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§ 537. The Claim, when Defective.

A Claim is defective when it fails to define the real invention with sufficient completeness and precision, or when it claims more than belongs to the invention. In the former case the discovery of the inventor is not properly protected.1 In the latter case the Claim is absolutely void.2 Both these defects may be, however, remedied by a re-issue, and the latter one is also curable by a disclaimer. When several Claims are inserted in the specification, the presence of a void Claim does not affect those which are good, unless there is an evident intention to mislead the public or an unreasonable delay in filing a disclaimer.1

process have equivalents, a generic Claim may cover it under any form, and a specific Claim may cover the specific form, see Ex parte McDougall (1880), 18 O. G. 130.

That several devices constructed on the same principle may be described in one application and covered by one generic Claim, but only one device can be specifically claimed, see Ex parte Howland (1877), 12 O. G. 889.

That the designation of one of two species as the best does not debar the patentee from claiming the other, see Ex parte McClintock (1880), 17 O. G. 267. See also § 471, note 4, ante.

§ 537. That the Claim may be valid for what it claims, though it does not claim the full invention, see Wilson v. Coon (1880), 19 O. G. 482; 6 Fed. Rep. 611; 18 Blatch. 532; and § 508, note 2, ante.

2 That a Claim exceeding the limits of the actual invention is void, see Milligan v. Lalance & Grosjean Mfg. Co. (1884), 29 O. G. 367; 21 Fed. Rep. 570; Scott v. Ford (1878), 14 O. G. 413; Winans v. N. Y. & Erie R. R. Co. (1856), 1 Fisher, 213; Heinrich v. Luther (1855), 6 McLean, 345; Holliday v. Rheem (1852), 18 Pa. St. 465; 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; Kneass v. Schuylkill Bank (1820), 4 Wash. 9; 1 Robb, 303.

3 That an excessive Claim is curable by re-issue or disclaimer, see Silsby v. Foote (1857), 20 How. 378; Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567; Peterson v. Wooden (1843), 3 McLean, 248; 2 Robb, 116; Stanley v. Whipple (1839), 2 McLean, 35; 2 Robb, 1. See also §§ 642-646 and notes, post. That an incomplete or inexact Claim may be cured by re-issue, see §§ 656, note 3, 668, notes 5 and 6, and 693 and notes, post.

That a disclaimer in a pending application must not contradict but explain and limit the Claim, see Ex parte Hobson (1872), 1 O. G. 141.

4 That the presence of void Claims in a patent does not impair the effect of good Claims, see Tyler v. Galloway (1882), 22 O. G. 2072; 12 Fed. Rep. 567; 20 Blatch. 445; Christman v. Rumsey (1879), 58 How. Pr. 114; 17 Blatch. 148; 17 O. G. 903; 4 Bann. & A. 506; Burdett v. Estey (1878), 15 O. G. 877; 15 Blatch. 349; Russell v. Place (1876), 94 U. S. 606; 12 O. G. 53; Carlton v. Bokee (1873), 17 Wall. 463; 2.0. G. 520; 6 Fisher, 40; Cahart v. Austin (1865), 2 Fisher, 543;

§ 538. The Claim, as Corrected or Allowed in the Patent Office, Determines the Validity and Scope of the Patent.

It is the duty of the Patent Office to secure the correct statement of the Claims before it allows the issue of a patent.1 That the courts might sustain a defective Claim, in order to prevent the defeat of a granted patent, is no reason for permitting such a Claim to pass the scrutiny of the department.2 The Claim is to define what the Patent Office, after due examination, has ascertained to be the real discovery of the inventor, and it must be amended or withdrawn according to the judgment of the officers to whom this duty is committed. Once settled in its terms by their decision, the courts will not disturb it, either by interfering with its language or by narrowing or enlarging it by construction.3

§ 539. The Specification: its Signature: Erasures and Corrections. The specification must be signed by the inventor, or by his executor or administrator, and the signature must be attested

2 Clifford, 528; Singer v. Walmsley (1860), 1 Fisher, 558.

That void Claims may be disclaimed, see Tyler v. Galloway (1882), 22 O. G. 2072; 12 Fed. Rep. 567; 20 Blatch. 445.

That where of two Claims one is too broad under one interpretation, and under another is a mere repetition of a former Claim, it is void and must be disclaimed, see Tyler v. Galloway (1882), 22 O. G. 2072; 12 Fed. Rep. 567; 20 Blatch. 445.

That unreasonable delay in disclaiming void Claims will vitiate the entire patent, see McCormick v. Seymour (1854), 3 Blatch. 209; Hall v. Wiles (1851), 2 Blatch. 194; and notes to § 646, post.

§ 538. 1 That it is the duty of the Patent Office to see that Claims are correct, see Keystone Bridge Co. v. Phoenix Iron Co. (1877), 95 U. S. 274; 12 O. G. 980.

2 That the courts may sustain Claims which the Patent Office ought not to allow, see Ex parte Cornell (1872), 1 O. G. 573.

That though the courts may sustain defective Claims the Patent Office has no right to permit them, see Ex parte McDougall (1880), 18 O. G. 130.

8 In Burns v. Meyer (1879), 100 U. S. 671, Bradley J.: (672) "It is well known that the terms of the Claim in letters-patent are carefully scruti nized in the Patent Office. Over this part of the specification the chief contest generally arises. It defines what the Office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to. The courts, therefore, should be careful not to enlarge, by construction, the Claim which the Patent Office has admitted, and which the patentee has acquiesced in, beyond the fair interpretation of its terms."

