difficulty of framing such a Description does not dispense with its production. As no inventive act is performed until the inventor so fully comprehends his own invention that he is able to communicate its essential characteristics to other men, so nothing can be said to be invented unless it can also be described. This rule is, however, satisfied when the Description corresponds substantially with the necessary attributes of the subject delineated. Absolute precision, even in essentials, is not possible, owing in part to the various senses in which the same words may be employed, and in part to the different impressions made by the same object upon different minds. Slight errors in essential points and grave mistakes on immaterial points are therefore overlooked unless they would mislead a cautious reader of the whole Description. Wrong names applied to subjects or their qualities; erroneous theories as to the causes which produce a given effect; specifically described with reasonable certainty is a question of law upon the construction of the terms of the patent, of which the specification is a part." 1 Robb, 131 (136). See also Tucker v. Tucker Mfg. Co. (1876), 4 Clifford, 397; 10 O. G. 464; 2 Bann. & A. 401; Langdon v. De Groot (1822), 1 Paine, 203; 1 Robb, 433. That failure to describe an essential element avoids the patent, see Schneider v. Thill (1880), 5 Bann. & A. 565; Carr v. Rice (1856), 1 Fisher, 198; Liardet v. Johnson (1778), 1 Web. 53; 1 Abb. P. C. 22. 8 That nothing can be patented unless it can be described, and that a patentee cannot have invented what he cannot describe, see Smith v. Downing (1850), 1 Fisher, 64. 4 In Goodyear v. Railroad (1853), 1 Fisher, 626, Grier, J.: (634) "On account of the great vagueness and indefiniteness of the language used in describing the various arts, machines, manufactures, and compositions of matter, it is almost impossible to describe the real nature of many discoveries or processes in language free from ambiguity or misconstruction. Different persons, looking at it from different points of view, would describe it in different terms. In the present case, one would describe it as 'the art of curing India rubber;' another, 'the art of rendering caoutchouc, and manufactures in which it is used, insensible to heat or cold, or the action of most of its known solvents;' another, as a 'fabric, manufacture, or new composition of matter, having qualities never before combined in any other known substance, being elastic, water-proof, insensible to acids, to heat, or to cold.'" 2 Wall. Jr. 356 (363). That the description of the subjectmatter must vary in definiteness according to its nature, see Mowry v. Whitney (1872), 14 Wall. 620; 5 Fisher, 494; 10. G. 492. That absolute precision is not required, see Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387. That immaterial errors are not regarded, see McKesson v. Carnrick (1881), 19 Blatch. 158; 21 O. G. 137; 9 Fed. Rep. 44. unfounded statements in regard to the results which the invention will accomplish; defects which are apparent to those skilled in the art and which their ordinary mechanical information would enable them to remedy, — all these inaccuracies, and others of a similar character, are consistent with that substantial correctness in essentials without which a knowledge of the invention cannot be communicated to the public.5 § 491. The Description must be Complete : Completeness Defined. A description is complete when it embraces every essential part and attribute of the thing described. The Description in a specification is complete, within the meaning of the law, when by following it precisely as it reads, without addition or subtraction, a person skilled in the art could make and use the invention. But here, also, a perfect agreement between the language employed by the inventor and the facts and acts which it endeavors to express is not always attainable. Immaterial parts are often so connected with the material that the description of the latter inevitably draws after it the delineation of the former; and on the other hand, many material objects and operations are so familiar to the inventor 5 That the Description is sufficient, in spite of technical defects, if the invention clearly appears, see Adams v. Joliet Mfg. Co. (1877), 12 O. G. 93; 3 Bann. & A. 1. That mistakes in naming the invention, or in assigning it to its proper class, as by calling it a product when it is a process, do not render the Description insufficient, see Foye v. Nichols (1882), 8 Sawyer, 201; 22 O. G. 2243; 13 Fed. Rep. 125; Goodyear v. Railroad (1853), 2 Wall. Jr. 356; 1 Fisher, 626; Neilson v. Harford (1841), 1 Web. 331; Minter v. Mower (1835), 1 Web. 138; 2 Abb. P. C. 178; Derosne v. Fairie (1885), 1 Web. 154; 2 Abb. P. C. 78. That though the Description states that the invention will do some trifling thing which it will not do, it is still sufficient, see Blanchard Gun Stock Turning Factory v. Warner (1848), 1 Blatch. 