If an amended application embodies anything new that was not in the original application, or materially differs or varies from the original application, it cannot be sustained and made to relate back to the latter. The law does not permit such an enlargement of the original specifications as will interfere with the right of inventors who have entered the field or filed applications in the meantime. McFarland t. Watson, (1909) 33 App. Cas. (D. C.) 445.

Where amendments are made to an application before another party has entered the field, the rule prohibiting the insertion of new matter by amendment will not be applied as strictly as where it is sought to enlarge the scope of an application to the přejudice of inventors whose rights have accrued between the date of filing and the date of amendment. Young . Struble, (1910) 35 App. Cas. (D. C. 410.

III. CLAIMS

1. Object

The of a claim in a patent is to purpose notify the public of the extent of the monopoly secured to the inventor, and while it is notice of his exclusive privileges, it is no less an estoppel of the patentee to claim under that patent any combination or improvement he has not therein pointed out and distinctly claimed as his discovery or invention. Buffington's Iron Bldg. Co. v. Eustes (C. C. A. 8th Cir. 1895) 65 Fed. 804, 27 U. S. App. 693, 13 C. C. A. 143. The object or purpose of a claim is to secure to the inventor all of that to which he is entitled and also to inform the public of what is still open to them. Brooks v. Fiske, (1853) 15 How. 212, 14 U. S. (L. ed.) 665; Evans v. Eaton, (1822) 7 Wheat. 356, 5 U. S. (L. ed.) 472; Grant r. Walter, (1893) 148 U. S. 547, 13 S. Ct. 699, 37 U. S. (L. ed.) 552; McClain r. Ortmayer, (1891) 141 U. S. 419, 14 S. Ct. 76, 35 U. S. (L. ed.) 800; Keystone Bridge Co. v. Phoenix Iron Co., (1877) 95 U. S. 274, 24 U. S. (L. ed.) 344; Merrill t. Yeomans, (1877) 94 U. S. 568, 24 U. S. (L. ed.) 235.

The

In American Roll Gold Leaf Co. v. W. H. Coe Mfg. Co., (C. C. A. 1st Cir. 1914) 212 Fed. 720, 129 C. C. A. 330, the court said: The protection afforded by the patent is specified in the claims. public have a right to rely upon the language of the claims in determining how far the patentee's rights go. A patent, like any other grant, is a two-sided instrument, and the intent of the grantor (the public) as to what was covered is as The important as that of the grantee. object of the patent law in requiring the patentee to particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery' is not only to secure to him all to which he is entitled, but to apprise the public of what is still open to

In general. In interpreting the claims of a patent, proper regard should be had to the natural import of the terms in question, the context, and the specification. Lewis Blind Stitch Mach. Co. v. Premium Mfg. Co., (C. C. A. 8th Cir. 1908) 163 Fed. 950, 90 C. C. A. 310.

Patent claims must be read and interpreted with reference to claims which have been rejected and to the prior state of the art and cannot be construed to cover either what was canceled by the patentee or disclosed by prior devices or publications, nor will an interpretation be allowed which will include what was expressly abandoned or disavowed as a condition of the grant. Hoskins Mfg. Co. v. General Electric Co., Claims (N. D. Ill. 1914) 212 Fed. 422. should be given, always, if possible, a scope that is commensurate with the real invention. The object of the patent law is to protect the inventor, not in some paper deal, but in his actual contribution to the useful arts. Asbestos Shingle, etc., Co. v. Rock Fibre Mfg. Co., (N. D. Ill. 1914) 217 Fed. 66.

General language used in the claims of a patent relating to a limited field is merely general as to this limited field, and should not be held to render the claims indefinite because as a matter of literary composition the same language might be applied to some other field, if the public would not thereby be deceived. Hohmann, etc., Mfg. Co. v. Charles J. Tagliabue Mfg. Co., (E. D. N. Y. 1909) 175 Fed. 87.

In case of doubt, a claim should be given the evident meaning intended by Viele v. Cumthe party first making it. mings, (1908) 30 App. Cas. (D. C.) 455.

