short of its bestowal on him by the government, or by his abandonment of the invention to the public; and until one or there is a dedication to the public of that part which is unclaimed. In such case the law conclusively infers an intention to make the dedication, and the inference cannot be overcome by evidence; the applicant, however, always has it in his power, in a certain class of cases, to prevent this inference from arising if he acts in time. In cases which are divisional, that is, when, as in the present case, the features not claimed in the first application are independent of those claimed, - an applicant may expressly assert in his application a reservation of his right to claim them in another or subsequent application, and he should present and prosecute such application without delay. He may also file his second application so as to have it pending concurrently with the first. Such course anticipates and prevents the inference of dedication. This proposition is fully sustained by many authorities." See also Adams v. Bellaire Stamping Co. (1886), 28 Fed. Rep. 360; 36 O. G. 567; Ex parte Derby (1884), 26 0. G. 1208; Ex parte Rohn (1883), 25 O. G. 1190. two years' public use or sale, or is coupled with any other circumstances indicating a dedication of the invention to the public, the right to a monopoly will be lost; but this loss is not occasioned by the previous description of the invention in the former patent, nor by the failure to reserve the invention for a future patent, these being but single links in the chain of facts from which an intention to abandon is inferred. Moreover it is to the advantage both of the inventor and the public that he should be entirely free to patent his inventions separately and in such order as his inventive prudence may suggest, since on the whole it is far more probable that he will bestow the invention on the public as soon as it is ripe for beneficial use, than that after disclosing it in the description of a former patent he should withhold it after it becomes available for their employment and his own profit. Thus as no evil can result to the community by the application to his described but not claimed inventions of the same rule of reasonable diligence which governs cases of re-issue and other cases arising under the common doctrine of abandonment, the consistency of the law would seem to require that matter described but not claimed in a former patent may be the subject of a later patent unless it has been in some manner already dedicated to the public. This is the position maintained in Vulcanite Paving Co. v. American Artificial Stone Paving Co. (1887), 42 O. G. 828; Wilson v. Cubley (1886), 26 Fed. Rep. 156; 35 O. G. 257; Ex parte Holt (1884), 29 O. G. 171; Vermont Farm Machine Co. v. Marble (1884), 19 Fed. Rep. 307; 27 O. G. 621; 22 Blatch. 32; Graham v. McCormick (1880), 11 Fed. Rep. 859; 21 O. G. 1533; 10 Bissell, 39; 5 Bann. But even with this qualification the doctrine is not in harmony with the general spirit and theory of the Patent Law, nor with the requirements of inventors and the public. The general theory of the Patent Law contemplates every invention as a separate entity, wholly independent of every other invention, and entitled to a distinct monopoly if it possesses the necessary attributes of a patentable invention. That in the application for a patent for a different invention it may become expedient to describe this also cannot affect its patentable character, nor does it raise a conclusive presumption of abandonment. If such description is followed by a the other of these events has taken place his application must be entertained and his claim for an exclusive privilege be & A. 244; Graham v. Geneva Lake Crawford Mfg. Co. (1880), 11 Fed. Rep. 138; 21 O. G. 1536. In Ex parte Holt (1884), 29 O. G. 171, are discussed three classes of cases: 1. Those holding that no patent can issue for an invention actually covered by a former patent though the terms of their Claims may differ, viz., Sickels v. Falls Co., 4 Blatch. 508; O'Reilly v. Morse, 15 How. 62; Odiorne v. Amesbury Nail Factory, 1 Robb, 300; Smith v. Ely, 5 McLean, 76. 2. Those where the second patent contained a broad or generic Claim covering the more specific matter protected by the former patent, viz.: Jones v. Sewall, 3 Clifford, 575; James v. Campbell, 104 U. S. 356; 21 O. G. 337; McKay v. Jackman, 22 O. G. 85, overruling McKay v. Dibert, 19 O. G. 1351; Br parte Atwood, C. D. 1869, 98; Ex parte Lowe, C. D. 1870, 39; Ex parte Hyde, C. D. 1871, 109. 3. Those where the new patent covers matter described in the prior patent but essentially distinct and separable from anything claimed therein. Concerning the latter cases, Dyrenforth, Act. Com., says: (177) "It has, it is true, been held that a person can independently patent that which has been shown and described but not claimed in a previous patent upon a concurrent application. Authorities upon this subject are, The Suffolk Co. v. Hayden (3 Wall. 315); Singer & Clark v. Braunsdorf and Weil (7 Blatch. 