tion in mechanical details. Where the specification discloses the principle of the invention it is not necessary that the relation of parts be stated with mathematical exactness. Hancock v. Boyd 170 Fed. 600 (606). Diagrammatic drawings should show enough to enable the man skilled in the art to make and use the invention. Manhattan v. Fuller 274 Fed. 964.

The Supreme Court in Atlantic v. Brady 107 U. S. 192 states the fundamental- "A patent should be for a substantial discovery or invention which adds to our knowledge, not for every shade of an idea which would naturally occur to any skilled mechanic." There is another class of inventions which could be classed along with that considered by the Court in Ward Leonard v. Maxwell 1918 C. D. 317 which argued that the disclosure should be of a definite invention, instead of vague suggestions, in the hope that they would anticipate and levy tribute on subsequent inventors. "It must do more than give cues for future experiment **** a patent being a reward for a tested contribution to the art, not of a pregnant surmise or a promising hypothesis." This other class of inventions is the product of so-called "desk inventors" who closely watch the literature for discoveries and translate them by shrewd guesses into some practical application. Thus an announcement of X's discovery that cellulose acetate is soluble in Y alcohol would become an invention of a varnish comprising cellulose acetate and Y alcohol as a solvent." At times these desk inventions are of great value, but often they are merely a "pregnant surmise."

It should be remembered that a long and formidable list of objects of the invention is not a disclosure unless it carries with it such a clear explanation of how those objects may be realized, as to enable the "man skilled in the art" to fully make and use the invention.

The "Man Skilled in the Art".

Since all patent specifications are addressed to those skilled in the art it would be desirable to define the attain

ments of such persons, but this seems to be difficult. In Dick v. Barnett 1924 C. D. 585 the Court, in commenting on the case of Leonard v. Maxwell 1918 C. D. 317 said: "A disclosure to be good, must be clear to a manufacturer, or workman, or a mechanic or even a journeyman -but the word used is quite meaningless unless the nature of the patent and the art involved be carefully investigated, when it will be found *that the journeyman of the Maxwell case was a person whose accomplishments would be much admired by most men." The Court further quoted from Plimpton v. Malcolm 3 Ch. Div. 531-"The specification of a patent is not addressed to people who are ignorant about the subject matter (but) to people who know something about it."

In American v. Ludlum 1924 C. D. 417, dealing with a patent for making stainless steel cutlery it was held that the specification was addressed to "one accustomed to the art of making steel, or to a metallurgist, and not to one who was concerned only with the forming thereof into implements.

Probably the best known definition is the classical one in Tannage Patent v. Zahn 1895 C. D. 367. "Persons skilled in the art are those of ordinary and fair information, but not those having very great technical knowledge relating to the subject matter of the invention." Clearly a disclosure which only a Steinmetz could understand would not be sufficient; but on the other hand it would be neither necessary nor desirable to disclose with such particularity that every laborer could comprehend the invention.

Treatment of Incomplète Disclosure in the Office.

The extent to which an application can be amended to remedy an incomplete disclosure is treated hereafter. The question of its insufficiency should be raised by the Examiner as soon as it is discovered, and as early in the prosecution of the case as possible. It may be done in several ways, such as, (a) by a mere inquiry about or comment upon the missing disclosure; (b) by an objec

tion to the sufficiency; (c) by a requirement that the missing disclosure be supplied, or (d) by rejection of claims which are affected, on the ground of "insufficient disclosure". The simple inquiry (a) is ordinarily used for matters of minor importance. Where the claims are affected the rejection (d) may be used. Cousens 1898 C. D. 165; Stevens 1905 C. D. 502. But where the claims. are generic to several species any one of which has a sufficient disclosure, and particularly if more than one species is sufficiently described, a rejection of the claim because another species is inoperative or insufficiently disclosed would not be sustainable. The objection as to the disclosure of such species should be made, with a requirement to cancel. The requirement (c) should be used with caution, since it may be mistaken for permission to insert "new matter". In general it is preferable that the action be either a rejection or an objection, since these have their proper remedy and require a response, but do not indicate what substantive disclosure shall be submitted in response. The Examiner should not instruct the applicant how to remedy an insufficient disclosure. Thompson 1912 C. D. 297. Nor should evidence be admitted (in an interference) as to what was intended by the original disclosure, since that should be determined by the Office from the specification and drawings as filed. Cooper v. Downing 230 O. G. 909.