258. That the omission to state that a certain function is the leading feature of the invention is not fatal, see Burden v. Corning (1864), 2 Fisher, 477. That defects which those skilled in the art would remedy from their own knowledge are not fatal, see Whitney v. Mowry (1867), 3 Fisher, 157; 2 Bond, 45; Swift v. Whisen (1867), 3 Fisher, 343; 2 Bond, 115; Singer v. Walmsley (1860), 1 Fisher, 558. That the Description is sufficient if it corresponds in principle, though not in form, with the actual invention, see Weir v. North Chicago Rolling Mill Co. (1883), 23 O. G. 191; 9 Bissell, 508; 14 Fed. Rep. 42. and his readers that their specific description, or even an allusion to them, would be superfluous. The law recognizes these difficulties in the way of an absolutely complete Description, and overlooks the defects which they occasion. Though the Description is excessive it is still sufficient, unless the redundancy is fraudulent or renders the essential parts of the Description uncertain and obscure. Though it omits appliances, modifications, or processes which persons skilled in the art would know were necessary and would themselves supply; though it fails to describe implements and materials that are in common use, or methods of construction generally practised in the arts, it may still be complete enough to put before the already trained and informed intelligence of the reader an accurate and entire picture of the invention, from which he can understand it, construct it, and use it as easily as if all these familiar acts and objects were particularly described.1 § 491. 1 That the Description need not describe what is in common use, see Thompson v. Gildersleeve (1888), 43 O. G. 886; Burrall v. Jewett (1830), 2 Paige (N. Y.) 134; Kneass v. Schuyl kill Bank (1820), 4 Wash. 9; 1 Robb, 303. That modifications and appliances which would suggest themselves to ordinary mechanics need not be mentioned, see Union Paper Bag Co. v. Nixon (1873), 4 O. G. 31; 6 Fisher, 402; Wayne v. Holmes (1856), 2 Fisher, 20; 1 Bond, 27. That if a process can be performed by those skilled in the art by following the directions given in the Description, using their own knowledge of the art, it is sufficient, see Lawther v. Hamilton (1888), 42 O. G. 487. That well-known processes and devices need not be described, see Mulford v. Pearce (1875), 9 O. G. 204; 13 Blatch. 173. That it is not necessary to describe all the uses of the invention, see Pike v. Potter (1859), 3 Fisher, 55. That the Description need not men tion all that is necessary to secure the best effect if a good effect can be secured by what is described, see Sewall v. Jones (1875), 91 U. S. 171; 9 O. G. 47. That unless a good effect can be ob tained by using what is described, the patent is void, see Sewall v. Jones (1875), 91 U. S. 171; 9 O. G. 47. That if persons skilled in the art can practise the invention from the description given the omission of minor details is not important, see Burrall v. Jewett (1830), 2 Paige (N. Y.), 134. That the Description must show a new invention in fact, see Head v. Stevens (1838), 19 Wend. 411. That the Description must be so complete that one skilled in the art can practise the invention from it alone, see Webster Loom Co. v. Higgins (1879), 16 O. G. 675; 15 Blatch. 446; 4 Bann. & A. 88. That the Description need not mention all things that may be used if those which are named will answer the purpose, see Bickford v. Skewes (1841), 1 Web. 214; 2 Abb. P. C. 528. S492. The Description must be Intelligible: Intelligibility Defined. A description is intelligible when the language and the methods of statement which it employs convey to the mind of the reader the exact ideas embodied in the subject or the act described. A Description may be correct and complete and yet not be intelligible, either because of its undue brevity, or its excessive prolixity, or the strangeness of its words, or the confused arrangement of its sentences. Such a Description in a specification is not permissible.1 It must not only be correct in what it states, and state completely the entire invention, but its phraseology and the collocation of its sentences must make these statements clear and plain to those skilled artisans to whom it is addressed. The inventor may assume that they will understand the technical terms peculiar to their art, and that they will be able to follow such direc § 492. 