521); McMillen et al. v. Reese et al. (17 O. G. 1222); Graham v. McCormick et al. (11 Fed. Rep. 859); Hatch v. Moffit (15 Fed. Rep. 252); Ex parte Emerson (17 O. G. 1451); Ex parte Derby (26 O. G. 1208). These cases, however, are easily distinguishable from the case of James v. Campbell and that here involved. In all of them that which was independently patented was either a distinct and separate part of the invention or a distinct improvement thereon. It was not substantially the same thing comprehended in the first patent. There was not a mere distinction of breadth or scope of Claim. The remedy where a broad Claim is omitted is pointed out in the Derby case, supra." In the first and second of these classes the later patent, so far as it covers the matter protected by the former patent, must be absolutely void; and if the new matter is inseparable from that already patented, the whole grant must fail. In such cases no reservation in the former patent can aid the inventor, but as Dyrenforth, Act. Com., in the same decision remarks: (177) "It is clear that if the law prohibits a separate patent for anything but a distinct and separate part of the thing invented, the applicant may not evade the prohibition by reserving the broad claims by a statement in his specific patent; he cannot reserve that which the law forbids him to reserve.' That reservation clauses tend to mislead the public and should not be allowed in applications, see Ex parte Blair (1888), 43 O. G. 113. That where the subject-matter is properly divisible the inventor may file his separate applications at any time without any reservation clause, and each will be judged on its own merits, see Ex parte Blair (1888), 43 O. G. 113. That where the subject-matter is not divisible the second application must bc filed while the first is pending, that both may be adjudged together, see Ex parte Blair (1888), 43 O. G. 113. That where one application fully dis recognized. To compel him in such cases to have recourse to a re-issue would not only be contrary to the fundamental ideas on which the doctrine of re-issue rests, but would deprive him of a greater or less portion of that term for which the law provides that his monopoly shall endure. § 466. Subject-Matter may be an Invention Dependent on or Collateral to an Invention already Patented in the United States by the same Inventor. Again, this rule does not apply to cases where the same inventive act produces two concrete results, each of which is a separate patentable invention. A single exercise of the inventive faculties may produce both a process and its product, a machine and the manufacture it creates, a composition of matter and the art by which it is applied to its intended use. In all such cases, if the inventions are truly separable, the inventor is entitled to a monopoly for each, although neither could have been discovered and been made available without the other. A patent for but one, though it may necessarily closes the invention claimed in the other, cross-references should be inserted in each to distinguish one from the other, see Ex parte Blair (1888), 43 0. G. 113. That a description in a prior patent without a Claim of the invention is not a bar to a subsequent patent, if the second application is made within two years, see Eastern Paper Bag Co. v. Standard Paper Bag Co. (1887), 41 O. G. 231; 30 Fed. Rep. 63. See also § 352 and notes, ante, and § 506 and notes, post. The doctrine stated in §§ 687-692 and notes, post, in reference to re-issues is equally applicable to the present subject, since any patentable matter which could be inserted in a re-issue may, if constituting a complete invention in itself, be protected by a separate patent. § 466. That a process and its product may be separately patented, see Ex parte Lupton (1874), 5 O. G. 489; Jones v. Sewall (1873), 3 Clifford, 563; 3 O. G. 630; 6 Fisher, 343; Brass Co. v. Miller (1871), 5 Fisher, 48; 9 Blatch. 77; Goodyear v. Providence Rubber Co. (1864), 2 Clifford, 351; 2 Fisher, 499. That no patent can be granted for the product after one for the process from which that product necessarily results, the second patent being in effect a duplication of the first, see Ex parte Holt (1884), 29 O. G. 171. That a patent having issued for a product as made by a certain process, a later patent cannot be granted for the process which results in the product, see Mosler Safe & Lock Co. v. Mosler (1888), 127 U. S. 354; 43 O. G. 1115. That a machine and its product may be separately patented, see Ec parte Lupton (1874), 5 O. G. 489; Brass Co. v. Miller (1871), 5 Fisher, 48; 9 Blatch. 