of a patent, he may represent himself to be the inventor of a new process, in which case it would seem that the word 'method' may be properly used as synonymous with process. The language of the patent may be explained and reduced to certainty by the specification; but the patent must not represent the party to be the inventor of one thing, and the specification shew him to be the inventor of another; because perhaps if he had represented himself as the inventor of that other, it might have been well known that the thing was of no use, or was in common use, and he might not have obtained a grant as the inventor of it." Now looking at the specification in this case, it appears to me that the patent cannot be supported in law; because the plaintiffs have claimed more than they are in fact entitled to. One cannot read the description of the invention, and the purposes for which it is intended, without understanding it to be a claim of an improvement of certain machinery to produce a certain desired effect. The specification contains eight different parts or heads. (His lordship read them (supra, 179-187) over.) Now, dismissing [201] all of the eight from our consideration, but Nos. 6 and 7, I confess I cannot understand those two, except as claiming an improvement of, or a new combination in the throstle-machine. That the patentees meant to claim all the eight parts as forming one whole, is abundantly clear from the latter part of the specification, where they expressly say, "we disclaim those parts of the process or mechanism which were, or may have been, previously to the granting of our patent, well known or in use for the same purposes; but we restrict our claims to the eight several heads of invention mentioned in the early part of this specification, all of which we believe to be new and of great public utility." Therefore the patentees are bound to shew that each of the eight parts is new and of public utility. They describe the old method of spinning silk-waste, and then say; "Having thus explained the old or ordinary process of converting silk-waste into yarn, we will proceed to describe our novel process, by which we produce a new or improved manufacture of yarn or thread." The claim therefore is clearly in respect of a novelty; and it must be a novelty, either in the process or in the machinery. Now the jury have found that the subject of the patent is not a new invention, or a new combination; but that it is an improved process; and if the specification had stopped at this point, it might perhaps have been a hard measure to deal to the party, to say this was a claim of new machinery, though I am inclined to think it would be so considered. But they then go on, and, after describing the improvements in the method of obviating the supposed necessity of cutting or shortening the filaments of silk-waste, in discharging the gum and dyeing the silk, they say, "Having now explained the nature of the drawing and roving machinery which we have found to answer best, and the several processes of drawing and roving silk-waste alone, and of silk-waste in combination with wool and with [202] flax, we will proceed to describe the spinningmachine by which the rove is drawn or elongated into strands to be spun into yarn or thread. The annexed drawings, for the most part, represent the well known spinning-frame called a throstle on the principle of the long-ratch as employed in the spinning of flax, which machine, combined with the improvements we have applied to it, we apply to the new and useful purpose of spinning silk-waste of long fibres into yarn or thread from rove, either in the gum or discharged or dyed, as before men tioned; and also of rove made from silk-waste of long fibres in combination with flax or with wool." They profess therefore to describe the machine to be used for this purpose by drawings; and the expression that these drawings "for the most part represent the well known spinning frame called a throstle," implies that some new part in the machine represented. has been discovered by them. They then go on to explain the meaning of the drawings, and the use of the brass bosses, the throstleframe, and the application of water. (His lordship here read that portion (supra, 185) of the specification.)

I confess I feel it impossible to apply all this language otherwise than to a substantive claim to an invention of a new machine, or a new combination of the parts of an old machine: the jury, however, have by their special finding negatived both; and, unless we could see from the evidence that they were decidedly wrong, the matter must rest there. I think, upon the finding of the jury, there is sufficient to entitle the defendant to have the verdict entered for him on both the second and the third issues; and, upon the evidence, I see no reason to be dissatisfied with that finding. COLTMAN J. I also think that the verdict must be entered for the defendant on the second and third pleas.

[203] The verdict specially found by the jury is clearly not in favour of the plaintiffs; as it, in terms, negatives the allegation in the declaration that the alleged invention was a new invention. And I think that unless each of the eight points in the specification is new, the plaintiffs are not entitled to have the verdict entered for them. It is not necessary to consider what the verdict should have been, but what, in fact, it is. The jury have found that the invention was not new; that there was no new combination; but that there was an improved process. Now I am not prepared to say that an improved process may not be considered a manufacture within the meaning of the statute (21 Jac. 1, c. 3); and if the jury had only found that the patentees had discovered an improved process, I should have been under some difficulty as to the effect of their finding; but they have negatived both novelty in invention and in combination.

