Notes.

The case of Bailey v. Roberton has been treated as an authority on the following points :-That if the invention in the two specifications be not the same, the patent is bad (Nuttall v. Hargreaves, 8 R. P. C. 454, per Lindley, L.J.); an improvement must be embodied in the complete specification, although it involve invention, unless it amounts to a distinct invention (Brooks v. Lamplugh, 14 R. P. C. 617); but one must not under cover of an "improvement" obtain protection for a new invention (Gadd v. Mayor of Manchester (per Lindley, L. J.), 9 R. P. C. 526).

That the test of infringement is whether use has been made of a characteristic part of the invention either as a whole, or a “subordinate whole." Per Lord Field in Miller v. Clyde Bridge Steel Co., 9 R. P. C. 482.

Bailey v. Roberton does not authorize looking at the provisional for any purpose other than that of seeing whether the invention described in the complete is contained therein. Hocking v. Hocking, 4 R. P. C. 260.

Newall v. Elliott showed that logically the complete should be studied first, and provisional later; although Lord Cairns, L.C., and Lord Blackburn, above, apparently took the opposite course, they do not appear to have really done so in their reasoning. Per Kekewich, J., in Siddell v. Vickers, 5 R. P. C. 98.

1879. THE BRITISH DYNAMITE Co. 7. KREBS, 13 R. P. C. 190.

Construction of Claim-Subsidiary Claim-Sufficiency.

In 1867 a patent (No. 1345) was granted to IV. E. Newton for an invention (communicated by Alfred Nobel) of "improvements in explosive compounds and in the means for igniting the same."

The specification contained the following statement :

"This invention relates to the use of nitroglycerine in an altered condition which renders it far more practical and safe for use. The altered condition of nitroglycerine is effected by causing it to be absorbed in porous unexplosive substances, such as charcoal, silica, paper, or similar materials, whereby it is converted into a powder, which I call dynamite, or Nobel's safety powder. By this absorption of the nitroglycerine in some porous substance it acquires the property of being in a high degree insensible to shocks, and it can also be burned over fire without exploding." Then follow directions as to various methods of exploding the dynamite, one of them including the use of a strong fulminating cap. "In order to ensure a perfect stability in the nitroglycerine contained in the dynamite, the "porous substance before it is saturated with nitroglycerine is to be rendered alkaline by washing it with a solution of carbonate of soda or lime water, or analogous substance, in order to neutralize the acid and prevent any decomposition of nitroglycerine from taking place."

The claim was for: "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."

At the trial one witness proved that his workmen made dynamite successfully from the directions in the specification alone. They first tried slate dust, and found it did not absorb a sufficient proportion of nitroglycerine; then they tried brick dust, and found it successful. No directions, other than those quoted above, were given for making dynamite. No witnesses were called to prove that they tried to make dynamite from the directions given alone and failed or were misled.

One means of explosion was well known as applied to other materials, and another had been used, by Nobel in 1864, for firing nitroglycerine.

It was held that the specification was sufficient, and the claim was good.

Fry, J.: "But I think the fair reading of that claim is to consider that it is a claim to the modes of user of the dynamite. Dynamite is to be used by explosion; and the modes of explosion, therefore, are merely the modes of user. I think to read otherwise would be to read it in order to defeat the patent, instead of reading it as a fair and reasonable man ought to read it."

This decision was reversed by the Court of Appeal on the grounds of insufficiency of directions, and that the claim was for a known mode of ignition, and was therefore bad.

On appeal to the House of Lords.

Held, that the specification was "sufficient;" that as the claim for modes of ignition was for igniting the dynamite made as described,1 and as it did not enlarge the monopoly, the patent was valid.

Lord Cairns, L.C., alluded to the duty of the Court as regards ascertaining the nature of the invention from the specification, and continued (at p. 192): "The Court has then to inquire whether the manner in which the same is to be performed is sufficiently described in the specification to the comprehension of any workman of ordinary skill in the particular art or manufacture; and this the Court can best do by evidence of what workmen of that description have actually done under the patent. . . .” At p. 193: "The result of using slate and brick dust was this—it produced some very good dynamite. The scientific witnesses called by the appellants speak to the sufficiency, in their opinion, of the directions in the specification; but what is more material is, that I find no workman whatever, skilled or unskilled, produced on the part of the respondents, who states that he has been, or would be, misled by the specification, or unable to make dynamite by following its directions. I therefore come to the conclusion that there is no insufficiency in the specification."

As to the claim for ignition (p. 193): "An explosive substance like

1 In Deeley v. Perkes, 13 R. P. C. 586 (5), Lord Herschell expressed the opinion that the finding was that the mode of ignition was not separately claimed.

dynamite would be of little or no utility unless there were means of bringing to bear upon it a method of detonating explosion which would be at once economical and easily applied. The method might be entirely new, or it might have been previously applied to other substances, but, unless the patentee could point out and place before the public some method which he could affirm by experiment to be capable of producing the desired result, he would have put before the public no complete invention at all. I look, therefore, upon the means of explosion, even assuming them to be known as applicable to other substances, to be part and parcel of the invention which the patentee was bound to give to the public as a complete invention; and I understand him to claim these means of explosion only as part and parcel of this invention. 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." 1

Lord Hatherley (at p. 196) pointed out that the use of the word "powder" intimated that the absorption was not to be carried on till a paste was produced. As regards the claim for ignition: "The worst that can be said in the way of objection to this is that there is surplusage. The objection of surplusage must be admitted to be one which ought, no doubt, to be very carefully avoided by a patentee. The worst that can be said adverse to the patent here is, that the patentee might have been quite content to sit still and say, 'Now, I have shown you how to make the dynamite, I have shown you what the dynamite is, and I have shown you how to set it off; that is the invention,' without mentioning firing in the claim. But then, as was well urged by the learned counsel in argument, it cannot be said that this claim deprives any human being, past, present, or to come, of any possible right they might otherwise acquire, because they could not acquire any right in the dynamite without laying themselves open to an infringement of the Letters Patent in respect to the use of dynamite."

