Patent specification

“ The reader will, of course, remember that the Patent Act authorizes the issue of a patent only when a person has invented or discovered some 'new manufacture, or some new and useful improvement thereof, not known or used by others;' and also that while authorizing in certain cases the reissue with an amended specification of an original patent, where the specification has been defective, the act contemplates that the reissued patent shall secure no other than 'the same invention' meant to have been secured by the original. ”

“ Enough has already been remarked to show that all the principal claims of the original patent recognize the chamber or tunnel and its appendages as one of the primary ingredients of the patented invention, and it is absolulely certain that the specification of that patent contains neither suggestion, indication, nor intimation that the original patentee made any other invention to accomplish the described functions than the one which includes the whole four described ingredients. ”

“ I have some of those filters. The manufacturer of these things, who had no Patent, came to me to consult me upon the subject. I at once saw how the case stood, having regard to the specification of the Liverpool patentee, that he (the latter) had taken out a Patent for that which another man had before done, so exactly that the words of the specification and the drawings fitted the first man’s invention, which was without a Patent, therefore his Patent would have been null and void. ”

“ With the exception of the first broad claim of the 1881 patent, each of the other claims include the spring device with the limiting and qualifying words, 'substantially as described,' and, by virtue of its reference to the specification, the lifting element of the spring device is shown to be the same in each patent. There is nothing in either patent, or the specification or claims thereof, to indicate that there is any greater or stronger lifting action in the one than in the other. ”

“ Our decisions in Morse, Incandescent Lamp, and Holland Furniture reinforce the simple statutory command. If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims. The more one claims, the more one must enable. ”

“ Since the act of 1836, the patent laws require that an applicant for a patent shall not only, by a specification in writing, fully explain his invention, but that he 'shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery.' This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions, and a comparison thereof with that claimed by him. ”

“ The attributes of novelty and utility being possessed in due degree by an invention, it remains to put in motion the machinery for its protection. The Patents Act 1907, re-enacting former provisions, requires an application to be made in a prescribed form (the forms and stamps are on sale at all postal money order offices in the United Kingdom) , and left at or sent by post to the patent office in the prescribed manner. The application must contain a declaration that the applicant is the true and first inventor, and it must be accompanied by either a provisional or complete specification. ”

“ If an alien neglects to put and continue on sale the invention in the United States, to the public, on reasonable terms, for eighteen months, the patentee Uses all benefit of the patent.
Sec. 6. Joint inventors are entitled to a joint patent, but neither can claim one separately.
Sec. 7. An invention can assign his right before a patent is obtained, so as to enable the assignee to take out a patent in his own name; but the assignment must be first entered on record; and the application therefor must be duly made, and the specification signed, and sworn to by the inventor. ”

“ The object of the provisional specification is to secure immediate protection, and to enable a patentee to work at and improve his invention without the risk of his patent being invalidated by premature publication. He is therefore entitled to embody in his complete specification any improved method of working his invention which he may discover in the interval; and he is indeed bound to do so, since, as we have said, the price that a man who desires a patent has to pay to the public for the privilege is that he should make a full disclosure of his invention in his complete specification. ”

“ The patents under consideration expressly declare, for the most part, what the patentee claims; generally referring, it is true, to the specification as embodying the substantial form of the invention. Such a reference is proper if it does not introduce confusion and uncertainty, and is often necessary for restraining the too great generality, or enlarging the literal narrowness of the claim.
These remarks apply to reissue 1038, which we are now considering. We regard it as sufficiently explicit; and we think the patent is valid. ”

“ The devices used for effecting this purpose, both automatically and by hand, are described in the specification, but they are claimed in separate patents, and only affect the one in question as they modify and affect the general structure of the machine. ”

“ Next follows exhibit 4, which is a second patent granted to the same patentee for a small horizontal hand-drill, with one motion or speed. By the specification it appears that it is fed automatically by certain described devices, which are so entirely unlike those employed in the reissued patent, both in their combination and mode of operation, that it is not deemed necessary to waste words in their description, as it is clear that the invention, if any, secured by the patent, is in every material respect different from the patent in suit. ”

“ A foreign patent in order to invalidate an American patent must antedate the invention patented. A foreign patent exists as a patent only as of the date when the invention was published. In England an invention is not patented within the meaning of the act of Congress until the enrollment of the complete specification. ”

“ We are clearly of opinion that the reissued patent is void.
It is evident on a cursory reading of the specification and claim of the original patent that it was meant to cover a combination of the several contrivances therein described, and not to cover the several elements of the combination as distinct inventions. No claim is made for the several parts of which the furnace is constructed, but for the 'arrangement embracing, for united use in the manner and for the purposes specified, the following features,' &c. ”

