 MILLER, Associate Justice (concurring). I concur fully in Justice ARNOLD’S opinion. Its implications are far-reaching. They will require a considerable reexamination — if not readjustment — of Patent Office practices and procedures, especially with respect to subcombination claims. For these reasons I wish to spell out in greater detail my analysis of the questions involved. In the present case we have typical sub-combination claims. There is no lack of completeness or clarity in them; they specifically point out what is claimed as an invention and it would not be difficult to construct the subcombination from the drawings. The notion that the bobbing operation cannot take place after the pear has been split by hand ignores the texture and character of canning pears. The suggestion that the subcombination is inoperative when the pear is pre-split by hand is directly contrary to the evidence, particularly to the incontrovertible evidence of the motion picture which was displayed to this court as well as to the trial court. The notion that the inventor must have thought only in terms of splitting as an intermediate process, ignores the long history of pear canning as a hand process, and the inescapable fact that one who was experimenting in this area must have tried a variety of arrangements until he found the one most adapted to his purpose. Considered in terms of the older practices in pear canning the subcombination machine, standing alone, represented a tremendous advance, and, in operation, would result in great saving of manpower, of time, of working space, and of the more primitive equipment formerly used. The record makes these facts apparent beyond question. But the suggestion of the Patent Office — expressed in the opinion of its Board of Appeals — “that the claims as drawn * * * cover constructions never contemplated by applicant” opens up the question whether these claims, which were filed by the inventor’s assignee seven years after the original application, were actually intended to describe an invention, or whether they were intended, improperly, to fence and block an area of investigation and research, solely to protect the main invention, by suppressing use, or further discovery in this area. Where, as here, such subcombination claims are filed by assignees, who are manufacturers and distributors rather than persons skilled in the art, the Patent Office, is put on notice of the probability suggested. As a matter of fact, appellant freely admitted, both on argument and in its brief in the present case, that its purpose-in filing the disputed claims was to “protect” the main invention and that it had no-intention of manufacturing the subcombination machine. This brings us then to the questions, first, whether the purpose of the patent clause will be accomplished by granting a patent to cover such claims and, second, whether an applicant can compel the issuance of a patent under circumstances which reveal a purpose contrary-to that of the Constitution. The constitutional provision1 involves-two conflicting considerations: The first,. “To promote the Progress of Science and: useful Arts * * ; the second, “securing for limited Times to Authors and Inventors the exclusive Right * * *” to-their inventions. Consistently, judicial interpretation of this provision has declared its major purpose to be the promotion of science and the useful arts.2 Some of the earlier cases, however, placed considerable emphasis upon the rights of the inventor, at the expense of the major constitutional’ purpose.3 The most extreme example of *503this comparative emphasis appears in the Button-Fastener case,4 decided in 1896 by a circuit court of appeals composed of Taft, Lurton and Hammond: “Especially is this caution applicable when we sit in judgment upon the limitations which a patentee may put upon the use of his invention. If he see fit, he may reserve to himself the exclusive use of his invention or discovery. If he will neither use his device, nor permit others to use it, he has but suppressed his own.” [Italics supplied] But even in the Button-Fastener case the Court recognized the weight of the countervailing consideration; although it refused on that account to limit the patentee’s monopoly. It said: “That the grant is made upon the reasonable expectation that he will either put his invention to practical use, or permit others to avail themselves of it upon reasonable terms, is doubtless true. This expectation is based alone upon the supposition that the patentee’s interest will induce him to use, or let others use, his invention. The public has retained no other security to enforce such expectations.”5 In the Supreme Court cases the proposition was never pushed so far. That Court was content to define the limits of the patentee’s monopoly in terms of nonuser,6 rather than of suppression. The applicable statute has, from the beginning, spoken in terms of “making, constructing, using, and vending.”7 Here was an interposition of governmental control, pursuant to the Constitution, over an area of property rights formerly regulated by principles of the common law. A persuasive analogy may be found in the water law of the Western States; which permits an owner of land to secure, by prior appropriation, rights in running water— against the Government or the erstwhile riparian owner — but limits those rights in terms of his continuing, beneficial use. As pointed out in the majority opinion, the Supreme Court, in the Motion Picture Patents case, rejected the extreme doctrine of the Button-Fastener case, and in doing so stated that the defect in the reasoning of the latter case sprang in part from substituting “inference and argument for the language of the statute.” It rejected the argument that “since the