See also §§ 738-743 and notes, post. That a Claim cannot be dissected and accepted or rejected piecemeal, but must stand or fall together, see Ex parte Smith (1872), 1 O G. 403.

by two witnesses, each signing his full name, legibly written.1 The Description and Claims, and all amendments thereof, must be written in a clear and readable hand on one side of the paper only; and all interlineations and erasures must be marked in marginal or foot notes written on the same sheet of paper, for which purpose a wide margin should be reserved on the left-hand side of the page. Legal-cap paper, with the lines numbered, is recommended by the Office.

SECTION VII.

OF THE APPLICATION: THE DRAWINGS AND MODEL.

§ 540. Drawings, Model, and Specimens: when Required.

In order to secure still greater accuracy and completeness in the description of that art or instrument for which the inventor claims the protection of a patent, the law requires him to furnish drawings, and a model or specimens, illustrating its distinctive characteristics, whenever in the judgment of the Patent Office the case demands them. The requirement of the statute in reference to drawings is positive, and the applicant must file them if the nature of the invention permits.1 Those in reference to the model and specimens are conditional upon the order of the Commissioner, and the applicant is not obliged to furnish them unless especially directed. But as the question whether the nature of the case admits of drawings is finally determined by the Commissioner, and his decision as to their sufficiency, as well as that of the specimens or model, is conclusive, the practical difference in this respect between these several requirements is insignificant, affecting merely the order of proceedings in the Office.

§ 539. That the applicant must sign his first name in full, see Ex parte Gentry (1888), 44 O. G. 822.

§ 540. That a drawing must be filed whenever the nature of the invention permits, see Ex parte Chase (1879), 16 O. G. 809.

2 That the decision of the Commissioner that drawings were duly presented is final except on proceedings to avoid the patent, see Hoe v. Cottrell (1880), 17 Blatch. 546; 18 O. G. 59; 1 Fed. Rep. 597; 5 Bann. & A. 256. See also § 423 and notes, ante.

§ 511. Drawings must Correspond with Specification.

The drawings filed must correspond with the specification in all the essential characteristics of the invention.1 They are but another method of portraying the same art or instrument therein described in words, and a discrepancy between the two delineations may give rise to such an ambiguity in the entire description as renders the patent void. They are connected with the specification by means of figures affixed to each drawing, and letters or figures affixed to each of its several parts, and so referred to in the language of the Description and the Claim that the verbal and pictorial representations will serve to illustrate and explain each other.3

§ 542. Drawings to be so Clear and Full as to Supply the

Place of a Model.

The drawings filed must be so full and clear that, if the invention is a simple one, no model will be needed.1 The model, being retained in the Patent Office after the patent issues, is inaccessible to the public without recourse to the place of its deposit. The drawings, on the contrary, through the copies annexed to the patent, and published in the “Gazette," or supplied on application by the Office, circulate in every direction and are open to inspection by all persons interested in the art to which the invention may belong. In pursuance of its duty to disseminate in the widest degree immediate information concerning all inventions, the Patent

§ 541. 1 That the drawings must correspond in all essential points with the specification, see Ex parte Witty (1884), 29 O. G. 862; Ex parte Schoonmaker (1878), 13 O. G. 595.

That the drawings must show every feature claimed, see Ex parte Crandall (1886), 35 O. G. 625,

2 That the drawings may show the invention where the specification fails to do so, see Banker v. Bostwick (1880), 18 0. G. 61.

That all patentable matter shown in the specification, drawings, or model is covered by the application, see

Singer v. Braunsdorf (1870), 7 Blatch. 521.

That an imperfect description coupled with incomplete drawings make the patent void, see New Process Fermentation Co. v. Koch (1884), 29 O. G. 535; 21 Fed. Rep. 580.

8 That under the act of 1793, the drawings need not have been referred to in the specification, see Emerson v. Hogg (1845), 2 Blatch. 1.

§ 542. 1 That in simple inventions the drawings must be sufficient to supply the place of a model, see Ex parte Jové (1880), 17 O. G. 801.

Office properly requires that the drawings shall, as far as possible, supply the place of a model; and this in simple inventions, with the present facilities for pictorial representation, they are fully competent to do. In complicated structures, incapable of complete perspective reproduction on a plane surface, a model becomes necessary.

§ 543. Drawings: General Requisites in each Class of Inventions. The drawings must exhibit every feature of the invention covered by the Claims; otherwise the language of the specification would set forth a different art or instrument from that depicted in the drawings, resulting in an ambiguity which might be fatal to the patent. In the drawings which accompany the specification for an art, every stage or sub-process capable of illustration by a drawing must be shown; but the different steps of a sub-process do not require such delineation. In a machine or manufacture, the drawing must disclose all the essential parts in their proper places, as they would appear in the practically operative instrument. The drawings of an improvement must exhibit, in one or more views, the improvement itself disconnected from the old structure, and also in another view so much only of the old structure as will suffice to show the connection of the improvement therewith. A design must be shown by a drawing or a photograph, in which all the distinctive characteristics of the new configuration or ornamentation are depicted. But while the drawings must thus present every feature of the claimed invention to the eye, they need not be working-drawings nor on an operative scale. They are not intended as a guide to the the improvement are necessary, see Burrall v. Jewett (1830), 2 Paige (N. Y.), 134.

§ 543. That in an application covering an art every claimed stage or subprocess must, if possible, be illustrated by drawings, but not the several steps of each sub-process, see Ex parte Carter (1879), 16 O. G. 809.

2 That a drawing must accompany an application covering an article of manufacture, see Ex parte Chase (1879), 16 O. G. 809.

8 That in a patent covering an improvement in machinery, drawings of

That in an application covering an improvement, the improvement must be shown by a model and drawings, but not the original when it is well known to the public or its description is accessible, see Ex parte Tracy (1875), 8 O. G. 144.

4 That the drawings need not, be working-drawings nor on an operative scale, see American Hide & Leather

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