novelty which there could be claimed would be the application and use of certain mechanical means in order to produce in a known machine the same result which in that known machine had been produced by other mechanical means" per Cotton, L.J., in Proctor v. Bennis, 4 R. P. C. 354 (Bowen, L.J., p. 359). A broad distinction was drawn by Lord Hatherley in his judgment above between old and new objects: per Fry, L.J., p. 361.

This distinction between old and new results was observed also in Ticket Punch Co. v. Colley's Patent, &c., 12 R. P. C. 183, 185, which has been frequently quoted in subsequent cases.

299.

Curtis v. Platt has been followed in Nettlefolds v. Reynolds, 9 R. P. C.

1866. JORDAN 7. MOORE, L. R. 1 C. P. 624; 35 L. J. C. P. 268.

Construction of Specification and Claims-Claim too wide.

The invention was for certain improvements in the construction of ships. The first improvement, as described, consisted in a suitable iron frame, of any shape or kind of iron, to which an external covering of timber planking for the sides, bilges, and bottoms was to be fastened by means of rivets, bolts, or other suitable fastening. There were four more improvements described, and the sixth described the construction of a particular iron frame adapted to the timber external planking for sides, bilges, and bottoms.

The first claim was for "the construction of ships with an iron frame, combined with an external covering of timber planking for the sides, bilges, and bottoms." The sixth was for "the construction of iron frames for ships adapted to an external covering of timber planking for the sides, bilges, and bottoms, as described."

Held, that the first claim must be read to include all iron frames, and was not confined to that described in the sixth improvement; and that the case came within Harwood v. G. N. Ry. Co., there being no invention in the first claim.

Notes.

In Arnold v. Bradbury, L. R. 6 Ch. Ap. 712, Lord Hatherley, L.C., treated this case as an example of one claim showing that another must be read in a wide sense; and that the latter covered ships made before the patent.

It was pointed out by Kay, L.J., in the Edison Bell Phonograph Corporation v. Smith & Young (11 R. P. C. 400) that the two claims above could never be suggested to refer to the same thing, and that, contrasting them, it was obvious the first referred to any kind of iron ribs.

1866. SIMPSON & Co. v. HOLLIDAY, L. R. 1 H. L. 315.

Construction-Insufficiency-Utility.

In 1860 a patent (No. 126) was granted to H. Medlock for "improvements in the preparation of red and purple dyes."

The provisional specification was filed. The complete specification, which was almost verbatim identical with the provisional, was as follows :— "I mix aniline with dry arsenic acid, and allow the mixture to stand for some time, or I accelerate the operation by heating it to or near to its boiling point until it assumes a rich purple colour, and I then mix it with boiling water and allow the mixture to cool; when cold it is filtered or decanted. The aqueous solution which passes through the filter contains a red colouringmatter or dye, while a tarry substance remains on the filter; this tarry substance, dissolved in alcohol, methylated spirit, or other suitable spirit, furnishes a purple dye. These solutions of colouring-matter may be used at once in the process of dyeing, concentrated or diluted according to the tints required. The mixture of aniline and arsenic acid, after being heated, may be allowed to cool, and then forms a paste, which may be preserved. When required for use it is mixed with boiling water and heated as above described."

"I have found that the proportion of two parts by weight of aniline to one part by weight of arsenic acid yields a good result, but I do not confine myself to that proportion, as it admits of variation." The claim was for: "The manufacture or preparation of red and purple dyes by treating aniline with arsenic acid, as hereinbefore described."

The plaintiffs were assignees of the above patent.

The issues of validity and infringement were tried by Wood, V.C., without a jury.

It was admitted that the process described in the first words of the specification, of mixing the ingredients and allowing "the mixture to stand for some time," would not do; the application of heat was necessary to produce the combination required.

It was proved that no person was misled by the statement, because on finding that combination did not take place, one would at once naturally apply heat. Also it was found that "dry arsenic" of commerce meant arsenic physically dry, and not the "anhydrous," which latter would not produce the required result; and that "anhydrous" acid was not an article of comAlso that pure aniline would not do, but the aniline of commerce containing toluidine would do.1

merce.

1 At the date of the patent the old chemical notation was in use. The "hydrated acid" is HASO, in the modern notation. When physically dry it contained some water of crystallization. The anhydrous acid" spoken of at the trial is the pentoxide As2O, produced by expelling the H from the H3ASO, with sufficient O to form water. In the process described

Held, by Wood, V.C., that the patent was valid, and the defendant had infringed.

On appeal to the Lord Chancellor.

Held, by Lord Westbury, L.C., that the cold process, as described, was distinct from the hot, and that the patent was therefore invalid; that "dry" was not synonymous with "anhydrous," and that that objection to the patent failed (12 L. T. 99).

On appeal to the House of Lords.

It was argued inter alia that as questions of fact were involved in relation to the necessity of heating, and as to the properties of "dry arsenic acid," there must be a new trial.

Held, that as the cold process was admitted to be useless, the patent was void in law.