Explicit claim. When a claim read in its common ordinary meaning is explicit and clear and there is no apparent uncertainty, there is no room for construction. Rich v. Close, (1870) 4 Fish. Pat. Cas. 279, 20 Fed. Cas. No. 11,757; U. S. Glass Co. v. Atlas Glass Co., (W. D. Pa. 1898) 88 Fed. 493; Computing Scale Co. v. Keystone Store-Service Co., (W. D. Pa. 1898) 88 Fed. 788. See also Dey Time Register Co. r. Syracuse Time-Recorder Co., (C. C. A. 2d Cir. 1908) 161 Fed. 111, 88 C. C. A. 275, affirming (N. D. N. Y. 1907) 152 Fed. 440. When a claim is explicit it cannot be altered or enlarged by reference to the specification or otherwise, and whatever is described in the specification and not claimed is dedicated to the public. Odds v. Brown, (S. D. Ohio 1890) 41 Fed. 698.

Broad construction. Unless a patentee to a has specifically limited himself specific form of construction, or limitation is imposed by the state of the

such

prior art, or such limitation was imposed by the action of the patent office in rejecting a broad claim and the substitution and acceptance of a narrower claim by the applicant, he is entitled to a broad construction of his claims in accordance with the language thereof. Ryder v. Lacey, (N. D. N. Y. 1912) 200 Fed. 966; Hall Mammoth Incubator Co. v. Teabout, (N. D. N. Y. 1913) 205 Fed. 906. Elements in claims should be read with reference both to the structure and the function given in the description of the invention. Dictionary definitions should not be applied to words in claims if the patentee in and by his drawings and descriptions of parts and functions has clearly supplied his own dictionary. Louden Machinery Co. v. Strickler, (C. C. A. 7th Cir. 1912) 195 Fed. 751, 115 C. C. A. 551. The reasonable presumption is that an inventor intends to protect his invention broadly; and the scope of a claim should not be restricted beyond the fair and ordinary meaning of the words, save for the purpose of saving it. Miel v. Young,

(1907) 29 App. Cas. (D. C.) 481.

Limiting claim.- Only when necessary to make the claims operative, or in case of ambiguity apparent on the face of the claims, or induced by their study in connection with the specification and prior art, is a court permitted to read in an element not expressly named therein, in order to narrow a claim, so as to make valid one otherwise invalid. Crown Cork, etc., Co. r. Sterling Cork, etc., Co., (C. C. A. 6th Cir. 1914) 217 Fed. 381, 133 C. C. A. 297.

It is a general rule that an element may not be read into a claim for the purpose of narrowing it and thus making it valid as against an objection that it is too broad in view of the prior art. tional Cash Register Co. r. Gratigny, (C. C. A. 6th Cir. 1914) 213 Fed. 463, 130 C. C. A. 109.

Na

It is a general principle that where, pending allowance of a patent, an applicant is forced to narrow his claims, he will not be permitted to put after construction on them which would make them include what he had been forced to

avoid by narrowing. But that principle would have no application where the patentee came out of the patent office with broader claims than those originally made, or where the several amendments and the withdrawal and substitution of claims resulted in an elimination of extrinsic matter, in pointing out the essential features of the disclosure and in the grant of claims embodying that essential feature and eliminating from the claims such extrinsic, nonessential features. In such a case the claims granted should receive the construction their language naturally imports (Dodge Needle Co. r. Jones, (E. D. Pa. 1907) 153 Fed. 186,

and (C. C. A. 3d Cir. 1908) 159 Fed. 715, 86 C. C. A. 191) and no statement or action of the patentee in his patent can estop him from claiming to the full extent what his claims on their face purport. Hess-Bright Mfg. Co. v. Fichtel, (C. C. A. 3d Cir. 1914) 219 Fed. 723, 135 C. C. A. 421.

Limitation in one claim omitted from others. Where a limitation expressly stated in some of the claims of a patent is omitted from others, it cannot be read into them to avoid a charge of infringement. Diamond Match Co. v. Ruby Match Co., (C. C. N. J. 1904) 127 Fed. 341.

Construed with application. A claim first made by one of the parties to an interference and only presented by the other party on the suggestion of the patent office for the purpose of interference must be given the meaning intended by the party with whom it originated, and read in the light of his application. Weintraub v. Hewitt, (1910) 34 App. Cas. (D. C.) 487.

