§ 475. Joinder of Inventions: Manufactures: Processes: Ap paratus. The courts permit two manufactures to be joined whenever they are appropriate for use in the same article to serve a common purpose, or when they stand to each other in the relation of a combination and its elements, or when they are the elements of a combination which is itself embraced in the same patent. When any new manufacture is the result of a new process, or is made by a new machine, these also may be joined, although the manufacture might be otherwise produced. The Patent Office, however, applies here the same restrictions as in the cases of a process or machine. One of the two manufactures must be intrinsically dependent upon the other and co-operate with it to some unitary result, or one must represent the genus of which the other is a species, or cess and its product, the different parts of the same machine co-operating to produce a unitary result, and a machine and its product are respectively sometimes one and the same invention, and therefore may be included in the same patent. The true rule in the latter case, I think, was properly stated by my predecessor, Mr. Commissioner Paine, in the case of Ex parte Wintherlich (16 O. G. 404), as follows: If the machine and the manufacture are so related that the former cannot operate without producing the latter, and the latter can only be produced by the former, both may be united in one patent; but this is an exception to the general rule, which forbids the joinder of the machine and its product in one application.' The rule above stated also applies in the case of a die and its product or a process and its product. It is only when the product can be produced by the die or the process that the die and its product or the process and its product can be considered one and the same invention. In a case where different parts of a machine may be embraced in the same patent they may be so embraced only because they help to make up one entire whole. In all the cases decided by my predecessors which I have been able to find, the idea of a single invention was always kept in view. Different opinions have been expressed as to what constitutes a single invention; but I have been unable to find that it has been held that two distinct and independent inventions can be embraced in one patent." That a machine and its product cannot be joined, see Ex parte Murray (1873), 3 O. G. 659. That a machine and its product cannot be joined unless they are inseparable, see Ex parte Wintherlich (1879), 16 O. G. 404, 808. That when the machine and its product are so related that the former cannot operate without producing the latter, and the latter can only be produced by the former, they can be joined, see Ex parte Wintherlich (1879), 16 O. G. 404, 808. That if the product can be made only by the machine they may be joined, see Ex parte Cobb (1879), 16 O. G. 175. they must be members of a combination which is covered by the same application. The manufacture and the process or the machine which produces it must be inseparable as concrete inventions; so that either, on one hand, the manufacture implies the process or machine, or, on the other hand, the process or machine implies the manufacture, and the investigation of the one thus necessarily involves that of the other.2 § 476. Joinder of Inventions: Compositions: Ingredients: Processes: Apparatus. Compositions of matter are subject to the same rules as manufactures, both in the Patent Office and before the courts. When wholly independent they cannot be joined; when capable of co-operating to a common end the courts sanction their joinder, although the rules of the Patent Office forbid it unless one is dependent on the other and their co-operation is inevitable.1 As every composition is a true combination, its elements and sub-combinations may be joined with it in an application for a patent; 2 and where it stands toward a process or machine in the relation of a product, the courts permit it to be joined with them as in the case of any other product, while the Office limits such a joinder to instances in which the composition and machine or process are inseparable.3 § 477. Joinder of Inventions: Designs. Owing to the peculiar character and functions of a design, it is scarcely conceivable that any two designs could be de § 475. 1 That a manufacture may be joined with a combination into which it enters, see Ex parte Adams (1873), 3 0. G. 150. * See notes in §§ 473, 474, ante, as to joinder of product with processes or machines. § 476. That two compositions cannot be joined where one contains all the ingredients of the other with additional ingredients, see Ex parte Lippincott VOL. II. -5 (1879), 16 O. G. 632. This is not true where one composition is a sub-combination of the other. 2 That the joinder of Claims for the associations of ingredients in a composition is proper, if they contribute to the single result and are not in different classes, see Ex parte Hentz (1884), 26 O. G. 437. 8 See §§ 473, 474, and notes, ante, covering joinder of product. pendent on each other or capable of acting toward a common end except as elements in a combination; and therefore but one separate design can be included in a patent, although where several subordinate designs unite to form a new one the application for a patent for the new design may embrace all the elements and sub-combinations of which it consists.1 It is equally foreign to the idea of a design that it should be dependent on, or inseparably connected with, those qualities in its object which make that object a new manufacture; and hence although the object be the same it cannot be protected by one patent both as a manufacture and as a design. § 478. Joinder of Inventions: Improvements. The joinder of improvements is also regarded by the Patent Office and the courts from different points of view. Two improvements may be related either directly through the dependence of one upon the other or indirectly through their individual dependence upon the same original invention. Where neither of these relations exists, the improvements cannot be joined. Distinct improvements in distinct arts or machines are as independent of each other as any two inventions of the same class can ever be, and all the rules, both of the Office and the courts, require for each of these a separate § 477. 