that were disclaimed from the foregoing description and from the claim below. The amended claim1 was as follows: "Having thus described the nature and particulars of my said improvements, I desire it to be distinctly understood that [I do not confine myself to the exact details herein described, as such may be varied or modified without departing from the principle thereof, but] I claim as new and of my invention, the combination and arrangement of the various parts of machinery for sewing or stitching, with the use of a needle and shuttle, [the methods of regulating the supply of the thread or silk to the needle and shuttle, the arrangement of accommodating the machinery to the different thicknesses of the thread or silk, and the means of preventing the material rising, or the missing of the stitch when different thicknesses present themselves, as herein described and illustrated"]. The issue of validity was tried before Lord Westbury, L.C., without a jury. The plaintiff proved that the novelty and utility of the invention lay in the arrangement of the three cams, d, g, and k1, on the same shaft, c, by which the needle movement, the shuttle movement, and the feed movement were effected. Held: (1) p. 308: Since the mechanical arrangements for the separate auxiliary inventions (which were struck out of the claim) have been retained and corrected in the description, they form part of the combination as claimed, which therefore becomes different from that for which the patent was granted; and (2) p. 313, that the patent was invalid because the specification claimed a whole combination without disclosing in what part the real novelty and invention lay, or limiting the claim to it. Lord Westbury, L.C. (p. 313): "I must, therefore, lay down the rule which is consistent with and in reality a mere sequence from the decided cases, that in a patent for an improved arrangement or new combination of machinery the specification must describe the improvement and define the novelty otherwise and in a more specific form than by the general description of the entire machine: it must, to use a logical phrase, assign the differentia of the new combination." 2 Notes. The remarks of Lord Westbury in Foxwell v. Bostock have sometimes been quoted as supporting the proposition that in a specification for an invention of a combination it must always be pointed out what parts are old and what new; it was so dealt with in comparing details of Judkins' The parts struck out by disclaimer are shown in square brackets. 2 This passage is frequently referred to as containing a correct statement of the effect of this case. See Harrison v. Anderston Foundry Co. (1 App. Ca.), per Lords Chelmsford and Penzance, pp. 580 and 592; Webb v. Kynochs, 15 R. P. C. 543 (per Lord Ashbourne, L.C.I.). specification and those under discussion in the cases of Harrison v. Anderston Foundry Co. (4th Series, Court of Sess., vol. 2, p. 865) and Moore v. Bennett, 1 R. P. C. (per Cotton, L.J., 138, and Lindley, L.J., 140), both of which cases were reversed on appeal by the House of Lords. Foxwell v. Bostock decides that an invention of new parts in an old machine must be claimed as a separate improvement, or in combination with old parts as a claim for a combination: per Lord Cairns, L.C., in Clark v. Adie, 2 App. Ca. 328, and in Harrison v. Anderston Foundry Co., 1 App. Ca. 577. The novelty of the improvement must be stated, and not merely the whole machine claimed (ibid., per Lord Hatherley, p. 583, per Lord Penzance, p. 592; Clark v. Adie (No. 2), 2 App. Ca. 433, per Lord Hatherley; Leggott v. McGeoch, 10 R. P. C. 435; Kynochs v. Webb, 17 R. P. C. 115, per Lord Davey). Foxwell v. Bostock should be considered always as explained in Harrison v. Anderston, &c.: per Lord Selborne, L.C., in Moore v. Bennett, 1 R. P. C. 143; per Bowen, L.J., in Proctor v. Bennis, 4 R. P. C. 358. The effect of Foxwell v. Bostock as given above is substantially approved in different words in the following cases: Moore v. Bennett, 1 R. P. C. (per Lord Selborne, L.C., and Lords Blackburn, Watson, and Fitzgerald at pp. 143, 149, 152, and 153); Cartsburn v. Sharp, 1 R. P. C. 185; Rowcliffe v. Morris, 3 R. P. C. 21, 24; Webb v. Kynochs, 15 R. P. C. 543. It is not necessary that the novel parts be expressly named as such in any particular part of the specification, so long as fairly reading the whole or in comparing the claims the novelty is apparent: Lindley, L.J., in Nordenfelt v. Gardner, 1 R. P. C. 74. Another way of looking at Foxwell v. Bostock is that it shows that a patentee must not claim more than his real invention: Watling v. Stevens, 3 R. P. C. 41. If the whole combination be new, it is immaterial as regards sufficiency to specify if the respective parts of the combination are new: Cotton, L.J., in Proctor v. Bennis, 4 R. P. C. 351. If the invention be the whole combination itself, there is no necessity to describe and claim the novel individual parts: Romer, J., in Perry v. La Société des Lunetiers, 13 R. P. C. 670. Foxwell v. Bostock has also been followed in Parkes v. Stevens, 8 Eq. Ca. 365; Murray v. Clayton, L. R. 7 Ch. Ap. 578, 586: Clark v. Adie, L. R. 10 Ch. Ap. 674; Kynochs v. Webb, 17 R. P. C. 110. 1865. RALSTON V. SMITH, 11 H. L. Ca. 223; 35 L. J. C. P. 49. In 1858 a patent (No. 2654) was granted to W. Ralston for "improvements in embossing and finishing woven fabrics, [and in the machinery or apparatus employed therein]." 