§ 471. Joinder of Inventions: Rule in the Patent Office. The general rule established in the Patent Office by the regulations and decisions of successive Commissioners permits the joinder of distinct inventions in an application where one of such inventions is dependent on the other and where they thus mutually contribute to produce a single result.1 § 471. 1 In Ex parte Young (1885), 33 O. G. 1390, Montgomery, Com. : (1391) "All will agree that an application should not ordinarily embrace matters which belong to absolutely distinct, independent, and unconnected official classes or sub-classes where the inventions involved are separate, independent, and not connected together in their nature, design, or operation, but that in such cases a division should undoubtedly be insisted upon. The first inquiry, therefore, should be as to whether or not the inventions, if there be more than one included in the application, can reasonably and properly be said to be independent inventions separate inventions. If they are so independent and separate, they should not be joined, and a division should be called for. If they are not so independent and separate, but are only distinct, but still 'kindred and auxiliary,' or connected in their design and operation, or in their nature or operation connected together, then ordinarily a division should not be required." That distinct inventions can be joined if one is dependent on the other, see Ex parte Hogan (1879), 16 O. G. 907. That distinct inventions are not necessarily independent, see Ex parte Young (1885), 33 O. G. 1390. That devices subserving a common end and contributing to a unitary result may be joined, see Ex parte Sol Kuh (1876), 10 O. G. 587; Ex parte Clinton & Knowlton (1876), 9 O. G. 249; Ex parte Jopling (1875), 8 O. G. 1032. if belonging to the same class and used to serve a common end, may be joined, see Ex parte Noyes (1875), 8 O. G. 818. That where the parts of an invention are intimately connected, and co-operate in the result, they may be joined, see Ex parte Freese (1880), 17 O. G. 1095. That when devices, in their nature distinct, form a complete set which operate together, they may be joined, see Ex parte Gokey (1878), 15 O. G. 295. That connected inventions may be joined, though a separate foreign patent has been granted for each, see Ex parte Unsworth (1879), 15 O. G. 882. That no joinder is permitted in the Patent Office unless the inventions directly act in producing a resultant operation due to all the inventions, see Ex parte Herr (1887), 41 O. G. 463. That it is for the Patent Office to judge whether inventions are separate and distinct, see Ex parte Bancroft (1881), 20 O. G. 1893. That separate and independent inventions cannot be joined, see Ex parte Young (1885), 33 O. G. 1390; Ex parte Van Matteson (1883), 24 O. G. 389; Ex parte Bancroft (1881), 20 O. G. 1893; Ex parte Hogan (1879), 16 O. G. 907; Ex parte Law (1877), 12 O. G. 940; Ex parte Howland (1877), 12 O. G. 889; Ex parte Sol Kuh (1876), 10 O. G. 587; Ex parte Elbers (1875), 12 O. G. 2. That inventions which do not cooperate, or depend on each other for That devices adapted to each other, their operation, cannot be joined, see Since in these cases the dependent invention cannot be contemplated by the mind as complete and practically operative unless in connection with the other, and cannot be examined and passed upon by the Patent Office without inquiring into and determining its limits with respect to the other, their joinder is not inconsistent with the division of duties in the Office, though the spirit of its regulations, as well as of the law itself, still demands a separate patent and a separate application for each invention. In judging of inventions with reference to this general rule, their dependency or independency is determined by the scope and relation of the concrete inventions, not by the unity or diversity of the ideas of means as they were developed in the mind of the inventor.2 That the inventions pertain to the same subject, or belong to the same genus, or are by nature adapted to a common use should That inventions which co-operate neither in function nor result cannot be joined, see Ex parte Westcott (1876), 10 O. G. 546. Ex parte Dieterich (1877), 11 O. G. may thus be predicable of either or both 195. of the conjoined inventions, — the invention being single for the purposes of an application or a patent whenever any of its component or subordinate or resultant arts or instruments could not exist as operative means without the others. This limitation of "insepara bility" serves to reconcile with each other all the discordant positions which, by their too comprehensive language, the decisions appear to have maintained. That independent inventions, whether arts or instruments, cannot be joined, see Ex parte McDougall (1880), 18 O. G. 130. In examining the foregoing cases, or any others upon this subject, it should be borne in mind that inventions are here regarded as "inseparable" whenever either one of them is necessarily dependent on the other. A product which