uct are, in the very nature of things, distinct inventions, and therefore not to be covered by the same patent. In the classification of the arts in the Office, to which great weight is attached in ex parte Herr as being an important feature of the American system, the art or process and its product are generally found in different classes of invention and divisions of the Office. The same danger of mistakes on the part of the Office in overlooking references when examining such applications necessarily exists.

However serious and important these considerations, there are others which seem more controlling and conclusive. It is no longer an open question that under our system it was never intended that two or more distinct and separate inventions should be claimed and receive examination in the same application. However much difficulty there might be in ascertaining and determining whether the invention be a single invention, when it has been determined it must be applied for alone, and cannot be joined with other separate and distinct inventions. The only instance in which there has ever been recognized the slightest departure from this practice is in the matter of reissues, where by the statute of July 3, 1832, section 13, it was provided that "improvements" could be subsequently incorporated in a patent by certificate. By the act of March 3, 1837, section 5, it was provided that the improvements could be covered-by separate reissue patents-when a reissue was ordered. This continued to be the law until July 8, 1870, section 3, when this provision was repealed and the introduction of any new matter in the reissue patents was prohibited.

It has been definitely settled by the Supreme Court that under this prohibition no new matter can be introduced. However closely allied or dependent upon each other the process and the apparatus by which it is executed may be, that Court has held them to be separate and distinct inventions, aud that when a patent has issued for one, although the other was distinctly shown, a reissue for both could not be sustained (Burr v. Duryee, 1 Wall., 531; James v. Campbell, 104 U. S., 356; Poroder Co. v. Powder Works, 98 U. S., 126; Heald v. Rice, 104 U. S., 737.) If, now, process and product are also separate and distinct inventions, it must follow that when a patent has issued for a process, but which also showed the product, a reissue which covered both process and prod uct could not be maintained as to the latter. This is so, not only be cause it is true that but one single invention can properly be embraced in an original patent, but especially because a reissue must be limited to corrections relative to the single identical invention originally claimed and cannot embrace claims for another and independent invention. It is largely in the discretion of the Commissioner of Patents to determine whether more than one invention may be embraced in the original Letters Patent; but to introduce a new or second invention in a reissue patent is expressly forbidden by statute.

What are the decisions of the courts in this respect as to process or

product? The adjudications upon the Goodyear patents are instructive. and bear directly upon this question. The original patent was issued in 1844 and contained a claim for the process. In Goodyear v. The Central R. R. of N. J., (1 Fisher, 626,) decided in 1853, it became necessary, in order to sustain the action, to hold that the claim for the process covered the product also, and a sale or use of the composition, except when purchased from licensees under the patent, infringed the process claim. Judge Grier held:

The product and the process constitute one discovery, the monopoly of which is secured to the inventor or discoverer as a consideration or compensation for making it known to the public.

Now, what is this india-rubber, cured “substantially as herein described ?"

It is clearly not merely an improved method or process of producing an old and well-known composition or material, but it is a new product, fabric, manufacture, or composition of matter, having qualities possessed by no other known material. This is what is described and claimed in the patent-a new product as well as a new process.

The product and process being both new and proper subjects of a patent, the patentee has a right to prohibit the sale or use of the composition, unless when pur chased from persons licensed by him to use the process and vend the product. If prec. edent be needed for this doctrine, the case of Hancock v. Sommerville, in the English Court of Common Pleas, tried in June, 1351, will be found directly in point.

This decision, which probably grew out of a judicial anxiety to save a patent for a "great and useful discovery," will probably be questioned so far as it held that a claim for a process will cover the product. It was doubted in Goodyear v. Wait, (3 Fisher, 242,) and it shows a dependence upon English precedents, which are not always applicable to cases arising under the American patent statutes.

It appears that the question was so doubtful that the patentee was unwilling to trust the patent, and in 1849 it was reissued "for a new and useful improvement in the processes for the manufacture of indiarubber." It was extended in 1858, and in 1860 was surrendered and reissued in two patents, one for the process and the other for the product.