A common response to any of these actions from the Office is to supply the missing disclosure in the "Argument" accompanying the response. This is good practice, and if the disclosure would not be new matter the Examiner should then require it to be added to the specification so as to complete the "consideration" of the contract, and to have the entire contract in the specification of the patent. But if it appear that the additional disclosure would be new matter it should be ignored or the applicant advised that it could not be added to the specification and the preceeding action repeated, if adhered to.

(TO BE CONTINUED)

PERIODICAL ARTICLES.

A Priceless Paragraph.

"Modern industrial and scientific knowledge is almost wholly the production of British effort." This is the characteristically modest admission of Mr. Ll. B. Atkinson, President of the British Electrical and Allied Industries Research Association, in his inaugural address, on February 12, as reported in "Nature" for March 13. Apparently, however, the "almost" in the above statement cost Mr. Atkinson a most painful wrench, for he later states: "but the claim that every great step forward in modern science is a British product cannot seriously be refuted." The whole paragraph, which is a gem not to be spoiled by comment, follows:

"In pressing his claims, Mr. Atkinson referred in eloquent words to the epoch-making discoveries and invention of British men of genius, and to Great Britain, 'which in science has towered above all others.' He remarked that 'modern industrial and scientific knowledge is almost wholly the production of British effort.' He mentioned the work of men such as Watt, Bessemer, Faraday, Davy, Kelvin, Lockyer, Newton, and Joule in glowing terms. Not only in practical mechanics but also in mathematics, in chemistry and in physics Britain had led the way. As to electricity, 'the voltaic battery and the magnetic action of currents of electricity are not British discoveries, but that said we have finished," while our fundamental discoveries have been carried forward and applied by hundreds of briliant workers in all lands, but the claim that every step forward in modern science is a British product cannot seriously be refuted!"

BOOK REVIEW.

DAMAGES, PROFITS AND ACCOUNTING IN PATENT, COPYRIGHT, TRADE MARK AND UNFAIR COMPETITION CASES.

BY HUGH K. WAGNER,

Thomas Law Book Company, St. Louis. $7.50

Of the 361 pages of text 60 pages are devoted to patent cases on profits and damages. Thirty-two pages are reprints of articles on other subjects and the rest of the book is taken up with statements of Copyright, Trade Mark and Unfair Competition law, 45 pages being devoted to accounting in such cases. There is a table of cross indexed cases covering 42 pages and an excellent 128 page index which makes everything in the book readily accessible.

There is a good statement of the history of our statutes on profits and damages and the early treatment of the subject by the court. The author endeavors to distinguish profits from damages and to indicate when each can be recovered and how they can be ascertained. Although the book bears copyright date of 1926 our faith is stretched by frequent reference to a case decided in 1915 as "a very recent decision." Moreover the statutory history makes no reference to the very important amendment to R. S. 4921 relating to accountings made as long ago as February 18, 1922. And the interesting instructive philosophic opinion of Judge Mayer on accounting in radio cases in Kintner v. Atlantic, 294 F. 136, is not referred to. We note with interest the list of ten cases decided since Westinghouse v. Wagner in which there was a total recovery of $4,800,000.

The discussions of Trade Mark and Copyright law generally are interesting and sometimes novel, although their immediate connection with accounting is not always clear. The author says "Discussion of the subject of damages has taken us into a somewhat extended field *** At all events it has seemed to me that I should not encumber the work with appendices containing statu