elements with several different groups of additional elements, a single element and several different combinations into which it enters, a combination and distinct improvements in its different elements not affecting the operation of the combination as a whole, one improvement in one element and another improvement in a different element, all these are also, for the same reason, outside this peculiar doctrine. An application in which such a joinder should be made would embrace no separate subject-matter which could bring them into relations of dependence. Whenever, therefore, they are capable of being joined in any application which does not embrace the principal combination, it must be on the ground that they are in their own nature dependent on each other and mutually contribute to produce a single result, a state of facts which allows their joinder under the general rule. § 473. Joinder of Inventions: Arts: Apparatus: Product. The special rules which govern the joinder of arts or processes with each other or with related inventions of a different class, are more stringent in the Patent Office than in the courts. The decisions of the courts permit two processes to be covered by one patent when they are so related to each other that they are capable of being used for the attainment of a common end. They also allow a process to be embraced in the same patent with the apparatus by which it is performed and the product in which it results, where all originate in the inventive genius of the same inventor, although the process, the apparatus, and the product are so far separable from each other that the process might be otherwise performed, the apparatus otherwise employed, and the product otherwise produced.1 But in the Patent Office arts cannot be That different combinations of the same elements cannot be joined, nor combinations of the same invention with different elements, see Ex parte Shepard (1872), 3 O. G. 522. 4 See § 478 and notes, post. § 473. That the statute allows the joinder of Claims for an art and its apparatus, see Ex parte Young (1885), 33 O. G. 1390. That a Claim for a process cannot be joined with a Claim for a machine where the process consists in the operation of the machine, there being in such case but one invention, viz: the machine, see Gage v. Kellogg (1885), 23 Fed. Rep. 891; 32 O. G. 381. In United States v. Butterworth (1884) 27 O. G. 717, it is doubted whether the process performed by apparatus can be joined merely because they relate to the same subject, or can be used for the promotion of a single ultimate result. Either, one must be in its own nature dependent on the other, or taken together they must constitute a combination-process which is also made the subject-matter of the application.2 Nor can a process be joined with the apparatus that performs it,3 nor patented as a separate invention from the apparatus. This doubt must be solved in the affirmative, if the process can be performed by other apparatus or the apparatus can be used for other purposes; in the negative, if they are so related that the process is the function of this apparatus and of this apparatus only. That one patent may cover the process and another the apparatus, see Philips v. Kochert (1887), 40 O. G. 1341; 31 Fed. Rep. 39; Tilghman v. Proctor (1880), 102 U. S. 707; 19 O. G. 859; Cochrane v. Deener (1876) 94 U. S. 780; 11 O. G. 687; Corning v. Burden (1853), 15 How. 252. That a process and its product may be joined, see Sewall v. Jones (1875), 91 U. S. 171; 9 O. G. 47; Merrill v. Yeomans (1874), 5 O. G. 267; Holmes, 331; 1 Bann. & A. 47; Goodyear v. Providence Rubber Co. (1864), 2 Fisher, 499; 2 Clifford, 351. That a process and its product may be joined if the specification shows that the inventor had both results in his mind, see Welling v. Rubber Coated Harness Trimming Co. (1875), 2 Bann. & A. 1; 7 0. G. 608. That if a process and product are joined each must be fully described, see Kelleher v. Darling (1878), 4 Clifford, 424; 14 O. G. 673; 3 Bann. & A. 438. That processes and their products are to be joined or not as the Patent Office may decide, see Goodyear v. Wait (1867), 3 Fisher, 242; 5 Blatch. 468. 2 In Ex parte McDougall (1880), 18 O. G. 130, Marble, Com. (131) "The rule that several distinct inventions cannot be included in a single applica tion is a well-settled one, and is alike applicable whether such inventions be improvements in processes or in machinery. . . . Each of the several 'acts' of 'the series of acts' constituting the process may be capable of performing separately its own peculiar function, and may be used independently of the others; but if together they co-act in producing the final result they may be joined in a single application. In such a case a Claim can be made to the process as an entirety, and separate Claims can also be made to the sub-processes which go to make up the same. So, also, where one has discovered that a desired result can be attained by a process consisting of a series of steps or acts, and that certain of the steps in such process may be replaced by others which will operate in an equivalent manner in attaining the same end, these several modifications can be embraced in one application, for they cannot be regarded as distinct inventions. In such case the applicant would be entitled to a broad or generic Claim, which would include all the modifications, and would also be allowed to claim separately any one of these modi. fications or species." That several processes cannot be joined merely because they relate to the same subject, see Ex parte McDougall (1880), 18 O. G. 130. 