In Goodyear v. Wait, supra, it was held that in a patent for process and product, both new, a claim for one does not exclude a claim for the other:

Our conclusion of this point is that the original patent was properly surrendered in order to amend the claim, and that the reissue of two patents is unobjectionable.

Subsequently the suit of Rubber Co. v. Goodyear was instituted in the United States Circuit Court for Rhode Island, involving the validity of these reissued patents. It was contended by defendant that both reissue patents were invalid for two reasons: (1) because they were broader than the claims of the surrendered patent; (2) because one was for a process and the other for the product of that process. The court below held the first objection fatal to the process claim, but sustained the prod uct claim. No appeal was taken from the decision holding the process claim invalid. In the Supreme Court the second objection was considered. Evidently the question was whether separate reissue patents

could be sustained for process and product. The decision and its language must be construed with reference to the case involved. The court said by way of introduction :

But liberality rather than strictuess should prevail where the fate of the patent is involved, and the question to be decided is whether the inventor shall hold or lose the fruits of his genius and his labors. [Corning v. Burden, 15 Howard, 269;

Battin v. Taggert, 17 Id., 74.]

Patentable subjects, as defined by the patent law [act of 1836, sec. 6,] are "any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter." A machine may be new, and the product or manufacture proceeding from it may be old. In that case the former would be patentable and the latter not. The machine may be substantially old and the product new. In that event the latter, and not the former, would be patentable. Both may be new or both may be old. In the former case both would be patentable; in the latter, neither. The same remarks apply to processes and their results. Patentability may exist as to either, neither, or both, according to the fact of novelty, or the opposite. The patentability, or the issuing of a patent as to one, in no wise affects the rights of the inventor or discoverer in respect to the other. They are wholly disconnected and independent facts. Such is the sound and necessary construction of the statute.

It is impossible to make a proper application of this language of the court to the case before it, except upon the hypothesis that the court held that the process and product were one invention, but different and distinct parts of that invention, and that separate reissue patents for these respective parts (the statute authorized reissues for parts) of the invention were valid. It can not be supposed that the court would recognize as valid a reissue for a separate and distinct invention from that covered by the original patent, and yet it will be observed that the claim for the process was the only claim in the original patent. The reissue patents covered, respectively, the process and the product; the reissue process patent was declared invalid, and the reissue patent for the product alone sustained. So that if the process and product are distinct and separate inventions, the case presents an instance in which, after the original invention covered by the original patent had been eliminated, the reissue patent for a separate and distinct invention was upheld.

It is not necessary to a full and proper application of the above lauguage of the court that they should be understood as holding that the process and product were distinct and different inventions. "They are wholly disconnected and independent facts," and such an invention is so far capable of division upon the line dividing those facts that separate reissue patents will be held valid, when

Liberality rather than strictness should prevail where the fate of the patent is involved, and the question to be decided is whether the inventor shall hold or lose the fruits of his genius and his labors.

Thus it appears in the history of the adjudications upon the Goodyear patent that in the first adjudication the court (" considerably embarrassed in making it, and from which he would have been relieved if

there had been a claim for the product or substance," Goodyear v. Wait) held that a claim for a process covered the product, in order to save the patent, and in the last and final adjudication the Supreme Court, in order to save the invention, held that a reissue patent for the product was valid, though the original patent was for the process alone, the re. issue for which was invalid and could not be enforced. See Goodyear v. Providence Rubber Co., (2 Fisher 499,) where it was held that under section 5 of act of March 3, 1837, separate reissue patents for separate and distinct parts of the things patented were authorized. (Penn Salt Co. v. Gugenheim, 3 Fisher, 423.) Three reissue patents for product and process were issued upon an original patent for the product alone.

The amended patent of 11th of April, 1857, (the reissue,) in which ex major cantela the improvement had been unnecessarily split into distinct patents, may be treated as one patent with three distinct claims.

Jones v. Sewall, (6 Fisher, 343.) Four original patents were issued covering the process of canning corn and the product. Speaking of the second patent, Clifford, J., says:

Necessarily the details of the process are somewhat fully given in the specification describing the patented product; but the claim of the first patent does not extend to the process, which shows that the Patent Office committed no error in granting the second patent, as it does not include anything patented in the first patent. (Goodyear v. Providence Rubber Co., 2 Cliff., 371; Ib., 9 Wall., 78; Seymour v. Osborne, 11 Wall., 559.)

