-a claim which, it appears, however, would have been clearly open to the objection of want of novelty. But I am satisfied that the patentee's claim is not for any such combination, nor for any specialty in the form, material, or application of the inflated inner tube to the outer indiarubber tyre so described as to make the degree of expansion of which the inner tube is capable and the material of which it is composed essential features of the invention. The essential feature, which was clearly novel, appears to me . . . to be in the arrangement and construction of the flanges of the metal rim and the edges or ends of the outer indiarubber or guttapercha tyre, which, when acted on by the inner inflated tube (whether capable of more or less expansion), produces a grip which keeps the outer tyre in its place when the wheel is in use on the road."

1898. THE MAxim Nordenfelt, &c., Co. v. ANDERSON, 15 R. P. C. 422. Construction-Range of Proportions given-Narrower Claim-Dictum as to Benevolent Construction.

A patent (No. 4477 of 1889) was granted to Sir H. S. Maxim for "improvements in the manufacture of explosive compounds."

The complete specification commenced by stating that the improvements produced a suitable powder for firearms. It continued: "In the manufacture of explosive compounds according to my present invention, I mix dissolved gun-cotton or pyroxyline with nitro-glycerine, nitro-gelatine or similar material and with oil, preferably castor-oil." Then follows a statement of the reasons for using "castor-oil or other suitable oil," and the resulting advantages.

The specification then continued: "I produce an explosive compound which is advantageous for various purposes, by mixing the gun-cotton, the nitro-glycerine, nitro-gelatine, or similar substance and the castor-oil in, or about in, the following proportions, viz., from 2 or 5 per cent. of the castoroil, from 10 to 16 per cent. of the nitro-glycerine or the like, and the remainder of gun-cotton." The resulting product was then described, and details given for the process of manufacture, in one of which acetone was used as a solvent.

The first claim was for :

"An explosive compound consisting essentially of gun-cotton or pyroxyline mixed with nitro-glycerine, nitro-gelatine, or similar material, and with castor-oil or other suitable oil, for the purpose above specified."

The other three claims were for processes which included acetone as a solvent.

This was an action for infringement of the above patent by the manufacture of "cordite," which consisted of nitro-glycerine 58 per cent., guncotton 37 per cent., and vaseline 5 per cent., together with acetone as a solvent which did not form part of the final product.

It was proved at the trial that at the date of the patent it was thought by chemists to be impossible to make a powder with gun-cotton which contained any very large percentage of nitro-glycerine. The inventor (an eminent chemist) thought the maximum quantity should be in the United Kingdom 16 per cent., and in other countries 10 per cent.

One of the processes in which acetone was used would not be worked with a mineral jelly, as vaseline, instead of the castor or vegetable oil.

Held, at the trial, that the specification claimed the product only when made of the ingredients in the proportions mentioned in the body of the specification. (14 R. P. C. 371.)

The learned judge pointed out that if vaseline be included as an "other suitable oil" one process claimed would not work, and so the patent would be invalid: "It affords a strong if not a conclusive argument in favour of construing the patent if possible as not covering the use of vaseline."

Held, by the Court of appeal, that the learned judge's decision was correct; Lord Esher, M.R., approved of the above dictum as to the vaseline. (14 R. P. C. 671).

On appeal to the House of Lords :

Held, that the claim must be read in connection with the whole specification, and that it was for the powder made of the ingredients only when combined within the range of proportions mentioned.

Per Lord Herschell (at p. 327): “In construing a claim of this kind you must look not only to one part but to the whole of the specification. You cannot stop at the first part of it where you find that it is to be dissolved gun-cotton, but you must equally read the succeeding paragraph beginning, 'I produce an explosive compound . . . by mixing the gun-cotton, &c. P. 428: "It seems to me difficult to doubt that the patentee is there describing his invention, namely, that it is mixing them in or about in those proportions by means of which mixing that he is able to produce an explosive compound, &c. . . . That is farther borne out by the range which he gives, . it is in or about in the following proportions,' which of course allows a considerable range—a general range."

1898. OSMONDS V. THE BALMORAL CYCLE Co., 15 R. P. C. 505.

Disconformity-Embarrassing Claim.

In 1894 a patent (No. 2520) was granted to FJ. Osmond for "improvements in adjusting the driving-chains of safety-bicycles and other velocipedes."

The complete specification described by means of 21 diagrams the details of the invention. In carrying it out it was necessary to remove the step, which consisted of a projection, a prolongation of the axle of the driving-wheel.' As a substitute for it Fig. 22 showed a blank stamped out, 1 The case is only noted here so far as the issue of disconformity is concerned.

which was folded at its middle, as shown in elevation Fig. 23 and plan Fig 24, rivetted at n and secured by the pin p and nut p2 to the end c of the chain-stay.

The claims were:

"First. The improvements in driving-chain adjusting mechanism of velocipedes hereinbefore described and illustrated in the accompanying

Fig.22

Fig 23

ww

Fig.24.

-p2

From Osmond's specification.

drawings, that is to say, making the ends of the arms or branches of the chain-stay hollow or tubular and longitudinally slotted on their inner sides, and arranging on the ends of the driving-wheel spindle carrier-blocks for taking into and working in the said hollow or tubular ends of the chainstay, the said carrier-blocks being moved in the hollow or tubular chainstays in the ways hereinbefore described and illustrated."

