ment, said: "It is as I read it a claim for a combination, that is to say, a combination of all the movements going to make up the whole mechanism described; it must, for the present at least, be assumed that this combination, as a combination, is novel, that it is, to use the words of the Lord President, a new combination of old parts to produce a new result or to produce a known result in a more useful and beneficial way; it is not doubted that a combination such as this is may be the subject of a patent. What, then, are the objections to the first claim viewed as a claim for the combination? The first is an objection said to be founded upon the case of Foxwell v. Bostock (x), decided by the late Lord Westbury. It is said to be 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 combination is also the merit, if it be a merit, which remains to be proved by evidence."

In the same case Lord Hatherley said: "The judges extended as it appears to me with great respect, the doctrine of Foxwell v. Bostock in their application of it in this case; 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 this sewingmachine 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, 'I think it will not do if you 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 other clock which is known.'

(x) 4 De G. J. & S. 298.

In Moore v. Bennett (y), Selborne, L.C., in givingj udgment in the House of Lords, said: "Your lordships have not at all to consider whether in the case of Foxwell v. Bostock the decision arrived at was correct or not; nor have you to consider whether, when interpreted with reference to the facts of that case, the language used by the very eminent and able judge who decided it may not be susceptible of an interpretation which would make that language correct in point of law. But, my lords, I feel that your lordships cannot refuse to regard the decision in Foxwell v. Bostock in the light in which you have already explained, and interpreted, and commented upon it by your own decision in the case of Harrison v. The Anderston Foundry Co., and so explained, it appears to me, to amount to no more than this: that 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. The case of Foxwell v. Bostock was qualified or explained in Harrison v. The Anderston Foundry Co. It was treated as an authority in such a way as to make it impossible to apply it to the present case, where, looking at the specification and at the evidence, it is perfectly clear that no such general combination as this had been at any time used, and where the material and important parts of the two arrangements and combinations, which are described, are clearly, plainly and intelligibly described. It would, in my judgment, be in direct contradiction to the decision in Harrison v. The Anderston Foundry Co. to hold the specification bad."

In Clark v. Adie (z), Lord Hatherley said, speaking of Foxwell v. Bostock: "You must in some way or other inform those whom you are dealing with, by which I mean the general public, who 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 sub-divided, if I may so term it, your machine into these separate parts and claim for each the merit of

(y) Griff. P. C. 158.

(2) L. R., 2 App. Cas. 328.

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."

A claim for every method of applying a principle is a claim for the principle itself and will not be supported (a).

The claim will be construed with reference to the entire patent and although at first sight there may be some appearance of obscurity in it, if it can be made clear by the consideration of the whole specification, the patent will not be thereby avoided (b).

As has been pointed out above each subordinate part of an invention must be claimed specifically in order to be protected (c), for everything that is not claimed is considered to be disclaimed, and should a man describe ten inventions in his specification and claim only one of them, he thereby presents to the public the remaining nine (d).

Comprehensive words employed in a specification cannot have the effect of extending the scope of the patent beyond that which is substantially described (e).

A claim to "The apparatus as fully set forth and described in the above specification and drawings," has been held to be a claim for the combination of the constituent parts of that apparatus (ƒ).

The fact that one of the claims is practically a repetition of another will not vitiate a patent; in the Wenham Gas Co. v. The Champion Gas Lamp Co., Lindley, L.J., said: "I think the true construction of the fourth claim is pointing out the import

(a) Neilson v. Harford, 1 Web. P. C. 355.

(b) Beard v. Egerton, 8 C. B. 165, 215, 216; Arnold v. Bradbury, L. R., 6 Ch. 706, 712; Plimpton v. Spiller, L. R., 6 Ch. D. 427; Nordenfelt v. Gardner, 1 P. O. R. 61, 69; Edison v. Woodhouse, 4 P. O. R. 107; Leadbeater v. Kitchin, 7 P. O. R. 244; Elias v. Grovesend Tin Plate Co., 7 P. O. R. 463; Edison v. Smith, 11 P. O. R. 395; Parkinson v. Simon, 11 P. O. R. 493, 507.

(c) Clark v. Adie, L. R., 2 App. Cas. 315, 321; Cropper v. Smith, 1 P. O. R. 87.

