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should ascertain the improvement, when the patent is for an improved-that is, for a new combination. At the date of this patent many combinations of machinery, or, in other words, many machines for sewing or stitching by a needle and shuttle, were known and used. If in that state of things a patent is taken out for an improved arrangement or combination, the patentee is bound to show in what the improvement consists, and how it is to be effected. But this obligation is not discharged by a description of the entire machine which embodies the improvement, but which description does not distinguish the improvement; and thereby renders it undiscoverable, except upon a minute comparison and collation of all existing combinations with the new combination that is claimed. A specification so framed has the effect of concealing rather than of disclosing the invention.' The plaintiff's counsel stated that the improvement consisted of an arrangement of three cams on one shaft, by the direct action of which the three principal movements in a needle and shuttle machine were effected. The plaintiff's evidence went to show that this arrangement formed the novelty and utility of the machine. But this clear and simple statement is not to be found anywhere in the specification. It is true that the cams and shafts are described indiscriminately with the rest of the machine in the specification, but there is nothing to indicate that it is this addition which constitutes the improved arrangement or the new combination.' The specification was therefore held to be defective and the patent invalid. (See also the observations of James, L. J., in Parkes v. Stevens, L. R. 8 Eq. 366.)

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The case of Foxwell v. Bostock, however, is not to be understood as deciding that where a combination is alone claimed it is necessary to distinguish the new parts from the old, for in such a case the only invention

protected by the patent is the combination; and if that is properly set forth, it is enough, without separating new parts from old. Under the circumstances supposed, it can be of no moment, so far as the point before us is concerned, whether the parts are all old or partly old and partly new, and therefore a description of the parts and of the manner of arranging them into a working whole, followed by a claim restricted to the combination, will be a sufficient description of the invention. (Harrison v. Anderston Foundry Co., L. R. 1 App. Cas 577-583; Clark v. Adie, L. R. 2 App. Cas. 328.)

The preceding cases will show to patentees whose inventions consist of a combination of parts, the necessity, whilst laying claim to the novel combination, of abstaining from claiming directly or inferentially any of the old parts. On the other hand, if a patentee conceives that he has a right to one or more of the parts as being in themselves novel and useful inventions, he ought to set them forth and claim them. If a man really wants to patent not only the whole, but something less than the whole of what he calls " a new arrangement, construction, and combination of parts he must clearly show that he claims that something less.' (Per James, L. J., in Clark v. Adie, L. R. 10 Ch. 667; affirmed by the House of Lords, L. R. 2 App. Cas. 315.)

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Having studied the rules previously propounded as those by which he ought to be chiefly guided in preparing his specification, the patentee may now be cautioned on the subject of certain faults, which, if committed, would have a disastrous effect upon its validity, and against which, therefore, he cannot be too vigilantly upon his guard.

A specification must not claim too much.

In the first place, the patentee should beware of claiming more than he is strictly entitled to, since a failure in part is a failure altogether, and that to which. he has a just right will fall along with that which does not belong to him. To use Lord Eldon's illustration -if there be a patent both for a machine and for an improvement in the use of it, and it cannot be supported for the machine, although it might for the improvement merely, it is good for nothing on account of its attempting to cover too much. (Hill v. Thompson, 1 W. P. C. 247.)

Therefore, if an inventor lays claim to a principle in addition to a new method of carrying it into effect, and it should turn out that the principle was known and had been previously applied to a similar purpose, in such case the patent cannot stand.

In the specification under the patent which formed the ground of dispute in Hill v. Thompson (1 W. P. C. 239), the patentee claimed not only the use of a particular quantity of lime in smelting iron, but the discovery of the usefulness of lime in that process generally. It appeared, however, that lime had been previously used for the purpose, and the patent was accordingly held bad, although, if the patentee had restricted his claim to the particular proportions of lime and metal, it might have been sustained. Again, the specification under Minter's patent, for an improvement in the construction of chairs, was faulty for a similar reason; its claim was too extensive. The improvement consisted in applying a self-adjusting leverage to the back and seat of a chair, whereby the weight on the seat acted as a counterbalance to the pressure against the back. It was proved that one Brown had previously invented a chair on the same principle, but

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his application of it was encumbered with additional machinery. If Minter bad restricted his claim to the particular mode in which he effected the thing, his patent would have been valid; but since the specification went generally to the application of a self-adjusting leverage to the given purpose, it claimed more than he was entitled to; and if the patent had been held good, Brown could not have continued to make his chair without infringing it. (Minter v. Mower,

1 W. P. C. 138.)

Under a patent for improvements in stoves the specification claimed the construction of stoves made in such a manner that the fuel should be introduced from beneath. Now it was shown at the trial of an action of scire facias that grates had been previously constructed on this principle; and although the particular method of effecting the object was new, yet Lord Ellenborough held that as the patentee had claimed the principle, which was not new, the patent was bad. Here it is clear that if the inventor had limited his claim to his own mode of carrying the principle into effect his patent would have been upheld. (Rex v. Cutler, 1 Stark. 354, 1 W. P. C. 76.)

The case of Rex v. Else (1 W. P. C. 76) affords another instance of the same error. The specification claimed in effect the exclusive right of combining silk and cotton thread, and then of making lace of the combined material. It was proved that silk and cotton thread had previously been combined in some mode or other; and although the material so constructed was unfit for making lace on account of its coarseness, yet as the patentee did not confine himself to any particular mode of combining the two, his claim was held to extend to every mode, and was therefore bad. Fisher and Gibbons obtained a patent in 1844 for an invention of a machine in which a shuttle was com

bined with a needle for producing stitches to ornament fabrics. In 1846 Thomas procured a patent for improvements in machinery for sewing and stitching various fabrics. His specification was construed as claiming generally the use of needles in combination with shuttles for producing stitches; and although he showed one particular form of a needle and shuttle machine which was a different combination from that described by Fisher and Gibbons, it was held that, having regard to the language employed, his claim could not be confined to that particular combination. His patent was, therefore, invalid in consequence of the patentee claiming too much. (Thomas v. Foxwell, 5 Jur. N. s. 37; 6 Jur. N. s. 271.)

Under a patent for improvements in weaving figured fabrics, the specification described, and the drawings illustrated, mechanism for weaving coach lace, but the patentee said that he did not confine himself to narrow goods only, as his improvements were applicable to the production of carpets. It was shown that the specified mechanism could not be adapted to the weaving of carpets by merely enlarging it, but required certain additions to be made to it before it could be employed for that purpose. Pollock, C. B., told the jury, at the trial of an action for an infringement, that if carpets could not be made by the means stated in the specification, the patent was not good; and the jury returned a verdict in favour of the defendant. (Crossley v. Potter, Macr. P. C. 240.)

Ralston's patent was for embossing and finishing woven fabrics, and for the machinery employed therein. His specification described the invention as consisting of the use of a metal or wood roller, engraved with any required design, in combination with a bowl, that is a smooth paper roller, the two being driven at different rates of speed. By moving the fabric transversely

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