“ In 1718 he obtained a patent (No. 422) for 'a new invention of three sorts of engines never before made or used in Great Britaine, one to winde the finest raw silk, another to spin, and the other to twist the finest Italian raw silk into organzine in great perfection, which was never before done in this country.' A specification of the patent was duly enrolled, in conformity with the conditions of the letters patent, in the petty bag office, but the roll was lost, and was only discovered in 1867, when the specification was printed by the commissioners of patents for the first time. ”

“ When thep. 24 specification and drawing disclose (as most of them do) several subjects matter of invention, though claiming only one, which of those several subjects matter shall control the classification?
The most natural procedure, at first thought, would be to classify on the totality of the showing, in which case the application for the nail-machine, supposed above, would be assigned to nail-making. But imagine the invention claimed by an applicant to be the counter. Then the examiner in charge of nail-making would have to search the class of registers with which he is not familiar. ”

“ Where in pursuance of any such application as is referred to in sub-section (1) a patent is granted, the rights of the patentee shall be subject to such conditions as the Controller thinks fit to impose for the protection or compensation of persons who may have begun to avail themselves of, or have taken definite steps by contract or otherwise to avail themselves of, the patented invention before the date of advertisement of the acceptance of the complete specification. ”

“ In order to meet the situation respecting the classification of those patents that indiscriminately claim an article of manufacture defined only by the material of which it is made and those patents that claim those materials, leaving to the specification information regarding the designed uses, patents for articles defined only by their ingredients specifically set forth may be placed in the composition of matter or material class. ”

“ Now, after a patent has been declared to be valid, the specification without defect, and the claim for nothing more than the invention, after it has undergone examination for many years, and courts and juries have decided that the patent is not invalid, through inadvertency, accident, or mistake, the assignees come forward and make oath, that the inventor's original patent is 'unavailable' for some purpose unnecessary to be divulged. ”

“ Patents may also be granted for a machine or for a separate and distinct device, but it cannot be held that such a patent is valid unless it be proved that the patentee is the original and first inventor of the thing patented. ”

“ Where the utility is proved to exist in any degree, a sufficiency of invention to support the patent must be presumed.' We do not say the single fact that a device has gone into general use, and has displaced other devices which had previously been employed for analogous uses, establishes in all cases that the later device involves a patentable invention. ”

“ And yet the great majority of patents are for improvements in old and well-known devices, or on patented inventions. Changes in the construction of an old machine which increase its usefulness are patentable. Seymour v. Osborne, 11 Wall. 516. So, a new combination of known devices, whereby the effectiveness of a machine is increased, may be the subject of a patent. ”

“ But this, we think, does not meet the objection, which, more precisely stated, is that the machine and work holder patents, fairly read, do not embrace a patent for the dominating new result, the process of the reissue patent, but are patents for a particular combination of mechanical means, useful, as is that of petitioner, in availing of the process, but which, as we have said, does not involve invention. ”

“ By section 4887 it is provided that 'no person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States more than two years prior to the application. ”

“ The words " or more than two years prior to his application, " merely give the same force to a foreign patent or publication that had previously been given to prior use. An invention to be patentable must, according to American law, be both novel and useful. Utility may be evidence of novelty and vice versa, and commercial success is relevant evidence of utility. As in England, a bare principle is not patentable. ”

“ We claim that there can be no patent in the United States founded upon the material used, unless where a new combination of materials is made use of, and then it comes under that clause of the patent law which authorizes a patent for any new composition of matter. ”

“ To understand accurately the scope of the Gray invention, it is necessary to consider some of the principal foreign patents, as well as the history of the Gray patent in the patent office, and the limitations which were imposed by it and accepted by him before the patent was granted. ”

“ Either may be pointed out; but, if the patent is not confined to that particular tool or machine, the use of the others would be an infringement, the general process being the same. A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. ”

“ Patents of invention are issued from the patent-office; whoever wishes to obtain a patent for an invention, is obliged to deliver a model or an accurate drawing of it. These models are exposed in an appropriate place, where they remain until the expiration of the time for which the patents are granted ”

“ Patents for a machine will not be sustained if the claim is for a result, the established rule being that the invention, if any, within the meaning of the Patent Act, consists in the means or apparatus by which the result is obtained, and not merely in the mode of operation, independent of the mechanical devices employed ”

“ Is it the fact that Patents are taken out in this country for processes which are in operation abroad, but which have not been previously introduced into this country?—Certainly. A process in actual operation abroad, which has not been published in this country, can be made the subject of a Patent. ”

“ As the acts of Congress embrace only designs applied, or to be applied, they must refer to finished products of invention rather than to the process of finishing them, or to the agencies by which they are developed. A patent for a product is a distinct thing from a patent for the elements entering into it, or for the ingredients of which it is composed, or for the combination that causes it. ”