patentee may withhold his patent altogether from public use, he must logically and necessarily be permitted to impose any conditions which he chooses upon any use which he may al*504low of it.”8 In the Standard Sanitary Manufacturing Co. case,9 the Court said: “Rights conferred by patents are indeed very definite and extensive, but they do not give any more than other rights an universal license against positive prohibitions. The Sherman law is a limitation of rights, rights which may be pushed to evil consequences, and therefore restrained.” The language of the Ethyl case is even more far-reaching.10 Generally speaking, the patentee may not enlarge his monopoly or acquire some other which the statute and the patent together did not give.11 Public policy forbids the use of a patent to secure an exclusive right or limited monopoly not granted by the Patent Office and which it is contrary to public policy to grant.12 The limits of the patent are narrowly and strictly confined to the precise terms of the grant. It is the public interest which is dominant in the patent system.13 In the Univis case,14 the Supreme Court stated the general principle as follows: “In construing and applying the patent law so as to give effect to the public policy which limits the granted monopoly strictly to the terms of the statutory grant, * * * the particular form or method by which the monopoly is sought to be extended is immaterial.” [Italics supplied] This reasoning would seem to be equally applicable to the situation of the present case as to an infringement case or to an antitrust proceeding. The same considerations of public policy are present; the same major purpose of the Constitution and statute are involved. In fact, the preliminary inquiry of the Patent Office would seem to be the most appropriate occasion of all to investigate and determine whether the intent and purpose of the applicant is consistent with the major purpose of the Constitution and with the public policy. If we assume, as the Supreme Court has held, that (1) the patent monopoly of one invention may not be enlarged for the exploitation of the monopoly of another patent; (2) public policy forbids the use of a patent to secure a monopoly which it is contrary to public policy to grant; (3) the particular form or method by which the monopoly is sought to be extended is immaterial; and if we assume, further, that the purpose and intent of the applicant for a subcombination claim is to violate each of the first three assumptions, why should a patent be granted for the subcombination claim ? In such a situation why should it be necessary to license an applicant to violate the law, only to subject him to prosecution when, later, he does yiolate it? The logical result, therefore, of the later Supreme Court cases is to forbid the granting'of a patent where the purpose of the applicant is clearly revealed to suppress manufacture or use in order to extend the monopoly of another patent or in order to achieve any other objective violative of the law and of the public policy. Whether this result requires, in the Patent Office, procedure to compel an affirmative showing of purpose by each applicant, it is not necessary to determine in the present case. Here, the chronology of the case in the Patent Office suggests, and the admission of appellant confirms, a purpose contrary to the purpose of the Constitution and statute, with respect to the disputed subcombination claims. This result flows, also, as pointed out in the majority opinion, from the logic of cases forbidding the patenting of broad and misleading claims. The use of many claims to describe an invention, and of sub-*505combination claims to describe what purport to be parts of the main invention, may be merely an expedient for avoiding the prohibition against too broad and misleading claims; i.e., to include unpatentable, or to hedge in undiscovered, devices or methods. When the use of such an expedient seems apparent or probable, then the same rules, as those governing too broad or misleading claims, should be applied. But the application of those rules, to be effective, must be made upon the whole aggregation of claims, not upon each claim separately. This is as true of proceedings under Section 4915 as of proceedings in the Patent Office. The reason for this appears clearly in the present case. Here the sub-combination claims, standing alone, describe a useful machine. But, when that machine is compared with the one revealed by the main invention claims, its utility is lessened, to say the least; and the subcombination claims become suspect. Frank admission of intention to suppress the sub-combination for the purpose of protecting the main invention completes the picture. In this case the subcombination claims were not filed by the inventor but by the assignee seeking to enlarge the scope of a purchased invention. Particularly in such cases the Patent Office should be alert to inquire into the purpose which inspires the filing of such claims and should require at least a prima facie showing of reasonable expectation that the device, or process described therein, will be used or permitted to be used. Finally, the same public policy is reflected in the rule which invalidates a patent if the claim upon which it is based is for more than the applicant invented. In the Marconi case, the Court said: “The purpose of .the rule that a patent is invalid in its entirety if any part of it be invalid is the protection of the public from the threat of an invalid patent, and the purpose of the disclaimer statute is to enable the patentee to relieve himself from the consequences of making an invalid claim if he is able to show both that the invalid claim was inadvertent and that the disclaimer was made without unreasonable neglect or delay.”15 The threat to the public, of an invalid patent, should not be encouraged by a too casual inquiry at its inception. The protection of the public should not be required to await the initiation of an infringement suit or an antitrust prosecution. Mr. Justice EDGERTON concurs in both the foregoing opinions. U.S.Const. Art. I, § 8, Cl. 8. