The inventor, or some one for him, must assume the position of a pirate, and set his wits to work to contrive an organization realizing the invention but escaping the terms of the proposed claim. When such an escaping device is schemed out, then the defect in the claim is developed and the claim must be redrawn. In this way every possible escape must be studied so as to secure to the inventor adequate protection for his invention. Solicitors find it difficult to get inventors to do or consider this matter properly, inventors being too often inclined to disparage alternative constructions, the matter being largely one of sentiment founded on the love of offspring.

The wise inventor will recognize the fact that the patent which he proposes to get is the deed to valuable property; that the object of the deed is not to permit him to enter upon the property, for he can do that without the deed, but that it is to keep strangers from entering upon the property; that he desires to enjoy his invention without unauthorized competition; that when the property begins to yield profit it will invite competition; that competitors may make machines worse than or as good as or better than his; and that he can get adequate protection only in a claim which would bar poorer as well as better machines embodying his invention. Briefly, then, all good claims for mechanism are combination claims; the fewer the elements recited, the stronger will the claim be; non-essential elements weaken or destroy the claim; the claim should not be considered satisfactory so long as a way is seen for the escape of the ingenious pirate.

Combinations And Aggregations

A given association of mechanical elements may be entirely new, but it does not follow that it forms a patentable association, for not all new things are patentable. If the new association is a combination, it is patentable, but if it is a mere aggregation, it is unpatentable. An association may be new and still all of its separate elements may be old, the act of invention lying in the fact that the elements have been so associated with relation to each other as to bring about an improved result, or an improved means for an old result. All new machines are, after all, composed of old elements. The law presupposes that the elements are old, and that the invention resides in the peculiar association of them. If we take a given mechanical element, recognized as having had a certain capacity, and if we then similarly take some other mechanical element and employ it only for its previously recognized capacity, and if we then add the third element for its recognized capacity, we have in the end only an association of three elements each performing its well recognized individual office, and the entire association performing only the sum of the recognized individual elements.

Such an association is a mere aggregation, a mere adding together of elements, without making the sum of the results any greater in the association than it was in the individual elements. It is simply adding two to one and getting three as a result. An aggregation is unpatentable. As an illustration, a heavy marble statue of Jupiter is found in the parlor and difficult to move. Ordinary casters are put under its pedestal and it becomes easier to move. Modern anti-friction two-wheeled casters are substituted for the commoner casters, and the statue becomes still easier to move. Casters were never before associated with a statue of Jupiter. Here is a new association, but it is a mere aggregation. The statue of Jupiter has been unmodified by the presence of the casters, and the casters perform precisely the same under the statue of Jupiter that they did under the bedstead. There is no combined result, and there is no patentable combination.

But if an inventor takes a given mechanical element for the purpose of its well recognized capacity, and then associates with it another mechanical element for its recognized capacity, but so associates the two elements that one has a modifying effect upon the capacity of the other element, then the association will be capable of a result greater than the sum of the results for the individual elements. This excessive result is not due to the individual elements, but to the combination of them. One has been added to one and a sum greater than two has been secured. The modification of result may be due merely to the bringing of the two elements together, so that they may mutually act upon each other, or it may be due to the manner or means by which they are joined. In a patentable combination the separate elements mutually act upon each other to effect a modification of their previous individual results, and secure a conjoint result greater than the sum of the individual results. The elements of a combination need not act simultaneously; they may act successively, or some may act without motion. As an illustration, assume an old watch in which there was a stem for setting the hands, and assume another old watch with a stem for winding the spring.

If an inventor should make a watch, and provide it with the two stems, he would have only an aggregation. But if he employed but one stem, and so located it that it could be used at will for setting the hands or for winding the spring, then he would have produced a combination. The particular instance just given is not a case of the same number of elements, producing a result in excess of the individual results of the separate elements, but is rather a case of a lesser number of elements, producing a combination result equal to the sum of the previous results of a greater number of elements. A better example would perhaps be a new watch with its two old stems so related that either could be used for setting the hands or for winding the spring.

Genera And Species

An inventor, being the first to produce a given organization, and desiring to patent it, may see at once a patentable variation on the device. In other words, he makes two machines patentably different, but both embodying his main invention. He drafts his broad patent claim to cover both machines. In his patent he must illustrate his invention, and he accordingly shows in the drawings the preferred machine. The two machines represent two species of his generic invention, and for illustration he selects the preferable species. He drafts his generic claim to cover both species, and he follows this with a specific claim relating to the selected species. The question might be asked, If the broad generic claim covers the selected and all other species, why bother with the specific claim, why not rest on the generic claim? The answer is that it might in the future develop that the genus was old, and that the generic claim was invalid, while the specific claim would still be good. The infringer of the specific claim may thus be held notwithstanding the generic claim becomes void. But the inventor cannot claim his second species in his patent. He can claim the genus, and he can claim one species under that genus, but all other species must be covered in separate patents.