The Law of Patents for Useful Inventions

Of this character is the word "equivalent; " for as a true "equivalent," in the sense of the Patent Law, is always covered by the Claim, though not mentioned, the insertion of the word in the Claim implies matter outside its ordinary meaning and appears to widen the scope of the invention, while leaving its actual limits undefined.5

§ 517. The Claim: Technical Phrases.

In stating Claims certain phrases are frequently employed to which a special importance seems to be attached by applicants. Among these are the phrase " substantially as de

ter, see Ex parte Stoughton (1888), 43 O. G. 1345; Ex parte Stanbridge (1888), 43 O. G. 1345.

5 In Ex parte Haasz (1873), 4 O. G. 610, Leggett, Com. : (611) "I know of no rule or reason for prescribing or proscribing the use of any particular word or phrase in connection with a specification or Claim. Anything of the sort would necessarily be arbitrary and unreasonable. All the words of our language are, of course, as free to the intelligent and appropriate use of inventors in their specifications and Claims as to anybody else; but there are some words and phrases which are capable of being used equivocally, and perhaps the words equivalent and equivalents are the most conspicuous examples. Whenever they occur in such a connection as to have an equivocal signification, their employment in that connection must be inhibited. This is as far as a rule of practice in the matter can go. Under this rule judicious care must be exercised in the consideration of each particular case, where these words recur, to the end that the Claims shall clearly, definitely, and correctly comprehend the alleged subject-matter of invention and nothing more. No ambiguous or useless word or phrase ought ever to be allowed in a Claim. It is well known to those versed in Patent Law, that equivalents are compreVOL II. - 9

hended in every Claim, whether specified or not, and that the use of the word in a Claim cannot enlarge its legal scope. Wherever its use would merely serve to convey a magnified idea of the scope of the patent to the uninformed, it surely ought not to be allowed."

That a Claim covers all equivalents, see Burden v. Corning (1864), 2 Fisher, 477, and notes to § 257, ante.

That equivalents are covered though the inventor never thought of them, see McNamara v. Hulse (1842), 2 Web. 128.

That a Claim cannot cover matters subsequently discovered, see Tetley v. Easton (1852), Macrory's P. C. 48.

That equivalents should not be expressly claimed, see Ex parte Reid (1879), 15 O. G. 882; Ex parte Bogart (1876), 10 O. G. 113.

That the words "or equivalent devices" must not be used in a Claim unless the equivalents are described in the specification, or unless a patent for one would be a complete bar to a patent for the other, see Ex parte Dolph (1887), 39 O. G. 239.

That the examiner may require the words "or equivalents" to be erased, and the applicant cannot then amend by inserting a particular Claim for the alleged equivalent, see Ex parte Johnson (1888), 43 O. G. 507.

scribed," and others of the same meaning. These phrases import the same thing when used in a Claim as when elsewhere employed. They are neither necessary nor technical. The reference they make to the Description is always implied, and relates only to the essential features of the invention as therein delineated. They add nothing, therefore, to the certainty of the Claim, nor do they detract from it unless the claimant carelessly inserts them as a substitute for a more clear and definite statement of his invention. When used, the word "described" refers to the Claim as well as the Description, and either may thus aid in the interpretation of the other.2 Whether expressed or implied, they limit the general

§ 517. In Mitchell v. Tilghman (1873), 19 Wall. 287, Clifford, J.: (391) "Usually the Claim contains the words as described' or 'substantially as described,' or words of like import, which are everywhere understood as referring back to the descriptive parts of the specification. Words of such import, if not expressed in the Claim, must be implied, else the patent in many cases would be invalid as covering a mere function, principle, or result, which is obviously forbidden by the Patent Law, as it would close the door to all subsequent improvements." 5 O. G. 299 (303).

In Ex parte Collins Co. (1872), 2 O. G. 617, Leggett, Com.: (617) "These words should be regarded precisely as other words should be, that is, as having their ordinary meaning, — when used in a Claim, as elsewhere, and nothing more. There is no artificial significance to be set up for them by which they are to be considered either as desirable or dangerous. There is no objection whatever to their use where they make sense; but they have no legal effect either to enlarge or limit a Claim properly drawn, and, so far as the grant of a patent is concerned, they should have no influence one way or the other. The Claim should be sufficient in its

terms either with or without them, because either with or without them its meaning and effect are to be determined in the courts by the light of the specification."