Then, looking at the verdict as being in favour of the defendant on the third plea, we may still examine the evidence to see whether there was such proof of novelty as would, in fact, amount to a new invention; as that might have been a ground for a new trial. But looking at the evidence, I cannot find any novelty in the process so as to satisfy my mind that the jury ought to have found that there was a new process. It seems, in fact, to have been the application of an old machine to a new process, without any material variation in the combination, or any new combination of the parts of the old machine.

It appears from the specification itself that the processes of dyeing and of discharging the gum were performed, in a different stage, it is true, but altogether in the same mode that was formerly known-the only alteration being in point of time.

Looking then at the evidence and the finding of the jury, I think they meant that a better article was pro-[204]-duced by the patentees; but that there was no novelty of combination and no invention employed in bringing about this result.

This, then, disposes of the third issue. As to the point arising on the first issue,

it has already been disposed of during the argument.

With regard to the point urged in arrest of judgment, I have not fully made up my mind upon the subject; but after the decision upon the two other points, it does not seem material to consider it.

ERSKINE J. The jury in this case have found on the first, second, fourth, and fifth issues for the plaintiffs. On the second and third issues there has been a special finding, on an understanding between the parties that the court should decide for whom the verdict should be entered.

As to the first issue, on which there was an application for a nonsuit, the point was given up by counsel, in consequence of an intimation by my lord in the course of the argument.

The second and third issues raise the question, whether the process for which the patent was taken out was a new invention. The jury have, in distinct terms, negatived both these issues in the first branch of their special finding; but they have added something upon which the plaintiffs rely, as being, in substance, in their favour. It is contended, on their part, that the meaning of the special finding is, that the patentees had invented a new process, which, in point of law, would amount to a new invention ; and that, looking at the whole of the evidence, and comparing it with the special finding of the jury, it is, in substance, found that there was a new and improved process, and, consequently, that the plaintiffs were entitled to the verdict on these issues. But it appears that the plaintiffs have not made out [205] such a case of an improved process as would entitle them, as inventors, to sustain their patent. I think there was no evidence to warrant a different finding from that at which the jury have arrived; and even though there may be a new patent for a new process as being a new invention, or rather a new manufacture" within the terms of the statute, yet I think upon the evidence, there was clearly no such novelty here.

The alleged invention is divided into eight heads; the fourth and fifth of which it is not necessary to consider. The patent is claimed in respect of all these eight points; they are all branches of one process; the plaintiffs must therefore shew that the whole process was new in all these parts. Now, undoubtedly, an argument may be raised that there was, at least, some degree of novelty as to the change of the process in which the discharge of the gum, or the dyeing, was effected, as mentioned in the first two heads; but if the substantial parts of the process were not new, then, I think, the plaintiffs must fail.

The third head is said to consist "in a part of our process by which we spin yarn from dressed or heckled silk-waste of long fibres, either in the grain or discharged; and this clearly does not include either of the first two heads. But what novelty of process is there under this third head? It appears that the process of spinning silkwaste with an uncut fibre, had been before practised. It is said, indeed, that this was done in secret, and that it had not been made public; and undoubtedly if that fact were made out, I should agree with the plaintiffs that this would be no objection to the patent; inasmuch as there must be publicity of a previous invention in order to avoid a patent subsequently taken out for the same thing. But I think there was abundant evidence to shew that to some extent and, indeed, to a considerable extent [206] this process had been publicly practised before the patent was taken out, although it had not been carried to such a state of perfection as it was under the plaintiffs' patent.

I come therefore to the conclusion, on this point, that there was nothing new in the process, or in the machinery, by which the silk-waste was spun; and the whole of the plaintiffs' claim amounts to this, that they have applied the old machine and process more skilfully than others have done before them. The result of such application may be useful to the public; and, indeed, the jury have found that it is so; but that is not what the plaintiffs have claimed. They have claimed the particular use of a machine, which had been, in fact, used in a similar manner before.

As to the other heads of the specification, they are not proved, on the evidence, to be new; on the contrary, they are shewn to have been previously known and practised by others.

Upon the whole, therefore, I am of opinion that the verdict should be entered for the defendant on the second and third issues.

CRESSWELL J. I also am of opinion that the verdict should be entered for the defendant, on the second and third issues.

The patent right claimed in this case is undoubtedly of rather a singular character. It is not a claim in respect of any article produced-it is not a claim for any machine for the production of an article-it is not a claim for any particular ingredient-but it is a claim for a mere process.

There are dicta, but there is no distinct decision to be found in the books, that the omission of part of a previously known process may be the subject of a patent; that is a point to which I shall be prepared to [207] give my consideration when it arises, but it is not the present case.

