P, being the shaft above, and the motion as regards the fulcrum was geometrically the same as that of the lower end of the plaintiff's door as regards its In the plaintiff's case the intermittent actuating mechanism

was outside connected with the shaft; in the defendant's it was inside, and connected with the notch on the arm C. This is shown in the last diagram, in which D is a shaft to which cams, Q, are attached. The arm C and shovel M are pressed forward by the springs F and G. When D revolves the cams, Q, press back the arm until they pass the notch, when the arm and shovel spring forwards again, the shovel throwing the coals on the fire.

The main feature in the defence was that the defendant's pusher was mounted on a pin to act as a buffer; that the plaintiff's claim was for the combination as a whole, and that the defendant's was entirely different.

The learned Vice-Chancellor of the Palatine Court held, inter alia, that the patent was valid, and had been infringed.

Q

P

A

Section of defendant's pusher.

On appeal, held, by the Court of Appeal, inter alia, that the patent was valid, and that the defendant had taken the essence of the combination.

Cotton, L.J., considered the nature of the claim to be one for a combination. After dealing with the question of novelty and allegation that the novelty of parts was not pointed out, he continued:-"Now I have referred to that so as to show that I have not omitted the argument. In my opinion, it is of necessity, without that observation and this expression of opinion by Lord Cairns, that where a combination is claimed to be an invention, if that invention is new, it is immaterial on the question of the validity of the specification, and the goodness of the patent, that the patentee should point out how far he does or does not claim particular portions. Of course, if the alleged infringement had been a subsidiary portion of this combination, or had been particular parts of machinery which formed the combination as a whole, that would have been material, but when I read the claim it will appear that the plaintiff does cut himself down entirely to the combination, pointing out that he does not claim the particular portions of that, but simply claims the

combination of four parts (three being lumped together)-the combination of those with another, namely, his flaps or doors." The learned judge then pointed out that there was ample evidence of invention, as no workman had been called to show that the earlier machine of the defendant's could be improved to the form of the later.

As to equivalents in view of infringement, he said: "Has the combination in substance been taken? Has the defendant, though not exactly taking the whole combination which has been patented, taken by slight variations, or by mechanical equivalents, the substance of it to produce the same result by practically the same means? Has he taken the essence of it ?" 3

He continued by examining the specification and claim, and held that the defendant's machine was a colourable variation of the plaintiff's.*

The learned judge dealt next with the variations between the two machines, and distinguished the case of Curtis v. Platt (ante, p. 231).

"Then it was said that we were precluded from going into that in this case by what was laid down by three judges of great distinction, Lord Hatherley, Lord Westbury, and Lord Cranworth, in the case of Curtis v. Platt, in the various stages through which that case went. Of course, whatever one's view might be, one ought not to act contrary to any principle that has been laid down by them. The principle which was contended for was this, that where there is a combination claimed for improvements in machinery, there you must hold the patentee to the description which he gives of the particular means by which his invention is to be carried into effect; and that the doctrine of mechanical equivalents cannot apply in such a case, but you must hold him strictly to the particular mechanical means by which he proposes to carry out his invention. Now, in my opinion, that case does not apply to this, because those observations were applied to a case where there was a machine which had been long in use for producing a certain result. Therefore there was no novelty at all in the results to be produced even in that machine, and the only novelty which 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. That, to my mind, distinguishes the case from the present-because what was the case?" After calling attention to the facts in Curtis v. Flatt, the learned judge continued :— "It [the invention] was specially to produce improvements into the mechanical means and arrangements which the previous patentee had used

1 Quoted by Porter, M.R.I., in Wilson v. Balfour, 5 R. P. C. 253

2 In Gosnell v. Bishop, 5 R. P. C. 156, the same learned judge described the new result or object as sprea ding the coals on the fire by intermittent radial action.

This passage was quoted by Lopes, L.J., in Automatic Weighing Machine v. Knight, 6 R. P. C. 309.

