investigated by judge or jury, and it is found that parts of the combination claimed as new are, in fact, old, as was the case in Foxwell v. Bostock.

Harrison v. Anderston Foundry Co. merely decides that the specification was "in form," and that it is not necessary to recite each part as “new or "old." So understood by Porter, M.R.I., in Webb v. Kynochs, 15 R. P. C.

288.

Harrison v. Anderston Foundry Co. has frequently been regarded as an authority to the effect that the novelty of the invention may be pointed out in the specification or in the claims (Nordenfelt v. Gardner (per Baggallay, L.J.), 1 R. P. C. 74); and that where the combination is a new one, it is immaterial on the question of sufficiency to specify what parts of the claim are old and what new: Proctor v. Bennis (per Cotton and Bowen, L.JJ.), 4 R. P. C. 351, 358; Perry v. Société des Lunetieres, 13 R. P. C. 670.1 This case was followed, as to the first claim, in Ellington v. Clark, 5 R. P. C. 135.

1876. HINKS V. THE SAFETY LIGHTING CO., 4 Ch. D. 607. Benevolent Construction-Claim including what is old-Insufficiency of Specification.

This action was brought to restrain infringement of a patent granted to J. and J. Hinks (No. 2787 of 1865) for “improvements in lamps for burning paraffin oil and other volatile liquid hydrocarbons."

The specification was as follows:

"Our invention consists of the improvements hereinafter described in the burners of lamps for burning paraffin oil and other volatile liquid hydrocarbons whereby two or more flat flames or one circular or nearly circular flame may be produced by the use of two or more single flat wicks. By the use of our invention the danger of breaking the chimneys which occurs from the use of single flat wick is wholly removed or much diminished, and in the case of curved wick-cases or holders great facility in trimming and placing the wicks in the said cases or holders is obtained and a much greater length of the wick utilized than in ordinary argand or circular burners.

"Our invention consists in the employment in the same burner of two or more flat or curved wick cases or holders, in which said cases or holders single flat wicks are placed. Each of the said wick-cases is provided with an axis and pinions for raising and lowering the wick contained therein. The wick-cases or holders are either straight, or slightly curved, or of the figure of semi-ellipses, so as to produce when arranged in the burner flat or elliptical or circular flames. The cone or deflector has two or more straight or curved openings in it, through which the wicks may pass. That portion

It is submitted that the facts of the above case do not go so far as to justify so wide a proposition, inasmuch as the claim was construed to be for an entire new combination. ? Only these parts are referred to which are necessary to appreciate the decision.

of the top of the cone between the curved openings (when curved openings and curved wick-holders are employed) serves as a substitute for the ordinary button used with circular wicks, or a circular hole may be used in the cone and the ordinary button employed. When flat wick-cases are employed straight openings are made in the cone."

Fig. 1 shows a vertical section of the lamp; a and b are two branches

66

or forks of the wider tube c. The wicks d and e pass up, one through each branch, actuated by the pinions ƒ and g in the usual way; "i is the cone or deflector of the lamp, the said cone i having two slightly curved openings,

k, l, in it, through which the wicks, a, b, may pass ;" m is a perforated disc, through which air passes to the wicks. "Instead of giving to the compound wick-holder the curved figure represented in the plan (Fig. 4), each branch of the wick-holder may be curved of the figure of a semi-ellipse, or the said branches may be straight, and the compound wick-holder may be made to contain more than two flat wicks, a corresponding number of openings being made in the cone or deflector for the wicks to pass through. By the use of compound wick-holders, or a series of single wick-holders made according to our invention, two or more flat flames or elliptical or nearly circular flames may be produced by the employment of two or more single flat wicks. . . ."

"Fig. 6 represents a vertical section of a burner for producing a circular flame by the use of two single flat wicks constructed according to our invention; . . . Fig. 8 is a section of the wick-holder taken in a plane at right angles to that in which the section (Fig. 6) is taken. . . .”

In Fig. 6 d and e are the flat wicks, the holder being made in halves, and so shaped that it becomes circular near the top, the two wicks being gradually bent round till they meet; m, m is the cone or dome with a circular opening; the deflector button supported on g and the inner tube of the holder. Fig. 8 shows the arrangement for the admission of air to the tube inside the wicks.

The claims were

"Firstly, constructing the burners of the said lamps substantially in the manner hereinbefore described and illustrated in Figs. 1, 2, 3, 4, and 5 of the accompanying drawings, that is to say, the employment in the same burner of two or more flat or curved wick-cases or holders in which two or more flat wicks are placed so as to produce thereby two or more flat flames or elliptical or nearly circular flames.

"Secondly, constructing the burners of the said lamps substantially in the manner hereinbefore described and illustrated in Figs. 6, 7, 8, 9, 10, and II of the accompanying drawings, whereby a circular flame is produced by the use of two single flat wicks."

At the trial two anticipations were alleged, one a lamp made according to Halvorsen's American specification, which had been published in this country, and the other a specification of W. Little (No. 912 of 1856). Halvorsen's lamp differed in principle from the plaintiffs' only in having a circular opening in the dome or casing for the wick or flame to pass through, without the separation shown in the plaintiffs' between the slots and Little's invention was not worked; it was practically a failure. The only practical difference between it and the plaintiffs' was that the latter substituted flat wicks for a solid round one.

