of its essential characteristics, or, when these are fully stated in the Description, by such a delineation of the invention claimed as identifies it with the one described.2 When the invention is a complete art or instrument, new and patentable in itself without relation to other things, it must be claimed as such without any reference to the objects or the purposes for which it may be employed. Funck (1878), 14 O. G. 158; Scott v. Ford (1878), 14 O. G. 413; Merrill v. Yeomans (1877), 94 U. S. 568; 11 O. G. 970; Ex parte Hopper (1872), 2 O. G. 4; Davis v. Bell (1837), 8 N. H. 500; Whittemore v. Cutter (1813), 1 Gallison, 478; 1 Robb, 40; Rushton v. Crawley (1870), L. R. 10 Eq. 522; Gibson v. Brand (1842), 1 Web. 613; Carpenter v. Smith (1841), 1 Web. 530. That each substantially different modification of the invention which the inventor intends to protect must be definitely described, see Sargent v. Carter (1857), 1 Fisher, 277. That if the patentee intends to claim only a part of what he has described as entering into the invention the Claim must show it, or all will be considered as claimed, see Evans v. Kelly (1880), 5 Bann. & A. 71; 9 Bissell, 251; 23 O. G. 192; 13 Fed. Rep. 903; Tetley v. Easton (1857) 2 C. B. N. s. 706. That where the invention is described as consisting in the peculiar construction of one or more parts only such construction can be claimed, see Phoenix Caster Co. v. Spiegel (1886), 26 Fed. Rep. 272. That the adjunctive devices referred to in all the Claims for an invention must be the same in themselves and in their relation to the invention, see Ex parte Stanbridge (1888), 43 O. G. 1345. 2 That the enumeration of such elements as constitute the operative invention is a proper mode of claiming it, see Ex parte Farrow (1872), 2 O. G. 57. That elements not essential to the invention should not be stated in the On the other hand, where Claim, see Ex parte Kitson (1881), 20 O. G. 1750; Ex parte Farrow (1872), 2 O. G. 57; Furbush v. Cook (1857), 2 Fisher, 668. That when the new invention does not embrace the entire concrete art or instrument only the new parts invented must be stated by the Claim, see Seymour v. Osborne (1870), 11 Wall. 516. That when a device as claimed is useful only as part of a whole, the other parts will be understood as implied in the Claim, see Ex parte West (1872), 2 O. G. 30. That elements which are described as essential to the invention are not covered by the patent unless stated or implied in the Claim, see McMillin v. Rees (1880), 5 Bann. & A. 269; 17 O. G. 1222; 1 Fed. Rep. 722. 3 That a Claim must not include any parts, features, or other matters not embraced in the invention intended to be claimed, see Ex parte Skinner (1881), 19 O. G. 662; Ex parte Wheat (1879), 16 O. G. 360; Ex parte Wilber (1872), 1 O. G. 379. That if new devices are claimed as specifically arranged, the Claim covers them only when thus arranged, see Tate v. Thomas (1885), 30 O. G. 345; Carlton v. Bokee (1873), 17 Wall. 463; 6 Fisher, 40; 2 O. G. 520. That what is described as merely auxiliary must not be claimed, see Ex parte Wheat (1879), 16 O. G. 360. That a Claim covering useless things is not void unless they are claimed as essential to the invention, see Lewis v. the invention is new and patentable only when considered with reference to certain purposes or objects, it must be claimed only in connection with such purposes or objects, and a Claim for it without this limitation would be void. The importance of this rule becomes especially evident in cases where the real invention consists in the new use of some art or instrument already known. A Claim for the art or instrument itself would be improper, since the new use does not change its character as a patentable invention. The use itself must be set forth and claimed, this being the only new product of inventive skill; and in the Claim for this new use, the objects upon which the art or instrument is now to be employed, or the mode of operation in which it is now to be applied, must be particularly described. § 513. The Claim must Distinguish the Invention Claimed from all Known Inventions. Again, every Claim must distinguish the art or instrument which it embraces from every art or instrument already known.1 Marling (1829), 1 Web. 493; 1 Abb. P. conjoint function with the old parts, or C. 421. That a Claim for certain devices as a means to produce certain results is good, though under peculiar circumstances the results would not follow, see Wheeler v. Clipper Mower & Reaper Co. (1872), 10 Blatch. 181; 6 Fisher, 1; 2 O. G. 442. That if the invention is patentable only when used in certain connections, it must be claimed only in such connections, see Stewart v. Mahoney (1879), 5 Fed. Rep. 302; 4 Bann. & A. 84. § 513. 