I do not consider it necessary to go into the evidence in this case; no fault is found with the verdict; but each party claims to have the verdict entered for them upon the special finding of the jury. Now they have found that the subject of the patent is not a new invention, and that it is not a new combination, but that it is an improved process. Then the question is, have the plaintiffs claimed a new invention, or a new combination? For if they have, the jury have found that there was neither. The specification states that the subject of the patent is an "invention of a new and improved process or manufacture of silk, and silk in combination with certain other fibrous substances;" and the patentees then declare that the nature of their said invention consists in eight parts or heads, which are then set forth. And if there could be any doubt as to the intention of the patentees to claim all the eight parts, such doubt would be removed by the concluding passage of the specification, where they say we restrict our claims to the eight several heads of invention mentioned in the early part of this specification, all of which we believe to be new, and of great public utility."

66

Then does it appear that the patentees claim any novelty of mechanism? I think it clear that they do. I have considerable doubt, whether under the sixth head mentioned in the specification, they mean to claim the throstle-machine on the principle of the long ratch as an invention, or merely the improved use of it: and if there were any question on the ambiguity of the specification, I should be disposed to think this difficult for the plaintiffs to get over. Under the seventh head the plaintiffs clearly elaim certain improvements in the throstle machine, as their own; but the jury have said there was no new invention; and this is equally fatal to [208] the plaintiffs, whether they claim a part only of the machine or the whole of it, as a new invention. If they mean to claim a new combination, the jury have found there was none. But I think it clear that the plaintiffs intended to claim a novelty of mechanism.

It is immaterial therefore to inquire what may be meant by the term "improved process;" for, whatever it may mean, it does not relieve the plaintiffs from the difficulty they labour under,—of having claimed a new invention, which claim, in fact, is distinctly found against them.

Rule absolute, to enter the verdict for the defendant, on the second and third issues.

Bompas Serjt., then proposed to argue the cross rule that had been obtained by the plaintiff's for a new trial; but

The court said, that the former part of that rule (to enter the verdict for the plaintiffs on the second and third issues) had been disposed of by the judgment just pronounced and that the latter part (to grant a new trial) was only conditionalupon the court being of opinion, that the verdict was incongruous and could not be entered for either party.

Rule for a new trial discharged.

[209] SANDERSON AND OTHERS v. COLLMAN AND ANOTHER.

[S. C. 4 Scott, N. R. 638; 11 L. J. C. P. 270.]

April 22, 1842.

Matter of estoppel in pais may be pleaded.-The acceptor of a bill cannot, in an action against him by an indorsee, dispute the handwriting of the drawer; and if he do so by plea, the plaintiff may reply the acceptance by way of estoppel.-In a declaration upon a foreign bill drawn by A. upon the defendants, payable sixty days after sight, it was alleged that the defendants, "more than sixty-three days before the commencement of the suit, to wit, on, &c., had sight of the said bill, and then accepted the same." Plea, that A. did not make the bill; replication (by way of estoppel) that at the time the defendants accepted the said bill, as in the declaration mentioned, the same purported to have been made by A., and to have been signed by A. as drawer; and that the plaintiffs, at the time the bill was so indorsed as in the declaration mentioned, had no notice or knowledge that it was not made by A., and that they gave value for the same upon the faith and credit of the defendants' acceptance:-Held, coupling the replication with the declaration, that sufficiently appeared that the defendants had sight of the bill before acceptance, and therefore that the estoppel was pleaded with sufficient particularity.-Per Coltman J. That it was not material to allege that the acceptors had sight of the bill.-Per Cresswell J. That the plea contained no answer to the declaration.

Assumpsit. The first count of the declaration stated, that whereas certain persons using the name, style and firm of Daniker and Wegmann, on, &c., in parts beyond the seas, to wit, at Rio de Janeiro, made their bill of exchange in writing, and directed the same to the defendants, and thereby required the defendants to pay that their first of exchange, second and third not paid, to the order of a certain person, therein named and described as A. V. Bahlsen, Esq., 6001. sterling, sixty days after the sight thereof; that the defendants, more than sixty-three days before the commencement of the suit, to wit, on, &c., had sight of the said bill, and then accepted the same, payable at Messrs. Jones, Loyd and Co.; that the said person, so named and described in the said bill as A. V. Bahlsen, Esq., then indorsed the said bill, by and in the name of A. V. Bahlsen, to the plaintiffs; of which the defendant then had notice, and then promised the plaintiffs, to pay them the amount of the said bill, according to the tenor and effect of the bill, and of the said acceptance. Breach, non-payment.

