§ 462. Subject-Matter must not Include Inventions already Patented in the United States by the same Inventor. An application which, together with new matter, includes matter already patented in the United States by the same inventor is within this rule, as well as one whose scope corresponds exactly with that of the preceding patent.1 An inventor who devises an improvement to his own patented invention cannot apply for and obtain a patent for the whole invention as improved, but only for the new development of his original idea.2 The inventor of a combination, the elements of which are already protected by his previous patents, cannot obtain additional protection for those elements by claiming them in his application for a patent for the combination. In both these instances, as in all similar ones, it may be necessary to the comprehension by the public of his last invention that the former should be fully described in the new application, but the application itself must so distinguish the earlier invention from the later that it shall clearly appear to be an application for a patent only for the last invention. § 463. Subject-Matter may be a New Use of an Invention already Patented in the United States by the same Inventor. An application for a patent for a previously patented invention by the same inventor, on the ground that new uses for it have been discovered since the issue of the former patent, is also forbidden by this rule. All uses to which an invention can be put, whether by its inventor or by others, without an additional exercise of inventive skill, are covered by the original patent for that invention, even although such uses were unknown when the patent issued; and hence another patent, based upon such uses, would be a simple duplication § 462. 1 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; Ex parte Holt (1884), 29 O. G. 171. 2 That an inventor may patent an improvement on his own invention, see O Reilly v. Morse (1853), 15 How. 62. § 463. 1 That a second patent cannot issue for the same invention though used for separate purposes, see McComb v. Brodie (1872), 5 Fisher, 384; 2 O. G. 117; 1 Woods, 153. See also §§ 259-271 and notes, ante. of the grant. Where a new use for the invention is discovered by the exercise of the inventive faculties of the same or other inventors, the new use is itself a new invention, and if possessing all the other statutory requisites, it may be patented as a new art or combination in which the old invention is employed as an instrument, or as an elemental means; but it adds nothing to the patentable character of the original invention, nor does it constitute any ground for the protection of that invention in another patent. Here, also, the application for a patent for the new art or combination may have occasion to describe the former invention in order to convey an adequate idea of the new use which is to be the subject of the future patent; but the distinction between the old invention and the new must be apparent on the face of the application, and a patent for the latter only must be claimed. § 464. Subject-Matter must not be an Invention already Patented in the United States by the same Inventor, although his Former Patent is Inoperative and Invalid. An application for a new patent by the same inventor where his previous patent, although not covering his entire invention, is capable of being re-issued so as to afford it a complete protection, is within this rule. An important difference must be here remembered between an invention as it appears upon the face of a patent and as it exists practically in the arts. Some concrete inventions are simple units, the result of a single inventive act, not separable into distinct patentable parts, and any patent for such an invention must either protect the whole product of the inventor's skill or fail to protect anything whatever. Other concrete inventions consist of parts, each of which is an independent invention and separately patentable; and a patent for the entire invention may be valid and sufficient although its inventor makes no attempt to protect therein the individual inventions of which it is composed. Only a patent for an invention of the former class can properly be brought within this rule. A patent for a simple unitary invention, if properly expressed, protects everything that the inventor has invented, and any failure to secure to him the entire monopoly to which he is entitled can be cured by a correction of its verbal ambiguities. It is an act of the government bestowing a particular exclusive privilege, and although the limits of that privilege may be uncertain on account of some defect in the language by which it is described, the grant is an effectual one, and cannot be repeated however it may need to be defined. Hence an amendment of the patent by re-issue is not only a sufficient remedy for the inventor, but it is all the remedy to which, in accordance with the theories that underlie the Patent Law, he is entitled. § 465. Subject-Matter may be an Integral Part, or a Combination, of other Inventions already Patented in the United States by the same Inventor. On the other hand, where a concrete invention is composed of parts each of which is the result of a separate inventive act, it is optional with the inventor either to protect all these inventions by a single patent or to apply for and obtain different patents for the several subordinate inventions. If in his first application for a patent he endeavors to secure protection for all, and if in his first patent the government evidently confers upon him a monopoly as to all, however imperfectly the grant of the monopoly may be expressed, no new application for a patent for any of them can be entertained; and the inventor must avail himself of his right to a re-issue, or remain without remedy. But if the inventor has attempted in his former application only to procure a patent for the concrete invention as a whole, or for some one or more of its several § 464. 1 In Ex parte Roberts (1887), 40 O. G. 573, Hall, Com.: (574) "Where the invention is one, integral, and indivisible, whether it relates to different parts of a single organization or combination, or process and product, or genus and species, a prior patent which claims or covers part of the whole invention, in legal contemplation takes the whole invention out of the field of patentability, whether the subsequent applicant be the original patentee or some other person." Further, that a new patent cannot cover matter inseparably involved in the matter claimed in a former patent, see Railway Register Mfg. Co. v. Broadway & Seventh Ave. R. R. Co. (1886), 26 Fed. Rep. 522; 34 O. G. 921; Ex parte Holt (1884), 29 O. G. 171; Ex parte Ransom (1884), 39 O. G. 119. § 465. That a patent for parts of a previously patented invention is void if the prior patent attempted to claim such parts, see Stow r. Chicago (1877). 