There can be no doubt that the generic claim gains strength from the specific claim, and so does a process gain strength by the disclosure and claiming of the machine, and above all does a process gain strength by the disclosure and claiming of its alter ego, its products, and vice versa.

And what is the relation between broad, narrow, and improvement claims?

And what is the relation between the separate claims of some elaborate machine such as a printing press, a typographic machine, a voting machine, etc.?

12. It has been said by the courts, for example, in Bennet v. Fowler, that joinder of inventions is in a measure within the discretion of the Commissioner. It is true that this was said with reference to different machines; but if this be a matter of discretion with the Commissioner, then he should not frame a rule of law. The rule as it stood permitted the proper exercise of the discretion of the Commissioner; but we do not think the statutes or the courts contemplated an inflexible rule like the one now in force, made by the officer whose duty it is, in our opinion, to exercise that discretion in view of the facts of each particular case.

13. It seems clear, therefore, to us that the rule is untenable as it now stands. We are unable to see that any reason of policy exists at the present time which should require any rule at all upon the subject. It seems to us that each particular application should stand on its own basis, and its disposiItion should be determined by the particular facts.

Without undertaking to lay down an absolute criterion, which is impossible, as the peculiarities of all possible cases can not be borne in mind, it seems to us that a safe guide to follow generally would be to let the question of separation depend upon the character of disclosure.

Assuming novelty and patentability in each instance, if the disclosure of one subject matter involves or compels the disclosure of another subject matter, then such subjects matter should be embraced in the same application. For example, if a new product has been invented, the statute obliges the inventor to disclose in full how the product is made. If the inventor in so doing discloses a new process, he should be permitted to claim it in the same application.

In other words, the protection should be commensurate with the disclosure. If the inventor, in disclosing his new product, is obliged at the same time to disclose a new process, there is no consideration which he can offer in exchange for two

grants. The public gets all it is entitled to from the single disclosure and obtains no benefit from a second grant.

14. In our opinion, the court opinions and decisions and the illustrations they furnish are against the rule.

VI. Office Classification.

In the appendix to this report we have placed a digest of the Commissioners' decisions. Those decisions evidence that the great majority of the Commissioners treated division as a question of fact, especially where method, apparatus, and product were in question.

1. The average view is expressed in the first division of the present rule (41) and, for example, in the following quotation from Ex parte Dailey, 1878 C. D. 3:

"The Examiner, in refusing to consider these claims (mode, machine and product), followed the letter of the decision referred to (Murray v. Wuterich, 1873 C. D. 96), and felt bound by that decision; but I think that it has not been the practice of the office to adhere so closely to that decision as to make it apply indiscriminately to all cases in which processes or machines were involved; and I am of the opinion that the ends of justice are better subserved by allowing in one patent the claims for machines or processes and products, wherever their relation is such to each other as not to make it plain that they are independent inventions."

In answer to the practical difficulties, Commissioner R. H. Duell, in Ex parte Clinton and Knowlton, 1876 C. D. 30, said: "The great inconvenience and confusion which the Examiner apprehends will arise from this decision may be obviated, in cases like the present one, by the Examiners furnishing to other classes duplicate drawings of those parts, which, if made the subjects of separate applications, would properly belong to such other classes."

In the report of the Examiners-in-Chief to Commissioner Montgomery, hereinbefore referred to, they say:

"Is it any relief to the work of the Office to have two cases instead of one, to receive, and enter of record, and inspect, and jacket, and stamp, and assign, and enter in the Examiner's minutes, and examine, and conduct the correspondence, and go through with all the necessary steps and proceedings up to final allowance, and to prepare, and sign, and seal, and record, and deliver the patents, and make briefs and copies of claims for publication, and print, and publish the same? If this duplication of the work of the Office be not a saving of labor,

what shall we say when, as is frequently the case, a single application is divided into a dozen or more?"

2. We do not believe the classification of the Office will be benefited by a continuance of the rule.

The classification of patents should, we think, be in accordance with disclosure and not claims. In classifying patents the Office should ignore the claims altogether and be guided solely by the disclosure made. The practical defects of the present classification are mainly due to the fact that the claims of a patent control its classification, and its specification is largely ignored. In the rare cases where a search through a single folio reveals a complete anticipation, the same end can be reached by a proper cross-reference. Except in the few cases of interferences and reissues, after a patent has been issued the Patent Office has no further interest in the claims, but it has a very great interest in the disclosures made. Bearing this in mind, it will be seen that the application of the new rule will be of no benefit to the Office classification. If a patent for a product necessarily discloses a new process, or if a patent on a new apparatus necessarily discloses a new process and a new product, these disclosures, in addition to what is claimed, must be recognized in the Office classification if it is to be of any value. There is no way of compelling an inventor to take out different patents for these allied subjects matter, and he might not be able to afford it, even if he should desire to do so, and consequently his single patent must be put into as many different classes as its disclosures warrant, provided the classification is to be accurate. The question of Office classification is thus wholly outside of the character of the claims in the patents, and the convenience of Office classification is not, in our opinion, a sufficient ground for the rule.

