is sufficient. The patent was for improvements in central-fire breech-loading cartridges. The specification, describing the method of performing the invention, referred to certain figures in drawings annexed thereto, but did not distinguish between what was new and what was old. The patentee claimed "the manufacture of cartridges described with reference to figs. 1, 2, and 1*; and I also claim the manufacture of cartridges described with reference to figs. 3, 4, and 3*:"-Held, that the patent might be upheld by limiting the claim (as in Seed v. Higgins) for the manufacture of cartridges described with reference to the above-mentioned figures. (L. R., 3 Eq. 500 n, 513; 14 W. R. 126; 13 L. T. Rep., N. S. 399.) (e) PARKES v. STEVENS. [1869]

Where a patentee has taken out a fresh patent for improvements on his original invention, it is sufficient, if, reading his second specification with the first, an artisan would have no substantial difficulty in ascertaining what was claimed. (L. R., 8 Eq. 358; judgment affirmed, L. R., 5 Ch. 36.) Sir W. M. James, V.-C., in the course of his judgment, said: "It is obvious that a patentee does not comply, as he ought to do, with the condition of his grant, if the improvement is only to be found, like a piece of gold, mixed up with a great quantity of alloy, and if a person desiring to find out what was new and what was claimed as new, would have to get rid of a large portion of the specification by eliminating from it all that was old and common-place, all that was the subject of other patents, or of other improvements, bringing to the subject not only the knowledge of an ordinarily skilled artisan, but of a patent lawyer or agent." (L. R., 8 Eq. 365.) See also Murray v. Clayton (L. R., 7 Ch. 585, 587).

(f) WRIGHT v. HITCHCOCK. [1870]

A patent was taken out by W. for "improvements in the manufacture of frills or ruffles, and in the machinery or apparatus employed therein.” The specification described a process of plaiting fabrics by means of a reciprocating knife in combination with a sewing-machine :-Held, that looking at the whole specification and claim, the sewing-machine was treated as a known invention already in use, and that it was distinct from the mode of crimping or plaiting to which the plaintiff laid claim. (39 L. J., Ex. 97; L. R., 5 Ex. 37.)

(9) HARRISON v. ANDERSTON FOUNDRY COMPANY. H. L. [1876]

Referring to the case of Foxwell v. Bostock (4 De G. J. & S. 298), Lord Cairns, L.C., said: "It is said to have been determined in that case, that where there is a patent for a combination there must be a discovery or explanation of the novelty, and the specification must show what is the novelty and what the merit of the invention. I cannot think that, as applied to a patent for a combination, this is, or was meant to be, the effect of the decision in Foxwell v. Bostock. If there is a patent for a combination, the combination itself is, ex necessitate, the novelty; and the com

bination is also the merit, if it be a merit, which remains to be proved by evidence." (L. R., 1 App. Cas. 577.) Lord Hatherley, referring to the same case, said: "It was there held-and that, I think, was all that was held-that it is not competent to a man to take a well-known existing machine, and having made some small improvement, to place that before the public and say, 'I have made a better machine. There is the sewing-machine invented by so and so; I have improved upon that. That is mine; it is a much better machine than his.' That will not do; you must state clearly and distinctly what it is in which you say you have made an improvement. To use an illustration which was adopted, I think, by Lord Justice James in another case, it will not do, if you have invented the gridiron pendulum, to say, 'I have invented a better clock than anybody else,' not telling the public what you have done to make it better than any clock which is known." (lb. 583.)