Both parties agree that it is competent for the Commissioner to grant a patent for the product and one for the process, and it is obvious that the patent under consideration is for the process, which is not included in the prior patent.

In Seymour v. Osborne, (11 Wall., 544,) cited above, the court says: Reissued Letters Patent must, by the express words of the section authorizing the same, be for the same invention, and consequently where it appears on a comparison of the two instruments, as matter of law, that the reissued patent is not for the same invention as that embraced and secured in the original patent, the reissued patent is invalid, as that state of facts shows that the Commissioner, in granting the new patent, exceeded his jurisdiction.

In Merrill v. Yeomans (94 U. S., 568) Miller, J., says:

If the patentee is also entitled to a patent for the product of this distillation, and has failed, as we think he has, to obtain it, the law affords him a remedy, by a surrender and reissue.

This conclusion can only be true upon the premise that the process and the product constitute one invention.

In Anilin et al. v. Higgin et al. (14 O. G., 414; C. D., 1878, 335) the suit was upon reissued patent with claims for both process and product, issued upon an original patent with a claim for the process alone. The defense was that the reissued patent was unauthorized. Wheeler, J.

Nothing is seen to show that the original (patent) was not valid for what it claimed. There was nothing defective or insufficient about the specification of the invention. If the statute, by specification, meant that and no more, then on the patents themselves it would appear that there was no ground for the reissue; but the

cification

of the claim as well. In that sense there was a defective specification of the invention as patented, and the patent was inoperative and invalid for that part of the invention not covered by the claim. The invention specified in each was precisely the same. The original did not cover the whole of it, and so was inoperative as to part. The reissues do cover the whole. They seem to fall exactly within the intention of the statute in this particular. (Seymour v. Osborne, 11 Wall., 516.)

Cochrane v. Badische Anilin Co., (111 U. S., 293:)

We have not deemed it necessary to consider more particularly the question whether the reissue patent (product, original patent for process alone) is or is not for a different invention. It certainly is, unless the product claimed in the reissue is precisely that product and no other, which the process described in the original patent produces.

The case of Kelleher v. Darling (14 O. G., 673) seems at variance with the foregoing authorities. The original patent was for a shoe made of several parts and by a peculiar seam. It contained no description of the method by which it was made whatever, but was reissued with a description of the process and claims covering both the shoe as an arti cle or product and also claim 4 for a method or process. Clifford, J., held that the new description and claim 4 were new matter, citing Seymour v. Osborne, and added:

Beyond doubt the invention described in the original patent, though composed of the several parts therein described, is, in legal contemplation, a new and useful manufacture, and it is equally clear that the process of making an article of manufacture is a different invention from that of the product. Both may be included in the same patent, but the required description is as essential and indispensable in the one case as in the other.

The decision was undoubtedly correct; but the suggestion that the process and product were different inventions was unnecessary, and is in conflict with the cases cited. The article or product and mechanical method presented a case like the Mosler Safe case, where after patent for the product there is no patentable process left. See the cases of McKay v. Dibert (C. D., 1881, 238) and McKay v. Jackman, (C. D., 1882, 303,) where finally the claims for the process and the article were held invalid, the invention being covered by the patent for the machine. Powder Co. v. Powder Works, (98 U. S., 126:)

In another case arising on the original patent of Goodyear, reported in 2 Wall., Jr., 356, Mr. Justice Grier used this expression:

"The process and the product constitute one discovery." The product in Goodyear's invention was the direct result of the process. They were parts of one invention, and, except in imagination, could no more be separated from each other than the two sides of a sheet of paper, or than a shadow from the body that produces it.

This expression, not necessary to the case, and probably obiter, yet shows how clearly and definitely was lodged in the mind of the eminent judge who wrote the opinion the judicial conception of process and product as one invention.

In James v. Campbell (104 U. S., 356) the relations between process and apparatus and process and product were distinctly considered and determined. The original patent contained claims for the letter-stamp