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the telephone, and, indeed, neither Morse nor Bell nor any man could have done so. The second provision cannot mean that every inventor must infallibly judge which of several forms of his machine will eventually be found to work best, for if it means that, it requires what is often impossible requires the inventor to foresee the ultimate effects of new and comparatively untried causes. The first provision means that the essential distinctive characteristic of the machine shall be explained; and the second provision means that the inventor shall state the mode which he contemplates to be the best.' Inasmuch as the validity of a patent depends on the sufficiency of the description, the subject of this section is treated with more detail in the chapter on letters patent, the seventh of this book. Enough has been outlined in this connection to show what kinds of statements those descriptions need to contain.

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$116. The claim or claims constitute a necessary part of every specification. The statutory requirement in this regard is, that the applicant "shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention." The practice of the Patent Office has always been to require the claim or claims to be made in that part of the specification which immediately precedes the signatures. It is a practice of many solicitors of patents to write claims in vague phraseology, with an idea that vagueness is elasticity, and that elasticity is excellence. Such a practice is neither honest nor expedient. It is not honest, because it is often intended, and always adapted to deceive the public, and to lead individuals into unintended infringement. It is not expedient, because dishonesty is bad policy in matters of patents, as in all other human affairs, and because vagueness of claims may make a patent void which would otherwise be valid. It is the practice of many other solicitors of patents to write claims in loose phraseology, because they do not know how to write precise sentences. By multiplying words they 1 Carver v. Mfg. Co 2 Story, 432, 1843; Page v. Ferry, 1 Fisher, 309,

1857.

2 Revised Statutes, Section 4888.

hope to hit the mark, on the same principle that the user of a shotgun hopes to hit a solitary bird. But the principles which apply to shotguns do not apply to rhetoric. The true rhetorician uses a rifle, not a blunderbuss. With him every word hits its target, because it is adapted to do so, and because he knows how to aim it.

Writing a claim for a patent may require as many points of information and powers of mind, as can ever be required for any prose writing of similar length. More than half the chapters of this book contain such points of information, but neither this nor any other law book, can embody all that the penner of such a claim requires to know. A few leading points may, however, be conveniently stated in this place.

§ 117. In cases where the description sets forth an entire machine, the applicant may lawfully make a claim coextensive with the description, if the machine as a whole possesses novelty. But such a claim ought seldom to be the only one in a patent, because, for reasons stated in the chapter on infringement, it can, in most cases, be readily evaded. The proper practice is to fix upon the new parts, or new sub-combinations, which the described machine contains, and to make a separate claim for each of those parts, and for each of those combinations.' Indeed, the applicant may, if he will, apply for and receive a separate patent for each of those parts and combinations. In either way the rights of the inventor may be secured, because it is a rule of infringement that a patent is infringed whenever any one of its claims is violated. To secure a particular part of a machine, a claim must specify that part; and to secure a particular combination of some of the parts of a machine, a claim must specify all of those parts, and the description must explain their joint mode of operation, and must state their joint function.' And a combination may

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3 Parks . Booth, 102 U. S. 102, 1880.

be claimed separately, though it cannot do useful work separately from the residue of the machine or apparatus of which it constitutes a part.'

§ 118. In cases where the description sets forth a manufacture, there ought to be a claim for each of its patentable features; for if there is but one claim, and if all those features are covered by it, then those persons who manage to dispense with even the least of them, incur no liability by making, using, or selling articles which possess all the others.'

§ 119. In cases where the description relates to a composition of matter, the claim should cover that composition in its entirety, and should, either expressly, or by reference to the description, specify the respective proportions which the different ingredients bear to each other.' But where some of the described ingredients may be dispensed with, the applicant, if he states that fact in the description, may have a separate claim for a composition of matter composed only of the residue, or he may have a single claim covering the indispensable ingredients, whether with or without the others.'

§ 120. In cases where the description relates to a process, the claim should cover all the necessary elements in that process, and cover no more. If it covers less than all the necessary elements, it will not secure the invention described, and will not secure anything of value as a patent. If it covers more than the necessary elements, it can be evaded by persons who omit those which are unnecessary, when using the others.