[210] The second count was upon a similar bill for 10001., drawn by the same parties, in the same manner, upon, and accepted by, the defendants.

First plea, that the said D. and W. did not make the said bills of exchange in the said first and second counts of the said declaration respectively mentioned, or either of them, modo et formâ (a).

Replication to the first plea, so far as it related to the first count, that the defendants ought not to be allowed to plead or say, that the said D. and W. did not make the said bill in the said first count of the declaration mentioned, because the plaintiffs say

(a) There were other pleas traversing the acceptance and indorsement of the bills, upon which issue was joined.

that, at the time when the defendants accepted the said bill of exchange as in the said first count mentioned, the same bill purported to have been made and drawn by the said D. and W., and to have been signed by them as the drawers thereof; and that the plaintiffs, at the time when the last-mentioned bill was so indorsed to them as in the said first count mentioned, had no notice or knowledge that the said bill had not been made by the said D. and W., and they, before the said bill of exchange became due and payable according to the tenor and effect thereof, gave value for the same, upon the faith and credit of the defendants' acceptance thereof. Verification; and prayer of judgment if the defendants ought, contrary to their said acceptance of the said bill in the said first count mentioned, and to their acknowledgment thereby, to be admitted to say that the said D. and W. did not make the said bill in the said first count mentioned.

There was a similar replication to the first plea, so far as it related to the second count.

Special demurrer to the replication to the first plea, so far as it related to the first count, assigning for causes, [211] that the subject-matter of the said replication was matter of evidence only, and did not, by law, constitute an estoppel to the defendants' pleading the said plea to the first count; that the replication was a departure from the first count, wherein it was alleged that D. and W. made the bill therein mentioned, whilst it was admitted by the replication that they did not make any such bill; that the replication was inartificially and improperly pleaded, and without the certainty required by law in a plea of estoppel, in this, that it did not affirmatively and precisely state, by positive and direct averments, the facts which were necessary to constitute the alleged estoppel, namely, that there was such a bill as that alleged in the said first count, that the defendants did accept such bill, that they had sight of it, and that the acceptance was written upon a part of the said bill, whereon were written the names of D. and W. as drawers.

There was a similar demurrer to the replication to the plea so far as it related to the second count.

Joinder in demurrer.

Channel Serjt., in support of the demurrers. Three questions are raised in this case; first, whether the defendants, after having accepted the bills, are at liberty to shew that the names of the drawers have been forged, and that the bills were not, in fact, drawn by the parties by whom they purported to have been drawn; secondly, whether the plaintiffs can reply the acceptance by the defendants, by way of estoppel; and, thirdly, supposing they can do so, whether the estoppel has been pleaded with all the necessary circumstances.

;

It may be admitted, that the plaintiff's make out a primâ facie case by shewing the acceptance of the bills by the defendants; but they must rely upon the acceptance, either as a declaration by the defendants that [212] the bills were properly drawn, or as an act done by the defendants to the same effect. In either case it is competent to the defendants to rebut the presumption. In Wilkinson v. Lutwidge (1 Stra. 648), which was an action against the acceptor of a bill, it was objected that the plaintiff should not be admitted to prove the acceptance, until he had proved the hand of the drawer; but Lord Raymond C. J. was of opinion, that proof of an acceptance was a sufficient acknowledgment on the part of the acceptor, who must be supposed to know the hand of his own correspondent; but he said it would not be conclusive evidence and, therefore, if the defendant could shew the contrary, the reading the bill on behalf of the plaintiffs should not prelude him. So, in Cooper v. Le Blanc (2 Stra. 1051), which was an action against an indorser of a note, the Chief Justice (Lord Hardwicke) refused to let the defendant in, to shew forgery by similitude of hands, since it would tend to destroy all negotiation of notes and bills. But he seemed inclined to allow proof of actual forgery, if the defendant could have shewn it. In Jenys v. Fawler (2 Stra. 946), indeed, where the action was by the indorsee against the acceptor of the bill, Lord Raymond C. J. would not admit the defendant to prove forgery, by calling persons acquainted with the hand of the drawer, who would swear they did not believe the bill to be in his hand. And his lordship strongly inclined, that even actual proof of forgery would not excuse the defendants against their own acceptance, which had given the bill a credit to the indorsee. This case does not appear reconcilable with Wilkinson v. Lutwidge, unless (as is suggested by Mr. Nolan, in a note to Jenys v. Fawler), "a distinction arises where the action is brought by the payee against