Relied on by Ashbourne, L.C.I., in Thomson v. Moore, 6 R. P. C. 444, and by Palles, L.C.B. (ibid., 447); also by Lindley, L J., in Ticket Punch, &c., Co. v. Colley's Patents, 12 R. P. C. 183.

5 Quoted and approved in Wilson v. Balfour, 5 R. P. C. 253.

to obtain well-known objects in a well-known machine. Therefore in that case, in applying those words used by the judges, we must deal with the case before him, and come to the conclusion, as I do, that what that meant was this, that where there is no novelty in the result, where the machine is not a new one, nor the result-you must strictly hold the patentee now claims an improvement in the machinery for producing in a known machine that result-you must tie him down strictly to the invention which he claims, and the mode of affecting the improvement which he says is his invention. But here the throwing coal on to the furnace by the intermittent radial action of a flap or door was new. Nothing of the kind had been done before. It is true there had been, though imperfect, previous machines for feeding furnaces automatically, but that had not been done previously to this machine by any intermittent radial action of a flap or door, as was done by the plaintiff, and apparently successfully done by him. In my opinion, therefore, these opinions expressed by the judges with reference to mere improvements in an old machine for an old purpose cannot lay down any law for a case like this, where the result of throwing coal on to the furnace by the intermittent radial action of the flap is first applied in a machine invented by the plaintiff." 1

Bowen, L.J., in discussing the question of identity of inventions observed, examined the specification and continued:-" I think the truth is that the doors were, in the eye of the inventor, an extremely important part of the combination, and gave, so to speak, the key to the whole, and it is on that ground that he employs the language he does; but none here are claimed separately. Now I think it goes to the root of this case to remember that this is, as was described by one of the counsel, really a pioneer invention, and it is by the light of that that it seems to me we ought to consider the question whether there have been variations or omissions and additions which prevent the machine which is complained of from being an infringement of the plaintiff's. With regard to the variations, I take precisely the same view that the Lord Justice has taken, and I will not travel over the matter which he has gone over in detail. With regard to the additions and omissions, it is obvious that additions may be an improvement, and that omissions may be an improvement; but the mere fact that there is an addition, or the mere fact that there is an omission, does not enable you to take the plaintiff's patent. The simple question is not whether the addition is a material one, or whether the omission is material, but you must go back again and ask yourself whether what has been taken in the substance and essence of the invention." 2 The learned judge concluded by distinguishing Curtis v. Platt, and held that the plaintiff was the first to produce "instead of mere automatic feeding, an intermittent radial action of the flap of the door," and that the defendant's machine contained the substance and essence of the plaintiff's combination.

1 These two last extracts were relied on in Thomson v. Moore, 6 R. P. C. 439. This passage quoted and relied on by Wills, J., in Incandescent Gas, &c. v. De Mare, 13 R. P. C. 331.

Fry, L.J., in the course of his judgment described the "pith and substance of the plaintiff's invention is, in my judgment, putting coals upon a fire by intermittent radial action, an invention which, it may be remarked, reproduces with great exactitude the action of the human arm in placing coals upon a fire." After discussing the facts and authorities, he continued:Was, then, the object in the present case an old one, or was it a new one? Putting coal upon a fire is, of course, an act, if not as old as Adam, I suppose as old as the time when Tubal Cain wrought in metal, or when Prometheus introduced fire to mankind. It is, therefore, as old as it can be. But is that the real object of the patent? I think that the real object of the patent must be taken to be this, the automatic placing of coal on a fire by intermittent radial action. That object is new. I think, therefore, we are bound to construe this combination as a combination to effect a new and useful object." The learned judge concluded by pointing out the points of similarity in the actions of the two machines :-" In the present case we have these broad features of likeness, that in both machines the motion is a radial motion, in both machines it is an intermittent motion; in both the machines it is, of course, produced by means of a radius, in both machines that radius is moved in one direction by tappets, and the same radius is moved in the opposite direction by a spring. All those broad features of the machines are in common, but there is this difference, that in the plaintiff's machine the shaft is impelled by the tappets and by the spring, whereas, in the defendant's machine, the radius itself is impelled by the tappets and the spring. It would follow that the radius in the plaintiff's is attached to the shaft, whereas the radius in the defendant's works on a pin. That is the broad distinction between them. The result, therefore, appears to me to be substantially the same: by substituting the pin for the shaft as the centre on which the radius acts, and by impelling the radius itself instead of impelling the shaft fixed to the radius, you have produced in substance precisely the same radial action by the same means. You drive your radius in one direction by tappets, and you drive in the other direction by the spring, and you produce the same result, namely, the feeding of coal by a radial motion made intermittent in one direction by the operation of the tappets, and in the other direction by the shafts."