That Claims always refer to the Description, whether so expressed or not, see Westinghouse v. Gardner & Ranson Air Brake Co. (1875), 9 O. G. 538; 2 Bann. & A. 55.

That the phrase "substantially as described" has no efficacy unless the Description is clear, see Ex parte Skinner (1881), 19 O. G. 662.

That a Claim depending on the phrase "mechanism substantially as described " is too vague, see Ex parte Wilkin (1884), 29 O. G. 950.

That where the Description is specific the words "substantially as described," render the Claim specific, see Ex parte Ewart (1880), 17 O. G. 448.

That the phrase "substantially as described and shown" relates only to the material features of the invention, see Waterbury Brass Co. v. Miller (1871), 9 Blatch. 77; 5 Fisher, 48.

2 That the word "described" refers to the Claim as well as the Description, see Pearl v. Ocean Mills (1877), 2 Bann. & A. 469; 11 O. G. 2.

terms of the Claim to the specific features set out in the Description, though neither these phrases, nor the one "as specified," confines the Claim to that mode of using the invention which has been previously described. The phrase "substantially as and for the purposes set forth" is of a different character. These are words of limitation, and should not be used unless they are intended to have their special signification. They refer to the Description for a qualification of the general statements of the Claim, and confine the invention within the purposes and operations there specifically named.*

§ 518. The Claim must not Claim a Mere Function.

One of the most objectionable forms in which a Claim can be stated is that of a Claim for the function of the invention. A functional Claim is one which claims the producing of an effect as distinguished from the means by which it is produced. Such a Claim is void, since it neither covers a patentable invention nor corresponds with the Description previously given. The language of a functional Claim is usually parti

8 That a Claim for a combination "substantially as described" is limited to the elements described as composing it, see Hailes v. Van Worner (1873), 20 Wall. 353; 5 O. G. 89.

That the phrase "in the manner . . . mentioned," limits the process to the manner described, see Barker v. Grace (1847), 1 Exch. 339.

That in a Claim the words "as specified" do not limit the Claim to the described mode of using the invention, see Lorillard v. McDowell (1877), 2 Bann. & A. 531; 11 O. G. 640; 13 Phila. 461; Betts v. Menzies (1861), 10 H. L. Cas. 117.

4 That the words " 'substantially as and for the purposes set forth" refer to the Description for a limitation of the general words employed, see Corn Planter Patent (1874), 23 Wall. 181; 6 O. G. 392; Ex parte Sperry (1872), 2 O. G. 387.

§ 518. 1 In Ex parte Hahn (1875), 8 O. G. 597, Spear, Act. Com.: (597) "It is clear from the numerous decisions of the courts and Office on that point that what is known as a functional Claim is one that has for its subject the performance of an act merely, and not the means by which that act is executed. It is not for a substantive thing, but for the result which that thing accomplishes. Its language is usually in the participial form, as 'producing,' operating,' 'determining,' so combining,' so constructing,' etc."

2 That a Claim for a function is void, see Matthews v. Schoneberger (1880), 4 Fed. Rep. 635; 18 Blatch. 357; 18 O. G. 1464; Ex parte Ives (1878), 15 O. G. 385; Ex parte Arnold (1874), 5 O. G. 553; Wheeler v. Simpson (1874), 1 Bann. & A. 420; 6 O. G. 435; Sickels v. Falls Co. (1861), 4 Blatch. 508; 2 Fisher, 202; Opin

cipial; and if construed according to its terms the matter claimed would be the operation of the invention on its object, not the invention itself. In order to sustain the patent the courts construe such Claims, if possible, as Claims for the means by which the act is performed, and not for the performance of the act itself. Thus a Claim for the "so form

ing" a thing is treated as a Claim for the thing formed; a Claim for the application of means by which a certain thing is done is held to be a Claim for the means applied; a Claim for producing a given effect, by means of a peculiar arrangement of the instruments employed, is considered as a Claim for the instruments as so arranged; and a Claim for the 66 doing" of an act is interpreted to be a Claim for the means or apparatus by which the act is done. But where the Claim is unequivocally functional,- as, for example, where it claims the "operating of" a machine, or the "imparting motion" to an object, it is fatally defective.5 It must not be forgotten, ion Atty. Gen. (1856), 8 Op. At. Gen. mechanism described, see Ex parte 269. Holmes (1874), 6 O. G. 360.