The second, third, and fourth claims referred to particular modifications described in the drawings.

The fifth claim was for :

--

"The combination with the chain-adjusting gear for velocipedes hereinbefore described and claimed when used with semi-circular or semi-elliptical chain-stay arms of foot-steps of the kind hereinbefore described and illustrated in Figs. 22, 23, and 24 of the accompanying drawings."

The provisional specification contained no mention whatever of the new step.

At the trial of this action for infringement certain anticipations were alleged, and also the issue of disconformity was raised.

The learned judge held that claims subsequent to the first were otiose and needless, and did not enlarge the monopoly, as they only claimed the use of invention in the first claim with other things in addition, e.g., the step in the fifth claim. The patent was upheld.

On appeal to the Court of Appeal :

Held, that the claim to the use of the step in the combination with the gear was not foreshadowed in the provisional specification, and that the patent was therefore invalid.

Lindley, M.R. (at p. 518), referred to the fifth claim, and continued: "That raises a question which to my mind is new and important. He certainly is claiming something there; he certainly is claiming a combination of his chain-adjusting gear with that kind of foot-step; or (transposing the words) he is claiming a combination of the use of that step with his gear. Now, no such intention is shadowed forth in the provisional specification at all." The complete specification is therefore defective. The answer to that is that one cannot use the new gear, and therefore cannot use it with the step. "But that is not quite an answer to the difficulty. There is no doubt whatever that the addition of that step does improve the whole machine, and it is extremely embarrassing to anybody engaged in the trade to find a claim of a particular step in combination with something else; and it is obvious to us, who see so much of the use made of these patents, and the abuse made of them, that if that claim were allowed to stand it might embarrass people a great deal, and might be made an instrument of extortion and blackmail. It is a claim which ought never to have been put in, and which ought unquestionably to be struck out."

Note.

The stronger ground on which this case was decided is that the claim is embarrassing and misleading to persons engaged in the trade. Testing it in the manner suggested (post, p. 607), it would obviously be unfair to a rival inventor who invented the step, say immediately after the date of the provisional and before Osmond thought of it, to include it in Osmond's patent. The apparent distinction in principle between this and the dynamite case (ante, p. 274) is that here the new element in the combination is in itself a new invention, in the former case the additional element was old.

1899. DREDGE v. Parnell, 16 R. P. C. 625.

No Invention-No subject-matter.

A patent (No. 18694 of 1891) was granted to E. Dredge for "an improved method of cutting necktie linings with a band-knife or other power knife."

The complete specification in describing the invention confined it to band-knives, and mentioned the difficulties met with in cutting soft material like "swansdown" by the then known methods, and continued: "By my process any pattern, whether straight or curved, or recessed or partly straight, and partly recessed or curved, can be rapidly cut, and in piles of 36 to 72 thicknesses deep, a feat never before attempted. Indeed, almost any thickness could be cut, if necessary, with a band-knife of sufficient size and power." The invention was described by means of two diagrams, Fig. 1 a perspective view, and Fig. 2 a plan of the templets as arranged on the cloth. The templets a were secured by bolts, b, and nuts, ‹, as shown

in Fig. 1. The advantages of the alleged invention were described. The claim was for "the method of cutting at one operation a large number of necktie linings by means of a revolving band-knife, the material being clamped firmly between two

templets of identical form, as herein described and set forth."

It was proved that the process was new and useful, in so much that it enabled a bandknife to be used where a handknife had been previously employed. No anticipation was alleged. Soft articles before being cut out had previously been stiffened by being pressed

Fig.1

From Dredge's specification.

between hard surfaces. It was argued that the merit lay in clamping identical pairs of templets close together, so that the knife should be guided by them. Held by the Courts of First Instance and Appeal that there was not sufficient invention to support a patent.

On appeal to the House of Lords :

Held, that the patent was invalid for want of patentable invention.

Per Lord Halsbury, L.C. (at p. 629): "It would be more true to say that the skilled workman found out in the arrangement of his tools that he ought to do what has been done here than to say that he had made an invention; because this is only an arrangement of his tools, and they are applied practically in the same way. . . adapted to that particular material . . . it is a rather more skilled and experienced application of the same old and well-known tools to the same sort of process that is applicable to fabrics of a firmer texture. I quite admit the difficulty there is, when once you admit invention, in saying, if the invention is an invention at all and is at all useful, that you can draw any exact or precise line as to the quantity of invention that is necessary to support a patent; but I confess I go a little further than the learned judges below, because I think, considering this alleged invention in its real essence and nature, there is no invention at all. It is simply a more skilled application of well-understood tools and wellunderstood processes."

Lord Macnaghten pointed out the difficulty of determining the degree of ingenuity to constitute invention. "In this case I do not think there is sufficient invention, and when I say 'I do not think there is sufficient invention,' I should mean the same thing if I said there was no invention or no substantial invention. I think the three phrases all mean the same thing. I do not think that it requires any study or thought to arrive at the instrument at which the plaintiff has arrived. I think any ordinary skilled workman setting his mind to accomplish that object would have come to the same result." 1

1 The last sentence here quoted bases the decision on the principle discussed ante, p. 35.