1 That the joinder of designs is governed by the usual rules, see Ex parte Patitz (1883), 25 O. G. 980. That two independent designs cannot be joined, see Ex parte Beattie (1879), 16 O. G. 266. That the capability of being associated does not make two designs dependent, see Ex parte Patitz (1883), 25 O.G. 980. That a design patent can cover but one design and such modifications of it as do not affect its identity, see Ex parte Gerard (1888), 43 O. G. 1240. That several aggregated designs can not be joined, see Ex parte Gerard (1888), 43 O. G. 1235. That a joinder of a combination design and its elemental designs is proper in the courts if the Patent Office will permit it, see Dobson v. Hartford Carpet Co. (1885), 114 U. S. 439; 31 O. G. 787; Ex parte Pope (1883), 25 O. G. 290; Ex parte Beattie (1879), 16 O. G. 267; Ex parte Rogers (1878), 13 O. G. 596. That in the Patent Office the elements of a design cannot be joined with the design, see Ex parte Gerard (1888), 43 0. G. 1235. That in an application for a design a Claim for a separable part of it, which is not a complete design, cannot be inserted, see Ex parte Pope (1883), 25 O. G. 290. That the relation of genus and species does not exist in designs, see Ex parte Gerard (1888), 43 O. G. 1240. application.1 But two improvements in the same art or machine, though as improvements merely they may be wholly independent of each other, are so connected through the original invention that they are capable of serving a common end, and hence, according to the doctrine of the courts, may be covered by the same patent and joined in the same application.2 An improvement in a given art or machine may not, § 478. 1 In Emerson v. Hogg (1845), 2 Blatch. 1, Betts, J.: (7) "In Evans v. Eaton (3 Wheat. 454, 506), and in Barrett v. Hall (1 Mason, 447, 475), doubts are started whether, under the general Patent Law, improvements on different machines can regularly be comprehended in the same patent, so as to give a right to the exclusive use of the several machines separately, as well as a right to the exclusive use of them in combination. But the special statute (6 U. S. Stat. at Large, 70) applicable to the first case furnished a rule in itself, and the doctrine intimated by the court must accordingly be accepted as put hypothetically, and not laid down as a settled principle to govern the construction of specifications. The case of Barrett v. Hall attempts a generalization of the doctrines of the Patent Law, and, in the particular now under inquiry, the definition there adopted has no necessary connection with the case decided. Judge Story, in Moody v. Fiske (2 Mason, 112, 119), enters a caveat against his reasoning in that case being held to authorize the including in one specification several improvements in separate machines, having distinct and independent operations; much less the claiming in the same patent a combination of different machines, and distinct improvements in each. The suggestions advanced in all these cases were by way of caution, and were probably designed to avoid the conclusion that the court had prejudged or was committed upon that particular form of the question. No one of the cases demanded a judgment upon the specific point. In Wyeth v. Stone (1 Story, 273, 292) the court reviews those cases, and restricts their application to such inventions as are necessarily distinct from each other, and not contemplated to be used in connection, and holds that a patent for several machines, each being a distinct and independent invention, is valid where they have a common purpose and are auxiliary to the same common end. (Phillips on Pat. 216, 217; Pitts v. Whitman, 2 Story, 609, 620, 621.) The principle seems to be, that the inventions should be capable of being used in connection, and to subserve a common end (Wyeth v. Stone, 1 Story, 273, 289, 290), though their actual employment together does not seem to be required to sustain the validity of the patent in which they may be united." See also Evans v. Eaton (1818), 3 Wheat. 454; 1 Robb, 243. That Claims covering several and distinct improvements relating to one article are not allowed, and all but one may be ordered disclaimed by the court as a condition of granting relief as to the others, see Sessions v. Romadka (1884), 28 O. G. 721; 21 Fed. Rep. 124. 2 That several improvements on the same original machine may be joined, see Burke v. Partridge (1878), 58 N. H. 349; Lee v. Blandy (1860), 1 Bond, 361; 2 Fisher, 89; Adams v. Jones (1859), 1 Fisher, 527; Morris v. Barrett (1859), 1 Fisher, 461; 1 Bond, 254; however, always be applicable to that original alone, or be useful only in connection with the other improvements which may be made by the same inventor on the same original invention, but may be equally operative for different purposes apart from them. Under the general rules of the Office, such improvements cannot be joined in the same application; a joinder of improvements being forbidden unless one so depends upon the other that they mutually co-operate to produce a given result. Distinct and independent improvements in separate parts of the same original invention therefore cannot be joined ; but several improvements in the different elements of a combination affecting the action of the combination as a whole, or improvements which so operate upon each other as to increase their joint efficiency, may be united in one application and be protected by the same patent.5 § 479. Joinder of Inventions: Application of these Rules often Difficult. Although these various rules are reasonable in theory and clear in statement, their application to practical inventions is often difficult, from the obscurity which may exist in regard to the actual relations of the inventions to each other. Differences of opinion frequently arise between inventors and the Patent Office on this subject; and as the authority of the Office is supreme and finally determines what is a single inPitts v. Whitman (1843), 2 Story, 609; 2 Robb, 189; Wyeth v. Stone (1840), 1 Story, 273; 2 Robb, 23; Moody v. Fiske (1820), 2 Mason, 112; 1 Robb, 312. 8 That devices, improving a machine as a whole, may be joined, see Ex parte Clinton (1876), 9 O. G. 249. That two or more improvements on a machine, each contributing to the common result, may be joined, see Ex parte Sergeant (1876), 9 O. G. 963. That improvements in the separate parts of a machine cannot be joined unless they co-operate in the new invention, see Ex parte Gillies (1876), 10 O. G. 415. That several improvements in the parts of a device may be joined if they co-operate to improve it as a whole, and the improvements are not distinct subjects of invention or manufacture, see Ex parte Herr (1887), 41 O. G. 463. * That independent improvements on the different parts of a machine cannot be joined, see Ex parte Van Matteson (1883), 24 O. G. 389. That improvements in the elements of a combination may be joined if the elements co-operate in the original combination, though there are other elements, see Ex parte Möller (1879), 16 O. G. 358. |