See also §§ 144-146 and notes, ante. That participial Claims are improper, see Ex parte Cox (1873), 3 O. G. 2. That an apparatus must not be claimed as a "" means of doing," but as a specific device, see Ex parte Bates (1879), 16 O. G. 266.

That a Claim for a design must not cover a mere function, see Ex parte Diffenderfer (1872), 2 O. G. 57.

8 That a Claim, when functional in form, is treated, if possible, as a Claim for the means performing the function, see Royer v. Schultz Belting Co. (1886), 28 Fed. Rep. 850; 38 O. G. 898; Coffin v. Ogden (1869), 3 Fisher, 640; 7 Blatch. 61; Minter v. Wells (1834), 1 Web. 134; 2 Abb. P. C. 47. That the courts do not sanction functional Claims by relieving patentees from their consequences, see Ex parte Ives (1878), 15 O. G. 385.

That functional Claims may often be cured by inserting a reference to the

4 That a Claim for the "so forming," etc., is not functional, but claims the thing formed, see Parham v. American Buttonhole, Overseaming, & Sewing Mach. Co. (1871), 4 Fisher, 468.

That a Claim for the application of means by which an effect is accomplished is a Claim for the means applied, see Hitchcock v. Tremaine (1871), 4 Fisher, 508; 8 Blatch. 440.

That a Claim for such an arrangement of elements as will produce a certain effect is a Claim for the elements as so arranged, not for the function, see Renwick v. Pond (1872), 2 O. G. 392; 5 Fisher, 569; 10 Blatch. 39.

That a Claim for "doing" an act or thing is treated as a Claim for the means of doing it, see Fuller v. Yentzer (1876), 94 U. S. 288; 11 O. G. 551; Seymour v. Osborne (1869), 3 Fisher, 555.

5 That a Claim for the "operating of," etc., is void, see Er parte Ives (1878), 15 O. G. 385.

That a Claim for "imparting mo

however, that the function of one invention may be itself a different invention, as an art may stand in the relation of function to the apparatus by which it is performed. Where such an invention is the one described, it may be claimed in any language suitable for its definition, although the same Claim, if based on a Description of the instruments employed, would be clearly functional and void. In a Claim properly defining the real invention, its functions may be referred to and its operation set forth without impairing the validity of the Claim.6

§ 519. The Claim must not Claim a Mere Effect.

Another objectionable form of Claim is that which claims the result accomplished by the use of the invention, instead of the invention by whose use the result is attained. Where a result is a new product and constitutes the real invention, it is, of course, the proper subject of the Claim. But where it is a mere effect of the means devised by the inventor, it cannot be claimed in his patent. It is not in its nature a patentable invention, nor, if it were, could it be monopolized by an inventor who had simply discovered one means of producing it. Such Claims are, therefore, void, although, as in

tion," etc., is void, see Sickels v. Falls Co. (1861), 2 Fisher, 202; 4 Blatch. 508.

That in a machine patent a Claim for the "mode of operation" is void, see Hatch v. Moffitt (1883), 15 Fed. Rep. 252.

That a Claim for a mechanical process, which is a mere function of the described devices, is void, see Case v. Hastings (1875), 7 O. G. 557.

That a Claim for the means does not become a functional Claim by stating the operation of the means, if it is otherwise sufficient, see Ex parte Gray (1877), 11 O. G. 329; Ex parte Kieth (1876), 9 O. G. 744.

§ 519. 1 That a Claim for a result as a product is valid, see Anilin v. Higgin (1878), 15 Blatch. 290; 14 O. G. 414; 3 Bann. & A. 462.

2 That a Claim for a result as an ef fect is void, see Ex parte Beavis (1879), 16 O. G. 1233; Marsh v. Dodge & Stevenson Mfg. Co. (1874), 5 O. G. 398; 6 Fisher, 562; Wheeler v. Simpson (1874), 6 O. G. 435; 1 Bann. & A. 420; Bailey Washing & Wringing Mach. Co. v. Lincoln (1871), 4 Fisher, 379; Sickels v. Falls Co. (1861), 4 Blatch. 508; 2 Fisher, 202.

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The Law of Patents for Useful Inventions, 2. sējums