which is subsidiary to a prior sole invention, cannot be so construed as to embrace the sole invention.5

§ 748. Special Rules: Claims for Principles, Functions, or Effects. A Claim for the principle or force employed in an invention will be interpreted, if possible, as a Claim for the instrument or operation by which the force is applied to its appropriate object.1 A Claim for a function, where the specification describes the device or apparatus which performs it, will be construed as intended to cover such apparatus or device.2 A Claim for a result or effect will be considered as a Claim for the means by which the effect is produced, if the specification, as a whole, is open to that interpretation.3

§ 749. Special Rules: Claims for an Entirety not Divisible : Claims for Separate Devices not Consolidated.

A Claim for an entire instrument or process, consisting of several steps or divisible parts, cannot usually be divided by construction in such a manner as to cover these independent members. If the interpretation given to the invention by the specification, however, indicates that these steps or parts

to be construed in view of the original and its relations to it, see Brown v. Selby (1871), 2 Bissell, 457; 4 Fisher, 363.

That the court can determine whether two designs are the same by comparing them, see Jennings v. Kibbe (1882), 10 Fed. Rep. 669; 22 O. G. 331; 20 Blatch. 353; and §§ 201-207, 306, and notes, ante.

5 That a joint invention, subsidiary to a prior invention of one of the joint inventors, cannot be so construed as to include it, see Hopkins & Dickinson Mfg. Co. v. Corbin (1878), 14 Blatch. 396; 14 O. G. 3.

§ 748. 1 That a Claim will not be construed to cover a principle if it can be so interpreted as to apply to a device, see Union Paper Bag Co. v. Nixon (1873), 4 O. G. 31; 6 Fisher, 402; and §§ 508, 509 and notes, ante.

2 That functional Claims will be construed, if possible, as Claims for what performs the function, see Albany Steam Trap Co. v. Felthousen (1884), 22 Blatch. 169; 20 Fed. Rep. 633; Mfg. Co. v. Ladd (1877), 11 O. G. 153; 2 Bann. & A. 488; Ex parte Shippen (1875), 8 O. G. 727; and § 518 and notes, ante.

That a Claim for a result will be construed, if possible, to be a Claim for a means of effecting a result, see Palmer v. Gatling Gun Co. (1881), 8 Fed. Rep. 513; 19 Blatch. 392; 20 O. G. 815; Henderson v. Cleveland Co-operative Stove Co. (1877), 2 Bann. & A. 604; 12 O. G. 4; and § 519 and notes, ante.

§ 749. That a Claim for a whole cannot be divided by construction so as to cover the parts, see Evans v. Kelly (1880), 9 Bissell, 251; 13 Fed. Rep. 903; 23 O. G. 192; 5 Bann. & A. 71.

are the true means conceived by the inventor, the Claim may be extended to embrace them.2 Two apparently separate Claims cannot be construed together as one Claim and be thus supported by each other.3

§ 750. Special Rules: Foreign Words: "Substantially as De"9 64 scribed: Generic," etc.

Foreign words occurring in a patent are to be interpreted by the context and the real object of the inventor, and to receive such meaning as will effect his intention.1 The phrase "substantially as described," in the Claim, signifies much or little, as the patentee evidently designed.2 This phrase is always supposed to be incorporated in the Claim, whether or not it is actually inserted. In any case it relates only to the material features of the invention, as shown by its purpose and by the elements which compose it and

2 That effect is to be given to the whole description in the specification and drawings, and if it can be seen that the patentee intended to claim the parts separately, the patent must be so construed, see National Car Brake Shoe Co. v. Lake Shore & Michigan Southern R. R. Co. (1880), 9 Bissell, 503; 18 O. G. 1179; 4 Fed. Rep. 219.

That two apparently separate Claims cannot be construed as one, and be supported by each other, see Seymour v. McCormick (1856) 19 How. 96.

That two patents cannot be construed to supplement each other, see Blades v. Rand, McNally, & Co. (1886), 27 Fed. Rep. 93; 37 O. G. 99.

That a Claim covering a class, where the invention is only one of the class, is confined to the invention, see Opinion Atty. Gen. (1856), 8 Op. Atty. Gen. 269.

