like device.

The outlets in the conical or other stem, or valve, are provided with an elastic or other suitable medium" [shown in black]; "the stem or valve being secured in the chamber or cavity by a nut (0) screwed on the outside of the said hollow tube. The other end of the conical or other stem, or valve, passes through the outside nut (O), and is provided with means for readily attaching a pipe or its equivalent connected to the force-pump or like device. When air, gas, or liquid is being forced into a hollow tyre, the elastic or other medium yields and allows the same to pass, and instantly closes the outlet passage or passages when pumping ceases by its own elasticity or other means and the pressure in the tyre. If desired, the charging-end of the stem or valve may be provided with a cap (S), to give additional security against leakage."

Fig. 1.

Wood's specification.

A short description of the advantages of the valve followed; and then a full description of the drawings. These showed modifications of form, but consisted substantially of the same elements as shown in Fig. 1.

The first claim was for :

"(1) The general arrangements, constructions, and combinations of parts composing the improved non-return valve for pneumatic tyres of cycles and other road vehicles, as hereinbefore described, and as illustrated in the annexed drawings."

The second claim was for the combination of the tube C with the removable stem K; and the third claim was for the whole combination, with references to the diagrams in detail.

The chief alleged anticipation was that contained in Parsons' specification No. 2996 of 1879), describing an inflation valve for life-belts, airpillows, and the like. Fig. 3 shows this valve, in which a is the tube,

the mouthpiece, d the non-return rubber valve. The deflation was effected by partially unscrewing the mouthpiece b, when the air escaped through the passages k, which are shown in Figs. 4 and 5.

It was proved that all the elements in Woods' combination were old, the valve (K, in Fig. 1) being old, but not in Parsons' combination.

Held, at the trial, that the invention was found in Parsons' specification, and that therefore the patent was invalid.

On appeal to the Court of Appeal this decision was reversed.

Kay, L.J., in delivering the judgment of the Court (at p. 380): " Assume that no separate portion of this apparatus, taken by itself, could be No such valve patented; the whole thing taken together is quite new. -to give it a comprehensive name—had ever been used or seen before. Its usefulness is abundantly proved. It has been sold by millions. It has practically driven all other inventions for the same purpose out of the field. Its ingenuity is manifest. As I understand his judgment, the learned judge says that the utility is beyond doubt; that it has great merit; that there is good subject-matter; and that the patent is clearly for a combination. But he holds that this patent adds nothing to the stock of practical knowledge. But if the combination is new, a new combination is a material addition to such knowledge."

1896. FAWCETT 7. HOMAN, 13 R. P. C. 398.

Construction of Claim for Combination-Alleged Paper Anticipations. A patent (No. 2815 of 1888) was granted to M. Fawcett for "improvements in the construction of fire-proof floors."

The complete specification was as follows:

"My invention relates to improvements in the construction of fire-proof floors, and has for its object to encase and so protect the iron or steel joists or girders or other load-carrying material used in such floors, to dispense with the use of centering in the construction of such floors, to reduce the dead weight of such floors, and to enable them to be constructed more expeditiously and economically than heretofore.

66

'My invention consists of a floor formed or constructed with flanged tubular lintels [L and f, Fig 3] as the special feature. These lintels are made of fire-clay or other fire-proof material, and of various sections, which are arranged to rest on the lower flanges [a, Figs. 2 and 3] of iron or steel joists or girders [/], and to pass under the lower flanges of the same, an air-space [S, Figs. 2 and 3] being formed between the under surface of the

The references to the diagrams shown in brackets were not in the original, but are inserted to abbreviate the specification. Fig. I is a plan showing the oblique position of the lintels; Fig. 2 is a longitudinal section through and parallel to the centre of the lintel; and Fig. 3 a cross-section of the floor at right angles to the section in Fig. 2. It will be seen that a section across the line XX in Fig. 1 (not in original) will show a complete single arch.

Lord Herschell (at p. 459, in argument): "When once it is admitted that the expanding segments are old, the application of them is not a great invention. The patentee is then confined to his actual claim. . . . It is well settled that when a combination is good, but made of parts that are old, the doctrine of mechanical equivalents cannot be applied in the same way as if the invention were new.”

In his judgment at p. 462: "That friction-clutch or apparatus" (Le. Hubbard's) "had not, however, been previously employed in a hoistingmachine; it was therefore open to the plaintiffs to obtain protection for an arrangement by which the friction-clutch was adapted to, and employed in, a hoisting-machine, but it is obvious that they could not patent the mere idea of so employing it, or obtain a monopoly of its use, in such a machine apart from the particular method of using it which they made known to the public."

Lord Davey (at p. 463): "But the learned judge" (at the trial) "held that the patent was for the application generally of the friction-clutch to hoists in the form of an automatic brake with cams and expanding and contracting segments. It is on this point I differ from the learned judge. In favour of the patentees, I am of opinion that we ought to adopt the narrower construction of the claim, because if the wider construction be adopted, the patent would in my opinion be invalid.”

At p. 464" But Hubbard describes his contrivance as applicable to all revolving shafts, including those to be used for hoisting. The Court is entitled to be informed of the state of knowledge at the date of the patent, and to apply that information in order to ascertain what it is that the patentees have invented. No doubt the plaintiffs might have a patent for a new combination for the purpose of applying Hubbard's friction-clutch to hoisting machinery, and I think that the plaintiffs' patent in the present case may be supported as of that character. But, if so, I am of opinion, in accordance with many well-known authorities, that the invention should be confined to the particular combination described and claimed.”