To the second invention claimed it was objected that the specification was insufficient, inasmuch as there were no directions in the letter-press, nor indications in the drawings, to show how the air was to be admitted to the space between the dome or cone m, m (Fig. 6) and the wick-holder a, b, or from that space to the flame.

Held, that on the true construction of the specification the first claim as regards "elliptical or nearly circular flames" included the case where there was no dividing portion between k and 7, and that it was therefore anticipated by Halvorsen's lamp;1 that the substitution of the flat wicks for the solid round wick of Little's patent was sufficient invention to support a patent, Little's having been unworkable; and that the description of the method of carrying out the second invention was insufficient because of the omission to show any air-passage.

Jessel, M.R. (p. 612): "I am anxious, as I believe every judge is who knows anything of patent law, to support honest bona fide inventors who have actually invented something novel and useful, and to prevent their patents from being overturned on mere technical objections, or on mere cavillings with the language of their specification so as to deprive the inventor of the benefit of his invention. This is sometimes called a 'benevolent' mode of construction. Perhaps that is not the best term to use, but it may be described as construing a specification fairly, with a judicial anxiety to support a really useful invention if it can be supported on a reasonable construction of the patent.3 Beyond that 'benevolent' construction does not go. It never was intended to make use of ambiguous expressions with a view of protecting that which was not intended to be protected by the patentee, and which has not been claimed to be so protected by him, whether or not it was an invention unknown to himself." The learned judge discussed the specification, pointing out that there were two sets of drawings and one claim for each. As to Little's anticipation (p. 615), the only material difference was the substitution of a flat for a round wick. "As far as I can ascertain from the authorities, the merit very much depends on the result produced. Where a slight alteration in a combination turns that which was practically useless before into that which is very useful and very important, judges have considered that, though the invention was small, yet the result was so great as fairly to be the subject of a patent; and, as far as a rough test goes, I know of no better.* . . .

"When (p. 617) you have such a little trumpery invention as the second, the whole merit of which is very small indeed, if you are to tell people how to do things better, you must tell them in a proper way, without the exercise of any invention or much trouble; and, in my opinion, this is not within the rule, and is badly specified."5

1 The first claim failed because it included something that was old. FitzGibbon, L.J., in Webb v. Kynochs, 15 R. P. C. 555; and Walker, L.J. (ibid. p. 559).

C.

2

This is an example of a slight difference constituting novelty: Haslam v. Hall, 5 R. P. 19. This case is referred to by Lord Halsbury, L.C., in Thierry v. Rickmann (14 R. P. C. 115), as showing that simplicity of invention will not render a patent bad; nor utility make a bad specification good.

This is quoted in Plimpton v. Spiller, 6 Ch. D. 422, where the reason for the rule is given as arising from the want of power of the patentee to amend (post, p. 258). "Benevolent construction in this case did not make a bad patent good: Walker, L.J., in Webb v. Kynochs, 15 R. P. C. 559.

3

This rule was quoted and followed in Pirrie v. York St. Flax Co., 11 R. P. C. 450.

Quoted and followed as regards insufficiency in Fletcher v. Arden, 5 R. P. C. 57.

S

1876. PLIMPTON 7. SPILLER, 6 Ch. D. 412.

Construction-Subsidiary Claim. (As to Publication, see ante, p. 26.)

The specification (No. 2190 of 1865) described the mode of construction of a roller skate. The claims were for :

"First, applying rollers or runners to the stock or footstand of a skate, as described, so that the said rollers or runners may be cramped or turned so as to cause the skate to run in a curved line either to the right or left by the turning, canting, or tilting laterally of the stock or footstand.

"Second, the mode of securing the runners and making them reversible, as above described."

It was proved that as to the second claim the mode of securing the runners actually described was old and well known, and that no workman would dream of claiming it as a separate invention.

Held, that the second claim was only for securing the runner to the skate, and not for the mode generally, and that it did not enlarge the monopoly of the first claim.

Jessel, M.R. (p. 422), said that "it is the duty of a judge to construe a specification fairly with a judicial anxiety to support a really useful invention if it can be supported upon a reasonable interpretation of the patent . . . and is not to be astute to find flaws in small matters in a specification with a view to overthrow it because of the want of power to amend a specification. . . ."1

(P. 423): "When we come to read the claim, I think it fair to say that, if it can be read in two ways, one claiming something that has a merit of novelty, and the other claiming something which would show the man to be ignorant of all the ordinary appliances used in every workshop in the world, it is the duty of the judge to adopt the construction which makes the patent reasonable and sensible, rather than that construction which makes the patent utterly absurd."

James, L.J. (p. 426), pointed out that the custom of making claims had arisen although "there is nothing in the Act or in the patent law which says anything about claims," and that the object of the claim was to disclaim what was old.2

P. 428: "After all, that second claim really comes to nothing more than is included in the description of the invention itself. . . . It seems to me to be perfectly idle and superfluous to the claim in the first part. They neither add to nor diminish from the patent, nor the monopoly which the patentee is seeking to obtain against the public."

1 Followed as authority by Fry, J., in Wegmann v. Corcoran, 13 Ch. D. 77. As to amendment of specifications, see ante, Ch. IX. p. 160. Followed in Westinghouse v. Lant. & York. Ry. Co., 1 R. P. C. 101.

2 This view was adopted by Smith, L.J., in Edison Bell Phonographic Corporation v. Smith, 11 R. P. C. 405. [This dictum was before the Act of 1883, which directs claims to be made. See Construction of Claims, ante, pp. 89-99.]