Construed with specifications and description. The claims of a patent are to be construed in the light of the specifications, but this does not mean that when one form of construction is set forth in the specifications, and there are other forms equally good, and the language of the claim is broad and comprehensive enough to include either of these forms of construction, that the claim is limited to the form shown. Fountain Electrical Flour Box Corp. v. Trustees Masonic Hall, etc., Fund, (S. D. N. Y. 1913) 210 Fed.

169.

While a claim may not be enlarged by the language used in the specifications it may be illustrated thereby and the specifications and drawings may be resorted to for the purpose of better understanding the meaning of the claim. Diamond Patent Co. r. S. E. Carr Co., (C. C. A. 9th Cir. 1914) 217 Fed. 400, 133 C. C. A. 310.

The claim of the issue of an interference is to be interpreted in the light of the specifications of the party first making it. Viele . Cummings (1908) 30 App. Cas. (D. C.) 455.

The specification of a patent which forms a part of the same application as its claims must be construed with the latter for the purpose of ascertaining the true meaning of the claims and the intent of the parties when they were made and allowed. O. H. Jewell Filter Co. r. Jackson, (C. C. A. 8th Cir. 1905) 140 Fed. 340, 72 C. C. A. 304.

In sustaining a claim in a patent the description should always be consulted and it should be construed in the light of the description. Pacific Cable R. Co. r. Butte City St. R. Co., (C. C. Mont. 1893) 58 Fed. 420; New American File Co. t. Nich olson File Co., (C. C. R. I. 1887) 31 Fel

289; Lull. Clark, (N. D. N. Y. 1882) 13 Fed. 456.

"A claim which shows by its terms that it is intended to be restricted to the exact improvement claimed as the invention will not be held invalid because, standing alone, it would not describe a complete and operative machine." The specifications including the drawings will be considered "to ascertain the old, known, or unclaimed elements or features, which are to be combined in operation with the improvement described in the claim; and if the specifications and claim read together describe an operative machine which will include the invention described in the claim, then the patent will not be held to be void for uncertainty and vagueness of description." Schroeder v. Brammer, (S.

D. Ia. 1900) 98 Fed. 880.

The claim should not be construed without reference to the description of the invention and the method and process of putting it into operative form which the specification contains. American Sulphite Pulp Co. v. Howland Falls Pulp Co., (C. C. A. 1st Cir. 1897) 80 Fed. 395, 50 U. S. App. 52, 25 C. C. A. 500.

In Van Ness v. Layne, (C. C. A. 5th Cir. 1914) 213 Fed. 804, 130 C. C. A. 462, the court held that the breadth of the language of the claim would be limited to the disclosure of the patent, if necessary to sustain the patent. See further to the same effect, Horton Mfg. Co. v. White Lily Mfg. Co.. (C. C. A. 7th Cir. 1913) 213 Fed. 471. 130 C. C. A. 117, wherein the court held that the scope of a patent must be ascertained from the entire instrument. Though a claim may be illustrated it cannot be enlarged by the language of the specification.

Ambiguous claims.- Where the meaning of the language used in the claims of a patent is doubtful. or is susceptible of two different constructions, the specification and drawings may properly be referred to for the purpose of ascertaining the true construction of the claims. Robins Conveying Belt Co. v. American Road Mach. Co., (C. C. A. 3d Cir. 1906) 145 Fed. 923, 76 C. C. A. 461, affirming (E. D. Pa. 1905) 142 Fed. 221.

Construction of series of claims.Where there is a series of claims for the same patent, the rule of construction is that each claim be differentiated. The difficulty often found in doing so, caused by repetition and confusion, does not affect the propriety of the rule in a normal case where it can be applied. Scaife, etc., Co. v. Falls City Woolen Mills, (C. C. A. 6th Cir. 1913) 209 Fed. 210, 126 C. C. A. 304.