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510, 511, 37 S.Ct. 416, 61 L.Ed. 871, L.R.A. 1917E, 1187, Ann.Cas.1918A, 959; Warner v. Smith, 13 App.D.C. 111, 114; Woodbridge v. United States, 263 U.S. 50, 55, 44 S.Ct. 45, 68 L.Ed. 159; United States v. Univis Lens Co., Inc., 316 U.S. 241, 250, 62 S.Ct. 1088, 86 L.Ed. 1408; Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488, 492, 62 S.Ct. 402, 86 L.Ed. 363; Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 665, 64 S.Ct. 268. United States v. American Bell Tel. Co., 167 U.S. 224, 250, 17 S.Ct. 809, 814, 42 L.Ed. 144: “Counsel seem to argue-*503that one who has made an invention, and thereupon applies for a patent therefor, occupies, as it were, the position of a quasi trustee for the public; that he is under a sort of moral obligation to see that the public acquires the right to the free use of that invention as soon as is conveniently possible. We dissent entirely from the thought thus urged. The inventor is one who has discovered something of value. It is his absolute property. He may withhold the knowledge of it from the public, and he may insist upon all the advantages and benefits which the statute promises to him who discloses to the public his invention.” Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 429, 28 S.Ct. 748, 756, 52 L.Ed. 1122: “As to the suggestion that competitors were excluded from the use of the new patent, we answer that such exclusion may be said to have been of the very essence of the right conferred by the patent, as it is the privilege of any owner of property to use or not use it, without question of motive.” [Italics supplied] Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 34, 43 S.Ct. 254, 67 L.Ed. 516. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 98, 39 S.Ct 48, 63 L.Ed. 141. Cf. Fox Film Corp. v. Doyal, 286 U.S. 123, 127, 52 S.Ct. 546, 76 L.Ed. 1010. Heaton-Peninsular Button-Fastener Co. v. Eureka Specialty Co., 6 Cir., 77 F. 288, 294, 295, 35 L.R.A. 728. Ibid. Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 429, 430, 28 S.Ct. 748, 756, 52 L.Ed. 1122: “We have seen that it has been the judgment of Congress from the beginning that the sciences and the useful arts could be best advanced by giving an exclusive right to an inventor. The only qualification ever made was against aliens, in the act of 1832. * * * It is manifest, as is said in Walker on Patents, § 106, that Congress has not ‘overlooked the subject of nonuser of patented inventions.’ And another fact may be mentioned. In some foreign countries the right granted to an inventor is affected by nonuse. This policy, we must assume, Congress has not been ignorant of nor of its effects. It has, nevertheless, selected another policy; it has continued that policy through many years. We may assume that experience has demonstrated its wisdom and beneficial effect upon the arts and sciences.” See cases cited in note 3 supra. 1 Stat. 318, 321, 35 U.S.C.A. § 40. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 514-516, 37 S.Ct. 416, 420, 61 L.Ed. 871, L.R.A.1917E, 1187, Ann.Cas.1918A, 959. Standard Sanitary Mfg. Co. v. United States, 226 U.S. 20, 49, 33 S.Ct 9, 15, 57 L.Ed. 107. Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 459, 60 S.Ct. 618, 625, 84 L.Ed. 852. Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 456, 457, 60 S.Ct. 618, 625, 84 L.Ed. 852: “He may not, by virtue' of his patent, condition his license so as to tie to the use of the patented device or process the use of other devices, processes or materials which lie outside of the monopoly of the patent licensed; * * * or condition the license so as to control conduct by the licensee not embraced in the patent monopoly * * * ; or upon the maintenance of resale prices by the purchaser of the patented article.” Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488, 492, 62 S.Ct. 402, 86 L.Ed. 363. Mercoid Corp. v. Mid-Continent Investment Co., 320 U.S. 661, 665, 64 S.Ct. 268. United States v. Univis Lens Co., Inc., 316 U.S. 241, 251, 252, 62 S.Ct. 1088, 1094, 86 L.Ed. 1408. Marconi Wireless Telegraph Co. v. United States, 320 U.S. 1, 58, 63 S.Ct. 1393, 1419, 87 L.Ed. 1731. 
Miller, Edgerton, and Arnold, Associate Justices
Special Equipment Co. v. Coe
SPECIAL EQUIPMENT CO. v. COE, Commissioner of Patents
<parties id="b551-4">
    SPECIAL EQUIPMENT CO. v. COE, Commissioner of Patents.
   </parties><br><docketnumber id="b551-5">
    No. 8466.
   </docketnumber><br><court id="b551-6">
    United States Court of Appeals District of Columbia.
   </court><br><otherdate id="b551-7">
    Argued Nov. 2, 1943.
   </otherdate><br><decisiondate id="b551-8">
    Decided June 19, 1944.
   </decisiondate><br><otherdate id="b551-11">
    Writ of Certiorari Granted Nov. 6, 1944.
   </otherdate><br><seealso id="b551-12">
    See 65 S.Ct. 120.
   </seealso><br><attorneys id="b551-28">
    Mr. Curtis F. Prangley, of Chicago, Ill., with whom Messrs. James M. Graves and Ballard Moore, both of Washington, D. C., were on the brief, for appellant.
   </attorneys><br><attorneys id="b551-29">
    Mr. E. L. Reynolds, of Washington, D. C., with whom Mr. W. W. Cochran, Solicitor, United States Patent Office, of Washington, D. C., was on the brief, for appellee.
   </attorneys><br><judges id="b551-30">
    Before MILLER, EDGERTON, and ARNOLD, Associate Justices.
   </judges>
D.C. Circuit
Court of Appeals for the D.C. Circuit