Lord Penzance (at p. 198) pointed out that proportions could not be given, for the range of absorbent materials was so wide. The substance to be chosen would be the most absorbent relative to its cost. "This being the nature of the invention, to define proportions expressly would be impossible. They could only be defined—as they were in the specification defined--by results. These results were twofold; first, the nitroglycerine was to be completely absorbed or taken up in the porous substance; and, secondly, the result was to be a powder. . . . No doubt a trial, or perhaps more than one trial, might be necessary to ascertain how much nitroglycerine would be taken up by any given material; but this would not be experiment for discovery; it would be only working under a rule ascertained and defined by the patentee, and adjusting that general rule to the particular substance employed."

1 Followed in Parker v. Satchwell, 18 R. P. C. 307.

As to the claim for ignition: "It was argued that the claim to it as a subject of a patent when applied to dynamite was to claim the application of an old method to a new material, within the principle of the well-known cases of Losh v. Hague (1 Webs. 202), Kay v. Marshall (ante, p. 190), and Harwood v. G. N. Ry. (ante, p. 204), and therefore rendered the patent void. But in all these and the like cases, the material or thing to which the old method or machinery was applied was itself a well-known thing, which the person using it had a right to use, and to which he had the right to apply, and would apply, without the exercise of any inventive powers, the method or machinery in question; whereas, in the present case, the mode of ignition is only claimed in its application to dynamite, which was a new substance protected by the patent, and which no one had the right to use at all except the patentee, or those acting under his assignment or license.

"In restricting, therefore, the public from firing his new material by this special form of ignition, the patentee was not excluding it from the exercise of any right it had previously possessed, or claiming a monopoly in that which was already public property. Having the right to the monopoly of all modes of using dynamite, and, which is the same thing, of all modes of firing it, of which modes this special ignition was only one, he cannot, I think, by specially claiming that one, be said to have invalidated his patent by excess of claim." 1

His lordship expressed approval of and followed Betts v. Neilson.

Note.

This case was followed by Farwell, J., in Parker & Smith v. Satchwell &Co., Ltd., 18 R. P. C. 307.

1881. HAYWARD V. HAMILTON, Griff. P. C. 121.

Construction-Combination-Ingenuity.

This was an action for infringement of a patent (No. 2014 of 1871) granted to E. L. Hayward for an invention entitled "Improvements in pavement lights."

The invention is thus described in the specification:

"This invention has for its object improvements in pavement lights. "Pavement lights are commonly used to cover the areas in front of windows in the basements of buildings, and the object of my invention is so to construct them that they may not simply allow the light to pass through, but that they may also direct the light in an inclined direction into the rooms it is desired to light. For this purpose I glaze the frame of the pavement light with glass, which is moulded so as to be of a prism-like form on the under side, resembling to some extent in this respect the glasses which are often inserted into ships' decks to give light below.

1 The validity of the patent is here based on the fundamental principle enunciated ante, p. 19; the reasoning applies to all "subsidiary claims" as defined, ante, p. 58.

"The form and arrangement of the prism is, however, entirely altered, in order that the light may be thrown forward in one direction, as already stated. One of the sides of the prism is upright or nearly so, and the other side is inclined to it at such an angle that the light passing through the upper surface may strike this inclined side and be reflected completely, or nearly so, within the prism, and issue from the upright or nearly upright side in the direction required. The sides of the prism may be flat or curved in a horizontal plane.

"I usually form the glasses to glaze pavement lights hexagonal on the upper surface, and fit them into an iron frame with corresponding hexagonal cells, but the glass may be made rectangular or of other form on the upper surface.

"DESCRIPTION OF THE DRAWINGS.

"Fig. 1 is a plan of a pavement light consisting of a cast-iron frame, in which are a number of hexagonal recesses, or the recesses might be square, or of other form.

"In these recesses pieces of glass, marked a, a, moulded to fit the recesses, and of a peculiar form,

are set.

"Fig. 2 is a side view of one of these pieces of glass. Fig. 3 is a front view and Fig. 4 a plan of the same. Fig. 5 is a vertical section (taken on the line 1, I, Fig. 4), and Fig. 6 is a horizontal section taken on the line 2, 2, of Fig. 5. The iron frame is also shown in section in Fig. 3.

"The inclined face a1 of the glass a intercepts a large proportion of the light descending through the glass, and it reflects the whole or nearly the whole of the light thus falling upon it into the room. The opposite face a2, which is towards the room, is so formed as not to throw back the light, and so by far the larger proportion of the light falling on the face of the glass and passing through it, is directed into the room, whereas other pavement lights and deck lights allow of

an equal distribution of the light in all directions.

"Figs. 7 shew a modification of the form shewn at Figs. 2 to 6, the