§ 750. 1 That foreign words will be interpreted by the context, and the real nature of the invention, see White v. Allen (1863), 2 Fisher, 440; 2 Clifford,

224.

2 That the phrase "substantially as

described" means much or little, as the intention of the patentee requires, see Seymour v. Osborne (1869), 3 Fisher, 555.

8 That the words "substantially as described" are always understood in the Claim, and refer to the specification, see Matthews v. Schoneberger (1880), 4 Fed. Rep. 635; 18 O. G. 1464; 18 Blatch. 357; Westinghouse v. Gardner & Ranson Air Brake Co. (1875), 2 Bann. &. A. 55; 9 O. G. 538; Mitchell v. Tilghman (1873), 19 Wall. 287; 5 O. G. 299; and § 517 and notes, ante.

That Claims referring to the specifi cation must be construed by it, see Gottfried v. Phillip Best Brewing Co. (1879), 5 Bann. & A. 4; 17 O. G. 675; Sickels v. Evans (1863), 2 Fisher, 417; 2 Clifford, 203.

That the Claim may be construed by the specification so as to be good, though on its face it covers only a function or a result, if it refers to the specification by the words " 'substantially as described," see Seymour v. Osborne (1870), 11 Wall. 516; Seymour v. Osborne (1869), 3 Fisher, 555.

enable it to accomplish its results.4 The similar phrase "as herein described " likewise refers to the specification for a fuller and more exact statement of the subject-matter of the Claim. The word "specification" is sometimes employed to denote both the Claim and the Description, and sometimes only the Description. In statutes and elsewhere, when it is used alone, it has the former meaning; when the word "Claim" is also used, it has the latter. The term "generic" varies in its application. It is a relative term, the same invention being generic as to some inventions and specific as to others.7 It is to be interpreted according to the nature of the operation or instrument to which it is applied, and the position of such instrument or operation in the art to which it belongs. The word "inanufacture" may denote the article made, or the means by which it is produced.8

↑ In Waterbury Brass Co. v. Miller (1871), 9 Blatch. 77, Woodruff, J. (97) "They relate only to material features of the combination specified, and these are to be ascertained by considering the object or purpose of the machine, and what are the elements of the combination which create its distinctive character, and are effective in producing the peculiar result for which the contrivance is made." 5 Fisher, 48 (68).

That in the Claim the words "in the manner and for the purposes herein specified" should not be construed to cover every part shown in the drawings and Description, nor to confine the invention to the precise form therein shown, see Reed v. Chase (1885), 25 Fed. Rep. 94; 33 O. G. 996.

5 That the words "as herein de scribed" or "set forth" refer to the specification, and may embrace elements not mentioned in the Claim, see Vance v. Campbell (1859), 1 Fisher, 483.

That the words in the Claim “all as shown and described " limits the Claim to the exact thing shown, see Osceola Mfg. Co. v. Pie (1886), 28 Fed. Rep. 83.

6 In Wilson v. Coon (1880), 18 Blatch. 532, Blatchford, J.: (535) "The word 'specification,' when used separately from the word 'claim,' in § 4916, means the entire paper referred to in § 4888, namely, the written description of the invention, and of the manner and process of making, constructing, compounding, and using it,' and the Claims made. The word

specification,' meaning Description and Claims, is used in that sense in §§ 4884, 4895, 4902, 4903, 4917, 4920, and 4922. In some cases, as in §§ 4888 and 4916, the words 'specification and claim' are used, and in § 4902 the word 'description' and the word 'specification' are used. But it is clear that the word 'specification,' when used without the word 'claim,' means Description and Claim." 19 O. G. 482 (482); 6 Fed. Rep. 611 (615). See also §§ 655-657 and notes, ante.

7 That the term "generic" is relative, the same invention being "generic," as to some, and “specific " as to others, see Ex parte Ewart (1880), 17 0. G. 448; and §§ 535, 536, and notes, ante.

8 That the word "manufacture" may

§ 751. Special Rules: Terms Admitting of Degrees Other

Terms.

