Held, as these were instructions for working the specification, and as the invention might be completed so as to work by following out the specification alone, that whatever might be their effect as showing want of disclosure at the trial, the question was too fine to prevent the granting of an interim injunction. The case was settled before trial. (Griff. 58; 3 O. R. 178.)

(i) THOMSON v. BATTY. [1888]

In the specification of the plaintiff's patent for improvements in compasses, and in the means for ascertaining and correcting its errors, the third claim was for the employment in compasses of a large bowl filled, or partially filled, with a viscous fluid. It was proved that "partially filled" was necessary in order to secure the complete effect, but that "filling" would give some effect:-Held, that this was not sufficient to invalidate the patent. (6 O. R. 84.)

(j) SHAW v. JONES. [1889]

In the complete specification, the claim ran: "We claim the production of printing surfaces, &c., &c., by the combination of type-high geometrical squares, curves, angles, &c."-Held, that the first two "&c.'s" were only put in ex abundante cautela, and meant "a printing surface, or any other name that you call it by"; that they were not put in to mislead, and did not vitiate the patent. The other &c. was not attacked. (6 O. R. 328.)

Must Specify an Improvement, and distinguish what is New from what is Old.

(k) WILLIAMS v. BRODIE. [Before 1785]

The invention was an improvement upon an old stove, but in the specification the whole stove was described, including both the old and new parts, without describing the invention as a new improvement upon an old thing, and it was held, that the patent was therefore void. (Cit. Dav. P. C. 96.)

(1) HORNBLOWER v. BOULTON. [1799]

The specification of a patent for a "method of lessening the consumption of steam and fuel in fire-engines," stated that the "method consisted in the following principles," and then described the mode in which those principles were applied to the purposes of the invention. Lord Kenyon, C.J., in delivering judgment, said: I do not consider it as a patent for the old engine, but only for the addition to, or improvement of, the old engine. It possibly occurred to the inventor, that if the patent were to be obtained for the whole engine, it might be open to cavil, and therefore he took ont his patent not for the engine, but for his invention of a method of lessening the consumption or steam and fuel in fire-engines. The method is disclosed in the specification, and it is by the addition of what is there disclosed, and by managing it in the way described. The patent therefore is only for that additional improvement as

described in the specification; and there is no pretence to say that he claims or could claim the sole making of the old engine." (8 T. R. 103.)

(m) HARMAR v. PLAYNE. [1809]

The patent in this case was granted for improvements in machinery, secured by previous letters patent. It was admitted by the defendant, that the improvements for which the second patent was granted are included in the second specification, which gives a full and proper description of the whole machine in its improved state. But it was objected, that the second specification does not, in any manner, point out or explain the improvements upon the former patented machine, for which the second patent was granted, and, therefore, that it was insufficient :- Held, that the specification was sufficient. (11 East, 101; Dav. P. C. 311.) Ellenborough, C.J., in the course of the argument, said: "The difficulty which presses most is, whether this mode of making the specification be not calculated to mislead a person looking at it, and induce him to suppose that the term for which the patent is granted may extend to preclude the imitation of other parts of the machine than those for which the new patent is granted; when he can only tell by comparing it with some other patent what are the new, and what are the old parts; and if this may be done with reference to one, why not by reference to many other patents, so as to render the investigation very complicated? It may not be necessary, indeed, in stating a specification of a patent for an improvement, to state precisely all the former known parts of the machine, and then to apply to those the improvement; but, on many occasions, it may be sufficient to refer generally to them. As in the instance of a common watch; it may be sufficient for the patentee to say, take a common watch, and add or alter such and such parts, describing them." (11 East, 107; Dav. P. C. 318.)

(n) MANTON v. MANTON. N. P. [1815]

Gibbs, C.J., in addressing the jury, said: "It is necessary that the patentee should show that he has accurately explained the nature of his invention in his specification, separating that which is new from that which is old, so as to enable a person of tolerable skill to make the thing by means of his specification." (Dav. P. C. 349.)

(0) MACFARLANE v. PRICE. N. P. [1816]

A person ought to be warned by the specification against the use of the particular invention. Therefore, in the specification of a patent for an improved instrument, it is essential to point out precisely what is new, and what is old, and it is not sufficient to give a general description of the construction of the instrument without making such distinction, although a plate is annexed, containing a detached and separate representation of the parts in which the improvement consists. (1 Stark. 199; 1 Web. P. C. 74.)

(p) BOVILL v. MOORE. N. P. [1816]

Action for the infringement of a patent for a machine or machines for making lace. The specification described the whole machine, without pointing out any particular part or parts of it, as the invention of the patentee. Gibbs, C.J., held, that, if a combination of a certain number of the parts of the machine up to a given point, had existed before the date of the patent, and if the patentee's invention sprang from that point, and added other combinations to it, then the specification, stating the whole machine as his invention, was bad. (Dav. P. C. 361.)

(9) HILL v. THOMPSON. C. P. [1818]

If the invention be an improvement, it must distinctly appear on the face of the specification to be claimed as such, and not as an original discovery.` (1 Web. P. C. 247.)

(r) CARPENTER v. SMITH. N. P. [1841]

Abinger, C.B., in his remarks to the jury, said: "It is required as a condition of every patent, that the patentee shall set forth in his specification a true account and description of his patent or invention, and it is necessary in that specification that he should state what his invention is, what he claims to be new, and what he admits to be old; for, if the specification states simply the whole machinery which he uses, and which he wishes to introduce into use, and claims the whole of that as new, and does not state that he claims either any particular part, or the combination of the whole as new, why then his patent must be taken to be a patent for the whole, and for each particular part, and his patent will be void if any particular part turns out to be old, or the combination itself not new." (1 Web. P. C. 532.)