8 That a process and its apparatus cannot be joined, see Ex parte Herr (1887), 41 O. G. 463. That the process and the apparatus that performs it may be joined, though other apparatus will perform it, if the apparatus is inseparable from the process either of these with the product in which they result, unless they are to such an extent inseparable that the existence of some one of them is dependent upon that of the others.* and cannot be used except in performing the process, see Ex parte Tyne (1880), 17 O. G. 56. That a process, the apparatus, and the product can be joined if inseparable, not otherwise, see Ex parte Dailey (1877), 13 O. G. 228. In Ex parte Simonds (1888) 44 O. G. 445, it is held that where the process and the apparatus are inseparable the former must be the mere function of the latter. This is true where the process can be performed only by the apparatus in question, not where other apparatus can be employed in the process, although the apparatus in question, being capable of no other use than in this process, may be truly inseparable therefrom. That an art and its apparatus cannot be joined in one patent, being separable inventions wherever the art is not the mere function of the apparatus, see Ex parte Blythe (1884), 30 O. G. 1321. But see preceding case and remarks. Where a process can be performed by different apparatus it is a separate patentable entity from the apparatus which performs it, and therefore must be separately patentable. But it does not follow from this that if any one apparatus can be used for no other purpose than the performance of this process, the process is the mere function of such apparatus, and consequently not a patentable art. Every process may be regarded as a function in its relation to the apparatus which performs it, though it be a means in its relation to the object acted on, and where it is capable of existence apart from one specific apparatus, i. e. where it can be performed by various apparatus, it is a separately patentable invention. But an apparatus which can do nothing except perform a specific process is inseparable from that process, though the process may not be inseparable from the apparatus; and if the process and apparatus are both new inventions they may be joined in one application, not on the ground that the process is the function of the apparatus, but because the apparatus cannot be invented, examined, nor adjudged apart from the single process it performs. Now a In Ex parte Tyne (1880), 17 O. G. 56, Doolittle, Com. (56) "It is a settled practice of the Office that a process and its product or a machine and its product may be united in the same application and patent when the product is the necessary result of the process or machine, and can only be produced in that way, or where distinct machines are associated and are necessary to produce a single result. The connection, in all cases, between the means and result must be inseparable. Ex parte Cobb, 16 O. G. 175; Wintherlich, 16 O. G. 404; 16 O. G. 808. mechanical process, which is only another name for an art, is inseparable from the means by which it is operated. These means may vary, but if the same improvement in the art is produced in substantially the same way the different means are necessarily equivalents, just as two machines producing the same product in substantially the same way are equivalents. And it is no objection to joinder in the same application of inseparably connected distinct inventions that some other equivalent invention may be substituted in place of one of the former." In Ex parte Murray (1873), 3 O. G. 659, Leggett, Com. : (660) "A machine is a distinct subject of invention, and Thus a process may be joined with its inevitable product or with the apparatus by which alone it can be performed, or a product may be joined with the process on which it depends for its production, or an apparatus with the process whose performance constitutes the sole method in which it can be used; and when either the process or the apparatus or the product are so connected with the other two that its existence as a concrete invention is derived from, or results in, theirs an application for a patent for the former may include the others also. § 474. Joinder of Inventions: Machines: Processes: Products. A similar difference between the Patent Office and the courts obtains in