in producing the intended effect will be considered as claimed, if it be not designated as old. If the part in common use be even an elementary principle or a single combination, and effect a new end, it becomes a part of the substance of the invention, and must be protested against as not being claimed. If the invention consist of a new set of combinations, added to a manufacture composed of combinations, then, though the effect produced be different throughout, the specification should only describe the new combinations which have been invented, and how they are to be added to the old ones. If the combination consist of the subjects of several patents which have expired, or of some new ones that have been bought, it would appear from the reasoning of Ellenborough, C. J., that a description of the method by which they were combined, with a reference to the several specifications, would be all that is required to sustain the patent.1 Pursuing the same order, in giving rules for making specifications, as was followed in the former chapter, when the different subjects of patents were examined, the necessary description of the fifth kind of new manufactures, principles, or methods carried into practice by tangible means, must now be investigated. It was shown in the last chapter, that a principle could not be the object of a patent. The impossibility of giving a description of it, in every instance in which it might be used, was urged as a strong argument against its being allowed to be monopolized. Reasons have also been assigned why a method, merely as such, is not a proper subject for a patent. If a method can be the subject of a patent, the description of it must, indeed, be very accurate. It must be so clear and evident that no experiments must be necessary to learn it, and to put it in practice as beneficially as the patentee enjoys it. If neither a principle nor a method can be the subject of a patent within the meaning of the statute of James; if, when a patent is obtained for a method, it is, in fact, granted for tangible means of carrying that method into practice; 2 it is quite evident that the specification of a method is governed by the same rules as if the description was to be given of some one kind of the above-mentioned manufactures, whether the real subject of the patent be a machine, improvement, or combination, and, therefore, that any further comment would be superfluous. When a chemical discovery is the foundation of the invention for which the patent has been granted, inasmuch as the substance or thing produced, and not the principle, process, or method, is the legal subject of the patent, it ought to be described. The ingredients, their proportions, the time of 1 Harmar v. Playne, 11 East, 107; Godson on Pat. 159. 2 Godson on Pat. 73. mixing, &c., ought to be fully stated, and then the beneficial use to which the substance can be applied.1 A manufacture, when first introduced into England, whether it be a substance or machine, an improvement of something already known here, or a combination of native discoveries, still it must be fully and correctly explained. Its specification is regulated by the same laws, and is subject to the same critical examination, as if it were an English invention. Thus it appears that every part which is new, however minute, must be clearly described. In the specification of a substance, the simplest elements of which it can be formed, and the best modes of making and using it, must be accurately stated. In descriptions of machines, there must, with scrupulous fidelity, be set forth the cheapest materials, the most exact proportions of the parts, the most expeditious and the best mode of conducting them, with the precise times of putting on or taking off any part of the machine; and an improvement or new combination must be kept distinctly apart from the old manufacture. The public must be put in possession of the manufacture, in a way as ample and beneficial as the patentee enjoys it. It has been shown that it is a technical, but unjust rule of law, that, if the inventor claims any thing in the title to his patent, or in the specification, which is not new, or has been before used, then the whole patent becomes void. It has also been contended, that every part should be useful as well as new; but that was overruled by the judges, in the case of Lewis v. Marling.2 In the first section of 5 & 6 Will. IV. c. 83, the law has been altered in the following words: — "Any person who, as grantee, assignee, or otherwise, hath obtained, or who shall hereafter obtain letters-patent, for the sole making, exercising, vending, or using of any invention, may, if he think fit, enter with the clerk of the patents of England, Scotland, or Ireland, respectively, as the case may be, (having first obtained the leave of his Majesty's attorney-general or solicitor-general in case of an English patent, of the lord-advocate or solicitor-general of Scotland in the case of a Scotch patent, or of his Majesty's attorney-general or solicitor-general for Ireland in the case of an Irish patent, certified by his fiat and signature,) a disclaimer of any part of either the title of