can be created only by a specific process is "inseparable" from that process, although the process, being capable of an application which does not result in that product, is not inseparable" therefrom. An apparatus which has no other use than in performing a certain art may also be "inseparable" from that art, while the art itself may be entirely separable from the apparatus and as easily performed by many others. "Inseparability" or "dependence," as a ground of joinder, 2 In Ex parte Murray (1873), 3 O. G. 659, Leggett, Com.: (660) "It might be supposed, because the inception and perfection of a process and the product to be treated and improved by it, or of a machine and its product, are often conjoined in the mind of the inventor, that in this is to be found a reason why the two ought to be regarded as constituting one subject of invention to be embraced in a single patent. But this is not the proper criterion by which to judge of them. The inventions are to be contemplated when completed, and if they are then distinct, it is immaterial how intimately they may have been blended in their production." any one desire so to employ them, does not constitute such dependence as to justify their joinder. But where the ultimate end for which one was created cannot be reached without the employment of the other, or where the operation of the one results in the production of the other, or where the use of one involves the concurrent or co-operating use of all the rest, or where one is generic and the other a particular species of that genus, this dependence exists and the inventions may be joined. 4 3 That distinct inventions cannot be joined though they pertain to the same things, see Ex parte Van Matteson (1883), 24 O. G. 389; Ex parte Hamilton (1877), 13 O. G. 122. That distinct inventions cannot be joined, though they belong to the same genus, see Ex parte Stow (1873), 3 O. G. 322. That the capability of use by application to some outside article does not warrant a joinder where there is no mutual dependence and intercommunication, see Ex parte Law (1877), 12 O. G. 940. 4 In Ex parte Kent (1880), 17 O. G. 686, Doolittle, Act. Com. : (686) "It is true that a discoverer of a genus in mechanics is entitled to a Claim in a patent co-extensive with the genus, and to which all subsequent Claims for species of that genus must be subordinate. As each genus, however, constitutes a separate invention, but one can be claimed in the same application. A genus is defined as a precisely defined and exactly divided class,' and as 'an assemblage of species possessing certain characteristics in common,' but not as including different classes of objects having simply general resemblances and functions; and in a Claim for a genus those common characteristics must be distinctly pointed out. . . . In addition to a generic Claim, one who has invented the genus may, under the established practice of the Office, claim a particular species illustrative or typical of the genus." In Ex parte Kook (1879), 16 O. G. 543, Paine, Com. (544) "While it is easy to distinguish theoretically between those cases in which several different forms constitute different species of one genus and those in which they constitute only a single species, the practical discrimination between the two classes of cases is not always easy. The principle is this: When the different forms are such that the substitution of one for another involves invention, the differences are patentable, and the several forms constitute different species of the genus, all subject to one generic patent, but each legally patentable in a distinct and specific patent. On the other hand, when the substitution of one for the other involves no invention, but only mechanical skill, the differences are not patentable, and the forms do not constitute several species of the genus, but are all modifications of a single species." : In Ex parte Howland (1877), 12 O. G. 889, Doolittle, Act. Com. (889) "It may be stated, in brief, that whenever a generic Claim can be predicated which is good in view of the state of the art, and which will include the modifications or specific devices described or exhibited in the drawings, then these may all be retained in a single application; for it is manifest, from the fact that the Claim applies with equal apti § 472. Joinder of Inventions: Combinations: Sub-combinations: Elements. Out of the application of these general rules to the various classes of inventions have grown certain special rules by which the joinder of two or more inventions of the same class or of different classes is also governed. Before discussing those special rules, however, a peculiar doctrine relating to combinations, which are found in all these classes, may properly be stated. A combination, its sub-combinations, and the elements of which each sub-combination is composed are dependent inventions whenever such elements and sub-combinations are considered in reference to the principal combination in which all unite. Although this principal combination is a true invention, distinct