and directions the inventor may employ such technical terms as are customary in the art to which the composition belongs, however narrow may be the circle of persons familiar with that art; a general rule, indeed, but one especially applicable to this class of inventions. § 501. The Description when the Invention is a Design. A design is an appearance imposed upon some physical substance for the purpose of making a given impression on the eye. Being addressed particularly to the sense of sight, it would hardly be expected that a correct and complete idea of this invention could be conveyed to the mind through words, which, though perhaps read by the eye, are really addressed to the ear. Still, so far as practicable, the written Description of a design must point out its characteristic qualities and accurately distinguish between what is claimed as new and what is conceded to be old. Taken in connection with the drawings, it must impart to the public a knowledge of the design and of the method of producing it, as complete and available as is required respecting other classes of inventions. Where the design embraces two configurations, as in the obverse and the reverse of the same article, both may and ought to be described.2 But if the shape impressed upon the substance endows it with new mechanical properties, as well as with a new appearance, only the latter should be embraced in the Description; the former, when constituting a new inven the qualities of his composition as given in the Description, but as they actually exist in the composition when produced according to his method, see Goodyear v. N. Y. Gutta Percha & India Rubber Vulcanite Co. (1862), 2 Fisher, 312. 7 That the Description of a chemical composition is not addressed to persons ignorant of chemistry, see Allen v. Hunter (1855), 6 McLean, 303. § 501. That a design can be delineated on paper, and known forms can be expressed in words, see Ex parte Traitel (1883), 25 O. G. 783. be clear, exact, and particular, see Ex parte Niedringhaus (1874), 7 O. G. 171. 2 That both the obverse and reverse of a design may be described, see Ex parte Diffenderfer (1872), 2 O. G. 57. 3 That the Description of a design ought not to set forth the mechanical functions of the invention, see Ex parte Norton (1882), 22 O. G. 1205; Ex parte Diffenderfer (1872), 2 O. G. 57. That a design application must confine itself to the characteristics of a design, not inserting those of a useful article, see Ex parte Traitel (1883), 25 That the Description of a design must O. G. 783. tion, as it sometimes may, belonging to the class of manufactures, not designs. § 502. The Description when the Invention is an Improvement. An improvement, although a complete invention in itself, is always dependent upon some original invention, without a knowledge of which, and of its relation to the improvement, the latter cannot be understood. The improvement in itself must, therefore, be described in all its essential characteristics like any other invention of its class; and in addition to this, the original invention, of whose idea of means this is a new development, must be delineated sufficiently to show the nature of the whole invention as improved.1 With what § 502. 1 In Merrill v. Yeomans (1876), 94 U. S. 568, Miller, J.: (570) "When a man supposes he has made an invention or discovery useful in the arts, and therefore the proper subject of a patent, it is, nine times out of ten, an improvement on some existing article, process, or machine, and is only useful in connection with it. It is necessary, therefore, for him, in his application to the Patent Office, to describe that upon which he engrafts his invention, as well as the invention itself; and, in cases where the invention is a new combination of old devices, he is bound to describe with particularity all these old devices, and then the new mode of combining them, for which he desires a patent. It thus occurs that, in every application for a patent, the descriptive part is necessarily largely occupied with what is not new, in order to an understanding of what is new." 11 O. G. 970 (971). ent is for an improvement on the horizontal wheel invented by the plaintiff. But what the nature of the invention was, upon which this is alleged to be an improvement, is not stated. Was it patented; and if not, is there any other source of information to which others can resort in order to find it out, so as to enable them to distinguish the improvement from the original invention, and in that way to discover in what the improvement consists ? Neither the patent or specification affords the slightest information upon those points. The invention alluded to may, for aught that appears, be known to no other person than the plaintiff. How, then, can any human being, however skilful in the art, find out with certainty or even conjecture in what the improvement consists from the patent itself, or from the records in the Patent Office? If the original invention had been patented, the specification should at least have referred to and plainly described it. If it was not, it should have stated what that invention was, and in what the improvement consists. As the matter stands, the nature of the improvement is altogether unintelligible." 