1895. MOSER v. MARSDEN, 13 R. P. C. 24.

Effect of Amendment-Construction of Claim.

In 1885 a patent (No. 11,640) was granted to C. E. Moser for "improvements in gig-mills employed in the finishing of woven fabrics."

In the complete specification (which was amended) 1 the invention is thus described :—"This invention consists in the construction of a series of rollers, cards, or other suitable raising material, and arranged round a shaft at equal distances from the same, the said rollers being supported by carriers fastened on the shaft of the cylinder; these rollers carry on both

1 The amended specification is read by omitting the words in square brackets and eading those in italics, which were inserted by the amendment.

is moved by crossing or

By this

ends pulleys, over which pass belts [and] which receive their motion from a counter-shaft. This counter-shaft is driven from the cylinder by wheels, cones, or speed-pulleys, in order to be able to obtain different speeds. When the cylinder turns, the rollers will turn with it, and also in their respective bearings, either forward or backward, to the cylinder motion and at different speeds depending upon the direction in which the counter-shaft depending upon which part of the cone or speed-pulley the belt is placed. opening the belt, which gives it its motion, and arrangement the rollers turn independent of the movement of the cylinder, so contrary to the direction of the cylinder that the speed of the cylinder is equalized and no raising produced. In making them turn less backward or forward their action increases proportionally." References were then given to the drawing. The specification concluded: "The number of the raising ollers which form the cylinder may vary, also the manner in which the stuff be raised is guided around them and through the rest of the machine and there may be one, two, or more of thus-formed cylinders, and so placed

as to raise the stuff on both sides at the same time].

The counter-shaft or

aising rollers may also be driven by chains, wheels, or cones.

"The invention Consists substantially in forming a raising cylinder by rollers covered with Cards or suitable raising material, which receive by means of driven counter-shafts an independent variable but known motion from that of the cylinder itself. I declare that I make no general claim to forming raising cylinders by arranging around a shaft a series of raising

rollers, but what I cla

m is

"[1]. Forming raising cylinders by arranging a series of suitably covered raising rollers round a shaft at equal distances from the same, which roller's are made to receive [an independent] a variable but known motion [from] independent of that of the so-called raising cylinders themselves, by means of counter-shafts or any other suitable driving motion.

"[2. The general arrangement of the machine as herein described.]"

It was proved that a method of obtaining a known motion of the rollers was old, that the means of obtaining a variable motion for the rollers was also old, but that no one had shown mechanism to regulate the speed of the rollers as required for the fabric independently of the speed of the cylinder.

It was held at the trial of this action for infringement that the (1) invention could not be subject-matter for a patent, and (2) that the amendment had enlarged the scope of the invention and thereby invalidated the

patent.

This decision was reversed on both grounds by the Court of Appeal.
On appeal to the House of Lords.

scope;

and that

Held, that section 18(9) of the Act of 1883 precluded an objection being taken that the amendment of the claim enlarged its the amended claim was not for an invention greater than that described in the body of the specification, the concluding words "

or any
other suitable

driving motion" indicating that the patentee did not claim the source from which the power was taken. The patent was therefore upheld.1

Lord Watson (at p. 30) remarked on the defence that the improvements were not novel nor subject-matter, and continued: "The first and second of these objections are in my opinion devoid of substance. There could hardly be more appropriate matter for a patent than the introduction of mechanism admittedly novel into an old combination, with the practical result of converting a comparatively defective apparatus into an efficient and useful machine. Again, the anticipation upon which the appellant chiefly relied consisted in the fact that an earlier patentee had expressed the obvious truism that the motion of the individual rollers in a raising cylinder might be either accelerated or retarded, but without indicating any method by which that object could be accomplished so as to produce a useful result." 2

At p. 31: "The very object of the Act of 1883 was to make an amended claim, when admitted by the proper authorities a complete substitute to all effects and purposes for the claim originally lodged by the patentee. The validity of the amended claim must, therefore, be determined in the same way, and on the same footing, as if it had formed part of the original specification; and the claim, as it stood before amendment, cannot be competently referred to, except as an aid in the construction of its language after amendment."

Notes.

The result of this decision is that leave to amend will not be so readily granted as before, when it was thought there was a power to review in the Courts: Parkinson's Patent (per Finlay, S.G.), 13 R. P. C. 512.

The foregoing decision does not preclude the examination of the unamended specification for the purpose of construing the amended one. The former law is noted in the last note to Dudgeon v. Thomson (ante, p. 269). The difference between the modern practice of using erased and italic type and the older one of adding to alterations in a separate document does not affect the question of principle; the public see both the amended and unamended specifications. E.g. a statement that a certain thing was an essential being struck out on amendment, amounts to a statement that it is not an essential; but if the specification were originally drawn as amended, the point would be left open to inference from the whole document.

It is submitted that, taking an amended specification as the basis, one may look at the unamended form in order to see the limits of the claim, it being presumed that the officials complied with the law and that the claim in the amended specification has not a wider ambit than the unamended one.

1 The manufacture (ante, pp. 6-13) here is the machine; as in the improved machine the parts discharged new functions, the improvements constituted a new manufacture.

This shows the distinction between the object to be attained and the means for attaining it: the latter, viz. the application of the idea, constitutes the manufacture invented.