(d) Harrison v. Anderston Foundry Co., L. R., 1 App. Cas. 580; Hinks v. Safety Lighting Co., L. R., 4 Ch. D.

612.

(e) Binney v. Feldtman, Griff. P. C. 52; Miller v. Clyde Bridge Steel Co., 9 P. O. R. 480.

(f) Peckover v. Rowland, 10 P. O. R. 234, 237.

ance of the perforated tube in claim 3-a repetition in fact of claim 3-I do not think it is anything more. If so, it does not vitiate the patent. It may be open to the criticism that it is redundant; but if it is nothing more than pointing out what is a valuable operation, and what has been claimed in clause 3, it does not thereby vitiate the patent" (g).

So too where one of the claims in a specification, although strictly it may be for something old, is purely subordinate to the main invention and merely amounts to a declaration of one of the merits and advantages of the contrivance disclosed in the specification, it has been held that a patent is not void on that account. In British Dynamite Co. v. Krebs, the specification concluded thus: "I claim as the invention secured to me the mode herein set forth of manufacturing the safety powder or dynamite herein described, and also the modes of firing the same by special ignition as herein set forth." Earl Cairns, L.C., after assuming that the modes of firing by special ignition, or some of them, were known before the date of the patent, said: "He does not, as it seems to me, claim the means of explosion in gross, but only as appendant to dynamite, and he would not be allowed under this patent to claim them for any other purpose. In other words, he claims in the first claim the dynamite, the substance itself, and in the second claim the only mode of using the dynamite with which he was at the time acquainted. It is possible that, having stated the means by which the dynamite could be exploded, he might have omitted his second claim and contented himself with the first. But the second being, as it seems to me, merely a claim to the user of that which is included in the first, I cannot think that the patent should be avoided by the introduction of that which is merely useless" (h).

But the above must be carefully distinguished from the case of a claim for something old which, although subordinate to the main invention, tends to enlarge the scope of the patent.

In Plimpton v. Spiller, supra, Brett, L.J., said: "If this

(g) 9 P. O. R. 55.

(h) Good, P. C. 88, 93; see also per
James, L. J., in Plimpton v. Spiller,
L. R., 6 Ch. D. 427, 428; per
Ꭹ, J.,

in United Telephone Co. v. Harrison, L. R. 21 Ch. D. 741; also Neilson v. Betts, L. R., 5 H. L. 21.

second claim had been in a form which would have applied to the runner of any other skate than that which is patented here, I should have thought it would have been bad, and that therefore the whole patent would have been bad, and that the plaintiff could never recover" (i).

It has been decided in the House of Lords that the enactment in sect. 5 of the Act of 1883, that a complete specification must end with a distinct statement of the invention claimed is directory only, and when letters patent have been granted, they will not be invalid because it has not been complied with (k), consequently the same rules will apply in cases where no distinct claim is appended to the specification as applied before the passing of that Act. Under the old law if no claim was inserted the patentee was taken to claim everything that was described in the specification, although disclaimer was not necessary in matters which manifestly formed no part of the invention (7).

As has been noticed above, sect. 5, sub-sect. 4 of the Act of 1883, enacts that the complete specification must be accompanied by drawings if required.

Before the Act, drawings were quite optional on the part of patentee (m), and the above section opens up a question as to how far absence of drawings will now affect a patent, it is submitted that the same interpretation should be placed upon it as that which the House of Lords have placed upon sub-sect. 5 of the same section (n), although the words of sect. 2 of the Act of 1886, by which the above sub-section of the principal Act is amended-"no patent heretofore sealed shall be invalid by reason only that the complete specification was not accompanied by drawings, but referred to those which accompanied the provisional specification "-would seem to imply that if drawings accompanied neither the provisional nor the complete, the patent might be held to be invalid on that account.

(i) See also British Dynamite Co. v. Krebs, per Cairns, L. C. Good, P. C. 93; Cropper v. Smith, 1 P. O. R. 81, 88, 90, 91.

(k) Vickers v. Siddell, 7 P. O. R. 292, 303, 306; L. R. 15 App. Cas. 496, 500, 505.

(1) Lister v. Leather, 8 E. & B. 1004; Tetley v. Easton, 2 C. B., N. S. 706.

(m) Boulton v. Bull, 188; In re Fox's Patent, 431, n.

Dav. P. C.
Web. P. C.

(n) Vickers v. Siddell, supra.