Page:Federal Reporter, 1st Series, Volume 1.djvu/734

 726 FEDBBAL REPORTER. �Upon the same principle, if the complainant had built an engine of novel construction, describing it as speeJally fitted and intended for use in his method of rotating a capstan, he might patent it alone, and he might also obtain a patent for his method as a whole, describing his previously patented engine as one of its component parts. I am, therefore, of opinion that the patent of 1867 is not invalidated by reason of anything contained in the patent of 1866. �6. These views are not impugned by the cases referred to in the argument, as I understand them. A brief reference to two of them, as representing the whole class to which they belong, will sufBciently illustrate this. The fundamental principle of ail these cases is that two patents for the same invention cannot co-e'xist ; and that where two are issued ta the same person the last one is void. �In O'Reilly v. Morse, 15 How, 63, the order of the patents in this case is inverted. Morse had obtained a patent broadly covering his own invention. He afterwards obtained a patent for a new arrangement or combination of the telegraphie mechanism by which the electro-galvanie current might b& passed along the whole line without interruption by the local circuits. The court held the latter patent to be valid, say- ing: "Nor can its validity be impeached upon the ground that it is an improvement upon a former invention, for which the patentee had himself already obtained a patent. It is true that under the act of 1836, § 13, it was in the power of Professor Morse, if he desired it, to annex this improvement to his former specification, so as to make it from that tiine a part of the original patent. * * Nor is he bound in his new patent to refer specially to his former one. Ail that the law requires of him is that he shall not claim as new what was covered by a former invention, whether made by himself or any other person." The evident reference here is to the scope of the two patents under consideration, and its import is that, although Morse might have included in his first patent the arrangement or combination described in his second patent, yet as it was not claimed in the former, and was not. ��� �