(h) CLARK v. ADIE (First App.). H. L. [1877]

Where a person has invented an improvement in the form of a particular apparatus or machine, but combines that individual improvement with other things which are not his invention, his specification must claim that particular individual thing, and not leave it doubtful whether the claim is made for the whole combination, of which that thing really only forms a part. (L. R., 2 App. Cas. 315.) Lord Hatherley : "The case of Foxwell v. Bostock (4 De G. J. & S. 298) decides this, that where you take a well-known machine (as the sewing-machine was in that case and as the horse-clipper was in this), an instrument which was well-known before the date of the patent, you may, if you think fit, improve all the various parts of that machine by introducing into two or three of its definite parts, if there are so many, that which is new either by way of combination, or by way of discovery, and you may claim for each of those parts into which you have so introduced something new, the privilege of protection, just as if you had taken out letters patent for each of those new things separately-and you may claim for those parts A, B and C, which, considered as separate things, are in themselves deserving of a patent-you may claim for them, when united, a beneficial result which may entitle you to a patent for the whole machine. But, I apprehend, my lords (and I do not read the decision in the case of Foxwell v. Bostock as deciding more than I am stating), you must, in some way or other, inform those whom you are dealing with, by which I mean the general public--whom you wish to exclude for a certain limited number of years from using your invention,-you must inform them, in some mode or other, whether you have subdivided, if I may use the term, your machine into those separate parts and claim for each part the merit of novelty, or whether you are simply making a combination of things per se old, but which have never been used before in combination, and which make up, as you say, your machine, for which you claim protection as a novel and useful machine, and

which machine must not be made by anybody but yourself. If you claim protection also for a portion of the machine you must make it plain, I do not say necessarily by words or by any particular mode, but, in some definite mode or other, you must point out what is the combination of parts which you ask to have protected, and what are the subordinate parts which also you ask singly and respectively in themselves to have protected." (Ib. 328.)

(i) EADES v. STARBUCK WAGON COMPANY. [1881]

In an action for infringement of a patent for improvements in the construction of tramcars, described as being a method of making the body of a tramcar so as to swivel upon the underframe-Held, that the specification was bad, because it did not describe either an addition to or improvement upon an old invention, but it specified an invention for turning tramcars, which was in fact the subject of an old patent of which the patentee, when he took out his patent, had never heard. (W. N., 1881, 160.)

(j) MOORE v. BENNETT. H. L. [1880-4]

When a claim is made for a general combination and arrangement of the different parts of a machine, if the Court sees that the combination is not new, but that there is some particular improvement in some particular part, it will not do to claim the whole combination as new, but you must condescend upon that which is improved. Upon the principle that the specification should not be vague but should give sufficient information, it ought not to disguise the real invention by a claim so wide that any one would suppose something to be claimed as new which is not. Where the claim is for a combination and not for particular subordinate things included in that combination, if the combination is a new one, and if the manner of arriving at it and working it, and the purpose for which it is useful are all properly, sufficiently and correctly described in the specification, so that any one acquainted with the subject will know in what respect it differs from the things which have gone before, then it would be contrary to the whole policy which allows such combinations to be the subject of a patent, to say that besides describing the manner of doing it in a way which would show every one acquainted with the subject what was the novelty in the thing, you are to go on, and although you do not want to claim subordinate parts as distinct from the entire combination, nevertheless you must specify the subordinate parts as constituting new elements. (Griff. 158, 1 O. R. 129.)

If the case of Foxwell v. Bostock were to be taken as it was understood before it was explained in Harrison v. Anderston Foundry Company, it would make it impossible to draw a good specification for a combination of old materials without such a degree of prolixity as would render it practically impossible. (1 O. R. 149, Griff. 162.)

(k) CARTSBURN SUGAR REFINING COMPANY v. SHARP. [1884]

A patent for an improvement must distinctly specify the part of the machine which is alleged to be improved, and the particular improvement for which protection is claimed.

66

In the specification the first claim was, First, in a sugarmoulding machine the rotatory drum and series of moulds combined with the hopper and distributors and the packer is inclined towards and adapted to fill the moulds substantially as described." The only part of this, which could be said to be novel, was the packer:-Held, by Lord Kinnear, that the claim was bad, inasmuch as no one would, without a knowledge of the previous patents, suppose from the specification that the novelty for which protection was claimed was the packer. (1 O. R. 181.)