reference to the rules relating to the joinder of machines. Under the decisions of the courts, two machines can be covered by one patent whenever they are kindred in their nature and capable of a connected use toward a common its product, or the article which it is employed to make, is another distinct subject of invention, if new in itself. They are classified separately in the portfolios of the Office, and require separate examinations, and to grant both in the same patent complicates and increases the work of examiners and greatly augments the danger of making mistakes and improperly duplicating patents. . . . The same is true of a process and the article produced by it. The two are entirely independent. The process may be new and the product old, or both may be new, and yet the product be capable of being produced by other processes. . . . Notwithstanding the precedents which exist, and admitting that such a practice as they indicate, if not strictly correct, is not fatal to the validity of patents, I think the time has come when, leaving out of consideration the perspicuity of the patents themselves, and the revenue to be derived under the law for examinations, a proper classification in the Office, so as to facilitate examinations and prevent mis takes in the issue of patents, requires that processes, machines, and their products be presented for patent in separate applications." That a product and process may be joined, see Ex parte Stow (1873), 3 0. G. 322. That where a process and its product are inseparable, and the sub-process and its product are also inseparable, all may be joined, and if these constitute a generic invention, one species under the genus may be added, see Ex parte Du Motay (1879), 16 O. G. 1002. That a process and product cannot be joined unless inseparable, see Ex parte O'Neill (1879), 16 O. G. 1049. That where a process and product are inseparable they should be joined, see Ex parte Young (1885), 33 O. G. 1390 ; Ex parte O'Neill (1879), 16 O. G. 1049. That a process and a product which requires another process to complete it cannot be joined, see Ex parte Chamberlin (1874), 6 O. G. 544. end.1 Machines and their integral parts, or a machine and the product in which its use results, or a machine and the process it performs, are also proper subjects-matter for a single patent.2 The Patent Office rules, however, require a separate application for each machine unless one cannot be contemplated as an operative instrument without the other, or unless they constitute the elements or sub-combinations of a principal machine which is also the subject-matter of the application. A machine and its product, a machine and its process, or a machine with both its process and its product, may be joined when either one cannot exist as a concrete and practical invention without the others.4 § 474. That two distinct machines cannot be joined, see Root v. Ball (1846), 4 McLean, 177; 2 Robb, 513. That machines capable of a common use may be joined, see Wyeth v. Stone (1840), 1 Story, 273; Robb, 23. 2 That a machine and its integral parts may be joined, see Wheeler v. McCormick (1873), 4 O. G. 692; 11 Blatch. 334; 6 Fisher, 551; Foss v. Herbert (1856), 1 Bissell, 121; 2 Fisher, 31. That the parts may be separately patented, see Jones v. Sewall (1873), 3 0. G. 630; 6 Fisher, 343; 3 Clifford, 563; Wheeler v. McCormick (1873), 4 O. G. 692; 11 Blatch. 334; 6 Fisher, 551. That if the parts are separately pat ented, each patent may describe the whole, see McMillin v. Rees (1880), 1 Fed. Rep. 722; 17 O. G. 1222; 5 Bann. & A. 269. That where the product of a machine is new it may be claimed in a patent for the machine, see Excelsior Needle Co. v. Union Needle Co. (1885), 32 Fed. Rep. 221. ented, its process and product may be separately patented at any subsequent period unless barred by two years' public use, see McKay v. Dibert (1881), 19 O. G. 1351; 5 Fed. Rep. 587. But see McKay v. Jackman (1882), 12 Fed. Rep. 615; 20 Blatch. 466; 22 O. G. 85. 8 That subordinate devices may be joined with the principal device, see Ex parte Bigelow (1878), 13 O. G. 913. That all parts of a machine which co-operate to produce a single result may be joined, see Ex parte Cauhape (1880), 17 O. G. 327. That where two machines together produce a result which they could not separately produce they may be joined, see Burke v. Partridge (1878), 58 N. H. 349; Ex parte Lones (1873), 4 O. G. 582. That machines used as elements of a combination may be joined, see Ex parte Holub (1880), 17 O. G. 854; Ex parte Shippen (1875), 8 O. G. 727. 4 In Ex parte Bancroft (1881), 20 O. G. 1893, Marble, Com. : (1894) "Various opinions have been expressed by my predecessors as to what constitutes a single invention or discovery. It has been held, and as I think prop That a machine having been pat- erly, that a die and its product, a pro That a machine, its process, and product are separately patentable, see McKay v. Dibert (1881), 19 O. G. 1351; 5 Fed. Rep. 587. |