Altoona Publix Theatres v. American Tri-Ergon Corporation
In Altoona Publix Theatres v. American Tri-Ergon Corporation, 294 U.S. 477, 55 S.Ct. 455, 460, 79 L.Ed. 1005, restating a familiar rule, the court said:
"While this statute affords a wide scope for relinquishment by the patentee of part of the patent mistakenly claimed, where the effect is to restrict or curtail the monopoly of the patent, it does not permit the addition of a new element to the combination previously claimed, whereby the patent originally for one combination is transformed into a new and different one for the new combination."
In that case it was held that the disclaimer operated to add a new element, a flywheel, to each of the combinations described in the claims.
It was thought that such change could validly be made only under the provisions of the re-issue statute, R.S. 4916, 35 U.S.C.A. 64, which authorizes the alteration of the invention in a re-issued patent upon the surrender of the old patent. Since the disclaimer was invalid, the original claims as they theretofore stood were held to fall with the disclaimer.