Terms admitting of degrees such as "tight," "hard," "hot," and the like refer to that degree which is best suited to the purposes of the invention as indicated by its practical use. The phrase "in any other convenient manner" includes every method which the invention can perform.2 "Suitable materials" embrace all known materials proper for the purpose. The "making" or "selling" of a substance is essentially distinct from its "use," and a patent for the latter does not confer upon the patentee any exclusive right to the former. Other special words are interpreted in view of the practical character of the invention and as they would ordinarily be employed by persons skilled in the art.5

mean the article made, or the work of making it, see Shaw v. Colwell Lead Co. (1882), 20 Blatch. 417; 11 Fed. Rep. 711.

§ 751. 1 That terms admitting of degrees of meaning, such as "tight," "hard," etc., mean such degree as is suited to the purposes of the invention, see Robinson v. Sutter (1881), 8 Fed. Rep. 828; 19 O. G. 127; 10 Bissell, 100. The words "to be hardened," in a Description, mean to be made as hard as possible, see Monce v. Adams (1874), 7 O. G. 177; 1 Bann. & A. 126; 12 Blatch. 1.

2 That in the specification the phrase "or in any other convenient manner," is construed to cover such manner as the device can perform, see Illinois Central R. R. Co. v. Turrill (1876), 94 U. S. 695; 12 O. G. 709.

That the phrase "suitable materials" means "known materials," see Bailey Washing & Wringing Mach. Co. v. Lincoln (1871), 4 Fisher, 379.

That a patent for the "use" of a thing does not cover the making and selling of it, see Keystone Bridge Co.

v. Phoenix Iron Co. (1872), 5 Fisher, 468; 1 O. G. 471.

5 That "jointly" in a Claim may mean "by united action," not necessarily "simultaneously,' see Gold & Stock Telegraph Co. v. Commercial Telegram Co. (1885), 23 Blatch. 199; 23 Fed. Rep. 340; 31 O. G. 1558.

That "perfect" means perfect according to the standard required in the art, see Adams v. Bridgewater Iron Co. (1886), 26 Fed. Rep. 324; 34 O. G. 1045.

That "free from defect" means sufficiently free for practical purposes, see Adams v. Bridgewater Iron Co. (1886), 26 Fed. Rep. 324; 34 O. G. 1045.

That" concavo-convex" means such a degree of each as mechanical judgment may show to be needed, see Temple Pump Co. v. Goss Pump & Rubber Bucket Mfg. Co. (1887), 39 O. G. 467 ; 30 Fed. Rep. 446.

That the words "or other part" mean “or other equivalent part," and do not render the Claim uncertain, see Babcock & Wilcox Co. v. Pioneer Iron Works (1888), 43 O. G. 756.

CHAPTER V.

OF THE TRANSFER OF LETTERS-PATENT.

§ 752. Patented Inventions are Property, and as Such Trans

ferable.

A PATENTED invention, being capable of exclusive possession and dominion, is property, and occupies the same legal position and is governed by the same legal rules as any other object of human ownership. The patentee has the same rights in it, and the same authority over it, that are vested in him as to any class of property. His title to it rests on the same ultimate basis of prior occupancy, receives the same sanction and vindication through the provisions of positive law, and is held and enjoyed upon the same general conditions of subservience to the rights of others and to the public good. And as, like most species of property, its value to its owner resides principally in his power to dispose of it for different property, its transfer by the patentee to other persons is restricted only by the nature of the property itself. Of what forms of transfer a patented invention is capable is thus an inquiry preliminary to any discussion of the modes by which it may be practically conveyed.

§ 753. Property in a Patented Invention Twofold: the Invention, and the Monopoly.

The property in a patented invention is composed of two different elements, distinct in their origin, in their nature,

§ 752. 1 That an invention belongs to the inventor as fully as any other property, see Sloat v. Patton (1852), 1 Fisher, 154; and § 61 and notes, ante.

2 That every patent and every interest in a patent is transferable, see Howe v. Chatham (1885), 64 Tex. 36;

Campbell v. James (1880), 2 Fed. Rep. 338; 18 Blatch. 92; 18 O. G. 1111; Parker v. Haworth (1848), 4 McLean, 370; 2 Robb, 725.

That each Claim is separately transferable, see Pope Mfg. Co. v. Gormully & Jeffrey Mfg. Co. (1888), 34 Fed. Rep. 893.