Lord Chelmsford, L.C. (p. 320): "The construction of a specification, like other written documents, is for the Court. If the terms used require explanation, as being terms of art or scientific use, explanatory evidence must be given, and with its aid the Court proceeds to the office of construction. In this there is no necessity for any scientific evidence, as there can be no doubt of the meaning of the language used by the patentee."

Notes.

In the United Horse Nail Co. v. Stewart, 2 R. P. C. 132, the foregoing case is quoted as an example of a patent being held invalid because, of two processes given, one was a failure.

In Edison & Swan v. Holland, 6 R. P. C. 282, Cotton, L.J., pointed out that a specification need not point out and warn against all the errors a workman might make; but must be so clear as to leave him nothing to find out or discover.

1871. CANNINGTON V. NUTTALL, L. R. 5 H. L. Ca. 205.

Construction-Combination—Parts old and disclaimed.

In 1866 a patent (No. 1297) was granted to A. Pocheron for an invention for "improvements in the manufacture of glass," and was described in the amended specification in the following terms3:

3

the "arsenic acid" acted as a strong oxidizing agent. The oxidation of the aniline and toluidine (present in the aniline of commerce) produced rosaniline, thus

Where the oxidizing agent is arsenic acid, there resulted arsenite and arseniate of the base rosaniline which formed the dyes in question.

1 Lord Westbury pointed out that this case was an example of a patentee losing a patent for a valuable discovery by not availing himself of the opportunity of making experiments during the six months which elapsed before the time allowed for filing the complete specification; the provisional and complete specifications were here practically identical.

2 Quoted and followed by Kay, J., in Edison & Swan v. Holland, 5 R. P. C. 475.

3 The original diagrams showed more of the chimney.

"My improvements relate to the melting or fusing furnaces or kilns used in glass-making, and have reference to the suppression of the fire-clay pots or crucibles hitherto in use, and to placing the materials to be fused or melted within the furnace itself, the usual inner form of the lower part of which is modified by doing away with the sieges or banks and the general levelling of the bottom, to which separately I make no claim, but according to my invention the lateral sides are constructed of a hollow form in suchwise that a current of refrigerating or cooling air may be made to circulate around and prevent any excessive heating of the sides which are to retain or enclose the materials in fusion.

"My improvements will be thoroughly understood by reference to the accompanying Sheet of Drawing, on which Fig. 1 represents a plan view

of my improved furnace or kiln taken at the height of the working-holes; Fig. 2, a transverse section; and Fig. 3, a longitudinal section.

"A indicating the basin or tank which is to contain the materials in fusion; B, gratings and fireplaces; C, sills between the basins and the gratings; these sills are made by the aid of two fire-brick walls separated

at their base and united at their summits, so as to establish between them a vacant space D, which is to serve for the current of refrigerating air; E, free space passing all round the basin or tank between the exterior walls and the inner walls or sides of the basin, and communicating with the space D between the sills for the circulation of cold air; F, bottom of the basin supported by ironwork; G, crown or arch of the furnace; H, arch of the tunnels or fireplaces; i, working-holes; j, annealing kilns; K, arches with gratings; L, chimney; M, underground compartments or cellars.

"In making plate glass the metal is run on to the table in the following manner: The table or tables are brought on rails successively to the furnace, in the side of which an opening or hole has been left, which hole is closed with clay or other adhesive material during the fusion, and opened for running the metal on to the table, after which it is again closed, and so on for each operation. The metal being run on to the table is spread in the usual manner. For other descriptions of glass this hole or opening is dispensed with, the usual working-holes only being used."

The specification then concluded with a description of the advantages (which were great) and the results produced by the new kiln.

There was no formal claim, but the amendments were prefaced by the following disclaimer: "I have been advised that the specification may be held to claim generally the suppression of the fire-clay pots or crucibles hitherto in use in glass-making, and the placing the materials to be fused or melted within the furnace itself, and as I do not wish to retain, or make any such extended claim to invention, but desire to limit my claim to the forming the sides of the tank or chamber containing the glass-making materials hollow in suchwise that a current of refrigerating air may circulate and prevent any excessive heating of the sides which retain or enclose the fused materials, I for this reason wish to disclaim, &c."

A bill was filed in Chancery by the plaintiffs, Messrs. Cannington, praying an injunction against infringement of the above patent. An issue as to facts was directed to be tried, and was tried before Lord Romilly, M.R., and a special jury.

It was proved at the trial that before the invention the flint was melted in pots or crucibles placed on sieges or benches in the furnaces. These were turned from time to time to prevent the pot from becoming overheated and allowing the molten glass to escape; molten glass frequently, on the pot being turned, congealed and closed up the pot again. Tanks had been tried before and heated from the outside. The circulation of atmospheric air had been known and used to keep cool the outer parts of puddling furnaces. By the patentee's arrangement the fire was placed at the sides so as to heat the flint from the top; the circulation of atmospheric air kept the tank cool, so as to prevent its breaking, or to cure the defect by self-sealing with the molten glass. Not only were the several parts of the invention— removal of pits, use of tank, and air-circulation-old, but the two former were expressly disclaimed in the specification, as above.