1 1 These words in brackets were subsequently struck out by disclaimer. The specification described, without drawings, an alleged method of producing in one operation the bright lustre on the surface of the fabric and impressing any desired pattern at the same time. This was to be effected by indenting the rollers, made of metal, wood, or suitable material, with any pattern desired, and by means of known suitable gearing, driving these rollers at a higher or lower speed than the bowls connected with them, so calendering and impressing a pattern at the same time. On January 27, 1860, a disclaimer was filed. The title was abbreviated as above. All rollers were disclaimed "except those which are made of metal or other suitable material, and have circular grooves, flutes, or indentations made around their surfaces;" all other designs on the rollers were disclaimed. Water patterns were also disclaimed except those produced by grooves, &c., as numerous as the warp threads in the fabric to be operated upon, or nearly so." The claim was in the following terms 1 :— "The employment of grooved, fluted, [engraved, milled,] or [otherwise] indented rollers of hard metal, [wood,] or other suitable material driven at a greater speed than the bowl or bowls connected with them, so as to exert a rubbing or friction upon the fabric submitted to their action, and thereby produce an indefinite variety of patterns as well as bright finish or lustre, and also reversing the operation by giving the bowl a quicker motion than the pattern roller." The action was one for infringement. The alleged infringement consisted in using a roller grooved spirally, the spiral being a screw-groove of sixty-eight threads to the inch-the same as the number of circular grooves required according to the specification to correspond to the warp-threads. It was proved at the trial-that calendering by means of smooth rollers revolving at higher speeds than those of their respective bowls was well known, also the operation of impressing a pattern by means of indented rollers revolving at the same speed as the bowls; that the attempt to use the alleged invention, as originally described, would destroy the fabrics; that the plaintiff accidentally discovered that if a fabric were fed sideways into roller and bowl, the former being grooved circumferentially in circles and revolving faster, a water pattern was produced. Held (on appeal to the House of Lords), (1) that the specification was confined to rollers grooved in circles, and not a spiral; (2) that this was an abuse of the power of disclaimer, which was not intended to enable one to specify for a particular discovery requiring research from a bad specification in general terms; and (3) that the invention described in the amended specification was not a "new manufacture." Per Lord Cranworth (p. 250): “I quite agree with what was said by 1 The original disclaimer was a separate document attached to the specification, and contained the revised description and claim. For convenience the old and new claims are shown here by the modern method. To read original claim omit all words in italics and include those in square brackets; to read amended claim omit words in brackets and include those in i talics. Mr. Grove, that it is not every useful discovery that can be made the subject. of a patent, but you must show that the discovery can be brought within a fair extension of the words 'a new manufacture.'" A manufacturer would be stopped from employing his old rollers in the useful way discovered. Notes. The above decision was to the effect that the specification only showed a new use for an old machine: per Fry, J., in Edison v. Woodhouse, 4 R. P.C. 93. It was distinguished in Moser v. Marsden, 10 R. P. C. 362, by Smith, L.J., on the ground that Ralston only proposed to do what had been done before. Ralston v. Smith was followed in Kynochs v. Webb, 17 R. P. C. 116, Lord Davey quoting the above extract from Lord Cranworth's judgment as being in point in that case. 1866. CURTIS v. PLATT, L. J. 35 Ch. 852. Construction-Mechanical Equivalents—Distinction between an Invention and its Object. The invention in question in this case related to a portion of the mechanism of self-acting spinning mules. It dealt with a method of effecting certain changes in the action of the mechanism. In it one part of the mule is movable, and travels backwards and forwards, performing certain functions. This part is termed the "carriage," and the whole journey-to and fro-"a stretch." During a stretch other portions of the mechanism had to be put in and out of gear in succession to effect the necessary changes in the operations to be performed. As it was described as "an improvement" on a previous method of Lakin & Rhodes (No. 12,805 of 1849), that method is here first given. Fig. 6 is a portion of the longitudinal elevation of Lakin & Rhodes's machine, Fig. 7 a plan, and Fig. 9 an end elevation of the same part. The same letters indicate the same parts throughout. By the operation of other parts of the machine at a certain time, the shaft Q is moved to the right in Fig. 6. In so moving, the incline on which the trigger-catch J rests lifts the lever i from the notch of the fixing k and allows the spring / to put into gear the clutch-box d by means of the lever i and crank-lever h. The lefthand side of the clutch-box slides along the shaft, but is "feathered" to it. The mechanism of the clutch-box in shown in detail in Figs. 13 and 14. To the half which revolves loose on the shaft (right-hand half in Fig. 7) is attached an eccentric boss, which passes through the lever f. Through this the pine passes. On the fixing g is an incline, against which, when the 1 The original figures showed the whole machine; the parts showing the clutch-box mechanism are alone reproduced here, about one-tenth of the whole. Enough is given to show the general nature of the mechanism used. |