in law as well as in fact from all the subordinate inventions which enter into it, no idea of it can be formed in the mind, no embodiment of that idea can be made practically operative in the arts, and no examination as to its novelty or utility can take place in the Patent Office, without embracing in this idea, in its embodiment, and in this examination each of the elements and sub-combinations of which it consists. Hence, whenever any of these sub-combinations or their elements have been invented by the inventor of the principal combination and have not been previously patented in this country, they may be joined in one application tude to each, that there are generic features of identity which indicate the same basis of invention. On the other hand, where no Claim of the character indicated can be maintained, it is equally true that there is such diversity as will require a division of the application; this restriction being pursued until the matter retained in any single case can be safely said to relate to but one invention, or, in other words, can be contained in the broadest patentable Claim that is capable of being drawn to it." Further, that a generic invention and one species under the genus may be joined, see Ex parte Heaton (1879), 15 O. G. 1054; Ex parte Smith (1879), 16 O. G. 630; Ex parte Cowper (1879), 16 0. G. 499. That two or more distinct species under the same genus cannot be joined, see Ex parte Ewart (1880), 17 O. G. 448; Ex parte Heaton (1879), 15 O. G. 1054; Ex parte Dinkelbilher (1879), 16 0. G. 810; Ex parte Cowper (1879), 16 O. G. 499; Ex parte Morrison (1879), 16 O. G. 359. That two distinct species under the same genus, if requiring different inventive acts, cannot be joined, though all will be covered by a patent for the genus, see Ex parte Kook (1879), 16 O. G. 543. For an excellent discussion of joinder and kindred subjects, see Ex parte Herr, (1887), 41 O. G. 463. And this is equally true with the principal combination.1 whether these elements and sub-combinations are, in their own nature as separately considered, similar or dissimilar to each other either in name, in class, or in mode of operation. This doctrine applies, however, only to cases where the principal combination is itself the subject-matter of the application. It is this combination which constitutes the link between the different sub-combinations and their elements, and thus forms the ground of their dependence on each other. Apart from this combination these subordinate members may or may not be wholly independent of one another, and may be joined or not joined according to the rules which govern simple inventions of their peculiar class.2 Different combinations of the same group of elements, combinations of one or more § 472. 1 In Stevens v. Pritchard (1876), 2 Bann. & A. 390, Clifford, J. : (390) "Cases arise where a patentee, having invented a new and useful combination, consisting of several elements, which in combination compose an organized machine, also claims to have invented new and useful inventions, consisting of fewer members of the same elements; and in such cases the law is well settled that, if the several combinations are new and useful, and will severally produce new and useful results, the inventor is entitled to a patent for the several combinations, provided he complies with the requirements of the patent act, and files in the Patent Office a written description of each of the alleged new and useful combinations, and of the manner of making, constructing, and using the several inventions. He may, if he sees fit, give the description of the several combinations in one specification, and in that event he can secure the full benefit of the exclusive right to each of the several inventions by separate Claims, referring to the specification for the description of the inventions, without the necessity of filing separate applications for each of the inventions. Separate descriptions of the respective inventions in one application are as good as if made in several applications; but the Claims must be separate, and it would follow that if the patentee, by inadvertence, accident, or mistake, should fail to claim any one of the described combinations, he might surrender the original patent, and have a re-issue not only for the combinations claimed in the original specification, but for any which were so omitted in the Claims of the original patent." 4 Clifford, 417 (418); 10 O. G. 505 (505). See also Banks v. Snediker (1880), 17 O. G. 508; Gill v. Wells (1874), 22 Wall. 1; 6 O. G. 881. That the elements of a combination may be joined with it unless they have become known in the arts as separate inventions and possess utility in other relations, see Ex parte Sartell (1888), 42 O. G. 295. That elements already in general use in other connections cannot be joined with the combination, see Ex parte La Borde (1888), 44 O. G. 700. 2 That aggregated devices cannot be joined unless the joinder would be proper when they are considered as distinct inventions, see Ex parte Cardwell (1878), 15 O. G. 293. |