1 In Ex parte Funck (1878), 14 O. G. 158, Spear, Com. (159) "The office of the Claim is to clearly and distinctly set forth what an applicant regards to be peculiarly his own invention. If the improvement consists in some addition to or alteration of an existing structure, whether it be by the introduction of new features having no by substantial re-organization in which new elements may or may not enter as co-operative factors, in either event the Claim should express no more and no less than is necessary to convey an accurate understanding of the actual in vention which had been made. If, for example, an additional feature, valuable in its way, and yet entirely independent of the old elements, so far as co-acting with them, is incorporated in a device, it must be manifest that the Claim should cease when it had specified the single feature. To continue beyond this, and enumerate other parts belong. ing to the old structure improved upon, is as much an offence against clearness and precision as to state, as elements of a combination Claim, parts which have no office whatever to perform in accomplishing the specific result. The reten tion of the old elements in the Claim, when there is nothing in common be A Claim including any matter before patented, or in possession of the public, is fatally defective. Such matter should not be mentioned in the Claim if the invention claimed can be sufficiently defined without it, and if mentioned must be expressly disclaimed. Though the invention is worthless. tween them and the one newly added to the machine, is a misstatement of the invention, giving a fictitious importance to the improvement, and defeating any accurate judgment of its merit because of the obscurity resulting from the erroneous association." In the Corn Planter Patent (1874), 23 Wall. 181, Bradley, J.: (223) "It is objected to several of the patents under consideration that they do not state what parts of the machine patented are new and what parts are old, and that they are therefore void. There is nothing in the Patent Law which, in terms, requires the patentee to do this. The language of the act of 1836, under which these patents were drawn, is that before any inventor shall receive a patent for his invention or discovery he shall deliver a description thereof, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms as to enable a person skilled in the art to reproduce it; and the act directs that the inventor shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery.' This, of course, involves an elimination of what he claims as new from what he admits to be old. But what can be a more explicit declaration of what is new and what is old than the summary of the patentee's claim at the close of the specification, if that is made in clear and distinct terms, or in terms so clear and distinct as to be fairly understood. It implies that all the rest is old, or, if not old, that the applicant does not claim it so far as that patent is concerned. If the patentee by his specifi cation, including the summary Claim at its close, points out and distinguishes what he claims as his own invention, it is all that is required. That, if we can find it without difficulty or embarrassment, is what he claims as new; the rest he impliedly, if he does not expressly, disclaims as old. No particular form of words is necessary if the meaning is clear." 60. G. 392 (400). That the Claim must clearly distinguish between the new matter and the old, see Terry Clock Co. v. New Haven Clock Co. (1878), 17 O. G. 908; 3 Bann. & A. 332; Ex parte Hobson (1872), 10. G. 141; Brown v. Selby (1871), 2 Bissell, 457; 4 Fisher, 363; Bray v. Hartshorn (1860), 1 Clifford, 538; Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567; Dangerfield v Jones (1865), 13 L. T. Rep. N. s. 142; Newall v. Elliott (1864), 10 Jur. N. s. 954; Booth v. Kennard (1857), 2 H. & N. 84; Holmes v. London & N. W. R. R. Co. (1852), Macrory's P. C. 13; Crane v. Price (1842), 4 M. & G. 580; Carpenter v. Smith (1841), 1 Web. 530; McFarlane v. Price (1816), 1 Web. 74; 1 Abb. P. C. 227; Manton v. Manton (1815), Dav. P. C. 333; 1 Abb. P. C. 189. That the new and old may be distinguished by describing both and claiming only the former, see Rowell v. Lindsay (1881), 19 O. G. 1565; 10 Bissell, 217; 6 Fed. Rep. 290; Gottfried v. Phillip Best Brewing Co. (1879), 17 0. G. 675; 5 Bann. & A. 4; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392; Winans v. N. Y. & Erie R. R. Co. (1856), 1 Fisher, 213; and other cases cited in § 506, note 1, ante. 2 That a Claim including old matter apart from certain other arts or instruments before communicated to the public the Claim should not describe them, for to whatever extent its utility may be dependent upon its connection with them they form no portion of its essence as a patentable invention. § 514. The Claim must Set Forth the Invention Claimed in its Most Perfect Concrete Form. Again, every Claim must set forth the invention it purports to describe in that form which, according to the judgment of the inventor, the most perfectly embodies it. An inventor who seeks protection for his invention from the public is obliged to place it before the public in the form best fitted for practical use, and both in his Description and his Claim it is his duty to disclose his conception through that concrete is void, see Milligan v. Lalance & Grosjean Mfg. Co. (1884), 29 O. G. 367; 21 Fed. Rep. 570; Maguire v. Eames (1880), 18 Blatch. 