PART II. PROCEEDINGS TO OBTAIN, RENEW, OR EXTEND A PATENT. CHAPTER I. THE SPECIFICATION. § 120. HAVING ascertained the kinds of subjects for which letters-patent may be obtained, and the parties entitled to take, renew, or extend them, we have now to state the proceedings requisite to the issuing, renewal, and extension of patents, and the principles which govern their construction. As the first step to be taken, in making application for a patent, is to prepare a written description of the invention or discovery, the requisites of this instrument, called the specification, and the rules for its construction, will first engage our attention. § 121. The Act of Congress, of July 4th, 1836, c. 357, § 6, contains the following enactment. "But before any inventor shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the manner and process of making, constructing, using and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of any machine, he shall fully explain the princi ple and the several modes in which he has contemplated the application of that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery. He shall, furthermore, accompany the whole with a drawing or drawings, and written references, where the nature of the case admits of drawing, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office; and he shall, moreover, furnish a model of his invention, in all cases which admit of a representation by model, of a convenient size to exhibit advantageously its several parts." 1 1 The Act of 1793, c. 55, § 3, sets forth the requisites of a specification, as follows: "And be it further enacted, that every inventor, before he can receive a patent, shall swear or affirm, that he does verily believe, that he is the true inventor or discoverer of the art, machine, or improvement, for which he solicits a patent; which oath or affirmation may be made before any person authorized to administer oaths, and shall deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear and exact terms, as to distinguish the same from all other things before known, and 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. And in the case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the application of that principle or character, by which it may be distinguished from other inventions; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings, or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is of a composition of matter; which description, signed by himself and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence, in all courts, where any matter or thing, touching such patent-right, shall come in question. And such inventor shall, moreover, deliver a model of his machine, provided, the secretary shall deem such model to be necessary." § 122. The specification, under our law, occupies a relation to the patent somewhat different from the rule in England. In England, the specification does not form part of the patent, so as to control its construction; but the rights of the inventor are made to depend on the description of his invention, inserted in the title of the patent, and cannot be helped by the specification, the object of which is to describe the mode of constructing, using, or compounding the invention mentioned in the patent. But in the United States, the specification is drawn up and filed before the patent is granted, and is referred to in the patent itself, a copy being annexed. It is, therefore, the settled rule in this country, that the patent and the specification are to be construed together, in order to ascertain the subject-matter of the invention, and that the specification may control the generality of the - terms of the patent, of which it forms a part.2 In like manner, drawings annexed to a specification, in compliance with the statute, are held to form a part of it, and are to be regarded in the construction of the whole instrument.3 1 Phillips on Patents, p. 223; Godson on Patents, p. 108, 117; Hogg v. Emerson, 6 Howard, 437, 479. 2 Whittemore v. Cutter, 1 Gallis. 429, 437; Barrett v. Hall, 1 Mas. 447, 477; Pitts v. Whitman, 2 Story's R. 609, 621. So, too, the specification may enlarge the recitals of the invention in the letters. Hogg v. Emerson, ut supra. 3 Earle v. Sawyer, 4 Mas. 9. It seems, too, that drawings not referred to in the specification may be used to explain it. Washburn v. Gould, 3 Story's R. 122, 133; Brooks v. Bicknell, 3 McLean's R. 250, 261. But they must be drawings accompanying the specification, otherwise they do. not form a part of it. In Hogg v. Emerson, 11 Howard, 587, 606, where the patent had been burned in the fire at the Patent Office, and afterwards recorded anew and the drawings restored, and the drawings exhibited a feature not described in the specification, it was held that the drawings were to be looked to in connection with the specification. Mr. Justice Woodbury, delivering the opinion of the Court, said: "The next point before decided was, that the description was sufficiently clear and certain. Under the instructions of the Court, the jury found that it was clear enough to be understood by ordinary mechanics, and that machines and wheels - |