Construction of claim for combination. "In patents for combinations of mechanism, limitations and provisos imposed by the inventor, especially such as were introduced into an application after it had

been persistently rejected, must be strictly construed against the inventor and in favor of the public and looked upon as in the nature of disclaimers." Sargent v. Hall Safe, etc., Co., (1884) 114 U. S. 63, 5 S. Ct. 1021, 29 U. S. (L. ed.) 67. The words substantially as specified," at the end of a claim for a combination, refer to the whole claim, and import nothing into it not already there, either to narrow it so as to escape anticipation, or to broaden it so as to establish infringement. American Can Co. v. Hickmott Asparagus Canning Co.. (C. C. A. 9th Cir. 1905) 142 Fed. 141, 73 C. C. A. 359. Construction of claims for improvements. - In construing improvement claims of a patent, consideration should be given to the character of the improvements introduced by the patentee and the change in the art attributable to them. When they result in converting imperfections into completeness, and in producing the first practically and commercially successful machine, however simple the change appears, the invention is entitled to liberal treatment by the courts. Wagner Typewriter Co. . Wyckoff, (C. C. A. 2d Cir. 1907) 151 Fed. 585, 81 C. C. A. 129, modifying (S. D. N. Y. 1905) 138 Fed. 108. An invention which cannot claim to be anything more than improvements on the original invention is not entitled to the same broad construction as that upon which the improvement is founded. Lauter, etc., Co. v. Hildreth, (C. C. A. 4th Cir. 1914) 219 Fed. 753, 135 C. C. A. 451.

Where it appears that the patentee had made an improvement for which he was entitled to protection and which in the claim is described in terms capable of a broad construction rendering the claim invalid in view of the prior art, or of a narrower construction which will preserve its validity, the courts will give it that narrow construction and sustain the patent. But where from the specification it is clear that the patentee intended to claim and the patent office intended to grant the broader monopoly, which turns out to be invalid, the courts will not read into it a limitation, for the arbitrary purpose of saving the claim. Scaife, etc., Co. r. Falls City Woolen Mills, (C. C. A. 6th Cir. 1913) 209 Fed. 210, 126 C. C. A. 304. The invention claimed being only for improvements in well-known processes and in no sense one of a pioneer character, the patentee must be held to a strict construction of his claims. Wright v. Yuengling, (1894) 155 U. S. 47, 15 S. Ct. 1, 39 U. S. (L. ed.) 64; Westinghouse v. Boyden Power-Brake Co., (1898) 170 U. S. 537, 18 S. Ct. 707, 42 U. S. (L. ed.) 1136; De Lamar t. De Lamar Min. Co., (C. C. A. 9th Cir. 1902) 117 Fed. 240, 54 C. C. A. 272, affirming (C. C. Idaho 1901) 110 Fed. 538.

its principle, and claimed it in that form which perfectly embodies it, is in contemplation of law deemed to claim every form in which his invention may be copied, unless they are disclaimed. Albright . Langfeld, (E. D. Pa. 1904) 131 Fed. 473. Where an inventor has placed his invention before the public in a form best fitted for practical use, and disclosed his conception of his invention, both in his description and in his claim, so as to accurately express his idea, he is entitled to the exclusive privilege of all other forms that can be embraced in the one claim, unless such other forms are disclaimed. Oehrle v. William H. Horstmann Co.. (E. D. Pa. 1904) 131 Fed. 487.

Statutory classes. An invention cannot be claimed for other than one of the statutory classes, and it must be claimed as being an invention of the particular class to which it belongs. Piper r. Brown, (1870) Holmes 20, 19 Fed. Cas. No. 11,180; Burr v. Duryee, (1864) 1 Wall. 531, 17 U. S. (L. ed.) 650; Grant . Walter, (1893) 148 U. S. 547, 13 S. Ct. 699, 37 U. S. (L. ed.) 552; Hatch r. Moffit, (C. C. Mass. 1883) 15 Fed. 252; Ex p. Bates, (1879) 16 Pat. Off. Gaz. 266; Ex p. Mayall, (1873) 4 Pat. Off. Gaz. 210.

