Page:Federal Reporter, 1st Series, Volume 1.djvu/733

 u'hiLLAN V. BKBB. 725 �make and use it, and thus that it may be available to the public after the expiration of the patent. Where the inven- tion consists of a mechanical combination, it is not only proper, but requisite, to describe the construction and ar- rangement of its component parts, the purpose for which it is to be used, the mode of its operation, and its relations to other mechanism with which it is intended to co-operate. Tins mechanism may be indispensable to the operativeness of the combination, but it does not constitute a part of the invention uuless it is embodied in the claim. In Forbush v. Cook, 2 Fisher, 669, Mr. Justice Curtis says: "If inclined wires are necessary to the action of the combination speciûed, 80 are many other parts of the machine ; and ail parts neces- sary to the action and combination speciûed might be said to enter into the mode of combining and arranging the ele- ments of the combination, but need not be, and ought not to be, included in the combination claimed." �Can there be any doubt, then, that any one aight lawfuUy practice the method of rotating a capstan described in the patent of 1866, simply substituting other mechanism for the combination therein claimed, or what is the same thing, f orm- ing a new combination, by discarding some of the elements of the patented one ? And why ? Because only the combination claimed, and not the integral method described, is covered by the patent. �With this limitation of the soope of the patent of 1866, might not a valid patent be subsequently granted as that of 1867, for an integral method, of which the invention claimed in the first patent is one of the elements? I know of no sufficient reason why this may not be. The patents are incompatible. In a patentable sense their sub- jects are different, and hence they do not cover the same invention. It is well settled that a mechanical device, adapted and intended to be used in combined connection with other devices, may be patented by itself, and that the combination of which it is a constituent part may also be separately patented. For what reason? Because both patents do not cover the same invention. ��� �