is void where the original patent was for a machine which accomplishes two purposes, one intended, and the other neither intended nor expected, by the inventor, and the re-issue covers the process performed by the machine in effecting the latter purpose, see Ex parte Seibert (1879), 16 O. G. 262.

The product of a machine, if inseparably connected with it and otherwise within the rule of joinder so often stated, may also be claimed in the re-issue.1

§ 676. Re-issued Patent for a Manufacture may Embrace the

Same Manufacture, and Sometimes the Process or the

Apparatus.

An original patent for a manufacture can be re-issued only for the same concrete instrument, or for inventions upon which the production of such manufacture may depend. Whatever essential characteristics have been attributed to the manufacture in the original specification must be found in it as described and claimed in the re-issue; and through all variations of language, and all substitutions of equivalents, the identity of the invention must be distinctly traceable.1 If it were first described as resulting from certain processes and possessing certain properties, the re-issue cannot depart from this delineation by ascribing it to different processes, or attributing to it other properties due to changes in the mode by which it is produced.2 But new methods of applying it to practical use or new connections in which it may be employed can be disclosed, since these involve no alteration in the nature of the invention itself.3 Where a manufacture

That a re-issue cannot claim the occasional result of the device shown in the original, see Ex parte Seibert (1877), 12 O. G. 268.

As to the joinder of a machine with its process or product, see §§ 474, 530, and notes, ante.

§ 676. That where an original patent was for an article in a particular form, a re-issue claiming it under whatever form is void, see Campbell v. Kavanaugh (1882), 20 Blatch. 256; 11 Fed. Rep. 83 ; N. Y. Bung & Bushing Co. v. Hoffman (1881), 20 Blatch. 3; 20 0. G. 1451; 9 Fed. Rep. 199.

2 That a re-issue cannot claim a product however made, when the original claimed it only as made in a certain way, see Vacuum Oil Co. v. Buffalo Lubricating Oil Co. (1884), 22 Blatch.

266; 28 O. G. 1101; 20 Fed. Rep. 850.

That where the original patent is for a product as resulting from a certain process, it cannot be re-issued to cover the same product when resulting from different processes and containing not only some of the qualities of the old product but also new qualities not contained in the old product or producible by the old process, see Cochrane v. Anilin (1884), 111 U. S. 293; 27 O. G. 813.

3 That a re-issue for a device is good though the machine to which the device is to be applied is differently described in the original, see Aultman v. Holley (1873), 5 O. G. 3; 6 Fisher, 534; 11 Blatch. 317.

That a patent for a new device, as

and a machine or process which produces it are inseparable, an original patent for the manufacture may re-issue to protect also the process or machine.4

§ 677. Re-issued Patent for a Composition may Embrace the Same Composition, and sometimes the Ingredients, the Process, or the Apparatus.

A composition of matter being always a true combination, the patent in which it is originally described can re-issue only for the same or equivalent ingredients, united by the same or equivalent modes of intermixture, and resulting in a compound possessing the same or equivalent properties.1 Substances which are not ingredients, though described in the original as entering into the composition, may be omitted or others may be added without disturbing the identity of the invention, and variations in the mode of intermixture, which do not alter its substantial character, may be introduced.

adapted to one machine, cannot re-issue for the same device as adapted to other and non-analogous machines, but such device must be the subject of a new patent, see Holmes v. Plainville Mfg. Co. (1881), 20 Blatch. 123; 9 Fed. Rep. 757.

♦ That where the original invention was a new product resulting from a new process, the re-issue of a patent for the process or the product may cover both, either in the same or separate patents, see Tucker v. Burditt (1879), 4 Bann. & A. 569; Anilin v. Hamilton Mfg. Co. (1878), 3 Bann. & A. 235; 13 O. G. 273; Anilin v. Higgin (1878), 15 Blatch. 290; 14 O. G. 414; 3 Bann. & A. 462.

As to the joinder of a manufacture with its process or machine, see §§ 475, 531, and notes, ante.

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with his device is that it has two prop-
erties; and in his re-issued patent, in
his Claim and specifications, in the de-
scription of his invention, substitutes
for his former specification of a material
to be used as a part of his device, a de-
scription of materials which may be
used by specifying only those which
have the two properties in which he had
formerly declared the utility or availa-
bility of the material which he then
named consisted, there is no enlarge-
ment of the thing patented, and the re-
issued patent is, therefore, valid."
O. G. 1446 (1446); 15 Fed. Rep. 747
(748).

23

That a re-issue of a chemical patent is void unless the compound claimed is the same as that described in the original, see Tarr v. Webb (1872), 2 O. G. 568; 5 Fisher, 593; 10 Blatch. 96.

That where an original described and claimed a composition of matter as answering a specific purpose, it cannot re-issue to cover the compound as used for all other purposes, see Francis v. Mellor (1871), 5 Fisher, 153; 10.G. 48.

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