Agreement of claim and description. Nothing can be properly claimed which is not described. and that which is claimed must correspond with that which is described. Corning . Burden, (1853) 15 How. 252, 14 U. S. (L. ed.) 683: Merrill v. Yeomans, (1877) 94 U. S. 568, 24 U. S. (L. ed.) 235; Smith r. Murray, (N. D. III. 1886) 27 Fed. 69; Phoenix Caster Co. v. Spiegel, (C. C. Ind. 1886) 26 Fed. 272; McKesson v. Carnrick, (S. D. N. Y. 1881) 9 Fed. 44: Knox v. Quicksilver Min. Co., (C. C. Cal. 1880) 4 Fed. 809; Page r. Ferry, (1857) 1 Fish. Pat. Cas. 298, 18 Fed. Cas. No. 10.662; Kelleher. Darling, (1878) 4 Cliff. 424, 14 Fed. Cas. No. 7,653; Needham r. Washburn. (1874) 4 Cliff. 254, 17 Fed. Cas. No. 10,082.

A patentee cannot read the specification into a claim for the purpose of changing it, or to escape anticipation or establish infringement, and much less can be read into it a feature not shown in either the specification or drawings. H. Mueller Mfg. Co. r. Glauber, (C. C. A. 7th Cir. 1910) 184 Fed. 609, 106 C. C. A. 613..

Claim broader than description.-A broad claim in a patent cannot be based on a description in the specification that is specifically limited to a single device and does not present it as an example or a preferred structure. Excelsior Drum Works . Sheip, (E. D. Pa. 1909) 173 Fed. 312.

Claims too broad.--A patent cannot cover generally any and every means or method for producing a given result.

American Steel, etc., Co. r. Denning Wire, etc., Co., (N. D. Ia. 1908) 160 Fed. 108. Where, in a press for making screw insulators, an essential element, to differentiate the prior art, is a rotary table or its equivalent to support the moulds and carry them in a fixed and predetermined path to and from other parts of the machine, by which the process involved is carried out, the specification of a movable mould adapted to travel," although under some circumstances competent to imply a structural arrangement by which the mould is moved back and forth mechanically, in a predetermined way, between designated points, the specific means employed for doing so in the patent in suit being of the essence of the invention, a claim in which it is not made an element of the combination is invalid, as being too broad; or if, disregarding this,' the omitted element is read into the claim as being implied, it will also be bad where, as here, it thereby duplicates another claim. Novelty Glass Mfg. Co. v. Brookfield, (C. C. A. 3d Cir. 1909) 170 Fed. 946, 95 C. C. A. 516, affirming (C. C. N. J. 1908) 170 Fed. 830.

A claim is too broad when it is for a result by whatever means obtained or for a process to whatever substance applied. Bailey Washing, etc., Mach. Co. v. Lincoln, (1871) 4 Fish. Pat. Cas. 379, 2 Fed. Cas. No. 750.

Void in part.-A patent is not rendered void where the patentee has claimed more than he is entitled to without fraud, but it may be valid in part and void in part. Goodyear v. Providence Rubber Co., (1864) 2 Cliff. 351, 10 Fed. Cas. No. 5,583; Peterson t. Wooden, (1843) 3 McLean 248, 19 Fed. Cas. No. 11,038.

Less claimed than described. A claim, however, may be narrower than the description, and where less is claimed than described that which is described and not claimed will be deemed abandoned. Russell, etc., Mfg. Co. r. Mallory, (1872) 10 Blatchf. 140, 21 Fed. Cas. No. 12,166; Waterbury Brass Co. v. Miller, (1871) 9 Blatchf. 77, 29 Fed. Cas. No. 17,254; Winans t. Denmead, (1853) 15 How. 330, 14 U. S. (L. ed.) 717; Deering v. Winona Harvester Works, (1894) 155 U. S. 286, 15 S. Ct. 118, 39 U. S. (L. ed.) 153; McClain r. Ortmayer, (1891) 141 U. S. 419, 12 S. Ct. 76, 35 U. S. (L. ed.) 800; Parker, etc., Co. v. Yale Clock Co., (1887) 123 U. S. 87, 8 S. Ct. 38, 31 U. S. (L. ed) 100: Miller v. Bridgeport Brass Co., (1882) 104 U. S. 350, 26 U. S. (L. ed.) 783; Keystone Bridge Co. v. Phoenix Iron Co., (1877) 95 U. S. 274, 24 U. S. (L. ed.) 344.

Intention to claim.-Whatever the inventor does clearly point out as his invention, and whatever the application does clearly show that the inventor intends to claim as his, should, it seems,