321; 8 Fed. Rep. 761; Scott v. Ford (1878), 14 O. G. 413; Ex parte Funck (1878), 14 O. G. 158; Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392; Blake v. Stafford (1868), 3 Fisher, 294; 6 Blatch. 195; Phillips v. Page (1860), 24 How. 164; Holliday v. Rheem (1852), 18 Pa. St. 465; Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567; Davis v. Bell (1837), 8 N. H. 500; Whitney v. Emmett (1831), Baldwin, 303; 1 Robb, 567; Watson v. Bladen (1826), 4 Wash. 580; 1 Robb, 510; Sullivan v. Redfield (1825), 1 Paine, 441; 1 Robb, 477; Kneass v. Schuylkill Bank (1820), 4 Wash. 9; 1 Robb, 303; Thomas v. Foxwell (1858), 5 Jur. N. s. 37; Gamble v. Kurtz (1846), 3 C. B. 425; Minter v. Mower (1837), 1 Web. 138; 2 Abb. P. C. 178; Campion v. Benyon (1821), 6 Moore, 71; 1 Abb. P. C. 345; Brunton v. Hawkes (1821), 4 B. & Ald. 541; 1 Abb. P. C. 336; Hill v. Thompson (1817), 1 Web. 235; 1 Abb. P. C. 299; Bovill v. Moore (1816), Dav. P. C. 361; 1 Abb. P. C. 231; Huddart v. Grimshaw (1803), 1 Web. 85; 1 Abb. P. C. 128; R. v. Else (1785), 1 Web. 76; 1 Abb. 40. That a Claim covering old matter is void, though the applicant has invented a new part which is useless without the old, see Winans v. N. Y. & Erie R. R. Co. (1856), 1 Fisher, 213. That a Claim for the whole device, where the invention is merely an im provement, claims old matter and is void, see Maguire v. Eames (1880), 18 Blatch. 321; 8 Fed. Rep. 761; Sullivan v. Redfield (1825), 1 Paine, 441; 1 Robb, 477. That a Claim covering three things, one being old, is void, see Heinrich v. Luther (1855), 6 McLean, 345. That a Claim covering old matter is curable by disclaimer, see Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567. See also §§ 537, 642-646, and notes, post. That a disclaimer in a pending application must explain, not contradict, the Claim, and distinguish the new from the old, see Ex parte Hobson (1872), 1 O. G. 141. art or instrument which most accurately expresses his idea. Having done this, all other forms are presumed to be embraced in the one claimed, unless they are disclaimed. Thus a Claim for the making of an instrument or the doing of an act, describing the best mode of making the one or doing the other, covers all modes in which the former can be made or the § 514. 1 In Murphy v. Eastham (1872), 2 O. G. 61, Shepley, J.: (62) "The patentee does not, as is sometimes done, claim in terms the thing patented, however its form and proportions may be varied; but the law so interprets his Claim without the addition of these words. In contemplation of law, after he has fully described his invention and shown its principles, and claimed it in a form which perfectly embodies it, unless he disclaims other forms he is deemed to claim every form in which his invention may be copied." 5 Fisher, 306 (309); Holmes, 113 (116). In Winans v. Denmead (1853), 15 How. 330, Curtis, J.: (343) "Patentees sometimes add to their Claims an express declaration, to the effect that the Claim extends to the thing patented, however its form or proportions may be varied. But this is unnecessary. The law so interprets the Claim without the addition of these words. The exclusive right to the thing patented is not secured if the public are at liberty to make substantial copies of it, varying its form or proportions. And, therefore, the patentee, having described his invention, and shown its principles, and claimed it in that form which most perfectly embodies it, is, in contemplation of law, deemed to claim every form in which his invention may be copied, unless he manifests an intention to disclaim some of those forms." That a Claim to the invention in one form covers it in all forms, see Grier v. Castle (1883), 17 Fed. Rep. 523; 24 O. G. 1176; McComb v. Brodie (1872), 2 O. G. 117; 5 Fisher, 384; 1 Woods, "at That a Claim for a device as an tachment" to something else is a Claim for the device however used, see McClain v. Ortmayer (1888), 42 O. G. 724. That additional Claims for different forms of the invention are unnecessary and improper, see Ex parte McDougall (1880), 18 O. G. 130; Carver v. Braintree Mfg. Co. (1843), 2 Story, 432; 2 Robb, 141. That a Claim for a material having certain qualities does not cover subsequently discovered material having the same qualities, see Goodyear v. Berry (1868), 2 Bond, 189; 3 Fisher, 439; Tetley v. Easton (1852), Macrory's P. C. 48. That a Claim for a chemical composition covers only the same use of the same or equivalent ingredients, see Goodyear v. Berry (1868), 2 Bond, 189; 3 Fisher, 439. That the Claim of an invention in one form does not cover other forms when these are disclaimed, see Union Paper Bag Mach. Co. v. Pultz & Walkley Co. (1878), 15 O. G. 423; 15 Blatch. 160; 3 Bann. & A. 403; Murphy v. Eastham (1872), 5 Fisher, 306; 2 O. G. 61; Holmes, 113; Winans v. Denmead (1853), 15 How. 330. That colorable variations may be covered by the Claim by using language sufficiently broad, see Ex parte Demming (1884), 26 O. G. 1207. |