(8) GIBSON v. BRAND. [1842]

Cresswell, J.: "Every party is bound to tell the public clearly, by his specification, what he claims, and what they may do, or not do, without risk of an action for infringing his patent." (1 Web. P. C. 640.)

(t) CRANE v. PRICE. [1842]

It is no objection to the validity of a patent that the invention cannot be used except by means of a former patented invention, where the second patentee expressly disclaims any part of such former invention. (4 M. & G. 580.) Tindal, C.J., in delivering the judgment of the Court, said: "Unless the grantee of the new letters patent is bound by law to specify whether such former invention, which is excepted, was so excepted on the ground of its being generally known, and used by the public, or because it was the subject of a patent which secured the use of it to a former patentee, the new patent will be good. But that distinction is as much in the knowledge of the public as in that of the grantee of the patent. If, indeed, the new patent had been taken out for an

improvement or alteration of an invention secured by a former patent, then, for obvious reasons, a greater particularity would be necessary to distinguish the new from the old." (Ib. 608.)

(u) M'ALPINE v. MANGNALL. [1846]

If, taking the whole specification together, and giving its words. a fair and reasonable interpretation, the Court can see that the specification only claims an improvement on an old machine, it will be sufficient. (3 C. B. 518.)

(v) HOLMES v. THE LONDON AND NORTH-WESTERN RAILWAY COMPANY. [1852]

The plaintiff obtained a patent for "an improved turning-table,” all the component parts of which, except one, were comprised in a prior patent, the specification of which was not enrolled until after the date of the plaintiff's patent. The plaintiff, in his specification, claimed the improved turning-table herein before described," without showing that any part of it was old. The jury found that the introduction of certain suspending rods made the table a new instrument :- Held, that the specification was bad, as it did not distinguish what was new from what was old. (Macr. P. C. 13.)

(w) TETLEY v. EASTON. [1853]

A specification describing a patent invention must, unless a contrary intention appears, be deemed to claim all that it describes, not only as a whole taken in combination, but also all the essential parts of which such combination is composed. (2 Ell. & Bl. 956; Macr. P. C. 82.) Coleridge, J., said: "This rule may, perhaps, admit of some modification in favour of the patentee, in respect of things incidentally mentioned, which are old and universally known to be so; for, if he had occasion to introduce a hinge into his machinery, it would be absurd to expect that he should point out that the hinge was not new." (Macr. P. C. 87.)

(x) LISTER v. LEATHER. [1858]

is new.

A patent for a combination is not a claim that each part thereof (8 E. & B. 1004; 3 Jur., N. S. 811.) Affirmed on appeal to the Exchequer Chamber:-Held, also, that a patent is a patent for a combination, if a combination is distinctly stated in the specification to be a part of the invention, although the combination is not expressly claimed; for a claim was not an essential to a specification, or necessary for the protection of the invention. Nor is it necessary to disclaim those matters which manifestly form no part of the invention. (8 E. & B. 1031; 27 L. J., Q. B. 295.)

(y) MORTON v. MIDDLETON. [1863]

Lord President: "The usual mode of claiming as new merely a combination or arrangement of certain things, not in themselves new, is to set forth, that what the patentee claims is not each of the parts, but the combination and arrangement of them, so as to produce either a new result, or a greater and better one than has

been attained before. But this course is not essential. If it appears from the reading of the document, that, although the patentee does not in so many words say, 'I limit my claim to so and so,'-yet if it plainly enough appears that he actually does only claim so and so, that is enough." (1 Cr. S., 3rd Ser. 722.)

(z) NEWALL v. ELLIOTT. [1864]:

Pollock, C.B.: "The patentee of a combination is bound to state what parts of the combination he claims to be new, or what parts of the combination he has taken from that general stock of knowledge which is common to all the public." (10 Jur., N. S. 956.)

(a) RENARD v. LEVINSTEIN. Ch. [1864]

Lord Justice Knight Bruce: "Considering the different consequences that may arise as to the part of an invention communicated from a foreign country, and as to the part of the same invention, or set of inventions, which may be deemed to be in every respect new, I consider it to be a serious and very arguable question, whether it is or is not incumbent on the patentee to distinguish, to define, and to particularize what is new and what is old." (10 L. T. Rep., N. S. 177.)

(b) FOXWELL v. BOSTOCK. Ch. [1864]

In a patent for an improved arrangement or new combination of machinery, the specification must describe the improvement and define the novelty, otherwise, and in a more specific form, than by the general description of the entire machine. It is not sufficient that a person possessed of all the knowledge existing at the time of the patent on the subject-matter of the patent, will discern the improvement; or, that it may be discovered upon a minute comparison and collation of all existing combinations with the new combination that is claimed. The term "combination of machinery" is nothing but an extended expression of the word "machine." (10 L. T. Rep., N. S. 144; 12 W. R. 723.) (But see Harrison v. Anderston Foundry Company, post, p. 450 (g).)

(c) DANGERFIELD v. JONES. Ch. [1865]

Where the patented machine or apparatus is entirely new, the patentee is not bound to describe and distinguish the different parts; but where the invention consists of a machine which is only an improvement upon an old machine, he must distinguish and describe all the parts which he claims as new. (13 L. T. Rep., N. S. 144.)

(d) DAW v. ELEY. Ch. [1865]

Where a specification, in the first instance, describes the invention in too general terms, but afterwards, in describing the method of performing the invention, refers to certain figures in drawings annexed thereto, and the claim made is for the manufacture of the invention described with reference to those figures, the specification