§ 120a. In cases where the description and its accompanying drawing or photograph represent a design, the claim may identify its subject by a reference to that drawing or photograph."

1 Hancock Inspirator Co. v. Jenks,

21 Fed. Rep. 915, 1884.

2 Prouty. Ruggles, 16 Peters, 336, 1842.

3 Tyler v. Boston, 7 Wallace, 327,

1868.

Rubber Co. v. Goodyear, 9 Wallace. 788, 1869.

5 Dobson v. Dornan, 118 U. S. 14, 1885.

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§ 121. The signatures of the applicant and of the witnesses must embody the full names of those persons, and must be legibly written.' The grammatical construction of the statutory provision, relevant to signatures, seems to indicate that the document signed by the applicant, and not the signature of that applicant, is the thing which is to be attested by the two witnesses. In cases where language of similar character has been used in statutes, which prescribe the mode of attesting wills, it has been decided to be immaterial, whether the witnesses sign before or sign after the execution of the document; but where such statutes have provided for attesting the signatures rather than the will, it is the law that the document is void if the witnesses sign before the testator.' It is the practice of the Patent Office to regard the attestation as being attestation of the signatures, and, accordingly, to require two witnesses for each signature, in cases of joint applications for joint inventions. The same two witnesses may indeed attest all the signatures; but where one witness attested the signature of one joint inventor, and another witness attested the signature of the other, of two joint inventors, the Patent Office has held the attestation to be insufficient.

§ 122. The oath is not required by the statute to be in writing, nor to be recorded. It may be taken anywhere in the United States, before any person authorized by law to administer oaths at that place; or, when the applicant resides in a foreign country, it may be taken before any minister, chargé d'affairs, consul, or commercial agent, holding commission under the government of the United States, or before any notary public of the foreign country in which the applicant may be.*

Recital in the letters patent, that the required oath was made by the applicant, is, in the absence of fraud, conclusive evidence of that fact. The presence, in the files of

1 Patent Office Rule 40.

O'Brien v. Gallagher, 25 Conn.

229, 1856.

3 Wharton on Evidence, Section

888.

4 Revised Statutes, Section 4892. Seymour . Osborne, 11 Wallace, 516, 1870.

the Patent Office, of a paper purporting to be the oath in a given case, but void for lack of a jurat, or for some other fault, is a harmless circumstance.' In such a case the law presumes that the oath recited in the letters patent was made orally, or was embodied in some other paper. It is presumed that the Commissioner will never issue a patent till he is satisfied that the applicant has somehow made oath to the facts to which the statute requires him to swear. When the Commissioner is so satisfied, and recites the fact in the letters patent, all inquiry on the subject is foreclosed, except in cases of actual fraud. Rule 47 of the Patent Office provides, however, that the oath or affirmation is to be attested in all cases by the proper official seal of the officer before whom it is taken. That implies that the Commissioner requires the oath to be put into writing. If, however, he were to waive that requirement in a given case, and were to content himself with an oral oath, and were to recite in the patent that the required oath was made, the law would still have been complied with.

§ 123. The statute requires an applicant to make oath that he does verily believe himself to be the first inventor of the invention for which he solicits a patent, and to state of what country he is a citizen.' The Patent Office rules require that this last mentioned statement shall also be made in the oath, and that the applicant shall also state in the oath, where he resides, and whether the invention has been patented to himself, or to any other with his consent or knowledge, in any country, and if it has, that the applicant shall name, under oath, such foreign country or countries, and shall likewise set forth the number and date of every such patent granted therein, and that, according to his knowledge and belief, the same has not been in public

1 Crompton v. Belknap Mills, 3 Fisher, 536, 1869; DeFlorez v. Raynolds, 14 Blatch. 506, 1878; Hoe v. Kahler, 12 Fed. Rep. 111, 1882;

Hancock Inspirator Co. v. Jenks, 21
Fed. Rep. 914, 1884.

' Revised Statutes, Section 4892.

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