1 Robb, In Isaacs v. Cooper (1821), 4 Wash. 259, Washington, J.: (261) "The last, and by no means the least fatal, objection is to the patent and specification, which are so manifestly defective that the court ought not to interpose until the plaintiff shall have established his 332 (335). right at law, if he can do so. The pat Further, that a specification for an particularity the old invention is to be portrayed depends upon the knowledge which those skilled in the art already have concerning it, and the obviousness of the relation which subsists between it and the new improvement. To put the entire invention, old and new, before the public, and at the same time to distinguish clearly between the old and the new, in order that it may appear that the claims of the inventor to an exclusive right are limited to the improvement, is the object to be accomplished.2 This must be done by the Descrip improvement must describe the original sufficiently to distinguish the improvement from it, see Winterinute v. Redington (1856), 1 Fisher, 239; Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567; Brooks v. Jenkins (1844), 3 McLean, 432; Peterson v. Wooden (1843), 3 McLean, 248; 2 Robb, 116; Sullivan v. Redfield (1825), 1 Paine, 441; 1 Robb, 477; Dixon v. Moyer (1821), 4 Wash. 68; 1 Robb, 324; Kneass v. Schuylkill Bank (1820), 4 Wash. 9; 1 Robb, 303; Evans v. Het tick (1818), 3 Wash. 408; 1 Robb, 166; Evans v. Eaton (1818), 3 Wash. 443; 1 Robb, 193; Barrett v. Hall (1818), 1 Mason, 447; 1 Robb, 207; Lowell v. Lewis (1817), 1 Mason, 182; 1 Robb, 131. the defendant, and sanctioned by the Supreme Court, in the case of Evans v. Eaton? The answer is, an improvement on the hopperboy, or an improved hopperboy, which that court have declared to be substantially the same. If this be so, then the section of the law before mentioned has declared that he must specify this improvement in full, clear, and exact terms. If he has not done so he has no valid patent on which he can recover. The English decisions correspond with the injunctions of our law. The American decisions, so far as we have any report of them, maintain the same doctrine. Mr. Justice Story, in the case of Lowell v. Lewis, lays it down that, if the patent be for an improvement in an existing machine, the patentee must in his specification distinguish the new from the old, and confine his patent to such parts only as are new; for, if both are mixed together, and a patent is taken for the whole, it is void. What is the reason for all this? In the first place, it is to enable the public to enjoy the full benefit of the discovery, when the patentee's monopoly is expired, by having it so described upon record, that any person skilled in the art of which the invention is a branch may be able to construct it. The next reason is to put every citizen upon his 2 In Evans v. Hettick (1818), 3 guard, that he may not through ignoWash. 408, Washington, J. (425) rance violate the law, by infringing the "What then is the plaintiff's invention, rights of the patentee, and subjecting as asserted by the plaintiff, conceded by himself to the consequences of litigation. That the exact new feature must be described, see Dangerfield v. Jones (1865), 13 L. T. Rep. N. s. 142. That the Description must show wherein the improvement consists and not merely the device as improved, see Head v. Stevens (1838), 19 Wend. 411; Bovill v. Moore (1816), Dav. P. C. 361; 1 Abb. P. C. 231; McFarlane v. Price (1816), 1 Web. 74; 1 Abb. P. C. 227; Hornblower v. Boulton (1799), 8 T. R. 95; 1 Abb. P. C. 98; Williams v. Brodie (1785), Dav. P. C. 96; 1 Web. 75. tion and Claim in connection with the drawings and model, for it is not sufficient that by comparing the old and the im The inventor of the original machine, if he has obtained a patent for it, and all persons claiming under him, may lawfully enjoy the full benefit of that discovery, notwithstanding the improvement made upon it by a subsequent discoverer. If he has not chosen to ask for a monopoly, but abandons it to the public, then it becomes public property, and any person has a right to use it. The inventor of the improvement may also obtain a patent for his discovery, which cannot legally be invaded by the inventor of the original machine, or by any other person. The rights of each are secured by law, and there is no incompatibility between them. But if a man, wishing to use the original invention, and honestly disposed to avoid an infraction of the improver's right, is unable to ascertain from any certain and known standard where the original invention ends and where the improvement commences, how is it possible for him to exercise his own acknowledged right, freed from the danger of invading that of another? and to what acts of oppression might not this lead? Might not the patentee of this mysterious improvement obtain from the ignorant, the timid, and even the prudent members of society, who wish to use the original discovery, the price he chooses to ask for a license to use his improvement, and in this way compel them to purchase it rather than incur expenses and inconveniences far greater than the sum demanded would pay for or compensate? If this may happen, then the improver enjoys in a degree the benefit of a discoverer both of the original machine and also of the improvement. In short, the patentee of the improvement may, to a certain extent, keep all others at arm's length as to the original invention, or make them pay him for it in derogation of the rights of the inventor of the original machine." 