3 Bann. & A. 83; 8 Bissell, 47. parts, the monopoly which he has received is limited to these results of his inventive skill, and all other results are still proper subjects for new applications and new patents, unless he has meanwhile abandoned them to the public.2 That in his former patent he described these other inventions as elements of the one then patented, or as associated with it in that concrete invention in which all unite, cannot affect his right to base on them new applications and new patents.3 2 That a combination and its elements are distinct inventions, and a patent for the former does not cover the latter, see Rowell v. Lindsay (1885), 113 U. S. 97; 31 O. G. 120; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392. That unless abandoned by two years' public use and sale a sub-combination may be covered by a later patent, see Cahn v. Wong Town On (1884), 9 Sawyer, 630; 19 Fed. Rep. 424; 27 O. G. 299. That separate parts of the same invention may be separately patented, see Jones v. Sewall (1873), 3 Clifford, 563; 6 Fisher, 343; 3 O. G. 630. claimed in the first patent, but to that which is described therein as the patentee's invention. If a man cannot have a patent for what another has claimed or described in a prior patent, much less can he have one for what he himself has claimed or described; for he thus shows that he has anticipated himself. James v. Campbell, 104 U. S. 356, 382." 33 O. G. 887 (887). In Ex parte Long (1883), 25 O. G. 1189, Marble, Com.: (1190) "An applicant is entitled to fully describe, show, and claim his invention; but having shown and described it in a patent he has no right to thereafter file an application and obtain a patent for subject-matter shown and described in such patent. If he have any remedy in such case it is by re-issuing his patent. In Ex parte Atwood (C. D., 1869, p. 98), Mr. Commissioner Fisher said: When an application is filed every invention contained in that application must be patented under it or under such division of it as the wishes of the applicant and the rules of the Office may permit.' Since said decision the practice of the Office has been uniform in requiring an applicant, if he desires to obtain a patent for subject-matter shown and described in his application, but not properly patentable therein, to file another application for such matter during the pendency of the former application. This practice has been sustained by the courts, and none other seems to have been adopted or insisted 8 It has been sometimes held that no new patent could be granted for an invention described but not claimed in a former patent, and that the only mode of bringing such unclaimed in ventions within the protection of the law is by a re-issue of the former patent. Thus in Mathews v. Flower (1885), 25 Fed. Rep. 830, Brown, J.: (830) "If it were true that complainants had previously obtained a patent for the same invention secured to them by the patent in suit, and that this prior patent had expired, it would doubtless be a complete answer to this bill, since a man cannot have two patents for the same invention. James v. Campbell, 104 U. S. 356; Suffolk Co. v. Hayden, 3 Wall. 315; Morris v. Huntington, 1 Paine, 348. And this disability extends, not only to what is Being entitled under the law to a monopoly for each invention, he cannot be precluded from receiving it by anything upon until the present time. An applicant has the right to file his application and claim so much of his invention as he wishes or sees fit; but he has no right to reserve a portion of it, and thereafter claim such reserved portion, and thus, in fact, extend the life of his patent. If this could be done, the actual term of a patent would not be seventeen years, but a longer term. A party cannot prevent abandonment by simply stating that he does not abandon a certain invention. Abandonment is always a question of fact. Parties are presumed to intend what they do, and if they expressly reserve, or by oversight or negligence fail to claim, subject. matter shown and described in a patent, the presumption is that they intend to abandon it, especially if they do not file an application therefor prior to the issuance of the patent wherein it is shown and described." See also Swift v. Jenks (1887), 29 Fed Rep. 642; 38 O. G. 1017; Hill v. Commissioner (1885), 4 Mackay, 266; 33 O. G. 757 ; Ex parte Derby (1884), 26 O. G. 1208; Ex parte Hill (1883), 240. G. 1176; Marvin v. Lillie (1867), 27 O. G. 299. he specifically describes and claims, though he might have asked to have it patented at the same time and in the same patent, yet if he has not done so, and afterward desires to secure it, he is bound to make a new and distinct application for that purpose and make it the subject of a new and different patent." That this is the true construction of this entire decision, see Vermont Farm Machine Co. v. Marble (1884), 27 O. G. 621; 22 Blatch. 32; 19 Fed. Rep. 307. But apart from authority this doctrine is manifestly incorrect in principle, as well as inapplicable in practice. For were it true, every intentional omission to claim any invention which the application had described would operate as an abandonment of the invention to the public, since no intentional omission can be cured by a re-issue; and thus an applicant would be compelled to claim every invention which a proper delineation of his principal invention required him to disclose, whatever violations of the rules of joinder he might thus commit, or however premature the submission of the invention to the public as a practically operative means might be. To avoid this dilemma, a qualification has been introduced into the doctrine, permitting a subsequent patent for inventions described but not claimed in the former patent, provided a reservation of the right to apply for and obtain the subsequent patent were inserted in the former, and the later application were filed within a reasonable time after the issue of the prior patent. This modification of the doctrine is discussed and sustained in Ex parte Roberts (1887), 40 O. G. 573, by Hall, Com.: (573) “It is undoubtedly true that when a patent issues for an invention, all of which is shown but only part of which is claimed, These cases, except the last, base their assertions upon a hasty and mistaken interpretation of Campbell v. James (1882), 104 U. S. 356; 21 O. G. 337. The passage usually quoted in support of this position does at first blush, perhaps, appear to sustain it. But more careful scrutiny would have shown that the learned Justice employed the words "embraced or described " as synonymous with "patented" and "claimed;" and would further have disclosed the following statement on page 370 (104 U. S.), which places the whole doctrine in its proper light: "If he was the author of any other invention than that which |