latter can be done.2 Or where the invention consists in the new shape given to an object, such shape expressing an idea of means, all other shapes embodying the same idea are protected by the Claim for that alone. In this manner the protection of the patent, though not granted directly to the idea of means conceived by the inventor, as fully embraces it as if it were distinctly and expressly stated in the Claim. § 515. The Claim must Correspond with the Description. Finally, as the Claim is the request of the inventor for the protection of the invention communicated to the public in the Description, it must entirely correspond with the Description and be based upon the matter therein contained.1 No invention can be claimed in any specification unless it has 2 That a Claim for the making of a thing or the doing of an act covers all modes of making or doing it, although only one mode is described, see Union Paper Bag Mach. Co. v. Nixon (1876), 1 Flippin, 491; 9 O. G. 691; 2 Bann. & A. 244. 8 That a Claim for a new shape of an object covers all other shapes expressing the same idea of means, see Winans v. Denmead (1853), 15 How. 330. See also § 238 and notes, ante. 1 § 515. That the invention claimed must be identical with the invention described, see Knox v. Quicksilver Mining Co. (1880), 4 Fed. Rep. 809; Ex parte Designolle (1877), 13 O. G. 227; Ex parte Gould (1876), 10 O. G. 203; Ex parte Fairbanks (1873), 3 O. G. 65; Page v. Ferry (1857), 1 Fisher, 298; Corning v. Burden (1853), 15 How. 252; Seed v. Higgins (1860), 8 E. & B. 755. That the Claim and Description are distinct, and each must be complete and exact, and the Claim must be more than a mere reference to the Description, see Ex parte Rice (1874), 5 O. G. 522. That the Claim is distinct from the Description, and represents such parts of the described matter as constitute the invention to be patented, see Merrill v. Yeomans (1877), 94 U. S. 568; 11 O. G. 970. That the Claim may be illustrated but not enlarged by the Description, see Yale Lock Co. v. Greenleaf (1886), 117 U. S. 555; 35 O. G. 386; Railroad Co. v. Mellon (1881), 104 U. S. 112; 20 O. G. 1891. That the Claim can neither save a bad Description nor invalidate a good one, see Kay v. Marshall (1836), 2 Web, 39. That a Claim cannot cover means substantially different from those described, though they produce substantially the same results, see Ex parte Demming (1884), 26 O. G. 1207. That when the Description and Claim disagree, the Claim controls, see McKesson v. Carndick (1881), 21 O. G. 137; 19 Blatch. 158; 9 Fed. Rep. 44. That when the Claim and Description are repugnant the whole invention must be found in one or the other, and the two may so contradict each other as to make the whole void, see Smith v. Murray (1886), 27 Fed. Rep. 69; 36 O. G. 1045. been previously described in such a manner that any person skilled in the art could practise it from such Description, without experiment or the exercise of his own inventive skill.2 Features of the invention not delineated in the Description cannot be inserted in the Claim, even though a mechanic in endeavoring to construct or employ the invention would inevitably discover them.3 Matter described as auxiliary, but not essential to the invention, cannot be stated in the Claim. A Claim for what has been described as a new part of an existing invention should not mention any other parts of such invention, unless they are necessarily connected with or related to the new, and when thus mentioned it must be apparent from the Claim itself that it does not attempt to cover them.5 A Claim for all modes of effecting a result when the invention has been previously described as a single mode of effecting it, or which embraces the natural 2 That the invention claimed must have been so described that any one skilled in the art could practise it, see Vogler v. Semple (1877), 7 Bissell, 382; 11 O. G. 923; 2 Bann. & A. 556. That a Claim based on an insufficient Description is void, see Simpson v. Holliday (1865), 12 L. T. Rep. N. s. 99. 8 That a Claim for a method not shown in the Description is void, see Needham v. Washburn (1874), 4 Clifford, 254; 70. G. 649; 1 Bann. & A. 537. That a Claim for features not described, but which a maker of the article might discover by using it, is invalid, see Kelleher v. Darling (1878), 14 O. G. 673; 4 Clifford, 424; 3 Bann. & A. 438. 4 That the Claim must not contain matter described as auxiliary, see Ex parte Wheat (1879), 16 O. G. 360. That where the described invention is a new part of an existing invention, the other parts should be omitted from the Claim if the new can be intelligibly stated without them, see Ex parte Skinner (1881), 19 O. G. 662; In O'Reilly v. Morse (1853), 15 How. 62, Taney, C. J.: (112) "We perceive no well-founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims. The difficulty arises on the eighth. It is in the following words: Eighth, I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and Claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.' It is impossible to misunderstand the extent of this Claim. He claims the exclusive force applied when the invention is a method of applying it, or which claims a principle of operation apart from the mechanism through which the operation is performed or the process in which it is employed, also violates this rule, since in each case the invention claimed is broader than the one described.7 The Claim may, however, be narrower than the invention set forth in the Description, provided the subject-matter of the Claim is a practically operative art or instrument. Thus, if right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing intelligible characters, signs, or letters at a distance. If this Claim can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated, less liable to get out of order, less expensive in construction and in its operation. But yet if it is covered by this patent the inventor could not use it nor the public have the benefit of it without the permission of this patentee. Nor is this all; while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the Patent Office. And when his patent expires the public must apply to him to learn what it is. In fine, he claims an exclusive right to use a manner and process which he has not described, and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the Claim is too broad, and not warranted by law." That all modes of effecting an end cannot be claimed, see Lawther v. Hamilton (1884), 29 O. G. 449; 21 Fed. Rep. 811; Ex parte Demming (1884), 26 O. G. 1207; Marsh v. Dodge & Stevenson Mfg. Co. (1873), 5 O. G. 398; 6 Fisher, 562; Stone v. Sprague (1840), 1 Story, 270; 2 Robb, 10; Wyeth v. Stone (1840), 1 Story, 273; 2 Robb, 23. 