the invention or of the specification, stating the reason for such disclaimer, or may, with such leave as aforesaid, enter a memorandum of any alteration in the said title or specification, not being such disclaimer or such alteration, 1 Turner v. Winter, 1 T. R. 602. The specification to this patent is what a scientific man, unacquainted with legal strictness, would naturally have made. It contains almost every fault generally found in the descriptions of this class of manufactures. It is, therefore, given fully in the different parts of the text. 2 10 B. & C. 22. as shall extend the exclusive right granted by the said letters-patent; and such disclaimer or memorandum of alteration, being filed by the said clerk of the patents, and enrolled with the specification, shall be deemed and taken to be part of such letters-patent, or such specification, in all courts whatever; provided always, that any person may enter a caveat, in like manner as caveats are now used to be entered,1 against such disclaimer or alteration; which caveat, being so entered, shall give the party entering the same a right to have notice of the application being heard by the attorney-general or solicitor-general, or lord-advocate, respectively; provided also, that no such disclaimer or alteration shall be receivable in evidence, in any action or suit (save and except in any proceeding by scire facias) pending at the time when such disclaimer or alteration was enrolled, but, in every such action or suit, the original title and specification alone shall be given in evidence, and deemed and taken to be the title and specification of the invention for which the letters-patent have been or shall have been granted; provided also, that it shall be lawful for the attorney-general or solicitor-general, or lord-advocate, before granting such fiat, to require the party applying for the same to advertise his disclaimer or alteration, in such manner as to such attorneygeneral or solicitor-general, or lord-advocate, shall seem right; and shall, if he so require such advertisement, certify in his fiat that the same has been duly made." The entry of a disclaimer of part of a specification, under the 5 & 6 Will. IV. c. 83, § 1, does not give a right of action for infringements committed previously to the disclaimer.2 1 See Godson on Pat. ch. v. as to the method of entering caveats. CHAPTER II. PROCEEDINGS AT THE PATENT OFFICE. I. Caveat for Incomplete Invention. II. The Petition, Oath, Payment of Fees. III. Signatures of the Secretary of State and Commissioner. V. Renewal and Amendment of Patents. CAVEAT FOR INCOMPLETE INVENTION. § 170. The twelfth section of the Act of July 4, 1836, provides that any citizen of the United States, or alien, who shall have been resident in the United States one year next preceding, and who shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to mature the same, may, on payment of the sum of twenty dollars, file in the Patent-Office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right, till he shall have matured his invention; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein mentioned, shall be considered a part of the sum required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such a caveat, for a patent of any invention with which it may in any respect interfere, it shall be the duty of the commissioner to deposit the description, specifications, drawings, and model, in the confidential archives of the office, and to give notice, by mail, to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his caveat, file his description, specifications, drawings, and model; and if, in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are provided in the case of interfering applications. THE PETITION, OATH, PAYMENT OF FEES, ETC. § 171. The Act of 1836, § 6, requires an inventor who desires to obtain a patent, to "make application in writing to the Commissioners of Patents," &c. This application in writing has, from the origin of the government, been by way of petition, generally with the specification annexed and referred to, or accompanied by the specification, filed at the same time. The form of the petition is not material, provided it set forth the facts to which the applicant is required to make oath. When filed, it is to be presumed to adopt the specification, or schedule, filed at the same time, and to ask for a patent for the invention therein described.1 § 172. The applicant is also required to make oath or affirmation, that he does verily believe that he is "the original and first inventor," &c., " and that he does not know or believe that the same was ever before known or used," and also of what country he is a citizen; which oath or affirmation may be made before any person authorized by law to administer oaths.2 1 Hogg v. Emerson, 6 Howard, 437, 480. The rules of the Patent-Office give a form of petition which it is advisable to adopt, in all cases. See Appendix. the title or description of the 2 Act of July 4, 1836, § 6. The oath extends to all described in the schedule filed with the petition, as well as to invention contained in the petition itself. 437, 482. Hogg v. Emerson, .6 Howard, |