Notes.

This case has been followed in many cases; besides those alluded to in the notes, in Automatic Weighing Machine Co. v. Combined W. M. Co., 6 R. P. C. 124. It shows that where the result is new, the means of obtaining that result should be more narrowly examined (Cotton, L.J., in Aut, W. M. Co. v. Knight, 6 R. P. C. 304); that if the important parts of an invention be taken, equivalents or variations in the rest will not differentiate (Rigby,

1 Adopted by Cotton, L.J., in Gosnell v. Bishop, 5 R. P. C. 156, and by Stirling, J., in Presto Gear Case, &c. v. Simplex, &c., 15 R. P. C. 643.

L.J., in Muirhead v. Commercial Cable Co., 12 R. P. C. 63); that if all the combination be novel, it need not be so described (Romer, J., in Perry v. Société des Lunetiers, 13 R. P. C. 670). In Aktiebolaget Separator v. Dairy Outfit Co. (15 R. P. C. 334) it was followed by Smith, L.J. (p. 334), and by Vaugham Williams, L.J. (p. 338), as an authority that "the doctrine of mechanical equivalents applies to specific definite parts of a combination, definitely included in the words of a claim."

[It should not be forgotten that what was spoken of as the "result" and "object" of the invention by the learned judges included the means, viz. intermittent radial action. It does not support the proposition that where the "result" or "object" is something apart from the mechanism producing it the doctrine of equivalents applies. The "result" here included the principle of the mechanical action of the radial flap, and was therefore part of the "manufacture," that is of the machine itself; the learned judges never described the passage of the coals on to the fire, apart from the action of the radial flap, as a "result" or "object." The "result," as the term here is used, denotes the radial action, or mode of action, of the mechanism; it falls, therefore, within stage III., and not IV., in the classification, given ante, p. 7.]

1887. BADISCHE ANILIN UND SODA FABRIK 7. LEVINSTEIN,

4 R. P. C. 449.

Construction-Utility-Sufficiency.

A patent (No. 786 of 1878) was granted to J. H. Johnson for an invention (communicated from abroad by H. Care) of "improvements in the production of colouring matters suitable for dyeing and printing," and the invention described in the specification consisted in "the production of red and brown colouring matters which, in chemical language, may be termed the "sulphoacids of oxyazonaphthaline.'"

The specification then described four processes of preparing the dyes. The first process showed how, by known methods, naphthylamine is converted into its diazo compound; then equal molecules of the diazo compound and of naphthol or naphthylic alcohol are allowed to react on one another in an alkaline solution; according as either of the isomers alphanaphthol or betanaphthol was employed, the resulting precipitate was either of two isomeric modifications of oxyazonaphthaline, "which may be termed 'alpha and beta oxyazonaphthaline' respectively." "These azo compounds are further converted into their sulphoacids by any method. now in use for the preparation of organic sulphoacids, such as, for instance, by heating them with fuming sulphuric acid." The excess of acid was then to be removed and the dye obtained in a solid state by precipitation or evaporation-the brown dyes are obtained from the alphaoxyazonaphthaline, and the red from the betaoxyazonaphthaline. An example of the process