VII. The Fiscal Argument.

We think that the fiscal argument should not be advanced directly against the inventor, nor do we think that the larger view at present compels this argument.

Unfortunately, Congress has not correlated revenues and appropriations. If the expenses of the Patent Office exceeded its receipts, the matter of securing additional fees might be of importance, and the reason of the rule might be justified, providing it were surely effective and no better way of increasing the receipts of the Office could be devised.

But this condition of affairs does not exist. On the contrary, the Patent Office is a source of profit to the Government.

There is a large annual surplus, and a total surplus of about $5,000,000. If the 6,000 or 7,000 patents, including method or apparatus, etc., had been divided, this surplus might have been increased by from $40,00 to $60,000. Instead, therefore, of being solicitous to increase its fees, the aim of the Office should be to either diminish the burden upon inventors or to increase its facilities and the boundaries of an application.

Quoting again from the report of the Examiners-in-Chief: "But is it right to rob the inventor merely to get the fees, and compel him to take two or more patents where one would give him all the evidence of title to the exclusive use of his invention contemplated by the constitution and promised him by the law? And often from poverty the inventor is forced to submit to be shorn of his rights and go before the world with a patent which covers only a fraction of his inventive work, and giving him only questionable protection for what it has been allowed to embrace."

The report then goes on to discuss the practical dangers to the public.

VIII. The Rule as a Finality.

In Ex parte Boucher the Commissioner, in closing, says: "In addition to all the reasons that have been and might be adduced in favor of the requirement of division between process and apparatus claims, it is self-evident that this question is always going to be an unsettled one unless it is disposed of by rule."

Then why not abolish Rule 41?

Or would not the arbitrary rule of not requiring division between method, apparatus, and product be as efficient to this end?

But might not the rule rest on the disclosure, thereby following the courts, the opinion of the bar, the wishes of the applicant, and the natural suggestion of the facts? This would at the same time provide the proper safeguard to the public of putting in one grant one invention or connected inventions, making the claims commensurate with the necessary disclosure?

Can the Commissioner expect to settle this by rule? See the varying rules in the appendix. It is a matter of recent history that one Commissioner prepared and published a whole new set of rules, and that the next Commissioner canceled the whole edition and replaced the preceding rules, all within five months.

It has been suggested that this rule could be given the force of law, at the same time protecting previous grants.

We have very carefully considered this proposal. We are doubtful if the validity of prior grants could justly be the subject of a statute, and we think it inexpedient to file a bill of this sort while we are so strenuously opposing many interpreting bills before Congress. In addition to this, we believe that such a law would be hurtful for the reasons we have fully set forth; and upon the consideration of the whole matter we should deem it our duty to use our utmost endeavor against such a bill.

In the meantime, however, the rule still stands, and even if such a law were desirable it might be neither politic nor possible to secure its passage.

IX. Practical Objections.

There are many practical reasons which, in our opinion, far outweigh the supposed advantages and "convenience" of the present rule.

1. It seems manifest that the rigid application of the substance of the rule would work great hardship upon inventors. It would in many instances compel the inventor desiring to claim the protection he considered himself entitled to, to take out different patents, some of which might be declared invalid in the courts, following the decision of the Supreme Court in the Mosler case.

2. In many cases an inventor could not afford to make more than one application, and in such event the rule would restrict him to a claim for one subject matter, although in disclosing it he would be obliged to disclose other novel subject matter. In such case the inventor is obliged to select that particular subject matter which for the time being he regards as the most important to claim. The rule obliges him to disclose the remainder of his invention without corresponding protection except at onerous additional cost. The inventor must either sacrifice a portion of what he is entitled to, or at grievous burden to himself, pay out additional fees to increase the idle surplus funds of the Patent Office.

It

3. The present rule opens up opportunities for fraud. compels an inventor who has invented a new product, made by a new process, which may be the only process by which the