(1) ROWCLIFFE v. MORRIS. [1885]

In an action for infringement of a patent for improvements in frames for spring mattresses, it appeared that the invention was in fact a combination of four old parts, viz. (1) a rectangular frame, (2) a transverse adjustable. bar resting thereon, (3) adjustable screws passing into or through the bar, and (4) webbing fixed to the end of the framework and held in tension by the adjustable screws-Held, by Bristowe, V.C. (after a careful consideration of Foxwell v. Bostock, and Harrison v. Anderston Foundry Company), that, as there was nothing in the specification to show that the invention claimed was limited to the combination, the patent was invalid. (3 0. R. 17.)

(*) FAIRBURN AND HALL v. HOUSEHOLD AND ROSHER. [1886]

The plaintiffs' patent, which was for improvements in tramcar engines, was held invalid on the ground that the specification did not indicate with any approach to clearness or certainty what the patentee claimed as new. (3 0. R. 128.)

(†) WATLING v. STEVENS. C. A. [1886]

The plaintiff's patent was for improvements in spring tip-vans. The specification was sufficiently clear to inform any person of adequate knowledge that what really was claimed was the combination of three things: friction rollers to move the frame; mechanism by which the rolling back produced the tipping; and the control over the angle of the tip:-Held, that the specification, although it was as near as possible to being bad, did just sufficiently discriminate between what was new and what was old. (3 O. R. 41, 153.)

(m) PROCTOR v. BENNIS. C. A. [1887]

Where a patent is taken out for a combination, and the combination is the invention, if that invention is new, it is immaterial to its validity whether the patentee has pointed out how far he does or does not claim particular portions, though if an alleged infringement consists only in taking part of the combination it is

necessary that the patentee should have claimed the part so taken as new. Curtis v. Platt (see p. 192 (n)), distinguished on the ground that there the result was old, and the novelty of the invention consisting only in improvements in a known machine for producing that known result, the patentee was strictly tied down to the mode described of effecting the improvements. (36 Ch. D. 740.)

(m*) KAYE v. CHUBB. H. L. [1888]

Watson, L.: "If you claim a combination you need not say which of the parts are old." (5 O. R. 641, at p. 649.)

(n) BOYD v. HORROCKS. C. A. [1889]

The plaintiff's patent was for improvements in machinery for winding yarn or thread. In the specification the plaintiff said, "In a sixth detector arrangement, which is shown in fig. 14, the detectors are wires hanging on the yarns or threads, and guided on a swinging plate carried on by a horizontal wire or rod and having fixed on it the catch-plate holding up the slip lever arm. . . . I do not claim the combination of the swinging plate with the detector wires and rotating wiper shaft, but merely the application to that combination of the catch-plates with their arrangement in relation to the lever." Arrangements by which, when a thread is broken, a portion of the machinery, leaving the rest going on, had been stopped by means of detector wires, were very old:Held, that the plaintiff's invention being to do, what had been done long ago, by improved means, the rule laid down in Curtis v. Platt applied, viz. that where there is a well-known machine, and there is an improvement in a part of that machinery for effecting the old object, though in a better way, you must confine the patentee to the improvement which he claims in effecting that particular object. The question does not come to be whether the alleged infringement is or is not a mechanical equivalent, but have you really taken in substance that which was the invention of the plaintiff:- Held, also, that, owing to the disclaimer, catches in the claim could not refer to any catch, whatever might be the means of effecting it, that the machinery being old the plaintiff ought to be confined to the particular details invented by him and introduced as improvements into the old machinery, and that as the defendant did not use catch-plates anything like the plaintiff's there was no infringement. (6 O. R. 152.)

Claiming to much.

(0) R. v. ELSE Sci. fac. [1785]

Where a patent claimed the exclusive liberty of making lace, composed of silk and cotton thread mixed, and not any particular mode of mixing, it was held to be void, on proof that silk and cotton thread had been before mixed on the same frame for lace, although not in the same mode. (1 Web. P. C. 76.)