7 That the Claim must not cover a force of nature, see Detmold v. Reeves (1851), 1 Fisher, 127. That the Claim must not cover a principle, see Ex parte Fairbanks (1873), 30. G. 65; Burr v. Duryee (1863), 1 Wall. 531; Walton v. Bateman (1842), 1 Web. 613. See §§ 133-143 and notes, ante. 6 That the invention claimed may be narrower than that described if it be a single new element in the described invention be a complete operative means it may be claimed alone, and if it is essential to the operation of the invention as a whole, the entire invention may be indirectly protected by this restricted Claim.9 When the different parts of a device, as well as the device itself, have been described as new, the inventor may claim one part alone, or all parts separately, or the device alone, or both the parts and the device, as he deems best; 10 and where he has described certain features of his invention as capable of being omitted without impairing its practical efficiency, these may be either inserted in the Claim or omitted from it without affecting its validity. § 516. The Claim: no Particular Form Required. No particular form of words is required for the statement of the Claim.1 The language used must be sufficiently clear and accurate to define the invention to the mind of the reader and convey to him a precise idea of its essential character, an operative means, see Ex parte Emerson (1880), 17 O. G. 1451; Russell & Erwin Mfg. Co. v. Mallory (1872), 2 O. G. 495; 10 Blatch. 140; 5 Fisher 632. 9 That where a part of the described invention is practically operative alone, it may be claimed alone; and if essential to the operation of the rest, a Claim for it alone will protect the whole invention, see Ex parte Sturges (1872), 1 O. G. 204. 10 That where the Description shows several ways of applying a substance to new uses the Claim may cover all, see Ex parte Floyd (1874), 6 O. G. 541. That where the parts of an invention are separately operative, a Claim for each may be inserted with that for the invention as a whole, see Ex parte Smith (1872), 2 O. G. 117. That a Claim for each subordinate part is proper in connection with a Claim for the whole, though the parts are inoperative except in connection with each other, see Wells v. Jacques (1874), 5 O. G. 364; 1 Bann. & A. 60. See also § 472 and notes, ante. That where the Description restricts the invention to a certain arrangement of parts, the Claim for the union of such parts must be correspondingly limited, see Ex parte Marsh (1872), 2 O. G. 197. § 516. 1 That no particular form of Claim is required, see Ex parte Designolle (1877), 13 O. G. 227; Ex parte Dahne (1875), 7 O. G. 1095; Wyeth v. Stone (1840), 1 Story, 273; 2 Robb, 23. That the Claim is a whole and must stand or fall as such, being incapable of partial acceptance or rejection, see Ex parte Smith (1872), 1 O. G. 403. That differences in the language of Claims do not necessarily show a dif ference in the inventions, see Sharp v. Tifft (1880), 18 Blatch. 132; 17 O. G. 1282; 2 Fed. Rep. 697; 5 Bann. & A. 399. neither exceeding the limits of the invention actually made, nor falling short of that operative means which the inventor intends to secure. A general and ambiguous Claim, leaving it uncertain what the inventor really wishes to protect, is void, but inartificial and ungrammatical expressions, not producing such uncertainty, do not render it invalid.2 Useless words should not be inserted nor synonymous words be multiplied; since the former tend to create unnecessary ambiguity, while the latter are calculated to mislead the reader by suggesting to him that each word may be used by the inventor to express a different idea from that denoted by the others. Equivocal words are, of course, never permitted; for by their employment the meaning of the Claim is at once rendered doubtful.4 Albany Steam Trap Co. v. Felthousen (1884), 22 Blatch. 169; 20 Fed. Rep. 633. That any terms properly qualified may be used in a Claim, see Ex parte Holt (1884), 29 O. G. 171. That every element claimed must be clearly stated, not merely inferred, see Ex parte Holt (1884), 29 O. G. 171. That a Claim must assert, not rest in doubtful implications, see Fricke v. Hum (1877), 22 Fed. Rep. 302. That vague Claims are not allowable, see Ex parte Paige (1887), 40 O. G. 807. That an ambiguous Claim is void, see Edgarton v. Furst & Bradley Mfg. Co. (1881), 9 Fed. Rep. 450; 21 O. G. 261; 10 Bissell, 402; Merrill v. Yeomans (1877), 94 U. S. 568; 11 O. G. 970; Sargent v. Burge (1877), 11 O. G. 1055; Blake v. Stafford (1868), 3 Fisher, 294; 6 Blatch. 195; Rich v. Lippincott (1853), 2 Fisher, 1. That a Claim cannot use such indefi That where an invention consists in the peculiar arrangement of certain parts, a Claim stating the parts in a general manner and referring to the Description as showing the arrangement, is not sufficient, see Ex parte Kerr (1884), 28 O. G. 95. That the casual misuse of words does not make a Claim defective, if it can be cured by examining the Description, see Reed v. Street (1885), 34 O. G. 339. That a Claim will be sustained, though inaccurately expressed, if the court can see what the invention really is, see Stover v. Halsted 1875), 8 0. G. 558; 13 Blatch. 95; Ames v. Howard (1833), 1 Sumner, 482; 1 Robb, 689. 8 That the repetition of synonymous words is improper in a Claim, see Ex parte Smith (1872), 2 O. G. 117. That equivocal words must not be used, see Ex parte Designolle (1877), 13 O. G. 227. That the words "means," "mechanism," "connections," are proper when used to denote appliances which are not part of the invention, but are not to be used with reference to essential elements of the patentable subject-mat |