1 Robb, 166 (184). In Evans v. Eaton (1818), 3 Wash. 443, Washington, J.: (452) "3. An improvement on a former machine. This is a fair subject for a patent, and the plaintiff has laid before you strong evidence to prove that his hopperboy is a more useful machine than the one which is alleged to have been previously discovered and in use. If, then, you are satisfied of this fact, the point of law which has been raised by the defendant's counsel remains to be considered; which is, that the plaintiff's patent for an improvement is void, because the nature and extent of his improvement are not stated in his specification. The patent is for an improved hopperboy, as described in the specification which is referred to and made part of the patent. Now, does the specification express in what his improvement consists ? It states all and each of the parts of the entire machine, its use and mode of operating; and claims as his invention the machine, the peculiar properties or principles of it, viz. the spreading, turning, and gathering the meal, and the raising and lowering of its arm by its motion to accommodate itself to the meal under it. But does this description designate the improvement, or in what it consists? Where shall we find the original hopperboy described, either as to its construction, operation, or use, or by reference to anything by which a knowledge of it may be obtained? Where are the improvements on such original stated? The undoubted truth is that the specification communicates no information whatever upon any of these points. This being so, the law as to ordinary cases is clear that the plaintiff' cannot recover for an improvement. proved inventions, as they exist practically in the arts, the The first section of the general Patent Law speaks of an improvement as an invention, and directs the patent to issue for his said invention. The third section requires the applicant to swear, or affirm, that he believes himself to be the true inventor of the art, machine, or improvement for which he asks a patent; and further, that he shall deliver a written Description of his invention, in such full, clear, and exact terms that any person acquainted with the art may know how to construct and use the same, etc. That it is necessary to the validity of a patent that the specification should describe in what the improvement consists is decided by Mr. Justice Story, in the cases referred to in the appendix to 3 Wheaton, and in the English cases of Boulton v. Bull, Boville v. Moore, McFarlane v. Price, Harmar v. Playne, and perhaps some others. What are the reasons upon which this doctrine is founded? They are to guard the public against unintentional infringements of the patent during its continuance, and to enable an artist to make the improvement by a reference to some known and certain authority, to be found among the records in the office of the Secretary of State, after the patent has run out. But it is contended by the plaintiff's counsel, that the law would be unreasonable to require, and therefore that it does not require, this to be done, unless the improvement is upon a patented machine, a description of which can be obtained by a reference to the records of the office of the Secretary of State, that it might often be impossible for the patentee to discover, and consequently to describe, the parts of a machine in use, perhaps, only in some obscure part of the world. The answer to this is that an improvement necessarily implies an original, and unless the patentee is acquainted with the original which he supposes he has improved, he must talk idly when he calls his invention an improvement. If he knows nothing of an original, then his invention is an original, or nothing; and the subsequent appearance of an original, to defeat his patent, is one of the risks which every patentee is exposed to under our law. As to the supposed distinction between an improvement on a machine patented and one not so, there is nothing in it. In both cases the improvement must be described, but with this difference, that in the former case it may be sufficient to refer to the patent and specification for a description of the original machine, and then to state in what the improvements on such original machine consist-whereas in the latter case it would be necessary to describe the original machine and also the improvement. The reason for this distinction is too obvious to require explanation." 1 Robb, 193 (203). That the specification of an improve. ment need not describe the original further than is necessary to understand the new matter, see Many v. Jagger (1848), 1 Blatch. 372; Emerson v. Hogg (1845), 2 Blatch. 1; Harmar v. Playne (1809), 11 East, 101; 1 Abb. P. C. 171. That if the original is well known it need not be particularly described, nor even the mode of attaching the improvement to it if this is apparent without description, see Loom Co. v. Higgins (1882), 105 U. S. 580; 21 O. G. 2031. That the Description must distinguish the old from the new, and binds the patentee as he makes it, see Goodyear v. Railroad (1853), 1 Fisher, 626; 2 Wall. Jr. 356. That in order to distinguish old parts from new the specification may describe each and all the parts and then claim the whole when so constructed as to |