77. That where a patent has been granted describe the other, is thus no hindrance to an application for a patent for the unsecured invention; but the new application must be judged according to its own intrinsic merits, as if no previous patent had been granted.2 § 467. Subject-Matter must not be an Invention already Claimed in a Pending Application by the same Inventor. The rules which in this manner limit the scope of applications by the monopolies previously granted to the same inventor define the relations which two or more applications by the same person must sustain toward each other. As two patents cannot be granted to the same inventor for the same. invention, so two applications attempting to secure patents for the same patentable subject-matter are equally objectionable. An inventor, having prepared and filed an application for a patent, cannot file another application for the same concrete invention, except as an amendment to the former, unless he first withdraws from the earlier the matter which he wishes. to incorporate into the later. This, for some purposes to be for a machine which produces a certain article, a subsequent patent cannot be granted for the article, though it might have been covered by the machine-patent, see Excelsior Needle Co. v. Union Needle Co. (1885), 32 Fed. Rep. 221. That a second patent for a special application of the force to the object named in a rejected Claim of the former application is valid, see O'Reilly v. Morse (1853), 15 How. 62. 2 That the description of a process in an application for a patent for the apparatus does not prevent a patent for the process, if applied for within two years, see Eastern Paper Bag Co. v. Standard Paper Bag Co. (1887), 41 O. G. 231; 30 Fed. Rep. 63. § 467. That an inventor cannot file a second application, after the patent is ready to issue on the first, for a device rejected on the prior application, but must re-issue the first patent and claim it there, see Ex parte Arkell (1877), 11 O. G. 1111. That where two applications describe the same invention and the later one does not claim it, a patent not covering it may issue on the later application, and a patent covering it on the earlier application, see Ex parte Emerson (1879), 16 O. G. 1232. That an applicant cannot claim matter covered by the Claim of a previous application, see Ex parte Holt (1884), 29 O. G. 171. That after an application has passed to issue no other one covering the same matter should be passed, see Ex parte Gaboury (1886), 37 O. G. 217. That a second application will not be rejected merely because a prior one by the same applicant is still pending, see Ex parte Gaboury (1886), 37 O. G. 217. That matter described and not claimed in one application can be claimed in a second application filed pending the prior one, but not if the whole patentable matter is indivisible, see Ex parte Holt (1884), 29 O. G. 171. hereafter stated, he is allowed to do; but in such cases each of his applications must clearly show, by proper allegations of disclaimer, that the limits of the monopoly for which it prays do not include any part of the subject-matter of the others.2 § 468. Joinder of Inventions not Consistent with the Nature of the Patent Privilege: but nevertheless Permitted. The joinder of several inventions in a single application is not altogether consistent with the principles or the policy of Patent Law, however nearly related to each other such inventions may be. A right to the exclusive use of one invention is entirely distinct from a right to the exclusive use of any other, and the monopolies created in favor of an inventor must therefore always be as numerous as the inventions upon which they are based. That several monopolies can be created by one granting act, and can be witnessed by one instrument of grant, is undeniable; but the symmetry of the law and the avoidance of unnecessary confusion would require that each invention be protected by a separate patent, in which the limits of the single monopoly conferred thereby might be clearly and perpetually defined. A contrary practice, however, has arisen, and out of consideration for its convenience and its economy to applicants has been sanctioned by the Patent Office and the courts. § 469. Joinder of Inventions Differently Viewed in the Courts and in the Patent Office. The rules by which the limitations of this practice are declared, and the evils naturally flowing from it are as far as possible avoided, are not in all respects the same in the 2 That where two applications describe, and one of them claims an invention, the one not claiming must disclaim it, and refer to the other by its date and number, see Ex parte Blair (1888), 43 O. G. 113; Ex parte Finch (1883), 26 O. G. 273. That the rules requiring cross-disclaimers in two pending applications for the same general invention are strictly enforced, see Drawbaugh v. Blake (1883), 23 O. G. 1221. That the rule requiring disclaimers where two pending applications describe but only one claims an invention is merely directory, and the issue of the first patent is no bar to the second, unless the subject-matter is one, integral, and indivisible, see Ex parte Roberts (1887), 40 O. G. 572. |