1 That if the Description is unintelligible the patent is void, see Sawyer v. Miller (1882), 4 Woods, 472; 12 Fed. Rep. 725; Hovey v. Stevens (1846), 3 W. & M. 17; 2 Robb, 567; Hovey v. Stevens (1846), 1 W. & M. 290; 2 Robb, 479; Kneass v. Schuylkill Bank (1820), 4 Wash. 9; 1 Robb, 303; Newberry v. James (1817), 1 Carp. P. C. 368; 1 Abb. P. C. 282. That vagueness of language in the Description does not defeat the patent, if the real invention can be known by it, see Goodyear v. Railroad (1853), 1 Fisher, 626; 2 Wall. Jr. 356. 2 In Lowell v. Lewis (1817), 1 Mason, 182, Story, J.: (189) "A question nearly allied to the foregoing is whether (supposing the invention itself be truly and definitely described in the patent) the specification is in such full, clear, and exact terms, as not only to distinguish the same from all things before known, but 'to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same.' This is another re quisite of the statute (§ 3), and it is founded upon the best reasons. The law confers an exclusive patent-right on the inventor of anything new and useful, as an encouragement and reward for his ingenuity, and for the expense and labor attending the invention. But this monopoly is granted for a limited term only, at the expiration of which the invention becomes the property of the public. Unless, therefore, such a specification was made as would at all events enable other persons of competent skill to construct similar machines, the advantage to the public which the act contemplates would be entirely lost, and its principal object would be defeated. It is not necessary, however, that the specification should contain an explanation, level with the capacities of every person (which would, perhaps, be impossible); but, in the language of the act, it should be expressed in such full, clear, and exact terms, that a person skilled in the art or science of which it is a branch would be enabled to construct the patented invention." 1 Robb, 131 (137). tions as a master-workman would give to his subordinates; 3 but he must, in any event, bring the terms of his Description down to the level of their understanding, and in it give to 544, Leavitt, J.: (548) "The statute If 8 In Mowry v. Whitney (1871), 14 Wall. 620, Strong, J.: (644) "And it is evident that the definiteness of a specification must vary with the nature of its subject. Addressed as it is to those skilled in the art, it may leave something to their skill in applying the invention, but it should not mislead them. The objection here is that in describing the degree of heat to be applied after the wheels have been deposited in the heated chamber the patentee states it to be such that the temperature of all parts of the wheels may be raised to the same point, say a little below that at which fusion commences,' and the defendant insists that this amounts to a direction to raise the heat to a degree that must destroy the chill of the tread, and thus render the casting valueless as a railroad car-wheel. But it is obvious that only vague and uncertain directions could have been given respecting the extent That if the Description uses terms to which the heat is necessary to be intelligible to persons skilled in the art raised. It must differ with the differ- it is sufficient, see Loom Co. v. Higgins ence in the progress of cooling which (1881), 105 U. S. 580; 21 O. G. 2031 ; has taken place before the wheels are re- Anilin v. Higgin (1878), 15 Blatch. moved from the moulds. The process 290; 14 O. G. 414; 3 Bann. & A. 462; requires this removal before they have Monce v. Adams (1874), 12 Blatch. 1; become so much cooled as to produce 7 0. G. 177; 1 Bann. & A. 126; such inherent strain on any part as to Singer v. Walmsley (1860), 1 Fisher, impair its ultimate strength. Precisely 558. when such a strain begins cannot be known. Cooling commences the instant the casting is made, and with cooling commences contraction, and strain must soon follow. Plainly it is impossible to describe the point of time when the strain has proceeded so far as to impair the ultimate strength of any part of the wheel. That, in the nature of things, must be left to the judgment of the operator." 5 Fisher, 494 (503); 1 0. G. 492 (495). In Judson v. Moore (1860), 1 Fisher, That a Description is to be read as if the invention were present and the reader skilled in the art, see Loom Co. v. Higgins (1881), 105 U. S. 580; 21 O. G. 2031. That the Description, being addressed to persons skilled in the art, is to be modified as they would modify it, see Klein v. Russell (1873), 19 Wall. 433. That the ability of the inventor or his attorney to understand the Description is no proof of its intelligibility, see Ex parte Kerr (1884), 28 O. G. 95. |